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Past Week’s Daily News™

Wednesday, 17 January, 2018 8:18 am

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Sen. Chuck Grassley (R-Iowa)
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Sen. Chris Coons (D-Del.)

SENATE JUDICIARY MEMBERS SEND SECOND LETTER ABOUT COMMERCE DEPT. “ENTERPRISE SERVICES” INITIATIVE

Last week Senate Judiciary Committee Chairman CHUCK GRASSLEY (R-Iowa), along with committee member Senator CHRIS COONS (D-Del.), sent a second letter to Secretary of Commerce WILBUR ROSS concerning the USPTO’s participation in a Commerce Department “Enterprise Services” initiative to consolidate human resources, information technology, and procurement functions across the Department. Grassley and Coons requested an update on the status of Ross’s review of whether the USPTO should be exempted from participating in the program. They also noted that although Commerce has generally addressed “why it allegedly makes financial sense for the USPTO to participate,” Ross has not provided answers to the questions posed in their first letter that was sent on 6 July 2017. They asked for “detailed and specific answers” to those questions concerning “how Enterprise Services may be diverting USPTO fees away from USPTO priorities and undermining the independence provided to the USPTO by statute.”

IP IN THE MASS MEDIA

Bloomberg Law Discusses Boom in Attorneys Practicing before USPTO’s PTAB 

Yesterday Bloomberg Law’s “Big Law Business” published an article titled “As Niche Patent Practice Area Ramps Up, Big Law Firms Jump In,” discussing the boom in attorneys representing clients at the USPTO’s Patent Trial and Appeal Board (PTAB) since the America Invents Act created new post-grant proceedings to challenge patent validity in 2011.

11th Circuit Enjoins Former Commodores Member from Using Band’s Trademarks

Last week Billboard reported that the 11th Circuit Court of Appeals in Florida ruled that Commodores Entertainment Corporation, which is run by The Commodores’ founding members WILLIAM KING and WALTER ORANGE, owns the exclusive right to use the band’s name and trademarks and granted a permanent injunction limiting former bandmate THOMAS MCCLARY’s use of the band’s trademarks to fair use.




Tuesday, 16 January, 2018 8:09 am

U.S. COPYRIGHT OFFICE FURTHER EXTENDS DEADLINE FOR COMMENTS ON SECURE TEST REGISTRATION

In a Federal Register notice published today, the Copyright Office announced that it is extending until 2 April 2018 the deadline for comments on interim rules regarding secure tests. A secure test is “a nonmarketed test administered under supervision at specified centers on specific dates, all copies of which are accounted for and either destroyed or returned to restricted locked storage following each administration.” The interim rules, from June and November of 2017, address the special procedure for examining the tests and the establishment of a new group registration option.

IP IN THE MASS MEDIA

Irish Court Orders ISPs to Block Websites Facilitating Widespread Copyright Infringement

Yesterday the Irish Times reported that Ireland’s Commercial Court ordered several of the country’s major internet service providers to block a number of websites found to facilitate widespread copyright infringement by enabling users to illegally download and stream films and television shows. The suit against the ISPs was brought by the Motion Picture Association.

BBC Argues Geoblocking Defense in Copyright Suit on The Cosby Show

Last Friday the Hollywood Reporter reported on a suit brought in California by Carsey-Werner Company against the BBC and Sugar Films Limited for infringing its copyright in The Cosby Show by using unauthorized clips from the show in the documentary Bill Cosby: Fall of an American Icon. The BBC and the film company argue that no infringement could have occurred in the U.S. due to geoblocking.




