Our Firm's Newsletter

Our monthly Intellectual Property Update sheds light on important IP events and decisions from the preceding weeks.

Index to Our Newsletter

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IP Update, April 2012

Internet service providers, accused of displaying text and videos that infringe copyright, still have a safe harbor in the Digital Millennium Copyright Act, despite a nominal setback for Google. Viacom v. YouTube
Beyoncé seeks to register a trademark for the name of her new baby, and provides a glimpse at commercialization strategies. More. . .
The Supreme Court clears one obstacle to the market entry of generic drugs: Makers can now seek to compel brand manufacturers to correct overbroad “use codes.” Caraco Pharma v. Novo Nordisk
Inter partes review, introduced by The America Invents Acts, holds the promise of speedy challenges to a patent’s scope. It may also produce claim construction that is binding in related infringement litigation. More. . .
Means-plus-function patent claims for computer-based inventions remain subject to strict standards of validity. Remember to disclose the algorithm! Ergo Licensing v. Carefusion 303
“Best mode” requirement can harshly penalize a patentee who refrains from disclosing the optimal embodiment of his invention. Anvik v. Nikon

IP Update, March 2012

The Supreme Court finds a diagnostic method ineligible for patent protection. Its dubious reasoning—that the invention simply tracks laws of nature—may inhibit innovation. Mayo v. Prometheus Labs
The wording of label indications can affect ability to ward off generic-drug competition. AstraZeneca v. Apotex
India has for the first time granted a compulsory patent license to a local generic-drug manufacturer. More. . .
A galling patent-infringement defeat for the maker of Gore-Tex casts new light on a fundamental question: Who qualifies as an inventor? Bard v. W.L. Gore
A 15-year litigation answers a thorny riddle: Whom can a patentee sue when his process patent is infringed—overseas--by a government contractor? Zoltek Corp. v. U.S.
Not funny enough? The owner of the Crackberry website was denied registration of its trademark; the tribunal did not view the mark as a protectable parody of the famous wireless device. Research in Motion v. Defining Presence

IP Update, February 2012

One can qualify as an inventor even if his contribution to a patented innovation is indirect, but a clear-cut rule is elusive. Falana v. Kent State
No rigid test can determine whether a patented method is invalid for obviousness, but the failure of well-motivated scientists to devise a like method points to validity. Celsis v. CellzDirect
Newt Gingrich and others have their reasons for picking a campaign theme song with no concern for the musician’s copyright. None of the reasons are good. More. . .
Stiff punishment is upheld for founders of Pirate Bay, a website that enabled massive copyright infringement.

More. . .

IP Update, January 2012

Why do the lions of the Internet so vociferously oppose Congressional efforts to stem online piracy? Let us count the reasons.
Starbucks’s repeated failure to stop a tiny rival’s use of “Charbucks” shows how hard it is to prove dilution of a famous mark. Starbucks v. Wolfe’s Borough Coffee
Falling into the public domain is not irreversible, it seems. The Supreme Court affirms the restoration of copyright to foreign works. Golan v. Holder
Even information that has been widely available can gain trade secret protection if new confidential information is added and proper safeguards put in place. AvidAir v. Rolls-Royce
A patentee who persisted with hopeless litigation must pay the accused infringer’s legal fees. The Federal Circuit’s ruling may be a warning to patent trolls. MarcTec v. Johnson & Johnson
We explain how invention mining enables companies to identify overlooked inventions and fortify their patent arsenal.
Our new flow chart helps you determine if, and when, a copyright assignment can be terminated.

IP Update, November 2011

Federal Circuit reminds trial judges that a patent owner’s “right to exclude” may well justify issuing a permanent injunction against competitors who are found to infringe. Robert Bosch LLC v. Pylon Mfg
Despite traditional reluctance to apply U.S. law to foreign activity, court says federal agency can ban the import of products made abroad using misappropriated trade secrets. TianRui Group v. ITC
If the facts allow, a trade secret claim is a valuable backup to a patent infringement claim, but litigants must be wary of arguing mutually inconsistent theories. Atlantic Research v. Troy

IP Update, September 2011

New legislation introduces a first-to-file patent system to the U.S. Other striking changes will alter the way inventions are protected and patents are enforced. More...
Federal Circuit offers fresh guidance on how to tell apart methods that are eligible for patents from those that are impermissibly abstract. Ultramercial v. Hulu
How does the on-sale bar affect an inventor who offers for sale a product whose novel aspect has not yet been conceived? The answer turns on distinguishing a product from an invention. August Tech. v. Camtek
Songwriters are not alone in considering their eligibility to terminate copyrights in popular works that they wrote but that others own. Graphic designers are similarly motivated. We analyze the imminent legal confrontation. More...

IP Update, August 2011

The biotech community can breathe again after the Federal Circuit declares that human genes are eligible for patent protection. But diagnostic screening methods that involve only "mental steps" fall short of evolving standards for patentability. More. . .
The doctrine of equivalents may offer little aid to a patent owner when the allegedly infringed claim limitation was amended during prosecution. The Federal Circuit held that an overbroad preamble, not to mention settled principles of estoppel, can put a limit on one's litigation options. More. . .
The Federal Circuit imposes stiff sanctions on a "patent troll" whose carbon-copy lawsuits smacked of "extortion." Does this herald a tough new scrutiny of non-practicing entities who seek a quick score by targeting a host of alleged infringers? More. . .
Those who create time-sensitive information--like stock recommendations--are provoked when news aggregators obtain and publicize that information without permission. The Second Circuit says that, in any resulting lawsuits, federal copyright law preempts claims under state law for "hot news" misappropriation. More. . .

IP Update, June 2011

A university that receives a federal research grant cannot rely on the Bayh-Dole Act to divest the rights of an employee/inventor in patents that emerge from the research, says Supreme Court. More. . .
The Supreme Court turns down Microsoft's bid to ease an
accused infringer's burden of proving a patent's invalidity. The rigorous "clear and convincing evidence" standard remains in place. More. . .
Recent cases have held that one can be liable for inducing infringement of a patent that he knows nothing about. The Supreme Court introduces a "willful blindness" test that makes inducement harder to prove. More. . .
The Federal Circuit delivers a scorching critique of the overused "inequitable conduct" defense to patent infringement. It rolls out tough new standards -- for proving (a) patentee's deceptive intent and (b) the materiality of undisclosed prior art -- that spell an end to the reflexive use of this defense. More. . .

IP Update, May 2011

Frustrated by the snail's pace of patent examination? Our chart shows ten ways to gain speedier attention, depending on the nature of your invention or your personal circumstances. More. . .
Typically, you use a reissue to correct your patent when you realize its scope is broader or narrower than what you're entitled to. But the Federal Circuit says you can also add a dependent claim to brace your patent for an invalidity challenge. In re Yasuhito Tanaka
Well-known elements-even those disclosed in a patent-can comprise a trade secret, as long as the combination of those elements gives a competitive edge and is closely guarded. Tewari De-Ox Systems v. Mountain States
A new .xxx upper-level domain has been set aside for adult-entertainment websites. We explain how to protect your trademark from being associated with that industry. More. . .

IP Update, March 2011

The switch to a first-to-file system is the most prominent of the changes that pending legislation would bring to patent practice. More. . .
"Written description" requirement may thwart strategy of filing continuation patents to snare infringers. Centocor v. Abbott Labs
Flurry of rulings is likely to stem recent rash of lawsuits over false patent-marking of goods. BP Lubricants USA
Rejection of class-action settlement threatens to slow expansion of Google Books. Authors Guild v. Google

IP Update, February 2011

Is it the claims or the specification that tell us what a patent covers? Top patent judges differ. Arlington Industries v. Bridgeport Fittings
Joint infringement of a patent: Hard to prove with a method claim, much easier with a system claim. Centillion Data v. Qwest Communications

IP Update, January 2011

Federal Circuit decries abstractness of "25% Rule," nixing common tool for calculating patent-infringement damages. Uniloc v. Microsoft
New ruling on obviousness-type double-patenting calls for drafting strategies that cut risk of invalidation. Sun Pharma v. Eli Lilly
To sue for infringement, exclusive licensee need not have right to exclude all others from practicing a patent. WiAV Solutions v. Motorola
If no one person performs all the steps of a method claim, but two do, are they joint infringers? Depends on how the patent is drafted. Akamai v. Limelight Networks
Patent wording determines whether a vendor avoids liability by disabling a product's infringing capabilities. Finjan v. Secure Computing
Trademark strategy may dictate resisting disclaimer requirement and fighting for registration of complete mark. In re Sears Brands
Amendment to Copyright Act clarifies publication and recordkeeping issues.

