Intellectual Property Owners Association

Serving the Global Intellectual Property Community

Past Week’s Daily News™

Friday, December 19, 2014 1:24 pm

DAILY NEWS TO PUBLISH DURING HOLIDAY PERIOD

IPO Daily News will publish every business day during the next two weeks. It will not publish on December 25 or January 1.

KAMEN SEEN ON COLBERT

Last night’s final episode of the Colbert Report on the Comedy Central television channel included a large number of former guests singing farewell to the host, including DEAN KAMEN, the IPO Education Foundation 2013 Inventor of the Year. PAOLA ANTONELLI, who presented the foundation’s 2014 Inventor of the Year award to DR. HUGH HERR on December 9, also is a former Colbert guest.

IP IN THE MASS MEDIA

Microsoft Sues Omni Tech for Trademark Infringement

Yesterday Bloomberg reported that Microsoft Corp. sued Omni Tech Support for unfair and deceptive business practices and trademark infringement for using Microsoft’s name to sell products and then stealing customers’ personal information.

Op-Ed Advocates Legislation to Address Patents Granted Despite Subject Matter Ineligibility

Yesterday Roll Call published an op-ed that argues that in addition to the Supreme Court’s decision in Alice v. CLS Bank clarifying that an abstract idea cannot be patented merely because it is performed on a computer, legislation is needed so patents that may have been granted despite ineligibility “don’t create problems for real people.”

Clothing Line Creative Director Sues Artist for Copyright Infringement

Yesterday Vulture reported that the creative director for French clothing line Naf Naf sued artist JEFF KOONS, claiming Koons’s sculpture “Fait d’Hiver” infringes the copyright on a 1958 Naf Naf ad of the same title.

NOT YOUR GRANDMOTHER’S GIRL SCOUTS!

For the first time Girl Scouts across the country now have the opportunity to earn a patch on intellectual property! IPO Education Foundation recently partnered with the Girl Scout Council of the Nation’s Capital and the USPTO to develop the IP patch. Now we need your help. What better people to help girls earn the patch than IPO members! Click here for information on how to bring the patch to your local troop or volunteer to talk to a troop about what you do!

Federal Circuit Summaries LogoIPO DAILY NEWS FEATURES FEDERAL CIRCUIT SUMMARIES

The newsletter is perhaps best known for its Federal Circuit Summaries, which are precise, one-paragraph, plain English reports on all precedential patent and trademark opinions of the U.S. Court of Appeals for the Federal Circuit. The court issues more than 100 such precedential opinions a year. Summaries are published the next business day after an opinion issues. You can search the text of summaries since 1996 by clicking here and entering your IPO username (usually your e-mail address) and password. Search results are listed in order of date or relevance.




Thursday, December 18, 2014 1:35 pm

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* * * * MYRIAD’S DNA PRIMERS AND METHODS RELATED TO BRCA1 AND BRCA2 GENES PATENT-INELIGIBLE

University of Utah Research Foundation v. Ambry Genetics Corp., 14-1361 — Yesterday in an opinion by Judge DYK, the Federal Circuit upheld a district court’s denial of a preliminary injunction against Ambry. The patents, owned by plaintiff Myriad Genetics, Inc., claimed short-stranded DNA “primers” and methods related to the BRCA1 and BRCA2 genes, mutations of which are linked to breast and ovarian cancer. Myriad’s isolated DNA claims were previously found patent-ineligible by the U.S. Supreme Court in Association for Molecular Pathology v. Myriad as products of nature.

