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Past Week’s Daily News™

Monday, 27 March, 2017 12:47 pm

U.S. SUPREME COURT TO HEAR ARGUMENTS CONCERNING VENUE IN PATENT CASES

Today the U.S. Supreme Court will hear arguments in TC Heartland LLC v. Kraft Food Brands Group LLC (16-341). 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.” At issue before the Supreme Court is whether the patent venue statute “is the sole and exclusive provision governing venue in patent infringement actions.”

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THIS WEEK ON IPO’S IP CHAT CHANNEL: IPR ESTOPPEL IN DISTRICT COURT: HOW WIDE?

Tune in to the IP Chat Channel on Wednesday, 29 March, at 2:00p.m. ET for IPR Estoppel in District Court: How Wide? A year ago, in Shaw Industries v. Automated Creel Systems, the Federal Circuit held that estoppel does not apply to grounds denied by the PTAB in an IPR because the “IPR does not begin until it is instituted.” Today, an uncomfortable stasis holds: District courts are interpreting Shaw to apply section 315(e)(2) one way, while the PTAB interprets nearly identical language in section 315(e)(1) in a different way that broadens IPR estoppel.

Additionally, in Intellectual Ventures v. Toshiba late last year, a district court went further and refused to apply estoppel to “references that were never presented to the PTAB at all.” It is not clear at present whether the Federal Circuit will confirm that view, or if it will feel obliged to define the boundaries of prior art that “reasonably could have been raised” as in section 315. Panelists JON GURKA (Knobbe, Martens, Olson & Bear LLP), Hon. FAITH HOCHBERG (Hochberg ADR), and THAD KODISH (Fish & Richardson PC) will analyze the situation for both patent owners and petitioners and offer tactics on how both can best navigate the legal uncertainties.

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

Bentley Loses Opposition to Same-Name Mark for Clothing in UK

Last week The Fashion Law blog reported that luxury automobile maker Bentley Motors lost an opposition filed at the United Kingdom Intellectual Property Office against Manchester-based Bentley Clothing Company after failing to provide evidence of use of its “Bentley” trademark in connection with garments and the sale of garments.

Sanofi Sues Amgen on Eczema Drug Patent

Last week the Boston Business Journal reported that Sanofi-Genzyme and partner Regeneron Pharmaceuticals filed a declaratory judgement suit against Amgen seeking a determination that its soon-to-be-released eczema drug Dupixent does not infringe an Amgen patent.

WILDANGER KEHRWALD GRAF V. SCHWERIN & PARTNER MBB TO SPONSOR IPO’S EUROPEAN PRACTICE CONFERENCE ON IP STRATEGY

Wildanger Kehrwald Graf v. Schwerin & Partner mbB will sponsor IPO’s European Practice Conference on IP Strategy on 18 May 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.

Wildanger2016



Friday, 24 March, 2017 12:37 pm

HOUSE JUDICIARY LEADERS RELEASE REGISTER OF COPYRIGHTS SELECTION AND ACCOUNTABILITY ACT

Yesterday House Judiciary Committee Chairman BOB GOODLATTE (R-Va.) and Ranking Member JOHN CONYERS (D-Mich.), joined by 29 co-sponsors, introduced the Register of Copyrights Selection and Accountability Act. The bill changes the selection process for the Register, providing that that the Register of Copyrights shall be appointed by the President with the advice and consent of the Senate rather than selected by the Librarian of Congress. A press release on the Committee’s website describes the bill as “the product of months of bicameral, bipartisan discussions led by Chairman Goodlatte, Ranking Member Conyers, Senate Judiciary Committee Chairman CHUCK GRASSLEY (R-Iowa), Ranking Member DIANNE FEINSTEIN (D-Calif.), and Senate Judiciary Committee Member PATRICK LEAHY (D-Vt.).”

IPO strongly supports the bill, which is consistent with the 2016 resolution adopted by the IPO Board stating that “Congress should ensure that the Copyright Office has the staffing, budget, information technology, flexibility, and autonomy it needs to meet the current and future demands of copyright owners and the public. This should be accomplished by, at the very least, passing legislation to require that the Register of the Office is a presidential nominee and that the Copyright Office is autonomous from the Library of Congress, including having its own budget and information technology systems separate from the Library of Congress.” Executive Director MARK LAUROESCH said “this bill is an important first step toward modernizing the Copyright Office and giving it the autonomy it requires to deliver high quality services to its stakeholders.”

