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Hot Topics in Patent, Trademark and Copyright Law in the Federal Courts

SKU: IP3600N
General Credits
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Learn from a panel of experts about hot issues in Intellectual Property Federal Court litigation, with an emphasis on patent, trademark and copyright cases on the Supreme Court's October 2018 docket.

Some of the cases and issues that will be discussed include:

Patent Cases:

  • Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. – at issue, whether an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art under the America Invents Act
  • Return Mail Inc. v. U.S. Postal Service – at issue, whether the government is a “person” who may petition to institute review proceedings under the America Invents Act.

Copyright Cases:

  • Fourth Estate Public Benefit Corp. v. – at issue, whether registration of a copyright claim is made when the copyright holder delivers the required application, deposit, and fee to the Copyright Office, as the Fifth and Ninth Circuits have held, or only after the Copyright Office acts on the application, as the Tenth Circuit and the Eleventh Circuit have held.
  • Rimini Street Inc. v. Oracle USA Inc. – at issue, whether the Copyright Act’s allowance of “full costs” to a prevailing party is limited to taxable costs under 28 U.S.C. §§ 1920 and 1821, as the Eighth and Eleventh Circuits have held, or also authorizes non-taxable costs, as the Ninth Circuit has held.

Trademark Case:

  • Mission Product Holdings Inc. v. Tempnology, LLC – at issue, whether under §365 of the Bankruptcy Code a debtor-licensor’s “rejection” of a license agreement during bankruptcy terminates the licensee’s right to use the mark, as the First Circuit has held, or is only a breach of the license, allowing the licensee to continue to perform, and use the licensed mark, under the license, as the Seventh Circuit has held.

Lecturer Bios

Fara Sunderji, Esq.

Fara Sunderji is a partner in the Trademark, Copyright, Advertising & Brand Management group at Dorsey & Whitney LLP in New York. Fara has extensive expertise in all stages of the brand management process, including trademark clearance, prosecution, enforcement and litigation. She regularly represents clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board and in federal court. She also counsels clients on advertising claim substantiation, working with influencers and assists in the development and execution of all types of marketing promotions from sweepstakes to complex contests of skill. Fara is the co-manager of Dorsey’s IP Blog,, which focuses on legal developments in the world of Trademarks, Copyrights, and Advertising. She received a J.D. from Fordham University School of Law, cum laude and a B.A. from Vassar College (Science, Technology & Society), Departmental Honors.

Keith J. McWha, Esq.

Keith McWha consistently applies his strong skills in analysis and communication to counseling on a wide variety of legal issues. His years of experience in private practice and in-house settings have given him in-depth knowledge of all aspects of intellectual property, including prosecution, litigation, post-grant proceedings, opinions, transactional matters, due diligence, and client counseling. No matter what aspect of intellectual property law he is involved in, his strong analytical skills and attention to detail allow him to look deeper into surface-issues, and develop ideal solutions for all situations.

Result driven with a strong attention to client business goals, Keith has a long standing history of achieving success in legal dealings for companies in industries that provide pharmaceuticals, medical devices, biological products, food products, cosmetics, electronic components, semiconductors, software, financial services, automotive products, and consumer products. He has prepared, licensed, defended, and enforced patents in the chemical, mechanical, electrical and computer sciences arts. He has also prepared trademark and copyright applications, drafted opinion letters, and worked on software and digital media issues. Keith's post grant proceeding work that includes inter partes reviews (IPR), post grant reviews (PGR), covered business method (CBM) and re-examinations are all strongly focused on meeting client objectives. His consistent successes in many types of legal dealings form many years of a creditable, solid history in intellectual property.

Marilyn Neiman, Esq.

Marilyn Neiman is a litigator and registered patent attorney with extensive experience in patent litigation from the inception of a case through trial, settlement or disposition by motion practice.

Marilyn has been counsel in many patent, trademark and copyright cases throughout the United States, as well as commercial cases. A significant portion of her work includes patent litigations under the Hatch-Waxman Act. Marilyn has extensive experience litigating highly specialized Hatch-Waxman statutory patent infringement actions involving pharmaceutical drugs, including acetylcysteine, bosutinib, cinacalcet, fexofenadine, fulvestrant, metaxalone, plerixafor, and zoledronic acid. She also has extensive appellate experience before federal appellate courts. In addition to her litigation practice, Marilyn counsels clients concerning the protection of their intellectual property rights, including providing patent validity and infringement opinions. She has represented generic pharmaceutical companies, as well as many other companies involved in a wide range of products and services, including construction equipment, internet technology, and robotic surgery. She represents both patentees and accused infringers.

She is a member of the New York County Lawyers' Association and its Federal Courts Committee.

She has a bachelor's degree in biology from Cornell University, attended two years of medical school at the College of Medicine and Dentistry of New Jersey (passing Part I of the National Medical Boards) and has a law degree from Pace University School of Law.

Caren Decter, Esq.

Caren Decter is a partner in the Litigation Group, focusing on commercial and intellectual property litigation, and white collar defense. Listed in Super Lawyers as a “Rising Star,” Ms. Decter represents clients in all phases of the pre-litigation and litigation process in criminal and civil matters pending in state and federal courts around the country.

Clients benefit from her skill in managing complex litigation aggressively and efficiently, as well as her responsiveness and ability to forge creative solutions to complicated problems before they grow into drawn-out litigation.

In her sophisticated white collar defense practice, Ms. Decter represents individuals and corporations in regulatory and criminal investigations involving allegations of accounting fraud, securities fraud, insider trading, antitrust violations, and violations of the Foreign Corrupt Practices Act. She frequently handles matters involving the U.S. Securities and Exchange Commission, the Department of Justice, various U.S. Attorney Offices and various District Attorney Offices. She also frequently assists clients in their responses to time-sensitive data security incidents and breaches.

In addition, Ms. Decter has a wide-ranging commercial litigation and counseling practice. She advises clients in the finance, legal, consumer goods, advertising, art, and media and entertainment industries — on contract, copyright, trademark, fraud and other matters. Her recent work includes representation of an Academy Award-nominated director in litigation over documentary film rights; dismissal on summary judgment of a $30 million art fraud complaint; representation of a shareholder in a business dissolution; and dismissal of a contempt motion against an Internet Protocol Television (IPTV) provider. Ms. Decter also represents well-known consumer brands and advertising agencies in false advertising matters. She recently helped a leading household goods e-tailer bring three cases against allegedly independent online review sites for their failure to disclose material relationships with our client’s competitors. And she successfully represented a top credit card company in a false advertising dispute before the National Advertising Division of the Better Business Bureau.

Ms. Decter also has significant experience in defending and resolving website accessibility lawsuits, as well as providing preventive advice and counsel to businesses to reduce or eliminate legal risk involving their websites.

Ms. Decter takes on significant pro bono matters. The Anti-Defamation League awarded Ms. Decter and several of her colleagues the Edward Brodsky Founders Award in recognition of their work on an amicus brief arguing against President Trump’s travel ban. She also represents a Nepali woman seeking asylum.

Ms. Decter is the co-chair of the New York County Lawyers Association’s Federal Courts Committee and a member of the New York City Bar Association’s Copyright & Literary Property Committee. She is admitted to practice in New York state courts and federal courts in the Southern and Eastern Districts of New York, as well as the Second Circuit and the United States Supreme Court.

Prior to joining Frankfurt Kurnit, Ms. Decter was an attorney with Willkie Farr & Gallagher LLP, where she represented clients in complex commercial litigations. She also spent a year clerking for the Honorable Colleen McMahon, Chief Judge of the United States District Court for the Southern District of New York.

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