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Category Archives: Intellectual Property

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Ready. Set. Go. FTC patent troll study cleared for takeoff

Posted in Intellectual Property, Patents

Last week, the White House’s Office of Management and Budget approved the FTC’s request to study how patent assertion entities (PAEs or, less charitably, patent trolls) operate and to what extent they affect competition and innovation. The study was originally proposed in September 2013 and modified this past May in response to public comment.

As we described previously in a two-part series of articles (read part 1 and part 2), the study will be conducted in two segments and is designed to answer the following questions:

  • How do PAEs organize their corporate legal structure, including parents, subsidiaries, and affiliates?
  • What types of patents do PAEs hold and how do they organize their holdings?
  • How do PAEs acquire patents; who are the prior patent owners; and how do they compensate prior patent owners?
  • How do PAEs engage in assertion activity (i.e., how do they behave with respect to demands, litigation, and licensing)?
  • What does assertion activity cost PAEs?
  • What do PAEs earn through assertion activity?
  • How does PAE patent assertion behavior compare to that of other entities that assert patents?

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A new Ohio weapon against patent trolls?

Posted in Intellectual Property, Patents

Ohio may become the next state — after Virginia, Georgia, and thirteen other states — to take on the fight against patent trolls. A bill pending in Ohio’s General Assembly, H.B. 573, would provide additional tools to thwart abusive tactics by patent trolls. But how useful those tools may prove in the battle against the problems they are intended to remedy is yet to be seen.

“Patent troll” is a pejorative term without a well-defined meaning. It is widely used to describe an entity that does not make or sell any products or services, but acquires patents from others and then seeks to exact licensing fees through abusive tactics, including meritless assertions of patent infringement. Because defending against patent infringement claims can be an expensive endeavor, those targeted by meritless lawsuits often opt to pay patent trolls’ relatively low demands rather than aggressively defend against the claims in court. It is a decision that can leave business leaders steaming because, in their view, their companies are essentially being subjected to a shake-down by the threat of a meritless lawsuit.

In addition to frustrating business leaders, abusive practices in enforcing patents can stymie the economy. When companies are forced to settle meritless claims of infringement, they have less to spend on payroll, research and development, and other expenses that add value to the company and make it more likely to contribute to a thriving economy. Thus, patent trolls (as defined above) harm their targets, but they also negatively impact society more …


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ICANN continues to rapidly expand the Internet this summer — newest statistics released

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

As of July 4, 2014 ICANN announced that out of the 1,930 applicants received in 2012, 1,146 have been invited to contracting. Contracting is the process through which ICANN will contact eligible applicants and engage with them through execution of the registry agreement. Contracting is part of the transition to delegation phase of the New gTLD Program. To date, 464 registry agreements have been signed and those new gTLDs have entered the delegation phase of the program.

Next six gTLDs jump into the Internet pool

More than 300 new gTLDs have now been delegated to the root zone. A gTLD is delegated to the root zone and becomes a part of the Internet once it has completed the new gTLD program. The newest group of gTLDs to be delegated is:

  • .deals
  • .melbourne
  • .city
  • .schmidt
  • .cuisinella
  • .cancerresearch


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The Internet revolution — new gTLD update

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

Since our last blog post, the total number of domain name registrations among all new gTLDs has reached 1,414,766. There has been little movement this week on the leader board. The leaders are:

Number

New domain

Total registrations

1

.xyz

250,731

2

.berlin

136,703

3

.club

78,767

4

.guru

64,123

5

.photography

39,868

6

.email

34,799

7

.link

33,781

8

.在线 (online)

33,726

9

.today

29,669

10

.tips

25,661

ICANN has delegated four new gTLDs to the root zone:

  • .active
  • .suzuki
  • .place
  • .direct

Protecting the home front

It is important to remember that each newly delegated string that is set to launch is potentially one new threat to a trademark owner’s brand unless it has proactively protected its registered trademarks.…


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Do you know what your employees are posting while they’re at work?

Posted in Electronic Discovery, Intellectual Property

Our colleagues at Employer Law Report posted about an interesting case in which FedEx was sued because one of its employees used the company’s internet connection to post allegedly defamatory comments. The Court of Appeals of Indiana affirmed the trial court’s decision dismissing the plaintiffs’ claims based on Section 230 of the Communications Decency Act.

In short, the court found that FedEx and another employer (500 Festival) that was sued were providers of an “interactive computer” service, that the claims sought to treat the defendants as a “publisher” or “speaker” of the comments, and the defendants did not develop or create the comments. The case also raised an e-discovery issue that highlights the importance of having updated legal hold procedures in place in addition to appropriate social media and computer usage policies. The plaintiffs argued that FedEx spoliated evidence because it failed to preserve the logs for its proxy server which filtered Internet traffic for thousands of users and did not preserve electronic records until a year after being added as a defendant.

