Posts By: Vincent Allen

Cease and Desist Letters After TC Heartland—Best Practices

The Supreme Court recently reversed over 20 years of Federal Circuit precedent that allowed patent infringement suits to be filed anywhere that the court could exercise personal jurisdiction over the defendant.  So long as, for example, the infringing product was sold in the district, venue was proper there.  As a result of the liberal interpretation… Read more »

Tropic Ocean Airways: Don’t Draft your Complaint on the Beach

When a lawsuit is filed, a plaintiff must provide the factual and legal basis for the claims to avoid the case being dismissed.  How much detail must be provided was arguably changed significantly by a pair of U.S. Supreme court decisions, Twombly and Iqbal, decided in 2007 and 2009, respectively.  Before these two cases, the… Read more »

Alice Decision

The Supreme Court affirmed the Federal Circuit’s decision in Alice Corporation v. CLS Bank holding that patents directed to schemes or methods of mitigating settlement risks in the exchange of financial obligations between two parties claimed unpatentable subject matter.  Although the patents recited system claims implementing the method on a computer system, the Supreme Court held… Read more »

Limelight: 9-0 Supreme Court Reversal

There was a brief glimmer of hope for those patents with claims covering steps performed by more than one entity. But once again the Supreme Court has chastised the Federal Circuit for not following its prior precedent.  Specifically, there can be no active inducement of infringement unless there is first direct infringement, and direct infringement… Read more »

Order Dismissing Amended Complaint with Prejudice

The Southern District of Florida recently dismissed a cybersquatting case we had on behalf of one of our clients. The judge agreed with our argument that the mark was merely descriptive and that no facts were alleged to support secondary meaning in the one year period between plaintiff’s first use of the mark and our… Read more »

Texas Fashionably Late to the Uniform Trade Secrets Act Party

Significant changes in the law in Texas with respect to trade secrets went into effect September 1, 2013, with Texas becoming the 48th state to adopt the Uniform Trade Secrets Act.  Previously, there was no central repository for Texas trade secret law, as it was a combination of the common law, restatements, and the Texas… Read more »

Judicial Profile: Magistrate Judge Renee Harris Toliver

by Vincent J. Allen

A profile on Magistrate Judge Renee Harris Toliver, the first African-American to sit on the federal magistrate bench in the Northern District of Texas, as published in the May 2013 issue of the Dallas Bar Association’s Headnotes.

Trademark Infringement: Can I Bid on My Competitors’ Trademarks as Adwords?

By Vincent Allen and PJ Putnam

With the use of search engines by consumers to find products and websites becoming more prominent, search engine optimization has become an important part of the marketing plan for large and small businesses alike. For those companies that do not want to take the time or put in the effort to improve their SEO for certain keywords organically, purchasing keywords, also known as Adwords, from Google or other search engines can put a website on the first page of search results for a particular keyword overnight. By “purchasing,” we mean the submission of the high bid for the use of a keyword or campaign for a specific time period and geographic location.

Use Unlicensed Music in Wedding Films at Your Peril

by Vincent J. Allen

Quantum leaps have been made in both the quality and popularity of wedding films over the past 10 years. The advances are a result of technology improvements in post-production editing systems and the introduction of low profile cameras that rival the production quality of movie sets. Most recently, the availability of relatively low cost DSLR cameras has added a cinematic element to event film productions that previously was not available.

Event filmmakers have begun creating works of art that capture the emotions of the wedding day. So it is no surprise that wedding films are often set to music selected to create the desired mood. Historically, event filmmakers have not given much thought to obtaining permission to use a popular song in a wedding film, and some have even operated under the erroneous belief that purchasing the song on a CD or iTunes will avoid a copyright violation. Event filmmakers have now begun paying more attention to copyright issues as rights holders have stepped up enforcement activity directed to unlicensed use of music on the internet.

Aon & RPX Unveil Non-Practicing Entity Patent Litigation Insurance Coverage

by Vincent J. Allen

It is becoming more and more common for technology business owners to be faced with patent infringement suits filed by a non-practicing entity (NPE), an entity that does not manufacture or sell the product covered by the patent.  Defending a patent infringement suit can be very expensive, and for a small company, can threaten its very existence.  Historically, patent litigation insurance has not been readily available.  But now, patent aggregator RPX and insurance company Aon Risk Solutions have teamed up to offer patent litigation insurance for suits brought by non-practicing entities

Prior Commercial Use Defense

By Vincent J. Allen

The America Invents Act significantly expands the “prior commercial use” defense for patent infringement cases.  The defense allows a defendant to avoid patent infringement by proving that the defendant used the patented subject matter at least one year before the earlier of a) the effective filing date of the patent-in-suit or b) the date the invention was disclosed to the public as envisioned under the new Section 102(b).  The defense previously only applied to business methods, but now includes the entire gamut of patentable subject matter.

New Joinder Rule May Curb Filings in Eastern District of Texas

By Vincent J. Allen

A few years ago, a plaintiff could file suit for patent infringement in any jurisdiction where infringing products were sold.  Because of its short time to trial and plaintiff-friendly jury pools, the Eastern District of Texas became the forum of choice for many plaintiffs.  But in recent years, the courts have clamped down on the liberal venue rules by requiring the transfer to a forum that is “clearly more convenient” in cases where the only connection to the venue is the fact that infringing products are sold there.

