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 2017 - Issue 8
April 2017
 
 
 

News

 
General Information (2)
 
 
Public can now apply for .africa domain name
 
On 4 April 2017, the ZA Central Registry Not-for-Profit Company (ZACR – NPC) started accepting application from trademark owners for securing .africa domain names matching their registered trademarks.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
African Countries Full text
 
 
 
 
 
Saudi Arabia proposes formation of an IP Commission
 
Saudi Arabia’s drive to protect its intellectual property has led to a proposal for the formation of an IP Commission, which was recently approved by the Saudi Council of Ministers.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
Saudi Arabia Full text
 
 
 
 
 
Patents/Utility Models (20)
 
 
Australian court rules on date of relief for patent infringement
 
Overruling its own long-standing position that relief in an infringement action can be claimed from the date of the innovation patent (i.e., from the effective filing date), the Full Court of the Federal Court of Australia, in Coretell Pty Ltd v Australian Mud Co Pty Ltd, held that the date for determining infringement of an innovation patent under the Patent Act is the date of grant for the patent in suit, not its effective filing date.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
Australia Full text
 
 
 
 
 
Belgium supports provisional application UPCA
 
Belgium has declared it ‘undertakes to apply on a provisional basis from 15 May 2017 certain provisions of the UPC Agreement and its Annex 1 (‘the UPC Statute’)’, according to a Bristows report.

The Preparatory Committee has the ambition for a provisional application period of the UPCA to come into force at the end of May 2017. For this, support of 13 states, including France, the UK and Germany is necessary, that have consented to be bound by the so-called Provisional Protocol (PPA) and either ratified or informed the ‘depositary’ that they have parliamentary approval to ratify the UPC Agreement.’ According to Bristows, the Belgian declaration is slightly different from the PPA. ‘It is hoped’ this will not be of any consequence.

For more information please click here.

 
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
Belgium, European Union Full text
 
 
 
 
 
China revises patent examination guidelines for business method and software claims
 
China has recently revised its Guidelines for Patent Examination to allow patent protection for claims involving both business method and technical features. SIPO cited the United States to illustrate that there is precedence for such legislation worldwide.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
China Full text
 
 
 
 
 
UK on track for ratification UPCA
 
Preparations for ratification of the UPCA are progressing ‘and we expect to be ready to begin the period of provisional application in the spring’.

This has been announced by the UKIPO.

‘The UK government has signed the Protocol on Provisional Application and is ready for that to commence to the timetable foreseen by the Preparatory Committee. It is planned that the UPC will open for business in December 2017.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union, United Kingdom Full text
 
 
 
 
 
German Federal Council approves UPC legislation
 
The German Federal Council, the Bundesrat, approved draft legislation to ratify the Unified Patent Court Agreement and to amend German patent law in its 31 March 2017 session.

It means the German procedure to ratify the UPCA nears completion.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union, Germany Full text
 
 
 
 
 
‘CJEU influence on UPC is not incompatible with white paper on Brexit’
 
‘The UK has not said that it will not be part of any international court or tribunal in the future.  What it has said is that domestic courts should not be bound by the CJEU.’

This is the reason, according to an IP Kat article, why there is no ‘incompatibility between the UK’s policy on the judicial independence from the CJEU of its domestic courts [as set out in the white paper on Brexit, ed.], and continued membership of an international court system [such as the Unified Patent Court, ed.] where CJEU decisions will be binding.’

Below the IP Kat article, the issue is discussed extensively by commentators.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union, United Kingdom Full text
 
 
 
 
 
'Post-Brexit arrangements for UP easier to provide than for EU trademarks'
 
A mechanism by which Unitary Patents can revert to having national effect in the UK as an EP(UK) is easier to provide than to provide continuing protection in the UK after Brexit for EU trade marks and designs and plant variety rights.

This is argued in an article of IP Kat. ‘For patents, it would only be necessary to provide that a Unitary Patent revert to the status it had, with respect to the UK, before the unitary effect was requested.’

