Intellectual Property Owners Association

Serving the Global Intellectual Property Community

Past Week’s Daily News™

Friday, March 27, 2015 12:25 pm

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IPOEF President
Louis Foreman

INVENTOR AND IPOEF PRESIDENT FOREMAN DISCUSSES PERCEPTIONS OF IP

In the IPO Education Foundation’s latest installment to its new Innovator Insights blog series, IPOEF President LOUIS FOREMAN—IP owner, entrepreneur, businessman and inventor—weighs in on the patent litigation reform debate, among other issues. “There’s bad behavior in our industry, but that bad behavior isn’t the entire industry,” says Mr. Foreman. “There are some bad actors and what we’ve got to focus on is how to curb the bad behavior without changing the entire industry.” Read here for more from Mr. Foreman on what has happened in the last 10 years to call into question the status of IP as a property right and what IPOEF is doing to counter these perceptions.

IPO CONFERENCE IN SAN DIEGO ON ITC LITIGATION

Register for IPO’s “Advanced ITC Litigation Class” on May 15 in San Diego, CA. The one-day conference will cover Section 337 investigations by the U.S. International Trade Commission (“ITC”) and will examine the latest developments in Section 337 litigation. Through a series of in-depth modules, building on an introductory overview to acclimate those unfamiliar with Section 337 investigations, participants in this course will build their understanding of current strategy and tactics, as well as brush up on basic practice points. Organized by IPO’s ITC Committee. Click here to view the program and to register. Space is limited.

Federal Circuit Summaries Logo* * THIRD PARTY CANNOT CHALLENGE USPTO PATENT REVIVAL RULING

Exela Pharma Sciences, LLC v. Lee 2013-1206 — Yesterday in a per curiam opinion, the Federal Circuit upheld a district court’s dismissal of Exela’s Administrative Procedure Act (APA) suit against the USPTO. The patent claimed a method for preparing a liquid acetaminophen formulation. The USPTO granted a petition to revive the patent application based on unintentional delay, and ultimately granted the patent. Exela petitioned the USPTO to reconsider the revival decision and cancel the patent. The USPTO declined because “no statute or regulation authorizes third party challenge to a PTO ruling concerning revival of a patent application.”

The Federal Circuit said “Congress did not intend to permit judicial review” for this kind of challenge. “The Patent Act’s ‘intricate scheme for administrative and judicial review of PTO patentability determinations,’ and ‘the Patent Act’s careful framework for judicial review at the behest of particular persons through particular procedures’ demonstrate that third party challenge of PTO revival rulings under the APA is not legislatively intended.” Judges NEWMAN and DYK filed concurring opinions.
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO CONCLUDES PATENT QUALITY SUMMIT

Yesterday the USPTO concluded its two-day Patent Quality Summit. The event, which was part of the USPTO’s “Enhanced Patent Quality Initiative,” highlighted three quality “pillars” over the two days, including excellence in USPTO work products, excellence in measuring patent quality, and excellence in customer service, and six related proposals. Throughout the day, panels of USPTO experts presented and discussed with stakeholders proposals 3-6: improving clarity of the record; review of and improvement to quality metrics; review of compact prosecution; and in-person examiner interview capability. [MORE]

IP IN THE MASS MEDIA

New Australian Copyright Bill Prompts Concerns

Yesterday the Sydney Morning Herald reported that The Copyright (Online Infringement) Bill 2015 would be introduced in the Australian Parliament this week despite critics’ concerns about unintended consequences such as blocking vast numbers of legitimate websites and the cost of implementation for telecommunications companies.

Partial Win for Intellectual Ventures Against Motorola Mobility

On Wednesday a Delaware jury found Motorola Mobility infringed an Intellectual Ventures patent on multimedia text messaging. A second patent asserted by IV related to wireless bandwidth was invalid. (Reuters)

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.




Thursday, March 26, 2015 12:29 pm

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Russell Slifer

SLIFER NAMED USPTO DEPUTY DIRECTOR

Yesterday U.S. Secretary of Commerce PENNY PRITZKER named RUSSELL SLIFER, who is the Regional Director of the USPTO’s new satellite office in Denver, Colorado, to be the next Deputy Director of the U.S. Patent and Trademark Office. Previously Slifer was Chief Patent Counsel of Micron Technology, Inc., a member of IPO’s Board of Directors, and a member of several IPO management and special committees. IPO Executive Director HERB WAMSLEY praised the appointment. He said, “IPO congratulates Russ on his appointment and looks forward to working with him in his new position.”

