Think IP Strategy

Global Week in Review 12 September 2012 from IP Think Tank

by Marie Louise on September 12, 2012

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

Highlights this week included:

US: 2^nd Circuit rules that color can serve as a trademark in the fashion industry, but limits scope of mark for red-soled shoes: Louboutin v Yves Saint Laurent (IP Spotlight) (IPKat) (PHOSITA)

US: 8^th Circuit: $222,000 music piracy fine not unconstitutional: Capitol v Thomas – file-sharer to take case to Supreme Court (TorrentFreak) (Recording Industry vs The People) (Ars Technica)

India: Cipla wins landmark Roche v Cipla patent litigation concerning Erlotinib (IIPRD) (Spicy IP) (Spicy IP)

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

Strong IP protection is critical component of trade agreement (BIOtechNOW)

The contributions of Julian Assange to the debate on intellectual property (IP Watch)

IP protection in the Global Competitiveness Report 2012-13 (IPKat)

Members of Congress and Governors backing PhRMA/BIO, calling for 12 years data protection for biologic drugs in TPP (KEI)

Test data protection for medical inventions (KEI)

Global – Patents

Thomson Reuters study explores Apple’s mobile patent portfolio for hints at new iPhone technology (IP Solutions Blog)

Frugal innovation: Will it change the center of global innovation gravity from West to East? (Business IP and Intangible Assets Blog)

Australia

FCA issues preliminary injunction barring generic corticosteroid mometasone furoate (MF) nasal spray for treatment of allergic rhinitis: Merck Sharp & Dohme v Apotex (Patentology)

High Court refuses special leave in TV Now case: National Rugby League Investments v Singtel Optus (IP Whiteboard)

Film studios take the law into their own hands in UK (could it happen here?) (IP Whiteboard)

Canada

ACCC legal counsel: Access Copyright licence provides “little value” (Michael Geist)

China

Why the proposed amendments to the patent law really matter … and maybe not just for patents (China IPR)

Europe

EPO codifies CJEU’s decision on human embryonic stem cells (Patent Docs)

Copyright is stuck in the ’90s: Neelie Kroes calls for change in “Copyright and innovation in the creative industries” speech (The 1709 Blog)

Storck can’t register CTM in its chocolate mouse – CJEU dismisses Storck’s appeal (IPKat) (Class 46)

Europe celebrates 20 years of the Single Market (Class 46)

So now we’re agreed, the European Emblem is protected (IPKat)

France

French anti-piracy agency Hadopi only sued 14 people in 20 months (Ars Technica) (TorrentFreak)

Gambia

Starting a collecting society (IPKat)

India

Cipla wins landmark Roche v Cipla patent litigation concerning Erlotinib (IIPRD) (Spicy IP) (Spicy IP)

Thoughts on the Oxford University Press copyright infringement case against Delhi University and an on-campus photocopying shop (Spicy IP) (Spicy IP) (Spicy IP) (Spicy IP)

Protecting parental lines of extant hybrids in India (Part I – Spicy IP) (Part II – Spicy IP)

Govinda gooovinda! Closer look at G.I registry’s decision on Tirupati laddu rectification plea (Spicy IP)

Indonesia

KOPITIAM fight escalates – generic name for Chinese coffee house registered as trademark and asserted against coffee houses (IP Komodo)

Italy

Italian u-turn on latanprost abuse of dominant position dispute (The SPC Blog)

Japan

Reports indicate Japan ratifies ACTA (Michael Geist)

Netherlands

District Court of The Hague awards provisional injunction against Teva for duration of PI proceedings: Sanofi v Teva (Irbesartan and HCTZ) (EPLAW)

New Zealand

‘My software, my choice’ – new Patents Bill computer program patentability provision change (Patentology)

ISPs landed with up to 76% of costs of sending 3 strikes piracy notices (TorrentFreak)

New Zealand approaches ‘third strike’ (The 1709 Blog)

Poland

Apple battles with A.PL (Class 46)

South Korea

Korea looking into Apple complaint over Samsung’s 3G patent “abuse” (Ars Technica) (FOSS Patents)

Switzerland

Plans to introduce paediatric extensions to Switzerland’s SPC regime (The SPC Blog)

Swiss based firm attempts to monopolise biltong (Afro-IP)

Swiss Federal Patent Court adopts Dusseldorf rules for preliminary taking of evidence (Kluwers Patent Blog)

United Kingdom

EWCA: All claims of HGS patent valid: Eli Lilly v Human Genome Science (EPLAW) (PatLit)

Divide and rule: a new regime for governing British IP (IPKat)

UK and US boy bands, both by the name of One Direction settle trademark dispute (IP Whiteboard)

Illegal file-sharing activity generally logged within three hours, according to new study (Out-Law)

Fifty Shades translated: moral (rights) concerns? (The 1709 Blog)

United States

US General

The brand-name side of the exclusivity equation; exclusivity under fire (FDA Law Blog)

Would a biologic by any other (nonproprietary) name smell as sweet? (Beeser)

Congressional Report: US is negotiating TPP as if fast track authority still exists and its IP provisions go beyond international standards (EFF)

Congress members demand USTR tell the American people what’s going on with the TPP and its impact on digital freedom (EFF) (IP Watch)

US Patents

Patent pendency time series and why care about prosecution delays (Patently-O)

Patent pendency update (Patently-O)

USPTO examiner interviews make the news (PharmaPatents)

First to file practice: an alternative interpretation of the grace period shielding disclosure exception (PharmaPatents)

USPTO proposes new patent fees based on cost-recovery (Patent Baristas)

Your patent has been challenged at the PTAB….now what? (Patents Post-Grant)

New e-filing portal for post grant patent trials unveiled (Patents Post-Grant)

CSL Bank v Alice Corp: Patenting software ideas (Patently-O)

US Patents – Decisions

CAFC: “Second best choice” does not teach away: Santarus v Par Pharmaceuticals (Zegerid) (Beeser) (Patently-O) (Patently-O)

CAFC confirms that U.S. priority claim must be considered when assessing interference timeliness: Loughlin v Ling (PharmaPatents)

CAFC: Analogous art and wilful infringement: K-Tec v Vita-Mix (Patently-O)

District Court Columbia grants FDA’s motion to dismiss KV’s case seeking to restore ophan drug exclusivity for Makena (hydroxyprogesterone caproate) (FDA Law Blog)

District Court Delaware: First-to-file rule trumps forum selection clause: Mitek Systems v United Services Austmobile Association (Docket Report)

ND Mississippi: “Evolving” laws at time of infringement preclude finding of willful infringement and award of enhanced damages or attorneys’ fees: Monsanto v Scruggs et al (Docket Report)

ND Illinois: Alleging infringement by “at least” certain products was “deliberately vague” and failed to state a claim of infringement: Radiation Stabilization Solutions v Varian Medical Systems (Docket Report)

US Patents – Lawsuits and strategic steps

Apple – ITC: Apple seeks sanctions against HTC after inventor of two 4G patents denies that he knows his stuff (FOSS Patents)

Apple – ITC: Apple and HTC confirm recent settlement talks, will continue discussions in the future (FOSS Patents)

Apple – ND California: Apple says Judge Koh can’t dissolve Galaxy Tab 10.1 preliminary injunction while it’s on appeal (FOSS Patents)

Apple – ND California: Apple wants ruling on its FRAND defenses and unfair competition counterclaim against Samsung (FOSS Patents)

Aviva Sports - Defendant sanctioned for document dump has “chutzpa” to blame plaintiff for reviewing documents too slowly: Aviva Sports v Fingerhut Direct Marketing (Docket Report)

CIVIX-DDI – NPE’s choice of forum given little weight in venue challenge: CIVIX-DDI v Loopnet (Docket Report)

LG – LG challenge to four lighting patents among the reexamination requests filed week of September 4, 2012 (WHDA)

Medicis Pharmaceutical Corp – Medicis files patent infringement suit against Actavis Mid Atlantic in response to Para IV challenge concerning Zyclara cream (imiquimod) (Patent Docs)

Merck – SAMSF, Merck, and Pamlab file new 337 complaint regarding Certain Reduced Folate Nutraceutical Products and L-methylfolate Raw Ingredients Used Therein (ITC 337 Law Blog)

Microsoft – WD Washington: Microsoft and Google’s Motorola Mobility attack each other’s FRAND royalty expert reports (FOSS Patents)

Mondis Technology – ALJ Essex grants motion for summary determination of no section 337 violation by Chimei Innolux in Certain Video Displays (337-TA-828) (ITC 337 Law Blog)

Nintendo – Nintendo attack on video game patents, among the reexamination requests filed week of August 27, 2012 (WHDA)

OSRAM – ALJ Pender grants motion to terminate investigation as to Samsung in Certain Light-Emitting Diodes (337-TA-785) (ITC 337 Law Blog)

Otter Products – ITC to review in part the finding of violation of section 337 in Certain Protective Cases (337-TA-780) (ITC 337 Law Blog)

RMail – RMail challenges the use of subject matter eligibility as an invalidity defense: RMail v Amazon.com and PayPal (Patently-O)

Samsung – Apple leverages jury verdict on patent exhaustion against Samsung’s push for ITC import ban (FOSS Patents)

Teva Branded Pharmaceutical Products – Teva files patent infringement suit against Perrigo in response to Para IV challenge concerning ProAir HFA Inhalation Aerosol (albuterol sulphate) (Patent Docs)

US Copyright

TRAC tracks rise in US copyright litigation (The 1709 Blog)

US Copyright – Decisions

8^th Circuit: $222,000 music piracy fine not unconstitutional (Capitol v Thomas) – file-sharer to take case to Supreme Court (TorrentFreak) (Recording Industry vs The People) (Ars Technica)

ND California: BitTorrent defendant not negligent for failing to secure home Wi-Fi network: AF Holdings v Doe (Internet Cases) (EFF)

Oracle must pay Google $1M to cover costs in failed patent case (Ars Technica)

WD Washington: Fight over access to log-in credentials for blog does not trigger copyright pre-emption: Insynq v. Mann (Technology & Marketing Law Blog)

SD Texas: Is a website “published” for copyright law purposes?: Rogers v. Better Business Bureau of Houston (Technology & Marketing Law Blog)

US Trade Marks – Decisions

2^nd Circuit rules that color can serve as a trademark in the fashion industry, but limits scope of mark for red-soled shoes: Louboutin v Yves Saint Laurent (IP Spotlight) (IPKat) (PHOSITA)

Precedential no. 28: TTAB finds stylization of “SADORU” not enough to overcome mere descriptiveness refusal for motorcycle seats (TTABlog)

Precedential no. 29: TTAB affirms 2(e)(1) and failure-to-function refusals of SEMICONDUCTOR LIGHT MATRIX for light curing systems (TTABlog)

Global Week in Review 5 Sept 2012 from IP Think Tank

by Marie Louise on September 5, 2012

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

Highlights this week included:

Joint infringement: CAFC changes the law of inducement: Akamai v Limelight and McKesson v Epic Systems (Patently-O) (PharmaPatents) (Beeser) (PatLit) (Inventive Step) (PatentMath) (Patent Docs) (IP Spotlight)

Rojadirecta: Government reverses course and returns domains without explanation. Again. (EFF) (TorrentFreak) (Ars Technica)

Global

Global – General

Securitisation of IP (Part A – Spicy IP) (Part B – Spicy IP)

A momentary lapse of attention (IP Think Tank)

Frugal innovation: Perfect environment for intangible asset growth! (Business IP and Intangible Asset Blog)

Crowdfunding: public funding of innovations and artistic expression (PHOSITA)

Global – Trade Marks / Brands

Apple v. Samsung: Don’t take your eyes off the brand and user app ball (IP finance)

Domain name disputes on the rise, figures show (Out-Law)

Global – Patents

WIPO Re:Search project strikes first agreements (IP Watch)

Where on Earth could Samsung get the iPhone 5 banned over 4G/LTE patents? (FOSS Patents)

Global – Copyright

Apple now provides online tool to report App Store ripoffs (Ars Technica)

ISP’s copyright obligations under treaty could infringe individuals’ rights, claim EFF and others (Out-Law)

Defending non-commercial licences (TechnoLlama)

