IP Blogs

Above the Fold

Advertising and marketing can pose a wealth of legal hurdles. When creating content, advertising professionals and companies often incur the scrutiny of regulatory agencies, such as the Federal Trade Commission. In this blog, our team of seasoned trademark and media attorneys address emerging trends and issues in this complex area.
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Delaware Intellectual Property Litigation Blog

Delaware is an important hub of business litigation and Fox Rothschild partner Gregory B. Williams closely monitors the decisions issued by the U.S. District Court of Delaware in the areas of antitrust and intellectual property law. This blog has become a resource for industry, the legal community and academia by providing concise synopses of the significant rulings from this influential court.
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IP Spotlight Blog

Intellectual property is often the lifeblood of a company. As an experienced IP and registered patent attorney, Jim Singer keeps you up-to-date with the legal and business aspects of intellectual property and other intangible assets on his IP Spotlight blog. Covering topics such as licensing, due diligence, acquisition, compliance and risk management associated with patents, trademarks, copyrights and trade secrets, IP Spotlight provides insight, commentary and tips regarding recent legislation and developments in the industry.
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Recent Blog Posts

  • Judge Connolly Denies Defendant’s Motion for Summary Judgment on Plaintiff’s False Advertising Claims under the Lanham Act and Delaware Deceptive Trade Practices Act By Memorandum Order entered by The Honorable Colm F. Connolly in 10x Genomics, Inc. v. Celsee, Inc., Civil Action No. 19-862-CFC-SRF (D.Del. April 8, 2021), the Court denied Defendant’s Motion for Summary Judgment on Plaintiff’s false advertising claims under the Lanham Act and the Delaware Deceptive Trade Practices Act (“DTPA”) after finding that genuine issues of material fact preclude summary judgment or that the asserted claims do not fail as a matter of law. A copy of the Memorandum Order... More
  • HAPPY RESURRECTION SUNDAY! Happy Easter!  “For GOD so loved the world that he gave His only begotten Son, that whoever believes in Him should not perish but have everlasting life.” John 3:16 Thank GOD!  Be Blessed!... More
  • Judge Andrews Adopts Magistrate Judge’s Report and Recommendation in Part in Granting Defendants’ Motion for Summary Judgment of Noninfringement of the Patent-in-Suit By Memorandum entered by The Honorable Richard G. Andrews in M2M Solutions LLC et al. v. Sierra Wireless America, Inc. et al., Civil Action No. 14-1102-RGA (D.Del. March 31, 2021), the Court granted Defendants’ motion for summary judgment of noninfringement of U.S. Patent No. 8,648,717 (“the ‘717 Patent”) with respect to the “exclusive set of numbers” limitation and also granted Defendants’ motion for summary judgment with respect to collateral estoppel and noninfringement under the doctrine of equivalents.  In so... More
  • USPTO Issues Warning to U.S. Attorneys Not to Aid Others in Circumventing the U.S. Counsel Rule Yesterday, the USPTO issued an alert regarding emails that U.S. attorneys have been receiving from unlicensed persons offering to pay attorneys in exchange for use of the attorneys’ bar credentials in trademark filings. The USPTO views such communications as a tool intended to circumvent the U.S. counsel rule. The USPTO cautioned U.S. attorneys that, by agreeing to such an arrangement, an attorney is aiding the unauthorized practice of law and violating the Federal Rules, including the USPTO’s Rules of Professional Conduct,... More
  • Chief Judge Stark Denies Defendants’ Motions to Dismiss Plaintiff’s Complaints Asserting Patent Infringement Due to the Use of AUTOSTAR Communication Technology in Defendants’ Vehicles By Memorandum Opinion entered by The Honorable Leonard P. Stark in Stragent, LLC v. BMW of North America, LLC et al., Civil Action No. 20-510-LPS (D.Del. March 25, 2021) (consolidated), the Court denied Defendants’ motions to dismiss Plaintiff’s complaints asserting infringement of U.S. Patent Nos. 9,705,765 (“the ‘765 patent”), 10,002,036 (“the ‘036 patent”), 10,031,790 (“the ‘790 patent”) and 10,248,477 (“the ‘477 patent”) from the use of the AUTOSTAR communication technology in Defendants’ vehicles. Defendants’ motions to dismiss Plaintiff’s complaints under... More