 

Federal Circuit Summaries Logo* * “ACTUAL PERFORMANCE” OF COMBINATION IN PRIOR ART PATENT NOT REQUIRED FOR ANTICIPATION

Kennametal, Inc. v. Ingersoll Cutting Tool Co. 14-1350 — Yesterday in an opinion by Judge LINN, the Federal Circuit upheld a USPTO inter partes patent reexamination decision rejecting Kennametal’s claims. The claims were for a cutting tool including “cemented carbide substrate” and a “ruthenium” binder coated via physical vapor deposition (PVD). Ingersoll argued the claims were anticipated under Patent Act section 102(b) over the “Grab” reference, which disclosed a carbide cutting tool, a binder from one of five different metals, including ruthenium, and three different coating mechanisms. Kennametal argued that Grab did not specifically disclose the combination of ruthenium and PVD, but instead allowed for 31 different binder possibilities and “infinite options . . .”

Substantial evidence supported the USPTO’s anticipation finding. The number of “categories and components” in Grab was not “so large that the combination of ruthenium and PVD coatings ‘would not be immediately apparent . . . .’” The finding did not require “‘actual performance’ of combining the ruthenium binder and PVD coatings.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

HOUSE IP SUBCOMMITTEE HOLDS ANOTHER HEARING ON PATENT REFORM

Yesterday the House IP Subcommittee held a hearing titled “Patent Reform: Protecting American Innovators and Job Creators from Abusive Patent Litigation.” Witnesses were MARK GRIFFIN, Overstock.com, Inc.; BRYAN PATE, ElliptiGO,Inc. KATHRYN UNDERWOOD, Ledyard National Bank; and TODD MOORE, TMSoft, LLC.

Griffin said that while Overstock.com defends frivolous suits, many retailers and others who receive frivolous patent demands cannot afford the expense. He called for a multi-faceted approach that would heighten the pleading standard for patent infringement, provide for stays of litigation against a customer while litigation proceeds against a manufacturer, limit the scope of discovery prior to claim construction and impose cost-shifting for requests outside that scope, and a stronger fee shifting statute.

Pate said several aspects of the Innovation Act could create new ways for infringers to abuse the system while making it more difficult for patent owners to enforce their rights. [More]

USPTO HOLDS FIRST DAY OF PATENT QUALITY SUMMIT

Yesterday the USPTO held the first day of its two-day Patent Quality Summit. The event is part of the USPTO’s new “Enhanced Patent Quality Initiative,” which will investigate three quality “pillars” including excellence in USPTO work products, excellence in measuring patent quality, and excellence in customer service, and six related proposals.

USPTO Director MICHELLE LEE and newly announced Deputy Director RUSSELL SLIFER opened the program and welcomed an expert panel for the morning session on “Perspectives on the Importance of Quality.” The panel included retired Federal Circuit Chief Judge PAUL MICHEL, IPO Board Members MANNY SCHECHTER (IBM) and ROY WALDRON (Pfizer), and Professor DENNIS CROUCH (Missouri), among others. [More]

IP IN THE MASS MEDIA

Biotech Execs Argue for Small Business, University Exemption in Innovation Act

On Tuesday Forbes published an op-ed by ROBERT NELSEN of ARCH Venture Partners and HANS BISHOP of Juno Therapeutics arguing that the Innovation Act will protect giant companies but cause harm to small firms and individual inventors. The authors urge backers to carve out an exemption for universities and emerging growth companies. Editor’s note: IPO generally opposes “carve outs.”

IP Chat Channel LogoMISSED THAT IP CHAT CHANNEL WEBINAR?

The standards setting arm of the Institute of Electrical and Electronics Engineers (IEEE), which is responsible for more than 900 technological standards affecting patent owners across a range of industries, recently amended its policies relating to patent owners’ obligation to license standard essential patents (SEPs) at fair, reasonable and non-discriminatory (FRAND) rates. The change came in February, following a call for clarification from regulators in 2013, as well as a slew of recent litigation in which the scope of FRAND commitments has been questioned.

