NEWS
When Inventors Leave: A Hard Lesson in Trade Secret Law
A recent Federal Circuit decision, Applied Predictive Technologies, Inc. v. MarketDial, Inc. (Jan. 28, 2026), offers a blunt reminder for companies relying on trade secret protection: if you can’t clearly define your trade secrets, you can’t enforce them – especially after key people move on.
The Case in Brief
Applied Predictive Technologies (APT) sued a competing analytics startup founded by a former McKinsey consultant who had evaluated APT’s software while working for a client. APT claimed that documents, technical guides, and client-specific data had been misappropriated under the Defend Trade Secrets Act and Utah law.
Both the district court and the Federal Circuit rejected APT’s claims at summary judgment. The problem wasn’t a lack of documents or experts, it was a lack of specificity. APT pointed to broad categories like “strategies” and “methods,” but never explained what, exactly, made those things secret, non-public, and economically valuable.
Why This Matters for Companies
This case underscores a growing reality in trade secret litigation: courts will not do the plaintiff’s homework. Saying “this document is a trade secret” or dumping volumes of material into the record is not enough. By summary judgment, companies must precisely identify what information is secret, why it is not generally known, and how its secrecy creates value.
For companies worried about losing inventors or key technical staff, the lesson is clear. Trade secrets must be defined before people leave, not retroactively in litigation. Vague claims that a departing employee “knows our approach” are unlikely to survive scrutiny.
The decision also highlights a structural risk when sensitive information is shared through consultants or third parties. APT had confidentiality agreements with McKinsey, and McKinsey had obligations to its employee, but APT could not directly enforce those obligations against the individual. Contractual protection does not automatically flow downstream.
What It Means for Inventors and Founders
The ruling is equally important for inventors, engineers, and founders who move on to new ventures. The court reaffirmed a long-standing principle: employees and consultants are free to use the general knowledge and skills they acquire through their work, even when they later compete.
Learning how systems work, how problems are framed, and how technologies are evaluated does not automatically convert that knowledge into someone else’s trade secret. Former employers must identify specific, protectable information, not claim ownership over everything a person learned on the job.
That said, the line still matters. Reusing documents, code, or clearly defined confidential implementations can create real exposure. Building new systems based on experience, rather than copying prior materials, remains the safer path.
The Bottom Line
Trade secret law protects defined secrecy, not broad claims over human capital. Companies that want to retain value when inventors leave must clearly identify and guard their secrets. Inventors, meanwhile, are entitled to take their expertise with them so long as they leave the secrets behind.
The Shape of IPR Institution Under Director Squires
For a long time, inter partes review felt like gravity. If you owned a patent and someone filed an IPR, it was less a question of whether you’d be dragged into the PTAB and more a question of how painful it would be. Under Director John Squires, that gravity is still there, but it’s weaker, more selective, and far more dependent on context. For patent holders and inventors, that’s a real shift, and a meaningful one.
Let’s start with the headline: IPR is no longer automatic. Institution rates have recovered from the near-freeze of mid-2025, but they remain far below historical averages. That tells us two things. First, the PTAB isn’t “closed for business.” Second, and more important for patent owners, petitioners now have to earn their way in. Showing a reasonable likelihood of invalidity is no longer enough by itself. Director Squires is asking a different question: why should the Office spend its limited resources re-litigating this patent at all?
That change alone alters the leverage equation. The PTAB is no longer a default pressure tactic; it’s a discretionary forum. And discretion cuts both ways, but lately, it’s been cutting in favor of patent owners who have acted like responsible owners.
One of the biggest signals coming out of recent decisions is how much the age of a patent and the owner’s conduct matter. Patents that have been around for a while, and that have been licensed, commercialized, or enforced, are increasingly treated as having “settled expectations.” In plain English: if you built a business around your patent, or licensed it to others who did, the Office is less inclined to yank the rug out from under you years later.
This doesn’t mean younger patents are fair game. But it does mean that ownership alone isn’t enough. The PTAB is looking at what you did with the patent. Did you put it to work? Did others rely on it? Or did it just sit quietly in a drawer?
And that last scenario matters more than many inventors realize. Several recent decisions show that sleeping on your rights can weaken your position. If a patent owner waits a decade to assert, tells potential infringers a license isn’t needed, or only files suit after the patent has expired, the equities start to flip. In those cases, the PTAB has shown sympathy for challengers who reasonably believed the patent would never be enforced. That’s not a technicality, that’s a warning. Delay is no longer neutral. Sometimes it’s evidence.
