Publications

Irwin IP Publications is the go-to resource for the latest updates and insights in the world of intellectual property. Over 250 articles are published on cases addressing unique issues, all of which can be found using the search tool above. Additionally, there is a collection of articles/papers and presentations that cover a wide range of topics. Whether you’re a legal professional, business owner, or simply someone passionate about IP, our publications page will provide you with all the knowledge needed to navigate this dynamic field.

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October 24, 2019

Guiding Light to Motion to Amend?

Any new rule or pilot program by the United States Patent and Trademark Office (“USPTO”) is important to both prospective petitioners and patent owners because both parties should consider all available options when appearing in a proceeding before the Board. In three Inter Partes Review (“IPR”) proceedings for Mylan…

October 18, 2019

HTC Blindsided by Strategy of Staying in the Dark

Motiva alleged that HTC directly, indirectly, and willfully infringed of a number of Motiva’s patents directed to video game and virtual reality systems. HTC moved to dismiss two of Motiva’s claims, arguing that Motiva failed to adequately plead its claims for indirect and willful infringement. Specifically, HTC argued that…

October 11, 2019

Driveshaft Patent Only Natural After All

American Axle & Manufacturing (“AAM”) sued its competitor NeapCo Holdings LLC (“NeapCo”) for patent infringement in December of 2015, alleging infringement of its method patent relating to manufacturing driveshafts with liners to reduce noise and vibration during use. The parties cross-moved for summary judgment as to the eligibility of…

October 4, 2019

Whose Line is it Anyway?

In SIPCO, LLC v. Emerson Elec. Co., the Federal Circuit reversed the Patent Trial and Appeal Board’s construction of a claim term critical to determining whether SIPCO’s patent concerning wireless inter-device communication qualified for review as a covered business method (“CBM”) patent, remanding to the Board for further consideration…

September 27, 2019

When A Picture Isn’t Worth A Thousand Words:

In a case of first impression, the Federal Circuit Court of Appeals addressed whether claim language specifying a specific article of manufacture can limit the scope of a design patent, even if that article of manufacture is not actually illustrated in the figures. The Court found the answer to…

September 27, 2019

If You’re An Influencer, Be Prepared To Influence

When faced with determining the scope of protection in a social media influencer’s “character,” the United States District Court for the Southern District of New York concluded that omitting the key features of the influencer’s “character” can preclude claims of copyright infringement, even though the accused character appeared to…

September 12, 2019

Allstate’s “Drivewise” Suit Against Kia’s “Drive Wise” Mark Finally Runs Out Of Gas

The Ninth Circuit recently held that the district court did not err when it ruled that Allstate’s “Drivewise” mark—which Allstate conceded was merely suggestive and for which Allstate failed to establish the level of its marketplace recognition—was only entitled to a narrow scope of protection and could not be…

September 6, 2019

In the Right Place at the Wrong Time

Recently, the Precedential Opinion Panel (“POP”) of the Patent Trial and Appeal Board (“PTAB”) overturned a previous PTAB panel’s decision to institute inter partes review (“IPR”) and held that “service of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a…

August 30, 2019

A Tale of Two Copyright Laws: Second Circuit Holds that Italian Law Permits Termination of U.S. Copyrights

In Ennio Morricone Music Inc. v. Bixio Music Group Ltd, the Second Circuit tackled the “knotty” issue of whether a composer’s score was a “work made for hire” under Italian copyright law. The court ultimately determined that a composer’s film scores were not “works made for hire,” under Italian…

August 23, 2019

“District Court [Tool]barred From Ruling on Patent Eligibility without First Construing Claims”

In MyMail, the Federal Circuit vacated the lower court’s judgment and remanded the case on the basis of the Federal Circuit’s new requirement that lower courts construe claims, first, before making any decision as to a patent’s eligibility. Here, the patent dispute arose between MyMail, LTD (“MyMail”) and ooVoo…

August 16, 2019

Apple’s Second Bite Might be a Little Too Late

Apple, Inc. (“Apple”) and VirnetX Inc. (“VirnetX”) have been feuding over several patents relating to secured communications over the internet since 2010 when VirnetX sued Apple in district court. Apple argued that the patents were invalid as anticipated by or obvious in light of the prior art. Apple lost…

August 13, 2019

Schrodinger’s Case

On consecutive days two district courts faced the same question—does a patent infringement plaintiff who sued before establishing common ownership over a terminally disclaimed patent have standing?—but arrived at opposite answers. On July 25, 2019, the Eastern district of Pennsylvania held a case must be dismissed because such a…

August 2, 2019

Federal Circuit Declines To Extend Trademark Doctrines To Design Patents

Continuing its narrow application of Article III standing in inter partes review (“IPR”) appeals, the Federal Circuit recently held that General Electric Company (“GE”) lacked Article III standing to appeal the Final Written Decision of an IPR that it had instituted against United Technologies Corporation, determining that GE did…

July 26, 2019

(MISUNDER)STANDING: FEDERAL CIRCUIT HOLDS PETITIONER LACKS ARTICLE III STANDING TO APPEAL IPR FINAL WRITTEN DECISION

July 16, 2019

Money Can’t Buy the Federal Circuit: Luxury Brand Louis Vuitton Refused Trademark Registration for APOGÉE

In a victory for KAB Brands, the Federal Circuit affirmed the TTAB (the “Board”)’s refusal to register the applied-for mark, APOGÉE for perfumery.1 KAB Brands is the owner of two federally registered trademarks: APHOGEE and ApHOGEE used in connection with hair products. The trademark office refused to register Louis…

July 12, 2019

Samsung Dodges Forum Selection Clause to File IPRs

A Southern District of New York Judge denied a Motion for Preliminary Injunction filed by plaintiff NuCurrent Inc. against defendant Samsung, which sought to enforce a forum selection clause— contained in a mutual non-disclosure agreement (“NDA”) between the parties—to prohibit Samsung from initiating inter partes review (“IPR”) proceedings before…

July 2, 2019

Trademark Applicant Gets FUCT

On June 24, 2019, the Supreme Court held that the Lanham Act’s restriction against registration of immoral or scandalous trademarks, set forth in 15 U.S.C. § 1052(a), discriminated between speech based upon viewpoint in violation of the First Amendment. Iancu, Under Sec’y of Commerce for Intellectual Prop. & Dir.,…

June 20, 2019

When is a Patent Challenge Undeliverable?

Although neither snow nor rain nor heat nor gloom of night prevents the United States Postal Service from the swift completion of its appointed rounds, the Supreme Court has prevented it from challenging patents. In Return Mail, Inc. v. United States Postal Service et al., 587 U. S. ____…

June 14, 2019

Sound the Alarm: Alarm.com Survives Alice Motion to Dismiss by Detailing Innovation

The Supreme Court’s decision in Alice has alternately been wielded as a sword and a shield, but, with alarming frequency, the end result of an Alice challenge is a holding that the patent at issue is invalid. In fact, over half of patents challenged by Alice have been held…

June 7, 2019

Documentary Producers Super Bowl Shuffle their Way out of Copyright Infringement

To native Chicagoans, the Super Bowl Shuffle is revered as the hype song for the 1985 Chicago Bears who went on to win Super Bowl XX. But to the Plaintiffs in Red Label Music Publishing Inc., et al., v. Chila Productions, et al.,1 the Super Bowl Shuffle is their…