Happy holidays

From all of us at Think IP Strategy, we wish you peace and joy this Christmas and we hope that 2013 holds much happiness and many successes for you! 

Image credit: Y0$HlMl

Guest post by Robert Cantrell

R&D planning is a misnomer given the truth that no plan survives first contact with adversity.  R&D involved experimentation, which essentially means to try something and see what happens because you don’t already know for sure.  So really you do not plan R&D much beyond setting a budget and a commercial direction on which to orient some of that experimentation.  To illustrate, one of 3Ms commercial directions is to build superior adhesives.  There will be considerable thought put into how to do this inclusive of adhesive characteristics that management would like to have and sell.  There will then be some deviation on the actual results obtained during experiments, but it will likely align with the direction of superior adhesives.  What the company wants is superior adhesives with differentiators at the point of sale that make a product better, faster, or less expensive.  How specifically R&D delivers on that is not necessarily the most important part as long as commercially valuable differentiators exist and the results generally carry the company along toward where innovation in the field will go in the future.  Differentiators at the point of sale, the innovative path, and commercial viability all work together in a product solution that enhances the customer experience on receiving given benefits, all of which are protected by a network of IP to secure the rational and emotional elements of the product solution that matter.

Image credit: B Tal

Protecting the Saleable Benefit

Guest post by Robert Cantrell

The introduction of IP to any given product solution should have, as a reason, to make the product solution somehow more saleable than it would be without the IP.  This means that the product solution should be somehow better, faster, or less expensive than the product solution would be without the IP, or, in the case of a brand, that the product solution will have an emotional appeal stronger with the brand than without it.  It is never enough, therefore, to develop IP without having in mind how it will be sold to individual customers.  You cannot know otherwise, for illustration, that IP you protected that allows a product solution to deliver some benefit faster than the previous state-of-the-art model will actually matter to an end user at the point of sale, especially if the improvement drives up the cost to the customer; or if a present improvement does not matter to most customers logically, then it can be made to matter emotionally – in the spirit of why people may want to own the latest pad, car, or camera when their current model performs well enough.

While not a black and white delineation, when improving a saleable benefit, patent, trade secret, and copyright IP will tend to focus on the logical improvements of a saleable benefit, while brand and trademark IP will tend to focus on the emotional appeal.  It is never enough to have one without the other – the IP strategy should account for how to protect the logical reasons why a product solution is better, faster, or less expensive than other options at the point of sale and also protect aspects of the product solution that make it emotionally appealing to own.  Understand the comparative advantages and disadvantages of the product solution for which your IP is a part and build your IP strategy accordingly.

Image credit: s_falkow

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


Highlights this week included:

USPTO Director Kappos to depart in January (IP Watch) (KEI) (IAM) (Inventive Step) (Patently-O)

EU patent, Patent Court could finally be approved in coming weeks (IP Watch) (EPLAW) (K/S/N/H::Law 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

A historical look at open innovation (IPKat)


Global – Trade Marks / Brands / Domain Names

The Trademark Clearinghouse and new gtlds – ICANN update (IPKat)


Global – Patents

Building fast track harmony: a proposal for a global green patent highway (Green Patent Blog)

WHO denies industry money unduly influencing noncommunicable disease fight (IP Watch)

Wellcome Trust tells WHO it opposes R&D Treaty and the de-linkage of R&D costs from drug prices (KEI)

The ‘access to medicines’ debate: throwing patients without cures under the proverbial bus (BIOtechNOW)

Soft stance on patents would cost Apple’s shareholders hundreds of billions of dollars (FOSS Patents)

Patent deals will exacerbate Android fragmentation unless Google secures global licenses (FOSS Patents)


Global – Copyright

Building an innovation-based economy with Creative Commons (Creative Commons)

WIPO Committee finishes a step closer to Treaty For Visually Impaired (IP Watch) (EFF)

Canada set to endorse the concept of a WIPO Treaty for the Blind (EXCESS COPYRIGHT)

Distance education for blind people opposed by a White House responsive to MPAA (KEI)

WIPO’s Broadcasting Treaty: still harmful, still unnecessary (Creative Commons)


Pharmaceutical Patents Review Panel issue background and issues paper (ipwars.com) (Patentology)

Red nose trade mark brings two charities, National SIDS Council of Australia and Cure Kids, to blows (IP Whiteboards)


Subsequent entry biologic litigation set to take off in Canada (IP Osgoode)

Competition for Viagra on the rise (EXCESS COPYRIGHT)

Supreme Court serves stunning reminder of patent bargain in Viagra case (Michael Geist)

Pfizer seeks amendment or re-hearing of Supreme Court of Canada’s Viagra judgment (Excess Copyright)

Rogers, Telus, Bell and Quebecor file claim against SOCAN seeking restitution of CA$ 15 million as well as special damages over ringtone tarrifs (The 1709 Blog) (Excess Copyright)

Canadian broadcasters seek overhaul of radio copyright fees post-C-11 & fair dealing decisions (Michael Geist)


Ecuador issues a compulsory license on abacavir/lamivudine on 12 November 2012 (KEI)


EU patent, Patent Court could finally be approved in coming weeks (IP Watch) (EPLAW) (K/S/N/H::Law Blog)

Yet another SPC referral to the CJEU – AstraZeneca v Comptroller General of Patents EWHC (gefitinib) (Kluwer Patent Blog)

