IP Law News: Latest Need-to-Know from JD Supra

For your reference, a roundup of recent updates on intellectual property law issues in the news: design patents, the patentability of genetic material, trademark disputes, and more. You should know:

On Design Patents…

The Future of Design Patents (Sterne Kessler):

Attorney Tracy-Gene G. Durkin’s take on what the future may hold for design patents.

Is a rounded corner really worth $1 billion? (Davis, Brown, Koehn, Shors & Roberts, P.C.):

“Yes, it is true that Samsung was found to infringe on Apple’s rounded-corner patent, but that is only one part of story; the verdict was based on many factors. Although the headlines latched onto the rounded corners, the jury actually found that Samsung infringed on six patents, infringement of any one of which would have resulted in liability.” Read on>>

Design Patent Flexes Muscle (Winthrop & Weinstine, P.A.):

“The design patent is perceived by many designers and patent attorneys as being a relatively weak and impotent patent protection mechanism as compared with the better-respected utility patent. It is typically thought that design patents are only useful in protecting against exact copies… As a result of these misconceptions, the design patent is generally an under-appreciated, misunderstood and under-utilized tool in both protection and enforcement of patent rights.” Read on>>

On Patents and Human Genes …

Sound the Alarm?—The Supreme Court’s Renewed Interest in Life Sciences Patents Could Create Additional Hurdles Across the Field (Morrison & Foerster LLP):

“First, there was Mayo v. Prometheus, where the Supreme Court found the medical diagnostic methods at issue were not patentable subject matter. Then, the Court sent Myriad back to the Federal Circuit, for further consideration of whether isolated DNA sequences are patentable. It could soon hear that case again—a petition for certiorari is currently pending. More recently, the Supreme Court granted review in Bowman v. Monsanto on whether patent exhaustion applies to self-replicating plant seed technologies. And now a new petition is pending before the Supreme Court in Beineke regarding whether discovered plants are patentable. Are life sciences inventions under assault?” Read on>>

Mayo V Prometheus: Another Guidepost on the Road to Determining Patentability in the Post-Industrial Age (White & Case LLP):

“Some patent attorneys in the United States fear that the court’s invalidation of the medical diagnostic patents at-issue may unduly limit the patentability of future innovation in the medical community. This fear, in some respects, has already come to fruition in that a US District Court recently used Mayo’s guidance to invalidate claims drawn to methods and systems for selecting a therapeutic regimen…Further, while the effect of Mayo is not yet clear, and may not be for years, another concern is that the court unduly expanded the patent eligibility doctrine beyond its ascribed ‘screening function’ and blurred the distinction between patent eligibility and the concepts of anticipation and obviousness.” Read on>>

Myriad Responds: ACLU Asks the Wrong Question (Foley & Lardner LLP):

“On October 31, 2012, Myriad Genetics, Inc. filed its brief in opposition to Petitioners’ quest for U.S. Supreme Court review in the ongoing legal battle over whether isolated DNA is patent-eligible subject matter. Myriad argued that U.S. Supreme Court review is not warranted, and that if it is, the question for the Supreme Court is not whether human genes are patentable, but whether isolated DNA molecules that were identified and defined by human inventors are patent-eligible subject matter in the United States.” Read on>>

Genetic Data, Patents, and Trade Secrets (Foley & Lardner LLP)

“Patents protect proprietary information but are of limited duration. After expiration, the patented technology becomes part of the public domain. Trade secrets, in contrast, never expire and therefore are not accessible to the public as long as the information remains secret. Thus, the authors of “The Next Controversy in Genetic Testing: Clinical Data as Trade Secrets?“ argue that trade secret protection of genomic data is inappropriate because it impedes the free flow of information that is necessary to advance personalized medicine.” Read on>>

On Length of Patent Terms…

Recent Court Decision Opens Door for Longer Patent Terms (Wilson Sonsini Goodrich & Rosati):

“A recent district court decision in the matter of Exelixis, Inc. v. Kappos opens the door for patent owners to extend the lives of their patents. The decision will be especially important for select pharmaceutical, biotech, medical device, and licensed patents where extending patent life can result in significant additional revenue.” Read on>>

A Major Change in Patent Term Adjustment Calculus: How “A Valuable Tool in the Patent Prosecution Process” (RCEs) May Now Be Even More Valuable (Venable LLP):

“On November 1, 2012, the U.S. District Court for the Eastern District of Virginia issued a decision in the case of Exelixis, Inc. v. Kappos, ruling that a Request for Continued Examination (RCE) filed in a patent application more than three years after the effective filing date of the application has no impact on [Patent Term Adjustment (PTA)]… Usually, an RCE reduces the PTA, but the district court ruled that if initiated more than three years after the effective filing date, an RCE would not reduce the PTA at all.” Read on>>

District Court Holds That Even a Flawed Office Action Stops the Patent Term Adjustment Clock (Foley & Lardner LLP):

“The PTA statute (35 USC § 154(b)) was created to compensate for delays in the patent examination process that can eat away at the effective term of the patent, now that patent term is measured from the earliest U.S. priority date rather than the patent grant date. The statute provides ‘guarantees’ against different types of USPTO delays, and requires a day-for-day deduction of Applicant delays against USPTO delays.” Read on>>

Patent Term Adjustment Update – Exelixis v. Kappos (Armstrong Teasdale LLP):

“Statute 35 U.S.C. 154(b)(1)(B) guarantees adjustment of a patent term if the patent has not issued within three years after the filing date of the application in the United States (i.e., ‘B-term delay’). If the patent takes longer than three years from the application filing date to grant, the life of the patent is extended one day for each day after the end of the 3-year period until the patent has issued. This 3-year guarantee is subject to the limitation of ‘any time consumed by continued examination of the application requested by the applicant.’” Read on>>

