Past Week’s Daily News™
Friday, August 22, 2014 12:34 pm
* * PATENT CLAIMS FOR TREATING RHEUMATOID ARTHRITIS INVALID FOR OBVIOUSNESS-TYPE DOUBLE PATENTING
AbbVie Inc. v. Kennedy Institute of Rheumatology Trust 13-1545 — Yesterday in an opinion by Judge DYK, the Federal Circuit upheld a district court decision that Kennedy’s ’442 patent was invalid. Kennedy’s ’766 and ’442 patents claimed methods of treating rheumatoid arthritis. AbbVie had a license under the ’766 patent to market the drug HUMIRA. When the ’442 patent issued, Kennedy demanded that AbbVie take an additional license. AbbVie sought a declaration that the ’442 claims were invalid for obviousness-type double patenting. Kennedy argued that the ’442 patent claimed a narrow species (treating patients with active disease) that was not obvious from the broad genus claimed in the ’766 patent.
The Federal Circuit held one of ordinary skill in the art reading the ’766 patent “could have easily envisioned” treating patients with active disease. A study Kennedy relied on to show the ’442 patent led to unexpected results was the same study disclosed in the ’766 patent to demonstrate the utility of claimed treatment method.
(1 to 4 stars rate impact of opinion on patent & trademark law)
IP VIDEO CONTEST WINNERS TO BE ANNOUNCED AT ANNUAL MEETING
The polls officially closed this week to vote for the winners of the 2014 IP Video Contest. Many thanks to those who voted! IPO Education Foundation will announce the winners of the contest at the IPO Annual Meeting in Vancouver, Canada, September 7-9. The contest encourages teens to reflect on the importance of the patent system via an original video. Winners in multiple age categories will each receive $5,000 in cash prizes or scholarships.
A special thanks to contest award sponsors Intellectual Ventures, Microsoft, and Sterne Kessler Goldstein & Fox PLLC for their outstanding support! There is still time for you or your organization to show your support for IP education by sponsoring an award. For information contact Colleen Wellington-Caban at firstname.lastname@example.org or 202-507-4500. Award sponsors receive complimentary tickets to the Foundation Awards Dinner on December 9 in Washington, DC. For more information about the contest and to view finalists’ videos, visit www.ipvideocontest.com.
PATENT PROPERTIES JOINS IPO
Patent Properties of Stamford, Conn. (primary contact ED GOMEZ) has become a corporate member of IPO. Visit their website at www.patentproperties.com.
MEET THE COMMITTEE LEADERS: MICHAEL FULLER
MICHAEL FULLER is a vice-chair of IPO’s Pharmaceutical and Biotechnology Issues Committee. He is currently a partner at Knobbe Martens. He represents clients in complex intellectual property issues pertaining to biotechnology and computer software and hardware inventions. He also oversees adversarial proceedings at the USPTO, including many ex parte reexaminations and inter partes reviews. To join the Pharmaceutical and Biotechnology Issues or another one of IPO’s 29 Standing IP Committees, click here.
IP IN THE MASS MEDIA
US Copyright Office Says “Monkey Selfie” Not Protected by Copyright
Yesterday Ars Technica reported that the third edition Compendium of US Copyright Office Practices, released on Tuesday, seems to settle the debate between Wikipedia and photographer DAVID SLATER over whether Slater could claim rights to photographs that a monkey took of itself using Slater’s camera. The report states that a work such a photograph created by an animal is not protected by US copyright law.
DuPont Sues SunEdison on Solar Technology Patent
Yesterday DuPont said it sued SunEdison, claiming SunEdison infringed patents on DuPont’s tellurium paste technology by using photovoltaic cells and solar modules containing Samsung SDI’s front side metallization paste. (RTT News)
OYEN WIGGS GREEN & MUTALA LLP TO SPONSOR ANNUAL MEETING EVENT
Oyen Wiggs Green & Mutala LLP will co-sponsor the Sunday Women in IP Networking Brunch at the 2014 IPO Annual Meeting from Sept. 7 to 9 in Vancouver, Canada. For more information and to register for the Annual Meeting, visit www.ipo.org/AM2014.
