Publications

February 2, 2023

“Pro Bono Work Is Valuable In IP And Continued Learning”

We are pleased that Law360 Pulse has published Lisa Holubar’s and Ariel Katz’s article: “Pro Bono Work Is Valuable In IP And Continued Learning.” The article addresses a recent Rule change at the United States Patent and Trademark Office pertaining to CLE reporting and pro bono work as a…

January 30, 2023

Unreasonable Delay In Prosecuting Patent Costs Patentee $308 Million

The Court of Appeals for the Federal Circuit (“CAFC”) recently affirmed an Eastern District of Texas ruling that U.S. Patent No. 8,191,091 (“the ’091 patent”) is unenforceable due to prosecution laches. Personalized Media Communications, LLC (“PMC”) was found to have engaged in an unreasonable and unexplained delay in prosecuting…

January 23, 2023

Check Trademark Application ID Categories Twice, File Once

On January 12, 2023, the Trademark Trial and Appeal Board (“TTAB”) redesignated a decision as precedential, in which it denied a trademark based on nonuse because the Applicant applied using the TEAS Plus application under the category of “musical instruments,” but sought to expand this identification category to “musical…

January 17, 2023

RICO Requires Transfer of Title to Forfeit Trademarks

The Ninth Circuit recently affirmed the denial of the United States’ second motion for preliminary order of forfeiture of the Mongol Nation’s trademarks. The Ninth Circuit held that the Racketeer Influenced and Corrupt Organization Act (RICO) did not provide the government with the power to strip a group of…

January 12, 2023

CAFC Refuses to Crack Open Summary Judgment of Invalidity for Non-Joinder in Bottle Patent Appeal

The Court of Appeals for the Federal Circuit (“CAFC”) recently reversed and remanded the Western District of Wisconsin’s summary judgment holding of invalidity for 12 patents belonging to Plastipak Packaging, Inc. (“Plastipak”) in an infringement action it brought against Premium Waters, Inc. (“Premium Waters”). The CAFC based its decision…

January 9, 2023

Expert Methodology Critical in Denial of Preliminary Injunction

The United States District Court for the Northern District of Illinois recently denied a renewed motion for a preliminary injunction seeking to prohibit sales of Defendants’ hoverboards that allegedly infringed Plaintiffs’ design patents (exemplary comparison pictured below): The renewed motion came after the Court had previously issued a preliminary…

January 3, 2023

Irwin IP Converts To Partnership, Welcomes Three Seasoned Litigators As Partners

Irwin IP LLC was founded by Barry Irwin in 2014. Since its founding, Irwin IP has developed a thriving intellectual property litigation practice. Irwin IP is pleased to announce that, effective January 1, 2023, it will be converting to a partnership, and that Lisa Holubar, Mike Bregenzer, and Jason…

December 28, 2022

Can You Sell a Patented Method? Perhaps… But Not Today

On November 17, 2022, the District of Delaware adjudicated a perfect storm of international patent enforcement: a method claim infringement dispute between an Australian patent owner (F45) and the U.S. subsidiary (BFT) of another foreign company (BFT Australia) where some steps were performed in Australia, and others by BFT’s…

December 20, 2022

Be Careful What You Admit to During Oral Argument

In a case informative about appellate practice, the Court of Appeals for the Federal Circuit (“CAFC”) overturned-in-part the Patent Office’s conclusions that a communication system was not obvious. The CAFC found one claim obvious because a similar claim was found obvious, even though that argument had not been asserted…

November 23, 2022

Registering Trademarks Shows Secondary Meaning

On November 9, 2022, the Federal Circuit (CAFC) affirmed a preliminary injunction in favor of SoClean, Inc. (“SoClean”) against Sunset Healthcare Solutions, Inc. (“Sunset”). SoClean sued Sunset for trademark infringement of its registered mark for replacement filters. Although the district believed that SoClean was likely to prevail on the…

