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Intellectual Property News

  • Ohio State Files an Opposition to Block Oklahoma’s “O” Trademark
    IPNews® – Ohio State recently opposed the University of Oklahoma’s trademark application of a drum major image which contains the block letter “O.” Both universities’ actively use the block “O” in relation to sporting events and on apparel. Ohio State claims that it has been using the block “O” since 1898 and the university has... <a href="">Continue Reading</a>
  • In-N-Out Burger Sends a Clever Trademark Cease-and-Desist Letter to a Brewery
    IPNews® – A San Francisco brewery recently released an ad featuring a new beer with a logo similar to the In-N-Out Burger logo. The brewery also tagged the Burger company in the promotional post. In-N-Out responded with a tongue in cheek cease-and-desist letter response that gained a lot of social media attention. To continue reading,... <a href="">Continue Reading</a>
  • Billy Goat Chip Loses a round in Billy Goat Tavern Trademark Case
    IPNews® – Billy Goat Tavern defeated a motion to dismiss in its trademark infringement lawsuit against Billy Goat Chip Company for using the trademarked “Billy Goat” name. Billy Goat Tavern is expanding its goods and has run into problems with overlapping goods with Billy Goat Chips. Though the chip company’s motion to dismiss the lawsuit... <a href="">Continue Reading</a>

AG IP News
  • Singapore and China to Establish International IP Innovation Service Center
    SINGAPORE – Innovative enterprises in Singapore and the People’s Republic of China will soon have better access to a wealth of market opportunities in China and the high growth markets of ASEAN through Singapore. IP Value Lab (IPVL) – the enterprise engagement arm of the Intellectual Property Office of Singapore (IPOS) – announced that it has signed a Memorandum of Understanding (MoU) with the Sino-Singapore Guangzhou Knowledge City Administrative Committee (KCAC) and Sino-Singapore Guangzhou Knowledge City Investment and Development Co. Ltd (GKC Co) to set up the “International Intellectual Property Innovation Service Center” in the Sino-Singapore Guangzhou Knowledge City (SSGKC). According to the official website of Singapore government, Singapore and China have a shared interest in using IP and innovation to drive economic growth. The MOU will link the innovation ecosystems of both countries more closely to support the translation of ideas and IP into products and services for the region and globally. In particular, the Center will provide a platform to connect IP expertise within the government and private sectors from both countries, and tap on Singapore’s experience in building IP skills to set up an IP college in Guangzhou. The Center will also enable China’s enterprises to gain access to ASEAN and other key overseas markets through Singapore, which continues to be ranked top in Asia by the Global Innovation Index.  Chinese innovators can take advantage of established platforms for expedited IP application processes into the region, and connect with more than 70 markets through Singapore’s network of IP and other agreements. In addition, IPOS is one of only two countries in the world that can transact and conduct patent searches in English and Chinese, which will add to Singapore’s attractiveness to Chinese enterprises seeking access to the region’s markets. The MoU will also allow Singapore enterprises entering into China to have access to IP consultancy services, which will be crucial for business success in the growing markets of the Greater Bay Area in China and beyond. Asia: The fastest growing center of innovation in the world Global IP fillings have grown significantly at 5.7% per annul between 2006 and 2016, largely driven by fillings in Asia which grew twice as fast at 10.5% per annul. S$4 in every S$10 invested in R&D globally originates from Asia. Six in 10 IP applications were filed from Asia in 2016, up from just four in 10 a decade ago. China drives much of Asia’s growth, and its IP landscape has witnessed phenomenal growth in IP filings across patents, trademarks and designs. After overtaking the United States as the country with the most patent filings in 2011, China continues to enjoy double digit percentage growth in both patent and trademark filings annually. In 2016, China’s domestic patent, trademark and design filings accounted for 43%, 38% and 52% of global filings respectively. A staggering 98% of the increase in global patent filings came from China.   