IP Litigation

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The USPTO Re-Explains What “Means” Means

On March 18, 2024, the United States Patent and Trademark Office (USPTO) issued a Memorandum containing guidance to help patent examiners analyze claim language that may be interpreted as “means-plus-function” or “step-plus-function” language under 35 U.S.C. § 112(f). The USPTO said that the Memorandum was not a change in practice for examiners. Sometimes, however, how something … Continue Reading

Apple v. Rivos: Lessons for Companies Facing Claims of Trade Secret Theft (US)

Our colleagues at Employment Law World recently blogged about a recent trade secrets decision from the Northern District of California, Apple v. Rivos. The case involved a common fact pattern: numerous employees were hired away from Apple by Rivos and Apple brought claims for trade secret misappropriation (among others). The court dismissed the claims against … Continue Reading

The USPTO Speaks on Obviousness – Do Patent Practitioners Have an Answer?

The United States Patent and Trademark Office (USPTO) recently published updated guidance emphasizing a very flexible approach to determining obviousness under 35 U.S.C. § 103, consistent with the U.S. Supreme Court’s opinion in KSR v. Teleflex. The guidelines are written for USPTO personnel but combined with the Manual of Patent Examining Procedure (MPEP), they provide … Continue Reading

In TTAB Proceedings, Subpoenas Must be Issued by the Clerk of the Court

In Waterdrop Microdrink GmbH v. Qingdao Ecopure Filter Co., Ltd., the District Court for the Central District of California denied a motion to compel compliance with a subpoena relating to a Trademark Trial and Appeal Board (“TTAB”) proceeding, because the subpoena was never signed by the Clerk of the Court — despite the fact that … Continue Reading

AI Art Registration Denied – The Copyright Review Board Tells Applicant To Gogh Home

Last Fall in this space, we discussed the U.S. Copyright Office’s AI Initiative launched in early 2023. Among other things, the Initiative’s portal compiles registration decisions for AI-generated materials. Particularly instructive is a December 11, 2023 decision by the Copyright Review Board affirming the denial of registration to an AI-generated artwork. As detailed below, when … Continue Reading

A Win for Skinny Labels; Insights for Enforcing Use Patents

Most drugs are covered by multiple patents, with initial patents directed broadly to the compound and later patents directed to increasingly narrower uses of the compound. This provides opportunities for the compound to be approved as a generic drug before expiration of all of the patents, based on a “skinny” label – i.e., a label … Continue Reading

People Don’t Come to See the Tattoo, They Come to See the Show

In Cramer v. Netflix, Inc., 3:22-cv-131 (W.D. Pa. Sep. 18, 2023), the plaintiff brought a lawsuit alleging copyright infringement because a photograph flashed on the screen during the “Tiger King 2” documentary depicted a tattoo of the now famous “Tiger King” (a/k/a “Joe Exotic”), that the plaintiff tattoo artist had inked. Because ownership of original … Continue Reading

Proactive Strategies in IPRs after Allgenesis

A recent Federal Circuit decision, Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, provides some interesting insights into patent challenge strategies, and their consequences, when a potentially infringing product is not yet on the market. Allgenesis, which has been developing a pterygium treatment product using nintedanib, filed an inter partes review (IPR) petition to try to … Continue Reading

Federal Circuit Rules That Mark Cannot Be Cancelled Due To Fraudulent Incontestability Declarations

The Federal Circuit recently issued a decision with important ramifications on how petitions for cancellation due to fraud will be handled by the Trademark Trial and Appeal Board (“Board”) going forward. In Great Concepts LLC v. Chutter, Inc., the Court, with a 2-1 majority, found that the Board wrongly cancelled the registration of a trademark … Continue Reading

Federal Policymakers: Chasing the Runaway AI Train

The U.S. is generally viewed as “behind” in its regulation of AI compared to the European Union and Asian countries. Yet ChatGPT’s release triggered a tsunami of U.S. legislation in 2023 from federal and state legislators seeking to address perceived concerns with the emerging and fast evolving technology. State legislatures have introduced nearly 200 AI … Continue Reading

Did the Supreme Court Rule that the Copyright Act Bars Damages for Old Infringement – Or Was It Just Sloppy Drafting? 

