Past Week’s Daily News™
Monday, July 28, 2014 12:37 pm
* * * * SANCTIONS FOR VIOLATING INJUNCTION NULLIFIED BY LATER CANCELLATION OF PATENT CLAIM BY USPTO
ePlus, Inc. v. Lawson Software, Inc. 13-1506 — On Friday in an opinion by Judge DYK, a split Federal Circuit vacated an injunction and civil contempt sanctions against Lawson. ePlus’s patent claim was for a method of on-line ordering from third-party vendors. The district court had found Lawson in contempt for violating its injunction against infringement and imposed sanctions including an $18 million fine. While the appeal of the contempt finding was pending, the USPTO invalidated the claim during reexamination, and a different Federal Circuit panel upheld the invalidity decision.
The Federal Circuit held the contempt sanctions as well as the injunction had to be set aside due to cancellation of the claim on which they were based. Similar to the Fresenius decision where later cancellation of the claims precluded the patentee from recovering an earlier non-final damages judgment, the civil contempt sanctions could not stand. Judge O’MALLEY in a 17-page dissent argued that while the injunction could not remain in effect prospectively, Fresenius did not govern this appeal. She said Lawson did not challenge the district court’s judgment on validity of the claim and the injunction was final except for the district court’s continuing equitable power over it. The majority allowed the USPTO to “displace a judgment of an Article III court.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
IP IN THE MASS MEDIA
Economist Reports on Study Unfavorable to Patent System
On Friday on its Free Exchange blog, The Economist reported on a recent study on the costs and benefits of the patent system. The study put costs much higher than some previous studies.
Bose Corp. Sues for Patent Infringement
On Friday PCWorld reported that Bose Corp. filed a patent infringement suit and a complaint at the U.S. International Trade Commission against Beats Electronics on patents related to noise canceling headphones.
Entering U.S. Law Students Could Hit 40-Year Low
The ABA Journal reported Friday that applications for law school this fall are down 8 percent, following double-digit declines the previous two years. According to one professor, the entering class nationwide may be about 38,000, which would make it the smallest group to enter ABA-accredited schools in 40 years.
Inventors Market Smartshoes
On Saturday the Wall Street Journal reported on a product to be sold in India, smartshoes called Lechal. The shoes sync up with a smartphone app that uses Google Maps and vibrate to tell users when and where to turn to reach their destination. The co-inventors are U.S. educated. One was a U.S. patent prosecutor.
THIS WEEK ON IPO’S IP CHAT CHANNEL: OPEN SOURCE SOFTWARE
IPO’s Open Source Committee will host the IP Chat Channel on Thursday, July 31 at 2:00p.m. ET to discuss Open Source Software: What Every IP Attorney Needs to Know. Moderated by KENNETH CORSELLO, IBM Corp., panelists include VICTOR HUANG, Illumina; JOSEPH D’ANGELO, EMC Corp.; and ELAINE LEE, Hewlett-Packard Co. 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.
NIKE SEES LARGE INCREASE IN DESIGN PATENTS
The IP Record includes a list of the companies who received the most design patents in 2013. While Samsung Electronics Co., Ltd. and Microsoft Corp. still topped the list with 515 and 409 design patents, respectively, the company near the top of the list with the largest increase was Nike, Inc. Nike received 281 design patents in 2013. This number represents a 130% increase over 2012 numbers.
AKIN GUMP STRAUSS HAUER & FELD LLP TO SPONSOR ANNUAL MEETING
The Technology Centers at the IPO Sept. 7 to 9, 2014 Annual Meeting in Vancouver, Canada will be sponsored by Akin Gump Strauss Hauer & Feld LLP. For more information and to register, visit www.ipo.org/AM2014.
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.
Friday, July 25, 2014 12:40 pm
* * ITC NOT COMPELLED TO CONSIDER NO-INFRINGEMENT ARGUMENT NOT PRESERVED FOR REVIEW
In Re Nokia Inc. 14-133 — Yesterday in a per curiam opinion, a split Federal Circuit denied Nokia’s writ of mandamus petition. InterDigital Communications sought to prevent Nokia from importing handsets that allegedly infringed InterDigital’s patents for wireless cellphone technology. In an earlier appeal, the Federal Circuit overturned the ITC’s finding of no infringement. On remand the ITC determined that Nokia had waived any argument that “scrambling codes” in the accused devices were not “transmitted” as required by the patent claims. Nokia asserted the ITC “unlawfully deviate[d]” from the Federal Circuit’s earlier mandate.
