Intellectual Property

  • November 14, 2017

    Trademark & Infringement LLP: 4 Fights Over Firm Names

    Fish & Richardson PC quietly settled a trademark dispute last week with another “Fish” firm, ending the latest in a string of fights between law firms over similar-sounding names. Here are four more recent showdowns over firm trademarks you might have missed.

  • November 14, 2017

    Canon's $4.4M Win In Toner Patent Case Left Untouched

    A Georgia federal judge on Tuesday let stand a $4.4 million verdict against a toner company and plastic manufacturer accused by Canon Inc. of violating its ink toner bottle patent, saying the jury’s infringement findings and damage award were reasonably supported by the evidence.

  • November 14, 2017

    USPTO Hikes Patent Fees, Price Of AIA Reviews

    The U.S. Patent and Trademark Office on Tuesday finalized the first major overhaul of its patent fees in more than four years, releasing a plan that will significantly raise the cost of challenging a patent in American Invents Act reviews, among other things.

  • November 14, 2017

    Senate GOP Includes ACA Mandate Repeal In Tax Plan

    The Senate Finance Committee modified its tax plan late Tuesday to repeal the Affordable Care Act’s individual mandate and sunset a number of individual tax provisions, including the estate tax exemption, to meet a budgetary requirement to not increase the deficit after 10 years.

  • November 14, 2017

    'Dr. Phil' Copyright Suit Will Stay In Texas, Judge Says

    A federal judge in Texas on Monday denied a bid by a former “Dr. Phil” show employee to transfer a suit in which the show's production company, Peteski Productions Inc., accuses her of copyright infringement, holding she didn't meet the high bar of showing that moving the case to California was “clearly more convenient.”

  • November 14, 2017

    Wilson Fights For Fees Over Helmet-Strap Patent Suit

    Wilson Sporting Goods Co. asked a Texas federal court on Monday to award it an estimated $61,451 in attorneys' fees as well as costs after it said SportStar Athletics Inc. knowingly continued a baseless patent infringement suit against it over football helmet chin straps.

  • November 13, 2017

    Trial Kicks Off For Families In Row Over Palm Restaurant IP

    The families behind the famous Palm Restaurant went to trial Monday in New York over claims that certain family members cheated others out of $73 million as they opened dozens of new restaurants using the Palm name and its intellectual property.

  • November 13, 2017

    Federal Deficit Looms Large In Congress’ Tax Cut Talks

    As the House and Senate tax bills hurtle through congressional committees with amendments to bring them in line with budgetary rules, a number of policy proposals may end up being decided, not on their merits, but by how they will impact the country’s approximately $20 trillion debt.

  • November 13, 2017

    Sipco Defends Wireless Network Patent To PTAB

    Wireless network company Sipco LLC defended its wireless network gateway patent before the Patent Trial and Appeal Board on Monday, but faced skepticism during the oral hearing as a competitor maintained that it simply combined decades-old technology in an obvious way.

  • November 13, 2017

    Allstate Cites Brand Harm In 'Drivewise' TM Fight With Kia

    Allstate urged a California federal judge to prohibit Kia from using the name “Drive Wise” for its vehicle safety technology on Monday after a jury found the moniker was likely to cause confusion with the insurer’s own trademarked “Drivewise” data program, citing reputational harm and confused customers.

  • November 13, 2017

    Fed. Circ. Seals MasterCard Transaction Patent Win At PTAB

    The Federal Circuit on Monday affirmed a Patent Trial and Appeal Board ruling from 2016 that invalidated a handful of claims in a secure-transaction patent that were asserted against MasterCard International Inc. after the credit card company had showed them to be unpatentable.

  • November 13, 2017

    Finjan's $1.5M IP Damages Request Inflated, Jury Told

    An expert paid by Symantec unit Blue Coat Systems took the stand Monday in a California federal jury trial over claims Blue Coat is infringing Finjan’s online security patents, testifying that Finjan’s $1.5 million damages estimate is inflated, based on “entirely inappropriate metrics,” and should be closer to $663,000.

  • November 13, 2017

    Kraft Asks Court To Move Fast On IP Row With Aussie Co.

    Kraft Foods urged a New York federal court Friday to expedite its decision on whether an Australian dairy company should mediate or arbitrate a dispute involving its alleged misuse of Kraft's special peanut butter jar design, saying the dairy company should not be permitted to run out the clock any longer.

  • November 13, 2017

    Qualcomm Can't Escape Pared-Down Consumer Antitrust Suit

    A California federal judge has ruled that consumers cannot seek damages from Qualcomm over its patent licensing practices under federal antitrust law, but she rejected the chipmaker's bid to dismiss state law claims in the proposed class action.

  • November 13, 2017

    TPP Revival Effort Leaves US Out In The Cold

    The 11 countries still under the Trans-Pacific Partnership umbrella revived the beleaguered pact over the weekend with tweaks to its intellectual property and shipping provisions, in a move that experts say will leave the U.S. vulnerable in the crucial Asia-Pacific region as the Trump administration narrows its trade focus.

  • November 13, 2017

    Fed. Circ. Clears Apotex In Neulasta Biosimilar Patent Row

    A Federal Circuit panel upheld a lower court ruling that found Apotex Inc. did not infringe a patent covering Amgen Inc.’s blockbuster drug Neulasta, while clarifying the amount of weight courts should put on statements made in the prelitigation process by companies making biosimilars.

