Intellectual Property

  • April 24, 2015

    Diablo Beats Ban On Chip Sales After Trade Secrets Trial

    A California federal judge on Friday lifted a ban on Diablo Technologies Inc.'s sale of chips used in data storage products from SanDisk Corp., IBM Corp. and others, saying the injunction isn't justified after a jury largely handed Diablo a win in Netlist Inc.'s trade-secrets and contract trial.

  • April 24, 2015

    Tidel Asks Chancery To DQ Locke Lord From Contract Fight

    Cash management equipment company Tidel Inc. and several affiliates pushed the Delaware Chancery Court on Friday to disqualify Locke Lord LLP as counsel for its opponent in a tangled contract dispute, arguing that the other side would have an unfair advantage because the firm represented Tidel in several patent cases.

  • April 24, 2015

    Jury In Goldman IP Trial Mired In Confusion Over Obscure Law

    The jury in the trial of a former Goldman Sachs Group Inc. programmer accused of stealing computer code for the bank’s high-frequency trading platform was unable to reach a verdict Friday, despite more than two days of deliberations, and appeared perplexed by the charges.

  • April 24, 2015

    Fed. Circ. Revives On-Hold Music Patent Suit Against Muzak

    The Federal Circuit on Friday revived Info-Hold Inc.’s infringement suit against Muzak Holdings LLC over a patent for on-hold music, ruling that there are issues such as a reasonable royalty analysis and questions of induced infringement that the lower court needs to consider.

  • April 24, 2015

    Biolitec's Contempt Fine Capped At $70M In IP Dispute

    A Massachusetts federal judge on Wednesday capped contempt sanctions against an affiliate of Biolitec AG at $70 million in a patent dispute, saying the amount was a “reasonable penalty” to induce the German laser company to comply with the court’s preliminary injunction forbidding it to merge with an Austrian company.

  • April 24, 2015

    Brand Battles: Mercedes, Instagram, White Castle, Tivo

    In Law360's latest roundup of new actions at the Trademark Trial and Appeal Board, Mercedes and Land Rover tangle over electric cars and "range," Instagram takes exception to an online promotion from White Castle, and TiVo goes after a similarly named lighting company.

  • April 24, 2015

    USPTO Hit With Class Action Over Nebulous SAWS Program

    An inventor sued the government Friday over the U.S. Patent and Trademark Office's controversial and recently shuttered “sensitive” patent applications program, which he says delayed patent applications and saddled filers with excessive costs, in a proposed class action in the Court of Federal Claims.

  • April 24, 2015

    Record Cos. Could Win $736M In Grooveshark IP Trial

    Atlantic Recording Corp., Sony Music Entertainment and other record companies could win $736 million in damages in their copyright trial against Grooveshark's operators opening this week, after a New York federal judge ruled that the song-streaming service's act of copying nearly 5,000 songs was willful.

  • April 24, 2015

    Toxic Tort Claims Over Fracking Create IP Discovery Risk

    A recent Pennsylvania ruling finding that trade secrets, including the makeup of hydraulic fracturing fluids, should be handed over in discovery in a toxic tort case against Range Resources Corp. is likely just the beginning of attempts by plaintiffs to win access to proprietary information, experts say.

  • April 24, 2015

    Locke Lord Bolsters DC Office With New IP, ITC Expert

    Locke Lord LLP snagged a new partner for its intellectual property department in Washington, D.C., who brings with him more than three decades of experience representing clients in the automotive, information technology and other industries in venues including the U.S. International Trade Commission, the firm said on Friday.

  • April 24, 2015

    Elbit Again Says Hughes' USPTO Filings Show Willfulness

    Israeli defense contractor Elbit Systems Ltd. urged a Texas federal court Thursday to keep alive its willful infringement claims against Hughes Network Systems LLC, reiterating its argument that Hughes' references to its patent in U.S. Patent and Trademark Office filings show Hughes was aware of its infringement.

  • April 24, 2015

    BU Says Epistar 'Death Penalty' Sanction Should Be Nixed

    Trustees of Boston University told a Massachusetts federal court on Thursday to reject Epistar Corp.'s bid for a so-called death penalty sanction that would strike all of the university's expert testimony in a suit accusing Epistar of infringing semiconductor technology, saying that Epistar's request lacks any legal basis.

  • April 24, 2015

    Irell & Manella Faces DQ Bid In 'Dirty Grandpa' IP Row

    The defendant in a trademark suit brought by film company QED Holdings LLC over the upcoming comedy film "Dirty Grandpa," starring Robert DeNiro and Zac Efron, said that Southern California law firm Irell & Manella LLP must be disqualified as counsel because he is a former client of the firm.

  • April 24, 2015

    White-Out Co. Asks DC Circ. To Erase Malpractice Dismissal

    A Japanese company claiming it lost millions after the U.S. Patent and Trademark Office rejected its patent for a white-out dispenser because the company’s attorneys failed to submit an English translation of its application documents has asked the D.C. Circuit to revive malpractice claims against those lawyers.

  • April 24, 2015

    PTAB Won't Review Chiesi Unit's 4 Hypertension Drug Patents

    The Patent Trial and Appeal Board on Friday declined four separate bids by generic drug manufacturer Sandoz Inc. to review four patents owned by a Chiesi USA Inc. unit related to its intravenous high blood pressure drug Cardene because the generic manufacturer failed to show it was likely to prove the patents are invalid.

  • April 24, 2015

    Mylan Slapped With Patent Suit Over Generic Estrogen Patch

    Japanese pharmaceutical company Hisamitsu Pharmaceutical Co. hit Mylan Inc. with a lawsuit in Delaware federal court on Thursday, saying it believes Mylan is infringing two patents for an estrogen hormone patch but can’t obtain Mylan’s generic application to prove it.

