January 17 2020

Copying by Competitors is Evidence of Nonobviousness of an Invention

 

by Audrey A. Millemann
The IP Law Blog

The Patent and Trademark Office (PTO) may reject a patent application on several different grounds.  One of those grounds is obviousness.  Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art, then it is not patentable.

In determining whether an invention is obvious, the PTO compares the invention to the “prior art” – all similar inventions that are publicly available at the time the application is filed. 

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January 10 2020

When Do You NOT have the Right to Remain Silent? Conservatorship Proceedings and Equal Protection Clause Claims

 

By Allison M. Pedrazzi
Trusts & Estates Law Blog

Thanks to Law and Order, we’re all familiar with the beginning of a person’s Miranda Warning: “You have the right to remain silent.  Anything you say can and will be used against you in a court of law.”  What many may not know, however, is that this is a right only afforded to those involved in criminal proceedings. 

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January 10 2020

Is a Copyright Notice Sufficient Evidence a Textbook Is a Printed Publication for Institution of Inter Partes Review?

 

By Jo Dale Carothers
IP Law Blog

To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify as a printed publication. Is a copyright notice sufficient evidence that a textbook was publicly accessible? The short answer is no in most,

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January 9 2020

New Year, New Minimum Wage

 

By Katie Collins
Labor & Employment Law Blog

Effective January 1, 2020, California’s minimum wage rate increased to $13.00 per hour (from $12.00) for employers with 26 or more employees and $12.00 per hour (from $11.00) for employers with 25 or fewer employees. The minimum wage will continue to increase yearly until it reaches $15.00 per hour on January 1, 2022 for employers with 26 or more employees and January 1,

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January 3 2020

Disney Seeks to Stop the Rise of Infringing Baby Yoda Goods on Etsy

 

By Josh H. Escovedo
IP Law Blog

When Disney chose to delay the production and release of merchandise related to The Child—commonly referred to as Baby Yoda—from its hit series, The Mandalorian, it created a significant opportunity for unlicensed fans to create and sell such merchandise. According to statements released by the Walt Disney Company, it intentionally delayed the production of Baby Yoda merchandise to avoid any leaks about the character’s existence until The Mandalorian aired.

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December 30 2019

Court Blocks Ban on Mandatory Arbitration Agreements in Employment

 

By Lukas Clary
Labor & Employment Law Blog

Mandatory arbitration agreements in California employment have been granted a stay of execution. For now. Earlier today, a federal judge in California issued a temporary restraining order enjoining enforcement of AB 51, the new California law that would have banned employers in the state from requiring employees to sign mandatory arbitration agreements as a condition of employment.  AB 51 was set to take effect on January 1,

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December 27 2019

Player/Haters May Be Original Afterall

 

by Scott Hervey
IP Law Blog

In the early 2000’s, an all-girl band called 3LW performed a song called “Playas Gon’ Play,”  which was written by Sean Hall and Nathan Butler.  “Playas Gon’ Play” was initially released in May, 2001 and rose to number 81 on the Billboard’s Hot 100 chart.  The album on which “Playas Gon’ Play” appeared sold over One Million copies and 3LW performed the song numerous times on national television. 

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December 23 2019

Religious Employer Prevails Over Allegations That it Waived Religious Entity Exemption From FEHA

 

By Shauna Correia
Labor & Employment Blog

In 2018, this author blogged about how religious entities can navigate the potential traps when they seek to comply with the federal laws against anti-harassment, discrimination and retaliation laws by adopting handbook policies and training their employees, while protecting their status as exempt from the California analog to Title VII, the Fair Employment and Housing Act (FEHA).  While that case was up on appeal,

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December 19 2019

U.S. Supreme Court Strikes down USPTO’s Request for Attorney’s Fees

 

By Eric Caligiuri
IP Law Blog

In a unanimous ruling, the U.S. Supreme Court in Peter v. NantKwest, case number 18-801, struck down the U.S. Patent and Trademark Office’s (USPTO) recent and often-criticized effort to recoup its legal fees – even in cases it loses – because it violates the so-called American Rule, which says U.S. litigants must typically pay for their own lawyers.

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December 12 2019

Challenging a Trade Secret Injunction? Better Come Loaded For Bear

 

By James Kachmar
IP Law Blog

One of the most common forms of relief sought in trade secret litigation is an injunction preventing the defendants from using or disclosing the plaintiff’s trade secret information.  Although temporary restraining orders and/or preliminary injunctions may be obtained that are in place during the lawsuit, a permanent injunction is entered after trial and typically has no set time period for expiration.  There are various statutes that allow a defendant to seek to modify or dissolve a trade secret injunction at a later date,

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December 6 2019

Boxing Fans Knocked Out Twice: Ninth Circuit Affirms Dismissal of Class Action Alleging Fraud in Pacquiao-Mayweather Fight

 

By Josiah M. Prendergast
Litigation Law Blog

In 2015, world-renowned boxers Manny Pacquiao and Floyd Mayweather, Jr. faced off in what was promoted as the “Fight of the Century.” After twelve largely uneventful rounds, the fighters and fans walked away without much fanfare—no knockout, no technical knockout, just a scorecard victory for Mayweather.

Leading up to the fight, Pacquiao’s camp extolled his excellent fitness and preparedness,

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December 5 2019

Patent Priority Dates Must Be a Priority!

 

By Audrey A. Millemann
IP Law Blog

The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on; it is based on the filing dates of any related patent applications that were filed before the application (the priority chain).  This date determines which prior art can be used by the Patent and Trademark Office to determine patentability of the invention and which prior art can be used by competitors to challenge the patent’s validity.

