Past Week’s Daily News™
Wednesday, July 29, 2015 12:37 pm
Circuit Check Inc. v. QXQ Inc. 15-1155 — Yesterday in an opinion by Judge MOORE, the Federal Circuit overturned a district court judgment that Circuit’s patent claims were obvious. The patents claimed methods and systems for marking interface plates for circuit board testers. QXQ cited rock carvings, engraved signage, and the “Prussian Blue” machining technique as prior art. The district court found that “‘any layman’ would have understood that interface plates could be marked using the techniques described in the disputed prior art.”
The Federal Circuit said the question was not whether lay people would look to these simple techniques, but “whether an inventor would look to this particular art to solve the particular problem at hand.” Substantial evidence supported that the disputed references were not analogous art.
(1 to 4 stars rate impact of opinion on patent & trademark law)
Tune in to the IP Chat Channel today, July 29th at 2:00p.m. ET to discuss Claim Construction after Teva: Six Months In. Panelists include MICHAEL HAWES, Baker Botts LLP; Hon. FAITH HOCHBERG, Hochberg ADR; and JONATHAN SUDER, Friedman Suder & Cooke. CLE granted in many states. IP Chat Channel webinars are recorded and available after the live webinars at www.ipo.org/IPChatChannel.
IP IN THE MASS MEDIA
New Evidence Could Alter Course of “Happy Birthday” Case
Yesterday MSN reported that a songbook published in 1927 that includes music and lyrics to the song “Happy Birthday to You,” but does not note its copyright registration, may be sufficient evidence to prove the registration was abandoned and that the song is in the public domain.
Conan O’Brien Sued for Stealing Jokes
Yesterday the Washington Post’s Style Blog reported that comedian CONAN O’BRIEN has been sued by freelance comedy writer ALEX KASBERG for copyright infringement, alleging O’Brien stole jokes Kasberg posted on Twitter.
LEARN ABOUT THE IPO EDUCATION FOUNDATION’S SCHOLARSHIP PROGRAM
The IP Video Contest is a great opportunity for teens and young adults to win a $5,000 scholarship or cash prize by making a short video illustrating the importance of the patent system. This IPO Education Foundation outreach program is in its fifth year and has helped many young people learn about the patent system. Encourage your family and friends to participate!
AUGUST FEDERAL CIRCUIT ARGUMENTS POSTED
The Federal Circuit oral argument schedule for August is posted on the IPO web site. To view the schedule go to www.ipo.org/ArgumentSchedule.
USPTO TO HOST REGIONAL ENTREPRENEURSHIP CONFERENCE IN DALLAS
Next week the USPTO will host a Regional Entrepreneurship Conference in Dallas, TX. Panelists from the USPTO and small business leaders will present ways inventors can take advantage of federal, state, and local resources to forward their own innovation and dreams of entrepreneurship. The event is cosponsored by Southern Methodist University’s Dedman School of Law, Tsai Center for Law, and the Dallas Entrepreneur Center (DEC). It will be held August 7-8 at the SMU Dedman School of Law. More information is available on the USPTO website.
BAKER HOSTETLER TO SPONSOR ANNUAL MEETING
Baker Hostetler will sponsor the Column Wraps at the 2015 IPO Annual Meeting from Sept. 27 to 29 in Chicago, IL. Visit the meeting website for more information or to register.
Tuesday, July 28, 2015 12:28 pm
2015 COMMITTEE OF THE YEAR AWARD WINNERS
In recognition of exceptional service, IPO will be presenting its Outstanding Committee of the Year Award to the Litigation and U.S. Post-Grant Patent Office Practice Committees at the 2015 Annual Meeting in Chicago, Ill. during the luncheon on Tuesday, September 29. The Litigation committee is chaired by JENNIFER JOHNSON, DuPont, and LAURIE GATHMAN KOWALSKY, Koninklijke Philips, and the committee vice chairs are GARY ROPSKI, Brinks Gilson & Lione, ELEY THOMPSON, Foley & Lardner, and DAVID LONG, Kelley Drye & Warren. The U.S. Post-Grant Patent Office Practice committee is chaired by RICHARD RAINEY, General Electric Co., and the committee vice chairs are KEVIN LAURENCE, Oblon, and KEVIN GREENLEAF, Dentons US. Visit www.ipo.org/AM2015 for Annual Meeting program details.