CJEU to consider copyright implications of linking and framing: Nils Svensson, Sten Sjögren, Madelaine Sahlman, Pia Gadd v Retreiver Sverige AB (Case C-466/12). (The 1709 Blog)

Emerging practice of the European Patent Office on stem cell inventions (Patent Docs)

Does Oracle ruling breach WIPO Copyright Treaty?: Case C-128/11 Oracle v UsedSoft (The 1709 Blog)

Dogfight over Community trade marks: AG opines – Case C-561/11, Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza (Class 46) (IPKat)

When can a CPVR holder request information from a supplier?: General Court rules in Case C-56/11 Raiffeisen-Waren-Zentrale Rhein-Main eG v Saatgut-Treuhandverwaltungs GmbH (IPKat)

General Court: photos.com lacks distinctive character: Case T- 338/11 (Class 46)


Police raid 9-year-old Pirate Bay girl, confiscate Winnie The Pooh laptop (TorrentFreak) (TorrentFreak)


Germany’s highest court rules parents not responsible for their teenager’s music piracy (TorrentFreak) (The 1709 Blog)

Patent exhaustion and possible EU intervention at issue in German Samsung v. Apple SEP lawsuit (FOSS Patents)

Samsung attacking Apple’s screen-to-speech functionality with German patent (FOSS Patents)

Munich court skeptical of Nokia patent assertion against Google Talk (FOSS Patents)


Ghana opts for the WPPT (Afro-IP)


Bayer makes an attempt to nix NATCO’s CL for Nexavar (Spicy IP)

Madras High Court rules against ‘safe-harbour’ for ISPs – a victory for copyright owners (Spicy IP)

Dangers of ex-parte interim injunctions, in full display, in patent litigation between Issar Pharmaceuticals and Ind-Swift (Spicy IP)

Indian Patent Office (IPO) publishes guidelines for Indian patent applications relating to plant (herbal) compositions (IIPRD)

IPAB on Payyannur Ring geographical indication: SubhashJewellery v. Payyannur Pavithra Ring Artisans (Spicy IP)

Government of India’s brand vs. generic drugs tell of today’s conflicts and reality (Profitability Through Simplicity)


Supreme Court hands down decision concerning novelty in patent case brought by PT Mitra Chemindo Sejati (IP Komodo)


Copyright in design in Italy:a post-Flos review (The 1709 Blog)


Bogarting Court of Appeal finds infringement of Valsartan process patent: Actavis v Novartic (EPLAW)


Hardware providers sue Dutch government over private copying levy hike (The 1709 Blog)


Rwanda to run its own ccTLD (Afro-IP)


Supreme Court clarifies TRIPS applied in Spain since 25 January 1995 (Kluwer Patent Blog)

Private copying in Spain: a new look for fair compensation rules (The 1709 Blog)

United Kingdom

UK government considers broadening bolar exemption (Patent Docs)

Open Rights Group applies to defend citizens against copyright trolls in Golden Eye case (TorrentFreak)

ISPs will first determine whether public Wi-Fi providers are subject to anti-piracy code, Ofcom says (Out-Law)

Fewer than a quarter of infringers would be put off by internet access suspension threat, Ofcom report says (Out-Law)

Peers take issue with Government proposals on orphan works, collective licensing and copyright exceptions (Out-Law)

Total write-off for YouView mark: EWHC (Ch) decision in YouView TV Ltd v Total Ltd (IPKat)

EWCA: When calculating an “account of profits” it is not permissible for defendant simply to allocate a proportion of general overheads to an infringing activity, in order to reduce profits payable to rights holder: Hollister v Medik Ostomy (EPLAW) (IPKat) (IPKat)

EWPCC: Continuing an action after the patent content is resolved: Ningbo Wentai Sports Equipment Co Ltd v Wang (PatLit)

United   States

US General

BIO and ASTA announce that GEMAA is now effective (Patent Docs)

USPTO Director Kappos to depart in January (IP Watch) (KEI) (IAM) (Inventive Step) (Patently-O)

US Patents

FTC and the DoJ to host public forum on patent assertion entity activies (Ars Technica)

Congress to tackle potential AIA fixes? (Patents Post-Grant)

US patent chief to software patent critics: “Give it a rest already” – Says explosion of smartphone patent litigation is “natural and reasonable.” (Ars Technica)

“Your criticisms are completely wrong”: Stallman on software patents, 20 years in – Free software guru makes a still-unpopular plea with new urgency—just ban them (Ars Technica)

Stallman’s got company: Researcher wants nanotech patent moratorium (Ars Technica)

APJs need to clarify the pro hac vice standard (WHDA)

US Patents – Decisions

CAFC: Expansion of standing for Walker Process claims: Ritz Camera v Sandisk ) (Patently-O) (Pharma Patents) (IP Spotlight)

CAFC finds lack of sufficient structure to support means-plus-function claim language, reverses District Court: ePlus v Lawson Software (GRAY on Claims)

CAFC affirms ITC finding of no section 337 violation in Norgren v ITC (ITC 337 Law Blog)

Linking pigs and humans through the enablement doctrine – CAFC decision in Edwards Lifesciences v CoreValve (Patently-O)

CAFC: Can you wait 20-years to challenge inventorship?: In this case, yes: Pei-Herng Hor and Ruling Meng v. Ching-Wu “Paul” Chu (Patently-O)

CAFC: Transocean v. Maersk, Part II: Secondary indicia of nonobviousness outweigh prima facie case of obviousness (Patently-O)

