Past Week’s Daily News™
Friday, February 27, 2015 1:45 pm
SENATE COMMITTEE APPROVES NOMINATION OF USPTO DIRECTOR
Yesterday the Senate Judiciary Committee voted to approve MICHELLE LEE as Director of the U.S. Patent and Trademark Office. Her nomination will now be sent to the full Senate for confirmation. The committee vote was unanimous. Senator ORRIN HATCH (R-Utah) issued a statement urging Lee to be involved in advancing so-called patent troll legislation.
* * * USPTO DID NOT ERR IN DEDUCTING TIME APPLICANT TOOK TO FILE SUPPLEMENTAL DISCLOSURE STATEMENT FROM PATENT TERM ADJUSTMENT AWARD
Gilead Sciences, Inc. v. Lee 14-1159 — Yesterday in an opinion by Judge WALLACH, the Federal Circuit upheld a district court’s summary judgment that the USPTO did not err in calculating patent term adjustment (PTA) for Gilead’s patent. The patent claimed cobicistat, a compound for improving drug pharmacokinetics. In response to a restriction requirement from the USPTO, Gilead elected one group of claims and 57 days later filed a supplemental information disclosure statement. In calculating the PTA, the USPTO deducted the 57 days. Gilead argued this time should not have been deducted because the supplemental statement did not cause any actual delay in patent examination.
The Federal Circuit held the plain language of Patent Act section 154 directs the USPTO to prescribe instances of applicant delay. It was reasonable for the USPTO to interpret “that Congress intended to sanction not only applicant conduct or behavior that result in actual delay, but also those having the potential to result in delay irrespective of whether such delay actually occurred.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
HOUSE SUBCOMMITTEE HOLDS HEARING ON PATENT DEMAND LETTERS
Yesterday a House Energy and Commerce subcommittee held a hearing titled “Update: Patent Demand Letter Practices and Solutions.” Witnesses were Qualcomm’s LAURIE SELF, National Association of Realtors’ VINCE MALTA, Boston University Associate Professor PAUL GUGLIUZZA, and Electronic Frontier Foundation’s VERA RANIERI. Self said the TROL Act introduced by Representative LEE TERRY last Congress struck the right balance of the interests at stake.
Malta, speaking on behalf of the realtors association and also representing United for Patent Reform, said patent demand letters must specify a number of details. Gugliuzza said any bill should capitalize on the respective strengths of state governments and the federal government. Ranieri said federal legislation to address patent demand letters was an important piece of broader patent reform, but should not preempt state legislation.
Witnesses’ written statements and a video of the hearing are available on the committee website.
NEXT WEEK ON IPO’S IP CHAT CHANNEL: HATCH-WAXMAN AND BIOLOGIC STRATEGIES AT THE PTAB
Tune in to the IP Chat Channel, Tuesday, March 3 at 2:00p.m. ET to discuss Hatch-Waxman and Biologic Strategies at the PTAB. This month Acorda Therapeutics found itself facing an inter partes review of a patent on its multiple sclerosis drug Ampyra filed by a hedge fund manager and a well-known non-practicing entity. That follows a growing number of pharmaceutical patents challenged at the PTAB by drug industry competitors, including patents on a Novartis dementia treatment, a Cubist antibiotic, and a Genzyme biologic for treating MS. This webinar will analyze how inter partes review and other post-grant proceedings should influence Hatch-Waxman/small molecule and biologic litigation strategies. Compliance with multiple tricky timelines is involved.
Our panelists include GERALD FLATTMANN of Paul Hastings, who succeeded in the first-ever defense of a drug patent on a granted petition for IPR; CYNTHIA LAMBERT HARTMAN of Goodwin Procter, a Hatch-Waxman litigator who represents generic companies; and TERESA STANEK REA of Crowell & Moring, a life science lawyer with experience in biologics and a former deputy director and acting director of the USPTO. 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.
