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Amicus Briefs


Filing Date

United States Patent and Trademark Office, et. al., v. B.V.,

The BPLA, via the Amicus and Trademarks and Unfair Competition Committees, submitted an amicus brief supporting  In, the USPTO refused to register the mark “” as generic.  On appeal to the district court, submitted survey evidence showing that consumers regarded the mark as a source identifier (i.e., a functioning trademark) rather than as a generic term, and the district court reversed the USPTO.   The Court of Appeals for the 4th Circuit affirmed.   In the Supreme Court, the USPTO and its amici argued that adding a generic top level domain identifier like “.com” to a generic term like “Booking” does not convert a generic term to a proper trademark.   The BPLA argued that the USPTO was asking the wrong question. The question is not whether adding one generic term to another can ever create a non-generic mark. Rather, the correct question is what is the commercial impression of the mark as a whole.  The BPLA further argued that the USPTO cannot ignore survey evidence on the commercial impression that the mark as a whole makes on consumers.  Erik Belt, Lori Shyavitz, Susan Goldsmith, Anne Shannon, and Alex Ried, all of McCarter & English, LLP, wrote the brief.

February 19, 2020
Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., et al. May 8, 2019
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA , Inc., et al.,

As in its brief in support of rehearing en banc at the Federal Circuit, the BPLA advocates for granting certiorari to provide timely guidance on the meaning of “on-sale” under the America Invents Act (AIA). The BPLA urges the Supreme Court to make clear whether the meaning of “on sale” as used in 35 U.S.C. §102(a) retains the same meaning that “on sale” had prior to the AIA. Further, the BPLA encourages the court to establish a framework under which to analyze whether an invention is “on sale,” if the Court decides the meaning has changed. In support of its position, the BPLA highlights the substantial confusion regarding the effect of the AIA amendments on the meaning of “on sale,” including the additional confusion introduced by the Federal Circuit’s denial of rehearing and related concurrence. The BPLA also emphasizes the importance of this issue of patent law and how it affects all participants in the patent system.

 April 2, 2018

The Supreme Court granted certiorari on the question of “[w]hether inter partes review - an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents - violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”  The BPLA filed an amicus brief in support of neither party.  In its amicus brief, the BPLA advocated that, contrary to the positions of the parties and other amici, patents are neither purely private nor purely public rights.  While the right to exclude others from using patented technology is a private right, the process for obtaining a valid patent is part of an extensive regulatory scheme, and therefore, “involves public rights.”  Because obtaining a valid patent involve pubic rights, Congress can properly assign the adjudication of patent validity to an administrative agency without violating Article III or the Seventh Amendment, and therefore, IPRs should be deemed Constitutional.


BPLA further raised the issue that IPRs are an important component of a strong and reliable patent system, as contemplated by the Constitution.  A patent represents a bargain between an inventor and the public, and while an equitably balanced patent system is ideal, achieving a balanced patent system is a difficult task.  Reports indicate that weak patents have issued and continue to issue, which unbalances the patent system and deprives the public of information that it should rightfully be able to use.  Because the public’s interest is paramount in the patent bargain, the public needs an efficient mechanism that is not cost prohibitive by which it can challenge weak patents and restore the equitable nature of the bargain made with inventors.  The BPLA submitted that post-grant challenges, including IPRs, provide that mechanism.

 August 31, 2017

In this brief, the BPLA advocates for rehearing en banc of Helsinn v. Teva Pharmaceuticals to provide timely guidance on whether the America Invents Act changed the meaning of “on-sale” under the AIA, an important issue left open by the panel decision.  The BPLA urges the court to seize this opportunity to make clear whether the meaning of “on sale” as used in 35 U.S.C. §102(a) retains the same meaning that “on sale” had prior to the AIA.  Additionally, if the Court should decide the meaning has changed, the BPLA encourages the court to establish a framework under which to analyze whether an invention is “on sale.” 

