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Past Week’s Daily News™

Friday, 26 May, 2017 12:17 pm

TRUMP 2018 BUDGET FUNDS USPTO AT $3.586 BILLION, ALLOWS ACCESS TO ALL FEE COLLECTIONS

On Tuesday President TRUMP unveiled his 2018 budget recommendations to Congress, which included recommendations for the USPTO and other IP-related agencies. Under the Trump budget, the USPTO would be authorized to spend up to $3.586 billion, an increase of $422 million over projected 2017 patent and trademark fee collections of $3.164 billion. (See the numbers at pages 199-200 of the Commerce Department’s Appendix to the Budget.) The USPTO’s 2018 Congressional Budget Request, which was also published on Tuesday, clarifies that the collection estimates are based on trademark fee adjustments that became effective in January 2017 and proposed patent fee increases expected to take effect in fiscal year 2018.

The budget would give the USPTO access to all user fees collected in 2018. The budget states that the “USPTO will continue its aggressive patent pendency reduction agenda to reduce overall pendency and backlog over the next three years.” It will also support the USPTO’s “efforts to address abusive patent litigation practices and repeats the President’s call for Congress to enact legislation that promotes greater transparency in the U.S. patent system and prevents frivolous lawsuits that stifle innovation.”

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NEXT WEEK ON IPO’S IP CHAT CHANNEL — ON-SALE BAR AFTER HELSINN: WHAT IS THE SCOPE?

Tune in to the IP Chat Channel on Thursday, 1 June, at 2:00p.m. ET for a webinar on the ramifications of the Federal Circuit’s April decision in Helsinn v. Teva. That opinion reversed a lower court by holding that the 2011 America Invents Act on-sale bar provision renders a patent invalid if the invention was sold prior to patenting, even if the sale did not publicly disclose the invention. Helsinn appears to be consistent with a long line of cases about secret sales, including Metallizing. But some in-house counsel, particularly in pharma and other regulated industries, are concerned about the facts of the case, in which the public disclosure of a private purchase-and-supply agreement between Helsinn and a third-party distributor was found invalidating. They worry that many contracts regularly inked by their in-house clients prior to filing patent applications will now need the added scrutiny of IP counsel. And if such transactions are known by the prosecuting patent attorney, will they have to be disclosed to the USPTO? Our panelists are Prof. DENNIS CROUCH, author of the Patently-O blog (University of Missouri), life science litigator DEBORAH FISHMAN (Arnold & Porter Kaye Scholer LLP), and in-house counsel JENNIFER JOHNSON (DuPont).

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

PayPal Sues Pandora on “P” Logo

On Tuesday ArsTechnica reported that PayPal sued music streaming company Pandora for trademark infringement, claiming Pandora’s recently-adopted “P” logo is confusingly similar to PayPal’s logo.

Hulu Says No to Renewing License with TiVo Due to Expired Patents

Yesterday BroadbandTVNews.com reported that Hulu sued TiVo alleging that it does not need to renew an expired license agreement because three of TiVo’s patents covered by the agreement are expired or no longer relevant and that TiVo breached the agreement by publicizing its licenses to Hulu’s competitors.




Thursday, 25 May, 2017 12:24 pm

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* * USPTO ERRED IN CONSIDERING TRADEMARK’S FAME AS ALL-OR-NOTHING FACTOR IN LIKELIHOOD OF CONFUSION ANALYSIS

Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC 16-1089 — Yesterday, in a per curiam opinion, the Federal Circuit vacated the USPTO’s denial of Vineyards’ cancellation petition. Vineyards owned the trademark “INSIGNIA” for use on wines. Fairmont received federal registration for “ALEC BRADLEY STAR INSIGNIA” for cigars and cigar products. The USPTO’s Trademark Trial and Appeal Board denied Vineyards’ cancellation petition on the basis that “INSIGNIA” was not “famous,” thus there was no likelihood confusion.

