
What Does a Pre-Filing Trademark Clearance Search Involve?
A client picks a brand name in a conference room, files the application the same week, and receives a cease-and-desist letter four months later. The
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ToggleAccording to Bloomberg, a federal jury recently found Intel infringed two of three patents owned by VLSI to the tune of $2.18 Billion. These patents have a history. The patents were originally issued to Freescale Semiconductor, and Sigmatel in 2009, 2010, and 2012, respectively. Freescale bought SigmaTel, and Freescale was in turn bought by NXP in 2015. Later these patents were all assigned to VLSI in 2019. The patents relate to inventions that increase the power and speed of processors. It appears VLSI’s only business is this patent lawsuit. The jury verdict amounts to about half of Intel’s fourth-quarter profit. Unsurprisingly, Intel intends to appeal.
Apple recently lost a jury trial to Personalized Media Communications and is on the hook for $308 million. The patents at issue are related to FairPlay, a DRM technology that can encrypt and decrypt digital content and software, including books, audiobooks, TV programs, movies, and music. Apple successfully challenged the validity of these patents under an inter parties review in 2017 on the grounds of anticipation and obvious. In 2020, the Federal Circuit reversed paving the way for the jury trial. According to Reuters, Personalized Media Communications (PMC) “licenses exclusively its own internally invented patents. PMC does not acquire 3rd part patents for assertion. Meaning, the label ‘Patent Troll’ can’t be attributed to PMC.” Apple, however, disagrees, “Cases like this, brought by companies that don’t make or sell any products, stifle innovation and ultimately harm consumers,” Apple said in a statement to Reuters. Not surprisingly, Apple has already appealed the ruling.
In the fall of 2020, a federal court ordered Cisco to pay $1.9 billion for infringing four patents belonging to Centripetal Networks, a Virginia startup. Cisco must also pay royalties to Centripetal. These patents cover technology that can detect malware encrypted inside data packets flowing through networks and technology related to threat detection. Since the ruling, Cisco has asked for a new trial, which the court denied, and is now preparing an appeal to the Federal Circuit.

A client picks a brand name in a conference room, files the application the same week, and receives a cease-and-desist letter four months later. The

A single missed exhibit deadline can unravel months of invalidity strategy before a case ever reaches the Patent Trial and Appeal Board (PTAB). That is

A single unvetted vendor can put an entire patent or trademark portfolio at risk. That is why every IP director, general counsel, and legal operations

A single missed TTAB deadline does not send a polite reminder before it costs a client their opposition or cancellation case. It simply expires, and

A single missed deadline in a patent portfolio does not announce itself. It sits quietly in a spreadsheet or a docketing system until the day

A USPTO Office Action lands in your inbox on a Tuesday afternoon, and the response deadline is already running. If you are a junior associate
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