DMX: call for action over unauthorised music licences (The 1709 Blog)

Australia

Australia reforms its Patents Act 1990 (Patent Docs)

Should compulsory licensing provisions be abolished? (Patentology)

FCA: No damage for infringing copyright in questionnaire: Insight SRC IP Holdings v Australian Council for Educational Research (ipwars.com)

Cambodia

Pirate Bay founder will be deported at request of Swedish government, Cambodian authorities confirm (TorrentFreak) (Ars Technica)

Canada

Avoiding poison Apples and tending to Blackberries: Did Canada’s 1989 shift to first-to-file nip small-time innovation in the bud? (IP Osgoode)

Supreme Court of Canada agrees to hear Ontario private label drug appeal: Katz Group v. Minister of Health and Long Term Care and Shoppers Drug Mart v. Minister of Health and Long Term Care (Beeser)

China

Traveling the IP road: What are the top China IP destinations and curiosities? (Part I) (China IPR)

Data on Chinese patent applications and grants suggests growing gap between political rhetoric and current realities (KEI)

New copyright registration system in China (The 1709 Blog)

Europe

Telekable and filtering: will the CJEU clear things up?: C-314/12 UPC Telekable Wein (IPKat) (The 1709 Blog)

FS CTM bad faith appeal heads for the CJEU: C-262/12 Majtczak v Feng Shen Technology (Class 46)

Solvay v. Honeywell and an alternative route to a central patent court in Europe (Patently-O)

Casualty of law: will SPC legislation be the next victim after Neurim? (The SPC Blog)

General Court upholds finding of likelihood of confusion for highly similar or identical services in battle between Blue Spot and Blue Pod figurative marks (Class 46)

General Court finds likelihood of confusion between ALIXIR and ELIXEER for identical or highly similar goods (Class 46)

It takes two to Bolar – European courts (Poland and Germany) have excluded third party manufacturers from scope of Bolar exemption (Kluwer Patent Blog)

France

Losartan: SPC’s paediatric extension and preliminary injunction (Kluwer Patent Blog)

Germany

Law firm gets sued over threats to name and shame alleged downloaders (The 1709 Blog)

India

High cost of filing a patent on a gene sequence (Spicy IP)

Analysing the Delhi University vs publishers photocopying case (Spicy IP)

Indonesia

Patent linkage in Indonesia (IP Komodo)

Japan

Japan court: Samsung did not infringe Apple’s media sync patent (Ars Technica) (FOSS Patents)

Netherlands

District Court of The Hague: Amended infringement claim allowed; patent infringement found: Primus v Roche (EPLAW)

Dutch Pirate Party ready to enter national parliament (TorrentFreak)

New Zealand

NZ government backtracks – to Europe – on software patents (Patentology)

Philippines

The Red Bull case continues (to embarrass the Philippines legal system) (IP Komodo)

Russia

Protection of geographical indications in Russia: Is Russian vodka a protected GI? (IP Watch)

United Kingdom

The Big Online Rip-Off: can authors and copyright owners fight back? (The 1709 Blog)

On her Majesty’s secret service: UK extends meaning of IP in phone hacking case to remove self-incrimination privilege: Phillips v Mulcaire (IP Osgoode)

CREATe to examine IP business models (IP finance)

United States

US General

FDA approves Teva’s tbo-filgrastim for severe neutropenia (Beeser)

US film industry praises Republicans on IP and internet freedom (IP Watch)

US film industry (also) likes Democrats’ platform on IP and internet freedom (IP Watch) (Ars Technica)

The coming 505(q) citizen petition cliff and some interesting petition strategies (FDA Law Blog)

US Patents

Announcing Text2PTO: Online filing of your patent applications as text documents (Director’s Forum)

Is Congress getting ready to take on patent trolls? (EFF)

Dissenting opinions at the Federal Circuit (Patently-O)

First to file practice: mandatory derivation proceedings? (PharmaPatents)

Patent settlement agreement challenges – K-dur, Effexor XR, Nexium, Cipro (FDA Law Blog)

Eight points to know about September 16, 2012: post-grant transitions and deadlines (Patently-O)

USPTO warns on late inter partes patent reexamination filings (Patents Post-Grant)

USPTO releases new proposed fees (Patently-O)

USPTO patent grants: Another record year (3^rd in a row) (Patently-O)

Patentability of isolated DNA: A myriad of analogies – AMP et al v USPTO and Myriad (IPKat)

Beware the US jury: two $1 billion dollar patent damage awards in August: Apple v Samsung; Monsanto v DuPont and Pioneer (PatLit)

Apple v. Samsung: An expert but pro-patent jury? (Patently-O)

The biggest issue with the Apple-Samsung jury verdict: are all those patents really valid as granted? (FOSS Patents)

US Patents – Decisions

CAFC: Apple escapes liability for its cover-flow and spotlight OS features: More in inducement: Mirror Worlds v Apple (Patently-O)

CAFC: Woodrow Woods v. DeAngelo: Make a meaningful supplementation of your contention rog responses (Patently-O)

ND California: Apple v. Samsung and awards of defendant’s profits: the potential for overcompensatory damages in design patent infringement cases (Intellectual IP)

WD Wisconsin: Conclusory allegations insufficient to plead invalidity counterclaim: Wisconsin Technology Venture Group v FatWallet (Docket Report)

ITC: District Court grant of ongoing royalty precludes finding section 337 violation: Video Displays and Products Using and Containing Same 337-TA-828 (Docket Report)

ITC: “Abbreviated” description of spectral region did not create discontinuity sufficient to render patent indefinite: Light-emitting diodes and products containing same 337-TA-784 (Docket Report)

ITC: Initial determination of no section 337 violation by Nintendo in Certain Video Game Systems (337-TA-770) brought by Creative Kingdoms (ITC 337 Law Blog)

ITC affirms ALJ Essex’s decision to stay investigation in Certain Integrated Circuits (337-TA-822) brought by Freescale Semiconductor against MediaTek and others (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

AbbVie – AbbVie files patent infringement complaint against Amneal Pharmaceutical in response to Para IV challenge relating to Niaspan (Niacin XR) (Patent Docs)

Apple – Samsung’s designarounds may complicate the ITC investigation of Apple’s complaint (FOSS Patents)

Apple – Apple won’t demand billion-dollar payment or bond from Samsung for at least a few months (FOSS Patents)

Apple – Apple adds Galaxy S III, Note and Note 10.1 to Samsung lawsuit, insists on billion-dollar bond (FOSS Patents) (Ars Technica)

Apple – Apple and Samsung have to decide how to proceed with their 14 back-burner patents in California (FOSS Patents)

GlaxoSmithKline – GlaxoSmithKline files patent infringement suit against Apotex in response to Para IV challenge relating to Avodart (dutasteride) (Patent Docs)

HTC – After winning transfer to Delaware, HTC wants claims over six Apple patents stayed (FOSS Patents)

Janssen Products – Janssen files patent infringement suit against Lupin, Teva, Mylan over ANDA filing to manufacture generic Prezista (darunvir) (Patent Docs)

Leviton – Leviton files enforcement complaint in Certain Ground Fault Circuit Interrupter (337-TA-739) (ITC 337 Law Blog)

Madstad Engineering – Madstad and Mark Stadnyk sue USPTO alleging move to first-to-file regime violates Constitution (Inventive Step)

Mallinckrodt – Mallinckrodt files patent infringement suit against Apotex following Para IV challenge relating to Pennsaid (diclofenac) (Patent Docs)

Merck & Co – Merck & Co file patent infringement suit against Sun Pharmaceutical in response to Para IV filing concerning Ganirelix Acetate injection (Patent Docs)

Monsanto – Solicitor General recommends the Supreme Court deny cert in Bowman v. Monsanto Roundup Ready Seed patent litigation (Patent Docs)

Purdue Pharmaceutical Products – Purdue files patent infringement suits against Watson and Actavis in response to Para IV challenge concerning Intermezzo (sublingual zolpidem) (Patent Docs)

Samsung – ITC terminates investigation as Samsung and Osram settle global LED patent war (Green Patent Blog)

US Copyright

Why Johnny can’t stream: How video copyright went insane – Deploying 10,000 tiny antennas makes no technical sense, but the law demands it (Ars Technica)

US Copyright – Lawsuits and strategic steps

IMAGiNE – IMAGiNE BitTorrent piracy group members all plead guilty (TorrentFreak)

Paramount Pictures – The Godfather: Can you copyright a film character? (The 1709 Blog)

US Trade Marks – Decisions

California Court of Appeals rejects criticism of Amazon’s actions over potential counterfeit sales: Tre Milano v Amazon.com (Out-Law)

4^th Circuit Court of Appeals affirms in part, vacates in part and remands to ED Virginia in Rosetta Stone v Google (Maryland IP Law Blog)

US Trade Marks – Lawsuits and strategic steps

Rojadirecta – Rojadirecta: Government reverses course and returns domains without explanation. Again. (EFF) (TorrentFreak) (Ars Technica)

Nothing Happens Until Somebody Sells Something

by Robert on August 31, 2012

In my book Outpacing the Competition, I emphasize the importance of sales within the scope of an IP strategy. By sales, I mean the art of selling: prospecting, qualifying, presenting, overcoming objections, closing, and follow up. This, of course, is how IP ultimately realizes value. Somebody by some means needs to sell something, either the IP itself or a solution derived from that IP.

When I think of where companies leave the most value on the IP table, I have to say it is the capacity of the associated enterprise to sell that IP. Behind every great IP success, you will find a first rate sales function. Sometimes this will be in the form of a traditional face-to-face sales force. Sometimes it will be via other communications mediums – that will have actual people doing the selling.

The IBM direct sales force in the 1960s and 70s was legendary in taking a good enough – not the best – computer suite and making it the industry standard for computers in the free world. Microsoft got to where it is by leveraging the success of that sales force when it became the standard for IBM and then IBM compatible machines. Apple, recognizing that it cannot depend entirely on the Web or the sales forces of distributors, has its own sales people in its own stores – and Sony has recently seen to match. The big pharmaceutical companies all have large sales forces to sell their IP based solutions.

If your IP of merit is not delivering the value that you expect it to deliver, the problem will likely rest in the sales function. A fully integrated IP strategy has to include the sales component, and has to include a strong bridge of communication between those tasked to protect IP and those tasked to realize its value. Sales cannot work miracles; the IP needs to read on something that end users want and need. Sales can ensure that if you build it, people who you would like to come will see the benefit of doing so.

Image credit: Hemera Big Box of Art 1 Million

A Momentary Lapse of Attention

by Robert on August 30, 2012

It still amazes me every time I see how unforgiving the natural world can be to a momentary lapse of attention on the part of those within it. Of course the reason for this is because the hunters have trained themselves to watch for the lapses. The latest I saw was a barracuda that leveraged my film work to catch a grouper. Maybe it was my video light, maybe just my presence, but something distracted that grouper for a millisecond, and that was all it took. It was quick, incredibly violent, and all captured on film. The event is now itself an IP asset in my files; and you tell me whether I should feel bad for the grouper, good for the barracuda, or good for the many smaller fish that might have ended up inside that grouper.

In IP, a momentary lapse of attention can happen in a courtroom, it can happen when drafting a patent, it can happen when promoting an idea, and those people who can leverage it, who do not have your best interests in mind, do stand ready to pounce. They are waiting for it – just because you are paranoid doesn’t mean they aren’t out to get you. Entire businesses in patent assertion are built around the premise. What hurts you could become a great benefit to someone else.

Never assume that anything you say or write will not be scrutinized for a lapse of your attention. It can pay to be just a little paranoid if you hope to survive.

