Week’s news headlines – May 12th 2017


In a patent market showing signs of significant price depression, Snap reportedly pays $7.7 million for a single geofilter asset
As readers of the IAM Market blog won’t have failed to notice, the patent transaction trade is currently at something of a low ebb. Generally speaking, sellers outnumber buyers; and some of the top spenders on patent assets are pulling back from the secondary market, or exiting it altogether.

Federal Circuit affirms patent invalidation despite Volkswagen settlement
Handed down on Friday, May 5, the two precedential decisions backed the Patent Trial and Appeal Board’s (PTAB) invalidation of the patents through a re-examination.

Venture branch of Korean patent fund notches another profitable year and looks to broaden its scope
The venture capital arm of Korean patent fund operator Intellectual Discovery recorded another profitable year in 2016, according to an annual financial disclosure. The firm also has a new fund in the works that will take it beyond the technology sector for the first time in a bid to diversify its holdings. Any traction gained by the venture outfit is good news for the overall ID organisation, which has had its share of turbulence in the last year.

Pantech patents may be on the move two years after the Korean company’s rescue from bankruptcy
Back in July 2015, IAM reported on a deal which saw Korean smartphone maker Pantech bought out of bankruptcy by a local consortium. As we noted at the time, the company’s supposedly high-value trove of patents played a big role in securing the rescue package – and it now appears that those patents may be changing hands in anticipation of some kind of value creation programme.

Alice blow means Asian university’s pioneering US patent enforcement drive may be over just months after it began
A Northern California district court has granted a motion to dismiss a patent infringement case brought by an affiliate of Seoul-based Sungkyunkwan University after finding one of the asserted claims invalid. The court’s decision represents a significant setback for Sungkyunkwan’s maiden assertion campaign – one of two launched in the US by Korean universities in recent months.

Sony sues Fujifilm for patent infringement, second time in months
In the case, filed at the US District Court for the Southern District of Florida on Friday, May 5, Sony claimed Fujifilm has infringed three of its patents: US numbers 6,674,596; 6,979,501; and 7,029,774.

Trade union complains to ECHR over EPO immunity
In January this year, the Dutch Supreme Court ruled that courts in the Netherlands have no jurisdiction to rule on the wrangle, in a win for the EPO.

Federal Circuit backs Nestlé, says PTAB erred in claim construction
In a decision handed down yesterday, the court backed Nestlé in its argument that a packaging patent was obvious.

Lex Machina’s online tools can help patent owners spot conflicts of interest at PTAB
In recent days, we’ve been reporting on a series of possible ethical issues concerning administrative patent judges (APJs) serving at the Patent Trial and Appeal Board (PTAB) within the U.S. Patent and Trademark Office

Feeling Conflicted: Australian Patent Attorney Firms Under Scrutiny
As previously reported on this blog, in the last two years several large Australian patent attorney firms (having a combined market share of close to 70% in Australia) have been listed on the stock exchange or been acquired by publicly listed companies

America’s Patent System: Mediocre and stabilized in a terrible space
Yesterday the International IP Commercialization Council (IIPCC) held a one-day symposium at the U.S. Capitol in Washington, D.C. The event titled Promoting Innovation, Investment and Job Growth by Fixing America’s Patent System was well attended by a whose-who of power players within the IP community. The focus of the program was to explore the direct and essential role that strong and enforceable patents play in allowing investors and entrepreneurs to engage in the high-risk business of innovating.

Open letter flagging patent issues to China’s securities regulator plays havoc with bike share startup’s IPO plans
YouOn was a relatively late entrant to China’s billion dollar bike sharing market, but it hoped to be the first such company to go public. Now, the Jiangsu-based firm’s share float is on hold after an individual inventor’s patent suit and complaint to regulators caused a minor media storm. Bringing patent suits against companies about to go public is certainly not a new strategy, but the environment in China could make it a particularly effective one there.

I Dissent: The Federal Circuit’s ‘Great Dissenter,’ Her Influence on the Patent Dialogue, and Why It Matters
Historically, most dissents have not mattered. Those who are concerned with the rules of the road have looked to the majority opinions, which after all are “the law.” Moreover, with the explosion of patent litigation today, there is less time for consideration of dissents even for those interested.

Tesla battery patents further proof of Elon Musk’s duplicitous views on patents
The early spring has certainly been quite sunny for Palo Alto, CA-based automaker and energy storage company Tesla Inc.