It seems the Supreme Court will decide (again) whether a claim for copyright infringement can extend to infringement that occurred more than three years before filing suit. In Warner Chappell Music, Inc. v. Nealy, the Supreme Court will resolve a classic circuit split – the Second Circuit holding that no damages can be obtained for … Continue Reading

The Year of AI Continues: U.S. Copyright Office Wants Your Thoughts on the Potential Regulatory Framework for AI

2023 has been a watershed year for AI with its entry into the broader public consciousness. AI has been front and center in the legal space as well, as this blog has detailed here and here. Now, the U.S. Copyright Office (USCO) is seeking public comments on the various legal, technical and policy issues raised … Continue Reading

Proposed Amendments to FRCP 26 Should Streamline Discovery

On August 15, 2023, the Committee published proposed amendments to Rules 16 and 26 of the Federal Rules of Civil Procedure (“Rules”). The amendments are designed to require that parties address and agree on discovery issues regarding privilege and work product protections at the Rule 26(f) Conference. This is a welcome change that should both … Continue Reading

Patent Linkage Litigation in China: A Two-Year Review

On June 1, 2021, the Fourth Amendment to the Chinese Patent Law became effective. An important part of the amendment is the introduction by Article 76 of the patent linkage system in China – a system for litigation of drug patents prior to market entry of generics, similar to that provided by the Hatch Waxman … Continue Reading

Podcast: SPB’s Joe Grasser Covers Art Appropriation with INDICAM

 Blog editor and partner in our IP group, Joe Grasser, covers one of the year’s most intriguing IP cases, Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al, Case No. 21-869, as part of INDICAM’s podcast series “IPxSUMMER 2023 around the world”.  As many will recall, SCOTUS recently upheld a ruling that an … Continue Reading

Trademark Litigation in the Post-Abitron World: District Court Rules That the Supreme Court’s Decision Does Not Preclude Plaintiff from Introducing Evidence of Foreign Sales

As we recently covered in this space, the Supreme Court in Abitron Austria GmbH et al. v. Hetronic International, Inc. held that Sections 1114(1)(a) and 1125(a)(1) of the Lanham Act are not extraterritorial and extend only to claims where the infringing use in commerce is domestic. We anticipated that district courts would soon be addressing … Continue Reading

Limiting the Reach of the Lanham Act: Supreme Court Vacates Substantial Monetary Damages Award Based On Foreign Conduct

The authors wish to thank Summer Associate Will Baker (Cleveland) for his work on this timely blog.  Trademark owners take note: In Abitron Austria GmbH et al. v. Hetronic International, Inc. the Supreme Court definitively ruled that Sections 1114(1)(a) and 1125(a)(1) of the Lanham Act are not extraterritorial and extend only to claims where the … Continue Reading

Central District of California:  Test Buys Do Not Create Specific Jurisdiction

A plaintiff has always been the “master” of a complaint, but such mastery is not unfettered. Principles of subject matter jurisdiction, proper venue, and personal jurisdiction restrict a plaintiff’s choice of forum. A trend of recent cases from the Supreme Court down through the lower courts continue to narrow that “mastery” that a plaintiff once … Continue Reading

No First Amendment Right to Confuse Consumers, High Court Holds

Today, in a unanimous decision, the Supreme Court held that the First Amendment will not protect an infringers’ use of a confusingly similar trademark for its goods – even if it is a humorous parody. Justice Kagan writing for the Court held that the First Amendment does not give infringers license to trade on the … Continue Reading

Federal Circuit Holds that Software Plaintiff Bears Evidentiary Burden of Copyrightability Where Defendant’s Evidence Shows Some Elements Not Copyrightable

In a case that could have some lasting impact, the Federal Circuit recently affirmed a 2020 ruling by Judge Rodney Gilstrap in the Eastern District of Texas dismissing claims that a competitor infringed non-literal elements of the plaintiff’s software. Because defendant World Programming Limited (“WPL”) had shown that some elements of plaintiff SAS Institute’s (“SAS”) … Continue Reading

Automating Entertainment: Writers Demand that Studios Not Use AI

When the Writers Guild of America (WGA) came with their list of demands in the strike that has already grinded production on many shows to a halt, chief among them was that the studios agree not to use artificial intelligence to write scripts. Specifically, the Guild had two asks: First, they said that “literary material,” … Continue Reading

World IP Day 2023: Accelerating Inclusivity of our IP Systems

Every year, on April 26, intellectual property organizations around the world observe “World IP Day” – an event established by the World Intellectual Property Organization (WIPO) to raise awareness of patents, copyrights, designs, and trademarks, and to celebrate the creativity and contributions of inventors, authors, artists and entrepreneurs. The theme for 2023 is “Women and … Continue Reading

District Court Gatekeeping Responsibility for Expert Witness Testimony to Increase Under Proposed Changes to Federal Rule of Evidence 702

Sister blog Global Investigations and Compliance Review posted a very read-worthy recent blog authored by our colleagues Marisa Darden, Ayako Russell and Jay Thomas. Addressing proposed changes to the Federal Rule of Evidence 702 standards regarding the admissibility of expert witness opinions, the post is a must read for anyone involved in or concerned with … Continue Reading

China: The New Draft Trademark Law Increases Requirements for Recognition of Well-Known Status

The recently published Draft Amendment to the Chinese Trademark Law is proposing the introduction of important changes to the current trademark system in China. In addition to introducing tighter filing requirements and proof of use to combat trademark theft (see my prior blog), it is proposing amendments to the process for determination of a trademark’s … Continue Reading
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