Intellectual Property Owners Association

Serving the Global Intellectual Property Community

Past Week’s Daily News™

Thursday, October 23, 2014 12:32 pm

Federal Circuit Summaries Logo* * * NO PATENT INFRINGEMENT FOR PRODUCTS MANUFACTURED, SHIPPED, AND DELIVERED OUTSIDE U.S. WITH PRICING DISCUSSIONS IN U.S.

Halo Electronics, Inc. v. Pulse Electronics, Inc. 13-1472 — Yesterday in an opinion by Judge LOURIE, the Federal Circuit upheld a district court’s summary judgment of no infringement. Halo’s patents claimed surface mount electronic packages. Pulse engaged in pricing discussions in the U.S., but manufactured, shipped, and delivered products abroad.

Pulse’s activities were beyond the scope of Patent Act section 271(a) for products delivered outside of the U.S. “[W]hen substantial activities of a sales transaction, including the final formation of a contract for sale encompassing all essential terms as well as the delivery and performance under that sales contract, occur entirely outside the United States, pricing and contracting negotiations in the United States alone do not constitute or transform those extraterritorial activities into a sale within the United States. . . .” Similarly, the court held, an offer to sell is not infringing where the subsequent sale would occur outside the U.S.

Judge O’MALLEY, joined by Judge HUGHES, filed a concurring opinion in which she said it was time for the full court to reevaluate its standard for imposition of enhanced damages in light of the standard for granting attorneys’ fees set forth in the U.S. Supreme Court’s recent Highmark and Octane Fitness opinions.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP IN THE MASS MEDIA

Reuters Says Patent Litigation Down and Patent Values Dropping

Yesterday Reuters reported on the effect of recent changes in patent law on patent litigation and valuation. According to the article, “…patent prices are plummeting, the number of court fights is down, and stock prices of many patent-holding companies have fallen.”

Court Rules Food Flavor Ineligible for Trademark

On Monday a court in Texas ruled that Gina’s Italian Kitchen had not infringed Russo’s New York Pizzeria’s trademark by producing a pizza that tasted the same as Russo’s, saying that the taste of a food is functional. (Forbes)

UPDATE YOUR MEMBER RECORD FOR A CHANCE TO WIN AN IPAD MINI

In order to provide you with the best service possible, we need to be able to reach you. Please take a moment to login to the IPO website and make sure that your contact information is correct in our database. Once you’ve updated your member record, or confirmed that we have correct information, let us know by e-mailing info@ipo.org. You will be entered into a drawing to win an iPad mini!

To view your member record go to www.ipo.org → Member Center → My Profile, then log in. Unless you changed it, your username is your e-mail address. If you do not know your password, click “forgot password” to have it sent to you. Please e-mail info@ipo.org or call us at 202-507-4500 if you have any trouble logging in.

POST YOUR EVENT ON IPO’S ONLINE CALENDAR

Do you have an event that you would like to advertise to the IP Community? Click here to submit your event! Criteria for events to be posted on IPO’s Online Calendar can be found on our website.




Wednesday, October 22, 2014 12:48 pm

Federal Circuit Summaries Logo* * REMEDY FOR INFRINGEMENT OF PASSPORT-RELATED PATENT WAS SUIT AGAINST U.S. GOVERNMENT

IRIS Corp. v. Japan Airlines Corp. 10-1051 — Yesterday in an opinion by Judge HUGHES, the Federal Circuit upheld a district court’s dismissal of IRIS’s patent infringement suit. IRIS claimed a method of making a secure identification document, like a passport, containing an embedded computer chip for storing biographical or biometric data. IRIS alleged Japan Airlines (JAL) infringed by examining its passengers’ electronic passports in the U.S. JAL examined the passports in accordance with the “Enhanced Border Security Act.,” the “Visa Entry Reform Act,” and international treaties.

