Site icon Duncan Bucknell

Global Week in Review 26 Sept 2012 from IP Think Tank

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


Highlights this week included:

Orphan works directive approved by EU Parliament (IPKat) (The 1709 Blog) (IP Watch)

France convicts first person under anti-piracy law (even though he didn’t do it) (Ars Technica) (TorrentFreak) (EFF) (The 1709 Blog)

CAFC requires specific intent to deceive for inequitable conduct: 1st Media v Electronic Arts (PharmaPatents)  (Inventive Step) (Patently-O)

US: PTAB submissions have commenced  (Director’s Forum) (WHDA) (Patents Post-Grant) (Patents Post-Grant) (Patently-O)


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

ACTA: Will it ever become a valid international treaty? (IP Watch)

Dutch government says no CETA with ACTA provisions (Michael Geist)

Trans-Pacific Partnership – International Intellectual Property Alliance demands rollback of recent Canadian reforms in secretive trade deal (Michael Geist)

Trans-Pacific Partnership – A look at the IP provisions (Spicy IP)

China’s SAIC Minister Zhou visits USPTO (Director’s Forum)

WIPO design treaty: not just yet… (Class 99)


Global – Patents

An innovation cliff? Is it P&G’s problem or all our problem? (IP finance)

Intellectual Ventures – largest worldwide patent holder? (Patently-O)


Global – Copyright

Megaupload readies for comeback, code 90% done (TorrentFreak)

New paper on ISP liability: how to reconcile US and EU approaches? (The 1709 Blog)

The thorny issue of competition in the music industry (The 1709 Blog)



IP Australia issues new consulation paper ‘Innovation Patents – Raising the Step’ (Patentology) (

Draft regulations reveal applicants to be slugged with search fee (Patentology)

Raising the Bar Draft Regulations (

Oh what a feeling! Jetstar disputes Toyota’s rights to register “jumping” trade marks (IP Whiteboard)



Brussels Court of Appeal rules patents valid and infringed in Lundbeck v Tienfenbacher (escitalopram) (EPLAW)



A brief look at Botswana’s new IP law (IP Watch)



Opposing views: The impact of Canada’s Access Copyright decision (IP Watch)



Shanghai courts adopt new methods to compel compliance of preliminary injunctions in intellectual property infringement disputes (China Law Insight)

China’s changing trademark environment. Why you need to register your trademark now. (China Law Blog)

Quality, not quantity, key to China’s patent incentives, says EUCCC Report (IP Whiteboard)



Orphan works directive approved by EU Parliament (IPKat) (The 1709 Blog) (IP Watch)

European creators insist private copying levy still relevant (IP Watch)

Combination SPCs: more hypertension for the CJEU? (CoAprovel – irbesartan/hydrochlorothiazide) (The SPC Blog)

CJEU asked to rule on legality of downloading from illegal sources: ACI Adam B.V. & Ors v Stichting de Thuiskopie & Anor (TorrentFreak) (The 1709 Blog) (Out-Law)

Danish Supreme Court to seek preliminary ruling from the CJEU in ROLEX customs seizure case (Class 46)



France convicts first person under anti-piracy law (even though he didn’t do it) (Ars Technica) (TorrentFreak) (EFF) (The 1709 Blog)

Van Cleef & Arpels win French tussle with employee over design ownership (Class 99)



Mannheim Regional Court says Samsung and Motorola don’t infringe Apple’s touch event model patent (FOSS Patents)

Munich I Regional Court: Microsoft wins third German injunction against Google’s Motorola over high-power patent (FOSS Patents)

Mannheim Regional Court may defer to EU regulator on Samsung-Apple lawsuits over FRAND patents (FOSS Patents)

Munich I Regional Court hands Apple rubber-banding patent injunction against Google’s Motorola Mobility (FOSS Patents)

Supreme Court deals with distinction between permissible “repair” of a patented product and impermissible “renewed-manufacturing” in Pallet Container II (EPLAW)



Will the amendments to the Copyright Act serve their purpose? (Spicy IP)

Copyright Rules 2012 (Spicy IP)

Balancing public and private interests in the intellectual property regime (IP Watch)

Madras High Court declines to grant interim injunction in trademark dispute between Google Ad-words and matrimonial portals (Spicy IP)

Nexavar (Sorafenib) – IPAB dismisses Bayer’s appeal against compulsory license (Spicy IP) (KEI)

Erlotinib – Roche v Cipla: Part 1: validity of patent (IIPRD)



Ireland accedes to the London Agreement (IPKat)



First Italian PTO opposition decisions to be issued this month (Class 46)



