Intellectual Property Owners Association

Serving the Global Intellectual Property Community

Past Week’s Daily News™

Friday, November 21, 2014 2:09 pm

Federal Circuit Summaries Logo* * * STAY GRANTED IN PATENT INFRINGEMENT SUIT PENDING COVERED BUSINESS METHOD REVIEW IN USPTO

Versata Software, Inc. v. Callidus Software, Inc. 14-1468 — Yesterday in an opinion by Judge CHEN, the Federal Circuit overturned a district court’s denial of Callidus’s stay motion. Versata’s patents claimed methods and systems for processing sales transaction data, managing distributor relationships, and validating distributor credentials. Callidus filed petitions for Covered Business Method (CBM) reviews. The Patent Trial and Appeal Board instituted the CBM reviews, “finding each challenged claim more likely than not directed to unpatentable subject matter under §101.” Callidus filed a motion to stay the infringement suit.

The Federal Circuit decided the four AIA section 18(b) factors strongly favored a stay pending CBM review. (1) The proper simplification of the issues analysis would consider “what would be resolved by CBM review versus what would remain.” (2) The relevant time to measure the stage of litigation was when the motion was filed. (3) Callidus had no tactical advantage in asserting claims against Versata because Callidus was seeking to stay the entire case. (4) Whether a stay would reduce litigation burden “focuses prospectively on the impact of the stay on the litigation, not on the past actions of the parties.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO EXPECTS TO OBTAIN FULL ACCESS TO SPEND HIGHER 2014 FEE COLLECTIONS

During yesterday’s Patent Public Advisory Committee meeting, Chief Financial Officer TONY SCARDINO reported that USPTO fee collections for fiscal year 2014 exceeded the $3.024 billion appropriated by Congress. The excess fees, totaling $148.2 million, were deposited in the AIA-created Patent and Trademark Fee Reserve Fund. The USPTO has submitted a request to transfer the funds to the USPTO’s “Salaries and Expenses” account. He said the agency expected the funds to be transferred soon. He also reported that patent application filings rose at a lower-than-projected 2.8 percent in fiscal 2014.

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Photo provided by Knobbe,
Martens, Olson & Bear, LLP

GIRL SCOUTS EARN IP PATCH AT KNOBBE MARTENS

IPO member firm Knobbe Martens recently hosted Brownie Girl Scout Troop 3371 in the firm’s Newport, CA office and helped the girls earn the IP Patch. The troop participated in a scavenger hunt through the firm’s law library and learned about patents, trademarks, and copyrights related to American Girl dolls, Legos, and the McDonalds symbol. Knobbe partner and troop member mom Christy Lea said, “…the new IP Patch is groundbreaking…If we can get girls interested at the Brownie age, we can ensure a successful group of new IP and STEM professionals in the future.”

For the full story on the Troop 3371’s experience with the patch, click here. For information on the IPO Education Foundation’s Girl Scout IP Patch and how you can get involved, click here.

EU COURT OF JUSTICE ADVOCATE GENERAL ISSUES ADVISORY OPINION IN STANDARD ESSENTIAL PATENT CASE

Yesterday the Court of Justice of the European Union announced an advisory opinion of Advocate General MELCHIOR WATHELET in Huawei Technologies Co. Ltd v. ZTE Corp. According to a court press release, Wathelet said “the proprietor of a standard-essential patent may be required, before seeking an injunction against a company that has infringed that patent, to make that company a specific licensing offer.” The opinion is not binding on the court; judges are deliberating on the case.

ARTICLE ON IPO WEBSITE ON DESIGN PATENTS BY DURKIN AND GAJEWSKI

The IPO Law Journal contains a newly-posted article entitled “PUBLISH AND PERISH: Early publication of design patent applications would give copyists the edge” by TRACY DURKIN and DANIEL GAJEWSKI. The authors argue that U.S. design patent applications should not be published before grant. To view the IPO Law Journal, click here. You can view full submission guidelines at www.ipo.org/submitarticle. Authors must be IPO members.

IP IN THE MASS MEDIA

DC Comics Sues Soccer Team for Infringement of Batman Logo

Yesterday EuroSport.com reported that DC Comics sued Valencia Football Club for infringing DC Comics’ trademark on the “Batman” logo.

IPO COMMITTEES A GREAT EDUCATIONAL RESOURCE

Not only are IPO committees great for networking but they are a great educational resource for novice and experienced professionals alike. Many IPO committees have informational meetings with the USPTO and other government agencies as well as informal committee meetings. These meetings are a great opportunity to pick up some best practices from leaders in the IP community. Click here for a list of IPO committees and information on activities. Click here to join a committee.

