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Wolters Kluwer

IP Law Daily

January 17, 2017

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LAW FIRMS

·        Blank Rome, LLP

·        Cozen O'Connor

·        Cravath, Swaine & Moore LLP

·        DeCaro Doran Siciliano Gallagher & DeBlasis LLP

·        DurretteCrump PLC

·        Gerard Fox Law PC

·        Hodgson Russ, LLP

·        Jeffer Mangels Butler & Mitchell LLP

·        Kirkland & Ellis LLP

·        Morgan Lewis & Bockius LLP

·        Potter Anderson & Corroon, LLP

·        Stalwart Law Group

·        Sughrue Mion PLLC

·        Tensegrity Law Group, LLP

·        Wawrzyn & Jarvis LLC

·        Williams Mullen

COMPANIES

·        Acta Medical, LLC

·        Amgen Inc.

·        Amgen Manufacturing Limited

TOP STORY

TOP STORY—Fed. Cir.: Invalidity, non-infringement rulings vacated for three Wi-LAN patents

By Mark Engstrom, J.D.

A federal district court erred in granting summary judgment of non-infringement for two Wi-LAN wireless patents and summary judgment of invalidity for one Wi-LAN wireless patent, the U.S. Court of Appeals for the Federal Circuit has ruled. Because genuine disputes of material fact remained, both rulings were vacated and the case was remanded for further proceedings. Circuit Judge Kathleen O’Malley dissented, in part (Wi-LAN USA, Inc. v. Ericsson, Inc., January 17, 2017, Wallach, E.).

Lawsuit. Wi-LAN USA Inc. and Wi-LAN Inc. (collectively, "Wi-LAN") sued Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively, "Ericsson") for the infringement of U.S. Patent No. 8,229,437 ("Pre-Allocated Random Access Identifiers) and U.S. Patent Nos. 8,027,298 and 8,249,014 (both titled "Methods and Systems for Transmission of Multiple Modulated Signals Over Wireless Networks"). The court referred to the latter patents as the "Bandwidth Patents."

The district court found, on summary judgment, that: (1) claims 8 and 18 of the ’437 patent were invalid as anticipated and (2) Ericsson’s accused products did not directly infringe the Bandwidth Patents. The district court also found that a Most-Favored Licensee Provision ("MFL Provision") did not apply to any of the three patents in suit. Wi-LAN appealed the grant of summary judgment of invalidity and non-infringement, and Ericsson cross-appealed the finding that the MFL Provision did not apply to the patents in suit.

Patents in suit. The ’437 patent disclosed systems and methods of "pre-allocating identifiers to wireless devices for use in requesting resources over a random access channel." The patent provided a method for transitioning a cell phone from the coverage area of one base station to the coverage area of another base station. The Bandwidth Patents disclosed a method and apparatus for "requesting and allocating bandwidth in a broadband wireless communication system," whereby "a combination of bandwidth allocation techniques" were used to efficiently allocate physical resources.

Anticipation. Prior art "Mouly" ("The GSM System for Mobile Communications") disclosed the GSM standard for cellular communications. Mouly explained how a "timing advance" was applied to communications between a mobile device and cell towers. The timing advance addressed the overall time that it took for data bursts to travel from the mobile device to the cell tower; it included an offset that was not dependent on the user’s location and a offset that depended on the user’s location.

The timing-advance issue incorporated both synchronous and asynchronous handovers, and both types of handovers involved several processes of transmitting an 8-bit message from the new cell tower, the old cell tower, and the mobile station.

According to the Federal Circuit, the district court made two errors in its analysis, and both errors involved the use of improper evidence at the summary judgment stage. First, the district court weighed the evidence that was presented by Ericsson’s expert (Mark Lanning) and Wi-LAN’s expert (Paul Min) against the disclosures of Mouly, and drew inferences from those facts. However, when ruling on a motion for summary judgment in a jury trial, credibility determinations, the weighing of evidence, and the drawing of legitimate inferences from the facts were all functions of the jury, not functions of the judge.

Second, the district court cited unsupported statements by Ericsson’s counsel in support of its conclusion that the record did not show that the "RIL3-RR HANDOVER ACCESS message" used short-access bursts on a dedicated channel for asynchronous handovers. Because those statements constituted attorney argument, not record evidence, relying on them was improper.

The Federal Circuit also found that a genuine dispute remained about what Mouly disclosed. According to the court, Mouly was ambiguous in its explanation of whether access bursts in synchronous and asynchronous handovers occurred on a random access channel (RACH). Ultimately, Mouly’s statements were "at least highly ambiguous" with respect to the question of whether synchronous or asynchronous handover messages occurred on a dedicated channel or a RACH. In addition, the parties’ experts showed that a dispute was present with respect to the correct interpretation, and that type of ambiguity was best resolved by the factfinder.

Because the district court should not have found that a dispute of material fact was lacking, summary judgment of invalidity was improper. The summary judgment ruling was therefore vacated and the matter was remanded for further proceedings.

Non-infringement. After finding that the district court had properly construed "bandwidth" to mean "data transmission resources in a particular time period," the Federal Circuit addressed the district court’s erroneous finding that the defendants did not infringe the Bandwidth Patents.

The district court found that Wi-LAN did not identify a genuine issue of material fact regarding direct infringement, and thus concluded that Ericsson’s accused products did not infringe the Bandwidth Patents. The court erred, however, because it improperly ignored conflicting evidence and placed a greater weight on Ericsson’s evidence. The Federal Circuit thus vacated the grant of summary judgment of non-infringement and remanded the matter for further proceedings.