Federal Circuit Summaries Logo

* * EXCEPTIONAL PATENT CASE FINDING UNDER OCTANE FITNESS IS NOT BASED ON PRECISE FRAMEWORK

Univ. of Utah v. Max-Planck-Gesellschaft Zur Foerderung Der Wissenschaftent E.V. 16-1336 — Yesterday in an opinion by Judge REYNA, the Federal Circuit upheld a district court’s denial of attorney fees. Planck’s patents were directed to the RNA interference process, which is used to prevent certain genes from expressing proteins. After prevailing against Utah regarding Utah’s inventorship claims, Planck sought attorney fees under Patent Act section 285. Planck argued that the district court failed to consider the Supreme Court’s “framework” for finding a case exceptional under Octane Fitness.

The district court did not abuse its discretion in finding that Utah’s conduct did not support an exceptional case finding under section 285. Octane Fitness did not provide any precise framework, but gave courts “discretion to make exceptional case determinations on a case-by-case basis, considering the totality of the circumstances.” Here, the district court provided a thorough explanation that Utah’s case was not objectively unreasonable and did not stand out from other patent cases.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP Chat Channel Logo

NEXT WEEK ON IPO’S IP CHAT CHANNEL: IPR ESTOPPEL IN DISTRICT COURT: HOW WIDE?

Tune in to the IP Chat Channel on Wednesday, 29 March, at 2:00p.m. ET to learn more about IPR Estoppel in District Court: How Wide? with panelists JON GURKA (Knobbe, Martens, Olson & Bear LLP), Hon. FAITH HOCHBERG (Hochberg ADR), and THAD KODISH (Fish & Richardson PC).

A year ago, in Shaw Industries v. Automated Creel Systems, the Federal Circuit held that estoppel does not apply to grounds denied by the PTAB in an IPR because the “IPR does not begin until it is instituted.” Today, an uncomfortable stasis holds: District courts are interpreting Shaw to apply section 315(e)(2) one way, while the PTAB interprets nearly identical language in section 315(e)(1) in a different way that broadens IPR estoppel. Additionally, in Intellectual Ventures v. Toshiba late last year, a district court went further and refused to apply estoppel to “references that were never presented to the PTAB at all.” It is not clear whether the Federal Circuit will confirm that view, or if it will feel obliged to define the boundaries of prior art that “reasonably could have been raised” as in section 315. Our panel will analyze the situation for both patent owners and petitioners and offer tactics on how both can best navigate the legal uncertainties.

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 Sued on Claim it Copied “Zootopia”

On Wednesday The Hollywood Reporter reported that Disney was sued by Esplanade Productions and writer GARY GOLDMAN for copyright infringement, claiming Disney’s “Zootopia” copies Goldman’s themes, settings, plot, characters, and dialogue for a similar project that he previously pitched to the company.

Chery Automobile Files Trademark Complaint in China against Mercedes

Yesterday Fortune reported that Chinese automaker Chery Automobile filed a complaint with China’s Trademark Office of the State Administration for Industry and Commerce against Mercedes-Benz, claiming that the German automaker’s use of the “EQ” name for a line of green-energy vehicles is substantially similar to its “eQ” mark already in use for its two-door battery electric car.




Thursday, 23 March, 2017 12:53 pm

****U.S. SUPREME COURT FINDS DESIGNS ON CHEERLEADING UNIFORMS ELIGIBLE FOR COPYRIGHT PROTECTION

Star Athletica, LLC v. Varsity Brands, Inc. (15-866) — Yesterday, in an opinion by Justice THOMAS, the U.S. Supreme Court upheld a decision of the 6th Circuit Court of Appeals that Varsity’s designs were eligible for copyright protection. Varsity owned copyright registrations for two-dimensional designs that were incorporated into athletic apparel like cheerleading uniforms. At issue was the appropriate test for determining when a feature of a useful article is protectable under section 101 of the Copyright Act.

The Supreme Court held that an artistic feature of a design of a useful article is eligible for protection if it meets two requirements. The first is that it can be perceived as a two- or three-dimensional work of art separate from the underlying useful article. The second is that it would qualify as a protectable work on its own or in some other medium “if imagined separately from the useful article.” In this case, Varsity’s designs on the cheerleading uniforms satisfied both requirements. Justice GINSBURG, concurring, clarified that the designs at issue were copyrightable works that had simply been reproduced on the useful articles, so consideration of the useful article test was unwarranted. Justice BREYER, joined by Justice KENNEDY, argued in dissent that Varsity’s design features were not capable of existing independently of the utilitarian aspects of the cheerleading uniform as required by the statute.

