Orrick Event (Santa Monica) – Understanding your IP

It takes more than a great idea to develop a viable product.  Startups need to develop an intellectual property (IP) strategy in order to protect, commercialize and monetize their business.  Join a group of Orrick’s tech and IP experts for a discussion on what you need to know!  Discussion topics include: IP basics & milestones; Commercialization; and Dispute management.  Register here to attend.

Hatch Hints at Changes to Patent Law

A Look Forward on Patent Reform, Senator Orrin Hatch, October 2, 2017

Patent law reform legislation reminds us of a horror movie zombie:  it’s never truly dead.  A recent post from Utah Senator Orrin Hatch is the latest evidence that patents remain on Congress’s busy agenda.  Senator Hatch, who served on the Senate Judiciary Committee from 1993 to 2005 and currently chairs the Senate Republican High-Tech Task Force, recently explained which areas of patent law he believes are in most need of reform.  Because of his influence in the Senate, his remarks may indicate which areas of patent law Senate Republicans are considering altering. READ MORE

Is It Too Late For Velcro to Hook the Public on Hook and Loop?

In an effort to protect itself against genericide—the death of a trademark because the brand name becomes synonymous with the type of product—Velcro’s legal department released a video two weeks ago pleading with the public to stop saying “Velcro” and start saying “hook and loop” or “self-adhesive straps.”  (Watch it, really.)  Amazingly, Velcro’s play on the ballad “We are the World” has already gone viral.  Though the comments on the video are mixed, Velcro’s video is certainly raising awareness of its brand.  READ MORE

The Three Precedential Holdings of AQUA


On Wednesday, the en banc Federal Circuit decided Aqua Products, Inc. v. Matal, 2015-1177 (Oct. 4, 2017 Fed. Cir.), which addressed the allocation of burdens when the patent owner in an IPR moves to amend its patent to add substitute claims. The decision is 148 pages long, with three separate opinions and two separate dissenting opinions, no opinion or dissent fully joined by more than five judges, with only two judges signing a single opinion and, instead, most judges agreeing with parts of two or even three separate opinions.

In today’s blog post, we keep it very simple, though, given this blog’s mandate to focus on practical thoughts for the busy practitioner. In this post, we address this:  What in the Aqua decision is precedential, and what does that mean in practice? READ MORE

Not All Buffalos are Alike: Court Finds No Likelihood of Consumer Confusion Between Bourbon Bottle and Wine Bottle Trade Dress

Findings of Fact and Conclusions of Law, Sazerac Co. Inc. v. Fetzer Vineyards,
N.D. Cal. (Sept. 19, 2017) (Judge William Orrick)

Winemaker Fetzer Vineyards recently escaped a trademark infringement lawsuit brought by Sazerac Co. Inc. over the label design and imagery featured on its 1000 Stories red zinfandel wine product.  Sazerac produces a bourbon called Buffalo Trace which features a label that contains an image of a buffalo facing head-on towards the right, as well as an image of a buffalo on the neck of the bottle and white and gold lettering.  Sazerac has used the Buffalo Trace trade dress in commerce since 1999, and has several federal trademark registrations for the buffalo design and the word mark BUFFALO TRACE.  In 2013, Fetzer developed a male-orientated bourbon aged wine brand and selected the buffalo as the icon for the brand based in part on an article in the Smithsonian magazine entitled “101 Objects that Made America.”  Although Fetzer’s wine label also featured an image of a buffalo in which the entire animal is visible, on its wine label the animal faces toward the left and is placed on a black background.  The following image is a comparison shot of the two respective bottles:


Joining an IPR Could Prevent Recovery Under § 285

Order Dismissing Case as Moot, MD Security Solutions LLC, v. Protection 1, Inc., M.D. Fl. (Sep. 26, 2017) (Judge Paul G. Byron)

There may be an unappreciated cost in pursuing a patent validity challenge at the PTAB rather than at the District Court. Litigants choosing the PTAB route may deprive themselves of the right to recover attorneys’ fees.

In MD Security Solutions LLC, v. Protection 1, Inc., plaintiff MD Security Solutions (“MD”) sued for patent infringement, and defendant Protection 1 counterclaimed for a declaratory judgment of non-infringement and invalidity. Shortly afterwards, a third party filed an IPR on the patents-in-suit, and Protection 1 joined the IPR. Given the IPR, the parties agreed to stay the case pending its resolution. The PTAB invalidated the asserted patent claims, and the patentee/plaintiff allowed that decision to become final by choosing not to appeal. Despite that, Protection 1 sought to keep the case alive by seeking attorneys’ fees under 35 U.S.C. § 285 from MD, whom Protection 1 deemed a “patent troll.” In part because the deadline to appeal had already expired by the time Protection 1 sought leave to take its discovery, the trial court had other ideas. READ MORE

Court Cites Risk of Competitive Misuse to Deny Modification of Protective Order

Order Denying Motion to Modify Protective Order, PhishMe, Inc., v. Wombat Security Technologies, D. Del. (September 18, 2017) (Judge Christopher J. Burke)

As demonstrated by Judge Burke’s order, courts are reluctant to alter protective orders that have been in place for months and were specifically negotiated in an effort to protect against inadvertent disclosure and competitive misuse of confidential information. This is especially true when the parties are direct competitors and have capable outside counsel to manage the litigation.


Federal Circuit Provides Important Guidance on Establishing Patent Venue

Order Granting Mandamus and Directing Transfer of Case, Raytheon Company v. Cray, Inc., Federal Circuit (September 21, 2017)

The Federal Circuit today clarified what it means to have “a regular and established place of business” to satisfy the venue requirement in patent litigation under 28 U.S.C. § 1400(b). As we previously reported here, on June 29, Judge Gilstrap denied transfer in this case and set out a four-factor test to consider in establishing venue in a particular district—including physical presence, defendant’s representations, benefits received, and targeted interactions. Defendant Cray, Inc. then petitioned for a writ of mandamus. READ MORE

Judge Dow Orders New Trial Due to Unreliable Consumer Confusion Survey

Order Granting Motion for New Trial, The Black & Decker Corp., et al. v. Positec USA, Inc., et al., N.D. Ill. (September 11, 2017) (Judge Robert M. Dow, Jr.)

Trademark litigants often submit survey evidence to prove that there is (or is not) a likelihood of consumer confusion between two trademarks. Parties hoping to rely on such surveys should be careful, however, to mimic market conditions as closely as possible—for instance, ensuring that the emulated market conditions include an appropriate context reflecting how purchases actually are made. Parties also should heed professional survey research in constructing survey designs, so that the results are considered trustworthy and directed to the relevant issue. READ MORE

District of Delaware “Clips”- Off Venue-Discovery for Medical Device Company but Allows It for Pharmaceutical Company

Boston Sci. Corp. v. Cook Grp., Inc., No. 15-980-LPS-CJB, 2017 U.S. Dist. LEXIS 146126, at *2 (D. Del. Sep. 11, 2017); Bristol-Myers Squibb Co. v. Mylan Pharm., Inc., No. 17-379-LPS, 2017 U.S. Dist. LEXIS 146372, at *3 (D. Del. Sep. 11, 2017)

In the wake of the Supreme Court’s TC Heartland decision, District of Delaware Chief Judge Stark recently decided two venue transfer motions in patent cases that may have far-ranging implications for future patent litigation in Delaware. In one case, he ordered further discovery on the appropriateness of venue in the other, given the past litigation conduct of the defendant. In the other, he transferred the case out of the district. These decisions may be especially important in Hatch-Waxman cases where generic drug companies lack a corporate presence in Delaware but previously have sought to challenge a patent under that statute. READ MORE