Last Thursday, a court in the Northern District of Illinois upheld the trademark “UGG” for wool-lined boots against charges of genericide. The plaintiff’s survey evidence showed that U.S. shoe consumers mostly understand “UGG” to refer to a brand rather than a type of boot. The defendant, however, submitted evidence showing that sheep-skin boots were popular with Australian surfers as far back as the 1970s, many of whom referred to them generically as “ugg boots.” The defendant also presented evidence that some American surfers use the term “ugg boots” generically as well, likely due to overlap in the surfing communities. READ MORE
By zealously delving into each case’s complexities and elegantly connecting those details to a broader technical perspective, Will unravels his opposition’s argument.
Will uses this approach to defend cutting edge computer, Internet and software companies with great success, having prevailed in 10 out of 11 subject matter eligibility challenges. Will also draws upon his encyclopedic knowledge of Federal Circuit cases to ensure his strategy will withstand appeal. When his cases are challenged, Will plays a key role in writing and arguing the appellate briefs. Whether handling patent, trademark or trade secrets matters, Will’s creative methodology gives his clients a unique advantage.
Will is also an enthusiastic participant in Orrick's pro bono efforts, and has obtained successful results for several disadvantaged and low-income pro bono clients.
Posts by: Will Melehani
Patent damages law can be fairly complex—so much so that Daubert motions against damages experts are filed in nearly every case. These motions often accuse damages experts of overreaching by failing to properly apportion damages or misapplying the entire market value rule (“EMVR”). On Tuesday, the Federal Circuit’s opinion in Power Integrations, Inc. v. Fairchild Semiconductor International attempted to clarify these aspects of the patent damages analysis, vacating the jury’s $139.8 million damages award in the form of a reasonable royalty.
A patentee seeking damages for the sale of a multicomponent (or multifunction) product must typically take several steps to ensure that any alleged damages have been properly apportioned to exclude the value provided by the product’s noninfringing aspects. First, the royalty base has to be determined on the smallest saleable patent practicing unit. Second, that reduced royalty base needs to be apportioned to reflect only the value attributable to the patented technology. A royalty based on the value of the entire multicomponent product will likely yield much higher damages, but such a royalty can be recovered only if the plaintiff satisfies the very strict requirements of the EMVR.
As TV shows and other copyrighted content are increasingly made available on globally accessible websites, questions regarding the territorial reach of copyright law are also on the rise. The first quarter of 2018 has already produced a couple of interesting cases relating to extraterritorial performances and geoblocking. READ MORE
On Thursday, February 8, the Federal Circuit decided Berkheimer v. HP Inc. It ruled, for the first time, that a district court had engaged in improper fact finding when deciding a patent claimed ineligible subject matter under the Supreme Court’s Alice Corp. v. CLS Bank decision a motion for summary judgment. This case has the potential to impact on the common strategy of seeking early dismissals under 35 U.S.C. § 101 and Alice. READ MORE
On Friday, the Federal Circuit decided Arctic Cat Inc. v. Bombardier Recreational Products, Inc. and clarified the burden of proof for the failure to mark defense. Under 35 U.S.C. § 287, a patentee’s pre-suit damages can be limited if the patentee (or its licensee) didn’t mark previously sold “patented articles.” Parties often dispute whether an unmarked product is a “patented article” that actually practices the claim limitations of a patent. The Arctic Cat decision holds that once the alleged infringer identifies the unmarked products, it becomes the patentee’s burden to prove that those unmarked products aren’t “patented articles.” READ MORE
The Federal Circuit’s decision last week to invalidate all of the claims of two audio and video streaming patents as claiming no more than an abstract concept exemplifies a new type of analysis appearing more often in its subject matter eligibility decisions involving computer-implemented functionality. READ MORE
Magistrate Judge Roy Payne’s recent Report and Recommendation in Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. shines a spotlight on potential inconsistencies in Fed. Cir. precedent regarding patent marking, and provides some valuable insight to plaintiffs and defendants who may be involved in litigation over a patent’s method claims. READ MORE