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Past Week’s Daily News™

Wednesday, June 29, 2016 12:58 pm

Federal Circuit Summaries Logo

* * * CLAIMS DIRECTED TO METHOD OF FILTERING INTERNET CONTENT WERE PATENT-ELIGIBLE SUBJECT MATTER

Bascom Global Internet Services, Inc. v. AT&T Mobility LLC 15-1763 — Yesterday in an opinion by Judge CHEN, the Federal Circuit vacated a district court’s dismissal of Bascom’s suit. The claims were for a method and system for filtering internet content. The district court found that the claims were directed to an abstract idea and that “no individual limitation was inventive because each limitation, in isolation, was a ‘well known, generic computer component’ or a standard filtering mechanism.”

The Federal Circuit agreed that under step one of the two-step Alice test, the claims were directed to the abstract idea of filtering content. Under the second Alice step, however, there was sufficient inventive concept “in the ordered combination of claim limitations.” The court explained that “[t]he inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Judge NEWMAN, concurring, argued for a return to the express language of Patent Act section 101 for patent-eligibility determinations.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO PUBLISHES 2015 TOP 300 PATENT OWNERS LIST

This morning IPO published its 2015 Top 300 Patent Owners List reporting the 300 companies that received the most utility patents from the U.S. Patent and Trademark Office last year. The top three spots on the list were maintained by IBM Corp. (7,440 patents), Samsung Electronics Co., Ltd. (5,059), and Canon K.K. (4,239). Thirty-five companies received over 1,000 patents in 2015. Of the 298,407 utility patents issued by the USPTO last year, 150,173 (50.3%) were granted to companies in the Top 300 list. Upon request subsidiary organization patents were attributed to the parent company.

PRESIDENT OBAMA ISSUES EXECUTIVE ORDER ON GLOBAL ENTREPRENEURSHIP

Today President Obama issued an Executive Order announcing a new program for supporting innovation and promoting global entrepreneurship. The “Presidential Ambassadors for Global Entrepreneurship” (PAGE) program will “enable individuals who exemplify the spirit of American entrepreneurship and who have proven track records to use their networks, platforms, and voices to support aspiring entrepreneurs and advance public policies that encourage entrepreneurship in the United States and around the globe.” The PAGE program, which will include up to 25 members, will be administered by a Director appointed by the Secretary of Commerce. The Order also announced formation of a “Global International Connectivity Steering Group” to promote global Internet connectivity.

IPO 2016 ANNUAL MEETING COMMITTEE PRESENTATIONS

Earn up to 12-14.5 CLE credits at the IPO Annual Meeting in New York, NY. Concurrent committee CLE presentations are being offered on Monday, 12 September 2016. The committees include: Anti-Counterfeiting, Antitrust & Competition Law, Asian Practice, Canadian Practice, Copyright Law & Anti-Piracy, Corporate IP Management, Damages & Injunctions, Industrial Designs, Litigation, Standards Setting, U.S. Patent Law, U.S. Patent Office Practice, and U.S. Trademark Law. To view the session descriptions and speakers, refer to pages 4-5 in the brochure. For more information or to register, visit www.ipo.org/am2016.

IP IN THE MASS MEDIA

“Happy Birthday to You” Released to Public Domain

On Monday CBS News reported that a federal judge in California approved the settlement of a copyright dispute between various artists and Warner/Chappell Music that releases the song “Happy Birthday to You” to the public domain. The music publishing company will refund $14 million in licensing fees collected from those who paid to use the song over the past five decades.

Qualcomm Sues Chinese Smartphone Company for Patent Infringement

On Sunday the Wall Street Journal reported that Qualcomm Inc. sued Meizu Technology Co. in China for patent infringement, saying the Chinese smartphone company is using Qualcomm technology without a license.