District Court Columbia denies equitable tolling, Fifth Amendment taking in Novartis patent term adjustment case: Novartis AG v. Kappos (PharmaPatents)

SD California: Violation of RAND obligation may constitute patent misuse or unclean hands: Multimedia Patent Trust v Apple (Docket Report)

CD California: Summary judgment of noninfringement against “patent troll” who filed “hundreds of lawsuits” did not warrant award of attorneys’ fees: ArrivalStar v Meitek (Docket Report)

US Patents – Lawsuits and strategic steps

AbbVie – AbbVie, Abbott Respiratory files patent infringement complaint against Watson in response to Para IV challenge regarding Niaspan (niacin XR) (Patent Docs)

Apotex – Apotex seeks exclusivity-triggering court decision in declaratory judgment action over generic BENICAR patent (FDA Law Blog) (Patent Docs)

Apple – Apple ordered to disclose patent settlement wit HTC (Ars Technica)

Apple – Google loan patents received special treatment under Apple-HTC settlement (Ars Technica)

Astellas US – Astellas files patent infringement suit against Akorn in response to Para IV challenge concerning Adenoscan (Patent Docs)

Chicago Board Options Exchange  – Chicago options market goes nuclear, files $525 million patent suit (Ars Technica)

Ericsson – New Ericsson lawsuits against Samsung indirectly help Apple in fight against FRAND abuse (FOSS Patents)

Ferring – Ferring files separate patent infringement suits against Watson and Apotex in response to Para IV challenge concerning Lysteda (transexamic acid) (Patent Docs)

HTC – What’s HTC paying Apple for patents? Not an “outrageous” $8 per phone (Ars Technica)

HTC – Apple-HTC license agreement would terminate automatically after change of control (FOSS Patents)

Liberty Mutual – APJs refuse to consider redundant proposed grounds for rejection in covered business method petition: Liberty Mutual v Progressive Casualty Insurance (WHDA)

Life Technologies – Life Technologies sues Promega for infringing reissue patent claiming fluorescence-based nucleic acid analysis (Holman’s Biotech Blog)

Litepanels – ITC decides to review initial determination in Certain LED Photographic Lighting Devices (337-TA-804) (ITC 337 Law Blog)

Merck Sharp & Dohme – Merck files patent infringement suit against APP Pharmaceuticals in response to Para IV challenge concerning Integrilin (eptifibatide) (Patent Docs)

MicuRX – MicuRx Sues USPTO for patent term adjustment under Exelixis (Pharma Patents)

Millenium Pharmaceuticals – Millenium files patent infringement complaint against Accord Healthcare in response to Para IV challenge concerning Velcade (bortezomib) (Patent Docs)

MobileMedia Ideas – Apple will not face trial on MobileMedia claims amended in re-examination (WHDA)

Samsung – FRAND issues key to ITC review of preliminary dismissal of Samsung’s complaint against Apple (FOSS Patents)

Samsung – Samsung extends infringement claims to iPad 4, iPad mini — judge allowed this beforehand (FOSS Patents)

Samsung – ITC decides to review initial determination in Certain Electronic Devices (337-TA-794) brought by Samsung against Apple (ITC 337 Law Blog)

SAP America – A first glimpse on the scope of discovery in the new post-issuance PTO proceedings: SAP America v Versata (WHDA)

SAP America – APJs deny pro hac vice admission of litigation attorney to PTO bar: SAP America v Versata (WHDA)

US Copyright

U.S. Republican study committee releases progressive copyright document only to withdraw hours later (Michael Geist)  (TorrentFreak) (KEI) (The 1709 Blog)

U.S. copyright surveillance machine about to be switched on, promises of transparency already broken (EFF)

How ISPs will do “six strikes”: Throttled speeds, blocked sites (Ars Technica)

RIAA hammers Google with DMCA takedowns in six strikes prelude (TorrentFreak)

US Copyright – Decisions

CD California smacks down another “Avatar” copyright infringement claim: Schkeiban v. Cameron (Technology & Marketing Law Blog)

US Copyright – Lawsuits and strategic steps

reFX Software – First software maker joins bittorrent lawsuit bonanza (TorrentFreak)

Third Degree Films – Porn copyright troll sues Verizon, angry it won’t cough up user names (Ars Technica)

US Trademarks

Expert report on the value of consumer review websites and 47 USC 230 (Technology & Marketing Law Blog)

US Trade Marks – Decisions

CAFC affirms T-T-A-B’s dismissal of cancellation petitions aimed at VILLAGE PEOPLE registrations: Karen L Willis v Can’t Stop Productions (TTABlog)

TTAB affirms genericness refusal of PARTNER SERVICES for business consulting: In re ScanSource (TTABlog)

TTAB sustains mere descriptiveness opposition to WOMEN’S RUNNING for fitness website: Wet Dog Media v Rodale (TTABlog)

US Trade Marks – Lawsuits and strategic steps

AmeriGas – AmeriGas gives up its lawsuit against PissedConsumer (Technology & Marketing Law Blog)

The Oatmeal – The Oatmeal sued over trademark by “Oatmeal Studios” (Ars Technica)

Happy Thanksgiving

From all of us at Think IP Strategy, we wish those of you in the US and your families a happy and joyful Thanksgiving. Whilst we celebrate the traditional holiday by giving thanks for the years’ harvest, we also reflect on and pray for those less fortunate than ourselves, and especially those people on the East Coast still affected by hurricane Sandy.

