Intellectual Property Law

Federal Circuit's New Decision - In re Tech Decision

Posted on December 31, 2008
On December 29, 2008, the United States Federal Circuit Court of Appeals issued the extraordinary remedy of a writ of mandamus in In re TS Tech USA Corp. et al. (?TS Tech USA?) (Misc. Dkt. No. 888) to reverse the denial of a motion to transfer a patent infringement action from the Eastern District of Texas to the Southern District...

January ABA IP Roundtable

Posted on December 23, 2008
Not Just for Hackers Anymore? Use of the Computer Fraud and Abuse Act to Respond to Theft of Information. January 21st - San Francisco location: Farella Braun + Martel January 22nd - Silicon Valley location: Garden Court Hotel, Palo Alto Information and registration at www...

Intellectual Property Litigation Database Launched by Stanford University

Posted on December 11, 2008
With much fanfare, the Stanford Law School Intellectual Property Litigation Clearinghouse (?IPLC?) was launched on December 1. The IPLC is a searchable online database that provides statistical information on patent lawsuit filings and outcomes since 2000...

Trade Secrets: A Practical & Strategic Overview

Posted on December 09, 2008
Silicon Valley Breakfast Program Trade Secrets:A Practical & Strategic Overview Trade secret claims are on the rise. During periods of economic downturn, employee departures and layoffs increase thereby creating greater opportunity for misuse of confidential trade secret information...

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In re Bilski: Has the Federal Circuit Overly Restricted What is Patentable Subject Matter?

Posted on November 07, 2008
After many eagerly anticipated months, the Federal Circuit fulfilled Judge Michel?s promise and issued its en banc opinion in In re Bilski just as the World Series concluded. In this 132-page opinion, the Court tackled the fundamental question of what types of processes constitute patentable subject matter under 35 U...

In re Volkswagen AG, 5th Cir, No. 07-40058 (October 10, 2008)

Posted on October 15, 2008
On Friday October 10, in a split 10-7 en banc decision, the 5th Circuit issued a writ of mandamus ordering Eastern District Judge John Ward to transfer a product liability case against Volkswagen to Dallas, where the car crash in the underlying case took place...

Claims - Data Privacy, Infringement and Errors & Omissions Coverage

Posted on September 19, 2008
October IP Section Luncheon Insurance Coverage for IP and TechnologyClaims - Data Privacy, Infringement and Errors & Omissions Coverage October 10, 2008, 11:45 a.m. - 1:15 p.m. Denver ChopHouse, Large Banquet Room Presented by: Mary E. McCutcheonJames MorandoDennis M...

Key Cases Pending Regarding Trademark Law and Internet Advertising

Posted on May 29, 2008
Internet advertising through programs such as Google's ?AdWords? and ?AdSense? has given rise to new issues relating to the application of traditional trademark law. AdWords -- better known as ?keyword? advertising -- allows advertisers to purchase or bid on certain ?keywords...

Medimmune, the Next Chapter: Federal Circuit Determines Generics Have Standing to Seek Declaratory Judgment Despite Covenant Not to Sue

Posted on April 07, 2008
In a decision that balances the provisions of the Hatch-Waxman Act with the ?case or controversy? mandate of the U.S. Constitution, the Federal Circuit recently opened the door a little wider for declaratory judgment actions brought by potential infringers ? at least as in matters relating to pharmaceutical products...

COURT ALLOWS STANFORD TO BELATEDLY AMEND INFRINGEMENT CONTENTIONS

Posted on March 26, 2008
In a recent decision addressing the Patent Local Rules of the Northern District of California, Judge Patel granted Stanford University leave to amend its infringement contentions to reach a third product of defendant Roche Molecular Systems (called "TaqMan")...

The Federal Circuit to Reconsider Patentability Standard

Posted on March 04, 2008
Ten years ago, the U.S. Court of Appeals for the Federal Circuit ushered in an era of expanded patentability when it issued its decision in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). The State Street panel held that patent laws do not strictly bar the patentability of ?business methods? and...

eBay and MercExchange Settle Long-Standing Patent Dispute

Posted on February 29, 2008
eBay and MercExchange have agreed to settle what has become one of the most important patent infringement cases in recent memory. According to a press release issued by eBay yesterday, "[a]s part of the settlement, eBay will purchase all three patents involved in the lawsuit, as well as some additional related technology and inventions and a license to another search-related...

9th Circuit Modifies Local Patent Rules

Posted on February 21, 2008
The local patent rules for the Northern District of California have always been viewed both by those in our district as well as other patent lawyers and judges as the leading edge for thoughtful and efficient management of patent litigation. These modifications are the result of several years of experience with the local rules and responding to perceived need to...

