Monthly Archives: July 2019

Treatise Update: Trade Secrets

Trade Secrets: A Practitioner’s Guide is an indispensable resource that discusses all aspects of protecting trade secrets. It covers what a trade secret is, how it should be protected, and what to do when its secrecy is compromised. Trade Secrets examines in detail what trade secret misappropriation is, how can you prove it in court, how you can protect trade secret information during the course of litigation, and how you can gain appropriate legal and monetary remedies for clients for proven violations. It compares and contrasts trade secret protection with other forms of intellectual property such as copyright, patents, and trademarks.

This release updates and expands the text with new discussions of the law of trade secrets and related topics, including the following:

  • State statutory preemption of common law: The Fifth Circuit, reversing the district court in material part, held that the Louisiana Uniform Trade Secrets Act does not preempt civil law claims for conversion of information that does not constitute trade secrets (Brand Services, L.L.C. v. IREX Corp.). See § 1:5.5, at note 60.1.
  • Patent versus trade secret: In SAP America, Inc. v. Investpic, LLC, the Federal Circuit held that allegedly novel ideas for applying statistical techniques to financial information were unpatentable abstract ideas. If they were protectable at all, they were protectable as trade secrets. See §2:3.4, at note 87.40.
  • Secrecy: In CPI Card Group, Inc. v. Dwyer, the federal district court in Minnesota found that plaintiff CPI did not assure secrecy in emails that included alleged trade secrets. Although it could point to general measures it took to protect confidential information, “CPI has not shown a likelihood of proving that it took reasonable measures to protect the secrecy of the contents of this particular presentation.” See §4:13.1, at note 107.1.
  • Jury instructions: On December 6, 2018, the Florida Supreme Court approved changes in standard form jury instructions for trade secrets misappropriation cases; the new instructions are reproduced in chapter 12. See § 12:11.2, at note 127.1.
  • Remedies—disgorgement: In Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., the Federal Circuit held that a trade secret owner did not have the right to have a jury decide its claim for disgorgement of profits as a remedy for misappropriation. See § 13:3.5, at note 324.14.

This treatise is available on PLI PLUS. If you would like to order a print copy, please contact libraryrelations@pli.edu.

Updated for 2019! Corporate Political Activities Deskbook (2019 Edition)

Corporate Political Activities Deskbook provides a thorough grounding in the law of federal and state campaign finance, pay-to-play, lobbying, and gift compliance. It serves as a practical manual for attorneys who advise corporations about involvement in the political process.

Among the updates in this edition the 2019 Edition are the following:

This Deskbook is available on PLI PLUS. If you would like to order a print copy, please contact libraryrelations@pli.edu.

What’s New for July

We add content to PLI PLUS every month to ensure our subscribers have access to the most up-to-date and relevant secondary source legal documents. Renowned legal experts regularly update our acclaimed Treatises, Course Handbooks, Answer Books, Transcripts, and Forms to reflect recent changes and developments in the law.

Click here to see what we added in July!

AALL 2019: Visit Us at Booth #110!

Practising Law Institute will be at the AALL Annual Meeting & Conference in Washington, D.C. from July 13 – 16. Stop by to chat with our team and learn more about PLI and PLI PLUS. We know with all the interesting sessions and networking events taking place, conference schedules get booked fast—so save some time to visit us at the PLI booth!

You can find us at booth #110, where you can enter our raffle giveaway for an Amazon Echo Pro. Be sure to see a demonstration of PLI PLUS, learn about the latest enhancements to the platform, as well as new titles published by PLI Press.

We hope to see you at our Librarian Advisory Breakfast on Sunday, July 14th at 7:30am. 

Treatise Update: Faber on Mechanics of Patent Claim Drafting

More patent applications are rejected because of claim drafting flaws than because of problems with inventions. A trusted working tool for more than two decades, Faber on Mechanics of Patent Claim Drafting spotlights proven claim drafting practices and techniques that have been firmly established by patent authorities and custom. Faber on Mechanics of Patent Claim Drafting also provides full coverage of U.S. Supreme Court and other court decisions critical to claim drafting.

In the latest release, author Robert C. Faber updates and expands his treatise with practical information and commentary on a variety of issues affecting patent claim drafting. Among the topics covered are the following:

  • Patent Office guidance: In November 2018 and January 2019, the USPTO issued updated guidance memorandums for examiners and administrative patent judges relating to (1) subject matter eligibility of patent claims under 35 U.S.C. § 101 and (2) examination of functional claim limitations under 35 U.S.C. § 112. The author highlights important points from these documents. See Chapter 1. Statutory Provisions—Some Basic Principles.
  • Preamble: The Federal Circuit notes that a preamble limits the invention if it recites an essential structure or step or is necessary to give life, meaning, and vitality to the claim. A preamble is not limiting when a patent claim defines a structurally complete invention in the claim body, which is after the preamble, and the preamble only states a purpose or intended use for the invention claimed (Acceleration Bay, LLC v. Activision Blizzard Inc.). See Chapter 2. Claim Forms and Formats in General.
  • Indefiniteness: According to a federal district court in Texas, when the specification has two different meanings for the same word or term, and the claim includes the different meanings for that word or term, the claim thereby lacks sufficient “objective boundaries,” so that the claim is indefinite and invalid (Intellectual Ventures LLC v. T-Mobile USA, Inc.). See Chapter 3. Apparatus or Machine Claims.
  • Claim differentiation: According to the Federal Circuit, if a dependent claim contains additional limitations not present in the independent claim, then—under the doctrine of claim differentiation—the limitations cannot be applied to limit the independent claim, since the specification does not limit the invention to those additional limitations (Knowles Electronics LLC v. Iancu). See Chapter 8. Nonart Rejections.

This essential treatise is available on PLI PLUS. If you would like to order a print copy, please contact libraryrelations@pli.edu.

New Title! Business Taxation Deskbook

Business Taxation Deskbook is a guide to the fundamental principles governing the federal income tax treatment of domestic and international business transactions involving the organization, operation, and disposition of the four principal forms of business entity.

The Deskbook includes important coverage of the dramatic changes for businesses made by the Tax Cuts and Jobs Act of 2017 (TCAJA). It also looks at the federal income tax treatment of both inbound and outbound cross-border transactions and provides a basic introduction to state law issues in business taxation.

This book is designed to provide an introduction to the basic principles of business taxation and not to be the “last word” on any of these highly complex topics.

This new treatise is available on PLI PLUS. If you would like to order a print copy, please contact libraryrelations@pli.edu.