News and Articles

Federal Circuit and Advisory Council Model Orders

On July 22, 2013, a model order relating to the number of asserted claims and prior art references in patent litigations was released on the Federal Circuit Advisory Council’s webpage. The order required that in the first phase, plaintiffs must select 10 claims per patent, and 32 claims total, 40 days after production of “core” technical documents, while defendants are limited to 12 prior art references per patent and 40




Do Business Method Patents Hurt or Help?

Do Business Method Patents Hurt or Help? A Financial Industry Perspective, 14 VA. J.L. & TECH. 147 (2009). Abstract The State Street Bank decision of 1998 affirmed U.S. business method patents. Along with the subsequent downpour of patent filings came a shower of commentary from the legal and business communities alike. The literature has generally been thoughtful and well-reasoned, or at least well-meaning. But as practitioners in the fields, we




The Lanham Act and Jim Brown

On July 31, 2013, the Ninth Circuit affirmed dismissal of the Lanham Act claims brought by Jim Brown, a former NFL star, against video game developer Electronic Arts, Inc. (EA). The court concluded that the Rogers balancing test was the appropriate standard to evaluate defendant EA’s use of Brown’s likeness in video games, and since the use of his likeness was artistically relevant to games, it is protected by the




ITC Pilot Program to Promote Early Adjudication of Dispositive Issues

On June 24, 2013, the International Trade Commission (ITC) announced that it will launch a pilot program for early adjudication of potentially-dispositive issues in Section 337 investigations. This pilot program is part of the Commission’s ongoing efforts to streamline the investigation procedures to reduce the cost of investigations and to expedite the process. Under the new pilot program, the Commission will first select those investigations that appear likely to present




Good-Faith Belief of Invalidity May Negate Induced Infringement

As early as the1990 decision in Manville Sales Corp. v. Paramount Sys. Inc., 917 F.3d 544 (Fed. Cir. 1990), the Federal Circuit applied a standard that encompasses negligence in determining whether the defendant violated 35 U.S.C. § 271 (b), prohibiting active inducement of infringement. Under this standard, if the alleged infringer knew or should have known one’s action would induce actual infringement, the alleged infringer was held liable as an




RAND Obligations and Injunctive Relief

Entities that are parts of technology standard-setting organizations are typically required to promise, in some fashion, to license patents essential to any resultant standard on reasonable and nondiscriminatory terms. Once the standard has been promulgated, the standard essential patents (“SEP”s) may be asserted in litigation and the patent holder is expected to live up to reasonable and non-discriminatory (“RAND”) terms. A thorny issue for courts and litigants in the context




M&A and Government Immunity

The Supreme Court’s decision in FTC v. Phoebe Putney Health System Inc., 133 S. Ct. 1003 (2013) put a limitation on the state immunity under which local governments across the country have relied upon for decades to shield their activities from federal antitrust scrutiny. This decision will open the door to challenging numerous government transactions including the transactions consummated before the Phoebe Putney decision. Until Phoebe Putney, the Supreme Court




First Sale in Copyrights - Supreme Court takes a Fresh Look

On March, 19 2013, the Supreme Court held that the “first sale” doctrine, which allows the owner of a copyrighted work to sell or otherwise dispose of that copy as he wishes, applies to copies of a copyrighted work lawfully made abroad. In a six to three decision, the Court reversed previous lower court rulings and ruled in favor of defendant, Supap Kirtsaeng. While studying in the United States, Thailand




Copyright Violation and the Constitutionality of Excessive Damages – Music Downloaders Beware!

The Eight Circuit affirmed the constitutionality of statutory damages for copyright infringement against the challenge that it is disproportionately excessive in Capitol Records, Inc. v. Thomas-Rasset, 692 F.3d 899 (8th Cir. 2012). In 2011, record companies sued a woman for making copyrighted music available to others for free download by using a file-sharing service.  First the jury awarded the record companies $222,000 in damage.  Months after the verdict, however, the district court granted a new




Court Finds Appropriated and Altered Art Protected Under Fair Use

In the world of art, stimulating creativity becomes a constant battle between allotting freedom to new works of art while protecting original artists. Fundamentally, copyright’s aim is to promote creativity in order to benefit the public. By granting exclusive rights to authors, ideally copyright law incentivizes such creativity by original authors. But copyrights must not hamper free speech, and ideally not derivational creativity with value in the marketplace. This struggle