A 9-0 Decision By The Supreme Court Knocks Down ?Rigid? TSM Test for Obviousness

Posted on May 03, 2007
As we reported to you after oral argument in KSR Int?l Co. v. Teleflex Inc. et al., last November, the Supreme Court seemed skeptical that the Federal Circuit?s use of the ?teaching, suggestion, or motivation? (?TSM?) test for obviousness was appropriate, calling it at various times ?gobbledygook? and ?worse than meaningless...

Supreme Court Limits Microsoft's Exposure

Posted on May 01, 2007
In a 7-1 decision (with Chief Justice Roberts not participating) in a case the IP Blawg has been following, the Supreme Court today held that Microsoft cannot be liable for patent infringement for Windows software that is sent overseas on a master disk, copied outside of the U...

Impact Of eBay Continues To Be Felt As Federal Circuit Vacates Grant Of Permanent Injunction

Posted on April 16, 2007
In only the most recent example of the wide-reaching impact of the Supreme Court?s 2006 decision in eBay Inc. v. MercExchange, LLC, the Federal Circuit last week applied eBay to vacate and remand a grant of permanent injunction. Although it affirmed the district court's findings of infringement and willfulness, in Acumed LLC v...

Music Copyrights Being Enforced On Campus

Posted on March 15, 2007
Colleges are turning into an IP battleground. Many of them now provide their students with computer terminals and network and Internet access. When the students then use them to share files with copyrighted songs or video games, the college authorities find themselves in the unlikely and uncomfortable position of enforcing the intellectual property rights of outside corporations against their own...

Microsoft v. AT&T Argued in the High Court

Posted on March 02, 2007
We've been following the patent litigation in Microsoft Corp. v. AT T Corp., now in the U.S. Supreme Court. The relevant statute, 35 U.S.C. § 271(f), forbids ?supplying? a ?component? of a patented invention with intent that it be ?combined? with other components overseas in a way that would be illegal if done domestically...

DISTRICT COURT PATENT PILOT PROGRAM

Posted on February 14, 2007
We reported in this space last September on a bill establishing a pilot program aimed at better treatment of patent cases in district courts. That bill, H.R. 34, was introduced by Reps. Darrell Issa (R.Cal.) and Adam Schiff (D.Cal.). It was the same bill that passed the House last year as H...

Federal Courts Can't Use Supplemental Jurisdiction To Hear Claims Under Foreign Patents

Posted on February 06, 2007
Dr. Jan Voda held American and foreign patents on his angioplasty catheter technology. He sued Cordis (a subsidiary of Johnson Johnson) in the Western District of Oklahoma for infringing his U.S. patent, and then tried to use the supplemental jurisdiction statute (28 U...

California Business Litigation Update Now Available

Posted on January 19, 2007
The Continuing Education of the Bar recently released its December 2006 update to its fundamental business litigation guide, California Business Litigation, and Farella Braun + Martel's intellectual property partner Nan E. Joesten authored the 2006 update of the treatise's chapter on patents...

MedImmune Prevails At Supreme Court

Posted on January 10, 2007
Happy New Year from the IP Blawg. The U.S. Supreme Court got 2007 off to a roaring start with its eagerly anticipated decision in the case of MedImmune, Inc. v. Genentech, Inc. In an 8-1 ruling interpreting the ?case or controversy? clause of Article III of the Constitution, the Court held that a patent licensee need not cease paying the...

Searching for Patents on Google

Posted on December 20, 2006
Patent searching has come to Google with Google?s introduction of the beta version of Google Patent Search. The user enters a keyword (or an inventor?s name or patent number) in the familiar Google search box and can refine the search as needed. It?s relatively quick, For example, entering goggles retrieved 865 patents; limiting it to ski goggles reduced the number...

Federal Circuit Affirms that Northern Districts Patent Local Rules Have Strong Bite

Posted on December 13, 2006
In two recent decisions, the Federal Circuit has affirmed that patent holders must lay all their cards on the table in their infringement contentions served pursuant to the Northern District's Patent Local Rules, and that if they do not do so or otherwise fail to comply with the requirements of the Patent Local Rules, their infringement claims may be summarily...

EUROPEAN PATENT COURT DELAYED AGAIN

Posted on December 06, 2006
The long-proposed European Patent Litigation Agreement (EPLA) and associated European Patent Court have been having a bumpy road toward actual adoption as a single unified way and place to litigate European patents, which must now be enforced separately in each country...

Teleflex v. KSR: The TSM Obviousness Test Argued At The Supreme Court ? Is It Really ?Gobbledygook??

Posted on November 30, 2006
One of the highly-anticipated oral arguments of the patent bar season took place this week when the Supreme Court considered the test for obviousness in Teleflex Inc. v. KSR International. Although the U.S. District Court in Detroit granted summary judgment of invalidity, see Teleflex Inc v...

