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Intellectual Property Report: May 2018

Firm Thought Leadership
House Subcommittee Hearing Considers Sunset of the Transitional Program for Covered Business Method Patents
Shreyas Kale*, Elizabeth Flannery
The Transitional Program for Covered Business Method Patents (“CBM”), created by the Leahy-Smith America Invents Act (“AIA”), is set to sunset in September 2020. As the title suggests, the CBM program was created as a temporary avenue for entities to challenge the validity of financial product or service patents through the USPTO. The CBM program is only available to petitioners who have been sued or charged with infringement of the subject patent. On March 20, 2018, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet held a hearing assessing the effectiveness of the CBM program and investigating whether the CBM program should be extended, modified, or incorporated into other post-grant proceedings (“CBM Hearing”). The subcommittee made no determinations on the future of the CBM program.
To read the full article, click here.
*Shreyas Kale, a Baker Botts law clerk, assisted in the preparation of this article.

Protecting Trade or Trade Secrets: How Intellectual Property Issues Impact Trade Dispute Between United States and China
Mark Speegle
Ongoing trade tensions between the United States and China have both dominated mainstream news headlines and thrust debates about intellectual property laws squarely into public focus. The recent developments involving tariffs on certain goods from China grew out of an investigation by the United States Trade Representative (“USTR”) into concern about “violations of intellectual property rights and other unfair technology transfers [that] potentially threaten United States firms by undermining their ability to compete fairly in the global market.” The USTR issued its full report on this investigation on March 22, 2018, which concluded that “a key part of China’s technology drive involves the acquisition of foreign technologies through acts, policies, and practices by the Chinese government that are unreasonable or discriminatory and burden or restrict U.S. commerce.” This article highlights the key intellectual property issues discussed in the USTR report.
To read the full article, click here.

Baker Botts Intellectual Property Lawyers Recognized
Baker Botts is pleased to announce three of its California-based Intellectual Property partners were recognized with recent awards.
Eliot Williams was selected by the Daily Journal for its 2018 list of the “Top Intellectual Property Lawyers” in California for a second consecutive year. He has appeared as counsel in more than 100 PTAB trials, making him one of the top 25 most-experienced PTAB litigators nationwide.” To read more, click here.
Hogene Choi has been named one of the 2018 Women of Influence by Silicon Valley Business Journal. The Women of Influence award is given to established business leaders who have strong records of innovation in their fields, outstanding performance in their businesses and a clear track record of meaningful community involvement. To read more, click here.
Sarah Guske has been named to National Law Journal’s list of Intellectual Property Trailblazers. Top lawyers recognized on the annual list have “achieved remarkable successes” and continue to “make their mark” in the areas of patent, copyright, trademark and trade secret law. To read more, click here.

Supreme Court Upholds Constitutionality of IPRs and Ends PTAB Practice of Instituting IPR Decisions on Fewer than All Challenged Claims
Steve Lendaris, Rachel E. Chaves
Today, the Supreme Court issued two opinions relating to Inter Partes Reviews (IPRs), namely, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712, 584 U.S. ___ (2018) and SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office, No. 16-969, 584 U.S. ___ (2018). In Oil States, the Court considered whether IPRs violate either Article III or the Seventh Amendment of the Constitution. The Court answered in the negative and upheld the constitutionality of IPRs. Justice Thomas authored the majority opinion holding that “inter partes review is a matter that Congress can properly assign to the PTO [and therefore] a jury is not necessary in these proceedings.” Slip. op. at 17. In SAS, the Court considered whether the Patent Office must decide patentability of all claims challenged by a petitioner in an IPR. The Court answered in the affirmative. Justice Gorsuch authored the majority opinion holding that the plain text of 35 U.S.C. § 318(a) includes a directive that is “both mandatory and comprehensive.” Slip. op. at 4.
To read the full article, click here.

USPTO Issues Request for Comments and New Guidance For Assessing Patent Eligibility Under § 101
Paul A. Ragusa, Michael V. O'Shaughnessy
On April 20th, the USPTO issued a request for comments on its newly announced guidance changing the procedure to be used by patent examiners when assessing Subject Matter Eligibility under 35 USC § 101. That guidance, issued yesterday, addresses whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity in view of the Federal Circuit ‘s decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). The comment period extends to August 20, 2018.
To read the full article click here.

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