Intellectual Property Owners Association

Serving the Global Intellectual Property Community

Past Week’s Daily News™

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

 




Thursday, October 16, 2014 12:47 pm

SUPREME COURT JUSTICES APPEAR TO DISAGREE ON REVIEW OF PATENT CLAIM CONSTRUCTION

During the oral argument yesterday in Teva v. Sandoz, the justices of the U.S. Supreme Court appeared split on the standard for appellate review of patent claim construction rulings. To read the 70-page transcript of the argument, click here. The question posed in the case was “Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires …, or only for clear error . . . .”

Several justices questioned counsel for the parties and the government extensively. Justice ALITO at one point said to Teva’s counsel, “. . . you want to introduce a level of complication into this. The Federal Circuit says de novo for everything, and you want the . . . Federal Circuit now to struggle to determine which are factual questions as to which there’s clear error review, which ones get de novo review, whether it’s the ultimate question. Is it worthwhile as a practical matter?” Justice BREYER, on the other hand, appeared to favor Teva’s position. IPO’s amicus brief argued that underlying factual determinations based on extrinsic evidence should be reviewed for clear error by the Federal Circuit, but that a district court’s claim interpretation relating to the significance of statements in the intrinsic record should remain reviewable de novo by the Federal Circuit.

Hugh Herr_small

INVENTOR OF THE YEAR ANNOUNCED

IPO Education Foundation is pleased to announce that Dr. HUGH HERR has been named 2014 Inventor of the Year. The Inventor of the Year award is given to an inventor whose creations have made a significant impact on economies or quality of life.

Dr. Herr is head of the Biomechatronics research group at the MIT Media Lab where his research focuses on creating bionic limbs that emulate the function of natural limbs by bringing together the fields physiology and electromechanics. He is being honored for his BiOM® T2 System.

Replacing traditional prosthetics, the BiOM system is the world’s first bionic foot and calf system. It replicates an individual’s lost muscle and tendon anatomy and function in order to create a more normalized gait. The BiOM system has proven to be a life changing device for wounded soldiers and victims of the Boston Marathon bombing. The system has allowed Dr. Herr, a double amputee, to continue and improve his skills at rock climbing.

Dr. Herr 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. For more information on the BiOM System click here.

USTR SEEKS COMMENTS ON IP RIGHTS ISSUES IN INDIA

On Tuesday the Office of the U.S. Trade Representative published a Federal Register notice requesting comments on intellectual property rights issues of concern in India, such as those identified in the 2014 Special 301 Report. USTR invited comments as part of an “Out-of-Cycle Review” to assess progress on engagement with the Indian Government on intellectual property rights issues. Written comments are due October 31. IPO committees are studying the notice.

PENDENCY TIMES DOWN AT USPTO

Last week the USPTO updated its Patents Dashboard to include final numbers for FY 2014. In 2014 average first office action pendency dropped to 18.4 months from 19.1 months in 2013. Total pendency dropped to 28 months from 30.7 in 2013.

averagepatentpendencytime

U.S. SECRETARY OF COMMERCE ADDRESSES ICANN

On Monday U.S. Secretary of Commerce PENNY PRITZKER spoke at a meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) in Los Angeles. The U.S. Department of Commerce announced in March that the administration would relinquish its oversight of ICANN, which began implementing the new generic top level domain program in 2012. In her remarks, Pritzker emphasized U.S. support for transferring responsibility for Internet Assigned Names Authority (IANA) functions to the “global multistakeholder community” rather than to a single entity. A video is available on the ICANN website.

IP IN THE MASS MEDIA

Chanel Sues T-Shirt Maker for Infringing Trademarked CC Monogram

Last week fashion house Chanel S.A. sued What About Yves designer JEANINE HELLER, claiming the company infringed Chanel’s trademark on the double C logo by printing t-shirts and sweatshirts with an image of a ghost coming through the logo. (Vogue)

Henley Sues Duluth Trading for Copyright Infringement of His Name

Eagles singer DON HENLEY recently sued clothing manufacturer Duluth Trading Co., claiming the company infringed the Eagles copyright to the song “Take It Easy” when it ran an advertisement that read “Don A Henley and Take It Easy”. (CBS News)

YouTube Pays $1 Billion to Copyright Owners for Unauthorized Use of Content

On Monday Ars Technica reported that YouTube has paid $1 billion to copyright owners who have used YouTube’s Content ID program to monetize infringement by placing advertisements on the unauthorized content.




Wednesday, October 15, 2014 12:36 pm

Federal Circuit Summaries Logo

* * * “BY MEANS OF” PHRASE IN CLAIM DID NOT INVOKE MEANS-PLUS-FUNCTION PROVISION OF PATENT ACT BUT CLAIM INDEFINITE

Robert Bosch, LLC v. Snap-On, Inc. 14-1040 — Yesterday in an opinion by Chief Judge PROST, the Federal Circuit upheld a district court decision that Bosch’ claims were indefinite. The claims were for a diagnostic tester for a motor vehicle’s computerized control unit and recited that a program was queried “by means of” a “program recognition device.” The district court decided that this limitation presumptively invoked Patent Act section 112(f) due to the “by means of” language.

