Intelectual Property Owners Association

Serving the Global Intellectual Property Community

Past Week’s Daily News™

Friday, August 29, 2014 1:01 pm

MARTI TO BE NOMINATED FOR POST OF IP ENFORCEMENT COORDINATOR

Yesterday PRESIDENT OBAMA announced his intent to nominate DANNY MARTI, to be Intellectual Property Enforcement Coordinator in the Executive Office of the President. Marti currently serves as the Managing Partner of Kilpatrick Townsend & Stockton’s Washington, D.C. office. Marti received a B.A. from Georgetown University and a J.D. from Emory University School of Law. The position of Intellectual Property Enforcement Coordinator, which has been vacant for more than a year, requires Senate confirmation.

2014 IPO ANNUAL MEETING EXHIBITORS

The 2014 IPO Annual Meeting will feature an exhibit area that will be open 7:00a.m.-4:00p.m. on Monday and Tuesday, Sept 8 and 9. To view a list of this year’s exhibitors, click here.

Federal Circuit Summaries Logo* * CLAIMS FOR MANAGING BINGO GAMES PATENT-INELIGIBLE

Planet Bingo, LLC v. VKGS LLC 13-1663 — On Tuesday in a non-precedential opinion by Judge HUGHES, the Federal Circuit upheld a district court decision that Planet Bingo’s claims were invalid under Patent Act section 101. The patents claimed computer-aided methods and systems for managing bingo games and included steps of storing, retrieving, and playing a player’s preferred bingo numbers while tracking the player’s card sets and winning numbers.

In a decision predating the Supreme Court in Alice Corp. v CLS Bank, the district court found the method claims “encompasse[d] the abstract idea” of managing and playing bingo, the use of a computer “add[ed] nothing more” than efficiency, and the system claims failed to result in an “inventive concept.” The Federal Circuit said “a straightforward application” of Alice led to “the same result.” As in Alice, there was no “‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” The function performed by the computer at each step was “purely conventional.” Editor’s Note: IPO summarizes every precedential opinion, and occasionally, as here, may cover a non-precedential opinion.
(1 to 4 stars rate impact of opinion on patent & trademark law)

LAKSHMIKUMARAN & SRIDHARAN JOINS IPO

Lakshmikumaran & Sridharan of New Delhi, India (primary contact LAKSHMIKUMARAN VARADACHARI) has become a law firm member of IPO.

IP IN THE MASS MEDIA

Charity Applies to Register “Ice Bucket Challenge” Trademark

Yesterday Ars Technica reported that the ALS Foundation applied for a trademark registration on the phrase “ice bucket challenge.” The charity has received more than $94 million in donations from individuals challenged by their friends to donate and/or dump ice water on themselves.

Video Explains Copyright in King’s “I Have a Dream” Speech

Yesterday NBC News posted a “30 Seconds to Know” video explaining why Dr. Martin Luther King, Jr.’s “I Have a Dream” speech is protected by copyright.

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!




Thursday, August 28, 2014 12:47 pm

The U.S. PATENT OFFICE WAS NOT BURNED

This week marks the 200th anniversary of the burning of government buildings of Washington, DC by British soldiers in August 1814, during the war of 1812. An article in last Saturday’s Washington Post, “DC’s Darkest Day, a War That No One Remembers,” recounts the bonfires in Washington that burned the White House, the Capitol, and other government buildings. Private property was spared. According to the Post article, based on a book by Steve Vogel, “They even spared the Patent Office after being persuaded that patents were private property.”

Other accounts are more glamorous. Some say WILLIAM THORNTON, head of the Patent Office from 1802 to 1828, begged soldiers not to burn the office. According to legend, he told them the Patent Office was a great library, and burning it would be like burning the ancient Library of Alexandria in Egypt, which had become a symbol of irretrievable loss of public knowledge.

IP Chat Channel LogoTODAY ON IPO’S IP CHAT CHANNEL: GLOBAL PATENT PROSECUTION — WRITTEN DESCRIPTION

Tune in to the IP Chat Channel, Thursday, August 28 at 12:00nn ET to discuss Global Patent Prosecution: Comparing Europe, China, and U.S. Law & Practice (Written Description). Panelists include JI LIU, CCPIT; MARTIN HYDEN of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; and SAMSON HELFGOTT, Katten Muchin Rosenman LLP. 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.

