General GWiR 13 February 2009 from IP Think Tank

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Highlights this week included:

Advocate General opines advertisement comparing perfume to L’Oreal’s did not infringe trade marks; translation issue: L’Oréal v Bellure (Out-Law) (IPKat) (Class 46) (IPKat) (Class 46) (Managing Intellectual Property) (Law360)

US Patent reform 2009 (Inventive Step) (Hal Wegner) (Patently-O) (Inventive Step) (Intellectual Property Watch)

Manufacturing Alliance sends letter on patent reform to President Obama (Patent Docs) (IP Watchdog) (Peter Zura’s 271 Patent Blog) (phosita) (Patent Baristas) (Law360)

Global – General

Reverse payments in US pharma, vintage prior art, the ever growing prior art base and utility models – IP Think Tank podcast, 9 February 2009 (IP Think Tank)

WTO report DS362 – US-China dispute over IP rights (IP Dragon) (IP Dragon) (Michael Geist) (China Law Blog) (China Hearsay)

More ACTA papers locked away (IP::JUR)

WIPO meeting to discuss IP as financing tool (Daily Dose of IP)

Chief IP counsel: stop trying to change how your lawyers bill you and focus on the model they use to provide your legal service (IP Asset Maximizer Blog)

Negotiating bargaining chips: the value of goodwill (The IP ADR Blog)

Building the ideal IP team (IP Frontline)

World Intellectual Property Day (WIPO)

Sports federations keep up defence against possible IP infringers (Intellectual Property Watch)

Global – Trade Marks / Brands

Five ways to handle ‘brand identity crisis’ (Intellectual Property Watch)

Predictions of economic downturn impact on streetcorner counterfeit sales (Counterfeit Chic)

Global – Patents

Certainty or fairness – what would your choose? (IP Think Tank) (The IP ADR Blog) (Chicago Intellectual Property Law Blog)

50 years of scientific discovery and sharing in Antarctica may end thanks to patent greed (Techdirt)

Take steps to limit the impact of licensee’s economic woes (Technology Transfer Tactics)


TMO delegate allows ‘ElvisFinance’ covering financial services to proceed to registration despite opposition: Elvis Presley Enterprises Inc v Elvis Jelcic (Australian Trade Marks Law Blog)

Silverbrook Research receives 577 US patents in 2008 (Patent Librarian’s Notebook)


Canada’s involvement in US led WTO complaint against China over its IP laws (ContentAgenda) (Techdirt)

Canada’s two-step home country registration hurdle (International Law Office)

Canadian patents database – representative drawings (Patent Librarian’s Notebook)

Change in Canadian trade mark opposition practice (update) (Canadian Trademark Blog)


China files 700,000+ applications in 2008; 86% domestic origin: world number one for patent filings (Hal Wegner) (Peter Zura’s 271 Patent Blog)

Chinese University ranks 10 in US patents (Patent Librarian’s Notebook)

Major changes in third revision of patent law (International Law Office)

Copyright due diligence investigations in China: legal entity work or occupational work? (China Law Insight)

Samsung made to pay real damages in China – IPC Hangzhou orders Samsung to pay 50 million yuan to Holley Communications for patent infringement (IP finance)


Burberry counterfeit purses – Supreme Court’s decision concerning damages/compensation (Class 46)

Danish pirate statistics for 2008 (Innovationpartners)
East Africa

EU – East African community EPA IP issues (Afro-IP)

East Africa Community protocol by April! (Afro-IP)


Advocate General opines advertisement comparing perfume to L’Oreal’s did not infringe trade marks; translation issue: L’Oréal v Bellure (Out-Law) (IPKat) (Class 46) (IPKat) (Class 46) (Managing Intellectual Property) (Law360)

Advocate General opines in Infopaq International A/S v Danske Dagblades Forening concerning the storing and printing of small amounts of text extract from newspapers (IPKat), (IPKat)

European Parliament backs 95 year copyright (IPKat)

Pro-patent groups talking to Competition DG’s hand (IAM)

More news from the EU patent policy theatre (IP::JUR)

More EQE nonsense – impending changes to regulations for becoming qualified European patent attorney (IPKat)

EU debates CTM fee reduction (Managing Intellectual Property)

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

Geographical indications: cheese and wine (Class 46)


Supreme Administrative Court of Finland holds that slogan YRITYKSILLE JOTKA VAATIVAT ENEMMÄN (translation: ‘for companies, who demand more’) does not lack distinctiveness (Class 46)


Erroneous reasoning in composite trade mark cases – instructions from the supreme courts of Greece (Class 46)

Hong Kong

Hong Kong brand owners will have more powers to protect their brands when amendments to Trade Marks Ordinance come into effect 2 March (Managing Intellectual Property)


Reliance Anil Dhirubhai Ambani Group files application to register I PHONE under classes 16 and 41 – trade mark trouble ahead? (Spicy IP)


Pre-emptive remedies in Italy (PatLit)


