Vol. 2 No. 4 March/April. 2010:
e-Discovery and Trade Secrets Law

e-Discovery and Trade Secrets Law:
Limitations on Discovery

By Scott A. Carlson and Patrick E. Zeller

In trade secrets litigation, e-discovery can present an extraordinary challenge. A party requesting the inspection of computer records is often looking for its trade secrets and related evidence on its opponent’s computers. Inevitably the opponent will say, “Wait a minute: our trade secrets are on there.” Such is the tension that courts and parties face when e-discovery law meets trade secrets law.

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The following articles from Vol.2 No.4 March/April. 2010
are available to Section members.
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Green Marketing: It's Not All Bunnies and Flowers
By E. Thomas Watson

“Greenwashing” is a term of opprobrium for overstated environmental marketing claims. When examined closely, though, it is essentially a new form of the old practice of deceptive advertising, for which current laws provide fairly effective remedies. Advice for green marketers is straightforward: tell the truth, do not overstate your case, be prepared to substantiate your claims, and use a trusted certification mark if you are eligible. read more...

Venue Transfers from the Eastern District of Texas: Case by Case or an Endemic Problem?
By Paul M. Janicke

Practitioners representing defendants: take heart. Transferring patent cases out of the Eastern District of Texas now appears quite feasible. The statistics indicate that the proportion of civil cases transferred out in recent years was actually higher than the national average for all federal districts and the proportion of patent cases transferred was about the same as the national average. read more...

Worldwide Certification-Mark Registration: A Certifiable Nightmare
By B. Brett Heavner and Michael R. Justus

Certification-mark protection varies from country to country and U.S. certification-mark owners encounter roadblocks when trying to register marks abroad. Moreover, certifying organizations find that the growing market for new certification marks has outpaced the ability of many countries’ legal systems to protect such marks. Harmonization of laws is the ideal solution— but one that will likely remain elusive for the foreseeable future. read more...

David and Goliath: i4i Takes on Microsoft
By William H. Venema

In 2009, a small Canadian company won $290 million in damages from Microsoft for infringement of a patent on the processing of markup language used in Word software. The district court also issued a permanent injunction barring Microsoft from selling recent versions of Word. The Federal Circuit affirmed in large part. But the giant has risen again and may not go down without a fight . . . in front of the Supreme Court. read more...

Heads You Win, Tails You Lose: Striving to Make Sense of Keyword Advertising Cases Post- Rescuecom
By Jamie N. Nafziger and Jose L. Hernandez

The recent Second Circuit decision in Rescuecom settled one area of uncertainty in relation tokeyword advertising and trademark infringement,but much remains unresolved. Several cases arepending both here and abroad. This article analyzespertinent case law and offers some practical stepsbrand owners can take to protect their brands. read more...

So What’s a Patent Prosecutor to Do in this Post- KSR World?
By Edward L. Pencoske and Matthew W. Johnson

Many dire predictions followed in the wake of the Supreme Court’s KSR decision. Some asserted that patent portfolios would be rendered virtually worthless. The authors, though, decided to look at the statistics . They confirm that reports of the death of the patent portfolio have been greatly exaggerated. read more...

Structuring Licenses to Avoid the Inadvertent Franchise
By Rochelle Spandorf

Most people think they know a franchise when they see one. In fact, a wide variety of business arrangements may qualify. Franchise law violations carry significant penalties, even for the inadvertent franchisor, particularly in an age of increasing co-branding. Lawyers should, therefore, suspect a franchise whenever an express or de facto trademark license presents itself. read more...

A False Sense of Security? Nonpracticing Entities and Potential Liability for Inducing Others to Infringe
By Paul J. Meyer Jr.

 “Nonpracticing entities” include IP-holding companies, research institutions that license to others, and “patent trolls” that buy, sell, and license IP assets solely to monetize them. Conventional wisdom holds that such entities are insulated from infringement risks—but conventional wisdom has been known to be wrong. read more...

Looking with an Equitable Lens at Hold-Ups of Standard Setting: Qualcomm v. Broadcom’s Remedy for Misuse
By David C. Brezina

Standard-setting organizations exist so that industry constituents can cooperate to bring innovations with shared features to market. When a patent holder wrongfully influences a standard-setting process to position its product to dominate a market, Qualcomm’s pronouncements on patent misuse will bar enforcement of the patent involved—within the industry. read more...

Accelerated Examination: A Second Look
By Christopher R. Hilberg, Robert M. Hirning, and Adam P. Kiedrowski

Many patent practitioners believe that the requirements for filing a grantable petition to make special under the USPTO’s new accelerated examination program are so onerous and so detrimental to the ensuing patent that the process simply should not be used. This article refutes these arguments and discusses the benefits of the program, many of which have gone underappreciated. read more...

Recent Developments in IP Law
By John C. Gatz

From the Hill
by Hayden W. Gregory

Perspective
By Don W. Martens

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