Intelectual Property Owners Association

Serving the Global Intellectual Property Community

Past Week’s Daily News™

Tuesday, July 22, 2014 12:38 pm

commentandanalysis_small

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.

Ropski_Gary

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.




Monday, July 21, 2014 12:33 pm

LARGE ATTENDANCE EXPECTED FOR IPO’S VANCOUVER MEETING

Large attendance appears likely at IPO’s 42nd Annual Meeting, to be held in Vancouver from September 7 to 9. At this point, 7 weeks before the meeting, registration is higher than at the same point in advance of last year’s Boston meeting, which had attendance of more than 1,000. To register, click here.

HELP US EDUCATE AND INSPIRE KIDS – SPONSOR THE IP VIDEO CONTEST!

The submissions for the 2014 IP Video Contest are in and under review, but only two opportunities to sponsor an award remain! 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. Sponsors receive recognition for their support and four complimentary tickets to attend the Foundation Awards Dinner in December in Washington, DC. Special thanks to our current IP Video Contest sponsors: Intellectual Ventures, Microsoft, and Sterne Kessler Goldstein Fox, PLLC! If your firm or company is interested in sponsoring an award contact Colleen Wellington-Caban at cwellington-caban@ipo.org.

Federal Circuit Summaries Logo

* * ITC ERRED IN CONSTRUING NON-REVIEWABLE ORDER AS REVIEWABLE INITIAL DETERMINATION

Align Technology, Inc. v. Int’l Trade Commission 13-1357 — On Friday in an opinion by Judge CHEN, the Federal Circuit vacated an ITC decision. Align’s patents claimed methods and treatment plans for using clear dental appliances to position the teeth, which were marketed as the “INVISALIGN SYSTEM.” In an earlier investigation, the ITC granted a Consent Order prohibiting OrthoClear from importing infringing appliances “or any other articles manufactured in violation of the patents.” OrthoClear’s successor began importing the digital data sets necessary for producing the appliances.

Align filed a new ITC complaint alleging violation of the Consent Order. The Administrative Law Judge issued an order that the data sets were within the scope of the prohibited “articles” and denied a motion to terminate. The ITC determined the ALJ’s order was actually an “initial determination” and reversed. The Federal Circuit held the ITC exceeded its authority in construing the order as a reviewable initial determination. Under the ITC’s rules, the ALJ’s decision denying the motion to terminate was a non-reviewable order.
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO TO HOLD SOFTWARE MEETING

Tomorrow from 1:00 to 4:30p.m. ET, the USPTO is hosting a Software Partnership meeting at its headquarters in Alexandria, Virginia. Topics for discussion include claim clarity and functional language. IPO Software and Business Methods Committee will be studying the training modules. The meeting will be webcast.

IP IN THE MASS MEDIA

YouTube Star Sued for Copyright Infringement

Last week Ultra Records LLC and Ultra Music Publishing LLC filed a copyright infringement suit against MICHELLE PHAN. The suit claims Phan did not have a license to use music featured in her makeup tutorial videos. (Reuters)

Cubs Baseball Club Sues “Billy Cub”

The Chicago Cubs have filed a trademark infringement suit against five individuals who have created the character Billy Cub and promoted him as an unofficial mascot of the baseball team. (CBS Chicago)

 




Friday, July 18, 2014 12:35 pm

Federal Circuit Summaries Logo

* * COURT LACKED JURISDICTION OVER APPEAL FROM CONTEMPT ORDER IN PATENT CASE

Arlington Industries, Inc. v. Bridgeport Fittings, Inc. 13-1357 — Yesterday in an opinion by Judge HUGHES, the Federal Circuit dismissed an appeal for lack of jurisdiction. Arlington’s patent claimed a method for connecting electrical cables. In settlement of a prior patent infringement suit, Bridgeport was enjoined from making and selling certain electrical connectors or any colorable imitations. When Bridgeport redesigned its connectors, Arlington sought a contempt order that the redesign violated the settlement agreement. The district court concluded the redesigned connectors were not more than colorably different and found Bridgeport in contempt, but did not issue a final judgment.

The Federal Circuit decided it lacked jurisdiction because the contempt order was neither a modification of the prior injunction nor a final judgment. The statutory exception to the final judgment rule under Federal Rules of Appellate Procedure section 1292(c)(2) was meant to be narrowly interpreted to appeals that were “final except for an accounting.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Bob_Goodlatte

MEMBERS OF CONGRESS MAKE SHARP STATEMENTS ON PATENT MATTERS

Yesterday in a letter to Senate Majority Leader HARRY REID and Senate Judiciary Committee Chairman PATRICK LEAHY, House Judiciary Committee Chairman BOB GOODLATTE and Representative ANNA ESHOO said “inaction is simply inexcusable.” They were writing about the House-passed patent reform bill titled the “Innovation Act.” Also yesterday, Politico quoted Senator ORRIN HATCH, referring to criticisms of a possible nominee to head the USPTO, as saying, “I was not only disappointed but disgusted by it . . .” Last week the Burlington Free Press reported that Leahy said he was “furious” with Reid’s decision not to hold a Senate vote on a patent litigation reform bill.

