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Apple, ContentGuard, Samsung, The Medicines Company, Google, Lex Machina, Skechers, Converse – the week in IP



Michael Loney


A patent lawsuit win for Apple over ContentGuard, Samsung’s denial of a Federal Circuit en banc rehearing, Google offering legal support for YouTube users accused of copyright infringement, the acquisition of Lex Machina, and Skechers claiming a trade mark victory over Converse at the ITC were in the IP headlines in the past week

Also on the blog this week:

Legislative overhauls, injunctions and patent eligibility in Canada

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 ContentGuard Holdings, reports Reuters.

The jury found, however, that Apple had not proved the patents, which are directed to digital rights management, were invalid.

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 Samsung

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 from Samsung.

"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."

Over 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 sale.

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 § 102(b)?

The 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 new logoGoogle offers legal support

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 community."

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."

In addition, 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 documents.

Lex Machina"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 marketplace.


ITC buildingSkechers in ITC win over Converse

Footwear company Skechers USA has won a ruling at the International Trade Commission over Nike subsidiary Converse relating to the Converse Chuck Taylor shoe.

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 secondary meaning.

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 Americas?

Federal Circuit rules on Akamai v Limelight's "residual issues"

Federal Circuit vacates PTAB rejection of Ariosa IPR

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