Supreme Court Provides Victory For Brand Owners But May Lead To Protracted Litigation

January 26, 2015

The U.S. Supreme Court in Hana Financial, Inc. v. Hana Bank et al., resolved a circuit split with respect to the “tacking” doctrine in trademark law, holding that it is for the jury to decide whether a party is entitled to tack the use of previous marks to establish priority. Trademark law provides that a party who first uses a mark in commerce has “priority” over other users of the same or confusingly similar marks.  Tacking permits a trademark user to make modifications to their mark over time without losing priority if the modified mark creates the same, continued commercial impression so that consumers consider both marks as the same mark.  This allows brand owners to update the mark over time without losing the priority date of the original mark. For example, in Hana Financial, the prior user established priority in their HANA BANK mark by tacking the use of two previously used marks, HANA OVERSEAS KOREAN CLUB and HANA WORLD CENTER. The Court held that the issue of tacking should be a jury determination because the doctrine focuses on the impression a mark creates on the ordinary consumer.  The Court reasoned that the “ordinary consumer” is similar to other factual determinations made by juries, such as the “reasonable man” or the “average person.” As a result, the ability to have these matters addressed early in litigation is reduced, possibly leading to increased litigation costs. Read More

Landmark Supreme Court Decision Overturns Standard Of Review Of Patent Cases

January 22, 2015

The Supreme Court has shifted the balance of power in patent cases back to the district courts.  On January 20, 2015, the United States Supreme Court held that a district court’s determination of subsidiary facts underpinning claim construction in patent cases is entitled to deference on review. The case, Teva Pharmaceuticals, USA, Inc. v. Sandoz, Inc., has the potential to significantly enhance a district court’s control over the claim construction process by limiting the scope of the Federal Circuit’s appellate review. Prior to the Teva decision, the Federal Circuit had applied a de novo standard of review to all aspects of a district court’s claim construction, including its findings of fact with respect to evidentiary issues. This allowed the Federal Circuit to overrule the district court’s resolution of inherently factual issues such as credibility of witnesses and extrinsic evidence concerning the meaning of technical words and phrases even where there was no indication that the district court had committed error. In light of the Supreme Court’s ruling in Teva, the Federal Circuit must now show deference to the district court’s determination of subsidiary facts unless the district court has committed “clear error.” The Supreme Court’s rationale for applying the clearly erroneous standard was an adherence to Federal Rule of Civil Procedure 52(a) in patent cases as well as the fact that a trial court is better equipped to evaluate factual issues given its familiarity with the evidence, witnesses, and parties. Accordingly, where a factual dispute exists, a district court will resolve the dispute and then interpret the patent claim in light of the facts as it has found them. Therefore, although the district court’s ultimate decision with respect to claim construction remains a question of law subject to de novo review, its findings of fact now must be upheld absent clear error. Read More

Firm Newsletter, Winter 2014

June 26, 2014

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Pennsylvania Supreme Court Limits Employer Immunity in Occupational Disease Cases

December 13, 2013

In a highly unexpected ruling,  the Pennsylvania Supreme Court (with one of six members dissenting), has allowed occupational disease claimants to pursue common law claims against their employers if their claim is otherwise non-compensable as an occupational disease under the Pennsylvania Workers Compensation Act (the “Act”).  For years, employers have relied upon the immunity provisions of the Act as a defense to such lawsuits.  In the case of occupational diseases, such as those caused by exposure to asbestos, such immunity may no longer exist. In Tooey v. AK Steel Corporation (Nos. 21 and 22 WAP 2011), employees brought common law claims against their former employers for exposure to asbestos on the job.  Tooey worked for Ferro Engineering from 1964 through 1982 but did not develop an asbestos-related disease until December 2007.  The other claimant, Landis, worked for a predecessor to Chemetron Corp. from 1946 to 1992, but did not develop an asbestos-related disease until July 2007. The employers moved for summary judgment on the grounds that they were protected by the exclusivity provisions of the Act.  The trial court agreed, and the Superior Court of Pennsylvania affirmed.  On appeal, the Supreme Court reversed, holding as a matter of statutory construction that the claimants could pursue their claims.  The Court focused on language defining an “injury.”  The definition includes occupational disease “provided that whenever occupational disease is the basis for compensation, for disability or death under the act, it shall apply only to disability or death resulting from such disease and occurring within three hundred weeks after the last date of employment…”  The Court construed the definition to exclude from the Act’s scope any claim for occupational disease that manifests itself beyond the three hundred-week period.  The Court reasoned that such a result was consistent with the language used, as well as with the mandate to construe the Act  to effectuate its humanitarian objectives.  Read More

Captive’s Program in Grand Cayman

2013/11/13

Mark Gordon will present at the captive’s program in Grand Cayman regarding brokerage liability and coverage applicable to the same on November 13-17, 2013. Read More

Pietragallo Gordon Alfano Bosick & Raspanti, LLP named a Tier 1 Metro “Best Law Firm”

