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 16
August 2017
 
 
 
 
Table of contents
 
 
News
 
General Information
 
Ratifications
 
Patents/Utility Models
 
Trademarks
 
Cases
 
Patent
United States of America (10)
 
 
 

News

 
General Information (1)
 
 
Spain makes a small increase in filing fees
 
The Spanish Patent and Trademark Office has increased the fees payable for trademark and industrial design IP filings effective 29 July 2017.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Aug 2017
 
Spain Full text
 
 
 
 
 
Ratifications (1)
 
 
Estonia ratifies Unified Patent Court Agreement
 
Estonia has ratified the Unified Patent Court Agreement. According to the website of the European Council, it completed the ratification formalities on 1 August 2017.

Estonia joins Austria, Belgium, Bulgaria, Denmark, Finland, France, Italy, Luxembourg, Malta, the Netherlands, Portugal and Sweden as one of the thirteen countries who have completed their ratification processes.

Ratification by 13 UPC member states, including the United Kingdom and Germany, is necessary in order for the Unitary Patent system to launch. 

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 10 Aug 2017
 
Estonia, European Union Full text
 
 
 
 
 
Patents/Utility Models (8)
 
 
Estonia consents to start provisional application UPC
 
Estonia’s has consented to be bound by the provisional application of the Unified Patent Court Agreement (UPCA).

This has been reported by Bristows. The consent, however, has not yet been registered on the website of the EU Council.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 10 Aug 2017
 
Estonia, European Union Full text
 
 
 
 
 
Call of German court on president not to sign UPC related bills is rare
 
It is exceptional that the German Constitutional Court has contacted the German president directly and requested him not the sign UPC related bills.

This is stated in an article of Meyer-Dulheier and Partners, who expect a decision on the constitutional complaint that has been filed against the UP system no sooner than at the end of summer or later.

Who and what is behind the German constitutional complaint is still unknown. It could have to do with structural problems within the EPO, or with a lack of quorum when parliament ratified the UPCA.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 10 Aug 2017
 
European Union, Germany Full text
 
 
 
 
 
Postponement UPC Order no sign of change of mind UK
 
The last-minute withdrawal of a UPC related Order which was scheduled in the Commons diary for 14 July 2017 doesn’t mean at all that the UK has changed its mind on the Unitary Patent system.

According to IP Copy, ‘some commentators online read this [the withdrawal, ed.] as ‘bad’ news for the UPC but it seems the Order was moved only to make way for an urgent statement on the HS2 rail project. The UK is expected to push on with its ratification process in the autumn.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 10 Aug 2017
 
European Union, United Kingdom Full text
 
 
 
 
 
Survey: Milan good alternative if UPC seat London has to be relocated
 
If the UPC’s central division seat in London has to be moved due to the Brexit, Milan would be a good alternative, according to a survey of World IP Review.

WIPR reports nearly 90% of respondents to its survey think Milan would be ‘a good fit’, because of its strategic location and the extensive experience in IP matters, among others. It isn’t clear whether other options than Milan were discussed in the WIPR survey.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court NewsDate: 10 Aug 2017
 
European Union, Italy, United Kingdom Full text
 
 
 
 
 
UK work could go to Germany and the Netherlands after Brexit
 
‘If the UK left the Unified Patent Court, the work would go to Germany or the Netherlands.’ That is one of the remarks made in a survey on the impact of Brexit by the London Solicitors Litigation Association (LSLA) and New Law Journal.

According to the survey, litigation lawyers in London are fairly evenly split on whether Brexit will lead to a significant flight of work to other jurisdictions.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 10 Aug 2017
 
European Union, United Kingdom Full text
 
 
 
 
 
Irish referendum on Unified Patent Court in 2018 or 2019
 
In Ireland, a referendum on the Unified Patent Court Agreement will be held in the next two years.

According to the Irish Times, Taoiseach – prime minister - Leo Varadkar announced last week that three sets of referendums may be run over the next two years, including a referendum on joining the Unitary Patent system. The exact timing will be announced after the summer recess, in September 2017, according to the Irish Times.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 10 Aug 2017
 
European Union, Ireland Full text
 
 
 
 
 
Taiwan, Poland start PPH Mottainai programme
 
The Taiwan Intellectual Property Office (TIPO) and the Polish Patent Office (PPO) have commenced a Patent Prosecution Highway (PPH) Mottainai programme between the two offices from 1 August 2017.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Aug 2017
 
Poland, Taiwan Full text
 
 
 
 
 
Tajikistan amends law to introduce patent term extension for pharmaceuticals
 
The amended Tajik Law on Inventions, which provides for extensions of national and Eurasian patents in the country, entered into force on 14 November 2016, but the rules and procedures for applying for extensions are yet to be finalised by the Tajik Patent and Trademark Office.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Aug 2017
 
