Thought Leadership

Intellectual Property Report: May 2019

Client Updates

Taking Advantage of the New USPTO Guidance Regarding Patent Eligibility
Hogene Choi, Sean Lee
As the gatekeeper of patentability, the United States Patent and Trademark Office (“USPTO”) has issued guidelines in conjunction with various court decisions in an attempt to provide patent examiners and applicants with clarity regarding the test for patent subject matter eligibility under 35 U.S.C. § 101. The USPTO admitted that this task has been challenging: “[p]roperly applying the Alice/Mayo test in a consistent manner has proven to be difficult, and has caused uncertainty in this area of the law. Among other things, it has become difficult in some cases for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent-eligible.” In the latest attempt to simplify the § 101 analysis, the USPTO recently published the 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”) with the goal of increasing clarity, predictability, and consistency in patent examiners’ application of the Alice/Mayo test —particularly with respect to claims determined to be directed to the judicial exception of abstract ideas.
To read more, click here.

Waiver and Forfeiture of Venue Challenges in Patent Lawsuits
Scott Baker
The Supreme Court stated in TC Heartland, LLC v. Kraft Foods Group Brands, LLC that venue in patent infringement cases is governed solely by 28 U.S.C. § 1400, as opposed to the general venue provisions. Subsequently, the Federal Circuit, in In re Micron Technology, held that TC Heartland represented a change of law, and that a defendant does not waive its defense of improper venue simply by having failed to raise the defense pre-TC Heartland. However, some courts, such as the Eastern District of New York, disagreed, finding that TC Heartland merely reaffirmed the Supreme Court’s decision in Fourco Glass Co. v. Transmirra Products Corp. In its November 2018 opinion in In re Oath Holdings, the Federal Circuit reiterated that its Micron decision TC Heartland represented a change in law regarding questions of venue in patent infringement cases, and clarified that Federal Circuit law (including its Micron decision) is controlling on issues of venue, waiver, and forfeiture in patent specific cases
To read more, click here.

Baker Botts Intellectual Property Lawyers Recognized
The Daily Journal recognized three Baker Botts Partners as 2019 Top Intellectual Property Lawyers in California. Palo Alto-based Partners, Hopkins Guy and Eliot Williams, and San Francisco-based Partner Sarah Guske, were all included in this year’s ranking. For Eliot Williams, this is his third consecutive year to be recognized.

Open-Source Software Raises Unique Antitrust Questions
Michael Perry, Paul Ragusa, Jordan Fernandes
In 2018, IBM Corp. agreed to acquire Red Hat Inc., a leader in developing open-source software and providing related services. The U.S. Department of Justice has recently issued so-called second requests, initiating a more in-depth review of the transaction, highlighting potential antitrust issues that may face participants in OSS platforms.
To read more, click here.
*This article was previously published in Law360 on March 26, 2019.

The Rise of the Big Data Trolls: Will Opportunism Lead to a Sharp Increase in Big Data and IoT Litigation?
Rob Maier
Since the early 2000s, patent trolls—opportunists who obtained questionable patents and asserted those patents against large operating companies to extract nuisance value settlements, leveraging the high cost of patent litigation defense—have been a blight on the patent system in the United States. So impactful were they that Congress mobilized and President Obama enacted the America Invents Act in 2011, which, in part, was designed to curtail this kind of advantage taking. That statute, along with action by the U.S. Supreme Court, have been widely heralded as effective antidotes to the patent troll problem. Still, opportunists abound—as does the money that funds them—and may be leading to a shift from patent troll activity to troll-like activity in other, analogous types of high-tech litigation in the realms of privacy and cybersecurity.
To read more, click here.
*This article was previously published in the New York Law Journal on March 26, 2019.

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