Litigation News

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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.

  • Eliminating Willfulness as a Prerequisite to Recovering an Infringer's Damages in Dilution Cases
    on June 1, 2020 at 5:11 am

    Romag Fasteners, Inc. v. Fossil, Inc. The Supreme Court, settling a circuit split, held that, although highly important, willfulness is not a prerequisite for a trademark infringement plaintiff to obtain a profits award.       

  • U.S. Supreme Court Rejects 'Defense Preclusion' in Trademark Suit
    on June 1, 2020 at 5:09 am

    On May 14, 2020, the U.S. Supreme Court resolved a circuit split, finding that any preclusion of litigation defenses must comply with traditional res judicata principles, and ruling that Lucky Brand was not precluded from asserting its defenses in its long-standing trademark litigation against Marcel Fashions Group       

  • Artificial Intelligence and Copyright: Ownership and Fair Use
    on June 1, 2020 at 5:07 am

    Machine learning allows certain AI to create entirely new content based upon the materials it used to learn. In the process of creating new content, AI may create copies of copyrighted works in memory storage as a byproduct of its overall output sequence. This article explores authorship and ownership of such AI-generated content, and to what extent, if any, can copyrights be infringed upon when AI reproduces copyrighted works for machine learning.       

  • You've Made Your Bed, Now Lie In It Binding Settlement Agreement Defeats A Post-Settlement Judgment
    on June 1, 2020 at 5:05 am

    Holding that the parties' executed agreement mooted the issues in the case, the Federal Circuit recently reversed a district court's decision to grant summary judgment of non-infringement despite the parties' agreement. The decision builds upon prior Federal Circuit case law giving effect to settlement agreements.       

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

    Article III Inter Partes Review Decision Precluded By Congress, SCOTUS Rules SDNY: Video Game Makers Not Violating Copyright with NBA Player Tattoos       

Planet Depos We Make It Happen

  • Can You Hear Me? Audio Tips for Your Remote Deposition
    by Suzanne Quinson on May 27, 2020 at 5:30 pm

    Clear, consistent audio is key. Here are some small things you can do that have a big impact on audio, and your remote deposition! The post Can You Hear Me? Audio Tips for Your Remote Deposition appeared first on Planet Depos.

  • The Modern Court Reporter and COVID-19 (Podcast)
    by Suzanne Quinson on May 21, 2020 at 5:45 pm

    Most court reporters had some experience with remote depositions pre-COVID. Shifting to fully remote depositions in these strange times has proven a challenge to many who are now experiencing remote depositions, but not so the modern court reporter! As discussed on the latest episode of Planet Depos’ podcast The Modern Court Reporter, PD reporters and The post The Modern Court Reporter and COVID-19 (Podcast) appeared first on Planet Depos.

  • A Safe Return to In-Person Litigation: The Planet Depos Guide
    by Planet Depos on May 19, 2020 at 5:00 pm

    Planet Depos is heavily invested in the safety and health of our staff, contractors, and guests. As areas stabilize from the pandemic and government stay-at-home orders are lifted, Planet Depos will begin to safely reopen administrative and satellite offices. We are introducing advanced cleaning and disinfection standards so employees and visitors to our offices will The post A Safe Return to In-Person Litigation: The Planet Depos Guide appeared first on Planet Depos.

  • Tips To Share With Your Witness for Remote Depositions
    by Suzanne Quinson on May 12, 2020 at 3:00 pm

    Holding a deposition online requires a few extra pointers. Here are our practical tips for your witness for that upcoming remote deposition. The post Tips To Share With Your Witness for Remote Depositions appeared first on Planet Depos.

  • Remote Depositions FAQ Part 2: Zoom Security
    by Suzanne Quinson on May 6, 2020 at 3:30 pm

    A lot of people are now using Zoom for the first time for their remote deposition. At Planet Depos, Zoom has been the platform of choice for mobile videoconference (MVC) for years. Understandably, law firms unfamiliar with the software have valid questions about the security features available. We at Planet Depos are fully confident in The post Remote Depositions FAQ Part 2: Zoom Security appeared first on Planet Depos.

