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Are Rules for Playing a Game Patentable?

Posted in Intellectual Property Litigation, IP, Patent Law

A lot of things are patentable. Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable. But some things are not: the exceptions are laws of nature, natural phenomena, and abstract ideas. The Federal Circuit Court of Appeals has many times had to decide what these… Continue Reading

Attorney Fees for Successful Defense of IPR May Not Be Recovered as Damages under 35 U.S.C. § 284

Posted in Intellectual Property Litigation, IP, Patent Law

On March 25, 2018, the District Court in Nichia Corporation v. VIZIO, Inc., Case No. 8-16-cv-00545 (CACD 2019-03-25, Order), granted defendant’s motion to preclude plaintiff’s damages expert from testifying that plaintiff should recover, as compensatory damages, its costs incurred in a related Inter Partes Review (IPR) proceedings.  The Court found such testimony would constitute an… Continue Reading

SCOTUS to Decide if Trademark Licensees Lose Their Rights When the Licensor Becomes Insolvent

Posted in IP, Trademark Law

The Supreme Court has granted review in the matter known as Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, where it will decide whether a licensee loses its right to use a licensed trademark if the licensor files bankruptcy and the bankruptcy trustee chooses to reject the licensor’s license agreement. This decision could significantly… Continue Reading

Dr. Seuss and Fair Use, What 20+ Years Will Do!

Posted in Copyright Law, IP

Over twenty years ago, the Ninth Circuit decided the case of Dr. Seuss Enterprises., LP v. Penguin Books USA, Inc.  That case involved a copyright infringement lawsuit brought by Dr. Seuss over a book entitled The Cat NOT in the Hat! A Parody by Dr. Juice.  This book was about the O.J. Simpson trial presented in… Continue Reading

Supreme Court: File Your Copyright Application!

Posted in Copyright Law, Intellectual Property Litigation, IP

This week, the Supreme Court resolved a split in the circuits regarding an issue in copyright law that affects copyright owners in California.  Until now, the law in the Ninth Circuit was that a copyright owner could file suit for infringement as soon as they filed a copyright application in the Copyright Office.  However, in… Continue Reading

Employee Non-Solicitation Provisions under Attack

Posted in Intellectual Property Litigation, IP, Trade Secrets

Companies have a number of tools available to them to help protect their intellectual property, including trade secret and other proprietary information that give them a competitive advantage. Many employers utilize detailed provisions in their employee handbooks and employment agreements to protect this information. One key provision has been the use of coworker non-solicitation provisions… Continue Reading

It’s Not Water under the Bridge – “Fiji Water Girl” Sues Water Company Over Cardboard Cutout

Posted in Entertainment Law, IP

For those of you that watched the red carpet happenings at last year’s Golden Globe Awards, you may have noticed the “Fiji Water Girl”, a model standing ready to keep Hollywood glitterati hydrated with bottles of Fiji water, photobombing numerous shots of celebrities.  Her presence on the red carpet created a social media firestorm and… Continue Reading

Patent License Royalty Rates are Strong Evidence of Damages

Posted in Intellectual Property Litigation, IP, Patent Law

The Federal Circuit Court of Appeals has affirmed a jury verdict of $140 million in a patent infringement case.  The damages were based on a reasonable royalty.  The case is Sprint Communications Co., L.P. v. Time Warner Cable, Inc., 2018 U.S. App. LEXIS 33594 (Fed. Cir.  2018). Sprint sued Time Warner in the District of… Continue Reading

Federal Circuit Narrows Reach of Obviousness-Type Double Patenting

Posted in IP, Patent Law

Non-statutory, or obviousness-type, double patenting (“ODP”) is a judicially created doctrine that prohibits an inventor from effectively extending the monopoly on a patented invention by applying for a later patent with claims that are not “patentably distinct” from the claims in the earlier patent.  The core principle behind the doctrine is that “an inventor must… Continue Reading

Royalties, Preemption and Attorney’s Fees

Posted in Copyright Law, IP

The Ninth Circuit recently was called upon to decide awarding attorney’s fees in a case where artists were suing for unpaid royalties under the California Resale Royalties Act (“CRRA”).  In the case, Close v. Sotheby’s, Inc. (decided December 3, 2018), the Ninth Circuit ordered that the Plaintiff-artists be required to pay attorney’s fees to the… Continue Reading

Court Finds No Personal Jurisdiction Over Foreign Defendant Based On U.S. Subsidiary Under Stream of Commerce and Agency Theories

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

In University of Massachusetts Medical School et al v. L’Oreal SA et al, 1-17-cv-00868 (DED 2018-11-13, Order) (Sherry R. Fallon), the magistrate judge recommended granting a foreign parent company defendant’s motion to dismiss plaintiffs’ patent infringement action for lack of personal jurisdiction where its American subsidiary introduced the alleged accused products into the stream of… Continue Reading

