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General Global Week in Review 24 Aug 09 from IP Think Tank

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

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Highlights this week included:

US CAFC affirms that patent ownership (and standing) can vest through operation of law: Sky Technologies v SAP AG (Peter Zura’s 271 Patent Blog) (Patently-O) (Property, intangible)

US CAFC grants en banc request to challenge written description requirement: Ariad v Lilly (Patently-O) (Filewrapper) (Washington State Patent Law Blog) (Patent Docs) (Holman’s Biotech IP Blog)

Global – General

IP business models, licensing and the Pirate Party rolls on IP Think Tank podcast 13 August 2009 (IP Think Tank)

IP strategy at Northwestern – What would you teach law students about international IP strategy? (Tangible IP)

Global IP law: Two recent publications ‘Global Challenge of Intellectual Property Rights’ by R Bird and S C Jain and ‘Global Intellectual Property Law’ by G Dutfield and U Suthersanen (IPKat)

Global – Trade Marks / Brands

What price brands on the balance sheet? (IP finance)

Global – Patents

Access to Research for Development and Innovation scheme gives Patent Offices in developing countries free or low-cost access to 150 online scientific journals (Patenting Lives) (Spicy IP)

IP strategies for high growth companies (IP Asset Maximizer Blog)

Is IP causing global warming? – response to Sidley Austin newsletter on proposals regarding green technology (IPKat)

Invention harvesting vs directed inventing (Canada Patent Blog)

Flash of genius – Some lessons history has taught regarding IP strategy (IPEG)

Inventors beware: Yugo prices suggest Yugo quality (IP Watchdog)

Global – Copyright

Theodore Levitt and copyright (Moral Panics and the Copyright Wars)

The why of property-talk in the copyright wars (Moral Panics and the Copyright Wars) (Moral Panics and the Copyright Wars) (Moral Panics and the Copyright Wars) (Moral Panics and the Copyright Wars) (Moral Panics and the Copyright Wars) (Moral Panics and the Copyright Wars) (Moral Panics and the Copyright Wars)


Federal Court: Guylian unsuccessful in its attempt to register its seahorse-like shape as a trade mark for chocolates: Chocolaterie Guylian NV v Registrar of Trade Marks (Australian Trade Marks Law Blog)

Australian fast track IP litigation (IP Osgoode)


When is movie plagiarism legal? – Response to earlier Spicy IP post, considers Danish law (Innovationpartners)


European Commission to commission research into IP systems (IPKat)

European Inventor Award 2010 (IPKat)

More confusion about EP divisionals (IPKat)

Director of DKPTO heading for EPO chair (Innovationpartners)

Want to create a mega-research project? Call ERIC (European Research Infrastructure Consortium) (IP finance)


German Federal Patent Court (Bundespatentgericht): Annual report for 2008 (Class 46)

German Federal Patent Court (Bundespatentgericht) finds SCHLÜSEL lacks distinctiveness for locksmith and security devices and services (Schlüssel means ‘key’) (Class 46)


Confederation of Indian Industry’s conference on combating counterfeiting and piracy sparks lively debate (Spicy IP)

The music compulsory licensing wars: Copyright Board Chairman likely to be replaced? (Spicy IP)

NUJS IP talk: Raj Gandesha on section 3(d) and incremental innovation (Spicy IP)

Discussion of Business Standard article on Prof Carlos Correa’s displeasure at being misquoted by the Technical Expert Group (Spicy IP)


Should Kenya merge its industrial property and copyright offices? (Afro-IP)


Is Pakistan worth patenting in? (IPKat)


PGI status granted to Portuguese sweet potato Batata doce de Aljezur (Class 46)


Serbia ratifies Vienna Agreement on Figurative Elements of Marks (Class 46)

Municipal Court of Nis issues three-month prison sentence and nominal fine to individual found to have infringed copyright in Sony PlayStation games (The IP Factor)

United Kingdom

EWHC (Ch): Stella’s NUDE gets the ‘go ahead’: Nude Brands Limited v Stella McCartney Limited (IPKat) (Class 46) (The IP Factor)

EWHC (Ch) grants interim relief in action for passing off brought by celebrity waxing and depilatory business: Strip Ltd v Strip Pte Ltd and Strip UK Ltd (IPKat)