CHIEF IP COUNSEL TO DISCUSS CORPORATE IP MANAGEMENT AT IPO’S ANNUAL MEETING

Corporate IP Management continually increases in complexity, which presents new risks and opportunities to multinational corporations. Speakers will discuss new trends and attendant complexities in corporate IP management and offer practical tips. Moderated by JAMES TRUSSELL, BP America, Inc., the panel includes: LISA JORGENSON, STMicroelectronics; DOUGLAS LUFTMAN, NetApp; WILLIAM MILLER, General Mills, Inc.; and KEVIN RHODES, 3M Innovative Properties Co. To view the full program and to register, visit www.ipo.org/am2014.

RECEIVE A COMPLIMENTARY REGISTRATION TO THE IPO ANNUAL MEETING

If you recruit a new corporate or law firm member that notes your name on its membership application, you will receive a complimentary registration for the 2014 IPO Annual Meeting held in Vancouver, Canada, September 7-9. Encourage your colleagues and business associates to join IPO now. Go to www.ipo.org/joinipo for information about IPO membership and a membership application.

SONY DSC

MEET THE COMMITTEE LEADERS: ERIC SCHAAL

ERIC J. SCHAAL is a co-chair of the IPO Trade Secrets Committee. He is currently Intellectual Property Counsel for Air Products and Chemicals, Inc. He counsels Air Products’ cryogenic air separation unit (ASU), generated gases, and liquefied natural gas (LNG) business areas. He is also responsible for overseeing legal issues in Air Products’ procurement of information technology (IT) business area and government contracting throughout the company. Prior to his legal career, he was an officer in the United States Air Force. To join the Trade Secrets or another one of IPO’s 29 Standing IP Committees, click here.

NETWORK WITH IPO MEMBERS

The IPO website features a members-only section called IPO Connect that allows IPO members to network with other members. You can send messages through the site and create a list of contacts. You can access your profile and start networking at http://connect.ipo.org!




Thursday, July 17, 2014 12:00 pm

Federal Circuit Summaries Logo* NO LIKELIHOOD OF CONFUSION BETWEEN “STONSHIELD” AND “ARMORSTONE” MARKS FOR FLOOR COATINGS

StonCor Group, Inc. v. Specialty Coatings, Inc. 13-1448 — Yesterday in an opinion by Judge HUGHES, the Federal Circuit upheld the USPTO’s dismissal of an opposition against registration of Specialty’s trademark. StonCor owned the registered mark “STONSHEILD” for use in connection with epoxy floor coatings. Specialty sought registration for “ARMORSTONE” also for use in connection with epoxy floor coatings. StonCor argued that consumers would be likely to confuse the marks and that ARMORSTONE was merely descriptive of the epoxy coatings.

Substantial evidence supported the USPTO’s conclusion that confusion was unlikely because the marks were distinctive in appearance, sound, and commercial impression. StonCor failed to meet its burden of proof on descriptiveness because none of StonCor’s evidence demonstrated that ARMORSTONE immediately conveyed information about the qualities or characteristics of the epoxy coating products.
(1 to 4 stars rate impact of opinion on patent & trademark law)

BILL INTRODUCED ON USPTO’S LAW CLINIC PROGRAM

Yesterday Rep. HAKEEM JEFFRIES (D-NY) and introduced H.R. 5108, a bill to expand the USPTO’s Law School Clinic Certification Program. The bill was co-sponsored by Rep. STEVE CHABOT (R-OH). It would make the program available to all accredited law schools that meet the eligibility requirements. The Law School Clinic Certification allows students to gain experience in patent and trademark law by practicing before the USPTO. The program has operated in a pilot status since 2008.

IP IN THE MASS MEDIA

MacFarlane Sued Over “Ted”

Bengal Mangle Productions has filed a copyright infringement suit against SETH MACFARLANE, Universal Pictures, and Media Rights Capital claiming that the 2012 film “Ted” copied a teddy bear featured in Bengal’s web series. (Yahoo!)

Inventors Slow to Seek Protection in Africa

In an article published this morning, Reuters reports on the culture of secrecy that is pervasive among inventors in many African countries. The article attributes a fear of seeking patent protection to expensive and inefficient IP-registering offices in various countries.

LI & CAI JOINS IPO

Li & Cai Intellectual Property Office of Taipei, Taiwan (primary contact CHENG CHIEN LAI) has become a law firm member of IPO.

IP Chat Channel LogoNEXT WEEK ON IPO’S IP CHAT CHANNEL: INTER PARTES REVIEWS OF PHARMACEUTICAL PATENTS

IPO’s Pharmaceutical & Biotechnology Issues Committee will host the IP Chat Channel on 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. This webinar will focus on the rapidly increasing use of IPRs to invalidate pharmaceutical patents in ANDA litigation. The webinar will first give an overview of the IPR process and timelines, and discuss the outcomes of recent IPR challenges in the pharmaceutical space, and then will focus on how generic firms are using IPRs to challenge innovator patents. With that background, our panel of experts will present tips and strategies for both challenging pharmaceutical patents and defending against such challenges. Moderated by PAUL GOLIAN, Bristol-Myers Squibb Company, panelists include AARON BARKOFF, 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.