Monday, 15 January, 2018 8:15 am

Federal Circuit Summaries Logo

* MULTIPLE REEXAMINATIONS CONFIRMING PATENT VALIDITY INSUFFICIENT BASIS FOR SUMMARY JUDGMENT

Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, 16-2197 — On 12 January in an opinion by Judge STOLL, the Federal Circuit overturned a district court’s grant of summary judgment that Exmark’s patent claim was not anticipated or obvious. The claim was for a lawn mower with improved flow control baffles. It had been reexamined once as requested by Exmark prior to suit, and twice as requested by Briggs during suit. Briggs argued that the district court improperly based its judgment the claim was not anticipated or obvious solely on the fact that the claim had survived multiple reexaminations involving the same prior art. The Federal Circuit agreed, holding that “a reexamination confirming patentability of a patent claim alone is not determinative of whether a genuine issue of fact precludes summary judgment of no invalidity.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

ATTORNEY FEE SHIFTING IN PATENT SUITS IN U.S. DISTRICT COURTS: QUARTERLY REPORT

During the fourth quarter of 2017 (1 October-31 December), 26 motions for attorney fees were decided in the U.S. District Courts. Patent Owners filed 5 (19%) of the motions and accused infringers filed 21 (81%). A breakdown of motions granted and denied is below.

Motions Granted – 9 (35%)
• Patent Owner – 4
• Accused Infringer – 5

Motions Denied – 17 (65%)
• Patent Owner – 1
• Accused Infringer – 16

IP IN THE MASS MEDIA

Judge Denies Filmmaker’s Summary Judgment Motion in Copyright Suit on Michael Jackson Documentary

On Friday Billboard reported that a federal judge denied Novel Williams Films’ motion for summary judgment in its suit against the executors of MICHAEL JACKSON’s estate seeking a declaration that its documentary Michael: The Last Photo Shoots does not infringe the estate’s copyright in photographs and videos of the late pop star.

Studios, Streaming Platforms Sue Dragon Box for Copyright Infringement

On Friday Bloomberg BNA reported that several members of the Alliance for Creativity and Entertainment sued the maker of Dragon Box, claiming that the open source device facilitates copyright infringement by allowing users to find and stream for free the studios’ and streaming platforms’ content.




Friday, 12 January, 2018 8:16 am

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* EMPLOYMENT AGREEMENT INSUFFICIENT TO TRANSFER PATENT INTERESTS

Advanced Video Techs. v. HTC Corp., 16-2309 — Yesterday in an opinion by Judge REYNA, a split Federal Circuit upheld a district court’s dismissal of Advanced Video’ s three patent infringement suits for lack of standing. Advanced Video argued that co-inventor Hsiun, who was not a party in the suits, had transferred her interests in the patent under the terms of her employment agreement. The Federal Circuit held that the contract’s “unambiguous” language did not affect an actual transfer but merely obligated Hsiun to transfer her interests in the future; this rendered toothless a quitclaim provision waiving any interest in patents transferred under the agreement.

Judge O’MALLEY concurred, arguing that the Court’s precedent that co-owners could not be involuntarily joined under Rule 19 of the Federal Rules of Civil Procedure should be overturned. Judge NEWMAN dissented.
(1 to 4 stars rate impact of opinion on patent & trademark law)

WOMEN IN IP COMMITTEE INVITES ALL IPO MEMBERS TO JOIN

IPO’s Women in IP Committee encourages all IPO members, both men and women, to join. Diversity of viewpoints is critical to its mission of promoting the advancement of women in IP law. The Committee regularly features guest speakers on monthly calls, including judges, USPTO officials, academics, and others, to share experiences and provide insights to members. The committee’s first call of 2018 will be held on 17 January at 1p.m. ET and will feature a presentation by MYRA MCCORMACK (Johnson & Johnson) on the benefits of mindfulness and meditation. Join the Women in IP Committee today to participate!

To learn more, contact a member of the leadership team: SHRUTI COSTALES (HP Inc.), LAURA SHERIDAN (Google Inc.), or MERCEDES MEYER (Drinker Biddle & Reath LLP).

Note: Members of other IPO committees may join the Women in IP Committee.

IP IN THE MASS MEDIA

Ed Sheeran, Faith Hill, and Tim McGraw Sued for Copyright Infringement

On Wednesday the Hollywood Reporter reported that ED SHEERAN, FAITH HILL, and TIM MCGRAW were sued for copyright infringement by SEAN CAREY and BEAU GOLDEN, who claim that the song “The Rest of Our Life” co-written by Sheeran and performed by Hill and McGraw copies elements of the Australian songwriters’ 2014 “When I Found You.”

