Week’s news headlines – August 25th, 2017

Share on twitter
Share on facebook
Share on linkedin


Building a Portfolio in a Depressed Patent Market
In a recent article that was first published in The Hill, I stated that American innovators have paid a heavy price for shortsighted sweeping changes made to address abusive patent litigation

Crocs loses inter partes reexam, will appeal rejection of design patent for ornamental footwear
Boulder, CO-based shoe manufacturer Crocs, Inc. (NASDAQ:CROX) had a design patent rejected by the U.S. Patent and Trademark Office

Octane Standard for Attorney’s Fees Applies to Lanham Act and Patent Act Cases
Romag owns a patent and trademark directed to magnetic snap fasteners

Court decision highlights difficulty in challenging innovation patents
Late last month, Justice Burley handed down his decision in Doric Products Pty Ltd v Asia Pacific Trading (Aust) Pty Ltd [2017] FCA 849

BMW leads the way as automotive patents jump 20%
According to figures obtained by UK law firm EMW, there were 5,701 patent applications last year—up from 4,727 in 2012, an increase of 21%

Canon granted preliminary injunction in Germany
The complaint was based on the infringement of the German portion of Canon’s European patent number EP 2 087 407, relating to a drum unit and a process cartridge, according to a statement released by the company

Wal-Mart sued over ‘web crawler’ software
The complaint was filed by Spider Search Analytics (SSA) at the US District Court for the Western District of Arkansas, Fayette Division on Friday, August 18

Finding your way from patent value to return-on-investment. A patent strategy case study
Your CEO: “Why are we spending so much on patents?” Your CFO: “Do we have a financial model for this spend?” The path forward isn’t clear

Senator Toomey changes tune on exclusion orders and patents, supports Comcast against TiVo at ITC
As we’ve written about before, there’s an important case weaving its way through the ITC.  TiVo brought an action against Comcast for infringing the patents of Rovi (with which TiVo merged) covering inventions that allow consumers to control set top boxes from a remote device, such as a mobile phone

Finjan files patent infringement suit against Bitdefender as part of campaign to protect online security
On Wednesday, August 16th, East Palo Alto, CA-based web security firm Finjan (NASDAQ:FNJN) filed a complaint for patent infringement against online security software provider Bitdefender, Inc. of Fort Lauderdale, FL. In the suit, Finjan asserts four patents in the case and alleges that Bitdefender’s marketing of antivirus, cloud and sandboxing technologies infringes upon the patents-in-suit

Reasons for Germany UPC delay revealed
Thorsten Bausch, a patent attorney at Hoffman Eitle who published details on the Kluwer Patent Blog, said it seems the plaintiff argued that “the German ratification law to the UPC is tantamount to a law that amends or supplements the Basic Law”, which is the Constitution

EPO publishes unitary patent guide despite uncertainty
The European Patent Office (EPO) has stood firm in the face of speculation surrounding the implementation of the unitary patent by publishing a guide for future patent owners

ITC launches investigation into Caterpillar over road machines
The US International Trade Commission (ITC) has announced it will launch a patent infringement investigation into engineering company Caterpillar over road milling machines and components

International report – Identifying the last line of defence for innovative Canadian drugs
A review of innovator drugs approved by Health Canada in 2015 and 2016 offers no clear winner between the legal protections offered by Canadian patents and data protection ‒ both are important. In some cases, a key patent expires after data protection; other times, data protection outlasts the initial patent

From underwater storage to drones, what is Amazon’s patent strategy?
The futuristic concepts of one of the largest and constantly growing US online retailer have been intensively discussed online during the last few months

Is HTIA’s general counsel John Thorne a patent troll?
On August 10th, Congressional blog The Hill published a piece of writing by John Thorne, general counsel of the High Tech Inventors Alliance (HTIA), one of the newest institutions serving the efficient infringement lobby in Washington, D.C. The article was an advance critique of the US Inventors protest of the Patent Trial and Appeal Board (PTAB) scheduled for the following day; that event was considered successful as patent owners burnt their patents in full view of the U.S. Patent and Trademark Office as planned without any issues from law enforcement, despite the USPTO’s denial of a use permit application for the event

FTC wins preliminary injunction against operators of World Patent Marketing
At the request of the Federal Trade Commission, the United States District Court for the Southern District of Florida has issued a preliminary injunction against World Patent Marketing, an invention promotion company the FTC charged with being nothing more than a scam

Challenges for Managing Chinese Patent Prosecution: Anything More Than Lost in Translation?
If you are an in-house counsel at a U.S. technology company, managing its global patent portfolio with a potentially significant exposure in China, you face some special challenges trying to effectively and efficiently manage the Chinese patent prosecution through your Chinese IP firms