IP IN THE MASS MEDIA
Article Argues for Merging Copyright Office, USPTO
Yesterday The Hill’s Congress Blog published an item by former USPTO official PETER PAPPAS arguing that the U.S. Copyright Office should be merged with the USPTO to create a new U.S. Intellectual Property Office with a Commissioner for Copyright on par with existing Commissioners for Patents and Trademarks.
MIT Sues Apple and Micron on Semiconductor Patents
Yesterday MIT’s The Tech newspaper reported that the university sued Micron and Apple for infringing a patent for a laser-cutting process for semiconductor metals.
IP WORLDWIDE SOLUTIONS JOINS IPO
IP Worldwide Solutions Inc. of Franklin Lakes, N.J. (primary contact JOHN UNDERFER) has become a small business member of IPO. Visit their website at www.ipworldwidesolutions.com.
ATTEND THE NEW PTO DAY CONFERENCE ON MARCH 10
PTO Day is a one day conference that connects the IP community with the USPTO through educational sessions and networking opportunities. This year the program has a new format, including interview style presentations; mock interviews with examiners; and more interaction between the panelists and audience. The event will also feature more networking opportunities, with longer breaks and a cocktail hour at the end of the conference. Hon. MICHELLE LEE, Deputy Director of the U.S. Patent and Trademark Office will be the luncheon speaker. Moreover, a multiple attendee discount is being offered to those organizations that send more than one employee to the conference. Organizations will receive a $200 discount for each additional employee registered. To view the full program or register, visit www.ipoef.org/pto15.
Thursday, February 26, 2015 2:32 pm
COURTS DECIDE ON ATTORNEY FEE AWARDS IN PATENT CASES
On February 24 in a non-precedential opinion by Judge DYK, the Federal Circuit overturned a district court’s attorney fee award in a patent infringement case. Biax Corp. v. Nvidia Corp. 2013-1649. The Federal Circuit decided Biax had “an objectively reasonable” basis for asserting infringement in light of the district court’s ambiguous claim construction and misinterpretation of an expert’s deposition.
On February 23 in an order by Judge KENDALL, the U.S. District Court for the Northern District of Illinois denied a motion by F.P. Rosback Co. for an attorney fee award against Tech-Ni-Fold Ltd.
To read Judge SELNA’s order awarding $1.5 million in a California case reported in IPO Daily News on Tuesday, click here.
IP IN THE MASS MEDIA
Smartflash Prevails in Patent Suit Against Apple
Yesterday a jury in the U.S. District Court for the Eastern District of Texas found that Apple, Inc. infringed three patents on digital copyright management, payment systems, and data storage, and awarded plaintiff Smartflash $532.9 million in damages. (New York Times)
Article Argues Patents Limit Innovation
Yesterday Newsweek published an article titled “How Patents Kill Innovation and Hold Tech Companies Back.” The article argues that patents do not encourage innovation and that defending suits against “patent trolls” prevents companies from innovating.
IPO RESPONDS TO REQUEST FOR COMMENTS ON PRIVILEGE FOR COMMUNICATIONS BETWEEN PATENT APPLICANTS AND PRACTITIONERS
Yesterday, IPO President PHILIP JOHNSON submitted a letter to the USPTO responding to a request for comments on the extent to which communications between patent applicants and patent agents or attorneys are privileged across domestic and international jurisdictions. IPO said inconsistent treatment of privilege has significant costs for both applicants and government resources. Clear rules that recognize the privilege of communications with licensed U.S. and foreign patent practitioners as well as an international framework establishing a minimum privilege standard would benefit all.
IPO’s International Patent Law and Practice Committee assisted with the comments with help from several other IPO committees including US Patent Law and Practice, Litigation, Canadian, and Asian Practice. The chair is JOHN TREANGEN (Dow Chemical). The vice-chairs are ELIZABETH LESTER (Sutherland), MARK GEUTLICH (Lakshmikunmaran & Sridharan), and CHARLES KNOBLOCH (Arnold Knobloch & Saunders).