IPO filed an amicus brief encouraging the Court to affirm the Sixth Circuit’s totality of the circumstances multi-factor test containing five questions to ask in order to determine separability under section 101 of the Copyright Act. The brief was drafted by DAVID LEICHTMAN and SHERLI FURST (Robins Kaplan LLP). IPO President KEVIN RHODES (3M Innovative Properties Co.) and Amicus Committee Chair STEVEN MILLER (Procter & Gamble Co.) were also on the brief.
(1 to 4 stars rate impact of opinion on patent & trademark law)

MANAGING IP TO HOST GLOBAL PATENT ROADSHOW IN APRIL

Managing Intellectual Property magazine is hosting its MIP Global Patent Roadshow in Palo Alto, California on 25 April and in Chicago, Illinois on 27 April. The 2-city event will bring together corporations, industry associations, and law firms to discuss the current global patent landscape. IPO members will receive a discount to attend. For further details, please email registrations@managingip.com.

IP IN THE MASS MEDIA

Adidas Sues Juicy Couture for Trademark Infringement on Three-Stripe Pattern

On Tuesday The Fashion Law blog reported that German sportswear manufacturer Adidas sued Juicy Couture for trademark infringement, claiming the designer intentionally used confusingly similar imitations of Adidas’ federally registered three-stripe mark in its Tricot collection pants and jackets.

Myriad Challenges Esoterix DNA Test Patents

On Tuesday Bloomberg reported that Myriad argued before the U.S. Patent Trial and Appeal Board that four Johns Hopkins University patents on DNA test technology exclusively licensed by Esoterix Genetic Laboratories are obvious or anticipated by prior research publications. Esoterix recently sued Myriad claiming that Myriad’s MyRisk Hereditary Cancer Test infringes these patents.




Wednesday, 22 March, 2017 12:53 pm

**** U.S. SUPREME COURT ELIMINATES LACHES AS TIME BAR FOR DAMAGE CLAIMS OCCURING WITHIN PATENT ACT SECTION 286 SIX-YEAR PERIOD

SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC (15-927) — On Tuesday in an opinion by Justice ALITO, the U.S. Supreme Court, overruling the Federal Circuit, held that the common law doctrine of laches cannot be invoked as a defense against a claim for damages brought within the six-year limitation period prescribed by Patent Act section 286. SCA’s patent claimed an absorbent pants-type diaper. An en banc Federal Circuit majority held that the U.S. Supreme Court opinion in Petrella, which eliminated laches as a defense to a damages claim in a copyright suit filed within the Copyright Act’s statute of limitations, did not similarly affect laches in patent suits because Patent Act section 282(b) codified a laches defense by broadly specifying defenses in general terms.

The Supreme Court disagreed. “It would be exceedingly unusual, if not unprecedented, if Congress chose to include in the Patent Act both a statute of limitations for damages and a laches provision applicable to a damages claim.” It was a well-established common law principle when the 1952 Patent Act was enacted that laches would not bar a claim for “damages incurred within a limitations period specified by Congress.” First Quality failed to convince the Court by proving the “broad and unambiguous consensus” of lower courts that § 282(b)(1) codified a contrary rule for patent infringement suits.

In dissent, Justice BREYER said “the principal technical drafter of the Patent Act…stated that § 282 was meant to codify ‘equitable defenses such as laches’” and that “a long history of case law … shows with crystal clarity that Congress intended the statute to keep laches as a defense.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* SUBSTANTIAL EVIDENCE SUPPORTED THAT COMPUTER SECURITY SYSTEM PATENT CLAIMS WERE INVALID AND NOT INFRINGED

TVIIM, LLC, v. McAfee, Inc. 16-1562 — On Tuesday in an opinion by Judge REYNA, the Federal Circuit upheld a district court decision that TVIIM’s claims were invalid and not infringed. The claims were for a computer security system that included limitations for identifying and reporting vulnerabilities in the computer and performing various utility functions in response to those vulnerabilities. TVIIM argued that the same claim construction for “reporting detected vulnerabilities” could not be used for the invalidity and non-infringement findings.

The Federal Circuit said that substantial evidence supported the invalidity and non-infringement findings. McAfee’s product, “Program Updates,” took action only when an update was available, but did not report any detected vulnerabilities. The record also demonstrated that the prior art references “provide[d] users with specific reports on detected vulnerabilities.” TVIIM failed to demonstrate how the invalidity and non-infringement findings could not be based on the same claim construction.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP IN THE MASS MEDIA

Costco Sues Titleist on Golf Ball Design Patents

Yesterday USA Today reported that Costco Wholesale Corp. filed a declaratory judgement suit against Titleist owner Acushnet Holding Corp., seeking a determination that Costco’s Kirkland Signature brand golf ball does not infringe Acushnet design patents.

