Intellectual Property Owners Association

Serving the Global Intellectual Property Community

ReadMore

Past Week’s Daily News™

Wednesday, 18 January, 2017 1:49 pm

U.S. SUPREME COURT HEARS CASE ASKING WHETHER DISPARAGEMENT PROVISION OF TRADEMARK ACT IS INVALID UNDER FIRST AMENDMENT

Today the U.S. Supreme Court will hear oral arguments in Lee v. Tam (15-1293), in which the court will consider whether the disparagement provision of Trademark Act section 1052(a) is invalid under the Free Speech Clause of the First Amendment. When Tam sought to register THE SLANTS in connection with “live performances by a musical band,” the USPTO rejected the application as disparaging under section 1052(a). On appeal to the Federal Circuit, the original three-judge panel said that substantial evidence supported the USPTO’s finding that the mark would likely be “offensive to a substantial composite of people of Asian descent.”

The Federal Circuit subsequently vacated that opinion and asked the parties to address whether the bar on registration of disparaging marks violated the First Amendment of the U.S. Constitution. A majority of the Federal Circuit sitting en banc said that the bar on registration “amounts to viewpoint discrimination,” which did not survive “the strict scrutiny review appropriate for government regulation of message or viewpoint.” Moreover, because the government offered no legitimate interests to justify section 1052(a), “it would be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.”

Federal Circuit Summaries Logo

* * FEDERAL CIRCUIT UPHOLDS DISTRICT COURT’S INDUCED PATENT INFRINGEMENT FINDING AGAINST GENERIC DRUG MANUFACTURER

Eli Lilly and Co. v. Teva Parenteral Medicines, Inc. 15-2067 — On Thursday in an opinion by Chief Judge PROST, the Federal Circuit upheld a district court’s induced infringement finding against Teva. Lilly’s patents related to methods for treating cancer by pretreating a patient with folic acid and vitamin B12 prior to administering pemetrexed, a chemotherapy drug marketed under the brand ALMITA®. Teva filed an abbreviated new drug application with the FDA seeking to market generic versions of the drug. Lilly argued that the direct infringement required for inducement was divided between physicians and patients. The physicians administered the pemetrexed and folic acid and prescribed and directed patients to self-administer folic acid, which was a condition of the patient’s participation in the pemetrexed treatment. The district court found that performance of the claimed steps would be attributable to the physicians.

The Federal Circuit agreed that physicians directed or controlled patients’ actions sufficiently to satisfy the test for direct infringement under Akamai V. Teva also had the requisite intent to induce infringement by providing product labeling that unambiguously encouraged or recommended infringement.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP IN THE MASS MEDIA

Mark Zuckerberg Testifies for Oculus VR in Copyright Infringement and Trade Secret Theft Trial

Yesterday the New York Times reported that Facebook CEO MARK ZUCKERBERG testified in the copyright infringement and trade secret theft suit brought by videogame publisher ZeniMax Media against Oculus VR, the virtual reality company Facebook purchased for $2 billion in 2014. ZeniMax claims that Oculus VR stole elements of its virtual reality headset technology.




Tuesday, 17 January, 2017 1:48 pm

IP IN THE MASS MEDIA

Singer-Songwriter Sues Gwen Stefani, Pharrell Williams for Copyright Infringment

Last Friday the Hollywood Reporter reported that singer-songwriter RICHARD MORRILL, formerly of the funk metal band L.A.P.D. that went on to become known as Korn after his depature, sued GWEN STEFANI, her company Harajuku Lovers, PHARRELL WILLIAMS, and Intersceope Records, claiming Stefani and Williams’s song “Spark the Fire” copies his 1996 song “Who’s Got My Lightah.”

Eyeglasses Brand Sues Snapchat on Eyeball Logo

Last week Slate reported that eyeglasses brand Eyebobs sued Snap, parent company of the social media app Snapchat, for trademark infringement. Eyebobs claims that the eyeball logo featured on vending machines for dispensing Snapchat’s Spectacles is confusingly similar to its trademarked logo.

Baltimore Company Settles Patent Dispute with VW on Hybrid Engine Technology

On Friday the Baltimore Sun reported that Baltimore based Paice LLC and the Abell Foundation settled a patent infringement dispute with Volkswagen AG concerning hybrid engine technology.




Monday, 16 January, 2017 2:12 pm

U.S. SUPREME COURT TO CONSIDER COMMERCIAL MARKETING UNDER BIOLOGICS LAW

On Friday the U.S. Supreme Court agreed to review the linked cases of Sandoz Inc. v. Amgen Inc. (15-1039) and Amgen Inc. v. Sandoz Inc. (15-1195). The claims were for methods for using filgrastim for stimulating bone marrow to increase production of neutrophils, sold under the brand “Neupogen.” Sandoz sought FDA approval to manufacture a “biosimilar” product. Amgen alleged that Sandoz violated the Biologics Price Competition and Innovation Act of 2009 (BPCIA) by providing ineffective notice of commercial marketing before the product was licensed by the FDA. BPCIA states that the “applicant ‘shall provide’ notice of commercial marketing no later than 180 days before commercial marketing … of the licensed product.”