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December 4 2019

Online Gaming Case Addresses Trigger for One-Year IPR Filing Deadline

 

By Jo Dale Carothers
IP Law Blog

When sued for patent infringement, a defendant can still petition for inter partes review (“IPR”) of the asserted patent at the United States Patent and Trademark Office (“USPTO”) if the petition is filed within one year of service of the complaint.  But, as Game & Technology Co. v. Wargaming (Fed. Cir. 2019) reminds us, a plaintiff must properly serve the complaint to trigger the one-year deadline. 

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November 21 2019

OK, BOOMER: Fox Media Seeks Registration of the Viral Phrase From the USPTO

 

 

By Josh Escovedo
IP Law Blog

If you’re plugged into the digital world and its constantly emerging meme trends, you’ve probably encountered various “OK, Boomer” memes by now. If you’re unfamiliar with the trend, here is a brief synopsis. OK, Boomer is a phrase that is used in response to members of the baby-boomer generation who have, through their conduct, demonstrated that they are out of touch.

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November 21 2019

Even Unintentional Disability Discrimination is Actionable in California

 

By Brendan J. Begley
Labor & Employment Law Blog

In a decision that may lead employers to feel a little less gratified on Thanksgiving Day, a California appellate court determined last week that “even a legitimate company policy, if mistakenly applied,” can lead to liability for disability discrimination in the Golden State.  Specifically, the Court of Appeal ruled that “a lack of [discriminatory] animus does not preclude liability for a disability discrimination claim.”  A copy of that decision in is available at this link.

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November 19 2019

Casebriefs – How Recent Decisions Could Impact You

 

By Allison M. Pedrazzi
Trusts & Estates Law Blog

In our monthly department meetings, the trusts and estates group at Weintraub keeps current by reviewing recent cases and discussing how they could affect our practice. See below for some highlights from the past few months:

Pena v. Dey – When is Self-Help Enforceable?

(Filed August 30, 2019)

The gist:

James Robert Anderson established a living trust in 2004,

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November 14 2019

Order in Netflix Lawsuit is a Reminder of the Bounds of Copyright Protection

 

By Scott M. Hervey
IP Law Blog

Virginia Vallejo, a well known Colombian journalist and media personality, authored the memoir “Loving Pablo, Hating Escobar”.  The book is a factual account of her romantic relationship with Pablo Escobar and a chronicle of the rise of the Colombian drug cartel.

Vallejo claimed that certain scenes in the television series Narcos infringed the copyright in her book,

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November 12 2019

There's No Place Like Home - Heightened Evidentiary Standard for Moving Conservatees from Their Personal Residence

 

By Carlena L. Tapella
Trusts & Estates Law Blog

Frequently when a conservatorship proceeding is commenced, the proposed conservatee is residing in his or her personal residence. Having a conservatorship established can be a distressing experience for a conservatee who has awareness of the effect of such a proceeding. One primary concern may be whether there is going to be a change to living arrangements with which the conservatee has been familiar,

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November 7 2019

Federal Circuit Holds Administrative Patent Judges Appointments Unconstitutional

 

By Eric Caligiuri
IP Law Blog

In Arthrex Inc. v. Smith & Nephew Inc. et al., case number 18-2140, the U.S. Court of Appeals for the Federal Circuit recently considered whether the appointment of the Board’s Administrative Patent Judges (“APJs”) by the Secretary of Commerce, as currently set forth in Title 35, violates the Appointments Clause of the U.S. Constitution.  The Federal Circuit held that the statute as currently constructed makes the APJs principal officers.  

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October 31 2019

What Happens When the Intellectual Property Laws Clash with the Antitrust Laws?

 

By Audrey A. Millemann
IP Law Blog

Should a company be required to license its patents to a competitor?  That’s one question that arises when intellectual property law and antitrust law intersect.

The Sherman Act, section 1, prohibits concerted action (agreements, combinations, or conspiracies) that restrain trade.  Four types of conduct are per se unlawful; i.e., illegal regardless of the reason.  They all involve agreements between competitors,

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October 24 2019

When Does A Patent Expire? Ask the Federal Circuit!

 

By Audrey A. Millemann
IP Law Blog

Before 1995, the term of a U.S. utility patent was 17 years from the day the patent issued.  In 1994, the federal statutes were changed to make the patent term 20 years from the effective filing date of the patent application.  This change was part of the Uruguay Round Agreements Act and was intended to make U.S. patents comparable to foreign patents,

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October 23 2019

How to Get Rid of a Dead Body

 

By Daniel C. Kim
California Trusts and Estates Quarterly

This article was first published in Volume 25, Issue 3, 2019 of the California Trusts and Estates Quarterly, reprinted by permission.

Those of us who watched AMC’s hit drama “Breaking Bad” may recall the scene in the pilot episode where Walt and Jesse set out to dissolve a dead body in hydrofluoric acid.

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October 18 2019

Important Tax and Estate Planning Update

 

By Anna Michnicka
Trusts & Estates Law Blog

You may have heard by now that the Gift and Estate Tax exemption amount was increased by the Tax Cuts and Jobs Act of 2017, which became effective on January 1, 2018. This article is to highlight some of the key estate planning issues under the new tax law.

In 2019, the Gift and Estate Tax exemption as adjusted for inflation is $11.4 million,

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October 17 2019

New California Law Will Outlaw “No-Rehire” Provisions in Settlement Agreements

 

By James Kachmar
Labor & Employment Law Blog

I have discussed in the past how the use of “no-rehire” provisions in settlement agreements between employers and their former employees were coming under attack in court.  In 2015, the Ninth Circuit in Golden v. California Emergency Physicians Medical Group held that a “no-rehire” provision in a settlement agreement between the plaintiff doctor and his former employer could be found to violate section 16600 of the Business and Professions Code,

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October 17 2019

PTAB Invalidates Data Privacy Risk Assessment Patent

 

By Jo Dale Carothers
IP Law Blog

Many resources are being devoted to preventing data breaches and protecting privacy.  In fact, patents have issued on various approaches.  But are those approaches really patentable?   In a recent challenge to OneTrust’s patent, which is related to data privacy risk, the Patent Trial and Appeal Board (“PTAB”) found the subject matter patent ineligible.