LEYDIG, VOIT & MAYER, LTD. TO SPONSOR ANNUAL MEETING

The Monday Breakfast and Breaks at the IPO Sept. 7 to 9, 2014 Annual Meeting in Vancouver, Canada will be sponsored by Leydig, Voit & Mayer, Ltd. For more information and to register for the Annual Meeting, visit www.ipo.org/AM2014.

Leydig2014_small




Wednesday, July 16, 2014 12:33 pm

Federal Circuit Summaries Logo* COURT ERRED IN GRANTING POST-VERDICT MOTION THAT PATENT CLAIMS WERE INVALID

Medisim Ltd. v. BestMed, LLC 13-1451 — On Monday in an opinion by Chief Judge PROST, the Federal Circuit vacated a district court judgment that Medisim’s patent claims were invalid. The claims were for a non-invasive device and method for reading core body temperature. After a jury verdict awarding Medisim $1.2 million in infringement damages, BestMed moved for judgment as a matter of law that the claims were anticipated.

Medisim argued that BestMed forfeited its right to judgment as a matter of law under Federal Civil Procedure rule 50(b) by not properly moving for a similar judgment at the close of evidence. The Federal Circuit agreed. Because BestMed failed to make a rule 50(a) motion on anticipation before the case was submitted to a jury, the district court erred in granting the post-verdict motion.
(1 to 4 stars rate impact of opinion on patent & trademark law)

U.S. COPYRIGHT OFFICE REQUESTS FURTHER COMMENTS ON “MAKING AVAILABLE” AND “COMMUNICATION TO THE PUBLIC” RIGHTS

Yesterday the U.S. Copyright Office published a Federal Register notice seeking additional comments on “the state of U.S. law recognizing and protecting ‘making available’ and ‘communication to the public’ rights for copyright holders.” The Office previously requested public input on how U.S. and foreign copyright laws addressed these rights and held a public roundtable event on May 5. The notice indicated the public may now wish to address issues raised during the roundtable or in subsequent legal developments like the U.S. Supreme Court’s recent decision in American Broadcasting Cos. v. Aereo, Inc. Comments are due August 14. IPO’s Copyright Law and Practice Committee will be studying the notice.

FARRINGTON GROUP JOINS IPO

The Farrington Group of Healdsburg, Calif. (primary contact PETER HARTER) has become a small business member of IPO.

IP IN THE MASS MEDIA

Ikea in Dispute Over Ikeafans.com

Ikea has filed a motion to dismiss a lawsuit filed against it by the owners of IKEAFANS.com. Ikea had worked with the site to promote its products before requesting the site be turned over to Ikea. The suit was brought by the site’s owners after negotiations failed. (Ars Technica)

Companies Join Forces to Avoid “Troll” Suits

Yesterday the Washington Examiner reported that Canon, Google, Newegg, SAP, Dropbox, and Asana had created a new group called the License on Transfer or LOT Network to protect the members from suits by so-called “trolls” on patents that come from operating companies. According to the article, member companies receive a license when the patents are transferred out of the LOT group.

SESSION ON PROTECTION AND ENFORCEMENT OF NATIONAL AND MUNICIPAL SYMBOLS AT IPO’S ANNUAL MEETING

One of the trademark sessions during IPO’s Annual Meeting is titled “Rally Around the Flag – Protection and Enforcement of National and Municipal Symbols and What it Means for the Rest of Us.” This session will explore, from a US and Canadian perspective, the impact prohibitions of registration of flags, coat of arms, and other insignia have on brand owners and Government Agencies, States, and Cities. Panelists will discuss the risks of incorporating a national or city symbol in a mark, prosecution issues relating to registration of these marks, the pending petition to the U.S. Supreme Court filed by the City of Houston to determine whether its official seal is registrable, pending legislation to amend the Lanham Act to provide for registration of such marks, how to handle citations of Official Marks in Canada, and enforcement strategies resulting from these issues. Moderated by LINDA MCLEOD, Kelly IP, panelists include: BRUCE GREEN, Oyen Wiggs Green & Mutala; PHILIP GREENE, U.S. Marine Corps Trademark Licensing Office; SHARON MARSH, U.S. Patent and Trademark Office; and MICHAEL O’NEILL, Gowling Lafleur Henderson LLP. To view the full program and to register for the Annual Meeting, visit www.ipo.org/am2014.

IP Chat Channel LogoOVER 140 ARCHIVED WEBINARS IN IPO’S IP CHAT CHANNEL

Did you miss one of IPO’s webinars? Topics include Double Patenting After Gilean, Venue Transfer, Trade Secrets: New Clout After Altavion, Joint Infringement After Akamai and more. Visit IPO’s on-demand library for a full listing of IP Chat Channel webinars available at www.ipo.org/ipchatchannel.