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 Andrews Issues Markman Opinion Construing Five Remaining Terms in Dispute in Six Patents-in-Suit in Hatch-Waxman Action By Memorandum Opinion entered in Allergan USA, Inc. et al. v. Aurobindo Pharma Ltd., et al., Civil Action No. 19-1727-RGA (D.Del. January 11, 2021), The Honorable Richard G. Andrews construed the five (5) remaining terms in dispute in the six (6) patents-in-suit, U.S. Patent Nos. 8,691,860 (“the ‘860 patent”), 9,115,091 (“the ‘091 patent”), 9,364,489 (“the ‘489 patent”), 9,789,125 (“the ‘125 patent”), 9,675,587 (“the ‘587 patent”) and 10,188,632 (“the ‘632 patent”), in a Hatch-Waxman action concerning Plaintiffs’ VIBERZI® brand (eluxadoline) products... More
  • Judge Connolly Grants Hospira and Pfizer’s Motion to Stay Patent Infringement Action Pending Resolution of Related Action By Memorandum Order entered by The Honorable Colm F. Connolly, in Amgen Inc. et al. v. Hospira, Inc. et al., Civil Action No. 20-0561-CFC (D.Del. January 7, 2021), the Court granted in part the motion of Defendants Hospira, Inc. and Pfizer, Inc. to stay Civil Action No. 20-0561 until 14 days after resolution of Amgen Inc. et al. v. Hospira, Inc. et al., Civil Action No. 18-1064-CFC (D.Del. 2018). In granting the motion, the Court found that all three factors weighed... 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
  • Happy New Year! Wishing all followers of the Delaware Intellectual Property Litigation Blog a Happy, Prosperous and Safe 2021! Gregory B. Williams, Fox Rothschild LLP  ... 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
  • Merry Christmas! Have a Merry Christmas!  Stay Safe.... More
  • Judge Connolly Grants in Part Defendant’s Motion to Dismiss Plaintiff’s Patent Infringement Claims on Grounds of Lack of Subject Matter Jurisdiction By Memorandum Opinion entered by The Honorable Colm F. Connolly in ChromaDex, Inc. et al. v. Elysium Health, Inc., Civil Action No. 18-1434-CFC-JLH (D.Del. December 17, 2020), the Court granted in part and denied in part Defendant Elysium Health’s Rule 12(b)(1) motion to dismiss Plaintiff ChromaDex’s patent infringement claims after finding that (1) ChromaDex lacked standing to allege that Elysium infringed the asserted patents after March 13, 2017 – the effective date of the Restated License Agreement; and (2) ChromaDex... More
  • The TTAB Continues Its Recent Trend of Failure-to-Function Refusals On December 1, 2020, the TTAB continued its recent trend of decisions refusing to register marks on the ground of failure-to-function. In another precedential decision, the TTAB refused Applicant Lee Greenwood’s (“Greenwood”) application to register the phrase GOD BLESS THE USA for use in connection with “accent pillows; decorative centerpieces of wood” and “decorative wall hangings, not of textile,” finding that the applied-for phrase failed to function as a trademark. In a double-blow, the TTAB refused to enter Greenwood’s proposed... More
  • Judge Andrews Denies Plaintiff’s Motion to Reconsider Prior Order Dismissing All Counts of Complaint with Prejudice By Memorandum Order entered by The Honorable Richard G. Andrews in Dr. Laskhmi Arunachalam v. Citigroup Inc. et al., Civil Action No. 14-373-RGA (D.Del. December 4, 2020), the Court denied the motion of plaintiff to reconsider its prior order dismissing all counts of the complaint with prejudice.  The order in question held that plaintiff could not assert patent claims previously declared invalid; plaintiff was collaterally estopped from asserting the remaining clams based on the ruling of another district court which... More
  • USPTO Trademark Trends Today I attended the United States Patent and Trademark Office’s (USPTO) virtual webinar on trademark trends and current developments in the United States and in Israel.  Among the speakers were Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and David Gooder, the Commissioner for Trademarks at the USPTO. Mr. Iancu provided opening remarks about the importance of intellectual property to world economics – for job creation, growth of existing companies, new business formation, and improving... More
  • HAPPY THANKSGIVING! Have a Happy Thanksgiving!  Stay Safe.... More
  • National Advertising Division Resolves High Profile Advertising Dispute Most people, attorneys and non-attorneys alike, have heard of consumer protection agencies like the Federal Trade Commission, or FTC. Likely fewer, however, have heard of the National Advertising Division, or NAD. In short, the NAD operates as the advertising industry’s internal regulatory agency. The NAD monitors truthfulness and accuracy in advertising, and even foresees a voluntary dispute resolution process between advertisers. Recently, two high profile entities brought their dispute in front of the NAD. The maker of Gatorade, Stokely-Van Camp, Inc.,... More
