Thought Leadership

Intellectual Property Report: March 2018

Client Updates

Core Wireless: Specifying a Solution as a Solution to Post-Alice Uncertainty
Jake Gallau
The requirement that the invention must be directed to patentable subject matter has become a significant hurdle to obtaining patents in the United States. Patentable subject matter includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” However, claims which fall into the categories of laws of nature, natural phenomena, or abstract ideas are excluded from patent eligibility if they do not amount to “significantly more” than the excluded category. For several decades, it seemed like subject matter eligibility was well understood; there were only four recognized cases, decided between 1979 and 1989, which bore on a modern determination of subject matter eligibility. However, in the last several years subject matter eligibility has become a topic of intense focus. Several Federal Circuit and Supreme Court decisions have reshaped patent practitioners’ understanding of what it means to be “patentable subject matter.” The latest, Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., may prove to be one of the most informative.

To read the full article, click here.

Derivation Explained: An Introduction to the PTAB’s Most Unpopular Proceeding
Bethany R. Ford
This month marks five years since the U.S. Patent and Trademark Office (the “USPTO”) began examining patent applications under the America Invents Act (“AIA”) first-inventor-to-file system, rather than the predecessor first-to-invent system it replaced. Although this shift in legal systems more closely aligned the USPTO with its global counterparts, the U.S. system still differs in one very important way: the applicant of a patent application still must be an inventor. To enforce this requirement, the AIA created a new administrative proceeding called a “derivation proceeding” to “ensure that the first person to file the application is actually a true inventor.” Despite the fact that this dispute proceeding has been available for five years, it is by far the most underutilized of the AIA proceedings, and therefore also the most esoteric of the AIA proceedings. This article provides an overview of derivation and derivation proceedings and concludes with practice points to assist practitioners, patent applicants, and inventors with these otherwise inscrutable AIA concepts.

To read the full article, click here.

Law360 Survey Reveals Baker Botts Dominated at the Federal Circuit in 2017 for Patent Victories
Baker Botts is one of the few law firms to secure the most IP victories in the Federal Circuit in 2017. Law360’s survey report “The Firms that Dominated At The Federal Circuit In 2017” reveals Baker Botts is among the top firms that handled “some of the hottest issues” in IP, obtaining eight wins and an 80% winning percentage in cases before the Federal Circuit in 2017.

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Lessons Learned From ‘Waymo v. Uber’ and Other Trade Secret Disputes
Chris Ponder, Harper Batts
This two-part article reviews ten lessons that companies and attorneys can take away from the Uber dispute and examines how to best protect trade secrets.

For part one, click here and for part two, click here.
*These articles first appeared in The Recorder in February 2018

Baker Botts Intellectual Property Lawyers Recognized in World Trademark Review 1000
Baker Botts has been recognized in the 2018 edition of World Trademark Review 1000 – The World’s Leading Trademark Professionals.
Baker Botts maintained its silver ranking in Texas with WTR 1000 stating that “Baker Botts is home to one of the finest trademark practices in Texas” serving “a glittering roster of A-list clients, ranging from local enterprises to global powerhouses.” The firm also maintained its ranking in New York and is said to have “impressive responsiveness, expertise and experience.”

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Anticipation or Obviousness? Combining Distinct Teachings in a Single Prior Art Reference
Puneet Kohli
In Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052 (Fed. Cir. 2017), the Federal Circuit considered the issue of whether a prior art reference may anticipate a claim under § 102 if the claimed elements are found in several distinct teachings in that reference. 878 F.3d 1052 (Fed. Cir. 2017). In that case, the court reiterated that anticipation cannot be proven merely by multiple, distinct teachings in a single prior art document that a skilled artisan might somehow combine to achieve the claimed invention. Id. at 1069. Instead, a reference may anticipate only if a skilled artisan, reading the reference, would at once envisage the claimed arrangement. Id. at 1068. The Federal Circuit also clarified that anticipation is a question of fact, which is reviewed for substantial evidence, even when it is based on a prior art patent. Id. at 1067. This case reminds those challenging the validity of a patent that they should consider both anticipation and obviousness arguments even where the former is available.

To read the full article, click here.

Learn more about our Intellectual Property Practice.

Baker Botts is an international law firm whose lawyers practice throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit