Past Week’s Daily News™
Friday, August 28, 2015 12:51 pm
* COURT IMPROPERLY LIMITED PATENT CLAIMS TO PREFERRED EMBODIMENT
Inline Plastics Corp. v. EasyPak, LLC 14-1305 — Yesterday in an opinion by Judge NEWMAN, the Federal Circuit vacated a district court’s judgment of no infringement. The patents claimed a tamper-resistant food container that included a “frangible section.” The district court construed this limitation to have at least two tearable score lines per the preferred embodiment. Inline argued that nothing in the specification or prosecution history limited “frangible section” by the number of score lines.
The district court erred in limiting the claims to the preferred embodiment. The specification explicitly disclosed an embodiment with a single score line and there was no clear disavowal of claim scope during prosecution.
(1 to 4 stars rate impact of opinion on patent & trademark law)
THE IP SPOTLIGHT: MATTEL CONTINUED TO LEAD IN TRADEMARK REGISTRATIONS
In 2014 Mattel, Inc. received the most trademark registrations from the U.S. Patent and Trademark Office with 426, 23% more than it received in 2013. Of the companies listed in the top ten for 2014, Samsung Electronics and Lidl Stiftung saw the largest percent increases in registrations between 2013 and 2014 with 180% and 152% respectively. The top ten companies are listed below. The top 50 are listed on the IPO website.
NEW IPO MEMBER
TODD MARTIN of Southport, Australia has become an individual member of IPO.
IP IN THE MASS MEDIA
Unaffiliated Chinese Company Using Goldman Sachs Name
Yesterday BloombergBusiness reported that the International Union of Operating Engineers asked the Chinese government to investigate a Chinese company named Goldman Sachs (Shenzhen) Financial Leasing Co. as part of its anti-corruption crackdown. U.S.-based Goldman Sachs Group Inc. confirmed the Chinese company is not an affiliate, and it is looking into the matter.
British Group Sues SoundCloud for Copyright Infringement
Yesterday the New York Times reported that PRS, a British agency representing songwriters and artists, sued German music streaming service SoundCloud for copyright violations.
PERRY+CURRIER INC. TO SPONSOR ANNUAL MEETING
The Water Stations at the IPO Sept. 27 to 29, 2015 Annual Meeting in Chicago, IL will be co-sponsored by Perry+Currier Inc. Visit the meeting website for more information or to register.
Thursday, August 27, 2015 12:24 pm
THE IP SPOTLIGHT: TRADEMARK APPLICATIONS, REGISTRATIONS INCREASED IN 2014
In 2014 the number of trademark applications at the U.S. Patent and Trademark Office increased from the 2013 total by 4.93% to 455,017. The number of registrations increased by 7.55% to 279,282.
TODAY ON IPO’S IP CHAT CHANNEL: 3D PRINTING
Tune in to the IP Chat Channel today at 2:00p.m. ET to discuss 3D Printing for Patent Lawyers: Repair, Reconstruction, Exhaustion, Inducement. Panelists include John Cheek, Caterpillar Inc.; Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; and Bryan Vogel, Robins Kaplan LLP. To register, click here. CLE granted in many states. IP Chat Channel webinars are recorded and available after the live webinars at www.ipo.org/IPChatChannel.
IPO’S ANNUAL MEETING ADDRESSES POST GRANT PROCEEDINGS AT THE USPTO
Patent Trial and Appeal Board proceedings have been accepting cases and issuing decisions for over two years now and enough data is now available to spell out some trends and to enable practitioners to tell us how well or not the system is working and some practical advice on dealing with the proceedings as they have developed. Attend IPO’s Annual Meeting from September 27-29 in Chicago, IL to learn more.
A session on “Post Grant Proceedings at the USPTO” will address issues that arise in post grant proceeding when there is concurrent, subsequent or precedent litigation on the same patent and the trends that are seen there. Speakers include HENRY HADAD, Bristol-Myers Squibb Company; TONY BACA, Hewlett-Packard Co.; DENISE DEFRANCO, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; RICHARD RAINEY, General Electric Co.; and HON. JAMES SMITH, U.S. Patent & Trademark Office (retired).
NEW IPO MEMBER
SCOTT BURT of Ottawa, Canada has become an individual member of IPO.
IP IN THE MASS MEDIA
Apple Swipe-to-Unlock Patent Invalid in Germany
Yesterday BloombergBusiness reported that a German court ruled a patent on Apple’s swipe-to-unlock technology was not valid as the feature was suggested in prior art.
Judge Rules in Favor of Lilly Lung Cancer Drug
Yesterday the Indianapolis Business Journal reported that a judge in Indianapolis ruled Teva Pharmaceuticals and Fresenius SE must wait until the patent on Eli Lilly’s lung cancer treatment Alimta expires in 2022 to begin producing generic versions of the drug.
