News and Articles

ITC Pilot Program to Promote Early Adjudication of Dispositive Issues

On June 24, 2013, the International Trade Commission (ITC) announced that it will launch a pilot program for early adjudication of potentially-dispositive issues in Section 337 investigations. This pilot program is part of the Commission’s ongoing efforts to streamline the investigation procedures to reduce the cost of investigations and to expedite the process. Under the new pilot program, the Commission will first select those investigations that appear likely to present




Federal Circuit and Advisory Council Model Orders

On July 22, 2013, a model order relating to the number of asserted claims and prior art references in patent litigations was released on the Federal Circuit Advisory Council’s webpage. The order required that in the first phase, plaintiffs must select 10 claims per patent, and 32 claims total, 40 days after production of “core” technical documents, while defendants are limited to 12 prior art references per patent and 40




The Economic Espionage Act

In April 2012, the Second Circuit in United States v. Aleynikov reversed the defendant’s conviction under the Economic Espionage Act (EEA) holding that the misappropriated trade secrets were not sufficiently related to a product produced for or placed in interstate or foreign commerce, as required under Section 1832(a). The defendant, a former employee at Goldman Sachs, was responsible for developing computer programs used in the bank’s high-frequency trading (HFT) system.




The U.S. Becomes First-to-File For Patents

On September 16, 2011, President Obama signed the America Invents Act (AIA). Along with other significant changes to the U.S. patent system, this legislation converts the “first to invent” system to a “first inventor to file” system. These provisions of the Act went into effect on March 16, 2013. The new first-inventor-to-file” (FITF) system is a hybrid of the first-to-invent system preceding the Act and an actual first-to-file system, where




RAND Obligations and Injunctive Relief

Entities that are parts of technology standard-setting organizations are typically required to promise, in some fashion, to license patents essential to any resultant standard on reasonable and nondiscriminatory terms. Once the standard has been promulgated, the standard essential patents (“SEP”s) may be asserted in litigation and the patent holder is expected to live up to reasonable and non-discriminatory (“RAND”) terms. A thorny issue for courts and litigants in the context




America Invents Act Creates a Transitional Program for Covered Business Method Patents

The America Invents Act (AIA) creates new administrative trial procedures to challenge patentability outside litigation before a district court venue. These trial procedures are namely (1) Post Grant Review (PGR), (2) Inter Partes Review (IPR) and (3) a transitional program for covered business method (CBM) patents. These laws went into effect on September 16, 2012. This update covers the transitional program for covered business method patents. A specific post-grant review




Patent Attorney

In WiAV Solutions LLC v. Motorola, Inc., No. 10-1266 (Fed. Cir. Dec. 22, 2010), the Federal Circuit broadened the scope of exclusive license by holding that “a licensee is an exclusive licensee of a patent if it holds any of the exclusionary rights that accompany a patent.” The licensing rights at issue were held by six third-parties and seven patents owned by Mindspeed Technologies, Inc. After a series of spin-offs




Copyright Violation and the Constitutionality of Excessive Damages – Music Downloaders Beware!

The Eight Circuit affirmed the constitutionality of statutory damages for copyright infringement against the challenge that it is disproportionately excessive in Capitol Records, Inc. v. Thomas-Rasset, 692 F.3d 899 (8th Cir. 2012). In 2011, record companies sued a woman for making copyrighted music available to others for free download by using a file-sharing service.  First the jury awarded the record companies $222,000 in damage.  Months after the verdict, however, the district court granted a new




Copyrights and Litigation Documents

The matter Unclaimed Property Recovery Service, Inc. v. Kaplan No., 12-4030 (2d Cir., Aug. 20, 2013) presents an issue of whether the holder of a copyright in a litigation document may withdraw the authorization to use the document after the document has already been introduced into the litigation and make subsequent infringement claim for the use of the document in the litigation. The plaintiff in this case, Bernard Gelb and




Myriad and Patenting of the Human Gene

The June 2013 Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, 569 U.S. 12-398 (2013) which considered whether portions of human genes may be patented, fueled an extraordinary amount of heated discussion for an intellectual property case. The patents at issue in Myriad concern mutated genes associated with increased risk of breast and ovarian cancer. Health care advocates worried that a ruling in favor of patentability would make