Week’s news headlines – June 29, 2017

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In a tough patent market, another Taiwanese OEM goes to Texas to extract value from its patent portfolio
Qisda is a major publicly-listed contract manufacturer in Taiwan, appearing among the top 10 global original design manufacturers (ODMs)

The PTAB Killing Fields: VirnetX patents worth more than $1 billion in district court lost at PTAB
Recently, we raised the question as to whether or not 90 percent of patents which are being challenged at the Patent Trial and Appeal Board (PTAB) are being found defective once trial proceedings have concluded

Patentability: The Adequate Description Requirement of 35 U.S.C. 112
The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough particularity such that those skilled in the art will be able to make, use and understand the invention that was made by the inventor

Nintendo trademark, Universal patent applications shed light on future of Super Nintendo World
Last November, Japanese consumer electronics company Nintendo (TYO:7974) announced a partnership with American amusement park developer Universal Parks & Resorts to open a series of Nintendo-themed areas at Universal theme parks across the world

Federal Circuit backs USPTO attorneys’ fees rule
In a precedential decision on Friday, June 23, the Federal Circuit ruled against biotechnology company NantKwest, ordering it to pay attorneys’ fees

SCOTUS asks for government views in Samsung v Apple dispute
Yesterday, June 26, the acting solicitor general, Jeffrey Wall, was invited to file a brief expressing the view of the US

UK takes next step in UPC plan
The Unified Patent Court (Immunities and Privileges) Order 2017 is the final legislative step in the UK’s ratification of the UPC.

Next PTO Director faces a U.S. patent system at a crossroads
Ever since the United States Supreme Court issued its decision in eBay v. MercExchange in 2006 patent owners have been under siege. Whether it be a never ending series of judicial decisions that have significantly eroded the exclusive nature of a U.S. patent, or the establishment of the Patent Trial and Appeal Board, patents have become greatly devalued. Indeed, in some industries vital to the success of the U.S. economy – software and biotechnology – patents are not just worth less, but may be worthless.

Estoppel: putting a stop to repeat offenders
The case law surrounding estoppel in inter partes reviews is still being developed, but there is some useful guidance so far, says John Isacson of Perkins Coie

Issa seems to believe patents are an entitlement, not a property right
In the June 13th House Judiciary Subcommittee hearing on the effects of TC Heartland, Chairman Darrell showed just how conflicted he is

President Trump must pick a PTO Director who believes patents are private property rights
The United States patent system has become so uncertain and unstable that many innovators are consciously choosing to keep their innovations as trade secrets, depriving the public of the most fundamental and important benefit of any patent system



Urban Outfitters attempts to distance itself from Coachella TM claim
In March of this year, WIPR reported that the organisers of the festival had accused the retailer, and its subsidiary Free People, of selling ‘Coachella’-branded apparel


Intellectual Property

Prepare for More Estoppel if the Supreme Court Reverses Federal Circuit on Partial IPR Institutions
On May 22, 2017, the Supreme Court granted certiorari in SAS Institute v. Lee to determine whether the Patent Trial and Appeals Board (“Board”) is required by statute to institute every claim challenged in a petition for inter partes review (“IPR”) if any claim in the petition is instituted

Supreme Court Rocks the Trademark Office in ‘Slants’ Case
After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week settles TM suit with rival
On Thursday, June 22, US District Judge Susan Dlott dismissed the claim with prejudice, with each side responsible for its own attorneys’ fees

The Battle for ‘ODESSA’: The Story of Trademark Registration in Ukraine
Kyiv, Odessa, Crimea, Novy Svet, Inkerman – not only these are the names of locations, but also the signs registered as trademarks for alcoholic beverages, and some cases, the companies themselves, in the Ukraine

