General GWiR 30 January 2009 from IP Think Tank

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Highlights this week included:

WTO panel releases decision in US complaint against China over its IP laws (Michael Geist) (Excess Copyright) (IPKat) (ContentAgenda) (Intellectual Property Watch) (Michael Geist) (Law360) (Techdirt) (Patent Docs)

WIPO press release: ‘Global economic slowdown impacts 2008 international patent filings’ (WIPO) (IPKat) (Law360) (Managing Intellectual Property) (Patent Baristas) (Peter Zura’s 271 Patent Blog) (Patent Librarian’s Notebook)

Deferred examination: USPTO to hold roundtable discussion (Patently-O) (Law360) (IP Watchdog) (Inventive Step) (Anticipate This!) (Patent Prospector)

US-Korea adopt patent prosecution highway (Law360) (Patent Docs) (Managing Intellectual Property)



Global – General

Obama, patent reform, patent litigation in the USA and Europe – IP Think Tank podcast 26 January 2009 (IP Think Tank)

Intangible values collapse – the old 70% to 80% claim is now officially dead and buried (IAM) (IP Asset Maximizer Blog)

Managing value in a shrinking economy: the IP audit (IP Frontline)

Downturn – An opportunity for the future (IP Frontline)

WIPO ponders new negotiating style; DDG positions opening; patent filings falter (Intellectual Property Watch)


Global – Patents

WIPO press release: ‘Global economic slowdown impacts 2008 international patent filings’ (WIPO) (IPKat) (Law360) (Managing Intellectual Property) (Patent Baristas) (Peter Zura’s 271 Patent Blog) (Patent Librarian’s Notebook)


Global – Copyright

Inside Views: The last defence of the IP system: an interview with Jamie Boyle (Intellectual Property Watch)



FCA: Nokia monitoring borders but court hangs up: Nokia Corporation v Liu (Australian Trade Marks Law Blog)



Nulity of patent in Brazil (RelatIP)



Canada’s private ACTA talking points (Michael Geist)

Federal Court of Appeal finds in favour of Canadian distiller, overturning lower court decision: Scotch Whiskey Association v Glenora Distillers ( (Canadian Trademark Blog)

Canadian Chamber of Commerce leads the way on IP lobbying (Michael Geist)

Royal Canadian Mounted Police arrest three for pirated DVD sales (Michael Geist)



Illicit Trade Bill obtains approval by Chilean Senate (IP tango)



WTO panel releases decision in US complaint against China over its IP laws (Michael Geist) (Excess Copyright) (IPKat) (ContentAgenda) (Intellectual Property Watch) (Michael Geist) (Law360) (Techdirt) (Patent Docs)

Huawei top PCT applicant 2008; China sixth largest user of PCT (IP Dragon)

German company wins key design patent case in China: Neoplan Bus v Starliner (Managing Intellectual Property)

Key points of the third revision of Chinese Patent Law (Panawell & Partners)

Comparison of current Patent Law and amended Patent Law (Panawell & Partners)



Danish PTO fires staff in response to major downturn in applications (IAM)

Supreme Court finds no likelihood of confusion between MINIMAX and MINIMAL (Class 46)



Proposed EU copyright term extension faces vocal opposition in Parliament (Intellectual Property Watch) (Excess Copyright)

Open Right Group to host roundtable on copyright extension for music (TorrentFreak)

EP divisional applications: some food for thought (IPKat)

EPO president rejects participation in future education campaigns (IAM)

EPO announces new fee structure effective 1 April 2009 (Daily Dose of IP)

OHIM fees and SMEs (IPKat)

News from OHIM: New CTM e-filing system (IPKat) (Class 46)

Prana Haus launches appeal to ECJ against judgment of the CFI: Prana Haus GmbH v OHIM (Class 46)

Forthcoming ECJ opinion: Budějovický Budvar národní podnik v Rudolf Ammersin GmbH (Class 46)



Taking the fight against the counterfeiters seriously (IP Frontline)



Decline in national trade mark filings for 2008 (Class 46)



German government sues British publishers for selling Nazi era newspaper reprints claiming copyright infringement (The IP Factor)

Court allows Frank Zappa Festival to continue, despite IP claims brought by Zappa’s wife (Techdirt)



Athens Administrative Court of First Instance: Carrefour retains CHAMPION trade mark rights (International Law Office)



India plans rehaul of patent application system (Law360)



Significant increase in Israeli PCT filings (The IP Factor)



JPO provides latest patent practice guidance (Hal Wegner) (Daily Dose of IP)



Key changes to Patent Act implemented (International Law Office)


Latin America

Another poor year for LA patent applications (IP tango)



Senate considers competing patent reforms (International Law Office)

New intellectual property court in Mexico – Federal Court of Tax and Administrative Affairs (RelatIP)



Nigerian collecting society continues to express discontent with Copyright Commission (Afro-IP)