The Federal Circuit said nothing in its earlier decision compelled the ITC to consider Nokia’s no-infringement argument. Nokia was “free to raise the issue . . . on remand. But that did not suggest, and did not mandate, that the Commission could not consider whether the issue had been preserved for review.” Judge NEWMAN dissented.
(1 to 4 stars rate impact of opinion on patent & trademark law)
AIA PROCEEDINGS DATA IN IP RECORD
The IP Record includes data on monthly inter partes review and covered business method review petitions filed from September 2013-June 2014. The number of IPR petitions filed more than doubled over that time period from 75 to 184.
IP IN THE MASS MEDIA
Qualcomm Reports Licensing Issues in China
Yesterday Qualcomm, Inc. reported an increase in earnings, but said one of its major businesses—licensing patents—was encountering “significant challenges” in China. The company disclosed several issues including disputes with companies in China that it believes are not fully complying with their contractual obligations. (Wall Street Journal)
A&E Sued Over “Duck Dynasty” Apparel Mark
Florida company Hajn has filed a trademark infringement suit against A&E over the television network’s sale of clothing baring the phrase “My favorite color is camo.” Hajn registered the slogan as a trademark in 2011. A&E started selling clothing with the slogan after Duck Dynasty star Si Robertson said it on air. (CNN)
University Sues Author
Yesterday the Chicago Tribune reported that Northwestern University has filed a copyright infringement suit against former employee NINA BARRET. Barrett is said to have been writing a book for the university and took the manuscript and research with her when she left the university in 2013.
NEXT WEEK ON IPO’S IP CHAT CHANNEL: OPEN SOURCE SOFTWARE
IPO’s Open Source Committee will host the IP Chat Channel on Thursday, July 31 at 2:00p.m. ET to discuss Open Source Software: What Every IP Attorney Needs to Know. If software is eating the world, then open source software has swallowed a big bite. Many products sold today – from gene sequencers to electric trains to stand alone software applications – contain open source software as part of or as a complement to that product. While product developers find open source to be a very valuable tool, it comes with some legal strings attached and should be used properly. Unfortunately, many business and IP professionals are unfamiliar with the legal issues and compliance requirements that open source licenses impose. As a result, many businesses do not have in place a review process to ensure compliance with the open license and to advise the business team on the legal impact of using a particular open source software package. Tune in to this webinar to learn the basics of open source from an IP law perspective. Our panel includes in-house practitioners who advise their clients on open source issues on a regular basis. Among the issues they will discuss are a) What are “open source software” and “open source licenses”? b) What are examples of conditions set by open source licenses and what is their relationship with IP law? c) What happens if you use or distribute code without complying with an open source license? d) How do you manage the risks associated with open source code? Moderated by KENNETH CORSELLO, IBM Corp., panelists include VICTOR HUANG, Illumina; JOSEPH D’ANGELO, EMC Corp.; and ELAINE LEE, Hewlett-Packard Co. 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.
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP TO SPONSOR ANNUAL MEETING EVENT
What happens when your batteries on your smart phone, tablet or laptop run low during our conference? You visit the charging stations to power up at the IPO Sept. 7 to 9, 2014 Annual Meeting in Vancouver, Canada, sponsored by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. For more information and to register, visit www.ipo.org/AM2014.
Thursday, July 24, 2014 12:35 pm
ONE WEEK LEFT FOR THE IPO ANNUAL MEETING EARLY REGISTRATION DISCOUNT
Register before July 31 and receive $100 off the registration fee for IPO’s Annual Meeting. This year’s Annual Meeting will take place Sept. 7-9 at the Vancouver Convention Center in Vancouver, Canada. To view the program or to register, visit www.ipo.org/am2014.
IP RECORD INCLUDES TOP 100 UNIVERSITIES LIST
For the first time, the 2014 IP Record includes a list of the Top 100 Worldwide Universities Granted U.S. Utility Patents in 2013. The list was created through the combined efforts of IPO and the National Academy of Inventors. The top 13 entities on the Universities List also appear on IPO’s Top 300 Patent Owners List. Click here to access the IP Record. The Universities List is on page 18.
