Past Week’s Daily News™
Friday, May 22, 2015 12:19 pm
SENATE JUDICIARY DEFERS CONSIDERATION OF PATENT LITIGATION BILL
Yesterday during its weekly meeting the Senate Judiciary Committee held over consideration of Chairman CHUCK GRASSLEY’S “PATENT Act,” S. 1137. Under committee rules consideration of the bill will be held over until the committee’s next meeting on June 4, after the Memorial Day recess.
In his opening statement, Grassley said he was working with Ranking Member PATRICK LEAHY and other members of the committee to draft and vet a provision to address perceived weaknesses in the USPTO’s post grant proceedings. He cautioned that “no one will get everything they want” and said the committee’s goal was to strike a balance that would increase confidence in the fairness of the proceedings without gutting them.
Yesterday Politico reported that House Judiciary Chairman BOB GOODLATTE has been circulating a list of possible modifications to his “Innovation Act,” H.R. 9 that could make the bill more similar to the Senate bill. Possibilities include addressing stakeholders’ concerns about post grant proceedings, as well as updates to provisions providing for customer stays and stays of discovery pending resolution of certain motions. The list also identifies a provision on venue as a possible modification, to clarify that a patent infringement suit may be brought only in a judicial district reasonably connected with a dispute. Earlier this week Goodlatte delayed a markup of the bill until after the Memorial Day recess to continue discussions about possible changes.
A chart comparing the main provisions of S. 1137 and H.R. 9 with IPO positions is available on the IPO website.
SENATE ADVANCES TRADE PROMOTION AUTHORITY BILL
Yesterday the U.S. Senate approved consideration of a trade promotion authority (TPA) bill by a vote of 62-38. This procedural vote unique to the Senate, known as cloture, is designed to limit debate and overcome a filibuster. Invoking cloture requires at least 60 votes.
TPA, sometimes called fast-track authority, defines negotiating objectives and priorities for trade agreements and limits Congress to an up or down vote with no amendments on trade agreements. TPA is believed necessary for completing negotiations on the Trans-Pacific Partnership (TPP) and Transatlantic Trade and Investment Partnership (TTIP) agreements.
Senate approval of TPA is expected before the start of the Memorial Day recess. The bill will then be considered by the U.S. House of Representatives, where it faces a significant amount of opposition.
US SUPREME COURT APPROVES CHANGES TO FEDERAL RULES OF CIVIL PROCEDURE
In an order dated April 29, the U.S. Supreme Court approved changes to the Federal Rules of Civil Procedure proposed by the Judicial Conference of the United States. The amendments will take effect on December 1, 2015, unless Congress acts to reject, modify, or defer them. The proposed changes would affect all civil litigation, including patent litigation. One proposal deletes the Appendix of Forms, including the forms for patent and copyright infringement complaints, along with the rule that says the forms “suffice under these rules.” Other proposed changes relate to case management, discovery, and sanctions.
NEW ARTICLE ON IPO WEBSITE BY BRIAN D. COGGIO AND RON VOGEL
The IPO Law Journal contains a new article entitled “Personal Jurisdiction in Hatch-Waxman Actions in View of Daimler.” The authors are both with the firm Fish & Richardson, PC. To view the IPO Law Journal, go to www.ipo.org/lawjournal. To submit an article for publication, go to http://www.ipo.org/submitarticle.
NEW IPO MEMBER
MICHAEL MALONEY of New York, N.Y. has become an individual member of IPO.
IP IN THE MASS MEDIA
Op-Ed Says Innovation Act Will Harm Startups
Yesterday The Hill’s “Congress Blog” published an op-ed titled “How to kill the next generation of startups.” The piece argues that H.R. 9, the Innovation Act, will “immunize big tech companies against the patent rights of startups and small businesses.”
Wal-Mart Successful in Domain Name Dispute
On Wednesday Ars Technica reported that Wal-Mart recently won the rights to Walmart.horse after instituting a WIPO domain name dispute against the former owner. Artist JEPH JACQUES, who voluntarily relinquished ownership, originally purchased the site to post a picture of a horse in front of a Wal-Mart store.
Reviving Brands Online As New Business Model
On Wednesday the Wall Street Journal published an article about entrepreneurs who purchase bankrupt companies’ IP and use the failed brands’ identities to launch new companies online.
Washington Man Registers Trademarks for Potential Football Team Names
This week the Washington Post reported that MARTIN MCCAULAY has registered trademarks and domains for eight football team names that he believes could be options for Washington, DC’s professional football team if the team changes its name in light of the recommend cancellation of its federal trademark registration.
