Prosecution Group Luncheon
Patent Updates
October, 2011
Reform Spreading to Trade Secrets?
Proposed Amendment to Economic Espionage Act (18
USC 1832) for Private TS Actions
• Complaint must identify
– “reasonable measures taken to protect” secrecy
– sworn representation of “substantial need for nationwide
service . . . or misappropriation . . . to another country”
• Ex parte seizure of property or evidence
• Remedies
– injunctive relief against violation or requiring actions to
protect secrets; reasonable royalty
– actual loss, unjust enrichment; exemplary damages for
malicious or willful misappropriation
• Fees awardable
• Three-year statute of limitations
Presumption of Irreparable Harm is Dead(ish)
• Robert Bosch LLC v. Pylon Mfg. Corp. (Fed. Cir. 2011)
• FC: “eBay jettisoned the presumption of irreparable harm as it
applies to determining the appropriateness of injunctive relief."
– Note: says “injunctive relief”; presumably applicable to
preliminary as well as permanent injunctions
• But: “does not follow that courts should entirely ignore the
fundamental nature of patents as property rights” with a right to
exclude
•
• Here, FC reversed denial of permanent injunction: error in
concluding that "if a fact supports the granting of an injunction, its
absence likely compels the denial of one. That is not the law"
• Open question whether failure to consider the "fundamental
nature" of patent rights will be grounds for reversal
In re Stepan Co. (Fed. Cir. 2011)
• Board’s affirmation based on a new factual finding is a
new ground for rejection
– Ergo: prosecution can be reopened as of right
• Applicant gave 131 declaration; examiner gave no
effect as the public use at issue was 102(b) art
• Board: reversed 102(b) ground, but affirmed rejection
because content of declaration was insufficient
• FC: Insufficiency finding not a basis of examiner’s
rejection, must be identified as a new ground
• Commentator: inapplicable to new post-grant reviewsthey go directly to Board, not through examiner
Coming Attractions
• Supreme Court
• Mayo v. Prometheus (Subject Matter of Processes)
– Issue: Does claim to observed correlations between blood test
results and patient health meet section 101
– FC: it’s a transformation, ergo proper subject matter
– Argument set for December 7
• Kappos v. Hyatt (Review Standard for Appeals to District Court)
– Issue: How “de novo” is a Section 145 civil action
– FC: new evidence may be presented, conclusions impacted by
that evidence are determined de novo, no deference to PTO
– No argument yet on the calendar
• Federal Circuit (en banc)
• Akamai v. Limelight, McKesson v. Epic (Multi-Party Infringement)
– Issue: Liability where multiple parties perform separate steps of a
process, but no single entity performs all steps
– Argument set for November 18, 2011