Section Newsletters

Articles on Intellectual Property

The new rule for privilege in PTAB trials By Rick Neifeld Intellectual Property, November 2017 The Patent Trial and Appeal Board issued a new rule for Privilege for Patent Practitioners, effective December 12, 2017. Here’s the rule and a synthesis of PTO comments, and changes from the proposed rule.
Pirate Joe sails away By Margo Lynn Hablutzel Intellectual Property, November 2017 Pirate Joe’s buys lots of goods at retail from Trader Joe’s in Bellingham, WA and resells them at Pirate Joe's Vancouver, Canada store. Trader Joe’s stores are located only in the USA. Trader Joe’s Lanham Act complaint claimed reputation, health, and safety concerns because perishable items were subject to varying temperatures, creating a health risk. Ninth Circuit, following precedent that the Lanham Act’s “use in commerce” requirement is separate from the jurisdictional grant, as they appear in different sections of the Act, and thus the federal courts unquestionably have subject matter jurisdiction over Lanham Act cases, decided only “some effect” on USA commerce was required for jurisdiction, and remanded to address the case merits. Then the parties settled.
Mohawk sovereign immunity tactic vs. inter party review By Daniel Kegan Intellectual Property, September 2017 Can an asset transfer to a sovereign, here an Native American Indian tribe, in the midst of an Inter Party Review (IPR) deprive the PTO of jurisdiction? Allergan Plc transfer to the Saint Regis Mohawk Tribe for billion-dollar annual sales drug Restasis.
A ruse by any other name: Normalizing trademark infringement by domain name sabotage By Phillip R. Van Ness Intellectual Property, September 2017 Increasingly, Internet domain names orchestrate trademark collision and confusion. Law firms O’Keefe Lyons & Hynes LLC v. O’Keefe Law Firm Ltd. Discovered the disharmony. The elaborate dispute resolution process adopted by ICANN might sometimes be a sham, losing trademarks their vitality.
Sandoz v. Amgen: The Supreme Court makes its first decision on biosimilars By Michael J. Weil & Steven L. Baron Intellectual Property, September 2017 In its first major biosimilar case, Sandoz v. Amgen, the US Supreme Court held that under federal law the BPCIA's provision requiring applicant (Sandoz) to provide sponsor (Amgen) with its application and manufacturing information could not be enforced by injunction; that applicant’s failure to provide the information was a question of state law; and that an applicant (Sandoz) is not required to wait until the FDA licenses its biosimilar to provide notice of commercial marketing to the sponsor (Amgen). The decision eliminates at least 180 days of exclusivity from brand name biologics.
Simple IP evaluations By Daniel Kegan Intellectual Property, September 2017 Perspectives on evaluating intellectual property, prompted by Internet elist queries: Breach of non-compete damages, Internet domain and associated trademarks, and Seeking accountant with IP experience.
Taking back (the Eastern District of) Texas: Judge Gilstrap broadens the definition of venue in patent cases in Raytheon Co. v. Cray Inc. By Kenneth Matuszewski & Isaac Rabicoff Intellectual Property, September 2017 The Supreme Court limited venue in patent cases to where the defendant is incorporated or commits acts of infringement and has a regular and established place of business in TC Heartland. However, Judge Gilstrap, in the Eastern District of Texas, established a 4-part test to determine patent venue after TC Heartland in Raytheon Co. v. Cray Inc.
Will the Northern District of Illinois’ Mandatory Initial Discovery Pilot program end copyright trolling in the District? By Jonathan LA Phillips Intellectual Property, September 2017 The Northern District of Illinois ordered a Mandatory Initial Discovery Pilot Program (MIDP) beginning 1 June 2017. Before 1 June 2017, the earliest discovery available to copyright-troll defendants were Rule 26(a) disclosures; the MIDP expands parties’ responsibilities at the outset of the case. Before MIDP, plaintiffs were only required to provide information that it might use to support its claims. Now, MIDP parties must provide mandatory disclosures of information “regardless of whether they intend to use the information in presenting their claims or defenses” and “whether favorable or unfavorable.” Some copyright infringement defendants have paid settlements rather than undertaking the cost of proving their innocence. The new MIDP rules level the playing field of questionable complaints, especially against bulk copyright complaints lacking core plaintiff evidence.
