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IP Think Tank Global Week in Review – General Edition – Friday, 24 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:

CAFC again affirms invalidation of claims to ‘means’-defined elements involving a computer algorithm as indefinite: Net MoneyIN v Verisign (IP Updates) (IP Law Observer) (Patent Prospector) (PLI) (Patently-O) (Hal Wegner) (Law360)

District Court: Patent term adjustments just got longer: Wyeth v Dudas (Patent Docs) (Patently-O) (PLI) (Patent Prospector)

US Federal prosecutors look to seize control of MONGOLS trade mark from notorious motorcycle gang (Saunders + Silverstein LLP) (Counterfeit Chic) (Techdirt) (Copyfight)

Commissioner Charlie McGreevy’s two recent speeches on protecting innovation in Europe (Managing Intellectual Property) (IAM) (IPR-Helpdesk)

UKIPO announces collaboration with Global Prosecutors’ E-crime Network (Out-Law) (IPKat) (IPR-Helpdesk)



Global – General

Cows, pace and IP strategy (IP Think Tank)

What can your competitors expect from you? (IP Think Tank)

A defining time for the IP market (IAM)

Busting an intellectual capital myth (Pat Sullivan’s Blog)

Governments, financial stakeholders meet on policy for IP as collateral (Intellectual Property Watch) (IP finance)

How much should you spend on start-up marketing? (Intellectual Property Marketing Advisor)

How reasonable is your royalty? (Philip Brooks’ Patent Infringement Updates)

Intellectual Property Colloquium – IP podcast site (Lessig Blog)

IP finance, market disruption and hedging (IP finance)

Reward or punishment? Nice IP litigators finish first (The IP ADR Blog)

RTI International using software program to prioritise IP portfolio (Intellectual Property Marketing Advisor)

WIPO DG Francis Gurry speaks on his plans (Intellectual Property Watch)

WIPO expands its distance learning program (WIPO)

WTO establishes task force to assess impact of financial crisis on the WTO and implications for multilateral trading system (Spicy IP)


Global – Patents

Aspator (patent downloading tool) updated (The Invent Blog)

SumoBrain now free (Patent Librarian’s Notebook)

You paid WHAT for that patent?! or How the selection of patent law services at many companies is like the Vice Presidential wardrobe selection process (IP Asset Maximizer Blog)

Taking a disciplined approach to protecting innovation allows you to reduce legal spends while still obtaining necessary patent rights (IP Asset Maximizer Blog)

Islamic strategy: knowledge access, local innovation and IP protection (Intellectual Property Watch)

New text for Committee on Traditional Knowledge, Folklore and Genetic Resources (Intellectual Property Watch)

No agreement for WIPO Committee on Traditional Knowledge and Folklore (Intellectual Property Watch)

IGC consultations to continue on future work program (WIPO)

Indigenous boycott at WIPO (TK Community)

Indigenous people seek recognition at WIPO meeting on their rights (Intellectual Property Watch)

WIPO 13th meeting of Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) (IPR-Helpdesk)

WIPO poised to move to talks on potential traditional knowledge ‘treaty’ (Intellectual Property Watch)

Zimbabwe delegation cry foul as 13th session of WIPO IGC comes to close (TK Community)


Global – Copyright

World Customs Organisation publications copyright policy questioned (Intellectual Property Watch)



Penja peppercorn, Oku honey valorised (Afro-IP)



Argentine Intellectual Property Office (INPI) moves to cut patent application backlog (IP tango)

Patent Office issues new Resolutions 178/08 and 213/08 (International Law Office)



Australian government to introduce resale royalty right for visual art ( (Michael Geist)

High Court guidance on contributory infringement by product suppliers: Northern Territory v Collins (Mallesons Stephen Jaques)

Information technology in Federal litigation – a review (IPRoo)



Bank brands going bust? (Canadian Trademark Blog)

Goverment should shuffle ministries and ministers (Michael Geist)

On poetic justice and subsidies (EXCESS COPYRIGHT)

Post-election C-61 coverage (Michael Geist)

‘Running Rings Around Trade-marks The Olympic and Paralympic Marks Act: Issues for Artists’ workshop to open dialogue between artists and VANOC (Canadian Trademark Blog)



How do the People’s Republic of China and Hong Kong relate to each other regarding IPRs (IP Dragon)

China salutes success of bank’s IP-backed loans scheme (IAM)

How to globally (and in China) protect your trade mark (China Law Blog)



Commissioner Charlie McGreevy’s two recent speeches on protecting innovation in Europe (Managing Intellectual Property) (IAM) (IPR-Helpdesk)

More geographical indications registered – Spanish Cebreiro cheese, Czech Ceské pivo beer (Class 46)



Hairy fruit changes nationality yet again: the French apply for PGI status for KIWI DE L’ADOUR (Class 46)

