Successes

Second Circuit Affirms Pepsi’s Victory in Super Bowl Commercial Case

The Second Circuit issued a ruling affirming a decision of the Southern District of New York that granted Pepsi summary judgment in a case relating to its popular 2016 Super Bowl commercial. That commercial was entitled the “Joy of Dance” and featured Janelle Monae. The Court found that the district court correctly determined that Pepsi’s commercial did not copy any protectable elements from plaintiff. The Court also recognized that Pepsi’s 2001 “Now and Then” commercial with Britney Spears had previously featured the idea of a “performer moving through various time periods or musical styles.” With respect to a related breach of contract claim, the Second Circuit also affirmed the grant of summary judgment to Pepsi, finding that “the district court properly found that there was no enforceable contract between the parties.” The case was argued by Scott Samay who was assisted by the Lerner David team of Daniela Caro-Esposito, Elizabeth Lafferty, and Natalie Richer.

Practice:
IP Litigation,
Copyrights & Computer Software
Attorney(s):
Scott R. Samay,
Daniela Caro-Esposito,
Natalie S. Richer

Lerner David Obtains Dismissal with Prejudice of Trade Dress Infringement Suit

A Michigan-based seller of perineal ice packs filed suit in the U.S. District Court for the District of New Jersey against Lerner David’s Australia-based client and its principal, asserting infringement of unregistered trade dress. Lerner David responded with a multi-pronged motion to dismiss, asserting that the plaintiff had not alleged and could not allege ownership of protectible trade dress; that the plaintiff had named the wrong defendant; and that the defendant was not subject to personal jurisdiction in New Jersey. Following an attempt to cure the defects in the case by amending its complaint, and in the face of a likely motion for attorney fees if the defendants prevailed, the plaintiff dismissed the complaint with prejudice and with releases in favor of persons and entities above and beyond the named defendants. The case was YSCS Products LLC v. Louise Beever et al., Civil Action No. 3:20-cv-12325 (D.N.J. 2021).

Practice:
IP Litigation
Attorney(s):
Tedd W. Van Buskirk,
Roy H. Wepner

Lerner David Obtains Dismissal with Prejudice of Copyright Lawsuit Against Sony’s Digital Binoculars

Claiming infringement of a copyright registration on digital binoculars, Gatewood filed a complaint in February 2019 in the U.S. District Court for Western District of North Carolina against Sony Corporation of America (“Sony”). Lerner David, on behalf of Sony, filed a motion to dismiss the second amended complaint for failing to plausibly plead copyright infringement. The district court granted Sony’s motion and dismissed the lawsuit with prejudice in July 2020 identifying multiple grounds as to why the second amended complaint failed to state a plausible claim for copyright infringement. Gatewood appealed to the U.S. Court of Appeals for the Fourth Circuit in August 2020. On December 21, 2020, a three-judge panel affirmed the district court’s judgment of dismissal, noting “[w]e have reviewed the record and discern no error by the district court.” The case is Gatewood v. Sony Corporation of America, No. 20-1887 (4th Cir), 3:19-cv-00087-FDW-DCK (W.D.N.C.)

Practice:
IP Litigation,
Copyrights & Computer Software
Attorney(s):
Gregory S. Gewirtz,
Jonathan A. David

LifeScan Global Corporation Prevails in PGR

The Patent Trial and Appeal Board (“PTAB”) issued a Final Written Decision in favor of our client, LifeScan Global Corporation, denying Patent Owner’s Motion to Amend and invalidating US. Patent No. 9,976,125. The ‘125 Patent is directed towards a biosensor for blood sugar monitoring, common in diabetes management, that uses flavin adenine dinucleotide conjugated glucose dehydrogenase (FAD-GDH) to determine the presence of glucose by a pH change. After the Petition requesting post grant review of claims 1-10 was filed and before institution, the Patent Owner disclaimed claims 1-7, 9 and 10. Patent Owner then attempted to amend the patent by cancelling claim 8, the only remaining claim, and proposing substitute claim 11. In the Final Written Decision, the Board found Patent Owner’s proposed substitute claim 11 obvious over the cited art, invalidating the ‘125 Patent. The case is LifeScan Global Corporation v. Ikeda Food Research, Ltd. et al., Case No. PGR2019-00032, Paper No. 38 (August 12, 2020).