IRIS’s only remedy was a suit against the U.S. government. Under U.S. Code Title 28, section 1498(a), JAL used the invention for the benefit of the government and the government clearly authorized JAL to do so. “JAL [could not] comply with its legal obligations without engaging in the allegedly infringing activities.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Hugh with Legs_small
Dr. Hugh Herr, IPO Education
Foundation Inventor of the Year

MIT’S TECHNOLOGY REVIEW PROFILES IPO FOUNDATION INVENTOR OF THE YEAR

Yesterday MIT’s Technology Review featured an article profiling 2014 IPO Education Foundation Inventor of the Year Dr. Hugh Herr. Dr. Herr lost both of his legs below the knee after a rock climbing accident at the age of seventeen. That incident changed the trajectory of his life and brought him to science. As he tells it, he did not see his body as broken, but rather saw technology as inadequate. He has been working to create more and more advanced prosthetics ever since. As quoted in the Technology Review article, “In two years I went from not being able to take 10 percent of a hundred to studying graduate-level quantum mechanics.” Today Dr. Herr is head of the Biomechatronics Group in MIT’s Media Lab and his work focuses on creating prosthetics that mimic natural human movement.

Click here for Dr. Herr’s recent Ted Talk on his research and the future of bionic technology. Dr. Herr will be honored at the IPO Education Foundation Awards Dinner in Washington, DC on December 9. To RSVP for the event click here.

Federal Circuit Summaries Logo* SPECIFICATION LIMITED SCOPE OF PATENT CLAIM FOR ORTHODONIC DEVICE

World Class Technology Corp. v. Ormco Corp. 13-1679 — On Monday in an opinion by Judge TARANTO, the Federal Circuit upheld a district court judgment of no infringement of Ormco’s patent. The claims were for a bracket for orthodontic braces that avoided or reduced interference with the gums. The issue was claim construction. The heart of the dispute was what constraints the claims placed on a “support surface” during movement of a slide.

The Federal Circuit, agreeing with the district court’s construction, relied on the specification to resolve ambiguity in the claim. The specification identified gum avoidance as the sole purpose of the arrangement of the support surface and slide. Under Ormco’s proposed broad construction, the arrangement did not present any issue of gum avoidance. The Federal Circuit also rejected Ormco’s argument that the doctrine of claim differentiation required a broad construction of the independent claim.
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO ANNOUNCES CYBERSECURITY PARTNERSHIP MEETING

On Monday the USPTO announced that it will be hosting its first “Cybersecurity Partnership Meeting” on November 14 in Menlo Park, California. The meeting will provide a forum for stakeholders to “share ideas, experiences, and insights with USPTO staff” on issues related to patent protection for cyber and network security innovations. The National Institute of Standards and Technology will present its “Framework for Improving Critical Infrastructure Cybersecurity.” Among other issues, the USPTO will discuss cybersecurity patent initiatives and post-Alice Corp. examination guidelines for patent-eligible subject matter. The meeting will begin at 8:30a.m. PT and will be webcast.

IP IN THE MASS MEDIA

Arctic Cat Sues on Recreational Vehicle Patents

Snowmobile and all-terrain vehicle maker Arctic Cat Inc. sued Sea-Doo maker Bombardier Recreational Products Inc. and BPR U.S. Inc. last week for infringing patents on an off-throttle steering mechanism for personal watercraft. (Twin Cities Business)

Multiplayer Network Innovations Sues More Than 30 Companies on Video Game Patent

Yesterday the Washington Examiner reported that Multiplayer Network Innovations LLC sued five companies for infringing a patent enabling video games to be played over a wireless network, bringing the total number of suits related to this patent to more than thirty.

IP Chat Channel LogoTIRED OF GETTING APPROVAL EVERY TIME YOU WANT TO LISTEN TO IPO’S IP CHAT CHANNEL? GET A PASS!

Become a pass holder and give all the employees of your organization unlimited access to live and past webinars of IPO’s IP Chat Channel for one year. No more hassle of obtaining approval every time you want to tune in – provide your organization a year pass and they can sign up when their schedule permits. Many organizations have saved thousands of dollars by obtaining a pass for their employees. Save time, money and earn CLE credit! For more information, contact Clara Stanfield at cstanfield@ipo.org or 202-507-4500.




