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The top five intellectual property traps in M&A transactions

  • McDermott Will & Emery
  • -
  • USA
  • -
  • August 31 2010

In M&A transactions, many lawyers assume that intellectual property (IP) rights will automatically transfer with the purchase and that IP issues can be cured by general representations and warranties

Parody prevails: Louis Vuitton v Chewy Vuiton

  • McDermott Will & Emery
  • -
  • USA
  • -
  • December 28 2007

Affirming the district court decision, the U.S. Court of Appeals for the Fourth Circuit upheld judgments that Haute Diggity Dog’s “Chewy Vuiton” products neither infringe Louis Vuitton Malletier’s (LVM) copyrights nor infringe or dilute LVM’s trademarks or trade dress

A dismissal for lack of standing should generally be without prejudice

  • McDermott Will & Emery
  • -
  • USA
  • -
  • July 27 2009

Addressing yet another standing dispute, the U.S. Court of Appeals for the Federal Circuit overturned a dismissal for lack of standing with prejudice, noting the general rule that a dismissal on that basis should ordinarily be without prejudice

Patent assignment recorded at USPTO creates a rebuttable presumption of a valid assignment

  • McDermott Will & Emery
  • -
  • USA
  • -
  • April 28 2010

Addressing the burdens of proof associated with a standing challenge based on the validity of an assignment, the U.S. Court of Appeals for the Federal Circuit upheld the U.S. International Trade Commission’s (USITC’s) determination that the recordation of a patent assignment at the U.S. Patent and Trademark Office (USPTO) created a rebuttable presumption of a valid assignment which shifted the burden to rebut that presumption to the party challenging standing

Three strikes at secondary meaning and you’re out!

  • McDermott Will & Emery
  • -
  • USA
  • -
  • May 31 2008

In what is now the third attempt by Singh to raise the issue of trademark infringement with respect to the mark “TESTMASTERS,” the US Court of Appeals for the Fifth Circuit affirmed the district court conclusion that collateral estoppel precluded the case from going forwardfinding the issues presented regarding alleged rights in the mark here were the same as those presented in prior actions

Disclaimer in parent limits scope of continuation unless affirmatively rescinded

  • McDermott Will & Emery
  • -
  • USA
  • -
  • March 29 2007

Addressing the issue of whether arguments limiting claim scope during prosecution of a parent application limit the scope of claims in a continuation, the U.S. Court of Appeals for the Federal Circuit upheld a decision that limited patent claims issued in a continuation application to the same scope as claims allowed in the parent application

Res judicata applies unless material differences exist in contested limitations

  • McDermott Will & Emery
  • -
  • USA
  • -
  • September 28 2009

Clarifying the application of res judicata in patent cases, the U.S. Court of Appeals for the Federal Circuit held that an analysis of the “material differences” between the products in each case must focus only on the claim limitations being contested

Federal Circuit lowers bar for declaratory judgment jurisdiction for NPE patent assertions

  • McDermott Will & Emery
  • -
  • USA
  • -
  • December 31 2009

In a holding that the Court admitted “undoubtedly marks a shift from past declaratory judgment cases,” the U.S. Court of Appeals for the Federal Circuit found that declaratory judgment jurisdiction was established by letters from a non-practicing patent owner that did not specifically threaten litigation, but which stated that the patent was “related” to the manufacturer’s products, refused a 120-day non-suit agreement and imposed a deadline for a response

Clear and unmistakable disavowal of claim scope required for prosecution history estoppel

  • McDermott Will & Emery
  • -
  • USA
  • -
  • December 28 2007

Overturning a district court’s finding of prosecution history estoppel, the U.S. Court of Appeals for the Federal Circuit held that an allegedly disclaiming statement made during prosecution was not a “clear and unmistakable” disclaimer to one skilled in the art

License to “make” includes an inherent right to “have made”

  • McDermott Will & Emery
  • -
  • USA
  • -
  • June 30 2009

The U.S. Court of Appeals for the Federal Circuit recently held that a license to make a patented article includes an inherent right to have a third party make the article absent express language to the contrary