Happy Thanksgiving

Image credit: Clearly Ambiguous

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 me.ga 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 Shaadi.com 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)

We spend a fair amount of time working with clients either in China or going in to China so I’m always interested to review books on the topic.

So it’s refreshing to see a pragmatic, insightful book on the topic with an intellectual property focus.

Lei Mei‘s –  Conducting Business in China (Oxford University Press 2012) is just such a book.  It’s easy to read and packed with practical insight from the author’s personal experience.  Insights span cultural, relationship, business and intellectual property and add up to a very useful introduction to doing business in China.

Lei Mei has also helpfully added relevant IP legislation as appendices to the book.

This one is now on my recommendations list.

Getting Personal

Guest post by Robert Cantrell

Can IP decisions always just be business – logical, factual?  Should they be? 

One of the first pieces of real world advice I received out of school when I joined the Army is the importance of positioning yourself to make decisions based on logic without undue emotional considerations.  A cascade of bad decisions could develop the moment you stepped of that course, for example, you based a decision on who to send on a mission on who you knew had a family versus who was actually best for handling that mission.

A cascade of bad decisions can also develop the moment you let other factors trump logical and factual decision-making in IP.  For example, the decision to litigate or not-litigate should be viewed from cold, hard logic considering the potential benefits, costs, and values to be gained or protected.  It should never be based on a desire to get even or on a reluctance to harm a friend – both emotionally based decisions that may or may not have logical justification.  You, after all, did not make the decision that put you at odds, and that leaves you only with the responsibility to produce the best possible outcome for yourself.

Image credit: HikingArtist.com

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


Highlights this week included:

Australian government announces review into pharmaceutical patents (IP Whiteboard) (Patentology) (The SPC Blog)

Brazilian press to Google News: pay up or leave our content alone (Ars Technica) (The 1709 Blog) (Out-Law)

French media to Google: pay us for news searches – Google tells government it would rather cut off French media sites (Ars Technica) (The 1709 Blog) (Out-Law)

EWCA upholds non-infringement finding and publicity order over Samsung Galaxy Tab: Samsung v Apple (FOSS Patents) (Ars Technica) (Maier & Maier) (Class 99) (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

Civil society urges World Trade Organization to give the poorest countries in the world more time to implement TRIPS (EFF)


Global – Trade Marks / Brands / Domain Names

ICANN consultation on post-expiration domain name recovery policy (IPKat)

Governments weigh options on new top-level domains at ICANN (IP Watch)

Honduras requests WTO Panel on Australia tobacco law (IP Watch)


Global – Patents

Improving global affordability of HIV/AIDS drugs through technology innovation (Profitability Through Simplicity)

Samsung and Teva each pause rituximab biosimilar development (Scott Beeser’s Pharma & Biotech Blog)

USPTO and EPO announce launch of cooperative patent classification system (Patent Docs)

UN: Governments to double biodiversity funding, push access/benefit-sharing (IP Watch)


Global – Copyright

WIPO members inch toward visually impaired treaty (IP Watch)

Pirate Bay ditches its servers, sets sail for the cloud (Ars Technica)



Compulsory licenses for emergency drugs for developing countries – IP Australia releases “Exposure Draft” of Intellectual Property Laws Amendment Bill 2012 (IP Whiteboard)

Government announces review into pharmaceutical patents (IP Whiteboard) (Patentology) (The SPC Blog)

Trade marks, un-parallel imports and the emerging concept of use as a trade mark – FCAFC decision in Paul’s Retail v Lonsdale Australia (ipwars.com)

Surplus stupidity puts Australia’s future at risk (Patentology)



Brazilian press to Google News: pay up or leave our content alone (Ars Technica) (The 1709 Blog) (Out-Law)



The $2 billion Big Pharma giveaway in CETA: Can the government ignore its own internal analysis? (Michael Geist)



What has been the impact of the Trademark Law on trademark litigation (China IPR)

Foreign IP litigation in China: how important is it? (China IPR)

Judicial trends in Beijing … and countercyclical trends (China IPR)



EWHC refers Swiss/Liechtenstein questions to the CJEU: AstraZeneca v Comptroller-General (gefitinib) (The SPC Blog) (EPLAW) (IPKat)

CJEU: Football Dataco v Sportradar – the transmission theory may apply… (The 1709 Blog) (IPKat)

CJEU: Elenca srl v Ministero dell’Interno – Now you CE it, now you don’t (IPKat)

The unitary patent package: Max Planck publishes 12 reasons for concern (EPLAW) (PatLit) (IPKat)

Common logo for legal online pharma traders: consultation launched (Class 46) (IPKat)

General Court dismisses action against OHIM decision finding no likelihood of confusion between MISS H (figurative) and MISS B marks for simlar or identical goods (Class 46)



Netflix caught using “pirated” subtitles in Finland (TorrentFreak)



French media to Google: pay us for news searches – Google tells government it would rather cut off French media sites (Ars Technica) (The 1709 Blog) (Out-Law)

Civil liability because of the enforcement of a preliminary injunction: the priority question on constitutionality: Laboratoires Negma v Biogaran (diacetylrhein) (Kluwer Patent Blog)



Microsoft withdraws request for German preliminary injunction against Motorola RAZR (FOSS Patents)

Validity of sublicence upon lapse of principal licence: Take Five; M2Trade (The 1709 Blog)



Mapping out the future of Indian copyright societies (Spicy IP)

