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Past Week’s Daily News™

Tuesday, 19 March, 2019 8:07 am

PTAB PROVIDES GUIDANCE ON PRESENTING LIVE TESTIMONY AT ORAL ARGUMENT

Yesterday the USPTO’s Patent Trial and Appeal Board designated as “precedential” two panel opinions concerning live testimony at oral argument. In DePuy Synthes Prods., Inc. v. Medidea, L.L.C., the panel denied the patent owner’s request to allow oral testimony by the inventor. Because he had not previously provided declaration evidence and was not listed as counsel of record, his testimony would be “new evidence” that is inadmissible at oral argument.

In contrast, the panel in K-40 Elecs., LLC v. Escort, Inc. granted the patent owner’s request to present the inventor’s live testimony at oral argument. PTAB “does not envision that live testimony will be necessary at many oral arguments” and will consider requests on a case-by-case basis. Factors that might be considered include the importance of the testimony and the Board’s need to assess the credibility of a fact witness. Here, the patent owner sought to rely on the inventor’s testimony to antedate the references asserted against the patent by the petitioner, so the testimony was likely to be case-dispositive.

IPO COMMENTS ON PROPOSED U.S. COUNSEL REQUIREMENT FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS

Yesterday Executive Director MARK LAUROESCH submitted IPO’s response to the USPTO’s request for comments on the “Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants.” The proposed rulemaking would require applicants, registrants, or parties to a proceeding whose domicile or principal place of business is not located within the U.S. or its territories to be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the U.S. IPO supports this rule as a measure to protect the integrity of the trademark register, and it provided comments in the letter concerning options being considered by the USPTO to implement such a rule. IPO’s U.S. Trademark Office Practice Committee (Chair: JENNY GREISMAN, IBM Corp.; Vice Chairs: LAURIEL DALIER, Sterne, Kessler, Goldstein & Fox, PLLC; and ALLISON STRICKLAND RICKETTS, Fross Zelnick Lehrman & Zissu, PC; Secretary: JULIA BELAGORUDSKY, Fross Zelnick Lehrman & Zissu, PC) assisted with preparing the comments.

MANAGE YOUR MEMBERSHIP BENEFITS

Are you using your IPO benefits to their fullest potential? Are you new to IPO? Would you like to get your staff more involved? Join us for a 30-minute IPO membership orientation call. Calls for corporate and small business members are held on the 3rd Tuesday of each month at 2:00p.m. ET. Calls for law firm members are held on the 4th Tuesday of each month at 2:00p.m. ET. Contact Lorna Soderberg for further information or to participate.

IP IN THE MASS MEDIA

Apple Infringed Qualcomm Patents; Jury Returns $31 Million Verdict

On Friday a federal jury found that Apple Inc. owed Qualcomm $31 million for infringing its patents on chip technology that allows mobile devices to connect to networks quickly and extends battery power. (Associated Press)

Maker of Dum-Dums Wins Temporary Injunction in Trademark Suit against Tootsie Roll

Last week the Chicago Tribune reported that a federal judge in Ohio granted a temporary injunction requiring Tootsie Roll Industries to change the packaging used for its Charms Mini Pops during the pendency of a trademark infringement suit filed against it by Spangler Candy, which makes Dum-Dums lollipops.




Monday, 18 March, 2019 8:17 am

* * INFRINGEMENT COMPLAINT PLAUSIBLY ESTABLISHED THAT CLAIMS WERE DIRECTED TO ELIGIBLE SUBJECT MATTER

Natural Alts. Int’l v. Creative Compounds, LLC, 18-1295 — On Friday in an opinion by Judge MOORE, the Federal Circuit reversed a district court judgment that Natural Alternatives’ claims were directed to ineligible subject matter under Patent Act section 101. The patents related to “the use of beta-alanine in a dietary supplement to ‘increas[e] the anaerobic working capacity of muscle and other tissue.’” The district court found that Natural Alternatives’ method claims were directed to natural laws, product claims were directed to natural phenomena, and manufacturing claims were directed to a natural law or product and lacked an inventive concept to turn them into eligible subject matter.

