Inter Partes Review (IPR), created by the Leahy-Smith America Invents Act (AIA), 125 Stat. 284 (2011), has become a prominent part of patent litigation. Accused infringers can challenge asserted patents based on printed prior art by petitioning the Patent Trial and Appeal Board (PTAB) to “institute” an IPR “trial.” An IPR before the PTAB is an administrative proceeding with no right to a jury trial on patent validity. If instituted, non-Article III judges receive evidence and arguments and determine whether the patent is valid. Many IPRs arise out of pending District court patent infringement litigation and parties to an IPR proceeding can be estopped from re-litigating issues that were raised or could have been raised in the PTAB. At the discretion of the federal judge, district court litigation may be stayed pending the outcome of the IPR. Ultimately, IPRs can be less expensive than district court validity determinations and often contribute to efficient resolution of patent disputes. Continue Reading Will “Oil States” Upend IPRs?

Startup MilwaukeeHusch Blackwell is proud to be a sponsor of Milwaukee Startup Week 2017. This series of events showcases the entrepreneurial spirit of Southeast Wisconsin and provides opportunities for startups to showcase their ideas, network with fellow innovators, and attend workshops with business, marketing, and legal experts. Husch Blackwell is sponsoring the Startup Showcase by Startup Milwaukee event on November 7, 2017. The showcase will provide local entrepreneurs the opportunity to present their products and services at the City Lights Brewing Company. Additionally, Husch Blackwell will have attorneys present on legal issues that affect startups during the Launch Conference on November 9, 2017, and other events throughout the week.

Continue Reading Milwaukee Start Up Week 2017

trademarkFor many new companies, coming up with a unique name is not easy. As a result, companies often fall back on the family name of one of the founders as an easy and identifiable way to enter the marketplace. Companies may now want to rethink that approach given the U.S. Patent and Trademark Office’s (PTO’s) new examination guidelines for trademarks incorporating surnames.

Continue Reading Business Names Get Personal

PatentThe doctrine of patent venue continues its rapid evolution after the Supreme Court’s recent decision TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017).  In TC Heartland, the Supreme Court upended decades of established precedent that allowed for broad assertions of venue in patent cases and found that for purposes of the specific patent infringement venue statute, 28 U.S.C. § 1400(b), a domestic corporation resided only in the state under whose laws it was incorporated. TC Heartland is expected to greatly reduce the volume of patent litigation brought in the Eastern District of Texas, a fast-track venue that has found great favor amongst patent assertion entities.

Continue Reading Federal Circuit Rejects Broad Interpretation of “Regular and Established Place of Business” for Patent Infringement Venue

footballFootball season is upon us again and, with it, the excitement, the thrill of moving the ball forward for a touchdown, and the agony of defeat.  Ups and downs like this are what most start-ups experience. In football, it is important to protect the ball, to play good defense, and to avoid penalties.  Similarly, start-ups need to protect their assets, defend their intellectual property, and avoid incurring unnecessary costs in the future.  Following a few simple “rules” can help your start-up do all of these things.

RULE NO. 1: Stop the rushing game and avoid “illegal formation” penalties. Avoid quick-fix company formation tools you find on the internet.  I know, start-ups hate paying lawyers. (This isn’t unique to start-ups.) You may like your lawyer, enjoy talking to her, appreciate the insights and ideas but, in the end, I know you’d rather not pay me for all of that (why can’t we just be friends, you ask). Why do smart clients nonetheless retain lawyers (like me) knowing full well we have to be paid? Because smart clients, like a good coach, recognize that starting a business is a process and that investment on the front end can lead to considerable savings on the back end.

Continue Reading End Zone Decisions For Startups—Avoid Penalties And Maximize Asset Value

legal documentThinking about telling everyone about your latest and greatest genius idea? You’d better think twice. Telling others about your idea or invention is a “public disclosure” and could bar you from getting a patent.

What’s a public disclosure?

A public disclosure can be as simple as describing the invention in print, using the invention in public, selling or offering to sell the invention, or making it otherwise available to the public. Common ways for individuals to make a public disclosure include: Continue Reading N-D-A? Y-E-S

data securityYou are an entrepreneur. You have great ideas. Those ideas are going to change your industry. In most cases, to accomplish those goals, you are going to need help from others. How do you protect your intellectual property and data? You need to focus on protecting those assets in the contracting process.

Most developing companies rely on third party service providers. As an entrepreneur, you will likely rely on hosting and cloud solutions. While we advise that you consider business considerations first, you should also consider legal issues relating to data privacy and security issues. You cannot achieve 100% security for your assets, but there are many ways to protect yourself. You should also consider obtaining cyber-liability insurance for your company and you should ask your service providers whether they have it.

Continue Reading Protecting Your Data and Intellectual Property

trademarkAccording to BrandFinance’s annual report on the world’s most valuable brands, the GOOGLE trademark is the most valuable brand in the world; worth over $100,000 million. So how is it that the world’s most valuable brand is the subject of a claim that it has become generic and is no longer protectable?

When a trademark owner develops a product category that is new to the marketplace, its success in branding can sometimes be its demise if the brand loses its significance as a trademark and becomes the generic name for the product itself. Think aspirin, escalator, laundromat, and kerosene.

While all of us should be so lucky to develop a brand that becomes so well-known it becomes vulnerable to a trip to the trademark graveyard, this case is a good reminder to all brand owners to have processes in place to avoid such a finding.

Continue Reading Google No Longer Protectable as a Trademark????

PatentIntellectual property (IP) is a key component of almost every startup’s business. It can distinguish a startup from its competition, attract potential investors, and provide a foundation for future success. Because IP can be such an important part of a company, startups are often eager to disclose their innovations, technology and other IP when pitching their company to investors or when presenting to the public at events such as #TechweekKC. However, a startup’s failure to properly protect its IP prior to making these outside disclosures can have unintended and sometimes devastating effects. Below are just a few reasons why startups should strongly consider their IP protection strategy before revealing their IP to the public.

Continue Reading Why Startups Need to Protect Their IP Before Disclosing Their Technology

globe AsiaOn Friday, August 18, 2017, the Office of the U.S. Trade Representative (USTR) formally initiated a Section 301 investigation into China’s intellectual property practices. The decision to open the investigation came from President Trump’s executive memorandum on August 14, 2017. For more information on the executive memorandum, please see our recent post. Continue Reading Section 301 Investigation against China Begins