Thought Leadership

Intellectual Property Report: August 2018

Client Updates

Flexible and Fact-Dependent: A Review of Justice Kennedy’s Intellectual Property Opinions
Eileen Hyde
With the recent announcement of Justice Kennedy’s retirement, we look back on some of the intellectual property decisions authored by Justice Kennedy and his effect on shaping intellectual property law. Justice Kennedy authored opinions for what have become foundational patent cases, including setting forth the obviousness inquiry and guidelines for determining eligibility of business method patents. Many of the intellectual property decisions written by Justice Kennedy reflect a desire for broad, flexible inquiries rather than rigid, categorical tests. Justice Kennedy often advocated for fact-dependent analysis that protected and furthered the goals of intellectual property protection.
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At Long Last: Supreme Court Agrees to Hear AIA Secret Sales Case
Sammy Kadivar and Lori Ding*
In 2011, Congress adopted the Leahy-Smith America Invents Act (AIA), marking a significant shift in the country’s patent laws. Ever since its introduction in Congress, the AIA has left unanswered the question of whether “secret sales” — sales where the technical details of the invention are kept confidential — trigger the on-sale bar to patentability. The on-sale bar prevents an invention from being patented if it was on sale for more than one year before the filing date. Recently, the Supreme Court granted a petition for certiorari for Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. to clarify this aspect of the on-sale bar.
*Lori Ding, a Baker Botts summer associate, assisted in the preparation of this article.
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The IP Practitioner's Guide to Working with Startups
Natalie Alfaro Gonzales and Steve Maule
Jeff Bezos, founder of Amazon, has described his organization’s position on innovation as “stubborn on vision . . . flexible on details.” It seems intuitive that a successful strategy for startups includes flexible business solutions and innovation, but it is just as important for legal practitioners counseling startups to be “flexible on details.” In dealing with startups, the rapid pace of development and frequent changes in market conditions typically demand more flexibility than when dealing with a more mature company. Intellectual property (IP) practitioners counseling startups should be prepared to adapt to these frequent changes and deal with IP issues beyond prosecution of intellectual property and litigation. To best serve startups, IP practitioners should be stubborn in their pursuit of solutions for startups, yet flexible and holistic in assessing the specific legal strategies and solutions suitable for each company. That is, an IP practitioner should be prepared to leverage all IP types—patents, copyrights, trade and service marks, and trade secrets—when advising startups. Further, an IP practitioner should shift his or her focus to meet the demands of the startup’s market, product, financial position, and legal circumstances. The key to dealing with startups is recognizing there is never a one-size-fits-all solution.
*This article first appeared in LANDSLIDE, Volume 10, Number 6; a publication of the ABA section of Intellectual Property law in July 2018.
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Federal Circuit Rejects USPTO's Request for Attorneys' Fees
Ali Dhanani
On July 27th, the Federal Circuit issued an opinion concerning the award of fees in NantKwest, Inc. v. Iancu, No. 2016-1794, rejecting the United States Patent and Trademark Office’s argument seeking fees for the agency’s legal bills on appeal. In a seven to four en banc decision, the Federal Circuit sided with NantKwest, Inc. in finding that the USPTO’s policy on seeking such fees, despite whether the USPTO wins or loses, does not find support by any specific directive by Congress.
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