Podcasts about Patent Act

This Day in Legal History: Patent Act of 1790On April 10, 1790, the United States passed its first patent law, the Patent Act of 1790, laying the groundwork for a legal framework that would protect inventors and promote innovation. This early legislation granted inventors the exclusive right to their discoveries for a period of 14 years, provided the invention was deemed "useful and important." It was signed into law by President George Washington and represented one of the earliest legal efforts by the new republic to encourage economic growth through technological advancement. The law established a board composed of the Secretary of State, the Secretary of War, and the Attorney General, who were tasked with reviewing patent applications and deciding whether to approve them.Notably, the law gave the federal government broad discretion over what could be patented and required that a patent be granted only if the invention was new and useful. The first U.S. patent under this act was issued on July 31, 1790, to Samuel Hopkins for a process of making potash, a key industrial chemical. Although modest in scope, the law was revolutionary in its recognition of intellectual property as a public good worth safeguarding. It helped move the United States toward a more structured innovation economy, setting a precedent that influenced global norms on patent protection.The 1790 law was replaced just three years later by the Patent Act of 1793, which shifted the review process to a more administrative function, but the foundational principle—that inventors should have exclusive rights to their creations—remained intact. This early commitment to fostering invention through legal means helped spur the rapid technological growth that would define American industry in the 19th century and beyond. The act exemplified how the law could be used to incentivize creativity and economic development at a national scale.Bristol Myers Squibb successfully got a proposed class action lawsuit dismissed that had accused it of using fraudulent tactics to maintain a monopoly over its cancer drug, Pomalyst. The suit, led by Blue Cross Blue Shield of Louisiana, claimed that Bristol Myers and its subsidiary Celgene illegally secured patents and filed sham lawsuits to delay the entry of generic versions of Pomalyst, which is used to treat multiple myeloma. However, U.S. District Judge Edgardo Ramos ruled that the plaintiffs failed to prove that any of the six patents were obtained through fraud. He also found no evidence that the nine lawsuits Celgene filed between 2017 and 2020 against generic manufacturers like Teva and Mylan were baseless or intended to secure fraudulent settlements.The plaintiffs alleged that they had been overpaying for the drug since October 2020, the point at which generics could have entered the market if not for the alleged conduct. Pomalyst brought in $3.55 billion in sales in 2024, accounting for more than 7% of Bristol Myers' revenue. Celgene originally developed the drug, and Bristol Myers acquired the company in 2019. The case was heard in the U.S. District Court for the Southern District of New York.Bristol Myers wins dismissal of lawsuit alleging Pomalyst monopoly | ReutersThe Trump administration has frozen over $1 billion in federal funding for Cornell University and $790 million for Northwestern University amid investigations into alleged civil rights violations. The freeze affects grants and contracts from several federal agencies, including health, education, agriculture, and defense. This move is part of a broader crackdown targeting universities over pro-Palestinian campus protests, diversity programs, and transgender policies. The administration previously warned 60 universities, including Cornell and Northwestern, about potential enforcement if they failed to address what it labeled as antisemitism.Cornell confirmed it received “stop work” orders from the defense department affecting research projects but said it hasn't been formally notified of the total funding freeze. Northwestern similarly acknowledged awareness of media reports but stated it hadn't received official notice. The university emphasized the freeze could endanger critical research, including projects on cybersecurity, pacemakers, and Alzheimer's treatment.This action follows similar measures taken against Harvard, Princeton, Columbia, and the University of Pennsylvania. Columbia, which lost $400 million in funding, later agreed to administrative changes in exchange for potential reinstatement. Federal agents have also begun detaining and deporting some foreign student protesters, revoking visas in the process. Critics, including human rights groups, have voiced concerns over free speech, academic freedom, Islamophobia, and anti-Arab discrimination amid the escalating response to pro-Palestinian activism on campuses.US freezes funding for Cornell, Northwestern University in latest crackdownPresident Trump has issued a new executive order aimed at blocking state-level climate policies that seek to reduce fossil fuel use and limit carbon emissions. The directive instructs the U.S. attorney general to identify and challenge state laws related to climate change, environmental justice, ESG (environmental, social, and governance) standards, and carbon regulation. The move aligns with Trump's broader agenda to boost domestic fossil fuel production and roll back Democratic-led environmental initiatives.The order specifically targets policies in states like New York, Vermont, and California, including financial penalties on fossil fuel companies, California's cap-and-trade system, and climate-related lawsuits brought by state governments. Trump described these measures as ideologically driven and harmful to national energy and economic security.Governors Kathy Hochul (NY) and Michelle Lujan Grisham (NM), co-chairs of the U.S. Climate Alliance, condemned the order, asserting states' rights to enact environmental protections. They reaffirmed their commitment to clean energy and climate resilience. The American Petroleum Institute supported Trump's move, framing it as a defense against unconstitutional state actions that burden oil and gas companies.Trump issues order to block state climate change policies | Reuters This is a public episode. 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Welcome to Supreme Court Opinions. In this episode, you'll hear the Court's opinion in Amgen Inc. v Sanofi. In this case, the court considered this issue: Do Amgen's two patents satisfy the Patent Act's enablement clause—that is, describing the invention with sufficient particularity that would enable a “skilled artisan” to “make and use” the claimed invention? The case was decided on May 18, 2023. The Supreme Court held that Amgen's two patent applications—purporting to cover all antibodies that bind and block the PCSK9 receptor involved in LDL cholesterol metabolism—fail to satisfy the Patent Act's enablement clause. Justice Neil Gorsuch authored the unanimous opinion of the Court affirming the judgment below. It is well established that the enablement requirement means that if a patent claims an entire class of process, machines, manufactures, or compositions of matter, its specification must enable a person skilled in the art to make and use the entire class. While the specification may call for a reasonable amount of experimentation to make and use a claimed invention, it must not be too broad. Amgen's specification fails to enable all that it has claimed, even allowing for a reasonable degree of experimentation. It described 26 antibodies by their amino acid sequences, but it claims to monopolize an entire class of antibodies not described. Thus, its claim is too broad. The opinion is presented here in its entirety, but with citations omitted. If you appreciate this episode, please subscribe. Thank you.  --- Support this podcast: https://podcasters.spotify.com/pod/show/scotus-opinions/support