Ericsson’s cross-appeal. Ericsson challenged the district court’s finding that the MFL Provision of the parties’ Patent and Conflict Resolution Agreement (PCRA) did not apply to the patents in suit, but the Federal Circuit found that the Provision was inapplicable. Although the circuit court agreed with the district court’s conclusion that Ericsson was not entitled to a "most favored licensee" status with respect to the patents in suit, it reached that conclusion in a different way. In the Federal Circuit’s view, Ericsson was entitled to a most favored licensee status only for the patent or patents that had triggered the MFL provision (i.e., U.S. Patent No. 6,549,759, which Wi-LAN had asserted against unrelated third-party products).

Reading the relevant provision of the PCRA in its entirety, the Federal Circuit concluded that the scope of the license would cover the patent or patents that were asserted by Wi-LAN against Ericsson for infringement; therefore, its scope was limited to pre-PCRA patents such as the ’759 patent. Reading the scope of the provision to apply to any post-PCRA patent would result in an unreasonable interpretation of the MFL Provision as a whole, the court decided.

Ultimately, the Federal Circuit ruled that "once the MFL Provision [wa]s triggered, the scope of that license [wa]s limited to the patent that triggered the MFL Provision." Because the patents in suit were excluded by that analysis, the circuit court ruled that the district court had not erred in finding that the MFL Provision did not apply to the patents in suit.

Dissent. Circuit Judge Kathleen O’Malley wrote separately to dissent, in part. Judge O’Malley disagreed with two of the majority’s conclusions: (1) that the district court had erred in granting summary judgment of invalidity on the asserted claims of the ’437 patent and (2) that the MFL Provision of the PCRA, once triggered, was limited to the patent or patents that triggered that Provision.

The case is Nos. 2015-1766 and 2015-1794.

Attorneys: Matthew D. Powers (Tensegrity Law Group, LLP) for Wi-LAN USA Inc. and Wi-LAN Inc. Paul D. Clement (Kirkland & Ellis LLP) for Ericsson Inc. and Telefonaktiebolaget LM Ericsson.

Companies: Wi-LAN USA Inc.; Wi-LAN Inc.; Ericsson Inc. and Telefonaktiebolaget LM Ericsson

MainStory: TopStory Patent TechnologyInternet FedCirNews

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CASES

PATENT—D. N.J.: Curlin granted injunction to stop infringing sales of tubing sets

By Peter Reap, J.D., LL.M.

Curlin Medical was entitled to a preliminary injunction enjoining competitor Acta Medical from making and selling its "IV Administration Infusion Pump Sets" or other products that infringe on Curlin’s asserted two patent, the federal district court in Newark has determined. Curlin succeeded in demonstrating a likelihood of success on the merits in proving that Acta infringed certain claims of one of the asserted patents and it was likely to suffer the irreparable harm of price erosion if an injunction did not issue (Curlin Medical Inc. v. Acta Medical, LLC, January 13, 2017, Chesler, S.).

Curlin owns U.S. Patent Nos. 6,164,921 (the "’921 patent") and 6,371,732 (the "’732 patent"), directed to, among other things, a tubing set for use with an infusion pump. Acta manufactures and sells the "IV Administration Infusion Pump Set" (the "IVA Set.") In May of 2016, Curlin filed a complaint alleging patent infringement and, shortly thereafter, a motion for a preliminary injunction.

Likelihood of success on the merits. Curlin contended that the IVA Set literally infringes claims 15-34 of the ’921 patent and claims 1-3 of the ’732 patent. Acta, in opposition, made two inequitable conduct arguments: (1) Curlin "sought to deceive the PTO about the circumstances surrounding the payment of the small entity maintenance fee so that they PTO would accept their late payment and thereby restore the ’732 patent;" and (2) Curlin "sought to deceive the PTO about the facts and circumstances surrounding the erroneous payment of the small entity amount for the maintenance fee so that they PTO would accept their late payment and thereby restore the ’921 patent and the ’732 patent."

On this record, there was no evidentiary basis to conclude that Acta raised a substantial question about unenforceability due to inequitable conduct, the court decided. At this juncture, Acta has deposed none of the relevant people involved, and there was nothing in the present record from which it could be inferred that Curlin acted with a specific intent to deceive the USPTO, much less that the evidence supported a finding of such by clear and convincing evidence. Nor was there anything in the record to support a finding that the omitted information was material.

The only factual allegation Acta made in support of its inequitable conduct arguments was that an internal note was found stating that the ’732 patent no longer qualifies for small entity status. The court had no information on who wrote this note, who saw it, when it was written, or anything else. This factual allegation was insufficient to raise a substantial question of inequitable conduct, the court explained.

Acta argued as well that Curlin could not prove infringement. As to the ’732 patent, Acta argued that the IVA Set does not contain each and every limitation of any of claims 1-3. Specifically, Acta pointed to this limitation in independent claim 1: "at least one tubing sensor disposed in a housing of the pump."

There was no dispute that the IVA Set does not contain this element, the court noted. At oral argument, the court asked Curlin how, then, Acta met this limitation. Curlin answered that, at sales demonstrations, Acta representatives placed the IVA Set into a pump unit manufactured by Curlin, thus using it in a way that meets every element of one or more claims in the ’732 patent and so infringes. While this was conceivably true, the briefs did not argue this and so they did not point to evidence supporting it, nor did counsel point to evidence of record at the hearing. Attorney argument was not sufficient to support a finding that Curlin was likely to succeed in proving that Acta infringes the ’732 patent by its acts at sales demonstrations, the court explained.

Acta next argued that the IVA Sets do not contain a positionable locating member, as required by some of the claims, because the corresponding element of their set is in a fixed position, and may not be repositioned. This claim term appears only in independent claims 22, 26, and 30 in the ’921 patent; it does not appear in claims 15-21, the court observed. Because of this fact, the court did not need to reach this dispute, because there was a likelihood of success in proving infringement of at least one claim in the group of claims 15-21, the court said.

