Litigation News

Litigation news from around the web

LJN - Intellectual Property Strategist The newsletter publishing arm of ALM, publishers of The National Law Journal, The American Lawyer and legal newspapers of record throughout the U.S.

  • Deciphering the USPTO's Material Alteration Standard for Amending Marks
    on October 1, 2020 at 5:09 am

    As brands mature over time, their owners often seek to update marks that are subject to a federal registration or registration application. In some cases, the impetus for the amendment may be deliberately to freshen, tweak, or otherwise modernize the subject mark. In other cases, brand owners may recognize after the fact that their current usage of a mark does not match the mark as originally registered or applied for.       

  • Testing for Genericness After USPTO v. Booking.com
    on October 1, 2020 at 5:07 am

    In the recent U.S. Supreme Court case of USPTO v. Booking.com, the U.S. Supreme Court held that the term Booking.com is not necessarily generic merely because it is composed of two components, each itself generic. In so deciding, Justice Ginsburg averred that there is an appropriate metric to determine if such a term is indeed generic, that of consumer perception.       

  • Alice and Incongruity In PTAB Appeals
    on October 1, 2020 at 5:05 am

    This article discusses the significant contrast between consideration of issues related to the U.S. Supreme Court's decision in Alice Corp. v. CLS Int'l in prosecution and their resolution by the PTAB.       

  • IP News
    on October 1, 2020 at 5:03 am

    Federal Circuit Modifies Facebook IPR Joinder Ruling District Court: Stipulation of Noninfringement Does Not Preclude Post-Remand Finding of Infringement       

  • What's Your Trademark Worth? Determining the Value of Trademarks For Collateral, Sale or Licensing
    on September 1, 2020 at 5:09 am

    This article explores the options available to a client to value its trademarks during a financial crisis, to ensure one of the most valuable assets it owns can continue to work for the company and see it through the lean times.       

Planet Depos We Make It Happen

  • Remote Depositions, Interpreted
    by Suzanne Quinson on October 16, 2020 at 5:30 pm

    Interpretation can be a little tricky in a remote deposition, so all the these steps to guarantee the best quality audio are critical. The post Remote Depositions, Interpreted appeared first on Planet Depos.

  • 8 Tips to Save Time & Money on Depositions (Updated)
    by Suzanne Quinson on October 1, 2020 at 5:00 pm

    Court reporting expenses for large cases can be significant. Luckily, there are ways to save time and money when choosing a court reporting service. The post 8 Tips to Save Time & Money on Depositions (Updated) appeared first on Planet Depos.

  • Important Reminders For Your Remote Deposition
    by Suzanne Quinson on September 10, 2020 at 4:16 pm

    Remote depositions are happening everywhere, here are the vital points to keep in mind when you're scheduling virtual depositions. The post Important Reminders For Your Remote Deposition appeared first on Planet Depos.

  • The Realtime Feed and the Remote Deposition
    by Suzanne Quinson on August 19, 2020 at 4:30 pm

    Realtime court reporting has been around for a while, and these remote days are an excellent time to experience it for yourself. The post The Realtime Feed and the Remote Deposition appeared first on Planet Depos.

  • The Ultimate Home Office Setup for your Remote Work Life
    by Daniel Malgran and Suzanne Quinson on July 22, 2020 at 5:00 pm

    Just because you're home doesn't mean you can't have a great office setup. Here are our recommendations to help you build the ultimate home office. The post The Ultimate Home Office Setup for your Remote Work Life appeared first on Planet Depos.