Comments on the Northern District's Local Patent Rules?

Posted on November 28, 2006
Happy Thanksgiving to our readers, and here's a post-holiday treat for aficionados of patent litigation procedures. Yesterday, the Patent Local Rules Advisory Subcommittee to the United States District Court for the Northern District of California put out a call for public comment concerning the Patent Local Rules and any possible amendments to those rules...

More On Metadata

Posted on November 15, 2006
The IP Blawg reported last June on an ethics case out of New York where lawyers were held to have a reasonable duty of care to prevent the transmission of metadata ? hidden electronic data that is generated in the course of creating and editing a document ? that might disclose a client confidence...

Corporations Look To Outside Counsel To Handle IP Problems

Posted on October 17, 2006
According to a recent study of senior in-house counsel in 311 American corporations and another 111 around the world, intellectual property issues are among their top legal worries. IP and patent issues were among the main five concerns of 24% of the counsel responding to the survey, almost double the 13% reported last year...

Google Print Library Project Continues

Posted on October 13, 2006
We?ve posted from time to time on the dispute between various publishers, authors and Google over Google?s ambitious Print Library project. After Google initially suspended the scanning of materials to give publishers an opportunity to opt-out, the project resumed last November, and Google just announced that the University of Wisconsin-Madison was joining the program...

New Rules For eDiscovery

Posted on September 28, 2006
Only two months and a few days until the e-discovery amendments (the "Amendments") to the Federal Rules of Civil Procedure take effect. For those not aware, on December 1, 2006 the Federal Rules will be amended to address a variety of topics related to the discovery of electronically stored information...

The Latest On Patent Reform In Congress

Posted on September 20, 2006
Our loyal readers know that the IP Blawg has been following proposed patent legislation all year, including the efforts of Rep. Darrell Issa to establish a pilot program to create a specialized patent rocket docket. A bill just reported out of a House committee would establish a pilot program aimed at increasing expertise among federal judges hearing patent cases...

FBM To Host IP Roundtable

Posted on September 15, 2006
As the Blawg has reported over the past 18 months, the U.S. Supreme Court has demonstrated an active interest in patent cases. Continuing that trend, it has already agreed to hear two cases involving patent issues in the upcoming term that starts in October...

Professor Kimberly Moore Unanimously Confirmed To Federal Circuit

Posted on September 07, 2006
In a 92-0 vote, Kimberly Moore was confirmed yesterday as a United States Circuit Judge for the Federal Circuit ? filling the vacancy left by the retirement of Judge Raymond C. Clevenger, III. Professor Moore, an intellectual property law professor at the George Mason University School of Law, is currently the editor-in-chief of the Federal Circuit Bar Journal, and is...

The Battle Between TiVo and Echostar Picks Up The Pace

Posted on August 21, 2006
The action is fast and furious in the patent dispute between digital video recording developer TiVo and satellite communications giant Echostar Communications. First, last week the U.S. District Court for the Eastern District of Texas issued a permanent injunction prohibiting Echostar from ?making, using, offering to sell or selling? products that permit the recording of television programs by the method...

"Anonymous Internet Mischief" at the ABA Meeting

Posted on August 16, 2006
After taking some time off around the American Bar Association's annual meeting in Hawaii, the IP Blawg is back! While it can be difficult to concentrate on CLE courses and committee meetings with the lure of the beach in the background, the IP Blawg is proud to say it was in attendance when the Intellectual Property Litigation Committee held its...

FTC Rebuffs Rambus

Posted on August 04, 2006
The battle between computer memory developer Rambus and the Federal Trade Commission over Rambus' participation in the setting of standards for dynamic random access memory ("DRAM") technology took a sudden turn this week when a unanimous panel of the FTC reversed a decision rendered two years ago by an administrative law judge that Rambus did not unlawfully monopolize the market...

Can A University?s Color Scheme Be Trademarked?

Posted on August 03, 2006
A federal judge sitting in the Eastern District of Louisiana answered this question ?yes,? granting summary judgment of intentional trademark infringement for plaintiffs Louisiana State University, Ohio State University, Oklahoma University, and the University of Southern California against defendant Smack Apparel...

Congress Tries To Move Ahead On Patent Reform - Again

Posted on July 28, 2006
As we have reported in the past, Congress has been taking up patent reform legislation in fits and starts. Although committees in both the House and Senate have considered a number of bills that would make changes in the patent laws that range from inconsequential to potentially radical, nothing yet has made it out of committee...

Int'l Patent Litigation - Winning Strategies

Posted on July 26, 2006
Farella Braun + Martel is co-sponsoring a two-day seminar in Taiwan on International Patent Litigation--Winning Strategies and Approaches. This seminar, organized by the Taiwan Intellectual Property Academy, will cover issues relating to international and Taiwanese patent regimes...