This Day in Legal History: Patent Act ApprovedOn April 10, 1790, a significant milestone in U.S. legal and innovation history was reached when Congress approved America's first Patent Act. This foundational legislation was instrumental in laying the groundwork for the protection of intellectual property in the United States, a concept that has become a cornerstone of the modern global economy. The Patent Act of 1790 empowered inventors with the "sole and exclusive right and liberty of making, constructing, using and vending to others" their inventions, providing them with a fourteen-year period of protection. This period was designed to incentivize innovation while balancing the public's interest in the eventual free use of inventions. Moreover, the Act led to the creation of the U.S. Patent Board, marking the establishment of an official body responsible for the examination and awarding of patents. This entity is recognized as the precursor to today's U.S. Patent and Trademark Office (USPTO), an institution that plays a pivotal role in the protection of intellectual property rights and the encouragement of technological advancement and creativity. The enactment of the Patent Act of 1790 not only recognized the importance of protecting inventors' rights but also set the stage for the United States to become a global leader in innovation and economic development.The EPA recently established the first-ever drinking water standards for PFAS (per- and polyfluoroalkyl substances), commonly referred to as "forever chemicals," due to their persistence in the environment. This rule aims to reduce exposure to these carcinogenic substances, affecting up to 6,700 utilities and potentially benefiting around 100 million Americans. Specifically, the EPA has set an enforceable limit of 4 parts per trillion for two primary PFAS compounds—PFOA and PFOS—and a non-enforceable goal of zero exposure due to associated health risks, including cancer. Additionally, a limit of 10 parts per trillion is applied to three other PFAS categories, covering compounds like PFNA, PFHxS, and GenX chemicals.This regulatory action reflects growing concern over PFAS presence in approximately 45% of U.S. drinking water sources, posing significant risks to public health. Utilities will be mandated to monitor, reduce, and notify customers of PFAS levels exceeding these new limits, incorporating advanced treatment technologies such as granular activated carbon and reverse osmosis for removal.To support compliance, the federal government has allocated about $1 billion for PFAS testing and removal, with an additional $12 billion for broader drinking water system improvements. The implementation of these standards represents a critical step by the Biden-Harris Administration towards ensuring environmental justice and safeguarding clean water, contrasting with the World Health Organization's less stringent PFAS guidelines.However, compliance is expected to be costly, with estimates suggesting an annual financial burden of up to $3.8 billion for water utilities. This financial challenge underscores the broader issue of funding essential infrastructure updates and addressing emerging contaminants, highlighting a significant shift in regulatory approach to protect public health from PFAS contamination.Final PFAS Drinking Water Rule to Affect Up to 6,700 UtilitiesUS sets first standard to curb 'forever chemicals' from drinking water | ReutersThe litigation involving Donald Trump's merger with a special purpose acquisition company (SPAC) concerning his social media platform, Truth Social, has been assigned to Vice Chancellor Morgan T. Zurn in Delaware Chancery Court, known for her experience with meme stock litigation. This case is among four lawsuits filed over the Trump-Truth Social merger, plus an additional insider trading case. Despite an attempt to block the merger, it concluded in March, leading to an initial surge in Trump Media & Technology Group Corp.'s value, which later saw a significant decline, diminishing billions in value.By way of very brief background, a SPAC operates as a shell corporation designed solely to merge with a private company, thereby taking it public (that is, listing its shares for trade publicly on the market) without going through the traditional and often lengthy initial public offering (IPO) process. SPACs are initially created by a group of investors—often led by a seasoned entrepreneur or business executive—known as the sponsors, who raise capital through an IPO of the SPAC itself, even though it has no existing business operations. The funds raised are placed into a trust account, and the SPAC is given a predetermined timeframe, typically 18 to 24 months, to identify and complete a merger with a target company. If the merger is successfully executed within the allotted time, the target company becomes public as a result. However, if the SPAC fails to find a suitable company to merge with or the shareholders disapprove of the proposed merger, the SPAC is dissolved, and the funds are returned to the investors. This mechanism provides a faster, albeit sometimes riskier, alternative to the traditional IPO, offering private companies a streamlined path to public market access and investors a unique investment opportunity tied to the SPAC sponsors' expertise and the potential of the target company.Vice Chancellor Zurn, recognized for her adept handling of cases involving meme stock traders and complex market manipulation theories, now faces the Truth Social lawsuit, highlighting the increasing intersection of retail trading phenomena with legal disputes in the corporate sector. This case centers on allegations that Trump wrongfully diluted the equity of two former "The Apprentice" contestants who co-founded Trump Media, with Trump counter-suing to cancel their shares. The legal battle involves claims of breach of fiduciary duties and retaliatory actions against the co-founders, with new complaints recently allowed to be updated.The assignment of this high-profile case to Zurn underlines the Delaware Chancery Court's role as a crucial arena for major corporate and shareholder disputes, now expanded to include the unique challenges posed by the involvement of meme stock traders. The outcome of this litigation could have broader implications for corporate governance, investor rights, and the regulation of digital and social media ventures in the rapidly evolving landscape of retail trading and online community-driven investment strategies.Trump SPAC Litigation Heads to Judge With Meme Stock ExperienceA Russian court has upheld a significant fine against Google, rejecting the tech giant's appeal against a 4.6 billion rouble ($49.4 million) penalty. This fine was imposed for Google's failure to delete content that the Russian government deems to be false information about the conflict in Ukraine. The decision comes amid ongoing tensions between Russia and foreign tech companies over issues of content censorship, particularly following Russia's invasion of Ukraine in February 2022.The Moscow City Court confirmed the decision made by the Tagansky District Court, effectively leaving Google's challenge unsatisfied. The fine also pertains to Google's inability to remove extremist content and what the Russian authorities label as LGBT propaganda, indicating a broader crackdown on the digital content distributed by international tech firms within Russia.Notably, Google's YouTube platform, while under scrutiny, has not faced the same fate as Twitter and Facebook, which have been blocked in Russia. This penalty against Google is part of a series of fines based on the company's annual turnover in Russia, with Google facing increasing financial penalties over similar issues in the past. This ruling underscores the escalating conflict between the Russian government and global technology companies over the control and regulation of online content and freedom of expression.Russian court rejects Google's appeal against $50-mln fine over Ukraine content | Reuters Get full access to Minimum Competence - Daily Legal News Podcast at www.minimumcomp.com/subscribe

