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Past Week’s Daily News™

Wednesday, 22 November, 2017 8:20 am

Federal Circuit Summaries Logo

* * INFRINGER ENTITLED TO INTERVENING RIGHTS DEFENSE WHERE CLAIM SCOPE SUBSTANTIALLY CHANGED DURING REEXAMINATION

Presidio Components, Inc. v. American Tech. Ceramics, 16-2607 — Yesterday in an opinion by Judge DYK, the Federal Circuit upheld a district court’s determination that claim amendments made by Presidio during reexamination entitled ATC to absolute intervening rights preventing Presidio from collecting damages for the period between the original claims’ and the amended claims’ dates of issuance. The patent claimed a multilayer capacitor. Presidio argued that its claim scope did not change because its goal in amending the claims was to adopt the district court’s claim construction from a prior lawsuit between the parties.

The Federal Circuit said “the patentee’s intent in making the amendment is not determinative or controlling in determining claim scope.” The relevant inquiry was whether the original and amended claims were “substantially identical.” Here, the original and amended claims were “materially different” because the original claims allowed capacitance to be determined using a formula and the amended claims excluded determination of capacitance by any means other than actual measurement. The Court also overturned Presidio’s lost profits damage award, after finding that it failed to establish the absence of an acceptable, noninfringing alternative to its product, and vacated the permanent injunction.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Miles O'Brien

CNN’S MILES O’BRIEN TO HOST FOUNDATION AWARDS DINNER

This year’s IPO Education Foundation Awards Dinner will be hosted by emcee MILES O’BRIEN, former CNN anchor for science and technology. He joined CNN in 1992 and became the exclusive reporter for NASA programs such as the first space station launch and landings on Mars. Miles trained with NASA to be the first anchor in space and won numerous awards for his dedication and creativity. After his long tenure with CNN, Miles O’Brien formed his own production company focusing on stories for PBS, Discovery Science and the National Science Foundation.

Don’t miss out on this year’s Foundation Awards Dinner – purchase your tickets today.

IPO IN THE MASS MEDIA

Above the Law Discusses China’s Efforts to Crack Down on Counterfeiting

Yesterday Above the Law published an article titled “The Soaring IP Dragon: China Cracks Down,” discussing China’s efforts to address counterfeiting.

WE’RE THANKFUL FOR YOU!

IPO Education Foundation thanks all of the organizations and individuals who have made a financial contribution to support its activities this year. Because of you, the Foundation educated young people through the IP Video Contest and IP Patch; celebrated innovators through the Innovator Insights blog, Inventor of the Year Award, and Distinguished IP Professional Award; and began a public relations campaign to educate the media on the value of IP. Thank you for your continued support of the Foundation’s work.

HOLIDAY SCHEDULE

The IPO office will be closed tomorrow and Friday in observance of the Thanksgiving holiday.




Tuesday, 21 November, 2017 8:15 am

Federal Circuit Summaries Logo

* * FUNCTIONAL LANGUAGE DID NOT RENDER PATENT CLAIM INDEFINITE

BASF Corp. v. Johnson Matthey Inc., 16-1770 — Yesterday in an opinion by Judge TARANTO, the Federal Circuit overturned a district court judgment that BASF’s patent claims were invalid. The claims were for a partly-dual-layer arrangement of catalytic coatings on a substrate that removed nitrogen oxides from a stream of exhaust gas. The district court found the claims were indefinite under Patent Act section 112 because “composition…effective for catalyzing” and similar limitations were functionally described, did not recite “a minimum level of function needed to meet this “effective” limitation,” and did not recite a measurement method for determining effectiveness.

The Federal Circuit said that “nothing in the law precludes, for indefiniteness, ‘defining a particular claim term by its function.’” No intrinsic or extrinsic evidence supported the district court’s conclusion that a person of ordinary skill in the art would be unable to determine what materials were covered by the claims. The specification provided guidance for creating an effective arrangement of catalysts that were already known in the art and provided exemplary qualifying compositions, and the parties’ experts agreed that tests for determining catalysts’ effectiveness were well-known in the art.
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO ISSUES PROCEDURES FOR HANDLING DECISIONS ON CASES REMANDED FROM FEDERAL CIRCUIT

Last week the U.S. Patent and Trademark Office published Standard Operating Procedure, SOP 9, a new policy for handling decisions on cases remanded from the Federal Circuit for further proceedings. Consistent with PTAB’s goal of issuing decisions on remanded cases within six months of the Federal Circuit’s mandate, the Chief Judge, Deputy Chief Judge, or their delegate will discuss each remanded case with the panel prior to the issuance of the mandate, to include issues presented by the Federal Circuit’s decision and the expected procedure for preparing the remand decision. Appendix 1 to the SOP contains guidance for panels preparing for remand meetings.

