A student-run resource for reliable reports on the latest law and technology news
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On August 14, 2014, the U.S. Food and Drug Administration (FDA) issued Draft Guidelines on the direct de novo classification process, a means of accelerating the approval of new types of medical devices posing only low to moderate health risks.[1]  The FDA created de novo classification in 1997, but after the process failed to achieve its purpose of expediting approval, the FDA introduced an alternative de novo process called “direct” de novo.

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Insuring Patents

By Yaping Zhang – Edited by Jennifer Chung and Ariel Simms

Despite its increasing availability, patent insurance—providing defensive protection against claims of patent infringement and funding offensive actions against patent infringers—continues to be uncommon. This Note aims to provide an overview of the patent insurance landscape.

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Defend Trade Secrets Act of 2016 Seeks to Establish Federal Cause of Action for Trade Secrets Misappropriation

By Suyoung Jang – Edited by Mila Owen

Following the Senate Judiciary Committee’s approval in January of the Defend Trade Secrets Act of 2016, the Committee has released Senate Report 114-220 supporting the bill. The bill seeks to protect trade secret owners by creating a federal cause of action for trade secret misappropriation.

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Federal Circuit Flash Digest

By Evan Tallmadge – Edited by Olga Slobodyanyuk

The Linked Inheritability Between Two Regions of DNA is an Unpatentable Law of Nature

HP Setback in Challenging the Validity of MPHJ’s Distributed Virtual Copying Patent

CardPool Fails to Escape an Invalidity Judgment But Can Still Pursue Amended Claims

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Amicus Brief by EFF and ACLU Urging Illinois State Sex Offender Laws Declared Unconstitutional under First Amendment

By Yaping Zhang – Edited by Mila Owen

With the Illinois Supreme Court gearing up to determine the constitutionality of the state’s sex offender registration statute, two advocacy non-profits have filed amicus briefs in support of striking the law down.

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Fed. Cir. Flash DigestBy Colette Ghazarian – Edited by Yunnan Jiang

Evidence of Prior Art Cannot be Excluded for Untimeliness

In Ariosa Diagnostics v. Verinata Health, Inc., 2015-1215, 2015-1226 (Fed. Cir. Nov. 16, 2015), the U.S. Court of Appeals for the Federal Circuit held that evidence of prior art must still be considered by the Patent Trial and Appeal Board in its determination of the validity of the patent even if it is identified after the initial petition stage of an inter partes review. Ariosa Diagnostics filed a petition for inter partes review against patents held by Verinata Health related to prenatal testing products. Ariosa claimed that the patents were obvious in light of three prior-art references, which were not included in its initial petition. The references in question were contained in a brochure that was attached as an exhibit to an expert declaration. Ariosa claimed that the brochure showed the background knowledge a skilled artisan would have possessed about this particular topic. The Board declined to consider this document because, based on the language in its decision, it was not presented along with the initial petition and was only introduced at Ariosa’s expert’s deposition. The Court held that the Board’s decision not to consider the brochure was in error. It held that evidence of prior art can be considered by the Board even though it was not included in the initial petition for review. Since the Court could not determine whether the error was prejudicial or not, the decision was vacated and remanded to the Board.

Consent Decree Still Enforceable Even if Patent Later Found Invalid

In Delorme Publishing Company, Inc. v. International Trade Commission, 2014-1572 (Fed. Cir. Nov. 12, 2015), the Federal Circuit held that the invalidity of a patent could not retroactively eliminate the liability and penalty of an infringer of that patent under a consent decree. DeLorne Publishing Company sued the International Trade Commission (ITC) over its decision to enforce a consent decree prohibiting DeLorne from importing “certain two-way global satellite communication devices, system and components thereof” that infringed on certain patent claims, or gave instructions for users to infringe on the claims. The Court first held that by selling infringing devices containing infringing components with instructions to infringe still violated the consent decree. Next, and more importantly, the Court held that the fact that the patent claims referenced in the consent decree were later found to be invalid did not eliminate DeLorne’s liability and the $6,242,500 civil penalty for its actions while the patent was still valid. In reaching its conclusion, the Court referred to Part 4 of the consent decree, which states “The Consent Order shall not apply to any claim…that has expired or been found or adjudicated invalid or unenforceable.” The Court argued that based on the language in the decree, if the invalidity of a patent were to apply to past infringement, then the inevitable expiration of the patent would as well. This would be an absurd interpretation of the consent decree. The Court affirmed the ITC’s enforcement of the consent decree and the civil penalty against DeLorne.