Chancery Court judge upholds Revenue & Customs decision to no longer detain goods in transit bearing NOKIA trademark (Global IP Watch)

Oxford Airport rebrands to London Oxford Airport in hope of raising its international profile (IPKat)

Pimms brand owner, Diageo, reported to have brought copyright infringement claim against Sainsbury’s over Pitchers branding(1709 Copyright Blog) (IPKat)

Resisting oppositions and cancellations in the UK: a new practice notice (Class 46)

UK-IPO issues practice notice relating to reinstatement of patent applications (IPKat)

BBC warns tourists to avoid buying fake goods (The IP Factor)

United States
US General

Proof of actual fraud on the Patent Office; defendant agrees to cooperate with investigation of former USPTO employee accomplice: US v Reid (Patently-O) (Peter Zura’s 271 Patent Blog)

When nostalgia meets business reality: The case of baseball cards – discussion of NYT article ‘Topps Gets Exclusive Deal with Baseball, Landing a Blow to Upper Deck’ (IP finance)

Readers’ Digest US files for Chapter 11 bankruptcy (IP finance)

US General – Decisions

Court of Appeal for the 4th Circuit: Injunction after trade secret case was too broad in prohibiting customer solicitation: Retirement Group v Galante (IP Law Observer)

Court of Appeal for the 2nd Circuit: Bad faith trade secret claims brought for anti-competitive reasons justify $1.6M sanction: FLIR Systems v Parrish (IP Law Observer)

US General – Lawsuits and strategic steps

Anytime Fitness – Anytime Fitness files suit against Las Vegas franchisee including claims of trade mark infringement, trade secret misappropriation: Anytime Fitness v Rainbow Fitness et al (Las Vegas Trademark Attorney)

US Patents

Kappos to focus on reducing patent backlog (Managing Intellectual Property)

Awaiting Kappos’ decision on claims and continuations (IP Watchdog)

Culture at PTO responsible for rising rejection rate – discussion of Milwaukee Journal Sentinel article (Inventive Step)

Estimated workload of preparing and filing re-examinations (Patently-O)

Reissue applications over time (Patently-O)

Revisiting the presumption of validity (Peter Zura’s 271 Patent Blog)

The applied/abstract distinction is key to §101 patentability (Patently-O)

More work, less money for the PTO is a BIG problem (IP Watchdog)

‘Keep your hands off our bleeding millions!’ patent agent tells LinkedIn aliens – illegal outsourcing of patent applications (IPKat)

What should a CEO know about patents? (IP Watchdog)

Making a Federal Circuit case of that? – unusually entertaining cases before the CAFC: Cornish v Doll (Patently-O)

The Independent Inventor’s Handbook (IP Watchdog)

US Patents – Decisions

CAFC affirms that patent ownership (and standing) can vest through operation of law: Sky Technologies v SAP AG (Peter Zura’s 271 Patent Blog) (Patently-O) (Property, intangible)

CAFC en banc: Methods do not have exportable components and therefore method claims cannot be infringed under section 271(f): Cardiac Pacemaker v St Jude (Patently-O) (Inventive Step)

CAFC: Dependent claim improperly held obvious (when independent is nonobvious): Callaway Golf v Acushnet (Patently-O) (Global IP Watch)

CAFC: Prosecution disclaimer applies even if the disclaimer results in a negative claim limitation: RFID Tracker, Ltd v Wal-Mart Stores, Inc (Gray on Claims)

CAFC: Fraud on the Patent Office: Federal Circuit emphasises Rule 9(b) heightened pleading requirement for defense of inequitable conduct: Exergen Corp v Wal-Mart Stores, CVS, and SAAT (Patently-O)

9th Circuit considers Sarbanes-Oxley whistleblower liability claim raised by firing IP lawyers who reported possible inequitable conduct by merger party: Van Asdale v Int’l Game Technol. (ISinIP)

CAFC grants en banc request to challenge written description requirement: Ariad v Lilly (Patently-O) (Filewrapper) (Washington State Patent Law Blog) (Patent Docs) (Holman’s Biotech IP Blog)

