Past Week’s Daily News™
Friday, April 24, 2015 12:57 pm
U.S. FAST-TRACK TRADE BILL PASSES HOUSE COMMITTEE
Last evening the House Ways & Means Committee approved fast-track trade bill H.R. 1890, also known as the trade promotion authority bill, by a vote of 25 to 13. The vote was along party lines except that Democrats BLUMENAUER (Oregon) and KIND (Wisconsin) voted with Republicans. . Among other things the bill contains IP negotiating objectives. As reported in Daily News, the Senate Finance Committee approved the bill a day earlier. Despite support from President OBAMA, the bill faces challenges ahead before final congressional passage. Passage is thought to be an essential prerequisite to completion of the Trans-Pacific Partnership agreement.
USPTO OFFERS TOOL TO RECEIVE EMAIL ALERTS WHEN PATENT APPLICATIONS ARE PUBLISHED
Yesterday the USPTO announced the Patent Application Alert Service. The system provides customized email alerts to the public for free when patent applications of interest are published. The USPTO said the idea for the service came from a public roundtable held at the USPTO in 2014.
SENATE COMMITTEE APPROVES STOLL NOMINATION
Yesterday the Senate Judiciary Committee approved the nomination of KARA FARNANDEZ STOLL to be a judge on the U.S. Court of Appeals for the Federal Circuit. Stoll is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner. She was nominated by President Obama on Nov. 12. Her nomination now moves to the full Senate. If confirmed she will fill the one vacancy on the court, bringing it back to its full strength of 12 full-time judges.
JUDGES PANEL ON ITC LITIGATION AT IPO’S MAY 15 CONFERENCE
A session at IPO’s “Advanced ITC Litigation Class” will focus on Judge’s practice and the interactions between the ITC and its reviewing court. Speakers include HON. THEODORE ESSEX, Administrative Law Judge, U.S. ITC; HON. SANDRA DEE LORD, Administrative Law Judge, U.S. ITC; and HON. DAVID SHAW, Administrative Law Judge, U.S. ITC. The panel will be moderated by G. BRIAN BUSEY, Morrison & Foerster, LLP. Click here to view the program and to register. Space is limited.
|Hon. Theodore Essex||Hon. Sandra Dee Lord||Hon. David Shaw|
IP IN THE MASS MEDIA
Bass Continues Patent Challenges
Yesterday Bloomberg reported that hedge-fund manager KYLE BASS has filed for inter partes review of two drugs owned by Shire PLC and Celgene Corp. With this latest round of challenges, Bass has now targeted five different pharmaceutical companies.
NPR Features Meat Inventor
On Wednesday NPR featured a rerun of a program called “Can You Patent a Steak?” featuring meat inventor TONY MATA, who discovered a method to cut a piece of beef.
Thursday, April 23, 2015 12:32 pm
HOUSE SUBCOMMITTEE APPROVES PATENT DEMAND LETTER BILL WITH ONE AMENDMENT
Yesterday the Subcommittee on Commerce, Manufacturing, and Trade of the House Energy and Commerce Committee approved the draft Targeting Rogue and Opaque Letters Act (TROL Act) on a party line vote. The subcommittee adopted an amendment offered by Subcommittee Chairman MICHAEL BURGESS (R-Tex.) that replaces the affirmative defense in the original draft with a narrower approach. The new language adapts to patent demand letter context a bona fide defense from the Fair Debt Collection Practices Act that allows debt collectors to avoid liability if they can prove the violation was a bona fide mistake.
IPO supports federal legislation along the lines of the TROL Act, including preemption of state laws, but recommends clarification of language. The draft bill, a video of the hearing, and the text of all amendments offered during the markup, are available on the committee website.
Unsuccessful amendments were offered by Ranking Member JAN SCHAKOWSKY (D-Ill.) and Rep. JOSEPH KENNEDY (D-Mass.) to heighten FTC authority and remove a number of provisions including the requirement that communications covered be in bad faith, the requirement of a “pattern or practice” of sending such communications, and a provision preempting state laws on patent demand letters. Burgess introduced but immediately withdrew an amendment that would create a presumption of bad faith where senders of demand letters if ignored recipient requests for more information.
