Think IP Strategy

33 (make that 50) intellectual property mistakes and how to avoid them

by Duncan on April 22, 2013 · 47 comments

The team at Think IP Strategy has been kicking around their list of top IP mistakes. We’ve listed them here for you and we’ll give you a more detailed post on each and everyone.

What would you add? We’ll happily do an extra post on any new ones you suggest.

(They are in no particular order, because as you know, that depends on context.)

1. Fail to Protect IP

2. Fail to Exploit IP

3. Fail to Maintain IP

4. Fail to Recognize IP

5. Fail to Protect Associated IC

6. Infringe IP

7. Lose Freedom of Operation

8. Have No Publication Strategy

9. File Too Early

10. File Too Late

11. Treat IP as purely a Legal Issue

12. Fail to Think Globally

13. Fail to Think Locally

14. Spend Too Much to Protect Too Little

15. Spend Too Little to Protect Too Much

16. Misunderstand the Strength of IP

17. Build Static Instead of Dynamic Defenses

18. Underestimate Competitors

19. Overestimate Competitors

20. Fail to Leverage Outside Innovation

21. Become Mired in the Day-to-Day

22. Fail to Optimize the Portfolio

23. Fail to align IP strategy with Business Strategy

24. Treat IP as a Cost Center

25. Accept the Tyranny of the Toos: Too hard, expensive, difficult, confusing, etc.

26. Take the Advice of Counsel on Faith

27. Mismanage Outsourcing

28. Be Satisfied with the Status Quo

29. Create Your Competition

30. Fight in the Wrong Places

31. Fight in the Wrong Way

32. Choose the Wrong Fights

33. Develop IP that no one wants

34. Fail to Monitor IP (suggested by ‘mc’ – see below and thanks again)

35. Fail to Abandon IP (suggested by ‘Chuit’ – see below and thanks again)

36. Fail to Value IP Literacy in Staff at all levels (suggested by ‘Ruth Soetendorp’ – see below and thanks again)

37. Fail to include IP Awareness on staff training agenda (suggested by ‘Ruth Soetendorp’ – see below and thanks again)

38. Fail to communicate IP Strategy as part of your marketing plan (suggested by ‘Dids MacDonald’ – see below and thanks again)

39. Claim too much (in patent claims) [And I would add, 'or too little', and broaden this to Trade Marks and Designs as well.] (suggested by ‘Naim Kuhn’ – see below and thanks again)

40. Fail to clearly assign IP responsibility within the organisation (suggested by AJ with slight modification – see below and thanks again)

41. Seeing things as we wish them to be

42. Planning without the ideal strategy in mind

43. Do it yourself IP Strategy

44. Withholding important information from legal advisers

45. Miss the point on benchmarking

46. Think that there are only 50 IP mistakes that you can make (suggested by Philip Argy – see below and thanks again)

47. Make dangerous interpretations

48. Focus on the lesser value in licensing

49. Use questionable ethics

50. Fail to lead

The Difference Between a Strategy, a Plan, and a Process

by Robert on April 12, 2013 · 10 comments

I received a great question at an IP strategy training course I taught. The question was about the difference between a strategy, a plan, and a process. It came about because while we expect on paper most people could match these three words to their appropriate definitions, in practice, they get confused. So to address the definitions in practice, I thought it might be fun to examine their purpose for their employer.

A strategy is a solution to move from where you are now (A) to where you want to be (B)…or put another way, it is what you want to happen to achieve an end. Strategy is a class of solution that deals with uncertainty – the possibility that opposing forces may inhibit you reaching (B) or reaching it in acceptably good form.

A strategy should raise the probability that its employer will reach (B) in good form. It does so mostly by creating conditions that favor success. For example, a strategy can be that you will only support businesses where you can be a first or second tier player, where your objective (B) is to build a product solutions portfolio that fits that defined nature. Building a portfolio of first or second tier only product solutions is what you want to do. It is a solution to a problem associated with running a type of business that you determined third or less tier product solutions will not support. Your strategy does not specifically say how you will arrive at this end. That is where your plan comes in.

A plan is how you will move from (A) to (B). As such it should support your strategy by providing a way to reach (B) that provides an acceptable balance of risk and reward. So your strategy is what you want to do and your plan is how you will do it. For example, you may decide as a strategy that you need to acquire lots of patents in an area to help you maintain freedom of operation, and then your plan is how specifically you will do that…R&D, acquisition, license, etc. This is, of course, oriented on the level of organization you are dealing with. Company, divisional, team, and personal plans and strategies take place simultaneously, which creates issues of alignment that we can cover in a future post.

Understanding the difference between a strategy and a plan allows you to make useful strategic planning decisions that separate the two. It allows you to act in line with General George S. Patton’s insightful quote, “Never tell people how to do things. Tell them what to do and they will surprise you with their ingenuity.” You can include statements of intent within your planning so that when plans go wrong, which they often do, people can adjust their how-to-do-it (the plan) in a way that makes sense with what you want them to achieve (the strategy).

A process, in contrast, is a defined way of doing a task. It can be a linear in nature – do A, then do B, then do C – or it can have branches – do A, then B, and then C or D depending. A process sets strict parameters to the “how” that can, if misapplied, allow the “how” to take priority over the “what.”

Since a process is so anchored in the “how,” it can never be a strategy. If used well, a process can be an essential part of a strategy. For a strategist, the chief purpose of any process is to drive out uncertainties that do not need to be there within a plan. For example, no matter the strategy and plan you chose regarding IP, you want to anchor that strategy and plan on good IP. As a part of a strategy and plan you can set processes in place for idea review, documentation, and protection that assure you will have the quality of IP protection you need as circumstances arise. Then you can address all the uncertainties of what competitors, partners, and customers may do to challenge or advance your IP portfolio without also having undue uncertainty about whether you can present good IP documentation when you need it.

So when you do strategic planning for IP, you and consulted team members first determine what you want to do – your strategy. You next determine or appropriately delegate how you want to do it – your plan. You and your team then look at all the uncertainties associated with your strategy and plan with the mindset to drive out those uncertainties that do not need to be there. To drive out uncertainties, you may incorporate processes – often as simple as checklists – so that those executing your strategy can focus their talents where uncertainty remains. You do all of this in context with your opposition because you can win or lose any strategic contest on any or all or your strategies, plans, or processes.

Image credit: Hemera

The pointy end of patent strategy – claim construction with the OUP Claim Construction Thesaurus

by Duncan on January 14, 2013

It doesn’t really matter how strategic you think you are, if you can’t access a pragmatic and clear construction of patent claims, you’re in trouble.

While patent terms always come back to the context of the specification itself (and the file history in some countries), Oxford’s Thesaurus of Claim Construction is a very handy addition to your armoury if you need to get to grips with patent claims. Co-authored by Stuart Soffer and Robert Kahrl it provides a very useful set of alternative constructions of words and phrases with citations from US patent cases and brief commentary.

This two volume set also has insightful sections on means plus function elements, design patents and how to determine what ‘ordinary skill’ really means in the context of the patent you’re looking at. With an index that runs to over 200 pages, it’s also easy to find everything.

Please click here to purchase a copy of Thesaurus of Claim Construction.

Happy holidays

by Marie Louise on December 24, 2012

From all of us at Think IP Strategy, we wish you peace and joy this Christmas and we hope that 2013 holds much happiness and many successes for you!

Image credit: Y0$HlMl

R&D Planning or R&D Direction

by Guest on December 14, 2012

Guest post by Robert Cantrell

R&D planning is a misnomer given the truth that no plan survives first contact with adversity. R&D involved experimentation, which essentially means to try something and see what happens because you don’t already know for sure. So really you do not plan R&D much beyond setting a budget and a commercial direction on which to orient some of that experimentation. To illustrate, one of 3Ms commercial directions is to build superior adhesives. There will be considerable thought put into how to do this inclusive of adhesive characteristics that management would like to have and sell. There will then be some deviation on the actual results obtained during experiments, but it will likely align with the direction of superior adhesives. What the company wants is superior adhesives with differentiators at the point of sale that make a product better, faster, or less expensive. How specifically R&D delivers on that is not necessarily the most important part as long as commercially valuable differentiators exist and the results generally carry the company along toward where innovation in the field will go in the future. Differentiators at the point of sale, the innovative path, and commercial viability all work together in a product solution that enhances the customer experience on receiving given benefits, all of which are protected by a network of IP to secure the rational and emotional elements of the product solution that matter.

Image credit: B Tal

Protecting the Saleable Benefit

by Guest on November 30, 2012 · 1 comment

Guest post by Robert Cantrell

The introduction of IP to any given product solution should have, as a reason, to make the product solution somehow more saleable than it would be without the IP. This means that the product solution should be somehow better, faster, or less expensive than the product solution would be without the IP, or, in the case of a brand, that the product solution will have an emotional appeal stronger with the brand than without it. It is never enough, therefore, to develop IP without having in mind how it will be sold to individual customers. You cannot know otherwise, for illustration, that IP you protected that allows a product solution to deliver some benefit faster than the previous state-of-the-art model will actually matter to an end user at the point of sale, especially if the improvement drives up the cost to the customer; or if a present improvement does not matter to most customers logically, then it can be made to matter emotionally – in the spirit of why people may want to own the latest pad, car, or camera when their current model performs well enough.

While not a black and white delineation, when improving a saleable benefit, patent, trade secret, and copyright IP will tend to focus on the logical improvements of a saleable benefit, while brand and trademark IP will tend to focus on the emotional appeal. It is never enough to have one without the other – the IP strategy should account for how to protect the logical reasons why a product solution is better, faster, or less expensive than other options at the point of sale and also protect aspects of the product solution that make it emotionally appealing to own. Understand the comparative advantages and disadvantages of the product solution for which your IP is a part and build your IP strategy accordingly.

Image credit: s_falkow

Global Week in Review 28 Nov 2012 from IP Think Tank

by Greg on November 27, 2012

Here is Think IP Strategy’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

Highlights this week included:

USPTO Director Kappos to depart in January (IP Watch) (KEI) (IAM) (Inventive Step) (Patently-O)

EU patent, Patent Court could finally be approved in coming weeks (IP Watch) (EPLAW) (K/S/N/H::Law Blog)

Please join the discussion by adding your comments on any of these stories, and please do let us know if you think we’ve missed something important, or if there is a source you think should be monitored.

Global

Global – General

A historical look at open innovation (IPKat)

Global – Trade Marks / Brands / Domain Names

The Trademark Clearinghouse and new gtlds – ICANN update (IPKat)

Global – Patents

Building fast track harmony: a proposal for a global green patent highway (Green Patent Blog)

WHO denies industry money unduly influencing noncommunicable disease fight (IP Watch)

Wellcome Trust tells WHO it opposes R&D Treaty and the de-linkage of R&D costs from drug prices (KEI)

The ‘access to medicines’ debate: throwing patients without cures under the proverbial bus (BIOtechNOW)

Soft stance on patents would cost Apple’s shareholders hundreds of billions of dollars (FOSS Patents)

Patent deals will exacerbate Android fragmentation unless Google secures global licenses (FOSS Patents)

Global – Copyright

Building an innovation-based economy with Creative Commons (Creative Commons)

WIPO Committee finishes a step closer to Treaty For Visually Impaired (IP Watch) (EFF)

Canada set to endorse the concept of a WIPO Treaty for the Blind (EXCESS COPYRIGHT)

Distance education for blind people opposed by a White House responsive to MPAA (KEI)

WIPO’s Broadcasting Treaty: still harmful, still unnecessary (Creative Commons)

Australia

Pharmaceutical Patents Review Panel issue background and issues paper (ipwars.com) (Patentology)

Red nose trade mark brings two charities, National SIDS Council of Australia and Cure Kids, to blows (IP Whiteboards)

Canada

Subsequent entry biologic litigation set to take off in Canada (IP Osgoode)

Competition for Viagra on the rise (EXCESS COPYRIGHT)

Supreme Court serves stunning reminder of patent bargain in Viagra case (Michael Geist)

Pfizer seeks amendment or re-hearing of Supreme Court of Canada’s Viagra judgment (Excess Copyright)

Rogers, Telus, Bell and Quebecor file claim against SOCAN seeking restitution of CA$ 15 million as well as special damages over ringtone tarrifs (The 1709 Blog) (Excess Copyright)

Canadian broadcasters seek overhaul of radio copyright fees post-C-11 & fair dealing decisions (Michael Geist)

Ecuador

Ecuador issues a compulsory license on abacavir/lamivudine on 12 November 2012 (KEI)

Europe

EU patent, Patent Court could finally be approved in coming weeks (IP Watch) (EPLAW) (K/S/N/H::Law Blog)

Yet another SPC referral to the CJEU – AstraZeneca v Comptroller General of Patents EWHC (gefitinib) (Kluwer Patent Blog)

CJEU to consider copyright implications of linking and framing: Nils Svensson, Sten Sjögren, Madelaine Sahlman, Pia Gadd v Retreiver Sverige AB (Case C-466/12). (The 1709 Blog)

Emerging practice of the European Patent Office on stem cell inventions (Patent Docs)

Does Oracle ruling breach WIPO Copyright Treaty?: Case C-128/11 Oracle v UsedSoft (The 1709 Blog)

Dogfight over Community trade marks: AG opines – Case C-561/11, Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza (Class 46) (IPKat)

When can a CPVR holder request information from a supplier?: General Court rules in Case C-56/11 Raiffeisen-Waren-Zentrale Rhein-Main eG v Saatgut-Treuhandverwaltungs GmbH (IPKat)

General Court: photos.com lacks distinctive character: Case T- 338/11 (Class 46)

Finland

Police raid 9-year-old Pirate Bay girl, confiscate Winnie The Pooh laptop (TorrentFreak) (TorrentFreak)

Germany

Germany’s highest court rules parents not responsible for their teenager’s music piracy (TorrentFreak) (The 1709 Blog)

Patent exhaustion and possible EU intervention at issue in German Samsung v. Apple SEP lawsuit (FOSS Patents)

