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 2021 - Issue 4
February 2021
 
 
 

News

 
General Information (6)
 
 
Belarus slashes fees for IP-related processes
 
On 1 January 2021, the National Center of Intellectual Property of Belarus (NCIP) announced slashing of intellectual property-related fees with immediate effect.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Belarus Full text
 
 
 
 
 
Bulgarian Patent Office launches new online services
 
On 15 December 2020, the Patent Office of the Republic of Bulgaria (BPO) launched a new and improved front office system for services related to trade mark and design applications.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Bulgaria Full text
 
 
 
 
 
European Commission seeks public opinion on GI scheme
 
On 15 January 2021, the European Commission launched a public consultation inviting citizens and organisations related to agriculture and rural development to fill an online questionnaire about steps to improve the geographical indications (GI) system. The consultation will end on 9 April 2021.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
European Union Full text
 
 
 
 
 
GCC Patent Office stops accepting patent applications
 
The Patent Office of the Cooperation Council for the Arab States of the Gulf (the GCC Patent Office) has issued a statement that it has stopped accepting new patent applications.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Gulf Cooperation Council Full text
 
 
 
 
 
Kazakhstan IPO discontinues e-filing discounts
 
With effect from 1 January 2021, Kazakhstan’s National Institute of Intellectual Property abolished the 15 percent discount offered to applicants for using the e-filing system.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Kazakhstan Full text
 
 
 
 
 
USPTO reopens comment period on sovereign immunity study
 
On 22 January 2021, the United States Patent and Trademark Office (USPTO) reopened the comment period on sovereign immunity enjoyed by state entities in intellectual property disputes. Comments will now be received until 22 February 2021.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
United States of America Full text
 
 
 
 
 
Ratifications (1)
 
 
France joins Geneva Act of Lisbon Agreement
 
On 21 January 2021, France deposited its instrument of ratification to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act") with the World Intellectual Property Organization.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
France Full text
 
 
 
 
 
Patents/Utility Models (5)
 
 
EPO amends rules on evidence taking in patent proceedings
 
On 15 December 2020, the Administrative Council of the European Patent Office (EPO) amended Rules 117 and 118 of the Implementing Regulations to the European Patent Convention (EPC), regarding how evidence can be taken and summons issued for the purpose, with effect from 1 January 2021.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
European Union Full text
 
 
 
 
 
Italian PTO waives power of attorney requirement
 
The Italian Patent and Trademark Office (IPTO) has recently announced that it will not require a separate power of attorney or a copy of a general power of attorney for international PCT applications filed on or after 1 March 2021.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Italy Full text
 
 
 
 
 
Switzerland implements revised patent examination guidelines
 
The Swiss Federal Institute of Intellectual Property has started applying the new Guidelines for the Substantive Examination of National Patent Applications to its pending procedures with effect from 1 January 2021.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Switzerland Full text
 
 
 
 
 
USPTO allows temporary relief in filing copies of foreign priority application
 
On 29 January 2021, the United States Patent and Trademark Office (USPTO) announced in an Official Gazette Notice that it will on request allow suspension of the requirement to file copies of foreign priority applications if the foreign intellectual property office is not participating with the USPTO in a priority document exchange program.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
United States of America Full text
 
 
 
 
 
PATENTSCOPE adds more national patent collections
 
The World Intellectual Property Organization (WIPO) has added the national patent collections of Czechia, former Czechoslovakia, the Netherlands, Serbia, Slovakia and Sweden to PATENTSCOPE, its global patent database search system that facilitates free search of patent data.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
World Intellectual Property Organization Full text
 
 
 
 
 
Trademarks (3)
 
 
Denmark makes its trademark images accessible on TMview visual search
 
From 18 December 2020, the Danish Patent and Trademark Office (DKPTO) has made its trademark images available to the TMview visual search tool, an online image search function that allows users to search for trademark images from the databases of all participating trademark offices.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Denmark Full text
 
 
 
 
 
Japan publishes Japan-Taiwan Concordance List of Similar Group Codes
 
The Japanese Patent Office has recently published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to the 11th edition of Nice Classification, version 2021 (NCL11-2021), that came into effect on 1 January 2021.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Japan, Taiwan Full text
 
 
 
 
 