Thursday, August 21, 2014 12:38 pm
Rep. Darrell Issa
HOUSE OVERSIGHT COMMITTEE TO INVESTIGATE USPTO PATENT EXAMINER WORK-AT-HOME PROGRAM
On Monday U.S. House of Representatives Oversight Committee Chairman DARRELL ISSA (R, California) sent a letter to Secretary of Commerce PENNY PRITZKER concerning an investigation by his committee into allegations of telework abuses at the USPTO. Issa said, “. . . it appears the telework program is not serving its intended purpose to produce more efficiency.” He asked Pritzker to produce a number of documents by September 2 including emails relating the PTO’s internal report on abuses of the telework program, and to set up a briefing with his staff.
USPTO DISCUSSES PATENT EXAMINER TRAINING PROGRAM DURING PPAC MEETING
Last week during the quarterly meeting of the Patent Public Advisory Committee, USPTO representative ALEXA NECKEL gave an update on the agency’s new Patent Examiner Technical Training program. PETTP is a voluntary program that allows technology experts to provide technical training and expertise to patent examiners. The program is one of the “executive actions” announced by the White House in February 2014 for strengthening the patent system. It is open to scientists, engineers, professors, industrial designers, and other technology experts willing to volunteer to conduct the training. Training can be held at USPTO headquarters in Alexandria, Virginia, in any of the PTO satellite offices, or from the presenter’s location by webinar. A copy of Neckel’s presentation, which includes her contact information for anyone interested in participating in the program, and a video of the PPAC meeting, are available on the PTO website.
AEON LAW JOINS IPO
AEON Law of Seattle, Washington (primary contact ADAM PHILIPP) has become a law firm member of IPO.
IP IN THE MASS MEDIA
Adam Carolla, Personal Audio Settle Suit on Podcasting Patent
On Tuesday USA Today reported that ADAM CAROLLA settled a patent infringement suit brought against him by Personal Audio on a patent related to podcasts. Carolla raised more than $475,000 on a crowd funding website to fight the suit, which he characterized as a “patent troll” suit.
RBS Permitted to Continue Using Software
Yesterday Royal Bank of Scotland Group announced that it reached a settlement with Complex Systems Inc., allowing RBS to use Complex Systems’ BankTrade software. Complex Systems had claimed RBS no longer had a license to the product after having sold a subsidiary to Bank of America in 2008. (Reuters)
TODAY ON IPO’S IP CHAT CHANNEL: GLOBAL DEVELOPMENTS IN STANDARDS AND FRAND
Tune in to the IP Chat Channel, Thursday, August 21 at 2:00pm ET to discuss Global Developments in Standards and FRAND. Panelists include EARL NIED, Intel Corp.; CHRISTOPHER THOMAS, Hogan Lovells; and KOREN WONG-ERVIN, U.S. Federal Trade Commission. 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.
IPO’S ANNUAL MEETING OFFERS ETHICS CLE CREDIT
Earn up to 14 CLE credits (the number of credits varies from state to state) at IPO’s Annual Meeting, Sept. 7-9 in Vancouver, Canada. For ethics credit, attend the session on “Professionalism in the Digital/Millennial Age.” Speakers will address evergreen issues in professionalism as well as the challenges in adhering to these principles in today’s social media driven environment. Panelists include: CHRISTINA HIEBER, U.S. Patent & Trademark Office; TANYA FORSHEIT, BakerHostetler; and PROF. DAVID HRICIK, Mercer University School of Law. To view the full program and to register, visit www.ipo.org/am2014.
Wednesday, August 20, 2014 12:56 pm
IPO BRIEF SAYS ITC CAN EXCLUDE IMPORTS BASED ON INDUCEMENT TO INFRINGE WHEN DIRECT INFRINGEMENT OCCURS AFTER IMPORTATION
On Monday IPO filed an amicus brief in the Federal Circuit on behalf of neither party in Suprema Inc. v. International Trade Commission. The court has granted en banc review of the case. IPO argued that the ITC has authority to ban importation of articles that will result in induced infringement under Patent Act § 271(b) even when direct infringement will take place after importation, as long as all the requirements for inducement are met.
