Intellectual Property Owners Association

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Past Week’s Daily News™

Monday, 25 June, 2018 8:14 am

IPO PUBLISHES TOP 300 PATENT OWNERS LIST

This morning IPO published its 2017 Top 300 Patent Owners List. The list reports the 300 companies that received the most U.S. utility patents in calendar year 2017. Subsidiary company patents are attributed to the total for the parent company if the parent requested that the totals be combined. The five companies with the most patents in 2017 are: International Business Machines Corp. (8,996), Samsung Electronics Co., Ltd. (5,810), Intel Corp. (3,726), Canon K.K. (3,664), and Alphabet, Inc. (3,065).

Andrei Iancu

USPTO DIRECTOR TO GIVE KEYNOTE ADDRESS AT IPO ANNUAL MEETING

Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office ANDREI IANCU will give the keynote address on Monday, 24 September during the IPO Annual Meeting. The meeting will be held at the Hyatt Regency Hotel in Chicago, Illinois from 23-25 September. For more information and to register, visit www.ipo.org/am2018.

IPO ATTENDS WHITE HOUSE SIGNING CEREMONY FOR TEN MILLIONTH U.S. PATENT

Last week U.S. President DONALD TRUMP signed the ten millionth U.S. patent at the White House. During the signing ceremony, President Trump congratulated inventor JOSEPH MARRON for his invention and praised all the inventors of the 999,999 patents that had come before for their creativeness and innovative contributions. Trump highlighted the importance of the patent system to the success and growth of the U.S. economy. Mr. Marron, an employee of IPO member Raytheon Co., was joined at the ceremony by Raytheon CEO THOMAS KENNEDY, USPTO Director ANDREI IANCU, Secretary of Commerce WILBUR ROSS, IPO Executive Director MARK LAUROESCH, and several other government agency representatives.

President Donald J. Trump signs the 10 millionth United States patent Tuesday, June 19, 2018, for inventor Joseph Marron and patent assignee Raythin Company for a “Coherent LADAR using intra-pixel quadrature detection which improves laser detection and ranging, in the Oval Office of the White House. (Official White House photo by Shealah Craighead)

 

****U.S. SUPREME COURT HOLDS PATENT ACT SECTION 271(F) ALLOWS PATENT OWNERS TO RECOVER LOST FOREIGN PROFITS

WesternGeco, LLC v. ION Geophysical Corp. — On Friday, as reported in a special edition of the Daily News, the U.S. Supreme Court overturned a Federal Circuit decision vacating the award of lost foreign profits to WesternGeco. The patents claimed systems for searching beneath the ocean floor for oil and gas. Based on the presumption against territoriality, the Federal Circuit found Patent Act section 271(f) did not allow patent owners to damages for lost profits outside the U.S.

The Supreme Court found that the presumption against extraterritoriality did not apply because the “conduct relevant to the statutory focus was domestic.” The purpose of Patent Act section 284, which governed patent damages, was “to ‘affor[d] patent owners complete compensation’ for infringements.” The infringement at issue, ION’s exportation of components from the U.S. for assembly abroad, occurred within the U.S., and “the lost-profits damages that were awarded to WesternGeco were a domestic application of § 284.” The Court’s holding is consistent with IPO’s amicus brief in the case, which argued that lost profits were available to compensate for infringement under 35 U.S.C. §271(f), including foreign lost profits, when the patentee proved the acts of domestic infringement caused the foreign lost profits and that the Federal Circuit applied an unduly rigid rule on the sole basis that extraterritorial activity was involved.

Justice GORSUCH filed a dissenting opinion joined by Justice BREYER.
(1 to 4 stars rate impact of opinion on patent & trademark law)




Friday, 22 June, 2018 11:43 am

****U.S. SUPREME COURT HOLDS PATENT ACT SECTION 271(F) ALLOWS PATENT OWNERS TO RECOVER LOST FOREIGN PROFITS

WesternGeco, LLC v. ION Geophysical Corp. — Today in an opinion by Justice THOMAS, the U.S. Supreme Court overturned a Federal Circuit decision vacating the award of lost foreign profits to WesternGeco. The patents claimed systems for searching beneath the ocean floor for oil and gas. Based on the presumption against territoriality, the Federal Circuit found Patent Act section 271(f) did not allow patent owners to damages for lost profits outside the U.S.

