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Past Week’s Daily News™

Friday, 22 July, 2016 12:29 pm

IPO SUPPORTS USE OF LACHES AS DEFENSE AGAINST PATENT DAMAGES

Today IPO filed an amicus brief at the U.S. Supreme Court in SCA Hygiene AG v. First Quality Baby Prods., LLC supporting the position that the equitable doctrine of laches can bar claims for damages based on patent infringement occurring within the six-year period established by 35 U.S.C § 286. IPO argued:

1. The Supreme Court’s holding in Petrella v. Metro-Goldwyn-Mayer, Inc. does not control in this case because Petrella relied on the existence of a comprehensive statute of limitations for copyright infringement that does not exist under section 286;
2. The legislative history of the 1952 Patent Act establishes Congress’s intention that laches remain a bar to claims of patent infringement; and
3. Retaining laches to bar damages claims serves important interests such as fairness and certainty, thereby protecting and creating incentives for investment and innovation.

The brief was drafted by GREG CASTANIAS and SASHA MAYERGOYZ (Jones Day). IPO President KEVIN RHODES (3M Innovative Properties Co.) and Amicus Committee Chair STEVE MILLER (Procter & Gamble) were on the brief.

U.S. GOVERNMENT ACCOUNTABLITY OFFICE RELEASES STUDIES OF USPTO

On Wednesday the U.S. Government and Accountability Office released two studies focusing on the U.S. Patent and Trademark Office. The first, titled “Patent Office Should Define Quality, Reassess Incentives, and Improve Clarity,” which was conducted at the request of House Judiciary Chairman BOB GOODLATTE (R-Va.), reviews trends in patent litigation and additional opportunities to address patent quality. GAO recommends seven actions the USPTO could take to improve patent quality:

1. Articulating a definition for patent quality;
2. Developing additional goals and performance indicators as part of its strategic plan;
3. Considering allowing examiners more time to examine patent applications;
4. Considering how examiner performance incentives affect thoroughness of examination;
5. Using data from PTAB proceedings to improve patent quality, such as by providing additional training;
6. Evaluating compact prosecution and other examination policies to determine whether changes are needed to improve quality; and
7. Considering requiring applicants tools such as glossaries or claim charts to improve claim clarity.

In a second study, titled “Patent Office Should Strengthen Search Capabilities and Better Monitor Examiners’ Work,” GAO examined ways to improve patent quality through accessing the best prior art. GAO makes seven recommendations including developing a strategy for identifying non-patent prior art, developing written guidance for each technology center about what constitutes a quality search, and assessing the amount of time an examiner needs to conduct a thorough prior art search, among others.

GAO also published the results of a Survey of U.S. Patent Examiners that was conducted in 2015 and measured examiner perceptions and suggestions for improvement related to USPTO’s patent quality initiatives and challenges in finding relevant prior art.

CHOFN INTELLECTUAL PROPERTY TO SPONSOR IPO’S ANNUAL MEETING

The meeting bag at the 11-13 September 2016 IPO Annual Meeting in New York, New York, will be sponsored by Chofn Intellectual Property.

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IP IN THE MASS MEDIA

EFF Sues U.S. Government on DMCA Restrictions

Yesterday The Hill reported that the Electronic Frontier Foundation sued the U.S. government to strike “anti-circumvention” restrictions from the Digital Millennium Copyright Act as violating the constitutionally protected freedom of expression.

U.S. Charges Ukrainian Man with Copyright Infringement over Illegal File-Sharing Site

On Wednesday NBC News reported that U.S. federal prosecutors charged Ukrainian ARTEM VAULIN with copyright infringement and money laundering, claiming that he owns an illegal file-sharing site called Kickass Torrents that has distributed more than $1 billion worth of copyrighted material. The U.S. Department of Justice will seek to bring VAULIN to the U.S. from Poland to stand trial.

IP Chat Channel LogoIPO’S IP CHAT CHANNEL: OPEN SOURCE DUE DILIGENCE IN M&A

Tune in to the IP Chat Channel on Thursday, 4 August 2016 at 2:00p.m. ET for Open Source Due Diligence in M&A. Open source software (OSS) can shorten product development cycles and is likely something you use every day. OSS, however, is not free, and compliance with open source software may be in terms of a patent or copyright license instead of a monetary payment. In fact, OSS costs in an acquisition or merger can impact the valuation of the target and can delay or even scuttle the deal.

