The latest from the Agency that you need to know.

On Jan. 9, 2003, the U.S. Supreme Court granted certiorari to decide whether a fair use defense to trademark infringement can trump a finding of likely confusion. <i>KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.</i>, 328 F.3d 1061 (9th Cir. 2003), <i>cert. granted</i>, 124 S. Ct. 981 (2004). The decision to grant certiorari in this case is especially interesting in light of other recent cases also from the Ninth Circuit in which certiorari was denied.

Intellectual property disputes typically have been resolved through litigation rather than arbitration. Litigators have seen arbitration as a dispute resolution method geared at matters of private contract. Because intellectual property's very existence has been a product of public policies supporting invention, branding and creativity, the courts have seemed to be the more appropriate locale to handle these disagreements. In the last 20 years, however, arbitration has received increasing attention as an acceptable method of resolving intellectual property disputes.

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Trade secret plaintiffs sometimes couch their claims under other, alternative titles, such as "common law misappropriation," "unfair competition," or "breach of confidence." The tactic is often a deliberate ploy to avoid complying with state Uniform Trade Secrets Act (UTSA) statutes and case law governing trade secret litigation &mdash; a body of law that favors former employees in many respects.

Highlights of the latest intellectual property news and cases from around the country.

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Intellectual property is an asset class and patents, prominent members of that class, are call options on the economic value of the covered technology. Because patent value can be substantial, and because the values of companies can be significantly impacted by the value of IP assets, the intersection of finance and patent law is increasingly common. In particular, here are four vignettes in which they intersect.

In two recent decisions, the Court of Appeals for the Federal Circuit ("Federal Circuit") elaborated on the standards to be used when considering whether to award lost profit damages to a patent owner who has successfully shown validity and infringement. Both decisions were released by the Federal Circuit on Dec. 4, 2003. (<i>Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC,</i> 350 F.3d 1327 (Fed. Cir. 2003); and <i>Utah Med. Prods., Inc. v. Graphic Controls Corp.</i>, 350 F.3d 1376 (Fed. Cir. 2003)). These cases should provide direction to patent owners, defendants, and their counsel when attempting to assert or defend against lost profits claims.

In 1963 the Supreme Court noted that patent applications "constitute one of the most difficult legal instruments to draw with accuracy." (<i>See Sperry v. Florida Ex. Rel. Florida Bar</i>, 373 U.S. 379, 383 (1963)). Recent decisions by both the Supreme Court and the Federal Circuit have made this task even more difficult. In particular, the Supreme Court's 2002 decision in <i>Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.</i> (535 U.S. 722) and the Federal Circuit's 2003 <i>Festo</i> remand decision, as well as the Federal Circuit's 2002 <i>Johnson &amp; Johnston</i> (285 F. 3d 1046) (344 F. 3d 1359) decisions, all had significant narrowing effects on the doctrine of equivalents.