Tuesday, October 21, 2014 12:45 pm

Federal Circuit Summaries Logo* * * NO EN BANC REHEARING FOR RULING THAT UNEXPECTED EFFECTIVENESS WAS INSUFFICIENT TO OVERCOME EVIDENCE OF OBVIOUSNESS OF PATENTED COMPOUND

Bristol-Myers Squibb Co. v. Teva Pharmaceuticals, Inc. 13-1306 — Yesterday in a per curiam order, the Federal Circuit denied a petition for en banc rehearing of a case in which a 3-judge panel upheld a district court decision that BMS’s patent claim would have been obvious. The claim was for entecavir, an antiviral compound sold under the brand BARACLUDE® for treating hepatitis B. BMS argued that entecavir had an unexpected potency and therapeutic window against hepatitis B, while the prior art compound was found to be toxic. The panel had held the record “amply” supported the conclusion that a skilled artisan would have selected the prior art compound and made the minor modification to arrive at entecavir.

Four separate opinions accompanied the order:

Judge DYK, joined by Judge WALLACH, filed a concurring opinion in which he said the panel opinion “properly does not allow consideration of post-invention evidence.”

Judge O’MALLEY filed a concurring opinion to “assuage” fears that the panel decision had “rewritten the test for obviousness for pharmaceutical patents.” She argued the case did not “forge new ground or set down immutable principles.”

Judge NEWMAN, joined by Judges LOURIE and REYNA, filed a 12-page dissenting opinion in which she highlighted industry concerns about “the disincentives and uncertainties flowing from the court’s rulings.”

Judge TARANTO, joined by Judges LOURIE and REYNA, filed a 16-page dissenting opinion in which he said the panel opinion was worthy of further attention to the extent it addressed questions about the “timing-of-evidence” and the proper meaning of core aspects of the obviousness analysis including “reasonable expectation of success” and “unexpected results.”

(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo* * * COURT EXCEEDED DISCRETION BY IMPOSING SANCTIONS AGAINST PATENT OWNER ABSENT EXPLICIT BAD FAITH FINDING

AntiCancer, Inc. v. Pfizer, Inc. 13-1056 — Yesterday in an opinion by Judge NEWMAN, the Federal Circuit vacated a district court’s summary judgment of no patent infringement. AntiCancer’s patents claimed a method for monitoring gene expression and a nude mouse model for following disease progression. The district court found AntiCancer’s preliminary infringement contentions deficient and imposed a fee-shifting sanction as a condition for supplementing them. AntiCancer objected to this condition and the district court entered summary judgment for Pfizer and dismissed the complaint with prejudice. AntiCancer argued that it provided all available information in accordance with the patent local rules and that further details of Pfizer’s practice of the claimed inventions required discovery of unpublished, internal laboratory procedures.

The district court exceeded its discretion. The court’s authority to impose a sanction as a condition for supplementing contentions required “an explicit finding” of conduct that “constituted or was tantamount to bad faith,” which was absent in this case. AntiCancer complied with the standards of the Federal Rules and had “no reasonable opportunity for discovery and evidentiary development of the issues.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

DILWORTH IP JOINS IPO

Dilworth IP of Trumbull, Conn. (primary contact THOMAS DEFELICE) has become a law firm member of IPO.

IP IN THE MASS MEDIA

Google Makes Changes to Battle Piracy

On Friday Google announced changes to its search strategies to help prevent users from accessing pirated material, such as removing words generally affiliated with piracy from its autocomplete function and listing ads for legitimate download or streaming sites at the top of search results. (Washington Post)

Racetrack Says It Will Oppose Nissan Trademark Application for New Infiniti

Yesterday Formula One motor-racing circuit The Circuit de Spa-Francorchamps said it would oppose Nissan Motor Co.’s application for a U.S. trademark on “Eu Rogue,” its Infiniti Q50 prototype. Eu Rogue is the name of a famous turn on the Formula One circuit. (Bloomberg)

IP Chat Channel LogoTODAY ON IPO’S IP CHAT CHANNEL: RECOVERING ATTORNEY FEES

Tune in to the IP Chat Channel, Tuesday, October 21 at 2:00p.m. ET to discuss Recovering Attorney Fees: Recent Developments. Panelists include DOUGLAS LUFTMAN, NetApp; JASON LO, Gibson, Dunn & Crutcher LLP; and JAKE HOLDREITH, Robins, Kaplan, Miller & Ciresi 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.