The ‘Register of Owners’ for future copyright societies – will the Registrar of Copyrights get it right 16 years later? (Spicy IP)

Bata sho(o)ed out of Court – No defamation says Delhi HC (Spicy IP)



Government expropriation of patents – more drugs to combat HIV/AIDS and Hep B in Indonesia (IP Whiteboard)



Pirate Bay censored in Ireland after mysterious court order (TorrentFreak)



Circadin (melatonin) receives patent term extension in Israel after all (The IP Factor)

Israel Patent Agency publishes proposed 3rd Amendment to the Trademark Regulations (The IP Factor)

Israel and the Patent Prosecution Highway (The IP Factor)

Israel newspaper receives damages for acredited references to another (The IP Factor)



Latanoprost – Administrative Court reverses Italian Antitrust Authority’s decision that Pfizer abused its dominant position (Kluwer Patent Blog)



Japanese court rejects two of Samsung’s patent infringement claims against Apple (FOSS Patents)



Copyright registration in Malaysia (Class 99)


New Zealand

Accused student prevails in first “three strikes” copyright case (Ars Technica) (TorrentFreak)



INDECOPI signs IP cooperation agreements with China, Mexico and Chile (IP tango)



Philippines fake goods data (IP Komodo)



A new way to solve patent disputes in Asia – IPOS currently rolling out a new service as part of its offering at the Arbitration and Mediation Centre (IAM)



Supreme Court clarifies the date on which European patents should be considered effective in Spain: ROS Roca v Envac Centralsug (EPLAW)



Federal Administrative Court: SAVANNAH is for vegetation, not the town (Class 46)



Thailand and cigarette branding (IP Komodo)


United Kingdom

EWCA affirms obviousness of antibody phage display method patent in ranibizumab case between MedImmune and Novartis (Scott Beeser’s Pharma & Biotech Blog)

EWCA upholds non-infringement finding and publicity order over Samsung Galaxy Tab: Samsung v Apple (FOSS Patents) (Ars Technica) (Maier & Maier) (Class 99) (Patently-O)

EWHC (Ch): Former Sky employee was guilty of database rights infringement for supply of customer data to rival: British Sky Broadcasting & Ors v Digital Satellite & Ors (Out-Law)

SPCs and Directive 2001/83-compliant authorisations: a comment on AstraZeneca v Comptroller-General of Patents (gefitinib) (The SPC Blog)

BPI asks UK ISPs to block more major torrent sites (TorrentFreak) (Out-Law)


United States

US Patents

USPTO harmonizes professional conduct rules (Director’s Forum) (Pharma Patents) (Patents Post-Grant) (Patently-O)

USPTO reopens the first-inventor-to-file comment period (Patently-O)

Citing references at the PTO (Patently-O)

PTAB backlog: Over the hump! (Patently-O)

USPTO expands patent prosecution highway (Patent Docs)

Patent pro bono (Patently-O)


US Patents – Decisions

CAFC finds Treximet patents non-obvious and infringed: Pozen v Par Pharmaceutical (Pharma Patents)

CAFC contemplates de novo review of USPTO claim constructions: Flo Healthcare v Kappos (Patents Post-Grant) (Patently-O)

CAFC: Technology Patents LLC v T-Mobile (UK) Ltd (Patently-O)

ND California: Inventor was not diligent in reducing invention to practice by prioritizing other work ahead of patent application: Illumina v Complete Genomics (Docket Report)

SD New York: Hatch-Waxman liability may apply to entities involved in ANDA preparation: Purdue Pharma et al v Varam et al (Docket Report)

ITC issues remedies and notice of final determination finding violation in Certain Lighting Control Devices (337-TA-776) brought by Lutron (ITC 337 Law Blog)

ITC: ALJ Essex issues notice of initial determination of no violation by LG in Certain Devices For Improving Uniformity Used In A Backlight Module (337-TA-805) brought by the Industrial Technology Research Institute (ITC 337 Law Blog)

Two recent 101 cases at the PTAB: Ex parte Thomsen; Ex parte Battles (Patently-O)


US Patents – Lawsuits and strategic steps

Apple – Patent office tentatively invalidates Apple’s rubber-banding patent used in Samsung ND California trial (FOSS Patents) (Ars Technica)

Apple – ND California: Apple blasts Samsung’s post-trial “attack on the jury” as weak, unfounded (Ars Technica)

Apple – ND California: In post-trial battles with Samsung, Apple fights to keep documents sealed (Ars Technica)

Audiovisual Components – ITC: Excessive number of alleged prior art references warrants “biweekly declarations” detailing efforts to reduce number of references 337-TA-837 (Docket Report)

Compound Photonics – ALJ Rogers grants motion to terminate investigation in Certain Projectors with Controlled-Angle Optical Retarders (337-TA-815) (ITC 337 Law Blog)

Eisai R & D Management Co – Eisai R & D files for review of patent term adjustment calculation for patent entitled “Fused Aminodihydrothiazine Derviatives” (Patent Docs)

Medtronic – En banc question: Who proves (non)infringement when licensee challenges patent: Medtronic v Boston Scientific & Mirowski Family Ventures (Patently-O)

Momenta – Rehearing sought in Hatch-Waxman “safe harbor” case; plaintiffs-appellees contend that the CAFC’s panel decision expands “safe harbor” into “safe ocean”: Momenta v Amphastar (FDA Law Blog)

Monsanto – Monsanto’s attack on two Pioneer Hi-Bred patents among the post-grant challenges filed week of October 15, 2012 (WHDA)

