New Jersey Trialblazers Spotlights Keith Gilman

  • "Patent Protection Abroad: Getting Your Ducks in a Row Before Filing Across the Pond" by Ryan Bergeron, James Vezeris and Daniel Laine published in the issue of the New Jersey Law Journal on Sept. 14, 2020.


  • Richer Presents at NJWLA Intellectual Property Primer

    Natalie Richer, a partner, presents at the New Jersey Women Lawyers Association Intellectual Property Primer on September 22, 2020. Click on link to see more information and register.View

  • New Jersey Trailblazers Spotlight Keith Gilman

    In New Jersey Law Journal’s August Supplement of 2020 New Jersey Trailblazers, Keith E. Gilman, Managing Partner, is one of the honorees as a “true agent of change”. It spotlights professionals who have made significant marks on the practice, policy and technological advancement of their practice. They “wanted to highlight those that are sincerely innovators and thought leaders.”View

  • Lerner David Partners Recognized By Best Lawyers® 2021

    We are proud to announce that six Lerner David partners were recognized in The Best Lawyers in America© 2021 for Intellectual Property Law in New Jersey, and Charles P. Kennedy was also named 2021 Litigation-Intellectual Property "Lawyer of the Year" in New Jersey. Lawyers are selected for inclusion in The Best Lawyers in America based on a peer review process designed to capture the consensus opinion of leading lawyers about the professional abilities of their colleagues. For the 2021 Edition of The Best Lawyers in America, only approximately 5% of lawyers in private practice in the United States were awarded this honor. "Lawyer of the Year" honorees receive this award based on extremely high overall feedback within specific practice areas and metropolitan regions. “Lawyer of the Year” recognitions were awarded in 137 practice areas across 182 metropolitan regions. View

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    SCOTUS Rejects PTO's Sweeping Rule Denying Registrations for "" Domain Name Marks

    In United States Patent and Trademark Office v. B.V., No. 19-46 (June 30, 2020), SCOTUS rejected the PTO's attempt to create a "sweeping rule" of nonregisterability of marks styled "" had sought to register "" marks in connection with travel-related services. The PTO concluded that the term "booking" was generic for travel-related services and thus "" was also unregistrable. Both the district court and Fourth Circuit Court of Appeals disagreed, finding that the combination of a generic term, such as "booking, "with ".com" was not necessarily generic. SCOTUS agreed, holding that a "term styled '' is a generic name for a class of goods or services only if the term has that meaning to consumers." While SCOTUS rejected the PTO's nearly per se rule, it also cautioned that "we do not embrace a rule automatically classifying such terms as nongeneric." View

  • Lerner David Has Been Named a Winner Under 5 Categories as the New Jersey Law Journal Announced Its 2020 Professional Excellence Winners

    Law Firm of the Year – FinalistsLerner David Littenberg Krumholz & MentlikUnsung HeroesNatalie RicherMentorsKelly Hwang DealmakersKeith GilmanLitigation Departments of the YearLerner David Littenberg Krumholz & Mentlik (Intellectual Property)View

  • Kelly Hwang Selected as a Top 25 Leading Woman Entrepreneur, Intrapreneur, Socialpreneur or Brand Builder 2020 Winner

    Kelly was chosen from a prestigious group of women who were selected out of hundreds of impressive nominations based on their strong business acumen and ability to both influence and inspire within their respective industries. Their tremendous accomplishments are representative of the increasing impact women are making in the world of business. View

  • Lerner's New Modern Design Praised in Real Estate New Jersey

    A law firm has opened the doors to its new 35,000-square-foot headquarters in Cranford, following a design and fit-out overseen by Kimmerle Group. Lerner David, a practice focused on intellectual property, has relocated to 20 Commerce Drive after nearly 50 years in Westfield. Its new home features modern design elements such as offices with full-height glass fronts and slider doors, allowing for natural light, along with high-end furniture and finishes selected by Kimmerle Newman Architects in tandem with the law firm.View

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    Willfulness Is Not Required for an Award of Profits for Trademark Infringement

    The U.S. Supreme Court held that a plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to an award of the infringer’s profits. Romag Fasteners, Inc. v. Fossil, Inc. et al., No. 18-1233 (April 23, 2020). Romag appealed to restore a $6.7 million jury award of Fossil’s profits after Fossil was found to have infringed Romag’s trademark-protected magnetic fasters. A district court judge vacated the award, citing Second Circuit precedent that a finding of willfulness was required to award profits. The Federal Circuit affirmed the decision, and Romag appealed to the Supreme Court. View