Practice:
Post-Grant Proceedings (IPR, PGR...)
Attorney(s):
Aaron S. Eckenthal,
Brian R. Tomkins,
Christian E. Samay

Lerner David Achieves Favorable IPR Settlement Granting Amneal Pharmaceuticals Early Market Entry for Vivitrol®

With only a few hours until a scheduled hearing before the Patent Trial and Appeal Board, Lerner David client Amneal Pharmaceuticals LLC reached a settlement with Alkermes whereby both parties agreed to seek termination. Alkermes granted Amneal a license allowing it to market a generic version of VIVITROL® (naltrexone for extended release injectable suspension) in the U.S. beginning in 2028 or earlier under some circumstances in exchange for Amneal agreeing to drop its challenge to U.S. Patent No. 7,919,499 (“the ’499 Patent”), an Orange Book-listed patent for VIVITROL®. The ’499 Patent does not expire until 2029. While the terms of the settlement are confidential, in an analysis by Nasdaq.com, Alkermes’ management was said to have “noted that Vivitrol is a complicated drug to both make and sell, so even if the company loses the patent hearing, it may be hard for makers of generics to enter the market.” You can draw your own conclusions as to Alkermes’ level of confidence in the ‘499 Patent. The case is Amneal Pharmaceuticals LLC v. Alkermes Pharma Ireland Limited, Case No. IPR20198-00943.

Practice:
IP Litigation,
Post-Grant Proceedings (IPR, PGR...),
Hatch-Waxman Litigation
Attorney(s):
Tedd W. Van Buskirk,
Michael H. Teschner,
Kendall K. Gurule

Phytoceuticals, Inc. Prevails In Cancellation Proceeding Before The European Union Intellectual Property Office

On June 6, 2019, the European Union Intellectual Property Office issued a written decision determining that our client, Phytoceuticals, Inc.’s European Trademark Registration for the mark CELL SKIN LAB CLINICAL SKIN CARE was not invalid based upon prior use of the mark in Europe or the prior ownership of the mark as a result of an agreement between our client and the party seeking to cancel the registration. Likewise, the party seeking cancellation also failed on the grounds of bad faith. Based upon instructions and arguments prepared by our office and on actual evidence provided to our European associate, the European Union Intellectual Property Office specifically found that the filing for the trademark CELL SKIN LAB CLINICAL SKIN CARE was not unauthorized, and that our client, Phytoceuticals, Inc., had established prior rights in the mark in Europe. Further, the European Union Intellectual Property Office also found that the contract agreement entered into by our client with the party seeking cancellation, based upon principal/agent principals. Finally, the European Union Intellectual Property Office, based on evidence that our client provided, rejected all the accusations of the party seeking cancellation with respect to the fact that our client applied for the European Union Trademark in bad faith knowing that the party seeking cancellation had prior rights. Finally, based on these decision, the European Union Intellectual Property Office also awarded our client its reasonable fees and costs associated with this proceeding.

Practice:
IP Litigation,
Trademark and Trade Dress Procurement
Attorney(s):
Paul H. Kochanski

Lerner David Defeats Motion for Summary Judgment in Trademark Case

On December 20, 2018, Judge Wolfson in the United States District Court, District of New Jersey, denied the opponent’s summary judgment motion on all grounds that our client’s trademark is invalid. In the opponent’s motion, it argued that our client’s mark is invalid because 1) it creates a likelihood of confusion with other, third-party marks; 2) our client never actually used the mark in commerce; 3) our client committed fraud on the PTO in attempting to obtain registration; and 4) the defense of laches bars our client from asserting a trademark infringement claim. The Court addressed each of these points individually in a detailed opinion and reasoned that the opponent failed to meet its burden on each one, and that a genuine issue of fact exists with respect to each that precludes entry of summary judgment. This decision will have a major impact in the case because the opinion lays the foundation that will make it difficult for the opponent to prove its case going forward. Gregg Paradise and Aaron Eckenthal of our firm are handling this matter.

