General GWiR 16 January 2009 from IP Think Tank

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Highlights this week included:

CAFC: In re Comiskey rehearing en banc falls two votes short; important dissent by Moore J (Hal Wegner) (Inventive Step) (Patently-O) (Washington State Patent Law Blog) (Peter Zura’s 271 Patent Blog) (Law360) (Patent Prospector)

District Court Delaware: Document shredding voids 12 Rambus patents: Rambus v Micron Technology (Law360) (Ars Technica) (Hal Wegner) (The Prior Art) (Techdirt)

IFI Patent Intelligence report: non-US companies obtain majority of US patents; IBM becomes first company to be issued more than 4,000 US patent in one year (Inventive Step) (Law360) (IAM) (Securing Innovation) (Law360) (Peter Zura’s 271 Patent Blog)

ECJ: Free of charge gifts and ‘genuine use’: Silberquelle GmbH v Maselli-Strickmode GmbH (Class 46) (IPKat)



Global – General

Pharmaceutical patent linkage by unusual means – IP Think Tank podcast 12 Jan 09 (IP Think Tank)

Promoting IP awareness – WIPO database of materials (Patent Librarian’s Notebook)

Global – Trade Marks / Brands

Branding and the demise of Mervyn’s (IP finance)

Fun, simple way to police multiple brands on Twitter (The Trademark Blog)

Global – Patents

How asking one fundamental business question can reduce expense and improve business outcome of patent litigation (IP Asset Maximizer Blog)

Confessions of a ‘recovering patent attorney’ and why I have joined the growing ranks of IP strategists (IP Asset Maximizer Blog)

Has the great patent fire-sale started? (IP finance)

Global – Copyright

A bit about derivative works (Ip’s What’s Up)


Singapore Treaty takes effect March 2009 (Australian Trade Marks Law Blog)

Capital allowances: business related costs – business transfer arrangement establishing right to intellectual property (IP Down Under)

Droit de suite scheme introduced into Parliament (International Law Office)

Interlocutory relief partially granted in Sebel Furniture Limited v Acoustic & Felts Pty Limited concerning shape mark (IP Down Under)


Geographic indications: Trade-marks Act amendments: Put down that glass of Canadian burgundy! (Canadian Trademark Blog)

CIPO to open public consultation period regarding proposed changes to section 45 proceedings (Canadian Trademark Blog)

Kraft and Euro-Excellence settle copyright case concerning parallel importation of chocolate bars (Excess Copyright)

Toronto Star investigates textbook copying (Michael Geist) (Excess Copyright)

CBC on public domain (Michael Geist) (Excess Copyright)

Art Gallery of Ontario photography policy faces criticism over restriction based on misleading copyright claims (Michael Geist)


Trade marks in China: Nomen est omen (IP Dragon)

Does China export in violation of license EU train technology back to Europe? (IP Dragon)

Patent strategies for foreign R&D work in China (Philip Brooks’ Patent Infringement Updates)

All clichés but still true: Intellectual Property Rights enforcement in China leaves room for improvement (IP Dragon)

Recognition and protection of well-known trade marks (International Law Office)

Revised Chinese patent law aims at quality, compulsory licensing (Intellectual Property Watch)

Zen and the art of intellectual property in China (IP Dragon)


Colombian Trademark Office finds MAC POLLO safe from risk of confusion in opposition filed by McDonalds Corporation (IP tango)


Danish Patent and Trademark Office announces job cuts blaming economic downturn (Innovationpartners)


ECJ: Free of charge gifts and ‘genuine use’: Silberquelle GmbH v Maselli-Strickmode GmbH (Class 46) (IPKat)

ECJ to consider interpretation of Article 14(3) of Council Regulation on Community Design Registration: Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo, S.L. and Acierta Product & Position, S.A. (IPKat)

Benoit Battistelli, director general of France’s INPI, appointed as next chair of EPO Administrative Council (Managing Intellectual Property)

European patent trolls feel the heat: Nokia reports to the European Commission (IAM)

Agricultural product quality: MARQUES speaks out (Class 46)

European Patent Office to replace corrupt US assignment data (Daily Dose of IP)


Helsinki Court of Appeal denies Akun Tehdas Oy’s appeal and maintains lower court decision for the most part in battle over trade name and trade mark AKUN TEHDAS (translation ‘Aku’s factory’) (Class 46)


