Category Archives: Intellectual Property

Treatise Update – Patent Litigation (Third Edition)

Patent Litigation (Third Edition) enhances every patent litigator’s ability to prevail at trial while helping to cut the costs and complexity of litigation. Written by leading patent litigators, the treatise provides guidance on various infringement actions and their respective burdens of proof. It also offers pointers on conducting comprehensive pre-suit investigations; developing potent case themes; assembling strong litigation teams; developing smart litigation budgets; maximizing the persuasive impact of documents, exhibits, and witnesses; and making savvy use of computers, jury consultants, and litigation support vendors.

The new release covers many important developments, such as:

Corporate disclosures under Rule 7.1 and the hotly debated issue of whether recent court-imposed disclosure requirements are justified or permissible (see new section 3:7).
Two cases from district courts on the standard for assessing communications between the buyer and seller and licensor/licensee of patent rights made before the transactions closed (see section 5:4.2).
Case law from the federal circuit regarding an overly broad injunctive relief in the design patent context (see section 10:5.1).
Case law involving Moderna’s COVID-19 vaccine and Moderna’s claim that it is shielded from an infringement lawsuit in district court because of its agreement to supply the vaccine to the federal government (see section 14:2.2).
The PTAB’s clarification on its guidance for discretionary denial of IPR due to the advanced state of a parallel proceeding under Fintiv and the implications for the global defense strategy of respondents in ITC proceedings (see sections 14:4.9 and 15:3).
Circulation judge pool review, the PTO’s new internal procedure designed to improve overall quality of PTAB final written decisions (see new section 15:8.3).

For additional recent developments in patent litigation, check out this recent PLI Chronicle article, Patent Antibody Case Law Continues to Mature.

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Treatise Update – Faber on Mechanics of Patent Claim Drafting (Seventh Edition)

A trusted working tool for more than two decades, Faber on Mechanics of Patent Claim Drafting spotlights proven claim drafting practices and techniques that have been firmly established by patent authorities and custom. The treatise provides full coverage of U.S. Supreme Court and other court decisions critical to claim drafting. This time-saving handbook offers start-to-finish directions for and real-world examples of each type of claim and numerous tips on how to avoid common claim drafting mistakes.

The many revisions throughout this release continue to assist practitioners in drafting the most effective types of claims for each type of invention. Highlights of the new release include:

Updated Chapter 2 explains how a patent claim may be novel but still obvious thereby invalidating the claim (see section 2:7.1) and provides additional instruction on how to determine whether a claim is dependent or independent from a previous claim (see section 2:9).
Expanded § 3:9 offers suggested language to include in the patent application or claim of a machine or apparatus if seeking both a U.S. patent and patent protection abroad.
Revised § 5:5 provides additional details on how the effective filing date of a claim in a continuation-in-part application is determined.
Updated §6:2 expounds on what constitutes Markush expressions.
Expanded § 8:3 details how a terminal disclaimer prevents a second patent application by one patentee from being deemed an impermissible double patenting of a previous claim.

In addition, Appendices A, B, and C2 have been updated.

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Treatise Update – How to Write a Patent Application (3rd Edition)

Stocked with drafting checklists and sample drafting language, documents, and drawings, How to Write a Patent Application (3^rd Edition) is a hands-on resource that equips readers to claim an invention with the sufficient breadth and required elements necessary for its validity to be sustained by courts. The book analyzes the latest USPTO initiatives, and key decisions of the federal courts, and provides the author’s practical suggestions and commentary.

Key updates in the new release include:

Grounds for Requesting Expedited Examination: Added discussion of The Climate Change Mitigation Pilot program and how it impacts the examination of nonprovisional utility patent applications involving technologies that mitigate climate change by reducing greenhouse gas emissions (see section 2:9.2).
Electronic Filing Document Format: Updated information about the PTO’s new format requirement for electronic filings (see section 3:5).
Identifying the Inventor or Inventors: Elucidation of whether artificial intelligence systems qualify as inventors (see section 4:3).
Abstract and Nonabstract ideas: Additional examples of both (see sections 7:4.1[B] and [C]).
Statutory Requirements for Claims: Discussion of recent Federal Circuit cases related to the terms “resilient” and “pliable” and terms susceptible to more than one meaning (see section 8:2.1).
Patentable Designs: News and statistics related to acquiring, defending, and enforcing design patents (see section 11:1.1).
Written Description Requirement: Commentary on the high level of disclosure being required by the Federal Circuit to satisfy the written description requirement and the “troublesome” opinion in Biogen Int’l GmbH v. Mylan Pharm. Inc. (see section 17:4.2). For additional related discussion about the written description requirement, read also the recent PLI Chronicle article “Patent Antibody Case Law Continues to Mature.”