Tuesday, June 28, 2016 12:47 pm

U.S. SUPREME COURT TO CONSIDER WHETHER SUPPLYING COMPONENT OF PATENTED INVENTION THAT SUPPLIER’S SUBSIDIARY COMBINED OVERSEAS WAS INDUCEMENT TO INFRINGE

Yesterday the U.S. Supreme Court agreed to review Promega Corp. v. Life Technologies Corp. 14-1538. Promega’s patent claimed a process for examining polymorphism in DNA samples. In a facility overseas, LifeTech’s subsidiary produced genetic testing kits that included one component manufactured by LifeTech in the U.S. The district court found LifeTech could not be liable for inducement to infringe because Patent Act section 271(f)(1) required “the involvement of another.” A split Federal Circuit held no third party was required in order “to actively induce the combination” of components outside the U.S. The statute and legislative history focused on “the would-be infringer’s action of supplying components overseas.” “Had Congress wanted to limit ‘induce’ to actions completed by two separate parties, it could easily have done so by assigning liability only where one party actively induced another ‘to combine the [patented] components.’”

The Supreme Court will consider whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under section 271(f)(1), exposing the manufacturer to liability for all worldwide sales. IPO’s Amicus Brief Committee will study the case.

Federal Circuit Summaries Logo

** SUBSTANTIAL EVIDENCE SUPPORTED NO LIKELIHOOD OF CONFUSION BETWEEN “MAYA” AND “MAYARI” FOR WINE

Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC. 16-1103 — On Friday in an opinion by Judge LOURIE, the Federal Circuit upheld the USPTO’s dismissal of Oakville’s trademark opposition. Georgallis sought to register “MAYARI” for use on wine. Oakville opposed the registration as likely to cause confusion with Oakville’s registered mark for “MAYA” also for use on wine. Despite the identity of the goods, the USPTO found that the first DuPont factor regarding “the similarity or dissimilarity of the marks in appearance, sound, connotation, and commercial impression” precluded a likelihood of confusion between the marks.

The Federal Circuit held that substantial evidence supported the USPTO’s finding that the marks were sufficiently dissimilar. The court rejected Oakville’s argument that consumers would perceive “MAYARI” as “MAYA” plus “RI” rather than “a single unitary expression.” There was no evidence that the words would have similar pronunciations or that consumers would be familiar with the term “MAYARI.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

GLOBAL PERSPECTIVE ON PATENT ELIGIBILITY TO BE DISCUSSED AT IPO ANNUAL MEETING

Recent Supreme Court decisions on subject matter eligibility have changed the landscape for patenting in the U.S., particularly for biotechnology, method of treatment, and software inventions. The new challenging environment for patenting in the U.S. raises questions about the right policy for promoting innovation and how it relates to the scope of technology protected by the patent system. Attend IPO’s Annual Meeting from 11-13 September in New York, NY, to hear experts compare the standards for subject matter eligibility in the U.S., Europe, and Asia, and explore how the standards can and should reflect the innovation and economic priorities of the jurisdictions they govern. Moderated by DAVID KAPPOS (Cravath, Swaine & Moore), speakers include JOHANNES LANG (Bardehle Pagenberg Partnerschaft MbB), MICHELLE SHEN (Medtronic, Inc.), PAUL GOLIAN (Bristol-Myers Squibb Co.) and MARIAN UNDERWEISER (IBM Corp.).

IP IN THE MASS MEDIA

U.S. Supreme Court Denies Review of Prenatal Test Patent Dispute

Yesterday Reuters reported that the U.S. Supreme Court denied certiorari in Sequenom, Inc. v. Ariosa Diagnostics, Inc. Sequenom sought review of the Federal Circuit’s invalidation of its patent on a non-invasive prenatal diagnostic test on the grounds that the invention was not patent-eligible under Patent Act section 101.

Converse Wins Partial Victory at USITC on Chuck Taylor Designs

Last Thursday the U.S. International Trade Commission issued a general exclusion order prohibiting importation of shoes that infringe Converse trademarks on the diamond-patterned outsole of Chuck Taylor sneakers. Reversing an administrative trial judge’s initial determination, the Commission also determined that trademarks asserted by Converse for other parts of the Chuck Taylor shoe are invalid

FORMER U.S. COMMISSIONER FOR TRADEMARKS DIES AT 74

LYNNE BERESFORD, former Commissioner for Trademarks at the U.S. Patent and Trademark Office, died on 26 June 2016 at the age of 74. Beresford was a USPTO employee for more than 30 years, serving as Commissioner for Trademarks from 2005 until her retirement in 2010.




