Intellectual Property Archives

Oct 17, 2017

SGR IP Attorneys Participate in Charity Golf Tournament

CIP CUP Golf Tournament benefitting Georgia PATENTS

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 (GSU) Foundation. Georgia PATENTS is a program operated by the Georgia Lawyers for the Arts, with funding and assistance from the US Patent and Trademark Office (USPTO). It provides pro bono legal assistance in preparing and filing patent applications to under-served solo inventors, non-profits and… Read more

Oct 5, 2017

Federal Judge Grants Motion Striking Inequitable Conduct Defense

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, Nevro argued that no such duty exists, but at the hearing on the motion, Judge Chhabria called that argument “sleazy.” Patent prosecutors had reason to be alarmed since it appeared the judge was taking the position that the duty of disclosure included not only the… Read more

Sep 21, 2017

SGR Client InfoGation LLC Survives Google IPR Challenge

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 SGR’s arguments that Google’s IPR Petition failed to present sufficient grounds for instituting a review. The patent in question, U.S. 6,292,743, is being asserted by an SGR patent litigation team against handset makers HTC, ZTE, and Huawei in the Southern District of California, based on… Read more

Sep 14, 2017

Industry Training with USPTO Highlights Trademark Challenges for Fashion

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 information on the latest trends within the industry that may affect the examination of trademark applications. The trainings allow examiners to hear about common trademark challenges facing in-house counsel and the outside bar. The trainings establish a direct line of communication between the examiners and… Read more

Aug 31, 2017

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

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 for women and children, failed to establish that Domain Asset Holdings, operating through its affiliate DomainMarket.com, had registered and was using the domain name SHESAFE.COM in bad faith. The UDRP Panel held that DomainMarket.com’s registration of the SheSafe.com domain name prior to the commencement of Complainant… Read more

Aug 15, 2017

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

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 Radiopharma (Fed. Cir. 2017), the Federal Circuit has ruled that the factual basis for an attorney fee award need not be decided by a jury — affirming a $4 million fee award that followed a jury trial on the sole issue of whether the plaintiff… Read more

Aug 8, 2017

Increasing Trademark Scams Discussed at USPTO Forum

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 of the USPTO). Members of the public were invited to attend and participate in the roundtable. Speakers included both outside counsel and corporate practitioners and representatives of other organizations, as well as Darlene S. Klinksieck from the Washington, DC office of Smith, Gambrell & Russell,… Read more

Jul 26, 2017

The Use of Sovereign Immunity as a Defense in AIA Proceedings

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 before institution based on sovereign immunity of the patent holder University of Florida Research Foundation Inc. (UFRF) (IPR2016-01274, -01275, and -01276). The PTAB first found that sovereign immunity was available as a defense to IPRs. The Board then concluded that, because UFRF was an arm… 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 products and accepted the risk of legal consequences given its high-risk/high reward competition strategy. On appeal, the Federal Circuit affirmed the jury’s finding of infringement but, applying its 2007 Seagate (497 F.3d 1360 (2007)) test, vacated the enhanced damages award because Zimmer had asserted “reasonable… Read more

Jul 11, 2017

USPTO Issues New Guidance to Examiners in Light of Tam Ruling

On June 26, 2017, the U.S. Patent and Trademark Office (USPTO) issued Examination Guide 1-17 to address the Supreme Court’s decision Matal v. Tam, 582 U.S. ___ (2017), which held that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), constitutes viewpoint discrimination and is facially unconstitutional under the First Amendment’s Free Speech Clause. Starting in March 2016, the USPTO began suspending applications for marks subject to refusal under the disparagement and scandalousness provisions of Section 2(a) pending decisions on the constitutionality of these provisions in Tam (disparagement) and In re Brunetti, No. 15-1109 (Fed…. Read more