Global Week in Review 29 August 2012 from IP Think Tank

by Marie Louise on August 29, 2012

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

Highlights this week included:

US: Apple wins $1.05 billion verdict: Apple v Samsung (Patently-O) (Ars Technica) (Patentology) (Spicy IP) (Protecting Designs) (FOSS Patents) (Patentology) (Spicy IP) (IPKat) (IP Asset Maximizer Blog) (EFF) (Patents Post-Grant) (Inventive Step) (Docket Report)

Korea: Court rules Samsung didn’t copy iPhone design but older iPhones, iPads and Samsung devices are banned over patent violations (Ars Technica) (IP Solutions Blog) (FOSS Patents) (Korea Law Blog)

US: CAFC affirms validity of Lilly’s Alimta (Pemetrexed) compound patent: Eli Lilly & Co v Teva Parental Medicines (Orange Book Blog) (Beeser) (Patent Docs) (Patent Law Practice Center)

US: FBI says pirated Android apps a “top priority”, seizes three domains (Ars Technica) (TorrentFreak) (The 1709 Blog) (Out-Law)

Global

Global – General

Culture – as close as you can get to a company’s soul, guard it well (IP Think Tank)

Interlinked defense (IP Think Tank)

Open or closed case (IP Think Tank)

Parallel lifecycles (IP Think Tank)

UNESCO says monopolisation of information puts barriers to a better life (EFF)

BIO voices agree: intellectual property delivers (BIOtechNOW)

Global – Patents

Where manufacturing goes so follows innovation (IP Think Tank)

Patent valuations, why do they differ from selling price? (ipeg)

Financial importance of a prior art search (IP finance)

First agreements concluded under WIPO Re:Search for research on neglected tropical diseases (WIPO)

Apple and Samsung should fight in the marketplace, not the courtroom (EFF)

Global – Copyright

Authors’ earnings buoyed by movie income (IP finance)

Civil society groups oppose US and Australia’s TPP proposal on exceptions and limitations (EFF)

Australia

I’d walk a mile for an unbranded cigarette – the economics of cigarette packaging (IPKat)

FCA: Servier’s request to join several Apotex entities located outside Australia in Perindopril infringement case refused (ipwars.com)

Botswana

New industrial property regulations expected to enter into force 1 September (Afro-IP)

Brazil

Coexistence of trade marks: Brazil’s new norm (IP tango)

Canada

Supreme Court speaks: how to assess fair dealing for education (Michael Geist)

China

The rise and rise of China as an IP superpower (IAM)

China should tackle patent quality problems; but doing so will not fix its innovation deficit (IAM)

Denmark

Danish High Court sets aside a patent as “presumably invalid” for the first time in animal feed litigation between Danisco and Novozymes (Kluwer Patent Blog)

Europe

A new highest patent court for Europe? Not as long as the CJEU is here (Patently-O)

CJEU: Colourful Rubik’s Cube description leaves public ‘confused’ and ‘scratching their heads’: Seven Towns v OHIM (IP Osgoode)

EPO EBoA: Requests to correct denied: G 1/10 (IPKat)

EU courts may not share enforcement body’s view that linking to infringing material is itself illegal, says expert (Out-Law)

Germany

Google loses leverage as Motorola Mobility confirms German patent license to Apple (FOSS Patents) (Ars Technica)

Google fights proposed charge on news snippets and headlines (The 1709 Blog)

India

CSIR finally discloses details of patent licensing: more than 400 patents licensed over last ten years! (Spicy IP)

Novartis challenge to India patent law put off to 11 September (IP Watch)

SCP’s questionnaire on exceptions and limitations to patents (Spicy IP)

Application of de minimus non curat lex in the context of copyright law: India TV v Yashraj Films (Spicy IP)

District Judge of Lucknow grants interim injunction against Thomson Reuters and its Indian operations for infringing copyright in Eastern Book Company’s “Supreme Court Cases” (Spicy IP)

Indonesia

Data exclusivity in Indonesia (IP Komodo)

Israel

Is 18-month publication in Israel a trap for unwary U.S. patent applicants? (America-Israel Patent Law)

Israel Supreme Court overturns decision regarding “More Stars” trade mark in dispute between flower growers (The IP Factor)

Italy

The role of the Judge in reviewing court expert’s reports, inventive step and product by process claims in a recent decision of the Court of Turin (Kluwer Patent Blog)

Norway

Monitoring file-sharers forbidden in Norway (TorrentFreak)

South Africa

Discovery Health’s extraction of Practice Code Numbering System held to infringe copyright (Afro-IP)

South Korea

Court rules Samsung didn’t copy iPhone design but older iPhones, iPads and Samsung devices are banned over patent violations (Ars Technica) (IP Solutions Blog) (FOSS Patents) (Korea Law Blog)

Spain

Commercial Court of Barcelona: Obtaining marketing authorisation and price earlier than approximately 50 days before the expiry date may be an act of unfair competition – Montelukast dispute between Merck Sharpe & Dohme and KRKA Novo (Kluwer Patent Blog)

Sweden

Movie studio wants to bankrupt Pirate Bay founder (TorrentFreak)

United Kingdom

Universities to collaborate on new copyright initiative to meet challenges of creative economy (Out-Law)

UK IPO changing practice regarding merger of trademarks, effective 1 October (Class 46)

United States

US General

IOM issues report on “Accelerating the Development of New Drugs and Diagnostics: Maximizing the Impact of the Cures Acceleration Network” (FDA Law Blog)

US Patents

Constitutional challenge to the first-to-invent rule: MadStad & Mark Stadnyk v. USPTO (Patently-O) (Patents Post-Grant)

How the AIA violates TRIPS (Patently-O)

Patent eligibility and biology (Patent Docs)

Are the courts correct in their assumption that a patent issued on non-patentable subject matter is invalid? (Patently-O)

List of statutory/non-statutory software patent claims (AwakenIP)

USPTO satellite office up and running in Detroit (Director’s Forum)

First to file practice: Commonly owned applications (Pharma Patents)

USPTO extends first action interview program through November 16 (Pharma Patents)

USPTO to permit assignees to file and prosecute patent applications (Pharma Patents)

USPTO requires new PRPS e-filing system for new patent trials (Pharma Patents)

Micro-entity status: Can we all qualify? (Patently-O)

Can a third party challenge section 101 subject matter eligibility in the USPTO’s new post-grant review procedure? (Patently-O)

USPTO provides “cheat sheet” to final PTAB rule modifications (Patents Post-Grant)

Obtaining an electronic filing date at the PTAB (Patents Post-Grant)

Declaratory judgment & USPTO business method patent challenges (Patents Post-Grant)

FDA gears up for GDUFA implementation and ANDAgeddon (FDA Law Blog)

US drug sales and a patent cliff (Patent Law Practice Center)

US Patents – Decisions

CAFC: Prove every claim element: Whitserve v Computer Packages (Patently-O)

CAFC declines to import limitations from figures into claims, reverses district court: Jang v Boston Scientific (non precedential) (GRAY on Claims)

CAFC holds that prior art cited by USPTO is presumptively enabled: In re Antor Media Corp (Pharma Patents) (WHDA)

CAFC affirms validity of Lilly’s Alimta (Pemetrexed) compound patent: Eli Lilly & Co v Teva Parental Medicines (Orange Book Blog) (Beeser) (Patent Docs) (Patent Law Practice Center)

CAFC reverses and remands in appeal against invalidity finding: Amkor v ITC (ITC 337 Law Blog) (Patently-O)

ND California: Apple wins $1.05 billion verdict: Apple v Samsung (Patently-O) (Ars Technica) (Patentology) (Spicy IP) (Protecting Designs) (FOSS Patents) (Patentology) (Spicy IP) (IPKat) (IP Asset Maximizer Blog) (EFF) (Patents Post-Grant) (Inventive Step) (Docket Report)

Delaware: Transaction entry system patent held invalid for failure to claim patentable subject matter: CyberFone Systems v Cellco Partnership (Docket Report)

CD California: History of aggressive patent enforcement supports declaratory judgment claim: General Electric Company v NeuroGrafix (Docket Report)

WD Pennsylvania: Noninfringing sales may determine infringement damages: Carnegie Mellon University v Marvell Technology Group (Docket Report)

ITC issues public version of opinion finding no violation of section 337 in Certain Semiconductor Chips (337-TA-753) brought by Rambus against numerous respondents (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Apple – Apple v Samsung: Court schedules December 6 hearing on Apple’s push for triple damages from Samsung (FOSS Patents)

Apple – Apple v Samsung: Apple to request preliminary injunction against eight Samsung products in wake of jury verdict (Ars Technica) (FOSS Patents)

Apple – Apple v Samsung: Samsung wants Galaxy Tab 10.1 ban lifted in light of jury verdict (FOSS Patents)

Apple – Apple v Samsung: Samsung avoids adverse jury instruction for spoliation of evidence (Docket Report)

CVS Caremark – Attack on two Crocs Shoe patents, among the reexamination requests filed week of August 20, 2012 (WHDA)

Exela – Suing the USPTO to cancel improperly issued patents – Exela Pharma v Kappos (OFIRMEV / acetaminophen) (Patently-O)

Hitachi – Hitachi files new 337 complaint against Monster Cable, Skullcandy, Callaway and many others regarding Certain Sintered Rare Earth Magnets (ITC 337 Law Blog)

Isola – Isola files enforcement complaint against Taiwan Union Technology Corp. in Certain Prepregs, Laminates, And Finished Circuit Boards (337-TA-659) (ITC 337 Law Blog)

Merck & Co – Merck asks Supreme Court to review 3^rd Circuit K-Dur (potassium chloride) decision (Patent Docs)

Merck Sharp & Dohme – MSD files patent infringement suit against Watson in response to Para IV challenge regarding Propecia (finasteride) (Patent Docs)

Motorola – ITC remands investigation of Motorola complaint against Apple to judge: only one patent left (FOSS Patents)

Santarus – Santarus files patent infringement suit against Dr Reddy’s in response to Para IV challenge in connection with Zegerid (omeprazole / sodium bicarbonate) (Patent Docs)

Shire – ANDA counterclaim of non-infringement not mooted by dedication of Intuniv (guanfacine) patent to public: Shire v Impax (Beeser)

Standard Innovation Corp. – ALJ Pender grants joint motion to terminate in Certain Kinesiotherapy Devices (337-TA-823) (ITC 337 Law Blog)

Technology Properties – ITC institutes investigation (337-TA-853) regarding Certain Wireless Consumer Electronics Devices against numerous respondents including ACER, Garmin, HTC, Nintendo and others (ITC 337 Law Blog)

VirnetX – ITC decides not to review initial determination terminating investigation in Certain Devices With Secure Communication Capabilities (337-TA-818) brought by VirnetX against Apple (ITC 337 Law Blog)

US Copyright

FBI says pirated Android apps a “top priority”, seizes three domains (Ars Technica) (TorrentFreak) (The 1709 Blog) (Out-Law)

Why did Google flip-flop on cracking down on “rogue” websites? Some troubling possibilities (Technology & Marketing Law Blog)

MPAA budget slashed in half, are they dying? (TorrentFreak)

Google URL takedown requests up 100% in a month, up 1137% on 2011 (TorrentFreak)

US Copyright – Decisions

Court of Appeals for the 2^nd Circuit rules contract claims not pre-empted by Copyright Act: Forest Park Pictures v Universal Television Network (Patent Arcade)

Court of Appeals for the 2^nd Circuit: Internet tv streaming service not a “cable system” therefore unable to obtain compulsory license: WPIX v ivi (Recording Industry vs The People) (IP Spotlight)

Massachusetts: Tenenbaum damages upheld (The 1709 Blog)

US Copyright – Lawsuits and strategic steps

Patrick Collins – Doe #41′s motion to quash, sever & dismiss granted in Patrick Collins Inc v Does 1-45 (Recording Industry vs The People)

Sony BMG – Motion to reduce $675,000 verdict denied in SONY v Tenenbaum (Recording Industry vs The People)

Interlinked Defense

by Robert on August 28, 2012

In IP strategy, any isolated IP position of interest to a competitor is likely to be a vulnerable position. There are many ways to get around it including, but not limited to validity challenges, design around, undetected infringement, calling your bluff on willingness to enforce, countersuits, hostile takeover, picket fence, and leapfrog. This is why when you protect intellectual property, you should think in terms of an interlinked defense where your IP position can handle the loss of some individual positions without losing IP protection on the whole. For example, a key polymer may be protected by a patent that becomes central to the business model. Included within the protection of the central patent may be a brand name, a trade secret on production methods, other patents on similar polymers, patents associated with the use of the polymer, defensive publications perhaps on some other uses to prevent one customer from locking up sales to another customer, and perhaps new patents created by new combinations of compounds built off that core polymer invention.