CORRECTION

U.S. House of Representatives Oversight and Government Reform Committee Chairman DARRELL ISSA (Calif.), whose committee hearing on the USPTO telework program was reported in Wednesday’s IPO Daily News, is a Republican.




Thursday, November 20, 2014 1:44 pm

Federal Circuit Summaries Logo* * * PATENT OWNER NOT ESTOPPED FROM SEEKING DIFFERENT CLAIM CONSTRUCTION FOR UNRELATED PATENT

e.Digital Corp. v. Futurewei Technologies, Inc. 14-1019 — Yesterday in an opinion by Judge MOORE, the Federal Circuit overturned a California district court decision that e.Digital was collaterally estopped from seeking a particular claim construction. e.Digital’s patents (the ’774 and ’108) claimed a flash memory recording device. In a separate suit, a Colorado district court construed the ’774 claims as requiring “only flash memory.” The ’774 patent was subsequently reexamined. In the present suit, the California court adopted the Colorado court’s construction for both the ’774 and ’108 claims, reasoning the patents were “closely related.”

The Federal Circuit held the ’108 patent “presents . . . a separate claim construction issue.” While the ’108 patent disclosed “a purported improvement to the ’774 patent” and incorporated it by reference as prior art, the two patents were otherwise unrelated. “The ’108 patent discloses a separate invention, includes a distinct prosecution history, and is supported by a different written description.” Collateral estoppel was correctly applied to the ’774 patent, however, because the reexamination “in no way modifies, clarifies or even informs the construction of the sole memory limitation.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO PATENT ADVISORY COMMITTEE MEETS TODAY

The Patent Public Advisory Committee (PPAC) meets today from 9:00a.m. – 2:15p.m. ET in the Madison South Ballroom at the USPTO’s Alexandria campus. Topics for discussion include quality initiatives and a Patent Act section 101 update. IPO committee vice chair SAM HELFGOTT, expressing his personal views, will give a luncheon speech titled “International Patent Activities – A User Perspective.” IPO members can attend the public session or watch online. Click here for the agenda and a link to the webcast.

IP Chat Channel LogoTODAY ON IPO’S IP CHAT CHANNEL: NEGOTIATING NDAs BETWEEN CUSTOMERS AND SUPPLIERS

Tune in to the IP Chat Channel, Thursday, November 20 at 2:00p.m. ET to discuss Negotiating NDAs Between Customers and Suppliers. Panelists include DANIEL LANCILOTI, Freeborn & Peters LLP; CHERYL TUBACH, J.M. Huber Corporation; and DAVID WEIRICH, Procter & Gamble Co. 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

Gin Maker Will Not Seek Renewal of Geographic Indication Protection

Yesterday the Wall Street Journal’s “Regulation” blog reported that Pernod Richard SA, maker of Plymouth Gin, will not apply to renew the spirit’s Protected Geographic Indication status in the EU, but will protect the name “Plymouth Gin” through enforcement of its trademark.

Music Rights Group Voices Opposition to YouTube’s MusicKey

Yesterday Billboard reported that Global Music Rights, a venture started by music industry leader IRVING AZOFF, accused YouTube’s MusicKey of not obtaining proper licenses to broadcast more than 20,000 songs. A lawsuit has not been filed.

ONLY ONE SPONSORSHIP OPPORTUNITY LEFT FOR THE 2014 IP VIDEO CONTEST

All but one award has been sponsored in support of the IPO Education Foundation’s mission to reach young adults about the importance of the U.S. patent system. Could you or your organization support this valuable public awareness program? Contest winners in multiple age categories will receive $5,000 in cash prizes and scholarships. In addition to recognition as an award sponsor on the video contest website and in Foundation publications, sponsors will receive four complimentary tickets to the Foundation Awards Dinner. Special thanks to Microsoft Corp., Intellectual Ventures, LLC, and Sterne, Kessler, Goldstein & Fox for their generous support of IP Education! For more information about the contest, visit www.ipvideocontest.com. For information about how to sponsor an award, please contact Colleen Wellington-Caban at cwellington-caban@ipo.org or 202-507-4500.

IPO MEMBERS INVITED TO VISIT IPO OFFICE IN WASHINGTON, DC

All IPO members are cordially invited to visit the IPO office, which is centrally located in Washington, D.C. near the White House and the Court of Appeals for the Federal Circuit. The IPO staff will be happy to make an appointment to brief you on current activities. To schedule a visit, call (202) 507-4500.




