News

In a recent case in Japan, Dwango v. FC2, the IP High Court, En Banc, delivered a verdict with far-reaching implications for intellectual property (IP) protection in cross-border scenarios. The court’s decision clarified the boundaries of Japanese patent infringement and shed light on strategies for both domestic and international businesses operating in the global marketplace.

Dwango, a prominent Japanese company, took legal action against FC2, a US-based firm, alleging that FC2’s streaming media services with real-time user comments infringed upon a Japanese patent. The crux of the dispute centered around whether a Japanese patent could extend its coverage to an overseas server, operated by FC2 in the United States.

Key Points from the Court’s Analysis:
The system was “made” when the terminal accessed the server:
When a user terminal accessed the server, establishing a connection and enabling the overlay of comments on video content in the user’s browser, a new system satisfying all the claim requirements was deemed “made.” This crucial point reinforced the importance of the server-user terminal interaction in determining the scope of patent infringement.

Extraterritorial reach of Japanese patents:
The court provided Domestic Acts Guidelines to help determine whether an act, such as “making,” occurs within Japan when the server is located overseas. These guidelines considered several factors, including the specific manner of the act, the functions and roles played by the elements within Japan, the location where the effect of the invention is provided, and the impact on the patentee’s business.

It is worth noting that the IP High Court rendered a previous decision involving the same parties (No. (ne) 10077 of 2008, July 20, 2022) regarding program distribution and terminal claims. This decision serves as a reference point for understanding the evolution of court interpretations and the En Banc decision’s more assertive stance.

The Dwango v. FC2 case has highlighted the complexities and risks involved in cross-border patent infringement. International businesses must proactively consider the specific manner of their acts, the functions fulfilled by elements in different jurisdictions, the location of the invention’s effects, and the impact on patentees’ businesses. Seeking expert legal counsel from a seasoned IP firm is crucial to navigate these intricate matters effectively and ensure compliance with global IP regulations. Contact McCoy Russell at [email protected] if we can be of assistance.

McCoy Russell congratulates Co-Founding Partner Anna McCoy on her continued recognition in Chambers USA for her excellence in the field of Intellectual Property in Oregon. Anna’s continued inclusion is a testament to her technical legal ability, client service, commercial astuteness, and diligence in her intellectual property practice.

Chambers USA rankings utilize in-depth market analysis and independent research, working with firms of all sizes. You may read more about their methodology at their site linked here.

Anna leverages over 20 years of hands-on experience helping iconic brands to emerging businesses secure intellectual property rights in trademarks, patents, copyrights, and trade secrets. Alongside her practice at McCoy Russell, Anna takes an active role in shaping Trademark best practice on a global scale through her participation in International Trademark Association (INTA) committees.

Anna continues to develop and nurture McCoy Russell’s collaborative structure, practice, and strategies to the benefit of its clients. Her vision continues to take McCoy Russell’s legal practice to new heights.

McCoy Russell continues to support the relationship between Technology Transfer Offices and the intellectual property system. Our attorneys’ participation in AUTM’s Regional Meeting underscores our commitment in providing specific support tailored to the unique challenges presented in academic and research environments pursuing technology commercialization.

AUTM, the Association of University Technology Managers, is a renowned organization driving intellectual property and technology transfer initiatives. The AUTM Regional Meeting in Newport Beach, California is an event aimed at bringing together industry experts and innovators.

Justin Wagner, representing McCoy Russell, will participate in sessions, sharing his knowledge on intellectual property law, patent strategies, licensing agreements, and technology commercialization. He looks forward to connecting with technology transfer offices, research institutions, startups, and industry leaders to exchange updates on the latest developments and further relationships with these offices.

McCoy Russell has substantial experience with academic and research institutions and their technology transfer offices, providing specific support tailored to the unique challenges presented in academic and research environments pursuing technology commercialization. Our experience and strategic approach considers the full technology life cycle, from the evaluation stage to portfolio creation and development to licensing and post-grant proceedings.

Thursday, August 3rd The McCoy Russell Band will be taking the stage at Multnomah Bar Association’s fundraising, “Battle of the Lawyer Bands 2023.” This event is dedicated to raising funds for Multnomah Bar Foundation CourtCare, CourtSupport, and CourtConnect, essential legal aid programs that serve our community’s most vulnerable members.

McCoy Russell is excited to not only participate in this charitable event that brings together legal professionals from various firms to showcase their musical talents, but contribute to a cause that makes a significant impact on access to justice for those in need.

So mark your calendars Thursday August 3rd 7-9pm, gather your friends and family, and join us at the “Battle of the Lawyer Bands 2023.“

Since 2019, McCoy Russell remains certified as a Woman Business Enterprise (WBE) in Oregon. The Certification Office for Business Inclusion and Diversity (COBID) confirms the firm continues to meet the state eligibility criteria as established in OAR 123-200-1000 – 2300. Continued certification is contingent upon annual reporting of personal and business income with a more thorough review of ongoing eligibility every third year.

