On August 22, 2016, Administrative Law Judge David Shaw of the International Trade Commission (“ITC” or “Commission”) issued his final initial determination (“the ID”) in Certain Portable Electronic Devices and Components Thereof, Inv. No. 337-TA-994. The ID invalidated all of the asserted claims for lack of patentable subject matter under 35 U.S.C. § 101, and terminated the investigation.  This decision resulted from an early evidentiary hearing, conducted by order of the Commission within 100 days of its Notice of Institution under its “pilot program.”  81 Fed. Reg. 29307 (May 11, 2016).

The ID has implications related both to the implementation of the 100 day pilot program and continually developing Alice jurisprudence.  For a more in depth discussion of those issues, please see our client alert here.

Continue Reading A Novel Outcome at the International Trade Commission: Patent Claims Invalidated Under Alice in the 100-Day Pilot Program

47730524_1American corporations are facing an ever increasing threat of misappropriation of their valuable trade secrets through industrial espionage, defined as the theft of a company’s trade secrets by an actor intending to convert the trade secret to the economic benefit of a competitor. Indeed, former Attorney General Eric Holder has said that “[t]here are only two categories of companies affected by trade-secret theft: those that know they’ve been compromised and those that don’t know yet.” (See Protection of Trade Secrets: Overview of Current Law and Legislation).  With this “significant and growing threat” of industrial espionage by competitors, current and former employees, and even foreign intelligence services, American companies must be vigilant and employ all available measures to protect against misappropriation of valuable trade secrets. (See Office of the National Counterintelligence Executive, Foreign Spies Stealing U.S. Economic Secrets in Cyberspace).  In the recently enacted Defend Trade Secrets Act (“DTSA”), which creates a federal civil cause of action for trade secret misappropriation, American companies have been given a number of robust tools to prevent, or remedy ongoing misappropriation of valuable trade secrets. The DTSA was recently put to use by Monsanto Company (“Monsanto”) and The Climate Corporation (“Climate”) in Monsanto Co. v. Chen, Case No. 4:16-cv-876 (E.D. Mo.), after a former employee, with an offer to join a competing Chinese seed company, allegedly used sophisticated software capable of performing digital reconnaissance and exfiltrating data to download trade secret information from secure servers. The district court granted orders for a temporary restraining order and preliminary injunction directing the return of trade secrets and identification of cloud data storage where the trade secrets were stored. While not specifically put to use in this case, the new civil seizure mechanism of the DTSA, discussed in more detail below, is another tool that may be useful in cases like the present case where a former employee has stored misappropriated trade secret information in cloud data storage and may not fully comply with a TRO or preliminary injunction.

Continue Reading Industrial Espionage and the Defend Trade Secrets Act

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.  In a decision providing practitioners important guidance for relying on common sense in an obviousness inquiry, the Federal Circuit on August 10, 2016 handed down its decision in Arendi S.A.R.L. v. Apple Inc., No. 2015-2073, 2016 U.S. App. LEXIS 14652 *1 (Fed. Cir. Aug. 10, 2016), vacating the PTAB’s decision below.  The petitioners had only relied on an expert declaration and testimony as support for their position before the PTAB that common sense rendered a patent obvious. Id. at *19-20.  The Federal Circuit rejected the PTAB’s holding in favor of petitioners as “conclusory and unsupported by substantial evidence[.]”  Id. at *22-23, 26-27.

The patent in this case is U.S. Patent No. 7,917,843, owned by Arendi S.A.R.L., and against which Apple, Google, and Motorola filed a petition for inter partes review (IPR).  The ’843 Patent allows a user to coordinate with two computer programs: (1) to display a document with the first computer program while (2) accessing and conducting a search using a second computer program.  Id. at *2.  The patent discloses mechanisms for analyzing the document to identify the presence of name and address information in the document (e.g., from designators such as street, city, zip code, “Mr.,” “Mrs.” etc.), to determine if it can be used in the searches as part of the second computer program.  Id. at *2-3.  The claimed invention then displays the search results to the user, who can select the additional information obtained from the search for insertion into the document.  Id. at *3.

Continue Reading Federal Circuit Emphasizes that an Obviousness Analysis Based on Common Sense Must be Supported by Substantial Evidence and Explained with Sufficient Reasoning

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.

In Netserv et al. v. Boxbee, Inc. (Case No. PGR2015-00009), the Board found the subject matter claimed in claims 1-21 of Boxbee Inc.’s U.S. Patent Number 8,756,166 (“the ‘166 patent”) to be ineligible for patent protection under 35 U.S.C. § 101.  The Board first determined under Alice whether the claims of the ‘166 patent were drawn to an abstract idea.  The Board found the ‘166 patent to describe “a bailment scheme using storage containers” or a method of keeping track of the storage locations of certain containers or items.  Referring to cases on shipment tracking methods from federal district courts in New Jersey and California, as well as decisions from the Federal Circuit, the Board ruled that “bailment schemes [are] a long-prevalent economic practice, and constitute an abstract idea.”

