Intellectual Property Owners Association

Serving the Global Intellectual Property Community

Past Week’s Daily News™

Wednesday, October 1, 2014 12:38 pm

Federal Circuit Summaries Logo38 OPINIONS IN THE THIRD QUARTER

Click here to review IPO’s plain English, one-paragraph summaries of the Federal Circuit’s 38 precedential patent and trademark opinions during the third quarter of 2014. The 38 summaries are arranged in date order and rated with 1 to 4 stars.

Some noteworthy cases:

Interval Licensing, September 10, in which the patent claim term “unobstrusive manner” did not inform about scope of invention with reasonable certainty;

buySAFE, September 3, in which claims for guaranteeing a commercial on-line transaction were patent-ineligible subject matter;

Apotex, August 15, in which a patent was unenforceable for inequitable conduct due to intentional withholding and misrepresenting material information;

Tyco Healthcare, August 6, in which an antitrust claim could be based on unsuccessful patent infringement litigation and an FDA “citizen’s petition”;

ePlus, July 25, in which sanctions for violating an injunction were nullified by later cancellation of the patent claim by the USPTO; and

VirtualAgility, July 10, in which a district court erred in refusing to grant a stay in a patent infringement suit pending a Covered Business Method review before the USPTO.

USPTO ANNOUNCES ONLINE TRADEMARK RESOURCES

Yesterday the USPTO announced a Trademark Litigation Online Toolkit that answers common questions for people who are sued for trademark infringement or receive a cease and desist letter. The agency also released a video series on TEAS “Nuts and Bolts.”

TAKEDA PHARMACEUTICAL JOINS IPO

Takeda Pharmaceutical Company Ltd. of Tokyo, Japan (primary contact YOICHI OKUMURA) has become a corporate member of IPO. Visit their website at www.takeda.com.

IP IN THE MASS MEDIA

Grooveshark Infringed Thousands of Record Companies’ Copyrights

On Monday a judge in New York said Grooveshark infringed thousands of copyrights owned by three major record companies by making songs available for streaming without permission. (New York Times)

Hackers Plead Guilty to Conspiracy to Commit Copyright Infringement

Yesterday the Associated Press reported that two members of an international group of video game enthusiasts and computer hackers pleaded guilty to conspiracy to commit computer fraud and copyright infringement. The two were indicted after being charged with hacking into Microsoft Corp.’s and several video game developers’ networks and stealing more than $100 million in intellectual property including copyrighted works and trade secrets.

NETWORK WITH IPO MEMBERS

The IPO website features a members-only section called IPO Connect that allows IPO members to network with other members. You can send messages through the site and create a list of contacts. You can access your profile and start networking at http://connect.ipo.org!

CORRECTION

On September 24, IPO Daily News incorrectly reported that Deputy USPTO Director MICHELLE LEE said she would be signing a memoranda of understanding with Korea to undertake programs under the Patent Cooperation Treaty. In fact, the agreement with Korea was based on the Cooperative Patent Classification system.




Tuesday, September 30, 2014 1:26 pm

Judge Linn_SmallDISTINGUISHED IP PROFESSIONAL ANNOUNCED

IPO Education Foundation is pleased to announce that Judge Richard Linn has been named 2014 Distinguished IP Professional. The Distinguished IP Professional award is given to an individual who has demonstrated extraordinary leadership in the IP community and a lifetime commitment to invention and innovation. Judge Linn is a circuit judge on the U.S. Court of Appeals for the Federal Circuit, to which he was appointed by President Bill Clinton in 1999. Prior to his appointment to the bench, Judge Linn was a patent attorney in private practice. He has been exceptionally involved in the American Inns of Court throughout his career.

IPOEF Executive Director HERBERT WAMSLEY said, “Judge Linn is one of the strongest promoters of civility, professionalism, and ethics in the legal community. We are proud to honor him for his work and congratulate him on his achievements.”

Judge Linn will be honored at the Foundation Awards Dinner in Washington, DC on December 9. Stay tuned to the IPO Daily News for information on purchasing tickets to the dinner.

Federal Circuit Summaries Logo* * PATENT PROSECUTION HISTORY ESTOPPEL BARRED APPLICATION OF DOCTRINE OF EQUIVALENTS

EMD Millipore Corp. v. AllPure Technologies, Inc. 14-1140 — Yesterday in an opinion by Chief Judge PROST, the Federal Circuit upheld a district court’s summary judgment of no patent infringement. Millipore’s patent claimed a device for withdrawing or introducing a sample into a container of fluid without contaminating the fluid and included “at least one removable, replaceable transfer member.” The district court found AllPure’s “TAKEONE” device lacked the claimed transfer member “both literally and under the doctrine of equivalents.”