TODAY ON IPO’S IP CHAT CHANNEL: CYBERATTACKS ON IP
Tune in to the IP Chat Channel today to discuss Cyberattacks on IP: Response and Prevention. Increasingly, businesses are calling upon IP lawyers to assist in the protection of IP assets against cyber threats, and to assist client victims in responding to cybercrimes. Our panel will explore current trends in cyber threats to industrial and proprietary business data; best practices in the protection of confidential and sensitive data during R&D and pre-patent filing; and data theft and breach response considerations, including offensive litigation and parallel proceedings with government authorities. Panelists are DAVID BATEMAN of K&L Gates, MAURICIO PAEZ of Jones Day, and ANGELA ZIEGENHORN of Symantec. 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.
IP LEGAL SERVICES JOINS IPO
IP Legal Services LLC of Paoli, Penn. (primary contact WILLIAM THOMAS) has become a small business member of IPO. Visit their website at www.ip-legal-svcs.com.
NEW ARTICLE ON IPO WEBSITE BY CURTIS KRECHEVSKY
The IPO Law Journal contains a new article entitled “Trademark Oppositions in the United States of America.” The author is a partner and Chair of the Trademark & Copyright Department at Cantor Colburn LLP. To view the IPO Law Journal, go to www.ipo.org/lawjournal. For details on submitting articles see www.ipo.org/submitarticle.
FEDERAL REGISTRATION OF DISPARAGING, IMMORAL AND SCANDALOUS TRADEMARKS
Attend PTO Day on March 10 at the JW Marriott Hotel in Washington, DC. There will be a session on “Federal Registration of Disparaging, Immoral and Scandalous Trademarks.” The first part of the session will focus on an overview of Section 2(a) of the Lanham Act as well as the procedures for determining if a trademark is disparaging. Then, attendees will hear from counsel that represented the Native Americans in the Washington Redskins case as well as counsel for The Slants. Moderated by LISA ULRICH, IBM Corp., panelists include STEPHEN BAIRD, Winthrop & Weinstine; RON COLEMAN, Goetz Fitzpatrick; JESSE WITTEN, Drinker Biddle & Reath LLP; and CYNTHIA LYNCH, USPTO. For more information or to view the full program, visit www.ipoef.org/pto15.
Wednesday, February 25, 2015 1:42 pm
IPO POINTS TO ALARMING TRENDS TOWARD WEAKER IP OVERSEAS, TRADE SECRETS THEFT, AND IMPEDIMENTS TO SECURING PATENTS AND TRADEMARKS
Yesterday in testimony at the Office of the U.S. Trade Representative, IPO emphasized trends that if left unchecked will erode U.S. competitiveness. IPO explained three trends:
• “. . . we are witnessing efforts to weaken IP rights [overseas] originating from a growing number of sources, both within international bodies and from some of our trading partners.”
• “IPO members are increasingly finding themselves targets of sophisticated efforts to steal their trade secrets.”
• “. . . in many jurisdictions [overseas] IPO members face patent and trademark application backlogs and other impediments to securing IP protection.”
IPO’s witness was Executive Director HERB WAMSLEY. For the text of his brief oral statement, click here. For IPO’s 22-page letter to USTR on February 6, which discussed individual countries, trends that discourage pharmaceutical innovation, and the push in international organizations to weaken IP, click here.
IP IN THE MASS MEDIA
Redskins Argue Trademark Cancellation Violates 1st Amendment
Yesterday the Washington Post reported that the Washington Redskins professional football team argued in a court filing that the USPTO’s decision to cancel the team’s trademarks violates the team’s first amendment right to freedom of speech.
OpEd Urges Consideration of Biotech Industry in Patent Reform Debate
Last week the San Jose Mercury News published an article by former USPTO Director DAVID KAPPOS and DAVID HOFFMAN of Genomic Health titled “Patent legislation would slow biotechnology innovation.” The authors argue that strong patent rights are necessary to promote advancements in biotechnology.
