Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

IP News

By Jeffrey S. Ginsberg and Joseph Mercadante
December 21, 2012

Supreme Court Agrees to Hear Two Important Patent Cases

The Supreme Court has granted certiorari in Association for Molecular Pathology v. Myriad Genetics, Inc., No. 12-398, limited to a single question: Are human genes patentable? The case began in the Southern District of New York, where the plaintiff filed a declaratory judgment action seeking a decision that claims of Myriad's patents were invalid. The district court granted plaintiff's motion for summary judgment of invalidity, essentially holding that all claims to human genes are not patentable under 35 U.S.C. ' 101. 669 F. Supp. 2d 365, 369-76 (S.D.N.Y. 2010). The Federal Circuit heard the appeal, and after a rehearing in light of the Supreme Court's decision in Mayo Collaborative Services v. Prometheus, Inc., 566 U.S. __, 2012, held that Myriad's claims to isolated DNAs were eligible for patent protection, while the claims directed to comparing and analyzing gene sequences were not. Association for Molecular Pathology v. U.S. Patent & Trademark Office, 689 F.3d 1303 (Fed. Cir. 2012).

The Supreme Court in the October Term 2012 also agreed to hear another patent case captioned Federal Trade Commission v. Watson Pharmaceuticals, Inc., No. 12-416. The case involves so-called “Pay for Delay” settlements ending pharmaceutical litigation under the Hatch-Waxman Act, wherein the patent holder pays the generic challenger to stay off the market for a longer period of time than provided for by statute. The Supreme Court will resolve a circuit split and decide “Whether reverse-payment agreements are per se lawful unless the underlying patent litigation was a sham or the patent was obtained by fraud (as the court below held), or instead are presumptively anticompetitive and unlawful (as the Third Circuit has held). The FTC has argued that it is presumptively anticompetitive for an incumbent firm to pay a potential competitor to stay out of the market. Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990). Justice Samuel Alito has recused himself from the case.

Jeffrey S. Ginsberg is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.

Supreme Court Agrees to Hear Two Important Patent Cases

The Supreme Court has granted certiorari in Association for Molecular Pathology v. Myriad Genetics, Inc., No. 12-398, limited to a single question: Are human genes patentable? The case began in the Southern District of New York, where the plaintiff filed a declaratory judgment action seeking a decision that claims of Myriad's patents were invalid. The district court granted plaintiff's motion for summary judgment of invalidity, essentially holding that all claims to human genes are not patentable under 35 U.S.C. ' 101. 669 F. Supp. 2d 365, 369-76 (S.D.N.Y. 2010). The Federal Circuit heard the appeal, and after a rehearing in light of the Supreme Court's decision in Mayo Collaborative Services v. Prometheus, Inc. , 566 U.S. __, 2012, held that Myriad's claims to isolated DNAs were eligible for patent protection, while the claims directed to comparing and analyzing gene sequences were not. Association for Molecular Pathology v. U.S. Patent & Trademark Office , 689 F.3d 1303 (Fed. Cir. 2012).

The Supreme Court in the October Term 2012 also agreed to hear another patent case captioned Federal Trade Commission v. Watson Pharmaceuticals, Inc. , No. 12-416. The case involves so-called “Pay for Delay” settlements ending pharmaceutical litigation under the Hatch-Waxman Act, wherein the patent holder pays the generic challenger to stay off the market for a longer period of time than provided for by statute. The Supreme Court will resolve a circuit split and decide “Whether reverse-payment agreements are per se lawful unless the underlying patent litigation was a sham or the patent was obtained by fraud (as the court below held), or instead are presumptively anticompetitive and unlawful (as the Third Circuit has held). The FTC has argued that it is presumptively anticompetitive for an incumbent firm to pay a potential competitor to stay out of the market. Palmer v. BRG of Ga., Inc. , 498 U.S. 46, 49-50 (1990). Justice Samuel Alito has recused himself from the case.

Jeffrey S. Ginsberg is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
COVID-19 and Lease Negotiations: Early Termination Provisions Image

During the COVID-19 pandemic, some tenants were able to negotiate termination agreements with their landlords. But even though a landlord may agree to terminate a lease to regain control of a defaulting tenant's space without costly and lengthy litigation, typically a defaulting tenant that otherwise has no contractual right to terminate its lease will be in a much weaker bargaining position with respect to the conditions for termination.

How Secure Is the AI System Your Law Firm Is Using? Image

What Law Firms Need to Know Before Trusting AI Systems with Confidential Information In a profession where confidentiality is paramount, failing to address AI security concerns could have disastrous consequences. It is vital that law firms and those in related industries ask the right questions about AI security to protect their clients and their reputation.

Authentic Communications Today Increase Success for Value-Driven Clients Image

As the relationship between in-house and outside counsel continues to evolve, lawyers must continue to foster a client-first mindset, offer business-focused solutions, and embrace technology that helps deliver work faster and more efficiently.

Pleading Importation: ITC Decisions Highlight Need for Adequate Evidentiary Support Image

The International Trade Commission is empowered to block the importation into the United States of products that infringe U.S. intellectual property rights, In the past, the ITC generally instituted investigations without questioning the importation allegations in the complaint, however in several recent cases, the ITC declined to institute an investigation as to certain proposed respondents due to inadequate pleading of importation.

The Power of Your Inner Circle: Turning Friends and Social Contacts Into Business Allies Image

Practical strategies to explore doing business with friends and social contacts in a way that respects relationships and maximizes opportunities.