IP Think Tank Global Week in Review – General Edition – Friday, 31 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 greatly limits software and business method patents: In re Bilksi (The IP ADR Blog) (Techdirt) (Managing Intellectual Property) (Hal Wegner) (Law360) (IAM) (Peter Zura’s 271 Patent Blog) (PLI) (PLI) (Patently-O) (Patent Prospector) (Anticipate This!) (Ars Technica)

CAFC: Co-inventors contribution must be ‘more than the exercise of ordinary skill’; NTP awarded attorneys’ fees: Oren Tavory v NTP (Patently-O) (Law360) (Law360) (Property, intangible) (Patent Prospector) (Property, intangible)

PTO announces no IDS or Markush Rules during Bush Administration (Patent Prospector) (Hal Wegner) (Patently-O) (Patent Docs)



Global – General

Exploding the intangible asset market cap myth (IP Think Tank)

In-depth interview with WIPO Director General Francis Gurry (Intellectual Property Watch)

Is the ‘echo chamber’ key to marketing success in tough times? (Intellectual Property Marketing Advisor) (IP finance)

New book lifts lid on IP value creation ‘From Assets to Profits: Competing for IP Value and Return’ (IAM)

Open letter to World Customs Organisation concerning increased enforcement of intellectual property (IP Justice)

Panel: WTO cross-retaliation could bring compliance but political pressure high (Intellectual Property Watch)

Push continues for TRIPS biodiversity amendment, geographical indications extension (Intellectual Property Watch)

TRIPS may evolve to keep pace with modern IP concerns (Intellectual Property Watch)

WIPO pitches proposed programme of strategic realignment (Intellectual Property Watch)

Global – Trade Marks / Brands

New Arab group aims at protecting local products with geographical origins (Intellectual Property Watch)

WIPO to mark 50th anniversary of international geographical indications registration system (WIPO)

Global – Patents

50 most innovative companies for 2008, according to BusinessWeek and Boston Consulting Group (Securing Innovation)

Eco-patent commons: more green patents gratis from Bosch, DuPont and Xerox (Green Patent Blog)

I just want someone to buy my idea from me… (The Invent Blog)

Is the troll the lone inventors last hope? (Innovationpartners)

Patent stacking – the truth at last… (IP finance)

What a concept: sharing new inventions with the world is good for the inventor (Techdirt)

Global – Copyright

On verifying the Commons (Creative Commons)


High Court rules on contributory patent infringement: Northern Territory v V Collins & Anor (Managing Intellectual Property)

Valuating IP: reputation in trade marks and section 60 evidence?: Nylon Films Pty Ltd v Nylon Studios Pty Limited (IPRoo)



Bob’s and Doggis fast food operations in cross-border (Brazil-Chile) franchise deal (IP tango)



Copyright lobby groups gear up for further reforms (Michael Geist)

SOCAN’s ‘Tariff 22’ – the latest chapter (EXCESS COPYRIGHT)

Tony Clement – new Minister of Industry (Michael Geist) (EXCESS COPYRIGHT)



China’s National Copyright Administration versus Microsoft: pot calling kettle black? (IP Dragon)

Amendments to the PRC patent law (IP Frontline)



Ethiopia streamlines trade mark formalities (Afro-IP)


Blind readers seek guarantee of access under EU copyright law (Intellectual Property Watch)

CFI dismisses Philip Morris’ appeal against OHIM’s persistent refusal to register the shape of its cigarette packet as a community trade mark (IPKat)

CFI rules PAST PERFECT not descriptive for musical recordings: TIM The International Music Company AG, TTV Tonträger-Vertrieb-2000 GmbH v OHIM, Past Perfect Ltd (Class 46)

Comparative advertising and trade mark protection: O2 Holdings Limited and O2 (UK) Limited v Hutchinson 3G UK Limited (IP Frontline)

Decision of Administrative Council of 21 October 2008 concerning the reduction of fees for international search and international preliminary examination carried out on international applications in favour of nationals of certain states (CA/D 7/08) (EPO)

