Posts in Legislation

David Kappos, the director of the USPTO under President Obama from 2009 to 2013, recently called for congress to repeal section 101 of the patent act. According to Kappos, the current chaotic “I know it when I see it” 101 test that must be somehow consistently applied by thousands of USPTO examiners and hundreds of judges, means American inventors are better off seeking protection in China and Europe. While America “is providing less protection than other countries”, European countries are “putting their foot down in favor of innovation”.

“This is obviously a victory for some who challenge a patent’s validity in IPR proceedings since broadly construed claims are more vulnerable to attack than narrowly construed claims” remarked Scott Daniels, partner at Westerman Hattori Daniels & Adrian, LLP. “Still, the great majority of IPR decisions do not turn on claim construction and for those cases Cuozzo simply makes no difference.”… Levy, who was similarly dead on accurate with his predictions, raises an important point that so many in the patent community who were rooting for Cuozzo failed to keep in mind. Those challenging the action of an agency face a substantial uphill battle when they seek a judicial determination overriding agency rulemaking and statutory implementation.

At present, there is no statutory penalty for not providing the required Notice. However, if an employer fails to provide the required Notice, the employer cannot recover punitive damages or attorneys’ fees under the DTSA from an employee to whom the required Notice was not provided. (The employer could nevertheless obtain such punitive damages and attorneys’ fees under state law in nearly every state.) There may also be adverse consequences from a contractual perspective, or in a government audit, if the required Notice is not provided.

Recently, some major American tech companies operating across the globe have publicly announced their agreement to a code of conduct developed by the European Commission and designed to “combat the illegal spread of hate speech online in Europe.” The code of conduct, to which these tech companies have promised the European Commission their online services will adhere, stipulates that the companies have to establish a couple of processes that target the elimination of hate speech.

We cannot know what biological killer will next emerge, when it will be born and where globalization’s winds will take it. But we do know that choking-off future private investment in future healthcare needs is foolhardy. And that is what will happen if the UN sanctions this finding. Investment hates uncertainty. And innovation dies without investment. The underdeveloped countries the Panel may seek to protect are often those that suffer first from epidemics like HIV /Aids, Ebola; and Zika. They will suffer first when the next biological scourge begins taking lives.

According to multiple reports, the Caltech patents-in-suit are incorporated into both the 802.11n and 802.11ac wireless connectivity standards, which are used by Apple products to communicate digital information. This latest patent infringement lawsuit is part of a growing trend where universities find themselves forced to file suit in U.S. district courts in order to protect their patent rights. They are forced to sue because those that infringe the patents refuse to take licenses on reasonable terms, they refuse to negotiate, and they refuse even to return calls. They choose to infringe with eyes wide open because they feel like they can. This is the face of what is called efficient infringement.

The DTSA amends the definition of misappropriation from what was found in the EEA to bring the definition more in line with that of the Uniform Trade Secrets Act (UTSA) that has been adopted by almost all U.S. states. Indeed, apart of explicitly recognizing certain potential defenses that are discussed in the commentary of the UTSA, the DTSA is identical to the UTSA. According to the House Report, “The Committee intentionally used this established definition to make clear that this Act is not intended to alter the balance of current trade secret law or alter specific court decisions.” House of Representatives, Report No. 114-529, April 26, 2016, at 14. Federal courts therefore, will look to state decisions involving the state’s version of the UTSA for guidance.

The Hearing Order concluded that the parties raised sufficient issues of material fact to warrant the ready-to-go Hearing to determine when respondent’s alleged misconduct was actually “made known” to an officer or employee of the USPTO pursuant to §32. Thus, the Hearing would be able to afford the fact-finder the opportunity to assess the credibility of the witnesses and draw inferences from the facts. Further, as the parties were already prepared for the Hearing on the merits of the case, the Judge believed that he would entertain testimony on both the SOL issue and the disciplinary sanction sought by the OED Director. Thus, the Hearing Order determined that the Judge found issues of material fact existed as to when the misconduct forming the basis for the disciplinary proceeding was “made known” to an officer or employee of the Office.

This case presents an important constitutional question which the court below decided based on an incomplete analysis of the Supreme Court’s jurisprudence. In the case below, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit decided that a patent is a “public right,” and that these Article I trial proceedings are not unconstitutional. Significantly, the Federal Circuit reached its conclusion without considering more than a century of precedent by this Court recognizing that an issued patent is a property right, at least for purposes of determining if a “taking” has happened. James v. Campbell, 104 U.S. 356, 358 (1882); see also Horne v. Dep’t of Agric., 135 S. Ct. 2419, 2427 (2015) (quoting with approval James).

SolarCity was a little more muted on the topic of how many jobs it would create in Buffalo, and yet those promises are still being broken. News reports from the area pinned a definitive number on exactly how many jobs the Buffalo plant will create: 1,460. This included, according to news reports, at least 1,000 production jobs to create shifts of 300 to 400 workers which could operate the plant around the clock. A reported 400 jobs would be for engineers and require at least a bachelor’s degree. Residents of the city (including this writer) can tell you that, although the city has shown signs of pulling itself out of a decades-long depression, many hopes involving Buffalo’s immediate economic futures have been pinned on SolarCity, and the state has backed that hope up to the tune of $750 million. This represents most of the cash set aside for Cuomo’s Buffalo Billion initiative which is currently under heavy investigation by U.S. Attorney Preet Bharara based on a series of subpoenas issued by federal prosecutors over the past year.

The U.S. Patent and Trademark Office recently issued an updated set of rules affecting trial practice before the Patent Trial and Appeal Board. In large part, the rules, which went into effect on May 2, 2016, were implemented as proposed on August 20, 2015. In particular, they modify the prior rules governing inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings that implemented provisions of the America Invents Act providing for trials before the Office.

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.