Past Week’s Daily News™
Friday, January 30, 2015 1:20 pm
Sen. John Cornyn
SENATOR CORNYN DISCUSSES PROSPECTS FOR PATENT LITIGATION REFORM
U.S. Senator JOHN CORNYN (R-Texas) spoke about patent litigation reform legislation at an American Enterprise Institute event in Washington, DC yesterday. He said that even though a number of developments in the past several months will affect patent litigation, those developments have been “marginal” and legislation is still needed to address abuses.
He said Senate Majority Leader MITCH MCCONNELL (R-Ky.) is anxious to get a bill to the Senate floor, although Senate Judiciary Chairman CHUCK GRASSLEY (R-Iowa) wants to wait until House Judiciary Committee Chairman BOB GOODLATTE’s (R-Va.) bill, the Innovation Act, passes the House. Goodlatte is expected to introduce his bill, which will be the same as last year’s House-passed bill, next week.
Senators and committee staff have begun discussions about what will be included in a Senate bill. Cornyn said the proposal to expand the covered business method patent review program, created by the America Invents Act, was no longer under consideration.
* USPTO ERRED IN CONSTRUING CLAIM TERM “WIRELESS” IN PATENT APPLICATION
In re Imes 14-1206 — Yesterday in an opinion by Judge MOORE, the Federal Circuit reversed a USPTO decision rejecting Imes’s claims as obvious. The patent application claimed a device for storing and displaying digital images from a camera and communicating them over a network with “first and second wireless communication modules.” At issue was whether the Schuetzle reference’s memory card disclosed “a second wireless communication module.” The USPTO said the memory card was wireless because it had to be removed from a camera and inserted into a computer.
The USPTO “erred in concluding that Schuetzle’s removable memory card … discloses the claimed second wireless communication module.” The USPTO’s construction of “wireless” was “inconsistent with the broadest reasonable interpretation in view of the specification.” Imes’s patent application “expressly and unambiguously” defined the term to require electromagnetic or acoustic waves to carry a signal.
(1 to 4 stars rate impact of opinion on patent & trademark law)
IP IN THE MASS MEDIA
“This Sick Beat” Trademark Application Filed
Yesterday Rolling Stone reported that TAYLOR SWIFT has filed several applications with the USPTO to register trademarks on song lyrics from her most recent album, 1989, such as “This Sick Beat,” for identifying certain products.
Xiaomi Expansion Problem: Small Patent Portfolio
Yesterday Forbes reported that Chinese cell phone manufacturer Xiaomi’s comparatively small patent portfolio relative to its largest competitors may pose a problem as the company seeks to expand into international markets.
PUBLISH YOUR ARTICLE IN THE IPO LAW JOURNAL
IPO is accepting member-written articles for the IPO Law Journal. Articles should be timely, IP-related, and unpublished. Previously published articles also will be considered if published in the last year and accompanied by written permission from the copyright holder. You can view full submission guidelines at www.ipo.org/submitarticle.
Thursday, January 29, 2015 1:57 pm
USPTO PUBLISHES ABSTRACT IDEA EXAMPLES
Following its December 16 Federal Register notice, the USPTO this week posted abstract idea examples in conjunction with its revised examination guidance that addresses patent eligible subject matter under Patent Act section 101. The agency previously provided nature-based product examples to illustrate the analysis set forth in the revised guidance. Public comments are due March 16. IPO committees are studying the notice and examples. To see the USPTO website page containing a link to the December 16 notice and other information, click here.
U.S. HOUSE, SENATE COMMITTEE HEARINGS ON TRADE POLICY EMPHASIZE IMPORTANCE OF IP
On Tuesday the Senate Committee on Finance and the House Committee on Ways and Means held hearings on President Obama’s 2015 trade policy agenda. United States Trade Representative (USTR) Ambassador MICHAEL FROMAN was the witness at both hearings. Senate Finance Chairman ORRIN HATCH (R-Utah) and House Ways and Means Chairman PAUL RYAN (R-Wisc.) both indicated that renewing Trade Promotion Authority (TPA), which defines negotiating objectives and priorities for trade agreements and limits Congress to an up or down vote on trade agreements without amendments, is a priority for their committees.
TPA, sometimes known as fast-track authority, is believed necessary for completing negotiations on the Trans-Pacific Partnership (TPP) and Transatlantic Trade and Investment Partnership (TTIP) agreements. Hatch and Ryan both emphasized that that strong intellectual property protection will be a priority in a TPA bill. Several members of both committees agreed that strong IP standards were important but emphasized that those standards must be enforceable. Regarding TPP, Froman said intellectual property was one of the top negotiating priorities for the U.S.
DON’T MISS IPO EDUCATION FOUNDATION’S 25th PTO DAY: CONNECTING THE IP COMMUNITY WITH THE PTO
PTO Day brings together experts from the USPTO and the private bar to discuss current developments. More than 150 employees from the USPTO attend the conference each year. The keynote speaker at PTO Day will be Hon. Michelle Lee, Deputy Director of the U.S. Patent and Trademark Office. The conference will take place on Tuesday, March 10, 2015 at the JW Marriott Hotel in Washington, DC. For more information or to register, visit www.ipo.org/pto15.
