General Global Week in Review 24 Oct 2011 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:

The revised Trademark Law of China open for public comment (China Law Insight)

EU database of IP infringers needs more clarity to comply with law, says data protection watchdog (Out-Law)


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

Using IP strategically to help build businesses (IP Think Tank)

Butterfly effect and IP mimicry (IP Think Tank)

Chicago Ideas Week and the power of intellectual capital (Ocean Tomo Insights)

Recommendations for navigating IP terrain emerge from UNITAID Forum (IP Watch)

Can you feel the pulse, can you hear the heartbeat? – IP due diligence (IPKat)

WTO IP Committee to address medicines access, plain-packaged tobacco, ACTA (IP Watch)

How to respond to a cease & desist letter (IP Watch)


Global – Trade Marks / Brands

Brand valuation – why the big discrepancy in the amounts different rankings report? (IAM)

Two tools for selecting a suggestive trademark over a descriptive trademark (Seattle Trademark Lawyer)

TRIPS Council (24-25 Oct 2011) will discuss Para 6 implementation, Australia’s tobacco plain packaging bill 2011 and enforcement (KEI)


Global – Patents

Private and social costs of patent trolls (IP finance)

Featured resource: ArchPatent (Patent Quality Matters)



APO: Assuming next-day delivery of mail an ‘error’: TransLang Technology v Twister (Patentology)

You say Barrister and I say Barista? Proposed business name laws have hurdles attached (IP Whiteboard)



Wear and damage do not constitute a patent infringement – Ghent Court of Appeal judgment in Bollegraaf Recycling Machinery v Stora Enso Langerbrugge (Kluwer Patent Blog)



Supreme Court of Canada to announce whether leave to be granted in CSI “authorization” case: CMRRA-SODRAC Inc. (CSI) v. SOCAN, Sirius, Canadian Satellite Radio Inc (Excess Copyright)



Bringing down the baddies! Seizure of counterfeit ‘Solingen’ products (IP tango)



Book review monday: Patent Litigation in China (Patent Baristas)

The revised Trademark Law of China open for public comment (China Law Insight)

Copyright, a drawn sword towards bad faith trademark registration (China Law Insight)

Cake or death? The value of an apology in China (IPKat)

An ABC to losing your China IP (China Law Blog)



CJEU: Interpreation of Enforcement Directive: Realchemie v Bayer (EPLAW)

CJEU confirms validity of case-law regarding distinctive character of 3D trademarks which consist of appearance of product itself or packaging of a good: C-344/10 and C-345/10 (Class 46)

Highlights of CJEU decision in PepsiCo v Grupo Promer Mon Graphic C-281/10 (Class 99)

EU database of IP infringers needs more clarity to comply with law, says data protection watchdog (Out-Law)

OHIM: EuroClass replacing EuroAce and EuroNice classification tools (Class 46)

Everything you wanted to know about OHIM’s new mediation service…. (IPKat)

General Court upholds finding of likelihood of confusion between ROSALIA DE CASTRO and ROSALIA for wine: Case T-421/10 (Class 46)



“Containing” does not automatically disclose “consisting of” – German Federal Court of Justice tightens requirements for an amendment to be allowable under Art. 123(2) EPC (Kluwer Patent Blog)



Of ties, school ties and alumni – Delhi High Court decision in school alumni passing off case: St Stephen’s College v St Stephen’s College Alumni Association (Spicy IP)

An update on the PILs against the IPAB and the Copyright Board (Spicy IP)

Shah Rukh Khan’s RA.One in copyright dispute (Spicy IP)



Jakarta Commercial Court: Bajaj’s patent appeal refused due to missed deadline (IP Komodo)

Trade name disputes in Indonesia (IP Komodo)



Pre –grant entitlement actions in Kenya – Who should file a patent application? (Afro-IP)



Speed bumps emerge on KIPO Green Tech Fast Track (Green Patent Blog)



Who is defending the Spanish opposition to the drafted Unitary Patent? (PatLit)


United Kingdom

Limitation of damages in the Patents County Court (EPLAW)

