On June 21, 2016, DoD published a notice in the Federal Register indicating that an advisory committee is seeking information to facilitate its review of 10 U.S.C. §§ 2320 and 2321 regarding rights in technical data and the validation of proprietary data restrictions. This is an excellent opportunity for contractors, Government contracts counsel, and others to provide input into rules that play an important role in DoD procurements involving rights in technical data. The notice requires submission of written comments in the very near future—on or before July 21, 2016. The Panel must submit its final report and recommendations to the Secretary of Defense no later than September 30, 2016. Continue Reading DoD Advisory Committee Seeks Comments on Broad Range of Issues Concerning Rights in Technical Data

iStock_000023483293LargeRecently, GAO denied a protest in which the contractor asserted that the solicitation contained an overly restrictive data rights clause and should have used an alternate clause. Gallup, Inc. provides a useful reminder that contracts may give the Government extensive rights over a contractor’s data and software–and, in many cases, contractors must either accept the data rights provision or opt out of the procurement. Contractors should be familiar with the relevant FAR provisions and the possible allocations of rights—or risk losing valuable rights in intellectual property.   Continue Reading Contractors Are Left with Little Recourse when it Comes to Data Rights

Editor’s note. As this blog focuses on Government contract developments, we are interested in the decisions issued by the Federal Circuit. Although we don’t generally comment on that court’s patent decisions in which the Government is not a party, this week’s important decisions from the Supreme Court regarding Federal Circuit patent cases deserve to be highlighted here. Our colleague, Steve Baskin, provided this timely analysis.

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The Limelight Decision

The Federal Circuit had expanded the theory of induced infringement by allowing a patentee to allege liability for induced infringement if multiple parties committed the steps in a method patent claim. But the Supreme’s Court recently issued decision in Limelight Networks, Inc. v. Akamai Technologies reverses the Federal Circuit’s expansion, and makes clear that induced infringement requires that a single party commit all steps in a method patent claim.

The Supreme Court’s Limelight decision restricts a patent holder’s ability to allege infringement. Specifically, a patent holder will now need to show that a single actor (e.g., an accused infringer or one of its clients) actually performs each of the steps in any asserted method claims. In other words, a patent holder will no longer be able to premise infringement on the combined acts of an infringer and/or infringer’s client(s). This is significant because each of the method claims in the asserted patent requires the step of “initiating a request for desired information from the plurality of data sources,” and a plain reading of this term would suggest that, to the extent this step is performed, it is performed by the infringer’s clients, not the infringer itself. As a result, a patent holder will not likely be able to argue infringement of similar method claims under any straightforward theory of infringement.

In addition, because the Supreme Court’s Limelight decision excludes theories of infringement that rely on the combined acts of multiple actors, an attorney should be able to leverage the decision to head off attempts by a patent holder to subject an alleged infringer’s clients to burdensome discovery requests. In particular, unless a patent holder can clearly articulate an infringement theory in which an alleged infringer’s clients directly infringe these method claims, one will be able to argue that discovery for the clients is irrelevant to their theory of infringement. Note, however, that an alleged infringer may still try to premise any such discovery on alleged direct infringement by its clients on the “use” of systems that allegedly infringe system claims of the asserted patent.

The Supreme Court’s Nautilus Decision

Under the patent laws, the claims of a patent must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which [the applicant] regards as the invention.” 35 U.S.C. § 112, ¶ 2. The failure to meet this statutory requirement renders a patent invalid as being “indefinite.” For years, the Federal Circuit had held that the test for showing that a patent was indefinite was whether the claims were “insolubly ambiguous”—a very high standard for proving indefiniteness and a burden that few patent challengers could meet. In its Nautilus, Inc. v. Biosig Instruments, Inc. decision, the Supreme Court rejected the Federal Circuit’s “insolubly ambiguous” standard as too restrictive, and instead stated that 35 U.S.C. § 112, ¶ 2, requires “that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” According to the Supreme Court’s decision, a patent is invalid as indefinite if its claims, read in light of the patent specification and prosecution history, fail to inform a person of ordinary skill in the art about the scope of the invention.