The IP Law Blog

Focusing on legal trends in data security, cloud computing, data privacy, and anything E

Make Sure You Follow the Patent Local Rules!

By Audrey A Millemann on Posted in IP, Patent Law

An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules.

Patent local rules are rules that many federal district courts have for patent infringement cases. These rules supplement the regular local rules for that court and the Federal Rules of Civil Procedure, and allow the courts that have a lot of patent infringement cases to more efficiently manage those cases. Patent local rules are also helpful to the parties and their counsel, as they provide a standard structure and some certainty to the litigation process. Continue Reading

Irreparable Harm for Permanent Injunction Supported by Lost Profits Award

By Eric Caligiuri on Posted in IP, Patent Law

In f’real Foods, LLC et al v. Hamilton Beach Brands, Inc. et al, 1-16-cv-00041 (DDE 2020-07-16, Order) (Colm F. Connolly), plaintiffs freal Foods, LLC and Rich Products Corporation sued defendants Hamilton Beach Brands, Inc. and Hershey Creamery Company for infringement of four patents on four accused products that are high performance blenders manufactured by Hamilton Beach. After a four-day jury trial, the jury found that all four accused products infringed various claims of the asserted patents, and that none of the asserted patents are invalid. The Court then turned to the plaintiffs’ motion for a permanent injunction.

The Court first noted that a plaintiff seeking a permanent injunction must demonstrate the four eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,391 (2006) factors: “( 1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and ( 4) that the public interest would not be disserved by a permanent injunction.” To satisfy the irreparable injury factor, a patentee must establish ( 1) that absent an injunction it will suffer irreparable injury and (2) that a sufficiently strong causal nexus relates the injury to the infringement. The Court also noted that the Supreme Court has cautioned lower courts that “[a]n injunction is a drastic and extraordinary remedy, which should not be granted as a matter of course” and when “a less drastic remedy … [is] sufficient to redress [ a plaintiffs] injury, no recourse to the additional and extraordinary relief of an injunction [is] warranted.” Continue Reading

After Nearly 30 Years of Controversy, the Washington Redskins Will Retire the Redskins Team Name and Trademark

By Josh H. Escovedo on Posted in IP, Trademark Law

Watch: Author Josh Escovedo and trademark law professor Alexandra Roberts delve into the issues around the Redskins name change on The Briefing from the IP Law Blog.

On Monday, July 13, 2020, the ownership group of the Washington Redskins (the “Team”) announced that it will abandon the Redskins team name after nearly 30 years of controversy. The decision, despite what the Team says, is likely the product of societal pressure, which was reinforced by powerful corporations, such as Nike and Amazon, that refused to sell Redskins merchandise because of the Team’s disparaging moniker. Within days of the corporations refusing to sell their merchandise, the Team announced that it would undertake a “thorough review” of its name. Just over a week later, the Redskins announced that the name would be “retire[d].” But before you give the Team too much credit, let’s consider what it took to get here. Continue Reading

The “Wolf of Wall Street” Defamation Suit – The Risk of an “Inspired By” Character in Movies and TV

By Scott Hervey on Posted in Entertainment Law, IP

The motion picture Wolf of Wall Street was based on a book of the same title written by Jordan Belmont.  In the book, Andrew Greene, who was director, general counsel, and head of the corporate finance department at Stratton Oakmont between 1993 and 1996, was discussed extensively.  In the book, Greene is referred to by his nickname “Wigwam” (a reference to his toupee) and described as engaging in criminal conduct.  In the motion picture, Wolf of Wall Street a minor character named Nicky Koskoff, who wears a toupee and went by the nickname “Rugrat” is depicted as engaging in unsavory and illegal behavior.  This includes engaging in adulterous/sexual acts at work and participating in criminal money laundering schemes orchestrated by one of the founders of Stratton Oakmont, Jordan Belmont (played by Leonardo DiCaprio).  Greene sued Paramount Pictures and the film’s producers on the grounds that the Koskoff character presented a defaming portrayal of himself. Continue Reading

The PTAB Requires Settlement and Collateral Agreements to Terminate IPRs

By Jo Dale Carothers on Posted in IP, Patent Law

Following the America Invents Act, a petition for inter partes review (“IPR”) has become a common method for challenging the validity of a patent before the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office (“USPTO”).  Such challenges are often brought by petitioners in response to a patent owner suing them for patent infringement.  But what happens to the IPR if the parties settle the infringement lawsuit?

When parties settle the underlying dispute, they can request that the IPR be terminated.  Under 35 U.S.C. § 317(a),

An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.

However, under 35 U.S.C. § 317(b), any settlement agreement, including any collateral agreements that are referenced, must be filed with the USPTO before the termination of the IPR.  Specifically, the statute states:

Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause. Continue Reading

“Birds of a Feather” – The Ninth Circuit Confronts “Single Unit of Publication” Copyright Issue

By James Kachmar on Posted in Copyright Law, IP

Unicolors, Inc. creates and markets artistic design fabrics to various garment manufacturers.  Some of these designs are marketed to the public and placed in its showroom while other designs are considered “confined” works that Unicolor sells to certain customers. Unicolors withholds marketing them to the general public for a set period of time. In order to save money, Unicolors often times groups various designs into a “single work” when filing with the U.S. Copyright office for copyright registration.  The Ninth Circuit in Unicolors v. H&M Hennes & Mauritz (May 29, 2020), recently addressed whether this practice, grouping both public and “confined” works into a single registration application, creates a valid copyright that Unicolors could enforce. Continue Reading

PTO Fast Tracks COVID-19 Patent and Trademark Applications

By Audrey A Millemann on Posted in IP, Patent Law, Trademark Law

The United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain medical products and services used in connection with COVID-19.

