Forum-Selection Clause in Patent License May Thwart Licensee’s Efforts to Seek PTAB Review of Licensed Patents

In Dodocase VR, Inc. v. MerchSource, LLC, No. 17-cv-07088, 2018 U.S. Dist. LEXIS 48654 (N.D. Cal. Mar. 23, 2018), the U.S. District Court for the Northern District of California recently ordered a licensee withdraw petitions filed with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO) to challenge the …

Dority & Manning to Host Annual AIPLA Women in IP Global Networking Event

Dority & Manning is proud to be a part of the 11th Annual Women in IP Global Networking Event to be held on April 19th, 2018.  Various IP firms across the globe will host events to interact and network with fellow IP practitioners. During the meeting, the firms join a cross-country conference call with the …

Attorney-Client Privilege Remains Intact When Inadvertently Produced Invention Records Are Promptly Clawed Back

The United States District Court for the Central District of California recently held attorney-client privilege applies to a company’s invention record reviewed by a committee including persons other than lawyers when the primary purpose is to obtain legal advice. Cal. Inst. of Tech. v. Broadcom Ltd., CV 16-3714-GW, slip op. at 5 (C.D. Cal. Mar. …

Takedown Requests Directed to Non-Parties may not be Sufficient to Establish Personal Jurisdiction in Declaratory Judgment Actions

The United States District Court for the Central District of California recently held that personal jurisdiction for a declaratory judgment action does not exist when, in addition to sending a cease-and-desist letter, the defendant sends a takedown request that is directed to a non-party. Jobar Int’l Inc. v. Juka Innovations Corp., No. LA CV17-07441 JAK …

An Abandoned Office May Constitute a “Regular and Established Place of Business”

The United States District Court for the Middle District of Florida recently held that venue for a patent infringement lawsuit was proper even though the defendant closed its regular and established place of business in that judicial district “weeks before suit was filed,” reasoning that the delay in filing the complaint was not unreasonable. ParkerVision, …

Court Declines to Apply Trademark Aesthetic Functionality Defense to Design Patents

The United States District Court for the Eastern District of Michigan recently held that the concept of aesthetic functionality, which may be used to invalidate a trademark, does not apply to design patents. Auto. Body Parts Ass’n v. Ford Global Techs., LLC, No. 2:15-cv-10137, 2018 U.S. Dist. LEXIS 26290, at *1 (E.D. Mich. Feb. 20, …

Avoiding Knowledge of a U.S. Patent Does Not Preclude Willful Infringement

When patent infringement is determined, 35 U.S.C. § 284 permits courts to “increase the damages up to three times the amount found or assessed.”  In Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), the Supreme Court held that such enhanced damages are “designed as a ‘punitive’ or ‘vindictive’ sanction for egregious …

David Cromer, Devin Cummins, Lawrence Nwaesei, and Sterling Waite Join Dority & Manning

Dority & Manning is proud to announce that David E. Cromer, Devin J. Cummins, Lawrence Nwaesei, and Sterling R. Waite have joined the firm. David is registered to practice before the U.S. Patent and Trademark Office and is a member of the California Bar. David earned a B.S. in Electrical Engineering from Clemson University and a …

Dority & Manning Mourns the Passing of Founder Wellington M. Manning, Jr.

Mackie Manning, one of the founding partners of Dority & Manning, P.A., passed away on Saturday, August 12, 2017.  He was 81 years old. A chemical engineer by trade, Manning’s keen interest in law led him to law school at The Catholic University of America in Washington, D.C.  Manning supported his family while attending law …

Jason Jennings and Thomas Huycke Elected Principals

Dority & Manning is proud to announce the election of Jason Jenningsand Thomas Huycke as Principals of the firm. Both Jason and Tommy have been practicing intellectual property law since 2009. Tommy focuses his practice on the management of global intellectual property portfolios, and has extensive experience in prosecuting U.S. and international patent and trademark …