Tune in to the IP Chat Channel tomorrow, Wednesday, July 29th at 2:00p.m. ET to discuss Claim Construction after Teva: Six Months In. How has the U.S. Supreme Court’s January ruling in Teva changed patent litigation at U.S. district courts? What are the latest lessons to be drawn from Federal Circuit decisions on appeals involving claim construction? It’s been six months since the Supreme Court’s Teva decision. On our panel are two litigators, JONATHAN SUDER of Friedman Suder & Cooke and MICHAEL HAWES of Baker Botts LLP, each of whom argued before the Federal Circuit in recently-decided cases involving claim construction, as well as the Hon. FAITH HOCHBERG, a recently retired U.S. District Court Judge from the District of New Jersey, who has presided over more than 100 patent litigations.
The panel will discuss cases in which the Federal Circuit continued to overturn district courts’ claim constructions, as well as the more recent Cephalon, VIS, and Lighting Ballast cases which offer examples of how extrinsic evidence can play a more meaningful role post-Teva. CLE granted in many states. IP Chat Channel webinars are recorded and available after the live webinars at www.ipo.org/IPChatChannel.
IP IN THE MASS MEDIA
Washington Post Profiles Inventor Robert Fischell
Yesterday the Washington Post published a profile of 1984 IPO Education Foundation Inventor of the Year ROBERT FISCHELL, who is currently working on a device to reduce or eliminate chronic pain.
Twitter Working to Protect User Content Copyrights
Yesterday the Chicago Tribune reported that Twitter has begun a practice of removing tweets, particularly jokes, when users claim copyright infringement.
Doobie Brothers Sue Cover Band for Trademark Infringement
Yesterday Billboard reported that 1970s rock band The Doobie Brothers sued rock cover band Doobie Decibel System for trademark infringement, claiming the latter’s use of the word “doobie” in relation to music was confusingly similar to The Doobie Brothers’.
INTERESTED IN A SEAT ON THE IPO BOARD OF DIRECTORS?
At the Annual Meeting in September the Nominations Committee will recommend two individuals for election to Regular Corporate seats on the Board. The IPO Board of Directors is composed of chief IP counsel of IPO member companies. There are two categories of Board members:
- Regular Corporate: These individuals serve a 2-year term that cannot be renewed for consecutive terms. In this case the terms would be January 1, 2016-December 31, 2017. IPO membership dues for these board members are the same as those your company is paying now.
- Sustaining Corporate: These individuals serve 2-year terms that may be renewed an unlimited number of times. Annual dues for sustaining positions are higher than those for Regular Corporate members.
The two positions to be filled in September are for Regular Corporate members. We also keep a running list of individuals who might be interested in seeking nomination to the Board as a Sustaining member, as those positions sometimes become available throughout the year.
If you are interested in serving on the IPO Board of Directors please call or e-mail Robin Muthig (202-507-4500 or RMuthig@ipo.org) by July 31 to indicate whether you are interested in a Regular or Sustaining position or both. If you think your name is already on the list, please e-mail Robin to confirm.
IPO ANNUAL MEETING DINNER RECEPTION AT THE MUSEUM OF SCIENCE AND INDUSTRY
Join Annual Meeting attendees and guests on Sept. 28 for a memorable evening at Chicago’s Museum of Science and Industry (MSI). MSI is the largest science museum in the Western Hemisphere. The Museum is housed in the only remaining building from the 1893 World’s Columbian Exhibition. Guests will be able to explore the Museum’s many interactive exhibits, including Science Storms, Robot Revolution, Inventing the Future, Genetics and Yesterday’s Main Street, while they enjoy Chicago cuisine throughout the venue. For more information or to register, visit www.ipo.org/AM2015.
Monday, July 27, 2015 2:13 pm
IPO REPORTS ATTORNEY FEE SHIFTING CASES WEEKLY
Don’t miss our attorney fee shifting reports, which have been published every week since March. See below. This week, after a recent lull in the number of cases, we report a larger than average number of eight. Attorney fees of more than $1million were granted in two cases – one to a patent owner and one to an accused infringer. In the grant to the accused infringer, the award was to be paid by the patent owner under Patent Act section 285 and the owner’s former attorneys under 28 U.S.C. 1927.
ATTORNEY FEE SHIFTING IN PATENT SUITS IN U.S. DISTRICT COURTS: WEEKLY REPORT
On July 16, Judge CHESNEY in the Northern District of California denied the accused infringer’s motion for attorney fees. Synopsys, Inc. v. Mentor Graphics Corporation
On July 17, Judge CASTEL in the Southern District of New York denied the accused infringer’s motion for attorney fees. Chizmar v. Acco Brands Corporation
On July 17, Judge ORRICK in the Northern District of California denied the accused infringer’s motion for attorney fees. France Telecom S.A. v. Marvell Semiconductor Inc.