QUALCOMM TO SPONSOR IPO’S DAMAGES CONFERENCE
Many thanks to Qualcomm, Inc. for sponsoring IPO’s “Patent Damages Law: Are Changes Needed?” on May 27 in Washington, DC.
Thursday, May 21, 2015 12:50 pm
PATENT LITIGATION BILL ON AGENDA FOR TODAY’S SENATE JUDICIARY MEETING
Chairman CHUCK GRASSLSEY’s “PATENT Act,” S. 1137, is listed on the agenda for today’s weekly meeting of the Senate Judiciary Committee. Under committee rules consideration of the bill will be held over until the committee’s next meeting on June 4, after the Memorial Day recess.
The bill is intended to discourage frivolous patent lawsuits. Senators are said to be working to add a provision to address weaknesses in the USPTO’s post grant proceedings. A chart comparing the main provisions of S. 1137 with House Judiciary Committee Chairman BOB GOODLATTE’s “Innovation Act,” H.R. 9, is available on the IPO website.
STUDY FINDS NUMBER OF NEW PATENT SUITS FILED DECREASED 13% IN 2014
Yesterday PricewaterhouseCoopers LLP published its 2015 Patent Litigation Study. The report’s most significant finding is that the number of patent suits filed in 2014 decreased by about 13%. This represents the first annual decrease since 2009. The study’s authors say the decline is likely attributable to a number of factors but cites as the primary factor the Supreme Court’s June 2014 decision in Alice Corp v. CLS Bank.
TODAY ON IPO’S IP CHAT CHANNEL: USPTO AND PLAIN MEANING OF TERMS
Tune in to the IP Chat Channel today at 2:00p.m. ET to discuss USPTO and Plain Meaning of Terms. Our panelists include BRENTON BABCOCK, Knobbe, Martens, Olson & Bear, LLP; GARY GANZI, Evoqua Water Technologies LLC; and JOSEPH WEISS, U.S. Patent & Trademark Office. 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
Toho Sues Voltage Pictures for Infringing Copyright on Godzilla
Yesterday Wired reported that Taho, the Japanese movie studio that owns the Godzilla franchise, sued Voltage Pictures for copyright infringement claiming the new film Colossal copies numerous aspects of the Godzilla films.
Pirate Bay Moves to New Domain Names After Original Confiscated
On Tuesday a Swedish judge confiscated file-sharing site Pirate Bay’s domain names after determining that they were the property of co-founder FREDRIK NEIJ, who is serving time in a Swedish prison for criminal copyright infringement. That same day the site announced registration of six new domain names. (Washington Post)
NEW ARTICLE ON IPO WEBSITE BY GARY L. GRISWOLD
The IPO Law Journal contains a new article entitled “Publishing Design Patent Applications: Time to Act.” The article is an update to an earlier article published by Mr. Griswold, a past IPO president and formerly Chief Intellectual Property Counsel for 3M Innovative Properties Company. To view the IPO Law Journal, go to www.ipo.org/lawjournal. To submit an article for publication, go to http://www.ipo.org/submitarticle.
NEW IPO MEMBER
ROBERT HOLTHUS of Houston, Texas has become an individual member of IPO.
MISSED THAT IP CHAT CHANNEL WEBINAR? – HOW TO PROSECUTE PATENTS THAT WILL SURVIVE THE PTAB
The Patent Trial and Appeal Board (PTAB) proceedings created by the America Invents Act (AIA) in 2012 have had patent litigators at work right from the start. But, as IPO Chat Channel host PAMELA SHERRID said during last week’s webinar on Patent Prosecution Strategies in View of Post Grant Proceedings, “now it’s clear that the influence of those proceedings needs to reach back and inform patent prosecutors before a patent is issued, and even before a patent application is drafted.”
The increased scrutiny on patents as a result of post grant review (PGR), inter partes review (IPR) and covered business method (CBM) proceedings at the PTAB have made following best practices in patent prosecution more critical than ever. But it also may call for approaches that seem contrary to good practice from a litigation standpoint.
For example, COURTENAY BRINCKERHOFF of Foley & Lardner said that, to avoid an inter partes review proceeding altogether, one strategy is to provide a summary of selected prior art references in an information disclosure statement (IDS) in order to show that the examiner has already been advised of the relevant issues. “Some litigators might not like this advice based on [potential] inequitable conduct [issues], but if you can carefully and honestly describe selected references, you can at least then show that [they] were brought to the examiner’s attention,” which could convince the PTAB not to institute the IPR, said Ms. Brinckerhoff.
