WEDNESDAY, SEPTEMBER 1, 2010, 9:15a.m.

IPO’S FEDERAL CIRCUIT SUMMARIES™:

*   *   *   *   Patent Attorney Had Standing as "Any Person" To File False Marking Suit -- Stauffer v. Brooks Brothers, Inc. 2009-1428 -- On August 31 in an opinion by Judge Lourie, the Federal Circuit reversed a district court's dismissal of Stauffer's qui tam action for lack of standing.  Stauffer, a patent attorney, alleged that Brooks Brothers falsely marked its bowties with long-expired patents.  The Federal Circuit concluded that Patent Act 292(b), which provides that "[a]ny person may sue for the penalty" of false marking and apportions the penalty between the claimant and the government, gave Stauffer standing to sue.  Because the government's interests would not be adequately represented by Stauffer and the government would be estopped from suing should Stauffer lose, the government was entitled to intervene.  The court remanded for consideration on the merits, including consideration of Brooks Brothers' motion to dismiss for failure to state a claim because the complaint did not allege intent to deceive with sufficient specificity.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP NEWS CLIPS -- Compiled from newswires and other sources:

Timeliness Could be Issue in Paul Allen Suit -- Yesterday the Wall Street Journal reported on speculative statements by attorneys not involved in the case that Microsoft co-founder Paul Allen may have waited too long before filing for patent infringement last week against Google Inc., Facebook Inc., and other technology companies.  
 
Nike Files Patent Application for Self-Lacing Shoe -- ON Friday MSNBC reported that Nike filed a patent application for a self-lacing shoe, similar to those debuted in “Back to the Future 2.”  The shoes will be operated by battery and will tighten and loosen at the flip of a switch. 

SCHMEISER OLSEN JOINS IPO -- Schmeiser, Olsen & Watts, LLP, of Latham, N.Y. (primary contact Arlen L. Olsen) has become a law firm member of IPO.

MCANDREWS, HELD & MALLOY SPONSOR AT ANNUAL MEETING -- The pocket program at the IPO Sept. 12 to 14, 2010 Annual Meeting in Atlanta, GA will be co-sponsored by McAndrews, Held & Malloy, Ltd.  For more information and to register, visit www.ipo.org/AM2010.

TUESDAY, AUGUST 31, 2010, 9:15a.m.

MAJOR OPINION BY FEDERAL CIRCUIT ON PATENT MISUSE DOCTRINE YESTERDAY -- In a major opinion yesterday, the U.S. Court of Appeals for the Federal Circuit ruled that the patent misuse doctrine did not prevent U.S. Philips Corp. from enforcing patent rights against Princo Corp.  The Federal Circuit said, “Reduced to its simplest elements, the question in this case comes down to this: When a patentee offers to license a patent, does the patentee misuse that patent by inducing a third party not to license its separate, competitive technology?”  IPO Daily News will summarize the legal issues in the 78 pages of majority, concurring, and dissenting opinions later this week.  The case is Princo Corp. v. ITC.  

POLICY ADMINISTRATOR ARTI RAI LEAVING USPTO -- Yesterday the USPTO confirmed that Administrator for Policy and External Affairs Arti Rai has submitted her resignation.  Professor Rai will return to a faculty position at Duke University Law School, and along with her family will relocate from Alexandria, Virginia,  back to the Durham, North Carolina, area in the coming weeks, as Duke begins its fall term.  USPTO Director David J. Kappos commended Rai for “play[ing] a seminal role in reestablishing the USPTO as a leader in IP policy both within the Administration and throughout the global IP community.”  Veteran USPTO attorney Paul Salmon will serve as Acting Administrator for Policy and External Affairs.

