On April 8, 2015, Adidas sued Marc Jacobs in the United States District Court of Oregon for trademark infringement because Marc Jacobs incorporated a four stripe pattern on sweaters in its autumn/winter 2014 collection. Adidas’ “Three-Stripe Mark” is obviously well known. Comparing both images, Marc Jacobs has a tall task defending its use.
Adidas’ mark: Marc Jacobs’ mark:
Facebook has been ordered by a Texas jury to pay $500 million as a result of a lawsuit by gaming company ZeniMax for trade secret misappropriation. ZeniMax claims that Oculus co-founder Palmer Luckey violated an NDA agreement in order to build early prototypes of its Oculus Rift headset. ZeniMax was seeking as much as $6 billion in damages. A few years ago, Mark Zuckerberg, chief executive of Facebook, bought virtual reality start-up Oculus VR for more than $2 billion. Shortly thereafter, ZeniMax Media sued Oculus VR including Facebook as one of the defendants. Zenimax also claimed for copyright and trademark infringement by Facebook.
ZeniMax also claims that one “Carmack [(a ZeniMax employee)] secretly and illegally copied thousands of documents containing Zenimax’s intellectual property from his computer at Zenimax to a USB storage device, which he wrongfully took with him to Oculus.” “We are pleased that the jury in our case in the US District Court in Dallas has awarded Zenimax $500m for the defendants’ unlawful infringement of our copyrights and trademarks,” said Zenimax CEO Robert Altman. In part, the company lost because Palmer Luckey, violated an NDA agreement between ZeniMax and Oculus.
Commentary – We at Nwamu, PC have heard comments from some VCs that NDAs have no value; we strongly disagree with this position.
We welcome our new client, H.S. International Corporation, a privately held medical device manufacturing and distribution company located in Concord, California. The company has been in business for over 30 years and continues to be a leader in the manufacture of micro-surgical instruments for anterior and posterior procedures. An example video of use of such micro-surgical instruments for eye surgery can be found here: http://eyetube.net/video/elude/. For more information on H.S.I. Corporation, see http://www.hsisurgical.com/index.php.
The AIPPI annual conference convened at beautiful Rio De Janiero, BRAZIL (see pictures). AIPPI is the world’s leading International Organization dedicated to the development and improvement of laws for the protection of intellectual property.
AIPPI enables professionals at Nwamu, PC to engage with other international patent and trademark professionals worldwide to ensure that the best professionals handle our work. AIPPI also helps us stay ahead of developments in patent and trademark law.
An applicant has 12 months following the filing of a provisional patent application to either convert or file a non-provisional claiming the benefit of the earlier-filed provisional patent application. After 12 months, the provisional application automatically dies or lapses. No, not quite. Under the new Patent Law Treaty provisions, the right of priority can be restored within two months of the 12-month lapse date. Great, but it is never good practice to let a provisional lapse.
Evidence that a patented product is commercially successful can be very important even where other factors say that the patented claims are obvious. In a recent decision by the PTAB, the Board said that the patented product’s commercial success was strong because sales of the patented product with flared tolerance rings for bearing assembles surpassed other tolerance ring designs without flared rings within three years of the patented product’s introduction. This finding outweighed a finding of obviousness based on three other factors. Intri–Plex Technologies, Inc. and Mmi Holdings, Ltd., v. Saint–Gobain Performance Plastics Rencol Limited, IPR2014–00309 (Paper 83)
Abandoning a patent or trademark application during prosecution may require further analyses beyond cost-saving benefits. One client decided to abandon an application during prosecution. After conducting an analysis, we were able to convince the client to continue prosecution. Upon issuance, we sold the patent for a generous amount, earning the client a nice return on patent prosecution costs.
Responding to Office Actions from the patent office is neither art nor science and depends on the attorney involved. Approaches are varied and can range from conducting interviews, amending the claims to arguing without amendment etc. In my experience, it is always best to avoid the combative applicant approach. Whether preparing a response or conducting an interview, a non-combative approach will generate a quicker notice of allowance for that patent or trademark application.
Have a claim for priority? Under the old regime, a claim for priority can be presented in the specification. Not so anymore. Under the AIA, the claim for priority must be presented in the Applicant Data Sheet.