The question is however, according to IP Kat, whether the uncertainties concerning the UK, the UPC and Brexit, will lead to non-use of the new system.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union, United Kingdom Full text
 
 
 
 
 
UPC ratification progresses in Latvia
 
A draft law enabling Latvia to ratify the Unified Patent Court (UPC) Agreement was passed in its second reading in Latvia’s unicameral parliament on 30 March 2017.

According to a Bristows report, ‘the bill is now likely to be adopted in its third reading (…) (after a final examination by the Foreign Affairs Committee), and then forwarded to the President for assent.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union, Latvia Full text
 
 
 
 
 
European Commission calls on all UP member states to ratify UPCA this year
 
The EU Commission has called on all EU countries which participate in the Unitary Patent project to ratify the UPCA by the end of 2017.

This has been reported by the Amar patentblog. During a meeting with the European Parliament Legal Affairs committee, Mr Tokarski from the EU Commission Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, also insisted for the states that already have parliamentary approval to ratify the Protocol on provisional application of the UPCA before the next Competitiveness Council meeting on 29th May.

For more information please click here.

 
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union Full text
 
 
 
 
 
Eileen Tottle: timetable for preparations UPC is very short
 
Candidate judges for the UPC may be invited for interviews at shorter notice than they expect. According to Eileen Tottle, head of the secretariat of the UPC Preparatory Committee, the interviews will be held in June and July 2017, immediately after the start of the provisional application phase of the UPCA, which she is confident can start as planned at the end of May.

Tottle told IP Fridays in a podcast interview the timetable for the recruitment of judges and other preparations for the start of the Unified Patent Court is very short. Appointed judges will receive training in September and October. The UPC will open its doors in December 2017.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court NewsDate: 18 Apr 2017
 
European Union Full text
 
 
 
 
 
Final version UPC Rules of Procedure published
 
The UPC Preparatory Committee has published the latest version of the draft Rules of Procedure.

According to the committee, ‘this draft is yet to come under scrutiny by the European Commission on the compatibility of the Rules of Procedure with Union law and will be subject to formal adoption by the UPC Administrative Committee (…) during Provisional Application. 

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court NewsDate: 18 Apr 2017
 
European Union Full text
 
 
 
 
 
Basic questions answered about the UP system
 
Basic questions about the Unitary Patent system are answered in an article published by IP Copy.

According to the blog, it has been receiving a growing number of questions on the UP system lately.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union Full text
 
 
 
 
 
Unitary effect possible for your European patent?
 
What makes a European patent eligible for unitary effect on grant and how does the Unitary Patent system timescale match up with the European patent process?

According to an IP Copy article, most pending European patent applications will have the option of benefiting from the unitary effect option on grant, but a different set of claims or the Malta issue may be in the way.

And yet another issue: ‘Prior to 1 April 2009 it was possible to designate a subset of the available designation states since there was also a per country designation fee. So, for applications filed prior to this point it will be necessary to check which states were actually designated. If 6 or fewer designation fees were paid, then the unitary patent option will not be available on grant.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union Full text
 
 
 
 
 
Latvia’s UPCA ratification law enters into force on 1 January 2018
 
The law enabling Latvia to ratify the UPCA was adopted by parliament on 30 March and received Presidential assent on 12 April 2017.

According to Bristows, ‘this final law differs from the draft passed in its second reading (…) as it now provides that it will come into force on 1 January 2018 (whereas the target date for the UPC to come into operation is 1 December 2017).’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union, Latvia Full text
 
 
 
 
 
Concerns about new delay for Unified Patent Court
 
Patent experts are concerned that the start of the Unified Patent Court – planned for December 2017 - may have to be delayed by at least four weeks, if the Provisional Application Phase cannot start by the end of May 2017 due to a lack of support/signatures of Member States.

