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.

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


Highlights this week included:

WIPO defers Pirate Parties International observer status (Spicy IP) (IP Watch) (IPKat)

EU Orphan Works Directive adopted by the Council (The 1709 Blog) (IPKat) (Out-Law)

Self replicating (and alive) inventions: US Supreme Court grants certiorari in Monsanto v. Bowman (Patently-O) (Holman’s Biotech Blog) (Inventive Step)


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

WIPO defers Pirate Parties International observer status (Spicy IP) (IP Watch) (IPKat)


Global – Trade Marks / Brands / Domain Names

Experts gather in Toronto to assess ICANN and internet governance (IP Watch)


Global – Patents

Can I – and should I – patent my smartphone app? (Patentology)

USPTO and EPO release advance version of cooperative patent classification system (Patent Quality Matters)


Global – Copyright

WIPO assembly moves to fast-track copyright exceptions for visually impaired (IP Watch)

YouTube upgrades its automated copyright enforcement system (EFF) (Ars Technica)

Can ad revenue save the printed media? (IP finance)



High Court publish reasons for finding tobacco plain packaging laws valid (ipwars.com)

Reading prior art when the times, they are a-changin’: Bradken Resources v Lynx Engineering Consultants (Patentology)

Show doing well on BitTorrent? We’ll buy it, says media giant Fairfax Media (TorrentFreak)



Canada officially joins Trans Pacific Partnership talks (Michael Geist)



How To Protect Your IP From China (Part 1 – China Law Blog) (Part 2 – China Law Blog) (Part 3 – China Law Blog)



UPC Rules of Procedure – Will they address concerns of small-country SMEs? (Kluwer Patent Blog)

EU Orphan Works Directive adopted by the Council (The 1709 Blog) (IPKat) (Out-Law)

Arnold J asks the CJEU to try again in relation to SPCs on combination product (IPKat)

General Court finds no likelihood of confusion between Le Lancier and El Lancero marks (Class 46)

ZEBEXIR/ZEBINIX: likelihood of confusion where packaging matters:Case T-366/11 (IPKat)

Pucci v Tucci: latest developments in a protracted trademark legal saga (IPKat)

Phoning the rapporteur? Think again … T 1251/08 (PatLit)



Tribunal de Grande Instance issues preliminary injunction against Teva in case concering Sanofi’s irbesartan/HCTZ combination SPC (EPLAW)

Rules governing post mortem transmission of droit de suite held constitutional (The 1709 Blog)



Google’s Motorola Mobility pulls all Android devices from German market after patent rulings (FOSS Patents)

Mannheim Regional Court holds that Android does not infringe Microsoft’s radio interface patent (FOSS Patents)



Delhi High Court recognizes international exhaustion under the Indian trademark law: Kapil Wadhwa & Ors v Samsung Electronics & Anor (Spicy IP)

Cipla succeeds in revoking Pfizer / Sugen’s patent on sunitinib (Spicy IP)

National Biodiversity Authority set to prosecute Monsanto’s Indian subsidiary: What about Cornell, USAID and the Department of Biotechnology? (Spicy IP)

The need for iron-clad enforcement of Section 8 disclosure requirements (Spicy IP)

India ratifies Nagoya Protocol on biodiversity access and benefit-sharing (IP Watch)

New India guidelines on similar biologics (Spicy IP)



Supreme Court finds in favour of trademark owner in ‘iStore’ trademark infringement case (IP Komodo)



At last, a legal ruling that yoghurt is … only yoghurt – partial revocation of Danone’s ACTAVIA for all goods in Class 30, 32 and certain goods in Class 29 (IPKat)



Israel Supreme Court rejects Adidas’ appeal re four stripe sneakers (The IP Factor)



First Italian opposition decision issued (Class 46)



District Court of The Hague perspective on interpretation of SPC Regulation post-Medeva: Sanofi v Teva (irbesartan and irbesartan/HCTZ) (The SPC Blog)


New Zealand

Three-strikes regime – Eight ‘music pirates’ to face Copyright Tribunal, one to defend in person (TorrentFreak)



Evasive action: How The Pirate Bay four dodged Swedish justice—for a while (Ars Technica)



Supreme Court: VOGUE is a famous mark, enjoys protection for all products (Class 46)



Ugandan company Quality Chemical Industries Limited producing generic drugs (Afro-IP)


United Kingdom

Changing scope of anti-piracy code would need Parliamentary and EU approval, says Ofcom (Out-Law)

Explaining patent litigation 3: All change for smaller businesses – tax benefits (PatLit)


United   States

US General

US announces $2.4M in local grants to combat IP theft (IP Watch) (Ars Technica)

