General Global Week in Review 30 May 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:

CAFC “tightens the standards” for proving inequitable conduct: Therasense v. Becton, Dickinson & Co (Patent Law Practice Center) (IP Directions) (Patently-O) (271 Patent Blog) (IPBiz) (Holman’s Biotech IP Blog) (Orange Book Blog) (Patent Docs) (Inventive Step) (Anticipate This!) (Chicago IP Litigation) (IP Spotlight)

A masterpiece of trade-mark clarity: Supreme Court of Canada decision in Masterpiece Inc. v. Alavida Lifestyles Inc. (IP Osgoode) (Canadian Trademark Blog)



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

A (IP) solution looking for a problem (IP Think Tank)

It’s lift-off for the International IP Strategists Association (IAM)


Global – Patents

Patent thickets, right or wrong? (ipeg)

The World Patent and the World Patent Litigation System (Kluwer Patent Blog)

Civil Society on transparency, public health in TPPA; 28 Senators call for highest standards of protection IP in agreement (Knowledge Ecology International)

Selected aspects of the impact of patent application drafting and prosecution (Patent Law Practice Center)


Global – Trademarks

Does a trade mark have to be factually truthful? (IPKat)

Lock them up or make them pay?: counterfeit goods, civil liability and criminal punishment – Recap on INTA conference (IPKat)


Global – Copyright

New ‘final’ ACTA text published, open for signature (IP Watch)

Copyright 2.0 Show – Episode 196 – MGA puts the screws to Mattel; Hangover 2 allowed to release, copyright lawsuit to continue (Plagiarism Today) (The Prior Art)



Australian Patents Regulations amended, effective 1 July 2011 (Patentology)

Affinage and A.S.P. 2: International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited (ipwars)

How wide should injunctions be: Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited (No 2) (ipwars)

Case management of divisional application: an IP Whiteboard investigation (IP Whiteboard)

IP Australia on collision course with private practitioners? (Patentology)



A masterpiece of trade-mark clarity: Supreme Court of Canada decision in Masterpiece Inc. v. Alavida Lifestyles Inc. (IP Osgoode) (Canadian Trademark Blog)

Targeting the Target name in Canada (IP Osgoode)



Chile ramps up WIPO commitments (IP tango)



NPEs, Chinese style (IAM)

China, IP infringement and lost American jobs – ITC’s “China: Effects of Intellectual Property Infringement and Indigenous Innovation Policies on the US Economy” report (IAM)

International patent application and prior art search: China (Article One Partners)



Battistelli salutes Europe’s top inventors and aims for 100% EPO user satisfaction (IAM)

OHIM BoA: Proof of reputation and evidence submitted out of time – DULCES Y CONSERVAS HELIOS S.A. (Class 46)

Unitary EU Copyright and other proposals – Commission’s blueprint for IP rights (1709 Blog) (IPKat)

Some preliminary remarks on COM(2011) 287 Provisional (IP:JUR)

New developments: European patent with unitary effect, EU patent jurisdiction (IP:JUR)

OHIM set to become official host for European observatory on counterfeiting and piracy (IP:JUR)

European Classification system (ECLA) – Change reports (Patent Librarian’s Notebook)

Curia gives ONEL a number in ONEL/OMEL dispute (Class 46)

Small matter, big problem: the story of the average sized particle – Technical Board of Appeal affirms claims unpatentable for lack of clarity in Nanosized catalyst/ GENERAL ELECTRIC (IPKat)

Polo player : Santa Maria v. Ralph Lauren – General Court rejects appeal by Glenton Espana, confirms partly successful opposition by Polo/Lauren Company(Class 46)

Defeat before OHIM no laughing matter for Dave TV: UK Gold Services Ltd v Dave Soho Ltd (jiplp)

Cigars: Cuba Cohiba v. Kansas Kiowa – General Court confirms no likelihood of confusion (Class 46)

May the Force be with you…trademark owners – TIME FORCE and AIR FORCE (Class 46)

No likelihood of confusion between CTM application McKenzie and CTM McKinley for similar goods in Classes 18 and 25 (Class 46)

General Court confirms YGEIA (health) is descriptive, not a valid trademark for ‘medical services’ (Class 46)

Battle of the March – General Court finds llieklihood of confusion between TILA MARCH and earlier Spanish trademark CARMEN MARCH (Class 46)



Court of Appeal Karlsruhe / Interim relief in tradeshow matters (EPLAW)

Bundesgerichtshof: When priority does not matter anymore … – Peek & Cloppenburg(Class 46)



Delhi High Court rains on Champagne’s parade: Champagne Moet and Chandon v. Union of India & Ors. (Spicy IP)

Bombay HC on passing off & shape of Vodka bottle: Gorbatschow Wodka Kg v. John Distilleries Limited (Spicy IP)

Bollywood Wars: Multiplex Owners v. Film Producer/Distributors (Spicy IP)

The virtues of notarization & the lack of it in the Patent Rules, 2003 (Spicy IP)

Open Government Project: Draft TK Rules 2009 (Spicy IP)



The fight against corruption and IP in Indonesia (IP Komodo Dragon)



Tabasco’s troubles (Class 46)



Swiss Supreme Court: ZACAPA is a geographical indication for rum in the sense of Art. 23 TRIPS (Class 46)