This webinar will focus on exploring OSS issues during due diligence. The moderator, JOSEPH D’ANGELO (EMC Corporation), and panelists VICTOR HUANG (eBay), HANNA KIM (Microsoft Corp.), and KARLA PADILLA (Qualcomm, Inc.), are all experts in OSS at major technology companies. They will discuss exploring how a target uses OSS, determining possible impacts on a target’s IP in terms of both copyright and patents, determining possible impacts on the acquirer’s IP, and possible ways to mitigate OSS use by the target when such use does not align with the acquirer’s business model. IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.




Thursday, 21 July, 2016 12:46 pm

Federal Circuit Summaries Logo

* * COURT IMPROPERLY GRANTED MOTION TO DISMISS PATENT INFRINGEMENT SUIT FOR LACK OF PERSONAL JURISDICTION

Polar Electro Oy v. Suunto Oy 15-1930 — Yesterday in an opinion by Judge LOURIE, the Federal Circuit vacated a district court decision that it lacked personal jurisdiction over Suunto. Polar’s patents were directed to methods and apparatus for measuring heart rates during exercise. Polar sued Suunto in the U.S. District Court for the District of Delaware. Suunto, a Finnish company with a principal place of business in Finland, argued the court lacked personal jurisdiction. The district court concluded that Suunto had insufficient contacts related to the subject matter of the suit for the court to exercise personal jurisdiction without violating Suunto’s due process rights.

The district court improperly granted Suunto’s motion. Suunto purposefully availed itself of the Delaware market by shipping at least ninety-four accused products to Delaware retailers, fully expecting that its products would be sold in Delaware as a result of its activities. This satisfied the minimum contacts standard for exercising personal jurisdiction over Suunto. The court remanded for determination whether exercising jurisdiction would be reasonable and fair.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO ANNUAL MEETING TO FEATURE SESSION ON FILING STRATEGIES FOR AN INCREASINGLY COMPLEX AND INTERNATIONAL WORLD

Well-rounded IP protection can help brand owners protect their companies’ valuable assets and combat increasingly savvy counterfeiters and infringers. Attend IPO’s 11-13 September Annual Meeting in New York, New York to learn filing strategies for an increasingly complex and international world. In the first half of the session, TRACY-GENE DURKIN (Sterne, Kessler, Goldstein & Fox, PLLC) and PAUL LEE (PepsiCo, Inc.) will discuss strategies for pursuing trademarks, design patents, and copyrights together to build strong IP portfolios.

The second half of the session will focus on the Madrid Protocol. Given that the global business economy continues to expand at a rapid pace, so too must trademark portfolios. KATHRYN BARRETT PARK (General Electric Co.) and ALAN DATRI (IP Datri LLC) will discuss how brand owners can become more comfortable using the Madrid Protocol as a cost-effective alternative to country-specific national filings. The panel will be moderated by ERICA FISCHER (Hewlett Packard Enterprise Company).

IP IN THE MASS MEDIA

Blockstream Announces Defensive Patent Strategy

On Tuesday Bitcoin and blockchain technology developer Blockstream announced the launch of a defensive patent strategy to encourage “permissionless innovation.” The strategy includes a Patent Pledge, which assures developers and users of its technology that they will not be sued by the company for patent infringement, and an Innovator’s Patent Agreement between Blockstream and its engineers that states that their patents will be used for defensive purposes only.

China Top Issuer of Patents for 2015

On Wednesday the Wall Street Journal reported that China surpassed the United States to become the “world’s top issuer of patents” in 2015. The article attributes this to the country’s efforts to strengthen its patent laws, which it says has benefitted U.S. companies, with foreign plaintiffs winning “about 81% of their patent-infringement suits against Chinese companies” between 2006 and 2014.

NOMINATIONS REQUESTED FOR IPO BOARD OF DIRECTORS

The IPO Nominations Committee seeks nominations to fill three seats on the Board of Directors that will become vacant at the end of 2016. The individuals elected will serve terms that begin 1 January 2017 and end 31 December 2018. They will not be eligible for election to a consecutive term. Board members must be corporate members of IPO. Companies are typically represented on the Board by their Chief IP Counsels. More information about IPO Board service is available on our website. To nominate yourself or someone else for the IPO Board of Directors, send the candidate’s name and contact information to Robin Muthig by Friday, 5 August 2016.




