Businesses now have an additional weapon with which to protect their trade secrets. Effective May 11, 2016, the Defend Trade Secrets Act (“DTSA”) was signed into law. The DTSA provides a federal cause of action for the protection of trade secrets related to products or services used, or intended for use, in interstate or foreign commerce. Traditionally, trade secrets have not enjoyed the same protections under federal law as other forms of intellectual property, like patents, trademarks, and copyrights. Instead, owners of trade secrets had to rely upon a patchwork of state laws and various adoptions of the Uniform Trade Secrets Act to safeguard their innovations. The DTSA only broadens trade secret protection, leaving intact the parallel remedies available under state law. Yet, the implementation of the DTSA will help to alleviate the uncertainty and inconsistent results that previously occurred in some cases as a result of state-by-state variations in trade secret law.
Few college football coaches can claim both a legendary record and a unique choice of headwear in the way the late University of Alabama football coach Paul “Bear” Bryant can. The question circulating the legal community of late, however, revolves around the extent to which the University can assert that uniqueness in the form of trademark protection for the houndstooth design emblazoned on Bryant’s signature fedora hat, as well as the right of an administrative court not to conform to the ruling of a District Court.
The case of the Board of Trustees of the University of Alabama and Paul W. Bryant, Jr. v. Houndstooth Mafia Enterprises, LLC, et al. is currently working its way through the federal courts. Before filing suit, the University and Bryant had opposed the Houndstooth Mafia’s trademark registration, which included a logo with a plentiful amount of houndstooth. The Trademark Trial and Appeal Board (“TTAB”), however, found that the Continue reading The University of Alabama Throws a Penalty Flag on the Use of Houndstooth Logo→
Bob Craddock and Graham Matherne, Partners in the Firm’s Litigation & Dispute Resolution Service Team, wrote an article that was recently published in the Memphis Daily News. The article, “Trade Secrets and the Inevitable Disclosure Doctrine,” explains the Tennessee Uniform Trade Secrets Act and how it can prevent a former employee from stealing a company’s trade secrets.
Steve Hall, an experienced patent lawyer and litigator, and member of Wyatt’s Intellectual Property Protection & Litigation Service Team, was recently quoted in the February 2016 issue of The Lane Report. The article, “Many Options to Protect Intellectual Property,” draws upon the knowledge of local experts in the field and describes various ways to ensure a company’s intellectual property is protected.
On December 18, Congress adjourned for the year without enacting any new patent legislation. This is despite the fact that late in 2014, members of Congress stated that patent reform was a priority for the 114th Congress, and particularly for 2015. Many commentators believed that significant patent reform was likely for 2015. This appeared to be the case as, in 2014, new patent legislation had made it out of the House of Representatives but was ultimately killed in the Senate. Then, at various times throughout 2015, at least 4 bills, (1) The Innovation Act (H.R. 9) (the one previously killed in the Senate in 2014); (2) The TROL Act (H.R. 2045); (3) the STRONG Patents Act (S. 632); and (4) the PATENT Act (S. 1137), were introduced in either the House or Senate dealing with some aspect of patent reform. However, no law has gone into effect and it now appears that the momentum for patent reform that was prevalent early in 2015 has subsided and there are questions as to whether patent reform will even take place in 2016.
The last major patent reform happened in 2011 with the America Invents Act. However, prior to that, there had been over 50 years since any substantive patent reform. With the Supreme Court continuing to take more patent cases and the continued presence of non-practicing entities, a.k.a. “trolls,” it will be interesting to see whether patent reform will be at the top of Congress’ priorities in 2016, as it appeared to be at the beginning of 2015.
Glen Reid, member of Wyatt’s Intellectual Property Protection & Litigation Service Team, served as co-counsel in WCM Industries, Inc.’s recent patent infringement case. The company was victorious in a jury trial. A story about the case, entitled “IP Trial an Unusual Victory: Fierce competitors go to trial over IP rights,” appeared in the November 16th issue of Law Week Colorado.
