Williams Mullen's Trending Now - An IP Podcast - Intellectual Contracts
Protecting IP Through Employment Law
Precedential and Key Federal Circuit Opinions - 1. BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more
For nearly all companies, but particularly companies in the technology sector, the intellectual property ("IP") they create are the crown jewels of the business. Without the IP, the company has nothing to sell....more
Precedential and Key Federal Circuit Opinions - LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC [OPINION] (2021-2348, 5/21/24) Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark - Stoll,...more
An Illinois federal district court granted partial summary judgment in a trademark dispute against Ledo Pizza System, Inc. (“System”) and Ledo Pizza Carryouts, Ltd. (“Carryouts”), a franchisor of pizza restaurants...more
In a split opinion issued Tuesday, and based on language in an assignment clause of a contract, the Federal Circuit overturned a district court's summary judgment that Core Optical lacked standing to sue Nokia, Cisco, and...more
The US Court of Appeals for the Federal Circuit reversed a district court’s decision in a patent dispute for a lack of subject matter jurisdiction because the plaintiff lacked constitutional and statutory standing....more
Update: The USPTO has now announced that February 5th, 2024 will now be the date for the Assignment Center to replace the Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS)....more
As any good trademark practitioner knows, a “naked” consent agreement is one in which one party provides consent to the registration of another party’s mark without an explanation of why confusion is unlikely, or what the...more
Thank you for reading the December 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the USPTO's new guidance on "clothed" consent agreements, three ways to protect your identify and avoid...more
On September 15, 2023, New York Governor Kathy Hochul signed a law that made dramatic changes to the enforceability of invention assignment provisions in employment agreements and likely in related agreements including offer...more
In today's extremely rich material environment, many consumers choose goods not only based on simple cost performance to decide, but are willing to pay for creativity and brand value recognition. Consumer choice trends...more
On May 24, 2023, Governor Walz signed off on Minnesota legislation prohibiting employers from entering into non-compete agreements with employees or independent contractors. How will this new law affect your business? What...more
Whether you are a startup or an acquiring company, there are several steps you should consider ahead of an exit to protect your deal and avoid issues later on. In this episode, Salt Lake City partners Spencer Glende and Scott...more
An assignment or transfer (right) clause in a technology contract can be crucial. The clause must be drafted accurately while also ensuring that any allowances or restrictions on assignment or transfer apply....more
For the high-growth startups we represent (and into which our venture capital clients invest), intellectual property (IP) is typically the core asset driving the company’s value. Ensuring that the company’s IP is properly...more
Since Halloween candy is already in stores (why…?), we‘re here to tell you some trademark tales that are sure to make you shiver – if you care about your pocketbook, that is. We’ve encountered these spooky situations – with...more
Last month the District Court for the Central District of California granted the defendant’s motion for summary judgment in the case San Diego Gulls Hockey Club, LLC v ECHL, Inc.. The league’s win resolves the league’s...more
The minor hockey league ECHL iced a win over the San Diego Gulls hockey club earlier this month when a judge in the Central District of California granted ECHL’s motion for summary judgment dismissing all of the Gulls’...more
Precedential Federal Circuit Opinions - QUALCOMM INCORPORATED v. INTEL CORPORATION [OPINION] (2020-1589, 2020-1590, 2020-1591, 2020-1592, 2020-1593, 2020-1594, 7/27/21) (Moore, Reyna, Stoll) - Moore, J. Vacating final...more
IN RE: SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., LG ELECTRONICS USA, INC. [OPINION] (2021-139, 2021-140, 6/30/2021) (Lourie, Dyk, Reyna) - Dyk, J. Granting the writs of...more
Minerva Surgical, Inc. v. Hologic, Inc., No. 20-440: In the late 1990s, Csaba Truckai invented and patented a device to treat abnormal uterine bleeding. Truckai assigned his interest to his company, Novacept, which in turn...more
296-1. Federal Circuit Finds Pre-Invention Ideas Not Covered Under Employment IP Assignment Agreement - The United States Court of Appeals for the Federal Circuit recently affirmed a ruling by the United States...more
Bio-Rad Laboratories, Inc. v. International Trade Commission, Appeal No. 2020-1785 (Fed. Cir. Apr. 29, 2021) - The Federal Circuit’s only precedential patent decision this week comes on appeal from the International Trade...more
In 2017, we wrote about some of our favorite strategies for updating the ownership of global trademark portfolios. As we continue to support our clients during the pandemic, we’ve developed new strategies for documenting...more
On the latest episode of Williams Mullen's Trending Now - An IP Podcast, Amy Pruett is joined by Janet Cho and Ed White to discuss approaches to IP-related agreements during a pandemic....more