Decision of Administrative Council of 22 October 2008 closing Research Fund of the European Patent Organisation (CA/D 23/08) (EPO)

ECJ rules on whether Manpower CTM descriptive: Powerserve Personalservice v Office for Harmonisation in the Internal Market – Manpower Inc (Class 46)

MARQUES Position Paper on Proposed Changes to Locarno Classification System for Industrial Designs (IPKat)

More protected geographical indication (PGI) and traditional specialities guaranteed (TSG) applications: PIEREKACZEWNIK for type of Polish pastry, ABBACCHIO ROMANO for lambs raised an slaughtered in Lazio (Italy) (Class 46)

Office for Harmonisation in the Internal Market (OHIM) ‘Quality of Decisions Service Standards 2008’ (IPKat)

PDO amendment for Chasselas de Moissac (Class 46)

‘Radicchio di Chioggia’ cabbage gains protected geographical indication status (Class 46)



Bundestag (Parliament) to consider legislative proposal to simplify and modernize patent revocation proceedings (IPKat)

Trade fair injunctions in Germany (IP Frontline)

Hong Kong

Creative Commons Hong Kong launch (IP Dragon)


Supreme Court finds Lego bricks distinctive and non-functional (International Law Office)


Innovation Act: trade secrets and confidentiality (IP Frontline)

Innovation Bill 2008 and trade secrets (Part I – Spicy IP) (Part II – Spicy IP)

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

Allegations of corruption at the IPO – the AWS report on IP in India: the good, the bad and the ugly (Spicy IP)

Critical review of New York Times article on Bayh Dole Act (Spicy IP)

Indian Bayh Dole Bill: secret ‘public’ discussions by FICCI? (Spicy IP)

News of GI trends from Andhra Pradesh and Jharkhand (Spicy IP)

Patent protection for marriage portal? (Spicy IP)

Section 3(d) Patents Actand utility model (Spicy IP)

The polymorphism of trade mark dilution in India (Spicy IP)



IP Office of Montenegro functional since 28 May 2008 – term for validation is 28 November 2008 (RelatIP)



Nigeria textile industry under threat from China fakes (Afro-IP)



Use on foreign-language website fails to save Munch mark (Class 46)



Polish minister of sport’s plans to sell Euro 2012 stadiums names (Class 46)

Polish Patent Office back to the future in dispute over TORNADO (Class 46)

Zywiec Group obtains CODE mark for beer after Albert J. Weber Company neglects to defend its mark (Class 46)



Balkan anti-counterfeiting – Serbia and Macedonia customs authorities border closures (RelatIP)


South Africa

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


Geographic indications v trade marks: Supreme Court confirms refusal of Spanish trade mark application for VINO DE LA TIERRA ARRIBES DEL DUERO (translation: wine from the land of Aribbes del Duero) (Class 46)

Prison sentence for sale of counterfeit Nokia accessories (International Law Office)


What a difference a dot makes – battle over WE ROCK trade mark (International Law Office)


Growth of IP industry and regional opportunities (IP Frontline)



Ugandan parliament passes Trade Secrets Bill into law (Afro-IP)

United Kingdom

Bad reproduction of logo = bad defence, rules Court of Appeal: R v Boulter (Out-Law) (IPKat)

Court of Appeal goes back to basics in patent case Thorn Security Ltd v Siemens Schweiz AG (IPKat)

Goodwill impairment – a review of current reporting practice (IP finance)

High Court finds IT contractor broke copyright and database laws in data raid on playground firm: Magical Marking & Anor v Sean Patrick Holly & Ors (Out-Law)

Patents County Court finds Qual-Chem’s killing slag patent valid and infringed: Corus UK Ltd v Qual- Chem Ltd (IPKat) (Hal Wegner)

Patents Court interprets ‘generally elliptical cone shape’: Ancon Ltd v ACS Stainless Steel Fixings Ltd (Hal Wegner) (IPKat)

Reporting back on information received concerning ‘non-asserts’ (IPKat)

Roya Ghafele ‘Perceptions of IP’ (Spicy IP)

UKIPO: New Tribunal Practice Notice (5/2008) (Class 46)

