Week’s news headlines – Apr. 13th 2017


Swiss-type Claims Confirmed as Patentable by Malaysian High Court
The Federal Court’s decision in SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor (“SKB Shutters”) has been widely reported and commented on. Briefly, the Federal Court decided that if an independent claim of a patent was established as invalid in the course of litigation, a claim dependent on that independent claim had no separate life of its own. The dependent claim could only be maintained by re-writing it as an independent claim including all the limitations of its parent claim. Under the Patents Act 1983, such an amendment could not be made by the Registrar when there were pending court proceedings for infringement or invalidation. In other words, the validity of a patent hinged solely on the validity of its independent claim or claims.

Qualcomm top of the Indian patent filings pops as foreign firms reverse two years of application declines
India’s Controller General of Patents, Designs and Trademarks (CGPDT) released its annual report for the 2015-2016 fiscal year last week, and the results showed a 10% jump in applications, reversing two straight years of slight decline. The list of top applicants for the first time included a Chinese company, as Huawei at least tripled its filings in India – which continues to be a market of great risk and great opportunity for Chinese smartphone makers.

Apple’s move away from British designer of device GPUs could spark patent dispute
On Monday, April 3rd, multiple news outlets were reporting that American consumer gadget developer Apple Inc. (NASDAQ:AAPL) had informed British semiconductor manufacturer Imagination Technologies (LON:IMG) that it would no longer be the designer of graphics processing units (GPUs) for Apple portable electronic devices. Shares of Imagination Technologies plunged 70 percent on the news and further comments from executives indicate that a patent battle might be brewing over Apple’s business decision.

Erise IP is seeking a Patent Analyst or Patent Agent for Kansas City or Denver Offices
Erise IP, P.A. is seeking a Patent Analyst or Patent Agent to assist in patent litigation matters and patent post-grant proceedings before the PTAB. A successful applicant’s primary responsibilities will include distilling a body of analysis of technical and patent-related subject matter into a concise, clear, and actionable assessment for both technical and non-technical audiences.

Thinking about IP and collaboration at the Patent-Antitrust Interface
As has become customary for this time of year, over the last several weeks many of us in the IP community – private practitioners of law and business, academics, and government officials – were treated to a set of interesting conferences and festive gatherings in DC and New York that gave occasion for us all to consider various informative views from various perspectives about the ways that IP can further or frustrate important social and economic goals for our nation.

Patenting Costs in ASEAN: Upcoming Global Economic Powerhouse
Founded in 1967 by Indonesia, Malaysia, the Philippines, Singapore, and Thailand, the Association of Southeast Asian Nations (ASEAN) is a regional organization that aims to “accelerate economic growth, social progress, and sociocultural evolution among its members.” The organization’s membership has subsequently expanded to ten, with the induction of Brunei, Cambodia, Laos, Myanmar, and Vietnam.

Facebook’s Oculus hit with virtual reality patent suit
The lawsuit, filed on Thursday, April 6 at the US District Court for the District of Delaware, alleged that Oculus had incorporated a competitor’s technology into its Rift headset.

Samsung accused of conspiring with WiLAN to wield Qimonda patents against chip competitors
A Central California district court has ruled that Samsung Electronics must fight antitrust claims that allege it played a pivotal role in WiLAN’s 2016 acquisition, and subsequent assertion, of patents previously owned by Qimonda. The case shines a spotlight on the circumstances surrounding the €30 million (US$33 million) deal for the bankrupt chipmaker’s portfolio – as well as on Samsung’s relationships with NPEs.

CBP sides with Arista in Cisco patent dispute
The US Customs and Border Protection (CBP) has sided with computer networking company Arista in its long-running patent dispute with technology multinational Cisco.

2016 Patent Market Report: Overview
While 2016 may have seemed like a tough year for the patent market – with dropping sales, decreasing prices, and the effects of Alice continuing to take its toll on fintech – there are also many new opportunities emerging.

International report – Continuing uncertainty over divisional patent system
Divisional patent applications refer to patent applications that are divided out of an initially filed application (also referred as the main or parent patent application). Section 16 of the Patents Act 1970 provides that a divisional application can be filed at any time before grant (or refusal) of the parent application. While a divisional application is usually filed with a view to resolving invention-based objections raised by the controller in the examination report, it may also be filed voluntarily by the applicant, provided that the applicant is able to prove the presence of distinct inventions in respect of the parent patent application.

Uber launches patent buying programme as it looks to aggressively grow portfolio
Uber has launched a patent purchase initiative as it looks to bolster its still relatively small portfolio. The programme will be known as UP3 and is modelled along the same lines as the Industry Patent Purchase Promotion (IP3) and Google’s 2015 Patent Purchase Promotion. UP3 will be led by Kurt Brasch, who pioneered the relatively painless approach to patent deals while he was at Google as a way to give patent owners a quicker and easier way of selling their assets.

