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.
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.
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.
Recent Blog Posts
- Judge Andrews Rejects Plaintiffs’ Assertion of Privilege of Email Communications Disclosed to Exclusive Licensee of Chinese Counterpart to Plaintiffs’ U.S. Patent-in-Suit By Memorandum Order entered by The Honorable Richard G. Andrews in Dasso International, Inc. et al. v. Moso North America, Inc. et al., Civil Action No. 17-01574 –RGA (D.Del. September 6, 2019), the Court found that any claim of privilege asserted by Plaintiffs over emails between Plaintiffs, Plaintiffs’ counsel and individuals at HDT, the exclusive licensee of the Chinese counterpart to Plaintiffs’ U.S. Patent No. 8,709,578 (“the ‘578 Patent”), were waived and did not fall within the “common interest doctrine.”... More
- Judge Connolly Grants Defendants’ Motion to Stay Patent Infringement Action in District Court Until Final Resolution of ITC Investigation By Memorandum Order entered by The Honorable Colm F. Connolly in Advanced Micro Devices, Inc. et al. v. MediaTek Inc. et al., Civil Action No. 19-70-CFC (D.Del. August 29, 2019), the Court granted Defendants’ motion to stay the district court patent infringement action alleging that Defendants were infringing U.S. Patent Numbers 7,633,506 (“the ‘506 patent”) and 7,796,133 (“the ‘133 patent”) pending final resolution of the United States International Trade Commission’s (“ITC”) Investigation No. 337-TA-1044. Defendants are also parties to the... More
- Chief Judge Stark Denies Plaintiff’s Motion for Preliminary Injunction in Patent Infringement and Lanham Act Action By Memorandum Opinion entered by The Honorable Leonard P. Stark in Citrix Systems, Inc. v. Workspot, Inc., Civil Action No. 18-588-LPS (D.Del. August 16, 2019), the Court denied the motion for preliminary injunction sought by plaintiff, Citrix Systems, Inc. In its complaint, Citrix asserted claims of infringement of U.S. Patent Nos. 7,949,677 (“the ‘677 patent”), 8,341,732 (“the ‘732 patent”), 7,594,018 (“the ‘018 patent”), and 8,135,843 (“the ‘843 patent”). Id. at *1. Citrix moved for a preliminary injunction seeking to enjoin... More
- Judge Fallon Denies Prevailing Party’s Motion to Declare Patent Case Exceptional The Honorable Sherry R. Fallon in Broadsoft, Inc. v. Callwave Communication, LLC, Civil Action No. 13-711-RGA (D.Del. August 8, 2019) issued a Magistrate Judge Opinion, pursuant to 28 U.S.C. § 636(b)(1)(A), Federal Rule of Civil Procedure 72(a) and District of Delaware Local Rule 72(a)(2), denying Plaintiff Broadsoft, Inc.’s motion to declare the case exceptional under 35 U.S.C. §285. “Section 285 provides that ‘[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party’” 35 U.S.C. § 285. Broadsoft was the... More
- USPTO requires non-U.S. trademark applicants to use U.S. counsel Effective August 3, 2019, a new United States Patent & Trademark Office (USPTO) rule requires all foreign trademark applicants to be represented by a United States licensed attorney when applying for a U.S. trademark registration. My partner Elizabeth Patton recently published a summary of the new rule and its impact. For more details, see her post on Fox Rothschild’s Above the Fold blog. ... More
- Judge Andrews Grants Defendant’s Motion for Issuance of a Letter Request to Obtain Evidence in Foreign Countries through Hague Convention By Memorandum Order issued by The Honorable Richard G. Andrews in Compagnie Des Grands Hotels d’Afrique S.A. v. Starman Hotel Holdings LLC, Civil Action No. 18-00654 RGA (D.Del. July 26, 2019), the Court granted the motion of Defendant for issuance of a letter request to obtain evidence in the United Kingdom of Great Britain and Northern Ireland through the Hague Convention. Plaintiff opposed the motion claiming the evidence sought was irrelevant to the alter ego theory at issue in the... More
- NBA Team and League’s #1 Pick File for Same Trademark An interesting trademark story recently unfolded involving an NBA draft pick and a team’s new star player. In this year’s NBA draft, the New Orleans Pelicans drafted college standout Zion Williamson with the first overall pick. This pick was almost unanimously a no brainer: Zion Williamson is one of the most anticipated basketball players to come out of college in years. With this anticipation, both Williamson and the Pelicans saw a marketing opportunity, and in particular an opportunity centered around... More