Federal Circuit clarifies injury-in-fact requirement for standing after PTAB proceedings By Kenneth Matuszewski & Isaac Rabicoff Intellectual Property, June 2017 The Federal Circuit held Phigenix did not have standing to bring its appeal, because it did not suffer an injury in fact when the Patent Trial and Appeal Board decided the inter partes review petition. 
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, June 2017 New and notable intellectual property updates.
Sandoz v. Amgen: Biosimilars arrive at the Supreme Court By Steven L. Baron & Michael J. Weil Intellectual Property, June 2017 “Biologics” are made from living cells, typically engineered bacterium or yeast. Unlike small-molecule drugs, like Ibuprofen, which are made from chemicals in a duplicate process, biologics, made from living material, are dynamic, and extremely effective treting many diseases. The 2010 Biologics Price Competition and Innovation Act (BPCIA) permits drug manufacturers to product biosimilars that are “highly similar” to a reference product. In Sandoz v. Amgen the US Supreme Court will deal with the mandated 180 day waiting period and patent infringement allegation.
Trademark infringement for unicorn beverages is no fantasy By Margo Lynn Hablutzel Intellectual Property, June 2017 Montauk Juice Factory filed, January 2017, a trademark application for “Unicorn Latte,” and its The End Brooklyn cafe started serving the “healing beverage” late 2016. Starbucks promoted its limited-edition “Unicorn Frappuccino” in April 2017. The Juice was upset Starbucks horned in.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, January 2017 New and notable intellectual property updates.
Repairing disparagement: A slant on language and trademarks By Daniel Kegan Intellectual Property, January 2017 The arc of the moral universe reportedly is long, but bends toward justice. Will the US Supreme Court accelerate or impede that curvature when it decides Lee v. Tam, which is scheduled for hearing on January 18, 2017?
Supreme Court potentially slashes design patent value: damages could be limited to individual components By Kenneth Matuszewski & Isaac Rabicoff Intellectual Property, January 2017 The Supreme Court expanded the definition of 'article of manufacture,' as used in the design patent damages test. In doing so, it opined that damages could be awarded for profits associated with components of an infringing product.
Ten cybersecurity tips for lawyers By Margo Lynn Hablutzel Intellectual Property, January 2017 Lawyers have an ethical obligation to protect their clients’ information. Electronic records add accessibility—and responsibility. Cybersecurity tips include Change the Password Often, Consider Dual Authentication, Limit Access to Need-to-Know, Disable Passwords When People Leave, Plan for Cyber Incidents, Train Staff and Attorneys, Document with NDAs, Investigate Your Vendors, Review Policies and Processes.
Top 10 tips on data security: Take two By Charles Lee Mudd, Jr. Intellectual Property, January 2017 Cybersecurity requires more than just ten tips. Start with Secure the Front Door, Restrict Public Wi-Fi Use, Firewall, Establish and Enforce Password Protocols, Use Encryption and Identification Measures, Require Employment Agreements and NDAs, Implement Appropriate Security Technology, Strategically Use Cloud Computing Services, Employ Anti-Virus and Intrusion Prevention Software, and Recognize the Limits of Any Top Ten List.
Ethical quandaries: What to do when your collaborator/artist/agent/publisher becomes an adversary By Sarah M. Linsley Intellectual Property, October 2016 A look at the role of legal counsel in collaborations--if not in creating these relationships, inevitably in connection with unwinding them.
First copyright principles for the First Lady’s speech By Daniel Kegan Intellectual Property, September 2016 Who owns the copyright to a speech made by the spouse of the President of the United States? The First Lady of the United States (FLOTUS), the President of the United States (POTUS), the federal government, the writers assisting the spouse, the editors of the speech, we the American people, no one? As with most short legal questions, it depends.
