Author Archive | Eric Waltmire

Convinced by Patent Pending or Will They Search Before Licensing Your Invention?

When you approach a potential purchaser or licensee of your invention, the potential purchaser or licensee might do their own research to determine whether they think you are likely to obtain a patent. They can do that in the same way that you can do it, by performing a novelty search on your invention.

Consider again the case of Penalty Kick Management v. Coca-Cola Company, 318 F.3d 1284 (11th Cir. 2003), which I discussed yesterday. Penalty Kick Management (PKM) wanted to license its Magic Windows invention to Coca-Cola. And Coca-Cola was interested to the point of proposing to pay PKM $1 million plus a per label royalty for an exclusive global license. Not bad.

The Magic Windows invention consisted of “a scrambled message on the inside of a beverage container …

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Why They Won’t Sign Your Nondisclosure Agreement

You want to pitch your invention to a company. Sure, its possible they won’t sign your Nondisclosure Agreement (NDA) because they want to steal your invention. But, how could they want to steal your invention if they know little or nothing about it?

Even if they know a little about the general subject area and are interested in learning more, there may be a less nefarious reason they won’t sign the NDA. And that reason arises from the old saying “the left hand doesn’t know what the right hand is doing.”

If you approach a larger company, the person or department you are talking to might not know what another person or department in the company is doing or has done in a particular technology space.

The left-hand-right-hand-saying above is generally …

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The Case for Excluding Solely Oral Disclosures from Nondisclosure Agreement Coverage

“If the orally disclosed confidential information is important, then the disclosing party probably should confirm it in writing to protect itself from the hell of trying to prove a solely oral disclosure.”

Nondisclosure Agreements (NDAs) sometimes specify that the confidentiality obligations cover disclosures in any form, whether that be oral or written. On one level this make some sense. Why should it matter how I disclose it to you? If its confidential, you need to keep it secret.

However, practically, enforcing or defending an alleged breach of an NDA in connection with a solely oral disclosure can be difficult and expensive. Therefore, solely oral disclosures may be completely excluded from NDA coverage. However, it is more common to allow coverage of oral disclosures, but only if they are confirmed in writing to …

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Problems with Nondisclosure Agreements: Lack of Subject Matter Limits

Can you send me a form Nondislcosure Agreement (NDA)? Lawyers get this question often. But, ideally you don’t want a form NDA, you want one or more NDAs tailored to the situations where they will be used.

People often sign NDAs without thinking too much about them. But not all NDAs are the same. And there are situations where an NDA can come back to bite you in ways you might not expect. Let’s look at the subject matter scope of an NDA.

Many form NDAs will have very broad definitions of what is considered confidential information that should not be disclosed. You might see something like:

Confidential Information shall mean any data or information that is competitively sensitive material and not generally known to the public, including, but not limited to,

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Burstein on Determining Relevant Article of Manufacture for Design Patent Damages

The US Government proposed, and the Apple v. Samsung trial court adopted, a four factor test to determine the “article of manufacture” for calculating total profit damages for design patent infringement. But, Professor Sarah Burstein says the four factor approach “is built on a legally and logically flawed foundation and … [the] proposed test—like any other multi-factor, factual inquiry—will increase the cost and complexity of design patent litigation without being likely to produce more just or more predictable outcomes.”

Instead, Burstein proposes an alternative method of determining the relevant article in her paper titled, The “Article of Manufacture” TodayThere she makes the case that courts should adopt a historical definition of “article of manufacture.” After reviewing the history of the term she concludes:

…for a design patent claiming a design for surface ornamentation, the

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Four Factor Test for Determining the Article for Total Profit Damages in Apple v. Samsung

USD0618677_fig1In a 2016 decision in Samsung v. Apple, the Supreme Court determined that the relevant “article of manufacture” for calculating total profits damages for design patent infringement could be either (1) the product (e.g. the Samsung phone) sold to a customer or (2) a component of that product.

Previously, the “article of manufacture” for calculating total profits damages for design patent infringement was the entire product sold to a customer. The profits to the entire product are usually likely to be greater than profits to a component of the entire product.

The case was sent back to the trial court and a new trial was ordered on damages. In October 2017, the trial court ruled that a four factor test would be used to determine what is the article of manufacture for …

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Total Profit Damages on Entire Product or Component for Design Patent Infringement

USD0593087_Fig1In 2007, Apple released its first generation iPhone. After Apple released its iPhone, Samsung released as series of smartphones “that resembled the iPhone.” In 2011, Apples sued Samsung alleging various infringement claims, including that Samsung’s smartphones infringed Apple’s D593,087, D618,677, and D604,305 design patents. A jury awarded Apple $399 million in damages for design patent infringement, the entire profit Samsung made from its sale of the infringing smartphones.

Samsung appealed arguing “that the profits awarded should have been limited to the infringing ‘article of manufacture’—for example, the screen or case of the smartphone—’not the entire infringing product’—the smartphone.” The court of appeals rejected that argument reasoning that “’limit[ing] the dam- ages’ award was not required because the ‘innards of Samsung’s smartphones were not sold separately from their shells as distinct articles of …

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Churchill on Active Rest and Deep Play as a Complement to Work

“the tired parts of the mind can be rested and strengthened, not merely by rest, but by using other parts.” -Winston Churchill.

RestDuring the First World War, Winston Churchill proposed a naval attack on the Dardanelles, a strait that provided a sea route to the Russian Empire. But the attack was repelled. Following the navel attack, an amphibious landing was launched on the Gallipoli peninsula of the Dardanelles with the aim of capturing the Ottoman capital of Constantinople. But after eight months of fighting and many casualties on both sides, the land campaign was abandoned.

Churchill was demoted after the Gallipoli campaign. He then resigned in November 1915 and left London for the Western front.

Alex Pang reports in his book Rest: Why You Get More Done When You Work Less

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Sharply Different Meanings of Marks Avoids Confusion

PrayThenSlayWhen considering whether two trademarks are similar for conflict purposes, the marks are considered in their entireties, including their appearance, sound, and commercial impression. Sometimes one of those attributes stands out to distinguish the marks even when similarities exist in the other attributes.

Manuel Tellez applied to register the mark SLAY OR PREY for apparel. The USPTO Examining Attorney refused registration based on a likelihood of confusion with Registration no. 5,066,234 for the mark PRAY THEN SLAY (and design) for t-shirts.

On appeal, the Board reversed the Examining Attorney’s refusal to register, finding the two marks had sharply different meanings.

The Board acknowledged that the appearance and sound of the marks were somewhat similar because (1) the marks shared the term “slay” and (2) “pray” and “prey” of the marks were …

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Designating Different Trademark Classes Does Not Avoid a Conflict Between Marks

REALORANGEAnn Peterson applied to register the word-and-design mark REAL ORANGE for Christian ministry services in class 45.

The reThink Group, Inc opposed the registration based on its prior registration for the word-and-design mark of ORANGE for electronic downloadable publications and prerecorded media, print material, and educational services related to church ministry, among other services in class 9, 16, and 41. 

One factor in determining whether there is a conflict between two marks is whether the goods/services provided under the respective marks are similar.

ORANGEPeterson argued her services were different from the goods and services of reThink’s mark because they were in different International Classes: class 45 in Peterson’s case and Classes 9, 16, and 41 in reThink’s case. Each trademark applicant must (1) provide a description of goods and/or

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