Patent Owners Beware: Don’t Sleep on Your Rights!

by Audrey A. Millemann
The IP Law Blog

Laches, a judicially created defense based on the plaintiff’s delay and prejudice to the defendant, is a proper defense to the recovery of damages in a patent infringement suit, even though the Supreme Court ruled in 2014 that laches does not apply in copyright infringement cases.

A divided en banc Federal Circuit Court of Appeals held in SCA Hygiene Products v. First Quality Baby Products (September 18, 2015) 2015 U.S. App. LEXIS 16621 that Congress specifically provided for a laches defense in the Patent Act,

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Tiffany & Company v. Costco Wholesale: Tiffany is far from Generic

by Josh H. Escovedo
The IP Law Blog

On September 9, 2015, the United States District Court for the Southern District of New York ruled that Costco was willfully infringing Tiffany & Co.’s trademarks by selling diamond engagement rings bearing the renowned jewelry retailer’s name. The suit started back in 2012 when a patron of Costco in Huntington Beach, California decided to reach out to Tiffany to express her disappointment in Tiffany offering its rings for sale at Costco. She also stated that the rings were being promoted on signs within the store as Tiffany diamond engagement rings.

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Divided Infringement: A Stronger Sword for Plaintiffs

by Audrey A. Millemann
The IP Law Blog

The Federal Circuit Court of Appeals has established a new test for “divided” patent infringement. Direct infringement of a method patent exists when a single party performs all of the steps of the claimed method. 35 U.S.C. §271(a). Divided infringement occurs when all of the steps are not performed by a single party, but by two or more parties under circumstances such that one party is still responsible for the infringement.

The law of divided infringement has been a subject of much debate.

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A Chicken Sandwich is Not Copyrightable – Really?

by David Gabor
The IP Law Blog

As reported in Law 360 and other outlets, the First Circuit has ruled that a chicken sandwich, no matter how amazingly delicious it may be, cannot be copyrighted. A Puerto Rican epicure named Norberto Lorenzana argued that he created the “Pechu Sandwich” which is “a fried chicken breast patty, lettuce, tomato, American cheese, and garlic mayonnaise” while working for a Church’s Chicken franchise in Puerto Rico.

According to Law 360, “[h]e sued the company in 2012,

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Hidden Pitfalls of Old Non-Compete Provisions

by James Kachmar
The IP Law Blog

Companies and employers around the country seek to protect their intellectual property by, among other things, using non-compete provisions in employment agreements. Generally, these provisions are intended to prevent an employee from soliciting or doing business with a former employer’s customer/clients over a set period of time and/or in regard to a set geographical area. Under California law, and specifically Business and Professions Code section 16600, such provisions are unenforceable unless they fall within one of the statutory exceptions,

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Hey, that’s my beer! I think…

by Josh H. Escovedo
The IP Law Blog

In the bustling craft brew economy brewers are faced with new issues every day. One that recently came to my attention arises when the craft brewery’s brewmaster or head brewer decides to either start his own craft brewery, or go to work for another brewery. While this may not initially seem like a big deal, it gets much more complicated when that brewmaster or brewer is responsible for the creation of your flagship brew. The question arises: who owns the intellectual property rights to that brew?

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Federal Circuit Continues to Nix Financial Patents

by Audrey A. Millemann
The IP Law Blog

Patents covering software for use in the financial industry are increasingly being invalidated by the courts. Because of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), district courts are holding these patents invalid on the grounds that they are unpatentable abstract ideas, and the Federal Circuit Court of Appeals is affirming the district courts’ decisions.

Patents may cover one of four statutory categories of inventions: (1) machines;

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Air Jordan Grounded in China

The IP Law Blog

By: Intellectual Property Group

Michael Jordan is considered by many to be the greatest basketball player of all time. Beyond his five MVP trophies and six NBA championship rings, however Jordan also was the one of the most widely marketed athletic personalities in history. His name and image ultimately became iconic when Nike developed a new type of basketball shoe named “Air Jordan,” marked with the “Jumpman” logo – a silhouetted image of Jordan in mid-flight on his way to delivering a one-handed slam dunk.

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Will Lenz v. Universal Make Online Copyright Enforcement More Challenging for Copyright Owners

by Scott M. Hervey
The IP Law Blog

Pending before the 9th Circuit is a case which may change the landscape for online copyright protection. The case, Lenz v. Universal, may make it more difficult for copyright owners to protect against infringement in today’s environment of hyper infringement. Defenders of Lenz argue that this case represents the quest for a legitimate balance between overzealous copyright enforcement and legitimate, non-infringing use.

The facts of Lenz are fairly simple. Lenz posted to YouTube a very short video of her young child dancing to a Prince song playing in the background.

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Patent Infringement and Appellate Jurisdiction

by James Kachmar
The IP Law Blog

In general, any appeal from a civil action involving claims of patent infringement must be made to the Federal Circuit in Washington, D.C. A recent case from the Ninth Circuit, Amity Rubberized Pen Company v. Market Quest Group, illustrates this principle as well as demonstrating the practical measures an appellate court will take to help an appeal survive.

In Amity Rubberized Pen Co., Amity held a patent for a device that dispensed both toothpicks and tablets such as breath mints.

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