Non Infringement Opinions in Patent Cases. Reporting Under the CTA. The Real Takeaway From VIP Products LLC v. Jack Daniel’s.
In this week's post, we discuss strategies that a company can employ to defend itself against claims for willful infringement and exceptional case finding, and the use of non-infringement opinions in patent cases to reduce litigation risk.
Also, information regarding the new Corporate Transparency Act reporting requirements as well as access to a CTA checklist.
Plus, the key takeaways and observations on the Jack Daniel’s and VIP Products trademark dispute case.
Non Infringement Opinions in Patent Cases: Strategic Solutions to a Growing Problem
It is a frequent practice for Non-Practicing Entities (NPEs or “patent trolls”) to send letters to targets they either believe infringe a patent or are willing to pay a nuisance settlement to avoid litigation (e.g., “shakedown” money). This strategy has two benefits to the NPE. First, whoever responds to the letter is added to the “warm” target list and has at least implicitly acknowledged a willingness to engage in conversation with the NPE. Second, it potentially creates evidence that the NPE provided the target with notice of the patent infringement claim. This can be used later to support a finding of willful infringement and possibly an exceptional case, which may lead to up to triple damages, attorney’s fees, and costs.
Read Non Infringement Opinions in Patent Cases: Strategic Solutions to a Growing Problem.
Reporting Under the Corporate Transparency Act is Coming – Are you prepared?
In September 2023, The Financial Crimes and Enforcement Network (FinCen) issued its final rules for compliance with the Corporate Transparency Act (CTA) and these rules are now in effect. In brief, the CTA requires all non-exempt reporting companies to file reports listing their beneficial owners and the persons responsible for the formation of the reporting company (called company applicants).
While the deadline for filing the report with FinCen for reporting companies in existence prior to January 1, 2024 is still some time away -- reporting companies created or registered before January 1, 2024 will have until January 1, 2025 to file their initial reports – it is not too early to begin the process of evaluating whether a reporting company will have to file and gathering the necessary information.
Read Reporting Under the Corporate Transparency Act is Coming – Are you prepared?
The Real Takeaway From VIP Products LLC v. Jack Daniel’s
Much has already been written about the Supreme Court’s holding in the trademark dispute between Jack Daniel’s and VIP Products regarding the “Bad Spaniels” dog toy that VIP began selling back in 2014. Yes, the High Court’s opinion is important and is discussed below, but another important takeaway from VIP Products, LLC v Jack Daniel’s is the fact that it was filed in 2014 and is still going on. The first round of briefing since the Supreme Court remanded the case back to the trial court will not be completed until April 19, 2024—nearly ten years after the case was filed! And that will not be the end. There could still be additional proceedings in the trial court and once that court makes its next “final” ruling, that decision will be appealable.
The Supreme Court’s opinion was decided on a narrow legal issue and they vacated the Ninth Circuit Court of Appeal’s ruling and remanded the case back to the trial court. The legal analysis is interesting but this case is also a cautionary tale about sending out demand letters and filing declaratory judgment suits.
Read The Real Takeaway From VIP Products LLC v. Jack Daniel’s.
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Darin M. Klemchuk is founder of Klemchuk PLLC, a litigation, intellectual property, and business law firm located in Dallas, Texas. He also publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys. Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.