The America Invents Act (AIA), which became fully implemented March 16, 2013, revised U.S. patent law but included few reforms directed to curbing Non-Practicing Entity (NPE) or “patent troll” activity. Thus, not surprisingly, patent troll activity has continued at an alarming rate during the early months of 2013. Summarized below are the recent activities of
Under a recent U.S. Supreme Court ruling, publishers of books and magazines who print and sell their publications in other countries through distributors will no longer be able to rely on U.S. copyright law to prevent others from importing and re-selling those publications in the U.S. In Kirtsaeng v. John Wiley & Sons, Inc.1, the
The Fifth Circuit Court of Appeals recently held that an arbitrator did not exceed his powers when he expanded an eight-year license to use a video game’s trademarks into a perpetual license to use all the intellectual property rights associated with the game. See Timegate Studios, Inc. v. Southpeak Interactive, L.L.C., ___ F.3d ___, 2013
Soon, a new unitary patent system will bring reduced cost and greater uniformity to European patents.
A court in the Southern District of New York enjoined the defendants from selling fashion apparel in the United States that allegedly infringed the plaintiff’s trademarks, but it declined to exercise extraterritorial jurisdiction to stop the defendants from using their Hong Kong website to continue selling the same apparel to the rest of the world.
Though the Federal Rules of Civil Procedure are “not meant to create a routine right of direct access to a party’s electronic information system,” a federal district court recently held that the benefits of allowing the plaintiff direct access to the defendant’s entire business database outweighed the burden of producing it. [See Advanced Tactical Ordnance
Stating that it “will not presume the creation of jointly owned or non-exclusively licensed trademark rights,” the Sixth Circuit Court of Appeals recently held that an individual defendant and his company did not retain any ownership rights in an unregistered trademark his company had acquired in an asset sale and then transferred in another asset
With significant changes to law governing how the U.S. grants patents taking effect next month, Porter Wright recommends that all clients consider filing any contemplated patent applications by March 15. This includes filing non-provisional patent applications, and in some cases Patent Cooperation Treaty (PCT) patent applications, that are based upon any provisional or non-U.S. patent
The recently decided Revision Military case is important when either moving for a preliminary injunction or defending against such a motion in a patent-infringement suit because it makes clear that Federal Circuit law governs the application of the four-factor injunctive relief test. When the United States Court of Appeals for the Federal Circuit rules on
In this Part Two of my series on this topic I’ll take a look at the benefits and risks of the preissuance submission. As you recall, we covered the results of recent changes to U.S. patent law by the Leahy-Smith America Invents Act ("AIA") that make it more feasible to prevent the issuance of a
As a result of recent changes to U.S. patent law by the Leahy-Smith America Invents Act ("AIA"), preventing the issuance of a competitor’s patent (or at least narrowing its scope) is more feasible. Not only do third parties now have more time to submit prior art and other relevant information, they can also assist the
On June 19, 2012, the Court of Justice of the European Union issued a decision in a trademark case where the applicant sought registration for IP TRANSLATOR, using a class heading of “educational services” to identify the services. Prior to this decision, an applicant for trademark protection in the European Union could use a class
One of our clients recently received a notice of allowance from the USPTO after only six months of filing and should receive an issued U.S. utility patent within eight months of filing. For those of you familiar with the U.S. patent system and accustomed to waits of 3, 4, 5 or more years to obtain
Co-Authored By: Robert J. Morgan For those businesses that might be tempted to enjoin another’s use of a common name, be advised: you might be inviting unexpected grief. In a “where the rubber hits the road decision,” the Cuyahoga County (Ohio) Court of Appeals ruled recently in the case of Bedford Auto Dealers Ass’n v.
Think choice of grammar or poor word choice is not relevant in patent claims? Think again. Indifferent word selection nearly sunk this infringement action as well as the patent. Judge Christopher A. Boyko of the Northern District of Ohio recently tackled the difficult issue of patent indefiniteness following IPXL Holdings, L.L.C. v. Amazon. com, Inc., 430
On our sister blog – Employer Law Report – Brian Hall discusses a much anticipated decision, in which the Ninth Circuit Court of Appeals held in an en banc decision in United States v. Nosal that the Computer Fraud and Abuse Act ("CFAA") was not intended to cover employee misappropriation of trade secrets, violations of corporate computer use policies
Think recovery of attorneys’ fees in copyright infringement cases is just for plaintiffs? Think again. Plaintiffs’ counsel should take heed of the chilling tale in Fharmacy Records v. Salaam Nassar, Nos. 10-1354, 10-2073, 2012 WL 573942 (6th Cir. Feb. 23, 2012), discussed below. But first, some background. In Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), the
The Sixth Circuit recently issued a rare decision addressing ownership of renewal copyrights - in some of country singer Roger Miller’s songs: Roger Miller Music, Inc. v. Sony/ATV Publishing, LLC, Case No. 10-5363, 2012 WL 555485 (6th Cir. Feb. 22, 2012). It is worth a read if you have occasion to wrestle with renewal copyright issues. Renewal copyrights
The US Patent and Trademark Office (USPTO) has posted a warning on its website regarding solicitations that appear to be official notices (Click here for a sample). The notices come from private companies that are not associated with the USPTO. The notice is typically made to resemble an official notice from the USPTO by including
Remember to register transliterations as well as English versions of your trademarks in China and elsewhere. NBA legend Michael Jordan initiated a suit in China alleging the unauthorized use of his name by a Chinese sportswear and footwear manufacturer. Michael Jordan became a worldwide basketball star in the 1980s and 1990s. Qiaodan Sports Company Ltd.,
The Leahy-Smith America Invents Act ("AIA") was enacted on September 16, 2011. The changes implemented by this Act are wide-ranging and significant, and different provisions have different effective dates, with many taking effect September 26, 2011, September 16, 2012, or March 16, 2013. We will be providing additional information in the coming weeks and months.
Ensnarement is a powerful defense in any patent case where the doctrine of equivalents is at issue. It’s time for defendants to "discover" this under-utilized defense. Despite litigating numerous doctrine of equivalents cases, I’ve only litigated one case where an ensnarement defense was vigorously asserted. Ensnarement, seminally set forth in Wilson Sporting Goods, prevents
A decision issued by the Federal Circuit April 29, 2011 offers a lesson for patent prosecutors to talk to each named inventor about what they consider to be the best way of practicing their invention. Though anti-intuitive, it is possible to have multiple best modes. In Wellman, Inc. v. Eastman Chemical Co. (Fed. Cir. 2011), the
According to a message to USPTO Employees from Director David Kappos, the Track One expedited patent examination program (discussed in this earlier post), scheduled to go into effect on May 4, 2011, is postponed until further notice. As reported in Hal Wegner’s newsletter, the cancellation is due to budgetary cuts and whether and when prioritized