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Design Patents and Damages

While design patents are an important piece of intellectual property protection, the contours of damages that can be sought based on infringement of a design patent can be confusing and easily misunderstood. Below is an outline of what damages can be sought for infringement of a design patent.

Patent Marking Guide

Patent marking, or the act of displaying the patent number on the product sold containing patented claims, is crucial for maintaining rights and allowing for full recovery against infringers. This is because “[a patentee] is entitled to damages from the time when it either began marking its product in compliance with section 287(a) [i.e. providing constructive notice], or when it actually notified [the accused infringer] of its infringement, whichever [is] earlier.” [American Medical Sys., Inc. v. Medical Eng’g Corp., 6 F.3d 1523, 1537, 28 USPQ2d 1321, 1331 (Fed.Cir.1993)] While “actual notice” is self-explanatory in this case, “constructive notice” will be found when there is proper patent marking. That is why knowing how and what to mark with your patent number is crucial to maintaining your patent rights.   1) Basics       The relevant statues state that ““Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation ‘pat.’” Ie: “Patent No. 8,000,000” or “Pat. 8,000,000” This patent must be fixed to the product it is associated with. However, if fixing the patent number on the product “cannot be done” it may be affixed to the packaging. A key point to recognize is that affixing patent marking to the packaging of a product will only be seen as proper marking if affixing it to the product itself “cannot be done”. This means that the shape or composition of the product makes it...

Accelerated Examination Possibly Coming to a Halt

Initially billed as something that would help streamline and expedite the patent examination process, Accelerated Examination is slowly losing favor with the public as the patent environment continues to evolve. The USPTO has signaled it will soon take public comments as to whether the Accelerated Examination process should continue to exist altogether.

Google v. Oracle: The Software Developer’s Roller-coaster Ride With No Clear Winner

May 2016 saw the conclusion of one of the most contentious copyright battles involving software, between two of the industry’s heavyweights: Google v. Oracle. What made this case so interesting was the calling into question of software development practices that had been considered legitimate for the past two decades, and what made it so important was the potential fallout of a verdict on either side of the issue.

The Long Reach of A Big Hammer: DMCA’s Creep Into Corporate Adjudication of Pre-Crime

When the DMCA was made into law at the turn of the century, the excitement over new powers given to the enforcement of intellectual property rights was tempered by deep concerns of possible regulatory overreach and unintended consequences. With the law having over a decade to now play out, some of the more consequential, albeit tangential, unintended consequences are beginning to show their head.

“Disparaging” is Not Grounds to Deny: USPTO Not Allowed to Deny Trademark Registration For Being Disparaging Under §2(a)

This case revolved around an Asian-American rock band with the potentially racially charged name of “The Slants”. The band was denied federal registration of their trademark of the same name, but appealed claiming this was unconstitutional; Federal Circuit Court of Appeals agreed stating, “content-based regulations are presumptively invalid.” Refusal of trademark registration on the grounds of being disparaging is an improper limiting of speech.

The interesting part about this case, and the issue writ large, is the collision of best intentions with undesired consequences. In this case, those consequences are infringements on constitutionally protected speech by the government. This article explores the legal implication of attempts to limit this type of speech, and the implications of this ruling on current litigation

Are Big Companies Taking Their Trademarks Too Far?

In what appears to be another slew of trademark battles, Red Bull energy drinks has challenged the use of the word “ox” in the brand name of a small craft brewery in Virginia. Red Bull filed its opposition with the USPTO against trademark applications from “Old Ox Brewery,” which opened in the northern Virginia suburb of Ashburn in June 2014. Old Ox Brewery is scheduled to produce over 4,000 kegs of beer by December, set for distribution to only a small area of Virginia.

This is only one example of many instances where larger corporations try to stretch the protection of their marks. In the same token, companies and individuals are beginning to seek trademark protection on seemingly generic terms as a means of revenue generation, creating licensing schemes for widely used song lyrics for example. This article explores both practices, their merits, and general strategies when confronting an issue such as these.

With DMCA Safe Harbor Removed, ISP’s Blown Into Stormy Water: But Don’t Grab the Life Rafts Yet

This article discuses a landmark ruling in BMG Rights Management LLC et al. v. Cox Enterprises Inc, a highly contentions case between an internet service provider (ISP) and a large-scale music rights holder. The dispute was between Cox Communications, the ISP, and BMG Rights Management, a company holding copyrights for numerous musical artists and songs. BMG alleged there was a high volume of music that was improperly downloaded, or pirated, through Cox Communication’s Internet service, and that when given notice of said infringements, Cox did not properly respond.

While a jury found Cox guilty of both direct and contributory copyright infringement, the real crux of the case was the ruling made in a motion for summary judgment, which made the above jury findings possible.

Media pundits have gotten the details of this case wrong. We unpack this holding, detail the consequences had the ruling gone the other way, and outline its impacts in the future.