  • April 24, 2015

    Marvel Stole 'Iron Man' Armor From Comic, Suit Says

    A new lawsuit says Walt Disney's Marvel Comics stole the futuristic suit of armor seen in the blockbuster “Iron Man” movies from two artists who once worked for the comic book giant.

  • April 24, 2015

    Volvo Foe Fights $1M Fee Award In Seat Patent Suit

    The holder of a child safety seat patent told a New Jersey federal court Thursday it shouldn’t have to pay Volvo Car Corp. a nearly $1 million judgment for attorneys’ fees, saying the judge in the case ignored significant claim construction issues that refute the finding that its suit had no reasonable basis.

  • April 24, 2015

    PTAB Nixes Intellectual Ventures Website Patent Under Alice

    The Patent Trial and Appeal Board on Friday ruled that a web-related business method patent that patent aggregator Intellectual Ventures Management LLC asserted against Bank of America NA and PNC Bank NA was invalid under the high court’s Alice standard on abstract inventions.

  • April 24, 2015

    Senate Panel Advances Finnegan Atty To Fill Fed. Circ. Seat

    The U.S. Senate Judiciary Committee on Wednesday voted to advance the nomination of a Finnegan Henderson Farabow Garrett & Dunner LLP patent litigation partner to fill a Federal Circuit seat that has been vacant since the departure of former Judge Randall Rader.

Expert Analysis

  • 9th Circ. Clarifies Functionality Test For Color TM Cases

    Cynthia Hernandez

    The Ninth Circuit’s recent decision in Moldex-Metric Inc. v. McKeon Prods. Inc. guides the lower courts to follow Qualitex’s core aesthetic functionality principles for color trademarks while applying the Ninth Circuit’s nonexclusive four factors as considerations to determine whether a product feature is functional, say David Martinez and Cynthia Hernandez of Robins Kaplan LLP.

  • An Update On Hatch-Waxman Personal Jurisdiction Cases

    Tedd Van Buskirk

    The first wave of post‐Daimler decisions suggests district courts will rely on new theories of general and specific jurisdiction to exercise personal jurisdiction in Hatch‐Waxman cases, say Tedd Van Buskirk and Mark Deming of Polsinelli PC.

  • A Review Of Patent-Related Trends In The Auto Industry

    Melinda DeSantis

    Our investigation of U.S. patent-related trends in the automotive industry from 2008 to 2013 shows robust patent application filing activity, with an increase in original equipment manufacturer filing activity relative to the rest of the industry, and an uptick in automotive litigation activity, driven by nonpracticing entities, say attorneys with Brinks Gilson and Lione.

  • Pretrial Dismissals And Judgments In Post-Alice Courts

    Michael Wilburn

    Ten months after the U.S. Supreme Court's decision in Alice v. CLS Bank, the long-term effects are starting to emerge. Perhaps the most notable is a shift in the court’s willingness to consider the issues at the earliest stages of the litigation, leading to frequent pretrial decisions that a computer-based business method patent lacks patent-eligible subject matter, say attorneys with Alston & Bird LLP.

  • A New System To Manage Your Intangible Assets

    Mark Bullard

    With the recent hyper-growth in M&A activity, companies are acquiring intellectual property at record rates. "Innovation resource planning" can help by providing real-time analytics that show IP portfolio details as well as the big picture. IRP can be used to illuminate areas where companies have a stronghold on technology that excludes competitors or identify gaps in the patent portfolio that need to be filled, says Mark Bullard of Lecorpio.

  • The Changing Landscape Of Fair Use: 'Transformative' Is Key

    Michelle Lee

    North Jersey Media Group Inc. v. Pirro and Fox News Network LLC is the latest in a recent line of fair use cases from the Second Circuit in which whether the use is “transformative” has won the day, to the point where it impacts what weight the courts give to the other three statutory fair use factors, say Michelle Lee and Erin Hickey of Fish & Richardson PC.

  • 3 Lessons From Unsuccessful Inter Partes Review Petitions

    Tom Irving

    The Patent Trial and Appeal Board has instituted only 69 percent of inter partes review petitions, denying nearly a third. Any patent owner’s first goal should be to prevent IPR institution, if possible, and there are a few things they can do to increase the chances that the PTAB will deny petitions filed against them, say attorneys with Finnegan Henderson Farabow Garrett & Dunner LLP.

  • Protecting Social Media Assets: Lessons From CDM Media

    Jason Hirsh

    An Illinois federal court's recent decision in CDM Media USA Inc. v. Robert Simms provides much-needed guidance for businesses that utilize private social media groups as a means of staying in touch with customers and serves as an excellent backdrop to consider the steps that may have been taken to better protect the employer’s social media assets, says Jason Hirsh of Levenfeld Pearlstein LLC.

  • When It Comes To Injunctive Relief, All IP Is Created Equal?

    Roberta Jacobs-Meadway

    Recently, courts have treated different forms of intellectual property in the same way in terms of injunctions, damages and fee awards, operating under the assumption that all IP rights are essentially and inherently the same. This practice is not well founded in law or in logic, says Roberta Jacobs-Meadway of Eckert Seamans Cherin & Mellott LLC.

  • Redundant Grounds: A Growing Hazard In Post-Grant Practice

    Richard Torczon

    As Patent Trial and Appeal Board post-grant dockets have swollen, the PTAB has expanded its use of one tool in particular — redundant grounds — as a docket-management device. The PTAB should have some capacity to curb abuses, but the redundant-ground practice has evolved to cover situations that are far from abusive, says Richard Torczon of Wilson Sonsini Goodrich & Rosati PC.