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    SCOTUS Disallows Appeal of Timeliness of IPR Petitions

    In Thryv, Inc. v. Click-to-Call Technologies, LP, No. 18-916 (April 20, 2020), the Supreme Court held that the U.S. Patent Trial and Appeal Board's decision finding an inter partes review petition to be timely filed was nonappealable. Under the patent laws, the "determination . . . whether to institute an inter partes review . . . shall be final and nonappealable." 35 U.S.C. § 314(d). In addition, under 35 U.S.C. § 315(b), "[a]n inter partes review may not be instituted if . . . filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent." The issue before the Court was whether the one year time limit was nonappealable within the provisions of §314(d). View

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    Color Marks for Product Packaging Can Be Inherently Distinctive

    In a precedential ruling, the Federal Circuit held that "color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design." In re Forney Industries, Inc., Appeal No. 20191-1073 (April 8, 2020). The case came before the Federal Circuit as a result of Forney's seeking trademark registration of a black, yellow, and red design for its product packaging. The TTAB refused registration on the basis that a color mark applied to product packaging can never be inherently distinctive, citing the SCOTUS's Qualitex decision. In Qualitex, SCOTUS held that color may function and be protected as a trademark as long as it has secondary meaning.View

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    Federal Circuit Holds Same-Party And New-Issue Joinder Not Allowed To An Instituted IPR

    In Facebook, Inc. v. Windy City Innovations, Nos. 2018-1400 et al. (Fed. Cir. March 18, 2020), the PTO Patent Trial and Appeal Board had instituted an IPR proceeding with respect to certain claims of patents asserted in an underlying lawsuit where Windy City had not yet identified the specific claims it was asserting in the district court proceeding. After it identified the claims it was asserting, Facebook filed two additional petitions for IPR for additional claims but by the time of that filing, the one-year time bar had passed. The Board granted Facebook’s request to add new petitions raising new issues to the already instituted proceeding, but the Federal Circuit reversed, holding that the “clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues.” View

  • Lerner David Attorney, Alyssa D’Antonio, Receives 2020 Young Leader Award

    Lerner David is proud to announce that one of our own, Alyssa D'Antonio, is being honored with the 2020 Young Leader Award by the Christopher & Dana Reeve Foundation. Alyssa’s involvement with the Brown family and paralysis community spans three generations. Her grandfather Arthur was there from the beginning. He was a longtime friend of Fran and Benjy Brown, who established The Alan T Brown Foundation when their son Alan became paralyzed in 1988. Most recently, ATBF recently joined forces with The Christopher & Dana Reeve Foundation. As a teen, Alyssa would volunteer at ATBF events accompanying her father Paul, who is an active and valued supporter of the Foundation.View

  • Lerner David Named a Top Patent Firm in TC 3700

    Lerner David is ranked 6th for allowance rate in Technology Center 3700 in Juristat's "Top Patent Firms 2019" rankings. Technology Center 3700 handles patent applications relating to Mechanical Engineering, Manufacturing and Products. For the 2019 ranking, allowance rate is based on public applications disposed of between January 1, 2017 and December 31, 2017. To qualify for inclusion, a firm must have filed a minimum of 100 applications in the tech center during that time period. Congratulations to our Mechanical Practice group!View

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    SCOTUS Holds That The USPTO Cannot Recover Its Attorney Fees Under 35 U.S.C. § 145

    In Peter v. NantKwest, Inc., No. 18-801 (Dec, 11, 2019), the Supreme Court considered whether 35 U.S.C. § 145, which provides that an applicant must pay "[a]ll expenses of the proceedings" when it appeals an adverse USPTO decision in the district court, should include the pro rata salaries of USPTO attorneys and paralegals who worked on the case.View

  • Hwang speaks at Asian Patent Attorney Association (APAA)’s 50th Anniversary Celebration Seminar

