General Global Week in Review 15 February 2010 from IP Think Tank

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Highlights this week included:

CAFC: Inducing infringement knowledge-of-patent element satisfied by ‘deliberate indifference’; Goods sold f.o.b. China considered sold ‘within the United States’ for infringement purposes: SEB S.A. v. Montgomery Ward & Co (Patently-O) (Patently-O) (GRAY On Claims) (Inventive Step) (Patently-O)

Snowmageddon – USPTO closure from 8 to 11 February due to snow (Director’s Forum) (Patent Docs) (IAM)

Federal Court of Australia: No copyright in telephone directories: Telstra Corporation Limited v Phone Directories Company Pty Ltd (ipwars) (IP Whiteboard)

Global – General

Litigation trends in China, informal IP arrangements and politics at IP offices – IP Think Tank podcast 4 Feb 2010 (IP Think Tank)

2010 IP Hall of Fame inductees announced (IP Think Tank)

Intangible Assets…Are Management Teams Listening? (Business IP and Intangible Assets Report and Blog)

Year ahead: Reforming global IP systems – Trends in A2K in 2010 (IP Watch)

Organisational resilience intangible assets (Business IP and Intangible Assets Report and Blog)

Licensing salaries soar as recession puts premium on monetisation expertise (IAM)

World intellectual property day – 10th anniversary (Patent Librarian’s Notebook)

Global – Patents

SCP (Slow Committee on Patents) meeting (Innovationpartners)

RTX – Troll tactics against the trolls (Innovationpartners)

Are NPE’s the new patent plutonomies? (IPEG)

Patents and innovation (Spicy IP)
Global – Copyright

WIPO Copyright Treaty & WIPO Performances and Phonograms Treaty – two treaties enter into force, with respect to EU on 14 March 2010 (IPKat)

ACTA needs to be public, even if it is just about ‘enforcement’ (Public Knowledge)

INPI’s bulletins available online (IP Tango)


FCA: Coffee plungers, tea pots, designs and passing off: Playcorp Group of Companies Pty Ltd v Peter Bodum A/S (ipwars)

FCA: No copyright in telephone directories: Telstra Corporation Limited v Phone Directories Company Pty Ltd (ipwars) (IP Whiteboard)

Men at Work found to guilty of infringement of copyright in ‘Kookaburra Sits on the Old Gum Tree’: Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited (ipwars) (IPKat)

Don’t forget your filing dates – APO decision in Kelvindale Products Pty Ltd v TFH Temporary Fence Hire Pty Ltd (IP Whiteboard)

UWA’s special leave application refused this morning: University of Western Australia v Gray (IP Whiteboard)

Personal property securities reforms and collateral (IP Whiteboard)

Peer to patent down under (ipwars)

Olympic Flag Flap (Trademark Blog) (IPKat)

Victoria Government commits to CC as default licensing system (Creative Commons)


Brazil may target US IP to retaliate for WTO violation over cotton subsidies (Michael Geist)

Brazil launches public discussion project to amend copyright law (Moeller IP)


Evidentiary omissions lead to trademark appeal: Sanders v Smart & Biggar Intellectual Property and Technology Law (Trademark Blog)

Patent application deemed abandoned on the issue of who pays the maintenance fees (IP Osgoode)

Conference Board of Canada releases new IP report, backs away from prior recommendations (Michael Geist)

Nelson Landry appointed to Copyright Board (Excess Copyright)

Washington High School student sells Inunnguaq to Olympic travellers (Seattle Trademark Lawyer)


Gong Xi Fa Cai (Happy Chinese New Year) (IP Think Tank)

IPR update: Patent Law’s implementing regulations amended (China Blawg)

Civil liability proves to be new weapon against the export of trademarks infringing goods (China Blawg)

IPR update: Counterfeiting arrests (China Blawg)

Chinese trademarks are more important than you think (Trademark Blog)

‘Big cleaning’ with pomelo-leaf before Chinese new year – ‘utility patent’ and ‘trade mark’ of fresh pomelo leaf (Patent Agent in Hong Kong)

Something screwy going on with Silk Market prosecution (China Hearsay)

DAB trademark – class 25 and class 41 (Patent Agent in Hong Kong)

Yes Virginia, there is IP protection in China (China Law Blog)

Protecting intellectual property in economic uncertainty – the Chinese lead by example (IP Whiteboard)


Possible accession to the Madrid Protocol (Moeller IP)


Egypt moves towards Creative Commons copyright licence (Afro-IP)

Knowledge access blooms in the desert: Egypt’s fragile stake in IP (IP Watch)


Changes to OHIM’s Manual of Trade Mark Practice: Usually no similarity between restaurant services and drinks (Class 46)