On July 19, Magistrate Judge TURNOFF in the Southern District of Florida recommending denying the accused infringer’s motion for attorney fees. Commonwealth Laboratories, Inc. v. Quintron Instrument Company, Inc.
On July 20, Judge KLAUSNER in the Central District of California denied the accused infringer’s motion for attorney fees. Greenland v. Harbor Freight Tools USA, Inc.
On July 21, Special Master WHITE in the Western District of Pennsylvania granted nearly $1.6 million in attorney fees to the patent owner. Drone Technologies, Inc. v. Parrot, Inc.
On July 21, Magistrate Judge THYNGE in the District of Delaware recommended granting in part the accused infringer’s motion for attorney fees. Magnetar Technologies Corp. v. Six Flags Theme Parks, Inc.
On July 21, Judge HART in the Northern District of Illinois granted nearly $3.6 million in attorney fees to the accused infringer, to be paid by the patent owner under 35 U.S.C. 285 and the patent owner’s former attorneys under 28 U.S.C. 1927. Intellect Wireless, Inc. v. HTC Corporation
JUST A FEW DAYS LEFT!
Submissions for the IP Video Contest are due August 1. The Video Contest asks teens and young adults to create a brief video answering questions about the benefits of the patent system for a chance to win $5,000 in cash prizes and scholarships. It is a great way for students to learn about IP and an opportunity for film students to expand their portfolios before applying for college! Share the Video Contest website with your family and friends today!
IPO COMMITTEE CALLS THIS WEEK
Tuesday, July 28,
Copyright Law and Anti-Piracy – 4:00p.m. ET
To join one of IPO’s 29 Standing IP Committees, visit www.ipo.org/committeesignup.
IP IN THE MASS MEDIA
Monsanto Invites Neil Young to Discuss Documentary
On Friday RollingStone reported that Monsanto invited singer NEIL YOUNG to its headquarters to discuss the company’s work in response to Young’s new film about the patent infringement suit between Monsanto and a farmer on seed patents.
Dating Site Sues for Patent, Trademark Infringement
On Friday Forbes reported that dating website Jdate sued rival site Jswipe for trademark infringement, claiming the name is confusingly similar, and for infringing its patent on an online dating service that confidentially determines matches.
MARSHALL, GERSTEIN & BORUN LLP TO SPONSOR ANNUAL MEETING
The charging stations at the IPO Sept. 27 to 29, 2015 Annual Meeting in Chicago, IL, will be co-sponsored by Marshall, Gerstein & Borun LLP. Visit the meeting website for more information or to register for the Annual Meeting.
Friday, July 24, 2015 12:26 pm
HERBERT C. WAMSLEY TO GIVE LUNCHEON ADDRESS AT IPO ANNUAL MEETING
On September 29, 2015, HERBERT WAMSLEY will give his final plenary address as Executive Director of IPO before retiring at the end of 2015. His talk, titled “The U.S. Patent System – Past, Present and Future” will take place during the Tuesday luncheon at the IPO Annual Meeting. The meeting will be held at the Hyatt Regency Hotel in Chicago, IL from Sept. 27-29. For more information and to register, visit www.ipo.org/am2015.
HOUSE COMMITTEE CONTINUING REVIEW OF U.S. COPYRIGHT LAW
This week House Judiciary Committee Chairman BOB GOODLATTE (R-Va.) and Ranking Member JOHN CONYERS (D-Mich.) announced the next step in the committee’s ongoing review of U.S. copyright law. The committee has issued joint invitations to all witnesses at the committee’s copyright hearings to meet with committee staff and provide additional input. Over the last two years, the committee has held 20 hearings with 100 witnesses. It is the first comprehensive review of copyright law since the 1960’s.
Senior level Girl Scouts (9th-10th graders) can take on a variety of challenges in order to complete their IP Patch. One of those challenges is the IP Video Contest. Contestants are asked to create a short video explaining the importance of the patent system to individuals and economies for a chance to win $5,000 in scholarships or cash prizes. See the Foundation website for more information on the Girl Scout IP Patch and www.ipvideocontest.com for more information on the Video Contest.