OneTrust’s patent, U.S. Patent No.

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October 15 2019

New Laws that Will Significantly Impact the Litigation of Employment Disputes

 

By:  Lizbeth “Beth” West, Esq.
Labor & Employment Blog

The October 13, 2019 deadline for Governor Newsom to take his final actions in the 2019 legislative season has come and gone and as expected, he signed into law a number of employment-related bills. Below is a summary of just a few of those bills that will have a significant impact on employment litigation in California.

A.               

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October 11 2019

Counterculturalist Banksy to Defend His Intellectual Property in a European Cancellation Proceeding

 

By Josh H. Escovedo
IP Law Blog

If you’re familiar with Banksy, you know he’s the epitome of counterculturalism. For those of you who aren’t familiar with Banksy, he is an anonymous England-based street artist, vandal, political activist, and film director who has been active since the 1990s. His satirical street art and subversive epigrams combine graffiti and dark, sometimes morbid, humor. If you have a minute,

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October 3 2019

Compliance Deadline for California’s New Privacy Act Coming Up Fast; Are You Ready?

 

By Scott M. Hervey
IP Law Blog

The deadline for business to implement compliance with the California Consumer Privacy Act is just around the corner and chances are most businesses are not ready.

On June 28, 2018, Governor Brown signed into law the California Consumer Privacy Act of 2018.  The Act applies to any business which does business in California, and i) has annual gross revenues in excess of $25 million;

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September 26 2019

Federal Circuit Holds That Claim Language Can Limit the Scope of a Design Patent

 

By Eric A. Caligiuri
IP Law Blog

In Curver Luxembourg SARL v. Home Expressions Inc., case number 18-2214, the U.S. Court of Appeals for the Federal Circuit recently held that the claim language of a design patent can limit its scope where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.

Plaintiff Curver had asserted U.S.

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September 19 2019

LinkedIn Profiles and the Applicability of the Computer Fraud and Abuse Act

 

By James Kachmar
IP Law Blog

LinkedIn is a popular professional networking website with more than half a billion members. Many of its users, in an effort to enhance their networking capabilities, make their profile public and available to anyone to review their personal details such as their employment, education, skill sets and other personal information. Although LinkedIn disclaims any ownership of the information its users post,

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September 16 2019

The California Supreme Court Clarifies Wages are NOT Part of the “Civil Penalty” under Labor Code Section 558 in a PAGA Action

 

By Lizbeth (Beth) V. West
Labor & Employment Blog

On September 12, 2019, the California Supreme Court issued its decision in ZB, N.A., and Zions Bancorporation v. Superior Court [Lawson, real party in interest] (“Lawson”).  In analyzing whether the Plaintiff’s lawsuit could be compelled to binding arbitration under the arbitration agreement she entered into with her employer, the Supreme Court clarified that under Labor Code section 558,

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September 12 2019

Landlords - Watch out for Trademark-Infringing Tenants!

 

By Audrey A. Millemann
IP Law Blog

Landlords whose tenants sell counterfeit goods can be liable for trademark infringement if they have knowledge of the infringing acts or are willfully blind to the infringement.

In Luxottica Group v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. August 2019), Oakley, Inc. and its parent Luxottica sued the owners of a shopping mall in Georgia for contributory trademark infringement under the Lanham Act (15 U.S.C.

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September 9 2019

I Think My Client Is About To Be Sued: How to Execute A Proper Litigation Hold

 

By Donald R. Williams, Jr.
Litigation Blog

The duty to preserve potentially relevant evidence is an affirmative obligation.  Yes! Attorneys and their clients must take action to ensure preservation of discoverable documents.  The duty to preserve evidence arises when a party knows, or reasonably should know, that the evidence is relevant to pending or future litigation. (Zubulake v. UBS Warburg, 220 F.R.D. 212, 217.)  Simply, a party should preserve evidence when the party is on notice of potential litigation or investigation.

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September 5 2019

California Employers Have Another Year To Comply With New Mandatory Sexual Harassment Prevention Training Requirements

 

By Shauna N. Correia
Labor & Employment Blog

Last year, new California legislation effective January 1, 2019 expanded the mandatory sexual harassment prevention training requirements for California employees.  That law required that, by January 1, 2020, employers with 5 or more employees must provide their supervisory employees with two hours of classroom or other effective interactive training and education AND must provide their non-supervisory employees with one hour of classroom or other effective interactive training and education. 

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September 5 2019

Federal Circuit Invalidates Garage Door Opener Patent Because It Is an Abstract Idea

 

By Jo Dale Carothers
IP Law Blog

Have you ever driven away from your home and then had that irritating doubt in your mind as to whether you remembered to close your garage door? I know I have. No matter how hard I try to search my brain’s archives, I really don’t remember whether I closed the garage door even though I close it 99.9% of the time!

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September 4 2019

Time to Get Down to Business: Change in Eviction Notice Requirements Now in Effect

 

By Mark E. Ellinghouse & Josh H. Escovedo

 

As you may know, late last year, California Governor Jerry Brown signed Assembly Bill 2343, which changes the long-standing notice requirements that apply before a landlord can pursue an unlawful detainer action against a tenant who has violated its lease. The new requirements are now effective, applying to all leases whether for residential or commercial property.

