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The Intellectual Property Strategist
Exercising Restraint: Federal Circuit Affirms Dismissal of Declaratory Judgment Action Under Abstention Doctrine
Rudy Kim and James Hancock
The Federal Circuit affirmed the dismissal of a declaratory judgment action based on the “abstention doctrine,” despite the declaratory judgment plaintiff’s insistence that the underlying contract dispute required resolution of patent validity and claim scope that were within the federal courts’ exclusive purview.
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The Intellectual Property Strategist
Looking Ahead to Avoid Spoliation Sanctions
Daniel J. Melman and Sarah Benowich
A recent Federal Circuit decision denying a petition for a writ of mandamus should serve as a cautionary tale and reminder for corporate entities regarding the critical importance of preserving documentary evidence in a timely and appropriate manner.
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The Intellectual Property Strategist
USPTO Sets Precedent on Collective Patent Defense Groups with RPX Ruling
Scott Graham
It took two years and a last-minute substitution of judges for the U.S. Patent and Trademark Office (USPTO) to rule that RPX Corp. was too close to a dues-paying member to bring a patent validity challenge.
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Entertainment Law & Finance
A Look at the EU’s Latest Proposal for Regulating Online Content
Linda A. Thompson
The DSA is intended to reset the rules around online content moderation and to reframe the responsibility of platforms for illegal content uploaded to their websites.
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The Intellectual Property Strategist
IP News
Joshua R. Stein and Jeff Ginsberg
Federal Circuit: Post-Employment Assignment Clause Void Under California Law
Federal Circuit No New Trial for Improper “Pennies on the Dollar” Rhetoric
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The Intellectual Property Strategist
Unseating Inelegant Notions of Product Design Functionality
Jonathan E Moskin
In Blumenthal Distributing, Inc. v. Herman Miller, Inc., the 9th Circuit considered whether or not the or not the best-selling piece of furniture ever is functional.
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The Intellectual Property Strategist
Hot Legal Litigation Topics for Advertisers and Marketers in 2020
Kyle-Beth Hilfer
The COVID-19 pandemic pushed brands headlong into e-commerce. Certain advertising and marketing practices led to litigation in 2020. Brands and their legal counsel should target these hot topics for legal vetting and risk mitigation as we move forward into 2021.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen J. Patel
NY District Court Adds to Confusion Surrounding Embedding
Federal Circuit Rules Patent Infringement Under Hatch-Waxman Act Occurs Where ANDA Is Filed
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The Intellectual Property Strategist
To Embed, or Not to Embed, that is the Question
Shaleen J. Patel and Mike Hobbs
Would Shakespeare Post Hamlet on Instagram in 2020?
Recent legal and procedural developments associated with the ubiquitous Instagram social media site have created significant practical and legal risks for both copyright owners and account holders.
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The Intellectual Property Strategist
Marking, Notice and Knowledge: What Patent Licensors Need to Know
Brenda Holmes
A patentee should consider patent marking issues when negotiating a patent license, as well as during the term of the license. Otherwise, the patentee may find that its damages for patent infringement are limited due to its licensee’s failure to mark.
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The Intellectual Property Strategist
Recently Introduced Bill Would Limit ITC 'Domestic Industry by Subpoena'
Robert Maier
Patent infringement disputes in the United States are not only heard in district courts. The U.S. International Trade Commission (ITC) also decides high-stakes intellectual property disputes — with the remedy for the IP rights holder not being damages, but rather an exclusion order that can block a competitor’s importation of infringing articles into the U.S. That remedy can be incredibly powerful for companies engaged in stiff competition in the U.S. market.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and George Soussou
Federal Circuit: HP Not Estopped from Challenging Claims Deemed Unchallengeable in IPR That It Had Joined
Federal Circuit: A New Process Does Not Transform an Old Product Into a New One
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Entertainment Law & Finance
Are Rule 12(b)(6) Dismissals In Copyright Infringement Lawsuits In Danger?
Alan Friedman
Until recently, the Second and Ninth Circuits have both been receptive to dismissals under Rule 12(b)(6) if the court determines the plaintiff cannot plausibly state a claim of copyright infringement because the two works are not substantial similar. However, a pair of recent “unpublished” Ninth Circuit reversals involving prominent motion pictures stand in contrast to a recent Second Circuit decision affirming such a dismissal.