The many faces of the ‘marque France’ (Class 46)



DPMA (German Patent and Trade Mark Office) offers English version of its website (Class 46)



Call for tech transfer for a nuclear Ghana (Afro-IP)



AXA and Αχαΐα won’t be confused, says Greek Committee (Class 46)



Creative Commons Guatemala: ‘free to choose, to create, to innovate, to learn, to imagine’ (Creative Commons)


Hong Kong

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

Hong Kong promotes education, creativity with Creative Commons’ 50th launch event (Creative Commons)



Egyptian Goddess v. Swisa: implications for India (Spicy IP)

Centre for Science and Environment accused of copyright infringement by Mint’s editor (Spicy IP)

Delhi High Court dicta on fair dealing increases woes of news channels: ESPN Stars Sports v. Global Broadcast News Ltd & Ors (Spicy IP)

Foraying into non-traditional identity: non-traditional trade mark registrations (International Law Office)

India’s first ‘doctrine of equivalents’ case: Ravi Kamal Bali v Kala Tech (Spicy IP)

Response to the Mint article on alleged corruption in the Indian Patent Offices (Patent Circle)

Transparency in the court: recording oral proceedings – the way forward? (Spicy IP)



JPO ‘super accelerated examination’ allows patent in seventeen days (IP Updates)



Salvatore Ferragamo wins key judgment from Korea’s Supreme Court in latest series of rulings in favour of trade mark owners (Managing Intellectual Property)



Comparative advertising: Unilever hits the road against Albert Hijn? (Class 46)


New Zealand

Two for one in the House: Treaties and Anti-Counterfeiting Bill (International Law Office)


South Africa

‘Softlifting’ adds to South African piracy woes (Afro-IP)



‘Theory of consumer error’ rejected in criminal trade mark proceedings in Spain (Class 46)



Swiss Federal Institute of Intellectual Property (IGE) reports progress in quest for improving legal protection for ‘Made in Switzerland’ designations and Swiss Cross (Class 46)


United Kingdom

Change in UK relative grounds practice: one year on (Class 46)

Court finds copyright infringement, database right infringement and misuse of confidential information by company director and others: Magical Marking Ltd and Andrew Phillis v Holly & Ors (IPKat)

Discussion of Michael Burdon’s paper ‘An Experiment to Test the Attraction of Simplified Patent Litigation in England’ (IPKat)

New Tribunal Practice Note (4/2008) concerning ‘filing documents by facsimile in Inter Partes proceedings’ (Class 46)

UK warned by the Commission on freedom of movement of services regarding IP (Class 46)

UKIPO announces collaboration with Global Prosecutors’ E-crime Network (Out-Law) (IPKat) (IPR-Helpdesk)

UKIPO: ‘Trade marks, have your say and get paid for it’ (Class 46)


United States

US General

Managing punitive damages risks in licensing transactions: City of Hope v Genentech (International Law Office)

Plausibility – Is it the new pleading standard in Federal courts? (IP Law Blog)

Presidential politics and IP (IP Law Blog)


US General – Decisions

District court tosses trade secret misappropriation suit filed by 24 Hour Fitness USA against Bally Total Fitness Holding and its CEO (Law360)

State appeals court acquits Frank Herbert McClain who was sentences to seven years in prison for allegedly stealing trade secrets from former employer Didrickson Associates (Law360)


US General – Lawsuits and strategic steps

Upaid files amended complaint against Satyam (Spicy IP)


US Patents – Reform

Ex-AIPLA chief slams high-tech companies over US patent reform (IAM)

Deferred examination – fixing the obvious problem (Hal Wegner)

GSK Vice-President Sherry M Knowles supports deferred examination as one of the elements for patent reform (Hal Wegner)


US Patents

KSR‘s unintended consequences: more inequitable conduct claims in patent litigation? (Philip Brooks’ Patent Infringement Updates) (Patent Baristas)

A lack of definiteness (Just an Examiner)

Apple aims to limit all users of Nike + iPod kit to wearing sensors only in authorized Nike trainers (IPKat)

Business method patents: is a perfect storm coming? (Law360)

Design patents are now stronger: Egyptian Goddess v Swisa (IP Law Blog)

Effect of Quantaon patent damages (Law360)

Ethics case survey: what is protected by attorney-client privilege in patent cases? (Post Grant Opposition)

Expanding number of ways to invalidate patents leads to tough decisions about the scope of IP (Law360)

Flash of Genius – a movie tells the story of the landmark patent case of inventor Robert Kearns (Spicy IP)

Georgia Tech, TAG partner to educate inventors about commercialization (Intellectual Property Marketing Advisor)

How did we get to Bilskiand what can we do about it? (Patent Baristas)

No Bilskiearthquake, predicts senior industry figure (IAM)

Joint infringement? Try to get claim where all steps performed by one infringer (Patent Baristas)