Bundesgerichtshof refuses double licence fee for ringtones ending dispute between artists/music publishers and ringtone providers: F Kretschmer v Telemedia (IP finance)

‘Like an Animal in a Zoo’ copyright dispute over Klaus Kinski quotations before Regional Court of Cologne (IPKat)

DPMA practice amendment in cases of insolvency proceedings against party in proceedings before DPMA (Class 46)

Successful East German brands (Class 46)


Greek Court of Cassation: Indirect rejection of the post-sale confusion doctrine? (Class 46)


Geographical indication protection for Tanjavur dolls (Spicy IP)

Economic implications of copyright: the exhaustion principle (International Law Office)

Extensions of copyrights? (Spicy IP)

Global credit crisis leads to boom times for legal process outsourcing businesses specialising in IP (Spicy IP)


Israeli bakery Matzot Aviv files trade mark infringement suit against rival Patisserie Aviv and US importer Bagel Bites (The IP Factor)

Israel Patent Office relaxes conditions for modified examination (The IP Factor)


Italian Supreme Court recognises ‘post sale confusion’ in criminal proceedings concerning sales of counterfeit luxury watches (Class 46)


JPO considers making software and business methods patentable by 2011 (Peter Zura’s 271 Patent Blog)

Japanese companies can register Chinese copyrights in Japan: 50 percent time (IP Dragon)

IP High Court rejects unjust enrichment claim against government (International Law Office)


The multi-billion counterfeit industry (IP Kenya)


Korean Patent Court issues code of ethics as part of measures to become corruption-free agency (IPKat)


Patent Amendment Rules relaxed by European Patent Convention 2000 (International Law Office)


Nigerian Copyright Commission raids Multimesh Communications office on basis of complaint by HiTV alleging pirating of English Premier League broadcasts (Afro-IP)


Public domain works celebrated in Poland (Creative Commons)

District Administrative Court in Warsaw upholds PPO’s rejection of LA ESPANOLA on grounds of lack of distinctive character (Class 46)

Pickenpack-Hussmann & Hahn Seafood seeks declaration of lapse of protection for Katarzyna Warzocha’s PICKENPACK mark for frozen foods (Class 46)

Long way to confusion – EAU DE TOKYO v TOKYO BY KENZO (Class 46)

South Africa

New Intellectual Property Rights Act (Afro-IP)

South African Music Rights Organisation (SAMRO) annual distribution (IP finance)

Patent delay costs – patent management principles (article by Frank Joffe and Theo du Preez including discussion of Lundbeck A/S and Lundbeck SA (Pty) Ltd v CIPLA Medpro (Pty) Ltd) (Afro-IP)

United Kingdom

Patents Court guidance on drafting of patent and know-how licences: Oxonica Energy Limited v Neuftec Limited (International Law Office)

Patent Court rules CoreValve has not infringed Edward Lifesciences’ patent relating to transcatheter heart valve technology (Law360)

Vexatiousness in Patent Office opinions (IPKat)

Bona vacantia – acquisition of ownerless trade marks (IPKat)

The company formerly known as Coke Cola Limited… misses renaming deadline; Company Names Tribunal renames as 06519140 Limited (IPKat)

Securitisation of IP – financial meltdown and ‘Bowie Bonds’ (Excess Copyright)


United States

US General

Bill Richardson’s withdrawal to delay USPTO appointment (Managing Intellectual Property)

Chamber of Commerce provides detailed recommendations to new administration regarding USPTO (Patent Docs) (Intellectual Property Law Blog)

INTA letter to Obama transition team (The Trademark Blog)

USPTO issues ‘Performance and Accountability Report’ for fiscal 2008 (TTABlog)

US Customs seizure statistics 2008: ‘China number one, India number two and Hong Kong number three counterfeit producers’ (IP Dragon)

2009 Law360 Litigation Almanac – IP litigation numbers fall in US (Law360) (Out-Law)

Congress continues to sabotage federal judiciary (Inventive Step) (Hal Wegner)

US General – Decisions

District Court C D California: Lite-On can go ahead with unfair competition claim against Toshiba even though the companies previously settled a lawsuit involving some of the same issues (Law360)

US General – Lawsuits and strategic steps

Satyam – Satyam withdraws disparagement suit against Upaid (Spicy IP)

US Patent Reform

Patent Office chiefs tend not to have a patent background and maybe that’s a good thing (IAM)