What’s the hang-up? Apotex sues FDA over compliance failure that’s stalling ANDA approvals – AVALIDE (irbesartan/hydrochlorothiazide) and AVAPRO (irbesartan) (FDA Law Blog)

FDA sued over generic DIOVAN 180-day exclusivity; lawsuit takes issue with FDA forfeiture decision and “trust me” approach to exclusivity decisions (FDA Law Blog)


US Patents

Claim your exemption! – US applicant exemption from Rule 141 of EPC (Director’s Forum)

PPAC issues report on USPTO patent fees proposal (Patent Docs)

With 102(f) eliminated, is inventorship now codified in 35 U.S.C. 101? Maybe, but not restrictions on patenting obvious variants of derived information (Patently-O)

Rules changes implementing the inventor’s oath or declaration provisions of the AIA (Patent Docs)

ITC publishes new proposed rules regarding scope of discovery (ITC 337 Law Blog)

Revival of Parker v Flook (Patently-O)


US Patents – Decisions

CAFC again reverses USPTO on broadest reasonable interpretation (BRI) claim interpretation: In re Abbott Diabetes Care (Patents Post-Grant)

New Jersey: Claims of second BONIVA patent held obvious: Hoffmann-La Roche v Apotex (Beeser)

SD California: Invalidity opinion creates fact issue as to specific intent needed for indirect infringement: Gen-Probe v Becton Dickinson (Docket Report)

WD Virginia: Kickstarter posting alone was insufficient to support exercise of state-specific personal jurisdiction: Robinson v Bartlow (Docket Report)

ED Louisiana: Manufacturer’s indemnity of retailers does not obviate plaintiff’s right to proceed against retailers: Innovention Toys v MGA Entertainment (Docket Report)

CD California: Reexamination stay granted despite direct competition between parties: Inogen v Inova Labs (WHDA)

ND Illinois: Enzyme distributor admits infringement as Novozymes wins injunction: Novozyms v CTE Global (Green Patent Blog)

ITC: ALJ Bullock grants motion for summary determination of invalidity in Certain Wiper Blades (337-TA-816) (ITC 337 Law Blog)

Analysis of detailed version of preliminary ITC ruling on Samsung complaint against Apple (FOSS Patents)


US Patents – Lawsuits and strategic steps

AbbVie – AbbVie files patent infringement suit against Banner Pharmacaps over NDA filing to manufacture generic version of ZEMPLAR (paricalcitol) (Patent Docs)

Actelion – Actelion preemptively sues generic companies over REMS and biostudy product availability issues; case could be a bellwether for future efforts – TRACLEER (bosentan) (FDA Law Blog)

Apple – Juror confusion over patent laws to doom Apple Samsung verdict? (Patents Post-Grant)

CSL Bank – Federal Circuit to announce whether software is patentable?: En banc rehearing on Section 101 issues: CSL Bank v Alice Corp (Patently-O)

FDA – Supreme Court is again asked to take up drug patent settlement agreements; this time it’s ANDROGEL (testosterone) (FDA Law Blog)

Gunn – Supreme Court questions whether patent law malpractice claims “arise under” the US patent laws (and thus are amenable to federal jurisdiction): Gunn v Minton (Patently-O)  (Inventive Step)

Ivax – Ivax files patent infringement suit against Celgene over manufacturer and sale of VIDAZA (Azacitidine) (Patent Docs)

Kyocera – Kyocera attack on two scalable display patents, among the post-grant requests filed week of October 1, 2012 (WHDA)

Lodsys – Lodsys claims momentum in patent fight as some indie devs leave US (Ars Technica)

Louisiana Wholesale Drug Co  – Amici file briefs supporting certiorari in K-Dur case (Patent Docs)

Louisiana Wholesale Drug Co  – Generic Pharmaceutical Association files amicus brief in K-Dur case (Patent Docs)

Merck Sharpe & Dohme – Merck files patent infringement suit against Sandoz in response to Para IV challenge concerning ZETIA (ezetimib) (Patent Docs)

Monsanto – Self replicating (and alive) inventions: Supreme Court grants certiorari in Monsanto v. Bowman (Patently-O) (Holman’s Biotech Blog) (Inventive Step)

Motorola Mobility – ALJ Essex grants Motorola’s motion to withdraw complaint against Apple and terminates investigation in its entirety in Certain Wireless Communication Devices (337-TA-856) (ITC 337 Law Blog)

Rates Technology – Pioneering patent troll seeks the Supreme Court’s ear—plus a cool $12 million: Rates Technology says Best Buy broke a deal by challenging its patents (Ars Technica)