Description of Pros and Cons of Patent Features Not Required for Negative Claims Limitation

Federal Circuit precedent holds that negative claim limitations in a patent claim (describing a patent by stating what it is not) satisfy the written description requirements for patents when the specification describes a reason to exclude the relevant limitation. Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). In Inphi Corporation v. Netlist, Inc., 2015-1179 (Fed. Cir. Nov. 13, 2015), the Court extended this precedent by holding that “properly describing alternative features – without articulating advantages or disadvantages of each feature” – would constitute a reason to exclude the relevant limitation. In this case, Netlist, a manufacturer of computer system memory modules, amended one of its patents to include a negative claim limitation that excluded three types of signals from the description of its patent. Inphi argued that simply stating “DDR chip selects that are not CAS, RAS, or bank address signals” was not adequate under Santarus. Inphi argued that the phrase “reason to exclude” requires more than properly describing alternative features of the patented invention, while Netlist disagreed. The Court sided with Netlist, holding that Santarus did not create a heightened written description standard for negative claim limitations, beyond what is required by statute (35 U.S.C. § 112). All that is required to satisfy the written description standard of § 112 for negative claim limitations according to the Court are “properly described alternative features.”

Posted On Dec - 3 - 2015 Comments Off READ FULL POST

Italian FlagBy Shailin Thomas – Edited by Travis West

In October, Italy dropped its opposition to the European Union’s Unitary Patent legislation and joined the 25 other countries that have agreed to the regulations set forth in EU Regulations 1257/2012 and 1260/2012, bringing the Unitary Patent system one step closer to realization.

The Unitary Patent system seeks to streamline and simplify the current patent system in Europe.  Currently, each state issues and enforces its own patents within its jurisdiction, which means that patents must be obtained through each national patent office for Europe-wide protection.  It is possible to obtain a “European Patent” from the European Patent Office (EPO), but this is simply a bundle of national patents, which must be approved by their respective national patent offices — and those nations’ courts are the only available forums for enforcement.  This process is both lengthy and expensive, often costing around €36,000 to secure patent validation in all the EU member states, according to IP Watchdog. The Unitary Patent system would be a comprehensive and alternative process by which the EPO could issue patents that would be enforceable in all of the participating states. A specialized Unified Patent Court would handle litigation arising out of patent disputes.  By creating this single system for the issuance and enforcement of patents, the Unitary Patent legislation hopes to increase efficiency and consistency in intellectual property rights across Europe.

Until recently, Italy had been one of the strongest opponents of the Unitary Patent. Along with Spain, it challenged the legislation in 2013 before the European Court of Justice, claiming that the new regulations would prove detrimental to the social and economic cohesion of the European Union. The challenge, however, proved unsuccessful, and Italy did not join Spain in its subsequent unsuccessful challenge that claimed that the Unitary Patent’s translation policies are discriminatory against those who do not speak one of the system’s three official languages (French, English, and German), into which all patents must be translated.

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Posted On Dec - 3 - 2015 Comments Off READ FULL POST

Hacked By Over-X

By Mila Owen – Edited by Henry Thomas

In the wake of the release of the sixth round of section 1201 exemptions, both the DMCA and the rulemaking process of Library of Congress continue to draw criticisms and concern about practicality, overreaching, and abuse.

On October 27, 2015, the Library of Congress released its sixth round of official exemptions to the Digital Millennium Copyright Act’s (DMCA) Section 1201, which prohibits circumvention of technological protection measures (TPMs). The DMCA, enacted in 1998, criminalizes production and dissemination of technology, devices, or services intended to circumvent measures that control access to copyrighted works (TPMs). Section 1201 makes it a copyright infringement to bypass a TPM, even if this entails no actual infringement of the copyright itself. The Library of Congress grants exemptions to §1201 every three years in a process known as the triennial review, where proponents of exemptions may seek renewal or expansion of exemptions or the granting of new exemptions in order to circumvent TPMs for non-infringing uses.

The IT Law Wiki provides a useful summary of the §1201 exception process.  Notably, in order for an exemption to be granted, the party advocating for the exemption has the burden to prove that the section otherwise interferes with noninfringing use.

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Posted On Dec - 3 - 2015 Comments Off READ FULL POST

Fed. Cir. Flash DigestBy Kayla Haran – Edited by Ken Winterbottom

Court Finds Negative Claim Limitation Meets Written Description Requirements

In Inphi Corporation v. Netlist, Inc., 2015-1179 (Fed. Cir. Nov. 13, 2015), the United States Court of Appeals for the Federal Circuit unanimously affirmed the Patent Trial and Appeal Board’s finding that Netlist Inc.’s amended patent claims met the written description requirements of 35 U.S.C. § 112, ¶1. Netlist amended and narrowed its claims on the patent at issue, introducing a negative claim limitation after the Board’s inter partes reexamination, which was initiated by Inphi Corporation. The Board had previously rejected several of Netlist’s claims as obvious in view of the prior art, but withdrew its rejections after Netlist’s amendment.