LYNNE BERESFORD RE-APPOINTED COMMISSIONER FOR TRADEMARKS AT USPTO -- Commissioner for Trademarks Lynne Beresford has been re-appointed to another five-year term by Commerce Secretary Gary Locke.  Beresford began her career at the USPTO in 1979 as a Trademark Examining Attorney and joined the Office of Legislation and International Affairs in 1995.  She was first appointed Commissioner for Trademarks in 2005.  The Commissioner for Trademarks is the top official in the USPTO with responsibility for trademarks, and reports to USPTO Director David Kappos.

IP NEWS CLIPS -- Compiled from newswires and other sources:

YouTube Avoids Preliminary Injunction in German Copyright Suit -- On Friday a German court decided not to issue a preliminary injunction against Google Inc.’s YouTube site that would have forced the site to remove 75 music videos.  A copyright infringement suit has been brought against the company by eight royalty-collecting bodies including an organization representing German authors and musicians and the American Society of Composers, Authors, and Publishers.  (AP)

Rolls-Royce Sues United Technologies on Turbofan Engine Patent -- Last Thursday jet engine maker Rolls-Royce said it sued United Technologies Corp. for infringement of a Rolls-Royce patent covering fan blades in a geared turbofan engine, among others.  (AP)

TRANSTECH PHARMA JOINS IPO -- TransTech Pharma, Inc., of High Point N.C. (primary contact Samuel B. Rollins) has become a small business member of IPO.  Visit their website at www.ttpharma.com.

SESSION ON RIGHT OF PUBLICITY AT 2010 IPO ANNUAL MEETING -- A session on “Right of Publicity” will take place on Tuesday, September 14, 2010 at IPO’s Annual Meeting in Atlanta, GA.  From sports player to celebrities, people are seeking to control the commercial use of their identities.  But what is “commercial”?  What is “Identity”?  How long does this right last?  A failure to understand these boundaries can be an expensive mistake.  Panelists, RONALD KATZ, Manatt, Phelps & Phillips, LLP; ELIZABETH MCNAMARA, Davis, Wright, Tremaine LLP; and PROF. REBECCA TUSHNET, Georgetown University Law Center, will provide an overview of where the court decisions and statutory amendments are headed.  For more information and to register, visit www.ipo.org/am2010.

MONDAY, AUGUST 30, 2010, 9:15a.m.

IPO’S FEDERAL CIRCUIT SUMMARIES™:

*   *   No Patent Infringement Because Mechanical and Magnetic Latches Were Not Section 112, Para. 6 Equivalents -- General Protecht Group, Inc. v. Int’l Trade Comm’n 2009 - 1378 -- On August 27 in an opinion by Judge Dyk, the Federal Circuit reversed an ITC finding that General Protecht products infringed patents owned by intervenor Pass & Seymour.  The patents were for electrical receptacles found in bathrooms and kitchens designed to trip when a ground fault is detected.  One patent claimed a device including a “latching means,” which the specification described in mechanical terms.  In contrast, General Protecht’s products used magnetic latches.  The Federal Circuit, applying Patent Act section 112, paragraph 6, did not find substantial evidence that the magnetic latch was an equivalent.  Judge Newman dissented, arguing the court erred in relying on a prior case involving mechanical and magnetic latches.  The court decided companion case 2009 - 1338 the same day.
(1 to 4 stars rate impact of opinion on patent & trademark law)

*   *  Plain Language of Patent Claim Controlled Despite “Not Perfectly Logical” Result -- Pass & Seymour, Inc. v. Int’l Trade Comm’n 2009-1338 -- On August 27 in an opinion by Judge Prost, the Federal Circuit affirmed the ITC’s finding that Pass & Seymour patents were not infringed.  The patents related to circuit interrupters used with household electrical appliances.  One patent, as interpreted by the ITC, included a claim term requiring that “the patented device must be configured to trip in response to a signal that the device is properly wired,” which the ITC acknowledged “was not perfectly logical and might have been a claim-drafting error.”  The Federal Circuit agreed the plain meaning controlled and the ITC’s interpretation was supported by the specification.  Judge Newman concurred.  The court decided companion case 2009-1378 the same day.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP NEWS CLIPS -- Compiled from newswires and other sources:

Microsoft Co-Founder Sues Google, Facebook, Others for Patent Infringement -- On Friday Microsoft Corp. co-founder Paul Allen sued Google Inc., Facebook Inc., eBay Inc. and eight other companies for infringement of four patents developed at Interval Research Corp., a company Mr. Allen financed.  The patents alleged to infringe are said to enable “pop-up stock quotes on a website, suggestions for related reading near a news article, videos along the side of your screen.”  (Wall Street Journal)

WOOD HERRON JOINS IPO -- Wood, Herron & Evans, LLP, of Cincinnati, Ohio (primary contact Thomas J. Burger) has become a law firm member of IPO.

BUCHANAN INGERSOLL & ROONEY PC TO CO-SPONSOR ANNUAL MEETING EVENT -- The Tuesday luncheon at the IPO Sept. 12 to 14, 2010 Annual Meeting in Atlanta, GA will be co-sponsored by Buchanan Ingersoll & Rooney PC.  For more information and to register, visit www.ipo.org/am2010.

FRIDAY, AUGUST 27, 2010, 8:55a.m.

IP NEWS CLIPS -- Compiled from newswires and other sources:

NPR Interviews Kappos on Patent Backlog, Job Creation -- USPTO Director DAVID J.  KAPPOS spoke on last Thursday’s NPR Marketplace program about the backlog at the USPTO and its effect on the country's unemployment problem.  “Patents create jobs,” says Kappos.  “Patents enable innovators to put products and services in the marketplace and to hire people.  They create opportunity and they put Americans to work.  And so every patent application that's sitting here in our agency is potentially American jobs that aren't being created.”

NEW IPO MEMBER -- Dmitriy S. Andreyev, of Bedford, Mass., has become an individual member of IPO.

SUTHERLAND SPONSOR AT ANNUAL MEETING -- The pillow drop at the IPO Sept. 12 to 14, 2010 Annual Meeting in Atlanta, GA will be sponsored by Sutherland Asbill & Brennan LLP.  For more information and to register, visit www.ipo.org/AM2010.

IP LANGUAGE CURMUDGEON: A FRIDAY FEATURE

Click here for the IP Language Curmudgeon Archives.

THURSDAY, AUGUST 26, 2010, 9:20a.m.

IP NEWS CLIPS -- Compiled from newswires and other sources:

New York Times Magazine Explores China’s Counterfeiting Industry -- On Sunday the New York Times Magazine ran a story exploring counterfeiting operations in China and the ongoing efforts by U.S. industry and enforcement agencies to combat it.  The author visited factories in China that routinely fill orders they receive from other countries to duplicate sneakers made by well-known manufacturers.  “What we make depends on the order,” a factory manager said.  “But if someone wants Nikes, we’ll make them Nikes.”  “But China’s counterfeiting dynamic is more complicated than foreign goods being copied . . . . Chinese sneaker brands, for instance, are also counterfeited.”

Madonna Sued for Trademark Infringement -- Last week CNN reported that pop music icon Madonna was sued by apparel manufacturer LA Triumph for her use of the name "Material Girl" for a clothing line she designed with her daughter.  LA Triumph says it has marketed clothes under the "Material Girl" brand since 1997.

IPO DESIGN RIGHTS COMMITTEE REPORT POSTED -- The IPO Design Rights Committee has authored a new report entitled: “Model Design Patent Jury Instructions.”  The report was written by a subcommittee dedicated to the task of drafting model design patent jury instructions in light of the Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) decision.  The report is published on the IPO Articles & Reports page which can be found at www.ipo.org/articles.  For details on submitting articles see www.ipo.org/submitarticle.

SEPTEMBER FEDERAL CIRCUIT ARGUMENTS POSTED -- The Federal Circuit oral argument schedule for September is posted on the IPO web site.  To view the schedule, go to www.ipo.org/ArgumentSchedule.