Fair Trade Commission orders music copyright group to end monopolistic practice (ContentAgenda) (ContentAgenda)


Are consumers in Malawi just more brand-savvy? (Afro-IP)

New Zealand

Haka war dance now covered by intellectual property (Techdirt)


Nigerian musicians want payment for music played on airplanes (Afro-IP)


PARIS-DAKAR seeks to invalidate world trade mark registration for DAKAR by Polish company by the same name (Class 46)

South Africa

Delays at the SA registry favour trade mark proprietor: Golden Fried Chicken (Pty) Ltd v Soulsa CC (Afro-IP)


Exhaustion of trade mark rights and selective distribution (Class 46)


Critical amendments in Turkish trade mark legislation (Grup Ofis Patents & Trademarks)

United Kingdom

EWCA: Undertakings in patent litigation: some welcome clarification: Zipher Ltd v Markem Systems Limited and Markem Technologies Limited (PatLit)

EWHC: Inventors hit the jackpot in employee compensation claim: Kelly and Chui v GE Healthcare Ltd (IPKat) (IAM)

Albertas’ republication of historical ‘Nazi newspapers’ – verboten? (IPKat)

United States
US General

Sen Gregg withdraws from nomination to be next Secretary of Commerce (Inventive Step) (Patently-O)

Influx of Big Content lawyers at Department of Justice: cause for concern? (Ars Technica) (Copyfight) (Techdirt)

Why losers litigate: it’s profitable! (Techdirt)

Thomas Edison and National Inventors’ Day (Securing Innovation) (Patent Baristas)

US General – Decisions

Los Angeles Superior Court jury finds founders of Blueprint Test Preparation breached non-compete contract with Robin Singh Educational Services (Law360)

US Patent Reform

Patent reform 2009 (Inventive Step) (Hal Wegner) (Patently-O) (Inventive Step) (Intellectual Property Watch)

Manufacturing Alliance sends letter on patent reform to President Obama (Patent Docs) (IP Watchdog) (Peter Zura’s 271 Patent Blog) (phosita) (Patent Baristas) (Law360)

Coalition for the 21st Century Patent Reform working to secure enactment of 2004 report of National Academies of Science (Patent Prospector)

Patent reform reportedly top priority in Congress (IP Watchdog) (Peter Zura’s 271 Patent Blog)

Leahy discloses plan to reintroduce patent reform (Law360)

PTO roundtable on deferred examination (Intellectual Property Watch) (Patently-O) (Hal Wegner)

US patent reform debate must be firmly based on reality (IAM)

US Patents

Orion and Taurus: NPEs at the Federal Circuit (Patently-O)

Decline of university patenting and the end of the Bayh-Dole effect (Intellectual Property Watch)

Consolidated glossary of US patent classification terms (Patent Librarian’s Notebook)

New US patent classification class: 850 – scanning probe techniques (Patent Librarian’s Notebook)

New USPC classification orders: #1881-1884 (Patent Librarian’s Notebook)

Discussion of M Blaxill and R Eckardt study ‘The Innovation Imperative: Building America’s Invisible Edge for the 21st Century’ (Patent Prospector) (IAM)

Prosecution for enforcement (Patent Prospector)

Federal Circuit disposition statistics (Patently-O)

Patent litigation in the US is a minority sport and we should not lose sight of that (IAM)

Federal Circuit caseload (Inventive Step)

CAFC braces for overhaul as retirements loom (Law360)

Patent rejection – Law firms that appeal (Patently-O)

The art of the patent disclosure interview (Anything Under the Sun Made by Man) (Anything Under the Sun Made by Man)

And the beat goes on… war on juries in patent cases continues? (IP Litigation Blog)

New Jersey local patent rules (IP Frontline)

US Patents – Decisions

CAFC applies KSR – finding combination claims obvious: Ball Aerosol v Limited Brands, Bath & Body Works etc (Patently-O) (IP Law Observer) (Patent Prospector) (Hal Wegner) (Law360)

CAFC rejects lower court’s obviousness analysis: Sud-Chemie v Multisorb Technologies (Promote the Progress)

CAFC affirms ruling that Hayes Lemmerz International did not infringe patents for steel spoked wheels held by Kuhl Wheels and Epilogics Group (Law360)

District Court E D Texas: How not to appeal Markman ruling: SciCo Tec v Boston Scientific Corp ( (Law360)

District Court E D Texas: Motion for summary judgment on standing denied in design patent case: Dexas Intern. Ltd v Office Max Inc (

District Court Delaware: Judge finalises Rambus ruling over shredded documents (Law360) (Hal Wegner)

District Court N D Illinois: Where answering party lacks sufficient information, allegation may not be denied: Ratner v M&M Control Serv., Inc (Chicago Intellectual Property Law Blog)

District Court N D Illinois: Patent expert allowed on limited subjects: Se-Kure Controls, Inc v Diam USA, Inc (Chicago Intellectual Property Law Blog)