  • Selection of Federal Circuit Review of a TTAB Decision Does Not Bar District Court Review of a Later TTAB Decision Issued in the Same Case On March 17, 2021, in a matter of first impression, the United States Court of Appeals for the Fourth Circuit held a party appealing a decision of the United States Trademark Trial and Appeal Board (“TTAB”) may seek review of the decision in either the United States Court of Appeals for the Federal Circuit or a district court—even if the party had previously appealed an earlier TTAB decision in the same case to the Federal Circuit.  See Snyder’s-Lance, Inc. v.... More
  • TTAB Cautions Applicants: Change of Conditions or Circumstances is Necessary to Excuse Application of Res Judicata On March 5, 2021, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a precedential decision affirming refusal of SolarWindow Technologies, Inc.’s application to register the word mark POWERCOATINGS. The decision is a cautionary tale, for counsel and applicants alike, of the potential future ramifications of allowing an application to go abandoned following a TTAB decision if the applicant intends to continue using the mark and may consider filing a future trademark application for the mark in connection with the... More
  • Chief Judge Stark Allows a Portion of Defendants’ Counterclaim and Affirmative Defense of Inequitable Conduct to Proceed After Considering Plaintiffs’ Motion to Dismiss and Motion to Strike By Memorandum Opinion entered by The Honorable Leonard P. Stark in Diebold Nixdorf, Inc. et al. v. Hyosung TNS, Inc. et al., Civil Action No. 19-1695-LPS (D.Del. March 4, 2021), the Court granted in part and denied in part Plaintiffs’ motion to dismiss Defendants’ counterclaim, pursuant to Federal Rule of Civil Procedure 12(b)(6), and motion to strike Defendants’ affirmative defense of inequitable conduct, pursuant to Federal Rule of Civil Procedure 12(f), in a patent infringement action. The counterclaim and affirmative... More
  • Judge Andrews Issues Markman Opinion Construing Remaining Terms in Dispute in Four Patents-in-Suit in Infringement Action Involving Patents on Surgical Tools By Memorandum Opinion entered in Conformis, Inc. v. Medacta USA, Inc., Civil Action No. 19-1528-RGA (D.Del. March 4, 2021), The Honorable Richard G. Andrews construed the remaining terms in dispute in the four (4) patents-in-suit, U.S. Patent Nos. 8,377,129 (“the ‘129 patent”), 8,460,304 (“the ‘304 patent”), 9,186,161 (“the ‘161 patent”), and 9,295,482 (“the ‘482 patent”), in an infringement action involving patents on surgical tools and implants used in joint replacement surgeries and joint arthroplasties. A complete copy of the Memorandum... More
  • H1-B cap registration opens March 9 Tech companies and other employers note: H1-B cap registration opens March 9, 2021. Full details are available at this blog post by my partner Catherine Wadhwani, published on Fox Rothschild’s Immigration View . ... More
  • Judge Andrews Grants Defendant’s Motion to Strike Plaintiff’s Untimely Disclosed Theories of Patent Infringement in Opening Expert Report By Memorandum entered by The Honorable Richard G. Andrews in Viatech Technologies, Inc. v. Microsoft Corp., Civil Action No. 17-570-RGA (D.Del. February 19, 2021), the Court granted Defendant’s motion to strike barring Plaintiff from asserting, and its expert from opining on (1) any theory under the doctrine of equivalents (“DOE”) other than for the terms “user system” and “range of tolerance” and (2) any theory of infringement relying on the graphical user interface (“GUI”) of third party products or generated... More
  • Court Enters Order Cancelling Civil and Criminal Jury Trials in the District of Delaware Until On or After April 5, 2021 Due to COVID-19 Pandemic Due to the pandemic, the District Court entered an Order today cancelling all criminal and civil jury trials in the United States District Court for the District of Delaware until on or after April 5, 2021.  Each presiding judge has the discretion to order a jury trial in an emergency or urgent situation.  A copy of the Order is attached.... More
  • Chief Judge Stark Overrules Plaintiff’s Objections and Adopts the Order of Magistrate Judge Hall Denying Plaintiff’s Requests to Strike and Preclude Use of Certain Evidence at Trial By Memorandum Order entered by The Honorable Leonard P. Stark in 3Shape A/S v. Align Technology, Inc., Civil Action No. 18-886-LPS (D.Del. February 1, 2021), the Court overruled the objections of Plaintiff 3Shape contending that Judge Hall misapplied the Pennypack factors when she, by Oral Order dated January 9, 2021, denied 3Shape’s requests to (i) strike two paragraphs of Dr. Singh’s expert report and (ii) preclude Defendant Align’s use of two documents at trial. In overruling 3Shape’s objections and adopting Judge... More
