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


Highlights this week included:

Orphan works directive approved by EU Parliament (IPKat) (The 1709 Blog) (IP Watch)

France convicts first person under anti-piracy law (even though he didn’t do it) (Ars Technica) (TorrentFreak) (EFF) (The 1709 Blog)

CAFC requires specific intent to deceive for inequitable conduct: 1st Media v Electronic Arts (PharmaPatents)  (Inventive Step) (Patently-O)

US: PTAB submissions have commenced  (Director’s Forum) (WHDA) (Patents Post-Grant) (Patents Post-Grant) (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

ACTA: Will it ever become a valid international treaty? (IP Watch)

Dutch government says no CETA with ACTA provisions (Michael Geist)

Trans-Pacific Partnership – International Intellectual Property Alliance demands rollback of recent Canadian reforms in secretive trade deal (Michael Geist)

Trans-Pacific Partnership – A look at the IP provisions (Spicy IP)

China’s SAIC Minister Zhou visits USPTO (Director’s Forum)

WIPO design treaty: not just yet… (Class 99)


Global – Patents

An innovation cliff? Is it P&G’s problem or all our problem? (IP finance)

Intellectual Ventures – largest worldwide patent holder? (Patently-O)


Global – Copyright

Megaupload readies for comeback, code 90% done (TorrentFreak)

New paper on ISP liability: how to reconcile US and EU approaches? (The 1709 Blog)

The thorny issue of competition in the music industry (The 1709 Blog)



IP Australia issues new consulation paper ‘Innovation Patents – Raising the Step’ (Patentology) (

Draft regulations reveal applicants to be slugged with search fee (Patentology)

Raising the Bar Draft Regulations (

Oh what a feeling! Jetstar disputes Toyota’s rights to register “jumping” trade marks (IP Whiteboard)



Brussels Court of Appeal rules patents valid and infringed in Lundbeck v Tienfenbacher (escitalopram) (EPLAW)



A brief look at Botswana’s new IP law (IP Watch)



Opposing views: The impact of Canada’s Access Copyright decision (IP Watch)



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

China’s changing trademark environment. Why you need to register your trademark now. (China Law Blog)

Quality, not quantity, key to China’s patent incentives, says EUCCC Report (IP Whiteboard)



Orphan works directive approved by EU Parliament (IPKat) (The 1709 Blog) (IP Watch)

European creators insist private copying levy still relevant (IP Watch)

Combination SPCs: more hypertension for the CJEU? (CoAprovel – irbesartan/hydrochlorothiazide) (The SPC Blog)

CJEU asked to rule on legality of downloading from illegal sources: ACI Adam B.V. & Ors v Stichting de Thuiskopie & Anor (TorrentFreak) (The 1709 Blog) (Out-Law)

Danish Supreme Court to seek preliminary ruling from the CJEU in ROLEX customs seizure case (Class 46)



France convicts first person under anti-piracy law (even though he didn’t do it) (Ars Technica) (TorrentFreak) (EFF) (The 1709 Blog)

Van Cleef & Arpels win French tussle with employee over design ownership (Class 99)



Mannheim Regional Court says Samsung and Motorola don’t infringe Apple’s touch event model patent (FOSS Patents)

Munich I Regional Court: Microsoft wins third German injunction against Google’s Motorola over high-power patent (FOSS Patents)

Mannheim Regional Court may defer to EU regulator on Samsung-Apple lawsuits over FRAND patents (FOSS Patents)

Munich I Regional Court hands Apple rubber-banding patent injunction against Google’s Motorola Mobility (FOSS Patents)

Supreme Court deals with distinction between permissible “repair” of a patented product and impermissible “renewed-manufacturing” in Pallet Container II (EPLAW)



Will the amendments to the Copyright Act serve their purpose? (Spicy IP)

Copyright Rules 2012 (Spicy IP)

Balancing public and private interests in the intellectual property regime (IP Watch)

Madras High Court declines to grant interim injunction in trademark dispute between Google Ad-words and matrimonial portals (Spicy IP)

Nexavar (Sorafenib) – IPAB dismisses Bayer’s appeal against compulsory license (Spicy IP) (KEI)

Erlotinib – Roche v Cipla: Part 1: validity of patent (IIPRD)



Ireland accedes to the London Agreement (IPKat)



First Italian PTO opposition decisions to be issued this month (Class 46)



Dutch court rules linking to photos is copyright infringement (Ars Technica) (The 1709 Blog) (Out-Law)

District Court of The Hague issues preliminary injunction against manufacture or sale of Irbetasan/HCTZ combination medicine by defendant: Sanofi v Teva (EPLAW)


New Zealand

NZ Patents Bill second reading debate (Patentology)

Government spies illegally bugged Kim Dotcom, Prime Minister admits (TorrentFreak) (TorrentFreak) (Ars Technica)



Is Panama about to pass the worst copyright law in history? (TechnoLlama)


South Africa

Traditional knowledge legislation given a reprieve (Afro-IP)



An SPC granted using a marketing authorisation that time has proved to be wrong: Nullification or recalculation? (Kluwer Patent Blog)



First elected Pirate Party mayor to rule Swiss town (TorrentFreak)

Swiss practice re “SAN” and “SANA” for pharmaceuticals (Class 46)



Syria denounces Madrid Agreement on trademark registration (IP Watch)


United Kingdom

Reform of copyright law key to economic growth in Europe, Hargreaves claims (Out-Law)

Soaring digital book sales down to stable copyright regime in UK, claims publishers’ body (Out-Law)

Further deregulation proposed for innovative ‘challenger’ businesses and entrepreneurs (Out-Law)

Why the Meltwater case won’t break the internet (The 1709 Blog)


United States

US General

Is it a drug or device? Court requires FDA to explain itself in Prevor v FDA (Diphoterine skin wash) (FDA Law Blog)

Insight into FDA’s implementation of FDASIA for devices (FDA Law Blog)


US Patents

USPTO clarifies stance on 101 challenges before the PTAB (Patents Post-Grant) (Director’s Forum) (Patently-O)

Unprecedented surge in patent reexamination filings (Patents Post-Grant)

PTAB submissions have commenced  (Director’s Forum) (WHDA) (Patents Post-Grant) (Patents Post-Grant) (Patently-O)

Announcing the Patent Trial and Appeal Board (PTAB) (Director’s Forum) (Patently-O)

Post grant patent challenges to threaten continuation portfolios (Patents Post-Grant)

Creeping death….the infectious estoppel impact of PTAB validity trials (Patents Post-Grant)


Pending appeals not impacted by BPAI->PTAB transformation (Patently-O)

A rush to file at the end of inter partes reexaminations (Patently-O)

USPTO encourages third parties to participate in review of pending patent applications (Patently-O)

Preissuance submissions: A description of the relevance to examination but not an explanation (Patently-O)

Preissuance submissions (Patently-O)

Senate approves legislation to implement old patent treaties – S.3486:  Patent Law Treaties Implementation Act of 2012 (Inventive Step)

Patent settlement agreements: the next barrage (FDA Law Blog)

Should presumptions be avoided in the reverse payment debate? (Patent Docs)

USPTO publishes final derivation rules (PharmaPatents)

Ex parte patent appeal results (Patently-O)

PWC reports sharp rise in patent litigation filings (IP Spotlight) (Patent Baristas)

The problematic origins of nationwide patent venue (Patently-O)

Supplemental examination: inequitable conduct amnesty and beyond (Patently-O)

Does the entire market value rule make sense when applied to apportionment analyses? (Patently-O)

Patently wrong – The jury’s verdict in Apple v Samsung (IP Watch)

Should a challenge to a patent’s validity based on claiming unpatentable subject matter (i.e., Bilski) be addressed at the pleading stage? – yes – OIP v / no – Phoenix Licensing v Aetna (Docket Report)


