General GWiR 23 January 2009 from IP Think Tank

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Highlights this week included:

Obama Administration orders reconsideration/suspension of new rules (Hal Wegner) (Peter Zura’s 271 Patent Blog) (Patent Docs) (Patently-O)

Manufacturing Alliance on Patent Policy: Apportionment of damages provision will have adverse effects (Patent Docs) (IAM) (Law360) (Inventive Step)

ECJ: Promotional items do not qualify for genuine use: Silberquelle GmbH v. Maselli-Strickmode GmbH (Catch Us If You Can!!!) (Managing Intellectual Property) (Law360) (Out-Law)



Global – General

Barack Obama and US IP Policy, IP litigation and share price, IP Strategy and open innovation – IP Think Tank podcast 19 January 2009 (IP Think Tank)

Three ways to maintain your IP intelligence edge in lean times (Thomson Reuters Scientific)

International standards organisation solicits views on improving the intangible valuation process (IAM)

What is an IP strategist? A lawyer who is not afraid to say no (IP Asset Maximizer Blog)

IP management for superior shareholder returns (Financial Aspects of Intellectual Property)

Whether litigation or negotiating, persuasive skills paramount (IP ADR Blog)

Global – Trade Marks / Brands

Trade marks as commercial indicators – Guy Selby-Lowndes on valuable assistance business analysts can miss if they don’t pay attention to trade mark exploitation policy and official trade marks records (IP finance)

Brand recycling (IP finance)

Global – Patents

The importance of an agreement prior to inventing (Inventive Step)

Global patent warming – Tackling the surge in global patent applications (Thomson Reuters Scientific)

TomTom CEO bemoans patents but his words should worry shareholders (IAM)

IP from publicly funded research should benefit the public, experts say (Intellectual Property Watch)

The cultural gulf between lawyers and technologists on patent law (Techdirt)

Some start-ups selling patents to survive (IP Marketing Blog)

Has the great patent fire-sale begun: another view (IP finance)

You shouldn’t have to hire a patent lawyer before you can innovate (Techdirt)

International Court of Arbitration awards Tessera $60.6 million after finding Amkor violated licence agreement relating to miniaturisation patents (Law360)


Arca secures Coke franchise (IP tango)


Continuing shift in US patent grants toward Asian countries – employee rewards (Patent Prospector)


No shape mark injunction in fight between to armless chairs: Sebel Furniture Limited v Acoustic & Felts Pty Limited (Australian Trade Marks Law Blog)

‘Monster’ brand, monster reputation? Full Federal Court issues ruling in Hansen Beverage Company v Bickford’s (Australia) Pty Ltd (IP Down Under)

Elvis Presley Enterprises opposition to Elvis Jelcic’s application to register ElvisFinance for financial services fails (IPKat)


Canada-EU Free Trade Agreement – consultation deadline 20 January 2009 (Excess Copyright)


Coming up: China-Costa Rica Free Trade Agreement (IP Dragon)

USTR releases 2008 report on China’s compliance with WTO obligations (Chinese Law Prof Blog)

World Trademark Review: ‘US crowns China top of the counterfeiters’ (IP Dragon)

Changes in Chinese patent law adopted; IPO and BIO reactions (Patent Docs) (Patent Docs)

Analysis on the amendment of the Patent Law (DeBund)

Electric Guitar Anti-Counterfeiting Coalition makes itself heard against Beijing infringers (IP Dragon)

Samsung ordered to pay 50 million yuan to Zhejiang-based Holley Communications for infringing cell phone patent (DeBund)

Country’s first Anti-monopoly Tribunal established (DeBund)

First group of IPR Offices authorized to service IPR financing (DeBund)

Tort liability for China counterfeit goods? (China Law Blog)

Poisonous Optima dog food: product liability or blame the counterfeiters? (IP Dragon)

Copycats in China: trains, planes and … automobiles (IP Dragon)


Copenhagen Maritime and Commercial Court rules Innocent Pictures ApS’ use of ‘Tivoli’ and ‘Tivoli Night’ in context of pornographic broadcasts infringes trade mark rights of Danish amusement park TIVOLI A/S (Class 46)

Court finds minimal confusion in MINIMAL case (International Law Office)


ECJ: Promotional items do not qualify for genuine use: Silberquelle GmbH v. Maselli-Strickmode GmbH (Catch Us If You Can!!!) (Managing Intellectual Property) (Law360) (Out-Law)

ECJ rules German music distributor cannot sell two Bob Dylan compilation albums because Sony owns rights to songs in question: Sony Music Entertainment (Germany) GmbH v Falcon Neue Medien Vertrieb GmbH (IPKat) (Law360)

ECJ: Date set for Advocate General’s opinion in L’Oréal SA, Lancôme parfums et beauté & Cie SNC, Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd, Starion International Ltd reference on comparative advertising (Class 46)

CFI rejects Pioneer’s appeal against rejection of OPTIMUM on grounds of lack of distinctive character: Hi-Bred International, Inc. v OHIM (Class 46)