Standard Innovation – ALJ Pender grants motion to terminate investigation as to Natural Contours and Lelo Shanghai Trading in Certain Kinesiotherapy Devices (337-TA-823) (ITC 337 Law Blog)


US Copyright

MPAA chief admits: SOPA and PIPA “are dead, they’re not coming back.” (Ars Technica) (EFF)


US Copyright – Lawsuits and strategic steps

Goodwin, Kyle – Megaupload user will get his day in court (EFF)

Google – Google and Association of American Publishers reach an agreement. What about the authors? (IPKat) (IP Watch)

Malibu Media – Judge tells copyright troll to put up or shut up on porn lawsuits – Five “John Does” to act as test defendants in mass infringement lawsuit (Ars Technica)

Megaupload – Judge denies Megaupload’s motion to dismiss, but… leaves door open for motion to dismiss indictment until government finds a way to issue summons (TorrentFreak)

Oracle – Oracle appeals Google patent and copyright non-infringement ruing (Out-Law) (FOSS Patents)

ReDigi – EMI v ReDigi: US digital music resale hearing begins (The 1709 Blog)


US Trade Marks – Decisions

CAFC affirms TTAB: JPK PARIS 75 geographically deceptively misdescriptive of fashion accessories: In re Miracle Tuesday, LLC (TTABlog)

Precedential No. 33: Federal registration defense yields TTAB dismissal of dilution claim: Academy of Motion Picture Arts and Sciences v Alliance of Professionals & Consultants (TTABlog)

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


Highlights this week included:

Updated Draft Agreement on Unified Patent Court published (IPKat) (EPLAW) (IP Watch)

Do patent and copyright law restrict competition and creativity excessively? – Judge Posner’s view (Becker-Posner Blog) (Michael Geist) (ipwars.com) (IPKat) (The 1709 Blog) (Ars Technica)


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

On TPP secrecy, US and five others decline to answer UN (IP Watch)

Australia, Chile and New Zealand reply to UN Rapporteur for Right to Health on TPP complaints (KEI)

U.S. negotiators on TPP — Don’t trade away the biopharmaceutical research sector (Patent Docs)

Should we allow the overleveraging of IP rights by contract? (IPKat)


Global – Trade Marks / Brands / Domain names

ICANN set to change the topography of the internet (Spicy IP)


Global – Patents

Médecins Sans Frontières launches patent opposition database (IP Watch)

Practice note on US/EPO patent family prosecution (Patently-O)


Global – Copyright

Kim Dotcom teases Megabox, reveals exclusive artists? (TorrentFreak)



Innovation patents reach back in time for infringement: FCA decision in Britax Childcare v Infa-Secure (Patentology)



BMS wins prohibition order on SUSTIVA compound patent: Bristol-Myers Squibb and Merck Sharp & Dohme v Mylan (Beeser)



China trademarks and your logo (China Law Blog)

Hermès counterfeiter sentenced to life (IPKat)



Updated Draft Agreement on Unified Patent Court published (IPKat) (EPLAW) (IP Watch)

Declaration on private copying remuneration (The 1709 Blog)

Commission seeks model contract terms and new standards for cloud computing services (Out-Law) (The 1709 Blog)

Plain packaging and the European Commission: is there a mixed message? (IPKat)

Case C-138/12 HI HOTEL HCF – request for preliminary ruling from the Bundesgerichtshof in case concerning copyright infringement of photographs (The 1709 Blog)

EWHC (Pat) refers two SPC questions to the CJEU regarding combination products: Actavis v Sanofi (CoAprovel – irbesartan/hydrochlorothiazide) (EPLAW)



Paris Criminal Court: CiNEFOX movie pirates handed jail sentences, ordered to pay 1.1 million Euros (TorrentFreak)

Cour d’appel de Paris decides case concerning validity of acquisition of prior rights after being accused of trademark infringement: Circus v Apple (Class 46)



Supreme Administrative Court: Smileys cannot be trademarks in Finland (Class 46)



Metropolitan Court of Budapest grants six preliminary injunctions in June 2012 over likely infringement in blockbuster drug patent cases (EPLAW)



TKDL poised to draw first blood before Indian patent office; long road ahead (Spicy IP)

Delhi High Court: Novelty of design: Tarun Sethi v Vikas Budhiraja (Spicy IP)

District Judge of Lucknow grants Eastern Book Company interim injunction against Lexis Nexis for infringement of copyright (Spicy IP)



Anti-downloading law hits Japan, up to 2 years in prison from today (TorrentFreak) (The 1709 Blog)


Latin America

Copyright in Latin America: New enforcement measures pose major threats to internet users in Panama and Colombia (EFF)



