General GWiR 9 January 2009 from IP Think Tank

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Highlights this week included:

PTO Director Jon Dudas announces resignation (Patently-O) (Peter Zura’s 271 Patent Blog) (IAM) (Patent Prospector) (Inventive Step)

CAFC: Can accused infringers finally escape Marshall? Volkswagon-based transfer mandamus order in In re TS Tech USA (Inventive Step) (Hal Wegner) ( ( (Washington State Patent Law Blog) (Patently-O) (Law360) (Patent Prospector)

ECJ decides Obelix too famous to be confused with MOBILIX mobile phone service: Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market, Orange A/S (Class 46) (IPKat)



Global – General

Moral rights famous authors your thoughts (IP Think Tank)

Copyright moral rights and fame – IP Think Tank podcast 5 January (IP Think Tank)

Three IP reflections for right now (IP Think Tank)

Who cares about precedent? (IP Think Tank)

World Customs Organisation to replace controversial IP standards body; doubts remain (Intellectual Property Watch)

Rebalance your IP portfolio for 2009 (IP Spotlight)

IAM blog’s IP personalities of 2008 (IAM)

Key themes for 2009 – from green patents to the IP marketplace (IAM)

Experts examine strategies for IP and sustainable development (Intellectual Property Watch)

The paradox of accounting innovation (IP Frontline)

Saving your IP (Patent Baristas)


Global – Trade Marks / Brands

Trade marks and netbooks (Techdirt)

Find Owner Search – searching owners by brand name (Competitive info)

Global – Patents

Asian Bayh Dole’s anyone? (IP Think Tank)

IEEE patent scorecard for 2008 is out (Innovationpartners) (Peter Zura’s 271 Patent Blog)

Patent databases: 2008 in review (Patent Librarian’s Notebook)

New kind codes for republished PCT documents (Patent Librarian’s Notebook)

The model changes at PatentFreedom; Matsushita is top troll target (IAM)

Patent litigation, the ITC, and hardship in the chip industry (IP finance)

Global – Copyright
Public domain day 2009 (Creative Commons), (Michael Geist)

Project underway to convert high energy physics literature to open access (Intellectual Property Watch)

Copyright owners contributing to the destruction of their own property – Indie film ‘Sita Sings the Blues’ cannot be distributed due to copyright issues (Copyfight) (Ip’s What’s Up)

Netlabel CXCR6 shares music on BitTorrent sites, for free (TorrentFreak)


OAPI opposition deadline update – 20 May 2009 (Afro-IP)

Ideas, not money, alleviate poverty (Afro-IP)


Full Federal Court decision on IP consideration of evidentiary bases justifying declaration of right in favour of eligible persons who are co-owners in equal shares of a patent: Polwood Pty Ltd v Foxworth Pty Ltd (IP Down Under)


R&D incentives for patents and SPCs in Belgium (The SPC Blog) (IP finance)


IP in Canada – Year end 2008/New year’s 2009 thoughts (Excess Copyright)

Practitioners warm to trade mark opposition cooling-off periods (Canadian Trademark Blog)

Trade mark damages following termination of franchise: Fruiticana Produce Ltd v 575760 BC Ltd et al (Canadian Trademark Blog)

A second chance to prove use of a trade mark: Vêtement Multi-Wear Inc. v. Riches, McKenzie & Herbert LLP (Canadian Trademark Blog)

Canadian Private Copying Collective and Best Buy resolve private copying dispute (Michael Geist)

200,000 pirated DVDs confiscated in GTA mall raids; Industry group behind 2-month operation suspects ‘hard-core’ retailers are linked to organized crime (ContentAgenda)

After successfully battling Kraft before Supreme Court, Euro-Excellence settles with Kraft in copyright battle over parallel importation of chocolates (Michael Geist)


USTR 2008 Report to Congress on China’s WTO compliance: still not satisfied after all these years (IP Dragon) (IP Dragon)