South Africa

Intellectual property and Springbok scrum (Afro-IP)



Supreme Court: ‘Mc’ is not only for McDonald’s (Class 46)


United Kingdom

EWHC: Virgin Atlantic’s Upper Class seat patent valid but not infringed; design rights not infringed either: Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd & Anor (IPKat) (Out-Law)

EWHC: Dyson cleans up again: Dyson Technology Ltd v Samsung Gwangju Electronics Co Ltd (IPKat)

Are British patent courts unfriendly to patents? (IPKat) (IPKat)

IPO launches ‘Supply Chain Toolkit’ best practice toolkit for avoiding fake goods entering business supply chains (IPKat)

Welsh patent applications: the results are in (IPKat)


United States

US General

Government blocks release of documents on secret IP enforcement treaty, ACTA (EFF)

Potential names for Obama IP team swirl; WTO IP Chief ‘imminent’ (Intellectual Property Watch)

John W Thompson leading candidate for Commerce Secretary (Inventive Step)

FTC announces further hearings on IP and antitrust (IP Frontline)

Stanford IP Litigation Clearinghouse database appears to be incomplete (Seattle Trademark Lawyer)

The hidden driver of a US recovery (IP Frontline)


US General – Decisions

FTC approves Dow Chemical Co’s acquisition of Rohm & Haas after Dow agrees to divest certain facilities and IP (Law360)


US General – Lawsuits and strategic steps

Aloha Airlines – Aloha workers object to bid to sell bankrupt airline’s IP to Yucaipa Corporate Initiatives Fund for licensing to Mesa Air Group (Law360)

Apple – IBM and Apple settle dispute over former IBM senior executive move to Apple (Law360)

Marvell Semiconductor – Quinn Emanuel Urquart Oliver & Hedges kicked off trade secrets case brought by Jasmine Networks against Marvell (Law360)

US Bioservices Corp – DC Kansas retains all but one claim in trade secrets suit filed by US Bioservices against two former employees (Law360)


US Patent Reform

President’s Technology Agenda includes Patent Reform (Hal Wegner) (Patent Prospector)

Obama memo could delay continuation rules (Managing Intellectual Property)

Patent SOS: inequitable conduct reform ASAP (IP Watchdog)

Limits on patent damages would harm US economy (IP Watchdog)

IEEE issues 2009 patent reform recommendations (Patent Prospector)

Deferred examination: PTO to hold roundtable discussion (Patently-O) (Law360) (IP Watchdog) (Inventive Step) (Anticipate This!) (Patent Prospector)


US Patents

Congress weighs patent specialisation for federal judges (Ars Technica) (Inventive Step) (Law360) (IP Spotlight) (Patent Prospector)

M Lemley & B Sampat’s report ‘Examiner Characteristics and the Patent Grant Rate’ – experienced examiners allow more, cite less (Peter Zura’s 271 Patent Blog)

PTO problems are not new; the more things change, the more they stay the same (Inventive Step)

Peer to patent project begins post-issue review (Patently-O)

Is obvious obviously unconstitutional? (Intellectual Property Directions)

USPTO to hold Innovation Week 22-27 June (Patent Docs)

US-Korea adopt patent prosecution highway (Law360) (Patent Docs) (Managing Intellectual Property)

Obama’s environmentally-friendly present for supporters of the patent system (IAM)

How to cut legal costs and improve results in troubled times (IP Frontline)

PatentCluster – free clustering based patent search engine (Patent Baristas)

Requesting withdrawal of the finality of an office action (Patentably Defined)

Injunctions harder to win in post-eBay courts (Law360)

Newsweek joins the anti-patent bandwagon (Patent Docs)

The future of patent litigation in the Eastern District of Texas (International Law Office)

Your jury doesn’t care about patent infringement if the defendant didn’t copy it (IP ADR Blog)

Sarnoff: The Patent Act’s mention of business methods does not mean that section 101 should extend to cover business methods (Patently-O)

Seven questions with post-issue Peer to Patent Project Director Mark Webbink (Patent Baristas)

The problem with ‘gold-plated’ patents (IP Frontline)


US Patents – Decisions

CAFC to Boston Scientific: your patent is invalid if we say it is: Boston Scientific v Cordis Corp (Patent Baristas)

District Court Massachusetts: Some claims of Varian Semiconductor Equipment Associates’ reissue patent invalid because they do not describe same invention as original patent (Law360)

District Court Minnesota: Injunction granted barring Tomar Electronics from selling Strobecom II traffic pre-emption systems for emergency vehicles after jury finds infringement of Global Traffic Technologies’ patent (Law360)

District Court C D California: Bilski test dooms American Master Lease’s real estate investment patent: Fort Properties, Inc v Master Lease LLC (Law360) (Patent Prospector) (Peter Zura’s 271 Patent Blog)

Court of Federal Claims allows Zoltek to shift patent infringement case against US government to contractor Lockheed Martin (Law360)