Similarly, Acta argued that the IVA Sets do not contain "a length of straight line, resilient tubing." Again, the court did not need to reach this issue, because this claim term appears only in independent claims 22, 26, and 30 in the ’921 patent; it does not appear in claims 15-21.

Acta also argued that the IVA sets do not contain "a length of resilient tubing," which is a limitation in claims 15-21, because the court should import a further claim limitation from a preferred embodiment in the specification. Acta contended that this operates as a disclaimer of claim scope, limiting all claims to tubing sets constructed from continuous, unsegmented PVC tubing. This was not persuasive, the court held. Not one of the claims in the ’921 patent contains the word "continuous." Furthermore, in asking the court to import a limitation from the specification, Acta was following a path well-worn by patent challengers, and Federal Circuit law disfavored this path, the court concluded.

Acta next argued that the IVA Sets do not include the following element in claims 21 and 34: "a single pinch arm . . . being movable between an open position whereat the tubing passing through the valve body is not compressed by the pinch arm." Acta’s argument on this point did not raise a substantial question of the infringement of claims 21 and 34.

As to claims 15-20 in the ’921 patent, then, Acta’s only defense to infringement was the argument that the court should import the "continuous PVC" limitation from the specification as a claim limitation. There was no basis to conclude that Acta met the high bar set by the Federal Circuit, that the patentees made a "clear and unmistakable disclaimer," the court held. Thus, as to claims 15-21, Acta made no substantial challenges to Curlin’s infringement case, and thus Curlin showed a likelihood of success on the merits in proving that Acta infringed claims 15-21 of the ’921 patent.

Irreparable harm. Curlin showed that it was likely to suffer irreparable harm in the absence of preliminary relief, due to price erosion, the court reasoned. There was no dispute that Acta has sold its product to customers who would have otherwise purchased Curlin’s tubing set, and that Acta sells its product at a substantial discount.

Balance of hardships. Curlin made a strong showing of a likelihood of success on the merits, and the risk that the grant of a preliminary injunction will later be found to have been in error appeared small. Because there was a strong likelihood that Curlin will be irreparably injured were the injunction denied in error, and a weak likelihood that Acta will be harmed were the injunction granted in error, the balance of hardships weighed in Curlin’s favor.

Public interest. Here, both parties argued that the other’s product is potentially unsafe due to quality control issues, and that it is in the public interest to protect people from unsafe medical products. Neither party made a stronger case in support of this argument, and the public interest factor was neutral, the court held.

The case is No. 2:16-cv-02464-SRC-CLW.

Attorneys: Neil B. Friedman (Hodgson Russ, LLP) for Curlin Medical Inc., Zevex, Inc. and Moog Inc. Ryan Patrick Blaney (Cozen O'Connor) for Acta Medical, LLC.

Companies: Curlin Medical Inc.; Zevex, Inc.; Moog Inc.; Acta Medical, LLC

Cases: Patent NewJerseyNews

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PATENT—E.D. Va.: Zup’s patent for water recreational device invalid as obvious

By Peter Reap, J.D., LL.M.

A patent for a water recreational device—a floating board with handles intended to allow any kind of rider regardless of athleticism to achieve a full standing and riding position—asserted by Zup against its competitor Nash Manufacturing, was invalid as obvious in light of the prior art, the federal district court in Richmond has decided. Alternatively, Nash did not contributorily infringe Claim 9 of Zup’s asserted patent, nor did it induce others to do so. Zup’s claims for misappropriation of trade secrets and breach of contract were also without merit and dismissed (Zup, LLC v. Nash Manufacturing, Inc., January 13, 2017, Hudson, H.).

ZUP entered the market in 2012 with the introduction of its "ZUP Board," an invention claimed in U.S. Patent No. 8,292,681 (the "’681 Patent"). Soon thereafter, Nash brought its "Versa Board" to market.

In response to Nash's new product, ZUP filed the present suit alleging four counts: contributory infringement of the ’681 Patent (Count I); inducement of infringement of the ’681 Patent (Count II); trade secret misappropriation (Count III); and breach of contract (Count IV). Nash brought two counterclaims against ZUP, seeking declaratory relief regarding non-infringement (Counterclaim I) and declaratory relief regarding invalidity of the apparatus and method claims—Claims 1 and 9 respectively—of the ’681 Patent (Counterclaim II). Before the court was Nash’s motion for summary judgment.

Obviousness. The central elements of Claims 1 and 9 of the ’681 Patent are: (1) a riding board with a top and bottom surface; (2) a tow hook dispensed on the front section of the board; (3) a plurality of rails protruding from the bottom surface of the riding board; (4) side-by-side handles disposed on the front section of the board; (5) side-by-side foot bindings disposed on the middle section of the board; and (6) the simultaneous use of the handles and foot bindings to achieve a standing position on the board.

By clear and convincing evidence, Claim 1 of the ’681 Patent would have been obvious to an ordinary person skilled in the art over the Clark Patent in view of the Parten ’000 Patent, the Parten ’872 Patent, the Fleischman Patent, the Stewart Patent, and the Fryar Patent, the court determined. Further, Claim 9 of the ’681 Patent, by clear and convincing evidence, would have been obvious to an ordinary person skilled in the art over the Clark Patent in view of the Parten ’000 Patent, the Stewart Patent, and the Monreal Patent.