Who is David Lammy? (IPKat)

United States

US General

2005 civil damages awards in state courts rarely broke $1M according to report released by US Justice Department (Law360)

Changes to expert witness rules draws critisism (Law360)

Collaborative law and intellectual property cases (The IP ADR Blog)

Democrats victory could mean a new focus on civil suits (Law360)

Election could drastically affect appeals court makeup (Law360)

Ethics case survey: when is attorney-client privilege waived? (Post Grant Opposition)

‘In US, expert witnesses are partisan’ article by Adam Liptak (Philip Brooks’ Patent Infringement Updates)

Seventh Circuit’s American Jury Project (Chicago IP Litigation Blog) (Chicago IP Litigation Blog)

US General – Decisions

Merrill Lunch & Co brokerage arm wins partial injunction against former financial advisor Sharon M Kurgis accused of stealing clients (Law360)

US General – Lawsuits and strategic steps

American Power Conversion – APC sues rival Powerware and three of its former employees, alleging trade secret misappropriation (Law360)

Avaya – CPS Energy disputes subpoena that would require it, a non-party in Avaya antitrust case, to disclose trade secrets (Law360)

Bally Total Fitness Holding – Bally and its new CEO hit with third lawsuit by 24 Hour Fitness USA accusing them of trade secret misappropration (Law360)

Wachovia – Wachovia sues former investment advisors who went to Bank of America of trying to steal clients and sharing trade secrets with their new employer (Law360)

US Patents – Reform

Law professors back USPTO in Tafas v Dudas (Patent Docs)

McCain v Obama: Patent outlook under their administrations (Hal Wegner)

PTO announces no IDS or Markush Rules during Bush Administration (Patent Prospector) (Hal Wegner) (Patently-O) (Patent Docs)

Senior US patent figures get together to offer new presidential administration advice (IAM)

US Patents

AIPLA speakers stress importance of stable patents (Managing Intellectual Property)

CAFC Judge Richard Linn tells practitioners ‘patentees continue to suffer needlessly from self-inflicted wounds’ (Managing Intellectual Property)

CAFC not pro-patent, litigation system works very well, says Chief Justice Michel (IAM)

Consortium calls for creation of American innovation zones (Technology Transfer Tactics)

Counting the true cost of a nuisance settlement (Law360)

USPTO recently added Danish PTO to Patent Prosecution Highway program (Daily Dose of IP) (Patent Docs)

Patent re-exams are growing as key defence tactic (Law360)

Reasonable billing rates (Patently-O)

US: IRS taking closer look at tech transfer offices’ activities (Patent Baristas) (California Biotech Law Blog)

PTO administrative errors don’t count: Aristocrat Technologies Australia v International Game Technologies (Intellectual Property Directions)

Aristocrat: collateral review of PTO process (IP Frontline)

Declaratory judgment jurisprudence after Medimmune (IP Frontline) (Patent Docs)

Design patents ‘point of novelty’ test jettisoned: Egyptian Goddess, Inc et al v Swisa, Inc et al (IP Frontline)

Hal Wegner’s paper ‘The Lupin Challenge to a Unified Federal Circuit’ (Hal Wegner)

In Re Swanson: Take another bite of the apple (Law360)

In Re Volkswagon: Patent filing in Eastern District of Texas (Patent Prospector) (Law360)

Quanta v LGscope of patent exhaustion doctrine (IP Frontline)

US Patents – Decisions

CAFC affirms lower court decision granting LG’s bid for summary judgment that it did not infringe Whirlpool’s washing machine patents (Law360)

CAFC greatly limits software and business method patents: In re Bilksi (The IP ADR Blog) (Techdirt) (Managing Intellectual Property) (Hal Wegner) (Law360) (IAM) (Peter Zura’s 271 Patent Blog) (PLI) (PLI) (Patently-O) (Patent Prospector) (Anticipate This!) (Ars Technica)

CAFC publishes frivolous appeal sanction: Systems Division, Inc v Teknek, LLC (Hal Wegner)