The district court properly denied Myriad’s preliminary injunction motion because the claims violated Patent Act section 101. The primers were ineligible as “structurally identical to the ends of DNA strands found in nature” and “not distinguishable from the isolated DNA found patent-ineligible in Myriad.” The method claims were ineligible under the Alice Corp v. CLS Bank framework as merely reciting “the patent-ineligible abstract idea of comparing BRCA sequences and determining the existence of alterations.” The steps were routine and conventional, with insufficient “further inventive concept” for patent-eligibility.
(1 to 4 stars rate impact of opinion on patent & trademark law)

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TODAY ON IPO’S IP CHAT CHANNEL: ESTOPPEL AND PRIVITY IN PTAB PROCEEDINGS AND PARALLEL LITIGATION

Tune in to the IP Chat Channel today to discuss Estoppel and Privity in PTAB Proceedings and Parallel Litigation. Panelists include NICHOLAS GROOMBRIDGE, Paul, Weiss, Rifkind, Wharton & Garrison LLP; MARK MATUSCHAK, Wilmer Cutler Pickering Hale and Dorr, LLP; and JON WRIGHT, Sterne, Kessler, Goldstein & Fox, PLLC. 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.

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* * COURT ERRED IN DISMISSING TRADE SECRET SUIT AS IMPLAUSIBLE

ABB Turbo Systems AG v. TurboUSA, Inc 14-1356 — Yesterday in an opinion by Judge TARANTO, the Federal Circuit overturned a district court’s dismissal of ABB’s trade secret claim. ABB held patents for exhaust-gas turbochargers. After filing a patent infringement suit against TurboUSA, ABB discovered information suggesting that TurboUSA had misappropriated ABB’s trade secrets related to the design, pricing, and servicing of the turbochargers. In an amended complaint, ABB alleged trade secret misappropriation dating back to 1986. The district court found that the trade secret claim was “not well-formulated” because ABB had not established that reasonable efforts had been employed to maintain secrecy given the long scope of the alleged misappropriation.

The district court “was too demanding of specificity and too intrusive in making factual assessments.” Citing the Supreme Court’s Twombly and Iqbal opinions, the Federal Circuit decided ABB provided the necessary “facial plausibility” for the trade secret claim. It was “simply not implausible that adequate protections were in place and yet a series of misappropriations occurred without ABB’s detection.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO TO REDUCE TRADEMARK FEES

On December 16, the USPTO published a Federal Register notice on fee reductions for trademark applications and renewals that will go into effect January 17. The reductions “will reduce total trademark fee collections and promote efficiency for the USPTO and customers through electronic communication and will further the USPTO’s strategic objective to increase the end-to-end electronic processing of trademark applications including online filing, electronic file management, and workflow.” A trademark applicant using the Trademark Electronic Application System (TEAS) application form may pay a reduced fee “if the applicant agrees to receive communications concerning the application by email and to file all responses and other documents through TEAS during the prosecution of the application.”

IP IN THE MASS MEDIA

Indian Court Bars Sales of OnePlus Phone

Yesterday India’s Delhi High Court ruled that Chinese device maker OnePlus may not sell its handset, which bears a Cyanogen logo, in India because Cyanogen previously issued an exclusive license to Micromax Informatics. (Times of India)

Article Recommends Photographers Seek Copyright Registrations for All Photographs

Yesterday in an op-ed posted by the Huffington Post, attorney CAROLYN WRIGHT recommended that photographers obtain copyright registrations on each of their photographs.

Op-Ed Disputes Reports on “Foreign Patent Trolls”

Yesterday Washington legislative publication Roll Call published an op-ed titled “Fear-Mongering about Foreign Patent Trolls,” The piece argued that recent articles warning about foreign patent trolls, including government-sponsored patent trolls, are unsubstantiated.

 




Wednesday, December 17, 2014 1:19 pm

NEXT BRIEFING FOR CORPORATE MEMBER WASHINGTON REPRESENTATIVES ON FRIDAY

IPO holds quarterly briefings in its Washington, DC office for IPO corporate members’ Washington representatives. The next briefing will be held December 19. The purpose of the briefing is to provide an update on IP legislation and policy, and to have a discussion of the IP-related interests of member companies. To add your company’s Washington representative to our list, email Laura Minniear at lminniear@ipo.org.