The court found that there was no spoliation because FedEx had properly responded to non-party discovery served on it before being added as a defendant (including disclosing its document retention policy for the logs) and the plaintiffs did not complain about FedEx’s responses, including its overbreadth objections. The plaintiffs also argued that 500 Festival spoliated evidence because the identify of its employee was known and 500 Festival failed to preserve the information on the employee’s work computer. …


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It’s game time — 140 new gTLDs are now publicly available

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

To date more than 1.3 million new second-level domain registrations have been registered within new gTLDs that have launched. The top 10 on the leader board are:

Number

New domain

Total registrations

1

.xyz

214,789

2

.berlin

136,371

3

.club

76,035

4

.guru

63,234

5

.photography

39,066

6

.email

34,172

7

.在线 (online)

33,605

8

.link

33,456

9

.today

28,887

10

.tips

25,120


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The Redskins trademark decision — great media interest, overhyped reaction

Posted in Intellectual Property, Trademarks

The June 18, 2014, decision of the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) cancelling six federal trademark registrations for trademarks used by the Washington Redskins professional football team has received substantial media coverage and generated great interest among the public.

The impact of the decision has been widely misstated in early news reports. Harry Reid, the Senate Majority Leader, stated on the Senate floor: “The Redskins no longer have trademarks. They are gone.” According to the Majority Speaker’s statement, anyone who wants to sell T-shirts with the name Redskins can now do so.” Highly regarded publications have advised their readers: “The ruling, if it stands up to an appeal to the U.S. Court of Appeals for the Federal Circuit, would mean that the NFL no longer has the exclusive right to sell merchandise and apparel branded with those specific uses of the nickname.”

The truth is far different. Though undoubtedly a matter of significance in the trademark area, the legal impact of the TTAB’s decision is likely to be far less influential than these news reports suggest. Most importantly, the decision, even if ultimately upheld, does not mean that the team has lost all rights in the marks or that the marks are not enforceable under state or federal law. To put the case into perspective, let’s look at what happened, what the decision means to the NFL, and what it means for the rest of us.…


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JUICEGATE — Pom Wonderful v. Coca-Cola; round 1 goes to Pom

Posted in Intellectual Property, Unfair competition

The Supreme Court issued a unanimous opinion in the highly anticipated dispute between Pom Wonderful and Coca-Cola.

The Petitioner, Pom Wonderful, LLC (“POM”), is a grower of pomegranates, distributor of pomegranate juices, and markets pomegranate products, including a pomegranate-blueberry juice blend. Pom competes in the pomegranate juice market with The Coca-Cola Company (“Coca-Cola”) Minute Maid® products. Id. Coca-Cola created a juice blend containing 0.3% pomegranate juice, 0.2% blueberry juice, 0.1% raspberry juice and the remaining 99.4% a combination of apple and grape juices. Id. at 6. The labeling displays prominently “pomegranate blueberry” in large capital lettering accompanied in much smaller type by “flavored blend of 5 juices” and in much smaller type “from concentrate with added ingredients” and “and other natural flavors.” Id. The wording is supported by imagery featuring a halved pomegranate accompanied by blueberries, apples, grapes and raspberries. Id.

Pom sued Coca-Cola under the Lanham Act for unfair competition arising from false and misleading product descriptions. Pom alleged loss of sales due to the name, label, marketing and advertising of Coca-Cola’s pomegranate-blueberry juice blends because they mislead consumers into believing the product predominantly contains those juices when in fact they were largely composed of less expensive juices, such as apple or grape. The District Court granted partial summary judgment for Coca-Cola, on the basis that the Federal Food, Drug and Cosmetic Act (FDCA) precluded the Lanham Act challenge and the Ninth Circuit affirmed in relevant part.…


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Quiet week for gTLDs but don’t be fooled — the new dot era is still heating up

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

New gTLD total registrations surpassed 1 million this week with 1,068,354 domain name registrations. In the wake of the .xyz promotional domain name registration scandal, .xyz overcomes .club and .guru on the leaderboard, with 113,242 registrations. The top 10 new gTLDs now are:

Number

New domain

Total registrations

1

.xyz

113,242

2

.club

69,285

3

.guru

61,202

4

.berlin

48,183

5

.photography

37,876

6

.在线 (online)