US Patents – Decisions

CAFC requires specific intent to deceive for inequitable conduct: 1st Media v Electronic Arts (PharmaPatents)  (Inventive Step) (Patently-O)

CAFC allows Santarus to keep Par’s generic version of Zegerid® off the market until the expiration of Orange Book-listed patents: Santarus v Par Pharmaceuticals (Patent Docs)

CAFC again denies declaratory judgment jurisdiction: dj plaintiff must provide evidence of real and immediate conflict: Matthews International v Biosafe (Patently-O)

CAFC: Good-standing licensee must prove non-infringement in DJ action: Medtronic v Boston Scientific Corp (Patently-O) (Patent Docs)

CAFC: Appealing Board decisions (and losing): In re Droge (Patently-O) (Patent Docs)

CAFC: Who decides obviousness: judge or jury?: Kinetic Concepts and Wake Forest University v Smith & Nephew (Patently-O)

Access to courts: CAFC issues preliminary rejection of Judge Koh’s stance on open access to trial documents: Apple v Samsung (Patently-O)

ND California: Preliminary injunction prohibiting sale of Galaxy Tab survives despite jury verdict of noninfringement: Apple v Samsung (Docket Report) (Ars Technica)

ED Virginia: Harvard’s US oncomouse patents are all expired (for the time being): Harvard College v Kappos (Patently-O)

ND California: Cease & desist letter lacking charge of infringement did not create substantial controversy sufficient for declaratory relief claim: Unisense Fertilitech v Auxogyn (Docket Report)

WD Wisconsin: $50 million verdict overturned because plaintiff failed to prove infringing products were made or imported into the United States: Promega v Life Technologies (Docket Report)

SD Florida: Invalidation of patent on reexamination warrants relief from judgment of infringement, including injunction and monetary award: Flexiteek Americas v Plasteak (Docket Report)

ED Wisconsin: Claim term “sufficiently rigid” was not insolubly ambiguous and did not render claim indefinite: Formax v Alkar-RapidPak-MP Equipment (Docket Report)

New Jersey: Janssen’s low dosage oral contraception regime patent valid in dispute with Lupin (Ortho Tri-cyclen Lo) (Beeser)

Columbia: District Court stands by patent term adjustment tolling decision: Bristol Meyers Squibb v Kappos (Pharma Patents)

Delaware: Judge Robinson distinguishes between re-examination and reissue; patentees precluded from bringing second lawsuit: Senju v Apotex (WHDA) (Docket Report)

SD California: 35 U.S.C. §285 permits attorneys’ fee award for post-settlement conduct “intertwined” with patent issues: Fitness IQ v. TV Products USA (Docket Report)

ND California: Failure to dismiss case after unfavorable claim construction rendered case exceptional warranting attorneys’ fees: Spectros v Termo Fisher Scientific (Docket Report)

CD California: Timeshare trading patent invalid for failure to claim patentable subject matter under Bilski: Vacation Exchange v Wyndham Exchange and Rentals (Docket Report)

ITC: Apple doesn’t infringe Samsung’s smartphone patents – Judge notes patented claims aren’t practiced in the domestic market, either (Ars Technica) (FOSS Patents)

ITC issues public version of opinion affirming in part and reversing in part violation of Section 337 in Certain Wireless Communication Devices (337-TA-745) (ITC 337 Law Blog)

ITC issues final determination of no violation by Zoran or MediaTek in Certain Integrated Circuits (337-TA-786) brought by Freescale Semiconductor (ITC 337 Law Blog)

ITC: ALJ Essex issues notice of initial determination finding Section 337 violation in Certain LED Photographic Lighting Devices (337-TA-804) brought by Litepanels (ITC 337 Law Blog)


US Patents – Lawsuits and strategic steps

AMP – AMP files petition for certiorari to Supreme Court, seeking review of CAFC’s decision upholding patent-eligibility of Myriad’s “isolated DNA” claims (Pharma Patents) (Patent Docs)

Anu IP – ALJ Pender grants motions to terminate investigation with respect to numerous respondents in Certain Electronic Devices Having A Retractable USB Connector (337-TA-843) (ITC 337 Law Blog)

Apple – Apple asks Federal Circuit to deny Samsung’s request for remand of Galaxy Tab 10.1 injunction (FOSS Patents)

Apple – Apple demands $707 million in additional damages from Samsung – Samsung objects, wants a new trial (Ars Technica) (FOSS Patents)

Avanir – Avanir files patent infringement complaints against Actavis, Par, Watson and Wockhardt in reponse to Para IV challenge concerning Nuedexta (dextromethorphan/quinidine) (Patent Docs)

Braintree Laboratories – Braintree files patent infringement suit against Cupress Pharmaceutical in response to Para IV challenge concerning Suprep (sodium/potassium/magnesium) (Patent Docs)

BriarTekIP – ITC institutes investigation (337-TA-854) regarding Certain Two-Way Global Satellite Communication Devices (ITC 337 Law Blog)

Cubist – Cubist files patent infringement complaint against Hospira in response to Para IV challenge regarding Cubicin (Daptomycin) (Patent Docs)

EON Corp – Defense counsel disqualified based on seventeen year old prioer representation: EON Corp v FLO TV (Docket Report)

Hitachi Metals – ITC institutes investigation (337-TA-855) regarding Certain Sintered Rare Earth Magnets (ITC 337 Law Blog)

Louisiana Wholesale Drug Co – Generic defendant petitions for certiorari in K-Dur Litigation (Patent Docs)

Microchip Technology – ALJ Rogers grants motion to terminate investigation in its entirety in Certain Semiconductor Integrated Circuit Devices (337-TA-840) (ITC 337 Law Blog)

Motorola – ITC decides to investigate Google’s (Motorola Mobility’s) patent complaint against Apple (FOSS Patents) (FOSS Patents) (ITC 337 Law Blog)

Novartis – Novartis files patent infringement complaint against Apotex in response to Para IV challenge concerning Lotrel (amlodipine/benazepril) (Patent Docs)

OSRAM – ITC to review in part ALJ Shaw’s initial determination in Certain Light-Emitting Diodes (337-TA-784) (ITC 337 Law Blog)

Otsuka Pharmaceutical – Otsuka files patent infringement complaint against Silarx in response to Para IV challenge concerning Ablify (aripiprazole) (Patent Docs)

Otsuka Pharmaceutical – Otsuka files patent infringement complaint against Apotex in response to Para IV challenge concerning Ablify (aripiprazole) (Patent Docs)

Overland Storage – ITC decides to review initial determination in Certain Automated Media Library Devices (337-TA-746) (ITC 337 Law Blog)

Purdue Pharmaceutical Products – Purdue files patent infringement complaint against Novel Laboratories in response to Para IV challenge concerning Intermezzo (zolpidem)  (Patent Docs)

Realtek – Realtek files new 337 complaint regarding Certain Integrated Circuit Chips With Bond Pad Structures (ITC 337 Law Blog)

Salix – Salix files patent infringement suits in Delaware and Maryland against Lupin over Para IV challenge concerning Apriso (mesalamine) (Patent Docs)

Skyhook Wireless – Skyhook Wireless files new lawsuit against Google over 9 U.S. geolocation patents (FOSS Patents)

Twin-Star International – ITC decides to review initial determination in Certain Electric Fireplaces (337-TA-791/826) (ITC 337 Law Blog)

University of California – Eolas strikes again: sues Facebook, Wal-Mart, and Disney over University of California patents (Ars Technica)

Upsher-Smith – Upsher-Smith seeks declaratory judgement of non-infringement / invalidity based on ANDA filing to manufacture generic version of Auxilium’s Testim (testosterone gel) (Patent Docs)