Wednesday, November 19, 2014 1:26 pm

WITNESSES DISCUSS USPTO TELEWORK PROGRAM

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Rep. Darrell Issa

Yesterday the House Judiciary and Oversight Committees held a hearing on the USPTO employee telework program. Oversight Committee Chairman DARRELL ISSA (R-Calif.) and other members criticized USPTO management for poor oversight of the program, which was the subject of a Washington Post report on an investigation into alleged abuses.

Rep. FRANK WOLF (R-Va.) said that the allegations should be addressed, but studies showed that telework increased overall productivity. He said the USPTO had asked the National Academy of Public Administration to review the program and urged that its recommendations be followed. Commissioner for Patents MARGARET FOCARINO said management had immediately addressed the allegations, including disciplinary action. The agency had implemented recommendations for improvements in a report to Commerce Inspector General TODD ZINSER, along with other measures. Zinser said a number of factors put the USPTO at risk for abuse, including valuing production results over time and attendance accountability. However, he did not believe abuse had become systemic. ROBERT BUDENS, President of the Patent Office Professional Association, said the best way to measure productivity was by clear, objective performance goals. He said FY2014 was the USPTO’s most productive year to date.

Patent Public Advisory Committee Vice Chair ESTHER KEPPLINGER said the types of abuse alleged existed prior to telework. She agreed it was improbable that abuse was widespread, because the agency continued to reduce the backlog and pendency and internal data and surveys of applicants showed that patent quality was improving. WILLIAM SMITH (BakerHostetler) recommended changing productivity metrics to incentivize examining an application to allowance or abandonment rather than final rejection and requiring examiners to account for specific activities performed. He suggested that examiners new to telework be required to be within commuting distance of a USPTO office.

Witnesses agreed that despite the allegations, the telework program was an asset in terms of recruiting and retaining employees. Witness statements are available on the Judiciary Committee website.

IPO EDUCATION FOUNDATION AWARDS DINNER WILL BE DECEMBER 9

Join the IPO Education Foundation for the 2014 Foundation Awards Dinner on December 9 at the Smithsonian National Portrait Gallery in Washington, DC. The Foundation will honor DR. HUGH HERR with the Inventor of the Year Award and HON. RICHARD LINN with the Distinguished IP Professional Award. Also honored will be the winners of the 2014 IP Video Contest and the winners of the IPO Foundation grant to the Conrad Foundation Spirit of Innovation Challenge. For more information and to register for the dinner, click here.

EU COURT OF JUSTICE ADVOCATE GENERAL RECOMMENDS DISMISSING SPAIN’S CHALLENGES TO UNITARY PATENT REGULATIONS

Yesterday the Court of Justice of the European Union announced advisory opinions of the Advocate General in two challenges by Spain to regulations related to implementing enhanced cooperation in establishing the EU Unitary Patent. Spain had challenged regulations on the creation of unitary patent protection and the regulation governing translations. In both cases, Advocate General YVES BOT proposed that the Court dismiss Spain’s actions. “The principle of sincere cooperation,” said the court’s press release, “requires the participating Member States to take all appropriate measures to implement enhanced cooperation.” The press release noted that limiting the number of languages for the European patent is necessary to avoid excessive costs. Both opinions are advisory; judges are deliberating both cases.

IP IN THE MASS MEDIA

Apple Liable for Patent Infringement

On Monday a jury found that Apple Inc. infringed Mobile Communications Technologies LLC’s patents on messaging technology originally created for pagers. The jury returned a $23.6 million verdict for MTel. (Bloomberg)

Australian University Fines Students for Copyright Infringement

Yesterday the Brisbane Times reported that the University of New South Wales has begun a policy of fining students who download infringing content through the university’s Wi-Fi network.

IPO ADVOCATES FOR YOU

On behalf of its members, IPO advocates reforms to provide cost-effective and reliable intellectual property programs. IPO positions are communicated to Congress, the U.S. Patent and Trademark Office, the U.S. Copyright Office, the U.S. Trade Representative and other administrative agencies. IPO also files amicus briefs in select cases of interest to a broad cross-section of IPO membership in order to influence government IP policy for the benefit of members. For more information about all of these activities, explore the Advocacy section of the IPO website. For more information about IPO’s government relations programs, email Samantha Aguayo at samantha@ipo.org.




Tuesday, November 18, 2014 1:21 pm

Federal Circuit Summaries Logo* * REISSUE CLAIMS INVALID FOR FAILING TO COMPLY WITH “ORIGINAL PATENT” REQUIREMENT

Antares Pharma, Inc. v. Medac Pharma Inc. 14-1648 — Yesterday in an opinion by Judge DYK, the Federal Circuit upheld a district court’s denial of Antares’s preliminary injunction motion. Antares’s original patent claimed a jet injection system for medication. Antares sought a reissue for the patent under Patent Act section 251 and added claims including certain safety features that were not restricted to jet injection. Medac argued the asserted reissue claims violated the recapture rule by claiming scope surrendered during prosecution of the original patent. Antares argued the recapture rule did not apply to “overlooked aspects” of the invention.

