New Defend Trade Secrets Act

By Samantha Leiner Congress added a new section to the federal criminal trade secret law enacted on May 11, 2016, which allows owners of a trade secret to now file a civil action for misappropriation of that trade secret.  See 18 U.S.C. § 1836(b). The new act is referred to as the Defend Trade Secrets Act of 2016 (DTSA).   Before the addition of the DTSA, trade secret misappropriation issues were governed by state laws, in which 47 states have adopted their trade secret laws from by the Uniform Trade Secret Act (UTSA).   The UTSA was published in 1979, and amended in 1985, in an effort to make the ever-growing state common law on trade secrets more uniform throughout the country.  The three states that have not adopted the UTSA are New York, North Carolina, and Massachusetts. While the DTSA and the UTSA share some common aspects, there are three major differences between them. Filing an Ex Parte Application for

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NantKwest, Inc. v. Lee

By Samantha Leiner   DISCUSSION ON STATUS OF CASE:  The only brief that has been filed in the Fed. Cir. regarding the appeal of the order on the Motion for Expenses by the Eastern District of Virginia is the Brief for Appellant filed by the PTO.  We are still waiting for the reply briefs by NantKwest, Inc. The Fed. Cir. has not heard oral arguments. ISSUE: Whether the phrase “all the expenses of the proceeding” in 35 U.S.C. § 145 includes the personnel expenses actually incurred by the PTO in defending the proceeding. FACTS: NantKwest, Inc. is the assigned owner of a patent application filed by a Dr. Hans Klingemann in 2001.  In 2010, an examining attorney rejected the application based on a finding of obviousness in view of two prior art.   In October 2013, the PTAB affirmed the rejection by the examining attorney. In December 2013, NantKwest filed its complaint in the Eastern District of Virginia under § 145,

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Trader Joe’s Co. v. Hallatt, 981 Fed. Supp. 2d 972 (W.D. Wash. 2013).

This case is currently awaiting a decision from the Ninth Circuit.  Case No. 14-35035. Facts and Procedural History: Trader Joe’s, a specialty United States (“U.S.”) grocery store, filed a Lanham Act trademark infringement and dilution action against Canadian grocery store owner, Michael Hallatt.  To stand apart from its competition in the U.S., “Trader Joe’s developed a rustic South Pacific-inspired theme.”  Brief for Appellant at 6, Trader Joe’s Co. v. Hallatt, (No. 14-35035).  Although Trader Joe’s has a website that displays its products, Trader Joe’s only sells its products at its retail grocery stores in order “[t]o maintain the exclusivity of its branded products.”  Brief for Appellant at 7, Trader Joe’s Co. v. Hallatt, (No. 14-35035).  Trader Joe’s has received several U.S. trademark registrations for its marks, including “the word TRADER JOE’S for retail store services in the field of specialty foods and beverages (Trademark Reg. No. 2,171,157); for processed foods (Trademark Reg. No. 1,424,176); and for beverages (Trademark Reg. No.

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India Patent Act Changes

By Julie Shursky Behind South Africa, India is managing the world’s second largest HIV treatment program.  In 2015, more than 900,000 patients received antiretroviral treatment in India.[1]  Despite the enactment of various government-funded health insurance programs and organizations to combat infectious and chronic diseases such as HIV/AIDS, the Indian government continues to struggle in financing adequate healthcare facilities for its citizens, causing a significant number of Indian citizens to “fund their health needs through out-of-pocket expenses.”[2]  In an effort to protect and manage its market, India enacted Section 3(d) and established patent laws that allow its government to grant compulsory licenses for pharmaceutical products. In an effort to increase the availability of low-cost drugs, the Indian Patent Act of 1970 (“1970 Act”) prohibited the patentability of pharmaceutical products.[3]  The 1970 Act, however, permitted patents on the manufacturing process of said products,[4] which led to the booming of India’s generic drug sector through capitalizing on innovation by multinational companies that were

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In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015)

By Samantha Leiner   Facts:  In 2002, Giuseppe A. Cuozzo applied for a patent covering a speedometer that shows a driver when he is driving above the speed limit.  Essentially, the invention encompasses a white speedometer needle that turns red when it passes under a translucent piece of red glass (or equivalent, say red cellophane).  If you attach the piece of red material to a speedometer beginning at 65 mph, then the white needle will look red when it passes that speed.  The invention includes attaching the red glass to a rotating plate, attaching the plate to the speedometer, connecting the plate to a GPS receiver, and entering onto a chip or a disk all the speed limits on all the US roads.  Thus, the GPS receiver can signal where the car is, the chip or disk can signal the speed limit at that location, and the plate can rotate to the right number turning the white needle to red,

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Prior Use Rights v. Patent Protection