Continue Reading The Specter of Alice Looms Large Even in PGRs

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). The Defend Trade Secrets Act (DTSA) amended the EEA to create a federal private civil cause of action for trade secret misappropriation. Thus, the Ninth Circuit’s opinion in United States v. Nosal provides important guidance regarding the definition of “trade secret” in cases under the DTSA. With this decision, the Ninth Circuit recognizes that a collection of public information can be a protectable trade secret, especially where a proprietary process is used to compile or search that information. Continue Reading Ninth Circuit Provides Clarification Concerning the Definition of Trade Secret

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.

Click here for the full “IP for Start-Ups” video playlist.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies. Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.

shutterstock_225669484An 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. This so-called “on-sale bar” can also be used to invalidate a patent. On July 11, 2016, the Federal Circuit in The Medicines Co. v. Hospira Inc. addressed what types of sales constitute an on-sale bar and ruled specifically that a barring sale must include a transaction that “bears the general hallmarks of a sale.”

The Court found that The Medicines Co.’s patent covering methods of making a drug, Angiomax, was not invalid due to The Medicines Co.’s transactions with a supplier, Ben Venue Laboratories, more than a year before filing for the patent. The transactions included The Medicines Co. hiring Ben Venue Laboratories more than one year before it filed its patent applications to prepare three batches of Angiomax using the patented method to ensure it met requirements set by the FDA. The Medicines Co. did not actually sell Angiomax to the public until some time later.

Continue Reading What Type of Sale Constitutes an On-Sale Bar?

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.  The Cancer Immunotherapy Pilot Program was established in support of the White House national $1 billion initiative to achieve ten years’ worth of cancer research in the next five years as part of the National Cancer Moonshot initiative. The Cancer Immunotherapy Pilot Program aims to complete examination of an application within 12 months of the special status being granted. The patent applications that qualify will be advanced out of turn for examination without meeting all the current requirements of the accelerated examination program.

The Cancer Immunotherapy Pilot Program will run 12 months until June 29, 2017. Applicants who are interested in participating in the program should file a petition to make special under the Cancer Immunotherapy Pilot Program.

Continue Reading USPTO Fast-Tracks Cancer Immunotherapy Patent Applications

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.  Below, Judge Barbara M. G. Lynn in the Northern District of Texas rejected patentee BASCOM’s argument that the software-based claims of U.S. Patent No. 5,987,606 contain an “inventive concept” in their ordered combination of limitations sufficient to satisfy the second step of the Supreme Court’s two-part Alice test.  BASCOM, 2016 U.S. App. LEXIS 11687 at *1-2.

At the Federal Circuit, Judge Chen (joined by Judges Newman and O’Malley) described the invention disclosed by the ’606 Patent as an internet filtering tool, where a remote ISP server “receives a request to access a website, associates the request with a particular user,…applies the filtering mechanism associated with the particular user to the requested website[,]…[and] returns either the content of the website to the user, or a message to the user indicating that the request was denied.”  Id. at *7.  The specification of the ’606 Patent describes this filtering tool as an improvement over prior art filters because “no one had previously provided customized filters at a remote server.”  Id. at *7-8 (emphases added); see also ’606 Patent at 2:36-65 (“Accordingly, there exists a need for a remote ISP server based method and system for filtering Internet content received by controlled access subscribers on an individually customizable basis.” (emphases added)).

Continue Reading Focusing on the Second Step of Alice, Federal Circuit Finds Inventive Concept in Software Patent in BASCOM

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). See Amgen Inc. v. Apotex Inc., Fed. Cir. Case No. 2016-1308. [Read full opinion here.]

In many respects, the decision can be viewed as an extension of the Court’s decision from a year ago in Amgen Inc. v. Sandoz Inc., 794 F.3d 1347 (Fed. Cir. 2015). [See Mintz Levin post re: Amgen v. Sandoz] Both cases involved the 180-day “Notice of Commercial Marketing” provision that the BPCIA introduced into 42 U.S.C. § 262(l)(8)(A)[1], and both asked the question when that notice could effectively be given:  at some point before FDA licensure of the biosimilar product, or only after?  Continue Reading Fed Circuit’s “Amgen v. Apotex” Decision: Clarification of a BPCIA Riddle (Unless, of course, the Supreme Court Steps In)