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IPO Daily News™

Monday, 11 February 2019 7:48 am

*FEDERAL CIRCUIT VACATES JUDGMENT OF NONINFRINGEMENT BASED ON ERRONEOUS CLAIM CONSTRUCTION

Continental Circuits LLC v. Intel Corp., 18-1076 — On Friday in an opinion by Judge LOURIE, the Federal Circuit vacated a district court judgment of noninfringement and remanded. Continental’s patents were directed to a “’multilayer electrical device . . . having a tooth structure’ and methods for making the same.” Continental argued that the district court erred in interpreting claim terms to require that the dielectric material involved be “produced by a repeated desmear process.” The Federal Circuit agreed, saying that none of the statements in the specification rose to the level of a clear and unmistakable disclaimer, and that disclosing only one embodiment, without more, did not result in a clear disavowal of claim scope.
(1 to 4 stars rate impact of opinion on patent & trademark law)  

IPO COMMENTS ON COUNTRIES WITH INADEQUATE IP PROTECTION

Last week IPO Executive Director MARK LAUROESCH submitted comments on behalf of IPO for the U.S. Trade Representative’s annual Special 301 Review. IPO’s 27-page letter commented on numerous inadequate IP policies in specific countries and in international fora. The purpose of the Special 301 Review is to obtain information about countries that deny adequate and effective protection of intellectual property rights or deny fair and equitable market access to U.S. entities that rely on IP protection. A Special 301 Subcommittee will hold a public hearing, at which IPO intends to testify, on 27 February. USTR is expected to publish the 2019 Special 301 Report on or about 26 April.

IPO’s International Patent Law & Trade Committee, with help from other IPO Standing IP Committees, assisted with preparing the comments. Thank you to that Committee’s Chair STEPHEN W. BAUER (Medtronic, Inc.) and former Committee Co-Chair ANOUK BOON (Shell International B.V.) for spearheading this effort.

THIS WEEK’s BLACK HISTORY IN IP SPOTLIGHT: THOMAS L. JENNINGS

Photo Credit: Simon Law

IPO Education Foundation is celebrating Black History Month by showcasing notable inventors each Monday in February. THOMAS L. JENNINGS (1791–1856) was the first African-American to be granted a patent on 3 March 1821 (U.S. patent 3306x). In his early 20s he became a tailor but then opened a dry cleaning business in New York City. While running his business, Jennings developed “dry-scouring” and patented the process that made modern-day dry cleaning possible. His patent generated considerable controversy during this period because slaves at the time could not patent their own inventions. This regulation dated back to the U.S. patent laws of 1793. The regulation was based on the legal presumption that “the master is the owner of the fruits of the labor of the slave both manual and intellectual.” Thomas Jennings, however, was born a free man and thus was able to gain exclusive rights to his invention and profit from it. In 1861 patent rights were finally extended to slaves, 5 years after Jennings’ death.  (Source: ReunionBlackFamily.com via SmithsonianMag.com)

IP IN THE MASS MEDIA

U.S.-China Trade Talks to Focus on China’s IP Policies

Last week Reuters reported that trade talks that resumed today in Beijing between the U.S. and China are expected to focus on China’s intellectual property policies.

German Court Finds that Stream-Ripping Site Infringed Musician’s Copyright

Last week Billboard reported that the Regional Court of Munich ruled that stream-ripping website MusicMonster.fm was responsible for copyright infringement after making musician JENNIFER ROSTOCK’s album available for downloads

THIS WEEK ON IPO’S IP CHAT CHANNEL™: TECHNOLOGY TRANSACTIONS AFTER HELSINN: NAVIGATING ISSUES SURROUNDING THE ON-SALE BAR

Tune in to the IP Chat Channel™ on Wednesday at 2:00p.m. ET to explore the impact of recent U.S. Supreme Court decision in Helsinn v. Teva and other cases related to the on-sale bar, such as Barry v. Medtronic, a recent Federal Circuit opinion subsequent to the Helsinn decision, and the en banc Federal Circuit decision in Medicines Co. v. Hospira. Our panelists — in-house counsel JENNIFER CARNAHAN (Dow Chemical Co), tech transaction specialist RANDALL COLSON (Haynes & Boone LLP), and litigator ROB ISACKSON (Leason Ellis) – will provide important takeaways for counsel. These cases highlight the importance of carefully evaluating the structure of technology-driven investments, joint ventures, joint development agreements, and other supply arrangements to minimize the likelihood that a conditional transaction will be characterized as an offer to sell a later-patented invention.

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