All of these may serve in their way to protect your ability to leverage the propriety of the core invention in the marketplace by making it more challenging for competitors to get around your position. While strategically you cannot expect to make an IP position that is unassailable to someone with the resources and wherewithal to challenge it. You can, with reasonable confidence, build an IP position that would be so difficult to challenge that it should be better for rational competitors, partners, and customers, to interact with you concerning that IP on your terms.

Image credit: OUCHcharley

Open or Closed Case

by Robert on August 27, 2012

What is better for a product-based IP Strategy, an open system of innovation or a closed system? The answer is both and neither, and here is why.

Strategy, at its core, is the interplay between interaction and isolation. Everything that you do in IP strategy, from the most complex to the most mundane, is to create favorable interactions and isolations between you, customers, partners, and competitors. For example, the right to enforce exclusivity granted by a patent could create a useful interaction in the form of a license to a partner at the same time it creates a useful isolation by discouraging a competitor from infringing.

In competitive strategy, interaction is seen as a way to achieve growth and isolation is seen as a way to cause decline. Watch any competitive sports game, and you will see this interplay, for example, a team working together to keep a ball away from a competitor’s top scorer. Considered in this growth light, an open system would seem a good way to go since it maximizes the potentially useful ideas and resources available to advance a business, perhaps introducing from many people an abundance of useful ideas and resources that a single individual or enterprise could never match. We see an open system with products such as Android in mobile telephones that many product companies have adopted for their smartphones.

The catch is that in innovation strategy and its impact on competitive strategy, some of the greatest forms of diversity are actually caused by isolation. The diversity of everything, from species of animals to human languages, was caused by the separation of animals and people respectively. Likewise in innovation, many disruptive ideas, such as the steam ship, developed outside the innovation circles of those selling the previous generation solutions, in this example the clipper sailing ships. Breakthrough diversity would seem to favor a closed system. Apple’s pioneering iPhone stems from such a closed system.

There is one pattern to think about as you debate which system to use for your innovation and associated IP strategy. The usual pattern in product solution development is for truly innovative ideas to emerge from closed systems where they are free to develop far enough away from the mainstream to avoid being diluted by ideas that would pull them back to the traditional ways. iPhone, for example, was created to give customers what they did not yet know they wanted, and therefore could never have communicated if they had been involved in the creation process. Open systems often come in to play as a means to make an alternative competitive product solution very fast given that a huge number of people can have an input on building something new from the kernel of the idea generated by the pioneering product solution of its kind. Android appears in that role. Linux also arose on the framework of an idea for computer operating systems first developed in a closed system environment. The question is whether an open solution like Android or its equivalent can exist without there being a closed solution like iPhone or equivalent out there first.

As an IP strategist, you should leverage both open and closed systems. You would appreciate that the most brilliant ideas do not tend to come from committees – a plus for closed systems – and that individuals are not always the best at looking at the diversity of possibilities – a plus for open systems. You likewise recognize that committees can safeguard against catastrophic ideas – catastrophic potential being a negative for closed systems – and that a diversity of thought can make it impossible to set a focused direction onto something truly innovative – lack of focus being a negative for open systems.

So you need a bit of both. And if a decision to be open or closed becomes a company doctrine, start worrying. It’s not a problem if you lean one way or another, but if you make it a policy to be just one way or another, it will likely bite you somewhere along the line.

Image credit: maury.mccown

Parallel Lifecycles

by Robert on August 25, 2012

IP itself has a lifecycle decoupled from the associated product solutions itself. A patented invention may apply to several product solutions which may be at different phases of their lifecycle. A brand may have a lifecycle that will live through many generations of patented products as an enterprise’s capacity to make product solutions appealing to customers changes over time. Managing these different lifecycles is where part of the art of IP strategy comes into play, and like many arts, learning to do it well depends upon individual and enterprise experience. The guiding line is to first ask what customer experience you would like the end users of your IP to experience in what regions and for how long before the next generation. Next ask if your IP in all its possible configurations that we have discussed give you adequate ownership of the customer experience to shape the markets as best suites your business goals through the various associated technology, product, and IP lifecycles. For that matter, you can also include customer lifecycles because even the pure logic of a technical solution is subject to customer cycles of higher and lower interest.

Image credit: Tom Wachtel

Culture – as close as you can get to a company’s soul, guard it well

by Ana on August 24, 2012 · 1 comment

Having focused on the meaning and creation of learning organizations for a period in my life I can’t help coming back from time to time to thinking about organizations as living organisms.

The metaphor actually makes quite a bit of sense…like an organism (human for example) each organization is made up of different composing parts with distinct functions all working together to reach specific common goals. If the function of one organ is impaired it can inevitably affect other functions and the organism as a whole.

Just like in humans bad behaviors can lead to long term risks that might be hard to avoid. I often like to make the analogy that to have a misaligned IP department is like smoking or a bad diet, it introduces a small amount of risk in the system each day (operating risk) that over time can be more harmful than low probability high impact accidents (like for example a litigation).

Just like humans, organizations interact heavily with their environment both in a reactive/adaptive way as well as an active way (changing/shaping their surrounding environments). In many respects thinking about the creative process, reactions to change and approaches to implement change, decision making reasoning, and the behavior of an individual allows for parallels and lessons to be drawn at the corporate level…after all we are the ones taking the decisions or having to adapt to them.

One aspect of the parallel expressed in this metaphor that is somewhat elusive however is the predictive nature and motivation behind the organization’s behavior. The soul and behavior drivers/“psychology” of the organization is a complex matter that perhaps most accurately can be defined through the intersection of corporate culture (the company’s soul), individual perceptions and individual drivers.

The culture of an organization is often shaped heavily in the beginning years of its inception. The organization’s brand and historic heritage then give it its “raison d’être” and sustain a healthy and vibrant culture. This can be easily seen when we look at small and medium size companies and in some cases even giants like Google, Apple, Ikea etc. Companies like these have such strong cultures that they form the overriding moral code according to which decisions are made and actions are motivated (from hiring, product development and so on).

For other historic giants like GM, GE (other) things become a bit more complex as communication and cooperation between the business sections becomes increasingly challenging and culture is taken over by strict formalized processes and targets. This often leaves little room for creativity and inspiration which can prove to be like a slow releasing poison for the whole organism. At this stage most often the company’s personality and brand promise becomes increasingly confusing and unreliable for the market which leads in turn to losses of market share and the capacity to attract valuable employees thereby reinforcing the negative loop. These damages although gradual are often long lasting and, in some cases deadly.

You may ask, ok but what does this have to do with IP strategy? We have often talked in this blog about the necessity of a company to drive and adapt fast to change, to innovate at a greater pace than competitors and so on. A lot of these aspects abovementioned have to do with making sure the right people are at the right moment in the right place. With international competition for qualified human capital fierce making sure that you have the right people on board is a challenge to say the least. In today’s environment corporate culture plays a big role in attracting, engaging,motivating and retaining the right employees for you (see here the effects that an unclear corporate culture has had over the attraction of valuable employees at Yahoo for example). We have also talked about the necessity of IP to have a back and forth communication with sales and marketing – this helps keep the company grounded and focused on its brand promise and outside communications. As technology surrounds every aspect of our life and consumers become more knowledgeable different philosophies and expectations will be born. Setting your brand promise and staying true to it with consistent norms/cultures could be the difference between success or failure in your chosen market.

Corporations that have realized the above often actively search for ways to reinvent their identity and return to a “small company mentality”. Analyzing and treating a company whose culture has become eroded or damaged remains a mammoth but not impossible task and an intriguing project. It has to do with the basic fabric of the corporate identity from the cellular level up. It is good to realize that quick fixes cannot be found here, and that change has to be driven by upper managment and embraced throughout the company. Spotting changes in individual and organizational behavior from time and calling them out, and not being afraid to make difficult decisions is always the better option for safeguarding your organization’s most unique and priceless asset, its culture.

Image credit: ynse

Where Manufacturing Goes So Follows Innovation

by Robert on August 23, 2012

A trend of industry over the last several decades has been to decouple innovation from manufacturing and move manufacturing to regions of the world that have lower labor costs. While this trend has raised the immediate cost competitiveness of those manufacturers, it has come at the cost of teaching future competitors manufacturing those products the technical art of doing so and removing from innovators a core source of learning on how to make superior solutions. Creating and building are often two sides of the same coin. Ultimately those who make product solutions are likely to gain the edge on how to make them better – i.e. to innovate – and it can make sense to keep those coupled together so that innovators can be intimately involved with how their creations are made.

A business should look beyond the base cost of manufacturing to include in its calculations how it might generate valuable IP from the experiences of actually making product solutions as well as in areas such as automation, which can offset the otherwise high appeal of finding low cost sources of labor elsewhere. Alternatively it can move innovation toward the low cost manufacturing centers. This later needs to be done, however, with eyes wide open that where the innovative core of a company lies, so ultimately does its identity as an enterprise of that region of the world either by name or within the names of new competitors built from the educated workers.

Global Week in Review 22 August 2012 from IP Think Tank

by Marie Louise on August 22, 2012

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

Highlights this week included:

CAFC confirms patent eligibility of isolated DNA: AMP v. USPTO (Patent Docs) (BIOtechNOW) (PharmaPatents) (Patent Docs) (Holman’s Biotech IP Blog) (Kluwer Patent Blog) (Out-Law) (IP Watch) (KEI) (Inventive Step) (Patently-O) (Patently-O)

Australia’s planned plain packaging tobacco law does not violate IP rights, High Court rules (Out-Law) (IP Watch)

UK: Anton Vickerman jailed for four years for linking to pirated content hosted elsewhere on the internet (Out-Law) (IPKat) (The 1709 Blog)

Global

Global – General

The story behind The Defense of the Mieza HChip (IP Think Tank)

WIPO publishes 2012 Global Innovation Index (Ocean Tomo Insights)

Push for 12-year biologics exclusivity in TPP Agreement continues as the next round of negotiations approaches (FDA Law Blog)

Islamic law: intangible assets and intellectual property (Business IP and Intangible Asset Blog)

Global – Trade Marks / Brands

Generic TLDs and the legal rights objection (Class 46)

Domain names, bad faith and the borders of parody – WIPO Arbitration and Mediation Center considers Greenpeace’s use of Neste Oil’s name in campaign against the oil refining company’s practises (IPKat)

Global – Patents

Rivals Apple, Google, Samsung reportedly team up to buy Kodak patents – but Kodak wants more than the coalition are offering (Ars Technica) (FOSS Patents)

Why would Google and Apple be allowed to depress the sales value of the Kodak patents (IAM)

Three days after suing Apple, Google says patent wars hurt consumers (Ars Technica)

So which is it for a start-up: a patent or a proto-type? (IP finance)

Analysing the role of NPEs in the patent system (Patently-O)

Global – Copyright

Pirate Bay and isoHunt respond to Google search result punishment (TorrentFreak)

Australia

Intellectual Property Laws Amendment Bill 2012 Exposure Draft released by IP Australia (ipwars.com)

Intellectual Property Laws Amendment Bill 2012 Exposure Draft – Pharmaceutical compulsory licences to assist developing nations (Patentology)

Australia’s planned plain packaging tobacco law does not violate IP rights, High Court rules (Out-Law)

WHO hopes for “domino effect” of Australian ruling in favour of tobacco plain packaging (IP Watch)

Patent Office allows declaratory evidence in re-examination: Alza Corporation (Patentology)

Brazil

British attaché to help boost IP exploitation in Brazil (IP tango)

Canada

Why the end of Access Copyright K-12 licensing for is not the end of payment for educational copying (Michael Geist)

FCA: Monsanto v Schmeiser does not indicate SCC departure from existing precedents: but-for causation still required for contributory infringement: Nycomed v Teva (IP Osgoode)

The impact of free music downloads on the purchase of music CDs in Canada (IP Osgoode)

China

Tax considerations for IP transfer (China Law Insight)

China becomes second BRIC to embrace green patents as SIPO launches fast track (Green Patent Blog)

Europe

Is the EPO changing Its stance on personalised medicine inventions? (IPKat)

Chinese crayfish gain GI protection in the EU (Class 46)

European business still investing happily in R&D — but not in pharma (IP finance)