The Federal Circuit previously held in Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012) that negative claim limitations require an adequate description of a reason to exclude the relevant limitation, and Inphi argued that Netlist’s amendment failed to provide such reasons. The Board rejected this argument, finding in Netlist’s amended specifications implicit reasons for its exclusions. Inphi appealed the Board’s denial of Inphi’s request for rehearing. The Federal Circuit found that, contrary to Inphi’s arguments, Santarus did not create a heightened written description standard for negative claim limitations. The court affirmed the Board’s decision, holding that properly describing alternative features as Netlist did, even without articulating the advantages and disadvantages of those features, can properly constitute a reason for exclusion under the Santarus standard. For these reasons, the court upheld the Board’s finding that Netlist’s negative claim limitation properly met the written description requirements of 35 U.S.C. § 112, ¶1.

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Posted On Nov - 23 - 2015 Comments Off READ FULL POST

Fed. Cir. Flash DigestBy Patrick Gallagher – Edited by Ken Winterbottom

TOR Project Head Alleges FBI Paid Carnegie Mellon for Hack in Connection with Silk Road 2.0 Investigation

Roger Dingledine, director of the TOR Project, a free online software that protects the anonymity of its users online, claims that the FBI paid Carnegie Mellon University $1 million to reveal the identities of its users as part of the FBI’s Silk Road 2.0 investigation. Silk Road 2.0 was formed as the successor to Silk Road, described by the FBI as a website “designed to enable its users to buy and sell illegal drugs and other unlawful goods and services anonymously and beyond the reach of law enforcement.” Last year, Carnegie Mellon was scheduled to host a speech on how to break the TOR Project’s software at the Black Hat hacker conference; however, the talk was cancelled. Subsequently, an anonymous source provided federal investigators with the IP addresses of online users tied to Silk Road 2.0 raising suspicions that Carnegie Mellon acted as the anonymous source. Dingledine’s accusation further alleges that the hack by Carnegie Mellon was part of a much broader breach made in cooperation with law enforcement in which the institute hacked a large number of TOR Project users, then sifted through their profiles in order to determine which had committed crimes. This allegation, if true, may implicate legal issues regarding online privacy rights.

DOJ Decides Not to Support FCC in Efforts to Preempt States Laws Limiting Municipal Broadband Projects

On Monday, November 9, the Department of Justice announced that it will not support the Federal Communications Commission in its legal efforts to combat state laws that restrict community-based broadband projects. Community broadband projects allow municipalities to establish their own broadband services outside of the private market to ensure access to fast, affordable Internet service.  The current legal battle centers on a February vote by the FCC to “preempt state laws in North Carolina and Tennessee that prevent municipal broadband providers from expanding outside their territories.” The FCC derived its authority for this action from Section 706 of the Telecommunications Act of 1996, which empowers the agency to utilize “measures that promote competition in the local telecommunications market, or other regulating methods that remove barriers to infrastructure investment” in order to “encourage the deployment on a reasonable and timely basis of advanced telecommunications capability to all Americans.” However, such authority is limited by considerations including public policy and necessity.

If upheld, the FCC’s decision could be expanded to apply to 17 other states where similar restrictions on local broadband projects exist. The FCC’s legal brief can be read here. Ars Technica provides further commentary.

D.C. Court of Appeals Permits Continuation of Bulk Domestic Phone Data Collection

Following a ruling Monday, November 10, by Judge Richard J. Leon of the U.S. District Court for the District of Columbia that blocked the bulk collection of domestic phone data by the NSA, the U.S. Court of Appeals for the District of Columbia Circuit stayed the order on Tuesday. The decision was issued in response to an emergency motion to stay by the government, which cited national security concerns if the program were disrupted. The NSA is currently in the process of transitioning to an alternative method of phone data collection that relies on a 4th Amendment probable cause standard. The current surveillance program is set to expire on November 29.

Posted On Nov - 21 - 2015 Comments Off READ FULL POST
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Draft Guideline for

 By Hyeongsu Park - Edited by Erik Mortensen 1. Introduction On August 14, ...

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Insuring Patents

By Yaping Zhang Edited by Jennifer Chung and Ariel Simms Despite its ...

Senate Judiciary Committee

Defend Trade Secrets

By Suyoung Jang – Edited by Mila Owen S.1890 - Defend ...

Flash Digest

Federal Circuit Flas

By Evan Tallmadge – Edited by Olga Slobodyanyuk The Linked Inheritability ...

Illinois Flag

Amicus Brief by EFF

By Yaping Zhang – Edited by Mila Owen On April 6, ...