4.8.19 / Cecily Anne O’Regan

Operating in a Networked Environment, without More, Unpatentable Under § 101

Ever since the U.S. Supreme Court issued the 2014 decision in Alice[1], each new decision interpreting patentable subject matter under § 101 has added much needed clarity for patent holders and practitioners alike. On March 28, 2019, the Federal Circuit held that an abstract idea operating in a networked computing

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2.7.19 / Cecily Anne O’Regan

An Invention May Still be On Sale if it is part of a Confidential Agreement with a Third Party

Under U.S. Patent law, patent applicants have a one year grace period to file a patent application after the invention is on sale[1] One year from the offer for sale or actual sale is referred to as the “on sale bar.”  Although seemingly straightforward, the on sale bar is still

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1.24.19 / Cristina N. Rubke

Recent TTAB Decision Denying Application Shows Importance of Policing Trademark And Risk Of Relying Too Heavily On Prior Registration

Securing a federal trademark registration is never a guarantee, even when the applicant has an incontestable registration for a very similar mark. In In re Inn at St. John’s, LLC (June 6, 2018), the Trademark Trial and Appeal Board (the “Board”) affirmed the refusal to register 5IVE STEAKHOUSE (stylized) based

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1.23.19 / Michael B. Dell

Employee Invention Assignment Agreements

Start-up companies that are looking to raise funds will often need to answer questions regarding the intellectual property ownership rights of the company.  These questions often arise in the due diligence phase of an equity financing and investor’s counsel will want to see clear evidence that the company owns (or

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11.20.18 / Erick C. Howard

Attorney’s Fees Awarded In DTSA Action For Not Immediately Dismissing Objectively Specious Misappropriation Claim

The District Court for the Northern District of California recently issued an order awarding partial attorneys’ fees to a defendant in a trade secret misappropriation case brought pursuant to the federal Defend Trade Secrets Act (“DTSA”) and California Uniform Trade Secrets Act (“CUTSA”).  The decision is most notable for making

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11.2.18 / Cecily Anne O’Regan

Distribution at Attendee-Restricted Trade Show Still Prior Art Against Patent

On November 1, 2018, the Federal Circuit modified and reissued its opinion holding that a catalog disseminated at an attendee-restricted trade show was prior art.[1] Contour IP Holdings received two issued patents related to action sport video cameras[2] GoPro, Inc. filed a petition for inter partes review (“IPR”) of the

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10.8.18 / Joseph V. Mauch

The Music Modernization Act Promises Welcome Changes to Copyright Laws

In mid-September, the U.S. Senate, in a rare bipartisan effort, unanimously passed the Music Modernization Act (the “MMA”), implementing a number of important changes to the copyright laws covering music. The House of Representatives, which had already passed its similar-but-slightly-different version of the MMA earlier this year, agreed to the

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7.24.18 / Cecily Anne O’Regan

Lost Foreign Profits Available To US Patent Owners under 271(f) when Relevant Infringing Conduct Occurs in the US

On June 22, 2018, the U.S. Supreme Court held that manufacturing components in the United States for a patented system and then shipping the components abroad for final assembly was eligible for lost foreign profits for patent infringement. [1] WesternGeco asserted four issued patents claiming a system for surveying the

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4.19.18 / Michael B. Dell

The Interstate Commerce Requirement of the Defend Trade Secrets Act

The two year anniversary of the enactment of The Defend Trade Secrets Act of 2016 (the “DTSA”) will occur next month, on May 11, 2018.  The DTSA created a private, civil, federal cause of action for misappropriation of trade secrets.  The statute provides, in relevant part, that “[a]n owner of

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5.13.16 / Joseph V. Mauch

Testimony By Affidavit: Proposed Changes to Discovery Process in Opposition and Cancellation Proceedings Before the TTAB

The U.S Patent and Trademark Office recently announced proposed rule changes for proceedings before the Trademark Trial and Appeal Board (“TTAB”), which hears oppositions to pending applications to register trademarks as well as challenges to existing registrations. There are a wide range of proposed changes but the most significant relate

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4.11.16 / Joseph V. Mauch

Apple v. Samsung: Supreme Court Agrees to Review Award Based on Design Patents

The United States Supreme Court recently agreed to hear Samsung’s appeal of last year’s Federal Circuit decision affirming an award of $548 million in favor of Apple. The Court’s decision not only prolongs the seemingly endless legal battles between the two heavyweights, but it promises to answer an important question

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