Monsanto – Supreme Court grant certiorari in Monsanto v. Bowman (Patent Docs)

Nokia – Nokia withdraws one patent from ITC complaint, HTC wants another one referred to arbitration (FOSS Patents)

Phil-Insul – Neveada: Plaintiff’s delay in enforcing patent rights against competitor warrants stay pending reexam: Phil-Insul v Airlite Plastics (Docket Report)

Professional Drug Co – FTC moves as amicus in In re Effexor Antitrust Litigation and gets its (well-earned) comeuppance (Patent Docs)

Purdue Pharma – Purdue files patent infringement suit against Sandoz in response to Para IV challenge (Patent Docs)

Realtek Semiconductor – ITC institutes investigation (337-TA-859) regarding Certain Integrated Circuit Chips (ITC 337 Law Blog)

Samsung – ITC: U.S. Department of Justice investigating Samsung’s use of standard-essential patents against Apple (FOSS Patents)

Unwired Planet – ALJ Gildea denies joint request for initial determination of no violation, but terminates investigation based on withdrawal of complaint in Certain Devices for Mobile Data Communication (337-TA-809) (ITC 337 Law Blog)

VirnetX – ITC institutes investigation (337-TA-858) regarding Certain Devices With Secure Communications Capabilities (ITC 337 Law Blog)

Walker Digital – ALJ Gildea grants motion to terminate investigation as to LG Electronics in Certain Blu-Ray Disc Players (337-TA-824) (ITC 337 Law Blog)


US Copyright

“Six strikes” system goes live this fall, appeals to cost $35 (Ars Technica)

Six-strikes “independent expert” is RIAA’s former lobbying firm (TorrentFreak)


US Copyright – Decisions

CD California: Heirs of Superman artist can’t reclaim their copyright: DC Comics v Pacific Pictures Corp et al (Ars Technica)

CD California: Case concerning use of Einstein’s likeness dismissed without trial: Hebrew University v General Motors (The IP Factor)


US Copyright – Lawsuits and strategic steps

Garcia, Cindy Lee – Garcia v Nakoula, Google, YouTube and 200 others: Is an actor an author? (IPKat)

Goodwin, Kyle – Megaupload user seeks to unseal documents relating to data seizure (EFF) (Ars Technica)


US Trademarks

It’s not easy being green: FTC cautions marketers about “eco-friendly” brand claims (The Brand Protection Blog)


US Trade Marks – Decisions

TTAB affirms refusal to register handwheel design feature due to lack of acquired distinctiveness: In re Elesa (TTABlog)

TTAB says “hasta la vista” to GRUPO PEGASSO fraud claim: O.T.H. Enterprises v Federico Estevan Vasquez (TTABlog)

TTAB finds CURVEE, CURVEY, and CURVEEY merely descriptive and confusable with CURVY, all for clothing: In re Apparel (TTABlog)

If you know a world-class IP Strategist, now is the time to act.

IAM has begun accepting nominations for the 2013 edition of the IAM Strategy 300, the directory of the world’s leading professionals who provide services in field of development and implementation of strategies to maximise the value of client’s IP assets.

The 2013 edition of the IAM Strategy 300 will set aside listings from the previous annual edition of the publication.  All listings will be the result of fresh nominations and research.   Nominees can offer services in any area related to IP strategy.  In order to qualify for inclusion in the 2013 IAM Strategy 300 candidates must receive at least three nominations from people outside their organisation and must be found by the IAM research team to possess exceptional skill and knowledge in the field.

To submit your nomination, please email here. The closing date for the nomination process is November 15th.

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


Highlights this week included:

CAFC reverses Nexus injunction for lack of a nexus and doubts about infringement: Apple v Samsung (FOSS Patents) (Ars Technica) (Patently-O)

SD New York: Digitizing books is fair use: Authors Guild v HathiTrust (EFF) (Ars Technica)

CAFC to take on software patents… again: CLS Bank v Alice Corp (EFF) (Ars Technica)

The start of compulsory licenses in Indonesia (IP Komodo) (Pharmalot) (IAM)


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

IP strategy changing focus (IP Think Tank)

CETA negotiations continue under cloud of ACTA concerns (Michael Geist)

Civil society network issues proposals on climate change and IPRs (IP Watch)


Global – Trade Marks / Brands / Domain Names

Internet governance world meets in Toronto amid new domains controversy (Michael Geist)

When porn tycoons meet internet sultans: the triple-x saga (IP Osgoode)


Global – Patents

UN agency’s roundtable on wireless patent litigation reflects deep divisions in industry (FOSS Patents)

Panellists: Global health justice needs government commitment, new innovation models (IP Watch)

UN high-level meeting in India on biodiversity addresses access and benefit-sharing (IP Watch)


Global – Copyright

Canada-EU Trade Agreement replicates ACTA’s notorious copyright provisions (EFF)

Three-Step test in copyright negotiations (KEI)

WIPO members meet to advance treaty text on visually impaired (IP Watch)

Pirate Bay moves to the cloud, becomes raid-proof (TorrentFreak)

Artist can’t get pirated music off iTunes, Google and Microsoft stores (TorrentFreak)

File-sharers buy 30% more music than non-P2P peers (TorrentFreak)



Piping up on PAIPO (Afro-IP)



2nd tranche of Raising the Bar draft regulations (ipwars.com) (Patentology)

