Vol. 4 No. 3 January/February. 2012:
From Metatags to Sponsored Ads

LandslideThe Evolution of the Internet-Related Trademark Infringement Doctrine
By Uli Widmaier

The Ninth Circuit has recently provided clear guidance on the legal standards for trademark infringement cases involving sponsored advertisements and domain names incorporating a client’s trademark together with other verbiage. Specifically, the use of a plaintiff’s trademark as a keyword to bring up a defendant’s website as a sponsored link does not, without more, create a likelihood of confusion and is thus not actionable under the Lanham Act. Additionally, the use of a plaintiff’s mark in a defendant’s domain name, combined with other verbiage that makes it clear the domain name refers to the plaintiff’s goods or services, constitutes nominative fair use and is not actionable under the Lanham Act.

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The following articles from Vol.4 No.3 January/February. 2012 are available to Section members. mo


Strategies for Defending Pharmaceutical Patents during Prosecution and in Litigation
By Monte R. Rhodes

There is a significant importance to the market exclusivity associated with patents on pharmaceuticals, including new therapeutic agents. This article discusses several topics of particular relevance to patent litigation strategies as they pertain to pharmaceutical patents. Selected recent decisions in patent cases from the Supreme Court and the Federal Circuit are analyzed with respect to inequitable conduct and inherent anticipation and obviousness in regard to enantiomer, metabolite, and polymorph patents. Provided are several strategic implications for pharmaceutical companies in defending against future patent litigation. read more...

The Bow Tie of Patent Claim Construction
By Andrew J. Fischer and David A. Jones

Arguments for harmonization of claim construction procedures overlook the purpose and necessity of the dual claim construction methodologies embodied by the “Bow Tie of patent claim construction.” The Bow Tie focuses on the comparative construction of claims during patent application prosecution and patent litigation. During prosecution, claim construction is broad and is narrowed through the prosecution process; during litigation, claim construction is narrow and is broadened as permitted by the specification and prosecution history. Practical considerations are addressed regarding the need for the current dual claim construction paradigm. read more...

Stretching Trademark Law to Protect Product Design and Packaging
By Jeffery A. Handelman

Companies are using trademark law to protect unique aspects of product design and packaging, known as “trade dress.” Cases decided by the United States Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board are examined, and from them are extrapolated the legal requirements that must be satisfied to protect design and packaging. Recommendations are offered to assist clients in achieving trademark protection in this area. read more...

Will Therasense Finally End the Plague?
By Rebecca C.E. McFadyen and Katrina M. Quicker

In May 2011, the United States Court of Appeals for the Federal Circuit issued the long-awaited en banc Therasense opinion. After years of uncertainty in the inequitable conduct jurisprudence and the emergence of the “atomic bomb” of patent law, the court took definitive action, and by its own procurement, “tighten[ed] the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.” This article explores the evolution of inequitable conduct as it relates to Rule 1.56 and reviews the recent en banc opinion. read more...

Time to Justice: Seven Hours or Seven Days?
By Bob McAughan

There is a significant lack of uniformity among the practices of the various district courts with respect to procedures that govern the pretrial and trial activities associated with cases arising under the patent laws. This has led to material differences between the districts and frequent forum shopping in patent litigation. Discussed are the difficulties faced by parties during litigation in the district courts and some of the measures taken by the Federal District and the legislature to address the problem. read more...

Fail to Plan, Plan to Fail: Strategic Considerations for U.S. Litigants Involved in English Proceedings
By Simon R. Chalkley and Sara L. Ashby

The risk of becoming involved in intellectual property proceedings in foreign courts has increased with the internationalization of business and the territorial nature of intellectual property rights. This article highlights some points and pitfalls of dealing with intellectual property matters in English courts, including a summary of the groundless threats provisions and an explanation of how to avoid submitting to the jurisdiction of the English courts by mistake. Key procedural steps in typical intellectual property litigation are summarized and the circumstances in which there may be a choice of forum are explored. read more...

Recent Developments in IP Law
By John C. Gatz

Perspective
By Robert A. Armitage

From the Hill
by Hayden W. Gregory

Section Focus
YLAG Spells Action!

Meeting of the Minds
By Cheryl L. Black and Sharra S. Brockman

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