Category: Intellectual Property

Gibbons P.C. Presents “Keys to Negotiating Better Software and Software-as-a-Service Agreements”

From May 17-19, Peter J. Frazza, a Director in the Gibbons Commercial & Criminal Litigation Group, will lead a seminar in Las Vegas analyzing the negotiation of software licenses and software-as-a-service agreements, including data protection and privacy issues companies face that are specific to software transactions, artificial intelligence, and the Internet of Things (IoT). Mr. Frazza has over 30 years of experience handling complex lawsuits and contract negotiations on behalf of licensees and users in software licensing and software-as-a-service matters. For additional seminar details or to register, visit https://conta.cc/3CFGxws.

Trademark Modernization Act Becomes Law, Easing the Burden of Trademark Owners to Obtain Injunctive Relief and Curbing Trademark Registrations That Falsely Claim Use of a Mark

As part of the recent COVID-19 relief and government funding bill (“the Consolidated Appropriations Act”), Congress introduced significant changes to U.S. trademark law. The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020. The Act intends to curb trademark registrations that falsely claim use of a mark, addresses the false-use-claim problem by creating new procedures to improve examination effectiveness and efficiency, and promotes remedies designed to protect consumers in trademark cases. The TMA, which becomes effective one year after the date of its enactment, amends the Lanham Act by changing certain procedures in trademark prosecution before the United States Patent and Trademark Office (USPTO), providing new avenues for canceling fraudulent registrations, and clarifying the standard for obtaining injunctive relief in trademark litigation. The key takeaways from the Act are discussed below. Third-Party Submission of Evidence of Non-Use: Section 3 of the Act provides for third-party submission of evidence during examination of an application for federal registration of a trademark. In particular, codifying the practice of Letters of Protest, Section 3(a) allows third parties to submit to the USPTO certain evidence relevant to the examination of a trademark application for consideration in deciding whether a trademark registration should be issued. Relevant evidence can relate to any ground on which an examiner...

Christopher Strate to Speak at the Upcoming American Conference Institute’s Virtual Conference

On August 20, Christopher H. Strate, a Director in the Gibbons Intellectual Property Department, will speak at the American Conference Institute’s Virtual Conference, “Paragraph IV on Virtual Trial: COVID-19 Edition.” Mr. Strate’s discussion is scheduled from 4:00 – 5:00 pm ET and will address virtual trial and adjudication matters. For additional information or to register for this Conference, please visit AmericanConference.com/PIVCOVID.

Proposed “Safeguarding American Innovation Act” Would Target Foreign Influence in Research

A bipartisan group of U.S. Senators is sponsoring proposed legislation to stop China and other countries from allegedly stealing federally funded research and using the information to damage U.S. economic and national security. The bill was introduced on June 18, 2020 and is entitled the “Safeguarding American Innovation Act.” The proposed legislation was drafted and co-sponsored by Senator Rob Portman (R-OH) and Senator Tom Camper (D-DE). It is currently supported by eight Republican Senators and five Democratic Senators.  There is no counter legislation pending in the House of Representatives. According to Senator Portman, “We cannot continue to allow our global competitors to steal taxpayer-funded research and innovation in order to benefit their military and economy.”  The legislation contains several key provisions of interest to U.S. Research Institutes and Organizations regarding: Disclosing Foreign Funding and Relationships: Key purposes of the legislation are to disclose foreign sources of support to academic institutions and to provide information about foreign relationships when applying for federal research grants. The proposed legislation not only provides a fine for not reporting foreign sources of funding, but for the first time, it also criminalizes not reporting the relationships when applying for federal research money grants.  The criminal penalty proposed in the legislation consists of a term of up to five years. Expanding Funding...

Gibbons Again Ranked Among World’s Leading Patent Professionals by Intellectual Asset Management

Intellectual Asset Management (IAM) has again ranked the Intellectual Property Department of Gibbons P.C. among “The World’s Leading Patent Professionals,” granting the firm its “Gold Band” rating for practices that earned the highest number of positive reviews from sources. Gibbons is one of only three Gold Band firms in New Jersey. In addition, eight Gibbons attorneys—David E. De Lorenzi, Chair of the Intellectual Property Department, and Thomas J. Bean, Charles H. Chevalier, George M. Gould, George W. Johnston, Samuel H. Megerditchian, Robert E. Rudnick, and Christopher H. Strate—were ranked individually among IAM’s leading patent practitioners, spanning the litigation, prosecution, and transactions categories. Gibbons has the highest number of ranked attorneys on the New Jersey list this year. This is the tenth straight year that David De Lorenzi and the firm have been recognized by IAM. “Remarkably, nearly half of the Gibbons patent team have top-flight in-house experience,” notes IAM. The publication later reports, “This is a group, then, that intimately understands what clients need, and how and when they need it – and it delivers on all fronts.” To compile the IAM Patent 1000, the IAM team conducts extensive research over the course of five months with thousands of private practice attorneys based in dozens of countries, as well as the users of their services, in order to identify the practitioners and practices that are considered to excel at providing...

