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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Procuring U.S. Patents without a Signed Assignment of Patent Rights

October 27, 2020 | Blog | By Christina Sperry, Mark Hammond

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights.  Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed.  
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Patent Litigation Viewpoint Thumbnail
The recent anti-suit injunction issued against InterDigital in its SEP litigation with Xiaomi is a somewhat predictable reaction to the recent UK Supreme Court decision against Huawei and ZTE.  One of the central arguments there was that the UK courts were trying to set themselves up as the international arbiter of FRAND disputes. 
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Fate of PTAB Judges and Decisions Now in Hands of Supreme Court

October 15, 2020 | Blog | By Michael Renaud, William Meunier, Monique Winters Macek

On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions.
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Patent Litigation Viewpoint Thumbnail

Recreating the Prior Art

October 7, 2020 | Blog | By Andrew D. Skale, Justin J. Leisey

In high-stakes litigation, parties go to great lengths to prove their case.  One such example is ongoing litigation between two giants in the paint and coatings world.  Sherwin-Williams Co. and PPG Industries, Inc. are involved in a patent infringement dispute over BPA-free can coatings.
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Federal Circuit Appeals Viewpoint Thumbnail
In Network-1 Techs., Inc. v. Hewlett-Packard, No. 18-2338, the Federal Circuit reversed and vacated multiple aspects of the district court’s final judgment holding that Hewlett-Packard (HP) did not infringe U.S. Patent No. 6,218,930 (“the ’930 patent”) disclosing an apparatus and method for remotely powering Ethernet compatible equipment.
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Viewpoint Thumbnail
In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging, inter alia, violations of §§ 1 and 2 of the Sherman Act, and declaratory judgment as to FRAND obligations against Avanci, LLC (“Avanci”) and various members of its patent pool (collectively, “Defendants”).
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Trade Secrets Viewpoint Thumbnail

Fact-Specific Inquiry: Deciding Between Trade Secret and Patent Protection

September 15, 2020 | Blog | By Adam Samansky, Nicholas Armington

Innovations that are eligible for patent protection are often vital to a company’s revenue stream and profitability, but in some cases, opting for trade secret protection is a better strategic choice.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Patent Application Declarations for Unavailable or Uncooperative Inventors

September 14, 2020 | Blog | By Christina Sperry, Mark Hammond

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the U.S. Patent and Trademark Office (USPTO) for all applications. 
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Viewpoint Thumbnail

DOJ to IEEE: Yes, Injunctive Relief Should Be Available for SEPs, and Stop Saying Otherwise

September 14, 2020 | Blog | By Michael Renaud, James Wodarski, Joseph Miller, Daniel Weinger, Kara E. Grogan

Last Thursday, September 10, 2020, the U.S. Department of Justice’s Antitrust Division (“DOJ”) issued an updated Business Review Letter (“2020 Letter”) to the Institute of Electrical Electronics Engineers, Incorporated (“IEEE”) clarifying the DOJ’s views on licensing and enforcement practices related to standard essential patents (“SEPs”).
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Trade Secrets Viewpoint Thumbnail

Rules of Engagement: Minimizing Trade Secret Disputes when Hiring Rival Employees

September 10, 2020 | Blog | By Adam Samansky, Nicholas Armington

An ethical corporate culture and clear expectations during the hiring process can help companies curtail trade secret disputes when hiring employees from rival companies.
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Trade Secrets Viewpoint Thumbnail

Playing Fair: Protect Trade Secrets from Business Partners

September 8, 2020 | Blog | By Adam Samansky, Nicholas Armington

Companies can minimize trade secret theft by business partners by instituting non-disclosure agreements before sharing trade secrets and establishing general confidentiality agreements with business partners.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

USPTO Weighs in on IT Modernization in CXOTalk Interview

August 31, 2020 | Blog | By Christina Sperry, Paul Brockland

How does an important U.S. government agency modernize its operations, especially during a global health crisis? What IT modernization approach can U.S. patent and trademark practitioners expect from the United States Patent and Trademark Office (USPTO)?
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Patent Litigation Viewpoint Thumbnail

THE SEP WORLD IN BALANCE: UK Harmonizes with Germany’s Rejection of Implementer Hold Out

August 26, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger, Matthew Galica

Another major development in global standard essential patent litigation was handed down today, as the UK Supreme Court upheld lower court rulings that forced an efficient infringer of essential patents to accept a global license or face an injunction.
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Trade Secrets Viewpoint Thumbnail

Workplace Confidential: Preventing Former Employees from Using Your Trade Secrets

August 24, 2020 | Blog | By Adam Samansky, Nicholas Armington

By proactively protecting trade secrets and using litigation strategically, companies can minimize trade secret misappropriation by former employees.
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Trade Secrets Viewpoint Thumbnail

Danger on the Horizon: Detecting Early Signs of Trade Secret Theft by Competitors

August 20, 2020 | Blog | By Adam Samansky, Nicholas Armington

Companies can quickly detect trade secret theft by planting an unneeded feature or part that would be included in a copycat item and continually monitoring competitors’ new products.
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Trade Secrets Viewpoint Thumbnail

Keeping (Trade) Secrets Amid a Reduction in Force

August 17, 2020 | Blog | By Adam Samansky, Nicholas Armington

Companies can lower the risk of trade secret theft amid a reduction in force by limiting and auditing the use of trade secrets and including confidentiality provisions in severance agreements.
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Federal Circuit Appeals Viewpoint Thumbnail
In a reversal that came as no surprise to many observers, on Tuesday, August 11, 2020, a unanimous panel of the U.S. Court of Appeals for the Ninth Circuit reversed the decision by the U.S. District Court for the Northern District of California in FTC v. Qualcomm and vacated the district court’s worldwide, permanent injunction prohibiting several of Qualcomm Incorporated’s (“Qualcomm”) licensing practices with respect to standard-essential patents (“SEPs”) covering cellular technology.
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Patent Litigation Viewpoint Thumbnail
On July 30, 2020, the U.S. District Court for the District of Delaware, in APS Technology, Inc. v. Vertex Downhole, Inc. et al, No. 19-cv-01166, denied Vertex Downhole’s Rule 12(b)(6) motion to dismiss APS’s patent infringement complaint.
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Federal Circuit Appeals Viewpoint Thumbnail
In XY, LLC v. Trans Ova Genetics, LC (Case 2019-1789, issued July 31, 2020), the Federal Circuit provided another example of a life sciences method claim avoiding patent ineligibility under the Alice framework at step one, altogether avoiding the “inventive concept” analysis under step two. 
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Federal Circuit Appeals Viewpoint Thumbnail

Federal Circuit Reminds PTAB That Short Cuts Are Not Allowed

August 11, 2020 | Blog | By Brad M Scheller

Last month, in a precedential decision, the Federal Circuit vacated-in-part and remanded the Patent Trial and Appeal Board’s (“Board”) obviousness determination regarding Alacritech’s computer networking patent because the Board failed to adequately explain its findings for three of the challenged claims.
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