In 2021, following the Supreme Court’s Arthrex decision, the PTO issued an interim procedure for requesting Director Review. The PTO has now issued a Notice of Proposed Rulemaking (“NPRM”) formalizing the Director Review...more
On November 18, 2022, a panel of three PTAB administrative patent judges denied a Patent Owner’s Request for Additional Discovery in Twitter, Inc. v. Palo Alto Research Center Inc., IPR2021-01398. The PTAB found that...more
In its July 1st Boardside Chat, the PTAB discussed the Supreme Court’s recent Arthrex decision and the interim procedure for Director review. The panel included Drew Hirschfeld (Performing the functions and duties of the...more
7/7/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
In Fantasia Trading LLC v. Cognipower LLC, IPR2021-00070, Paper 21 (May 20, 2021), the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) where Petitioner Fantasia Trading LLC failed to...more
In General Access Sols., Ltd. v. Sprint Spectrum, et al., No. 2:20-cv-00007-RWS, ECF No. 128 (E.D. Tex. Dec. 1, 2020), the Eastern District of Texas denied a motion to strike invalidity defenses as barred by IPR estoppel for...more
In Samsung Elecs Co., Ltd., et al. v. Cellect, LLC, IPR2020-00474, Paper 14 (P.T.A.B. Aug. 17, 2020), the PTAB denied institution of U.S. Patent No. 6,982,740 (“the '740 patent”), finding that the specification did not...more
8/26/2020
/ Claim Construction ,
Denial of Institution ,
Incorporated by Reference ,
Inter Partes Review (IPR) Proceeding ,
Means-Plus-Function ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
POSITA ,
Prior Art ,
Samsung
A trade secret is any information used in one's business that derives independent economic value from being kept secret. Unlike patents, trade secrets are protected indefinitely for as long as they remain a secret. In the...more
8/12/2020
/ Burden of Proof ,
Competition ,
Computer Fraud and Abuse Act (CFAA) ,
Confidential Information ,
Corporate Counsel ,
Damages ,
Defend Trade Secrets Act (DTSA) ,
Evidence ,
Intellectual Property Protection ,
Misappropriation ,
Trade Secrets
In 3Shape A/S v. Align Tech., Inc., IPR2020-00223, Paper 12 (May 26, 2020), the PTAB declined to deny institution of an inter partes review involving a patent challenged in a pending ITC investigation. Despite the advanced...more
In a series of IPR proceedings between Petitioner Adobe Inc. and Patent Owner RAH Color Technologies LLC, the Patent Trial and Appeal Board declined to extend attorney work product protection to deposition questions seeking...more
1/28/2020
/ Attorney Communications ,
Discovery ,
FRCP 26 ,
Inter Partes Review (IPR) Proceeding ,
Motion to Compel ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Testimony ,
Work-Product Doctrine
A trade secret is any information used in one's business that derives independent economic value from being kept secret. Unlike patents, trade secrets are protected indefinitely for as long as they remain a secret. Due in...more
12/31/2019
/ Acquisitions ,
Defend Trade Secrets Act (DTSA) ,
Employment Contract ,
Former Employee ,
Intellectual Property Protection ,
Judgment As A Matter Of Law ,
Misappropriation ,
Non-Disclosure Agreement ,
Patents ,
Permanent Injunctions ,
Popular ,
Remedies ,
Sovereign Immunity ,
Trade Secrets ,
Uniform Trade Secrets Acts
On Tuesday, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet conducted a hearing to discuss recent court decisions, namely the Federal Circuit’s decision in Arthrex. Previously...more
Last Thursday, the Federal Circuit found the appointments of Patent Trial and Appeal judges unconstitutional, in part because the judges do not receive sufficient oversight from the Director of the United States Patent and...more
11/6/2019
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Officers of the United States ,
Patent Act ,
Patent Trial and Appeal Board ,
Presidential Appointments ,
Remand ,
Removal At-Will ,
Vacated
A trade secret is any information used in one's business that derives independent economic value from not being generally known. Unlike patents, trade secrets are protected indefinitely for as long as they remain a secret....more
Court rules that WeRide is likely to prevail on merits of its trade secret misappropriation claims against competitors -
In a trade secret misappropriation case between two autonomous vehicle companies, the Northern...more
5/2/2019
/ Automation Systems ,
Defend Trade Secrets Act (DTSA) ,
Driverless Cars ,
Expedited Discovery ,
Former Employee ,
Intellectual Property Protection ,
Misappropriation ,
Preliminary Injunctions ,
Source Code ,
Trade Secrets ,
Uniform Trade Secrets Acts
Assignor estoppel is an equitable doctrine that prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. As reported in a prior post, the Federal Circuit recently stated...more