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Willful Blindness: The New Standard for Knowledge

by Vincent J. Allen In a decision earlier this year having ramifications in numerous areas of the law in which “knowledge” must be proven, the U.S. Supreme Court applied the doctrine of willful blindness to satisfy the knowledge element for a claim of active inducement of patent infringement. Although the willful blindness doctrine has been well established in criminal law and adopted by every federal court of appeals but one, the Global-Tech Appliances decision marks the first time the Court has approved the doctrine.

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False Patent Marking: The New Gold Rush?

By Vincent J. Allen The Federal Circuit’s Bon Tool decision in late 2009 dramatically increased the number of false patent marking cases filed last year.  Historically, the relatively obsure patent marking statute had been interpreted to allow for a penalty of up to $500 for each decision to mark an unpatented product.  Consequently, there were only a handful of false marking suits pending at any given time.  Times have changed.  The Bon Tool decision opened the flood gates for false marking claims because of the dramatic increase in potential damages to the plaintiff.  A plaintiff in a false marking suit can now recover up to $500 per item sold.  Forest Group Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009).  

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The Patent Prosecution Highway Takes a New Direction

By Colin P. Cahoon In a prior article, we reported on the Patent Prosecution Highway (“PPH”) program developed to promote fast-track patent examination procedures and allow patent offices from around the world to take advantage of work already done by other offices. The PPH was one of the initiatives that was undertaken by the USPTO to help with the always increasing load of patent examinations.

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In re Bose Corp.: The New Sound of Fraud?

By James R. Gourley The Federal Circuit raised the bar last year on the standard of proof needed to support a finding of fraud in connection with trademark registrations in the In re Bose Corp. decision.  Applicants for federal trademark registrations make a number of representations to the United States Patent and Trademark Office (USPTO) over the life of a trademark.

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Sue the B**##@*S!: Jury Selection

Part 2: The Jury (It’s Not a Jury of Your Peers) By Chris Kilgore In the first part of this series, we noted the particular challenge of trying a complex or technical case before a jury.  This is an important consideration because, even though trial may not be the end game, litigation matters can sometimes take on a life of their own. The phrase “jury of your peers” arises from the Magna Carta (1215).  At the time, it meant persons who actually knew the parties, the facts, or had the duty to discover the facts.  The concept of the jury trial as it was understood by the Founding Fathers was intended as another check on government power.  While the jury may work well in that role, the advent of tort litigation around the turn of the 20th Century and cases of ever increasing complexity has put new strains on the efficacy…

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Sue the B**##@*S!: The Litigation Decision

The conventional wisdom is that the number of lawsuits filed rises while the number of transactions fall in a down economy.  When times are good, companies tend not to worry about the “small stuff,” to not account for every penny.  But when times aren’t so good, every penny counts, and litigation is used much more freely.  However, good times or bad, it is always wise to carefully consider the pros and cons of litigation with your legal advisor before “upping the ante,” because the world of litigation is not only entirely different than business as usual, it is also expensive and unpredictable. There are companies that aggressively protect their intellectual property portfolio, litigating routinely, even in the best of times.  However, this is an expensive business model that can only be justified when the size of the business or value of the intellectual property to be protected is significant.  The…

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The USPTO Count System: Using the Count-Carrot to Your Advantage

By Bobby W. Braxton Everyone knows that there are times that are better than others for obtaining good deals.   One of the best times to buy a new car is at the end of the month when the car salesman is desperately trying to reach his or her quota for the month. Better deals can be had on retail items after the holiday season. Likewise, there are times when it is better to negotiate with the United States Patent and Trademark Office (USPTO) during the prosecution of a patent. A patent examiner’s perfor

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Jim Brown Fails to Break Through First Amendment Defense

By Vincent J. Allen Jim Brown’s claim of false endorsement against Electronic Arts in regard to the use of his likeness in the Madden NFL video game was dismissed last year. The decision continues the trend of courts finding that the First Amendment provides a complete defense to a claim of unfair competition when source identifiers are used within video games. Jim Brown is a retired professional football player who is revered as one of the best football players of all time. Electronic Arts (EA) develops and publishes video games, including the popular Madden NFL series. The Madden NFL game is a virtual football game that contains up to 170 virtual teams and 1,500 virtual players. The virtual players include players that wear the names and numbers of current real-life players playing on real-life teams.

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Corporate Legal Departments Turn to Boutique Law Firms

By Vincent J. Allen Budgets for some corporate legal departments have been slashed this year in line with across the board cuts implemented as companies try to weather the downturn in the economy. This leaves corporate counsel with a smaller budget to accomplish the same legal work. In-house counsel at major companies are taking a hard look at outside counsel expenditures to determine if the legal work is being handled efficiently, and many have concluded that a different approach is needed.

