Thought Leadership

Intellectual Property Report: June 2018

Client Updates

Securing Your IP Litigation Recoveries: Remedy by Judge or Jury?
Joe Urbinati* and Neil Sirota
The U.S. Court of Appeals for the Federal Circuit recently vacated a $77 million verdict against Intersil Corp. in a patent and trade secrets suit filed by Texas Advanced Optoelectronic Solutions. Texas Advanced Optoelectronic Sols., Inc. v. Renesas Elecs. Am., Inc., No. 2016-2121, 2018 WL 2011463 (Fed. Cir. May 1, 2018). In its reversal, the Federal Circuit explained that juries cannot award the misappropriator’s profits to a trade secret owner because such an award is barred by the Seventh Amendment of the Constitution. The remedies available for different types of intellectual property infringement vary widely in terms of both their procedural requirements as well as the substantive facts and circumstances under which they can be obtained. In light of this large vacated award, it is important to understand the nuanced requirements for IP infringement remedies, businesses involved in litigating these areas should carefully consider their litigation strategies in view of these nuances.
To read the full article, click here.
*Joe Urbinati, a Baker Botts law clerk, assisted in the preparation of this article.

Uncertainty of IPR Estoppel in District Courts Continues
Bailey Morgan Watkins
One of the early-recognized pitfalls of inter partes review (IPR) proceedings was the statutory estoppel of 35 U.S.C. § 315(e)(2) barring petitioners from challenging the validity of a patent in court “on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” In January, Judge Casper of the District of Massachusetts joined the District of Delaware in holding that this estoppel does not apply to grounds that a petitioner failed to raise in its petition. This decision adds to a growing district court split over the scope of IPR estoppel before district courts.
To read the full article, click here.

Chambers USA and Legal 500 2018 Rankings
"They're kind of my standard-bearer for how I judge all the other firms I work with. They set the benchmark for firm performance. They're proactive and thorough in handling matters."
-Chambers USA 2018, Baker Botts Intellectual Property

Thanks to the feedback of our clients and colleagues, Baker Botts has again received high IP rankings in the recently released Chambers USA 2018 and Legal 500 US 2018. In Chambers, we received strong rankings Nationally and in California, New York, and Texas. In Legal 500 we were ranked in a host of IP categories, including ITC Litigation, Patent Litigation, Patent Prosecution & Post Grant Proceedings, Licensing, and Tech Transactions. Three of our IP lawyers received recognition as “Next Generation Lawyers” – Hogene Choi, Christa Sanford, and Katharine Burke.

FAQ: The Best of GDPR Questions
Cynthia Cole and Neil Coulson
In preparation for the upcoming deadline of the EU's General Data Protectioni Regulation (GDPR), Baker Botts' special counsel Cynthia J. Cole and partner Neil Coulson, in collaboration with Wolters Kluwer, presented a webinar on GDPR for US companies on April 10, 2018, entitled "A Global Paradigm Shift? General Data Protection Regulation."
To read the full article, click here.
*This article first appeared on Wolters Kluwer Strategic Perspectives on May 17, 2018.

Supreme Court Upholds Constitutionality Of 'Patent Death Squads'
Robert Maier
In 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act, which brought the most sweeping change to American patent laws since the 1952 Patent Act. One of the most significant changes came in the form of a new regime for the administrative review-and, in many cases, invalidation-of U.S. patents. That regime has now been tested through, and survived, constitutional scrutiny at the Supreme Court.
To read the full article, click here.
*This article first appeared in The New York Law Journal on May 23, 2018.

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