Wednesday, April 26, 2017

John Krieger (Member, Las Vegas) Has Been Retained as Counsel for AESTHETICA LLC

By: John Krieger


John Krieger (Member, Las Vegas) has been retained as Counsel for AESTHETICA LLC in the United States District Court for trademark infringement, unfair competition and trademark dilution case.  Aesthetica was one of the first companies in the industry to build a brand decided solely to bikini waxing, and opened its “BOX” properties in Las Vegas, Nevada, and Manhattan Beach, California.  Aesthetica built its brand on a snarky tongue-in-cheek “voice” that capitalized upon the double entendre unique to the subject matter and social mores surrounding depilatory hair removal in more intimate personal areas. This “voice” was used throughout Aesthetica’s website www.bikiniwaxing.com, on all marketing materials, and even permeated the unique services menu.  Since as early as 2000, Aesthetica has continuously used the “BOX” marks in connection with beauty products and depilatory hair removal services, as well as promoting its “BOX” salons.

The case  is assigned to Judge James C. Mahan and Magistrate Judge George Foley, Jr.  entered on 04/13/2017.

AESTHETICA LLC has also filed cancellation proceedings against six trademarks incorporating the BOX mark for similar goods and services before the Trademark Trial and Appeals Board.  

 
For more information, or to contact John Krieger in our Las Vegas office, please phone  702-550-4439.

Monday, April 24, 2017

Buy One Registration, Get One Free For the DRI’s Intellectual Property Litigation Seminar in Chicago this May!

By:  Michele Alamo

DRI is running a special Buy One, Get One promotion for its Intellectual Property Seminar in Chicago, May 11-12, 2017.  Every registrant that pays a full registration fee is eligible to bring a colleague with them to the seminar for free.  This applies to both members and nonmembers.   If you are interested, find a colleague and register today!

If you would like to take advantage of this special offer, follow these steps below.

  1. Register for the IP Seminar here:  IPL Seminar Registration.
     
  2. Have all contact information, including name, firm, email address and phone number of the individual you would like to register for free.
     
  3. Call DRI Customer Service at 312.795.1101 to register your guest.  The guest cannot register themselves.
  4. DRI Customer Service will process your guest's registration and copy you on the confirmation email.
  5. Make your hotel reservation here: Loew's Hotel Reservations
  6. And then take advantage of one or more of the many networking events:

·         Dine Arounds on Wednesday and Thursday nights.   Dine Arounds are smaller, more intimate dinners around town that all attendees are welcome to join. 

·         DRI for Life Activities:  Thursday evening offers a historic crime tour of Chicago.  The bus tour will last approximately two hours, including a stop at a speakeasy for a social drink if desired.  On Friday morning, there will be a fun Walk/Run along the Lakefront Path.  There may even be t-shirts for the participants!  More information will be sent upon registration. 

·         SLG Lunches (SLG stands for “Substantive Law Group”) for Copyright, Patent, Trademark, and Trade Secrets SLGs.

 
More information about these events and how to RSVP will be sent upon registration.  
Don’t miss out on this terrific opportunity for superior programming, fun networking, and even CLE credits where applicable!

Friday, April 21, 2017

JUSTIN BUSTOS RETAINED TO REPRESENT FACEBOOK, INC.

By: Justin Bustos


Justin Bustos (Of Counsel, Reno) has recently been retained to represent Facebook, Inc. in a patent infringement lawsuit recently filed against it by Silver State Intellectual Technologies, Inc. (“Silver State”). In the lawsuit, Silver State alleges that Facebook’s location-based social networking systems and services infringe two patents owned by Silver State. Dickinson Wright is co-counsel for Facebook along with the Palo Alto, California office of Cooley LLP.


Justin Bustos may be contacted in our Reno office at 775-343-7503.