Another major shift favors patent owners even more directly: petitioners now have to go all in. In cases with parallel litigation, a Sotera-style stipulation – giving up all invalidity arguments in district court if the IPR is instituted – is basically mandatory. But it’s no longer a golden ticket. It’s the price of admission, not a guarantee of entry. For challengers, that raises the stakes dramatically. For patent owners, it reduces the “heads I win, tails you lose” dynamic that plagued the system for years.
Layered on top of that is a growing intolerance for gamesmanship. Petitioners who argue one claim construction in court and another at the PTAB without a compelling explanation are finding the door closed. Consistency matters again. That may sound basic, but it’s a real cultural shift and one that benefits inventors who have long been forced to defend against shape-shifting theories.
Stepping back, the emerging picture is this: IPR institution now looks a lot like equity practice. The challenger still has to show a likelihood of success, but that’s just step one. The PTAB is also weighing fairness, reliance, timing, and whether administrative review is actually the right tool for the dispute. That’s a far cry from the early years of IPR, when validity challenges felt almost mechanical.
For inventors and smaller patent owners, the practical lesson is simple but powerful. How you treat your patent over its lifetime now directly affects how well it can defend itself. Licensing helps. Commercialization helps. Reasonable, timely enforcement helps. Strategic silence, abandonment, or mixed signals do not.
IPR hasn’t gone away. But it’s no longer an automatic tax on owning a patent. It’s becoming a selective remedy, applied with judgment rather than reflex. And for inventors who view their patents as real business assets, not just litigation chips, that’s a change worth paying attention to.
Your U.S. Patent Might End Up in a German Court (Yes, Really)
If you’re an inventor or a patent owner, you probably have a simple mental map of how patents work: U.S. patents get enforced in U.S. courts, European patents in Europe, and never the twain shall meet. That map is starting to look outdated.
A recent patent fight between BMW and a patent owner called Onesta IP shows why you may want to redraw it.
Onesta owns a portfolio of graphics-processing patents it picked up from AMD. It believes BMW infringes those patents by using Qualcomm chips in its vehicles. So far, nothing unusual. Here’s where it gets interesting: instead of suing BMW in a U.S. court over the U.S. patents, Onesta filed suit in Germany—asserting not only a European patent, but two U.S. patents as well.
If your first reaction is, “Wait… you can do that?”—you’re not alone.
Why Germany Suddenly Looks So Attractive
Onesta’s strategy wasn’t a stunt. It was made possible by a recent decision from Europe’s highest court that quietly changed the rules. Under this new approach, courts in EU countries can hear cases involving non-European patents if the defendant is based there. BMW is headquartered in Munich, so Munich became fair game.
Now here’s the part patent owners really care about: German patent courts move fast. Very fast. And if they find infringement, they typically issue an injunction as a matter of course. No long balancing tests. No hand-wringing about “irreparable harm.” Infringement equals “stop.”
Compare that with the United States, where getting an injunction can feel like trying to win an Olympic decathlon—especially if you license your technology instead of manufacturing products yourself. For many patent owners, Germany looks like a shortcut around those U.S. roadblocks.
BMW Hits the Brakes
BMW didn’t wait around to see how this would play out. Instead, it raced to a U.S. federal court in Texas and asked the judge to step in. The court agreed, at least for now, issuing an order that blocks Onesta from using the German case to undermine the U.S. proceedings.
That tells us something important: when patent disputes go international, they can turn into jurisdictional chess matches very quickly. One side files here, the other side files there, and suddenly the fight isn’t just about infringement—it’s about which court gets to decide anything at all.
The Bigger Issue No One Can Ignore
For years, U.S. courts have refused to hear foreign patent claims, even when doing so would be efficient. The reason has been “international comity”—a polite way of saying, “We won’t step on your toes if you don’t step on ours.” The assumption was that foreign courts would treat U.S. patents with the same restraint.
Europe’s new approach puts that assumption under serious strain. If foreign courts are willing to adjudicate U.S. patent rights, U.S. courts may eventually rethink their own self-imposed limits. That hasn’t happened yet—but the door is clearly cracked open.
What Inventors Should Take Away from All This
First, forum choice matters more than ever. Where a patent dispute is filed can determine how fast things move, how much leverage you have, and whether an injunction is even on the table.
Second, international patent portfolios are no longer just defensive trophies. They can shape enforcement strategy in ways that weren’t realistic a few years ago.
Third, global patent disputes can get expensive and messy in a hurry. Multiple courts, multiple legal systems, and competing orders are not for the faint of heart.
And finally, this is another reminder that patent strategy isn’t just about getting claims allowed. It’s about thinking ahead—where your technology will be used, who might need a license, and what enforcement options you want available if things go sideways.
The short version? The patent world is getting smaller, faster, and less predictable. If your inventions are being used worldwide, your enforcement strategy should be thinking worldwide too.
