Intelectual Property Owners Association

Wednesday, June 19, 2013

IPO SUPPORTS AMENDING U.S. PATENT ACT TO AWARD COSTS MORE OFTEN TO PREVAILING PARTY IN INFRINGEMENT SUITS

IPO SUPPORTS AMENDING U.S. PATENT ACT TO AWARD COSTS MORE OFTEN TO PREVAILING PARTY IN INFRINGEMENT SUITS — Last week the IPO Board of Directors adopted a resolution supporting amending 35 U.S.C. § 285 to provide that the court shall award to the prevailing party reasonable costs and expenses, including attorney’s fees, “unless the position and conduct of the non-prevailing party were objectively reasonable and substantially justified, or exceptional circumstances make such an award unjust.” Several recent proposals directed at abusive patent litigation would award costs including attorney’s fees more often to the prevailing party in patent infringement cases. House Judiciary Chairman GOODLATTE’s discussion draft, H.R. 845, S. 1013, and the President’s recommendations in a June 4 statement all contain fee-shifting provisions, but of varying scope. The language supported by IPO is identical to a provisions in S. 1013, the “Patent Abuse Reduction Act of 2013,” introduced by Sen. Cornyn (R-TX) on May 22.

IPO 2013 ANNUAL MEETING COMMITTEE PRESENTATIONS — Earn up to 12-14.5 CLE credits at the IPO Annual Meeting in Boston, Massachusetts. Concurrent IPO committee CLE presentations are being offered on Monday, Sept. 16. Presenting committees include: Corporate IP Management; Antitrust & Competition Law; Damages & Injunctions; U.S. International Trade Commission; Litigation and Standards Setting; Emerging Technologies and Genetic Resources and Traditional Knowledge; International Trademark Law & Practice; IP Licensing; and U.S. Post-Grant Patent Office Practice. To view the session descriptions, click here. For more information or to register, visit www.ipo.org/am2013.

* * TRADEMARK OPPOSITION IN USPTO NOT PRECLUDED BY INFRINGEMENT AND DILUTION SUIT — Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 12-1495 — On June 18 in an opinion by Judge TARANTO, the Federal Circuit overturned a USPTO decision that Levi’s claims were precluded. Levi’s trademark was for a stitching design on jeans. Levi opposed registration of Abercrombie’s trademark for a stitching design on clothing on the basis that it was likely to cause confusion with and dilute Levi’s trademark. Levi also unsuccessfully sued Abercrombie in district court for infringing and diluting Levi’s trademark by using a stitching design on a particular line of jeans. The Federal Circuit held that neither issue nor claim preclusion barred Levi’s challenge in the USPTO to Abercrombie’s registration. The district court proceedings did not involve the same transactional facts as the opposition proceeding. Abercrombie sought to register the stitching design for jeans, skirts, shorts, pants, and jackets, without limitation, which exceeded the specific line of jeans the parties litigated in district court.
(1 to 4 stars rate impact of opinion on patent & trademark law)

* SYNERGISTIC EFFECT WAS EXPECTED FROM DRUG COMBINATION IN PATENTED METHOD FOR TREATING DIABETES — Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories Ltd., 11-1223 — On June 18 in an opinion by Judge PROST, a split Federal Circuit upheld a district court decision finding Novo’s patent claim obvious. Novo claimed a method for treating diabetes using the drug repaglinide in combination with metformin. Caraco made a prima facie case that it would have been obvious to try the combination of the two drugs to treat diabetes. Novo argued that the combination yielded unexpected results by providing a synergistic rather than simply additive effect. The district court found the results were entirely expected in view of the prior art. The prior art taught the use of metformin in combination with a drug from same class as repaglinide. A skilled artisan would have expected the level of synergy Novo found when it combined the drugs. The court also addressed inequitable conduct.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP NEWS CLIPS — Compiled from newswires and other sources:

Firm Introduces Mapping Feature for New Trademark Registrations — Yesterday BloombergBusinessweek published an article about legal startup company Trademarkia, which recently introduced a mapping feature that geocodes trademark registrations, allowing users to search for recent registrations within a specified radius of a given address.

STONETURN GROUP TO SPONSOR ANNUAL MEETING EVENT — The Monday Luncheon at the IPO Sept. 15 to 17, 2013 Annual Meeting in Boston, Massachusetts will be sponsored by StoneTurn Group. For more information and to register, visit www.ipo.org/AM2013.

IS YOUR COMPANY HIRING? — Any IPO member can post available positions on IPO’s IP Job Bank free of charge. Postings are split into either corporate or law firm positions and can be viewed by the public. Positions are removed or renewed after 60 days. To view the IP Job Bank, go to www.ipo.org/jobbank.