The Proposed Unified Patent Court for Europe: conditio sine qua non for a Unitary Patent or unavailing venture into the unknown? (Patently-O)

Germany

Nokia’s patent enforcement campaign off to a good start: first hearing on German RIM lawsuit (FOSS Patents)

Düsseldorf District Court follows Pipettensystem finding no indirect infringement arising from third party coffee pods compatible with Nespresso machines : Nestec v Ethical Coffee Company (EPLAW)

Can this really be true? Patents for TV programme formats … (IPKat)

More on file sharing – German ISPs must disclose file sharer details (The 1709 Blog)

Düsseldorfer Mostert gets GI protection (Class 46)

Gulf Cooperation Council

Gulf Co-operation Council Patent Office statistics (NIPC)

India

Novartis at India Supreme Court challenging refusal of Glivec patent – Evergreening myths and patent reality (BIOtechNOW)

MSF: India’s Bayer-Natco compulsory licence case set for 3 Sept. (IP Watch)

Miscredited authorship violates moral rights of authors says Delhi High Court (Spicy IP)

Japan

Japan’s copyright problems: national policies, ACTA, and TPP in the horizon (EFF)

Netherlands

District Court of The Hague orders preliminary injunction against Sandoz based on Lundbeck’s escitalopram patent (EPLAW)

District Court The Hague awards preliminary injunction against Teva in Boehringer v Teva (Nevaripin) (EPLAW)

New Zealand

Kim Dotcom must be allowed to see FBI evidence against him, court rules (TorrentFreak) (Ars Technica)

Russia

Russian competition authority protects Red October mark (Class 46)

South Africa

Health advocates eye proposed changes to patent law in South Africa (IP Watch)

Sweden

Pirate Bay founder appeals passport revocation (TorrentFreak)

Switzerland

Swiss Supreme Court cancels LEGO’s 3D trade mark (Class 46)

Thailand

Arguments over a data exclusivity regime in Thailand (IP Komodo)

United Kingdom

UK design legislation amendment – Unintentional infringement may cost you a little more… (Class 99)

Anton Vickerman jailed for four years for linking to pirated content hosted elsewhere on the internet (Out-Law) (IPKat) (The 1709 Blog)

More on television formats – CBS drops claim that ABC’s ‘Glass House’ television series copies its ‘Big Brother’ series (The 1709 Blog)

United States

US General

FDA is sued again over pre-MMA 180-day exclusivity; this time the drug is generic Actos (Pioglitazone HCI) (FDA Law Blog)

US Patents

Patent reexamination surge headed to USPTO (Patents Post-Grant)

First to file practice: Grace period shielding disclosures (PharmaPatents)

USPTO issues several final rules for implementing AIA provisions (Patent Docs)

USPTO changes post-notice of appeal patent term adjustment rules (PharmaPatents)

New USPTO satellite offices target centers of innovation (Intellectual Property Law Blog)

What to do when an applicant’s entity status changes during prosecution (Patentably Defined)

AIA practice tips: using new inventor declaration forms (Patently-O)

Why Samsung’s great contributions to smartphone innovation don’t give it much leverage in court (FOSS Patents)

Some courts stay infringement actions even where parties are direct competitors (WHDA)

US Patents – Decisions

CAFC increases burden on proving patentability created by prior art references for patent applicants: In re Antor Media Corp (Patent Docs)

CAFC: Logical conclusion?: Claimed open-ended ranges lack enablement: Magsil Corp. and MIT v Hitachi (Patently-O)

CAFC: Meyer v. Bodum: A waste of public and private resources? (Patently-O)

Recent CAFC nonobviousness opinions: Kinetic Concepts, Inc. v. Smith & Nephew, Inc. (Patently-O)

Recent CAFC nonobviousness opinions: Alcon v. Apotex (Patently-O)

CAFC declines to adopt test for patent eligibility set forth in CLS Bank: Bancorp Services v Sun Life Assurance (Intellectual Property Law Blog)

Arizona: Seven month delay investigating infringement allegations followed by “infinitesimal change” to accused product support enhanced damages and attorney fees: Integrated Technology Corporation v Rudolph Technologies (Docket Report)

ED Texas: Under Therasense, failure to disclose non-enabling reference was not material misrepresentation sufficient to support inequitable conduct defense: Golden Hour Data Syetsms v emsCharts (Docket Report)

ITC issues public version of opinion in Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703) brought by Kodak against Apple and RIM (ITC 337 Law Blog)

ITC: ALJ Shaw issues recommended determination on remedy and bonding in Certain Light-Emitting Diodes (337-TA-784) brought by OSRAM against LG (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Anu IP – ALJ Pender Grants motions to terminate investigation in Certain Electronic Devices Having A Retractable USB Connector (337-TA-843) based on settlement between Anu and Emtec (ITC 337 Law Blog)

Apple – ALJ Gildea rules on HTC motions in Certain Portable Electronic Devices (337-TA-797) (ITC 337 Law Blog)

Apple – Apple and Google’s Motorola Mobility disagree on implications of Wisconsin FRAND ruling for ITC case (FOSS Patents)

Apple – Apple v Samsung: Judge orders adverse inference instruction against Apple and Samsung, but they prefer none at all (FOSS Patents)

Apple – Apple v Samsung: Apple and Samsung can’t agree on settlement or narrowing of claims – jury will be confused (FOSS Patents)

Apple – Apple v. Samsung lawyers wage final battles over complex, 22-page jury form – Small victory for Samsung: jury won’t hear about e-mails being tossed out (Ars Technica) (FOSS Patents)

Apple – Apple v Samsung: Apple attacks Samsung for asserting standards-essential patents (Ars Technica)

Apple – Apple v Samsung: Samsung rests its case, out of time; no sympathy from the judge (Ars Technica)

Bayer Intellectual Property – Bayer IP files patent infringement suit against Warner Chilcott over its Lo Loestrin (Norethindrone, Ethinyl estradiol) product (Patent Docs)

BriarTek – BriarTek files new 337 complaint regarding Certain Two-Way Global Satellite Communication Devices against Delorme Publishing (ITC 337 Law Blog)

GeoTag – Appointment of lead defendant to “brief and argue” claim construction on behalf of all consolidated defendants does not violate due process: GeoTag v Circle K Stores (Docket Report)

Janssen Pharmaceuticals – Janssen files patent infringement complaint against Glenmark in response to Para IV challenge (Patent Docs)

Luitpold Pharmaceuticals – Luitpold files patent infringement complaint against Amneal in response to Para IV challenge concerning Sprix (Ketorolac) (Patent Docs)

Motorola – Motorola brings its first patent suit against Apple as a Google subsidiary – seeks import ban from ITC in relation to iPhone, iPad and iPod touch (Ars Technica) (FOSS Patents) (FOSS Patents) (ITC 337 Law Blog)

Motorola Mobility – Motorola Mobility seeks reexamination of two Intellectual Ventures portable computer patents, week of August 13, 2012 (WHDA)

Neptun Light – ALJ Pender grants motion to terminate investigation in Certain Dimmable Compact Fluorescent Lamps (337-TA-830) based on withdrawal of complaint (ITC 337 Law Blog)

Norman IP – Multi-defendant case severed per AIA (§ 299), but consolidated for pre-trial with venue issues delayed until after claim construction: Norman IP Holdings v Lexmark International (Docket Report)

Richtek – ITC to review enforcement initial determination in Certain DC-DC Controllers (337-TA-698) (ITC 337 Law Blog)

Samsung – ALJ Gildea denies Samsung’s motions for summary determination in Certain Electronic Devices, Including Wireless Communication Devices, Portable Music And Data Processing Devices, And Tablet Computers (337-TA-794) against Apple (ITC 337 Law Blog)

Samsung – ALJ Rogers grants motion to terminate investigation in Certain Light-Emitting Diodes (337-TA-798) based on settlement between Samsung and OSRAM (ITC 337 Law Blog)

Samsung – Samsung turns tables on Apple, demands $400M for its own patents (Ars Technica)

Smith & Nephew – Evidence of re-examination not relevant for jury trial on infringement: Smith & Nephew v Interlace Medical (Docket Report)

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

US Copyright

EFF tells Obama’s IP Czar to stand up for Internet users (EFF)

US Copyright – Decisions

9^th Circuit Court of Appeals: Tabloid publication of stolen photos is not “fair use”: Monge v Maya Magazines (IPKat)

US Copyright – Lawsuits and strategic steps

Beastie Boys – Beastie Boys and Yaunch estate suing Monster Energy Drink for unauthorised use of their music (IP Whiteboard)

Electronic Arts – EA accuses Zynga’s ‘The Ville’ game of infringing copyright in ‘The Sims Social’ (Patent Arcade)

Oracle – Judge Alsup tells Google to try harder with its shill disclosure (Technology & Marketing Law Blog)

Oracle – Oracle and Google make unenlightening disclosures of their “shills” (Technology & Marketing Law Blog) (Ars Technica) (Ars Technica)

US Trademarks

USPTO seeks comments on raising fees to incentivize electronic TM filings (TTABlog)

USPTO requests comments on proposal to require earlier filing of first section 8 declaration (TTABlog)

US Trade Marks – Decisions

CAFC reverses TTAB, finds two “SNAP’ marks merely descriptive of syringes: DuoPross Meditech Corporation v Inviro Medical Devices (TTABlog)

ED Virginia affirms TTAB dismissal of SWATCH opposition versus SWAP: Swatch v Beehive Wholesale (TTABlog)

The Story Behind The Defense of the Mieza HChip

by Robert on August 20, 2012

In my Duke University Army ROTC class in 1985, I received a copy of a book titled The Defense of Duffer’s Drift written in 1903 by a Major General Sir Ernest Dunlop Swinton of the British Army. In this book, the main character has five dreams where he gets the defense of a key drift wrong during the Boer War until a sixth dream when he gets it right. The reason my instructors gave us this book is its artful way of making the point that the differences between winning and losing are subtle – often found in details that we realize only after it is too late.

The Defense of the Mieza HChip is a modern interpretation of Swinton’s story set in the high stakes and highly competitive Silicon Valley and built around the defense of intellectual property for a “cognitive algorithm” artificial intelligence device. HChip stands for “Horse Chip,” and the HChip device gives an automobile or other operator device the ability to override user error in much the same way that a horse would refuse a rider’s command to leap off a cliff.

The hero of the story, through the course of five dreams, will learn that there is a lot more to succeeding with IP than securing a good patent. Pitfalls abound with respect to customers, partners, competitors, and his internal staff. On the sixth dream, he finally gets it right.

I have built a lot of my life around this story starting in 1985. I am always asking what detail I have left out in my own endeavors. What have I missed? I don’t always get it right, but I sure do try. The Defense of the Mieza HChip reflects the thought process – anticipating failure before it happens instead of afterwards when it is too late. IP strategy in its purest form is about anticipating how the future could look and then shaping it into the future that you want.