IP IN THE MASS MEDIA
Russian Authorities Threaten to Shut Down YouTube
On Wednesday the Russian government warned YouTube that the service could be blocked for failing to keep copyrighted material off the site. The warning came after YouTube removed illegal copies of two popular Russian TV shows, but failed to remove copies that were subsequently uploaded by users. YouTube reportedly then quickly removed the illegal content. (Hollywood Reporter)
Study Says Australians Likely to Download Pirate Material in Spite of Penalties
Yesterday CNET reported that a study conducted by the Australian Department of Communications found that most Australians who illegally download pirated material would continue to do so in spite of warnings from their Internet service providers that their access could be terminated.
GOOGLE ANNOUNCES “PATENT STARTER PROGRAM”
Google Inc. has posted information on its patents site about a “Patent Starter Program,” which offers benefits to eligible startups and developers. Among other things, participants will receive 2 patent families from Google’s patent portfolio. Participants will also join the License On Transfer (LOT) program. LOT is an industry-led, networked, royalty-free patent cross licensing arrangement for transferred patents. Google is offering the starter program to the first 50 eligible startups or developers.
IPO PRIMARY CONTACTS ASKED TO UPDATE MEMBERSHIP ROSTERS
Primary contacts of IPO corporate and law firm members are asked to use the website to review and update your organization’s roster in the IPO database. To view the roster go to www.ipo.org/directory and search for your organization’s name. This will produce a list of all individuals affiliated with your membership. To delete someone from the list, please e-mail their name to email@example.com. To add someone to your company’s roster ask them to go to www.ipo.org/joinipo to create a username and profile. IPO corporate and law firm members are allowed to assign an unlimited number of employees to their membership.
Thursday, July 23, 2015 12:39 pm
In re Posco 15-112 — Yesterday in an order by Judge DYK, the Federal Circuit vacated a district court’s protective order modification. Nippon Steel sued Posco for patent infringement in New Jersey. The district court entered a protective order that prohibited cross-use of confidential materials produced in the suit. Nippon also sued Posco in Japan for trade secret misappropriation and moved to modify the protective order to allow foreign counsel access to Posco’s confidential information.
In an issue of first impression, the Federal Circuit said section 1782 of Title 28, U.S. Code, and the factors articulated in the Supreme Court’s Intel decision were relevant to whether the protective order could be modified to allow use of the discovered materials in the foreign proceeding. Those factors included the nature of the foreign tribunal, whether the modification request “conceals an attempt to circumvent foreign proof-gathering restrictions;” and whether the request was “unduly intrusive or burdensome.” The Federal Circuit directed the district court “to conduct the proper assessment giving due consideration to the Intel factors.” Judge HUGHES, concurring, would not have required consideration of the Intel factors.
(1 to 4 stars rate impact of opinion on patent & trademark law)
JOIN THE IPO EDUCATION FOUNDATION PUBLIC AWARENESS CAMPAIGN
The IPO Education Foundation’s mission is to educate the public on the value of IP. The Foundation does this in a number of ways including the IP Video Contest, a scholarship program in which students explain the importance of the patent system in a short video. Contest winners receive a scholarship or cash prize of $5,000. You or your company can help us teach young people about the value of IP by sponsoring a scholarship for one of our winners. Two winners are selected from each of three age categories. Sponsorship opportunities remain in each category. For more information about sponsoring the IP Video Contest contact Colleen Wellington-Caban at firstname.lastname@example.org.
WIN AN APPLE WATCH AT IPO’S IP EXPO
The 2015 IPO Annual Meeting IP Expo will feature an exhibit area that will be open 7:00a.m.-4:00p.m. on Monday and Tuesday, Sept 28 and 29. Attendees who visit all exhibit booths will be entered to win an Apple Watch Sport! Visit our website to view a list of this year’s exhibitors.
IP IN THE MASS MEDIA
Nintendo Did Not Infringe Game Control Patents
Yesterday IGN reported that a California judge found eight Nintendo handheld consoles did not infringe Quintal Research Group patents.
Tax Discussions Contemplate Special Treatment for Corporate IP Revenue
Yesterday the Wall Street Journal reported that a bipartisan group of lawmakers in Congress is discussing ways to overhaul taxes on multinational corporations, and one issue under consideration is special tax treatment for intellectual property revenue.
Kid Inventors Design Toys for Museum Competition
On Tuesday the Washington Post’s Kids Post featured the Kid International Discovery Museum’s Toy 2.0 Challenge, which asks kids ages 10-18 to invent a toy and work with an inventor to prototype it. The winning invention could get picked up and put on the market by Innovation First International.
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 email@example.com or 202-507-4500.