Last week, four panelists with varying views on the amended policy discussed how the changes will affect patent owners going forward during an IP Chat Channel webinar on the topic. MARC SANDY BLOCK of IBM Corp. argued that the amendments weigh too far in favor of implementers of the standard and place an undue burden on patent holders. “The IEEE policy immunizes the implementer,” said Mr. Block, commenting on the IEEE’s amendment precluding SEP holders from seeking an injunction until after certain issues have been litigated. “If you are an implementer, your behavior is irrelevant to whether an injunction should be sought. You can choose not to negotiate, to delay negotiations, bring an antitrust suit against the other guy, bring all kinds of expense down on the SEP holder and push the patent holder towards litigation and you’re immune.” [More]

 




Wednesday, March 25, 2015 12:32 pm

Federal Circuit Summaries Logo* * * * SUPREME COURT HOLDS USPTO TRADEMARK TRIAL AND APPEAL BOARD DECISIONS HAVE PRECLUSIVE EFFECT

B&B Hardware, Inc. v. Hargis Industries, Inc. 13-352 — Yesterday in an opinion by Justice ALITO, the U.S. Supreme Court overturned an Eighth Circuit decision that issue preclusion did not apply. B&B obtained a federal trademark registration for the mark “SEALTIGHT” for metal fasteners for use in the aerospace industry. When Hargis sought to register the mark “SEALTITE” for use with similar goods, B&B opposed the registration as “confusingly similar to SEALTIGHT.” The USPTO’s Trademark Trial and Appeal Board agreed that SEALTITE “could not be registered because it ‘so resembles’ SEALTIGHT … as to be likely to cause confusion.” In a co-pending trademark infringement suit, the district court concluded the TTAB decision was not preclusive and found no likelihood of confusion.

The Supreme Court held “consistent with principles of law that apply in innumerable contexts … a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met.” Precedent supported that “absent a contrary indication, Congress presumptively intends that an agency’s determination … has preclusive effect.” Justice THOMAS, joined by Justice SCALIA, dissented. Justice GINSBURG filed a concurring opinion.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo* * * COURT COMMENTS ON REVIEW STANDARD FOR EVALUATING OBJECTIVE RECKLESSNESS PRONG OF WILLFUL INFRINGEMENT

Stryker Corp. v. Zimmer, Inc. 13-1668 — On Monday, the Federal Circuit granted a rehearing petition “for the limited purpose of clarifying the discussion of the standard of review of the objective reckless prong of willful infringement.” The previous 3-judge opinion was replaced with a revised opinion.

In the revised opinion by Chief Judge PROST, the Federal Circuit said that even though the objective recklessness required for proving willfulness is “predicated on underlying mixed questions of law and fact” it “is best decided by the judge as a question of law subject to de novo review.” The revised opinion added footnote 6, which stated, “This court has not yet addressed whether Octane Fitness … or Highmark … altered the standard of review under which this court analyzes the objective prong of willfulness. However, as the district court failed to undertake any objective assessment of Zimmer’s specific defenses, the district court erred under any standard of review and thus this court need not now address what standard of review is proper regarding the objective prong of willfulness.” Editor’s note: Also on Monday the Federal Circuit denied rehearing in Halo Electronics, Inc., which also addressed willful infringement.
(1 to 4 stars rate impact of opinion on patent & trademark law)

HOUSE IP SUBCOMMITTEE TO DISCUSS PATENT REFORM

This morning the House Judiciary IP subcommittee will hold a hearing titled “Patent Reform: Protecting American Innovators and Job Creators from Abusive Patent Litigation.” Witnesses include MARK GRIFFIN, Overstock.com, Inc.; KATHRYN UNDERWOOD, Ledyard National Bank; TODD MOORE, TMSoft, LLC.; and BRYAN PATE, ElliptiGO,Inc. Written statements have been posted on the committee website. The hearing will be held at 10:00a.m. ET in Room 2141 Rayburn. It will likely be webcast.

IP IN THE MASS MEDIA

SpaceX Photographs Prompt Discussion of Copyright Licensing

Yesterday the Washington Post’s “Morning Mix” reported that private space exploration company SpaceX released photographs taken by its astronauts under a Creative Commons license. The company later announced that the photos were in the public domain. The article discusses the two designations.

Fox Seeks Declaratory Judgment in “Empire” Case

After receiving multiple demand letters, Fox Television sued Empire Distribution Inc. on Monday seeking a declaratory judgment that its use of the word “Empire” as the title of its hit TV show does not infringe the record label’s trademark. (AP)

IP Chat Channel LogoTODAY ON IPO’S IP CHAT CHANNEL: COMMERCIAL SUCCESS AT THE PTAB

Tune in to the IP Chat Channel today at 2:00p.m. ET to discuss Commercial Success at the PTAB. Our panelists include PRADEEP CHINTAGUNTA, The University of Chicago Booth School of Business; MICHAEL FLIBBERT, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP and JOHN JAROSZ, Analysis Group. 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.