Online priority document exchange (PDX) service between USPTO and KIPO (Patent Docs) (Daily Dose of IP)

Patent lawsuits hold steady (Technological Innovation and Intellectual Property)

Proper scope of International Trade Commission (ITC) remedies after Qualcomm (Law360)

SparkIP adds 2,000 technologies, shifts to free listings (Intellectual Property Marketing Advisor)

The trade secret value of early patent filing (Patently-O)

Use of Special Master for patent claim construction (Philip Brooks’ Patent Infringement Updates)

USPTO rule change could raise costs for appellants (Law360)

What are my ethical obligations to the Patent Office with respect to notifying the Office that there is the unauthorized practice of law? (PLI)

What’s your opinion on opinions? (Intellectual Property Directions)


US Patents – Decisions

CAFC again affirms invalidation of claims to ‘means’-defined elements involving a computer algorithm as indefinite: Net MoneyIN v Verisign (IP Updates) (IP Law Observer) (Patent Prospector) (PLI) (Patently-O) (Hal Wegner) (Law360)

CAFC orders new damages trial in Polaris patent case (Law360)

CAFC rules that ITC cannot extend limited exclusion order barring import of Qualcomm chips found to infringe Broadcom’s patent to downsteam products: Kyocera Wireless Corp v International Trade Commission (Managing Intellectual Property)

CAFC: Intent to deceive inferred: Praxair v ATMI (IP Updates)

CAFC: Judge improperly cut patentee’s million dollar jury verdict without offering new trial: Minks v Polaris (Patently-O) (Patent Prospector)

Department of Justice clears joint licensing group for RFID patents (Law360)

District Court judge rules 2000 injunction preventing Medtronic from selling infringing rapid-exchange catheter will end as of 29 October, the patent’s original expiration date (Law360)

District Court jury finds in favour of ArvinMeritor in auto parts patent case brought by Eaton (Law360)

District Court: K2 wins partial summary judgment in wide short ski case: Paul N Nelson v K2 Inc and K-2 Corproation (Washington State Patent Law Blog)

District Court: Patent term adjustments just got longer: Wyeth v Dudas (Patent Docs) (Patently-O) (PLI) (Patent Prospector)

Federal judge allows Kelley Drye & Warren to continue defending Tricom Card Technologies in patent suit, rejecting Intelli-Check’s argument that the firm has a conflict of interest (Law360)

Federal judge throws out antitrust suit over RFID patent ruling that Datamars’ claim against AVID Indentification Systems’ had already be decided (Law360)

BPAI: Under §102(e), published applications considered prior art as of provisional filing date: Ex parte Yamaguchi (IP Updates) (Patently-O)


US Patents – Lawsuits and strategic steps

Aerocrine – Aerocrine sues Apieron over asthma monitor (Law360)

Bally Technologies – Bally antitrust claims to proceed in patent battle with International Game Technology (Law360)

Boston Scientific – Cordis sues Boston Scientific over new taxus stent (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 (The IP Factor)

CNET Networks – Etilize’ antitrust allegations axed in patent spat with CNET (Law360)

Control Systemation – Control Systemation settles in employee patent theft suit (Law360)

Daewoo Electronics Corp – Daewoo seeks new trial after jury found it had wilfully infringed Funai’s patents covering video cassette recorder technology (Law360)

DataTern – DataTern reaches settlement with Visa, one of numerous defendants in lawsuit over web design patents (Law360)

Fairchild Semiconductor Corp – Fairchild, Alpha & Omega Semiconductor resolve patent dispute with cross licensing agreements (Law360)

Freedom Wireless – Magistrate judge issues order defining claim terms in Freedom’s infringement suit against Alltel Wireless, Cingular Wireless and other cell phone providers (Law360)

Infineon Technologies – Third Dimension, Infineon settle semiconductor patent suit (Law360)

Kimberly-Clark Worldwide – Arquest appeals finding that Kimberly-Clark Wordwide is not subject to personal jurisdiction in New York (PATracer)

Klausner Technologies – PhoneFusion dropped from Klausner patent suit over visual voice-messaging technology (Law360)

Mass Engineered – Third-party defendant Global Marketing Partners appeals from the order and decision holding that it must indemnify defendant CDW from the infringement claims asserted by Mass Engineered: Mass Engineered v Ergotron (PATracer)

Nike: Nike sues Walmart for design patent infringement relating to shoe midsole (Patently-O) (Chicago IP Litigation Blog)

Ocean Spray – Ocean Spray sues Decas Cranberry Products over Craisin technology (Law360)

Orthopedic Development Corp – ODC, maker of TruFUSE spinal surgery system accuses NuTech of infringing patent and trade dress for drill guide (Law360) (Philip Brooks’ Patent Infringement Updates)

