Gibbons Law Alert

Gibbons Law Alert

Author: Thomas J. Bean

Federal Circuit Advisory Council Gives Nod to Limited Claims and Prior Art in Patent Suits

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Posted in Patent

On July 23, 2013

IP practitioners on both sides of the “v.” should take heed that the Federal Circuit Advisory Council (“the CAFC Council”) has unanimously approved a “Model Order Limiting Excess Patent Claims and Prior Art.” Citing a “[l]ack of discipline” by the asserting party, the CAFC Council recounted that the resulting “superfluous claims and prior art” have contributed to increasing the expense and burden of patent litigation. And rather than dealing with the number of claims and prior art references on an ad hoc basis, as is presently done, the aspirational Model Order sets default numerical limits on the number of asserted patent claims and prior art references.

“SHIELD Act” Reintroduced to Combat NPEs…

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Posted in Patent

On March 7, 2013

We previously reported on the proposed Saving High-Tech Innovators from Egregious Legal Disputes Act of 2012 (“SHIELD Act of 2012”), introduced in the House of Representatives as HR 6245 last year. This Act, intended to discourage frivolous patent litigations by so-called non-practicing entities (“NPEs,” or sometimes referred to as “patent trolls”), proposed adding new section 35 U.S.C. § 285A to make fee-shifting available under certain circumstances in patent litigations involving computer hardware and software patents. More specifically, it provided that fees could be awarded to a prevailing defendant upon finding that the party alleging infringement did not have a “reasonable likelihood of succeeding.” As written, the SHIELD Act of 2012 failed to garner sufficient support and died in committee.

Delaware Leads the Way on CBM-Related Stay

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Posted in Patent

On February 19, 2013

In one of the apparently few judicial decisions of its kind to date, the District of Delaware recently granted a motion to stay six patent infringement actions, pursuant to Section 18 of the America Invents Act (AIA), pending resolution of post-grant review proceedings in the U.S. Patent & Trademark Office (USPTO) to reexamine the validity of the so-called covered business method (CBM) patents at issue. As defined by AIA § 18(d)(1) and 37 C.F.R. § 42.301, a CBM is “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.”

New Jersey Law to Stimulate High Tech Investment

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Posted in Biotech

On February 6, 2013

This past week, Governor Christie signed into law S. 581, entitled the “New Jersey Angel Investor Tax Credit Act.” The new law is designed to stimulate investment in New Jersey’s high tech start ups by providing investment incentives for “angel investors.” The law provides credits against corporation, business and gross income taxes for investing in New Jersey’s emerging technology businesses, including: advanced computing; advanced materials; biotechnology; electronic devices; information technology; life sciences; and mobile communications, among others. Angel investors in these start-ups will be eligible for tax credits equal to 10 percent of their investments, up to a maximum allowed credit of $500,000 for the tax year. Other criteria for the start-ups require that they employ fewer than 225 employees, 75 percent of whom must work in New Jersey. The overall program has an annual cap of $25 million.

PTO Announces Software Partnership Roundtable Meetings

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Posted in Patent

On January 9, 2013

In an effort to “enhance the quality of software patents,” the United States Patent and Trademark Office (“PTO”) has announced a partnership with the software community. The Software Partnership will provide roundtable discussions between stakeholders and the PTO to share ideas and insights on software-related patents. The PTO will sponsor two roundtable events, one in Silicon Valley on February 12, and the other in New York City on February 27. In addition, the PTO plans to make each roundtable event available via Web cast, and will post Web cast information on its Internet Web site before the events.

AIA Technical Corrections Bill and Trade Secret Penalties Bill Await President’s Signature

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Posted in Patent

On January 4, 2013

As most Americans focused on the Congressional efforts to avoid the “fiscal cliff,” IP practitioners noted that Congress passed Senate-amended versions of a bill to amend the Smith-Leahy America Invents Act (AIA) (H.R. 6621) and a bill to increase penalties under the Economic Espionage Act (EEA)(H.R. 6029) on to the White House on January 1, 2013, for signature by President Obama. It is expected that President Obama will sign both bills into law shortly.

USPTO Extends Deadline for Commenting on First Inventor to File Provisions of the AIA to November 5, 2012

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Posted in Patent / USPTO

On October 19, 2012

On July 26, 2012, the U.S. Patent & Trademark Office (USPTO) published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions of the AIA effective March 16, 2013. The notices set an initial comment deadline date of October 5, 2012. In response to requests for additional time to submit comments, the USPTO recently extended the comment deadline date to November 5, 2012.

Akamai and McKesson: Inducement Liability for Infringement by Multiple Actors

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Posted in Patent

On September 10, 2012

In August, we reported that a decision in the en banc Federal Circuit rehearings of Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) and McKesson Techs. Inc. v. Epic Sys. Corp. , 98 U.S.P.Q.2d 1281 (Fed. Cir. 2011) appeared to be imminent. As predicted, on August 31, 2012, the Federal Circuit issued an en banc, per curiam opinion deciding both cases.

(Still) Waiting for Akamai and McKesson ….

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Posted in Patent

On August 15, 2012

As the summer rolls along, IP practitioners still await the Federal Circuit’s decisions in the en banc rehearings of Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) and McKesson Techs. Inc. v. Epic Sys. Corp., 98 U.S.P.Q.2d 1281 (Fed. Cir. 2011), which will address liability among multiple step performers accused of patent infringement.

Trade Secrets Update

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Posted in Trade Secrets

On July 24, 2012

Just as trade secrets cases continue to proliferate in the news, the U.S. Senate introduced legislation last week aimed at streamlining the ability of American companies to combat trade secret theft. Under the proposed legislation S.3389, “Protecting American Trade Secrets and Innovation Act of 2012″(“PATSIA”), a single federal statute would be created under which companies could sue in Federal Court, as an alternative to the existing structure of state or common law statutes. To be eligible, plaintiffs are required under a heightened pleading standard to: “(A) describe with specificity the reasonable measures taken to protect the secrecy of the alleged trade secrets in dispute; and (B) include a sworn representation by the party asserting the claim that the dispute involves either substantial need for nationwide service of process or misappropriation of trade secrets from the United States to another country.” Plaintiffs also are subject to a three-year statute of limitations.

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