February 20, 2024: Troy Grabow Discusses IP Strategy for Hardware Startups on Podcast
Check out Troy's recent podcast on IP Strategy for Hardware Startups with Sera Evcimen of the Builder Circle by Pratik, available on Apple Podcasts and Spotify. In the podcast, Troy and Sera talk about his career and then dive into what forms of IP are available, and how to decide on whether and when to file IP. Troy discusses common IP pitfalls he has seen and how they can be avoided, and shares some best practices that a hardware startup (or any growing company) should consider putting in place to build IP value and better compete in the marketplace. The Builder Circle by Pratik podcast series is an amazing resource for hardware entrepreneurs and builders who are in the process of physical product development and would benefit from actionable advice and expert insight around the entire value chain of hardware development. Enjoy.
January 25, 2024: Troy Grabow Speaks at LAIPLA Washington in the West
On January 25, 2024, Troy Grabow participated in a panel at the Los Angeles Intellectual Property Law Association (LAIPLA) Washington in the West 2024 conference. The panel discussed how to navigate patent prosecution issues from a litigation perspective. Troy led the discussion of recent developments in design patent law including the new design patent practitioner bar, the potential new standard for obviousness in design patent law that will be decided en banc by the Federal Circuit and argued on February 5 in LKQ Corporation v. GM Global Technologies Operations, Case No. 21-2348, at the Federal Circuit, and the new standard for comparison prior art for a design patent infringement announced in the September 13, 2023 Federal Circuit decision in Columbia Sportswear v. Serius Innovative Accessories, 80 F.4th 1363 (Fed. Cir. Sept. 13, 2023). The panel also discussed recent high profile decisions in other patent-related cases at the Patent Trial and Appeal Board, Federal Circuit, and Supreme Court. Other speakers at the conference included a number of in-house counsel and government officials.
January 8, 2024: Troy Grabow Re-Appointed Co-Chair of AABA In-House Counsel Committee
Troy Grabow was re-appointed as co-chair for the In-House Counsel Committee of the Asian American Bar Association of the Greater Bay Area (AABA). AABA is one of the oldest and largest Asian American bar associations in the United States. As co-chair of the In-House Counsel Committee in 2023, we coordinated over a dozen events, ranging from hikes to our summer picnic and fall mixer, to mentoring opportunities, and educational sessions on how to advocate for yourself in-house and how to make transitions within your career. Troy is looking forward to working with the new AABA President, Board and leadership teams to have another successful year in 2024, serving the active Asian American in-house community in the San Francisco Bay area. Please reach out directly to Troy if you would like to more information about AABA or the In-House Counsel Committee.
October 19, 2023: Troy Grabow receives 2023 AIPLA Project Award
On October 19, 2023, at the AIPLA Annual Meeting, Troy Grabow was honored with the 2023 AIPLA Project Award for his leadership and participation on the team organizing the Association's 125th Anniversary celebrations throughout the year. As stated by AIPLA: "This effort allowed the IP community the opportunity to see and celebrate the organization on this significant milestone." It was a great honor to be part of this team and to celebrate all of the amazing people and work of the American Intellectual Property Law Association.
Troy has served in various leadership roles at AIPLA, including on the Board of Directors, the Amicus Committee, as well as chair of three different committees. One of his proudest moments was being awarded the AIPLA Mentor of the Year Award. He currently serves in various roles including as a Fellow and on the Public Appointments Committee.
October 18, 2023: Troy Grabow Co-authors Amicus Brief to Supreme Court in Trade Secret Case
Trade secrets are playing an increasingly important role for companies in protecting their intellectual property. Troy Grabow recently had the privilege of co-authoring, along with legendary trade secret guru Jim Pooley, an amicus brief to the United States Supreme Court on behalf of the American Intellectual Property Law Association (AIPLA) on an important federal trade secret case (The TriZetto Group, Inc. v. Syntel Sterling Best Shores Mauritius Limited (23-306)). The TriZetto case dealt with the issue of whether unjust enrichment damages in a trade secret case should be considered independently of the victim's own loss. In that case, the Second Circuit had reversed the district court and held that a plaintiff in a federal Defend Trade Secrets Act case that has suffered no compensable harm beyond its lost profits cannot recover the defendant's avoided costs as a form of unjust enrichment. The DTSA's damage provision however expressly allows recovery for "actual loss ... and ... unjust enrichment ... that is not addressed in computing damages for actual loss." 18 U.S.C. ยง 1836(b)(3)(B) (emphasis added). The brief argues that the Second Circuit's additional non-statutory requirement of compensable harm to the plaintiff is contrary to the plain language and legislative history of the DTSA, which sought to reinforce the policy that misappropriators should not be allowed to retain any advantage from their misconduct. The Second Circuit's ruling, relying on a common-law restatement, conflicts with every circuit that has looked at this issue in connection with the virtually identical language in the UTSA. Lastly, the brief argues that any concerns about excessive damages should have been addressed by traditional review of the district court's consideration of equitable relief. A copy of the brief is here.
October 11, 2023: Troy Grabow Participates in Diversity and Inclusion Panel at TPN North America 2023
On October 11, 2023, Troy Grabow participated in a diversity and inclusion panel at the Technology Patent Network North America 2023 conference in San Francisco. Troy shared his ideas on what law firms and corporations can do to provide opportunities to diverse team members as well as thoughts on internship programs and working on diversity initiatives with national and minority bar associations. Troy discussed his leadership in formal mentoring programs with AIPLA, Vietnamese American Bar Association of Northern California, and the Asian American Bar Association of the Greater Bay area, as well as his informal mentorship with diverse junior attorneys and law students. Troy has been a fierce advocate for increasing diversity in the intellectual property field throughout his career.