VirnetX – VirnetX and SAIC file new 337 complaint against Apple regarding Certain Devices With Secure Communication Capabilities (ITC 337 Law Blog)


US Copyright

“Six strikes” anti-piracy scheme overly secret and unfair, says Professor Bridy (TorrentFreak)

New anti-piracy watchlist zooms in on file-sharing tolerant countries (TorrentFreak) (Ars Technica)

New study affirms less copyright restrictions benefit the economy, amid renewed calls for SOPA 2.0 (EFF)


US Copyright – Decisions

8th Circuit Court of Appeals upholds $9,250 per song penalty in filesharing case, says constitution doesn’t limit penalties: Capitol Records v Thomas-Rasset (EFF) (The 1709 Blog)

ND California says no negligence claim for third party infringement via open wi-fi connection: AF Holdings v. Doe (Technology & Marketing Law Blog)


US Copyright – Lawsuits and strategic steps

BMG – BMG demands $20 for pirated Bruno Mars / Eminem downloads (TorrentFreak)

Cameron, James – CD California throws out copyright claim concerning Avatar: Elijah Schkeiban v James Cameron et al (The 1709 Blog)

John Wiley & Sons – Alleged copyright infringement by patent prosecutors: American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg (Patently-O)

Mediacom – Mediacom disconnects and bans alleged internet pirates (TorrentFreak)

Megaupload – Injustice continues as Megaupload user data negotiations go bust (TorrentFreak)


US Trademarks

Newly released consumer survey indicates that legal concerns about competitive keyword advertising are overblown (Technology & Marketing Law Blog)


US Trade Marks – Decisions

9th Circuit Court of Appeals vacates $60M jury award in Neurovision Med v NuVasive (Seattle Trademark Lawyer)

Precedential no. 31: TTAB affirms mere descriptiveness refusal of “CENTER OF SCIENCE AND INDUSTRY” (TTABlog)

Precedential no. 30: denying cancellation, TTAB finds CMS neither generic nor merely descriptive for wine (TTABlog)


US Trade Marks – Lawsuits and strategic steps

Fuhu – Even Toys”R”Us can’t release a tablet without getting sued – Toys”R”Us allegedly stole kid tablet’s “butterfly” shape from former partner (Ars Technica)

Reddit – Trademark abuse and the “Gaymer” community (EFF)

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


Highlights this week included:

US: 2nd Circuit rules that color can serve as a trademark in the fashion industry, but limits scope of mark for red-soled shoes: Louboutin v Yves Saint Laurent (IP Spotlight) (IPKat) (PHOSITA)

US: 8th Circuit: $222,000 music piracy fine not unconstitutional: Capitol v Thomas – file-sharer to take case to Supreme Court (TorrentFreak) (Recording Industry vs The People) (Ars Technica)

India: Cipla wins landmark Roche v Cipla patent litigation concerning Erlotinib (IIPRD) (Spicy IP) (Spicy IP)


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

Strong IP protection is critical component of trade agreement (BIOtechNOW)

The contributions of Julian Assange to the debate on intellectual property (IP Watch)

IP protection in the Global Competitiveness Report 2012-13 (IPKat)

Members of Congress and Governors backing PhRMA/BIO, calling for 12 years data protection for biologic drugs in TPP (KEI)

Test data protection for medical inventions (KEI)


Global – Patents

Thomson Reuters study explores Apple’s mobile patent portfolio for hints at new iPhone technology (IP Solutions Blog)

Frugal innovation: Will it change the center of global innovation gravity from West to East? (Business IP and Intangible Assets Blog)



FCA issues preliminary injunction barring generic corticosteroid mometasone furoate (MF) nasal spray for treatment of allergic rhinitis: Merck Sharp & Dohme v Apotex  (Patentology)

High Court refuses special leave in TV Now case: National Rugby League Investments v Singtel Optus (IP Whiteboard)

Film studios take the law into their own hands in UK (could it happen here?) (IP Whiteboard)



ACCC legal counsel: Access Copyright licence provides “little value” (Michael Geist)



Why the proposed amendments to the patent law really matter … and maybe not just for patents (China IPR)



EPO codifies CJEU’s decision on human embryonic stem cells (Patent Docs)

Copyright is stuck in the ’90s: Neelie Kroes calls for change in “Copyright and innovation in the creative industries” speech (The 1709 Blog)

Storck can’t register CTM in its chocolate mouse – CJEU dismisses Storck’s appeal (IPKat) (Class 46)

Europe celebrates 20 years of the Single Market (Class 46)

So now we’re agreed, the European Emblem is protected (IPKat)



French anti-piracy agency Hadopi only sued 14 people in 20 months (Ars Technica) (TorrentFreak)



Starting a collecting society (IPKat)



Cipla wins landmark Roche v Cipla patent litigation concerning Erlotinib (IIPRD) (Spicy IP) (Spicy IP)

Thoughts on the Oxford University Press copyright infringement case against Delhi University and an on-campus photocopying shop (Spicy IP) (Spicy IP) (Spicy IP) (Spicy IP)

Protecting parental lines of extant hybrids in India (Part I – Spicy IP) (Part II – Spicy IP)

Govinda gooovinda! Closer look at G.I registry’s decision on Tirupati laddu rectification plea (Spicy IP)



KOPITIAM fight escalates – generic name for Chinese coffee house registered as trademark and asserted against coffee houses  (IP Komodo)



Italian u-turn on latanprost abuse of dominant position dispute (The SPC Blog)



Reports indicate Japan ratifies ACTA (Michael Geist)



District Court of The Hague awards provisional injunction against Teva for duration of PI proceedings: Sanofi v Teva (Irbesartan and HCTZ) (EPLAW)


New Zealand

‘My software, my choice’ – new Patents Bill computer program patentability provision change (Patentology)

ISPs landed with up to 76% of costs of sending 3 strikes piracy notices (TorrentFreak)

New Zealand approaches ‘third strike’ (The 1709 Blog)



Apple battles with A.PL (Class 46)


South Korea

Korea looking into Apple complaint over Samsung’s 3G patent “abuse” (Ars Technica) (FOSS Patents)



Plans to introduce paediatric extensions to Switzerland’s SPC regime (The SPC Blog)

Swiss based firm attempts to monopolise biltong (Afro-IP)

Swiss Federal Patent Court adopts Dusseldorf rules for preliminary taking of evidence (Kluwers Patent Blog)


United Kingdom

EWCA: All claims of HGS patent valid: Eli Lilly v Human Genome Science (EPLAW) (PatLit)

Divide and rule: a new regime for governing British IP (IPKat)

UK and US boy bands, both by the name of One Direction settle trademark dispute (IP Whiteboard)

Illegal file-sharing activity generally logged within three hours, according to new study (Out-Law)

Fifty Shades translated: moral (rights) concerns? (The 1709 Blog)


United States

US General

The brand-name side of the exclusivity equation; exclusivity under fire (FDA Law Blog)

Would a biologic by any other (nonproprietary) name smell as sweet? (Beeser)

Congressional Report: US is negotiating TPP as if fast track authority still exists and its IP provisions go beyond international standards (EFF)

Congress members demand USTR tell the American people what’s going on with the TPP and its impact on digital freedom (EFF) (IP Watch)


US Patents

Patent pendency time series and why care about prosecution delays (Patently-O)

Patent pendency update (Patently-O)

USPTO examiner interviews make the news (PharmaPatents)

First to file practice: an alternative interpretation of the grace period shielding disclosure exception (PharmaPatents)

USPTO proposes new patent fees based on cost-recovery (Patent Baristas)

Your patent has been challenged at the PTAB….now what? (Patents Post-Grant)

New e-filing portal for post grant patent trials unveiled (Patents Post-Grant)

CSL Bank v Alice Corp: Patenting software ideas (Patently-O)


