Past Week’s Daily News™
Friday, 28 October, 2016 12:48 pm
USPTO SEEKS COMMENTS ON DUTY OF DISCLOSURE IN LIGHT OF THERASENSE
Today the U.S. Patent and Trademark Office published a Federal Register notice seeking written comments on the duty of disclosure requirements for patent applications and reexamination proceedings. The Office is proposing to change the rules of practice “to harmonize the materiality standard for the duty of disclosure before the Office with the but-for materiality standard for establishing inequitable conduct before the courts” in light of the Federal Circuit’s en banc Therasense decision in 2011. The Office is also proposing that the rules explicitly reference “affirmative egregious misconduct” per Therasense. The USPTO originally sought comments after the 2011 decision and continued to monitor Federal Circuit decisions for application of the Therasense inequitable conduct standard. The notice indicated the Office is again seeking public comment due to “the passage of time since the end of the comment period and the significant changes to patent law as a result of the successful implementation of the Leahy-Smith America Invents Act.” Written comments are due 27 December. IPO’s U.S. Patent Office Practice Committee will be studying the notice.
NEXT WEEK ON IPO’S IP CHAT CHANNEL: OBVIOUSNESS AFTER APPLE V. SAMSUNG
Tune in to the IP Chat Channel on Wednesday, 2 November at 2:00p.m. ET for Obviousness After Apple v. Samsung. The early October en banc decision revealed a startling disagreement on the Federal Circuit about obviousness – a concept viewed by many as the central issue in patent law. The original three-judge panel was overruled by an eight-judge majority, with one of the dissenters saying the majority opinion created “profound changes in the law of obviousness” by turning the legal question into a factual one, contrary to KSR. The original panel found little to support the jury’s finding of non-obviousness, while the majority found the “substantial evidence” required by law and insisted that the appellate court show appropriate deference.
Our panel will discuss the likely impact of the case, the recent Federal Circuit opinion in Arendi v. Apple, which stressed that “common sense” critiques of an invention must be supported by substantial evidence and explained with sufficient reasoning, and the recent Patent Trial and Appeal Board (PTAB) decision in Innopharma v. Senju Pharmaceutical, where the patent owner was able to prove in inter partes review both unexpected technical effects and the nexus between those technical effects and commercial success. Our speakers are KENNETH CORSELLO (IBM Corporation), ROBERT ASHER (Sunstein, Kann, Murphy & Timbers), who represented the plaintiff Arendi, and JUSTIN HASFORD (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) who represented the patent owner in Innopharma. 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
Celanese Files Complaint with USITC over Import of Artificial Sweeteners
On Wednesday Celanese Corporation announced that it filed a complaint at the U.S. International Trade Commission, seeking to stop importation of Acesulfame Potassium (Ace-K) products from China that Celanese says infringe its patent on the artificial sweetener. (Business Wire)
JPMorgan Blocks Employee Access to Financial Times Due to Copyright Infringement Concerns
On Wednesday Bloomberg reported that JPMorgan Chase & Co. blocked employees’ access to the Financial Times website last week amid concerns some employees had violated the site’s copyright policy by copying and pasting content.
Thursday, 27 October, 2016 12:35 pm
IP IN THE MASS MEDIA
American Eagle Sued for Trademark Infringement for Use of Logo on T-shirts
On Tuesday The Fashion Law blog reported that owner of Lower East Side Co. and alleged “trademark troll” ROBERT LOPEZ sued American Eagle for trademark infringement, claiming the retailer was selling t-shirts bearing his federally registered trademark “LES NYC” without permission.
AT&T to Gain Substantial IP Portfolio in Time Warner Acquisition
On Monday Bloomberg reported that AT&T’s pending acquisition of Time Warner, Inc. for $85.4 billion includes a substantial IP portfolio, containing the copyrights to films such as Batman, Superman, Harry Potter and The Lord of the Rings, the entire HBO catalog, and many prominent entertainment industry brands and trademarks.
NEW IPO LAW JOURNAL ARTICLE BY COOPER WOODRING
A new article titled “A Proposal for a Major Overhaul of the Legal Standards for the Prosecution and Infringement of U.S. Design Patents” has been posted to the IPO Law Journal. The article was authored by COOPER C. WOODRING of Woodring Design. To submit an article to the IPO Law Journal, click here.