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.
RECOMMEND THE IPO DAILY NEWS TO YOUR CO-WORKERS
We probably could come up with 100 reasons to read the Daily News. Here are three:
• Our emails are FREE to every employee of IPO corporate and law firm members.
• We check our facts carefully.
• We don’t take vacations.
So tell your co-workers to sign up so they can keep up. Even in August.
Wednesday, August 26, 2015 12:32 pm
THE IP SPOTLIGHT: SAMSUNG MAINTAINED LEAD FOR DESIGN PATENTS IN 2014
Samsung Electronics Co. Ltd. maintained the number one spot on the list of companies that received the most design patents from the USPTO in 2014, with 836. In 2013 the company received 515 design patents. Microsoft Corp. maintained the second spot on the list despite a drop in the number of design patents from 409 in 2013 to 329 in 2014. A list of the 50 companies receiving the most design patents is available on the IPO website.
SESSION ON UTILITY & PATENT ELIGIBILITY STANDARDS AT IPO’S ANNUAL MEETING
The recent Supreme Court decisions in Myriad, Prometheus and Alice have given rise to a good deal of speculation on where the lines between patent eligibility and ineligibility are drawn. Recent USPTO guidelines have issued, the Patent Office appears to be rejecting more and more applications on 35 U.S.C. §101 grounds and the Federal Courts are making findings on patent eligibility across technical sectors. Attend IPO’s Annual Meeting from September 27-29 in Chicago, IL to learn more. A session on “Utility & Patent Eligibility Standards” will address the level of uncertainty and challenges as seen not only in the court room but also by patent practitioners in the recent past. Topics will also include whether the trends in this area have affected the valuation of patents and licensing activity in the biotech and software sectors; and whether there are any legislative fixes for this area of jurisprudence. Speakers include MICHAEL CHERNOFF, MDB Capital; BOB BAHR, U.S. Patent & Trademark Office; DEBORAH MARTIN, Pfizer, Inc.; OGGIE SHENTOV, Jones Day; and MATTHEW WEINSTEIN, Accenture.
HUAWEI TECHNOLOGIES JOINS IPO
Huawei Technologies Co. Ltd of Shenzhen, China (primary contact PAUL HASHIM) has become a corporate member of IPO. Visit their website at www.huawei.com.
IP VIDEO CONTEST STANDS OUT AMONG OTHERS
The IPO Education Foundation’s IP Video Contest does great work in educating young people about IP. This scholarship program gives students the opportunity to share what they know about IP in a creative video.
Previous contest winners include LEWIE KLOSTER, currently a film student at New York University’s Tisch School of the Arts. He recently talked with the Foundation’s Innovator Insights about his experience with the Video Contest and how it helped him develop an understanding of IP rights. Of the contest he said, “flying out to DC and winning a $5,000 scholarship was such an incredible honor. During the Foundation Awards Dinner, I talked with some of the most inspiring people I’ve ever met…It put a fire in my belly to keep going, because losing 10 or 20 contests is worth winning that one. So I would say, your work will pay off—just keep at it.
Visit the website for more information on the contest, how your company can become a sponsor, and previous winning videos.
IP IN THE MASS MEDIA
USPTO Denies Hedge Fund Director’s Petition to Review Drug Patents
Yesterday Reuters reported that the USPTO’s Patent Trial and Appeal Board denied hedge fund director KYLE BASS’ petition to review patents on two of Acorda Therapeutics Inc.’s multiple sclerosis drugs.
USPTO Proposing Changes to IPR Process
Yesterday the Washington Post reported on the USPTO’s efforts to improve the inter partes review process. According to the article, some say the agency seems ready to take on the project without involvement from Congress.
Tuesday, August 25, 2015 12:43 pm
MEET TEAM FIREARMOR: FOUR TEENS ON A MISSION TO KEEP FIREFIGHTERS SAFE
IPO Education Foundation is pleased to announce that TEAM FIREARMOR has won a $5,000 grant from the foundation to help the team get a patent on its invention. The team of high school students won the 2015 Conrad Foundation Spirit of Innovation Challenge in the Health and Nutrition category. They hope their improvement to extreme temperature apparel could one day become an industry standard for firefighters everywhere. Their invention was inspired by the tragic death of 19 firefighters in the Arizona desert in 2011; the team hopes to use their technology to prevent such an event from happening again.
In this latest Young Innovator Insights interview meet the team, learn about the technology behind FireArmor, and hear their thoughts on their peers’ perception of IP protection.
