This particular change allows a commercial manufacturer mostly to avoid having to face patent infringement liability from a new comer that makes a modest improvement on a patented product or process without having to overcome an obviousness rejection. This new defense allows for an additional means for a small or large manufacturer to avoid patent trolls.

In a typical patent lawsuit, one of the largest challenges facing defendants is determining the nature of the claimed invention and the commercial embodiment of the infringing device or product.  Once, the lawsuit is initiated the biggest mistake a defendant is overlooking the availability of competing or substitute devices or products.  Often times a competing or substitute product or device will be able demonstrate anticipating, obviousness, or prior commercial use.

Therefore, the AIA has actually provided a third category of prior commercial use that is narrower than the public use exemption.  Courts and practitioners will still have to struggle with determining how to apply and interpret the “prior commercial use.”

a) Horizontal or vertical price fixing arrangement;

b) Collusive bidding;

c) A tying arrangement;

d) Refusals to deal with another firm; and

e) Below cost pricing or predatory pricing.

All of these types of arrangements involve heavy issues of intent.
Courts apply a rule of reason and per se violation rule to these types of
claims. However, there are certain common exemptions, such as for patent
owners, labor unions and agricultural organizations.

If you have any concerns or questions relating to these matters,
then please feel free to contact our office.

The Seventh Circuit confirmed that ownership of intellectual property under a joint venture agreement is determined by the terms of contract. In this case, Affymax and Ortho-McNeill-Jannssen Pharmaceuticals and Johnson and Johnson Pharmaceuticals Research and Development, LLC, had entered into a joint venture agreement that stated that ownership of a patent tracked the invention of the patent.

If a particular patent was invented jointly by both parties, then that patent and any continuations, divisional, internationals or family of patents developed from those patents would be owned jointly both parties. However, if only one of the parties invented the patent at issue on its own, then that partly alone would own the family of patents stemming from that particular patent.

The Court stated in these types of cases, where ownership is agreed to in the contract, the ownership of the IP is governed by the terms of the contract-not by the Copyright Act, Lanham Act or the Patent Act. Moreover, the Seventh Circuit, stated that the Arbitrator’s awards unlike ALJ or Court awards do not have to specify in detail each point or issue considered.

The fact a particular issue or basis is not referenced in the award does not necessarily warrant overturning the award. For additional information: see Joint Venture Agreements. If you have any concerns or questions about drafting, negotiating, or enforcing your joint venture agreements, then please feel free to contact us.

Unfortunately, there are too many changes to note them all, but
here is a summary of some noteworthy changes:

1) Striking the publication, public use and on sale bars for
inventions made with federal assistance;

2) Permitting for derived patents and creating derivation
proceedings for a subsequent inventor;

3) Modifying the inventor’s oath or declaration requirements to
permit reliance on prior filed or substituted oaths in earlier patent filings;

4) Permitting filings by an assignee of the inventor and issuance
of the patent to the assignee or real party in interest with sufficient notice
to the inventor;

5) Creating a prior commercial use defense to claims of patent infringement (requires clear and convincing evidence);

6) Expressly authorizing written joint research agreements and
reliance on filings by the first inventor’s filings for effective filing dates;

7) Creating common ownership for assignees of inventions created
under a joint research agreement;

8) Permitting removal of cases with Patent, Plant Variety and Copyright Act claims to federal district courts;

9) Modifying the fees schedules for patents and trademarks (including
fees for an expedited examination of patent applications);

10) Creating a satellite office for the USPTO in Detroit, MI;

11) Modifying the “Marking” requirement for patents; and

12) Creating a transitional program for business method patents.

In addition, the America Invents Act requires several studies
relating to a variety of matters, including but not limited to the following:
implementation of the act, genetic testing, on international protections for small businesses, and the diversity of patent applicants. It also permits the Director of the USPTO to appoint a Ombudsman of Patents for Small Business Concerns.

These changes may have a significnat impact on your research and development and business operations.

For more see the full America Invents Act here:

America Invents Act

However, if a contract is finalized after termination, then it may still govern the employer’s obligations to pay wages or compensation.  If the individual is properly qualified as a sales representative, then the payment of commissions will be governed by the contract and the Sales Representative Act for Illinois or state of operations.

Without, a proper sales representative contract there is a good chance the relationship will be construed to be one of at will employment.  Unfortunately, in cases of a default at will employment relationship, employers risk wage act claims. In addition, the employer may have to make payroll contributions, unemployment compensation, and worker’s compensation obligations.

If you have any concerns or questions, about sales representatives, sales employees and the payment of commissions, then feel free to contact us.

In some cases, employers and their handbook’s disciplinary and severance policies grant many rights to employees that are not provided under the at-will employment rule.  Moreover, many amendments or updates to an employment handbook or policy are rendered ineffective and inapplicable due to a lack of consideration for the amendment or updated policy. 

