Intellectual Property
Publications of Interest
LawFlash/Client Alert | Intellectual Property LawFlash
C. Erik Hawes
For cases filed before enactment of the America Invents Act, the Federal Circuit Court of Appeals has clarified that unrelated defendants may be joined together in a single patent case only if claims are based on the same product or process.
LawFlash/Client Alert | Intellectual Property LawFlash
Robert Smyth, Ph.D.
Supreme Court affirms Federal Circuit ruling allowing submission of additional evidence to obtain a patent pursuant to 35 U.S.C. § 145.
LawFlash/Client Alert | Intellectual Property LawFlash
Robert Smyth, Ph.D.
Court ruling applies law of nature; impacts patents directed to personalized medicine.
LawFlash/Client Alert | Advertising, Consumer Protection, and Privacy LawFlash
Advertising, Consumer Protection, and Privacy Practice
Massachusetts regulations to protect consumer personal information contain March 1, 2012 deadline.
Outside Publication | Article
Robert Smyth, Ph.D.
Introduction: In recent decades, intellectual property in general and patents in particular have taken on increasing importance to the development and functioning of the global economy. As actors in all aspects of commerce c... more
Outside Publication | Chapter
Mansi Shah
Presentation | Speech
Scott Sherwin
Topics presented include: Which key IP should you consider? Core IP rights determined by industry Bootstrapping v. hiring a lawyer You can bootstrap most IP issues early on Balance the ris... more
Outside Publication | Article
W. Nes, Paul Zevnik, Michel Horton
Presentation | Speech
Mansi Shah
Newsletter | Morgan Lewis IP Academy Newsletter
William Jackson Matney, Jr., David Levy, C. Erik Hawes, Robert Gaybrick, Collin Park, Robert Busby
In this issue: Federal Circuit Reverses District Court Decision and Rules that Isolated DNA Sequences Are Patent-Eligible Subject Matter On Remand from the Federal Circuit, the District Court in Lucent v. Microsoft Rul... more
LawFlash/Client Alert | eData LawFlash
L. Keven Hayworth, Tara Lawler, Scott Milner, Jennifer Williams, Lorraine Casto, Graham Rollins, Jacquelyn Caridad, Denise Backhouse, Stephanie Blair
During his September 27 remarks at the Eastern District of Texas Judicial Conference, Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit unveiled a new Model Order for the governance of e-discover... more
Outside Publication | Article
Alex Hanna
LawFlash/Client Alert | Intellectual Property LawFlash
Dana Gross
After years of online and offline discussions, international meetings, and many versions of proposed controlling documents, in June 2011 ICANN (described below) voted to allow up to 1,000 new top-level domains (TLDs) on the Inte... more
LawFlash/Client Alert | Intellectual Property LawFlash
Timothy Lynch, David Levy, C. Erik Hawes
After years of debating the need for patent reform, Congress has acted. Today, the Senate passed the House version of the "America Invents Act" (the Act). The bill will now go to the President, who is expected to sign it into l... more
Outside Publication | Article
Robert Smyth, Ph.D.
LawFlash/Client Alert | Intellectual Property LawFlash
Dana Gross
In April 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) authorized the creation of a new .xxx sponsored top-level domain (sTLD) for the adult entertainment industry. (sTLDs are designed for members of a s... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On June 23, the U.S. House of Representatives passed the America Invents Act (304-117) (H.R. 1249), which will alter some central aspects of the current patent system. Background Over the last five years, various member... more
Outside Publication | Article
Ronald Tenpas, Alex Polonsky
Newsletter | Morgan Lewis IP Academy Newsletter
William Jackson Matney, Jr., David Levy, C. Erik Hawes, Robert Gaybrick, Collin Park, Robert Busby
In this issue: The Federal Circuit Affirms the Delaware District Court's Summary Judgment of Invalidity for Failure to Disclose the Best Mode | 未能公开最佳实施方式的后果 | 連邦巡回控訴裁、デラウェア連邦地裁のベストモード開示義務違反に基づく無効の略式判決を支持 Federal ... more
LawFlash/Client Alert | Advertising, Consumer Protection, and Privacy LawFlash
Dana Gross
The Federal Trade Commission (FTC) is considering updating and reissuing the "Dot Com Disclosures" business guide[1] that it originally issued in 2000 to assist online advertisers in complyin... more
LawFlash/Client Alert | Intellectual Property LawFlash
C. Erik Hawes
Earlier today, the U.S. Supreme Court issued its much-anticipated opinion in Microsoft Corp. v. i4i L.P. The Court had granted certiorari to consider the question of whether section 282 of the Patent Act, 35 U.S.C. § 282... more
LawFlash/Client Alert | Intellectual Property LawFlash
R. (Ted) Cruz
Today, the U.S. Supreme Court issued its decision in Global-Tech Appliances, Inc., et al. v. SEB S.A. , No. 10-6 (2011), holding that to prove inducing infringement under 35 U.S.C. § 271(b) a plaintiff must prove that the ... more
LawFlash/Client Alert | Unfair Competition/Trade Secrets LawFlash
Labor and Employment and Intellectual Property Practices
The U.S. Court of Appeals for the Ninth Circuit has given employers a clear path to increased protection for their trade secrets and other proprietary information in its decision in United States v. Nosal , Case No. 10-10038 (9... more
Presentation | Speech
Peter Watt-Morse
Newsletter | Morgan Lewis IP Academy Newsletter
William Jackson Matney, Jr., David Levy, C. Erik Hawes, Robert Gaybrick, Collin Park, Robert Busby
In this issue: The Federal Circuit Rejects the 25 Percent Rule as Fundamentally Flawed and Reviews the Entire Market Value Rule for Calculation of Patent Infringement Damages | 应用25%规则还是全部市场价值规则来计算侵权赔偿金？ | 連邦巡回... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
A U.S. District Court judge recently ruled that the qui tam provision of the False Marking Statute (35 U.S.C. § 292) is unconstitutional. In Unique Product Solutions, Ltd. v. Hy-Grade Valve, Inc. , No. 5:10-cv-1912 (N.D. ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
In Levi Strauss & Co. v. Abercrombie & Fitch Trading Co. , No. 09-16322 (Feb. 8, 2011), the U.S. Court of Appeals for the Ninth Circuit provides guidance on an important issue for trademark owners in assessing dilutio... more
Presentation | Speech
William Jackson Matney, Jr., Satoru Matsuo, Robert Busby, Robert Smyth, Ph.D.
