On June 19, 2017, the US Supreme Court in Matal v. Tam unanimously affirmed a decision by the US Court of Appeals for the Federal Circuit that Section 2(a) of the Lanham Act, which precludes “disparaging” trademark...more
As we implement the Eversheds Sutherland combination and expand our ability to serve clients around the globe, our US and international teams are working together to analyze issues impacting clients doing business in multiple...more
6/21/2017
/ America Invents Act ,
Americans with Disabilities Act (ADA) ,
Anti-Money Laundering ,
Attorney-Client Privilege ,
Cross-Border ,
Enforcement Actions ,
EU ,
Legal Advice Privilege ,
Patent Litigation ,
Post-Grant Review ,
Privileged Communication ,
Tax Reform ,
UK ,
Website Accessibility
On May 22, 2017, the US Supreme Court unanimously rejected prior case law allowing patent holders to rely on the general venue statute, 28 U.S.C. § 1391(c), to file suit where a domestic defendant makes sales. TC Heartland,...more
5/24/2017
/ Domestic Corporations ,
Foreign Corporations ,
Forum Shopping ,
Non-Practicing Entities ,
Patent Infringement ,
Patent Litigation ,
Personal Jurisdiction ,
Principal Place of Business ,
SCOTUS ,
TC Heartland LLC v Kraft Foods ,
Venue
All owners of websites accessible in the United States need to be aware of new rules that directly control a website owner’s potential liability for copyright infringement. On December 1, 2016, the United States Copyright...more
On March 21, 2017, the U.S. Supreme Court issued a 7-1 decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, wiping out the equitable defense of laches in some patent cases. In particular, where patent...more
On February 21, in Secure Axcess, LLC v. PNC Bank Nat’l. Assoc’n, the U.S. Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) characterization of Axcess’s patent as a covered business...more
The US Supreme Court held in Life Techs. Corp. v. Promega Corp., Slip No. 14-1538 (Feb. 22, 2017) that supplying a single component of a multi-component invention manufactured abroad does not give rise to patent infringement...more
On January 12, 2017, the U.S. Department of Justice and the Federal Trade Commission issued updated “Antitrust Guidelines for the Licensing of Intellectual Property” for the first time since 1995. The updated Guidelines are...more
In a case reversing a $399 million damages award to Apple, the U.S. Supreme Court has held unanimously that an “article of manufacture” under the design patent damages statute can be anything from an entire product to a...more
12/9/2016
/ Apple v Samsung ,
Article of Manufacture ,
Calculation of Damages ,
Component Parts Doctrine ,
Design Patent ,
Patent Infringement ,
Popular ,
Remand ,
Reversal ,
SCOTUS ,
Smartphones
In today’s competitive food and beverage industry, product labeling plays a significant role in marketing. Labels touting a product’s “natural” ingredients or health benefits allow manufacturers to charge a premium for their...more
On June 20, the U.S. Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 2016 WL 3369425 (June 20, 2016) upheld the Patent Office’s long-held policy of construing a patent claim according to its broadest...more
6/22/2016
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Chevron Deference ,
Chevron v NRDC ,
Claim Construction ,
Cuozzo Speed Technologies ,
Cuozzo Speed Technologies v Lee ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
SCOTUS ,
USPTO
On June 16, the U.S. Supreme Court’s decision in Kirtsaeng v. John Wiley & Sons Inc., No. 15-375, resolved a circuit court split by reaffirming the test district courts should use to determine whether to award attorney’s fees...more
On June 13, the U.S. Supreme Court unanimously rejected the Federal Circuit’s rigid two-part test for awarding enhanced damages in patent cases. In two cases decided together, Halo Elecs., Inc. v. Pulse Elecs., Inc., and...more
6/15/2016
/ 35 U.S.C. § 284 ,
Enhanced Damages ,
Halo v Pulse ,
Judicial Discretion ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Preponderance of the Evidence ,
SCOTUS ,
Seagate ,
Stryker v Zimmer ,
Willful Infringement
The Defend Trade Secrets Act, signed into law on May 11, 2016, includes a whistleblower immunity notice provision. An employer that wants to preserve maximum recoveries for misappropriation against an employee should take...more
