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Past Week’s Daily News™

Wednesday, 22 February, 2017 1:48 pm

Federal Circuit Summaries Logo

* * ACCUSED INFRINGER FAILED TO RAISE SUBSTANTIAL QUESTION OF PATENTABILITY TO AVOID PRELIMINARY INJUNCTION

Metalcraft of Mayville, Inc. v. The Toro Co. 16-2514 — On Thursday in an opinion by Judge MOORE, the Federal Circuit upheld a district court’s preliminary injunction against Toro. Metalcraft’s patent claimed a suspended operator platform for light utility vehicles like riding lawn mowers. Toro argued that the claims would have been obvious in light of a first prior art reference that disclosed shock absorption in a truck cab and a second that disclosed adjusting a damper spring in a rear-wheel motorcycle suspension. The district court said it could not imagine a reason, and Toro failed to offer one, to explain why a skilled artisan “would combine a motorcycle shock with a suspended truck cab and come up with a suspended operator platform.”

The district court did not abuse its discretion in determining that Toro failed to raise a substantial question of patentability. Toro offered no explanation or reasoning for combining the references, which left only the “hindsight bias” KSR warned against. The Federal Circuit cautioned that hindsight bias could not be allowed to provide “the thread that stitches together prior art patches” into the claimed invention.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP IN THE MASS MEDIA

New Zealand Supreme Court Revokes Lacoste Crocodile Trademark

Yesterday the New Zealand Harold reported that the New Zealand Supreme Court revoked registration of Lacoste’s crocodile image trademark in a suit brought by competitor Crocodile International, citing the French clothing company’s lack of use of the mark “anywhere in the world.”

U.S. Supreme Court Rejects Boston Scientific Appeal in Patent Licensing Dispute

Yesterday Yahoo! Finance reported that the U.S. Supreme Court rejected Boston Scientific Corp.’s appeal of a Maryland state court jury verdict ordering the medical device company to pay $308 million to patent licensor Mirowski Family Ventures for breach of contract concerning licensed patents related to implantable cardiac devices.




Tuesday, 21 February, 2017 1:27 pm

IP IN THE MASS MEDIA

Google and Bing to Demote Piracy Sites in UK Web Searches

Yesterday BBC News reported that search engines including Google and Microsoft’s Bing have signed a voluntary code of practice to make it more difficult for UK users to find pirated films and music by demoting illegal websites in online search results.

New Zealand Court Says Founder of Piracy Site May Be Extradited to U.S. on Fraud Charges

Yesterday a court in Auckland, New Zealand ruled that KIM DOTCOM could be extradited to the U.S. to face fraud charges related to the operation of his website Megaupload, which enabled paying users to store and share copyrighted material. Although the Court also upheld lower court decisions on 13 counts of allegations of conspiracy to commit racketeering, copyright infringement, and money laundering, there “was no crime for copyright in New Zealand law that would justify extradition.” (Reuters)

Maker of Fireball Whisky Sues Competitor for Trademark Infringement

On Monday Forbes reported that makers of Fireball Whisky makers Sazerac Brands, LLC and Sazerac Company, Inc. sued Caribbean Distillers, LLC for trademark infringement, claiming that the packaging of Caribbean’s Mad Hen cinnamon-flavored whisky is ‘substantially similar’ to its ‘Fireball’ trade dress.




Monday, 20 February, 2017 2:18 pm

Federal Circuit Summaries Logo

* * COURT IMPROPERLY DISMISSED PATENT INFRINGEMENT DECLARATORY SUIT FOR LACK OF JURISDICTION

Xilinx, Inc. v. Papst Licensing GmbH & Co. 15-1919–On Wednesday, in an opinion by Judge DYK, the Federal Circuit overturned a district court’s finding of lack of jurisdiction. The patents were directed to methods for generating and verifying memory tests in electronics. Papst sent two patent infringement notice letters and visited Xilinx to discuss licensing the patents. Xilinx sought a declaration of no infringement in the Northern District of California. The district court concluded that it lacked jurisdiction over Papst, a German company with a principal place of business in Germany, because Papst’s activities in California were solely related to attempts to license the patents.

