General GWiR 6 February 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:

WTO report confirms USTR lost on key issue of whether China’s thresholds for criminal IP enforcement are too high (Managing Intellectual Property) (IP Justice) (IP Justice) (China Hearsay) (China Law Blog)

US: Judd Gregg to be nominated as Secretary of Commerce (Inventive Step) (IP Watchdog) (Peter Zura’s 271 Patent Blog) (Patently-O) (Chicago Intellectual Property Law Blog) (Inventive Step)

CAFC: 2-1 split panel affirms nonobviousness determination; highlights unpredictability of claim construction: Kinetic Concepts, Inc v Blue Sky Medical Group, Inc (Hal Wegner) (IP Frontline) (Patently-O) (Patent Prospector) (Law360)



Global – General

Bilski, final appellate courts, European Court of Justice, perfume – IP Think Tank podcast 2 Feb 2009 (IP Think Tank)

Settling IP litigation with cross-licences (The IP ADR Blog)

WTO report confirms USTR lost on key issue of whether China’s thresholds for criminal IP enforcement are too high (Managing Intellectual Property) (IP Justice) (IP Justice) (China Hearsay) (China Law Blog)

IP Performance survey: Inventor incentive programs central to generating inventions (IP Frontline) (Law360)

Anthony Taubman of WIPO picked to head WTO IP Division (Intellectual Property Watch)

Managing value in a shrinking economy: the IP audit (Patent Baristas)

Without disruptive innovation, many IP law firms are destined to meet the same fate as buggy whip manufacturers (IP Asset Maximizer Blog)

Vote for the best and worst IP jurisdictions (Managing Intellectual Property)

Global – Trade Marks / Brands

INTA president urges government action on fakes (Managing Intellectual Property)

Global – Patents

Incentivisation programmes are the key to top R&D performance, report claims (IAM)

Ocean Tomo strikes again: this time its fixed fee damages assessments (PatLit)

WIPO announces slowdown in PCT applications in 2008 (Inventive Step)

International patent applications rise in 2008 despite global slowdown (IP Watchdog)

Leading firms for patent work in 70 jurisdictions ranked in Managing Intellectual Property’s largest ever IP survey (Managing Intellectual Property)


National Union of Merchants and Craftsmen warns of Algerian trade in fakes (Afro-IP)


Canadian Federal Court refuses to import US fraud doctrine into Canadian trade mark law: Parfums de Coeur, Ltd v Asta; General Motors of Canada v Decarie Motors Inc (TTABlog) (Canadian Trademark Blog)

Chamber of Commerce releases IP recommendations report ‘A Time for Change: Toward a New Era for Intellectual Property Rights in Canada’ (Michael Geist)

Canadian Labour Congress considers major reversal on IP policy (Michael Geist)

Our neighbour and neighbouring rights (Excess Copyright)


WTO decision – China vows stronger anti-piracy measures (ContentAgenda)

 NERA on IP litigation trends in China (Experience Not Logic)

Chinese patent law amendment approved (Patent Baristas)

Anti-counterfeiting action in China – customs enforcement (RelatIP)

New IP law in Djibouti (Afro-IP)

Aceites appeal and the excessively negligent consumer – Mazák AG delivers opinion in Aceites del Sur-Coosur SA, formerly Aceites del Sur v Koipe Corporación SL and OHIM (Class 46)

Ruiz-Jarabo Colomer AG delivers opinion in trade mark, geographical indication battle Budějovický Budvar National Corporation v Rudolf Ammersin GmbH (IPKat)

OHIM welcomes trade mark users to Board (Managing Intellectual Property)

New CTM e-filing system ‘faster and simpler’ (Class 46)

EU-China action plan to combat IPR infringement (Class 46)

Bilateral treaty between Europe and Australia protects name Retsina for wine (Class 46)

More geographical indications protected in Europe: Aceite de La Alcarria (PDO), Radicchio di Verona (PGI), Zafferano di Sardegna (PDO), Huîtres Marennes Oléron (PGI) (Class 46)

All change for Gorgonzola – but what’s the change?: No access to ‘non-minor amendments’ on EU website (Class 46)

