General Global Week in Review 27 Mar 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: Continuation limits invalid; limits on claims and RCEs are ok: Tafas v Doll (Patently-O) (Law360) (Hal Wegner) (IAM) (Patent Baristas) (Promote the Progress) (Patent Docs) (Patent Docs) (Patent Docs) (IP Spotlight) (Inventive Step) (IP Watchdog) (Washington State Patent Law Blog) (Anticipate This!) (Peter Zura’s 271 Patent Blog) (California Biotech Law Blog) (Managing Intellectual Property) (Competitive Info) (Inventive Step) (Philip Brooks’ Patent Infringement Updates) (IP Frontline) (Patent Docs) (Intellectual Property Directions) (Post-Grant)

European Commission proposes to open negotiations for adoption of agreement creating unified patent litigation system (IAM) (PatLit) (Law360) (BLOG@IP::JUR)

EU Court of First Instance confirms refusal of Anheuser-Busch’s BUDWEISER Community trade mark: Anheuser-Busch v OHIM – Budejovicky Budvar (Class 46) (IPKat) (Law360) (Out-Law)

Global – General

IP Think Tank podcast interview with ‘The Invisible Edge’ authors Mark Blaxill and Ralph Eckhardt (IP Think Tank)

Neither US nor China appeals against WS/DS362 report (IP Dragon) (Intellectual Property Watch)

WIPO, UNICITRAL team up on IP and finance (Intellectual Property Watch)

Pressure for ACTA transparency builds (Michael Geist)

WIPO mediation: An idea whose time has come (IP ADR Blog)

Chief IP counsel and CIO: New best friends (Financial Aspects of Intellectual Property)

Become an intellectual property donor? (Technology Transfer Tactics)

Global – Trade Marks / Brands

Starfish and spiders – trade mark hazards for decentralised, non-hierarchical organisations (Property, intangible)

Global – Patents

Patent term cutbacks in Brazil and pharmaceutical pipelines – IP Think Tank podcast 23 March 2009 (IP Think Tank)

Agreement to simplify international patent classification system (WIPO) (IPKat) (Competitive Info)

Concerns voiced at WIPO over potential conflicts between IP and standards (Intellectual Property Watch)

Patent meeting debates linkages with development; exceptions & limitations (Intellectual Property Watch)

WIPO Patent Committee to consider four new reports, global challenges (Intellectual Property Watch)

Mr Francis Gurry on open innovation (BLOG@IP::JUR)

Why are patent allowance rates declining? (IP Spotlight)

Are patent exceptions necessary for climate change technology? Defining WIPO’s role (Intellectual Property Watch)

Introduction to patent monetisation resources for corporations and entrepreneurs (IP Asset Maximizer Blog)

Top PCT filing firms revealed (IAM)

Commercialising innovation mini-series – interview with industrial designer Jim Richardson (IP Watchdog)

Royalty triggers are fraught with litigation risk, so handle with care (Technology Transfer Tactics)

The IP zone: a new concept for introducing needed information and efficiencies into the patent monetisation market (IP Asset Maximizer Blog)

Independent inventors: Five ways to reduce the cost of patenting and get a better patent application (Patently-O)

Global – Copyright

DRM thwarts Gordon Brown’s effort to enjoy gift of classic American movies from Barack Obama (Intellectual Property Watch)

Is creative commons becoming mainstream? (Ip’s What’s Up)


New US Trade Representative – Afro implications (Afro-IP)


Official collective management organisation for film directors (IP tango)


An Asian perspective on the credit crunch (Managing Intellectual Property)


Scotch Whisky Association seeks leave to appeal FCA decision to the Supreme Court in trade mark battle over GLEN (Excess Copyright)


Third revision of China’s patent law – Criteria for granting patent rights (Post-Grant)


AG opines (but not in English) on design ownership: Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo, S.L. and Acierta Product & Position, S.A. (IPKat)

