General Global Week in Review 23 August 2010 from IP Think Tank

Here is Think IP Strategy’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

Highlights this week included:

US: Examiners ignore applicant-submitted prior art (Patently-O) (271 Patent Blog) (IPBiz)

India: Rajya Sabha passes the Trademark Amendment Bill, 2009 after a spirited debate (Spicy IP)

Please join the discussion by adding your comments on any of these stories, and please do let us know if you think we’ve missed something important, or if there is a source you think should be monitored.


Global – General

How to generate an effective list of IP action points (post 2 of 5 on IP Strategic Reviews) (IP Think Tank)

Reviewing your approach to IP (post 1 of 5 on IP Strategic Reviews) (IP Think Tank)

Proposed WIPO strategic plan shows positioning for uncertain future (IP Watch)

Business information poaching – The world’s oldest profession! (Business IP and Intangible Asset Blog)

Global – Patents

Process patent infringement: reversing the burden of proof (PatLit)

Global – Copyright

ACTA round ten concludes: Deal may be one month away, Updated text to remain secret (Michael Geist) (Michael Geist)


Australia votes – but not on innovation (Patentology)

High Court on trade marks: Gallo v. Lion Nathan; Health World v. Shin-Sun (ipwars)

A note on the limitations of the Australian ‘grace period’ (Patentology)

Free online tool for small businesses – Intellectual Property Explorer (IP Whiteboard)


The Afro-Brazil mixture – includes IP (IP tango)

A double Geographical indication for Brazilian wines (IP tango)

Moral damages cannot be assumed as an automatic consequence of counterfeit merchandise (IP tango)


Is relying on open access materials ‘irresponsible’? (Michael Geist)


Will China ever really protect IP? (China Law Blog)

Shanzhai Saturday: Inside a Putian shoe factory – Chinese imitation and brand counterfeiting (China Hearsay)


Opinion on the compatibility of the proposed European Patent Court System with European Treaty Law (EPLAW)

The dark side of GIs: protection for ‘Palomar’ hides behind ‘Valencia’ (jiplp)

Community Design Registration Certificates (Class 99)


Is it a distinctive trademark NEW WAVE? (RelatIP)


Federal Supreme Court decides on admissibility to file appeals in patent infringement proceedings – Crimpwerkzeug III (crimping tool III) (EPLAW)

Further details about the face-lifted Star…: stretch-version of Daimler’s famous S Class manufactured by a non-authorized German car tuner infringes registered Community Design (Class 99)

Germany’s rise to industrial power: due to lack of copyright? – Eckhard Höffner’s controversial theory (IPKat) (1709 Blog)


Rajya Sabha passes the Trademark Amendment Bill, 2009 after a spirited debate (Spicy IP)

Copyright Division replies to RTI queries on the qualifications and eligibility of the Chairperson of the Copyright Board (Spicy IP)

An exclusionary definition for the term ‘efficacy’ under section 3(d) of the Indian Patent Act (Spicy IP)

Trademarking Munnabhai (Spicy IP)

Prime Minister gives green signal to National Innovation Council (Spicy IP)

Business World article on the ‘Charge of the IPR brigade’ (Spicy IP)


Israel Patent Office gets ISO certification (IP Factor)

Israel Ruling on trademarks for slogans (IP Factor)


Libya’s new trade mark rules (Afro-IP)

New Zealand

Claims under construction in New Zealand: Hammar Maskin AB & Ors v Steelbro New Zealand Limited (Patentology)


Community Trade Mark infringements in the Netherlands: how exclusive is the jurisdiction of The Hague District Court? (Class 46)


Reporter trademark cancelled due to lack of use (IP Factor)


Rwanda’s upgrades to IP (Afro-IP)


Coffee soup?  Srsly?  Decision to refuse application for WILD BEAN CAFE in Switzerland (Class 46)

United Kingdom

EWHC (Ch): Paying for music video broadcasts: back to the Tribunal: CSC Media Group Ltd v. Video Performance Ltd (IPKat) (1709 Blog)

Good news for the UK’s IP law service providers and perhaps for others too (IAM)

Two bites at the cherry but not enhanced costs: Wragg v Donnelly (PatLit)

United States

US General

NY Times review ‘Common as Air’: History of IP (Trademark Blog)

US Patent Reform

RIP Patent Reform 2010? (271 Patent Blog)

US Patents

Examiners ignore applicant-submitted prior art (Patently-O) (271 Patent Blog) (IPBiz)

President Obama signs $129M USPTO Supplemental Appropriation Bill (Maier& Maier) (IAM)

Ombudsman Pilot Program of the USPTO (Anticipate This!)

