Category Archive for "Newsletter"

3D image of black book

Third Circuit rejects copyright presumption in favor of permanent injunctions

After securing a copyright infringement verdict, it should be easier to obtain a permanent injunction against the infringing party, right? Not so in several jurisdictions. The U.S. Court of Appeals for the Third Circuit has now made it harder for copyright holders to get injunctive relief, even after prevailing in court. The plot thickens Vernon Hill, the longtime CEO of Commerce Bank, co-authored a manuscript in 2007, while still a bank employee. He left Commerce a few months before TD Bank purchased it. After Hill published a book in 2012, TD Bank sued him, alleging that he had infringed the never-published manuscript he’d co-authored while still at Commerce. The trial court found that the bank owned the copyright under a letter of agreement and that Hill’s book irreparably violated the bank’s “right to not use the copyright.” A year later, based on evidence that Hill continued to promote his book, the court issued a permanent
Read More
3D trademark symbol black

Actual consumer confusion irrelevant in trademark profits determination

It’s easy to understand why willful infringement deserves a harsher punishment than nonwillful infringement. But it’s not always so easy to understand the type of conduct that gives rise to the level of “willful.” The U.S. Court of Appeals for the Second Circuit has provided some helpful guidance on this issue, as well as the evidence required to justify an award of the infringer’s profits.

Read More
3D gavel image

Beyond words: Federal Circuit faults PTAB’s written description analysis

The Patent Trial and Appeal Board (PTAB) doesn’t always get it right. This was demonstrated once again in a case where the U.S. Court of Appeals for the Federal Circuit found that the board had improperly failed to consider some vital factors when evaluating whether a patent application contained the requisite written description of the invention. A question of plasticity Global IP Holdings LLC owns a patent on carpeted automotive vehicle load floors that have sandwich-type composite panels with cellular cores. The patent describes the load floors as including thermoplastic materials. Global filed a reissue application seeking to broaden the patent’s coverage. In particular, it replaced the term “thermoplastic” with “plastic.” The U.S. Patent and Trademark Office’s rules for reissue applications require an inventor to provide an oath or declaration specifically identifying the error relied on as the basis for reissue. The load floor’s inventor filed a declaration explaining that, at the time of the
Read More
3 car tire with rim

Auto parts’ aesthetic appeal doesn’t invalidate design patents

Holders of design patents received some welcome news recently from a case in which some auto parts distributors sought declaratory judgment for invalidity of design patents to sell parts that were covered by a major vehicle manufacturer’s designs. The U.S. Court of Appeals for the Federal Circuit decision sheds some valuable light on the type of functionality that can render a design patent invalid — and the type that won’t — as well as the importance of design patents.

Read More
3D image of gold paper clip

IP due diligence in corporate transactions

The strength of a company’s intellectual property portfolio often drives the value of corporate transactions. Regardless of whether you are the acquisition target or the buyer in a transaction involving IP, the due diligence process should be designed to reveal the value of the intangible assets—patents, trademarks, copyrights, and trade secrets. IP due diligence should ideally be conducted at the onset of negotiations. This not only allows a more reasoned value of the IP to be determined, but also enables proactive corrective action if any legal concerns are identified that may otherwise affect its valuation.

Read More
cover image for Feb March 2020 issue of IP law newsletter

Ideas on Intellectual Property Law – March 2020

Patterson Thuente IP is pleased to present the March issue of Ideas on Intellectual Property Law. We encourage you to read through it for ideas on how to best protect your intellectual property.

Read More
3D blue metallic copyright symbol

Limited protection: Inaccurate statement forfeits copyright infringement claim

Creative works are generally subject to copyright protection even without registration with the U.S. Copyright Office. But there are a number of important advantages to securing Copyright Registration — including the ability to file suit for copyright infringement. Normally, a registration certificate provides sufficient evidence of a valid registered copyright. However, inaccurate information in the certificate can invalidate the registration. In a recent case, the holder of one such certificate not only lost out on its ability to pursue an infringement claim, but also ended up on the hook for the would-be defendants’ attorneys’ fees and costs. The fact pattern Gold Value (doing business as Fiesta Fabric) creates textile designs and sells fabric to customers that use it to make clothing. Sanctuary Clothing, LLC, is a clothing manufacturer. Fiesta sued Sanctuary and several retailers, alleging they’d infringed a copyright it held for one textile design. Fiesta had registered the design as part of its Spring/Summer
Read More
3D envelope white

It’s official: Supreme Court says government isn’t a person – for patent purposes

Patentees welcomed a recent U.S. Supreme Court decision that significantly reduces the pool of potential challengers to the validity of existing patents. Thanks to the ruling, federal government agencies can’t take advantage of three patent review processes created less than a decade ago — because the federal government isn’t a “person” under patent law. Post office delivers a blow Return Mail, Inc., owns a patent for a method of processing undeliverable mail. After the U.S. Postal Service (USPS) introduced an enhanced address-change service to process undeliverable mail, Return Mail claimed the service infringed the patent and offered to license its invention to the USPS. In response, and prior to the America Invents Act of 2011 (AIA), the USPS sought a re-examination of the patent, but the U.S. Patent and Trademark Office (USPTO) confirmed the patent’s validity. Return Mail then sued the USPS, seeking compensation for the unauthorized use of its invention. While that lawsuit was
Read More
3D fishing boat

Sink or swim: Precise patent language scuttles infringement lawsuit

Generally, using precise and careful language in a patent application is wise. But providing a precise numerical value can work against a patentee when it comes time to bring an infringement claim. A boat manufacturer learned this lesson the hard way when it sued a rival for infringement. Boat maker makes waves Cobalt Boats, LLC, owns a patent on a swim step — a small platform attached to the stern of a boat, with a retractable step that makes it easier to get in and out of the water. Brunswick Corporation sells boats with an optional swim step. Cobalt sued Brunswick, alleging patent infringement. A jury found that Brunswick had indeed infringed the patent and awarded a per-unit royalty of $2,500, equaling $2.69 million. The district court enhanced the jury’s award and awarded damages for postverdict sales, resulting in total damages of almost $5.4 million. It also granted a permanent injunction against Brunswick. Not surprisingly, Brunswick appealed
Read More
3D red apple

PTAB rejects inherently obvious finding

What’s obvious to one person isn’t always obvious to another, and the same is true when it comes to patents. The U.S. Court of Appeals for the Federal Circuit demonstrated this principle in rejecting the Patent Trial and Appeal Board’s (PTAB’s) determination that a patent was inherently obvious. In doing so, it shed light on what factors establish when a claimed feature of a patented invention was “inherent” in an earlier invention.

Read More

Want to know the secrets to creating and protecting unforgettable brand names?

Choosing the wrong name can be expensive. Gain essential knowledge on trademarks and the naming process. Introducing The Guide for Pursuing Legally Defensible & High-Value Trademarks – a collaborate effort with the branding experts Olive & Company. 

GET YOUR GUIDE TODAY