Chinese interest in ASEAN is growing strongly. Chinese patent filings into the six key ASEAN markets more than doubled from 2013 to 2016. Singapore’s patent filings into China – over 1,500 last year – is also the highest of all the countries in the Belt and Road Initiative. Singapore will continue to play an important role in bridging China and ASEAN, and serve as a gateway through which Chinese companies and innovators can access one of the most vibrant economic regions in the world. The focus of the collaboration is on Guangdong through the SSGKC, as the Guangdong province clocked the largest number of domestic patent filings in 2017 for the eighth year running, filing more than 208,000 applications. The province also filed a record number of international patent and trademark filings last year, with its international patent filings amounting to more than half of China's total. Guangdong is also a leader in IP financing activities within China, with RMB13.3 billion worth of patent used as collateral for loans in the first six months of 2018. Mr Tan Shau En (???), Executive Director of IPVL (?????????), said, “China and Singapore have embraced innovation as a key driver of economic growth. The best ideas are sourced globally and innovation is enabled in a favorable ecosystem. The new IP Innovation Centre will be a critical link in the global innovation ecosystem with Guangzhou and Singapore acting as attractive bases to anchor and commercialize IP, enabling access to high growth regions, and securing high value economic growth for ASEAN and the Greater Bay Area.” Mr Tan Minghe (???), Deputy Secretary of the Communist Party of China (CPC) Working Committee of Guangzhou Development District, and CPC Working Committee of Sino-Singapore Guangzhou Knowledge City (??????????????????????), said, “SSGKC is committed to the establishment of ties between innovative Chinese companies and Singapore's intellectual property partners for domestic and foreign IP service providers to benefit from international operations along the Belt and Road. GKC will also strive to be a new benchmark for the utilization, commercialization and protection of IP in the Greater Bay Area of Guangdong, Hong Kong and Macau, to jointly promote IP cooperation between China and Singapore, and take Singapore-Guangdong cooperation to a new level.” Mrs Nina Yang (???), Chairman of Sino-Singapore Guangzhou Knowledge City Investment and Development Co. Ltd (??????????????????), said, “The collaboration between IP ValueLab and SSGKC reinforces SSGKC’s position as a model hub for innovation and IP cooperation between Singapore and China. As the master developer of SSGKC, we are committed in bringing together key strategic stakeholders from both countries, to help bridge the gaps between our IP creators and their IP commercialization.”  
  • Webinar: Proposed Updates to Draft Operating Standards
    LOS ANGELES – The Internet Corporation for Assigned Names and Numbers (ICANN) invites the community to attend one of two webinars. The purpose of these webinars is to highlight proposed updates to the draft Operating Standards in several key areas. The presentation will be identical for both one-hour webinars, scheduled as follows: Webinar 1: 04 October 2018: 16:00 UTC  Webinar 2: 05 October 2018: 00:00 UTC  Webinar agenda: • Overview of proposed updates to the Operating Standards • Community Q&A • Next steps toward publication of Operating Standards Background Information The ICANN Bylaws call for the development of Operating Standards to provide guidance to review teams to conduct Specific Reviews efficiently and effectively. The ICANN organization is in the process of modifying the Draft Operating Standards based on public comments received on the October 2017 draft and on the Long-Term Options to Adjust the Timeline for Specific Reviews. Best practices and process improvements from Specific Reviews that were launched and/or conducted under the new Bylaws1 are also being incorporated in the updated draft.  
  • German Appellate Court Rules on ICANN Request to Preserve WHOIS Data
    LOS ANGELES – The Internet Corporation for Assigned Names and Numbers (ICANN) announced in a press release a German High Court has ruled against ICANN's plea to reconsider the Court's own decision. ICANN has been pursuing a preliminary injunction from the German Court to require EPAG, a Germany-based, ICANN-accredited registrar (that is part of the Tucows Group) to continue to collect elements of WHOIS data, as required under ICANN's Registrar Accreditation Agreement, which permits the registrar to sell domain name registrations for generic top-level domains. ICANN received a ruling from the German Higher Regional Court in Cologne ("Appellate Court") last week, that rejected ICANN's request for review ("plea of remonstrance") filed by ICANN on August 17, 2018. ICANN's plea was filed to continue the immediate appeal in the ICANN v. EPAG injunction proceedings. ICANN initiated such proceedings against EPAG, to seek assistance in interpreting the European Union's General Data Protection Regulation (GDPR) in order to protect the data collected in WHOIS. The Appellate Court again has determined that it would not issue an injunction against EPAG. In making its ruling, the Appellate Court found that the preliminary injunction proceeding does not provide the appropriate framework for addressing the nature of the contractual disputes at issue, and that a decision in preliminary proceedings does not appear to be urgently needed. Again, the Appellate Court did not address the merits of the underlying issues with respect to the application of GDPR as it relates to WHOIS. ICANN is continuing to evaluate its next steps in light of this ruling, including possible additional filings before the German courts, as part of its public interest role in coordinating a decentralized global WHOIS for the generic top-level domain system.  