Global Week in Review 15 August 2012 from IP Think Tank

by Marie Louise on August 15, 2012

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

Highlights this week included:

Google to drop search rankings of sites with many takedown notices (Ars Technica) (Out-Law) (Spicy IP) (The 1709 Blog) (TorrentFreak)

Global

Global – General

The greatest overlooked risk in IP strategy (ipstrategy.com)

New book coming – 50 intellectual property mistakes and how to fix them (IP Think Tank)

Using your assets strategically (ipstrategy.com)

Ships-of-the-line (IP Think Tank)

White flag (IP Think Tank)

Employee compensation incentives for patents (only): Does it make sense? (IPKat)

Global – Patents

Rating inventions and patents (ipstrategy.com)

Visualizing invention (ipstrategy.com)

Eight Species of Patent Strategy – Part 2 Five levels of IP management and how intellectual property management develops from stage 1 to stage 2 (ipstrategy.com)

Google’s Motorola Mobility lays off thousands, scrambles to salvage patent litigation strategy (FOSS Patents)

Courts in Korea and Germany postpone decisions on three lawsuits involving Apple (FOSS Patents)

Google changes the game again–this time for patent owners and those who serve them – new prior art searching tool (IP Asset Maximizer Blog) (Patently-O)

Patents–Who needs them? Not most startup entrepreneurs. (IP Asset Maximizer Blog)

HTC share price collapse (IP finance)

Global – Copyright

Google to drop search rankings of sites with many takedown notices (Ars Technica) (Out-Law) (Spicy IP) (The 1709 Blog) (TorrentFreak)

Links to YouTube and other popular sites will not be impacted by new policy on search engine rankings demotion, Google suggests (Out-Law)

ISP sources defend USTR proposals in TPP on copyright limitations: undermine opposition to USTR proposal (KEI)

All nations lose with TPP’s expansion of copyright terms (EFF)

Is there ANY part of the copyright monopoly that meets legislative quality bars? (TorrentFreak)

Australia

Compulsory licensing inquiry – Issues paper released (Patentology)

Liability for user generated content on Facebook – Advertising Standards Board decides case involving Smirnoff (IP Whiteboard)

Canada

CETA talks – Billions at stake if Canada caves on drug patent demands (Michael Geist)

CETA update – Political decision on pharma patents in the Fall (Michael Geist)

CETA update – ACTA provisions are still very much alive (Michael Geist)

Europe

No pre-emptive CJEU reference but Neutrokine α might still get to CJEU (The SPC Blog)

European Patent Office – Practice to correct text of granted patents has to cease (EPLAW)

EPO TBoA revokes Novzymes’ patent concerning animal feed production process in Novozymes v DANISCO (IPKat)

IKEA: a trademark officially worth 9 billion Euro (Class 46)

OHIM BoA: Franz Keil GmbH & Co’s figurative KIEL trademark survives, not a geographical reference (Class 46)

Germany

Microsoft keeps pushing for a third German injunction against Google’s Motorola Mobility (FOSS Patents)

India

Airtel pays penalty for indiscriminate blocking – ISPs stuck between rock and a hard place? (Spicy IP)

Traditional medicines, clinical trials and re-entry of data exclusivity? (Spicy IP)

Israel

Israel Patent Agency publishes report on activity in 2011 (The IP Factor)

Italy

District Court of Turin rejects Merck’s requests for preliminary injunction against Sandoz, finding prima facie lack of inventive step for claimed co-formulation of dorzolamid and timolol (Kluwer Patent Blog)

Netherlands

District Court of The Hague declares itself incompetent to rule on Philips’ contract law claims based on it’s initial launch of proceedings in Poland: Philips v Digipres (EPLAW)

Singapore

Singapore’s plan to be the regional IP centre in Asia (ipstrategy.com)

United Kingdom

Benlysta (Belimumab) – EWHC (Pat): Lilly’s claim for declaratory relief upheld but stayed until conclusion of validity proceedings: Eli Lilly v Human Genome Sciences (EPLAW)

Facts vs formalism – protecting descriptive and allusive terms: Geolabs v Geo Laboratories and Edwards and Fine & Country Ltd & Ors v Okotoks Ltd & Anor (IPKat)

Hadopi “failure” a warning for the UK? (The 1709 Blog)

United States

US General

Running into a glass door (or window); a problem with the new “window ANDA” forfeiture provision (FDA Law Blog)

FDA rescinds orphan drug exclusivity for Wilate; a first-of-its-kind decision (FDA Law Blog)

US Patents

AIA shifts USPTO focus from inventors to patent owners (Patently-O)

First to file practice: grace period non-inventor disclosures (Pharma Patents)

An overview of the final patent reform rules packages effective September 16, 2012 (Pharma Patents)

USPTO issues final rule to implement miscellaneous post patent provisions of AIA (Patent Docs)

Supplemental examination final rules (Patently-O)

Post grant estoppel to shut down some patent reexaminations (Patents Post-Grant)

The proposed Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act (Maier & Maier) (Patently-O)

“No” to software patents per se: software is only a means to an end. (Patently-O)

Why isn’t patent law as straightforward as real estate law?: Maybe it is (Patently-O)

US Patents – Decisions

Patanol (Olopatadine) – CAFC: uses dependent claims to construe “therapeutically effective amount”: Alcon Research v Apotex (Pharma Patents) (Patent Docs)

Lovenox (Enoxeparin) – CAFC continues to be split over scope of 271(e)(1) safe harbor: Momenta v Amphastar (Orange Book Blog) (Patent Docs) (Patent Docs)

Suffolk Technologies – Challenge to Suffolk Technologies “snippet” internet search patent among the reexamination requests filed week of August 3, 2012 (WHDA)

CAFC avoids determining propriety of third party declaration practice in inter partes patent reexamination: Lingamfelter v Kappos (Patents Post-Grant)

CAFC: Walter Beineke not entitled to patent for two strains of white oak tree under Plant Patent Act of 1930: In re Beineke (Patent Docs)

Prandin (Repaglinide) – CAFC has final say in Novo Nordisk v Caraco (Pharma Patents)

ND California: RIM’s $147 million patent penalty wiped out – Judge overturns jury finding that BlackBerry infringes device management patent (Ars Technica)

CD California: Cross-licenses and outbound agreements concerning accused technology deemed discoverable: Richard A Williamson v Citrix Online et al (Docket Report)

SD New York: Losing plaintiff’s failure to perform pre-filing investigation supports award of attorney fees: Lyda v Fremantlemedia North America (Docket Report)

WD Wisconsin grants Apple partial summary judgment on FRAND contract issues in Apple v Motorola (FOSS Patents)

Non-public litigation: The hidden story of Monsanto v DuPont (Patently-O)

US Patents – Lawsuits and strategic steps

Apple – Apple v Samsung: Apple appeals Judge Koh’s orders to make certain business information public (FOSS Patents)

Apple – Apple v Samsung: Copying and misconduct at heart of Apple’s and Samsung’s disagreement on jury instructions (FOSS Patents)

Apple – Apple v Samsung: Apple wins exclusion of president of Samsung Telecommunications America as witness (FOSS Patents)

Apple – Apple v Samsung: Judge is tired of Apple-Samsung blame game, orders lawyers to meet in person this Sunday (FOSS Patents)

Apple – Apple v Samsung: What Apple’s 2010 $30-per-unit licensing proposal to Samsung means for Android in 2012 and beyond (FOSS Patents)

Apple – Apple v Samsung: Fox News commentator concedes representing Samsung prior to district bar admission (FOSS Patents)

Astrazeneca – Astrazeneca files patent infringement suit against Amneal in response to Para IV challenge regarding Seroquel (Quetiapine) (Patent Docs)

Cumberland Pharmaceuticals – Cumberland files patent infringement suit against Perrigo in response to Para IV challenge concerning Acetadote (N-acetylcysteine) (Patent Docs)

Freescale Semiconductor – ALJ Essex stays investigation in Certain Integrated Circuits (337-TA-822) (ITC 337 Law Blog)

Joao Control and Monitoring Systems of California – Sale of software does not establish direction or control of customer sufficient to support direct infringement claim: Joao Control and Monitoring Systems of California LLC v Sling Media (Docket Report)

Millenium Pharmaceuticals – Millenium files patent infringement suit against Sandoz in response to Para IV challenge concerning Velcade (Bortezomib) (Patent Docs)

Neptun Light – ALJ Pender denies motion for non-monetary sanctions in Certain Dimmable Compact Fluorescent Bulbs (337-TA-830) (ITC 337 Law Blog)

Nokia – ALJ Pender denies Google request to intervene in Certain Electronic Devices, Including Mobile Phones And Tablet Computers (337-TA-847) (ITC 337 Law Blog)

Nycomed – Nycomed files patent infringement suit against Apotex in response to Para IV challenge concerning Omnaris (Clesonide) (Patent Docs)

Soverain Software – Online shopping cart did not implicate divided infringement because web pags contained embedded programming and did not require a user to download or install software: Soverain Software v JC Penney Corporation (Docket Report)

Standard Innovation – ALJ Pender grants motion to terminate in Certain Kinesiotherapy Devices (337-TA-823) (ITC 337 Law Blog)

Technology Properties – TP asserts three patents against Nintendo in connection with its DSi product (Patent Arcade)

VirnetX – Apple sanctioned for “impeding and frustrating” deposition of engineer: VirnetX v Cisco Systems (Docket Report)

US Copyright

Efficiency tests delay U.S. “six strikes” anti-piracy scheme (TorrentFreak)

US Copyright – Lawsuits and strategic steps

AF Holdings – Judge sides with porn P2P plaintiff, setting up legal showdown – Appeals court to decide if rightsholders can subpoena 1,058 people in one case (Ars Technica)

Discount Video Center – All subpoenas quashed in Discount Video Center v Does 1-29 (Recording Industry vs The People)

LendInk – Content industry war on sharing claims another victim – LendInk shuts down due legal threats (EFF)

LightSpeed Media – Porn copyright troll sues AT&T and Comcast, says they side with pirates (Ars Technica)

Megaupload – FBI monitored dotcom raid via live video link, secret govt group involved (TorrentFreak)

O’Dwyer, Richard – TVShack staff in U.S. worked with Feds to nail Richard O’Dwyer (TorrentFreak)

Oracle – Judge Alsup tries to out the shills in Oracle v Google (Technology & Marketing Law Blog)

US Trade Marks – Decisions

Precedential No. 27: Adding a question mark to GOT STRAPS materially alters the mark, says TTAB: In re Guitar Straps Online, LLC (TTABlog)

New book coming soon – 50 Intellectual Property Mistakes and how to fix them

by Duncan on August 14, 2012

We’re putting together the final touches on our latest book: ’50 Intellectual Property Mistakes and how to fix them’.

We’ve taken the now-famous ’33 make that 43 IP Mistakes’ post, added a few, worked on the content and polished, and then polished again.

Here’s a short video from Robert to tell you more…

Stay tuned – we’ll let you know as soon as we have a release date.

Ships-Of-The-Line

by Robert on August 13, 2012

There is no doubt that CEOs are gaining a greater perspective on IP. There is also no doubt that the key question a CEO will want to know about IP is whether his enterprise has a patent or trademark to defend anything considered important at the moment. If his attorneys say yes, then that may be all he wants to know – trusting that the people employed to handle IP matters will take care of the details.

Is there more to IP strategy than that? Of course there is. What a CEO of any enterprise that depends upon innovation should ask is how well the IP protects and advances the customer experience he wishes his enterprise to deliver, and to receive a good answer for that. That is the longer reach of IP beyond traditional notions of protection.

It will still take some time to make the switch as a standard way of thinking. How long? I will give some anecdotal evidence that it could still be many years from now. Bear with me, because this may seem a stretch, but then think about it. I met with a retired US Navy officer the other day and posed a question. For hundreds of years, battleships dominated naval warfare until the aircraft carrier gained prominence in World War II – a switch of thinking as revolutionary for decision-makers, and obvious in hindsight, as the way IP decides business outcomes today over traditional brick and mortar strategies.

So I asked this officer why the powers that be kept all four of the Iowa class battleships as museums – all obsolete as tools to command the waterways when they were launched – and unceremoniously scrapped the aircraft carriers, most notably the USS Enterprise, the most decorated ship in the US Navy ever. What was his answer? Essentially, that old ideas die hard, and the brass still loves their battleships – the idea of ships-of-the-line deciding who owns an ocean.

So the question, is your CEO still of the mindset to use IP in traditional ways only – like ships-of-the-line – or has he set his IP free to capture opportunity and expand the whole scope of the enterprise through more creative strategies? The reason to do the latter is obvious, yet we still see a lot of the former and expect to for a very long time.

Image credit: Hemera Big Box of Art 1 Million

White Flag

by Robert on August 10, 2012

When do you know to stop an endeavor? History is replete with stories of individuals and nations in politics and war who fought on long after any hope for victory, as they saw it, ended. Such can happen commercially as well. We ask for a little more time, seek a little more investment, on a direction that no longer makes sense.

Sometimes, despite the best efforts and strong IP, a present direction no longer makes sense. When such times happen, a useful exercise is to decouple the IP and knowledge gained executing the approach from the approach itself so that you can surrender the approach, and take the IP and knowledge forward. Even if you personally cannot take your documented IP forward, you always have the knowledge. Then find another approach.

We discuss a number of white flag events in our Mieza books. A key message within those books, however, is to test your approaches in advance so that you do not find yourself raising white flags because of strategic blunders. While a good strategy cannot guarantee success, a bad strategy can all but guarantee failure.

