Insights
Analysis from the front lines of IP & technology law.
Our attorneys write about the developments shaping intellectual property—from the PTAB and the Federal Circuit to the practical realities of protecting fast-moving technology.
Customs, Tariffs, and Import Compliance: Classification, Valuation, and Country of Origin
An importer owes duties on the basis of three determinations it makes itself: what the goods are, what they are worth, and where they are from. Customs reviews those determinations after the fact and penalizes errors. This article explains the framework: the tariff schedule and the interpretive rules that govern classification, the valuation hierarchy beginning with transaction value and the additions that trip importers up, the country of origin rules and how they differ for duty, marking, and trade remedy purposes, and the reasonable care standard that makes all of it the importer's responsibility. It covers Section 301 and 232 tariffs, antidumping duties, forced labor enforcement, and the protest, ruling, prior disclosure, and penalty procedures.
Trademark Coexistence and Consent Agreement Checklist: A Practical Checklist
This checklist turns the negotiation, drafting, filing, and administration of a trademark coexistence or consent agreement into check-off tasks for both the party seeking consent and the party asked to give it. It is organized in nine phases, from the threshold assessment and rights mapping through core terms, protective covenants, long-term provisions, the USPTO consent, closing, and post-signing administration. Each item names the governing authority and adds a short practical note. Red-flag boxes highlight the problems that most often defeat agreements: naked consents, territorial promises that do not match the register, market-division terms, and accidental licenses. A deadlines table, a list of common failure points, and a short worked example close the checklist.
Post-Trial Toolkit: Rule 50 Renewals, New Trial Briefs, and Remittitur Analyses
This toolkit collects the working documents of federal post-trial practice, each introduced by its purpose, its owner, and when to use it, and each followed by drafting notes tied to the controlling rules and decisions. It starts with a post-verdict decision memo, a deadline calendar keyed to the entry of judgment, a written Rule 50(a) motion skeleton, and the preservation map that decides what a renewed motion may say. The briefing templates cover the notice of a combined Rule 50(b) and Rule 59 motion, a renewed JMOL memorandum with model standard language, a five-part module for each new trial ground, and the declarations that must be filed with the motion. The damages templates include a remittitur worksheet worked through for an $8.3 million trade secret verdict and a two-track punitive damages analysis. Later templates give the verdict winner an opposition outline, supply proposed orders with alternative paragraphs and remittitur election terms, frame the plaintiff's election, and package the Rule 59(e), Rule 60(b), bond, and notice of appeal filings. It closes with common drafting mistakes, an FAQ, and practical takeaways.
Patent Post-Grant Proceedings: IPR, PGR, and Reexamination at the PTAB
Since 2012, the cheapest and fastest way to kill a United States patent has not been a district court trial. It has been an inter partes review at the Patent Trial and Appeal Board, where a panel of technically trained administrative judges applies a preponderance standard, no presumption of validity attaches, and a final written decision issues within twelve months of institution. This article explains the full menu of post-grant options, inter partes review, post-grant review, ex parte reexamination, supplemental examination, and reissue, and shows how to choose among them. It covers eligibility windows, the one-year time bar of section 315(b) and how service of a complaint starts it, real-party-in-interest and privity traps, the discretionary denial doctrines built on Fintiv, General Plastic, and section 325(d), the mechanics of institution and trial, motions to amend after Aqua Products, and the estoppel that attaches under section 315(e) after California Institute of Technology v. Broadcom. It also addresses the parallel district court case: when to move for a stay, how the two proceedings interact, and what the different burdens of proof mean in practice. It closes with strategy for petitioners and patent owners, a worked example, an FAQ, and related reading.
Construction Project Toolkit: A Roadmap for Owners
An owner building a project is buying a promise about the future from parties whose interests diverge the moment anything goes wrong, and the owner's leverage is entirely front-loaded. Almost every construction dispute traces to a decision made before the first shovel: the delivery method, the completeness of the design when the price was set, the schedule provisions nobody enforced, and the lien waiver process that was never run. This toolkit follows the project in order: selecting a delivery method and understanding what each does to risk, engaging the design professional, structuring the price, the contract provisions that decide claims, insurance and bonds, running payment and change control, closing out, and resolving disputes. It is written for owners who build occasionally rather than continuously.
Producing a Film or Series: Rights, Talent, and Distribution Agreements
Producing a film or series is a rights assembly problem wrapped in a financing problem. Every element that appears on screen—the story, the script, the performances, the music, the locations, the artwork on a wall, a trademark on a coffee cup—must be licensed or cleared, and the resulting bundle must be documented well enough that a distributor's lawyer and an insurer will accept it. This guide follows the production chronologically: acquiring underlying rights and building chain of title, engaging writers and talent under guild and non-guild agreements, financing and the entity structure that supports it, the clearances that must be completed before delivery, and the distribution and sales agreements that determine whether anyone is paid. It closes with delivery, residuals, and the obligations that survive the production.
