Sunstein LLP

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100 High Street
Boston, MA 02110-1618, United States
Phone: (617) 443-9292
Fax: (617) 443-0004
Areas Of Practice
  • Art, Entertainment, & Sports Law
  • Business Organizations
  • Commercial Law & Contracts
  • Communications & Media Law
  • Intellectual Property
  • International Law & Trade
  • Litigation
  • Mergers & Acquisitions
  • Privacy
  • Science, Computers, & Tech
Locations
Other U.S. Locations
  • Massachusetts
Number of Attorneys
25-50 Attorneys

The “Luxury” of Trademark Protection Crosses an Unknown Frontier

The Lanham Act is seventy-six years old. Can it be applied effectively in a world coming to grips with non-fungible tokens? A lawsuit involving the luxury brand Hermès gives us a glimpse into a skirmish that is very much of the…more

False Designation of Origin, First Amendment, Intellectual Property Protection, Lanham Act, Luxury Goods

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The USPTO Giveth and Taketh Away

According to statute, if prosecution of a patent application is delayed due to the fault of the United States Patent and Trademark Office (“USPTO”), additional term is added to the life of the patent when it issues. This is…more

Patent Applications, Patent Term Adjustment, Patent Validity, Patents, USPTO

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Patentability 101

Article I, section 8 of the U.S. Constitution says that “The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their…more

Inventors, Patent-Eligible Subject Matter, Patents, Statutory Rights

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Enforcing a Non-Compete Against a Former Employee in California

What happens when a senior executive leaves a Massachusetts company, with which he has a non-compete, to go to work for a competitor in California, which forbids most non-competes? This question was front and center when…more

California, Enforcement, Non-Compete Agreements, Restrictive Covenants, Trade Secrets

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The CHIPS and Science Act of 2022 and the Emerging Intellectual Property Landscape

The United States, once the leader in both semiconductor innovation and manufacturing, is looking to regain its leadership position with the CHIPS and Science Act of 2022. The CHIPS Act will not only provide incentives (~$50B…more

Electronic Devices, Innovation, Intellectual Property Protection, Microchip Technology, Semiconductors

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Cyber-criminals Beware: Governmental Surveillance of Suspects Does Not Always Require a Warrant

A search warrant is not required for law enforcement to use pen registers to record the IP addresses visited by a criminal suspect, a federal appeals court recently held. This follows a 1979 Supreme Court case, Smith v…more

Computer Fraud and Abuse Act (CFAA), Criminal Investigations, Cyber Crimes, Cybersecurity, Law Enforcement

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Federal Circuit Reverses US Navy’s Short-Lived Avoidance of Software Piracy Claim

In 2016, the German software company Bitmanagement Software GMBH brought a headline-grabbing lawsuit against the Navy for copyright infringement, claiming among other things that the Navy unlawfully copied a limited 38-seat…more

Appeals, Breach of Contract, Contract Disputes, Copyright, Copyright Infringement

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Scraping Too Much Website Data May Be Trade Secret Misappropriation

Data scraping is a technique in which automated tools-- robots or “bots”--are used to extract large quantities of data from a website. In some cases, the extracted data has been developed by the website owner with considerable…more

Appeals, Data Collection, Defend Trade Secrets Act (DTSA), Misappropriation, Publicly Accessible Data

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July 2018 IP Update: In Limited Circumstances, the Supreme Court Permits Businesses to Recover Patent Damages for Sales Made Outside the U.S.

