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Apple, Samsung, Hall & Oates, USPTO, Under Armour, patent reform – the week in IP



Michael Loney


The latest from Apple and Samsung at the Federal Circuit, Hall & Oates suing a cereal company for trade mark infringement, the USPTO’s Silicon Valley office costing three times more than expected, Under Armour suing Ass Armor, and the effect of fee shifting under the Innovation Act were in the IP headlines this week

Licensed up the wazoo

The Federal Circuit heard Apple’s effort to get an injunction against sales of Samsung products it believes infringes its patents on Wednesday. If Reuters’ report of the argument is anything to go by, the judges gave Apple’s lawyer, WIlmerhale’s William Lee, a tough time.

Judge Kimberly Moore questioned whether Apple was being harmed, noting it licenses its technology to other companies. "You've already licensed these patents up the wazoo!" she said.

She later added: "You've licensed them to everyone. So why is it irreparable harm if Samsung uses the patents?"

Chief Judge Sharon Prost offered that she "was having a hard time getting past irreparable harm".

Samsung’s lawyer, Quinn Emanuel’s Kathleen Sullivan, said that the company had pretty much stopped using the patents so no injunction was needed. Judge Moore countered: "Why are you fighting it? Why am I wasting my time?"

They Can’t Go For That

Hall & Oates are suing a Brooklyn granola company, claiming the "Haulin’ Oates" product infringes their trade mark. Darrryl Hall and John Oates object to the mark "Haulin’ Oats" saying it is confusingly similar to their "Hall & Oates" mark.

Early Bird Foods sells its Haulin’ Oats product at prices starting at $27 for a three-pack.

In a complaint filed in the Eastern District of New York, Hall & Oates said: "The name and mark Haulin’ Oats is an obvious play upon Plaintiff’s well-known Hall & Oates mark, and was selected by defendant in an effort to trade off of the fame and notoriety associated with the artists' and plaintiff’s well-known marks."

The lawsuit noted various third parties over the years have attempted to take advantage of the fame associated with Hall & Oates’ marks. It said the duo themselves first made the same connection when their first album was called "Whole Oats"

Hall & Oates had six number ones in the US from the mid-1970s to the mid-1980s – Rich Girl, Kiss on My List, Private Eyes, I Can’t Go For That (No Can Do), Maneater and Out of Touch.

Rolling Stone reported that a spokesman for Hall & Oates said the duo already owned the mark for "Haulin' Oates".

"Hall and Oates' company, Whole Oats Enterprises, owns a Federal Trademark Registration for the identical mark 'Haulin Oats' covering breakfast foods that is used in connection with the sale of 'Haulin Oats' branded oatmeal by Whole Oats Enterprises’ licensee," the spokesperson told the music website.

Triple trouble

The USPTO’s Silicon Valley office has cost three times more than its original estimate, according to a San Jose Mercury News report.

The construction is set to begin today at San Jose City Hall. Officials have estimated the total cost of the project is now $18.2 million. The cost of relocating some city employees, design challenges, and moving some city departments pushed the cost up from the initial $6 million, said the Mercury News.

The USPTO was quoted by the newspaper as saying it "had to keep track of shifting real estate pricing, and other market realities, which have impacted the cost and time of setting up our new permanent space".


Protecting its Ass

Athletic apparel maker Under Armour is suing the Florida-based start-up clothing company Ass Armor, which was set up in 2013 by snowboarder Casey Scherr.

The Baltimore Sun reports that Ass Armor plans to fight the lawsuit, which alleges trade mark infringement, unfair competition and cybersquatting.

The lawsuit says Ass Armor uses similar lettering and puts it name along its short’s waistband like Under Armour does. "Making matters worse, similar to Under Armour's well-known and widely promoted Protect This House tagline mark, defendants use, advertise and promote their Ass Armor mark, name and products… in connection with the Protect Your Assets tagline," says Under Armour’s filing in the US District Court in Maryland.

The Baltimore Sun quoted an email from Scherr saying: "We strongly believe the lawsuit filed by Under Armour has no merit. Ass Armor has spent months fighting with Under Armour in front of the Trademark Trial and Appeal Board and then, without notice, Under Armour filed this matter in federal court. We believe this is a classic David and Goliath battle. As David, we intend to fight."