US Patents – Decisions

CAFC: “Second best choice” does not teach away: Santarus v Par Pharmaceuticals (Zegerid) (Beeser) (Patently-O) (Patently-O)

CAFC confirms that U.S. priority claim must be considered when assessing interference timeliness: Loughlin v Ling (PharmaPatents)

CAFC: Analogous art and wilful infringement: K-Tec v Vita-Mix (Patently-O)

District Court Columbia grants FDA’s motion to dismiss KV’s case seeking to restore ophan drug exclusivity for Makena (hydroxyprogesterone caproate) (FDA Law Blog)

District Court Delaware: First-to-file rule trumps forum selection clause: Mitek Systems v United Services Austmobile Association (Docket Report)

ND Mississippi: “Evolving” laws at time of infringement preclude finding of willful infringement and award of enhanced damages or attorneys’ fees: Monsanto v Scruggs et al (Docket Report)

ND Illinois: Alleging infringement by “at least” certain products was “deliberately vague” and failed to state a claim of infringement: Radiation Stabilization Solutions v Varian Medical Systems (Docket Report)


US Patents – Lawsuits and strategic steps

Apple – ITC: Apple seeks sanctions against HTC after inventor of two 4G patents denies that he knows his stuff (FOSS Patents)

Apple – ITC: Apple and HTC confirm recent settlement talks, will continue discussions in the future (FOSS Patents)

Apple – ND California: Apple says Judge Koh can’t dissolve Galaxy Tab 10.1 preliminary injunction while it’s on appeal (FOSS Patents)

Apple – ND California: Apple wants ruling on its FRAND defenses and unfair competition counterclaim against Samsung (FOSS Patents)

Aviva Sports –  Defendant sanctioned for document dump has “chutzpa” to blame plaintiff for reviewing documents too slowly: Aviva Sports v Fingerhut Direct Marketing (Docket Report)

CIVIX-DDI – NPE’s choice of forum given little weight in venue challenge: CIVIX-DDI v Loopnet (Docket Report)

LG – LG challenge to four lighting patents among the reexamination requests filed week of September 4, 2012 (WHDA)

Medicis Pharmaceutical Corp – Medicis files patent infringement suit against Actavis Mid Atlantic in response to Para IV challenge concerning Zyclara cream (imiquimod) (Patent Docs)

Merck – SAMSF, Merck, and Pamlab file new 337 complaint regarding Certain Reduced Folate Nutraceutical Products and L-methylfolate Raw Ingredients Used Therein (ITC 337 Law Blog)

Microsoft – WD Washington: Microsoft and Google’s Motorola Mobility attack each other’s FRAND royalty expert reports (FOSS Patents)

Mondis Technology – ALJ Essex grants motion for summary determination of no section 337 violation by Chimei Innolux in Certain Video Displays (337-TA-828) (ITC 337 Law Blog)

Nintendo – Nintendo attack on video game patents, among the reexamination requests filed week of August 27, 2012 (WHDA)

OSRAM – ALJ Pender grants motion to terminate investigation as to Samsung in Certain Light-Emitting Diodes (337-TA-785) (ITC 337 Law Blog)

Otter Products – ITC to review in part the finding of violation of section 337 in Certain Protective Cases (337-TA-780) (ITC 337 Law Blog)

RMail – RMail challenges the use of subject matter eligibility as an invalidity defense: RMail v and PayPal (Patently-O)

Samsung – Apple leverages jury verdict on patent exhaustion against Samsung’s push for ITC import ban (FOSS Patents)

Teva Branded Pharmaceutical Products – Teva files patent infringement suit against Perrigo in response to Para IV challenge concerning ProAir HFA Inhalation Aerosol (albuterol sulphate) (Patent Docs)


US Copyright

Copyright’s robot wars heat up as algorithms block live-streams first and ask questions later (EFF)

TRAC tracks rise in US copyright litigation (The 1709 Blog)


US Copyright – Decisions

8th Circuit: $222,000 music piracy fine not unconstitutional (Capitol v Thomas) – file-sharer to take case to Supreme Court (TorrentFreak) (Recording Industry vs The People) (Ars Technica)

ND California: BitTorrent defendant not negligent for failing to secure home Wi-Fi network: AF Holdings v Doe (Internet Cases) (EFF)

Oracle must pay Google $1M to cover costs in failed patent case (Ars Technica)

WD Washington: Fight over access to log-in credentials for blog does not trigger copyright pre-emption: Insynq v. Mann (Technology & Marketing Law Blog)

SD Texas: Is a website “published” for copyright law purposes?: Rogers v. Better Business Bureau of Houston (Technology & Marketing Law Blog)


US Trade Marks – Decisions

2nd Circuit rules that color can serve as a trademark in the fashion industry, but limits scope of mark for red-soled shoes: Louboutin v Yves Saint Laurent (IP Spotlight) (IPKat) (PHOSITA)

Precedential no. 28: TTAB finds stylization of “SADORU” not enough to overcome mere descriptiveness refusal for motorcycle seats (TTABlog)

Precedential no. 29: TTAB affirms 2(e)(1) and failure-to-function refusals of SEMICONDUCTOR LIGHT MATRIX for light curing systems (TTABlog)

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


Highlights this week included:

Joint infringement: CAFC changes the law of inducement: Akamai v Limelight and McKesson v Epic Systems (Patently-O) (PharmaPatents) (Beeser) (PatLit) (Inventive Step) (PatentMath) (Patent Docs) (IP Spotlight)

Rojadirecta: Government reverses course and returns domains without explanation. Again. (EFF) (TorrentFreak) (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

Securitisation of IP (Part A – Spicy IP) (Part B – Spicy IP)

A momentary lapse of attention (IP Think Tank)

Frugal innovation: Perfect environment for intangible asset growth! (Business IP and Intangible Asset Blog)

Crowdfunding: public funding of innovations and artistic expression (PHOSITA)


Global – Trade Marks / Brands

Apple v. Samsung: Don’t take your eyes off the brand and user app ball (IP finance)

Domain name disputes on the rise, figures show (Out-Law)


Global – Patents

WIPO Re:Search project strikes first agreements (IP Watch)

Where on Earth could Samsung get the iPhone 5 banned over 4G/LTE patents? (FOSS Patents)


Global – Copyright

Apple now provides online tool to report App Store ripoffs (Ars Technica)

ISP’s copyright obligations under treaty could infringe individuals’ rights, claim EFF and others (Out-Law)

Defending non-commercial licences (TechnoLlama)

DMX: call for action over unauthorised music licences (The 1709 Blog)



Australia reforms its Patents Act 1990 (Patent Docs)

Should compulsory licensing provisions be abolished? (Patentology)

FCA: No damage for infringing copyright in questionnaire: Insight SRC IP Holdings v Australian Council for Educational Research (



Pirate Bay founder will be deported at request of Swedish government, Cambodian authorities confirm (TorrentFreak) (Ars Technica)



Avoiding poison Apples and tending to Blackberries: Did Canada’s 1989 shift to first-to-file nip small-time innovation in the bud? (IP Osgoode)

Supreme Court of Canada agrees to hear Ontario private label drug appeal: Katz Group v. Minister of Health and Long Term Care and Shoppers Drug Mart v. Minister of Health and Long Term Care (Beeser)



Traveling the IP road: What are the top China IP destinations and curiosities? (Part I) (China IPR)

Data on Chinese patent applications and grants suggests growing gap between political rhetoric and current realities (KEI)

New copyright registration system in China (The 1709 Blog)



Telekable and filtering: will the CJEU clear things up?: C-314/12 UPC Telekable Wein (IPKat) (The 1709 Blog)

FS CTM bad faith appeal heads for the CJEU: C-262/12 Majtczak v Feng Shen Technology (Class 46)

Solvay v. Honeywell and an alternative route to a central patent court in Europe (Patently-O)

Casualty of law: will SPC legislation be the next victim after Neurim? (The SPC Blog)

General Court upholds finding of likelihood of confusion for highly similar or identical services in battle between Blue Spot and Blue Pod figurative marks (Class 46)

General Court finds likelihood of confusion between ALIXIR and ELIXEER for identical or highly similar goods (Class 46)

It takes two to Bolar – European courts (Poland and Germany) have excluded third party manufacturers from scope of Bolar exemption (Kluwer Patent Blog)



Losartan: SPC’s paediatric extension and preliminary injunction (Kluwer Patent Blog)



Law firm gets sued over threats to name and shame alleged downloaders (The 1709 Blog)



High cost of filing a patent on a gene sequence (Spicy IP)

Analysing the Delhi University vs publishers photocopying case (Spicy IP)



Patent linkage in Indonesia (IP Komodo)



Japan court: Samsung did not infringe Apple’s media sync patent (Ars Technica) (FOSS Patents)



District Court of The Hague: Amended infringement claim allowed; patent infringement found: Primus v Roche (EPLAW)

Dutch Pirate Party ready to enter national parliament (TorrentFreak)


New Zealand

NZ government backtracks – to Europe – on software patents (Patentology)



The Red Bull case continues (to embarrass the Philippines legal system) (IP Komodo)



Protection of geographical indications in Russia: Is Russian vodka a protected GI? (IP Watch)


United Kingdom

The Big Online Rip-Off: can authors and copyright owners fight back? (The 1709 Blog)

On her Majesty’s secret service: UK extends meaning of IP in phone hacking case to remove self-incrimination privilege: Phillips v Mulcaire (IP Osgoode)

CREATe to examine IP business models (IP finance)


United States

US General

FDA approves Teva’s tbo-filgrastim for severe neutropenia (Beeser)

US film industry praises Republicans on IP and internet freedom (IP Watch)

US film industry (also) likes Democrats’ platform on IP and internet freedom (IP Watch) (Ars Technica)

The coming 505(q) citizen petition cliff and some interesting petition strategies (FDA Law Blog)


US Patents

Announcing Text2PTO: Online filing of your patent applications as text documents (Director’s Forum)

Is Congress getting ready to take on patent trolls? (EFF)

Dissenting opinions at the Federal Circuit (Patently-O)

First to file practice: mandatory derivation proceedings? (PharmaPatents)

Patent settlement agreement challenges – K-dur, Effexor XR, Nexium, Cipro  (FDA Law Blog)

Eight points to know about September 16, 2012: post-grant transitions and deadlines (Patently-O)

USPTO warns on late inter partes patent reexamination filings (Patents Post-Grant)

USPTO releases new proposed fees (Patently-O)

USPTO patent grants: Another record year (3rd in a row) (Patently-O)

Patentability of isolated DNA: A myriad of analogies – AMP et al v USPTO and Myriad  (IPKat)

Beware the US jury: two $1 billion dollar patent damage awards in August: Apple v Samsung; Monsanto v DuPont and Pioneer (PatLit)

Apple v. Samsung: An expert but pro-patent jury? (Patently-O)

The biggest issue with the Apple-Samsung jury verdict: are all those patents really valid as granted? (FOSS Patents)


US Patents – Decisions

Joint infringement: CAFC changes the law of inducement: Akamai v Limelight and McKesson v Epic Systems (Patently-O) (PharmaPatents) (Beeser) (PatLit) (Inventive Step) (PatentMath) (Patent Docs) (IP Spotlight)

CAFC: Apple escapes liability for its cover-flow and spotlight OS features: More in inducement: Mirror Worlds v Apple (Patently-O)

CAFC: Woodrow Woods v. DeAngelo: Make a meaningful supplementation of your contention rog responses (Patently-O)

ND California: Apple v. Samsung and awards of defendant’s profits: the potential for overcompensatory damages in design patent infringement cases (Intellectual IP)

WD Wisconsin: Conclusory allegations insufficient to plead invalidity counterclaim: Wisconsin Technology Venture Group v FatWallet (Docket Report)

ITC: District Court grant of ongoing royalty precludes finding section 337 violation: Video Displays and Products Using and Containing Same 337-TA-828  (Docket Report)

ITC: “Abbreviated” description of spectral region did not create discontinuity sufficient to render patent indefinite: Light-emitting diodes and products containing same 337-TA-784 (Docket Report)

ITC: Initial determination of no section 337 violation by Nintendo in Certain Video Game Systems (337-TA-770) brought by Creative Kingdoms (ITC 337 Law Blog)

ITC affirms ALJ Essex’s decision to stay investigation in Certain Integrated Circuits (337-TA-822) brought by Freescale Semiconductor against MediaTek and others (ITC 337 Law Blog)


US Patents – Lawsuits and strategic steps

AbbVie – AbbVie files patent infringement complaint against Amneal Pharmaceutical in response to Para IV challenge relating to Niaspan (Niacin XR) (Patent Docs)

Apple – Samsung’s designarounds may complicate the ITC investigation of Apple’s complaint (FOSS Patents)

Apple – Apple won’t demand billion-dollar payment or bond from Samsung for at least a few months (FOSS Patents)

Apple – Apple adds Galaxy S III, Note and Note 10.1 to Samsung lawsuit, insists on billion-dollar bond  (FOSS Patents) (Ars Technica)

Apple – Apple and Samsung have to decide how to proceed with their 14 back-burner patents in California (FOSS Patents)

GlaxoSmithKline – GlaxoSmithKline files patent infringement suit against Apotex in response to Para IV challenge relating to Avodart (dutasteride) (Patent Docs)

HTC – After winning transfer to Delaware, HTC wants claims over six Apple patents stayed (FOSS Patents)

Janssen Products – Janssen files patent infringement suit against Lupin, Teva, Mylan over ANDA filing to manufacture generic Prezista (darunvir) (Patent Docs)

Leviton – Leviton files enforcement complaint in Certain Ground Fault Circuit Interrupter (337-TA-739) (ITC 337 Law Blog)

Madstad Engineering – Madstad and Mark Stadnyk sue USPTO alleging move to first-to-file regime violates Constitution (Inventive Step)

Mallinckrodt – Mallinckrodt files patent infringement suit against Apotex following Para IV challenge relating to Pennsaid (diclofenac) (Patent Docs)

Merck & Co – Merck & Co file patent infringement suit against Sun Pharmaceutical in response to Para IV filing concerning Ganirelix Acetate injection (Patent Docs)

Monsanto – Solicitor General recommends the Supreme Court deny cert in Bowman v. Monsanto Roundup Ready Seed patent litigation (Patent Docs)

Purdue Pharmaceutical Products – Purdue files patent infringement suits against Watson and Actavis in response to Para IV challenge concerning Intermezzo (sublingual zolpidem) (Patent Docs)

Samsung – ITC terminates investigation as Samsung and Osram settle global LED patent war (Green Patent Blog)


US Copyright

Why Johnny can’t stream: How video copyright went insane – Deploying 10,000 tiny antennas makes no technical sense, but the law demands it (Ars Technica)


US Copyright – Lawsuits and strategic steps

IMAGiNE – IMAGiNE BitTorrent piracy group members all plead guilty (TorrentFreak)

Paramount Pictures – The Godfather: Can you copyright a film character? (The 1709 Blog)


US Trade Marks – Decisions

California Court of Appeals rejects criticism of Amazon’s actions over potential counterfeit sales: Tre Milano v (Out-Law)

4th Circuit Court of Appeals affirms in part, vacates in part and remands to ED Virginia in Rosetta Stone v Google (Maryland IP Law Blog)


US Trade Marks – Lawsuits and strategic steps

Rojadirecta – Rojadirecta: Government reverses course and returns domains without explanation. Again. (EFF) (TorrentFreak) (Ars Technica)

In my book Outpacing the Competition, I emphasize the importance of sales within the scope of an IP strategy.  By sales, I mean the art of selling: prospecting, qualifying, presenting, overcoming objections, closing, and follow up.  This, of course, is how IP ultimately realizes value.  Somebody by some means needs to sell something, either the IP itself or a solution derived from that IP.

When I think of where companies leave the most value on the IP table, I have to say it is the capacity of the associated enterprise to sell that IP.  Behind every great IP success, you will find a first rate sales function.  Sometimes this will be in the form of a traditional face-to-face sales force.  Sometimes it will be via other communications mediums – that will have actual people doing the selling.

The IBM direct sales force in the 1960s and 70s was legendary in taking a good enough – not the best – computer suite and making it the industry standard for computers in the free world.  Microsoft got to where it is by leveraging the success of that sales force when it became the standard for IBM and then IBM compatible machines.  Apple, recognizing that it cannot depend entirely on the Web or the sales forces of distributors, has its own sales people in its own stores – and Sony has recently seen to match.  The big pharmaceutical companies all have large sales forces to sell their IP based solutions.

If your IP of merit is not delivering the value that you expect it to deliver, the problem will likely rest in the sales function.  A fully integrated IP strategy has to include the sales component, and has to include a strong bridge of communication between those tasked to protect IP and those tasked to realize its value.  Sales cannot work miracles; the IP needs to read on something that end users want and need.  Sales can ensure that if you build it, people who you would like to come will see the benefit of doing so.

Image credit: Hemera Big Box of Art 1 Million

A Momentary Lapse of Attention

It still amazes me every time I see how unforgiving the natural world can be to a momentary lapse of attention on the part of those within it.  Of course the reason for this is because the hunters have trained themselves to watch for the lapses.  The latest I saw was a barracuda that leveraged my film work to catch a grouper.  Maybe it was my video light, maybe just my presence, but something distracted that grouper for a millisecond, and that was all it took.  It was quick, incredibly violent, and all captured on film.  The event is now itself an IP asset in my files; and you tell me whether I should feel bad for the grouper, good for the barracuda, or good for the many smaller fish that might have ended up inside that grouper.

In IP, a momentary lapse of attention can happen in a courtroom, it can happen when drafting a patent, it can happen when promoting an idea, and those people who can leverage it, who do not have your best interests in mind, do stand ready to pounce.  They are waiting for it – just because you are paranoid doesn’t mean they aren’t out to get you.  Entire businesses in patent assertion are built around the premise.  What hurts you could become a great benefit to someone else.

Never assume that anything you say or write will not be scrutinized for a lapse of your attention.  It can pay to be just a little paranoid if you hope to survive.

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


Highlights this week included:

US: Apple wins $1.05 billion verdict: Apple v Samsung (Patently-O) (Ars Technica) (Patentology) (Spicy IP) (Protecting Designs) (FOSS Patents) (Patentology) (Spicy IP) (IPKat) (IP Asset Maximizer Blog) (EFF) (Patents Post-Grant) (Inventive Step) (Docket Report)

Korea: Court rules Samsung didn’t copy iPhone design but older iPhones, iPads and Samsung devices are banned over patent violations (Ars Technica) (IP Solutions Blog) (FOSS Patents) (Korea Law Blog)

US: CAFC affirms validity of Lilly’s Alimta (Pemetrexed) compound patent: Eli Lilly & Co v Teva Parental Medicines (Orange Book Blog) (Beeser) (Patent Docs) (Patent Law Practice Center)

US: FBI says pirated Android apps a “top priority”, seizes three domains (Ars Technica) (TorrentFreak) (The 1709 Blog) (Out-Law)


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

Culture – as close as you can get to a company’s soul, guard it well (IP Think Tank)

Interlinked defense (IP Think Tank)

Open or closed case (IP Think Tank)

Parallel lifecycles (IP Think Tank)

UNESCO says monopolisation of information puts barriers to a better life (EFF)

BIO voices agree: intellectual property delivers (BIOtechNOW)


Global – Patents

Where manufacturing goes so follows innovation (IP Think Tank)

Patent valuations, why do they differ from selling price? (ipeg)

Financial importance of a prior art search (IP finance)

First agreements concluded under WIPO Re:Search for research on neglected tropical diseases (WIPO)

Apple and Samsung should fight in the marketplace, not the courtroom (EFF)


Global – Copyright

Authors’ earnings buoyed by movie income (IP finance)

Civil society groups oppose US and Australia’s TPP proposal on exceptions and limitations (EFF)



I’d walk a mile for an unbranded cigarette – the economics of cigarette packaging (IPKat)

FCA: Servier’s request to join several Apotex entities located outside Australia in Perindopril infringement case refused (



New industrial property regulations expected to enter into force 1 September (Afro-IP)



Coexistence of trade marks: Brazil’s new norm (IP tango)



Supreme Court speaks: how to assess fair dealing for education (Michael Geist)



The rise and rise of China as an IP superpower (IAM)

China should tackle patent quality problems; but doing so will not fix its innovation deficit (IAM)



Danish High Court sets aside a patent as “presumably invalid” for the first time in animal feed litigation between Danisco and Novozymes (Kluwer Patent Blog)



A new highest patent court for Europe? Not as long as the CJEU is here (Patently-O)

CJEU: Colourful Rubik’s Cube description leaves public ‘confused’ and ‘scratching their heads’: Seven Towns v OHIM (IP Osgoode)

EPO EBoA: Requests to correct denied: G 1/10 (IPKat)

EU courts may not share enforcement body’s view that linking to infringing material is itself illegal, says expert (Out-Law)



Google loses leverage as Motorola Mobility confirms German patent license to Apple (FOSS Patents) (Ars Technica)

Google fights proposed charge on news snippets and headlines (The 1709 Blog)



CSIR finally discloses details of patent licensing: more than 400 patents licensed over last ten years! (Spicy IP)

Novartis challenge to India patent law put off to 11 September (IP Watch)

SCP’s questionnaire on exceptions and limitations to patents (Spicy IP)

Application of de minimus non curat lex in the context of copyright law: India TV v Yashraj Films (Spicy IP)

District Judge of Lucknow grants interim injunction against Thomson Reuters and its Indian operations for infringing copyright in Eastern Book Company’s “Supreme Court Cases”  (Spicy IP)



Data exclusivity in Indonesia (IP Komodo)



Is 18-month publication in Israel a trap for unwary U.S. patent applicants? (America-Israel Patent Law)

Israel Supreme Court overturns decision regarding “More Stars” trade mark in dispute between flower growers (The IP Factor)



The role of the Judge in reviewing court expert’s reports, inventive step and product by process claims in a recent decision of the Court of Turin (Kluwer Patent Blog)



Monitoring file-sharers forbidden in Norway (TorrentFreak)


South Africa

Discovery Health’s extraction of Practice Code Numbering System held to infringe copyright (Afro-IP)


South Korea

Court rules Samsung didn’t copy iPhone design but older iPhones, iPads and Samsung devices are banned over patent violations (Ars Technica) (IP Solutions Blog) (FOSS Patents) (Korea Law Blog)



Commercial Court of Barcelona: Obtaining marketing authorisation and price earlier than approximately 50 days before the expiry date may be an act of unfair competition – Montelukast dispute between Merck Sharpe & Dohme and KRKA Novo (Kluwer Patent Blog)



Movie studio wants to bankrupt Pirate Bay founder (TorrentFreak)


United Kingdom

Universities to collaborate on new copyright initiative to meet challenges of creative economy (Out-Law)

UK IPO changing practice regarding merger of trademarks, effective 1 October (Class 46)