Intellectual Property Practice Group partners Robert Busby, Jack Matney, more
Newsletter | Morgan Lewis IP Academy Newsletter
William Jackson Matney, Jr., David Levy, C. Erik Hawes, Robert Gaybrick, Collin Park, Robert Busby
In this issue: The Federal Circuit Affirms the New Jersey District Court's Preliminary Injunction to Bar Generic Drug Pulmicort | 项关于仿制药的临时禁令 | 連邦巡回控訴裁、パルミコートのジェネリック薬を市場導入禁止としたニュージャージー州連邦地裁の仮差し止めを維持 The F... more
LawFlash/Client Alert | Intellectual Property LawFlash
David Levy, Lucas Elliot, James Glenn, C. Erik Hawes, Rick Rambo, Winstol Carter, Jr., Paul Krieger
In its December 20, 2010 decision in Akamai Technologies, Inc. v. Limelight Networks, Inc. ,[1] the U.S. Court of Appeals for the Federal Circuit appears to have taken the final step toward ... more
LawFlash/Client Alert | Intellectual Property LawFlash
David Levy, Lucas Elliot, James Glenn, C. Erik Hawes, Rick Rambo, Winstol Carter, Jr., Paul Krieger
In its recent decision in Uniloc USA, Inc. v. Microsoft Corporation ,[1] the U.S. Court of Appeals for the Federal Circuit rejected the so-called “25% rule of thumb” as a means... more
Presentation | Speech
Robin Silva
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The European Patent Office (EPO) has announced rule changes, effective January 1, 2011, that require all applicants claiming priority to another earlier filed application to submit the search results from the patent office of fi... more
Newsletter | Morgan Lewis IP Academy Newsletter
William Jackson Matney, Jr., David Levy, C. Erik Hawes, Robert Gaybrick, Collin Park, Robert Busby
In this issue: Federal Circuit Highlights “Control and Direction” Requirement for a Finding of Joint Infringement Liability | 共同侵权中的“控制和指导”要求 | 連邦巡回控訴裁、共同侵害認定における「支配および指揮」の要件に注目 An Eastern D... more
Newsletter | Morgan Lewis IP Academy Newsletter
William Jackson Matney, Jr., David Levy, C. Erik Hawes, Robert Gaybrick, Collin Park, Robert Busby
In this issue: Another Case Transferred Out of the Eastern District of Texas | 又一件案件移出德州东区法院的管辖 | テキサス州東部地区からまた事件が移送される Federal Circuit Affirms that a Provisional Application Can Show Another Party Was First to Invent ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On September 10, the U.S. Court of Appeals for the Ninth Circuit held in Vernor v. Autodesk [1] that the first sale and the essential step doctrines do not apply to purchasers of a copy of... more
Morgan Lewis Title | White Paper
David Levy, C. Erik Hawes
In recent years, the frequency of patent infringement claims against some retailers has been steadily rising. This is certainly not an industrywide trend, as the total number of patent cases filed against the country’s 50... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The U.S. Patent and Trademark Office (USPTO) has issued an update to its obviousness guidelines for examiners, to be used when applying the law of obviousness under 35 U.S.C. § 103 (the Guidelines). The U.S. Supreme Cou... more
LawFlash/Client Alert | Intellectual Property LawFlash
C. Erik Hawes
Earlier today, the Court of Appeals for the Federal Circuit reversed the district court's dismissal of the relator's claims in Stauffer v. Brooks Bros., Inc. , No. 2009-1428. In doing so, the Federal Circuit established broad ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
In October 2009, the U.S. Federal Trade Commission (FTC) issued final revisions to its Guides Concerning the Use of Endorsements and Testimonials in Advertising (the Guides), addressing endorsements by consumers, experts, organi... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: The Federal Circuit Clarifies Liability for False Patent Marking | 错误专利标记应承担的责任 | 連邦巡回控訴裁が虚偽の特許表示に対する責任を明確化 The Federal Circuit Reverses and Orders Stryker IP Suit Assigned to a New Judge | 联邦巡回法院推翻Stryk... more
Outside Publication | Article
Robert Smyth, Ph.D.