More. . .

IP Update, December 2010

Kicking back post-Bilski, Federal Circuit says a method is not too abstract to be eligible for a patent where it has clear practical application. Research Corp. v. Microsoft
Appeals court takes harder line on copyright protection for technological safeguards on software. MDY Industries v. Blizzard Entertainment
Can maker of items for foreign market halt their sale in U.S.? Supreme Court deadlock puts off definitive answer. Costco v. Omega
Rival's egregious copying of software nets billion-dollar award for Oracle, a copyright infringement record. Oracle v. SAP

IP Update, November 2010

Appeals court continues to diminish copyright protection for software makers' anti-piracy tools. MGE UPS Systems v. GE Consumer
Government urges appeals court to limit patent-eligibility of genetic sequences. Myriad Genetics
Supreme Court will referee tussle over professor's assignment of patent rights. Stanford Univ. v. Roche
When an accused product complies with an industry standard, infringement can be proven if a patent covers the standard. Fujitsu v. Netgear

IP Update, September 2010

Companies that participate in patent pools will not ordinarily be tagged for anticompetitive use of their patents. Princo v. ITC
Examiners at the PTO follow new, patent-friendlier guidelines for determining the obviousness of an invention. More
Hacking a security device in order to use a software program may not violate copyright law after all. MGE UPS Systems v. GE Consumer
In a reversal regarding the first-sale doctrine, court says a software license can bar user from reselling the program. Vernor v. Autodesk
Copyright law protects the non-utilitarian design elements of furniture against knockoffs. Universal Furniture v. Collezione Europa

IP Update, August 2010

A federal appeals court makes it a bit easier for companies to prevent employees privy to essential trade secrets from working for a competitor. Bimbo Bakeries v. Botticella
Liability for offering to sell goods that infringe a U.S. patent depends not on where you make the offer, but on where the goods are meant to be used. Transocean v. Maersk
Fashion designers may soon enjoy copyright protection. A proposed law also accommodates the interests of imitators. More...

IP Update, July 2010

Counterfeit Gucci handbags were sold on a website. In a novel ruling, a federal judge says that the companies that provided credit card services to support this infringing activity may themselves be liable for infringement. Gucci v. Frontline Processing
Congress did not violate the First Amendment when it acted to restore copyright protection for certain works of foreign authors and composers even though they had long been in the public domain. Golan v. Holder
In a long-running dispute between Mattel and MGA Entertainment over the ownership of the Bratz doll line, a judge placed this billion-dollar asset in constructive trust for the benefit of Mattel. Now an appeals court has scrapped this remedy as unfair. Mattel v. MGA Entertainment
Patent owners continue to flock to the Eastern District of Texas with their infringement lawsuits. And the Federal Circuit continues to warn that, where contacts with that jurisdiction are fabricated, the litigation will be transfered to a more convenient forum. Zimmer Holdings

IP Update, June 2010 Special Issue

Supreme Court dispels inventors' anxiety: Business methods may be eligible for patent protection, and test for patentability cannot be too rigid. Bilski v. Kappos

IP Update, June 2010

A covenant not to sue can extricate a patent owner from a declaratory judgment lawsuit, but it's not an antidote for most cases. Dow Jones v. Ablaise
Falsely indicating that products are covered by a patent can incur heavy penalties, but would-be plaintiffs must prove a clear intent to deceive. Pequignot v. Solo Cup
Fairness dictates that if you threaten someone with patent infringement, then dawdle before suing, you may forfeit your enforcement rights. Aspex Eyewear v. Clariti Eyewear

IP Update, May 2010

To ban sales of a possibly infringing sequel to Catcher in the Rye, a solid showing of irreparable harm must be made. Salinger v. Colting
Sales of counterfeit items do not expose eBay to trademark infringement when the wrongdoers are not known in advance. Tiffany v. eBay
European court hands Google another win over businesses aggrieved by keyword advertising. Google v. Louis Vuitton
Owner of trade secret in source code cannot pin liability for misappropriation on customers of program that incorporates the code. Silvaco v. Intel

IP Update, April 2010

Federal judge rules DNA patents invalid, stirring anxiety in biotech industry. Ass'n for Molecular Pathology v. Patent & Trademark Office

IP Update, March 2010

Copyright skirmish over postage stamp pushes the envelope on "fair use" doctrine. Gaylord v. U.S.
Massachusetts museum battle ends with a key ruling: Artist's right of integrity applies to unfinished works. Mass MoCA v. Büchel
"Deliberate indifference" to the existence of a competitor's patent can invite liability for inducing others to infringe that patent. SEB v. Montgomery Ward
An inventor's failure to disclose the "best mode" for practicing his invention can result in the invalidity of his patent. Ajinomoto Co. v. ITC

IP Update, January 2010

FTC alone decries payments for delaying introduction of generic drugs. More...
Not funny enough: Seller of "Charbucks" coffee is liable for diluting a famous mark. Starbucks v. Wolfe's Borough Coffee
Penalty for false patent-marking of goods has just increased. Forest Group v. Bon Tool
Reissue procedure is meant to correct mistakes in a patent, not to fortify it against validity attacks. Ex parte Tanaka
PTO must extend patent terms more generously where its own actions delayed approval of application. Wyeth v. Kappos

IP Update, December 2009

Threshold for declaratory judgment actions against patentees falls yet lower. Hewlett Packard v. Acceleron
College student fails to prove that his music downloads are a "fair use" exception to the copyright laws. Sony BMG v. Tenenbaum
Cloner of Mac is held to infringe Apple's copyrights. Antitrust defenses are rejected. Apple v. Psystar
Usefulness requirement prevents the patenting of inoperable inventions. Ex parte Lin
Injunction out of reach? Patentees comfort themselves with "ongoing royalties." More...

IP Update, November 2009

Google Book Project adjusts its goals and policies in response to lawsuit and widespread criticism. More...
First Amendment bars football titan's challenge to use of his likeness in video game. Jim Brown v. Electronic Arts
At oral argument, Supreme Court conveys skepticism on patentability of method inventions. Bilski v. Kappos
Patent office offers applicants early opportunity to interview examiners and iron out patentability issues. More...

IP Update, October 2009

First-sale doctrine does not apply to copyrighted works made overseas and sold in the U.S. Pearson Education v. Ganghua Liu
When a patent is infringed for the benefit of the U.S. government, the patent owner has limited remedies. Advanced Software v. Federal Reserve
PTO's new director rescinds unpopular prosecution rules and announces fresh initiatives to improve quality of examinations. More. . .
Test results published after date of patent application come too late to satisfy enablement requirement. In Re ‘318 Patent Infringement Litigation
Do you want favorable tax treatment of your hoped-for litigation award? Plan ahead. Freda v. IRS

IP Update, September 2009

Because it transforms human samples and the human body, a medical diagnostic test meets Bilski's machine-or-transformation standard for method patents. Prometheus Labs v. Mayo Collaborative Services
In reversing a $350m judgment against Microsoft, the Federal Circuit demands that parties support their damages calculations with solid market-based evidence. Lucent v. Gateway
"Fraud on the PTO" will lead to fewer draconian losses of trademark registrations, now that the Federal Circuit holds that a knowing intent to deceive is the measure of fraud. In re Bose
When the FDA is free to approve a new generic drug despite ongoing litigation between pharma companies, the pioneer manufacturer faces a logistical bind. Sanofi-Aventis v. Sandoz

IP Update, August 2009

Attention accused patent infringers: Think twice before raising inequitable conduct defense. Exergen Corp. v. Wal-Mart Stores.
Federal Circuit opens a loophole for practicing patented methods overseas. Cardiac Pacemakers v. St. Jude Medical.
With provisional applications, multiple inventors on one patent can complicate international protection. Edwards Lifesciences v. Cook Biotech.
Microsoft's highhanded conduct in developing Word 2003 incurs punitive damages in patent suit. i4i v. Microsoft.

