Tech Transactions after Helsinn (RECORDING)
Recorded On: 02/13/2019
The Supreme Court’s decision last month in Helsinn v. Teva highlights the importance of carefully evaluating the structure of technology-driven investments, joint ventures, joint development agreements, and other supply arrangements to minimize the likelihood that a conditional transaction will be characterized as an offer to sell a later-patented invention. These issues are particularly applicable to companies seeking to invest in the development of emerging technologies (or pharmaceuticals) that are not yet the subject of patent applications, and the attorneys who represent them.
Through the use of hypotheticals, our panelists will explore the impact of Helsinn and other cases related to the on-sale bar ‒ and provide important takeaways for counsel.
They will analyze key decisions, including Barry v. Medtronic, a recent Federal Circuit opinion subsequent to Helsinn decision, which addressed both the “public use” and “on-sale” bars. They will also address the en banc Federal Circuit decision in Medicines Company v. Hospira, which may now take on additional importance. In that case, the Federal Circuit held that a supplier’s provision of “manufacturing services” did not invalidate product-by-process claims, overruling earlier decisions "to the extent language in those cases might be viewed as dictating a different result here.” But the opinion added the important caveat that the Court is not creating "a blanket 'supplier exception'.”
Our panelists will provide insights on the combined impact of these opinions, as well as practical tips on how to best navigate on-sale bar issues in light of them.
- Jennifer Carnahan, Dow Chemical Company
- Randall Colson, Haynes and Boone, LLP
- Robert Isackson, Leason Ellis
Dow Chemical Company
is Senior Counsel at The Dow Chemical Co. She advises clients on strategic IP matters including agreements for joint development, licensing and nondisclosure. Additionally, she has global IP responsibility for several Dow businesses, which includes portfolio management, freedom of action assessments, and general counseling. Earlier she worked as a patent attorney at Shell Oil Co. Jennifer holds a Ph.D. in physical chemistry. She is co-Chair of the IPO Licensing Committee.
Haynes and Boone, LLP
is the head of the Technology Transactions and Technology M&A Practice Groups at Haynes & Boone. He has extensive experience counseling clients with a myriad of technology and IP-related transactions, including outsourcing, software development and licensing, and cloud computing. Randy represents both providers and customers of these services. He also provides counseling on the use and procurement of patents, and due diligence related to joint ventures. Prior to law school, Randy worked as an electrical engineer designing computer hardware and software.
Robert Isackson is a partner at Leason Ellis. He has a primary focus on IP litigation at the trial level, particularly patent and trade secret disputes and commercial disputes over technology issues. His practice includes appellate litigation, strategic counseling, providing advice and opinions on freedom to operate and litigation risks, and IP transactions. He is a member of IPO’s Trade Secrets and Amicus Brief Committees and was the author of IPO’s amicus brief to the U.S. Supreme Court in Helsinn.