Court Determines USPTO Is Undercalculating Patent Term Adjustments (Morgan Lewis):

“For any patent issued in the last two months, a request for reconsideration can be filed at the USPTO for the length of term to be reviewed based on the Exelixis decision. For any patent that was issued in the last six months, the patent owner can challenge the patent term in district court. It is anticipated that the USPTO will challenge this decision. It may do so on the grounds that the decision subverts the primary goal of the Uruguay Round Agreements Act to eliminate an incentive to keep an application pending for a long period of prosecution prior to issuance (i.e., submarine patents).” Read on>>

Court Overrules PTO Interpretation of B-Delay Calculation (McDonnell Boehnen Hulbert & Berghoff LLP):

“It is likely that the government will appeal to the Federal Circuit, and thus that the finality of this interpretation of the statute will remain delayed until that review of complete. This means that there is time for prudent patent practitioners to review the PTA status of their clients’ patents to determine where there are instances where the PTA was “improperly” calculated under the interpretation set forth in this opinion.” Read on>>

Court Ruling May Lengthen Term of Many U.S. Patents (Dechert LLP):

“According to recent Patent Office statistics, the backlog of patent applications awaiting examination following the filing of an RCE exceeds 95,000, and the average pendency of an application in which an RCE has been filed is more than five years. If the Exelixis decision is upheld on appeal, many of these post-RCE delays will translate to lengthy patent term adjustments.” Read on>>

District Court holds filing of Request for Continued Examination does not reduce patent term adjustment (Sterne Kessler):

Exelixis is the first decision in a series of cases pending at the District Court raising similar challenges of the USPTO’s interpretation of § 154(b)(1)(B). If upheld, patentees may be entitled to PTA or to a longer PTA where an RCE was filed, particularly in technology areas where applications are typically pending for more than three years… It is therefore advisable to determine whether patents and applications might benefit under the Exelixis decision and, where applicable, file a request to reconsider the PTA at the USPTO or file suit at the District Court.” Read on>>

On Trademark Disputes…

Would You Rather Pay $8.6 Million in Damages or Appeal that Award? (Winthrop & Weinstine, P.A.):

“Long time DuetsBlog readers may recall the lawsuit between Spin Master and Zobmondo regarding infringement of the ‘Would You Rather…?’ trademark… The jury is in, literally, and unanimously found that the Would You Rather…? trademark is protectable and that Zobmondo infringed it to the tune of $5.1 million in compensatory damages. The jury also found Zobmondo liable for $3.5 million in punitive damages.” Read on>>

SORT OF THE RINGS: Will Trademark Fair Use Protect Age of the Hobbits? (Foley Hoag LLP):

“In August of this year, Warner Brothers finally announced the release of Age of the Hobbits, Peter Jackson’s long-awaited follow-up to his Lord of the Rings trilogy, based on J.R.R. Tolkien’s famous fantasy novels. Age of the Hobbits tells the tale of a clever group of diminutive Indonesian tribesmen who convince Chinese actress Bai Ling to save them from a hoard of cannibals mounted on flying Komodo dragons. Wait a second. Does that sound right?” Read on>>

Haunted House Doesn’t Scare Off Filmmaker (Greenberg Glusker Fields Claman & Machtinger LLP):

“By the time heiress [Sarah Winchester] died in 1922 at age 82, her seven-room farmhouse had become a seven-story, 160-room Victorian-style mansion, replete with winding dead-end passageways, interior windows, and doors to nowhere. These types of legends make good movies, which is why a production company approached the owner of the Winchester Mystery House in San Jose, California, to request permission to film there. The owner turned it down, stating that another company had already acquired the rights to the Winchester story. The filmmakers went ahead and made their movie anyway, calling it Haunting of Winchester House and putting a Victorian-style mansion on the DVD cover.” Read on>>

Google and Rosetta Stone Settle “AdWords” Lawsuit (Miller Canfield) :

“In 2009, language-learning software provider Rosetta Stone Ltd. filed a trademark infringement action against Google, Inc. From 2004 through 2009, Google allowed ‘sponsored links’ to purchase keywords on its AdWords platform, including terms that were third party trademarks and service marks. Rosetta Stone alleged that this practice by Google infringed Rosetta Stone’s various federally registered marks.” Read on>>

Rosetta Stone and Google Settle Trademark Case Over Sponsored Ads (Venable LLP):

“According to Rosetta Stone, competitors and counterfeiters were purchasing ad space on search results for its trademarks and diverting business. The sponsored links, Rosetta Stone said, also amounted to infringement and dilution of its trademarks. The U.S. District Court granted summary judgment for Google in 2010, finding that consumers were unlikely to be confused by Google’s sponsored links platform and that the Rosetta Stone trademarks were not diluted by Google’s actions.” Read on>>

Google and Rosetta Stone Settle AdWords Trademark Infringement Suit (Mintz Levin):

“Six months after the U.S. Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of Rosetta Stone’s trademark infringement lawsuit against Google, the parties issued a joint statement today announcing that they have settled their legal dispute. The parties stated: ‘Rosetta Stone Inc. and Google have agreed to dismiss the three-year-old trademark infringement lawsuit between them and to meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.’” Read on>>

New Jersey Court Refuses to Dismiss “Cybersquatting” Trademark Lawsuit (Christine Vanek):

“A New Jersey judge recently refused to dismiss a trademark infringement lawsuit involving cybersquatting. The case arose after two rival car dealerships sought to become the new official Nissan dealership of Edison, New Jersey. Defendant Dibre Auto Group registered two domain names … in connection with its application to acquire the new dealership. However, the dealership was ultimately awarded to plaintiff Edison Motor Sales, which subsequently adopted the trade name ‘Edison Nissan.’” Read on>>

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