Intellectual Property

  • June 23, 2017

    IP Hires: Jones Day, Squire Patton Boggs, Merchant & Gould

    In this week’s intellectual property partners on the move, Jones Day adds two female IP partners to its ranks, Squire Patton Boggs LLP bolsters its technology practice with the addition of a partner in England and Merchant & Gould PC gains two patent-savvy partners, including one who counsels sports gaming giant DraftKings. Here, we offer details on these partners and others who have landed new jobs.

  • June 23, 2017

    Fed. Circ. Affirms USPTO's No-Matter-What Attys' Fees Rule

    A split Federal Circuit panel on Friday endorsed the U.S. Patent and Trademark Office’s new stance that applicants who appeal to a district court must pay the agency’s legal bills regardless of whether it wins or loses.

  • June 23, 2017

    Flavor Co. Makes $56M Settlement In Trade Secrets Suit

    New York-based International Flavors & Fragrances Inc. on Friday agreed to pay flavor company ZoomEssence Inc. $56 million to settle claims in New Jersey federal court that it stole ZoomEssence’s technology for converting liquid flavors to powders and then called the technology its own.

  • June 22, 2017

    Brewer Tells 2nd Circ. It Had 'Rogue' Marks Before Clothier

    Rogue Ale brewer Oregon Brewing Co. on Thursday asked the Second Circuit to reverse a lower court ruling in a trademark fight with apparel maker Excelled Sheepskin & Leather Coat Corp. over the disputed “Rogue” mark, saying a district court wrongly blocked the beermaker from selling its clothing in department stores.

  • June 22, 2017

    Intellectual Ventures Wants Fed. Circ. To Redo PTAB Ruling

    Intellectual Ventures urged the Federal Circuit Wednesday to rehear en banc its ruling that the Patent Trial and Appeal Board did not violate the licensing company’s due process rights by failing to notify it of, and give it the opportunity to rebut, the claim construction that no party had proposed.

  • June 22, 2017

    Intellectual Ventures Didn't Own ITC Probe Patents: Car Cos.

    Automakers Honda, BMW and Toyota have argued that a U.S. International Trade Commission investigation into thermoplastic parts used in imported cars should be terminated because Intellectual Ventures never owned the patents in question, having bought them from a defunct subsidiary.

  • June 22, 2017

    Boat Co. Wins $2.7M Verdict After TC Heartland Move Failed

    A boat company won a $2.7 million verdict in a patent suit against Brunswick Corp. after Brunswick failed in its quest to move the suit from Virginia to Tennessee after the U.S. Supreme Court’s TC Heartland decision, according to a verdict form filed Wednesday.

  • June 22, 2017

    Cupcake Sushi Co. Sues Rival Over Dessert Patents

    The founder of a “unique confectionary dessert cake,” Cupcake Sushi, sued her rival, Sushi Sweets, in California federal court on Wednesday, claiming it infringed her patented creation after a pastry chef ran off with her recipes and other trade secrets and opened a new business behind her back.

  • June 22, 2017

    PTAB Won't Review Gillette Razor Blade Patent

    Dorco Co. Ltd. lost a bid to invalidate a Gillette patent for a razor blade on Wednesday after the U.S. Patent Trial and Appeal Board decided the South Korean manufacturer's arguments were too similar to those previously considered by a patent examiner.

  • June 22, 2017

    ITC Target Pins Patent Probe On Honeywell 'Monopoly' Push

    The U.S. International Trade Commission announced an investigation Wednesday into whether imported bar code scanners violate Honeywell Inc. patents, but the targeted company says the probe represents a continuing effort by the tech giant to litigate its way into a monopoly.

  • June 22, 2017

    Ex-Uber CEO Knew Engineer Had Trade Secrets, Waymo Says

    Former Uber Technologies Inc. CEO Travis Kalanick knew last year that a then-engineer possessed trade secrets from Waymo LLC, Alphabet Inc.’s self-driving car unit said Wednesday while arguing that Uber must prove to a California federal court that it shouldn’t be held in contempt for its repeated failure to surrender the documents.

  • June 22, 2017

    Hughes Can't Transfer Patent Suit Under TC Heartland

    A Texas federal judge refused a satellite broadband technology company’s request to transfer a patent infringement suit against it out of the Eastern District of Texas in spite of the U.S. Supreme Court’s TC Heartland decision last month, arguing that it had waived its right to seek transfer by failing to do so earlier.

  • June 22, 2017

    Forever 21 Says Adidas 3-Stripe TM Has 'No Boundaries'

    Forever 21 Inc. told a federal judge Tuesday that it cannot defend against claims that it infringed Adidas AG’s oft-asserted “three-stripe mark” because the shoemaker’s “expansive view” of its rights means the trademark “literally has no defined boundaries.”

  • June 22, 2017

    Patent Experts Broaden Merchant & Gould’s NYC Office

    Merchant & Gould’s intellectual property practice in New York has added two patent-savvy partners, one who counsels sports gaming giant DraftKings and another who regularly helps clients challenge patents in inter partes reviews before the Patent Trial and Appeal Board, the firm announced Tuesday.

  • June 22, 2017

    Post-Slants, Is USPTO Going To Be Flooded With Bad Words?

    In the wake of the U.S. Supreme Court's Slants ruling striking down the government’s ban on offensive trademark registrations, some have worried about a flood of ugly language at the trademark office, but experts say those concerns could be overblown.

