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Past Week’s Daily News™

Friday, 17 November, 2017 8:14 am

IP IN THE MASS MEDIA

Economist Writes on Allergan’s Transfer of Patents to St. Regis Mohawk Tribe

Yesterday the Economist published an article titled “Allergan’s unusual legal tactic attracts political scrutiny,” discussing Allergan’s transfer of patents for its dry eye treatment Restasis to the St. Regis Mohawk Tribe for the purpose of shielding them from inter partes review by invoking the Tribe’s sovereign immunity.

IP Investors Now Focusing Outside U.S.

Yesterday Bloomberg Law’s Big Law Business newsletter reported that intellectual property investors speaking at the IAM 2017 Patent Law and Policy conference on Tuesday said they are focusing investment and licensing outside the U.S. because legal developments in the U.S. such as the law on patent subject matter eligibility have increased uncertainty and lowered patent values.

Screenwriters Sue Disney for Copyright Infringement

Yesterday the Daily Mail reported that screenwriters A. LEE ALFRED II and EZEQUIEL MARTINEZ JR. sued the Walt Disney Company for copyright infringement, claiming that its Pirates of the Caribbean franchise copies elements of a screenplay they submitted to Disney in 2000.

IP PATCH EVENT LEAD BY PENN STATE LAW STUDENTS

Last week IPO Education Foundation’s IP Patch curriculum was used by Pennsylvania State Law Students to teach elementary school students about the importance of intellectual property. Students were encouraged to explore their creativity and learn how to protect their inventions by using patents, copyrights, and trademarks.

IP Patch PSU Event 1 IP Patch PSU Event 2

“The event was such a hit! We had 33 Girl Scouts (Daisy, Brownie, and Junior), 11 PSU Law Students, and many people asked if I could do a similar event for boy scouts in the Spring.” -RACHEL HERDER, J.D. Ph.D. Director, Intellectual Property Clinic and Assistant Professor of Clinical Law

To access free curriculum for students from grades 2-10, visit the Education Foundation website.




Thursday, 16 November, 2017 9:07 am

Federal Circuit Summaries Logo

*** NO WAIVER OF VENUE CHALLENGE FOR FAILURE TO RAISE BEFORE TC HEARTLAND

In Re: Micron Tech., Inc., 17-138 — Yesterday in an opinion by Judge TARANTO, the Federal Circuit granted Micron’s petition for a writ of mandamus vacating the district court’s denial of its motion to dismiss or transfer the case for improper venue. The district court held that Micron had waived its venue objection under Federal Rule of Civil Procedure 12 by failing to raise the issue in a motion to dismiss filed before the Supreme Court decided TC Heartland. Micron argued that the decision was a “change of law” that obviated the rule on waiver.

The Federal Circuit agreed that TC Heartland was a “sufficiently sharp change of law” to render waiver under Rule 12 inapplicable. Micron did not waive its venue defense by failing to raise it in the earlier motion to dismiss because the objection was not available when the motion was filed. The Court remanded for consideration of non-Rule 12 arguments, such as timeliness of Micron’s post-TC Heartland motion, that the venue defense was forfeited.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO DELEGATES VISIT WITH EPO LEADERSHIP AT THE U.S. BAR – EPO LIAISON COUNCIL MEETING

On Wednesday IPO participated in the U.S. Bar – EPO Liaison Council meeting in Munich. EPO President BENOIT BATTISTELLI greeted the delegation with an overview of the EPO’s latest initiatives including a preview of its plans to provide applicants with an option to request an up to three-year postponement in examination. The EPO provided additional updates and there were a variety of discussions about practioners’ concerns and inquiries for clarification on certain EPO procedures. IPO delegates at the meeting included IPO Executive Director MARK LAUROESCH, ROBERT FURR (INVISTA), JAMES SIGNOR (Leydig, Voit & Mayer), and PAUL COLETTI (Johnson & Johnson).