Rep. Paul Ryan
FAST-TRACK TRADE BILL PASSES FIRST TEST IN U.S. CONGRESS
Last night the Senate Finance Committee by a 20-6 vote approved the trade promotion authority (TPA) bill, also known as the fast-track trade bill, with the support of seven Democrats. It includes IP negotiating objectives and is believed essential for approval of major trade deals including the Trans-Pacific Partnership (TPP) agreement. TPA would allow agreements negotiated by the President to come to Congress for an up or down vote, with no amendments.
Senate Finance Democrats who voted in favor were WYDEN (Ore.), CANTWELL (Wash.), CARDIN (Md.), NELSON (Fla.), CARPER (Del.), WARNER (Va.) and BENNET (Colo.). BURR (N.C.) was the only Republican voting against it. Senate Finance’s counterpart in the House, the Ways and Means Committee chaired by PAUL RYAN (R-Wisc.), is scheduled to take up the bill at 9:00a.m. ET today.
TODAY ON IPO’S IP CHAT CHANNEL: SAFEGUARDING GUIs
Tune in to the IP Chat Channel today at 2:00p.m. ET to discuss Safeguarding GUIs: Best Practices Using Multiple Layers of IP, including Design Patents, Utility Patents, Copyright and Trade Dress. Our panelists include MICHAEL HSU, Adobe Systems Inc.; ROBERT KATZ, Banner & Witcoff, Ltd.; and ROBERT LORD, Osha Liang, LLP. 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.
IP IN THE MASS MEDIA
Former Employee Questions L’Oreal Patenting Methods
A former attorney for L’Oreal has filed a complaint alleging that he was fired for refusing to apply for questionable patents to fulfill the company quota for U.S. patent applications filed in 2014. (Bloomberg)
More Older Adults Inventing
Last week the New York Times reported that increasing numbers of older adults and retirees are becoming inventors and seeking assistance to license and market their inventions.
Drug Company Dealmakers Cutting Research
Today the Wall Street Journal published an article titled “Meet Pharma’s Newest Movers and Shakers.” According to the article, cost-cutting is a major focus of current drug company mergers and acquisitions. “Thousands of employees have lost their jobs including the researchers once considered the industry’s lifeblood.”
STAY CONNECTED WITH IPO
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• Follow @IPO on Twitter.
• Follow @IPOFoundation on Twitter
Wednesday, April 22, 2015 12:37 pm
HOUSE SUBCOMMITTEE TO MARK UP PATENT DEMAND LETTER BILL TODAY
Today at noon the Subcommittee on Commerce, Manufacturing, and Trade of the House Energy and Commerce Committee will mark up the draft Targeting Rogue and Opaque Letters Act (TROL Act). The meeting will be in room 2123 of the Rayburn Building. The TROL Act aims to protect businesses and consumers from abusive patent demand letters. IPO supports federal legislation along the lines of the TROL Act, including preemption of state laws, but recommends clarification of language.
The draft bill and a committee majority staff background memo can be found here. Subcommittee members must submit any amendments at least 2 hours before the markup. The markup will likely be webcast.
Sen. Orrin Hatch
SENATE FINANCE COMMITTEE VOTES TODAY ON FAST-TRACK TRADE BILL
Today the Senate Finance Committee will vote on the Trade Promotion Authority (TPA) bill, sometimes known as the fast-track trade bill, which, among other things includes IP negotiating objectives. The bill would allow the Obama Administration to bring the proposed Trans-Pacific Partnership (TPP) agreement to Congress for an up or down vote. At a committee hearing yesterday, TOM DONOHUE, the head of the U.S. Chamber of Commerce, said failure to complete the TPP would be the “equivalent of going out and resigning from the world.”
