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Judicial Advocacy 2018

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., U.S., No. 17-1229, amicus brief filed 3/30/2018.

The Federal Circuit failed to give effect to a revision of the “on sale” doctrine made by the America Invents Act (AIA) which imposed a “public availability” requirement not only on the fact of an early sale but also on the subject matter of the sale, i.e., the “claimed invention,” according to an AIPLA amicus brief supporting a petition for Supreme Court review. The revision was intended to bring transparency, objectivity, and predictability to the patent system, consistent with the AIA’s conversion of U.S. patent law from a “first to invent” system to a “first inventor to file.” Although the statutory term “available to the public” may need case-by-case development for different types of inventions, this cannot justify turning a blind eye to the express language of the statute. That language, at a minimum, requires that the “claimed invention”—with all of its claim limitations—be “available to the public.” The Federal Circuit decision will convert what should be a legal issue in most cases into a fact-intensive issue in many cases, not only jeopardizing the prior investment in inventions claimed in the patent(s)-in-suit, but also increasing the time and expense required for discovery, motion practice, trial, and appellate review.

Booking.com B.V. v. The United States Patent and Trademark Office, 4th Cir., No. 17-2459, amicus brief filed 3/19/2018.

The Patent and Trademark Office has incorrectly interpreted the Lanham Act as requiring an award of attorneys' fees, win or lose, to the agency in district court proceedings reviewing decisions of the Trademark Trial and Appeal Board. On its face, the statutory phrase “all expenses of the proceeding” found in Section 21(b)(3), 15 U.S.C. 1071(b)(3), does not include attorneys’ fees, which are addressed in Section 35 of the Lanham Act, 15 U.S.C. § 1117. Section 21(b)(3) neither defines “expenses” nor otherwise indicates that the word includes reimbursement of PTO fixed costs. The Supreme Court has held that interpretations of the law that depart from common law must be supported by clear and explicit language that Congress intended to do so, and there is no such support for the PTO interpretation of this language. ​

WesternGeco LLC v. ION Geophysical Corp., U.S., No. 16-1011, amicus brief filed 3/5/2018.

A damages award for infringement under 35 U.S.C. § 271(f) should include foreign lost profits when the harm was proximately caused by domestic infringement, AIPLA argued in a Supreme Court brief filed March 5, 2018. WesternGeco LLC v. ION Geophysical Corp., No. 16-1011, amicus brief filed 3/5/2018. Filed in support of neither party, the brief argues that the Supreme Court should reverse the Federal Circuit and the categorical rule it established in this case against recovering foreign lost profits. The brief also maintains that including harm from foreign conduct for full compensation under § 284 does not impermissibly extend U.S. law extraterritoriality.

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