5/19/2016
/ Attorney's Fees ,
Confidential Information ,
Damages ,
Defend Trade Secrets Act (DTSA) ,
Employees ,
Employment Contract ,
Immunity ,
Independent Contractors ,
Intellectual Property Protection ,
Misappropriation ,
New Legislation ,
Notice Requirements ,
Trade Secrets ,
Whistleblower Protection Policies
After overwhelming passage in both the House and Senate, President Obama signed the Defend Trade Secrets Act into law on April 11, 2016. The Act provides a truly uniform, nationwide set of standards for protecting trade...more
As expected, overwhelming support for the Defend Trade Secrets Act of 2016 led to its passage in the U.S. House of Representatives yesterday by a 410-2 vote. During the floor debate, one Congressman noted that “Congress has...more
4/29/2016
/ Asset Seizure ,
Defend Trade Secrets Act (DTSA) ,
Employment Contract ,
Ex Parte ,
Intellectual Property Protection ,
Misappropriation ,
Pending Legislation ,
Private Right of Action ,
Remedies ,
Trade Secrets ,
Whistleblower Protection Policies
The U.S. Senate has unanimously approved a bill increasing the protections available to companies for their commercial secrets. The Defend Trade Secrets Act of 2016 (DTSA or the Act) provides for the first time a truly...more
4/12/2016
/ Corporate Counsel ,
Defend Trade Secrets Act (DTSA) ,
Employment Contract ,
Intellectual Property Protection ,
Misappropriation ,
Pending Legislation ,
Popular ,
Private Right of Action ,
Remedies ,
Trade Secrets ,
Uniform Trade Secrets Acts ,
Whistleblower Protection Policies
The U.S. Court of Appeals for the Federal Circuit, en banc, has ruled that Section 2(a) of the Lanham Act precluding “disparaging” trademark registrations is unconstitutional, rejecting the argument that trademark...more
The U.S. Supreme Court, in a 6 to 3 ruling citing stare decisis, upheld the half-century rule against royalty payments accruing after expiration of a patent. The Court’s decision in Kimble v. Marvel Entertainment, LLC is a...more
6/24/2015
/ Brulotte ,
Expiration Date ,
Kimble v Marvel Enterprises ,
License Agreements ,
Patent Expiration ,
Patent Infringement ,
Patent Royalties ,
Patents ,
Royalties ,
SCOTUS ,
Settlement Agreements ,
Stare Decisis
On March 2, 2015, the U.S. Court of Appeals for the Federal Circuit issued its first-ever ruling addressing use requirements for registering service marks. The court held that offering a service, without the actual rendering...more
In its first substantive trademark ruling in more than a decade, the U.S. Supreme Court unanimously held on January 21, in Hana Financial, Inc. v. Hana Bank et al., No. 13-1211, that tacking – which is whether two trademarks...more
On January 20, the U.S. Supreme Court, in Teva Pharmaceuticals USA, Inc. v. Sandoz, rejected the de novo review standard applied by the U.S. Court of Appeals for the Federal Circuit when reviewing all claim construction...more
1/22/2015
/ Claim Construction ,
Clear Error Standard ,
De Novo Standard of Review ,
Intellectual Property Litigation ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Prescription Drugs ,
SCOTUS ,
Standard of Review ,
Teva Pharmaceuticals ,
Teva v Sandoz
On June 2, a unanimous U.S. Supreme Court held in Nautilus Inc. v. Biosig Instruments Inc. that a patent claim may be found indefinite if it fails to convey the scope of the invention “with reasonable certainty” to a person...more
On June 2, 2014, a unanimous U.S. Supreme Court held in Limelight Networks, Inc. v. Akamai Technologies, Inc. that direct infringement by a single party is a prerequisite to a finding of induced infringement. In doing so, the...more
Efforts by the U.S. Senate to pass an alternative to the Innovation Act, which aims to reform abusive patent litigation, have stalled. Sen. Patrick Leahy, who is leading the effort, has announced that his committee is tabling...more
5/26/2014
/ Apple ,
Attorney's Fees ,
DuPont ,
Federal Trade Commission (FTC) ,
Fee-Shifting ,
Ford Motor ,
General Electric ,
Highmark ,
Highmark v. Allcare ,
IBM ,
Innovation Act ,
Medtronic ,
Microsoft ,
Octane Fitness v. ICON ,
Patent Litigation ,
Patent Reform ,
Patent Trolls ,
Patents ,
Pfizer ,
USPTO