Intellectual Ventures’ MICHELLE MACARTNEY said that incorporating a lot of claims using varying terms to describe the same concepts is crucial, as is avoiding language that is ambiguous—particularly the prosecution favorite, “substantially.”
THOMAS ROZYLOWICZ of Fish & Richardson added that, now more than ever, “there is no substitute for getting the claim set right.” Although there have been indications that the PTAB might take measures to ease the standard with which they currently analyze claims, Mr. Rozylowicz explained that “the need to include more detail to explain the way in which components interact with one another is key.”
Today’s IPO Chat Channel webinar will focus on the USPTO’s new examiner training guidelines issued in March, which says that examiners should include claim interpretation in the prosecution record. This could further influence the PTAB’s interpretations of claims in PTAB proceedings. JOSEPH WEISS, an attorney from the USPTO’s Office of Legal Administration, will explain how these guidelines will work in practice.
Wednesday, May 20, 2015 12:56 pm
NO ACTION ON U.S. PATENT LITIGATION BILLS BEFORE MEMORIAL DAY
The House Judiciary Committee will not hold a meeting this week to mark up H.R. 9, Chairman BOB GOODLATTE’S “Innovation Act.” Last week Senate Judiciary Committee Chairman CHUCK GRASSLEY said a hearing to mark up his “PATENT Act,” S. 1137, would be delayed until after the Memorial Day holiday. Grassley said the delay was the result of negotiations to add a provision to the bill to address weaknesses in the USPTO’s post grant proceedings.
PTAB CHIEF JUDGE TO STEP DOWN
Yesterday the USPTO confirmed that Patent Trial and Appeal Chief Board Judge JAMES SMITH will step down from his post later this year. He has been chief judge since 2011 and has been instrumental in implementing the new post grant proceedings created by the America Invents Act. Before joining the PTAB, Smith was chief intellectual property counsel at the health care company Baxter International Inc. According to his colleagues he has often worked 16-hour days during his tenure in the USPTO. He was a speaker at the IPO Education Foundation’s recent PTO Day conference.
IP IN THE MASS MEDIA
DOJ Charges Chinese Professor with Trade Secret Theft, Espionage
Yesterday CNBC reported that a Chinese professor was arrested in Los Angeles on charges from the U.S. Department of Justice that he and others stole trade secrets from Avago Technologies and Skyworks Solutions on behalf of the Chinese Government.
Companies Sue Federal Government for Infringing Surveillance Patents
This week Washington Business Journal reported that 3rd Eye Surveillance LLC and Discovery Patents LLC sued the Federal Government for infringement of three patents on video and image surveillance by federal agencies and various government contractors.
TICKETS ON SALE FOR JEFFERSON MEDAL DINNER HONORING JUDGE O’MALLEY
The New Jersey Intellectual Property Law Association has selected Federal Circuit Judge KATHLEEN O’MALLEY to receive the 64th Jefferson Medal Award on Friday evening, June 5. The award is presented annually to someone who has made exceptional contributions to the field of intellectual property law. It is one of the best known and most prestigious IP awards. Tickets are now on sale for the awards dinner, which will be held in Short Hills, New Jersey.
SESSION ON POST JUDGMENT ROYALTIES AT IPO’S PATENT DAMAGES CONFERENCE
A session on “Post Judgment Royalties” will be offered during IPO’s “Patent Damages Law: Are Changes Needed?” conference on May 27 in Washington, DC. Since the U.S. Supreme Court’s decision in eBay, determination of post-judgment royalties has become a bigger concern among patent litigants for cases not using a lump sum royalty. And, district courts have wide discretion on this issue. This panel will explore the timing of when courts are deciding post-judgment royalties; the procedures that are being used; and substantive considerations made for determining the amount of such royalties.
PATENT HISTORY — DOLLEY MADISON HOUSE
Today marks the 237th birthday of DOLLEY MADISON, wife of the fourth U.S. President, for whom the Dolley Madison House is named. The house, across Lafayette Square from the White House, is now owned by the U.S. Court of Appeals for the Federal Circuit and is familiar to patent attorneys who visit the court.
It was the residence of Dolley from 1837, after her husband died, until her death in 1849. During her retirement years, Dolley greeted visitors to the White House from this residence. It was said no visit to the White House was complete without stopping to pay respects to Mrs. Madison.
