Intelectual Property Owners Association

Serving the Global Intellectual Property Community

Past Week’s Daily News™

Friday, September 19, 2014 1:01 pm

U.S. JUDICIAL CONFERENCE APPROVES AMENDMENTS TO FEDERAL RULES OF CIVIL PROCEDURE THAT WOULD AFFECT PATENT LITIGATION

supremecourt(200x130)On Tuesday the Judicial Conference of the United States approved and forwarded to the Supreme Court for its consideration proposed amendments to the Federal Rules of Civil Procedure. The proposed changes would affect all civil litigation, including patent litigation. One proposal deletes the Appendix of Forms, including the forms for patent and copyright infringement complaints, along with the rule that says the forms “suffice under these rules.” Other proposed changes relate to case management, discovery, and sanctions.

Last August, a Judicial Conference advisory committee proposed amendments and requested public comments. Over 2,300 written comments were submitted, including comments by IPO. The committee held three public hearings.

According to a memo submitted by the advisory committee, the final version of the amendments submitted for approval by the Judicial Conference was largely the same as the version published for public comment. The committee withdrew amendments that would have reduced the presumptive length and number of depositions under Rules 30 and 31 and the presumptive numerical limit of interrogatories under Rule 33, and withdrew an amendment that would have established a presumptive numerical limit of requests to admit under Rule 36.

The proposed amendments are being sent to the U.S. Supreme Court with a recommendation that they be adopted. If the Supreme Court adopts the amendments, they will take effect on December 1, 2015, unless Congress acts to reject, modify, or defer them.

IPO EDUCATION FOUNDATION ANNOUNCES VIDEO CONTEST WINNERS

The IPO Education Foundation is pleased to announce the winners of the 2014 IP Video Contest. Click on each student’s name to see their winning video.

13-15 Year Old Division:

NATALIE DIMUNDO, Santa Monica, CA
SIMON LUNDQUIST, Falls Church, VA

16-18 Year Old Division:

CHRISTIAN SURTZ, Batavia, IL
NOAH KLOSTER, Minneapolis, MN

The Video Contest encourages teens and the public to consider the value of the U.S. Patent System by submitting original videos illustrating why they feel the patent system is important.

This year’s contest also included an award for a teacher who referred a contest winner. Natalie DiMundo’s teacher ROSALYNN MOE will receive $1,500 towards her classroom. Thanks to Microsoft, Sterne Kessler Goldstein & Fox, and Intellectual Ventures for sponsoring this year’s contest. Congratulations to all of the winners!

ANNUAL MEETING PHOTOS POSTED

The 2014 IPO Annual Meeting photo album is now complete and on Facebook. Our photographer got some great shots. Click here to see if any are of you!

IP IN THE MASS MEDIA

News Corp. Criticizes Proposed EU Settlement with Google

Today the Wall Street Journal, U.S. print edition, reported that ROBERT THOMPSON, CEO of News Corp., wrote to the European Union criticizing the EU’s proposed settlement with Google, Inc., claiming the settlement would allow IP piracy. (News Corp. owns the Wall Street Journal’s publisher.)

Florida Virtual School May Enforce Trademark

Yesterday the Florida Supreme Court ruled that the state-created Florida Virtual School may enforce its trademark against Florida Virtual Academy and need not defer to the Florida Department of State. (TampaBay.com)

Cameron Wins “Avatar” Copyright Suit

On Wednesday a New York Judge found for film director JAMES CAMERON in a copyright suit brought against him by artist WILLIAM ROGER DEAN. Dean claimed the look of Cameron’s film “Avatar” was derived from Dean’s artwork. (Variety)

NEW IPO MEMBER

NISHA MOREAU of Oklahoma City, Okla. has become an individual member of IPO.

