Pre-1972 recordings, Canada plain packaging, Microsoft, top 10 US patent cases, TTAB fees, Federal Circuit – the week in IP
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Pre-1972 recordings, Canada plain packaging, Microsoft, top 10 US patent cases, TTAB fees, Federal Circuit – the week in IP

Plain packaging

A copyright ruling on pre-1972 recordings, Canada’s consultation on plain packaging, a sale of 1,500 Microsoft patents, a proposal to increase TTAB fees, data on Rule 36 affirmances by the Federal Circuit, a former PAE lawyer’s experiences of the “dark side, and an interview with Erich Spangenberg were in the intellectual property headlines in the past week

Also on the blog this week:

Women in IP Network Annual Reception

Read the highlights from the INTA Annual Meeting

And in our news and analysis:

PTAB passes 5,000 petition mark but 2016 filing lagging last year

Is it safe to bring abandoned brands back to life?

Dissecting the Defend Trade Secrets Act

Chanel tops US trade mark damages list since 2009 – report

India’s first National IPR Policy maintains position on affordable drugs

Interview: Ada Leung, Director, Hong Kong IP Department

Unitary Patent and UPC: A progress report (May 2016)

The trademark cases to watch in the US

Whatever will be of B&B?

Remastered pre-1972 songs ruled covered by federal copyright

In what The Hollywood Reporter is describing as a “huge victory for CBS, whose legal strategy was masterminded by Robert Schwartz at Irell & Manella”, a Central District of California judge has determined that remastered versions of pre-1972 songs are covered by copyright.

The dispute involves ABS Entertainment – which owns recordings by soul greats Al Green, Jackie Wilson and others – and CBS Radio. ABS contended that pre-1972 songs are protected under state law and cannot be broadcast without permission.

However, unlike other recent rulings, Judge Percy Anderson declared that the plaintiff’s pre-1972 recordings “have undergone sufficient changes during the remastering process to qualify for federal copyright protection.”

Canada to consider plain packaging


Health Canada announced it will consult on plain packaging for tobacco products, reports Bereskin & Parr.

The Canadian government’s public health department has not announced full details yet but Bereskin & Parr noted it is likely that only the brand name could appear on packaging, and colouring and package size would be standardised.

“The rationale for plain packaging is to reduce overall tobacco use and deter new smokers,” wrote Berkeskin & Parr lawyers Cynthia Rowden and Jennifer McKensie. “However, all brand owners should be interested in regulation of branding. Plain packaging will restrict the use of many long-used registered design marks and familiar elements of trade dress, as well as prevent the adoption and use of new branding in the future.”

They noted that plain packaging legislation could be at odds with TRIPS as well as the Paris Convention.

Microsoft sells 1,500 patents

Microsoft is selling about 1,500 patents to Chinese device maker Xiaomi, and the two companies have also announced a cross-license and patent transfer agreement, reports Reuters.


Reuters quoted Florian Mueller noting the rarity of Microsoft selling its patents. He said "it's possible Microsoft found it easier to impose its Android patent tax on Xiaomi as part of a broader deal that also involved a transfer of patents."

Beginning in September 2016, Xiaomi Android devices, including Mi 5, Mi Max, Mi 4s, Redmi Note 3 and Redmi 3, will come pre-installed with Microsoft Word, Excel, PowerPoint, Outlook and Skype applications.

The agreement builds on the companies’ partnership with Windows 10 on Mi Pad and Microsoft Azure powering the Mi Cloud service. “Partnerships with companies such as Xiaomi are central to Microsoft’s strategy to work with industry leaders around the world to meet the needs of joint customers,” Microsoft said in a statement.

TTAB fee increase proposed

The USPTO has proposed a variety of trade mark fee adjustments, reports the TTABlog.

USPTO logo

Under the proposal, the Trademark Trial and Appeal Board (TTAB) ex parte appeal fee would be raised to $200 from $100 for electronic filing, and to $300 for paper filing.

The fee for filing an opposition or a petition for cancellation would rise to $400 from $300 for electronic filing, and to $500 for paper filing.

New fees would also be introduced for filing certain extensions of time to oppose.

Written comments on the proposal must be received by July 11.

The top 10 US patent cases

The Patently-O blog has published an updated list of the top 10 pending patent cases in the US, as compiled by Hal Wegner.

Top of the list is Impression Products v Lexmark, which has a cert petition pending. It is followed by the Sequenom v Ariosa, Samsung v Apple, Cuozzo v Lee, and Halo v Pulse/Stryker v Zimmer cases.

According to Wegner, a patent consultant whose emails on the market are widely read and also published on the Los Angeles Intellectual Property Law Association’s website, the Supreme Court is now scheduled to vote on June 16 whether to grant certiorari in the number one case Impression Products v Lexmark, which concerns international patent exhaustion, as well as the number seven case Life v Promega, which concerns active inducement.

A PDF providing details of all the top 10 cases can be viewed here.

Rule 36 use rising

Also on the Patently-O blog, Jason Rantanen has published an interesting analysis of Federal Circuit appeals and decisions.

Federal Circuit rule 36
Source: Patently-O

The data reveals that the trend of more appeals arising from the Patent Trial and Appeal Board than district courts is holding strong. Rantanen delved into the figures to assess whether the court will make greater use of Rule 36 summary affirmances in appeals where the panel votes to affirm.

He noted: “The use of Rule 36 summary affirmances is indeed rising, both in absolute numbers and as a percentage of dispositions. During 2015 and so far in 2016, the Federal Circuit has resolved more appeals arising from the PTO through Rule 36 summary affirmances than with an opinion.”

The court is issuing more opinions in appeals from the USPTO than ever before. In 2015, it issued 60 opinions on USPTO appeals, and Rantanen says “this year it is poised to exceed that by a substantial margin.”

“Everything in the patent world … is done to make money”

Two contrasting articles involving NPEs (also known as PAEs, known to some as patent trolls) were published in the past week.

Over on Techcrunch, Ira Blumberg penned a piece drawing on his experiences working for patent-assertion entities – or as he termed it, the “dark side” – and contrasting that with his role now as vice-president of IP at Lenovo. One sample quote is: “It is now abundantly clear to me that PAEs are, in net, detrimental to business and innovation. Despite what they say, trolls are not making the world a better place for anyone. It is time they lay down their arms and allow companies to use the patent system in the way in which it was intended.” 


Another interesting article was published on Intellectual Property Watch, which interviewed Erich Spangenberg, who along with Kyle Bass last year was involved in filing inter partes review petitions challenging pharmaceutical patents. He recently joined Marathon as director of acquisitions, licensing and strategy.

One sample quote responding to pharmaceutical companies saying he is just challenging pharma patents to make money: “When I first heard that, it cracked me up. Seriously? The drug industry chastising someone who’s interested in making money? When drug prices have been skyrocketing with no connection to costs or inflation? Everything in the patent world – from filing patents to defending patents to challenging patents – is done to make money.”

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