This has been reported by the German legal website JUVE. Support is needed from 13 Member States which have also given parliamentary approval for ratification of the UPCA. There is some concern whether Germany and the UK will be in time, but apart from these two the UPC Preparatory Committee needs two more member states to declare to be bound by or to ratify the Protocol on Provisional Application.

For more information please click here.  
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union Full text
 
 
 
 
 
‘UPC potentially creates an open invitation to PAEs’
 
‘The UPC’s initial case selection, rulings and interactions with national patent systems provide a unique opportunity to dialogue with policy-makers and the larger IP legal community about how the patent ecosystem in Europe can best support innovation and growth and avoid the worst abusive practices endemic in other legal systems.’

This is argued in a position paper of Intellectual Property 2 Innovate (IP2I), which has been formed to raise awareness about patent troll (PAE) activity. According to the organization, with members such as Adidas, Google and Daimler, ‘the dramatic rise in patent litigation involving PAEs is a dangerous trend that merits the attention of EU policy makers’.

IP2I says higher patent quality and greater transparency of patent litigation data are necessary in Europe. ‘Without change, the UPC potentially creates an open invitation to PAEs.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court NewsDate: 18 Apr 2017
 
European Union Full text
 
 
 
 
 
German ratification Protocol on Privileges and Immunities delayed
 
Germany’s UPC privileges and immunities legislation (PPI) progresses through parliament with some delay due to questions about the tax regime.

According to Bristows, the Federal Council, the Bundesrat, issued a statement on the PPI ‘relating to the taxation of the salaries of the judges, Registar and other staff (…), in particular the fact that the judges’ salaries were not only exempt from national taxation but were not ‘progressive’, i.e. any other income would be taxed as if it were the only income. (…)  In its response, the government stated that it had argued for such a progression when negotiating the PPI but the majority of the other states did not agree’, according to Bristows. 

Last month, laws authorising Germany to ratify the UPCA and to amend national patent law were approved. 

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court NewsDate: 18 Apr 2017
 
European Union, Germany Full text
 
 
 
 
 
Qatar to implement e-filing of patent applications
 
In an effort to further enhance and simplify patent registration and protection in Qatar, the Qatari Patent Office has recently announced its resolve to implement electronic filing of patent applications.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
Qatar Full text
 
 
 
 
 
UAE adds restoration option
 
Now applicant can use the restoration option, which has recently been activated by the United Arab Emirates (UAE) Patent Office in its e-filing system, for restoring lapsed applications or granted patents on payment of a stipulated fee.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
United Arab Emirates Full text
 
 
 
 
 
UK not to allow omnibus claims in patent applications
 
With effect from 6 April 2017, the United Kingdom Intellectual Property Office (UK IPO) stopped allowing the practice of including omnibus claims into patent applications, unless a technical feature cannot otherwise be expressed by written means.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
United Kingdom Full text
 
 
 
 
 
Trademarks (5)
 
 
Albania adopts new IP law
 
In an effort to harmonise Albanian industrial property laws with that of the European Union, Albania has adopted the new Industrial Property Law with effect from 24 March 2017. Previous provisions still apply to all prosecution and enforcement cases opened prior to 24 March 2017.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
Albania Full text
 
 
 
 
 
Bahrain initiates e-filing for trademark applications
 
On 20 February 2017, the Bahrain Trademark Office (BTO) initiated the electronic submission of trademark applications, which is expected make trademark registration procedure smoother and hassles-free.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
Bahrain Full text
 
 
 
 
 
China slashes trademark-related fees
 
With effect from 1 April 2017, the State Intellectual Property Office of the People’s Republic of China (SIPO) has introduced a new fee schedule reducing the fees relating to trademark registration procedure by 50 percent  
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
China Full text
 
 
 
 
 
Japan registers first color combination trademark
 
On 1 March 2017, Japan granted the first trademark approval for a color combination. Under the amended law of 2014 Japan grants protection to color combinations which instantly remind the public of a product or service.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
Japan Full text
 
 
 
 
 
