Global Week in Review 14 Nov 2012 from IP Think Tank

Here is Think IP Strategy’sweekly selection of top intellectual property news breaking in the blogosphere and internet.


Highlights this week included:

ED Virginia invalidates USPTO interpretation of patent term adjustment RCE carve-out: Exelixis v Kappos (PharmaPatents) (Patent Docs) (IP Spotlight)(Patently-O) (Patently-O)

Canada Supreme Court rules Pfizer’s Viagra (sildenafil) patent invalid for insufficient disclosure: Teva v Pfizer (The IP Factor) (Ars Technica) (Michael Geist) (IP Osgoode) (Patently-O) (IPKat)

India: IPAB revokes Roche’s patent on Pegylated Interferon alpha 2a (Fix the Patent Laws) (Spicy IP) (PharmaPatents) (IP Whiteboard) (Spicy IP) (IP Watch)

US Supreme Court Justices consider the limits of first sale in Kirtsaeng v. Wiley (EFF) (Ars Technica) (Excess Copyright) (KEI) (Patently-O) (Patently-O) (The 1709 Blog)

Please join the discussion by adding your comments on any of these stories, and please do let us know if you think we’ve missed something important, or if there is a source you think should be monitored.



Global – General

2013 deadline looms for LDC members of the World Trade Organization (KEI)

European Commissioner affirms Europe wants CETA (EFF)

EU drops demands for inclusion of ACTA’s criminal IP provisions in CETA (Michael Geist)

Japan was the first to ratify ACTA. Will they join TPP next? (EFF)


Global – Patents

Kodak gets life-saving loan of $793 million—if it can sell its patents (Ars Technica)

Funding for patent litigation: a new solution?  – HLP3 (IP finance) (PatLit)

Good things come in threes? DOJ, FTC and EC officials wax eloquent about FRAND (Patently-O)

Patent litigation funding: what about the underfunded defendant? (IP finance)

Study shows drug patents can be extended for decades (IP Watch)

Pharma outlook: don’t yield on IP, work on trust-building, call for global cooperation (IP Watch)


Global – Copyright

Kim Dotcom avoids “unsafe” .com, picks for new Megaupload (TorrentFreak) (Ars Technica)



Petition urges delay, discussion Of Pan-African IP Organization (IP Watch)

Moyo furthers debate on PAIPO (Afro-IP)

Top-level domain .Africa becomes object of bitter fight (IP Watch)



Is IP Australia ready to ‘Raise the Bar’? (Patentology)



Supreme Court rules Pfizer’s Viagra (sildenafil) patent invalid for insufficient disclosure: Teva v Pfizer (The IP Factor) (Ars Technica) (Michael Geist) (IP Osgoode) (Patently-O) (IPKat)

Supreme Court denies leave to hear pantoprazole section 8 appeal: Teva Canada v Nycomed Canada (Beeser)

Supreme Court decision in Canada v GSK – IP rights and the arm’s length principle (IP Osgoode)

Federal Court further clarifies Apotex’s section 8 claim for alendronate: Apotex v Merck Canada (Beeser)

Federal Court: Apotex wins $215 million ramipril section 8 claim: Apotex v Sanofi-Aventis (Beeser)

Federal Court: Prior art closer than infringement – Bodum’s design invalid and not infringed: Bodum and PI v Trudeau (Class 99)

Canadian Copyright reform in force: expanded user rights now the law (Michael Geist) (The 1709 Blog)

What the new copyright law means for you (Michael Geist)

Fair dealing consense emerges within Canadian educational community (Michael Geist)



Intellectual property issues of biomedical outsourcing in the PRC (China Law Insight)

What the data says about trade secret litigation in China (China IPR)



Finally a reform of the Danish IPR enforcement is to be expected (Kluwer Patent Blog)



Ecuador goes it alone with massive fee hikes (Patentology)



Europe’s patent judges call for improvements to Draft Agreement on Unified Patent Court (IPKat)

AIPPI calls for CJEU status quo in unitary patent matters (IPKat)

The EU’s Digital Shift: 10 facts about media and content industries (IPKat)

