Previous legal interpretations have said that active licensing contracts between companies essentially act as a "covenant not to sue," according to the American Bar Association. As such, the "actual controversy" required to have a case under the U.S. Constitution doesn't exist.

But in an 8-1 opinion yesterday - with Justice Clarence Thomas dissenting - the court struck down that idea as "mistaken."

"Promising to pay royalties on patents that have not been held invalid does not amount to a promise not to seek a holding of their invalidity," Justice Antonin Scalia wrote on behalf of the majority. (Thomas contended the courts had no jurisdiction over the case because no controversy existed.)

Those who license access to patented technology may now decide it's more in their interests to try to have a suspect patent legally overturned. And patent holders may likely scrutinize potential partners more closely or charge higher fees to cover the risk of a lawsuit.

"Clearly, this will have some impact on how people look at licensing their technology," said Lawrence M. Sung, a professor and director of the Intellectual Property Law Program at University of Maryland School of Law.

"The difficult question is knowing how much of an impact there will be," Sung said.

For MedImmune, the opinion means a lower court will have to consider the company's original 2003 claim filed in California U.S. District Court. The case contends that a patent held by California competitor Genentech Inc. was obtained through improper collusion with a British biotechnology company and amounts to an illegal 12-year extension of an earlier patent.

Appleby Hunter Bailhache, the law firm that prides itself on its international presence, is about to get a little more global.

The Bermuda-based firm is planning to open an office in the Republic of Mauritius, they announced yesterday.

The new office will be located in the capital city of Port Louis and will begin operations next month.

The expansion will enable Appleby to further extend its legal services to clients, and will provide clients with greater access to the fast-growing emerging markets in Africa, Asia and India, the firm said in a statement.

The new office, which will operate under the name of Appleby (Mauritius International) Ltd, will focus on investment into emerging African and Asian markets.

Institutional clients in North America, Europe and Asia have indicated that they are looking for the resources of a global offshore services firm, to create efficient investment structures through a well-placed, independent sovereign country, the statement said.

The office will open with two partners - Mauritian Gilbert Noel and Malcolm Moller, who is transferring from the firm's Bermuda office to oversee the new operation.

The island of Mauritius, with a population of 1.2 million, offers a highly educated workforce and the government is successfully encouraging the introduction of external financial institutions to stimulate investment and diversify the economy, the firm noted.

http://www.applebyglobal.com

The US Supreme Court handed down decisions in three cases Tuesday, including US v. Resendiz-Ponce, where the Court upheld the conviction of Juan Resendiz-Ponce on charges of attempting to re-enter the United States illegally from Mexico after being deported. The indictment in the case did not allege an overt act showing that he tried to enter the US, but the Supreme Court ruled that the indictment was not defective as it "need not specifically allege a particular overt act or any other 'component part' of the offense." Read the Court's opinion per Justice Stevens, along with a dissent from Justice Scalia.

In MedImmune v. Genentech, the Court ruled that MedImmune did not need to breach its patent license agreement with Genentech before challenging the patent's validity, overturning a Federal Circuit decision.

In a statement Tuesday the industry group Coalition for Patent Fairness said that the unanimous ruling demonstrated yet again that "the patent system needs to be modernized. Fair patent protections deliver innovative products for consumers and strengthen America's international competitiveness. This ruling is a positive step, but it is clear that a legislative remedy is needed to strengthen our overall patent system."

Finally, the Court remanded Burton v. Stewart back to the lower courts, saying that Lonnie Lee Burton's appeal should be dismissed for lack of jurisdiction. The Court had agreed to hear the case to determine whether Blakely v. Washington, the 2004 decision which limited judges' discretion in criminal sentencing, "announced a new rule and, if so, whether it applies retroactively on collateral review." Despite hearing oral arguments on those issues, the Court ruled that Burton never complied with the jurisdictional requirements of 28 US 2244(b).

Libby faces charges of perjury and obstruction of justice when his trial begins January 16. One of Libby's defense lawyers said last month that his client plans to call his former boss, Vice President Dick Cheney, to testify.

Texas-based SCCI Health Services Corporation (SCCI) and its subsidiary, SCCI Hospital Ventures Inc., have paid the United States $7.5 million to settle allegations that the companies violated the Stark self-referral statute and the False Claims Act, the Justice Department announced today. SCCI, which was purchased by Triumph Hospital in 2005, operates long term acute care facilities across the United States.

The government complaint alleged that from November 1996 through at least 1999, SCCI entered into prohibited financial relationships with three physicians and paid these physicians illegal payments in violation of the Stark statute. The government further alleged that from November 1996 through at least 1999, SCCI either submitted or caused false claims to be submitted to the Medicare program, as a result of these prohibited financial relationships, in violation of the False Claims Act.

“The Justice Department is committed to investigating cases that threaten the integrity of the Medicare program, especially when providers fail to abide by federal laws prohibiting the referral of Medicare patients in exchange for a fee,” said Assistant Attorney General Peter D. Keisler.

The settlement resolves a civil case filed on behalf of the government on April 1, 1999 by former employees and an independent contractor who worked for SCCI Houston. Daryl Kaczymarczyk, Patricia Rocha, Michelle Pate, Michael Brigle and Theresa Taylor filed the case under the qui tam or whistleblower provisions of the False Claims Act, which authorize private parties to file lawsuits on behalf of the United States. On Oct. 2, 2002, the government intervened in the Stark Act claims as to the three physicians. The United States filed its complaint in the case on March 10, 2003. Of the total settlement amount, $1 million resolves additional allegations as to which the government did not intervene. As a result of the settlement, the five whistleblowers shared $1.7 million.

“The Justice Department and the United States Attorney’s Office are committed to preventing and punishing improper financial relationships between physicians and hospitals. Such relationships have great potential to adversely impact the physician’s judgment and result in Medicare funds being spent on unnecessary and expensive hospital stays,” said Donald J. DeGabrielle Jr., United States Attorney for the Southern District of Texas.

The case was handled by the Justice Department’s Civil Division and the U.S. Attorney’s Office for the Southern District of Texas, with the assistance of the Federal Bureau of Investigation.