  • Federal Circuit Affirms PTAB Invalidation of Claims Federal Circuit Previously Upheld as Valid
    <p>Previously, the ITC instituted an investigation of Instradentdental implants based on a complaint filed by Nobel alleging violations of 19 U.S.C. § 1337 by reason of importation of an implant product infringing the ’977 patent and another patent. The ITC’s Administrative Law Judge issued an Initial Determination finding claims 1–5 and 19 anticipated by the ABT catalog but the ITC later issued a Commission Opinion finding that Instradent failed to show by clear and convincing evidence, the standard applied by the ITC, that the ABT catalog is prior art under § 102(b). A Federal Circuit panel affirmed the ITC’s decision without opinion. Subsequently, Instradent petitioned for IPR of claims 1–7, 9, and 13–20 of the ’977 patent, and Nobel filed a statutory disclaimer of claims 9 and 13–18.</p> <p>The post <a rel="nofollow" href="">Federal Circuit Affirms PTAB Invalidation of Claims Federal Circuit Previously Upheld as Valid</a> appeared first on <a rel="nofollow" href=""> | Patents & Patent Law</a>.</p>
  • The Inventor Protection Act: Needed Momentum or More Harm than Good?
    <p>Recently, the Inventor Protection Act, H.R.6557, was introduced to Congress.  It’s a very well intentioned piece of proposed legislation.  However, it may actually do more harm than good to efforts to strengthen patent rights in the aftermath of the AIA. We need to fix what is wrong with the patent system for everyone, not merely carve out exceptions for a few.  Is H.R.6557 a step in the right direction, gaining momentum for stronger patent property rights for everyone, or will it harm the ability to reach that goal?  We think the answer is clear that H.R. 6557 as written doesn’t do what the patent laws were intended to do.</p> <p>The post <a rel="nofollow" href="">The Inventor Protection Act: Needed Momentum or More Harm than Good?</a> appeared first on <a rel="nofollow" href=""> | Patents & Patent Law</a>.</p>
  • To invalidate method claims a challenger must show more than the prior art is ‘capable of’ performing the claimed limitations
    <p>To invalidate method claims, a challenger must show more than that the prior art is “capable of” performing the claimed limitations—the challenger should also show that “a person of ordinary skill would have been motivated to operate [the prior art device] in a manner that satisfied the [claimed] limitation.”</p> <p>The post <a rel="nofollow" href="">To invalidate method claims a challenger must show more than the prior art is ‘capable of’ performing the claimed limitations</a> appeared first on <a rel="nofollow" href=""> | Patents & Patent Law</a>.</p>

  • PTAB Upholds Alcon Patent For Glaucoma Treatment
    The Patent Trial and Appeal Board on Thursday upheld the validity of an Alcon patent covering the glaucoma treatment Travatan Z, rejecting arguments by generics maker Argentum that the invention was obvious.
  • USPTO Disputes Order To Issue Patents In Stalled Apps Case
    The U.S. Patent and Trademark Office has urged a judge to stay an order directing it to issue patents to an inventor claiming his applications have been improperly stalled, arguing the court has no authority to make that order, while the inventor says the court clearly has the power.
  • 3 Takeaways From PTAB’s Revised Procedures
    The Patent Trial and Appeal Board's recent changes to its operating procedures have shed light on what has otherwise been an opaque process for selecting judges to oversee cases and should lead to more precedential decisions, experts say. Here are three takeaways from the revisions.