Madrid Protocol fee revised for Turkey
 
In accordance with the provisions of the Common Regulations under the Madrid Agreement and Protocol concerning the International Registration of Marks (the “Madrid Protocol”), the World Intellectual Property Organization (WIPO) has established new individual fees payable when Turkey is designated in an international application or in an application for renewal of international registration.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Apr 2017
 
Turkey Full text
 
 
 
 

Cases

 
Copyright (1)
 
 
United Kingdom: Gloucester Place Music Ltd v Le Bon, High Court of Justice of England and Wales, Chancery Division, HC-2015-004970, 02 December 2016
 
In a case between a music publisher and members of the pop group Duran Duran, the Court granted a declaration to the claimant music publisher, finding that service of notices under s.203 US Copyright Act 1976 purporting to terminate assignments of the US copyright in 37 songs would breach the terms of the agreements between the parties. Preference was given to the Claimant’s case on construction with emphasis on the broad terms in which the grant of rights was expressed in the agreements and the defendants' warranties not to grant rights otherwise than to the claimant.
 
Author(s): Maurizio Borghi, University of Bournemouth; Stavroula Karapapa, University of Reading
 
Source: Kluwer Copyright CasesDate: 18 Apr 2017
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
Patent (17)
 
 
Patent: BWP Media USA, Inc. v. T & S Software Associates, Inc, United States Court of Appeals, Fifth Circuit, No. 16-10510, 27 March 2017
 
To state a claim for direct copyright infringement, the owners of copyrights to photographs of celebrities were required to establish that an Internet service provider (ISP) had engaged in "volitional conduct," the U.S. Court of Appeals in New Orleans has held. The ISP hosted a forum on which third-party users posted copyrighted images that allegedly infringed the owners’ rights. Because the copyright owners did not contend that the ISP engaged in volitional conduct, the provider was entitled to summary judgment in its favor. The ISP was not subject to liability for direct copyright infringement merely for failing to designate an agent to receive "takedown" notices under the Digital Millennium Copyright Act and was not limited to asserting a safe harbor defense under that statute (BWP Media USA, Inc. v. T & S Software Associates, Inc., March 27, 2017, Southwick, L.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Huster v. J2 Cloud Services, Inc, United States Court of Appeals, Federal Circuit, No. 2016-1639, 29 March 2017
 
A federal district court did not err in dismissing a correction-of-inventorship claim that an individual had brought against the named inventor of nine e-messaging patents and the assignors, assignees, or licensees of those patents, the U.S. Court of Appeals for the Federal Circuit has ruled. Because a Washington state court had divested the plaintiff of her rights in the asserted patents until a judgment against her could be satisfied, the dismissal of her inventorship claim for lack of Article III standing was proper (Huster v. J2 Cloud Services, Inc., March 29, 2017, Taranto, R.).
 
Author(s): Mark Engstrom, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Gaedeke Holdings VII Ltd. v. Baker, United States Court of Appeals, Tenth Circuit, Nos. 16-6004, 30 March 2017
 
After obtaining a new trial on damages in a trade secrets misappropriation case against a competitor, oil and gas company Gaedeke was not entitled to disregard the second jury’s award and reinstate the first jury’s damages verdict, the U.S. Court of Appeals in Denver has held. The district court did not err in rejecting Gaedeke’s motion to reinstate the court’s judgment from the first trial. The court also did not err in rejecting the defendants’ argument that Gaedeke lacked standing to assert a trade secret misappropriation claim. Oklahoma’s Uniform Trade Secrets Act does not make ownership a prerequisite to fling a misappropriation claim (Gaedeke Holdings VII Ltd. v. Baker, March 30, 2017, Phillips, G.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Unicolors, Inc. v. Urban Outfitters, Inc, United States Court of Appeals, Ninth Circuit, No. 15-55507, 03 April 2017
 