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The Intellectual Property Strategist
Deciphering the USPTO’s Material Alteration Standard for Amending Marks
Chris Bussert
As brands mature over time, their owners often seek to update marks that are subject to a federal registration or registration application. In some cases, the impetus for the amendment may be deliberately to freshen, tweak, or otherwise modernize the subject mark. In other cases, brand owners may recognize after the fact that their current usage of a mark does not match the mark as originally registered or applied for.
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The Intellectual Property Strategist
Testing for Genericness After USPTO v. Booking.com
Alex Simonson
In the recent U.S. Supreme Court case of USPTO v. Booking.com, the U.S. Supreme Court held that the term Booking.com is not necessarily generic merely because it is composed of two components, each itself generic. In so deciding, Justice Ginsburg averred that there is an appropriate metric to determine if such a term is indeed generic, that of consumer perception.
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Entertainment Law & Finance
Methods for Trademark Valuations
Stacey C. Kalamaras and Henry Kaskov
Valuations of trademarks, such as those in the entertainment industry, are most commonly performed in relation to a sale or licensing transaction or for lending and collateral purposes.
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The Intellectual Property Strategist
Alice and Incongruity In PTAB Appeals
James W. Soong
This article discusses the significant contrast between consideration of issues related to the U.S. Supreme Court’s decision in Alice Corp. v. CLS Int’l in prosecution and their resolution by the PTAB.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen Patel
Federal Circuit Modifies Facebook IPR Joinder Ruling
District Court: Stipulation of Noninfringement Does Not Preclude Post-Remand Finding of Infringement
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The Bankruptcy Strategist
Bankruptcy and Intellectual Property Executory Contracts
Michael H. Strub Jr.
The economic impact of the pandemic has been catastrophic. For many companies, intellectual property are significant assets, and counsel for these businesses, as well as counsel for their creditors, licensees and licensors, will need to understand these issues that arise to avoid pitfalls and take full advantage of opportunities to exploit the full value of a company’s IP for the benefit of their clients.
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The Intellectual Property Strategist
What’s Your Trademark Worth? Determining the Value of Trademarks For Collateral, Sale or Licensing
Stacey C. Kalamaras and Henry Kaskov
This article explores the options available to a client to value its trademarks during a financial crisis, to ensure one of the most valuable assets it owns can continue to work for the company and see it through the lean times.
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Entertainment Law & Finance
Damages In Trademark Infringement Litigations
Mark A. Salky and Jessica Johnson Fishfeld
During a time when online marketing, virtual shopping and electronic communication are more widely used than ever, it is critically important for entertainment industry businesses to be highly aware of how they are using trademarks, the scope of a trademark owner’s rights and the consequences of infringing them.
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The Intellectual Property Strategist
The Russian Vodka Saga
Jared Looper
Federal Treasury Enterprise Sojuzplodoimport v. Spirits International BV
What do the fall of the Soviet Union, a heist of trademark rights, and Stolichnaya vodka have in common? They are all key components of the Russian Federation’s efforts to reclaim its trademarks in Stolichnaya vodka.
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The Intellectual Property Strategist
Which Method Is for You? Not All Surveys Are Made the Same
Laura O’Laughlin, Harriet Ho and Duy (Joey) Duong
As survey evidence has become increasingly common in litigation, it is important to remember that not all surveys are made the same. It’s important to be able to identify the right survey methodology for the matter at hand. Third in a series
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Abhishek Bapna
Federal Circuit: ITC Did Not Err in Denying Non-Respondent’s Petition to Rescind Exclusion Order Based on Invalidity Grounds
Federal Circuit: District Court Did Not Err in Ruling that ‘Half-Liquid’ Is Indefinite
Federal Circuit: District Court Did Not Err In Allowing Jury to Determine Infringement Based on Products’ Compliance with Standard
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The Intellectual Property Strategist
What’s in a Name? Booking.com and Consumer Perception Evidence
David H. Bernstein and Jared I. Kagan
In the first case in U.S. Supreme Court history argued by telephone, the Court ruled 8-1 in favor of Booking.com, holding that it could register as a trademark its eponymous domain name BOOKING.COM.
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The Intellectual Property Strategist
States Win Some and Lose Some on Copyright Front at Supreme Court This Term
Jason Bloom
The Supreme Court decided two copyright cases this term, both involving states. This article discusses the cases and their likely impact on copyright law going forward.
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The Intellectual Property Strategist
Weighing the Benefits: How Much Weight Will Your Survey Have in Court?