IP Update, July 2009

Did a judge's ban on publishing a sequel to The Catcher in the Rye offend the First Amendment? Salinger v. Colting
The progressive encroachment doctrine lets trademark holders withhold suit until the likelihood of confusion "looms large." Roederer v. J. Garcia Carrion
Unauthorized removal of a UPC from a retail product may amount to trademark infringement. Zino Davidoff SA v. CVS Corporation
A Massachusetts employee cannot take advantage of California's prohibition on non-compete agreements. EMC Corporation v Donatelli
The Dept. of Justice urges a harder line on "reverse payments" to generic drug makers. Ciprofloxacin Hydrochloride Antitrust Litigation

IP Update, June 2009

In a boost for the internet security industry, our firm wins “Good Samaritan” immunity for maker of anti-malware products. Zango, Inc. v. Kaspersky Lab
Joseph Abboud sells the "Joseph Abboud" trademark but might nevertheless be entitled to use his name in a new business venture. JA Apparel v. Joseph Abboud
Are social media responsible for their users' transgressions? Twitter's problem with impostors gets Tony LaRussa's goat. Tony LaRussa/Twitter.
In proving infringement under the doctrine of equivalents, don't overstretch the meaning of your patent, lest you be "ensnared" by the prior art. DePuy Spine v. Medtronic.
Burden of proof placed on patent holders who seek preliminary injunctions will motivate accused infringers to mount early challenges to validity.Titan Tire v. Case new Holland
How should judges decide requests to transfer venue? For one thing, consider the convenience of witnesses, says the Federal Circuit. In re Genentech

IP Update, May 2009

Court unsnarls long-standing conflict over scope of product-by-process patent claims. More. . .
Patent pools can promote efficient licensing, but bundling potentially competing technologies in one license can attract antitrust scrutiny. More. . .
Displaying wares at U.S. trade show can subject foreign corporation to personal jurisdiction in a patent-infringement lawsuit. More. . .
The Federal Circuit confines use of its two-way test for double patenting to applications that the PTO mistakenly approved out of sequence. More. . .
It's fair use: Plagiarism-detection website does not infringe students' copyrights. More. . .
"Crimes against copyright" - Swedish operators of file-sharing service get jail sentence. More. . .
European court says Dior is entitled to protect its trademark's "aura of luxury." More. . .
EU extends copyright term for musical performances. More. . .

IP Update, April 2009

Although experimental use allows an inventor to push the deadline for patent application, reliance on this doctrine can be hazardous.
More. . .
Judge says Bilski not only compels rejection of a software patent but threatens the validity of all business method patents. More. . .
Federal judges are expanding the "first sale" doctrine to defeat attempts by patent owners to limit the re-use or resale of their patented items. More. . .
Marking your products as patented increases leverage against an infringer, but inaccurate marking can dangerously backfire.
More. . .
Even to honor copyright treaty obligations, the U.S. may not abridge Americans' rights to use works in the public domain.
More. . .
Second Circuit allows trademark owner to press its "keyword advertising" suit against Google, but an ultimate victory on infringement is unlikely. More. . .
Standard commercial liability insurance covers claims for trademark infringement, says Minnesota Supreme Court. More. . .

IP Update, March 2009

Pharma companies may soon gain a pathway toward approval for generic versions of biologic drugs. More. . .
To inventors' dismay, court upholds PTO's authority to impose controversial restrictions on patent applications. More. . .
Our study demonstrates the power of reexamination in challenging a patent's validity. More. . .
Sunstein asks the Supreme Court to overturn Bilski's restrictions on the eligibility of method inventions for patent protection. More. . .
Text-to-speech feature of Amazon's Kindle sparks conflict over authors' derivative rights. More. . .
Bygone doctrine of "hot news" is invoked to challenge a headline service's practice of using AP's breaking news. More. . .
In trademark litigation, the overused "fraud on the PTO" defense may now be on the ropes. More. . .
UK joins several other countries in supporting rich rewards to employees who conceive extraordinary inventions. More. . .
Open-source software finds its way to the heart of Microsoft's patent infringement suit against GPS manufacturer. More. . .
Recent decisions give accused infringers hope of getting out of Texas. More. . .

IP Update, February 2009

Obama the brand: Many seek to trade on President's luster. Not so fast. More. . .
European court holds that trademark rights are not acquired by promotional uses. More. . .
Odd facts will keep some Renoir artworks under copyright more than a century after his death. More. . .
Postage stamp provokes "fair use" ruling that frustrates War Memorial sculptor. More. . .
Apple dodges antitrust challenge to its clickwrap license. More. . .
Theft of trade secrets is governed by state law, even if a patent is involved. More. . .
For the first time, government contractors may be held liable for patent infringement. More. . .
Court revises opinion that had cast doubt on viability of software and business method patents. More. . .
Federal Circuit clarifies the nebulous doctrine of contributory patent infringement. More. . .

IP Update, January 2009

District court overturns PTO policy, resulting in longer term-extensions for some recently issued patents. M ore. . .
Protect your patent application from an "indefiniteness" rejection by avoiding ambiguous claim language. More. . .
Pending reexam will not preclude preliminary injunction for infringement plaintiff. More. . .
Patentee no longer needs to prove that defendant's challenge to patent validity lacks substantial merit in order to win a preliminary injunction. More. . .
Cuban cigar maker protects Cohiba trademark . . . using state unfair-competition law. More. . .
European Patent Office declines to protect invention that requires destruction of human embryos. More. . .
European Commission criticizes pioneer drug companies for obstructing introduction of generic drugs. More. . .
What a doll: Judge sweetens Mattel's employment-agreement victory in Bratz lawsuit. More. . .
Massachusetts employers must act soon to safeguard against identity theft. More. . .

IP Update, December 2008

New procedures now exist to streamline patent litigation in Massachusetts. Our firm was prominent in their promulgation. More …
A judge who reduced a jury’s infringement damages award by 98% committed reversible error by not offering the plaintiff a new damages trial. More …
In Bilski, the Federal Circuit recently imposed a new standard for the patentability of process claims. A subsequent opinion from the Board of Patent Appeals and Interferences says that Bilski does not apply to software product claims, and we explore how far that opinion might extend. More …
The Federal Circuit holds that a prior patent disclosing all elements of a patentee’s claim does not necessarily anticipate that claim. More…
Google settles copyright infringement claims arising out of its Book Search project for a headline number of $125 million, and we discuss Google’s skill at inviting litigation to resolve the uncertainties of copyright law. More…
An electronic game showed a “gentlemen’s club” in a street scene that resembled an actual club in Los Angeles. The game maker’s right to do so, according to the Ninth Circuit, is protected by the First Amendment. More…
The Federal Circuit becomes the third court of appeals to find that the “rule of reason” applies to patent settlements of ANDA litigation involving “reverse payments”, in which a generic drug manufacturer receives compensation and agrees not to launch its product. More…

IP Update, November 2008 Special Issue

Important new Bilski ruling limits patentability of processes, including business methods. More. . .

IP Update, October 2008

Prior art that is unsuccessfully used to challenge the validity of a patent at trial can be reused to invalidate that patent in a PTO reexamination proceeding. More. . .
A biotechnology patent is found invalid for lack of a written description where it claimed a broad bacterial genus, but the specification did not describe a sufficient number of species.
More. . .
Appellate court simplifies the test for infringement of design patents. More. . .
Congress passes the "PRO IP Act", designed to deter trafficking in pirated works and goods bearing counterfeit trademarks. More. . .
The Office of the US Trade Representative considers a treaty to further curb counterfeiting, and is sued for keeping its deliberations under wraps. More. . .
The National Football League cannot use a sample from the voice of its long-time (but now deceased) announcer of NFL Films in advertising its Madden NFL video game. More. . .
Congress enhances the Vessel Hull Design Protection Act, and we wonder whether it is enough protection for boat makers. More. . .

IP Update, September 2008

A wandering employee takes some toy designs to another company, and a jury awards the jilted employer $100 million in damages. More . .
A court of appeals finds no copyright infringement in the remote recording and playback of cable TV shows. More . .
The first sale doctrine is found to be inapplicable to software made and sold overseas. More . .
An open source license is found enforceable, and an injunction follows. More . .
A dispute between an artist and a museum results in an "unfinished work" which is denied the moral rights codified in the Copyright Act. More . .
MIT students who figured out how to hack the Boston subway system’s stored-value cards are free to talk about it. More . .
The reverse engineering of a competitor’s design is fatally tainted by the small-scale participation of an employee with confidential knowledge of the competitor’s trade secrets. More . .
The PTO warns that outsourcing of patent applications related to dual-use technology may require a Commerce Department License. We review other export-related restrictions that apply to the patent application process. More . .
The Federal Circuit engages in creative statutory interpretation to conclude that the Hatch Waxman Act does not extend to testing equipment used in clinical trials but not itself the subject of an FDA application. More . .

IP Update, July 2008

Conflicting judicial opinions from France and New York leave eBay and other internet businesses confused about their legal responsibilities. More. . .
We are monitoring patent reexamination proceedings in the PTO and noticing distinct trends that may be discouraging to patent owners. More. . .
Speedo swimsuits are all the rage among Olympic swimmers. We look at the technology behind the hoopla. More. . .
The National Geographic Society republished its own magazines in CD-ROM format and found itself embroiled in a copyright dispute involving material it once owned outright. More. . .
Absent careful planning, licensing a patent among corporate affiliates can be detrimental to its enforceability, as Mars, Inc. learned recently. More. . .