United States

US General

IOM issues report on “Accelerating the Development of New Drugs and Diagnostics: Maximizing the Impact of the Cures Acceleration Network” (FDA Law Blog)


US Patents

Constitutional challenge to the first-to-invent rule: MadStad & Mark Stadnyk v. USPTO (Patently-O) (Patents Post-Grant)

How the AIA violates TRIPS (Patently-O)

Patent eligibility and biology (Patent Docs)

Are the courts correct in their assumption that a patent issued on non-patentable subject matter is invalid? (Patently-O)

List of statutory/non-statutory software patent claims (AwakenIP)

USPTO satellite office up and running in Detroit (Director’s Forum)

First to file practice: Commonly owned applications (Pharma Patents)

USPTO extends first action interview program through November 16 (Pharma Patents)

USPTO to permit assignees to file and prosecute patent applications (Pharma Patents)

USPTO requires new PRPS e-filing system for new patent trials (Pharma Patents)

Micro-entity status: Can we all qualify? (Patently-O)

Can a third party challenge section 101 subject matter eligibility in the USPTO’s new post-grant review procedure? (Patently-O)

USPTO provides “cheat sheet” to final PTAB rule modifications (Patents Post-Grant)

Obtaining an electronic filing date at the PTAB (Patents Post-Grant)

Declaratory judgment & USPTO business method patent challenges (Patents Post-Grant)

FDA gears up for GDUFA implementation and ANDAgeddon (FDA Law Blog)

US drug sales and a patent cliff (Patent Law Practice Center)


US Patents – Decisions

CAFC: Prove every claim element: Whitserve v Computer Packages (Patently-O)

CAFC declines to import limitations from figures into claims, reverses district court: Jang v Boston Scientific (non precedential) (GRAY on Claims)

CAFC holds that prior art cited by USPTO is presumptively enabled: In re Antor Media Corp (Pharma Patents) (WHDA)

CAFC affirms validity of Lilly’s Alimta (Pemetrexed) compound patent: Eli Lilly & Co v Teva Parental Medicines (Orange Book Blog) (Beeser) (Patent Docs) (Patent Law Practice Center)

CAFC reverses and remands in appeal against invalidity finding: Amkor v ITC (ITC 337 Law Blog) (Patently-O)

ND California: Apple wins $1.05 billion verdict: Apple v Samsung (Patently-O) (Ars Technica) (Patentology) (Spicy IP) (Protecting Designs) (FOSS Patents) (Patentology) (Spicy IP) (IPKat) (IP Asset Maximizer Blog) (EFF) (Patents Post-Grant) (Inventive Step) (Docket Report)

Delaware: Transaction entry system patent held invalid for failure to claim patentable subject matter: CyberFone Systems v Cellco Partnership (Docket Report)

CD California: History of aggressive patent enforcement supports declaratory judgment claim: General Electric Company v NeuroGrafix (Docket Report)

WD Pennsylvania: Noninfringing sales may determine infringement damages: Carnegie Mellon University v Marvell Technology Group (Docket Report)

ITC issues public version of opinion finding no violation of section 337 in Certain Semiconductor Chips (337-TA-753) brought by Rambus against numerous respondents (ITC 337 Law Blog)


US Patents – Lawsuits and strategic steps

Apple – Apple v Samsung: Court schedules December 6 hearing on Apple’s push for triple damages from Samsung (FOSS Patents)

Apple – Apple v Samsung: Apple to request preliminary injunction against eight Samsung products in wake of jury verdict (Ars Technica) (FOSS Patents)

Apple – Apple v Samsung: Samsung wants Galaxy Tab 10.1 ban lifted in light of jury verdict (FOSS Patents)

Apple – Apple v Samsung: Samsung avoids adverse jury instruction for spoliation of evidence (Docket Report)

CVS Caremark – Attack on two Crocs Shoe patents, among the reexamination requests filed week of August 20, 2012 (WHDA)

Exela – Suing the USPTO to cancel improperly issued patents – Exela Pharma v Kappos (OFIRMEV / acetaminophen) (Patently-O)

Hitachi – Hitachi files new 337 complaint against Monster Cable, Skullcandy, Callaway and many others regarding Certain Sintered Rare Earth Magnets (ITC 337 Law Blog)

Isola – Isola files enforcement complaint against Taiwan Union Technology Corp. in Certain Prepregs, Laminates, And Finished Circuit Boards (337-TA-659) (ITC 337 Law Blog)

Merck & Co – Merck asks Supreme Court to review 3rd Circuit K-Dur (potassium chloride) decision (Patent Docs)

Merck Sharp & Dohme – MSD files patent infringement suit against Watson in response to Para IV challenge regarding Propecia (finasteride) (Patent Docs)

Motorola – ITC remands investigation of Motorola complaint against Apple to judge: only one patent left (FOSS Patents)

Santarus – Santarus files patent infringement suit against Dr Reddy’s in response to Para IV challenge in connection with Zegerid (omeprazole / sodium bicarbonate) (Patent Docs)

Shire – ANDA counterclaim of non-infringement not mooted by dedication of Intuniv (guanfacine) patent to public: Shire v Impax (Beeser)

Standard Innovation Corp. – ALJ Pender grants joint motion to terminate in Certain Kinesiotherapy Devices (337-TA-823) (ITC 337 Law Blog)

Technology Properties – ITC institutes investigation (337-TA-853) regarding Certain Wireless Consumer Electronics Devices against numerous respondents including ACER, Garmin, HTC, Nintendo and others (ITC 337 Law Blog)

VirnetX – ITC decides not to review initial determination terminating investigation in Certain Devices With Secure Communication Capabilities (337-TA-818) brought by VirnetX against Apple (ITC 337 Law Blog)


US Copyright

FBI says pirated Android apps a “top priority”, seizes three domains (Ars Technica) (TorrentFreak) (The 1709 Blog) (Out-Law)

Why did Google flip-flop on cracking down on “rogue” websites? Some troubling possibilities (Technology & Marketing Law Blog)

MPAA budget slashed in half, are they dying? (TorrentFreak)

Google URL takedown requests up 100% in a month, up 1137% on 2011 (TorrentFreak)


US Copyright – Decisions

Court of Appeals for the 2nd Circuit rules contract claims not pre-empted by Copyright Act: Forest Park Pictures v Universal Television Network (Patent Arcade)

Court of Appeals for the 2nd Circuit: Internet tv streaming service not a “cable system” therefore unable to obtain compulsory license: WPIX v ivi (Recording Industry vs The People) (IP Spotlight)

Massachusetts: Tenenbaum damages upheld (The 1709 Blog)


US Copyright – Lawsuits and strategic steps

Patrick Collins – Doe #41’s motion to quash, sever & dismiss granted in Patrick Collins Inc v Does 1-45 (Recording Industry vs The People)

Sony BMG – Motion to reduce $675,000 verdict denied in SONY v Tenenbaum (Recording Industry vs The People)

Interlinked Defense

In IP strategy, any isolated IP position of interest to a competitor is likely to be a vulnerable position.  There are many ways to get around it including, but not limited to validity challenges, design around, undetected infringement, calling your bluff on willingness to enforce, countersuits, hostile takeover, picket fence, and leapfrog.  This is why when you protect intellectual property, you should think in terms of an interlinked defense where your IP position can handle the loss of some individual positions without losing IP protection on the whole. For example, a key polymer may be protected by a patent that becomes central to the business model.  Included within the protection of the central patent may be a brand name, a trade secret on production methods, other patents on similar polymers, patents associated with the use of the polymer, defensive publications perhaps on some other uses to prevent one customer from locking up sales to another customer, and perhaps new patents created by new combinations of compounds built off that core polymer invention.

