General GWiR 12 December 2008 from IP Think Tank

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Highlights this week included:

US: New patent appeals rules delayed by Office of Management and Budget (Patent Baristas) (Law360) (Anticipate This!) (Patent Baristas) (Patent Baristas) (Patent Baristas) (Hal Wegner) (IP Updates) (Patent Docs) (Patently-O) (Peter Zura’s 271 Patent Blog) (PLI)

US: Oral arguments completed in Tafas, GSK  v Dudas (Hal Wegner) (Patent Prospector) (Patently-O) (Peter Zura’s 271 Patent Blog) (PLI) (PLI) (Patent Docs) (Intellectual Property Watch) (Managing Intellectual Property) (Patent Baristas) (IP Watchdog)

European Court of Justice rules on genuine use in Austrian charity reference: Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (Class 46) (IPKat)

Global – General

IP litigation enjoying a boost from the recession, but a depression could change everything (IAM)

World Trade Organisation: Progress on IP at last; consensus still uncertain (Intellectual Property Watch) (Intellectual Property Watch)

IP more important than ever in M&A deals, new research by mergermarket claims (IAM)

New WIPO Director’s revised budget on track to passage after debate (Intellectual Property Watch) (Intellectual Property Watch)

Estimating the settlement value of your IP case (IP ADR Blog)

Settle your next IP case with a mind map (IP ADR Blog)

Rules to live by for tech transfer managers (Technology Transfer Tactics)


Global – Trade Marks / Brands

Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications addresses non-traditional marks, trade mark opposition procedures and industrial designs (WIPO)

Global – Patents

Standards group Institute of Electrical and Electronics Engineers (IEEE) fight trolls with new patent pool (Ars Technica) (IAM) (Law360)

Kent Displays and Kent State University again prevail in global patent dispute over liquid crystal technology (Securing Innovation)

The innovation sharing challenge (Innovationpartners)

Closed auctions and the risks of wilful infringement (IPEG)

Companies adopting open innovation methodologies must incorporate patent information for maximum value creation (IP Asset Maximizer Blog)

Technology, IP vital to addressing climate change, UN meeting hears (Intellectual Property Watch)


African trade mark strategies – World Trademark Review article (Afro-IP)


When is trade mark infringement not also misleading and deceptive conduct?: Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) (Australian Trade Marks Law Blog)

Australian Bureau of Statistics going CC, under attribution-only licence (Creative Commons) (Michael Geist)


Depreciation a possible ground in opposition proceedings: Parmalat Canada Inc v Sysco Corporation (Canadian Trademark Blog)

Trademarks Office considers changes to opposition practice (International Law Office)

Parody defence not available according to BC Supreme Court: Canwest v Horizon (Excess Copyright)


Shanghai court awards RMB1.25 million to Diageo in landmark case against Shanghai company that imitated trade dress of Johnnie Walker Black Label Whisky (Managing Intellectual Property)

Comments on judicial interpretations of determination of well-known trade mark (IP Dragon)

Hu Jintao and ‘The Three Supremes’ (IP Dragon)

Copyright font infringement – Founder Electronics sues Procter & Gamble and Carrefour (IP Dragon) (IPKat)

The new Chinese Patent Law is coming (Catch Us If You Can!!!)


Colombian trade marks just got a little slower (IP tango)


Simplified process for renewing customs watch applications, from 1 January 2009 (Class 46)


European Court of Justice rules on genuine use in Austrian charity reference: Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (Class 46) (IPKat)

CFI decides BARBARA BECKER confusingly similar to earlier Community trade mark BECKER covering identical and similar goods (Class 46

Valence Technology prevails in decision by European Patent Office to revoke University of Texas’ patent relating to lithium metal phosphates (Philip Brooks’ Patent Infringement Updates)

OHIM staff satisfaction survey (IPKat)

OHIM: Changes to ‘The Manual of Trade Mark Practice’ (Class 46)

EU patent offices sceptical over fee cuts (Managing Intellectual Property)

EU Commission proposes to ‘halve the costs for an EU trade mark’ (Class 46)

French IP chief confident of European patent breakthrough in 2009, but we’ve heard it all before (IAM)

Consumers to be targeted in anti-counterfeiting campaigns – Robert Verrue’s speech at the IP Summit, Brussels (Managing Intellectual Property)


Poseidon vs common sense: First instance court of Thiva disregards fundamental rules in judging confusing similarity (Class 46)


Hungary gears up for Olympic symbol protection (Class 46)


Court examines remedy of passing off: Atul Rawal t/a Navin Polycon v SB Equipments (International Law Office)

Madras High Court modifies law relating to comparative advertising in cases of commercial disparagement, particularly in relation to ‘puffing’ (Spicy IP)

Patent filing trend in India (RelatIP)

Plant variety protection in India – interview with PVP Authority Chairperson (Spicy IP)


Australia removed from Israeli Patent Law Clause 17c list (IP Factor) (RelatIP)

New Israel trade mark interface to be launched (IP Factor)