Saturday, April 15, 2017

IP Litigation Spotlight on John S. Artz, Highly Respected Intellectual Property and Commercial Lawyer


John S. Artz is a highly respected intellectual property and commercial lawyer whose practice focuses on intellectual property litigation and counseling.  John is co-chair of Dickinson Wright’s intellectual property litigation practice and has successfully represented clients in patent, trademark, trade secret and copyright cases in Federal Courts though out the country, the Courts of Appeals for the Sixth and Federal Circuits, and the U.S. Supreme Court.  John is also a registered patent attorney and authorized to practice before the U.S. Patent and Trademark Office. John counsels clients of all sizes from large corporations to individual inventors, and everything in between, on various patent, trademark, copyright, and business issues related to intellectual property and commercial issues.   John’s practice involves a wide range of technologies, including mechanical, software, electrical, metallurgical, and chemical, in various industries, including automotive, industrial, consumer products, gaming, and consumer electronics. 

John is also heavily involved in representing clients in connection with post-grant proceedings before the Patent Office.  He has successfully represented Patent Owners in defeating Petitions for Inter Partes Review as well as in Inter Partes Review trials, which have led to successful resolutions of co-pending litigations for his clients.  He has also successfully utilized other Patent Office proceedings on behalf of clients to achieve successful litigation or other strategic outcomes, such as Ex Parte Reexaminations.

John is a past President of the Michigan Intellectual Property Law Association and is currently co-chair of the Intellectual Property Section of the Federal Bar Association for the Eastern District of Michigan.  John, his wife Jenny, and two daughters live in Southeastern Michigan near Ann Arbor where John graduated with a Mechanical Engineering degree and competed on the Michigan track team.

John is a Member in our Troy office and may be reached at 248-433-7262.

Friday, April 14, 2017

Dickinson Wright has been retained to represent Teva Pharmaceuticals

By: John Desmond


John Desmond of Dickinson Wright has recently been retained to represent Teva Pharmaceuticals, USA, Inc. in a patent infringement lawsuit filed against it by biopharmaceutical company Amarin in the United States District Court for the District of Nevada.  In the lawsuit, Amarin is seeking to enjoin Teva from marketing generic versions of Vascepa before the last to expire of the asserted patents in 2030.  The case is in the early stages and has been consolidated  for pretrial proceedings with two other similar cases filed by Amarin in the District of Nevada.  Dickinson Wright is co-counsel for Teva along with the Washington D.C. office of Sterne Kessler.
 
 


John Desmond is a Member in our Reno office.  He may be contacted at 775-343-7505.

Tuesday, April 11, 2017

ITC Opens the Door Wider To Non -Practicing Entities


By: Salina Hamilton

 
In a recent ruling, the International Trade Commission permitted a non-practicing entity to rely on the activities of its licensee to establish the “economic industry” prong of the domestic industry requirement.    In Investigation 337-TA-1025, Complainant Silicon Genesis Corp alleged that Respondent Soitec, SA, infringed its patents for silicon-on-insulator wafers.  After conducting a full evidentiary hearing, ALJ Mary Joan McNamara found that Silicon Genesis had satisfied the “economic prong” of the domestic industry requirement through the significant investments in equipment, research, and development by Silicon Genesis’s licensee—SunEdison Semiconducter Ltd.—which was neither a respondent nor a complainant in the ITC investigation.  Though the ITC has long recognized that a licensee’s activities can be used to satisfy the domestic industry requirement, this recent ruling opens the door wider to NPEs by providing a potential backdoor into the ITC for NPEs who would otherwise be barred by lack of a domestic industry.  It also serves as a warning to licensees that could be dragged into the discovery process of costly ITC investigations by their NPE licensors in order to establish the economic prong of the domestic industry requirement.  As such, it should be a point of careful consideration for attorneys when drafting patent licenses for either NPEs or their licensees or when drafting ITC complaints.

Read more here.

Thursday, April 6, 2017

U.S. Supreme Court “Clarifies” Multi-Component Indirect Infringement



 
In the recently decided case of Life Technologies Corp. v. Promega Corp., 580 U.S. __ (2017), the Supreme Court evaluated when a party that provides some part – but not all – of a patented invention can be liable for induced infringement. The Court ultimately reasoned that the phrase “substantial portion” found in 35 U.S.C. § 271(f) is quantitative (referring to the number of components), rather than qualitative (referring to the component’s importance to the overall invention).  In short, a “substantial portion of the components” means that there must be “more than one component.”   