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
Unanimously holding that the claimed invention directed to methods of risk hedging in commodities trading was not patentable, the U.S. Supreme Court today issued its much-anticipated decision in In re Bilski . A 5-4 majority o... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On June 10, the Court of Appeals for the Federal Circuit affirmed the district court's summary judgment that Solo Cup Company was not liable for the false marking of unpatented articles. In its decision in Pequignot v. Solo Cu... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Federal Circuit Affirms Eastern District of Texas Ruling on Inequitable Conduct, Addresses Definitions in Patent Application Prosecution | 专利不当行为：何为专利申请过程中的“实质参与” | 連邦巡回控訴裁、不衡平行為に関するテキサス州東部地区連邦地... more
Presentation | Speech
Karen Butcher, Barton Bassett
Outside Publication | Article
Robert Smyth, Ph.D.
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Federal Circuit Confirms District Courts Can Modify Claim Construction at Trial | 地区法院可以在庭审时修正权利要求解释 | 連邦巡回控訴裁、連邦地裁が審理中にクレーム解釈を補正できることを確認 Appellate Judge Excludes Damages Theory from Patent Trial | 上诉法官在... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On March 29, a U.S. District Court sided with the American Civil Liberties Union (ACLU) and other plaintiffs in an ongoing lawsuit, declaring Myriad Genetics' patents directed toward nucleotides encoding BRCA genes as invalid. ... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Case Clarifies the Law of Reasonable Royalty Damages | 计算合理许可费赔偿金的适用案例 | リーズナブル・ロイヤルティの損害賠償に関する法を事件が明確化 An obviousness determination may be called into question if the Board of Patent Appeals and Interfe... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
As is known among many in the intellectual property field, Judge Randall R. Rader, of the U.S. Court of Appeals for the Federal Circuit, periodically takes a break from his appellate duties to preside over trials of patent case... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The U.S. Supreme Court yesterday reversed the Second Circuit Court of Appeals and held in Reed Elsevier v. Muchnick that the copyright registration requirements for certain works under Section 411(a) of the Copyright Act of 19... more
Outside Publication | Article
Scott Sherwin
Outside Publication | Article
Elizabeth Morris
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The European Patent Office (EPO) Enlarged Board of Appeal (EBA) announced the end of Swiss-type claims in a decision published February 19. It held that "where the subject matter of a claim is rendered novel only by a new thera... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The Federal Circuit recently issued a decision that will be of interest to any business hoping to register a mark used online to promote and sell a product, and anyone who does U.S. trademark prosecution and maintenance work, pa... more
LawFlash/Client Alert | Litigation LawFlash
Colm Connolly
On February 12, the U.S. Department of Justice (DOJ) announced the creation of an Intellectual Property Task Force (Task Force) to target domestic and international intellectual property (IP) related crimes. According to U.S. At... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
Last fall, in its decision in Lucent v. Gateway , the Federal Circuit vacated a $357 million verdict, signaling to litigants and district court judges that "speculation" and "superficial testimony" were insufficient to support ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
Patent applicants can now take advantage of a new procedure that has the potential to greatly reduce the amount of time required by the U.S. Patent and Trademark Office (USPTO), the European Patent Office (EPO), or the Japan Pat... more
Outside Publication | Article
Daniel Johnson, Jr., Michael Carr, Rita Tautkus
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The United States Patent and Trademark Office (USPTO) recently agreed to modify how Patent Term Adjustment (PTA) is calculated in view of the recent Federal Circuit decision that overturned the way that the USPTO calculated PTA.... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The Court of Appeals for the Federal Circuit recently affirmed the lower court's decision holding that the U.S. Patent and Trademark Office (USPTO) was misinterpreting the statute for calculating patent term adjustment (PTA) for... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On December 28, 2009, the U.S. Court of Appeals for the Federal Circuit, in an opinion by Judge Moore (joined by Judges Rader and Plager), held that section 292 of the patent statute provides for a fine of up to $500 per article... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On December 22, the U.S. Court of Appeals for the Federal Circuit, in an opinion by Judge Prost (joined by Judges Schall and Moore), affirmed the jury's $200 million award in a patent infringement action brought by i4i against M... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Federal Circuit Expands Declaratory Judgment Jurisdiction | 确权宣告诉讼的管辖权认定--联邦巡回法院的重要决定 | 確認判決の管轄権に関する連邦巡回控訴裁判所の重大な判断 For the full story, please view the PDF. more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On December 4, the Federal Circuit issued an opinion that could make it considerably easier for companies faced with implied threats from patent licensing entities to file a declaratory judgment (DJ) action. In Hewlett-Packard... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: An Update on Motions to Transfer in the Eastern District of Texas | 德州东区法院的移案动议最新动态 | テキサス州東部地区連邦地裁における移送申し立てに関する最新情報 For the full story, please view the PDF. more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On December 2, the U.S. Court of Appeals for the Federal Circuit issued a writ of mandamus (an order) in the case titled In re Hoffmann-La Roche, Inc. , reversing the denial of a motion to transfer a case out of the Easter... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Patent Law Update from the U.S. District Court for the Eastern District of Texas | 来自德州东区法院的专利动态 | テキサス州東部地区連邦地裁の特許法最新情報 For the full story, please view the PDF. ... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: The U.S. Court of Appeals for the Federal Circuit Will Review En Banc the “Written Description” Requirement of 35 U.S.C. § 112 For the full story, please view the PDF. ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Michael Clayton, Anita Polott, Rochelle Alpert, Karen Butcher, Ron Dreben
The Federal Trade Commission (FTC) has announced revised Guides Concerning the Use of Endorsements and Testimonials in Advertising (the Guides), effective December 1, 2009. In particular, the revisions delineate how the FTC int... more
LawFlash/Client Alert | Intellectual Property LawFlash
Michael Clayton, James Sims III, Rochelle Alpert, Karen Butcher, Ron Dreben, Louis Beardell, Jr.
