Intellectual Property

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Jonathan Engler discuss how the US International Trade Commission (ITC) evaluates standard essential patents (SEPs) that are litigated in this forum.

Advice that may have served House of Pain in their 1992 hit song, “Jump Around,” to “bring a shotgun” to battle likely does not translate well to plaintiffs in federal litigation contemplating bringing a “shotgun” pleading to court. In this article we explore types of shotgun pleadings identified by courts and outline potential responses to a shotgun pleading.

Filing a pharmaceutical patent application after the start of Phase II clinical trials can maximize the patent’s value and exclusivity period. In an article also published in IAM magazine, Mintz Member Alex Trimble talks about delayed filing options and how to avoid invalidation of the patent based on its “public use” during the clinical trial or published information about the trial.

A frequent issue seen within patent litigation is whether serving a complaint satisfies the knowledge requirement for post-complaint indirect infringement. This issue affects the amount of, if any, damages a patent owner can obtain.

An invention is not patentable if it was described in, or obvious in view of, an earlier printed publication. See 35 U.S.C. 102(a)(1). This blog post addresses how to overcome an anticipation or obviousness rejection where an inventor is the author or otherwise the source of subject matter in the publication cited as prior art

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Karen Won discuss the recent Supreme Court decision in Jack Daniels v. VIP Products addressing whether the “Bad Spaniels” dog chew toy violates the Lanham Act for trademark infringement.

In Jack Daniels Properties, Inc. v. VIP Products LLC, (slip. op. No. 22-148, June 8, 2023), the United States Supreme Court reversed the Ninth Circuit, ruling that a “Bad Spaniels” dog toy designed to look like a Jack Daniels liquor bottle did not avoid trademark infringement merely because it was a parody.

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Drew DeVoogd and Michael Graif discuss the recent Supreme Court decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, which held that Warhol’s Orange Prince silkscreen portrait did not constitute fair use of a copyrighted photograph of the music legend.

As metaverse-related technology and branding initiatives continue to grow, innovators in the space may need to pursue IP protection. Mintz Member Frank Gerratana and Associate Amritaa Ganguly discuss the use of patents, trademarks, and copyrights to protect innovations and creative activity associated with this new virtual world.

In this latest episode of EXCLUSIVE RIGHTS, Members Daniel Weinger and Frank Gerratana, along with Associate Greg Penoyer, explore how high-tech start-ups can set themselves up for IP success. The podcast covers the dos and don’ts related to founding documents, provisional patent applications and strategy, trademarks, open source considerations, and more.

Generative artificial intelligence creates content and work efficiencies but also comes with legal pitfalls. Mintz Venture Capital & Emerging Companies Practice Co-chair Jeremy Glaser and Associate Lorena Niebla look at the technology's potential uses as well as risks related to data privacy, intellectual property, and more.

Successful defense of trade secrets in litigation begins with evaluating valuable confidential information and steps taken to safeguard it before any disputes arise. Trade secret asset management allows companies to effectively frame misappropriation or theft claims and advance arguments at every stage of a trade secrets dispute.

On February 24, 2023, the U.S. Court of Appeals for the Federal Circuit, in Jazz Pharmaceuticals, Inc., v. Avadel CNS Pharmaceuticals, LLC, Case No. 23-1186, affirmed a decision from the District Court of Delaware directing Jazz Pharmaceuticals, Inc. (“Jazz”) to delist U.S. Patent No. 8,731,963 (the “’963 patent”) from the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (the “Orange Book”). The district court held, and the Federal Circuit affirmed, that the ’963 patent, which covers Risk Evaluation and Mitigation Strategies (“REMS”) for the narcolepsy drug Xyrem®, failed to claim a drug or method of use, and was thus improperly listed.

Starting a high-tech company is a difficult, exhausting, and thrilling endeavor – one in which founders will face seemingly endless challenges, deadlines, and make or break decisions. From a venture’s inception, founders face numerous decisions that if not thoughtfully considered can result in significant legal and financial risk.

Artificial Intelligence (AI) is now at our fingertips.  No longer a concept hidden behind the walls of Big Tech and academia, AI programs are now available and accessible to everyone.  Generative AI tools like ChatGPT have made headlines for its human-like conversation and writing, and Lensa has done the same for its ability to create original works of art. 

On January 9, 2023, the U.S. Court of Appeals for the Federal Circuit in In re Stingray IP Solutions, LLC, No. 23-102 granted a writ of mandamus, vacating a decision of the Eastern District Court of Texas which had transferred a patent infringement suit filed against foreign defendants to the Central District of California based on defendants’ post-suit consent to jurisdiction there.