The Federal Circuit said judgment on the pleadings was inappropriate because factual allegations in the complaint were sufficient to establish the plausible eligibility of the claims. The method claims were treatment claims “directed to patent eligible new ways of using an existing product, beta-alanine.” The product claims were “directed to specific treatment formulations that incorporate natural products,” not to the natural products themselves. The manufacturing claims were “directed to the manufacture of a human dietary supplement with certain characteristics.” Judge REYNA dissented, arguing that the majority’s analysis relied on an erroneous claim construction.
(1 to 4 stars rate impact of opinion on patent & trademark law)

PTAB PROVIDES GUIDANCE ON SINGLE PARTY AND ISSUE JOINDER

Last week the USPTO Patent Trial and Appeal Board’s “Precedential Opinion Panel” designated as “precedential” a decision in Proppant Express Investments, LLC v. Oren Techs., LLC clarifying PTAB’s authority under Patent Act § 315(c) to join a petitioner to a proceeding in which it is already a party and to allow joinder of new issues in a proceeding and stating that a § 315(d) time bar is one of a number of factors to be considered when deciding whether to exercise its discretion to join a party or issue under § 315(c). Further, the POP determined that “the Board will exercise this discretion only in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party.”

(Photo Credit: Joe Mabel)

WOMEN’S HISTORY IN IP SPOTLIGHT: DIANE WARREN

IPO Education Foundation is celebrating Women’s History Month by showcasing notable IP owners each week in March. DIANE WARREN has written or co-written nearly 2,000 songs registered with the Copyright Office, including songs performed by Aerosmith and WHITNEY HOUSTON, among many others. Some of her songs include “If You Asked Me To,” which has been recorded by CELINE DION and PATTI LABELLE, and “I Don’t Wanna Miss A Thing” performed by Aerosmith for the movie Armageddon and recorded by country artist MARK CHESNUTT. She been named ASCAP Songwriter of the Year six times and Billboard’s Songwriter of the Year four times, and she has been nominated for an Oscar 10 times.

U.S. COPYRIGHT OFFICE SEEKS COMMENTS ON DRAFT UPDATE TO COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES

On Friday the U.S. Copyright Office issued a Federal Register notice seeking comments on a public draft of an update to its administrative manual, the Compendium of U.S. Copyright Office Practices, Third Edition. The Notice explains that the Compendium serves as ‘‘both a technical manual for the Copyright Office’s staff, as well as a guidebook for authors, copyright licensees, practitioners, scholars, the courts, and members of the general public.’’ Written comments in response to the Notice are due on 14 May 2019. IPO’s Copyright Law & Anti-Piracy Committee will study the draft.

THIS WEEK ON IPO’S IP CHAT CHANNEL™: SEPS AND AUTOS: LESSONS FOR THE INTERNET OF THINGS

Tune in to the IP Chat Channel™ on Thursday, 21 March at 2:00p.m. ET for a discussion about the important and evolving legal concepts that inform negotiations between telecom SEP owners and carmakers, as well practical ideas for improving approaches to licensing discussions and avoiding litigation. As cars quickly adopt connectivity, 5G SEP owners and automakers are experiencing a collision in business and IP cultures. The lessons that emerge will be useful for other industries that want to become part of the Internet of Things (IoT).

Our panelists are BILL HARMON (Uber), the director of IP at the leading ride-sharing company; LUKE MCLEROY (Avanci), the senior vice president of a patent pool of SEP owners geared to autos and the IoT; and JORGE CONTRERAS (University of Utah), a law professor who specializes in standards and IP.

Among the topics to be discussed:

• Can SEP owners vary royalties based on device characteristics, or the level in the distribution chain, and remain compliant with FRAND?
• How to establish a FRAND royalty in a new market with no comparable licenses
• The strengths and weaknesses of patent pool solutions
• The possible use of third-party experts to opine on the essentiality of patents included in standards
• How negotiation issues between SEP owners and carmakers differ from issues involving smartphones
• Other lessons applicable to the IoT.

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




Friday, 15 March, 2019 8:09 am

IPO ANNOUNCES CREATION OF DIVERSITY & INCLUSION COMMITTEE

IPO is pleased to announce the creation of a permanent Diversity & Inclusion Committee. President HENRY HADAD (Bristol-Myers Squibb) has appointed SHRUTI COSTALES (HP Inc.) as the Chair and HASSEN SAYEED (O’Melveny & Myers LLP) as the Vice Chair. The Committee’s mission will be to establish organizational focus around diversity and inclusion by recommending policy to the IPO Board, ensuring programs and speaker panels are diverse, ensuring that Standing IP Committees incorporate IPO’s Membership and Values into their activities, and overseeing the creation and maintenance of resources groups.