  • November 13, 2017

    Prism Seeks High Court Review Of Nixed IP In T-Mobile Suit

    Prism Technologies has asked the U.S. Supreme Court to weigh whether the Federal Circuit, after nixing its $100 million infringement lawsuit against T-Mobile, applied the wrong standard of review in deciding to invalidate the company’s network authentication patents under Alice as well, calling it a question of significant nationwide importance.

  • November 13, 2017

    NCAA Asks Default, Injunction In Basketball Tourney TM Suit

    The National Collegiate Athletic Association on Friday asked an Indiana federal judge to bar a game developer and his company from infringing trademarks including "March Madness" and ultimately wrap up the case in the organization's favor, saying it must be protected from damage to its brand.

  • November 13, 2017

    Fed. Circ. Affirms Rejection Of 'Sensi' Trademark

    The Federal Circuit on Monday affirmed the Trademark Trial and Appeal Board’s refusal to grant registration to an Indonesian company's “sensi” mark for diapers, agreeing that the company’s branding was confusingly close to another company’s diaper rash cream marks.

  • November 13, 2017

    No Damages For Promega In Gene-Testing IP Row: Fed. Circ.

    Promega Corp. can’t recover any damages in a patent suit against Life Technologies Corp. over genetic-testing kits after the U.S. Supreme Court put limits on overseas infringement, the Federal Circuit ruled Monday, saying the possibility for damages had been foreclosed by Promega’s “all-or-nothing” damages strategy.

Expert Analysis

  • Roundup

    Making Pro Bono Work

    Pro Bono Thumbnail

    In this series, attorneys explore the challenges and rewards of pro bono volunteering in the legal profession.

  • A Few Facts About Halloween Costumes And Copyright

    David Kluft

    Halloween is tough if you are an intellectual property lawyer who likes to dress up. Anyone who knows about your job will be unable to resist lame and legally incorrect jokes about your Halloween costume. But sharing some real facts about Halloween costume copyrights might be the best response, says David Kluft of Foley Hoag LLP.

  • Being There: Preparing Witnesses For Depositions

    Alan Hoffman

    Preparing witnesses to be deposed is a critical element of discovery. It is important to remember that each witness is an individual with unique personal qualities, strengths and weaknesses. Getting to know the witness helps establish rapport and trust, says Alan Hoffman of Husch Blackwell LLP.

  • A Common-Sense Approach To Conversion In Digital Age

    Harvey Wolkoff

    Courts have openly struggled with whether electronic data satisfy conversion’s “tangibility” requirement. But in Children’s Hospital v. Cakir, a Massachusetts federal judge recently made clear that conversion provides a recourse for owners of electronic data that is destroyed or stolen, say attorneys with Ropes & Gray LLP.

  • Post-Grant Proceedings As A Freedom-To-Operate Tool

    Marianne Terrot

    While many inter partes review petitions are defensive, there are innovative companies that file IPR and post-grant review petitions with an objective of acquiring freedom to operate in the United States relative to the patents of a third-party patent owner, often itself an innovative company, say attorneys with Finnegan Henderson Farabow Garrett & Dunner LLP.

  • Series

    Making Pro Bono Work: The Sidley-Exelon Partnership

    Kelly Huggins

    Exelon Corp. and Sidley Austin LLP have been working together on both short- and long-term pro bono matters for the past 10 years. We offer a glimpse of how we got started and what we have done in the hope that other corporate legal departments and law firms might find ways to work together to meet the legal needs of the poor, say Kelly Huggins, pro bono counsel at Sidley Austin, and Margaret Balsley-Cross, assistant general counsel at Exelon.

  • Opinion

    Despite Good Intentions, IPR Clashes With Hatch-Waxman

    Anthony Caso

    Congress thought it was fixing the problem of patent trolls when it created the inter partes review process in 2011, but this law conflicts with the Hatch-Waxman Act. Congress should get rid of the IPR process and instead give the U.S. Patent and Trademark Office the tools it needs to issue only valid patents in the first place, says Anthony Caso of Chapman University.

  • Recipe For Legal Project Management: Look To BBQ Champs

    Anthony Rospert

    As a master certified barbecue judge with the Kansas City Barbeque Society, I have noticed that the top pitmasters follow a consistent process in approaching each and every competition. Their "secret sauce" — employing project management principles — can also help lawyers achieve success, says Anthony Rospert of Thompson Hine LLP.

  • The 3rd-Party Submissions Most Likely To Succeed At USPTO

    Braden Katterheinrich

    We examined the success rate of third-party submissions, which are cheaper to prepare than post-issuance challenges, but are not without risks — as seen in the Patent Trial and Appeal Board's recent "informative" decision in Cultec, say Braden Katterheinrich and Nicholas Anderson of Faegre Baker Daniels LLP.

  • Pendulum May Be Swinging Away From Fair Use

    Meaghan Kent

    Over the past year or so, courts have begun to temper the fair use defense to copyright infringement. The KinderGuides decision last month from the Southern District of New York is the most recent example of this growing trend, say attorneys with Venable LLP.