Intellectual Property Owners Association

Serving the Global Intellectual Property Community

ReadMore

Past Week’s Daily News™

Wednesday, 12 December, 2018 8:24 am

* * PATENT OWNER COLLATERALLY ESTOPPED FROM RAISING ISSUE ESSENTIAL TO PREVIOUS RULE 36 AFFIRMANCE OF IPR DECISIONS

VirnetX Inc. v. Apple, Inc., 17-2490 — On Monday in an opinion by Judge O’MALLEY, the Federal Circuit upheld USPTO inter partes review decisions finding VirnetX’s claims for a system and method for securing transmissions over a network invalid for obviousness. Apple argued that VirnetX was collaterally estopped from raising on appeal whether a prior art reference qualified as a printed publication under pre-AIA Patent Act § 102(b) because the Federal Circuit had previously upheld under Federal Circuit Rule 36 seven IPR decisions in which the issue was litigated.

The Federal Circuit agreed. According to its precedent, issue preclusion applies in Rule 36 judgments as long as the “‘[elements] of collateral estoppel are carefully observed.’” Here, resolution of the issue was “necessary or essential” to the Rule 36 judgment because “each ground of unpatentability that VirnetX appealed” relied on the reference.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP CHAMPION AND INVENTOR OF THE YEAR HONORED AT LAST NIGHT’S IPO EDUCATION FOUNDATION AWARDS DINNER

Last night the IPO Education Foundation held its annual IPO Foundation Awards Dinner at the National Building Museum in Washington, DC. The IPO Foundation presented the IP Champion Award to Founder and CEO of Masimo JOE KIANI. The Inventor of the Year Award was presented to Founder and CEO of Velodyne LiDAR DAVID HALL for his work on autonomous vehicles. The black-tie event was attended by about 450 members of the IP community and was emceed by actor, comedian, and television sitcom star JOHN O’HURLEY. For highlights from the evening visit us on Facebook or IPOEF.org.

Inventor of the Year David Hall IP Champion Joe Kiani and John O’Hurley

 

IP VIDEO CONTEST WINNERS VISIT CAPITOL HILL

Yesterday was special for IPO Education Foundation’s 2018 #IPVideoContest winners. Before being honored for their winning entries at the #IPOEFAwards, the winners also spent much of the day on Capitol Hill. Each went on a tour of the U.S. Capitol and met with staffers who work on IP policy issues every day. Subscribe to the IPO Foundation’s YouTube page to view the winning videos, which showcase the importance of IP rights in today’s world.

Rhys Kroehler and Rep. Pramila Jayapal Catherine Tomasello and Rep. Gus Bilirakis

 

IP IN THE MASS MEDIA

Souvenir Company, Balenciaga Settle Copyright Infringement Suit on New York Tote Bags

On Monday The Fashion Law blog reported that City Merchandise and Balenciaga reached a settlement in the New York souvenir company’s copyright infringement suit against the design house concerning its alleged copying of the designs of New York tote bags.




Tuesday, 11 December, 2018 8:19 am

* * EXTENDING PATENT’S TERM UNDER 35 U.S.C. § 156 DOES NOT PROHIBIT EFFECTIVELY EXTENDING TERM OF RELATED PATENT

Novartis AG v. Ezra Ventures LLC, 17-2284 — On 7 December in an opinion by Judge CHEN, the USPTO upheld a district court decision that Novartis’s claims were valid. The patent claimed a group of compounds including fingolimod, which is marketed under the brand Gilenya®. Novartis had secured five years of patent term extension under Patent Act section 156. Ezra argued that extending the patent’s term past the expiration of a Novartis patent on a method for administering the compound violated § 156 because it “effectively extended” that patent’s term. It also argued that the compound patent was invalid under the doctrine of obviousness-type double patenting.

The Federal Circuit said that § 156 mandates extending the term of “the patent of the patentee’s choice,” where the statutory requirements are met, and that “nothing in the statute restricts the patent owner’s choice.” That extending one patent’s term effectively extended a related patent’s term was “a permissible consequence of the legal status conferred upon the [] patent by § 156.” Further, “obviousness-type double patenting does not invalidate a validly obtained PTE.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

* ITC WAS REQUIRED TO ISSUE REMEDY, SUBJECT TO PUBLIC INTEREST CONCERNS

Laerdal Med. Corp. v. ITC, 17-2445 — On 7 December in an opinion by Judge O’MALLEY, the Federal Circuit reversed an ITC determination that Laerdal failed to plead its trade dress claims with adequate detail. After the ITC instituted an investigation on certain Laerdal’s claims, the respondents defaulted. The ITC granted Laerdal relief on its patent and trademark claims but issued no relief on its trade dress and copyright claims. Laerdal argued that once the ITC found all respondents in default, it was required to accept facts pleaded in the complaint as true and to issue a remedy, subject only to public interest concerns.

