Are You Maximizing Damages for Your Client?

By Adam J. Smith, Assoc. Atty, Standley Law Group LLP

Understanding Pre-Issuance Damages Under 35 U.S.C. §154(d) in View of Rosebud LMS Inc. v. Adobe Systems, Inc.

The Federal Circuit recently ruled on the relatively little-used provision of pre-issuance damages under 35 U.S.C. §154(d). This rarely asserted and rarely granted "extraordinary remedy" gives patent applicants the right to collect a reasonably royalty based on infringement that occurred following the publication of a patent application where the accused infringer is provided "actual notice" of the published patent application, and the asserted claims remain "substantially identical" between publication and issuance.1

35 U.S.C. §154(d) was passed as part of the Domestic Publication of Foreign Filed Patent Applications Act of 1999. As it generally takes several years for claims to accrue under a new law and several more years for those claims to progress through the court system, the Federal Circuit has had few opportunities to opine on §154(d) until recently.

Read more ...

Batmobile - You're a Character!

By Stephen L. Grant, Sr. Atty, Standley Law Group LLP

"In our well-ordered society, protection of private property is essential." This is how a panel of the Ninth Circuit started its conclusion in DC Comics v. Mark Towle (Case 13-55484, September 23, 2015), quoting a statement by Batman to his trusty sidekick Robin in an episode of the Batman television show. We certainly strive to keep our society "well-ordered." As a result, Mark Towle’s replica Batmobiles, sold at about $90,000 each, are infringements of DC Comics’ copyright in the Batman comic books.

Does it make sense to consider the Batmobile a "character"? I think that the Court’s decision in affirming a summary judgement at the district court is well-reasoned and correct. In deciding the case, however, the Court reveals once again that copyright law, while appearing quite rudimentary and logical, can occasionally exhibit some unexpected depth.

Read more ...

Local High School Logo an Issue for University of Arizona

Senior attorney Stephen Grant was recently asked to comment on a recent trademark dispute involving the University of Arizona and nearby Jonathan Alder High School.

Read more ...

Ohio lawmakers take a stab at patent reform

By Beverly A. Marsh, Partner, Standley Law Group LLP

In an effort to address patent reform at the state level, the 130th General Assembly of the State of Ohio has introduced House Bill No. 573. 1 The asserted purpose of Bill 573 is to: 1) prohibit "bad faith" assertions of patent infringement, 2) allow tort actions to be brought against those making bad faith assertions of patent infringement in the Ohio Courts of Common Pleas, and 3) allow the Attorney General to investigate and bring suit against those it believes are making bad faith assertions of patent infringement. Patent holders who are unsuccessful in defending against such a suit may be required to pay the other side’s costs and attorney’s fees, compensatory damages, and possible trebling of costs, fees, and damages. This bill has no doubt been introduced to lessen the harsh impact that a growing number of patent infringement suits have caused Ohio businesses.

Read more ...

Supreme Court Decision in Hana Financial, Inc. v. Hana Bank

By Beverly A. Marsh, Partner, Standley Law Group LLP

Last month the Supreme Court issued its first trademark decision for 2015. In Hana Financial, Inc. v. Hana Bank, No. 13-1211, in an opinion delivered by Justice Sotomayor, the Court unanimously held that the determination of whether two trademarks may be "tacked" for purposes of determining priority is a question of fact, not law, and therefore is a proper question for the jury.

Read more ...