Wednesday, 26 October, 2016 12:25 pm
USPTO SEEKS PUBLIC COMMENTS ON PATENT EXAMINATION TIME GOALS
Yesterday the USPTO published a Federal Register notice seeking public comments on patent examination time goals. The notice explained that “[e]xamination time goals vary by technology and represent the average amount of time that a patent examiner is expected to spend examining a patent application in a particular technology.” The time goals, which were first assigned over forty years ago and have been adjusted only twice, should accurately reflect the amount of time patent examiners need “to conduct quality examination in a manner that responds to stakeholders’ interests.” Written comments are due by 27 December. The Office also intends to hold several roundtable events. IPO’s U.S. Patent Office Practice Committee will be studying the notice.
IPO SUBMITS COMMENTS ON LEVERAGING ELECTRONIC RESOURCES AND STREAMLINING PATENT ISSUANCE
Yesterday IPO Executive Director MARK LAUROESCH sent a letter to the USPTO commenting on how best to use electronic resources to provide examiners with information from applicants’ other applications. IPO suggested a hybrid approach where some patent applications pending in IP5 offices, besides domestic parent and counterpart foreign applications, are automatically monitored without being identified by the applicant, while any other applications may be monitored upon request by the applicant. Such a monitoring program could help expedite examination and reduce the burden on applicants.
IPO also discussed potentially unnecessary information that the USPTO might consider removing from a patent’s front page. IPO’s U.S. Patent Office Practice Committee assisted with the comments. KAVEH RASHIDI-YAZD (Siemens) is Chair. Vice-chairs are COURTENAY BRINCKERHOFF (Foley & Lardner), PEGGY FOCARINO (Oblon), and SUNJEEV SINGH SIKAND (RatnerPrestia). The Committee’s Secretary is AAMIR HAQ (Hewlett Packard Enterprise Company)
IP IN THE MASS MEDIA
Warner Bros. Sues Talent Agency for Copyright Infringement
On Monday Hollywood Reporter reported that Warner Bros. Entertainment sued Innovative Artists for copyright infringement, claiming that the talent agency illegally copied and distributed movies on its digital distribution platform to people inside and outside the agency.
MP3tunes Loses Copyright Appeal
Yesterday Fortune reported that the U.S. Court of Appeals for the Second Circuit upheld a lower court ruling that MP3tunes and its founder MICHAEL ROBERTSON enabled the infringement of copyrights in sound recordings, musical compositions, and cover art and ordered the cloud music service to pay a $12.2 million jury award.
Tuesday, 25 October, 2016 12:39 pm
IPO PARTICIPATES IN WIPO MEETING ON TRADEMARKS, INDUSTRIAL DESIGNS, AND GEOGRAPHIC INDICATIONS
Last week IPO Industrial Design Committee member RICHARD STOCKTON (Banner & Witcoff) represented IPO at the 36th Session of the World Intellectual Property Organization (WIPO) Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). The meeting was at WIPO headquarters in Geneva. Key Issues included the Design Law Treaty, which seeks to harmonize worldwide design prosecution procedures; governmental responses to a questionnaire regarding graphic user interface (GUI) design prosecution practices; and whether to conduct a study on worldwide laws regarding geographic indications. On behalf of IPO, Stockton supported extending WIPO’s digital access service for priority documents to design applications and allowing observers like IPO to comment on the GUI questionnaire responses.
41 FEDERAL CIRCUIT OPINIONS ISSUED IN THIRD QUARTER
IPO’s plain English, one-paragraph summaries of Federal Circuit precedential patent and trademark opinions from the third quarter of 2016 are available on the IPO website. The 41 summaries are arranged in date order and rated with 1 to 4 stars. Some noteworthy Federal Circuit cases:
Rapid Litigation Management, 5 July, in which a method for preserving liver cells was patent-eligible subject matter under Patent Act section 101;
The Medicines Company, 11 July, in which the Federal Circuit sitting en banc held that a supplier’s sale of “manufacturing services” did not invalidate product-by-process patent claims;
Magnum Oil Tools, 25 July, in which the USPTO improperly shifted the burden of proving non-obviousness to the patent owner in an inter partes review (IPR) proceeding;
Arendi, 10 August, in which the USPTO erred in applying “common sense” to supply a missing limitation in a prior art reference;
Aqua Products, 12 August, in which the Federal Circuit ordered en banc review on the burdens for petitioners and patent owners regarding substitute claims in IPRs; and
McRO, 13 September, in which the Federal Circuit found that claims directed to automatic lip-sync animation were patent-eligible subject matter.
CONRAD SPIRIT OF INNOVATION CHALLENGE REGISTRATION IS NOW OPEN
Registration has opened for the Conrad Foundation’s Spirit of Innovation Challenge. Students ages 13-18 with heightened entrepreneurial and innovative skills are called to participate in the challenge by creating and showcasing inventions that solve real world problems in the Aerospace and Aviation, Cyber-Technology and Security, Energy and Environment, or Health and Nutrition category. Winners are recognized as Pete Conrad Scholars and are offered grants and investment opportunities to help them take their products to the market. The deadline to register is 1 November 2016.