The Federal Circuit held exercise of jurisdiction over Papst comported with due process. Papst’s letters and visit to Xilinx were sufficient to demonstrate that Papst “purposefully directed its activities to California.” Papst failed to demonstrate the required “compelling case” to show that jurisdiction was unreasonable or that litigating in California would be unduly burdensome. This was “not ‘one of the “rare” situations in which sufficient minimum contacts exist but where the exercise of jurisdiction would be unreasonable.’”
(1 to 4 stars rate impact of opinion on patent & trademark law)

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THIS WEEK ON IPO’S IP CHAT CHANNEL: WILLFULNESS, ENHANCED DAMAGES, AND OPINIONS OF COUNSEL SINCE HALO

Tune in to the IP Chat Channel on Thursday, 23 February at 2:00p.m. ET to learn the latest on Willfulness, Enhanced Damages, and Opinions of Counsel Since Halo. It has been more than six months since the U.S. Supreme Court’s Halo lowered the bar for proving willful infringement, and this boon for plaintiffs is quickly changing trial strategy. Two of our panel of experienced litigators – CHRISTOPHER MARCHESE (Fish & Richardson PC) and MICHAEL ZELIGER (K&L Gates LLP) have recently won willfulness verdicts for clients, while third, NATALIE HANLON LEH (Wilmer Cutler Pickering Hale & Dorr LLP), recently authored an article on pleading willfulness.

Our panelists will examine how courts post-Halo have decided the sufficiency of pleading for enhanced damages at the motion-to-dismiss stage. Then, they will consider the factors that have most strongly influenced recent district court decisions to enhance – or not enhance – damages, including notice by the patent owner (cases such as CH20 and Finjan), copying (Westerbeke, Imperium, and PPC), and opinions of counsel (Dominion, Presidio, and Boston University). The discussion on opinions of counsel will weight their success in warding off a finding of willfulness versus the possible negative impact on attorney-client privilege. IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

ATTEND IPO’S EUROPEAN PRACTICE CONFERENCE ON 18 MAY

Registration is open for IPO’s European Practice Conference, which will be held on 18 May 2017 in Paris, France. Speakers will explore topics such as IP strategies for the U.S., the current status of the Unitary Patent Package, the “pemetrexed” decisions in UK and Germany, preliminary injunctions, how recent FRAND decisions affect licensing, and what impact the UPC will have on licensing. To view the full program and to register, visit www.ipo.org/Europe17.

IP IN THE MASS MEDIA

Court Dismisses Turtles’ Copyright Suit Against Sirius XM

On Thursday Reuters reported that the U.S. Court of Appeals for the Second Circuit granted Sirius XM Holdings Inc.’s motion to dismiss a copyright infringement suit brought by The Turtles and other artists over the satellite radio company’s playing of songs recorded prior to 1972. The court upheld a lower court ruling that New York common law does not recognize a “right of public performance” that would require radio stations pay royalties for playing records made before 1972, which are not protected under Federal Copyright Law.




Friday, 17 February, 2017 1:32 pm

Federal Circuit Summaries Logo

** FEDERAL CIRCUIT UPHOLDS ITC’S DEFAULT JUDGMENT SANCTION AND EXCLUSION ORDER

Organik Kimya v. Int’l Trade Comm’n 15-1774 — On Wednesday in an opinion by Judge O’MALLEY, the Federal Circuit upheld an ITC sanction and 25-year exclusion order against Organik. Dow sought to prevent Organik from importing opaque polymer products that allegedly infringed Dow’s patents. Dow later added allegations of trade secret misappropriation when it learned that Organik may have coordinated production with Dow’s former employees. In violation of discovery orders, Organik deleted potentially hundreds of thousands of computer files and Dow’s former employees destroyed a hard drive, a bag full of zip drives, and “accidentially” left a computer and storage devices in a highway rest stop bathroom.

The ITC concluded that Organik undertook massive spoliation of evidence and that this “egregious behavior” would be “gross bad faith” if that existed. The ITC found that Organik’s “abhorrent conduct” was more than sufficient to justify a default judgment and that “no lesser sanction [would] adequately deter the repetition of this kind of easily accomplished and highly prejudicial destruction of evidence.” A 25-year exclusion order was appropriate based on extensive facts and expert testimony that it would take Organik that long to develop the polymer independently. The Federal Circuit held there was no abuse of discretion in the ITC’s sanction or exclusion order.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP Chat Channel Logo

NEXT WEEK ON IPO’S IP CHAT CHANNEL: WILLFULNESS, ENHANCED DAMAGES, AND OPINIONS OF COUNSEL SINCE HALO

Tune in to the IP Chat Channel on Thursday, 23 February, at 2:00p.m. ET for Willfulness, Enhanced Damages, and Opinions of Counsel Since Halo. It has been more than six months since the U.S. Supreme Court’s decision in Halo lowered the bar for proving willful infringement, and this boon for plaintiffs is quickly changing trial strategy. Two of our panel of experienced litigators—CHRISTOPHER MARCHESE (Fish & Richardson PC) and MICHAEL ZELIGER (K&L Gates LLP)—have recently won willfulness verdicts for clients. Panelist NATALIE HANLON LEH (Wilmer Cutler Pickering Hale & Dorr LLP) recently authored an article on pleading willfulness.