SESSION ON TRADEMARK EXAMINATION IN SOCIAL MEDIA AT MARCH 10 PTO DAY
Attend PTO Day on March 10 at the JW Marriott Hotel in Washington, DC. There will be a session on “Trademark Examination in Social Media.” Speakers will discuss a variety of trademark examination issues in social media including goods descriptions; specimen of use issues; and hashtags. Also hear how corporate trademark departments manage social media issues and implement new gTLDs. Speakers include JAKE FELDMAN, Johnson & Johnson; JENNIFER CHICOSKI, USPTO; and ROBERT LAVACHE, USPTO. For more information or to view the full program, visit www.ipoef.org/pto15.
TIRED 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 firstname.lastname@example.org or 202-507-4500.
Tuesday, February 24, 2015 1:35 pm
PATENT OWNER AWARDED $1.5 MILLION IN ATTORNEY FEES
On February 19 Judge SELNA in the U.S. District Court for the Central District of California ordered defendants Frame Media Inc. et al to pay $1.5 million in attorney fees to plaintiff Ceiva Logic Inc. in a patent infringement suit. Editor’s Note: IPO Daily News is beginning coverage of U.S. District Court awards and denials of attorney fees in patent infringement suits.
IP IN THE MASS MEDIA
E-Cigarette Counterfeiting Is Increasing
Yesterday the Wall Street Journal reported that counterfeiting of electronic cigarettes in on the rise across the developed world.
COMPANIES INVITED TO SEND NAMES OF SUBSIDIARIES TO IPO FOR ANNUAL PATENT OWNERS LIST
IPO is compiling its annual list of the 300 organizations that obtained the most U.S. patents in calendar year 2014. On request, IPO will combine patents granted to a parent company and those granted to the parent’s majority-owned subsidiaries. Companies that wish to have their patents combined are asked to SEND THE NAMES OF THEIR SUBSIDIARIES to Robin Muthig, 202-507-4514 or RMuthig@ipo.org, BY MARCH 2, 2015. Submit the names of subsidiaries exactly as they appear on U.S. patents. If you submitted a list of subsidiaries last year, you must do so again this year. IPO does not retain subsidiary lists for use from year to year. Please DO NOT submit the number of patents granted to the parent or to the subsidiaries. IPO will obtain numbers from the USPTO and will only use the USPTO’s numbers for compiling the lists. To view the Top 300 lists from 1984-2013 click here.
ATTEND A SESSION ON ORAL ADVOCACY AT PTO DAY ON MARCH 10
A session on oral advocacy will be held during the 25th annual PTO Day program on March 10 at the JW Marriott in Washington, DC. Hear the perspective of both the examiner and the applicant during a mock interview. What works best? What can applicants and examiners do to prepare in advance, during, and after an interview? Moderated by BILL SMITH, BakerHostetler, panelists include COURTENAY BRINCKERHOFF, Foley & Lardner LLP; SEAN SULLIVAN, Cantor Colburn LLP; TIM CALLAHAN, USPTO; and ANDY FAILE, USPTO. For more information or to view the full program, visit www.ipoef.org/pto15.
USPTO PATENT GRANTS CONTINUE TO RISE IN 2014
According to the USPTO’s Performance and Accountability Report in 2014 the office issued 24,695 design patents and 322,214 utility patents. These numbers represent a 12% increase in design patent grants and a 21% increase in utility patent grants from 2013.
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 Aguayo at email@example.com.
Monday, February 23, 2015 12:53 pm
IPO TO TESTIFY AT USTR TOMORROW
Tomorrow IPO will testify at a public hearing at the office of the U.S. Trade Representative on countries with inadequate IP protection. IPO’s testimony will follow up on and explain the main themes in a 22-page letter that IPO President PHILIP JOHNSON submitted on behalf of IPO on February 6. IPO’s letter commented on numerous inadequate IP policies in international forums and specific countries.
IPO will emphasize alarming trends that if left unchecked will erode U.S. competitiveness, constrain export growth and lead to loss of high-paying U.S. jobs. Topics will include (1) weaker IP rights overseas and a push to “rebalance” IP systems, (2) a growing global focus on improving trade secret protection, and (3) increasing backlogs and other impediments to securing IP protection. IPO’s witness will be Executive Director HERB WAMSLEY.