U.S. HOUSE SUBCOMMITTEE TO HOLD COPYRIGHT HEARING
Today, July 24, the U.S. House Judiciary IP Subcommittee will hold a hearing titled “Copyright Remedies.” The hearing will be held at 1:30p.m. ET in Room 2141 Rayburn. It will likely be webcast.
MEET THE COMMITTEE LEADERS: JOSHUA JARVIS
JOSHUA JARVIS is a vice-chair of the IPO Domain Names and Social Media Committee. He is currently an associate at Foley Hoag LLP. He specializes in intellectual property matters, advising clients on the full range of trademark, copyright, domain name, and social media issues. To join the Domain Names and Social Media or another one of IPO’s 29 Standing IP Committees, click here.
IP IN THE MASS MEDIA
Cubist and Hospira Strike Temporary Deal
Hospira has agreed to delay producing a generic version of the skin infection fighting drug Cubicin until at least December 1. Patent owner Cubist recently filed a patent infringement suit against Hospira, which had announced plans to produce a generic version of Cubicin. (Boston Business Journal)
Article Argues Copyright Infringement is Not “Theft”
In an article published yesterday on Techdirt.com, MIKE MASNICK argued that copyright infringement encourages, rather than discourages, creativity. The article argued that such infringement cannot be considered “theft”.
Amazon Enforces “Fire” Trademark
In advance of its recent release of Fire TV, Amazon registered “Amazon Fire,” “Fire,” and other marks for certain products. The owners of fireTVnews.com recently turned over the domain and other social media accounts to Amazon. (Ars Technica)
VINSON & ELKINS LLP TO SPONSOR ANNUAL MEETING
The Tuesday Breakfast and Breaks at the IPO Sept. 7 to 9, 2014 Annual Meeting in Vancouver, Canada will be sponsored by Vinson & Elkins LLP. For more information and to register, visit www.ipo.org/AM2014.
Wednesday, July 23, 2014 12:36 pm
IPO PUBLISHES ANNUAL IP RECORD
IPO has published its 7th Annual IP Record for IPO members. The IP Record contains statistics on IP activity worldwide. It features the Top 300 Patent Owners of 2013 among other data from the USPTO and IP offices and courts worldwide.
This year the IP Record is available in Adobe Flash and pdf format on the IPO website. The interactive Flash format allows for increased interaction with the contents. For example, you can view the IP Video Contest winning videos in the IP Record or be directed to more information about upcoming IPO events.
Click here to read this year’s IP Record. This publication is for IPO members only so you will need a password to access it. If you do not know your login information, please e-mail firstname.lastname@example.org to have it sent to you.
SESSION ON HOW TO SAVE YOUR BRAND AT IPO’S ANNUAL MEETING
During IPO’s Annual Meeting, September 7-9, in Vancouver, Canada, a session will be held on “Endangered Trademarks: How to Save Your Brand.” A variety of topics related to protecting your brand will be covered. When do you know your mark is generic? And what can you do to avoid this? Speakers will present strategies to retain rights knowing changes are inevitable and discuss potential risks of licensing a legacy mark. Finally, panelists will discuss modernizing your brand and protecting fluid marks. Moderated by ERIN HENNESSY, Bracewell & Giuliani LLP, panelists include: OLIVIA MARIA BARATTA, Kilpatrick Townsend & Stockton LLP; JANICE BERESKIN, Bereskin & Parr, ALISON TAN, Procter & Gamble Co.; and MARGARET WALKER, Xerox Corporation. To view the full program and to register, visit www.ipo.org/am2014.
U.S. COPYRIGHT OFFICE REQUESTS ADDITIONAL INPUT ON METHODS OF LICENSING MUSIC
Today the U.S. Copyright Office published a Federal Register notice requesting additional public input for a study about existing methods of licensing musical works and sound recordings. The Office indicated that stakeholders raised several issues in response to the initial Federal Register notice in March and during roundtable events in June that merit further consideration. Questions in the notice include whether certain statutory licenses under Copyright Act section 115 should be eliminated or modified “to reflect the realities of the digital marketplace”; how to enhance transparency in reporting usage, payment, and distribution data; and what would happen if major publishers completely withdrew from performance rights organizations. Comments are due August 22. IPO’s Copyright Law and Practice Committee will be studying the notice.
