Feb 21, 2019

Legal Update: On-Sale Bar Applies to Secret Sales


On January 22, 2019, the Supreme Court held that amendments by the America Invents Act (AIA) to the U.S. Patent Act did not exclude secret sales from the on-bar sale doctrine, meaning such sales that occur before a patent’s filing can lead to its invalidation. The issue was whether the amendment that added the phrase “or otherwise available to the public” changed the meaning of “on sale”, such that the claimed invention of the sale itself had to be publicly disclosed in order for the sale to be an invalidating prior art event. (Read the original article on this topic.)… Read more

Aug 15, 2017

No Right to a Jury Trial for Attorney Fee Awards Under 35 U.S. Code § 285

Patent Law Book

Section 285 of the Patent Act provides: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”  But, does the Seventh Amendment require a jury trial to decide the facts forming the basis of an award of attorney’s fees under § 285 of the Patent Act?  In AIA America v. Avid Radiopharma (Fed. Cir. 2017), the Federal Circuit has ruled that the factual basis for an attorney fee award need not be decided by a jury — affirming a $4 million fee award that followed a jury trial on the sole issue of whether the plaintiff… Read more

Mar 10, 2015

Differing Site Conditions: What Are They and Are You Protected?

You’ve contracted to install underground utilities. Once the work begins, you discover soils with inadequate bearing capacity, large amounts of unanticipated rock, groundwater at levels higher than anticipated, buried debris, or hazardous wastes. None of these conditions were expected. As a result, the cost you promised to the owner to install the utilities is no longer feasible. Who bears this risk? A “differing site condition” (also known as a “changed condition”), which is abbreviated in this article as a “DSC,” is an unknown and hidden, concealed, or latent physical condition encountered at a site that differs materially from the reasonably… Read more

Dec 16, 2014

AIA Additions and Deletions Report May Be More Important Than You Think

The parol evidence rule is a substantive common-law rule that prevents a party to an integrated (complete) written contract from presenting extrinsic evidence that contradicts or adds to the written terms of the contract unless one of a handful of narrow exceptions applies. The rule means that one cannot use evidence of prior negotiations to alter the terms of an integrated (complete) written contract. The American Institute of Architect’s (“AIA”) proprietary software requires changes in the form agreement to be shown as redlined or strikethrough text, or as an Additions and Deletions Report appended to the end of the document. For… Read more

Jun 14, 2013

Standard AIA Contract language may waive “Discovery Rule”

Authored by: Scott Cahalan and Darren Rowles In a recent decision styled Brisbane Lodging, L.P. v. Webcor Builders, Inc., the California Court of Appeals found that a contract clause providing that all causes of action relating to the contract work would accrue from the date of substantial completion of the project abrogated the delayed discovery rule, which would otherwise delay accrual of a cause of action for latent construction defects until the defects were, or could have been, discovered.   In July 1999, Brisbane and Webcor entered into a contract for the design and construction of a Radisson hotel.  The construction contract… Read more

Sep 6, 2010

O’Day to speak at Upcoming AIA Conference

Steve O’Day will speak on “LEED-ing Edge Liability” at the AIA South Carolina 2010 Fall Conference entitled, “Sustainable Planet Sustainable Profit: SYNERGY BY DESIGN.” The conference will be held October 21-23 in Hilton Head Island, South Carolina.