Intellectual Property

The newsletter of the ISBA’s Section on Intellectual Property Law

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2012 Articles

Beware: Damages for pursuing baseless claim construction By Brian R. Michalek March 2012 The Court of Appeals for the Federal Circuit affirmed a District Court's award of $4.6 million in attorney's fees and expert fees based on Plaintiff MarcTec's frivolous litigation. The Federal Circuit found MarcTec's assertion of infringement baseless given its untenable initial claim construction position and untestable expert theory. MarcTec's pursuit of infringement, even after the District Court's unfavorable claim construction order, further reflected its bad faith and ultimately resulted in the Court's affirmation of attorney and expert fees.
Cloze & Flesch vs. Jarndyce: In re comprehension & readability vs. legalese By Daniel Kegan December 2012 How readable is your brief, how comprehensible? Cloze and Flesch tests give objective measures.
Contract litigation expense insurance By Kenneth T. Teglia September 2012 Contract Litigation Insurance (CLI) allows individuals and businesses to insure a significant portion of the financial risk —having to pay the winners’ attorneys’ fees—that arises concomitantly with the initiation of contract dispute litigation. Plaintiffs and defendants can apply, even after the complaint is filed. Simpler than most other insurance, there is no complicated claims adjustment or issues interpreting coverage or exclusionary language—the court's official ruling activates policy coverage.
The debate is on: Is the Federal Judicial Center’s patent tutorial video too pro-plaintiff? By John D. Gilleland March 2012 Mock jury research at TrialGraphix qualitatively measured jurors’ top impressions after watching the Federal Jury Center’s patent tutorial video concludes that the video strongly improves juror’s understanding of patents, increases their awareness that patents can be invalidated, may have a slight pro-plaintiff/patentee bias, but significantly also educates jurors on key defense principles.  
Did Bosch v. Pylon change the landscape for permanent injunctions? By Natasha White June 2012 Although the federal Circuit's Bosch v. Pylon decision eliminated the presumption of irreparable harm, it also affirmed the lack of a presumption against irreparable harm and weaved the exclusive right of a patentee into the injunctive relief analysis factors. Practical effects are discussed.
An examination of software patents: Under Secretary of Commerce for IP & Director of the USPTO David Kappos’ November 20, 2012 
Center for American Progress 
keynote address By David Kappos December 2012 PTO Director David Kappos discusses how intellectual property (IP) is a key driver of economic growth, exports, and job creation, the global currency for creating value. Software patents, like all patents, are a form of innovation currency and ecosystem enablers. Those who invest in breakthrough innovation deserve respect for their IP. Usually key players agree to pro-consumer solutions via licenses or joint development. Patents are enshrined in the Constitution, one of the few, if not only, clauses giving Congress the right to create personal property.
Fifty shades of counsel: Fan fiction in 2012 By Shannon A.R. Bond December 2012 Fan fiction—sincere flattery or copyright infringement. Stephanie Meyer's Master of the Universe, E.L. James, Fifty Shades of Grey, and avoiding trouble.
Hyperlinks not defamatory according to Supreme Court of Canada By Emir Aly Crowne & Arif A. Mahmood March 2012 The Supreme Court of Canada held hyperlinks to defamatory material is not “publication” of the material, but a neutral reference to the material’s existence without communicating or exerting control over the destination content, like a footnote. Crookes v. Newton, 2011 SCC 47. Freedom of expression and the information linking function of the Internet weighed against the application of a traditional publication rule.
Intellectual Improbabilities™ By Daniel Kegan December 2012 Eclectic snippets from recent events. PTO warns of insolicitous solicitations; INTA launches teen ed UnrealCampaign.com; ND CA issues ESI Guidelines; FTC recommends truth telling; Academia IP; Ars Gratia Artis; EU; etc.
Intellectual improbabilities™ By Daniel Kegan September 2012 Short summaries and comments on recent IP cases, Government requests for comment, and other notices.
Intellectual improbabilities™ By Daniel Kegan June 2012 An eclectic gathering of recent intellectual property news and cases.
LLC members in online store Venture Bound by Partnership Fiduciary Duties—Health and Body Store v. Justbrand Limited By Venkat Balasubramani June 2012 Another group of people attempt a Web venture with zero documentation and end up in court. One of the many perennial themes of this blog is that people must spell out the terms of any Web venture in advance. This includes everything from a joint blogging arrangement to a jointly operated online store or a simple Web development agreement.
Presentation on the proposed amendments to the EU Data Privacy Directive By Eric Goldman September 2012 The CONSENT project is a multi-year, multi-million dollar research project, funded by the European Union, to conduct empirical research on consumer privacy issues in Europe. Ultimately, the research findings should feed into the EU's evaluation of proposed amendments to the 1995 EU Data Privacy Directive. Eric Goldman summarizes and comments on the project participants' meeting in Romania.
PTO notes By Daniel Kegan March 2012 News updates regarding the U.S. Patent & Trademark Office.
Recap of the Fourth Trademark Scholars Roundtable at DePaul University By Eric Goldman September 2012 The fourth Trademark scholars Roundtable discussed trademark boundaries at its DePaul University meeting: how trademark law abuts other legal doctrines such as copyright, patent, publicity, and legally unregulated areas. Summary of discussion and Eric Goldman's neo-classical economical perspective.
T-T-A-B By John L. Welch December 2012 TTAB writes VILLAGE PEOPLE (singers of famed Y-M-C-A aerobic song) not generic; John Welch sings T-T-A-B.
Tea Partiers wage war against each other over a Google Groups account—Kremer v. Tea Party Patriots By Eric Goldman June 2012 It's crucial for newly formed organizations to definitively address the ownership of trademarks and other virtual assets from day one, when everyone still loves each other. When the ownership issue comes up later, it's usually because the principals are locked in a death-match and are beyond the point of reaching sensible compromises.
Trademark scam warning By Daniel Kegan March 2012 Be aware that private companies not associated with the United States Patent and Trademark Office often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations.
The truth, nothing but the truth—And the threat to the First Amendment By Steven Helle December 2012 Plaintiffs plead for regulation of truthful speech plucked from the Internet's powerful potential for privacy invasion. Nieman v. Versuslaw; Martin v. Hearst Corp.