CFI: CTM grant not contrary to Portuguese business name ruling: Alberto Jorge Moreira da Fonseca, Lda v OHIM, General Óptica, SA, intervening (Class 46)

CFI confirms refusal of Anheuser-Busch’s BUDWEISER Community trade mark: Anheuser-Busch v OHIM – Budejovicky Budvar (Class 46) (IPKat) (Law360) (Out-Law)

ACTA negotiation powers for EU Commission (BLOG@IP::JUR)

EU sound recording term extension vote delayed (Excess Copyright)

EP divisional applications – the new 2 year rule (IPKat)

Patent applications slow as rejections rise (Intellectual Property Watch) (Managing Intellectual Property)

European Commission proposes to open negotiations for adoption of agreement creating unified patent litigation system (IAM) (PatLit) (Law360) (BLOG@IP::JUR)

Double patenting at the EPO (IPKat) (IPKat)

Major renumbering inconvenience ahead for European trade mark practitioners: Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (IPKat) (Class 46) (Class 46)

OHIM fee cut in early May (Class 46) (BLOG@IP::JUR)

PDO application for MAKÓI VÖRÖSHAGYMA and MAKÓI HAGYMA for Hungarian onions (Class 46)

Amendments requested for PROSCIUTTO DI NORCIA, LA BELLA DELLA DAUNIA GI specifications (Class 46) (IPKat)

PGI application for AMARENE BRUSCHE DI MODENA for sour cherry jam (Class 46)


French patent information – gratuit! (IPKat)


Regional Court Munich I partly rejects Bavarian state government’s attempt to use copyright laws to prevent reprints of Nazi newspaper by British publisher Peter McGee (IPKat) (The IP Factor)


Delhi High Court restores PPL’s right to sue for copyright infringement on behalf of its members: PPL v Hotel Gold Regency & Ors (Spicy IP)

Punitive damages as effective penalty (International Law Office)

Religion and IP: The tales of Tirupati, Attukal and Osho (Spicy IP)

Growing promiscuity of Indian courts in granting ‘ex parte’ injunctions (Spicy IP)

Madras High Court: Ramkumar dual SIM patent case: a declaratory suit? (Spicy IP)


Sharp appeals ruling in patent battle with Samsung related to LCD products (Law360)


High Court of Kenya denies plaintiff’s bid to enjoin defendant from threatening plaintiff’s clients and customers in sanitary bin patent case: Rentokil Initial Kenya Ltd v Sanitam Services (EA) Ltd (Afro-IP) (Afro-IP) (IP Kenya)


Dutch Supreme Court: Boston Scientific v Medinol – Risk of invalidation of entire patent in Netherlands now reduced (PatLit)


NCC tackling piracy through partnerships (Afro-IP)


Lindt’s problem with hares: trade mark dispute between Lindt & Sprϋngli and Terrivita (Class 46)


Unfair competition law complements, rather than substitutes for, Trademarks Act (International Law Office)

Spanish CTM Court issues resolution on limits to joinder of actions in CTM cases (Class 46)

United Kingdom

IPO issues Tribunal Practice Notice on requests for stays or suspensions in inter partes proceedings (Class 46)

Patent County court forced to relocate due to fire (Managing Intellectual Property)

Patent litigation reform in the UK: response to Burdon proposals – Patent World article (PatLit)

United States
US General

Gary Locke confirmed as US Commerce Secretary (Intellectual Property Watch) (IAM) (Patent Docs) (Managing Intellectual Property)

US Patent Reform

Senate Judiciary Committee meeting 26 March – US patent reform legislation progressing; committee to reconvene next week (Intellectual Property Watch) (IP Watchdog) (IP Watchdog) (Patent Docs) (Hal Wegner) (Law360)

Sen Kyl introduces alternative to Leahy Patent Reform Bill (Patent Docs)

Leahy delays action on Patent Reform Bill (Inventive Step)

Sen Specter leary about Patent Reform Bill (IP Watchdog)

Chief Judge Michel issues call to arms for patent system stakeholders (Promote the Progress)

