Profiles in IP Law An Interview with Paul J. Luckern
By Susan Pan
The USITC provides a unique forum for adjudicating intellectual property matters related to imported goods. In recent years, the Commission has seen accelerated use of its 337 provisions. This interview with Chief Administrative Law Judge Luckern, recently retired, illustrates his views on the evolution of 337 cases at the USITC and offers suggestions to parties coming before this forum. read more...
The Role and Challenges of IP in Times of Corporate Reinvention
By Jun Nakamura and Toshiaki Suzuki
As the global economy emerges from a depression, the business press has accentuated the positive, highlighting attributes of companies that emerge from downturns as healthier and more viable companies. One such attribute is the ability to adapt old expertise to new uses. One industry where this attribute is a necessity is the area of photographic imaging. As digital technologies have all but replaced silver halide film processing, rapid adaptation in developing new technologies from historical expertise poses several challenges, as does protecting those new technologies. Fujifilm has undergone such adaptation. read more...
One Patent, Two Paths: Federal Circuit Review of Divergent USPTO and District Court Decisions
By Lisa A. Dolak
The potential utility of reexamination in the context of patent litigation has caught the attention of litigants, commentators, and the courts. Concurrent litigation and reexamination proceedings proceed independently in the district court and the USPTO, and divergent outcomes are common because the courts and the USPTO approach claim construction and validity determinations differently, even on the same evidence. What happens when the Federal Circuit is faced with (arguably) conflicting district court and USPTO determinations on appeal? In recent years, we’ve begun to receive relevant guidance, as the Federal Circuit has been asked to weigh in and decide “whose rules rule” in a variety of circumstances. read more...
A Red-Leather Year for Aesthetic Functionality
By Charles E. Colman
Aesthetic functionality, a doctrine that precludes trademark protection for ornamental features over which a grant of exclusive rights would significantly hinder competition, has had a decidedly “checkered” history. The scope of the aesthetic functionality defense has gone through periods of expansion and contraction. Several major decisions over the past year indicate that the doctrine may now be in a period of significant and rapid growth. Trademark practitioners should take note; anyone still under the impression that the aesthetic functionality doctrine has been rendered toothless may be in for a nasty bite. read more...
Travel Can Tell on Trademarks and Such: Part II
By Susan J. Brushaber
Trademark counterfeiting and its impact on brand equity, consumer health and safety, and the global economy has reached a magnitude that could not have been anticipated 40 years ago. With the growth of the Internet, outsourcing, and organized crime’s involvement in global piracy and counterfeiting, careful compliance with international registration requirements can no longer be relied upon to protect a brand from the perils of the international marketplace. The U.S. government is playing an active role in the development of anticounterfeiting measures both domestically as well as internationally. read more...
Counterfeiting and the Myth of the Victimless Crime
By G. Trenton Hooper and Janna M. Wittenberg
The battle against counterfeiting seems to be losing ground. One reason appears to be that counterfeiting is seen as a victimless crime. Since many of the victims of counterfeiting never have their day in court, their interests are often overlooked or misunderstood. Importantly, there are two fundamental policies in trademark law: protecting mark holders and protecting consumers. By keeping the consumer protection aspect at the forefront with mark holder interests, progress can be made toward dispelling the myth of the victimless crime and helping turn the tide against counterfeiting. read more...
Patent Enforcement in China
By Shengping Yang
Patent enforcement in China has been a hot topic throughout the world for a while. Foreign companies have been unwilling to file patent applications in China because they feel that Chinese patent enforcement is too complex and difficult. This article presents research on Chinese patent enforcement, including statistics on adjudicated judicial and administrative patent enforcement cases. A brief review of actions taken by China in recent years to improve the general situation, different choices of routes to patent enforcement, and a glance at Chint v. Schneider provide concrete information on the true environment of patent enforcement. read more...
Rational Reasonable Royalty Damages: A Return to the Roots
By John B. Scherling and Ryan M. Sullivan
A framework for determining a reasonable royalty was set forth nearly a century ago, stating that a reasonable royalty is an amount of money determined by applying sound economic principles to case-specific facts. Over time, this implementation has resulted in erratic and excessive jury awards. To rein in problematic damages analyses, the Federal Circuit has issued opinions that impact three key elements of reasonable royalty damages. A legally and economically rational approach can be found by reflecting contemporary issues on the historical roots of the reasonable royalty. read more...
Recent Developments in IP Law
By John C. Gatz
By Robert A. Armitage
From the Hill
by Hayden W. Gregory
By Donald R. Dunner, John F. Duffy, Ralph Oman, and Theodore H. Davis Jr.
Meeting of the Minds
By Brent C. Jacobs and Philip Barengolts
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