Serving Legal Documents to Chinese Defendants in IP Litigation: A Practitioner's Guide
For U.S. companies pursuing intellectual property claims against Chinese sellers, manufacturers, and counterfeiters, service of process is not a clerical formality—it is the load-bearing wall on which every downstream remedy rests. This guide is the IP-litigation companion to our general service overview, and it concentrates on the tools that make or break a cross-border IP case: the "Schedule A" counterfeiting playbook, court-ordered email service under Rule 4(f)(3), and the ex parte machinery—TROs, asset freezes under Rule 65, DTSA civil seizure under 18 U.S.C. 1836(b)(2), and anti-suit injunctions—that lets a rights holder strike before a Chinese defendant can move money or evidence offshore. We walk through the mandatory Hague Convention framework, the deep judicial split over emailing Chinese defendants, the landmark Schlunk, Water Splash, Rockefeller, and Luxottica decisions, and China's 2024 Civil Procedure Law. The throughline is a single hard question: how do you get sued papers in front of a defendant in Shenzhen, freeze the assets that matter, and build a judgment that survives challenge at home and abroad.
Settlement Negotiation Preparation Checklist: A Practical Checklist
This checklist organizes the preparation for a litigation settlement negotiation into twelve phases, from deciding when to negotiate through signing a term sheet. Each item is a concrete task, tied where possible to the governing rule, statute, or case, with short notes on how to carry it out. The phases cover case assessment, valuation inputs such as fee-shifting, interest, collectability, taxes, and liens, client interests and authority, the reservation price and target, procedural leverage such as Rule 68 offers, the choice of format and neutral, the opening and concession plan, the mediation statement, client preparation, conduct on the day, and closing. Red-flag boxes mark the problems that most often derail a deal, and a deadlines table collects the time limits that matter. A short worked example and a list of common failure points close the checklist.
Choice of Law, Forum Selection, and Where Your Dispute Will Be Decided
Two short paragraphs near the end of most contracts decide which state's law governs the deal and which court hears the fight. They are drafted in minutes, negotiated rarely, and worth more than most of the substantive terms they sit behind, because the same facts produce different outcomes under different states' law and in different courtrooms. This article explains how each clause works and how courts actually treat them. It covers the choice of law analysis under the Restatement (Second) of Conflict of Laws, the substantial relationship and fundamental policy limits that let a court disregard the parties' choice, and the mandatory rules on non-competes, consumer protection, and franchise relationships that override contract language. It then covers forum selection: the difference between exclusive and permissive clauses and why that single word decides motions, enforcement under M/S Bremen and Carnival Cruise Lines, the procedural framework Atlantic Marine imposed for transfer under section 1404(a), and what happens when the chosen forum is a state or foreign court. Sections on the interaction with arbitration clauses, jury waivers, consent to jurisdiction and service, and internal affairs follow, with drafting language, a worked example, an FAQ, and related reading.
Family and Medical Leave: The FMLA, State Programs, and How Leave Interacts with the ADA
Leave administration is where employers with no dedicated HR function most reliably create liability, because three legal regimes govern the same absence and each has different triggers, different durations, and different consequences. This article explains how they fit together. It covers FMLA coverage and eligibility, what counts as a serious health condition, the notice and certification sequence with its precise deadlines, intermittent and reduced-schedule leave and the attendance policies that collide with it, and the job restoration and benefits obligations at the end. It then addresses the growing patchwork of state paid family and medical leave programs and paid sick leave laws, how they stack with the FMLA, and how payment interacts with an employer's own policies. A long section covers the interaction with the ADA, including leave as a reasonable accommodation beyond FMLA exhaustion and the maximum leave policies that generate systemic enforcement actions, followed by workers compensation coordination, a worked example, an administration checklist, and an FAQ.
Software License Agreement Review Checklist: A Practical Checklist
A software license agreement is forty pages in which three unmarked clauses carry most of the risk: a liability cap the size of a team dinner, a clause licensing your uploaded data to "improve" the vendor's products, and an audit right priced at list. This checklist gives a reviewer a systematic, repeatable order of attack: pre-review context (deployment model, business stakes, regulatory regime), the license grant and its metric and audit rights, SaaS service levels and support, data ownership/security/breach/exit, IP and open source, warranties and disclaimers, indemnification, the all-important limitation-of-liability cap and carve-outs, and term, termination, escrow, and Section 365(n) continuity. Each phase pairs checkboxes with the WHY, the good-acceptable-dangerous spectrum, and the case law that gives the clause teeth (Vernor, Adobe v. One Stop Micro, MDY v. Blizzard, ProCD/Specht/Nguyen, UCC 2-316 and 2-719, 11 U.S.C. 365(n), Mission Product). It closes with common mistakes, primary authority, and related mclaw.io resources.
Intellectual Property Considerations and Protectable Content in Mobile Apps
A mobile app is not one thing you protect; it is a stack of separable assets, each governed by a different body of intellectual property law. This guide maps every protectable layer of an app—source and object code, the API question after Google v. Oracle, the user interface and "look and feel," graphics and sound, the app name and icon, novel functionality and algorithms, databases, trade secrets, and third-party and open-source components—and explains which legal tool fits each. It walks through the practical ownership traps (work made for hire versus contractor assignment), the post-Alice reality of software patents, design patents for graphical interfaces after Samsung v. Apple, and the constraints app-store developer agreements impose. Worked examples using a fictional app, "Larkspur," make the abstractions concrete. The aim is a clear-eyed inventory you can use to decide what is worth protecting, how, and in what order.