General GWiR 20 March 2009 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:

EPO allowance rate drops – allowance rates at all three trilateral patent offices below 50% (IAM) (BLOG@IP::JUR) (Promote the Progress) (Peter Zura’s 271 Patent Blog)

USPTO budget shortfall will have long-term effects; Office blames recession, ignoring other likely contributing factors (Patent Baristas) (Promote the Progress) (Peter Zura’s 271 Patent Blog)

CAFC: Judge Linn calls for en banc review of the standard for inequitable conduct: Larson Manufacturing v Aluminart Products (Inventive Step) (Patently-O) (Law360) (Hal Wegner)

Global – General

India, IP and the economic crisis IP Think Tank podcast (IP Think Tank)

Director’s liability, IP in business schools and US patent reform IP Think Tank podcast (Patent Baristas)

News from the ivory tower (BLOG@IP::JUR)

IP Brand Development Group releases its mission statement and announces first meeting (IAM)

Lamy restarts informal WTO process on proposals on IP and biodiversity, GI extension (Intellectual Property Watch)

Can WIPO really help to rescue an IP system under stress? (IAM)

Global – Patents

EPO allowance rate drops – allowance rates at all three trilateral patent offices below 50% (IAM) (BLOG@IP::JUR) (Promote the Progress) (Peter Zura’s 271 Patent Blog)

Machine translations – two slightly contradictory assertions (BLOG@IP::JUR)

Does patenting research change the culture of science? (Competitive Info)

Is it time to end patent examinations?: Discussion with Bo Heiden (IAM)

Global – Copyright

Obama and diplomatic DRM – Obama’s gift of 25 classic American movies for PM Gordon Brown unwatchable due to region coding (Excess Copyright)


Copyright in chess move sequences? (The IP Factor)


Canada favours early release of ACTA text (Michael Geist)

Dust up in the art world – Canadian trade mark registrations for PAINTERS 11 and PAINTERS ELEVEN (Canadian Trademark Blog)

VANOC uses copyright to target ticket re-seller (Michael Geist) (Excess Copyright)

MIT adopts university-wide open access mandate (Michael Geist)


Third revision of China’s patent law (Post-Grant Opposition) (Hal Wegner)

How to sanction lack of IPR enforcement in China: Priority watch list (IILA) or foreign country/section 306 monitoring status (IACC) (IP Dragon)

Baixiang wins Chinese character trade mark infringement against Baijia (China Blawg)

Interview with Mr Joseph Simone about which steps the US could take in regard to IPR in China (IP Dragon)


ECJ: No test for bad faith trade mark registration: Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (Out-Law)

ECJ: NASDAQ appeal dismissed; trade mark use and dilution: Antartica Srl v OHIM (Class 46) (IPKat)

ECJ: Trade intermediaries and trade mark use: UDV North America v Brandtraders NV (IPKat)

CFI: Inactivity is not the same as withdrawal: Laytoncrest Ltd v OHIM, Erico International Corp (Class 46)

Commission repeats call for single EU patent (Out-Law)

Mr Dietmar Harhoff’s views of the patent system (BLOG@IP::JUR)

European Commission calls for single EU patent (The IP Factor) (Law360)

Europe needs to heed its own patent warnings (IAM)

OHIM system delays (IPKat)

Hong Kong

Hong Kong helps small businesses to manage IP (Managing Intellectual Property)


Customs seizures in India: patently unconstitutional? (Spicy IP)

Jurisdiction and forum non conveniens – IP: St Ives Laboratories v Arif Perfumers (Spicy IP) (Spicy IP)

Extending fair use to academic works (International Law Office)


Keter Sacrimental Articles successfully cancels Indigo Tabernacle Industries’ patent for religious garment (The IP Factor)

Israel Commissioner of Patents issues circular regarding requesting allowance of Israel patent based on issuance abroad that is under challenge (The IP Factor)

Spaced out trade mark decision for APOLLO (The IP Factor)

Procedural ruling by new IP Arbitrator (The IP Factor)

Recordal of licensed use of trade mark postponed whilst registration is under contentious proceedings (The IP Factor)

