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IP Think Tank Global Week in Review – General Edition – Friday, 17 October 2008

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

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.

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Highlights this week included:

President signs PRO IP Bill into law (The Counterfeit Blog) (Intellectual Property Watch) (Techdirt) (Out-Law) (Counterfeit Chic) (Public Knowledge) (Ars Technica) (Law360) (<a href=" Intellectual Property Law & Policy News)

CAFC vacates ITC ban on importing Qualcomm chips: Kyocera v International Trade Commission (Ars Technica) (Patent Prospector) (IP Law Observer) (PLI) (Patently-O) (Law360) (IP Updates) (IP Updates) (Law360) (Law360)



Global – General

CEOs and Corporate Managers: develop an engaged knowledge of your company’s intellectual asset value on the table (IP Asset Maximizer Blog)

WIPO creates, seeks to fill top posts targeting economic, global challenges (Intellectual Property Watch)

Financial crisis – what impact on world of IP? (IP finance)

In the midst of a financial meltdown, smart companies will increase strategic IP management efforts (IP finance)

Intellectual Property Colloquium – IP podcast site (The Trademark Blog)

Open Access Day – 14 October (Spicy IP)

Quick question – ‘non-asserts’ as licence? (IPKat)

Roya Ghafele’s report ‘Perceptions of Intellectual Property: A Review’ highlights pressures facing the IP brand; new group gets ready to act (IAM)

Progress in WIPO Traditional Knowledge Committee seen in informal sessions (Intellectual Property Watch)

WIPO Committee on Traditional Knowledge and Folklore running in place (Intellectual Property Watch)

WIPO Director General calls for concrete outcomes to benefit indigenous and local communities (WIPO) (Intellectual Property Watch)

World Trade Organisation members call for more TRIPs talks; Director post may open up (Intellectual Property Watch)


Global – Patents

Big Five offices to discuss patent harmonisation (Managing Intellectual Property)

Comparative examination duration distributions across patent offices (IP Updates)

Counselling victims of invention promotion companies (The Invent Blog)

Cutting the cost of patent litigation: streamlining and cost-capping (IP finance)

Does the piracy paradox apply for patents? (Patently-O)

Patents Online announces new patent search engine (Patent Docs)

SumoBrain now free (Philip Brooks’ Patent Infringement Updates)


Global – Copyright

How music licensing rights can hurt music sales (Techdirt)

Seth Godin – maybe art should be for its own sake and the enjoyment of the artist creating it (Copyfight)



Pressure to sign up to European Partnership Agreements mounts (Afro-IP)



Innovation policy in Australia – commercialising inventions – what’s the story? (IPRoo)

Prior use grace period – an anomaly for divisional patent applications (Mallesons Stephen Jaques)

‘Down Under’ by Men At Work – derivative copyright dispute to go to Court (The IP Factor)

Two Men and a Truck beat Three Men & a Truck in trade mark dispute before the Federal Magistrates Court of Australia (Australian Trade Marks Law Blog)


Bosnia and Herzegovina

Bosnia and Herzegovina deposits instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Class 46)



Apple and Victoria School of Business Technology dispute over school’s apple logo (The Trademark Blog)

Canadian Conservatives vow to implement new copyright law (ZDNet Government)

Canadian Private Copying Collective political survey on private copying (Michael Geist)

Copyright pledge continues to grow with 30 more Liberal and NDP supporters (Michael Geist)

ITWorld Canada on C-61 and the election (Michael Geist)

League of Canadian Poets takes action against Access Copyright (copyright collecting association) alleging that they have received virtually nothing from the system (EXCESS COPYRIGHT) (EXCESS COPYRIGHT)

Search engine on copyright in the election (Michael Geist)

Teamakers on opening the CBC archives (Michael Geist)

The new copyright MPs (Michael Geist)



Patent Cooperation Treaty (PCT) approved by the Chilean Congress 8 October 2008 (Moeller IP Advisors)



Who won the IPR dispute at the World Trade Organisation between China and the US? (IP Dragon)

Bad faith trade mark registrations: Sony Ericsson v Mr Lui (IPKat)

In letter to Chinese government, Intellectual Property Owners Association (IPOA) weakens opposition to ‘international exhaustion’ (Hal Wegner)

IP laws evolving in China (Law360)



Colombia changes trade name deposit requirements (IP tango)

FINESSE, MEN’S FITNESS confusingly similar, rules Colombia Council (IP tango)



Court denies injunction request in colour trade mark dispute: Deutsche Telekom Ag v Telia Sonera Danmark A/S (International Law Office)



Substantial evidence of genuine use scuppers LUJA cancellation claim (Class 46)



Settlement reached in dispute over use of ‘Unikko’ poppy design in Dolce & Gabbana’s 2008 Spring fashion line (Class 46)



French apply for protected geographical indication (PGI) status for small spelt (Class 46)



District Court for Düsseldorf rules against Edwards Lifesciences in its patent infringement suit against CoreValve over transcatheter heart valve technology (Law360)