Norwegian IPO starts using HDB terms in TMclass
 
While increasing its participation in TMclass, the Norwegian Industrial Property Office (NIPO) started using and accepting terms from the harmonised database of goods and services (HDB) in TMclass in Norwegian with effect from 20 January 2021.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Norway Full text
 
 
 
 
 
Industrial Models and Designs (1)
 
 
Israel revises individual designation fees for Hague users
 
In accordance with the provisions of the Common Regulations under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, the World Intellectual Property Organization has notified the revised individual fees payable when Israel is designated in an international application or in an application for renewal of international registration or is a subject of subsequent designation.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Feb 2021
 
Israel Full text
 
 
 
 

Cases

 
Copyright (1)
 
 
USA: Desire LLC v. Manna Textiles Inc., United States Court of Appeals, Ninth Circuit, No. 17-56641, 02 February 2021
 
By disallowing multiple statutory damages awards under the Copyright Act, the Ninth Circuit could cause future plaintiffs under similar facts to sue each defendant separately.

In a suit—in which a jury returned a verdict of $480,000 against five defendants in the textile industry—involving infringement of a single copyrighted fabric design, the U.S. Court of Appeals in San Francisco has reversed and remanded the damages award, ruling that the Copyright Act does not permit multiple statutory damages awards where one infringer is jointly and severally liable with all other infringers but the other infringers are not completely jointly and severally liable with one another. Additional groups of jointly and severally liable defendants may be subject to separate awards of statutory damages, but only if no defendant in the group is jointly and severally liable with a member of another group. Circuit Judge Kim McLane Wardlaw would have upheld the award, arguing that the Copyright Act permits multiple awards under these facts (Desire, LLC v. Manna Textiles, Inc., February 2, 2021, Bennett, M.).
 
Author(s): Robert B. Barnett Jr.
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent (10)
 
 
USA: M & K Holdings Inc. v. Samsung Electronics Co. Ltd., United States Court of Appeals, Federal Circuit, No. 2020-1160, 01 February 2021
 
However, PTAB’s invalidation of one claim on anticipation grounds was reversed for procedural error.

The U.S. Patent Trial and Appeal Board properly held that prior art references cited in an inter partes review of a patent covering a method of compressing video files were publicly accessible and rendered the patent claims obvious, according to the U.S. Court of Appeals for the Federal Circuit. However, the court vacated the Board’s holding that claim 3 of the patent at issue was unpatentable because the Board found claim 3 unpatentable as anticipated when the petition asserted only obviousness as to that claim (M & K Holdings, Inc. v. Samsung Electronics Co., Ltd., February 1, 2021, Bryson, W.).
 
Author(s): Jody Coultas, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Trustees of Columbia University in the City of New York v. Illumina Inc., United States Court of Appeals, Federal Circuit, No. 19-2302, 01 February 2021
 
Substantial evidence supported finding that a skilled person would have been motivated to use an allyl capping group for sequencing-by-synthesis method.

In an inter partes review of five patents directed to nucleotide analogues and a method of using them to sequence DNA, the Patent Trial and Appeal Board correctly determined that the challenged claims were unpatentable as obvious, the U.S. Court of Appeals for the Federal Circuit has held. The court agreed with the Board that combinations of three prior art references indicated that the challenged claims’ disclosure of the use of an allyl capping group would have been obvious. Those references, in combination with expert testimony and admissions made in the patents’ substantially similar specifications, constituted substantial evidence supporting the Board’s conclusions (Trustees of Columbia University in the City of New York v. Illumina, Inc., February 1, 2021, Lourie, A.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: In re SK hynix Inc., United States Court of Appeals, Federal Circuit, No. 21-113, 01 February 2021
 
Mandamus was necessary to correct the district court’s refusal to give priority to deciding the transfer issue.

