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.

  • 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.       

  • States Win Some and Lose Some on Copyright Front at Supreme Court This Term
    on August 1, 2020 at 5:07 am

    The Supreme Court decided two copyright cases this term, both involving states. This article discusses the cases and their likely impact on copyright law going forward.       

  • Weighing the Benefits: How Much Weight Will Your Survey Have in Court?
    on August 1, 2020 at 5:05 am

    As consumer surveys become increasingly common forms of evidence in matters involving copyright, patent or trademark infringement, so too do Daubert challenges that attempt to disqualify that evidence. However, getting admitted into court is no guarantee of success — you are not over the entire Daubert hurdle just yet. The next step is ensuring that your survey is convincing the fact finders that your survey's results are dependable and useful.       

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

    Federal Circuit: Faulty Claim Construction Does Not End Patentability Determination Federal Circuit: Notice to Market Bio Product Not Negated By New Applications       

  • What You Need to Know About the USPTO's Proposed Rule Changes to PTAB Trials
    on July 1, 2020 at 5:11 am

    On May 27, 2020 the U.S. Patent and Trademark Office (USPTO) proposed rule changes to govern inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review proceedings at the PTAB. This article provides a summary of each proposed rule change and its potential impact on PTAB practice.       

Planet Depos We Make It Happen

  • 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.

  • How To Take A Deposition in Modugno, Italy
    by Michael Anania on July 8, 2020 at 5:00 pm

    Although global travel has essentially been put on hold due to the COVID-19 pandemic, you can still plan ahead for your next deposition abroad. The post How To Take A Deposition in Modugno, Italy appeared first on Planet Depos.

  • The Remote Deposition and the Technician
    by Suzanne Quinson on June 24, 2020 at 5:45 pm

    What exactly is the technician’s role in a remote deposition, and why should you schedule one for your proceeding? We explore in this article. The post The Remote Deposition and the Technician appeared first on Planet Depos.

  • Taking Your International Depositions Remote
    by Suzanne Quinson on June 10, 2020 at 5:00 pm

    With most depositons being taken remote, there is virtually no limit to where you can take them! Learn more about international remote depositions. The post Taking Your International Depositions Remote appeared first on Planet Depos.

  • How To Take A Deposition in Slovakia
    by Michael Anania on June 3, 2020 at 5:30 pm

    Although global travel has essentially been put on hold due to the COVID-19 pandemic, you can still plan ahead for your next deposition abroad so you hit the ground running. We’re bringing you spotlights on some unique countries around the globe so that your next deposition can go smoothly once things are back to normal. The post How To Take A Deposition in Slovakia appeared first on Planet Depos.

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

  • 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.

  • First-rate information technology infrastructure supports USPTO teleworkers nationwide
    by dhong2 on July 16, 2020 at 7:05 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 USPTO Remember that old U.S. Post Office creed, “Neither snow nor rain nor heat nor gloom of night stays these couriers from the swift completion of their appointed rounds?” That’s how we feel about our work at the United States Patent and Trademark Office (USPTO). Granted, we’ve faced much worse in the past three months than just inclement weather. Even so, the USPTO’s 13,000 employees have endured the historic challenges and, through an efficient teleworking system, have kept America’s engine of innovation moving forward. Today, so much of what we do at the USPTO relies on our information technology (IT) systems. And there’s no doubt that the pandemic and the resulting stay-at-home orders have tested the limits of these systems. But, after the intensive IT stabilization and modernization efforts of the past two years, the USPTO was well prepared when our physical offices closed in March. We transitioned to a remote workforce with virtually no disruption, despite having an unprecedented number of employees accessing our IT systems from home. We now have, on average, over 13,000 secure Virtual Private Network (VPN) connections to our campus every day. This is a 75 percent increase over our daily average prior to the pandemic. We also now have over 1,200 virtual meetings each day using our secure video teleconferencing tools, connecting an average of 6,000 participants from among our workforce, our contractors, and the public at large. Our teleconferencing systems allow employees to conduct a variety of meetings and applicant interviews, and even hold virtual hearings before the Patent and Trademark Trial and Appeal Boards. To fully leverage these collaboration tools, we undertook five system upgrades and configuration enhancements to our teleconferencing infrastructure. In addition, we planned, staged, and executed the procurement and shipment of 2,000 monitors and 3,200 printers to teleworking employees in the first few weeks after the stay-at-home order was issued. We also deployed over 400 broadband routers to recently hired examiners to provide better connectivity to the USPTO systems. As we noted last year, fully modernizing the USPTO’s technology systems to industry standards is a large-scale project that will require significant time and effort. Much work remains to be done, and there will undoubtedly be hurdles along the way. Even so, our success in transitioning to almost an entire work-from-home workforce demonstrates that we’ve made remarkable progress in a short period of time. The USPTO remains committed to helping inventors and entrepreneurs weather this crisis and hit the ground running once it passes. And, in doing so, we will continue to enlist modern ways of doing business, including improving the performance and reliability of our IT infrastructure and other systems. Our employees and our IT team continue to make us very proud. They work tirelessly to ensure that nothing stops our service to America’s innovators.

  • 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.  

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.

  • 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.       

  • 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