IP IN THE MASS MEDIA
Study Uses Words in Patents to Track Invention Trends
A recent study by researchers at Stanford and the University of Waterloo measures the significance of new inventions and the prominence of particular fields by tracking words in patents. The authors counted phrases in patents issued in the past 175 years and noted the first and repeated instances of phrases such as “DNA sequence” and “plastic”. (The Atlantic)
Australian Industry Delivers Copyright Proposal
Last week CNET reported that Australian copyright holders and Internet service providers presented the government with a proposal for cracking down on online piracy. The proposal comes in response to a request from the government issued in December and promotes a “three-strikes” policy.
“Frozen” Case Dismissed
On Friday the Orlando Sentinel reported that a district judge granted Disney’s motion to dismiss a copyright suit by an individual who asserted the company’s film “Frozen” was copied from her autobiography.
Santorum Criticizes Conservatives for Supporting Patent Reform
On Friday the Daily Caller published an op-ed by former U.S. Senator and Presidential candidate RICK SANTORUM, who said he was “stunned that some conservatives on Capitol Hill” are supporting the patent litigation reform bill.
THIS WEEK ON IPO’S IP CHAT CHANNEL: CYBERATTACKS ON IP
Tune in to the IP Chat Channel, Thursday, February 26 at 2:00p.m. ET to discuss Cyberattacks on IP: Response and Prevention. Increasingly, businesses are calling upon IP lawyers to assist in the protection of IP assets against cyber threats, and to assist client victims in responding to cybercrimes. Our panel will explore current trends in cyber threats to industrial and proprietary business data; best practices in the protection of confidential and sensitive data during R&D and pre-patent filing; and data theft and breach response considerations, including offensive litigation and parallel proceedings with government authorities. Panelists are DAVID BATEMAN of K&L Gates, MAURICIO PAEZ of Jones Day, and ANGELA ZIEGENHORN of Symantec. 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.
MARCH FEDERAL CIRCUIT ARGUMENTS POSTED
The Federal Circuit oral argument schedule for March is posted on the IPO web site. To view the schedule go to www.ipo.org/ArgumentSchedule.
IPO COMMITTEE CALLS THIS WEEK:
Monday, February 23,
Genetic Resources and Traditional Knowledge Committee – 2:00p.m. ET
Tuesday, February 24,
Patent Search Committee – 11:00a.m. ET
Software and Business Methods Committee – 2:00p.m. ET
Copyright Law and Anti-Piracy Committee – 4:00p.m. ET
To join one of IPO’s 29 Standing IP Committees, visit www.ipo.org/committeesignup.
RECENT JOB BANK POSTINGS
Junior Electrical Engineer IP Patent Associate – Pittsburgh, PA
Junior Mechanical Engineer IP Patent Associate – Pittsburgh, PA
Patent Technical Advisor (Electrical/Computer Engineering) – Chicago, IL; Washington, DC; or Walnut Creek, IL
SESSION ON RECENT TRADEMARK CASE LAW AT MARCH 10 PTO DAY
Attend PTO Day on March 10 at the JW Hotel in Washington, DC. There will be a session on “Recent Trademark Case Law.” Speakers will review recent TTAB case law and other important trademark cases including the B&B Hardware, Inc. v. Hargis Industries, Inc. and Hana Financial, Inc. v. Hana Bank cases. The Trademark Trial and Appeal Board will also address accelerated case resolution including who’s using it and how to use it effectively. Moderated by WENDY LARSON, Pirkey Barber PLLC, speakers include HON. GERARD ROGERS, USPTO; NANCY MERTZEL, Schoeman Updike Kaufman & Stern LLP; AMIE PEELE CARTER, Faegre Baker Daniels LLP; and JOHN WELCH, Lando & Anastasi, LLP. For more information or to view the full program, visit www.ipoef.org/pto15.