• Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc. (Fed. Cir. 2018)
    in: Federal Circuit, obviousness  | 

    Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc. (Fed. Cir. 2018)

    By Donald Zuhn — Last month, in Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc., the Federal Circuit affirmed a decision by the U.S. District Court for the District of Delaware finding that Defendant-Appellant Custopharm Inc. had not proven that claim 2 of U.S. Patent No. 7,718,640 or claim 18 of U.S. Patent No. 8,338,395 were invalid as obvious under 35 U.S.C. § 103. The ‘640 and ‘395 patents are owned by Plaintiffs-Appellees Bayer Intellectual Property GmbH and Bayer Pharma AG. Seeking approval to market a generic version of Aveed®, a long-acting injectable testosterone replacement therapy for men suffering from physiologically…

  • Conference & CLE Calendar
    in: Conferences & CLE's  | 

    Conference & CLE Calendar

    August 21, 2018 – “Navigating the Patent Prosecution Highway and Other Accelerated Filing Options — Evaluating the Different Options, Weighing the Benefits and Risks, Obtaining Patent Protection” (Strafford) – 1:00 to 2:30 pm (EDT) August 21, 2018 – “…

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    in:  | 




    $$ In another known uplink receiving antenna arrangement for a cellular mobile communications system, gain is improved by t…

  • The Kit Kat shape mark opinion in the EU – #sandtondiscussion

    Monday’s discussion takes us north to the Court of Justice of the European Union which provided its opinion this week on whether the shape of Nestle’s almost century old Kit-Kat bar is registrable as a trade mark. There’s more to it then that (there always is) and there is also the recent SCA judgment in South Africa upholding rights in the famous three dimensional wafer, which has seemingly contradicted a line of English decisions on the point. Why is this so? Find out on Monday.

    The case discussion, coordinated by Lita, is being lead by John Ndlovu and we have a special guest appearance from leading UK firm Stobbs to give some context from a European perspective. All in all it should be a good discussion between 9am-10am CAT on Monday 15th. As usual you can follow the discussion or tweet in questions using the hashtag #sandtondiscussion on twitter.

    Some action from this last Monday’s discussion:

    Copyright is driving innovation in dictionaries. People are afraid of infringement #sandtondiscussion

    — Maureen Thuto Makoko (@MaureenThuto) June 8, 2015

    2. Questions as to originality of example sentences in dictionaries @afroip #sandtondiscussion @nicrosslee

    — Ian Learmonth (@IanLearmonthZA) June 8, 2015

    @nicrosslee issue 1 – the requesting of a final interdict, an interesting strategy to take #sandtondiscussion

    — john ndlovu (@john_moshe) June 8, 2015

    1. the judgment provides a fantastic insight the creative landscape particularly where and when copying may be justified. #sandtondiscussion

    — Brother Nic (@nicrosslee) June 8, 2015

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  • Is flouting the IP laws really a good innovation strategy?

    To what extent should a smart innovator strategically consider flouting IP? Based on a 2 May piece in The Economist, “Shedding the rules”, the answer proposed is maybe “yes”, especially when the innovation is based on the use of digital technology which itself is leveraged by network effects, where first mover advantage is critical. The poster child of the article is YouTube. Consider the description of the circumstances that led to the success of You Tube a decade ago.

    “When it launched in 2005, it was one of dozens of video sites competing for both content and viewers. Some, such as Google Video, diligently screened each video for copyright infringement. YouTube was more risk-taking, waiting for copyright owners to complain before taking down videos. The strategy worked …. [A]lthough [YouTube] got a start in life through people posting copyright-infringing clips, it now makes most of its living by sharing advertising revenue with people who post clips they have created themselves.”

    Still, the piece falls short of advocating straight-out disregard of IP:

    “[F]or more fragile firms, it would be better still if legislators and regulators responded to the emergence of so many innovative, law-testing businesses by revving themselves up to internet speed and adapting their rule book for the digital age.”

    I am not sure that I understand exactly what is meant by the notion of a “fragile” firm. One would like to think that innovative fragility is not simply a function of whether or not one is able to disregard the IP laws. This is especially so because, as The Economist must surely know, expecting the legislator to pivot at the same warp speed as an innovator is a pipe dream. As such, the argument put forth in the article seems to take us back to the proposition that a strategically shrewd innovator should have no qualms about disregarding the IP laws if they get in the way of the hoped-for disruptive innovation.