YouTube Following In Grokster?s Footsteps?

Posted on July 26, 2006
The IP Blawg is following a recent copyright complaint filed in the Northern District of California that may help clarify the contours of on-line file sharing liability after the Supreme Court?s decision in MGM v. Grokster. Recall that last June the Supreme Court ruled in Grokster that distributors of peer-to-peer file-swapping software could be held liable for the actions of...

Apple Decides Not To Challenge Ruling Protecting Bloggers? Sources

Posted on July 17, 2006
We have learned that Apple Computer, Inc. will apparently not challenge the noteworthy California appellate decision rejecting its efforts to use the subpoena process to identify the source of leaked trade secret information about its upcoming products...

Trademark Application Does Not Taste Quite Right

Posted on July 13, 2006
As new products enter the marketplace, their developers are always on the lookout for ways to distinguish these products from existing or anticipated competing products. In the case of pharmaceuticals, one way to make a product stand out from the others in a highly competitive field is to give the product a unique, pleasant taste...

Patent Teamwork May Save Millions

Posted on July 07, 2006
Complex patent litigation is a challenge for even the most sophisticated companies. Patent cases tend to disrupt a company's business, occupy a disproportionate amount of management time and cost millions of dollars - win or lose. By working as a team, company executives and outside counsel can more effectively manage these cases to minimize disruption, risk and cost...

Fallout From eBay v. MercExchange - Court Denies Injunction

Posted on July 07, 2006
In May we reported on the Supreme Court?s decision in eBay v. MercExchange, in which the Court repudiated the long-held rule that a patent owner was entitled to a presumption of irreparable harm upon a finding of infringement of its patent. Under this rule, critics complained that a permanent injunction had become almost automatic for successful plaintiffs, which put an...

Federal Circuit Holds That Inequitable Conduct Defense Properly Resolved By Court, Not Jury

Posted on June 30, 2006
A divided panel of the Federal Circuit held earlier this week in Agfa Corp. v. Creo Products Inc. that the issue of whether plaintiff committed inequitable conduct in failing to disclose material prior art during prosecution of its patents, including defendants' own prior art system, was properly resolved by the court, rather than a jury...

Does Selling a Trademark as a Keyword for Advertising Infringe Trademark Rights?

Posted on June 29, 2006
Well, the French seem to think so. On Wednesday, a French court of appeals upheld a lower court ruling finding Google liable for trademark infringement for selling Louis Vuitton?s trademarks to competitors as keywords for advertising. Previously, a French court had also ordered Google to stop selling the trademarks of Le Meridian Hotels and Resorts as keywords for advertising...

Supreme Court Steps On The Gas To Review Obviousness

Posted on June 28, 2006
In a case with huge implications for both patent prosecutors and litigators, the Supreme Court has granted KSR?s petition for certiorari and is prepared to address basic questions of patentability that have not been considered by the Court since 1966, before the Federal Circuit was even formed...

The Supreme Court Punts On Patentability

Posted on June 23, 2006
In a decision that has many court watchers scratching their heads, the U.S. Supreme Court yesterday ?dismissed as improvidently granted? the writ of certiorari in Laboratory Corporation of America v. Metabolite Laboratories, Inc. The one-sentence per curiam ruling put an end to a case that experienced several strange twists on its way to and from the Supreme Court...

Congress Considers Clampdown On Online Gambling

Posted on June 23, 2006
As we have previously reported, there are differing views over whether the federal Wire Act of 1961 bars internet gambling, sometimes leading to tension between federal officials and state governments interested in permitting and regulating such conduct...

FBM & Stanford University Host IP Event

Posted on June 22, 2006
UNDERSTANDING THE SUPREME COURT?S RECENT PATENT DECISIONS How Those Decisions May Impact Technology CompaniesCo-hosted byFarella Braun + Martel LLP Stanford Law School'sProgram in Law, Science & Technology In the last two or three years, the U.S. Supreme Court has taken an unprecedented interest in patent cases...

Trademark Office Denies "Disparaging" Mark

Posted on June 19, 2006
As we have reported in the past, one function of the Trademark Office in reviewing applications for trademarks is to deny registration to marks that it deems consist of "immoral, deceptive, or scandalous matter" in accordance with section 2(a) of the Lanham Act...

Form Letter And Follow Up Mere Offer Of License In Declaratory Judgment Action

Posted on June 13, 2006
Sending a form letter and engaging in follow up licensing discussions do not satisfy the "reasonable apprehension of litigation" test as required to support jurisdiction under the Declaratory Judgment Act, 28 U.S.C. Section 2201(a). So held Judge Martin Jenkins of the Northern District of California in a May 31, 2006 Order in Shoom, Inc...

