Also on the blog in the past week were:
GAO releases two patent reports
Guest post: Keeping the record straight
Have you explored our topic pages recently?
We’ve also posted the following articles in the
past week (log in via subscription or free
ASEAN: a trade mark owner’s view
How ASEAN countries rank for IP protection
USPTO issues memorandum in response to CellzDirect and
Catching up with Canada: recent trade mark news
Catching up with Canada: recent patent news
Federal Circuit keeps 180 days’ exclusion time in
The conflict between social media and copyright
Yahoo sold, but Excalibur remains
Verizon has agreed to buy Yahoo’s core business
for $4.8 billion. Not included in the deal, however, is the
Excalibur patent portfolio.
reported that Yahoo estimates the portfolio’s
value at $1 billion upwards but may not be getting the
kinds of offers it hoped.
"We didn’t want this to be an afterthought to
the rest of the assets," TechCrunch quoted Tom McInerney, chair
of Yahoo’s strategic review committee, as saying
in a conference call.
Bloomberg reports that fewer
than 10 active bidders for the portfolio remain, down from
about three times that many after Yahoo first announced the
patents were for sale. The bidders include standalone companies
and consortia operating in the US, Europe and Asia.
IP analytics platform Aistemos
commented on its blog: "The suggestion has been made that
the Excalibur package was not a fire-sale, that its patents and
applications were of core importance and that there was concern
that the Excalibur portfolio might fall into the hands of a
rent-seeking purchaser … To date, however, there
does not appear to have been a rush to form a queue outside the
company's door in order to place a plausible bid."
this blog reported last week, a survey by TurboPatent
estimated that 44% of the Excalibur patents have "high
severity" issues. TurboPatent analysed 1,757 Yahoo patents and
896 patent applications in the Excalibur portfolio.
"TurboPatent's analysis found Yahoo!'s Excalibur patent
portfolio contains a much higher percentage of potentially
worthless patents than the average patent portfolio,"
said the company in a statement.
Encore of Led Zeppelin case requested
Michael Skidmore has asked the Ninth Circuit to take up an
appeal of the Led Zeppelin copyright case over Stairway to
reports The Wrap.
"Please take notice that Plaintiff
Michael Skidmore, Trustee for the Randy Craig Wolfe Trust,
hereby appeals to the United States Court of Appeals for the
Ninth Circuit from the final judgment entered on June 23 2016,
as well as any and all interlocutory rulings, decisions, and
orders that gave rise to the judgment and are merged therein,"
the notice of appeal reads.
Michael Skidmore, a Trustee for the estate of the band
Spirit’s guitarist, Randy "California" Wolfe, sued
Led Zeppelin, claiming that the band’s
famous "Stairway to Heaven" was a
rip off of Spirit’s "Taurus". In June, a
decided there was no copyright
Top firms for patent practitioners
IP network Patexia has analysed the information for all
registered patent petitioners in the US, and revealed
the top firms by number of patent practitioners.
||Foley & Lardner
Patexia revealed that as of July 2016 there were 44,424
registered patent practitioners, with 75% patent attorneys and
25% patent agents.
The top 10 firms account for 4.3% of all registered
practitioners. The top five firms are Finnegan, (268 attorneys
and agents) Fish & Richardson (267), Knobbe Martens (254),
Kilpatrick Townsend (220) and Foley & Lardner (170).
Patexia noted that about 15,000 of the 44,424 patent
practitioners are not active.
The analysis followed Patexia also recently revealing that
demand for patent attorneys is "generally healthy and strong"
while the number of trained patent professionals is "rapidly
a blog post, the company said about 7,700 law school
applicants were qualified for patent bar in 2009. By 2015, this
number had fallen by 47% to about 4,100.
The patent world’s women problem
Only 8% of primary patent holders are women, reports
Fortune citing an analysis by the Institute for
Women’s Policy Research
The analysis also found women were listed as primary or
non-primary inventors in 18.8% of patents in 2010.
Fortune noted one potential reason for the disparity is that
women are underrepresented in patent-intensive fields such as
engineering and computer science.
ITC invalidates Fitbit patents
In the latest twist in the dispute between wearable device
makers, an International Trade Commission judge has ruled that
three Fitbit patents in a case against Jawbone are invalid,
A trial scheduled for August has
been cancelled as a result. Judge Thomas Pender ruled that the
patents do not cover patent-eligible ideas.
"Fitbit will continue to assert its IP against Jawbone as
appropriate to protect the innovations central to our product
offerings," Bloomberg quoted the company saying in a
The two companies have sued each other in district courts
for patent infringement. Jawbone also accuses Fitbit of a plan
to hire its key employees and steal trade secrets.
In April, the ITC terminated two Jawbone patents covering
sleep monitoring and data output from its investigation for
being directed to ineligible subject matter under Section 101.
These were the last of the patents that Jawbone had claimed
Fitbit had infringed in an ITC complaint seeking a halt to US
imports of Fitbit’s wearable devices.
PGR’s bright future
an interview with the new chief judge of the Patent Trial and
Appeal Board, David Ruschke.
Ruschke noted that the Supreme Court’s Cuozzo
decision was "very, very well-received by the board".
He also revealed enthusiasm about post-grant reviews. Very
few PGRs have been filed so far.
"I think clients would be very, very excited about a process
where they could get out a decision on freedom to operate
within a year," said Ruschke.
"Once the US practitioners get their minds set around what
that looks like, I think there’s going to be a lot
of gravitating toward that as an incredible tool."
Should Canada have a national IP strategy?
Bereskin & Parr’s James Hinton and the DEEP
Centre’s Warren Clarke wrote
an op-ed in The Globe and Mail outlining why they think
Canada should adopt a national IP strategy.
"Other countries are already embracing this strategy," they
wrote. "As international standards in IP have increasingly
converged, national governments have implemented systems to
protect national firms through state-backed or "sovereign"
patent funds. Japan, South Korea and France have all created
such funds as mechanisms to intervene in the patent landscape
by acquiring, licensing and even occasionally enforcing
a May report, the authors examined the holdings and
strategies of these funds and found that they are actively
protecting domestically generated IP abroad, particularly in
The piece points to Japan’s IP Bridge, South
Korea’s Intellectual Discovery and
France’s France Brevats as sovereign patent fund
The article concludes: "We wouldn’t expect our
national athletes to succeed internationally without the proper
coaching and training, and we shouldn’t expect our
innovators to succeed without national IP support. It is time
to own the innovation podium."
Gilstrap slams "highly unusual case"
Judge Gilstrap of the Eastern District of Texas recently
dismissed a case for failure to adequately plead infringement,
In Ruby Sands v American National
Bank, the court said the plaintiff "plainly fails to state a
claim for relief on its face" and that the court was "left to
wonder whether Ruby Sands performed a thorough pre-suit
investigation, as required by the Federal Rules, to craft a
plausible infringement theory before filing its complaint".
It seems that the complaint included bits cut and pasted
from an entirely unrelated complaint.
The court wrote: "This is a highly unusual case, which
presents the court with a serial litigant who not only failed
to plead plausible claims of direct infringement but also
repeatedly filed (and failed to correct) pleadings containing
indirect infringement allegations replete with extraneous
language clearly lifted from some unrelated case."