The Table of Authorities has also been updated.

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Treatise Updates – Kane on Trademark Law: A Practitioner’s Guide (Seventh Edition) and Likelihood of Confusion in Trademark Law (Second Edition)

PLI Press is pleased to announce updates to two of our Trademark treatises – Kane on Trademark Law: A Practitioner’s Guide (Seventh Edition) and Likelihood of Confusion in Trademark Law (Second Edition).

Kane on Trademark Law deals with trademark law on the whole, providing court-tested practical suggestions on how to quickly spot potential conflicts and save time on searches, overcome common descriptiveness rejections, amend registrations, and prepare witnesses for depositions.

Likelihood of Confusion in Trademark Law focuses specifically on a major factor for determining whether a trademark has been infringed – the probability that consumers will mistake the alleged infringing mark for the original. It illuminates the pivotal multiple-factor test, providing a strong grasp of the key elements used by the courts to determine if likelihood of confusion exists.

Updated topics from Kane on Trademark Law include:

Trademark selection: Chapter 2 now incorporates the USPTO’s new examination guidelines related to genericness rejections (see section 2:1.2) and decisions from the Federal Circuit regarding the registration of .SUCKS (see section 2:5.3) and book titles and characters as trademarks (see section 2:8).
Proving a statutory cause of action: Coverage of Meenaxi Enterprise, Inc. v. Coca-Cola Co., regarding the elements the claimant must prove to maintain a statutory cause of action under the Lanham Act for activities solely conducted outside the United States (see sections 19:4.5[D] and 22:5).

Highlights from the new information in Likelihood of Confusion in Trademark Law include:

New color illustration of trademark and trade dress infringement cases: An illustration from Sabhnani v. Mirage Brands, LLC (Perfumes & Cologne, see Appendix A49) has been added to Appendix A.
Consumers and their degree of care: New commentary in section 6:2 analyzes how empirical research into actual consumer behavior compares with old assumptions and new constructs of consumer behavior.

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Treatise Update – Kane on Trademark Law: A Practitioner’s Guide (Seventh Edition)

Kane on Trademark Law is a comprehensive resource on trademark law and tactics which provides court-tested practical suggestions on how to quickly spot potential conflicts and save time on searches, overcome common descriptiveness rejections, update or amend registrations, and prepare witnesses for depositions. It includes illustrative lists of cases, full-color illustrations of previously litigated marks, sample forms, and step-by-step checklists. The treatise is updated regularly to provide in-depth analysis of the most recent developments in the field.

The new release provides expert analysis and practical insights regarding a wide range of trademark issues. Topics of interest include:

Registration; grounds for rejection: Revisions include updates to the opposition proceeding involving the RAPUNZEL mark currently pending before the Trademark Trial & Appeal Board (see § 6:5.2).
Fraud: Revisions include discussion of Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC on the standard for fraud post-Bose (see § 7:2.5).
Limits to incontestability: Revisions include updated Eleventh Circuit case law on the relevance of incontestability to the infringement analysis (see § 7:3.4[C]).
Internet: Revisions include a new discussion of the Metaverse and cases involving non-fungible tokens (NFTs) (see § 11:1.3).
Rights of publicity and privacy: Section 14:2.1 takes note of NCAA name, image, and likeness rule changes per a recent Supreme Court case and NCAA policy changes.
TTAB proceedings: New Federal Circuit cases have been added to the discussion on standing in section 19:2.2[A].

The Table of Authorities and the Index have also been updated.

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New Title! Sports Law: A Practical Guide to Protecting the Interests of Athletes

PLI Press is proud to announce the publication of the new treatise Sports Law: A Practical Guide to Protecting the Interests of Athletes.

The book provides lawyers, player agents, marketing agents, financial advisors, and other members of athletes’ management and advisory teams with the tools and understanding they need to protect their clients’ interests before, during, and after the athletes’ professional playing careers. It offers a first-hand, behind-the-scenes glimpse into the unique complexities athletes face in their careers and daily lives. Packed with practice tips, sample documents and agreements, and unique insights, Sports Law is an essential resource for anyone who counsels or represents athletes, as well as for athletes themselves.