Samsung attacking Apple’s screen-to-speech functionality with German patent (FOSS Patents)

Munich court skeptical of Nokia patent assertion against Google Talk (FOSS Patents)

Ghana

Ghana opts for the WPPT (Afro-IP)

India

Bayer makes an attempt to nix NATCO’s CL for Nexavar (Spicy IP)

Madras High Court rules against ‘safe-harbour’ for ISPs – a victory for copyright owners (Spicy IP)

Dangers of ex-parte interim injunctions, in full display, in patent litigation between Issar Pharmaceuticals and Ind-Swift (Spicy IP)

Indian Patent Office (IPO) publishes guidelines for Indian patent applications relating to plant (herbal) compositions (IIPRD)

IPAB on Payyannur Ring geographical indication: SubhashJewellery v. Payyannur Pavithra Ring Artisans (Spicy IP)

Government of India’s brand vs. generic drugs tell of today’s conflicts and reality (Profitability Through Simplicity)

Indonesia

Supreme Court hands down decision concerning novelty in patent case brought by PT Mitra Chemindo Sejati (IP Komodo)

Italy

Norway

Bogarting Court of Appeal finds infringement of Valsartan process patent: Actavis v Novartic (EPLAW)

Netherlands

Hardware providers sue Dutch government over private copying levy hike (The 1709 Blog)

Rwanda

Rwanda to run its own ccTLD (Afro-IP)

Spain

Supreme Court clarifies TRIPS applied in Spain since 25 January 1995 (Kluwer Patent Blog)

Private copying in Spain: a new look for fair compensation rules (The 1709 Blog)

United Kingdom

UK government considers broadening bolar exemption (Patent Docs)

Open Rights Group applies to defend citizens against copyright trolls in Golden Eye case (TorrentFreak)

ISPs will first determine whether public Wi-Fi providers are subject to anti-piracy code, Ofcom says (Out-Law)

Fewer than a quarter of infringers would be put off by internet access suspension threat, Ofcom report says (Out-Law)

Peers take issue with Government proposals on orphan works, collective licensing and copyright exceptions (Out-Law)

Total write-off for YouView mark: EWHC (Ch) decision in YouView TV Ltd v Total Ltd (IPKat)

EWCA: When calculating an “account of profits” it is not permissible for defendant simply to allocate a proportion of general overheads to an infringing activity, in order to reduce profits payable to rights holder: Hollister v Medik Ostomy (EPLAW) (IPKat) (IPKat)

EWPCC: Continuing an action after the patent content is resolved: Ningbo Wentai Sports Equipment Co Ltd v Wang (PatLit)

United States

US General

BIO and ASTA announce that GEMAA is now effective (Patent Docs)

USPTO Director Kappos to depart in January (IP Watch) (KEI) (IAM) (Inventive Step) (Patently-O)

US Patents

FTC and the DoJ to host public forum on patent assertion entity activies (Ars Technica)

Congress to tackle potential AIA fixes? (Patents Post-Grant)

US patent chief to software patent critics: “Give it a rest already” – Says explosion of smartphone patent litigation is “natural and reasonable.” (Ars Technica)

“Your criticisms are completely wrong”: Stallman on software patents, 20 years in – Free software guru makes a still-unpopular plea with new urgency—just ban them (Ars Technica)

Stallman’s got company: Researcher wants nanotech patent moratorium (Ars Technica)

APJs need to clarify the pro hac vice standard (WHDA)

US Patents – Decisions

CAFC: Expansion of standing for Walker Process claims: Ritz Camera v Sandisk ) (Patently-O) (Pharma Patents) (IP Spotlight)

CAFC finds lack of sufficient structure to support means-plus-function claim language, reverses District Court: ePlus v Lawson Software (GRAY on Claims)

CAFC affirms ITC finding of no section 337 violation in Norgren v ITC (ITC 337 Law Blog)

Linking pigs and humans through the enablement doctrine – CAFC decision in Edwards Lifesciences v CoreValve (Patently-O)

CAFC: Can you wait 20-years to challenge inventorship?: In this case, yes: Pei-Herng Hor and Ruling Meng v. Ching-Wu “Paul” Chu (Patently-O)

CAFC: Transocean v. Maersk, Part II: Secondary indicia of nonobviousness outweigh prima facie case of obviousness (Patently-O)

District Court Columbia denies equitable tolling, Fifth Amendment taking in Novartis patent term adjustment case: Novartis AG v. Kappos (PharmaPatents)

SD California: Violation of RAND obligation may constitute patent misuse or unclean hands: Multimedia Patent Trust v Apple (Docket Report)

CD California: Summary judgment of noninfringement against “patent troll” who filed “hundreds of lawsuits” did not warrant award of attorneys’ fees: ArrivalStar v Meitek (Docket Report)

US Patents – Lawsuits and strategic steps

AbbVie – AbbVie, Abbott Respiratory files patent infringement complaint against Watson in response to Para IV challenge regarding Niaspan (niacin XR) (Patent Docs)

Apotex – Apotex seeks exclusivity-triggering court decision in declaratory judgment action over generic BENICAR patent (FDA Law Blog) (Patent Docs)

Apple – Apple ordered to disclose patent settlement wit HTC (Ars Technica)

Apple – Google loan patents received special treatment under Apple-HTC settlement (Ars Technica)

Astellas US – Astellas files patent infringement suit against Akorn in response to Para IV challenge concerning Adenoscan (Patent Docs)

Chicago Board Options Exchange - Chicago options market goes nuclear, files $525 million patent suit (Ars Technica)

Ericsson – New Ericsson lawsuits against Samsung indirectly help Apple in fight against FRAND abuse (FOSS Patents)

Ferring – Ferring files separate patent infringement suits against Watson and Apotex in response to Para IV challenge concerning Lysteda (transexamic acid) (Patent Docs)

HTC – What’s HTC paying Apple for patents? Not an “outrageous” $8 per phone (Ars Technica)

HTC – Apple-HTC license agreement would terminate automatically after change of control (FOSS Patents)

Liberty Mutual – APJs refuse to consider redundant proposed grounds for rejection in covered business method petition: Liberty Mutual v Progressive Casualty Insurance (WHDA)

Life Technologies – Life Technologies sues Promega for infringing reissue patent claiming fluorescence-based nucleic acid analysis (Holman’s Biotech Blog)

Litepanels – ITC decides to review initial determination in Certain LED Photographic Lighting Devices (337-TA-804) (ITC 337 Law Blog)

Merck Sharp & Dohme – Merck files patent infringement suit against APP Pharmaceuticals in response to Para IV challenge concerning Integrilin (eptifibatide) (Patent Docs)

MicuRX – MicuRx Sues USPTO for patent term adjustment under Exelixis (Pharma Patents)

Millenium Pharmaceuticals – Millenium files patent infringement complaint against Accord Healthcare in response to Para IV challenge concerning Velcade (bortezomib) (Patent Docs)

MobileMedia Ideas – Apple will not face trial on MobileMedia claims amended in re-examination (WHDA)

Samsung – FRAND issues key to ITC review of preliminary dismissal of Samsung’s complaint against Apple (FOSS Patents)

Samsung – Samsung extends infringement claims to iPad 4, iPad mini — judge allowed this beforehand (FOSS Patents)

Samsung – ITC decides to review initial determination in Certain Electronic Devices (337-TA-794) brought by Samsung against Apple (ITC 337 Law Blog)

SAP America – A first glimpse on the scope of discovery in the new post-issuance PTO proceedings: SAP America v Versata (WHDA)

SAP America – APJs deny pro hac vice admission of litigation attorney to PTO bar: SAP America v Versata (WHDA)

US Copyright

U.S. Republican study committee releases progressive copyright document only to withdraw hours later (Michael Geist) (TorrentFreak) (KEI) (The 1709 Blog)

U.S. copyright surveillance machine about to be switched on, promises of transparency already broken (EFF)

How ISPs will do “six strikes”: Throttled speeds, blocked sites (Ars Technica)

RIAA hammers Google with DMCA takedowns in six strikes prelude (TorrentFreak)

US Copyright – Decisions

CD California smacks down another “Avatar” copyright infringement claim: Schkeiban v. Cameron (Technology & Marketing Law Blog)

US Copyright – Lawsuits and strategic steps

reFX Software – First software maker joins bittorrent lawsuit bonanza (TorrentFreak)

Third Degree Films – Porn copyright troll sues Verizon, angry it won’t cough up user names (Ars Technica)

US Trademarks

Expert report on the value of consumer review websites and 47 USC 230 (Technology & Marketing Law Blog)

US Trade Marks – Decisions

CAFC affirms T-T-A-B’s dismissal of cancellation petitions aimed at VILLAGE PEOPLE registrations: Karen L Willis v Can’t Stop Productions (TTABlog)

TTAB affirms genericness refusal of PARTNER SERVICES for business consulting: In re ScanSource (TTABlog)

TTAB sustains mere descriptiveness opposition to WOMEN’S RUNNING for fitness website: Wet Dog Media v Rodale (TTABlog)

US Trade Marks – Lawsuits and strategic steps

AmeriGas – AmeriGas gives up its lawsuit against PissedConsumer (Technology & Marketing Law Blog)

The Oatmeal – The Oatmeal sued over trademark by “Oatmeal Studios” (Ars Technica)

Happy Thanksgiving

by Lee on November 21, 2012

From all of us at Think IP Strategy, we wish those of you in the US and your families a happy and joyful Thanksgiving. Whilst we celebrate the traditional holiday by giving thanks for the years’ harvest, we also reflect on and pray for those less fortunate than ourselves, and especially those people on the East Coast still affected by hurricane Sandy.

Image credit: Clearly Ambiguous

Global Week in Review 14 Nov 2012 from IP Think Tank

by Marie Louise on November 14, 2012

Here is Think IP Strategy’sweekly selection of top intellectual property news breaking in the blogosphere and internet.

Highlights this week included:

ED Virginia invalidates USPTO interpretation of patent term adjustment RCE carve-out: Exelixis v Kappos (PharmaPatents) (Patent Docs) (IP Spotlight)(Patently-O) (Patently-O)

Canada Supreme Court rules Pfizer’s Viagra (sildenafil) patent invalid for insufficient disclosure: Teva v Pfizer (The IP Factor) (Ars Technica) (Michael Geist) (IP Osgoode) (Patently-O) (IPKat)

India: IPAB revokes Roche’s patent on Pegylated Interferon alpha 2a (Fix the Patent Laws) (Spicy IP) (PharmaPatents) (IP Whiteboard) (Spicy IP) (IP Watch)

US Supreme Court Justices consider the limits of first sale in Kirtsaeng v. Wiley (EFF) (Ars Technica) (Excess Copyright) (KEI) (Patently-O) (Patently-O) (The 1709 Blog)

Global

Global – General

2013 deadline looms for LDC members of the World Trade Organization (KEI)

European Commissioner affirms Europe wants CETA (EFF)

EU drops demands for inclusion of ACTA’s criminal IP provisions in CETA (Michael Geist)

Japan was the first to ratify ACTA. Will they join TPP next? (EFF)

Global – Patents

Kodak gets life-saving loan of $793 million—if it can sell its patents (Ars Technica)

Funding for patent litigation: a new solution? – HLP3 (IP finance) (PatLit)

Good things come in threes? DOJ, FTC and EC officials wax eloquent about FRAND (Patently-O)

Patent litigation funding: what about the underfunded defendant? (IP finance)

Study shows drug patents can be extended for decades (IP Watch)

Pharma outlook: don’t yield on IP, work on trust-building, call for global cooperation (IP Watch)

Global – Copyright

Kim Dotcom avoids “unsafe” .com, picks me.ga for new Megaupload (TorrentFreak) (Ars Technica)

Africa

Petition urges delay, discussion Of Pan-African IP Organization (IP Watch)

Moyo furthers debate on PAIPO (Afro-IP)

Top-level domain .Africa becomes object of bitter fight (IP Watch)

Australia

Is IP Australia ready to ‘Raise the Bar’? (Patentology)

Canada

Supreme Court rules Pfizer’s Viagra (sildenafil) patent invalid for insufficient disclosure: Teva v Pfizer (The IP Factor) (Ars Technica) (Michael Geist) (IP Osgoode) (Patently-O) (IPKat)

Supreme Court denies leave to hear pantoprazole section 8 appeal: Teva Canada v Nycomed Canada (Beeser)

Supreme Court decision in Canada v GSK – IP rights and the arm’s length principle (IP Osgoode)

Federal Court further clarifies Apotex’s section 8 claim for alendronate: Apotex v Merck Canada (Beeser)

Federal Court: Apotex wins $215 million ramipril section 8 claim: Apotex v Sanofi-Aventis (Beeser)

Federal Court: Prior art closer than infringement – Bodum’s design invalid and not infringed: Bodum and PI v Trudeau (Class 99)

Canadian Copyright reform in force: expanded user rights now the law (Michael Geist) (The 1709 Blog)

What the new copyright law means for you (Michael Geist)

Fair dealing consense emerges within Canadian educational community (Michael Geist)

China

Intellectual property issues of biomedical outsourcing in the PRC (China Law Insight)

What the data says about trade secret litigation in China (China IPR)

Denmark

Finally a reform of the Danish IPR enforcement is to be expected (Kluwer Patent Blog)

Ecuador

Ecuador goes it alone with massive fee hikes (Patentology)

Europe

Europe’s patent judges call for improvements to Draft Agreement on Unified Patent Court (IPKat)

AIPPI calls for CJEU status quo in unitary patent matters (IPKat)

The EU’s Digital Shift: 10 facts about media and content industries (IPKat)

Family of trade marks, defensive strategies and genuine use: CJEU speaks out in Rintisch (IPKat) (IPKat)

Orphan Works Directive now online (IPKat) (IPKat) (The 1709 Blog)

Georgetown University: Hague Court refers five more questions to the CJEU (The SPC Blog) (EPLAW)

General Court on lack of distinctiveness for plaid designs and colours: T-326/10 (Class 46)

