Helsinn: Dueling Questions

I don’t know what the Supreme Court thinks of alternative statements of the question presented — but it has become a regular practice of parties opposing certiorari to restate the question in an attempt to shift attention of the court.

The pending petition in Helsinn is on point.  Compare the question presented in the petition with its complete restatement by the opposition:

Petition: 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.

Opposition: Whether this Court should review the Federal Circuit’s factual conclusion that Helsinn’s sale agreement with a third party publicly disclosed its claimed invention “in detail” (Pet. 33a) more than a year before it filed  its patent application, thus triggering the “on sale” bar on patentability set forth in 35 U.S.C. §102(a).

[Docket with Briefs] The difference between the two is typical — with the petition asking the court to focus on an important question of law and the opposition focusing on already-decided factual minutia.

Later this month, the Supreme Court is holding conference in the case and I would expect a call for the views of the Solicitor General.

38 thoughts on “Helsinn: Dueling Questions

  1. 6

    OT, but those thinking the pending IPR rule change to move from BRI to In re Phillips claim interpretation is going to make a big IPR difference should note that the Federal Circuit has again affirmed a district court claim construction holding that plain claim language will NOT be narrowed without clear and explicit disclaimer of broader claim scope in the record. Sumitomo Dainippon Pharma Co. v. Emcure Pharm. Ltd., (Fed. Cir., Apr. 16, 2018).

    1. 6.1

      Sure. There is a lot of wishful thinking in the supposition that either (1) BRI vs Philips makes much difference or (2) C&C vs. preponderance of evidence makes much difference. These distinctions are outcome determinative in only a handful of cases.

      1. 6.1.1

        or (2) C&C vs. preponderance of evidence makes much difference.

        The Ends do not justify the Means.

        (hint: takings law – if properly applied – WOULD make a substantial difference – on its face)

        Of course, this will not be recognized by the cheerleaders of the IPR mechanism, no matter any actual LEGAL impact…

        1. 6.1.1.1

          takings law – if properly applied

          The zombie walks! Keep a safe distance, folks.

          1. 6.1.1.1.1

            Did you have a point?

            Mindless and pointless ad hominem from you – the Accuse Others stench of Malcolm being the zombie is stultifying.

            Yay ecosystem !

          2. 6.1.1.1.2

            As with most every one of your comments, Malcolm, a small pushback reveals that you have NO substantive point to add to a conversation.

            You seem absolutely oblivious to how your “swagger” of drive-by ad hominem creates a view of whatever it is that you want to post as being nigh meaningless.

      2. 6.1.2

        Correct claim construction + clear and convincing evidence + presumption of validity + independent judiciary + FRCP cuts the invalidation rate in half. BRI has done its fair share. But agree it is only part of the problem.

        1. 6.1.2.1

          In half? Nothing like! Challenged patents fail about 43% of the time in court, and about 47% of the time in IPR/PGR/CBM. As I said, neither the claim construction nor the evidentiary standard makes much of a difference to outcome. The delta between 43% and 47% is composed of the different claim constructions, different evidentiary standards, and probably a few other considerations, which shows how little either claim construction or evidentiary standards affect the ultimate outcome in most cases.

            1. 6.1.2.1.1.1

              Well, yes, it does matter that one choose one’s data so as not to be deliberately misleading. My cite compared all patents challenged in court to all patents challenged in an AIA trial. You choose, for some inexplicable reason, to shift the comparison to only instituted AIA trials. If it pleases you to compare apples to oranges, I will not try to stop you, but from my end it looks a rather strange move.

              1. 6.1.2.1.1.1.1

                And your Article III comparison point is only for those “instituted” in courts…

                What point were you trying to make again?