The federal district court in Waco, Texas, has been ordered by the U.S. Court of Appeals for the Federal Circuit to stay all proceeding in a patent infringement suit brought by Netlist, Inc., until the district court resolves a pending motion by defendants SK hynix Inc., and SK hynix America Inc., requesting transfer of the case to the Northern District of California. In granting SK hynix’s petition for writ of mandamus, the Federal Circuit described the district court’s handling of the transfer motion as "egregious delay and blatant disregard for precedent." In view of the fact that the district court had scheduled a hearing on transfer motion for February 2 and presumably would "expeditiously" resolve the transfer issue, the appropriate relief was for the district court to "stay all proceedings concerning the substantive issues of the case and all discovery until such time that it has issued a ruling on the motion capable of providing meaningful appellate review of the reasons for its decision" (In re SK hynix Inc., February 1, 2021, Moore, K.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Deere & Co. v Gramm, United States Court of Appeals, Federal Circuit, No. 20-1488, 04 February 2021
 
Substantial evidence supported PTAB’s finding that prior art did not disclose the challenged patent’s "biasing means" that kept a sensor arm at a predetermined angle.

Substantial evidence supported the Patent Trial and Appeal Board’s rejection of an obviousness challenge of 15 claims of a patent directed to an apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field, according to the U.S. Court of Appeals for the Federal Circuit. The Board’s determination that the prior art did not teach a key claimed function of the challenged patent was a question of fact that was subject to appellate review for substantial evidence, not de novo review. Disclosures in the prior art provided a basis for the Board’s finding that a prior-art sensor bar was "urged" into an angle relative to the vertical only through contact with the ground, and not by means of a "biasing" process disclosed by the challenged claims (Deere & Co. v Gramm, February 4, 2021, Lourie, A.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: vPersonalize Inc. v. Magnetize Consultants Ltd., United States Court of Appeals, Federal Circuit, No. 20-1963, 04 February 2021
 
There was no showing that the patent holder’s litigation conduct was so egregious or its pre-suit investigation was so deficient as to compel a fee award.

The federal district court in Seattle did not abuse its discretion in declining to award attorney fees to Magnetize Consultants for its successful defense of patent infringement and misappropriation of trade secret claims by vPersonalize, Inc., the U.S. Court of Appeals for the Federal Circuit has held. The district court expressly stated that it made no finding that vPersonalize’s case was frivolous or that its attorneys acted in bad faith. The court also properly could have found that its sanctions during the discovery process adequately dealt with vPersonalize’s discovery abuses (vPersonalize Inc. v. Magnetize Consultants Ltd., February 4, 2021, Dyk, T.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: In re Mohapatra, United States Court of Appeals, Federal Circuit, No. 20-1935, 05 February 2021
 
Method to counter credit card fraud by allowing the cardholder to change the card’s security code anytime using a card management facility accessible over the Internet did not qualify as an inventive concept.

A patent application which describes a method to enable credit cardholders to change the card’s security code at any time in order to counter credit card fraud was an abstract idea, the U.S. Court of Appeals for the Federal Circuit has ruled. None of the additional elements of the claims, such as Internet connectivity, web application, or mobile application, transformed the abstract idea into patent-eligible subject matter. Accordingly, the holding of the Patent Trial and Appeal Board that the patent application was directed to unpatentable subject matter was affirmed (In re Mohapatra, February 5, 2021, Bryson, W.).
 
Author(s): Linda O'Brien, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: cxLoyalty Inc. v. Maritz Holdings Inc., United States Court of Appeals, Federal Circuit, No. 2020-1307, 08 February 2020
 
Invention was directed merely to the abstract idea of facilitating transactions between a purchaser using a points-based rewards program and a seller using a vendor system that transacts purchases in currency.

Both the original and substitute claims of a patent directed to customer loyalty programs were ineligible for patenting under 35 U.S.C. § 101, the U.S. Court of Appeals for the Federal Circuit has held. The court lacked jurisdiction to hear an appeal as to whether the patent was eligible for covered business method (CBM) review, but on the merits, it affirmed a decision of the Patent Trial and Appeal Board finding the 15 original patent claims ineligible under Section 101 and reversed the Board’s decision finding eight substitute claims to be patent-eligible. The claims were directed to the abstract idea of facilitating, or brokering, a commercial transaction between a purchaser using a points-based rewards program and a seller using a vendor system that transacts purchases in currency. The Board had concluded that the substitute claims contained a patentable inventive concept, but the Federal Circuit disagreed, holding that the claims did nothing but apply the abstract idea using computer technology that was well-understood, routine, and conventional (cxLoyalty, Inc. v. Maritz Holdings Inc., February 8, 2021, Prost, S.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: GlaxoSmithKline LLC v. Teva Pharmaceuticals USA Inc., United States Bankruptcy Court, District of Delaware, No. 18-1976, 09 February 2021
 
The case has been flagged as having far-reaching implications for the marketing of generic drugs under the so-called "skinny label" carve out.

