Gallagher & Dawsey Co., LPA is a unique intellectual property law firm whose practice includes intellectual property counseling and services to businesses and individual inventors, as well as other law firms, regarding patent, trademark, copyright, and trade secret issues.

Our experienced patent attorneys and trademark attorneys provide various intellectual property legal services such as patent searches, patent applications, trademark searches, trademark applications, copyright applications, infringement advice/opinions, and infringement litigation.

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In today's information based society, the value of patents, trademarks, and copyrights has never been higher. Contact one of our patent lawyers or trademark lawyers to learn more about protecting your inventions, brands, and creative works.

The U.S. patent and trademark attorneys of Gallagher & Dawsey Co. LPA serve clients around the world from our Midwest offices. Our patent and trademark law firm has offices in Columbus, Dayton, and Cincinnati, Ohio.

Prevailing on an Inequitable Conduct Claim, Defendant’s Burden of Proof: In Star Scientific v. R.J. Reynolds Tobacco, (Fed. Cir. 2008), the Federal Circuit court reversed and remanded a district court’s holding that Star’s tobacco curing patents were unenforceable because of inequitable conduct during its prosecution. Star’s patent entailed a method of making a tobacco with lower levels of nitrates and other undesirable chemicals. The attorneys representing R.J. Reynolds claimed that the prosecuting attorney received a letter from the Star scientist that contained information that tobacco from China had lower levels of nitrates and other undesirable chemicals. Additionally, R.J. Reynolds claimed that the Star patent should be invalidated because of Star’s inequitable conduct of failing to disclose the letter to the Patent Office. R.J. Reynolds claimed that Star had the specific intent to deceive the Patent Office when it switched law firms during the patent’s prosecution in order to avoid disclosing the letter. R.J. Reynolds failed to obtain any testimony or other evidence that showed that Star knew of the letter’s contents before switching law firms. The Federal Circuit court held that in order to prevail on a claim of inequitable conduct, the accused infringer must show "evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO]." The burden of proving inequitable conduct lies with the accused infringer because an issued patent is presumed valid and enforceable. Only after the accused infringer meets his or her burden of proof of a threshold level of intent to deceive with materiality by clear and convincing evidence, must the patentee give a good faith explanation as to the circumstances. Additionally, even if both requirements are met, the court should equitably weigh the facts of the case in order to decide if the evidence supports a finding of inequitable conduct. R.J. Reynolds circumstantial evidence lacked materiality and did not meet the threshold to support an inference of intent to deceive. Consequently, the case was reversed and remanded.

‘Making Available’ Theory of Copyright Infringement Rejected: In 2006, Pamela and Jeffrey Howell were sued by the RIAA for copyright infringement. The RIAA claimed that the Howells made copyrighted files available for download online through file sharing software. Additionally, the RIAA claimed that making the files available equated to copyright infringement. The Electronic Frontier Foundation (EFF) argued that the RIAA claim of copyright infringement by making files available “amounts to suing someone for attempted distribution, something the Copyright Act has never recognized.” The judge agreed with the EFF’s argument, stating “The court agrees with the great weight of authority that section 106(3) is not violated unless the defendant has actually distributed an unauthorized copy of the work to a member of the public.” “Merely making an unauthorized copy of a copyrighted work available to the public does not violate a copyright holder’s exclusive right of distribution.” As such, the ‘making available’ theory of copyright infringement was been rejected.

U.S. Patent & Trademark Office Comments on Outsourcing: The U.S. Patent & Trademark Office (USPTO) recently issued a notice regarding the outsourcing of invention information to foreign countries for the purpose of preparing patent applications. In the notice, the USPTO states that it has become aware of the fact that many foreign law firms and service providers have contacted U.S. patent practitioners to offer their services in helping prepare patent applications for filing in the United States. The notice reminds applicants and patent practitioners that the exportation of subject matter abroad pursuant to a license from the USPTO is to be used only for the purpose of filing foreign patent applications. The USPTO advises that applicants who are considering sending information outside of the U.S. for the purpose of the preparation and filing of a U.S. patent application should contact the U.S. Department of Commerce’s Bureau of Industry and Security. Failing to receive the appropriate clearances prior to exporting the information could lead to civil and criminal penalties.

U.S. Supreme Court Decides Patent Exhaustion Case: In Quanta Computer, Inc. v. LG Electronics, Inc. (2008), the U.S. Supreme Court recently concluded that the doctrine of patent exhaustion prevented LG Electronics (LGE) from asserting its patent rights against computer manufacturers that used Intel products made and sold under a license from LGE. The licensed LGE patents were directed to computer systems and methods. The license from LGE to Intel noted that the terms of the license did not extend to products made by combining an Intel product with a non-Intel product. Quanta purchased the Intel products made under the license and used the Intel products along with non-Intel products to manufacture computers. The Supreme Court held that the doctrine of patent exhaustion applies to method patents, and because the license authorized the sale of products that substantially embodied the method patents at issue, Intel’s sale to Quanta exhausted LGE’s patent rights.