David Elkins

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What Was Old Is New Again In IP Litigation — Thanks To Suspected Russian State-Sponsored Hack

Top technology trends in the legal profession for 2021 are likely to include artificial intelligence, block chain and cryptocurrencies, autonomous vehicles, digital health, and … court filings on paper. Following a recent widespread cybersecurity breach, the United States federal courts are prohibiting electronic filing of highly confidential documents. Parties must file such documents on paper … Continue Reading

Prying Eyes – Practical Steps for the Protection of Trade Secrets During the Pandemic

With no known vaccine and high infection rates, countries all over the world continue to take precautions to protect their citizens from Covid-19 by issuing “Stay-at-Home” Orders that prevent residents from leaving their homes except for essential tasks. Homes have transformed from private retreats to offices for one or more working household members, classrooms, and … Continue Reading

False Advertising Dangers Lurk in the Age of COVID-19 – Redux

As we previewed in our earlier post, the COVID-19 pandemic raises new and heightened false advertising concerns for companies seeking to capitalize through mentions of the virus in marketing or consumer outreach efforts. During this harried time, both the unwary – and the well-informed – advertiser should navigate carefully to avoid the trap of consumer … Continue Reading

The Federal Circuit Reaffirms That Using Patents As Evidence Of Trade Secret Theft Does Not Require Resolution of A “Substantial Patent Question” Sufficient For Federal Subject Matter Jurisdiction

It is back to state court for Acer America Corp., after the Federal Circuit held that Acer’s state law trade secret claims should never have been removed to federal court in the first instance. Intellisoft Ltd. v. Acer America Corp., No. 19-1522. Vacating the district court’s judgment in Acer’s favor, the Federal Circuit reiterated longstanding … Continue Reading

False Advertising Claims Lurk in the Age of COVID-19

Companies around the world are scrambling to respond to the unprecedented challenges posed by the COVID-19 pandemic.  We have all received many emails and seen a plethora of ads and social media posts by manufacturers, retailers and service providers about steps they are taking to respond to COVID-19 related challenges.  The messaging is vital for … Continue Reading

The Defend Trade Secrets Act (DTSA) Can Apply To Acts of Misappropriation Occurring Entirely Outside the United States

After deliberating less than three hours, a jury in the Northern District of Illinois recently awarded Motorola Solutions over $700 million in damages for a civil claim arising under the Defend Trade Secrets Act (“DTSA”).  Motorola Sols., Inc. v. Hytera Commc’ns Corp., Ltd., No. 1:17-cv-1973, ECF No. 834 (N.D. Ill. Jan. 31, 2020).  Most remarkable … Continue Reading

The Federal Circuit Takes a Mulligan and Reins in the Eastern District of Texas’s Assertion of Venue the Second Time Around

The Federal Circuit sent Google an early valentine on February 13, 2020, when it granted the petition for mandamus in In re Google, Case No. 19-126, directing that the Eastern District of Texas either dismiss Super Interconnect Technologies LLC’s (“SIT”) infringement action or transfer it under 28 U.S.C. § 1406(a).  The court’s precedential opinion held that … Continue Reading

A New Slant: Supreme Court Invalidates Bar to Registering “Disparaging” Trademarks

Yesterday, the U.S. Supreme Court ruled in Matal v. Tam, 15-1293 (June 19, 2017), that the First Amendment of the U.S. Constitution prevents the U.S. Patent and Trademark Office (“PTO”) from declining to register trademarks deemed offensive or disparaging.  While the decision concerned the PTO’s rejection of an application to register the name of the … Continue Reading

Exhausted: The Supreme Court Takes The Federal Circuit To Task (Again)

On May 30, 2017, the U.S. Supreme Court continued its recent string of decisions reversing Federal Circuit holdings on fundamental issues of patent law.  Taking on patent exhaustion in Impression Products, Inc. v. Lexmark Int’l, Inc., No. 15-1189, the Court unanimously held that that “a patentee’s decision to sell a product exhausts all of its … Continue Reading

Change of Scenery: TC Heartland Reshapes the Patent Litigation Landscape

Earlier today (May 22, 2017), the U.S. Supreme Court unanimously held that venue for patent infringement suits against U.S. companies is limited to the company’s state of incorporation or where the company has a “regular and established place of business.”  The Supreme Court’s decision—TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341—dramatically reshapes … Continue Reading

Supreme Court Tosses Laches Defense To Patent Damages

Yesterday, the Supreme Court reversed the Federal Circuit’s en banc decision in SCA Hygiene Prods. v. First Quality Baby Prods., 807 F.3d 1311 (Fed. Cir. 2015) (en banc), and effectively abolished laches (unreasonable, prejudicial delay) as a defense to patent infringement claims or damages.  The Court’s decision does not disturb the Federal Circuit’s additional holding … Continue Reading

The Northern District of California’s Recent Patent Local Rules Amendments: Elevating Damages Considerations to the Same Level as Infringement and Invalidity Contentions

Given the large cluster of technology companies in Silicon Valley, the Northern District of California has long been a top venue for patent infringement litigation. In December 2000, that court adopted its Patent Local Rules, mandating early disclosure by the parties of their infringement and invalidity contentions followed by the orderly identification of claim terms … Continue Reading

Again Reversing the Federal Circuit, The Supreme Court Vests District Courts With Deference For Claim Construction

Teva Pharm. USA, Inc. v. Sandoz, Inc., U.S., No. 13-854, 1/20/15 Continuing its string of decisions reversing Federal Circuit precedent, today the Supreme Court rejected the Federal Circuit’s de novo standard for reviewing district court claim construction rulings. Rather, in view of the subsidiary fact findings that are typically integral to the claim construction process, … Continue Reading

The Supreme Court Gives Juice to Lanham Act Claims

The Supreme Court’s unanimous opinion in POM Wonderful LLC v. Coca-Cola Co. (Dkt. No. 12-761) (June 12, 2014) highlights the key role of Lanham Act false advertising claims in protecting consumers from misleading advertising and labeling. Reasoning that competitors often are in a better position than regulators to identify false advertising and other unfair competition, … Continue Reading
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