                1. D.C. patent cases are “instituted” merely by filing a complaint. Few have validity decided on summary judgement. Less than 95% ever even get to trial. Thus D.C. invalidity statistics should be for cases that went through trial and appeal to final judgment on that issue, rather than, far more commonly, non-infringement. It excludes all the suit settlements to avoid high litigation costs that could have been invalidated if the case had continued. But many of the latter now end up in IPRs. I.e., statistical comparisons are difficult.

                2. D.C. patent cases are “instituted” merely by

                  Not really – especially since if you consider what “instituted” entails in the IPR regime…

      3. 6.1.3

        Mind you, this is not to say that I do not consider the C&C standard important. I think that Ron Katznelson makes a very convincing argument that C&C is constitutionally required for an issued claim. The constitution requires what it requires, even when the outcome is same with or without the constitutional protection. I just want people to approach the question with a clear-eyed view of what is at stake. Requiring C&C in IPRs would not actually change the outcome all that often.

        1. 6.1.3.1

          The constitution requires what it requires, even when the outcome is same with or without the constitutional protection

          Your “mea culpa” is STILL far too couched with your “approach the question with a clear-eyed view of what is at stake.” as your posts STILL smack of rah rah rah (only).

          Look into the archives here and see how much blow back I had received when I suggested that the IF these things really did not matter that much, then why were the usual suspects fighting against making those changes? (notably, the usual suspects being Paul and Malcolm and those whose typical postings exhibit anti-patent tendencies).

          1. 6.1.3.1.1

            IF these things really did not matter that much, then why were the usual suspects fighting against making those changes?

            Fixing something that isn’t broken because the world’s most entitled whiners never stop asking for more, no matter what, is pretty much always a bad idea.

            1. 6.1.3.1.1.1

              Ad hominem and assuming your own conclusions while NOT even bothering to address any provided point in your typical vapid way…

              Stultifying.

            2. 6.1.3.1.1.2

              Re: “IF these things really did not matter that much, then why were the usual suspects fighting against making those [IPR] changes?”
              Primarily because so many attorneys wanted to avoid admitting how much more of the difference is simply the difference between APJ patent lawyer claim and technology comprehension and typical lay jury lack of such comprehension. Those that did understand that were far more interested in killing any form of PTO post-grant proceeding outright rather than making changes. Now the more realistic will have to focus on changes.

              1. 6.1.3.1.1.2.1

                because so many attorneys wanted to avoid admitting how much more of the difference is simply the difference between APJ patent lawyer claim and technology comprehension and typical lay jury lack of such comprehension

                That’s the very first I am hearing of that angle, Paul.

                It’s an interesting angle, I will grant you that. But it has nothing to do with the conversation here.

        2. 6.1.3.2

          Are you saying that the constitution itself requires a clear and convincing standard as opposed to 273(b)?

            1. 6.1.3.2.1.1

              Interesting… I wasn’t aware that there was a rational argument for this position.

              That being said, I disagree with the underlying premise that patent validity is akin to child custody as in Santosky. While people may have an emotional investment in patent rights just as with children, I don’t believe that necessitates a heightened burden of proof.

        3. 6.1.3.3

          C&C is constitutionally required for an issued claim

          Give us a break, please.

  2. 5

    Respondent re-writing of the “Question Presented” does inspire entertaining [even more prejudicial] versions by others. Here’s mine – looking forward to other contestents:
    Should patent applicants who have delayed, without excuse, filing their patent applications beyond the AIA statute’s full year grace period, be given unlimited additional delay opportunities by inserting secrecy agreements in commercial sales of the invention?

    1. 5.1

      Was such an insertion made?

      There comes a point in time in which cert questions must bear on the case before the Court (at least as to the Court preserving its own ability to provide a positive answer to the cert, given that even the Supreme Court is a court of limited power and jurisdiction – even if they themselves sometimes forget that fact).

      Things like “no advisory opinions” and “current case or controversy” STILL apply.

      1. 5.1.1

        see line 2 of the actual petition Question, above.