IP Australia proposal renders innovation patents ‘obsolete’ – IPTA (Patentology)

Access to affordable medicines or new review of pharmaceutical patents (ipwars.com)



Court of Appeal Brussels issues preliminary injunction against Eurogenics on basis of Lundbeck’s escitalopram SPC, despite invalidation in earlier proceedings (Kluwer Patent Blog)



BIO travels to Brazil to support the ecosystem of innovation (BIOtechNOW)



Court of Appeal dismisses  Gilead’s  appeal of decision that patent not eligible to be listed on Patent Register against Gilead’s tenofovir / emtricitabine / rilpivirine product, COMPLERA (Beeser)

Canada joins TPP as a second-tier negotiator: entertainment lobby approves, civil society does not (EFF)

Why it’s time for a Canadian digitization strategy based on fair dealing (Michael Geist)

Government study finds CETA drug patent reforms would cost Canadians billions (Michael Geist)

Ontario public school boards preparing to drop Access Copyright next year (Michael Geist)



How to protect your IP from China (Part 4 – China Law Blog) (Part 5 – China Law Blog)

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



Unitary patent court will be trolls’ paradise, warns GSK counsel (IAM)

Max Planck trade mark reform proposals now online (Class 46)

CJEU to rule on the meaning of inactivity: Case C-409/12 Backaldrin Österreich The Kornspitz Company (IPKat)

General Court confirms refusal of CLIMA COMFORT for “insulating materials” T-371/11 (Class 46)



Tribunal de Grande Instance de Paris: Preliminary injunction prohibits Teva Santé from marketing generic irbesartan/ hydrochlorothiazide (HCTZ): Sanofi, Sanofi Pharma Bristol Myers Squibb and Sanofi Aventis France / Teva Santé (The SPC Blog)



Microsoft tells German court it will amend Motorola lawsuit to hold Google Inc. liable (FOSS Patents)

Federal Supreme Court overrules decision of the Federal Patent Court and fully re-established the patent as granted: Agfa v Papier Union (EPLAW)



Sugen’s desperate attempt to save its Sunitinib patent (Spicy IP)

Bayer-Natco decision TRIPS Compliant? (Spicy IP)

‘Xerox’ is not generic…….yet?! – IPAB decision in Himachalapathy v Xerox (Spicy IP)

Delhi High Court passes another interesting order under the 1958 Act on the issues arising between domestic and international proprietors of marks: Exide Industries v Exide Corp. USA (Spicy IP)

Delhi University students protest against copyright aggression against educational institutions and students (Spicy IP)

Delhi High Court seeks to break the myth of ‘breaking sports news’: New Delhi Television Ltd. v. ICC Development (Intl.) Ltd. (Spicy IP)

A test case for India’s new safe harbour provision: AGS Entertainment v. 37 ISPs (Spicy IP)

Roche vs Cipla: A patent disappointment? (Spicy IP)



The start of compulsory licenses in Indonesia (IP Komodo) (Pharmalot) (IAM)

US pressure on Indonesia to improve IPR protection (IP Komodo)



You can’t win ‘em all: Amgen’s successful U.S. patenting strategy results in denial of patent term extension in Israel (America-Israel Patent Law)



New IP court: no sign yet of hoped-for improvements (PatLit)



Social network vKontakte held liable for copyright infringement a second time (IP Watch)



Court of Appeal of Barcelona: Utility model may only be revoked due to lack of inventive activity when at the priority date it would have been “super-evident” to the person skilled in the art (Kluwer Patent Blog)



Apple puts money where its mouth is, pays for Swiss railway clock design – but details of agreement not made public (Ars Technica)



Model provisions for patents in Uganda (Afro-IP)


United States

US General

The proposed “Cloud Computing Act of 2012,” and how internet regulation can go awry (Technology & Marketing Law Blog)

Zynga sues former CityVille exec, accusing him of stealing game ideas (trade secrets) (Ars Technica)


US Patents

USPTO extends first-to-file comment period to November 5, 2012 (PharmaPatents)

Trolls filed 40% of patent infringement lawsuits in 2011 (Ars Technica)

Biotech/pharma patent issuances up, applications down in 2011 (Patent Docs)

Limited scope of the new derivation proceedings (Pharma Patents)

The asymmetric estoppel of business method patent challenges (Patents Post-Grant)

Pay to stay….the game changing impact of business method patent challenges (Patents Post-Grant)

AIA and IP investment: how will things change? (IP finance)

Did the AIA eliminate secret prior art? (Patently-O)

Software patents: 50 years of circuitous artifices (Patently-O)

Myriad’s dangerous patents and their negative impact on women’s health (EFF)

Design patent considerations (Inventive Step)

THOSITA: Obvious to a team having ordinary skill in the art (Patently-O)


US Patents – Decisions

CAFC reverses Nexus injunction for lack of a nexus and doubts about infringement: Apple v Samsung (FOSS Patents) (Ars Technica) (Patently-O)

CAFC affirms denial of request for preliminary injunction related to the sale of Roche’s osteoporosis drug Boniva® (ibandronate): Hoffmann-La Roche v Apotex (Patent Docs)

CAFC clarifies obviousness-type double patenting between products and methods in pemetrexed case: Eli Lilly v Teva (PharmaPatents)

CAFC: Belkin International, Inc. v. Kappos – A cautionary tale in the intricate arena of inter partes re-examination (Intellectual Property Law Blog)

