On strategy and priorities

A quick personal note to apologise to our faithful readers for the lack of posts from me on this blog recently.

I am currently travelling for a year with my family.  While I’m keeping up with clients and their needs, as always, I don’t have as much time for other activities, like getting out to conferences or this blog.

I have some ideas for thought-provoking posts and will get them up here as soon as I can.

In the meantime, please do look out for posts from the rest of the team and I hope that all is well with you and look forward to continuing the conversation here, and in LinkedIn etc.



The team at Think IP Strategy created their list of top IP mistakes.   We’ve listed them here for you and we’ll give you a more detailed post on each and everyone.

What would you add?  We’ll happily do an extra post on any new ones you suggest.

(They are in no particular order, because as you know, that depends on context.)

1.      Fail to Protect IP

2.      Fail to Exploit IP

3.      Fail to Maintain IP

4.      Fail to Recognize IP

5.      Fail to Protect Associated IC

6.      Infringe IP

7.      Lose Freedom of Operation

8.     Have No Publication Strategy

9.     File Too Early

10.  File Too Late

11.  Treat IP as purely a Legal Issue

12.  Fail to Think Globally

13.  Fail to Think Locally

14.  Spend Too Much to Protect Too Little

15.  Spend Too Little to Protect Too Much

16.  Misunderstand the Strength of IP

17.  Build Static Instead of Dynamic Defenses

18.  Underestimate Competitors

19.  Overestimate Competitors

20.  Fail to Leverage Outside Innovation

21.  Become Mired in the Day-to-Day

22.  Fail to Optimize the Portfolio

23.  Fail to align IP strategy with Business Strategy

24.  Treat IP as a Cost Center

25.  Accept the Tyranny of the Toos: Too hard, expensive, difficult, confusing, etc.

26.  Take the Advice of Counsel on Faith

27.  Mismanage Outsourcing

28.  Be Satisfied with the Status Quo

29.  Create Your Competition

30.  Fight in the Wrong Places

31.  Fight in the Wrong Way

32.  Choose the Wrong Fights

33. Develop IP that no one wants

34. Fail to Monitor IP (suggested by ‘mc’ – see below and thanks again)

35. Fail to Abandon IP (suggested by ‘Chuit’ – see below and thanks again)

36. Fail to Value IP Literacy in Staff at all levels (suggested by ‘Ruth Soetendorp’ – see below and thanks again)

37. Fail to include IP Awareness on staff training agenda (suggested by ‘Ruth Soetendorp’ – see below and thanks again)

38. Fail to communicate IP Strategy as part of your marketing plan (suggested by ‘Dids MacDonald’ – see below and thanks again)

39. Claim too much (in patent claims) [And I would add, ‘or too little’, and broaden this to Trade Marks and Designs as well.] (suggested by ‘Naim Kuhn’ – see below and thanks again)

40. Fail to clearly assign IP responsibility within the organisation (suggested by AJ with slight modification – see below and thanks again)

41. Seeing things as we wish them to be

42. Planning without the ideal strategy in mind

43. Do it yourself IP Strategy

44. Withholding important information from legal advisers

45. Miss the point on benchmarking

46. Think that there are only 50 IP mistakes that you can make (suggested by Philip Argy – see below and thanks again)

47. Make dangerous interpretations

48. Focus on the lesser value in licensing

49. Use questionable ethics

50. Fail to lead

I received a great question at an IP strategy training course I taught.  The question was about the difference between a strategy, a plan, and a process.  It came about because while we expect on paper most people could match these three words to their appropriate definitions, in practice, they get confused.  So to address the definitions in practice, I thought it might be fun to examine their purpose for their employer.

A strategy is a solution to move from where you are now (A) to where you want to be (B)…or put another way, it is what you want to happen to achieve an end.  Strategy is a class of solution that deals with uncertainty – the possibility that opposing forces may inhibit you reaching (B) or reaching it in acceptably good form.

A strategy should raise the probability that its employer will reach (B) in good form.  It does so mostly by creating conditions that favor success.  For example, a strategy can be that you will only support businesses where you can be a first or second tier player, where your objective (B) is to build a product solutions portfolio that fits that defined nature.  Building a portfolio of first or second tier only product solutions is what you want to do.  It is a solution to a problem associated with running a type of business that you determined third or less tier product solutions will not support.  Your strategy does not specifically say how you will arrive at this end.  That is where your plan comes in.

A plan is how you will move from (A) to (B).  As such it should support your strategy by providing a way to reach (B) that provides an acceptable balance of risk and reward.  So your strategy is what you want to do and your plan is how you will do it.  For example, you may decide as a strategy that you need to acquire lots of patents in an area to help you maintain freedom of operation, and then your plan is how specifically you will do that…R&D, acquisition, license, etc.  This is, of course, oriented on the level of organization you are dealing with.  Company, divisional, team, and personal plans and strategies take place simultaneously, which creates issues of alignment that we can cover in a future post.

Understanding the difference between a strategy and a plan allows you to make useful strategic planning decisions that separate the two.  It allows you to act in line with General George S. Patton’s insightful quote, “Never tell people how to do things. Tell them what to do and they will surprise you with their ingenuity.” You can include statements of intent within your planning so that when plans go wrong, which they often do, people can adjust their how-to-do-it (the plan) in a way that makes sense with what you want them to achieve (the strategy).

A process, in contrast, is a defined way of doing a task.  It can be a linear in nature – do A, then do B, then do C – or it can have branches – do A, then B, and then C or D depending.  A process sets strict parameters to the “how” that can, if misapplied, allow the “how” to take priority over the “what.”

Since a process is so anchored in the “how,” it can never be a strategy.  If used well, a process can be an essential part of a strategy.  For a strategist, the chief purpose of any process is to drive out uncertainties that do not need to be there within a plan.  For example, no matter the strategy and plan you chose regarding IP, you want to anchor that strategy and plan on good IP.  As a part of a strategy and plan you can set processes in place for idea review, documentation, and protection that assure you will have the quality of IP protection you need as circumstances arise.  Then you can address all the uncertainties of what competitors, partners, and customers may do to challenge or advance your IP portfolio without also having undue uncertainty about whether you can present good IP documentation when you need it.

So when you do strategic planning for IP, you and consulted team members first determine what you want to do – your strategy.  You next determine or appropriately delegate how you want to do it – your plan.  You and your team then look at all the uncertainties associated with your strategy and plan with the mindset to drive out those uncertainties that do not need to be there.  To drive out uncertainties, you may incorporate processes – often as simple as checklists – so that those executing your strategy can focus their talents where uncertainty remains.  You do all of this in context with your opposition because you can win or lose any strategic contest on any or all or your strategies, plans, or processes.

Image credit: Hemera

It doesn’t really matter how strategic you think you are, if you can’t access a pragmatic and clear construction of patent claims, you’re in trouble.

While patent terms always come back to the context of the specification itself (and the file history in some countries), Oxford’s Thesaurus of Claim Construction is a very handy addition to your armoury if you need to get to grips with patent claims. Co-authored by Stuart Soffer and Robert Kahrl it provides a very useful set of alternative constructions of words and phrases with citations from US patent cases and brief commentary.

This two volume set also has insightful sections on means plus function elements, design patents and how to determine what ‘ordinary skill’ really means in the context of the patent you’re looking at. With an index that runs to over 200 pages, it’s also easy to find everything.

Please click here to purchase a copy of Thesaurus of Claim Construction.

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)

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