By Mark D. Klinko, attorney at Fay Sharpe LLP On March 21, 2017, the U.S. Supreme Court issued a 7-1 decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC.  Justice Alito delivered the opinion of the Court and Justice Breyer dissented.  The Court decided laches cannot be a defense against damages where the patent infringement occurred within a time period set by Congress. Laches is an equitable doctrine under which a court may deny relief to a claimant who made a claim after an unreasonably long delay.  Judges evaluate the defense of laches on a case-by-case basis where it is available.  A key rationale for the doctrine of laches are fairness to a defendant since evidence needed to mount a defense may be destroyed over time.  For example, witnesses may lose memories or documents may be lost.  A statute of limitations serves a similar function but is set by...

Written by Mandy B. Willis, attorney You are a small, entrepreneurial company getting ready to introduce a product that will ensure your economic success. You have already taken steps to protect the intellectual property (the “IP”) behind the product. You invested in branding. You obtained a patent opinion that gives you clearance. But what if—unbeknownst to you—the product will infringe someone else’s IP? What if a larger company copies your idea, launches the product faster, and captures your customer pool? Can you afford to be involved in a dispute? Consider the Risk of Exposure How do large corporations fund the multi-million dollar suits in which they are entangled? These companies have a risk-management strategy that budgets for potential litigation. Part of the strategy is to use insurance to protect IP assets. Although not widely realized, this insurance is available to businesses of all sizes and stages of success. Insurance is available to reimburse...

Written by Theresa Rakocy Non-practicing entities, or patent trolls, as they are colloquially known because they lurk waiting for an unsuspecting individual, bring a sense of anger, frustration, and foreboding to patent attorneys. A patent troll owns one or more patents with the intent to license the technology or product, but does not actually make or sell any product covered by the patent(s). Enter, MPHJ Technology Investments, LLC. For all intents and purposes, MPHJ is a patent troll. A Google search for this company turns up many lawsuits filed by MPHJ for infringement of its “scan-to-email” patent. The “scan-to-email” patent was the subject of a recent February 13, 2017 decision in the U.S. Court of Appeals for the Federal Circuit. MPHJ’s patent U.S. No. 8,488,173 (the ‘173 patent) is entitled “Distributed Computer Architecture and Process for Document Management” and described a system and method that “extends the notion of copying from a...

Written by Brad S. Pulfer, attorney at Fay Sharpe LLP Patent owners should be keeping a close eye on a case that may come before the Federal Circuit Court of Appeals that could potentially block challenges to patent validity outside of the courtroom. Cascades Projection v. Epson and Sony[ref]Appeal No. 17-1517 (Fed. Cir. 2017)[/ref] asks the court to decide whether the rights granted by a patent are public or private and, in turn, if those rights are capable of being revoked without access to a jury trial. Since the implementation of the America Invents Act, patent rights have been revocable upon a challenge brought before the Patent Trial and Appeals Board (PTAB). Last week, the owner of a patent invalidated through such a review by the PTAB petitioned the Federal Circuit, imploring them to review the constitutional authority of the PTAB to invalidate granted patent rights. The petitioner, whose patent involved LCD technology, asserts...

By Rachel A. Smoot, attorney, Fay Sharpe LLP It’s that time of year again: designers flock to New York City to showcase their creativity and upcoming trends in fashion, allowing models to “stomp to the death” down runways in front of the world’s media. That’s right—it’s Fashion Week. While many people probably think of Fashion Week as a way to preview upcoming styles, Fashion Week is also prime time for fast fashion retailers to start sketching out their own products. Indeed, many times these fast fashion retailers are “inspired” from what is previewed at Fashion Week, resulting in nearly identical off-the-rack pieces produced and sold at a fraction of the price of runway pieces. For example, in 2013, one such fast fashion retailer sold a white bustier top priced at $19.95, which looked strikingly similar to a high end designer’s white crop top from its Spring 2013 collection priced at $1,535. That same...

By Rachel A. Smoot, attorney, Fay Sharpe LLP On the morning of January 18, 2017, the Supreme Court heard oral arguments for Lee v. Tam. As a quick recap, this case stems from In re Tam, which began with Simon Shiao Tam’s federal trademark application for THE SLANTS. Mr. Tam is currently the front man for an Asian-American rock band founded in 2006 performing as THE SLANTS. The band draws inspiration for its lyrics from childhood slurs and mockery. The United States Patent and Trademark Office (USPTO) denied Mr. Tam the registration, citing Section 2(a) of the Lanham Act, which prohibits the registration of any mark consisting or comprising of “immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons.” Specifically, the USPTO found THE SLANTS is disparaging of Asian persons and persons of Asian descent. After having little success at the USPTO’s Trademark Trial and Appeal Board...

By: Ryan Jones, attorney, Fay Sharpe LLP On March 16, 2013, the United States became a “first-to-file” patent system, in which the first inventor to file a patent application, such as a provisional application, gets priority rights over others.  The reasoning here is that if you want a patent for your invention, you better act on it quickly. As a result, many patent attorneys and experts anticipated a flood of filed patent applications, resulting in a “race to the Patent Office”.  However, according to a recent article entitled “The AIA’s First-to-File Transition SHOULD Have Resulted in More Provisional Filings (available at http://www.ipwatchdog.com/2016/09/14/the-aias-first-to-file-transition-should-have-resulted-in-more-provisional-filings/id=72617), the authors determined that, based on the filing of applications before and after March 16, 2013, the number of patent applications filed at the Patent Office did not substantially increase. The authors conclude that provisional applications should be “filed first, filed often” in order to gain the highly-desirable priority rights.  This...

By Matthew Burkett, attorney The Supreme Court of the United States (SCOTUS) recently granted a petition for writ of certiorari, submitted by the United States Patent and Trademark Office (USPTO), to decide whether the disparagement provision of the Lanham Act is facially invalid under the First Amendment. The disparagement provision resides in Section 2(a) of the Lanham Act and states that a trademark which “[c]onsists of…matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute...

By Brad S. Pulfer When a parent captures his or her child doing something funny or remarkable on video, copyright law is probably not the first thing that crosses their mind. One mother found out about the frequent and unpredictable nature of copyright law when her family YouTube video was taken down at the request of music giant Universal Music Group. Stephanie Lenz uploaded the 29 second video which features two of her children rambunctiously roaming the family’s living room.  It settles on a baby bobbing up and down to the tune of a song in the background. That song, the late Prince hit, “Let’s Go Crazy,” is barely audible and clearly not the subject matter Mrs. Lenz sought to capture in her video. Nonetheless, Universal Music found the presence of the song in the video a violation of their copyrights, and served YouTube with a “takedown” notice. Universal Music was able...

Patrick R. Roche, partner at Fay Sharpe LLP, is featured in an article with Inside Counsel published on September 6, 2016. He discusses the possibilities to secure software patents after the landmark decision was rendered in Alice Corp. v. CLS Bank International. Please copy the link below to read the full article. http://www.insidecounsel.com/2016/09/06/is-there-still-hope-for-e-commerce-tech-patents ...