Apple v. Samsung: Latest Developments in ongoing Litigation

We reflect on the U.S. Federal Circuit Court of Appeals ruling in favor of Apple on September 17, 2015, regarding a permanent injunction that would bar Samsung from making, using, selling, developing, advertising, or importing into the United States any software or code capable of implementing features in Samsung’s products which infringe Apple’s patents.

“Your Assignment, Should You Choose to Enforce It”: New case law on IP assignment contracts obligates employers to diligently protect their legal rights

The United States Court of Appeals for the Federal Circuit, which hears all appeals involving patent law complaints, recently decided Personalized User Model, LLP, and Konig v. Google, Inc., case 14-1841/15-1022 (Fed. Cir., Aug. 18, 2015), which focused on an employment agreement for the assignment of intellectual property rights. This decision handed down important new guidelines for employers to take when dealing with enforcing assignments of employee’s IP

February 2015 News

In Ericsson, Inc., et al v. D-Link Systems Inc., et al, No. 2013-1625, -1631, -1632, 1633, a case relating to Wi-fi technology, the Texas federal judge upheld a 2013 jury verdict that found that D-Link Systems, Netgear Inc., and five other companies infringed three Ericsson patents and rejected defendants’ request for a new trial. More specifically, the Federal Circuit held that for “standard essential patents” (“SEPs”), which are patents that cover specific technology that a certain industry standard requires such that complaint devices necessarily infringe certain claims in the patent, many of the standard Georgia-Pacific factors, which are factors used to determine reasonable royalties, do not apply to cases involving SEPs. We also reflect on the Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 134 S. Ct. 2347 (2014) decision, which has now confirmed that what used to be a much laxer § 101 subject matter gatekeeper has transformed into a relentless business method patent-barring nightmare for many. The Supreme Court held that transforming a long-known method of reducing risk in financial trading to be implemented by a computer does not overcome a §101 subject matter rejection. Although the ruling provided some guidance in terms of how computerrelated patents should be written to avoid an Alice rejection, most practitioners and industry experts are unsatisfied with the “we’ll know it when we see it” attitude that seems to be spreading throughout the lower court holdings. Additionally, we discuss a recent case from the U.S. Court of Appeals for the Federal Circuit, e.Digital Corp v. Futurewei Techs., Inc., et al, No. 3:13-cv00783,No. 2014-1019, -1242, -1243 (Fed. Cir. Nov. 19,...

October 2014 News

Elon Musk’s Space Exploration Technologies, Corp. (SpaceX) is challenging a patent on which Jeffrey Bezos, CEO of Amazon.com, is a named inventor. SpaceX has initiated an inter partes review stating that the patent belonging to Blue Origins is invalid for obviousness. The documents SpaceX cites in its petition address similar systems and technologies that relate very closely to the technology covered by the invention. We also reflect on the past Supreme Court term, during which the Supreme Court decided an unprecedented amount of intellectual property cases. This not only demonstrates the increasing importance of intellectual property to the nation’s economy, but also the importance of evolving the law to meet our changing technological landscape. Additionally, we discuss the USPTO’s release of a new examination guide, “Service Mark Specimens.” In the article, we explain what specimens are, the different types of specimens, and what kind of trademark applications require them. In addition, we explain how the new USPTO guide should help to clear up confusion regarding service mark specimens and help applicants avoid delays and overcome specimen refusal in use-based trademark applications. Finally, we discuss how USPTO Post-Grant Proceedings work and their potential to change how patents are challenged. These administrative proceedings, created by the America Invents Act in 2011, are cheaper and more expeditious alternatives to litigation which theoretically make it easier for patentees to strengthen their patents and competitors to challenge them. Elon Musk v. Jeff Bezos: SpaceX Challenges Reusable Rocket Patent Elon Musk’s SpaceX is challenging a patent on which Jeffrey Bezos, CEO of Amazon.com, is a named inventor. SpaceX has initiated an inter partes review stating...

August 2014 News

In Limelight v. Akamai, the Supreme Court unanimously overturned the Federal Circuit’s rule on induced patent infringement. The Court reaffirmed the requirement that induced infringement cannot occur without direct infringement. In the case of method patents, there is no direct infringement unless all the steps of the patent are carried out by a single actor. While the Court did not address the merits of the Federal Circuit’s single-actor rule, the Federal Circuit will have the opportunity to revisit it on remand. We also discuss the Supreme Court’s new standard for indefiniteness articulated in Nautilus v. Biosig. In this case, the Court reversed the Federal Circuit’s “insolubly ambiguous” standard and held that a patent is invalid for indefiniteness if its claims, viewed in light of the patent’s specification and prosecution history, fail to inform those skilled in the art of the scope of the invention with reasonable certainty. Additionally, we discuss how to record federally registered trademarks at the U.S. Customs & Border Protection (CBP). When a trademark is recorded, the CBP is able to prevent the importation of goods that infringe on that trademark. The CBP also can impose fines and request the U.S. Attorney’s Office to criminally prosecute counterfeiters. As a result, the CBP can be an important ally in protecting federally registered trademarks. Finally, we discuss an emerging national trademark dispute regarding the chant used to cheer the U.S. Men’s Soccer Team during the FIFA World Cup. With at least four entities asserting ownership rights, it is unclear who will reap the benefits of this popular chant. Supreme Court Overrules Federal Circuit in Limelight v. Akamai On...