District Court Utrecht decision concerning cross-border jurisdiction: Boehringer Ingelheim v. Teva (Kluwer Patent Blog)


New Zealand

New Zealand Prime Minister apologizes for illegal Dotcom spying (Ars Technica) (TorrentFreak)

Inside NZ Police Megaupload files: US investigation began in 2010 (Ars Technica)

NZ prime minister defends Hollywood trip in wake of Megaupload mess; maintains meetings have nothing to do with ongoing Kim Dotcom case (Ars Technica)

High Court finds NZ courts have jurisdiction to decide on infringement of a US patent, committed in US by US-based company: Stewart v Franmara Inc no.2 (Patentology)



File-sharing for personal use declared legal in Portugal (TorrentFreak)



Thai FDA approves first generic version of Pfizer’s VIAGRA for sale after 1 October (IP Komodo)


United Kingdom

Nominet launches consultation on new .uk domain names (IPKat) (Out-Law)

Small claims track gives businesses new IP dispute resolution option (Out-Law) (Kluwer Patent Blog)

ISPs: Ofcom has underestimated cost of our obligations under anti-piracy code (Out-Law)

Birmingham High Court: Glass and a half full of purple joy: Cadbury wins trademark battle against Nestle (Spicy IP)

IPO decision ‘stems’ from Brüstle: BL O/316/12 International Stem Cell Corporation (Kluwer Patent Blog)

EWPCC finds invalidity on obviousness grounds and no infringement in BOS v Coba UK Automotive Products (EPLAW)

EWPCC rejects obviousness and added matter attacks, finds validity and infringement in Vernacare v Environmental Pulp Products (EPLAW)


United States

US General

Do patent and copyright law restrict competition and creativity excessively? – Judge Posner’s view (Becker-Posner Blog) (Michael Geist) (ipwars.com) (IPKat) (The 1709 Blog) (Ars Technica)

Senate Judiciary Committee approves S 3523 Innovative Design Protection Act 2012 (Class 99) (Protecting Designs)

GAIN Act stacks 5-years of market exclusivity for antibiotics (Patently-O)

New legislation would provide exclusivity add-on for significant drug combinations (FDA Law Blog)

Another orphan drug battle; Depomed sues FDA over GRALISE orphan drug exclusivity (FDA Law Blog)


US Patents

White House releases major paper on propelling innovation in drug development and recognizes HP&M’s Frank Sasinowski for contributions (FDA Law Blog)

A first look at inter partes review filings (PharmaPatents)

What to know about petitions for an interview in patent reexamination (WHDA)

Examiner claim confirmations in inter partes patent reexamination, what happens on appeal? (Patents Post-Grant)

How a rogue appeals court wrecked the patent system (Ars Technica)

Utility patents issued 2000 to 2012 (Patently-O)

Android camp is enforcing only one patent injunction against Apple (and none against Microsoft) (FOSS Patents)

Android devices have already been found to infringe 17 valid Apple and Microsoft patents (FOSS Patents)

Trans-border active patent inducement under Akamai (Patently-O)


US Patents – Decisions

CAFC affirms validity and infringement in combination drug patent case: Pozen v Par Pharmaceutical (TREXIMET – sumatripan/naproxen) (Patent Docs)

CAFC upholds board determination that biotechnology invention was obvious: In re Droge (PharmaPatents)

CAFC In, the Federal Circuit continues in the direction set by Powell, although it does not appear to be ready to completely abandon the notion that certain “minor” violations can constitute inequitable conduct – perhaps maintaining a bit of the “bark” of inequitable conduct despite curtailing its “bite.”: Outside the Box Innovations v. Travel Caddy (Patently-O)

CAFC sides with USPTO on SNQ debate: Belkin v Kappos (Patents Post-Grant) (Patently-O)

CAFC: Sales ban on Samsung Galaxy Tab 10.1 will be reconsidered; passed decision on injunction back to Judge Koh: Samsung v Apple (Ars Technica) (FOSS Patents)

ND California: Apple v. Samsung judge ends Galaxy Tab ban, Apple may have to pay $2.6M; Samsung tablet was banned for three months based on patent it didn’t infringe (Ars Technica) (FOSS Patents)

9th Circuit rejects German injunction order in Microsoft v. Google patent battle: Microsoft v Motorola (Patently-O) (FOSS Patents)

Massachusetts jury finds Abbott’s anti-IL-12 antibody claims invalid (STELARA – ustekinumab) (Beeser)

Columbia: ArQule v. Kappos: Enjoy your weekend, or what a difference a day (or two or three) of PTA can make (Patent Docs)

Columbia: Patents claiming systems and methods for electronic sale of fixed-income assets deemed invalid for failure to claim patentable subject matter: Federal Home Loan Mortgage Corp. v Graff/Ross Holdings (Docket Report)

Nevada: Common ownership required to maintain enforceability of patent subject to terminal disclaimer means ownership by same entity, not same corporate family: Email Link v Treasure Island (Docket Report)

CD California: “Same transaction” required for joinder under 35 U.S.C. § 299 does not encompass separate transactions within a “commerce stream”: Mednovus v QinetiQ (Docket Report)

ITC: ALJ Rogers issues Initial Determination of no S 337 violation in Certain Coenzyme Q10 Products (337-TA-790) (ITC 337 Law Blog)


US Patents – Lawsuits and strategic steps

Apple – Samsung adds Apple’s iPhone 5 to its patent lawsuit (Ars Technica) (FOSS Patents)

Apple – Samsung claims foreman lied about his past to get on Apple v. Samsung jury(Ars Technica) (FOSS Patents)

Apple – Apple urges court to move ahead with at least 6 of 32 patents waiting for HTC in Delaware (FOSS Patents)

Avago – Avago files new 337 complaint regarding Certain Optoelectronic Devices For Fiber Optic Communications (ITC 337 Law Blog)

Etagz – Hourly rates of $675-775 deemed unreasonable for discovery disputes: Etags v Quiksilver (Docket Report)

Industrial Technology Research Institute – Alleging “selective disclosure” of prior art reference is sufficient to plead intent to deceive element of inequitable conduct claim: Industrial Technology Research Institute v LG Corporation (Docket Report)

Intellectual Ventures – Intellectual Ventures attack on Xilinx patents among the filings in the two weeks September 16-28, 2012 (WHDA)

Merck & Co – PhRMA and Bayer files amicus briefs in K-Dur case (Patent Docs) (Patent Docs)

Motorola Mobility – Motorola suddenly drops bid to ban sale of Macs, iOS devices; no settlement, but ITC case is likely over (Ars Technica) (FOSS Patents)

Speck – Speck files new 337 complaint regarding Certain Cases For Portable Electronic Devices (ITC 337 Law Blog)


US Copyright

ISPs and tracking company ready to start six-strikes anti-piracy scheme (TorrentFreak)


US Copyright – Decisions

W D Washington: Recent ruling in Triple Town/Yeti Town game app dispute provides cautionary lessons for both EA and Zynga: Spry Fox v Lolapps (Technology & Marketing Law Blog)


US Copyright – Lawsuits and strategic steps

Garcia, Cindy Lee – Actress in anti-Islam film sues YouTube on copyright grounds (Ars Technica)

RIAA – RIAA targets foreign music download portals – Mimp3.net, Descargaralbum.com and Jou-site.me (TorrentFreak)


US Trade Marks – Decisions

SD Texas: City of Paris ordered to pay USD 100,000+ for reverse domain name hijacking (Class 46)

Precedential No. 32: Board finds service of notice of opposition flawed but adequate: Musical Directions v. Norman W. McHugh (TTABlog)


US Trade Marks – Lawsuits and strategic steps

RC3 – MD Florida dismisses RC3’s declaratory judgement complaint against Justin Beiber without prejudice, finding lack of personal jurisidiction (IP Whiteboard)


I’m speaking at an upcoming symposium in Melbourne, Australia on 10 October. My co-speaker for the symposium is Helen Mutimer, Director of IP at CSL.

Places are limited, so book now if you want to come along.

This symposium will examine contemporary IP strategy both as a field of study and as a practical management tool.


Wednesday 10 October 2012
3 – 5pm including snacks and drinks
Monash University Caulfield Campus
Theatre 1.08 Building N

Click here for a map.

There is no charge to attend but for catering purposes please register at: http://www.trybooking.com/BYZW

Questions? Please contact Professor Michael Vitale, Michael.Vitale [at] monash.edu or +61 3 9905 8049

I look forward to seeing you there.

Guest post by Robert Cantrell  

An IP strategy should take account of the natural course of technology evolution so that it provides adequate protections into the future.  For example, product solutions tend, over time, to move towards an ideal state of providing more and more benefit with less and less drawback.  So where your IP protects innovation that does provide more benefits or fewer drawbacks, it is likely aligned with the course of technical evolution as a whole.  Where IP protects innovation that moves a product solution away from an ideal state, such as a car that has lower fuel economy than it could, it should come under scrutiny to ensure there is a solid business case for moving against the expected flow, such as the marketability of desirable luxuries in that car that caused the fuel economy loss.

Image credit: BottleLeaf

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