 




Tuesday, March 24, 2015 12:29 pm

IOY_1_smallHELP IPOEF IDENTIFY THE 2015 INVENTOR OF THE YEAR USING NEW, STREAMLINED PROCESS

IPO Education Foundation is now accepting nominations for our 2015 Inventor of the Year Award, and nominating someone has never been easier! Now in its 42nd year the award recognizes inventors of recently patented and marketed products that have had a positive impact on lives, communities, and/or economies.

To nominate and invention and inventor, click here to go to our website and enter the inventor’s name, the invention for which he or she is being nominated, and your contact information. That’s it! Nominations are due by May 1. We look forward to seeing your submissions!

CONSIDER JOINING IPO’S NEW CANADIAN PRACTICE COMMITTEE

IPO’s Canadian Practice Committee has the objective of promoting a reliable and effective Canadian IP regime through advocacy and education. The Committee will identify, monitor and study Canadian IP issues including legislation, judicial decisions and the Canadian Intellectual Property Office (CIPO). The Committee will also recommend IPO positions on Canadian IP practices. The Committee envisions membership representing all IP practice areas in Canada. The Co-Chairs of the committee are ARVIE ANDERSON (Lilly) and DIANE YEE (Janssen) and the vice-chairs are ANDREW SOJONKY (Borden Ladner Gervais) and SANTOSH CHARI (Blakes). The committee’s first call will be Monday, March 30th from 3:00-4:00p.m. EDT. The committee is reaching out to chairs and vice-chairs of other committees to join its first call. Click here to join the committee.

Federal Circuit Summaries Logo* * “DIFFICULT BURDEN” TO PROVE PATENT CLAIMS OBVIOUS NOT MET

Cadence Pharmaceuticals Inc. v. Exela Pharmsci Inc. 2014-1184 — Yesterday in an opinion by Judge LINN, the Federal Circuit upheld a district court’s rulings of patent infringement and no invalidity. Cadence claimed a liquid acetaminophen formulation (the ’222 patent) and method for preparing the formulation. The formulation was sold under the brand Ofirmev®. The method claims included a step of “decreasing the oxygen content to be below 2 ppm.” Exela argued the method claims would have been obvious based on the ’222 patent disclosure that stability depended on removal of oxygen and on the Palmieri reference disclosure that deoxygenating “pyrogallal” solutions below 0.05 ppm increased stability.

Exela did not meet its “difficult burden in this case.” Acetaminophen and pyrogallal degraded by different mechanisms—hydrolysis versus oxidation. Palmieri did not even address the degradation of acetaminophen. Secondary considerations supported a conclusion of non-obviousness, including that claimed method “fulfilled a long-felt need, was a commercial success, was licensed, and praised in the industry… [and] exhibited unexpected results.” The court also addressed the doctrine of equivalents.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP IN THE MASS MEDIA

Author Says Ad Infringes Copyright in Story about B.B. King’s Guitar

Yesterday the Las Vegas Review Journal reported that ERIC DAHL sued Toyota Motor Co. and others involved in making a commercial for the Toyota Camry, claiming the ad copied his published account of finding and returning singer B.B. King’s famous guitar “Lucille.”

Panasonic Opens Up Patents Related to the Internet of Things

Yesterday ZDNet reported that Panasonic announced it would provide royalty-free access to patents related to the Internet of Things ecosystem, saying it hoped other companies would do the same.

PUBLISH YOUR ARTICLE IN THE IPO INTERNATIONAL PATENT LAW AND PRACTICE COMMITTEE NEWSLETTER

The International Patent Law and Practice Committee is accepting member-written articles for its tri-annually published committee newsletter. Articles should be timely, patent-related, and unpublished. Previously published articles also will be considered if published in the last year and accompanied by written permission from the copyright holder. Click here to view the index of previous newsletters. Please send inquiries or submissions to Elizabeth Lester at elizabeth.lester@sutherland.com.

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!