On September 25, the Sixth Circuit in Cincom Systems, Inc. v. Novelis Corp. concluded that the merger of a software licensee as part of an internal corporate restructuring violated restrictions on transfer of a copyright licen... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Death of Medinol : Federal Circuit Rejects the Trademark Board’s Fraud Standard For the full story, please view the PDF. more
LawFlash/Client Alert | Intellectual Property LawFlash
Anthony Roth
On September 11, the U.S. Court of Appeals for the Federal Circuit vacated Lucent's $357 million patent infringement award against Microsoft. Lucent Technologies, Inc. v. Gateway, Inc. , Nos. 2008-1485, 1487, 1495 (Fed. Cir. Se... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: The Federal Circuit Addresses Pleading Requirements for Inequitable Conduct An IP Update from the U.S. District Court for the Eastern District of Texas For the full story, please view the PDF. ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
In a long-awaited decision, the U.S. Court of Appeals for the Federal Circuit clarified the fraud standard yesterday, holding that "a trademark [registration] is obtained fraudulently under the Lanham Act only if the applicant o... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
Massachusetts has joined the growing list of states that are requiring businesses to encrypt and secure personal data. On March 1, 2010, new regulations will take effect that apply to all "persons who own, license, store or mai... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On August 17, the California Supreme Court unanimously ruled in Christoff v. Nestlé USA, Inc. that right of publicity claims are subject to the single publication rule. But the court left for another day determination ... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Eastern District of Texas Continues to Develop Standards for Transferring Venue in Light of Volkswagen and TS Tech Federal Circuit Holds that Certain Claims May Be Narrowed Based on the Language and ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Rochelle Alpert, Karen Butcher
In the Second Circuit decision in JA Apparel Corp. v. Abboud , 08-3181-cv (June 10, 2009), the court provides guidance to purchasers of trademark rights consisting of a person's name as to the scope of the agreement that would ... more
Outside Publication | Article
Christopher Halliday
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The European Patent Office (EPO) recently announced rule changes aimed at reducing the burden on patent examiners and expediting patent prosecution. The new rules, effective April 10, 2010, call for the applicant to assist the e... more
LawFlash/Client Alert | Intellectual Property LawFlash
Dana Gross
As has been broadly reported, the popular social networking website Facebook announced this week that at 12:01 a.m. Saturday, June 13, it will begin allowing users to register new, "personalized" Uniform Resource Locators (URLs)... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Federal Circuit Case Explains When Patent Applicants Are Entitled to a Narrow Exception of the Two-Way Test for Assessing Obviousness-Type Double Patenting $100M Verdict for Mattel Over Bratz Dolls Uphel... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Eastern District Applies Bilski in the Software Context If a rational legal argument exists to support a trial court’s refusal to transfer venue, the Federal Circuit will not grant mandamus relie... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Transfer—Still Not Likely in the Eastern District of Texas Even After Volkswagen and TS Tech For the full story, please view the PDF. ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On April 8, the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (the Board) issued a precedential opinion denying trademark registration to a foreign trademark applicant on the ground that he lacked the requis... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
To further its goal of enhancing overall quality and legal certainty, the Administrative Council of the European Patent Office (EPO) voted on March 26 to amend EPC Rule 36 to establish time limits for filing divisional applicat... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: A case regarding the standards for patentable subject matter under Section 101 of the U.S. Patent Laws, clarifying the Federal Circuit's In re Bilski decision A case further defining the requirements f... more
Outside Publication | Article
Dana Gross
Outside Publication | Article
Mansi Shah
Presentation | Webinar
Michael Lyons, Dion Bregman
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
Patent law 35 U.S.C. § 271(f)(1) provides that whoever supplies from the United States all or a substantial portion of the components of a patented invention and actively induces another to combine those components abroad i... more
Outside Publication | Article
Mansi Shah
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
Individuals and companies that are the subject of negative, anonymous online postings often face challenges when attempting to address such problematic messages in the United States. When such postings occur, the First Amendmen... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
In another attempt at reforming the U.S. patent system, leaders of the Senate and House Judiciary Committees recently introduced bipartisan patent reform legislation aimed at making "needed updates to the system which will impr... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The European Patent Office (EPO) recently announced a fee schedule change, effective April 1, 2009, for new patent applications. The new fee schedule applies to direct European applications, including divisional and new applica... more
Presentation | Speech
Robert Gaybrick, Winstol Carter, Jr.