Slow as a turtle? Copyright protection expiration in China: lifetime plus fifty (IP Dragon)

EU experience and practice must show China the way concerning IPR protection at exhibitions (IP Dragon)

Comparison between IPR in China relevant provisions of Foreign Trade Law 2004 and 1994 (IP Dragon)

Thesis and publications about IPR in China (IP Dragon)

2009: New trends in China’s judicial protection of intellectual property rights (China Law Insight)

Best practices in technology transfer and IP licensing in China (Technology Transfer Tactics)

China makes public eight major cases of piracy and IPR infringement cracked in 2008 (ContentAgenda)

Intermediate People’s Court of Hangzhou orders Samsung to pay $7.3M to Holley Communications for infringing cell phone patent (Law360)

China passes patent law amendments (Managing Intellectual Property) (China Blawg)

Costa Rica

Costa Rica signs up to the Union of the Protection of New Varieties of Plants Convention (IP tango)


Conviction in ‘Winnie the Pooh’ case involving illegal importation and sale of soft-toy copies (Class 46)


ECJ decides Obelix too famous to be confused with MOBILIX mobile phone service: Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market, Orange A/S (Class 46) (IPKat)

ECJ ruling on criteria for establishing validity under European competition law of an allegedly abusive and discriminatory scheme for the licensing of copyright works by a copyright collecting society: Kanal 5 Ltd and TV 4 AB v Föreningen Svenska Tonsättares Internationella Musikbyrå (IPKat)

Advocate General sees no problem with ‘Bayerisches Bier’ GI: Bavaria NV and Bavaria Italia Srl v Bayerischer Brauerbund eV Advocate General Mazák (Class 46)

ECJ appeal arising from successful application to cancel COLOR EDITION CTM: Lancôme parfums et beauté & Cie SNC v OHIM – CMS Hasche Sigle (IPKat)

CFI: What happens to popular words like ‘focus’: Focus Magazin Verlag GmbH v Office for Harmonisation in the Internal Market, Editorial Planeta, SA and Tomorrow Focus AG v Office de l’harmonisation dans le marché intérieur, Information Builders (Netherlands) BV (Class 46)

OHIM Fourth Board of Appeal decision on marks consisting of initials (Class 46)

Popeye enters public domain (Techdirt) (Ip’s What’s Up) (IP Watchdog)

EU Community Patent Project has failed again (RelatIP)

Musicians trying to extend European royalty payments (ContentAgenda)

Geographical indication news: minor amendments to specification for MAROILLES or MAROLLES PDO/GI; PGI application for CIAUSCOLO Italian sausage (Class 46)


Death of the ‘six year rule’ in Indian patent law jurisprudence: A R Safiullaj v Daniel, Indira Daniel, Rajapudeen and Mariappan (Spicy IP)

Drawing the line between copyrights and designs: Rajesh Masrani v Tahliani Design (Spicy IP)

Creating ‘informal’ IP norms (Spicy IP)

Ghajini vs Fudgini: wither originality? (Spicy IP)

Sindh High Court to hear Basmati trade mark issue (The Trademark Blog)

Indian patent examiners inching at par with global counterparts (Patent Circle)

Perspectives on the promotion of innovation (Spicy IP)

Spicy IP questionnaire on interim injunctions: is it time for change? (Spicy IP)

Going green (Spicy IP)


An ill wind. Israel Patent Office reduces fees (The IP Factor)

New quality trade mark for the Areva region (The IP Factor)

Israel trade mark portal launched (The IP Factor)

New Israel Design Regulations (The IP Factor)

Publications available over the internet now regarded as ‘publication in Israel’ for purpose of novelty requirement in designs (RelatIP)


Japan considers sound marks (Managing Intellectual Property)


Contagious acts of piracy spreads to Mombasa (Afro-IP)

Need for new IP laws? (IP Kenya)