A split Federal Circuit 3-judge panel vacated a district court judgment that Sandoz correctly interpreted the BPCIA. The majority decided “shall” in this context is mandatory, and effective notice may only occur after the product is licensed by the FDA. The Supreme Court will address several questions in these linked cases.

In Sandoz, the questions are (1) whether notice of commercial marketing given before FDA approval can be effective, and (2) in any event, whether it is improper to treat the BPCIA’s “Notice of commercial marketing” provision as a stand-alone requirement that creates an injunctive remedy and delays all biosimilars by 180 days after approval.

In Amgen, the questions are whether a biosimilar applicant is required to provide the reference product sponsor with a copy of its biologics license application and related manufacturing information, and (2) where an applicant fails to provide that information, whether the sponsor’s sole recourse is to commence a declaratory judgment and/or patent infringement action.
IPO’s Amicus Committee will be studying the cases.

IPO MEETS WITH INDUSTRY TRILATERAL ON SUBSTANTIVE PATENT LAW HARMONIZATION

On Sunday an IPO delegation led by Executive Director MARK LAUROESCH attended a meeting of the Industry Trilateral associations in Munich, Germany. The Industry Trilateral includes IPO, AIPLA, Business Europe, and the Japan Intellectual Property Association. Agenda items for the meeting focused on substantive patent harmonization including issues related to grace period, prior user rights, and conflicting applications. In addition to Mr. Lauroesch, IPO was represented by DEAN HARTS (3M), VANESSA PIERCE ROLLINS (IPO Senior Counsel, International Affairs), and HOLGER TOSTMANN (Wallinger Ricker Schlotter Tostmann). IPO would like to offer special thanks to the Wallinger firm, and to Dr. Tostmann in particular, for hosting the Sunday meeting.

Trilateral 011517
IPO’s Holger Tostmann, Mark Lauroesch, Vanessa Pierce Rollins, Dean Harts

Sunday concluded the first of five days of international meetings. During the week, the Industry Trilateral will continue substantive harmonization discussions. The Industry Trilateral will then be joined by the Korea Intellectual Property Association and the Patent Protection Association of China, collectively the “Industry IP5,” to discuss the Global Dossier and procedural patent harmonization in preparation for meetings with the IP5 patent offices. The IP5 patent offices are the USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO).

ATTORNEY FEE SHIFTING IN PATENT SUITS IN U.S. DISTRICT COURTS: QUARTERLY REPORT

During the fourth quarter of 2016 (1 October- 31 December), 24 motions for attorney fees were decided in the U.S. District Courts. Patent owners filed 10 (42%) of the motions and accused infringers filed 14 (58%). A breakdown of motions granted and denied is below.

Motions Granted — 7 (30%)
• Patent Owner – 3
• Accused Infringer – 4

Motions Denied — 17 (70%)
• Patent owner – 7
• Accused infringer – 10

A full list of opinions is available on the IPO website.

IP Chat Channel Logo

THIS WEEK ON IPO’S IP CHAT CHANNEL: EVIDENCE OF PRIOR ART AT THE PTAB: RIGOROUS PROOF – OR ELSE

Tune in to the IP Chat Channel on Thursday, 19 January, at 2:00p.m. ET for Evidence of Prior Art at the PTAB: Rigorous Proof – or Else. Several recent decisions of interest by the PTAB exhibit a “man bites dog” pattern in which the patent owner has succeeded in disqualifying the petitioner’s evidence of prior art and saved patent claims as a result. These decisions reflect the limited discovery allowed by the PTAB. While ambiguity about prior art might be resolved in discovery at district court, the PTAB generally requires evidence of prior art to be meticulously substantiated in the petition for an AIA review. These cases, such as Blue Calypso v. Groupon and GoPro v. Contour IP, expand the limits of existing case law on the use of Internet-based and printed prior art regarding public accessibility to those skilled in the art.

Moreover, in a recent post-grant review (PGR), Altaire Pharmaceuticals v. Paragon Bioteck, the first time the PTAB upheld a patent in a PGR, the patent survived because the petitioner failed to prove that the claims were invalid due to public use or on-sale activity. Altaire asserted that earlier sales of its own eye solution product has made Paragons invention obvious but failed to conform to PTAB rules about experimental testing.

The panelists are DAVID CONRAD (Fish & Richardson PC), BRIAN MUDGE (Andrews Kurth Kenyon LLP), and MICHAEL ROSATO (Wilson Sonsini Goodrich & Rosati). 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

Australian Winery Wins Trademark Registration Dispute in China

Last week Reuters reported that the Beijing High People’s Court granted Australia’s Treasury Wine Estates trademark rights to “Ben Fu,” cancelling a Chinese individual’s 2009 mark for failure “to demonstrate any genuine use of the trademark for wine or related business activities.”