ED Texas: Jury finds patent on “look and feel” for online stores valid, infringed: DDR Holdings v Digital River (Ars Technica)

ITC issues public version of opinion finding no violation of section 337 by MediaTek or Zoran in Certain Integrated Circuits (337-TA-786) brought by Freescale (ITC 337 Law Blog)

ITC: ALJ Bullock issues public version of initial determination finding no section 337 violation by Nintendo in Certain Video Game Systems (337-TA-770) brought by Creative Kingdoms (ITC 337 Law Blog)


US Patents – Lawsuits and strategic steps

Apotex – Apotex Challenge to Alcon Ophthalmic treatment patent among the post-grant filings week of October 8, 2012 (WHDA)

Avanir Pharmaceuticals – Avanir files patent infringement suit against Impax following Para IV challenge concerning Nuedexta (dextromethorphan) (Patent Docs)

Butamax (TM) Advanced Biofuels – Delaware: No disqualification of expert who met with opposing counsel before being retained: Butamax (TM) Advanced Biofuels v Gevo (Docket Report)

Canon – ALJ Shaw grants motion to terminate investigation as to OnlineTechStores in Certain Toner Cartridges (337-TA-829); investigation remains pending against other respondents (ITC 337 Law Blog)

CLS Bank – CAFC to take on software patents… again: CLS Bank v Alice Corp (EFF) (Ars Technica)

E-Contact – ED Texas: Counsel’s access to former client’s “confidential litigation strategies” is insufficient for disqualification: E-Contact Technologies v Apple (Docket Report)

Federal Trade Commission – FTC petitions for certiorari in the Androgel case FTC v. Watson; trying to convince Court that this case, not the K-Dur case, is the right vehicle for consideration of legality vel non of reverse payment settlement agreements (Patent Docs)

Glycobiosciences – Glycobiosciences files for correction of inventorship of patents relating to Fougera’s SOLARAZE (diclofenac) (Patent Docs)

Infineon Technologies – ND California: “Contingent” infringement contentions prohibited: Infineon Technologies v Volterra Semiconductor Corporation (Docket Report)

Innovention Toys – ED Louisiana: Willfulness determination should await jury’s assessment of reasonableness: Innovention Toys v MGA Entertainment (Docket Report)

Louisiana Wholesale Drug Co. – “No-AG” agreements are anticompetitive, says the FTC for a second time: In re Lamictal Direct Purchaser Antitrust Litigation (FDA Law Blog)

Louisiana Wholesale Drug Co. – Amici file briefs supporting certiorari in K-Dur Case – Part II (Patent Docs)

Microsoft – WD Washington: Google opposes fixed license fees for SEPs, insists on percentage of end product price: Microsoft v Motorola (FOSS Patents)

Microsoft – WD Washington denies Motorola motion, will set FRAND terms at Microsoft trial next month: Microsoft v Motorola (FOSS Patents)

Motorola – Google’s Motorola asks Ninth Circuit for rehearing after losing appeal of Microsoft injunction (FOSS Patents)

Nordock – ED Wisconsin: Failure to identify litigation counsel’s opinions on privilege log waives privilege: Nordock v Systems (Docket Report)

Peregrine Semiconductor Corporation – ALJ Essex grants complainant Peregrine’s unopposed motion to withdraw complaint in Certain Radio Frequency Integrated Circuits (337-TA-848) (ITC 337 Law Blog)

Seattle Genetics – Seattle Genetics files for declaratory judgment of non-infringement  in relation to its ADCETRIS (brentuximab vedotin) product: Seattle Genetics v Arizona Technology Enterprises (Patent Docs)

South Alabama Medical Science Foundation – ITC institutes investigation (337-TA-857) regarding Certain Reduced Folate Nutraceutical Products (ITC 337 Law Blog)

Speak For Yourself – App for voice-disabled users reinstated on App Store after patent fight – Companies that sued for infringement end up settling (Ars Technica)

Syncronoss Technologies – New Jersey: Counsel’s past representation of parent warrants disqualification in litigation involving subsidiary: Syncronoss Technologies v Asurion Mobile Applications (Docket Report)

Technology Properties – ALJ Essex grants motion to terminate investigation as to Sabrent in Certain Computers and Computer Peripheral Devices (337-TA-841); investigation remains pending against other respondents  (ITC 337 Law Blog)

Tessera – ALJ Essex grants-in-part motion for summary determination of bond forfeiture in Certain Semiconductor Chips With Minimized Chip Package Size (337-TA-605) (ITC 337 Law Blog)

Vringo – Investors seek billion-dollar payday as Vringo v. Google trial begins – Vringo acquired search-related patents once owned by Lycos, targeted Google (Ars Technica)


US Copyright

AT&T starts six-strikes anti-piracy plan next month, will block websites (TorrentFreak)


US Copyright – Decisions

SD New York: Digitizing books is fair use: Authors Guild v HathiTrust (EFF) (Ars Technica)


US Copyright – Lawsuits and strategic steps

Pearson – DMCA notice forces 1.45 million education blogs offline (TorrentFreak) (Ars Technica)


US Trademarks

Another banner year for trademarks (Director’s Forum)


US Trade Marks – Decisions

TTAB precedential no. 34: Section 66(a) registration may be cancelled under section 14 even if I.R. still viable: SaddleSprings v Mad Croc Brands (TTABlog)


There was a great discussion at the symposium yesterday on ‘IP Strategy, what has changed, what is changing?’

Here are my slides – I look forward to your comments too.

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