Genereral Court upholds likelihood of confusion between Vital&Fit and VITAFIT marks (Class 46)

General Court finds likelihood of confusion: Tesa Tack v Tack Ceys (Class 46)

Plant protection in Europe: a seamless fit no more? – G2/12 (Kluwer Patent Blog)

Finland

Supreme Court denies ISP permission to appeal Pirate Bay blockade (TorrentFreak)

France

French president backs publishers, says Google should pay for snippets (Ars Technica)

French anti-P2P agency’s funding to fall by 23 percent in 2013 (Ars Technica)

Supreme Court rules on Catch-up TV (The 1709 Blog)

Germany

Pirate Party falling out of favor across Germany (Ars Technica)

German news aggregators face publisher levy under planned changes to copyright laws (Out-Law)

Bundesgerichtshof nullifies patent that claimed composition of leflunomide and teriflunomide: BHG X ZR 126/09 (EPLAW)

India

IPAB revokes Roche’s patent on Pegylated Interferon alpha 2a (Fix the Patent Laws) (Spicy IP) (PharmaPatents) (IP Whiteboard) (Spicy IP) (IP Watch)

Puzzling questions about Sugen’s sunitinib patent (Spicy IP)

Govt. of India follows up on SpicyIP reporting – revokes Avesthagen patent – first Indian victory for TKDL (Spicy IP)

Patent Office objects to attempts by CSIR & Co. to patent traditional knowledge and access biological resources without NBA approval (Spicy IP)

India publishes draft guidelines for patenting of TK and biological material (IP watch)

Supreme Court passes order restraining Shaadi.com and other rival matrimonial websites from infringing BharatMatrimony’s trade mark (Spicy IP)

Karnataka High Court temporarily restrains German company from exploiting trade secrets of Homag India (Spicy IP)

President of Costa Rica passes executive order allowing photocopying of academic materials. India, it’s time to wake up. (Spicy IP)

Indonesia

IKEA is a famous trademark in Indonesia (IP Komodo)

Compulsory pharma patent licenses in Indonesia – sourcing the API (IP Komodo)

Indonesia’s economic boom and IP (IP Komodo)

Israel

Patent extensions for pharmaceutical compositions in Israel cannot be obtained on the back of patent term extensions in the US, due to TRIPS change in law to 20 years from filing (Darbepoetin alfa)(The IP Factor)

Legal costs and allegations of bad faith in patent opposition by Omrix Biopharmaceuticals against CSL Behring’s Fibrinogen patent (The IP Factor)

What happens to rights where Israel Patent Office mail goes astray? (The IP Factor)

Israel Patent Office allows Fanta bottle to be registered as a trademark (The IP Factor)

Italy

Patent linkage: has it returned to Italy? (The SPC Blog)

New business enterprise courts to handle patent and trademark litigation (PatLit)

Netherlands

Dutch court rules (again) that Samsung doesn’t infringe Apple’s touch event model patent (FOSS Patents)

Philippines

Philippines heads toward expanded copyright law (IP Watch) (IP Komodo)

Poland

Poland – close to an end of the conflict between rights from registration of design and copyrights? (Class 99)

South Korea

South Korea is not a ‘FRAND rogue state’! – Seoul Central District Court issues decision in case between Apple and Samsung (Patentology)

Spain

Spanish Supreme Court clarifies that damages may be claimed from the date when the EPO published the grant of the patent (Kluwer Patent Blog)

United Arab Emirates

Cybersquatting Emirates style: the UAE Domain Name Dispute Resolution Policy (NIPC)

United Kingdom

UK government to inspect Google’s failed downranking of “pirate” sites (TorrentFreak)

EWPPC finds garment hanger design valid and infringed: Mainetti v Hangerlogic (Class 99)

EWPPC: Costs awards when both sides claim to be the winner: Vernacare v Environmental Pulp Products (PatLit)

United States

US General

Excuses, excuses! A round-up of exceptions under the failure to obtain timely tentative approval 180-day exclusivity forfeiture provision (FDA Law Blog)

Does a Hatch-Waxman patent delisting counterclaim terminate a 30-month litigation stay? (FDA Law Blog)

Rep. Eshoo expresses views on Abbott’s biosimilars petition in letter to FDA (Patent Docs)

US Patents

Groups petition for NIH exercise of march-in rights over Abbott Laboratories’ Norvir® (ritonavir) (Patent Docs) (Patently-O)

How common is federal funding of patented inventions? (KEI)

Age of patents when asserted (Patently-O)

Who can appear in patent trials before the USPTO Patent Trial And Appeal Board? (PharmaPatents)

Strategies for preissuance submissions in U.S. patent applications (PharmaPatents)

A strategy to speed up the prosecution of older cases (PatentablyDefined)

Hedging against petitioner estoppel at the PTAB (Patents Post-Grant)

CRU workload extending patent reexamination pendency? (Patents Post-Grant)

USPTO proposes update to Code of Professional Responsibility (Patent Docs)

Apple-HTC settlement is already the 15th official Android patent license deal (FOSS Patents)

Pending patent applications: delays in prosecution and patent term adjustments (Patently-O)

Timing of the first office action on the merits (Patently-O)

US Patents – Decisions

CAFC focuses on the problem when evaluating non-analogous art: K-Tec v Vita-Mix (PharmaPatents)

CAFC rules that Florida voting machines do not infringe patentee’s exclusive rights: Voter Verified v Premier Election Solutions (Patently-O)

CAFC: Overkill of the best mode: Joy Mining Machinery v Cincinnati Mine Machinery (Patently-O)

CD California: Attorney argument was not misrepresentation sufficient to support inequitable conduct: Lakim v Linzer (Docket Report)

Columbia holds that even a flawed office action stops the patent term adjustment clock: University of Massachusetts v Kappos (Pharma Patents)

Columbia: Court orders ANDA approval in pre-MMA 180-day exclusivity case; decision appears to have post-MMA implications: Watson v FDA (pioglitazone HCI) (FDA Law Blog)

Connecticut: Jury finds ABI’s sale of DNA sequencing reagents and products infringed Enzo’s patent: Enzo Biochem v Applera (Holman’s Biotech Blog)

Delaware: Can a patentee request reexamination for an improper purpose?: Exelis v Cellco (WHDA)

ED Texas: Discovery delay resulting in automatic data loss warrants adverse jury instruction: Realtime Data v MetroTexas (Docket Report)

ED Texas: VirnetX wins $368M from Apple, immediately files brand-new lawsuit – iPhone 5, iPad mini targeted in its latest lawsuit (Ars Technica)

ED Virginia invalidates USPTO interpretation of patent term adjustment RCE carve-out: Exelixis v Kappos (PharmaPatents) (Patent Docs) (IP Spotlight)(Patently-O) (Patently-O)

ED Virginia: Google infringes old Lycos patents, must pay $30 million: I/P Engine v Google et al (Ars Technica)

Minnesotta: Potential delay in resolving reexam due to America Invents Act does not warrant denial of stay pending reexam: Polaris v BRP US (Docket Report)

ND Alabama: Cost of electronic discovery database not recoverable: Abbott Point of Care v Epocal (Docket Report)

ND California: $200,000 e-discovery costs not recoverable: Plantronics v Aliph (Docket Report)

ND California: Block-billing results in 20% reduction in fee award: Apple v Samsung (Docket Report)

ND Illinois: Reexamination precludes award of royalties for pre-issuance infringement: Sloan Valve v. Zurn Industries (WHDA)

Nebraska: Direct competition between parties does not preclude reexamination stay: Phil-Insul v Airlite Plastics (WHDA)

Nevada draws line on terminal disclaimers for IP owned by subsidiaries: Email Link Corp. v. Treasure Island, LLC et al. (Intellectual Property Law Blog)

Nevada: Expert’s use of “supercharged 50% version of the 25% rule of thumb rule” did not render royalty rate opinion unreasonable: Halo Electronics v Bel Fuse (Docket Report)

WD Kentucky: Judge Coffman denies preliminary injunction motion because of pending reexaminations: Transtex Composite v Lydon Composite (WHDA)

WD Pensylvannia: Damages expert may consider entire price, profit and margin of accused product without showing entire market value rule applies: Carnegie Mellon University v. Marvell Technology Group (Docket Report)

WD Washington: “Ex ante, multilateral negotiation” methodology for determining RAND terms not inherently unreliable despite lack of peer review and publication: Micrsoft v Motorola (Docket Report)

Preliminary ITC ruling finds Samsung in infringement of four Apple patents: 337-TA-796 (FOSS Patents) (Ars Technica) (Protecting Designs)

ITC: Patentee’s obligation to license on FRAND terms did not preclude ITC exclusion order: 337-TA-794 (Docket Report)

PTAB: Apple victorious over Affinity Labs of Texas’ portable audio player patent (WHDA)

US Patents – Lawsuits and strategic steps

Acura Pharmaceuticals – Acura files patent infringement complaints against Impax, Par, Sandoz and Watson in response to Para IV challenge concerning Oxecta (oxycodone hydrochloride) (Patent Docs)

Acura Pharmaceuticals – Acura files patent infringement complaint against Sandoz following their Para IV certification in relation to Oxecta (oxycodone hydrochloride) (Patent Docs)

Apple – Apple-HTC ten-year license deal shows Android patent peace is achievable (FOSS Patents) (Out-Law)

Apple – Wisconsin: Judge cancels trial, tosses Apple’s FRAND lawsuit against Google’s Motorola Mobility (FOSS Patents) (Ars Technica)

Astrazeneca – Astrazeneca files patent infringement complaint against Lupin in response to Para IV challenge concerning Seroquel (quetiapine fumarate) (Patent Docs)

Avago Technologies – ITC institutes investigation (337-TA-860) regarding Certain Optoelectronic Devices For Fiber Optic Communications (ITC 337 Law Blog)

Creative Kingdoms – ITC decides to review initial determination in Certain Video Game Systems (337-TA-770) (ITC 337 Law Blog)

Cypress Semiconductor – ALJ Bullock issues initial determination of no section 337 violation in Certain Static Random Access Memories (337-TA-792) (ITC 337 Law Blog)

Fresenius USA – CAFC refuses en banc review of “do-over” patent reexamination: In re Baxter International (Patents Post-Grant)

Gilead Sciences – Gilead files patent infringement suit against Lupin in response to Para IV challenge concerning Viread (tenofovir disoproxil fumarate) (Patent Docs)

Graphics Properties – ALJ Essex denies motion for summary determination of invalidity in Certain Consumer Electronics And Display Devices (337-TA-836) (ITC 337 Law Blog)

HTC – HTC’s biggest patent worry after Apple settlement: 32 Nokia patent assertions in five venues (FOSS Patents)

Illumina – Page limits – the APJs send a message to the bar (WHDA)

Jazz Pharmaceuticals – Jazz files patent infringement suit against Roxane Laboratories following Para IV challenge regarding Xyrem (sodium oxybate) (Patent Docs)

Mallinckrodt – Mallinckrodt files patent infringement suit against Watson in response to Para IV certification concerning Exalgo (hydromorphone hydrochloride)(Patent Docs)

Microsoft – Microsoft asks appeals court to ban Motorola’s Android-based devices over four more patents (FOSS Patents)

Motorola Mobility – Google’s Motorola Mobility withdraws WiFi patents from Microsoft Xbox ITC case (FOSS Patents)

Motorola Mobility – Motorola Mobility is appealing an ITC ruling that held Apple not to infringe three patents (FOSS Patents)

MyKey – ALJ Bullock issues initial determination of no section 337 violation in Certain Computer Forensic Devices (337-TA-799)

Otter Products – ITC issues notice of final determination finding violation and general exclusion order in Certain Protective Cases (337-TA-780) (ITC 337 Law Blog)

Purdue Pharmaceutical – Purdue files patent infringement complaints against Par Pharmaceutical and Par Formulations in response to Para IV challenge concerning Intermezzo (sublingual zolpidem tartrate) (Patent Docs)

Robert Bosch – ITC decides to review two initial determinations in Certain Wiper Blades (337-TA-816) (ITC 337 Law Blog)

SAP – PTAB denies motion for pro hac vice admission: SAP America v Versata Development Group (Patents Post-Grant)

TQP Development – Patent suits target Google, Intel, hundreds more for encrypting web traffic (Ars Technica)

US Copyright

Twitter announces new policy to publicize copyright takedown notices (IP Spotlight)

EFF wins renewal of smartphone jailbreaking rights plus new legal protections for video remixing: Copyright Office announces exemptions to mitigate DMCA harms (EFF) (Ars Technica)

“Six strikes” evidence re-reviewed to fix RIAA lobbying controversy (TorrentFreak) (Ars Technica)

US Copyright – Decisions

Colorado: Plastic surgeon owns copyright in before-and-after photos of patient: Denenberg v. LED Technologies (Technology & Marketing Law Blog)

Arizona: Consumer review website isn’t liable for users’ copyright infringement: Ripoff Report v. ComplaintsBoard (Technology & Marketing Law Blog) (Internet Cases)

California Court of Appeal: Email that says “Done .. thanks!” doesn’t transfer copyrights: MVP Entertainment v Frost (Technology & Marketing Law Blog)

ND Illinois: Virginia man ordered to pay $1.5 million for sharing 10 porn films via P2P networks: Flava Works v Kywan Fisher (Ars Technica)

US Copyright – Lawsuits and strategic steps

Capitol Records – Plaintiffs and individual defendant move for reconsideration in Capitol v MP3Tunes (Recording Industry vs The People)

DISH Network – Overreaching anti-circumvention claim shut down: DISH Network v. World Cable (Technology & Marketing Law Blog)

Katz, Raanan – Blogger can’t defeat copyright infringement claim on motion to dismiss: Katz v. Chevaldina (Technology & Marketing Law Blog)

Megaupload – Megaupload can’t come back online, U.S. tells court (TorrentFreak)

Patrick Collins – Judge blasts troll for “lack of interest in actually litigating”: Another judge becomes a skeptic of mass porn file-sharing lawsuits (Ars Technica)

Twitter – Photographer who sued Twitter for copyright infringement voluntarily dismisses lawsuit: Boffoli v. Twitter (Technology & Marketing Law Blog) (Ars Technica)

Wiley – Supreme Court Justices consider the limits of first sale in Kirtsaeng v. Wiley (EFF) (Ars Technica) (Excess Copyright) (KEI) (Patently-O) (Patently-O) (The 1709 Blog)

US Trade Marks – Decisions

ED California: Google defeats trademark challenge to its AdWords service: Jurin v. Google (Technology & Marketing Law Blog)

ED Pensylvannia: Another Google AdWords advertiser defeats trademark infringement lawsuit: CollegeSource v. AcademyOne (Technology & Marketing Law Blog)

US Trade Marks – Lawsuits and strategic steps

Compagnie Financiere Richemont – Luxury brands can’t grab emails in trademark dispute (EFF)

Google – Google gets unwanted ruling in AdWords trademark lawsuit: CYBERsitter v. Google (Technology & Marketing Law Blog)

Google – With Rosetta Stone settlement, Google gets closer to legitimizing billions of AdWords revenue (Technology & Marketing Law Blog) (Ars Technica)

K-V Pharmaceuticals – K-V calls upon the ITC to defend its Makena brand (The Brand Protection Blog) (ITC 337 Law Blog)

Yelp – Stupid lawyer tricks (and how the PTO could help stop them) – Village Voice sues Yelp over creation of ‘best of’ lists (EFF)

Conducting Business in China from Oxford University Press – well worth a read

by Duncan on November 2, 2012

We spend a fair amount of time working with clients either in China or going in to China so I’m always interested to review books on the topic.

