September 29, 2006

The 33rd (16th Extraordinary) Session of the WIPO General Assembly began this week in Geneva, Switzerland. This Session, running from September 25th to October 3rd, includes a session on patents ("Report on the Progress of the Standing Committee on the Law of Patents in Respect of the Draft Substantive Patent Law Treaty and Consideration of a New Work Plan for 2007") and trademarks ("Outcome of the Diplomatic Conference for the Adoption of a Revised Trademark Law Treaty"). The Session will also include discussions on "Matters Concerning the Advisory Committee on Enforcement," " Matters Concerning the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore," and "Matters Concerning Internet Domain Names." In addition, a "Report on the Provisional Committee on Proposals Related to a WIPO Development Agenda (PCDA)" and a "Proposal of the Kyrgyz Republic on Agenda Item 8 "Report of the Provisional Committee on Proposals Related to a WIPO Development Agenda (PCDA)"" will be presented, and a discussion regarding the "Protection of Audiovisual Performances" and the "Protection of Broadcasting Organizations" will also occur. The WIPO General Assembly meets on an annual basis in Geneva to discuss pertinent intellectual property issues, noting that several of the same topics are discussed each year as intellectual property practice evolves. The first link below includes links to all documents & reports available for the 33rd Session, and does appear to be updated over time.

WIPO 33rd Session Website: LINK
General WIPO "Conferences, Meetings, and Seminars" Website: LINK

September 28, 2006

It was recently announced that earlier this month, Debitman Card, Inc. obtained a U.S. patent on a “method and system for executing electronic funds transactions using a merchant based debit (MBD) card in a merchant-centric system that provides for reduced fees to acquiring merchants and remitting a portion of the collected fees to issuing merchants.” U.S. Patent No. 7,104,443, entitled “Method and system for facilitating electronic funds transactions,” issued on September 12th and includes 29 system and method claims for facilitating and executing electronic funds transactions. The patent references transaction fees charged by banks issuing credit and debit cards and how those fees may impact business profitability, and states that “a need exists for a point of purchase card-based electronic payment system which provides conventional features to consumers while reducing merchant processing costs and increasing the ability of merchants to access consumer transaction information for use in their own special incentive programs.” This patent, according to the USPTO registered assignee database, is the first patent issued and assigned to Debitman.

U.S. Patent No. 7,104,443: LINK
Yahoo! News Article: LINK
Debitman Card, Inc. Website: LINK

September 27, 2006

Last week, the Intellectual Property High Court in Japan decided that "Anne of Green Gables" is not eligible for trademark protection in that country as requested. According to the news article (link below), a film company in Canada attempted to register the mark in 2000 after producing a trilogy of movies based on the story. However, the government of Price Edward Island (the setting of the book) opposed the effort to register the commercial mark in Japan, stating that the integrity and overall image of "Anne of Green Gables" would be harmed if the registration were permitted. The Japanese Patent Office agreed with the government and nullified the registration, which was upheld on appeal. According to Judge Tsukahara, "Anne of Green Gables' is an important cultural asset of Canada that the country is proud of," and "[i]t would go against the international faith between Japan and Canada if a trademark registration that could impair the prestige borne by the protagonist and other characters is approved." A quick search of the USPTO database shows six applications for "Anne of Green Gables" in the United States, two of which are registered (both to the same owner). News Article: LINK
Japanese Patent Office Website: LINK

September 26, 2006

It was announced last week that Micrel Inc. (“Micrel”) and Monolithic Power Systems, Inc. (“Monolithic”) settled their dispute pertaining to two patents and trade secret information owned my Micrel. In November of 2004, Micrel filed suit against Monolithic, claiming that Monolithic was infringing on two of its patents, U.S. Patent No. 5,517,046, entitled “High voltage lateral DMOS device with enhanced drift region,” and U.S. Patent No. 5,556,796, entitled “Self-alignment technique for forming junction isolation and wells,” and that Monolithic had misappropriated its trade secrets regarding semiconductor design and manufacturing. Settlement of the lawsuit filed in the U.S. District Court for the Northern District of California, includes a license of the two patents from Micrel to Monolithic, a $3 million payment from Monolithic to Micrel, and an agreement to dismiss all outstanding claims and counterclaims in the dispute.

U.S. Patent No. 5,517,046: LINK
U.S. Patent No. 5,556,796: LINK
Electronics Supply & Manufacturing Article: LINK
Micrel Press Release: LINK
Monolithic Press Release: LINK

September 25, 2006

The USPTO recently announced that it will host a free 6 hour training session (with a one hour break for lunch) on Wednesday, December 6th, for version 3.3 of PatentIn. This particular course will review molecular biology, rules for sequencing, and review of various sequence listings from relatively easy to relatively complex. PatentIn is a computer program "designed to expedite the preparation of patent applications containing nucleic acid and amino acid sequences," generating sequence listings "that comply with all format requirements specified in the World Intellectual Property Organization (WIPO) Standard ST.25 and the related U.S. final rule, "Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Disclosures," 37 CFR §§1.821 - 1.825." Robert Wax, a Primary Examiner in Art Unit 1653, will instruct the course held at the main USPTO location. Space is limited so early registration is recommended, and according to the USPTO, if more than 16 people register, additional sessions will be scheduled to accommodate those who were not able to attend this session.

USPTO Training Announcement: LINK
USPTO Main PatentIn Webpage: LINK
USPTO PatentIn 3.3 Download & Instruction Webpage: LINK
Registration Information: By e-mail at or by phone at (571) 272-0623

September 22, 2006

As recently referenced by the Daily Dose of IP blog, the original band Supernova sued the three initial band members of the Rock Star: Supernova reality show band (Tommy Lee, Jason Newsted, and Gilby Clarke), as well as Mark Burnett Productions and others alleging trademark infringement, and on September 13th, the district court judge issued a preliminary injunction prohibiting the newly formed band (with lead singer Lukas Rossi) from using the name “Supernova.” However, it was announced yesterday that the parties have settled their dispute, and as part of the settlement the newly formed band will be known as “Rock Star Supernova.” Other terms of the settlement have not been made public. Article: LINK
Initial DDIP Supernova Article: LINK
Washington Post News Article: LINK
Rock Star Supernova Website: LINK

September 21, 2006

On September 27-28, 2006, the USPTO will be presenting its "China's Impact on Intellectual Property: Protecting Your Intellectual Property in China and the Global Marketplace," focusing on companies of all sizes looking to market and manufacture their products overseas with a particular emphasis on China. This event will be held in Boston, MA, at the Omni Parker House hotel. According to the conference website, the topics to be discussed include "China's laws and regulations that may affect how a business protects and enforces its intellectual property, how best to protect business assets to avoid intellectual property problems in the first place, how to recognize when an intellectual property asset has been infringed, what to do if infringement occurs, and what the U.S. government is doing to improve the intellectual property protection and enforcement environment in China." Similar to the other recent USPTO global IP conferences, this event is free, but prior registration is required.

USPTO Conference Announcement: LINK
Main Conference Website: LINK
Conference Agenda: LINK
Omni Parker House Hotel Website: LINK