In support of its position, the BPLA highlights the substantial confusion regarding the effect of the AIA amendments on the meaning of “on sale” and emphasizes that this is an important issue of patent law that affects all participants in the patent system.  Additionally, the BPLA argues that this is the proper case for en banc rehearing on this issue.  As a statutory interpretation question of first impression, this is the type of case the court historically hears en banc.  Furthermore, the statute has multiple, conflicting plausible interpretations and resolution of the underlying issues has broad implications on the patent systems and its participants.  

 July 14, 2017

In this brief, the BPLA argued that the Board’s power to institute an inter partes review under § 314(a) is particular to the “petitioner.” There must be a showing that “there is a reasonable likelihood that the petitioner would prevail” on at least one of the challenged claims. Under § 315(b), the Board may not institute review if the “petitioner” (or its privy or real party in interest) filed its petition more than one year after being served with a complaint for infringement of the challenged patent. A time-barred petitioner has no cause of action. Unlike the institution decision, the Board’s final written decision under § 318(a) is a decision on the merits of the cause of action. Although § 314(d) prohibits review of the Board’s institution decision, § 319 permits review of § 318(a) final written decisions. Thus, to the extent that a final written decision addresses the time-bar issue (or other issues related to whether the petitioner has a cause of action), then that issue should be reviewable.

 February 23, 2017


BPLA advocated that U.S. patent exhaustion law should not be applied to foreign sales.  In support, BPLA argued that by rule the patent law is territorial, and any exception to that rule should be made by Congress and not the Court.  BPLA distinguished Kirtsaeng , where the Court found foreign copyright exhaustion, primarily on the grounds that the Copyright Act contains a specific exhaustion provision and the Patent Act does not. Accordingly, on that basis, and in light of a number of important policy reasons, BPLA argued that the Court should not accept Petitioner's invitation to create a judicial rule requiring patent exhaustion based on foreign sales.

 February 23, 2017


Provides disgorgement of the infringer’s profits as a remedy for design patent infringement. At issue in this widely watched case is whether the Federal Circuit erred in upholding the lower court’s determination that Apple was entitled to all of Samsung’s profits on its sales of phones that were found to infringe Apple’s design patents, which cover the look of Apple’s iconic iPhone.Samsung and its amici argued that disgorgement of total profits overcompensates design patent owners for the relative contribution of their designs to the overall value of multi-component products like smartphones, and cautioned that upholding the Federal Circuit’s interpretation of section 289 would unleash an explosion of design patent NPEs.


The BPLA filed an amicus brief in support of Apple. It made two main arguments. First, the BPLA explained that the reason no explosion of design patent NPEs had taken place in the 130 years since Congress provided disgorgement of total profits as a remedy for design patent infringement—and was unlikely to take place in the future—is that there is no market for design patents comparable to that for utility patents. That is because design patents often protect what is at the core of a company’s brand identity, so companies are much more reluctant to license or to sell their design patents than they are to license or sell their utility patents.


Second, after observing that it is not for the Supreme Court to substitute its judgment for that of Congress regarding an appropriate remedy for design patent infringement, the BPLA argued that disgorgement of profits both provides the appropriate measure of compensation and the appropriate kind of deterrence. It provides the appropriate measure of compensation because, as Congress itself recognized, designs drive sales. Disgorgement also provides the appropriate kind of deterrence because of the special characteristics of design patents—they are nearly impossible to infringe innocently, but both very easy to infringe purposefully (by copying) and very easy to avoid infringing (by refraining from copying).

August 5, 2016




In the much-discussed case, Ariosa Diagnostics v. Sequenom Inc., 788 F. 3d 1371 (Fed . Cir 2015), the Federal Circuit created enormous turmoil concerning the modern boundaries of subject-matter eligibility under 35 U.S.C. § 101. In a series of diverse interpretations ofAliceand Mayo, various Federal Circuit judges threw up their hands at what they acknowledged was a broken and unworkable framework for determining patent-eligible subject matter. Unable to synthesize or distinguishAlice and Mayo, claims that were widely viewed as patentable in Ariosawas held to not be. The BPLA filed an amicus brief supporting Sequenom’sPetition for a Writ of Certiorariasking the Supreme Court to clarify and restore the boundaries of § 101.Failure to do so would create a crisis for development of new and useful medical diagnostic methods and the miracle of “personalized” or precision medicine that requires them.

