Guest Contributors


Mark Pedigo

Use of the Book of Wisdom in Reasonable Royalties

Posted 22 days ago

Courts consistently focus on the availability of non-infringing substitutes as of the date of the hypothetical negotiation. In most of the cases reviewed, the determination of available substitutes was limited to those available at the date of first infringement. If an alternative introduced after the hypothetical negotiation was considered, its impact was discounted to reflect uncertainty as of the date of the negotiation. For example cases, please contact the author. From a review of the above cases, it is clear that the book of wisdom can be relevant and useful, but it is not always allowed by courts. Use and acceptance of the book of wisdom is case and court specific.

Gene Quinn

Federal Circuit affirms PTAB Mixed Decision in Acceleration Bay v. Activision Blizzard

Posted 24 days ago

Acceleration Bay appealed the final written decisions of the Board holding claims 1-9 of U.S. Patent No. 6,829,634, claims 1-11 and 16-19 of U.S. Patent No. 6,701,344, and claims 1-11 and 16-17 of U.S. Patent No. 6,714,966 all unpatentable. Petitioners Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2k Sports, Inc., and Rockstar Games, Inc. (collectively, “Blizzard”) also cross-appealed portions of the Board’s decisions holding patentable claims 10-18 of the `634 patent, as well as substitute claims 19 of the `966 patent, 21 of the `344 patent, and 25 of the `634 patent. Blizzard also cross appealed the Board’s decisions holding that one particular reference — the Lin article — was not a printed publication under 35 U.S.C. § 102(a). In an opinion authored by Judge Moore and joined by Chief Judge Prost and Judge Reyna, the Federal Circuit affirmed the PTAB decision, finding that both Acceleration Bay’s and Blizzard’s arguments were without merit.

Joseph Robinson

Federal Circuit says Assignor Estoppel Has “No Place” in IPR Proceedings

Posted 25 days ago

The Federal Circuit recently found that assignor estoppel has “no place in IPR proceedings,” affirming a holding of the Patent Trials and Appeal Board (“Board”) that assignor estoppel did not bar Arista Networks (“Arista”) from attempting to invalidate a patent belonging to Cisco Systems (“Cisco”).  Arista’s founder, Dr. David Cheriton, was the inventor on the patent Arista wanted to invalidate and had previously assigned the patent to Cisco while employed by Cisco. See Arista Networks, Inc. v. Cisco Sys., Nos. 2017-1525, 2017-1577, 2018  (Fed. Cir. Nov. 9, 2018) (Before Prost, Schall, and Chen, J.) (Opinion for the court, Prost, J.).

Ives Duran

Why Non-Practicing Entities (NPEs) Are Good For China

Posted 26 days ago

In the U.S., the risks of frivolous patent lawsuits is greater because the merits are decided by a group of jurors who lack patent expertise and can incorrectly conclude that a patent is infringed. In China, however, these inefficiencies and imbalances do not exist. The specialized intellectual property courts and tribunals in China are equipped with specialized judges who are able to quickly and accurately identify frivolous lawsuits. Because there is no discovery process and a decision on the merits can often be achieved within one year, the abusive tactics employed by patent trolls in the U.S. can be avoided in China.

Jennifer Itzkoff

International Trademark Lessons from the Bayer-Belmora FLANAX Trademark Fight

Posted 26 days ago

A closely watched cross-border trademark case finally has been resolved, and the results of the case have implications for global trademark holders. A  U.S. District Court Judge in the Eastern District of Virginia granted Bayer AG’s motion for summary judgment, dismissing rival Belmora’s claims to the trademark FLANAX. In Mexico, Bayer uses the FLANAX mark for the popular pain medication known elsewhere as Aleve (naproxen), and successfully blocked Belmora’s attempt to market its own naproxen product under the mark FLANAX in the United States. The ruling also affirms a U.S. Trial and Appeal Board ruling that cancelled Belmora’s U.S. trademark for FLANAX, which the company secured in 2005. The United States Court of Appeals for the Fourth Circuit had previously determined that the Lanham Act authorized Bayer’s claims against Belmora for unfair competition under §43(a) and its cancellation action under §14(3).

Peter Cifichiello

Licensed to Thrive: A Due Diligence Roadmap for Would-Be Software Licensors

Posted 28 days ago

When it comes to gathering information prior to settling on a prospective licensee, less is certainly not more. For this reason, companies angling to license software must not be shy about asking the questions presented here. Without a doubt, by learning as much as possible about potential partners before finalizing agreements, software licensors can significantly minimize downside risk. Appropriate due diligence is the means to that end. Whether by way of a thorough licensing application or more in-depth background investigation conducted by legal counsel, a licensor’s complete grasp of a licensee’s work, reputation, experience, reach, financial condition, litigation history and potential conflicts of interest will go a long way to ensure a successful licensing relationship.

James Pooley

Secrets of Social Media: Who owns social media accounts?