    Before you decide to cast all manner of respect for the IP laws into the trash bin as you establish your start-up, however, a word of caution. The conclusions reached by the piece might be deleteriously influenced by the phenomenon of “survivorship bias”. As defined by Wikipedia–

    “Survivorship bias, or survival bias, is the logical error of concentrating on the people or things that “survived” some process and inadvertently overlooking those that did not because of their lack of visibility. ….Survivorship bias can lead to overly optimistic beliefs because failures are ignored, such as when companies that no longer exist are excluded from analyses of financial performance. It can also lead to the false belief that the successes in a group have some special property, rather than just coincidence.”

    YouTube ignored potential copyright issues while Google Video did not. YouTube survived while Google Video did not. Ergo YouTube made the right strategic decision regarding its manner of adherence to the copyright laws. Yet YouTube did not really flout the copyright law, but merely played the odds against being caught and the likelihood that the offer of take-down would be a sufficient remedy when challenged by an unhappy copyright owner. But what does the YouTube story tell us about situations where “a take-down” –like strategy is not enough?

    Consider the three most notable sagas of this type in recent memory—Napster, Grokster and Aereo. Napster’s technology was struck down because of the role played by its central server system in enabling users to share files. Grokster failed before the U.S. Supreme Court despite the fact that its system was wholly distributed among its users; it was enough there was contributory infringement. Aereo’s use of multiple miniature antennae was ultimately found by the Supreme Court to be a violation of the copyright laws when it reversed the decision of the Second Circuit Court of Appeals.

    Unlike YouTube, none of these companies is still around. Unlike YouTube, the challenge posed by each of them was a zero-sum game; either what they did would be permitted under the copyright laws or it would not; if not, the enterprise in that form would be shut down. They were no more “fragile” than YouTube; they simply ended up on the wrong side of judicial understanding of the copyright law. The Economist’s survivorship bias would have us believe that YouTube succeeded because it flouted the copyright laws. This is not true–at the most, it merely delayed the need to comply with it. What the YouTube story really tells us is that an innovator should not take on the IP laws head-on. Otherwise, you will face the fate of Napster, Grokster and Aereo.

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  • アークシステムワークス、『くにおくん』や『ダブルドラゴン』など元テクノスジャパン関連の知的財産権を取得 – SocialGameInfo

    アークシステムワークス株式会社は、6月12日付で「『くにおくん』関連のタイトル事業に関してのお知らせ」と題するリリースを発表した。 その中で、「本日(6月12日)より、株式会社ミリオンが所持する「くにおくん」「ダブルドラゴン」を含む元テクノスジャパン関連のタイトル事業に …

    and more »

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  • Federal Circuit Says That Receiving Expert Testimony, Without More, Does Not … – Mondaq News Alerts (registration)

    Federal Circuit Says That Receiving Expert Testimony, Without More, Does Not
    Mondaq News Alerts (registration)
    After canvassing the intrinsic evidence, the Federal Circuit concluded that the “prosecution history, the structure of the claim itself, the ordinary meaning of the claim terms, including the Markush group limitations, and the patent’s description of

    and more »

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  • Samsung’s Korean patent shows tri-folding tablet design – SlashGear

    Samsung’s Korean patent shows tri-folding tablet design
    In this patent, the whole device is segmented into three parts, with the two outer panels folding in opposite directions. This way, one side of the folded contraption will have the camera facing outwards, while the opposite side will have the display
    Samsung’s Patent Shows A Tablet WIth A Foldable DisplayAndroid Headlines – Android News
    Samsung patents a three-sided foldable tabletTechnoBuffalo
    Samsung Patents Foldable TabletUbergizmo (blog)
    Techtree.com -Android Authority (blog)
    all 45 news articles »
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  • “Three aspects of information: Current issues in trade secrets, client confidentiality and privilege”: a report

    Three aspects of information: Current issues in trade secrets, client confidentiality and privilege”, CIPA-IPKat seminar, took place this Wednesday at the CIPA headquarters in Chancery Lane, in the heart of Charles Dickens’ legal London. The speakers were John Hull (consultant, Farrers), Gary Moss (EIP) and Ian Kirby (Carpmaels & Ransford), with IPKat blogmeister Jeremy in the chair, when he wasn’t out of it.  This note has been written by former guest Kat Rebecca Gulbul, who now works for CIPA as a spreader of cheerful smiles, though it is rumoured that she may have other duties. Here’s her report, with a few Kat-comments from Jeremy interspersed in bold red:

    John Hull opened the discussion with the topic of trade secrets. He spoke of the Trade Secrets Directive proposed by the European Commission in November 2013 and officially known as the Directive on the Protocol of Undisclosed Know How an Business Information (Trade Secrets) Against Unlawful Acquisition, Use and Disclosure. The proposed Directive, subsequently amended and considered by the Committee on Legal Affairs, now awaits the scrutiny of a Plenary Sitting on 8 September 2015.

