Trademark, Intellectual Property Litigation, and Patent Updates for the Non-U.S. Counselor

1. Trademark, Intellectual Property Litigation, and Patent Updates for the Non-U.S. Counselor Brad R. Maurer and Louis T. PerryAbigail M. ButlerKevin ErdmanFriday, June 5, 2009

2. United States Trademark Practice Considerations for the International Client Brad R. Maurer and Louis T. Perry

3. U.S. Trademark Prosecution • Historic U.S. Rule: • Trademark owners must use a mark in commerce before they can obtain a federal registration • Registration recognizes rights that a trademark owner has already created through actual use of a mark in “commerce”

4. U.S. Trademark Prosecution • Exceptions: • Section 1(b) Applications (“Intent to Use”) • Section 44(e) Applications (based on foreign application or registration) • Section§ 66(a) (Madrid Protocol extensions) • But …importance of actual “use” lingers • use must be shown to maintain the registration • use must exist to enforce the registration

5. U.S. Trademark Prosecution: Use and Maintenance • International registrants should commence use of a mark in U.S. as soon as possible • Statutory presumption of abandonment after three years of non-use (risk of cancellation?) • International registrants, like a U.S. registrant, must file affidavits of use to maintain a registration

6. U.S. Trademark Prosecution: Use and Maintenance (cont’d) • Affidavits of Use: • When? Between the fifth and sixth year following the registration date and at the end of each successive ten-year period • Why? U.S. protection focused on actual use, therefore requirement to confirm ongoing use of the mark in U.S. commerce for every good and/or service listed Consequences: • Failure to file affidavit of use results in cancellation of a registration in its entirety • Failing to file an accurate affidavit of use exposes the registration to potential cancellation for “fraud.” See Medinol Ltd. V. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003)

7. U.S. Trademark Prosecution: Pitfalls for the Madrid Registrant • Affidavit of Use and Renewal: • For a U.S. registration, renewal/use filed together • Under Madrid, renewal takes place at IB • …BUT TO MAINTAIN THE U.S. EXTENSION, AN AFFIDAVIT OF USE MUST ALSO BE FILED WITH USPTO TEN YEARS AFTER REGISTRATION Consequences: • Failure to file affidavit of use = cancellation • Late filing grace period also different for a Madrid Extension: no grace period for 5/6 year, and only 3 months for 10 year • Filing window difference at 10 year(6 months vs. 12 months)

8. U.S. Trademark Prosecution: Pitfalls for the Madrid Registrant • Other Differences from Section 1 and 44 based applications: • Not eligible for Supplemental Register • Vague description of goods/services and International Classification by IB • Response to Office Action due within 6 months regardless of when IB forwards (first OA sent to IB) • No possibility to amend mark (Section 1 and 44 possibility for amendment if not “material”)

9. U.S. Trademark Prosecution: Suggestions for International Owners • Current registrations Audit U.S registration portfolio considering use and fraud. If an important mark appears vulnerable, consider filing an additional application with a goods and services description that provides the required coverage but does not highlight fraud vulnerability in prior registration • Looking forward • Registration under § 44(e) and § 66(a) does not relieve the trademark owner of its responsibility to demonstrate actual use in U.S. commerce with respect to the listed goods and services—ENFORCEMENT DEMANDS USE ANYWAY • Because of classification restrictions, foreign trademark owners should consider filing applications for their most significant marks directly in the United States

10. U.S. Trademark Prosecution: Look Before Leaping • Pre-filing Search and Opinion • A comprehensive search conducted by a reputable vendor is one of the tools available to assess the risk of whether similar trademarks are registered or used in connection with similar goods or services by a third party (no guarantee, however) • Comprehensive searches can cost approximately $500 for word marks and upwards of $1,000 for design marks • The cost of an analysis of the search results and the preparation of an opinion letter varies with the extent and nature of the results, but generally ranges in between $1,500 and $3,000.

11. U.S. Trademark Prosecution (cont’d) • Trademark watch service • Notice of potentially conflicting trademark applications and registrations when published for registration • Monitor status of applications of interest

12. Enforcing Rights: Protecting a Mark • Administrative: Opposition and Cancellation Proceedings • Filed with the TTAB • Damages are unavailable – relief is limited to cancellation or refusal to register the mark • Only concerned with registration of a mark • Judicial: U.S. Courts • Injunctive relief, statutory damages and/or attorneys’ fees, other damages • Typically filed with federal district courts • Criminal penalties for trademark counterfeiting

13. Enforcing Rights: Protecting a Mark • Cease and Desist Letter • Contents and possible declaratory judgment • Be willing to carry out threats or lose credibility • Likelihood of Confusion • Multi-factor test • Will you need a survey, and at what cost? • Intent

14. Enforcing Rights: Protecting a Mark • Anti-Dilution Statutes for Famous Trademarks • Identical or similar mark • “Blur” the capacity of the famous mark to identify and distinguish its goods • “Tarnish” the reputation • No need to show likelihood of confusion

15. QUESTIONS?

16. Considerations In U.S. Patent Litigation Abigail M. Butler

17. Major stages of U.S. Patent Litigation Jurisdictional Requirements and Foreign activities that may infringe U.S. patents Strategic considerations for co-pending patent litigation

