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Civil Procedure

Should a royalty agreement exceed the life of a patent?

Short video featuring Greg Dolin
Gregory Dolin May 12, 2015

Professor Greg Dolin of the University of Baltimore School of Law discusses the dispute in Kimble v. Marvel, a case argued before the Supreme Court in March.  Petitioner Kimble invented and patented a toy.  Respondent Marvel contractually agreed to pay royalties on that patent that included a period of time after the expiration of the patent.  The Court is being asked to overrule a precedent dating back to 1964 which held such agreements to be unlawful per se.  

As always, the Federalist Society takes no position on particular legal or public policy issues; all expressions of opinion are those of the speaker.

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. - Post-Decision SCOTUScast

SCOTUScast 2-3-15 featuring Kristen Osenga
Kristen Osenga February 03, 2015

On January 20, 2015, the Supreme Court issued its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. This case concerned whether a district court’s factual finding in support of its construction of a patent claim may be reviewed de novo--the standard applied by the Federal Circuit in this case--or must instead be reviewed only for clear error, in keeping with Federal Rule of Civil Procedure 52(a).

In an opinion delivered by Justice Breyer, the Court held by a vote of 7-2 that when reviewing a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal Circuit must apply a “clear error,” not a de novo, standard of review.  The judgment of the United States Court of Appeals for the Federal Circuit was vacated and the case remanded for further proceedings

Justice Breyer’s opinion was joined by Chief Justice Roberts and Justices Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan.  Justice Thomas filed a dissenting opinion, which Justice Alito joined.

To discuss the case, we have Prof. Kristen Osenga, who is a Professor of Law at the University of Richmond School of Law. 

Gelboim v. Bank of America Corporation - Post-Decision SCOTUScast

SCOTUScast 1-29-15 featuring Erik Zimmerman
Erik Zimmerman January 29, 2015

On January 21, 2015, the Supreme Court decided Gelboim v. Bank of America Corporation. This case concerns whether and in what circumstances the dismissal of all claims in one civil action that had been consolidated with other cases for pre-trial purposes, in a Multi-District Litigation proceeding, is final and immediately appealable? 

In an opinion by Justice Ginsburg, the Court held unanimously that a lower court order dismissing petitioners' case in its entirety removed petitioners from the consolidated multidistrict litigation proceeding, thereby triggering their statutory right to appeal. The judgment of the Second Circuit was reversed and the case remanded. 

To discuss the case, we have Erik Zimmerman, who is an Olin-Searle-Smith Fellow and Constitutional Law Center Fellow at Stanford Law School.

Dart Cherokee Basin Operating Company, LLC v. Owens - Post-Decision SCOTUScast

SCOTUScast 1-16-15 featuring Tyler Green
Tyler Green January 16, 2015

On December 15, 2014, the Supreme Court heard oral argument in Dart Cherokee Basin Operating Company, LLC v. Owens. The question in this case was whether a defendant seeking removal to federal court on the basis of diversity jurisdiction was required to include in the notice of removal evidence supporting the minimum “amount in controversy” required for diversity jurisdiction, or whether it was enough simply to allege the requisite amount in the notice of removal.

In an opinion delivered by Justice Ginsburg, the Court held by a vote of 5-4 that a defendant’s notice of removal on the basis of diversity jurisdiction need not include evidentiary submissions demonstrating that the amount in controversy requirement is met; a plausible allegation that the amount in controversy exceeds the jurisdictional threshold is sufficient.

Justice Ginsburg’s opinion for the Court was joined by Chief Justice Roberts and Justices Breyer, Alito, and Sotomayor. Justice Scalia filed a dissenting opinion, which Justices Kennedy and Kagan joined, and which Justice Thomas joined except for the last sentence. Justice Thomas also filed a dissenting opinion. The judgment of the Tenth Circuit was vacated and the case remanded.

To discuss the case, we have Tyler Green, who is Associate Chief Counsel at the U.S. Chamber's Litigation Center.

Warger v. Shauers - Post-Decision SCOTUScast

SCOTUScast 1-13-15 featuring Rachel Paulose
Rachel K. Paulose January 13, 2015

On December 8, 2014, the Supreme Court issued its decision in Warger v. Shauers. The question in this case was whether a party moving for a new trial may rely upon juror testimony regarding statements made during deliberations that suggest juror dishonesty during voir dire (the process by which potential jurors are questioned in order to determine if they are suitable to serve on a particular jury).

Justice Sotomayor delivered the opinion of a unanimous Court, which held that Federal Rule of Evidence 606(b) precludes a party seeking a new trial from using one juror’s affidavit of what another juror said in deliberations to demonstrate the other juror’s dishonesty during voir dire. The judgment of the Eighth Circuit was affirmed.

To discuss the case, we have Rachel Paulose, who is a former Senate Confirmed United States Attorney.