keyboard_566705419In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges. Some observers have concluded that software patents are no longer worth pursuing. We disagree. Although there are real challenges, and patents on some software or other computer-implemented inventions may now be quite difficult (or even impossible) to obtain or enforce, a well-written and well-prosecuted patent application can circumvent many of these obstacles.

To read our full advisory on software patent eligibility, please click here.

shutterstock_536979811As 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).

In a webinar organized by The Knowledge Group, Bret Cohen will discuss the DTSA in 2017, and will address the following topics:

  • The DTSA Under Trump’s Administration
  • Defend Trade Secrets Act – In the 2017 Landscape
  • DTSA in the 2016 Landscape: A Recall
  • Trade Secret Litigation Trends in 2017
  • Trade Secret and Non-Compete Law
  • Investigations Under DTSA
  • DTSA Injunctions
  • Seizure Provisions of the DTSA
  • Threatened Disclosure vs Inevitable Disclosure Injunctions
  • New Immunity for Whistleblowers
  • Recent Cases and Hot Topics

Please click here for additional details, or use this link to register.

Over the course of the past year, there have been two notable decisions issued by the Federal Circuit and the International Trade Commission that impact the scope and nature of the remedies available for the infringement of standard-essential patents (SEPs), and as a result, continue to shape the incentives of technology innovators to contribute their patented inventions to standards-setting bodies.

On December 3, 2015, the Federal Circuit issued its much-awaited decision in Commonwealth Scientific and Industrial Research Organization (CSIRO) v. Cisco Systems, Inc., providing meaningful guidance on a number of open questions pertaining to the calculation of damages for the infringement of SEPs.  In Certain Industrial Control System Software, Systems Using Same, and Components Thereof, Inv. No. 337-TA-1020 (the 1020 Investigation), the Commission was asked to invoke the Early Disposition Pilot Program to direct the presiding Administrative Law Judge to determine whether the asserted patents are standard-essential and therefore subject to mandatory licensing obligations.

To read the additional details about these decisions and their impact, please click here.

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.  These changes fall into three main categories.

The first change affects the initial Case Management Conference under Federal Rules of Civil Procedure 26.  In the Case Management Statement, parties now must provide non-binding, good-faith estimates of the damages expected in the case, as well as an explanation for the estimates.  Patent L.R. 2-1(b)(5). If a party cannot provide this information they must explain why, state what information they would need to do so, and state when the party believes they would be in a position to provide the estimate and explanation.

Continue Reading New Rules in the Northern District of California Aim to Encourage Patent Case Settlements

america_338678930For 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.  In doing so, the Board may have provided other patent owners with a roadmap for prevailing in IPRs with this rarely successful argument against obviousness.

World Bottling Cap had successfully petitioned the Board for inter partes review of Crown Packaging Technology’s U.S. Patent No. 8,550,271 on obviousness grounds.  The ’271 Patent describes a bottle cap made with thinner and harder steel compared to conventional caps.   Continue Reading PTAB Provides A Possible Roadmap For Patent Owners To Successfully Argue Secondary Considerations Of Nonobvious

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. Civil seizure can only be employed in “extraordinary circumstances,” however, and a request for civil seizure has never been granted, though only a handful of requests have been made under this DTSA mechanism, which is still less than a year old (the most recent request was denied in the Northern District of California in OOO Brunswick Rail Mgt., et al. v. Sultanov, et al., No. 5:17-cv-00017 (N.D. Cal. Jan. 6, 2017)).

The story of civil seizure and the DTSA does not end there. Continue Reading The DTSA and Civil Seizure Under Federal Rule of Civil Procedure 65

Prior Art SearchThe 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 U.S. Patent and Trademark Office (USPTO) wants to increase the quality of examiner searches using non-patent literature and foreign patents generally.  To achieve this goal, STIC provides examiners with access to foreign patents, foreign applications, journals, books, commercial databases, translations, and a specialized collection of resources in the biological and chemical fields.  STIC also has search strategy experts that can assist examiners in search activities and understanding certain technology areas.

Continue Reading How to Search Like an Examiner With the Scientific and Technical Information Center

On December 28, 2016, the Korean Fair Trade Commission (KFTC) issued a steep fine (“KFTC Ruling”) against Qualcomm for antitrust violations in patent licensing and modem chip sales – a record penalty that the U.S. company will challenge in court. Finding that Qualcomm leverages its standard-essential patent (SEP) portfolio to further its chipset business in contravention of Qualcomm’s fair, reasonable and nondiscriminatory (FRAND) obligations and Korean antitrust law, the agency levied a penalty of over US$850 million and directed Qualcomm to alter its business model.

The KFTC Ruling is just one of the latest challenges to Qualcomm’s licensing strategy and also sets forth Korea’s understanding of what FRAND obligations entail.  Mintz Levin attorneys provide detail and insight in “Korea, In Sanctioning Qualcomm, Articulates A New Meaning For ‘FRAND’“, as published on IP Law 360.

 

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).  This is all part of a larger push by the USPTO to document on the record everything that happens during prosecution of an application, which can affect any issued patent and any patent family members in later legal proceedings.

The initial pilot is over, and the results of the pilot are now being reviewed as part of the ongoing program.  The pilot ran through August 20, 2016, and worked to identify best examiner practices for enhancing the clarity of the prosecution record and, in particular, greater clarity in claim interpretation, interview summaries, and reasons for allowance.  The pilot consisted of about 130 utility patent examiners, and the participants participated in a variety of different activities, such as ongoing training activities and Quality Enhancement Meetings (QEMs).  The USPTO has provided public access to training slides presented to the participants regarding Documenting Claim Interpretation, Interview Summaries and Pre-search Interview Option, and Reasons for Allowance.

Continue Reading Beware of the USPTO’s Push for Clarity

USPTO SealThe 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.  The following aspects of the PAR may be of particular interest to patent and trademark practitioners.

Regional Patent Offices

The USPTO opened its two newest regional offices in Silicon Valley (San Jose) and Dallas in 2016, which increases the total number of regional offices to four.  The two previous regional offices are in Detroit and Denver.  The USPTO wants the regional offices to serve as hubs of education, outreach, and innovation, going beyond simply processing applications and Patent Trial and Appeal Board cases.  The USPTO is making a push to reach out to the technology and innovation communities to ensure that the two new regional offices serve their region’s innovation and intellectual property communities by providing access to tools for innovators who need assistance at every step of the business lifecycle.  The USPTO is also trying to ensure that the regional offices teach innovators about the basics of intellectual property, including patents, copyrights, trademarks, and trade secrets, and provide search terminals to help evaluate novelty.  All of the USPTO’s regional offices now have directors and regional outreach officers on site, and the USPTO has been actively hiring new examiners in Detroit, Silicon Valley, and Dallas.

Continue Reading Highlights of the USPTO Performance and Accountability Report for Fiscal Year 2016