IP Chat Channel LogoNEXT WEEK ON IPO’S IP CHAT CHANNEL: TRADE SECRETS IN THE LIFE SCIENCES

Tune in to the IP Chat Channel, Wednesday, September 24 at 2:00p.m. ET to discuss Trade Secrets in the Life Sciences. Patents have always been the life blood of the pharmaceutical and biotech industries, but recent decisions from the U.S. Supreme Court may have made such protection harder to get and easier to invalidate. This webinar will examine the alternative of using trade secrets to protect intellectual property in the life sciences. Our panelists are MATTHEW PUGMIRE, Assistant General Counsel in the Pfizer patent group with responsibility for vaccines; DIANNA DEVORE, special counsel in the post-grant practice group at Oblon, Spivak, McClelland, Maier & Neustadt, LLP and former VP of IP at Ariosa Diagnostics; and MICHAEL SAMARDZIJA, a partner at Dentons US LLP and former director of IP at M.D. Anderson Cancer Center. They will discuss:

  • What kinds of IP in the life sciences are best suited to protection by trade secrets?
  • The potential value of “negative know-how”, i.e., what doesn’t work
  • The risk of losing trade secrets through disclosure to regulators
  • What kinds of information are amenable to trade secret protection in diagnostic laboratory-developed tests (LDTs)?
  • The risks to the makers of biosimilars posed by the disclosure requirements of the Biologics Price Competition and Innovation Act (BPCIA)

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.




Thursday, September 18, 2014 1:02 pm

HOUSE COMMITTEE APPROVES IPO-SUPPORTED TRADE SECRETS BILL

George_Holding_small
Rep. George Holding

Yesterday the House Judiciary Committee approved H.R. 5233, Rep. GEORGE HOLDING’s “Trade Secrets Protection Act of 2014”. During the committee meeting, Holding (R-N.C.) obtained approval of an amendment that requires a person subject to an ex parte seizure order to be the person who misappropriated information. It also ensures that the provision does not conflict with the Communications Decency Act and requires a study of trade secret theft that occurs outside the US. Rep ZOE LOFGREN (D-Calif.) offered an amendment to strike the ex parte seizure provisions. Lofgren’s amendment was defeated.

Committee Chairman BOB GOODLATTE (R-Va.) said that the bill would not come to the House floor before the House returns to Washington in November, after the election. IPO supports the bill and is urging prompt final passage by the House and prompt action in the Senate.

Federal Circuit Summaries Logo*** EN BANC REHEARING DENIED IN SUIT DISMISSED BECAUSE PATENT CO-OWNER COULD NOT BE INVOLUNTARILY JOINED

STC.UNM v. Intel Corp. 13-1241 — Yesterday the Federal Circuit by vote of 6 to 4 denied a petition for en banc rehearing of a district court’s dismissal of STC’s infringement suit for lack of standing. The patent claimed a method for extending the available spatial frequency content of an image. The district court decided that STC, a nonprofit arm of the University of New Mexico, could not maintain the suit because a co-owner of the patent, Sandia Corp., had not joined as a co-plaintiff. A split Federal Circuit panel originally held civil procedure Rule 19(a) did not permit STC to involuntarily join the patent’s co-owner.

Judge DYK filed a concurring opinion joined by Judges MOORE and TARANTO in which he argued that changing the court’s approach would disrupt settled precedent and established business relationships.

Judge NEWMAN, dissenting, joined by Judges LOURIE, O’MALLEY, and WALLACH, argued that excluding enforcement of a commonly-owned property right could not be reconciled with the rule of law. In a separate, lengthy dissent, Judge O’MALLEY, joined by Judges NEWMAN, LOURIE, and WALLACH, argued the court should not continue to exempt patent law from the rules governing all federal litigation without clarifying the basis for doing so.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo**PATENT INFRINGEMENT SUIT BARRED AFTER UNREASONABLE DELAY FOLLOWING REEXAMINATION

SCA Hygiene Products AB v. First Quality Baby Products, LLC 13-1564 — Yesterday in an opinion by Judge HUGHES, the Federal Circuit upheld a district court summary judgment that SCA’s patent infringement suit was barred. SCA claimed an absorbent pants-type diaper. In 2003 SCA sent First Quality a letter suggesting certain products might infringe. First Quality responded that the patent was likely invalid. SCA immediately sought reexamination and in 2007 the USPTO confirmed patentability of all original claims. SCA did not contact First Quality again until filing the infringement suit in 2010.