AIPLA debates patent reform: damages; post-grant review (Hal Wegner)

Reform suggestions for the Patent Office (IP Watchdog)

US Patents

IFI Patent Intelligence report: non-US companies obtain majority of US patents; IBM becomes first company to be issued more than 4,000 US patent in one year (Inventive Step) (Law360) (IAM) (Securing Innovation) (Law360) (Peter Zura’s 271 Patent Blog)

PTO Board abolishes United States Patents Quarterly parallel citations; the reasons why… and a conflicting message for the Associate Solicitor (Hal Wegner)

When it comes to patent marking, timing is everything (IP Frontline)

‘The Likely Adverse Effects of an Apportionment-Centric System of Patent Damages’ study by Scott Shane PhD: Apportionment damages would decrease patent value between $35-85B (Peter Zura’s 271 Patent Blog) (Patent Baristas)

Chief Judge Michel on the state of patent law (Chicago Intellectual Property Law Blog)

Is E D Texas still THE venue for bringing patent plaintiff cases? (IP Litigation Blog), (Managing Intellectual Property)

Pre-litigation strategies: patent re-examination (Philip Brooks’ Patent Infringement Updates)

Additional USPTO fee changes take effect 12 January (Daily Dose of IP)

Third parties and protective orders – can you handle the truth? (PATracer)

Patent litigation evolves slowly in shaky economy (Law360)

US Patents – Decisions

Supreme Court denies certiorari of pending appeals: BPMC v California (re patent defence of sovereign immunity) and Rattler Tools v Bilco (re non-precedential claim construction opinion) (Patently-O) (Hal Wegner)

CAFC: Admissions as ‘prior art’; KSR-based obviousness: Tokyo Keiso v SMC and Chronotek Systems (non precedential) (Hal Wegner) (Patent Prospector) (Law360)

CAFC: Harsh reminder of KSR impact on law of obviousness: Sundance v DeMonte Fabricating (Promote the Progress)

District Court Delaware: Document shredding voids 12 Rambus patents: Rambus v Micron Technology (Law360) (Ars Technica) (Hal Wegner) (The Prior Art) (Techdirt)

CAFC: Vehicle IP (VIP) v General Motors et al (Patent Prospector) (Promote the Progress)

CAFC: Panavise Products v National Products (not precedential) (Patent Prospector) (Promote the Progress)

CAFC: In re Comiskey rehearing en banc falls two votes short; important dissent by Moore J (Hal Wegner) (Inventive Step) (Patently-O) (Washington State Patent Law Blog) (Peter Zura’s 271 Patent Blog) (Law360) (Patent Prospector)

CAFC rejects challenge by Ninestar Technology, Town Sky and Dataproducts to ruling by US International Trade Commission that the companies infringed Seiko Epson’s ink cartridge patents (Law360)

District Court Delaware: Honeywell’s patent priority pitch prevails in Solvay suit (Green Patent Blog)

District Court Delaware: $6.5 jury verdict sticks in Telcordia Technologies’ patent suit against Cisco (Law360)

District Court N D Illinois: Overlapping issues and earlier trial date do not warrant transfer: ACCO Brands USA LLC v PC Guardian Anti-Theft Products (Chicago Intellectual Property Law Blog)

District Court Connecticut hands down summary judgment ruling Clearwater’s patents invalid and not infringed by Evapco’s industrial and commercial cooling equipment (Law360)

District Court E D Texas: Motion to transfer patent case denied citing In re VW II: J2 Global Communications, Inc v Protus IP Solutions, Inc (

District Court S D New York affirms jury’s $43 million verdict finding Iwasaki Electric Co infringed patent by US Philips Corp for lamps used in projectors and rear-screen televisions (Law360)

BPAI applies Bilski to deny patentability of machine claim: Ex parte Cornea-Hasegan (Patently-O)

USPTO trumps Federal Circuit: DyStar Textilfarben GmbH & Co Deutschland KG v C H Patrick Co (IP Frontline)

US Patents – Lawsuits and strategic steps

Charter Communication Operating – Charter files patent infringement suit against Verizon Communication over its FiOS fibre-optic television services (Law360)

Eon-Net – Eon-Net sues Barnes & Noble over alleged infringement of patents covering information processing software (Law360)

Fenner Investments – Telecommunications company Foundry Networks reaches settlement in patent infringement suit brought by Fenner against numerous defendants (Law360)