Notably, the book offers guidance on:

Athlete representative and advisor selection, management, and agreements (see Chapters 3, 4, 5, 6, and 7)
Financial and estate planning for athletes (see Chapter 8)
Name, image, and likeness (NIL) and other intellectual property considerations (see Chapters 10 and 11)
Athlete-nonprofit partnerships, business deals, and public appearances (see Chapters 9 and 12)
Athlete privacy (see Chapter 14)
E-sports (see Chapter 15)

The treatise also contains sample marketing and endorsement agreements and discusses topics such as race and sports, athlete decision-making, and athlete identity foreclosure (see the Table of Contents).

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Book Review

Likelihood of Confusion in Trademark Law (Second Edition) Supplement Date: Nov 2021

“[Kirkpatrick] gets to the heart of likelihood of confusion and explains what every trademark lawyer needs to know about this essential trademark law element.”
– Martha Sarra, Trademark Counsel, The Kroger Co.

“Richard Kirkpatrick’s book provides everything you want to know about the most important issue in trademark law. Likelihood of confusion is a like a multi-faceted crystal, and this work will help you find the right angle (and the right precedent) that sheds light on your particular trademark problem.”
– John T. Welch, Of Counsel, Lando & Anastasi

“When the book arrived, I was not disappointed. I actually read it cover to cover, which may be a confession that I am a legal geek but nonetheless points to the book’s readability, despite its highly technical subject matter. It starts with a discussion of the “Principles of Likelihood of Confusion” and ends with an Appendix of full color illustrations and a Table of Cases. Likelihood of Confusion in Trademark Law is logically ordered and flows as a complete work. Each subsection has helpful headings so that the reader can locate the information that may be useful in his/her particular case.” “This book also includes a plethora of footnotes that are on point, unobtrusive and helpful to explain the text.” “Likelihood of confusion is a subtle, complicated area of law and clearly worthy of a comprehensive reference volume on the subject, especially one as lively as this book.” “Two particularly strong points in the book are its cases cites and use of examples.” “Kirkpatrick expertly weaves pithy and longer quotes from court cases into his discussion in the text, and he also gives just enough concrete examples to help illustrate his points.” “I believe this text is a useful addition to any trademark attorney’s repertoire.”
– Anne Marie Segal, Esq., Segal Law Blog

“Kirkpatrick gives the practical insight that all trademark law practitioners should have at their fingertips.” – Chetuan L. Shaffer, Intellectual Property Counsel, Apple Inc.

“Likelihood of Confusion in Trademark Law is an excellent reference guide for professionals and non-professionals interested in the “key question” of trademark law…. Every practitioner should keep a copy of the book nearby.
”- Bryn T. Lorentz, Corporate Counsel – Intellectual Property, The Kroger Co.

”A comprehensive reference tool for both novices and experienced trademark practitioners. Kirkpatrick does a first-rate job of relating the subject of each chapter to consumer expectation.”
– New York Law Journal

“Likelihood of Confusion in Trademark Law sheds needed light on an important area of trademark law.”
– Bernard Zidar, Chief Intellectual Property Counsel, McKesson Corporation

“Likelihood of Confusion in Trademark Law is a practice-elevating resource that has deep and well-organized analysis and case law that would benefit even the most experienced practitioner who needs to analyze likelihood of confusion.”
– Raffi Zerounian, Partner and Los Angeles Market Leader, Hanson Bridgett LLP

Treatise Update – How to Write a Patent Application (Third Edition)

The third edition of How to Write a Patent Applicationwalks you step-by-step through the entire process of preparing patent applications. Completely up-to-date, it is stocked with sample drafting language, documents, drawings, and checklists. In addition to providing practical suggestions and commentary, the book analyzes the latest USPTO initiatives and key decisions of the federal courts.

New or updated topics addressed in this release include:

Assignments: For a discussion of (1) the extent to which an employer can rely on an assignment clause to assert an ownership interest in a patent that was obtained after employment and (2) how to make an assignment effective for the doctrine of assignor estoppel, see section 2:3.3.
Translations: For an example of the indefiniteness issues that translation into English can create and ways to avoid a finding of invalidity due to mistranslation, see sections 2:8 and 8:6.4.
Abstract ideas: New examples of inventions that the Federal Circuit held were abstract ideas have been added to section 7:4.1[B]. A recommendation for drafting specifications and claims for inventions using blockchain technology to avoid abstractness is included in section 7:4.6.
Enablement: To see how the use of functional language can make satisfaction of the enablement test more difficult, especially for biotech inventions, see sections 8:3.5[A] and 9:3.2[A]. What’s more, the need to clearly distinguish between prophetic examples that describe predicted experimental results and working examples is explained in section 9:3.2.
Appendix B (selected regulations), the Table of Authorities, and the Index have also been updated.