Chat Channel Logo with TM

TODAY ON IPO’S IP CHAT CHANNEL™ — OUTSOURCING PATENT WORK: AVOIDING PITFALLS (ETHICS)

Tune in to the IP Chat Channel™ today at 2:00p.m. ET to earn Ethics CLE and learn how to avoid hazards that can trip up customers of patent services. Panelists include MICHAEL GNIBUS (General Electric Co.’s head of patent operations), who has supervised patent service providers for many years; MUKUNDAN CHAKRAPANI (an India-based executive of Clairvolex, a patent services provider); and MICHAEL MCCABE, an attorney who specializes in ethical issues facing IP lawyers and who represents them in disciplinary matters. Ethics CLE granted in many states. IP Chat Channel webinars are recorded and available on our website after the live webinars.

EPO STUDY FINDS UNITARY PATENT WILL BOOST EUROPEAN ECONOMY

This week the European Patent Office published a study, titled Patents, Trade, and Foreign Direct Investment in the European Union, assessing “the impact of the European patent system on the circulation of technologies through trade and foreign direct investment (FDI) in the European Single Market.” The study finds that the Unitary Patent will remove current limitations on cross-border trade in Europe and investment in IP-intensive industries, which will facilitate technology transfer and boost productivity growth and economic development.

IPO EDUCATION FOUNDATION ANNOUNCES 2017 INVENTORS OF THE YEAR

IPO Education Foundation is pleased to name the inventors of CRISPR-CAS9, a gene editing technology with the potential to cure genetic disorders like muscular dystrophy, cystic fibrosis, sickle cell anemia, and others, as this year’s Inventors of the Year Awards Dinner. This breakthrough technology allows permanent gene modification to be performed in the cells of animals and humans. Removing dysfunctional DNA sequences will not only will cure diseases, but will prevent them from being passed to future generations.

Dr. JENNIFER DOUDNA will accept the award on behalf of the University of California, Berkeley and Dr. FENG ZHANG will accept on behalf of the Broad Institute of MIT and Harvard; and the McGovern Institute for Brain Research at MIT. They will be honored for their contributions at the Foundation Awards Dinner in Washington D.C. on 5 December. Please join us to celebrate the world’s most outstanding recent inventors!

IP IN THE MASS MEDIA

US ITC to Investigate Apple on Design Patent Infringement

On Tuesday the U.S. International Trade Commission said that it will investigate a complaint filed by Aqua Connect and its subsidiary Strategic Technology Partners claiming that Apple Inc.’s screen-sharing and remote desktop server features on some Mac computers, iPhones, iPads, iPods, and Apple TVs infringe its design patents. (CNET)




Wednesday, 15 November, 2017 8:29 am

USPTO ANNOUNCES ADJUSTMENTS TO PATENT FEES

Yesterday the U.S. Patent and Trademark Office published a Federal Register notice announcing the adjustment to fees related to patent processing. The increases will allow the office “to continue to fund patent operations, enhance patent quality, continue to work toward patent pendency goals, support the Patent Trial and Appeal Board (PTAB)’s continued efforts to deliver high quality and timely decisions, fund general support costs necessary for patent operations (e.g., rent, utilities, legal, financial, human resources, and other administrative services), invest in strengthening the Office’s information technology (IT) capability and infrastructure, and achieve operating reserve targets,” in addition to “maintaining momentum towards achieving strategic goals.”

The USPTO consulted with the Patent Public Advisory Committee and requested public comments in this biennial review of patent fees, making several changes to its proposed fee schedule based on their feedback. The final rule adjusts 202 patent fees. The new fee schedule takes effect on 16 January 2018.

IPO EDUCATION FOUNDATION HOLDS FIRST EPO DAY

Yesterday the IPO Education Foundation held its first “EPO Day,” which brought together EPO examiners and private practitioners to discuss and share perspectives on challenging areas of patent prosecution and oppositions. In closing the conference, IPOEF Board Member KEVIN RHODES (3M Innovative Properties Co.) thanked the participants for their contributions and commented that the workshops relating to sufficiency of disclosure, new matter, and clarity “gave rise to engaging dialogue bringing out subtle perspectives that are helpful in working toward even more certainty and predictability in the prosecution of European applications.”