Substantial evidence supported a jury’s verdict that clothing retailers Urban Outfitters, Inc., and Century 21 Department Stores, LLC (collectively, "Urban") willfully infringed a copyrighted fabric design owned by Unicolors, Inc., the U.S. Court of Appeals in San Francisco has held. The evidence showed that Urban acted with reckless disregard for the possibility that the fabric it sampled was protected by copyright. In addition, the Ninth Circuit affirmed the district court’s findings on summary judgment that the works were substantially similar as a matter of law, given that the parties’ respective works were near duplicates. The district court did not err in concluding that Unicolors had validly registered its fabric design as part of a collection (Unicolors, Inc. v. Urban Outfitters, Inc., April 3, 2017, Orrick, H.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Medtronic, Inc. v. Mirowski Family Ventures, LLC, United States Court of Appeals, Federal Circuit, Nos. 2015-1996, 04 April 2017
 
The federal district court in Wilmington, Delaware, did not err in ordering Mirowski Family Ventures, LLC ("MFV") to pay more than $6 million in attorney fees to Medtronic, Inc., pursuant to a fee-shifting provision in a 1991 cross-licensing agreement between Medtronic and Eli Lilly, the exclusive licensor of cardiac implant patents owned by MFV. Although MFV was not a signatory to the 1991 license agreement, the agreement was modified by a 2006 Litigation Tolling Agreement, which effectively put MFV into Eli Lilly’s shoes (Medtronic, Inc. v. Mirowski Family Ventures, LLC, April 4, 2017, Reyna, J.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Novartis AG v. Noven Pharmaceuticals Inc, United States Court of Appeals, Federal Circuit, Nos. 2016-1678, 04 April 2017
 
The Patent Trial and Appeal Board did not err in rejecting as obvious 13 claims of two Novartis patents on a pharmaceutical composition that included an antioxidant with rivastigmine in "free base or acid addition salt form," the U.S. Court of Appeals for the Federal Circuit has ruled. Because substantial evidence supported the Board’s factual findings about combinations of the prior art, the decisions of the Board were affirmed (Novartis AG v. Noven Pharmaceuticals Inc., April 4, 2017, Wallach, E.).
 
Author(s): Mark Engstrom, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Wasica Finance GmbH v. Continental Automotive Systems, Inc, United States Court of Appeals, Federal Circuit, Nos. 2015-2078, 04 April 2017
 
The Patent Trial and Appeal Board did not err in finding that claims 1–5, 10–19, and 21 of a patent for monitoring tire inflation pressure were unpatentable as anticipated or obvious, in a dispute between the owners of the now-expired patent, Wasica Finance GmbH and Bluearc Finance AG ("Wasica"), and several entities that filed two petitions for inter partes review of the patent, the U.S. Court of Appeals for the Federal Circuit has determined. The decisions of the Board that claims 6–8 and 20 of the patent are patentable was also affirmed. However, the Board erred in concluding that claim 9 of the ’524 patent is patentable, and that decision was reversed (Wasica Finance GmbH v. Continental Automotive Systems, Inc., April 4, 2017, Schall, A.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Guo v. Lee, United States Court of Appeals, Federal Circuit, No. 2017-1244, 05 April 2017
 
A citizen of the People’s Republic of China, lawfully present in the United States on an F-1 student visa, was properly denied registration to practice before the USPTO as a patent agent representing patent applicants due to restrictions on his employment based on his status as a nonimmigrant alien, the U.S. Court of Appeals for the Federal Circuit has held. The decision of the Director of the USPTO to approve the denial by the USPTO’s Office of Enrollment and Discipline was not arbitrary, capricious, an abuse of discretion, or contrary to law. A district court decision upholding the Director’s decision was affirmed (Guo v. Lee, April 5, 2017, per curiam).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: The Medicines Company v. Mylan, Inc, United States Court of Appeals, Federal Circuit, Nos. 2015-1113, 06 April 2017
 
Mylan Inc. did not infringe two patents on pharmaceutical formulations of the anticoagulant drug bivalirudin, the U.S. Court of Appeals for the Federal Circuit has ruled. Because both patents included a pH-adjusted "batches" limitation that required a compounding process for "consistently" minimizing batch impurities through "efficient mixing"—a process that was described and defined in "Example 5" of the patent specifications—and because Mylan did not use the multiple mixing devices that were required by Example 5, the Federal Circuit reversed the judgment of infringement for one patent and affirmed the judgment of non-infringement for the other (The Medicines Company v. Mylan, Inc., April 6, 2017, Dyk, T.).
 