NEW RESOURCE GROUPS FOR IPO MEMBERS

The IPO Diversity & Inclusion Committee is organizing Resource Groups for underserved populations in the membership who self-identify/volunteer as being interested in participating. The Resource Groups will serve as networking groups to encourage professional development within the IP profession. All individuals who are members of IPO are welcome to join any Resource Group regardless of their identities. IPO welcomes suggestions from members on Resource Groups that should be formed. To suggest a group, contact Lorna Soderberg.

* SUMMARIZING TESTIMONY IS NOT A CLEAR FINDING OF NO MOTIVATION TO COMBINE

Forest Labs., LLC v. Sigmapharm Labs., LLC, 17-2369 — Yesterday in an opinion by Judge MOORE, the Federal Circuit vacated and remanded a district court’s validity determination. The patent related to a sublingually administered, atypical antipsychotic containing asenapine maleate, marketed under the brand Saphris®. Sigmapharm and others filed abbreviated new drug applications (ANDAs) seeking FDA approval for generic versions. The Federal Circuit vacated the district court’s judgment of non-obviousness because of the lack of an express finding by the court that compliance concerns with patients who have trouble swallowing would not provide a motivation to combine. It explained that the district court discussed compliance concerns and summarized expert testimony but that “summarizing testimony … is not a clear finding.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO PUBLISHES UPDATED STUDY ON PTAB MOTIONS TO AMEND, ANNOUNCES PILOT PROGRAM

This week the USPTO published the latest installment of its study of motions to amend in post grant proceedings at the Patent Trial and Appeal Board. Among other findings, the study shows that 114 motions to amend were filed in fiscal year 2018, up from 50 filed in 2017.

Also as regards to motions to amend, today the USPTO published a notice in the Federal Register announcing a pilot program for motions to amend practice and procedures that begins today and will run for approximately one year. Under the pilot program, a patent owner will have the option to receive preliminary guidance from PTAB concerning its motion to amend and to file a revised motion to amend after receiving the petitioner’s opposition to its motion and/or preliminary guidance from PTAB. Alternatively, the patent owner may choose to pursue a motion to amend “in effectively the same way as current practice.” The notice also indicates that, in response to comments received last year on proposed modifications to motions to amend practice, certain due dates have been modified to give parties additional time to prepare filings and evidence.




Thursday, 14 March, 2019 8:28 am

USPTO DIRECTOR TESTIFIES AT SENATE HEARING

Yesterday the Senate Judiciary Committee’s Intellectual Property Subcommittee held a hearing on “Oversight of the United States Patent and Trademark Office.” The sole witness was USPTO Director ANDREI IANCU. In opening remarks, Chairman THOM TILLIS (R-N.C.) applauded the Director for recent changes he has implemented that contributed to the U.S. Chamber of Commerce ranking the U.S. patent system second in the world in its 2019 IP Innovation Index, up from 12th place in 2018. Tillis specifically noted the issuance of revised subject matter eligibility examination guidance and reforms to the Patent Trial and Appeal Board. Ranking Member CHRIS COONS (D-Del.) echoed Tillis’s praise. They noted that they have convened a series of roundtable meetings to receive input from industry on the proper standard for patent subject matter eligibility, and Tillis said that he plans to unveil a draft bill to revise section 101 of the Patent Act by the summer. Tillis also noted that the Subcommittee will hold a hearing on Women in IP in April.

In his testimony, Iancu said that he was pleased the USPTO continued to be given access to all anticipated fee collections and that he was grateful Congress had extended the Office’s fee setting authority last year. He also discussed the USPTO’s work to highlight gender disparity in inventing. He said that the Office continued to assess issues surrounding PTAB practice, but that the changes that had been implemented so far had been successful. He said the revised patent subject matter eligibility examination guidance issued earlier this year attempted to synthesize the relevant case law, clarify the analysis, and should lead to more successful results. He also noted the USPTO’s recent notice of proposed rulemaking to require U.S. licensed counsel for foreign domiciled trademark applicants and said that the Office was studying options for decluttering the trademark register. Finally, he said modernization and stabilization of the USPTO’s IT infrastructure was a top priority. The Office had an internal task force dedicated to the issue, as well as a task force dedicated to developing artificial intelligence tools to assist in patent examination.

Members of the Subcommittee asked Iancu a number of questions, many focused on how patent protection affects drug pricing. In response to whether changes he had made to PTAB rules in the last year should be codified, Iancu said that he wanted to assess whether the changes were working appropriately before taking any additional steps; he also noted that the Supreme Court’s decision in SAS v. Iancu had had a significant impact on PTAB operations.