  • June 22, 2017

    U. Of Minn. Says Infringement Suits Didn't Waive IPR Immunity

    The University of Minnesota urged the Patent Trial and Appeal Board on Wednesday to dismiss challenges Ericsson Inc. brought against five of its patents in inter partes review, arguing it did not waive sovereign immunity by suing phone carriers like AT&T for infringement.

  • June 22, 2017

    Kiss Frontman Simmons Drops Bid For 'Horns' Trademark

    Kiss lead singer Gene Simmons has dropped his much-maligned effort to register the famous rock 'n' roll "horns" hand gesture as a trademark, a decision legal experts say was a no-brainer.

  • June 22, 2017

    FanDuel, DraftKings Slammed For Patent Row Transfer Bid

    Gambling technology companies accusing FanDuel Inc. and DraftKings Inc. of infringing their patents told a Nevada federal court Wednesday that the case has progressed too far for the daily fantasy sports giants to now attempt a Delaware transfer.

  • June 21, 2017

    Arista Dodges $600M Fine In Cisco Patent Dispute At ITC

    A U.S. International Trade Commission administrative law judge has issued an initial determination that Arista's sale of redesigned network switch products complies with the terms of a cease-and-desist order imposed after Cisco accused Arista of patent infringement last year, permitting Arista to dodge a penalty of $600 million, the company announced Wednesday.

  • June 21, 2017

    2nd Circ. Says Macy’s Didn’t Infringe UK Retailer’s TM

    A Second Circuit panel agreed with a lower court Wednesday that Macy’s “Maison Jules” clothing line doesn’t infringe the trademark of U.K.-based clothing line Joules, saying the circuit’s eight-part trademark-confusion test weighed in the U.S. retailer’s favor.

Expert Analysis

  • Tough Times For Forum Shoppers

    Lawrence Ebner

    A trio of rulings from the U.S. Supreme Court has made this a difficult spring for forum-shopping lawyers. TC Heartland, BNSF Railway and now Bristol-Myers Squibb have enforced limits on exercise of personal jurisdiction over corporate defendants, sending an unmistakable message to lower courts, says Lawrence Ebner of Capital Appellate Advocacy PLLC.

  • Antitrust And Misuse Considerations Following Lexmark

    James Kobak

    Since the U.S. Supreme Court's recent Lexmark decision held contractual limitations to be outside the scope of a patentee’s rights under the patent law, restrictions on sales of patented objects will be subject to unfair competition, antitrust and patent misuse law, says James Kobak, general counsel of Hughes Hubbard & Reed LLP.

  • 10 Problems To Avoid In Social Media Influencer Marketing

    Neal Tabachnick

    Most social media influencers are young and successful, a combination that can create great opportunity for your company, as well as major pitfalls. Some contract provisions can help keep things on track, says Neal Tabachnick of Wolf Rifkin Shapiro Schulman & Rabkin LLP.

  • Fed. Circ. Weighs In On Prosecution Disclaimer In IPR

    Jesse Jenike-Godshalk

    The Federal Circuit recently held that statements made by patentees during an inter partes review can constitute prosecution disclaimer. While the Aylus v. Apple decision seems sound from a public policy perspective, it creates tension between prosecution disclaimer and various types of estoppel that are closely related to prosecution disclaimer, say Jesse Jenike-Godshalk and Michael Nieberding of Thompson Hine LLP.

  • Obviousness May Soon Return To High Court

    Derek Dahlgren

    Consensus is building that the U.S. Supreme Court should grant the petition to hear Samsung v. Apple. The issue that has received the most attention from the amici briefs and the most pages from the parties is how the Federal Circuit applied the obviousness analysis, say Derek Dahlgren and Spencer Johnson of Rothwell Figg Ernst & Manbeck PC.

  • Why High Court Should Find IPR Constitutional

    Kenneth Hairston

    The inter partes review constitutionality case that the U.S. Supreme Court recently agreed to hear is a perfect opportunity for the justices to exercise judicial restraint and indirectly address the public versus private property rights issue as was done in the B&B Hardware trademark case, says Kenneth Hairston, counsel at Fitch Even Tabin & Flannery LLP and a former administrative patent judge.

  • Tips For Complying With ABA’s New Encryption Guidance

    Nick Holda

    Last month, the American Bar Association published revised guidance regarding an attorney’s duty to protect sensitive client material in light of recent high-profile hacks. The first step in compliance is understanding how your data is being stored and accessed. There are three key questions you should ask your firm’s information technology staff and/or external solution vendors, says Nick Holda of PreVeil.

  • High Court's Superficial Analysis In Biosimilars Ruling

    Peg Brivanlou

    The U.S. Supreme Court’s decision Monday in Sandoz v. Amgen only scratched the surface, particularly with respect to the notice of commercial marketing provision. The “one size fits all” notice of commercial marketing rule may leave certain biosimilar litigants in ill-fitting suits, say attorneys with King & Spalding LLP.

  • 'Dancing Baby' Copyright Case Through A Proper Lens: Part 2

    David Lichtman

    The Ninth Circuit was correct in its finding that any fair-use analysis for a Digital Millennium Copyright Act takedown notice is a fact-based, subjective determination. According to the Lenz petition for certiorari, the Ninth Circuit’s decision would open the floodgates for a slew of unreasonable claims as grounds for removal of online speech — but the petition conflates incorrectly “subjective beliefs” with “unreasonable beliefs,... (continued)

  • Series

    My Strangest Day In Court: When I Did Nothing And Won

    Mark Morris

    After looking at all of the factual nuances associated with proving a constructive trust, I hit upon a strategy that I had never used before — namely, do nothing, say nothing and hope the IRS fails in its proof, recalls Mark Morris of Snell & Wilmer LLP.