Monday, March 23, 2015 12:41 pm

Federal Circuit Summaries Logo* * UNEXPECTED RESULTS DID NOT REBUT STRONG CASE OF OBVIOUNESS FOR PATENT CLAIMS

Senju Pharmaceutical Co., v. Lupin Ltd. 2013-1630 — On Friday in a 31-page opinion by Judge PLAGER, a split Federal Circuit upheld a district court’s finding that Senju’s patent claims were invalid. The claims were for an ophthalmic solution with very low amounts of ethylenediaminetetraacetic acid (EDTA), which was sold under the brand ZYMAR®. In a prior suit, the district court found original claims would have been obvious, but before that decision was final, Senju sought reexamination of “new claims of significantly narrowed scope” that the USPTO held patentable. Senju argued in the present suit that the use of a very low amount of EDTA produced unexpected results.

The district court did not err in finding that adding the low EDTA was “a product of routine optimization that would have been obvious to one of skill in the art.” “Ultimately, the district court properly concluded that the theories presented during reexamination proved too weak when challenged in a judicial forum to rise to the level of unexpected results sufficient to rebut a strong case of obviousness.” Judge NEWMAN dissented.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP Chat Channel LogoTHIS WEEK ON IPO’S IP CHAT CHANNEL: COMMERCIAL SUCCESS AT THE PTAB

Tune in to the IP Chat Channel on Wednesday at 2:00p.m. ET to discuss Commercial Success at the PTAB. Attacks by challengers using prior art have claimed the life of more than two thousand patent claims since inter partes review (IPR) became available in 2012. Commercial success is a defense patent owners may have to fend off obviousness challenges. This webinar will focus on how patent owners can make the best case for commercial success at the PTAB, taking into account evidentiary and time restraints. Our panel includes patent litigator MICHAEL FLIBBERT of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; economist JOHN JAROSZ, Analysis Group; and PRADEEP CHINTAGUNTA, a marketing professor at The University of Chicago Booth School of Business who specializes in analyzing consumer choices.

They will discuss how patent owners can make a case for the necessary nexus between commercial success and the patented technology. Likewise, the panelists will consider how a petitioner can poke holes in the arguments of the patent owner by focusing on other variables that can result in commercial success, such as advertising, promotion, and other market factors. 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.

ATTORNEY FEE SHIFTING IN PATENT INFRINGEMENT SUITS IN U.S. DISTRICT COURTS: WEEKLY REPORT

On March 16, Judge STEWART in the District of Utah denied the patent owner’s motion for attorney fees in a declaratory judgment suit. Waterton Polymer Products USA v. Edizone

On March 16, Judge GUILFORD in the Central District of California denied the accused infringer’s motion for attorney fees in a declaratory judgment suit. Collectors Universe, Inc. v. Blake

On March 13, Judge BUMB in the District of Delaware adopted a magistrate judge’s recommendation to grant the accused infringer’s motion for attorney fees but reserved decision on the recommended amount of $5,761,936.79. Bayer CropScience AG v. Dow Agrosciences LLC

On February 24, Judge JACKSON in the Eastern District of Virginia denied the accused infringer’s motion for attorney fees. Stretchline Intellectual Properties Ltd. V. H&M Hennes & Mauritz LP

IP IN THE MASS MEDIA

Small Business Owner Writes in Support of HR 9

On Friday The Hill’s “Congress Blog” featured a post by small business owner TODD MOORE, who said being sued by a “patent troll” amounts to “legalized extortion.” Moore urged Congress to pass House Judiciary Chairman BOB GOODLATTE’s (R-Va.) bill to address abusive patent litigation.

Novartis Cleared to Produce Version of Amgen’s Neupogen

On Friday the Wall Street Journal’s “Pharmalot” blog reported that a district judge said that Novartis may begin selling a biosimilar version of Amgen’s Neupogen despite not having provided Amgen with a complete copy of a biosimilar application.

INFLUENTIAL AMERICAN IP LEADER REMEMBERED

Former U.S. Congressman ROBERT W. KASTENMEIER (D-Wis.), 91, died Friday at his home in Arlington, Virginia. Kastenmeier was longtime chairman of the House Judiciary subcommittee with jurisdiction over intellectual property issues. His death was reported in the New York Times, the Washington Post and other national media.

Kastenmeier served in Congress from 1958 to 1990. He was perhaps the best known IP legislator of the 1970s and 80s. He was a principal architect of the 1976 Copyright Act, the first major overhaul of U.S. copyright law since 1909 and the foundation for today’s copyright law. He authored a bill to allow the U.S. to join the Berne Convention. He was instrumental in the passage of several patent, trademark, and counterfeiting statutes. He sponsored the House bill that established the Court of Appeals for the Federal Circuit in 1982…MORE