In 1628, Lord Coke in his “Institutes of the laws of England” summarized the common law on restraints on the alienation of chattels stating that any attempt by a seller to restrict resale or use of the chattel after selling...more
7/13/2017
/ Breach of Contract ,
Chattel ,
Exports ,
Foreign Sales ,
Imports ,
Impression Products v Lexmark International ,
IP License ,
Patent Exhaustion ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Resales Agreements ,
SCOTUS ,
Single-Use/No Resale Restriction ,
Stream of Commerce
In its decision of May 22, 2017 in Heartland v. Kraft, the United States Supreme Court held that the specific venue provisions applicable to Patent infringement (28 U.S.C. 1400 (b)) limited the courts in which a domestic...more
5/30/2017
/ Food Manufacturers ,
Forum Shopping ,
Intellectual Property Protection ,
Multidistrict Litigation ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Personal Jurisdiction ,
SCOTUS ,
State of Incorporation ,
TC Heartland LLC v Kraft Foods ,
Venue
In a 7-1 decision on March 21, 2017, in the case of SCA Hygiene Products AB v. First Quality Baby Products LLC, the United States Supreme Court reversed an en banc decision of the Court of Appeals for the Federal Circuit and...more
3/28/2017
/ Damages ,
Defense Strategies ,
Equitable Estoppel ,
Laches ,
Patent Act ,
Patent Infringement ,
Patents ,
Petrella v. MGM ,
SCA Hygiene Products Aktiebolag v First Quality Baby Products ,
SCOTUS ,
Statute of Limitations
On March 22, 2017, the United States Supreme Court in the case of Star Athletica LLC v Varsity Brands LLC affirmed a decision of the Sixth Circuit Court of Appeals that copyright protection could exist in surface...more
3/28/2017
/ Cheerleaders ,
Copyright ,
Copyright Infringement ,
Copyrightable Subject Matter ,
Fashion Design ,
Graphic Designs ,
SCOTUS ,
Section 101 ,
Separability ,
Star Athletica v Varsity Brands ,
Uniforms
On February 22, 2017 in Life Technologies Corp. v. Promega Corp, the Supreme Court in a 7-0 judgment (Chief Justice Roberts having recused himself) held that for there to be active inducement of infringement by export of...more
2/24/2017
/ Appeals ,
Component Parts Doctrine ,
Exclusive Licenses ,
Exports ,
Extraterritoriality Rules ,
Induced Infringement ,
Life Technologies Corp v Promega Corp ,
Patent Infringement ,
Patents ,
Reversal ,
SCOTUS ,
Supply Contracts
For the past few years there has been fear that the law on priority claims in the European Patent Office (EPO) could result in a divisional application becoming prior art against its parent if the divisional application...more
2/13/2017
/ Appeals ,
Divisional Applications ,
EU ,
European Patent Convention ,
European Patent Office ,
Generic ,
Parent Patents ,
Patent Cooperation Treaty ,
Patents ,
Priority Patent Claims ,
Subject Matter Conflicts
The District Court of Milan referred questions to the Court of Justice of the European Union for a preliminary opinion on the interrelation of the EU’s Council Directive 93/98 on the duration of copyright protection and...more
Prior to a recent change in the law, copyright protection in an artistic work expired after 25 years if articles embodying the work had been applied industrially (defined as making more than fifty articles). This kept the...more
12/15/2016
/ Artistic Works ,
Copyright ,
Copyright Designs and Patents Act ,
Copyright Infringement ,
Copyright Terms ,
Furniture Industry ,
Graphic Designs ,
Intellectual Property Protection ,
Manufacturers ,
Mass Produced Items ,
Originality ,
UK
Recent cases in the Court of Justice of the European Union (“CJEU”) and the Court of Appeal of England and Wales (“the English Court of Appeal”) have addressed the question of whether those who provide facilities to persons...more
12/13/2016
/ Copyright Infringement ,
Counterfeiting ,
Court of Justice of the European Union (CJEU) ,
EU ,
EU Directive ,
Injunctions ,
Intermediaries ,
Internet Service Providers (ISPs) ,
L'Oreal ,
Member State ,
Third-Party Relationships ,
Trademark Infringement ,
Trademarks ,
Vicarious Infringement ,
Websites
The Supreme Court on December 6, 2016 ruled that when considering the basis for awarding damages based on the infringer’s profits from infringing a design patent, it is not necessary to base these damages on the profit made...more
12/7/2016
/ Apple v Samsung ,
Calculation of Damages ,
Cell Phones ,
Component Parts Doctrine ,
Damages ,
Design Patent ,
Manufacturers ,
Patent Infringement ,
Profits ,
Remand ,
Reversal ,
SCOTUS
The EU’s Unitary Patent Convention and the associated EU patent had originally been expected to come into effect in 2017. This was, however dependent on ratification of the agreement by thirteen EU countries of which three...more
Concerns about trade secret theft have been increasing in both the United States and Europe in recent years. Traditionally, American law disfavored trade secret protection vis à vis patenting on the basis that publication of...more
9/22/2016
/ Asset Seizure ,
Confidential Information ,
Corporate Counsel ,
Criminal Liability ,
Damages ,
Defend Trade Secrets Act (DTSA) ,
Economic Espionage Act ,
EU ,
EU Directive ,
Ex Parte ,
Extraterritoriality Rules ,
Injunctive Relief ,
Jurisdiction ,
Limitation Periods ,
Misappropriation ,
Patents ,
Popular ,
Private Right of Action ,
Trade Secrets ,
TRIPS Agreement ,
Whistleblower Protection Policies ,
Whistleblowers ,
Young Lawyers
In a June 23, 2016 referendum, the combined electorates of the United Kingdom and Gibraltar voted in favor of the United Kingdom, and consequently Gibraltar, leaving the European Union (EU).