L.A. Gear Opposes Chargers Trademark Registrations

Last week CBS Sports reported that 1990’s shoe manufacturer L.A. Gear opposed the Chargers’ application to register a new “L.A.” logo following the NFL team’s recent move to Los Angeles.




Friday, 13 January, 2017 1:38 pm

USPTO REQUESTS COMMENTS ON RETAINING ACCELERATED EXAMINATION PROGRAM

Yesterday the U.S. Patent and Trademark Office published a Federal Register notice requesting comments on whether the accelerated examination program should be retained due to the low volume of applicant use. The program, which permits an application to be examined out of turn upon appropriate showing by the applicant, has accepted fewer than 250 applications per fiscal year from 2012-2015. In light of this low usage coupled with the overall reduction in first action pendency and the “Track One” program for prioritized examination, the Office is seeking user feedback on whether the accelerated examination program provides sufficient benefit to the public to justify the cost of continuing to implement it. Written comments are due 13 March 2017. IPO’s U.S. Patent Office Practice Committee is studying the notice.

IP Chat Channel Logo

NEXT WEEK ON IPO’S IP CHAT CHANNEL: EVIDENCE OF PRIOR ART AT THE PTAB: RIGOROUS PROOF – OR ELSE

Tune in to the IP Chat Channel on Thursday, 19 January at 2:00p.m. ET for Evidence of Prior Art at the PTAB: Rigorous Proof – or Else. Several recent decisions at the PTAB exhibit a “man bites dog” pattern in which the patent owner has succeeded in disqualifying the petitioner’s evidence of prior art and saved patent claims as a result. These decisions reflect the limited discovery allowed by the PTAB to meet its tight deadlines. While ambiguity about prior art might be resolved in discovery at district court, the PTAB generally requires evidence of prior art to be meticulously substantiated in the petition for review. These cases, such as Blue Calypso v. Groupon and GoPro v. Contour IP, expand the limits of existing case law on the use of Internet-based and printed prior art regarding public accessibility to those skilled in the art.

Moreover, in a recent post-grant review (PGR) Altaire Pharmaceuticals v. Paragon Bioteck, the first time the PTAB upheld a patent in a PGR, the patent survived because the petitioner failed to prove that the claims were invalid due to public use or on-sale activity. Altaire asserted that earlier sales of its own eye solution product made Paragon’s invention obvious but failed to conform to PTAB rules about experimental testing.

The panelists are DAVID CONRAD (Fish & Richardson PC), BRIAN MUDGE (Andrews Kurth Kenyon LLP), and MICHAEL ROSATO (Wilson Sonsini Goodrich & Rosati). 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

Viacom Prevails in “The Krusty Krab” Trademark Suit

Yesterday the Hollywood Reporter reported that a federal judge found that Nickelodeon parent company Viacom’s unregistered trademark on “The Krusty Krab,” a fictional restaurant in the Nickelodeon cartoon SpongeBob Squarepants was valid and infringed by the owner of an as-yet-unopened restaurant called “Krusty Krab.” Viacom did not succeed on a trademark dilution claim because it failed to show that the owner had used the mark in commerce.

Bloomberg Reports on Trademark Dispute between Makers of Mermaid Tail Blankets

Yesterday Bloomberg reported on a trademark dispute between the makers of the competitor “Blankie Tails” and “Snuggie Tails” mermaid-tail-shaped blankets.

JOIN US FOR AN ORIENTATION TO IPO

New to IPO? Already a member but need to refresh your memory on the benefits? Trying to find ways to get your staff involved? Join us for a 30-minute IPO membership orientation call. Calls for corporate and small business members are held on the 3rd Tuesday of each month from 3:00p.m. ET to 3:30p.m. ET. Calls for law firm members are held on the 4th Tuesday of each month from 3:00p.m. ET to 3:30p.m. ET. Contact LORNA SODERBERG (LSoderberg@ipo.org) for further information.




Thursday, 12 January, 2017 1:44 pm

IP IN THE MASS MEDIA

Roc Nation, Tidal Challenge Authority of Prince’s Estate to Bring Copyright Suit

Yesterday Hollywood Reporter reported that Roc Nation and Tidal challenged the authority of late musician Prince’s estate administrator Bremer Trust to bring a copyright infringement suit against the companies because it “lacks the requisite authority to authorize the instant lawsuit” and because “Plaintiffs are not the real parties in interest with respect to the claims asserted.”

IP Chat Channel Logo

TODAY ON IPO’S IP CHAT CHANNEL: DESIGN PATENTS: FUTURE OF DAMAGES AFTER APPLE V. SAMSUNG

Tune in to the IP Chat Channel today at 2:00p.m. ET for Design Patents: Future of Damages After Apple v. Samsung. Our panel includes Prof. THOMAS COTTER (University of Minnesota School of Law), DAWN HALL (FTI Consulting), and RICHARD STOCKTON (Banner & Witcoff, Ltd.). IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.