Intellectual Property

A recent decision by the Federal Circuit suggests that relying on “common sense” in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone.

On August 3, 2016, the Patent Trial and Appeal Board issued a post-grant review decision that bears one striking similarity to its previous post-grant review decisions, namely invalidation of claims under Alice Corp. Pty. v. CLS Bank Int’l, further bolstering the salience of patent ineligibility challenges in post-grant proceedings.

On July 5, 2016, in United States v. Nosal, the Ninth Circuit Court of Appeals clarified the definition of “trade secret,” finding that data derived from a compilation of publicly available information can constitute a protectable trade secret in a case involving allegations under the Economic Espionage Act (EEA).

In our sixth "IP for Start-Ups” video, “Getting the Correct Named Inventors on a Patent”, Mike discusses the importance of including all of the inventors on a patent and why it's important to name anyone who has a reasonable proximity to the invention.

An invention cannot be patented if it was ready for patenting and was subject to a commercial offer for sale more than one year before the application was filed.

Effective June 29, 2016, the United States Patent and Trademark Office (USPTO) implemented a pilot program to provide for earlier review of patent applications pertaining to cancer immunotherapy.

Arming software-patentees with additional precedent in favor of eligibility for software patents post-Alice, the Federal Circuit on June 27, 2016 handed down its decision in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, et al., No. 2015-1763, 2016 U.S. App. LEXIS 11687 (Fed. Cir. June 27, 2016), vacating the lower court’s decision.

In our fifth "IP for Start-Ups” video, “Copyrights versus Patents to Protect Software Innovations”, Mike discusses the pros and cons of using copyrights or patents to protect your software.

On July 5, the Federal Circuit issued another important decision regarding the meaning of certain provisions of the Biologics Price Competition and Innovation Act (BPCIA).

The U.S. Supreme Court ruled on June 20, 2016 in Cuozzo Speed Techs., LLC v. Lee that: (1) the statutory authority of the Patent Trial and Appeal Board (“Board”) in instituting an inter partes review (“IPR”) proceeding is final and non-appealable, thereby not being subject to judicial review, and (2) it is appropriate for the Board to construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning as in district court litigation.

Patent applicants who have filed a priority application (such as a U.S. Provisional application) may wish to abandon and then refile that priority application to extend the time available for filing a utility application.

In some of the first decisions under the newly enacted Defend Trade Secrets Act, on June 10 and 22, 2016, United States District Judge Jon S. Tigar granted a temporary restraining order and preliminary injunction in Henry Schein, Inc. v. Cook, No. 16-cv-03166-JST (N.D. Cal. June 10, 2016) that prevents a sales consultant from accessing, using or sharing confidential data that she allegedly stole from her former employer before leaving the company in violation of trade secret laws and employment agreements.

In our fourth "IP for Start-Ups" video, "Are U.S. Patents Good Outside of the USA?", Mike discusses how geography plays into patent protection, both inside the U.S. and internationally.

This past Thursday the Brexit vote sent shockwaves around world, including the IP community and in particular with respect to IP rights in the UK and Europe. But concerns at the moment are speculative as nothing yet has changed.

The Federal Circuit yesterday issued a decision that will make many patent owners and IP practitioners breathe easier.  In Immersion Corp. v. HTC Corp. the Court reversed a district court holding that a continuation application filed on the same day that its parent application issued is not entitled to the parent priority date.

As our weekly "IP for Start-Ups" series continues, IP attorney Mike Van Loy discusses the nuances behind writing claims that are both broad enough to capture potential infringers and specific enough to show that the patent is not covered by prior art, in our third video, "The Importance of Getting the Claims Right in a Patent".

The Supreme Court has made it easier for patent owners to prove willful infringement and entitlement to enhanced damages.

Check out the second video in our "IP for Start-Ups" series, "The Folly of the 'One Killer Patent' Strategy", below.  Mike talks about the strategic advantage of having a modest patent portfolio, rather than only a single patent.

Protecting your ideas is important, especially as you get your business off the ground.  To kick-off the summer, we're launching our IP for Start-Ups series, with IP attorney Mike Van Loy.

When it comes to Enfish, the PTAB may have just indicated that it prefers to cut bait. In Informatica Corp. v. Protegrity Corp., CBM2015-0021 (May 31, 2016), the PTAB held that U.S. Patent No 6,321,201 was void under Alice despite the Federal Circuit’s recent holding in Enfish v. Microsoft.