2009 patent reform update (IP Spotlight)

Orrin Hatch on patent reform (Inventive Step)

ABA IP Section seeks inequitable conduct reform (Patent Docs)

Patent reform 2009: Still too many competing interests (Patent Baristas)

PTO budget shortfall could have profound effect on patent system (Inventive Step)

Gholz: Linking post-grant review with interference procedure (Patently-O)

Patent Reform Act of 2009 and the Seventh Amendment (IP Frontline)

Clean tech companies to Congress: Proposed patent damages reform bad for green innovation and jobs (Green Patent Blog)

IPO board opposes USPTO fee increases and wilful infringement provision of reform bill (Patent Docs)

US Patents

Patent filings down more significantly than previously thought (Inventive Step)

Allowance rates continue to drop (Inventive Step)

LES licensing survey (IAM) (Law360)

Patent Academy closing, USPTO budget crisis deepening? (IP Watchdog)

Legal studies program suspended (just_n_examiner)

Books as prior art (just_n_examiner)

Northern District of Illinois continues as top IP court – Administrative Office of the US Courts 2008 Annual Report (Chicago Intellectual Property Law Blog)

Re-exam delays cause trouble for patent owners (Law360)

Recovering patent attorney fees (Patently-O)

Report compares patent assets of GM, Ford and Chrysler (IP Watchdog)

US Patents – Decisions

CAFC: Continuation limits invalid; limits on claims and RCEs are ok: Tafas v Doll (Patently-O) (Law360) (Hal Wegner) (IAM) (Patent Baristas) (Promote the Progress) (Patent Docs) (Patent Docs) (Patent Docs) (IP Spotlight) (Inventive Step) (IP Watchdog) (Washington State Patent Law Blog) (Anticipate This!) (Peter Zura’s 271 Patent Blog) (California Biotech Law Blog) (Managing Intellectual Property) (Competitive Info) (Inventive Step) (Philip Brooks’ Patent Infringement Updates) (IP Frontline) (Patent Docs) (Intellectual Property Directions) (Post-Grant)

CAFC imposes sanctions against E-Pass Technologies for litigation misconduct in dispute with Visa USA, 3Com, and Access Systems America over smart card technology (Law360)

CAFC provides guidance on patent drafting: ICU Medical v Alaris Medical Systems (Inventive Step)

CAFC: Inequitable conduct based on failure to submit rejection in co-pending case: Larson Mfg Co v Aluminart Products Ltd (Patently-O)

A-cold wind blowing: Inequitable conduct: Larson Mfg Co v Aluminart Products Ltd; Synovis Life Technologies Inc v W L Gore & Associates, Inc (Peter Zura’s 271 Patent Blog) (Peter Zura’s 271 Patent Blog)

District Court N D California: Becton Dickinson & Co and Nova Biomedical wins $5.9 million in fees in patent case against Abbott Lab’s over blood glucose level monitor test strips (Law360)

District Court E D Texas: Following earlier jury trial finding of infringement, patent held unenforceable on grounds of inequitable conduct: Golden Hour v EMSCharts (Hal Wegner) ( (Peter Zura’s 271 Patent Blog)

CAFC affirms sanctions order against the patentee and its litigation counsel: ClearValue, Inc v Pearl River Polymers, Inc (Hal Wegner) (Law360)

US Patents – Lawsuits and strategic steps

Acacia Research Corp – Fighting on long after other defendants settled, Barco wins partial summary judgment on claims related to two patents in projector technology dispute (Law360)

ADC Technology – ADC drops Sony from infringement suit over video game technology patents, leaving Microsoft and Nintendo as remaining defendants (Law360)

Advanced Video Technologies – AVT resolves suit against Pure Digital Technologies over video compression patent (Law360)

Amsted Industries – ITC: Standard Car Truck Co and Tanrui’s motion to compel denied, but access to videotape granted subject to conditions in cast steel railway wheels matter brought by Amsted (ITC 337 Law Blog)