District Court of Dusseldorf rules Odeon Cineplex infringed patents for DVD technology held by numerous companies including Panasonic and Sony (Law360)


Hong Kong

Hong Kong is not the same as China (IP Think Tank)



Innovation Actto propel research and innovation (International Law Office)

Indian IP and innovation policy (Spicy IP)

Responses to the Mint article on alleged corruption in the Indian Patent Offices (Spicy IP) (IAM) (Spicy IP)

Tatas wins award for social innovation (Spicy IP)

USPTO ‘patent outsourcing’ notice and implications for legal process outsourcing (Spicy IP)



Irish High Court decision on confusingly similar whiskey brands: Irish Distillers Ltd v Cooley Distillery Plc (Class 46)



Association of Lebanese Industrialists seek protection of hummus as traditional Lebanese food in order to take action against Israeli companies claiming hummous as their own (The Trademark Blog) (Cairns Blog)



Revisiting protection of well-known and famous trade marks (RelatIP)



In move to clear all backlog of pending applications, Nigeria publishes two trade mark journals within a couple of months (Afro-IP)



Polish Supreme Administrative Court: WINNER not in bad faith (Class 46)



WHITE STORK cancelled in Russia for non-use (Class 46)


South Africa

Heated debate about abandonment of the Springbok, South Africa’s traditional rugby emblem (Afro-IP)

Needletime rights introduced to South Africa (Afro-IP)


United Kingdom

‘Bettys tearooms’ seeks to invalidate ‘Fat Bettys’ mark for savoury biscuits (Class 46)

Chancery Division hands down judgment in trade mark case Crocodile International Private Ltd v La Chemise Lacoste (IPKat)

David Lammy appointed higher education and intellectual property minister (Managing Intellectual Property) (IAM)

Former directors still liable for procuring trade mark infringement: Tubzee Ltd v Safron Foods Ltd, Tanvir Hussain and Mudassar Mahboob (Class 46)

Happy ending in ‘Credit Crunch’ trade mark dispute (Class 46)

V&S Vin & Spirit, proprietor of Absolut trade mark for vodka commences proceedings against Absolute Radio (IPKat) (Out-Law)


United States

US General

Intellectual Property Owners Association objects to Financial Accounting Standards Board changes (Law360)

Managing the EU-US discovery conflict (Law360)

USTR wins two parts of IP case against China at WTO but said to have lost on key point dealing with criminal enforcement of trade mark infringement (Managing Intellectual Property) (IP Menu News)


US General – Decisions

2nd Circuit clarifies ‘at issue’ attorney-client privilege waiver (Law360)

Employee may not use customer list to compete with employer: APC Filtration, Inc v Becker (Chicago IP Litigation Blog)


US Patents – Reform

Tafas v Dudas: Amicus briefs (Patently-O)

USPTO files reply brief in Tafas v Dudas (Hal Wegner) (Patent Prospector) (Patent Docs) (PLI)

Nominating Dr Paul Kaminski for PTO Director (PLI)

Presidential ‘debate’ on US patent policy (Patent Docs)

USPTO Performance Review Board members announced (Patent Docs)

Who is the PTO’s ‘Mike Kirk’?: A Bush administration post-mortem (Hal Wegner)


US Patents

America’s innovation lead looks safe, but things could change (IAM)

Bessen and Meurer comparing the mortgage bubble to the patent bubble (Techdirt)

Call for comments on Ex Parte Appeal Rule (Patent Docs)

Fulbright & Jaworski ‘2008 Litigation Trends Survey’ (Law360) (Law360) (Patent Prospector) (IAM)

Guidance on patentee’s provisional rights (Law360)

Online priority document exchange (PDX) service between USPTO and KIPO (Patent Docs)

Patent cases may be leaving the Eastern District of Texas due to transfer of In re Volkswagon (Patently-O) (Law360) (IP Law Observer)

PTO fees (Patently-O)

Rethinking the scope of prior art in obviousness cases: Cohesive Technologies (Patently-O)

Supreme Court eBayand Quanta Opinions: licensing law implications (Hal Wegner)

Supreme Court to decide split on appellate review issue: Carlsbad Technology v. HIF Bio (Law360) (Hal Wegner)

USPTO Commissioner for Patents John Doll urges patent applicants to request interviews with examiners to resolve patent prosecution problems (Managing Intellectual Property)

USPTO revision of patent fees for fiscal year 2009 (Competitive info)

Waiting for Bilski; but will business method patents ever be the same anyway? (IAM)

Why the Supreme Court has not taken patent cases this term (Hal Wegner)


US Patents – Decisions

After ten years of litigation and three appeals, claims for semiconductor wafer tracking are deemed obvious: Asyst Technologies Inc v Emtrak Inc (Patent Prospector) (IP Law Observer) (Hal Wegner)

CAFC: Shifting burden of production does not shift burden of proof: PTO deference: Technology Licensing Corp v Videotek (Patently-O) (Patent Prospector) (IP Updates) (Hal Wegner)