The Technology Transfer Office: Start-up help or hindrance? (IP finance)

Valuing patents and litigation (IP finance)

When they say it’s about the money, it’s not about the money (Patenthink)

New patent regime won’t help (Patenthink)

Patent office swallows Supreme Court’s ‘abstract idea’ albatross whole (with hook, line, and sinker) (Patenthink)

Outsource the patent office to India? (Patenthink)

Patents likely matter little to US innovation and job creation (IP Asset Maximizer Blog)

US Patents – Decisions

CAFC: Construing the ‘function’ of a means-plus-function claim element Baran v. Medical Device (Patently-O)

Impact of case management order: CAFC decision in Baran v. Medical Device (IPBiz)

CAFC: Overseas contract requiring delivery and performance in the U.S. constitutes a ‘sale’ under Section 271(a): Transocean v. Maersk (271 Patent Blog) (Patently-O)

District Court S D Texas: Continuing use of accused products sold prior to notice of patent is not direct infringement sufficient to support claim of indirect infringement: Tesco v Weatherford (Docket Report)

District Court E D Texas: Enhanced damages & attorney’s fees: Plaintiff awarded $5 million in fees, $3 million in expert expenses, and treble damages as a result of litigation misconduct by defendant: ReedHycalog UK, Ltd. et al v. Diamond Innovations Inc ( (Docket Report)

District Court W D Pennsylvania will revisit and reconsider the standing issue in false marking case: United States of America ex rel FLFMC, LLC v. Ace Hardware Corp. (Docket Report)

District Court E D Texas: Competition in Marketplace, infringer’s bankruptcy, and importance of patent to plaintiff’s business all favor imposition of permanent injunction: Clearvalue v Pearl River; Retractable Technologies v Occupational & Medical Innovations (Docket Report)

District Court E D Texas: As part of settlement agreement, false marking defendant gets a free pass on all future allegations of false marking: Patent Group, LLC v. P.F. Harris Manufacturing Company, LLC (Docket Report)

District Court C D California: False marking Plaintiff lacks standing absent ‘concrete, particularized injury’ to United States: Shizzle v Aviva (Docket Report)

BPAI’s ‘administrative estoppel’: Untraversed PTO findings may be barred in later PTO proceedings: Ex Parte Smith (271 Patent Blog)

US Patents – Lawsuits and strategic steps

Kruse – Kruse asserts diesel engine patents against more big automakers (Green Patent Blog)

Microjet – Microjet’s motion for termination and entry of consent order denied in Inv. No. 337-TA-723 in Certain Inkjet Cartridges with Printheads and Components Thereof (ITC 337 Update)

Richtek – Chief ALJ Luckern terminates DC-DC Controller investigation based on settlement between Richtek and VisionTek (ITC 337 Update)

SMC Corporation – ALJ Charneski issues remand initial determination in certain connecting devices (337-TA-587) (ITC Law Blog)

Tara Toy Corp – Wanted: Wooly Willy aka Frank the false marker (Docket Report)

Toyota – From preclusion to conclusion: Paice and Toyota settle hybrid vehicle patent suits (Green Patent Blog)

Vizio – ITC institutes Inv. No. 337-TA-780 on certain Flat Panel Digital Televisions and Components Thereof against LG (ITC 337 Update)

Vizio – ITC institutes investigation (337-TA-733) regarding certain Flat Panel Digital Televisions against LG (ITC Law Blog) (ITC Law Blog)

US Copyright

Sublicenses by exclusive licensees of copyrights – Copyright ‘clarification’ may change the law – Senate passes Copyright Cleanup, Clarification, and Corrections Act of 2010, S. 3689 (IP Law Blog)

‘Freedom to copy’ and the fashion industry (IPKat)

US Copyright – Decisions

9th Circuit: Copyright Act preempts overlapping right of publicity claim: Jules Jordan Video, Inc. v. 144942 Canada Inc (Seattle Trademark Lawyer) (Property, intangible)

US Copyright – Lawsuits and strategic steps

Ascalon, David – Moral rights… and unhappy bedfellows – David Ascalon v Department for Parks and Recreation in Harrisburg (1709 Blog)

US Trade Marks – Decisions

9th Circuit: Without resulting prejudice, five year delay does not support laches defense: Derek and Constance Lee Corp. v. Kim Seng Co. (Seattle Trademark Lawyer)

TTAB precedential no. 32: TTAB finds bands on Mag rechargeable flashlight functional, lacking in acquired distinctiveness: Mag Instrument, Inc. v. The Brinkmann Corporation (TTABlog)

Fraud is really hard to prove – TTAB decision in Slaska Wytwornia Wodek Gatunkowtch “Polmos” SA v. Stawski Distributing Co., Inc. (Property, intangible)

District Court W D Washington dismisses Lanham Act claim based on bid to sell prison toothbrushes: Loops, LLC v. Phoenix Trading, Inc. (Seattle Trademark Lawyer)

District Court N D Illinois: Fraud sufficiently pled by citing to earlier fraud decision: Golden Golf Lighting, Inc. v. Greenwich Indus., L.P. (Chicago IP Litigation Blog)

Test your TTAB Judge-ability: Is an amendment from MT RAINIER to RAINIER permissible? (TTABlog)

Ruling that TTAB misapplied Section 2(e)(3) test, District Court reverses TTAB’s GUANTANAMERA decision (TTABlog)

TTAB reverses 2(d) refusal of HEARTWORKS despite substantial identity of cited mark (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Bertolli – An oil slick of legal proportions – International Olive Council (IP finance)

L.A. Triumph, Inc.The Material Girl’s battle for MATERIAL GIRL: L.A. Triumph, Inc. v. Material Girl Brand, LLC (Las Vegas Trademark Attorney) (IPKat)

Polizzi – SNOOKY v SNOOKI: Nicole Polizzi files to cover books and class 41 personal appearances (Trademark Blog)

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