USPTO TO HOST MEETINGS ON FIRST TO FILE PROVISIONS OF PATENT ACT

Yesterday, the USPTO announced it will be hosting “roadshows” across the country on the first to file provisions of the America Invents Act. The USPTO will discuss updates on these provisions and present a variety of sample scenarios and prosecution tips. The roadshows will take place between September 16 and October 9.

marshall-rothstein_photo
Photo credit:
Philippe
Landreville,
photographer,
Supreme
Court of
Canada Collection

HON. MR. JUSTICE MARSHALL ROTHSTEIN TO GIVE LUNCHEON ADDRESS AT IPO ANNUAL MEETING

Hon. Mr. Justice MARSHALL ROTHSTEIN, Supreme Court of Canada, will give the luncheon address on Tuesday, September 9 at the IPO Annual Meeting. The meeting will be held at the Vancouver Convention Center in Vancouver, Canada from Sept. 7-9. For more information and to register, visit www.ipo.org/am2014.

ITIP PROFICIENCY JOINS IPO

ITIP ProFiciency, LLC of Fort Gratiot, Mich. (primary contact ROGER GOBROGGE) has become a small business member of IPO. Visit their website at www.itip.com.

IP IN THE MASS MEDIA

Judge Denies Apple Request for Permanent Injunction Against Samsung

Yesterday California Judge LUCY KOH denied Apple Inc.’s request for a permanent injunction to prevent Samsung from selling smartphones with features found to infringe three Apple patents. (Reuters)

Trademark Suit Filed on Marijuana Shop Name

Yesterday the Seattle Times reported that Trans-High Corp., owner of High Times magazine, filed a trademark infringement suit against a marijuana shop outside Seattle. Trans-High claims the shop, High Time Station, tried to claim affiliation with the publication through its name.

Japanese Game Companies in Patent Infringement Litigation

Japanese game company Capcom has sued rival Koei Tecmo for infringing patents on more than more than 50 games. (IGN)

miller, ScottMEET THE COMMITTEE LEADERS: SCOTT MILLER

SCOTT MILLER is the vice-chair of IPO’s Damages and Injunctions Committee. He is currently a partner at Sheppard Mullin Richter & Hampton LLP. His patent practice focuses on telecommunications, medical devices, digital signal processing, data storage, and optical and LED/LCD technologies. He also has substantial experience in negotiating IP focused buy/sell transactions and licenses. To join the Damages and Injunctions or another one of IPO’s 29 Standing IP Committees, click here.

 




Wednesday, August 27, 2014 12:58 pm

NEW ARTICLE ON IPO WEBSITE BY GARY L. GRISWOLD

The IPO Law Journal contains a newly-posted article entitled “Publishing Design Patent Applications: Time to Act” by GARY L. GRISWOLD. Griswold argues that U.S. design patent applications should be published at 6 months after the filing date.  The article was originally posted on the Patently-O blog. To view the IPO Law Journal, click here. You can view full submission guidelines at www.ipo.org/submitarticle.

NEW IPO MEMBER

JANIS BIKSA of Irvine, Calif. has become an individual member of IPO.

IP Chat Channel LogoTODAY ON IPO’S IP CHAT CHANNEL: GLOBAL PATENT PROSECUTION — OBVIOUSNESS

Tune in to the IP Chat Channel, Wednesday, August 27 at 12:00nn ET to discuss Global Patent Prosecution: Comparing Europe, China, and U.S. Law & Practice (Obviousness).  Panelists include PHILIP CUPITT, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; SAMSON HELFGOTT,  Katten Muchin Rosenman LLP; and DESHAN LI, Unitalen.  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

Google Adds 152 Patents to Open Patent Non-Assertion Pledge

Yesterday Google Inc. announced that it would add 152 patents related to encryption, XML parsing, and prefetching to those involved in its Open Patent Non-Assertion (OPN) Pledge.  Google has committed not to sue for use of patents under its OPN Pledge unless first attacked in order to support open-source innovation.

CBS Sued Over Stuffed Hippo Sales

Yesterday the New York Daily News reported that toy manufacturer Folkmanis Inc. sued CBS for copyright infringement, claiming that CBS conspired with manufacturers in China to produce and sell copies of a Folkmanis stuffed hippo often featured on CBS’s show NCIS.