Merck vs. Integra - Back In The Federal Circuit

Posted on June 12, 2006
We reported last summer on the Supreme Court?s decision in Merck KgaA vs. Integra Lifesciences I, Ltd., in which the Court held that the exemption to infringement under 35 U.S.C. section 271(e)(1) should be given a broader application than that adopted by the Court of Appeals for the Federal Circuit...

Copyright Obstacles Loom For Cablevision?s DVR Technology

Posted on June 11, 2006
Keep your eyes on the recently-filed Cablevision copyright litigation pitting several movie studios and the three big television networks against the cable television provider?s efforts to roll out new digital video recorder technology. The case looks like it could address key questions about the legal limitations upon emerging technologies designed to let consumers time-shift and space-shift digital content...

Court Draws Distinction Between "Customer List" and "Contact List" In Trade Secrets Litigation

Posted on June 06, 2006
In a May 31, 2006 decision, Judge Pratter of the Eastern District of Pennsylvania granted limited a preliminary injunction in favor of a pharmaceutical services company (Fisher Bioservices) against its former sales representative (Haas) who had started working for a competitor in Fisher Bioservices, Inc...

Will The Supreme Court Fundamentally Change Patent Law Again?

Posted on June 05, 2006
In keeping with its recent trend of taking a fresh look at some of the fundamental principles of patent law, the U.S. Supreme Court is considering whether to accept certiorari in a case that would permit it to consider the standards under which courts evaluate the validity of patents...

California Recognizes Privacy And Shield Law Obstacles To Unmasking Source of Leaks In Trade Secret Dispute

Posted on June 01, 2006
In a noteworthy case pitting a trade secret plaintiff?s efforts to identify the source of the leaked information against bloggers? rights as journalists, a California appeals court has rejected Apple Computer, Inc.?s efforts to subpoena e-mail received by the publishers of online news magazines...

Illicit Copyright Infringement Resolution ? Senate Resolution 488

Posted on May 31, 2006
Did you see where the United States Senate unanimously passed by consent last week a resolution ?expressing the sense of Congress that institutions of higher education should adopt policies and educational programs on their campuses to help deter and eliminate illicit copyright?? Senate Resolution 488 has no legal authority, but it suggests the strength of the entertainment industry in keeping...

More Skirmishing On Patent Reform

Posted on May 26, 2006
The problem facing Congress as it attempts to craft patent reform legislation became starkly apparent again in hearings held this week by the Senate Judiciary Committee?s Sub-Committee on Intellectual Property. As we have reported on a number of occasions, Congress, prodded in general by the technology community, has been considering several potentially substantial reforms to the patent laws, but thus...

Second Circuit Upholds Copyright Fair Use Defense For Grateful Dead Biography

Posted on May 25, 2006
In a ruling giving heart to fair use advocates, the Second Circuit recently found that the defendant?s unauthorized use of entire images of seven Grateful Dead concert posters and tickets within ?Illustrated Trip,? a 480-page biography of the Dead, constituted fair use, and not copyright infringement...

FTC v. Schering-Plough: DOJ Opposes Cert

Posted on May 19, 2006
We told you back in January about the possible involvement of the Supreme Court in the question of whether Schering-Plough?s authorized generics agreement violates unfair competition laws. The Supreme Court took the somewhat unusual step of asking the Solicitor General?s office to weigh in on the Federal Trade Commission?s antitrust case against Schering-Plough, which argued that patent infringement settlements should...

eBay v. MercExchange: Traditional Test For Equitable Relief Applies

Posted on May 15, 2006
In a unanimous landmark opinion, the Supreme Court vacated the Federal Circuit this morning and established that the traditional four-factor test for permanent injunctive relief applies when determining the remedy for patent infringement. eBay v. MercExchange, 547 U...

Court Gives Beatles No "Help" In Apple vs. Apple

Posted on May 09, 2006
A court in England decided this week to ?Let it Be,? rejecting a suit by Apple Corps Ltd. against Apple Computer Inc. claiming that Apple Computer?s iPod product and iTunes service breach a settlement agreement entered into by the parties 15 years ago to resolve prior trademark litigation, thereby infringing Apple Corp's trademark...

Maker of Blackberry Devices Facing New Patent Infringement Challenge

Posted on May 03, 2006
Research in Motion, the company that manufactures the popular Blackberry wireless email device, has once again found itself being hauled into court in connection with an alleged patent infringement violation. Only weeks after its well-publicized $612...

Patent Reform Is Still Alive And Moving - Sort Of

Posted on May 01, 2006
Last fall, we reported on Congress? ambitious efforts to reform the U.S. patent system with the introduction of several versions of patent reform legislation. At that time, the proposed legislation contained several measures that put prominent groups ? in particular the biotech industry and the information technology industry ? at odds with one another...

