By Vincent Allen* As discussed in my prior post, the Waco Division of the Western District of Texas has seen a dramatic uptick in the number of patent infringement suits since Judge Albright took the bench. And like other venues where plaintiffs have flocked, it is only natural that defendants attempt to transfer cases out… Read more »
Posts Categorized: Uncategorized
Colin On The Mark Davis Show!
On February 19th, Colin Cahoon returned to the Mark Davis Show to discuss intellectual property. The focus of the discussion was on entertainment and highlighted related considerations under copyright, patent, and trademark law. Colin discussed the recent lawsuits against the famous game Fortnite that have been brought under copyright as well as California privacy laws. … Read more »
Mayo v. Prometheus: 7 Years Later – Re-Establishing a Workable Solution for Patent-Eligible Subject Matter
The year was 2013. You may remember it for the roll-out of the Affordable Care Act (a.k.a. Obama-Care) or perhaps the Boston Marathon Bombings. For me, the latter event hit especially close to home. I was attending law school in Boston, and earlier in the day I rode my bike to watch the Boston Marathon…. Read more »
Recapping 2018—The year of Data Privacy
Last year, General Data Protection Regulation (GDPR) went into effect in the European Union (EU) regulating and protecting data from individuals within the EU. Large US companies operating abroad were forced to update their privacy policies and procedures and have opted to broaden the changes to individuals even outside the EU. Although GDPR has already… Read more »
Principal vs Supplemental Register
If you are researching potential trademarks for your business or your products, you may have come across terms such as principal register and supplemental register. To the uninitiated, these terms can be a little confusing and opaque. So, what is the difference between the two and do you have a choice when you request registration… Read more »
How Much Do You Care About Your Right-to-Repair?
The two decade old Digital Millennium Copyright Act (“DMCA”) was intended to prevent circumvention of protective measures placed on copyrighted material such as movies and music. In the absence, or perhaps scant presence, of legislative updates, the same laws used to govern movies and music have been extended to new technologies brought by the internet… Read more »
Everyone Copied My Code!!!
Over 75% of Americans use a smartphone today according to the Pew Research Center.[1] As a result of the large number of people utilizing smartphones, smartphone operating systems and applications are being developed at an ever-increasing pace.[2] For software developers, one question that is not often considered until it is too late, is what can… Read more »
Monkey Can Selfie But Can He Copyright?
What do whales, dolphins and porpoises have in common with a monkey of the Celebes crested macaques-type from Northern Sulawesi (Indonesia)? And how does that in turn connect with the concept of “next friend” in the context of “standing”? In fact, what is “standing”? All of these are brought together in a tale that starts… Read more »
Disgorgement of Defendant’s Profits as Damages for Trade Secret Misappropriation, and Reduction of Damages for Accessibility by Proper Means
Analyzing the monetary harm to a business through misappropriation of one or more trade secrets is fraught with difficulty. How much does each specific trade secret contribute to the trade secret owner’s profit on each product? How important was each trade secret to the defendant’s accused product? What was the development timeline and did the… Read more »
C&C Diversity News
Carstens & Cahoon continues to lead the Texas IP pack in the promotion of diversity and diversity initiatives. Earlier this year, Carstens & Cahoon was recognized by PepsiCo Inc. as a part of PepsiCo’s outside counsel diversity initiatives for the firm’s demonstrated commitment to increasing diversity and inclusion in the legal profession at PepsiCo’s annual… Read more »
Who Carries the Burden in IPR—And, Does it Matter?
The Inter Partes Review (“IPR”) proceeding, part of the America Invents Act, sets up a streamlined procedure for any party (“petitioner”) to challenge the validity of the claims of an issued patent, not in a court, but in the US Patent Office, generally at a much lower cost when compared to federal court. An IPR… Read more »
How to Fight the Jabberwock Known as Alice
“Beware the Jabberwock, my son!” from Through the Looking Glass, and What Alice Found There (1871) by Lewis Carroll. Since Alice v. CLS Bank[1], companies have found that obtaining software patents is more difficult, especially as many software patent applications going through the examination process at the USPTO were drafted before the Alice decision. Although… Read more »
Thinking Inside the Box
Spurred on by reports of US companies fleeing overseas to avoid high US corporate tax rates, the idea of developing a “patent box” program similar to programs recently adopted in several European countries has surfaced on this side of the pond. A “patent box” offer companies lower tax rates on income derived from locally based… Read more »
Akamai-Redux
On remand from the U.S. Supreme Court, the Federal Circuit – en banc, today held, “on the facts of this case, that liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method… Read more »
PTAB Grants Motion to Amend Patent Claims in IPR, Finds Patent Valid with Substitute Claims
The Inter Partes Review (IPR) procedure enacted by Congress in the America Invents Act (AIA) a few years ago has quickly become a favorite tool for use by those accused of infringement of a patent as well as those seeking to expand the freedom to operate prior to product launch. A successful IPR results in… Read more »
Solving Alice
The Supreme Court’s abstract ideas exception to categorical subject-matter eligibility under 35 U.S.C. § 101 has become the bane of computer-implemented inventions. In June of 2014, the Supreme Court, in Alice Corp. Pty. Ltd. v. CLS Bank International, affirmed the framework for patent-eligibility initially set out in Mayo Collaborative Services v. Prometheus Laboratories, which includes… Read more »
IPR’S Approaching Third Birthday
An “IPR” (a/k/a “Inter Partes Review”) is a relatively new procedure at the USPTO to challenge the validity of a U.S. Patent. It has proven to be a very effective tool that can be used in response to litigation, and also to assist in obtaining leverage in licensing negotiations with competitors. The IPR procedure originated… Read more »
Akamai: Demise of Tort-Based Joint-Actor Infringement
The Federal Circuit on May 13, 2015 issued its long-awaited opinion in Akamai Technologies, Inc. v. Limelight Networks, Inc. on remand from the U.S. Supreme Court with respect to the scope of “divided” or “joint-actor” direct infringement under 35 U.S.C. § 271 (a). Akamai had argued in favor of a broad “joint-tortfeasor” based definition of… Read more »
Should We be Watching for the New “Trade Dress” in the Fall Fashion Shows?
Not really. Trademark law encompasses the subpart known as “trade dress.” When an average consumer can identify the source of a good or service by its look and feel, then this may be its trade dress. The design or configuration of a product, the labeling and packaging of goods, and the décor or environment where… Read more »
Abstract Ideas – Are they Patentable?
Recently, the USPTO issued a memorandum to its Examiner Corps, entitled “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” At its core, the memo addressed subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas. Comments were submitted by AIPLA and IPO… 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 »
An “Exceptional Case” Need Not Be so Very Exceptional Anymore
In a patent suit involving a patent covering an elliptical trainer exercise machine, the US Supreme Court significantly changed a long-established standard for awarding attorney fees to the prevailing party. Under the old standard, the trial court had the discretion to order the losing party to pay the prevailing party’s attorney fees if it found… 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 »
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.
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.
Leveling the IP Field For Minorities
By Celina M. Orr
Although minorities have grown to recognize the rewards of the legal profession,
intellectual property law continues to be under-represented. Intellectual property (patents, trademarks, copyrights, and trade secrets) plays an important role in an increasingly diverse range of areas, from literature and the arts to genetic engineering. Yet there is a relatively small pool of diverse attorneys in the practice of intellectual property (IP) law.
Design Patents after Egyptian Goddess: The Comeback Kid
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: