Past Week’s Daily News™
Thursday, 8 December, 2016 1:44 pm
IPO BOARD ADOPTS RESOLUTIONS ON CANADIAN PATENT DAMAGES AND AMENDING RULE 4 OF THE FEDERAL RULES OF CIVIL PROCEDURE
In a meeting on Tuesday in Washington, D.C., the IPO Board of Directors adopted a resolution supporting the position that any section 8 damages awarded pursuant to a proceeding under the Canadian Patented Medicines (Notice of Compliance) Regulations (“PMNOC Proceeding”) must be based on damages proven to have actually been suffered by each generic claimant, and that a patentee’s total liability for all generic claimants’ lost profits under section 8 for a given product may not exceed the profits collectively lost on account of PMNOC Proceedings. As such, the unit sales upon which the PMNOC lost profits calculations are based may not collectively exceed 100% of the incremental units of generic product that the generic claimants would have sold had the patentee not brought the PMNOC Proceedings.
The Board also adopted a resolution supporting, in principle, that Rule 4 of the Federal Rules of Civil Procedure be amended to allow for service of process by e-mail, without a court order, in cases involving commercial activity conducted using a domain name that is registered to a fictitious party.
The text of all resolutions is available on the IPO website.
TODAY ON IPO’S IP CHAT CHANNEL: BRI IN PATENT PROSECUTION
Tune in to the IP Chat Channel today, 8 December, at 1:00p.m. ET to explore BRI in Patent Prosecution. Our panel includes JOSEPH WEISS (USPTO), CHARLES BIENEMAN (Bejin Bieneman PLC), and SAMEER GOKHALE (Oblon). IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.
IP IN THE MASS MEDIA
Pebble Smartwatch Maker Sells IP to Fitbit
Yesterday the Los Angeles Times reported that Pebble Technology Corp., one of the first companies to develop and manufacture smartwatches, will shut down and sell its software and firmware development intellectual property to Fitbit Inc. The San Francisco-based Fitbit also plans to hire several of Pebble’s key personnel.
US PTAB to Hear Arguments in Gene-Editing Patent Dispute
On Monday NPR reported that U.S. Patent Trial and Appeal Board judges will hear arguments this week in the dispute between researchers at the University of California, Berkley and the Broad Institute at MIT on the validity of patents on CRISPR-cas9 gene-editing technology.
Wednesday, 7 December, 2016 2:28 pm
* * * * U.S. SUPREME COURT RULES THAT “ARTICLE OF MANUFACTURE” UNDER PATENT ACT SECTION 289 CAN ENCOMPASS COMPONENT OF A PRODUCT
Samsung Electronics Co. v. Apple Inc. 15-777 — Yesterday in a unanimous opinion, the U.S. Supreme Court overturned a Federal Circuit decision against Samsung for design and utility patent infringement and associated damages. Apple’s design patents claimed certain design elements in Apple’s iPhone including the front face and ornamental design for the display screen. Apple was awarded $399 million based on Samsung’s entire profits on its infringing smartphones. Samsung argued that damages should have been limited to the profit attributed to the infringement. The Federal Circuit said Patent Act section 289 “explicitly authorizes the award of total profit from the article of manufacture bearing the patented design.”
The Supreme Court held that the Federal Circuit’s approach was inconsistent with section 289. The scope of the term “article of manufacture” under section 289 “encompasses both a product sold to a consumer and a component of that product.” The court declined to resolve whether the relevant article of manufacture for each of Apple’s design patents was the smartphone or a particular smartphone component and remanded for further proceedings on this issue.