Senate Ponders New Rules For Satellite Music Services

Posted on April 28, 2006
A new and controversial bill introduced in the U.S. Senate would require satellite radio companies to pay fair market value for the performance of digital music and would require them to use readily available technical means to prevent music copying. S...

Court Slaps FDA's Wrist

Posted on April 18, 2006
In a rebuke to the FDA, the United States District Court for the District of Columbia last week ruled that the FDA?s failure to act on a New Drug Application (?NDA?) filed by Sandoz, Inc. within 180 days violated a Congressional mandate. The court entered summary judgment in favor of Sandoz and ordered the FDA ?to take appropriate action? to...

Blogging About BIO

Posted on April 14, 2006
BIO 2006 met in Chicago earlier this week, and the Blawg was there. BIO, which stands for Biotechnology Industry Organization, is a trade and advocacy group for the biotech and pharmaceutical industries. Its annual BIO conference is its flagship event, and this year almost 20,000 people affiliated with the industry descended on Chicago for three days of meetings, networking and...

ABA IP Roundtable: Litigating Software Patents

Posted on April 12, 2006
Would you like to learn more about litigating software patents? Do you enjoy discussing legal issues with a wide cross-section of individuals interested in the same topic? If so, what are you doing for lunch next Wednesday? Farella Braun + Martel is pleased to be a regular host of the Intellectual Property Roundtable Series sponsored by the American Bar Association's...

Expanding Joint Patent Infringement?

Posted on April 12, 2006
Potentially dangerous precedent can arise from passing comments casually made by appellate courts. This is what seems to have happened in case decided last week by the Federal Circuit, On Demand Machine v. Ingram and Amazon.com (No. 05?1074)(Fed. Cir...

Patent Reform, PDQ!

Posted on April 09, 2006
With the Supreme Court's present interest in patent law , and while the automatic entering of a permanent injunction following infringement is still waiting for a decision in eBay v. MercExchange, it comes as no surprise that yet another attempt at patent reform has surfaced in Congress...

Nyet To Russia On Stoli

Posted on April 05, 2006
What could be more Russian than Stoli vodka? Apparently, quite a few things. Concluding an unusual dispute over the ?Stolichnaya? trademark, a U.S. District Judge in New York ruled that the trademark is the possession not of a company owned by the government of Russia, but of several distributors of Stoli vodka...

Keyword Disputes Cause Courts To Search For Answers

Posted on April 05, 2006
An issue that has been building on the horizon for some time ? the use of competitors? names as keywords to trigger sponsored links on search engines ? is starting to percolate through the courts, with conflicting results. As more cases reach trial or adjudication, we?re eager to see whether courts will entertain novel theories of trademark infringement based on...

We Can't Work It Out

Posted on April 03, 2006
The trademark dispute between Apple Corps Ltd., the UK company that was the recording label for the Beatles, and Apple Computer Inc., developer of the iPod digital music players and iTunes music store, took center stage in a London courtroom last week...

Moving Your TiVo Offsite - Would Copying Video Still Fair Use?

Posted on March 31, 2006
Some of you may remember the VCR, a then-revolutionary predecessor to TiVo that permitted people to record television shows in their homes, even (gasp) when not at home. In the early 1980s, the entertainment industry said VCRs would lead to the downfall of television as we knew it because viewers would be able to do such things as fast-forward through...

Permanent Injunctions For Infringers . . .

Posted on March 29, 2006
We've been following developments in the blockbuster patent case of eBay v. MercExchange, and today brought the long-await oral argument at the Supreme Court. Court watchers conclude that eBay has an uphill battle in convincing the high court that a permanent injunction should not issue after infringement is found...

Is It Time To Scrap The DMCA?

Posted on March 24, 2006
It has been almost eight years since the Digital Millennium Copyright Act (?DMCA?) became law, and throughout its relatively short life, the use of the DMCA has sparked controversy between digital content providers who are trying to protect their works from ever-easier copying and those who advocate greater access to information...

Never Mind, Metabolite?

Posted on March 23, 2006
Some of our regular IP Blawgers have been busy in trial, and you might have noticed that we unfortunately haven?t been posting as often as normal. Even so, we?re still keeping a close eye on the hot patent cases sitting on the Supreme Court?s docket this term...

Let Freedom Fries Ring

Posted on March 16, 2006
What started as a protest against France for its refusal to participate in the invasion of Iraq has independent commercial value, at least according to one entrepreneurial company. Sensing an opportunity to capitalize on a burst of patriotic fever in the U...