The Federal Circuit said laches was presumed because more than six years elapsed between SCA’s original letter and the infringement suit. Although SCA was not required to provide First Quality explicit notice of the reexamination, it was unreasonable for SCA to take more than three years following the reexamination to file suit. “SCA should have been prepared to reassert its rights against First Quality shortly after the … patent emerged from reexamination.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

PTO_campus2USPTO TO HOLD ROUNDTABLE ON INTERNATIONAL PATENT LAW HARMONIZATION

Today the USPTO published a Federal Register announcement of a roundtable on international harmonization of substantive patent law. The Office is seeking input on the definition and scope of prior art, grace period, and standards for assessing novelty and obviousness and inventive step. The roundtable will be held on November 19 at the USPTO’s Alexandria location and will be a webcast. IPO’s International Patent Law and Practice Committee will be studying the notice.

IP IN THE MASS MEDIA

Video Game Makers Settle Copyright Dispute

Yesterday CNET reported that video game maker King Digital Entertainment settled a suit against 6waves alleging two 6waves games infringed King’s copyrights on its “Farm Heroes Saga” and “Pet Rescue Saga.”

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, September 17, 2014 1:10 pm

PTO_campus2IPO TELLS USPTO NOT TO USE BROADEST REASONABLE INTERPRETATION STANDARD FOR PATENT CLAIMS IN AIA TRIALS

Yesterday IPO submitted comments to the USPTO on a Federal Register notice on America Invents Act administrative trials (inter partes review, post-grant review, covered business method review, and derivation). IPO responded to all seventeen USPTO questions, which ranged from initiation to termination of AIA trials. IPO said the Patent Trial and Appeal Board should not use the broadest reasonable interpretation standard for construing claims in AIA trials, but should use the Phillips standard. That is, claims in AIA trials should be construed in accordance with the ordinary and customary meaning as understood by one of ordinary skill in the art, the prosecution history pertaining to the patent, and prior judicial determinations and stipulations relating to the patent.

IPO also recommended that settlement discussions be encouraged, but not required, and that the PTAB should terminate any AIA trial following settlement rather than proceed to a final written decision. IPO’s U.S. Post Grant Practice Committee assisted with the letter. The chair is RICHARD RAINEY (General Electric). Vice-chairs are KEVIN LAURENCE (Oblon Spivak) and KEVIN GREENLEAF (Dentons US).

Federal Circuit Summaries Logo* * SMALLEST SALEABLE UNIT ERRONEOUS APPROACH FOR DETERMING REASONABLE ROYALTY FOR PATENT INFRINGEMENT

VirnetX, Inc. v. Cisco Systems, Inc. 13-1489 — Yesterday in a lengthy opinion by Chief Judge PROST, the Federal Circuit vacated a $368 million damage award against defendant Apple, Inc., and remanded. The claims were for systems for establishing secure communications links over a network. VirnetX alleged Apple’s “FaceTime” feature infringed. The district court instructed the jury it could use the entire market value of Apple’s multi-component iOS devices as long as each device was the “smallest saleable unit containing the patented feature.”

