Recently, President Obama signed into law the Defend Trade Secrets Act ("DTSA"). Under the DTSA, an owner of a misappropriated trade secret may bring a federal civil action if the trade secret is "related to a product or service used in, or intended for use in, interstate or foreign commerce." There are many aspects of this new law of which businesses should be aware, but three are worth special attention. Click 'view' to read more.
Don’t assume your client will receive a stay pending post grant proceeding. Many practitioners assume that an IPR will trigger a stay of litigation. This article discusses recent cases that suggest careful case planning, to request or resist, is necessary to best achieve a client’s goals.
E-discovery continues to be an arduous part of the patent litigation process, but three district courts in particular—The Eastern District of Texas, Northern District of California, and the District of Delaware have attempted to level the e-discovery playing field. Since different Districts use different approaches to e-discovery, it’s imperative to know the local e-discovery climate.
Some courts are holding defendants to a heightened pleading standard for affirmative defenses and counterclaims. A review of different pleading standards for claims in different jurisdictions suggests that defendants should look carefully at evolving case law in their jurisdiction in which they are sued until the Federal Circuit presumably harmonizes the pleading standards.
Intellectual Property and Technology
Cohen & Gresser handles a wide range of intellectual property and technology matters. Our litigators have experience in patent, trademark, copyright, trade secret, and unfair competition litigation and advise clients on internet privacy issues, data security, and technology law. Our transactional lawyers protect our clients’ patents, trademarks, service marks, copyrights, and trade secrets; manage trademark portfolios; and negotiate and draft a broad range of licensing and technology-related agreements.
Our litigators have successfully asserted and defended patent cases in federal courts throughout the country, including jurisdictions with heavy patent dockets (e.g., California, Delaware, Massachusetts, New Jersey, Pennsylvania, Texas, and Virginia), the Court of Appeals for the Federal Circuit, and before the International Trade Commission. Foremost, we are trial lawyers, and our diverse IP litigation practice enables us to excel across a wide range of technologies. Our approach is to pair lawyers who have strong technical backgrounds in the relevant technology with experienced trial lawyers, thereby giving our clients the best of both worlds: a litigation and trial team which can construct the strongest possible technical arguments in support of our position and can also explain our case to a judge and jury in language which is simple and persuasive.
From individual inventors to Fortune 500 companies, our lawyers have represented a wide range of clients in patent matters and have successfully litigated against some of the largest law firms in the U.S. The firm’s patent practice has been recognized in the Chambers USA guide, and the firm has been ranked as a recommended firm for patent litigation by Managing Intellectual Property magazine’s IP Stars guide. Patent Litigation group members have also been recognized individually by Chambers, as IP stars by Managing Intellectual Property, and as part of IAM’s Patent 1000 list.
Our patent attorneys are also skillful and experienced negotiators, able to assist our clients in maximizing the value of an IP asset sale. We draft infringement and validity opinions, conduct detailed intellectual property due diligence and freedom-to-operate analyses, and counsel clients on monetizing strategies for patent portfolios.
Patent – Post-Grant Proceedings
The U.S. Patent & Trademark Office (“USPTO”) has emerged as both an offensive and defensive tool in mitigating expensive and protracted district court litigation. A number of procedures exist at the USPTO and its adjudicative body, the Patent Trial and Appeal Board (“PTAB”), to challenge or refine issued patents, including inter partes review (“IPR”), covered business method review (“CBM”), post-grant review (“PGR”), ex parte reexamination, supplemental examination, and patent reissue.
Taking full advantage of these options can bolster any offensive or defensive patent strategy. Our IP practice group’s seasoned patent litigators and practitioners work with clients to develop innovative patent strategies that are business-focused and cost effective. Post-grant proceedings can be a tool for patent holders to improve the quality and strength of patent portfolios in advance of business transactions or litigation campaigns. For defendants, these proceedings have emerged as an effective alternative to costly and uncertain patent litigation.
Our team is well versed in patent examination and litigation before the USPTO, federal courts, and the International Trade Commission, providing the foundation and tools to foresee problems and formulate solutions. Team members hold undergraduate and graduate degrees in engineering, computer science, medicine, physical sciences, and life sciences. Moreover, our lawyers have patent experience in a broad range of technologies, from aerospace, telecom, and gaming to pharmaceuticals. This comprehensive technical expertise and strategic foresight enable our attorneys to be effective client advocates in all of the USPTO post-grant proceedings described below.
Patent owners and prospective challengers have a number of post-grant options, including the following:
Inter Partes Review (“IPR”)
IPR is a proceeding conducted before the PTAB to review the patentability of patent claims based only on anticipation and obviousness grounds, and then only on the basis of prior art consisting of patents or printed publications.
Post-Grant Review (“PGR”)
PGR is a proceeding conducted at the PTAB to review the patentability of claims in a patent on broader grounds than an inter partes review, including failure to comply with written description, enablement, or patent eligibility requirements, and can also rely on evidence of public use, on-sale activity, or other public disclosures; however, PGR rules impose a limited filing window (must be filed within nine months of the issuance or reissuance of the patent).