Commerce Department Inspector General Releases Report on Misconduct by Former Senior USPTO Employee

Yesterday the Washington Post wrote on a report released this week by the Commerce Department’s Inspector General concerning a former senior USPTO employee it says charged the government for unauthorized taxicab rides costing more than $4,000, primarily to commute from his home to the USPTO’s Alexandria, Virginia headquarters.

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 sign up to participate.




Thursday, 11 January, 2018 8:20 am

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* * * COURT CLARIFIES ROLE OF SMALLEST SALEABLE UNIT IN CALCULATING REASONABLE ROYALTY DAMAGES

Finjan, Inc. v. Blue Coat Sys., Inc., 16-2520 — Yesterday in an opinion by Judge DYK, the Federal Circuit vacated a portion of a district court’s damage award against Blue Coat. Finjan’s patent claimed a “system and method for providing computer security by attaching a security profile to a downloadable.” Blue Coat argued that Finjan failed to properly apportion damages to the infringing features of its WebPulse product.

The Federal Circuit agreed. Finjan’s argument that the royalty base should be tied to the product’s “dynamic real-time rating engine” (DRTR) component because the component was the smallest saleable unit was unavailing because the entire market value rule was not at issue in the case. “The fact that Finjan has established a royalty base based on the ‘smallest, identifiable technical component’ does not insulate them from the ‘essential requirement’ that the ‘ultimate reasonable royalty award must be based on the incremental value that the patent invention adds to the end product.’” The percentage of web traffic handled by the DRTR was not a proxy for this incremental value because DRTR performed several non-infringing functions in addition to the infringing function.
(1 to 4 stars rate impact of opinion on patent & trademark law)

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ISSA ANNOUNCES RETIREMENT

Yesterday Representative DARRELL ISSA (R-Calif.) announced that he will not seek reelection when his term expires at the end of 2018. Issa, Chairman of the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet, was first elected to the U.S. House of Representatives in 2000. His district, the 49th Congressional District of California, includes parts of San Diego and Orange County.

CALL FOR NOMINATIONS FOR IPO BOARD OF DIRECTORS

The IPO Nominations Committee seeks candidate companies for consideration for a sustaining seat on the IPO Board of Directors for a term that begins immediately and will terminate at the end of 2018. Sustaining board members are eligible for reelection for an unlimited number of terms.

To nominate a candidate, send the company name and contact information for the company’s representative (usually the chief IP counsel) to Lorna Soderberg by Friday, 19 January. More information on requirements of IPO board membership is available on the website.

USPTO EXTENDS PATENT APPLICATION MISSING PARTS PROGRAM

Yesterday the USPTO announced that the “Extended Missing Parts Pilot Program” for patent applications set to expire on 2 January 2018 will now expire on 2 January 2019 to allow the Office to continue evaluating the program. The program provides eligible applicants 12 months to pay search, examination, and any excess claims fees in response to a notice to file missing parts. The notice explains that the program benefits applicants, the USPTO, and the public. Applicants receive additional time to determine whether to pursue patent protection and to focus on commercialization. The USPTO and public benefit through the addition of publications to the body of prior art, and the program reduces the USPTO’s workload.

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TODAY ON IPO’S IP CHAT CHANNEL™ — USPTO ON USING DECLARATIONS REGARDING PRIOR ART UNDER THE AIA

Tune in to the IP Chat Channel™ today at 2:00p.m. ET for USPTO on Using Declarations Regarding Prior Art Under the AIA. The panel will feature KATHLEEN FONDA (USPTO), in-house IP chief GARY GANZI (Evoqua Water Technologies LLC), and COURTENAY BRINCKERHOFF (Foley & Lardner LLP), a veteran life science patent strategist and prosecutor. IP Chat Channel™ webinars are recorded and available on our website after the live webinars.