IP IN THE MASS MEDIA
Walmart Sues Indian Cookware Manufacturer for Trademark Infringement
Yesterday the Economic Times reported that Walmart Stores Inc. sued Yash Enterprises for trademark infringement, claiming the India-based manufacturer was selling cookware products using the brand name “Walmart.”
Bloomberg Reports That Eastern District of Texas May be Cracking Down on “Patent Trolls”
Yesterday Bloomberg reported that the Eastern District of Texas may be cracking down on lawsuits filed by so-called “patent trolls.” The article cites a recent PriceWaterhouseCoopers LLP study that found “defendants now have a 60% chance of winning at trial, down from 70-80% over the last decade.” The study also cites recent analysis finding that about 57% of requests to transfer out of the district are being granted, a significant increase over recent years.
Monday, 24 October, 2016 12:31 pm
* * USPTO’S RECONSIDERATION OF DECISION TO INSTITUTE IPR NOT APPEALABLE
Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. 15-1977 — On Thursday in an opinion by Judge DYK, the Federal Circuit denied Medtronic’s petition for rehearing. Bosch’s patents claimed methods and systems for monitoring patients’ health care. Medtronic sought inter partes review (IPR). The Patent Trial and Appeal Board (PTAB) instituted but later terminated the proceedings because Medtronic failed to name all real parties in interest as required by Patent Act section 312. The original Federal Circuit panel dismissed Medtronic’s appeal for lack of jurisdiction and denied mandamus relief.
The Federal Circuit upheld its prior order. Per the U.S. Supreme Court in Cuozzo, under section 314(d) the PTAB’s decision to institute an IPR is final and not appealable. Reconsideration of an institution decision is similarly barred as “closely related” to an institution decision.
(1 to 4 stars rate impact of opinion on patent & trademark law)
USPTO ANNOUNCES ADJUSTMENTS TO TRADEMARK FEES
On Friday the USPTO issued a Federal Register notice announcing adjustment to certain trademark processing fees. The notice stated that the fee adjustments will allow the Office to recover the aggregate estimated cost of trademark and Trademark Trial and Appeal Board operations. The Office indicated the fee adjustments should further its strategic objectives by: “(1) better aligning fees with the full cost of relevant products and services; (2) protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings, and more efficient resolution of appeals and trials; and (3) promoting the efficiency of the process, in large part through lower-cost electronic filing options.”
The fee for a paper application will increase from $375 to $600, per class, and other paper filings by between $75 and $200. Filing an application using the Trademark Electronic Application System (TEAS) will increase from $325 to $400. The notice explained that requests to waive a paper filing fee due to a USPTO system outage would be considered case-by-case. The USPTO reduced the fee for electronically filing a request for a six-month extension of time to file a statement of use. In our written comments, IPO suggested reducing this fee based on the low processing cost associated with such requests. The new fees become effective on 14 January 2017.
LIBRARIAN OF CONGRESS REASSIGNS REGISTER OF COPYRIGHTS TO SERVE AS DIGITAL STRATEGY ADVISOR
On Friday Librarian of Congress CARLA HAYDEN removed Register of Copyrights and Director of the U.S. Copyright Office MARIA PALLANTE from the position, naming her a senior advisor for digital strategy for the Library of Congress. In a statement posted on the Library’s website, Hayden said the reassignment was made in furtherance of her plan to “move aggressively toward making our collections as widely accessible as possible,” drawing on Pallante’s “focused expertise in the areas of copyright and licensing to ensure we execute these plans in full consideration of copyright protections.” Hayden appointed Associate Register KARYN TEMPLE CLAGGET to serve as Acting Register.
IP IN THE MASS MEDIA
Indian Court Dismisses Trademark Suit on Use of “Vogue”
On Friday The Fashion Law blog reported that the Bombay High Court dismissed a trademark infringement suit filed by Vogue magazine’s parent company Advance Magazine Publishers against India-based Just Lifestyle Pvt. Ltd over the use of the name “Just in Vogue” in connection with retail stores and sales services, finding the “Vogue” mark was merely descriptive and there was no likelihood of consumer confusion.
U-Haul Settles Trademark Suit on Use of Term “Pods”
Last week Bloomberg reported that U-Haul International Inc. settled a trademark infringement suit with Pods Enterprises, Inc. for $41.4 million, two years after a jury awarded Pods $60.7 million in damages after finding that U-Haul infringed its trademarks. A majority of the damages amount are intended to cover corrective advertising.