Practice:
IP Litigation,
Trademark and Trade Dress Procurement
Attorney(s):
Aaron S. Eckenthal,
Gregg A. Paradise

Kashiv and Amneal Prevail in Fourth IPR, Invalidating All Challenged Claims of OxyContin® Patents

In a Final Written Decision issued in favor of Lerner David clients Kashiv Pharma, LLC and Amneal Pharmaceuticals, LLC, the Patent Trial and Appeal Board ("PTAB") held all challenged claims of U.S. Patent No. 9,034,376 invalid on both asserted grounds. The '376 Patent is directed to a sustained release formulation of oxycodone HCl, marketed by Purdue Pharma as OxyContin®, and is one of twenty patents that Purdue has asserted against Kashiv's ANDA directed to its own abuse-deterrent formulation of oxycodone. This marks the fourth IPR win for Kashiv against this family of patents. Collectively, Lerner David has prevailed in all six grounds asserted over four IPRs. The case is Amneal Pharmaceuticals, LLC v. Purdue Pharma, L.P. et al., Case No. IPR2016-01412, (Feb. 8, 2018). The previous cases are Case Nos. IPR2016-01413, (Jan. 17, 2018), IPR2016-01027, (Nov. 8, 2017), and IPR2016-01028, (Nov. 8, 2017).

Practice:
IP Litigation,
Post-Grant Proceedings (IPR, PGR...),
Hatch-Waxman Litigation
Attorney(s):
Tedd W. Van Buskirk,
Michael H. Teschner

Global Trademark Skills Recognized

A global outlook characterises the thriving practice at Lerner David. This New Jersey boutique has its sights firmly trained on Asia; offices in China and Japan have brought in waves of new work, with many businesses looking for truly international trademark strategies. After determining which jurisdictions are most important to their clients, the team’s canny practitioners employ first-hand experience of the integrity of different trademark offices and courts around the world and then come up with a sound way forward. Of late, they have been particularly busy wrestling domain names away from cybersquatters and embarking on work in the social media sphere. Gregg Paradise’s background in computer science engineering gives him a crucial edge when start-ups are in the market for new counsel. He is a technical whizz who makes light work of even the most multifaceted briefs. His teammate Bruce Sales is a top negotiator. His 30 years of experience have imbued an instinctive understanding of which buttons to press; remaining calm, he gets favourable settlements time and again. The erudite Thomas Palisi manages portfolios with aplomb; issues surrounding the Madrid system are his bread and butter.

Practice:
Trademark and Trade Dress Procurement
Attorney(s):
Gregg A. Paradise,
Bruce H. Sales,
Thomas M. Palisi

Amneal and Kashiv Prevail, Again, in Invalidating Additional OxyContin® Patent

In a Final Written Decision issued in favor of Lerner David clients Amneal Pharmaceuticals, LLC and Kashiv Pharma, LLC, the Patent Trial and Appeal Board ("PTAB") held all challenged claims of U.S. Patent No. 9,034,376 invalid. The '376 Patent is directed to a sustained release formulation of oxycodone HCl, marketed by Purdue Pharma as OxyContin®, and is one of twenty patents that Purdue has asserted against Kashiv's ANDA directed to its own abuse-deterrent formulation of oxycodone. The case is Amneal Pharmaceuticals, LLC v. Purdue Pharma, L.P. et al., Case No. IPR2016-01413, (Jan. 17, 2018).