CAFC upholds trial court’s rejection of Marvell Semiconductor’s bid to disqualify CSIRO’s lawyers in patent suit over wireless local area network technology (Law360)

CAFC: Co-inventors contribution must be ‘more than the exercise of ordinary skill’; NTP awarded attorneys’ fees: Oren Tavory v NTP (Patently-O) (Law360) (Law360) (Property, intangible) (Patent Prospector) (Property, intangible)

Can a non-practising entity be a Lanham Actcompetitor?: Foboha GMBH v Gram Technology, Inc (Rebecca Tushnet’s 43(B)log)

District Court judge holds patents unenforceable due to inequitable conduct: New Medium LLC v Barco NV (Hal Wegner) (Patently-O) (Chicago IP Litigation Blog)

Federal judge orders Broadcom to return $11M in patent royalties it received from Qualcomm for use of patent that was recently declared invalid (Law360)

Federal judge orders Tyco Healthcare Group to pay Becton Dickinson & Co $58.4 million in damages and interest and to stop selling infringing needle safety shields (Law360)

Judge finds one of the patents asserted by chip maker Agere Systems in suit against Sony Corp was anticipated by earlier patent and is invalid (Law360)

Qualcomm – Gabriel Technologies Corp seeks $1 billion in damages against Qualcomm in suit accusing technology giant of illegally taking credit for company’s GPS technology (Law360)

Texas jury awards Ariba $4.9M after finding Emptoris infringed electronic auction technology patents (Law360)


US Patents – Lawsuits and strategic steps

Acceleron – Acceleron sues computer makers including IBM and Hewlett-Packard over patented technology allowing computer blade servers to operate with little or no downtime (Law360)

ADC Technology – ADC files lawsuit against Microsoft, Nintendo and Sony alleging infringement of five patents related to video game communication systems (Law360)

AFL Telecommunications – AFL Telecommunications sues ADC Telecommunications for infringing patents related to fibre-optic cables (Law360)

Atmel Corp – Atmel launches counterclaims for declaratory judgment in patent suit brought by OPTi for alleged infringement of two patents for an interface system (Law360)

Bally Technologies – Bally, International Game Technology antitrust trial stayed pending patent appeal (Law360)

Baxter International – Court stays for Federal Circuit appeal, not for reexams in dispute over hemodialysis patent: Baxter International v Fresenius Med. Car Holdings (Chicago IP Litigation Blog)

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

CDW – Federal court dismisses claims of third-party CDW against three third-party defendants in patent case over electronic display screens (Law360)

Clear With Computers – Uniden, Kohler Co, and Dillard’s latest to settle with Clear With Computers in patent suit accusing numerous retailers of of infringing online sales method patent (Law360)

Disc Link Corp – Acacia unit Disc Link enters into licensing deal with Environmental Systems Research settling hyperlink patent suit (Law360)

Disney – Aaron D Clark, inventor of the talking poster, files patent infringement suit against Disney over talking Hannah Montana poster (Patent Prospector)

Global Patent Holdings – Plaintiff Global appeals from decision of Judge K Marra dismissing patent case against Panther BRHC for failure to state a claim (PATracer)

Koninklijke Philips Electronics – Philips asserts ‘Liquid Hues’ and ‘Luminaire’ LED patents against Lighting Science (Green Patent Blog)

Kraft Foods – Kraft and Keurig settle patent claims over disposable single-serve filter cartridge for hot drinks (Law360) (Patent Prospector)

Lectra – Lectra launches lawsuit against Eastman Machine Co and affiliate, alleging infringement of fabric-cutting system patent (Law360)

Logisys Computers – Inventors sue Logisys over glowing keyboards (Law360)

Mosaid Technologies – Mosaid and Powerchip enter into licensing deal resolving patent litigation over memory chip technology (Law360)

NMT Medical – NMT sues WL Gore & Associates alleging infringement of heart implant device patent (Law360)

QPSX Devlopments 5 – QPSX, UTStarcom settle digital network patent suit (Law360)

Randi Black – Plaintiff, Randi Black, appeals finding of NuBra patent invalidity due to obviousness: Randi Black v Ce Soir Lingerie (PATracer)