Monday, June 27, 2016 12:49 pm

IP IN THE MASS MEDIA

New York Law Enforcement Seizes $1 Million in Counterfeit Goods

Last Thursday The Fashion Law blog reported that New York law enforcement seized over $1 million in counterfeit design clothing, including thousands of boxes of counterfeit items such as garments and accessories bearing Northface, UGG, Under Armour, and other labels. Law enforcement officers also seized industrial embroidery machines used to create the counterfeit goods.

Teva Announces Settlement in Patent Dispute on Diabetes Drug

Last Thursday Teva Pharmaceuticals USA, Inc. announced that it settled a patent infringement dispute with AstraZeneca and Amylin Pharmaceuticals on its generic drug Byetta, an injectable product used to treat type 2 diabetes. (BusinessWire).

IP Chat Channel Logo

THIS WEEK ON IPO’S IP CHAT CHANNEL: GOODBYE TO SEAGATE: WILLFULNESS AND ENHANCED DAMAGES AFTER HALO

Tune in to the IP Chat Channel on Thursday, June 30 at 2:00p.m. ET for Goodbye to Seagate: Willfulness and Enhanced Damages After Halo. Our panelists are all litigators involved in cases involving willfulness: DAVID CAINE of Arnold & Porter (Innovention Toys v. MGA), STEVEN CHERNY of Kirkland & Ellis (C.R. Bard v. Gore) and MARK DAVIES of Orrick (PPC v. Corning). This month’s U.S. Supreme Court decision in Halo and Stryker makes it easier for a plaintiff in a patent infringement case to win enhanced damages for willfulness. But how much easier? And which of the changes to the Seagate standard—throwing out the threshold of “objective recklessness”, lessening the burden of proof, or rejecting the Federal Circuit’s tripartite framework for appellate review—will have the most impact? Our panelists will discuss issues such as litigation strategy and whether companies should reevaluate policies regarding opinions of counsel on non-infringement during product development. IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

NEW IPO LAW JOURNAL ARTICLE BY GARY GRISWOLD

A new article by GARY GRISWOLD entitled “35 USC 289—Grant of Certiorari in Samsung v Apple = The Opportunity for a Better-Crafted Standard for Awarding Total Profits” has been posted to the IPO Law Journal. Information about submitting articles to the IPO Law Journal is available on the IPO website.

BOOK YOUR HOTEL ROOM FOR IPO’S ANNUAL MEETING, SEPTEMBER 11-13 IN NEW YORK, NY

IPO has reserved a block of hotel rooms at the New York Hilton Midtown, where the conference is taking place. Make your reservation by reserving online or calling the hotel directly at 212-586-7000 and referencing “2016 IPO Annual Meeting.” The discounted conference rate of $359/night + taxes is available until August 12 or until the room block is sold out, whichever comes first. Space is limited. Please reserve early. For more information about the hotel or to register for the meeting, visit www.ipo.org/AM2016.




Friday, June 24, 2016 12:46 pm

IP IN THE MASS MEDIA

Jury Clears Led Zeppelin of Copyright Infringement Claim

Yesterday the Washington Post reported that a California jury cleared Led Zeppelin of copyright infringement in a lawsuit brought by Spirit guitarist RANDY WOLFE, who claimed that the opening chords of Zeppelin’s classic “Stairway to Heaven” borrowed heavily from Spirit’s instrumental track “Taurus.”

Indian Court Grants Louis Vuitton Preliminary Injunction in Trademark Dispute

On Wednesday The Fashion Law blog reported that the Delhi High Court granted Louis Vuitton a preliminary injunction in its suit against Delhi-based Guru Kripa for the sale and distribution of counterfeit bags and other accessories bearing the Paris-based luxury brand’s registered trademarks.

Stockwoods

STOCKWOODS LLP TO SPONSOR IPO’S ANNUAL MEETING

Stockwoods LLP will sponsor the Women in IP Networking Brunch at the Sept. 11-13, 2016 IPO Annual Meeting in New York, NY.