The bill is supported by President OBAMA and the chairman and ranking minority member of the Senate Finance Committee, ORRIN HATCH (R-Utah) and RON WYDEN (D-Oregon. According to a front page story in today’s Washington Post, however, Democratic presidential candidate HILLARY CLINTON and certain Republican candidates are hedging on their support for a trade deal.
IPO CONFERENCE IN SAN DIEGO ON ITC LITIGATION
Register for IPO’s “Advanced ITC Litigation Class” on May 15 in San Diego, CA. The one-day conference will cover Section 337 investigations by the U.S. International Trade Commission (“ITC”) and will examine the latest developments in Section 337 litigation. Through a series of in-depth modules, building on an introductory overview to acclimate those unfamiliar with Section 337 investigations, participants in this course will build their understanding of current strategy and tactics, as well as brush up on basic practice points. Organized by IPO’s ITC Committee. Click here to view the program and to register. Space is limited.
HAVE YOU TAKEN THE CHALLENGE?
Intellectual Property Owners Association has launched a new campaign to reward its members for their enthusiastic recruiting efforts and support of the association. Now through June 1, 2015, members that recruit a corporate or law firm member can select a prize for each new member recruited. Prizes include, Chat Channel passes, Annual Meeting registrations, advertising opportunities, and much more! Visit www.ipo.org/2015recruitingchallenge for a full list of benefits. To select your prize(s), please contact Colleen Wellington-Caban at firstname.lastname@example.org with your list of new members recruited.
IP IN THE MASS MEDIA
AppDynamics, CA Inc. Settle Patent Dispute
On Monday the Wall Street Journal reported that AppDynamics Inc. and CA Inc. settled a suit brought by CA alleging infringement of patents on software and misappropriation of trade secrets.
Tech Leaders Solicit Help of Start-ups on Patent Reform
On Monday the Washington Post reported that last week top executives from some of the country’s largest tech companies met with a group of start-up entrepreneurs to solicit their help on a number of legislative and policy issues including patent litigation reform.
Wired Criticizes John Deere DMCA Comments
Yesterday Wired published an article titled “We Can’t Let John Deere Destroy the Very Idea of Ownership” that criticizes a letter John Deere submitted to the Copyright Office in response to a request for comments on some aspects of the Digital Millennium Copyright Act. Editor’s note: IPO submitted letters to the Copyright Office on medical devices and 3D printers.
Tuesday, April 21, 2015 12:43 pm
* * * COURT UPHOLDS USPTO REFUSAL TO REGISTER DISPARAGING MARK
In re Tam 14-1203 — On Monday in an opinion by Judge MOORE, the Federal Circuit upheld the USPTO’s refusal to register a trademark. Tam sought to register THE SLANTS in connection with “live performances by a musical band.” The USPTO rejected the application under Lanham Act section 2(a) as disparaging.
Substantial evidence supported the USPTO’s finding that the mark would likely be “offensive to a substantial composite of people of Asian descent.” The record indicated the band’s name was intentionally “derived from an ethnic slur for Asians,” and the definitions in evidence “universally characterized” the term as disparaging when used to refer to a person of Asian descent. Judge MOORE filed 24-pages of “additional views,” in which she argued that it was time to revisit the constitutionality of refusing registrations as disparaging.
(1 to 4 stars rate impact of opinion on patent & trademark law)
HOUSE SUBCOMMITTEE TO MARK UP PATENT DEMAND LETTER BILL ON WEDNESDAY
On Wednesday, the Subcommittee on Commerce, Manufacturing, and Trade of the House Energy and Commerce Committee will mark up the draft Targeting Rogue and Opaque Letters Act (TROL Act). The meeting begins at noon in room 2123 of the Rayburn Building. The TROL Act aims to protect businesses and consumers from abusive patent demand letters. The draft bill can be found here.
USPTO PRESENTS PATENTS FOR HUMANITY AWARDS
Yesterday in a ceremony at the Eisenhower Executive Office Building the White House Office of Science and Technology and the USPTO presented Patents for Humanity Awards to seven recipients in five categories. A video of the ceremony is available on the White House website and remarks by USPTO Director MICHELLE LEE are posted on the USPTO website.