European Commission responds to ACTA questions (Michael Geist)

New logo for all EU organic products (Class 46)

Claiming priority: PCT to RCD (Class 99)

No real progress toward improved European patent system according to Patent World article ‘Another False Dawn’ (PatLit)

More TSG and GI terms gain Euro-protection – Skiladnis TSG for Lithuianian meat product, Pesca di Verona PGI for Italian peach, Idrijski žlikrofi TSG for Slovenian pasta, Jihočeská Zlatá Niva PGI for cheese which has been the subject of dispute between the Czech Republic and Slovakia (Class 46)


Another MEP raises ACTA concerns (Michael Geist)


Logorama drama (1709 Copyright Blog)


7th Civil Chamber of Landgericht Munich upholds ex parte injunction barring Sony from distributing ‘Video Phone’ clip finding Beyonce’s outfit infringed Triumph’s copyright in designer underwear (IPKat)

Copyright struggle about ‘Mein Kampf’ (IPKat)

McDonald’s going ‘green’ – but not in an ecological sense… (Class 46)

German Federal Patent Court: Registrability of labels (Etikett) (Class 46)


Indian “Bayh Dole” and parliamentary committee hearings (Spicy IP)


Israel to be downgraded on Special 301 List? (Michael Geist)


If this cheese says ‘Monaco’ its Italian – PDO status for Provolone del Monaco (Class 46)


Can traditional cuisine be protected? (IP Tango)

South Africa

Brand bullies: IP and the SMEs – difficulties faced by small companies in defending trade mark infringement claims (Afro-IP)

Avoiding the ambush: FIFA World Cup (Afro-IP)


JAVA MONSTER vulnerable and unprotected in Switzerland (Class 46)


Uganda’s Copyright Regulations finally published! (Afro-IP)

United Kingdom

EWCA (Civ): Carving out an exception to injunctive relief: Virgin Atlantic v Premium Aircraft (t/a Contour (PatLit)

EWHC (Ch): No short-cut to passing-off where forgery alleged: Radiocomms Systems Ltd v Radio Communications Systems Ltd & Tomlinson (IPKat)

EWHC (Ch): Who pays when a copyright claim is dropped?: Far Out Productions Inc v Unilever UK & CN Holdings Ltd & Ors (IP finance)

UK IPO: Bodtrade 54 succeeds in battle against Virgin Enterprises in fight to register YOU CAN’T BE A VIRGIN ALL YOUR LIFE ITS TIME (IP Whiteboard)

Phonographic Performance Limited lose tariff appeal against British Beer and Pub Association and British Hospitality Association (1709 Copyright Blog)

UK Company Names Tribunal issues guidance on ‘without prejudice’ (Class 46)

United States
US General

Snowmageddon – USPTO closure from 8 to 11 February due to snow (Director’s Forum) (Patent Docs) (IAM)

New US IP task force to combat IP ‘crimes’ (IP Watch)

Who’s driving up the costs of litigation? (Or ‘Maybe the recession’s worse than we think!’) (IP Litigation Blog)

Soros sells back film rights to Viacom: Did I get it right? (IP finance)

US General – Lawsuits and strategic steps

LegalZoom – LegalZoom sued for unauthorised practice of law (The Invent Blog)

US Patent Reform

Reines and Greenblatt publish ‘Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II’ (Patently-O) (GRAY On Claims)

US Patents

USPTO extends period for public comment and period of effectiveness for recent programs (Patent Docs) (Patents4Life)

The USPTO’s proposed fee increase – potential effects to stakeholders (Found Persuasive)

USPTO notice of document faxed upside down (Anticipate This!)

When is National Inventors’ Day? (Securing Innovation)

Closer look at new PWC patent study (The Prior Art)

US Patents – Decisions

CAFC: Inducing infringement knowledge-of-patent element satisfied by ‘deliberate indifference’; Goods sold f.o.b. China considered sold ‘within the United States’ for infringement purposes: SEB S.A. v. Montgomery Ward & Co (Patently-O) (Patently-O) (GRAY On Claims) (Inventive Step) (Patently-O)

District Court S D Iowa: Intent to deceive inferred when plaintiff adds element to patent claims to overcome rejection but fails to disclose prior art containing that element: Sabasta et al v Buckaroos, Inc (Docket Report)

District Court E D New York: Failure to disclose specific combination of prior art precludes invalidity argument based on such combination: Metso Minerals, Inc. v. Powerscreen International Distribution Limited et al. (Docket Report)

District Court C D California: Real world difficulty in combining prior art teachings does not trump express suggestion to combine: Ronald A. Katz Technology Licensing L P v. Echostar Communications Corporation et al (Docket Report)