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

  • Spotlight on Commerce: Thomas Hong, Primary Patent Examiner
    by USPTO on May 20, 2020 at 2:10 pm

    Guest blog by Thomas Hong, Primary Patent Examiner, U.S. Patent and Trademark Office Editorial note: This post is part of the Spotlight on Commerce series highlighting the contributions of Department of Commerce employees in honor of Asian American and Pacific Islander (AAPI) Heritage Month. Thomas Hong (right) with officers from the Korean-American Intellectual Property Organization at the USPTO. I am a primary patent examiner at the U.S. Patent and Trademark Office (USPTO). I review patent applications within the mechanical engineering technology center, specializing in amusement and education devices. I also serve as president of the Korean-American Intellectual Property Organization (KAIPO), the USPTO’s youngest affinity group, which aims to promote and support the growth and development of Korean-American intellectual property professionals. It took me more than a decade to reach where I am today. Upon graduating with a bachelor’s degree in mechanical engineering at Seoul National University in South Korea in 1999, I immigrated to America with my family in pursuit of new opportunities. I continued my studies at Purdue University and obtained a Master of Science in Mechanical Engineering in 2004, and my thesis topic related to Computer Aided Design and Manufacturing. This led me to my first career as a software developer with government consulting firms. While it was a good job, I found that it was not the right career path for me. I felt that I rushed into the job and surrendered to the industry’s demands. I felt like I lost sight of my passions and interests and didn’t see myself growing in this field. I decided to change my career path and enrolled at the George Mason School of Law (now known as Antonin Scalia Law School). As a first generation immigrant, law school was an eye-opening experience for me. I was one of only a few among my classmates holding a college degree from a non-English speaking country. I found myself not only having to develop my fluency in English, but also having to start learning a completely new language: law. While these years weren’t easy, I realized how fortunate I was to have a family and community that was incredibly supportive of me as I pursued my goals and ambitions. Many first-generation immigrants sacrifice these kinds of opportunities for their future generations. Law school was a turning point for me. It was a time for self-reflection. It was during law school that my mindset began changing from a singular, self-serving view to a more encompassing community view. I looked not only at how I can better myself, but also at how I can better serve and contribute to my community and beyond. I started volunteering for communities I belonged to. I was a marshal at the PGA Tour Tournament, was on the board of directors in my neighborhood’s community group, and served as an officer for the Korean-American Intellectual Property Bar Association (KAIPBA). I ultimately chose to work for the federal government because, to me, being a career civil servant is a privilege. This unique career gives me an opportunity to serve our biggest community, the public, while simultaneously developing my career and growing as a person. One of my proudest moments of my time here at USPTO has been working with my colleagues to establish an affinity group for Korean-American professionals at the USPTO: KAIPO. The USPTO’s workforce encompasses multi-generation Asian immigrants, including Korean-Americans, who face unique challenges and have extraordinary knowledge and experiences to pass on. My hope for KAIPO is to connect these different generations so that we can share our unique experiences and help each other grow and develop in our professional and personal lives. My advice for those who are interested in a federal government career is to continuously strive to learn and develop your competencies, and find your passions. When you find where these align, you begin to find how you can best contribute and serve the public. Asian American and Pacific Islander Heritage Month is a time for celebration and a time to recognize contributions of the Asian American and Pacific Islander community in this country. It was a long journey, spanning two countries, for me to get to this point in my career, and I am proud and honored to be here at the USPTO working in public service alongside so many dedicated and hardworking individuals. Ed. Note: This post is part of the Spotlight on Commerce series highlighting the contributions of Department of Commerce employees in honor of Asian American and Pacific Islander (AAPI) Heritage Month.