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September 3 2019

Ninth Circuit Clarifies the Interactive Process Does Not Apply to Public Accommodations under Title III

 

By Nicholas E. Ma
Labor and Employment Blog

The United States Court of Appeals for the Ninth Circuit recently confirmed in Tauscher v. Phoenix Board of Realtors, Inc. that while employers must engage in an “interactive process” with disabled employees to explore possible accommodations, there is no interactive process requirement for public accommodations and services.  By the same token, businesses and entities providing public accommodations cannot discharge the duties they owe to disabled patrons because of a failure to engage in the interactive process.

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August 29 2019

The USPTO Denies Tom Brady’s Application to Register TOM TERRIFIC

 

By Josh Escovedo
IP Law Blog

The USPTO recently refused legendary quarterback Tom Brady’s application to register the mark TOM TERRIFIC. If you’re like me, you’re wondering why Tom Brady would want to register such a trademark. Well, according to Brady, he wanted to obtain the rights to the mark to prevent people from referring to him by that nickname. But that response isn’t satisfactory for those of us who know about trademark law for a couple of reasons.

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August 26 2019

An Inadequate Privilege Log, Or Even The Failure To Serve A Privilege Log, Will Not Result In The Waiver Of Privilege And Protection Based Objections Timely Asserted In Discovery Responses

 

By Jacob Gonzales
The Litigation Blog

In Catalina Island Yacht Club v. Superior Court (2015) 242 Cal.App.4th 1116, the California Court of Appeal (Fourth District, Division Three), squarely addressed the question: “May a trial court find a waiver of the attorney-client privilege and work product doctrine when the objecting party submits an inadequate privilege log that fails to provide sufficient information to evaluate the merits of the objections?” The answer,

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August 23 2019

Will Assembly Bill 5 - and the Answer to the Question of … What Test Applies When Classifying Independent Contractors … Make it to the Governor’s Desk this Year?

 

By Lizbeth (Beth) V. West
Labor & Employment Law Blog

If you’re like me – and thousands of other attorneys, business owners, and individuals in California – you’ve probably been following the progress of Assembly Bill (“AB”) 5 and holding your breath and wondering with anticipation if Governor Newsom will sign the Bill if it makes it to his desk.  As a reminder, AB 5 is the proposed Bill to codify the decision in Dynamex v.

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August 22 2019

Supreme Court Ruling In Pirate Ship Copyright Case Could Sink State Immunity

 

By Scott Hervey
IP Law Blog

The Supreme Court is set to hear the case of Allen v. Cooper which addresses the constitutionality of the Copyright Remedy Clarification Act (“CRCA”). The purpose of the CRCA is to abrogate sovereign immunity enjoyed by States and State actors under the Eleventh Amendment for claims of copyright infringement. The CRCA provides as follows:

Any State, any instrumentality of a State,

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August 20 2019

What Aretha Franklin’s Estate Teaches Us About the Pitfalls of Handwritten Wills

 

By Leslie R. Kolafa
Trusts & Estates Blog

Typically, only those of us who are trusts and estates attorneys geek out over the fascinating problems that handwritten wills create. But when those wills were written by a music icon worth $80 million, suddenly this topic is intriguing to a much broader audience. Aretha Franklin died on August 31, 2018. Her family was confident that she died without a will,

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August 15 2019

Federal Circuit Holds IPR Proceedings on Pre-AIA Patents is Not an Unconstitutional Taking Under the Fifth Amendment

 

By Eric Caligiuri
IP Law Blog

In CELGENE CORPORATION v. PETER, the Federal Circuit recently affirmed the PTAB’s decisions finding appealed claims obvious. However, more importantly, the Federal Circuit also held that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.

Regarding the constitutional issue of whether the retroactive application of IPRs to pre-AIA patents is an unconstitutional taking,

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August 8 2019

Ninth Circuit Inquiry on Non-Competes Could Have Huge Implications

 

By James Kachmar
IP Law Blog

The Ninth Circuit recently asked the California Supreme Court to provide it with guidance concerning certain types of non-compete provisions that could have huge ramifications for California’s business environment.  In essence, the Ninth Circuit asked the California Supreme Court whether section 16600 of the California Business and Professions Code bars agreements between businesses that place a restriction on one business from doing business with another. 

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August 6 2019

The Wonderful Land of OZ: An Overview of Opportunity Zones

 

By Aman Badyal

Opportunity Zones (or OZs) may be the most talked-about provision of the Tax Cuts and Jobs Act of 2017.  There are many twists and turns on the yellow brick road to completing an OZ project.  This article sets forth the underlying rationale of the OZ program, its principal tax benefits, an overview of the basic requirements for making an eligible investment, and certain common problems encountered by taxpayers seeking to take advantage of OZs.

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August 1 2019

Do Your Homework Before Suing for Patent Infringement!

 

By Audrey A. Millemann
IP Law Blog

The federal patent laws provide for an award of attorneys’ fees to the prevailing party in exceptional patent infringement cases.  35 U.S.C. §285.  An exceptional case is determined based on the totality of the circumstances.  A case can be exceptional due to a substantive legal position taken by a party or a party’s unreasonable litigation tactics.  Courts can and will award attorneys’

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July 25 2019

Rule Change Requires U.S. Counsel for Foreign-Domiciled Trademark Applicants

 

By Jo Dale Carothers
IP Law Blog

The United States Patent and Trademark Office (the “USPTO”) explains that

“A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.”

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July 19 2019

California Dramatically Expands Consumer Privacy Rights For the Entire Country

 

By: Jessica R. Corpuz
Litigation Blog

California recently passed the California Consumer Privacy Act of 2018, described by Former Gov. Jerry Brown as a “historic step” for California consumers, “giving them control over their personal data.”  He claimed that the law “forges a path forward to lead the nation once again on privacy and consumer protection issues.”

