Thought Leadership

Intellectual Property Report: January 2019

Client Updates

What Did the Inventor “Actually Invent”: Claim Construction under Cave Consulting v. OptumInsight
Tina J. Yang
In the seminal en banc decision Phillips v. AWH, the Federal Circuit heralded the "bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." However, when interpreting the meaning of particular claim terms, the Federal Circuit in Phillips explained that “the specification necessarily informs the proper construction of the claims.” For example, the Federal Circuit has cautioned that “the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor.”
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2018 A Year in Review: Lessons in Data Protection and Cybersecurity in M&A
Cynthia J. Cole, Jim Marshall, Sarah Dodson
Data privacy, protection, security policies and procedures have moved squarely into the governance spotlight. Boards of directors and senior management are increasingly focused on data privacy, as are customers, employees and shareholders. And the frequency of high-profile data security incidents emphasizes the necessity of implementing data privacy and security policies and procedures in connection with both the M&A process and the satisfaction of compliance and disclosure obligations.
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Intellectual Property and Smart Tattoos: Marking Your Ink Yours
Neil Sirota
In January 2016, L’Oreal made headlines with the debut of “My UV Patch,” a thin skin sensor designed to monitor UV exposure. L’Oreal partnered with a leading stretchable electronics company, MC10, Inc., to develop attachable electronic circuitry and launch a new wave of wearable devices. The debut is an example of the proliferation of bio-wearables coined “smart tattoos,” which refer to devices that effectively place biometric sensors and electronics directly onto the skin. More recently, Harvard and MIT researchers created biosensitive ink that can be drawn on human skin to monitor a person’s blood sugar levels. These breakthroughs represent the next leap in connecting the human body to the technological world, reminiscent of the leap with smartphones ten years ago.
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*Han Doh, a Baker Botts law clerk, assisted in the preparation of this article.

INSIGHT: Competitor Suing You Over IP? Settle in for the Long Haul
Sarah Guske, Wayne Stacy
Techniques for handling patent trolls dominate patent-law literature. But what happens when the patent litigation is with a competitor?
Techniques for dealing with trolls are ill-suited for competitor lawsuits.
Adding to that difficulty, management misconceptions about competitor-based patent litigation can put in-house counsel in a difficult spot. The job of expectation setting—and, in many cases, reminding management of those initial expectations—often falls to in-house attorneys.
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*This article first appeared in Bloomberg Law Legal News on December 14, 2018.

USPTO Issues Revised Guidance on § 101 & New Guidance on § 112
Paul Ragusa
Today, the United States Patent and Trademark Office(“USPTO”) announced revised guidance for subject matter eligibility under 35 U.S.C. § 101 (“101 Guidance”) and new guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (“112 Guidance”). The 101 Guidance and 112 Guidance will take effect on January 7, 2019. According to USPTO Director Andrei Iancu, the guidance seeks to “improve the clarity, consistency, and predictability of actions across the USPTO.”
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*Jordan Fernandes, a Baker Botts law clerk, assisted in the preparation of this article.

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