September 20, 2006

According to a recently published patent application, engineers at Warner have developed a single DVD disc containing three different laser disc standards. U.S. Patent Application Publication No. 20060179448, entitled "Multilayer dual optical disk," was published last month and includes 22 claims for a multi-format optical disc and "a player for playing an optical disc with multiple data layers." The first claim of the patent claims a disc comprising "a substrate; a first data layer disposed on said substrate, said first data layer conforming to a first protocol; a second data layer supported on said substrate, said second data layer conforming to a second protocol; and a transparent protective layer disposed on top of said first and second layers." Although several formats are disclosed in the application, according to the NewScientistTech article (link below), Warner will be releasing a movie, Lake House, later this month in three different formats on one disc. On one side of the disc, the movie in Blu-ray format will exist (which is read 0.1mm deep) on top of the movie in HD-DVD format, which is read at 0.6mm deep. On the other side of the disc, the movie will exist in standard DVD format. According to the patent application, "as discs with higher capacities are being phased in, content will have to be distributed on as many as three different kinds of discs: standard DVD discs, and two types of high-capacity discs. As noted, this is undesirable for several reasons." (Thanks, Cam, for bringing this to my attention.)

U.S. Patent Application Publication No. 20060179448: LINK
NewScientistTech Article: LINK
CNET News Article: LINK

September 19, 2006

On Friday, the USPTO released its newest revision to its fee schedule (effective September 15, 2006), available at the link below. The only changes as pertaining to patents relates to the “PCT Fees to Foreign Offices” section, where the international filing fee (first 30 pages) for PCT Easy fell $15 to $1,008, and the non-PCT Easy fell $16 to $1,086. The international search (EPO) fee increased $182 to $2,059, while the handling fee fell $2 to $155. The disclaimer on this section of the fee schedule remains, in that “PCT Fees to Foreign Offices subject to periodic change due to fluctuations in exchange rate. Refer to the Official Gazette of the United States Patent and Trademark Office for current amounts.” On the trademark side, one notable change is that the application for registration (per international class) paper filing fee increased $40 to $375.

New USPTO Fee Schedule: LINK

September 18, 2006

The USPTO released its most recent revision (5th Revision) to the MPEP last week, primarily modifying Chapter 2300 but also revision some additional sections to the Manual. According to the Blue Pages for the 5th Revision on the USPTO website, “[t]his revision consists of replacement pages for the Title Page in the front of the Manual, entire Chapters 100 – 900, 1100, 1300, 1500, 1700, 1800, 2100, 2200, 2500 and 2600, Appendices II – List of Decisions Cited, R – Patent Rules, T – Patent Cooperation Treaty, and AI – Administrative Instructions Under the PCT, and entire Index.” The Blue Pages further note that this newest revision was based in part on the following final rules: “(1) “Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004,” which became effective on September 14, 2005; (2) “Provisions for Claiming the Benefit of a Provisional Application With a Non-English Specification and Other Miscellaneous Matters,” which became effective on November 25, 2005; (3) Changes To Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005,” which became effective on March 10, 2006; and (4) “Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings,” which became effective on March 27, 2006.” The link below contains PDFs of each Chapter of both the 4th and 5th Revisions, as well as the 4th Revision in HTML format.

MPEP Blue Pages (8th Edition, 5th Revision): LINK
MPEP Blue Pages (8th Edition, 4th Revision): LINK

September 15, 2006

In an order handed down earlier this week by Judge John A. Houston, the rock band formed by the reality show "Rock Star: Supernova" is preliminarily prohibited from performing, recording, or selling music under the name "Supernova." The preliminary injunction is a result of a lawsuit filed in the U.S. District Court for the Southern District of California by the band Supernova, formed in 1989 and best known for the song "Chewbacca" from the movie Clerks. The new band, who at the time of writing this post has not publicly announced its new name, comprises the winner of the reality show competition (Lukas Rossi), the former bassist for Metallica (Jason Newsted), a former Guns 'N Roses guitarist (Gilby Clarke), and Tommy Lee, the former drummer for Motley Crue. According to the Washington Post article (link below), the preliminary injunction "bars anyone but that [original] group's three members -- Jodey Lawrence, Art Mitchell and David Collins -- from performing, recording or selling rock music under the Supernova moniker pending the outcome of the suit." Around the time of the filing of several trademarks on the marks "SUPERNOVA" and "ROCK STAR: SUPERNOVA," David Collins applied for the word mark "SUPERNOVA" (U.S. Trademark Application Serial No. 78842164) for ICs 009 and 041, claiming a first use (for IC 041) of August 15, 1991, and a first use in commerce on January 6, 1993. A hearing is scheduled for today to discuss the next stages of the lawsuit.