The Federal Circuit said that the TTAB erred in analyzing the fame of Vineyards’ mark as “an all-or-nothing factor, discounting it entirely in reaching the conclusion of no likelihood of confusion as to source.” This was contrary to both law and precedent. On remand, the TTAB is “to properly apply the totality of the circumstances standard, which requires considering all the relevant factors on a scale appropriate to their merits.” Judge NEWMAN filed a concurring opinion in which she argued that the TTAB also erred in its analysis of the relatedness of the goods and the form of Fairmont’s actual use of its mark.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO COMMENTS ON BRAZIL’S DRAFT PATENT EXAMINATION GUIDELINES

Last week IPO Executive Director MARK LAUROESCH sent a letter to Brazil’s Patent Office in response to a request for comments on patent examination guidelines related to chemical applications. IPO supported the inclusion of guidelines on stereoisomers, polymorphs, and second medical use claims, which were previously considered controversial issues by certain practitioners and examiners in Brazil. IPO was concerned with proposed requirements for in vivo testing as the only acceptable proof of a new therapeutic use and suggested that in vitro testing can be appropriate in certain circumstances. IPO also noted that the draft guidelines are overly strict regarding the acceptable language for second use claims. IPO’s Latin America Practice Committee, chair ROBERTO RIBEIRO (Sanofi), and vice-chair RICARDO NUNES (Daniel IP), assisted with the comments.

KNOBBE MARTENS TO SPONSOR PATENT DAMAGES CONFERENCE ON 7 JUNE IN CHICAGO, ILLINOIS

Knobbe, Martens, Olson & Bear, LLP will sponsor IPO’s Patent Damages Conference on Wednesday, 7 June, at the Hyatt Regency hotel in Chicago, Illinois. Visit the website for more information or to register.

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IP IN THE MASS MEDIA

Apple and Nokia Settle Patent Infringement Dispute

On Tuesday Reuters reported that Apple and Nokia have agreed to settle their patent infringement dispute. As part of the settlement, Nokia will supply network products and services to Apple, and Apple will resume sales of Nokia’s digital health products.




Wednesday, 24 May, 2017 12:18 pm

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**FEDERAL CIRCUIT UPHOLDS ITC FINDING THAT PATENT CLAIMS WERE INVALID FOR LACKING SUFFICIENT WRITTEN DESCRIPTION

Rivera v. Int’l Trade Comm’n 16-1841 — Yesterday in an opinion by Judge LINN, the Federal Circuit upheld an ITC determination that Solofill, LLC did not violate section 337 of the Tariff Act. The patent was directed to an adapter assembly for providing compatibility between a single serving beverage brewer and brewing pods such as for use in a Keurig® brewer. The claims as amended during prosecution recited a container adapted to hold brewing material. The ITC found that Rivera’s claims were invalid for lack of written description “because the specification was entirely focused on ‘a pod adapter assembly’ or ‘brewing chamber’ and did not disclose a container that was itself a pod or that contained an integrated filter.

At issue was “whether the ‘pod adapter assembly,’ ‘pod,’ and ‘receptacle,’ disclosures in the patent as filed support Rivera’s claimed ‘container … adapted to hold brewing material.’” The Federal Circuit said that the specification “consistently describes an invention in which the ‘pod’ and the receptacle or container are distinct components.” There was no written description support “for broad claims covering a receptacle with integrated filter such as Solofill’s accused products.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

SENATE JUDICIARY TO HOLD CONFIRMATION HEARING FOR IPEC NOMINEE

The Senate Judiciary Committee will hold a confirmation hearing this morning at 10:00a.m. ET for Intellectual Property Enforcement Coordinator nominee VISHAL J. AMIN. Amin is currently Senior Counsel on the House Judiciary Committee. He received his bachelor’s degree in neuroscience from The Johns Hopkins University and his law degree from Washington University in St. Louis.

The Intellectual Property Enforcement Coordinator (IPEC) handles legal policy on copyright, patents and trademarks. The position requires Senate confirmation. The hearing will be webcast.

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TODAY ON IPO’S IP CHAT CHANNEL: GLOBAL FRAND UPDATE – EUROPE

Tune in to the IP Chat Channel on Wednesday, 24 May, at 2:00p.m. ET to hear a balanced panel of experts give a Global FRAND Update – Europe. Our panelists are Prof. JORGE CONTRERAS (University of Utah), JAMES HARLAN (InterDigital Corp.), and GIL OHANA (Cisco Systems). 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

Disney Files Motion to Dismiss Zootopia Copyright Infringement Suit

Yesterday the Hollywood Reporter reported that The Walt Disney Company brought a motion to dismiss a copyright suit from Esplanade Productions alleging that Disney copied its work Looney to create Zootopia, an Oscar-winning animation film. Disney also noted Esplanade’s failure to register its copyright until after Zootopia was released, which would bar its recovery of attorney fees and statutory damages.

