Since joining Goodwin, Mr. Jay has handled complex litigation matters in the Supreme Court; in the First, Second, Third, Fourth, Fifth, Seventh, Eighth, Ninth, Eleventh, D.C. and Federal Circuits; in several state appellate courts; and in various trial courts and administrative agencies.
His recent Supreme Court matters include victories in four significant intellectual-property cases:
- Patent claim construction -- Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.: The Supreme Court agreed to take up the subject of patent claim construction for the first time in nearly 20 years and hear Teva’s challenge to the Federal Circuit’s longstanding precedent insisting on reviewing factual issues de novo. Mr. Jay was counsel of record on the successful petition for certiorari and the merits briefs and argued the case in October 2014. In January 2015, the Supreme Court agreed with Teva’s arguments by a vote of 7-2, vacating a Federal Circuit decision that had invalidated patent protection for Teva’s blockbuster multiple sclerosis drug, Copaxone® 20mg.
- On-sale bar – Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.: This was the Supreme Court’s first opportunity to consider the revised standards for patentability under the 2011 America Invents Act. Mr. Jay was counsel of record on the merits brief and argued the case in December 2018. The court unanimously agreed with Mr. Jay’s argument that an invention is “on sale” for purposes of the statute if it is sold or offered for sale, and that it does not matter whether the sales are public or make the invention “available to the public” more broadly.
- Copyright eligibility -- Star Athletica, L.L.C. v. Varsity Brands, Inc.: The Supreme Court took this case to clarify when an artistic design feature can qualify for a copyright. Mr. Jay argued the case in October 2016 for the copyright owner, which designed original artwork appearing on clothing. The Supreme Court ruled for Mr. Jay’s client by a vote of 6-2 that the designs were copyright-eligible and rejected the argument that the designs were influenced.
- Trademark preclusion -- B&B Hardware, Inc. v. Hargis Industries, Inc.: The Supreme Court ruled for the first time that the Trademark Trial and Appeal Board can render a decision binding on a federal district court in trademark-infringement litigation. Mr Jay’s client had won a decision before the Trademark Board on the “likelihood of confusion” between two trademarks; the Court held by a vote of 7-2 that the infringer could not relitigate that same issue before a jury. Mr. Jay was counsel of record on the successful petition for certiorari and the merits briefs and argued the case in December 2014.
- Mr. Jay also recently persuaded the Supreme Court to grant certiorari to resolve questions about the scope of the Fair Housing Act. Mr. Jay was counsel of record on the petition for certiorari and the merits briefs for several major lending institutions. The Supreme Court agreed with Mr. Jay’s argument and set aside the appellate decision applying a relaxed causation standard.
- Mr. Jay represented a group of Indian tribes in successfully defending a district-court injunction in a conservation case involving interpretation of several 150-year-old treaties.
Mr. Jay’s other recent appellate matters include:
- Persuading the Federal Circuit to reverse adverse decisions in patent-infringement litigation, inter partes review, and “covered business method” review. In particular, Mr. Jay has repeatedly succeeded in overturning decisions by the Patent Trial and Appeal Board; one of his wins, about the scope of “covered business method” review, was named one of 2016’s “Milestone Cases” by Managing IP. Mr. Jay’s recent Federal Circuit matters have included work involving medical technology, robotics, consumer electronics, pharmaceuticals, biologics/biosimilars, and software.
- Successfully representing pharmaceutical companies in litigation challenging the FDA’s approval of new drug products, both in federal district courts and in the D.C. Circuit.
- Winning a Securities Act appeal in the Fourth Circuit for Municipal Mortgage & Equity, securing a complete affirmance of the dismissal of claims that the company made false statements in the registration statement for a secondary public offering.
- Successfully defending, in the Fourth Circuit, a complete defense victory at trial in a certified class action under the Real Estate Settlement Procedures Act. Mr. Jay co-authored the successful briefs and argued the appeal. Mr. Jay also co-authored the successful appellate briefs in a companion case (involving another certified class) under the Maryland Finder’s Fee Act, in which the Fourth Circuit also affirmed a complete defense victory.
- Representing Gillette in a Third Circuit appeal against one of its competitors, defending Gillette’s right to bring patent infringement claims in court and not in arbitration.
- On behalf of four nationwide mortgage lenders, persuading the Ninth Circuit to dismiss a False Claims Act lawsuit demanding a multi-billion-dollar recovery.
- Successfully winning rehearing en banc in the First Circuit on behalf of a national bank in a putative nationwide class action, and co-authoring briefs that won a complete victory on rehearing en banc.
- On behalf of the American Petroleum Institute, successfully defeating an environmental challenge under the Endangered Species Act and Administrative Procedure Act to Interior Department rules governing oil shale exploration.
Prior to joining Goodwin in 2012, Mr. Jay served for five years as Assistant to the Solicitor General at the U.S. Department of Justice. In that capacity, he handled Supreme Court and appellate matters for a wide variety of federal agencies, including every Cabinet Department and numerous executive and independent agencies. Previously, he was a litigation associate with Gibson, Dunn & Crutcher in its Appellate and Constitutional Law Practice Group.