Imagine That IP Law Blog

Issue preclusion and claim preclusion are two strategic defenses that an accused infringer can rely upon if that party was previously cleared of patent infringement.

Issue preclusion, or collateral estoppel, precludes a party from relitigating an issue actually decided in a prior case and necessary to the judgment. Under claim preclusion, or res judicata, a judgment on the merits in a prior lawsuit bars a second lawsuit involving the same parties or their privies based on the same cause of action. Claim preclusion also bars claims that could have been brought in the first action ... Read More ›

Many consumers and companies are familiar in some form or another, but until a recent Federal Circuit ruling, companies and individuals looking to pursue tongue-in-cheek or risqué marks faced an uphill battle in obtaining federal trademark registrations. On December 15, 2017, the Federal Circuit ruled in In re Brunetti¹ that the bar on registering immoral or scandalous trademarks under the Lanham Trademark Act, Section 2(a), 15 U.S.C. § 1052(a), “is an unconstitutional restriction of free speech.”

Appellant, Erik Brunetti, founded the clothing brand “fuct” in ... Read More ›

Divided infringement, or infringement carried out by multiple actors, seemed like an easy escape from accusations of direct infringement for entities teaming up to perform different steps of a patented method. That is until the Federal Circuit ultimately expanded the scope of direct infringement in the recent Travel Sentry, Inc. v. Tropp¹ case. The Federal Circuit’s decision expanded the scope of direct infringement by loosening the standard used to determine whether all steps of a claimed method are attributable to a single entity.

In the midst of evolving case ... Read More ›

THE COLLABORATIVE SEARCH PILOT PROGRAM

In an attempt to expedite and promote the quality of patent application examination, the United States Patent and Trademark Office (USPTO) began a Collaborative Search Pilot (CSP) program in partnership with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO). The program is designed to provide USPTO examiners with the best prior art by collaborating with examiners at the JPO and KIPO that are examining corresponding Japanese and Korean patent applications.

In the initial CSP program, examiners shared and ... Read More ›

In 1886, Dr. John Pemberton created the formula for Coca-Cola.¹ The formula for Dr. Pemberton’s beverage sensation did not even make it onto paper until 1919 when the recipe was secured in a vault where it remained for 86 years until its relocation to an exhibit at The World of Coca-Cola.² The Coca-Cola Company formula, one of the world’s most famous trade secrets, has been kept secret for more than 125 years.³ While trade secrets enjoy certain protections, such a formula could potentially benefit from patent protection. With its long history, the question remains: does ... Read More ›

Kids are so indulged these days! They get to play with a new toy known as a “fidget spinner,” in contrast to previous generations who grew up creating their own, low-quality “fidget spinners” by spinning a ruler around the tip of a pencil. The official fidget spinner, the hottest toy fad of 2017, is a two or three prong gadget with a bearing in the center which allows the contraption to simultaneously balance and spin utilizing one or both hands. Although, as the name suggests, the toy is ideal for those who cannot remain still, all ages and levels of fidgeters are buying the “fidget ... Read More ›