March 28, 2016

Cannabis Trademarks Article Wins INTA Award

By Christopher R. McElwain LGP associate Christopher McElwain’s paper High Stakes: Marijuana and the USPTO’s “[Lawful] Use” Registration Criterion (working draft available here) was recently selected by the International Trademark Association as the winner of the 2016 Ladas Memorial Award. This paper takes a look at the tremendous surge in trademark applications related to the U.S. cannabis industry that began in 2009 and spiked significantly in 2014 and 2015. While these applications identify a range […]
December 3, 2015

Nautilus, Inc., v. Biosig Instruments: Back to the High Court?

By Nelson T. Rivera Nautilus Inc. (“Nautilus”) has petitioned the U.S. Supreme Court a second time to review a Federal Circuit ruling that a patent assigned to Biosig Instruments, Inc. (“Biosig”) is not indefinite. As reported by Matthew Siegal and Irah H. Donner in Law Journal Newsletters, the patent at issue “relates to grip activated heart rate monitors associated with exercise equipment, which are now ubiquitous on treadmills, step climbers and excercycles. The invention purportedly […]
November 16, 2015

Apple v. Samsung: The Future of Design Patents

By Nelson T. Rivera As reported in CNET, “Samsung’s hopes of scuttling a massive fine on alleged patent infringement of Apple products have been dashed . . . The US Federal Circuit Court of Appeals decided on [August 13, 2015] that it would not grant Samsung’s request for a new trial on whether nearly two dozen of the company’s mobile devices infringed on Apple’s design patents.” It therefore appears that “Samsung must either dole out […]
August 20, 2015

Akamai v. Limelight: Direct Patent Infringement by Multiple Parties

By Nelson T. Rivera On August 13, 2015, after nearly a decade of litigation, Akamai Technologies Inc. finally won its legal battle with rival content delivery network (CDN) Limelight Networks Inc. The Court of Appeals for the Federal Circuit upheld Limelight’s liability for infringing Akamai’s patent, essentially reinstating a $45.5 million jury verdict from 2008 (pending resolution of certain “residual issues”). The case, initially filed in 2006, has bounced between the Federal Circuit and the […]
June 10, 2015

Partial Victories for both Apple and Samsung in Appellate Decision

By Nelson T. Rivera Apple and Samsung’s patent infringement battle is not over, and in the latest ruling, neither side received exactly what it wanted. On May 18, 2015, the U.S. Court of Appeals for the Federal Circuit reaffirmed that Samsung had infringed specific design and utility patents for the iPhone. However, the appeals court also ruled that Samsung was not infringing on Apple’s overall trade dress — the design, shape and configuration of its […]
May 19, 2015

That Trademark Smell, That Trademark Taste

By Christopher R. McElwain When people talk casually about the “trademark tanginess” of Cheez-Its or the “trademark scent” of Dior perfume, chances are they’re speaking figuratively. While the fragrances and flavors of certain products can certainly be distinctive, protecting these features with legally-enforceable trademarks is difficult and uncommon. In the United States, trademarks can include almost anything that acts as way for consumers to identify the source of goods or services. The most traditional way […]
April 2, 2015

Smartflash v. Apple: Will the Verdict be Upheld on Appeal?

By Nelson T. Rivera On February 24, 2015, a federal jury ordered the technology giant Apple Inc. to pay a staggering $532.9 million dollars for infringing the patents owned by Texas-based Smartflash Inc. In May 2013, Smartflash filed the lawsuit against Apple in the U.S. District Court for the Eastern District of Texas claiming that Apple willfully infringed three of its patents – U.S. Patent No. 7,334,720; No. 8,118,221; and No. 8,336, 772 – related […]
February 27, 2015

DDR Holdings’ Ruling Provides Much Needed Guidance on Software and Business Method Patents

By Nelson T. Rivera 2014’s landmark Supreme Court case, Alice Corp. v. CLS Bank International, made two things clear: that some software is eligible for patent protection and that some software isn’t. How to tell the difference between the two was a question left for another day. Fortunately, a new decision by the U.S. Court of Appeals for the Federal Circuit provides some welcome insight. On December 5, 2014, the Federal Circuit in DDR Holdings, […]
January 31, 2015

Alice Corp.: Are Software and Business Methods Still Patentable?

By Nelson T. Rivera On June 19, 2014, the Supreme Court in Alice Corp. v. CLS Bank International held that a group of patents related to mitigating settlement risk were not drawn to eligible subject matter under the Patent Act’s 35 U.S.C. § 101 (“Section 101”). In so ruling, the Court affirmed the holding of a deeply divided Federal Circuit that merely requiring generic computer implementation fails to transform abstract ideas into valid patent claims. […]
January 5, 2015

Prospective IP Assignments: Obtaining Rights to Future Creations

By Christopher R. McElwain The default rule in both copyright and patent law is that the individual who actually creates something (an expressive work in the case of copyright; an invention in the case of patent) owns it. Of course, it’s often the case that the company paying the bills wants to own the IP generated by the folks they’re paying (let’s call them “workers” as shorthand, since, as I’ll discuss below, “employee” is a […]
December 11, 2014

The Trademark Registration Hustle: Internet Scammers Target IP Owners

By Christopher R. McElwain Even if they make it past our spam filters, most of us have learned to ignore emails from the Nigerian prince looking for an American bank account in which to deposit his fortune, the Hong Kong businessman offering an unbelievable financial opportunity, the UK Lottery with exciting news about a contest you didn’t even know you’d entered. Trademark applicants and owners, though, have increasingly found themselves the victims of a more […]