Thought Leadership

Intellectual Property Report

Client Updates

Getting IPR Instituted: Proper Institution Grounds and the POSITA’s “General Knowledge”
Jacob McDonald
In Philips v. Google, the Federal Circuit held that (1) the Patent Trial and Appeal Board (PTAB) cannot institute inter partes review (IPR) on grounds not raised in the IPR petition, and (2) the PTAB can rely on the “general knowledge” of a person of skill in the art (POSITA) to supply a missing claim element. These two holdings may impact parties’ approaches in IPR proceedings. Petitioners should ensure that the petition clearly states each ground for institution and consider how to best establish the “general knowledge” of a POSITA in the relevant field. Patent owners should challenge institution on any grounds not raised in the petition and consider how to rebut a petitioner’s claims about the POSITA’s level of “general knowledge.”
To read the full article, click here.

Strategies for Building Successful IP Portfolios for Artificial Intelligence Inventions
Paul Ragusa
Artificial Intelligence presents issues that require innovators to reconsider how to appropriately foster, protect, and enforce developments by their personnel. Patents can provide significant protection, but also present challenges in terms of patentability, inventorship, and novelty. Copyright can be used to protect software related innovations, particularly where a patent would not suffice or face significant obstacles, but can present authorship issues. Finally, trade secrets may provide protection where copyrights and patents cannot but can also suffer from drawbacks such as costly infrastructure investment to provide adequate protection. Once protected, an AI asset must then be leveraged, either internally or externally, to generate further value and justify the expense of its protection.
To read the full article, click here.
*This article was previously published in on February 13, 2020.

SXSW 2020 - Mobility Innovation: Eliminating Barriers to Growth
Baker Botts is excited to announce our second annual SXSW event to be held on Monday March 16, 2020. Join us to hear from an impressive group of panelists and emerging companies on the forefront of advanced mobility technologies.
The panels will feature executives from leading corporate venture capital firms and autonomous vehicle safety experts who are investing time and resources to propel these technologies forward.
Click here to RSVP for our event. A detailed agenda of our program is noted below.

NASA: Creating IP to Infinity and Beyond
Tammy Pennington Rhodes
This year NASA, along with the entire country, celebrates the 50th anniversary of the lunar landing and looks forward to the projected return to the moon. But, beyond space, what hasn’t NASA explored? Innovations driven by NASA research touch every aspect of our lives. From mattresses to heart surgery, the impact of NASA technology is substantial. One of the individuals charged with patenting and licensing these groundbreaking technologies for the last 52 years is NASA intellectual property (IP) counsel Ed Fein. I had the pleasure of conversing with Ed recently about IP at NASA.
To read the full article, click here.
*This article was previously published in Landslide by the American Bar Association in the January/February 2020 issue.

Organized IP Crime
Paul J Reilly
Your client, which has a significant online retail presence, has a small department that keeps track of customer reviews for its products on all major online third-party platforms, e.g., Amazon, eBay, etc. Recently, this department reported to the chief marketing officer that customer reviews for one of the client’s highest-margin products, which previously averaged across all platforms at 4.5 stars out of 5, recently dropped to 4.1 stars. Other high-margin products are starting to decline in ratings as well.
To read the full article, click here.
*This article was previously published in Landslide by the American Bar Association in the January/February 2020 issue.

Another Round on the CCPA Carousel
Matthew R. Baker, Cynthia J. Cole
On the heels of a January 1, 2020 effective date and in response to hundreds of public comments, the California Office of the Attorney General ("Attorney General") released updated Proposed Regulations on Friday, February 7, 2020 ("Modified Proposed Regulations"). With a short public comment period ending February 25, 2020, these Modified Proposed Regulations indicate strongly the direction of the final regulations, which are expected in July 2020.
To read the full article, click here. For additional information concerning "HIPAA or CCPA: Mistakes in Patient Privacy will Cost You", click here.

China-U.S. Economic and Trade Agreement: Phase One
Matthew West, Carie Cartwright
On January 15, 2020, the United States and China signed an enforceable agreement on a Phase One trade deal that requires structural reforms and other changes to China’s economic and trade regime in the areas of intellectual property, technology transfer, agriculture, financial services, and currency and foreign exchange. The Phase One agreement also includes a commitment by China that it will make substantial additional purchases of U.S. goods and services in the coming years. Importantly, the agreement establishes a dispute resolution system that ensures prompt and effective implementation and enforcement. The United States has agreed to modify its Section 301 tariff actions in a significant way.
To read the full article, click here.

What to Do with a Descriptive Mark? & The PTO
Paul J Reilly, Smitha Mathews
Over one hundred and thirty years have elapsed since the seminal decision in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888). By taking up the matter of the United States Patent and Trademark Office et al. v. BV, Case Number 19-46 (“”), the Supreme Court is now confronted with whether to apply this age-old wisdom to resolve a comparable issue in the online marketplace, i.e., the registrability and protectability of BOOKING.COM. Specifically, addressing an apparent Circuit split, the Supreme Court must determine whether the combination of a generic term with a generic top-level domain (“TLD”), such as “.com,” may result in a protectable trademark. The answer may well be – “It depends.”
To read the full article, click here.
*Prepared for the State Bar of Texas’ Intellectual Property Law Workshop on February 5, 2020.

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