The Clark Patent teaches all of the components of the apparatus Claim absent side-by-side foot bindings, and a plurality of rails protruding from the bottom surface of the riding board, the court found. The Parten ’000 Patent discloses side-by-side foot bindings disposed in the middle section of the top surface of the board, similar to the ones described in Claim 1. The Parten ’872 Patent teaches a retractable tow hook displaced on the front section of the board that is nearly identical to the one used on the ZUP Board. Moreover, the Fleischmann Patent teaches the use of side-by-side handles disposed on the front section of a water recreation device, and the Stewart Patent shows the use of side-by-side "grips", the functional equivalent of handles, on the front section of a board to aid in rider stability. Finally, the Fryar Patent discloses a plurality of rails protruding from the bottom of the board that are disposed relative to the longitudinal axis, like those on the ZUP Board.

As for the method claim, the Clark Patent discloses the claimed method of engaging a water recreation device with the exception of using side-by-side foot bindings, the court explained. The Parten ’000 Patent teaches the use of side-by-side foot bindings and expressly anticipates riders moving between a prone, a kneeling, and a standing position while using the product. Moreover, the Stewart Patent shows the use of side-by-side "grips." And the Monreal Patent discloses similar foot bindings.

It was evident that Glen Duff, ZUP's Chief Innovative Officer and the inventor of the ’681 Patent, identified known elements in the prior art that aided in rider stability while engaging a water recreational device and simply combined them in one apparatus and method, the court reasoned. The elements in Claim 1 and 9 are used for the exact same purpose as they were in the prior art and, as expected, lead to the anticipated success of assisting riders in reaching a standing position. Additionally, one of ordinary skill in the art would have been motivated in 2008 to combine these elements in order to aid in rider stability. Thus, there was strong evidence that Claims 1 and 9 are obvious, the court held.

Secondary considerations. ZUP offered three secondary considerations for the court to consider: (1) that the ZUP Board satisfied a long-felt but unresolved need in the water recreation industry; (2) that Nash copied the ZUP Board; and (3) that the ZUP Board has experienced commercial success. All were without merit, the court concluded.

ZUP provided no evidence apart from conclusory statements made by its expert that any long-felt but unresolved need existed in the industry. There was no evidence that Nash copied the ZUP Board. Further, ZUP failed to make a showing of a nexus between its alleged commercial success and the supposedly novel features contained in the ’681 Patent. ZUP's evidence of commercial success was insufficient to overcome a finding of obviousness. Therefore, Nash’s motion for summary judgment as it pertained to Counterclaim II was granted, which rendered Counts I and II of Zup’s complaint and Nash’s Counterclaim I moot.

Contributory and induced infringement. Assuming arguendo that Claim 9 of the ’681 Patent was valid, the court would still grant Nash's motion for summary judgment as it pertained to ZUP's claims of contributory infringement (Count I) and inducement of infringement (Count II), the court observed.

Both the Supreme Court and the Federal Circuit have repeatedly held, without qualification, that a claim for contributory infringement can only stand if the infringing product has no substantial non-infringing use. As such, it was clear that a finding of a single non-infringing use delivers a fatal blow to a claim of contributory infringement. In this case, the Versa Board has several, the court said. The Versa Board's side-by-side handles and side-by-side foot bindings can be used in a number of substantially noninfringing ways, and a reasonable jury could not find otherwise.

The Supreme Court has also held that liability for induced infringement requires knowledge that the induced acts constitute patent infringement. Beyond the knowledge requirement, the inducement must involve the taking of affirmative steps to bring about the desired result. ZUP offered no evidence that Nash took affirmative steps to induce its customers to infringe Claim 9 of the ’681 Patent. To the contrary, the evidence clearly and unequivocally supported the opposite conclusion, and no reasonable jury could find otherwise, according to the court. The entirety of Nash's promotional materials encourages customers to use the Versa Board in a noninfringing manner, the court noted.

Misappropriation of trade secrets. ZUP asserted that Nash violated the Virginia Uniform Trade Secrets Act (VUTSA)by using information that Nash obtained from ZUP in the creation of its Versa Board. ZUP alleged that it provided Nash with "confidential information, including 3d AutoCAD design drawings of the ZUP Board and ZUP's confidential supplier-pricing information for the ZUP Board's components," which qualify as trade secrets under the VUTSA. ZUP provided nothing more than pure speculation and conclusory statements that there is "no doubt" that Nash used ZUP's trade secrets in creating its Versa Board. Absent more, this statement alone was clearly deficient and Nash was granted summary judgment on this claim.

Breach of contract. Count IV of ZUP's complaint alleged that Nash breached the confidentiality agreement entered between the two parties on February 5, 2015, by using the confidential information that it received from ZUP in bringing the Versa Board to market. In view of the dearth of evidence that Nash has in any way breached its contract with ZUP, the court granted Nash's motion for summary judgment as to Count IV of the complaint.

The case is No. 3:16-cv-00125-HEH.

Attorneys: Christine A. Williams (DurretteCrump PLC) and Matthew Michael Wawrzyn (Wawrzyn & Jarvis LLC) for Zup, LLC. Craig Lawrence Mytelka (Williams Mullen) and Jeffrey Robert Decaro (DeCaro Doran Siciliano Gallagher & DeBlasis LLP) for Nash Manufacturing, Inc.

Companies: Zup, LLC; Nash Manufacturing, Inc.

Cases: Patent TradeSecrets VirginiaNews

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TRADEMARK—C.D. Cal.: Summary judgment granted dismissing infringement claims as to several ‘ReServe’ hospitality software marks

By Robert Margolis, J.D.

Finding that several trademarks related to Efficient Frontiers, Inc.’s ("EFI"), hospitality industry software products are merely descriptive and lack secondary meaning, the federal district court in Los Angeles has granted summary judgment to Reserve Media, Inc., dismissing EFI’s infringement counterclaims as to those marks. The decision followed the court’s October 25, 2016, Order similarly granting Reserve summary judgment as to EFI’s claim that Reserve had infringed another of its trademarks. (Reserve Media, Inc. v. Efficient Frontiers, Inc., January 11,2017, Pregerson, D.).