Covered Business Method (“CBM”) Review
CBM review is a proceeding conducted at the PTAB to review the patentability of claims in a covered business method patent, which employs the standards and procedures of a post-grant review, but has notable differences (e.g., there has to be a formal allegation of infringement, and PGR cannot be available).
Ex Parte Reexamination
Ex parte reexamination is a proceeding in which the requester (most often a third party) may re-examine an issued patent based on prior patents and printed publications, at any time during the enforceability of a patent. The requester initially bears the burden of showing that the submitted prior art establishes a substantial new question of patentability, after which the USPTO will commence the reexamination process. From that point on, the ex parte reexamination proceeding will, for the most part, involve only the patent owner and the USPTO.
Supplemental examination is filed by a patent holder and asks the USPTO to “consider, reconsider, or correct information believed to be relevant to the patent,” which is not limited to patents or printed publications. The standard and procedure otherwise substantially mimics that of ex parte reexamination.
Reissue is available as a procedure to correct errors in an issued patent where the error renders the patent wholly or partially inoperable or invalid. Patent reissue can address errors and issues relating to utility, written description, or enablement, whereas patent reexamination only reaches issues of novelty and obviousness. Further, patent reissue may allow for broadening of claim scope for a limited time after issuance.
Due Diligence and Corporate Support
Our Intellectual Property and Technology lawyers provide a full range of services and counseling in connection with corporate transactions. We evaluate third-party patent and trademark holdings for possible acquisition, conduct due diligence assessments on intellectual property aspects of mergers and acquisitions, and negotiate agreements transferring title and rights to intellectual property. We also advise clients on technology-related risk analysis within the context of corporate transactions.
In collaboration with the firm’s other practice groups, we also advise technology companies on a broad range of “life cycle” issues, including formation, seed and venture capital, financing, private and public equity, mergers and acquisitions, real property acquisition and lease negotiation, litigation, and compensation and employment matters.
We assist clients in a wide range of corporate matters, including mergers and acquisitions, private equity and venture capital financing, fund formation, corporate governance, and securities law compliance. Our attorneys represent public companies, early-stage and late-stage private companies, venture capital and private equity funds, hedge funds, and investment banks. Our clients are involved in (among other things) financial services, technology (hardware, software, and technology services), life sciences (pharmaceuticals, medical devices, biotechnology, and healthcare ), oil & gas, consumer products, construction, manufacturing, real property, and the restaurant industry.
We also serve as outside general counsel to a number of privately held companies and regularly counsel publicly and privately held clients on executive compensation and employment issues.
Private Equity and Venture Capital
We represent private equity and venture capital firms and portfolio companies in financing and acquisition transactions. Our services to funds and their managers include: fund formation; assistance with initial and follow-on investments; corporate governance issues for portfolio companies; and the negotiation and implementation of various exit strategies, such as the sale of the company, an IPO or other public offering, a private refinancing, or the secondary sale of the fund’s investment interest. We counsel funds and their managers with respect to regulatory matters under the Investment Advisers Act of 1940, the Investment Company Act of 1940, the Dodd-Frank Wall Street Reform and Consumer Protection Act, the Financial Services and Markets Act (U.K.) and the Alternative Investment Fund Managers Directive (EU), and other financial regulations. We also advise funds and their managers in their various activities and obligations as investors in public and private companies.
We assist managers, funds, and their portfolio companies in transactions with investors and co-investors, and in their strategies for financing and growth, including acquisitions, distressed debt transactions, and public and private offerings.
We also help startup and emerging companies prepare for and negotiate initial rounds of investment and provide advice on all aspects of their business. Our entrepreneurial culture, flexible approach, and understanding of evolving market terms enable us to craft solutions that will meet the needs of growing companies.
The Start Up Nation boasts more innovation than virtually anywhere else, and the attorneys who comprise Cohen & Gresser’s Israel practice believe that deserves cutting-edge representation.
We represent clients in Israel doing business in the U.S. and international clients doing business in Israel, including public companies, early-stage and late stage private companies, and universities. Our clients work across Israel’s predominant industries including technology (both high tech and FinTech), biomaterials, defense, telecommunications, consumer products, agribusiness, and energy. Our solid grasp on Israeli culture and the Israeli business landscape combined with our legal knowledge and technical skills make us well-positioned to successfully advocate for our clients on a wide variety of cross-border matters.
We take pride in our multi-disciplinary team’s ability to collaborate cohesively to provide representation regarding a broad range of corporate transactions, patent, trademark and other IP-related matters, privacy and data protection matters, and regulatory, investigative, and white collar defense matters, among others.
Karen Bromberg, chair of the firm’s Intellectual Property & Technology group and head of the U.S. Global Privacy & Data Security practice, leads the Israel practice and regularly travels to Tel Aviv.