Tajikistan Full text
 
 
 
 
 
Trademarks (3)
 
 
Chile joins Global Brand Database
 
Under a cooperation agreement between the World Intellectual Property Organization (WIPO) and the Chilean National Institute of Industrial Property (INAPI), Chile will make its trademark data available in the Global Brand Database.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Aug 2017
 
Chile Full text
 
 
 
 
 
USPTO issues new examination guide
 
The United States Patent and Trademark Office (USPTO) has issued Exam Guide 2-17, “Merely Informational Matter”, to supplement the USPTO’s current trademark examination policies and procedures.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Aug 2017
 
United States of America Full text
 
 
 
 
 
Uzbekistan revises certain IP-related laws
 
The Uzbek Parliament has recently adopted amendments to the Civil Code, the Law on Trademarks and Appellations of Origin and the Law on Competition, and the revised law came into force on 19 April 2017.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Aug 2017
 
Uzbekistan Full text
 
 
 
 

Cases

 
Patent (10)
 
 
USA: Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc, United States Court of Appeals, Federal Circuit, No. 2016-1815, 26 July 2017
 
The Patent Trial and Appeal Board correctly concluded that challenged claims in three patents directed to a method for improving the absorption of CoQ10, a coenzyme involved in the production of cellular energy, were unpatentable as obvious, the U.S. Court of Appeals for the Federal Circuit has ruled (Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc., July 26, 2017, Bryson, W.).
 
Author(s): Linda O'Brien, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Regeneron Pharmaceuticals, Inc. v. Merus B.V., United States Court of Appeals, Federal Circuit, No. 2016-1346, 27 July 2017
 
Regeneron Pharmaceuticals, Inc., a biopharmaceutical company based in Tarrytown, New York, cannot enforce a patent covering methods of genetically modifying a mouse to make human antibodies because the patent was obtained through inequitable conduct before the USPTO, the U.S. Court of Appeals for the Federal Circuit has held in a split decision. Because Regeneron withheld material prior art references and made materially misleading statements to the USPTO, Regeneron could not enforce the patent against a competitor. A November 2015 decision of the federal district court in Wilmington, Delaware, in which the court inferred that Regeneron acted with the specific intent to deceive the USPTO, based on Regeneron’s misconduct during patent prosecution and litigation, was affirmed (Regeneron Pharmaceuticals, Inc. v. Merus B.V., July 27, 2017, Prost, S.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Audatex North America, Inc. v. Mitchell International, Inc, United States Court of Appeals, Federal Circuit, No. 2016-1913, 27 July 2017
 
In two covered business method (CBM) review proceedings, the Patent Trial and Appeal Board did not err in finding that 60 substituted claims of two Audatex patents on a method for processing insurance information were directed to an abstract idea that lacked an inventive concept, the U.S. Court of Appeals for the Federal Circuit has ruled. Because the claims recited patent-ineligible subject matter, the court affirmed the Board’s patent ineligibility ruling (Audatex North America, Inc. v. Mitchell International, Inc., July 27, 2017, Prost, S.).
 
Author(s): Mark Engstrom, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Giuliano v. SanDisk LLC, United States Court of Appeals, Federal Circuit, No. 2016-2166, 27 July 2017
 
The federal district court in Oakland, California, correctly determined that a class of flash memory products suppliers failed to adduce sufficient evidence to proceed with claims that SanDisk Corporation fraudulently obtained and enforced two patents in order to monopolize the NAND flash memory market, the U.S. Court of Appeals for the Federal Circuit has held. Specifically, the class plaintiffs failed to produce enough evidence to create a triable issue of material fact that SanDisk acted with intent to deceive the USPTO by failing to disclose relevant prior art during prosecution of the disputed patents. Summary judgment in favor of SanDisk on the plaintiffs’ Walker Process claims for monopolization and attempted monopolization under §2 of the Sherman Act was affirmed (Giuliano v. SanDisk LLC, July 27, 2017, Hughes, T.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Earnhardt v. Kerry Earnhardt, Inc, United States Court of Appeals, Federal Circuit, No. 2016-1939, 27 July 2017
 
In a trademark dispute between relatives of the late professional race car driver Dale Earnhardt, the Trademark Trial and Appeal Board’s ruling that the mark EARNHARDT COLLECTION, for furniture and custom home construction services, was registrable has been reversed by the U.S. Court of Appeals for the Federal Circuit because it was unclear whether the Board erred in finding that the mark was not primarily a surname. The court reinstated the opposition proceeding brought by Earnhardt’s widow against her stepson’s company and instructed the Board on remand to determine (1) whether the term "collection" is merely descriptive of the applicant’s identified goods and services, and (2) the primary significance of the mark as a whole to the purchasing public (Earnhardt v. Kerry Earnhardt, Inc., July 27, 2017, Chen, R.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V., United States Court of Appeals, Federal Circuit, No. 2016-1996, 01 August 2017
 