The marks. EFI offers software products to companies in the hospitality industry to assist with catering and event management, restaurant table management, and dining reservations. At issue in the court’s decision were six EFI software products: (1) "ReServe It," a dining-reservation web interface allowing customers to book reservations on a restaurant’s website; (2) "ReServe It 2.0," an updated version of "Reserve It"; (3) "ReServe Cloud," a cloud-based software integrating event managing and catering programs; (4) "ReServe Gateway," a web platform that enables customers to link operational data with third-party software; (5) "ReServe University," which trains customers in EFI’s various software programs; and (6) "ReServe Anywhere," a version of EFI’s reservation software that is web-based. The court also addressed a design mark for the product "ReServe Interactive."

Reserve Media, a startup company founded in 2014, offers a mobile app and software program for restaurant clients for table and reservation management, "Reserve for Restaurants," and a software program for restaurant consumers to make restaurant reservations through either a mobile app, on the reserve.com website, or on partner restaurant websites. When EFI became aware of Reserve’s business, it sent a cease and desist letter, claiming that Reserve was attempting to use a mark that infringes on EFI’s mark "Reserve Interactive and its variations," including the marks listed in the preceding paragraph. The parties’ ensuing negotiations did not resolve the dispute, and Reserve filed a declaratory judgment action seeking a determination that its use of the "Reserve" mark does not infringe on EFI’s trademark rights. EFI counterclaimed, asserting federal and state infringement claims.

On October 25, 2016, the court held that EFI’s "Reserve Interactive" word mark was descriptive, lacked secondary meaning, and thus was not protectible. It thus granted Reserve’s motion for summary judgment that its "Reserve for Restaurants" software did not infringe that mark. Reserve subsequently sought leave to file a successive summary judgment motion as to the above seven marks.

Descriptive. Reserve contended that five of EFI’s marks —"ReServe It," "ReServe It 2.0," "ReServe Gateway," "ReServe University," and "ReServe Cloud"—are unprotectible as a matter of law, since they are descriptive and lack secondary meaning. The court analyzed each mark separately and agreed with Reserve.

The court first noted that, as explained in its prior order, the word "reserve" is defined as "[t]o set (a thing) apart for some purpose." Given the common meaning of that term, along with each of the terms paired with it in the five marks, the court concluded for each that there is no triable issue of fact as to whether it requires "imagination" or "multi-stage reasoning" to associate each mark with its product—the test for descriptiveness in the Ninth Circuit.

Thus, for example, because a dictionary definition of "gateway" is "software or hardware that connects to disparate computer networks to enable the pass of information," the court concluded that the "ReServe Gateway" mark is merely descriptive of EFI’s software that allows customers to link reservation related data with other software. Given the context of reservation-management software, "[i]t is readily comprehensible that [ReServe Gateway] describes a computer interface system for connecting various computers to facilitate the making of reservations," the court held. Similarly, "ReServe Cloud" is merely descriptive of a product that is a "cloud-based version" of EFI’s "ReServe Interactive" software, the court held.

EFI argued that because "ReServe Cloud" is a registered trademark, it carries a "strong presumption of validity." But because that presumption is "rebuttable" and "evaporates as soon of evidence of invalidity is presented," the court rejected EFI’s argument that "ReServe Cloud" is protectible, in light of its finding the mark to be descriptive.

Secondary meaning. While descriptive marks may be protectible if they acquire secondary meaning, none of EFI’s trademarks at issue had done so, the court held. EFI cited several pieces of evidence to support its argument that its marks had acquired secondary meaning—advertising efforts, company growth, awards the company has won, reviews of its products, and the prominence of its products on online search engines—but the court found all of them to be inadequate. The court found no evidence to substantiate the claim that consumers recognize the marks as originating from a single source.

The court thus concluded that "ReServe It," "ReServe It 2.0," "ReServe Gateway," "ReServe University," and "ReServe Cloud" are unenforceable as a matter of law and granted Reserve summary judgment on EFI’s trademark infringement claims as to those marks.

Incontestable marks. Two of EFI’s marks, a "ReServe Interactive" design mark and a "ReServe Anywhere" word mark, have achieved incontestable status. Reserve argued that it cannot be found to have infringed those marks because in the application for each, EFI was required to disclaim any exclusive right to use the word "Reserve" apart from the mark. Indeed, for "ReServe Interactive," EFI was required to "disclaim the descriptive wording ‘RESERVE INTERACTIVE’ apart from" the design mark because these words "merely describe the nature of the goods and services." Reserve cited cases supporting its argument that EFI could not bring an infringement action based on the use of a word that has been disclaimed. While EFI argued that "disclaimed material forming part of a registered trademark cannot be ignored," particularly in a design mark, the court found that EFI provided no evidence to create a triable issue of fact that there is a likelihood of confusion between its marks and Reserve’s.

Willful infringement. The court also concluded that Reserve was entitled to summary judgment on the issue of whether it willfully infringed any of EFI’s marks. It found there was insufficient evidence to create a triable issue of fact that Reserve both knew of EFI’s marks and willfully infringed them. The court rejected EFI’s contention that Reserve’s failure to comply with its cease and desist letter constitutes willful infringement.

The case is No. CV 15-05072 DDP (AGRx).

Attorneys: Ji-In Lee (Stalwart Law Group) for Reserve Media, Inc. Andrea Contreras (Gerard Fox Law PC) for Efficient Frontiers, Inc.

