2016 March

Woodard Attorneys Selected IP Stars for 2016

March 31, 2016

Woodard Emhardt Moriarty McNett & Henry LLP is pleased to announce that partners Spiro Bereveskos, Daniel J. Lueders, and Charles P. Schmal have been selected to appear in the 2016 edition of IP Stars from Managing Intellectual Property (MIP) magazine. IP Stars identifies and analyzes the leading IP firms and attorneys in all 50 US states and Washington DC to provide deeper insights to the complex US IP legal market for in-house counsel at Fortune 500 companies. Professionals selected for IP Stars are highly-regarded by their peers for the work they do both in and outside their organizations.


New Rules May Alter Patent Litigation

March 31, 2016

On December 1, 2015, new amendment to the Federal Rules of Civil Procedure went into effect. For intellectual property practice, the most significant change may be the elimination of the “Forms” section of the rules and Rule 84. Previously, pleadings similar to Form 18 for direct patent infringement were sufficient to satisfy the pleading standards in federal court. Now, based on previous decisions of the Federal Circuit regarding indirect infringement, commentators suggest that patent complaints will need to provide more specific factual information in order to survive early motion practice. The Federal Circuit has not yet addressed this question, but early district court decisions appear to be applying the amendments inconsistently. Some decisions have ruled that more specific fact-based allegations are required, while others have noted that the Advisory Committee comments state that the amendments were not intended to alter existing pleading standards and therefore continue to use Form 18 as the benchmark.

Although an initial complaint is one of the first steps in a patent lawsuit, it has significant procedural and substantive consequences depending on how it is drafted. Pending bills in the current Congress, the Innovation Act (H.R. 9) and the PATENT Act (S. 1137), would change patent infringement pleading requirements by amending the patent statutes in Title 35 of the United States Code.

Additional changes to the Rules relate to the scope of discovery (Rule 26), timing and objections relating to requests for production or inspection (Rule 34), and sanctions relating to electronically-stored information or “ESI” (Rule 37). Download the presentation from here.


January 2016 Trademark Prosecution Lunch Update

March 6, 2016

The January 2016 trademark section of the prosecution lunch featured updates concerning changes to the NICE classifications, recent updates to the Trademark Manual of Examination Procedure (TMEP), and the December 2015 United States Patent and Trademark Office (USPTO) shutdown. In addition, there is discussion of the recent B&B Hardware case that concerns the preclusive effect of an opposition as to priority of use. There is also discussion of the recent non-precedential Tekni-Plex, Inc. v. Selig Sealing Products, Inc. case which concerns the requirements for showing a bona fide intent to use a trademark. As noted recently in the In re Apple, Inc. (nonpresidential) case, the USPTO refused to register the IPOD mark for user manuals because it was not used for “goods in trade.” A case concerning the evidence required to show proof of use of the mark in interstate commerce is also highlighted. A copy of the presentation can be downloaded here.