chevron-down Created with Sketch Beta.
Intellectual Property

Practice Points

What you need to know in a quick-to-read format. Find all of the Intellectual Property Committee's Practice Points in this archive.


Defending Against the “Display” Right
By Nancy Del Pizzo – January 12, 2023
A few concepts that could provide defense counsel persuasive arguments in the copyright space for embeds, an alleged foreign infringement, or a late-filed claim.


Does Using Floor Plans in Real Estate Listings Violate Copyright Law?
By Stu Richeson and Andrew Coffman – December 15, 2022
It might.

Failure to Show a Reasonable Expectation of Success Dooms Obviousness Allegations
By Richard Kurz and Jessica Stookey – March 29, 2022
The decision reinforces the importance of establishing whether the prior art demonstrates a reasonable expectation of success when considering obviousness allegations against patent claims.


“Shall Be the Property” Is Insufficient in a Contract to Automatically Assign IP Rights
By Richard Kurz and Kiersten Fowler – November 8, 2021
A recent decision provides insight into how IP assignment provisions in contracts may be interpreted.

Judgment Vacated under Rule 60(b)(3) Based on a Witness’s False Testimony
By Audrey Sparschu and Richard Kurz – June 3, 2021
This decision demonstrates that misrepresentations of knowledge of highly material prior art can result in overturning a judgment that relied on such misrepresentations.

Licensee Standing Considerations in Appeals of IPR Decisions to the Federal Circuit
By Isaac Kim and Richard Kurz – May 13, 2021
The panel’s decision in Apple v. Qualcomm may provide guidance for practitioners who are structuring license and settlement agreements and who may want to maintain standing for future appeals of IPR decisions.

Trademark Modernization Act: Discontinuance and Delay
By Matt Acosta – April 7, 2021
Rebuttals to the presumption of irreparable harm following the TMA.

USPTO Clarifies Test for Indefiniteness in AIA Post-Grant Proceedings
By Ali Berkin and Richard Kurz – January 19, 2021
The office updated the standard to match those of the district court under Nautilus.

What a Copyright Registration Can Tell You about Your Next Infringement Case
By Eric D. Wong – January 7, 2021
The copyright registration is a fount of information that may save you and your client massive headaches down the line.


Burden Shifting in Process Patent Cases
By Lisa Phillips and Matthew Benner – December 17, 2020
When defendants don’t comply with discovery, a rarely invoked exception to the burden of proof on infringement can be a potent weapon.

Tips for Safeguarding Your Data in the Work-from-Home World
By Stephen E. Breidenbach and Rebekah R. Sherry – October 14, 2020
Employee use of personal devices while working from home increases risks to data security.

How Do the Wealth Gap and YouTube Policies Benefit Powerful Media Entities?
By Trevor W. Barrett – July 10, 2020
New class action copyright infringement lawsuit alleges the video-streaming giant’s Content ID system unfairly benefits the wealthy and is insufficient to grant DMCA safe harbor.

Trade Secrets Risks You Might Not Have Considered in the Wake of COVID-19
By Nicole D. Galli – June 30, 2020
Be aware of the less obvious risks that have come up since the pandemic began.

U.S. Supreme Court Allows States to be “Digital Blackbeards”—For Now
By Carl C. Butzer – April 21, 2020
A recent opinion leaves room for Congress to enact more tailored legislation to address states’ copyright piracy.

Get It In Writing!
By Michael D. Steger – February 14, 2020
Copyright case involving famed glass sculptor illustrates pitfalls of not documenting artists’ contributions.


What to Know About Amending Infringement Contentions After Source Code Review
By Ken Fung – December 12, 2019
Failing to know how the facts and circumstances fit into local case law can have major consequences.

Iancu v. Brunetti: Trademark Registration Uncensored
By Micah Rappazzo – June 26, 2019
The likely effect of registration on consumer perception of uncouth marks is unclear.

With Alice Possibly Fading, Williamson Commands Attention
By Joe Edell – June 26, 2019
If Congress enacts these proposed changes into law, focus will likely shift from section 101 to section 112(f) of the Patent Act as a vehicle for challenging validity early in patent litigation.