(1 to 4 stars rate impact of opinion on patent & trademark law)
U.S. SUPREME COURT HEARS CASE ASKING WHETHER SUPPLYING COMPONENT OF PATENTED INVENTION THAT SUPPLIER’S SUBSIDIARY COMBINED OVERSEAS WAS INDUCEMENT TO INFRINGE
Yesterday the U.S. Supreme Court heard oral arguments in Promega Corp. v. Life Technologies Corp. 14-1538. At issue was whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under Patent Act section 271(f)(1), exposing the manufacturer to liability for all worldwide sales. Promega’s patent claimed a process for examining polymorphism in DNA samples. In a facility overseas, LifeTech’s subsidiary produced genetic testing kits that included one component manufactured by LifeTech in the U.S. The district court found LifeTech could not be liable for inducement to infringe because section 271(f)(1) required “the involvement of another.” A split Federal Circuit held no third party was required in order “to actively induce the combination” of components outside the U.S. The statute and legislative history focused on “the would-be infringer’s action of supplying components overseas.” IPO filed an amicus brief arguing that supplying a single component of an invention can qualify as inducement under section 271(f)(1).
INVENTORS OF LIFE-SAVING CANCER DRUGS, SETH WAXMAN, AND IP VIDEO CONTEST WINNERS HONORED AT 2016 FOUNDATION AWARDS DINNER
Last night the IPO Education Foundation (IPOEF) held its best attended annual Foundation Awards Dinner to date at the National Building Museum in Washington, D.C. IPOEF presented the Inventor of the Year award to multiple inventors of six life-saving cancer treatments and the Distinguished IP Professional Award to SETH WAXMAN of Wilmer Cutler Pickering Hale & Dorr.
Former USPTO Director DAVID KAPPOS introduced the 2016 Inventors of the Year, noting that just a few years ago the prospect of curing cancer seemed impossible. Kappos said the inventors being honored have brought us closer than ever to that goal.
The following inventors accepted the awards on behalf of their teams:
• ROBERT COFFIN for Amgen’s IMLYGIC®
• PETER KUFER for Amgen’s BLINCYTO®
• ALAN KORMAN for Bristol-Myers Squibb’s YERVOY® and OPDIVO®
• YAN WU for Genentech’s TECENTRIQ®
• GREGORY CARVEN for Merck & Co.’s KEYTRUDA ®
Dr. Carven recalled how a previously terminal cancer patient who had been saved by KEYTRUDA® searched for and found him just to call thank him. Dr. Coffin commented that “without strong patents, we would not have been able to get anywhere at all.” All of the recipients expressed thanks to IPOEF for the recognition of their work.
Mr. Waxman—a storied litigator and the 41st Solicitor General of the United States, who has argued some of the most important IP cases at the U.S. Supreme Court—was introduced by PHIL JOHNSON of Johnson & Johnson as “the premier Supreme Court advocate.” In his acceptance speech, Mr. Waxman said he was especially honored to receive the award from IPOEF and commended IPO’s commitment to advocating positions to foster a strong IP system for all stakeholders
IP IN THE MASS MEDIA
Netherlands Court Invalidates “P@rsche” Mark
Yesterday The Fashion Law blog reported that the District Court in The Hague, The Netherlands invalidated the registered trademark “P@rsche” after the German automaker Porsche filed a suit claiming the “P@rshe” mark was confusingly similar to its “Porsche” marks.
Wall Street Journal Writes on Innovation
Yesterday the Wall Street Journal published an article titled “The Economy’s Big Problem: We’re Out of Big Ideas,” discussing the “innovation drought” it says has caused stagnation in productivity growth in the United States and exploring barriers to innovation.
IP VIDEO CONTEST WINNERS MEET MEMBERS OF CONGRESS, HONORED AT 2016 FOUNDATION AWARDS DINNER
The winners of the IPO Education Foundation’s 2016 IP Video Contest were honored and their videos played for the attendees during last night’s Foundation Awards Dinner. Earlier in the day, IPOEF arranged meetings with the winners’ members of Congress, where they talked about their videos. The winners are:
13-15 years old category:
19 years and over category:
• ONJONET WILLIAMS, Bear, Delaware
All of the winning videos are available on the IPOEF IP Video Contest page.
