Past Week’s Daily News™
Thursday, July 2, 2015 1:10 pm
43 FEDERAL CIRCUIT AND 2 SUPREME COURT OPINIONS ISSUED IN SECOND QUARTER
IPO’s plain English, one-paragraph summaries of Federal Circuit precedential patent and trademark opinions from the second quarter of 2015 are available on the IPO website. The 43 summaries are arranged in date order and rated with 1 to 4 stars. Some noteworthy Federal Circuit cases:
Intellectual Ventures, April 1, in which a defendant could not seek a stay of a patent infringement suit under the AIA before PTAB instituted a proceeding;
Oplus Technologies, April 10, in which a district court erred in denying attorney fees without providing reasons after finding litigation misconduct and that the case was exceptional;
Lexmark, April 14, in which the Federal Circuit ordered an en banc hearing on patent exhaustion issues;
In re Tam, April 27, in which the Federal Circuit ordered an en banc hearing on whether the bar on registration of disparaging trademarks violates the First Amendment;
Akamai, May 13, in which the court said direct patent infringement required all method steps to be performed by or attributed to one entity;
Williamson, June 16, in which the court found there was no strong presumption that Patent Act section 112(f) does not apply absent “means” language;
ePlus, June 18, in which sanctions for violating an injunction were nullified by USPTO’s later cancellation of a patent claim. In a 5-5 split, the Federal Circuit also denied a petition for en banc rehearing in this case; and
SpeedTrack, June 30, in which a patent suit against a customer was barred after an unsuccessful suit against the seller, based on the Kessler doctrine.
The U.S. Supreme Court issued 2 IP-related opinions in the second quarter:
In Commil, the Supreme Court held that a belief that a patent is invalid is not a defense to induced patent infringement. And in Kimble, the court upheld a ban on post-expiration patent royalties.
GUEST PASS FOR THE IPO 2015 ANNUAL MEETING
IPO is offering a special Guest Pass for spouses and guests of attendees at the IPO Annual Meeting. The pass will allow your guest to accompany you to the Sunday Welcome Reception, continental breakfasts on Monday and Tuesday, and Dinner Reception at the Museum of Science and Industry on Monday evening. For more information or to register, visit www.ipo.org/am2015.
IP IN THE MASS MEDIA
Concerns Raised Over Drug Patent Protections in TPP
Politico recently discussed the contents of a leaked version of the intellectual property section of the draft Trans-Pacific Partnership (TPP) agreement. The article quoted critics who claim the Obama Administration is working in the interest of large pharmaceutical companies and that such action will have a harmful effect on the economy and consumers.
Inventors from Small Countries Tend to Emigrate
Yesterday The Economist reported data recently released from the World Intellectual Property Organization which shows that inventors from smaller, less wealthy countries tend to emigrate to larger, more wealthy nations.
TOP 300 PATENT OWNERS LIST ACCOUNTS FOR MORE THAN 7,500 ORGANIZATIONS
IPO recently published its list of the Top 300 Patent Owners of 2014. In many cases, the list takes into account patents granted to a subsidiary of a parent company. Companies that wished to have their subsidiaries’ patents combined with the parent company’s, provided names of those subsidiaries to IPO earlier this year. The 2014 list accounts for patents granted to a record 7,500+ subsidiaries.
Companies wishing to have their subsidiaries’ patents attributed to the parent company should send a list of subsidiaries to RMuthig@ipo.org by March 1, 2016.
IPO Daily News will not be published tomorrow and the IPO office will be closed in observance of Independence Day in the U.S.
Wednesday, July 1, 2015 1:02 pm
SpeedTrack, Inc. v. Office Depot, Inc. 14-1475 — Yesterday in an opinion by Judge O’MALLEY, the Federal Circuit upheld a district court summary judgment that SpeedTrack’s suit was barred. The patent claimed a method and system for accessing files in a computer’s data storage system. Office Depot argued the suit was precluded by a prior suit in which the same accused software was found not to infringe the patent. The seller of the software, later acquired by Oracle Corp., intervened in the prior suit. The district court concluded the present suit was barred under the Supreme Court’s 1907 Kessler doctrine because SpeedTrack was “unable to identify any material differences” between use of the accused software in the prior and present suits. SpeedTrack argued only the manufacturer of the accused software, and not the customer, could assert the defense.