UKIPO issues TPN (3/2011) – hearings in cases of invalidation on relative grounds (Class 46)


United States

US General

Does 337 apply to foreign trade secret missapropiation?: TianRui Group Co. v. ITC (Maier & Maier)

Theft of trade secrets from Dow, Cargill by Kexue Huang (IPBiz)


US Patent Reform

The disharmonious loss of the Hilmer doctrine (Pharma Patents)

Post grant dead zone coming soon (Patents Post-Grant)

America Invents Act: New opportunities for challenging the validity of US patents (PatLit)

AIA overview: Changes to inter partes re-examination (Patent Docs)

AIA Overview: Post-grant review provisions (Patent Docs)

AIA Overview: Prior user rights defense (Patent Docs)


US Patents

ITC issues final rules for gathering information on public interest issues (ITC 337 Law Blog) (Ocean Tomo Insights)

PTO numbers at end of FY2011 (Inventive Step)


US Patents – Decisions

CAFC: Del Zotto wins via obviousness defense: Stone Strong v Del Zotto Products of Florida (IPBiz)

Federal Circuit instructs district court to dismiss false marking case: FLFMC v Wham-O (GRAY on Claims)

CAFC addresses 35 USC 146 in Streck v Research & Diagnostic Sytems (IPBiz)

District Court E D Virginia: Standing for correction of inventorship: Informatics Application Group v Shkolnikov (Property, intangible)

District Court N D Illinois upholds $1M sanction for fabricated prior art: Rosenthal Collins Group v Trading Technologies (Chicago Intellectual Property Law Blog)

District Court N D California: Jury awards Conceptus $18 million based on 20% royalty rate: Conceptus v Hologic (Docket Report)

BPAI: Defects in patent reissue oaths inefficiently cured: Ex parte Thomas Budmiger (Patents Post Grant)


US Patents – Lawsuits and strategic steps

Alexsam – Damages expert may not rely on unproduced license within expert’s personal knowledge: Alexsam v. Shell Oil Company (Docket Report)

Aston Martin – Another e-mail discovery ruling: Effectively Illuminated Pathways, LLC v. Aston Martin, et al. (

Cross Match Technologies – Cross Match Technologies files appeal with Federal Circuit in biometric scanning devices investigation (ITC 337 Update)

GreenShift – Court issues mixed claim construction ruling in ethanol processing patent case (Green Patent Blog)

Velocys – Lack of factual basis for counsel’s representations to the court warrants sanctions under 28 U.S.C. § 1927: Velocys v Catacel (Docket Report)

Westinghouse – Westinghouse ITC complaint against Zep shines light on past litigation (Green Patent Blog)


US Copyright – Lawsuits and strategic steps

Golan – Copyright or copy-wrong? US Supreme Court hears arguments in a case concerning the shrinking public domain: Golan v Holder (IP Whiteboard)

Rihanna – Be inspired, but too much will cost you – Settlement reached after court opinion finding Rihanna’s‘S&M’ video infringed David La Chapelle’s copyright (Innovationpartners)


US Trademarks

USPTO Issues 8th Edition of TMEP (TTABlog)

Fourth quarter trademarks dashboard overview (Director’s Forum)


US Trade Marks – Decisions

Precedential no. 27: TTAB sustains 2(d) and dilution claims in MOTOWN challenge to MOTOWN METAL for toy vehicles: UMG Recordings, Inc. v. Mattel, Inc (TTABlog)

TTAB tosses out CAVERN CLUB fraud and 2(a) false association claims: Cavern City Tours v Hard Rock Café International (TTABlog)

Summary judgment: TTAB dismisses “MUSCLE MILK” 2(d) opposition to “NUTRI LECHE” (TTABlog)

Championship cabbage chucking – TTAB decision in St. Denis Parish v. Diana Von Straten (Property, intangible)

Which of these four section 2(d) refusals did the TTAB reverse?: In re KCK International, In re Filini Wine Company, In re CSI Collision Specialist, In re Boyer Refrigeration, Heating & A/C. (TTABlog)

Test your TTAB judge-ability on this trademark specimen of use: In re DV International (TTABlog)


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