MISSED THAT IP CHAT CHANNEL WEBINAR? — FIND OUT HOW B&B HARDWARE WILL AFFECT PTAB CASES
In an April 9 IP Chat Channel webcast, three experts provided insight as to how the Supreme Court’s decision in B&B Hardware, Inc. v. Hargis Industries, Inc.—a trademark case that considered the preclusive effect of Trademark Trial and Appeal Board (TTAB) decisions on district court cases—might apply to cases involving Patent Trial and Appeal Board (PTAB) determinations. Considering the similarities between TTAB and PTAB proceedings, the panelists discussed the factors that will be considered “when inevitably the Federal Circuit is asked whether the B&B framework can apply to these final decisions from the patent office,” said ERIKA ARNER of Finnegan.
In B&B, the Supreme Court said that issue preclusion can apply to TTAB decisions under certain circumstances—specifically, “when the usages adjudicated by the TTAB are materially the same as those before a district court.” This may be a key distinction; while PTAB proceedings are similar to TTAB trials, the Federal Circuit has noted in other cases that the PTAB is charged with ruling on patentability while the courts are concerned with the validity of a patent. They also employ different standards when considering patents—“clear and convincing evidence” in the courts versus the “broadest reasonable interpretation” at the PTAB. “Those are the types of differences that might come into play in deciding whether a PTAB determination could be binding,” said Ms. Arner.
ANDREW PINCUS of Mayer Brown pointed to the dissent in B&B Hardware by JUSTICES SCALIA and THOMAS, which echoed other dissents expressing skepticism about granting too much authority to administrative agencies. Considering there are already several cases pending at the Federal Circuit that challenge the constitutionality of PTAB trials generally, moderator PAMELA SHERRID asked Mr. Pincus whether courts may be more wary of giving preclusive effect to PTAB decisions. “The critical question is going to be whether estoppel or any of the other rules violate due process principles,” said Mr. Pincus.
THOMAS SAUNDERS of WilmerHale examined how the Federal Circuit has approached this problem from the perspective of ex parte reexamination and interference proceedings prior to the America Invents Act. “For people thinking about what B&B means [for patent cases] going forward, know that you’re not coming into this with a clean slate,” said Mr. Saunders.
To get the final verdict on what B&B means for PTAB trials and to learn how to prepare, register to listen to the archived version of the webcast here.
IPO HOLDS BRIEFINGS FOR CORPORATE MEMBER WASHINGTON REPRESENTATIVES; ADD YOUR WASHINGTON REP. TO OUR LIST
IPO holds quarterly briefings in our Washington, DC office for our corporate members’ Washington representatives. The purpose of the briefing is to provide an update on IP legislation and policy, and to have a discussion of the IP-related interests of your companies. If you would like to add your company’s Washington representative to our list, email Laura Minniear at email@example.com. Our next Washington Representatives briefing will be held in May.
IP IN THE MASS MEDIA
HBO “News” Show Takes on Patent Trolls
On Sunday the HBO satirical news program “Last Week Tonight with John Oliver” reported on the problem of litigation by “patent trolls.”
FINNEGAN TO SPONSOR IPO’S CONFERENCE IN LONDON
Many thanks to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP for sponsoring IPO’s conference “Never Been a Better Time (for IP) Than Right Now” on May 20 in London, UK. Click here to view the program and to register.
Monday, April 20, 2015 1:36 pm
* * USPTO PROPERLY DECIDED “NOPALEA” WAS MERELY DESCRIPTIVE OF PRODUCT DERIVED FROM NOPALEA CACTUS
In re TriVita, Inc. 14-1383 — On Friday in an opinion by Judge NEWMAN, the Federal Circuit upheld the USPTO’s refusal to register a trademark. TriVita sought to register NOPALEA in connection with dietary and nutritional supplements containing nopal juice. The USPTO rejected the application under Lanham Act section 2(e)(1) as merely descriptive of a feature of the goods because nopal juice is derived from the nopalea cactus. TriVita argued that the letters “EA” at the end of “nopal” made the proposed mark “substantially different in sight and sound” and that ordinary consumers would be “of low botanical sophistication.”