With regard to patent subject matter eligibility, Iancu acknowledged the difficulty in finding medical diagnostics eligible for patent protection under current Supreme Court precedent. He said that although the revised patent subject matter eligibility examination guidance had had a positive effect at the USPTO, among patent examiners and the PTAB, he was concerned about how the courts would continue their analysis under section 101 moving forward because they were not bound by the guidance.

Iancu’s written testimony and a video of the hearing are available on the Senate Judiciary Committee’s website.

USPTO APPOINTS SCOTT BOALICK TO BE PTAB CHIEF JUDGE; BONILLA TO BE DEPUTY CHIEF

Yesterday USPTO Director ANDREI IANCU announced the appointment of SCOTT BOALICK to be the Chief Judge of the Patent Trial and Appeal Board (PTAB), effective immediately. IPO congratulates Boalick on his appointment and looks forward to continuing to work with him in his new position.

Boalick has served as Acting Chief Judge since the departure of former Chief Judge DAVID RUSCHKE in September 2018. He was appointed to the Board in 2007 and has served in a number of leadership positions since then. Before coming to the USPTO, he was a patent attorney with the Department of the Navy. He holds a law degree from Georgetown University and an M.S.E. in Systems Engineering from the University of Pennsylvania.

The USPTO also announced the appointment of JACQUELINE BONILLA to be the Deputy Chief Judge of the PTAB, effective immediately. Bonilla has served as Acting Deputy Chief Judge since September 2018. She was appointed to be an administrative patent judge in 2012, and was previously an attorney in private practice. She holds a law degree from the University of Virginia School of Law and a Ph.D. in pharmacology from the University of Virginia.

REGISTER FOR IPO’S EUROPEAN PRACTICE CONFERENCE ON 2 MAY IN BASEL, SWITZERLAND

For the 8th year, IPO’s European Practice Committee is organizing a conference titled “The Ever-Changing IP Landscape: Patents, Trademarks, and Trade Secrets in 2019 and Beyond.” The 2019 event will take place on 2 May and is being organized in cooperation with the Law Faculty of the University of Basel, Switzerland. Topics include how to protect your data after the Trade Secrets Directive, equivalent patent infringement, the current critique of the patent system, and trademark matters. The conference includes presentations from in-house and outside counsel as well as experts from academia and the courts. For more information or to register, visit www.ipo.org/Europe19.

IP IN THE MASS MEDIA

IV Awarded $43 Million in Patent Suit against T-Mobile, Ericsson

Yesterday Seattle Weekly reported that a jury in Texas returned a $43 million verdict for Intellectual Ventures after finding that T-Mobile and Ericsson infringed its patents for wireless transmissions on the LTE network.




Wednesday, 13 March, 2019 8:06 am

SENATE IP SUBCOMMITTEE TO HOLD USPTO OVERSIGHT HEARING

The Senate Judiciary Committee’s IP Subcommittee will hold a hearing today at 2:30p.m. ET on “Oversight of the United States Patent and Trademark Office.” The sole witness will be Under Secretary of Commerce for Intellectual Property and Director of the USPTO ANDRE IANCU. The hearing will be held in Dirksen Senate Office Building Room 226. It will be webcast.

IP VIDEO CONTEST OFFERS CASH PRIZES AND SCHOLARSHIPS

IPO Education Foundation offers each winner up to $6,500 in cash prizes or scholarships sponsored by Harness, Dickey & Pierce, P.L.C. and Intellectual Ventures Management, LLC. Contestants have the chance to win a $5,000 scholarship, cash prize, or donation to a favorite charity. Plus, all finalists will be eligible for an additional $1,500 cash prize sponsored by Harness Dickey for the most likes on Facebook. Help us spread the word! To learn more about the IP Video Contest and share with your friends and colleagues, please visit IPOEF.org.

IP IN THE MASS MEDIA

Marc Jacobs Seeks Dismissal of Nirvana Copyright Suit

Yesterday the U.K.’s The Guardian reported that MARC JACOBS has moved to dismiss a suit filed against him by Nirvana claiming that a shirt in the fashion designer’s Redux Grunge collection copies a “smiley face” that resembles the band’s logo. Jacobs argues that the band does not own a registered copyright on the design.

U.K. Company to Defend Trademark Suit in California

Yesterday Reuters reported that a judge in California ruled that U.K. company J. Barbour must defend a lawsuit brought against it by Levi Strauss, which accuses it of copying its iconic red pocket tabs. Although Barbour Inc. oversees U.S. sales, the U.K. parent company operates a website that sells clothes in California.