July 2014 News

In Alice Corp. v. CLS Bank the Supreme Court addressed the patent eligibility of computer-related patents under 35 U.S.C. § 101. The Court adopted a two-part test from Mayo Collaborative Services v. Prometheus Laboratories to determine whether patent claims fall under the abstract idea exception. This holding will have a significant impact on software patents, particularly on how they are drafted. We also discuss the recent TTAB ruling to cancel six of the Washington Redskins trademark registrations. This marks the second time the board has ruled that the Redskins trademarks were disparaging to Native Americans at the time they were registered. If the ruling stands, the Redskins would still be able to use their trademarks but will lose the benefits of federal registration. However, the registration will not be canceled until the Redskins exhaust all of their appeals. Additionally, we discuss Tesla’s move to “release” all of its patents. With its announcement on June 12, 2014, Tesla hopes to become the first open source car company. Tesla’s patent “release” is an invitation to cross license with car companies and other innovators in the electric vehicle market. This could lead to a more competitive market for electric cars and the expansion of the electric vehicle network and infrastructure. While Tesla gives the impression that it is disclaiming its patent rights, it is really showing ways of using patents effectively. Alice Corp. v. CLS Bank: Supreme Court Decision On June 19, 2014, the Supreme Court of the United States unanimously affirmed the Federal Circuit holding that Alice Corp.’s patents were ineligible subject matter under 35 U.S.C. §101. The Court adopted the...

April 2014 news

In Lexmark v. Static Control, the Supreme Court resolved a three-way split in the Federal Circuit courts regarding the standing requirements to bring a suit for false advertising under the Lanham Act. After considering the three tests used in the Federal Circuit courts, the Supreme Court found none of them to be appropriate and instituted a new “zone of interests” test. To have standing in a false advertising claim under the Lanham Act, a claimant must allege an injury to a commercial interest in reputation or sales, and the injury must have been proximately caused by the violation of the statute. We also discuss the enforceability of patents for space-based technologies. As a general matter, patents are territorial and unenforceable beyond the nation in which they are issued. In the case of space-based technology, a patent attaches to a country if it is made or launched there, or is otherwise under the jurisdiction or control of that country. However, there are several loopholes that could allow infringing users to render a patent unenforceable. We discuss these loopholes and how to avoid them. Additionally, we discuss the new pilot program launched by the USPTO, the Glossary Pilot Program to promote patent claim clarity. The USPTO will accept 200 petitions under the pilot program. Participation is completely optional, but incurs the benefit of accelerated examination. Lexmark v. Static Control: Supreme Court Resolves Lanham Act Standing Split In Lexmark Int’l, Inc. v. Static Control Components, Inc., the Supreme Court resolved an inter-circuit split regarding who may bring a suit for false advertising under the Lanham Act. Declining to adopt any of the...

February 2014 News

Last week a new coffee shop opened up to Los Angeles, intriguing and baffling residents. It was called “Dumb Starbucks Coffee,” and was almost indistinguishable inside and outside from a Starbucks, with the addition of the word dumb. For a few days, the proprietors had people convinced this was an attempt to use parody law to get away with copying Starbucks’ trademark and trade dress. However, Dumb Starbucks turned out to be a prank for Nathan Fielder’s Comedy Central show, “Nathan For You.” Starbucks commented that they “are evaluating next steps and while we appreciate the humor, they cannot use our name.” We consider the legality of Dumb Starbucks in Fielder’s comedic test of the boundaries of fair use law. We also discuss recent decreases in patent fees. In the wake of the America Invents Act (AIA), the PTO adjusted its fees. In particular, it dropped the fees for issuing and reissuing a patent, as well as allowing small entity and micro entity reductions for international PCT applications. We detail the fee reductions and the new scheme for fee calculation under the AIA. Additionally, we discuss use requirements in international trademark registration. While the Madrid Protocol enables a trademark registrant to easily apply for registration in multiple countries, it is important to recognize where additional steps are required. In particular, a handful of countries, including the United States, require a showing of prior and continuing use. We explain how to comply with international use requirements under the Madrid Protocol. Dumb Starbucks Last week, people lined up around the block to visit “Dumb Starbucks” in the Los Feliz neighborhood of...