Navigate the interface of IP and transformative technologies that can augment human capabilities, both in science fiction and emerging reality with Co-hosts, Shareholders, and Intellectual Property attorneys Michael Snyder and Joseph Gushue.  If you're interested in intellectual property, bioethical dilemmas, the future of technology, or just love a good legal quandary set against a backdrop of pop culture, this episode is tailored for you. The hosts draw upon well-known figures such as DC Comics' Cyborg, Marvel's Winter Soldier, and the Borg from Star Trek to frame the discussion. They then discuss William Gibson in Neuromancer and the “ahead of its time” film adaptation Johnny Mnemonic, starring Keanu Reeves. Complexities around the patenting of bioengineered life forms and examining what distinguishes bioengineered entities (like synthetic insulin) from unpatentable naturally occurring elements are discussed. This includes Neurolink chips, currently safeguarded by patents, which hold the promise of revolutionary medical treatments and cognitive enhancements. Michael and Joe also highlight on questions of inventorship in an era where human augmentation might become a source of creativity or innovation. The ripples of this technological integration are touched on by principles outlined in the Patent Act and Copyright Act, sparking a debate on the intersections between legal protocols for artificial intelligence and looming human technology augmentation. As Joe anticipates the normalization of AR and VR technologies with the introduction of Apple Vision Pro, this conversation underscores the significance for pioneers to bravely adopt—and adapt to—these emerging innovations. Simultaneously, the episode ponders the legal frameworks that have yet to fully grapple with such advancements.  So, put on your thinking caps, open a window in your Apple Vision Pro, or turn on your Neuralink Chips and stay curious about the future of IP and technology! Timestamps: 01:19 Defining Techno-Humanism  02:36 Exploring human-machine combination in comic book characters 06:58 Star Trek and The Borg Collective 09:29 Influence of William Gibson on Science Fiction 15:12 Blade Runner (1982) 20:04 Augmenting Human Bodies with Technology and Patenting Life Forms 29:34 Final Thoughts – Resistance is Futile  For full show notes and to explore more episodes, please visit www.vklaw.com/newsroom-podcasts. You can stay connected with us on Facebook, Linkedin or Twitter, and Instagram using the handle @volpeandkoenig.

Join co-hosts Michael Snyder and Joseph Gushue on a new episode of "IP Goes Pop!" that will leave you wondering "You can patent that?!". This episode focuses on a variety of curious and/or unusual patents, demonstrating the wide range of ideas that can result in an issued patent. From the surprising to the peculiar, this episode provides an overview of the “usefulness” threshold in United States patent law. “Listeners will learn about existing patents that are as bizarre as they are “useful,” and how anyone might have an idea that has “utility” and is therefore worthy of a patent. The episode begins with a discussion on the United States Patent Act, the cornerstone of patent law in the United States. Michael and Joseph break down some of the Patent Act's key provisions, focusing on the “utility” or “usefulness” requirement for patentability. The hosts then explore a series of unusual patents, each serving as a case study of this requirement. From a self-inflicted kicking device to an apparatus that allows one to simulate a high-five, to a banana case, listeners will marvel at the odd range of inventions that have been awarded patents. This episode also features patents that highlight the importance of protecting even the simplest of items and serves as a reminder that patent law is not just about groundbreaking technology, but also about practical solutions to everyday problems. The reach of patent law protection is broader than one might think. This episode of "IP Goes Pop!" is not just an exploration of the quirky side of patents. It's a celebration of human creativity and innovation, demonstrating that no idea is too outlandish or too trivial to be considered for patent protection. Whether you're an IP enthusiast, a pop culture aficionado, or just someone who enjoys the world of the bizarre, this episode is a must-listen. Tune in to be entertained, enlightened, and inspired to think outside the box- or perhaps patent the box itself. For full show notes and to explore more episodes, please visit www.vklaw.com/newsroom-podcasts. You can stay connected with us on Facebook, Linkedin or Twitter, and Instagram using the handle @volpeandkoenig. Links to Patents Mentioned in this episode: “User-operated amusement apparatus for kicking the user's buttocks” US6293874B1 “Apparatus for simulating a ‘high five'” US5356330A “In-Car Coffee Maker" US5233914A “Graffiti prevention apparatus” US5675318A “Banana Protective Device US6612440B1 “Beerbrella” US6637447B2 “Safety system for removing rider from vehicle by deploying a parachute” US5593111A “Method of Swinging on a Swing” - US6368227B1 “Hypodermic syringes and attachments thereto pleasing to children” US3299891A “Barrier Device for Children” US5255958A 

Sarah and David react as SCOTUS weighs in on social media regulations. Sigh. Also: -Justice Jackson cutting to the chase -Patent Act and dad jokes -Reader Comments -Judicial side eye for banning platforms for speech -West Virginia and the abortion pill -Constitutional rights and admission standards -Happy Memorial Day weekend Learn more about your ad choices. Visit megaphone.fm/adchoices

Kinsella on Liberty Podcast: Episode 411. As noted in KOL409 (Part 1: Patent Law), although I've done dozens of speeches and interviews over the past 20 or so years on libertarian aspects of intellectual property, or IP, that is, on IP policy, I've never done any in depth lectures for libertarians on IP law itself. In KOL409, I did a brief overview of various types of IP law, and then focused on the patent law and patent application process itself. This episode provides a tutorial on copyright law. (Recorded Thursday, April 27, 2023.) See additional note below. For other episodes in the series: KOL409 | IP Law Tutorial, Part 1: Patent Law KOL412 | IP Law Tutorial, Part 3: Trademark, Trade Secret, and Other The slides I used are streamed below and here (.pptx) and streamed below. https://youtu.be/1yziV15ZGso In the Q&A session, a participant asked a question about joint ownership of patents and patent licensing. In the lecture I had pointed out that for co-authors of a copyright-protected work, each has the right to license the work, without permission of the other co-author(s), but has to share any profits (make an accounting) with them. The question was what the rule was in the case of patents, and I had forgotten the nuance. In patents the rule is similar, except the inventor-co-owner who grants the license need not make an accounting.   Regarding the issue of joint inventors on a patent, I had a brain fart. In copyright, co-authors can each license the work but if they make a profit, they have to account to the other co-author. Under patent law, if there are joint inventors, they all presumably co-own the patent (unless the employer does in the case of work for hire), and each one is entitled to (non-exclusively) license it, just as in the copyright case, but there is no obligation to do an accounting of profits made. As the Patent Act (35 USC §262 - Joint owners) provides: In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

Kinsella on Liberty Podcast: Episode 411. As noted in KOL409 (Part 1: Patent Law), although I've done dozens of speeches and interviews over the past 20 or so years on libertarian aspects of intellectual property, or IP, that is, on IP policy, I've never done any in depth lectures for libertarians on IP law itself. In KOL409, I did a brief overview of various types of IP law, and then focused on the patent law and patent application process itself. This episode provides a tutorial on copyright law. (Recorded Thursday, April 27, 2023.) See additional note below. The slides I used are streamed below and here (.pptx) and streamed below. https://youtu.be/1yziV15ZGso In the Q&A session, a participant asked a question about joint ownership of patents and patent licensing. In the lecture I had pointed out that for co-authors of a copyright-protected work, each has the right to license the work, without permission of the other co-author(s), but has to share any profits (make an accounting) with them. The question was what the rule was in the case of patents, and I had forgotten the nuance. In patents the rule is similar, except the inventor-co-owner who grants the license need not make an accounting.   Regarding the issue of joint inventors on a patent, I had a brain fart. In copyright, co-authors can each license the work but if they make a profit, they have to account to the other co-author. Under patent law, if there are joint inventors, they all presumably co-own the patent (unless the employer does in the case of work for hire), and each one is entitled to (non-exclusively) license it, just as in the copyright case, but there is no obligation to do an accounting of profits made. As the Patent Act (35 USC §262 - Joint owners) provides: In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