Practice:
Post-Grant Proceedings (IPR, PGR...),
IP Litigation,
Hatch-Waxman Litigation
Attorney(s):
Tedd W. Van Buskirk,
Michael H. Teschner

Federal Circuit Affirms PTAB Decisions Holding Prasugrel Patents Invalid

In a Rule 36 affirmance entered just two days after oral argument, the United States Court of Appeals for the Federal Circuit entered judgment upholding two decisions by the Patent Trial and Appeal Board finding invalid all claims of two Orange Book-listed patents directed to Eli Lilly’s blood thinner Effient® (prasugrel). Lerner David represented Dr. Reddy’s Laboratories in the two Inter Partes Reviews before the PTAB and in the consolidated appeals to the Federal Circuit. The appeals are Daiichi Sankyo Company, Ltd. et al. v. Accord Healthcare Inc., USA et al., Nos. 2017-1052, 2017-1053 (Dec. 12, 2017).

Practice:
Post-Grant Proceedings (IPR, PGR...),
IP Litigation,
Hatch-Waxman Litigation
Attorney(s):
Paul H. Kochanski,
Tedd W. Van Buskirk

Lerner David Defeats Effort to Preliminarily Enjoin Rutgers University

Lerner David successfully defended Rutgers University and one of its football coaches, Arin Blazek, against entry of a preliminary injunction. Following full briefing by the parties and oral argument, U.S. District Judge Michael A. Shipp denied the preliminary injunction, agreeing with the position argued by Lerner David.

Practice:
IP Litigation,
Trademark and Trade Dress Procurement
Attorney(s):
Bruce H. Sales,
Roy H. Wepner

Amneal and Kashiv Prevail in Two IPRs Invalidating OxyContin® Patent

In a pair of companion cases dated November 8, 2017, the Patent Trial and Appeal Board ("PTAB") issued Final Written Decisions in favor of Lerner David clients Amneal Pharmaceuticals, LLC and Kashiv Pharma, LLC finding unpatentable the asserted claim of U.S. Patent No. 9,060,976. The '976 Patent is listed in the Orange Book for OxyContin® (oxycodone HCl), the blockbuster opioid analgesic marketed by Purdue Pharma, and is one of twelve patents currently asserted against Kashiv's ANDA directed to its own abuse-deterrent formulation of oxycodone. The PTAB held the '976 Patent invalid on all three instituted grounds. The cases are Amneal Pharmaceuticals, LLC v. Purdue Pharma, L.P. et al., Case No. IPR2016-01027, Paper No. 48 (Nov. 8, 2017) and Amneal Pharmaceuticals, LLC v. Purdue Pharma, L.P. et al., Case No. IPR2016-01028, Paper No. 47 (Nov. 8, 2017).

Practice:
Post-Grant Proceedings (IPR, PGR...),
IP Litigation,
Hatch-Waxman Litigation
Attorney(s):
Tedd W. Van Buskirk,
Michael H. Teschner

Lerner David Defends Clients’ Store Brand Against a Preliminary Injunction Motion

On July 28, 2017, on behalf of our clients Bed Bath & Beyond and Harmon Stores, Lerner David prevailed in having a preliminary injunction motion for trade dress infringement denied. The plaintiff sells “It’s a 10” hair care products. Bed Bath & Beyond and Harmon sell their Harmon Face Values store brand side-by-side on retail shelves. Following a hearing on July 5, 2017, Judge J. Paul Oetken of the Southern District of New York held that there was no likelihood of confusion between the trade dresses of the products. He pointed to the overall dissimilarity between the products’ trade dresses and the prominent display of the Face Values store brand. He also found no evidence that defendants had acted in bad faith. Agreeing with our arguments, Judge Oetken concluded the plaintiff had not raised sufficiently serious questions going to the merits to make them a fair ground for litigation. The decision is reported as It’s a New 10, LLC v. Harmon Stores, Inc. and Bed Bath & Beyond, Case No. 17-cv-4231, 2017 U.S. Dist. LEXIS 11892 (S.D.N.Y. Jul. 28, 2017).