Macedonia becomes member of European Patent Organisation from 1 January 2009 (RelatIP) (Daily Dose of IP)


Moldova signs up for Singapore Treaty (Class 46)


Final draft Namibia Industrial Property Bill (Afro-IP)


District Court of The Hague: RAW: not enough Intel-DNA for G-Star?: G-Star v Pepsico (Class 46)


Nigeria celebrates 20 years of copyright law (Afro-IP)


Confusion around ARENDA (Class 46)

Inspiration or plagiarism?: Similar logos of Municipality of Białystok and The Lesbian, Gay, Bisexual & Transgender Community Center (Class 46)

Amendments to law regarding protection of traditional nourishment come into force 5 January (Class 46)

Browar AMBER’s application to the Polish Patent Office for a decision on the lapse of the right of protection for HANSA (Class 46)

South Africa

Manchester United Football Club sues Cape Town trader Necessities for allegedly selling fake soccer gear (Afro-IP)


‘Wedding crashing’ royalty collector SGAE continues to break law (TorrentFreak)

Spanish Supreme Court: Selling wine under fake geographical indication is an IP offence, but also a prosecutable fraud (Class 46)

Spanish court explains calculations in Adidas trade mark infringement award (IP finance)


Swiss Administrative Court rules LAURA BIAGOTTI AQUA DI ROMA deceptive for goods not originating from Italy (Class 46)

United Kingdom

Government seeks two year extension of artist’s resale right derogation (IPKat)

Music corporations taking government to court for giving hotels and prisons royalties exemption (ContentAgenda)

The role of branding in the UK economy (IP finance)


United States

US General

Obama appoints former RIAA lawyer Tom Perrelli to Associate Attorney General (Techdirt) (IP Justice)

President-Elect Barack Obama names Bill Richardson as new Secretary of Commerce (Managing Intellectual Property)

Raymond T Chen appointed as new USPTO Solicitor and Deputy General Counsel for IP (Hal Wegner)

Lessig: Ditch the FCC, replace it with Innovation Agency (Techdirt)

US IP attachés take hard-line position on overseas IP enforcement (Intellectual Property Watch)

Chamber of Commerce calls for USPTO reforms (Law360)

Judicial pay restoration (vs pay raise); impact on the Federal Circuit (Hal Wegner)

New Stanford Intellectual Property Clearing House database confirms common knowledge regarding litigation trends (Chicago Intellectual Property Law Blog)

Lessons for government bailouts – evaluation of IP missing (IP Frontline)

US General – Decisions

District Court Central District of California: Discovery ‘settlement privilege’ does not exist: Real Estate Alliance Ltd v National Association of Realtors et al (Peter Zura’s 271 Patent Blog)

US General – Lawsuits and strategic steps

Bridal Expo – Bridal Expo files complaint against Sonja van Florenstein and Tiffany Moore over alleged client list theft (Law360)

US Patent Reform

PTO Director Jon Dudas announces resignation (Patently-O) (Peter Zura’s 271 Patent Blog) (IAM) (Patent Prospector) (Inventive Step)

Will Obama PTO Director be good choice? (IP Watchdog)

Patent wishes for the new year (IP Watchdog)

Why patent reform didn’t happen in 2008 (IP Watchdog)

House rule change may cloud transparency on patent reform (Peter Zura’s 271 Patent Blog)

AIPLA, IPO, ABA: Silence of the lambs versus ongoing PTO stonewalling in violation of the FIOA (Hal Wegner)

CAFC: Gilbert Hyatt – BPAI erred in aggressive grouping of claims: Hyatt v Dudas (Patently-O)

Seven patent reform suggestions for Congress (IP Watchdog)

US Patents

Why do bad things happen to good patents? – The Innovation Alliance, patent quality and litigation (IPKat)

On the price elasticity of demand for patents (Patently-O)

US patent counts – year in review (Patent Librarian’s Notebook)

