Chinese Website

Communications Center

Two Coats + Bennett attorneys named Super Lawyer Patent Attorneys by Thomson Reuters

Cary, NC:  Coats + Bennett PLLC is proud to announce that founding members Larry Coats and David Bennett have been named in Thomson Reuters 2017 Super Lawyers list within the Intellectual Property category.  Having a combined total of more than 60 years’ experience, Thomson recognized them as being at the top of their field regarding patents, trademarks, copyrights, and infringement litigation.  Coats + Bennett PLLC is repeatedly recognized for exemplary service to clients locally and worldwide for the safeguarding of business assets and protecting competitive advantage. Coats + Bennett PLLC specialize in protecting innovation within a broad range of industries including Wireless Telecommunications, Chemical, Environmental & Wastewater, Mechanical Arts, and Textiles. 

“I am extremely proud of my friends and business partners, Larry Coats and Dave Bennett, for receiving this honor” said David Kalish, managing partner Coats + Bennett, P.L.L.C. “Larry and Dave are always striving to provide the highest quality work for the benefit of their clients. That their peers recognize this and selected them among the best for their understanding of patents, trademarks, and copyrights is a testament not only to the service they provide to their clients, but to their standing in the legal community.”

For more information regarding the Super Lawyer selection process, please visit the Super Lawyers official website.

TIME TO UPDATE EMPLOYMENT AND CONFIDENTIALITY AGREEMENTS IN VIEW OF NEW TRADE SECRETS LAW

A new federal law on trade secrets has recently been enacted that should require a change in non-disclosure and employment agreements that address confidential information.

The Defend Trade Secrets Act was signed into law in May of this year.  This new law provides for trade secret misappropriation to be brought in federal court according to the provisions of the new law.  Trade secret misappropriation was previously a state law issue covered by the laws of the particular state where the misappropriation occurred. 

The new law defines three requirements for information to be considered as a trade secret: the information must be secret; the owner of the information must have taken reasonable measures to keep the information secret; and the information has value to the owner when it is kept as a secret.  The new law provides for the owner to recover damages and an injunction if the information is stolen.  For egregious situations, the owner may also obtain enhanced damages up to two times the awarded amount as well as to collect their attorney fees.

The new law provides immunity for an employee who discloses the information when reporting a possible trade secret misappropriation.  This whistleblower immunity provides for the employee to disclose the information to a government official or an attorney during the course of reporting the possible misappropriation.  If an employee is not made aware of this immunity and later takes or discloses a trade secret, the employer is not eligible to collect enhanced damages or their attorney fees.  Therefore, confidentiality and employment agreements should include a clause explaining the immunity to the employee.

The new law also includes other provisions, including the possibility of seizures, the relationship with existing state trade secret laws, the definition of an employee, employees that change jobs and misappropriation that occurs outside of the United States.

Please contact us if you would like more information on this new law.

GPNE v. Apple: Shot in the Foot By Your Own Specification

The Federal Circuit recently decided GPNE Corp. v. Apple Inc. in favor of Apple, affirming the decision of the district court that certain Apple products did not infringe GPNE's patent US 7,570,954.  GPNE, page 2.  The claims of the '954 patent are generally directed to a "node" for sending and receiving messages.  Id.  GPNE appealed the decision of the district court, alleging that the district court's construction of the term "node" as a "pager with two-way data communications capability that transmits wireless data communications on a paging system that operates independently from a telephone network" was improperly narrow.  Page 6.

Absent further facts, one might be initially disturbed that the district court would take it upon themselves to construe the term "node" so narrowly.  In particular, one might have the view that if GPNE had intended to specifically claim such a pager, they could have explicitly written the term "pager" into their claims.  Indeed, other patents of the same family did just that, thereby implying that something other than a mere pager was intended to be claimed by the '954 patent.  Page 7.  While GPNE's specification only used the term "node" in the Abstract, Title, and Claims (and instead uses the term "pager" over 200 times throughout the specification), claims are supposed to be construed according to how one of ordinary skill in the art would understand them in view of the specification.  Pages 7-8.  It stands to reason that one of ordinary skill in the art understands the difference between the more general concept of a network-based node and the more specific pager embodiment used by the Court.  This is likely true even if the specification discusses pager-based embodiments at length and only sparingly refers to a node as a more general embodiment of the overall invention.  Simply using one type of device as a representative embodiment for explaining the more general invention would not likely justify the Court's construction of a "node" this narrowly.