Spicy IP News
  • Mahindra Embroiled in Another “Fiat”-sco!
    A long-standing rivalry between Mahindra and Mahindra and Fiat Chrysler Automobiles took a new turn on 11th September 2018, when the US International Trade Commission (“USITC”) [the US federal agency which investigates matters of trade and interrelated IP infringement issues] instituted an investigation based on a complaint made by Fiat. In its complaint, Fiat makes allegations of trade dress, trademark infringement and unfair competition under Section 337 of the Tariff Act of 1930 against Mahindra for “sale of certain motorized vehicles and components”. Section 377 provides...
  • SpicyIP Weekly Review (September 10-16)
    Thematic Highlight In his guest post, Adarsh Ramanujan argued that there is a hidden indictment of the Aadhar Act in the Justice Sri Krishna Committee Report and its proposal for the Personal Data Protection Bill 2018. He argues that the proposal’s suggestions to make UIDAI’s functioning subject to the proposed Bill, mandating an online-offline verification split and amend Section 29 of the Aadhar Act all indicate that the Report identifies Aadhar as a problem in the data protection regime. Topical...
  • Bombay HC Addresses Ambiguity in the Patent Agent Examination
    The Bombay HC recently delivered an order dealing with certain objections raised against the Patent Agent Examination, 2016. In their decision, they interpreted the Supreme Court’s decision in Kanpur University v. Samir Gupta (“Kanpur University”). This post examines the questions which arise due to the Court’s interpretation and application of this decision. The Question in Issue The Petitioner (a candidate who appeared for the said Examination) raised contentions regarding the answer options of a multiple choice question in the Examination...


  • Federal Circuit Affirms PTAB Holding of No Interference in Fact in CRISPR Interference, Leaving Both Sides Free to License Their IP
    <p>On September 10, 2018, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) determining that there was no interference in fact between the University of California’s (“UC”) U.S. Patent Application No. 13/842,859 and multiple patents and applications owned by the Broad Institute, MIT and Harvard College (collectively “Broad Institute”) that claim technologies related to the CRISPR-Cas9 gene-editing technology.</p><p>The CRISPR-Cas9 system is used to cut targeted DNA sequences, thereby allowing scientists to add, modify, or delete pieces of genetic material within an organism. Adapted from bacteria, the CRISPR-Cas9 system has been used to study mechanisms of disease and is currently being explored for possible applications in the treatment and prevention of various diseases in humans. It consists of three components, a crRNA molecule that targets a particular DNA sequence; a tracrRNA molecule that pairs with the crRNA molecule to form a functional guide RNA; and the Cas9 protein that interacts with the crRNA and tracrRNA and cuts DNA at the target location.</p> <p>In 2012, researchers at the University of California, in collaboration with the University of Vienna and Emmanuelle Charpentier, demonstrated that the elements of the CRISPR-Cas9 system could be used in vitro. The following year, Broad Institute researchers published their results, showing the use of CRISPR-Cas9 in a human cell line. Both parties sought patent protection for their discoveries, and an interference was declared by the PTO. Notably, UC’s patent application claimed a method of cleaving nucleic acid using the CRISPR-Cas9 system, but did not specify the cell type or environment in which the system functioned. In contrast, Broad Institute sought claims that limited the use of the CRISPR-Cas9 system to eukaryotic cells. During the interference, Broad Institute argued that its claims were patentably distinct from UC’s claims because one skilled in the art would not have possessed a reasonable expectation that the CRISPR-Cas9 system would work in eukaryotic cells based on UC’s disclosures, including the 2012 article, which did not report any experimental results using eukaryotic cells.</p> <p>The PTAB determines whether an interference exists by applying a two-way test in which it asks whether the claims of one party, if prior art, would have anticipated or rendered obvious the claims of the other or vice versa. Here, the PTAB agreed with Broad Institute and held that UC’s claims did not render Broad Institute’s claims obvious. More specifically, the PTAB held that, given the mixture of evidence in the record, including evidence of the difficulties associated with applying prokaryotic systems to eukaryotic cells, one skilled in the art would not have reasonably expected the CRISPR-Cas9 system to work in eukaryotes.