Also on the blog this week:
Legislative overhauls, injunctions and patent eligibility in
Time to talk about Brexit
Celgene win leaves Bass even in PTAB institution game
Apple wins in Texas
An Eastern District of Texas jury on Friday found that Apple
did not infringe five patents owned by Pendrell subsidiary
The jury found, however, that Apple had not proved the
patents, which are directed to digital rights management, were
Google and Samsung were cleared of the infringing the same
patents in a similar case in September.
Reuters reported McKool Smith partner Samuel Baxter,
ContentGuard’s lawyer, said the company is
disappointed by the outcome and evaluating options.
Federal Circuit denies
In further good news for Apple, the Federal Circuit denied
Samsung’s petition for an en banc rehearing of its
dispute with Apple,
reports the FOSS Patents blog.
FOSS Patents’ Florian Mueller said the focus
will now shift to whether a Supreme Court petition is imminent
"Its petition for a rehearing already looked very much like
a petition for writ of certiorari," noted Mueller. "A cert
petition appears more likely than not, and it will be very
interesting to see which other companies support Samsung's
position that a patent that has been held invalid not only by
the Central Reexamination Division of the USPTO but also by a
PTAB (in-house court) must not be enforceable at that advanced
stage of the reexamination proceedings."
on the Patently-O blog, Dennis Crouch said the denial of a
rehearing set up "a last-ditch and low-probability effort for
Supreme Court review".
On November 13, The Medicines Company
had more luck at the Federal Circuit when an en banc
rehearing of its dispute with Hospira was granted. This vacated
the Court’s earlier decision invalidating the
Orange Book patents covering Angiomax that expire in 2028.
The Federal Circuit had held in that case that an order
placed with a pharmaceutical contract manufacturer can be an
offer for sale that will have an invalidating effect on a
later-issued patent with claims that cover the subject of that
The order granting the petition requested the briefing of
the parties to address the following issues:
(a) Do the circumstances presented constitute a commercial
sale under the on-sale bar of 35 USC § 102(b)?
(b) Should the court overrule or revise the principle in
Special Devices v. OEA, 270 F.3d 1353 (Fed. Cir. 2001), that
there is no "supplier exception" to the on-sale bar of 35 USC
PatentDocs blog noted that: "It is clear from this list
that the Court is not only interested in reviewing the facts of
the present case, but is also interested in reconsidering the
wisdom of the rule against an exception for suppliers."
Google offers legal
Google has offered to cover legal costs of YouTube users for
a "handful of videos that we believe represent clear fair uses
which have been subject to DMCA takedowns",
reports The Guardian.
With approval of the video creators, Google will keep the
videos live on YouTube in the US, feature them in the YouTube
Copyright Center as strong examples of fair use, and cover the
cost of any copyright lawsuits brought against them.
"We’re doing this because we recognise that
creators can be intimidated by the DMCA’s counter
notification process, and the potential for litigation that
comes with it (for more background on the DMCA and copyright
law see check out this Copyright Basics video)," Fred von
Lohmann, copyright legal director,
explained in a blog post. "In addition to protecting the
individual creator, this programme could, over time, create a
'demo reel’ that will help the YouTube community
and copyright owners alike better understand what fair use
looks like online and develop best practices as a
Google added that it can’t offer legal
protection to every video creator – "or even every
video that has a strong fair use defence". But it added: "We
believe even the small number of videos we are able to protect
will make a positive impact on the entire YouTube ecosystem,
ensuring YouTube remains a place where creativity and
expression can be rewarded."
TorrentFreak reported that Google is asked to delete 1,500
links to pirated content on its search engine every minute, up
from only a few hundred takedown notices a day in 2011.
Lex Machina sold
LexisNexis Legal & Professional has
acquired Lex Machina for undisclosed terms. Silicon
Valley-based Lex Machina, provides a platform that helps
lawyers predict the behaviours and outcomes of different legal
strategies by analysing millions of federal court dockets and
"Data and analytics are integral to
the future of the practice of law and the addition of Lex
Machina solidifies the LexisNexis position as a leader in
providing analytic decision tools for legal professionals,"
said Sean Fitzpatrick, managing director of North American
research solutions at LexisNexis.
The companies believe the collection of court dockets and
documents from LexisNexis CourtLink provides a comprehensive
resource for Lex Machina technology. Lex Machina gains access
to resources including content, a global technology platform
and a sales organisation that covers all segments of the legal
Skechers in ITC win over
Footwear company Skechers USA
has won a ruling at the International Trade Commission over
Nike subsidiary Converse relating to the Converse Chuck Taylor
In October 2014, Converse sued Skechers in federal district
court and before the ITC alleging that the Twinkle Toes and
BOBS product lines infringed its Chuck Taylor midsole common
law and registered trade marks. The case went to trial before
the ITC in August 2015.
In a November 17 opinion, ITC’s Chief
Administrative Law Judge, the Honorable Charles Bullock, ruled
that Skechers’ Twinkle Toes and BOBS product lines
do not infringe Converse’s registered trade mark
for the Chuck Taylor midsole.
In making his ruling, the judge noted that both of the
Skechers product lines feature prominent branding and that the
Twinkle Toes line contains design features that "create enough
differences that the shoes bearing them cannot be said to be
similar to" the Chuck Taylor. The Judge also stated that the
survey evidence concluded that there was no likelihood that
consumers would confuse the Skechers designs with those of
Converse’s Chuck Taylor designs.
In addition, the Judge ruled that Converse has no common law
trade mark rights in the Chuck Taylor midsole because the
design is not distinctive, not famous and has failed to acquire
Skechers was represented in the matter by Morgan Chu, Samuel
Lu, Lindsay Kelly, Melissa Rabbani and Jad Mills of Irell &
Manella; Jeffrey Barker of O’Melveny & Myers;
and Barbara Murphy of Foster, Murphy, Altman & Nickel.
In our news and analysis this week:
New Controller in India
Which IP practitioners are moving firms in the
Federal Circuit rules on Akamai v Limelight's "residual
Federal Circuit vacates PTAB rejection of Ariosa IPR