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Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., et al.

Paid petition · United States Court of Appeals for the Federal Circuit, No. 2016-1284, 2016-1787 · judgment May 1, 2017

Decided · January 22, 2019
Pre-decision estimate: 3% cert probability

Before the decision, well below the 4.1% base rate, with no standout signals pointing toward a grant.

Question presented

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.

Counsel of record

For petitioner
Kannon K. Shanmugam
Paul, Weiss, Rifkind, Wharton & Garrison LLP

For respondent
William McGinley Jay
Goodwin Procter, LLP

Case

Conference history
Distributed for 2 conferences

Amicus briefs
10 cert-stage · 20 merits
(13 supporting pet./neither, 7 respondent)

Argument & decision

Argued December 4, 2018 — Kannon K. Shanmugam · William M. Jay. Audio and transcript

Decided January 22, 2019. Opinion by Thomas.

Proceedings

  1. Feb 26 2019
    JUDGMENT ISSUED.
  2. Jan 22 2019
    Adjudged to be AFFIRMED. Thomas, J., delivered the opinion for a unanimous Court.
  3. Dec 04 2018
    Argued. For petitioner: Kannon K. Shanmugam, Washington, D. C.; and Malcolm L. Stewart, Deputy Solicitor General, Department of Justice, Washington, D. C. (for United States, as amicus curiae.) For respondents: William M. Jay, Washington, D. C.
  4. Nov 08 2018
    Reply of petitioner Helsinn Healthcare S.A. filed. (Distributed)
  5. Oct 24 2018
    Record received from the U.S.C.A. Federal Circuit is electronic and located on PACER, with the exception of some confidential documents (1 Envelope).
  6. Oct 19 2018
    CIRCULATED
  7. Oct 16 2018
    Brief amicus curiae of Association for Accessible Medicines filed.
  8. Oct 16 2018
    Brief amicus curiae of Intel Corporation filed.
  9. Oct 16 2018
    Brief amicus curiae of IEEE-USA filed.
  10. Oct 16 2018
    Brief amici curiae of SPCM S.A. and High Tech Inventors Alliance filed.
  11. Oct 16 2018
    Brief amicus curiae of Congresswoman Zoe Lofgren filed.
  12. Oct 15 2018
    Brief amici curiae of R Street Institute and Engine Advocacy filed.
  13. Oct 15 2018
    Record requested from the U.S.C.A. Federal Circuit.
  14. Oct 09 2018
    SET FOR ARGUMENT on Tuesday, December 4, 2018
  15. Oct 09 2018
    Motion of the Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument GRANTED. Justice Kavanaugh took no part in the consideration or decision of this motion.
  16. Oct 09 2018
    Brief of respondents Teva Pharmaceuticals USA, Inc., et al. filed.
  17. Oct 09 2018
    Brief amici curiae of 45 Intellectual Property Professors filed.
  18. Sep 24 2018
    Motion of the Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument filed.
  19. Aug 30 2018
    Brief amicus curiae of United States of America filed.
  20. Aug 30 2018
    Brief amicus curiae of Pharmaceutical Research and Manufacturers of America filed.
  21. Aug 30 2018
    Brief amicus curiae of American Intellectual Property Law Association in support of neither party filed.
  22. Aug 30 2018
    Brief amicus curiae of The Massachusetts Biotechnology Council filed.
  23. Aug 30 2018
    Brief amicus curiae of Bar Association of the District of Columbia filed.
  24. Aug 30 2018
    Brief amicus curiae of Austin Intellectual Property Law Association in support of neither party filed.
  25. Aug 30 2018
    Brief amicus curiae of The Naples Roundtable in support of neither party filed.
  26. Aug 30 2018
    Brief amicus curiae of The Intellectual Property Law Association of Chicago in support of neither party filed.
  27. Aug 30 2018
    Brief amicus curiae of Houston Intellectual Property Law Association in support of neither party filed.
  28. Aug 30 2018
    Brief amicus curiae of US Inventor, Inc. filed.
  29. Aug 30 2018
    Brief amicus curiae of The Biotechnology Innovation Organization (BIO) filed.
  30. Aug 23 2018
    Brief of petitioner Helsinn Healthcare S.A. filed.
  31. Aug 23 2018
    Brief amicus curiae of Congressman Lamar Smith filed.
  32. Aug 23 2018
    Joint appendix filed.
  33. Aug 23 2018
    Brief amicus curiae of Intellectual Property Owners Association in support of neither party filed.
  34. Aug 01 2018
    Blanket Consent filed by Petitioner, Helsinn Healthcare S.A..
  35. Jul 03 2018
    Motion to extend the time to file the briefs on the merits granted. The time to file the joint appendix and petitioner's brief on the merits is extended to and including August 23, 2018. The time to file respondents' brief on the merits is extended to and including October 9, 2018.
  36. Jul 02 2018
    Motion for an extension of time to file the briefs on the merits filed.
  37. Jun 25 2018
    Petition GRANTED.
  38. Jun 18 2018
    DISTRIBUTED for Conference of 6/21/2018.
  39. May 29 2018
    DISTRIBUTED for Conference of 6/14/2018.
  40. May 29 2018
    Reply of petitioner Helsinn Healthcare S.A. filed. (Distributed)
  41. May 11 2018
    Brief of respondents Teva Pharmaceuticals USA, Inc., et al. in opposition filed.
  42. Apr 02 2018
    Brief amicus curiae of Pharmaceutical Research and Manufacturers of America filed.
  43. Apr 02 2018
    Brief amicus curiae of Boston Patent Law Association in support of neither party filed.
  44. Apr 02 2018
    Brief amicus curiae of The Naples Roundtable filed.
  45. Apr 02 2018
    Brief amicus curiae of The Biotechnology Innovation Organization (BIO) filed.
  46. Apr 02 2018
    Brief amicus curiae of US Inventor, Inc. filed.
  47. Apr 02 2018
    Brief amicus curiae of Bar Association of the District of Columbia filed.
  48. Apr 02 2018
    Brief amicus curiae of The Massachusetts Biotechnology Council filed.
  49. Mar 30 2018
    Brief amicus curiae of Intellectual Property Owners Association filed.
  50. Mar 30 2018
    Brief amicus curiae of American Intellectual Property Law Association filed.
  51. Mar 27 2018
    Brief amicus curiae of Congressman Lamar Smith filed.
  52. Mar 19 2018
    Blanket Consent filed by Respondents, Teva Pharmaceuticals USA, Inc., et al..
  53. Mar 13 2018
    Motion to extend the time to file a response is granted in part and the time is extended to and including May 11, 2018.
  54. Mar 13 2018
    Blanket Consent filed by Petitioner, Helsinn Healthcare S.A..
  55. Mar 12 2018
    Motion to extend the time to file a response from April 2, 2018 to May 17, 2018, submitted to The Clerk.
  56. Feb 28 2018
    Petition for a writ of certiorari filed. (Response due April 2, 2018)