To be patentable, an invention must satisfy two key requirements, as determined by the U.S. Patent and Trademark Office (PTO). First, the invention must be novel. This means that the same invention cannot have been disclosed in a single prior art reference. The prior art is all of the publicly available information that existed before… Continue Reading
Category Archives: IP
Subscribe to IP RSS FeedSupreme Court: Federal Government Cannot Challenge Patents in PTAB
Posted in Intellectual Property Litigation, IP, Patent LawThe validity of a patent can be challenged in four different types of proceedings: ex parte reexamination, inter partes review, post grant review, and covered business method review. An ex parte reexamination is initiated by any person or by the PTO’s director to request that the PTO internally reexamine the claims of the patent based… Continue Reading
Potential Copyright Owners Beware: Make Sure Your Copyright Registrations Are Accurate!
Posted in Copyright Law, IPNormally, a copyright registration certificate constitutes “prima facie evidence of the validity of a copyright and of the facts stated in the certificate.” 17 U.S.C. §410(c). But what happens if that certificate contains knowingly inaccurate information? The purported copyright owner could face not only invalidation of the copyright, but the inability to pursue copyright infringement… Continue Reading
Although the Battle of King’s Landing is Over and the Game of Thrones has Ended, the War to Protect HBO’s Intellectual Property Rages on
Posted in IP, Trademark LawIf your heart is beating and your lungs are taking in oxygen, you know that Game of Thrones recently reached its epic conclusion. It’s sad, but true. After eight glorious seasons, the most watched television series in history has ended. Even as I put the words to paper, or rather, this Word document, it doesn’t… Continue Reading
If You Can’t Describe It, You Can’t Patent It!
Posted in IP, Patent LawOne of the requirements for obtaining a patent is the written description requirement – the specification must include a written description of the invention. 35 U.S.C §112(a). This requirement means that the specification must fully disclose what the invention is. The purpose of the written description requirement is to demonstrate to persons skilled in the… Continue Reading
U.S. Supreme Court Allows App Store Anti-Trust Class Action to Proceed Against Apple
Posted in IP, Web/TechIn APPLE INC. v. PEPPER ET AL., case number 17-204, the United States Supreme Court considered a case alleging Apple has monopolized the retail market for the sale of apps and has unlawfully used its monopolistic power to charge consumers higher-than competitive prices. As an early defense in the case, Apple asserted that the consumer… Continue Reading
Allegiant Airlines Tips its Hand Regarding Las Vegas Stadium Rights
Posted in IP, Trademark LawIf you’re a fan of branding and sports, you may have wondered who will affix their name to the Raiders’ new stadium in Las Vegas. The construction is underway, but the team has yet to announce whose name the stadium will bear. However, we may have discovered a clue based upon a recent filing with… Continue Reading
Hidden Trademark Landmines in Comparative and Compatibility Advertisements
Posted in Intellectual Property Litigation, IPNespresso has filed a lawsuit against Jones Brothers Coffee Distribution Company alleging trademark and trade dress infringement. In support of its trademark infringement claim, Nespresso alleges that Jones Brothers’ use of the words “Nespresso Compatible” in connection with its coffee capsules will cause consumers to believe that the Jones Brothers product is endorsed and/or sponsored… Continue Reading
Some at the PTAB Think Textbooks Are Not Printed Publications
Posted in Intellectual Property Litigation, IPShockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year! Further, would you have imagined an argument that textbooks aren’t printed publications? Given the amount we paid for textbooks in college and the number stored in my garage that seems… Continue Reading
Do You Know Where The Photos For Your Website Come From?
Posted in Intellectual Property Litigation, IPMany businesses rely on their websites to promote their company and drum up business. Having a “professional” looking web page is considered a must and companies spend a lot of money in creating and maintaining their web presence. However, a recent case out of the Ninth Circuit Court of Appeals demonstrates that care must be… Continue Reading
Are Rules for Playing a Game Patentable?
Posted in Intellectual Property Litigation, IP, Patent LawA 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 LawOn 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 LawThe 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, IPOver 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, IPThis 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 SecretsCompanies 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, IPFor 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 LawThe 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 LawNon-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, IPThe 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
What’s New this Christmas?
Posted in IP, IP Law Blog Lawyers In The News, Patent LawEvery year about this time, I search the PTO database for any new patents on inventions related to Christmas. This year turned up several. Interestingly, most of the ones I looked at issued at October and November of this year. (Maybe the PTO wanted to give the owners an early Christmas present!) There are lots… 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 LawIn 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 LawThe 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 LawThe 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
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