Wednesday, March 29, 2017

Dickinson Wright was the top sponsor of the 9th Annual Corporate IP Counsel Forum

By: Stacey Longanecker

Dickinson Wright was the top sponsor of the 9th Annual Corporate IP Counsel Forum in New York, NY, March 21-22, where Stan Torgovitsky (Member, Washington, D.C.) moderated a panel discussion on the influence of the Defend Trade Secrets Act of 2016 on joint venture and development. Justin Root (Of Counsel, Columbus) led a roundtable discussion to demonstrate data privacy and cybersecurity threats that could lead to the theft of intellectual property. The IP Counsel Forum is an annual gathering of about 75 general counsel and IP counsel from such companies as Lego Systems Inc., Coty, Inc., Luxxotica, Hickies and Philips Lighting, Inc. Stacey Longanecker (Member, Washington, D.C.), Christian Michel (Member, Washington, D.C.), and Stan Torgovitsky developed a new marketing message and materials to highlight the Intellectual Property and Cybersecurity practices.

Wednesday, March 22, 2017

Noah McPike joins the Dickinson Wright Music Row office



Dickinson Wright welcomes Noah McPike to its Music Row office.  Noah provides entertainment, new media and intellectual property representation to artists, songwriters, publishers, managers, producers, labels, and entertainment business clients, including an ACM Entertainer of the Year and several artists signed to major labels, in a broad range of transactions. Noah is an active member of Copyright Society of the South and the Recording Industry of America, acts as Executive Counsel for the Tennessee Bar Association Sports and Entertainment Law Section, and serves as a volunteer attorney for Tennessee Lawyers for the Arts.  Read more about Noah here.  The Dickinson Wright Music Row office is located at 54 Music Square East, Suite 300, Nashville, TN, 37203.  Phone:  615-577-9600 / Fax:  844-670-6009.

 

Wednesday, March 15, 2017

IP Litigation Attorney Jon Redway, Member, Washington, D.C.

Jon Redway is a top-rated Intellectual Property Litigation Attorney located in Dickinson Wright’s Washington, D.C. office.  His practice covers nearly every aspect of intellectual property litigation, including jury and bench trials, appellate advocacy, licensing, as well as proceedings before the United States Patent and Trademark Office, the Court of Claims and the International Trade Commission.  Jon is co-chair of Dickinson Wright’s Intellectual Property Litigation Practice.
 
Jon has served as lead counsel in numerous high technology cases including those involving the electrical, mechanical, software, telecommunications, semiconductor and life-science arts.  Since joining Dickinson Wright in 2006, Jon has collaborated with attorneys and technical experts throughout the Firm on a wide range of intellectual property litigation matters for clients such as AT&T Mobility, Carhartt, Chevron, John Deere, Federal-Mogul, Michelin, successors of Pan-American World Airways, Urban Outfitters and Volkswagen.

Jon has special expertise in Section 337 Investigations before the International Trade Commission (“ITC”).  In 2014, Jon and Dickinson Wright successfully tried two complex Section 337 cases to conclusion.  Jon has tried several trademark cases (including product configuration and trade dress) to juries and innumerable preliminary injunction proceedings to judges. Jon has argued complex claim construction positions to judges and tried patent cases both to juries and judges.  The subject matter and client origin of Jon’s matters has varied including for example transformation systems for the introduction of DNA vectors into plant cells for European entities to semiconductor processing and chip layout for Taiwanese entities.  In addition, Jon has tried dealer termination cases, price-fixing antitrust claims, complex environmental cases and business disputes.
 
Jon regularly appears in the Eastern and Western Districts of Virginia, the District of Columbia, and the District of Maryland.  Jon is a member of the Northern Virginia Chapter of the Federal Bar.

Jon has three children and is happily married to Nicole Meyer.  Jon grew up in Washington, D.C., working summers on the family farm in Markham, Virginia.  Prior to law school, Jon worked for three years as a police officer in Washington, D.C.

 
For additional information on Jon Redway’s practice, he may be reached at (202) 659-6946.

Monday, March 13, 2017

Dickinson Wright Successfully Defends SLITHER.IO Creator From Trademark Challenge


The Dickinson Wright team of Craig Phillips, Edward Perdue, and Steven Lustig successfully defended client, Lowtech Studios – creator of the highly popular mobile phone game app slither.io, from a trademark challenge by World's Hero SA and its owner Hans Stuffer.  Lowtech had been using the trademark “SLITHER.IO” in connection with its app and was in the process of registering that trademark in the U.S. and Internationally.  Stuffer filed a complaint with Apple, Inc., under Apple’s intellectual property policy, claiming that Lowtech was infringing Stuffer’s trademark rights and demanding that Apple cease selling the slither.io app through the App Store.  Before filing his complaint, Stuffer filed a trademark application for protection of “SLITHER.IO” in Switzerland – a country where Lowtech had not yet filed an application.  Stuffer asserted his application as the sole basis of his complaint, and there was no evidence that Stuffer was ever using the trademark.  Stuffer made numerous claims to Apple that he was being harmed, and he tried to use Apple’s procedures like court proceedings – which Apple resisted.  However, Lowtech was able to take advantage of the “priority” provisions of the Paris Convention for the Protection of Industrial Property, which enabled Lowtech to file an application for trademark protection in Switzerland and claim a constructive filing date that was earlier than Stuffer’s.  That filing gave Lowtech the superior rights it needed to prevail.  Faced with a later filing date and inferior trademark rights, Stuffer capitulated, withdrew his complaint with Apple, and assigned his trademark rights to Lowtech, all only a few months after initiating the dispute. 

