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Intellectual Property Report: June 2017

Firm Thought Leadership

Supreme Court Narrows Definition of Residence for Patent Venue
On May 22, the Supreme Court issued its much anticipated opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC, narrowing the definition of residence for patent venue. An overview of the decision can be found here. Additional stories and reactions can be found on Law360 here and here, Silicon Valley Business Journal, IP Watchdog and Texas Lawyer. Click here for a pre-decision analysis, and click here for more information on our June 29th IP webinar where we’ll look at the U.S. Supreme Court’s impact on TC Heartland and other IP cases.

The Federal Circuit Strikes Several Pharma Patents*
Robert C. Scheinfeld
It has been tough sledding recently in the Court of Appeals for the Federal Circuit for some pharmaceutical patent owners. In three recent decisions, each pharmaceutical patent considered by the Federal Circuit was invalidated. But these cases also give insight on some important issues. The first two decisions address how the Federal Circuit reviews evidence and determinations of obviousness by the Patent Trial and Appeal Board (PTAB) in postgrant proceedings governed by the America Invents Act (AIA). The third decision clarifies a debate among the patent bar as to whether the AIA changed the law regarding the “on-sale” bar by overruling prior case law as to so-called “secret sales.” This article reports on these recent Federal Circuit decisions.

To read the full article, click here.

*This article first appeared in New York Law Journal, May 24, 2017.

Intellectual Property Update: Federal Circuit Holds That "Secret" Sales and Offers for Sale May Constitute Prior Art Under Post-AIA Section 102
Paula Heyman, Jesse Adland
On May 1, 2017, the Federal Circuit issued its opinion in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Nos. 2016-1284 and 2016-1787 (Fed. Cir. May 1, 2017). In a panel decision authored by Judge Dyk, the Court held that sales or offers for sale that do not publically disclose the details of an invention may still qualify as prior art for post-AIA patents. Notably, the USPTO has been operating under the presumption that such sales or offers for patents filed after March 16, 2013 are not prior art. See, e.g., M.P.E.P. § 2152.

To read the full article, click here.

A Product-Hop, Skip, and Jump in 2017*
Paul A. Ragusa, Yan-Xin Li**
January 2017 started with marked activity at the federal district court level in the antitrust area of pharmaceutical producthopping. In the Eastern District of Pennsylvania, New Jersey-based generic drug maker Amneal Pharmaceuticals was permitted to advance in its suit against Indivior PLC, a British company specializing in the treatment of opioid addiction. In the District of Delaware, generic pharmaceutical manufacturer Apotex Inc. and Japanese drug manufacturer Kyorin Pharmaceutical Co. Ltd. jointly filed a stipulation to stay proceedings upon reaching an agreement with Kyorin from suit after an initial battle involving multiple drug makers accused of trying to extend the market for Allergen Inc.’s pinkeye treatment, Zymar. This and other activity underscores that perceived product-hopping conduct by pharmaceutical companies near the expiration of a brand name drug’s patent life may remain a targeted focus for antitrust enforcement in 2017.

To read the full article, click here.

*This article first appeared in The AIPLA Antitrust News, May 2017.
**Yan-Xin Li, a Baker Botts law clerk, assisted in the preparation of this article.

Intellectual Property Update: Supreme Court Limits Owner Rights After a First Sale of a Patented Product
Amy E. Bergeron, Paul A. Ragusa
On May 30, 2017, the Supreme Court issued its opinion in Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189, 581 U.S. ___ (2017), and considered two important issues relating to patent exhaustion: whether post-sale restrictions can prevent the application of patent exhaustion, and whether foreign sales should be treated differently than domestic sales. The Court answered both questions in the negative. Chief Justice Roberts authored the majority opinion, which reversed an en banc decision of the Federal Circuit, and held that “restrictions and location are irrelevant; what matters is the patentee’s decision to make a sale.” Slip. op. at 5.

To read the full article, click here.

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