Former Trump campaign advisor: “Today, patents are worthless.”
By many accounts, August 11th’s peaceful protest of the Patent Trial and Appeal Board (PTAB), staged by inventors’ rights organization US Inventor, was very successful despite a decision by the U.S. Patent and Trademark Organization to deny a use permit application for the event

FTC wins injunction against ‘deceptive’ patent marketing company
The US District Court for the Southern District of Florida ordered the injunction prohibiting World Patent Marketing (WPM) from making false claims over the potential for financial gain for customers, and intimidating and making threats to customers registering complaints



Court affirms TTAB refusal to register ‘FIRST TUESDAY’ trademark for NC Lottery
Appellant North Carolina Lottery (“N.C. Lottery”) sought to register the mark “FIRST TUESDAY” in connection with lottery services and games to market the introduction of new scratch-off lottery games on the first Tuesday of every month

Music Artist Cannot Trademark “I Am”
William Adams, better known by his stage name “”, was refused registration of a Trademark for “I AM” on the ground of a likelihood of confusion with registered marks

Australian Modern Slavery Act: Why big brands will have nowhere to hide
The Australian Government has just confirmed that new legislation will be introduced requiring large Australian businesses to report annually on their efforts to address modern slavery

Jägermeister faces dilution claims over ‘Kühl as ice’ advert
Alcoholic drinks maker Jägermeister has been sued for trademark infringement by an outdoor wear company over an advert featuring the word “Kühl”

Puma withdraws appeal against Adidas injunction being lifted
In October last year, Puma filed a request for a preliminary injunction against the marketing of the shoe, alleging that the sole infringed two of its registered Community designs

New Balance wins ‘precedent-setting’ payout in China trademark dispute
Footwear manufacturer New Balance has won a significant trademark payout in China, after a court awarded the US company more than RMB 10 million ($1.5 million) in damages

Oakley takes action over shady products
The case was filed at the US District Court for the Central District of California on Thursday, August 17

BBC settles trademark infringement case in India
Kuldeep Singh, the owner of Brajindra Book Company, shortened the name of his business to ‘BBC’


Intellectual Property

Trump Administration opens probe into alleged Chinese theft of U.S. intellectual property
On Tuesday, August 15th, President Donald Trump signed a memo at the White House which authorized the U.S. Trade Representative (USTR) to make an inquiry into the alleged theft of American intellectual property which is believed to be aided by the Chinese federal government. Although there are concerns that the statement could increase tensions with China just as the U.S. government is seeking more cooperation from China on issues surrounding North Korea, the recent Trump memo comes in response to the $600 billion American intellectual property owners lose each year, a majority of which is due to Chinese tech transfer policies

Sri Lanka sets 2018 target for Madrid Protocol accession
Bathiudeen last week appointed JM Swaminathan to head the Intellectual Property Advisory Commission of Sri Lanka with instructions to speed up the process of entering the protocol

PIPCU secures £3.3m funding until 2019
The UK’s Police Intellectual Property Crime Unit (PIPCU), an organisation specialising in tackling illegal activity online, has received another round of government funding that keeps it running for at least two more years

Avoiding Intellectual Property Theft Abroad
Overseas markets present some of the best economic opportunities for U.S. companies, and at the same time can pose some of the greatest risks – such as counterfeiting

China announces plans to clamp down on IP theft
It comes 11 days after US President Donald Trump signed a memorandum asking the US Trade Representative Robert Lighthizer to assess whether there is a need to investigate IP theft in China



Photographer sues broadcaster over image of five billion dollar man
In a copyright infringement claim filed at the US District Court for the Southern District of New York, Marcel Thomas claimed an ABC television news segment on “Good Morning America”, an online story, and a news item on the Yahoo website wilfully and intentionally used the photograph without a licence

Artist in copyright row over ‘troubling’ rape accusation scene
Angela Hewitt, an artist from the Isle of Wight, UK, had threatened legal action against Kudos Productions for allegedly featuring her work without permission, according to documents seen by WIPR

Former NFL stars thrown into wrangle over image copyright
The complaint (pdf) was filed at the US District Court for the Southern District of New York on Tuesday, August 23

Musician continues copyright crusade against churches
Florida-based Bear Lake United Methodist Church (BLUMC) has been sued for copyright infringement after allegedly using copyrighted music in an advertisement online


Domain Name

PayPal retrieves gripe site despite laches claim
PayPal has won control of a domain name that had been used to criticise the company and promote websites that competed with the payment provider



Hollywood studios’ injunction against family-friendly startup affirmed
The case involved VidAngel, which streams family-friendly versions of movies that filter out obscenities, nudity and violence, and charges $7.99 a month

Our specialties

aSee our main areas of expertise