Tuesday, March 7, 2017

DICKINSON WRIGHT DEFENDS TREK, INC. – AN INDUSTRIAL EQUIPMENT SUPPLIER – AGAINST A MOTION TO DISMISS OR TRANSFER


 
John S.Artz (Member, Troy) and Chelsea M. Smialek (Associate, Washington, D.C.), successfully defended against a motion to dismiss or transfer based on the first-to-file doctrine in a dispute between two suppliers of industrial equipment components. ITR America, LLC (“ITR”) filed suit against Dickinson Wright client Trek, Inc. (“Trek”) and one of its employees in Federal Court in Mississippi claiming misappropriation of trade secrets under state and federal law, violation of the Computer Fraud and Abuse Act, tortious interference, and civil conspiracy, which is currently awaiting its own ruling on a motion to dismiss (the “Mississippi matter”). ITR America, LLC v. Trek, Inc. et al., No. 3:16-cv-703-WHB-JCG (S.D. Miss.).  Trek likewise filed its own lawsuit against ITR and two of its employees (collectively “Defendants”) in the Eastern District of Michigan asserting misappropriation of trade secrets under state and federal law, unfair competition, breach of contract, violation of the Fraud and Abuse Act, and tortious interference, among other things (the “Michigan matter”).  Trek, Inc. v. ITR America, LLC, et al., No. 2: 16-cv-13767-SJM-RSW (E.D. Mich.).

            The Defendants moved to dismiss or, in the alternative, transfer the Michigan matter to Mississippi based on the first-to-file doctrine, which provides that when two suits filed in different courts pertain to the same parties and issues, the first suit to be filed generally proceeds to the exclusion of the other in order to avoid duplicative litigation or inconsistent judgments. Trek opposed the Defendants’ motion and argued that even if the Michigan matter asserted the same or similar causes of action as the Mississippi matter, those claims were based on facts, actors, and issues different from those asserted in the Mississippi matter such that the first-to-file doctrine was inapplicable. The Court agreed.

            Although the Court noted that the Michigan matter was filed a few weeks after the Mississippi matter and contained facially similar causes of action, the Court took note of the specific, individual facts of each case and concluded “the Mississippi and Michigan lawsuits present substantially different questions of fact.”  Trek, Inc. v. ITR America, LLC, et al., No. 2: 16-cv-13767, Doc # 17, Pg ID 291.  The Court expounded, stating “[e]ach suit alleges different actions, carried out by different people, in different locations. As a result, separate Mississippi and Michigan lawsuits present no risk of ‘duplicative litigation and conflicting judgments’ since the cases offer discrete questions of fact.”  Id. 

            Additionally, because the Court found that venue was, in fact, proper in the Eastern District of Michigan, to transfer venue the Defendants had to demonstrate that transfer would promote the convenience of the parties and witnesses and would be in the interest of justice. Id. at Pg ID 289-90.  In denying the Defendants’ request to transfer the Michigan matter to Mississippi, the Court determined that the Defendants failed to make a showing that “transfer from Michigan would offer any net convenience benefit to parties or witnesses.  And the Court will not transfer venue when ‘the result is simply to shift the convenience from one party to another.’”  Id. at Pg ID 291 (internal citation omitted). 
 
            In summary, the Defendants’ motion was denied and the Michigan matter remains pending.   The Court’s Order can be found at the following link.


Please contact John S. Artz in the Troy Office at 248-433-7262 or Chelsea Smialek in our Washington D.C. office at 202-659-6936. 

Wednesday, March 1, 2017

Design Patent Damage Awards - Rotten for Apple


By:  John S. Artz,
Franklin M. Smith
and Brandon L. Debus

On Dec. 6, 2016, the United States Supreme Court, hearing its first design patent case in over 120 years, unanimously threw away a $400 million award that Apple won against Samsung Electronics. In doing so, the justices interpreted an 1887 statute providing that it is unlawful to manufacture or sell an “article of manufacture” that a patented design or colorable imitation has been applied. 35 U.S.C. § 289. The penalty for violating this statute (i.e., infringement) is that the infringer is liable to the patent holder “to the extent of his total profit.” Id. The issue before the Court was “whether, in the case of a multi-component product, the relevant ‘article of manufacture’ must always be the end product sold to the consumer or whether it can also be a component of that overall product.” Samsung Elecs. Co. v. Apple Inc., 2016 WL 7078449, at *4 (U.S. Dec. 6, 2016) (hereafter Samsung Electronics).
 

This article can be read at the Corporate Counselor, Volume 31, Number 10, January 2017 edition.  Please read the entire article here. If you're a Dickinson Wright member, please view here

 
 

John S. Artz is a member of the Intellectual Property practice group at Dickinson Wright PLLC. John may be contacted at: JSArtz@dickinsonwright.com. Franklin M. Smith and Brandon L. Debus are associates with the firm.  Reach them at: fsmith@dickinsonwright.com and bdebus@dickinsonwright.com, respectively.