High Court rules in favour of plaintiff in copyright infringement case concerning maps that spanned 13 years: Macmillan Kenya (Publishers) Ltd v Mount Kenya Sundries Ltd (Afro-IP)


Presiding Judge of The Hague Court finds use of MEN’S BODY SHOP creates danger of dilution of THE BODY SHOP (Class 46)

District Court of The Hague: ‘V’ for Armani in Dutch sunglasses case (Class 46)


Ongoing feud between former collecting societies MCSN and PMRS and the Nigerian Copyright Commission (Ip’s What’s Up)


Peruvian Administrative Court rules Trade Mark Office can’t rule on copyright infringement (IP tango)


Reminiscences on Lego’s problems: How Lego tried to protect its business, based on Polish unfair competition regulations (Class 46)

South Africa

Judgment reserved in ANC v Cope name battle (Afro-IP)


Spanish Trade Marks Office receives ‘highly commended’ distinction by Global Anti Counterfeiting Group (Class 46)

United Kingdom

UK government backs sound recording term extension (IPKat) (Techdirt)

IPO gives further guidance on patentability of computer programs in light of Symbian (IPKat)

Company Names Tribunal gives its first decision, ruling in favour of The Coca-Cola Company ordering Coke Cola Limited to change its name (Class 46) (Out-Law)

High Court upholds ‘Sequin Art’ trade mark, says it is not descriptive: Kitfix Swallow Group Limited v Great Gizmos Limited (Out-Law)

Restaurant names and the own-name defence: Hotel Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Ors (IPKat)

Star Wars case: an unsatisfactory win for the Empire: LucasFilm v Ainsworth (International Law Office)

Birmingham man caught with 12,000 fake discs spared immediate prison sentence (ContentAgenda)

Invest in innovative companies; not failing ones – UK creating £1 billion ‘emergency’ venture capital fund for startups (Techdirt)

UK report on IP commercialisation features surprising benchmarks (Technology Transfer Tactics)

United States

US General

Stanford Law School launches IP litigation clearinghouse (Technology Transfer Tactics) (PLI)

Federal Judges may get very modest pay raise: continued need for full adjustment (Hal Wegner)

Opinion: Obama should change US policy on intellectual property (ContentAgenda)

Questions unanswered: the application of California’s new trade secret jury instructions (Intellectual Property Law Blog)

US General – Decisions

Arbitrator clears electric carmaker in trade secrets case: Telsa Motors v Fisker Automotive (Green Patent Blog)


US General – Lawsuits and strategic steps

Peru – Peru sues Yale for not returning Incan artefacts as promised in agreements reached in 1916 (Law360)


US Patent Reform

Oral arguments completed in Tafas, GSK  v Dudas (Hal Wegner) (Patent Prospector) (Patently-O) (Peter Zura’s 271 Patent Blog) (PLI) (PLI) (Patent Docs) (Intellectual Property Watch) (Managing Intellectual Property) (Patent Baristas) (IP Watchdog)

Next PTO Director must be a patent-experienced licensed practitioner (Hal Wegner)

Inter partes re-examination: Addressing a key Rogan-Dudas failure (Hal Wegner)

With US patent overhaul dead, agencies ponder changes as industry debates role of ‘trolls’ (Intellectual Property Watch)


US Patents

New patent appeals rules delayed by Office of Management and Budget (Patent Baristas) (Law360) (Anticipate This!) (Patent Baristas) (Patent Baristas) (Patent Baristas) (Hal Wegner) (IP Updates) (Patent Docs) (Patently-O) (Peter Zura’s 271 Patent Blog) (PLI)

Study by Stanford University’s Ryan Lampe and Metra Moser: Patent pools may discourage innovation (Peter Zura’s 271 Patent Blog) (Patent Prospector) (Techdirt)

Data from Stanford shows 2007 spike in patent defendants (The Prior Art)

Uneven application of Twombly pleading standards in patent cases: (Chicago Intellectual Property Law Blog)

USPTO implements new program to teach examiners how to read and understand case law (Patent Docs) (Patent Baristas)

Showing ‘first to invent’ (Anticipate This!)

New patent searching tool – Setrue patent search (Anticipate This!)

Cisco moves to dismiss ‘Patent Troll Tracker’ suit; Frenkel told the truth, says Cisco (Law360) (The Prior Art)

(CAFC/NJIP) Model patent jury instructions published for comment (IP Updates)

Should you file a provisional application or a ‘regular’ patent application? (Inventive Step)

Western District of Washington adopts supplemental patent rules (Washington State Patent Law Blog)

US Patents – Decisions

During prosecution, claims are indefinite when amenable to multiple plausible constructions: Ex parte Miyazaki (Patently-O) (Hal Wegner) (IP Updates) (Inventive Step)

Optimisation of parameter not prima facie obviousness: Ex parte Whalen II (Hal Wegner)

Jury finds Medtonic wilfully infringed artificial spine disks patent held by Synthes subsidiary (Law360)