So it’s refreshing to see a pragmatic, insightful book on the topic with an intellectual property focus.

Lei Mei‘s - Conducting Business in China (Oxford University Press 2012) is just such a book. It’s easy to read and packed with practical insight from the author’s personal experience. Insights span cultural, relationship, business and intellectual property and add up to a very useful introduction to doing business in China.

Lei Mei has also helpfully added relevant IP legislation as appendices to the book.

This one is now on my recommendations list.

Getting Personal

by Guest on October 26, 2012

Guest post by Robert Cantrell

Can IP decisions always just be business – logical, factual? Should they be?

One of the first pieces of real world advice I received out of school when I joined the Army is the importance of positioning yourself to make decisions based on logic without undue emotional considerations. A cascade of bad decisions could develop the moment you stepped of that course, for example, you based a decision on who to send on a mission on who you knew had a family versus who was actually best for handling that mission.

A cascade of bad decisions can also develop the moment you let other factors trump logical and factual decision-making in IP. For example, the decision to litigate or not-litigate should be viewed from cold, hard logic considering the potential benefits, costs, and values to be gained or protected. It should never be based on a desire to get even or on a reluctance to harm a friend – both emotionally based decisions that may or may not have logical justification. You, after all, did not make the decision that put you at odds, and that leaves you only with the responsibility to produce the best possible outcome for yourself.

Image credit: HikingArtist.com

Global Week in Review 24 Oct 2012 from IP Think Tank

by Marie Louise on October 24, 2012

Here is Think IP Strategy’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

Highlights this week included:

Australian government announces review into pharmaceutical patents (IP Whiteboard) (Patentology) (The SPC Blog)

Brazilian press to Google News: pay up or leave our content alone (Ars Technica) (The 1709 Blog) (Out-Law)

French media to Google: pay us for news searches – Google tells government it would rather cut off French media sites (Ars Technica) (The 1709 Blog) (Out-Law)

EWCA upholds non-infringement finding and publicity order over Samsung Galaxy Tab: Samsung v Apple (FOSS Patents) (Ars Technica) (Maier & Maier) (Class 99) (Patently-O)

Global

Global – General

Civil society urges World Trade Organization to give the poorest countries in the world more time to implement TRIPS (EFF)

Global – Trade Marks / Brands / Domain Names

ICANN consultation on post-expiration domain name recovery policy (IPKat)

Governments weigh options on new top-level domains at ICANN (IP Watch)

Honduras requests WTO Panel on Australia tobacco law (IP Watch)

Global – Patents

Improving global affordability of HIV/AIDS drugs through technology innovation (Profitability Through Simplicity)

Samsung and Teva each pause rituximab biosimilar development (Scott Beeser’s Pharma & Biotech Blog)

USPTO and EPO announce launch of cooperative patent classification system (Patent Docs)

UN: Governments to double biodiversity funding, push access/benefit-sharing (IP Watch)

Global – Copyright

WIPO members inch toward visually impaired treaty (IP Watch)

Pirate Bay ditches its servers, sets sail for the cloud (Ars Technica)

Australia

Compulsory licenses for emergency drugs for developing countries – IP Australia releases “Exposure Draft” of Intellectual Property Laws Amendment Bill 2012 (IP Whiteboard)

Government announces review into pharmaceutical patents (IP Whiteboard) (Patentology) (The SPC Blog)

Trade marks, un-parallel imports and the emerging concept of use as a trade mark – FCAFC decision in Paul’s Retail v Lonsdale Australia (ipwars.com)

Surplus stupidity puts Australia’s future at risk (Patentology)

Brazil

Brazilian press to Google News: pay up or leave our content alone (Ars Technica) (The 1709 Blog) (Out-Law)

Canada

The $2 billion Big Pharma giveaway in CETA: Can the government ignore its own internal analysis? (Michael Geist)

China

What has been the impact of the Trademark Law on trademark litigation (China IPR)

Foreign IP litigation in China: how important is it? (China IPR)

Judicial trends in Beijing … and countercyclical trends (China IPR)

Europe

EWHC refers Swiss/Liechtenstein questions to the CJEU: AstraZeneca v Comptroller-General (gefitinib) (The SPC Blog) (EPLAW) (IPKat)

CJEU: Football Dataco v Sportradar – the transmission theory may apply… (The 1709 Blog) (IPKat)

CJEU: Elenca srl v Ministero dell’Interno – Now you CE it, now you don’t (IPKat)

The unitary patent package: Max Planck publishes 12 reasons for concern (EPLAW) (PatLit) (IPKat)

Common logo for legal online pharma traders: consultation launched (Class 46) (IPKat)

General Court dismisses action against OHIM decision finding no likelihood of confusion between MISS H (figurative) and MISS B marks for simlar or identical goods (Class 46)

Finland

Netflix caught using “pirated” subtitles in Finland (TorrentFreak)

France

French media to Google: pay us for news searches – Google tells government it would rather cut off French media sites (Ars Technica) (The 1709 Blog) (Out-Law)

Civil liability because of the enforcement of a preliminary injunction: the priority question on constitutionality: Laboratoires Negma v Biogaran (diacetylrhein) (Kluwer Patent Blog)

Germany

Microsoft withdraws request for German preliminary injunction against Motorola RAZR (FOSS Patents)

Validity of sublicence upon lapse of principal licence: Take Five; M2Trade (The 1709 Blog)

India

Mapping out the future of Indian copyright societies (Spicy IP)

The ‘Register of Owners’ for future copyright societies – will the Registrar of Copyrights get it right 16 years later? (Spicy IP)

Bata sho(o)ed out of Court – No defamation says Delhi HC (Spicy IP)

Indonesia

Government expropriation of patents – more drugs to combat HIV/AIDS and Hep B in Indonesia (IP Whiteboard)

Ireland

Pirate Bay censored in Ireland after mysterious court order (TorrentFreak)

Israel

Circadin (melatonin) receives patent term extension in Israel after all (The IP Factor)

Israel Patent Agency publishes proposed 3rd Amendment to the Trademark Regulations (The IP Factor)

Israel and the Patent Prosecution Highway (The IP Factor)

Israel newspaper receives damages for acredited references to another (The IP Factor)

Italy

Latanoprost – Administrative Court reverses Italian Antitrust Authority’s decision that Pfizer abused its dominant position (Kluwer Patent Blog)

Japan

Japanese court rejects two of Samsung’s patent infringement claims against Apple (FOSS Patents)

Malaysia

New Zealand

Accused student prevails in first “three strikes” copyright case (Ars Technica) (TorrentFreak)

Peru

INDECOPI signs IP cooperation agreements with China, Mexico and Chile (IP tango)

Philippines

Philippines fake goods data (IP Komodo)

Singapore

A new way to solve patent disputes in Asia – IPOS currently rolling out a new service as part of its offering at the Arbitration and Mediation Centre (IAM)

Spain

Supreme Court clarifies the date on which European patents should be considered effective in Spain: ROS Roca v Envac Centralsug (EPLAW)

Switzerland

Federal Administrative Court: SAVANNAH is for vegetation, not the town (Class 46)

Thailand

Thailand and cigarette branding (IP Komodo)

United Kingdom

EWCA affirms obviousness of antibody phage display method patent in ranibizumab case between MedImmune and Novartis (Scott Beeser’s Pharma & Biotech Blog)

EWCA upholds non-infringement finding and publicity order over Samsung Galaxy Tab: Samsung v Apple (FOSS Patents) (Ars Technica) (Maier & Maier) (Class 99) (Patently-O)

EWHC (Ch): Former Sky employee was guilty of database rights infringement for supply of customer data to rival: British Sky Broadcasting & Ors v Digital Satellite & Ors (Out-Law)

SPCs and Directive 2001/83-compliant authorisations: a comment on AstraZeneca v Comptroller-General of Patents (gefitinib) (The SPC Blog)

BPI asks UK ISPs to block more major torrent sites (TorrentFreak) (Out-Law)

United States

US Patents

USPTO harmonizes professional conduct rules (Director’s Forum) (Pharma Patents) (Patents Post-Grant) (Patently-O)

USPTO reopens the first-inventor-to-file comment period (Patently-O)

Citing references at the PTO (Patently-O)

PTAB backlog: Over the hump! (Patently-O)

USPTO expands patent prosecution highway (Patent Docs)

Patent pro bono (Patently-O)

US Patents – Decisions

CAFC finds Treximet patents non-obvious and infringed: Pozen v Par Pharmaceutical (Pharma Patents)

CAFC contemplates de novo review of USPTO claim constructions: Flo Healthcare v Kappos (Patents Post-Grant) (Patently-O)

CAFC: Technology Patents LLC v T-Mobile (UK) Ltd (Patently-O)

ND California: Inventor was not diligent in reducing invention to practice by prioritizing other work ahead of patent application: Illumina v Complete Genomics (Docket Report)

SD New York: Hatch-Waxman liability may apply to entities involved in ANDA preparation: Purdue Pharma et al v Varam et al (Docket Report)

ITC issues remedies and notice of final determination finding violation in Certain Lighting Control Devices (337-TA-776) brought by Lutron (ITC 337 Law Blog)

ITC: ALJ Essex issues notice of initial determination of no violation by LG in Certain Devices For Improving Uniformity Used In A Backlight Module (337-TA-805) brought by the Industrial Technology Research Institute (ITC 337 Law Blog)

Two recent 101 cases at the PTAB: Ex parte Thomsen; Ex parte Battles (Patently-O)

US Patents – Lawsuits and strategic steps

Apple – Patent office tentatively invalidates Apple’s rubber-banding patent used in Samsung ND California trial (FOSS Patents) (Ars Technica)

Apple – ND California: Apple blasts Samsung’s post-trial “attack on the jury” as weak, unfounded (Ars Technica)

Apple – ND California: In post-trial battles with Samsung, Apple fights to keep documents sealed (Ars Technica)

Audiovisual Components – ITC: Excessive number of alleged prior art references warrants “biweekly declarations” detailing efforts to reduce number of references 337-TA-837 (Docket Report)

Compound Photonics – ALJ Rogers grants motion to terminate investigation in Certain Projectors with Controlled-Angle Optical Retarders (337-TA-815) (ITC 337 Law Blog)

Eisai R & D Management Co – Eisai R & D files for review of patent term adjustment calculation for patent entitled “Fused Aminodihydrothiazine Derviatives” (Patent Docs)

Medtronic – En banc question: Who proves (non)infringement when licensee challenges patent: Medtronic v Boston Scientific & Mirowski Family Ventures (Patently-O)

Momenta – Rehearing sought in Hatch-Waxman “safe harbor” case; plaintiffs-appellees contend that the CAFC’s panel decision expands “safe harbor” into “safe ocean”: Momenta v Amphastar (FDA Law Blog)

Monsanto – Monsanto’s attack on two Pioneer Hi-Bred patents among the post-grant challenges filed week of October 15, 2012 (WHDA)

Monsanto – Supreme Court grant certiorari in Monsanto v. Bowman (Patent Docs)

Nokia – Nokia withdraws one patent from ITC complaint, HTC wants another one referred to arbitration (FOSS Patents)

Phil-Insul – Neveada: Plaintiff’s delay in enforcing patent rights against competitor warrants stay pending reexam: Phil-Insul v Airlite Plastics (Docket Report)

Professional Drug Co – FTC moves as amicus in In re Effexor Antitrust Litigation and gets its (well-earned) comeuppance (Patent Docs)

Purdue Pharma – Purdue files patent infringement suit against Sandoz in response to Para IV challenge (Patent Docs)

Realtek Semiconductor – ITC institutes investigation (337-TA-859) regarding Certain Integrated Circuit Chips (ITC 337 Law Blog)

Samsung – ITC: U.S. Department of Justice investigating Samsung’s use of standard-essential patents against Apple (FOSS Patents)

Unwired Planet – ALJ Gildea denies joint request for initial determination of no violation, but terminates investigation based on withdrawal of complaint in Certain Devices for Mobile Data Communication (337-TA-809) (ITC 337 Law Blog)

VirnetX – ITC institutes investigation (337-TA-858) regarding Certain Devices With Secure Communications Capabilities (ITC 337 Law Blog)

Walker Digital – ALJ Gildea grants motion to terminate investigation as to LG Electronics in Certain Blu-Ray Disc Players (337-TA-824) (ITC 337 Law Blog)

US Copyright

“Six strikes” system goes live this fall, appeals to cost $35 (Ars Technica)

Six-strikes “independent expert” is RIAA’s former lobbying firm (TorrentFreak)

US Copyright – Decisions

CD California: Heirs of Superman artist can’t reclaim their copyright: DC Comics v Pacific Pictures Corp et al (Ars Technica)

CD California: Case concerning use of Einstein’s likeness dismissed without trial: Hebrew University v General Motors (The IP Factor)

US Copyright – Lawsuits and strategic steps

Garcia, Cindy Lee – Garcia v Nakoula, Google, YouTube and 200 others: Is an actor an author? (IPKat)

Goodwin, Kyle – Megaupload user seeks to unseal documents relating to data seizure (EFF) (Ars Technica)

US Trademarks

It’s not easy being green: FTC cautions marketers about “eco-friendly” brand claims (The Brand Protection Blog)

US Trade Marks – Decisions

TTAB affirms refusal to register handwheel design feature due to lack of acquired distinctiveness: In re Elesa (TTABlog)

TTAB says “hasta la vista” to GRUPO PEGASSO fraud claim: O.T.H. Enterprises v Federico Estevan Vasquez (TTABlog)

TTAB finds CURVEE, CURVEY, and CURVEEY merely descriptive and confusable with CURVY, all for clothing: In re Apparel (TTABlog)

IAM Strategy 300 – Call for Nominations

by Marie Louise on October 23, 2012

If you know a world-class IP Strategist, now is the time to act.

