Compelling Rationale for Producing Proprietary Products in U.S. Found in USTR’s Special 301 Report on IP Protection and Enforcement Abroad (Part I)

While the current Trump Administration has based its global trade war on trade imbalances stemming from unfair trade practices of foreign countries, its weapon of choice—increased tariffs—is designed to encourage businesses to relocate manufacturing operations to the U.S., thereby boosting American employment and industrial capacity. The U.S. Trade Representative’s 2025 Special 301 Report, issued on April 29, provides an independent justification for onshoring or reshoring manufacturing, namely the failure of certain trading partners to adequately protect and enforce intellectual property (IP) rights of U.S. IP holders within their borders.

The Special 301 Report is an annual report that evaluates the adequacy and effectiveness of IP protection and enforcement among U.S. trading partners. USTR requested written submissions from the public through a notice published in the Federal Register on December 6, 2024. USTR later conducted a public hearing that provided the opportunity for interested persons to testify before the interagency Special 301 Subcommittee of the Trade Policy Staff Committee (TPSC) about issues relevant to the review. The hearing featured testimony from many witnesses, including representatives of foreign governments, industry, and non-governmental organizations.

WhatsApp? A Legally Binding Contract….

By Carlton Daniel and Paul Jinks on May 9, 2025 Posted in Contract, Cybersecurity, Intellectual Property, IP Litigation, Judiciary, Payment Terms, Technology, UK

The authors wish to thank Royce Clemente for his contributions to this post.

In the recent case of Jaevee Homes Limited v. Mr Steven Fincham, the English High Court has handed down judgment that an exchange of WhatsApp messages between the parties formed a basic and legally binding contract, providing a reminder to parties involved in pre-contract discussions to exercise caution.

Background facts

The case centred around a contractual dispute between a property developer, Jaevee Homes Limited (“Claimant”) and a demolition contractor, Steve Fincham, trading as Fincham Demolition (“Defendant”) who the Claimant had hired to undertake demolition works. The parties exchanged WhatsApp messages in April-May 2023 regarding the work with the Claimant confirming the job via WhatsApp on 17 May 2023. On 26 May 2023, a formal subcontract and purchase order was emailed on the behalf of the Claimant to the Defendant however, it was never signed or acknowledged.

The key issue in dispute was determining the exact terms of the contract between the parties, particularly in relation to the payment terms. The Claimant argued that the terms of the written subcontract which incorporated its standard terms and sent to the defendant on 26 May 2023 were binding. On the other hand, the Defendant believed that a basic contract had been formed as a result of WhatsApp messages exchanged on 17 May 2023.

AI Circuit Breakers in Legal Contracts: A Safeguard for Business

By Samuel Tibbetts on May 8, 2025 Posted in Artificial Intelligence, Cybersecurity, Data Breach, Data Protection, Intellectual Property, Metaverse, Technology

As artificial intelligence becomes increasingly integrated into business operations, IT contracts covering the provision of AI systems are evolving to include critical safeguards. One emerging concept is the AI circuit breaker, a contractual mechanism that provides for an intervention, or override, where an AI system exhibits undesirable or harmful behavior.

When contracting for AI, businesses should look to proactively include these safeguards in their contracts to mitigate against the risks of AI-driven processes causing unintended harm.

What Is an AI Circuit Breaker?

The Potent Remedies Available Under the DTSA on Full Display in Insulet

By Steven Auvil on May 6, 2025 Posted in Designs, Healthcare, Intellectual Property, IP Litigation, Life Sciences, Life Sciences Biotech Pharma, Patent Litigation, Patents, Pharma, Technology, Trade Secrets, US

In Insulet Corporation v. EOFlow Co., Ltd. et al., after a month-long jury trial, a federal court in Boston dropped the hammer on an insulin patch pump producer for misappropriating the trade secrets of its competitor. The jury found that EOFlow, a South Korean company, its U.S. subsidiary, and several individual defendants, including former employees of Insulet, misappropriated several different categories of Insulet trade secrets. The jury awarded Insulet $452M in damages for the misappropriation, though the court later reduced that amount to $59.4M when Insulet elected to forgo the larger award in favor of a permanent injunction. The decision highlights the high risk associated with hiring former employees of a competitor to design and develop a competing product.

In many ways, Insulet depicts a common business story. Insulet saw a need to improve insulin delivery to millions of Americans suffering from diabetes. After five years of research and development and the investment of hundreds of millions, Insulet obtained FDA approval for its wearable Omnipod insulin delivery system. In doing so, Insulet overcame many technical challenges to produce a safe and effective product whereas other would-be competitors had failed.

USPTO Expedites Patent Issuance: Things To Do Before Paying the Issue Fee

By Janice Rice and Ololade Bello on May 2, 2025 Posted in Intellectual Property, Patents, US, USPTO

In an effort to offer customers better service, the United States Patent and Trademark Office has been modernizing various aspects of their operations. One result of the modernization and efficiency efforts relates to expedited patent issue dates. On April 15th, the Patent Office announced that ― starting on May 13th, 2025 ― it will be accelerating the issue dates for patents, reducing the time between receiving an issue notification and issue date to approximately two weeks. For applicants navigating the patent process, these changes come with both new considerations and opportunities.