FEDERAL LOBBYING REPORTS IN FOR SECOND QUARTER
Second quarter federal lobbying disclosure reports are available. Politico Pro Technology, a publication that concentrates on information technology companies, reported that Google, Facebook, Amazon and Apple increased their lobbying expenditures. Microsoft, Netflix, and Yahoo kept their Washington spending flat. Information on spending in other industries has not been reported in sources readily available to IPO. A number of industries appear to continue to spend heavily on lobbying IP issues, including patent litigation reform.
TODAY ON IPO’S IP CHAT CHANNEL: INTER PARTES REVIEWS OF PHARMACEUTICAL PATENTS
IPO’s Pharmaceutical & Biotechnology Issues Committee will host the IP Chat Channel today, Wednesday, July 23 at 2:00p.m. ET to discuss Inter Partes Reviews of Pharmaceutical Patents: Understanding How IPRs are Changing the Landscape of Innovator/Generic Litigation. Moderated by PAUL GOLIAN, Bristol-Myers Squibb Company, panelists include AARON BARKHOFF, McAndrews, Held & Malloy, Ltd.; GRANTLAND DRUTCHAS, McDonnell Boehnen Hulbert & Berghoff LLP; and MICHAEL FULLER, Knobbe, Martens, Olson and Bear, L.L.P. 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.
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.
Tuesday, July 22, 2014 12:38 pm
LIFTING THE TONE OF INTELLECTUAL PROPERTY DEBATES
Last week the Wall Street Journal reported on words including “adversary,” “opponent,” and “friend” used in the U.S. Supreme Court for the past 60 years to refer to the lawyer on the other side. Since JOHN ROBERTS became Chief Justice, FRIEND has become the term of choice. Court observers believe it may reflect the Chief Justice’s desire to lift the tone of oral arguments. Lawyers appearing before the court take cues from the Chief Justice when he makes comments about their opponent such as “Your friend says . . . .” Some say it has an impact on the atmosphere.
We wonder whether the IP community should follow the Chief Justice’s lead. News articles on patent litigation call lawsuits “wars,” “brawls,” and “rows.” Magazines compile honor rolls of the law firms “most feared.” How about speaking of patent suits as honest business disputes between friendly competitors?
Legislators can improve their tone too. We imagine House Speaker BOEHNER saying to the press, “I disagree with the decision of my friend Senate Majority Leader REID to block a vote on patent reform, but I understand his point of view.” Reid replies, “I respectfully disagree with my friend Speaker Boehner.” We can hope.
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.
MEET THE COMMITTEE LEADERS: GARY ROPSKI
GARY ROPSKI is a vice-chair of the IPO U.S. Patent Law Committee. He is currently a shareholder at Brinks Gilson & Lione. He focuses his practice on high-stakes patent litigation, on acting as a court-appointed Special Master in intellectual property cases, and in arbitration and mediation matters. He served as president of Brinks from 2006 to 2012. To join the U.S. Patent Law or another one of IPO’s 29 Standing IP Committees, click here.
IP IN THE MASS MEDIA
Companies in Disputes Over Hepatitis C Treatment
On Sunday the Wall Street Journal reported that several drug companies are involved in legal disputes surrounding the new hepatitis C treatment Sovaldi. Companies include Gilead Sciences, Inc., Roche Holding, Merck and Abbvie.
U.S. State Supreme Court to Review Takedown Order
The Georgia Supreme Court has agreed to review a lower court’s restraining order against MATTHEW CHAN owner of the website Extortion Letter Info. The order to protect poet LINDA ELLIS instructs Chan to remove over 2,000 posts relating to Ellis and her poem “The Dash.” (Ars Technica)
U.S. Still Biggest User of The Pirate Bay Site
Wired UK reported that traffic to the peer-to-peer file sharing site The Pirate Bay has more than doubled since 2011 despite being blocked by ISP providers in numerous countries. It is estimated that one third of the traffic to the site comes from individuals in the U.S.
AUGUST FEDERAL CIRCUIT ARGUMENTS POSTED
The Federal Circuit oral argument schedule for August is posted on the IPO web site. To view the schedule go to www.ipo.org/ArgumentSchedule.
IS YOUR COMPANY HIRING?
Any IPO member can post available positions on IPO’s IP Job Bank free of charge. Postings are split into either corporate or law firm positions and can be viewed by the public. Positions are removed or renewed after 60 days. To view the IP Job Bank, go to www.ipo.org/jobbank.