Discusses common technology transfer issues that university faculty and staff should be mindful of when developing technology that may be commercialized, ways to navigate those issues, current events they should be paying attention to, and additional resources they can utilize to navigate the commercialization of technology.Our guest is Eric Wagner, Ph.D., JD who is the Director, Legal Affairs in Duke University's Office for Translation and Commercialization (OTC). His responsibilities include preparing and prosecuting patent applications, assisting OTC staff regarding patent and licensing matters, and managing intellectual assets owned by Duke University.Additional Resources:· AUTM provides various resources on working with technology transfer offices: https://autm.net/· The American Intellectual Property Law Association provides information on ongoing intellectual property matters, such as Section 101 of the Patent Act: https://www.aipla.org/detail/news/2022/10/21/aipla-comments-to-uspto-on-subject-matter-guidance· More information on Amgen v. Sanofi can be found online· CITI Program provides an online course on technology transfer: https://about.citiprogram.org/course/technology-transfer/

Section 112 of the Patent Act provides that a patent's "specification shall contain a written description of the invention, and of the manner and process of making and using it," sufficient "to enable any person skilled in the art * * * to make and use the" invention. 35 U.S.C. § 112(a). The requirement that the specification teach skilled artisans "to make and use" the invention is referred to as the "'enablement'" requirement. Markman v. Westview Instruments, Inc., 517 U.S. 370, 379 (1996). The questions presented are: 1. Whether enablement is "a question of fact to be determined by the jury," Wood v. Underhill, 46 U.S. (5 How.) 1, 4 (1846), as this Court has held, or "a question of law that [the court] review[s] without deference," Pet. App. 6a, as the Federal Circuit holds. 2. Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to "make and use" the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art "to reach the full scope of claimed embodiments" without undue experimentation-i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial "'time and effort,'" Pet.App. 14a (emphasis added). LIMITED TO QUESTION 2 PRESENTED BY THE PETITION. https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/21-757.html

A case in which the Court held that two of Amgen's patents do not satisfy the Patent Act's enablement clause because they do not describe the invention with sufficient particularity that would enable a “skilled artisan” to “make and use” the claimed invention.

As global crises abound, from pandemics to war, society cries out for myriad new technologies, from healthcare and high tech to manufacturing, energy, environment, and food. This panel will explore how the antitrust and patent systems can best foster competition and innovation in each of these vital areas. What are the key ideas to bear in mind when sculpting these specific legal systems? What are the agencies like the PTO and DoJ Antitrust Division best able to accomplish; and what legal rules help them do their best work? How do the courts fit in? What roles are best played by large business firms compared to small and medium enterprises? This panel will explore the lessons that can be drawn from big changes made over the past century to the patent-antitrust interface such as the 1952 Patent Act and the 2011 America Invents Act with an eye towards how best to use them to shape the legal systems for tomorrow.Featuring:Hon. Makan Delrahim, Partner, Latham & Watkins LLP; Former Assistant Attorney General, Antitrust Division, U.S. Department of JusticeProf. Christine Haight Farley, Professor of Law and Faculty Director, Program on Information Justice and Intellectual Property, American University Washington College of LawHon. Andrei Iancu, Partner, Irell & Manella LLP; Former Undersecretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark OfficeHon. F. Scott Kieff, Fred C. Stevenson Research Professor of Law, George Washington University Law School; Former Commissioner, U.S. International Trade CommissionModerator: Hon. Ryan T. Holte, U.S. Court of Federal Claims

(SEALING ORDER) In 2014, the Federal Court, in the liability phase of the trial, held that the respondents' (collectively “Dow”) 705 Patent for fabricated products made from ethylene polymer blends was found to be valid and infringed by a product manufactured by Nova Chemicals Corporation (“Nova”). The 705 Patent issued in 2006 and expired on April 19, 2014. Dow was held to be entitled to damages under the Patent Act, R.S.C. 1985, c. P-4, and had to elect either an accounting of Nova's profits or damages sustained by reason of Nova's infringement under s. 55(1) of the Act. The quantum of that award was to be assessed by reference. Dow elected an accounting of profits. The reference judge was required to determine the manner in which damages payable to Dow pursuant to ss. 55(1) and 55(2) of the Act should be calculated. The principles articulated by the reference judge allowed for the calculation of the accounting of profits to be disgorged by Nova and made payable to Dow. That decision was upheld on appeal. Argued Date 2022-04-20 Keywords Intellectual property - Patents, Medicines, Damages - Intellectual property — Patents — Medicines — Damages — Respondent seeking remedy of accounting of profits following determination applicant had infringed respondent's patent — What is the proper conceptual approach to determining how to calculate a disgorgement of profits in the patent context? — Are “springboard profits” on products sold after patent expiry available at law?. Notes (Federal Court) (Civil) (By Leave) (Certain information not available to the public) Disclaimers This podcast is created as a public service to promote public access and awareness of the workings of Canada's highest court. It is not affiliated with or endorsed by the Court. The original version of this hearing may be found on the Supreme Court of Canada's website. The above case summary was prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch).

Ropes & Gray's podcast series Talkin' Trade explores the world of Section 337 unfair import investigations at the U.S. International Trade Commission. Historically, challenges to patent subject matter eligibility under Section 101 of the Patent Act have been rare at the ITC, as the Commission's Section 337 proceedings necessarily involve tangible, physical goods. But recent changes in the case law from the Federal Circuit and the Supreme Court have led to a noticeable uptick in the numbers of times the Commission and its ALJs have been forced to grapple with patent eligibility issues. Ropes & Gray attorneys Matt Rizzolo, Matt Shapiro, Josef Schenker, and Brendan McLaughlin discuss how Section 101 challenges have evolved over time at the ITC, and how this issue may be litigated differently before the Commission than in district court patent litigation. They also provide an update on recent proposed litigation that may affect Section 337 proceedings.