IAM has begun accepting nominations for the 2013 edition of the IAM Strategy 300, the directory of the world’s leading professionals who provide services in field of development and implementation of strategies to maximise the value of client’s IP assets.

The 2013 edition of the IAM Strategy 300 will set aside listings from the previous annual edition of the publication. All listings will be the result of fresh nominations and research. Nominees can offer services in any area related to IP strategy. In order to qualify for inclusion in the 2013 IAM Strategy 300 candidates must receive at least three nominations from people outside their organisation and must be found by the IAM research team to possess exceptional skill and knowledge in the field.

To submit your nomination, please email here. The closing date for the nomination process is November 15th.

Global Week in Review 17 October 2012 from IP Think Tank

by Marie Louise on October 17, 2012

Here is Think IP Strategy’sweekly selection of top intellectual property news breaking in the blogosphere and internet.

Highlights this week included:

CAFC reverses Nexus injunction for lack of a nexus and doubts about infringement: Apple v Samsung (FOSS Patents) (Ars Technica) (Patently-O)

SD New York: Digitizing books is fair use: Authors Guild v HathiTrust (EFF) (Ars Technica)

CAFC to take on software patents… again: CLS Bank v Alice Corp (EFF) (Ars Technica)

The start of compulsory licenses in Indonesia (IP Komodo) (Pharmalot) (IAM)

Global

Global – General

IP strategy changing focus (IP Think Tank)

CETA negotiations continue under cloud of ACTA concerns (Michael Geist)

Civil society network issues proposals on climate change and IPRs (IP Watch)

Global – Trade Marks / Brands / Domain Names

Internet governance world meets in Toronto amid new domains controversy (Michael Geist)

When porn tycoons meet internet sultans: the triple-x saga (IP Osgoode)

Global – Patents

UN agency’s roundtable on wireless patent litigation reflects deep divisions in industry (FOSS Patents)

Panellists: Global health justice needs government commitment, new innovation models (IP Watch)

UN high-level meeting in India on biodiversity addresses access and benefit-sharing (IP Watch)

Global – Copyright

Canada-EU Trade Agreement replicates ACTA’s notorious copyright provisions (EFF)

Three-Step test in copyright negotiations (KEI)

WIPO members meet to advance treaty text on visually impaired (IP Watch)

Pirate Bay moves to the cloud, becomes raid-proof (TorrentFreak)

Artist can’t get pirated music off iTunes, Google and Microsoft stores (TorrentFreak)

File-sharers buy 30% more music than non-P2P peers (TorrentFreak)

Africa

Piping up on PAIPO (Afro-IP)

Australia

2nd tranche of Raising the Bar draft regulations (ipwars.com) (Patentology)

IP Australia proposal renders innovation patents ‘obsolete’ – IPTA (Patentology)

Access to affordable medicines or new review of pharmaceutical patents (ipwars.com)

Belgium

Court of Appeal Brussels issues preliminary injunction against Eurogenics on basis of Lundbeck’s escitalopram SPC, despite invalidation in earlier proceedings (Kluwer Patent Blog)

Brazil

BIO travels to Brazil to support the ecosystem of innovation (BIOtechNOW)

Canada

Court of Appeal dismisses Gilead’s appeal of decision that patent not eligible to be listed on Patent Register against Gilead’s tenofovir / emtricitabine / rilpivirine product, COMPLERA (Beeser)

Canada joins TPP as a second-tier negotiator: entertainment lobby approves, civil society does not (EFF)

Why it’s time for a Canadian digitization strategy based on fair dealing (Michael Geist)

Government study finds CETA drug patent reforms would cost Canadians billions (Michael Geist)

Ontario public school boards preparing to drop Access Copyright next year (Michael Geist)

China

How to protect your IP from China (Part 4 – China Law Blog) (Part 5 – China Law Blog)

Shanghai Courts adopt new methods to compel compliance of preliminary injunctions in intellectual property infringement disputes (China Law Insight)

Europe

Unitary patent court will be trolls’ paradise, warns GSK counsel (IAM)

Max Planck trade mark reform proposals now online (Class 46)

CJEU to rule on the meaning of inactivity: Case C-409/12 Backaldrin Österreich The Kornspitz Company (IPKat)

General Court confirms refusal of CLIMA COMFORT for “insulating materials” T-371/11 (Class 46)

France

Tribunal de Grande Instance de Paris: Preliminary injunction prohibits Teva Santé from marketing generic irbesartan/ hydrochlorothiazide (HCTZ): Sanofi, Sanofi Pharma Bristol Myers Squibb and Sanofi Aventis France / Teva Santé (The SPC Blog)

Germany

Microsoft tells German court it will amend Motorola lawsuit to hold Google Inc. liable (FOSS Patents)

Federal Supreme Court overrules decision of the Federal Patent Court and fully re-established the patent as granted: Agfa v Papier Union (EPLAW)

India

Sugen’s desperate attempt to save its Sunitinib patent (Spicy IP)

Bayer-Natco decision TRIPS Compliant? (Spicy IP)

‘Xerox’ is not generic…….yet?! – IPAB decision in Himachalapathy v Xerox (Spicy IP)

Delhi High Court passes another interesting order under the 1958 Act on the issues arising between domestic and international proprietors of marks: Exide Industries v Exide Corp. USA (Spicy IP)

Delhi University students protest against copyright aggression against educational institutions and students (Spicy IP)

Delhi High Court seeks to break the myth of ‘breaking sports news’: New Delhi Television Ltd. v. ICC Development (Intl.) Ltd. (Spicy IP)

A test case for India’s new safe harbour provision: AGS Entertainment v. 37 ISPs (Spicy IP)

Roche vs Cipla: A patent disappointment? (Spicy IP)

Indonesia

The start of compulsory licenses in Indonesia (IP Komodo) (Pharmalot) (IAM)

US pressure on Indonesia to improve IPR protection (IP Komodo)

Israel

You can’t win ‘em all: Amgen’s successful U.S. patenting strategy results in denial of patent term extension in Israel (America-Israel Patent Law)

Portugal

New IP court: no sign yet of hoped-for improvements (PatLit)

Russia

Social network vKontakte held liable for copyright infringement a second time (IP Watch)

Spain

Court of Appeal of Barcelona: Utility model may only be revoked due to lack of inventive activity when at the priority date it would have been “super-evident” to the person skilled in the art (Kluwer Patent Blog)

Switzerland

Apple puts money where its mouth is, pays for Swiss railway clock design – but details of agreement not made public (Ars Technica)

Uganda

Model provisions for patents in Uganda (Afro-IP)

United States

US General

The proposed “Cloud Computing Act of 2012,” and how internet regulation can go awry (Technology & Marketing Law Blog)

Zynga sues former CityVille exec, accusing him of stealing game ideas (trade secrets) (Ars Technica)

US Patents

USPTO extends first-to-file comment period to November 5, 2012 (PharmaPatents)

Trolls filed 40% of patent infringement lawsuits in 2011 (Ars Technica)

Biotech/pharma patent issuances up, applications down in 2011 (Patent Docs)

Limited scope of the new derivation proceedings (Pharma Patents)

The asymmetric estoppel of business method patent challenges (Patents Post-Grant)

Pay to stay….the game changing impact of business method patent challenges (Patents Post-Grant)

AIA and IP investment: how will things change? (IP finance)

Did the AIA eliminate secret prior art? (Patently-O)

Software patents: 50 years of circuitous artifices (Patently-O)

Myriad’s dangerous patents and their negative impact on women’s health (EFF)

Design patent considerations (Inventive Step)

THOSITA: Obvious to a team having ordinary skill in the art (Patently-O)

US Patents – Decisions

CAFC reverses Nexus injunction for lack of a nexus and doubts about infringement: Apple v Samsung (FOSS Patents) (Ars Technica) (Patently-O)

CAFC affirms denial of request for preliminary injunction related to the sale of Roche’s osteoporosis drug Boniva® (ibandronate): Hoffmann-La Roche v Apotex (Patent Docs)

CAFC clarifies obviousness-type double patenting between products and methods in pemetrexed case: Eli Lilly v Teva (PharmaPatents)

CAFC: Belkin International, Inc. v. Kappos – A cautionary tale in the intricate arena of inter partes re-examination (Intellectual Property Law Blog)

ED Texas: Jury finds patent on “look and feel” for online stores valid, infringed: DDR Holdings v Digital River (Ars Technica)

ITC issues public version of opinion finding no violation of section 337 by MediaTek or Zoran in Certain Integrated Circuits (337-TA-786) brought by Freescale (ITC 337 Law Blog)

ITC: ALJ Bullock issues public version of initial determination finding no section 337 violation by Nintendo in Certain Video Game Systems (337-TA-770) brought by Creative Kingdoms (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Apotex – Apotex Challenge to Alcon Ophthalmic treatment patent among the post-grant filings week of October 8, 2012 (WHDA)

Avanir Pharmaceuticals – Avanir files patent infringement suit against Impax following Para IV challenge concerning Nuedexta (dextromethorphan) (Patent Docs)

Butamax (TM) Advanced Biofuels – Delaware: No disqualification of expert who met with opposing counsel before being retained: Butamax (TM) Advanced Biofuels v Gevo (Docket Report)

Canon – ALJ Shaw grants motion to terminate investigation as to OnlineTechStores in Certain Toner Cartridges (337-TA-829); investigation remains pending against other respondents (ITC 337 Law Blog)

CLS Bank – CAFC to take on software patents… again: CLS Bank v Alice Corp (EFF) (Ars Technica)

E-Contact – ED Texas: Counsel’s access to former client’s “confidential litigation strategies” is insufficient for disqualification: E-Contact Technologies v Apple (Docket Report)

Federal Trade Commission – FTC petitions for certiorari in the Androgel case FTC v. Watson; trying to convince Court that this case, not the K-Dur case, is the right vehicle for consideration of legality vel non of reverse payment settlement agreements (Patent Docs)

Glycobiosciences – Glycobiosciences files for correction of inventorship of patents relating to Fougera’s SOLARAZE (diclofenac) (Patent Docs)

Infineon Technologies – ND California: “Contingent” infringement contentions prohibited: Infineon Technologies v Volterra Semiconductor Corporation (Docket Report)

Innovention Toys – ED Louisiana: Willfulness determination should await jury’s assessment of reasonableness: Innovention Toys v MGA Entertainment (Docket Report)

Louisiana Wholesale Drug Co. – “No-AG” agreements are anticompetitive, says the FTC for a second time: In re Lamictal Direct Purchaser Antitrust Litigation (FDA Law Blog)

Louisiana Wholesale Drug Co. – Amici file briefs supporting certiorari in K-Dur Case – Part II (Patent Docs)

Microsoft – WD Washington: Google opposes fixed license fees for SEPs, insists on percentage of end product price: Microsoft v Motorola (FOSS Patents)

Microsoft – WD Washington denies Motorola motion, will set FRAND terms at Microsoft trial next month: Microsoft v Motorola (FOSS Patents)

Motorola – Google’s Motorola asks Ninth Circuit for rehearing after losing appeal of Microsoft injunction (FOSS Patents)

Nordock – ED Wisconsin: Failure to identify litigation counsel’s opinions on privilege log waives privilege: Nordock v Systems (Docket Report)

Peregrine Semiconductor Corporation – ALJ Essex grants complainant Peregrine’s unopposed motion to withdraw complaint in Certain Radio Frequency Integrated Circuits (337-TA-848) (ITC 337 Law Blog)

Seattle Genetics – Seattle Genetics files for declaratory judgment of non-infringement in relation to its ADCETRIS (brentuximab vedotin) product: Seattle Genetics v Arizona Technology Enterprises (Patent Docs)

South Alabama Medical Science Foundation – ITC institutes investigation (337-TA-857) regarding Certain Reduced Folate Nutraceutical Products (ITC 337 Law Blog)

Speak For Yourself – App for voice-disabled users reinstated on App Store after patent fight – Companies that sued for infringement end up settling (Ars Technica)

Syncronoss Technologies – New Jersey: Counsel’s past representation of parent warrants disqualification in litigation involving subsidiary: Syncronoss Technologies v Asurion Mobile Applications (Docket Report)

Technology Properties – ALJ Essex grants motion to terminate investigation as to Sabrent in Certain Computers and Computer Peripheral Devices (337-TA-841); investigation remains pending against other respondents (ITC 337 Law Blog)

Tessera – ALJ Essex grants-in-part motion for summary determination of bond forfeiture in Certain Semiconductor Chips With Minimized Chip Package Size (337-TA-605) (ITC 337 Law Blog)

Vringo – Investors seek billion-dollar payday as Vringo v. Google trial begins – Vringo acquired search-related patents once owned by Lycos, targeted Google (Ars Technica)

US Copyright

AT&T starts six-strikes anti-piracy plan next month, will block websites (TorrentFreak)

US Copyright – Decisions

SD New York: Digitizing books is fair use: Authors Guild v HathiTrust (EFF) (Ars Technica)

US Copyright – Lawsuits and strategic steps

Pearson – DMCA notice forces 1.45 million education blogs offline (TorrentFreak) (Ars Technica)

US Trademarks

Another banner year for trademarks (Director’s Forum)

US Trade Marks – Decisions

TTAB precedential no. 34: Section 66(a) registration may be cancelled under section 14 even if I.R. still viable: SaddleSprings v Mad Croc Brands (TTABlog)

IP Strategy changing focus

by Duncan on October 10, 2012 · 1 comment

There was a great discussion at the symposium yesterday on ‘IP Strategy, what has changed, what is changing?’