IPO said to hold otherwise would create a tremendous loophole that would allow importers, who may be beyond the jurisdiction of the district courts, to circumvent the ITC’s authority to protect against importation of articles that will result in patent infringement. IPO’s brief said that under the Supreme Court’s GlobalTech opinion the ITC may exclude such articles only upon sufficient proof that the importer intends to induce infringement following importation. The filing of IPO’s brief was approved by the Board of Directors. It was drafted by MICHAEL JAKES of IPO member Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P. IPO Amicus Brief Committee Chair KEVIN RHODES and IPO President PHILIP JOHNSON were on the brief.
USPTO’S PTAB CHIEF DISCUSSES INSPECTOR GENERAL’S REPORT
Last week during the meeting of the Patent Public Advisory Committee, USPTO Patent Trial and Appeal Board Chief Administrative Patent Judge JAMES SMITH addressed the recent report by the U.S. Department of Commerce Inspector General concerning PTAB operations. The report said paralegal employees were paid and received bonuses and raises while doing little work for a period of 4 years. Smith said PTO senior management was reviewing the report carefully and would provide an official report by September.
He said many of the recommendations for improvement were underway or had been implemented. When concerns were raised in 2013, Smith said the PTO commissioned an independent consulting firm that recommended reorganization of the paralegal program. The reorganization included the creation of a paralegal management team, changing the program’s organizational structure, changing paralegal practices to eliminate underutilization, and changing supervisory practices.
A copy of Smith’s slides, which include statistics related to the agency’s Inter Partes Review, Post Grant Review, and Covered Business Review proceedings, and a video of the PPAC meeting are available on the PTO website.
OMB GIVES FTC GREEN LIGHT TO STUDY “PATENT ASSERTION ENTITIES”
Earlier this month, the Office of Management and Budget gave the U.S. Federal Trade Commission approval to conduct a study of so-called PAEs, or patent assertion entities. The FTC defined patent assertion entities in a May 2014 Federal Register notice as “firms with a business model based primarily on purchasing patents and then attempting to generate revenue by litigating against, or licensing to, persons who are already practicing the patented technology.” In its May notice, the FTC said it will publish a report describing information collected from the study on “PAE form, structure, organization, and behavior” that otherwise would not be available.
IP IN THE MASS MEDIA
Student Sues Alma Mater and Barnes & Noble
A former Fashion Institute of Technology student has sued the school and Barnes & Noble for copyright infringement, claiming a backpack she designed as a class assignment was sold in Barnes & Noble stores without her consent. (New York Daily News)
Judge Allows Exxon Trademark Dilution Claim on Interlocking XXs
Yesterday a judge in Texas allowed ExxonMobil’s state law claim that cable television network FXX’s logo dilutes its mark by using interlocking XXs. FXX argued the claim was barred because its trademark was registered in “standard character” form. (Hollywood Reporter)
KSNH PATENT JOINS IPO
KSNH Patent Attorneys of Munich, Germany (primary contact KARL-HEINZ WOHLFROM) has become a law firm member of IPO.
MEET THE COMMITTEE LEADERS: STEPHEN SAMPSON
STEPHEN SAMPSON is the chair of IPO’s Patent Search Committee. He is currently the Analytics Manager for Caterpillar Inc.’s Intellectual Property Department. His work experience includes over 25 years of internal combustion engine design, development and application experience and over ten years of patent search and analysis experience. To join the Patent Search or another one of IPO’s 29 Standing IP Committees, click here.
HARNESS, DICKEY & PIERCE, PLC TO SPONSOR ANNUAL MEETING EVENT
Harness, Dickey & Pierce, PLC will co-sponsor the Sunday Women in IP Networking Brunch at the 2014 IPO Annual Meeting from Sept. 7 to 9 in Vancouver, Canada. For more information and to register, visit www.ipo.org/AM2014.
