Posts in Legislation

In the field of Intellectual Property (IP) attorneys have options when counseling clients on how to protect their IP. However, these options remain subject to constant forces of change. For example, IPWatchdog readers will remember the latest version of the PATENT Act that the U.S. Senate worked on for months in 2015, which proponents say would strengthen enforceability of U.S. patents, but not as much as some would prefer. Then in 2016, the IP landscape changed again with the passage of the Defend Trade Secrets Act (DSTA) that President Barack Obama later signed into law, which federalizes civil actions in trade secret disputes.

In general, the form of the information qualifying as a trade secret under the DTSA is extremely broad, and includes information of any form, regardless of “how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing,” and of any type, “financial, business, scientific, technical, economic, or engineering information,” so long as: (1) the information is actually secret, because it is neither known to, nor readily ascertainable by, another person who can obtain economic value from the disclosure or use of the information; (2) the owner has taken “reasonable measures” to maintain the secrecy; and (3) independent economic value is derived from that secrecy.[i] By comparison the UTSA identifies, by way of example, eight specific types of trade secret information; “formula, pattern compilation, program device, method, technique or process.” The DTSA, unlike the UTSA, also provides that information “stored” only in an individual’s memory can be the subject of a civil claim for theft of trade secrets.

The treatise presents both practical and strategic advice regarding the preparation, prosecution, evaluation, enforcement, and litigation of U.S. utility patents after the passage of the AIA and effectively conveys the material in a well-organized fashion. Detailed coverage of U.S. patent law, including pre-AIA context and associated rules and guidelines, are incorporated. Particularly impressive are the “Practical Tips” the authors include in highlighted areas on many pages. Numerous graphs, tables, and pictorial illustrations assist readers’ comprehension of the material. Each chapter begins with a highly detailed Table of Contents, subdivided for ease of use. The authors write clearly and include helpful cross-references to case law, USPTO practice matters, legislation, and primary and secondary sources.

Days before this Federal Circuit decision, the Patent Trial and Appeal Board (PTAB) issued its decision for Informatica Corp. v. Protegrity Corp. The patent at issue in this case – U.S. Patent No. 8,402,281 – is directed to a database management system that includes an operative database and an information assets manager database. It is conceivable that the Board erred by pushing past the initial Mayo/Alice question and finding that these claims, which cover a data storage innovation of the kind found in Enfish, may have been erroneous. In other other words, when the Board determined that the combination of the methods did not add significantly more than the already determined abstract idea, that question might have never been properly reached in the first place.

There is now federal jurisdiction for trade secret theft. The DTSA creates a federal cause of action for trade secret misappropriation that largely mirrors the current state of the law under the Uniform Trade Secrets Act, which has been adopted by 48 states. The DTSA uses a similar definition of trade secrets, and a three-year statute of limitations, and it authorizes remedies similar to those found in current state laws. The DTSA will not preempt existing state law, which will preserve and afford plaintiffs’ options in regards to whether to file federal or state claims and which court to select.

I represent MCM Portfolio LLC, which is seeking Supreme Court review of a recent decision of the United States Court of Appeals for the Federal Circuit upholding the constitutionality of the inter partes review (IPR) procedures created by the America Invents Act (AIA). The petition is available here. Amicus briefs in support of the petition are being filed May 31. We argue that IPR violates Article III of the Constitution, which vests the judicial power in the federal courts, and also the Seventh Amendment, which guarantees a right to a jury in civil litigation.

Legislative history is, of course, the compilation of the legislative process’ source documents—committee reports, hearing transcripts, bills and floor debate—to understand the Congressional intent behind a law. Such a use is controversial, with no less than the late Justice Antonin Scalia being a leading critic of the practice while Justice Stephen Breyer is one of its most notable proponents. However, lawyers and judges continue to employ legislative history, in some fashion, and will likely turn to it to understand and interpret a law of this magnitude. This article surveys the more significant legislative history documents available for the DTSA.

The DTSA amends the federal Economic Espionage Act of 1996 to create, for the first time, a federal civil remedy for the misappropriation of trade secrets. This new law provides a clear path to enforce trade secret rights in federal court. Proponents of the DTSA argue that this will lead to more uniformity and predictability in applicable standards. However, that remains to be seen. The DTSA does not preempt any existing state laws governing trade secret enforcement. Accordingly, to the extent that state laws differ from each other and the DTSA, the differences will likely persist despite the new federal scheme.