The full U.S. Court of Appeals for the Federal Circuit has decided to rehear arguments in a patent infringement case brought by GlaxoSmithKline ("GSK") against Teva Pharmaceuticals over its labelling of generic versions of GSK’s Coreg® drug for treating heart conditions. On October 5, 2020, a divided Federal Circuit panel reversed a district court’s grant of judgment as a matter of law to Teva and reinstated the jury’s infringement verdict and $235 million damages award. The panel found that both Teva’s "skinny" label and its full label induced doctors to infringe GSK’s asserted patent. The en banc court will hear oral arguments only with respect to one issue: whether there was substantial evidence to support the jury’s verdict of induced infringement during the "skinny label" time period, from January 8, 2008 through April 30, 2011 (GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., February 9, 2021, per curiam).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Chudik v. Hirshfeld, United States Court of Appeals, Federal Circuit, No. 20-1833, 08 February 2021
 
Entitlement to C-delay adjustments is available when a patent issued under a PTAB decision reversing an examiner’s unpatentability ruling or a court decision reversing the PTAB’s unpatentability ruling; this provision doesn’t apply to an examiner’s reconsideration of her own decisions.

A patent owner was not entitled to a C-delay adjustment for the duration of the patent based upon the length of time his four notices of appeal were pending in the U.S. Patent and Trademark Office because the relevant statutory provision did not cover the period during which the examiner repeatedly reopened her case to withdraw her own decisions, the U.S. Court of Appeals for the Federal Circuit held in affirming a decision by a federal district court to deny the adjustment. By choosing continued examination after the first final rejection rather than pursuing an immediate appeal to the Patent Trial and Appeal Board, the applicant took the risk that he would not be entitled to adjustments for that period (Chudik v. Hirshfeld, February 8, 2021, Taranto, R.).
 
Author(s): John W. Scanlan
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Apple Inc. v. Uniloc 2017 LLC, United States Court of Appeals, Federal Circuit, No. 19-1151, 09 February 2021
 
PTAB correctly held that challenged patent was obvious as to claims about transmitting connectivity information, but not as to claims about selecting the method of generating a voice message.

Claims regarding transmission of connectivity information were obvious under the prior art, while claims for controlling the recording method based on connectivity were not, the Federal Circuit has held. The Federal Circuit declined to reweigh evidence already heard by the PTAB when the applicable standard of review was whether substantial evidence supported the PTAB’s ruling (Apple Inc. v. Uniloc 2017 LLC , February 9, 2021, Lourie, A.).
 
Author(s): Randall Holbrook
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
Trademark (1)
 
 
USA: Belmora LLC. v. Bayer Consumer Care AG, United States Court of Appeals, Fourth Circuit, No. 18-2183, 02 February 2021
 
Use of analogous state-law limitations period for Lanham Act Section 43(a) claims was "unsatisfactory"; summary judgment order finding Bayer’s false association and false advertising claims time-barred was vacated.

Reasoning that a district court erred by reading a limitations period into the Lanham Act where none existed for Section 43(a) claims, the U.S. Court of Appeals in Richmond has vacated a decision rejecting as time-barred false association and false advertising claims by Bayer Consumer Care, AG, against competitor Belmora LLC over use of the mark FLANAX for naproxen sodium pain relieves in the United States. Reasoning that the analogous state-law statute of limitations was "unsatisfactory" for adjudicating the claims, the court held that the affirmative defense of laches should have been applied. The district court also erred in declining to consider whether Bayer’s filing of a petition with the USPTO to cancel Belmora’s FLANAX registration tolled the statute of limitations applicable to its California state-law unfair competition and false advertising claims The case was remanded for the district court to determine whether Bayer’s Section 43(a) claims were barred by laches, whether its state-law claims were time-barred, and to make any necessary further factual findings (Belmora, LLC. v. Bayer Consumer Care AG, February 2, 2021, Floyd, H.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Feb 2021
 
United States of America Full text Full text as PDF
 
 
 
 
 
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