Dutch court rules linking to photos is copyright infringement (Ars Technica) (The 1709 Blog) (Out-Law)

District Court of The Hague issues preliminary injunction against manufacture or sale of Irbetasan/HCTZ combination medicine by defendant: Sanofi v Teva (EPLAW)


New Zealand

NZ Patents Bill second reading debate (Patentology)

Government spies illegally bugged Kim Dotcom, Prime Minister admits (TorrentFreak) (TorrentFreak) (Ars Technica)



Is Panama about to pass the worst copyright law in history? (TechnoLlama)


South Africa

Traditional knowledge legislation given a reprieve (Afro-IP)



An SPC granted using a marketing authorisation that time has proved to be wrong: Nullification or recalculation? (Kluwer Patent Blog)



First elected Pirate Party mayor to rule Swiss town (TorrentFreak)

Swiss practice re “SAN” and “SANA” for pharmaceuticals (Class 46)



Syria denounces Madrid Agreement on trademark registration (IP Watch)


United Kingdom

Reform of copyright law key to economic growth in Europe, Hargreaves claims (Out-Law)

Soaring digital book sales down to stable copyright regime in UK, claims publishers’ body (Out-Law)

Further deregulation proposed for innovative ‘challenger’ businesses and entrepreneurs (Out-Law)

Why the Meltwater case won’t break the internet (The 1709 Blog)


United States

US General

Is it a drug or device? Court requires FDA to explain itself in Prevor v FDA (Diphoterine skin wash) (FDA Law Blog)

Insight into FDA’s implementation of FDASIA for devices (FDA Law Blog)


US Patents

USPTO clarifies stance on 101 challenges before the PTAB (Patents Post-Grant) (Director’s Forum) (Patently-O)

Unprecedented surge in patent reexamination filings (Patents Post-Grant)

PTAB submissions have commenced  (Director’s Forum) (WHDA) (Patents Post-Grant) (Patents Post-Grant) (Patently-O)

Announcing the Patent Trial and Appeal Board (PTAB) (Director’s Forum) (Patently-O)

Post grant patent challenges to threaten continuation portfolios (Patents Post-Grant)

Creeping death….the infectious estoppel impact of PTAB validity trials (Patents Post-Grant)


Pending appeals not impacted by BPAI->PTAB transformation (Patently-O)

A rush to file at the end of inter partes reexaminations (Patently-O)

USPTO encourages third parties to participate in review of pending patent applications (Patently-O)

Preissuance submissions: A description of the relevance to examination but not an explanation (Patently-O)

Preissuance submissions (Patently-O)

Senate approves legislation to implement old patent treaties – S.3486:  Patent Law Treaties Implementation Act of 2012 (Inventive Step)

Patent settlement agreements: the next barrage (FDA Law Blog)

Should presumptions be avoided in the reverse payment debate? (Patent Docs)

USPTO publishes final derivation rules (PharmaPatents)

Ex parte patent appeal results (Patently-O)

PWC reports sharp rise in patent litigation filings (IP Spotlight) (Patent Baristas)

The problematic origins of nationwide patent venue (Patently-O)

Supplemental examination: inequitable conduct amnesty and beyond (Patently-O)

Does the entire market value rule make sense when applied to apportionment analyses? (Patently-O)

Patently wrong – The jury’s verdict in Apple v Samsung (IP Watch)

Should a challenge to a patent’s validity based on claiming unpatentable subject matter (i.e., Bilski) be addressed at the pleading stage? – yes – OIP v / no – Phoenix Licensing v Aetna (Docket Report)


US Patents – Decisions

CAFC requires specific intent to deceive for inequitable conduct: 1st Media v Electronic Arts (PharmaPatents)  (Inventive Step) (Patently-O)

CAFC allows Santarus to keep Par’s generic version of Zegerid® off the market until the expiration of Orange Book-listed patents: Santarus v Par Pharmaceuticals (Patent Docs)

CAFC again denies declaratory judgment jurisdiction: dj plaintiff must provide evidence of real and immediate conflict: Matthews International v Biosafe (Patently-O)

CAFC: Good-standing licensee must prove non-infringement in DJ action: Medtronic v Boston Scientific Corp (Patently-O) (Patent Docs)

CAFC: Appealing Board decisions (and losing): In re Droge (Patently-O) (Patent Docs)

CAFC: Who decides obviousness: judge or jury?: Kinetic Concepts and Wake Forest University v Smith & Nephew (Patently-O)

Access to courts: CAFC issues preliminary rejection of Judge Koh’s stance on open access to trial documents: Apple v Samsung (Patently-O)