Companies: Reserve Media, Inc.; Efficient Frontiers, Inc.;

Cases: Trademark CaliforniaNews

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TRADEMARK—D. Del.: Motion to dismiss reverse domain name hijacking claims over bonnyfood.com denied

By Robert Margolis, J.D.

The United States registrants of the domain name bonnyfood.com may proceed with their Lanham Act Anticybersquatting Consumer Protection Act ("ACPA") reverse domain name hijacking claims against a Turkish company that owns the bonnyfood.com.tr domain name in Turkey, the federal district court in Wilmington, Delaware has held. The court denied in part the Turkish company’s motion to dismiss or stay those claims, but did dismiss two claims that the plaintiffs brought under Delaware law (Alsoy v. Ciceksepeti Internet Hizmetleri Anonim Sirketi, January 12, 2017, Robinson, S.).

The BonnyFood saga. Didem Guney Alsoy and her husband Mehmet Ali Alsoy are Turkish nationals involved in several food-distributing businesses in Turkey, including BonnyFood A.S., which owned the Turkish trademark "BonnyFood" and the Turkish domain name bonnyfood.com.tr. Didem Alsoy registered the U.S. domain name bonnyfood.com in 2008, which BonnyFood A.S. began using sometime in 2009.

Since 2013, the Alsoys, BonnyFood A.S., and various partners and corporate officers have been litigating a fraud and misconduct dispute in Turkish courts, which caused BonnyFood A.S. to have trouble meeting its financial obligations. It thus sold in a judicial auction the Turkish "BonnyFood" trademark to defendant, who is the current owner of that trademark and the bonnyfood.com.tr domain name.

In August of 2014, the Alsoys established a Delaware limited liability company, Bonaport LLC, which it alleges is a "marketing outsourcing company in the food industry," with clients primarily in Turkey, the United Kingdom, and New Jersey. Bonaport and Mehmet Alsoy are the current registrants of the bonnyfood.com domain name in the United States and Bonaport applied for the U.S. trademark BONNYFOOD in September 2014. That application remains pending. In October 2014, defendant petitioned WIPO in a UDRP proceeding to gain the registration of the bonnyfood.com domain name, and on January 29, 2015, WIPO ordered Alsoy and Bonaport to transfer the U.S. domain name to defendant. WIPO Case No. D2014-1775. Plaintiffs filed suit shortly thereafter.

ACPA. The Alsoys brought two claims under the ACPA. 15 U.S.C. § 1114(2)(D)(v). The first seeks a declaration that they did not register the bonnyfood.com domain in bad faith and that they may use it without restriction, as well as an order quashing the WIPO order transferring the domain to defendant. The second asks the court to declare that the defendant "acted in bad faith and has engaged in reverse domain name hijacking." While defendant did not challenge those claims substantively, it argued that the court should dismiss or stay them "on prudential grounds of international comity." The court rejected that argument.

The court held that it need not defer to the Turkish litigation of the BonnyFood A.S. dispute, noting that "U.S. district courts may hear trademark disputes between foreign litigants arising out of WIPO UDRP domain name proceedings over domain names administered by U.S. domain name registrars." Plaintiffs pointed out that no case law supported defendant’s argument, and the court agreed. The court therefore denied defendant’s motion to dismiss the two ACPA counts.

Similarly, the court found no reason to grant defendant’s request to stay those claims pending resolution of the dispute in the Turkish courts. Even though plaintiffs did not file an opposition to the request, the court found that defendant did not show that the Turkish proceedings would resolve the "key domain name ownership issue" or that waiting for those proceedings to run their course would otherwise promote judicial efficiency.

Delaware claims. The court did dismiss the two Delaware state law claims. First, it dismissed the plaintiffs’ claims under the Delaware Deceptive Trade Practices Act, because the defendant does not use the trademark BONNYFOOD in the United States and the statute requires a "horizontal" relationship between businesses. This means that they must "manufacture similar products in the same geographic region, or are direct competitors," the court noted. While plaintiffs and defendant might compete in Turkey, the court found no factual allegations in the complaint to suggest that the parties have the requisite horizontal relationship "anywhere in the United States, let alone Delaware." Further, filing a WIPO action is not a deceptive trade practice, the court held.

Next, the court concluded that the plaintiffs could not state a claim for unfair competition because there were no allegations that defendant used its mark either in Delaware or the United States.

The case is Civ. No.15-174-SLR.

Attorneys: Larry Wood (Blank Rome, LLP) for Didem Alsoy. David E. Moore (Potter Anderson & Corroon, LLP) for Ciceksepeti Internet Hizmetleri Anonim Sirketi.

Companies: Bonaport LLC; Ciceksepeti Internet Hizmetleri Anonim Sirketi

Cases: Trademark TechnologyInternet DelawareNews

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TRADEMARK—TTAB: PORTON mark registration cancelled in light of confusion with PATRON mark

By Jody Coultas, J.D.

Balancing the relevant factors, the Trademark Trial and Appeal Board found that Pisco Porton, LLC’s mark PORTON was similar to Patron Spirits International AG’s strong mark PATRON, making confusion likely. Therefore, Patron’s petition to cancel Pisco’s registration of the PORTÓN mark was granted (Patron Spirits International AG v. Pisco Porton, LLC, January 4, 2017, Kuhlke,

Patron sought to cancel Pisco’s registration for the mark PORTON in standard characters for "Distilled spirits; brandy; pisco" in International Class 33 based on a likelihood of confusion with its common-law use and registration of the mark PATRON for "tequila," in International Class 33 and in standard characters for "tequila; distilled spirits," in International Class 33.