Family of trade marks, defensive strategies and genuine use: CJEU speaks out in Rintisch (IPKat) (IPKat)

Orphan Works Directive now online (IPKat) (IPKat) (The 1709 Blog)

Georgetown University: Hague Court refers five more questions to the CJEU (The SPC Blog) (EPLAW)

General Court on lack of distinctiveness for plaid designs and colours: T-326/10 (Class 46)

Genereral Court upholds likelihood of confusion between Vital&Fit and VITAFIT marks (Class 46)

General Court finds likelihood of confusion: Tesa Tack v Tack Ceys (Class 46)

Plant protection in Europe: a seamless fit no more? – G2/12 (Kluwer Patent Blog)



Supreme Court denies ISP permission to appeal Pirate Bay blockade (TorrentFreak)



French president backs publishers, says Google should pay for snippets (Ars Technica)

French anti-P2P agency’s funding to fall by 23 percent in 2013 (Ars Technica)

Supreme Court rules on Catch-up TV (The 1709 Blog)



Pirate Party falling out of favor across Germany (Ars Technica)

German news aggregators face publisher levy under planned changes to copyright laws (Out-Law)

Bundesgerichtshof nullifies patent that claimed composition of leflunomide and teriflunomide: BHG X ZR 126/09 (EPLAW)



IPAB revokes Roche’s patent on Pegylated Interferon alpha 2a (Fix the Patent Laws) (Spicy IP) (PharmaPatents) (IP Whiteboard) (Spicy IP) (IP Watch)

Puzzling questions about Sugen’s sunitinib patent (Spicy IP)

Govt. of India follows up on SpicyIP reporting – revokes Avesthagen patent – first Indian victory for TKDL (Spicy IP)

Patent Office objects to attempts by CSIR & Co. to patent traditional knowledge and access biological resources without NBA approval (Spicy IP)

India publishes draft guidelines for patenting of TK and biological material (IP watch)

Supreme Court passes order restraining and other rival matrimonial websites from infringing BharatMatrimony’s trade mark (Spicy IP)

Karnataka High Court temporarily restrains German company from exploiting trade secrets of Homag India (Spicy IP)

Copyright amendments, 2012: a fair balance? (Spicy IP)

President of Costa Rica passes executive order allowing photocopying of academic materials. India, it’s time to wake up. (Spicy IP)



IKEA is a famous trademark in Indonesia (IP Komodo)

Compulsory pharma patent licenses in Indonesia – sourcing the API (IP Komodo)

Indonesia’s economic boom and IP (IP Komodo)



Patent extensions for pharmaceutical compositions in Israel cannot be obtained on the back of patent term extensions in the US, due to TRIPS change in law to 20 years from filing (Darbepoetin alfa)(The IP Factor)

Legal costs and allegations of bad faith in patent opposition by Omrix Biopharmaceuticals against CSL Behring’s Fibrinogen patent (The IP Factor)

What happens to rights where Israel Patent Office mail goes astray? (The IP Factor)

Israel Patent Office allows Fanta bottle to be registered as a trademark (The IP Factor)



Patent linkage: has it returned to Italy? (The SPC Blog)

New business enterprise courts to handle patent and trademark litigation (PatLit)



Dutch court rules (again) that Samsung doesn’t infringe Apple’s touch event model patent (FOSS Patents)



Philippines heads toward expanded copyright law (IP Watch) (IP Komodo)



Poland – close to an end of the conflict between rights from registration of design and copyrights? (Class 99)


South Korea

South Korea is not a ‘FRAND rogue state’! – Seoul Central District Court issues decision in case between Apple and Samsung (Patentology)



Spanish Supreme Court clarifies that damages may be claimed from the date when the EPO published the grant of the patent (Kluwer Patent Blog)


United Arab Emirates

Cybersquatting Emirates style: the UAE Domain Name Dispute Resolution Policy (NIPC)


United Kingdom

UK government to inspect Google’s failed downranking of “pirate” sites (TorrentFreak)

