September/October 2012

Cover Story

Taking the RAND Case to Trial By Eric W. Benisek, Richard C. Vasquez

Trying a RAND case in trial court involves many strategic considerations, but there is little precedent to guide practitioners. The authors present various claims and defenses that can be raised in the trial court in response to a plaintiff’s alleged breach of its RAND licensing commitment, as well as potential winning trial strategies.

Features

The Trademark Functionality Doctrine: Recast for Comprehension

By Elizabeth W. King

The trademark functionality doctrine bars rights and registration to marks that are deemed “functional,” but application of the doctrine has caused confusion for decades and is not easily understood. Elizabeth King examines the doctrine with an eye toward making it more useful and comprehensible.

Online Behavioral Advertising

By Dominique Shelton

Companies use online behavioral advertising to track consumers’ online activities to target them for digital advertising. The appropriateness on using OBA is being scrutinized due to privacy concerns and the lack of notice to and consent from the consumers, which has led to many class actions filed against the mobile industry.

The Confusion Continues over Key Word Confusion

By A. Michael Palizzi, Michael C. Simoni

U.S. courts have been struggling with the issue of whether selling or purchasing another’s trademark as a keyword constitutes trademark infringement. Case law from the U.S. and Europe that addresses trademark infringement in the context of keyword advertising is examined with the purpose of offering guidance for trademark owners and persons using trademarks in online advertising.

Obviousness-Type Double Patenting: Who Would Have Thought It Would Have Such a Profound Effect on the Pharmaceutical Industry?

By Anthony M. Insogna, Julie M. Baher, Colin A. Forestal

It has become increasingly clear that all patent practitioners must be cognizant of the recent developments in the law of obviousness-type double patenting and the potentially dramatic effects on the pharmaceutical industry. The history and current state of obviousness-type double patenting is explained.

A Dozen Times to Call Your Antitrust Lawyer

By David Balto

Antitrust law and intellectual property law are more often than not complementary and intersect at the core of many cases and enforcement efforts by the antitrust agencies. Intellectual property attorneys are encouraged to seek out the advice of their antitrust colleagues as antitrust enforcers take a more critical eye toward the exercise of intellectual property rights.

Increasing Business Development IQ for the IP Lawyer

By Hale Chan

Business development courses generally are not offered as part of the law school curriculum, yet business development is a vital skill in the life of a practicing attorney. Lawyers discuss the business development tactics that work best and provide insight into how they select outside counsel.

Columns

Perspective—Opening Statement

By Joseph M. Potenza

Joseph Potenza, incoming chair of the ABA Section of Intellectual Property Law, begins his year of tenure with opening remarks that reflect on his understanding of what the practice of law is and offers encouragement to become involved.

From the Hill—Sorting Things Out: Patents, Antitrust Law, and Settlement of Hatch-Waxman Act Infringement Suits

By Hayden W. Gregory

Issues concerning application of provisions of the Hatch-Waxman Act are discussed in light of a clear split in the circuit courts.

Departments

Profiles in IP Law—An Interview with Shira Perlmutter

By Mary Rasenberger, Eleanor M. Lackman

Shira Perlmutter, Administrator for Policy and External Affairs for the United States Patent and Trademark Office, discusses the path that led her to the USPTO and her responsibilities and goals as Administrator. She also shares the challenges faced by the USPTO in international policy discussions and the current polarization in copyright.