Sam Bergstrom

Great summary by Tangibly Inc's Chris Buntel of the recent ALIFAX v. ALCOR Scientific decision. Some snippets: 📌 The Federal Circuit said that “Alifax not only failed to describe the alleged signal acquisition trade secret with sufficient detail but also failed to identify its proper scope.” 📌 Alifax alleged that the signal acquisition trade secret is “how to acquire photometric signals from a blood sample.”…. But this definition only provides a high-level summary of the purpose of the alleged trade secret without describing it in detail.” 📌 The trade secret owner’s “burden is to describe the trade secret in sufficient detail to show that each element of a trade secret are met”, which Alifax did not do. The Alifax case is but the latest in a series of court holdings requiring trade secret owners to be increasingly specific about what their misappropriated trade secret actually is. 

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Listen in to this podcast with our Tradespace CEO Alec Sorensen to see how we can help you with context-enabled decision making for your IP strategies. Exciting content!

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Join the IP Chat Channel™ on Thursday, June 20 at 1pm ET for a webinar on Design Patent Obviousness Analysis. On May 21, 2024, the Federal Circuit sitting en banc issued its opinion in LKQ v. GM, striking down the forty-plus year-old Rosen-Durling test for design patent obviousness, and announcing a new framework based on Graham v. John Deere. This webinar will explore where stakeholders go from here. The discussion will include a comparison of how the Graham analysis has affected utility patent determinations of obviousness, and what this could mean for design patent applications during prosecution. Panelists will also consider how the new framework may affect design patent litigation, including claim construction, discovery, summary judgment, and trial. Finally, speakers will consider whether a new system for protecting designs could offer an alternative to the uncertainties created by the LKQ decision. Our panel includes Elizabeth Ferrill (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP), Brendan O'Dea (Womble Bond Dickinson (US) LLP) and Perry Saidman (Saidman Design Law Group). IP Chat Channel™ webinars are free for IPO members. Advance registration is required. CLE offered in most states. Register online at webinars.ipo.org.

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Join the IP Chat Channel™ on Thursday, June 20 at 1pm ET for a webinar on Design Patent Obviousness Analysis. On May 21, 2024, the Federal Circuit sitting en banc issued its opinion in LKQ v. GM, striking down the forty-plus year-old Rosen-Durling test for design patent obviousness, and announcing a new framework based on Graham v. John Deere. This webinar will explore where stakeholders go from here. The discussion will include a comparison of how the Graham analysis has affected utility patent determinations of obviousness, and what this could mean for design patent applications during prosecution. Panelists will also consider how the new framework may affect design patent litigation, including claim construction, discovery, summary judgment, and trial. Finally, speakers will consider whether a new system for protecting designs could offer an alternative to the uncertainties created by the LKQ decision. Our panel includes Elizabeth Ferrill (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP), Brendan O'Dea (Womble Bond Dickinson (US) LLP) and Perry Saidman (Saidman Design Law Group). IP Chat Channel™ webinars are free for IPO members. Advance registration is required. CLE offered in most states. Register online at webinars.ipo.org.

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The USPTO has quietly used the MPEP revision process to alter Office of Patent Quality Assurance's mission and procedures. The MPEP Foreword states that "[t]his guidance document is intended only to provide clarity to the public regarding existing requirements under the law and agency policies." The Change Summary indicates that MPEP section 1308.03 was revised to "clarify review of applications under the Quality Assurance program." Because the MPEP no longer provides track changes to easily identify alternations, and because the use of "clarify" is vague and indefinite, I created the attached document to identify the exact *clarifying* changes made to MPEP 1308.03. Clarifications include: (1) Change of OPQA's purpose and mission from: improve patent quality and increase the likelihood of patents being found valid to: collect patent examination quality data used to report patent examination quality metrics and to inform decisions for continuous patent quality improvement. Note that OPQA is now relegated to a data collection and information producing department. Fiscal Year 2023 stats indicate that 16.5% of the reviews actions are not compliant under one or more statutes. (2) Change of OPQA's randomly selected sample from: allowed applications from each examiner to: Office actions on the merits mailed throughout the fiscal year Note this change broadens OPQA review to include Office actions containing rejections and ones containing allowances and appears to include reviews for those end of the year September Office actions. This clarification also means that there is no plan to review work for each individual examiner and that the review is focused on the Office action, instead of a review of all the documents in the application. (3) Change in scope of review from: determining whether any claims may be unpatentable to: determining the action's compliance with patent statutes Note this new review standard does not involve determining whether any claims are properly allowed or rejected under obviousness type double patenting, since that judicially created doctrine is not a statutory requirement. To be clear, this new review standard would identify improperly rejected claims in addition to impurely allowed claims. Other changes: OPQA no longer excludes from their sample applications in which there is a decision by the Patent Trial and Appeal Board or by a court. The Technology Centers are now to promptly decide what action is to be taken and inform OPQA at the nature of that action. This should help "close the loop" so that examiners will be held accountable to addressing any OPQA identified errors and mailing a corrected Office action. #USPTO, #patent, #allowance, #quality, #inventor, #Congress, #GAO, #OIG