32,730

7

.email

32,629

8

.link

32,515

9

.today

26,923

10

.tips

23,583

NetSol comprises 96,158 of the total number of new registrations within the .xyz registration, maintaining 84.91% compared with GoDaddy.com’s 5.93%. These statistics still beg the question: Are these numbers inflated because of the complimentary domain name give away?…


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Porter Wright announces 2014 Technology Seminar Series

Posted in Data Breach Notification, Domain Names, gTLDs, HIPAA Compliance, HITECH Act Compliance, Information Technology, Intellectual Property, Porter Wright News, Privacy

Porter Wright continues its tradition of providing cutting-edge information about how technology affects your business with the 2014 Technology Seminar Series, beginning June 18. This year’s sessions are:

Social media in litigation: a shield and a sword

June 18

The worlds of social media and litigation have collided. Social media evidence is used in employment discrimination lawsuits, in divorce and custody cases, in criminal cases – and intellectual property cases are won and lost based on the information disclosed on social media sites. Like it or not, social media is an aspect of litigation that is here to stay. Sara Jodka, Colleen Marshall and Jay Yurkiw will walk you through how social media affects the way companies prepare for and engage in litigation, including the good, the bad and the ugly. This session will provide guidance about how you can make sure that your company’s social media use will not get the company into hot water. Presenters also will share helpful insights regarding what to do about social media when litigation is filed and identify the biggest social media in litigation hazards.…


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Scandal on the gTLD scene — .xyz registrations may be inflated

Posted in gTLDs, Intellectual Property, Trademarks

Top 10 gTLDs

The total number of generic top level domain registrations is nearing 1 million as new gTLDs launch daily. The new gTLD leaders, .club and .guru, are still holding tight to their positions. The top 10 on the leader board are:

Number

New domain

Total registrations

1

.club

64,579

2

.guru

60,216

3

.berlin

47,921

4

.photography

37,173

5

.xyz

36,335

6

.在线 (online)

32,083

7

.link

32,041

8

.email

31,687

9

.today

26,097

10

.tips

23,583

The question is, does everyone belong on the leader board?

The gTLD scene is not without scandal. The .xyz gTLD has more than 27,000 new registrations that list the name server as belonging to Network Solutions (NetSol) and its parent Web.com. Before the launch of .xyz this week, NetSol had only 16,790 domain name registrations among all new gTLDs to date. After .xyz launched, NetSol’s registration number sky rocketed to 44,476 .xyz registrations accounting for 62.25% of all NetSol registrations. What caused this giant spike in registrations?…


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Summer is heating up, and everyone is heading out to the .club — are you in the .club?

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

Everyone is talking about the new gTLD .club, which surpassed .guru this week as the most popular new gTLD in the world. It now has the most domain name registrations of all new gTLDs with more than 60,000 registrations. Marketing of the new gTLD has been impeccable; .club hosted a launch party in New York City last week featuring 50 Cent — maximizing the hype and providing a clear example of how important it is for trademark owners to be proactive in monitoring new gTLDs.

It’s too early to know why some gTLDs are more popular than others, but success may be attributed to the consumer base and market sectors to which they appeal. New gTLDs have several categories: generic industry terms, geographical terms, niche terms and brand terms. The generic mainstream terms such as .blog appeal to consumers because they hold a broad meaning extending across varying jurisdictions. Niche gTLDs on the other hand, appeal to a small segment of the market, such as .luxury, which has nearly 900 registrations. The .club gTLD may be getting so much play because its operating in both markets — mainstream and niche gTLDs, increasing its appeal.…


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New gTLDs revive the Internet’s Wild West tendencies…

Posted in gTLDs, Intellectual Property, Trademarks

No one is safe

In light of Memorial Day weekend, the new gTLD .democrat entered general availability earlier this week. Registrants have been acquiring second-level .democrat domain names since the gTLD’s landrush period began April 17. Rightside, the registry offering the gTLD, does not have any protection mechanisms designed to protect the names of politicians at this time.

One of the most interesting second-level domains acquired during landrush was clinton.democrat, which wasn’t acquired by Bill Clinton or Hillary Clinton. The Whois record for the domain lists Jared Mollenkamp of “Politically Correct Personal Computers” in Topeka, Kan., as the registrant. The Clintons are arguably one of the most famous families in recent political history, and the Clinton name carries extreme notoriety, especially considering Hillary’s potential candidacy in the 2016 Presidential election. The “clinton” string has been registered in 22 new gTLDs so far, including clinton.center, clinton.watch, and clinton.sexy. Currently, the clinton.guru domain name is being auctioned for $50,000, according to domain registry site godaddy.com. Domain names containing the names of other famous Democrats are still available, including kennedy.democrat, currently for sale at $1,499.…


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Skeptical of the new gTLD insurgence? Finding the pièce de résistance — the resistance

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

Will the launch of new gTLDs really transform the Internet as ICANN has envisioned? Without a doubt, the increase of gTLDs at the root level will create competition and diversity, and foster innovation — simply because the option is there. Innovation takes time and often does not happen until the tools to foster it are in place. With new gTLDs, however, also comes resistance, as there is with any new concept that has the power to change an industry and the way we do business.