Post Writes Again on USPTO Telework Program

Last week the Washington Post’s “Federal Eye” column reported that the U.S. Commerce Department issued a stern e-mail to 47,000 employees worldwide warning that “erroneous time-keeping” is illegal and reminding them to maintain accurate records of the hours they work.  The column suggested the email was a response to a Post article the week before about the USPTO telework program.

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!

 




Tuesday, August 26, 2014 12:35 pm

Federal Circuit Summaries Logo* * ABBREVIATED NEW DRUG APPLICATION ESTABLISHED JURISDICTION, NOT PATENT INFRINGEMENT

Ferring B.V. v. Watson Laboratories, Inc. 14-1416 — On Friday in an opinion by Judge LOURIE, the Federal Circuit overturned a district court judgment of infringement. Ferring’s patents claimed modified release formulations of tranexamic acid for treating heavy menstrual bleeding, marketed under the brand Lysteda®. Watson filed an abbreviated new drug application (ANDA) under Patent Act 271(e) seeking FDA approval for a generic version of the drug. Watson argued there was no infringement because the release rates differed between the claimed and generic formulations. The district court found Watson’s filing of the ANDA established infringement.

The Federal Circuit held the district court erred in interpreting Watson’s ANDA filing as the only basis for finding infringement. Under the Hatch Waxman Act, Watson’s filing “only constituted a technical act of infringement for jurisdictional purposes” and did not alter Ferring’s burden of proving infringement. Once jurisdiction was established, “the ultimate infringement inquiry” required comparison of Ferring’s patent claims and the version of Watson’s generic drug likely to be sold following ANDA approval.
(1 to 4 stars rate impact of opinion on patent & trademark law)

SESSION ON TRADE SECRETS AT IPO’S ANNUAL MEETING

CHARLES OSSOLA, Vinson & Elkins LLP, will moderate a panel on “How to Effectively Protect & Enforce Your Company’s Trade Secrets” at IPO’s Annual Meeting. Panelists will offer tips on how to identify and protect against your company’s biggest IP threats. The session will include discussions on proactive measures, enforcement options and crisis management responses. Speakers include: SCOTT ALLISON, General Electric Co.; KURT CALIA, Covington & Burling LLP; and WILLIAM COUGHLIN, Ford Global Technologies LLC. The Annual Meeting will be held from Sept. 7-9 in Vancouver, Canada. To view the full program and to register, visit www.ipo.org/am2014.

Federal Circuit Summaries Logo* * PATENT SUIT MOOT AFTER AMENDMENT TO ABBREVIATED NEW DRUG APPLICATION

Ferring B.V. v. Watson Laboratories, Inc. (Apotex) 14-1377 — On Friday in an opinion by Judge DYK in a companion appeal to No. 14-1416, the Federal Circuit upheld a district court’s dismissal of Ferring’s patent infringement suit. Apotex filed an abbreviated new drug application (ANDA) seeking FDA approval for a generic version of the drug patented by Ferring and argued no infringement because the generic’s dissolution rate of not less than 80% in 60 minutes differed from Ferring’s claimed rate of not less than 70% in 45 minutes. The district court originally concluded that Apotex was infringing because the ANDA “could” permit sale of an infringing product.

The Federal Circuit held the relevant inquiry was whether Apotex was likely to market an infringing product, not whether Apotex could infringe. Apotex also amended the ANDA to specify a dissolution rate of not less than 75% in 45 minutes, which mooted Ferring’s suit.
(1 to 4 stars rate impact of opinion on patent & trademark law)

NEW IPO MEMBER

JAMIE LU of Taipei City, Taiwan has become an individual member of IPO.

IP IN THE MASS MEDIA

Insurer Not Responsible for Damages in Trademark Infringement Suit

Yesterday Bloomberg reported that a New York judge found that Travelers Companies Inc. was not responsible for trademark infringement damages owed by its client Ashley Reed Trading Inc. The company’s insurance policy covered “advertising injury,” which the judge said did not include the customer’s liability for selling counterfeit products.

david_safranMEET THE COMMITTEE LEADERS: DAVID SAFRAN

DAVID SAFRAN is the vice-chair of IPO’s U.S. Trademark Office Practice Committee. He is currently a shareholder at Roberts Mlotkowski Safran & Cole, P.C. He has an international practice that includes all aspects of intellectual property law, including substantial professional experience in arbitrating and mediating civil disputes, including ICANN domain name disputes. To join the U.S. Trademark Office Practice or another one of IPO’s 29 Standing IP Committees, click here.