Relatedness of the goods, channels of trade, classes of consumers. The similarity of the goods, the channels of trade, and classes of purchasers strongly weighed in favor a finding of likelihood of confusion, according to the court. The parties "distilled spirits" were identical, and Pisco’s "brandy" and "pisco" good were legally identical to Patron’s "distilled spirits." Because the goods were identical in part and otherwise legally identical and because there were no limitations as to channels of trade or classes of purchasers in the registrations, the Board presumed that the parties’ alcoholic beverages will be sold in the same channels of trade and will be bought by the same classes of purchasers.

Conditions of sale. The conditions of sale factor weighed slightly in Patron’s favor in all of the trade channels, according to the court. The ordinary channels of trade would include bars, restaurants, liquor stores and grocery stores where permitted. Because the goods were not restricted to a high price point, consumers were considered to be less discerning.

Similarity/dissimilarity of the marks. The court concluded that the marks were similar in appearance, sound, meaning, and overall commercial impression. The marks are both two-syllable six letter words that begin with P followed by a vowel, end with ON, and have a T and R combination in the middle. The syllable and spelling similarities also create similarity in sound, which is significant given that both parties’ beverages are sold in the sometimes noisy atmosphere of a bar or crowded restaurant. Many non-Spanish speakers will perceive both terms, in the context of the goods that include tequila and pisco, as Spanish words, and any recognition of the English word "patron" will not sufficiently distinguish the marks. The similarities, especially given that the goods are identical, outweighed the dissimilarities, including the possible recognition of the dissimilarity in meaning by some customers.

Fame. Although the record did not support a finding of fame, PATRON has attained commercial strength for tequila and accord it a broader scope of protection, according to the court.

Actual confusion. The actual confusion factor was neutral, according to the court. The General Manager of the Peruvian distillery that is substantially owned by Pisco and produces pisco stated that "Sometimes people get PORTON confused with PATRON Tequila, which can be a good thing for us" and "[the] names might be similar." The GM was not an employee of Pisco, and was not Pisco’s agent acting within the scope of such a relationship when making the statement. Pisco provided unrebutted testimony that it was not aware of any instances of actual confusion among consumers or distributers or any misdirected communications. However, the amount and length of time of overlapping sales and possible opportunities for confusion to occur was limited.

Laches. The court concluded that Patron’s two year and three month delay in filing suit was not unreasonable. There was no evidence that Patron knew of Pisco’s adoption of the PORTON mark prior to the close of the opposition period. Thus, Pisco’s laches defense failed.

The case is Cancellation No. 92059527.

Attorneys: Bernard R. Gans and Jessica Bromall Sparkman (Jeffer Mangels Butler & Mitchell LLP) for Patron Spirits International AG. Gary D. Krugman and Kevin G. Smith (Sughrue Mion PLLC) for Pisco Porton, LLC.

Companies: Patron Spirits International AG; Pisco Porton, LLC

Cases: Trademark USPTO

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NEWS

PATENT NEWS: Biosimilar dispute headed to the Supreme Court

By Kathryn S. Beard, J.D.

Biosimilar manufacturers will soon have a definitive answer on the timing of giving notice of commercial marketing, thanks to the Supreme Court. On January 13, 2017, the Court granted and consolidated Sandoz, Inc.’s petition for writ of certiorari and Amgen, Inc.’s conditional cross-petition for writ of certiorari. The dispute appeals the Federal Circuit’s July 21, 2015 decision holding that Amgen was entitled to an additional 180-day marketing exclusivity period because of Sandoz’s late notification of its intention to market a biologic product that is biosimilar to Amgen’s Neupogen® (see Court interprets biosimilar ‘enigma’ in favor of abbreviated biologic license applicant, July 22, 2015).

The Court also granted Apotex, Inc.’s motion for leave to file a brief as amici curiae; Apotex was involved in a similar dispute with Amgen (see Biosimilar applicant must give 180-day post-licensure notice to reference sponsor, July 6, 2016), though the Court denied Apotex’s petition for writ of certiorari earlier this term (see SCOTUS denies cert in biosimilar licensing dispute, December 12, 2016).

The Biologics Price Competition and Innovation Act (BPCIA), which was passed in 2010 as sections 7001-7003 of the Patient Protection and Affordable Care Act (ACA) (P.L. 111-148), created an abbreviated pathway for FDA approval of a "biosimilar" biologic product. Amgen originally brought suit against Sandoz in federal court asserting various violations of Amgen’s approved license for its cancer-fighting biologic Neupogen (filgrastim) and infringement of Amgen’s patent for a particular method of using filgrastim. The Court will be hearing arguments relating to Sandoz’s question regarding the 180-day notice of commercial marketing and Amgen’s cross-petition on the optionality of a process to settle patent disputes known as the "patent dance" (see Shall we dance? Biosimilars step toward new legal and regulatory future, March 31, 2016).

Companies: Sandoz, Inc.; Amgen Inc.; Amgen Manufacturing Limited; Apotex, Inc.

News: Patent

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PATENT NEWS: Qualcomm faces FTC monopolization allegations over licensing of SEPs

By Jeffrey May, J.D.

Qualcomm Inc. unlawfully maintained its monopoly in a type of semiconductor device that enables cellular communications in cell phones and other products by, among other things, consistently refusing to license standard-essential patents on fair, reasonable, and non-discriminatory, or "FRAND," terms to competing suppliers of these baseband processors, according to a complaint filed today by the FTC in the federal district court in San Jose, California. In a two-to-one vote, the Commission authorized the filing. The agency said in a statement that the company’s sales and licensing practices hamper Qualcomm’s competitors and threaten innovation in mobile communications. The agency is seeking an injunction against Qualcomm "to undo and prevent its unfair methods of competition in or affecting commerce" (FTC v. Qualcomm Inc., FTC File No. 141 0199, Civil Action No. 5:17-cv-00220).