Israel Patent Office allows descriptive slogan to be registered as a trade mark (The IP Factor)


IP securitisation in Italy (IP finance)


81.5% of counterfeit products in Japan originate from China (IP Dragon)


Telecoms giant Zain may be sued over use of Zap trade mark in Kenya (Afro-IP)


Dutch Supreme Court liberalises new matter rule: Boston Scientific v Medinol (Hal Wegner)


Peru accedes to WIPO’s Patent Cooperation Treaty (WIPO)


METALCHEM versus METAL-CHEM (Class 46)

Professional term cannot be registered as trade mark – OPTOMETRYSTA (optometrist) (Class 46)


New Industrial Property Act (Afro-IP)

South Africa

Court settles SOUL spat (International Law Office)

David J finds in favour of application in trade mark dispute over CENTURY CITY: Century City Property Owners’ Association v Century City Apartments Property Service (Afro-IP)


Supreme Court to set criteria on when a sign in trade alters (or not) its distinctive character as registered (Class 46)

The government to launch ‘Made in/by Spain’ brand campaign to seduce the US market (Class 46)


Gucci loses trade mark for their logo in Sweden (The IP Factor)


Law reform in Turkey and the chance of more to come (Class 46)


Uganda’s phone tapping bill, a ruse for IP infringement?! (Afro-IP)

United Kingdom

EWHC: Independent consultant held jointly liable for infringement: MMI Research Ltd v Cellxion Ltd (PatLit)

Can THE JOURNAL ever be distinctive for a journal? (Class 46)

Dragon’s Den winner infringed own patent, IPO rules (Out-Law)

Credit crunch prompts UKIPO to cut fees (Managing Intellectual Property)

Marketers value colour most in brand identity, according to UK survey (Managing Intellectual Property)

United States
US General

US government says ACTA a national security secret (Michael Geist) (Ars Technica) (ContentAgenda) (Public Knowledge)

USPTO budget shortfall will have long-term effects; Office blames recession, ignoring other likely contributing factors (Patent Baristas) (Promote the Progress) (Peter Zura’s 271 Patent Blog)

USPTO seeks nominations for public advisory committees (Peter Zura’s 271 Patent Blog)

US Senate approves Ron Kirk as USTR (Intellectual Property Watch)

Venture capital survey reveals weakening valuations in late 2008 (Technology Transfer Tactics)

Small Business Innovation Research funding under the gun (Patent Baristas)

‘The age of IP rights being at the forefront of American trade policy is over’ predicts former USPTO commissioner Bruce Lehman (Managing Intellectual Property)

IP suits continue downward trend in 2008, according to statistical data on District and Appeal Courts (Law360)

Inventors Hall of Fame moves to USPTO (IP Watchdog)

US General – Decisions

Sixth Appellate District: Trade secrets and pre-emption: K.C. Multimedia, Inc. v. Bank of America Technology & Operations, Inc (IP Law Blog)

US General – Lawsuits and strategic steps

Clear Channel Communications – Clear Channel, Live Nation cut from business model antitrust suit (Law360)

US Patent Reform

Patent Reform Act 2009 – Interlocutory claim construction appeals create a whole new patent backlog (Promote the Progress)

Patent Reform Act 2009: more on damages (Patently-O)

Patent Reform Act 2009: Rooklidge says reform damages provision violates seventh amendment (Patently-O)

Intellectual Property Owners Association, Coalition for 21st Century Patent Reform and Reuters on patent reform (Patent Docs)

Spangenberg on apportionment, obviousness and anonymous comments (Patently-O)

NERA paper ‘A Brief Comment on the Damages Provisions in the Patent Reform Act of 2009’ (PatLit)

Manufacturing Alliance on Patent Policy economist Dr Scott Shane on damages provision (Patent Docs)

Senate Judiciary Committee places Patent Reform Bill on agenda (Patent Docs)

Lawmakers request additional time to debate patent reform (Inventive Step) (Law360)

Perspective of an anonymous patent examiner (response to earlier post ‘Change in Patent Office philosophy can lead recovery’) (IP Watchdog)

