Weekly IP Takeaways

In IP Blog

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

1. In a recent opinion from the Northern District of Illinois, the Court allowed plaintiff Sioux Steel discovery of factual details and technical matters related to a defendant’s designing around the patented technology. The Court was clear to draw lines and prevent discovery into attorney-client communications, as well as attorney work product and opinions related to the design arounds. The issue in the case arose because the defendant decided to use as an expert in the case one of its consulting engineers in connection with the design around. Not surprisingly, the plaintiff sought discovery related to the design around from the consultant, and the defendant raised privilege objections to prevent disclosure. The result is mixed, but makes clear that factual and technical information regarding a design around is discoverable. The takeaway here, however, is to be very careful before you decide to use you own employees or consultants as testifying experts. It may create issues with privilege waivers.

2. In a recent opinion from the Third Circuit Court of Appeals, the Court clarified the standards for pleading a trade secret misappropriation claim under the Defend Trade Secrets Acts (DTSA). Applying the Twombly/Iqbal standard, the Court said that to adequately plead a trade secret misappropriation claim under the DTSA, a plaintiff must set forth the trade secret with reasonable, not exacting, specificity, sufficient to place the defendant on notice of the nature of the trade secret, but beyond mere generalities about what is known in the field. The Third Circuit also clarified that a complaint will pass muster if it sets forth sufficient factual matter to demonstrate the defendant’s use of the trade secret. The Court did not require detailed and specific proof of such use at the pleading stage. The takeaway here is that, depending on the state law in play, a DTSA claim may have a lower pleading standard such that it makes sense to pursue a DTSA claim in addition to, or in place of, a state law misappropriation claim.

3. In furtherance of an exceptional case determination in a patent case, as previously covered on our blog (Takeaway No. 2), the Southern District of California issued an attorneys’ fees award, of $2,786,185.29 in favor of the Domino’s Pizza defendants. The notable issue in the decision is that the Court took a more “holistic approach” to the fee award under 35 U.S.C. 285, and awarded fees for a covered business method patent review proceeding in the Patent Trial and Appeal Board, the appeal thereof, an appeal of a summary judgment order in the case, and the main district court case itself. The takeaway here is when seeking or seeking to avoid a fee award, there may be a trend afoot that allows for more than the fees simply from the district court case to be included in a fee award. One question is whether exceptionality needs to be found for each separate proceeding.