EWPPC finds garment hanger design valid and infringed: Mainetti v Hangerlogic (Class 99)

EWPPC: Costs awards when both sides claim to be the winner: Vernacare v Environmental Pulp Products (PatLit)


United States

US General

Excuses, excuses! A round-up of exceptions under the failure to obtain timely tentative approval 180-day exclusivity forfeiture provision (FDA Law Blog)

Does a Hatch-Waxman patent delisting counterclaim terminate a 30-month litigation stay? (FDA Law Blog)

Rep. Eshoo expresses views on Abbott’s biosimilars petition in letter to FDA (Patent Docs)


US Patents

Groups petition for NIH exercise of march-in rights over Abbott Laboratories’ Norvir® (ritonavir) (Patent Docs) (Patently-O)

How common is federal funding of patented inventions? (KEI)

Age of patents when asserted (Patently-O)

Who can appear in patent trials before the USPTO Patent Trial And Appeal Board? (PharmaPatents)

Strategies for preissuance submissions in U.S. patent applications (PharmaPatents)

A strategy to speed up the prosecution of older cases (PatentablyDefined)

Hedging against petitioner estoppel at the PTAB (Patents Post-Grant)

CRU workload extending patent reexamination pendency? (Patents Post-Grant)

USPTO proposes update to Code of Professional Responsibility (Patent Docs)

Apple-HTC settlement is already the 15th official Android patent license deal (FOSS Patents)

Pending patent applications: delays in prosecution and patent term adjustments (Patently-O)

Timing of the first office action on the merits (Patently-O)


US Patents – Decisions

CAFC focuses on the problem when evaluating non-analogous art: K-Tec v Vita-Mix (PharmaPatents)

CAFC rules that Florida voting machines do not infringe patentee’s exclusive rights: Voter Verified v Premier Election Solutions (Patently-O)

CAFC: Overkill of the best mode: Joy Mining Machinery v Cincinnati Mine Machinery (Patently-O)

CD California: Attorney argument was not misrepresentation sufficient to support inequitable conduct: Lakim v Linzer (Docket Report)

Columbia holds that even a flawed office action stops the patent term adjustment clock: University of Massachusetts v Kappos (Pharma Patents)

Columbia: Court orders ANDA approval in pre-MMA 180-day exclusivity case; decision appears to have post-MMA implications:  Watson v FDA (pioglitazone HCI) (FDA Law Blog)

Connecticut: Jury finds ABI’s sale of DNA sequencing reagents and products infringed Enzo’s patent: Enzo Biochem v Applera (Holman’s Biotech Blog)

Delaware: Can a patentee request reexamination for an improper purpose?: Exelis v Cellco (WHDA)

ED Texas: Discovery delay resulting in automatic data loss warrants adverse jury instruction: Realtime Data v MetroTexas (Docket Report)

ED Texas: VirnetX wins $368M from Apple, immediately files brand-new lawsuit – iPhone 5, iPad mini targeted in its latest lawsuit (Ars Technica)

ED Virginia invalidates USPTO interpretation of patent term adjustment RCE carve-out: Exelixis v Kappos (PharmaPatents) (Patent Docs) (IP Spotlight)(Patently-O) (Patently-O)

ED Virginia: Google infringes old Lycos patents, must pay $30 million: I/P Engine v Google et al (Ars Technica)

Minnesotta: Potential delay in resolving reexam due to America Invents Act does not warrant denial of stay pending reexam: Polaris v BRP US (Docket Report)

ND Alabama: Cost of electronic discovery database not recoverable: Abbott Point of Care v Epocal (Docket Report)

ND California: $200,000 e-discovery costs not recoverable: Plantronics v Aliph (Docket Report)

ND California: Block-billing results in 20% reduction in fee award: Apple v Samsung (Docket Report)

ND Illinois: Reexamination precludes award of royalties for pre-issuance infringement: Sloan Valve v. Zurn Industries (WHDA)

Nebraska: Direct competition between parties does not preclude reexamination stay: Phil-Insul v Airlite Plastics (WHDA)

