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BPLA Case Law Committee Meeting
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12 -12:15 pm: Arrival and networking 12:15 pm - 1:15 pm: Case discussion

When: 12 PM - 1:15 PM
Where: WilmerHale
60 State Street
Boston, Massachusetts  02109
United States
Presenter: James Lampert, WilmerHale, Retired
Contact: Yvonne Lee

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 BPLA Case Law Committee

Please join the Case Law Committee for lunch and a presentation by James Lampert on "In public use or on sale."

Friday, June 16, 2017

12 pm to 1:15 pm



60 State Street

Boston, MA 02109


Our focus will be on the CAFC’s opinions in The Medicines Company v. Hospira, Inc. and Helsinn Healthcare v. Teva.  In Medicines Company, Federal Circuit held en banc that products for which the Medicines Company paid $347,500 pursuant to a “manufacturing services” agreement were not “on sale.” It left open whether the the “on sale bar” was triggered by a “Supply and Purchase” agreement with an exclusive distributor. 

In Helsinn, a Federal Circuit panel reached the opposite result, holding that the “on sale” bar under both the 1952 Patent Act and the AIA was triggered by a “Supply and Purchase” agreement that contemplated the future (subject to FDA approval) sale of products to a distributor since the existence of the agreement was public; but apparently not by an equally public License Agreement. 

Important questions raised by the two decisions include: (1) the extent to an agreement results in an “on sale” bar depends more on drafting than substance; (2) did the AIA change the requirements for either “public use” or “on sale;” (3) does the outcome depend on whether the patentee was a party to the agreement; rather than a third party; (4) do different “secrecy” rules apply to “public use” and “on sale,” and (4) what advice can you give a client when none of the “factors that are important to the analysis … is determinative individually.” 

Meeting resources:
The Medicines Company v. Hospira, Inc.

Helsinn Healthcare v. Teva.

Click here for a relevant extract from the MPEP

Committee Co Chairs

James Lampert, WilmerHale, Retired

Yvonne Lee, WilmerHale

N. Scott Pierce, Hamilton Brook Smith Reynolds

Valarie Rosen, Cabot Corporation
David Thibodeau, Cesari and McKenna


Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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