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🌟 Exciting Developments in Design Patent Law 🌟 The Federal Circuit has reshaped the landscape for design patent obviousness with its recent en banc decision in LKQ v. GM. In this landmark ruling, the court overruled the previous Rosen–Durling test, offering a new framework rooted in Supreme Court precedent and aiming for greater consistency. The decision reflects a significant departure from prior rigidities, promoting a more flexible approach. While the shift may initially bring some uncertainty, it ultimately underscores the court's commitment to adaptability and statutory compliance. Read more about this pivotal decision in Marshall Gerstein partner Jeremy Kriegel’s recent post on PTABWatch.com. https://bit.ly/3xpgnA6 #DesignPatents #FederalCircuit #PatentLaw #Innovation

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Catch up on Melissa Patterson, Hector Agdeppa, and Mark Catanese's IP blog, "Key Takeaways from Claim Examples in the 2024 AI Patent Eligibility Guidance: A 3-Part Series," which looks at the examples provided with the 2024 AI SME Update in-depth and provides key takeaways for each of the provided examples. To read more, click here: https://bit.ly/4ePz14A #patents #artificialintelligence

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🚨 Patent rendered unenforceable due to USPTO typo! 😱 Court dismisses infringement claims over a simple '267' vs '268' error in terminal disclaimer. Proofreading has never been more crucial in patent law. #PatentLaw #IPLitigation

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As a patent attorney, I find the recent PTAB decision in FreeWheel Media, Inc. v. AlmondNet, Inc. (IPR2024-00414) quite telling. FreeWheel Media’s attempt to challenge claims 1–7 and 9 of AlmondNet’s U.S. Patent No. 7,979,307 B2 through three parallel IPRs was met with a notable denial of institution. The PTAB, exercising its discretion under 35 U.S.C. § 314(a), chose to reject this IPR based on concerns over redundancy and the burden of multiple petitions. Here’s what stands out to me: Redundancy Concerns: The PTAB rightly pointed out that the three petitions were excessive, given that one was already under review in a related case (IPR2024-00413). This decision reinforces the principle that one well-crafted petition should generally suffice unless there are truly extraordinary circumstances. Strategic Filing: This case highlights the importance of strategic decision-making in filing IPRs. Filing multiple petitions can place unnecessary strain on the Board and the opposing party, and might not yield additional benefits. This decision serves as a reminder that effective patent litigation strategy involves more than just filing multiple petitions—it’s about making a compelling case with focused and precise arguments. Follow SethLaw PLLC for more such insights. #SethLaw #TexasLawyers #IPRDefense #PatentLitigation

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When the California legislature returns from its summer recess on August 5, it will have 26 days to pass bills before it recesses for the year on August 31. We are currently tracking 14 privacy and AI-related bills. Here's what you need to know: 1️⃣ One of the bills (dealing with CCPA monetary thresholds) was signed into law on July 15. 2️⃣ The remaining thirteen bills - all of which passed through their chamber of origin - cover a wide range of topics. 3️⃣ The bills include: kid's data (AB 1949), opt-out preference signals (AB 3048), neural data (SB 1223), use of personal information with AI systems (AB 1008 & AB 2877), algorithmic discrimination (AB 2930), and AI transparency (AB 2013 & SB 942). 4️⃣ Six of the bills are currently set for an August 5 hearing in the Senate Appropriations committee. More details - including brief summaries of the bills and their current status - in the below-linked article.

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The USPTO is presenting some great online programming on counterfeits, and I am thrilled to be a part of the panel. Counterfeit board games are a growing problem for both consumers and publishers. Consumers may unknowingly purchase counterfeit games that are of lower quality, missing components, or even dangerous. Publishers lose sales and face damage to their reputation due to counterfeit games. ⚠ Tips for Consumers: Be wary of prices that are too good to be true. Counterfeit games are often sold at a significantly lower price than genuine copies. Inspect the game carefully before purchasing it. Look for signs of poor quality, such as misprints, misaligned components, or low-quality materials. Purchase games from reputable retailers. Avoid buying games from online marketplaces where it is difficult to verify the authenticity of the seller. ⚠Tips for publishers: Register your trademarks and copyrights. This will give you more options against counterfeiters. Work with online marketplaces to remove counterfeit listings. Platforms like Amazon have procedures for reporting counterfeit goods. Educate consumers about the problem of counterfeit games. Let consumers know how to spot counterfeit games and encourage them to purchase from authorized retailers. https://lnkd.in/eydNbppR

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How much of the UK patent court's time is spent on hearings and trials linked to cases with a FRAND element? Answer: ~20% I scraped all ~650 patent court judgments published in the national archives and classified them into FRAND or non-FRAND classes by string matching at least one instance of the term "FRAND". I then extracted from each judgment text: (i) the number of days the associated hearing/trial was listed for and (ii) the character count of the judgment text to use as a proxy for how long the judge spent on the write up. The resulting data is shown in the plots below. The main takeaways: (i) Around 20% of the letters Judges are putting to paper and around 20% of hearing time are linked to cases with a FRAND element. (ii) Judgments appear to be getting longer across the board! #FRAND #litigation #patents