Rene Befurt, Marie Warchol and Anthony Nasr
As consumer surveys become increasingly common forms of evidence in matters involving copyright, patent or trademark infringement, so too do Daubert challenges that attempt to disqualify that evidence. However, getting admitted into court is no guarantee of success — you are not over the entire Daubert hurdle just yet. The next step is ensuring that your survey is convincing the fact finders that your survey’s results are dependable and useful.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen Patel
Federal Circuit: Faulty Claim Construction Does Not End Patentability Determination
Federal Circuit: Notice to Market Bio Product Not Negated By New Applications
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The Intellectual Property Strategist
What You Need to Know About the USPTO’s Proposed Rule Changes to PTAB Trials
Kerry S. Taylor and Nathanael R. Luman
On May 27, 2020 the U.S. Patent and Trademark Office (USPTO) proposed rule changes to govern inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review proceedings at the PTAB. This article provides a summary of each proposed rule change and its potential impact on PTAB practice.
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The Intellectual Property Strategist
Statute of Limitations In Copyright Ownership Disputes: Questions from the Everly Brothers Case
J. Alexander Lawrence
Don and Phil Everly’s flawless harmonies that resulted in a string of hits in the 1950s and '60s regrettably ended in acrimony. The Sixth Circuit recently issued a decision in a dispute between Phil’s heirs and Don over copyright ownership of the No. 1 hit “Cathy’s Clown,” in which concurring Judge Eric E. Murphy raised important questions about when the statute of limitations should begin to run in copyright cases and whether courts have been correctly applying the law.
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The Intellectual Property Strategist
Survey Says: Tips on Getting Over the Daubert Hurdle
Rebecca Kirk Fair, Peter Hess and Vendela Fehrm
Surveys can provide useful evidence in litigation if they are conducted by a qualified expert employing reliable methods that survive a Daubert challenge. In the first of a series of articles drawing on our review of over 300 U.S. court rulings in cases involving surveys, including over 150 Daubert motions, we provide some suggestions for getting survey evidence admitted for consideration in court.
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The Intellectual Property Strategist
Recent Court Views on “Making Available” Controversy In Copyright Infringement
Stan Soocher
Federal courts have long disagreed over whether the unauthorized “making available” of a plaintiff’s works to the public is sufficient to constitute copyright infringement under the U.S. Copyright Act. Two June District Court decisions demonstrated the differences between the views of the Fourth and Ninth Circuits.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Zhiqiang Liu
Federal Circuit Finds Preamble Not Limiting and Claims Reciting Means-Plus-Function Limitations Without Disclosure of Corresponding Structures Cannot Be Determined Unpatentable as Indefinite in an IPR Proceeding
Federal Circuit Finds That District Court Correctly Applied the Disclosure-Dedication Doctrine In Granting a Motion for Judgment of Non-Infringement on the Pleadings
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The Intellectual Property Strategist
Eliminating Willfulness as a Prerequisite to Recovering an Infringer’s Damages in Dilution Cases
Sarah Benowich
Romag Fasteners, Inc. v. Fossil, Inc.
The Supreme Court, settling a circuit split, held that, although highly important, willfulness is not a prerequisite for a trademark infringement plaintiff to obtain a profits award.
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The Intellectual Property Strategist
U.S. Supreme Court Rejects ‘Defense Preclusion’ in Trademark Suit
Anthony J. Dreyer
On May 14, 2020, the U.S. Supreme Court resolved a circuit split, finding that any preclusion of litigation defenses must comply with traditional res judicata principles, and ruling that Lucky Brand was not precluded from asserting its defenses in its long-standing trademark litigation against Marcel Fashions Group
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The Intellectual Property Strategist
Artificial Intelligence and Copyright: Ownership and Fair Use
Shaleen J. Patel and Sushmitha Rajeevan
Machine learning allows certain AI to create entirely new content based upon the materials it used to learn. In the process of creating new content, AI may create copies of copyrighted works in memory storage as a byproduct of its overall output sequence. This article explores authorship and ownership of such AI-generated content, and to what extent, if any, can copyrights be infringed upon when AI reproduces copyrighted works for machine learning.
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The Intellectual Property Strategist
You’ve Made Your Bed, Now Lie In It – Binding Settlement Agreement Defeats A Post-Settlement Judgment
Rudy Kim and Chris Han
Holding that the parties’ executed agreement mooted the issues in the case, the Federal Circuit recently reversed a district court’s decision to grant summary judgment of non-infringement despite the parties’ agreement. The decision builds upon prior Federal Circuit case law giving effect to settlement agreements.