November 1, 2013

Pietragallo Gordon Alfano Bosick & Raspanti, LLP was recently named a Tier 1 Metro “Best Law Firm” in six practice areas by U.S. News – Best Lawyers® in 2014 for Pittsburgh and Philadelphia. The six practice areas are listed below: Commercial Litigation Labor & Employment Litigation Personal Injury Litigation – Defendants Workers’ Compensation Law – Employers Criminal Defense White Collar Health Care Law Firms included in the 2014 “Best Law Firms” list are recognized for professional excellence with persistently impressive ratings from clients and peers. Achieving a tiered ranking signals a unique combination of quality law prac­tice and breadth of legal expertise. The 2014 rankings are based on the highest number of participating firms and highest number of client ballots on record. To be eligible for a ranking, a firm must have a lawyer listed in The Best Lawyers in America©, which recognizes the top 4 percent of practicing attorneys in the US. Over 12,000 attorneys provided over 330,000 law firm assessments, and almost 7,000 clients provided close to 20,000 evaluations. In addition, to provide personal insight, a new Law Firm Leaders Survey was implemented in the decision-making process. Read More

Nine Pietragallo Lawyers Selected as 2014 Best Lawyers in America

August 15, 2013

Nine lawyers from Pietragallo Gordon Alfano Bosick & Raspanti, LLP were recently selected by their peers for inclusion in The Best Lawyers in America® 2014 (Copyright 2013 by Woodward/White, Inc., of Aiken, S.C.).  The attorneys who received this distinguished honor are listed below: William Pietragallo, II (Bet-the-Company Litigation, Commercial Litigation, Personal Injury Litigation- Defendants) Mark Gordon (Workers’ Compensation Law- Employers) Gaetan J. Alfano (Commercial Litigation) Marc S. Raspanti (Health Care Law) Alan G. Towner (Copyright Law, Litigation-Intellectual Property, Litigation- Patent, Patent Law, Trademark Law) Joseph D. Mancano (Criminal Defense: White-Collar) Paul K. Vey (Medical Malpractice Law- Defendants) Clem C. Trischler (Commercial Litigation, Product Liability Litigation- Defendants) Francis E. Pipak, Jr. (Workers’ Compensation Law- Employers) Since its inception in 1983, Best Lawyers has become universally regarded as the definitive guide to legal excellence. Because Best Lawyers is based on an exhaustive peer-review survey in which more than 41,000 leading attorneys cast almost 3.9 million votes on the legal abilities of other lawyers in their practice areas, and because lawyers are not required or allowed to pay a fee to be listed, inclusion in Best Lawyers is considered a singular honor. Corporate Counsel magazine has called Best Lawyers “the most respected referral list of attorneys in practice.” It is important to note that the lawyers listed in Best Lawyers have no say in deciding which practice areas they are included in. They are voted into practice areas entirely as a result of the votes they receive from their peers. The subspecialties listed after their names are based on information from a variety of sources. Read More

Court Rules That Federal Government Violated Child’s Due Process Right To Be Considered For Lung Transplant

June 19, 2013

Sarah Murnaghan is a very special ten year old girl.  She has battled Cystic Fibrosis since she was 18 months old and has spent her life in and out of hospitals.  In December 2011, her condition took a turn for the worse and she was placed on the pediatric lung transplant list, which is the list for those who are eligible to receive donated lungs from a child donor.  Her condition continued to deteriorate culminating in her doctors’ approval in November 2012 for her to receive an adult lung.  The pool of adult donors is 50 times larger than the pool of lungs donated by children.  Sarah has spent the last 107 days at Children’s Hospital of Philadelphia, the last two weeks of which have been in intensive care.  In May 2013, she was given weeks to live. The National Organ Transplant Act of 1984 (“NOTA”), 42 U.S.C. § 274(b)(2), requires donated organs to be allocated equitably by the Organ Procurement and Transplantation Network (“OPTN”).  However, the United States Department of Health & Human Services under current Secretary, Kathleen Sebelius, has in place a policy called the “Under 12 Rule” that requires children under age 12 on the adult list to go to the back of the line despite medical urgency and only become eligible when everyone on the list ahead of them has declined the transplant.  Sarah became an unwitting victim of the Under 12 Rule.  Despite urgent and emergent requests through proper channels the Secretary would not terminate application of the Rule as to Sarah, even though doing so could save Sarah’s life. With the dire prognosis, Sarah’s parents challenged the Secretary’s determination and obtained an emergency order from the United States District Court for the Eastern District of Pennsylvania that immediately ceases application of the Under 12 Rule as to Sarah. Read More

PBI’s 17th Annual Insurance Institute

May 8, 2013

Gaetan J. Alfano will be presenting at the Pennsylvania Bar Institute’s 17th Annual Insurance Institute on May 8, 2013. He will present on the topic of “New Commonwealth Court Rules for Insurance Insolvency.” Don’t miss the valuable insights shared by the Commonwealth Court Judge, Deputy Judicial Clerk and Chief Clerk and by counsel for the Pennsylvania Insurance Department and private practitioners on how the new rules impact every aspect of court proceedings for insurance rehabilitations and liquidations. Related Information: PBI’s 17th Annual Insurance Institute Brochure Read More

Litigating Insurance Coverage Claims: From Start to Finish

April 30, 2013

Louis C. Long will be presenting at “Litigating Insurance Coverage Claims: From Start to Finish,” a seminar hosted by the National Busniess Institute along with co-presenters James C. Heneghan, Alexander J. Jamiolkowski, Joseph N. Kravec Jr. and Kathleen A. Segmiller. Time: 9:00 AM – 4:30 PM Location:  Hilton Garden Inn Pittsburgh Southpointe 1000 Corporate Dr Canonsburg, PA 15317 For more information and to register, please click here. Read More