News

• Meet the Women of Tarter Krinsky & Drogin: Intellectual Property Counsel Rachel Lin
  

  We have been celebrating the brilliant women of Tarter Krinsky & Drogin all Women’s History Month long. They are integral to the success of our firm, clients and community. In this installment, learn more about Intellectual Property Counsel Rachel Lin.

• Amy Goldsmith and Rachel Lin Quoted on the impact of Brexit on IP Rights for Inside Counsel
  

  Amy Goldsmith and Rachel Lin were quoted in “Brexit’s Impact on Intellectual Property Rights” published by Inside Counsel.

• Rachel J. Lin Joins Intellectual Property Practice
  

  Tarter Krinsky & Drogin LLP is pleased to welcome Rachel J. Lin as a Counsel in the Intellectual Property Practice. 

Events

• Rachel Lin to Moderate a Panel on Women’s Entrepreneurship Programs at AUTM Annual Meeting
  

  On February 13, Intellectual Property counsel Rachel Lin will moderate a program titled, “Best Practices in Women’s Entrepreneurship Programs” at the Association of University Technology Managers (AUTM) annual meeting in Austin, TX. During the program, Rachel and her fellow panelists, which include representatives from two state universities and a female entrepreneur, will discuss the growing need to develop new strategies to increase the number of women founders commercializing university research.

• Firm Partners with Lawline on “Business in a Box” Series
  

  On October 27 Tarter Krinsky & Drogin partnered with Lawline to host “Business in a Box” – a one-day series of CLE presentations designed to address the top legal issues facing emerging companies in growing and protecting their businesses.

• Natural Ingredients May Be Patentable – No Heavy Lifting Required
  

  In an important decision for the personal care and ingredients industries, the U.S. Court of Appeals for the Federal Circuit recently vacated a district court decision that held patent claims invalid as being directed to non-patent eligible subject matter in Natural Alternatives Int'l v. Creative Compounds, LLC (Case No. 18-295).

• State University's Filing of Patent Infringement Action Waives Sovereign Immunity to IPR Proceedings
  

  The PTAB (Patent Trial and Appeal Board) of the USPTO recently issued a decision that a filing of a patent infringement action by a public university waives sovereign immunity to inter partes review (IPR) proceedings in the USPTO.

• U.S. Supreme Court Seriously Limits Forum Shopping for Patent Litigation in Unanimous Decision
  

  For close to 30 years, patent owners have been able to strategically select the best location for a patent litigation, assuming that the defendant sold the contested product in that location. Popular courts include the Eastern District of Texas and the Eastern District of Virginia. But not anymore... Last week, in a unanimous decision, the U.S. Supreme Court narrowed the possible venues for bringing patent infringement suits, holding that a defendant can be sued only as a "resident" of its state of incorporation, not in any state where it sells products. TC Heartland LLC v. Kraft Foods.

• Quantity - Not Quality - Counts for Patent Infringement: More Than One Component of an Invention Must be Supplied for Patent Infringement
  

  The U.S. Supreme Court recently held in a recent decision in Life Technologies Corp v. Promega Corp. that the "supply of a single component of a multicomponent invention for manufacture abroad does not give rise to § 271(f)(1) liability."

• Legal Alert: .SUCKS is Here: Can Your Brand Be Protected?
  

  With the goal of fostering public commentary, the new domain name .SUCKS was approved by ICANN. Despite objections from some in the IP community, the sunrise period for .SUCKS is now open; it runs until May 29th.

• Legal Alert: A New System For International Design Protection
  

  Design patents continue to grow in importance for many industries. If your company designs tangible products or packages, there is a new, efficient way to seek international protection for design features.

• Legal Alert: Alice Corp. v. CLS Bank's Effect on Business Method Patents
  

  The patent landscape has changed regarding business method patents.
  In the summer of 2014, the Supreme Court issued a decision in Alice Corp. v. CLS Bank which invalidated certain business method patents related to finance. The basis for the invalidation was that the patents covered an abstract idea not eligible for patent protection.

• Beware of the Boilerplate Series: "Defend, Indemnify and Hold Harmless"
  

  Many agreements include an indemnification clause typically using language like this: “Party A will defend, indemnify and hold harmless all claims, losses and damages against Party B related to its use of the Technology.”

• Beware of the Boilerplate Series: Defining Confidential Information
  

  In Non-Disclosure Agreements, there is often boilerplate language that includes trade secrets in the definition of “Confidential Information.” This seemingly innocuous language can lead to problems for the owner of the trade secrets.

• Beware of the Boilerplate Series: Limitation of Liability
  

  Be wary of giving up your rights for "lost profits." In most jurisdictions, there are two types of "lost profits": (1) those arising from general damages (recovery of money that a party agreed to pay under a contract); and (2) those arising from consequential damages (recovery of money lost based on other business arrangements). The first is generally easier to prove, but often a party in breach can be reasonably expected to pay the second.

• Beware the Boilerplate Series: Always Define the Meaning of "Intellectual Property"
  

  Clearly define the grant provisions of all of your IP contracts. If you want to transfer or receive "intellectual property" or "technology," ensure that these terms are well defined and unambiguous. Definitions matter! By making the contract terms clear, you can potentially reduce (or eliminate entirely) future litigation costs.