Practice:
IP Litigation
Attorney(s):
Bruce H. Sales,
Charles P. Kennedy,
Andrew T. Lane

Lerner David Establishes Lower Court Erred

On behalf of our client New York University (“NYU”) Lerner David won an appeal before the New York Supreme Court Appellate Division. The Appellate Division reversed a lower court decision that had dismissed a breach of contract action brought by NYU against Pfizer Inc. and reinstated the lawsuit. The suit involves an exclusive technology license from NYU to a small company named Sugen, which was ultimately acquired by Pfizer. The license concerned fundamental technology in the field of targeted cancer therapies. Pfizer launched a drug known as XALKORI® to treat non-small cell lung cancer. NYU filed suit alleging that it was entitled to royalties under a 1996 amendment of the license agreement. In late 2015, the New York Supreme Court, Commercial Division, construed the agreement favorably for Pfizer, which resulted in dismissal of NYU’s claim. As urged by Lerner David, the Appellate Division found ambiguity in the agreement and held that in the face of countervailing reasonable interpretations, which could not be resolved at an early procedural stage, the complaint should not have been dismissed. The majority rejected Pfizer’s contention that NYU’s reading of the 1996 amendment would lead to a “commercially unreasonable” result. Adopting Lerner David’s arguments, the Court based its decision on the fact that NYU had agreed to give up certain royalties in the short term in exchange for royalties on certain future products (such as XALKORI®), coupled with the fact that the products on which royalties were being sought were alleged to have been derived from NYU technology. NYU plans to continue seeking a 2.5% royalty on Pfizer’s sales of XALKORI®, which (cumulatively) are believed to have exceeded $1.5 billion. (The case is New York University v. Pfizer Inc., 2017 N.Y. App. Div. LEXIS 03464, 2017 N.Y. Slip Op. 03464 (Appellate Div., First Dep’t, May 2, 2017.))

Practice:
IP Litigation
Attorney(s):
Roy H. Wepner,
Stephen F. Roth

Lerner David Triumphs In Australian Trademark Strategy

Our firm developed a strategy for our client Bed Bath & Beyond in pursuit of revoking a trademark registration owned by a New Zealand company for the mark BED BATH & BEYOND. We successfully formulated and implemented a strategy by which the New Zealand company’s Australian registration for BED BATH & BEYOND was revoked and its effort to oppose our client’s application to register the BED BATH & BEYOND mark was defeated. With the assistance of Australian counsel, we were able to establish unequivocally that the New Zealand company was not making use of its BED BATH & BEYOND mark, resulting in revocation of the New Zealand company’s registration by IP Australia. IP Australia also ruled against the New Zealand company in its opposition to our client’s application for registration of the BED BATH & BEYOND mark.

Practice:
Trademark and Trade Dress Procurement
Attorney(s):
Bruce H. Sales,
Gregg A. Paradise

Lerner David Awarded Fees in Motion to Stop Opposing Counsel from Contacting Client's Employees

In our representation of Delta Air Lines in defense of a patent suit involving boarding passes, the plaintiff's attorneys contacted Delta's employees without our permission. To stop this conduct, we moved for sanctions and an Order from the Court barring any further contacts. The Court granted our request, and to "admonish" plaintiff's counsel, required the plaintiff's counsel pay Delta $25,000. As Mr. Stephen Roth, a partner, stated in an article discussing the success, “All of this together will hopefully bring an end to the abuses occurring on plaintiff’s side.” Once again, Lerner David shows that its central job is to protect the client, both on the merits of the case and in prevention the disruption litigation often causes. (The case is Freeman v. Delta Air Lines Inc., case number 4:13-cv-04179, in the U.S. District Court for the Northern District of California.)

