Here’s the latest.

Why Patents Can Matter In Trade Secret Cases

Reported by Steven P. Hollman on

The petition for certiorari to the Supreme Court in Acer America Corp. v. Intellisoft, Ltd. illustrates the unique intersection of trade secret and patent law according to Steven P. Hollman. The case involves a state trade secret claim that hinges on inventorship issues. The computer company, Acer, asserted that the inventorship issues arose under patent laws and therefore removal to federal court was necessary. The district court agreed and denied Intellisoft’s motion to remand the case back to state court. On appeal, the Federal Circuit concluded that trade secret ownership was a matter of state law that did not necessarily depend on federal patent laws. Ultimately, the Federal Circuit decided that removal was not warranted and vacated the district court’s judgment and ordered the case remanded to California state court. In its petition for certiorari, Acer argues that the Federal Circuit abandoned Supreme Court precedent in Gunn v. Minton. In the article, Hollman emphasizes how trade secret misappropriation and patent disputes transcend various industries. These interrelated problems often lead to severe consequences and therefore it important for potential litigants to understand not only patent law and trade secret law but also where they intersect. And this case is no exception.

With a $300 million damage claim hanging in the balance, the dispute is hardly inconsequential.  Intellisoft likely believes it will fare better under the less exacting standards of state trade secret misappropriation law, where it need only show that it owns the trade secrets and that it was injured by Acer’s unauthorized use of those secrets.  Conversely, Acer likely recognizes that its prospects of prevailing are better under the higher clear and convincing burden required to demonstrate patent inventorship and the burden of demonstrating patent infringement, a position already confirmed by the district court’s summary judgment determination in Acer’s favor.”

For more on this case, see our coverage.

Fed. Circ. Won’t Revive Presidio’s Capacitor Patent Claims

Reported by Dani Kass on Law360

The Federal Circuit affirmed a pair of Patent Trial and Appeal Board decisions invalidating the challenged claims of two patents covering broadband capacitor technology. Dani Kass highlights the claim construction challenges raised by Presidio Components Inc.

One of Presidio’s arguments, involving U.S. Patent No. 7,075,776, was based on whether the term ‘adapted to be’ should have been construed as ‘designed to be’ or just ‘capable of being’ as it relates to a conductor bonding to a circuit board.”

The panel agreed with the board that it was unnecessary to make that distinction because no matter which way the term was construed, the claims were obvious over prior art. The three-judge circuit panel also “shot down” all of Presidio’s assertions about claims of U.S. Patent No. 7,307,829, including one involving the PTAB’s construction for the term “end,” which described a part of the capacitor.

Supreme Court to consider all sides’ cert petitions in Arthrex patent-law case

Reported by Barbara Grzincic on

After multiple petitions have been filed challenging the controversial decision in Arthrex, Inc. v. Smith & Nephew, the case finally reaches the Supreme Court’s agenda next week. What began as a dispute over Arthrex’s patent on a knotless suture used in surgical procedures has transformed into a case involving constitutional structural concerns. As articulated by Barbara Grzincic, in an attempt to fix the structure of the Patent Trial and Appeal Board, the U.S. Court of Appeals for the Federal Circuit “[stripped] the board’s 200-plus administrative judges of their civil-service protections against termination, and held that Arthrex – and potentially hundreds of appellants in other cases – should have a new hearing by a different panel of APJs.”

The United States, Smith & Nephew and Arthrex all challenge different aspects of the October ruling, but have concluded that the issues are so intertwined that they require ‘plenary’ review by the court.”

For more on this case, see our coverage.