Ropes & Gray's podcast series Talkin' Trade explores the world of Section 337 unfair import investigations at the U.S. International Trade Commission. Historically, challenges to patent subject matter eligibility under Section 101 of the Patent Act have been rare at the ITC, as the Commission's Section 337 proceedings necessarily involve tangible, physical goods. But recent changes in the case law from the Federal Circuit and the Supreme Court have led to a noticeable uptick in the numbers of times the Commission and its ALJs have been forced to grapple with patent eligibility issues. Ropes & Gray attorneys Matt Rizzolo, Matt Shapiro and Brendan McLaughlin discuss how Section 101 challenges have evolved over time at the ITC, and how this issue may be litigated differently before the Commission than in district court patent litigation. They also provide an update on recent proposed litigation that may affect Section 337 proceedings.

Minerva Surgical, Inc. v Hologic, Inc was a United States Supreme Court case dealing with the principle of assignor estoppel and its application. The Supreme Court reaffirmed the principle of assignor estoppel, however with the exception that the doctrine is only applied when assignors assertions are actually consistent with previous representations as to the patent. The majority decision was written by Justice Kagan, with Justice Alito and Justice Barrett filing separate dissenting opinions. Background. Csaba Truckai founded the company NovaCept, which invented the NovaSure medical system, which detects perforations in the uterus through the usage of Carbon Dioxide gas. NovaCept was acquired by Cytyc Corporation in 2004, which was then acquired by Hologic in 2007. Hologic received U.S. Patents 6,872,183 and 9,095,348 in 2005 and 2015 respectively. Truckai left NovaCept to found his own company, Minerva, Inc. and received permission to commercially distribute an Endometrial Ablation System. Hologic, Inc. sued Minerva, Inc. for violations of U.S. Patents 6,872,183 and 9,095,348, both relating to the procedure of endometrial ablation, for the treatment of menorrhagia. Minerva argued that the patents were invalid in the first place, and challenged the patentability of both patents in the U.S. Patent Office. Hologic moved for summary judgement arguing the principle of assignor estoppel, which was granted. The jury awarded $4.7 million in damages to Hologic. Both Minerva and Hologic appealed for differing reasons. On Appeal to the Federal circuit, Minerva asked the court to "abandon the doctrine” of assignor estoppel on the basis that the doctrine is invalidated due to the Supreme Court abolishing the doctrine of licensee estoppel in Lear, Inc. v Adkins, (1969), although the Federal Circuit Court rejected this argument. Minerva Surgical, Inc. filed a petition for a writ of certiorari on September 30, 2020. Assignor Estoppel. Assignor estoppel is a legal doctrine that states that a claim of invalidity cannot be taken by a person who sells a patent (assignor). The doctrine was first recognized in the United States in Westinghouse Elec & Mfg. Co. v Formica Insulation Co., (1924.) Judgement. In a 5-4 decision, the Supreme Court reaffirmed the principle of assignor estoppel, and rejected the argument of Minerva that the doctrine was repealed through the Patent Act of 1952. Writing for the majority, Justice Kagan wrote that " applies when, but only when, the assignor's claim of invalidity contradicts explicit or implicit representations he made in assigning the patent." Justice Barrett argued in the principal dissent that the Patent Act of 1952 precludes the principle of Assignor estoppel. Justice Alito, who also wrote a dissenting opinion, argued that neither the principal dissent nor the majority opinion are valid as neither answered the question as to whether Westinghouse Elec. & Mfg. Co. v Formica Insulation Co., (1924) should be upheld or overruled. --- This episode is sponsored by · Anchor: The easiest way to make a podcast. https://anchor.fm/app

Ropes & Gray's podcast series Conductive Discussions focuses on legal issues of interest to the semiconductor industry. In this episode, IP litigation partners Mark Rowland and Andrew Radsch, and associates Daniel Richards and James Mack, discuss patent infringement under section 271(g) of the Patent Act, a frequently overlooked but powerful provision. The team explores the statutory exceptions to liability, the availability of burden-shifting when proving infringement, and unique damages limitations for claims under section 271(g).

Bill C-13: a federal act respecting certain measures in response to COVID-19, has now received royal assent. Several elements of this legislation are discussed on the show.Bill C-13 created the Emergency Response Benefits Act. This act will provide a monthly payment of $2,000 to people out of work. One important element of the act is that the monthly benefits will not be available to any worker who “quit their employment voluntarily”. So: don’t quit your job if you wish to remain eligible for financial assistance. Another provision of Bill C-13, that has not received much public attention, are amendments to the Patent Act that permit the Minister of Health to authorize anyone to “make, construct, use and sell a patented invention to the extent necessary to respond to the public health emergency described in the application”. This would permit companies to manufacture things like ventilators, or drugs, that could otherwise be protected by a patent. There is provision for the payment of compensation to the owner of the patent. Also discussed, in the context of the provincial Public Health Act orders, are the large number of homeless people who are camping, congregating, and lining up together, outside of the Our Place Society facility in the 900-block of Pandora in Victoria. While Our Place has stopped providing some services, it is still providing three meals a day, washroom, and other services, from its single location. While all with the best of intentions, this has encouraged the unsafe gathering of large numbers of people in close proximity.Meals, and other services, need to be provided in a distributed fashion, so as to remove the incentive for the large group of homeless people to continue congregating in one place. Follow this link for a transcript of the show and links to the legislation discussed.

In this episode, Christa Laser, a senior associate at WilmerHale in Washington D.C., discusses her article "Patent Law's Equitable Defenses: The Coming Battle of Dynamic and Traditional Interpretive Regimes," which will be published in the University of Miami Law Review. Laser begins by discussing the difference between legal and equitable regimes and defenses. She describes the equitable defenses available in patent law, and explains why it is unclear how courts should apply them under the Patent Act. She observes that different interpretive approaches suggest different applications of those defenses. And she discusses her draft article "Certiorari in Patent Cases at the Supreme Court," which she co-authored with Judge Arthur Gajarsa. Laser is on Twitter at @ChristaLaser.This episode was hosted by Brian L. Frye, Spears-Gilbert Associate Professor of Law at the University of Kentucky College of Law. Frye is on Twitter at @brianlfrye. See acast.com/privacy for privacy and opt-out information.

On December 11, 2019, the Supreme Court issued its decision in Peter v. NantKwest Inc. upholding the American Rule’s presumption against shifting attorney’s fees. Under Section 145 of the Patent Act, applicants “dissat­isfied with the decision of the Patent Trial and Appeal Board” are afforded the opportunity to file a civil action in the United States District Court for the Eastern District of Virginia. The statute specifies that “[a]ll the expenses of the proceedings shall be paid by the applicant.” The question presented in the case is whether such “expenses” includes the salaries of attorney and paralegal employees of the United States Patent and Trademark Of­fice (“USPTO”). The Supreme Court, in a unanimous opinion, affirmed the en banc majority opinion of the United States Court of Appeals for the Federal Circuit and held that it does not include the attorney’s and paralegal fees. The discussion of this decision will focus on the Court’s analysis and its implications.Featuring: -- Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.