  • PTO Offers Guidance Following the Decision in USPTO v. Booking.com Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. You can read our previous blog post about this decision here. This document serves as a roadmap for how the PTO will address “generic.com” trademarks in the future. In Booking.com, the Court rejected a per se rule allowing such trademarks as automatically non-generic. Thus, the agency notes that... More
  • TM Registration Specimens To apply for a federally-registered trademark with the United States Patent and Trademark Office (USPTO), an applicant is required under 15 U.S.C. § 1051 to, among other things, submit specimens of the mark and verify that it is being used in commerce (or in the event of a future intent to use, verification as such and future submission of specimens). Last month, the USPTO revised its Examination Guide 3-19, titled “Examination of Specimens for Use in Commerce: Digitally Created/Altered or Mockup... More
  • Judge Connolly Grants Plaintiffs’ Request to Preclude Defendant from Maintaining Its Invalidity Defense Based on An Undisclosed Inventorship Theory By Memorandum Order entered by The Honorable Colm F. Connolly in Pharmacyclics LLC et al. v. Cipla Limited, et al., Civil Action No. 18-192-CFC/CJB (D.Del. November 10, 2020) (Consolidated), the Court granted Plaintiffs’ request to preclude Defendant Sandoz from maintaining its theory that U.S. Patent No. 10,106,548 (“the ‘548 patent”) is invalid under 35 U.S.C. § 102(f) because the ‘548 patent did not disclose as inventors unidentified employees of Pharmorphix. The Court granted Plaintiff’s request to preclude Sandoz’s invalidity defense based... More
  • Judge Noreika Denies Defendants’ Motion for Attorneys’ Fees in Alleged Patent Infringement Action By Memorandum Opinion entered by The Honorable Maryellen Noreika in Mixing & Mass Transfer Technologies, LLC v. SPX Corporation et al., Civil Action No. 19-529-MN (D.Del. November 4, 2020), the Court denied the SPX Defendants’ motion for attorneys’ fees after finding that Defendants were not a prevailing party. By way of background, between 2005 and 2007, Plaintiff and a division of SPX were involved in litigation.  In 2007, the litigation was resolved by Settlement Agreement between Plaintiff and SPX.  Id.at *1. ... 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
  • The TTAB Rejects Equal Protection Argument in Favor of Failure-to-Function Refusal In a recent precedential decision, the United States Trademark Trial and Appeal Board (“TTAB”) affirmed an examining attorney’s failure-to-function refusal as respecting the standard character mark TEXAS LOVE, rejecting the applicant’s argument that the refusal violated the Equal Protection Clause of the U.S. Constitution by treating Texas citizens differently than citizens of Florida, California, Nevada, Maine, and Hawaii. Applicant Texas With Love, LLC (“TWL”) sought registration of the standard character mark TEXAS LOVE for use on or in connection with “hats;... More
  • Chief Judge Stark Grants Defendant’s Motion for Summary Judgment of No Infringement Under Doctrine of Equivalents By Memorandum Opinion entered by The Honorable Leonard P. Stark in Osseo Imaging, LLC v. Planmeca USA Inc., Civil Action No. 17-1386-LPS (D.Del. October 28, 2020), the Court, inter alia, denied Defendant’s motion for summary judgment of no infringement with respect to literal infringement and granted Defendant’s motion for summary judgment of no infringement with respect to the doctrine of equivalents. By way of background, Plaintiff Osseo owns a family of patents relating to dental and orthopedic imaging.  Id. at *1. ... 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
  • IAM Global Leaders 2020 I am honored to be named to the inaugural IAM Global Leaders list, a new publication featuring interviews with patent pratitioners ranked in the gold tier of the IAM Patent 1000. In my interview with IAM, I discuss how our team at Fox Rothschild is working to anticipate client expectations and lead the way in managing patent projects to meet or beat those expectations. I also discuss key questions that clients should consider when building an intellectual property strategy. The full interview is available... More