The Federal Circuit held the reissue claims were invalid for failing to comply with the “original patent” requirement of section 251. The original claims were “significantly different in scope and coverage” from the asserted reissue claims. The specification did not disclose “in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection system.” The court did not reach the question of whether the recapture rule applied.
(1 to 4 stars rate impact of opinion on patent & trademark law)

U.S. HOUSE OF REPRESENTATIVES TO HOLD HEARING TODAY ON ALLEGED USPTO TELEWORK ABUSES

Today the U.S. House Judiciary and Oversight Committees will hold a joint hearing on the USPTO employee telework program. The title of the hearing is “Abuse of the USPTO Teleworking Program: Ensuring Oversight, Accountability, and Quality.” Witnesses are Rep. FRANK WOLF (R-Va.); MARGARET FOCARINO, USPTO; TODD ZINSER, U.S. Department of Commerce; ROBERT BUDENS, Patent Office Professional Association; ESTHER KEPPLINGER, Wilson Sonsini Goodrich & Rosati; and WILLIAM SMITH, BakerHostetler. Smith is a vice chair of IPO’s U.S. Patent Office Practice Committee, but he is speaking for himself, not IPO or his law firm. Witnesses’ written testimony is posted on the committee website. The hearing will be held in Room 2141 Rayburn at 1:30p.m. ET. It will likely be webcast.

IPO SEEKS CHAIRS AND VICE CHAIRS FOR 2015 COMMITTEES

IPO is seeking nominations to fill leadership positions in its Standing IP Committees in 2015. Corporate members are eligible for committee chair positions and law firm and other members are eligible for vice chair positions. Preference will be given to members who have been active on IPO committees in the past. Click here for a listing of 2014 IPO committees; the 2015 list is expected to be similar. If you are interested in a leadership position, email your resume and a short bio to Laura Minniear at lminniear@ipo.org and indicate one or two committees that interest you by Monday, December 1.

IPO COMMITTEE CALLS THIS WEEK:

Tuesday, November 18

International Patent Law and Practice Committee – 9:00a.m. ET
Patent Search Committee – 11:00a.m. ET
Software and Business Methods Committee – 2:00p.m. ET

Wednesday, November 19,

Standards Setting Committee – 1:30p.m. ET
Litigation Committee – 2:00p.m. ET

Thursday, November 20,

European Practice Committee – 11:00a.m. ET
Corporate IP Management Committee – 12:00n.n. ET
Open Source Committee – 1:00p.m. ET
Industrial Designs Committee – 4:00p.m. ET

To join one of IPO’s 29 Standing IP Committees, visit www.ipo.org/committeesignup.

IP IN THE MASS MEDIA

Domain Name Registrar Liable for Copyright Infringement

On Sunday the Washington Post’s “The Volokh Conspiracy” blog reported on a recent German court ruling that found domain name registrar Key Systems liable for copyright infringement on one of its registered sites, H33t. Author DAVID POST expressed concern about potential ramifications for other registrars.

Judge Dismisses Sirius’s Motion to Dismiss Copyright Case

On Friday a Manhattan judge rejected Sirius XM’s motion for summary judgment in a case brought against it by The Turtles. The band sued the radio network for copyright infringement for broadcasting music recorded before 1972 without paying royalties. (New York Times)

U.S. Defense Department Announces Long Range R&D Program

On Saturday U.S. Secretary of Defense CHUCK HAGEL announced a strategy of innovation to thwart threats to U.S. military superiority. He is launching a long range R&D program to find and field breakthroughs in key technologies. (Washington Post)

NETWORK WITH IPO MEMBERS

The IPO website features a members-only section called IPO Connect that allows IPO members to network with other members. You can send messages through the site and create a list of contacts. You can access your profile and start networking at http://connect.ipo.org!




Monday, November 17, 2014 1:30 pm

Federal Circuit Summaries Logo* * * * PROCESS FOR PROVIDING COPYRIGHTED WORKS OVER THE INTERNET IN EXCHANGE FOR VIEWING ADVERTISING NOT PATENT-ELIGIBLE UNDER SUPREME COURT’S ALICE DECISION

Ultramercial, Inc. v. Hulu, LLC 10-1544 — On Friday in an opinion by Judge LOURIE, the Federal Circuit upheld a district court’s dismissal of Ultramercial’s infringement suit for failing to claim patent-eligible subject matter. Ultramercial claimed a method of providing copyrighted works over the Internet free in exchange for viewing advertising. In decisions pre-dating Alice Corp. v. CLS Bank Int’l, the Federal Circuit had held the claims patent-eligible. The Supreme Court remanded for consideration in light of its opinion in Alice Corp.