St Jude – St Jude sues Access Closure alleging its vascular closure device infringes several St Jude patents (Law360)

Verizon – Verizon, Klausner settle patent fight over voicemail (Law360)

VNUS Medical Technologies – VNUS and bankrupt Diomed settle patent dispute over vein laser treatments (Law360)

Williams, Linda Grant – New York attorney, Linda Williams, alleges Citigroup used dominant market position for underwriting airlines special facility bonds to block use of new method she invented for financing airline terminal contruction and renovation projects (Law360)

US Copyright

Collaboration agreements for creatives (The IP ADR Blog)

Impact of the PRO IP Act on copyright law (Daily Dose of IP)

US Copyright – Decisions

District court judge rules Duckor Spradling Metzger may drop representation of Albert Hershey in copyright dispute (Law360)

Federal judge denies two bids by KB Home to overturn jury verdict in favour of Antares Homes in copyright infringement suit over architectural floor plans (Law360)

Federal judge upholds $1.7 million jury verdict against Sears Roebuck & Co in copyright case brought by Lucky Break Wishbone Corp over plastic turkey bones used in Thanksgiving promotion (Law360)

Michael Dwayne Logan sentenced to 21 months in prison for camcording in movie theatre (Ars Technica) (Techdirt)

Originality in copyright: Tacori Enterprises v Rego Manufacturing (Property, intangible)

Trade dress and copyright: Tacori Enterprises v Rego Manufacturing (Property, intangible)

US Copyright – Lawsuits and strategic steps

Hoover, Tatiana Boncompagni – Author of ‘Hedge Fund Wives’ novel files copyright lawsuit against sister Natasha Boncompagni alleging she is trying to hijack authorial credit for the book; Judge pulls novel from web (Law360) (The Trademark Blog) (Law360)


US Trademarks

Pepsi rebranding? (The Trademark Blog)

Sex Rod and Victor’s Secret (The IP Factor)

Wassup with the Wassup parody (The Trademark Blog) (Techdirt)


US Trademarks – Decisions

Department of Justice bans biker MONGOLS trade mark (Property, intangible) (IPKat)

District Court enters judgment and permanent injunction against makers of Hendrix Electric vodka: Experience Hendrix et al v Electric Hendrix et al (Seattle Trademark Lawyer)

TTAB precedential decision: Petitioner’s motion to amend denied, respondent’s motion for judgment on pleadings granted: Media Online, Inc v El Clasificado, Inc (The TTABlog)

TTAB precedential decision: TTAB affirms 2(d) refusals of RSI design mark for ink jet printers: In re RSI Systems, LLC (The TTABlog)

NO BROKEN GLASS symbol fails to function as a trade mark for lighting fixtures, says TTAB: In re Halogen Lighting Products (non precedential) (The TTABlog)

TTAB affirms 2(a) refusal of COCAINE as scandalous for soft drinks: In re James T Kirby (non precedential) (The TTABlog)

TTAB: Fame of MICHELOB mark and survey evidence lead Board to sustain 2(d) opposition to MAMBO MICHELADA for beer: Anheuser-Busch, Inc v. Mambo Seafood #1, Inc (non precedential) (The TTABlog)


US Trademarks – Lawsuits and strategic steps

Cape Cod League – Cape Cod League changes name to Anglers to sidestep trademark dispute with Major League Baseball (The Trademark Blog)

Hershey Company – Hershey sues Art Van Furniture alleging trade dress infringement (The Trademark Blog)

Out of the Closet Consignment Shop – Gov Palin said that she shops at the OUT OF THE CLOSET consignment shop in Alaska; not for profit AIDS organization alleging prior registered rights in the term complains (The Trademark Blog)

Peso’s – Peso’s and Matador settle ‘restaurant wars’ trade dress case (Seattle Trademark Lawyer)

Topline – Topline and 4273371 Canada settle trade mark dispute over REPORT marks for footwear (Seattle Trademark Lawyer)



Andean Community Decision 486 on a Common Industrial Property Regime no longer applicable in Venezuela (IP tango)


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