Dispatch, Summer 2008

The risk of claims rejection or invalidation for indefinite statement of claims. More. . .
Is the Federal Circuit moving away from the presumption of patent validity? More. . .
A quick success strategy for accelerated patent examination.
More. . .
Notes from Julia Huston on a year of service as President of the Women's Bar Association of Massachusetts. More. . .

IP Update, June 2008

"I bought it, I own it" – The United States Supreme Court extends principle that patent owner can't sue downstream buyer for infringement. More. . .
A federal court says it may be legal for third-party purchaser to resell software on eBay, free and clear of the original license terms. More. . .
Intentionally concealing basic prior art might not constitute inequitable conduct by patentee, Federal Circuit rules. More. . .
Ten-year battle by Victoria's Secret is clinched by application of new trademark dilution law. More. . .
In a new report, the FTC identifies a continuing trend in patent litigation: brand drug companies make “reverse payments” to generic drug companies, and the generic drug makers delay their market launch. While the FTC talks tough against this practice, it seldom litigates against it. More. . .
A $25 million judgment against Sears accentuates the value of trade-secret protection and of a good non-disclosure agreement. More. . .

IP Update, May 2008:

Appellate court rejects brand-drug maker’s tactic for hindering generic-drug maker from challenging patents covering brand drug. More . . .
Oral argument in major case over business-method patents foretells continuing viability of software patents. More. . .
What makes a patent claim indefinite and therefore invalid?
More. . .
Recovering the Superman copyright – A tale of termination rights. More. . .
PTO appeals from rejection of its proposed patent-prosecution rules. More. . .
Professor calls into question constitutionality of patent appeals judges. More. . .
Memory-chip maker escapes industry standards-setting snafu. More. . .

IP Update, April 2008:

Court rejects PTO’s proposed new patent-prosecution rules.
More. . .
Supreme Court: Erroneous arbitration decisions cannot be reviewed even if parties agree. More. . .
FDA’s “safe harbor” rules apply to method patents no less than to product patents. More. . .
Our firm makes good use of PTO’s new accelerated patent-examination procedure. More. . .

Dispatch, Winter 2008:

Changing requirements for damages in false advertising disputes. More. . .
How to decipher patent expiration dates. More. . .
The potentially worrisome ease of circumventing contract integration clauses. More. . .
What to expect now that the new rules from the Patent and Trademark Office have been put on hold. More. . .

Dispatch, Spring 2007 (special issue)

Supreme Court’s decision in KSR v. Teleflex makes it easier to challenge a patent on the basis of obviousness. More. . .

Dispatch, Spring 2007

Licensee can challenge validity of licensor’s patent even while doing business under the license, says Supreme Court in Medimmune opinion. More. . .
Reflections on the role of patents in one’s overall business strategy. More. . .
The growing prominence of inter partes patent-reexamination procedures. More. . .
Plavix case illustrates perils of generic drug wars. More. . .

Dispatch, Fall 2006

How to build a better clickwrap license. More. . .
Our firm’s role in overhauling Massachusetts trademark law.
More. . .
In wake of Supreme Court’s eBay decision, a patentee who proves infringement faces a steeper challenge in obtaining injunctive relief. More. . .
Supreme Court dodges opportunity to define the boundaries of patents for medical treatments grounded in basic scientific principles. More. . .

Dispatch, Spring 2006

Courts cede to the marketplace a major role in balancing technology and copyright in the digital universe
Details on our firm’s amicus brief in Supreme Court’s eBay case on the appropriateness of injunctive relief for patentees who have not reduced their invention to practice

Dispatch, Winter 2006

An account of our firm’s victory representing a maker of musical instruments before a jury that found a rival liable for commercial disparagement and other misdeeds.
We describe the provocatively liberal provisions of the new open-source license proposed by the Free Software Foundation

Dispatch, Fall 2005

File-sharing takes a hit in the Supreme Court's copyright infringement analysis in Grokster
Patentees can avert claim-construction disputes by including key definitions in the patent itself
Selling accused products overseas can nonetheless expose you to patent infringement claims if the U.S. is where you make your contract to sell
On-line advertising: Geico v. Google reveals ongoing tension between keyword searches and trademark infringement

Dispatch, Spring 2005

Open-source software community gains strength from SCO v. IBM decision
Accused infringers no longer to suffer adverse inference of willful infringement from failure to obtain opinion of counsel, says circuit court
Introduction to decision-tree risk analysis: Innovative approach to determining the value of a lawsuit
European trademark protection is now cheaper and simpler

Dispatch, Winter 2004

We highlight the major changes to the new business corporation act in Massachusetts
How effective is recent federal law in curbing spam
Massachusetts adopts electronic transactions legislation

Dispatch, Summer 2003

Important licensing lessons from copyright battle over Winnie the Pooh
New Massachusetts tax law targets IP holding companies
We assess the new European Community design law
Top-level domain name .pro becomes available for use by professionals

Dispatch, Winter 2003

Reprint of Investor’s Business Daily article quoting Bruce Sunstein on strategies for managing intellectual property
Important court decisions in 2002 have enhanced the value of patents as business assets
Changes to the international trademark registration process resulting from the pending implementation of the Madrid Protocol
An alert to employers regarding HIPAA (Health Insurance Portability and Accountability Act of 1996) privacy compliance

Dispatch, special June 2002 edition

Supreme Court’s Festo decision addresses the effect that a narrowing amendment in a patent application has on the later availability of the doctrine of equivalents

Dispatch, Spring 2002

Lessons for software developers and purchasers from the debate over the enforceability of clickwrap licenses
An account of our representation of race car designer Carroll Shelby against the manufacturers of counterfeit COBRAs
The challenges of gaining trademark protection for product designs, and the effectiveness of consumer surveys in this context
Supreme Court to consider the constitutionality of further copyright extension

Dispatch, Winter 2002

Issuing equity interests in an LLC to attract and retain key employees
An advisory on the rights of employees who seek leave to serve in the military
An advisory on tightened export controls
Land use: Strategic considerations in seeking special permits, variances, and zoning amendments

Dispatch, June 2001 (special edition)

Procedures for trademark owners interested in registering their marks in two new top level domains, .biz and .info

Dispatch, Spring 2001

Narrowing of patent protection under doctrine of equivalents calls for new approaches to patent prosecution
New PTO guidelines require fresh biotech patent strategies
Copyright protection for web pages
UDRP’s effectiveness in protecting against domain name violations of trademark rights in domain names
How our firm won an injunction against a company violating our client's trademark rights on the Internet

Dispatch, Fall 2000

The FCC struggles with requiring cable companies to provide Internet access
Patent applications must now be published: Reduced confidentiality may be balanced by broader availability of damages
Competent clearance opinions can reduce exposure to patent infringement damages
Anti-dilution law protects famous and distinctive trademarks
Electronic signature law facilitates Internet commerce
SEC ventures into regulation of stock offerings over the Internet
Our firm’s success in protecting a famous mark against infringement and dilution by an e-commerce company

Dispatch, March 1999

State Street Bank decision puts software patents on solid footing
Protecting intellectual property through nondisclosure agreements
Which state’s fiduciary laws govern the conduct of close-corporation shareholders
Family-leave rights in Massachusetts
Medicare + Choice program may not achieve aim of reducing healthcare costs

Dispatch, June 1998

Our firm vindicates employment-related nondisclosure agreement against Anti-SLAPP challenge
The Global Information Infrastructure begins to address international protection of IP rights
Trademark disputes accompany explosion of e-commerce
Massachusetts privacy law limits unannounced monitoring of employee e-mails
New proposals for domain-name registration

Dispatch, February 1998

Xerox decision illustrates that patent protection can trump antitrust challenge
Our firm’s successful defense of medical-device maker against an infringement suit hinges on advocacy for narrow reading of means-plus-function patent claims
Careful drafting can prevent a license from exceeding licensor’s intended grant of rights
Implementing effective compliance for healthcare providers
Advisory to our clients: Notify employees regarding harassment policies

Dispatch, April 1997

Supreme Court, in Warner-Jenkinson, introduces important new limitations on patentee’s ability to show infringement under the doctrine of equivalents
In-state use of IP can subject out-of-state corporation to statetaxation
Congressional bills address significant healthcare issues
Trade secret legislation is introduced in Massachusetts

Dispatch, Fall 1996

Federal appeals court validates shrinkwrap software licenses
Trademark tribunal cancels a registration due to invalid assignment of trademark application
New federal law bars suits asserting physician’s infringement of patented medical procedure

