Intellectual Property

  • September 4, 2015

    Law360's AIA Survival Guide Reveals Tips For PTAB Success

    Three years ago this month, patent litigation changed forever when the America Invents Act proceedings for challenging patents became available for the first time. In a three-part series running in the coming days, Law360 talked to former Patent Trial and Appeal Board judges and experienced lawyers about how both patent owners and challengers can get the PTAB to rule in their favor.

  • September 4, 2015

    Calif. City Facing Fees Over 'Meritless' Copyright Suit

    Two weeks after the dismissal of a copyright lawsuit filed by the city of Inglewood, California, against one of its outspoken critics, the high-priced First Amendment attorneys that fought the case are now asking for their legal fees “to deter such meritless actions in the future.”

  • September 4, 2015

    Brownstein Hyatt Acquires IP Boutique Watson Rounds

    Brownstein Hyatt Farber Schreck LLP has expanded its operations in the West through its acquisition of Watson Rounds, an intellectual property litigation firm.

  • September 4, 2015

    ITC To Review Garmin Fish-Finding Devices Determination

    An International Trade Commission judge's initial findings that Garmin International Inc. hadn't violated international trade laws by importing high-resolution sonar imaging devices that allegedly infringe three of Navico Inc.'s patents will be reviewed by the commission, according to a Thursday notice.

  • September 4, 2015

    Miramax Settles Copyright Suit Over Sherlock Holmes Movie

    Miramax has settled a copyright infringement lawsuit filed by the estate of Arthur Conan Doyle over the studio's recently released Sherlock Holmes flick “Mr. Holmes,” according to papers filed Wednesday.

  • September 3, 2015

    Fitbit Escalates Jawbone IP Feud With New Infringement Suit

    Fitbit Inc. on Thursday filed a suit in Delaware federal suit accusing Jawbone of infringing three of its patents over wearable fitness trackers, after Jawbone hit its rival with multiple complaints and the U.S. International Trade Commission launched an investigation into Fitbit's alleged infringement.

  • September 3, 2015

    Redskins Can't Join Arguments In Fed. Circ. TM Case

    The Washington Redskins on Thursday lost a bid to participate in oral arguments in a Federal Circuit case that could have major implications for its effort to revive trademark registrations for its controversial name.

  • September 3, 2015

    Carnegie Mellon Wants Record $1.5B Patent Award Reheard

    Carnegie Mellon University, in a bid to win back a record $1.54 billion judgment it won against Marvell Technology Group Ltd. in a disk drive patent suit, urged the Federal Circuit to rehear the case en banc after the court slashed the award to $278 million.

  • September 3, 2015

    Despite Denial, Bass Launches New Attack On Acorda Patents

    Undaunted by recent decisions rejecting its petitions for America Invents Act reviews of two patents on Acorda Therapeutics Inc.'s multiple sclerosis drug Ampyra, an organization run by hedge fund manager Kyle Bass filed new AIA challenges to those patents and two others on Wednesday and Thursday.

  • September 3, 2015

    Fujitsu Unit Gets $2.5M IP Jury Win Upheld, $1.5M In Fees

    A California state judge has affirmed a jury award of about $2.5 million in damages to Fujitsu Ltd. subsidiary Glovia International Inc. over an Actuant Corp. unit’s allegedly unauthorized use of software, and also awarded it $1.5 million in fees and costs.

  • September 3, 2015

    Sony, Universal Curbing Competition, Budget CD Maker Says

    The Canadian recording and publishing arms of Sony Music Entertainment and Universal Music Group have been taken to Canada's Competition Tribunal by a company that releases classic music with expired copyright protection for cheap, claiming the record giants abused their market dominance to crush its business.

  • September 3, 2015

    Bass Blasts Sanctions Bid, Says Drug AIA Reviews Aid Public

    The organization run by hedge fund manager Kyle Bass that has challenged many drug patents under the America Invents Act fired back Wednesday at Celgene Corp.'s request that it be sanctioned for abusing the system, saying that its reviews promote the "socially valuable purpose" of lowering drug prices.

  • September 3, 2015

    Pandora Says Pre-1972 Loss Creates 'Zombie Copyrights'

    Pandora Media Inc. fired the opening salvo at the Ninth Circuit on Wednesday in its effort to reverse a ruling that it must pay to play pre-1972 records, warning the appeals court that such a decision would create “an unworkable intellectual property regime” made of “zombie copyrights.”

  • September 3, 2015

    Squire, Sidley Dodge Sanctions In $124M Trade Secrets Row

    A California state judge declined Thursday to toss a $124 million trade secrets suit brought by Grail Semiconductor Co. against Mitsubishi Electric & Electronics USA Inc., but refused to impose sanctions on Mitsubishi and its counsel at Squire Patton Boggs LLP and Sidley Austin LLP, holding she couldn’t discern whether false statements were made at trial.

  • September 3, 2015

    PTAB Sinks Google AIA Petitions Over Faulty Prior Art

    The Patent Trial and Appeal Board on Wednesday rejected Google Inc.'s requests for an America Invents Act review of a patent covering pictorial representations of space-related data, such as geographical representations of the Earth, saying the prior art cited by the company could not be used to invalidate the patent.

  • September 3, 2015

    Whiskey Maker Says 'Double Barreled' Is Generic Term

    Spirits company Sazerac Co. moved Wednesday to toss a lawsuit claiming the term “double barreled” is a protected trademark, calling it generic industry jargon that one company “cannot possibly” monopolize.

