Intellectual Property

On March 14, 2017, the United States Court of Appeals for the Federal Circuit clarified, in a precedential opinion, that an anticipating reference must supply all of the claim elements, regardless of what a person of skill in the art might envision when reading the reference.

On March 3, 2017, the United States Court of Appeals for the Federal Circuit reaffirmed, in a precedential opinion, that prosecution disclaimers may only limit the scope of a claim where the disclaimer is “both clear and unmistakable to one of ordinary skill in the art.”

A recent decision in the Western District of Kentucky highlights the importance of explaining in a complaint under the Defend Trade Secrets Act why the allegedly misappropriated information qualifies for trade secret protection.

Nondisclosure or confidentiality agreements (NDAs) are among the most common documents attorneys draft and review for clients.  They are so common, in fact, that where a client needs to execute a large number of facially distinct but substantively similar NDAs, it may make sense for the client to draft and review these documents itself.

The Court of Appeals for the Federal Circuit (the Federal Circuit) has more recently been indicating to the Patent Trial and Appeal Board (the Board) the importance of explaining its reasoning when invalidating patent claims.

The Federal Circuit has further clarified the scope of the covered business method (CBM) review program under the America Invents Act (AIA), explaining in Secure Axcess, LLC. v. PNC Bank National Association that in order for patent to be a CBM patent, it is not enough that the claimed subject matter may be used in a financial activity.

As regular readers of this blog will know, our cross-disciplinary Trade Secrets team has been closely monitoring the development of the Defend Trade Secrets Act (DTSA).

New rules for patent cases in the Northern District of California will significantly affect litigation and settlement of cases in Silicon Valley’s backyard. Lawyers litigating cases in the district after the January 17, 2017 change should be wary of the new requirements that set the Northern District of California apart.

For just the third time ever, the Patent Trial and Appeals Board (“PTAB” or the “Board”) recently sided with a Patent Owner in an inter partes review (“IPR”) to find that evidence of secondary considerations of non-obviousness compelled rejection of the Petitioner’s invalidity challenges.

The Defend Trade Secrets Act (DTSA) civil seizure mechanism provides victims of trade secret theft with a tool to immediately freeze dissemination of stolen proprietary information. Using civil seizure, a court may direct federal marshals to seize property necessary to prevent the promulgation of stolen trade secrets.

The latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent prosecution.

The Clarity of the Record Pilot program is an ongoing and evolving program that is part of an attempt by the U.S. Patent and Trademark Office (USPTO) to produce high-quality patents as part of the Enhanced Patent Quality Initiative (EPQI).

The U.S. Patent and Trademark Office (USPTO) recently released a Performance and Accountability Report (PAR) for the 2016 fiscal year, evaluating a variety of programs at the USPTO and detailing ongoing goals of the USPTO. 

On January 16, 2017, the European Unified Patent Court (UPC) announced that a Preparatory Committee is currently working under an assumption that the Provisional Application Phase (PAP) of the UPC will presumably begin in May 2017, and the UPC can become operational in December 2017.

When the Patent Trial and Appeal Board issues a final written decision finding against an IPR Petitioner, can that Petitioner necessarily appeal that adverse decision? In a case of first impression, the Federal Circuit recently answered “no.”

On Monday, January 9, 2017, the U.S. Supreme Court denied, without comment, Mylan Pharmaceuticals’ petition for certiorari to reverse an opinion by the Court of Appeals for the Federal Circuit, which affirmed a broad scope of personal jurisdiction over generic ANDA filers in patent infringement suits under the Hatch-Waxman Act.

The New Year brings excitement and anticipation of changes for the best. Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least different.

As 2017 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2016. According to the many readers of Global IP Matters, hot topics included navigating the waters of patent prosecution, subject matter eligibility under § 101, and the Defend Trade Secrets Act.

In ClassCo, Inc. v. Apple, Inc. the Federal Circuit upheld a decision from the Patent Trial and Appeal Board (“the Board”), which invalidated several claims of ClassCo’s US Patent No. 6,970,695 (“the ’695 patent”) that discussed caller ID technology that would verbally announce the name of an incoming caller before the call is connected.

The Federal Circuit reversed the invalidation of two patents directed to providing security for credit card purchases in an opinion released earlier today.  The patents at issue, U.S. Patent Nos. 7,840,486 and 8,036,988, disclose methods for effecting secure credit-card purchases by minimizing merchant access to credit card numbers.