The jury instruction was “legally erroneous.” The “smallest saleable unit” approach was supposed to produce a royalty base more closely tied to the claimed invention than the entire market value of the accused product. “Where the smallest saleable unit is … a multi-component product containing several non-infringing features … the patentee must do more to estimate what portion of the value of that product is attributable to the patented technology.” “VirnetX effectively relied on the entire market value of the iOS devices without showing that the patented features drove demand for those devices.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo* FEDERAL CIRCUIT HAD JURISDICTION OVER BREACH OF CONTRACT SUIT

Jang v. Boston Scientific Corp. 14-134 — Yesterday in an order by Judge LINN, the Federal Circuit decided not to transfer an appeal to the 9th Circuit Court of Appeals. Jang’s patents claimed designs for intravascular stents for treating cardiovascular disease. Jang assigned his rights to Boston Scientific and later sued for breach of contract. While that suit was pending, Boston requested ex parte reexamination, and Jang’s claims were invalidated. Boston moved for summary judgment in the breach of contract suit. The district court denied the motion because Jang could seek royalties for the period before Boston’s validity challenge. The Federal Circuit asked the parties whether it had jurisdiction in light of Gunn v. Minton.

The case presented a patent issue that was “necessarily raised,” “actually disputed,” “substantial,” and “capable of resolution in federal court without disrupting the federal-state balance approved by Congress.” The ongoing royalty obligations “raise[d] the real-world potential for subsequently arising infringement suits affecting other parties” as well as conflicting validity rulings.
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO EXPANDS EDISON SCHOLARS PROGRAM TO INCLUDE STUDIES ON ABUSIVE PATENT LITIGATION

Yesterday on the USPTO’s “Director’s Forum,” Deputy Director MICHELLE LEE announced expansion of the “Edison Scholars Program” to include studies of patent litigation-related issues, and in particular, abusive patent litigation. Edison Scholars are “distinguished academic researchers” who spend 6 to 12 months with the agency studying intellectual property issues that “further the USPTO’s mission and the public interest.”

Jeffries
Rep. Hakeem

Jeffries

HOUSE PASSES BILL TO CODIFY PTO CLINIC CERTIFICATION PROGRAM

On Monday the U.S. House of Representatives passed H.R. 5108, a bill introduced by Representative HAKEEM JEFFRIES (D-N.Y.) to establish in the statute a USPTO Law School Clinic Certification Program. The vote was 327-22.

USPTO HOLDS BIOTECHNOLOGY, CHEMICAL, AND PHARMACEUTICAL MEETING

Today the USPTO will hold its first “bicoastal” meeting of the biology, chemical, and pharmaceutical partnership. The meeting will be simultaneously available at the USPTO office in Alexandria, VA and San Jose, CA and participants will be able to interact with Office personnel in person or via webcast. Agenda items include improper “markush” claims, application and RCE filing best practices, and recent U.S. Supreme Court decisions. The meeting starts at 12:00 noon Eastern, 9:00 a.m. Pacific and will be webcast.

maria_pallante
Maria Pallante

U.S. HOUSE TO HOLD COPYRIGHT OFFICE OVERSIGHT HEARING

The House Judiciary IP subcommittee has announced a hearing on Oversight of the U.S. Copyright Office at 2:00p.m. ET on September 18. The witness will be Register of Copyrights MARIA A. PALLANTE. The hearing will be held in 2141 Rayburn House Office Building. It will likely be webcast.

IP IN THE MASS MEDIA

Eminem Sues New Zealand Political Party for Copyright Infringement

Yesterday Rolling Stone reported that American rapper EMINEM sued New Zealand’s National Party for copyright infringement for using his song “Lose Yourself” in Prime Minister JON KEY’s reelection campaign ads.

Cree Sues on LED Patents

On Tuesday Cree Inc. said it sued Harvatek Corp. and Knightbright Corp. for infringing patents on LED technology. (Milwaukee Journal Sentinel)

RECENT IPO JOB BANK POSTINGS

Corporate:

Patent Counsel – Multiple Locations
Patent Expert – Portland, OR
Patent Liaison – Portland, OR
Managing Director, Licensing – Chicago, IL
Director, Standards Licensing – Chicago, IL
Patent Examiner – Denver, CO
IP Paralegal – Wichita, KS

Law Firm:

IP Prosecution Associate – Seattle, WA
Experienced Attorney – Washington, DC
Associate – Minneapolis, MN
VP Business Development – San Francisco, CA
Patent Technical Advisor (Electrical/Computer Engineering) – Chicago, IL;
Washington, DC; or Walnut Creek, CA




Tuesday, September 16, 2014 12:44 pm

PTO_campus2IPO SUPPORTS USPTO’S PATENT APPLICATION PENDENCY EFFORTS BUT RECOMMENDS FUNDAMENTAL REVIEW OF EXAMINATION PROCESS

Yesterday IPO submitted comments to the USPTO on a Federal Register notice on pendency target levels for patent applications. IPO supported the Office’s efforts to reduce application pendency and said the Office should consider publishing pendency metrics on an art unit or technology center basis. IPO recommended fundamental review of the examination process, however, in light of the many legal and technological changes, including availability of “RCEs,” that have occurred since the beginning of “compact prosecution” in the 1960s.

The IPO letter said such a review should include review of the “second action final” practice, docketing of RCEs, and the examiner “count” system that gives credit for applications abandoned in favor of RCEs. IPO’s U.S. Patent Office Practice Committee assisted with comments. Chairs are GARY GANZI (Evoqua Water) and KAVEH RASHIDI-YAZD (Siemens). Vice-chairs are ERIKA ARNER (Finnegan), COURTENAY BRINCKERHOFF (Foley & Lardner), and BILL SMITH (Baker Hostetler).

HOUSE JUDICIARY COMMITTEE TO VOTE ON TRADE SECRETS BILL ON WEDNESDAY

The House Judiciary Committee will mark up Rep. GEORGE HOLDING’s (R-N.C.) trade secrets bill, H.R. 5233, on Wednesday at 1:00 p.m. IPO supports the bill, which would create a federal civil cause of action for trade secret misappropriation. The markup will likely be webcast on the committee website.

IP Chat Channel LogoTODAY ON IPO’S IP CHAT CHANNEL: THE INTERSECTION OF TRADE DRESS AND DESIGN PATENTS

Tune in to the IP Chat Channel, Tuesday, September 16 at 2:00p.m. ET to discuss The Intersection of Trade Dress and Design Patents. Panelists include THEODORE DAVIS, Kilpatrick Townsend & Stockton LLP; REED HABLINSKI, Hewlett-Packard Co.; and PERRY SAIDMAN, Saidman DesignLawGroup. 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.

U.S. HOUSE SUBCOMMITTEE TO HOLD HEARING ON COPYRIGHT CIRCUMVENTION

The House Judiciary IP subcommittee has announced a hearing on Chapter 12 of Title 17 of the U.S. Code at 10:00a.m. ET on September 17. Chapter 12 is the circumvention section of the Digital Millennium Copyright Act, which makes it unlawful to bypass technological measures that control access to copyrighted works, such as encryption technology. The hearing will likely be webcast.

LOOKING FOR A GREAT WAY FOR YOUR ORGANIZATION TO SPREAD THE WORD ABOUT THE VALUE OF IP?

Become a sponsor of the IPO Education Foundation’s IP Video Contest. Now in its fourth year, the contest has given students across the country the opportunity to learn about the value of the patent system and to share their knowledge in a creative way. Contest winners receive a scholarship or cash prize of $5,000. If your company is interested in sponsoring an award contact Colleen Wellington-Caban at cwellington-caban@ipo.org.

USPTO POSTS NEW EXAMINATION GUIDE FOR SERVICE MARKS

Yesterday, the USPTO posted a new examination guide describing and providing examples of acceptable specimens for service marks, discussing potential refusals, and highlighting issues related to service marks for modern technology.

IP IN THE MASS MEDIA

Officials Respond to Allegations of USPTO Telework Abuse

On Saturday the Washington Post’s Federal Eye blog reported that officials from the U.S. Department of Commerce and the USPTO met with Congressional investigators to discuss allegations of abuse and fraud in the agency’s telework program. The officials reported the launch of an internal review of the program including engaging an outside consulting firm to advise the agency on how to improve supervision of patent examiners who work from home.