US Patent Office’s impending financial crisis and what sort of disruptive innovations might be seen as a result (IP Asset Maximizer Blog)

What happens after the BPAI reverses an examiner rejection (Patently-O) (Patent Prospector)

Soaring rate of BPAI appeals (Patently-O)

BPAI appeal statistics: the plummeting reversal rate (Patently-O)

Jury verdict forms (Patently-O)

USPTO lacks workflow solutions; performance drops (IP Frontline)

Obviousness in view of KSR according to USPTO (Philip Brooks’ Patent Infringement Updates)

Patent litigation statistics in Washington State 2008 (Washington State Patent Law Blog)

Rembrandts: out of the attic! Attack! Attack! (The Prior Art)

Patent Secrecy Act activity drops in FY08 (Maryland Intellectual Property Law Blog)

New USPTO fees from 1 January (Daily Dose of IP)

Developing and preserving evidence of conception (Inventive Step)

Idle corporate IP can bolster your TTO’s portfolio (Technology Transfer Tactics)

US Patents – Decisions

CAFC: Can accused infringers finally escape Marshall? Volkswagon-based transfer mandamus order in In re TS Tech USA (Inventive Step) (Hal Wegner) ( ( (Washington State Patent Law Blog) (Patently-O) (Law360) (Patent Prospector)

CAFC: Post-eBay injunctive relief: Acumed v Stryker (Hal Wegner) (Law360) (Patently-O) (Patent Docs) (Patent Prospector)

CAFC limits use of patent lawyers as expert witnesses and applies strict KSR standard to find obviousness: Sundance v DeMonte Fabricating (Hal Wegner) (Patently-O) (Patent Prospector)

CAFC: Time for statutory reform of claim construction?; panel majority affirm summary judgment of noninfringement: Vehicle IP v General Motors (not precedential) (Hal Wegner) (Law360) (Patently-O)

CAFC addresses direct/contributory patent infringement liability for software: Ricoh Company v Quanta Computer (IP Spotlight) (Law360) (Promote the Progress) (Patent Prospector)

CAFC denies declaratory jurisdiction when patentee had not ‘seen or evaluated’ product: Panavise Products v National Products (not precedential) (Patently-O)

CAFC: Generic terms ‘mechanism’, ‘means’, ‘element’ and ‘device’ do not connote sufficiently definite structure to avoid means-plus-function treatment: Welker Bearing Co v Phd, Inc (Anticipate This!)

CAFC: Effects of not informing court about changes in law in midst of litigation: Rentrop v Spectranetics Corporation (Promote the Progress)

CAFC: PTO must interpret claims in light of specification and as they would be interpreted by PHOSITA: In re Wheeler (not precedential) (Patently-O) (Promote the Progress)

International Trade Commission finds Tillotson’s patent invalid in rubber glove case (Law360)

California jury invalidates Siemens’ patent based on anticipation and obviousness in action against Seagate (Law360)

District Court N D Illinois: Product sales including infringing product is evidence of commercial success: Krippelz v Ford Motor Co (Chicago Intellectual Property Law Blog)

District Court N D Illinois: Allegations that specific references were withheld sufficient for inequitable conduct claim: UTStarcom, Inc v Starent Networks, Corp (Chicago Intellectual Property Law Blog)

District Court N D of Illinois: Court requires clear explanation from counsel for further construction: Rowe Int’l Corp v ECast (Chicago Intellectual Property Law Blog)

District Court N D California: Federal judge rejects Daewoo’s motion for judgment of no infringement of Funai Electric Co’s VCR  patents, following jury verdict last year awarding $9.5 million in damages against Daewoo for wilful infringement (Law360)

District Court Nevada: Jury finds MEI’s CashFlow SC series machines infringed Japan Cash Machine’s patent and awarded more than $11.4M in damages (Law360)

US Patents – Lawsuits and strategic steps

Abbott Laboratories – Abbott loses bid to erase $29M in damages in suit brought by Church & Dwight over patents related to home pregnancy tests (Law360)

Audiovox Corp – Audiovox files patent infringement suit against rival Vizualogic over car entertainment system (Law360)

BaoLiang Wang – Shareholder derivative action for patent infringement: BaoLiang Wang v Xiao Ping Wang et al (Green Patent Blog)

Bel Fuse – Bel Fuse adds four subsidiaries as plaintiffs in infringement suit against Halo Electronics over patent related to integrated connector modules (Law360)

Boston University – Cree, Boston University settle with Bridgelux over LED patents (Law360)

Broadcom – Broadcom, OPTi strike deal in computer tech patent suit (Law360)

Coalition United to Terminate Financial Abuses of the Television Transition – CUTFATT petition Federal Communications Commission over digital television patent royalties (Law360) (Peter Zura’s 271 Patent Blog)

Coin Acceptors – Coin Acceptors files legal malpractice suit against law firms Haverstock Garrett & Roberts LLP and Polster Leider Woodruff & Lucchesi LC and two individual lawyers over alleged mishandling of patent case Mars, Inc v Coin Acceptors, Inc (Law360) (Hal Wegner)

Cordis – Defendants appeal infringement, validity and damages findings concerning coronary stents: Cordis v Medtronic (PATracer)

Data Drive Thru – Data Drive Thru files patent infringement suit against Radio Shack, Samsung and others over cable patent (Law360)

Eastman Kodak Co – International Printer Corp and Screentone Systems Corp settle patent dispute with Eastman Kodak (Law360)

Fairchild Semiconductor International – Injunction against Fairchild temporarily stayed in case against Power Integrations in light of conflicting positions between court and USPTO (Law360)

Federal-Mogul Corp – Dorman Products agrees to stop making gaskets that are alleged to infringe Federal-Mogul’s patents while Dorman requests re-examination of the asserted patents (Law360)

Frontier Communications – Frontier Communications enters into license deal with Ronald A Katz Technology Licensing settling patent litigation over interactive voice technology (Philip Brooks’ Patent Infringement Updates)

Hitachi – Hitachi, Light Valve Solutions strike deal in LCD projector suit (Law360)

LG Eelectronics – Federal judge refuses to dismiss patent suit filed by Nidec Corp against LG over motors used in computer CD and DVD drives (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 (Philip Brooks’ Patent Infringement Updates)

Linex – Buffalo, Toshiba, D-Link settle Linex wireless patent suit (Law360) (Law360)

Mirage Innovations – Mirage sues Nokia for leaving Mirage inventors off patent applications for planar optics display device technology (Law360)

Muniauction – Petition for certiorari filed in MuniAuction v Thomson Corp effectively seeking Supreme Court reversal of BMC Resources v Paymentech: (Hal Wegner)

Rambus – Rambus not allowed to use doctrine of equivalents to prove infringement in patent dispute with rival manufacturers of dynamic random access memory (Law360)

Research in Motion – MSTG sues RIM over three patents related to wireless communications (Law360)

Research In Motion – RIM counterclaims unfair competition in trade secret case brought by Motorola (Law360)

Samsung Electronics Co – BTG International sues Samsung over flash memory chip patents (Law360)

Samsung Electronics Co – Semiconductor Energy Laboratory sues Samsung over lapsed LCD technology license deal (Law360)

Saxon Innovations – Saxon files ITC complaint and complaint in District Court E D Texas against Palm, RIM, Nokia, Panasonic and others over hand-held wireless communications devices that allegedly infringe its patents (Law360)

SmartLabs – SmartLabs temporarily enjoined from making or selling Save-A-Watt meters pending outcome of patent infringement lawsuit brought by P3 International (Green Patent Blog)

Telematics – Telematics settles with 3rd defendant, Datatrac, in wireless mapping patent dispute (Law360)