The Federal Circuit agreed that the suit was precluded by the Kessler doctrine, which bars an infringement action against a customer after a finding of no infringement by the seller. “Allowing customers to assert a Kessler defense is consistent with the … goal of protecting the manufacturer’s right to sell an exonerated product free from interference or restraint.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
IPO COMMENTS ON REFORM OF EPO BOARDS OF APPEAL
Yesterday, IPO President PHILIP JOHNSON submitted a letter to the European Patent Office on proposed reform of the Boards of Appeal (BOA). The letter said any reforms to the BOA should focus on reaching timely, fair, and consistent decisions and that the procedures for appointing members of the BOA should be fair and unbiased. IPO said that the current time frame of nearly three years for completing an appeal is too long for many applicants and suggested the optimal time frame for completing an appeal is one year to eighteen months. IPO also recommended making it a common practice of all boards of the BOA to issue a detailed preliminary opinion when the summons to the oral hearing is issued and improving the procedure for involvement of the Enlarged Board of Appeals. IPO’s European Practice Committee assisted with the letter. The chair is ROBERT FURR (INVISTA). The vice-chairs are ALOYS HÜTTERMANN (Michalski Hüttermann), and JAMES SIGNOR (Leydig, Voit).
LET THE COUNTDOWN BEGIN! IP VIDEO CONTEST SUBMISSIONS DUE 1 MONTH FROM TODAY!
Now in its 5th year the IP Video Contest is the IPO Education Foundation’s scholarship program. Participants are asked to create a short video explaining why the patent system is important and/or how it has an impact on individuals and the economy. Two winners are selected from each of three age categories to win $5,000 in cash prizes and scholarships. Share the Video Contest website with your family and friends and help spread the word about IP! Check out previous winning videos for inspiration!
COTTERS PATENT JOINS IPO
Cotters Patent & Trade Mark Attorneys of Sydney, Australia (primary contact PAUL MAHONY) has become a law firm member of IPO.
IP IN THE MASS MEDIA
Method for Patronizing Artists Ruled Not Infringed
Yesterday Motherboard reported that a New York judge found an ArtistShare patent on crowdfunding artists’ work online not infringed by Kickstarter.
Op-Ed Proposes Patent System Focused in Inclusion
Yesterday the Washington Post’s “Innovation” blog featured an op-ed by professor COLLEEN CHIEN arguing that the U.S. should create a more “open” patent system where patent owners may freely share some rights to their inventions while retaining others.
STONETURN GROUP TO SPONSOR ANNUAL MEETING EVENT
The Monday Luncheon at the IPO Sept. 27 to 29, 2015 Annual Meeting in Chicago, IL will be sponsored by StoneTurn Group. Visit the meeting website for more information or to register.
Tuesday, June 30, 2015 12:48 pm
YOUR EXPERTISE IS NEEDED!
As part of our public outreach campaign IPO and the IPO Education Foundation are launching a search tool that will connect members of the public wanting to learn about IP with IPO members who are experts in the field. If you’re interested in helping young scientists, engineers, and artists learn about the IP protections available to them or want to help Girl Scouts earn their IP patch, this is the volunteer opportunity for you!
Before the project launches, we need volunteers! Register as a volunteer IP Expert by logging into the IPO website and clicking the “SPEAKER” button under the “My Profile” heading. You will be able to indicate the types of groups (children to adults) to which you are comfortable speaking, your areas of expertise, location, details regarding your willingness to travel, and contact information. Your information will then be available to members of the public who search for a speaker on our page. Don’t wait! Sign up today and help us spread the word about the value of IP!
USPTO SEEKS APPLICATIONS FOR PATENTS FOR HUMANITY PROGRAM
Yesterday, the United States Patent and Trademark Office published a Federal Register notice announcing the Office will be accepting applications for the “Patents for Humanity” program between July 1 and December 4. Through the Patents for Humanity program, the USPTO “recognizes patent owners who use their technology for humanitarian purposes.” The Office expects to announce winners in the spring of 2016.
Hon. Sharon Prost, Chief Judge, U.S. Court of Appeals for the Federal Circuit, will give the luncheon address on Monday, September 28 at the IPO Annual Meeting. The meeting will be held at the Hyatt Regency Hotel in Chicago, IL from Sept. 27-29. For more information and to register, visit www.ipo.org/am2015.
NEW IPO MEMBER
NABIL SALAME of Montreal, Canada has become an individual member of IPO.
IP IN MASS MEDIA
Cert. Denial Could Harm Software Industry
Yesterday Vox.com published an article arguing that the U.S. Supreme Court’s decision not to review the Federal Circuit’s opinion in Google v. Oracle would harm the digital economy by preventing device interoperability.