On December 11, 2019, the Supreme Court issued its decision in Peter v. NantKwest Inc. upholding the American Rule’s presumption against shifting attorney’s fees. Under Section 145 of the Patent Act, applicants “dissat­isfied with the decision of the Patent Trial and Appeal Board” are afforded the opportunity to file a civil action in the United States District Court for the Eastern District of Virginia. The statute specifies that “[a]ll the expenses of the proceedings shall be paid by the applicant.” The question presented in the case is whether such “expenses” includes the salaries of attorney and paralegal employees of the United States Patent and Trademark Of­fice (“USPTO”). The Supreme Court, in a unanimous opinion, affirmed the en banc majority opinion of the United States Court of Appeals for the Federal Circuit and held that it does not include the attorney’s and paralegal fees. The discussion of this decision will focus on the Court’s analysis and its implications.Featuring: -- Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.

QUESTION PRESENTED: When the United States Patent and Trademark Office (USPTO) denies a patent application, the Patent Act gives the unsuccessful applicant two avenues for seeking judicial review of the agency's decision. The applicant may appeal directly to the Federal Circuit, 35 U.S.C. 141, which "shall review the decision from which an appeal is taken on the record before the [USPTO],” 35 U.S.C. 144. Alternatively, the applicant may bring a civil action against the Director of the USPTO in district court, where the applicant may present additional evidence. 35 U.S.C. 145. If the applicant elects to bring such an action, "[a]ll the expenses of the proceedings shall be paid by the applicant." Ibid. The question presented is as follows: Whether the phrase "[a]ll the expenses of the proceedings" in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation. Argument Transcript: https://www.supremecourt.gov/oral_arguments/argument_transcripts/2019/18-801_7kh7.pdf --- This episode is sponsored by · Anchor: The easiest way to make a podcast. https://anchor.fm/app Support this podcast: https://anchor.fm/scotus/support

Daily Law News by Thomas Dunlap covering the headline:STRONGER Patent Act - September 12, 2019

A famous graffiti artist Banksy never admitted he is an author of his artworks. Except for the book “Wall and piece” (Century, The Random House Group Limited 2005). There on the intro page, he does claim authorship — “Against his better judgment, Banksy has asserted his right under the Copyright, Designs and Patent Act, 1988 to be identified as the author of this work.” Also Banksy’s well-known quote: “Copyright is for losers” has a copyright sign behind it. Yet, that’s where Intellectual property (further - IP) protection basically “ends” for graffiti artists, those “street vandals” damaging properties belonging to someone else, or… doesn’t it? In this episode I would like to discuss graffiti and where does the legal protection stand in its respect. Previous episodes of “Exploring the art market” podcast: Episode 1 — Mediation of art-related disputes: https://soundcloud.com/user-796059586/exploring_the_art_market_ep1_mediation_and_art Episode 2 — Art market bubbles: https://soundcloud.com/user-796059586/exploring_the_art_market_ep2_art_market_bubbles Episode 3 — Value of art https://soundcloud.com/user-796059586/exploring_the_art_market_ep3_value_of_art All comments and suggestions for the podcast are highly welcome either in the comment section below or directly to my e-mail: maria.boicova@gmail.com. Thanks for listening and till next time on “Exploring the art market” podcast. Now available also on iTunes.

Aaron Cooper was the Chief Counsel for IP and Antitrust Law on the Senate Judiciary Committee during the passage of the Leahy-Smith America Invents Act (AIA) and is now the head of global policy for the trade group BSA (fka the Business Software Alliance). The AIA arguably made the most substantial changes to patent law since the Patent Act of 1836. During the episode, we discuss the passage of the AIA, post-grant proceedings created by the AIA, the role of BSA and other interest groups in shaping intellectual property (IP) policy, current patent-related legislative proposals, and many other subjects.

Section 101 of the U.S. Patent Act─which identifies four categories of inventions or discoveries that are eligible for patent protection─presents a number of challenges to companies working on innovations in the life sciences space. Jones Day's Patricia Campbell and Susan Gerber, who recently coauthored an article on this topic for The Intellectual Property Strategist, are joined by Meredith Wilkes in this edition of Jones Day Talks Intellectual Property. They discuss Section 101 and life sciences, and talk about what's coming up for Jones Day's Women in IP initiative.

On December 4, 2018, the Supreme Court heard argument in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. This case arose out of a dispute over the validity of a patent covering a product used to reduce the likelihood of chemotherapy-induced nausea and vomiting. At issue in this case is whether agreements entered into by Helsinn more than one year prior to filing for patent protection put the invention “on sale” and thus would invalidate the patent. Although the meaning of “on sale” in the Patent Act was long believed to be settled, the 2011 America Invents Act (AIA) made changes to the statutory provisions that include the “on sale” bar. The question for the Supreme Court is whether these changes to the statute change the previous understanding of the term “on sale.”In April 2001, Helsinn entered into two agreements with MGI Pharma. Although these agreements were announced in a press release, specific information about the products, like dosing formulations, were omitted. In 2003, Helsinn filed a provisional patent application covering the product. Three patents arose from this provisional patent application prior to the enactment of the AIA; however, one patent was subject to the new provisions of the AIA.In 2011, Teva sought FDA approval to make a generic version of the patented product. Helsinn sued Teva for patent infringement based on this ANDA filing. Teva argued that the patent was invalid because Helsinn’s agreements with MGI put the product “on sale” before the relevant date. The district court rejected Teva’s argument, concluding that the AIA had changed the meaning of “on sale” to require the invention be made public by the sale. Because the dosing information was not provided in the press release regarding the agreements, the district court concluded the agreements did not make the invention public and there was no “on sale” bar. The Federal Circuit reversed, holding that inventions are made available to the public whenever there is a commercial offer for sale and that the sale is public even when the details of the invention are not disclosed to the public by the sale. Thus, the “on sale” bar applied to Helsinn’s patent. The U.S. Supreme Court then granted certiorari to address whether under the AIA, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.To the discuss the case, we have Kristen Osenga, Professor of Law at University of Richmond School of Law.