Amarillo Natives Hold San Diego Padres’ Double A Affiliate Team Name Hostage

Posted in IP, IP Law Blog Lawyers In The News, Trademark Law

The San Diego Padres recently took control of the Amarillo minor league baseball organization. The organization will serve at the Padres’ Double A affiliate. In the spirit of new beginnings, the organization recently held a public naming contest to determine its new mascot. After the contest had concluded, the Sod Poodles were selected as the… Continue Reading

TTAB’s Refusal To Register Trademark Reveals Important Lesson For Trademark Attorneys

Posted in IP, IP Law Blog Lawyers In The News, Trademark Law

The Trademark Trial and Appeals Board’s recent ruling in In re Productos Verde Valle, S.A. de C.V. upholding a trademark examiner’s refusal to register the mark SONIA for “sauces; chili sauce; hot sauce” holds a lesson for those of us that regularly advise clients on the registrability (and usability) of trademarks.  Assuming Verde Valle conducted… Continue Reading

IP Challenges Again Take the Stage at the U.S. Supreme Court

Posted in IP, IP Law Blog Lawyers In The News

Intellectual property disputes will again take their place on stage at the U.S. Supreme Court this term when the court addresses at least two IP questions.  1.  Can the government challenge patents under the America Invents Act (“AIA”)?  2. Do trademark licenses survive Chapter 11 bankruptcy?  These questions are presented in two cases in which… Continue Reading

Trademark Registration and the Presumption of Secondary Meaning

Posted in IP, IP Law Blog Lawyers In The News, Trademark Law

The U.S. Court of Appeals for the Federal Circuit was recently tasked with reviewing determinations made by the International Trade Commission (“ITC”) relating to trade infringement claims brought by Converse, Inc. with regard to a number of imported shoes that it alleged infringed on one of its trademarks. Although Converse sneakers have had largely the… Continue Reading

Ordering Pizza is Not Patentable!

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

Some things are not patentable: laws of nature, natural phenomena, and abstract ideas.  The Supreme Court has long held that inventions falling within these categories are not patentable; they are patent-ineligible subject matter.  In 2014, the Supreme Court relied on this principle in deciding Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct…. Continue Reading

District Court Grants Motion For More Definitive Statement Because Patent Infringement Claim Involved Complicated Technology

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

In Lexington Luminance LLC v. Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com, 3-18-cv-01074, the District Court for the Northern District of Texas denied defendant’s motion to dismiss for failure to state a claim, but granted its motion for a more definite statement because of the complexity of the patents-in-suit. In the case, the Defendant… Continue Reading

SCOTUS Will Decide What the Copyright Act Means by “Registered.”

Posted in Copyright Law, IP, IP Law Blog Lawyers In The News

Any work that is entitled to copyright protection automatically receives protection when it is fixed in a tangible medium of expression. However, in order to benefit from the Copyright Act, the owner must “register” his or her work with the United States Copyright Office. Put another way, in order to protect against copyright infringement, the… Continue Reading

The Supreme Court: Cases to Watch and Missed Opportunities

Posted in IP, IP Law Blog Lawyers In The News

In recent years, the U.S. Supreme Court has considered a number of intellectual property and related cases, but many issues remain unresolved.  Therefore, it is important to look both at the cases currently before the U.S. Supreme Court as well as those the Court chooses to let stand without further review.  First, consider a few… Continue Reading

THE ESSENTIAL PURPOSE OF THE SHORT FORM COPYRIGHT ASSIGNMENT

Posted in Copyright Law, IP, IP Law Blog Lawyers In The News

Recently, a client asked why we included a short form option agreement and a short form assignment agreement as an exhibit to a long form literary option agreement.  I am sure that many a corporate transactional attorney has similarly wondered why a short form copyright assignment agreement is included within the package of numerous M&A… Continue Reading

Michael Jackson, Commercial Speech and Anti-SLAPP Motions

Posted in IP, IP Law Blog Lawyers In The News

A California appellate court recently dealt a blow to fans of Michael Jackson who brought a class action alleging unfair competition and violations of the Consumers Legal Remedies Act (“CLRA”) in connection with the sale of an album titled simply “Michael” following the singer’s death.  The appellate court found that statements on the album cover… Continue Reading

Court Finds Prior Finding of No Literal Infringement Bars Later Claim for Infringement Under the Doctrine of Equivalents

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

In Galderma Laboratories, LP et al v. Amneal Pharmaceuticals LLC et al, 1-16-cv-00207 (DED August 31, 2018, Order) (Stark, USDJ), Judge Stark of the District of Delaware recently found that a plaintiff was collaterally estopped from pursuing claims for patent infringement of two drug patents under a doctrine of equivalents theory based on a finding… Continue Reading