IP IN THE MASS MEDIA
Family Invents Possible Solution to ‘Deflategate’
Yesterday USA Today reported that a Washington state family believes they have created an invention that would help referees detect under-inflated footballs. The device, TorrX, was patented prior to the recent NFL “Deflategate” incident and may be available for purchase as early as June.
Laser Pioneer Dies at 99
On Tuesday CHARLES H. TOWNES, considered a pioneer of the laser, passed away at the age of 99. In 1960 Townes was awarded a patent for the optical maser, considered a forerunner to the laser. (Washington Post)
JOIN AN IPO COMMITTEE
IPO has more than eight hundred committee members on 29 Standing IP Committees that cover seven areas of intellectual property policy, law, and practice. A list of IPO standing committees, identified by division (antitrust and competition law, business issues, litigation and dispute resolution, international IP law and practice, patents, trademarks, and copyrights) can be found here. You can apply to join an IPO committee online at www.ipo.org/committeesignup. Members are limited to one committee.
Wednesday, January 28, 2015 1:13 pm
Sen. Orrin Hatch
HATCH, BLUNT INTRODUCE RESOLUTION ON INTERNET GOVERNANCE
Yesterday U.S. Senator ORRIN G. HATCH, R-Utah, Chairman of the Senate Republican High-Tech Task Force, and Senator ROY BLUNT, member of the Senate Commerce Committee, introduced a resolution to increase awareness of the U.S. Department of Commerce’s announced intention to transition its stewardship role over the Internet’s domain name system to the global community. In a statement, Hatch and Blunt said “we must ensure that stakeholders commit to abide by the strictest standards of transparency and accountability in Internet governance.” “The United States,” said Blunt, “will not accept a proposal that violates our fundamental principles of Internet governance or replaces NTIA’s role with that of another government-led or inter-governmental organization.”
USPTO BEGINS ISSUING REMINDERS OF TRADEMARK REGISTRATION MAINTENANCE DEADLINES
Yesterday the U.S. Patent and Trademark Office began sending courtesy e-mail reminders to owners of “live” trademark registrations about certain upcoming post-registration maintenance filing deadlines. Email reminders will be sent to both primary and secondary email addresses of record on the first day of the statutory filing period for the maintenance filing (e.g., 5th year anniversary date). No reminders will be sent by regular mail, and no follow-up emails will be attempted for undeliverable emails.
IPO APPOINTS NOLAN TO ANOTHER TERM AS GENERAL COUNSEL
IPO President PHIL JOHNSON has reappointed MICHAEL D. NOLAN to another term as IPO’s General Counsel. Michael is a partner in the Washington, DC office of Milbank, Tweed, Hadley & McCloy LLP and an Adjunct Professor at Georgetown University Law Center.
IP IN THE MASS MEDIA
Ralph Lauren Agrees to Destroy Converse Lookalikes
Ralph Lauren has agreed to destroy all shoe designs named in a trademark infringement suit brought by Converse Inc. last October. Converse alleged the shoes are copies of its signature ‘Chuck Taylor All Star’ sneaker. (Daily Mail)
Settlement Reached in Fracking Trade Secrets Issue
Yesterday AP reported that a settlement reached last week in Wyoming will require petroleum companies to substantiate claims that the chemicals used in fracking are trade secrets.
WHO WAS THAT PERSON?
The IPO online membership directory is a great resource for finding contact information for colleagues or business associates. Only members can search and view the IPO online membership directory and the directory currently includes over 12,000 current affiliates worldwide. Access it at www.ipo.org/directory.
Tuesday, January 27, 2015 12:58 pm
HOTEL ROOMS FOR PTO DAY ATTENDEES
IPO Foundation has reserved a block of rooms at the JW Marriott Hotel for attendees of the PTO Day conference on March 10. To reserve a hotel room at the IPO group rate of $309/night plus tax, you must make your reservation with the hotel directly by February 11, pending space availability. Call 1-800-228-9290 or 202-393-2503 and reference “Intellectual Property Owners Association (IPO)” when making your reservation. To register for the conference, visit www.ipoef.org/pto15.
USPTO SEEKS INPUT ON PRIVILEGE FOR COMMUNICATIONS BETWEEN PATENT APPLICANTS AND PRACTITIONERS
Yesterday the USPTO published a Federal Register notice announcing a public roundtable meeting and seeking input on the extent to which communications between patent applicants and patent agents or attorneys are privileged across domestic and international jurisdictions. The agency has asked about the state of U.S. law regarding communications between patent applicants and non-U.S. patent practitioners in U.S. litigation; how foreign courts treat communications between U.S. patent practitioners and their clients; and the nature of protection in the U.S. for communications between non-attorney patent agents and their clients. The roundtable will be held on February 18 at the USPTO’s Alexandria campus. Written comments are due February 25. IPO’s International Patent Law and Practice Committee will be studying the notice.