China Tech Companies Lead in Worldwide Trademark Applications

Yesterday the Financial Times reported that technology companies in China lead in worldwide trademark application filings. In the number one spot was Tencent, which filed 4,100 trademark applications in 2016. Alibaba was also in the top twenty with 1,700.




Tuesday, 23 May, 2017 12:37 pm

****U.S. SUPREME COURT FINDS DOMESTIC CORPORATIONS RESIDE ONLY IN STATE OF INCORPORATION FOR PATENT VENUE

TC Heartland LLC v. Kraft Food Brands Grp. LLC 16-341 — Yesterday in an opinion by Justice THOMAS, the U.S. Supreme Court, overruling the Federal Circuit, held that under the patent venue statute a domestic corporation resides only in its state of incorporation. Kraft’s patents were for shelf-stable, flavored liquid beverage concentrates and packaging. Kraft sued Heartland in the U.S. District Court for the District of Delaware. Heartland moved to transfer to the Southern District of Indiana, arguing that it was not registered to do business, had no local presence, and had not entered into any supply contracts in Delaware. The district court rejected Heartland’s argument that the law governing venue for patent infringement suits in VE Holding had been nullified by Congress. The Federal Circuit agreed that “[t]he arguments raised regarding venue have been firmly resolved by VE Holding, a settled precedent for 25 years.”

The Supreme Court said that the general venue definition for all civil actions did not supplant the specific definition in the patent venue statute. Congress’s amendments to the general definition did not change the Supreme Court’s original interpretation in Fourco that for patent suits, a domestic corporation resides only in its state of incorporation and not in any district in which it is subject to personal jurisdiction.
(1 to 4 stars rate impact of opinion on patent & trademark law)

U.S. SUPREME COURT TO CONSIDER WHETHER PTAB MUST ADDRESS ALL ASSERTED CLAIMS IN AN IPR PROCEEDING

Yesterday the U.S. Supreme Court agreed to review SAS Inst., Inc. v. Lee (16-969). SAS sought inter partes review (IPR) of ComplementSoft’s claims for an integrated development environment for generating and maintaining source code. The Patent Trial and Appeal Board’s final written decision addressed patentability of only those claims for which it instituted the proceeding. SAS argued that the PTAB erred by not addressing every claim included in SAS’s petition in the final written decision. In a split opinion, the original Federal Circuit 3-judge panel rejected SAS’s argument. Based on its prior decision in Synopsis, the court held that Patent Act section 318(a) “only requires the Board to address claims as to which review was granted.” A split Federal Circuit denied SAS’s petition for en banc rehearing.

The Supreme Court will address whether section 318(a) requires the PTAB to issue a final written decision as to every claim or of only some of the patent claims challenged by the petitioner. IPO’s Amicus Committee will be studying the case.

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FATIH OZLUTURK, SORYN IP GROUP

 

 

 

 

 

 

 

 

 

 

 

 

As the lead inventor on most of the key patents in wireless technology pioneer InterDigital’s portfolio, Fatih Ozluturk’s inventions can be found in virtually every smartphone on the market. He is now Managing Principal at Soryn IP Group, active in educating startups about IP, and passionate about working toward more effective patent laws. Innovator Insights spoke with Mr. Ozluturk about his time at InterDigital, his continued love of invention, and evolving perceptions of IP.

IP IN THE MASS MEDIA

Universal Secure Registry Alleges Apple Pay Infringes Patents

Yesterday Bloomberg reported that Universal Secure Registry sued Apple Inc. and Visa Inc. alleging that the companies’ Apple Pay partnership infringes Universal’s mobile-payment patents.




Monday, 22 May, 2017 12:31 pm

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**PRELIMINARY INJUNCTION UPHELD IN PATENT INFRINGEMENT SUIT FOR COMPOUND BUT NOT PROCESS CLAIMS

Mylan Institutional LLC v. Aurobindo Pharma LTD. 17-1645 — On Friday in an opinion by Judge LOURIE, the Federal Circuit upheld a district preliminary injunction against Aurobindo. The claims were for a triarlymethane dye called ISB used to map lymph nodes and processes for producing ISB. The district court found that Mylan was likely to prove infringement under the doctrine of equivalents for both the ISB compound and the process claims.

