Supreme Court Denies Review In Three Section 101 Cases

Photo of John P. Isacson
John P. Isacson

On January 13, 2020, the U.S. Supreme Court denied certiorari in the following cases:

HP Inc. v. Berkheimer (18-415) (method of archiving in a computer);

Hikma Pharmaceuticals, et al. v. Vanda Pharmaceuticals (18-817) (method of treating a patient with schizophrenia); and

Athena Diagnostics, Inc. et al. v. Mayo Collaborative, et al. (19-430) (method of diagnosing neurotransmission or developmental disorders).

 

The American Rule Is Still the Rule

Photo of John P. Isacson
John P. Isacson

Laura Peter, Deputy Director, Patent and Trademark Office v. NantKwest, Inc., No. 18-801 (December 11, 2019)

Today, the Supreme Court overruled a recent interpretation of 35 USC §145 by the U.S. Patent and Trademark Office (USPTO), which permits the USPTO to recover expenses against applicants who filed civil actions against the USPTO. Section 145 allows unsuccessful parties at the USPTO to file a district court action for review of a decision from the Patent Trial and Appeal Board instead of going directly to the U.S. Court of Appeals for the Federal Circuit. Traditionally, the statute has been interpreted to permit the USPTO to recover expenses such as copying costs and expert fees.

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Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

By Reza Mollaaghababa
In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In particular, 35 U.S.C. §102(a)(1) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” Continue reading “Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales”