Also on the blog in the past week were:
US patent litigation falls 13% in third quarter
We’ve also posted the following articles in the
past week (log in via subscription or free
TTAB issues final rules to increase efficiency
Trade Mark Amendment Act moves Thailand towards international
En banc Federal Circuit reinstates $120m verdict in Apple v
Key takeaways from the IP Enforcement Forum 2016
Examining the Madrid Protocol in Africa
PTAB finds Shire patent valid in first Kyle Bass final
FTC report identifies two types of PAEs, makes
Costco ordered to pay $8m for selling "Tiffany"
Data: PTAB filing stabilises in third quarter
Kappos: McRO is CAFC’s "most important 101 case
Game over for Who’s on First?
The Second US Circuit Court of Appeals has dismissed a
copyright suit against the makers of a Broadway show that
included dialogue taken from Abbott &
Costello’s classic "Who’s
on First" routine.
The main character in "Hand to God"
performs a minute excerpt of the routine with a sock puppet to
impress a girl, before admitting it is a routine from the
Southern District of New York last year dismissed the suit,
saying it was transformative and assumed the audience
recognised the original source.
This week the Second Circuit in
its opinion also dismissed the suit but cited different
reasons. Judge Reena Raggi said the use of the routine was not
the Wall Street Journal reported: "The fair use question
didn’t ultimately matter, she wrote, because the
plaintiffs never established a valid copyright claim on the
sketch. 'The parties cite various contracts and copyright
filings spanning more than 40 years as relevant to claimed
rights,’ she wrote, but she concludes none of the
transactions prevented the routine from falling into the public
domain decades ago."
Should Judge Mayer step down?
A concurring opinion in the Federal Circuit’s
recent Intellectual Ventures I v Symantec case
continues to send shockwaves among patent practitioners.
Judge Haldane Mayer
wrote that: "Most of the First Amendment concerns
associated with patent protection could be avoided if this
court were willing to acknowledge that Alice sounded the death
knell for software patents." He added: "It is well past time to
return software to its historical dwelling place in the domain
This has not been well received among patent attorneys. For
example, IBM’s Manny Schecter
tweeted: "#Copyright is not adequate to protect software so
as to eliminate #patents. They are not the same, which is why
we have both now."
More forcefully, Gene Quinn on the IP Watchdog blog
called for Judge Mayer to stand down "and move quietly into
In an epic takedown, Quinn concludes: "Simply stated, the
industry and the public deserve better than Judge Mayer. His
anti-patent views seem to have matured into an irrational
hatred that so cloud his judgment that he twists, exaggerates
and misrepresents in order to attempt to impose his radical
views into the law. There is no place for a judge like
Fenwick & West’s Stuart Meyer on the Bilski
Blog said the
concurrence shows the problem with judicially-created
Supreme Court turns down PTAB case
The biggest IP story so far this week has been oral
arguments in Samsung v Apple at the Supreme Court. But
garnering less attention was the court denying cert in three
Patent Trial and Appeal Board cases.
As Marshall Gerstein &Borun's
PTABWatch blog reported: "Two of those petitions challenged
the constitutionality of AIA trials and the Patent
Office’s authority to cancel patent rights between
private parties." These were Cooper v Lee and MCM Portfolio v
Hewlett-Packard. The court also denied Merck’s
petition challenging the Federal Circuit’s
deferential standard of review of the PTAB’s AIA
trial decisions, in Merck & Cie v Gnosis.
This followed the court last week denying a petition seeking
to limit the scope of technology that may be considered by the
PTAB to fall within its CBM review jurisdiction, in Trading
Techs Int’l v Lee.
Marshall Gerstein commented: "Although some practitioners
remain hopeful that the Court will rein in the PTAB, so far,
the Supreme Court has refused the invitation to do so."
The Supreme Court earlier this year heard its first
PTAB-related case. In the Cuozzo decision, it
affirmed the PTAB’s standard for claim
Global patent trend report released
RWS inovia has released its
annual report on global patent and IP trends.
The report indicates that fallout from the Alice v
CLS ruling was the dominating issue in the US in 2015, and
the Unitary Patent was the main topic of concern for European
Patent Docs blog summarised some of the
report’s findings: "With respect to filing
expectations, 79.2% of respondents said they filed as many
patent applications as they expected to file in 2015, 8.3%
filed more than they expected, and 12.5% filed less than they
expected. The 2016 report indicates that 36.5% of survey
respondents filed between four and nineteen patent families in
2015, 24% filed 1-3 patent families, 12.5% filed 20-49 patent
families, 10.4% filed either no patent families or more than
100 patent families, and 6.3% filed 50-99 patent families. The
report noted that respondents have been filing fewer patent
families as compared to three years ago."
Some 41.4% of respondents reported IP budget cuts in
Investigations against Gurry closed
WIPO’s Coordination Committee, the governing
body responsible for staff matters,
has agreed to end their discussions on the
UN’s Office of Internal Oversight Services
investigation into allegations against WIPO Director General
The Coordination Committee
reaffirmed the decision taken at their September 12
Extraordinary Session with respect to the decisions and
recommendations of the Chairs of WIPO’s General
Assembly and Coordination Committee, who were charged with
managing this process.
"Member states agreed unanimously to move forward in a
constructive and positive spirit with the ongoing work at WIPO
to review and strengthen internal procedures relating to
procurement, internal oversight, and whistle-blower policy,"
In brief – hip hop edition
Sony has settled a copyright lawsuit over rapper Ghostface
Killah using the Iron Man theme song from the 1960s on two
tracks on his 2000 Supreme Clientele album,
reports Billboard. As
this blog reported in August, the Second Circuit had
revived the suit, which was brought by composer Jack Urbont,
because it had factual issues that precluded summary
Incontestable blog reports that the Southern District of
New York recently dismissed a trade mark infringement complaint
against Kanye West over the term "Loisaidas" on the ground the
claims were precluded by the First Amendment.