The Federal Circuit issued an important en banc ruling in August expanding what can constitute direct infringement of a method claim when one actor does not perform all of the elements of the claim at issue. See Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. Aug. 13, 2015) (“Akamai II”). This concept is referred to as “divided infringement” or “joint infringement.” Previously, if a single actor did not perform all of the steps of the claim, that actor could only be liable for direct infringement if the accused infringer was found to be the “mastermind,” exercising direction and control over the other entities such that the actions could be attributed to it. See Akamai Technologies, Inc. v. Limelight Networks, Inc., 786 F.3d 899, 904 (Fed. Cir. May 13, 2015) (“Akamai I”). “Direction or control” for such a finding was very narrow and the Federal Circuit had stated that this would be satisfied in instances where the “law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party . . . [and] may occur in a principal-agent relationship, a contractual relationship, or in circumstances in which parties work together in a joint enterprise functioning as a form of mutual agency.” Id. at 904-905. This previous standard essentially excluded from infringement any instance where a customer performed any of the steps of a claim in a method patent.
The Supreme Court recognized the narrow scope the Federal Circuit had circumscribed for direct infringement and invited the Federal Circuit to revisit this standard. See Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2120 (2014) (“Our decision on the § 271(b) question necessitates a remand to the Federal Circuit, and on remand, the Federal Circuit will have the opportunity to revisit the § 271(a) question if it so chooses.”). The Federal Circuit took the Continue reading Divided Infringement Broadened→
Steve Hall, member of Wyatt’s Intellectual Property Protection & Litigation Service Team, will be speaking at the Defense Research Institute‘s (DRI) Intellectual Property Seminar on the topic “Using the AIA’s First to File Rule and the Written Description Requirement to Invalidate Patents” on May 6, 2016 in Nashville. Mr. Hall’s presentation will teach attendees how to use the “written description” requirement, along with recent amendments to the Patent Act, to challenge a patent’s validity in a way that was not available to defendants before 2013, when the First-to-Invent features of the America Invents Act went into effect.
The so-called “SEC Primaries” on March 1, 2016 could have as much to do with deciding the Republican presidential nominee as the Southeastern Conference does with college football’s national championship. With that in mind, candidate Jeb Bush has toured the SEC this fall, and while he is undoubtedly watching great football, he is also pursuing votes.
As Bush canvasses the crowds across southern tailgates, which have included the University of Georgia and the University of Tennessee campuses, staffers have passed out koozies emblazoned with the letters “J-E-B,” in a circular logo similar to that of the SEC. That is until recently, when SEC officials called the logo into question.
Defense attorneys often rely on the legal defense of laches when faced with a claim of patent infringement. This defense bars recovery when a party claims legal injury but unreasonably delays in pursuing the claim in a way that prejudices the opposing party. The laches defense has come under close examination in the SCA Hygiene Products v. First Quality Baby Products, Inc. case. 1
The facts giving rise to the case began when SCA, the patent holder, suggested in a 2003 letter to First Quality, its competitor in the adult incontinence market, that First Quality products were infringing on one of SCA’s patents. After exchanging letters for several years, SCA filed suit in 2010, alleging patent infringement. The District Court granted the defendant’s motion for summary judgment primarily under laches grounds.
Then, in a ruling previously discussed on this blog, a three-judge panel of the Federal Circuit affirmed the grant of laches as a defense to patent infringement. This came despite the Supreme Court’s 2014 holding in Patrella v. Metro-Goldwyn-Mayer, Inc. 2 that laches cannot be invoked to bar a claim for copyright infringement. In light of the Patrella ruling, the Federal Circuit vacated its SCA Hygiene Products ruling on December 30, 2014, ordering an en banc hearing of the court, meaning Continue reading Laches Remains Patent Infringement Defense…For Now→