Intellectual Property Litigation Committee

The Intellectual Property Litigation Committee considers its area of responsibility litigation relating to patent, trademark, copyright, trade secrets, the Internet, and related unfair competition cases. The wide scope of this committee runs from technical products to artistic works. Though focusing on federal law, it also touches upon state law and international concerns. With approximately 2300 members, we are one of the largest and most active substantive law Committees in the Section of Litigation.

Recently Filed Intellectual Property Law Cases

Download our compilation of the most recent IP cases for October 1 through October 9, 2009.

» Download Case List | PDF

News & Developments

On October 1, 2009, new local patent rules adopted by the Northern District of Illiniois became effective.

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Conversation with the Honorable Ronald Whyte, United States District Judge for the Northern District of California, on Patent Litigation

The Patent Subcommittee of the Intellectual Property Litigation Committee of the ABA Section of Litigation invites you to participate in our continuing series of teleconferences with federal trial judges about various aspects of litigating and trying patent cases. Our next call will take place on Wednesday, November 18, 2009 at 4:00 p.m., Eastern Time/1:00 p.m Pacific, and will feature the Honorable Ronald Whyte, of the Northern District of California.

This will be another great opportunity to ask a renowned federal judge questions about the dos and don’ts of patent litigation and trial practice. Judge Whyte will address various topics related to patent litigation and entertain questions submitted by you, the audience, before and during the event.

Judge Whyte has served as a United States District Judge for the Northern District of California since 1992. He has presided over numerous patent cases, and has spoken on many issues relating to patent litigation. In addition, Judge Whyte was a leader in creating the local patent rules that have shaped the Northern District of California’s patent docket.

Please RSVP to Richard A. Kamprath at rkamprath@gmail.com. Once registered, you will receive a confirmation email with the dial-in information and instructions for submitting questions for Judge Whyte. The number of participants is limited, so please register as soon as possible. We anticipate a very exciting exchange of ideas and hope you will join us.

Seeking Contributors to Our Website and Publications
The Intellectual Property Litigation Committee is seeking contributors to its website and publications. We solicit your help by providing us articles and reports on recent cases of interest that pertain to intellectual property litigation issues. We welcome any articles for either the web page or our newsletter. This is a great way to get involved, network with some of the best litigators in the country, and contribute to building a valuable resource for intellectual property litigators. If you have cases of interest, articles, or other resources to add to our website or printed newsletter, please contact Jason Shull for website submissions and Steven Gardner for newsletter submissions.

Vague Allegations No Longer Acceptable When Asserting Inequitable Conduct Defense

Patentees alleging infringement have become accustomed to the defense of inequitable conduct that defendants almost reflexively raise. Inequitable conduct is found when a patent applicant breaches his duty of candor and good faith to the Patent and Trademark Office while applying for his patent, usually by failing to submit material known to be material to patentability.

The Fall 2009 edition of the Intellectual Property Litigation newsletter is now available.

» View the Newsletter |

Statutory Damages in Copyright Litigation: Clearing Up Some Common Misunderstandings

Statutory damages, although a potent weapon in copyright litigation, are often a trap for the unwary. The Copyright Act of 1976 (the Act) imposes limitations on the availability of statutory damages, the number of grants of statutory damages to be awarded and the parties against whom those grants will be individually assessed. The Act also impacts on the availability of actual damages when the copyright owner elects statutory damages before the entry of final judgment.

Insurance companies have moved aggressively since the information technology boom to limit coverage under commercial general liability (CGL) policies for intellectual property claims. Through a combination of court victories and significant redrafting of standard forms, coverage has been narrowed to relatively few types of claims.

In re Bose Corp. (Appeal No. 2008-1448)

On August 31, 2009, the Federal Circuit overturned a decision by the USPTO’s Trademark Trial and Appeal Board (TTAB or Board) ordering cancellation of Bose’s WAVE trademark registration for fraud.

Bose filed a renewal application for the WAVE trademark claiming that the mark was in use in commerce on all of the goods recited in the registration—including audio tape recorders and players that were no longer being manufactured or sold by Bose. Instead, these goods were being repaired by Bose under warranty. Bose filed an opposition against an application for the HEXAWAVE trademark, and the applicant counterclaimed for cancellation of the BOSE registration due to fraud committed in the renewal application. The TTAB found that Bose had committed fraud in the renewal application by virtue of the false statement that the mark was in use in commerce with all of the goods and cancelled the WAVE registration.

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