Posts Tagged: "2019 review"

Trade Secrets Review: Key 2019 Decisions and Trends (Part I)

In general, a trade secret is any information used in business if the owner has taken reasonable measures to keep such information secret, and the information derives independent economic value, from not being generally known to, and not being readily ascertainable through proper means by the public. Almost every state has adopted some form of the Uniform Trade Secrets Act. In addition, with the enactment of the Defend Trade Secrets Act of 2016 (DTSA), trade secrets are also protected under civil and criminal federal law. See 18 U.S.C. § 1831, et seq. Due to the enactment of this Act and the weakening of patent protection in the United States, trade secrets are becoming an increasingly important means for companies to protect their intellectual property. This article provides a summary of important 2019 trade secret decisions and trends.

Peter J. Toren

January 21, 2020

Case Law and Policy Changes in PTAB Practice During 2019

Despite the possibility that the judges of the Patent Trial and Appeal Board (PTAB) may have been unconstitutionally appointed, as held recently by a Federal Circuit panel, it is hard to imagine the Federal Circuit (or the Supreme Court) throwing out nearly a decade of USPTO policies and PTAB jurisprudence relating to administrative patent trials under the 2011 America Invents Act (AIA). Stay tuned for a probable en banc rehearing of the Arthrex decision in 2020. That being said, a lot happened at the PTAB in 2019. Early in 2019, the PTAB designated as “precedential” an opinion in the Lectrosonics case explicitly adopting the practice called for by the Federal Circuit in the 2017 Aqua Products case of placing the responsibility on the petitioner who challenges a patent to also show that any amendments presented by the patent owner are also invalid. This was followed by proposed formal rules in October 2019 codifying the Lectrosonics holding that the petitioner who initiates a patent challenge will not only have the burden of persuading the PTAB that a patent owner’s claims as issued are invalid but will also have the same burden with regard to claim amendments during the proceeding. The USPTO should finalize this rule shortly.

John Bauer & Tom Engellenner

January 8, 2020