The Federal Circuit agreed. “Having approved Laerdal’s trade dress claims without any additional questioning and instituted an investigation thereof … the [ITC] cannot now, post-institution and without opposition or appearance from respondents, assert insufficient pleading as a basis for denying relief.” The Court remanded for the ITC to determine the appropriate remedy, subject to public interest concerns.
(1 to 4 stars rate impact of opinion on patent & trademark law)

FOLLOW TONIGHT’S #IPOEFAwards ON SOCIAL MEDIA

The IPO Education Foundation Awards Dinner is tonight in Washington, DC. Don’t miss a minute of this important night in #IP—follow the hashtag #IPOEFAwards on Facebook, Twitter and Instagram to keep up with the day’s events.

IP IN THE MASS MEDIA

China Bans Sales of Older Apple iPhones Found to Infringe Qualcomm Patents

Yesterday the Wall Street Journal reported that a court in China ordered Apple to cease sales of older iPhones found to infringe Qualcomm patents on photo editing and swiping on a touch-screen.

Alice + Olivia Sues Betsey Johnson on Use of “StaceFace” Image

Yesterday The Fashion Law blog reported that Alice + Olivia sued Betsey Johnson and its parent company Steve Madden for copyright and trademark infringement, claiming that the fashion company used an image on handbags that was confusingly similar to its likeness of A+O’s founder STACY BENDET’s face known as the “StaceFace” design.

THIS WEEK ON IPO’S IP CHAT CHANNEL™: ENFORCING PATENTS: GLOBAL STRATEGIES AND TACTICS

Tune in to the IP Chat Channel™ on Thursday, 13 Dec at 2:00p.m. ET to learn about patent owners with international patent portfolios who have decided to litigate in other countries they see as more patent friendly instead of, or in addition to, pursuing litigation the U.S. The panelists are BORIS TEKSLER (Conversant IP), a U.S.-based IP executive who has carried out a successful patent enforcement campaign in Europe; STEVEN CARLSON (Robins Kaplan LLP), a litigator based in Silicon Valley with experience in European courts on behalf of U.S. clients; and JOHANNES HESELBERGER (Bardehle Pagenberg Partnerschaft MbB), a leading German patent litigator with many multinational clients. Drawing on their first-hand experiences, they will discuss:

• Decisions that must be made before launching foreign litigation;
• Important differences between legal systems;
• Using foreign litigation to encourage global settlement;
• What it takes to enforce an injunction in Germany;
• Whether European decisions have any impact on U.S. courts; and
• The risk that foreign litigation could backfire in the U.S.

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




Monday, 10 December, 2018 8:22 am

* * ENFORCEMENT LETTERS CAN PROVIDE BASIS FOR JURISDICTION

Jack Henry & Assocs., Inc. v. Plano Encryption Techs., 16-2700 — On Friday in an opinion by Judge NEWMAN the Federal Circuit overturned a district court’s finding of lack of jurisdiction. PET sent letters to banks, identifying its patents, alleging infringement, and inviting non-exclusive licenses. Citing Avocent Huntsville Corp. v. Aten Int’l Co., the district court held that PET’s contacts with the district did not subject it to personal jurisdiction.

The Federal Circuit disagreed, saying, “[o]ur decision in Avocent did not establish the generalization that [a] letter charging infringement can never provide specific jurisdiction, and did not depart from due process precedent on this aspect of venue.” The district “has a substantial interest, for PET has charged infringement and threatened litigation against numerous banks residing and conducting business in [it].” Additional views were filed by Judge STOLL, joined by Judge WALLACH.
(1 to 4 stars rate impact of opinion on patent & trademark law)

* * LATER ISSUED, EARLIER EXPIRING POST-URAA PATENT WAS NOT A PROPER OBVIOUSNESS-TYPE DOUBLE PATENTING REFERENCE FOR RELATED PRE-URAA PATENT

Novartis Pharm. Corp. v. Breckenridge Pharm., 17-2173 — On Friday in an opinion by Judge CHEN, the Federal Circuit overturned a district court decision that Novartis’s claims were invalid. The patent, which was filed before the passage of the Uruguay Round Agreements Act of 1994 (URAA) changed the term of a U.S. patent from 17 years post-issuance to 20 years from the earliest effective filing date, claimed the compound everolimus. Breckenridge argued that a later-filed, later-issued but earlier expiring post-URAA Novartis patent claiming methods of treatment and specific pharmaceutical compositions rendered the claims invalid under the doctrine of obviousness-type double patenting.