Dispatch, September 1996

Massachusetts law now requires written anti-harassment policy for employers
Federal appeals court bars severance agreements that prohibit an employee from assisting governmental investigations

Dispatch, January 1995

Major changes in U.S. patent law: In the wake of the signing of the GATT treaty, a patent will expire 20 years after its filing date. We explain how this and other changes will affect applicants, examine new tools for patent filing, and give practice tips to patent applicants

	Articles Our Newsletter Speaking/Press Other Useful IP Links	Our Firm's Newsletter Our monthly Intellectual Property Update sheds light on important IP events and decisions from the preceding weeks. Index to Our Newsletter For a free subscription of our IP Update, please email subscribe@sunsteinlaw.com IP Update, April 2012 Internet service providers, accused of displaying text and videos that infringe copyright, still have a safe harbor in the Digital Millennium Copyright Act, despite a nominal setback for Google. Viacom v. YouTube Beyoncé seeks to register a trademark for the name of her new baby, and provides a glimpse at commercialization strategies. More. . . The Supreme Court clears one obstacle to the market entry of generic drugs: Makers can now seek to compel brand manufacturers to correct overbroad “use codes.” Caraco Pharma v. Novo Nordisk Inter partes review, introduced by The America Invents Acts, holds the promise of speedy challenges to a patent’s scope. It may also produce claim construction that is binding in related infringement litigation. More. . . Means-plus-function patent claims for computer-based inventions remain subject to strict standards of validity. Remember to disclose the algorithm! Ergo Licensing v. Carefusion 303 “Best mode” requirement can harshly penalize a patentee who refrains from disclosing the optimal embodiment of his invention. Anvik v. Nikon IP Update, March 2012 The Supreme Court finds a diagnostic method ineligible for patent protection. Its dubious reasoning—that the invention simply tracks laws of nature—may inhibit innovation. Mayo v. Prometheus Labs The wording of label indications can affect ability to ward off generic-drug competition. AstraZeneca v. Apotex India has for the first time granted a compulsory patent license to a local generic-drug manufacturer. More. . . A galling patent-infringement defeat for the maker of Gore-Tex casts new light on a fundamental question: Who qualifies as an inventor? Bard v. W.L. Gore A 15-year litigation answers a thorny riddle: Whom can a patentee sue when his process patent is infringed—overseas--by a government contractor? Zoltek Corp. v. U.S. Not funny enough? The owner of the Crackberry website was denied registration of its trademark; the tribunal did not view the mark as a protectable parody of the famous wireless device. Research in Motion v. Defining Presence IP Update, February 2012 One can qualify as an inventor even if his contribution to a patented innovation is indirect, but a clear-cut rule is elusive. Falana v. Kent State No rigid test can determine whether a patented method is invalid for obviousness, but the failure of well-motivated scientists to devise a like method points to validity. Celsis v. CellzDirect Newt Gingrich and others have their reasons for picking a campaign theme song with no concern for the musician’s copyright. None of the reasons are good. More. . . Stiff punishment is upheld for founders of Pirate Bay, a website that enabled massive copyright infringement. More. . . IP Update, January 2012 Why do the lions of the Internet so vociferously oppose Congressional efforts to stem online piracy? Let us count the reasons. Starbucks’s repeated failure to stop a tiny rival’s use of “Charbucks” shows how hard it is to prove dilution of a famous mark. Starbucks v. Wolfe’s Borough Coffee Falling into the public domain is not irreversible, it seems. The Supreme Court affirms the restoration of copyright to foreign works. Golan v. Holder Even information that has been widely available can gain trade secret protection if new confidential information is added and proper safeguards put in place. AvidAir v. Rolls-Royce A patentee who persisted with hopeless litigation must pay the accused infringer’s legal fees. The Federal Circuit’s ruling may be a warning to patent trolls. MarcTec v. Johnson & Johnson We explain how invention mining enables companies to identify overlooked inventions and fortify their patent arsenal. Our new flow chart helps you determine if, and when, a copyright assignment can be terminated. IP Update, November 2011 Federal Circuit reminds trial judges that a patent owner’s “right to exclude” may well justify issuing a permanent injunction against competitors who are found to infringe. Robert Bosch LLC v. Pylon Mfg Despite traditional reluctance to apply U.S. law to foreign activity, court says federal agency can ban the import of products made abroad using misappropriated trade secrets. TianRui Group v. ITC If the facts allow, a trade secret claim is a valuable backup to a patent infringement claim, but litigants must be wary of arguing mutually inconsistent theories. Atlantic Research v. Troy IP Update, September 2011 New legislation introduces a first-to-file patent system to the U.S. Other striking changes will alter the way inventions are protected and patents are enforced. More... Federal Circuit offers fresh guidance on how to tell apart methods that are eligible for patents from those that are impermissibly abstract. Ultramercial v. Hulu How does the on-sale bar affect an inventor who offers for sale a product whose novel aspect has not yet been conceived? The answer turns on distinguishing a product from an invention. August Tech. v. Camtek Songwriters are not alone in considering their eligibility to terminate copyrights in popular works that they wrote but that others own. Graphic designers are similarly motivated. We analyze the imminent legal confrontation. More... IP Update, August 2011 The biotech community can breathe again after the Federal Circuit declares that human genes are eligible for patent protection. But diagnostic screening methods that involve only "mental steps" fall short of evolving standards for patentability. More. . . The doctrine of equivalents may offer little aid to a patent owner when the allegedly infringed claim limitation was amended during prosecution. The Federal Circuit held that an overbroad preamble, not to mention settled principles of estoppel, can put a limit on one's litigation options. More. . . The Federal Circuit imposes stiff sanctions on a "patent troll" whose carbon-copy lawsuits smacked of "extortion." Does this herald a tough new scrutiny of non-practicing entities who seek a quick score by targeting a host of alleged infringers? More. . . Those who create time-sensitive information--like stock recommendations--are provoked when news aggregators obtain and publicize that information without permission. The Second Circuit says that, in any resulting lawsuits, federal copyright law preempts claims under state law for "hot news" misappropriation. More. . . IP Update, June 2011 A university that receives a federal research grant cannot rely on the Bayh-Dole Act to divest the rights of an employee/inventor in patents that emerge from the research, says Supreme Court. More. . . The Supreme Court turns down Microsoft's bid to ease an accused infringer's burden of proving a patent's invalidity. The rigorous "clear and convincing evidence" standard remains in place. More. . . Recent cases have held that one can be liable for inducing infringement of a patent that he knows nothing about. The Supreme Court introduces a "willful blindness" test that makes inducement harder to prove. More. . . The Federal Circuit delivers a scorching critique of the overused "inequitable conduct" defense to patent infringement. It rolls out tough new standards -- for proving (a) patentee's deceptive intent and (b) the materiality of undisclosed prior art -- that spell an end to the reflexive use of this defense. More. . . IP Update, May 2011 Frustrated by the snail's pace of patent examination? Our chart shows ten ways to gain speedier attention, depending on the nature of your invention or your personal circumstances. More. . . Typically, you use a reissue to correct your patent when you realize its scope is broader or narrower than what you're entitled to. But the Federal Circuit says you can also add a dependent claim to brace your patent for an invalidity challenge. In re Yasuhito Tanaka Well-known elements-even those disclosed in a patent-can comprise a trade secret, as long as the combination of those elements gives a competitive edge and is closely guarded. Tewari De-Ox Systems v. Mountain States A new .xxx upper-level domain has been set aside for adult-entertainment websites. We explain how to protect your trademark from being associated with that industry. More. . . IP Update, March 2011 The switch to a first-to-file system is the most prominent of the changes that pending legislation would bring to patent practice. More. . . "Written description" requirement may thwart strategy of filing continuation patents to snare infringers. Centocor v. Abbott Labs Flurry of rulings is likely to stem recent rash of lawsuits over false patent-marking of goods. BP Lubricants USA Rejection of class-action settlement threatens to slow expansion of Google Books. Authors Guild v. Google IP Update, February 2011 Is it the claims or the specification that tell us what a patent covers? Top patent judges differ. Arlington Industries v. Bridgeport Fittings Joint infringement of a patent: Hard to prove with a method claim, much easier with a system claim. Centillion Data v. Qwest Communications IP Update, January 2011 Federal Circuit decries abstractness of "25% Rule," nixing common tool for calculating patent-infringement damages. Uniloc v. Microsoft New ruling on obviousness-type double-patenting calls for drafting strategies that cut risk of invalidation. Sun Pharma v. Eli Lilly To sue for infringement, exclusive licensee need not have right to exclude all others from practicing a patent. WiAV Solutions v. Motorola If no one person performs all the steps of a method claim, but two do, are they joint