Thought Leadership

Intellectual Property Report

Client Updates

Probing the Gap Filled by the Kessler Doctrine
Mark Johnson
A gap exists between the tandem of traditional doctrines of preclusion—namely, claim and issue preclusion. This gap is typically realized in circumstances involving prior litigation between a patent owner and a manufacturer that is then followed by subsequent litigation brought by that patent owner against a customer of the manufacturer. Although the same patent and product may be at issue, neither preclusive mechanism is available under the well-settled principles of each of claim preclusion and issue preclusion. Claim preclusion, or res judicata, bars prior claims that were either brought, or could have been brought, in an earlier lawsuit. While issue preclusion, or collateral estoppel, bars relitigating issues that were litigated to finality between the parties previously.
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Damages Period for Patented Trade Secrets
Bryan Parrish 
Nearly fifty years ago in Kewanee Oil, the Supreme Court held that federal patent law does not preempt state trade secret protections. The Supreme Court explained that “[t]rade secret law promotes the sharing of knowledge, and the efficient operation of industry; it permits the individual inventor to reap the rewards of his labor by contracting with a company large enough to develop and exploit it.” At the same time, the Supreme Court recognized that “[t]rade secret law provides far weaker protection in many respects than the patent law.” The Court therefore reasoned that inventors are likely to pursue patent protection for inventions that are novel, useful, and nonobvious. This decades-old precedent continues to raise new issues regarding the interplay of trade secret and patent protection that companies should be aware of as they protect their intellectual property.
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Third Quarter 2021 Federal Circuit Law
Michael Hawes
Since serving as a Federal Circuit clerk, Mr. Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant legal points - in order to assist clients seeking to identify recent law relevant to a particular problem.
To read the full article, click here.

Federal Circuit Confirms ANDA Notice Letter Are Not Acts of Infringement for Venue Purposes
Robert Maier, Joanne Bae*
In 1984, the "Drug Price Competition and Patent Term Restoration Act," more commonly known as the "Hatch-Waxman Act" after its sponsors, established the modern regime for resolving pharmaceutical patent infringement disputes between generic branded drug manufacturers in situations in which a generic maker seeks Food and Drug Administration (FDA) approval to market a drug that is bioequivalent to an approved branded drug.
To read the full article, click here.
*This article was previously published on November 19, 2021 in the New York Law Journal.
*Joanne Bae, a Baker Botts Law Clerk, assisted in the preparation of this article.

Cryptocurrency and the Future of Law Firm Payments
Ali Dhanani, Wes Edwards*
Roni Ghose, Global Head of Banks Research for Citigroup Inc., once said, "Money is entering a format war." But when Mr. Ghose stated this, he did not realize that money - the lifeblood of the global economy - has always been in a format war. From bartering, metals to coins and paper to credit cards, money has facilitated trade for millennia. There is now, however, a new "combatant" in the currency war: cryptocurrency.
To read the full article, click here.
*This article was previously published in October 2021 in The Houston Lawyer.
*Wes Edwards, a Baker Botts Summer Associate, assisted in the preparation of this article.

J.P. Morgan Healthcare Conference: Baker Botts & Salem Partners Private Reception
Baker Botts and Salem Partners will be hosting a private reception during the 40th Annual J.P. Morgan Healthcare Conference to be held at Jasper's Corner Tap and Kitchen on Monday, January 10th, 2022.
Jasper's Corner Tap and Kitchen is a convenient five-minute walk from The Westin St. Francis where the J.P. Morgan Healthcare Conference is held.
During the reception, we will enjoy drinks and light bites and watch the 2022 College Football Playoff National Championship with a number of our clients and friends in the Life Sciences Industry.
Questions: Contact Madison Feathers

November 2021 Intellectual Property Report Recap
In case you missed it, here is a recap video of our November 2021 Intellectual Property Report that looked at:
• Patents Ruled Unpatentable that were Described as “Conventional”
• Things To Know About "Restoring the America Invents Act"
• IP/Antitrust Policy Changes are Afoot in the Biden Administration’s DOJ
• The Case of Divisional Patent Applications in Pharma Sector
• Data Privacy Across State Lines
• BCLT's Expert Series Podcast: Judges Should Act Like Judges

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