One of the main reasons for resistance is that individuals and entities have an invested interest in “.com” and they want to hold on to this established value. Strategies, research, and business models have been created based on the existing world of .com. So the mere threat of divesting this investment often is seen as a direct attack on established practices and a model that works. Though the relatively brief history of top level domains might suggest that .com is going to remain No. 1, the likelihood of .com maintaining its wide lead in number of associated domains is slim given the significant investment in the new gTLD program. Domainers who remain stagnant, refusing to take advantage of the gTLD program, will miss out on an opportunity.…


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Keeping up with the dot-anythings

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

For the past several weeks, we’ve been working hard to keep our readers apprised of developments related to The Internet Corporation for Assigned Names and Numbers’ new generic top-level domain (gTLD) program. This program, which is essentially redefining the face of the Internet, is likely to impact any business — or, indeed, any entity — with a web presence. If you haven’t been able to keep up with the hundreds of gTLDs already delegated this year, download our hot-off-the-press e-book: Protecting Your Brand in a New gTLD World.

You also may want to subscribe to Technology Law Source (use the “Subscribe by email” prompt in the left column of the site) to receive weekly updates about the evolution of the gTLD program and the dot-anythings launching each month.

 …


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A donut for everyone, just in time for swimsuit season

Posted in gTLDs, Intellectual Property, Trademarks

The new gTLD giant, Donuts, Inc., is the world’s largest registry for new generic top level domains, applying for more than 300 new gTLDs during ICANN’s application phase. (Read the full list of Donuts, Inc.’s applications.) According to the company’s schedule, more than 100 new gTLDs will have launched by the end of May. Registrations in all new gTLDs total 600,000 so far, and Donuts makes up nearly 80% of that total with approximately 500,000 registrations. Here’s a full list of Donuts gTLDs set to launch this month:

gTLD

Sunrise opens

Sunrise closes

Early access

.capital

05/06/14

07/05/14

07/09/14

.engineering

05/06/14

07/05/14

07/09/14

.exchange

05/06/14

07/05/14

07/09/14

.gripe

05/06/14

07/05/14

07/09/14

.associates

05/13/14

07/12/14

07/16/14

.lease

05/13/14

07/12/14

07/16/14

.media

05/13/14

07/12/14

07/16/14

.pictures

05/13/14

07/12/14

07/16/14

.reisen (German for “travel”)

05/20/14

07/19/14

07/23/14

.toys

05/20/14

07/19/14

07/23/14

.university

05/20/14

07/19/14

07/23/14

.town

05/20/14

07/19/14

07/23/14

.wtf

05/27/14

07/26/14

07/30/14

.fail

05/27/14

07/26/14

07/30/14

.financial

05/27/14

07/26/14

07/30/14

.limited

05/27/14

07/26/14

07/30/14


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Exceptional vs. stand out … patent trolls lose adjective war in the Supreme Court

Posted in Intellectual Property, Patents

The Supreme Court issued two decisions Tuesday that will no doubt have interesting consequences for patent trolls and businesses that have been the target of patent trolls.

Non-practicing entities (NPEs) are companies that do not sell a product or service, but instead acquire patents for the purpose of monetization by way of licensing and/or suing for patent infringement. “Patent troll” is a derogatory term for NPEs, which assert patents of questionable validity or scope against businesses, typically requesting a licensing fee that is high, but less than the cost of defending a patent infringement lawsuit, effectively backing the businesses into a corner and requiring them to pay licensing fees to avoid the even higher cost of infringement litigation.

The Patent Act provides that a “court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. §285. Tuesday’s decisions should make it easier for a prevailing business that is unsuccessfully sued for patent infringement by a patent troll to recover the cost of litigation from the accusing patent troll, no doubt making a patent troll think twice about bringing litigation when it does not have a good likelihood of winning.…


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gTLD weekly update: April 25, 2014

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

The sun sets on several new gTLDs

The Sunrise period has ended, or will by the end of April, for the new gTLDs listed below.

gTLD

Sunrise Opens

Sunrise Closes

.watch

02/25/14

04/26/14

.cool

02/25014

04/26/14

.social

02/25/14

04/28/14

.futbol

02/26/14

04/28/14

.reviews

02/26/14

04/28/14

.wien

02/11/14

04/30/14

After Sunrise, gTLDs enter a Landrush period — when individuals seeking second-level domains within a new gTLD can pay for pre-registration — before they become available to the general public. (Read more about Landrush in a previous gTLD post.) If any of these gTLDs are of interest to your brands or business, now is the time to take action.

