Intellectual Property

  • September 21, 2017

    Delaware Booming, Texas Fading As TC Heartland Takes Hold

    In the nearly four months since the U.S. Supreme Court’s TC Heartland ruling shook up the rules on where patent suits can be filed, the District of Delaware is seeing significantly more suits, while filings in the Eastern District of Texas have dropped sharply.

  • September 21, 2017

    MasterCard Can't Challenge Card Tech Patents In CBM Review

    The Patent Trial and Appeal Board on Thursday rejected MasterCard International Inc.’s bid to invalidate two patents for card activation technology, finding a lawsuit over a license agreement MasterCard allegedly breached didn’t give it standing to challenge the patents in covered business method review.

  • September 21, 2017

    Baseball Legend Licensing Fight Needs A Pause, Court Told

    An Indiana licensing management company asked a Florida federal judge Wednesday to stay discovery in a “predatory action” by a Florida company alleging infringement of marketing rights for the likeness of baseball legend Honus Wagner until she rules on its upcoming motion to dismiss or transfer the case.

  • September 21, 2017

    UK Litigation Funder, IP Firm Put Funding Row To Rest

    A U.K. litigation funder has reached an agreement with Chicago-based patent litigator Niro Law Ltd. to end a suit accusing the firm of refusing to hand over a cut of its attorneys’ fees to repay millions of dollars in loans.

  • September 21, 2017

    Auto Software Maker Accuses Rival Of IP Cybertheft

    An Illinois-based maker of software designed to let car enthusiasts and repair shops tune vehicle computers went after a rival in Washington federal court Wednesday for allegedly hacking into the company's systems and making off with trade secrets.

  • September 21, 2017

    BREAKING: Fed. Circ. Strikes Down Gilstrap’s Patent Venue Rules

    The Federal Circuit on Thursday ruled that Eastern District of Texas Judge Rodney Gilstrap abused his discretion by refusing to transfer a patent suit against Cray Inc. to another court, holding that venue rules the judge has established are not in line with patent law.

  • September 21, 2017

    Attys Can’t Yet Dump Client Jawbone In Fitbit IP Suit

    A California federal judge declined to rule on Thursday on a bid by attorneys to withdraw from representing Jawbone in Fitbit Inc.’s patent infringement suit against the rival wearable fitness device maker, expressing concerns that if he grants the unopposed request, Jawbone will be unrepresented, which could disrupt the litigation.

  • September 21, 2017

    3rd Circ. Lets GSK Win Stand In Wellbutrin Pay-For-Delay Row

    The Third Circuit on Wednesday turned down requests by buyers of Wellbutrin XL to redo its August decision upholding a win for GlaxoSmithKline PLC in litigation accusing the company of delaying generic competition for the antidepressant.

  • September 20, 2017

    Patent For Cholesterol Drug Livalo Is Valid, Judge Rules

    Japanese drugmaker Kowa Co. Ltd. won a patent infringement trial against Amneal and Apotex on Wednesday when a New York federal judge delivered the verdict that Kowa’s patent for the statin Livalo was valid and that the defendants were not able to show it was anticipated or obvious.

  • September 20, 2017

    Pathogen-Killer Claims Unfair, Medical Co. CEO Testifies

    Medical garment maker Vestagen Protective Technologies has gained an unfair market advantage by making false and unlawful claims that its products kill 99 percent of all pathogens, the CEO for rival Strategic Partners testified Wednesday in a California federal trial where his company is defending against theft of trade secret claims.

  • September 20, 2017

    Mass. Justices Take Up Insurance Row Over Shoemaker's TM

    Massachusetts' highest court has agreed to review a lower court's ruling that a pair of insurers can't recoup sums they paid to defend Vibram USA Inc. against a suit alleging the company unlawfully obtained a trademark for a shoe named after the late Olympic marathon champion Abebe Bikila in a case that raises multiple issues of first impression under state law.

  • September 20, 2017

    New Group Aims To Protect American IP In Trade Deals

    Trade associations from the entertainment, art, medical and technology industries announced a new partnership Tuesday with a mission to advance creativity and innovation while facing the challenge of enforcing their intellectual property internationally.

  • September 20, 2017

    PTAB Erred In Communication Patent Ruling, Fed. Circ. Says

    The Federal Circuit on Wednesday reversed a Patent Trial and Appeal Board ruling that NFC Technology failed to show the inventor of a near-field communication device had created a prototype that rendered a patent obvious, saying the decision lacked substantial evidence.

  • September 20, 2017

    Gore Can't Slip Invalidity Verdict In Stent Patent Row

    A Delaware federal judge on Wednesday denied W.L. Gore & Associates Inc.’s bid to toss a jury’s finding that Gore’s patent relating to a stent device, which Gore had unsuccessfully alleged was infringed by C.R. Bard Inc., is invalid over prior art.

  • September 20, 2017

    5 Ideas From Judge Michel For Tackling Patent ‘Crisis’

    After telling Congress in July that the patent system is in “crisis mode,” former Federal Circuit Chief Judge Paul Michel has offered lawmakers numerous ideas on how to respond. From overhauling America Invents Act reviews to better defining eligibility rules, here’s a look at the judge’s legislative proposals.