ND California: Preliminary injunction prohibiting sale of Galaxy Tab survives despite jury verdict of noninfringement: Apple v Samsung (Docket Report) (Ars Technica)

ED Virginia: Harvard’s US oncomouse patents are all expired (for the time being): Harvard College v Kappos (Patently-O)

ND California: Cease & desist letter lacking charge of infringement did not create substantial controversy sufficient for declaratory relief claim: Unisense Fertilitech v Auxogyn (Docket Report)

WD Wisconsin: $50 million verdict overturned because plaintiff failed to prove infringing products were made or imported into the United States: Promega v Life Technologies (Docket Report)

SD Florida: Invalidation of patent on reexamination warrants relief from judgment of infringement, including injunction and monetary award: Flexiteek Americas v Plasteak (Docket Report)

ED Wisconsin: Claim term “sufficiently rigid” was not insolubly ambiguous and did not render claim indefinite: Formax v Alkar-RapidPak-MP Equipment (Docket Report)

New Jersey: Janssen’s low dosage oral contraception regime patent valid in dispute with Lupin (Ortho Tri-cyclen Lo) (Beeser)

Columbia: District Court stands by patent term adjustment tolling decision: Bristol Meyers Squibb v Kappos (Pharma Patents)

Delaware: Judge Robinson distinguishes between re-examination and reissue; patentees precluded from bringing second lawsuit: Senju v Apotex (WHDA) (Docket Report)

SD California: 35 U.S.C. §285 permits attorneys’ fee award for post-settlement conduct “intertwined” with patent issues: Fitness IQ v. TV Products USA (Docket Report)

ND California: Failure to dismiss case after unfavorable claim construction rendered case exceptional warranting attorneys’ fees: Spectros v Termo Fisher Scientific (Docket Report)

CD California: Timeshare trading patent invalid for failure to claim patentable subject matter under Bilski: Vacation Exchange v Wyndham Exchange and Rentals (Docket Report)

ITC: Apple doesn’t infringe Samsung’s smartphone patents – Judge notes patented claims aren’t practiced in the domestic market, either (Ars Technica) (FOSS Patents)

ITC issues public version of opinion affirming in part and reversing in part violation of Section 337 in Certain Wireless Communication Devices (337-TA-745) (ITC 337 Law Blog)

ITC issues final determination of no violation by Zoran or MediaTek in Certain Integrated Circuits (337-TA-786) brought by Freescale Semiconductor (ITC 337 Law Blog)

ITC: ALJ Essex issues notice of initial determination finding Section 337 violation in Certain LED Photographic Lighting Devices (337-TA-804) brought by Litepanels (ITC 337 Law Blog)


US Patents – Lawsuits and strategic steps

AMP – AMP files petition for certiorari to Supreme Court, seeking review of CAFC’s decision upholding patent-eligibility of Myriad’s “isolated DNA” claims (Pharma Patents) (Patent Docs)

Anu IP – ALJ Pender grants motions to terminate investigation with respect to numerous respondents in Certain Electronic Devices Having A Retractable USB Connector (337-TA-843) (ITC 337 Law Blog)

Apple – Apple asks Federal Circuit to deny Samsung’s request for remand of Galaxy Tab 10.1 injunction (FOSS Patents)

Apple – Apple demands $707 million in additional damages from Samsung – Samsung objects, wants a new trial (Ars Technica) (FOSS Patents)

Avanir – Avanir files patent infringement complaints against Actavis, Par, Watson and Wockhardt in reponse to Para IV challenge concerning Nuedexta (dextromethorphan/quinidine) (Patent Docs)

Braintree Laboratories – Braintree files patent infringement suit against Cupress Pharmaceutical in response to Para IV challenge concerning Suprep (sodium/potassium/magnesium) (Patent Docs)

BriarTekIP – ITC institutes investigation (337-TA-854) regarding Certain Two-Way Global Satellite Communication Devices (ITC 337 Law Blog)

Cubist – Cubist files patent infringement complaint against Hospira in response to Para IV challenge regarding Cubicin (Daptomycin) (Patent Docs)

EON Corp – Defense counsel disqualified based on seventeen year old prioer representation: EON Corp v FLO TV (Docket Report)

Hitachi Metals – ITC institutes investigation (337-TA-855) regarding Certain Sintered Rare Earth Magnets (ITC 337 Law Blog)

Louisiana Wholesale Drug Co – Generic defendant petitions for certiorari in K-Dur Litigation (Patent Docs)

