
What Tasks Can a Trademark Paralegal Do Without Unauthorized Practice of Law?
A new trademark paralegal sits down with her first Office Action on a Monday morning. The attorney is in depositions until Thursday, and the client
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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 new trademark paralegal sits down with her first Office Action on a Monday morning. The attorney is in depositions until Thursday, and the client

A partner glances at the docketing report on a Thursday afternoon and notices three response deadlines inside the next ten days. Two associates are out

A docketing manager opens her inbox on a Wednesday morning and finds forty new Office Actions, a dozen status changes, and three applications that quietly

A general counsel opens a spreadsheet on a Monday morning and counts forty-two trademark registrations spread across eighteen countries. Three renewals are due within sixty

A solo practitioner opens her inbox on a Monday morning and finds three Office Actions, a docketing report that has not been updated in two

A client calls with a new brand name they are excited about. Before anyone files an application, someone has to check whether that name is
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