PC Guardian Anti-Theft Products – PC Guardian seeks summary judgment in patent dispute over lock technology for laptops with ACCO Brands (Law360)

SanDisk – Antitrust counterclaim survives in flash memory patent suit brought by SanDisk against STMicroelectronics (Law360)

Sony Electronics – Trans Video Electronics files patent infringement lawsuit against Sony over device that links online videos and other data to compatible television sets (Law360)

St Clair Intellectual Property Consultants – St Clair digital camera patent suits against nearly three dozen electronics companies to move forward (Law360)

Synaptics – Synaptics, Elantech agree to settle infringement lawsuit over computer touch-pad technology (Law360)

Target Corp – Target settles digital video patent suit brought by major electronics firms over use of patented components in the retailer’s in-house brand televisions and DVD products (Law360)

Technology Properties – Technology Properties loses bid to throw out, transfer or stay three separate declaratory judgment actions filed against it by three consumer electronics companies over a group of patents covering different aspects of high-speed computer microprocessors (Law360)

Tesseron – Tesseron asks court to drop patent suit against Konica (Law360)

Traffic Information – Traffic Information accuses wireless communication companies, including Motorola and Samsung, of infringing their traffic-detection system patents (Law360)

Tyco Healthcase Group – Tyco loses JMOL bid in needle shield patent suit against Becton Dickinson (Law360)


US Copyright

Bush signs PRO IP Bill: many elements of entertainment industry’s wish list went unfulfilled (EFF)

President signs PRO IP Bill into law; White House gets ‘Copyright Czar’ (Managing Intellectual Property)


US Copyright – Decisions

Judge reminds that true stories aren’t copyrightable: Deborah Novak et al v Warner Bros Pictures et al (Techdirt)

Lesson on how not to assign ownership of copyright and register it: Tacori Enterprises v. Rego Manufacturing (Property, intangible)


US Copyright – Lawsuits and strategic steps

Maponics – Maponics files copyright infringement suit against mathematician Bernt Wahl over maps designating actual neighbourhoods rather than just zip-code based neighbourhoods (Techdirt)

Redbox Automated Retail – Universal Studios Home Entertainment hit with lawsuit accusing them of blocking competition and misusing their copyrights by requiring an automated DVD kiosk operator to sign a revenue-sharing agreement (Law360)

X Factor – Simon Cowell of X Factor sends cease and desist letter to eXtra Factor, a satire about the singing contest reality show (The IP Factor)


US Trademarks

Importance of protecting not only brand names but nontraditional trademarks (Law360)

NASCAR sponsorships at peril (IP finance)


US Trademarks – Decisions

District Court finds plaintiff’s claim for trademark infringement was colorable, not exceptional: CG Roxane LLC v. Fiji Water Co. LLC (Seattle Trademark Lawyer)

District Court rules in favour of World Wrestling Entertainment in trade mark infringement and unfair competition suit against Dale R Gagner (Law360)

Trade mark plaintiff must specifically plead confusion: Aller-Caire Inc v Am. Textile Co (Chicago IP Litigation Blog)

TTAB precedential decision: Absent TTAB order, no sanction for failure to provide initial disclosures: Kairos Institute of Sound Healing, LLC v Doolittle Gardens, LLC (The TTABlog)

TTAB precedential decision: TTAB sustains 2(e)(3) opposition to HAVANA CLUB for cigars made from Cuban seed tobacco: Corporacion Habanos SA v Anncas, Inc (The TTABlog)

GOTHAM BATMEN strike out: TTAB finds fraud, sustains opposition on summary judgment: DC Comics v Gotham City Networking, Inc (non precedential) (The TTABlog)

ZIP AND STEAM merely descriptive of cooking pouches, says TTAB: In re SteamFast Europe Limited (non precedential) (The TTABlog)


US Trademarks – Lawsuits and strategic steps

Adidas – Adidas files lawsuit accusing several California footwear companies of infringing its three-stripe mark (Law360)

Bank of America – Federal judge decides against consolidating Bank of America’s declaratory judgment suit over ‘Keep the Change’ program with Every Penny Count’s patent infringement suit targeting the program (Law360)

Friendly Family Productions – ‘Little House on the Prairie’ producer FFP sues tiny Kansas museum over use of the series name on merchandise (The IP Factor)

GMAC Mortgage – GMAC sues terminated employees for trade mark infringement (The Trademark Blog)

Hershey Company – Hershey sues Art Van Furniture alleging trade dress infringement (Law360)

Louis Vuitton Malletier – Coco USA and other clothing companies apeal decision to award Louis Vuitton $3M damages in trade mark infringement suit (Law360)

Mongols motorcycle gang – Federal prosecutors look to seize control of MONGOLS trade mark from notorious motorcycle gang (Saunders + Silverstein LLP) (Counterfeit Chic) (Techdirt) (Copyfight)


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