'; Supreme Court Grants Certiorari In Copyright Infringement And ‘On-Sale Bar’ Cases

Supreme Court Grants Certiorari In Copyright Infringement And ‘On-Sale Bar’ Cases

October 5, 2019

The U.S. Supreme Court’s new term features two important cases that will determine whether and when copyright holders can file infringement suits and outline the contours of the “on-sale bar” in the America Invents Act.

What constitutes copyright ‘registration’ for purposes of infringement actions?

While a copyright attaches to a creative work upon its creation, a copyright owner cannot bring an infringement suit in federal court until “registration of the copyright claim has been made” with the Copyright Office. In June, the Supreme Court granted a petition for writ of certiorari in Fourth Estate Public Benefit Corporation v., LLC, to resolve a split between circuits as to what constitutes “registration” of a copyrighted work as a prerequisite for an infringement action.

The U.S. Courts of Appeals for the 5th and 9th Circuits take the position that “registration … has been made” upon the owner’s initial submission of an application, fees, and supporting materials to the Copyright Office. The 10th and 11th Circuits have held that the Copyright Office must either issue a certificate of registration or reject an application before the owner may file suit.

In Fourth Estate, the 11th Circuit affirmed the district court’s dismissal of a copyright infringement suit based on the latter interpretation, holding that “filing an application does not amount to registration.”

The Supreme Court’s resolution of this issue will determine whether aggrieved copyright owners must wait for the Copyright Office to issue a registration (or rejection) before initiating litigation, or if simply filing application paperwork is sufficient.

Scope of the ‘on-sale bar’ in the America Invents Act

The Court will also bring clarity to the parameters of the “on-sale bar” in the America Invents Act (AIA). Specifically, by granting certiorari in Helsinn Healthcare S.A., v. Teva Pharmaceuticals USA, Inc., et al., the Court will decide whether 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.

Before the enactment of the AIA, 35 U.S.C. §102 barred the patentability of an invention that was “patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent.”

The AIA amended §102 to bar the patentability of an “invention [that] was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”

At issue in Helsinn Healthcare is the effect of the “otherwise available to the public” language in the post-AIA version of §102. Helsinn, as well as the government, have argued that this phrase means that a sale now must make the invention’s details available to the public to trigger the “on-sale bar.”

The U.S. Court of Appeals for the Federal Circuit disagreed, holding that the AIA’s “on-sale bar” operates to invalidate patent claims on an invention, regardless of whether the sale resulted in a public disclosure of the invention.

“After the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale” for purposes of the ‘on-sale bar,’ the court concluded.

This case represents the Supreme Court’s first opportunity to address the AIA’s new “on-sale bar” language, and its decision could affect the validity of many existing patents and pending applications.