The corresponding presentation slides can be found on the left. Presentation 1: ITC 337条調査: 新トレンドと米国連邦巡回控訴裁によるレビュー by Robert Gaybrick Presentation 2: Assessing Patent Infringement Damages by Robert Gaybrick P... more
Outside Publication | Article
Elizabeth Morris
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Motivation to Combine Prior Art to Render a Patent Obvious Need Not Be Explicit An Infringer's Prior Knowledge of an Asserted Patent May Lead to Increased Damages Patentability of System and Method of... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
In the wake of the recently decided In re TS Tech (Fed. Cir., Dkt. No. 888, December 29, 2008), PartsRiver v. Shopzilla (2:07cv440, January 30, 2009), and Odom v. Microsoft (6:08cv331, January 30, 2009), defendants seem p... more
Outside Publication | Article
Dion Bregman, Elizabeth Morris
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Foreign Patentee Avoids Personal Jurisdiction in Alabama District Court Enforcement of Chinese Patent Not a Problem for U.S. District Court Morgan Lewis Wins 15-Day Jury Trial and Post-Trial Motions f... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Patent Rule Changes: Tough Audience at the Federal Circuit Qualcomm v. Broadcom : New Federal Circuit Decision on Patent Unenforceability Barbie Returns as Queen of Doll Kingdom International Trad... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
In this issue: Nonobviousness Post KSR : New Federal Circuit Decision “Means-Plus-Function” Claims: New Federal Circuit Decision Legal Standard for § 102(b) “On-Sale” Bar: New Federal C... more
Newsletter | Morgan Lewis IP Academy Newsletter
Satoru Matsuo, Robert Busby, Robert Gaybrick
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On September 30, the U.S. District Court for the District of Columbia issued a decision in the case of Wyeth v. Dudas , No. 07-1492 (D.D.C., Sept. 30, 2008), that may alter the way the U.S. Patent and Trademark Office (PTO) inte... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
In an en banc decision by the appeals court having exclusive appellate jurisdiction on questions of patent law, the rules governing what may be patented in the software and financial fields have been changed as follows: F... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
Recently, the Internet Corporation for Assigned Names and Numbers (ICANN), the nonprofit body responsible for overseeing the Internet’s addressing system, released draft guidelines describing how virtually any term at all may bec... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The Fifth Circuit recently issued a decision that may have implications for patent cases filed in the Eastern District of Texas. It has been a common belief among defendants sued in the Eastern District that motions for transfe... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
After a series of decisions narrowing the scope of utility patents, the en banc Federal Circuit on September 22 reinforced design patent protection in a unanimous ruling that dropped both the “point of novelty” and “non-trivi... more
Outside Publication | Article
Thomas Sossong, Jr.
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On August 5, the U.S. Court of Appeals for the Federal Circuit delivered a significant opinion regarding the so-called “safe harbor” provision of 35 U.S.C. § 271(e)(1). In the case of Proveris Scientific Corp. v. Innovasystems... more
Presentation | Speech
Mansi Shah
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
One of the primary factors in deciding whether to request reexamination of a patent is whether the litigation will be stayed until the reexamination process is complete. In several recent decisions from the Eastern District of ... more
Outside Publication | Article
Rudy Fink
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
On June 9, the United States Supreme Court issued a significant opinion on the issue of patent exhaustion. In the case of Quanta Computer, Inc. v. LG Electronics Inc. , 76 U.S.L.W. 4375 (2008), the Court ruled unanimously that... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The United States Court of Appeals for the Federal Circuit recently held that a parent company may not recover the lost profits of a wholly owned subsidiary as damages in a patent infringement action, because the parent could n... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
A case currently on appeal to the U.S. Supreme Court raises the question of whether there is a constitutional flaw in the appointment process for judges who decide cases as part of the Board of Patent Appeals and Interf... more
Morgan Lewis Title | Deskbook
Emerging Growth & Life Sciences Groups
Outside Publication | Article
Alan Leeds, David Glazer
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property Practice
The U.S. District Court for the Eastern District of Virginia yesterday issued an order permanently enjoining the implementation and enforcement of the new rules from the U.S. Patent and Trademark Office (USPTO) related to claim... more
Outside Publication | Article
Robert Smyth, Ph.D.