“Z Nation” Premieres With High Piracy Rates

Yesterday the Boston Herald reported that the series premiere of the Syfy network’s new show “Z Nation” was pirated by roughly 300,000 unique IP addresses within 24 hours of showing, ranking it above season premieres for shows such as “House of Cards” and “Orange Is the New Black.”

REACH THOUSANDS WITH YOUR BRAND

Through IPO, you can get your brand in front of thousands of practicing IP professionals in 2014. Various advertising packages are available on the popular IPO.ORG website or in the IPO Daily News™. For details, availabilities, or to reserve your space, contact Nicholas Evans at 202-507-4505 or email nevans@ipo.org.




Monday, September 15, 2014 12:19 pm

IPO CALLS FOR LEGISLATION TO ATTACK ONLINE TRADEMARK COUNTERFEITING

On September 7 the IPO Board of Directors adopted a resolution supporting in principle legislation to attack online trademark counterfeiting. Such legislation would enable brand owners to file suit against domestic websites selling or offering for sale or distributing counterfeit products, and also as to “foreign counterfeiting websites,” in order to obtain a court order that would require (a) that financial service providers cease processing payment transaction to the defendant(s) and the foreign counterfeiting website, at least in the United States, (b) that internet advertising service providers cease providing such services to the defendants and the foreign counterfeiting website, at least in the United States, and (c) any other injunctive relief the court may determine as appropriate.

The legislation should focus on trademark counterfeiting only; provide for nationwide personal jurisdiction and venue over any foreign counterfeiting website, so long as such is consistent with due process; and permit e-mail service of process to a domestic or foreign counterfeiting website without requiring leave of court based on the e-mail address listed in domain registration for the administrative or ownership contact and to the e-mail address found on the website, if no real or actual address is available for providing notice to the potential defendant.

A “foreign counterfeiting website” is defined as a website based overseas (based on contact information contained on the site and/or registration information in the domain name registration); alleged to be offering goods with “counterfeit marks” as defined in the Lanham Act, 15 USC §§ 1116 and 1127; and directed at the U.S. market, which can be assessed based on statements on the website (e.g. shipping information, price quotes in U.S. dollars, and ability to purchase from the US). For more information contact Samantha Jakhelln, samantha@ipo.org.

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.

IP IN THE MASS MEDIA

Patent Examiners Union President Responds to Allegations About USPTO Teleworking

Last week USPTO Patent Office Professional Association President Robert Budens sent a letter to POPA members responding to recent reports that patent examiners had abused their telework privileges. Budens said the report containing the allegations was “ridiculous on its face.” POPA is the labor organization that represents patent examiners. (Ars Technica)

Judicial Conference to Consider Rule Affecting Pleading in Patent Suits

The Judicial Conference of the United States meets tomorrow. On its agenda is consideration of Rule 84 of the Federal Rules of Civil Procedure, which is the basis for Form 18 on patent suits. If Rule 84 is abolished, plaintiffs in patent cases may have to be more specific in allegations of infringement. (Forbes)

WHO WAS THAT PERSON?

The IPO online membership directory is a great resource for finding contact information for colleagues or business associates. Only members can search and view the IPO online membership directory and the directory currently includes over 12,000 current affiliates worldwide. Access it at www.ipo.org/directory.

COOKIES AND COPYRIGHTS!

Cookie selling teaches Girl Scouts valuable business practices. Now they have the opportunity to learn a few more in the form of IP. IPO Education Foundation recently partnered with the Girl Scout Council of the Nation’s Capital and the USPTO to develop the IP patch. The IP patch program teaches girls about the value of IP and the process for obtaining different rights. You can help by telling your friends about the patch or volunteering to talk to a troop about what you do. Click here for more information. (Note: IPOEF cannot guarantee that cookies will be involved in any troop meetings.)