Microchip Technology – ALJ Rogers grants motion to terminate investigation in its entirety in Certain Semiconductor Integrated Circuit Devices (337-TA-840) (ITC 337 Law Blog)

Motorola – ITC decides to investigate Google’s (Motorola Mobility’s) patent complaint against Apple (FOSS Patents) (FOSS Patents) (ITC 337 Law Blog)

Novartis – Novartis files patent infringement complaint against Apotex in response to Para IV challenge concerning Lotrel (amlodipine/benazepril) (Patent Docs)

OSRAM – ITC to review in part ALJ Shaw’s initial determination in Certain Light-Emitting Diodes (337-TA-784) (ITC 337 Law Blog)

Otsuka Pharmaceutical – Otsuka files patent infringement complaint against Silarx in response to Para IV challenge concerning Ablify (aripiprazole) (Patent Docs)

Otsuka Pharmaceutical – Otsuka files patent infringement complaint against Apotex in response to Para IV challenge concerning Ablify (aripiprazole) (Patent Docs)

Overland Storage – ITC decides to review initial determination in Certain Automated Media Library Devices (337-TA-746) (ITC 337 Law Blog)

Purdue Pharmaceutical Products – Purdue files patent infringement complaint against Novel Laboratories in response to Para IV challenge concerning Intermezzo (zolpidem)  (Patent Docs)

Realtek – Realtek files new 337 complaint regarding Certain Integrated Circuit Chips With Bond Pad Structures (ITC 337 Law Blog)

Salix – Salix files patent infringement suits in Delaware and Maryland against Lupin over Para IV challenge concerning Apriso (mesalamine) (Patent Docs)

Skyhook Wireless – Skyhook Wireless files new lawsuit against Google over 9 U.S. geolocation patents (FOSS Patents)

Twin-Star International – ITC decides to review initial determination in Certain Electric Fireplaces (337-TA-791/826) (ITC 337 Law Blog)

University of California – Eolas strikes again: sues Facebook, Wal-Mart, and Disney over University of California patents (Ars Technica)

Upsher-Smith – Upsher-Smith seeks declaratory judgement of non-infringement / invalidity based on ANDA filing to manufacture generic version of Auxilium’s Testim (testosterone gel) (Patent Docs)

VirnetX – VirnetX and SAIC file new 337 complaint against Apple regarding Certain Devices With Secure Communication Capabilities (ITC 337 Law Blog)


US Copyright

“Six strikes” anti-piracy scheme overly secret and unfair, says Professor Bridy (TorrentFreak)

New anti-piracy watchlist zooms in on file-sharing tolerant countries (TorrentFreak) (Ars Technica)

New study affirms less copyright restrictions benefit the economy, amid renewed calls for SOPA 2.0 (EFF)


US Copyright – Decisions

8th Circuit Court of Appeals upholds $9,250 per song penalty in filesharing case, says constitution doesn’t limit penalties: Capitol Records v Thomas-Rasset (EFF) (The 1709 Blog)

ND California says no negligence claim for third party infringement via open wi-fi connection: AF Holdings v. Doe (Technology & Marketing Law Blog)


US Copyright – Lawsuits and strategic steps

BMG – BMG demands $20 for pirated Bruno Mars / Eminem downloads (TorrentFreak)

Cameron, James – CD California throws out copyright claim concerning Avatar: Elijah Schkeiban v James Cameron et al (The 1709 Blog)

John Wiley & Sons – Alleged copyright infringement by patent prosecutors: American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg (Patently-O)

Mediacom – Mediacom disconnects and bans alleged internet pirates (TorrentFreak)

Megaupload – Injustice continues as Megaupload user data negotiations go bust (TorrentFreak)


US Trademarks

Newly released consumer survey indicates that legal concerns about competitive keyword advertising are overblown (Technology & Marketing Law Blog)


US Trade Marks – Decisions

9th Circuit Court of Appeals vacates $60M jury award in Neurovision Med v NuVasive (Seattle Trademark Lawyer)

Precedential no. 31: TTAB affirms mere descriptiveness refusal of “CENTER OF SCIENCE AND INDUSTRY” (TTABlog)

Precedential no. 30: denying cancellation, TTAB finds CMS neither generic nor merely descriptive for wine (TTABlog)


US Trade Marks – Lawsuits and strategic steps

Fuhu – Even Toys”R”Us can’t release a tablet without getting sued – Toys”R”Us allegedly stole kid tablet’s “butterfly” shape from former partner (Ars Technica)

Reddit – Trademark abuse and the “Gaymer” community (EFF)

Exit mobile version