Navigating Privacy Laws as the Landscape Shifts
By Stephen Breidenbach – May 30, 2019
A roundup of recent state proposals and tips on how businesses can comply to new laws.

Want Fries with that Trademark?
By Tommy Tobin and Jeannie Heffernan – March 13, 2019
Two recent developments involving fast-food giants provide important lessons in trademark prosecution and management.

SCOTUS Ruling Provides Bright-Line Rule on the Registration Requirement for Filing Copyright Lawsuits
By Trevor W. Barrett – March 13, 2019
The Fourth Estate decision reconciles a circuit split.

The Diversity Scorecard Challenge: Secrets for Success
By Tiffany A. Johnson – January 7, 2019
What steps can in-house counsel and outside counsel take to improve diversity in the legal profession?


Two Recent Federal Circuit Decisions Reinforce the Path to Success on Section 101 Challenges to Software Patents
By Bill Sigler – December 5, 2018
The cases help highlight the optimal approaches for practitioners on either side of the caption.

How Will California Cybersecurity Laws Affect U.S. Business?
By Nancy A. Del Pizzo – November 5, 2018
Attorneys who represent companies that reach customers who reside in the Golden State ought to become familiar with what is happening there.


Voices of Recovery Podcast Series
By ABA CoLAP – November 10, 2017
The ABA Commission on Lawyer Assistance Programs debuted the first of a series of podcasts that will address substance use disorders, mental health issues, addiction, and recovery issues. Episode 1 features attorney Laurie Besden, the Executive Director of Lawyers Concerned for Lawyers of Pennsylvania, who shares her battles with alcohol and drug addiction.

Inter Partes Review and Claim Amendment Strategies after Aqua Products
By Robert M. Asher – November 7, 2017
The case opens up a world of opportunity for the patent owner, but the opportunity does not come without its own share of hardships.

The Sale of a Patented Product Now Exhausts All U.S. Patent Rights
By Lawrence M. Green – June 7, 2017
The Supreme Court has further limited the rights of patent owners.

Best Practices for Obtaining Attorney Fees in Copyright Litigation
By Michael D. Steger – February 19, 2017
Serve your clients better by evaluating both your own ability to recover fees and your adversaries’ possible recovery early in the case.

9 Good Practice Tips for Preventing Information Theft
By John A. Stone – January 24, 2017
Implementing measures may enable a court to treat the misappropriated info as a trade secret.


NDA Alert: Modify Your Non-Disclosure Agreements!
By Linda K. Stevens – September 16, 2016
Remedies under the new federal trade secrets statute may no longer be preserved.

Richard Prince, Back in the Spotlight
By Robby Anderson – August 23, 2016
This time he's up against his most famous adversary yet, Dennis Morris.

Cybersecurity Rulings Tap Insurance and Standing Issues
By Nancy A. Del Pizzo and Gene Y. Kang – August 23, 2016
The decision is sure to have a lasting impact on how parties weigh the risk of litigating a case to completion.

More Than Hunting Pikachu
By Lesli D. Harris and Bryant S. York – August 2, 2016
Legal issues arising out of Pokémon Go.

Three Key Implications of the Supreme Court's Cuozzo Decision
By Jarrad Wood – July 15, 2016

Supreme Court Clarifies Test for Fee-Shifting in Copyright Cases
By Kevin Bovard and C. Dennis Loomis – June 28, 2016

A Circuit Split at Last: De Minimis Exception
By Lesley Grossberg – June 21, 2016

President Obama Signs Defend Trade Secrets Act
By Linda K. Stevens – May 13, 2016

Supreme Court Arguments in Two IP Cases Portend Practical Guidance for Practitioners
By Jarrad Wood – May 3, 2016

Inter Partes Review Petitions: Heads I Win, Tails You Lose
By Robert M. Asher – April 28, 2016

Trademark Infringement Must Be Willful to Warrant Award of Infringer's Profits
By Lesley McCall Grossberg – April 28, 2016