Federal Circuit Summaries Logo* NO LIKELIHOOD OF CONFUSION BETWEEN “TAKETEN” FOR HEALTHCARE SERVICES AND “TAKE 10!” FOR FITNESS PUBLICATIONS

In re St. Helena Hospital 14-1009 — Yesterday in an opinion by Judge LINN, the Federal Circuit overruled the USPTO’s rejection of St. Helena’s trademark application. St. Helena sought to register the mark “TAKETEN” for health care services in a 10-day residential health improvement program. The USPTO rejected the application due to a likelihood of confusion with the registered trademark “TAKE 10!” for printed manuals, posters, and educational materials dealing with physical fitness.

The Federal Circuit considered the relevant DuPont factors and decided the USPTO erred. Substantial evidence did not support the finding that the goods and services were “generally recognized as being related.” “[T]he mere fact that goods and services are ‘used together’ does not, on its own, show relatedness.” In addition, the USPTO erred in assessing the factor of degree of customer care.
(1 to 4 stars rate impact of opinion on patent & trademark law)

U.S. LAW SCHOOL ENROLLMENT LOWEST SINCE 1982

Today the New York Times reported that U.S. law school enrollment is at the lowest level since 1982, according to data from the American Bar Association. Enrollment this fall fell nearly 7 percent from a year ago and 17.5 percent from 2010. First-year enrollment is down 27.7 percent from four years ago. “The realities of legal education become clear each December, when the bar association releases statistics from law schools, which are accredited by the bar association . . . .”

IP IN THE MASS MEDIA

Google and Verizon Reach Cross-Licensing Agreement

Yesterday the Wall Street Journal reported that Google Inc. and Verizon Communications Inc. signed a long-term cross-licensing agreement effectively barring the companies from suing one another on current patents or those they acquire in the next five years.

Jury Finds Apple Did Not Violate Antitrust Laws

On Tuesday a jury in California found that improvements to Apple’s iPod that prevented the device from playing music from a competitor did not violate antitrust laws. (Yahoo Finance)

STAY CONNECTED WITH IPO

Below are a few ways that you can network with IPO and the IPO Education Foundation. We will use these tools to send important updates periodically:

• Become a fan of the IPO Facebook Page.
• Become a fan of the Foundation Facebook Page.
• Follow Intellectual Property Owners Association on LinkedIn.
• Follow @IPO on Twitter.
• Follow @IPOFoundation on Twitter




Tuesday, December 16, 2014 1:51 pm

Federal Circuit Summaries Logo* * * SUPPLYING A COMPONENT OF A PATENTED INVENTION THAT THE SUPPLIER’S SUBSIDIARY COMBINED OVERSEAS WAS INDUCEMENT TO INFRINGE

Promega Corp. v. Life Technologies Corp. 13-1011 — Yesterday in an opinion by Judge CHEN, a split Federal Circuit overruled a district court judgment that LifeTech did not infringe Promega’s patent. The 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 Patent Act section 271(f)(1) required “the involvement of another.”

The 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.” “Had Congress wanted to limit ‘induce’ to actions completed by two separate parties, it could easily have done so by assigning liability only where one party actively induced another ‘to combine the [patented] components.’”

Chief Judge PROST, dissenting, argued LifeTech could not actively induce itself to infringe. Both the statute and Supreme Court precedent required active inducement of another.
(1 to 4 stars rate impact of opinion on patent & trademark law)

PTO_campus2USPTO REVISES GUIDANCE ON PATENT SUBJECT MATTER ELIGIBILITY

Today the USPTO published revised examination guidance in the Federal Register to address changes in law relating to patent eligible subject matter under Patent Act section 101 as interpreted in recent court decisions. The agency is seeking public comments on the guidance during a 90-day comment period, which will end on March 16. The PTO will also hold a public forum in mid-January.

The USPTO has posted claim examples that illustrate the analysis set forth in the guidance. Examples directed at nature-based products are posted on the USPTO website; examples directed at abstract ideas will be released soon.

Deputy Commissioner for Patent Examination Policy ANDREW HIRSHFELD has said that that the Office has made significant changes in response to comments it received after issuing initial examination guidance earlier this year, which many believed went further than the Supreme Court decisions in Association for Molecular Pathology and Mayo Collaborative Services. IPO commented on the guidance documents published earlier this year and likely will comment again.