This is not just political puffery.  The Consumer Privacy Act has broad-ranging implications for the rest of the country,

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July 18 2019

Goodbye Majestic Yosemite Hotel, Welcome Back Ahwahnee Hotel

 

By Josh Escovedo
IP Law Blog

A few years ago, when the concessionaire for Yosemite National Park (the “Park”), Delaware North, was informed that the Park planned to consider other concessionaires, such as Aramark, Delaware North responded in shocking fashion. Delaware North responded that if it was going to be replaced as the concessionaire, it intended to take the Park’s intellectual property (the “IP”), such as the Ahwahnee Hotel and Curry Village,

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July 11 2019

Supreme Court Decision Will Have Huge Economic Impact on Trademark Infringement Damages

 

by Scott Hervey
IP Law Blog

The Supreme Court has agreed to resolve a circuit split over when a court can order the payment of an infringer’s profits to a successful plaintiff as a measure of damages.  The matter comes to the Supreme Court as an appeal from the Second Circuit decision in Romag Fasteners Inc. v. Fossil Inc. et al.  In that case,

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July 8 2019

Losing Twice at Trial: Denying Requests for Admission Can Come Back to Bite You

 

By: Josiah M. Prendergast
Litigation Blog

Litigation tends to be expensive, increasingly so due to the burdens of discovery. (You can thank the advent of emails, text messages, and other forms of communication now documenting conversations that used to take place by phone or in-person.) Litigants often find themselves tempted to use discovery as a bludgeon against their opponent, a means of extorting a righteous plaintiff or defendant into settling the case because the cost of proving the truth is simply too onerous.

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July 5 2019

Federal Circuit Sets Higher Standard for Early Alice Motions

 

by Eric Caligiuri
IP Law Blog

In Cellspin Soft, Inc. v. Fitbit, Inc. et. al., the Federal Circuit recently held that a lower court wrongly invalidated four patents under Alice because they contain an inventive concept. The four patents at issue share the same specification and generally relate to connecting a data capture device, e.g., a digital camera, to a mobile device so that a user can automatically publish content from the data capture device to a website.

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June 27 2019

Web Domains and The Forgotten Tort of Trespass to Chattels

 

by James Kachmar
IP Law Blog

California case law over the last few years is replete with instances where a new and/or small business has one of their employees take responsibility for various IT activities such as setting up the company website and/or email domains.  Disputes arise when that employee leaves for other employment and refuses to give the former employer access to the business domain and/or emails. 

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June 20 2019

When is an Invention Obvious?

 

by Audrey Millemann
IP Law Blog

To be patentable, an invention must satisfy two key requirements, as determined by the U.S. Patent and Trademark Office (PTO).  First, the invention must be novel.  This means that the same invention cannot have been disclosed in a single prior art reference.  The prior art is all of the publicly available information that existed before the date the patent application was filed. 

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June 13 2019

Supreme Court: Federal Government Cannot Challenge Patents in PTAB

 

by Audrey Millemann
IP Law Blog

The validity of a patent can be challenged in four different types of proceedings: ex parte reexamination, inter partes review, post grant review, and covered business method review. An ex parte reexamination is initiated by any person or by the PTO’s director to request that the PTO internally reexamine the claims of the patent based on prior art.

The other three proceedings were established by the America Invents Act.

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June 6 2019

Potential Copyright Owners Beware: Make Sure Your Copyright Registrations Are Accurate!

 

by James Kachmar
IP Law Blog

Normally, a copyright registration certificate constitutes “prima facie evidence of the validity of a copyright and of the facts stated in the certificate.”  17 U.S.C. §410(c).  But what happens if that certificate contains knowingly inaccurate information? The purported copyright owner could face not only invalidation of the copyright, but the inability to pursue copyright infringement claims or risk an award of attorney’s fees against them if they do so.

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June 4 2019

Focus on Fiduciaries: What Fiduciaries Need to Know About the Attorney-Client Privilege

 

by Mary deLeo
The Trust and Estates Blog

Last month, my Weintraub colleagues and I had the pleasure of speaking at the Professional Fiduciary Association of California annual conference on the topic of the attorney-client privilege and its application to clients serving in a fiduciary capacity (trustee, executor, conservator, agent, etc.).

Most people have a cursory understanding of what the attorney-client privilege does – it keeps communications between clients and their attorneys confidential and free from discovery,

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June 3 2019

The Request and Use of Background Checks by California Employers

 

By Shauna Correia and Nicholas Ma
The Labor and Employment Blog

Many employers routinely conduct background checks of potential and current employees.  It comes as no surprise that in the current digital age, employers can obtain extensive background information on applicants and employees quicker than ever from third-party reporting companies.  However, employers must remain vigilant to avoid receiving information prohibited under federal,

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May 30 2019

Although the Battle of King’s Landing is Over and the Game of Thrones has Ended, the War to Protect HBO’s Intellectual Property Rages on

 

by Josh Escovedo
IP Law Blog

If your heart is beating and your lungs are taking in oxygen, you know that Game of Thrones recently reached its epic conclusion. It’s sad, but true. After eight glorious seasons, the most watched television series in history has ended. Even as I put the words to paper, or rather, this Word document, it doesn’t seem real. For those of you who haven’t watched the series,

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May 24 2019

Certain Delivery Drivers Are Exempt from the Federal Arbitration Act and May Proceed with Class Actions

 

By: Ryan E. Abernethy
The Litigation Blog

In this age of expensive class-action litigation, many California companies have found solace in their arbitration agreements. Under certain circumstances, the enforcement of such agreements includes the dismissal of class action claims. This has largely been made possible by the Federal Arbitration Act (FAA) which requires judges to enforce a wide range of written arbitration agreements notwithstanding contrary state law.

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May 23 2019

If You Can’t Describe It, You Can’t Patent It!