Wednesday, 20 July, 2016 12:49 pm

Federal Circuit Summaries Logo

*** DISTRICT COURT ABUSED DISCRETION IN DENYING INJUNCTION IN PATENT INFRINGEMENT SUIT REGARDING LIFE-SAVING PRODUCT

WBIP, LLC v. Kohler Co. 15-1038 — Yesterday in an opinion by Judge MOORE, the Federal Circuit vacated a district court’s denial of a permanent injunction against Kohler. WBIP’s claims were for low-carbon monoxide marine generators for powering appliances on houseboats. WBIP prevailed in its suit against Kohler and obtained enhanced damages for Kohler’s willful infringement. The district court denied WBIP’s motion for a permanent injunction on the basis that it was in the public interest to have more than one manufacturer for the potentially life-saving product and that an ongoing royalty was more appropriate. The court determined that it was unnecessary to address the remaining eBay factors in light of its public interest finding.

The district court’s eBay analysis was sufficiently flawed to constitute an abuse of discretion. The court’s reasoning regarding life-saving goods would create a categorical rule denying permanent injunctions, which the Supreme Court warned against in eBay. Moreover, in Patent Act section 271, Congress expressly provided for injunctive relief in the case of life-saving goods like pharmaceuticals.
(1 to 4 stars rate impact of opinion on patent & trademark law)

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BAKER HOSTETLER TO SPONSOR IPO’S ANNUAL MEETING

Baker Hostetler will sponsor the Women in IP Networking Brunch at the 11-13 September 2016 IPO Annual Meeting in New York, New York.

IP IN THE MASS MEDIA

Filmmaker Sues to Move “We Shall Overcome” to Public Domain

On Monday Hollywood Reporter reported on a lawsuit filed by a documentary filmmaker against Ludlow Music and Richmond Organization seeking a declaratory judgment that the civil rights anthem “We Shall Overcome” is in the public domain because the song is virtually identical to the 1948 composition “We Will Overcome,” whose copyright expired in 1976.

Amazon Awarded Patent on Drone Docking Stations

Yesterday CNBC reported that Amazon was awarded a patent for “docking stations” to be used as part of its drone delivery system. Stations would be built on tall structures, including cell towers, church steeples, office buildings, and electric poles, allowing the devices to recharge and pick up or drop off packages.

CORRECTION

A letter sent by House Judiciary Committee members to Secretary of Commerce PENNY PRITZKER and U.S. Patent and Trademark Office Director MICHELLE LEE about the USPTO’s possible participation in a Commerce Department shared services initiative, which was discussed in yesterday’s Daily News, is available on the IPO website.




Tuesday, 19 July, 2016 11:29 am

HOUSE JUDICIARY MEMBERS EXPRESS CONCERNS ABOUT COMMERCE DEPT. SHARED SERVICES PROGRAM

Yesterday the House Judiciary Committee’s IP Subcommittee Chairman DARRELL ISSA (R-Calif.), along with Judiciary Chairman BOB GOODLATTE (R-Va.) and members MIMI WALTERS (R-Calif.), ZOE LOFGREN (D-Calif.), and SUSAN DELBENE (D-Wash.), sent a letter to Secretary of Commerce PENNY PRITZKER and U.S. Patent and Trademark Office Director MICHELLE LEE seeking information about the USPTO’s possible participation in a Commerce Department shared services initiative that will consolidate IT, human resources, and procurement functions across the Department of Commerce. The letter points out that the USPTO is unique among agencies under the Commerce umbrella because it is fully funded by user fees and requests information about the expected impact of the program on the USPTO and its customers, including the Commerce Department’s cost-benefit analysis and information about safeguards that will be put in place to protect the USPTO from overpayment.

ATTEND WOMEN IN IP NETWORKING BRUNCH DURING IPO ANNUAL MEETING

IPO’s Women in IP Committee is hosting a Networking Brunch for Women in IP during IPO’s Annual Meeting. The brunch will take place on Sunday, 11 September from 11:00a.m.-12:30p.m. ET. Special guest BISMARK MYRICK (U.S. Patent and Trademark Office) will give remarks. The brunch is open to all registered Annual Meeting attendees. Advance registration is required. Space is limited. For more information or to register, visit www.ipo.org/am2016.