Our panelists will examine how courts post-Halo have decided the sufficiency of pleading for enhanced damages at the motion-to-dismiss stage. Then, they will consider the factors that have most strongly influenced recent district court decisions to enhance—or not enhance—damages, including notice by the patent owner (cases such as CH20 and Finjan), copying (Westerbeke, Imperium, and PPC), and opinions of counsel (Dominion, Presidio, and Boston University). The discussion on opinions of counsel will weigh their success in warding off a finding of willfulness versus the possible negative effect on attorney-client privilege. IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

Federal Judge Rejects Sony’s Motion to Dismiss Copyright Suit on NBC’s “Timeless”

On Wednesday Variety reported that a federal judge denied Sony’s motion to dismiss a copyright infringement lawsuit brought against it by Spanish producer Onza Partners. Onzo Partners claims that the new NBC television time-travel series “Timeless” copies the storyline of its “El Ministerio Del Tiempo.”

Tiffany & Co. Sued for Copyright Infringement over Use of Photograph

On Wednesday The Fashion Law blog reported that New York-based photojournalist PETER GOULD sued Tiffany & Co. for copyright infringement, claiming that the famed jewelry brand displays a Gould photograph of designer Elsa Peretti on its website without authorization.




Thursday, 16 February, 2017 1:34 pm

Federal Circuit Summaries Logo

* USPTO FAILED TO ADEQUATELY SUPPORT OBVIOUSNESS FINDING IN INTER PARTES REVIEW

Personal Web Techs., LLC v. Apple, Inc. 16-1174 — On Tuesday in an opinion by Judge TARANTO, the Federal Circuit vacated a USPTO inter partes review (IPR) decision against Personal Web. The claims were for a method for locating and controlling access to data through unique file name identifiers. The Patent Trial and Appeal Board found that the claims would have been obvious over two prior art references. Personal Web challenged the adequacy of the Board’s obviousness findings and explanations.

The Federal Circuit agreed that the Board’s reasoning and decision were inadequate for a sustainable obviousness determination. The Board failed to “sufficiently explain and support the conclusions” that the references disclosed all the claimed elements and that a skilled artisan would have been motivated to combine the references to achieve the claimed invention with a reasonable expectation of success. The court remanded “for the Board to reconsider the merits of the obviousness challenge, within proper procedural constraints.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

GUIDELINE ON LATIN AMERICAN PATENT AND TRADEMARK PRACTICE PUBLISHED ON IPO WEBSITE

IPO’s Latin American Practice committee has prepared a “Guideline for Patent and Trademark Prosecution and Litigation in Latin America,” which is available on the IPO website in the IPO Law Journal. The Guideline compiles selected aspects of practice in Argentina, Brazil, Colombia, Ecuador, Mexico, Paraguay, and Uruguay. Thank you to the contributors and, in particular, ROBERTO RIBEIRO (Sanofi), RICARDO NUNES (Daniel Legal and IP Strategy), and FEDERICO AULMANN (Obligado & Cia), for their work in preparing this first edition.

Information about the Latin American Practice Committee is available on the IPO website. For details on submitting articles to the IPO Law Journal, see “How to Submit an Article.”

IP IN THE MASS MEDIA

USPTO Issues Decision in Dispute on Gene Editing Technology

Yesterday the Washington Post reported that the USPTO’s Patent Trial and Appeal Board found that a patent for CRISPR gene editing technology awarded to FENG ZHANG at the Broad Institute of Massachusetts Institute of Technology and Harvard University was valid and did not overlap with a patent application filed by JENNIFER DOUDNA and EMMANUELLE CHARPENTIER at the University of California, Berkeley. The University of California maintained that Doudna and Charpentier invented the technology and were the first to disclose it in a 2012 research paper.

Blackberry Sues Nokia for Patent Infringement

On Tuesday Bloomberg reported that Blackberry Ltd. sued Nokia for patent infringement, claiming the Finnish company’s mobile network products use technology covered by as many as 11 of Blackberry’s patents.