Intellectual Property

Expert Analysis

• Avoiding Antitrust Issues In Search Term Ad Agreements

  

  Amid increased appetite in antitrust enforcement and litigation concerning negotiations between companies over search term advertising, use of such agreements should be approached with caution, particularly when restrictions on keyword bidding are involved, say attorneys at Winston & Strawn.

• Series

  Embracing ESG: Raytheon GC Talks Climate Change

  

  Now that the climate crisis is seen as an existential threat, the stakes couldn't be higher — or the challenges more daunting — for the general counsel, who must enlist all parts of the company for support while providing both a legal and ethical road map on how to respond, says Frank Jimenez at Raytheon.

• Opinion

  Amend Rule 702 To Clarify Expert Witness Standards

  

  Courts have taken widely different approaches to the U.S. Supreme Court’s Daubert decision on expert testimony admissibility, often misinterpreting the underlying standards set forth by Federal Rule of Evidence 702, but a proposed amendment will dispel misunderstandings and clarify the judicial gatekeeping role, says Alex Dahl at defense-side group Lawyers for Civil Justice.

• The Need For Insurance Options To Protect NFTs

  

  Until insurance companies offer crucial protections to cover the unique risks in the nonfungible token market, NFT owners, buyers, marketplaces, wallet providers and server farms remain exposed to potentially significant hazards, say attorneys at Pillsbury.

• Opinion

  High Court Arthrex Remedy Should Concern Congress

  

  In light of the U.S. Supreme Court's decision in U.S. v. Arthrex, stripping Patent Trial and Appeal Board judges of final decision-making authority and delegating discretionary review power that Congress may have withheld for good reason, the America Invents Act needs some tweaks, say Scott McBride and Alex Vogler at McAndrews Held. 

• Responding To Novelty Rejections After Recent PTAB Ruling

  

  After the recent Patent Trial and Appeal Board decision in Ex Parte Littlejohn, reversing a rejection for lack of novelty, practitioners should rigorously argue when office actions fail to disclose all the limitations and elements in a claim, and strategically use appeals, says Martin Miller at Kacvinsky Daisak.

• 1-800 Contacts Ruling Illustrates IP Hurdle For Antitrust Cases

  

  The Federal Trade Commission's recent loss against 1-800 Contacts in the Second Circuit illustrates the challenge facing antitrust enforcers in bringing actions against intellectual property rights holders, with many courts taking a narrow view of what constitutes anti-competitive conduct, say attorneys at Duane Morris.

• Texas Ruling Shows Weight Of State Immunity In IP Claims

  

  Unusual circumstances led to the Texas Supreme Court’s recent copyright decision in Jim Olive v. University of Houston — a case that likely should have been subject to federal preemption — and the court’s conclusions reveal that copyright owners may have little redress when a state government infringes their intellectual property rights, say attorneys at Haynes and Boone.

• Mass. Ruling A Cautionary Tale For Attorneys Changing Firms

  

  The Massachusetts high court's recent ruling in Governo v. Bergeron, that lawyers could be held liable for unfair competition with a former firm, highlights important considerations for departing attorneys soliciting clients to come with them, say Mariana Korsunsky and Gary Ronan at Goulston & Storrs.

• Next Steps For Cos. After High Court Patent Assignor Ruling

  

  Following the U.S. Supreme Court's recent decision in Minerva v. Hologic limiting a doctrine that bars patent assignors from attacking the validity of patent rights, attorneys at Paul Hastings offer several practical tips for employers, litigants, and parties prosecuting applications from acquired portfolios.

• How To Avert Media Narrative And Get A Fair High-Stakes Trial

  

  Corporate defendants in bet-the-company litigation may face an uphill battle to a fair trial when the media paints an entire industry, and every entity within it, as a villain — but some strategic tools can help build a more constructive defense and counteract damaging outside spin, says Jessie Zeigler at Bass Berry.

• Opinion

  Federal Tech, Trade Bill Needs IP Owner Transparency Tweaks

  

  A pending federal bill to advance innovation contains an amendment, aimed at exposing Chinese interests in U.S. patent assignments, that needs refinement to involve proper legislative channels and boost patents' value, say former U.S. Patent and Trademark Office Director David Kappos, now at Cravath, and former Federal Circuit Chief Judge Paul Michel.

• Opinion

  State Courts' Stark Lack Of Diversity Demands Action

  

  With state judiciaries lagging their federal counterparts in demographic and professional diversity, law firms, state bar associations and other stakeholders should help build a path for more people with diverse backgrounds to become state judges, say Janna Adelstein and Alicia Bannon at the Brennan Center for Justice.

• Drafting, Litigation Tactics Post-Fed. Circ. Camera Patent Ax

  

  Patent drafters and litigants can employ several strategies to avoid the result in the recent Federal Circuit Yu v. Apple decision, which upheld the invalidation of a digital camera patent as abstract where there was a mismatch between the claims and specification of the invention's advantages, says attorney Jason German.

• 6 Ways To Guide Applications Under New Patent Classification

  

  Intellectual property practitioners can navigate the recently implemented Cooperative Patent Classification system to direct applications to specific prior art units within the U.S. Patent and Trademark Office, avoid especially difficult units, and improve clients' portfolios in newly emerging technologies, say Roberta Young and Brian Michaelis at Seyfarth.