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ANDA Litigation and Reverse Payments

In Federal Trade Commission v. Watson Pharmaceuticals, Inc., No. 133 S. Ct. 787 (2012), the Supreme Court held that reverse payments in pharmaceuticals patent settlement are not categorically immune from the antitrust laws even if such payments fall within the scope of the patent. Often, reverse payments are made by a pioneer drug manufacturer to a generic drug manufacturer in settlement of a patent challenge. In exchange for the payment, the generic




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




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




IP License Agreements Under the AIA

Over the past few years, there has been an ongoing subject matter jurisdiction battle between state courts and federal circuit courts. This jurisdiction battle is especially prevalent in cases where a complaint asserts a non-patent cause of action with an underlying patent issue, such as disputes over intellectual property licensing or malpractice claims. In most patent cases the “arising under” analysis for the Federal Circuit jurisdiction is fairly straight forward because a




Patent Attorney

In WiAV Solutions LLC v. Motorola, Inc., No. 10-1266 (Fed. Cir. Dec. 22, 2010), the Federal Circuit broadened the scope of exclusive license by holding that “a licensee is an exclusive licensee of a patent if it holds any of the exclusionary rights that accompany a patent.” The licensing rights at issue were held by six third-parties and seven patents owned by Mindspeed Technologies, Inc. After a series of spin-offs




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Our legal services are offered to the leading corporations, governmental and quasi-governmental organizations, startup companies, research associations and technology creators the world over. With nearly two decades of experience per average lawyer, our counselors have represented leaders in their industries.




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




Assignment of Intent-to-use Trademark Applications

The Trademark Act Section 10(a)(1) clearly states that an intent-to-use application cannot be assigned “except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.” In the recent Trademark Trial and Appeal Board case, Cent. Garden & Pet Co. v. Doskocil Mfg. Co., No. 91188816 (TTAB August 16, 2013), All-Glass Aquarium Co., a




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




Trade Secret and Contract Law

The Federal Circuit has recently articulated the position that a contractual agreement to transfer otherwise secret information will override trade secret protections that may be in place. The recent case on-point was Convolve, Inc. v. Compaq Computer Corp., No. 2012-1074, 2013 WL 3285331 (Fed. Cir. July 1, 2013), reaches back more than a decade to 1998, when MIT and Convolve sued a group of defendants for both trade secret misappropriation