Search

The article discusses the importance of Section 101 to modern patent litigation, focusing on its application by district courts on Section 101 motions since the U.S. Supreme Court's Alice decision. It mentions the increasing number of decision on Section 101 motions with significant success rates, with particular consideration on the importance of venue in the viability of a patent-eligibility challenge.

The article discusses the role of inter partes reviews (IPR), in the implementation of Leahy-Smith America Invents Act (AIA) which aims to improve patent quality along with limiting counterproductive and unnecessary litigation costs. Topics discussed include status of the district court litigation in relation to the progression of a litigation action, simplification of the issue for the trial by IPR, and undue prejudice or a clear tactical advantage in case of filing the IPR petition.

The article explores the impact of the intersection of Federal District Court and the U.S. Patent and Trademark Office (PTO) rules and obligations on a patent attorney who is simultaneously engaged in patent litigation and PTO hearings. Litigation elements affected by an attorney's dual-proceeding representation includes appearance in both hearings and attorney-client privilege. The author encourages patent attorneys in dual-proceedings to increase their awareness of various professional codes.

The article focuses on the so-called Egyptian Goddess test for design patent infringement in the U.S. It reveals that district courts which look at the scope of design patents under the test have discovered that the scope of design patents is narrow. It discusses summary judgment rulings which show that prior art played a vital role in identifying the scope of the protected design. A ruling held by the Federal Circuit in a case involving Crocs Inc. stresses that the emphasis should not be on differences in individual features, but on the overall design.

The article focuses on the appealing of trademark registration refusal and paying of the U.S. Patent and Trademark Office (USPTO)'s legal fees. Topics discussed include refusal to register in federal district court of the U.S. by the unsuccessful trademark applicant, final decision of the court that may or may not be in favor of the applicant and expenses of the proceeding that includes the PTO's attorney's fees.

The article discusses the split of authority over the extent to which an action under the Uniform Trade Secrets Act (UTSA) preempts other claims based on misappropriation of confidential information. This was recognized by the U.S. District Court for the District of Utah in its decision in the case ClearOne Comms., Inc. v. Chiang. The court decision highlighted the inconsistency of application of the UTSA preemption clause and its implications for trade secret misappropriation actions.

The article reports on the decision of the U.S. District Court on July 14, 2008 in favor of eBay in its four-year litigation with Tiffany for the sale of counterfeit products of the latter at eBay's Web site. Even if both parties were aware of the counterfeit products, it was not noted enough reason to impose the withdrawal of said listings. The decision reportedly makes it clear that there is no assurance with online market Web sites to drive out potential infringement, the court held that trademark owners are responsible to police its mark, not eBay's.