  • Spotlight on Commerce: Elizabeth Chu, Social Media Specialist and Acting Website Editor-in-Chief
    by USPTO on May 5, 2020 at 8:42 pm

    Guest blog by Elizabeth Chu, Social Media Specialist and Acting Website Editor-in-Chief, USPTO Editorial Note: This post is part of a series in honor of Public Service Recognition Week (PSRW), showcasing the vast and diverse work of Commerce employees collectively working together to deliver important services that are helping the American economy grow. Elizabeth Chu (pictured first row, center) and USPTO communications staff at the “Apollo 50: The role of intellectual property in space commerce” event on July 23, 2019. As the Social Media Specialist for the U.S. Patent and Trademark Office (USPTO), I am responsible for planning, implementing, and monitoring the agency’s social media strategy to increase brand awareness and strengthen our digital presence. Recently, I stepped in as the Acting Website Editor-in-Chief, due to the recent departure of a colleague. Adding website responsibilities and new skills to my current role as Social Media Specialist—all during a pandemic—has been a whirlwind, to say the least. Luckily, I’m surrounded by generous, dedicated, and talented colleagues in the Office of the Chief Communications Officer who help and support me when I need it. It’s a privilege to work side-by-side with professional and expert communicators in a fast-paced work environment. My parents and sisters immigrated to the United States from South Korea in the 1980s. I was born in North Carolina, but my family moved to Maryland when I was very young and raised me there. Growing up, my parents and sisters have always been my main influences. Like most first-generation immigrants, my parents worked hard, long days in blue-collar jobs. Watching them, I learned that diligence, honesty, and a good education were important for a successful career and life. I feel fortunate to have a family that’s supportive of all my passions and career pursuits. I studied art history at the University of Maryland and, after graduation, started my first full-time job in Washington, D.C. Halfway through my three years at the National Gallery of Art, I applied to an arts management program at American University. After receiving a Master of Arts in arts management, I began working for the Washington Ballet in the marketing and communications department where I gained a lot of marketing and communications experience. Nonprofit arts organizations are fast-paced, hardworking entities with limited budgets. Supporting the arts was a fulfilling experience because I could share my passion for the arts every day with others. Although I no longer work for arts organizations, I still seek volunteer opportunities with museums or studio arts classes. Transitioning from a small, nonprofit arts organization to a federal agency with over 13,000 employees was initially nerve-racking, but it’s been one of the most rewarding changes of my life. Not only do I have the pleasure of working with a creative and talented team of communicators at the USPTO, but I have also had the unique opportunity to work on award-winning projects such as 10 Million Patents and the commemoration of the 50th anniversary of the moon landing. The former is a significant milestone that we planned for and executed over a multi-month timeline with a detailed communications plan. The campaign culminated with an official signing ceremony at the White House and a special event at George Washington’s Mount Vernon. The moon landing event was significant to me because I led and coordinated the communications plan for that project. Our focus was on space innovation, technology transfer from the Apollo missions, and an overview of the current Administration policy on space exploration and space commerce. This communications plan culminated in one of the biggest events in recent USPTO history and featured the NASA Administrator Jim Bridenstine and Secretary of Commerce Wilbur Ross. These projects were successful because of the extremely talented and knowledgeable communicators on my team. Working on major, successful campaigns that help educate the public about the importance of intellectual property is an honor and privilege. It is especially rewarding that I get to do this work with over 13,000 other colleagues dedicated to American innovation and who work hard every day on behalf of inventors, makers, and creators across the United States. I am proud to work in public service at the U.S Patent and Trademark Office because I know that my efforts to educate the public and raise public awareness support innovators of all ages, genders, and backgrounds.

