Publications

May 31, 2023

Welcoming the 2023 Summer Associates

Irwin IP is thrilled to announce and extend a heartfelt welcome to the 2023 summer associates. It’s an exciting time as they join us with impressive credentials and a passion for intellectual property law. Throughout the summer, our associates will collaborate with experienced attorneys, engage in real-world projects, and…

May 30, 2023

Sanctions for Attorney Misconduct at a Dep: Fact or Fiction?

Few litigation events cause tempers to flare as surely as depositions, but only once in a blue moon, it seems, will a Court take action against an attorney for violating the rules. However, the planets aligned over the District of Colorado on May 5 when counsel for a defendant…

May 24, 2023

Welcoming Andrew Gordon-Seifert

Irwin IP is pleased to welcome our newest associate attorney, Andrew Gordon-Seifert. With his impressive background in intellectual property litigation, Andrew brings a wealth of experience and a proven track record of success. Throughout his career, Andrew has counseled and represented clients across various industries, ranging from automotive manufacturers…

May 15, 2023

Amended Complaint Gives Plaintiff a Do-Over, Not the Defendant

While it is accepted that filing an amended complaint supersedes the original complaint rendering it without legal effect, a defendant may waive certain defenses by not raising them as to the original complaint. The District Court of Nevada is the latest court to find that a defendant may assert…

May 12, 2023

Federal Circuit Cooks District Court’s Decision to Add Bacon-Prep Inventor

This week, the Federal Circuit reversed the United States District Court for the District of Delaware’s (“District Court”) decision to add David Howard as a joint inventor on Hormel Food Corporation’s (“Hormel”) U.S. Patent No. 9,980,498 (“the ’498 patent”). Despite the District Court finding the opposite, the Federal Circuit…

May 10, 2023

Irwin IP Gets Musician Client His Rights and Royalties Back

Today, much of the revenue a musician can generate from their music happens automatically through registrations with the different performing rights organizations. Unfortunately, however, there are many unscrupulous individuals who have taken advantage of their knowledge of this complicated system, and the average artist’s lack of knowledge of the…

May 9, 2023

Congratulating Incoming Associate, Emad Mahou

Congratulations to incoming Irwin IP associate, Emad Mahou, for his remarkable work at DePaul University’s Asylum and Immigration Law Clinic. Emad’s dedication and compassion in assisting asylum seekers in Chicago is truly inspiring. His contributions have made a significant impact helping vulnerable individuals find safety and security in the…

May 8, 2023

Automating Without Innovating: Patents Held Invalid

In an appeal before the Federal Circuit, plaintiff People.ai argued to no avail that the Northern District of California erred in its finding of invalidity for a set of business-analytics software patents under 35 U.S.C. § 101. The plaintiff appealed, claiming that its patents did not contain patent ineligible…

May 5, 2023

Publishers Take a Hatchet to Free Digital Libraries

On March 24, 2023, the Southern District of New York held that the Internet Archive (“IA”)’s digitization and lending online of the Hatchette Book Group (“Publishers”)’s copyrighted physical books infringed Publishers’ copyrights and was not a fair use. IA is a non-profit organization that allows patrons to check out…

April 27, 2023

Federal Circuit Takes a Bite Out of Apple’s Trademark Application

On April 4, 2023, in a case of first impression, the Federal Circuit reversed the Trademark Trial and Appeal Board (TTAB) and held that a trademark applicant cannot use the priority date of a prior application when the goods and services are not listed in the prior application. Bertini—a…

April 7, 2023

Spy Scheme Costs Plaintiff Its Patent Infringement Claims

Clever covert spy activities during active litigation may backfire. Recently, Magistrate Judge Kathleen L. DeSoto recommended dismissing all of Site 2020’s patent infringement claims against Superior Traffic with prejudice because Site 2020 acted in bad faith and “engaged deliberately in deceptive practices that undermine the integrity of judicial proceedings.”…

March 31, 2023

Infringers Beware: Copyright Damages Not Limited to Three Years

The Eleventh Circuit joins the Ninth Circuit where, despite a claim of copyright infringement having a three-year statute of limitation, a plaintiff can recover damages more than three years prior to the suit. Recently, the Eleventh Circuit weighed in on the current circuit split finding neither the Supreme Court’s…

March 28, 2023

CAFC Holds Priority Favors True Trailblazers, Not Maze-Like Paths Through a Forest of Prior Applications

The Court of Appeals for the Federal Circuit (“CAFC”) recently upheld a decision of the Patent Trial and Appeal Board (“PTAB”) that found some claims of U.S. Patent 8,815,830 (“the ’830 patent”) unpatentable as anticipated. The ’830 patent’s owner, the Regents of the University of Minnesota (“Minnesota”), argued before…

March 13, 2023

American Purchasers Poke Holes in Swiss Cheese Certification

This week, the Fourth Circuit affirmed the United States Trademark Trial and Appeal Board’s (“TTAB”) and subsequent Eastern District of Virginia’s (“District Court”) summary judgment finding that “GRUYERE” could not be registered as a certification mark because the term had become generic. Specifically, “GRUYERE” is generic because the “relevant…

March 6, 2023

String ‘Em Up: Light Patentee OK to Notify Others of Patent Suit

Sticks and stones may break your bones, but don’t complain to the Court of Appeals for the Federal Circuit (“CAFC”) if a patentee calls you an infringer, claims you copied, or threatens to sue your customers. Holding speech restrictions granted in a preliminary injunction were an abuse of discretion,…

February 27, 2023

No Handling Necessary: Industry Demo Was A Public Use

Be careful of showing your claimed inventions at tradeshows. On February 15, 2023, the Federal Circuit (“CAFC”) affirmed a summary judgment ruling that, by merely showcasing an embodying device at an industry event (the “Event”), Minerva Surgical, Inc. (“Minerva”) had engaged in an invalidating public use more than one…

February 24, 2023

Irwin IP summer associates at summit presented by the Illinois Supreme Court on Access to Justice

Two of Irwin IP’s 2022 Summer Associates, who will be joining as associates in the fall, Emad Mahou and Suet Lee, were invited to represent their law school in a summit presented by the Illinois Supreme Court on Access to Justice. They were privileged to meet Illinois Supreme Court…

February 21, 2023

Maintaining § 101 “Till the Cows Come Home”

In a patent dispute between plaintiffs ChromaDex and Dartmouth College and defendant Elysium Health over spilled milk, the Federal Circuit affirmed the Delaware District Court’s grant of summary judgment in favor of the Elysium Health, based the subject matter of the asserted patent being patent-ineligible under 35 U.S.C. §…

February 14, 2023

Continually Shifting Theories Costs Patentee Attorney’s Fees

On February 3, 2023, the Southern District of California found a patent infringement case exceptional under 35 U.S.C. § 285 and awarded the defendant, Cerner Corporation (“Cerner”), its attorney’s fees after the plaintiff, CliniComp International, Inc. (“CliniComp”), pursued ever-shifting infringement theories even after Cerner served it with an Octane…

February 6, 2023

“Dream Syndicate” Attempts at Class Certification is Just a Dream

On January 27, 2023, a district court judge refused to grant a group of musicians class certifications in their copyright infringement efforts against their former record label, Universal Music Group (UMG). The district court found that the need for individualized proof in a work-made-for hire copyright case, such as…