  • September 20, 2017

    You Can Send A Cease-And-Desist And Not Be Jerk About It

    In-house lawyers at Netflix won the company praise this week with a charming cease-and-desist letter they sent to an unauthorized “Stranger Things”-themed pop-up bar, reminding trademark attorneys everywhere that doom-and-gloom boilerplate isn’t always the right approach.

  • September 20, 2017

    Waymo Pegs Uber Trade Secret Theft Harm At $2.6B

    Amid revelations on Wednesday that a Waymo-commissioned expert report estimated damages caused by Uber’s alleged trade secret theft at $2.6 billion, U.S. District Judge William Alsup accused the Alphabet spinoff of crying “crocodile tears” in seeking to delay trial over the purported theft of self-driving car technology.

  • September 20, 2017

    Cislo & Thomas Adds 5 IP Attys, Opens 2 Calif. Offices

    Intellectual property boutique Cislo & Thomas LLP has expanded its attorney ranks and its California footprint, adding five partners previously with Leech Tishman LLP as it opens two new offices in the state.

  • September 20, 2017

    PTAB Finds Wireless Patent Challenged By Arris, HP Invalid

    The Patent Trial and Appeal Board on Wednesday nixed a Mobile Telecommunications Technologies LLC wireless communications patent that the company had accused numerous tech giants of infringing, finding that it was obvious as anticipated over prior art.

  • September 20, 2017

    CUT Method No Slam Dunk Despite Amazon, Medtronic Wins

    The U.S. Tax Court's decided preference for the comparable uncontrolled transaction method, as shown most recently in transfer-pricing victories for Amazon and Medtronic, may not necessarily increase the method's popularity among taxpayers, experts say.

Expert Analysis

  • Recent Cases Provide Hope For Reverse-Payment Defendants

    David Kully

    In the four years since Federal Trade Commission v. Actavis shook up the pharmaceutical industry, defendants have struggled to escape liability for entering reverse-payment settlement agreements. However, two recent appellate decisions provide them with a powerful argument for avoiding damages in upcoming reverse-payment litigation, say David Kully and Charles Weiss of Holland & Knight LLP.

  • 10 Reasons To Use A Continuation Patent Application

    Rory Pheiffer

    Savvy applicants will consider continuation applications as a valuable tool throughout patent prosecution, and will draft their applications to include multiple defensive, offensive, fallback and alternative positions, says Rory Pheiffer of Nutter McClennen & Fish LLP.

  • The Role Legal Finance Can Play In Firm Year-End Collections

    Travis Lenkner

    Payment collection delays have caused law firms to seek new options, one of which is litigation finance. In this context, litigation finance can offer alternative avenues to firms as they approach the end of a fiscal year or partnership distribution dates, says Travis Lenkner of Burford Capital LLC.

  • How To Give Patent Clients A 'Get Out Of Texas' Card

    Jeremy Elman

    Following the U.S. Supreme Court's recent patent venue decision in TC Heartland, companies should take a fresh look at the Eastern District of Texas to put an end to forum shopping there, say Jeremy Elman and Robert Mallard of Dorsey & Whitney LLP​.

  • 'Per-Doc' Pricing Can Improve Document Review

    file folder

    Imagine going to a restaurant and ordering your steak medium-rare. The steak arrives burned. You expect the kitchen to bring you another one properly done, right? And you don’t expect to pay for two steaks, do you? Paying a vendor for document review should be no different, says Lisa Prowse, an attorney and vice president at e-discovery firm BIA Inc.

  • A Review Of Willfulness Findings In Hatch-Waxman Actions

    Brian Coggio

    Federal Circuit cases interpreting Halo will likely increase awards of attorney fees and thus portend an increase in allegations of willful infringement in Hatch-Waxman actions. The present standard for finding willful infringement in Hatch-Waxman actions is somewhat uncertain, say Brian Coggio and Ron Vogel of Fish & Richardson PC.

  • Are PTAB Precedential Opinions Really Binding?

    Richard Torczon

    The Federal Circuit's recent decision in Snyder v. Secretary of Veterans Affairs raises the question of whether the U.S. Patent and Trademark Office has met the requirements for using adjudicative decisions as precedent, says Richard Torczon, of counsel at Wilson Sonsini Goodrich & Rosati PC and a former Patent Trial and Appeal Board judge.

  • Finding Eligible Subject Matter For Business Methods

    Matthew Grady

    Although software and business method patents have recently come under fire, there are valid approaches to successfully preparing and prosecuting these applications in the current environment, say Matthew Grady and Ed Russavage of Wolf Greenfield & Sacks PC.

  • 5 Thoughts On 5 Years Of Inter Partes Review

    Gene Lee

    Over the five years since inter partes review came into effect, it has made the Patent Trial and Appeal Board the most popular venue for litigating patent disputes. It is worthwhile to ask whether IPRs are achieving their intended policy goals and at what cost their popularity comes, say Gene Lee and Danielle Grant-Keane of Perkins Coie LLP.

  • Tips For Drafting Patents That Won't Need Alice Step 2

    Phillip Articola

    Based on three cases in which the Federal Circuit has found software-related claims to recite patent-eligible subject matter, a patent application drafter can improve the chances that claims pass muster under step one of the Alice two-step patent-eligibility test, thereby not requiring an analysis under step two, says Phillip Articola of Banner & Witcoff Ltd.