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April/May 2025 Cantor Colburn IP Newsletter
Ideas on Intellectual Property
What’s in a name?
Ninth Circuit OKs keyword ad “conquesting”
Federal courts rarely decide cases before trial — especially when dealing with relatively new issues. However, an Arizona district court did just that in a trademark infringement case involving an online advertising technique called “conquesting.” This article covers a decision from the U.S. Court of Appeals for the Ninth Circuit subsequently upholding the judgment, clarifying its belief that the ad practice is on solid legal ground. A brief sidebar highlights a different case from the U.S. Court of Appeals for the Second Circuit involving a competitor’s use of trademarks in keyword search advertisements.
Lerner & Rowe PC v. Brown Engstrand & Shely LLC, No. 23-16060 (9th Cir. Oct. 22, 2024); 1-800 Contacts, Inc. v. JAND, Inc., No. 22-1634 (2d Cir. Oct. 8, 2024).
Expert’s “word salad” leads to tossed patent verdict
Attorneys never want a court to describe their expert witness’s testimony as “word salad” — especially when particularized testimony is required to win the case. A patent owner learned this lesson the hard way. This article summarizes a decision from the U.S. Court of Appeals for the Federal Circuit, finding the patent owner’s expert testimony fell short of that needed for an infringement claim based on the doctrine of equivalents.
NexStep, Inc. v. Comcast Cable Communications, LLC, No. 22-1815 (Fed. Cir. Oct. 24, 2024).
Court closes the book on free digital library
While licensing fees for digital books may burden libraries and reduce access to creative work, authors demand compensation for the copying and distribution of their original creations. This article looks at a decision from the U.S. Court of Appeals for the Second Circuit attempting to balance these interests in a copyright infringement case.
Hachette Book Group, Inc. v. Internet Archive, No. 23-1260 (2d Cir. Sept. 4, 2024).
Patent experts can acquire “ordinary skill” belatedly
Anyone involved with patent cases is likely to come across the term “person of ordinary skill in the art” or some derivation. It generally refers to a hypothetical person with knowledge in the field to which a patented invention relates. But at what point in time must an expert testifying from such a perspective have acquired that knowledge? This article discusses a decision from the U.S. Court of Appeals for the Federal Circuit weighing in on this question.
Osseo Imaging, LLC v. Planmeca USA Inc., No. 23-1627 (Fed. Cir. Sept. 4, 2024).