Biolitec – Biolitec wins summary judgment that Evolve laser system does not infringe American Medical Systems patent on laser treatment for enlargement of prostate (Law360)

Boston Scientific – Boston Scientific settles stent patent dispute with Dr Bruce Saffran for $50 million (Law360)

Camtek – Camtek to oppose jury verdict in Rudolph patent infringement case (The IP Factor)

Fairchild Semiconductor – Patentee/DJ defendant Third Dimension appeals from grant of preliminary injunction prohibiting it from terminating patent license to Fairchild (PATracer)

Hewlett-Packard Co – HP settles patent infringement dispute with Ninestar Technology over ink cartridge parts (Law360)

LG Electronics – ITC institutes investigation regarding electronic devices having image capture or display functionality in response to complaint by LG against Eastman Kodak (ITC 337 Law Blog)

Medtronic – Medtronic wins stay in Abbott stent patent suit (Law360)

Qimonda – ITC grants-in-part non-party motion to quash subpoena in matter concerning semiconductor integrated circuits; grants-in-part, denies-in-part Qimonda’s motion to compel (ITC 337 Law Blog) (ITC 337 Law Blog)

Samsung Electronics – Samsung seeks to invalidate Advanced Micro Devices’ patent in suit over semiconductor technology (Law360)

Sealy Corp – Tempur-Pedic Management file patent infringement suit against Sealy alleging its mattresses, cushions, pillows infringe ‘comfort pillow’ patents (Law360)

Synthes – Synthes bone plate suit against Howmedica Osteonics stayed for patent re-examination (Law360)

Traffic Information – TI files suit against Volvo Cars as well as numerous cell phone companies including AT&T Mobility, RIM, and Sony Ericsson over patent covering traffic information system (Law360)

US Copyright

MIT to make all faculty publications open access (Ars Technica)  

US Copyright – Lawsuits and strategic steps

Kuklachev – Court dismisses three individuals from suit over ‘copycat’ theatre troupe: Kuklachev v Gelfman (Seattle Trademark Lawyer)

Tribune Media Services – Tribune sues Warren Beatty over Dick Tracy rights (Law360)

US Trademarks

Trade marks go green (Patent Librarian’s Notebook)

The Dawn Donut rule fifty years later: still relevant today? (Seattle Trademark Lawyer)

US Trade Marks – Decisions

Supreme Court refuses to grant certiorari in case regarding debtor’s IP license rights between NCP Marketing Group and BG Star Productions (Law360)

Minnesota Supreme Court rules trade mark infringement can fall within scope of insurance policies covering advertising injuries (Law360)

Finding circular shape for beach towel to be functional, Chicago Federal Court rules registered trade mark invalid: Franek v Walmart Stores, Inc (TTABlog)

TTAB precedential no 8: Divided TTAB panel affirms refusal to register Chippendales’ “Cuffs & Collar Mark”: In re Chippendales USA, Inc (TTABlog)

TTAB finds STRIP HOP merely descriptive of adult entertainment services: In re Rotolo (not precedential) (TTABlog)

TTAB reverses 2(d) refusal: PTO failed to show HEART and KOKORO confusingly similar for restaurant services: In re OpBiz, LLC (not precedential) (TTABlog)

Wal-Mart bests Loufrani in TTAB battle over ‘smiling face’ mark: Wal-Mart stores, Inc v Franklin Loufrani (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Fendi – Filene’s Basement fined for tardiness in turning over key discovery documents in dispute over counterfeit Fendi handbags (Law360)

Hershey’s – Hershey’s, owner of REESE’S logo for candy sues Reese’s Nursery and Landscaping for trade mark infringement (The Trademark Blog)

Louis Vuitton Malletier – LVM and Dooney & Burke settle trade mark suit over handbag S-locks (Law360)

Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta – Hospitaller of Saint John files trade mark infringement case against Sovereign Order of the Orthodox Knights Hospitaller of Saint John of Jerusalem (The Trademark Blog)



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