IP

Subscribe to IP via RSS

In Impact Engine, Inc. v. Google LLC, 3-19-cv-01301 (SDCA 2020-10-20, Order) (Cathy Ann Bencivengo), the District Court for the Southern District of California recently considered whether litigation funding documents could be withheld from production by plaintiff Impact Engine because the documents were work product protected.  In the case, defendant Google had propounded a request on Impact Engine for the production of “[all] Documents Regarding any contracts or agreements between Plaintiff and any Third Party concerning (1) This Litigation and/or (2) any Asserted Patent or Related Patent.”  Impact Engine indicated it would produce non-privileged responsive documents except for potential agreements related to litigation funding because Impact Engine asserted work product protection over the documents.
Continue Reading District Court Finds Documents Related to Litigation Funding Protected by Work Product Doctrine

An inter partes review (IPR) is a procedure to challenge a patent in the U.S. Patent and Trademark Office (PTO). The IPR procedure was established by the American Invents Act, and was intended to be an improvement on the existing inter partes reexamination procedure. An IPR is brought before the PTO’s Patent Trial and Appeal Board (PTAB), which handles the proceeding and decides the outcome.

Any person can file a petition requesting an IPR of an issued patent. The petition must show that at least one claim of the patent is unpatentable on the grounds of anticipation (35 U.S.C. §102) or obviousness (35 U.S.C. §103). The petitioner must prove unpatentability by a preponderance of the evidence. The PTO decides whether to grant the petition.
Continue Reading PTAB May Decide Patentability Under Section 101 in Inter Partes Reviews

Jack Daniel’s Properties, Inc. has petitioned the Supreme Court of the United States for certiorari following an unfavorable ruling from the Ninth Circuit in the matter of VIP Products LLC v. Jack Daniel’s Properties, Inc. In that case, VIP Products sued Jack Daniel’s after receiving a cease-and-desist letter concerning its Bad Spaniels Silly Squeaker dog toy. The toy is intentionally similar to the famous Jack Daniel’s Old No. 7 whiskey bottle, but is clearly intended to be a joke.

Instead of saying Jack Daniels, the bottle says Bad Spaniels and includes a cartoonish cocker spaniel. Below that, where the Jack Daniel’s bottle usually says “Old No. 7,” the toy says “The Old No. 2” above “on your Tennessee Carpet” where the real bottle says Tennessee Whiskey. The squeaky toy is clearly intended as joke for dog owners, and I don’t believe it would confuse consumers into believing the product is actually associated with Jack Daniel’s. Jack Daniel’s apparently felt differently.

The district court agreed with Jack Daniel’s. While ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s IP.
Continue Reading Dogs, Whiskey, and Intellectual Property: Need I Say More?

In this episode of The Briefing by the IP Law Blog, Weintraub Tobin attorneys Scott Hervey and Josh Escovedo discuss copyright litigation around the “Jersey Boys” — a musical and movie about The Four Seasons– involving an unpublished biography by one of the band members.
Continue Reading The Briefing by the IP Law Blog: 9th Circuit Provides Clear Copyright Guidance for Producers of Bio Pics