Guest Contributors


Sara Harrington

Assertion Risk Mitigation Opportunity Through Patent Acquisition

Posted 9 months ago

In this post, we’ll analyze LinkedIn’s patent acquisition process and the results of its targeted buying program. While the increase in LinkedIn’s filings helped to grow the total patent portfolio, challenges remain. First, while organic filings tend to focus on LinkedIn’s core technology and therefore help a great deal with counter-assertion against potential competitors, they are less helpful when it comes to large corporate asserters further outside LinkedIn’s core technology area. Second, the priority dates on all the new filings are recent (after 2011). Earlier priority dates (old inventions) help the most in counter-assertion, but LinkedIn would have had to file for those patents in the 2000s. Fortunately, the market for buying and selling patents is robust and allows companies to fill in where they have weakness in their portfolios. Focused patent buying allowed us to build a counter-assertion portfolio to help bolster any negotiations.

Amanda G. Ciccatelli

The Growing Problem of Online Counterfeit Products

Posted 9 months ago

Many states have statutes that make counterfeiting a state crime, but often only if the trademark is registered in that state. According to Lo Cicero, state registrations give local prosecutors and law enforcement officers jurisdiction – and they may be more able and willing to tackle local counterfeiters than are busy federal prosecutors. Thus, where budgets will allow and brand owners have significant counterfeit concerns obtaining state trademark registrations in at least several states, including California and New York, could be a worthwhile investment.

Bernard Knight

How to Get More Business When Patent Litigation Filings are Down

Posted 9 months ago

Lawyers often wonder how to enhance their marketability and in the process, generate more revenue or improve their image.   After all, success at a firm is about “revenue generation.”  Success in a corporation or in the government also depends on your credibility and your ability to be a “go-to” person within the company or government agency.   To be a successful lawyer, you need to have a brand.  I explain below 6 easy ways to make your mark… Law firms are fighting for a smaller pool of work and as a result, are required to compete for that work at more competitive rates. If you want to get the work and charge higher rates, there must be a reason for the client to hire you. In other words, it’s your brand that counts.

Aaron Reinhardt

Obviousness-Type Double Patenting Considerations

Posted 9 months ago

Obviousness-type double patenting (“ODP”) is a judicially created doctrine aimed at preventing patent owners from extending patent protection beyond the statutorily afforded term. Prior to the Uruguay Round Agreements Act (“URAA”) of 1994, which changed the term for a U.S. patent from seventeen years from patent issuance to twenty years from the earliest (non-provisional) filing date, patent applicants could theoretically extend their patent term without end. For example, a series of patent applications covering the same or similar subject matter, with slightly different claims could be filed. Further, applicants could try to intentionally delay prosecution and, thus, stagger issuance of the resulting patents. After the switch to a twenty year term from the earliest (non-provisional) filing date by the URAA, it has been advocated that the ODP doctrine is now moot and should be eliminated, because applicants can no longer serially extend patent term. However, the Federal Circuit’s decisions in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014), and Abbvie v. Mathilda & Terence Kennedy Institute, 764 F. 3d 1366 (Fed. Cir. 2014), have reaffirmed the ODP doctrine.

Lee Burgunder

Copyright Preemption in the Smart Phone Society: The Ninth Circuit Clouds the Picture in T3Media

Posted 9 months ago

There is no question that smart phones have transformed the social and economic structure of society, and the integration of increasingly effective cameras has helped spark the revolution.  It is now the norm for people to document their lives through images of themselves and those around them, and to share those images through social media, where others then copy, edit, and reuse them within the blink of an eye.  Just imagine all the ways that photos are now taken, posted and virally spread via social media.  For instance, I have taken selfies, asked strangers to take pictures of me with my hiking buddies, and asked friends to send me images of people from their camera rolls. I have taken photographs of well-known personalities at private gatherings, and snapped pictures of individuals when they had no idea I was even there.   Sometimes I decide to post these personal images on Instagram or Facebook, and then away they go… Unfortunately, the Ninth Circuit failed in T3Media to fully and accurately address the limits of copyright preemption on state law claims involving the personal rights of individuals appearing in photographs.

Joseph Allen

Proposal from Senator King Won’t Reduce Drug Prices, Just Innovation

Posted 9 months ago

Many were stunned to learn that Senator Angus King (I-ME) included language undermining the Bayh-Dole Act in the report of the Senate Armed Services Committee as it approved the National Defense Authorization Act. The the language “directs” the Department of Defense (DOD) to issue compulsory licenses under Bayh-Dole “whenever the price of a drug, vaccine, or other medical technology is higher in the U.S. than the median price charged in the seven largest economies that have a per capita income at least half the per capita income of the U.S.” The provision gives the Department no discretion— it must comply. Apparently no one bothered to check with DOD or anyone familiar with the law to discover that this language incorporates a long discredited theory of how Bayh-Dole operates, or of the significant damage it would do to the development of badly needed medicines and the U.S. economy. The bill is headed to the full Senate for consideration. So before that happens, let’s consider why this is such a bad idea.

Steven Blackburn

View from the Courtroom: What to Expect When You Try to Get a TRO in Your Unfair Competition Case

Posted 9 months ago

Experience shows that most unfair competition or trade secret theft issues can be resolved without the need for litigation; often, an exchange of letters between the parties’ respective attorneys is sufficient to resolve the matter. However, litigation is sometimes unavoidable, and when it occurs, the employers involved are often surprised by how fast an unfair competition case can move to a practical conclusion, and how little time there might be to prepare for the crucial court hearing… The TRO hearing is often the be-all and end-all of unfair competition litigation because, if it is granted, the unfair competitive activities are immediately stopped, any stolen trade secrets are returned, and the competitive damage to the plaintiff-employer is contained or stopped. The case is usually thereafter resolved by a settlement. Essentially, if the TRO is granted, there typically is not much else of consequence to litigate between the parties.

