Week’s news headlines – Jan. 19th 2017

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Understanding the Geographic Scope of a Trademark Injunction: Guthrie v. Context Media
On June 13, 2016, the Second Circuit Court of Appeals in Guthrie Healthcare System v. ContextMedia, Inc. – a trademark infringement case involving visually-similar entity logos – affirmed the Southern District Court of New York as to the district court’s finding of a likelihood of trademark confusion, and vacated, reversed, and remanded the district court’s decision as to the geographic scope of the trademark injunction on the basis that the injunction was too narrowly construed and as such, failed to protect the plaintiff from the harms caused by potential confusion.

Who will President Trump Nominate as the next Director of the Patent and Trademark Office?Earlier this week the reported that new names have surfaced as candidates for Director of the United States Patent and Trademark Office (USPTO). Among those names are Randall Rader, the former Chief Judge of the United States Court of Appeals. But according to patent expert and noted commentator Hal Wegner, who generally does have well placed sources for this kind of information, the short list currently includes Phil Johnson (Johnson & Johson), Michael McKeon (Fish & Richardson), and Steve Pinkos (American Continental Group).

UK company battles Disney in Alice in Wonderland TM claim
UK-based luxury boutique store Alice Looking has filed a complaint against Disney for trademark infringement over its ‘Alice Through the Looking Glass’ trademarks.



The biggest US patent litigation targets see a big drop off in cases in 2016
The headline numbers for the 2016 litigation year in the US were out last week and showed a big drop in the total number of new patent infringement cases. According to Unified Patents there were 4,382 new cases, a drop of almost 25% on the 2015 figure. That is the lowest level since 2011 when the America Invents Act (AIA) came into force and new joinder rules had a significant inflationary effect on litigation volume.

The Equitable Defense of Laches: SCA Hygiene Products v. First Quality Baby Products
The equitable defense of laches has been a useful tool for defendants in intellectual property litigation for over a hundred years, but a recent case in the U.S. Supreme Court could potentially remove the defense in patent infringement cases.In SCA Hygiene Products AB v. First Quality Baby Products LLC, the Supreme Court must decide whether the doctrine of laches bars patent infringement claims filed within the six-year statutory limitation period established under 35 U.S.C. § 286 of the Patent Act.

Changed Standard for Design Patent Damages Means More Design Patents Necessary
On December 6, 2016, the Supreme Court of the United States reversed the decision of the Federal Circuit Court of Appeals in Samsung Electronics Co. v. Apple Inc. awarding San Francisco Bay Area tech giant Apple Inc. (Apple) $399M in damages for infringement by Samsung Electronics Co. (Samsung) of three design patents related to Apple’s iPhone product. The Supreme Court’s decision – which was reached unanimously – clarified the uncertainty of having to determine the “article of manufacture” in design patent damage analyses, particularly with regard to the sale of complex, multicomponent products like smartphones.

Best of CES 2017 includes parental control software, gaming mice and ceiling tiles for wireless charging
The annual Consumer Electronics Show (CES) in Las Vegas never fails to render up some truly forward-thinking gadgets which represent the next generation of consumer tech. 2017’s version of this industry show didn’t disappoint and people couldn’t keep their hands off some exhibits, quite literally in the case of San Francisco-based Razer Inc. which announced that two laptop prototypes which each boasted three 4K-resolution screens were stolen from its CES booth.

Positive IP feel following plans for UPC opening
Lawyers have told WIPR that the intellectual property world “feels a lot more positive about the future” following the announcement that the Unified Patent Court (UPC) is expected to come into force in December this year.

Greener pastures for US patents
Will Brexit force US patent owners to shun the UK and seek protection in other countries and, if yes, who would take its place? WIPR investigates.

Infringe at Will Culture Takes Hold as America’s Patent System Erodes
Efficient infringement occurs when one, usually a large entity, steals the intellectual property of another without consequences. The property taken is typically a patent, and the victimized party is always an individual or business of much less size. If efficient infringement were played out in a Country Western movie those practicing this business model would be wearing the blackest of black hats.

Heineken faces website patent infringement claims
Texas-based company Guyzar has sued Heineken for patent infringement centring on the brewing company’s website. According to the complaint, Heineken was “profiting in an illegal and unauthorised manner” by infringing US patent number 5,845,070, called “Security system for internet provider transaction”.


Intellectual Property

Federal Circuit PTAB appeal statistics, and how the Board handles remands
As at the end of the year, the Federal Circuit had affirmed on every issued in 77.4% of the Patent Trial and Appeal Board appeals it had seen. Finnegan has analysed what parties can expect from cases that are remanded to the Board

Lee v Tam: SCOTUS provides ‘scant’ insight into view on case
The US Supreme Court yesterday heard oral arguments in the Lee v Tam trademark dispute, which centres on rock band The Slants, but lawyers have told WIPR that while the court pressed both sides, it provided “scant” insight into its position on the case.

Fisher-Price and Mattel sue over children ride-ons
Fisher-Price and Mattel, US companies that produce toys for children, have filed a complaint against a company producing bicycles and electric ride-ons for patent infringement.

Theresa May Brexit speech: UK may leave UPC, say lawyers
Yesterday, January 17, May set out a 12-step plan that the UK government will use for negotiating Brexit terms, adding that the UK will not “seek to hold on to bits of membership as we leave”.



Paul McCartney files copyright suit against Sony/ATV Publishing
McCartney, who was in rock band The Beatles, filed his lawsuit at the US District Court for the Southern District of New York yesterday, January 18.

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