  • Made In America – Or is it? The United States Government is the largest single purchaser of goods and services in the world, spending over $550 Billion dollars a year. It has long been the policy of the United States to purchase buy American. Indeed, the Buy American Act, which promotes domestic purchasing of goods and services, was signed into law in 1933. Yet, there has been a lot of recent Presidential Executive Orders directed to this same goal. For example, between January 31, 2019 and January 14,... More
  • Stimulus Package Includes Major Changes to Trademark & Copyright Law The pandemic relief and economic stimulus legislation that hurriedly passed Congress at the tail end of 2020, named the Consolidated Appropriations Act of 2021 (“the Act”), resulted in major changes to American trademark and copyright law.  Specifically, the Act included three intellectual property bills:  the Trademark Modernization Act of 2020, the Copyright Alternative in Small-Claims Enforcement Act of 2020 (the “CASE Act”), and the Protecting Lawful Streaming Act (the “PLSA”).  As summarized in a recent client alert written by two of... More
  • Expected Leadership Change At USPTO The Biden administration brings with it a changing of the guard at the United Stated Patent and Trademark Office (USPTO). As is customary for at least the last several decades, the USPTO’s leaders have resigned at or near the end of each presidential term. President Trump’s appointees have followed this custom. Indeed, both the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Andrei Iancu, and his Deputy Secretary and Director, Laura Peter, announced last week that... More
  • The Trademark Modernization Act of 2020 is Enacted Trademark Modernization Act of 2020 Signed Into Law On December 27, 2020, Congress signed the Trademark Modernization Act of 2020 (the “Act”), which had rare bipartisan support, into law. The Act makes substantive changes to the Lanham (Trademark) Act that will better protect the relevant consuming public from confusion regarding the source of goods and services, and implement procedures that the United States Patent and Trademark Office (“USPTO”), and trademark owners and applicants, can use to address fraudulent trademark filings in a... More
  • Judge Noreika Grants and Explains Awards of Pre- and Post-Judgment Interest Rendered in Federal Court Contract Action Based on Diversity Jurisdiction By Memorandum Order and Amended Judgment by The Honorable Maryellen Noreika in Cignex Datamatics, Inc. v. Lam Research Corporation, Civil Action No. 17-320-MN (D.Del. January 21, 2021), the Court granted with modification Plaintiff’s motion to alter or amend the judgment by adding to the original judgment of $232,039.71 in favor of Plaintiff in the breach of contract action (1) an additional amount of pre-judgment interest in the amount of $60,564.56, calculated as simple interest based on the Delaware legal rate... More
  • Major Changes to Trademark and Copyright Law Included in Massive Stimulus Package Two of our colleagues, Patricia Flanagan and and Alex Braunstein, recently wrote an alert on trademark and copyright changes that have been included in the most recent stimulus package. The Consolidated Appropriations Act of 2021, which was signed into law on December 28th, makes significant changes to American intellectual property laws via its inclusion of the Trademark Modernization Act of 2020 (TM Act); the Copyright Alternative in Small-Claims Enforcement Act of 2020 (CASE Act); and an amendment to Title 18... More
  • Gift Cards Remain Scammers’ Favorite Way to Extract Money from Consumers The Federal Trade Commission (FTC) recently released its analysis showing that the number one way scammers have extracted money from defrauded consumers is through gift cards.  In its press release, found here, the FTC stated that that consumers have spent almost $245 million since 2018 on gift cards that went to scammers.  The FTC’s data analysis is located here. Scammers will convince consumers that they need to pay the scammer (for example, by claiming to be a government agency that... More
  • How long does a U.S. patent or trademark application take to grant? (2020 edition) The USPTO recently released its FY2020 Performance and Accountability Report, with contains helpful information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant?  To answer that question: Patents: In 2020 the USPTO’s eight-year trend of reducing patent application pendency continued to trend downward. The... More
