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ClearCorrect, GSK, DMCA reform, Pele, Samsung, EFF – the week in IP


The Federal Circuit denying an en banc rehearing of ClearCorrect, songwriters calling for reform of the Digital Millennium Copyright Act, GSK saying it will not seek patents in the least developed countries, Pele suing Samsung for allegedly using his likeness, and the EFF securing attorneys fees for a client were in the intellectual property headlines in the past week

Also on the blog this week:

Make your nominations for the Global Anti-Counterfeiting Awards 2016

In our news and analysis: 

Fordham IP Conference Day 2 - live

Fordham IP Conference 2016 - day 1 live!

Practical tips for filing designs post-Trunki

Unitary Patent and UPC: a progress report (March 2016)

Federal Circuit denies writ of mandamus in Slants case

An interview with award winner Margot FröhlingerUPC scenario 3: A standards case from the defendant’s perspective

Why we love (and hate) design rights

Gilead ordered to pay $200m for infringing Merck hepatitis C patents

POM loses long-running false advertising suit against Coca-Cola

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.


The 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 products.”

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 affirmatively.”

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 Accountability Act.”

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 of September.

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 sites. 

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 April 1.

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 countries

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 G20 countries.

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 step.

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 the BBC.

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 Pele".

EFF gets fees in patent suit

The District Court of New Jersey has ordered Corporation to pay an Electronic Frontier Foundation client’s attorneys fees. The court found that Garfum’s patent suit lacked merit and was litigated unreasonably.

EFF logo

Garfum sued a small photography website called for patent infringement in 2014.

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.

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