US Copyright – Decisions

District Court C D California finds 20th Century Fox owns copyright interest in movie The Watchmen created by Warner Bros (Techdirt) (Copyfight) (Property, intangible)

District Court S D New York: Copyright law does not concern itself with trifles: Gottlieb Development LLC v Paramount Pictures Corporation (The Trademark Blog)

District Judge Stephen Larson rules MGA can sell Bratz dolls until end of 2009 (Law360)

US Copyright – Lawsuits and strategic steps

Anthropologie – Anthropologie accuses Forever 21 of obstructing discovery in federal copyright suit (Law360)

JK Rowling – New version of Harry Potter encyclopaedia to go on sale in UK (ContentAgenda) (ContentAgenda)

Metro-Goldwyn-Mayer – ‘Raging Bull’ heiress, Paula Petrella, sues MGM and 20th Century Fox Home Entertainment for copyright infringement over alleged unauthorised distribution of derivative works, including Blu-ray Disc version of the film (Law360)

US Trademarks

TTAB issued 55 precedential decisions in 2008 (TTABlog)

Melrose Jewellers’ press release highlights need for quality control in brand licences (Out-Law)

US Trade Marks – Decisions

District Court N D Illinois: Inclusion of trade mark in business plan not a use in commerce: Welsh v Big Ten Conferences (Chicago Intellectual Property Law Blog)

District Court N D Illinois enters patent and trade mark consent judgment: Bajer Design & Marketing, Inc v Base4 Group, Inc (Chicago Intellectual Property Law Blog)

Washington Court of Appeal finds trade dress claims trigger insurer’s duty to defend: Australia Unlimited, Inc v Hartford Casualty Ins. Co (Seattle Trademark Lawyer)

District Court N D California finds no trade mark abandonment despite unclear standard of proof: Grocery Outlet, Inc v Albertsons, Inc (Seattle Trademark Lawyer)

District Court of Nevada finds EVISA unlikely to dilute VISA under ‘new’ standard: Visa International Service Ass’n v JSL Corp (Seattle Trademark Lawyer) (Law360)

TTAB precedential decision: TTAB denies cross-motions for summary judgment because briefs exceeded page limit: Cooper Technologies Company v Denier Electric Co, Inc (TTABlog)

TTAB brew-ha-ha: Panel divides on grounds for MOCCA refusal: In re Barrie House Coffee Co, Inc (not precedential) (TTABlog)

CRASH DUMMIES mark survives abandonment claim, TTAB sustains 2(d) opposition to same mark for same goods: Mattel, Inc v The Crash Dummy Movie, LLC (not precedential) (TTABlog)

TTAB says HYBRID HEAVE not merely descriptive of deep-water energy storage system: In re Williams (not precedential) (TTABlog)

Is stylisation of GRUNGE mark distinctive? You be the TTAB judge!: In re Grapevine Intellectual Properties, LLC (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Combs, Sean – DJ action: Sean Combs’ I AM KING SEAN JOHN v I AM fragrance (The Trademark Blog)

Dogma Grill Hot Dogs – Dogma Grill files suit against Dogmatic and others alleging infringement of its DOGMA mark for hot dogs (The Trademark Blog)

Flynt, Larry – Larry Flynt sues nephews Jimmy Flynt II and Dustin Flynt for trade mark infringement, claiming their substandard films may tarnish the Flynt pornography franchise (The IP Factor)

Marvel Entertainment – Marvel sues MGA over Spider-Man licensing deals (Law360)

Matzoh Aviv – Matzoh Aviv sues Israeli manufacturer and Bagel Bites US importer of infringing AVIV baked goods (The Trademark Blog)

Monster Cable – Monster Cable settles trade mark dispute with Monster Mini Golf (Techdirt)

Procter & Gamble – Procter & Gamble settles Olay Regenerist trade dress, patent dispute with CVS Pharmacy (Law360)


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