ARE YOU INTERESTED IN SHAPING THE FUTURE OF IPO EDUCATION FOUNDATION PROGRAMS?

The IPO Nominations Committee is seeking individuals interested in sitting on the IPO Education Foundation Board of Directors. Established in 2005, the Foundation has furthered its mission of educating the public about the importance of the patent system through various conferences and events, and public awareness campaigns. Such events include PTO Day and the Foundation Awards Dinner, as well as programs like the IP Video Contest, Girl Scout IP Patch, Inventor of the Year Award, and Distinguished IP Professional Award. For more information about the Foundation, or if you would like to be considered as a prospective Board member, please contact Colleen Wellington-Caban at cwellington-caban@ipo.org or 202.507.4500.




Monday, August 25, 2014 2:44 pm

Federal Circuit Summaries Logo* * POST-VERDICT ORDER CLARIFIED PATENT CLAIM CONSTRUCTION INHERENT IN JURY INSTRUCTIONS

Mformation Technologies, Inc. v. Research In Motion Ltd. 12-1679 — On Friday in an opinion by Chief Judge PROST, the Federal Circuit upheld a district court judgment as a matter of law of no infringement. Mformation’s patent claimed a method for wirelessly activating and managing a wireless device and included steps of “establishing a connection between the wireless device and the server, and transmitting the contents of the mailbox from the server to the wireless device.” In its post-verdict order, the district court explained that the “establishing a connection” step had to occur before the “transmitting” step.

The Federal Circuit held the post-verdict order was permissible because it “clarified a construction that was inherent in the jury instructions and claim construction order.” A logical reading of the jury instructions was that the “establishing” step had to be completed before the “transmitting” step. This was not an error but “. . . ‘merely made plain what . . . should have been obvious to the jury.’”
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP IN THE MASS MEDIA

Credit Card Company Sues Over Publication of Fees

On Friday CBS News reported that credit card company First Premier Bank sued credit card comparison site CardHub for trademark infringement. First Premier Bank claims CardHub published First Premier’s credit card rates on its site without permission.

Shakira’s “Loca” Found to Infringe

Last week a federal judge found that Sony Corp. of America and two subsidiaries infringed copyrights to singer Shakira’s song “Loca” and Roman “Arias” Vasquez’s song “Loca con su Tiguere.” (Huffington Post)

NEW IPO MEMBER

ALEXANDER POLTORAK of Suffern, N.Y. has become an individual member of IPO.

SEPTEMBER FEDERAL CIRCUIT ARGUMENTS POSTED

The Federal Circuit oral argument schedule for September is posted on the IPO web site. To view the schedule go to www.ipo.org/ArgumentSchedule.

IP Chat Channel LogoTWO WEBINARS THIS WEEK ON IPO’S IP CHAT CHANNEL: GLOBAL PATENT PROSECUTION — OBVIOUSNESS (AUGUST 27) AND WRITTEN DESCRIPTION (AUGUST 28)

Tune in to the IP Chat Channel, Wednesday, August 27 and Thursday, August 28 at 12:00n.n. ET to discuss Global Patent Prosecution: Comparing Europe, China, and U.S. Law & Practice. These two webinars will help U.S.-based companies, large and small, to avoid rejections when they file patents overseas. U.S. filing abroad continues to grow every year. But because overseas patent offices are grounded in different legal systems, different interpretations, and different procedures, U.S. claims may need to be tweaked to pass muster. Our panels of experts – one each from China, Europe, and the U.S. – will compare and contrast patent prosecution law and practice in the three jurisdictions with regard to the key criteria of Obviousness and Written Description.

The panelists for the August 27 webinar on Obviousness are PHILIP CUPITT, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; SAMSON HELFGOTT, Katten Muchin Rosenman LLP; and DESHAN LI, Unitalen. The panelists for the August 28 webinar on Written Description are JI LIU, CCPIT; MARTIN HYDEN, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; and SAMSON HELFGOTT, Katten Muchin Rosenman LLP. 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.

GUEST PASS FOR THE IPO 2014 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 on Grouse Mountain on Monday evening. For more information or to register, visit www.ipo.org/am2014.