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General GWiR 5 December 2008 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:

CAFC: Qualcomm penalised for failure to disclose patents to standard setting organisation and for litigation misconduct in failing to produce evidence: Qualcomm Inc v Broadcom Corp (IP Law Observer) (Patently-O) (Promote the Progress) (Law360) (Patent Prospector) (Hal Wegner) (PLI)

European Court of Justice’ dilution ruling in Intel v CPM (IPKat) (Out-Law) (Class 46) (The IP Factor) (Hal Wegner) (IP finance)



Global – General

IP roadmap aims at facilitating technology transfer in the Arab world (Intellectual Property Watch)

WTO IP discussion in question with possible Ministerial on horizon (Intellectual Property Watch)

The music world: more than copyright and licenses (IP finance)


Global – Trade Marks / Brands

Discussions continue in informal WTO special session on geographical indications register (Intellectual Property Watch)


Global – Patents

Priority document exchange program update (IP Updates)

Patent monetisation can be a new source of revenue for your company: make sure you know the critical steps for success (IP Asset Maximizer Blog)

Intellectual property defence: How to protect your business against patent trolls (Patent Baristas)

Peer to patent system may become model for Patent Offices (Intellectual Property Watch)



ARIPO’s facelift (Afro-IP)



Big Tobacco looking to government to cough up for trade mark restrictions (Australian Trade Marks Law Blog)

One million pirated movies, music discs seized in south-west Sydney (ContentAgenda)



Brazil, Canada strike innovation deal (IP tango)



‘Why copyright?: Canadian voices on copyright law’ documentary produced by Michael Geist and Daniel Albahary (Michael Geist) (Coverage of the film – Michael Geist) (Techdirt)

IP & the economy – never allow a crisis to go to waste (Excess Copyright)

Sleeman Breweries files lawsuit against Dead Frog Brewery over Dead Frog’s use of clear glass bottle design (Canadian Trademark Blog)



Investigation orders in IP cases (China Hearsay)

Negotiating with IP infringers in China as a last resort (IP Dragon)

The importance of ‘practical applicability’ China’s patent law (IP Dragon)

Why there is plagiarism in China even at Sun Yat-sen University (IP Dragon)

China leads IP5 meeting on Jeju Island in South Korea (IP Dragon)

Apple victorious in trade mark conflict with new Apple concept digital technology (IP Dragon) (The Trademark Blog)

China’s Trademark Office performs first trade mark examination quality control inspection (IP Dragon)

Chinese IP enforcement (

Illegal publications seized, intellectual right violators punished in China (ContentAgenda)


East Africa

Safaricom brand voted strongest among peers (Afro-IP)



Massive cuts in European patent and trade mark fees proposed at meeting of European ministers (IAM)

European Commission on ACTA (Michael Geist)

EPO ‘Supreme Court’ backlog of cases awaiting decisions (Hal Wegner)

European Court of Justice’ dilution ruling in Intel v CPM (IPKat) (Out-Law) (Class 46) (The IP Factor) (Hal Wegner) (IP finance)

Kokott AG opinion in trade mark licensing case Copad SA v Christian Dior Couture SA (IPKat)

EC Copyright Term Directive – an update (IPKat)

CFI: Ford Motor Co wins appeal to use ‘fun’ as a trade mark (Law360)

Recent Community trade mark decisions from the CFI: Avon Products v OHIM; Rajani v OHIM, Artoz Papier; New Look Ltd v OHIM (Class 46)

CFI: Combination of colours denied registration as Community trade mark: GretagMacbeth LLC, USA v OHIM (Catch Us If You Can!!!)



Paris Appeal Court: Che Guevara’s portrait: an icon, not a trade mark (Class 46)



German banks move towards deal on patent collateralisation (IAM)

Munich Regional Court dismisses actor/comedian Michael ‘Bully’ Herbig’s trade mark and personality rights infringement case against Take Two Interactive over ‘Bully – Die Ehrenrunde’ computer game (Class 46)

Polar bear Knut and the ‘big credit freeze’ (Class 46)



Copyright infringement: Anton Piller orders offer a powerful remedy (International Law Office)

Geographical indication for agriculture products: leveraging legal protection for commercial gains (Spicy IP)

Jurisdictional issues in IPRS v Sanjay Dalia copyright dispute (Spicy IP)

Patent Office to strengthen its workforce (Patent Circle)

A googly from the Madras High Court: A R Safiullah v Daniel, Indira Daniel, Rajapudeen and Mariappan (Spicy IP)

Starbucks makes trade mark applications in several Indian languages (RelatIP)

Kolkata Patent Office meeting: no ‘technical’ software patents (Spicy IP)



Standard of proof of trade mark infringement: Unilever Plc v Bidco Oil Products (International Law Office)



Nigerian trade mark alphabet part 2: the companies’ names (Ip’s What’s Up)

They’re your pirates, you’re responsible – Chinese ownership of counterfeit-producing optical disc plants (Ip’s What’s Up)



Procedure of registration of a trade mark in Pakistan (RelatIP)



Special law for Euro 2012 trade marks? (Class 46)

Reminiscences on ‘i Intel’ (Class 46)



Portugal makes extra-budgetary contribution to WIPO capacity building projects (WIPO)



The Princess and the Trade Mark Office – High Court of Catalunya overturns SPTO refusal of Spanish trade mark applications for Letizia de Giorgi marks (Class 46)


United Kingdom

Professor Adrian Sterling’s orphan works scheme (IPKat)

Movie industry: London ‘fake-free zone’ by 2012 (TorrentFreak) (Techdirt)

Tribunal Practice Notice TPN 6/2008 on ‘Costs in proceedings before the Comptroller’ (Class 46)

IPO online: the new site… at first sight (IPKat), (SOLO Independent IP Practitioners)

Seven dwarves in Bolton’s festive season production will not be named Doc, Dopey, Sleepy, Happy and Bashful after Disney asserts rights in the names (IPKat)


United States

US General

Next Federal Circuit Judge (Hal Wegner)

Bush legacy at the Courts of Appeal: impact of Pay Raise Bill (Hal Wegner)

IP licensing best practices presentation by R David Donoghue (Chicago Intellectual Property Law Blog)

Creation does not equal ownership – discussion Capitalist Magazine article ‘Objectivist defence of the recent PRO IP law’ (Techdirt)


US General – Decisions

CAFC affirms attorney sanctions in case concerning attorney’s breach of client confidentiality relating to trade secret documents: Wallis v PHL (Hal Wegner)


US General – Lawsuits and strategic steps

Gillette – Gillette, Dorco settle patent, trade mark and trade dress suit (Law360)


US Patent Reform

PPAC annual report 2008; PPAC criticises USPTO and calls for greater progress on quality and pendency (IAM) (Hal Wegner)

A different patent law proposal: US utility models? (Anticipate This!)

Obama attorney-general pick good news for IP, says US Chamber of Commerce (IAM)

‘The future of the patent system’ features four former PTO leaders (Hal Wegner)

CAFC to hear oral argument in USPTO v GSK & Tafas 5 December (Anticipate This!) (PLI)


US Patents

Constitutional separation of powers (Patently-O)

Patent practitioner ethics update (Patently-O)

Interesting claim on Big 3 patents – discussion of Detroit New editorial by James E Malackowski (Peter Zura’s 271 Patent Blog)

Lawyers getting patents: what should the rules be? (The Prior Art)

Ways to avoid a USPTO ethics investigation (IP Updates)


US Patents – Decisions

CAFC: Qualcomm penalised for failure to disclose patents to standard setting organisation and for litigation misconduct in failing to produce evidence: Qualcomm Inc v Broadcom Corp (IP Law Observer) (Patently-O) (Promote the Progress) (Law360) (Patent Prospector) (Hal Wegner) (PLI)

CAFC upholds judgment enjoining inventor from asserting patent against Unitronics or its customers after finding no infringement: Unitronics v Samy Gharb (Law360) (Patent Prospector)

Claim construction at the Federal Circuit: a District Court Judge’s view: Medegen MMS v ICU Medical (Patent Docs) (Hal Wegner)

Patentee stopped from asserting patent after 4+ year delay: Aspex Eyewear et al v Clariti Eyewear (Peter Zura’s 271 Patent Blog)

Jury finds emCharts directly infringed all four claims and two defendants jointly infringed other 12: Golden Hour Data Systems, Inc v emsCharts, Inc (

Individual communications of infringement not Lanham Act unfair competition: Foboha GMBH v Gram Tech (Chicago Intellectual Property Law Blog)

ITC finds Tessera patents valid but not infringed by ATI Technologies and others (Law360)

Illinois Judge finds patent lawsuit frivolous; grants sanctions and attorney’s fees: Triune Star v Walt Disney Co et al (The Prior Art)

California’s one-sided patent regime: litigating with immunity (Patently-O)


US Patents – Lawsuits and strategic steps

CIBA Vision – Johnson & Johnson, CIBA to go to trial over contact lens patents after federal judge denies most summary judgment motions by both companies (Law360)

Crocs – Crocs, Sketchers settle footwear patent fight (Law360) (Daily Dose of IP)

Dura Operating Corp – Dura sues rival auto parts maker Magna International for wilful infringement of four patents related to vehicle windows (Law360)

Fairchild Semiconductor – Fairchild files countersuit and separate lawsuit against Infineon Technologies over several patents for semiconductor technology (Law360)

Fuji Photo Film Co – Bankrupt CEO of now-defunct Jazz Photo must pay $4M damages to Fuji in camera patent suit (Law360)

Neomedia – Scanbuy and Marshall Feature Recognition accuse NeoMedia of infringing patents related to bar-code reader technology (Law360)

PlatePass – PlatePass files patent suit against Highway Toll Administration over shield technology for toll collection identifiers (Law360)

Procter & Gamble – Inventor, Keith Whittle’s ThermaCare heat wrap patent claim against Procter & Gamble dismissed (Law360)

Rambus – Federal Trade Commission appeals Rambus decision to the Supreme Court (Managing Intellectual Property)

SmartLabs – SmartLabs temporarily enjoined from moving forward with production of Save-A-Watt plug-in energy meters until patent litigation is resolved (Law360)

Spectralytics – Federal judge dismisses Cordis Corp and Norman Noble’s request to revisit his earlier decision allowing Spectralytics stent patent lawsuit against them to go to trial (Law360)

Sprint Nextel – Adaptix files suit against Sprint, Clearwire over six patents related to WiMAX technology network (Law360)


US Copyright

Bratz ruling highlights creative worker, IP pitfalls (Law360)


US Copyright – Decisions

Microsoft – Microsoft sues Colorado man, William Smith, and others of selling counterfeit copies of Microsoft software (ContentAgenda)


US Trademarks

USPTO expands Trademark Official Gazette archive (Daily Dose of IP)


US Trade Marks – Decisions

5th Circuit: University colour schemes protectable: Louisiana State University et al v Smack Apparel (The Trademark Blog)

TTAB precedential decision: TTAB dismisses Morehouse and laches defences, denies summary judgment in 2(d) opposition: Land O’Lakes, Inc v Hugunin (TTABlog)

Ron Coleman: ‘Tackiness not grounds for refusal to register’: In re Chippendales USA, LLC (TTABlog) (Rebecca Tushnet’s 43(B)log)

TTAB says ‘CONTINUUM’ mark is supported by specimens displaying ‘INDIA CONTINUUM FUND’: In re Hudson Fairfax Group LLC (non precedential) (TTABlog)

Despite applicant’s concession of most DuPont factors, including fame, TTAB grants 2(d) summary judgment based on differences in marks: Big O Tires, Inc v 67 and Latham, LLC (non precedential) (TTABlog)


US Trade Marks – Lawsuits and strategic steps

Monster Mini Golf – Monster Cable files trade mark infringement suit against Monster Mini Golf; Monster Mini Golf asks people to contribute to its trade mark defence case via eBay (Techdirt) (The Trademark Blog)

Pinkberry – Yoberry agrees to Pinkberry’s permanent injunction (Seattle Trademark Lawyer)

Tootsie Roll Company – Tootsie Roll files trade mark infringement lawsuit against t-shirt vendor Snarf Dog T-shirt (The Trademark Blog)



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