RECENT IPO JOB BANK POSTINGS

Corporate:

Director, Standards Licensing – Chicago, IL
Business Development Analyst/Associate – Chicago, IL
Managing Director, Licensing – Chicago, IL

Law Firm:

IP Associate – Dayton, OH
IP Associate – Cincinnati, OH
Litigation/Licensing Associate – Cincinnati, OH
Intellectual Property – Patent Prosecution Associate – Denver, CO
International Trade Litigation Attorney – Washington, DC




Monday, October 20, 2014 2:45 pm

Federal Circuit Summaries Logo* RULE OF PATENT CLAIM DIFFERENTIATION DID NOT TRUMP CLEAR MEANING

CardSoft, LLC v. VeriFone, Inc. 14-1135 — On Friday in an opinion by Judge HUGHES, the Federal Circuit overturned a district court’s patent infringement judgment. CardSoft’s patents claimed a “virtual machine” for processing communications on specialized portable computers like payment terminals. The district court construed “virtual machine” as “a computer programmed to emulate a hypothetical computer for applications related to transport of data.” The district court erred by not construing this limitation in accordance with its ordinary and customary meaning as understood by a person of ordinary skill in the art at the time the patents were filed. Both the intrinsic and extrinsic evidence established that “the defining feature of a virtual machine was its ability to run applications that did not depend on any specific underlying operating system or hardware.”

The Federal Circuit rejected CardSoft’s argument that claim differentiation supported the district court’s construction. Claim differentiation was “a rule of thumb” that did not “trump” the ordinary meaning of “virtual machine,” which was clear from the specification and prosecution history.
(1 to 4 stars rate impact of opinion on patent & trademark law)

WIKILEAKS LEAKS DRAFT IP CHAPTER OF TRANS-PACIFIC PARTNERSHIP AGREEMENT

Last week WikiLeaks published a document it claimed was the confidential, 77-page draft intellectual property chapter of the Trans-Pacific Partnership agreement, a trade agreement that the United States is negotiating with 11 other countries in the Asia-Pacific region. WikiLeaks said the text emerged from a TPP negotiating session in May 2014. The text sparked criticism among some public interest groups critical of strong IP protection. IPO supports comprehensive, high standards for the protection and enforcement of intellectual property rights in the TPP.

A spokesperson for U.S. Trade Representative MICHAEL FROMAN sent a note to the Wall Street Journal responding as follows: “The intellectual property negotiation in TPP is ongoing and a final text has not been agreed to. We strongly caution anyone from drawing premature conclusions of any kind based on supposed leaked text from unsubstantiated, unnamed sources. The U.S. is working to reach an outcome in TPP that upholds our values by balancing the need to promote access to medicines with the need to ‘incentivize’ the development of life-saving new drugs and to create jobs in innovative American industries.”

Information about the agreement is available on the USTR website. The next TPP negotiating session begins later this week in Australia.

ABEL & IMRAY JOINS IPO

Abel & Imray of London, UK (primary contact JIM DENNESS) has become a law firm member of IPO.

IP IN THE MASS MEDIA

New Yorker Writes on Copyright

In an article in this week’s New Yorker magazine, LOUIS MENAND writes about the history, purpose, and differing views on copyright. The author questions whether copyright law is too strict.

Amgen Sues Regeneron, Sanofi on Cholesterol Drug Patent

On Friday Amgen Inc. sued Rogeneron Pharmaceuticals Inc. and Sanofi SA for infringing three Amgen patents on a cholesterol drug targeting the PCSK gene. (Wall Street Journal)

Public Radio Discusses Performance Royalties

On Saturday public radio program “Studio360” featured a segment titled “Older Musicians Would Like Some Royalties Too.” The segment focused on a lobbying campaign by musicians for legislation that would require performance royalties to be paid on music recorded before February 1972.