 

by Audrey Millemann
IP Law Blog

One of the requirements for obtaining a patent is the written description requirement – the specification must include a written description of the invention. 35 U.S.C §112(a).  This requirement means that the specification must fully disclose what the invention is.  The purpose of the written description requirement is to demonstrate to persons skilled in the art of the invention that the inventor had possession of the invention at the time the application was filed,

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May 17 2019

Best Practices To Ensure Compliance with Website Accessibility Guidelines: Is Your Company Protected?

Litigation Blog

Although private actions against companies for the failure to ensure access to their websites for individuals with disabilities have increased significantly in recent years, both Congress and the Department of Justice (DOJ) have yet to provide clear guidance as to what constitutes compliance under the Americans with Disabilities Act (ADA).  Given the potential financial consequences facing a business which fails to provide equal access – including significant damages and attorneys’ fees – this lack of statutory or regulatory guidance can be quite problematic.

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May 16 2019

U.S. Supreme Court Allows App Store Anti-Trust Class Action to Proceed Against Apple

 

by Eric Caligiuri
IP Law Blog

In APPLE INC. v. PEPPER ET AL., case number 17-204, the United States Supreme Court considered a case alleging Apple has monopolized the retail market for the sale of apps and has unlawfully used its monopolistic power to charge consumers higher-than competitive prices. As an early defense in the case, Apple asserted that the consumer plaintiffs could not sue Apple because they supposedly were not “direct purchasers” from Apple under Illinois Brick Co.

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May 9 2019

Allegiant Airlines Tips its Hand Regarding Las Vegas Stadium Rights

 

by Josh Escovedo
IP Law Blog

If you’re a fan of branding and sports, you may have wondered who will affix their name to the Raiders’ new stadium in Las Vegas. The construction is underway, but the team has yet to announce whose name the stadium will bear. However, we may have discovered a clue based upon a recent filing with the USPTO.

On March 29,

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May 2 2019

Hidden Trademark Landmines in Comparative and Compatibility Advertisements

 

by Scott Hervey
IP Law Blog

Nespresso has filed a lawsuit against Jones Brothers Coffee Distribution Company alleging trademark and trade dress infringement. In support of its trademark infringement claim, Nespresso alleges that Jones Brothers’ use of the words “Nespresso Compatible” in connection with its coffee capsules will cause consumers to believe that the Jones Brothers product is endorsed and/or sponsored by Nespresso because “Nespresso Compatible” is used prominently and without a disclaimer nearby.

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May 1 2019

A Case Lesson in “What Not To Do” When Billing as a Conservator

 

by Daniel C. Kim
Trust and Estates Blog

Based on recent appellate cases, one of which is discussed below, the court’s scrutiny of conservators’ conduct and, specifically, private fiduciaries, is seemingly on the rise. Private fiduciaries acting as conservators should always remain focused on performing and charging only for those services that are consistent with the best interests of their conservatees. California case law continues to refine that understanding.

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April 30 2019

And You Are? Long Lost Relatives Need to Prove Up Their Entitlement to Inherit

 

by Danielle Diebert
The Trusts and Estates Law Blog

Under California law, the laws of intestacy control who inherits when a person dies without having prepared a valid will or trust. These rules can be complicated particularly as remote or even unknown blood relatives may have a claim to assets of the decedent’s estate. However, these long lost relatives often must prove up their entitlement to inherit from the decedent’s estate.

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April 29 2019

No Privilege Extended to Communications With Public Relations Consultant

 

by Sherry Bragg
Litigation Blog

Social media has become part of our daily lives. Information is routinely disseminated in the public sphere via Facebook, Twitter, Instagram and other social media outlets. It is therefore no surprise that we often see high profile litigation play out in the media as much as it does in the courtroom. For this reason, many attorneys and clients seek the assistance of a public relations or media consultant to advise them on issues such as the assessment and mitigation of risks,

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April 25 2019

Some at the PTAB Think Textbooks Are Not Printed Publications

 

by Jo Dale Carothers
The IP Law Blog

Shockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year! Further, would you have imagined an argument that textbooks aren’t printed publications? Given the amount we paid for textbooks in college and the number stored in my garage that seems like a strange argument,

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April 22 2019

AB 51: Another Attempt to Take Down Mandatory Arbitration Agreements in California

 

By: Weintraub Tobin
The Labor and Employment Law Blog

Background

Mandatory arbitration agreements are a source of contention in employment law. However, since 2000, they are generally permissible in California. In response, the California Legislature has made repeated efforts to ban such agreements over the years. In the past, many such bills have passed both the state assembly and the state senate and have ended up on the Governor’s desk.

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April 19 2019

California Supreme Court Holds that Payroll Services Provider ADP Cannot Be Sued for Breach of Contract, Negligence, and Negligent Misrepresentation by a Former Employee Seeking Unpaid Wages

 

by Nicholas Ma
Litigation Blog

Can an employee sue the employer’s payroll service for failure to correctly process and report payroll?  According to the California Supreme Court recent decision in Goonewardene v. ADP, LLC (2019) 6 Cal.5th 817, the answer is no.

In examining the claim, the Court held that when an employer hires a payroll company, providing a benefit to employees with regard to the wages they receive is ordinarily not a motivating purpose of the transaction. 

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April 18 2019

Do You Know Where The Photos For Your Website Come From?

 

by James Kachmar
The IP Law Blog

Many businesses rely on their websites to promote their company and drum up business. Having a “professional” looking web page is considered a must and companies spend a lot of money in creating and maintaining their web presence. However, a recent case out of the Ninth Circuit Court of Appeals demonstrates that care must be taken in connection with the creation of a company’s website,

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April 16 2019

Changing Prop 65 Requirements at Residential Rentals

 

by Weintraub Tobin
Litigation Blog

Landlords will soon face new Prop 65 warning requirements for rental properties.  Physical Prop 65 warning signs will no longer be required as a general rule once the new rules take effect on July 1, 2019.  Instead, warnings must be provided directly to the building’s tenants and occupants via one of three methods:  1) a letter addressed to each known adult occupant and delivered to the property;

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April 11 2019

Are Rules for Playing a Game Patentable?

