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Intellectual Property Report

Client Updates

Federal Circuit Upholds Landmark Attorneys’ Fee Award at Government’s Expense
Ohireime Eromosele*, Jennifer Tempesta
On May 1, 2020, in Hitkansut LLC v. United States, the U.S. Court of Appeals for the Federal Circuit (“CAFC” or “the Federal Circuit”) affirmed a $4.4 million attorneys’ fee award issued by the Court of Federal Claims (“CFC” or “the Claims Court”) against the federal government. The three-judge panel’s precedential opinion, penned by Chief Judge Prost, upheld what is likely the first time an award for attorneys’ fees has been granted under 28 U.S.C. § 1498(a). Appellees, Hitkansut LLC and Acceledyne Technologies, Ltd., LLC, secured the first-in-kind award upon motion after the CFC found the government liable for patent infringement.
To read the full article, click here.
*Ohireime Eromosele, a Baker Botts Law Clerk, assisted in the preparation of this article.

USPTO Increases Patent Fees
Dr. Michael Sartori, Matthew Welch
On August 3, 2020, the U.S. Patent and Trademark Office (USPTO) announced that many of their official patent fees will be increasing effective Friday, October 2, 2020. While some fees are not being changed, the ones that are being changed are being increased between 4% and 213% with a median change of 5% and with an average change of 9%. The changed fees impact application filing, prosecution, and post-issuance, as well as post-grant proceedings.
To read the full article, click here.

Timing IPRs To Avoid Discretionary Denial Or Damages
Syed Fareed, John Williams
When a defendant is sued for patent infringement in district court or is the respondent in a U.S. International Trade Commission investigation, one important decision it must make is whether to challenge patentability before the Patent Trial and Appeal Board in a parallel inter partes review.
Equally important, however, is the decision of when to file the IPR petition. Even if the year from service has not passed, a defendant that waits too long to file its IPR petition runs the risk of discretionary denial by the PTAB under the factors identified in the recent precedential opinion in Apple Inc. v. Fintiv Inc.
To read the full article, click here.
* This article was previously published in Law360 on August 7, 2020.

How USPTO Examiner Type Affects Patents: Part 4
Dr. Michael Sartori, Matthew Welch
We gathered data from the LexisNexis PatentAdvisor database for each year from 2009 to 2019, for examiners in each of eight nondesign Tech Centers at the USPTO from the LexisNexis PatentAdvisor patent prosecution analytics database.
This is the final article in a four-part series. The first part discussed the examiner types (so-called green, yellow and red examiners) and their effect on the number of patents issued each year. The second part explored the relationship between the examiner types and the effort required to obtain a patent, and the third part covered how examiner type affects after-final practice.
To read the full article, click here.
*This article was previously published in Law360 on August 21, 2020.

Bilateral Data Sharing Agreement Between U.S. and UK Enters into Force; What Does it Mean for TMT Companies?
Brendan Quigley, Neil Coulson, Laura Santos-Bishop
Last fall, the U.S. and UK entered into the first bilateral agreement pursuant to the Clarifying Lawful Overseas Use of Data Act of 2018 (the “Bilateral Agreement”). The Bilateral Agreement allows, in some circumstances, the U.S. and the UK to demand electronic data directly from tech companies located in the other country.
The U.S. Congress had until July 8, 2020 to enact a joint resolution of disapproval. It has not, so the Bilateral Agreement is now in effect. What does the Bilateral Agreement mean for technology, media and telecommunications (“TMT”) companies? In this article, we provide guidance to TMT companies that may be on the receiving end of requests pursuant to the Bilateral Agreement.
To read the full article, click here.

Christopher Palermo Joins Baker Botts in Palo Alto
We are pleased to announce that Chris Palermo has joined the Firm as a partner in our Palo Alto office. Chris brings comprehensive and impressive IP skills to Baker Botts, having worked with a range of leading technology clients on many of their most complex matters. He joins us from IP boutique Hickman Palermo Becker Bingham L.L.P., where he was a founding and named partner.
Chris has more than 25 years of patent prosecution and counseling experience, primarily advising companies in the fields of artificial intelligence and machine learning; e-procurement; security; networking; telecommunications; object-oriented software; and the internet. He also manages several large international trademark portfolios and selected copyright and open-source licensing matters.
To view Chris' bio, click here.

 

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