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Intellectual Property Report

Client Updates

Federal Circuit to Weigh In on Own Jurisdiction and PTAB’s Discretion to Terminate IPRs
David Dyer
The Federal Circuit will soon decide two cases that touch both on the Circuit’s own jurisdiction to review certain decisions by the Patent Trial and Appeal Board (PTAB or the Board) and on the PTAB’s discretion to terminate post-grant proceedings, including inter partes reviews, after institution. The two cases—SK Hynix v. Netlist and Intuitive Surgical v. Ethicon —present similar, yet distinct, facts that provide the Federal Circuit with the opportunity to provide guidance that will affect both PTAB procedures and strategy decisions by parties to proceedings before the Board.
To read the full article, click here.

IP and Government Contracting: Taking a New Look at Technical Data Rights
Samuel Kassa
For any entity involved in government contracting, protecting intellectual property (IP) rights in technical data delivered to the government is an often overlooked but mission critical factor to business operations. The allocation of data rights between contractors and the government is federally regulated under the Defense Federal Acquisition Regulation Supplement (DFARS) parts 227 and 252, which set forth standard protections and license terms. In addition to the standard protections under the DFARS, contractors may now strategically take advantage of additional protections that were approved in the Federal Circuit’s recent decision in Boeing Company v. Secretary of Air Force, 983 F.3d 1321 (Fed. Cir. 2020). However, it may become difficult for contractors to obtain those additional protections if certain proposed changes to the DFARS take effect. This article analyzes the facts and key takeaways of the Boeing decision, and how the appellate court’s analysis is likely to impact government contractors as they negotiate IP rights protection with the DoD going forward.
To read the full article, click here.

How Nonfungible Tokens Could Disrupt The Legal Landscape
Ali Dhanani, Chris Sabbagh
When a virtual car sells for more money than most real, material cars, is it a sign of a bubble or a lucrative new industry?
In late 2020, a digital car sold for approximately $77,000. And that was just the beginning; The digital collectible market has exploded in recent months, with several pieces selling for more than $1 million.
The technology that enables these collectibles is called a nonfungible token. NFTs are similar to traditional cryptocurrency tokens like Bitcoin and Ether. They are digital assets, they exist on a blockchain, they hold value and they can be purchased.
To read the full article, click here.
*This article was previously published in Law360 on March 22, 2021

The Impact of the Biden Administration on IP Law and Policy
Rob Maier
With each new presidential administration, innovators and intellectual property practitioners alike begin their watch for signs of changing policy tides. With little over three months into Joe Biden's presidency, it is far too early to call, particularly as efforts to combat the COVID-19 pandemic and accelerate the vaccine rollout remain center stage. And over his almost 50-year political career, President Biden has rarely articulated strong IP policy positions. That said, certain indicators can offer insight into the potential policy avenues that the Biden administration may pursue over the coming years.
To read the full article, click here.
*This article was previously published in the New York Law Journal on March 24, 2021.
*Pallavi Mathur, a Baker Botts Law Clerk, assisted in the preparation of this article.

How to Provide Value During a Client Call: Nine Quick Tips to Help You Shine
Megan LaDriere
Whether you are a first-year attorney or you have been practicing for years, we all benefit from being reminded of the most fundamental aspect of being an attorney—serving our clients. How can we make our client’s lives easier, how can we save them time, and how can we add value to them? Often both law firm attorneys and in-house counsel clients alike dread the recurring “update” call discussing the matter. In litigation, this may involve a regular check-in call to keep the client informed, and to discuss important case strategies based on the client’s preferences and knowledge. Although seemingly simple, these regularly-scheduled calls are a perfect opportunity to make your client’s job easier on a regular basis, with a bonus opportunity for you to shine as outside counsel. An opportunity to add value is available to you no matter what your involvement in the matter—all it takes is a little extra time to mindfully create good call habits. Below are nine key tips to help you and your team shine while adding value to your client calls no matter what your role.
To read the full article, click here.
*This article was previously published by the Dallas Association of Young Lawyers on February 12, 2021.

GSA Adopting Stricter Cybersecurity Requirements - What it Means for Civilian Contracts
Matthew Baker, Anne Carpenter, Nick Palmieri
In its most recent government-wide acquisition contracts (“GWACs”), the General Services Administration (“GSA”) is using more stringent cybersecurity language, marking a shift towards increased cybersecurity requirements in both DOD and civilian agency government contracts.
To read the full article, click here.

Failure to Address "Red Flags" Results in U.S. Manufacturer Settling with OFAC for Apparent U.S. Sanctions Violations
Jason Wilcox
On March 16, the U.S. Department of the Treasury’s Office of Foreign Assets Control (“OFAC”) announced the entry into a $216,464 settlement with UniControl, Inc. (“UniControl”), a process controls and instrumentation manufacturer headquartered in Cleveland, Ohio, for 21 apparent violations of the Iranian Transactions and Sanctions Regulations (“ITSR”), mostly resulting from UniControl’s failure to address several warning signs that shipments may be intended specifically for supply, transshipment, or reexport to Iran.
To read the full article, click here.

Lawmakers Sharpen Focus on Nation’s Cybersecurity Laws and Regulations
Matthew Baker, Anne Carpenter, Jesse Sutz
Recognizing the growing threat of cyberattacks to the nation’s critical infrastructure, the Biden Administration announced this week that President Biden is planning to take executive action to improve the nation’s cyber defenses. Further, Congress began its first session of the year by holding oversight hearings on the SolarWinds cyberattack—focusing, in part, on potential Congressional action to improve the nation’s cybersecurity posture.
To read the full article, click here.

Incorrect Export Licensing Determinations Result in Wireless Telecommunications Equipment Manufacturer Settling with BIS for Apparent Export Control Violations
Jason Wilcox
On March 19, the U.S. Department of Commerce’s Bureau of Industry and Security (“BIS”) announced the entry into a $122,000 settlement with Comtech XiCom Technology, Inc. (“Comtech XiCom”), a leading supplier of high power amplifiers for satellite communications based in Santa Clara, CA, for three apparent violations of the Export Administration Regulations (“EAR”), caused by Comtech XiCom’s mistaken belief that certain exports could be made without BIS authorization.
To read the full article, click here.

March 2021 Intellectual Property Report Recap
In case you missed it, here is a recap video of our March 2021 Intellectual Property Report that looked at:
• Beyond The Stimulus Check: How The Latest COVID-19 Stimulus Relief Bill May Affect Your Intellectual Property
• The Post-Fintiv World: The Interplay Between PTAB Discretionary Factors to Deny Institution and Parallel Litigation
• GDPR Enforcement Was Up in 2020. What Does That Mean for You In 2021?
• Digital Payment Service Provider Settles with OFAC for Apparent U.S. Sanctions Violations Associated with Digital Currency Transactions
• Fourth Circuit Opens the Door for Private Litigants to Force Divestiture of Acquired Businesses Years Down the Road

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