Instead, it is a single line in the specification of GPNE's patent that makes the Court's narrow construction of a "node" unsurprising.  Towards the end of GPNE's specification, the '954 patent apparently summarizes the overall specification, stating "[t]hus, the invention provides a two-way paging system which operates independently from a telephone system for wireless data communication bewteen users."  Col. 14 lines 14-16 (emphasis added).  In my view, this sentence is the critical fact in this case.  The patent does not say that particular embodiments of the invention provide such a system.  Rather, GPNE clearly states that "the invention" GPNE has applied for provides a two-way paging system and operates independently from a telephone system.  Therefore, it logically follows that if the allegedly infringing device does not provide a two-way paging system which operates independently from a telephone system, the allegedly infringing device is not operating according to GPNE's invention.  Consistent with this logic, the Federal Circuit affirmed the district court's narrow construction of the term "node" as requiring these paging-specific features.  GPNE pages 8-9.

This case underscores the importance of carefully drafting the specification.  Yes, an ordinarily-skilled engineer would likely understand that other forms of computing devices would be just as suitable for implementing various embodiments of GPNE's invention.  However, a Court can, and often does, take blanket statements about "the invention" as a disclaimer of all other embodiments (i.e., a disclaimer of embodiments that are outside such blanket statements).  Unfortunately, the potential for such statements to narrow the scope of otherwise seemingly broad claims is not always easily discerned from a quick reading of a patent.  Indeed, a single sentence buried at the end of the specification can decimate the value of your patent, in some cases.

Will Pagán is an award-winning patent attorney and engineer, nationally-recognized tech-industry veteran, and former IBM Master Inventor.  At Coats + Bennett, he primarily practices patent law with a substantial technical focus on software, computing devices, and telecommunications.  He also assists clients with their trademark, copyright, licensing, and infringement issues.  His bio can be found here.

Will Pagán is Honored by NC Lawyers Weekly as a 2016 Leader in the Law

It’s no surprise to us that Will Pagán has been recognized as one of the 2016 Leaders in Law by NC Lawyers Weekly.  The award honors attorneys licensed and practicing law in the state of North Carolina who go above and beyond in their profession and their community.

Will is an award-winning patent attorney and engineer, nationally-recognized tech-industry veteran, and former IBM Master Inventor.  At Coats + Bennett, he primarily practices patent law with a substantial technical focus on software, computing devices, and telecommunications.  He also assists clients with their trademark, copyright, licensing, and infringement issues.  Significantly, Will’s leadership throughout his storied legal and engineering careers has been marked by committed volunteer service and mentorship.

Will's full biography can be found here    Bio for Will Pagan 

leaders in law

 

 

Will Pagán Receives Commander's Commendation Award

Congratulations are in order for Will Pagán, who recently received the Commander's Commendation Award (Wing) from the Civil Air Patrol (CAP), United States Air Force Auxiliary.

CAP is congressionally-chartered to provide emergency services (e.g., air/ground search and rescue, disaster relief), aerospace education, and youth programs to the public.  As a volunteer member and Captain in the CAP Legal Officer Corps appointed to the NC Wing, Will provides counsel on a wide variety of legal issues at the local, state, and national level.  The Commander’s Commendation Award is presented to those who show “outstanding duty performance where achievements and services are clearly and unmistakably exceptional when compared to similar achievements and service of members of like rank and responsibility.”  CAPR 39-3(B)(9)(f).

“We are proud of the contributions Will makes to the public, as well as the recognition he has received from CAP,” said David Bennett, Managing Partner at Coats + Bennett, PLLC, in response to the good news.  “It does not surprise me that CAP sees what we at Coats + Bennett see: a talented, resourceful, and motivated attorney.”

 

Will's full biography can be found here    Bio for Will Pagan 


 

Web Analytics