new considerations for protecting intellectual property presented by: august 8, 2015

New Considerations For Protecting Intellectual Property

PRESENTED BY:

August 8, 2015

Protecting our Ideas

Can one good idea last forever?

Protecting our Image

Are we more than the names

we give ourselves?

Protecting our Secrets

Can I reasonably expect to protect secrets?

How many people can I tell

before my “secret” stops being secret?

Trade Secret Policy of IRW, Inc. 

IRW, Inc. (“Company”) recognizes that it possesses confidential and proprietary information relating to its business (“Trade Secrets” as defined in detail below) and that, absent adequate safeguarding, the Company’s rights to these Trade Secrets may be lost, diluted, or misappropriated. The Company desires to continue to protect its Trade Secrets, and has implemented commercially reasonable measures to protect the Company’s Trade Secrets from inadvertent or intentional disclosure to unauthorized individuals and entities. The policies governing access, use and dissemination of Company Trade Secrets are contained in this document.

This document, known as the Trade Secret Policy (“Trade Secret Policy”) of the Company, shall be made available to each employee of the Company, from time to time, and as necessary pursuant to the terms of this Policy. Although this document is not a contract, this Trade Secret Policy may be amended periodically and notice provided to all employees and temporary personnel (collectively the “Employees”) engaged by the Company. The Company will also periodically conduct training to ensure that each Employee is familiar with the Company’s policies and procedures for identifying and safeguarding Trade Secrets of the Company.

Trade Secret Legislation

• On July 29, 2015, a bipartisan coalition of six senators and 16 representatives introduced legislation to create a federal private right of action for trade secrets misappropriation.

• The Defend Trade Secrets Act of 2015, sponsored by Sen. Orrin G. Hatch (R-Utah) in the Senate and Rep. Doug Collins (R-Ga.) in the House seeks to unify the current patchwork of state trade secret laws under a single federal law.

• This Act would create for the first time a Federal cause of action for trade secret misappropriation.

Enforcing our Rights

When do I blow the whistle on another’s copying?

2015: A Patent Infringement Odyssey

Patent Infringement Complaints down 40% from October, 2013

NPE/PAE actions still account for over 60% of total filings.

Large number of cases initiated in 2012-2013 remain active.

The Usual Suspects*

eDekka, LLC 130

Olivistar, LLC 61

Simon Nicholas Richmond 57

Penovia, LLC 49

Hawk Tech. Systems, LLC 48

Uniloc USA Inc. 45

Presqriber, LLC 44

QualQode, LLC 43

Orlando Comm’ns, LLC 42

PanTaurus, LLC 40

*Ranked by number of defendants, Jan. 1-Nov. 30, 2014

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)

In Alice, the Supreme Court confirms that the Mayo test should be used to determine if abstract ideas are ineligible under § 101. Id. at 7.

Building on Mayo, the Supreme Court reiterated that abstract ideas are not patentable, because monopolies over abstract ideas threaten innovation.

To be patentable, a claim that recites an abstract idea must include "additional features" to ensure "that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]." Id. at 11

Recall, the Supreme Court already held the § 101 inquiry is a “threshold” inquiry, and the 12(b)(6) stage is where courts address threshold issues.

Skinner v. Switzer, 131 S. Ct. 1289 (2011).

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)

‘Inventive Feature’ Distinguished:

The Supreme Court in Alice held that claims to a banking-related function were patent ineligible as abstract ideas, with no “inventive concept” from other limitations in the claims or in any claim as a whole.

“The addition of a conventional element like a generic computer to an abstract idea does not add an ‘inventive feature' to the abstract idea, and thus the claim is unpatentable under §101,” the district court said, characterizing the high court's view of Alice's patent claims.

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)

Alice’s two-step analysis:

First, the court said that the patent was directed to an abstract idea, one of three judicially created exceptions to patentable subject matter.

The second step is to see if the claims “contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.”

The Sky is Falling

Patent Eligibility Decisions

Through the Looking Glass

Post-Alice, the Federal Circuit and at least seven different district courts hold that it is proper to find patents invalid under § 101 at the 12(b)(6) stage without first satisfying any formal claim construction procedures.

• Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Assoc., No. 12-2501 (MAS) (TJB), Dkt. Nos. 64, 65 (D.N.J. July 31, 2013);

• CardPool v. Plastic Jungle, Inc., No. C 12-04182 WHA, 2013 WL 245026, at *3–4 (N.D. Cal. Jan. 22, 2013);

• Uniloc USA, Inc. v. RackSpace Hosting, Inc., No. 6:12-cv-375, ECF Dkt. No. 38 (E.D. Tex. Jan. 3, 2013);

• Sinclair-Allison, Inc. v. Fifth Ave. Physician Servs., LLC, No. Civ-12-360-M, 2012 WL 6629561 (W.D. Okla. Dec. 19, 2012);

Through the Looking Glass

• Graff/Ross Holdings LLP v. Fed. Home Loan Mort. Corp., 892 F. Supp. 120 (D.D.C. 2012) (converting 12(b)(6) motion into a summary judgment motion and granting it);

• Vacation Exch., LLC v. Wyndham Exch. & Rentals, Inc., No. 12-04229, Dkt. 27, at 2–6 (C.D. Cal. Sep. 18, 2012) ;

• OIP Tech., Inc. v. Amazon.com, Inc., No. C-12-1233 EMC, 2012 WL 3985118, at *5 (N.D. Cal. Sept. 11, 2012);

• Glory Licensing LLC v. Toys “R” Us, Inc., No. 09-4252 (FSH), 2011 WL 1870591, at *1–4 (D.N.J. May 16, 2011), appeal dismissed by 459 F. App’x 916 (Fed. Cir. Aug. 25, 2011);

• Buysafe, Inc. v. Google Inc., No. 1:11-cv-01282-LPS, Dkt. 69 (D. Del. July 29, 2013) (finding claims invalid under § 101 when applying 12(b)(6) standards in response to Rule 12(c) motion)

Summit Data Sys., LLC v. EMC Corp., D. Del., 1:10-cv-00749-GMS, 9/25/14

Acacia subsidiary Summit Data Systems, LLC hit with $1.4 million in attorneys' fees incurred by NetApp, Inc. for vexatious patent infringement litigation.

The U.S. District Court for the District of Delaware slammed Summit for the perceived business model of extracting settlements from companies who want to avoid hefty litigation fees.

The Court indicated that there was more to the award than just the offending business model. Specifically, Summit had licensed the patents at issue such that NetApp could not have infringed, yet pursued litigation for more than two years before finally agreeing to dismiss the complaint with prejudice.

Nautilus, Inc. v. Biosig Instruments, Inc. (2014)

“we read §112, ¶2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.”

Applying the reasonableness test, look for terms that are unbounded by the patent specification or are facially subjective (such as claim term "aesthetically pleasing")

Even limited examples may not be enough depending on claim term (such as term "unobtrusive manner")

Framed from perspective of a skilled artisan at the time the patent was applied for.

Questions?

Ian R. Walsworth

iwalsworth@sheridanross.com

(303) 863-2976