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The Evolving Effect of Working Requirements in Foreign Jurisdictions

By Amanda K. Jenkins The patent rules of many foreign jurisdictions contain working requirements. A working requirement is the requirement that, after a certain number of years, the patented invention be worked on a commercial scale in the country. The effect of these requirements has evolved in the last few years in many countries due to amendments to their patent laws.

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Leveling the IP Field For Minorities

By Celina M. Orr Although minorities have grown to recognize the rewards of the legal profession, intellectual property law continues to be under-represented. Intellectual property (patents, trademarks, copyrights, and trade secrets) plays an important role in an increasingly diverse range of areas, from literature and the arts to genetic engineering. Yet there is a relatively small pool of diverse attorneys in the practice of intellectual property (IP) law.

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Strengthening Your Patent Portfolio Through Reexamination

By Zach W. Hilton In recent years, the United States Patent and Trademark Office (“PTO”) has been plagued with a substantial backlog of pending patent applications awaiting examination. The PTO reports that it now takes a little over two years on average to provide an applicant with a first office action. As a result, the PTO has been under increased pressure to accelerate the examination process.

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Use the Highway: A New Paradigm for International Patent Portfolio Management

By Colin P. Cahoon What if there was a new way to manage an international patent portfolio that results in lower costs and quicker issuances of patents? If this question piques your interest, read on as I walk you down that highway, or what the USPTO calls the “Patent Prosecution Highway.”

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Design Patents after Egyptian Goddess: The Comeback Kid

By Vincent J. Allen In 1871, the Supreme Court established the standard for proving design patent infringement in Gorham Manufacturing Company v. White.The design patent in Gorham covered the ornamental features of forks and tablespoons. The Supreme Court explained that the appearance of an article may increase its “salable value.”  The test of identity of design “must be sameness of appearance, and mere differences of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity.”  Based on this rationale, the Court outlined the “ordinary observer” test that is still used by courts today in design patent infringement cases:

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The Federal Circuit Puts a Damper on Forum Shopping

By Vincent J. Allen The Eastern District of Texas has the reputation of being a favorable forum for filing patent infringement suits. For the year ending September 31, 2007, more patent cases were filed in the Eastern District than in any other district in the nation. The Central District of California, despite having a substantially greater population of businesses, trailed the Eastern District’s 359 filings by 25.

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Pirates of the Twenty-First Century – Tips for Fighting Back Against Counterfeiting

By Zach W. Hilton Worldwide Counterfeiting Epidemic Over the course of the last couple of decades, the counterfeiting of almost every conceivable product has become endemic worldwide.  While thought of as harmless by many, the massive amount of trade currently occurring in counterfeit products can often lead to disastrous consequences for both individuals and businesses.

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Intellectual Property Assignments in Employment Contracts: Employ Creative Thinking

By Celina M. Orr If your business employs someone for their creative or technical abilities, you should strongly consider using an intellectual property assignment.  An intellectual property assignment can be part of a larger employment contract but, at a minimum, should clearly define ownership rights in the intellectual property created by the employee.  Such assignment clauses allow the employer to retain control of a work or invention by its employees. Like all contracts, employment contracts should be carefully worded to clearly convey the intent of the parties.

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Ding-Dong! The Witch of Patent Reform is Dead…Or is She?

Many in the patent community are singing the joyous news that the Patent Reform Act of 2007 is dead. Recent events in Congress lead to this conclusion. The departure on May 1, 2008 of the former Solicitor of the U.S. Patent and Trademark Office, John Whealan, from his temporary position with Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) is a strong indicator that patent reform legislation will not pass in 2008. Whealan’s departure was not the only sign that the bill is finished. On April 10, 2008, Senator Arlin Specter (R-Pa.), ranking minority member of the Senate Judiciary Committee, commented on the floor of the Senate that the Republican caucus may refuse to act on pending patent reform legislation “as a matter of leverage to get fair and equitable treatment” in regard to the confirmation of federal judges. On the same day, Senate Majority Leader Harry Reid (D-Nev.) stated that…

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Patent Pending: A Label with Bark & Bite

By Bobby W. Braxton You may have noticed the phrases “patented” or “patent pending” stamped onto various products without understanding the message, power, or responsibility that each phrase carries. “Patent pending” refers to an application wherein patent protection has been sought but a patent has not yet been issued. As it may take several years, depending on the technology, before a patent issues, there can be significant lengths of time during which the owner of an invention may sell a product embodying the invention without the benefit of patent protection.

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Is a Compulsory License the New Remedy for Successful Patent Litigation?

By David W. Carstens A patent provides its owner with the right to exclude others from making, using or selling a patented product. These rights may be enforced by filing an infringement lawsuit. In such a lawsuit, the Patent Act empowers the court to issue an injunction against an infringer “in accordance with the principles of equity.”  So how is it possible to acknowledge and honor the right to exclude the making of an infringing product without always granting an injunction against the infringer of those rights? One Texas court is trying carefully to balance these principles of equity to determine when a permanent injunction is appropriate.

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