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The Federal Circuit's Rule 36 practice of issuing summary affirmances without opinion in a significant number of patent cases, like ParkerVision v. TCL, has sparked debate. This practice, backed by multiple amicus briefs, raises concerns about judicial transparency, due process, and statutory compliance. Courts play a vital role in providing written explanations for decisions to ensure accountability, facilitate meaningful appellate review, and establish legal precedent. However, the Rule 36 practice bypasses this crucial aspect, leaving parties and the public uninformed. The implications are profound: - Statutory Violation: ParkerVision contends that 35 U.S.C. § 144 mandates the Federal Circuit to issue opinions in appeals from the USPTO. - Transparency & Precedent: The absence of opinions leaves practitioners and inventors without clear insights into the court's interpretation of patent law, creating ambiguity in a field reliant on precise guidance. - National Security Concerns: Amicus briefs underscore how this lack of transparency could impact U.S. innovation, especially in pivotal technology sectors like wireless communications, where foreign entities might exploit patent vulnerabilities. Beyond individual cases, the Federal Circuit's reliance on Rule 36 hampers Supreme Court scrutiny by concealing the legal rationale behind rulings. This opacity affects inventors, businesses, and policymakers and undermines confidence in a system designed to safeguard innovation and economic progress. #PatentLaw #DueProcess #Rule36 #IP #Innovation #USLaw #TechLawyer

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Offline LLMs can work great for patent drafting, but they also have their limitations compared to ChatGPT. This video gives a quick comparison. Are you on team "offline LLM" or team "ChatGPT" for your patent drafting work? 🙋 The video is a snippet from the Powerclaim Seminar where we address exactly the question of model selection and many more. The next seminar is on April 30th, so get your ticket quickly: https://lnkd.in/djeMZKUc

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WOO HOO, you have an offer for a patent agent position at a big firm!  Now what? The hard part is over, you have gone through all the rounds of interviews, met a ton of different people, impressed the partners to the point that they have given you an offer.  You are so close to the finish line! First, remember that this is an offer, not a contract.  An offer is for at-will employment.  An offer cannot possibly list all of the options and opportunities that you will be afforded if you accept the position.  But it should list out the important items: Salary Billable hours Bonus potential Law school options Relocation package Now you may have a bit of leverage for negotiation, but what can you negotiate? Start date Possible sign on bonus Got a trip already planned - let that be known up front Work schedule flexibility Professional development This is where working with a recruiter comes in handy.  We help walk and guide you through the process from start to finish.  Working with a recruiter (especially when you are swamped with everything else) helps ease the process.  We are your guide, your champion and your confidant. Are you ready to be guided through the process?

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From Akin Gump Strauss Hauer & Feld LLP: Upending over 40 years of precedent, this decision is expected to have a significant impact on the landscape of obtaining and enforcing design patents. Design patent owners and challengers alike should follow post-LKQ decisions and the relevant USPTO guidance closely to understand how this more-flexible obviousness analysis will impact design patent invalidity and patentability determinations moving forward. #designpatents #uspto #intellectualproperty #obviousness #patents

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If you’re interested in how advances in AI are impacting intellectual property law and the creation of new IP, I recommend this article by Marc Vockell at The University of Texas System. It is well written and a great place to start on this topic. https://lnkd.in/gqqivjWp #artificialintelligence #technology #AI

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Sharing Mike Borella's deep dive into the problems plaguing USPTO patent application filing system called Patent Center. He concludes: "In an ideal world, the USPTO would be open about these problems, and release a memo along the lines of "We screwed up and here is what we are doing to fix it." But that has not happened. Instead, Patent Center stands as a prime example of institutional incompetence. To be clear, it is not the job of applicants and practitioners to help the USPTO debug its own software -- we have other jobs that are demanding and often require long hours. The USPTO needs to step up." "Without an efficiently functioning web portal, the USPTO cannot achieve its mandate to protect American intellectual property rights. If we are lucky, the next USPTO director will take the necessary steps to fix the most significant Patent Center issues early in their term." Patentdoc Comments: "The entire thing has been a disaster. Sometimes Patent Center does not acknowledge you as the attorney on a case and refuses to even let you file document to existing cases. It thinks you are a general public user looking at the case file. The errors are legion and they invent new ones every few months. EFS was bad enough with its font demands for PDFs. This is far worse. Sometimes I paper file just to avoid Patent Center." "It is shameful how bad Patent Center is. I have had to fax file more for the first time in years (and then wait a month for the filing to show up in the IFW) And it’s just so many idiotic small errors that really add up. A personal favorite: looking at a PCT parent from a US app’s priority tab disallows you from navigating back to the US app! A real stain on the Vidal years." USPTO, Kathi Vidal, Under Secretary of Commerce for Intellectual Property, #patent, #OIG, #GAO, #Congress, #IP, #IT, #software, #innovation, #inventor, McDonnell Boehnen Hulbert & Berghoff LLP

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