CFI dismisses Commercy’s appeal against refusal of the Cancellation Div and Second Board of Appeal to cancel easyHotel Community trade mark: Commercy AG v OHIM, easyGroup IP Licensing Ltd (IPKat)

CFI trade mark rulings: Korsch v OHIM (PharmaCheck), Hansgrohe v OHIM (AIRSHOWER), and giropay v OHIM (GIROPAY) (Class 46)

English: the language of choice at the EPO? (IPKat)

Open Rights Group video on proposed term extension of sound recordings (Excess Copyright) (IPKat) (Lessig)

Does ACTA secrecy violate European law? (Techdirt)

OHIM payments and bank charges (Class 46) (Class 46)


Department store Stockmann seeks amicable settlement in trade mark dispute over clothing boutique Crazy’s use of identical mark HULLUT PÄIVÄT (crazy days) for bargain sale (Class 46)


Cheese manufacturers press French government to place import duties on Coca-Cola syrup in retaliation for punitive American duty levelled on US imports of Roquefort cheese (IPKat)


Indian Patent Office breaks with tradition and gets new chief (Spicy IP)

Ghandi’s work enters the public domain in India (Michael Geist)


Israel Patent Commissioner – publication of a design over the internet as a publication in Israel (RelatIP)

Dates when Israel Patent Office will be closed in 2009 (The IP Factor)


Taking the poison pill? The pressures of globalisation on the Japanese economy and intellectual property (Thomson Reuters Scientific)


BrandKenya: the task of branding Kenya’s exports (IP Kenya)


Commission refuses PGI protection to Džiugas cheese, refuses PDO and PGI status for Germantas cheese (Class 46)

South Africa

South Africa’s new Deputy President an IP expert (Afro-IP)


Delimiting the border between trade mark and unfair competition laws (Class 46)


King of Thailand receives WIPO award for contribution to intellectual property (WIPO)


‘Golden Turkish delight’ utility model application (Grup Ofis)

United Arab Emirates

Infrastructure and budget – keys to combating counterfeiting (International Law Office)

United Kingdom

EWHC: Edwards’ heart stent patent held to be valid but not infringed: Corevalve v Edwards Lifesciences (IPKat)

Patents Court: Mann J agrees to alter usual course of handing down judgment due to price sensitivity in patent validity dispute: Schlumberger Holdings Ltd v Electromagnetic Geoservices AS (IPKat)

Google backs UK fair use defence (IPKat)

UK IPO launches two new databases, one containing patents in force endorsed licence of right and the other containing patents that are no longer in force (IPKat) (Out-Law)

Petition to British Prime Minister regarding artist resale rights (IPKat)

From January 2009 Trade Marks, Patents, and Designs Federation will be known as IP Federation (IPKat)

Coca-Cola benefits from refreshing alternative for trade mark protection (International Law Office)


United States

US General

Obama selects new US Trade Representative (Managing Intellectual Property)

USPTO must be domain of IP lawyers, the ABA tells President-Elect Obama (IAM)

John Doll era begins at USPTO (IP Watchdog)

RIAA attorney Tom Perrelli appointed to top Department of Justice position (IP Watchdog)

IRS to take closer look at tax status of revenue-generating activities of universities, including income from IP licences (IP finance)

Upaid – the canary in the Satyam coalmine (Spicy IP)
US General – Decisions

District Court S D Texas: Plaintiff fails to state claim for misappropriation of trade secret: Fast Capital Marketing v Fast Capital (Property, intangible)

Alabama judge upholds $192 million verdict against Ineos Phenol in trade secrets suit over method for transforming hazardous waste into useful manufacturing ingredients (Law360)

US Patent Reform

Manufacturing Alliance on Patent Policy: Apportionment of damages provision will have adverse effects (Patent Docs) (IAM) (Law360) (Inventive Step)

Heritage Foundation offers patent reform proposals to new President (Patent Docs)

Section of IP Law of ABA offers Obama seven key recommendations for 2009 (Managing Intellectual Property) (Law360)

Obama Administration orders reconsideration/suspension of new rules (Hal Wegner) (Peter Zura’s 271 Patent Blog) (Patent Docs) (Patently-O)

Science Progress tackles patent reform (Patent Docs)

Six easy suggestions for improving Patent Office transparency (Patently-O)

US Patents

Will patent-holding companies flock to the International Trade Commission? (The Prior Art)

Patent litigation sinking for 2009 (Peter Zura’s 271 Patent Blog) (IAM)

Prof Menell and host of litigators, judges and academics’ draft paper ‘Patent Case Management Judicial Guide’ (Peter Zura’s 271 Patent Blog) (Patent Prospector) (Technology Transfer Tactics)

Doug Lichtman interview with CAFC Chief Judge Michel (Patent Prospector) (Law360)

USPTO accepting national medal of technology nominations (IP Watchdog)

Locating re-examination certificates (Patent Librarian’s Notebook)

Technical disclosures stimulate innovation – IBM’s 2008 patent record (Securing Innovation)