Outside Publication | Chapter
Mansi Shah
Presentation | Speech
Christopher Halliday
Presentation | Speech
Brian Murphy
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
European Patent Office Increases Claims Fees Effective April 1, 2008 On April 1, 2008, the European Patent Office (EPO) will change the rules for excess claims fees, with the effect that many applications will see a sharp ri... more
Outside Publication | Article
Winstol Carter, Jr., Thomas Davis
Outside Publication | Article
Brand owners need new ways to promote their products and brands. Entertainment produced by or on behalf of a brand owner is an increasingly popular option, but one that must be handled carefully to avoid certain pitfalls associated with advertising.
Presentation | Speech
Robert Gaybrick
Partner Robert Gaybrick presented a case study on the U.S. Supreme Court patent case, LG Electronics v. Quanta Computer, ... more
Presentation | Speech
Robert Gaybrick
Presentation | Speech
Robert Gaybrick
Presentation | Speech
Robert Gaybrick
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
On August 1, 2007, final changes to the U.S. Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board Rules were published in the Federal Register. The critical rule changes go into effect on November 1, 2007. T... more
Presentation | Speech
Robert Gaybrick
Presentation | Speech
Robert Gaybrick
Outside Publication | Article
Thomas Sossong, Jr.
Presentation | Speech
Robert Hollingshead, Robert Gaybrick
Presentation | Speech
Robert Hollingshead, Robert Gaybrick
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
On September 7, the U.S. House of Representatives took a critical step in what may turn out to be a comprehensive overhaul of the U.S. Patent System. In a 263-to-136 vote, with 38 members not voting, the House approved a number... more
Presentation | Speech
Michael Lyons, David Bohrer
Presentation | Speech
Robert Gaybrick
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
On August 21, the United States Patent and Trademark Office (USPTO) published the long-awaited new rules related to continuation filings and examination of claims. As expected, the new rules limit the number of continuation app... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
The United States Patent and Trademark Office (USPTO) is in the process of enacting a set of rule changes that may significantly affect strategic patent portfolio development and maintenance. The rules were proposed in January ... more
Outside Publication | Article
Mansi Shah
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
On May 23, the Solicitor General submitted an amicus brief recommending that the Supreme Court deny the pending Petition for a Writ of Certiorari in the Joblove, et al. v. Barr Laboratories, Inc. et al (tamoxifen) patent litig... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
In KSR International v. Teleflex, Inc. , the United States Supreme Court overturned a decision of the Court of Appeals for the Federal Circuit (CAFC), rejecting the “rigid” application of the “teaching, suggestion, or motivatio... more
Presentation | Speech
Brian Murphy
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
On April 18, 2007, members of the House and Senate introduced the Patent Reform Act of 2007 (the Reform Act), which would make major changes to the way that patents are procured, profited from, and challenged in the United State... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
The Trademark Trial and Appeal Board (the Board) has continued its unwavering focus on fraud with a precedential decision in Hachette Filipacchi Presse v. Elle Belle, LLC , Cancellation No. 92052991 (April 9, 2007). The Board ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
The ongoing controversy over the legality of using trademarks to generate online keyword advertisements or “sponsored links” has a new twist. Last month, the State of Utah knocked loudly on the Internet’s door with a controvers... more
Presentation | Speech
Brian Murphy
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
In Teva Pharmaceuticals USA, Inc. v. Novartis Pharmaceuticals Corp. , No. 061181, the United States Court of Appeals for the Federal Circuit (CAFC) concluded that footnote number eleven in the Supreme Court’s MedImmune decisi... more
Outside Publication | Article
William Colgin, Jr., Karen Butcher
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
On March 12, 2007, the U.S. Patent and Trademark Office posted a notice on restriction requirements in patent applications containing nucleotide sequences. The 2007 Notice rescinds a 1996 Notice on the subject and is effective ... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
Michael Jordan’s claim against MCI for millions of dollars in endorsement/licensing fees will continue because a federal bankruptcy court recently held that the basketball legend was an independent contractor, and not an employe... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
Turner Broadcasting’s now infamous Boston cartoon campaign for Aqua Teen Hunger Force highlights the risks of new media promotions. When “guerrilla” marketing firm Interference, Inc. placed “sinister looking” boxes on bridges... more
Presentation | Speech
Brian Murphy
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
The Federal Trade Commission (FTC), in a statement made by Commissioner Jon Leibowitz before the Senate Judiciary Committee on January 17, expressed its concern over recent court decisions allowing cash or other incentive paymen... more
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
In a highly anticipated decision, the U.S. Supreme Court, on January 9, 2007, held that a patent licensee in good standing need not terminate or breach its license before filing a declaratory judgment action for patent invalidit... more
Presentation | Speech
Michael Kallus
Outside Publication | Article
Elizabeth Morris
Presentation | Speech
Brian Murphy
Presentation | Speech
Brian Murphy