Practice:
IP Litigation
Attorney(s):
Bruce H. Sales,
Stephen F. Roth

Lerner David Protects Client from Harassment by Opposing Counsel

In a patent infringement action against our client, Delta Air Lines, the patentee’s counsel repeatedly contacted Delta’s current and former employees to get information about Delta’s confidential airline boarding systems. Consistent with Lerner David’s mission to serve the client’s interests from the top of the company to the bottom, Delta sought sanctions from the Court. The Court agreed with Lerner David that such contacts were “inappropriate” and “strongly reprimanded” opposing counsel. The Court also awarded fees to compensate Delta. As noted in the article published about the case, Lerner David took this recourse to protect its client. And to that end, we were able to stop opposing counsel from disrupting the day to day business of Delta. (The case is Freeman v. Delta Air Lines Inc., case number 4:13-cv-04179, in the U.S. District Court for the Northern District of California.)

Practice:
IP Litigation
Attorney(s):
Stephen F. Roth,
Bruce H. Sales

PTAB Institutes Trial on IPR Petition filed by Lerner David on behalf of Amneal

In companion Decisions issued in favor of Lerner David client Amneal Pharmaceuticals, the Patent Trial and Appeal Board instituted Inter Partes Review on three grounds against all challenged claims of U.S. Patent No. 9,034,376, listed in the Orange Book for OxyContin® (oxycodone HCl). These Institution Decisions follow a pair of decisions issued by the PTAB in November 2016 against a different listed patent.

Practice:
Hatch-Waxman Litigation,
Post-Grant Proceedings (IPR, PGR...),
IP Litigation
Attorney(s):
Michael H. Teschner,
Tedd W. Van Buskirk

Sony Prevails in Two IPRs Invalidating Claims of Imation Patents

On December 27, 2016 and January 3, 2017, Lerner David obtained decisions from the Patent Trial and Appeal Board (“PTAB”) finding unpatentable all challenged claims of U.S. Patent Nos. 6,908,038 and 6,890,188. Imation filed a lawsuit in 2014 against Sony Electronics Inc. for patent infringement of the ‘038 and ‘188 patents in the District of Minnesota (Imation Corp. v. Sony Electronics Inc., C.A. No. 14 628 (D. Minn.) (MJD/SER)). The patents were alleged to cover flash drives having multiple connectors. Imation particularly alleged that Sony’s MicroVault Smartphone USB Flash Drive infringed claims of both patents. Lerner David filed two petitions on behalf of Sony Corporation seeking Inter Partes Review of various claims of the ‘038 and ‘188 patents, and obtained a stay of the district court proceedings. The PTAB’s final written decisions found that Sony proved that all challenged claims of the ‘038 patent were invalid as anticipated by a prior art patent, and that all challenged claims of the ‘188 patent were invalid as both anticipated and obvious over the prior art. The decision for the ‘188 patent followed an unsuccessful attempt by another petitioner to challenge Imation’s patent claims based on the same prior art. Based on the more complete record developed by Lerner David in the present IPRs, however, the PTAB determined that Sony met its burden of proving that all challenged claims were invalid. The PTAB cases are Sony Corp. v. Imation Corp., Case No. IPR2015-1556, Paper No. 19 (Dec. 27, 2016) and Sony Corp. v. Imation Corp., Case No. IPR2015-1557, Paper No. 17 (Jan. 3, 2017).