By Julie Shursky Before the enactment of the Leahy-Smith America Invents Act (“AIA”), the prior user rights defense was limited to business method patents.  35 U.S.C. § 273 (2006) (restricting the defense to patent claims for “a method of doing or conducting business”), amended by Leahy-Smith America Invents Act, Pub. L. No. 112-29, sec. 5(a), 125 Stat. at 297.  The AIA, however, amended the language of Section 273, such that the defense is now applicable to any “process” or any “machine, manufacture, or composition of matter used in manufacturing or other commercial process.”  35 U.S.C. § 273(a) (2011).  Further, Section 273 states that an accused infringer must prove, by clear and convincing evidence, that the patented subject matter was “commercially used” in the United States at least a year prior to the effective filing date of the claimed invention.  35 U.S.C. § 273(a)(2).  This expanded prior user rights defense under the AIA applies to any patent issued on or after

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Summary on the Supreme Court’s Recent Kirtsaeng Decision

By Samantha Leiner The Supreme Court released its decision regarding the case Kirtsaeng v. John Wiley & Sons, Inc., 579 U. S. ____ (2016, in June.  This case deals with what factors a district court is supposed to look at when awarding or rejecting attorneys’ fee under the Copyright Act Section 505. 17 U.S.C. § 505.  The original infringement issue was decided by the Supreme Court in 2013.  See Kirtsaeng v. John Wiley & Sons, Inc., 568 U. S. ___ (2013).   Kirtsaeng, a citizen of Thailand, came to the US to go to school at Cornell University.  He realized the same textbooks required for his class in the US were sold for a significantly cheaper amount back home in Thailand.  Kirtsaeng had family and friends buy the textbooks in Thailand and then sent the books to him in the U.S., where he sold them for a nice profit.  Wiley & Sons, the publishing company for the textbooks, sued Kirtsaeng

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New Post-Registration Pilot Program (P3)

By Samantha Leiner Purpose and Implementation of Post-Prosecution Pilot Program (P3): The USPTO created the new pilot program, Post-Prosecution Pilot Program (P3), in response to stakeholder input gathered during various public forums to support the USPTO’s Enhanced Patent Quality Initiative.  The purpose of the new P3 Pilot Program is to see if the USPTO can improve patent practice between a final rejection from the USPTO and a notice of appeal by the applicant. Under the P3, a panel of examiners, including the examiner on record for the application, will hold a conference with the applicant to review the applicant’s response of the final rejection given by the USPTO.  According to the Federal Register’s summary of the new P3 program, the purpose of the program was to “increase the value of after final practice by (1) leveraging applicant input obtained through an oral presentation during a conference with a panel of examiners, and (2) also providing written explanation for the panel

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Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015)

By Julie Shursky Facts: Proxyconn, Inc. (“Proxyconn”) filed suit against Microsoft Corporation (“Microsoft”), accusing Microsoft of infringing its U.S. Patent No. 6,757,717 (“the ’717 patent.”) Microsoft, 789 F.3d at 1295.  This appeal arises from the inter partes review (“IPR”) of the ’717 patent.  Id. The ’717 patent “relates to a system for increasing the speed of data access in a packet switched network.” at 1295. The United States Patent and Trademark Office, Patent Trial and Appeal Board (“Board”) issued a final written decision, finding all but one of the instituted claims (claim 24) to be unpatentable under 35 U.S.C. § 102 and additionally under 35 U.S.C. § 103.  Id. (citing to Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 and IPR2013-00109, Paper No. 73 (PTAB Feb. 19, 2014).  The Board further denied Proxyconn’s motion to amend.  Id. Microsoft appeals the Board’s determination that claim 24 is patentable. Proxyconn cross-appeals, “challenging the Board’s use of the broadest reasonable interpretation (“BRI”) standard of claim

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SCOTUS grants Certiorari for Apple Inc. v. Samsung Elecs. Co.

Written by  Chitakone Arounlangsy   On January 2007, Apple Inc. patented the iPhone design which set forth subsequent litigation based on alleged utility and design patent infringement. http://fortune.com/2015/12/05/samsung-apple-timeline-settlement/.  Apple Inc. sued Samsung Electronics Co., on April 2011, for alleged infringement of patents based on user interface, and the Galaxy S and Infuse phones’ similarity in appearance to Apple’s iPhone line. Id. Apple Inc.’s lawsuit has caught the attention of the United States Supreme Court, and the appeal from Samsung has been officially put on hold while SCOTUS examines the merits of the case. http://www.macobserver.com/tmo/article/apple-v-samsung-damages-retrial-officially-on-hold Samsung was ordered to pay $548 million in damages last year, which was the basis of the appeal. http://www.macobserver.com/tmo/article/apple-v-samsung-damages-retrial-officially-on-hold. Apple Inc. filed suit on April 2011, alleging that Samsung infringed upon its D618,677, D593,087, D504,889, and US 7,469,381 patents. Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal. Dec. 2, 2011).  Apple Inc. requested a preliminary injunction against Samsung’s Galaxy

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