United Kingdom

Hargreaves IP Review a copy of past recommendations (Innovationpartners)

LOCOG’s trade mark: a new Olympic record? (IPKat)

EWCA (Civ): Manufacture or repair revisited: Schütz (U.K.) Limited v Werit UK Limited, Protechna SA (jiplp)

PCC Page 28: Stretching tentacles – having designs on costs: Cautious Co and IPOff Ltd (PatLit)

Court tells Kats, tail must not wag dog: EWCA (Civ) decision in Best Buy Co Inc and another v Worldwide Sales Corporation Espana SL. (IPKat)


United States

US Patent Reform

Campaign against America Invents Act intensifies (Inventive Step)

Will you be crushed like a bug? – Post Grant Review (IP Directions)


US Patents

USPTO IP Policy Development and International Patent Harmonization (inovia)

USPTO studying Therasense decision, will issue guidance soon (Patent Docs)


US Patents – Decisions

CAFC “tightens the standards” for proving inequitable conduct: Therasense v. Becton, Dickinson & C0(Patent Law Practice Center) (IP Directions) (Patently-O) (271 Patent Blog) (IPBiz) (Holman’s Biotech IP Blog) (Orange Book Blog) (Patent Docs) (Inventive Step) (Anticipate This!) (Chicago IP Litigation) (IP Spotlight)

What does the Therasense decision mean for patent reexamination? (Patents Post Grant Blog) (Patent Law Center)

CAFC: Therasense v Becton Dickinson & Co (Fed. Cir. 2011) (en banc): The dissenting opinion (Patent Docs)

CAFC finds re-examined claims of U.S. Patent 6,142,927 obvious: In re James Hoyt Clark (IPBiz)

First Case applying Therasense from Eastern District of Texas – Motion for finding of inequitable conduct denied: Ameranth v. Menusoft (

5th Circuit: Can you patent a trade secret? Tewari De-Ox Systems Inc. v. Mountain States/Rosen L.L.C. (IP Spotlight)

District Court Missouri: $2.6 million attorneys’ fee award justified despite earlier sanctions and enhanced damages awards: Furminator, Inc. v. Kim Laube & Co (Docket Report)

District Court N D Illinois: Patent assignor estoppel is limited to the assignee: Schultz v. iGPS Co. LLC (Chicago IP Litigation Blog)


US Patents – Lawsuits and strategic steps

Duggal – ALJ Gildea rules on motions in Certain Wind And Solar-Powered Light Posts And Street Lamps (337-TA-736), respondents’ motion for summary determination of invalidity denied (ITC Law Blog)

OptiGen – Sanctions backfire: Defendant’s baseless requests for Rule 11 sanctions may lead to sanctions against defense counsel: OptiGen v Animal Genetics (Docket Report)

Otter – Otter files new 337 complaint regarding Certain Protective Cases (ITC Law Blog)

Thomson – ALJ Rogers denies motion to compel plant inspections in Certain Liquid Crystal Display Devices (337-TA-741/749) (ITC Law Blog)

Uniloc – Plaintiff’s litigation history negates ‘Cost of defense settlement’ strategy and eliminates need to modify Court’s usual schedule: Uniloc USA, Inc. et al v. Engrasp, Inc. et al (Docket Report)


US Copyright

S 978 Bill would strengthen criminal copyright infringement law (Maryland IP Law)


US Copyright – Decisions

District Court E D Missouri: Copyright and tattoos: Hangover II preliminary injunction denied, but copyright owner got some good news too: Whitmill v. Warner Bros. (Technology & Marketing Law Blog) (IP Osgoode) (Class 99) (Likelihood of Confusion) (Patent Law IP)


US Copyright – Lawsuits and strategic steps

Keeling, Jaime – Point Break Live! Heading for a wipe out! (IP Whiteboard)

Watkins – Ninth Circuit orders release of information on counterfeit seizures: Watkins v. U.S. Bureau of Customs and Border Protection (Seattle Trademark Lawyer)


US Trademarks

Raid on Seal Team Six trademarks (BlawgIT) (IPBiz)


US Trade Marks – Decisions

9th Circuit: No brief? No problem! Appellee wins trademark dispute without filing abrief: Egg Works, Inc. v. Egg World, LLC (Seattle Trademark Lawyer)

Parties choose ACR, TTAB finds SOLARIN not confusingly similar to SOLARCAINE for sun/tanning products: Schering-Plough HealthCare Products, Inc. v. Western Holdings, LLC (TTABlog)

Differences in financial goods/services, sophistication of customers lead TTAB to reverse 2(d) HOMER refusal: In re Barkley International Incorporated (TTABlog)

TTAB affirms mere descriptiveness refusal of ATHEROABZYME for diagnostic test kits In re Cambridge Theranostics Limited (TTABlog)

Test your TTAB Judge-Ability: Is this HOT SPRINGS NATIONAL PARK ARKANSAS logo primarily geographically descriptive? (TTABlog)

District Court W D Washington case Ezell’s Fried Chicken, Inc. v. Stephens highlights need to decide who owns mark before dispute arises: (Seattle Trademark Lawyer)


US Trade Marks – Lawsuits and strategic steps

Bosch, Chris- ‘Life rights’? Bosch claims violation of trademark, publicity and ‘life rights’ against ex-girlfriend in connection with her appearance in “Basketball Wives” (Likelihood of Confusion)


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