U.S. Trademark Application Serial No. 78842164: LINK
Washington Post Article: LINK
USA Today Article: LINK
Supernova (original band) Website: LINK
Rock Star: Supernova Website: LINK

September 14, 2006

As part of a recent settlement agreement, Sean Combs, known to many as Puff Daddy, Puffy, P. Diddy, and most recently, Diddy, will no longer be known as Diddy in the UK. Richard "Diddy" Dearlove, a British musician, filed suit against Combs, claiming confusion stemming from Combs's use of the name Diddy. Combs will no longer use the name Diddy in the UK, choosing to drop the name and pay Dearlove's legal costs to settle the matter. According to the Long Island Press article (link below), Dearlove started receiving e-mails from women regarding clothing lines and music videos, noting that Combs has produced several music videos and is the owner of the Sean John clothing line. According to Chart Attack (link below), Combs settled for £110,000 (approximately $230,000), avoiding an October 23 court date before the Royal Courts Of Justice in London. Combs has filed for and owns several registered U.S. trademarks, including an application for the mark "DIDDY" (Serial No. 78690920) for 12 different international classes, including but not limited to classes for fragrances, musical sound recordings, wheel rims for vehicles, jewelry and watches, posters, clothing, and live musical performances.

U.S. Trademark Application Serial No. 78690920: LINK
Long Island Press Article: LINK
Chart Attack News Article: LINK
Yahoo! News Article: LINK
Sean "Diddy" Combs's Website: LINK
Richard "Diddy" Dearlove's Website: LINK

September 13, 2006

Earlier this month, the World Intellectual Property Organization (WIPO) through the WIPO Worldwide Academy, launched its most recent session for students enrolled in its Intellectual Property Master of Laws (LLM) program. This year nearly 40 students are enrolled in the program offered along with the University of Turin and the International Labour Organisation, International Training Center (ILO-ITC), with approximately half of the students receiving scholarship assistance. This program, beginning in 2000, has taught over 150 students skills helpful to practice intellectual property law and to educate new IP practitioners. As the students are enrolled from across the world, the program comprises mostly distance-learning along with thesis preparation, and also includes a week-long program in Turin, Italy. Information regarding the curriculum and syllabus, lecturers, and fees for the program are all available on the LLM program website link below.

WIPO News Release: LINK
WIPO Worldwide Academy Website: LINK
IP LLM Program Website: LINK

September 12, 2006

In a U.S. patent application published last week, a technology developed by Stephen P. Hotelling (an inventor at Apple Computer, Inc.) was disclosed, potentially revealing details regarding a new Apple cell phone. U.S. Patent Application Publication No. 20060197753, entitled “Multi-functional hand-held device,” was published on September 7th and includes 22 claims on a hand-held electronic device and 1 method claim for a method performed in a computing device. The first claim of the application claims a hand-held electronic device which comprises a multi-touch input surface with a processing unit that is “capable of receiving a plurality of concurrent touch inputs from a user via said multi-touch input surface and discriminating a user requested action from the touch inputs,” along with a display device that is “configured to present a user interface.” The second claim is for a device as described in the first claim that includes two or more of the following functionalities – “PDA, mobile phone, music player, camera, video player, game player, handtop, Internet terminal, GPS receiver, and remote control.” Fig. 10A of the application shows a telephone of the present invention. This application claims the benefit of two earlier-filed provisional applications, and is related to nine other utility applications, many of which are assigned to Apple Computer, Inc. Although there does not appear to be any specific mention of an Apple cell phone on Apple’s website, a number of articles (including one from as referenced below) reveal that an Apple cell phone may become a reality in 2007.