Author(s): Mark Engstrom, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Asetek Danmark A/S v. CMI USA Inc, United States Court of Appeals, Federal Circuit, Nos. 2016-1026, 03 April 2017
 
The U.S. Court of Appeals for the Federal Circuit has affirmed a district court’s rulings after trial that CMI USA Inc. infringed two patents of Asetek Danmark A/S related to CPU cooling systems, that the patents are not invalid for obviousness, and that Asetek is entitled to $404,941 in damages. The court, however, remanded as to part of the injunctive relief the district court entered that reaches conduct by Cooler Master USA, Inc., an affiliate of CMI, that had been dismissed earlier from the case and thus, was not before the court when the injunction was entered (Asetek Danmark A/S v. CMI USA Inc., April 3, 2017, Taranto, R.).
 
Author(s): Robert Margolis, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Mavrix Photographs, LLC v. LiveJournal, Inc, United States Court of Appeals, Federal Circuit, No. 14-56596, 07 April 2017
 
The federal district court in Santa Ana, California, erred in ruling as a matter of law that the Digital Millennium Copyright Act’s safe harbor shielded celebrity gossip website operator LiveJournal from liability for infringing photographs posted by users, the U.S. Court of Appeals in San Francisco has held. Reasonable fact finders could differ regarding whether the photographs at issue truly were posted "at the direction of users" or whether the volunteer moderators—who pre-screened and approved the posts containing the infringing photographs—were acting on behalf of LiveJournal itself, as determined under common law agency principles. The fact finder also had to decide disputed issues regarding whether LiveJournal possessed either actual, subjective knowledge of infringement or objective, "red flag" knowledge of infringement and whether LiveJournal financially benefited from infringements under its control (Mavrix Photographs, LLC v. LiveJournal, Inc., April 7, 2017, Paez, R.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Novartis AG v. Torrent Pharmaceuticals Limited, United States Court of Appeals, Federal Circuit, No. 2016-1352, 12 April 2017
 
The Patent Trial and Appeal Board did not err in finding that all 32 claims of a patent for Gelenya, a prescription drug used to treat relapsing forms of multiple sclerosis in adults, was invalid for obviousness, the U.S. Court of Appeals for the Federal Circuit has determined. The Board did not commit a violation of the Administrative Procedure Act ("APA") by referring to the prior art reference Sakai in its Final Written Decision even though it was not one of the references cited in its Institution Decision. Moreover, in finding the patent obvious, the Board did not err in its motivation to combine analysis or in considering the objective indicia of obviousness (Novartis AG v. Torrent Pharmaceuticals Limited, April 12, 2017, Chen, R.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Gravelle v. Kaba Ilco Corp, United States Court of Appeals, Federal Circuit, No. 2016-2318, 12 April 2017
 
A North Carolina federal district court did not err in ruling that key-cutting machine designer Gordon Gravelle failed to establish that his business was competitively harmed by Kaba Ilco Corporation’s sales of key-cutting machines bearing false "patent pending" markings, warranting summary judgment in favor of Kaba on Gravelle’s false marking, false advertising, and unfair trade practices claims, the U.S. Court of Appeals for the Federal Circuit has held. However, the district court’s award of attorney fees to Kaba was vacated and the issue remanded because the appeals court could not determine on the record before it whether the award was proper (Gravelle v. Kaba Ilco Corp., April 12, 2017, per curiam).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Ali v. Carnegie Institution of Washington, United States Court of Appeals, Federal Circuit, No. 2016-2320, 12 April 2017
 