This certification demonstrates our firm’s adherence to rigorous standards and signifies our commitment to supporting diversity and inclusion within the field of intellectual property law.

McCoy Russell congratulates Justin Wagner as he is once again recognized as an Associate To Watch for his work in Intellectual Property in this year’s Chambers USA. Justin’s continued inclusion reflects his experience and growing expertise in the field of intellectual property, “those who are listed are at the forefront of their generation”, notes Chambers.

Chambers USA rankings utilize in-depth market analysis and independent research, working with firms of all sizes. You may read more about their methodology at their site.

Justin leverages his enthusiasm and expertise, leading new conversations in Intellectual Property that encourage growth and development of patent prosecution for Technology Transfer Offices (TTOs), Patent Professionals, and McCoy Russell clients alike.

McCoy Russell, a leading law firm dedicated to fostering innovation, is proud to support the community through pro bono work. Attorney Doug Wells has been making a significant impact through his volunteer efforts for SCORE. This organization, committed to assisting entrepreneurs and small business owners, benefits from Doug’s expertise in intellectual property law and his passion for mentorship. Furthering McCoy Russell’s endeavors in contributing to the local innovation community.

Beyond his regular responsibilities, Doug believes in sharing his knowledge and experience with aspiring entrepreneurs and small business owners. This commitment led him to collaborate with SCORE, a non-profit organization providing a network of over 10,000 volunteers who contribute their expertise to entrepreneurs and small business owners offering free mentoring services, resources, and educational opportunities to entrepreneurs across the United States.

As a mentor, Doug closely works with SCORE businesses, offering guidance on intellectual property protection strategies and helping them navigate the legal landscape, enabling them to make informed decisions and avoid potential pitfalls. With his extensive experience in trademark and patent law, Doug uses his experience to guide businesses through the complexities of safeguarding their innovative ideas and creations.

McCoy Russell continues its involvement and support of the local innovation community. Through the firm’s ongoing partnership with SCORE, we strive to foster a culture of innovation and provide crucial legal support to entrepreneurs shaping the future. To learn more about SCORE and its mission, please visit their website at www.score.org.

A leading women-owned boutique intellectual property law firm specializing in technology, McCoy Russell is thrilled to announce the firm’s inclusion along with three of its attorneys, Anna McCoy, John Russell, and Justin Wagner, in Chambers and Partners 2023 rankings.

Chambers and Partners is a globally respected legal guide that evaluates law firms and attorneys based on their expertise, client service, legal knowledge, and professional achievements. Comprising 30% of the patent attorneys recognized in this ranking, the inclusion of McCoy Russell and its patent attorneys in this prestigious publication is a testament to their exceptional skills and contributions in the field of intellectual property law.

“The technical aptitude of the partners and associates is exceptional and the uptake of complex and novel technology is seamless” notes feedback from Chambers.

McCoy Russell’s inclusion demonstrates the strength of the firm’s unique collaborative structure, training programs, and innovations in the field of intellectual property like its development of automation solutions in patent prosecution through Ironcrow AI. The firm practices its values by providing its clients with accuracy, timeliness, and substantive response.

The firm continues its recognition in quality and is honored to be recognized alongside other exceptional firms and attorneys in the field of Intellectual Property Law.

As a women-owned intellectual property firm, McCoy Russell has been examining the participation of women as inventors and presenting on the gender and minority gap in inventorship, patent prosecution, and VC funding for women founders nationally and local in Portland. The firm not only brings to light the benefits of diverse teams and roadblocks in the patent system, but also shares remedies at the organizational level, investor level, and individual level, focusing on culture, support, and self-identity.

The firm has provided presentations and training to numerous groups and clients, dating back to 2019 just two years after the McCoy Russell’s inception. After 4 years of efforts, we are gaining traction and are pleased to see that our ideas have even reached Meta.

Ideas such as:

• Developing a more uniform network of support for innovation teams.
• Generating teams that include women within the innovation discussions and innovation directions (brainstorming) as a company focus and providing women leadership opportunities for women to participate and lead innovation discussions.
• Fostering Idea Generation via brainstorming sessions or as Meta calls them “Invention Sessions” not only provides an organized discussion, but creates alternate forums for pre-input and discussion creating group and individual action items.
• Meta’s conclusion of getting more people comfortable with the patent process aligns with the heart of McCoy Russell’s diversity aware training IP prosecution programs.

At McCoy Russell LLP, we know that innovation thrives when diverse approaches and philosophies are nurtured in the workplace.

As a longtime advocate for women inventorship, McCoy Russell hopes to see an uptick for women inventors as larger originations like Meta start to adopt practices to support women and other minorities at each stage of the innovation process.

If your organization would like to implement some of the ideas we provided and ideas used by Meta’s team, McCoy Russell is available to provide training, lead brainstorming, and support the innovation lifecycle.