The Federal Circuit held there was no genuine issue of material fact relating to literal infringement and, although the district court found no equivalents infringement, the court should have barred Millipore from asserting equivalents infringement. During prosecution before the USPTO, the transfer member limitation was narrowed to overcome a previous rejection. This created a presumption that prosecution history estoppel applied, which Millipore failed to rebut through one of the three Festo exceptions.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP CRIME UNIT JOINS IPO

IP Crime Unit of Cheshire, U.K. (primary contact TIM MASCALL) has become a small business member of IPO. Visit their website at www.ipcrimeunit.com.

IP IN THE MASS MEDIA

Infozone Sues Apple for Patent Infringement

Yesterday the Korea Herald reported that Korean firm Infozone sued Apple, Inc. for infringing patents on messaging technology.

Course Syllabi Ruled Subject to Copyright Protection

Yesterday an opinion piece in Forbes reported on a recent decision by a Missouri appeals court finding that college course syllabi are subject to federal copyright protection.

IP Chat Channel LogoTODAY ON IPO’S IP CHAT CHANNEL: SOFTWARE LICENSE SAVVY

Tune in to the IP Chat Channel, Tuesday, September 30 at 2:00p.m. ET to discuss Software License Savvy: What IP Lawyers Need to Know – Negotiating a Software License. Panelists include EDWARD MOLYNEAUX, Adobe Systems Inc.; DAN PEPPER, Pepper Law Group; and AARON RUBIN, Morrison & Foerster, 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.

IPO ADVOCATES FOR YOU

On behalf of its members, IPO advocates reforms to provide cost-effective and reliable intellectual property programs. IPO positions are communicated to Congress, the U.S. Patent and Trademark Office, the U.S. Copyright Office, the U.S. Trade Representative and other administrative agencies. IPO also files amicus briefs in select cases of interest to a broad cross-section of IPO membership in order to influence government IP policy for the benefit of members. For more information about all of these activities, explore the Advocacy section of the IPO website. For more information about IPO’s government relations programs, email Samantha Jakhelln at samantha@ipo.org.




Monday, September 29, 2014 12:51 pm

Federal Circuit Summaries Logo* * * COURT DID NOT CLEARLY ERR IN APPLYING THERASENSE TEST TO FIND PATENTS UNENFORCEABLE

American Calcar, Inc. v. American Honda Motor Co. 13-1061 — On Friday in an opinion by Chief Judge PROST, a split Federal Circuit upheld a district court’s finding that Calcar’s patents were unenforceable. The patents claimed multimedia systems for accessing vehicle information. One inventor disclosed the existence of the prior art “96RL” navigation system to the USPTO, but did not disclose related photographs and an owner’s manual. In an earlier appeal, the Federal Circuit had remanded the case for application of the Therasense test for inequitable conduct, which was established while the appeal was pending.

The district court found that the inventor withheld information material to patentability with a specific intent to deceive the USPTO. The patents would not have been granted “but-for” the undisclosed information. The only difference between the claimed invention and the 96RL navigation system was in vehicle information accessed. With the undisclosed details, it would have been obvious to include such information in the 96RL system. The Federal Circuit found no clear error in the conclusion that the only reasonable inference from the evidence was that the inventor knew the undisclosed was material and made a deliberate decision to withhold it. Judge NEWMAN dissented.
(1 to 4 stars rate impact of opinion on patent & trademark law)

LEONARDPATEL JOINS IPO

LeonardPatel PC of Laguna Hills, Calif. (primary contact SHEETAL PATEL) has become a law firm member of IPO.

IP IN THE MASS MEDIA

Boston Scientific Will Seek to Overturn $309 Million Award

Last week Boston Scientific Corp. said it will seek to overturn an order of a Maryland judge for the company to pay $309 million in lost royalties, damages, and interest to Mirowski Family Ventures for infringing patents on an implantable defibrillator invented in part by the late Dr. MICHAEL MIRKOWSKI. (Boston Globe)

Baldness Treatment Inventor Who Received Award From IPO Dies

Last week the Miami Herald reported the death of GUINTER KAHN, who co-invented the active ingredient in the baldness treatment Rogaine®. It was said that Kahn, who was bald, could not use the product himself because he was allergic to it. IPO recognized Kahn and his co-inventor with a Distinguished Inventor Award in the 1980s.