  • PTAB launches the Legal Experience and Advancement Program (LEAP) for the next generation of patent practitioners
    by USPTO on April 28, 2020 at 8:51 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 Board of the USPTO (Photo by Jay Premack/USPTO) Today, the USPTO officially launches the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP). LEAP is designed to foster development of the next generation of patent practitioners by creating opportunities to gain the proper skills and experience in oral arguments before the Board. The USPTO understands that “stand up” speaking opportunities before tribunals are limited and that gaining courtroom experience is advantageous for practitioners in their career development. Additionally, having a patent bar with strong oral advocacy skills benefits clients, the USPTO, the courts, and the whole IP system. A LEAP practitioner is defined as someone who is new to the practice of law or new to practice before the PTAB. To qualify as a LEAP practitioner, a patent agent or attorney must have three or fewer substantive oral arguments in any federal tribunal, including PTAB, and seven or fewer years of experience as a licensed attorney or agent. By arguing before the PTAB, LEAP practitioners gain oral advocacy skills that will benefit them when appearing before any tribunal in the future. Likewise, they may reap the reward of drafting or contributing significantly to an underlying motion, brief, oral argument, or client position. In exchange for giving a LEAP practitioner the opportunity to present argument as part of the program, the Board will grant additional argument time to the party, typically up to fifteen minutes depending on the length of the proceeding and the PTAB’s hearing schedule. The extra argument time is intended to incentivize appellants and parties to support LEAP practitioners. This plays a key role in helping the USPTO achieve its goal of offering legal experience and advancement to a diverse group of practitioners. (Photo by Jay Premack/USPTO) A LEAP practitioner may conduct the entire oral argument or may share time with other counsel, provided that the LEAP practitioner is offered a meaningful and substantive opportunity to argue. For example, a LEAP practitioner may argue claim construction, a motion to exclude evidence, or a patentability issue. More experienced counsel may assist a LEAP practitioner, if necessary, during oral argument and may clarify any statements on the record. It is easy to participate in LEAP. For an appeal, an appellant should send an email to PTABHearings@uspto.gov at least five business days before the hearing. Similarly, for an AIA proceeding, a party should send an email to Trials@uspto.gov at least five business days before the hearing. The program becomes effective on May 15, 2020, and LEAP practitioners may begin filing requests to participate in this program starting on that day. The USPTO will also provide training to familiarize LEAP practitioners with oral argument procedures before the PTAB. The training will address the flow of a hearing, effective use of hearing time, use of demonstratives during a hearing, and other oral advocacy tips. This training will provide an added measure of confidence in the preparation of LEAP practitioners for both the PTAB case at hand, as well as any IP litigation down the road. Innovation and the intellectual property system behind it form the engine of economic growth and development. Expanding this ecosystem is critically important to ensuring America’s continued economic strength and technological leadership. New practitioners are a key element of this effort, and it is important to expand their participation. LEAP is one step in that direction. For more information on the USPTO’s resources on expanding innovation, please visit our newly launched webpage at uspto.gov. We look forward to working with our stakeholders and the bar to further develop this and similar programs.  

  • Recognizing World IP Day
    by USPTO on April 27, 2020 at 1:51 pm

    Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu Twenty years ago, the World Intellectual Property Organization designated April 26 as World Intellectual Property Day to recognize the importance of innovation, creativity, and the positive role of intellectual property. “Innovate for a Green Future” is the theme for 2020’s World Intellectual Property Day, encouraging the world to build on “green tech” ideas to improve our health, well-being, and economy. There is a long history of inventions that have enhanced our quality of life, from reducing air pollution to keeping food fresh. Consider the example of the catalytic converter. In response to studies about the growing dangers of smog in Los Angeles, French-American engineer Eugene Houdry pioneered catalytic converter devices for industrial factory smokestacks. He subsequently developed catalytic converters for gasoline engines. These devices convert pollutants from the exhaust gas into less toxic substances. Today, the device is standard on all American cars. In 1956, Houdry was awarded U.S. Patent No. 2,742,437 for Catalytic Structures. In 1990, he was inducted into the National Inventors Hall of Fame for Catalytic Cracking. More recently, horticulturist Sylvia Blankenship and biochemist Edward Sisler developed a novel compound that significantly extends the freshness and storage life of fruits and vegetables by mitigating the effects of ethylene, which ripens produce. Their invention enables year-round access to fresh food and reduces food waste. This year, Blankenship and Sisler will be inducted into the National Inventors Hall of Fame for their invention, U.S. Patent No. 5,518,988 for 1-MCP for Fruit, Vegetable and Flower Freshness. You can learn more about these inventors and other pioneers of technology through the National Inventors Hall of Fame inductee database. The USPTO and IP communities are working together to empower inventors, entrepreneurs, and pioneers in the green tech space and beyond through Patents for Humanity, an annual awards competition recognizing innovators who use game-changing technology to meet global humanitarian challenges. The program provides business incentives for reaching those in need. Winners receive an acceleration certificate to expedite select proceedings at the USPTO as well as public recognition for their work. The awards showcase how patent holders with vision are pioneering innovative ways to provide affordable, scalable, and sustainable solutions to improve the human condition. We currently live in the midst of a global pandemic. As always, inventors will create new technologies that will help us overcome these unprecedented challenges. On this World IP Day, please take a moment to recognize all inventors and entrepreneurs and to appreciate the innovations all around us that make our lives happier and healthier. Please view our World IP Day 2020 video message.