18. In a Nutshell… • Time Consuming • D. Ct.: 3-5 years • Appeals and Returns: 7-10 years • Expensive • Average cost of $2.6M if $1M or more is at risk

19. Pleadings • Discovery period • Claim construction and Markman proceedings • Summary Judgment and other pretrial motions • Final pretrial proceedings • Trial

20. Pleadings • Complaint • Answer to Complaint • Motions to Dismiss • Lack of personal jurisdiction • Lack of subject matter jurisdiction • Adequacy of pleadings

21. General Jurisdiction • Most common way foreign defendants are pulled into U.S. • Requires systematic & continuance contacts • Prior business contacts • Activities of domestic subsidiary

22. Jurisdiction Based On Internet Use • Sliding Scale - Interactive v. Passive

23. Discovery • Interrogatories • Document Requests • Depositions • Site Inspections • Expert Discovery

24. International Discovery Requests • 28 U.S.C. § 1782 governs production of evidence in the U.S. for use in a foreign or int’l tribunal • Twin Aims: to provide efficient means of assistance to participants in int’l litigation in U.S. Federal Courts and to encourage similar means of assistance from foreign countries

25. International Discovery Requests • Allows Court to order deposition testimony and production of documents • May be available to private international arbitration proceedings • Parties to an international arbitration agreement may wish to expressly preclude

26. Claim Construction & Markman Proceedings • Markman v. Westview Instruments • Judges should perform claim construction • Vitronics Corp. v. Conceptronics • Introduced hierarchy of evidence to be used in construing claims • Cybor v. FAS Technologies • Federal Circuit overrides District Court

27. Timing Considerations • Typically done before or in conjunction with Motions for Summary Judgment • What is considered? • Words themselves • Patent specification • File history • Extrinsic evidence • Involves exchange of briefs and a hearing

28. Summary Judgment • A motion for judgment without a trial • Proper if undisputed facts warrant judgment as a matter of law • Infringement, validity, enforceability

29. Final Pretrial Proceedings • Witness & Exhibit lists • Stipulations • Motions in Limine • Trial Brief No surprises!

30. Trial • Jury Selection (voir dire) • Opening Arguments • Witnesses (fact and expert) • Closing Arguments • Deliberations

31. Creativity Is Rewarded • A picture is worth a million words (and maybe a million dollars) • Select a theme and stick to it • Shotgun v. Sniper-rifle

32. Tell A Story • Unify and explain why people did what they did • Motivate the listener

33. Judicial Research • Experience level, e.g., “Rocket Docket” • Education • Utilize local bar

34. Appeal Route • Federal Circuit, circa 1982 (Fed. Cir.) • Jurisdiction based solely on subject matter rather than geographical location • Provides uniformity • Binding precedent throughout U.S., unless superseded by Supreme Court or by applicable changes in the law

35. Foreign Activities That May Raise U.S. Infringement Issues

36. Making, using, or selling a U.S. patented product or process in another country does not, by itself, infringe a U.S. patent, but….

37. Importing a patented product into the U.S. is an act of direct infringement • Includes products made by a U.S. patented process Remedy is Damages and/or Injunction

38. 2 Ways To Stop Infringing Imports • Litigation in federal district court • Filing a proceeding with the International Trade Commission

39. ITC Proceedings v. District Court Litigation • Personal Jurisdiction • District Courts must have personal jurisdiction over the alleged infringer • ITC has national in rem jurisdiction over all products imported into the U.S.

41. Infringement In The U.S. WithSales Outside The U.S. • May be awarded damages based on sales of a patented product made outside U.S. when infringer exports a component of the product abroad • Allows the U.S. patentee to avoid the expense and risk of filing multiple lawsuits in different countries, while still recovering sales where no patent protection was obtained

42. Strategic Considerations for Co-Pending Patent Litigation

43. Statements made under oath in one proceeding may be admissible elsewhere • Molins PLC v. Textron, Inc. • Jurisdictional Differences in Claim Construction • Improver Corp. v. Remington Consumer Prods. • Effect of Foreign Judgments and Settlements • Vas-Cath, Inc. v. Mahurkar

44. Thank you!

45. FICPI Patent Update By: Kevin Erdman Partner, Baker & Daniels LLP

46. Substantive Patent Update • Design Patent change in infringement • Old standard “Point of Novelty” • New standard “Ordinary Observer” • Lay Jury prominent in decision • Favors Design Patent Owner

47. Substantive Patent Update • Evolving Nonobviousness standards • KSR plays out in different technologies • Chemical • Mechanical • Electrical • Biotech • Software

48. Substantive Patent Update • Written description for “means plus function” elements and ordinary elements under the doctrine of equivalents • Courts are holding patent terms to explicit definitions • Single embodiments often constrain definition of claim terms • Multiple embodiments and explicit disclosures of equivalent structures important in specification

49. Procedural Patent Update • Tafas update, what happened to the “new rules” • Court banned limit on continuations • Court allowed other aspects of “new rules” • Patent Office withdrew “new rules” • Further rules likely to shift burdens and costs to patent applicants

50. Procedural Patent Update • Information Disclosure Statements • Include English language equivalents where possible • McKesson decision held withholding information from related prosecutions (office actions and responses) was inequitable conduct • Obligation to report on related proceedings including office actions and responses