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Adidas, Under Armour, PTAB amendments, Facebook, patent trolls, .blog, limericks – the week in IP



Michael Loney


An Adidas and Under Armour settlement, criticism of the Patent Trial and Appeal Board’s stance on amendments, a Facebook trademark win in China, a study revealing the “moral panic” of using the term “patent troll”, .blog selling for $19m, and IP limericks were in the intellectual property headlines in the past week

Also on the blog this week:

Highlights from the May 2016 issue

Guest post: Five common mistakes of early-stage tech companies

And in our news and analysis:

Latest people moves in Asia

Medtronic’s David Ruschke appointed PTAB chief judge

PTAB has granted six of 118 reviewed motions to amend – study

Data: PTAB filing up in April, led by HP

Adidas and Under Armour settle

Under Armour, its subsidiary MapMyFitness and Adidas have settled patent litigation, with Adidas dismissing all claims and granting a licence, reports the Baltimore Sun.

Adidas sued the companies in the District of Delaware in February 2014 alleging infringement of patents related to fitness devices. Adidas also claimed that Under Armour’s director of innovation and research was formerly at Adidas with direct knowledge of the patent portfolio.

In other footwear company news, The Fashion Law blog ran a piece highlighting Nike’s large patent portfolio. Nike’s CEO Mark Parker has said that the company’s number of patents has nearly doubled since 2009, and that as of last year it has the third-largest US portfolio of design patents.

"Nike has buried rivals Adidas and Under Armour in patents, as it looks to maintain its dominance with an avalanche of innovations in manufacturing and design while potentially toying with wearable devices," said The Fashion Law.

The blog claimed that Adidas’ US patent portfolio is about a ninth the size of Nike’s more than 4,200 active patents. Globally, Nike has about 19,500 patents and patent applications while Adidas has roughly 2,400. Under Armour has just over 100 US patents, almost two-thirds of which are design patents.

"What we can certainly tell from Nike’s patent portfolio is that the company is seriously toying with the idea of a wearable device (to rival Apple's not so earth shattering watch, perhaps?) and banking quiet heavily on 3D printing," The fashion Law concluded.

Taking the PTAB to task over amendments

Gene Quinn on the IPWatchdog blog posted strong criticism of the UPTO’s recent report on Patent Trial and Appeal Board amendments.

The USPTO said that the Board had only reviewed 118 motions to amend, and granted or granted-in-part six of them, or 5%.

Quinn took the Board to task for saying it has only a limited amount of time for each case when 80% of the motions to amend are being denied for substantive reasons of specific grounds of patentability. Acting PTAB Chief Judge Nathan Kelley said in a blog post that: "Unlike in the examination context, the PTAB proceedings must be completed within a year, and there is no time for back-and-forth between the applicant and the USPTO that happens during prosecution."

Quinn said: The position taken by Kelley here is not new. This is the position taken by the Patent Office since the beginning. Essentially, the PTAB is telling the patent owner – sorry, we just don’t have the time it takes to allow you to amend so we won’t. A terrible reason to refuse a patent owner the ability to amend, but this has consistently been the justification provided by the Office."

Quinn said the USPTO uses the one-year timeframe as an excuse. He pointed out that proceedings can be extended for six months for "good cause".

Kelley also said that the PTAB is on course to receive 50 motions to amend this year, about the same as in the first year of proceedings.

Quinn responded: "If Kelley is right and there are never going to be many motions to amend filed it is utterly unbelievable that the Patent Office would cling to the nonsensical argument that they can’t possibly provide those 50 patent owners a year with an honest, full and fair examination of amended claims. For crying out loud, the Patent Office is in the business of patent examination and we are taking about 50 amendments a year that they say they can’t handle with special dispatch? That is pathetic."

A case for Facebook to like

Facebook has won a trademark ruling in China, reports The Wall Street Journal. In a verdict delivered last month the Beijing Higher People’s Court ruled in favour of the social media company against a Chinese drinks maker that owned the trademark "face book".

Zhujiang Beverage registered the mark and its Chinese equivalent in 2011, despite objections from Facebook. The company sells products including milk-flavoured drinks and porridge. It argued that, although Facebook is well known, it has been blocked in China since 2009.

According to the BBC, the Beijing court said Zhujian had "violated moral principles" with "obvious intention to duplicate and copy from another high-profile trademark".

Facebook’s victory is in contrast to Apple, which recently lost a case involving IPHONE for a Chinese handbag maker.

"Patent troll" takes its toll

The use of the term "patent troll" in newspapers magazines and online publications provides a prejudicial impression of patent licensing that unfairly influences attitudes towards disputes, according to a research conducted by Illinois Institute of Technology – Chicago-Kent College of Law professor Edward Lee.

IP CloseUp tableLee noted that: "[S]ome courts have even barred the use of the term [patent troll] altogether during patent trials on the ground that the term is unfairly prejudicial. But, among the mainstream media, the term is pervasive."

He added the findings of his study "suggest that the term may operate as a moral panic in a way that is detrimental to reasoned analysis and consideration of the root problems related to the issue of abusive patent litigation tactics."

The research says that use of the term "patent troll" picked up in 2006 around the time of the Blackberry and eBay patent cases.

Bruce Berman on the IP CloseUp blog noted: "Since then, the media more often portrayed such patent entities in a one-sided, negative light with very little analysis or factual support."

He continued: "Until now, few works have provided statistics or discussion of any studies to support their negative portrayal. Practically no articles mentioned the lack of a working requirement in US patent law, which permits all patentees not to practice their inventions, should they so choose. Lee’s findings provide support for the recent judicial decisions that have barred, at trial, the use of the term 'patent troll’."

Berman said a useful next step would be to drill down into the figures to assess which reporters at which types of publications have used the term. Berman said this sort of analysis will be conducted by the Center for Intellectual Property Understanding, a non-profit education organization that he recently established with several thought-leaders.

.blog goes for $19m

Automattic, the parent company of blog hosting site WordPress, has revealed it beat out Google and others to buy the gTLD .blog last year. Reports suggest it paid $19 million.

Automattic CEO Matt Mullenweg said in a blog post: "It’s now public that Automattic is the company behind Knock Knock Whois There LLC, the registry for the new .blog TLD. (And a great pun.) We wanted to stay stealth while in the bidding process and afterward in order not to draw too much attention, but nonetheless the cost of the .blog auction got up there (people are estimating around $20M). I’m excited we won and think that it will be both an amazing business going forward and give lots of folks an opportunity to have a fantastic domain name in a new namespace and with an easy-to-say TLD.

Trademark owners can buy .blog domains in the sunrise period starting in August, with the "land rush" starting in October.

And finally…

Managing IP and others got into creative mode in the past week to mark National Limerick day 2016. You can view a Storify post collecting all of the efforts here.

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