Some Respondents to Poll Say Patents a Barrier to Innovation

The November issue of The Atlantic magazine reported on a “Silicon Valley Insiders Poll.” Eight percent of 50 “executives, innovators, and thinkers” ranked need for patent reform as “the biggest barrier to innovation in the United States.” Need for patent reform was the sixth most named of seven barriers.

Forbes Contributor Writes on TPP Leak, Criticizes Copyright Provisions

On Friday Forbes published an op-ed by contributor EMMA WOLLACOTT titled “Latest TPP Leak Reveals Even Harsher Copyright Rules.” Woollacott argued that U.S. copyright proposals in the draft published by WikiLeaks are “draconian.”

UPDATE YOUR MEMBER RECORD FOR A CHANCE TO WIN AN IPAD MINI

In order to provide you with the best service possible, we need to be able to reach you. Please take a moment to login to the IPO website and make sure that your contact information is correct in our database. Once you’ve updated your member record, or confirmed that we have correct information, let us know by e-mailing info@ipo.org. You will be entered into a drawing to win an iPad mini!

To view your member record go to www.ipo.org → Member Center → My Profile, then log in. Unless you changed it, your username is your e-mail address. If you do not know your password, click “forgot password” to have it sent to you. Please e-mail info@ipo.org or call us at 202-507-4500 if you have any trouble logging in.




Friday, October 17, 2014 12:25 pm

MLeeUSPTO DEPUTY NOMINATED FOR TOP JOB

Yesterday President BARACK OBAMA nominated Deputy USPTO Director MICHELLE LEE to become the next Under Secretary of Commerce for Intellectual Property and Director of the USPTO. The Director position has been vacant since February 2013. Lee has been the highest ranking official in the USPTO since January when she began her position as Deputy Director. Prior to her appointment to the Deputy position, she was Director of the USPTO’s Silicon Valley satellite office.

IPO Executive Director HERB WAMSLEY said, “IPO congratulates Michelle Lee on her nomination and is pleased to see the Administration moving to fill the top leadership position in the USPTO.” Lee is a former member of IPO’s Board of Directors. Her nomination requires Senate confirmation.

R K DEWAN JOINS IPO

R K Dewan & Co. of Pune, India (primary contact NITI DEWAN) has become a law firm member of IPO.

IP IN THE MASS MEDIA

Sprint Liable for $7.5 Million in Damages for Patent Infringement

This week a jury found that Sprint Corp. infringed three Comcast Corp. patents related to call routing over the internet and traditional phone lines and returned a $7.5 million verdict for Comcast. (Bloomberg)

IP Chat Channel LogoTODAY ON IPO’S IP CHAT CHANNEL: CLAIM CONSTRUCTION DEFERENCE

Tune in to the IP Chat Channel, Friday, October 17 at 2:00p.m. ET to discuss Claim Construction Deference: Teva v. Sandoz at the U.S. Supreme Court. Panelists include PAUL BERGHOFF, McDonnell Boehnen Hulbert & Berghoff LLP, who authored IPO’s amicus brief; ADAM CONRAD, King & Spalding, who co-authored the amicus brief for a group of technology companies including Google, Dell, HP, Salesforce, and Twitter; and PETER MENELL, a professor at University of California at Berkeley School of Law and founder and director of the Berkeley Center for Technology and Law, who submitted a brief with two other law professors. 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 EDUCATION FOUNDATION AWARDS DINNER WILL BE DECEMBER 9

Join the IPO Education Foundation for the 2014 Foundation Awards Dinner on December 9 at the Smithsonian National Portrait Gallery in Washington, DC. The Foundation will honor DR. HUGH HERR with the Inventor of the Year Award and HON. RICHARD LINN with the Distinguished IP Professional Award. Also honored will be the winners of the 2014 IP Video Contest and the winners of the IPO Foundation grant to the Conrad Foundation Spirit of Innovation Challenge. For more information and to register for the dinner, click here.

Awards Dinner 2013_small