Outside Publication | Article
Dion Bregman
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property
On May 24, 2005, China’s State Intellectual Property Office (SIPO) promulgated a new version of its Guidelines for Patent Examination. The new Guidelines will be effective as of July 1, 2006. This document highlights some major... more
Presentation | Speech
Barbara Melby
Presentation | Speech
Michael Kallus
Presentation | Speech
Michael Kallus
Outside Publication | Article
Elizabeth Morris
Presentation | Speech
James Sims III
Presentation | Speech
Rahul Kapoor
Presentation | Speech
Michael Clayton
Presentation | Speech
Lucas Elliot
Presentation | Speech
Lucas Elliot
July/August 2004
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: Strong Arm Comes Up Short in Long-Arm Dispute: Ask the Terminator: In Schwarzenegger v. Fred Martin Motor Co. , 2004 WL 1462444 (9th Cir. June 30, 2004), the Ninth Circuit Court of Appeals dismissed... more
May/June 2004
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: Door Still Open on Trademark Keywords: The practice of selling a third party’s trademark to generate an advertisement for another company continues to be controversial and in the news. Although ... more
March/April 2004
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: Deere Color Trade Dress Claims Roll On: In Deere & Company v. MTD Holdings Inc. , 2004 WL 324890 (S.D.N.Y. February 19, 2004), the Southern District of New York denied lawn and garden manufacture... more
Presentation | Speech
Lucas Elliot
Presentation | Speech
Lucas Elliot
January/February 2004
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: Who CAN-SPAM and Who Can't: On January 1, 2004, the new Federal CAN-SPAM Act of 2003 went into effect. CAN-SPAM, which stands for "Controlling the Assault of Non-Solicited Pornography and Marketing Ac... more
Presentation | Speech
Michael Clayton
November/December 2003
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: I Know What You Madrid Last Summer: The Madrid Protocol took effect in the United States on November 2, 2003. As reported in the May 2003 and December 2002 editions of Morgan Lewis on Intellectual Pr... more
October 2003
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: Bean There: Web Site Presence Creates General Jurisdiction: In Gator.com Corp. v. L.L. Bean, Inc ., 341 F.3d 1072 (9th Cir. 2003), the Ninth Circuit held that L.L. Bean's online business constituted ... more
September 2003
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: No Color Overdose: Pill Appearance Found Functional: Pharmaceutical companies in the Third Circuit may now find it harder to stop generic drug manufacturers from copying the shapes and colors of their... more
June/July 2003
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: Rights of Publicity vs. Free Speech: The Winters' Discontent: In a highly publicized case in California involving the balance between the right of publicity and the First Amendment, the California Sup... more
May 2003
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: You've Been Hacked: New California Disclosure Law Takes Effect in July: On July 1, 2003, new California cybersecurity legislation, SB 1386, will take effect. The legislation was prompted by an April 2... more
April 2003
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property and Technology
In this Issue: Ringside at Festo : Courthouse Packed for Patent Prize Fight: The Court of Appeals for the Federal Circuit recently held an en banc rehearing in Festo Corp. v. Shoketsu Kinzoku Kabushiki Co. , which... more
Presentation | Speech
John Ferreira, Peter Watt-Morse, Eric Kline
Outside Publication | Article
Asheesh Puri
LawFlash/Client Alert | Intellectual Property LawFlash
Intellectual Property and Technology
The U.S. Supreme Court’s March 4, 2003 decision in Moseley v. V Secret Catalogue, Inc. , has made it more difficult for owners of famous trademarks to protect against the use of similar marks by third parties in disparaging way... more
December 2002
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property
In this Issue: Seven Things You Need to Know About the Madrid Protocol: In November, the United States enacted legislation implementing the Madrid Protocol (often simply called the Protocol). This long-awaited step ... more
September 2002
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property
In this Issue: Court Spins Victory for Spider-Man: On July 30, 2002, the U.S. District Court for the Southern District of New York issued a curt dismissal of all claims brought by Sherwood 48 Associates and other owner... more
Presentation | Speech
Scott Stempel
Morgan Lewis Title | White Paper
Firm
On May 28, 2002, the U.S. Supreme Court delivered its opinion in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. , No. 00-1543 (U.S. May 28, 2002), a long-awaited decision in the patent community. The Supreme Court&r... more
June 2002
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property
In this Issue: Presto Festo: Is Infringement by Equivalents Now a Vanishing Act?: The doctrine of equivalents (“DOE”) was developed to prevent piracy of a patented invention by someone making minor changes to avoid ... more
March 2002
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property
In this Issue: Plant Patents: Firmly Rooted in U.S. Law: In December, the U.S. Supreme Court held in a 6 to 2 decision that utility patents properly could be issued for plant inventions pursuant to 35 U.S.C. § 101. ... more
January 2002
Newsletter | Morgan Lewis on Intellectual Property and Technology
Intellectual Property
In this Issue: Federal Dilution Protection: Descriptive Marks Need Not Apply: Earlier this year, the U.S. Court of Appeals for the Second Circuit held in TCPIP Holding Co., Inc. v. Haar Communications Inc ., 244 F.... more
Outside Publication | Article
Robert Beyers
Presentation | Speech
Lucas Elliot
Presentation | Speech
Lucas Elliot
Outside Publication | Article
Thomas Sossong, Jr.
