Intellectual Property Litigation

European and UK patents are not impacted by Brexit. The European Patent Office (EPO) is established under the European Patent Convention (EPC). The EPC is separate from the European Union and the UK is, now, one of several non-EU contracting states. The EPO will continue to validate “European” patents in the UK and the UK

An institution’s trade secrets generally include confidential information with commercial value.  Trade secret protection may be available by common law, under state laws, or under federal law.  In addition, there may be both civil and criminal causes of action for the misappropriation and theft of trade secrets.

For instance, the Defend Trade Secrets Act of 2016 (DTSA) is a United States federal law that allows an owner of a trade secret to sue in federal court when its trade secrets have been misappropriated through “improper means.”[1]  Such “improper means” can include “theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.”[2]

Trade secrets can be used by institutions to protect numerous types of information.  For instance, under the DTSA, protectable trade secrets include information that “derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.”[3]  Furthermore, such information can include “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing.”[4]

Moreover, trade secrets can have an indefinite life, so long as they are kept secret and confidential.  For instance, under the DTSA, trade secret protection requires the owner of the trade secret to take “reasonable measures to keep such information secret.”[5]

An institution’s trade secrets can be its most valuable and prolonged assets.   However, institutions must take numerous steps in order to maintain the enforceability of their trade secrets.  Such steps include: (1) identifying the trade secrets; and (2) taking “reasonable measures” to maintain the secrecy of the trade secrets.
Continue Reading Protecting Your Most Valuable Assets: How to Identify and Maintain Your Institution’s Trade Secrets

“Rather than rest our decision on formalities, our focus is on what makes our on-sale bar jurisprudence coherent: preventing inventors from filing for patents a year or more after the invention has been commercially marketed, whether marketed by the inventor himself or a third party.”  The Medicines Company v. Hospira, Inc., No. 2014-1469, slip

Regardless of the June 23, 2016 vote on Brexit, all owners of European patents, and all applicants seeking patents in Europe, will have both new options, and a new set of important decisions to make.  Most commentators anticipate that the Unitary Patents (UPs) and the Unified Patent Court (UPC) will come into effect and patentees

Patent Marking

Under the patent marking statute, 35 U.S.C. § 287(a),  notice can be actual, or  constructive notice. Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent. Constructive notice can be achieved by affixing a product with the word “patent” or abbreviation “pat.” along with the patent number.

In a recent dispute between two medical device companies, a consultant’s alleged contributions to Angioscore patents became a central issue (TriReme Med., LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. 2016)). The dispute underscores several patent issues that can arise from consulting agreements. A brief summary is provided below:

  • The consultant Dr. Lotan

On January 20, 2015, the Supreme Court provided guidance on the standard of review for claim construction on appeal in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 12-854. The Court held “[w]hen reviewing a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal

The Supreme Court recently “conclude[d] that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement.” Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (2014). Instead, the Court concluded that “a patent is invalid for indefiniteness if its claims, read in light of the specification

As part of their settlement, Adam Carolla and Personal Audio LLC agreed to not make any public statements concerning their patent infringement lawsuit until September 30th.[1]  On Wednesday’s podcast, Adam Carolla and Mike August, a former attorney, discussed the lawsuit and the settlement that was reached between Carolla and Personal Audio.[2]

Personal Audio

Adam Carolla has reportedly settled the lawsuit that was filed against him by Personal Audio LLC.[1]  The Agreed Motion to Dismiss Claims is available for review, but the specific terms of the settlement have not been disclosed—the parties have agreed to not make any public statements concerning the litigation until September 30th.[2]  Nonetheless