Tuesday, May 19, 2015 12:25 pm
* * * SAMSUNG INFRINGED APPLE’S DESIGN AND UTILITY SMARTPHONE PATENTS, BUT APPLE’S TRADE DRESS NOT PROTECTABLE
Apple Inc. v. Samsung Electronics Co. 14-1335 — Yesterday in an opinion by Chief Judge PROST, the Federal Circuit upheld a district court decision against Samsung in part. A jury awarded Apple $930 million in damages for design and utility patent infringement and trade dress dilution. Apple’s design patents claimed certain design elements in Apple’s iPhone including the front face and ornamental design for the display screen. The utility patents claimed certain features in the iPhone’s user interface.
Samsung argued that design patent damages should have been limited to the profit attributed to the infringement of the patented design elements rather than Samsung’s entire profits on its smartphones. The Federal Circuit said Patent Act section 289 “explicitly authorizes the award of total profit from the article of manufacture bearing the patented design.” Samsung argued lost profits should not have been awarded for infringement of the utility patents because there were non-infringing substitutes, but failed to point to acceptable substitutes. The court overruled a finding, however, that Apple’s trade dress was non-functional and therefore protectable, and vacated the portion of damages attributable to trade dress dilution.
(1 to 4 stars rate impact of opinion on patent & trademark law)
USPTO RELEASES MINISTERIAL AMENDMENTS TO PTAB RULES
Today the USPTO released a Federal Register notice containing “ministerial” amendments to rules of practice before the Patent Trial and Appeal Board for inter partes review, post-grant review, covered business method review, and derivation proceedings. Changes include increases to the page limit from 15 to 25 pages for the patent owner’s motion to amend and for the petitioner’s opposition to a motion to amend, and from 5 to 12 pages for replies to oppositions to motions to amend. The Office is also requiring 14-point Times New Roman font with normal spacing for all briefs. The rules are effective as of May 19. Another proposed rules package will be issued at a later date “to address more involved changes to the rules and Office Patent Trial Practice Guide.”
USPTO SEEKING CANDIDATES TO BE COMMISSIONER FOR PATENTS
In view of the announced retirement of Hon. MARGARET (PEGGY) FOCARINO, the USPTO is seeking candidates for appointment to the position of Commissioner for Patents. The Commissioner is appointed for a 5 year term by the Secretary of Commerce with input from the USPTO. The position is neither a civil service job nor a presidential appointment. See 35 U.S.C. 3(b).
Any IPO member who may be interested in applying for the position should contact FRED STECKLER (Frederick.firstname.lastname@example.org) at the USPTO no later than May 22.
IP IN THE MASS MEDIA
Kering Sues Alibaba for Counterfeit Products
Yesterday USA Today reported that luxury goods maker Kering sued Chinese tech giant Alibaba in New York for “trademark infringement, counterfeiting, false representation, trademark dilution and racketeering” for sales of counterfeit Gucci and Yves Saint Laurent products.
MCGOVERN & GREENE LLP TO SPONSOR IPO’S DAMAGES CONFERENCE
Many thanks to McGovern & Greene LLP for sponsoring IPO’s “Patent Damages Law: Are Changes Needed?” on May 27 in Washington, DC.
USE THE IPO WEBSITE TO EDUCATE YOURSELF ABOUT IP LEGISLATION AND POLICY
The IPO website is a great resource for educating yourself on legislation and other important IP policy issues. Under the Advocacy section, you will find information about “Hot Topics” including USPTO Funding and Patent Legislation, among others. Also under the Advocacy section you will find IPO amicus briefs, all resolutions adopted by the IPO Board since 2001, testimony and comments, and a list of IP bills introduced in the Congress in the two most recent sessions.
Monday, May 18, 2015 12:49 pm
* * USPTO ERRED IN NOT CONSIDERING MARK AS A WHOLE IN REFUSING TO REGISTER “PRETZEL CRISPS” AS GENERIC
Princeton Vanguard, LLC v. Frito-Lay North America, Inc. 14-1517 — On Friday in an opinion by Judge O’MALLEY, the Federal Circuit overturned the USPTO’s refusal to register a trademark. Princeton sought to register PRETZEL CRISPS in connection with “pretzel crackers.” Frito-Lay opposed the registration on the basis that PRETZEL CRISPS was generic for pretzel crackers, or, in the alternative, highly descriptive without acquired distinctiveness. The USPTO analyzed the two terms individually and found the term “pretzel” was generic for pretzels and “crisps” was generic for crackers.