BPAI: Collateral estoppels-based re-examination rejection reversed: Ex parte Scientific-Atlanta (Hal Wegner)

Medegen v ICU Medical: Cybor de novo review questioned (Hal Wegner)


US Patents – Lawsuits and strategic steps

Acacia Technologies – Epson signs up with RPX and so escapes from Acacia suit (IAM)

Advanced Micro Devices – AMD prepares to spin off manufacturing operations to be called Foundry Company; Intel requests meeting to consider whether plan would violate patent cross-licensing agreements (Patent Prospector) (Law360)

Apple – Apple, SanDisk settle Texas spat over portable digital music player patent (Law360)

Bilski – Bilski petitions the Supreme Court to decide issues of patentable subject matter (Patently-O) (Patently-O) (Law360) (Inventive Step) (Chicago Intellectual Property Law Blog) (Patent Baristas) (Hal Wegner)

Bridgelux – Cree and Boston University settle LED patent suits with Bridgelux (Green Patent Blog)

Card Activation Technologies – Panda Restaurant Group, Whole Foods Market, Barneys New York and others dragged into infringement litigation by CAT over gift card technology (Law360)

Honeywell International – Honeywell agrees to dismiss Acer America Corp from LCD patent suit (Law360)

Intellectual Ventures – Intellectual Ventures announces semi-conductor patent acquisition (IAM)

Medtronic – Medtronic, Boston Scientific agree to halt five patent spats stents, balloon catheters and other endovascular devices (Law360)

Samsung – Samsung, Pioneer settle two plasma television patent disputes (Law360)

SBJ IP Holdings 1 – SBJ sues retail giants including Toys’R’Us, and Blockbuster over patent relating to tracking consumer preferences over the internet and delivering personalised web pages to customers (Law360)

Technology Development and Licensing – TDL files patent infringement lawsuit against Dish Network and EchoStar over satellite television subscription packages and set-top boxes (Law360)

Thomas & Betts Corp – Cooper Industries, Thomas & Betts end connector patent battle (Law360)

Zoran Corp – Federal Judge won’t drop antitrust claims from Blu-Ray suit (Law360)


US Copyright

Why is it so difficult to opt-out of copyright? (Techdirt)  


US Copyright – Decisions

District Court N D Illinois: Copyright plaintiff need not identify specific portions of work allegedly copied: Kingsbury International Ltd v Trade the News, Inc (Chicago Intellectual Property Law Blog)

District Court C D California: Stan Lee had no legal right to transfer certain copyrights and trade marks to Delaware corporation he created when, under bankruptcy court order assets should have been transferred to SLC (Law360)

File your annual report: Embassy Software Corp v Ecopy, Inc (Property intangible)


US Trademarks

Trade mark infringement: Factors considered in consumer confusion (IP Law Blog)

Brandweek: Established brands still rank high with consumers (Saunders & Silverstein)

US Chamber releases ‘IP Protection & Enforcement Manual’ (Patent Baristas) (Managing Intellectual Property)

An expert witness shares insights on trade mark surveys (Seattle Trademark Lawyer)


US Trade Marks – Decisions

Ninth Circuit finds federal law, not tribal law governs trade mark dispute: Philip Morris USA v King Mountain Tobacco Co (Seattle Trademark Lawyer)

TTAB: Cosmopolitan Magazine overwhelms COSMO.COM applicant in 2(d) opposition: Hearst Communications, Inc v Charles Browning Wilson (not precedential) (TTABlog)

TTAB: Opposer fails to prove priority in edible bird’s nest 2(d) tussle: Royal King, Inc v TJ Seven Incorporation (not precedential) (TTABlog)

TTAB: Stylised FRANCO FERRARI confusingly similar to FERRARI and FRANCO FERRARO: In re Franco Ferrari Srl (not precedential) (TTABlog)

TTAB affirms 2(d) refusal: MERCURY for vodka and distilled spirits likely to confuse: In re Mercury-2 LTD (not precedential) (TTABlog)

Ron Coleman on TTAB’s HEEB decision (TTABlog)


US Trade Marks – Lawsuits and strategic steps

FreemantleMedia North America – Makers of American Idol, FreemantleMedia, sues strip club over use of the term ‘Stripper Idol’ for contest (Intellectual Property Law Blog)

Major Baseball League – Major Baseball League sues former licensee Donruss over baseball trading cards (IP Watchdog)

Trader Joe’s Co – Trader Joe’s, Gristedes resolve Trader John’s trade mark dispute (Law360)

Walt Disney Co – Fitzpatrick Cella Harper & Scinto to pay attorneys’ fees and other costs associated with unnecessary motion to disqualify firm from defending Walt Disney in trade mark suit (Law360)

Woolrich – Woolrich sues Eddie Bauer in Pennsylvania for trade mark infringement (Seattle Trademark Lawyer)




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