Federal Circuit will not rehear ClearCorrect case
The Federal Circuit has denied a request for an en banc
rehearing of ClearCorrect v ITC from the International
Trade Commission and intervener Align Technology. The
appeals court last November ruled the ITC’s
authority to limit the importation of infringing articles
extends only to "material things" and not electronic files.
The case involved 3D printable files of teeth aligners.
Federal Circuit IP Blog reported: "Of note, the denial
of the en banc petition included 1-page per curiam order,
4-page concurrence, and a 21-page dissent. The lone
dissenter (Judge Newman) argued that the
panel’s decision was at odds with precedent,
including the en banc court’s opinion in
Suprema v ITC, and that various unfair practices in imports
statutes make no distinction between digital and tangible
The concurrence – authored by Chief Judge
Prost and Judge O’Malley, joined by Judge
Wallach – disagreed with the dissent. It said
"when Congress want[s] to bridge the gap between the
non-digital world and the digital world, it [will do] so
IP observer Hal Wagner
noted Newman’s prodigious dissenting
activity. "Each dissent by The Great Patent Dissenter
builds upon her world record for the number of appellate
patent dissenting opinions," he said.
Wagner said Newman issued "remarkable dissenting
opinions" in both the panel decision and the denial of
rehearing en banc.
Her most-recent dissent says: "The court’s
decision is inconsistent with decisions of the Supreme
Court, the Federal Circuit, the Court of Customs and Patent
Appeals, the Court of International Trade, the Tariff
Commission, the Department of Labor, the Bureau of Customs
and Border Protection, the Arms Control Export Act, and the
Bipartisan Congressional Trade Priorities and
It is likely the case will be appealed to the Supreme
Court. The deadline for filing a petition is June 29, with
a decision on whether to grant cert expected near the end
Songwriters call for reform of DMCA
Nearly 400 individual artists, songwriters, managers,
and music organisations have called for reform of the
Digital Millennium Copyright Act (DMCA).
The artists submitted comments to the US Copyright
Office demanding reforms to the DMCA, which they say forces
creators to police the internet for instances of theft,
placing an undue burden on these artists and unfairly
favouring technology companies and rogue pirate
In addition, 18 separate music organisations submitted a
100-page joint brief highlighting flaws in the DMCA.
Cary Sherman, chairman and CEO
of the Recording Industry Association of America, commented
in a statement: "I don’t recall a
time when the entire music community has united behind an
issue like it has this one – speaking with a
collective voice for reform of the DMCA. This outdated and
dysfunctional law has hurt everyone involved in creating
music, from the newest emerging artists and songwriters to
the global superstars, from the smallest labels and
publishers to the biggest majors. I hope this unprecedented
coming together will encourage policymakers to take the
steps necessary to update this law and ensure the creative
future of music."
The Copyright Office in December
published a notice in the Federal Register asking for
public comment on a study it is conducting to evaluate the
impact and effectiveness of the DMCA safe harbour
provisions contained in Section 512. Comments were due on
The notice said it may have been difficult to anticipate
the online world as we now know it when the DMCA was
enacted in the 1990s. "Among other issues, the Office will
consider the costs and burdens of the notice-and-takedown
process on large- and small-scale copyright owners, online
service providers and the general public," it said.
GSK will not seek patents in least developed
GlaxoSmithKline has announced
it will not file patents for its medicines for least
developed countries (LDCs) and low income countries (LICs),
"so as to give clarity and confidence to generic companies
seeking to manufacture and supply generic versions of GSK
medicines in those countries".
It explained that for lower
middle income countries (LMICs) generally, GSK will file
for patents but will seek to offer and agree licences to
allow supplies of generic versions of its medicines for 10
years. GSK intends to seek a small royalty on sales in
those countries. "This offer will apply even for those
countries that move out of LMIC status due to increased
economic growth during this period," said the company.
GSK will continue to seek full patent protection for
high income countries, upper middle income countries and
Additionally, GSK said it will commit its future
portfolio of cancer treatments to patent pooling and will
explore the concept with the Medicines Patent Pool to help
address the increasing burden of cancer in developing
countries. GSK would be the first company to take this
Sir Andrew Witty, CEO of GSK said: "'The changes we are
setting out aim to make it as clear and simple as possible
for generic manufacturers to make and supply versions of
GSK medicines in LDCs, LICs and most LMICs."
Witty added: "Changes to patents and IP systems will not
solve the multi-faceted challenges of improving healthcare
in developing countries. In cancer for example, improving
outcomes in developing countries requires better funding,
improved screening and diagnosis, more cancer doctors and
better hospital services as well as access to treatments.
However, we believe the measures outlined today add to the
wider contribution GSK makes to improve access to effective
healthcare around the world."
According to The Guardian, the measures will affect 85
countries and help more than two billion people. The LDCs
include Afghanistan, Rwanda and Cambodia while the LICs
include Kosovo, Pakistan, Morocco and Ukraine.
Pele hopes to score pay out
Soccer great Pele is suing Samsung, claiming that his
likeness has been used improperly in an advertisement, reports
He is claiming at least $30 million in a suit filed in a
District Court in Chicago. The advert for ultra
high-definition televisions ran in the New York Times.
The suit, filed by Pele IP Ownership, claims Samsung ran
the advert after negotiations to use Pele’s
image broke down in 2013. The complaint says the advert
features photo of a man who "very closely resembles" Pele,
and also a small picture of a footballer making a "modified
bicycle or scissors-kick, perfected and famously used by
EFF gets fees in patent suit
The District Court of New Jersey has ordered Garfum.com
Corporation to pay an Electronic Frontier Foundation
client’s attorneys fees. The court found that
Garfum’s patent suit lacked merit and was
Garfum sued a small photography
website called Bytephoto.com for patent infringement in
EFF explained: "Garfum claimed to own the idea of
having a 'vote for the best’ competition, but
on the Internet. Even though its absurd patent was plainly
invalid under the Supreme Court’s decision in
Alice v CLS Bank, Garfum demanded that the owners of
Bytephoto, Ruth and Steve Taylor, pay it $50,000. Given the
substantial cost of defending even a frivolous patent
lawsuit, the Taylors faced a difficult situation."
EFF represented the Taylors and filed a motion asking
the Court to declare Garfum’s patent invalid.
The day after the court scheduled a hearing on that motion,
Garfum voluntarily dismissed its case. EFF filed a motion
urging the court to order Garfum to pay the
Taylors’ attorneys’ fees.
The court noted: "[T]he parties had the benefit of the
Alice decision from the Supreme Court, and many courts had
opined on the issue – both district courts and the
Federal Circuit – after the Supreme Court issued
its Alice decision in June 2014. Thus, although the law on
patent eligible subject matter had been in flux, a
sufficient number of cases had been decided by the time of
briefing that Plaintiff should have realized that its
arguments under 35 USC § 101 were untenable."
EFF’s co-counsel was Joe Gratz of Durie
Tangri and Frank Corrado of Barry Corrado & Grassi who
also represented the Taylors in this case.