CAFC vacates ITC ban on importing Qualcomm chips: Kyocera v International Trade Commission (Ars Technica) (Patent Prospector) (IP Law Observer) (PLI) (Patently-O) (Law360) (IP Updates) (IP Updates) (Law360) (Law360)

CAFC: Anticipation not ‘the epitome of obviousness’; 5 year delay in issuing opinion does not warrant reassignment of case on remand: Cohesive Technologies v Waters (Patent Prospector) (IP Spotlight) (Patently-O)

CAFC: Reissued patent claim did not impermissibly broaden the scope of the original claim: Predicate Logic, Inc v Distributive Software, Inc (IP Law Observer) (Patent Prospector)

Court discusses KSR obviousness standard and indefiniteness: Baldwin Graphic Sys, Inc v Siebert, Inc (Chicago IP Litigation Blog)

Federal Circuit affirms $46 million default judgement against Bodog:1st Technology v Rational Ent.(Techdirt)

Federal Circuit agrees to hear interlocutory appeal on standing: Sky Tech v SAP (Patently-O)

Medtronic and its counsel McDermott Will & Emery ordered to pay $4.4 million in legal fees as punishment over allegedly meritless patent suit against BrainLAB (Patent Prospector)

Microsoft prevails in Massachusetts Institute of Technology colour copy patent suit (Law360)

Seyfarth Shaw wins reversal of discovery order concerning fee-payment arrangements in case alleging malpractice in prosecution of a patent infringement action (Law360)

Trade show presentations do not create jurisdiction without price terms: Compliance Software Solutions Corp v MODA Tech (Chicago IP Litigation Blog)


US Patents – Lawsuits and strategic steps

AT&T – Linksmart renews wireless patent fight against AT&T (Law360)

Biolase – Biolase, Diodem settle dispute over patent deal (Law360)

California Institute of Technology (Caltech) – Caltech sues camera giants including Panasonic, Sony Electronics and Canon for selling cameras and camcorders that allegedly infringe several Caltech patents relating to imaging technology (Law360)

Fairchild Semiconductor Corp – IP dispute between Power Integrations and Fairchild continues with Fairchild filing patent infringement suit in Delaware (Law360)

Nike – Nike sues Wal-Mart for design patent infringement relating to shoe midsole (Patent Prospector) (Law360) (PLI)

Shell Oil Co – Shell settles with Alexsam over magnetic-strip card patent (Law360)

SimpleAir – SimpleAir drops clearTXT from patent infringement suit against media companies including Yahoo over patent for mobile alerts and messaging services (Law360)

TT Technologies – TT hits Consolidated Edison with declaratory judgment lawsuit claiming Con Ed’s patents for ways to replace buried pipelines are invalid and unenforceable (Law360)


US Copyright

President signs PRO IP Bill into law (The Counterfeit Blog) (Intellectual Property Watch) (Techdirt) (Out-Law) (Counterfeit Chic) (Public Knowledge) (Ars Technica) (Law360) (<a href=" Intellectual Property Law & Policy News)

Investors recognising how PRO IP Act is bad for the entertainment industry (Techdirt)


US Copyright – Decisions

Dressing claim up as infringement of subsequent copyright registration doesn’t hide that it’s really an ownership dispute that’s time-barred: Ortiz v. Guitian Bros. Music Inc.(Property, intangible)


US Copyright – Lawsuits and strategic steps

King, Estate of Martin Luther – Love letters written by Martin Luther King to wife Coretta are subject of battle between the couple’s children Bernice and Dexter, with Dexter wanting to use letters in book to be published by Penguin (Property, intangible)

Savage, Michael – Fair Use Projects sues Michael Savage for stifling free speech of his critics (Techdirt)


US Trademarks – Decisions

Key ruling on windfall profits: WMS Gaming v WPC Gaming Productions (Law360)

Implied statutory warranty to deliver goods free from rightful claims by third parties can be breached by non- frivolous trade mark infringement claims: Pacific Sunwear of California, Inc v Olaes Enterprises, Inc (IP Law Observer)

US decision hits Canadian company with ‘Google damages’: Punch Clock Inc. V. Smart Software Development (

Short opinion on whether registrant owns the mark and quantum of use necessary to establish date of first use: Inc v Money Management International (Property, intangible)

TTAB reverses 2(a) false connection refusal of MARIA CALLAS for jewellery: In re MC MC Srl (precedential) (The TTABlog)

FASHION TOOLS merely descriptive of fashion information website, says TTAB, unconvincingly: In re Integrity News Media, Inc (non precedential) (The TTABlog)

TTAB invokes bogus telescope analogy, affirms mere descriptiveness refusal of WIKINVEST for financial website: In re Nvest, Inc (non precedential) (The TTABlog)


US Trademarks – Lawsuits and strategic steps

Patsy’s – Never-ending saga of competing ‘Patsy’s’ restaurants in New York simmers on (Property, intangible) – Michael E Hall on the continuing saga of STEELBUILDING.COM (The TTABlog)



ADR in IP contracts under threat in Venezuela (IP tango)



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