Willful Blindness: The New Standard for Knowledge

by Vincent J. Allen

In a decision earlier this year having ramifications in numerous areas of the law in which “knowledge” must be proven, the U.S. Supreme Court applied the doctrine of willful blindness to satisfy the knowledge element for a claim of active inducement of patent infringement. Although the willful blindness doctrine has been well established in criminal law and adopted by every federal court of appeals but one, the Global-Tech Appliances decision marks the first time the Court has approved the doctrine.

False Patent Marking: The New Gold Rush?

By Vincent J. Allen

The Federal Circuit’s Bon Tool decision in late 2009 dramatically increased the number of false patent marking cases filed last year.  Historically, the relatively obsure patent marking statute had been interpreted to allow for a penalty of up to $500 for each decision to mark an unpatented product.  Consequently, there were only a handful of false marking suits pending at any given time.  Times have changed.  The Bon Tool decision opened the flood gates for false marking claims because of the dramatic increase in potential damages to the plaintiff.  A plaintiff in a false marking suit can now recover up to $500 per item sold.  Forest Group Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009).

 

Jim Brown Fails to Break Through First Amendment Defense

By Vincent J. Allen

Jim Brown’s claim of false endorsement against Electronic Arts in regard to the use of his likeness in the Madden NFL video game was dismissed last year. The decision continues the trend of courts finding that the First Amendment provides a complete defense to a claim of unfair competition when source identifiers are used within video games. Jim Brown is a retired professional football player who is revered as one of the best football players of all time. Electronic Arts (EA) develops and publishes video games, including the popular Madden NFL series. The Madden NFL game is a virtual football game that contains up to 170 virtual teams and 1,500 virtual players. The virtual players include players that wear the names and numbers of current real-life players playing on real-life teams.

Corporate Legal Departments Turn to Boutique Law Firms

By Vincent J. Allen

Budgets for some corporate legal departments have been slashed this year in line with across the board cuts implemented as companies try to weather the downturn in the economy. This leaves corporate counsel with a smaller budget to accomplish the same legal work. In-house counsel at major companies are taking a hard look at outside counsel expenditures to determine if the legal work is being handled efficiently, and many have concluded that a different approach is needed.

Design Patents after Egyptian Goddess: The Comeback Kid

By Vincent J. Allen

In 1871, the Supreme Court established the standard for proving design patent infringement in Gorham Manufacturing Company v. White.The design patent in Gorham covered the ornamental features of forks and tablespoons. The Supreme Court explained that the appearance of an article may increase its “salable value.”  The test of identity of design “must be sameness of appearance, and mere differences of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity.”  Based on this rationale, the Court outlined the “ordinary observer” test that is still used by courts today in design patent infringement cases:

The Federal Circuit Puts a Damper on Forum Shopping

By Vincent J. Allen

The Eastern District of Texas has the reputation of being a favorable forum for filing patent infringement suits. For the year ending September 31, 2007, more patent cases were filed in the Eastern District than in any other district in the nation. The Central District of California, despite having a substantially greater population of businesses, trailed the Eastern District’s 359 filings by 25.

Ding-Dong! The Witch of Patent Reform is Dead…Or is She?

Many in the patent community are singing the joyous news that the Patent Reform Act of 2007 is dead. Recent events in Congress lead to this conclusion. The departure on May 1, 2008 of the former Solicitor of the U.S. Patent and Trademark Office, John Whealan, from his temporary position with Senate Judiciary Committee Chairman… Read more »

New Patent Rules Blocked by an 11th Hour Injunction

By Vincent J. Allen

On the day before the new continuation rules discussed in our previous newsletter were to go into effect, a federal judge in Virginia issued an injunction against the Patent Office that prevented the Patent Office from changing the rules on November 1, 2007 as scheduled.  GlaxoSmithKline filed suit in Virginia claiming that the new regulations are vague, arbitrary, and capricious.

The Battle Continues: Supreme Court v. Federal Circuit

By Vincent J. Allen

The U.S. Supreme Court has reversed all nine patent cases decided on appeal from the Federal Circuit since 2002.  In two cases handed down in April, the Court continues its trend of reversing the Federal Circuit.  In a much anticipated decision, the Court in KSR v. Teleflex unanimously rejected the Federal Circuit’s rigid approach to determining whether a patent is non-obvious in view of the prior art.  Although not as far reaching as KSR, a second case, Microsoft v. AT&T, may hamper owners of software patents in their ability to prevent copying of software outside the United States.

Dallas Leads the Charge with New Patent Rules

By Vincent J. Allen

In an order issued April 2, Chief U.S. District Judge of the Northern District of Texas, A. Joe Fish, established case management rules on a trial basis for patent cases filed in the Dallas Division.  The patent rules apply to all civil actions containing an allegation of utility patent infringement and to any action seeking a declaration that a utility patent is not infringed, is invalid, or is unenforceable.  The patent rules take effect on May 1, 2007 and apply to any Dallas Division patent case filed on or after that date and to certain cases filed prior to the effective date.  Although other districts such as the Eastern District of Texas and the Northern District of California have had patent rules for some time, many other districts are now considering creating patent rules as well.  Dallas is the first in a new wave of districts likely to enact patent rules.