On December 4, 2018, the Supreme Court heard argument in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. This case arose out of a dispute over the validity of a patent covering a product used to reduce the likelihood of chemotherapy-induced nausea and vomiting. At issue in this case is whether agreements entered into by Helsinn more than one year prior to filing for patent protection put the invention “on sale” and thus would invalidate the patent. Although the meaning of “on sale” in the Patent Act was long believed to be settled, the 2011 America Invents Act (AIA) made changes to the statutory provisions that include the “on sale” bar. The question for the Supreme Court is whether these changes to the statute change the previous understanding of the term “on sale.”In April 2001, Helsinn entered into two agreements with MGI Pharma. Although these agreements were announced in a press release, specific information about the products, like dosing formulations, were omitted. In 2003, Helsinn filed a provisional patent application covering the product. Three patents arose from this provisional patent application prior to the enactment of the AIA; however, one patent was subject to the new provisions of the AIA.In 2011, Teva sought FDA approval to make a generic version of the patented product. Helsinn sued Teva for patent infringement based on this ANDA filing. Teva argued that the patent was invalid because Helsinn’s agreements with MGI put the product “on sale” before the relevant date. The district court rejected Teva’s argument, concluding that the AIA had changed the meaning of “on sale” to require the invention be made public by the sale. Because the dosing information was not provided in the press release regarding the agreements, the district court concluded the agreements did not make the invention public and there was no “on sale” bar. The Federal Circuit reversed, holding that inventions are made available to the public whenever there is a commercial offer for sale and that the sale is public even when the details of the invention are not disclosed to the public by the sale. Thus, the “on sale” bar applied to Helsinn’s patent. The U.S. Supreme Court then granted certiorari to address whether under the AIA, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.To the discuss the case, we have Kristen Osenga, Professor of Law at University of Richmond School of Law.

A case in which the Court held that WesternGeco’s award for lost profits was a permissible domestic application of § 284 of the Patent Act.

This Teleforum addresses whether there is a need to amend Section 101 of the Patent Act, which defines what counts as an invention eligible for receiving patent protection. Between 2010 and 2014, the Supreme Court issued four decisions interpreting and applying Section 101 to business, high-tech, and biotech inventions. In all four cases, the Court held that the patents were invalid for claiming abstract ideas, laws of nature, or facts of nature. Since 2014, federal courts have invalidated many patents in applying the Court’s new rules on patent eligibility. The Patent Office is also rejecting many patent applications. Some people in the innovation industries express concern that the Court’s decisions are vague and provide no objective framework as to whether a claim is patent eligible. Three trade associations, the Intellectual Property Owners Association (IPO), the American Intellectual Property Lawyers Association (AIPLA), and the American Bar Association’s IP Section, have released proposed amendments to Section 101. Others in the innovation industries maintain that the Supreme Court was right to reinvigorate patent eligibility doctrine, tightening up this basic legal standard for obtaining a property right in a new invention or discovery, because too many overbroad and vague patents had been issued in recent years by the Patent Office. These invalid patents, they contend, are clogging the gears of the innovation economy by imposing unnecessary costs on other innovators and consumers. This Teleforum discusses the proposed amendments to the Patent Act, and whether legislative reform of Section 101 is necessary or not.Featuring:Mr. Phil Johnson, Founder and Principal, Johnson-IP Strategy & ConsultingMr. Dana S. Rao, Vice President, Intellectual Property and Litigation, Adobe Systems, Inc.Mr. Robert Sachs, President, Robert R. Sachs PCModerator: Prof. Adam Mossoff, Professor of Law, Antonin Scalia Law School, George Mason University Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up here. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

This Teleforum addresses whether there is a need to amend Section 101 of the Patent Act, which defines what counts as an invention eligible for receiving patent protection. Between 2010 and 2014, the Supreme Court issued four decisions interpreting and applying Section 101 to business, high-tech, and biotech inventions. In all four cases, the Court held that the patents were invalid for claiming abstract ideas, laws of nature, or facts of nature. Since 2014, federal courts have invalidated many patents in applying the Court’s new rules on patent eligibility. The Patent Office is also rejecting many patent applications. Some people in the innovation industries express concern that the Court’s decisions are vague and provide no objective framework as to whether a claim is patent eligible. Three trade associations, the Intellectual Property Owners Association (IPO), the American Intellectual Property Lawyers Association (AIPLA), and the American Bar Association’s IP Section, have released proposed amendments to Section 101. Others in the innovation industries maintain that the Supreme Court was right to reinvigorate patent eligibility doctrine, tightening up this basic legal standard for obtaining a property right in a new invention or discovery, because too many overbroad and vague patents had been issued in recent years by the Patent Office. These invalid patents, they contend, are clogging the gears of the innovation economy by imposing unnecessary costs on other innovators and consumers. This Teleforum discusses the proposed amendments to the Patent Act, and whether legislative reform of Section 101 is necessary or not.Featuring:Mr. Phil Johnson, Founder and Principal, Johnson-IP Strategy & ConsultingMr. Dana S. Rao, Vice President, Intellectual Property and Litigation, Adobe Systems, Inc.Mr. Robert Sachs, President, Robert R. Sachs PCModerator: Prof. Adam Mossoff, Professor of Law, Antonin Scalia Law School, George Mason University Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up here. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

On May 30, 2017, the Supreme Court decided Impression Products, Inc. v. Lexmark International, Inc. Lexmark International, Inc. (Lexmark), which owns many patents for its printer toner cartridges, allows customers to buy its cartridges through a “Return Program,” which is administered under a combination single-use patent and contract license. Customers purchasing cartridges through the Return Program are given a discount in exchange for agreeing to use each cartridge once before returning it to Lexmark. All of the domestically-sold cartridges at issue here and some of those sold abroad were subject to the Return Program. Impression Products, Inc. (Impression) acquired some Lexmark cartridges abroad--after a third party physically changed the cartridges to enable their re-use--in order to resell them in the United States. Lexmark then sued, alleging that Impression had infringed on Lexmark’s patents because Impression acted without authorization from Lexmark to resell and reuse the cartridges. Impression contended that its resale of the cartridges was not an infringement because Lexmark, in transferring the title by selling the cartridges initially, granted the requisite authority. The district court granted Impression’s motion to dismiss as it related to the domestically sold cartridges but denied it as to the foreign-sold cartridges. The U.S. Court of Appeals for the Federal Circuit reversed the district court’s judgment as to the domestically sold cartridges but affirmed dismissal regarding the cartridges sold abroad. -- There were two questions before the Supreme Court: (1) whether a “conditional sale” that transfers title to the patented item while specifying post-sale restrictions on the article's use or resale avoids application of the patent-exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law’s infringement remedy; and (2) whether, in light of this court’s holding in Kirtsaeng v. John Wiley & Sons, Inc. that the common-law doctrine barring restraints on alienation that is the basis of exhaustion doctrine “makes no geographical distinctions,” a sale of a patented article – authorized by the U.S. patentee – that takes place outside the United States exhausts the U.S. patent rights in that article. -- By a vote of 7-1, the Supreme Court reversed the judgment of the Federal Circuit and remanded the case. In an opinion by Chief Justice Roberts, the Court held that (1) Lexmark exhausted its patent rights in toner cartridges sold in the United States through its "Return Program"; and (2) Lexmark cannot sue Impression Products for patent infringement with respect to cartridges Lexmark sold abroad, which Impression Products acquired from purchasers and imported into the United States, because an authorized sale outside the United States, just as one within the United States, exhausts all rights under the Patent Act. The Chief Justice’s majority opinion was joined by Justices Kennedy, Thomas, Breyer, Alito, Sotomayor, and Kagan. Justice Ginsburg filed an opinion concurring in part and dissenting in part. Justice Gorsuch took no part in the consideration or decision of the case. -- And now, to discuss the case, we have Adam Mossoff, who is Professor of Law and Co-Director of Academic Programs and Senior Scholar of CPIP, Antonin Scalia Law School, George Mason University.