A Patent Trial and Appeal Board decision affirming an inter partes reexamination that invalidated, on obviousness grounds, 55 claims of a patent directed to a lubricant used in air conditioning equipment has been vacated by the U.S. Court of Appeals for the Federal Circuit. The Board applied internally inconsistent and legally erroneous reasoning in concluding that skilled artisans would have a motivation to combine prior art substances despite evidence that the results of those combinations were, at the time the patent application was filed, unpredictable. The Board also improperly relied on a new ground of rejection in its analysis of the patent owner’s evidence of unexpected results, without giving the patent owner the requisite notice of this ground (Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V., August 1, 2017, Lourie, A.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Enzo Biochem, Inc. v. Applera Corp, United States Court of Appeals, Federal Circuit, No. 2016-1881, 03 August 2017
 
A federal district court correctly found that defendant Applera Corp. had not infringed, under the doctrine of equivalents, two claims of an Enzo Biochem patent on the use of nucleotide probes to detect or identify specific nucleic acid sequences in a sample of DNA or RNA, the U.S. Court of Appeals for the Federal Circuit has ruled. Because no reasonable jury could find, even under the doctrine of equivalents, that Applera’s "direct detection" products infringed Enzo’s patent on "indirect detection," the district court’s grant of summary judgment to Applera was affirmed (Enzo Biochem, Inc. v. Applera Corp., August 2, 2017, O’Malley, K.).
 
Author(s): Mark Engstrom, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Homeland Housewares, LLC v. Whirlpool Corp, United States Court of Appeals, Federal Circuit, No. 2016-1511, 04 August 2017
 
The Patent Trial and Appeal Board erred in determining that the claims of a Whirlpool Corp. patent related to an automated pulsing cycle for household blenders were not invalid as anticipated by prior art, the U.S. Court of Appeals for the Federal Circuit has held in a split decision. The Board failed to adopt an explicit construction of the key claim term "settling speed," although the parties disagreed as to the meaning of the term. Without a claim construction, it was improper for the Board to conclude that prior art did not meet that limitation. Because the Board did not rely on extrinsic evidence as to claim construction, the court was able to determine the correct construction of "settling speed" and determined that the prior art did, in fact, meet that limitation and all other limitations of the challenged claims (Homeland Housewares, LLC v. Whirlpool Corp., August 4, 2017, Dyk, T.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Personal Audio, LLC v. Electronic Frontier Foundation, United States Court of Appeals, Federal Circuit, No. 2016-1123, 07 August 2017
 
The Patent Trial and Appeal Board did not err in finding that the challenged claims of an audio playback patent owned by patent assertion entity Personal Audio LLC were invalid as anticipated and/or obvious in view of prior art references, the U.S. Court of Appeals for the Federal Circuit has held. Because Personal Audio had Article III standing to appeal the PTAB’s adverse decision, non-profit consumer advocacy organization Electronic Frontier Foundation (EFF), which had requested inter partes review of Personal Audio’s podcasting patent, was not precluded from appearing in the case (Personal Audio, LLC v. Electronic Frontier Foundation, August 7, 2017, Newman, P.).Personal Audio’s U.S. Patent No. 8,112,504 ("the ’504 patent"), issued February 7, 2012, is entitled "System for disseminating media content representing episodes in a serialized sequence." The ’504 patent is directed to a system and apparatus for storing and distributing a series of "episodes" of media files to Internet client subscribers. Personal Audio describes the patent as directed to Internet podcast technology.
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: In re i.am.symbolic, llc, United States Court of Appeals, Federal Circuit, No. 2016-1507, 08 August 2017
 
A company founded by Black Eyed Peas front man William Adams—known popularly as "will.i.am"—has failed to persuade the U.S. Court of Appeals for the Federal Circuit that the Trademark Trial and Appeal Board had erred in determining that the mark I AM, as used in connection with cosmetics, sunglasses, jewelry, and other goods, was likely to be confused with previously registered and similar marks for the same or similar goods. The court upheld three Board decisions affirming the USPTO’s rejection of the company’s applications to register the I AM mark. The marks at issue were legally identical, and the goods, trade channels, and classes of consumers were closely related. A purported restriction on the goods covered by the applied for marks—stating that the goods were "associated with" Adams—did not meaningfully limit the marks in a way that would eliminated the likelihood of confusion, according to the court (In re i.am.symbolic, llc, August 8, 2017, Lourie, A.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Aug 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
 
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