The Stage Is Set For eBay v. MercExhchange

Posted on March 14, 2006
We told you last December that the Supreme Court granted cert in the matter of eBay v. MercExchange, where it is expected to address the question of when an injunction should issue against a patent infringer. Oral argument is set for March 29, and the respondents? briefs were due last Friday, March 10...

The IP Blawg Goes to UC Berkeley?s Stem Cell Initiative Conference

Posted on March 10, 2006
As our loyal readers know, the IP Blawg is keenly interested in the progress of California?s Institute for Regenerative Medicine (?CIRM??). While the trial court considering the validity of Proposition 71 received closing arguments this week, a diverse group gathered at Berkeley?s Boalt Hall School of Law last week for a conference on California?s Stem Cell Initiative to learn about...

So, What Are Judges Thinking?

Posted on March 09, 2006
As part of its tireless attempt to stay on top of what is going on in the IP world, the Blawg recently attended a round table discussion on current patent issues presented by several judges from the United States District Court for the Northern District of California...

Trends In Intellectual Asset & IP Damages Litigation

Posted on March 08, 2006
The IP Blawg is pleased to welcome today's guest blogger, IP damages expert Alan Ratliff, with a summary of his article on developments in IP litigation damages. Historically, patent litigation is recognized for yielding more frequent and sizeable damage awards when compared to other forms of IP litigation, although there have certainly been some large copyright, trade secret and breach...

More Breaking News: BlackBerry Disputed Settled for $612.5M

Posted on March 03, 2006
It's been a busy week for hot-off-the-presses IP happenings! We've been diligent about keeping you posted on the BlackBerry litigation, and here's the latest: in news heard with relief by those addicted to their "crackberries," BlackBerry maker Research in Motion and NTP announced a settlement today of their long-simmering patent dispute...

Supreme Court Holds Patent Does Not Create Market Power

Posted on March 01, 2006
The Blawg report today covers breaking news: The U.S. Supreme Court?s decision ? announced a few hours ago ? holding that ownership of a patent does not automatically confer market power on the owner when an illegal tying arrangement is alleged. According to the unanimous ruling (with Justice Alito not participating) in Illinois Tool Works Inc...

Is Your Website Disability Accessible?

Posted on February 27, 2006
In a potentially ground-breaking case regarding the obligations of on-line businesses to make their sites accessible to persons with disabilities, the National Federation of the Blind filed a class action in state court in Alameda County, California, against Target Corporation on February 7, 2006...

Electronic Discovery: The IP Blawg Goes to the ABA Corporate Counsel Meeting

Posted on February 23, 2006
In case you weren?t in San Diego last week, you might have missed the meeting of the American Bar Association?s Corporate Counsel Committee of the Section of Litigation. But the IP Blawg was there ? and took advantage of several CLE programs. Many of our readers are undoubtedly interested in the proposed changes to the Federal Rules of Civil Procedure...

The Supreme Court Takes the Plunge On A Patent Case - Again

Posted on February 21, 2006
It was not so long ago that the U.S. Supreme Court would take on a patent case every two or three years. Perhaps in recognition of the growing importance of patents and in response to the much greater number of patent cases being filed, the Supreme Court will likely take on a more prominent role in shaping the patent laws...

PTO Tries To Clear Backlog

Posted on February 17, 2006
As has been well documented, the backlog of pending patent applications at the USPTO is increasing. In some areas of technology patent Applicants have received estimates that it will take over 6 years for the USPTO to issue a first office action for pending patent application...

Federal Circuit?s Candor In Addressing Materiality Standard For Inequitable Conduct

Posted on February 15, 2006
After 15 years of admittedly avoiding the issue, the Federal Circuit last week addressed the question of the materiality standard for a misstatement or omission to the PTO when prosecuting a patent application. At issue was whether the old standard ? whether a reasonable examiner would have considered such prior art important in deciding to allow the application ? was...

AT&T Flexes MPEG Patent Muscles

Posted on February 14, 2006
According to reports, communications giant AT&T has advised several high tech companies, including Apple Computer, CyberLink, DivX and InterVideo, that their products infringe patents owned by AT&T that cover key video compression technology. The patents relate to MPEG-4 technology, which consists of various audio and video coding standards...

Are Specialized ??Rocket Docket? Patent Judges The Way To Go?

Posted on February 09, 2006
Congressman Darrell Issa, (R-Ca.) has announced his intention to introduce a bill establishing a five-year pilot program creating specialized patent judges within two district courts, creating in effect a ?rocket docket? patent court within the structure of existing district courts...

Google Reveals A Cache Of Defenses To Copyright Claims

Posted on February 07, 2006
In an intriguing ruling on the application of copyright principles to internet search engines, a district court in Nevada has ruled that Google is not liable for copyright infringement for allowing internet users to access copies of works stored by Google in an online repository...

