New PTAB Guide Creates Uncertainty as to Multiple Petition Situations

Harper BattsChinenye OkaforBy Harper Batts and Chinenye Okafor on Posted in Patents

The USPTO published its second update to the PTAB Trial and Practice Guide last month. The section addressing procedures for addressing multiple challenges to a patent is a new and noteworthy addition.

In the new section addressing “parallel petitions challenging the same patent” by the same petitioner, the Board states that, “one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Continue Reading

Don’t Spill Your Trade Secrets: Protecting Your Competitive Advantage in the Food and Beverage Industry (Part 2 of 2)

Rebecca EdelsonSeong KimXimena Solano SuarezBy Rebecca Edelson, Seong Kim and Ximena Solano Suarez on Posted in Trade Secrets

In the race to get new products to market, food and beverage businesses sometimes neglect their critically important intangible assets — their valuable trade secrets. Through advance planning and diligence, businesses in that industry can avoid losing the competitive advantage afforded to them by their proprietary information. In our last post we discussed the 7 potential areas of trade secrets in this industry. In this post, we discuss how to protect the secrecy of your proprietary information, which is required to enforce information as trade secrets. Continue Reading

Don’t Spill Your Trade Secrets: Protecting Your Competitive Advantage in the Food and Beverage Industry (Part 1 of 2)

Rebecca EdelsonXimena Solano SuarezSeong KimBy Rebecca Edelson, Ximena Solano Suarez and Seong Kim on Posted in Trade Secrets

In the race to get new products to market, food and beverage businesses sometimes neglect their critically important intangible assets — their valuable trade secrets. Through advance planning and diligence, businesses in that industry can avoid losing the competitive advantage afforded to them by this proprietary information.

Famous Food & Beverage Trade Secrets. Some food and beverage companies have been very successful in protecting their trade secrets and capitalizing on them. One of the most valuable trade secrets in history is the formula for Coca-Cola. The drink was invented in 1886 and the recipe was passed down by word of mouth until 1919, when it was first written down. At that time, a group of investors took out a loan to purchase the company and the formula was provided as collateral. The written formula was locked in a bank until it was moved into a purpose-built vault, with a palm scanner, a numerical code pad and enormous steel door. According to Coca-Cola, only two senior executives, bound by non-disclosure agreements (NDAs), know the formula at any given time. Neither these executives’ names nor positions have ever been released. Over the years, some have claimed to have cracked the original formula. However, none have been confirmed as the official formula and Coca-Cola’s formula remains a well-guarded and valued trade secret. Continue Reading

The U.S. Trademark Office Opens The Door to Registering Certain Cannabis Trademarks

Scott MillerBy Scott Miller on Posted in Trademarks and Trade Dress

On May 2, 2019, the United States Trademark Office issued new Examination Guidelines for goods and services associated with cannabis and cannabis-derived products and services legalized under the 2018 Farm Bill.[1] This crack in the federal armor against the cannabis economy opens the door for the federal registration of trademark rights and is an important step toward normalizing the nation’s laws governing cannabis and cannabis-related business activities in states where such products are legal. Continue Reading

Converting an IPR Loss into a District Court Win

Chris PonderJeffrey LiangBy Chris Ponder and Jeffrey Liang on Posted in Patents

It is very common to defend against a claim of patent infringement by litigating in the district court and the PTAB in parallel. The most straightforward-way for the defendant to win is to persuade the PTAB that the asserted patent is invalid. But, that is becoming more difficult as Director Iancu pushes the PTAB to apply greater scrutiny to petitions in order to address patent owner criticism that the PTAB proceedings are unfair. However, a recent decision disposing of a non-practicing entity’s long-running litigation against Ubisoft highlights how a defendant that ultimately lost on an issue before the PTAB can use the loss to their advantage in district court. Continue Reading

Framing Your Pitch: A Lesson from the TTI v. IBG Cases

By Patrick McGill on Posted in Patents

The U.S. Court of Appeals for the Federal Circuit recently issued three interesting, related opinions interpreting and applying the “technological invention” exception to Covered Business Method Review (“CBM Review”). These opinions serve as a reminder that litigation often turns on an advocate’s effectiveness in framing (or re-framing) a critical issue of law before the court.

The three Federal Circuit opinions are:

Continue Reading

A Cautionary Tale: Don’t Wait Until There Is A Problem To Protect Your Trade Secrets

Rebecca EdelsonSeong KimYoungbin SonBy Rebecca Edelson, Seong Kim and Youngbin Son on Posted in Trade Secrets

A federal decision recently reminded businesses about the importance of taking appropriate measures to protect their proprietary information before any misappropriation occurs. In Abrasic 90 Inc. v. Weldcote Medals, Inc.[1], the court denied the plaintiff’s motion for a preliminary injunction “largely because [the plaintiff] did not protect its supposedly secret information.” The court’s order underscores that businesses may be unable to enforce as a trade secret their valuable information unless they have taken adequate steps to protect its secrecy.

In that case, a manufacturer of grinding and sanding disks sought to enjoin its former employees and their new employer from operating in the abrasives industry and from using its trade secrets. The defendants took information about the plaintiff’s pricing, customers and suppliers when they left the company to start a competing business. Yet, the court declined to issue an injunction on the ground that Abrasic had failed to protect its supposedly trade secret information. Continue Reading

Yes, UCANN!

Yasamin ParsafarBy Yasamin Parsafar on Posted in Life Sciences, Patents

Patentees and inventors of cannabis compounds may be happy to learn a district court in Colorado recently held that, based on the record before it, U.S. Patent No. 9,730,911, entitled “Cannabis extracts and methods of preparing and using same,” is not directed to unpatentable natural phenomena. United Cannabis Corporation v. Pure Hemp Collective Inc., No. 1-18-cv-01922 (Apr. 17, 2019, Order) (William J. Martinez). Continue Reading

Returning to the Status Quo? – Proposed Outline for Section 101 Reform

Dan TaskalosBy Dan Taskalos on Posted in Patents

On April 18, 2019, Senators Thom Tillis (R-NC) and Chris Coons (D-DE), along with Representatives Doug Collins (R-GA), Hank Johnson (D-GA), and Steve Stivers (R-OH), released a bipartisan framework for 35 U.S.C. § 101 reform, available here.  The framework outlines specific goals that any proposed legislation should aim to address.

The impetus for such reform stems from uncertainties in recent case law regarding what qualifies as “patent-eligible” subject matter since the U.S. Supreme Court’s holdings in Mayo Collaborative Services, DBA v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014).  The relative fluidity of patent eligibility jurisprudence since the Court’s decision in Alice has caused difficulties not only for potential inventors and industry, but also for the patent bar at large.  Since the Alice decision, the USPTO has issued new guidance regarding how patent examiners are to analyze claims under section 101 at least once a year, with the exception of 2017.  As many practitioners would attest, the application of the guidance can vary between examiners and art units, resulting in general confusion as to what exactly makes one claim patent eligible over another. Continue Reading

PTAB Continues to Preclude PTAB Challenges That It Views As Untimely

Harper BattsChris PonderBy Harper Batts and Chris Ponder on Posted in Patents

In a proceeding that included Patent Office Director Andrei Iancu on the panel, the PTAB issued an order this past week denying institution of 3 IPRs filed by Valve. The decision demonstrates that the PTAB continues to tighten its standards for institution of post-grant challenges, including based upon considerations related to what it perceives as fairness to patent owners. Continue Reading

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