Hendrix Estate Sues Singer’s Brother 

On Monday Bloomberg reported that JIMI HENDRIX’s estate sued the rock guitarist’s brother LEON HENDRIX, his business partner ANDREW PITSICALIS, and their company Purple Haze Properties LLC for trademark infringement, claiming that the company’s Hendrix-themed products such as “Jimi’s Cannabis Collection Purple Haze” and “Jimi’s Wines” infringe trademarks and copyrights owned by the estate.




Tuesday, 21 March, 2017 12:32 pm

U.S. SUPREME COURT TO HEAR ORAL ARGUMENT REGARDING EXHAUSTION UNDER PATENT ACT

Today the U.S. Supreme Court will hear oral argument in Impression Prods., Inc. v. Lexmark Int’l, Inc. (15-1189). Lexmark’s patent claimed toner cartridges for printers, which Lexmark sold with restrictions as refillable or single-use. Lexmark alleged that Impression sold remanufactured cartridges in the U.S. that had originally been sold outside of the U.S. In a 99-page opinion, a split Federal Circuit sitting en banc held that Lexmark did not exhaust its rights regarding the sales with restrictions in the U.S. or the foreign sales.

Two questions are before the Supreme Court. The first is whether a “conditional sale” that transfers title to the patented item, but specifies post-sale restrictions, avoids application of the patent-exhaustion doctrine, thereby permitting enforcement of the restrictions through an infringement suit. The second question asks whether the common-law doctrine barring restraints on alienation “makes no geographical distinctions” such that an authorized sale of a patented article outside the United States exhausts the U.S. patent rights.

IPO filed an amicus brief arguing that 1) the Supreme Court’s decision in Quanta does not render all forms of conditional sales or licenses of patented products unlawful, nor should it, and 2) the Court’s decision in Kirtsaeng does not apply to patents and did not overrule Jazz Photo. The brief was drafted by IPO members ROBERT ISACKSON, WILLIAM COSTON, and JOSHUA CUMBY of Venable LLP.

Federal Circuit Summaries Logo

* * DISTRICT COURT CORRECTLY EXAMINED TOTALITY OF CIRCUMSTANCES TO FIND PATENT INFRINGEMENT SUIT EXCEPTIONAL AND AWARD ATTORNEY FEES

Bayer CropScience AG v. Dow AgroSciences LLC 15-1854 — On Friday in an opinion by Judge STOLL, the Federal Circuit upheld a district court’s attorney fee award to Dow. Bayer’s patents related to genetically engineered, herbicide-resistant soybeans. The parties disputed the scope of a license agreement between Bayer and Dow’s partner M.S. Technologies. The district court agreed with Dow that the license granted M.S. Tech the rights to commercialize the patents rather than only non-commercial rights as argued by Bayer. The district court found that “Bayer’s weak positions on the merits and litigation conduct” supported an exceptional case finding under Patent Act section 285.

The district court did not abuse its discretion in finding this case exceptional. The court correctly examined the totality of the circumstances as required under Octane Fitness. Bayer’s own witnesses and key documents contradicted Bayer’s “contorted reading” of the license. Bayer’s conduct in proceeding with the infringement suit in spite of that evidence was objectively unreasonable and made this case stand out from others.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO PUBLISHES SEMI-ANNUAL SNAPSHOT

IPO and IPO Education Foundation have been busy. In the past six months, work done by IPO members has allowed us to pass four board resolutions and submit seven amicus briefs. The Education Foundation had its most successful awards dinner yet and recently launched the 7th annual IP Video Contest scholarship program to teach young adults about the value of IP. Check out the report for more on what your organization is doing.

IP IN THE MASS MEDIA

Spirit Guitarist Appeals “Stairway to Heaven” Copyright Suit Verdict

Last week Rolling Stone reported that the estate of Spirit guitarist RANDY WOLFE filed an appeal with the U.S. Court of Appeals for the Ninth Circuit claiming that “erroneous” jury instructions were to blame for the unanimous verdict for Led Zeppelin in Wolfe’s copyright infringement suit against the band. Wolfe claimed that Zeppelin copied the opening riff of Spirit’s song “Taurus” in its hit “Stairway to Heaven.”