Two cases this year have demonstrated that, although trade secret protections have become better aligned with protecting high tech trade secrets, there is still a long way to go. First, in Waymo v. Uber, the hard-fought...more
As the saying goes, hard cases make bad law. And it certainly looked improper when Sergey Aleynikov downloaded high-frequency trading ("HFT") source code as he was leaving his job as a Goldman Sachs programmer, at least to...more
On April 17th, the American Bar Association provided a formal opinion regarding the requirement that attorneys disclose errors to clients. Its opinion was based on Rule 1.4 of the Model Rules of Professional Conduct, which...more
In reversing an appellate court decision that had caused concerns throughout the patent world, the Texas Supreme Court recognized that communications between patent agents and clients could be covered by the attorney-client...more
Earlier on November 7, 2017, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board ("PTAB") published its Final Rule establishing the attorney-client privilege for application in PTAB proceedings. Before the...more
The DTSA After One Year: Has the Federal Trade Secrets Law Met Expectations? -
On May 11, 2017, the Defend Trade Secrets Act (DTSA) – the law that created a Federal cause of action for trade secret misappropriation –...more
9/18/2017
/ Defend Trade Secrets Act (DTSA) ,
Forum Selection ,
Intellectual Property Protection ,
Marijuana ,
Misappropriation ,
Patents ,
Principal Place of Business ,
TC Heartland LLC v Kraft Foods ,
Trade Secrets ,
Venue ,
Water Splash v Menon
On May 11, 2017, the Defend Trade Secrets Act (DTSA) – the law that created a Federal cause of action for trade secret misappropriation – celebrated its first birthday. The law was the result of years of negotiation between...more
On July 17, 2017, the United States Trade Representative released the summary of its objectives for NAFTA renegotiation, including its objectives for the intellectual property and competition provisions of the agreement. As...more
Patent applicants dissatisfied with final outcome of patent prosecution proceedings have long had two options for court review of a Patent and Trademark Appeal Board decision: an appeal to the Federal Circuit under 35 U.S.C....more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
3/22/2017
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Agent Privilege ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trademark Registration ,
Trademarks ,
USPTO
Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings...more
Sergey Aleynikov was tried and convicted on criminal charges by both a Federal and a New York state jury; both times, his conviction was reversed. But his luck on appeal may have run out. The Appellate Division, First...more
Supplemental Examination: Potential Benefits vs. Guaranteed Risks -
The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable...more
9/16/2016
/ 3D Printing ,
America Invents Act ,
Compulsory Licenses ,
Defend Trade Secrets Act (DTSA) ,
Digital Media ,
DMCA ,
EU ,
Indirect Infringement ,
Intellectual Property Protection ,
Music Streaming ,
Patents ,
Popular ,
Royalties ,
Startups ,
Supplemental Examination ,
Trade Secrets ,
Trademarks ,
UTSA ,
Venture Capital ,
Venture Funding
May 2016 was a banner month for trade secret protection around the world. On May 11, 2016, President Obama signed the Defend Trade Secrets Act of 2016 (“DTSA”) into US law, creating a new Federal cause of action for...more
This afternoon, President Obama signed the Defend Trade Secrets Act of 2016 ("DTSA") into law, creating a new Federal cause of action for misappropriation of trade secrets. The new law is the most significant expansion of...more
One week after the House Judiciary Committee unanimously reported the Defend Trade Secrets Act of 2016 to the House floor, the full House approved the bill, 410-2. The two no votes were from tea party Republicans, Rep....more
After a brief markup session in which no amendments to the bill were proposed, the House Judiciary Committee reported the Defend Trade Secrets Act of 2016 to the House floor by unanimous voice vote today. The bill passed the...more
The Defend Trade Secrets Act of 2015,[1] a bill to establish a federal cause of action for trade secret misappropriation, has continued its progress through Congress with a favorable hearing before the Senate Judiciary...more
Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections -
It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l,...more
3/3/2016
/ AFCP ,
America Invents Act ,
Broadest Reasonable Interpretation Standard ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Cuozzo Speed Technologies v Lee ,
Defend Trade Secrets Act (DTSA) ,
Inter Partes Review (IPR) Proceeding ,
Patent Prosecution Highway ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Trade Secrets ,
USPTO Pilot Program
In 2009, Sergey Aleynikov was a computer programmer employed by Goldman Sachs to write high-frequency trading code. He accepted an offer to join a new Chicago-based company, Teza Technologies. Before he left Goldman Sachs,...more
9/15/2015
/ Aleynikov ,
Confidential Information ,
Defend Trade Secrets Act (DTSA) ,
Double Jeopardy ,
Economic Espionage Act ,
Ex Post Facto Clause ,
FBI ,
Goldman Sachs ,
High Frequency Trading ,
Indictments ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Misappropriation ,
Motion to Dismiss ,
Popular ,
Proposed Legislation ,
Rule of Lenity ,
Source Code ,
Trade Secrets ,
US v Aleynikov
In 2009, Sergey Aleynikov was a computer programmer employed by Goldman Sachs to write high-frequency trading code. He accepted an offer to join a new Chicago-based company, Teza Technologies. Before he left Goldman Sachs,...more
7/7/2015
/ Aleynikov ,
Convictions ,
Criminal Prosecution ,
Double Jeopardy ,
European Economic Area (EEA) ,
Ex Post Facto Clause ,
FBI ,
Foreign Commerce ,
Goldman Sachs ,
High Frequency Trading ,
Intellectual Property Protection ,
Interstate Commerce ,
Misappropriation ,
Source Code ,
Trade Secrets ,
US v Aleynikov ,
Vacated
In a 7-2 decision authored by Justice Breyer, the U.S. Supreme Court held yesterday that an “appellate court must apply a ‘clear error,’ not de novo, standard of review” to the evidentiary underpinnings of a district court’s...more
In This Issue:
- Prior Art Redefined Under the AIA
- PTAB Holds a Firm Line on Additional Discovery
- The Art of Prior Art Searching
- Anticipating a Federal Trade Secret Law
- Trademark...more
11/26/2014
/ Additional Discovery ,
America Invents Act ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patentability Search ,
Patents ,
Prior Art ,
SCOTUS ,
Trade Secrets ,
USPTO
Unlike patents and copyrights, trade secrets have historically been protected primarily under state law rather than federal law. That long history may soon change, as bills to create a federal cause of action for trade secret...more
The first United States Intellectual Enforcement Property Coordinator ("IPEC"), Victoria Espinel, has stepped down after four years in the position. During her tenure, Ms. Espinel worked to strengthen enforcement of...more