Under the Alice framework, the claims were directed to an abstract idea “devoid of a concrete or tangible application.” Despite eleven specific steps, the claims added no meaningful limitations to convert that abstract idea into patent-eligible subject matter. “Instead the claimed sequence of steps comprises only ‘conventional steps, specified at a high level of generality,’ which is insufficient to supply an ‘inventive concept.’” The invocation of the Internet added no inventive concept. The court said the “machine-or-transformation” test can provide a useful clue as to the second step of the Alice framework, but the claims were not tied to a novel machine and did not transform an article to a different state or thing.

Judge MAYER, concurring, argued subject matter was a “threshold question,” there was no “presumption of eligibility” under Patent Act section 101, and Alice Corp. in effect set out a “technological arts” test.
(1 to 4 stars rate impact of opinion on patent & trademark law)

SOERENSEN GARCIA JOINS IPO

Soerensen Garcia Advogados of Rio De Janeiro, Brazil (primary contact MARIO SOERENSEN GARCIA) has become a law firm member of IPO.

IP Chat Channel LogoTHIS WEEK ON IPO’S IP CHAT CHANNEL: NEGOTIATING NDAs BETWEEN CUSTOMERS AND SUPPLIERS

Tune in to the IP Chat Channel, Thursday, November 20 at 2:00p.m. ET to discuss Negotiating NDAs Between Customers and Suppliers. This webinar will explore the constant tug-of-war between customers and suppliers regarding confidential information, and give advice on how to best negotiate such conflicts. A manufacturer might require a supplier to not use any knowledge gained from the relationship in dealings with any other party. But what if the customer is turning to the supplier to solve a technical problem that it couldn’t solve on its own? Then a non-disclosure agreement (NDA) may start looking like an IP development agreement. The supplier may be unwilling to give up all IP rights to the solution or will demand that any NDA be two-way. Our panelists are DANIEL LANCILOTI, Freeborn & Peters LLP; CHERYL TUBACH, J.M. Huber Corporation; and DAVID WEIRICH, Procter & Gamble Co. They will explore the customer and supplier positions, hold a mock negotiation to identify specific terms that may need to negotiated, and offer possibilities for compromise. They will also lay out best practices for receiving confidential information from customers and suppliers to minimize the risk of charges of trade secret theft. 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

Senators Predict Patent Reform in 2015

On Friday the Washington Post’s “Law Blog” reported that Senate Minority Whip JOHN CORNYN (R-Texas) and Senator CHUCK SCHUMER (D-N.Y.) predict passage of a patent reform bill in 2015. The blog speculated that the bill will be based on the so-called “Cornyn-Schumer compromise” draft that was negotiated last spring.

Professor Calls on Congress to Intervene in Wake of Myriad and Mayo

On Friday The Hill’s “Congress Blog” featured a post by Professor CHRISTOPHER HOLMAN arguing that the Supreme Court’s Mayo and Myriad opinions disincentivize R&D by pharmaceutical companies. Holman said this will hurt the economy and deprive patients of much needed drugs; he called on Congress to intervene.

Ski Resort, Tourism Bureau Settle Trademark Case

On Friday the Denver Post reported that Steamboat ski resort in Steamboat Springs, Colorado settled a trademark infringement case it brought against Salt Lake City, Utah’s tourism bureau. The resort claimed the bureau’s “Ski City USA” advertisements infringed its trademark on “Ski Town USA.”

STUDENT WINNERS OF IPO FOUNDATION GRANT WORK TO CLEAN UP OIL SPILLS

IPO Education Foundation recently awarded a $5,000 grant to WENTAO ZHANG, JORDAN CHO, and KALEB KANG, winners of the Conrad Foundation Spirit of Innovation Challenge Energy and Environment Division. According to the Conrad Foundation the team’s invention, “…is a super-absorbent and reusable oil sponge for ocean oil spill remediation, which claims a 10X advantage in absorbency over existing products with unprecedented recovery and reusability.” The IPOEF grant will be used to help the team obtain a patent on their invention.

Team WaSOR will be recognized at the Foundation Awards Dinner on December 9. The dinner will be held at the Smithsonian American Art Museum and National Portrait Gallery in Washington, DC. For more information or to RSVP, click here.