Intellectual Property Owners Association

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Past Week’s Daily News™

Tuesday, February 9, 2016 1:41 pm

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 * PLAIN MEANING OF CONSULTING AGREEMENT DID NOT PROVIDE FOR ASSIGNMENT OF PRIOR  INVENTIONS

 TriReme Medical, LLC v. AngioScore, Inc. 15-1504 — On Friday in an opinion by Judge DYK, the Federal Circuit overruled a district court’s dismissal of TriReme’s inventorship suit. AngioScore claimed exclusive ownership of patents related to angioplasty balloon catheters. TriReme sued under Patent Act section 256 to add Lotan as an inventor on the basis that Lotan had assigned TriReme his interest in the AngioScore patents. The district court found that TriReme had no standing to pursue a claim for inventorship because Lotan had previously assigned his ownership interests to AngioScore as part of a consulting agreement.

The Federal Circuit said that the plain meaning of the consulting agreement did not provide for an assignment of Lotan’s rights prior to the agreement’s effective date. Contrary to AngioScore’s argument, nothing in the terms of the agreement stated that AngioScore would retain rights to any prior inventions Lotan failed to list. Another section of the agreement, however, did assign Lotan’s rights after the effective date. There remained a question of fact about that section that could not be resolved on a motion to dismiss.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO COMMENTS ON COUNTRIES WITH INADEQUATE IP PROTECTION

On Friday Executive Director MARK LAUROESCH submitted comments on behalf of IPO to Acting Assistant U.S. Trade Representative PROBIR MEHTA for USTR’s annual Special 301 Review. IPO’s 22-page letter commented on numerous inadequate IP policies in international fora and in specific countries including Argentina, Brazil, China, India, and Panama, among others.

The purpose of the Special 301 Review is to obtain information about countries that deny adequate and effective protection of intellectual property rights or deny fair and equitable market access to U.S. entities that rely on IP protection. A Special 301 Subcommittee will hold a public hearing on March 1. USTR is expected to publish the 2016 Special 301 Report around April 30. Countries with the most egregious IP policies, if any, will be identified as “Priority Foreign Countries.” Other U.S. trading partners with problematic IP policies will be identified on the “Priority Watch List” or the “Watch List.”

IPO’s Executive Committee approved the letter. The Emerging Technologies and Trade, Latin American Practice, and Canadian Practice Committees, and in particular, RON EMBRY (Patterson Sheridan) and CARLY KESSLER (Robins Kaplan), assisted with the letter.

IP IN THE MASS MEDIA

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

Last week a U.S. district court judge decided on summary judgment that Twentieth Century Fox Television’s show “Empire” does not infringe record label Empire Distribution’s trademarks. (Billboard)

PayPal Bans Company from a Site Due to Copyright Concerns

Last week TorrentFreak reported that PayPal banned UnoTelly, a virtual private network (VPN) and SmartDNS service provider, citing concerns that its “unblocker” tools help users bypass copyright restrictions.




Monday, February 8, 2016 1:43 pm

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 * * * PATENT TRIAL AND APPEAL BOARD DID NOT ERR IN UPHOLDING VALIDITY OF CLAIMS IN INTER PARTES REVIEW DESPITE  INITIAL INSTITUTION DECISION

 TriVascular, Inc. v. Samuels 15-1631 — On Friday in an opinion by Judge O’MALLEY, the Federal Circuit upheld a USPTO inter partes review decision that Samuels’s claims were not invalid. Samuels’s patent claimed intraluminal stents. On petition from TriVascular, the Patent Trial and Appeal Board instituted review of Samuels’s patent, finding a reasonable likelihood that the claims were obvious. On final decision, however, the Board found that TriVascular had not met its burden of proving the claims were obvious. TriVascular argued that the Board’s final decision was inconsistent with its decision to institute.

The Federal Circuit said that contrary to TriVascular’s “misguided” assertions, the Board is not bound by findings made in the decision to institute. “The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial conclusions were wrong.” TriVascular’s argument failed to appreciate the “significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of evidence at trial.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

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 * * PRESUMPTION OF PLAIN AND ORDINARY MEANING FOR A PATENT CLAIM LIMITATION CAN BE OVERCOME WITHOUT  EXPLICIT REDEFINITION OR DISAVOWAL

 Columbia University v. Symantec Corp. 15-1146 — On Tuesday in an opinion by Judge DYK, the Federal Circuit upheld a district court finding that  Columbia’s claims were indefinite. The claims were for methods for detecting malicious email attachments and included a “byte sequence feature.” The district court construed this limitation to mean “machine code instructions” only. Columbia argued that the district court erred in departing from the plain and ordinary meaning for the limitation because Columbia had not expressly defined or disclaimed “byte sequence feature.”