How will the FRCP’s amendments affect BitTorrent litigation? By Jonathan LA Phillips Intellectual Property, September 2016 The Supreme Court recently amended the Federal Rules of Civil Procedure. The changes focused, in part, on the need for early and active judicial case management, ensuring cases do not stall at the outset, and ESI preservation. The new Rules became effective on December 1, 2015. Attorneys handling BitTorrent related copyright litigation should take note, given the amendments’ focus. This is particularly true for the Illinois attorney, because the Northern District of Illinois remains a hotbed of copyright litigation involving the BitTorrent protocol. Accordingly, these amendments should change the way Northern District judges approach these cases.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, September 2016 An eclectic gathering of recent intellectual property developments
Musicians vs. politicians – The saga continues By Margo Lynn Hablutzel Intellectual Property, September 2016 Popular music has historically had political aspects. Politicians love music, using it to underscore their platforms, highlight their entrances, and set a tone for their campaigns. But musicians don’t always want politicians using their music. Several recent disputes are summarized.
Rembrandt, AI, and 3-D printing: Has forgery been perfected? By Charles Lee Mudd, Jr. Intellectual Property, September 2016 Current computer developments foster re-evaluation of intellectual property laws, especially copyright. To promote Dutch arts and culture, ING Bank hired JWT Amsterdam advertising agency to develop a computer program to paint like Rembrandt, one of the best-known Dutch artists. The website www.nextrembrandt.com describes the process and shows the result. How does that technology change the legal landscape?
Saudi Arabia: Final step towards Regional Trademark Law Intellectual Property, September 2016 The Cooperation Council for the Arab States of the Gulf (GCC) Trademark Law, unlike the GCC Patent Law, is a unifying, not a unitary law.It stipulates a set of uniform provisions for all GCC countries, but does not offer a unitary registration system. New GCC Trademark Law and Implementing Regulations were published in the Saudi Official Gazette 1 July 2016, and are expected to become effective 90 days thereafter.
Galvin v. Illinois Republican Party highlights the Seventh Circuit’s mistreatment of satire in copyright law By Matt Grothouse Intellectual Property, July 2016 Fair use defenses expand somewhat for political uses of intellectual property. Analysis of Galvin v Illinois Republican Party (ND IL 2015) suggests the courts should clarify the status of satire and other non-referential uses in copyright law.
Intellectual Improbabilities By Daniel Kegan Intellectual Property, July 2016 New and notable intellectual property updates.
Quick summaries of five recent copyright cases By Margo Lynn Hablutzel Intellectual Property, July 2016 Summaries of recent cases of interest to IP practitioners.
License grant—A licensee’s perspective By Mark Weis Corporate Law Departments, March 2016 One of the most important areas of any intellectual property (IP) agreement is the license grant provision.
Taking a default By Daniel Kegan International and Immigration Law, February 2016 Defaulting has pejorative connotations, but sometimes accepting a default judgment may be a wise decision. Courts sometimes permit alternatives to traditional service, FRCP 4. The Hague Service Convention, the Inter-American Convention on Letters Rotatory, and the ubiquitous, pervasive Internet make service of process easier. The Internet has also spawned complaints with hundreds of defendants, often for alleged copyright or trademark violations. For the innocent, downstream, small business defendant, defaulting may be more rational than defending, even when the complaint contains deceptive and false allegations. Decision considerations and likely settlement elements are presented.
Ethical issues for business and intellectual property lawyers By Eugene F. Friedman Intellectual Property, December 2015 Our ethics codes provide guidance when encountering conflicting choices. Multiple codes and enforcement entities, including Illinois Rules of Professional Conduct, Patent and Trademark Office, Northern District of Illinois. Eugene Friedman outlines and comments on issues intellectual property and business attorneys may confront.

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