IP Litigation

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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

Federal Circuit Extends Potential Reach of Chemical Compound Structural Similarity Obviousness Law

In Valeant Pharmaceuticals Int’l, Inc. v. Mylan Pharmaceuticals Inc., No. 2018-2097 (Fed. Cir. April 8, 2020), the Federal Circuit was asked “whether prior art ranges for solutions of structurally and functionally similar compounds that overlap with a claimed range can establish a prima facie case of obviousness.” Concluding that they can, the Federal Circuit reversed … 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

Copyright Defenses When a Copyright Infringement Claim Gets Under Your Skin

On March 26, a federal district court in New York held that the publishers of the popular NBA 2K videogame did not infringe on plaintiff’s tattoo copyrights when the publishers depicted those tattoos on basketball players in NBA 2K. The publishers, 2K Games and Take-Two Interactive Software, were successful in asserting multiple copyright defenses, including … Continue Reading

Moving Cases Toward Completion During the Coronavirus Pandemic: Has the Time Finally Come for Increased Reliance on Remote Hearings and Depositions?

As more and more courts grapple with the Coronavirus Public Health Emergency, many are issuing Administrative Orders with provisions for conducting business via teleconference or videoconference. Most courts and litigators are familiar with holding status conferences and discovery dispute hearings by phone conference. But what should courts and parties do about complex hearings such as … Continue Reading

Federal Courts that Hear Intellectual Property Cases Requiring Litigation at a Distance

In an effort to contain the COVID-19 outbreak, courts across the US are now limiting services to those that are essential and enforcing social distancing, especially in civil matters. We summarize here key provisions of the COVID-19 orders for twelve federal courts that commonly hear patent, copyright, trademark and/or trade secret cases. These courts are … 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

Webinar – Blocking Patents in Litigation After Acorda: What’s Acorda’s Impact Inside and Outside of Pharma?

Intellectual Property & Technology partner David Manspeizer (New York) is a panelist on IPO’s (the Intellectual Property Owners Association) IP Chat Channel webinar – Blocking Patents in Litigation After Acorda: What’s Acorda’s Impact Inside and Outside of Pharma?  The program, which will take place on February 20, 2020 at 2 pm (EST), will address the … Continue Reading

Bentley Forced to Hit the Brakes

In what are challenging economic times, concentric diversification is increasingly being considered by businesses as a way of gaining an advantage over competitors. In the automotive sector in particular, manufacturers are expanding their offerings, particularly in the after-sales market, to supplement sales of traditional products. The recent High Court decision in Bentley 1962 Ltd v … Continue Reading
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