District Court Utah: Misleading argument concerning disclosed prior art is insufficient to support claim of inequitable conduct: K-TEC v. Vita-Mix (Docket Report)

District Court S D Iowa: Patentee’s failure to cite prior art leads to inequitable conduct on summary judgment: Sabasta v Buckaroos, Inc (Peter Zura’s 271 Patent Blog)

District Court E D Texas: Case found ‘exceptional’ after summary judgment of noninfringement; fees and costs awarded from Markman ruling forward: Sorkin v Universal Building Products (

District Court E D Texas: Judgment as matter of law granted on wilful infringement claims: Smith & Nephew, Inc v Arthrex, Inc ( (

ITC: Public version of initial determination finding no violation of s 337 by respondents including Tower Semiconductor, Jazz Semiconductor and others in investigation concerning semiconductor integration circuits using tungsten metallization commenced in response to complaint by LSI and Agere (ITC 337 Law Blog)

US Patents – Lawsuits and strategic steps

Continental Datalabel – District Court N D Illinois proposes dismissing declaratory judgment counterclaims as duplicative of plaintiff’s patent claims: Continental Datalabel, Inc v Avery Dennison Corp (Chicago Intellectual Property Law Blog)

EON – Infringement contentions ordered supplemented: EON Corp. IP Holdings, LLC v Sensus USA, Inc (

Nilssen – Nilssen appeal from order finding case exceptional and awarding attorneys’ fees: Nilssen v Walmart (PATracer)

Sorensen – Sorensen (sometimes spelled Sorenson) attempts to appeal from order to stay case pending patent re-examination: Sorensen v. Dorman Products (PATracer)

US Copyright

Tell USTR balanced copyright is important (Public Knowledge) (Ars Technica)

US Copyright – Decisions

5th Circuit on corporate logos, First Amendment, VARA and copyright, utilitarian objects and Ralph the cactus planter: Kleinman v. City of San Marcos (Copyright Litigation Blog)

US Copyright – Lawsuits and strategic steps

ASCAP – Bruce Springsteen wants his name removed from list of plaintiffs in copyright lawsuit launched by ASCAP over cover band performance license fees (IP Factor)

US Trademarks

TTABlog bonus: Your very own FRAUD-O-METER (TTABlog)

Tiger Woods naming and branding still tops, even if he quits golf (Name Wire)

US Trade Marks – Decisions

District Court N D Illinois finds no trademark rights and no infringement in Sand Hill Advisors dispute: Sand Hill Advisors, LLC v Sand Hill Advisors, LLC (Seattle Trademark Lawyer)

District Court N D Illinois: Trademark case is both a new case and an appeal: Loufrani v. Wal-Mart Stores, Inc (Chicago Intellectual Property Law Blog)

TTAB precedential no 4: TxDOT wins TTAB 2(d) tussle over DON’T MESS WITH TEXAS for clothing: Texas Department of Transportation v Richard Tucker (TTABlog)

TTAB affirms 2(d) refusal of BLACK HORSE, finding restaurant services and sauces related: In re SKP and Associates, Inc (not precedential) (TTABlog)

TTAB affirms 2(d) refusal of VABEENE over VABENE, finding suits, handbags, and footwear related: In re Müller, Durrer & Müller, Schuhateliers (not precedential) (TTABlog)

TTAB affirms 2(e)(2) geographical descriptiveness refusal of US PATIENT REGISTRY for Medical Information Database: In re Milwaukee Institute, Inc. (not precedential) (TTABlog)

9th Circuit affirms injunction against use of designer’s name as trademark: Pacific Sunwear of California, Inc. v. Kira Plastinina Style, Ltd (Seattle Trademark Lawyer)

US Trade Marks – Lawsuits and strategic steps

Aerosmith – Aerosmith trademark battle near (Trademark Blog of the Trademark Lawyer’s Mind)

Dakota Micro – University trademarks versus small business trademark: Dakota Micro’s AgCam (Trademark Blog of the Trademark Lawyer’s Mind)

Heart Attack Grill – Heart Attack Grill v Heart Stoppers for Burgers (Trademark Blog)

Jersey Shore – Jersey Shore trademark for ‘The Situation’ may turn into a priority dispute (Trademark Blog of the Trademark Lawyer’s Mind)

Medecins Sans Frontiere- DOCTORS WITHOUT BORDERS v PATIENTS WITHOUT BORDERS: Bureau International de Medecins Sans Frontiere v Patients Without Borders, LLC (The Trademark Blog)

North Face – Judge denies South Butt’s motion to dismiss trademark infringement and dilution battle brought by North Face (Patently-O)

University of Southern California – Trademark dispute USC v USC (Trademark Blog of the Trademark Lawyer’s Mind)



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