The University of Massachusetts was entitled to sovereign immunity under the Eleventh Amendment from an individual’s lawsuit seeking addition as a co-inventor to patents for genetic inhibition methods, and damages for his erroneous omission as an inventor, the U.S. Court of Appeals for the Federal Circuit has held. The court also affirmed dismissal of the individual’s remaining inventorship claims against the Carnegie Institution of Washington because the University of Massachusetts was a necessary party that could not be joined (Ali v. Carnegie Institution of Washington, April 12, 2017, per curiam).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: In re Apple Inc, United States Court of Appeals, Federal Circuit, No. 2016-1402, 14 April 2017
 
The Patent Trial and Appeal Board’s rejection of 18 of 21 claims of Apple Inc.’s "pinch to zoom" application programming interface (API) multi-touch display patent as obvious or anticipated following reexamination has been affirmed by the U.S. Court of Appeals for the Federal Circuit. The Board correctly applied the broadest reasonable interpretation in construing the patent’s "scroll or gesture" limitation. However, because the Board failed to construe the "rubberbanding" limitation as expressly defined in the specification, the Board’s rejection of three patent claims was reversed and the case remanded (In re Apple Inc., April 14, 2017, Stoll, K.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: In re: Lipitor Antitrust Litigation and In re: Effexor XR Antitrust Litigation, United States Court of Appeals, Third Circuit, Nos. 14-4202, 13 April 2017
 
The U.S. Court of Appeals in Philadelphia had jurisdiction to decide consolidated appeals involving allegations that the companies holding the patents for Lipitor and Effexor XR had delayed entry into the market of generic versions of those drugs. The court found that it, rather than the Federal Circuit, had jurisdiction to hear the appeals because the cases did not arise under federal patent law. Patent law was not the basis of the plaintiffs’ cause of action, nor was patent law a necessary element to any of plaintiffs’ well-pleaded claims. Because it was unclear whether a New Jersey federal district court had jurisdiction at the time that judgment was entered over one of the consolidated cases, the court ordered a limited remand in that case for the parties to clarify the record as to the diversity of the parties (In re: Lipitor Antitrust Litigation and In re: Effexor XR Antitrust Litigation, April 13, 2017, Fisher, D.).
 
Author(s): Jody Coultas, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent: Core Wireless Licensing S.A.R.L. v. Apple Inc, United States Court of Appeals, Federal Circuit, No. 2015-2037, 14 April 2017
 
The federal district court in Tyler, Texas, correctly denied Core Wireless Licensing S.A.R.L.’s ("Core Wireless’s") motion for judgment as a matter of law that Apple infringed a claim of a Core Wireless patent directed to a means for sending packet data from a mobile station such as a cellular telephone to a cellular system or network, the U.S. Court of Appeals for the Federal Circuit has ruled. Core Wireless’s main argument on appeal, that the patent does not require the mobile station to make the channel selection decision, was without merit (Core Wireless Licensing S.A.R.L. v. Apple Inc., April 14, 2017, Bryson. W.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Apr 2017
 
United States of America Full text Full text as PDF
 
 
 
 

Upcoming events

 
Upcoming events (2)
 
 
CIPA webinar on UP and UPC
 
The CIPA will organize a webinar on 27 April 2017, ‘getting practical’ on the upcoming Unitary Patent system. ‘What do I need to do, when and how?’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union Full text
 
 
 
 
 
AIPPI seminar on UP and UPC 31 May 2017 in London
 
An AIPPI seminar on the Unitary Patent system will be held on 31 May 2017 in London.

‘Speakers from the EPO (Michael Froehlich) and the UK IPO (Laura Starrs) give an institutional perspective on what practitioners can expect when the new system comes into effect, what more remains to be done, and how the institutions themselves are preparing for change.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Apr 2017
 
European Union, United Kingdom Full text
 
 
 
 
 
 
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