Professor Discusses Supreme Court and Federal Circuit

On Friday Vox.com published an interview with law professor ROBIN FELDMAN, who offered her views on the Supreme Court’s review of Federal Circuit patent decisions.

IP Chat Channel LogoTWO WEBINARS THIS WEEK ON IPO’S IP CHAT CHANNEL: SOFTWARE LICENSE SAVVY & SURVIVING A SOFTWARE AUDIT

Tune in to the IP Chat Channel, Tuesday, September 30 at 2:00p.m. ET to discuss Software License Savvy: What IP Lawyers Need to Know – Negotiating a Software License and on Thursday, October 2 at 2:00p.m. ET to discuss Surviving a Software Audit. Topics to be covered by our September 30th panel include an overview of software licensor business models, types of agreements, and factors that impact negotiating leverage; the anatomy of a software license, and potential pitfalls for licensees in, e.g., clauses regarding scope, performance levels, and termination; issues that arise during mergers & acquisitions, including licenses that specifically forbid a target company to transfer the license to the acquirer; and the important new challenges raised by cloud-based software services.

Our panel of audit veterans on October 2nd will discuss the sequential phases of an audit, starting with negotiation of a detailed pre-audit agreement, followed by deployment reporting, production of licenses that show what the licensor is entitled to, and a negotiation over how much money is owed to the vendor, if any. Certain high-stakes disputes wind up in copyright litigation, and a lawyer experienced in such battles will talk tactics, such as when a licensee might want to file a motion for declaratory judgment.

Panelists on the September 30th webinar include EDWARD MOLYNEAUX, Adobe Systems Inc.; DAN PEPPER, Pepper Law Group; and AARON RUBIN, Morrison & Foerster, LLP. Panelists on the October 2nd webinar include ALEXANDER LAWRENCE, Morrison & Foerster, LLP; CHRISTOPHER RUHL, Pricewaterhouse Coopers; and ROBERT SCOTT, Scott & Scott LLP. To register, click here. Separate registration required each program. CLE granted in many states. IP Chat Channel webinars are recorded and available after the live webinars at www.ipo.org/IPChatChannel.

DONATIONS TO IPO EDUCATION FOUNDATION TAX DEDUCTIBLE

Visit www.ipoef.org for information on IPO Education Foundation programs. Donations to the foundation are tax deductible by individuals on their U.S. tax returns. To make a donation, call 202/507-4500 or click here. To see a list of Foundation sponsors and donors, click here.

 




Friday, September 26, 2014 12:33 pm

Federal Circuit Summaries Logo* * * COURT PROPERLY STAYED SUIT IN LIGHT OF USPTO COVERED BUSINESS METHOD REVIEW

Benefit Funding Systems LLC v. Advance America Cash Advance Centers Inc. 14-1122 — Yesterday in an opinion by Chief Judge PROST, the Federal Circuit upheld a district court’s stay order. Benefit’s patents claimed a computer-implemented method and system for creating funds based on the present value of future retirement payments. While the infringement suit was pending, the USPTO Patent Trial and Appeal Board instituted a covered business method review on the basis that it was more likely than not that Benefit’s claims were unpatentable under Patent Act section 101.

The Federal Circuit held the district court properly granted a stay. The stay simplified the issues, decreased the burden of litigation, and provided no undue prejudice or tactical advantage. A stay motion was “not the time or place” to review the PTAB’s decision or authority to institute the CBM review as urged by Benefit. A footnote in the Federal Circuit opinion indicated the PTAB issued a final decision on August 22 that the claims at issue were patent-ineligible under section 101.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo* * ITC FINDING THAT PRODUCTS PRODUCED AFTER CONSENT ORDER WERE DEVELOPED INDEPENDENTLY NOT SUPPORTED BY SUBSTANTIAL EVIDENCE

uPI Semiconductor Corp. v. International Trade Commission 13-1157 — Yesterday in an opinion by Judge NEWMAN, the Federal Circuit overturned an ITC ruling that uPI did not violate a consent order. Richtek filed a complaint with the ITC alleging that uPI misappropriated trade secrets related to direct current controllers. uPI moved to terminate the investigation and entered into a consent order to cease importing products using or containing Richtek’s trade secrets. A year later, Richtek filed a subsequent “enforcement complaint” alleging that uPI violated the consent order. The ITC found the “formerly accused products” violated the consent order, but, due to uPI’s independent development and “clean room” procedures, the post-consent order products did not.