April 20, 2016



August 25, 2015


 I/P Engine, Inc. v. AOL, Inc. et al.

On June 15, 2015, the Boston Patent Law Association (BPLA) submitted to the U.S. Supreme Court an amicus curiae brief in support of a petitioner’s petition for a writ of certiorari in a patent case involving the Federal Circuit’s standard for reviewing a jury’s findings of fact underlying a judgment of non-obviousness.

The patent owner, I/P Engine, Inc., petitioned the Supreme Court after a Federal Circuit panel held that its paten invalid as obvious. Applying de novo review and, in essence, disregarding the jury’s special verdict findings of fact that the patent was non obvious, the Federal Circuit panel held that “the common sense of a skilled artisan” would have bridged the differences between the prior art and the patent’s claims. But there was no evidence in the trial court about what one of ordinary skill in the art would regard to be “common sense.”

The BPLA urged the Supreme Court to hear the case to clarify the Federal Circuit’s role in reviewing the jury’s factual findings on obviousness. The BPLA argued that a more deferential standard, such as “substantial evidence,” should apply. In particular, the BPLA argued that juries can—and should—be trusted with fact finding in obviousness cases and that their findings should not be summarily set aside. The BPLA further argued that the issues raised in the appeal are similar to those addressed by the Supreme Court in recent decisions in Teva v. Sandoz, Microsoft v. i4i Ltd., and Octane Fitness v. ICON Health, in which the Supreme Court reasserted the role of district court judges and juries in deciding factual issues.

June 15, 2015


Highmark Inc., v. AllCare Health Management Systems, Inc.


The BPLA believes that de novo review of the objective baselessness test for exceptionality under 35 U.S.C. § 285 is the appropriate standard of review. All attorneys have the duty to zealously represent their clients. At times, this zealous advocacy requires litigants to take positions that are aggressive or novel, testing the current boundaries of patent law. As long as these positions are advanced within the recognized constructs of law, such aggressive advocacy is not merely permitted but is, and should be, encouraged. Indeed, the pursuit of groundbreaking legal theories is precisely the manner in which the common law develops over time. The Court of Appeals for the Federal Circuit, which reviews hundreds of patent cases each year and thus sees far more patent issues than any individual district court ever could, is uniquely qualified to determine whether a particular position asserted in patent litigation crosses the line from zealous advocacy to objective baselessness. On the other hand, allowing district courts deference in assessing the objective merits of patent claims or defenses will discourage litigants from developing and pressing ground-breaking or aggressive arguments in patent litigation. As a result, both patent owners and accused infringers will suffer because they will be deprived of the very best and most zealous advocacy.

January 24, 2014


 The Association for Molecular Pathology, et al., v. Myriad Genetics, Inc., et al.


The Supreme Court posed the question for review as whether “human genes” constitute patent eligible subject matter within the meaning of 35 U.S.C. § 101. Congress, however, has already recognized that isolated human “genes” are patent eligible and, given the opportunity during the recent debate on patent reform, declined to exclude so-called “gene patents” from patent eligibility under § 101.

Further, the United States Patent and Trademark Office has, for at least the last three decades, issued “gene patents,” and the biotechnology industry and others have come to rely on them. Thus, any sweeping contraction of the scope of patentable subject matter in this area, which would unsettle the expectations of the public based on thirty years of Patent Office practice, should be left to Congress, which has already initiated an investigation of the impact of theMyriad case and genetic testing patents in general.

Rather, the Court would provide a great service to the public by clarifying the legal principles underlying a §101 analysis as applied to biological products, including by reaffirming the approach ofChakrabarty and other cases requiring consideration of the claimed product as a whole and application of the pragmatic “new and useful” test to distinguish products of human ingenuity from products of nature. Indeed the Court could go a long way toward improving the clarity and stability of the law in this area simply by overruling the pre-1952 Act decisions inFunk Bros. and Brogdex. Those cases conflict with  the Chakrabarty approach and were based on erroneous principles.

