Also on the blog this week:
Highlights from the May 2016 issue
Guest post: Five common mistakes of early-stage tech
And in our news and analysis:
Latest people moves in Asia
Medtronic’s David Ruschke appointed PTAB chief
PTAB has granted six of 118 reviewed motions to amend
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
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
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
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
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
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
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
"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.
Lee 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
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
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
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.