U.S. Patent Application Publication No. 20060197753: LINK Article: LINK
MacWorld Daily News Article: LINK
Apple Computer, Inc., “Hot News” Website: LINK

September 11, 2006

As of Monday, September 11, 2006, the Daily Dose of IP (DDIP) Free Resource Page is now available for your use and convenience. This resource page currently contains keyword searches, targeted browsing, and direct external links to free court opinions, patent references, trademark references, and intellectual property statutory provisions. If you know of another valuable free resource that you feel should appear on the DDIP Free Resource Page, please e-mail me and I will review your suggestion and will add your reference as appropriate. Thank you for visiting the DDIP Free Resource Page!

September 08, 2006

In a patent application published last week, Microsoft Corporation's new verb-conjugation technology was revealed to the public. U.S. Patent Application Publication No. 2006/0195313, entitled "Method and system for selecting and conjugating a verb," was published on August 31, 2006 and includes 20 claims on computer-readable media and methods in a computer system for conjugating a verb. The first method claim for conjugating verbs in a target language comprises "receiving a verb in a base language; identifying verb forms in the target language using a translation of the received verb from the base language to the target language; and displaying the identified verb forms in the target language." According to the patent application, prior art software tools may not identify all of the forms, tenses, and moods of a verb (for example, only the infinitive form of the verb may appear), and that "[i]t would be desirable to have a technique for overcoming these and other limitations of existing software tools for conjugating verbs." According to the InfoWorld article (link below), details regarding how this technology may be incorporated into one or more of Microsoft's product lines have not been disclosed.

U.S. Patent Application Publication No. 2006/0195313: LINK
InfoWorld Article: LINK

September 07, 2006

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). This posting covers the seventy-sixth through the eightieth IP cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

Gemmy Industries Corp. v. Chrisha Creations Limited, et al. (06/22/2006): on-sale bar under 35 U.S.C. § 102(b), presumption of validity, invalidity based on on-sale bar, contradicting earlier sworn testimony, product claimed in patent and product offered for sale, no offer for sale if key terms are absent

Honeywell International, Inc., et al. v. ITT Industries, Inc., et al. (06/22/2006): specification as guidance to meaning of terms during claim construction, identification of the patentable subject matter ("this invention relates to," and "according to the present invention" specification language), arguments made during prosecution versus disclosures within the specification, specification disclaiming subject matter and its impact on doctrine of equivalents

Abbott Laboratories v. Andrx Pharmaceuticals, Inc., et al. (06/22/2006): preliminary and permanent injunctions (and abuse of discretion), claim construction preceding obviousness determination, guidance to claim term meaning during claim construction, standards for determining obviousness, enablement requirement, motivation to combine prior art references, unexpected results as evidence of nonobviousness, irreparable harm

AGFA Corp. v. CREO Products, Inc., et al. (06/26/2006): inequitable conduct bench trial separate from infringement jury trial, right to a jury trial, materiality of prior art, writ of scire facias, history of 18th century English patent law, use of general purpose dictionaries during claim construction, presumption that independent claims do not include the limitations of dependent claims, inequitable conduct and materiality of evidence, undisclosed prior art, intent to mislead, impact of inequitable conduct to related applications, balancing of materiality and intent, exceptional cases and award of attorneys' fees

NPF, Ltd. v. Smart Parts, Inc. (06/27/2006, non-precedential): review of judgment as a matter of law, claim construction preceding obviousness determination, Graham factors for determining obviousness, combination of prior art references, overcoming obviousness by commercial success

