Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today we highlight:
- a piece outlining factors “behind the Patent Office head’s recent refusal to have the agency institute certain proceedings”;
- an article discussing two recent decisions that “show how parties can navigate the draconian effect of an exclusion order by pursuing the simultaneous paths of a Federal Circuit appeal and ancillary proceedings” at the International Trade Commission and before U.S. Customs & Border Protection “to adjudicate a design-around”;
- a blog post highlighting how a recent filing “shines a spotlight on a structural vulnerability in how post-grant review is functioning in practice”; and
- an article examining “the Federal Circuit’s evolving view of two key trade secrets issues: (1) whether information was readily ascertainable and therefore not a trade secret; and (2) how and when plaintiffs must sufficiently define their trade secrets.”
Christopher Loh penned a piece for Westlaw Today outlining factors “behind the Patent Office head’s recent refusal to have the agency institute certain proceedings.” Loh suggests many of the denials of institution of inter partes review proceedings by Director John Squires “are motivated by three factors: inconsistent claim construction positions,” “alleged failures by a petitioner to identify all” real parties in interest, and “duplicative challenges.” Loh suggests “patent owners should avail themselves of opportunities to raise those issues early in IPR proceedings where applicable.”
Robert Vlasis, Matthew Karambelas, and Amy LoBue authored an article for Mintz Insights Center discussing two recent decisions that “show how parties can navigate the draconian effect of an exclusion order by pursuing the simultaneous paths of a Federal Circuit appeal and ancillary proceedings” at the International Trade Commission and before U.S. Customs & Border Protection “to adjudicate a design-around.” The authors note how, in a recent decision, the Federal Circuit affirmed a determination by the U.S. International Trade Commission “that Apple violated Section 337 of the Tariff Act.” But, the authors note, this decision was “issued just one day after an ITC administrative law judge . . . issued a recommended determination.” According to the authors, “[i]f the Commission adopts that recommendation, Apple’s design-around could effectively moot the exclusion order that the Federal Circuit just upheld.” For more information on this case, check out our case page in Apple Inc. v. International Trade Commission.
Gene Quinn penned a blog post for IPWatchdog highlighting how a recent filing “shines a spotlight on a structural vulnerability in how post-grant review is functioning in practice.” Quinn points out how a recent petition for ex parte reexamination demonstrated how, when “[a]n inter partes review . . . fails” some “challengers simply repackage the filing as an ex parte reexamination request.” Quinn argues that, “[i]f left unchecked, the system risks shifting toward a model where every patent challenge becomes a multi-shot challenge within the Office, where finality is not just elusive but impossible.”
Bryan Wilson, Mary Prendergast, and Chiamaka Okoye authored an article for Law360 examining “the Federal Circuit’s evolving view of two key trade secrets issues: (1) whether information was readily ascertainable and therefore not a trade secret; and (2) how and when plaintiffs must sufficiently define their trade secrets.” The authors explain how, “[s]ince 2016, trade secret law has also included the federal Defend Trade Secrets Act,” and that this has made litigants wonder if they should “choose to bring both trade secrets and patent claims together.” Ultimately, the authors indicate, “trade secrets plaintiffs may face a higher bar in the Federal Circuit than in other courts.”