The Supreme Court recently answered the question whether a patent owner can collect damages caused by an infringer’s sales outside the U.S. Federal law typically reaches only conduct within the country, but the justices made an…more

35 U.S.C. § 271(f)(2), Appeals, Component Parts Doctrine, Damages, Domestic Injury

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The EU-US Privacy Shield is Invalid: Facebook May Be Only the First Casualty

News sources reported this month that the Irish data protection authority (DPA) had sent Facebook a preliminary order that would prohibit the transfer of information about European Union (EU) residents to US Facebook users…more

Binding Corporate Rules, Consumer Privacy Rights, Data Protection Authority, EU-US Privacy Shield, European Commission

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Trade Secret Damages Beyond the Actual Loss Suffered by Plaintiffs Become Harder to Obtain

The Southern District of New York vacates nearly $200 million in damages after remand from Second Circuit - On March 13, 2024, in Syntel Sterling Best Shores Mauritius Ltd. v. The TriZetto Group Inc., the Federal District Court…more

Commercial Litigation, Copyright, Copyright Infringement, Damages, Remand

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USPTO Proposes New Rules on Terminal Disclaimers: A Potential Setback for Patentees

The United States Patent and Trademark Office (USPTO) recently proposed a significant change to the rules governing terminal disclaimers. The USPTO says that the rule change would “promote innovation and competition,” but is…more

Double Patent, New Rules, Patents, USPTO

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Tacking in Trademark Law: Even Big Brands Sometimes Miss the Mark

Trademark law continues to be the cornerstone of brand identity. One concept that introduces a unique set of challenges in trademark law is “tacking.” Tacking is the ability of a trademark owner to modify their mark without…more

Appeals, Fashion Industry, Trademark Infringement, Trademark Registration, Trademarks

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Trademark Lesson Ripped from the Headlines: Trump Team Books the Wrong Four Seasons

Did the Trump campaign really mean to book Four Seasons Total Landscaping in Philadelphia and not the Four Seasons Hotel? And how can one city have two Four Seasons? Who would have thought, of all things, that these would be the…more

Consumer Confusion, Intellectual Property Protection, Likelihood of Confusion, Presidential Elections, Rudy Giuliani

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Section 101 Gains a Toehold in IPRs

Inter partes reviews (IPR) are limited by statute to grounds of invalidity under 35 U.S.C. §§ 102 (novelty requirement) and 103 (nonobviousness requirement) and on the basis of prior art patents or printed publications…more

Appeals, CAFC, Claim Limitations, Inter Partes Review (IPR) Proceeding, Method Claims

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When the NIH comes Marching In - Or Not

In an attempt to rein in rising drug prices, the Biden administration unveiled a proposed framework of factors that federal agencies should consider when choosing whether to exercise so-called “march-in rights.” March-in rights…more

Bayh-Dole Act, Biden Administration, Drug Pricing, Grants, National Institute of Health (NIH)

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Businesses Beware: Don’t Restrain Former Employees by Exaggerating Your Trade Secret Claims

The First Circuit seldom delivers opinions on trade secret claims, so employers should pay extra-close attention to the lessons to be learned from the court’s recent decision in TLS Management v. Rodríguez-Toledo..…more

Appeals, Contract Drafting, Former Employee, Misappropriation, Non-Disclosure Agreement

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The Long Arm of Trademark Law: Where do we draw the line?

Can a United States court really award tens of millions of dollars in damages for violation of US trademark law under the Lanham Act where the conduct at issue did not even take place in the United States? According to a federal…more

Corporate Counsel, Intellectual Property Protection, Lanham Act, Likelihood of Confusion, Trademark Infringement

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COHIBA v. COHIBA: TTAB orders cancellation of the COHIBA registration after a decades long dispute over the well-known trademark

In what may be the longest running trademark dispute in the United States, the U.S. Trademark Trial and Appeal Board (“TTAB”) in December 2022 ordered the cancellation of the COHIBA and COHIBA (stylized) registrations owned by…more

Intellectual Property Protection, Trademark Application, Trademark Cancellation, Trademark Infringement, Trademark Litigation

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For Those Challenging a Patent’s Validity in an IPR, New Clarity on Which Arguments Can Later be Litigated in Court

Inter partes review—or “IPR”—has become a popular avenue for accused patent infringers to challenge the validity of a patent’s claims outside of federal court. Any interested party may file for IPR, but the basis for challenging…more

Inter Partes Review (IPR) Proceeding, Partial Institution, Patent Litigation, Patent Trial and Appeal Board, Patents