November 21, 2022

Damages Retrial Awarded After CAFC Decision Issues Mid Trial

Following a nine-day jury trial, the district court granted the plaintiff’s request for a new trial on damages. The basis for the grant of a new trial on damages was the Federal Circuit’s (CAFC) decision in Omega Patents, LLC v. CalAmp Corp., 13 F.4th 1361 (Fed. Cir. 2021). The…

November 11, 2022

Defending Against Willfulness Without Waiving Privilege

In a patent dispute between Allergan and Sandoz, the District Court of Colorado granted Plaintiff’s motion in limine excluding certain evidence the Defendant sought to rely upon to defend against the Plaintiff’s claim of willful infringement because reliance on that evidence would require waiver of attorney-client privilege when the…

November 4, 2022

Party’s Financial Resources Can Significantly Impact Attorney’s Fees Award

On September 30, 2022, Chief Judge DeGuisti of Western District of Oklahoma granted-in-part and denied-in-part defendants Netflix, Inc. and Royal Goode Productions, LLC’s motion for attorney’s fees as prevailing parties in a copyright infringement suit. The court significantly reduced the awarded amount, finding that the amount sought by defendants…

November 3, 2022

Irwin IP Ranked Best Law Firm 2023

For the third consecutive year, Irwin IP is honored to be named as a “Best Law Firm of the Year” in Intellectual Property Litigation and Patent Law by US News and World Report and Best Lawyers! Firms included in the “Best Law Firms” list are subject to a rigorous…

October 26, 2022

A License for One’s Likeness Does Not Include Tattoos, Illinois Federal Court Finds

In an unexpected decision, a jury in the Southern District of Illinois found that it was not fair use to reproduce the images of a WWE wrestler’s tattoos in a video game in order to accurately portray the wrestler’s likeness. The outcome of this case directly conflicts with Solid…

October 24, 2022

A “Monster” Award: “Super Creatine” Not So Super

On September 29, 2022, a jury in the Central District of California found that that Vital Pharmaceuticals Inc. willfully and deliberately violated the Lanham Act by falsely advertising a “Super Creatine” ingredient of a Bang energy drink and awarded Monster Energy Co. about $292 million in Lanham Act damages,…

October 21, 2022

CAFC Trims the Fat from Meat Slicer Patent Dispute: Additional Evidence on Reply Was Permissible in IPR

The Court of Appeals for the Federal Circuit (“CAFC”) recently affirmed in part, vacated in part, and remanded a Patent Trial and Appeal Board (“PTAB”) decision holding that all but two claims of a patent belonging to Provisur Technologies, Inc. (“Provisur”) were unpatentable as obvious. In doing so, the…

October 19, 2022

CAFC Affirms PTAB’s Invalidity Decision Vacated Under Arthex I and Reinstated By Arthex II, Despite Joint Request To Dismiss Proceeding

This week, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the invalidity of Polaris Innovations Ltd.’s (“Polaris”) previously-invalidated patents, despite previously vacating and remanding the invalidity decisions. In February of 2017, NVIDIA Corporation (“NVIDIA”) initiated two inter partes review (“IPR”)…

September 28, 2022

Irwin IP Sponsors and Participates in Linn Inn’s 8th Annual Mark T. Banner Scholarship Fundraising Event

Yesterday, Irwin IP sponsored and participated in the Linn Inn’s 8th Annual Mark T. Banner Scholarship fundraising event and golf/social outing. We sent our top female attorneys to play in the outing, here are some pics they shared from the beautiful day. Great job, ladies and congrats to The…

September 21, 2022

Dangers of Relying on Exemplary Products

On September 7, 2022, the Federal Circuit (CAFC) affirmed dismissal of a patent infringement suit under the duplicative litigation doctrine because the asserted patent and accused products were part of an earlier filed case. Arendi S.A.R.L. (“Arendi”) filed suit against LG Electronics Inc. and LG Electronics USA, Inc. (collectively,…