On April 27, 2016, Congress passed the Defend Trade Secrets Act (“DTSA”), which President Obama is scheduled to sign later today. The DTSA extends the current Economic Espionage Act of 1996 (“EEA), which criminalizes trade secret thefts, to the civil arena. This means for the first time, trade secret owners can now bring suits in federal district courts, without having to resort to another basis for jurisdiction, such as the ill-fitting Computer Fraud and Abuse Act. While not without critics, the DTSA is a major step forward in the protection of intellectual property in the United States, not least because federal law now fully recognizes four types of intellectual property (patents, copyrights, and trademarks). This article highlights five important things that every trade secret owner should know, which includes almost every company in the U.S.

There is a legitimate question to be raised, however, over whether the FAA’s registry regulations and the harsh penalties for offenders actually makes our skies any safer for American citizens. That was a question tackled by a panel at The Heritage Foundation at a moderated discussion on better approaches to U.S. drone policy… Some panelists questioned why there was a need to single out UAVs as a particularly dangerous threat to manned aircraft when it was clear that there were far greater environmental risks to aircraft. Sargent chastised the media, saying that they have “not been much of a help on this” by overstating drone risks, further noting that damage risks from large birds were far greater than drones… Taylor expanded the scope of this idea, mentioning that while a few dozen people died in recreational watercraft accidents each year, and hundreds are put into hospitals from injuries related to all-terrain vehicles (ATVs), he was not aware of any story where an American was injured by a drone.

Pre-litigation review of cases to weed out instances of patent trolling sounds like a great idea, but what more weeding out do the authors want? Since the Supreme Court decided Alice v. CLS Bank nearly 70% of all software patents have been invalidated by district courts as being patent ineligible, which is almost always done at the motion to dismiss stage. Furthermore, the Patent Trial and Appeal Board (PTAB) institutes 80% of the challenges to patents they receive. Indeed, it seems that over the past 5 years with nearly every court decision and piece of legislation more rights are taken away from patent owners, patents are no longer presumed valid and district courts are disposing of an alarmingly high number of patent infringement cases on motions to dismiss. It is enormously ignorant to suggest changes to “U.S. IP policy” that would make it more difficult for patent owners. Only those unfamiliar with industry reality could make such a recklessly suggestion. Of course, familiarity with the industry is unfortunately not a prerequisite for academics hell-bent on reaching the wrong conclusion.

The new European Community Trade Mark Regulation, as approved by Regulation (EU) 2015/2424 of the European Parliament, entered into force on March 23, 2016. Among other amendments, the provisions of Article 28(8) of the new Regulation substantially change the approach to interpretation of ICGS class headings included in the list of goods/services covered by EU trademarks applied for before June 2012. Previously, before June 22, 2012, a trade mark was deemed to be protected in respect of the entire range of ICGS goods and services included in the alphabetical list for that class provided that such trade mark was registered with reference to the heading of the respective ICGS class.

As we await the decision from the National Institutes of Health (NIH) on the petition backed by Senator Bernie Sanders and others urging that the march in provision of the Bayh-Dole Act be used to control drug prices, it’s worthwhile to recall the time the agency followed similar advice….Note from the beginning the trigger for marching in was a failure to work towards commercialization and the word “reasonable” applied to royalty rates, not the cost of a product… To understand the original intent, recall that march in rights were designed to prevent companies from licensing federally supported inventions to suppress them. Otherwise, the government can march in. That’s how march in rights have worked since 1947.

The Federal Circuit held that Mylan Pharmaceuticals, Inc. (“Mylan”), a generic drug manufacturer, was subject to specific personal jurisdiction in Delaware because Mylan had filed an abbreviated new drug application (“ANDA”) and “contemplate[d] plans to engage in marketing of the proposed generic drugs” in the state.[1] The ruling affirmed two different decisions by judges in the United States District Court for the District of Delaware that Mylan was subject to specific jurisdiction in Delaware.[2] However, as noted below, it looks like Mylan intends to seek panel or en banc rehearing and possibly pursue a petition for certiorari if the Federal Circuit does not grant the rehearing or re-hears the case and continues to find personal jurisdiction.

Earlier today the United States House of Representatives passed S. 1890, the Defend Trade Secrets Act of 2016 (DTSA), by a vote of 410-2. Only Congressman Thomas Massie (R-KY) and Congressman Justin Amash (R-MI) voted against the bill. Even before the Senate passed the DTSA the Obama Administration voiced strong support for the bill, therefore, it is expected that President Obama will quickly sign the bill into law over the next several days.