EPO Day 2017

IP IN THE MASS MEDIA

D.C.’s &pizza sues Scotland’s @pizza for Trademark Infringement

Yesterday Eater DC reported that Washington, D.C. pizza chain &pizza sued a new Scottish pizza restaurant for trademark infringement, claiming that its name @pizza is confusingly similar.

2017 IPO Recruiting Challenge

INVITE YOUR FRIENDS!

There is still time to benefit from the 2017 IPO Membership Challenge. Any IPO member who recruits a new corporate or law firm member will receive one of the benefits below. Remember to tell potential new members to list your name as the recruiter on the membership application form.

Recruiting benefits:

• One pass for three months of unlimited access to the IP Chat Channel™,
• One complimentary registration to the 2018 IPO Annual Meeting,
• Two complimentary nights in the hotel room block during the 2018 IPO Annual Meeting,
• One month of advertising on the IPO.ORG homepage (quantities limited), or
• Advertising space in an issue of the IPO Corporate Monthly.




Tuesday, 14 November, 2017 8:31 am

Federal Circuit Summaries Logo

*** COURT SAYS PATENT OWNER NOT ENTITLED TO DAMAGE AWARD

Life Techs. Corp. v. Promega Corp., 13-1011 – Yesterday in an opinion by Judge CHEN, on remand from the U.S. Supreme Court, the Federal Circuit upheld the district court’s grant of Life Tech’s motion for JMOL that Promega failed to prove its infringement case under Patent Act 271(a) and 271(f)(1) and denial of Promega’s motion for a new trial. Promega’s patent claimed a process for examining polymorphism in DNA samples. The U.S. Supreme Court found that LifeTech did not infringe under § 271(f)(1) because the single component that Life Tech supplied from the U.S. of a multi-component genetic testing kit was not “a substantial portion” of the invention’s components.

The Federal Circuit said that by relying throughout litigation on Life Tech’s total worldwide sales as the potential base for a lost profits award for all alleged infringement, and declining to offer evidence that could be used to calculate separate damage awards for infringement under §§ 271(a) and 271(f)(1), Promega failed to prove its damages and waived the right to argue on appeal that the record supported a damages award based on a subset of sales. The district court did not abuse its discretion in denying retrial based on theories not pursued by Promega at trial.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* FEDERAL CIRCUIT AFFIRMS FINDING OF INDUCED PATENT INFRINGEMENT

Sanofi v. Watson Labs. Inc., 16-2722 – On 9 November in an opinion by Judge TARANTO, the Federal Circuit affirmed a district court finding of induced infringement. Sanofi’s patents claimed compositions containing the cardiovascular drug dronedarone and methods for reducing hospitalization by administering the drug to patients meeting certain criteria. Watson argued that Sanofi failed to prove specific intent to encourage physicians to infringe by prescribing the drug.

The Federal Circuit said “intent is a factual determination that may rest on circumstantial evidence.” The content of Watson’s proposed label, which stated that the drug was indicated to reduce the risk of hospitalization in atrial fibrillation and described which patients would meet the claimed criteria, permitted the inference of specific intent to encourage infringement. There was “no legal or logical basis” for limiting liability based on evidence of substantial noninfringing uses not forbidden by the label.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Chat Channel Logo with TM

THIS WEEK ON IPO’S IP CHAT CHANNEL™ — OUTSOURCING PATENT WORK: AVOIDING PITFALLS (ETHICS)

Tune in to the IP Chat Channel™ on Thursday, 16 November, at 2:00p.m. ET for Outsourcing Patent Work: Avoiding Pitfalls (Ethics CLE). The patenting process demands many capabilities, from informed legal analysis about the future direction of the law on patent eligibility and indefiniteness to clerical data entry about filed applications. The global legal outsourcing industry has grown dramatically in the last 10 years to over $2 billion annually, as corporations and law firms try to disaggregate those disparate tasks and have them handled cost-effectively by different parties.

