IP Litigator articles from July 2006

IP Litigator archives from July 2006

What did you know and when did you know it? A look at the law of notice for willful infringement.
July 1, 2006... To willfully infringe a patent, one must have actual notice of the patent and act in disregard of the patent. (1) "[Once an] infringer has actual notice of another's patent rights, he has an affirmative duty to exercise due care to determine...

Improving the quality and value of the university patent portfolio.
July 1, 2006... Intellectual property (IP) management can be of significant financial and strategic importance to a university involved in technological research, because it may derive significant financial and intangible benefits from an effectively managed...

Reasonable prefiling investigation and the test for rule 11: the "I would have if I could have" test.
July 1, 2006... Armed with a patent and suspicion of infringement, a patentee must form a reasonable basis for bringing an infringement action. While appearing simple, Rule 11 of the Federal Rules of Civil Procedure imposes a threshold prefiling...

Obtaining evidence in Germany for US patent litigation.
July 1, 2006... Nearly half of all United States utility patents have a foreign origin. Germany is the second largest country of origin, after Japan, for US patents? The necessity of collecting evidence from German sources, thus, is a commonly occurring...

Patent opinion letters: privilege waivers after Knorr.
July 1, 2006... Knorr-Bremse: The Federal Circuit Changes the Role of Opinions of Counsel in Patent Cases In September 2004, the en banc opinion of the Federal Circuit Court in Knorr-Bremse Systeme Fuer Nutzfahrzeuge Gmbh v. Dana Corp., (1) held that...

Procedural appellate traps for the unwary.
July 1, 2006... Practice before the court of appeals for the Federal Circuit is fairly straightforward and easily negotiable by those reasonably familiar with the court's rules. That being said, the road of appellate practice before the Federal Circuit is...

Gone with the wind? - Recent developments regarding damages for patent infringement.(Germany)
July 1, 2006... Patentees are allowed to choose between three different methods to assess damages for patent infringement under German law: (1) he or she may claim to be restored to the situation that would have existed if the infringement had not been...

Brazilian National Agency for Sanitary Surveillance (ANVISA) strikes again.
July 1, 2006... As I mentioned three columns ago, due to an amendment to the Brazilian Industrial Property Law, it became necessary to obtain the consent of the National Agency for Sanitary Surveillance (ANVISA) in order for a patent application to be...

Extraterritorial infringement: liability under section 271(f).
July 1, 2006... Information now can be sent around the globe with the click of a button, easing previous barriers to transnational business and allowing more and more companies to expand outside the United States. Patent holders of the United States have...

Initial interest trademark confusion: a need for clarity.(part 1)
July 1, 2006... A finding of a likelihood that an appreciable number of consumers will be confused as to source, sponsorship or affiliation is the central focus of trademark infringement claims--Professor McCarthy refers to it as the "keystone" of...

Initial interest confusion - from infancy to the Internet.
July 1, 2006... The Second Circuit is credited with developing the doctrine of initial interest confusion in a series of cases dealing with competing piano companies [Grotian, Helfferich, Schulz v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975)], and oil...

Limiting judicial review of arbitration awards.
July 1, 2006... May parties to an arbitration agreement contract to eliminate access to judicial review of a district court's order confirming or vacating an arbitrator's award? With specific enough contract language, the parties may be able to limit...

China implements effective IP enforcement for 2008 Olympic game marks.(intellectual property)
July 1, 2006... China's reputation as a source of counterfeit goods has long appeared intractable. Be it due to insufficient laws, an unwillingness to enforce existing laws, or an inability to curb such widespread practices, the production and sale of...