PTO?s ?Non-Final? Rejections Could Have Permanent Implications for the BlackBerry Lawsuit

Posted on February 02, 2006
We?ve been keeping you posted on the latest in the BlackBerry/NTP patent infringement litigation. Relevant to this litigation is the U.S. Patent and Trademark Office?s recent issuance of a ?non-final? rejection of a fifth patent at issue in NTP?s legal battles against RIM...

Whither The RIM Litigation

Posted on January 31, 2006
The seemingly never-ending high stakes litigation between Research-In-Motion (?RIM?), the Canadian maker of BlackBerry devices, and NTP rolls on. To briefly recap: NTP obtained a jury verdict in its favor that RIM infringes several of NTP?s patents that claim a system apparently used by RIM as part of its wireless Internet service for BlackBerries...

AIPLA?s New Model Jury Instructions For Patent Cases

Posted on January 31, 2006
It?s a busy week here at the full-service IP Blawg, so today?s post merely brings you a useful link to the newly revised Model Patent Jury Instructions, courtesy of the American Intellectual Property Law Association. While no substitute for independent research based on the facts of any particular case, they?re certainly a useful starting point...

Senate Steps In Where Angels Fear to Tread?

Posted on January 27, 2006
Concern over the growing threat of readily accessible digital television content has Congress poised to jump into the fray with legislation to catch up to the rapidly developing technology. The advent of digital television recorders has made it much easier for consumers to record their favorite content in a manner that lends itself to ready re-distribution...

What?s Wrong With Using Copyright to Protect Computer Software? Nothing.

Posted on January 26, 2006
Should copyright laws apply to protect computer software? Since the 1960s, the answer is, yes. And in a January 6, 2006, ruling by United States District Court Judge, Marilyn Patel of the Northern District of California, in Aharonian v. Ashcroft, the answer remains, yes...

Are we headed toward a BlackBerry-less future?

Posted on January 26, 2006
We've been keeping you posted on the ongoing patent infringement dispute between Blackberry and NTP. On Monday, the Supreme Court rejected BlackBerry maker Research in Motion Ltd.?s petition for a rehearing of its patent infringement case. With this rejection, RIM is facing the possible court-ordered shutdown of most of its BlackBerry email devices...

Government To Get Google?s Trade Secrets?

Posted on January 21, 2006
Internet search company Google has refused to hand over potentially millions of search engine records in response to a government subpoena seeking the information as justification for its fight against online child pornographers. Highlighting the all-important perception of internet privacy, the significance of Google?s search engine trade secrets and the value of online databases to the government, Google is now...

Suits Fail To Stem Illegal Downloads

Posted on January 18, 2006
Amid reports of steadily declining CD sales, the music industry has adopted the controversial strategy of suing customers who it contends illegally download music files for copyright infringement. The industry has also attempted to shut down the web sites of the providers of downloadable files, claiming a significant victory with the Supreme Court?s Grokster ruling that providers can be liable...

Dark-Roasted Charbucks Grinds Starbucks Trademark Claims To A Halt

Posted on January 13, 2006
A New Hampshire coffee roaster has prevailed in a trademark infringement case brought by Starbucks, where Starbucks alleged that the Black Bear Micro Roastery?s ?Charbucks? dark coffee constituted trademark infringement, unfair competition and dilution of the Starbucks trademark...

More on Geographical Indications: Some Cheese With Your Wine?

Posted on January 12, 2006
As previously reported, the United States and the European Union signed an interim agreement regarding the acceptance of each other's wine making practices as well as the recognition of each other's geographical indications for wine. As a follow-up to that interim agreement, it appears the EU has now agreed to simplify its registration procedures for foreign agricultural products after a...

FTC v. Schering-Plough: Will The Supreme Court Consider Antitrust Issues In ?Authorized Generics Agreements??

Posted on January 11, 2006
Will the Supreme Court hear the Federal Trade Commission?s antitrust case brought against Schering Plough, claiming that the drug company?s authorized generics agreement violates unfair competition laws? ?Authorized generic? agreements are licenses from a brand drug maker to a generic firm, allowing the maker of an authorized equivalent drug to market that drug during another generic firm?s 180-day marketing exclusivity...

Registration of LAWYERS.COM Trademark Denied

Posted on January 10, 2006
As evidence that the term ?lawyers? is generic, at least from a trademark perspective, the Trademark Trial and Appeal Board (?TTAB?) recently affirmed the Trademark Office?s refusal to register the mark LAWYERS.COM on the ground that the mark is generic and thus not eligible for registration...

Sony Seeks To Settle

Posted on January 09, 2006
Following up on our November 15 post about Sony?s public relations and legal woes connected to the ?root kit? software built into certain of its music CDs, we?ve learned that Sony is seeking to settle one of the class action lawsuits brought against it...