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The Intellectual Property Strategist
IP News
Howard Shire and Shaleen Patel
Article III Inter Partes Review Decision Precluded By Congress, SCOTUS Rules
SDNY: Video Game Makers Not Violating Copyright with NBA Player Tattoos
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The Intellectual Property Strategist
Supreme Court Rules States Cannot Be Involuntarily Liable for Copyright Infringement
Shaleen J. Patel
The U.S. Supreme Court has ruled that individual states are free to commit copyright infringement. The Court held that Congress attempted to abrogate states’ sovereign immunity in an unconstitutional manner when enacting the Copyright Remedy Clarification Act of 1990 (CRCA).
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The Intellectual Property Strategist
Practical Tips for Securing Patent Rights for AI-Generated Inventions
Gunjan Agarwal
While AI is rising as a key commercial player at the global scale with an expected market size of almost $400 billion by 2025, are patent laws around the world equipped to incentivize this revolution?
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The Intellectual Property Strategist
Avoiding Trade Secret Losses During Corporate Collaboration
Felix Eyzaguirre and Katherine D. Prescott
Effective corporate collaborations — whether close customer relationships, supplier partnerships or formal joint ventures — demand that sensitive information be shared. Without proper agreements and well-defined boundaries, however, those corporate collaborations can lead to loss of trade secret protection and entangle the parties in litigation.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg and Matthew Weiss
Federal Circuit: Method of Preparation Claim is Patentable
Federal Circuit: Same Party Cannot Join IPR Petitions under 35 U.S.C. §315(c)
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The Intellectual Property Strategist
Attorney’s Fees After Octane: More Chances for Defendants to Even the Playing Field
Rudy Y. Kim
With fewer restraints after Octane, district courts now have broader discretion to grant motions for attorney’s fees. But understanding the circumstances under which exceptionality has been found is critical. Recent decisions by the Federal Circuit post-Octane provide some important guidance on when attorney’s fees may be available under Section 285.
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The Intellectual Property Strategist
Swedish Music Industry Views: Part Two
Stan Soocher
Part Two of a Two Part Article
This article discusses, among other things, the Swedish music industry perspective on the European Union’s Copyright Directive, the growth of multi-country music licensing hubs and the impact of Brexit.
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The Intellectual Property Strategist
Kozinski Angle In 9th Circuit’s Led Zeppelin Ruling
Scott Graham
Defendants Led Zeppelin and its music labels were the winners in the copyright decision by the Ninth Circuit over the song “Stairway to Heaven.” But the estate of songwriter Randy Wolfe (p/k/a California) wasn’t the only one who got the short end. Among the collateral damage from the ruling was a 2002 precedent written by former Chief Judge Alex Kozinski that endorsed the so-called “inverse-ratio” rule.
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The Intellectual Property Strategist
IP News
Shaleen J. Patel
VARA Lives On: A $6.75M Lesson on Respecting Moral Rights
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The Intellectual Property Strategist
You Know What It Is: Taco Tuesday and the Failure-to-Function Doctrine In Trademark Law
Brandon Leahy
The foundational requirement that a trademark function as a trademark has received little attention in the case law. More recently, however, there has been an apparent uptick in scrutiny of trademark use by the USPTO and TTAB, as well as fresh academic attention paid to the issue.
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The Intellectual Property Strategist
Swedish Music Industry Views as European Union Countries Work on Drafting Home Laws for Enacting EU Copyright Directive
Stan Soocher
This article is Part One of a two-part article
This article examines the Copyright Directive and music-industry structure issues through the lens of Sweden, which has both a robust music business and a strong technology sector, two divergent perspectives in the development of the directive.
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The Intellectual Property Strategist
IP News
Jeff Ginsberg
Northern District of Texas: Even Post-Berkheimer, Patent Claims Continue to be Ineligible for Patenting as a Matter of Law When They Are Not Drawn to Particular Technical Solutions or Advances Described in the Specification
Federal Circuit: The PTAB Cannot Institute Inter Partes Review on Obviousness Grounds Not Included in the IPR Petition, But Can Consider Evidence of “General Knowledge” in the Art
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Entertainment Law & Finance
‘Vanicorn’ Lawsuit Filed over Pixar, Disney Film
Scott Graham
A unicorn-loving tattoo artist alleges that Pixar and Disney have tricked her into letting them use her “Vanicorn” in the upcoming film Onward. Her suit accuses the companies of copyright infringement, and violations of state and federal laws protecting artwork.
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