  • Spotlight on Commerce: Allison Bourke, Supervisory Patent Examiner
    by USPTO on March 31, 2020 at 7:45 pm

    Guest blog post by Allison Bourke, Supervisory Patent Examiner, U.S. Patent and Trademark Office Allison Bourke, Supervisory Patent Examiner, U.S. Patent and Trademark Office Ed. note: This post is part of the Spotlight on Commerce series highlighting the contributions of Department of Commerce women during Women’s History Month. I am a supervisory patent examiner at the Department of Commerce’s United States Patent and Trademark Office (USPTO) in electrochemistry technology, specifically solar cells, thermoelectrics, fuel cells, and batteries. I support 15 patent examiners and provide assistance so they can get their patent applications reviewed in a timely manner. I started at the USPTO as a patent examiner in Alexandria, Virginia, in 2009, after attending the University of Arizona and University of Michigan for degrees in chemical engineering, and I absolutely loved my experience in the D.C. metro area. I grew up in the mountains of northern Arizona, so when the opportunity to work in the USPTO office in Denver arose (the Rocky Mountain Regional Office opened in 2014), I packed up my stuff and cats and headed west! I have really enjoyed the small office experience in Denver (100 employees vs. thousands of employees in Alexandria), and the outdoor opportunities in the area are endless. In Denver, I have become a mentor to a young elementary school girl who is attempting to conquer her multiplication tables. One of my proudest accomplishments at the USPTO has been helping found, with other like-minded colleagues, two women’s organizations: Women in Science and Engineering at the Alexandria campus and Women in Technology and Science at the Rocky Mountain Regional Office. Both organizations have a mission to promote STEM/intellectual property (IP) for K-12 and college students and support members through social and enrichment activities. We have organized, given talks to local college Society of Women Engineers sections about careers in IP, and, with the Rocky Mountain Office’s Outreach team, assisted with Girl Scout IP Patch days and women’s IP networking events with outside organizations. Both organizations celebrate women all year long but focus on Women’s History Month with numerous activities, such as hosting inspirational talks, tea parties, and strong women movie-viewing parties. I look forward to March each year so we can remind everyone of all the awesome accomplishments of women throughout history and inspire those for the future!

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.

  • 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.       

  • Digital Dive: New Report Reveals Opportunities for Improvement on Digital Marketing Strategy for Law Firms
    on December 1, 2019 at 2:05 pm

    For those of us who have devoted more years in legal marketing than we'd care to admit, it's heartening to see the field receiving the recognition it deserves. The demand for top talent has never been higher and marketing plans are getting more attention from firm management. Still, there is more work for law firms to do. That's particularly true in digital marketing.       

  • IP News
    on December 1, 2019 at 1:24 pm

    U.S. Supreme Court to Hear Booking.com Trademark Case       

  • Exploring the Nebulous Boundaries of Trade Dress
    on October 1, 2019 at 7:17 am

    Now that we are in the digital age, questions have been raised about the trade dress of websites and apps.       

  • Legal Tech: Demystifying Social Media Discovery
    on October 1, 2019 at 5:03 am

    Social Media Escapes an Easy Definition, But You Know It When You See It While it would be helpful to understand the technical details of collecting data from various social media platforms, what's more important is what parts of social media might be relevant to a dispute and what that means for both the requesting and producing parties.