District Court N D California: Summary judgment that Medtronic stent patent claims not indefinite in battle with Abbott Laboratories over two stent patents (Law360)

Another Bilski decision from the BPAI: Ex parte Nawathe et al (Peter Zura’s 271 Patent Blog)

USPTO rejects one of two patents at centre of infringement battle brought by Funai against Vizio (Law360)

US Patents – Lawsuits and strategic steps

Alternative Electrodes – Federal judge refuses to dismiss AE’s claims that Encore Medical and Empi ran afoul of antitrust law by bringing meritless patent litigation and disparaging plaintiff’s products (Law360)

Bank of America – Bank of America asks judge to force Every Penny Counts to comply with discovery request in ongoing patent dispute over ‘Keep the Change’ program (Law360)

BCD Semiconductor Manufacturing – BCD, Power Integrations settle patent litigation (IP Watchdog)

BMW of North America – Ferromatik Milacron Maschinebau and two other companies accuse BMW of infringing four patents relating to plastics molding (Law360)

CSIRO – Motion to identify new expert witness denied in CSIRO v Buffalo (

Foley & Larder – DataTern and Amphion Innovations accuse Foley & Lardner of overcharging and underperforming (PatLit)

General Electric – GE, Ronald A Katz settle patent litigation relating to interactive voice applications (IP Watchdog)

HomMed – Eon Corp IP Holdings agrees to drop HomMed as defendant in patent infringement case over two-way communication technology (Law360)

Hon Hai Precision Industry Co – Federal judge dismisses Sherman Act claims in dispute between Hon Hai and Molex over patent licensing contract (Law360)

Keystone Autonics – Keystone drops wireless signal technology patent suit against Sirius XM Radio (Law360)

Microsoft – Microsoft issued 10,000th US patent (Managing Intellectual Property)

Monolithic Power Systems – Monolithic wins approval to drop Fish & Richardson in favour of Latham & Watkins in battle against O2Micro International (Law360)

Samsung – Samsung reaches deal with Media Digital over phone touch screens (Law360)

Simulab – Simulab survives summary judgment (barely) in surgical trainer patent case: Simulab v Synbone (Washington State Patent Law Blog 

US Copyright

H R 801 Fair Copyright in Research Works Act: Anti-open access bill a real head-scratcher (Public Knowledge)  

Copyright Alliance and AAP welcome reintroduction of anti-open access bill (Public Knowledge)

H R 848 Performance Rights Act: Performance right for sound recordings moves forward, questions remain (Public Knowledge)

Copyright in characters – fuzzy idea / expression divide II (Spicy IP)

US Copyright – Decisions

Court of Appeals 9th Circuit: Copyright in characters – blurring of the idea and expression divide: Warner Brothers & AA Knopf v Columbia Broadcasting System, Hammett & Ors (Spicy IP)

US Copyright – Lawsuits and strategic steps

Associated Press – Associated Press goes after Obama artist for copyright violation (IP Watchdog) ( (Excess Copyright) (Law360)

US Trademarks

Use of unoriginal trade marks risks confusing consumers (Seattle Trademark Lawyer)

Death of Kinko’s brand (IP finance)

InformationWeek blog slams Nordstrom for alleged TTAB conduct (Seattle Trademark Lawyer) (TTABlog)

US Trade Marks – Decisions

9th Circuit addresses whether “first publication” exclusion in insurance policy applies to trademark infringement claims: United National Insurance Company v Spectrum Worldwide, Inc., et al (IP Law Blog) (Seattle Trademark Lawyer)

CAFC: FirstHealth denied motion to reopen testimony period in trade mark case following missed deadline (IP Directions)

TTAB says CHED ‘R’ WEDGES merely descriptive of pet treats: In re Midwestern Pet Foods, Inc (not precedential) (TTABlog)

TTAB finds BRAIN STATE CONDITIONING merely descriptive of neurofeedback training: In re Brain State Technologies LLC (not precedential) (TTABlog)

TTAB finds FERROLABS and FERRO TEC for ferrofluidic fluids not confusingly similar: Ferrotec (USA) Corporation and Ferrotec Corporation v Ferro Labs, Inc (not precedential) (TTABlog)

TTAB affirms 2(d) refusal, finding two MILLER’S marks for restaurant services confusing similar: In re Twenty Three East Adams Street Corp (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

CC Africa – Abercrombie & Kent secure temporary restraining order to prevent CC Africa from using ampersand in its new name &Beyond in the US pending resolution of trade mark infringement suit over right to use ampersand (Afro-IP) – Court questions filing of suit where no party is resident of the district:, Inc v. Air Ocean Land Sol’ns, Inc (Chicago Intellectual Property Law Blog)

ING Direct Bancorp- PNC Financial Services Group seeks to invalidate ING’s ‘orange ball’ trade mark (Law360)

Joyce Theater – Joyce Theater seeks Federal Court review of TTAB ownership decision: Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc. (TTABlog)


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