infringers? Depends on how the patent is drafted. Akamai v. Limelight Networks Patent wording determines whether a vendor avoids liability by disabling a product's infringing capabilities. Finjan v. Secure Computing Trademark strategy may dictate resisting disclaimer requirement and fighting for registration of complete mark. In re Sears Brands Amendment to Copyright Act clarifies publication and recordkeeping issues. More. . . IP Update, December 2010 Kicking back post-Bilski, Federal Circuit says a method is not too abstract to be eligible for a patent where it has clear practical application. Research Corp. v. Microsoft Appeals court takes harder line on copyright protection for technological safeguards on software. MDY Industries v. Blizzard Entertainment Can maker of items for foreign market halt their sale in U.S.? Supreme Court deadlock puts off definitive answer. Costco v. Omega Rival's egregious copying of software nets billion-dollar award for Oracle, a copyright infringement record. Oracle v. SAP IP Update, November 2010 Appeals court continues to diminish copyright protection for software makers' anti-piracy tools. MGE UPS Systems v. GE Consumer Government urges appeals court to limit patent-eligibility of genetic sequences. Myriad Genetics Supreme Court will referee tussle over professor's assignment of patent rights. Stanford Univ. v. Roche When an accused product complies with an industry standard, infringement can be proven if a patent covers the standard. Fujitsu v. Netgear IP Update, September 2010 Companies that participate in patent pools will not ordinarily be tagged for anticompetitive use of their patents. Princo v. ITC Examiners at the PTO follow new, patent-friendlier guidelines for determining the obviousness of an invention. More Hacking a security device in order to use a software program may not violate copyright law after all. MGE UPS Systems v. GE Consumer In a reversal regarding the first-sale doctrine, court says a software license can bar user from reselling the program. Vernor v. Autodesk Copyright law protects the non-utilitarian design elements of furniture against knockoffs. Universal Furniture v. Collezione Europa IP Update, August 2010 A federal appeals court makes it a bit easier for companies to prevent employees privy to essential trade secrets from working for a competitor. Bimbo Bakeries v. Botticella Liability for offering to sell goods that infringe a U.S. patent depends not on where you make the offer, but on where the goods are meant to be used. Transocean v. Maersk Fashion designers may soon enjoy copyright protection. A proposed law also accommodates the interests of imitators. More... IP Update, July 2010 Counterfeit Gucci handbags were sold on a website. In a novel ruling, a federal judge says that the companies that provided credit card services to support this infringing activity may themselves be liable for infringement. Gucci v. Frontline Processing Congress did not violate the First Amendment when it acted to restore copyright protection for certain works of foreign authors and composers even though they had long been in the public domain. Golan v. Holder In a long-running dispute between Mattel and MGA Entertainment over the ownership of the Bratz doll line, a judge placed this billion-dollar asset in constructive trust for the benefit of Mattel. Now an appeals court has scrapped this remedy as unfair. Mattel v. MGA Entertainment Patent owners continue to flock to the Eastern District of Texas with their infringement lawsuits. And the Federal Circuit continues to warn that, where contacts with that jurisdiction are fabricated, the litigation will be transfered to a more convenient forum. Zimmer Holdings IP Update, June 2010 Special Issue Supreme Court dispels inventors' anxiety: Business methods may be eligible for patent protection, and test for patentability cannot be too rigid. Bilski v. Kappos IP Update, June 2010 A covenant not to sue can extricate a patent owner from a declaratory judgment lawsuit, but it's not an antidote for most cases. Dow Jones v. Ablaise Falsely indicating that products are covered by a patent can incur heavy penalties, but would-be plaintiffs must prove a clear intent to deceive. Pequignot v. Solo Cup Fairness dictates that if you threaten someone with patent infringement, then dawdle before suing, you may forfeit your enforcement rights. Aspex Eyewear v. Clariti Eyewear IP Update, May 2010 To ban sales of a possibly infringing sequel to Catcher in the Rye, a solid showing of irreparable harm must be made. Salinger v. Colting Sales of counterfeit items do not expose eBay to trademark infringement when the wrongdoers are not known in advance. Tiffany v. eBay European court hands Google another win over businesses aggrieved by keyword advertising. Google v. Louis Vuitton Owner of trade secret in source code cannot pin liability for misappropriation on customers of program that incorporates the code. Silvaco v. Intel IP Update, April 2010 Federal judge rules DNA patents invalid, stirring anxiety in biotech industry. Ass'n for Molecular Pathology v. Patent & Trademark Office IP Update, March 2010 Copyright skirmish over postage stamp pushes the envelope on "fair use" doctrine. Gaylord v. U.S. Massachusetts museum battle ends with a key ruling: Artist's right of integrity applies to unfinished works. Mass MoCA v. Büchel "Deliberate indifference" to the existence of a competitor's patent can invite liability for inducing others to infringe that patent. SEB v. Montgomery Ward An inventor's failure to disclose the "best mode" for practicing his invention can result in the invalidity of his patent. Ajinomoto Co. v. ITC IP Update, January 2010 FTC alone decries payments for delaying introduction of generic drugs. More... Not funny enough: Seller of "Charbucks" coffee is liable for diluting a famous mark. Starbucks v. Wolfe's Borough Coffee Penalty for false patent-marking of goods has just increased. Forest Group v. Bon Tool Reissue procedure is meant to correct mistakes in a patent, not to fortify it against validity attacks. Ex parte Tanaka PTO must extend patent terms more generously where its own actions delayed approval of application. Wyeth v. Kappos IP Update, December 2009 Threshold for declaratory judgment actions against patentees falls yet lower. Hewlett Packard v. Acceleron College student fails to prove that his music downloads are a "fair use" exception to the copyright laws. Sony BMG v. Tenenbaum Cloner of Mac is held to infringe Apple's copyrights. Antitrust defenses are rejected. Apple v. Psystar Usefulness requirement prevents the patenting of inoperable inventions. Ex parte Lin Injunction out of reach? Patentees comfort themselves with "ongoing royalties." More... IP Update, November 2009 Google Book Project adjusts its goals and policies in response to lawsuit and widespread criticism. More... First Amendment bars football titan's challenge to use of his likeness in video game. Jim Brown v. Electronic Arts At oral argument, Supreme Court conveys skepticism on patentability of method inventions. Bilski v. Kappos Patent office offers applicants early opportunity to interview examiners and iron out patentability issues. More... IP Update, October 2009 First-sale doctrine does not apply to copyrighted works made overseas and sold in the U.S. Pearson Education v. Ganghua Liu When a patent is infringed for the benefit of the U.S. government, the patent owner has limited remedies. Advanced Software v. Federal Reserve PTO's new director rescinds unpopular prosecution rules and announces fresh initiatives to improve quality of examinations. More. . . Test results published after date of patent application come too late to satisfy enablement requirement. In Re ‘318 Patent Infringement Litigation Do you want favorable tax treatment of your hoped-for litigation award? Plan ahead. Freda v. IRS IP Update, September 2009 Because it transforms human samples and the human body, a medical diagnostic test meets Bilski's machine-or-transformation standard for method patents. Prometheus Labs v. Mayo Collaborative Services In reversing a $350m judgment against Microsoft, the Federal Circuit demands that parties support their damages calculations with solid market-based evidence. Lucent v. Gateway "Fraud on the PTO" will lead to fewer draconian losses of trademark registrations, now that the Federal Circuit holds that a knowing intent to deceive is the measure of fraud. In re Bose When the FDA is free to approve a new generic drug despite ongoing litigation between pharma companies, the pioneer manufacturer faces a logistical bind. Sanofi-Aventis v. Sandoz IP Update, August 2009 Attention accused patent infringers: Think twice before raising inequitable conduct defense. Exergen Corp. v. Wal-Mart Stores. Federal Circuit opens a loophole for practicing patented methods overseas. Cardiac Pacemakers v. St. Jude Medical. With provisional applications, multiple inventors on one patent can complicate international protection. Edwards Lifesciences v. Cook Biotech. Microsoft's highhanded conduct in developing Word 2003 incurs punitive damages in patent suit. i4i v. Microsoft. IP Update, July 2009 Did a judge's ban on publishing a sequel to The Catcher in the Rye offend the First Amendment? Salinger v. Colting The progressive encroachment doctrine lets trademark holders withhold suit until the likelihood of confusion "looms large." Roederer v. J. Garcia Carrion Unauthorized removal of a UPC from a retail product may amount to trademark infringement. Zino Davidoff SA v. CVS Corporation A Massachusetts employee cannot take advantage of California's prohibition on non-compete agreements. EMC Corporation v Donatelli The Dept. of Justice urges a harder line on "reverse payments" to generic drug makers. Ciprofloxacin Hydrochloride Antitrust Litigation IP Update, June 2009 In a boost for the internet security industry, our firm wins “Good Samaritan” immunity for maker of anti-malware products. Zango, Inc. v. Kaspersky Lab Joseph Abboud sells the "Joseph Abboud" trademark but might nevertheless be entitled to use his name in a new business venture. JA Apparel v. Joseph Abboud Are social media responsible for their users' transgressions? Twitter's problem with impostors gets Tony LaRussa's goat. Tony LaRussa/Twitter. In