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**PRODUCT FEATURES AND PROCEDURES PREVIOUSLY DISCLOSED IN PATENTS WERE INELIGIBLE FOR TRADE SECRET PROTECTION
Int’l Med. Devices, Inc. v. Cornell, 25-1580, 25-1605 — On Friday in an opinion by Judge DYK, the Federal Circuit reversed-in-part a district court judgment that Cornell had misappropriated IMD’s trade secrets for a cosmetic silicone penile implant and procedure. Cornell argued three of IMD’s alleged trade secrets were disclosed in publicly available patents and therefore not eligible for trade secret protection.
The Federal Circuit agreed. The “incorporation of internal pockets or voids of space” had been disclosed in a therapeutic penile implant patent, and IMD had merely “[t]ranslat[ed] the generally known internal-pockets concept from the environment of a therapeutic implant to the adjacent environment of a cosmetic implant” without evidence that cosmetic and therapeutic implants presented different problems or required different solutions. The “incorporation of mesh tabs embedded in or around the distal tip” was claimed in another prior art patent, and expert testimony confirmed that additional non-distal tabs irrelevant. And although the “use of absorbable sutures” during implantation was not explicitly disclosed in either prior art patent, expert testimony established that absorbable sutures were well known and generally preferred for penile surgery, which was sufficient to establish disclosure when combined with general knowledge in the art.
(1 to 4 stars rate impact of opinion on patent & trademark law)
UPDATES FROM RECENT EU IP FILES AT IPO’S EUROPEAN PRACTICE COMMITTEE CONFERENCE IN FRANKFURT – 28 MAY
BETTINA WANNER (Bayer Intellectual Property GmbH) will provide a brief update on policy developments, the EU Pharma directive as it relates to IP, compulsory licensing and biotech developments, and recent discussions on the unitary SPC file during IPO’s European Practice Committee Conference on May 28 in Frankfurt, Germany. The conference entitled “Watch Your Words – Claim Interpretations, Estoppel, Information Sharing, Chat Bots and Much More” will include discussions on AI tools for IP professionals; information sharing; claim construction; and doctrine of equivalents, waiver and estoppel. Visit the conference website for more information or to register.