Background

Federal Circuit Limits Use of Applicant Admitted Prior Art in Inter Partes Reviews

By Alex Wolcott and Victoria Smith on April 30, 2025 Posted in Intellectual Property, IP Litigation, Judiciary, Patent Litigation, Patents, PTAB, US, USPTO

As provided by statute at 35 U.S.C. § 311(b), a petitioner in an inter partes review (IPR) may challenge the claims of a patent “only on the basis of prior art consisting of patents or printed publications.” Does this provision permit IPR challenges based on Applicant Admitted Prior Art (AAPA) ― art identified in the patent as previously known ― in combination with a patent or printed publication? The Federal Circuit recently announced its decision in Qualcomm Inc. v. Apple Inc., clarifying that AAPA is not a “patent[] or printed publication[]” under the statute, and that combining AAPA with a patent or printed publication does not shield the use of AAPA from violating 35 U.S.C. § 311(b) in a petition for IPR.

Artificial Intelligence and Our Continuing Journeys in Alice’s Wonderland: Practice Points from Recentive Analytics, Inc. v. Fox Corp.

By Michael Lew on April 25, 2025 Posted in Artificial Intelligence, Data Protection, Intellectual Property, IP Litigation, Judiciary, Patent Litigation, Patents, Technology, Telecoms, US

If you’re a patent practitioner who works with innovation related to artificial intelligence, you’ll want to consider the Federal Circuit’s recent decision in Recentive Analytics, Inc. v. Fox. Corp. This decision is the first to explicitly consider patent eligibility in the context of the use of artificial intelligence.

The Federal Circuit affirmed the district court’s dismissal of Recentive’s complaint, holding that the claims were not eligible under Section 101. “This case presents a question of first impression: whether claims that do no more than apply established methods of machine learning to a new data environment are patent eligible. We hold that they do not.”

This case involved patents that addressed the scheduling of live events and optimizing network maps—in particular, what programs or content are displayed by a broadcaster’s channels in different geographic markets at a particular time. The district court dismissed the patent owner’s complaint for infringement because it found the patent claims were directed to ineligible subject matter under 35 U.S.C. § 101.

Whither Discretionary Denials? Read the Tea Leaves, or Follow the Bread Crumbs? (Part II)

By Victoria Smith and Frank Bernstein on April 23, 2025 Posted in Intellectual Property, IP Litigation, Patent Litigation, PTAB, US, USPTO

In Part I of this set of blogs, we discussed the impact of the rescission of former USPTO Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Patent Trial and Appeal Board. We also discussed Chief Judge Boalick’s Guidance Memorandum on the rescission.

In Part II, we examine a new interim procedure, instituted March 26, 2025, for briefing of discretionary denials. This new procedure radically changes how a patent owner whose patent is the subject of an IPR or post-grant review petition can raise discretionary denial issues prior to the PTAB’s decision whether to institute a proceeding. The new procedure bifurcates discretionary denial issues, including Fintiv issues, from merits and non-discretionary denial issues, and delegates to the USPTO Director the determination of whether to discretionarily deny a petition.

The Old Procedure

Federal Circuit Upholds Major Trade Secrets and Contract Damages Award in Dispute Stemming from Failed Merger Talks

By Steven Auvil on April 22, 2025 Posted in Contract, Data Protection, Intellectual Property, IP Litigation, Judiciary, Technology, Trade Secrets, US

The recent Federal Circuit decision in AMS-OSRAM USA Inc. v. Renesas Electronics America, Inc. offers valuable lessons related to failed merger attempts, specifically the vast exposure that can result from a party breaching its confidentiality obligations. This protracted case—lasting more than 15 years and involving multiple trials and appeals—also highlights important principles about trade secret and contract remedies for the unauthorized use of proprietary technology.

After multiple trials and appeals, the Federal Circuit substantially affirmed an Eastern District of Texas judgment against the defendant, fka “Intersil,” for misappropriating the trade secrets of the plaintiff, fka “TAOS.” The dispute arose out of failed merger talks between the parties in 2004. The merger discussions were covered by a confidentiality agreement signed in June of 2004, and that agreement expired in June 2007. During the merger discussions, TAOS gave Intersil confidential business information regarding its ambient light sensor technology (the “CBI”). Shortly after the discussions ended in August of 2004, TOAS launched a product embodying the CBI and, contrary to the confidentiality agreement, Intersil began using the CBI to develop competing products, denoted “Primary Products” and “Derivative Products.” Intersil later sold sensor chips to Apple based on the CBI, after being approved as a vendor for specific products between September 2006 and March 2008. TAOS sued Intersil in November 2008 for patent infringement (a claim later dropped), for trade secret misappropriation, and for breach of the confidentiality agreement.

Whither Discretionary Denials? Read the Tea Leaves, or Follow the Bread Crumbs?(Part I)

By Victoria Smith and Frank Bernstein on April 21, 2025 Posted in IP Litigation, Judiciary, Patent Litigation, Patents, PTAB, Technology, US, USPTO

Recent actions from the USPTO have engendered a great deal of discussion among the bar practicing before the Patent Trial and Appeal Board. On February 28, 2025, acting Director Stewart rescinded former Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Board. On March 24, 2025, Chief Judge Boalick issued a Guidance Memorandum on the rescission. On March 26, 2025, Director Stewart issued a memorandum on an interim procedure in which institution decisions are bifurcated between discretionary considerations and merits and other non-discretionary statutory considerations. Here, we examine the potential effects of Director Stewart’s rescission and the subsequent Boalick Guidance on post-grant proceedings. We will examine Director Stewart’s Guidance in Part II.

Rescission of the Vidal Memo

In rescinding the Vidal Guidance, the USPTO restored the precedence of Fintiv and Sotera without modification, specifically identifying those two Board decisions in its rescission announcement. The USPTO did not provide any comment.