Nevada draws line on terminal disclaimers for IP owned by subsidiaries: Email Link Corp. v. Treasure Island, LLC et al. (Intellectual Property Law Blog)

Nevada: Expert’s use of “supercharged 50% version of the 25% rule of thumb rule” did not render royalty rate opinion unreasonable: Halo Electronics v Bel Fuse (Docket Report)

WD Kentucky: Judge Coffman denies preliminary injunction motion because of pending reexaminations: Transtex Composite v Lydon Composite (WHDA)

WD Pensylvannia: Damages expert may consider entire price, profit and margin of accused product without showing entire market value rule applies: Carnegie Mellon University v. Marvell Technology Group (Docket Report)

WD Washington: “Ex ante, multilateral negotiation” methodology for determining RAND terms not inherently unreliable despite lack of peer review and publication: Micrsoft v Motorola (Docket Report)

Preliminary ITC ruling finds Samsung in infringement of four Apple patents: 337-TA-796 (FOSS Patents) (Ars Technica) (Protecting Designs)

ITC: Patentee’s obligation to license on FRAND terms did not preclude ITC exclusion order: 337-TA-794 (Docket Report)

PTAB: Apple victorious over Affinity Labs of Texas’ portable audio player patent (WHDA)


US Patents – Lawsuits and strategic steps

Acura Pharmaceuticals – Acura files patent infringement complaints against Impax, Par, Sandoz and Watson in response to Para IV challenge concerning Oxecta (oxycodone hydrochloride) (Patent Docs)

Acura Pharmaceuticals – Acura files patent infringement complaint against Sandoz following their Para IV certification in relation to Oxecta (oxycodone hydrochloride) (Patent Docs)

Apple – Apple-HTC ten-year license deal shows Android patent peace is achievable (FOSS Patents) (Out-Law)

Apple – Wisconsin: Judge cancels trial, tosses Apple’s FRAND lawsuit against Google’s Motorola Mobility (FOSS Patents) (Ars Technica)

Astrazeneca – Astrazeneca files patent infringement complaint against Lupin in response to Para IV challenge concerning Seroquel (quetiapine fumarate) (Patent Docs)

Avago Technologies – ITC institutes investigation (337-TA-860) regarding Certain Optoelectronic Devices For Fiber Optic Communications (ITC 337 Law Blog)

Creative Kingdoms – ITC decides to review initial determination in Certain Video Game Systems (337-TA-770) (ITC 337 Law Blog)

Cypress Semiconductor – ALJ Bullock issues initial determination of no section 337 violation in Certain Static Random Access Memories (337-TA-792) (ITC 337 Law Blog)

Fresenius USA – CAFC refuses en banc review of “do-over” patent reexamination: In re Baxter International (Patents Post-Grant)

Gilead Sciences – Gilead files patent infringement suit against Lupin in response to Para IV challenge concerning Viread (tenofovir disoproxil fumarate) (Patent Docs)

Graphics Properties – ALJ Essex denies motion for summary determination of invalidity in Certain Consumer Electronics And Display Devices (337-TA-836) (ITC 337 Law Blog)

HTC – HTC’s biggest patent worry after Apple settlement: 32 Nokia patent assertions in five venues (FOSS Patents)

Illumina – Page limits – the APJs send a message to the bar (WHDA)

Jazz Pharmaceuticals – Jazz files patent infringement suit against Roxane Laboratories following Para IV challenge regarding Xyrem (sodium oxybate) (Patent Docs)

Mallinckrodt – Mallinckrodt files patent infringement suit against Watson in response to Para IV certification concerning Exalgo (hydromorphone hydrochloride)(Patent Docs)

Microsoft – Microsoft asks appeals court to ban Motorola’s Android-based devices over four more patents (FOSS Patents)

Motorola Mobility – Google’s Motorola Mobility withdraws WiFi patents from Microsoft Xbox ITC case (FOSS Patents)

Motorola Mobility – Motorola Mobility is appealing an ITC ruling that held Apple not to infringe three patents (FOSS Patents)

MyKey – ALJ Bullock issues initial determination of no section 337 violation in Certain Computer Forensic Devices (337-TA-799)