The USPTO applied the incorrect legal standard in evaluating whether PRETZEL CRISPS was generic. The appropriate legal standard required considering the mark as a whole. On remand, all record evidence regarding the relevant public’s understanding of PRETZEL CRISPS in its entirety must be considered. Such evidence includes “consumer surveys, dictionaries, newspapers and other publications.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
IF IT’S NOT YOURS, DON’T TAKE IT — SEQUEL
Khrushchev and Nehru were invited to a state dinner at Buckingham Palace. Mr. Khrushchev admired the fine silver at the table and succumbed to temptation. He slipped a spoon into his pocket. Mr. Nehru saw the theft. He offered to perform a magic trick in honor of the Queen. He declared: “I will slip a spoon into my pocket and it will show up in Mr. Khrushchev’s pocket!” Mr. Nehru asked Mr. Khrushchev to empty his pockets. Mr. Khrushchev had to show and yielded the spoon.
This story, which can’t be authenticated, was submitted by a Washington Post reader in response to the article about petty theft at White House state dinners. See Friday’s IPO Daily News. Perhaps those who don’t respect the property of others, personal property or IP, can be embarrassed into respecting it.
ATTORNEY FEE SHIFTING IN PATENT SUITS IN U.S. DISTRICT COURTS: WEEKLY REPORT
On May 7, Judge WU in the Central District of California denied the accused infringer’s motion for attorney fees in a declaratory judgment suit. Pentair Water Pool and Spa Inc. v. Hayward Industries Inc.
On May 7, Judge SABRAW in the Southern District of California granted the accused infringer’s motion for attorney fees. American Calcar Inc. v. American Honda Motor Co., Inc.
IPO COMMITTEE CALLS THIS WEEK
Thursday, May 21,
Latin American Practice — 11:00a.m. ET
Open Source — 1:00p.m. ET
Industrial Designs — 4:00p.m. ET
Friday, May 22,
Canadian Practice — 2:00p.m. ET
To join one of IPO’s 29 Standing IP Committees, visit http://www.ipo.org/committeesignup.
IP IN THE MASS MEDIA
Company Owns the Patent on Ride Hailing Apps
On Saturday the San Francisco Chronicle published an article about a San Francisco company called Sidecar whose owner patented “ride-hailing over a wireless network.” The article speculates that Sidecar may have legitimate patent infringement claims against Uber and Lyft.
THIS WEEK ON IPO’S IP CHAT CHANNEL: USPTO AND PLAIN MEANING OF TERMS
Tune in to the IP Chat Channel on Thursday, May 21st at 2:00p.m. ET to discuss USPTO and Plain Meaning of Terms. Improving patent quality is a top goal of the USPTO, but few practitioners are aware that the USPTO has already taken steps, through new examiner training guidelines issued this spring, to make claim interpretation a more common part of the file history. The recently-published guidelines note, “The meaning or scope of claim terms should be clarified if necessary with explanatory remarks in the Office action [to] provide a clear record of what the examiner understands the claim terms to mean.” The goal of the new initiative, according to the USPTO, is to provide “a clear file history [to] prevent or reduce unnecessary litigation, interferences, reissues, ex parte reexaminations, inter partes reviews, supplemental examinations, and post-grant proceedings.”
Our webinar features JOSEPH WEISS, a Senior Legal Advisor in the USPTO’s Office of Legal Administration, who will explain how the inclusion of the meaning of terms in the file history will work in practice. Panelists GARY GANZI, head of IP at Evoqua Water Technologies LLC, and patent litigator BRENTON BABCOCK of Knobbe, Martens, Olson & Bear, LLP will discuss the implications and give advice to patent prosecutors and litigators in light of this USPTO push to more clearly define terms in the patents it issues. 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.
LEARN ABOUT THE IPO EDUCATION FOUNDATION’S SCHOLARSHIP PROGRAM
The IP Video Contest is a great opportunity for teens and young adults to win a $5,000 scholarship or cash prize by making a short video illustrating the importance of the patent system. This IPO Education Foundation outreach program is in its fifth year and has helped many young people learn about the patent system. Encourage your family and friends to participate!
SESSION ON THE GEORGIA PACIFIC EX ANTE PRINCIPLE AT IPO’S PATENT DAMAGES CONFERENCE
A session on “The Georgia Pacific Ex Ante Principle” will be offered during IPO’s “Patent Damages Law: Are Changes Needed?” conference on May 27 in Washington, DC. Panelists will discuss whether there is a difference between the Georgia Pacific ex ante principle and the Georgia Pacific evidentiary factors and whether the Georgia Pacific ex ante principle is the right paradigm for calculating damages. Panelists will also explore what factors a court should consider when determining the proper value of a patent. Click here to view the program and to register.