  • Can a Landlord be Held Liable for Its Tenant’s Trademark Infringement? Can landlords, whose tenants infringe on others’ trademarks, be held liable for trademark infringement? According to the 11th Circuit, the answer is yes. In Luxottica Group v. Airport Mini Mall, LLC, the 11th Circuit determined that a landlord whose tenants sell counterfeit goods can be liable for contributory trademark infringement if the landlord either stayed willfully blind to or had knowledge of the tenant’s infringing actions. In its decision, the 11th Circuit assessed whether Airport Mini Mall’s (“AMM”) actions constituted contributory... More
  • Cyber Security in a Post-Corona World: Startup Opportunities and Challenges On Nov 5, 2020 at 9 am EST / 3 pm CEST / 4 pm IDT, global innovation platform Axis Innovation will host a webinar titled Cyber Security in a Post-Corona World: Startup Opportunities & Challenges. This webinar will share actionable insights for companies (especially early stage companies) who seek to address global cybersecurity needs. The speakers and topics include: Developing Effective Cybertech Patent Strategies – with me, Jim Singer, Intellectual Property Department Chair of Fox Rothschild. Cyber During Covid-19 – Going global... More
  • Large entity, small entity or micro-entity: which type of patent applicant are you? When applying for a patent application, certain entities are entitled to reduced USPTO filing fees. Applicants who qualify for small entity status can reduce many USPTO fees by 50%. Applicants who are micro entities can reduce certain fees by 75%. An applicant who is neither a small entity nor a micro-entity is considered to be a large entity and must pay standard fees. The savings resulting from small entity or micro entity status can be substantial.  As of June 1, 2020... More
  • IP and the Open Covid Pledge Are you developing new technologies, treatments or other inventions that are useful to combat the COVID-19 epidemic? If so, my colleagues Gunjan Agarwal and Chipo Jolibois recently wrote a useful article discussing the Open COVID Pledge and how it can be used when patenting COVID-19-related inventions. For the full article on Law360, click here. ... More
  • Use caution before taking advantage of extended IP filing deadlines under CARES Act The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19. Patent and trademark extensions On March 31, 2020, the USPTO issued two notices indicating that it will waive certain patent and trademark filing deadlines under the CARES Act. The notices indicate that certain deadlines that arise between March 27, 2020 and April 30, 2020 will be... More
  • U.S. Supreme Court: states are immune from copyright infringement liability A new Supreme Court decision holds that states are immune from infringement suits under the United States Copyright Act, despite a 1990 law that attempted to remove states’ sovereign immunity in copyright infringement cases. In Allen v. Cooper (decided March 23, 2020), the Court considered a case involving videos and photos of a shipwreck that the state of North Carolina published online. The owner of the copyrights sued the state for copyright infringement. The state moved to dismiss the suit on... More
  • CARES Act authorizes USPTO to extend certain patent and trademark deadlines The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19. In the United States, many filing deadlines are set by statute. Because of that, as of the date of this writing, the United States Patent and Trademark Office (USPTO) has not yet extended patent or trademark deadlines, as it did not have authority to do... More
  • How will the shutdown of “non-essential” businesses affect trademark rights? As “non-essential” businesses are required to close in more and more United States jurisdictions, many businesses have paused operations. This pause may interrupt continuous use of trademarks in connection with the products and services that the affected businesses offer. When renewing trademark registrations, trademark holders must declare that the trademark has been in continuous use in commerce. How might a lapse in use of a trademark during a coronavirus-related shutdown affect the trademark holder’s ability to maintain or renew a trademark registration? My... More
  • Will the Defense Production Act shield COVID-19 protective equipment makers from patent infringement risk? On March 18, 2020, President Trump issued an Executive Order under authority of the Defense Production Act of 1950. The Executive Order stated: “I find that health and medical resources needed to respond to the spread of COVID-19, including personal protective equipment and ventilators, meet the criteria specified in section 101(b) of the Act (50 U.S.C. § 4511(b)). Under the delegation of authority provided in this order, the Secretary of Health and Human Services may identify additional specific health and... More