The Federal Circuit rejected Columbia’s argument that the presumption of plain and ordinary meaning for a claim limitation can only be overcome when there has been an explicit redefinition or disavowal. The district court did not err in relying on the specification to limit the ordinary meaning for “byte sequence feature.” Moreover under the proper construction, the claims described the step of extracting machine code instructions from something that does not have machine code instructions. This was “nonsensical in the way a claim to extracting orange juice from apples would be… and thus indefinite.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

SUGGEST CASE STUDIES FOR USPTO ENHANCED PATENT QUALITY INITIATIVE BY FRIDAY

As part of its Enhanced Patent Quality Initiative, the U.S. Patent and Trademark Office has invited stakeholders to suggest topics they believe should be the subject of “case studies” to help the USPTO review and improve the quality of its work products. A submission should propose a topic for study, suggest the methodology of investigation where possible, and explain how the results of a case study could be used to improve patent quality. The Federal Register notice contains an example. Written submissions are due by this Friday, February 12, 2016.

IPO COMMITTEE CALLS THIS WEEK

Tuesday, February 9

Post Grant Patent Office Practice – 12:00p.m. ET
Software Related Inventions – 2:00p.m. ET
Canadian Practice – 4:00p.m. ET

Wednesday, February 10

Asian Practice – 9:30a.m. ET
Damages and Injunctions – 2:00p.m. ET
U.S Patent Office Practice – 4:00p.m. ET

Thursday, February 11

Antitrust and Competition Law – 11a.m. ET

To join one of IPO’s 30 Standing IP Committees, visit www.ipo.org/committeesignup.

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WEDNESDAY ON IPO’S IP CHAT CHANNEL: CONFLICTS OF INTEREST IN PATENT PROSECUTION AFTER MALING V. FINNEGAN

Tune in to the IP Chat Channel on Wednesday, February 10 at 2:00p.m. ET for Conflicts of Interest in Patent Prosecution After Maling v. Finnegan. In Maling, the Massachusetts Supreme Court rejected the plaintiff’s argument that representing two clients in related technology areas is a per se violation of ethical rules. But the court stressed that representing competing companies with similar inventions could give rise to ethical violations in other scenarios and cautioned firms to be take steps to avoid conflicts “no matter how complex such a protocol might be.”

Our panelists are MARTIN KAMINSKY, general counsel of Greenberg Traurig, a large diversified law firm that does patent prosecution; SCOTT MARKOW, senior group patent counsel at Stanley Black & Decker, who oversees IP for its professional power tools business; and litigator MICHAEL MCCABE of Funk & Bolton, who represents patent practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters. They will discuss best practices and consider tricky hypotheticals. IP Chat Channel webinars are recorded and available on our website after the live webinars. Ethics CLE granted in many states.

IP IN THE MASS MEDIA

Trump Interested in “Trumpertantrum” Trademark

Last Thursday Politico reported that presidential candidate DONALD TRUMP expressed interest in registering a trademark on the term “Trumpertantrum,” used by candidate TED CRUZ to describe Trump’s reaction to coming in second in the Iowa caucus.

 




Friday, February 5, 2016 1:58 pm

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IPO MEMBER INSIGHTS: LAWRENCE WELCH, ELI LILLY AND COMPANY, ON RECENT IP5 HARMONIZATION EFFORTS

LAWRENCE WELCH, Senior Director, Assistant General Patent Counsel at Eli Lilly and Company, embarked in 2003 on a mission for IPO to work with global IP industry groups and IP offices to create a more harmonized international IP system. In recent years, great strides have been made toward that goal, with the finalization of the Patent Global Dossier, which became available in 2015, the Common Citation Document launched in 2011, and the Common Application Format agreed to in 2007.

In this latest addition to Innovator Insights, Mr. Welch explains these projects and others and discusses how they are helping to create a more efficient and higher quality patent system that will benefit IP owners, and consumers, worldwide.

IP IN THE MASS MEDIA

Tattoo Artists Sue Video Game Maker for Infringing Copyright in Athletes’ Tattoos

On Wednesday Ars Technica reported that tattoo parlor Solid Oak Sketches sued video game maker Take-Two Interactive for infringing copyrights in their tattoo artwork by reproducing the artwork on NBA players including KOBE BRYANT and LEBRON JAMES in the NBA 2K video game.

Agilent Sues Former Employee for Trade Secret Theft

On Wednesday Agilent Technologies sued former employee and Twist Bioscience founder and CEO EMILY LEPROUST for trade secret theft, claiming she stole technology for making synthetic genes. (San Jose Mercury News)

JOIN AN IPO COMMITTEE

IPO has more than 900 committee members on 30 Standing IP Committees, which cover eight areas of intellectual property policy, law, and practice. A list of IPO standing committees, identified by division (antitrust and competition law, business issues, litigation and dispute resolution, international IP law and practice, patents, trademarks, copyrights, and professional) can be found here. Apply to join an IPO committee at www.ipo.org/committeesignup. IPO members can serve as a voting member on one committee; and as a non-voting member on up to three additional committees.