Outsourcing in itself does not, however, simplify the patenting process and can present its own pitfalls. This webinar will examine the possible hazards that can trip up customers of patent services and what due diligence and supervision is required to do outsourcing correctly. Regulator and ethical monitors have identified many areas that can raise red flags including:

• Offshoring technical data in disregard of USPTO guidance;
• Improper fee-splitting;
• Monitoring suppliers for conflicts of interest;
• Getting the informed consent of the ultimate client; and
• Aiding and abetting the unauthorized practice of law.

Panelists include MUKUNDAN CHAKRAPANI (Clairvolex), MICHAEL GNIBUS (General Electric Co.), and MICHAEL MCCABE (IP Ethics Law). IP Chat Channel webinars are recorded and available on our website after the live webinars. Ethics CLE granted in many states.

2017 IPO ANTI-COUNTERFEITING SURVEY REPORT

The IPO Anti-Counterfeiting Committee has posted the report associated with its most recent survey. There were 186 respondents for the survey including both law firm and corporate respondents. View the full report on the IPO Law Journal.




Monday, 13 November, 2017 8:32 am

Bob_Goodlatte

GOODLATTE ANNOUNCES RETIREMENT

Last week Representative BOB GOODLATTE (R-Va.) announced that he will not seek reelection when his term expires at the end of 2018. Goodlatte, current Chairman of the House Judiciary Committee and Co-Chair of the Congressional Internet Caucus and the Congressional International Creativity and Theft-Prevention Caucus, was first elected to the U.S. House of Representatives in 1992. He co-authored the Defend Trade Secrets Act, which was enacted into law in 2016. His district, the 6th Congressional District of Virginia, includes parts of Roanoke and Lynchburg.

U.S. COPYRIGHT OFFICE ISSUES INTERIM RULE FOR COPYRIGHT RECORDATION

On Friday the U.S. Copyright Office published a Federal Register notice announcing an interim rule for recording transfers of copyright ownership, termination notices, and other copyright-related documents. The Office is seeking to modernize the current paper-based system by developing a fully electronic, online system for submitting and indexing these documents. A proposed rule was published for public comment earlier this year “to govern the submission of documents to the Office for recordation once the new electronic system is developed and launched.” The Office is adopting some aspects of that proposed rule on an interim basis “until such time as the electronic system is complete and a final rule is enacted.” The interim rule takes effect on 18 December 2017.

Miles O'Brien

FOUNDATION AWARDS DINNER WILL FEATURE CNN’S MILES O’BRIEN

This year’s IPO Education Foundation Awards Dinner will be hosted by emcee MILES O’BRIEN, former CNN anchor for science and technology. He joined CNN in 1992 and became the exclusive reporter for NASA programs such as the first space station launch and landings on Mars. With his passion for science, technology, and aerospace journalism, Miles was trained by NASA to be the first anchor in space and won numerous awards for his dedication and creativity. After his long tenure with CNN, Miles O’Brien formed his own production company focusing on stories for PBS, Discovery Science and the National Science Foundation. We are pleased to welcome this year’s emcee, Miles O’Brien, to the Foundation Awards Dinner 5 December!

You are invited to attend the Education Foundation Awards Dinner at the National Building Museum – purchase your tickets today.

JOIN US FOR AN ORIENTATION TO IPO

New to IPO? Already a member but need to refresh your memory on the benefits? Trying to find ways to get your staff 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.

IP IN THE MASS MEDIA

AM General Sues Activision Blizzard for Use of Humvee Trademarks in Call of Duty

Last week Reuters reported that AM General LLC, maker of Humvee military vehicles, sued Activision Blizzard Inc for trademark infringement, claiming that the maker of the Call of Duty video game franchise prominently features its trademarks in the game and on related merchandise without permission.