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Two Federal Circuit Decisions Show Why Forum-Selection Clauses Require Clarity

Two recent Federal Circuit decisions involved the interpretation of forum-selection clauses in non-disclosure agreements. In particular, the question was whether the forum selected by the parties prevented a party from bringing…more

Forum Selection, Inter Partes Review (IPR) Proceeding, Non-Disclosure Agreement, Patent Infringement, Patent Litigation

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The Unified Patent Court and Unitary Patent Come to the European Patent Office

The European Patent Office and participating European Countries have established a Unified Patent Court and a European patent with unitary effect (also called a Unitary Patent) that will come into effect on June 1, 2023…more

EU, European Patent Office, Intellectual Property Protection, Opt-Outs, Patent Applications

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Federal Circuit Narrows “Comparison Prior Art” for Design Patent Infringement

The Federal Circuit Court of Appeals recently narrowed the scope of “comparison prior art” that may be used in a design patent infringement analysis. “Comparison prior art” includes references used to help highlight distinctions…more

Design Patent, En Banc Review, Intellectual Property Protection, Patent Infringement, Patent Litigation

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What’s in a Voice: How the Law is Being Used to Combat Deepfakes

While it may be amusing to hear a deepfake of President Biden singing “Baby Shark,” AI voice technology can just as easily be used for nefarious purposes, such as scams, extortion, and spreading misinformation. The ultimate harm…more

Artificial Intelligence, Deep Fake, Federal Trade Commission (FTC), Intellectual Property Protection, Joe Biden

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AI in the Patent Landscape: USPTO Directive Explores Inventorship Dynamics

In response to the rapidly evolving landscape of innovation and the integration of artificial intelligence (AI) into creative processes, the United States Patent and Trademark Office (USPTO) issued guidance effective February…more

Artificial Intelligence, Authorship, Duty to Disclose, Inventions, Inventors

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Sage Therapeutics Prevails in USPTO: Trademark Trial and Appeal Board Opposition to SAGEFORTH Mark

The USPTO Trademark Trial and Appeal Board issued a precedential decision on April 12, 2024, in favor of Sage Therapeutics, finding a likelihood of confusion between Sage’s SAGE CENTRAL mark and the mark SAGEFORTH, and refused…more

Food and Drug Administration (FDA), Pharmaceutical Industry, Trademark Registration, Trademark Trial and Appeal Board, Trademarks

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FTC Ban on Non-Competes Thwarted by Texas Federal Court

Since it was announced in May 2024, the impending FTC ban on non-competes has been mired in controversy. The Rule, which was set to go into effect on September 4, 2024, was intended to ban nearly all non-competition agreements…more

Federal Bans, Federal Trade Commission (FTC), Final Rules, FTC Act, Non-Compete Agreements

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Trial Court Ruling Threatens Patent Portfolio Development

A recent decision by a San Francisco federal district court judge imperils the way many significant patent portfolios are developed. In Sonos v. Google, Judge William Alsup held that two patents asserted by Sonos against Google…more

Appeals, Disclosure Requirements, Google, Patent Applications, Patent Infringement

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A Large Theft of Trade Secrets Sets a Record: The “Largest Damages Award on the books under the DTSA”

Sometimes it is all about the money. In Motorola v. Hytera, the Seventh Circuit Court of Appeals addressed “a large and blatant theft of trade secrets” from Motorola by its competitor Hytera. The damages awarded to Motorola,…more

Compensatory Damages, Damages, Defend Trade Secrets Act (DTSA), Infringement, Injunctive Relief

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Beware: Run-of-the-Mill Forum Selection Clause Could Thwart Patent Challenges

A patent infringement and breach of contract lawsuit in San Francisco may result in a sea change in the ability of licensees to challenge the validity of patents covered by their license. At stake is whether patent owners can…more

America Invents Act, Boilerplate Language, Breach of Contract, Corporate Counsel, Forum Selection

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