    Does she need an
    owner, or a holder?

    John explained the changes that would take place. Member States would have to abide by a minimum standard. No new IP right would be created, which explains the new terminology of a trade secret ‘holder’ instead of ‘owner’. The two substantive requirements are that Member States must allow trade secret holders to apply to their national courts to remedy unlawful use or acquisition of their trade secrets and that the remedies and procedures of the national court be be “fair, equitable, economical and effective”. Articles 3 and 5, the main provisions of the Directive, deal respectively with unlawful acquisition, use and disclosure of trade secrets and Member States’ obligations to provide remedies. A limitation period for bringing a claim was initially proposed to last two years, but has now gone up to three.

    John then explained the various legal remedies available to an aggrieved trade secret holder: injunctions, recall of infringing products, destruction or delivery up and damages. Damages would depend on various factors, the amount being determined by criteria such as the amount of unfair profits made and the ‘moral prejudice’ (the meaning of which was questioned) caused [we might get some guidance from the Court of Justice of the European Union on this: Case C-99/15 Liffers, a reference from Spain, deals with the relationship between damage for moral prejudice and lump-sum compensatory damages awards. See Valentina’s Katnote here]. Breach of a trade secrecy obligation would remain a civil wrong, since the Directive does not cover criminal activity.  John concluded that an important area had been overlooked, that of trade secret misappropriation in relation to employees. It remains unclear where the boundary lies between an employer’s confidential business information and an employee’s know-how or skill and experience. A recent proposal may adopt an exemption based on “…knowledge, qualifications and skills gained by an employee in previous employment.”

    Gary Moss was next to address the packed audience.  He drew on his own experience, as a solicitor in a patent attorney practice whose conduct was effectively regulated by separate Codes of Practice of the Solicitors Regulatory Authority (SRA) for solicitors and IPReg for patent and trade mark attorneys. Speaking on the topic of client confidentiality and the duty of disclosure, he explained how confidentiality can arise under common law, from the nature of certain relationships or from the standards prescribed by professional bodies. He noted in particular Rule 8 of the IPReg Code of Conduct and Chapter 4 of the SRA Code of Conduct, which both deal with confidentiality and disclosure.

    Gary then discussed the circumstances in which clients could waive the obligation of confidentiality. For example, a solicitor may be asked to represent a client who has an opposite interest to his former client, about who he holds confidential information which is material to the new client. The situation in the USA where a firm cannot act against an existing client was contrasted with that in the UK, where the question asked would be whether the firm possessed information on one client which would have an effect on the way it conducted the case on behalf of the second client [from the Q&A session it transpired that in the US obligations relating to client conflict are dealt with on a state-by-state basis and may therefore differ in their application as between US law firms which also maintain offices in Europe, Asia and elsewhere]. Lastly, he discussed confidentiality in litigation and noted that the fact that some information was confidential was no basis to refuse its disclosure, in contrast to matters of legal privilege.

    This led to the final topic of the evening, when Ian Kirby tackled privilege and ‘without prejudice’ communications. Ian reviewed the main concepts of privilege in the UK, explaining how it arises in common law jurisdictions and balances the duty of disclosure. It gives parties the right to seek legal advice without having to disclose it to the other side or to the Court. The most encountered type is legal professional privilege, which applies only to confidential communications and belongs to the client, who can decide to waive it. He pointed out the statutory extensions of this privilege through s.280of the Copyright, Designs and Patent Act 1988 for patent attorneys and s.87of the Trade Mark Act 1994 for trade mark attorneys.

    Ian then discussed the term ‘without prejudice’ which, he said, was often misused. He clarified that the term applies only to statements made in a genuine attempt to reach a settlement in a dispute. A ‘without prejudice’ communication will not be put before the Court, though if it is marked “Without Prejudice save as to costs”, the court will only look at the documents in order to determine costs. Marking a document ‘without prejudice’ does not make it inadmissible in court unless it was communication sent in an attempt to settle a case. Similarly, even if not marked as such, some documents will still be ‘without prejudice’.

    Questions were then taken from the audience, one of which concerned the commencement of the limitation period where trade secrets had been disclosed — an act that is not always apparent to its holder at the point at which disclosure occurred. After discussion within the panel, it was concluded that the time would be when the trade secret holder became aware of the disclosure [it being a warm evening, the questions soon dried up, so the packed audience duly unpacked itself and adjourned to the adjacent room for some urgent rehydration in the form of liquid refreshments].

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