Craigslist and 3taps Settle Copyright, Trademark Infringement Suit
Yesterday Ars Technica reported that Craigslist settled a suit alleging copyright and trademark infringement by 3taps, a company that “scraped Craigslist data and made it available on other websites.”
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.
Monday, June 29, 2015 12:50 pm
IPO BRIEF URGES CLARIFICATION OF STANDARD FOR PATENT INFRINGEMENT WHEN NOT ALL METHOD STEPS ARE PERFORMED BY ACCUSED INFRINGER
On Friday IPO filed an amicus brief in the Federal Circuit urging a rehearing en banc in Akamai v. Limelight, an appeal in which the most recent decision was issued by a 3-judge panel on May 13. IPO said rehearing is needed to clarify the rule governing infringement of a patent method claim when the accused infringer performs fewer than all of the steps of the method.
IPO said (1) method claims are ubiquitous in all areas of technology, (2) the rule adopted by the panel is too rigid, and (3) the Supreme Court has not favored rigid rules. The Federal Circuit should adopt the flexible “direction or control” standard of the BMC case, which should be a factual inquiry. The court should also clarify that liability lies solely with the controlling or directing party. The filing of the brief was approved by the IPO Board of Directors. It was drafted by PAUL BERGHOFF of McDonnell, Boehnen. IPO President PHILIP JOHNSON and Amicus Committee chair KEVIN RHODES were of counsel.
* * * NO PATENT TERM ADJUSTMENT FOR DIVISIONALS BASED ON USPTO TIME CONSUMED DURING EXAMINATION OF PARENT
Mohsenzadeh v. Lee 14-1499 — On Thursday in an opinion by Judge REYNA, the Federal Circuit upheld a district court judgment denying patent term adjustment (PTA) for Mohsenzadeh’s divisional patents. The patents claimed methods and systems for securely processing transactions over a network. The Patent Act permits PTA for USPTO delay in sending certain notices like restriction requirements beyond 14 months after the application filing date. The USPTO did not notify Mohsenzadeh that his application was subject to a restriction requirement for over five years after the filing date. He was ultimately awarded 1,476 days of PTA for that delay in the original application but denied any PTA in the divisional applications he filed following the restriction requirement.
The district court did not err in upholding the USPTO’s denial of patent term adjustment for the divisionals. “The language of the provision of the patent term adjustment statute at issue … clearly shows that Congress intended delay in the prosecution of an application to be restored to a single patent, the patent issuing directly from that application.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
ATTORNEY FEE SHIFTING IN PATENT SUITS IN U.S. DISTRICT COURTS: WEEKLY REPORT
On June 18, Judge BUMB in the District of Delaware granted $5.9 million in attorney fees to the accused infringer. Bayer CropScience AG v. Dow Agrosciences LLC
On June 18, Judge ROSENTHAL in the Southern District of Texas denied the accused infringer’s motion for attorney fees. Western Falcon, Inc. v. Moore Rod & Pipe, LLC
On June 22, Judge BLAKE in the District of Maryland denied without prejudice the accused infringer’s motion for attorney fees in a declaratory judgment suit. Novartis Corp. v. Webvention Holdings LLC
On June 23, the Court of Appeals for the Federal Circuit, in a per curiam decision, upheld the Central District of California’s decision to deny the patent owner’s motion for attorney fees. Jake Lee v. Mike’s Novelties, Inc.
On June 23, Judge MEANS in the Northern District of Texas granted $4.7 million in attorney fees to the accused infringer. Highmark, Inc. v. Allcare Health Management Systems, Inc.
On June 24, Judge O’CONNELL in the Central District of California granted $119,855 in attorney fees to the accused infringer. Action Star Enterprise Co., Ltd. v. KaiJet Tech Int’l., Ltd.
On June 24, Judge BEATY in the Middle District of North Carolina denied the accused infringer’s motion for attorney fees. Armacell LLC v. Aeroflex USA, Inc.
On June 25, the Court of Appeals for the Federal Circuit remanded a case in which the Western District of New York denied the accused infringer’s motion for attorney fees. Gaymar Industries, Inc. v. Cincinnati Sub-Zero Products, Inc.