Posted 28 days ago

Andy Bitter, a former sports journalist covering the travails and triumphs of the Virginia Tech football team, was sued last month by his former employer, a local newspaper, for trade secret theft. According to the plaintiff Roanoke Times he was obligated by the company’s employee handbook to turn over all company property, and this necessarily included the Twitter account he had used to stay in touch with his 17,000+ followers… In spite of the mess it created, the Roanoke Times has reminded us of some important questions for industry in the information age. Who owns social media accounts? What role do they play in building competitive advantage? And how should companies manage their use?

Carly Klein

The Complicated Relationship Between IP Law & Cannabis

Posted 1 month ago

For the innovators capitalizing on the legal growth, distribution, and commercial sale of cannabis, the procurement of intellectual property rights can go a long way in the monetization of their ideas, products, and services. As with any new venture, solidifying an IP protection strategy early on can maximize the benefits of a new invention and minimize risk the of potential infringement. This rings especially true in a field where so few patents, copyrights, and trademarks have been issued… It is not impossible to secure IP rights on cannabis-related inventions, but there are a number of factors to consider and a number of complexities to be aware of.

Amy Goldsmith

Musically Inclined: The Music Modernization Act of 2018

Posted 1 month ago

When Congress permitted sound recordings to be copyrighted over four decades ago, it didn’t extend that coverage to pre-1972 recordings. This issue, and the piecemeal nature of licensing for digital music on a per-work, per song basis, were part of the impetus for the stakeholders in the music industry to work together to create the Music Modernization Act, signed into law on October 11, 2018… Not all issues in the music industry were solved by the Music Modernization Act: licensing of physical sound recordings (vinyl and CDs) will still occur on a per-work, per song basis. Terrestrial radio pays songwriters and publishers royalties for playing music, but it doesn’t pay performance or sound-recording royalties. And while the goal of one public database is laudable, the responsibility still lies with songwriters and publishers to submit copyright applications and to submit all of their musical works and sound recordings to the MLC… While there is still work to be done, the Music Modernization Act does solve some long-standing issues in the music industry.

Paul Bremmer

As cannabis patent filings increase, are food and beverage companies positioned to benefit?

Posted 1 month ago

Early protection of intellectual property rights is a critical component in any business’ efforts to secure a competitive advantage in the marketplace. A recent report has found that patenting activity for cannabis food and drink has seen a large increase in global activity, in the last five years. 242 simple patent families have been filed in 2015, up from only 144 simple patent families filed in 2012. However, not a single food and beverage company was found to be among the top 10 applicants. Is this a sign that food and beverage companies are not well positioned to benefit from ongoing cannabis legalisation?

James Edwards

ITC’s Chance to Restore Reason and the Public Interest in the Qualcomm v. Apple Case

Posted 1 month ago

An administrative law judge at the U.S. International Trade Commission recently found patent infringement in Qualcomm’s case against Apple, but then inexplicably refused to recommend that the commission issue an exclusion order against infringer Apple. Is there some new standard that “established and profitable companies” are no longer deserving of ITC action?  The International Trade Commission is in danger of causing the same harm to patent rights as the U.S. Supreme Court has inflicted on patent owners with the court’s lame-brained eBay decision.

John White

Do You Know Why You’re Doing What You’re Doing for Your Clients?

Posted 1 month ago

In patenting, one size does not fit all. There are many clients and there should be as many strategies, and those many strategies should change as the needs and ambitions of your clients change. Each client has unique business objectives. A patent strategy should be conceived to support and achieve those objectives. How does this occur? 

Roderick O'Dorisio

5 Mistakes Businesses Make with Trademarks and Brands

Posted 1 month ago

Although running an early-stage startup is exhilarating, do not let your brand name protection be swallowed up by all the excitement. Neglecting to properly secure a trademark for your company and products can lead to expensive consequences in the future, such as being forced to rebrand just as you’re gaining traction or being unable to stop infringers from using your brand name. Below are 5 of the most common mistakes businesses make with trademarks and what you can do to avoid them.

Hans Sauer

Price Controls and Compulsory Licensing Reduce Patient’s Healthcare Options

Posted 1 month ago

Once we go down a path of government price controls and compulsory licensing we will have foregone opportunities for other, more rational policy choices and will soon find ourselves in a race to the bottom. Of course, making prescription drugs more affordable must be an important, shared goal. But the solutions we pursue cannot risk choking off America’s innovative ecosystem that leads the world in discovering new cures and treatments. As Nobel laureate and NIH Director Harold Varmus said in 1995, one must first have a new drug to price before one can worry about how to price it.  Letting our federal government import foreign price controls and expropriate patents is not the way to go about it.

Sam Rayner

Sensitive personal data in HR functions: climbing the ladder of legal bases

Posted 1 month ago

The GDPR’s entry into force has forced HR teams across the US and EU to re-evaluate the ways in which they justify the use of personal data relating to their employees, applicants and contractors. Whilst compliance priorities will vary between businesses, all US headquartered organizations with a presence or personnel in the UK should be particularly mindful of their enhanced obligations to satisfy multiple conditions under both the GDPR and the UK’s new Data Protection Act 2018 (“DPA 2018”) before collecting certain special categories of personal data.

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