On May 7, 2020, the Director of the PTO announced the program for patent applications.  The program applies to products and processes related to the COVID-19 pandemic, specifically, to those subject to FDA approval for COVID-19 use, including investigational new drug applications, investigational device exemptions, new drug applications, biologics license applications, pre-market approvals, and emergency use authorizations.

To participate in the program, the patent applicant must be a small or micro entity.  The fees typically charged by the PTO for prioritized examination will be waived for qualifying patent applications.  If the patent application qualifies, the PTO will examine the application and reach a final determination within 12 months, and, in some cases, within six months.  The patent application program is limited to the first 500 applications, although the program may be extended.

On June 15, 2020, the Director of the PTO announced a similar program for trademark applications.  The program applies to marks for a product or service that is subject to FDA approval for COVID-19 use or a medical or medical research service for the prevention or treatment of COVID-19.  An applicant must file a petition to qualify for the prioritized examination.  The PTO will waive the fees for these petitions.

According to the Director, the goal of the prioritized examination programs is to “help to bring important and possibly life-saving treatments to market more quickly.”

And we can all hope for that!

Navigating the Hazy Intersection of Federal and State Law on Cannibis and Advising Clients on Protecting Their Trademarks

By Josh H. Escovedo on Posted in IP, Trademark Law

What was once illegal is now a thriving industry. That’s right—I’m talking about cannabis. But my initial statement isn’t entirely accurate. Although Alaska, California, Colorado, Illinois, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, and Washington have legalized cannabis, the drug remains a Schedule I narcotic under the federal Controlled Substances Act. While buying, selling, and using cannabis is legal under state law in certain jurisdictions, such conduct is arguably a federal crime in every jurisdiction due to the Controlled Substances Act. It’s a lot to take in, and it gives rise to numerous issues and questions concerning our government’s federalist system. But you all know this blog focuses on intellectual property, so by now I’m sure you’re wondering: what’s the significance to intellectual property of the dichotomy between the way federal and certain state law treats cannabis? Well, to oversimplify the problem, it means that businesses in the cannabis industry are without federal intellectual-property rights, which are by far the most powerful and expansive intellectual-property rights in the country. Continue Reading

Southern District of New York Court Orders “All Remote” Bench Trial

By Eric Caligiuri on Posted in IP

In Ferring Pharmaceuticals Inc. et al v. Serenity Pharmaceuticals, LLC et al, 1-17-cv-09922 (SDNY 2020-05-27, Order), Chief Judge C.J. McMahon of the Southern District of New York ordered an upcoming bench trial set to begin on July 6, 2020 in a patent infringement case to be “all remote,” at least in the sense that at a minimum all the witnesses will testify remotely.

Judge McMahon stated that the decision to go “all remote” was “a no-brainer.”  The Judge reasoned that under the protocols the Southern District of New York was adopting, individuals who have traveled abroad in the preceding two weeks would not be permitted to enter the courthouse.  And, it was noted that in this case there would be at least five or six witnesses — about half of the fact witnesses, and all but one non-expert — who would be traveling in from Europe. Putting to one side the issue of whether they could get into the United States at all — which just introduces additional uncertainty in a situation where no more is needed — Judge McMahon noted that they would have to arrive in New York by June 22 just so they could quarantine for two weeks before they would be allowed into the courthouse.

Thus, Judge McMahon determined that “given all the constraints, the witnesses should testify from where they reside. I will have read their directs and the expert reports. I can watch their crosses. Every witness for both sides gets the same benefit and suffers from the same perceived handicaps. It is the fairest way to proceed.”

As for the attorneys, Judge McMahon stated that is was up to them whether they would prefer to cross examine remotely or from the courtroom.  However, Judge McMahon made clear that both sides needed to come to an agreement because the Court “will not have just one side’s lawyers in the courtroom.”  Judge McMahon did state that she also might consider having lead trial counsel come to court after all the witness testimony to have “a real bench trial closing argument,” but strongly discouraged bringing a lot of people to court for such a closing argument.

Judge McMahon then outlined some of the other procedures for trial, such as using a dedicated computer on which she can watch the testimony that will have no connection to the court’s secure intranet, shipping of sealed exhibit binders to witnesses, possibly having an attorney present with witnesses during their testimony, and not breaking exhibit seals or showing exhibits to witnesses prematurely.

In sum, this case is an example of a Court working as hard as it can to continue moving cases and trials forward in these difficult times as best as possible while still striving to ensure fairness in the process.

Inside Out: The Ninth Circuit Holds The Moodsters are No Batman

By James Kachmar on Posted in Copyright Law, IP

(This article was republished with permission by ABA Business Law Today on 6/2/2020, available here.)

Certain literary or graphic characters may, in some cases, enjoy copyright protection. Think James Bond – or Batman and even his Batmobile.  Recently, the Ninth Circuit was called upon to determine whether the Moodsters, “anthropomorphized characters representing human emotions,” are subject to the same copyright protection as Batman.  Sadly, the Ninth Circuit concluded they do not.

The Moodsters were created by an expert on children’s emotional intelligence and development, Denise Daniels. She created the Moodsters to “help children cope with strong emotions like loss and trauma.”  In 2005, Ms. Daniels and her team released an initial product called The Moodsters Bible.  The Moodsters Bible told the story of five characters who were “color-coded anthropomorphic emotions” that represented a different emotion: pink–love, yellow-happiness, blue-sadness, red-anger and green-fear. Two years later, Ms. Daniels and her team released a 30-minute television pilot featuring the Moodsters called, “The Amoodsment Mixup.”  In 2015, Ms. Daniels and her team had developed a line of toys and books featuring the Moodsters that were sold at Target and other retailers. Continue Reading