What Direction Will the Incoming Director of the U.S. Patent and Trademark Office Need to Provide?
In IP Watchdog’s “Patent and IP Wishes for 2017” column[1] I expressed hope that new patent-policy relevant federal appointees understand the U.S. patent system has been weakened too much in recent years, and recognize the need to change course and focus on optimizing the patent system’s promotion of innovation. Now, a half-year later, the stakes remain high as the administration prepares to select a new leader for the U.S. Patent and Trademark Office (USPTO).[2] The U.S. patent system has declined to the tenth position in the annual U.S. Chamber of Commerce international ranking, making the selection of new USPTO leadership even more critical.[3] Let’s consider the initial tasks incoming USPTO leadership will first need to undertake

Event planner Blue Ivy wins motion for early discovery in trademark opposition case against Beyoncé
Earlier this year, news reports indicated that American entertainment and music mogul Beyoncé Giselle Knowles-Carter had filed a trademark application at the U.S. Patent and Trademark Office to protect the use of the standard character mark BLUE IVY CARTER for a wide range of consumer goods. Beyoncé’s licensing business BGK Trademark Holdings is seeking to protect the mark, which is also the name of Beyoncé’s daughter with husband and rap star Jay Z, in a wide range of goods including an assortment of baby goods and cosmetics. BGK filed U.S. Trademark Serial No. 86883293 for BLUE IVY CARTER back on January 22nd, 2016.

Tour de France champion wins ‘restraining order’ in domain dispute
The complaint was initially filed at the US District Court for the District of Minnesota on June 15, 2017

United Airlines obtains injunction against complaint website
A judge in Canada’s Federal Court found that the website,, had violated United’s trademarks and copyright on Friday, June 23

Fruit of the Loom takes rival to court over fruit trademark
The lawsuit was filed at the US District Court for the Western District of Kentucky on Tuesday, June 27

Vogue swipes at jewellery retailer in trademark row
Advance Publications, which owns Condé Nast, the publisher of Vogue, The New Yorker, Wired and Vanity Fair, filed its claim against Legend Effects on Monday, June 26 at the US District Court for the Southern District of New York

International report – Are trademark surveys worth the cost?
The probative value of a comprehensive trademark survey rarely justifies its cost

WIPR webinar: L’Occitane and Abbott discuss IP recordals
The WIPR webinar took place yesterday, June 27, and was co-presented by Anna Popova, director of IP recordals at IP service provider BrandStock

EUIPO report outlines online IP concerns
Released last week at the International IP Enforcement Summit in Berlin, the “2017 Situation Report on Counterfeiting and Piracy in the European Union” report aims to “put the spotlight on the importance of tackling the criminals” who benefit from the sale of fake goods



Tupac Shakur film hit with copyright suit by writer
Writer Kevin Powell filed the claim at the US District Court for the Eastern District of New York on Friday, June 23

Elsevier bags $15 million copyright verdict
The decision was handed down at the US District Court for the Southern District of New York on Wednesday, June 21

International report – Eligibility for Digital Millennium Copyright Act safe harbour
The Tenth Circuit recently affirmed, and the Ninth Circuit overruled, lower court rulings regarding eligibility for safe harbour protection provided under Section 512(c) of the Digital Millennium Copyright Act



European Anti-Fraud Office seizes 70,000 fake vehicle parts
OLAF investigates fraud that affects the EU budget, corruption and serious misconduct within the European institutions, and develops anti-fraud legislation and policies

Trio given suspended sentences over pirated content
Three UK-based men have been given prison sentences for a combined total of four years for providing illegal access to copyrighted content online



IP Europe hands innovation manifesto to European Commission
The manifesto, which was “developed to help Europe drive growth and create high-value jobs in 5G and the Internet of Things (IoT) revolution”, was handed to the European Commission yesterday, June 27


Domain name

.uk domain disputes fell slightly in 2016: Nominet
Nominet, the manager of the .uk namespace, handled a total of 703 disputes in 2016 in its dispute resolution centre (DRS), a reduction of 25 from the previous year


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