 

by Audrey A Millemann
The IP Law Blog

A lot of things are patentable.  Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable.  But some things are not:  the exceptions are laws of nature, natural phenomena, and abstract ideas.

The Federal Circuit Court of Appeals has many times had to decide what these terms mean. 

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April 9 2019

TRUE STONE v. KEYSTONE: Stone Brewing’s Motion for Preliminary Injunction is Denied, but the Court’s Ruling Indicates a Finding of Infringement Against MillerCoors is Likely.

 

by Josh Escovedo
Litigation Blog

On February 12, 2018, Stone Brewing, arguably the most well-known craft brewer, filed a complaint against MillerCoors LLC, the multinational beer conglomerate, for trademark infringement. Specifically, Stone Brewing alleges that, in April 2017, when MillerCoors rebranded its line of sub-premium beers known as KEYSTONE, separating KEY and STONE onto separate lines, with an emphasis on STONE, it infringed Stone Brewing’s famous STONE trademark.

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April 4 2019

Attorney Fees for Successful Defense of IPR May Not Be Recovered as Damages under 35 U.S.C. § 284

 

by Eric Caligiuri
The IP Law Blog

On March 25, 2018, the District Court in Nichia Corporation v. VIZIO, Inc., Case No. 8-16-cv-00545 (CACD 2019-03-25, Order), granted defendant’s motion to preclude plaintiff’s damages expert from testifying that plaintiff should recover, as compensatory damages, its costs incurred in a related Inter Partes Review (IPR) proceedings.  The Court found such testimony would constitute an improper circumvention of 35 U.S.C.

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April 2 2019

New DFEH Notice and Certification Related to Medical Leaves and Parental Leaves under California Law

 

by Lizbeth “Beth” West
The Labor and Employment Law Blog

California employers covered by the California Family Rights Act (“CFRA”) and/or the California New Parent Leave Act (“NPLA”) should take note that California’s Department of Fair Employment and Housing (“DFEH”) has issued two new documents that are relevant to the administration of an employee’s leave under these laws.

  1. Family Care and Medical Leave and Pregnancy Disability Leave Notice.
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March 28 2019

SCOTUS to Decide if Trademark Licensees Lose Their Rights When the Licensor Becomes Insolvent

 

by Josh Escovedo 
The IP Law Blog

The Supreme Court has granted review in the matter known as Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, where it will decide whether a licensee loses its right to use a licensed trademark if the licensor files bankruptcy and the bankruptcy trustee chooses to reject the licensor’s license agreement. This decision could significantly impact numerous licensees throughout the world if the Court affirms the First Circuit Court of Appeal’s decision below,

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March 21 2019

Dr. Seuss and Fair Use, What 20+ Years Will Do!

 

by Scott Hervey
The IP Law Blog

Over twenty years ago, the Ninth Circuit decided the case of Dr. Seuss Enterprises., LP v. Penguin Books USA, Inc.  That case involved a copyright infringement lawsuit brought by Dr. Seuss over a book entitled The Cat NOT in the Hat! A Parody by Dr. Juice.  This book was about the O.J. Simpson trial presented in Seuss style rhyming verse and animation.

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March 14 2019

Are Patent Applicants Required to Pay USTPO Attorneys’ Salaries, Win or Lose?

 

by Jo Dale Carothers
The IP Law Blog

The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”) in-house attorneys in district court actions challenging the rejection of patent claims by USPTO patent examiners.

When a patent applicant files for a patent,

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March 8 2019

Do California Employers Have Any Scheduling Flexibility Options Left?

 

by Shauna Correia
The Labor and Employment Law Blog

Scheduling employees is becoming more difficult for employers, and the State seems to be hurtling toward predictive scheduling laws.

Last month, my partner Lukas Clary blogged about the recent California Supreme Court case, Ward v. Tilly’s, Inc., in which the Court ruled that “reporting time” pay is owed whenever an employee is required to “report” to work,

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March 8 2019

Supreme Court: File Your Copyright Application!

 

by Audrey A Millemann
The IP Law Blog

This week, the Supreme Court resolved a split in the circuits regarding an issue in copyright law that affects copyright owners in California.  Until now, the law in the Ninth Circuit was that a copyright owner could file suit for infringement as soon as they filed a copyright application in the Copyright Office.  However, in Fourth Estate Public Benefit Corp.

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February 28 2019

Employee Non-Solicitation Provisions Under Attack

 

by James Kachmar
The IP Law Blog

Companies have a number of tools available to them to help protect their intellectual property, including trade secret and other proprietary information that give them a competitive advantage. Many employers utilize detailed provisions in their employee handbooks and employment agreements to protect this information. One key provision has been the use of coworker non-solicitation provisions that prevent a departing employee from seeking to “raid” his or her former coworkers to join him or her at their new place employment,

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February 26 2019

Fresh Prince’s Alfonso Ribiero Denied Copyright Registration for the Carlton Dance

 

by Josh Escovedo 
The IP Law Blog

As we previously wrote on this blog, Alfonso Ribiero, better known as Carlton Banks from the Fresh Prince of Bel Air filed suit against multiple videogame publishers, including the publisher of NBA 2K and Fortnite for featuring avatars that perform his signature “Carlton Dance.” Ribiero’s case, however, may have just encountered a dispositive roadblock.