Here are my slides – I look forward to your comments too.

IP Strategy – what has changed, what is changing? from DuncanBucknell

Global Week in Review 10 Oct 2012 from IP Think Tank

by Marie Louise on October 10, 2012

Here is Think IP Strategy’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

Highlights this week included:

WIPO defers Pirate Parties International observer status (Spicy IP) (IP Watch) (IPKat)

EU Orphan Works Directive adopted by the Council (The 1709 Blog) (IPKat) (Out-Law)

Self replicating (and alive) inventions: US Supreme Court grants certiorari in Monsanto v. Bowman (Patently-O) (Holman’s Biotech Blog) (Inventive Step)

Global

Global – General

WIPO defers Pirate Parties International observer status (Spicy IP) (IP Watch) (IPKat)

Global – Trade Marks / Brands / Domain Names

Experts gather in Toronto to assess ICANN and internet governance (IP Watch)

Global – Patents

Can I – and should I – patent my smartphone app? (Patentology)

USPTO and EPO release advance version of cooperative patent classification system (Patent Quality Matters)

Global – Copyright

WIPO assembly moves to fast-track copyright exceptions for visually impaired (IP Watch)

YouTube upgrades its automated copyright enforcement system (EFF) (Ars Technica)

Can ad revenue save the printed media? (IP finance)

Australia

High Court publish reasons for finding tobacco plain packaging laws valid (ipwars.com)

Reading prior art when the times, they are a-changin’: Bradken Resources v Lynx Engineering Consultants (Patentology)

Show doing well on BitTorrent? We’ll buy it, says media giant Fairfax Media (TorrentFreak)

Canada

Canada officially joins Trans Pacific Partnership talks (Michael Geist)

China

How To Protect Your IP From China (Part 1 – China Law Blog) (Part 2 – China Law Blog) (Part 3 – China Law Blog)

Europe

UPC Rules of Procedure – Will they address concerns of small-country SMEs? (Kluwer Patent Blog)

EU Orphan Works Directive adopted by the Council (The 1709 Blog) (IPKat) (Out-Law)

Arnold J asks the CJEU to try again in relation to SPCs on combination product (IPKat)

General Court finds no likelihood of confusion between Le Lancier and El Lancero marks (Class 46)

ZEBEXIR/ZEBINIX: likelihood of confusion where packaging matters:Case T-366/11 (IPKat)

Pucci v Tucci: latest developments in a protracted trademark legal saga (IPKat)

Phoning the rapporteur? Think again … T 1251/08 (PatLit)

France

Tribunal de Grande Instance issues preliminary injunction against Teva in case concering Sanofi’s irbesartan/HCTZ combination SPC (EPLAW)

Rules governing post mortem transmission of droit de suite held constitutional (The 1709 Blog)

Germany

Google’s Motorola Mobility pulls all Android devices from German market after patent rulings (FOSS Patents)

Mannheim Regional Court holds that Android does not infringe Microsoft’s radio interface patent (FOSS Patents)

India

Delhi High Court recognizes international exhaustion under the Indian trademark law: Kapil Wadhwa & Ors v Samsung Electronics & Anor (Spicy IP)

Cipla succeeds in revoking Pfizer / Sugen’s patent on sunitinib (Spicy IP)

National Biodiversity Authority set to prosecute Monsanto’s Indian subsidiary: What about Cornell, USAID and the Department of Biotechnology? (Spicy IP)

The need for iron-clad enforcement of Section 8 disclosure requirements (Spicy IP)

India ratifies Nagoya Protocol on biodiversity access and benefit-sharing (IP Watch)

New India guidelines on similar biologics (Spicy IP)

Indonesia

Supreme Court finds in favour of trademark owner in ‘iStore’ trademark infringement case (IP Komodo)

Ireland

At last, a legal ruling that yoghurt is … only yoghurt – partial revocation of Danone’s ACTAVIA for all goods in Class 30, 32 and certain goods in Class 29 (IPKat)

Israel

Israel Supreme Court rejects Adidas’ appeal re four stripe sneakers (The IP Factor)

Italy

First Italian opposition decision issued (Class 46)

Netherlands

District Court of The Hague perspective on interpretation of SPC Regulation post-Medeva: Sanofi v Teva (irbesartan and irbesartan/HCTZ) (The SPC Blog)

New Zealand

Three-strikes regime – Eight ‘music pirates’ to face Copyright Tribunal, one to defend in person (TorrentFreak)

Sweden

Evasive action: How The Pirate Bay four dodged Swedish justice—for a while (Ars Technica)

Switzerland

Supreme Court: VOGUE is a famous mark, enjoys protection for all products (Class 46)

Uganda

Ugandan company Quality Chemical Industries Limited producing generic drugs (Afro-IP)

United Kingdom

Changing scope of anti-piracy code would need Parliamentary and EU approval, says Ofcom (Out-Law)

Explaining patent litigation 3: All change for smaller businesses – tax benefits (PatLit)

United States

US General

US announces $2.4M in local grants to combat IP theft (IP Watch) (Ars Technica)

What’s the hang-up? Apotex sues FDA over compliance failure that’s stalling ANDA approvals – AVALIDE (irbesartan/hydrochlorothiazide) and AVAPRO (irbesartan) (FDA Law Blog)

FDA sued over generic DIOVAN 180-day exclusivity; lawsuit takes issue with FDA forfeiture decision and “trust me” approach to exclusivity decisions (FDA Law Blog)

US Patents

Claim your exemption! – US applicant exemption from Rule 141 of EPC (Director’s Forum)

PPAC issues report on USPTO patent fees proposal (Patent Docs)

With 102(f) eliminated, is inventorship now codified in 35 U.S.C. 101? Maybe, but not restrictions on patenting obvious variants of derived information (Patently-O)

Rules changes implementing the inventor’s oath or declaration provisions of the AIA (Patent Docs)

ITC publishes new proposed rules regarding scope of discovery (ITC 337 Law Blog)

Revival of Parker v Flook (Patently-O)

US Patents – Decisions

CAFC again reverses USPTO on broadest reasonable interpretation (BRI) claim interpretation: In re Abbott Diabetes Care (Patents Post-Grant)

New Jersey: Claims of second BONIVA patent held obvious: Hoffmann-La Roche v Apotex (Beeser)

SD California: Invalidity opinion creates fact issue as to specific intent needed for indirect infringement: Gen-Probe v Becton Dickinson (Docket Report)

WD Virginia: Kickstarter posting alone was insufficient to support exercise of state-specific personal jurisdiction: Robinson v Bartlow (Docket Report)

ED Louisiana: Manufacturer’s indemnity of retailers does not obviate plaintiff’s right to proceed against retailers: Innovention Toys v MGA Entertainment (Docket Report)

CD California: Reexamination stay granted despite direct competition between parties: Inogen v Inova Labs (WHDA)

ND Illinois: Enzyme distributor admits infringement as Novozymes wins injunction: Novozyms v CTE Global (Green Patent Blog)

ITC: ALJ Bullock grants motion for summary determination of invalidity in Certain Wiper Blades (337-TA-816) (ITC 337 Law Blog)

Analysis of detailed version of preliminary ITC ruling on Samsung complaint against Apple (FOSS Patents)

US Patents – Lawsuits and strategic steps

AbbVie – AbbVie files patent infringement suit against Banner Pharmacaps over NDA filing to manufacture generic version of ZEMPLAR (paricalcitol) (Patent Docs)

Actelion – Actelion preemptively sues generic companies over REMS and biostudy product availability issues; case could be a bellwether for future efforts – TRACLEER (bosentan) (FDA Law Blog)

Apple – Juror confusion over patent laws to doom Apple Samsung verdict? (Patents Post-Grant)

CSL Bank – Federal Circuit to announce whether software is patentable?: En banc rehearing on Section 101 issues: CSL Bank v Alice Corp (Patently-O)

FDA – Supreme Court is again asked to take up drug patent settlement agreements; this time it’s ANDROGEL (testosterone) (FDA Law Blog)

Gunn – Supreme Court questions whether patent law malpractice claims “arise under” the US patent laws (and thus are amenable to federal jurisdiction): Gunn v Minton (Patently-O) (Inventive Step)

Ivax – Ivax files patent infringement suit against Celgene over manufacturer and sale of VIDAZA (Azacitidine) (Patent Docs)

Kyocera – Kyocera attack on two scalable display patents, among the post-grant requests filed week of October 1, 2012 (WHDA)

Lodsys – Lodsys claims momentum in patent fight as some indie devs leave US (Ars Technica)

Louisiana Wholesale Drug Co - Amici file briefs supporting certiorari in K-Dur case (Patent Docs)

Louisiana Wholesale Drug Co - Generic Pharmaceutical Association files amicus brief in K-Dur case (Patent Docs)

Merck Sharpe & Dohme – Merck files patent infringement suit against Sandoz in response to Para IV challenge concerning ZETIA (ezetimib) (Patent Docs)

Monsanto – Self replicating (and alive) inventions: Supreme Court grants certiorari in Monsanto v. Bowman (Patently-O) (Holman’s Biotech Blog) (Inventive Step)

Motorola Mobility – ALJ Essex grants Motorola’s motion to withdraw complaint against Apple and terminates investigation in its entirety in Certain Wireless Communication Devices (337-TA-856) (ITC 337 Law Blog)

Rates Technology – Pioneering patent troll seeks the Supreme Court’s ear—plus a cool $12 million: Rates Technology says Best Buy broke a deal by challenging its patents (Ars Technica)

Standard Innovation – ALJ Pender grants motion to terminate investigation as to Natural Contours and Lelo Shanghai Trading in Certain Kinesiotherapy Devices (337-TA-823) (ITC 337 Law Blog)

US Copyright

MPAA chief admits: SOPA and PIPA “are dead, they’re not coming back.” (Ars Technica) (EFF)

US Copyright – Lawsuits and strategic steps

Goodwin, Kyle – Megaupload user will get his day in court (EFF)

Google – Google and Association of American Publishers reach an agreement. What about the authors? (IPKat) (IP Watch)

Malibu Media – Judge tells copyright troll to put up or shut up on porn lawsuits – Five “John Does” to act as test defendants in mass infringement lawsuit (Ars Technica)

Megaupload – Judge denies Megaupload’s motion to dismiss, but… leaves door open for motion to dismiss indictment until government finds a way to issue summons (TorrentFreak)

Oracle – Oracle appeals Google patent and copyright non-infringement ruing (Out-Law) (FOSS Patents)

ReDigi – EMI v ReDigi: US digital music resale hearing begins (The 1709 Blog)

US Trade Marks – Decisions

CAFC affirms TTAB: JPK PARIS 75 geographically deceptively misdescriptive of fashion accessories: In re Miracle Tuesday, LLC (TTABlog)

Precedential No. 33: Federal registration defense yields TTAB dismissal of dilution claim: Academy of Motion Picture Arts and Sciences v Alliance of Professionals & Consultants (TTABlog)

Global Week in Review 3 Oct 2012 from IP Think Tank

by Marie Louise on October 3, 2012

Here is Think IP Strategy’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

Highlights this week included:

Updated Draft Agreement on Unified Patent Court published (IPKat) (EPLAW) (IP Watch)

Do patent and copyright law restrict competition and creativity excessively? – Judge Posner’s view (Becker-Posner Blog) (Michael Geist) (ipwars.com) (IPKat) (The 1709 Blog) (Ars Technica)

Global

Global – General

On TPP secrecy, US and five others decline to answer UN (IP Watch)

Australia, Chile and New Zealand reply to UN Rapporteur for Right to Health on TPP complaints (KEI)

U.S. negotiators on TPP — Don’t trade away the biopharmaceutical research sector (Patent Docs)

Should we allow the overleveraging of IP rights by contract? (IPKat)

Global – Trade Marks / Brands / Domain names

ICANN set to change the topography of the internet (Spicy IP)

Global – Patents

Médecins Sans Frontières launches patent opposition database (IP Watch)

Practice note on US/EPO patent family prosecution (Patently-O)

Global – Copyright

Kim Dotcom teases Megabox, reveals exclusive artists? (TorrentFreak)

Australia

Innovation patents reach back in time for infringement: FCA decision in Britax Childcare v Infa-Secure (Patentology)

Canada

BMS wins prohibition order on SUSTIVA compound patent: Bristol-Myers Squibb and Merck Sharp & Dohme v Mylan (Beeser)

China

China trademarks and your logo (China Law Blog)

Hermès counterfeiter sentenced to life (IPKat)

Europe

Updated Draft Agreement on Unified Patent Court published (IPKat) (EPLAW) (IP Watch)

Declaration on private copying remuneration (The 1709 Blog)

Commission seeks model contract terms and new standards for cloud computing services (Out-Law) (The 1709 Blog)

Plain packaging and the European Commission: is there a mixed message? (IPKat)

Case C-138/12 HI HOTEL HCF – request for preliminary ruling from the Bundesgerichtshof in case concerning copyright infringement of photographs (The 1709 Blog)

EWHC (Pat) refers two SPC questions to the CJEU regarding combination products: Actavis v Sanofi (CoAprovel – irbesartan/hydrochlorothiazide) (EPLAW)