IPO COMMITTEE CALLS THIS WEEK
Tuesday, June 30,
Copyright Law and Anti-Piracy – 4:00p.m. ET
Wednesday, July 1,
Domain Names and Social Media – 3:00p.m. ET
Thursday, July 2,
Pharmaceutical and Biotechnology Issues – 3:00p.m. ET
To join one of IPO’s 29 Standing IP Committees, visit www.ipo.org/committeesignup.
IP IN THE MASS MEDIA
Case Questions Whether Prescribing a Drug for Different Purpose Is Infringement
Today a British court will hear arguments on whether doctors and pharmacists can be found liable for patent infringement for prescribing or dispensing the generic form of a drug to treat any condition when the patent for the drug’s chemical compound and its original uses has expired but the drug is still under a patent for a secondary use. (Wall Street Journal)
Street Artist Accuses Starbucks of Copying Works in Advertisements
On Friday Fast Company reported that New York based street artist MAYA HAYUK sued Starbucks for copyright infringement after designs similar to her work appeared in Starbucks’ frappuccino ads.
TOP 300 COMPANIES RECEIVED MORE PATENTS OVERALL
Last week IPO published its list of the 300 companies that received the most US utility patents in 2014. The minimum number of patents needed to make the list was 104. In 2013 the threshold was 95, and in 2012 it was 88.
Friday, June 26, 2015 12:25 pm
* * * SLOPPY ARGUMENTS NOT MISCONDUCT IN PATENT INFRINGEMENT SUIT
Gaymar Industries, Inc. v. Cincinnati Sub-Zero Products, Inc. 14-1174 — Yesterday in an opinion by Judge DYK, the Federal Circuit overturned in part a district court decision that the case was not exceptional under Patent Act Section 285, which covers attorney fee shifting to prevailing parties. Gaymar claimed a temperature control system such as a blanket for warming or cooling a patient. During the infringement suit, the USPTO rejected all claims in an inter partes reexamination. Cincinnati moved for attorney fees, asserting that Gaymar’s litigation position had been objectively baseless. In response, Gaymar identified four examples of alleged litigation misconduct by Cincinnati. The district court relied on that alleged misconduct to find that Cincinnati did not have sufficiently “clean hands” to render the case exceptional.
The Federal Circuit said that although “the conduct of the parties is a relevant factor under Octane’s totality-of-the-circumstances inquiry,” the district court clearly erred in finding misconduct by Cincinnati. Cincinnati’s arguments may have been overstatements or “sloppy,” but they did not amount to misrepresentation or litigation misconduct. The case was remanded.
(1 to 4 stars rate impact of opinion on patent & trademark law)
IPO ANNUAL MEETING DINNER RECEPTION AT THE MUSEUM OF SCIENCE AND INDUSTRY
Join Annual Meeting attendees and guests on Sept. 28 for a memorable evening at Chicago’s Museum of Science and Industry (MSI). MSI is the largest science museum in the Western Hemisphere. The Museum is housed in the only remaining building from the 1893 World’s Columbian Exhibition. Guests will be able to explore the Museum’s many interactive exhibits, including Science Storms, Robot Revolution, Inventing the Future, Genetics and Yesterday’s Main Street, while they enjoy Chicago cuisine throughout the venue. For more information or to register, visit www.ipo.org/AM2015.
The IPO Law Journal contains a new article entitled “The Confusing and Often Contradictory World of Pleading Defenses and Counterclaims in Patent Cases.” CONRAD GOSEN and TASHA FRANCIS, Ph.D. are attorneys in the Twin Cities office of Fish & Richardson. To view the IPO Law Journal, go to www.ipo.org/lawjournal. To submit an article for publication, go to www.ipo.org/submitarticle.
JULY FEDERAL CIRCUIT ARGUMENTS POSTED
The Federal Circuit oral argument schedule for July is posted on the IPO web site. To view the schedule go to www.ipo.org/ArgumentSchedule.
IP IN THE MASS MEDIA
Inventor and Professors Debate the Need for Patent Reform Legislation
Yesterday the Atlanta Journal Constitution’s Atlanta Forward blog featured two articles on the patent reform bills currently under consideration in Congress. Independent Inventor KRISTI GORNIAS said the legislation would classify her as a “troll” because she does not produce her patented inventions. Three University of Georgia professors argued that the legislation will help protect small inventors from frivolous suits by non-practicing entities.
Actavis Barred from Producing Mesothelioma Drug in UK
Yesterday the Wall Street Journal reported that a British Court of Appeals decided that Activas PLC could not produce a generic version of Eli Lilly and Co.’s mesothelioma drug Alimta without infringing Lilly’s patent.