Director's Forum: A Blog from USPTO's Leadership Updates from America’s innovation agency

  • 2021 National Patent Application Drafting Competition
    by USPTO on October 22, 2020 at 1:41 pm

    Guest blog by Commissioner for Patents Drew Hirshfeld The 2021 National Patent Application Drafting Competition has kicked off! The competition, which began as a regional competition led by our Elijah J. McCoy Midwest Regional Office in Detroit in 2014, has expanded into a nationwide competition, with participation from law school teams from across the country and all of our USPTO regional offices. The competition challenges the teams on the fundamentals of patent prosecution, including by drafting a patent application and arguing its patentability. It consists of two rounds: a preliminary regional round where teams compete and the National Finals where the winners of the regional competitions compete against each other at an event hosted at USPTO headquarters. Team registrations are being accepted until November 7, 2020, and regional and final rounds will take place virtually in Spring 2021.The competition replicates the experience of prosecuting a patent application before the USPTO. Students are given a hypothetical invention statement and are asked to perform a prior art search, write a specification, prepare drawings, and write a brief memo explaining their drafting choices. They present their applications and the rationale for patentability and argue claim scope to a panel of judges. The judges consist of senior USPTO officials and patent attorneys from the local communities with extensive experience in patent prosecution and enforcement, who provide feedback and advice to help competitors improve their arguments and legal reasoning. Because the competition assesses the strength of contestants’ reasoning and patent drafting skills over technical knowledge, it is accessible to law students from all technical fields and interests.Participating in the competition is an excellent opportunity to gain practical and indispensable experience drafting and prosecuting patents and to hone public speaking and communication skills. Last year‘s competition hosted a record 34 teams. Learn more about the 2020 finalists and winners. According to Mark Landauer, a member of last year’s winning team from the University of St. Thomas School of Law:  “This competition is a great way to build practical patent skills that are otherwise outside the scope of a traditional legal education. We learned not just the administrative side of patent filing, but the strategies which go into the practice, the history, the rationale for certain strategies and the ways to draft claims. Overall, we were given a glimpse into patent drafting and litigation strategies that is nearly unrivaled.”The National Patent Application Drafting Competition has been successful due to the overwhelming support from the intellectual property (IP) law community. The USPTO works closely with the American Intellectual Property Law Association in organizing the competition, as well as with local attorneys, local bar associations, local Inns of Court, and law school faculty mentors. Interacting with practitioners provides students with useful feedback from experienced attorneys and promotes connections with future colleagues. This year, students will be able to build vital connections by hosting virtual networking events throughout the competition.In addition, the USPTO is expanding the competition’s contestant pool to include law students traditionally underrepresented in patent prosecution, including those students enrolled in law schools located outside the major IP markets. Virtual information sessions will instruct students in the fundamentals of patent drafting, patent searching, and conducting examiner interviews. The USPTO will also regularly reach out to law schools to inform students of registration deadlines and competition dates. The USPTO looks forward to the participation of law school teams from across the country in this year’s competition and to this opportunity to assist students as they pursue future careers in IP law.Visit the 2021 National Patent Application Drafting Competition page of the USPTO website for further information on deadlines, competition dates, details and rules about the competition or contact PatentDraftingCompetition@uspto.gov with any questions.

  • Legal Experience and Advancement Program conducts virtual mock arguments
    by USPTO on October 15, 2020 at 4:27 pm

    Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Scott Boalick, Chief Judge of the Patent Trial and Appeal BoardPractitioners in the Legal Experience and Advancement Program participate in a mock argument practicum on August 7, 2020.In May 2020, the USPTO launched the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP). LEAP was established to help develop the next generation of patent practitioners by creating opportunities to gain oral argument experience before the Board. To qualify for LEAP, a patent agent or attorney must have three or fewer substantive oral arguments in any federal tribunal, including the PTAB, and seven or fewer years of experience as a licensed attorney or agent. The USPTO recognizes that oral argument opportunities before tribunals are limited and that gaining courtroom experience is valuable for newer practitioners’ career development. Developing strong oral advocacy skills in such patent practitioners benefits clients, the USPTO, the courts, and the whole IP system. A key component of LEAP is training, and the USPTO has initiated a variety of opportunities with sessions taught by PTAB judges. We have provided three types of training so far. The first is a one-hour classroom-style lecture where PTAB judges explain the basics of an oral hearing.  In particular, judges orient participants to PTAB hearing rooms, discuss how to handle virtual hearings as well as in-person hearings where one or more judges appear remotely, and share best practices for navigating the flow of a hearing. Additionally, judges offer tips for managing argument time and demonstratives.The second type of LEAP training is an interactive discussion focused on viewing and evaluating actual recorded court presentations. By assessing what works and does not work in an argument, judges aim to mentor practitioners into adopting effective techniques and avoiding ineffective ones. Also, practitioners can witness first-hand the ramifications on the case of making missteps during the argument.    The third type of LEAP training we have provided is a live mock argument practicum in front of a panel of three judges. Practitioners are grouped in pairs and must determine how to argue multiple issues in a mock inter partes review case. The mock argument is 30 minutes per side and simulates the oral argument in an actual case. After the argument, the panel gives individual feedback to each practitioner, pointing out the strengths and weaknesses of the presentation. The mock argument practicum is closed to the public to foster an open and honest coaching opportunity.PTAB held the first LEAP mock argument practicum on August 7, and the second took place October 9. 40 practitioners from a variety of different law firms argued before a total of 30 administrative patent judges, including the Director, Chief Judge, and executive management team of the Board. The arguments were conducted virtually, and all judge panels were extremely active in probing the issues. The practitioners did an excellent job in making their cases and handling judge questions. In fact, Deputy Chief Judge Jackie Bonilla commented, “If I did not know it, I would have thought I was sitting in an actual hearing as the practitioners were steeped in the mock record and well versed in the case law.”And in the “real world,” the Board has heard 18 arguments by LEAP practitioners in actual pending cases, 30 percent in appeals, and the rest in AIA trials. Feedback from judges who heard cases with LEAP practitioners has been positive and encouraging. One judge shared, “It is good to hear from newer attorneys because they are usually more intimately involved in the prosecution of an application. They know what the specification says and can answer detailed questions about claim construction issues.” Another judge offered words of reassurance to future LEAP practitioners: “No matter how intimidating it is to stand up and argue before judges, the more you do it, the more comfortable you will be. The ability to stand up and argue is paramount to progressing your career.”  The USPTO created LEAP not only to advance the careers of less experienced practitioners, but also to further the USPTO’s goal to ensure America’s continued economic strength and technological leadership. A well-trained, inclusive patent bar is a critical element of this effort. Learn more about LEAP or submit your feedback to leap@uspto.gov.

  • Fall 2020 brings exciting changes to the Patents organization
    by USPTO on September 29, 2020 at 5:46 pm

    Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Drew Hirshfeld, Commissioner for PatentsCommissioner for Patents Drew Hirshfeld, and Deputy Commissioners Bob Bahr, Robin Evans, Andy Faile, Valencia Martin Wallace, and Rick Seidel.It has been our privilege to lead a continuous effort that empowers “America’s innovation agency” to better meet the demands of a rapidly changing world. Improved collaboration is critical to that effort, particularly within our Patents organization, which is why we recently reorganized our senior Patents management team. Among the benefits of the new, improved management structure is a work culture that encourages, debates, and embraces new ideas—ideas that will allow us to more nimbly serve our stakeholders and employees.    The primary objective of the reorganization was to integrate examination and non-examination groups across Patents. Traditionally, these groups have been in five separate reporting chains, but, as the organization has grown, this structure has resulted in one of the reporting chains in Patents having more than 9,000 of the approximately 10,000 Patents employees. This integration of examining and non-examining functions helps accomplish several goals, including: 1) fostering improved teamwork and the sharing of diverse perspectives, 2) facilitating cross-training of the management staff, 3) providing enhanced developmental opportunities, and 4) better balancing the number of employees within the deputy commissioners’ reporting chains.An important part of the reorganization includes the recent selection of Robin Evans to serve as a Deputy Commissioner. Prior to her selection, Robin was the Acting Associate Commissioner for Patent Quality and had prior experience serving as the Director of Technology Center 2800, the interim Director of the Rocky Mountain Regional Office in Denver, and the first regional manager of the Elijah J. McCoy Regional Office in Detroit. Robin brings a wealth of experience to the job and is a fantastic addition to the current deputy commissioner team that also includes Bob Bahr, Andy Faile, Valencia Martin Wallace, and Rick Seidel.As you can see on the organizational charts before and after the reorganization, deputy commissioners will no longer have unique titles. We have not, however, diminished any of their responsibilities. Rather, the broader and shared responsibilities of each deputy commissioner enable us to be more effective as a team. For example, while there is no longer a deputy commissioner with the title “Deputy Commissioner for Patent Quality,” the responsibility for ensuring patent quality is shared by all, enabling a more expansive focus on patent quality that is directly integrated with those having oversight of patent examiners.We are confident these changes will improve our collaborative abilities and enhance the operations of the senior Patents management team. We look forward to announcing the assistant commissioners and the assignment of technology centers to deputy commissioners in the coming weeks. Above all, we remain committed, through these improvements and others, to providing the best customer service possible and to fostering ever greater American innovation, competitiveness, and economic growth.