“Configured To” Can Configure You Right Out of a Patent
If you’re an inventor thinking about filing a patent, here’s a recent Federal Circuit decision you should care about—In re Blue Buffalo Enterprises (Fed. Cir. Jan. 14, 2026). Not because it changes the law (it’s nonprecedential), but because it exposes a trap that patent drafters fall into all the time.
The trap? Two innocent-looking words: “configured to.”
Blue Buffalo’s patent application claimed a pet food container with sidewalls “configured to be readily deformable” and a built-in tool “configured for” breaking up or tenderizing food. Sounds reasonable. Sounds structural. Sounds like smart patent drafting. The problem is how courts usually read that phrase.
The Federal Circuit said, once again: unless your specification clearly says otherwise, “configured to” means “capable of,” not “specifically designed to.” And that difference can make or break your patent.
Here’s why.
Patent claims—especially product claims—are about structure, not intent. Courts don’t ask what the inventor meant to build. They ask what the thing is. If a prior art product can do what your claim says—even if it was built for a different reason—it can still knock out your claim.
Chief Judge Moore nailed it at oral argument. Paraphrasing: if a structure “happens to actually do that,” that’s good enough. You don’t get extra credit because you intended it to do so.
That’s a big deal for inventors, because many applications quietly rely on “configured to” as a kind of magic phrase—hoping it will smuggle design intent into the claim without saying so explicitly. Courts are not buying it.
Blue Buffalo tried to argue that “configured to” should mean “specifically designed to.” The judges were unimpressed. Why? Because that would turn every patent case into a mind-reading exercise: What was the designer thinking? What was the manufacturer’s intent? That’s not how patent law works. Infringement is strict liability. Intent doesn’t matter.
So how did Blue Buffalo lose? Once the court adopted the “capable of” interpretation, the prior art fit the claims. Blue Buffalo even admitted that under that construction, the obviousness rejection stood. Game over.
Inventors often point to older cases like Aspex Eyewear and Giannelli and say, “See? ‘Configured to’ can be narrower.” True—but those cases had something Blue Buffalo didn’t: specific, concrete disclosures showing what about the structure made it especially suited for the function. Not just that it could do it, but why it did it that way.
Here’s the lesson—and it’s an important one.
If a feature really matters to your invention, don’t just say it’s “configured to” do something and hope for the best. Explain what about the structure makes it work. Geometry. Placement. Relationships between parts. Physical constraints. Those are the things that earn you a narrower, more defensible claim.
Yes, being specific can feel risky. One reason “configured to” became popular was to avoid narrow means-plus-function claims and keep room for future variations. But vagueness has its own cost. Broad, fuzzy claims are easy to invalidate.
Blue Buffalo doesn’t rewrite patent law. But it reinforces a reality inventors need to understand early: functional language without structural support is a fragile foundation.
If you want “configured to” to mean more than “capable of,” you have to earn it in the specification. Otherwise, those two little words may end up configuring your patent application straight into a rejection.
A Shift in Section 101? What Recent PTAB Decisions Mean for Software Inventors
For years, Section 101 rejections have been the biggest obstacle for software and computer-implemented inventions. Recently, however, the Patent Trial and Appeal Board (PTAB) has been reversing those rejections at a much higher rate, suggesting a meaningful shift in how patent eligibility is being evaluated at the USPTO.
What is a Section 101 rejection?
Section 101 defines what types of inventions are eligible for patent protection. Courts have long held that abstract ideas—including many business methods and software concepts—are not patentable on their own.
In practice, examiners often reject software claims by arguing that they are directed to an abstract idea and merely implemented using generic computer components, such as standard servers or networks. Under the Supreme Court’s Alice framework, claims that lack an “inventive concept” beyond that abstract idea are ineligible.
What appears to be changing
Recent PTAB decisions indicate that the Board is no longer accepting conclusory assertions that claimed elements are “well-understood, routine, and conventional.” Instead, the PTAB is increasingly requiring actual evidentiary support for those conclusions, consistent with Federal Circuit precedent such as BASCOM and Berkheimer.
Critically, the Board is recognizing that an inventive concept can exist in a non-conventional arrangement of otherwise conventional computing components. Labeling servers or networks as “ordinary” is no longer enough to establish that a particular claimed combination was routine.
What this means for software inventors
This trend does not make abstract ideas patentable, nor does it eliminate Section 101 as a hurdle. But it does improve patent prospects for inventions that:
- solve concrete technical problems (e.g., latency, synchronization, security), and
- do so through specific technical architectures or system arrangements.
For many applicants, eligibility disputes may increasingly give way to more traditional patentability issues such as prior art and obviousness.