Supreme Court asked to yank obviousness from the purview of juries: Medela AG v Kinetic Concepts, Inc (Peter Zura’s 271 Patent Blog) (Patently-O)

All you need to know about Bilski in a 30 min podcast – debate between Prof M Risch and Prof J Sarnoff (IP Think Tank) (Patent Baristas) (Intellectual Property Watch) (Holman’s Biotech IP Blog)

US Patents – Lawsuits and strategic steps

InterDigital – ITC issues initial determination finding no violation of s337 by Nokia in investigation concerning 3G mobile handsets (ITC 337 Law Blog)

Juniper – Public Patent Foundation files amicus brief supporting Juniper’s false marking claim in patent infringement case brought by Enhanced Security Research (The Prior Art)

Knowles Electronics – ITC grants petitions for reconsideration and issues revised limited exclusion order and opinion in investigation concerning silicon microphone packages (ITC 337 Law Blog)

Nanosys – Quantum dot rivals Nanosys and Nanoco settle patent suit (Green Patent Blog)

Philips Lumileds Lighting Company – ITC judge issues initial determination granting Philips’ motion for termination of investigation concerning high-brightness light-emitting diodes (ITC 337 Law Blog)

Sipco – Sipco sues Florida Power & Light Co for infringement of smart grid patents (Green Patent Blog)

Tessera – ITC agrees to rescind cease and desist order against Motorola in investigation concerning semiconductor chips (ITC 337 Law Blog)

US Copyright

Movie monsters, fair use and best practices in the US – Warren v Spurlock (IP Osgoode)

US Trademarks

Are there brands in Wal-Mart’s future? – Project Impact initiative (IP finance)

US Trade Marks – Decisions

District Court S D New York: Picture not worth a 1000 words – Dilution and trade dress infringement claims dismissed in case concerning chair design: Heller Inc v Design Within Reach Inc (The Trademark Blog)

California Supreme Court on appropriation of likeness and Statute of Limitations in dispute between Russell Cristoff and Nestle (The IP Law Blog)

2nd Circuit: ownership of a mere pending application is insufficient to bring copyright suit: DMBJ Productions v Time TV et al (The Trademark Blog)

9th Circuit reverses dismissal of Jarritos’ trade mark infringement claim finding district court failed to analyse all Sleekcraft factors and give benefit of doubt to non-moving party: Jarritos Inc v Reyes (Seattle Trademark Lawyer)

District Court N D Illinois: Trade mark claims dismissed because dispute sounds in contract: Mindy’s Restaurant, Inc v Watters (Chicago Intellectual Property Law Blog)

Court finds ‘Custom RV Interiors’ trade name generic, so not protectable: Custom Auto Interiors, Inc v Custom RV Interiors, Inc (Seattle Trademark Lawyer)

TTAB affirms refusal: Applicant failed to comply with Rule 2.61(b) requirement for additional specimens: In re Anderson (not precedential) (TTABlog)

TTAB reverses ANDIAMO 2(d) refusal: Insufficient proof that wine and restaurant services are related: In re Wente Bros dba Tamas Estates (not precedential) (TTABlog)

TTAB refuses registration of SUNLAND for processed nuts, nut butters and raw nuts finding likelihood of confusion with registered mark SUN-LAND for ‘raisins, dried fruits, preserved fruits’: In re Sunland Inc (not precedential) (TTABlog)

TTAB finds WOW PRINTABLE COUPONS confusingly similar to WOW! MARKETING: In re Elena Potoupa (not precedential) (TTABlog)

TTAB tosses out bankrupt opposition to SECRETS OF THE MILLIONAIRE MIND: Learning Annex Holdings LLC v True Power International Ltd (not precedential) (TTABlog)

On summary judgment, TTAB finds SUPER HERO applicant lacked bona fide intent: DC Comics and Marvel Characters Inc v Michael Craig Silver (not precedential) (TTABlog)

In re Chocolate Confectionary Antitrust Litigation provides road map for how to exercise adequate control over use of mark while still maintaining separate corporate identities of the enterprise family members (Property, intangible)

US Trade Marks – Lawsuits and strategic steps

Sara Lee – Arnold sues Sara Lee over SANDWICH THINS (Las Vegas Trademark Attorney)


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