The Supreme Court found that the presumption against extraterritoriality did not apply because the “conduct relevant to the statutory focus was domestic.” The purpose of Patent Act section 284, which governed patent damages, was “to ‘affor[d] patent owners complete compensation’ for infringements.” The infringement at issue, ION’s exportation of components from the U.S. for assembly abroad, occurred within the U.S., and “the lost-profits damages that were awarded to WesternGeco were a domestic application of § 284.” The Court’s holding is consistent with IPO’s amicus brief in the case, which argued that lost profits were available to compensate for infringement under 35 U.S.C. §271(f), including foreign lost profits, when the patentee proved the acts of domestic infringement caused the foreign lost profits and that the Federal Circuit applied an unduly rigid rule on the sole basis that extraterritorial activity was involved.

Justice GORSUCH filed a dissenting opinion joined by Justice BREYER.
(1 to 4 stars rate impact of opinion on patent & trademark law)




Friday, 22 June, 2018 8:20 am

IPO COMMITTEE MEMBERS MEET WITH USPTO OFFICIALS

IPO committees provide members opportunities to meet and discuss intellectual property issues with the U.S. Patent and Trademark Office and other government agencies. Yesterday members of IPO’s U.S. Patent Office Practice Committee held an annual meeting with USPTO officials, including Commissioner for Patents DREW HIRSHFELD, to discuss issues related to patent prosecution and USPTO administration. Some specific topics discussed included § 101 guidelines, P3 program, quality initiatives, rejections based on the judicially-approved doctrine of improper Markush grouping, examination time goals, and petitions relating to premature final rejections.

Last week members of IPO’s U.S. Trademark Office Practice Committee held an annual meeting with USPTO officials, including Commissioner for Trademarks MARY DENNISON, to discuss trademark prosecution issues. Some specific topics discussed include “relevant period” language in proof of use for post-registration audit office actions, allowing applicants to withdraw an unacceptable specimen and return to intent to use status while paying the requisite extension fees, and the continued relevance of “Mucky Duck evidence.”

U.S. COPYRIGHT OFFICE EXTENDS TIME TO COMMENT ON PROPOSED NEW FEE SCHEDULE

As previously reported, on the 24th of May, the U.S. Copyright Office published a notice in the Federal Register seeking comments on a proposed new schedule for Copyright Office services related to the registration of claims, recordation of documents, and licensing division services, among others. Yesterday, the Office issued a Federal Register notice extending the time to comment on the proposed new fee schedule until the 21st of September. IPO’s Copyright Law Committee is studying the notice

IP IN THE MASS MEDIA

Times Reports on Theft of Micron’s IP by Taiwanese Chip Maker

Today the New York Times reported on the alleged theft of Micron Technology’s microchip technology by Taiwanese chip maker UMC and China’s Fujian Jinhua Integrated Circuit and a subsequent patent infringement lawsuit brought by the companies against Micron in China.

Blockchain Developers Seek to Avoid “Patent Trolls”

Yesterday Bloomberg Law’s “Big Law Business” published an article discussing defensive strategies being employed by companies developing blockchain technology—such as cross-licensing, patent pools, and patent pledges—to prevent the rise of “patent troll” and other patent infringement litigation on the technology.




Thursday, 21 June, 2018 8:21 am

Federal Circuit Summaries Logo

 * *USPTO ERRED IN ASSESSING WHETHER TERM IN MARK WAS GENERIC

Royal Crown Co., Inc. v. The Coca-Cola Co., 16-2375 — Yesterday in an opinion by Judge O’MALLEY, the Federal Circuit vacated the USPTO’s dismissal of Royal Crown’s trademark opposition. Coca-Cola sought to register trademarks for “various soft drinks and sports drinks including the term ZERO.” Royal Crown argued that Coca-Cola should be required to disclaim the term ZERO apart from the marks as a whole because ZERO was generic for the subset of beverages with few or no calories and was merely descriptive of Coca-Cola’s products.
The Federal Circuit found that the USPTO erred by considering only whether the term was generic for the entire genus of goods identified and not “whether the relevant consuming public would consider the term ZERO to be generic for … the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates.” The USPTO also erred by failing to “make any finding as to the degree of descriptiveness conveyed by the term ZERO in the marks” before concluding that the mark had acquired distinctiveness.
(1 to 4 stars rate impact of opinion on patent & trademark law)