Image credit: Hemera Big Box of Art 1 Million

Global Week in Review 8 August 2012 from IP Think Tank

by Marie Louise on August 8, 2012

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

Highlights this week included:

Saving High-Tech Innovators from Egregious Legal Disputes Act (SHIELD Act) introduced in House of Representatives (Inventive Step) (Patentology) (EFF) (Ars Technica) (PatentsPost-Grant)

Lovenox (Enoxaparin) – CAFC extends safe harbor to post-approval drug testing: Momenta v Amphastar (Pharma Patents) (Patent Docs) (FDA Law Blog)

7^th Circuit Court of Appeals: Video embedding site isn’t a contributory copyright infringer, but sideloading could be direct infringement: Flava Works v. myVidster (Technology & Marketing Law Blog) (The 1709 Blog) (EFF) (Ars Technica)

Global

Global – General

Three insights into how intellectual property can benefit an innovative business. (IPStrategy.com)

IP and IC – the same thing or not? (IPStrategy.com)

Perfect storm is set to slam IP Rights, holders (IPStrategy.com)

Focus on the lesser value in licensing (No. 48 in our list of IP mistakes) (IP Think Tank)

Intangible assets are not theoretical concepts! (Business IP and Intangible Asset Blog)

Global – Patents

Rating inventions, patent applications and granted patents (IPStrategy.com)

SMEs can leverage their IP to facilitate R&D financing (IPStrategy.com)

TPP IP text would restore right to sue surgeons and other medical professionals for patent infringement. Why? (KEI)

Global – Copyright

Leaked: US proposal on copyright’s limits – A TPP draft looks more restrictive than some had hoped. (Ars Technica)

Stalemate over WIPO treaty on copyright exceptions for persons with print disibilities (Spicy IP)

Australia

Bureaucratic insanity or rulemaking error? – Correcting an error in details recorded in the register of patents (Patentology)

Registrar does not have the power to undo assignment of trademark that has been registered wrongly: Mediaquest v Registrar (ipwars.com)

Arava / Arabloc (Leflunomide) – Apotex v Sanofi – FCAFC affirms conclusion of no implied licence to reproduce product information documents (ipwars.com)

House of Representatives Standing Committee on Infrastructure and Communications considers the question – Why is digital music more expensive in Australia? (IPKat)

China

Coping mechanisms for trade secret infringement in outbound investment (China Law Insight)

Europe

Danisco wins animal feed battle against Novzymes (Kluwer Patent Blog)

Divergent approaches to copyright reform emerge in Europe (IP Watch)

France

Anti-P2P agency Hadopi likely to get shut down (Ars Technica) (Michael Geist) (TorrentFreak)

India

Division Bench of Delhi High Court settles the law on interpretation of IPR (Imported Goods) Enforcement Rules, 2007 (Spicy IP)

Sprycel (Dasatinib) – Natco admits to bad faith and BMS attempts patent linkage!: Bristol Myer Squibb v Natco (Spicy IP)

Madras High Court orders ISPs to block urls containing film name (The 1709 Blog)

South Africa

Supreme Court confirms foreign exchange approval no longer required for assignment of trademarks: Oilwell v Protech International (Afro-IP)

United Kingdom

Disclosure of copyright-protected information under FOI not a breach of copyright law, says ICO (Out-Law) (IPKat)

Richard Hooper’s Phase 2 Report on Digital Copyright Exchange published (Laurence Laurence Kaye on Digital Media Law)

EWPCC invalidates Humira Pen patent in Barry Liversidge v Owen Mumford & Anor (EPLAW)

EWHC (Pat) delivers mixed ruling in aircraft seating system patent infringement case: Virgin Atlantic Airways Limited v Contour Aerospace Limited & Ors (EPLAW)

EWHC (Ch) considers, in the context of a bridging finance agreement, whether there had been a transfer of IP rights: Quick Draw v Global Live Events (IP finance)

United States

US General

Can a press release be a tortious act?: Taser International v Stinger (WHDA)

“Big RLD” versus “little rld” – What’s the difference? (FDA Law Blog)

US Patents

Saving High-Tech Innovators from Egregious Legal Disputes Act (SHIELD Act) introduced in House of Representatives (Inventive Step) (Patentology) (EFF) (Ars Technica) (PatentsPost-Grant)

Losing the jury – what happens when the case qoes right over the jurors’ heads? (IPStrategy.com)

First to file practice: Grace period inventor disclosures (Pharma Patents)

USPTO reverses course to permit anonymous ex parte reexamination requests (Pharma Patents)

The proper scope of DNA (or “gene”) patent claims (Patent Docs)

The OED asserts it has jurisdiction to discipline you in far broader circumstances than you might think (Patently-O)

Incentivizing discovery (rather than invention): In re Beineke (Patently-O)

Software patentability – solving a knotty problem: an outrageous call for patent reform part deux (Patently-O)

US Patents – Decisions

Lovenox (Enoxaparin) – CAFC extends safe harbor to post-approval drug testing: Momenta v Amphastar (Pharma Patents) (Patent Docs) (FDA Law Blog)

Prandin (Repaglinide) – CAFC modifies injunction against Novo concerning Orange Book use code amendment: Novo Nordisk v Caraco (Patent Docs)

CAFC: To patent system claims, the computer must be “integral to the invention”: Bancorp Services v Sun Life Assurance Company (IP Spotlight)

CAFC again supports USITC jurisdiction for pure-enforcement NPEs; court again splits on claim construction: InterDigital v ITC and Nokia (Patently-O) (ITC 337 Law Blog)

Hectorol (Doxercalciferol) – ND Illinois: Bench trial finds pharmaceutical patent valid and enforceable: Bone Care v Pentech (Chicago IP Litigation Blog)

ED Missouri: Monsanto wins $1b verdict on RoundUp Ready seed patent (Patently-O)

US Patents – Lawsuits and strategic steps

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

Apple – Apple refiles contract lawsuit against Google to protect its latest 3G/4G gadgets (FOSS Patents)

Apple – Bankruptcy court denies Apple’s claim to two Kodak patents: Apple waited too long to claim ownership of 2 patents in Kodak’s patent sale (Ars Technica)

Apple – ND California: Samsung lawyer forces Apple’s $75k expert to highlight subtle differences (Ars Technica)

Apple – Apple opposes Samsung’s ‘me too’ motion for adverse inference jury instruction on emails (FOSS Patents)

Apple – ND California: Judge Koh once again bars Samsung from making the “Apple imitated Sony” argument (FOSS Patents)

Apple – ND California: Samsung: Copying accusation is “offensive,” company wants to “simply compete” (Ars Technica)

Apple – ND California: Apple says Samsung is free-riding on $1 billion in marketing (Ars Technica)

Apple – Apple wants dismissal, winning verdict in Samsung case for evidence leak (Ars Technica)

ArCzar – Twombly and Iqbal do not require disregard of allegations based on “information and belief”: ArCzar v Navico (Docket Report)

ChriMar Systems – ALJ Essex grants motions to terminate investigation in Certain Communications Equipment (337-TA-817) (ITC 337 Law Blog)

Eli Lilly – Eli Lilly gets patent extension for blockbuster drug, Cymbalta (IP Solutions Blog)

Galderma – Galderma files patent infringement suit against Watson following Para IV certification as part of ANDA to manufacture generic Epiduo Gel (Adapalene and Benzoyl) (Patent Docs)

Genetic Technologies – History of early settlement weighs against transfer to MDL panel: Genetic Technologies v Bristol-Myers Squibb (Docket Report)

HTC – Apple expands attack on HTC’s acquired patents, tries to kill two pending cases at once (FOSS Patents)

Immersion Corporation – Challenge to Immersion touchpad patent among the re-examination requests filed week of July 30, 2012 (WHDA)

Kaneka Corporation – ITC decides to partially review and partially vacate initial determination in Certain Polyimide Films (337-TA-772) (ITC 337 Law Blog)

Maury Microwave – Pro se prosecution no defense to application of prosecution history estoppel: Maury Microwave v Focus Microwaves (Docket Report)

Meda Pharmaceuticals – Meda files patent infringement suit against Cadila in response to Para IV challenge concerning Astepro (Azelastine) (Patent Docs)

Microsoft – “Hypothetical” or “theoretical” infringement unproven in “real-world implementation” insufficient to support infringement of method claim: Paone v Microsoft (Docket Report)

Microsoft – Microsoft says ‘Motorola’s efforts to evade its [F]RAND commitments are collapsing’ (FOSS Patents)

Network Signatures – Pattern of filing infringement suits and offering to settle for less than defense costs did not render case exceptional warranting attorneys’ fees: Network Signatures v State Farm Mutual Automobile Insurance Company (Docket Report)

Purdue – Purdue files patent infringement suit against Actavis in response to Para IV challenge concerning OxyContin (Oxycodone) (Patent Docs)

Robert Bosch – CAFC to hear en banc appeal on its jurisdiction over all-but-accounting patent decisions: Robert Bosch v Pylon (Patently-O)

Sargent – Foreign parties and manufacturers not entitled to “preliminary assessment” of willfulness evidence to avoid “inherent prejudice”: Sargent Mfg. Co. v. Cal-Royal Products (Docket Report)

Southern Research Institute – SRI, Genzyme files patent infringement suit against Abon Pharmaceuticals in response to Para IV challenge concerning Clolar (Clofarabine) (Patent Docs)

Standard Innovation – ALJ Pender grants motion to terminate investigation in Certain Kinesiotherapy Devices (337-TA-823) (ITC 337 Law Blog)

Sunovion – Sunovion files patent infringement suit against Watson in response to Para IV challenge regarding Xopenex HFA (Levalbuterol) (Patent Docs)

Technology Properties – ALJ Rogers denies respondents’ motion for summary determination of invalidity in Certain Digital Photo Frames And Image Display Devices (337-TA-807) (ITC 337 Law Blog)

US Copyright

Newest Olympic sport: Evasion of geolocation (Technology & Marketing Law Blog)

Has your ISP joined the US ‘six strikes” anti-piracy scheme? (TorrentFreak)

US Copyright – Decisions

ND California: “Name your shills”, judge orders Oracle, Google (Ars Technica) (Ars Technica)

US Copyright – Lawsuits and strategic steps

Authors’ Guild – Google Book Search case threatens librarians’ access to information: ignoring fair use doctrine, Authors Guild suit tries to block valuable resource (EFF)

Electronic Arts – EA faces uphill battle in it’s copyright infringement lawsuit against Zynga (Technology & Marketing Law Blog)

Liberty Media – Judge orders Oron to settle $34.8m copyright suit, dismisses case (TorrentFreak)

Malibu Media – P2P infringement lawyer faces possible sanctions for disregarding court order regarding subpoenas: In re: Bittorrent Adult Film Copyright Infringement Cases (Technology & Marketing Law Blog) (TorrentFreak) (Ars Technica)

SAP – SAP agrees to minmum $307m damages settlement for infringing Oracle’s copyrights (Out-Law)

TVShack.net – MPAA leaks: TV-Shack press strategy revealed; MPAA recruits ‘surrogates’ to support extradition of UK student (TorrentFreak) (TorrentFreak) (Ars Technica)

US Trademarks

What are trademark defendants’ obligations to clean up the Internet after a trademark injunction? (Technology & Marketing Law Blog)

US Trade Marks – Decisions

CAFC affirms TTAB cancellation of “LENS” registration: mark not used for software: Lens.com, Inc v 1-800 Contacts, Inc (TTABlog)

Precedential No. 26: Chastizing PTO, TTAB reverses disclaimer requirement of ARCADEWEB for internet marketing services: In re Future Ads LLC (TTABlog)

Precedential No. 25: TTAB finds “α CU” (Alpha CU) deceptive for copper-less dietary supplements: In re E5 LLC (TTABlog)

Precedential No. 24: TTAB affirms refusal of REAL RUSSIAN as primarily geographically deceptively misdescriptive of vodka: In re Premiere Distillery, LLC (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Land Rover – Land Rover sues “British Northwest Rover” restoration and repair company (Seattle Trademark Lawyer)

Vietnam

Trademark infringement case in Vietnam – Bayer stops Viet Duc from using similar mark for rice fungicide product (IP Komodo)

Patent strategy 101 – Keep it secret

by Pallavi on August 6, 2012

Do you have an invention ready in hand but are not able to file a patent? How will you protect it from being disclosed if you intend to eventually file a patent?

