Thought Leadership

Intellectual Property Report: February 2018

Client Updates

Recent Federal Circuit Decisions on Analyzing "Secondary" Considerations in Obviousness Determinations
Nicholas Choi*, Jennifer Tempesta
Although formally a part of the obviousness inquiry for decades, secondary considerations (also known as “objective indicia”) were in practice traditionally not afforded much attention by practitioners and courts. In recent years, however, the Federal Circuit has instructed not only district courts but also the International Trade Commission (“ITC”) and the Patent Trial and Appeal Board (“PTAB”) to consider secondary considerations, where present, in making obviousness determinations. A September 2017 split decision from the Federal Circuit, however, may have put a halt to this trend. In Intercontinental Great Brands LLC v. Kellogg North America Co., Judge Taranto, writing for the majority, explained that secondary considerations need not be considered before a “prima facie case of obviousness” is reached, but that they do need to be considered before an “ultimate conclusion of obviousness” is reached. In a nonprecedential decision three months later, Judge Taranto disagreed with the Court of Federal Claims’s dismissal of secondary considerations before a strong obviousness showing, and emphasized that “[secondary considerations] must be considered in every case where present.” This article considers these two recent Federal Circuit decisions, particularly in view of the recent trend at the Federal Circuit with respect to secondary considerations.

To read the full article,click here.
*Nicholas Choi, a Baker Botts law clerk, assisted in the preparation of this article.

The TC Heartland Reshuffling of Patent Cases Continues
Robert Maier
For decades patent holders have enjoyed the ability to forum shop—in most cases, effectively, to sue infringers in any district court nationwide. That dynamic resulted in the concentration of patent litigation in a few courts that were widely considered to be plaintiff- and patentee-friendly, and no doubt contributed to the rise in patent litigation through the 1990s and 2000s. All that has now changed. The Supreme Court's May 2017 decision in TC Heartland v. Kraft Foods Group Brand, 137 S. Ct. 1514 (2017), reshaped the patent litigation landscape in the United States - now more evenly dispersing patent cases across courts nationwide.

To read the full article, click here.
*This article first appeared in New York Law Journal, January 24, 2018.

Part Two: Practical Ways to Comply with GDPR in Time for May 2018 Implementation
Cynthia J. Cole, Neil Coulson
This is the second of a two-part series of articles about Europe’s new General Data Protection Regulation (GDPR). Part 1, published on December 18, 2017, examines why GDPR will impact domestic businesses. In Part 2, Cynthia Cole and Neil Coulson discuss practical compliance steps that U.S. companies can take to ensure that they are ready for the implementation.

To read the full article, click here.
*This article first appeared in Wolters Kluwer Securities Regulation Daily, January 24, 2018.

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