Last week,

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February 25 2019

Employees Are Entitled to Reporting Time Pay if Required to Call In to Confirm Shifts

 

by Lukas Clary
The Labor and Employment Law Blog

 

Figuring out how many employees to schedule each day can be an inexact science. Unexpected surges or lulls in customers, employee absences due to illness or emergencies, and various other circumstances can impact personnel needs.  Employers sometimes choose to navigate these situations by overscheduling and then cutting loose employees who are not ultimately needed.  That approach,

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February 21 2019

The Federal Circuit Clarifies Rules For Importation of Limitations From the Specification During Claim Construction

 

by Eric Caligiuri
The IP Law Blog

In Continental Circuits LLC v. Intel Corp. et al., case number 18-1076, the U.S. Court of Appeals for the Federal Circuit, in a precedential opinion, recently clarified the rules for the incorporation of a limitation from a patent’s specifications into the claims during claim construction.  In the case, Continental sued Intel Corp.; its supplier, Ibiden U.S.A. Corp.;

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February 14 2019

Unprotectable Generic Trademarks + Top-Level Domains = Protectable Trademarks

 

by Josh Escovedo 
The IP Law Blog

Generic trademarks are those which, due to their popularity and/or common usage, have become synonymous with the products or services. Such trademarks include Kleenex, Band-Aid, Jeep, Aspirin, and Cellophane. Such marks, generally, cannot be federally registered or protected under the Lanham Act due to the marks direct reference to the class of product or service it belongs to. In other words,

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February 7 2019

It’s Not Water under the Bridge – “Fiji Water Girl” Sues Water Company Over Cardboard Cutout

 

by Scott Hervey
The IP Law Blog

For those of you that watched the red carpet happenings at last year’s Golden Globe Awards, you may have noticed the “Fiji Water Girl”, a model standing ready to keep Hollywood glitterati hydrated with bottles of Fiji water, photobombing numerous shots of celebrities.  Her presence on the red carpet created a social media firestorm and the Fiji Water Girl – a model named Kelly Steinbach – garnered instant and substantial notoriety. 

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February 7 2019

Co-Worker Non-Solicitation Provisions in Jeopardy?

 

by James Kachmar
The Labor and Employment Law Blog

For years, California courts have recognized the right of employers to use non-solicitation provisions in employment agreements to prevent employees from “soliciting” their coworkers to join them at a new employer.  For instance, in 1985, a California appellate court in Loral Corp v. Moyes, 174 Cal.App.3d 268 (1985), held that a non-solicitation of fellow employees provision in an employment agreement was lawful because the co-workers were free to seek employment with a competitor,

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January 31 2019

Can Secret Sales Prohibit Patenting Your Invention?

 

by Jo Dale Carothers
The IP Law Blog

Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for patent in the United States.”  This limitation on patentability is often referred to as the “on-sale” bar because it prohibits, or bars,

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January 24 2019

Whose "Baby" Is It?

 

by Audrey A. Millemann
The IP Law Blog

When a new invention is created (if it is worth anything), everyone wants to take credit. Figuring out whose “baby” it is, is a difficult question.

What is an inventor? Who is the inventor? One would think these questions have straightforward answers. They do not. Inventorship is one of the most difficult and gray areas of patent law.

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January 17 2019

Patent License Royalty Rates are Strong Evidence of Damages

 

by Audrey Millemann
The IP Law Blog

The Federal Circuit Court of Appeals has affirmed a jury verdict of $140 million in a patent infringement case.  The damages were based on a reasonable royalty.  The case is Sprint Communications Co., L.P. v. Time Warner Cable, Inc., 2018 U.S. App. LEXIS 33594 (Fed. Cir.  2018).

Sprint sued Time Warner in the District of Kansas for infringement for several of Sprints patents for a telephone communications network. 

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January 15 2019

Neutral Solutions 2019: A New Year that Brings New Training Obligations

 

The Labor and Employment Law Blog

While it has always been good practice for employers of all sizes to train both their supervisory employees and non-supervisory employees on the prevention of harassment, California law now mandates such training by 1/1/20 (and every 2 years thereafter) for any employer with 5 or more employees.  The attorneys in Weintraub Tobin’s Labor & Employment Department have years of experience conducting energetic, compliant, and effective harassment prevention training for employers of all sizes and in all industries. 

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January 10 2019

District Court Rules Certain Prior Art References Are Precluded Under IPR Estoppel

 

by Eric Caligiuri
The IP Law Blog

On December 28, 2018, the Court in The California Institute of Technology v. Broadcom Limited et al., Case No. 2:16-cv-03714-GW-(AGRx), issued a Final Ruling on Plaintiff’s Motion for Partial Summary Judgment of Validity under 35 U.S.C. § 103 based on IPR Estoppel under 35 U.S.C. § 315(e)(2).  In the case, Plaintiff The California Institute of Technology alleges patent infringement against Defendants Broadcom Limited,

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January 9 2019

New Year, New Minimum Wage

 

by Katie Collins
The Labor and Employment Law Blog

Effective January 1, 2019, California’s minimum wage rate increased to $12.00 per hour (from $11.00) for employers with 26 or more employees and $11.00 per hour (from $10.50) for employers with 25 or fewer employees. The minimum wage will continue to increase yearly until it reaches $15.00 per hour on January 1, 2022 for employers with 26 or more employees and January 1,

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January 3 2019

Consumers Have Standing to Challenge Trademark Registrations

 

By Josh Escovedo
The IP Law Blog

The Trademark Trial and Appeals Board recently issued an interesting decision regarding standing to oppose the registration of trademark applications. United Trademark Holdings, Inc. filed for registration of the mark RAPUNZEL for use in conjunction with dolls and toy figures. However, after the USPTO’s examining attorney published the mark for opposition, a law professor filed a notice of opposition, alleging that Applicant’s mark failed to function as a trademark on the grounds that it is synonymous with the name of a well-known childhood fairytale character,

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