        1. 5.1.1.1

          an invention to a third party that is obligated to keep the invention confidential

          is absolutely different than

          who have delayed, …be given unlimited additional delay opportunities by inserting secrecy agreements in commercial sales of the invention

          which speaks to a timing item of LATER inserting that which was not there previously.

          You may not have meant to imbue such a timing factor, but that is what is present in your question.

          1. 5.1.1.1.1

            You missed the point – that biased re-writings of the original “question presented” can be entertaining – but if you insist on treating it seriously, then note that the erroneous confusion of selling an invention versus selling a product that embodies the invention is made in the original “question presented.”

            1. 5.1.1.1.1.1

              I missed no such point Paul.

              Maybe you want to read my post that YOU commented to and see that YOU have missed the point here…

              1. 5.1.1.1.1.2.1

                Apologies to Gilbert & Sullivan, whose original was obviously superior…

  3. 4

    This isn’t surprising at all, when the petitioner typically writes the question in the first place to frame the issue in the best light possible for them. In some cases, the question is written such that it doesn’t state the true legal issue at all.

    A great example is the Regeneron case discussed a few days ago here. Regeneron framed the question as if the issue at hand was whether a patent could be completely invalidated for inequitable conduct during litigation, when invalidation is normally only done for inequitable conduct that occurred during prosecution. But that question notably ignores that the district court actually was looking at whether inequitable conduct occurred during prosecution, and the alleged inequitable conduct during litigation affected the court’s ability to reach a determination of what happened during prosecution.

    The broader question that Regeneron asked could instead be reframed by Merus as the narrower question of whether a court can properly draw an adverse inference from litigation misconduct that clouded the issue of earlier prosecution misconduct, and thereby reach the determination that inequitable conduct happened during prosecution. (Assuming that Merus doesn’t think of a cleverer way to reframe it.)

    One question here is, why do some attorneys view the intelligence of the Justices of the Supreme Court so poorly that they believe that SCOTUS would be taken in by such a game?

    1. 4.1

      Your last question appears to be rhetorical, given the actual decisions made by the Court.

    2. 4.2

      why do some attorneys view the intelligence of the Justices of the Supreme Court so poorly that they believe that SCOTUS would be taken in by such a game?

      The abject st 00 pity of a certain class of patent attorneys is only matched by their contempt for any branch of the law which would dare interfere with their grifting.

      This is well-documented. Go hang out at Big Jeans place or Patent Cr0 cks and inhale the endless inanity for a while.

      1. 4.2.1

        So Accuse Others of you, Malcolm.

        Sooo predictable.

  4. 3

    The opposition’s formulation ducks the legal question entirely. It’s only appropriate to ignore the legal question presented if the outcome of the case won’t change depending on how that legal question is resolved. In this case, if the “on sale” bar is not triggered by a sale that does not publicly disclose the details of the alleged invention, the outcome of the case would likely change.

    But the Petitioner’s formulation is also somewhat problematic. The CAFC’s holding was based on the fact that (1) the EXISTENCE of the sale was public, but (2) the DETAILS of the alleged invention that were offered for sale, were not public. This isn’t a case with a totally secret sale, and the holding was pretty narrow.

    My prediction is that this is a pretty easy cert. denied from the Supreme Court. This case doesn’t present the right facts to address the broader on sale question.

  5. 2

    Totally off-topic, but one of the CAFC decisions today is a Rule 36 in Kite Pharma v. Sloan-Kettering Cancer Center. The appeal was from a final decision in an IPR in which all challenged claims were sustained against an obviousness challenge. The attorney for the patent owner: Andrei Iancu.

    The decision was handed down on 16 Dec 2016, and Iancu was not nominated until 25 Aug 2017, so clearly there was no improper influence of this particular PTAB panel. Still and all, it is surely a credit to Mr. Iancu that he was able to get that case to a final decision with no claims lost. Such outcomes are quite rare.

  6. 1

    I am cheering for the petitioner’s presentation of the question.

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