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Treatise Update – Kane on Trademark Law: A Practitioner’s Guide (Seventh Edition)

Kane on Trademark Law is a comprehensive resource on trademark law and tactics that provides court-tested practical suggestions on how to quickly spot potential conflicts and save time on searches, overcome common descriptiveness rejections, update or amend registrations, and prepare witnesses for depositions. It includes illustrative lists of cases, full-color illustrations of previously litigated marks, sample forms, and step-by-step checklists. The treatise is updated regularly to provide in-depth analysis of the most recent developments in the field.

The new release provides expert analysis and practical insights regarding a wide range of trademark issues. Topics of interest include:

Trademark selection: Highlights comprise cases from the Second Circuit and the TTAB on color protection (see Sulzer Mixpac AG v. A&N Trading Co. in § 2:10.2[B] and In re Medline Industries, Inc. in § 2:10.4 and App. B, Illustration 67).
Trademark registration: Revisions include an update to the Booking.com case regarding the expenses that an appealing party in an ex parte appeal must pay when appealing to the district court (see § 6:6.1[B]) and a precedential case from the TTAB on the registrability of a mark that includes a depiction of the U.S. flag (In re Alabama Tourism Department) (see § 6:5.2).
Trademark use and priority: For an update on the PRETZEL CRISPS dispute and a decision from the district court on issues of genericness and consumer confusion, see § 5:3.3.
Initial interest confusion: Consult § 8:1.1[A] for The Eighth Circuit’s blessing of the initial interest confusion doctrine in Select Comfort.
Infringement: See § 8:3.4 for an update to a Second Circuit case on landlord liability for a tenant’s counterfeiting (Omega SA v. 375 Canal, LLC).
Defenses to infringement: There is a new section on upcycling and repairs with citations to the Nike Satan shoes case and the Hamilton watch case (see § 12:1.5 and App. B, Illustration 68).
Costs: For a discussion about the significant costs of losing on appeal, see § 18:7.
Fraud: Go to §§12:2.6[G] and 19:2.2[B] for the TTAB’s ruling in a precedential decision about whether conduct amounting to reckless disregard constitutes fraud on the PTO as a matter of law.

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Treatise Update: Patent Licensing and Selling

Patent Licensing and Selling (Second Edition) offers complete and practical guidance for drafting, reviewing, and negotiating solid patent license agreements. Whether representing licensors of licensees, readers learn how to draft fair and litigation-free patent license and patent purchase agreements that serve clients’ interests, satisfy other parties, and shield clients from legal exposure.

Author Mark Holmes has revised and expanded the text and added useful new commentary on the following:

Licensee’s right to independent development: Licensors might wish to temper their granting of independent development rights with the condition that the licensee not diminish its efforts to market and sell the licensor’s products. See new § 2:11.
Compulsory licenses: Licensees that have already entered into license agreements with the patent owner will want to make sure that, if compulsory licensing is invoked, they are not paying a royalty rate higher than the compulsory rate. See new § 4:11.
Maintenance and prosecution costs: The license agreement might require the licensee to pay prosecution and maintenance fees. What if the licensor can dictate in which countries patents will be prosecuted and maintained? What is to protect the licensee from being forced to pay for prosecution and maintenance in countries in which there is likely little commercial interest in licensed products? See new § 6:3 for a discussion of how a licensee can protect itself from such perceived licensor abuse.
Indemnification by statute: In some states, if the license agreement is silent on indemnification, the issue may be addressed by statute, but the statutory obligation can be broad. See §§ 8:3.1 to 8:4 for a discussion of this important topic.
Arbitrator discretion: If you seek to limit discovery in an arbitration, beware of language that allows the arbitrator to deviate from the precisely stated limitations of discovery. See new § 14:9.1.
Force majeure: For a discussion of force majeure in the age of COVID-19, see § 15:10.2.
New contract provisions: This release includes the following new provisions for possible inclusion in a license agreement: Examples 1:69 and 1:69A (Construction and Rules of construction); Example 1:136 (Force majeure carveout); Example 1:318A (Valid patent claim); Example 2:21B (Right to develop independently); Example 3:16 (Patent family); Example 4:50 (Compulsory license royalty); Example 6:8 (Licensee responsible for maintenance and prosecution; loses rights where turns prosecution and maintenance over to licensor); Example 6:27 (Patent markings indemnification); Example 6:43 (Patent markings not an admission); Examples 8:5 and 8:5A (Disclaimer of warranties); and Example 18:1 (Seller patent marking compliance).

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