The second front in the US patent reform debate could be the most significant (IAM)

Good news, bad news on patent reform (IP Watchdog)

Patent reform debate has a sense of déjà vu (Inventive Step)

Controversial measures may doom Patent Reform Act (Law360)

Deferred examination: A solution whose time has come (Intellectual Property Watch)

US Patents

USPTO warns applicants not to file PCTs with search authorities of limited competence (Peter Zura’s 271 Patent Blog) (Patent Docs) (Patentably Defined) (Daily Dose of IP)

US loses edge in patent dominance (Managing Intellectual Property)

US Court Report shows patent litigation continues to be flat (Peter Zura’s 271 Patent Blog)

House passes patent-judge pilot program bill (Law360)

Did you know… determinations of patent issues at the ITC are for purposes of section 337 and do not have res judicata effect? (ITC 337 Law Blog)

ITC announces temporary change to filing procedures – EDIS unavailable from 26-30 March 2009 (ITC 337 Law Blog)

US Patents – Decisions

CAFC affirms $4.6 million award for litigation misconduct: ICU Medical v Alaris Medical Systems (Patently-O) (Hal Wegner) (Patent Prospector) (Patently-O) (Patently-O) (Law360)

CAFC: Improper summary judgment on doctrine of equivalents; marking products that perform method claims: Crown Packaging v Ream Beverage Can (Patently-O)

CAFC: Cybor de novo review questioned; rehearing en banc denied: Medegen v ICU Medical (Hal Wegner)

CAFC: Judge Linn calls for en banc review of the standard for inequitable conduct: Larson Manufacturing v Aluminart Products (Inventive Step) (Patently-O) (Law360) (Hal Wegner)

CAFC upholds award of priority of invention to Procter & Gamble in its battle with Henkel Corp over dishwashing tablets (Law360)

District Court E D Texas: Nintendo prevails over Fenner Investments in patent suit over Wii console and controllers (Washington State Patent Law Blog) (Law360)

District Court Colorado: Jury returns $5.3 million verdict in patent case against Master Lock, finding lock company failed to prove plaintiff’s patent claims were obvious and therefore invalid (Law360)

District Court Nevada upholds jury verdict awarding $11.4 million in damages to Japan Cash Machine in spat with MEI over patents covering devices used in casino games (Law360)

District Court E D Missouri: Avante voting machine patents invalid due to obviousness (Law360)

District Court S D California dismisses antitrust lawsuit brought by Broadcom against Qualcomm involving claims Qualcomm misused patents (Law360)

US Patents – Lawsuits and strategic steps

Affinity Labs of Texas – Affinity, VAIS reach deal over car audio patent (Law360)

Avery Dennison Corp – Federal judge rejects Avery’s bid to stop Alien Technology from using a certain machine and method to produce RFID inlays (Law360)

Avid Technology – Avid, eDigital settle flash memory patent suit (Law360)

Bank of America – Parties argue Bilski in Bank of America ‘Keep the Change’ suit against Every Penny Courts (Law360)

Boston Scientific Corp – Boston Scientific, Neurovascular settle aneurysm patent spat (Law360)

Boston Scientific Corp – OrbusNeich Medical accuses Boston Scientific of patent infringement, breach of contract and misappropriation of trade secrets relating to stent designs (Law360)

Cummins – Cummins sues TAS Distributing to invalidate car engine patents (Law360)

Enterasys Networks – Federal judge denies new trial in router patent case between Enterasys and Extreme Networks (Law360)

Funai Electronics – USPTO deals Funai setback in DTV patent reexam (Law360)

HearWear Technologies – Federal judge refuses bids by plaintiff HearWear and defendant Vivatone Hearing Systems to left stay while hearing aid technology patents-in –suit are re-examined (Law360)

IBM – ALJ Essex issues initial determination of patent validity, no s 337 violation in matter concerning computer components brought by IBM (ITC 337 Law Blog

Jackson Hewitt Tax Service – Jackson Hewitt seeks to hit H&R Block Tax Services with Bilski test (Law360)

