Managing IP had a busy week, holding the US Patent Forum and
North American Awards 2014 dinner in Washington DC.
You can read coverage from the forum here, including Michelle Lee urging
lawyers to volunteer for new USPTO initiatives, IP
practitioners being horrified by USPTO guidelines on Myriad,
and Judge Sharon Prost giving insights into the workings of the
Federal Circuit. You can also read our Storify round-up of the
highlights from the forum here.
You can find out the winners of the awards here.
Below are some of the other intellectual property stories
grabbing the headlines this week.
Microsoft and Dell agree licensing deal
Microsoft revealed another Android patent deal this week,
this time with Dell.
The two firms have agreed to license each
other’s applicable intellectual property related
to Android and Chrome IS devices and Xbox gaming consoles. They
agreed to royalties for Dell’s products running on
the Android or Chrome platforms and on consideration to Dell
for a licence for Xbox gaming consoles.
The firms described the
deal as "continuation of a nearly 30-year
business relationship between Microsoft and Dell to deliver
world-class technologies to consumers". Horacio Gutierrez,
corporate vice-president and deputy general counsel of the
innovation and intellectual property group at Microsoft, added:
"We have been partnering with technology manufacturers and
vendors for many years to craft licensing deals, instead of
The FOSS Patents blog said the deal
is Microsoft’s 23rd known Android deal
and 29th in total, and included a list of all the
deals in a blog
post. This year alone, Microsoft has been
involved in deals with Huawei, Voxx Electronics and
All of this progress was recognised this week when Microsoft
award for In-house Licensing Team at the Managing IP
North America Awards 2014 (Gutierrez pictured with the award,
Leahy bill hearing delayed, fee shifting under
Progress on Congress passing a patent reform bill was set
back this week when a Senate Judiciary Committee hearing on
Senator Patrick Leahy’s bill was
The committee was scheduled
to consider the Patent Transparency and Improvements Act of
2013 on March 27. This has been pushed back to April
3 after some members of the committee including Senators John
Cornyn, Orrin Hatch and Chuck Schumer pushed for more
Leahy (left) released a
statement yesterday providing an update on his bill.
He and co-sponsor Mike Lee are working on a
manager’s amendment that "will bring in additional
provisions to deter abusive conduct by patent trolls". This
includes the controversial issue of fee shifting.
"One provision that is important to Senator Cornyn, Senator
Grassley and others would send a strong signal that patent
trolls who pursue lawsuits with no reasonable basis should pay
reasonable attorneys fees. I am working with Senator Hatch on a
provision to address the problem of shell companies that cannot
be held accountable because their corporate structure makes
them judgment-proof. We are also working on other provisions to
improve the process in patent suits," wrote Leahy.
In addition, following feedback from investors, businesses,
practitioners and consumers, Leahy and Lee are also making
changes to the "customer stay" provision in the
Protect Ya Neck (and ya
Hip hop group Wu-Tang Clan – known for hits
including Protect Ya Neck and CREAM – is planning a
novel way of protecting copyright on its music. It will release just
one copy of an upcoming album.
The album, called "The Wu – Once Upon a Time in
Shaolin", will sit in an engraved silver and nickel box and
will be taken on a tour or festivals, museums and galleries to
allow fans to hear the music. It will then be released for
private sale, according to a
website for the album.
In addition to expecting to
sell the album for a multi-million dollar sum, the
group is hoping the move will spark a discussion about the
value of music.
Wu-Tang Clan chief producer
RZA and the album’s producer Cilvaringz said in a
statement: "By adopting a 400 year old Renaissance-style
approach to music, offering it as a commissioned commodity and
allowing it to take a similar trajectory from creation to
exhibition to sale, as any other contemporary art piece, we
hope to inspire and intensify urgent debates about the future
of music. We hope to steer those debates toward more radical
solutions and provoke questions about the value and perception
of music as a work of art in today’s world."
InterDigital to play fair
wireless technology firm InterDigital Communications has agreed
to license use of its patents in China at fair, reasonable and
non-discriminatory terms, according to a
report. The firm has also pledged to withdraw IP
complaints with the US International Trade Commission against
Huawei and ZTE.
has been investigated by China’s National
Development and Reform Commission about whether it has abused
its dominant market position to charge higher
and Huawei have negotiated over licensing agreements since 2008
but failed to reach agreement. According to local reports,
Huawei turned down InterDigital’s offer because it
is 19 times the rate for Apple and more than double the rate
filed complaints at the ITC and in a Delaware court claiming
infringement of seven patents. The ITC said in a preliminary
ruling last year that one of the patents is invalid and Huawei
did not infringe the other six.
USPTO issues 700,000th design patent
The USPTO commemorated the issuance of
the 700,000th design patent this week
during a ceremony with United
States Secretary of Commerce Penny Pritzker at Langdon
Education Campus in Washington, DC.
The patent for the
ornamental design for a "Hand-Held Learning
to Jason Avery of Berkeley, California and is assigned to
Emeryville, California-based LeapFrog Enterprises.
Michelle Lee, deputy
director of the USPTO, noted: "The design area has increased
from twenty five and a half thousand applications in 2009 to
just over thirty five thousand filings in 2013."
The ceremony also included
the launch of a new IP Patch (right) developed as a joint
project between the USPTO, Girl Scout Council of the
Nation’s Capital and the Intellectual Property
Owners Education Foundation.