In re Tam: Still No Trademark Registration for the Slants
By Lisa Bollinger Gehman and Nancy Rubner Frandsen – April 5, 2016

Richard Prince: Toeing the Line Yet Again
By Robby Anderson – February 16, 2016

Shifting Requirements for Non-Disclosure Agreements in Illinois Employment Contracts?
By Josh Kurtzman and Linda K. Stevens – February 16, 2016

Hayuk v. Starbucks Provides a Warning to Abstract Artists
By Marcus R. Chatterton and Michael P. Taunton – February 10, 2016

How Rule 1 of the 2015 Amended Rules Might Have Helped Litigants Avoid Admonishment
By Jarrad Wood – January 29, 2016



FilmOn and the Copyright Act Section 111 Compulsory Licensing
By Dmitry Dymarsky – November 25, 2015

Ninth Circuit Affirms Existence of Author's Copyright in Batmobile "Character"
By George H. Carr – October 29, 2015

Defense of Laches Preserved in SCA Hygiene Products v. First Quality Baby Products
By Jarrad Wood and Ronny Valdes – October 1, 2015

California Court Rules No Copyright Protection for "Happy Birthday to You"
By C. Dennis Loomis – September 30, 2015

Federal Circuit Addresses Willful Blindness Analysis in Suprema v. ITC
By Jarrad Wood – September 30, 2015

Digital Millennium Copyright Act Through the "Lenz" of Fair Use
By Maryanne Stanganelli – September 16, 2015

Commil v. Cisco Systems: Nixing Good Faith Belief in Invalid Patent
By James L. Day and Erik C. Olson – August 25, 2015

Defend Trade Secrets Act of 2015 Introduced in House & Senate
By Lesley McCall Grossberg – August 5, 2015

DC Comics: Trademark Police
By Jessica S. Nam – July 31, 2015

Cancellation of Washington Redskins' Trademark Registration Upheld
By Jessica Watkins – July 13, 2015

Marvel Entertainment and the Patent on Spider-Man's Web
By Samuel A. McMahon – July 8, 2015

Instagram, Copyright, and the Art of Richard Prince
By Robby Anderson – June 30, 2015

Ninth Circuit Reversal in the 'Innocence of Muslims' Saga
By Christina Rossi – June 30, 2015

Form over Substance: The Bizarre Tyranny of the Copyright Registration Certificate
By Stephen M. Doniger and Scott Alan Burroughs – June 30, 2015

Reformation Clauses No Savior in North Carolina
By Michael Molzberger – May 28, 2015

Can the "Inevitable Disclosure" Doctrine Support a Breach of Contract Action?
By Christine Wilson Feller – May 21, 2015

TTAB Determination of Likelihood of Confusion May Have Preclusive Effect
By Joseph Mauch – May 21, 2015

Ninth Circuit Draws Fine Line Around Fine Art Resale Royalties
By Dennis O. Cohen – May 11, 2015

Revelers, Rejoice: Haydel's "Mardi Gras Bead Dog" Unprotectable
By Lesli D. Harris – May 8, 2015

En Banc Constitutionality of Trademark Act's Ban Against Registration of Disparaging Marks to Be Reviewed
By Lesley McCall Grossberg – April 30, 2015

Jury Sees a Clear Line—Pharrell and Thicke Crossed It
By Andrew Alexander – April 3, 2015

Is there Reasonable Certainty about the Standard of Review for Indefiniteness?
By Jeanne M. Heffernan and Leslie M. Schmidt – March 30, 2015

New Jersey Legislators Seek to Expand Data Breach Notification
By Nancy A. Del Pizzo – February 27, 2015

Executive Order re: Cybersecurity
By Megan Donohue – February 27, 2015

Ruling on an Appeal from an Inter Partes Review
By Kevin Bovard – February 17, 2015

Supreme Court Announces New Standard for Review of Claim Construction Rulings
By Kevin Bovard – January 29, 2015

Does Raging Bull Deliver Knockout to Patent Laches Defense?
By Andrew Alexander – January 28, 2015

Trademark "Tacking" Questions Should Go to a Jury
By Lesley McCall Grossberg – January 26, 2015