IP Litigation

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Ninth Circuit: Commercial Brand Names Can Be Expressive Speech

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

ITC Denies Competing Motions for Sanctions For Failure to Comply with the Rules

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

The Alice Test for Patent Ineligibility in Practice, Part Two: The Federal Circuit Affirms a Dismissal

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

What Gives You the Right to Be in This IPR? A Question OpenSky Should Have Answered

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

The Alice Test for Patent Ineligibility in Practice: The Federal Circuit Reverses District Court’s Dismissal of an Infringement Case

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

Bombshell Ruling Puts Amendments to Click-Wrap and Terms of Use Agreements in Question

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

An International Drama Over the Maradona Heir’s Right to Use Their Dad’s Name

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

Are All the Terms in Your Standard Terms and Conditions Incorporated?

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

Litigators Take Note – Yu v. Apple is Not Just About Subject Matter Eligibility of Patents

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

Evidence Relating to Third Party Chips Better Be Good When It’s TV Time at the Federal Circuit: The admissibility of third-party source code as a business record under FRE 803(6)

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

Move Over Marshall, There’s a New Sheriff in Town—The Rise of Waco and the Western District of Texas

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

Understanding IP in China: The Rules of Evidence

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

Foreign Defendants, You’ve Got Mail! Substitute Service By Email Increasingly Permitted

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

New ITC 337 Investigation Powered by Battery Design Patents

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

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

Ferrari Loses Race for 250 GTO Trademark: Risks Arising From Non-Use of Registered Trademarks

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

To Embed or Not to Embed?: A New Challenge to Embedding Images From Social Media

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

Interesting Changes to the Federal Circuit’s Rules of Practice

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

CAFC Affirms Decision to not Rescind ITC General Exclusion Order Based on New Invalidity Arguments

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

Effectively and Efficiently Managing Remote Depositions Requires Careful Thought

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

No Excuses: Remote Depositions Required in the Age of COVID-19

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

“Booking” a Front Seat at SCOTUS: US Supreme Court Reviews Generic Trademarks in the .com Age

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

The Availability of Section 1782 Discovery in International Commercial Arbitration: A View from Northern California and the Epicenter of IP

It is a trite comment that cross-border commerce and international markets have globalized most every business, from fledging startups to multinational companies. With this new globalized reality, parties are commonly finding themselves either directly involved in disputes around the world or connected to them in some way. Northern California, with its high tech sector and … Continue Reading

Respirator Mask Price Gouging and Trademark Infringement? Not on 3M’s Watch

On April 10, 2020, 3M Co. sued an unauthorized vendor for attempting to sell an NYC agency $45 million worth of 3M-brand respirator masks at 500% of 3M’s list price, or more. Amid the COVID-19 pandemic, as government agencies scramble to procure personal protective equipment (PPE), unscrupulous parties are capitalizing on the crisis through price … Continue Reading
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