The “on-sale bar” deems that certain sales of an invention that occur more than one year before a patent application is filed are a bar to patentability.  See 35 U.S.C. § 102(b) (pre-America Invents Act (“AIA”)); 35 U.S.C. § 102(a)(1) (AIA).  On Monday, June 25, 2018, the Supreme Court granted Helsinn’s petition for certiorari in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., to interpret the on-sale bar provision of 35 U.S.C. § 102 in the AIA.  Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., — S. Ct. —, 2018 WL 1142984 (2018) [SCOTUSblog case file].  The question presented to the Supreme Court is: “Whether, under the Leahy-Smith America Invents Act, 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.”  Petition for Certiorari, Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., No. 17-1229, 2018 WL 1168243 (Feb. 28, 2018).
Continue Reading Did the AIA Change the On-Sale Bar Standard? The Supreme Court Will Decide.

On May 15, 2018, the Federal Circuit in In re BigCommerce issued an order in response to writs of mandamus seeking dismissal and transfer.  Nos. 2018-120, 2018-122, 2018 WL 2207265 (Fed. Cir. May 15, 2018).  The panel ruled that for purposes of the patent venue statute (28 U.S.C. § 1400(b)), if a domestic corporation is incorporated in a state having several judicial districts, then it “resides” in only one district.  Id. at *6.  That district is either (1) the district in the state where the corporation maintains its principal place of business or (2) if that does not exist, then the district containing the corporation’s registered office.  Id.  In re BigCommerce follows the Supreme Court’s seminal 2017 TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017) decision altering the course of where domestic corporations may be sued for patent infringement.
Continue Reading If There Was Any Doubt, Federal Circuit Confirms Its Agreement with Dorothy: “There’s No Place Like Home”

On May 8, 2018, the United States Patent and Trademark Office (USPTO) announced a proposed rulemaking to change the current claim construction standard used in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) proceedings before the Patent Trial and Appeal Board (PTAB).  If approved, this change would align the standard applied in claim construction proceedings in the PTAB with the standard applied in District Courts and the International Trade Commission (ITC).  Currently, the PTAB interprets patent claims according to their broadest reasonable interpretation, while District Courts and the ITC apply the ordinary and customary meaning standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  This proposed rule would change the claim construction standard applied in all pending IPR, PGR, and CBM proceedings, and not just newly-filed petitions.
Continue Reading PTAB Proposes to Adopt the Phillips Standard for Claim Construction in Post-Grant Proceedings