Rethinking the Annual Patent Application Filing Target
Many a Chief IP Counsel (“CIPC”) annually determine, at the end of the fourth quarter or the beginning of the first quarter, patent application filing targets for their enterprise. This exercise is most usually dictated by a C-suite executive (e.g., GC, CFO, CTO, COO, or CEO) in order to allocate an IP budget. After all, the commonly-held belief in the corporate world is that if you do not set a budget, every dollar spent is over budget. Right!? Thus, we ask: “Should we be setting annual (‘hard’ or ‘soft’) filing targets in the first place and, if so, how do we go about setting them?”

FTC acting chair Ohlhausen tells ABA IP conference agency will wait to update patent guidelines
Recent reports from the business publication Bloomberg indicates that the U.S. Federal Trade Commission (FTC) will not be updating its guidelines used to analyze antitrust issues which are presented by patent law issues. The news stems from comments made by FTC acting chairman Maureen K. Ohlhausen at the 32nd Annual Intellectual Property Law Conference sponsored by the American Bar Association (ABA).

Qualcomm files counterclaim in patent suit with Apple
In January WIPR reported that Apple had sued Qualcomm at the US District Court for the Southern District of California after it had allegedly been overcharged billions of dollars by Qualcomm.

USITC investigates set-top boxes after Sony complaint
Japan-based Sony filed its complaint in March, alleging that certain digital cable and satellite products, set-top boxes, gateways, and components sold by telecommunications company Arris International were infringing Sony’s patents.

What happens when lifestyle drugs like Viagra and Cialis lose patent protections?
Each year, millions of men rely on pharmaceuticals like Viagra and Cialis for their erectile dysfunction (ED), but they may not be the only ones facing dysfunctionalities.  As the patents on these lucrative lifestyle drugs come to an end, price tags and bottom lines are expected to plummet.



WWE sues BitTorrent users in copyright claim
WWE filed its suit (pdf) at the US District Court for the District of Connecticut on Thursday, April 6, alleging that the defendants, who are unidentified, infringed and vicariously infringed its copyright.

Copyright claim against Ed Sheeran’s ‘Photograph’ dismissed
Judge James Selna of the US District Court for the Central District of California, Southern Division dismissed (pdf) with prejudice the copyright claim brought by Martin Harrington and Thomas Leonard yesterday, April 10.

Oculus seeks to overturn $500m copyright and TM verdict
A Texas jury awarded the damages to ZeniMax in early February after finding copyright and trademark infringement and breach of a non-disclosure agreement.

‘Charging Bull’ artist says ‘Fearless Girl’ sculpture violates his rights
Yesterday, April 12, reports from Reuters and The Guardian said that Italian-American artist Arturo Di Modica also said that the “Fearless Girl” sculpture changes the “meaning and context” of his sculpture.



Trademarks for public domain artwork can be accepted, says court
Trademarking artwork that is in the public domain does not contravene public policy or the principles of morality, according to the Court of Justice of the European Free Trade Association States (EFTA Court).

11th Cir. holds “skim milk” label protected by 1st Amendment
In a case with potentially significant ramifications for regulatory oversight of the labeling and advertising of foods and pharmaceuticals, the Eleventh Circuit held the First Amendment precluded the Florida Department of Agriculture’s Bureau of Dairy Industry (the “Florida Bureau”) from prohibiting a dairy company’s use of the phrase “skim milk” to describe its “all-natural” milk product. Ocheesee Creamery LLC v. Putnam, Case No. 16-12049, 2017 WL 1046104 (11th Cir. Mar. 20, 2017).

Siemens employee arrested over suspected trade secrets theft
According to the country’s national financial crimes prosecutor (translated), the man is suspected of leaking patents and trade secrets to a Chinese competitor.

International report – Protecting trade secrets using non-disclosure agreements
Recent US case law has raised the possibility that the common practice of including an expiry date in a non-disclosure agreement (also known as a confidentiality agreement) may lead to an inadvertent loss of trade secret protection.

Hallmark sues rival in trademark claim
Hallmark filed its suit (pdf) against Dickens at the US District Court for the Eastern District of New York on Monday, April 10.

Kerrygold seller in trademark infringement bout
Ornua Foods North America and Ornua Co-Operative filed suit against Eurogold and Old World Creamery at the US District Court for the Eastern District of Wisconsin, Milwaukee Division on Monday, April 10.



Broadcaster alliance steps up piracy fight
The International Broadcaster Coalition Against Piracy (IBCAP), an alliance of international broadcasters, and NAGRA, a provider of content protection solutions, have expanded their agreement to bring anti-piracy technology to the market.

Amazon cracks down on illicit media-streaming players
E-commerce company Amazon is looking to crack down on unauthorised media-streaming players by updating its policy on restricted products.


Intellectual Property

Trump announces IPEC nomination
US president Donald Trump has nominated Vishal Amin to fill the position of Intellectual Property Enforcement Coordinator (IPEC).


Domain Name

Sanofi recovers domain registered with fake details
Healthcare company Sanofi has recovered a domain name that was registered with fake details and featured the word ‘san0fi’.

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