Tuesday, August 19, 2014 12:35 pm
IPO SAYS SOME OF USPTO’S PROPOSED PATENT TERM ADJUSTMENT RULES NOT SUPPORTED BY PATENT ACT
Yesterday IPO submitted comments to the USPTO on proposed rules on patent term adjustment (PTA). The USPTO proposed the rules in the wake of the Federal Circuit’s January decision in Novartis AG v. Lee that interpreted PTA provisions in the Patent Act. IPO supported proposed changes that address circumstances before the court in Novartis but disagreed with certain other proposed changes. The IPO letter said proposed changes to rule 1.703(b)(1) improperly counted the mailing date of a notice of allowance as “time consumed by continued examination of the application.” IPO also noted this proposed rule would improperly exclude from the so-called “B delay” award any examination that was not “continued examination requested by the applicant under section 132(b).” In addition, IPO opposed new rule 1.704(c)(12) as over-inclusive and said it would undermine the three-month statutory time period that an applicant has to review a notice of allowance and pay the issue fee. IPO’s U.S. Patent Office Practice and Pharmaceutical and Biotechnology Issues Committees assisted with the comments.
LESS THAN 24 HOURS LEFT TO CAST YOUR VOTE!
Today is the final day to vote for winners of the IP Video Contest! The IPO Education Foundation challenged teens to create a short video explaining the importance of the patent system. Click here to view the finalists’ videos and vote for your favorites! Winners will be selected from two age categories to win cash prizes and scholarships. Special thanks to our contest sponsors Intellectual Ventures, Microsoft, and Sterne Kessler Goldstein & Fox, PLLC for supporting IP education!
USPTO REDUCES RCE PATENT APPLICATION BACKLOG
Last week during the quarterly meeting of the Patent Public Advisory Committee, USPTO Deputy Commissioner for Patent Operations ANDREW FAILE gave a progress update on the agency’s effort to reduce the backlog of requests for continued examination, or RCEs. Faile said that during a two-phase program, the PTO had reduced the backlog from about 110,000 at the beginning of 2013 to about 58,000 on the day of the PPAC meeting.
The first phase involved increasing examiner production credit for RCEs acted upon during the last two quarters of 2013. The second phase, which began in October 2013, involved reorganizing new application dockets, modifying workflow and workflow credit for RCEs, and modifying production credits to incentivize earlier action on RCEs. Faile said the PTO is continuing to work on approaches to curb the need for future RCE filings.
HESLIN ROTHENBERG JOINS IPO
Heslin Rothenberg Farley & Mesiti PC of Albany, N.Y. (primary contact VICTOR CARDONA) has become a law firm member of IPO.
IP IN THE MASS MEDIA
WSJ Writes on Stalled Patent Reform
On Sunday the Wall Street Journal published an article speculating that comprehensive patent reform will not be revisited by Congress this year. According to the article, observers say they expect the 114th Congress to revive the issue.
German Court Orders Preliminary Injunction on Blu E-Cig
Yesterday Zippo Manufacturing Co. announced that a German court ordered Lorillard Inc. to stop selling its popular “blu” electronic cigarettes because of trademark confusion with Zippo’s cigarette lighter products. (Reuters)
SESSION ON ADVERTISING AND MARKETING AT IPO’S ANNUAL MEETING
Trademark use, enforcement, and infringement matters often arise in advertising and marketing activities. Attend the session on “Advertising and Marketing Related Trademark Issues” at IPO’s Annual Meeting, Sept. 7-9 in Vancouver, Canada to learn more. An overview of topics to be covered includes issues related to fair use, false advertising, comparative advertising, and ambush marketing programs. Moderated by BRIAN ISAAC, Smart & Biggar, panelists include: EMILY BURNS, Google Inc.; LINDSEY MOHLE, Intel Corp.; and DOUGLAS RETTEW, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. To view the full program and to register, visit www.ipo.org/am2014.