IP IN THE MASS MEDIA

Ski Resort Withdraws Trademark Application for “Park City”

Last week the Washington Times reported that Vail Resorts, owner of Park City Mountain Resort, withdrew its application to register a trademark for the name Park City following protests by Park City, Utah residents.

Filmmaker Sues Showtime Networks for Copyright Infringement

Last week Hollywood Reporter reported that film producer and co-founder of music group The Fugees PRAS MICHEL sued Showtime Networks and Showtime Digital for copyright infringement, claiming the network has aired his documentary “Sweet Mickey for President” repeatedly without permission.




Monday, 18 July, 2016 12:56 pm

Federal Circuit Summaries Logo

* * COURT PROPERLY GRANTED MOTION TO DISMISS PREVAILING PARTY’S APPEAL FROM INTER PARTES REEXAMINATION

SkyHawke Technologies LLC. v. Deca International Corp. 16-1325 — On Friday in an opinion by Judge HUGHES, the Federal Circuit upheld a district court’s grant of a motion to dismiss for lack of jurisdiction. SkyHawke’s patent claimed a handheld apparatus for measuring and displaying distances between a golfer and an object on a golf course. SkyHawke’s patent infringement suit against Deca was stayed pending the outcome of an inter partes reexamination. Although the USPTO upheld the claims, SkyHawke appealed the judgment on the basis that the claim construction was erroneous and overly-narrow.

The district court properly granted Deca’s motion to dismiss. Nothing in this case warranted departing from the standard rule that counseled against reviewing appeals from a prevailing party. No issue preclusion, judicial estoppel, or prosecution history disclaimer would prevent SkyHawke from arguing its preferred claim construction before the district court or appealing an unfavorable outcome in the future.
(1 to 4 stars rate impact of opinion on patent & trademark law)

ATTORNEY FEE SHIFTING IN PATENT SUITS IN U.S. DISTRICT COURTS: QUARTERLY REPORT

During the second quarter of 2016 (April 1- June 30), 27 motions for attorney fees were decided in the U.S. District Courts. Patent owners filed 9 (33%) of the motions and accused infringers filed 18 (67%). A breakdown of motions granted and denied is below.
Motions Granted — 8 (30%)

• Patent Owner – 4
• Accused Infringer – 4

Motions Denied — 19 (70%)

• Patent owner – 5
• Accused infringer – 14

A full list of opinions is available on the IPO website.

VOLUNTEERS NEEDED FOR GIRL SCOUT IP PATCH EVENT IN DALLAS

IPO’s Women in IP Committee and the IPO Education Foundation are seeking small teams of volunteer attorneys from corporations and law firms in the Dallas, Texas area to talk with area Girl Scouts, ages 12-14, about how IP is important to their employers. Each team will host a table during the event, and scouts will have the opportunity to visit each table to learn about the various interactions between innovation and IP. The event will be held at the USPTO from 9:00a.m to12:00p.m. on Saturday, 30 July. If interested in volunteering, please contact Women in IP Committee Vice Chair Priya Prasad.

IP IN MASS MEDIA

Photographer Sues B.B. King’s Estate for Copyright Infringement

Last week Yahoo! Finance reported that New York photographer GLEN CRAIG sued the estate of B.B. KING and Universal Music Group for copyright infringement, claiming his photographs of King have been used on the musician’s albums for over 40 years without permission.

Trademark Suit against Kanye West and Damon Dash Dismissed

Last Thursday The Fashion Law blog reported that a federal court in New York dismissed a trademark suit against musicians KANYE WEST and DAMON DASH filed by Latin musician MICHAEL MEDINA. Medina claimed the pair’s 2015 film “Loisaidas” infringes his band’s registered trademarks for the term, which is Spanish slang for inhabitants of New York’s Lower East Side.

HOT TOPICS IN U.S. COPYRIGHT LAW COVERED AT IPO ANNUAL MEETING

Attend the IPO Annual Meeting to hear more about the past year’s most consequential copyright decisions, from the happy birthday song to a dancing baby, and how those decisions affect your business. Moderated by ANNE NAFFZIGER (Leydig, Voit & Mayer, Ltd.), panelists include: KAREN WILLIAMS (SAP SE), Prof. KEVIN PARKS (John Marshall Law School), and DAVID LEICHTMAN (Robins Kaplan LLP). The IPO Annual Meeting will take place 11-13 September in New York, New York.