IPO BOARD ADOPTS RESOLUTIONS ON U.S.’S TRANSFER OF CONTROL OF INTERNET NAME STANDARDS AND ON PATENT LAW HARMONIZATION

On December 9 the IPO Board of Directors adopted a resolution stating that it does not support the transfer of the Internet Assigned Names Authority from U.S. government oversight unless (a) a new, multi-stakeholder system can meet high standards of security, freedom and openness; (b) there is assurance that no government or coalition will be empowered to undermine these standards; and (c) any proposed transfer plan is publicized well in advance of a proposed transition date, with full opportunity for stakeholders to meaningfully evaluate and comment on the viability of the plan.

On the same day the Board also adopted a resolution confirming its support in principle for the IP5 Patent Harmonization Experts Panel to take up three procedural harmonization proposals: 1) Unity of Invention, 2) Citation of Prior Art, and 3) Written Description.

The full texts of the resolutions are posted on the IPO website.

NEW DEMOCRATIC CHIEF COUNSEL FOR HOUSE IP SUBCOMMITTEE

JASON EVERETT has been promoted to Chief Counsel of the House Subcommittee on Courts, Intellectual Property, and the Internet. Previously, Everett served as Democratic Counsel to the Subcommittee and for five years was Democratic Counsel for the House Committee on the Judiciary, where he worked on IP issues.

NEW ARTICLE ON IPO WEBSITE BY JEFFRY M. NICHOLS AND WILLIAM A. CARROLL, Ph.D.

The IPO Law Journal contains a new article entitled “The Lead Compound Analysis for Chemical Obviousness: USPTO v. the Courts.” Both authors are with the IPO member firm Brinks Gilson & Lione. To view the IPO Law Journal, go to www.ipo.org/lawjournal. For details on submitting articles see www.ipo.org/submitarticle.

IP IN THE MASS MEDIA

Sony Hack May Reveal Plans for New Anti-Piracy Initiatives

On Friday The Verge reported that e-mails made public during the recent hack of Sony Corp. suggest that the Motion Picture Association of America and major movie studios may be working on legislation at the state and federal levels to combat piracy by imposing new rules on Internet service providers.

Sony Threatens Lawsuits against News Organizations Publishing Hacked Documents

Yesterday the Washington Post reported that Sony Corp. sent a letter to major news outlets threatening lawsuits if the outlets published materials made public by a recent hacking of the company’s servers. Quoting the letter, the article said “Sony was at risk of ‘loss of value of intellectual property and trade secrets’ as a result of the media’s actions.”

Washington Post Blog Discusses Versata v. SAP

Yesterday the Washington Post blog “The Switch” discussed the potential effects of Versata v. SAP on business method patents. The Federal Circuit holds oral arguments in the case later this month.




Monday, December 15, 2014 1:38 pm

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USPTO TO GET FEES IN 2015 BUT FUTURE FEE WITHHOLDING A DANGER

On Saturday evening the U.S. Senate avoided a government shutdown by passing the controversial 1,600 page, $1.1 trillion “CRomnibus” funding bill. As reported by IPO Daily News last week, the bill funds the USPTO through 2015 and has some other IP-related provisions.

In 2015 the USPTO will be able to spend all patent and trademark fees it collects. Congress’s fiscal dramas, however, cause worry for the future. More than $1 billion was withheld from the USPTO between 1991 and 2013. We can see this problem arising again if the broken government funding process isn’t fixed.

Under “regular order,” Congress would pass each of the 12 major appropriations bills separately by around July, after close scrutiny and opportunity for amendments to correct shenanigans like diversion of USPTO fees to unrelated government programs. With regular order, government shutdowns would be a thing of the past, but we don’t know when Congress will return to regular order.

The statute still doesn’t insulate the USPTO from fee withholding. IPO continues to urge permanent legislation to guarantee the USPTO access to all of its fees every year.