E D Texas no longer patent troll friendly (IP Watchdog)

US Patents – Decisions

CAFC finds stent patent obvious by combining embodiments in a single prior art reference: Boston Scientific v Cordis and Johnson & Johnson (Patent Prospector) (Law360)

CAFC affirms International Trade Commission bar on imports of infringing ink cartridges: Ninestar Technologies v ITC (Philip Brooks’ Patent Infringement Updates)

District Court E D Texas: Jury finds infringement, split on wilfulness: Ariba v Emptoris (

District Court E D Texas: Jury awards hearing device manufacturer over $4.6 million after finding Shure infringed patent covering earphone technology that blocks out background noise (Law360)

District Court N D California: Quality, not quantity of motions is most relevant for motion to stay: Yodlee, Inc v Ablaise Ltd et al (Peter Zura’s 271 Patent Blog)

BPAI applies Bilski, holds machine claim unpatentable: Ex parte Cornea-Hasegan (not precedential) (Post-Grant) (Patent Prospector)

International Trade Commission affirms initial determination that some GPS chips produced by SiRF Technology violate three patents owned by Broadcom (Law360)

Federal Circuit weighs in on ‘patent ambushes’: Qualcomm Inc v Broadcom Corp (IP Frontline)

Get it through your head, you can’t patent the use of human intelligence: In re Comiskey (Patent Baristas)

US Patents – Lawsuits and strategic steps

800 Adapt – 800 Adapt files petition for writ of certiorari review of 800 Adapt v Murex claiming Federal Circuit does not provide enough deference to District Courts on claim construction (IP Watchdog)

Card Activation Technology – OfficeMax latest to settle in gift card patent dispute brought by Card Activation Technologies (Law360)

Landmark Screens –Four of five claims cut in Morgan Lewis & Bockius malpractice suit over prosecution of patent application (Law360)

Mondis Technology – Mondis sues LG Electronics and Hon Hai Precision Industry Co over patents relating to computer display technology (Law360)

Northwest Airlines – Judge sends Northwest, Eon-Net to mediation in dispute over information processing methodology patent (Law360)

NuTech Medical – NuTech settle lawsuit brought by Orthopedic Development Corp over patent and trade dress covering drill used in spinal surgery (Law360)

NXP Semiconductors – NXP seeks sanctions against LSI Corp and Agere Systems for allegedly failing to produce requested discovery materials (Law360)

Procter & Gamble – P&G and Kraft Foods Global settle patent litigation over plastic packaging for their competing coffee brands (Law360)

Quantum World Corp – Atmel and IBM dismissed from lawsuit brought by Quantum World over patents for random number generator system (Law360)

Rambus – Should the Supreme Court grant certiorari in FTC v Rambus? (Patently-O)

Telematics – Acacia subsidiary Telematics and Horizon Technologies reach settlement that should end patent dispute over technology related to displaying mobile vehicle information on a map (Law360)

Zoltek Corp – Zoltek files patent infringement suit against Lockheed Martin Corp over F-22 planes (Law360)

US Copyright

Public performance rights for recording artists (Public Knowledge)

Copyright litigation wanes as landscape shifts (Law360)

US Copyright – Lawsuits and strategic steps

Oregon State University – OSU settles copyright dispute with Motorcycle Safety Foundation over curriculum materials (IP Watchdog)

Warner Bros – Warner Bros agrees to pay possibly tens of millions to 20th Century Fox Film to settle dispute over rights for ‘Watchmen’ (Law360) (Techdirt)

Wonder Years – The Wonder Years unavailable on DVD due to music licensing rights (Techdirt)

US Trade Marks – Decisions

District Court N D Illinois: Trade mark declaratory judgment requires allegations of continued right in the marks: Publications Int’l Ltd v LeapFrog Enters, Inc (Chicago Intellectual Property Law Blog)

Only registrants get statutory damages for counterfeiting – complex corporate structures and IP consequences: Shell Co, Ltd. v. Los Frailes Service Station, Inc (Property, intangible)

TTAB precedential decision: Section 66(a) applicant wins TTAB priority contest in FRUITOLOGY 2(d) dispute: Compagnie Gervais Danone v Precision Formulations, LLC (not precedential) (TTABlog)

TTAB dismisses Tootsie Roll’s MISTER FLUFFY opposition for failure to establish priority: Tootsie Roll Industries LLC v Cormorant Group LLC (not precedential) (TTABlog)

TTAB dismisses 2(d) opposition as Outback Steakhouse fails to prove relatedness of bottled water and beer: Outback Steakhouse of Florida, Inc and OS Asset, Inc v Waterworld Pty Ltd (not precedential) (TTABlog)

TTAB dismisses 2(d) opposition, finding dissimilarity of BIOMARINE and BIOMARIS marks dispositive: Walter Brachmann Gmbh & Co. KG v. Pro-Life Importacao E Exportacao LTDA (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Major League Baseball Properties – MLB sues former licensee Donruss in connection with unauthorised distribution of baseball trading cards (The Trademark Blog)



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