Outside Publication | Article
James Sims III
Outside Publication | Article
Thomas Sossong, Jr.
Outside Publication | Article
James Sims III
Morgan Lewis Title | Deskbook
Intellectual Property
Outside Publication | Article
Thomas Sossong, Jr.
Presentation | Speech
Michael Clayton
Outside Publication | Article
Ron Dreben
Presentation | Speech
Ron Dreben, Michael Clayton
Presentation | Speech
Mary Aversano
Outside Publication | Article
James Sims III
Outside Publication | Article
Mary Aversano
Outside Publication | Article
Mary Aversano
Outside Publication | Article
Kathleen Sanzo
Morgan Lewis Title | White Paper
Intellectual Property
Important new legislation designed to encourage businesses to disclose and share information about the Year 2000 problem was signed into law by President Clinton on October 19, 1998. The Year 2000 Information and Readiness Disc... more
Outside Publication | Article
James Sims III
Presentation | Speech
Mary Aversano
Outside Publication | Article
Ron Dreben
Presentation | Speech
Mary Aversano
Outside Publication | Article
James Sims III
Outside Publication | Article
Thomas Sossong, Jr.
Morgan Lewis Title | White Paper
Ron Dreben
The so-called "Year 2000 Problem" is only now gaining broad recognition as a serious and potentially devastating risk affecting all businesses relying on computer or microchip technology. This White Paper discusses the nature o... more
Outside Publication | Article
James Sims III
Outside Publication | Article
Ron Dreben
Morgan Lewis Title | White Paper
Ron Dreben
This paper reviews the recently released Clinton Administration "Green Paper" proposal to change the management of the Internet domain name system, which will affect your rights as a trademark or Internet domain name owner. ... more
Outside Publication | Article
Ron Dreben
Outside Publication | Article
Mary Aversano
Presentation | Speech
Michael Clayton
Presentation | Speech
James Sims III
Outside Publication | Article
Ron Dreben
Outside Publication | Article
Thomas Sossong, Jr.
Outside Publication | Article
Ron Dreben
Outside Publication | Article
James Sims III
Outside Publication | Article
James Sims III
Outside Publication | Article
James Sims III
Morgan Lewis Title | White Paper
Ron Dreben
Industry experts predict that by the year 200 the volume of electronic commerce in the United States will grow to $70 billion, up from $500 million in 1996. From bookstores to securities firms, businesses are attempting to capi... more
Outside Publication | Article
Ron Dreben
Morgan Lewis Title | White Paper
Ron Dreben, Michael Clayton
Network Solutions, Inc. (NSI), the company that manages the Internet domain name registry for the quasi-governmental agency InterNIC, has announced revisions to its Internet "Domain Name Dispute Policy." NSI's revised policy, wh... more
Outside Publication | Article
Rochelle Alpert
Morgan Lewis Title | White Paper
Michael Clayton, Nancy Rowe
As of January 1, the European Community (EC) has implemented a new trademark registration system that enables trademark owners to acquire a single Community Trade Mark (CTM) registration that is effective and enforceable in the ... more
Morgan Lewis Title | White Paper
Michael Clayton
Companies worldwide are focusing their attention on the Internet for advertising, communication and commerce. The "information superhighway," however, raises numerous intellectual property pitfalls, most of which can be a... more
Presentation | Speech
Ron Dreben, Robert Gaybrick
Presentation | Speech
James Sims III
Outside Publication | Article
Mary Aversano
Morgan Lewis Title | White Paper
Intellectual Property
The purpose of this White Paper is to help companies decide what policies they should adopt concerning access to, use, and disclosure of electronic and voice mail sent and received by their employees on company messaging systems... more
Outside Publication | Article
Michael Clayton
Morgan Lewis Title | White Paper
Robert Gaybrick
The Uruguay Round Agreements Act (Act), Pub. L. No. 103-465, was signed by President Clinton on December 8, 1994. The Act significantly affects many areas of U.S. law, including the areas of patent, trademark and copyright law.... more
Outside Publication | Article
Michael Clayton, James Sims III
Morgan Lewis Title | White Paper
Michael Clayton
Morgan Lewis Title | White Paper
Caswell Hobbs, Michael Clayton, M. Elizabeth Bierman
Morgan Lewis Title | White Paper
Michael Clayton, James Sims III
Morgan Lewis Title | White Paper
Intellectual Property
Presentation | Speech
Ron Dreben, Michael Clayton
Presentation | Speech
Michael Clayton
Presentation | Speech
Ron Dreben, Michael Clayton
Presentation | Speech
Michael Clayton
Presentation | Speech
Michael Clayton, Scott Stempel
Presentation | Speech
Michael Clayton
Presentation | Speech
Michael Clayton
Morgan Lewis Title | White Paper
Ron Dreben, Michael Clayton
Outside Publication | Article
Michael Clayton
Morgan Lewis Title | White Paper
Lawrence Berger
Morgan Lewis Title | Deskbook
Intellectual Property Lawyers
Morgan Lewis Title | White Paper
Michael Clayton, James Sims III
Morgan Lewis Title | White Paper
Intellectual Property