Patents as property rights: What will it take to restore sanity to the narrative surrounding US patents?
On Monday, May 8th, the U.S. chapter of the International IP Commercialization Council (IIPCC) held an event entitled Promoting Innovation, Investment and Job Growth by Fixing America’s Patent System. The event, held in the basement of the U.S. Capitol, featured many speakers and panelists who discussed various issues with the current state of the U.S. patent system and how those issues were reducing the nation’s overall investment into research & development (R&D) and overall innovation.

Federal Circuit affirms invalidation of AT&T patent
The court found that the patent, US number 7,454,071, was invalid as anticipated in a decision handed down yesterday, May 10.

New Balance settles shoe patent claim
Acme filed its claim against New Balance in October last year at the US District Court for the Northern District of Illinois, Eastern Division.

Milan: ready to step up for the UPC
The Milan local division of the Unified Patent Court is nearly ready to start work and, if after Brexit a central division seat of the court is taken away from London, the city could easily replace it, says Elena Martini of Martini Manna Avvocati.

Weight Watchers takes on UK couple over app
The case was filed at the US District Court for the Southern District of New York on Thursday, May 11.

Patent owner comments can narrow scope of patents, says Federal Circuit
In a decision handed down yesterday, the court affirmed that Apple had not infringed a patent.

US patent litigation continues to decline, says PwC
In its recently released report, “PwC’s 2017 Patent Litigation Survey”, the firm found that 5,100 infringement cases were filed in 2016, a 9% drop from 5,600 in 2015.

Judge seeks criminal probe in Waymo v Uber clash
In an order signed yesterday, District Judge William Alsup called for the US attorney to investigate the alleged theft of Waymo’s self-driving car technology

ZTE revealed as vendor of Chinese patents sold to NPE set up by ex-Acacia executives
ZTE is the “major Chinese telecom equipment and smartphone manufacturer” that agreed to sell a patent portfolio – including, significantly, a number of China-only patent families – to Texan NPE Longhorn IP earlier this year, new USPTO records reveal. The transaction appears to be ZTE’s first confirmed sale of assets to a patent assertion entity, indicating the company’s aspiration to generate more value from monetising its vast IP portfolio.



Solicitor general weighs in on ‘Dancing baby’ case
The court had asked the government to weigh in on the long-running saga in October last year.

German court refers Google copyright case to CJEU
A collecting society, on behalf of publishers, had brought an action against Google, claiming that the search engine should pay the publishers because it displays parts of their newspaper articles online.



Brooklyn café accuses Starbucks of stealing its unicorn
Filed at the US District Court for the Eastern District of New York on Wednesday, May 3, the claim alleged that Starbucks’ new drink, the Unicorn Frappuccino, infringed The End’s trademark for ‘Unicorn Latte’.

Travelers takes on investment firm over umbrella logo
Travelers, in a filing at the US District Court for the District of Connecticut on Friday, May 5, alleged that Virtue had infringed its “famous and iconic” ‘Umbrella’ logo.

ZeniMax attacks Oculus over attempt to overturn $500m verdict
In April this year, WIPR reported that Oculus had sought to overturn a finding of copyright and trademark infringement and breach of a non-disclosure agreement by a Texas jury.

Philips sues online seller over toothbrushes
Filed at the US District Court for the District of Utah, Northern Division, on Friday, May 5, Philips’s suit claimed that its ‘Sonicare’ trademark had been wilfully infringed.

Major League Baseball tries to hit trademark out of the park
Joshua Morell filed an application for the mark at the US Patent and Trademark Office in August last year.

Luxottica steps up anti-counterfeiting fight, sues online sellers
The case was filed at the US District Court for the Northern District of Illinois, Eastern Division, on Monday, May 8.

Famous hotel brand RITZ successful in invalidating RITZ MARCHE in Japan
Japanese trademark law contains provision for invalidation of a trademark registration by means of inter partes trial pursuant to Article 46, which acts as a remedy for questionable ex-officio examination by the Japan Patent Office (JPO).



Undercover ICE operation sees two indicted for counterfeit airbags
According to the indictment, “Dina Gonzalez-Marquez and Emilio Gonzalez-Marquez conspired to traffic counterfeit goods from January 2015 to March this year, by operating a business that sold counterfeit airbag modules out of their home”.

Liverpool FC launches cheaper shirt in China
The shirt will cost £23 ($30) and give fans in China the opportunity to buy official goods at a cheaper rate.

International report – Combating counterfeiting
Parallel to the growth in innovation across many industries, counterfeiting has also increased and now affects all spheres of work, ranging from literary to musical, and all types of goods, ranging from agricultural to industrial. To combat this surge in counterfeiting, various remedies are available to rights holders under Indian law.


Domain Name

Porsche recovers inactive domain name
The case was filed at the World Intellectual Property Office Arbitration and Mediation Center in February 2017.

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