  • September 3, 2015

    ITC Issues Exclusion Order In Toner Cartridge Investigation

    The U.S. International Trade Commission has issued a general exclusion order barring entry of certain toner cartridges and components accused of infringing patents held by Canon Inc., wrapping up a more than yearlong investigation.

  • September 3, 2015

    TTAB Nixes Concurrent Use Case Over Applicant's Prior Usage

    The Trademark Trial and Appeal Board has rejected an attempt by Bad Boys Bail Bonds Inc. to be allowed to use a logo containing the words “Bad Boys Bail Bonds” concurrently with an already registered trademark, saying the company couldn't show it used the mark before the prior applicant filed for registration.

  • September 3, 2015

    Fed. Circ. Says USPTO Has Low Burden In Re-Exam Suits

    The Federal Circuit ruled Thursday that when a suit is filed in district court challenging the U.S. Patent and Trademark Office's decision to invalidate a patent in a re-examination, the office must prove invalidity only by a preponderance of the evidence, not the higher standard used in infringement cases.

  • September 3, 2015

    EA Out Of Timeouts In Ex-NFL Players' Likeness Litigation

    A California federal judge on Thursday denied a bid by Electronic Arts Inc. to extend a stay in a proposed class action by former NFL players over the company's use of their likenesses in the 2009 version of EA's "Madden NFL" game, allowing the 2010 suit to go forward.

Expert Analysis

  • Using Patents To Secure Repeat Customers

    Andrea Merin

    The aftermarket for consumable products — e.g., disposable printer cartridges, razor cartridges, single-serving coffee pods — can be significant and oftentimes more profitable than the sales of the corresponding base products. The high profit margins, however, create an incentive for generic imitations. Fortunately, patent protection can help deter competitors, say Larry Green and Andrea Merin of Wolf Greenfield & Sacks PC.

  • The Road Ahead For Kyle Bass's IPRs

    Kristel Schorr.jpg

    Interestingly, in Coalition for Affordable Drugs v. Acorda, the Patent Trial and Appeal Board was able to deny institution without addressing the issue of CFAD’s alleged abuse of process that was raised by the patent owner. But with more institution decisions in the queue, it may not be long before the issue is addressed, say members of Foley & Lardner LLP.

  • REJOINDER: Still An Inappropriate Reasonable Royalty Rule

    William C. Rooklidge

    In arguing in favor of the patentee obtaining as reasonable royalty damages the entire incremental profit earned by the alleged infringer on the smallest salable patent practicing unit, a recent Law360 guest article makes several arguments that are either incorrect or irrelevant, say William Rooklidge and Andrew Brown of Gibson Dunn & Crutcher LLP.

  • 7 Benefits Of Arbitration In A Patent Dispute


    A recent survey across various industries showed that 73 percent of companies agreed that arbitration is their preferred mechanism for dispute resolution. Arbitration of a patent dispute, especially those with international overtones and complicated subject matter, provides many of the benefits of a courtroom decision with some additional features, say JAMS member Ron Dimock and Michael Rubinger of Dimock Stratton LLP.

  • Tips For Responding To An FTC Subpoena

    Julie A. Flaming

    A subpoena from the Federal Trade Commission can be unnerving and may appear daunting in the scope of its requests. Negotiations with the FTC regarding scope of discovery, time frames and even format of production can assist in reducing the burden for companies, say Julie Flaming and Katie Smith of Nelson Mullins Riley & Scarborough LLP.

  • Game Developers Now Need Strong IP Strategy

    Chinh H. Pham

    Historically, gaming companies have shied away from pursuing patent protection. However, as the market continues to expand and more video game companies emerge, ignoring patent protection can be perilous, says Chinh Pham of Greenberg Traurig LLP.

  • Obscure Russian Thesis Qualifies As Prior Art At PTAB

    Scott D. Marty

    The Patent Trial and Appeal Board recently provided important guidance when it found that a Russian doctoral thesis was sufficiently accessible to qualify as prior art in GlobalFoundries U.S. Inc. v. Zond LLC. The majority and dissent opinions shed light on how parties should approach qualifying and challenging similarly obscure printed publications, say Scott Marty and Jonathon Talcott of Ballard Spahr LLP.

  • FDA's Focus On Drug Appearance May Cause Ugly Problems

    Jeffrey A. Wolfson

    The U.S. Food and Drug Administration's recent final guidance on the size, shape and physical characteristics of generic-manufactured tablets may make pills easier for patients to swallow, but is not likely to help ongoing generic drug pricing and shortage problems in the supply chain, say Jeffrey Wolfson and Evert Tu at Haynes & Boone LLP.

  • PTAB Rule Changes Are A Good Start, But Limited

    Todd Patterson

    The U.S. Patent and Trademark Office recently proposed changes to the rules governing Patent Trial and Appeal Board trial proceedings. This is a good start to addressing some of the issues that have been raised by patent owners, practitioners and third parties. But many of the remaining issues will likely be resolved only through further legislation, say attorneys with Patterson & Sheridan LLP.

  • A Few Ways To Work Around The Brulotte Rule

    Glenn Robbins

    The U.S. Supreme Court in Kimble v. Marvel Entertainment LLC recently declined to overrule the much-criticized Brulotte rule that patent royalties may not continue past a patent’s expiration. But there are strategies that enable parties to a patent license agreement to tailor compensation and appropriately allocate risks whereby compensation could still extend beyond the patent’s term, says Glenn Robbins of Spencer Fane Britt & Browne LLP.