proving infringement under the doctrine of equivalents, don't overstretch the meaning of your patent, lest you be "ensnared" by the prior art. DePuy Spine v. Medtronic. Burden of proof placed on patent holders who seek preliminary injunctions will motivate accused infringers to mount early challenges to validity.Titan Tire v. Case new Holland How should judges decide requests to transfer venue? For one thing, consider the convenience of witnesses, says the Federal Circuit. In re Genentech IP Update, May 2009 Court unsnarls long-standing conflict over scope of product-by-process patent claims. More. . . Patent pools can promote efficient licensing, but bundling potentially competing technologies in one license can attract antitrust scrutiny. More. . . Displaying wares at U.S. trade show can subject foreign corporation to personal jurisdiction in a patent-infringement lawsuit. More. . . The Federal Circuit confines use of its two-way test for double patenting to applications that the PTO mistakenly approved out of sequence. More. . . It's fair use: Plagiarism-detection website does not infringe students' copyrights. More. . . "Crimes against copyright" - Swedish operators of file-sharing service get jail sentence. More. . . European court says Dior is entitled to protect its trademark's "aura of luxury." More. . . EU extends copyright term for musical performances. More. . . IP Update, April 2009 Although experimental use allows an inventor to push the deadline for patent application, reliance on this doctrine can be hazardous. More. . . Judge says Bilski not only compels rejection of a software patent but threatens the validity of all business method patents. More. . . Federal judges are expanding the "first sale" doctrine to defeat attempts by patent owners to limit the re-use or resale of their patented items. More. . . Marking your products as patented increases leverage against an infringer, but inaccurate marking can dangerously backfire. More. . . Even to honor copyright treaty obligations, the U.S. may not abridge Americans' rights to use works in the public domain. More. . . Second Circuit allows trademark owner to press its "keyword advertising" suit against Google, but an ultimate victory on infringement is unlikely. More. . . Standard commercial liability insurance covers claims for trademark infringement, says Minnesota Supreme Court. More. . . IP Update, March 2009 Pharma companies may soon gain a pathway toward approval for generic versions of biologic drugs. More. . . To inventors' dismay, court upholds PTO's authority to impose controversial restrictions on patent applications. More. . . Our study demonstrates the power of reexamination in challenging a patent's validity. More. . . Sunstein asks the Supreme Court to overturn Bilski's restrictions on the eligibility of method inventions for patent protection. More. . . Text-to-speech feature of Amazon's Kindle sparks conflict over authors' derivative rights. More. . . Bygone doctrine of "hot news" is invoked to challenge a headline service's practice of using AP's breaking news. More. . . In trademark litigation, the overused "fraud on the PTO" defense may now be on the ropes. More. . . UK joins several other countries in supporting rich rewards to employees who conceive extraordinary inventions. More. . . Open-source software finds its way to the heart of Microsoft's patent infringement suit against GPS manufacturer. More. . . Recent decisions give accused infringers hope of getting out of Texas. More. . . IP Update, February 2009 Obama the brand: Many seek to trade on President's luster. Not so fast. More. . . European court holds that trademark rights are not acquired by promotional uses. More. . . Odd facts will keep some Renoir artworks under copyright more than a century after his death. More. . . Postage stamp provokes "fair use" ruling that frustrates War Memorial sculptor. More. . . Apple dodges antitrust challenge to its clickwrap license. More. . . Theft of trade secrets is governed by state law, even if a patent is involved. More. . . For the first time, government contractors may be held liable for patent infringement. More. . . Court revises opinion that had cast doubt on viability of software and business method patents. More. . . Federal Circuit clarifies the nebulous doctrine of contributory patent infringement. More. . . IP Update, January 2009 District court overturns PTO policy, resulting in longer term-extensions for some recently issued patents. M ore. . . Protect your patent application from an "indefiniteness" rejection by avoiding ambiguous claim language. More. . . Pending reexam will not preclude preliminary injunction for infringement plaintiff. More. . . Patentee no longer needs to prove that defendant's challenge to patent validity lacks substantial merit in order to win a preliminary injunction. More. . . Cuban cigar maker protects Cohiba trademark . . . using state unfair-competition law. More. . . European Patent Office declines to protect invention that requires destruction of human embryos. More. . . European Commission criticizes pioneer drug companies for obstructing introduction of generic drugs. More. . . What a doll: Judge sweetens Mattel's employment-agreement victory in Bratz lawsuit. More. . . Massachusetts employers must act soon to safeguard against identity theft. More. . . IP Update, December 2008 New procedures now exist to streamline patent litigation in Massachusetts. Our firm was prominent in their promulgation. More … A judge who reduced a jury’s infringement damages award by 98% committed reversible error by not offering the plaintiff a new damages trial. More … In Bilski, the Federal Circuit recently imposed a new standard for the patentability of process claims. A subsequent opinion from the Board of Patent Appeals and Interferences says that Bilski does not apply to software product claims, and we explore how far that opinion might extend. More … The Federal Circuit holds that a prior patent disclosing all elements of a patentee’s claim does not necessarily anticipate that claim. More… Google settles copyright infringement claims arising out of its Book Search project for a headline number of $125 million, and we discuss Google’s skill at inviting litigation to resolve the uncertainties of copyright law. More… An electronic game showed a “gentlemen’s club” in a street scene that resembled an actual club in Los Angeles. The game maker’s right to do so, according to the Ninth Circuit, is protected by the First Amendment. More… The Federal Circuit becomes the third court of appeals to find that the “rule of reason” applies to patent settlements of ANDA litigation involving “reverse payments”, in which a generic drug manufacturer receives compensation and agrees not to launch its product. More… IP Update, November 2008 Special Issue Important new Bilski ruling limits patentability of processes, including business methods. More. . . IP Update, October 2008 Prior art that is unsuccessfully used to challenge the validity of a patent at trial can be reused to invalidate that patent in a PTO reexamination proceeding. More. . . A biotechnology patent is found invalid for lack of a written description where it claimed a broad bacterial genus, but the specification did not describe a sufficient number of species. More. . . Appellate court simplifies the test for infringement of design patents. More. . . Congress passes the "PRO IP Act", designed to deter trafficking in pirated works and goods bearing counterfeit trademarks. More. . . The Office of the US Trade Representative considers a treaty to further curb counterfeiting, and is sued for keeping its deliberations under wraps. More. . . The National Football League cannot use a sample from the voice of its long-time (but now deceased) announcer of NFL Films in advertising its Madden NFL video game. More. . . Congress enhances the Vessel Hull Design Protection Act, and we wonder whether it is enough protection for boat makers. More. . . IP Update, September 2008 A wandering employee takes some toy designs to another company, and a jury awards the jilted employer $100 million in damages. More . . A court of appeals finds no copyright infringement in the remote recording and playback of cable TV shows. More . . The first sale doctrine is found to be inapplicable to software made and sold overseas. More . . An open source license is found enforceable, and an injunction follows. More . . A dispute between an artist and a museum results in an "unfinished work" which is denied the moral rights codified in the Copyright Act. More . . MIT students who figured out how to hack the Boston subway system’s stored-value cards are free to talk about it. More . . The reverse engineering of a competitor’s design is fatally tainted by the small-scale participation of an employee with confidential knowledge of the competitor’s trade secrets. More . . The PTO warns that outsourcing of patent applications related to dual-use technology may require a Commerce Department License. We review other export-related restrictions that apply to the patent application process. More . . The Federal Circuit engages in creative statutory interpretation to conclude that the Hatch Waxman Act does not extend to testing equipment used in clinical trials but not itself the subject of an FDA application. More . . IP Update, July 2008 Conflicting judicial opinions from France and New York leave eBay and other internet businesses confused about their legal responsibilities. More. . . We are monitoring patent reexamination proceedings in the PTO and noticing distinct trends that may be discouraging to patent owners. More. . . Speedo swimsuits are all the rage among Olympic swimmers. We look at the technology behind the hoopla. More. . . The National Geographic Society republished its own magazines in CD-ROM format and found itself embroiled in a copyright dispute involving material it once owned outright. More. . . Absent careful planning, licensing a patent among corporate affiliates can be detrimental to its enforceability, as Mars, Inc. learned recently. More. . . Dispatch, Summer 2008 The risk of claims rejection or invalidation for indefinite statement of claims. More. . . Is the Federal Circuit moving away from the presumption of patent