Drafting still matters
This shift rewards well-drafted applications, not broad or purely functional claims. Applications that clearly explain the technical problem and the technical solution are best positioned to benefit from the PTAB’s approach.
The PTO is not reopening the door to all software patents—but it is demanding more rigor in how eligibility rejections are justified. For inventors with genuine technical innovations, that makes Section 101 a more predictable—and more navigable—part of the patent process.
The USPTO’s Exciting Story: Almost Nothing Changed
The USPTO’s 2025 patent data points to an unusual but welcome theme: stability. Utility patent issuances held essentially flat at about 326,000—nearly identical to 2024—continuing a plateau that has persisted since 2021. Allowance rates were also steady, generally ranging from the high-70% to mid-80% throughout the year, suggesting a predictable examination environment for applicants.
Design patents, however, tell a different story. The USPTO issued roughly 52,000 design patents in 2025, a record high and a 10% increase over the prior year. This growth reflects rising global interest—particularly from non-U.S. applicants—in protecting product appearance in the U.S. market, and highlights design patents as an increasingly important complement to utility protection.
Overall, the 2025 numbers largely reflect examination practices under Acting Director Coke Stewart and prior leadership, with any changes under newly confirmed Director John Squires likely to take time to show up in the data. For patent owners and applicants, the key takeaway is a relatively predictable utility patent landscape, alongside growing momentum and opportunity in design patent filings.
Why Some Business Names Can’t Be Registered Trademarks—and Why KAHWA Survived
Why Bayou Grande Matters If You’re Choosing a Brand Name
If you’re picking a business name and thinking about federal trademark protection, the Federal Circuit’s recent Bayou Grande decision offers some practical guidance—especially if your proposed name comes from a foreign language or has more than one possible meaning.
At its core, the case is about a question every brand owner eventually faces: is my business name protectable, or is it too generic to own?
What Is a Generic Name—and Why Can’t You Register It?
A generic term is the common name for a product or service itself. Examples are easy:
- You can’t register “Coffee Shop” for café services.
- You can’t register “Shoes” for footwear.
- You can’t register “Law Firm” for legal services.
Why? Because trademark law isn’t supposed to give one company exclusive rights to the words everyone else needs to describe what they sell. Generic terms belong to the public.
Once a term is deemed generic, it’s permanently unregistrable—no amount of advertising, longevity, or success can fix that. That’s why genericness is the most serious problem a brand name can have.
How the USPTO Tried to Label KAHWA as Generic
Bayou Grande has operated coffee shops under the name KAHWA since 2008. When it applied to register the name, the USPTO refused, arguing that:
- Kahwa can mean “coffee” in Arabic, and
- Kahwa can also refer to a type of Kashmiri green tea.
Because cafés sell coffee and tea, the USPTO concluded that KAHWA was either generic or, at minimum, merely descriptive of café services.
This kind of reasoning is not uncommon. The Office often asks: Does this word name the thing being sold, or a key feature of it? If yes, registration is denied.
The Federal Circuit Pushes Back
The Federal Circuit reversed the refusal across the board.
First, it held that the doctrine of foreign equivalents—the rule that sometimes requires foreign words to be translated into English—does not apply when a term has a well-established alternative meaning. Here, the Board itself admitted that kahwa is widely recognized as a specific tea from Kashmir. That alone was enough to make automatic translation improper.
Second—and more importantly for brand owners—the court rejected the USPTO’s evidentiary shortcuts. There was no evidence that any café or coffee shop in the United States actually sells kahwa tea. At oral argument, the PTO conceded that point.
Without real-world evidence, the court held, the USPTO could not claim that KAHWA was generic or descriptive of café services. Speculation about what a business might sell someday is not enough.
Why This Matters When You’re Naming a Business
If you’re evaluating a potential trademark, Bayou Grande reinforces several key principles:
- A name is generic only if consumers understand it as the name of the product or service itself—not because it has a translation or theoretical meaning.
- Foreign-language terms are not automatically generic just because they translate to something descriptive elsewhere.
- The USPTO must rely on actual marketplace evidence, not assumptions.
- Longstanding use of a name as a brand (rather than as a product label) can be powerful.
At the same time, the case is a reminder that genericness is a bright line. If your proposed name truly is the common name for what you sell, trademark law won’t save it.
Choosing a business name isn’t just a marketing decision—it’s a legal one. A name that feels distinctive to you can still trigger a genericness or descriptiveness refusal if the USPTO believes it describes the services themselves.
Bayou Grande shows that those refusals can be beaten—but only with the right facts, evidence, and strategy. That’s why involving trademark counsel early, before a name is locked in, is often the most cost-effective branding decision a business can make.