</p> <p>On appeal, UC argued that the PTAB adopted too rigid a test for obviousness when it looked for specific instructions in the prior art and erred in its treatment of evidence relating to simultaneous invention. The Federal Circuit disagreed with UC on both points. The Federal Circuit found the PTAB’s factual findings supported by substantial evidence, going so far as to say “[t]his case turns in its entirety on the substantial evidence standard.” </p> <p>Regarding UC’s first argument, the Federal Circuit noted the record contained evidence from witnesses for both parties that indicated the function of CRISPR-Cas9 in eukaryotes was unpredictable and could not be determined absent attempts to apply the system in eukaryotes. Evidence also demonstrated that similar prokaryotic systems could not be implemented in eukaryotes without tailoring the particular conditions of their use. In other words, a skilled artisan would not have reasonably expected the CRISPR-Cas9 system to work in eukaryotes based on the in vitro research performed by the UC scientists or based on related systems that had been disclosed in the art. And, although the prior art described mechanisms, i.e., provided general instructions, for implementing the CRISPR-Cas9 system in eukaryotes, the lack of specific instructions here combined with the prior failures supported the PTAB’s finding of no interference in fact.</p> <p>The Federal Circuit similarly found no error in the PTAB’s evaluation of evidence relating to simultaneous invention. The court held the PTAB correctly recognized that simultaneous invention may be evidence of the level of skill in the art and objective evidence that persons of ordinary skill in the art recognized a problem and a solution to the problem. However, evidence of simultaneous invention, alone, cannot support an obviousness determination. More specifically, while simultaneous invention may show there is a motivation to combine prior art, it does not necessarily demonstrate an expectation of success. In this case, the balance of evidence, including the explicit statements of different inventors and the prior failures in the art, supported the PTAB’s determination that UC’s patent application did not render Broad Institute’s claims obvious.</p> <p><strong>Practice Tip</strong>:  Although this case is not particularly notable for its application of the law of obviousness, it provides a good example of a case in which the outcome on appeal was driven “in its entirety” by the standard of review. The Federal Circuit reviews the PTAB’s factual findings for substantial evidence. Thus, when appealing from the PTAB, it may be more important to identify gaps or discrepancies in the PTAB’s findings or identify a pure error of law than it is to assign errors to the PTAB’s application of facts to law.</p> <p><em>Regents of the University of California v. Broad Institute, Inc.</em>, 2017-1907 (Fed. Cir. Sept. 10, 2018)</p>
  • Federal Circuit Clarifies Burden of Proof on Challenges to Identification of Real Parties-in-Interest in IPR Proceedings
    <p>In <em>Worlds Inc. v. Bungie, Inc.</em>, the Federal Circuit remanded an appeal from an <em>inter partes</em> review (“IPR”) instructing the Patent Trial and Appeal Board (“Board”) to reweigh the evidence in a manner that placed the ultimate burden of persuasion to identify real parties-in-interest (“RPIs”) on Petitioner Bungie, Inc.</p><p>In 2012, Patent Owner Worlds, Inc. had asserted several U.S. patents related to computer-generated avatar displays against Activision Publishing, Inc. (“Activision”), a company that develops and distributes video games. Patent Owner informed Activision that it planned to add a game developed by Petitioner (an independent developer) as an accused product. Approximately six months later (more than a year after suit was filed), Petitioner, who was not a party to the litigation, filed six IPR petitions challenging Patent Owner’s patents.</p> <p>During the IPR proceedings, Patent Owner located an agreement between Activision and Petitioner that suggested that Activision required Petitioner to take certain actions with respect to intellectual property (the “Agreement”). Based on the Agreement, Patent Owner sought discovery about the relationship between Activision and Petitioner in support of its argument that Petitioner should have named Activision as an RPI. According to Patent Owner, Petitioner’s IPRs were time barred because: (1) the Agreement suggested that Petitioner was acting at the behest of Activision by filing the IPR petitions, (2) Activision was actually an RPI, and (3) the petition was filed more than a year after Patent Owner had sued Activision. The Board rejected Patent Owner’s arguments, concluding that Patent Owner had not demonstrated that Activision was an unnamed RPI. Patent Owner appealed the Board’s Final Written Decisions, arguing that the Board incorrectly placed the burden of persuasion on Patent Owner to show the petitions were time barred.