France

Paris Criminal Court: CiNEFOX movie pirates handed jail sentences, ordered to pay 1.1 million Euros (TorrentFreak)

Cour d’appel de Paris decides case concerning validity of acquisition of prior rights after being accused of trademark infringement: Circus v Apple (Class 46)

Finland

Supreme Administrative Court: Smileys cannot be trademarks in Finland (Class 46)

Hungary

Metropolitan Court of Budapest grants six preliminary injunctions in June 2012 over likely infringement in blockbuster drug patent cases (EPLAW)

India

TKDL poised to draw first blood before Indian patent office; long road ahead (Spicy IP)

Delhi High Court: Novelty of design: Tarun Sethi v Vikas Budhiraja (Spicy IP)

District Judge of Lucknow grants Eastern Book Company interim injunction against Lexis Nexis for infringement of copyright (Spicy IP)

Japan

Anti-downloading law hits Japan, up to 2 years in prison from today (TorrentFreak) (The 1709 Blog)

Latin America

Netherlands

District Court Utrecht decision concerning cross-border jurisdiction: Boehringer Ingelheim v. Teva (Kluwer Patent Blog)

New Zealand

New Zealand Prime Minister apologizes for illegal Dotcom spying (Ars Technica) (TorrentFreak)

Inside NZ Police Megaupload files: US investigation began in 2010 (Ars Technica)

NZ prime minister defends Hollywood trip in wake of Megaupload mess; maintains meetings have nothing to do with ongoing Kim Dotcom case (Ars Technica)

High Court finds NZ courts have jurisdiction to decide on infringement of a US patent, committed in US by US-based company: Stewart v Franmara Inc no.2 (Patentology)

Portugal

File-sharing for personal use declared legal in Portugal (TorrentFreak)

Thailand

Thai FDA approves first generic version of Pfizer’s VIAGRA for sale after 1 October (IP Komodo)

United Kingdom

Nominet launches consultation on new .uk domain names (IPKat) (Out-Law)

Small claims track gives businesses new IP dispute resolution option (Out-Law) (Kluwer Patent Blog)

ISPs: Ofcom has underestimated cost of our obligations under anti-piracy code (Out-Law)

Birmingham High Court: Glass and a half full of purple joy: Cadbury wins trademark battle against Nestle (Spicy IP)

IPO decision ‘stems’ from Brüstle: BL O/316/12 International Stem Cell Corporation (Kluwer Patent Blog)

EWPCC finds invalidity on obviousness grounds and no infringement in BOS v Coba UK Automotive Products (EPLAW)

EWPCC rejects obviousness and added matter attacks, finds validity and infringement in Vernacare v Environmental Pulp Products (EPLAW)

United States

US General

Do patent and copyright law restrict competition and creativity excessively? – Judge Posner’s view (Becker-Posner Blog) (Michael Geist) (ipwars.com) (IPKat) (The 1709 Blog) (Ars Technica)

Senate Judiciary Committee approves S 3523 Innovative Design Protection Act 2012 (Class 99) (Protecting Designs)

GAIN Act stacks 5-years of market exclusivity for antibiotics (Patently-O)

New legislation would provide exclusivity add-on for significant drug combinations (FDA Law Blog)

Another orphan drug battle; Depomed sues FDA over GRALISE orphan drug exclusivity (FDA Law Blog)

US Patents

White House releases major paper on propelling innovation in drug development and recognizes HP&M’s Frank Sasinowski for contributions (FDA Law Blog)

A first look at inter partes review filings (PharmaPatents)

What to know about petitions for an interview in patent reexamination (WHDA)

Examiner claim confirmations in inter partes patent reexamination, what happens on appeal? (Patents Post-Grant)

How a rogue appeals court wrecked the patent system (Ars Technica)

Utility patents issued 2000 to 2012 (Patently-O)

Android camp is enforcing only one patent injunction against Apple (and none against Microsoft) (FOSS Patents)

Android devices have already been found to infringe 17 valid Apple and Microsoft patents (FOSS Patents)

Trans-border active patent inducement under Akamai (Patently-O)

US Patents – Decisions

CAFC affirms validity and infringement in combination drug patent case: Pozen v Par Pharmaceutical (TREXIMET – sumatripan/naproxen) (Patent Docs)

CAFC upholds board determination that biotechnology invention was obvious: In re Droge (PharmaPatents)

CAFC In, the Federal Circuit continues in the direction set by Powell, although it does not appear to be ready to completely abandon the notion that certain “minor” violations can constitute inequitable conduct – perhaps maintaining a bit of the “bark” of inequitable conduct despite curtailing its “bite.”: Outside the Box Innovations v. Travel Caddy (Patently-O)

CAFC sides with USPTO on SNQ debate: Belkin v Kappos (Patents Post-Grant) (Patently-O)

CAFC: Sales ban on Samsung Galaxy Tab 10.1 will be reconsidered; passed decision on injunction back to Judge Koh: Samsung v Apple (Ars Technica) (FOSS Patents)

ND California: Apple v. Samsung judge ends Galaxy Tab ban, Apple may have to pay $2.6M; Samsung tablet was banned for three months based on patent it didn’t infringe (Ars Technica) (FOSS Patents)

9^th Circuit rejects German injunction order in Microsoft v. Google patent battle: Microsoft v Motorola (Patently-O) (FOSS Patents)

Massachusetts jury finds Abbott’s anti-IL-12 antibody claims invalid (STELARA – ustekinumab) (Beeser)

Columbia: ArQule v. Kappos: Enjoy your weekend, or what a difference a day (or two or three) of PTA can make (Patent Docs)

Columbia: Patents claiming systems and methods for electronic sale of fixed-income assets deemed invalid for failure to claim patentable subject matter: Federal Home Loan Mortgage Corp. v Graff/Ross Holdings (Docket Report)

Nevada: Common ownership required to maintain enforceability of patent subject to terminal disclaimer means ownership by same entity, not same corporate family: Email Link v Treasure Island (Docket Report)

CD California: “Same transaction” required for joinder under 35 U.S.C. § 299 does not encompass separate transactions within a “commerce stream”: Mednovus v QinetiQ (Docket Report)

ITC: ALJ Rogers issues Initial Determination of no S 337 violation in Certain Coenzyme Q10 Products (337-TA-790) (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Apple – Samsung adds Apple’s iPhone 5 to its patent lawsuit (Ars Technica) (FOSS Patents)

Apple – Samsung claims foreman lied about his past to get on Apple v. Samsung jury(Ars Technica) (FOSS Patents)

Apple – Apple urges court to move ahead with at least 6 of 32 patents waiting for HTC in Delaware (FOSS Patents)

Avago – Avago files new 337 complaint regarding Certain Optoelectronic Devices For Fiber Optic Communications (ITC 337 Law Blog)

Etagz – Hourly rates of $675-775 deemed unreasonable for discovery disputes: Etags v Quiksilver (Docket Report)

Industrial Technology Research Institute – Alleging “selective disclosure” of prior art reference is sufficient to plead intent to deceive element of inequitable conduct claim: Industrial Technology Research Institute v LG Corporation (Docket Report)

Intellectual Ventures – Intellectual Ventures attack on Xilinx patents among the filings in the two weeks September 16-28, 2012 (WHDA)

Merck & Co – PhRMA and Bayer files amicus briefs in K-Dur case (Patent Docs) (Patent Docs)

Motorola Mobility – Motorola suddenly drops bid to ban sale of Macs, iOS devices; no settlement, but ITC case is likely over (Ars Technica) (FOSS Patents)

Speck – Speck files new 337 complaint regarding Certain Cases For Portable Electronic Devices (ITC 337 Law Blog)

US Copyright

ISPs and tracking company ready to start six-strikes anti-piracy scheme (TorrentFreak)

US Copyright – Decisions

W D Washington: Recent ruling in Triple Town/Yeti Town game app dispute provides cautionary lessons for both EA and Zynga: Spry Fox v Lolapps (Technology & Marketing Law Blog)

US Copyright – Lawsuits and strategic steps

Garcia, Cindy Lee – Actress in anti-Islam film sues YouTube on copyright grounds (Ars Technica)

RIAA – RIAA targets foreign music download portals – Mimp3.net, Descargaralbum.com and Jou-site.me (TorrentFreak)

US Trade Marks – Decisions

SD Texas: City of Paris ordered to pay USD 100,000+ for reverse domain name hijacking (Class 46)

Precedential No. 32: Board finds service of notice of opposition flawed but adequate: Musical Directions v. Norman W. McHugh (TTABlog)

US Trade Marks – Lawsuits and strategic steps

RC3 – MD Florida dismisses RC3’s declaratory judgement complaint against Justin Beiber without prejudice, finding lack of personal jurisidiction (IP Whiteboard)

IP Strategy – what has changed, what is changing?

by Duncan on September 28, 2012 · 1 comment

I’m speaking at an upcoming symposium in Melbourne, Australia on 10 October. My co-speaker for the symposium is Helen Mutimer, Director of IP at CSL.

Places are limited, so book now if you want to come along.

This symposium will examine contemporary IP strategy both as a field of study and as a practical management tool.

Details:

Wednesday 10 October 2012
3 – 5pm including snacks and drinks
Monash University Caulfield Campus
Theatre 1.08 Building N

Click here for a map.

There is no charge to attend but for catering purposes please register at: http://www.trybooking.com/BYZW

Questions? Please contact Professor Michael Vitale, Michael.Vitale [at] monash.edu or +61 3 9905 8049

I look forward to seeing you there.

Going With or Against the Flow

by Guest on September 28, 2012

Guest post by Robert Cantrell

An IP strategy should take account of the natural course of technology evolution so that it provides adequate protections into the future. For example, product solutions tend, over time, to move towards an ideal state of providing more and more benefit with less and less drawback. So where your IP protects innovation that does provide more benefits or fewer drawbacks, it is likely aligned with the course of technical evolution as a whole. Where IP protects innovation that moves a product solution away from an ideal state, such as a car that has lower fuel economy than it could, it should come under scrutiny to ensure there is a solid business case for moving against the expected flow, such as the marketability of desirable luxuries in that car that caused the fuel economy loss.

Image credit: BottleLeaf

Global Week in Review 26 Sept 2012 from IP Think Tank

by Marie Louise on September 27, 2012

Here is Think IP Strategy’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

Highlights this week included:

Orphan works directive approved by EU Parliament (IPKat) (The 1709 Blog) (IP Watch)

France convicts first person under anti-piracy law (even though he didn’t do it) (Ars Technica) (TorrentFreak) (EFF) (The 1709 Blog)

CAFC requires specific intent to deceive for inequitable conduct: 1^st Media v Electronic Arts (PharmaPatents) (Inventive Step) (Patently-O)

US: PTAB submissions have commenced (Director’s Forum) (WHDA) (Patents Post-Grant) (Patents Post-Grant) (Patently-O)

Global

Global – General

ACTA: Will it ever become a valid international treaty? (IP Watch)

Dutch government says no CETA with ACTA provisions (Michael Geist)

Trans-Pacific Partnership – International Intellectual Property Alliance demands rollback of recent Canadian reforms in secretive trade deal (Michael Geist)

Trans-Pacific Partnership – A look at the IP provisions (Spicy IP)

China’s SAIC Minister Zhou visits USPTO (Director’s Forum)

WIPO design treaty: not just yet… (Class 99)

Global – Patents

An innovation cliff? Is it P&G’s problem or all our problem? (IP finance)

Intellectual Ventures – largest worldwide patent holder? (Patently-O)

Global – Copyright

Megaupload readies for comeback, code 90% done (TorrentFreak)

New paper on ISP liability: how to reconcile US and EU approaches? (The 1709 Blog)

The thorny issue of competition in the music industry (The 1709 Blog)

Australia

IP Australia issues new consulation paper ‘Innovation Patents – Raising the Step’ (Patentology) (ipwars.com)

Draft regulations reveal applicants to be slugged with search fee (Patentology)

Raising the Bar Draft Regulations (ipwars.com)

Oh what a feeling! Jetstar disputes Toyota’s rights to register “jumping” trade marks (IP Whiteboard)

Belgium

Brussels Court of Appeal rules patents valid and infringed in Lundbeck v Tienfenbacher (escitalopram) (EPLAW)

Botswana

A brief look at Botswana’s new IP law (IP Watch)

Canada

Opposing views: The impact of Canada’s Access Copyright decision (IP Watch)

China

Shanghai courts adopt new methods to compel compliance of preliminary injunctions in intellectual property infringement disputes (China Law Insight)

China’s changing trademark environment. Why you need to register your trademark now. (China Law Blog)

Quality, not quantity, key to China’s patent incentives, says EUCCC Report (IP Whiteboard)

Europe

Orphan works directive approved by EU Parliament (IPKat) (The 1709 Blog) (IP Watch)

European creators insist private copying levy still relevant (IP Watch)

Combination SPCs: more hypertension for the CJEU? (CoAprovel – irbesartan/hydrochlorothiazide) (The SPC Blog)

CJEU asked to rule on legality of downloading from illegal sources: ACI Adam B.V. & Ors v Stichting de Thuiskopie & Anor (TorrentFreak) (The 1709 Blog) (Out-Law)

Danish Supreme Court to seek preliminary ruling from the CJEU in ROLEX customs seizure case (Class 46)

France

France convicts first person under anti-piracy law (even though he didn’t do it) (Ars Technica) (TorrentFreak) (EFF) (The 1709 Blog)

Van Cleef & Arpels win French tussle with employee over design ownership (Class 99)

Germany

Mannheim Regional Court says Samsung and Motorola don’t infringe Apple’s touch event model patent (FOSS Patents)

Munich I Regional Court: Microsoft wins third German injunction against Google’s Motorola over high-power patent (FOSS Patents)

Mannheim Regional Court may defer to EU regulator on Samsung-Apple lawsuits over FRAND patents (FOSS Patents)

Munich I Regional Court hands Apple rubber-banding patent injunction against Google’s Motorola Mobility (FOSS Patents)

