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Intellectual Property Report

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CACF’s Opinion in CardioNet v. InfoBionic Highlights the Importance of Patent Drafting in Defeating Potential Section 101 Challenges
Amy Song
Since the Supreme Court’s decision in Alice v. CLS Bank, the Federal Circuit has issued a number of opinions addressing what is patent-eligible subject matter. In an opinion issued in April 2019, the Federal Circuit relied heavily on the written description of the patent-at-issue, and found the asserted claims to be directed to patent-eligible subject matter in the form of an improved cardiac monitoring device. This article addresses the potential importance of intrinsic evidence in defeating potential Section 101 challenges.
To read the full article, click here.

Is Your Company's Patent Assignment Agreement Too Broad?
Kim Owen
In the recently decided Whitewater West Industries, Ltd. v. Alleshouse case, the Federal Circuit invalidated a company’s employment agreement that required an employee residing in California to assign his patent rights for a post-employment invention to the company. While the district court found the company’s employment agreement to be enforceable, the Federal Circuit disagreed, holding that the assignment provision in the employment agreement had a broad restraining effect that rendered the agreement invalid under the California Business and Professions Code.
To read the full article, click here.

Baker Botts’ IP Department Secures Highest Win Rate Nationally in Patent Challenges Over Last Five Years
Baker Botts was recognized as the top “Firm That Won the Most Often” in U.S. District Court patent challenges over the last five years. Docket Navigator reported in its “Year in Review” issue that Baker Botts had a win rate from 2016 to 2020 of 97.6%, top among all firms.
In addition to securing the highest win rate for U.S. District Court patent challenges in the last five years (2016-2020), Baker Botts was among the top firms listed for:
• Top patent challenger firms in U.S. district court cases;
• Top firms by PTAB institution success rate; and
• Top firms for PTAB petitioners.
To learn more, click here.

The Patent Litigation Comeback of 2020
Rob Maier
Despite the recession—or partly as a result of it—2020 was also a year of growth for patent litigation in the United States. In this edition of his Patent and Trademark Law column, Rob Maier provides a look back at patent litigation filing statistics in recent years across district courts in the United States, with an eye towards current trends that in all likelihood will continue deep into 2021.
To read the full article, click here.
*This article was previously published in the New York Law Journal on January 26, 2021.

Green, Yellow, Or Red: What Color Is Your Patent Examiner and Why Should You Care?
Dr. Michael Sartori, Matt Welch
Examiners at the U.S. Patent and Trademark Office (USPTO) can be categorized into three different “types,” namely, green, yellow and red Examiners. Knowing the type of patent Examiner assigned to a particular U.S. patent application can help in strategizing on prosecution tactics, crafting responses, and anticipating costs and timing needed to obtain a U.S. patent.
To read the full article, click here.
*This article was previously published by IPWatchdog on January 21, 2021.

January 2021 Intellectual Property Report Recap
In case you missed it, here is a recap video of our January 2021 Intellectual Property Report that looked at:
• Is Surfing the Web a Crime? Supreme Court to Address the Breadth of the Computer Fraud and Abuse Act
• COVID-19: USPTO Resources for IP Protection and Licensing
• The Top IP Topics to Watch in 2021
• Animal-Based Medical Diagnostics: A Regulatory Problem

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