Nov 6, 2017

U.S. News – Best Lawyers Recognizes SGR’s IP Practices Among Best in the US, Both Nationally and Regionally

Various intellectual property (IP) practice groups of Smith, Gambrell & Russell, LLP (SGR) have once again been named among the best IP practices at law firms in the United States for 2018, both nationally and regionally, by U.S. News – Best Lawyers®.  Specifically, SGR’s Patent Law, Trademark Law, Biotechnology Law and IP Litigation practices were ranked among the top tiers on the… Read more

Oct 17, 2017

SGR IP Attorneys Participate in Charity Golf Tournament

CIP CUP Golf Tournament

On October 17, 2017, SGR Intellectual Property (IP) attorneys Greg Kirsch, Stephanie Scruggs, Matt Warenzak and Courtney Thornton played in the CIP CUP charity golf tournament at St. Ives Country Club, in Johns Creek, Georgia.  SGR was a co-sponsor of this event, which raised money for the Georgia PATENTS program, and the Georgia State University… Read more

Oct 5, 2017

Federal Judge Calls Arguments “Sleazy” But Grants Motion Striking Inequitable Conduct Defense Anyway

Court Appeal 2

In a battle between medical device makers, Nevro Corp. v. Boston Scientific Corp., 16cv6830-VC (N.D.Ca.), Plaintiff Nevro moved to strike Boston Scientific’s affirmative defense of Inequitable Conduct.  The defense was based on an allegation that Nevro failed to inform the patent examiner that he had an incorrect understanding of the prior art.  In its motion,… Read more

Sep 21, 2017

SGR Client InfoGation LLC Survives Google IPR Challenge

Patents File Folder

Smith Gambrell & Russell (SGR) attorneys Michael Makuch and  Ryan Varnum successfully defended the validity of a patent covering turn by turn navigation for our client, InfoGation LLC. On September 11, 2017, the United States Patent and Trademark Office (PTO) declined to institute an Inter Partes Review (IPR) filed by Google.  The PTO agreed with… Read more

Sep 14, 2017

Industry Training with USPTO Highlights Trademark Challenges for Fashion

fashion industry clothes rack

SGR Partner Scott Woldow is a member of INTA’s Government Officials Training Committee’s USPTO Subcommittee. Each year, INTA’s GOT Committee collaborates with the U.S. Intellectual Property Office (USPTO) on an Industry Training presentation for the USPTO’s examining attorneys and staff. The industry trainings provide a forum whereby an industry sector and an IP office come together to share… Read more

Aug 31, 2017

Another UDRP Success for Jim Bikoff, Holly Lance and Darlene Tzou

Domain Name www.

Jim Bikoff, Holly Lance and Darlene Tzou successfully defended client Domain Asset Holdings, a premium domain names reseller, in a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding before the World Intellectual Property Organization involving the domain name SHESAFE.COM.  The UDRP Panel found that Complainant Shesafe Pty Ltd, an Australian company providing ride sharing services… Read more

Aug 15, 2017

No Right to a Jury Trial for Attorney Fee Awards Under 35 U.S. Code § 285

Patent Law Book

Section 285 of the Patent Act provides: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”  But, does the Seventh Amendment require a jury trial to decide the facts forming the basis of an award of attorney’s fees under § 285 of the Patent Act?  In AIA America v. Avid… Read more

Aug 8, 2017

Increasing Trademark Scams Discussed at USPTO Forum

scribble of the word "scam"

Last week, the USPTO and TPAC (the Trademark Public Advisory Committee) hosted a public roundtable entitled “Fraudulent Solicitations to Trademark Owners.”  The roundtable was chaired by Mary Denison, Commissioner for Trademarks; opening remarks were provided by Joseph Matal (currently performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director… Read more

Jul 26, 2017

The Use of Sovereign Immunity as a Defense in AIA Proceedings

patent law

Recent decisions by the Patent Trial and Appeal Board (PTAB) have given state entities a green light to use sovereign immunity as a defense in Inter Parties Review (IPR) proceedings in certain scenarios.  The first decision from the PTAB, which came earlier this year, resulted in three IPR petitions filed by Covidien LP being dismissed… Read more

Jul 19, 2017

Willful Patent Infringement and Enhanced Damages


Stryker and Zimmer are competitors selling devices which are a combination spray gun and suction tube for cleaning tissue during surgery. In 2010, Stryker sued Zimmer for patent infringement and a jury found that Zimmer willful infringed Stryker’s patents.  The district court trebled damages and awarded $228 million based on evidence that Zimmer copied Stryker’s… Read more