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Supreme Court Expands Trade Secrets Exemption from FOIA

Businesses often worry that the information they provide to the government will be disclosed, and with good reason – such information is presumptively available to the public under the Freedom of Information Act...more

Peter v. NantKwest, Inc. (2019)

Supreme Court Rejects USPTO's Attempt to Recover Attorney's Fees in All District Court "Appeals" from PTAB Decisions - In Peter v. NantKwest, Inc., decided by the U.S. Supreme Court, the Court considered whether the U.S....more

U.S. Supreme Court Refuses to Require Applicants to Pay USPTO’s Attorney Fees in District Court “Appeals” of Prosecution Decisions

A patent applicant dissatisfied with a decision by the USPTO’s Patent Trial and Appeal Board (“PTAB”) has two options for review of that decision. Most commonly—by far—the applicant can appeal the decision to the U.S. Court...more

USPTO Issues Proposed Rules on Burden of Proof for Motions to Amend in Post-Grant Proceedings

When post-grant proceedings under the America Invents Act began, the USPTO's Patent Trial and Appeals Board ("PTAB") treated motions to amend in those proceedings like most other motions:  the movant, here the patentee, bore...more

Peter v. NantKwest: PTO Faces Skeptical Justices over Assessment of Fees

On the first day of the 2019-20 term, the Supreme Court heard oral argument in Peter v. NantKwest, Inc., a case raising the question of whether a patent applicant should be responsible to pay all of the PTO's attorneys' fees...more

The STRONGER Patents Act of 2019: Weakening Post-Grant Proceedings

The sponsors of the STRONGER Patents Act of 2019 -- introduced to the Senate on July 10, 2019 -- may be from both political parties, but they share one clear trait:  they hate what post-grant proceedings have done to patent...more

Food Marketing Institute v. Argus Leader Media (2019)

Although patentees generally do not have great concerns about the Freedom of Information Act (FOIA) because of the U.S. Patent and Trademark Office's secrecy requirements, they may lose control over their information under...more

Forum US, Inc. v. Flow Valve, LLC (Fed. Cir. 2019)

Every patent must include a written description of the invention sufficient to enable a person of ordinary skill in the art to make and use the invention.  A broadening reissue under 35 U.S.C. § 251 must meet a more exacting...more

Power Integrations, Inc. v. Semiconductor Components Industries, LLC (Fed. Cir. 2019)

In this case, the question ultimately answered by the Federal Circuit was a straightforward question of statutory interpretation:  in determining whether a party is time-barred from filing a petition for inter partes review...more

Return Mail, Inc. v. United States Postal Service (2019)

In a 6-3 decision, the Supreme Court today held that federal government agencies cannot avail themselves of America Invents Act (AIA) post-grant proceedings.  This decision was based on the Court's determination that the...more

U.S. Supreme Court Issues Ruling in Return Mail v. U.S. Postal Service Prohibiting Federal Agencies from Seeking AIA Review

In a 6-3 decision rendered earlier on June 10, 2019, the Supreme Court decided that federal agencies are not “persons” who can petition for post-issuance review of patents under the America Invents Act (AIA).  Thus, the...more

Scentsational Technologies LLC v. PepsiCo, Inc. (Fed. Cir. 2019)

Parties often push experts to testify outside their area of expertise and leave it up to the expert to push back when uncomfortable.  If the expert fails to do so, a party's aggressiveness may come back to haunt it before the...more

AVX  Corp. v. Presidio Components, Inc. (Fed. Cir. 2019)

AVX Corporation and Presidio Components are long-standing competitors in the market for electronic components, including capacitors. Their competition has caused animosity, which in turn has resulted in patent infringement...more

Protecting Trade Secrets with Restrictive Covenants: The Question of Consideration in Illinois

Employers have a number of tools they can use to protect against their employees walking off with trade secrets; among them, restrictive covenants or non-compete agreements can be extremely powerful. Such agreements avoid the...more

Supreme Court Grants Certiorari in Iancu v. NantKwest, Inc.

On the same day that the Supreme Court decided what the term "full costs" means under the Copyright Act, it granted certiorari to consider what "all the expenses of [a district court review] proceeding" means under the Patent...more

Supreme Court Hears Oral Argument in Return Mail v. U.S. Postal Service

Earlier today, February 19, 2019, the Supreme Court heard oral argument in Return Mail, Inc. v. U.S. Postal Service, which presented the simple question whether the federal government is a "person" entitled to petition for...more

PTO Publishes Draft Altered Procedures for Amendments in AIA Proceedings

In AIA post-grant proceedings -- specifically, Post-Grant Review ("PGR"), Inter Partes Review ("IPR"), and Covered Business Method ("CBM") review -- the patentee has the right to seek to amend the claims rather than fight...more

Supreme Court to Decide if Government Can Bring AIA Proceedings

On Friday, October 26, 2018, the Supreme Court granted certiorari in Return Mail, Inc. v. U.S. Postal Service, in order to answer the question whether the government can bring post-grant review proceedings under the...more

PTAB Adopts Litigation Standards for Claim Construction in AIA Proceedings

Under a new PTO administrative rule published today, October 11, 2018, the PTAB will apply the same claim construction standards in IPRs, PGRs, and CBMs filed on November 13, 2018 or later as would apply in litigation. 83...more

NantKwest, Inc. v. Iancu (Fed. Cir. 2018) (en banc)

En Banc Federal Circuit Finds § 145 Appellants Generally Will Not Be Liable for Patent Office's Attorneys' Fee - The Federal Circuit handed down its en banc decision on Friday regarding the question of whether under 35...more

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 16, Issue 2

Intelligent Machines - Engines of Intellectual Property Creation? - Recently, artificial intelligence (AI) has become an increasing part of our daily lives. Many of us utilize virtual assistants such as Apple’s Siri and...more

Trade Secrets in 2018: The Law Is Still Trying to Catch Up to Technology

Two cases this year have demonstrated that, although trade secret protections have become better aligned with protecting high tech trade secrets, there is still a long way to go. First, in Waymo v. Uber, the hard-fought...more

New York v. Aleynikov -- On Second Thought, New York State's Penal Code (Unlike Federal Criminal Law) Covers Electronic...

As the saying goes, hard cases make bad law. And it certainly looked improper when Sergey Aleynikov downloaded high-frequency trading ("HFT") source code as he was leaving his job as a Goldman Sachs programmer, at least to...more

ABA Provides Guidance on Required Disclosure of Attorney Errors

On April 17th, the American Bar Association provided a formal opinion regarding the requirement that attorneys disclose errors to clients. Its opinion was based on Rule 1.4 of the Model Rules of Professional Conduct, which...more

In re Silver -- Texas Supreme Court Recognizes Patent Agent Privilege

In reversing an appellate court decision that had caused concerns throughout the patent world, the Texas Supreme Court recognized that communications between patent agents and clients could be covered by the attorney-client...more

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