Supreme Court deals with distinction between permissible “repair” of a patented product and impermissible “renewed-manufacturing” in Pallet Container II (EPLAW)

India

Will the amendments to the Copyright Act serve their purpose? (Spicy IP)

Balancing public and private interests in the intellectual property regime (IP Watch)

Madras High Court declines to grant interim injunction in trademark dispute between Google Ad-words and matrimonial portals (Spicy IP)

Nexavar (Sorafenib) – IPAB dismisses Bayer’s appeal against compulsory license (Spicy IP) (KEI)

Erlotinib – Roche v Cipla: Part 1: validity of patent (IIPRD)

Ireland

Ireland accedes to the London Agreement (IPKat)

Italy

First Italian PTO opposition decisions to be issued this month (Class 46)

Netherlands

Dutch court rules linking to photos is copyright infringement (Ars Technica) (The 1709 Blog) (Out-Law)

District Court of The Hague issues preliminary injunction against manufacture or sale of Irbetasan/HCTZ combination medicine by defendant: Sanofi v Teva (EPLAW)

New Zealand

NZ Patents Bill second reading debate (Patentology)

Government spies illegally bugged Kim Dotcom, Prime Minister admits (TorrentFreak) (TorrentFreak) (Ars Technica)

Panama

Is Panama about to pass the worst copyright law in history? (TechnoLlama)

South Africa

Traditional knowledge legislation given a reprieve (Afro-IP)

Spain

An SPC granted using a marketing authorisation that time has proved to be wrong: Nullification or recalculation? (Kluwer Patent Blog)

Switzerland

First elected Pirate Party mayor to rule Swiss town (TorrentFreak)

Swiss practice re “SAN” and “SANA” for pharmaceuticals (Class 46)

Syria

Syria denounces Madrid Agreement on trademark registration (IP Watch)

United Kingdom

Reform of copyright law key to economic growth in Europe, Hargreaves claims (Out-Law)

Soaring digital book sales down to stable copyright regime in UK, claims publishers’ body (Out-Law)

Further deregulation proposed for innovative ‘challenger’ businesses and entrepreneurs (Out-Law)

Why the Meltwater case won’t break the internet (The 1709 Blog)

United States

US General

Is it a drug or device? Court requires FDA to explain itself in Prevor v FDA (Diphoterine skin wash) (FDA Law Blog)

Insight into FDA’s implementation of FDASIA for devices (FDA Law Blog)

US Patents

USPTO clarifies stance on 101 challenges before the PTAB (Patents Post-Grant) (Director’s Forum) (Patently-O)

Unprecedented surge in patent reexamination filings (Patents Post-Grant)

PTAB submissions have commenced (Director’s Forum) (WHDA) (Patents Post-Grant) (Patents Post-Grant) (Patently-O)

Announcing the Patent Trial and Appeal Board (PTAB) (Director’s Forum) (Patently-O)

Post grant patent challenges to threaten continuation portfolios (Patents Post-Grant)

Creeping death….the infectious estoppel impact of PTAB validity trials (Patents Post-Grant)

Pending appeals not impacted by BPAI->PTAB transformation (Patently-O)

A rush to file at the end of inter partes reexaminations (Patently-O)

USPTO encourages third parties to participate in review of pending patent applications (Patently-O)

Preissuance submissions: A description of the relevance to examination but not an explanation (Patently-O)

Preissuance submissions (Patently-O)

Senate approves legislation to implement old patent treaties – S.3486: Patent Law Treaties Implementation Act of 2012 (Inventive Step)

Patent settlement agreements: the next barrage (FDA Law Blog)

Should presumptions be avoided in the reverse payment debate? (Patent Docs)

USPTO publishes final derivation rules (PharmaPatents)

Ex parte patent appeal results (Patently-O)

PWC reports sharp rise in patent litigation filings (IP Spotlight) (Patent Baristas)

The problematic origins of nationwide patent venue (Patently-O)

Supplemental examination: inequitable conduct amnesty and beyond (Patently-O)

Does the entire market value rule make sense when applied to apportionment analyses? (Patently-O)

Patently wrong – The jury’s verdict in Apple v Samsung (IP Watch)

Should a challenge to a patent’s validity based on claiming unpatentable subject matter (i.e., Bilski) be addressed at the pleading stage? – yes – OIP v Amazon.com / no – Phoenix Licensing v Aetna (Docket Report)

US Patents – Decisions

CAFC requires specific intent to deceive for inequitable conduct: 1^st Media v Electronic Arts (PharmaPatents) (Inventive Step) (Patently-O)

CAFC allows Santarus to keep Par’s generic version of Zegerid® off the market until the expiration of Orange Book-listed patents: Santarus v Par Pharmaceuticals (Patent Docs)

CAFC again denies declaratory judgment jurisdiction: dj plaintiff must provide evidence of real and immediate conflict: Matthews International v Biosafe (Patently-O)

CAFC: Good-standing licensee must prove non-infringement in DJ action: Medtronic v Boston Scientific Corp (Patently-O) (Patent Docs)

CAFC: Appealing Board decisions (and losing): In re Droge (Patently-O) (Patent Docs)

CAFC: Who decides obviousness: judge or jury?: Kinetic Concepts and Wake Forest University v Smith & Nephew (Patently-O)

Access to courts: CAFC issues preliminary rejection of Judge Koh’s stance on open access to trial documents: Apple v Samsung (Patently-O)

ND California: Preliminary injunction prohibiting sale of Galaxy Tab survives despite jury verdict of noninfringement: Apple v Samsung (Docket Report) (Ars Technica)

ED Virginia: Harvard’s US oncomouse patents are all expired (for the time being): Harvard College v Kappos (Patently-O)

ND California: Cease & desist letter lacking charge of infringement did not create substantial controversy sufficient for declaratory relief claim: Unisense Fertilitech v Auxogyn (Docket Report)

WD Wisconsin: $50 million verdict overturned because plaintiff failed to prove infringing products were made or imported into the United States: Promega v Life Technologies (Docket Report)

SD Florida: Invalidation of patent on reexamination warrants relief from judgment of infringement, including injunction and monetary award: Flexiteek Americas v Plasteak (Docket Report)

ED Wisconsin: Claim term “sufficiently rigid” was not insolubly ambiguous and did not render claim indefinite: Formax v Alkar-RapidPak-MP Equipment (Docket Report)

New Jersey: Janssen’s low dosage oral contraception regime patent valid in dispute with Lupin (Ortho Tri-cyclen Lo) (Beeser)

Columbia: District Court stands by patent term adjustment tolling decision: Bristol Meyers Squibb v Kappos (Pharma Patents)

Delaware: Judge Robinson distinguishes between re-examination and reissue; patentees precluded from bringing second lawsuit: Senju v Apotex (WHDA) (Docket Report)

SD California: 35 U.S.C. §285 permits attorneys’ fee award for post-settlement conduct “intertwined” with patent issues: Fitness IQ v. TV Products USA (Docket Report)

ND California: Failure to dismiss case after unfavorable claim construction rendered case exceptional warranting attorneys’ fees: Spectros v Termo Fisher Scientific (Docket Report)

CD California: Timeshare trading patent invalid for failure to claim patentable subject matter under Bilski: Vacation Exchange v Wyndham Exchange and Rentals (Docket Report)

ITC: Apple doesn’t infringe Samsung’s smartphone patents – Judge notes patented claims aren’t practiced in the domestic market, either (Ars Technica) (FOSS Patents)

ITC issues public version of opinion affirming in part and reversing in part violation of Section 337 in Certain Wireless Communication Devices (337-TA-745) (ITC 337 Law Blog)

ITC issues final determination of no violation by Zoran or MediaTek in Certain Integrated Circuits (337-TA-786) brought by Freescale Semiconductor (ITC 337 Law Blog)

ITC: ALJ Essex issues notice of initial determination finding Section 337 violation in Certain LED Photographic Lighting Devices (337-TA-804) brought by Litepanels (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

AMP – AMP files petition for certiorari to Supreme Court, seeking review of CAFC’s decision upholding patent-eligibility of Myriad’s “isolated DNA” claims (Pharma Patents) (Patent Docs)

Anu IP – ALJ Pender grants motions to terminate investigation with respect to numerous respondents in Certain Electronic Devices Having A Retractable USB Connector (337-TA-843) (ITC 337 Law Blog)

Apple – Apple asks Federal Circuit to deny Samsung’s request for remand of Galaxy Tab 10.1 injunction (FOSS Patents)

Apple – Apple demands $707 million in additional damages from Samsung – Samsung objects, wants a new trial (Ars Technica) (FOSS Patents)

Avanir – Avanir files patent infringement complaints against Actavis, Par, Watson and Wockhardt in reponse to Para IV challenge concerning Nuedexta (dextromethorphan/quinidine) (Patent Docs)

Braintree Laboratories – Braintree files patent infringement suit against Cupress Pharmaceutical in response to Para IV challenge concerning Suprep (sodium/potassium/magnesium) (Patent Docs)

BriarTekIP – ITC institutes investigation (337-TA-854) regarding Certain Two-Way Global Satellite Communication Devices (ITC 337 Law Blog)

Cubist – Cubist files patent infringement complaint against Hospira in response to Para IV challenge regarding Cubicin (Daptomycin) (Patent Docs)

EON Corp – Defense counsel disqualified based on seventeen year old prioer representation: EON Corp v FLO TV (Docket Report)

Hitachi Metals – ITC institutes investigation (337-TA-855) regarding Certain Sintered Rare Earth Magnets (ITC 337 Law Blog)

Louisiana Wholesale Drug Co – Generic defendant petitions for certiorari in K-Dur Litigation (Patent Docs)

Microchip Technology – ALJ Rogers grants motion to terminate investigation in its entirety in Certain Semiconductor Integrated Circuit Devices (337-TA-840) (ITC 337 Law Blog)

Motorola – ITC decides to investigate Google’s (Motorola Mobility’s) patent complaint against Apple (FOSS Patents) (FOSS Patents) (ITC 337 Law Blog)

Novartis – Novartis files patent infringement complaint against Apotex in response to Para IV challenge concerning Lotrel (amlodipine/benazepril) (Patent Docs)

OSRAM – ITC to review in part ALJ Shaw’s initial determination in Certain Light-Emitting Diodes (337-TA-784) (ITC 337 Law Blog)

Otsuka Pharmaceutical – Otsuka files patent infringement complaint against Silarx in response to Para IV challenge concerning Ablify (aripiprazole) (Patent Docs)

Otsuka Pharmaceutical – Otsuka files patent infringement complaint against Apotex in response to Para IV challenge concerning Ablify (aripiprazole) (Patent Docs)

Overland Storage – ITC decides to review initial determination in Certain Automated Media Library Devices (337-TA-746) (ITC 337 Law Blog)

Purdue Pharmaceutical Products – Purdue files patent infringement complaint against Novel Laboratories in response to Para IV challenge concerning Intermezzo (zolpidem) (Patent Docs)

Realtek – Realtek files new 337 complaint regarding Certain Integrated Circuit Chips With Bond Pad Structures (ITC 337 Law Blog)

Salix – Salix files patent infringement suits in Delaware and Maryland against Lupin over Para IV challenge concerning Apriso (mesalamine) (Patent Docs)

Skyhook Wireless – Skyhook Wireless files new lawsuit against Google over 9 U.S. geolocation patents (FOSS Patents)

Twin-Star International – ITC decides to review initial determination in Certain Electric Fireplaces (337-TA-791/826) (ITC 337 Law Blog)

University of California – Eolas strikes again: sues Facebook, Wal-Mart, and Disney over University of California patents (Ars Technica)

Upsher-Smith – Upsher-Smith seeks declaratory judgement of non-infringement / invalidity based on ANDA filing to manufacture generic version of Auxilium’s Testim (testosterone gel) (Patent Docs)

VirnetX – VirnetX and SAIC file new 337 complaint against Apple regarding Certain Devices With Secure Communication Capabilities (ITC 337 Law Blog)

US Copyright

“Six strikes” anti-piracy scheme overly secret and unfair, says Professor Bridy (TorrentFreak)

New anti-piracy watchlist zooms in on file-sharing tolerant countries (TorrentFreak) (Ars Technica)

New study affirms less copyright restrictions benefit the economy, amid renewed calls for SOPA 2.0 (EFF)

US Copyright – Decisions

8^th Circuit Court of Appeals upholds $9,250 per song penalty in filesharing case, says constitution doesn’t limit penalties: Capitol Records v Thomas-Rasset (EFF) (The 1709 Blog)

ND California says no negligence claim for third party infringement via open wi-fi connection: AF Holdings v. Doe (Technology & Marketing Law Blog)

US Copyright – Lawsuits and strategic steps

BMG – BMG demands $20 for pirated Bruno Mars / Eminem downloads (TorrentFreak)

Cameron, James – CD California throws out copyright claim concerning Avatar: Elijah Schkeiban v James Cameron et al (The 1709 Blog)

John Wiley & Sons – Alleged copyright infringement by patent prosecutors: American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg (Patently-O)

Mediacom – Mediacom disconnects and bans alleged internet pirates (TorrentFreak)

Megaupload – Injustice continues as Megaupload user data negotiations go bust (TorrentFreak)

US Trademarks

Newly released consumer survey indicates that legal concerns about competitive keyword advertising are overblown (Technology & Marketing Law Blog)

US Trade Marks – Decisions

9^th Circuit Court of Appeals vacates $60M jury award in Neurovision Med v NuVasive (Seattle Trademark Lawyer)

Precedential no. 31: TTAB affirms mere descriptiveness refusal of “CENTER OF SCIENCE AND INDUSTRY” (TTABlog)

Precedential no. 30: denying cancellation, TTAB finds CMS neither generic nor merely descriptive for wine (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Fuhu – Even Toys”R”Us can’t release a tablet without getting sued – Toys”R”Us allegedly stole kid tablet’s “butterfly” shape from former partner (Ars Technica)

Reddit – Trademark abuse and the “Gaymer” community (EFF)

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