Debating fee shifting

This week, Senator Chris Coons introduced his STRONG Patents Act, which has sparked strong reactions both in favour and against its pro-patent provisions. The bill is in contrast to the Representative Bob Goodlatte’s Innovation Act introduced in the House, which is more tailored towards those advocating for broad patent reform aimed at patent trolls.

Two posts on IP blogs this week questioned the effect that the fee shifting provisions in the Innovation Act would have if enacted.

A guest post on the Patently-O blog by Ted Sichelman, professor of law at the University of San Diego School of Law, argued that the Innovation Act’s fee shifting is biased against patent holders and will actually likely increase patent assertion entity activity.

He said the Innovation Act includes what seems to be a neutral fee-shifting provision. It would require a court to "award, to a prevailing party, reasonable fees and other expenses … unless the court finds that the position and conduct of the non-prevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust."

But Sicheman said: "Unfortunately, many commentators have focused the issue of whether this provision creates a presumption in favor of fee-shifting without carefully considering the many affiliated provisions in the bill. These additional provisions are particularly important because – contrary to the language quoted above – they significantly skew the effects of fee-shifting against patent holders. Given this lopsided effect, the fee-shifting provisions would probably increase patent assertion entity (PAE) activity... this is because the provisions would most likely substantially reduce PAEs’ costs of acquiring patents."

Sichelman argued that a close reading of these additional fee-shifting provisions makes their skewed nature apparent.

"Take, for instance, the provision for 'interested’ third-party liability," he said. "It essentially makes those with a 'direct financial interest in the patent … damages [award] or ... licensing revenue’ liable in the event a losing patent holder cannot pay a fee award (subject to certain exclusions). By its terms, the third-party liability provision only benefits 'a prevailing party defending against an allegation of infringement of a patent claim’ (emphasis added). So while third-party liability is quite expansive for those affiliated with losing patent holders, it is nonexistent for those affiliated with losing accused infringers."

He also questioned the effect of the provision that settlement counts as a win for the accused infringer when the patentee "unilaterally extends to [the accused infringer] a covenant not to sue for infringement", unless the patentee could have voluntarily dismissed the action without a court order.

Gene Quinn on the IP Watchdog blog also wrote a post his week arguing that fee shifting would not do anything to stop patent trolls.

"Fee-shifting simply won’t matter to patent trolls," wrote Quinn. "Ironically, fee-shifting will matter only to those who are pushing for it, and also for small entities. The tech giants who get sued for patent infringement by true innovators with strong patents lose with great frequency. After fighting a war of attrition as they like to do the attorneys fees they pay will be substantial."


Also on the blog this week:

Senator Coons throws "legislative grenade" at PTAB proceedings

How China is changing

In our news and analysis this week:

Bass and Spangenberg double down on IPR strategy

Pro-patent bill introduced in US Senate

INTA hires former USPTO trade mark commissioner Cohn

Harness Dickey opens Dallas office with hires from Dentons

Jeffrey Lewis joins Fried Frank

Top firms for trade mark work 2015

K&L Gates adds IP partner to London office

USPTO retires SAWS programme

PTAB issues first written decisions on biopharmaceutical IPRs

Hogan Lovells adds three in Greater China

Comments






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ManagingIP profile

Jaguar Land Rover to trademark Defender design to see off rivals https://t.co/9XxH3FwZID via @FT

Sep 22 2017 08:55 ·  reply ·  retweet ·  favourite
ManagingIP profile

@patentassertion @Mathys_Squire Would you be interested in writing a follow up looking at trends in other jurisdictions, eg DE, FR, IT & NL?

Sep 21 2017 04:25 ·  reply ·  retweet ·  favourite
ManagingIP profile

RT @MarquesIP: At #marques17 Dimitris Botis of @EU_IPO & Simon Malynicz of @3NewSquare discuss the EUTM changes coming on October 1 #EUIPO0…

Sep 21 2017 08:53 ·  reply ·  retweet ·  favourite

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