validity? More. . . A quick success strategy for accelerated patent examination. More. . . Notes from Julia Huston on a year of service as President of the Women's Bar Association of Massachusetts. More. . . IP Update, June 2008 "I bought it, I own it" – The United States Supreme Court extends principle that patent owner can't sue downstream buyer for infringement. More. . . A federal court says it may be legal for third-party purchaser to resell software on eBay, free and clear of the original license terms. More. . . Intentionally concealing basic prior art might not constitute inequitable conduct by patentee, Federal Circuit rules. More. . . Ten-year battle by Victoria's Secret is clinched by application of new trademark dilution law. More. . . In a new report, the FTC identifies a continuing trend in patent litigation: brand drug companies make “reverse payments” to generic drug companies, and the generic drug makers delay their market launch. While the FTC talks tough against this practice, it seldom litigates against it. More. . . A $25 million judgment against Sears accentuates the value of trade-secret protection and of a good non-disclosure agreement. More. . . IP Update, May 2008: Appellate court rejects brand-drug maker’s tactic for hindering generic-drug maker from challenging patents covering brand drug. More . . . Oral argument in major case over business-method patents foretells continuing viability of software patents. More. . . What makes a patent claim indefinite and therefore invalid? More. . . Recovering the Superman copyright – A tale of termination rights. More. . . PTO appeals from rejection of its proposed patent-prosecution rules. More. . . Professor calls into question constitutionality of patent appeals judges. More. . . Memory-chip maker escapes industry standards-setting snafu. More. . . IP Update, April 2008: Court rejects PTO’s proposed new patent-prosecution rules. More. . . Supreme Court: Erroneous arbitration decisions cannot be reviewed even if parties agree. More. . . FDA’s “safe harbor” rules apply to method patents no less than to product patents. More. . . Our firm makes good use of PTO’s new accelerated patent-examination procedure. More. . . Dispatch, Winter 2008: Changing requirements for damages in false advertising disputes. More. . . How to decipher patent expiration dates. More. . . The potentially worrisome ease of circumventing contract integration clauses. More. . . What to expect now that the new rules from the Patent and Trademark Office have been put on hold. More. . . Dispatch, Spring 2007 (special issue) Supreme Court’s decision in KSR v. Teleflex makes it easier to challenge a patent on the basis of obviousness. More. . . Dispatch, Spring 2007 Licensee can challenge validity of licensor’s patent even while doing business under the license, says Supreme Court in Medimmune opinion. More. . . Reflections on the role of patents in one’s overall business strategy. More. . . The growing prominence of inter partes patent-reexamination procedures. More. . . Plavix case illustrates perils of generic drug wars. More. . . Dispatch, Fall 2006 How to build a better clickwrap license. More. . . Our firm’s role in overhauling Massachusetts trademark law. More. . . In wake of Supreme Court’s eBay decision, a patentee who proves infringement faces a steeper challenge in obtaining injunctive relief. More. . . Supreme Court dodges opportunity to define the boundaries of patents for medical treatments grounded in basic scientific principles. More. . . Dispatch, Spring 2006 Courts cede to the marketplace a major role in balancing technology and copyright in the digital universe Details on our firm’s amicus brief in Supreme Court’s eBay case on the appropriateness of injunctive relief for patentees who have not reduced their invention to practice Dispatch, Winter 2006 An account of our firm’s victory representing a maker of musical instruments before a jury that found a rival liable for commercial disparagement and other misdeeds. We describe the provocatively liberal provisions of the new open-source license proposed by the Free Software Foundation Dispatch, Fall 2005 File-sharing takes a hit in the Supreme Court's copyright infringement analysis in Grokster Patentees can avert claim-construction disputes by including key definitions in the patent itself Selling accused products overseas can nonetheless expose you to patent infringement claims if the U.S. is where you make your contract to sell On-line advertising: Geico v. Google reveals ongoing tension between keyword searches and trademark infringement Dispatch, Spring 2005 Open-source software community gains strength from SCO v. IBM decision Accused infringers no longer to suffer adverse inference of willful infringement from failure to obtain opinion of counsel, says circuit court Introduction to decision-tree risk analysis: Innovative approach to determining the value of a lawsuit European trademark protection is now cheaper and simpler Dispatch, Winter 2004 We highlight the major changes to the new business corporation act in Massachusetts How effective is recent federal law in curbing spam Massachusetts adopts electronic transactions legislation Dispatch, Summer 2003 Important licensing lessons from copyright battle over Winnie the Pooh New Massachusetts tax law targets IP holding companies We assess the new European Community design law Top-level domain name .pro becomes available for use by professionals Dispatch, Winter 2003 Reprint of Investor’s Business Daily article quoting Bruce Sunstein on strategies for managing intellectual property Important court decisions in 2002 have enhanced the value of patents as business assets Changes to the international trademark registration process resulting from the pending implementation of the Madrid Protocol An alert to employers regarding HIPAA (Health Insurance Portability and Accountability Act of 1996) privacy compliance Dispatch, special June 2002 edition Supreme Court’s Festo decision addresses the effect that a narrowing amendment in a patent application has on the later availability of the doctrine of equivalents Dispatch, Spring 2002 Lessons for software developers and purchasers from the debate over the enforceability of clickwrap licenses An account of our representation of race car designer Carroll Shelby against the manufacturers of counterfeit COBRAs The challenges of gaining trademark protection for product designs, and the effectiveness of consumer surveys in this context Supreme Court to consider the constitutionality of further copyright extension Dispatch, Winter 2002 Issuing equity interests in an LLC to attract and retain key employees An advisory on the rights of employees who seek leave to serve in the military An advisory on tightened export controls Land use: Strategic considerations in seeking special permits, variances, and zoning amendments Dispatch, June 2001 (special edition) Procedures for trademark owners interested in registering their marks in two new top level domains, .biz and .info Dispatch, Spring 2001 Narrowing of patent protection under doctrine of equivalents calls for new approaches to patent prosecution New PTO guidelines require fresh biotech patent strategies Copyright protection for web pages UDRP’s effectiveness in protecting against domain name violations of trademark rights in domain names How our firm won an injunction against a company violating our client's trademark rights on the Internet Dispatch, Fall 2000 The FCC struggles with requiring cable companies to provide Internet access Patent applications must now be published: Reduced confidentiality may be balanced by broader availability of damages Competent clearance opinions can reduce exposure to patent infringement damages Anti-dilution law protects famous and distinctive trademarks Electronic signature law facilitates Internet commerce SEC ventures into regulation of stock offerings over the Internet Our firm’s success in protecting a famous mark against infringement and dilution by an e-commerce company Dispatch, March 1999 State Street Bank decision puts software patents on solid footing Protecting intellectual property through nondisclosure agreements Which state’s fiduciary laws govern the conduct of close-corporation shareholders Family-leave rights in Massachusetts Medicare + Choice program may not achieve aim of reducing healthcare costs Dispatch, June 1998 Our firm vindicates employment-related nondisclosure agreement against Anti-SLAPP challenge The Global Information Infrastructure begins to address international protection of IP rights Trademark disputes accompany explosion of e-commerce Massachusetts privacy law limits unannounced monitoring of employee e-mails New proposals for domain-name registration Dispatch, February 1998 Xerox decision illustrates that patent protection can trump antitrust challenge Our firm’s successful defense of medical-device maker against an infringement suit hinges on advocacy for narrow reading of means-plus-function patent claims Careful drafting can prevent a license from exceeding licensor’s intended grant of rights Implementing effective compliance for healthcare providers Advisory to our clients: Notify employees regarding harassment policies Dispatch, April 1997 Supreme Court, in Warner-Jenkinson, introduces important new limitations on patentee’s ability to show infringement under the doctrine of equivalents In-state use of IP can subject out-of-state corporation to statetaxation Congressional bills address significant healthcare issues Trade secret legislation is introduced in Massachusetts Dispatch, Fall 1996 Federal appeals court validates shrinkwrap software licenses Trademark tribunal cancels a registration due to invalid assignment of trademark application New federal law bars suits asserting physician’s infringement of patented medical procedure Dispatch, September 1996 Massachusetts law now requires written anti-harassment policy for employers Federal appeals court bars severance agreements that prohibit an employee from assisting governmental investigations Dispatch, January 1995 Major changes in U.S. patent law: In the wake of the signing of the GATT treaty, a patent will expire 20 years after its filing date. 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