CAFC reverses stay awarded to Kraft Foods Global in patent infringement suit over coffee containers brought by Procter & Gamble (Law360) (Promote the Progress)

District Court Judge denies Kraft’s bid for sanctions against Procter & Gamble (Law360)

Breach of patent settlement does not create federal jurisdiction: Idex Corp v Dripping Wet Water, Inc (Chicago Intellectual Property Law Blog)

Parties must justify need for claim construction: IP Cleaning v Annovi Research (Patently-O)

WL Gore & Associates lose bid to invalidate Medtronic patents relating to intravascular stents (Law360)

USPTO rejects two Power Integrations patents involved in lawsuit that won $34 million wilful infringement verdict against Fairchild Semiconductor (Law360)

Post re-examination litigation estoppels; most summary judgment bids rejected in patent dispute over lock technology for laptops between PC Guardian Anti-Theft Products and ACCO Brands (Law360) (Patently-O)

BPAI decision applying Bilski: Ex Parte Halligan (Inventive Step)


US Patents – Lawsuits and strategic steps

Adventus – Adventus asserts decontamination patents against AST Environmental and Calgon Carbon Corp (Green Patent Blog)

Avery Dennison Corp – Federal judge refuses to dismiss or transfer Avery Dennison’s RFID patent infringement suit against Alien Technology (Law360)

Bank of America – Bank of America argues patent claim at heart of Every Penny Counts’ suit over the bank’s ‘Keep the Change’ program is invalid in light of Bilksi, seeks to reopen discovery (Law360)

Brigham Young University – BYU and Torion Technologies sue Hitachi High Technologies America for wilful infringement of spectrometry patent (Law360)

Foley & Lardner – Negligence and breach of contract claims to go forward in Vaxiion’s action against Foley & Lardner over missed filing deadline (Law360)

Location Based Services – LBS (a unit of Acacia Research Corp) and Etex settle cell phone patent dispute with licensing deal (Law360)

Nvidia – Nvidia settles patent dispute with Implicit Networks over encryption technology (Washington State Patent Law Blog)

Rambus – International Trade Commission launches investigation into whether Nvidia and others have infringed nine of Rambus’ patents covering semiconductor chips with synchronous DRAM controllers (Law360)

Responsible Me – Responsible Me appeals from summary judgment that Evenflo did not infringe its patent directed to detachable sub-tray for use with trays from car seats, highchairs, strollers (PATracer)

Verizon – Centre One lodges lawsuit against Verizon, Vonage and deltathree alleging infringement of a patent related to VoIP technology (Law360)


US Copyright

Can schools copyright their students’ creations? (UsefulArts)

US Copyright – Decisions

Mattel now owns Bratz: Mattel v MGA Entertainment (Property, intangible) (Counterfeit Chic) (Managing Intellectual Property)

Court of Appeals for the Ninth Circuit rules descendants of Pierre-Auguste Renoir violated copyright on sculptures created by Renoir in collaboration with Richard Guino (Law360)


US Copyright – Lawsuits and strategic steps

 Gotham Distributing Corp – Derivate work based on public domain movie suit: Gotham v Classic Theatre (The Trademark Blog)


US Trademarks

Overly-long goods and services descriptions hamper trade mark filings (Seattle Trademark Lawyer)

US Trade Marks – Decisions

5th Circuit: University colour schemes may be eligible for trade mark protection: Board of Supervisors for Louisiana State University v Smack Apparel Co (IP Spotlight)

Default ends in injunction and award of defendants’ gross sales: American Taxi Dispatch Inc v American Metro Tax & Limo Co (Chicago Intellectual Property Law Blog)

TTAB affirms section 2(a) false connection refusal of MOJAVE for cigarettes: In re G&R Brands, LLC (not precedential) (TTABlog)

Renown of THE BLACK DOG mark brings TTAB 2(d) victory over YELLOW DOG NANTUCKET for clothing: The Black Dog Tavern Company, Inc v Juras (not precedential) (TTABlog)

TTAB’s CUBITA summary judgment under Pan American Convention: Corporation Cimex SA v DM Enterprises & Distributors Inc (not precedential) (Guest comment by Marty Schwimmer) (TTABlog)

TTAB affirms refusal of DESIGN EXPRESSIONS mark: not used as source indicator on specimen of use: In re Contractor Express (not precedential) (TTABlog)

TTAB denies petitioner’s motion to re-open discovery because of failure to prove excusable neglect: Jodi Kristopher, Inc v International Seaway Trading Corp (not precedential) (TTABlog)


US Trade Marks – Lawsuits and strategic steps


Car Freshener Corporation – Car Freshener sues Urban Outfitters over tree-shaped odour-killers (The Trademark Blog)

Coldplay – Joe Satriani files copyright infringement lawsuit against Coldplay claiming ‘Viva La Vida’ stole portions of his earlier instrumental ‘If I Could Fly’ (ContentAgenda) (Techdirt)   


New features of NOIP’s online Industrial Property Digital Library (Trung Thuc)


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