</p> <p>The Federal Circuit first explained that a petitioner always bears the ultimate burden of persuasion to show that the petition is not time barred. The petitioner is the party requesting agency action, and the petitioner has better access to the evidence related to identification of RPIs. A petitioner meets its initial burden by identifying the RPIs in the petition. This does not create a presumption that the RPIs are correctly named, but does require a patent owner who challenges the RPI designation to present some evidence that a particular third party should have been named as an RPI. Here, the Federal Circuit was concerned that the Board had shifted the ultimate burden to the Patent Owner. The court was also concerned that the Board had relied only on attorney argument from Petitioner stating that Activision was not an RPI, even though Patent Owner had cited actual evidence (the Agreement). The Federal Circuit remanded for further consideration of the RPI issue in light of its concerns. The court also instructed the Board to consider, in the first instance, whether there was an issue of collateral estoppel based on three related IPRs that Patent Owner had not appealed.</p> <p><em>Worlds Inc. v. Bungie, Inc.</em>, Nos. 2017-1481, 2017-1546, 2017-1583 (Fed. Cir. Sept. 7, 2018)</p> <p><strong>Practice Tip</strong>: When an RPI dispute arises, Petitioners should submit, where possible, actual evidence in support of the initial RPI disclosure. This is especially true when Patent Owner comes forward with any evidence that the entities Petitioner identified are not correct.</p>
  • Failing to Identify Parent Company as Real Party-In-Interest Proves Fatal to Petition for IPR
    <p>The Patent Trial and Appeal Board (the “Board”) has denied Sirius XM Radio, Inc.’s (“Petitioner”) petition for <em>inter partes</em> review (“IPR”) for failing to name all real parties-in-interest (RPIs). The Patent Owner argued that the petition was defective for failing to disclose Sirius’s parent company Sirius XM Holdings Inc. (XM Holdings) as an RPI under 35 U.S.C. § 312(a)(2).</p><p>Whether a non-party should be listed as an RPI is a fact-dependent inquiry. Factors that the Board consider include “whether a non-party exercises control over a petitioner’s participation in the proceeding and whether the non-party is directing the proceeding.” </p> <p>The Patent Owner presented undisputed evidence that Petitioner is a wholly owned subsidiary of XM Holdings, nine executive officers of XM Holdings are the same as those of Petitioner, XM Holdings’ SEC filings indicate that it was a defendant in legal proceedings that name only Petitioner (including patent infringement cases), and XM Holdings funded a settlement in certain class-action lawsuits filed against Petitioner.   </p> <p>The Board relied on this evidence and concluded that XM Holdings was an RPI. Although Petitioner argued—and submitted a declaration from its General Counsel attesting—that XM Holdings has not and will not actually control this proceeding, the Board rejected the argument explaining that actual control is not the only measure in the RPI analysis. The Board explained that the RPI inquiry includes a determination of whether there is an opportunity to control, taking into account “whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” Based on the evidence, the Board determined that XM Holdings has this relationship with Petitioner and should have been identified as an RPI.   </p> <p>In the alternative, Petitioner had requested authorization to amend its petition to name XM Holdings so as to keep its original filing date if the Board determined that XM Holdings was an RPI. The Board, however, denied the request.</p> <p><strong>Practice Tip</strong>: Careful consideration should be given to disclosure, as real parties-in-interest, of entities with an established relationship to IPR petitioners, including parent companies, especially when there is even the slightest indicia of involvement in the IPR proceeding or related litigation.</p> <p><em>Sirius XM Radio, Inc. v. Fraunhofer-Gesellschaft zur Forderung der angewandten Förschung e. V</em>, IPR2018-00681 (PTAB Sept. 6, 2018).</p>


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