 




Thursday, June 23, 2016 1:15 pm

Federal Circuit Summaries Logo

* * * REHEARING EN BANC DENIED ON WHETHER INSTITUTION OF INTER PARTES REVIEW AND FINAL DECISION BY SAME PANEL VIOLATED DUE PROCESS

Ethicon Endo-Surgery, Inc. v. Covidien LP 14-1771 — Yesterday, by a vote of 10-1, the Federal Circuit denied a petition for en banc rehearing of an appeal from a USPTO inter partes review (IPR) decision cancelling Ethicon’s claims. The claims were for a surgical device for stapling, securing, and sealing tissue. The USPTO’s Patent Trial and Appeal Board (PTAB) found the claims would have been obvious. Ethicon argued that the final decision should be set aside because it was made by the same panel that decided to institute the IPR, which raised “serious due process concerns,” and that the USPTO Director was not authorized to delegate the institution decision to the PTAB.

The original Federal Circuit panel majority said the Director’s assignment of institution and final decision to one PTAB panel violated neither due process under Supreme Court precedent nor the intent of the America Invents Act (AIA). Nothing in the statute or legislative history addressed concern with separating these functions or suggested that delegation to the PTAB was impermissible. The Director’s authority to institute an IPR was properly delegated to the PTAB under her implicit power as agency head.

Judge NEWMAN, dissenting, argued that the AIA divided the functions of IPR institution and trial into separate USPTO bodies. Newman said that ignoring this statutory division was contrary to the AIA’s plain text and carefully designed structure, and “imperil[ed] the public confidence in the fairness and correctness of these proceedings.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO REQUESTS COMMENTS ON PROPOSED AMENDMENTS TO TRADEMARK RULES ON USE, CONTINUED USE, AND EXCUSABLE NON-USE

Yesterday the U.S. Patent and Trademark Office published a Federal Register notice seeking comments on proposed changes to the rules concerning use, continued use, and excusable nonuse in trademark cases. In particular, the Office is requesting comments on proposed amendments to the rules of practice to require submission of “information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to verify the accuracy of claims that a trademark is in use in connection with the goods/services listed in the registration.” The proposed rules seek “to promote the integrity of the trademark register by encouraging accuracy in the identification of goods/services” and to “facilitate the cancellation of registration for marks that were never in use or are no longer in use.” Comments are due by August 22. IPO’s U.S. Trademark Office Practice Committee will study the notice.

Ruschke

CHIEF PTAB JUDGE DAVID RUSCHKE TO SPEAK AT IPO’S ANNUAL MEETING

With another year of PTAB and Federal Circuit decisions in the books, IPO will feature a session on IPRs, CBMs and the PTAB at the 2016 Annual Meeting from Sept. 11-13 in New York, NY. Speakers will look back at the latest developments before the PTAB and what they mean for practitioners going forward. Moderated by STEVE MASLOWSKI (Akin Gump Strauss Hauer Feld LLP), speakers include FRANK ANGILERI (Brooks Kushman P.C.), SCOTT KAMHOLZ (Foley Hoag LLP), MICKY MINHAS (Microsoft Corp.), Chief Judge DAVID RUSCHKE (U.S. Patent and Trademark Office), and BRIAN ZIELINSKI, Pfizer.

IP IN THE MASS MEDIA

Aquazzura Sues Ivanka Trump and Licensee in Trade Dress Dispute

Yesterday The Fashion Law blog reported that Italian footwear brand Aquazzura sued shoe designer IVANKA TRUMP and licensee MARC FISHER for trade dress infringement, claiming Trump’s imitation of its “Wild Things” shoe design is likely to cause consumer confusion.

Disney Sues in China for Infringement of “Cars” Copyright

Yesterday Reuters reported that the Walt Disney Co. sued three Chinese companies for copyright infringement and unfair competition, claiming that the Chinese animated film “The Autobots” copies elements from Disney’s hit movie “Cars.”

Intel_small

INTEL SPONSORS IP VIDEO CONTEST

IPO Education Foundation thanks Intel Corp. for supporting the IP Video Contest by sponsoring an award for the 2016 competition. The Video Contest teaches students and young adults about the importance of intellectual property. Contest winners receive $5,000 in cash prizes or scholarships. Check out www.ipvideocontest.com for more information.