Joshua Revilla
Subscribe to Joshua Revilla's PostsJoshua Revilla focuses his practice on intellectual property litigation matters. Read Joshua Revilla's full bio.
It’s an Old Tune: Third-Party-Use Evidence From Long Ago Can Support Genericness
By Joshua Revilla on Jul 18, 2024
Posted In Trademarks
The US Court of Appeals for the Fifth Circuit found that the district court abused its discretion in wholesale exclusion of evidence on the issue of genericness. The evidence was offered to show prior use of a trade dress from more than five years prior to an alleged infringer’s first use of a mark. Gibson...
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When Is It Really Over? If Additional Proceedings Are Needed, Judgment Is Not Final
By Joshua Revilla on May 16, 2024
Posted In Patents
The US Court of Appeals for the Federal Circuit, factually distinguishing the concept of finality in this case from its earlier decision in Fresenius USA v. Baxter Int’l, vacated and remanded a district court’s amended final judgment with instructions to dismiss the case as moot in view of parallel proceedings that had found all patent...
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Uncle Sam Can March In: Government Licenses Under Bayh-Dole Aren’t Subject to “Strict Timing Requirements”
By Joshua Revilla on Feb 22, 2024
Posted In Patents
In an appeal from the US Court of Federal Claims, the US Court of Appeals for the Federal Circuit affirmed a determination that 35 U.S.C. § 202(c)(4), a provision of the Bayh-Dole Act, operates to provide a license to the government for federally funded research based on work that occurred prior to the effective date...
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Missed Shot: Lawsuit Against Related Company Doesn’t Toll Prescriptive Period
By Joshua Revilla on Oct 12, 2023
Posted In Trademarks
The US Court of Appeals for the Fifth Circuit affirmed a district court’s decision to dismiss claims under the Louisiana Unfair Trade Practices Act (LUTPA), finding that a dispute against a related company did not toll the statute of limitations. Carbon Six Barrels, LLC v. Proof Research, Inc., Case No. 22-30772 (5th Cir. Sept. 29,...
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No Need for Unnecessary RPI Determinations
By Joshua Revilla on Jul 27, 2023
Posted In Patents
The US Patent & Trademark Office Director partially vacated the Patent Trial & Appeal Board’s real-party-in-interest (RPI) determination because that determination was not necessary to resolve the underlying proceeding. Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 (PTAB May 22, 2023) (Vidal, Dir.) Unified Patents filed a petition requesting inter partes review (IPR) of...
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2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law
By Sarah Bro, Douglas Carsten, Syed K. Fareed, Mandy H. Kim, Charles Larsen, Christina (Tina) L. Martini, Jennifer M. Mikulina, Amol Parikh, Eleanor B. Atkins, Cecilia Choy, Ph.D., Anisa Noorassa, Alexander Piala, PhD, Joshua Revilla, Christian Tatum and Diana Pisani on Feb 7, 2023
Posted In Copyrights, EU Update, Life Sciences, Patents, Technology, Trademarks
Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals...
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Strings Attached: No Amendment for Trademark Application in Inter Partes Opposition Proceeding
By Joshua Revilla on Feb 2, 2023
Posted In Trademarks
The Trademark Trial & Appeal Board (Board) designated as precedential a decision denying a motion to amend and granting partial summary judgment based on a mistaken identification that did not match the goods sold using the trademark. Fender Musical Instruments Corporation v. Win-D-Fender, LLC, Opp. No. 91272326 (TTAB Sept. 22, 2022) (designated precedential Jan. 12,...
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That Stings: Consent to Jurisdiction Must Be Effective at Filing to Invoke Fed. R. Civ. P. 4(k)(2)
By Joshua Revilla on Jan 19, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit, on petition for writ of mandamus, vacated the district court’s transfer order and remanded the transfer to be considered under the clarified parameters of Fed. R. Civ. P. 4(k)(2) and 28 U.S.C. § 1404. In re: Stingray IP Solutions, LLC, Case No. 2023-102 (Fed. Cir. Jan....
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Novel Derivative Sovereign Immunity Defense Struck as Forfeited
By Joshua Revilla on Sep 8, 2022
Posted In Copyrights
The US Court of Appeals for the Sixth Circuit affirmed a district court decision implementing a preliminary injunction and striking a new defense first asserted in an amended complaint as untimely and frivolous. ACT, Inc. v. Worldwide Interactive Network, Inc., Case Nos. 21-5889; -5907; -6155 (6th Cir. Aug. 23, 2022) (White, Bush, Reader, JJ.) ACT...
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Tableware Designer Gets Heavenly Results on Its Pearly Plates
By Joshua Revilla on Jul 21, 2022
Posted In Copyrights, Trademarks
The US Court of Appeals for the Fifth Circuit reversed a district court decision, reversing the dismissal of a copyright claim based on lack of standing and finding ownership of the copyright in the claimant based on an assignment of that claim. The Fifth Circuit also found that the plaintiff had a protectible trade dress...
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