According to Article 50 of...more
7/5/2016
/ Article 50 Treaty of the EU ,
Community Designs ,
Copyright ,
Design Patent ,
EPO ,
EU ,
European Communities Act ,
European Patent Convention ,
European Patent Office ,
European Union Intellectual Property Office (EUIPO) ,
Intellectual Property Protection ,
Member State ,
Patents ,
Referendums ,
Trademark Act ,
Trademarks ,
UK ,
UK Brexit ,
Unified Patent Court ,
Unitary Patent
The case of Kirstaeng v. Wiley hit the headlines in 2013 when the Supreme Court held that importation and sale in the United States of books bought from the copyright owner in Thailand was not an infringement of copyright,...more
On June 13, 2016 Chief Justice Roberts delivered a unanimous decision of the Supreme Court in the case of Halo v. Pulse on the question of when enhanced damages can be awarded for patent infringement. This decision reversed...more
6/23/2016
/ 35 U.S.C. § 284 ,
Enhanced Damages ,
Halo v Pulse ,
Judicial Discretion ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patents ,
Preponderance of the Evidence ,
SCOTUS ,
Seagate ,
Standard of Review ,
Willful Infringement
On June 20th, in Cuozzo v. Lee, the Supreme Court affirmed the Federal Circuit holding that claims should be given their broadest reasonable interpretation in inter partes review proceedings....more
6/22/2016
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Cuozzo Speed Technologies v Lee ,
Final Judgment ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Standard of Review ,
USPTO
2016 has been a year of IP changes and these changes have had an effect upon biotechnology as well as trade secrets.
Patents: Will the U.S. Supreme Court Grant Cert. In Ariosa v. Sequenom?
Ariosa v. Sequenom was...more
6/7/2016
/ Biotechnology ,
Defend Trade Secrets Act (DTSA) ,
DNA ,
European Patent Office ,
Myriad-Mayo ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Personalized Medicine ,
Pharmaceutical Patents ,
Popular ,
Sequenom ,
USPTO
Concerns about trade secret theft have been increasing in recent years and the America Invents Act included provisions that reduced the commercial risks that a business would run by trying to keep inventions as trade secrets...more
This year the IP world will be brimming with changes, the largest of which will take place in the European Union. Sweeping reforms in EU trademark law will be implemented in March as well as the likelihood of the Unitary...more
2/24/2016
/ Apple v Samsung ,
Brazil ,
Canada ,
China ,
Copyright ,
Cuozzo Speed Technologies v Lee ,
Design Patent ,
Eli Lilly ,
EU ,
European Court of Justice (ECJ) ,
FRAND ,
Halo v Pulse ,
Japan ,
Lanham Act ,
Lexmark ,
Madrid Protocol ,
Patent Litigation ,
Pharmaceutical Patents ,
Redskins ,
SCOTUS ,
Standard Essential Patents ,
Trade Secrets ,
Trademark Litigation ,
UK ,
Unitary Patent ,
World Intellectual Property Organisation
In a 10 – 2 decision on February 12, 2016, the U.S. Court of Appeals for the Federal Circuit en banc decided the case of Lexmark v. Impression. Deciding two issues, the court...more
There are now three decisions of the Federal Circuit on appeals from the Patent Trial and Appeal Board (PTAB) on inter partes reviews:
- In re Cuozzo Speed Technologies LLC
- Belden Inc. v. Berk-Tek LLC and
-...more
7/31/2015
/ Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Cuozzo Speed Technologies ,
Inter Partes Review (IPR) Proceeding ,
Microsoft ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
The inventor(s), the applicant (if not an inventor) and his or her attorney and others involved in preparation or prosecution of the application have a duty of candor in dealing with the United States Patent and Trademark...more
Many consumers today, plagued by embarrassing typographical errors when using their touch-screen smartphones, own a second smartphone with a keyboard, such as a BlackBerry phone, for their professional correspondence. To...more
In recent years, protection of designs has become of increasing importance. As Steve Jobs famously noted:
“People think it’s this veneer — that the designers are handed this box and told, ‘Make it look good!’ That’s...more
Two decisions of the U.S. Supreme Court on April 29, 2014 may have an impact on the “patent trolls” debate by changing the rules relating to the award of attorney fees to a winning party in litigation relating to patent...more