Lit Alerts'June 2022

• Published date: 01 July 2022
• Subject Matter: Intellectual Property, Copyright, Patent, Trade Secrets
• Law Firm: Arnold & Porter
• Author: Mr John D. Lombardo, David J. Weiner, Mohamed Al-Hendy, Kathleen P. Duffy and Kathleen M. McCarte

Trade Secrets: UTSA Preempts Tort Claims Based on Same Factual Allegations

The Delaware Superior Court held in June 2022 that Utah's Uniform Trade Secrets Act (UTSA) preempted tortious interference with contractual relations claims based on the same set of facts as a UTSA claim. In Pascal Metrics, Inc. v. Health Catalyst, Inc., Pascal alleged it developed algorithm-based products to detect health events. Pascal required all employees to sign confidentiality agreements to protect this technology. After Health Catalyst hired three Pascal employees, Pascal filed suit for misappropriation of trade secrets and tortious interference with contractual relations. Health Catalyst moved to dismiss the tortious interference claim arguing it was preempted by the UTSA.

Under Utah law, the UTSA 'preempts conflicting tort, restitutionary, and other law[s] [of Utah] providing civil remedies for misappropriation of a trade secret [and preempts] any state law claim that is based on allegations of misuse of confidential information, regardless of whether the claim contains additional, separate allegations.' Giles Const., LLC v. Tooele Inventory Sol., Inc., 2015 WL 3755863, at *6 (D. Utah). Pascal argued that the UTSA does not affect contractual remedies and that tortious interference is a 'secondary means to vindicate contract rights against those not in privity on the contract.' The court rejected this argument and dismissed the tort claims, holding that 'Pascal's claim for tortious interference [wa]s based upon the same facts as the allegations of misappropriation of trade secrets.'

Patents: Federal Circuit Overrules PTAB's Invalidation of Expired Patent on Mootness Grounds

In June 2022, a split panel of the US Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeal Board's rejection of claims in a power converter patent because the patent had expired before the Board made a final determination. In 2011, after SynQor filed a patent infringement action in the US District Court for the Eastern District of Texas, Vicor requested inter partes reexamination of several asserted patents including the patent at issue, US Patent No. 7,272,021. The Patent and Trademark Office granted Vicor's request, and the examiner rejected all challenged claims including two claims that SynQor sought to add during the reexamination process. After several appeals, the '021 patent expired in January 2018, before the Board issued its remand decision. Unaware the patent had...