Robert Schaffer

Causal-nexus for a permanent injunction only requires ‘some connection’ to infringement

Posted 9 months ago

The district court denied a request for a permanent injunction against Metaswitch after a jury found infringement because Genband failed to establish irreparable harm. More specifically, the court found that Genband failed to establish a causal-nexus between infringement and irreparable harm, i.e. that “the patent features drive demand for the product.” The Federal Circuit remanded because this causal-nexus requirement was too stringent. The Federal Circuit explained that the court could not have confidence as to the answer to the causation question under the standard properly governing the inquiry or whether there is any independent ground for the district court finding no irreparable harm or otherwise denying an injunction.

Joseph Robinson

CAFC Reverses and Remands Attorney’s Fees Issue in Newegg’s Favor

Posted 9 months ago

The district court made clearly erroneous factual findings that independently supported reversal. Particularly, the record supported a finding that this case was exceptional given the weakness of AdjustaCam’s litigating position. The evidence offered by AdjustaCam showed that its lawsuit was baseless. However, the district court instead found that AdjustaCam’s litigation position was not exceptional because Newegg’s ball-and-socket products were constrained in such a way that AdjustaCam could reasonably argue that it rotated on a single axis, consistent with the original district judge’s Markman order. But the Court pointed out that AdjustaCam never advanced this argument.

Robert Schaffer

PTAB’s Claim Construction Regarding Means-Plus-Function Limitation Was Erroneous

Posted 9 months ago

The Federal Circuit vacated and remanded the Board’s finding of obviousness of certain challenged claims based on a means-plus-function limitation, affirmed the Board’s finding of obviousness as to other challenged claims and affirmed the Board’s findings that the prior art discloses all other limitations of the challenged claims on appeal… In a patentability determination, the Board must identify the structure of a means-plus-function limitation disclosed in the specification; it is insufficient to merely disagree with patentee’s arguments. Additionally, if a practitioner reopens prosecution and amends claims during inter partes reexamination, additional prior art can be cited against the amended claims.

Sara Harrington

LinkedIn’s Patent Strategy

Posted 10 months ago

LinkedIn was a rapidly growing company with only 22 patents in its portfolio in 2012, putting itself at high risk for patent assertion. With a revenue reaching nearly $1 billion and a growth of 86%, LinkedIn knew it had to develop a patent strategy to reduce its risk profile. So what was LinkedIn’s patent strategy and how did it increase its patent filings? Let’s start at the beginning… The opportunities for risk mitigation can be divided into two categories: increasing organic filings to address future assertion risk and patent acquisition to address present and near future risk.

James Goodman

What Will Not Work to Protect Trade Secrets or Enforce Non-Competes in California

Posted 10 months ago

Employers should think twice before including the unenforceable provisions in employment contracts merely for their deterrent effect. Such a practice is risky. If an employer terminates an employee who refuses to sign an agreement that contains an unenforceable non-compete provision, such action would constitute a wrongful termination in violation of public policy and would entitle the employee to recover tort damages, including punitive damages, as well as economic damages… Given the strong protections against non-competes in California, it is too risky to require employees to sign employment agreements that contain these provisions. All employment agreements entered into with employees who live or work in California should be carefully reviewed to ensure compliance.

Dr. Masoud Vakili

Patent Portfolio Valuations – Importance of IP and Patents

Posted 10 months ago

Even though traditionally valuation professionals have used a combination of cost-based and market-based valuation, more and more practitioners are using income-based valuation in combination with market data.  The income-based model focuses on what potential monetization or potential impact on business a patent portfolio might have, and as such, it is much more dynamic and reliable… For patent portfolios of potential future value, technology risk is preferred over market risk and one could use current market data to benchmark future value while building an income-based valuation model.

Jennifer Tempesta

What TC Heartland v. Kraft Food Group Brands Means for Patent Infringement Suits

Posted 10 months ago

Under the Federal Rules of Civil Procedure, a party waives its right to assert a defense of improper venue when it fails to raise the defense in a pleading or with other Rule 12 motions.  Importantly, however, that waiver only takes effect if the defense was “available” to the party at the time of filing either the pleading or motion.  Many circuits, including the Federal Circuit, interpret that requirement by recognizing an intervening law exception to the waiver of a defense, whereby an intervening change in law makes available a defense that had not previously been available.  Does the Supreme Court’s decision in TC Heartland constitute a change in the law?  Was the defense of improper venue unavailable until May 22, 2017?

Amanda G. Ciccatelli

Who Owns the Rights to the Word ‘Covfefe’?

Posted 10 months ago

“Filing a trademark application with the goal of claiming a right to a particular term – with nothing more – is a fundamental misunderstanding of our trademark laws,” Alston & Bird partner Jason Rosenberg, explained. “Individuals and corporations rushing to design t-shirts and coffee mugs with phrases like ‘What the covfefe?’ on them aren’t likely to be able to claim ownership of the term, or stop anyone else from using it. You cannot simply hear a word you like, file a trademark application, and claim it as your own.  In the United States, the law requires more.”