The Federal Circuit agreed regarding the compound claims, yet noted that it was rare to base a preliminary injunction on the doctrine of equivalents. For the process claims, the court found that the district court erred in its doctrine of equivalents analysis “by being unduly truncated.” The court instructed that for the full trial on the merits, the district court should consider whether the “substantiality of the differences” test is more appropriate for the chemical process claims than the “function, way, result” test. “[T]he ‘function’ and ‘way’ of a particular limitation of a chemical process claim may remain vague and often overlap. In some cases, ‘way’ and ‘function’ may be synonymous.”
(1 to 4 stars rate impact of opinion on patent & trademark law) 

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THIS WEEK ON IPO’S IP CHAT CHANNEL: GLOBAL FRAND UPDATE – EUROPE

Tune in to the IP Chat Channel on Wednesday, 24 May, at 2:00p.m. ET to hear a balanced panel of experts give a Global FRAND Update – Europe. This webinar will consider the impact of recent judicial decisions and institutional initiatives in Europe concerning SEPs. Recent years have demonstrated that traditional patent jurisprudence is ill-suited for disputes involving standard-essential patents (SEPs) and the promise to license them at rates that are fair, reasonable, and non-discriminatory (FRAND). Yet the technological future, including the Internet of Things and 5G mobile networks, can only be built using standards and patent licenses. Courts and governments worldwide are straining to adapt. Our panelists are Prof. JORGE CONTRERAS (University of Utah), JAMES HARLAN (InterDigital Corp.), and GIL OHANA (Cisco Systems). They will discuss:

Unwired Planet v. Huawei, the recent decision of the U.K. High Court that determined the value of a worldwide FRAND portfolio license to Unwired Planet’s patent portfolio and decreed that Huawei must license it at that rate or face an injunction;
• The outcome of numerous SEP cases that have followed Huawei v. ZTE, the 2015 ruling from the European court of Justice that spelled out conditions under which a SEP holder can ask for an injunction without infringing competition law;
• The April announcement by the European Union that it is preparing a “roadmap” to provide a framework for licensors and licensees of SEPs, and an early leak of its contents.

IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IPO HOLDS ANNUAL CONFERENCE IN PARIS

Last week IPO’s European Practice Committee held its 6th annual conference, entitled “Now That We’ve Got IP, What Are We Going to Do With It?”, at the Marriott Champs Elysees Hotel in Paris, France. The morning sessions focused on IP strategy and claims drafting and prosecution. Speakers from Europe and the U.S. discussed the current status of the Unitary Patent Package, evolving patent strategies for the U.S, strategies for approaching new restrictions on patentable subject matter in the U.S., and the “pemetrexed” decisions in UK and Germany. The afternoon session focused on licensing where speakers discussed recent FRAND decisions and how they affect licensing in the telecommunications sector and what impact the UPC will have on licensing. The conference concluded with a panel discussion on preliminary injunctions in the U.S., France, Germany, Netherlands, UK, and UPC.

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IP IN THE MASS MEDIA

Schutt Sports Sues Riddell on Football Helmet Technology

On Friday the Chicago Tribune reported that Schutt Sports filed a suit against Riddell over technology related to football helmets. Schutt alleged that Riddell’s SpeedFlex, Revolution Speed, and Revolution Speed Classic models infringed three of Schutt’s patents.

Huawei Misappropriated T-Mobile’s “Tappy” Trade Secrets

On Thursday the Seattle Times reported that a jury awarded T-Mobile $4.8 million in its suit against Huawei after finding the Chinese smartphone manufacturer breached a handset supply agreement between the two companies. The jury also found that Huawei misappropriated trade secrets related to a T-Mobile smartphone-testing robot named “Tappy,” but did not award damages because Huawei’s actions were not “willful and malicious.”

LEARN ABOUT LONG-TERM TRENDS AND CONTINUING EVOLUTION OF APPORTIONMENT

Attend IPO’s Patent Damages Conference on Wednesday, 7 June, in Chicago, Illinois to hear a panel discussion on the continuing evolution of patent damages law associated with apportionment for the footprint of the patent. Topics include: 1) the smallest salable patent practicing unit, 2) the Entire Market Value Rule, 3) treatment of standard essential patents, and 4) implications of F/RAND obligations. Additional information about the conference can be found on the website.