USPTO REQUESTS COMMENTS ON PILOT PROGRAM FOR INSTITUTING AND CONDUCTING INTER PARTES REVIEW PROCEEDINGS
Today, the USPTO published a Federal Register notice requesting comments on a proposed pilot program on the institution and conduct of inter partes review (IPR) proceedings. Under the proposed pilot program, the determination of whether to institute an IPR will be made by a single administrative patent judge (APJ), with two additional APJs being assigned if the IPR is instituted. An IPR trial under the pilot program will be conducted by a panel of three APJs, two of whom were not involved in the determination to institute the IPR.
The USPTO is seeking comments on the following questions: (1) should the USPTO conduct the proposed pilot program; (2) what are its advantages or disadvantages; (3) how should requests for rehearing of a single APJ decision to institute be handled; (4) what information should the USPTO use in reporting the program’s outcome; and (5) are there any other recommendations for conserving and using efficiently the USPTO’s judicial resources? Comments are due October 26. IPO committees will be studying the notice.
NEW IPO MEMBER
JENNIFER WOLFE of Cincinnati, Ohio has become an individual member of IPO.
IP IN THE MASS MEDIA
Samsung Plans to Petition the Supreme Court
Last week PC Magazine reported that Samsung will ask the U.S. Supreme Court to review a case in which it was found to have infringed Apple patents on the iPhone, and in which the Federal Circuit recently denied en banc rehearing, leaving intact a $548 million damages award to Apple.
THE IP SPOTLIGHT: SAME STATES HAD MOST U.S. PATENTS PER CAPITA IN 2014 AS IN 2013
Each of the 10 states to receive the most U.S. UPR (utility, plant, and reissue) patents per capita in 2013 held exactly the same position on the 2014 list. California continued to lead. Every one of the 10 saw an increase in patents per capita, reflecting the higher number of patents granted by the USPTO overall. Vermont saw the largest percentage increase, at 16%. The 10 are shown below and the top 25 are now available on the IPO website.
NEXT WEEK ON IPO’S IP CHAT CHANNEL: AMGEN V. SANDOZ
Tune in to the IP Chat Channel on September 2nd at 2:00p.m. ET to discuss Amgen v. Sandoz: What Now? The “patent dance” spelled out in the 2010 Biologics Price Competition and Innovation Act (BPCIA) was recently declared by the Federal Circuit to be just one option open to biosimilar market aspirants, upending the expectations of many industry participants. Our panel includes two patent litigators — KEVIN NELSON of Duane Morris, who counsels on biosimilar launches, and ELIZABETH WEISWASSER of Weil, Gotshal & Manges LLP, who counsels on branded strategy — as well as KRISTA CARVER of Covington & Burling, an FDA regulatory attorney who counsels innovative biotech companies in legislative matters.
They will discuss branded company strategy now that an innovator may have only six months notice before a biosimilar launch; the new importance of competitive intelligence; biosimilar launch strategy, including the pros & cons of the BPCIA pathway – will any biosimilar aspirants still choose to go the BPCIA route? and the importance of due diligence and assessing at-risk launches; new litigation dynamics outside the BPCIA, including crucial preliminary injunction battles, discovery, licensing, damages and willfulness; and the next step and the end game: en banc at the Federal Circuit? How will this all end up? To register, click here. CLE granted in many states. IP Chat Channel webinars are recorded and available after the live webinars at www.ipo.org/IPChatChannel.
BRINKS GILSON & LIONE TO SPONSOR ANNUAL MEETING
The Mobile App at the IPO September 27 to 29, 2015 Annual Meeting in Chicago, IL will be sponsored by Brinks Gilson & Lione. Visit the meeting website for more information or to register.
Monday, August 24, 2015 12:17 pm
IPO TELLS FEDERAL CIRCUIT ITS DECISIONS ON LACK OF PATENT EXHAUSTION HAVE NOT BEEN OVERRULED BY SUPREME COURT
On August 19 IPO filed an amicus brief in the Federal Circuit in Lexmark Int’l v. Impression Products answering two questions the court posed when it decided to hear the case en banc. First, IPO said the Supreme Court opinion in Kirtsaeng, a copyright case, did not overrule the Federal Circuit’s Jazz Photo decision, in which the Federal Circuit held that the sale of a patented item outside the U.S. never gives rise to U.S. patent exhaustion.
Second, IPO said the Supreme Court opinion in Quanta did not overrule the Federal Circuit opinion in Mallinckrodt. In that case the Federal Circuit ruled that a sale of a patented article, when the sale is made under a restriction that is otherwise lawful and within the scope of the patent grant, does not give rise to patent exhaustion. The filing of the IPO brief was approved by the Board of Directors. It was drafted by ROBERT TAYLOR, a member of the Amicus Brief Committee. IPO President PHILIP JOHNSON and Amicus Brief Chair KEVIN RHODES were on the brief.