The district court erred in applying a presumption that “program recognition device” was a means-plus-function term. The presumption has been applied “when a claim uses the word ‘means’ as a noun in the claim,” but not for the phrase “by means of.” The claim language overcame a strong presumption against invoking section 112(f), however, because “program recognition device” lacked sufficiently definite structure. The claims were indefinite means-plus-function claims because the specification merely explained the function but did not contain a single reference to the structure corresponding to the limitation.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* * COURT ERRED IN FINDING NO PREVAILING PARTY IN PATENT INFRINGEMENT SUIT

SSL Services, LLC. v. Citrix Systems, Inc. 13-1419 — Yesterday in an opinion by Judge O’MALLEY, the Federal Circuit vacated a district court’s finding of no prevailing party for the purpose of attorneys’ fees and costs. SSL’s patents claimed methods for allowing computer users to establish encrypted connections with a server or another computer. SSL alleged infringement by Citrix’s “GoToMeeting” and related “GoTo” products. SSL prevailed in proving willful infringement of a first patent and was awarded $15 million in damages, while Citrix prevailed in proving no infringement of the second. The district decided neither party was “the prevailing party” under Patent Act section 285 “because ‘both parties achieved some success and sustained some failure.’”

The district court erred in finding no prevailing party. SSL was the prevailing party because the actual relief on the merits—the judgment for damages against Citrix—materially altered the relationship between the parties in a way that directly benefited SSL. Remand was necessary to assess the amount of fees or costs to award to SSL.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP Chat Channel Logo

THIS WEEK 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. One of the key pending questions in patent law will be argued at the U.S. Supreme Court on Wednesday October 15. The question posed in Teva v. Sandoz is “Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires …, or only for clear error, as Rule 52(a) requires.” Our panelists, each of whom represents a client urging a different outcome, will review and analyze the hearing, and use the questioning of the justices to give predictions on where the court may head.

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, H-P, 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.

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.

IP IN THE MASS MEDIA

Converse Sues 31 Companies for Trademark Infringement

Shoemaker Converse has sued 31 companies including Walmart, Kmart, and Sketchers and filed a complaint with the U.S. International Trade Commission on trademark infringement related to Converse’s Chuck Taylor shoe. (New York Times)

MERSAN ABOGADOS JOINS IPO

Mersan, Abogados of Asunción, Paraguay (primary contact LORENA MERSAN) has become a law firm member of IPO.




Tuesday, October 14, 2014 12:35 pm

obama_official_portrait
President Barack Obama

OBAMA DISCUSSES IP AT TOWN HALL ON INNOVATION

Speaking last Thursday at a Town Hall on Innovation in Los Angeles, President BARACK OBAMA discussed intellectual property protection. He said, “When it comes to intellectual property protection, this is a trickier issue because you end up getting the tech community divided, people are on different sides of it.”

With regard to patents and copyrights, he said that finding “the right balance” is important to encourage and reward creators and innovators but not inhibit them. He said he would continue to work with Congress on patent reform. He also mentioned the importance of dealing with overseas IP theft through current enforcement mechanisms and joining multilateral agreements.

USPTO AND SMITHSONIAN COLLABORATE ON INNOVATION FESTIVAL

On November 1-2 the Smithsonian Institution and the U.S. Patent and Trademark Office will host an Innovation Festival at the Smithsonian Air and Space Museum in Washington, DC. Guests will have the opportunity to talk with inventors and the patent examiners who helped them with their inventions, learn the stories behind some of America’s breakthrough patented technologies, and try their hands at creating inventions of their own. For more information on the Innovation Festival, click here. For information on the ongoing innovation collaboration between the Smithsonian and the USPTO, click here.

USPTO AND CHINA LAUNCH ELECTRONIC EXCHANGE OF PATENT PRIORITY DOCUMENTS

On Friday the USPTO announced the launch of a new service that allows certain patent application documents to be electronically exchanged with China’s State Intellectual Property Office (SIPO). With the new service, applicants are able to provide permission for one office to obtain electronic copies of priority documents filed with the other office. The priority documents are exchanged through secure, electronic connections using the “Trilateral Document Access (TDA) Web Services.” The new service is free to applicants.

IPO COMMITTEE CALLS THIS WEEK:

Tuesday, October 14,

U.S. Post-Grant Patent Office Practice Committee – 12:00p.m. ET
Software and Business Methods Committee – 2:00p.m. ET
U.S. International Trade Commission Committee 00 4:00p.m. ET

Wednesday, October 15,

Standards Setting Committee – 1:30p.m. ET
Litigation Committee – 2:00p.m. ET

Thursday, October 16,

European Practice Committee – 12:00p.m. ET
Open Source Committee – 1:00p.m. ET
Industrial Designs Committee – 4:00p.m. ET

To join one of IPO’s 29 Standing IP Committees visit www.ipo.org/committeesignup.

IP IN THE MASS MEDIA

Bose and Beats Settle Patent Dispute

On Friday Bose Corp. and Beats Electronics agreed to settle a patent infringement suit and asked the U.S. International Trade Commission to suspend its investigation into a complaint filed by Bose alleging infringement of five patents for noise canceling headphones. (Reuters)

British MP Calls for Copyright Education in Schools

On Friday The Guardian reported that British Member of Parliament MIKE WEATHERLEY called for copyright education in schools, beginning in elementary school and continuing through university. Weatherley said “interaction with IP is a daily occurrence for many young people, and yet it is widely ignored within the education system.”