Otter Products – ITC issues notice of final determination finding violation and general exclusion order in Certain Protective Cases (337-TA-780) (ITC 337 Law Blog)

Purdue Pharmaceutical – Purdue files patent infringement complaints against Par Pharmaceutical and Par Formulations in response to Para IV challenge concerning Intermezzo (sublingual zolpidem tartrate) (Patent Docs)

Robert Bosch – ITC decides to review two initial determinations in Certain Wiper Blades (337-TA-816) (ITC 337 Law Blog)

SAP – PTAB denies motion for pro hac vice admission: SAP America v Versata Development Group (Patents Post-Grant)

TQP Development – Patent suits target Google, Intel, hundreds more for encrypting web traffic (Ars Technica)


US Copyright

Twitter announces new policy to publicize copyright takedown notices (IP Spotlight)

EFF wins renewal of smartphone jailbreaking rights plus new legal protections for video remixing: Copyright Office announces exemptions to mitigate DMCA harms (EFF) (Ars Technica)

“Six strikes” evidence re-reviewed to fix RIAA lobbying controversy (TorrentFreak) (Ars Technica)


US Copyright – Decisions

Colorado: Plastic surgeon owns copyright in before-and-after photos of patient: Denenberg v. LED Technologies (Technology & Marketing Law Blog)

Arizona: Consumer review website isn’t liable for users’ copyright infringement: Ripoff Report v. ComplaintsBoard (Technology & Marketing Law Blog) (Internet Cases)

California Court of Appeal: Email that says “Done .. thanks!” doesn’t transfer copyrights: MVP Entertainment v Frost (Technology & Marketing Law Blog)

ND Illinois: Virginia man ordered to pay $1.5 million for sharing 10 porn films via P2P networks: Flava Works v Kywan Fisher (Ars Technica)


US Copyright – Lawsuits and strategic steps

Capitol Records – Plaintiffs and individual defendant move for reconsideration in Capitol v MP3Tunes (Recording Industry vs The People)

DISH Network – Overreaching anti-circumvention claim shut down: DISH Network v. World Cable (Technology & Marketing Law Blog)

Katz, Raanan – Blogger can’t defeat copyright infringement claim on motion to dismiss: Katz v. Chevaldina (Technology & Marketing Law Blog)

Megaupload – Megaupload can’t come back online, U.S. tells court (TorrentFreak)

Patrick Collins – Judge blasts troll for “lack of interest in actually litigating”: Another judge becomes a skeptic of mass porn file-sharing lawsuits (Ars Technica)

Twitter – Photographer who sued Twitter for copyright infringement voluntarily dismisses lawsuit: Boffoli v. Twitter (Technology & Marketing Law Blog) (Ars Technica)

Wiley – Supreme Court Justices consider the limits of first sale in Kirtsaeng v. Wiley (EFF) (Ars Technica) (Excess Copyright) (KEI) (Patently-O) (Patently-O) (The 1709 Blog)


US Trade Marks – Decisions

ED California: Google defeats trademark challenge to its AdWords service: Jurin v. Google (Technology & Marketing Law Blog)

ED Pensylvannia: Another Google AdWords advertiser defeats trademark infringement lawsuit: CollegeSource v. AcademyOne (Technology & Marketing Law Blog)


US Trade Marks – Lawsuits and strategic steps

Compagnie Financiere Richemont – Luxury brands can’t grab emails in trademark dispute (EFF)

Google – Google gets unwanted ruling in AdWords trademark lawsuit: CYBERsitter v. Google (Technology & Marketing Law Blog)

Google – With Rosetta Stone settlement, Google gets closer to legitimizing billions of AdWords revenue (Technology & Marketing Law Blog) (Ars Technica)

K-V Pharmaceuticals – K-V calls upon the ITC to defend its Makena brand (The Brand Protection Blog) (ITC 337 Law Blog)

Yelp – Stupid lawyer tricks (and how the PTO could help stop them) – Village Voice sues Yelp over creation of ‘best of’ lists (EFF)

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