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Intellectual Property Report

Client Updates

Patent Owners and Litigators Beware: Patent Transfer Agreements May Lead to Involuntary Joinder of the Original Patent Owner
Megan LaDriere, Jacob McDonald
Before Lone Star Silicon Innovations LLC v. Nanya Technology Corporation, defendants often challenged a plaintiff’s failure to receive all substantial rights in a patent transfer agreement with a Rule 12(b)(1) motion to dismiss for lack of standing. But Lone Star reminds litigants that, under both Supreme Court and Federal Circuit precedent, failure to obtain all substantial rights in the asserted patents does not necessarily destroy the plaintiff’s constitutional standing and its ability to bring a lawsuit. Rather, the rights in a patent influence a plaintiff’s so-called “statutory standing,” and whether it has sufficiently pled facts that it is a proper “patentee” under 35 U.S.C. § 281. When a plaintiff fails this inquiry, courts must determine whether the plaintiff can remedy this error by joining the original patent owner to the suit, even involuntarily, under Rule 19. Lone Star’s review of Article III standing and joinder may affect the necessary parties in a patent infringement suit, change defendants’ case strategies, and require companies to reexamine the language in their patent transfer agreements.
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The Hottest Food and Beverage IP Topics of 2019
Jennifer Tempesta, Julie Albert
2019 was an exciting year for food and beverage intellectual property: a high-profile conflict brewing between beer titans over ingredients, legislation and U.S. Patent and Trademark Office guidance impacting the ever-increasing interest in cannabis or CBD-infused consumables, crowding on the trademark register leading to proof-of-use audits, dismissal of food and beverage packaging trade secret claims and countless new innovative products.
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*This article was previously published in Law360 on January 1, 2020.

Baker Botts & Salem Partners Private Reception at J.P Morgan Healthcare Conference
Baker Botts & Salem Partners will be hosting a private reception on Monday January 13, 2020 during the J.P Morgan Healthcare Conference. The reception will be at Jasper's Corner Tap and Kitchen, which is a convenient five minute walk away from The Westin St. Francis where the J.P Morgan Healthcare Conference is held.
Click here to learn more!

Supreme Court Affirms That USPTO Is Not Entitled to Attorneys’ Fees in Actions Brought Under Patent Act Section 145
Ali Dhanani, Fred Carbone
On December 11, 2019 in Peter v. NantKwest, Inc. (No. 18-801), the Supreme Court ruled unanimously that the United States Patent and Trademark Office (PTO) cannot recover attorney’s fees based on an applicant’s challenge to an adverse decision by the PTO under 35 U.S.C. § 145. In particular, the Court confirmed that the “American Rule”—the bedrock principle that “[e]ach litigant pays his own attorney’s fees, win or lose, unless a statute or contract provides otherwise,” Hardt v. Reliance Standard Life Ins. Co., 560 U.S. 242, 253—applies to civil actions brought against the PTO under § 145, and the statutory language of § 145 does not overcome the American Rule.
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December 2019 Intellectual Property Report Recap
In case you missed it, here is a recap video of our December 2019 Intellectual Property Report that looked at:
• Patent Eligibility of Manufacturing Methods
• The Copyright Alternative in Small-Claims Enforcement Act of 2019
• The Decline of Declaratory Judgement Actions in Patent Disputes
• The DOJ's Newly-Formed Procurement Collusion Strike Force

Commerce Issues Proposed Regulations to Conduct National Security Reviews of Transactions Involving the Information and Communications Technology and Services Supply Chain
Paul T. Luther, Matthew T. West, Jason Wilcox, Joyce Banks
On November 27, 2019, the U.S. Department of Commerce (“Commerce”) issued proposed regulations implementing a Presidential mandate from earlier this year to review and, where necessary for national security, to restrict the import, dealing in, or use of certain foreign-made information and communications hardware, software, and technology, or related services. The proposed regulations will impact U.S. businesses that integrate and utilize foreign developed information and communications products and technology, particularly from countries that could be seen as adversarial to the U.S.. In particular, the proposed regulations focus on identifying and addressing any transactions involving the U.S. information and communications technology and services (“ICTS”) supply chain and foreign persons that pose an undue risk to critical infrastructure or the digital economy in the United States, or an unacceptable risk to U.S. national security or the safety of U.S. persons.
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