No Do-Overs: Voluntary Dismissal Does Not Reset Deadline for Stay
A respondent in an ITC proceeding may not seek a mandatory stay of their refiled declaratory judgment action in a district court action involving the same parties after they had previously filed a declaratory judgment action and failed to meet the deadline to seek a stay under 28 U.S.C. § 1659(a)(2).
Implant Trade Secrets Are Not Protectable Due to Disclosure in Patents
The Federal Circuit held under CUTSA that a purported trade secret is not protectable if it is generally known due to disclosure in a patent.
Factual Stipulations May Simplify Discovery, but Also Help Plaintiff Navigate Difficult Issues of Fact and Law
Mark Kachner & Kimberly M. Papadantonakis, Ph.D.
The Federal Circuit reversed summary judgment of noninfringement by enforcing plaintiff’s stipulation as to the portion of accused products with a U.S. nexus, and affirmed the exclusion of one of plaintiff’s damages expert’s for failing to comply with the disclosure requirements of the N.D. Cal. Local Patent Rules
Invisible but Invalidating: Undisclosed Functionality Still Triggers On-Sale Bar
Douglas B. Wentzel & Alex Martin del Campo
A third-party sale of a product embodying the claimed invention before the critical date can trigger the on-sale bar even if the product’s functionality was not publicly disclosed.
A Cure for Written Description and Enablement Headaches: Prior Art
Ben K. Shiroma & Alistair J. McIntyre
A functionally defined genus recited in a method of treatment claim may be adequately described and enabled by a single example if, at the priority date, the members of the genus were well-known.
No Notice, No Fix: Failure to Satisfy § 256(B) Renders Patent Invalid
Brian C. Barnes & Nefi R. Oliva
Omitted coinventor is a “party concerned” under 35 U.S.C. § 256(b), and inventorship cannot be corrected without providing that inventor notice and an opportunity to be heard.
Knobbe Martens Lawyers Analyze Schedule A Litigation Trends in E-Commerce IP Enforcement
Jared Bunker, Marko R. Zoretic & Oren J. Rosenberg
In a recent article published in the Association of Business Trial Lawyers Report, Knobbe Martens intellectual property lawyers Jared Bunker, Marko Zoretic, and Oren Rosenberg provide an in-depth analysis of “Schedule A” litigation—a popular enforcement tool used against foreign online sellers accused of intellectual property infringement.
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