EPO gets access to India’s traditional knowledge digital library (Spicy IP)


Bundesgerichtshof clarifies circumstances under which work may be considered ‘not published’ under s 71 Copyright Act in case concerning Vivaldi’s ‘Motezuma’ (IPKat)

Federal Patent Court: ‘Die Drachenjäger’ (the dragon hunter) devoid of distinctive character for media related goods (Class 46)

Bundespatentgericht affirms validity of MMP portfolio patent (Philip Brooks’ Patent Infringement Updates)


Mobile telephony providers WIND and Cosmote offensive comparative advertising campaign (Class 46)


Bombay High Court: India’s own takes on ‘crown use’: Garware Wall Ropes v A I Chopra Engineers & Contractors & Ors (Spicy IP)

Kerala ‘Mission IPR’ nipped in the bud? (Spicy IP)


Registrar of Trademarks cancels car glass marks on grounds of non-use: Ilan Car Glaziery Ltd v Carglass Luxemburg Sarl (IP Factor)


Japan Patent Office releases ‘Examination Guidelines for Patent and Utility Model’ (Patent Baristas)

Amendment to Japanese IP law creates new after final deadlines for foreign applicants (Patent Docs)


Korea’s Patent Court adopts ethics code (PatLit)


Mexico considers new patent reform bills (IP tango)


WE or ELLE? – Amsterdam Court of Appeal rules in favour of Hachette Filipacchi Press, publisher of Elle magazine, in trade name/trade mark infringement litigation brought by clothing company WE Netherlands (Class 46)


District Administrative Court in Warsaw: ALDO S and ALDI not similar (Class 46)

South Africa

More on the Springbok emblem (Afro-IP)


Appeal Court rules on reproduction of album cover artwork in case against Åhléns (International Law Office)

United Kingdom

EWHC: Patent restoration tragedy: Re Bending Light Ltd (IPKat)

EWHC draft judgment accounts for patentee’s share price sensitivity: Schlumberger Holdings Ltd v Electromagnetic Geoservices AS (PatLit)

EWHC: From OED to QED ‘vacuum cleaner’ defined: Dyson Technology Ltd v Samsung Gwangju Electronics Ltd (PatLit)

Prior art lost in translation: Dyson Technology Ltd v Samsung Gwangju Electronics Ltd (PatLit) (Chicago Intellectual Property Law Blog)

EWHC: To stay or not to stay? Neither, says the judge in patent and trade mark case Schutz (UK) Ltd v Werit UK; Schutz UK Ltd, Schutz GmbH & Co KgAA v Delta Containers Ltd (PatLit)

EWHC: RIM v Visto: Mr Justice Arnold takes charge (PatLit)

Banking brand values plummet (IAM)


United States

US General

Judd Gregg to be nominated as Secretary of Commerce (Inventive Step) (IP Watchdog) (Peter Zura’s 271 Patent Blog) (Patently-O) (Chicago Intellectual Property Law Blog) (Inventive Step)

Susan Davies new Associate Counsel to President Obama (Hal Wegner)

Music industry lawyer Donald Verrilli appointed to Department of Justice (Excess Copyright) (Law360)

IP appointments: time for some balance (Public Knowledge) (Techdirt)

Intellectual property will become America’s main source of competitive advantage in a 21st century global economy – BusinessWire article (Philip Brooks’ Patent Infringement Updates)

Year ahead: IP owners face tough legal issues in United States in 2009 (Intellectual Property Watch)

FTC announces further hearing on IP and antitrust (IP Frontline)

Chicago Tribune on monetizing IP (Chicago Intellectual Property Law Blog) (Peter Zura’s 271 Patent Blog)

US General – Decisions

Court of Appeals for the 9th Circuit: Non compete clause could not be enforced outside areas where comedy businesses were operating: Comedy Club, Inc v Improv West Assocs (IP Law Blog) (Law360)

US General – Lawsuits and strategic steps

DuPont – DuPont accuses Kolon Industries of acquiring trade secrets related to DuPonts Kevlar technology (Law360)

Upaid – Upaid-Satyam: racketeering charges in amended complaint (Spicy IP)

US Patent Reform

Full membership of Judiciary Committees in both bodies of Congress now named (Hal Wegner)

USPTO considering deferred examination option for patent applications (IP Spotlight) (Patent Baristas) (Daily Dose of IP) (Patent Prospector)

US Patents

Dudas joins Foley & Lardner (Hal Wegner) (Managing Intellectual Property) (IAM) (IP Watchdog) (Patent Prospector) (Law360)

Nathan Myhyold and Prof Mark Lemley to conduct study to analyse effect of non-practising entities (NPEs) litigation on the patent system (Peter Zura’s 271 Patent Blog) (IP ADR Blog)

USPTO news: Patent Office calls continuing education pilot program a success (Patent Docs) (Daily Dose of IP)

Pilot PPH program between Singapore and US (Patent Docs)

Federal Circuit begins publishing orders on motions (Patently-O)

E D Texas declines venue in three patent cases (Peter Zura’s 271 Patent Blog)

Texas Lawyer article ‘Need for Speed vs Importance of Full and Fair Litigation’ (

Peer-to-patent and Article One drag the reclusive patent onto the thoroughfare (O’Reilly)

Apple’s view on patents, then and now (Techdirt)

Center for Patent Innovations starts post-grant review of patents (Post-Grant)

Money spent on patent litigation is well spent, according to PWC study (PatLit)

Matthew A Smith publishes new inter partes reexamination treatise (Anticipate This!) (Peter Zura’s 271 Patent Blog)

 ‘Inter partes re-examination estoppels and ITC proceedings (Patently-O)

US Patents – Decisions

CAFC: 2-1 split panel affirms nonobviousness determination; highlights unpredictability of claim construction: Kinetic Concepts, Inc v Blue Sky Medical Group, Inc (Hal Wegner) (IP Frontline) (Patently-O) (Patent Prospector) (Law360)

CAFC: Challenging 271(f) liability for components of a method: Cardiac Pacemakers v St Jude Medical (on motion for en banc rehearing) (Patently-O)

BPAI again rejects system claims under Bilski: Ex parte Atkins (Patently-O)

District Court E D Texas: Following TS Tech, Odom v Microsoft patent lawsuit transferred to Oregon (Patently-O) (Patent Prospector) (

District Court E D Texas: Expiration of nine patents for failure to pay maintenance fees: Hi/fn, Inc. v. Dudas (Property, intangible)

District Court E D Michigan: Why agreements assigning employees’ inventions to the employer are necessary: O’Keefe v County of St Clair (Property, intangible)

District Court E D Texas: Boston Scientific ordered to pay interest on $19 million Medtronic award in litigation over balloon catheters (Law360)

District Court Minnesota: Cordis hit with $22 million verdict in stent patent case over Spectralytic’s stent-cutting machine patent (Law360)

9th Circuit: Judicial estoppels prevents party from playing ‘fast and loose’ by taking inconsistent litigation positions: United Nat’l Ins Co v Spectrum Worldwide, Inc (IP Law Observer)

Court of Appeal for the 4th Circuit finds USPTO response to Freedom of Information Act request inadequate: Rein v USPTO (BlackBerryGate) (Law360) (Hal Wegner)

Changing scope of liability for contributory infringement: Ricoh Company Ltd v Quanta Computer Inc (International Law Office)

Commercial success: not the easy way to prove non-obviousness: In re DBC (PatLit)

Filing holes in prosecution history: KSR (IP Frontline)

Bilski applicants petition Supreme Court (Managing Intellectual Property)

US Patents – Lawsuits and strategic steps

Abbott Laboratories – Abbott loses bid for stay in ongoing lawsuit while USPTO re-examines four stent patent owned by Cordis Corp (Law360)

Apple – Traffic Information settles patent claims against Apple over patents covering traffic-detection system (Law360)

Aspex – Aspex appeals from summary judgment on defence of estoppel related to allegations of infringement of patent directed to clip-on eyewear: Aspex Eyewear v Clariti Eyewear (PATracer)

Boston Scientific Corp – Boston Scientific moves to dismiss catheter patent infringement lawsuit on grounds that SciCo Tec wilfully tampered with evidence (Law360)

Daw Industries – Federal judge refuses to dismiss declaratory judgment suit by Daw claiming Proteor’s patent for prosthetic device sleeves is invalid and Proteor’s assertion of the patent violates antitrust laws (Law360)

Foley & Lardner – Former clients DataTern, Amphion Innovations and FireStar Software file breach of contract suit against Foley & Lardner claiming it failed to adequately represent their interests in a patent suit and overcharged for its services (Law360)

Honeywell International – Law firm disqualified from representing Honeywell in LED patent suit (Green Patent Blog)

Intellectual Ventures – Intellectual Ventures announces semi-conductor patent acquisition (IAM)

InterDigital – InterDigital, Samsung settle patent dispute in connection with Samsung’s sales of 2G and 3G products (PatLit)

Jaco Environmental – Jaco sues American Specialty Lines Insurance Co, saying the insurer should have paid defence costs in patent dispute (Law360)

Micron – Micron, Mosaid settle DRAM, Flash memory patent litigation (PatLit) (Law360)

Microstrategy – Microstrategy appeals from the order granting in part defendant’s motion for attorney’s fees and expenses under § 285: Microstrategy v Crystal Decisions (PATracer)

Nokia – Nokia, Skullcandy resolve dispute over two patents for integrator for headphones out of court (Law360)

Otis – Schindler appeals from Judge Colleen McMahon’s grant of summary judgment of non-infringement to Otis (PATracer)

Philips Electronics North America Corp – Masimo sues Philips over patient monitor patents (Law360)

Seoul Semiconductor – Seoul, Nichia settle global LED patent war (Law360)

University of Missouri – University of Missouri sues Professor Galen Suppes claiming Suppes won’t release rights to numerous inventions and potential patents developed in his labs (Technology Transfer Tactics)

Zimmer Holdings – Zimmer files patent infringement lawsuit against Smith & Nephew over bone screws (Law360)

US Copyright

District courts copyright lawsuits data from Justia (Maryland Intellectual Property Law Blog)

Rather than mocking confusion over copyright law, IP lawyers should look at fixing it (Techdirt)

US Copyright – Lawsuits and strategic steps

Associated Press – AP erroneously claims copyright infringement on Obama’s image in campaign poster (IP Justice) (Law360)

Benjamin Button – Italian writer claims she owns the rights to the Benjamin Button story (Techdirt)

Boncompagni, Natasha – Natasha Boncompagni resolves copyright infringement lawsuit over ‘Hedge Fund Wives’ by announcing she has no authorship rights to the book (Law360)

CitiGroup – CitiGroup sues Brooklyn pawn shop which was using ALL CITI PAWN and has changed name to ALL CITY PAWN (The Trademark Blog)

Hannah Montana – Multiple people demanding credit for Hannah Montana (Techdirt)

Lighthouse Strategic Projects Group – Federal judge refuses to dismiss copyright infringement lawsuit accusing Prudential Insurance Co of America of copying Lighthouse’s marketing materials (Law360)

Rowling, JK – New version of Harry Potter Lexicon published after judgment-guided re-edit (Out-Law)

US Trademarks

Prosecuting eco-marks part VI: PTO issues certificate of registration for GREEN PATENT BLOG (Green Patent Blog)

US Trade Marks – Decisions

Court of Appeals for the 9th Circuit upholds lower court’s ruling that United National Insurance Co does not need to cover cost of settlement in trade dress infringement suit between diet drink companies (Law360)

TTAB precedential ruling: for multi-class registration, fraud must be considered class-by-class: G&W Laboratories, Inc v G W Pharma Limited (TTABlog)

TTAB affirms 2(d) refusal of SEAHAWK, finding safety goggles and binoculars related: In re Cabot Safety Intermediate Corporation (not precedential) (TTABlog)

Top ten TTAB decisions of 2008 (Part 1 TTABlog) (Part 2 TTABlog)


Appeal Court of the People Court at Ho Chi Minh administrative decision regarding the invalidation of KINGMAX trade mark (Trung Thuc)

Guideline for patent examination is underway (Trung Truc)

Statistic IP cases at the Vietnamese National Office of IP in 2008 (Trung Truc)


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