Knowles Electronics – ITC decides to review initial determination in investigation concerning silicon microphone packages in response to complaint by Knowles Electronics against MEMS Technology Berhad of Malaysia (ITC 337 Law Blog)

LG – Hitachi wins summary judgment that four patents held by LG Electronics are exhausted, negating LG’s infringement claims against Hitachi (Law360)

Medtronic – Medtronic gets ok to seek review of summary judgment ruling in infringement case against Abbot Lab’s (Law360)

Rambus – Court leans toward stay in Nvidia, Rambus battle (Law360)

Rambus – Rambus appeals patent ruling over shredded documents in dispute with Micron Technology (Law360)

Remediation Products – In confident open letter, RPI updates customers on patent suit against Adventus and EnviroMetal Technologies (Green Patent Blog)

Samsung Electronics Co – ITC institutes investigation regarding digital cameras following complaint from Samsung against Eastman Kodak Company (ITC 337 Law Blog) (Law360)

Signet Armorlite – Signet’s bid for sanctions fails in lens patent feud with Carl Zeiss Vision International (Law360)

Ultra Products – Ultra files patent infringement suit against Staples, Best Buy, CDW Corp, Fry’s and Micro Center over computer power supply products (The Prior Art)

Whipstock Services – Whipstock settles drilling patent suit against Key Energy Services (Law360)

US Copyright

Opinion and analysis of Fair Copyright in Research Works Act proposed by John Conyers (Lenz Blog)  

Obama’s royalties (Excess Copyright)

US Copyright – Decisions

District Court S D New York: ‘Family Guy’ parody of Walt Disney Co’s song ‘When You Wish Upon a Star’ constitutes fair use (Law360)

US Copyright – Lawsuits and strategic steps

Forever 21 – Forever 21 told to produce documents in copyright suit brought by Anthropologie (Law360)

US Trademarks

Helping yourself by helping examining attorneys (Registration Ruminations) (The IP ADR Blog)

A brief history of March Madness: the trade mark (Seattle Trademark Lawyer)

Wisconsin’s ‘Live like you mean it’ slogan faces (misguided) resistance (Seattle Trademark Lawyer)

US Trade Marks – Decisions

TTAB precedential no 7: TTAB okays amended section 18 petition for partial cancellation, if amended a bit more: IdeasOne, Inc v Nationwide Better Health, Inc (TTABlog)

Carroll Shelby’s Cobra design marks survive feeble TTAB challenge: Unique Motorcars v Carroll Hall Shelby Trust (not precedential) (TTABlog)

Two more ‘bad specimen’ cases to ponder: In re Atlas Media Corp (not precedential); In re Mississippi Cheese Straw Factory, Inc (not precedential) (TTABlog)

TTAB finds KID’S OUTDOORS & design not confusingly similar to OUTDOOR KIDS both for clothing: Outdoor Kids, Inc v Parris Manufacturing Co, Inc (not precedential) (TTABlog)

Giving naked consents some weight, TTAB reverses 2(d) refusal of BUHLER & design: In re Buhler Technologies GmbH (not precedential) (TTABlog)

Court of Appeals for the 7th Circuit rules insurer Capitol Indemnity Corp must defend Elston Self Storage Service Wholesale in legal battle concerning its sale of allegedly counterfeit cigarettes (Law360)

US Trade Marks – Lawsuits and strategic steps

Fresh Del Monte Produce – Supreme Court of the State of New York agrees to hear dispute between Fresh Del Monte Produce and Del Monte Pacific over right to use Del Monte trade mark (Law360)

Louis Vuitton Malletier – Federal judge gives go-ahead to trade mark suit brought by LVM against Dooney & Burke over replicated handbag s-lock (Law360)

Spacersaver Corp – Spacesaver files suit against The Marvel Group over gun rack design (Law360)

Target Corp – Payless Shoesource Worldwide, Target settle remaining claims in suit over Taregt’s slogan ‘Expect More. Pay Less’ (Law360)


Uruguay signs up for WIPO Copyright Treaty 1996 (IP tango)


Reply to third party oppositions, now mandatory in order to avoid abandonment (IP tango)


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