Category Archives: Patent

Supreme Court Rulings Will Make Fee Awards More Likely In Trademark Cases As Well As Patent Cases

Yesterday, the United States Supreme Court decided Octane Fitness, LLC v. Icon Health & Fitness, Inc. and Highmark v. Allcare Health Management System, Inc., companion cases that will make it easier for prevailing parties to recover attorneys’ fees in patent infringement litigation. Together, the cases may have far-reaching consequences for litigation strategy and case management in cases involving a range of intellectual property disputes, not just patents.

Previous Standard for Recovering Attorneys’ Fees

Section 285 of the Patent Act authorizes a district court to award attorneys’ fees to the prevailing party “in exceptional cases.” The U.S. Court of Appeals for… More

Can a Website Disclaimer Prevent Declaratory Judgment Actions in IP Cases? Maybe…or Maybe Not

Disclaimer-1-272x300A decision this week from the Federal Circuit, in a patent invalidity action, has been getting a lot of press for its suggestion that patent (and by implication trademark) holders may be able to avoid challenges to the validity of their IP simply by crafting a website disclaimer explaining that they will not sue certain competitors or other potential challengers. The decision has been argued by some to be an extension of the reasoning of the U.S. Supreme Court earlier this year in Already, LLC v. Nike, in which… More

FiberCore Case Illustrates Ownership and Transferability of “Shop Rights” to Patented Inventions

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 An employer may have rights in a patent on its employee’s invention in three situations:

(1)  if there is an express agreement to assign or license the patent to the employer,

(2)  if the employee was “hired to invent” and the employer can show an implied contract to assign the patent rights in the invention, or

(3)  if there was no express or implied agreement but the employee used the employer’s facilities to conceive of the invention.  In this last case, the employer will have a “shop right,”… More

Sliding the Scale: The UK’s New “Small Claims” Court for Intellectual Property Disputes

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An often-frustrating aspect of IP law is that in relatively small matters, the cost of litigation can quickly become disproportionate to the value of the intellectual property in dispute. In other words, there is no automatic sliding scale of expenses that shifts according to the value of the IP.

That may be changing in the UK. On October 1, 2012, the UK government launched a new “small claims track” in the Patents County Court) (“PCC”), which specializes in copyright, patent and trademark matters.

The PCC “small… More

Practice Tips for Employee IP Assignment Agreements

A recent Federal Circuit decision discussing the effect of an Employee Intellectual Property Assignment Agreement upon the ownership of inventions made by the employee (Preston v. Marathon Oil Co., Nos. 2011-1013, -1026 (Fed. Cir. July 10, 2012) (decision here)) offers a number of practice pointers. Marathon Oil had filed suit against Preston, its former employee, claiming ownership of a patent obtained by Preston on an invention made while Preston was employed by Marathon. The Federal Circuit held that Marathon Oil was the rightful owner of the patent. The useful lessons would appear to be as follows:

1. Refer to… More

Senators Scott Brown and John Kerry Propose Massachusetts as Location for Satellite Patent Office

On November 17, 2011, Senators Scott Brown and John Kerry sent a letter to David Kappos, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, urging him to consider Massachusetts as a location for one of the satellite patent offices that was authorized under the recently enacted America Invents Act.

The letter points out that Massachusetts is home to many world-class universities, including MIT, Harvard, Boston College, Boston University, Tufts, and the University of Massachusetts, and would therefore be an ideal location from which to recruit talented… More