Tuesday, 6 December, 2016 1:41 pm
IP IN THE MASS MEDIA
Iceland Seeks to Invalidate Supermarket Chain’s “Iceland” Mark
On Friday BBC News reported that following failed negotiations, the country of Iceland will seek to invalidate the European trademark registration for “Iceland” held by supermarket chain Iceland Foods. Iceland claims the mark prevents the nation’s firms from describing their products as Icelandic.
THIS WEEK ON IPO’S IP CHAT CHANNEL: TWO-WEBINAR SERIES ON BRI IN PATENT PROSECUTION AND CLAIM DRAFTING
Tune in to the IP Chat Channel on Thursday, 8 December, at 1:00p.m. ET and Friday, 9 December, at 1:00p.m. ET for a two-webinar series on BRI in Patent Prosecution and BRI in Claim Drafting. The panelists on the December 8 program, BRI in Patent Prosecution, are USPTO expert JOSEPH WEISS and two patent prosecutors, CHARLES BEINEMAN (Bejin Beineman PLC) and SAMEER GOKHALE (Oblon). Relying on several PTAB and BPAI of ex parte appeal decisions, they will discuss practice tips for finessing the issues posed by BRI for patent prosecutors, such as balancing the desire to win a broad claim construction from the USPTO (to preserve future enforceability) with the need to tighten the scope (to avoid the prior art). They also will discuss how to make sure an issued patent is not caught unexpectedly in the future by Section 112(f) and how to make the best of an existing application in which the specification is lacking without a loss of priority date.
The panelists on the 9 December program, BRI and Claim Drafting, are USPTO’s Weiss and patent prosecutors AMIR PENN (Brinks Gilson & Lione) and JOHN PHILLIPS (Fish & Richardson). They will consider in-depth claiming options for a series of hypothetical inventions and accompanying prior art. They will also discuss techniques such as using a figure in the application to overcome prior art and “incorporating by reference.” IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.
Monday, 5 December, 2016 2:25 pm
U.S. SUPREME COURT TO CONSIDER EXHAUSTION UNDER PATENT ACT
On Friday the U.S. Supreme Court agreed to review Impression Products, Inc. v. Lexmark International, Inc. (15-1189). Lexmark’s patent claimed toner cartridges for printers, which Lexmark sold with restrictions as refillable or single-use. Lexmark alleged that Impression sold remanufactured cartridges in the U.S. that had originally been sold outside of the U.S. In a 99-page opinion, a split Federal Circuit sitting en banc held that Lexmark did not exhaust its rights regarding the sales with restrictions in the U.S. or the foreign sales.
The Supreme Court will address two questions. The first is whether a “conditional sale” that transfers title to the patented item, but specifies post-sale restrictions, avoids application of the patent-exhaustion doctrine, thereby permitting enforcement of the restrictions through an infringement suit. The second question asks whether the common-law doctrine barring restraints on alienation “makes no geographical distinctions” such that an authorized sale of a patented article outside the United States exhausts the U.S. patent rights. IPO’s Amicus Committee will be studying the case.
ROBERT COFFIN: INVENTOR, IMLYGIC®
Dr. ROBERT COFFIN, inventor of Amgen’s IMLYGIC®, will be one of several inventors honored as the 2016 Inventor of the Year. Dr. Coffin’s company, BioVex, which was acquired by Amgen in 2011, found a way to “develop new and better oncolytic viruses”–viruses that can replicate selectively in tumors, thereby killing the tumors. The combination of that technology with technology that activates the immune system against the tumor at the same time led to the development of IMLYGIC®, an “oncolytic immunotherapy.” In this latest Innovator Insights interview, Dr. Coffin explains the exciting technology behind IMLYGIC® and how combining it with other existing immunotherapies could hold promising possibilities for the future of cancer treatment.