Substantial evidence supported the USPTO. “Nopalea” was not a made-up word with arbitrary letters, but the actual “genus of cacti from which nopal juice . . . is derived.” Consumers were likely to assume from the NOPALEA mark that TriVita’s products contained ingredients from the nopalea cactus.
(1 to 4 stars rate impact of opinion on patent & trademark law)
ATTORNEY FEE SHIFTING IN PATENT INFRINGEMENT SUITS IN U.S. DISTRICT COURTS: WEEKLY REPORT
On April 9, Judge SWAIN in the Southern District of New York awarded $818,124 in attorney fees and expenses to the accused infringer. The patent owner and its former counsel were jointly and severally liable for the award under 35 U.S.C. 285 and 18 U.S.C. 1927. WorldwidevBedBath
INVENTORS OF THE YEAR COME FROM ALL INDUSTRIES
IPO Education Foundation’s Inventor of the Year Award can be given to any inventor in any field of technology, working independently or for a company or university. Inventors are recognized for a recently patented invention that has had an impact on lives, communities, and/or economies. Past Inventors of the Year come from pharmaceutical, auto, and technology companies. Others come from university engineering and medical labs. Nominate an inventor for the Inventor of the Year Award by May 1 by clicking here and telling us the inventor’s name, the invention for which he or she is being nominated, and your contact information.
IPO COMMITTEE CALLS THIS WEEK
Monday, April 20,
International Trademark Law and Anti-Counterfeiting Committee — 6:00p.m. ET
Thursday, April 23,
European Practice Committee — 12:00n.n. ET
Canadian Practice Committee — 2:00p.m. ET
To join one of IPO’s 29 Standing IP Committees, visit www.ipo.org/committeesignup.
IP IN THE MASS MEDIA
Pawlenty Calls for Changes in Patent Reform Bills
Last week Inside Sources published an op-ed by former Minnesota Governor TIM PAWLENTY arguing that any legislation to curb patent troll litigation should address patent demand letters and make permanent the USPTO’s covered business method review proceedings.
Henley and Duluth Trading Settle Trademark Dispute
On Friday the Wisconsin State Journal reported that Eagles singer DON HENLEY and Duluth Trading Co. settled a suit brought by Henley claiming Duluth’s use of his name and the slogan “take it easy” to advertise its shirts infringed his trademarks.
Dimmer Switch Inventor Led Successful Company
Last week the Washington Post reported the death of JOEL SPIRA, 88, who invented a solid state light dimmer switch and founded Lutron Electronics, a major manufacturer of lighting controls. Spira led the company for 54 years. He held more than 300 U.S. patents and more than 2,700 worldwide.
USPTO PATENTS FOR HUMANITY CEREMONY WEBCAST TODAY
Today the USPTO’s 2015 Patents for Humanity award recipients are being honored at a ceremony at the White House. The public can view the ceremony at 10:00a.m. ET by clicking here.
THIS WEEK ON IPO’S IP CHAT CHANNEL: SAFEGUARDING GUIs
Tune in to the IP Chat Channel on Thursday, April 23 at 2:00p.m. ET to discuss Safeguarding GUIs: Best Practices Using Multiple Layers of IP, including Design Patents, Utility Patents, Copyright and Trade Dress. Successful Graphical User Interface (GUI) is key to strategy at many corporations these days, as more manufactured products offer sophisticated digital features and connectivity through the Internet of Things. Yet it’s tricky to provide effective IP protection of GUI, and it is growing harder as the field becomes crowded with prior art and is faced with the new challenges posed by Alice. This webinar will discuss how best to protect GUIs using all the tools in the IP law kit.
Our panelists are MICHAEL HSU of Adobe Systems Inc., who is charged with protecting the inventions of an in-house “experience design” team; design patent expert ROBERT KATZ of Banner & Witcoff, Ltd.; and software IP lawyer ROBERT LORD of Osha Liang, LLP. 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.