LOWER-THAN-PROJECTED USPTO FEE COLLECTIONS TRACK DECLINE IN PATENT APPLICATION FILINGS; FEE INCREASES POSSIBLE
During last week’s Patent Public Advisory Committee meeting, Chief Financial Officer TONY SCARDINO reported that the current working estimate for USPTO fee collections for fiscal year 2015 is $3.05 billion. The estimate was adjusted after the May PPAC meeting, where Scardino reported that fee collections for the year were estimated at $3.14 billion, and tracks the decline in patent application filings projected for the year. The new estimate is $93.6 below an estimate reported in the fiscal year 2016 President’s Budget.
Spending for 2015 is estimated at $3.25 billion, resulting in a deficit of about $20 million for the year. The operating reserve at the end of 2015 is projected at $472.7 million. Scardino said the Senate has asked the USPTO to include in its FY2017 budget request a long-term plan to reduce expenses if fee collections continue to fall below projections.
He also reported that the USPTO is still studying potential “adjustments” to fees. A decision is expected by September or October on whether to initiate the rulemaking process.
LEARN TIPS ON DRAFTING AN INTERNATIONAL APPLICATION AT IPO’S ANNUAL MEETING
So many companies outsource the drafting of patent applications, but very few US firms know much about foreign requirements and practices and thus only focus on US practice. This leads to a lot of additional global prosecution time and money. Attend IPO’s Annual Meeting from September 27-29 in Chicago, IL to learn more. A session on “Drafting an International Application” will address how best to draft a specification and claims most likely to meet US, EPO, Japanese, Chinese and Canadian requirements to minimize costs and increase enforcement opportunities. Speakers include DARRYL FRICKEY, Dow Chemical Co.; GEOFFREY DE KLEINE, Borden Ladner Gervais; BENJAMIN BAI, Allen & Overy; GAUTIER ENGISCH, Procter & Gamble Co.; and YOICHI WATANABE, Seiwa Patent & Law.
ATTORNEY FEE SHIFTING IN PATENT SUITS IN U.S. DISTRICT COURTS: WEEKLY REPORT
On August 17, Federal Circuit Judge BRYSON sitting in the Eastern District of Texas denied the accused infringer’s motion for attorney fees. Trover Group, Inc. v. Dedicated Micros USA
On August 18, Judge REAL in the Central District of California granted $733,414.34 in attorney fees to the accused infringer. Large Audience Display Systems, LLC v. Tennman Productions, LLC
On August 19, Judge SEEBORG of the Northern District of California denied accused infringer’s motion for attorney fees. Vasudevan Software, Inc. v. Microstrategy, Inc.
On August 19, Judge BENCIVENGO of the Southern District of California granted $359,733.17 in attorney fees to the accused infringer. Deep Sky Software, Inc. v. Southwest Airlines Co.
IP IN THE MASS MEDIA
Microsoft Sues InterDigital for Antitrust Violations
On Friday Reuters reported that Microsoft Corp. sued InterDigital Inc. for antitrust violations saying InterDigital failed to license standard essential patents related to mobile phone communications on fair and reasonable terms.
Ashley Madison Issues DCMA Notices to Reporters Publishing Database
Last week tech blog Boing Boing reported on Avid Life Media’s use of DCMA takedown notices to stop reporters and media outlets from publishing user information that was recently stolen from the company’s website Ashley Madison.
IPO COMMITTEE CALLS THIS WEEK
Thursday, August 27
Antitrust and Competition Law Committee – 11:00a.m. ET
To join one of IPO’s 29 Standing IP Committees, visit www.ipo.org/committeesignup.
THIS WEEK ON IPO’S IP CHAT CHANNEL: 3D PRINTING
Tune in to the IP Chat Channel on August 27th at 2:00p.m. ET to discuss 3D Printing for Patent Lawyers: Repair, Reconstruction, Exhaustion, Inducement. Lawyers who want to give good advice regarding the disruptive technology of 3D printing need to refresh their understanding of many areas of case law and rethink how it all fits together. For instance, companies with more than one business model – eg, those who both sell repair parts for machines they manufacture and also want to repair machines bought from others – may subject to competing imperatives.
Our panel includes JOHN CHEEK, Deputy IP Counsel with Caterpillar Inc.; Finnegan, Henderson, Farabow, Garrett & Dunner, LLP partner and design patent specialist ELIZABETH FERRILL; and patent litigator BRYAN VOGEL, a partner at Robins Kaplan LLP. Through the lens of 3D printing, they will reconsider case law and current litigation involving repair, reconstruction, and exhaustion, including the pending en banc Federal Circuit Lexmark case; the pending Federal Circuit case on whether the International Trade Commission has jurisdiction over imports of digital files; and the issues of inducing and contributory infringement. To register, click here. CLE granted in many states. IP Chat Channel webinars are recorded and available after the live webinars at www.ipo.org/IPChatChannel.