Often disclosure is essential with partners, collaborators, investors, while developing advanced technologies with the help of external agencies and so on. It is sometimes essential to disclose a few bench marking stages for research scholars. Occasionally disclosure takes place accidentally by inventors and at other times, it is done by someone under explicit or implicit duty not to disclose amounting to breach of trust (evident abuse).
Disclosure can also occur as a result of a lack of understanding as to what amounts to disclosure, inadequate clarity on legislative provisions and cases of disclosure in relevant jurisdictions, a lack of disclosure strategy within the organisation or the absence of necessary expert advice.

Explaining an invention to a coworker which actually does not amount to disclosure may become harmful if it is disclosed to another person who is not under obligation to keep it secret. Disclosing an invention to even a single person who denies that he has received it in confidence may be detrimental. Presentation of the invention, during which no presentation materials are circulated, may be harmful when someone takes down notes on the invention. Information submitted to government agencies for grant applications or approval of products can be retrieved under freedom of information and may be disastrous unless it is submitted in accordance with the laws of the state to protect it from disclosure. Commercialization of products incorporating an invention causes disclosure whether it is easy to make out or not.

Find out your key markets and make sure you know the patentability / novelty standard and whether a grace period is applicable under the respective legislation. A grace period is the period of time in which a patent may be filed following disclosure of the invention to the public. Most European states adhere to absolute novelty standard. Only two types of disclosure in the preceding six months from the effective filing date are allowed viz. disclosure by evident abuse of invention without consent from inventor and disclosure in recognized exhibitions. This means if the inventor or third party who derives information from inventor (not amounting to evident abuse) reveals the invention amounting to disclosure, the inventor loses the right to patent forever. The grace period is calculated from the filing date, not the priority date. If a European application has foreign priority, inventors should be vigilant of any disclosure that may take place not only before the priority date but even after filing the foreign priority application because they need to file European / PCT applications within 6 months from any disclosure that can avail a grace period. This means if you want to file EP application or enter EP through PCT, you need to be extremely careful to avoid any activity that might lead to disclosure before and after your foreign priority application. Also if inventors themselves cause this disclosure other than participating in a recognized exhibition, they would forfeit the right to patent forever.

Many other states have six months limited grace period including China and Japan. China provides a grace period, not only for evident abuse and recognised exhibitions, but also for disclosure even in “prescribed academic and technological meeting”. Japan provides a grace period for six types of disclosure including disclosure by experimentation, printed publication and through electric telecommunication means. Some countries have a one year grace period such as Australia, the United States, Canada, India and Korea and allow an inventor to file a patent within one year of disclosure. India allows a priority claim within one year of public working (use) of the invention as long as such public working was required for reasonable trial of the invention.

However since grace periods and the types of disclosure to which they apply varies from country to country, inventors desiring to protect an invention globally or in a large number of key markets won’t be practically able to avail these grace periods. Therefore they require expert advice and a sound disclosure strategy which will allow them to avail maximum benefit without losing the right to patent in key markets with stringent novelty standards, such as Europe. Expert advice is necessary to define when, where, and how inventors may disclose their invention if required. Even when certain disclosure is made, experts can evaluate how harmful the disclosure is to the crux of invention. For example merely describing the benefit of your product may not lead to disclosure because you haven’t described how you have arrived at your product. Expert advice may also include guidance on signing confidentiality agreements with third parties, monitoring for the abuse of the invention and monitoring competitors activities while your inventions are held secret by using a sound intelligence program.

In the end it is good to remember two things:

If you must wait to file you patent, keep the invention secret. Patents are granted in return for public disclosure of how to perform them – keeping inventions secret while working them is against this principle and undermines validity.
Someone working in your field may come up with a parallel invention simultaneously so use your invention cautiously and maintain close surveillance to monitor competitors’ activities.

Image credit: Pricklebush

Focus on the lesser value in licensing (No. 48 in our list of IP mistakes)

by Robert on August 2, 2012

This is an interesting mistake because you can find yourself doing the right thing while emphasizing the wrong thing. It is certainly not a mistake to pursue licensing and monetary value from your IP portfolio. It is a mistake when licensing happens tactically that could happen strategically.

Marshall Phelps, an IP icon for his work at IBM and Microsoft, noted that the greater value of licensing for most innovator companies is not in the royalties, but in the business relationships that licenses create. His licensing program with IBM received a lot of attention when it reached the $1 billion annual royalty mark. While that royalty was large, it only represented a fraction of the $31 billion of business IBM did at that time.

Many top business managers apparently focused on the $1 billion dollars of annual royalties rather than the integrated business relationships those licenses created and their positive affect at helping IBM gain the other $30 billion. Licensing initiatives began with the royalties as the primary focus – a hard value easy to quantify, and not the business relationships – a softer value difficult to quantify. As such the licensing initiatives set themselves up to underperform. Licensing functions operated with objectives independent of the overall business strategy itself. They became just ad hoc attempts to monetize the patent portfolio.

Even if ad hoc licensing programs work to secure royalties, and even if ad hoc approaches prove better than doing nothing at all, they leave business value untapped. Untapped business value is the cost of the mistake.

(This is number 48 in our list of IP mistakes and how to avoid them.)

Image credit: Hemera Big Box of Art 1 Million

Global Week in Review 1 August 2012 from IP Think Tank

by Marie Louise on August 1, 2012

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

Highlights this week included:

Lower Regional Court of Mannheim finds Motorola phones violate Microsoft’s file allocation table (FAT) patents, issues injunction (Ars Technica) (FOSS Patents)

USPTO issues proposed first-to-file rules and guidelines (Pharma Patents) (Inventive Step) (Patently-O)

Global

Global – General

Use questionable ethics (No. 49 in our list of IP mistakes) (IP Think Tank)

Global – Trade Marks / Brands / Domain Names

Global Pharma calls on ICANN to act against online counterfeits (IP Watch)

Global – Patents

How to improve your innovation ROI with early stage patent expertise: In depth management article (IP Asset Maximiser Blog)

Mega-patent portfolio sales: chimera or here to stay? (IP finance)

Apple-Samsung patent fight is not about pushing competition off the market (IPEG)

Global – Copyright

WIPO’s proposed exception for the blind and visually impaired stalls again (The 1709 Blog)

Australia

Technological protection measures exceptions review (ipwars.com)

Apple v Samsung – Trial commences, but will it matter? (Patentology)

Belgium

Escitalopram – Brussels court of appeal grants preliminary injunction based on EP annulled at first instance: Lundbeck / Eurogenics (EPLAW)

Cyprus

IP tax – Cyprus offers 2% (IP finance)

Europe

European Commission starts Citalopram ‘pay for delay’ case against Lundbeck, Merck, Ranbaxy and others (EPLAW) (Out-Law)

Will unified patent litigation affect the generic medicine market? (PatLit)

CJEU rules supplementary protection certificates available for “new medical use”: Neurim Pharmaceuticals v Comptroller-General of Patents (Circadin® / Melatonin) (Patent Docs)

Germany

Lower Regional Court of Mannheim finds Motorola phones violate Microsoft’s file allocation table (FAT) patents, issues injunction (Ars Technica) (FOSS Patents)

India

Patent Office publishes list of applications deemed as traditional knowledge (Spicy IP)

Indonesia

Indonesia’s R&D problems (IP Komodo)

Israel

Supreme Court of Israel decision in Football Assoc Premier League v John Doe – Streaming of a live sporting event is not a user right (IP Osgoode)

Changes to Israel Patent Law – 18 month publication, third party submissions, filing on electronic media and accelerated examination (The IP Factor)

Netherlands

District Court of The Hague denies Actavis’ invalidation and cost claims against AstraZeneca over abandoned Dutch parts of European patents covering formulation of omeprazole and its enantiomers (EPLAW)

Zofran (Ondansetron) – Supreme Court finds submitting generic product for listing in G-Standard constitutes “offering” under Art 51(1)(b) of the Patent Act in Pharmachemie v Glaxo Group (Kluwer Patent Blog)

Chief IPO Philips: The quality of patents should improve: only focus on inventions which matter (EPLAW)

Philippines

Madrid begins in Philippines (IP Komodo)

Sweden

Music labels won’t share Pirate Bay loot with artists (TorrentFreak)

United Kingdom

UK seeks to lead the world with proposed copyright licensing exchange (IAM)

Copaxone (Glatiramer) – EWHC (Pat) considers obviousness and lack of technical merit/effect in Mylan v Yeda (Kluwer Patent Blog) (EPLAW)

HENLEY, HENLEYS and “wrong way round” confusion – EWCA decision in Woolley & Anor v Ultimate Products & Anor (Class 46)

Replica alloys seller infringes BMW Community design and trade mark rights, EWHC (Pat) rules in Bayerische Motoren Werke v Round and Metal & Anor (Out-Law)

United States

US General

ITC publishes new proposed rules of practice and procedure (ITC 337 Law Blog)

US Patents

Some thoughts on patentability (Director’s Forum)

Ongoing debate: Is software patentable?: Bankcorp Services v Sun Assur. Co and CLS Bank v Alice Corp (Patently-O) (Ars Technica)

Patent trolls: As American as apple pie? (Patentology)

USPTO expands and extends patent prosecution highway programs (Patent Docs)

USPTO issues final rule for implementing statute of limitations provisions for office disciplinary proceedings (Patent Docs)

USPTO issues proposed first-to-file rules and guidelines (Pharma Patents) (Inventive Step) (Patently-O)

A different challenge to the post-notice of appeal patent term adjustment problem (Pharma Patents)

Myriad and Prometheus: Do patents “preempt” follow-on research? (Patent Docs)

Gaston Kroub on cleantech patent litigation after Apple v. Motorola (Green Patent Blog)

US Patents – Decisions

CAFC: Pior art enablement – burden on patent applicant to prove non-enablement: In re Antor Media Group (Patently-O)

CAFC looks at intellectual property terms of employment agreement to decide patent ownership: Preston v Marathon Oil (Pharma Patents)

CAFC extends stay of Samsung Galaxy Nexus injunction – for the time being: Apple v Samsung (FOSS Patents)

Delaware: Membership in defensive patent aggregator service established knowledge of patents sufficient to support indirect infringement and willfulness claims: SoftView v Apple (Docket Report)

Utah: America Invents Act does not preclude pretrial consolidation: CR Bard v Medical Components (Docket Report)

ITC issues final determination of no violation by LSI, STMicroelectronics and others in Certain Semiconductor Chips (337-TA-753) brought by Rambus (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Alcon Pharmaceuticals – Alcon files patent infringement suit against Lupin in response to Para IV certification as part of ANDA to manufacture generic Moxeza (Moxifloxacin) (Patent Docs)

Alcon Pharmaceuticals – Alcon files patent infringement suit against Apotex in response to Para IV certification as part of ANDA to manufacture generic Vigamox (Moxifloxacin) (Patent Docs)

Apple – Apple stands ready to execute a FRAND license agreement with Google’s Motorola Mobility (FOSS Patents)

Apple – Miami court grants HTC request to transfer Apple’s claims to Delaware – Motorola might benefit (FOSS Patents)

Celgene – Celgene files patent infringement suit against Natco Pharma, Arrow and Watson in response to Para IV certification as part of ANDA to manufacture generic Revlimid (Lenalidomide) (Patent Docs)

HTC – HTC withdraws another patent from second ITC case against Apple – down from 8 to 2 (FOSS Patents)

Nokia – HTC asks ITC to let Google join as co-defendant against Nokia (FOSS Patents)

ObjectVideo – ITC institutes investigation (337-TA-852) against Pelco regarding Certain Video Analytics Software (ITC 337 Law Blog)

US Copyright

Leaked RIAA report: SOPA/PIPA “ineffective tool” against music piracy (TorrentFreak)

US Copyright – Lawsuits and strategic steps

Megaupload – Government: we can freeze Mega assets even if case is dismissed – Judge weighs argument that Megaupload is beyond reach of US criminal law (Ars Technica)

Flava Works – FileSonic, Oron and their users hit with piracy lawsuit (TorrentFreak)

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