Keywords

Newsletter

Topic

From

To

  • Supreme Court Doesn't Sound Ready to Kill Off PTAB

    January 01, 2018 |

    There Was No Clear Majority at Oral Argument Signaling the Death of Inter Partes Review

    November 27 was supposed to be the big Patent Trial and Appeal Board (PTAB) showdown at the U.S. Supreme Court. After two hours of questioning, it seemed more like a big bust.

  • IP News

    January 01, 2018 |

    Federal Circuit Affirms Finding That Rembrandt's Patent Is Not Infringed by Apple's Accused Products
    District Court Transfers Case after Federal Circuit Ordered It to Reconsider Party's Venue Objections In Light of TC Heartland

  • TTAB: Trademark Use Must be Proven

    January 01, 2018 |

    Board Says It Doesn't Matter Whether Use Is By a Trademark Owner Or a Third Party

    In a nearly 50-page precedential opinion, the Trademark Trial and Appeal Board (TTAB) panel of Judges Adlin, Heasely, and Lynch, underscored the need to prove actual use in commerce in order to register a trademark, regardless of how low the standard for use under the Lanham Act has recently become. Tao Licensing, LLC, v. Bender Consulting d/b/a Asia Pacific Beverages.

  • The Case for Use of Accelerated Case Resolution in TTAB Proceedings

    December 01, 2017 |

    This article outlines the available options under the Trademark Trial and Appeal Board's ACR rules and discusses the strategic considerations in determining whether ACR might be advantageous, particularly in light of increasing pressure from clients to reduce costs and expedite the decision-making process.

  • Written Opinions Of Counsel: Valuable Tools for Avoiding Willful Patent Infringement

    December 01, 2017 |

    Written opinions of counsel are gaining renewed interest as a valuable tool to limit liability for willful patent infringement. A patent opinion that is competently written by a registered patent attorney sets forth the factual and legal basis for finding a patent not infringed, invalid, and/or unenforceable. However, to be effective, the timing of the rendered patent opinion may be critical.

  • Supreme Court, Federal Circuit Deny Damages for Patent Found to Be Valid and Infringed

    December 01, 2017 |

    On Nov. 13, 2017, a Federal Circuit panel of Chief Judge Prost, Judge Mayer, and Judge Chen issued a unanimous decision in Promega Corp. v. Life Technologies Corp. On remand from the United States Supreme Court, the panel affirmed a grant of judgment as a matter of law by the United States District Court for the Western District of Wisconsin that the plaintiff failed to prove its infringement case under §§35 U.S.C. 271(a) and 271(f)(1). The panel affirmed the district court's denial for a new trial on damages and infringement, and reaffirmed its prior holdings on enablement, licensing, and active inducement issues.

  • IP News

    December 01, 2017 |

    Federal Circuit Resolves Circuit Split, Finds That Venue Is Not Waived Under Rule 12(h)(1)(A) for Cases Brought before TC HeartLand
    Federal Circuit Reverses Award of Lost Profits Because Product Sold to a Single Customer Was an Available Non- Infringing Alternative

  • The New Patent Venue Regime

    November 02, 2017 |

    Venue in patent cases lies "in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." Since 1990, the Federal Circuit interpreted the term "resides" coextensively with the general venue statute such that patent venue lay where the defendant was subject to personal jurisdiction. But this year, the Supreme Court greatly narrowed that definition in TC Heartland v. Kraft Foods. The Federal Circuit, in turn, interpreted the newly-relevant alternative phrase. After two decades of relaxed patent venue rules, these decisions work a seismic shift in patent litigation.

  • Retail Restructuring

    November 02, 2017 |

    Various debt-burdened retailers are looking to their intellectual property assets as a source of untapped value for refinancing transactions. While it remains to be seen which strategies will be most successful, IP assets will play a key role in future retail restructurings.