All of these may serve in their way to protect your ability to leverage the propriety of the core invention in the marketplace by making it more challenging for competitors to get around your position.  While strategically you cannot expect to make an IP position that is unassailable to someone with the resources and wherewithal to challenge it.  You can, with reasonable confidence, build an IP position that would be so difficult to challenge that it should be better for rational competitors, partners, and customers, to interact with you concerning that IP on your terms.

Image credit: OUCHcharley

Open or Closed Case

What is better for a product-based IP Strategy, an open system of innovation or a closed system?  The answer is both and neither, and here is why.

Strategy, at its core, is the interplay between interaction and isolation.  Everything that you do in IP strategy, from the most complex to the most mundane, is to create favorable interactions and isolations between you, customers, partners, and competitors.  For example, the right to enforce exclusivity granted by a patent could create a useful interaction in the form of a license to a partner at the same time it creates a useful isolation by discouraging a competitor from infringing.

In competitive strategy, interaction is seen as a way to achieve growth and isolation is seen as a way to cause decline.  Watch any competitive sports game, and you will see this interplay, for example, a team working together to keep a ball away from a competitor’s top scorer.  Considered in this growth light, an open system would seem a good way to go since it maximizes the potentially useful ideas and resources available to advance a business, perhaps introducing from many people an abundance of useful ideas and resources that a single individual or enterprise could never match.  We see an open system with products such as Android in mobile telephones that many product companies have adopted for their smartphones.

The catch is that in innovation strategy and its impact on competitive strategy, some of the greatest forms of diversity are actually caused by isolation.  The diversity of everything, from species of animals to human languages, was caused by the separation of animals and people respectively.  Likewise in innovation, many disruptive ideas, such as the steam ship, developed outside the innovation circles of those selling the previous generation solutions, in this example the clipper sailing ships.  Breakthrough diversity would seem to favor a closed system.  Apple’s pioneering iPhone stems from such a closed system.

There is one pattern to think about as you debate which system to use for your innovation and associated IP strategy.  The usual pattern in product solution development is for truly innovative ideas to emerge from closed systems where they are free to develop far enough away from the mainstream to avoid being diluted by ideas that would pull them back to the traditional ways.  iPhone, for example, was created to give customers what they did not yet know they wanted, and therefore could never have communicated if they had been involved in the creation process.  Open systems often come in to play as a means to make an alternative competitive product solution very fast given that a huge number of people can have an input on building something new from the kernel of the idea generated by the pioneering product solution of its kind.  Android appears in that role.  Linux also arose on the framework of an idea for computer operating systems first developed in a closed system environment.  The question is whether an open solution like Android or its equivalent can exist without there being a closed solution like iPhone or equivalent out there first.

As an IP strategist, you should leverage both open and closed systems.  You would appreciate that the most brilliant ideas do not tend to come from committees – a plus for closed systems – and that individuals are not always the best at looking at the diversity of possibilities – a plus for open systems.  You likewise recognize that committees can safeguard against catastrophic ideas – catastrophic potential being a negative for closed systems – and that a diversity of thought can make it impossible to set a focused direction onto something truly innovative – lack of focus being a negative for open systems.

So you need a bit of both.  And if a decision to be open or closed becomes a company doctrine, start worrying.  It’s not a problem if you lean one way or another, but if you make it a policy to be just one way or another, it will likely bite you somewhere along the line.

Image credit: maury.mccown

Parallel Lifecycles

IP itself has a lifecycle decoupled from the associated product solutions itself.  A patented invention may apply to several product solutions which may be at different phases of their lifecycle.  A brand may have a lifecycle that will live through many generations of patented products as an enterprise’s capacity to make product solutions appealing to customers changes over time.  Managing these different lifecycles is where part of the art of IP strategy comes into play, and like many arts, learning to do it well depends upon individual and enterprise experience.  The guiding line is to first ask what customer experience you would like the end users of your IP to experience in what regions and for how long before the next generation.  Next ask if your IP in all its possible configurations that we have discussed give you adequate ownership of the customer experience to shape the markets as best suites your business goals through the various associated technology, product, and IP lifecycles.  For that matter, you can also include customer lifecycles because even the pure logic of a technical solution is subject to customer cycles of higher and lower interest.

Image credit: Tom Wachtel

Having focused on the meaning and creation of learning organizations for a period in my life I can’t help coming back from time to time to thinking about organizations as living organisms.

The metaphor actually makes quite a bit of sense…like an organism (human for example) each organization is made up of different composing parts with distinct functions all working together to reach specific common goals. If the function of one organ is impaired it can inevitably affect other functions and the organism as a whole.DNA rendering

Just like in humans bad behaviors can lead to long term risks that might be hard to avoid. I often like to make the analogy that to have a misaligned IP department is like smoking or a bad diet, it introduces a small amount of risk in the system each day (operating risk) that over time can be more harmful than low probability high impact accidents (like for example a litigation).

Just like humans, organizations interact heavily with their environment both in a reactive/adaptive way as well as an active way (changing/shaping their surrounding environments). In many respects thinking about the creative process, reactions to change and approaches to implement change, decision making reasoning, and the behavior of an individual allows for parallels and lessons to be drawn at the corporate level…after all we are the ones taking the decisions or having to adapt to them.

One aspect of the parallel expressed in this metaphor that is somewhat elusive however is the predictive nature and motivation behind the organization’s behavior. The soul and behavior drivers/“psychology” of the organization is a complex matter that perhaps most accurately can be defined through the intersection of corporate culture (the company’s soul), individual perceptions and individual drivers.

The culture of an organization is often shaped heavily in the beginning years of its inception. The organization’s brand and historic heritage then give it its “raison d’être” and sustain a healthy and vibrant culture.  This can be easily seen when we look at small and medium size companies and in some cases even giants like Google, Apple, Ikea etc. Companies like these have such strong cultures that they form the overriding moral code according to which decisions are made and actions are motivated (from hiring, product development and so on).

For other historic giants like GM, GE (other) things become a bit more complex as communication and cooperation between the business sections becomes increasingly challenging and culture is taken over by strict formalized processes and targets. This often leaves little room for creativity and inspiration which can prove to be like a slow releasing poison for the whole organism. At this stage most often the company’s personality and brand promise becomes increasingly confusing and unreliable for the market which leads in turn to losses of market share and the capacity to attract valuable employees thereby reinforcing the negative loop. These damages although gradual are often long lasting and, in some cases deadly.

You may ask, ok but what does this have to do with IP strategy? We have often talked in this blog about the necessity of a company to drive and adapt fast to change, to innovate at a greater pace than competitors and so on. A lot of these aspects abovementioned have to do with making sure the right people are at the right moment in the right place. With international competition for qualified human capital fierce making sure that you have the right people on board is a challenge to say the least. In today’s environment corporate culture plays a big role in attracting, engaging,motivating and retaining the right employees for you (see here the effects that an unclear corporate culture has had over the attraction of valuable employees at Yahoo for example).  We have also talked about the necessity of IP to have a back and forth communication with sales and marketing – this helps keep the company grounded and focused on its brand promise and outside communications. As technology surrounds every aspect of our life and consumers become more knowledgeable different philosophies and expectations will be born. Setting your brand promise and staying true to it with consistent norms/cultures could be the difference between success or failure in your chosen market.

Corporations that have realized the above often actively search for ways to reinvent their identity and return to a “small company mentality”. Analyzing and treating a company whose culture has become eroded or damaged remains a mammoth but not impossible task and an intriguing project.  It has to do with the basic fabric of the corporate identity from the cellular level up. It is good to realize that quick fixes cannot be found here, and that change has to be driven by upper managment and embraced throughout the company.  Spotting changes in individual and organizational behavior from time and calling them out, and not being afraid to make difficult decisions is always the better option for safeguarding your organization’s most unique and priceless asset, its culture.

Image credit: ynse

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