Almost two dozen gTLDs are new to the delegation pool

Since our previous article, ICANN has delegated 23 additional gTLDs.…


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Lack of reasonable efforts to maintain secrecy of trade secrets can undermine otherwise compelling claim of misappropriation

Posted in Intellectual Property, Privacy

If you believe that a former employee may have taken your trade secrets on his way out the door and you are considering court action to rectify the situation, it is important to have compelling evidence of the misappropriation. But as we discuss in this post, even with compelling evidence of misappropriation, the plaintiff’s failure to have taken “reasonable efforts” to maintain the secrecy of trade secret information may defeat the misappropriation claim.

Let’s review the following set of facts as an example:

An employee has left your company to work for a direct competitor. At that direct competitor, he does the same job he did while working for you. At his new company, he is attempting to contact some of your customers. When he left your company, he did not return his company-issued laptop or iPad. A forensic examination of those devices reveals that after he received a letter from you demanding the return of them, he opened 20 files that you contend contain highly confidential and proprietary information. That same analysis demonstrates that he connected more than 20 flash drives to the laptop after his employment was terminated. Indeed, on the day he returned the computer to you he connected six flash drives to it. He also emailed to his new colleagues a high-level competitive analysis of your company.…


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gTLD weekly update: .nyc is ready for salida del sol, are you?

Posted in gTLDs, Intellectual Property, Trademarks

The sun sets on several new gTLDs

The Sunrise period has ended, or will by Monday, for the new gTLDs listed below.

gTLD

Sunrise Opens

Sunrise Closes

.red

03/11/14

04/11/14

.kim

03/11/14

04/11/14

.shiksha

03/11/14

04/11/14

.pink

03/11/14

04/11/14

.farm

02/11/14

04/12/14

.viajes

02/11/14

04/14/14

.codes

02/11/14

04/14/14

.blue

03/14/14

04/13/14

.wed

03/17/14

04/18/14

.zone

02/18/14

04/19/14

.boutique

02/18/14

04/19/14

.bargains

02/18/14

04/19/14

.agency

02/18/14

04/19/14

.cheap

02/18/14

04/19/14

.immobilien

02/19/14

04/21/14

.ninja

02/19/14

04/21/14

After Sunrise, gTLDs enter a Landrush period — when individuals seeking second-level domains within a new gTLD can pay for pre-registration — before they become available to the general public. (Read more about Landrush in last week’s gTLD post.) If any of these gTLDs are of interest to your brands or business, now is the time to take action.…


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Another sunrise, another new beginning. New gTLDs delegated and set to launch; are you ready?

Posted in gTLDs, Information Technology, Intellectual Property, Trademarks

New to the delegation pool

ICANN delegates new gTLDs daily, which keeps trademark owners on their toes. Since our last blog article, new gTLD delegations include:

  • .gop
  • .ryukya
  • .yokohama
  • .rest
  • .saarland
  • .consulting
  • .vodka
  • .haus
  • .cooking
  • .moe
  • .rodeo
  • .country
  • .商城(xn--czru2d) – Chinese for “mall”
  • .horse
  • .fishing
  • .vegas
  • .miami
  • .archi
  • .black
  • .ren
  • .meet
  • .sohu

The most recent additions will join the growing list of gTLDs that can begin their Sunrise periods. It is important to remember that though many gTLDs are allowing Sunrise periods to last longer than 30 days, they are required to have only a 30-day period.

gTLDs beginning Sunrise

Sunrise periods can quickly come and go — notice to the unwary. Following is a list of gTLDs set to launch and their corresponding Sunrise periods.…


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De novo review redux — Supreme Court to consider standard of appellate review of patent claim construction

Posted in Intellectual Property, Patents

In a recent blog post, we reported that a divided U.S. Court of Appeals for the Federal Circuit (CAFC) had reaffirmed that appellate review of patent claim interpretations is de novo, without any deference to the trial court even for factual matters. As we stated in that post, the 6-4 en banc decision by the CAFC in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp.,1 appeared to be an open invitation for the U.S. Supreme Court to take up the issue.

The Supreme Court has now accepted that invitation, albeit with a difference dance partner. On March 31, 2014, the Supreme Court granted certiorari in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., on the following issue:

Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.…


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