Gibbons Hosts “Keys to Negotiating Better Software & Software-as-a-Service Agreements” Seminar – October 16-18, 2019

From October 16-18, Peter J. Frazza, a Director in the Gibbons Commercial & Criminal Litigation Department, will lead a seminar in Las Vegas analyzing the negotiation of software licenses and software-as-a-service agreements, including data protection and privacy issues companies face that are specific to software transactions, artificial intelligence, and the Internet of Things (IoT). Mr. Frazza has over 30 years of experience handling complex lawsuits and contract negotiations on behalf of licensees and users in software licensing and software-as-a-service matters. For additional seminar details or to register, visit https://conta.cc/31AYf0h.

Method of Measuring Body Temperature Hits the Mark Under Alice Analysis

In Exergen Corp. v. Kaz USA, the Federal Circuit held that patents directed to a “body temperature detector” and related methods were eligible under § 101. The patents at issue disclose a body temperature detector that calculates a person’s core temperature by detecting the temperature of the forehead directly above the superficial temporal artery, and applying a constant coefficient to the skin and ambient temperature readings. After the jury found the claims infringed and not invalid, the district court denied judgment as a matter of law that the claims were directed to ineligible subject matter. The Federal Circuit affirmed the § 101 holding. Under the Alice test, the court first determines whether the claims are directed to a patent-ineligible abstract idea. If so, the court then examines the elements of the claims to determine whether the combination contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. Unsurprisingly, the Federal Circuit found the claims abstract at step one. The parties, however, disputed whether the additional claimed steps “beyond calculating the temperature” added an inventive concept sufficient to confer patent eligibility. As an initial matter, the Federal Circuit gave “clear error deference” to the district court’s conclusions that the claimed elements were not well-understood, routine, or conventional. Something is not well-understood,...

TC Heartland Changed Controlling Law for Waiver of the Right to Object to Venue Under Rule 12

The Federal Circuit recently decided In re Micron, in which the panel resolved a district court split, holding that TC Heartland v. Kraft Foods changed controlling law for the purposes of Rule 12 waiver. Micron petitioned the Federal Circuit for a writ of mandamus to set aside the district court’s denial of Micron’s post-TC Heartland motion to dismiss or to transfer the case for improper venue. The district court held that Micron had waived its venue objection under Rule 12(g)(2) and (h)(1)(A) by failing to object to venue in its initial motion to dismiss, concluding that TC Heartland was not a change of law that would make waiver inappropriate. The Federal Circuit granted the petition for mandamus, vacated the district court order, and remanded. A defendant objecting to venue may file a motion to dismiss for improper venue under Rule 12(b)(3). The ability to file a Rule 12(b)(3) motion, however, is constrained by Rule 12(h)(1)(A), which says a venue defense under Rule 12 is waived if it is omitted from an earlier filed motion to dismiss under Rule 12, in which the venue defense was “available to the defendant.” The question before the Federal Circuit was “whether the [TC Heartland] venue defense was available to Micron in August 2016.” The panel answered in the negative because...

Wendy Stein Promoted to Director in Intellectual Property Department

Gibbons P.C. is pleased to announce that Wendy R. Stein has been named a Director in the Intellectual Property Department in the firm’s New York office, effective January 2, 2018. “We are extremely proud of Wendy and we look forward to working with her in her new role,” said Patrick C. Dunican Jr., Chairman and Managing Director of Gibbons. At Gibbons, Ms. Stein focuses her practice on intellectual property disputes, primarily in the patent and trademark areas. She has extensive experience litigating a broad variety of patent infringement and other matters in the pharmaceutical and life sciences arenas, including matters related to a variety of medications, and SABAs used to treat asthma and/or COPD. Ms. Stein also has substantial experience litigating patent infringement disputes in the non-pharma area, including matters related to GPS devices, gaming, hand-held devices, and packaging. In addition, Ms. Stein has litigated trademark ownership and infringement/counterfeiting disputes involving perfume, apparel, electronics, real estate, and gaming. Ms. Stein has appeared before federal and state courts throughout the United States including New York, New Jersey, Delaware, California, Florida, Texas, District of Columbia, Illinois, and Nebraska, and before the Court of Appeals for the D.C. and Federal Circuits, recently obtaining a Rule 36 affirmance of five separate summary judgments concerning alleged patent infringement, false patent...