- New Rule for Foreign TM Applicants Earlier this month, the United States Patent & Trademark Office’s (USPTO) finalized and announced a rule requiring foreign trademark applicants to be represented by a United States licensed attorney when applying for a US trademark registration . The rule covers individuals with a permanent legal residence outside the US or its territories and entities with their principal place of business outside the US or its territories. There is no change to the rule for domestic trademark applicants, who are still not required to... More
- Judge Andrews Grants Defendant’s Motion to Dismiss Plaintiff’s Second Count of Infringement in Second Amended Complaint Under Kessler Doctrine By Memorandum Opinion entered by The Honorable Richard G. Andrews in Viatech Technologies, Inc. v. Microsoft Corp., Civil Action No. 17-570-RGA (D.Del. July 18, 2019), the Court granted Defendant’s motion to dismiss in part by dismissing Plaintiff’s claims of direct and indirect infringement asserted in Count II of the Second Amended Complaint under the Kessler doctrine. The Kessler doctrine fills the gap between the doctrines of claim preclusion and issue preclusion and intends to prevent an adjudged non-infringer from repeated... More
- Judge Andrews Grants Defendants’ Motion to Dismiss Plaintiff’s Willful Infringement Claims By Memorandum Opinion entered by The Honorable Richard G. Andrews in CFL Technologies LLC v. Osram Sylvania, Inc. et al., Civil Action No. 18-1445-RGA (D.Del. July 8, 2019), the Court granted Defendants’ motion to dismiss Plaintiff’s claims of willful infringement of U.S. Patent Numbers 5,510,680 (“the ‘680 patent”), 5,510,681 (“the ‘681 patent”), 6,172,464 (“the ‘464 patent”), and 5,757,140 (“the ‘140 patent”). In granting the motion, the Court explained that, in order to “state a claim of willful infringement, the patentee... More
- Judge Connolly Grants Defendants’ Motion for Summary Judgment of Indefiniteness Declaring Patent-in-Suit Invalid By Memorandum Opinion entered by The Honorable Colm F. Connolly in HIP, Inc. v. Hormel Foods Corp. et al., Civil Action No. 18-1615-CFC (D.Del. June 24, 2019), the Court granted Defendants Motion for Summary Judgment of Indefiniteness and declaring U.S. Patent Number 9,510,610 (“the ‘610 patent”) invalid under 35 U.S.C. § 112. The ‘610 patent is directed to a method of producing a pre-cooked sliced bacon product on an industrial scale. Id. at *5. “A preamble to claims 1 and... More
- Immoral & Scandalous Marks Survive It’s old news by now, but the Supreme Court ruled earlier this week that the immoral and scandalous trademark ban set forth in Section 2(a) of the Lanham Act is unconstitutional under the First Amendment because it disfavors certain ideas and thus discriminates based on viewpoint. Practically, this means that the United States Patent and Trademark Office (USPTO) can no longer refuse to register such marks. This is the second case the Supreme Court has decided on two related provisions of Section... More
- Judge Andrews Denies Plaintiff’s Motion for Reconsideration of the Court’s April 25, 2019 Order Regarding Claim 17 of ‘881 Patent By Memorandum Order entered by The Honorable Richard G. Andrews in TQ Delta, LLC v. 2Wire, Inc., Civil Action No. 13-1835-RGA (D.Del. June 24, 2019), the Court denied Plaintiff’s Motion for Reconsideration of the Court’s April 25, 2019 Order regarding Claim 17 of ‘881 Patent. In its motion for reargument/reconsideration, Plaintiff claimed that the Court made two clear errors of law in its prior Order. First, Plaintiff claimed that the Court made a clear error of law by deciding to... More
- FTC’s Antitrust Guidelines for IP Licensing Since 1995, the Federal Trade Commission (FTC) and the Department of Justice (DOJ) have maintained intellectual property licensing guidelines, most recently updated in 2017. Those guidelines, titled “Antitrust Guidelines for the Licensing of Intellectual Property,” discuss how the FTC and DOJ evaluate licensing for patents, copyrights, trade secrets, and know-how and how they analyze potential antitrust violations. The agencies explain that the guidelines are designed to provide information to businesses and consumers on how they enforce intellectual property licensing and are intended... More
- Companies Encouraged to Review Advertising Practices to Ensure Social Media Influencers are in Compliance Earlier this month, the Federal Trade Commission (FTC) and the U.S. Food and Drug Administration (FDA) issued warning letters to four companies using social media influencers to post on their behalf. According to the FTC and the FDA, the social media influencers’ posts were in violation of advertising and labeling laws due to misbranding and failure to disclose material information. The letters highlight the importance of companies following all advertising laws when using social media influencers. The Federal Food, Drug, and... More