TODAY ON IPO’S IP CHAT CHANNEL: PROVING DAMAGES FOR FRAND
Tune in to the IP Chat Channel today to discuss Proving Damages for FRAND: Ericsson v. D-Link. Panelists include ANNE LAYNE-FARRAR, CRA; RICHARD STARK, Cravath, Swaine & Moore LLP; and JORGE CONTRERAS, University of Utah, College of Law. 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.
IP IN THE MASS MEDIA
Hershey, Candy Importer Settle Trademark Infringement Suit
Last week Hershey Company settled a trademark infringement suit with candy importer LBB Imports LLC. Hershey claimed LBB was importing products infringing Hershey’s Reese’s and York trademarks, among others. (Bloomberg)
Gilead to Allow Generics to Make Drug in India
Yesterday the Wall Street Journal reported that Gilead Sciences Inc. said it would allow generic-drug makers in India to produce a new version of its Sovaldi hepatitis C treatment. Recently India’s patent office ruled against one of Gilead’s patents on Sovaldi, but the company said it is appealing the decision.
Monday, January 26, 2015 1:33 pm
SHEPPARD SELECTED TO LEAD USPTO’S DETROIT OFFICE
Last week it was reported that CHRISTAL SHEPPARD will be Regional Director of the USPTO’s new satellite office in Detroit, Michigan. Sheppard is an assistant professor of law at the University of Nebraska College of Law, where she co-founded a concentration in Intellectual Property Law. Previously she was the chief counsel on patents and trademarks for the Committee on the Judiciary, United States House of Representatives. She has served on the Patent Public Advisory Committee and was also employed at the White House Office of Science and Technology Policy, Executive Office of the President. Earlier she was in private law practice and in the Office of the General Counsel of the United States International Trade Commission. IPO congratulates Sheppard on her new role and looks forward to working with her as part of the USPTO management team.
IPO BOARD ADOPTS RESOLUTION ON DISCLOSURE OF INTERESTED PARTIES IN LITIGATION
Yesterday the IPO Board of Directors adopted a resolution stating that it does not support modification of initial disclosure rules in litigation to require disclosure of licensees, or those with financial or control interests in asserted patents or patent owners, beyond disclosures necessary to establish litigation standing and real parties in interest. Such non-ownership disclosures are better handled in discovery under appropriate protective orders and in accordance with Rule 26 of the Federal Rules of Civil Procedure. Patent ownership and real party in interest disclosures are already required by the Federal Rules of Civil Procedure such as Rules 7.1(a)(1), 17 and 26(a). The full text of the resolutions will posted on the IPO website.
USPTO SEEKING NOMINATIONS FOR NATIONAL MEDAL OF TECHNOLOGY AND INNOVATION
The U.S. Patent & Trademark Office is seeking nominations for the 2015 National Medal of Technology and Innovation. Nominations are due by June 1, 2015. Information about requirements for submission are available on the USPTO website.
IPO COMMITTEE CALLS THIS WEEK:
Tuesday, January 27,
Copyright Law and Anti-Piracy Committee – 4:00p.m. ET
Thursday, January 29,
European Practice Committee – 12:00p.m. ET
To join one of IPO’s 29 Standing IP Committees, visit www.ipo.org/committeesignup.
TOMORROW ON IPO’S IP CHAT CHANNEL: PROVING DAMAGES FOR FRAND
Tune in to the IP Chat Channel, Tuesday, January 27 at 2:00p.m. ET to discuss Proving Damages for FRAND: Ericsson v. D-Link. Last month the Federal Circuit for the first time gave its views on what methodology to apply to determine a royalty rate for infringed patents subject to fair, reasonable and non-discriminatory (FRAND) commitments related to a standard. That opinion, Ericsson v. D-Link, rejected the Georgia-Pacific framework for FRAND-encumbered patents and includes guidance regarding the incremental value of the invention, apportionment issues for standard essential patents (SEPs), and jury instructions regarding patent hold-up and royalty stacking.
Our panelists are economist ANNE LAYNE-FARRAR of CRA; litigator RICHARD STARK of Cravath, Swaine & Moore LLP; and standards expert JORGE CONTRERAS of the University of Utah, College of Law. They will discuss the opinion and questions that remain open such as: How can a patent owner be fairly compensated for committing an entire portfolio of patents to a standard if royalty rates are set only on the few patents named in a particular suit? What will evidence will be necessary in the future to show harm from royalty stacking and/or patent hold-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.
IP IN THE MASS MEDIA
Lionsgate Continues to Battle Expendables 3 Piracy
Nearly six months after the movie leaked online, Lionsgate is still in the process of trying to bring copyright suits against websites responsible for distributing Expendables 3 without permission. Many of the sites are located internationally; Lionsgate is now seeking permission to serve several sites with process via email. (The Hollywood Reporter)
Pathway and Myriad Settle BRCA Patent Suit
On Friday Pathway Genomics Corp. announced it would settle litigation with Myriad Genetics, Inc. on BRCA patents.
Nike Sued for Famous Jordan-Inspired Logo
Photographer JACOBUS RENTMEESTER has sued Nike for copyright infringement, claiming the company’s famous “Jumpman” logo copied an image of a silhouette of a jumping MICHAEL JORDAN without Rentmeester’s permission. (Washington Post)