Monday, August 18, 2014 12:30 pm
* * * PATENT UNENFORCEABLE FOR INTENTIONALLY WITHHOLDING AND MISREPRESENTING MATERIAL INFORMATION
Apotex Inc. v. UCB, Inc. 13-1674 — On Friday in an opinion by Judge REYNA, the Federal Circuit upheld a district court decision that Apotex’s patent was unenforceable due to inequitable conduct. The patent claimed a process for manufacturing tablets for treating high blood pressure and included a “reacting” step. To overcome prior art during prosecution, the inventor argued earlier processes did not include the claimed “reacting” step and submitted an expert declaration in support of this contention.
The Federal Circuit held clear and convincing evidence established that the inventor knew the earlier processes included the “reacting” step, concealed the knowledge from the USPTO, and misrepresented the prior art through the expert declaration and arguments during prosecution. The inventor also withheld relevant prior art and described experiments he never performed. The misconduct was “but-for-material” because the USPTO would not have issued the patent but for the inventor withholding and affirmatively misrepresenting the prior art. Based on the overall pattern of misconduct, intent to deceive the USPTO was the “single most reasonable inference that could be drawn from the evidence.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
PTO ROLLS OUT NEW PATENT QUALITY PROGRAM
Last week during the quarterly meeting of the Patent Public Advisory Committee, USPTO Commissioner for Patents PEGGY FOCARINO gave a presentation titled “Building a World-Class Patent Quality System.” Focarino said the sustainable funding model created by the America Invents Act combined with the PTO approaching optimal steady state pendency creates an opportunity to increase the PTO’s dedication to quality. She said the new patent quality program will have three main areas of focus: 1) providing high-quality work products and services at every stage of the patent process, 2) improving the customer experience and customer service, and 3) engaging the public to educate and seek input. Focarino said the agency will seek input from employees and stakeholders through Federal Register notices, blogs, and roadshows. Documents and video of the meeting are available on the USPTO’s website.
PTO POSTS TRANSCRIPT OF LEE REMARKS TO PPAC
On Friday the U.S. Patent and Trademark Office posted a transcript of the comments by Deputy Director MICHELLE LEE at the quarterly meeting of the Patent Public Advisory Committee meeting. In addition to addressing the PTO’s teleworking program, Lee discussed the agency’s new patent quality program and the opening of the new PTO satellite office in Denver.
IPO COMMITTEE CALLS THIS WEEK:
Monday, August 18,
International Trademark Law and Practice Committee – 6:00p.m. ET
Wednesday, August 20,
Latin American Practice Committee – 2:00p.m. ET
Thursday, August 21,
European Practice Committee – 11:00a.m. ET
Corporate IP Management Committee – 12:00n.n. ET
Open Source Committee – 1:00p.m. ET
Industrial Designs Committee – 4:00p.m. ET
Click here to join one of IPO’s 29 Standing IP Committees.
IP IN THE MASS MEDIA
Shoe Designer Sues Louis Vuitton
On Saturday the New York Daily News reported that shoe designer ANTONIO BROWN sued Louis Vuitton for trademark infringement. Brown claimed the metal nameplate Vuitton added to the toe boxes of one collection is “inherently distinctive” to his brand, LVL XIII.
Simpson’s Hologram Leads to Patent Lawsuit
Hologram USA has filed a lawsuit against 20th Century Fox for patent infringement. Hologram USA claims a 3D version of Homer Simpson displayed at the 2014 Comic-Con convention infringes its patented system to project 3D images onstage. (The Hollywood Reporter)
NEW IPO MEMBER
SANAL SASANKAN of Richmond, Canada has become an individual member of IPO.
BERESKIN & PARR LLP TO SPONSOR ANNUAL MEETING EVENT
Bereskin & Parr LLP will co-sponsor the Sunday Women in IP Networking Brunch at the 2014 IPO Annual Meeting from Sept. 7 to 9 in Vancouver, Canada. For more information and to register, visit www.ipo.org/AM2014.