    Kelly Hwang presented on “Willful Infringement and Enhanced Damages in light of Halo” at the 50th Anniversary Celebration Seminar of APAA Korea on October 29th, 2019 at EL Tower in Seoul. In addition to Kelly, the panel of speakers at the seminar included the Honorable Ho Joon Yeom of Seoul Central District Court, Nik Ramchand of Davies Collison Cave of Australia and Joyce Ho of Tsar and Tsar of Taiwan, moderated by Seongki Kim of Lee & Ko of Korea. The speakers also provided practical tips under the punitive or enhanced damage system reflecting experiences in their respective jurisdictions covering US, Australia, Taiwan, China, and Korea. View

  • Van Buskirk Recognized as "Life Sciences Star" for Fourth Year in a Row

    For the fourth year running, Tedd Van Buskirk has been recognized as a "Life Sciences Star." The LMG Life Sciences awards honor attorneys who have made a significant impact in the life sciences industry. To be named a "Life Sciences Star," a lawyer must be recommended consistently as a reputable and effective professional in the industry. The publication aims to present attorneys in a way that speaks to the intricacies of both the legal market and the life sciences industry. Research is based on reviewing nearly 1,000 interviews and surveys completed by partners active in the market, as well as speaking with clients and reviewing public information. • View

  • We've Moved!

    As we celebrate the milestone of 50 years in business, we've moved to our new headquarters on October 28, 2019. We will begin the next 50 years at 20 Commerce Drive, Cranford, New Jersey 07016.View

  • McWha Speaks at China IP Road Show in Princeton, NJ

    Keith McWha, a partner, will speak at the China IP Road Show regarding Strategies for IP Protection In China – What U.S. Businesses Need to Know- Enforcing IP Rights in the United States. The USPTO event will take place on Thursday, October 3, 2019, at Princeton University, 303A College Road East, Princeton, NJ 08540. Click here for more information on the event and here to register.View

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    Federal Circuit Holds Design Patents Cover Only Specifically Claimed Items

    In a case of first impression involving design patents, the Federal Circuit held that the language recited in the single "claim" of a design patent can limit the scope of a design patent "where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures." In the case at hand, the design patent illustrated a unique "Y" shaped pattern, but none of the figures showed the pattern on a specific product. However, the title of the patent and sole claim were amended to indicate that the design was a "Pattern for a Chair." Thus, the Federal Circuit affirmed the dismissal of an infringement suit against a company selling baskets with a "Y" shaped pattern because the design patent was deemed to be limited to chair designs only.View

  • Lerner David Partners Recognized By Best Lawyers® 2020

    We are proud to announce that five Lerner David partners were recognized in The Best Lawyers in America© 2020, and that Stephen F. Roth was also named 2020 Litigation-Intellectual Property "Lawyer of the Year" in New Jersey. View

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    PTAB Holds Service of Deficient Infringement Claim May Start One-Year IPR Filing Period

    In GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (PTAB Aug. 23, 2019) (Paper 38), the Precedential Opinion Panel ('POP') of the PTAB held that a deficiently pleaded counterclaim where standing was lacking still triggered the one-year IPR filing period under 35 U.S.C. § 315(b). That provision bars institution of an IPR if the petition is filed "more than 1 year after the date on which the petitioner ... is served with a complaint alleging infringement of the patent." View

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    As Of August 2019 U.S. Licensed Lawyers Required For Trademark Matters Before The USPTO

    Effective August 3, 2019, the United States Patent and Trademark Office will require all non-U.S. trademark applicants, non-U.S. trademark registrants, and non-U.S. parties to a trademark proceeding to be represented by a U.S. licensed lawyer. The USPTO will correspond only with the appointed U.S. licensed attorney. View

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    Supreme Court Paves The Way For Registration Of Offensive Trademarks

    In Iancu v. Brunetti, No. 18-302 (June 24, 2019), the Supreme Court, citing the First Amendment, struck down a portion of the Lanham Act prohibiting registration of "immoral or scandalous" marks, just as it had previously struck down the portion of the Lanham Act barring registration of "disparaging" trademarks in June 2017. The Court paved the way for an applicant to register the mark "FUCT" for a line of clothing, which an appeals board had found unregistrable as "highly offensive" and "vulgar." Because the law "disfavors certain ideas," Justice Kagan wrote, it violates the First Amendment. "Viewpoint discrimination is poison to a free society," Justice Alito wrote in his concurrence, saying that the Court must "remain firm" on this issue during "a time when free speech is under attack." This case is unique both for its intersection between intellectual property and First Amendment law, and for its obvious puns IP lawyers will no doubt make about the state of the Lanham Act. View