Practice:
IP Litigation
Attorney(s):
Gregory S. Gewirtz,
Russell W. Faegenburg

Federal Circuit Affirms Judgment of Noninfringement in Favor of Buffalo

On December 28, 2016, Lerner David obtained an affirmance from the United States Court of Appeals for the Federal Circuit of a final judgment of non-infringement of U.S. Patent No. 4,977,577 on behalf of its client Buffalo Americas, Inc. Buffalo was sued by Northpeak Wireless, LLC in October 2008 for infringement of the ‘577 Patent and related U.S. Patent No. 5,987,058. Northpeak contended that Buffalo’s 802.11(b)-compliant “Wi-Fi” products infringed Northpeak’s patents directed to spread-spectrum wireless communication devices. After successfully transferring the case from Alabama to the Northern District of California, Buffalo and the other defendants then instituted ex parte reexamination against both patents, and stayed the litigation pending reexamination, during which the challenged claims of the ‘058 Patent were invalidated. The claims of the ‘577 Patent survived reexamination, but were significantly narrowed in light of a prior art reference that Lerner David attorneys originally identified and advanced as a basis for invalidity. This facilitated a favorable claim construction ruling, which was the basis for the district court’s judgment of non-infringement. The Federal Circuit affirmed the district court’s construction of a dispositive claim term in light of, inter alia, the arguments Northpeak had made during reexamination to avoid the prior art. The case is Northpeak Wireless, LLC v. 3Com Corp. et al., Appeal Nos. 2016-1477, 2016-1481 (Fed. Cir.).

Practice:
IP Litigation
Attorney(s):
Gregory S. Gewirtz,
Russell W. Faegenburg

Lerner David Defeats UDRP Complaint for Vipme.com Domain Name

A decision issued on December 20, 2016 by a FORUM administrative panel, resolving a dispute under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). Vipshop (US) Inc. prevailed against a UDRP complaint that was filed by VIP ME Enterprises LLC. The UDRP was filed on November 8, 2016 and requested that VIPME.com, a domain name used by Vipshop (US) Inc., be transferred to the Complainant because it violated Complainant’s trademark rights and was being used in bad faith. The Complainant owns a registered service-mark VIPME for, among other things, advertising on the Internet for others, and uses its VIP-ME.net website to promote its ViPme app that offers discounted bottle services in night clubs. Vipshop (US) Inc. is an online retailer that offers flash sales on women’s clothing and fashion accessories. The complaint alleged that Vipshop (US) used its VIPME.com domain name to advertise third party goods, albeit women’s clothing and apparel, in violation of Complainant’s registered VIPME service-mark. It also alleged that Vipshop (US) Inc. knew or should have known that Complainant applied for the VIPME service-mark before Vipshop (US) Inc. chose the name of its company and registered the VIPME.com domain name. As such, Complainant asserted that Vipshop (US) Inc. had no right or legitimate interest in the VIPME.com domain name and was using the domain name in bad faith. The panel disagreed with the Complainant and found it failed to show that Vipshop (US) Inc. lacked rights and a legitimate interest in VIPME.com and also failed to establish that Vipshop (US) Inc. acted in bad faith when it registered and used VIPME.com. Thus, the panel concluded that the Complainant failed to establish two of the three elements required to succeed in a UDRP proceeding and denied the complaint.

Practice:
Trademark and Trade Dress Procurement
Attorney(s):
Aaron S. Eckenthal

PTAB Institutes Trial on IPR Petition filed by Lerner David on behalf of Luye Pharma

In a Decision issued in favor of Lerner David clients Luye Pharma Group Ltd., Luye Pharma (USA) Ltd., Shandong Luye Pharmaceutical Co., Ltd., and Nanjing Luye Pharmaceutical Co., Ltd. the Patent Trial and Appeal Board instituted Inter Partes Review of all challenged claims of U.S. Patent No. 6,667,061, listed in the Orange Book for Risperdal®CONSTA® (risperidone).

Practice:
Post-Grant Proceedings (IPR, PGR...),
IP Litigation,
Hatch-Waxman Litigation
Attorney(s):
William L. Mentlik,
Paul H. Kochanski,
Tedd W. Van Buskirk

PTAB Institutes Trial on Two IPR Petitions filed by Lerner David on behalf of Amneal

In two related Decisions issued in favor of Lerner David client Amneal Pharmaceuticals, the Patent Trial and Appeal Board instituted Inter Partes Review on three grounds challenging U.S. Patent No. 9,060,976, listed in the Orange Book for OxyContin® (oxycodone HCl).

Practice:
Post-Grant Proceedings (IPR, PGR...),
IP Litigation
Attorney(s):
Michael H. Teschner,
Tedd W. Van Buskirk

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