The SOP indicates that parties must meet and confer to propose a procedure on remand that will be presented to the panel on a teleconference to be held within 10 business days after the mandate issues. Appendix 2 to the SOP contains additional guidance for parties, including illustrative examples from recent cases.

WIPO PUBLISHES STUDY ON VALUE OF INTANGIBLE CAPITAL IN GLOBAL SUPPLY CHAINS

Yesterday the World Intellectual Property Organization published a study of “Intangible Capital in Global Supply Chains.” Among the most significant findings was that “intangible capital,” such as technology, design and branding, accounted for about 30% of the total value of manufactured goods sold from 2000-2014. The dollar amount was estimated at $5.9 trillion in 2014. The study finds that intangible capital contributes twice as much as tangibles, such as buildings and machinery, to the total value of manufactured goods. The report, which includes case studies of coffee, solar panels, and smartphones, analyzes national and international trade statistics to arrive at its conclusions.

IP IN THE MASS MEDIA

London Boutique Sues Disney, Others on Alice Through the Looking Glass Trademark

Yesterday Bloomberg reported on suits brought by London boutique Alice Through the Looking Glass against Disney, L’Oreal, and Coty claiming that their sale of merchandise associated with Disney’s film of the same name infringes the registered trademark on its name.




Monday, 20 November, 2017 8:14 am

Commissioned staff members take official portraits at the Eisenhower Executive Office Building at the White House, Thursday, July 27, 2017, in Washington, D.C (Official White House Photo by Stephanie Chasez)

U.S. Trade Representative Lighthizer

USTR PUBLISHES OBJECTIVES FOR NAFTA RENEGOTIATION

Last week U.S. Trade Representative ROBERT LIGHTHIZER published an updated summary of the Trump administration’s objectives for NAFTA renegotiation. The section on intellectual property contains 12 objectives, including seeking provisions governing IP rights that reflect a standard of protection similar to that found in U.S. law and providing strong protection and enforcement for new and emerging technologies. In a press release posted to the USTR website, Ambassador Lighthizer said “If we are able to achieve these objectives, we will both modernize and rebalance NAFTA to better serve the interests of our workers, farmers, ranchers and businesses.”

IP IN THE MASS MEDIA

Reuters Discusses Conservatives’ Criticism of PTAB

Today Reuters published an article titled “U.S. patent review board becomes conservative target,” discussing criticism of the USPTO’s Patent Trial and Appeal Board by a number of conservative political groups.

WWD Reports on Louboutin Trademark Suit

Yesterday Women’s Wear Daily reported on Christian Louboutin’s trademark infringement suit against Van Haren in the European Union’s Court of Justice. Louboutin claims that the Dutch shoemaker’s sale of red-soled high heels is likely to confuse consumers.

Fox’s “Empire” Does Not Infringe Record Company Trademark

Last Thursday the 9th Circuit Court of Appeals affirmed a lower court ruling that Twentieth Century Fox Television’s show “Empire” does not infringe record label Empire Distribution’s trademarks.

Entertainment Companies Sue Tickbox TV for Copyright Infringement

Last week the L.A. Times reported on a copyright infringement suit filed against TickBox TV by the Alliance for Creativity and Entertainment, a coalition of studios, television networks, and online video producers. The coalition claims that Tickbox TV, which sells set-top boxes that use Kodi software to facilitate free streaming of movies and television shows, facilitates massive online piracy.

 




Friday, 17 November, 2017 8:14 am

IP IN THE MASS MEDIA

Economist Writes on Allergan’s Transfer of Patents to St. Regis Mohawk Tribe

Yesterday the Economist published an article titled “Allergan’s unusual legal tactic attracts political scrutiny,” discussing Allergan’s transfer of patents for its dry eye treatment Restasis to the St. Regis Mohawk Tribe for the purpose of shielding them from inter partes review by invoking the Tribe’s sovereign immunity.

IP Investors Now Focusing Outside U.S.

Yesterday Bloomberg Law’s Big Law Business newsletter reported that intellectual property investors speaking at the IAM 2017 Patent Law and Policy conference on Tuesday said they are focusing investment and licensing outside the U.S. because legal developments in the U.S. such as the law on patent subject matter eligibility have increased uncertainty and lowered patent values.

Screenwriters Sue Disney for Copyright Infringement

Yesterday the Daily Mail reported that screenwriters A. LEE ALFRED II and EZEQUIEL MARTINEZ JR. sued the Walt Disney Company for copyright infringement, claiming that its Pirates of the Caribbean franchise copies elements of a screenplay they submitted to Disney in 2000.

IP PATCH EVENT LEAD BY PENN STATE LAW STUDENTS

Last week IPO Education Foundation’s IP Patch curriculum was used by Pennsylvania State Law Students to teach elementary school students about the importance of intellectual property. Students were encouraged to explore their creativity and learn how to protect their inventions by using patents, copyrights, and trademarks.