Often new policies relating non-competition, non-solicitation, and assignment of intellectual property rights are unenforceable for violation of the consideration requirement.  This is particularly an issue when you have turnover of employees or a growth event for the employers.  The growth in the number of employees may require compliance with the Family Medical Leave Act, the Worker Adjustment and Retraining Act, and a variety of similar regulations. 

Thus, consulting an employment law attorney prior to the issuance of an employment handbook or a revision or amendment to an employment handbook may assist in compliance without creating additional litigation risks.  

If you have any concerns or questions regarding properly drafting an employment handbook or policy, then please do not hesitate to contact us.

In a recent Seventh Circuit opinion, the Court, affirmed a rule 68 Offer of Judgment entered against Goldman by Premium Plus Partners.  Goldman obtained information about the suspension on the sale of 30 year T-bonds from Youngdahl who acquired the information from Doug an attendee at the Treasury Department’s meeting.  The Department of Treasury had placed embargo on the information, until an announcement was made the next day at 10 a.m. 

In the interim, Goldman Sachs purchased some 30 year T-bills and made a substantial profit from the advance actions that it was able to take.  After the SEC initiated a Fraud Complaint, Premium Plus Partners and a variety of other sellers and short positions sued Goldman Sachs for fraud.  Goldman Sachs offered Premium Plus Partners a rule 68 offer of judgment for the amount it wanted plus interest. 

The Seventh Circuit affirmed the entry of the rule 68 offer of Judgment on behalf of Premium Plus Partners and the denial of Premium Plus Partners request to continue to prosecute the matters on behalf of others.  In doing so, the Seventh Circuit, reaffirmed that a litigant may not continue to prosecute a matter on behalf of others after accepting an offer of judgment.  Moreover, it held that Tomlison a class litigant could not continue to prosecute the matter, because of the two year statute of limitation for fraud claims.

Understanding the nuances of fraud claims under the Commodity Exchange Act, the Securities Exchange Acts, and the abuses an investor can acquire from advance information with market power from large positions in a holding.  If you have any concerns or questions about prosecuting or defending fraud claims based on the trading of commodities or securities, then please do not hesitate in contacting us. 

For more details see:  Premium Plus Partners v. Goldman Sachs

In a recent Illinois Supreme Court opinion, the court had to decide on whether on individuals or a class of individuals could pursue claims against ComEd for lack of service during the storms.  Sheffler on behalf of himself and a putative class sought to recover monies, reparations and damages due to flooding, spoliation of food and related matters from the recent disruptions in ComEd’s services. 

Sheffler and the putative class asserted claims for breach of contract and negligence by ComEd in providing and restoring service during the recent storms.  However, the circuit court dismissed the complaint holding that the complaint failed as a matter of law, because of the following:

a) it lacked jurisdiction for such claims against public utilities, because they were governed by the Illinois Commerce Commission;

b) the claims failed as a matter of law, because infallible service is not required only reasonable and adequate service;

c) ComEd’s tariff limited damages for power outages during storms and such matters were best left to the Illinois Commerce Commission; and

d) ComEd was not required to provide priority to restoring power to individuals that were on life support.  

Suing a public utility for damages related to storms in court is difficult.  However, you may be able to recover damages relating to the tariff provided by the utility company or pursue such claims with the Illinois Commerce Commissions.  Unfortunately, claims for consequential damages relating to flood damage, food spoliation and related matters are likely to be barred by the Moorman doctrine.  

Here is the recent Sheffler case.   No claims Against ComEd in Circuit Court

A Groupon user (Adam Dremak) bought a certificate for Norstrom’s Rack and was required to use it within 5 days, but failed to do so.  The Groupon user and his attorneys are claiming that the coupon amounts to a gift certificate and is subject to a five year right of redemption.  Groupon has responded in other lawsuits of this type with the offer to redeem the coupon at face value, if it is not used within the five day period. 

However, Adam is now seeking class certification for his claim. We will see what Groupon says in its response, but this may have a huge impact on Groupon’s valuation and method of conducting business.  If you have any concerns or questions relating to this matter, then please feel free to contact us.

Intent to use applications must be supported with some form of corroborative documents or records that demonstrate a desire to use the mark in each class that you include in the initial application.  Use based applications must be supported by specimens and records demonstrating use of the mark as claimed in each class that you include. 

If you include a class in an initial application or a section 8 affidavit and the mark was not being used in that class of goods or services, then it is tantamount to fraud upon the USPTO.  See Turbo Sportswear v. Marmot Mountain.  This type of fraud cannot be cured by simply deleting the class after it has been filed. 

Moreover, the fraud can be a basis for invalidating the entire trademark certification.  This can often ruin an entire branding or marketing strategy.  If you have any concerns or questions about any of these matters, then please feel free to contact us.