Fujinon – All claims and counterclaims related to one patent in infringement suit brought by Fujinon against Motorola have been dropped, two other patents still in play (Law360)

Guardian Media Technologies – GMT files lawsuit against 36 companies including Acer America, Apple, Bang & Olufsen over alleged infringement of its patent relating to parental controls on video content (Ars Technica)

IAS – Judge tosses last IAS fingerprint technology suit a year after federal judge found patent in suit invalid (Law360)

International Printer Corp – Dell latest in long list of defendants to reach settlement with Acacia subsidiary International Printer over multifunction printer technology (Law360)

Light Valve Solutions – LVS reaches licensing agreement with RPX; RPX announces that defendants in lawsuit brought by LVS can get out of the lawsuit by signing up with RPX and getting patent licence (IAM)

Lonestar Inventions – Lonestar accuses Advanced Micro Devices chips, including one used in Wii console, of infringing its patent covering high-capacitance structure in a semiconductor (Law360)

Multi-Format – With Multi-Format holding Bally’s Park Place casino, rather than its parent company, liable for patent infringement, Sonnenschein Nath & Rosenthal exits dispute (Law360)

O2 Micro – International Trade Commission agrees to hear O2 Micro’s complaint against LG Electronics and others for alleged infringement of LCD circuit patents (Law360)

Rambus – Seven amicus brief filed in support of FTC’s effort to have its antitrust appeal against Rambus heard by the High Court (Law360) (Discussion of FTC’s petition for certiorari – Patently-O)

Sanofi-Aventis Deutschland – Sanofi sues Novo Nordisk over safety needle patent (Law360)

TiVo – USPTO agrees to re-examine TiVo ‘time warp’ patent yet again in battle between TiVo and DISH/Echostar (Ars Technica) (Law360)

Whetstone Electronics – Whetstone settles with LDR International in suit brought against 30 computer printer makers over two interface card patents (Law360)

US Copyright

IP suits fall due to copyright slump (Law360)

US Copyright – Decisions

CAFC: No copyright for prisoner: James Walton v United States (WIRED) (IPKat)

District Court N D Illinois: Court requires copyright plaintiff to include allegedly infringing work in complaint: Consumer Digest Comms v Westpoint Home, Inc (Chicago Intellectual Property Law Blog)

Pre-1923 publication not in copyright public domain: Societe Civile Succession Richard Guino v Renoir (I/P Updates)

Bratz to remain on sale for at least a year (Property, intangible)

US Copyright – Lawsuits and strategic steps

Cablevision System Corp – US Supreme Court asks Department of for input in copyright dispute between Cablevision and group of film studios and broadcasting companies (Law360) (Techdirt)

US Trade Marks – Decisions

Appellate Div New York State Supreme Court: Buddha Bar chain wins appeal in trade mark fight (Law360)

District Court Maryland: No fame in Mensa’s trade mark: American Mensa, Ltd v Inpharmatica Ltd et al (Maryland Intellectual Property Law Blog)

Appeal of BANANA CHAIR 2(e)(1) refusal bears fruit at TTAB: In re Future First LLC (not precedential) (TTABlog)

TTAB finds CHARLESTON GATE merely descriptive of jewellery copying Charleston Gate designs: In re B Gould Jewelry, Inc (not precedential) (TTABlog)

TTAB finds confusion likely between IRON MAN for bodybuilding magazines and IRONMAN for nutritional supplements: Ironman Magazine v World Triathlon Corporation (not precedential) (TTABlog)

TTAB finds OSHO generic for goods and services related to religion, philosophy and science: Osho Friends International v Osho International Foundation (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Breath of Hope – Breath of Hope files application to register CONGENITAL DIAPHRAGMATIC HERNIA AWARENESS (BoingBoing)

FremantleMedia North America – FremantleMedia owner of American Idol television program sues Stripper Idol over trade mark (IP Watchdog)

Nina Ricci – Nina Ricci to sue makers of Twilight perfume over similar bottle shape (Now Smell This)

Trader Joe’s Co – Trader Joe’s sues Gristede’s Foods for trade mark infringement over planned opening of rival supermarket named Trader John’s (Law360)

Victoria Partners – Victoria Partners files counterclaims that owner of Casino de Monte-Carlo in Monaco does not own trade mark rights to the name in the US (Law360)

Voltaix – Voltaix sues rival NanoVoltaix for trade mark infringement and unfair competition (Law360)



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