The conclusion that the post-consent order products were independently developed was not supported by substantial evidence. uPI’s post-consent order products used, verbatim, 23 lines of code covered by Richtek’s trade secrets, and included identical extraneous markings, notations, and design errors.
(1 to 4 stars rate impact of opinion on patent & trademark law)

USTR REQUESTS INPUT FOR NOTORIOUS MARKETS LIST

Today, the Office of the United States Trade Representative published a Federal Register notice requesting public comments on internet and physical markets based outside the United States for possible inclusion in the 2014 Notorious Markets List. This list is used to identify “select online and physical marketplaces that reportedly engage in or facilitate substantial copyright piracy and trademark counterfeiting” and is published as an “out-of-cycle review” separate from the USTR’s annual Special 301 Report. Comments are due October 24. IPO committees will be studying the notice.

LEE AND LI JOINS IPO

Lee and Li, Attorneys-at-Law of Taipei ,Taiwan (primary contact DAISY WANG) has become a law firm member of IPO.

USPTO ANNOUNCES EXPANSION OF COOPERATIVE PATENT CLASSIFICATION SYSTEM WITH KOREA

Yesterday the USPTO announced a “major expansion” of the Cooperative Patent Classification System. In an agreement signed by USPTO Deputy Director MICHELLE K. LEE and Korean Intellectual Property Office Commissioner YOUNG-MIN KIM, KIPO agreed to expand the number of documents included in the system “by fully classifying its patent applications and utility models.”

IP IN THE MASS MEDIA

Google Responds to News Corp. Allegations

In a blog post yesterday Google, Inc. Senior Vice President RACHEL WHETSTONE responded to recent accusations from News Corp’s Chief Executive, ROBERT THOMPSON. Whetstone said, among other things, that Google does not work to suppress competition or enable piracy. (Wall Street Journal)

Photographer Laments Copyright Limitations

On Wednesday in an opinion piece in Ars Technica, photographer Alex Wild discussed the losses his business had suffered because of the limitations of copyright law to protect images from infringement on the internet.

DID YOU KNOW YOU CAN PAY YOUR MEMBERSHIP DUES ONLINE?

It’s easy to manage your membership on the IPO.org website. Individual members and primary contacts of corporate or law firm members can pay their membership dues online at www.ipo.org/myprofile. Once on your profile, update your contact information, view any upcoming IPO meetings you’re registered for, and if you’re a committee member, view the name of your committee.




Thursday, September 25, 2014 12:37 pm

JOIN AN IPO COMMITTEE

IPO has more than eight hundred committee members on 29 Standing IP Committees that cover seven areas of intellectual property policy, law, and practice. A list of IPO standing committees, identified by division (antitrust and competition law, business issues, litigation and dispute resolution, international IP law and practice, patents, trademarks, and copyrights) can be found here. You can apply to join an IPO committee online at www.ipo.org/committeesignup. Members are limited to one committee.

NEW IPO MEMBER

JACQUELINE LUI of Hong Kong, People’s Republic of China has become an individual member of IPO.

IP IN THE MASS MEDIA

Vringo Withdraws Patent Infringement Claim Against ZTE

Yesterday Market Watch reported that Vringo Inc. withdrew its claim in a UK court that ZTE Corp. infringed a standard essential patent on mobile communications.

Ukulele Orchestra Loses Trademark Suit

A British court found recently that the German-based United Kingdom Ukulele Orchestra does not infringe the trademark Ukulele Orchestra of Great Britain (UOGB) because the groups are not in competition.(BBC)

NEED TO CATCH UP ON THE DAILY NEWS?

The IPO website homepage provides a link to the IPO Daily News™ Archives, which contain fifteen years of collected issues, available only to members.

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.

NOT YOUR GRANDMOTHER’S GIRL SCOUTS!

For the first time Girl Scouts across the country now have the opportunity to earn a patch on intellectual property! IPO Education Foundation recently partnered with the Girl Scout Council of the Nation’s Capital and the USPTO to develop the IP patch. Now we need your help. What better people to help girls earn the patch than IPO members! Click here for information on how to bring the patch to your local troop or volunteer to talk to a troop about what you do!