IP Patch PSU Event 1 IP Patch PSU Event 2

“The event was such a hit! We had 33 Girl Scouts (Daisy, Brownie, and Junior), 11 PSU Law Students, and many people asked if I could do a similar event for boy scouts in the Spring.” -RACHEL HERDER, J.D. Ph.D. Director, Intellectual Property Clinic and Assistant Professor of Clinical Law

To access free curriculum for students from grades 2-10, visit the Education Foundation website.




Thursday, 16 November, 2017 9:07 am

Federal Circuit Summaries Logo

*** NO WAIVER OF VENUE CHALLENGE FOR FAILURE TO RAISE BEFORE TC HEARTLAND

In Re: Micron Tech., Inc., 17-138 — Yesterday in an opinion by Judge TARANTO, the Federal Circuit granted Micron’s petition for a writ of mandamus vacating the district court’s denial of its motion to dismiss or transfer the case for improper venue. The district court held that Micron had waived its venue objection under Federal Rule of Civil Procedure 12 by failing to raise the issue in a motion to dismiss filed before the Supreme Court decided TC Heartland. Micron argued that the decision was a “change of law” that obviated the rule on waiver.

The Federal Circuit agreed that TC Heartland was a “sufficiently sharp change of law” to render waiver under Rule 12 inapplicable. Micron did not waive its venue defense by failing to raise it in the earlier motion to dismiss because the objection was not available when the motion was filed. The Court remanded for consideration of non-Rule 12 arguments, such as timeliness of Micron’s post-TC Heartland motion, that the venue defense was forfeited.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO DELEGATES VISIT WITH EPO LEADERSHIP AT THE U.S. BAR – EPO LIAISON COUNCIL MEETING

On Wednesday IPO participated in the U.S. Bar – EPO Liaison Council meeting in Munich. EPO President BENOIT BATTISTELLI greeted the delegation with an overview of the EPO’s latest initiatives including a preview of its plans to provide applicants with an option to request an up to three-year postponement in examination. The EPO provided additional updates and there were a variety of discussions about practioners’ concerns and inquiries for clarification on certain EPO procedures. IPO delegates at the meeting included IPO Executive Director MARK LAUROESCH, ROBERT FURR (INVISTA), JAMES SIGNOR (Leydig, Voit & Mayer), and PAUL COLETTI (Johnson & Johnson).

Chat Channel Logo with TM

TODAY ON IPO’S IP CHAT CHANNEL™ — OUTSOURCING PATENT WORK: AVOIDING PITFALLS (ETHICS)

Tune in to the IP Chat Channel™ today at 2:00p.m. ET to earn Ethics CLE and learn how to avoid hazards that can trip up customers of patent services. Panelists include MICHAEL GNIBUS (General Electric Co.’s head of patent operations), who has supervised patent service providers for many years; MUKUNDAN CHAKRAPANI (an India-based executive of Clairvolex, a patent services provider); and MICHAEL MCCABE, an attorney who specializes in ethical issues facing IP lawyers and who represents them in disciplinary matters. Ethics CLE granted in many states. IP Chat Channel webinars are recorded and available on our website after the live webinars.

EPO STUDY FINDS UNITARY PATENT WILL BOOST EUROPEAN ECONOMY

This week the European Patent Office published a study, titled Patents, Trade, and Foreign Direct Investment in the European Union, assessing “the impact of the European patent system on the circulation of technologies through trade and foreign direct investment (FDI) in the European Single Market.” The study finds that the Unitary Patent will remove current limitations on cross-border trade in Europe and investment in IP-intensive industries, which will facilitate technology transfer and boost productivity growth and economic development.

IPO EDUCATION FOUNDATION ANNOUNCES 2017 INVENTORS OF THE YEAR

IPO Education Foundation is pleased to name the inventors of CRISPR-CAS9, a gene editing technology with the potential to cure genetic disorders like muscular dystrophy, cystic fibrosis, sickle cell anemia, and others, as this year’s Inventors of the Year Awards Dinner. This breakthrough technology allows permanent gene modification to be performed in the cells of animals and humans. Removing dysfunctional DNA sequences will not only will cure diseases, but will prevent them from being passed to future generations.

Dr. JENNIFER DOUDNA will accept the award on behalf of the University of California, Berkeley and Dr. FENG ZHANG will accept on behalf of the Broad Institute of MIT and Harvard; and the McGovern Institute for Brain Research at MIT. They will be honored for their contributions at the Foundation Awards Dinner in Washington D.C. on 5 December. Please join us to celebrate the world’s most outstanding recent inventors!

IP IN THE MASS MEDIA

US ITC to Investigate Apple on Design Patent Infringement

On Tuesday the U.S. International Trade Commission said that it will investigate a complaint filed by Aqua Connect and its subsidiary Strategic Technology Partners claiming that Apple Inc.’s screen-sharing and remote desktop server features on some Mac computers, iPhones, iPads, iPods, and Apple TVs infringe its design patents. (CNET)