The Federal Circuit disagreed, saying that “looking to patent issuance dates pre-URAA serves as a reliable guide for assessing whether a patent may serve as a double patenting reference against another patent.” Here, the later-filed but earlier-expiring post-URAA patent was not a double patenting reference for the earlier-filed but later-expiring pre-URAA patent because it had not issued before the pre-URAA patent. This result was consistent with Congress’ desire for “patent owners who filed patent applications before the transition date to the new patent term law to enjoy the maximum possible patent term available for their resulting patents under either patent term regime.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP IN THE MASS MEDIA

Designer Sues Snowboard Company for Infringing Design Patent on No-Slip Mittens

Today Canada’s CBC News reported that designer ANNA MARIA MOUNTFORT sued Burton Snowboards for patent infringement, claiming that the snowboard company’s Minishred mittens copied her design for no-slip children’s mittens.

Off-White Sues Children’s Clothing Brand for Trademark Infringement

On Friday The Fashion Law blog reported that Off-White sued Brooklyn Lighthouse for trademark infringement, claiming that the children’s clothing brand sold products featuring its logo and other trademarks without authorization.




Friday, 7 December, 2018 8:17 am

IP IN THE MASS MEDIA

NRA Agrees to Remove Chicago’s Bean-Shaped Sculpture from Promotional Video

Yesterday the Huffington Post reported that the National Rifle Association agreed to remove images of Chicago’s iconic bean-shaped sculpture “Cloud Gate” from a video advertisement after being sued by sculptor ANISH KAPOOR for copyright infringement.

Vineyard Vines Prevails in Trademark Infringement Suit on Whale Design

Yesterday Women’s Wear Daily reported that MARGARET JOSEPHS was found liable for infringing Vineyard Vines’s whale design by featuring it on clothing and accessories. The owner of Macbeth Collection and cast member of The Real Housewives of New Jersey was ordered to pay more than $1 million in damages.

Creator of Wild America Sues National Geographic for Copyright Infringement

Yesterday the Denver Post reported that wildlife television host MARTY STOUFFER sued National Geographic for copyright infringement, claiming that the organization’s television programs copy content from his program Wild America.




Thursday, 6 December, 2018 8:12 am

PPAC DELEGATION VISITS IPO

Yesterday, in follow-up to meetings between IPO and the Patent Protection Association of China (PPAC) that occurred during IPO’s Innovation Dialogue Trip to Asia, a PPAC delegation led by its President FENGCHAO MENG met with IPO in Washington, D.C. IPO Executive Director MARK LAUROESCH and IPO Senior Counsel, International and Legal Affairs, TOM VALENTE participated in the meeting. Topics discussed included the structure of PPAC, developments in China’s IP system such as the new State Administration for Market Regulation (SAMR) and the creation of a new IP appellate tribunal within China’s Supreme People’s Court, the 4th amendment of the Patent Law, inventor remuneration, patent law harmonization, and future cooperation between IPO and PPAC.

Members of the PPAC and IPO Delegations

USPTO ISSUES FINAL RULE ON INTERNATIONAL TRADEMARK CLASSIFICATION CHANGES

In a Federal Register notice published yesterday, the U.S. Patent and Trademark Office issued a final rule to incorporate changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The final rule becomes effective on 1 January 2019.

The U.S. is a signatory to the Nice Agreement, which is a multilateral treaty administered by the World Intellectual Property Organization (WIPO). The notice explains that “[t]he annual revisions contained in this final rule consist of modifications to the class headings that were incorporated into the Nice Agreement during the 28th Session of the Committee of Experts.”

TODAY ON IPO’S IP CHAT CHANNEL™: FRAND: THE LATEST DEVELOPMENTS AND PREDICTING THE FUTURE SEP LANDSCAPE

Tune in the IP Chat Channel™ today at 2:00p.m. ET to hear a panel of patent owners and implementers discuss the evolving jurisprudence surrounding standard essential patents (SEPs) in the U.S. and elsewhere. Our panelists are LOGAN BREED (Hogan Lovells LLP), DAVE DJAVAHERIAN (PacTech Law) and MATTEO SABATTINI (Ericsson.)

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

China Announces New Penalties for Stealing IP

Earlier this week Bloomberg reported on China’s announcement that it will be imposing new penalties on those who steal intellectual property. The penalties would include limiting perpetrators’ access to state funding and identifying them on a website.

Cheryl & Co. Sues Founder for Trade Secret Misappropriation

On Tuesday the Columbus Dispatch reported that Cheryl & Co. sued founder CHERYL KRUEGER, claiming that her new cookie company C. Krueger’s uses recipes and techniques that are protected trade secrets.