An all too typical fact pattern involves a small-time ne’er-do-well infringing on the rights of a much bigger corporation. When the corporation is forced to bring a lawsuit, the “little guy” infringer cries poverty and seeks a settlement. An oft-used tactic of corporations is to settle the matter quickly (and before too much in attorneys’ … Continue Reading
In a unanimous February 1, 2023 Order, a Federal Circuit panel granted Google LLC’s petition for a writ of mandamus directing the U.S. District Court for the Western District of Texas to vacate its order denying transfer of patent infringement claims to the Northern District of California. As discussed here, this precedential decision signals the … Continue Reading
In Punchbowl, Inc. v. AJ Press, LLC, the Ninth Circuit affirmed a trademark win for upstart news outfit Punchbowl News. In doing so, the court held that First Amendment protection extends to the names of commercial enterprises. This ground-breaking decision heralds the expansion of traditional fair use defenses to any trademark infringement claims where a … Continue Reading
The U.S. International Trade Commission (“ITC”) continues to be a popular venue for patent litigation under Section 337 of the Tariff Act of 1930. The speed at which Section 337 investigations proceed and the significance of an adverse decision can create circumstances that may lead to allegations of improper conduct. Similar to patent litigation in … Continue Reading
In a recent post, I discussed a September Federal Circuit decision (Cooperative Entertainment v. Kollective Technology) that reversed a lower court dismissal of a patent infringement case on Section 101 eligibility grounds under the Supreme Court’s 2014 Alice Corp. v. CLS Bank test. Just weeks after that ruling, the Federal Circuit in IBM v. Zillow … Continue Reading
On October 4, 2022, in a 52-page Director review decision in an inter partes review (IPR) proceeding involving recently-formed entity OpenSky Industries LLC, USPTO Director Katherine Vidal sanctioned OpenSky “to the fullest extent of [her] power” because of OpenSky’s abuse of the IPR process, including flaunting of the Director’s discovery orders. The Director applied negative … Continue Reading
One of the threshold requirements for obtaining a patent under U.S. law is that the invention is a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…” In other words, the subject matter of the invention must be eligible for patenting. Many courts have used this requirement … Continue Reading
In a potentially industry-changing ruling, Judge Gilliam of the Northern District of California ruled that amendments to click-wrap agreements, like Dropbox’s terms of use, are invalid unless the user had to manifest assent through some act more than continued use of the service: Defendant essentially argues that it contracted for the right to change the … Continue Reading
The heirs of Argentinian soccer super star, Diego Maradona, as well as a John Doe identified only by an IP address, have been sued for trademark infringement based on their use of the name “Maradona.” The suit was filed on January 13, 2022, and is just another episode in an ongoing struggle over the rights … Continue Reading
A recent High Court decision in the case of Blu-Sky Solutions Limited (“Blu-Sky”) v Be Caring Limited (“BCL”) has put terms and conditions into the spotlight. The case has highlighted the importance of making sure that any onerous terms in your standard terms and conditions are clearly brought to the attention of the other party … Continue Reading
Much of the discussion about the Federal Circuit’s precedential opinion in Yu et al. v. Apple, Inc. et al. has focused on the perceived confusion and dysfunction of U.S. patent law that invalidates a claim directed to an “improved digital camera” as a patent-ineligible “abstract idea.” After delving into the underlying record, this author posits … Continue Reading
In patent infringement cases involving consumer electronics and the like, the accused instrumentality oftentimes includes components the accused infringer obtained from third-party suppliers. To prove infringement, the patent owner may need discovery from the third party, such as source code, and that discovery would in turn be relied upon by the patent owner’s testifying expert. … Continue Reading
Since the mid-2000s, mention Marshall, Tyler, Sherman, Beaumont or Texarkana to an experienced patent litigator and you would get knowing nods about this string of small Texas towns, tips on their favorite BBQ or Tex-Mex restaurants, and war stories about the big patent wars fought there. The Eastern District of Texas, along with the District … Continue Reading
In his continued blog series, Dr. Paolo Beconcini and Elisa Li discuss the principles of evidence pertaining to IP disputes in China, including recent and substantial changes to those rules. In China, evidence must be collected prior to the filing of a case, as there is no discovery. The changes address commonly-occurring issues of authenticity, foreign … Continue Reading
Serving foreign corporate defendants with a complaint filed in a U.S. Federal Court has never been an easy task, but the COVID-19 global pandemic and regional shut-down orders have made finding someone to physically serve with process nearly impossible in many locations. Contrary to conventional wisdom, one district court recently made it clear that The … Continue Reading
Monday’s announcement of the institution of a section 337 investigation of Certain Batteries and Products Containing the Same, 337-TA-1244, is notable as the first time in recent memory that a battery company has sued in the US International Trade Commission (ITC) for design patent infringement. Battery patents typically cover new and useful features of a … Continue Reading
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
Ferrari 250 GTO, often hailed as the most expensive car in the world, was initially introduced by Ferrari in 1962. Only 36 models of 250 GTO were exclusively produced between 1962 and 1964. The fact that each buyer had to be personally approved by Enzo Ferrari only added to the exclusivity of this particular car … Continue Reading
Embedding content from a social media site in one’s website initially seemed to be a safe harbor from a copyright infringement claim. In 2007, the Ninth Circuit adopted the so-called “server test,” ruling that in-line linking of images – now more commonly referred to as embedding – did not violate the exclusive display, copying or … Continue Reading
On July 1, 2020, the Federal Circuit’s Amendments to its Rules of Practice took effect. These Amendments were adopted to clarify and streamline the Court’s current practices, especially in view of the 2019 amendments to the Federal Rules of Appellate Procedure. To assist practitioners, the Federal Circuit released a summary of its Adopted Rule Amendments. … Continue Reading
In Mayborn Group, Ltd. v. ITC, 19-2077 (July 16, 2020), the Court of Appeals for the Federal Circuit (CAFC) affirmed an U.S. International Trade Commission (ITC) decision denying a petition for rescission of a General Exclusion Order (GEO) based on new invalidity arguments presented by a party not involved in the underlying investigation. This decision … Continue Reading
Courts are exercising their power under Rule[1] 30(b)(4) to order that depositions be taken remotely and by videoconference during these uncertain times of the coronavirus pandemic. Such orders reflect concerns about the progress of cases, as discussed in our prior blog, and the public health. With remote depositions being essential under current circumstances, attorneys need … Continue Reading
Today’s litigators are advocates and strategists, excelling in the application of rules, the art of negotiation, and the power of oral argument, and they use these tools to achieve the best possible outcomes for their clients. In the age of COVID-19, with stay-at-home orders in effect across much of the nation, litigators may have lost … Continue Reading
The Supreme Court arguments in USPTO v. Booking.com B.V.[1] on May 4, 2020, marked a historic first: the Supreme Court held oral arguments remotely, by telephone. As a result, lawyers and Supreme Court enthusiasts were able to listen to the argument in real time. Further, both the Petitioner USPTO and the Respondent Booking.com were represented … Continue Reading
