Manual IP News and Unitary Patent News edited by Arnold & Siedsma
 
Unified Patent Court News edited by Bristows
 
Kluwer Copyright Cases edited by IViR
 
Kluwer Patent Cases edited by Brinkhof
 
IP Law Daily - Selected US Cases edited by CCH
 
Volume 2018 - Issue 3
February 2018
 
 
 

News

 
General Information (5)
 
 
Benelux, Serbia, Slovakia, Romania revise IP-related fees
 
The intellectual property offices in Benelux, Serbia, Slovakia, and Romania have revised fees for their services in trademark, design and patent protection.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Benelux, Romania, Serbia, Slovakia Full text
 
 
 
 
 
Greece makes mediation compulsory for civil IP disputes
 
On 17 January 2018, the Greek government published Law 4512/2018, making mediation attempt compulsory for civil disputes relating to trademarks, patents and industrial designs before they can be taken to the courts for judicial proceedings.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Greece Full text
 
 
 
 
 
Proposal for Dutch Trade Secrets Act tabled in parliament
 
To standardise the national laws relating to unlawful acquisition, disclosure and use of trade secrets with that of the other member states of the European Union (EU), a legislative proposal for the Dutch Trade Secrets Act was presented to the Dutch House of Representatives (lower house) on 10 November 2017.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Netherlands Full text
 
 
 
 
 
USPTO publishes revised fee schedule
 
The United States Patent and Trademark Office (USPTO) has published revised fee schedule applicable for its products and services, and the new fee schedule came into effect on 16 January 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
United States of America Full text
 
 
 
 
 
Amended IP law enters into force in Vietnam
 
The Vietnam government has recently amended its intellectual property (IP) law, and the new law came into effect on 15 January 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Vietnam Full text
 
 
 
 
 
Patents/Utility Models (17)
 
 
Brazil issues supplementary guidelines on chemical patent applications
 
On 2 January 2018, the Brazilian Patent and Trademark Office (BRPTO) published new guidelines for the examination of patent applications involving chemical inventions.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Brazil Full text
 
 
 
 
 
Taiwan, Canada start PPH Mottainai programme
 
The Taiwan Intellectual Property Office (TIPO) and the Canadian Intellectual Property Office (CIPO) have commenced a Patent Prosecution Highway (PPH) Mottainai programme between the two offices from 1 February 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Canada, Taiwan Full text
 
 
 
 
 
Chile issues clarification on divisional applications
 
In November 2017, the National Institute of Industrial Property of Chile (INAPI) published an update of the patent examination guidelines clarifying certain issues relating to divisional patent applications, especially the deadline to file, term and the due date for the payment of maintenance fees.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Chile Full text
 
 
 
 
 
China, Germany extend PPH pilot
 
The State Intellectual Property Office of People’s Republic of China (SIPO) and the German Patent and Trade Mark Office (DPMA) have extended their Patent Prosecution Highway (PPH) pilot programme for a further period of three years, making the accellerated examination procedure for patent applications available till 22 January 2021.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
China, Germany Full text
 
 
 
 
 
Italy implements UP laws and ratifies UPC Protocol on Privileges and Immunities
 
A law has been adopted in Italy empowering the government to enact provisions of the EU Unitary Patent regulation and of the Unified Patent Court Agreement.

This has been reported by SIB. ‘Italy has also recently ratified the Protocol on Privileges and Immunities of the Unified Patent Court.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union, Italy Full text
 
 
 
 
 
Stjerna informs German FCC of possibly unlawful publications on his complaint
 
German attorney Ingve Stjerna, believed to be the man behind the German constitutional complaint against ratification of the UPCA, is not impressed by calls to publish his complaint.

Instead, in a reaction on his website which was updated last week, he made clear he doesn’t want others to publish details about the complaint either. ‘Most recently, individuals (…) have published detailed information from the complaint brief without the consent of the respective right owner. The court has been informed about this, the lawfulness of the incident is under review by different authorities.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union, Germany Full text
 
 
 
 
 
Provisional application phase UPCA will last six to eight months
 
The provisional application phase of the Unified Patent Court Agreement will have to last between six to eight months in order for the Court to become operational.

This is explained in an article of Herbert Smith Freehills on developments concerning the Unitary Patent system.

Much depends on the outcome of the constitutional complaint that was filed against UPCA ratification in Germany. If it were to be dismissed, ‘Germany will be able to ratify the UPCA soon after. There has, however, been talk of the possibility of the case being referred to the Court of Justice of the EU (CJEU), which would cause substantial delay to the case being decided and ultimately to Germany’s ratification.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union Full text
 
 
 
 
 
Protective letters at the UPC
 
The use of protective letters at the Unified Patent Court is the subject of a recent article of Accura Advokatpartnerselskab.

‘Preparing a suitable Protective letter is not an easy task as a defence needs to be prepared before the attack is launched and known to the defendant. (….) Strategically, one should avoid litigating the case in the Protective letter, i.e. arguing the whole case. Otherwise, the defendant runs the risk of leaving the judge(s) with the impression that the defendant has now been heard and that certain facts and statements are left undisputed. This may prompt the judge(s) to be less hesitant to continue ex parte if they disagree with the arguments made in the Protective letter.'

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union Full text
 
 
 
 
 
‘Bury the UPC’
 
It is time to acknowledge that the UPC in its current form will not see the light of day.

This is argued in an IP Copy article. According to the author, the UPC looked ‘fatally wounded’ on 23 June 2016, the day of the Brexit referendum, ‘and I haven’t seen many signs of life since’.

He suggests to ‘start negotiating necessary amendments to the relevant agreements amongst the 27 remaining EU members. Just a few suggestions from my side: 1) English only. This may be more acceptable for France and Germany now, since there are only two smaller EU countries left with English as their official language. 2) Don’t bother finding a new city for the London court. Just send the work to Paris and Munich. 3) Reduce the renewal fees in view of the smaller geographical coverage in an EU that doesn’t include the UK.’

According to the article, a mechanism should be designed for non-EU EPC countries to join the system later.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union Full text
 
 
 
 
 
Opinions published on complaint against UPCA ratification in Germany
 
Several organisations have published their view on the constitutional complaint against ratification of the Unified Patent Court Agreement in Germany. The complaint was filed last year by European patent attorney Dr. Ingve Björn Stjerna.

The Federal Constitutional Court in Germany requested a series of associations and institutions to submit their views concerning the case before the end of 2017. Four of these, the DAV, GRUR, BRAK and EPLIT have now published the findings they sent to the FCC. They all think the complaint should not be admitted, or the claims rejected.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union, Germany Full text
 
 
 
 
 
Latvia ratifies UPC Agreement
 
On 11 January 2018, Latvia became the 15th country to ratify the Unified Patent Court Agreement (UPCA) after it deposited its instrument of ratification with the General Secretariat of the Council of the European Union in Brussels.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union, Latvia Full text
 
 
 
 
 
English version EPLIT comments German constitutional complaint published
 
The European Patent Litigators Association EPLIT has published the English translation of its comments to the German Federal Constitutional Court concerning the complaint against UPCA ratification in Germany.

EPLIT argues the complaint should be dismissed.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union, Germany Full text
 
 
 
 
 
Parliamentary committee Luxembourg recommends to approve PPI of UPC
 
A committee of the Luxembourg Chamber of Deputies has recommended that the Chamber adopt the bill approving the Protocol on Privileges and Immunities (PPI) of the Unified Patent Court (UPC).

This has been reported by Bristows. ‘Both the UPC’s Court of Appeal and Registry will be in Luxembourg, and Luxembourg is one of the four countries that must deposit its instrument of ratification, approval or accession in order for the PPI to come into force.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union, Luxembourg Full text
 
 
 
 
 
Spain sticks to its position: no membership of Unitary Patent system
 
The Spanish government has repeated it doesn’t want Spain to be part of the Unitary Patent system.

This has been reported by Ponti IP in Barcelona.

In answer to a question of the Spanish member of parliament Patricia Blanquer (PSOE), the government stated the system creates a disadvantages for Spanish companies, as Spanish is not one of the languages of the system, Spanish SMEs could be forced to defend themselves in foreign courts and Spanish wouldn’t even be the language of litigation in a case between two Spanish companies.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 13 Feb 2018
 
European Union, Spain Full text
 
 
 
 
 
UK to charge for excess claims, excess pages
 
In addition to increasing the existing patent application, search, examination and renewal fees, the UK Intellectual Property Office (UKIPO) is planning to introduce excess claims and excess page fees, and the new fees are expected to take effect from 6 April 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
United Kingdom Full text
 
 
 
 
 
U.S. court holds PTAB’s time-bar determination is appealable
 
In a 9-4 decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) in Wi-Fi One, LLC v. Broadcom Corp. held that the decisions of the United States Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) on determining whether an inter partes review (IPR) was timely filed are appealable.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
United States of America Full text
 
 
 
 
 
PCT Union revises rules relating to acceptance of previous search results
 
On 11 October 2017, the Assembly of the International Patent Cooperation Union (PCT Union) adopted amendments pertaining to taking into account by an International Searching Authority (ISA) of the results of earlier search and classification by the receiving Office.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
World Intellectual Property Organization Full text
 
 
 
 
 
Trademarks (7)
 
 
Argentina to introduce changes in trademark opposition procedure
 
In an effort to simplify administrative procedures relating to trademarks before the National Administration, the Argentine President has issued an emergency decree that proposes wide ranging changes to the trademark opposition procedure.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Argentina Full text
 
 
 
 
 
Austria introduces further revisions to trademark law
 
In an effort to implement the European Union (EU) Directive (2015/2436), Austrian Patent Office has introduced a series of changes into the Austrian Trademark Protection Act, in addition to making changes to official fees.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Austria Full text
 
 
 
 
 
Austria introduces fast track service for trademark registrations
 
The Austrian Patent Office (APO) has recently introduced a fast track application process for trademarks, which facilitates registration of word or figurative individual trademarks within two weeks if the application is filed online and no further interaction is necessary.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Austria Full text
 
 
 
 
 
Brazil to expedite substantive examination of trademark applications
 
On 26 December 2017, the Brazilian Patent and Trademark Office (BRPTO) issued a new resolution aimed at facilitating fast-tracking of the procedure relating to substantive examination of trademark applications.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Brazil Full text
 
 
 
 
 
Germany introduces change in practice on renewal of trademarks
 
The German Patent and Trademark Office (DPMA) has recently published a notice regarding change in practice pertaining to renewal of trademark registration and advising trademark owners to update their service address with DPMA.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Germany Full text
 
 
 
 
 
Malawi releases new trademark legislation
 
Malawi has recently published the Trademarks Bill (2017), which will eventually replace the existing trademark law, the Trade Marks Act 1957 (which was based on the UK Trade Marks Act 1938), once the President assents to it and the Bill becomes law.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Malawi Full text
 
 
 
 
 
New Zealand to revise trademark practice guidelines
 
The New Zealand Intellectual Property Office (IPONZ) was planning to amend its trademark practice guidelines and specifications, which are likely to be issued in early 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
New Zealand Full text
 
 
 
 
 
Industrial Models and Designs (2)
 
 
Indian registered designs data now on DesignView
 
Effective 19 January 2018, the Indian Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) integrated Indian registered designs data into the DesignView search tool, raising the number of intellectual property offices to join DesignView to 63.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
India Full text
 
 
 
 
 
Spain withdraws declaration on level three of standard designation fee
 
On 26 December 2017, the Spanish Patent and Trademark Office (OEPM) notified the Director General of the World Intellectual Property Organization (WIPO) of Spain’s decision to withdraw from the declaration it made on 1 January 2008 for the application of level three of the standard designation fee under the provisions of the of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 13 Feb 2018
 
Spain Full text
 
 
 
 

Cases

 
Copyright (5)
 
 
Hypothetical licence fee, Supreme Court of Estonia, 2-14-56641, 29 November 2017
 
In this case, the Supreme Court of Estonia analyses the concept of the “hypothetical licence fee” under the Estonian Copyright Act, in accordance with Article 13(1)b) of the EU Enforcement Directive. The court is of the opinion that the “hypothetical licence fee” must be calculated based on the real value of the right of use of a particular work. In this regard it is irrelevant whether the person who has used the work illegally would have been able to use another similar work and acquire a licence at a much lower cost. It is important to note that the “hypothetical licence fee” does not cover the damages the author is entitled to claim for the infringement of his moral rights.

The Supreme Court also points out that when a photograph has been made available on the Internet, in general the author still enjoys all the exclusive moral and economic copyrights vested in the photograph. This means that the author has the right to authorise or prohibit making the work available to the public in such a way that persons may access the work from a place and at a time individually chosen by them (right of making the work available to the public).
 
Author(s): Elise Vasamäe, Aavik & Partners Law Office, Tallinn
 
Source: Kluwer Copyright CasesDate: 13 Feb 2018
 
Estonia Full text Full text as PDF
 
 
 
 
 
Compensation for unintentional infringement, Court of Appeal of Lisbon, 193/14.0YHLSB.L1-1, 23 May 2017
 
The Court of Appeal confirmed that playing phonograms in a night club requires authorisation from and payment to the relevant right holders (performers and artists). On the question of damages, the Court confirmed that the award of punitive-like damages should be limited to cases of serious and repeated infringement. In the present case, as this threshold was not met, the night club had to pay the regular tariff just like any licensee.
 
Author(s): Alexandre L. Dias Pereira, Law Faculty of Coimbra University
 
Source: Kluwer Copyright CasesDate: 13 Feb 2018
 
Portugal Full text Full text as PDF
 
 
 
 
 
USA: OpenRisk, LLC v. MicroStrategy Services Corp., United States Court of Appeals, Fourth Circuit, No. 16-1852, 13 November 2017
 
The Copyright Act preempted Virginia state-law computer fraud claims based on allegations that cloud computing services provider MicroStrategy Services Corp. copied and transferred data owned by software company OpenRisk, LLC, to a cloud environment created for a new company formed by former OpenRisk employees, the U.S. Court of Appeals in Richmond has held. At their core, OpenRisk’s computer fraud claims sought to impose liability for the unauthorized copying and distribution of data on OpenRisk’s cloud environment. Thus, they were not qualitatively different from copyright infringement claims, in the court’s view. MicroStrategy also was granted summary judgment on OpenRisk’s other tort claims because OpenRisk failed to come forward with evidence that it had sustained injury (OpenRisk, LLC v. MicroStrategy Services Corp., November 13, 2017, Harris, P.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Dynamic Concepts, Inc. v. Tri-State Surgical Supply and Equipment Ltd., United States Court of Appeals, Second Circuit, No. 15-0563-cv, 08 November 2017
 
The federal district court in Brooklyn did not abuse its discretion in finding that two declarations submitted by the CEOs of two software companies in order to demonstrate that the companies’ software programs were copyrightable, were expert testimony subject to preclusion for noncompliance with disclosure rules, the U.S. Court of Appeals in New York City has held. Having struck the most salient evidence of copyrightability, the district court properly granted summary judgment to the defendants on the software companies’ Digital Millennium Copyright Act claims. The district court also did not abuse its discretion in finding that Tri-State Surgical Supply and Equipment, a licensee of the companies’ programs, was not entitled to attorney fees under the Lanham Act because this was not an exceptional case. However, the lower court erred in holding that the software companies abandoned their breach of contract claim, and the grant of summary judgment on this claim was vacated and the case remanded (Dynamic Concepts, Inc. v. Tri-State Surgical Supply and Equipment Ltd., November 8, 2017, Per Curiam).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Oracle USA, Inc. v. Rimini Street, Inc., United States Court of Appeals, Ninth Circuit, No. 16-16832, 08 January 2018
 
The Ninth Circuit Court of Appeals in San Francisco has affirmed judgment for Oracle USA, Inc. on its claims for copyright infringement against Rimini Street, Inc., a provider of third-party support for Oracle’s enterprise software, finding that certain of Rimini’s conduct in copying Oracle software to service clients was not permitted by Oracle licenses. The court reversed judgments for Oracle on state law claims under computer access statutes, and modified and/or remanded to the district court the portions of the judgments concerning damages and injunctive relief in light of its rulings (Oracle USA, Inc. v. Rimini Street, Inc., January 8, 2018, Fogel, J.).
 
Author(s): Robert Margolis, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent (12)
 
 
Ruling of Barcelona Commercial Court no. 5 of 12 September 2017, Commercial Court of Barcelona, AJM B 75/2017, 12 September 2017
 
A Spanish patents court rules for the first time on the sometimes blurry line dividing "discoveries" and "inventions". The Court found that a method for prenatal diagnosis based on the discovery that sufficient fetal DNA can also be detected in maternal serum or plasma is a non-patentable discovery, because it lacks any "additional technical teaching" beyond that discovery. Interestingly, the High Court of Justice of England and Wales has reached the exact opposite decision in respect of the same patent.
 
Author(s): Adrian Crespo, Clifford Chance, Barcelona
 
Source: Kluwer Patent CasesDate: 13 Feb 2018
 
Reporter for: Spain
 
Spain Full text Full text as PDF
 
 
 
 
 
USA: Liqwd, Inc. v. L’Oreal USA, Inc., United States Court of Appeals, Federal Circuit, No. 2017-2295, 16 January 2018
 
The U.S. Court of Appeals for the Federal Circuit in Washington, D.C. has vacated a lower court's denial of a preliminary injunction to the holder of a patent on a hair bleaching process. The court found that the presence of hair-coloring ingredients in the alleged infringer's product did not exclude it from potential infringement if those ingredients did not result in hair coloration based on visual inspection (Liqwd, Inc. v. L’Oreal USA, Inc., January 16, 2018, Taranto, R.).
 
Author(s): Kluwer IP Reporter
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: In re Theresa, United States Court of Appeals, Federal Circuit, No. 2017-1920, 17 January 2018
 
Substantial evidence supported the Patent Trial and Appeal Board’s determination that claims 1, 3–6, 8, and 19–25 of inventor Dominick Theresa’s patent application for a system for identifying and transporting portable memory devices with three color-coded components (such as labels, key rings, and wristbands) were obvious, according to the U.S. Court of Appeals for the Federal Circuit. Thus, the PTAB’s affirmance of a patent examiner’s obviousness rejection of Theresa’s application was affirmed (In re Theresa, January 17, 2018, per curiam).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Cap Export, LLC v. Zinus, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1540, 18 January 2018
 
A district court’s summary judgment ruling invalidating two claims of a patent for a bed frame as obvious and dismissing the patent owner’s claims with prejudice has been vacated by the U.S. Court of Appeals for the Federal Circuit. The district court committed reversible error by granting summary judgment to plaintiff sua ponte without providing notice to the patent owner or permitting the patent owner to present evidence or argument; relying on a prior art reference in its invalidity determination, despite a factual dispute regarding whether the reference predated the effective date of the patent-in-suit; and dismissing the patent owner’s infringement and state law claims with prejudice (Cap Export, LLC v. Zinus, Inc., January 18, 2018, Bryson, W.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Flexuspine, Inc. v. Globus Medical, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1188, 19 January 2018
 
A medical device maker defending itself against a patent infringement suit was not entitled to an amendment of a no-infringement judgment to include the jury’s verdict of patent invalidity, the U.S. Court of Appeals for the Federal Circuit has held. The verdict form given to the jury by the court—and not objected to by the device maker—contained a "stop instruction" directing the jury to answer the question of patent validity only if it first found that the device maker infringed the patent. Initially, the jury returned the form with a "no" answer to the first question, regarding infringement, but also with the second question, regarding invalidity, indicating that the patent claims were found invalid. The court instructed the jury to retire again with a blank form, and to follow the written instructions on it. The second time, the jury returned a verdict of no infringement, leaving the question regarding invalidity blank. The court then rendered a judgment that the device maker did not infringe the asserted claims, without addressing the invalidity of the patent. In the Federal Circuit’s view, the district court did not err in denying the device maker’s motion to alter or amend the judgment. The jury’s failure to follow the stop instruction the first time around rendered the verdict inconsistent, because the form unambiguously submitted the issue of validity to the jury only as an affirmative defense (Flexuspine, Inc. v. Globus Medical, Inc., January 19, 2018, Prost, S.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: In re Janssen Biotech, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1257, 23 January 2018
 
Seven claims of a patent directed to certain chimeric antibodies used in biologic drugs to treat autoimmune diseases were unpatentable under the doctrine of obviousness-type double patenting, the U.S. Court of Appeals for the Federal Circuit has held. The court affirmed a decision of the Patent Trial and Appeal Board rejecting the claims and finding that they were not protected by the safe-harbor provision of 35 U.S.C. §121 for divisional applications filed as a result of a restriction requirement. The patent owner could not retroactively bring its challenged patent within the scope of the safe-harbor provision by filing an amendment in a reexamination proceeding. The application resulting in issuance of the challenged patent was not a divisional application because it claimed matter not present in the original application (In re Janssen Biotech, Inc., January 23, 2018, Prost, S.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Arthrex, Inc. v. Smith & Nephew, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1239, 24 January 2018
 
An adverse judgment issued by the Patent Trial and Appeal Board, invalidating all nine claims of a medical device patent, based on the patent owner’s disclaimer of the claims prior to the Board’s decision whether or not to institute inter partes review (IPR) of them, has been affirmed by a divided panel of the U.S. Court of Appeals for the Federal Circuit. The Board correctly interpreted USPTO regulations authorizing the Board to enter an adverse judgment when a party to a proceeding disclaims all claims at issue "in the trial." The Board’s adverse judgment against the patent holder would have estoppel effect on pending applications for inventions that were not patentably distinct from the patent at issue in this case. Because the patent owner chose not to challenge the USPTO’s statutory authority to issue the rule, the court did not address that question. Circuit Judge Pauline Newman wrote a dissenting opinion arguing that the USPTO did not have the authority to issue a rule allowing the Board to make adverse judgments prior to instituting IPR (Arthrex, Inc. v. Smith & Nephew, Inc., January 24, 2018, Dyk, T.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Core Wireless Licensing, S.A.R.L v. LG Electronics, Inc., United States Court of Appeals, Federal Circuit, No. 2016-2684, 25 January 2018
 
Substantial evidence supported a jury’s verdict that wireless device maker LG infringed asserted claims of two patents covering improved user interfaces for devices with small screens, the U.S. Court of Appeals for the Federal Circuit has held. The appellate court affirmed a decision of the federal district court in Marshall, Texas, denying LG’s motion for summary judgment on grounds of ineligibility under 35 U.S.C. §101, as well as the district court’s denial of LG’s post-verdict motions for judgment as a matter of law that the claims were invalid as anticipated by prior art and for noninfringement. Circuit Judge Wallach dissented in part because, in his view, the district court incorrectly construed a key claim term and should reconsider the issues of anticipation and infringement based on the correct construction (Core Wireless Licensing, S.A.R.L v. LG Electronics, Inc., January 25, 2018, Moore, K.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: MaxLinear, Inc. v. CF CRESPE LLC, United States Court of Appeals, Federal Circuit, No. 2017-1039, 25 January 2018
 
The Patent Trial and Appeal Board’s finding in an inter partes review that dependent claims 4, 6-9, and 20-21 of U.S. Patent No. 7,075,585 (the ’585 patent), owned by appellee CF CRESPE LLC (CRESPE), are patentable, has been vacated by the U.S. Court of Appeals for the Federal Circuit because of the collateral estoppel effect of two other IPRs also involving the ’585 patent. The Board’s finding in the present case was based only on an analysis of the ’585 patent’s two independent claims, 1 and 17. However, in the two other IPRs (the ’728 and ’615 IPRs), the Board held that independent claims 1 and 17 and dependent claim 20 were unpatentable. The prior IPR decisions were subsequently affirmed by the Federal Circuit, and thus, were binding as a matter of collateral estoppel. The case was remanded for the Board to determine whether the remaining dependent claims 4, 6-9, and 21 can survive the unpatentability of claims 1 and 17 from which they depend (MaxLinear, Inc. v. CF CRESPE LLC, January 25, 2018, Dyk, T.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Smith & Nephew, Inc. v. Hologic, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1008, 30 January 2018
 
Twenty-six claims of a surgical instrument patent held by medical equipment maker Smith & Nephew were correctly found by the Patent Trial and Appeal Board to be invalid as anticipated or obvious in light of prior art, the U.S. Court of Appeals for the Federal Circuit has held in a nonprecedential disposition. The Board’s decision in an ex parte reexamination was affirmed with respect to those rejections. The Board erred, however, in concluding that one reference was analogous prior art, so the rejection three claims that were found to be invalid on the basis of that reference was reversed, and the case was remanded for consideration as to whether other references rendered two of those claims invalid (Smith & Nephew, Inc. v. Hologic, Inc., January 30, 2018, Hughes, T.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Move, Inc. v. Real Estate Alliance Ltd., United States Court of Appeals, Federal Circuit, No. 2017-1463, 01 February 2018
 
The federal district court in Los Angeles did not err in holding that two related patents—directed to searching available real estate properties stored on a database by geographic area—were invalid as claiming the abstract idea of collecting, organizing, and presenting information, the U.S. Court of Appeals for the Federal Circuit has held. The court properly found that one patent’s claims could be performed by a generic computer and did not recite any technological improvements. The record also supported that the patent holder expressly conceded the invalidity of the second patent based on invalidity of the first (Move, Inc. v. Real Estate Alliance Ltd., February 1, 2018, Stoll, K.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Elbit Systems of America, LLC v. Thales Visiounix, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1355, 06 February 2018
 
Substantial evidence supported the Patent Trial and Appeal Board’s finding that an inter partes review petitioner failed to show that a patent owned by Thales Visionix—claiming a method for tracking motion relative to a moving platform—was not obvious over a prior art patent combined with two additional references, the U.S. Court of Appeals for the Federal Circuit has held. (Elbit Systems of America, LLC v. Thales Visiounix, Inc., February 6, 2018, Wallach, E.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 13 Feb 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
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