REGISTER FOR IPO’S ANNUAL MEETING – 23-25 SEPTEMBER IN CHICAGO, ILLINOIS

The IPO Annual Meeting offers a mix of educational programs, committee meetings, networking opportunities and exhibits. Concurrent sessions on patent and trademark/copyright topics are offered throughout the meeting, including an ethics presentation. We are delighted to announce that this year’s keynote speaker will be Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office ANDREI IANCU.

Patent topics include:

• Patent Case Law Update
• AIA Estoppel
• The Intersection of IP and Open Source
• Navigating the E-Discovery Minefield
• EPO organized Workshop on Business Methods
• AIA Update
• Machine Learning, Knowledge Management, and Blockchain
• Attorney Client Privilege
• Patent Eligibility
• Efficiently Prosecuting Patent Applications at the USPTO
• Strategy and Value Behind IP Audits

Trademark/Copyright topics include:

• Trademark Case Law Update
• Copyright Case Law Update
• Artificial Intelligence
• Protecting Famous Marks Internationally
• Trademark Congestion
• The Impact of Privacy Laws on Trademark Enforcement
• Managing Brand Reputation in the Age of Viral Media
• Social Media Risks
• Protecting Marks in the Modern World

Join your colleagues at a number of networking functions including the Sunday welcome reception; Monday morning Fun Run; and Monday dinner reception at Navy Pier.

SECTION 301 INVESTIGATION: USTR NARROWS PREVIOUSLY PROPOSED LIST OF PRODUCTS SUBJECT TO ADDITIONAL 25% TARIFF BUT PROPOSES ADDITIONAL PRODUCTS FOR SAME TREATMENT

As previously reported, on 6 April the Office of the U.S. Trade Representative (USTR) proposed an additional duty of 25% on a list of products from China pursuant to its determination under section 301 that “the acts, policies, and practices of the Government of China related to technology transfer, intellectual property, and innovation covered in the investigation are unreasonable or discriminatory and burden or restrict U.S. commerce.” The value of the list was approximately $50 billion in terms of estimated annual trade value for calendar year 2018.

Yesterday USTR issued a Federal Register notice narrowing the list to fewer tariff subheadings with an approximate annual trade value of $34 billion, based upon review of public comments and testimony and the extent to which the list included products containing industrially significant technology. USTR will establish a process by which U.S. stakeholders can request that particular products be excluded from the additional duties. It also identified additional tariff subheadings that would be appropriate for an additional 25 percent ad valorem duty, with an approximate annual trade value of $16 billion, which it noted would maintain the effectiveness of a $50 billion trade action. Written comments on the additional tariff subheadings are due 23 July, and a public hearing will be held on 24 July.

IP IN THE MASS MEDIA

Artist Who Created Chicago’s Bean-Shaped Sculpture Sues NRA for Copyright Infringement

Yesterday NBC Chicago reported that artist Anish Kapoor, who created Chicago’s iconic bean-shaped sculpture “Cloud Gate,” sued the National Rifle Association for copyright infringement. Kapoor claims the group used images of the sculpture in a video advertisement without authorization.




Wednesday, 20 June, 2018 8:06 am

USPTO ISSUES PATENT NUMBER 10 MILLION

Yesterday the USPTO issued patent number 10 million to IPO member Raytheon Company. The inventor is JOSEPH MARRON. The patent is for “coherent ladar using intra-pixel quadrature detection” and has applications in a wide range of fields. “This patent represents one of ten million steps on a continuum of human accomplishment launched when our Founding Fathers provided for intellectual property protection in our Constitution,” said USPTO Director ANDREI IANCU. “Some of the greatest leaps humanity has made have been fueled by our greatest inventors, Americans who have changed the course of history with their brilliance and dogged perseverance.” As previously reported in the Daily News, earlier this year the USPTO revealed a new design for the patent grant cover, and patent number 10 million is the first patent to use the new cover.