Finally the Court should avoid answering the question presented by the Petitioner—namely, “are human genes patentable?”--due to the inherent problems in the continually evolving, ambiguous conceptual term “gene.” Answering this question, rather than a more proper question that focuses on the biochemical and structural terms used in actual patent claims, such as DNA structures or nucleic acid structures, will lead to confusion and ambiguity.

March 14, 2013


Jenzabar, Inc.v. Long Bow Group, Inc.

In an case concerning the use of key words in website searches, a Superior Court for the Commonwealth of Massachusetts issued an order that would allow parties to use the trademarks of

others to cause confusing links to appear in online search results so long as the content on the linked website was not confusing. On appeal, the BPLA submitted anamicus brief, drafted by attorneys at Wolf, Greenfield & Sacks, P.C., urging the appeals court to recognize that parties should not be allowed to use the trademarks of others to trick people into viewing their websites.

December 22, 2011


Association of Molecular Pathology v. UnitedStates Patent and Trademark Office

October 29, 2010


Therasense v. Becton Dickinson


The Federal Circuit employs no less than five different tests to determine whether information is material such that it should be cited during prosecution in accordance with to 37 C.F.R. § 1.56 (Rule 56). Ironically, under the current framework, applicants and practitioners can comply with its duty of disclosure established by Rule 56 before the PTO and yet still be found by a court to have committed inequitable conduct for duty of disclosure-related issues. Recognizing these flaws, the BPLA proposes that the Federal Circuit scrap its multiple materiality tests in favor of a single test: an objective “but for” test whereby information would not be deemed material unless it invalidates one or more patent claims. The brief advocates the numerous advantages that would result from such a bright-line test, including: (1) realigning the inequitable conduct doctrine with its roots in common law fraud; (2) making it more difficult to allege and prove inequitable conduct; and (3) furthering the goal of providing the PTO with the information most pertinent to patentability without much extraneous material.

August 2, 2010


ACLU v. Myriad

Are genes patentable? That is the central question asked inAssociation for Molecular Pathology, et al., v. United States patent and Trademark Office, et al., also known asACLU v.Myriad. The BPLA submitted an amicus brief arguing that the patents at issue, which are directed to certain "personalized medicine" inventions that test for predispositions to cancer, are eligible for patent protection under 35 U.S.C. sec. 101. The BPLA also argues that patents are vital tot he economy and that, without patents, innovation in the biotechnology and pharmaceutical industries will decline sharply.

January 13, 2010


In re Bilski

The Supreme Court should reject the Federal Circuit’s machine-or-transformation test, declare that this Court’s precedent requires only that a method claim define a new and useful invention (rather than an abstraction) to be patent-eligible subject matter, and remand for application of that rule to the claims at issue. Alternatively, if the Court believes that remand is unnecessary and that Bilski’s claims define only a patent-ineligible mental process or fundamental idea—e.g., an abstraction such as the concept of hedging risk, lacking adequate limitation to a specific application—it should strike those claims on that ground while still rejecting the inflexible test enunciated by the Federal Circuit.

August 5, 2009


In re Engage

June 12, 2008


In re Bilski

The BPLA favors a strong and well administered patent system that is fair to all parties and that fosters innovation and promotes competition. We recognize that a system that is too lax or that is improperly administered strays from these objectives, but we do not believe that constraining Section 101 is either legally proper or justified by the Bilski claims or any other claim we can imagine. The prohibition on laws of nature, ideas and natural phenomena already strikes the right balance. This Court should reiterate that an invention, be it expressed as a method or apparatus, that produces a useful result is eligible for patent protection under Section 101.

April 7, 2008


 MedImmune v. Genentech

July 25, 2006


Laboratory Corp. of America v. Metabolite Labs., Inc.

February 6, 2006

 Merck & Co. v. Teva Pharma. USA, Inc.  September 22, 2005


 Phillips v. AWH Corp  September 17, 2004



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