Overview
Letter From The Editor
Dear Friends and Colleagues,
This issue of The Newtonian is a special one for us: it marks the 18th anniversary of Leason Ellis. Reaching this milestone invites both reflection and celebration—reflection on nearly two decades of thoughtful advocacy and trusted client service, and celebration of the people whose care, insight, and attention to detail have made it all possible. That same attention to detail is on display throughout the articles in this issue, each of which addresses evolving legal issues and the practical realities they create for innovators and brand owners alike.
Warmly,Henry A. GabathulerPartner, Editor, The Newtonian
Fewer Performance Credits, Fewer Conversations? How the USPTO’s FY2026 Performance Appraisal Plan Could Change Examiner Interviews
Patent examiners are central to the quality and efficiency of U.S. patent examination and grant. The way that examiners approach their work, however, is shaped by how the U.S.P.T.O. measures their job performance with “performance credits” for specific tasks. For Fiscal Year 2026, the U.S.P.T.O. adjusted its Performance Appraisal Plan (the FY2026 PAP) which determines how examiners earn such performance credits in conducting interviews with patent applicants. These changes reduce the incentive for examiners to conduct multiple interviews, and could likely impact the interview strategy of patent applicants and practitioners. The Role of Examiner Interviews The U.S.P.T.O. has long encouraged…
Navigating Subject Matter Eligibility §101 for Diagnostics in a Changing Patent Landscape
Subject matter eligibility under 35 U.S.C. § 101 has long been a challenging hurdle for biotech and pharmaceutical innovators. Diagnostic method claims have been especially difficult, with federal courts invalidating virtually every diagnostic assay patent challenged post- Mayo ( Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66 (2012)). But recent USPTO actions signal a meaningful shift in how eligibility is evaluated at the examination stage, creating new opportunities for applicants who act strategically and leverage evolving USPTO guidance. A recently issued U.S. Patent, U.S. Patent No. 12,419,201, directed to cancer diagnostic methods, illustrates this shift. Since late…
Musings about the Impact of Ecofactor and its Progeny on Patent and Trade Secret Damages
I. Introduction The Federal Circuit’s decisions in EcoFactor v. Google ( en banc 2025) [1] , Jiaxing Super Lighting v. CH Lighting (2025) [2] , and Rex Medical v. Intuitive Surgical (2025) [3] collectively reinforce a stricter application of Federal Rule of Evidence 702 to damages experts. While they do not alter existing damages law, they significantly tighten the evidentiary threshold for admissibility - particularly when experts rely on settlement agreements, portfolio‑level licenses, or apportionment assumptions unsupported by concrete facts. These cases respond to recurrent problems: reliance on inferred royalty rates, apportionment without evidence, and portfolio licenses offered as comparables…
Schedule A Litigation in 2026: Evolving Limits
Schedule A litigation refers to cases where intellectual property owners sue multiple online sellers identified in a sealed attachment to the Complaint (the “Schedule A”). As noted by Judge Durkin in Roblox Corp. v. Bigfinz , 2023 WL 8258653 (N.D. Ill. Nov. 29, 2023), Schedule A filings are permitted “because . . . it is the most efficient way to address the epidemic of counterfeit goods being sold in the United States on the internet by defendants located outside the United States.” The structure of a typical Schedule A case enables plaintiffs to seek early ex parte relief, including financial…
Trade Secrets & Employee Mobility: Mapping the Fractured Landscape of the Inevitable Disclosure Doctrine
I. Background The inevitable disclosure doctrine permits a plaintiff in a trade secrets case to “prove a claim of trade secret misappropriation by demonstrating that defendant’s new employment will inevitably lead the defendant to rely on the plaintiff’s trade secrets,” as articulated in the seminal case PepsiCo, Inc. v. Redmond , 54 F.3d 1262, 1269 (7th Cir. 1995). The doctrine frequently arises in the context of temporary or preliminary injunctive relief and is controversial because it potentially “requires a court to recognize and enforce a de facto non-competition agreement to which the former employee is bound, even where no express…
Group Registration of Two-Dimensional Artwork (“GR2D”)
In a move that is particularly favorable to artists and other creators, the U.S. Copyright Office recently introduced a new group registration option for two-dimensional (2D) artwork. Previously, applicants seeking to register published 2D artwork had to submit a separate application for each individual work, at a filing fee of $65 per application. Under the new rule, applicants can apply to register up to twenty works for only $85. When fully utilized, this reduces the effective filing fee to approximately $4.25 per work, nearly a ninety-three percent decrease in the cost per work. The Copyright Office’s Final Rule, which took…