U.S. SUPREME COURT TO REVIEW RULE ON POST-EXPIRATION PATENT ROYALTIES

On Friday, the U.S. Supreme Court agreed to review Kimble v. Marvel Enterprises, Inc., 13-720. The court will consider whether to overrule its 1964 opinion in Brulotte v. Thys Co., which held that a license agreement requiring royalty payments for use of a patented invention after the expiration of the patent term is unlawful per se.

Kimble’s patent claimed a toy glove for shooting string foam. Kimble entered into a license agreement with Marvel for 3% of net product sales. In a subsequent dispute, the 9th Circuit upheld a district court finding that the royalty obligation ended when the patent expired.

To read the question presented as posted on the Supreme Court website, click here. IPO’s Amicus Brief Committee is studying the case.

USPTO PUBLISHES PERFORMANCE AND ACCOUNTABILITY REPORT FOR 2014

On Friday the USPTO announced publication of its Performance and Accountability Report for fiscal year 2014. The report serves as the USPTO’s annual report to update the public on the Office’s performance and financial health. The USPTO stated that the report also charts the agency’s progress toward meeting its 2014-2018 strategic planning goals including optimizing patent and trademark quality and timeliness, and “providing domestic and global leadership to improve intellectual property policy, protection, and enforcement worldwide.”

IPO ACTIVITIES THIS WEEK:

Tuesday, December 16,

International Patent Law and Practice Committee – 12:00n.n. ET

Thursday, December 18,

Latin American Practice Committee – 10:00a.m. ET
European Practice Committee – 11:00a.m. ET
Open Source Committee – 1:00p.m. ET
Litigation Committee – 2:00p.m. ET
Industrial Designs Committee – 4:00p.m. ET

Friday, December 19,

Corporate Member Washington Representatives Briefing – 10:00a.m. ET

To join one of IPO’s 29 Standing IP Committees, visit www.ipo.org/committeesignup. To RSVP for the briefing or learn more about IPO’s Corporate Member Washington Representatives program, email Laura Minniear at lminniear@ipo.org.

IP IN THE MASS MEDIA

YouTube, Google Sued in Germany

On Friday Reuters reported that Max Sound sued YouTube and Google in Germany for infringing a patent on a video-encoding format for video compression.

Charles Schumer, Friend of Tech

On Friday the Washington Post blog “The Switch” discussed Sen. CHARLES SCHUMER’s (D-NY) relationship with Silicon Valley companies. The article discusses his contribution to the push for patent litigation reform and his vow to see legislation through in the next Congress.

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THIS WEEK ON IPO’S IP CHAT CHANNEL: ESTOPPEL AND PRIVITY IN PTAB PROCEEDINGS AND PARALLEL LITIGATION

Tune in to the IP Chat Channel, Thursday, December 18 at 2:00p.m. ET to discuss Estoppel and Privity in PTAB Proceedings and Parallel Litigation. How will the estoppel provisions of the AIA play out as more final trial decisions are issued from PTAB proceedings? Questions of privity are closely entangled with estoppel because determining who is estopped may require the PTAB and courts to scrutinize who are the parties-in-interest in a particular inter partes review, covered business method review, or post-grant review. Our panelists are NICHOLAS GROOMBRIDGE of Paul, Weiss, Rifkind, Wharton & Garrison LLP; MARK MATUSCHAK of Wilmer Cutler Pickering Hale and Dorr, LLP; and JON WRIGHT of Sterne, Kessler, Goldstein & Fox, PLLC. After quickly reviewing the estoppel provisions in the AIA law and the PTAB Trial Rules and Practice Guide, they will consider PTAB decisions that already touch on estoppel and privity, and discuss the many important questions that remain open. These include:

• When a petition is filed against a patent owner by a lawsuit-protection entity, who is estopped? Only that entity or also its members?
• Could a PTAB petition filed by one member of a joint defense group open the group to discovery by the patent owner?
• Does estoppel apply to all the issues “raised” or “reasonably could have been raised” by the petitioner, or just grounds on which the PTAB proceeds?
• Are there situations in which estoppel in district court from PTAB proceedings is less to be feared?

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.