IPO COMMENTS ON CHINESE PATENT LAW EXAMINATION GUIDELINES
Last week IPO Director MARK LAUROESCH sent a letter to China’s State Intellectual Property Office commenting on draft amendments to the patent examination guidelines. IPO applauded the draft guidelines for addressing user concerns that have been expressed over the years, including amendments during invalidation actions, submission of post filing data to support patents claiming pharmaceutical compounds, and business method patents. The letter praised, in particular, the requirement for examiners to examine an applicant’s post-filing experimental data and asked for further clarification on two issues. IPO also requested examples demonstrating acceptable and non-acceptable post-filing experimental data. IPO’s Asian Practice Committee, and in particular SAM LI (Wan Hui Da Law Firm), KURTIS MACFERRIN (Google), and LARRY WELCH (Eli Lilly), assisted with the comments.
IPOEF, WOMEN IN IP LAW COMMITTEE HOST SUCCESSFUL GIRL SCOUT EVENT IN DENVER
On Saturday IPO Education Foundation and IPO’s Women in IP Law Committee hosted 30 Junior Girl Scouts at the USPTO’s Rocky Mountain office in Denver, Colorado for a half-day workshop to earn the IP Patch. Through a series of hands-on activities and presentations, Girl Scouts explored the many ways inventors solve problems and use IP to protect their ideas and creations. They talked with representatives from leading law firms and corporations about how IP is used by companies.
IPOEF thanks the Women in IP Law Committee as well as our sponsor, Google, and volunteers from Gordon Rees Scully Mansukhani, LLP, HP Inc., Medtronic, Merchant & Gould, Microsoft Corp., Rocky Mountain Patent, Sheridan Ross P.C., Trimble Navigation, and the USPTO for their support of this exciting program!
IP IN THE MASS MEDIA
KEYS TO EDISON’S LAB SELL AT AUCTION
On Saturday Heritage Auctions sold several items of THOMAS EDISON memorabilia at auction in Dallas, including keys to his lab in Menlo Park, New Jersey and several lightbulbs invented by him and competitors. (Dailymail.com)
CBS Sues YouTube Channel on Andy Griffith Episodes
Last week CBS sued EDWARD HELDMAN III, founder of the YouTube channel 8thManDVD.com, for copyright infringement, claiming that the channel posted 16 episodes of its 1960’s series The Andy Griffith Show on the video-sharing site without permission. (Hollywood Reporter)
Friday, 2 December, 2016 1:34 pm
CORPORATE IP MANAGEMENT COMMITTEE PUBLISHES PHASE 1 OF “BEST PRACTICES” GUIDE
This week IPO’s Corporate IP Management Committee published information it gathered from 20 interviews with IPO member companies regarding corporate practices for managing intellectual property. Topics such as IP Management Organizational Structures, Development of IP Strategy, Patent Prosecution, IP Management Software, Metrics, Licensing-Out, Licensing-In and IP-Related Education for Corporate Employees are covered in this online indexed summary. In 2017, the committee will pursue identifying corporate IP management best practices by industry. If you would like your company to participate in this ongoing project, please reach out to committee member SCOTT WEINGUST at firstname.lastname@example.org. To join the Corporate IP Management Committee, click here.
IP IN THE MASS MEDIA
Porsche Sued on “Jungle” Knockoff
Yesterday The Fashion Law blog reported that Song Music Publishing LLC sued Porsche for copyright infringement, claiming the automaker used a knockoff of American indie rock band X Ambassadors’ hit song “Jungle” in its commercial for the 718 Cayman to avoid paying royalties.
KAIST Sues Samsung on Semiconductor Technology Patent
On Wednesday the Korea Times reported that the U.S. Branch of Korea Advanced Institute of Science and Technology (KAIST) sued Samsung Electronics, Qualcomm, and GlobalFoundries for patent infringement, claiming that the companies infringed its patent for semiconductor manufacturing process technologies known as fin field effect transistors (FinFET).