Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. The Ninth Circuit Court of Appeals recently held that conduct that pre-dates the passage of the Defend Trade Secrets Act (DTSA) in 2016 can be actionable under the DTSA if the conduct continued after the DTSA became law. Some state laws have provisions that prevent continued violation arguments as a means of avoiding the statute of limitations, but the DTSA has no such language, suggesting that a continuing wrong argument to toll or avoid a statute of limitations is available under the DTSA. The takeaway here is that the DTSA may provide opportunity to file lawsuits for conduct that would otherwise be time-barred under some state trade secret statutes.

2. In a recent decision by the Patent Trial and Appeal Board (PTAB) in Ex Parte Shelton (Appeal No. 2020-1178), a patent examiner’s obviousness determination was reversed as being the product of improper hindsight. Hindsight is when a patent examiner (or court) uses the claimed invention as a template to piece together prior art that seems to show that the invention would have been obvious to a person of skill in the art. Here, the PTAB rejected the examiner’s rationale for combining two prior art references, and stated that, “because the Examiner has not articulated a persuasive reason supported by rational underpinnings for combining the referenced teachings in the manner proposed, we conclude that it is more likely than not that the Examiner improperly resorted to hindsight in reaching a conclusion of obviousness.” This decision is potentially helpful to counter the frequent obviousness objections received during patent prosecution, particularly those that seem to have been constructed using hindsight.

3. A recent decision out of the Northern District of California found that certain lines in design patent drawings were seams rather than contour lines. Design patent drawings are often combinations of boundary/seam lines and contour lines/surface shading. In this case, which was a fight over trash can designs, the plaintiff argued that the lines in question were contour or surface shading lines; whereas, the defendant argued they were seam or boundary lines. Because the lines looked like seam or boundary lines and were not distinguishable from other lines that were clearly seam or boundary lines, the Court sided with the defendant and found that the lines were not contour or surface shading lines, but seam or boundary lines. The takeaway here is to make sure your patent draftsman distinguishes boundary lines from contour lines.