Life Technologies involved litigation over U.S. Reissue Patent No. RE 37,984 (“the RE‘984 Patent”), which covered a five-component invention that, in combination, forms a toolkit used to copy DNA profiles. The RE‘984 Patent’s exclusive licensee was Promega Corp., who granted a sublicense to Life Technologies, allowing it to manufacture and sell the toolkits only to law enforcement entities worldwide. Life Technologies, however, breached the license agreement by selling the toolkits to the clinical and research markets – i.e., outside the law enforcement field. Promega responded by filing a patent infringement action against Life Technologies as it was not licensed to sell to this market.

As a general rule, United States patent law is territorially limited and extraterritorial activity will not establish infringement in the United States. Here, Life Technologies manufactured all but one of the toolkit’s components in the United Kingdom; with a single component being manufactured in the United States. Accordingly, Life Technologies argued that foreign conduct was not actionable under United States patent law. Section 271(f), however, provides an exception to the general principle, allowing patent-infringement liability where – as was argued here – a company:

supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United State.

(emphasis added). In short, Section 271(f) allows patent-infringement liability to be imposed on a company that exports from the United States “all or a substantial portion of the components of a patented invention,” provided that (i) the exported components are combined overseas and (ii) the foreign combination would infringe the U.S. patent if that combination occurred in this country. In other words, Life Technologies’ liability hinged upon whether or not its single component, manufactured in the United States, constituted “a substantial portion” of the patented toolkit.

At trial, the jury found in favor of Promega but the district judge reversed, holding that “a substantial portion,” as used by Section 271(f), did not embrace the supply of a single component. On appeal, however, the Federal Circuit reversed the district court’s holding, reasoning that the word “substantial” is qualitative and that the component need only be “important or essential” to the multicomponent invention to satisfy Section 271(f).

Thereafter, the Supreme Court granted certiorari to determine the limited question of whether a party that supplies a single component of a multicomponent invention for manufacture abroad can be held liable for infringement under Section 271(f). Holding that it cannot, the Court focused on the statute’s text, noting that the phrase “substantial portion” modifies the phrase “of the components of a patented invention.” Had the Legislature intended “substantial” to describe quality and not quantity, there would be no reason for it to have included the phrase “of the components.” Instead, the Legislature would have written the statute to read “all or a substantial portion of . . . a patented invention. . .” It did not. Accordingly, the Court held that a single component cannot constitute a “substantial portion” pursuant to Section 271(f).

Despite its superficial simplicity, the Supreme Court’s decision leaves the vast majority of Section 271(f) infringement actions unresolved.  While it is clear that the “opinion establishes that more than one component is necessary, [it] does not address how much more.” (J. Alito and J. Thomas concurring). Thus, the question of “how much more” remains inherently qualitative and will likely require further clarification from the Court.  Presently, however, litigants may rest assured that manufacturing and exporting a single component of a five-component product does not constitute an infringing act under Section 271(f).

Please click here to read the opinion. 

Franklin Smith and Brandon Debus are Associates in our Troy Office.  Franklin may be contacted at 248-433-7393 and Brandon may be reached at 248-433-7674 .

Wednesday, April 5, 2017

The Bizarre Story of Andy Dixon and John Holcomb


Paul Bain (Partner, Toronto) was recently quoted on Vice for the article, “Imposter or Originator: “The Bizarre Story of Andy Dixon and John Holcomb regarding accusations of fraud and creative theft are fueling an art world scandal.
 

For Andy Dixon, it's no longer an issue of an artist whose homage has fallen too close to the line. It's now become a legal battle for the preservation of an aesthetic and commercial career he says is years in the making. "Our client is deeply concerned; there is a line between on the one hand paying homage or legitimate appropriation, and on the other willful taking of someone's entire way of painting. The line is crossed when there is imitation that is substantially similar to the original," Dixon's lawyer Paul Bain wrote.
 
 
 

Contact Paul Bain at the Dickinson Wright Toronto Office, 199 Bay Street, Suite 2200, Commerce Court West, Toronto, ON,  M5L 1G4,  Phone:  416-777-0101 / Fax:  844-670-6009, or email: pmcbain@dickinsonwright.com.