Recently, the UK Minister of State for Intellectual Property, Baroness Neville-Rolfe, announced that the UK will implement the Unitary Patent (UP) and Unified Patent Court (UPC). In the announcement, Neville-Rolfe both praised the UP/UPC system as “provid[ing] an option for businesses that need to protect their inventions across Europe” and cautioned that the UK’s decision to implement the UP/UPC system “should not be seen as preempting the UK’s objectives or position in the forthcoming negotiations with the EU.”
Author: Thomas J. Bean
In the aftermath of the Supreme Court’s 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank International, the U.S. Court of Appeals for the Federal Circuit (CAFC) has rarely found Internet-based patent claims challenged under 35 U.S.C. § 101 and Alice to be patent-eligible. The Court’s recent decision in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC marks just the third such occurrence.
On May 11, 2016, President Obama signed the Defend Trade Secrets Act (“DTSA”) into law. President Obama publicly supported this legislation and efforts generally directed to strengthen trade secret protections within the U.S. economy. As we previously reported on May 3, 2016 and November 24, 2015, trade secret misappropriation was formerly treated exclusively as a matter of state law, governed by varied versions of the Uniform Trade Secrets Act as enacted in most states. A lack of uniform enactment of this Act resulted in differences in the application of the law between states, which presented difficulties for trade secret owners seeking to enforce their rights in the general commerce.
On April 27, 2016, the Defend Trade Secrets Act (“DTSA”) passed the House of Representatives with a 410-2 vote. The two no votes were from Rep. Justin Amash (R-MI) and Rep. Thomas Massey (R-KY). Earlier this month, on April 4, the Senate passed the DTSA by a unanimous vote of 87-0. Now, the DTSA heads to President Obama’s desk for his signature.
In two related opinions (Docket Nos. 2015–1361, 2015–1369, 2015–1366, 2015–1368 and Docket No. 2015-1364) issued February 22, 2016 (each captioned PPC Broadband, Inc. v. Corning Optical Communications RF, LLC), the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded portions of decisions rendered by the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent & Trademark Office (“USPTO”) in five separate inter partes review proceedings initiated by Corning Optical Communications RF, LLC (“Corning”) against PPC Broadband, Inc. (“PPC”). PPC is the owner of three patents at issue in the inter partes review proceedings (US 8,287,320, US 8,323,060, and US 8,313,353). The patents are related and directed to features of a coaxial cable connector. The CAFC decisions focus primarily on claim construction issues relating to the application of the PTAB’s “broadest reasonable construction” (“BRC”) claim construction standard and illustrate how the Court may evaluate the reasonableness of claim constructions in PTAB decisions on appeal.
The Gibbons Institute of Law, Science & Technology recently hosted a program to explore significant changes underway for the European patent landscape. At this program, Dr. Christoph Cordes, Partner at the German law firm Esche Schümann Commichau, presented an overview of the new European Unitary Patent and Unified Patent Court, and was joined by several panelists in a discussion about the anticipated impact of this new European patent regime.
Defend Trade Secrets Act of 2015 Would Create a Federal Private Right of Action for the Misappropriation of Trade Secrets
On July 29, 2015, with bipartisan support, Congressional leaders in both the House and the Senate introduced identical bills, HR 3326 and S. 1890, respectively, entitled, the “Defend Trade Secrets Act of 2015” (“DTSA 2015”). The proposed legislation attempts to authorize a private civil action in federal court for the misappropriation of a trade secret that is related to a product or service used in, or intended for use in, interstate or foreign commerce. Additionally, the proposed legislations seeks to (a) create a uniform standard for trade secret misappropriation; (b) provide parties pathways to injunctive relief and compensatory damages; and (c) create remedies for trade secret misappropriation that are similar to other violations of intellectual property rights, for example, including exemplary damages and attorneys’ fees available in the event of willful and malicious misappropriation of a trade secret. An interesting feature of the DTSA 2015 is the availability of an ex parte seizure order for plaintiffs fearful of the dissemination of their trade secret(s). The proposed ex parte seizure allows for the government to seize property necessary to prevent the propagation or dissemination of the trade secret prior to giving notice of the lawsuit to the defendant.
On July 9, 2015, the Federal Circuit affirmed a final written decision made by the U.S. Patent & Trademark Office Patent Trial and Appeal Board (“PTAB”) in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001), the PTAB’s first instituted Covered Business Method Review (“CBM”) Proceeding under § 18 of the Leahy-Smith America Invents Act (“AIA”). As a basis for the affirmance, the court established several important guidelines concerning Federal Circuit review of CBM proceedings which are highlighted below.
On June 15, 2015, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) introduced a new pilot program, beginning on June 19, 2015, that will allow appellants with multiple ex parte appeals pending before the PTAB to obtain an expedited review of one appeal in return for withdrawing another appeal. The stated goals of this program are to allow appellants with multiple ex parte appeals pending to have greater control over the priority with which their appeals are decided and reduce the backlog of appeals before the PTAB.
The Patient Survives: Third Party Challenge to PTO Revival of Patent Application Barred under the Administrative Procedures Act
The Federal Circuit Court of Appeals recently held that a third party may not challenge a decision by the United States Patent and Trademark Office (“PTO”) to revive an application under the Patent Cooperation Treaty and enabling statutes (“PCT”) through the Administrative Procedures Act (“APA”). See Excela Pharma Sciences, LLC v. Lee, No. 13-1206 (Fed. Cir. Mar. 26, 2015). In combination with the Federal Circuit’s prior holding in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008), this holding puts such decisions beyond the reach of third parties, whether affirmatively attacked under the APA or defensively raised in a later infringement action.