 

 




Thursday, February 4, 2016 1:32 pm

USPTO COMMITTEE MEETS TODAY

The Patent Public Advisory Committee (PPAC) meets today from 9:00a.m. – 12:30p.m. and 2:35p.m.-3:40p.m. ET in the Madison South Auditorium at the USPTO’s Alexandria campus. USPTO Director MICHELLE LEE will give opening remarks. IPO members can attend the public session or watch online. The agenda and a link to the webcast are available on the USPTO website.

IP IN THE MASS MEDIA

Jury Says Apple Owes VirnetX $625.6 Million for Infringing Secure Network Patents

Yesterday a jury in Texas said Apple Inc. owes $625.6 million in damages to VirnetX Holding Corp. for infringing patents on secure networks with its VPN on Demand, FaceTime, and iMessage products. (BloombergBusiness)

ITC Issues Initial Determination that Arista Infringed Cisco Patents on Database, Security Features

On Tuesday the U.S. International Trade Commission issued an initial determination that Arista Networks Inc. infringed Cisco Systems Inc. patents on a systems database and security features. A final determination is expected in June. (Wall Street Journal)

Bacardi Files FOIA Request on “Havana Club” Trademark Registration

This week Puerto Rican rum producer Bacardi filed a Freedom of Information Act request for documents associated with the USPTO’s recent renewal of a trademark registration for “Havana Club” rum owned by Cuba’s government-controlled CubaExport. (Miami Herald)

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 HELP SCIENTISTS, ENGINEERS, AND ARTISTS LEARN ABOUT IP PROTECTION

Educators often reach out to IPO to find experts to speak to their students about intellectual property. In response to this  demand for IP education, IPO and the IPO Education Foundation have an IP Speaker Search tool. IPO members can note  in their member profiles whether they would be willing to speak to groups about IP. Members may indicate the type of  group to which they are willing to speak, the specific areas of IP on which they concentrate, and how far they are willing to travel. Then members of the public will be able to search for an expert in their area.

We need your help to make this program successful! Login to the IPO webpage today and under the “my profile” section, click the button for “SPEAKER” to indicate your willingness to volunteer. The contact information you provide for this purpose and your speaking preferences will be available to members of the public via the search for one year. Then check out the IPO Education Foundation webpage for resources to help you plan your presentation. Sign up today and help us spread the word about the value of IP!

 




Wednesday, February 3, 2016 2:02 pm

Federal Circuit Summaries Logo

 * * COURT DID NOT IMPERMISSIBLY PICK AND CHOOSE DISCLOSURES FROM PRIOR ART TO FIND PATENT  CLAIMS ANTICIPATED
Purdue Pharma L.P. v. Epic Pharma, LLC 14-1294 — On Monday in an opinion by Chief Judge PROST, the Federal Circuit upheld  a district court finding that Purdue’s patent claims were invalid. The claims were for a controlled-release, abuse-resistant formulation of oxycodone hydrochloride, an opioid for treating pain, which was sold as Reformulated OxyContin®. The district court found the claims anticipated by the McGinity reference, which disclosed a process for creating a controlled-release dosage form for pharmaceuticals. Purdue argued the district court impermissibly engaged in “picking, choosing, and combining” various unrelated disclosures in McGinity and that the reference did not specifically disclose opioids.
The Federal Circuit found that McGinity could not be read so narrowly. The reference explicitly noted the use of its process with analgesics to treat pain using the words “such as” and “and the like,” which demonstrate disclosure of a broader group of analgesics than those McGinity specifically listed. There was no impermissible picking and choosing as the district court pointed to disclosures in the reference that were all “directly related.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

STAY CONNECTED WITH IPO

Below are a few ways that you can network with IPO and the IPO Education Foundation. We will use these tools to send important updates periodically:
• Become a fan of the IPO Facebook Page.
• Become a fan of the IPO Foundation Facebook Page.
• Follow Intellectual Property Owners Association on LinkedIn.
• Follow @IPO on Twitter.
• Follow @IPOFoundation on Twitter

IP IN THE MASS MEDIA

Fine Brothers Abandon Plan to Trademark ‘React’ Video Format

Yesterday the Washington Post reported that YouTube personalities the Fine Brothers abandoned a plan to trademark their “react” video format and license it to other YouTube creators due to scathing criticism and the loss of more than 300,000 followers. The duo also announced that they will not pursue trademark infringement claims against others who sample their work or post similar videos.

Viacom Sues Restauranteur on “Krusty Krab” Trademark

Yesterday the Houston Press reported that telecommunications company Viacom sued IJR Capital Investments for trademark infringement after the company announced it would name two new restaurants “The Krusty Krab” after the restaurant in the SpongeBob SquarePants cartoon.

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GET UNLIMITED ACCESS TO IPO’S IP CHAT CHANNEL

Become a pass holder and give all employees of your organization unlimited access to live and past IP Chat Channel webinars for one year. No more hassle of obtaining approval every time you want to tune in with a year pass and employees can sign up when their schedules permit. Many organizations have saved thousands of dollars by obtaining passes for their employees. Save time, money and earn CLE credit! For more information, contact Clara Stanfield.