  • A seamless transition to all-virtual hearings
    by USPTO on September 18, 2020 at 10:43 am

    Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Scott Boalick, Chief Judge of the Patent Trial and Appeal Board of the USPTO  Remote PTAB hearing on July 27, 2020. As the coronavirus pandemic began in early March, the Patent Trial and Appeal Board (PTAB) held its first all-virtual hearing, seamlessly adjusting to the new format and showcasing yet another example of our state-of-the-art efforts to support America’s “innovation agency.” In the 60 days after this transition, the PTAB has held 263 virtual hearings. Of note, 95 of these hearings were AIA trials, 100% of which were all virtual. By comparison, in the 60 days prior to the transition, there were 99 AIA trials and only one of those trials had counsel appear remotely. Despite the sudden switch in format, PTAB work has continued unabated.   Past innovations allowed this transition to be possible. For example, PTAB has long permitted counsel to appear remotely in ex parte appeals to save travel-related costs and time for applicants. Likewise, up to two of the three judges assigned to any PTAB proceeding (ex parte appeal or AIA trial) have appeared remotely, supporting the USPTO’s well-known hotel programing where judges and examiners are recruited throughout the United States and permitted to work outside the DC metro area. And just this year, PTAB allowed parties in all proceedings to request to appear from a USPTO regional office. Still, transitioning all PTAB hearings to a complete virtual environment required the PTAB and its support staff to work efficiently and creatively as they addressed everything from court reporting to virtual public access. We continue our work to improve the user experience and welcome any suggestions parties and practitioners might have. Please send us a note at PTABhearings@uspto.gov.  We also realize that for many practitioners, appearing remotely is a new experience that poses some challenges. To that end, we have identified some best practices that we share with counsel in advance. On a related note, the USPTO launched the Legal Experience and Advancement Program (LEAP) during this time of remote hearings, and it has shown tremendous interest so far. LEAP fosters the development of the next generation of patent practitioners by creating opportunities for them to gain skills and experience in oral arguments before the PTAB. Finally, with the expansion of remote hearings, we are also able to offer stakeholders opportunity to listen to hearings remotely. For more information, please visit the PTAB page of the USPTO website for schedules and further instructions. The USPTO’s top priority is to maintain the health and safety of our employees, contractors, and the American public, while continuing to provide valuable services, programs, and resources at the highest level. The option to appear remotely before the PTAB is one of the many ways that we have met, and will continue to meet, the needs and priorities of those who appear before the Board.

  • Successful failover test ensures the stability of patent system applications at the USPTO
    by USPTO on July 28, 2020 at 2:45 pm

    Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Jamie Holcombe, Chief Information Officer of the USPTOIlluminating the corridors of the United States Patent and Trademark Office (USPTO) data center in Alexandria, Virginia, are countless routers, switches, wires, and storage systems neatly organized on rows of server racks.  The blinking LED lights and soft whirring of cooling fans form an essential part of the USPTO’s digital backbone—one that supports ongoing patent and trademark examinations and daily business operations throughout the United States. Through this system, thousands of vital computer processes are executed every second of every day to enable the work done at America’s “Innovation Agency.”Until recently, most of this capability lay within the walls of USPTO headquarters in Alexandria. However, we determined in 2018 that this potential single point of failure was no longer tenable. In August of 2018 we experienced a multi-day outage of the Patent Application Locating and Monitoring (PALM) database. Afterwards, we committed to stabilize and modernize the USPTO’s IT infrastructure, which was long overdue. Significant portions of our infrastructure were antiquated and prone to failure under stress, and we lacked meaningful redundancies to mitigate the consequences of such failures. We began the upgrading process by conducting a top-to-bottom review and mapping of all IT systems. This included engaging outside experts to assess the infrastructure, processes, and organization. We then prioritized the needed improvements, and we set to work. For example, last year we upgraded to a new server platform for the main patent processing system. This new platform is 1,000 times faster, 20 times more efficient, far more stable, and less prone to failure.Critical to our stabilization effort is our team’s addition of redundancies – standby systems that enable “failover.” In a failover setup, redundant systems at offsite locations run simultaneously alongside the primary system. If the primary system fails, the standby system takes over, providing virtually uninterrupted support to system users.  In addition to adding failover servers, we activated at the alternate site a second 10 gigabit-per-second (10G) Ethernet computer networking circuit, deployed additional active and stand-by databases for key processing systems, and automated our deployment process for the primary and backup locations.To test the USPTO’s failover capabilities, on July 2nd and 3rd of this year, our IT team executed a planned outage of the servers housing the Official Correspondence and the Docket and Application Viewer. The files contained in this system are some of the largest, most important, and most accessed IT applications at the USPTO, used for reviewing, filing, and prosecuting patent applications. The outage test went as planned, with no issues. The USPTO’s new standby system at the offsite location remained fully operational during the test, with a rapid and seamless transition of the applications from the primary data center. All data was updated in real time and remained secure. Following this failover test, we then switched back to the primary data center, again with no issues. Our IT team is now moving forward to fully automate the failover system, and we plan to execute similar failover tests several times throughout the year. All along, of course, we continue to upgrade various other hardware and data infrastructure.USPTO has come a long way since the PALM outage, but we know there is still much more work to be done. We also understand that these upgrades will take time and require additional resources, and that we will encounter more hurdles along the way. We will stay the course. Most importantly, we are committed to ensuring these essential IT systems are reliable for the examiners and users working to further the vital role that innovation, entrepreneurship, and intellectual property play in meeting the great challenges of our time.

Above the Law A Legal Web Site – News, Insights, and Opinions on Law Firms, Lawyers, Law School, Law Suits, Judges and Courts

LJN - Internet Law & Strategy The newsletter publishing arm of ALM, publishers of The National Law Journal, The American Lawyer and legal newspapers of record throughout the U.S.

  • Ticket Refund Suits Against StubHub to Get MDL Treatment
    on September 1, 2020 at 5:07 am

    Online ticket reseller StubHub faces lawsuits over allegedly unrefunded event tickets in California, after a federal judicial panel ordered that similar cases from jurisdictions in multiple states be coordinated.       

  • Facebook and Instagram Developers Sued for Privacy Violations In U.S. and UK
    on September 1, 2020 at 5:05 am

    Facebook filed two separate lawsuits in the UK and U.S. that the company says is part of an ongoing effort to hold developers that abuse its platform accountable.       

  • What's in a Name? Booking.com and Consumer Perception Evidence
    on August 1, 2020 at 5:09 am

    In the first case in U.S. Supreme Court history argued by telephone, the Court ruled 8-1 in favor of Booking.com, holding that it could register as a trademark its eponymous domain name BOOKING.COM.       

  • What's In a Name? Booking.com and Consumer Perception Evidence
    on August 1, 2020 at 5:09 am

    In the first case in U.S. Supreme Court history argued by telephone, the Court on June 30, 2020 ruled 8-1 in favor of Booking.com holding that it could register as a trademark its eponymous domain name BOOKING.COM.       

  • TRO Bid in Arts Case Results in COVID-19 Rebuke from Judge
    on May 1, 2020 at 5:09 am

    At this moment in COVID-19 time, if your case involved stopping the sale of counterfeit unicorn products on the Internet, sorry, that wouldn't be an emergency. That was the message from U.S. District Judge Steven C. Seeger, in a decision denying a request for a temporary restraining order filed on behalf of Art Ask Agency, the exclusive licensee for the fantasy art of British artist Anne Stokes, who is popular among the Dungeons and Dragons crowd.