The USPTO celebrated the issuance of the 10 millionth patent in a White House signing ceremony with President TRUMP in the Oval Office and with a reception last evening at Mt. Vernon’s Gristmill and Distillery near George Washington’s Mt. Vernon estate. The reception was attended by Senator CHRIS COONS (D-Del.), Representative DARRELL ISSA (R-Calif.), Secretary of Commerce WILBUR ROSS, Director Iancu, and members of the IP community.

Iancu & Ross
USPTO Director Iancu and Secretary of Commerce Wilbur Ross sign proclamation celebrating 10 millionth patent

 

Federal Circuit Summaries Logo

* * USPTO NEED NOT CONSIDER UNPATENTABILITY OF CLAIMS OVER REFERENCE THAT SUPPORTED DENIAL OF MOTION TO AMEND BUT WAS NOT RAISED IN IPR PETITION

Sirona Dental Sys. GMBH v. Institut Straumann AG, 17-1341 — Yesterday in an opinion by Judge MOORE, the Federal Circuit upheld an USPTO inter partes review determination that two Sirona’s claims were nonobvious over two asserted references. Sirona’s patent claimed a method for producing a drill template to precisely place a dental implant. Institut Straumann argued that the USPTO “should have applied findings from its analysis of Sirona’s contingent motion to amend” that the USPTO denied.

The Federal Circuit disagreed. In denying Sirono’s motion to amend, the USPTO had determined that the claims were not patentable in light of references not asserted in Institute Straumann’s petition. The Court said Institut Straumann was “in essence, attempting to add references to the ground of unpatentability put forth in their petition” that the USPTO was not required to address. The Court vacated the denial of the motion to amend because the pre-Aqua Products decision “improperly placed the burden on Sirona to prove that the claims were patentable.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Chat Channel Logo with TM

NEXT WEEK ON IPO’S IP CHAT CHANNEL™: WILLFULNESS AFTER HALO

Tune in to the IP Chat Channel™ on Tuesday, 26 June at 2:00p.m. ET for Willfulness After Halo, a discussion of how corporate strategy and litigation tactics have changed since the Supreme Court decision two years ago. Enhanced damages for patent infringement are no longer a rarity after the Court lowered the bar for alleging and proving willfulness—in just the last few months judges in the Northern District of Illinois and the Eastern District of Texas awarded multi-million-dollar enhanced damages after jury verdicts of willfulness.

The litigator panelists, KATHI VIDAL (Winston & Strawn LLP) and RICHARD MEGLEY (Lee Sheikh Megley & Haan LLC), have had recent courtroom success involving willfulness issues. Joining them is Prof. THOMAS COTTER (University of Minnesota School of Law), a leading academic expert on patent law and damages. They will analyze recent district court and Federal Circuit case law and discuss:

• The current pleading standard for willfulness, including proving knowledge of the patent or willful blindness and the impact of letters of counsel;
• The effect of Halo on the availability of pre- and post-suit willfulness and the timing of the notice of infringement; and
• The relevance of the Read factors for egregious behavior in light of the fact that enhancement needn’t always follow a finding of willfulness.

IP Chat Channel™ webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

Former C.I.A. Agent Charged with Leaking Classified Documents Also Faces Copyright Infringement Charges

On Monday U.S. federal prosecutors charged a former C.I.A. software engineer with illegally obtaining classified information providing it to WikiLeaks. He was also charged with criminal copyright infringement.

Forbes Discusses Importance of Protecting IP to Startups

On Monday Forbes published its ninth post in a series called “Twenty Tips for Startup Success: Protect your Intangible Asserts.” The piece makes recommendations for businesses concerning protecting intellectual property. “IP protection might not be the sexiest part of running a business, but it can be the most important given its centrality to the value of any business.”