On February 22, 2017, the Supreme Court decided Life Technologies Corp. v. Promega Corp. Promega Corporation owned four patents for technology used in kits that can conduct genetic testing and was the exclusive licensee of a fifth patent. In 2010, Promega sued Life Technologies Corporation (LifeTech) for allegedly infringing on these patents. A jury found in favor of Promega but the district court nevertheless ruled for LifeTech, concluding that Promega had failed to present evidence sufficient to sustain the favorable jury verdict. The U.S. Court of Appeals for the Federal Circuit reversed that judgment, holding that the four Promega patents were ultimately invalid but agreeing that LifeTech had infringed the fifth patent and remanding to the district court for a determination of damages. In the course of its ruling, the Federal Circuit concluded that LifeTech’s supplying of a single, commodity component of a mulit-component invention had exposed LifeTech under federal law to damages liability on worldwide sales. -- The question before the Supreme Court was whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States exposes a manufacturer to liability for worldwide sales. -- By a vote of 7-0, the Supreme Court reversed the judgment of the Federal Circuit and remanded the case. In an opinion by Justice Sotomayor, the Court held that the supply of a single component of a multicomponent invention for manufacture abroad does not give rise to liability under Section 271(f)(1) of the Patent Act, which prohibits the supply from the United States of "all or a substantial portion of the components of a patented invention" for combination abroad. Justice Sotomayor’s opinion was joined by Justices Kennedy, Ginsburg, Breyer, and Kagan. Justices Thomas and Alito joined the majority opinion as to all but Part II-C. Justice Alito filed an opinion concurring in part and concurring in the judgment, in which Justice Thomas joined. Chief Justice Roberts was recused. -- To discuss the case, we have Howard J. Klein who is Attorney at Law at Klein, O’Neill & Singh, LLP.

On December 6, 2016, the Supreme Court decided Samsung Electronics Co. v. Apple. In April 2011, Apple sued Samsung Electronics, alleging that Samsung’s smartphones infringed on Apple’s trade dress as well as various design patents for the iPhone. A jury awarded Apple nearly $1 billion in damages under Section 289 of the Patent Act, and the trial court upheld most of the award against Samsung’s post-trial challenges. On appeal, the U.S. Court of Appeals for the Federal Circuit rejected Samsung’s argument that the district court erred by allowing the jury to award damages based on Samsung’s profits off of its phones in their entirety, rather than just the portion of profits attributable to the smartphone components covered under the design patents. -- The question before the Supreme Court was whether, where a design patent is applied to only a component of a product, an award of infringer’s profits should be limited to those profits attributable to the component. -- By a vote of 8-0, the Supreme Court reversed the judgment of the Federal Circuit and remanded the case. In an opinion by Justice Sotomayor, the Court unanimously held that in the case of a multicomponent product, the relevant article of manufacture for arriving at a damages award under Section 289 need not be the end product sold to the consumer but may be only a component of that product. Whether the relevant article of manufacture in this particular case should be the entire smartphone or merely a component thereof is an issue the Court left open for resolution on remand. -- To discuss the case, we have Trevor Copeland, a Shareholder at Brinks Gilson & Lione, and Art Gollwitzer, a Partner at Michael Best & Friedrich LLP.

In the past six years, there has been a momentous shift in what can be patented. In four separate cases, the Supreme Court embraced a more muscular approach in enforcing the basic requirement under § 101 of the Patent Act that only certain types of inventions can be patented, impacting inventive activities ranging from biotech to high-tech to business methods. As a result, the Court of Appeals for the Federal Circuit, trial courts, and the Patent Office have responded by sharply restricting the scope of “patentable subject matter," invalidating issued patents and rejecting patent applications at record rates. -- This change has been both consequential and controversial. Inventions that once were patentable in key innovation industries, such as cutting-edge diagnostic tests made possible by the biotech revolution and highly complex computer software in the high-tech sector, are no longer eligible for patent protection. Some welcome this development, seeing it as freeing up basic tools of research and preventing abusive assertions of patents against infringers. Others have criticized this development, identifying lost incentives to invest millions in R&D necessary to produce technological innovation and lost value in existing patents given pervasive uncertainty in the patent system as to what is and is not protectable. -- The lack of certainty is something both sides of this important legal and policy debate have found troublesome. Many agree that the Supreme Court's current patent-eligibility jurisprudence is confusing and murky. The Court's legal test for assessing patentable subject matter has proven unpredictable in its application by courts, by patent examiners, and by the administrative review board at the Patent Office (the Patent Trial and Appeal Board). -- One proposed solution has been to simply abolish § 101, the provision that sets forth the requirement that only an invention comprising a “machine, manufacture, process, or composition of matter" is patentable. The argument is that this provision is an antiquated holdover from the first patent statutes that did not have the granular requirements that now exist in the modern Patent Act, ensuing that only novel, nonobvious, useful and fully disclosed inventions are patentable. This panel will consider whether such a radical move is warranted, whether the Supreme Court's patentable subject matter jurisprudence is on the right track, or perhaps whether any problems in patentable subject matter jurisprudence are fixable by the Court or by Congress. -- This panel was held on November 17, 2016, during the 2016 National Lawyers Convention in Washington, DC. -- Featuring: Mr. David J. Kappos, Partner, Cravath, Swaine & Moore LLP; Prof. Adam Mossoff, Professor of Law and Co-Director of Academic Programs, Senior Scholar, Center for the Protection of Intellectual Property, Antonin Scalia Law School, George Mason University; Mr. Mark A. Perry, Partner, Gibson, Dunn & Crutcher LLP; and Prof. Joshua D. Sarnoff, Professor of Law, DePaul College of Law. Moderator: Hon. Susan G. Braden, U.S Court of Federal Claims.