September 06, 2006

It was recently announced that Ardana plc obtained a U.S. patent on Teverelix LA, a specific GnRH antagonist. U.S. Patent No. 7,098,305, entitled "Sustained release of microcrystalline peptide suspensions," issued on August 29, 2006, and includes 14 claims on suspensions and methods for preparing suspensions of hydrophobic peptides. The first claim is for a suspension of Ac-D-Nal-D-Cpa-D-Pal-Ser-Tyr-D-Hci-Leu-Ilys-Pro-D-Ala-NH2 trifluoroacetate and an isotonic agent, which may be prepared by the method of claim 9 which associates the aforementioned peptide with trifluoroacetate counter-ion "in an amount and at a molar ratio that are sufficient to provide a fluid, milky microcrystalline aqueous suspension without formation of a gel." According to the patent, traditional peptide formulations have specific drawbacks and limitations, such as "the large volume of suspending fluids or the need to remove the non-degradable device," and specifically regarding gel forming peptides, "there is frequently a problem of bioavailability, which interferes with the desired sustained action of the active principle." According to Ardana's website, Teverelix LA is currently in Phase IIa clinical trials for prostate cancer and benign prostatic hyperplasia (BPH), and is in Phase I to treat endometriosis and fibroids.

U.S. Patent No. 7,098,305: LINK
ag-IP-news Article: LINK
Ardana plc Press Release: LINK

September 05, 2006

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). This posting covers the seventy-first through the seventy-fifth IP cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

Motionless Keyboard Co., et al. v. Microsoft Corp., et al. (06/08/2006, non-precedential): inventor motion to intervene, pro se appearance, requirement of corporation to be represented by licensed counsel in federal court

Panduit Corp. v. Hellermanntyton Corp. (06/12/2006): state law interpretation of contract (settlement agreement), claim construction and infringement appellate standards of review, doctrine of equivalents interpretation of infringement, all elements rule, claim vitiation

Primos, Inc. v. Hunter's Specialties, Inc., et al. (06/14/2006): prosecution history estoppel of doctrine of equivalents arguments, denial of JMOL, ordinary meaning of claim terms for claim construction purposes, not interpreting claim terms to exclude a preferred embodiment, doctrine of equivalents, claim vitiation, all elements rule, totality of the circumstances regarding equivalents and insubstantial changes, exclusion of evidence and prejudicial surprise, adverse-inference jury instruction (legally erroneous and prejudicial effect)

Competitive Techs. v. Fujitsu Ltd. (06/15/2006, non-precedential): intrinsic evidence of record for determining meaning of claim limitation, infringement under doctrine of equivalents, citing evidence within a motion to strike, claim invalidity if not amenable to construction or insolubly ambiguous

Bennett Regulator Guards, Inc. v. Canadian Meter Company, Inc., et al. (06/19/2006, non-precedential): summary judgment on invalidity appellate standard of review, clear and convincing standard of persuasion for claim challenges, anticipation for reasons of public use and public knowledge, dissent regarding publicly available information

September 01, 2006

It was announced on Wednesday that Stream Theory, Inc. obtained a patent on its streaming software technology. U.S. Patent No. 7,096,253, entitled “Method and Apparatus for Streaming Software,” issued on August 22, 2006, and includes 46 claims related to systems and methods “for allowing a remotely-located computer program or data to be accessed on a local computer in such a way as to severely limit the possibility of said program or data being indiscriminately copied and propagated, plus providing time limits on the access to said program or data.” The first claim in the patent is for a system comprising a processor and memory with modules stored therein, with the modules including “a target process associated with a streaming target program; a network file system driver for facilitating access for an agent procedure to software-on-demand file resources associated with the streaming target program … and a subset of the software-on-demand file resources associated with the streaming target program, including at least one executable file resource.” The processor “generates the agent procedure to demand a software-on-demand file resource associated with the target program from the remote software-on-demand file server using the network file system driver,” and also “executes the at least one executable file resource to run the target process, and wherein the agent procedure uses data to uniquely identify the software-on-demand file resource.” According to the patent, this invention adds to traditional network file system capabilities by providing a “fine-grain, process-specific access control, time-limited access, and a persistent caching scheme.”

U.S. Patent No. 7,096,253: LINK
Market Wire Press Release: LINK
Stream Theory Website: LINK

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Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

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The DDIP Author

Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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