Qualcomm has long been the leading supplier of baseband processors worldwide, according to the FTC’s complaint. The agency defined baseband processors as semiconductor devices (sometimes referred to as "chips," "chipsets," or "modems") within handsets. They allow handsets to communicate with an operator’s cellular network by performing functions such as signal generation, modulation, and encoding.

According to the agency, Qualcomm has participated in cellular standard setting processes through various standard setting organizations (SSOs) and has committed to the SSOs that it would license certain cellular standard-essential patents or SEPs on FRAND terms. The FTC is challenging Qualcomm's alleged efforts to condition the supply of baseband processors on licenses to FRAND-encumbered patents on Qualcomm’s preferred terms. Moreover, Qualcomm has allegedly refused to license FRAND-encumbered SEPs to its competitors. In addition, the company purportedly extracted baseband processor exclusivity from Apple in exchange for partial royalty relief.

Dissent. FTC Commissioner Maureen K. Ohlhausen, the lone Republican on the Commission, voted against authorizing the litigation. Ohlhausen took the unusual step of writing a dissenting statement.

The commissioner said that the enforcement action was "based on a flawed legal theory (including a standalone Section 5 count) that lacks economic and evidentiary support, that was brought on the eve of a new presidential administration, and that, by its mere issuance, will undermine U.S. intellectual property rights in Asia and worldwide."

Ohlhausen added that she had "been presented with no robust economic evidence of exclusion and anticompetitive effects, either as to the complaint’s core ‘taxation’ theory or to associated allegations like exclusive dealing."

In conclusion, the dissenting commissioner expressed her view that the agency’s decision to pursue the complaint "unfortunately bears out my concerns that the Commission’s 2015 statement was too vague and abbreviated to discipline Section 5 enforcement." In August 2015, the FTC released a one-page document identifying general principles that guide the agency when deciding whether to bring an action against "unfair methods of competition" that do not amount to traditional antitrust violations.

"[I]f the Commission is going to issue a policy statement in this controversial area, it should provide meaningful guidance to those subject to our jurisdiction," said Ohlhausen in dissenting from issuance of the guidance.

Korea Fair Trade Commission action. The FTC's action comes just a few weeks after the Korea Fair Trade Commission (KFTC) fined Qualcomm $865 million for allegedly coercing the execution and performance of unfair license agreements by using its chipset supply as leverage and circumventing FRAND commitments. Qualcomm said that it would file an appeal in that matter when the order became final.

Attorneys: Geoffrey M. Green for the FTC. Gary A. Bornstein and Yonatan Even (Cravath, Swaine & Moore LLP) and Willard K. Tom (Morgan Lewis & Bockius LLP) for Qualcomm Inc.

Companies: Qualcomm Inc.

News: Patent TechnologyInternet

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SUPREME COURT DOCKET—Recent decisions, cases, and petitions pending High Court review

This IP Law Daily feature presents a chart highlighting the decisions, arguments, briefs, and petitions on intellectual property issues before the 2016 Term of the U.S. Supreme Court.

On January 13, the High Court granted and consolidated two petitions, filed by rival drug manufacturers Amgen Inc. and Sandoz Inc., each seeking review of a Federal Circuit decision interpreting the abbreviated procedure for obtaining Food and Drug Administration (FDA) approval for marketing biosimilar drug products. In the past couple of weeks, the Court has denied 12 petitions seeking review of IP decisions, for a total of 50 denied petitions in IP cases so far this term. Sixteen other IP petitions are awaiting the Court’s review.

Granted Petitions

The Supreme Court has agreed to hear eight intellectual property cases this term. To date, the Court has issued one opinion (Samsung Electronics Co. v. Apple Inc., Dkt. No. 15-777) and heard oral arguments in three cases—Star Athletica LLC v. Varsity Brands, Dkt. No. 15-866; SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, Dkt. No. 15-927; and Life Technologies Corp. v. Promega Corp., Dkt. No. 14-1538. Oral arguments are scheduled for tomorrow, January 18, in the controversial trademark disparagement case of Lee v. Tam, Dkt. No. 15-1293.

Biosimilar drug marketing. Last Friday, the Court granted review of two petitions, filed by drug manufacturers Amgen Inc. and Sandoz Inc., each seeking review of a Federal Circuit decision interpreting the abbreviated procedure for obtaining Food and Drug Administration (FDA) approval for marketing biosimilar drug products under the Biologics Price Competition and Innovation Act of 2009 (BPCIA). The BPCIA establishes an abbreviated pathway for regulatory approval of follow-on biological products that are "highly similar" to a previously approved product. The Federal Circuit held that an applicant’s failure to supply the information described in paragraph 262(l)(2) to the RPS was not a violation of the BPCIA. However, the notice requirement of paragraph (l)(8)(A) was mandatory, according to the court. Section 262(l)(8)(A) provides that an applicant shall provide notice to the RPS at least "180 days before the date of the first commercial marketing of the biological product licensed under subsection (k)." (Sandoz Inc. v. Amgen Inc.,Dkt. No. 15-1039; Amgen Inc. v. Sandoz Inc., Dkt. No. 15-1195).

Patent venue. On December 14, the Court granted Indiana-based food producer TC Heartland’s petition to review a Federal Circuit decision denying a mandamus request for transfer of venue in a patent infringement suit filed in Delaware by Kraft Foods. The Federal Circuit held that 28 U.S.C. §1400(b) provides that a corporate defendant in a patent case, as in other cases, may be sued in any district in which personal jurisdiction lies. TC Heartland argues that 2011 amendments to the general venue statute, 28 U.S.C. §1391, changed the statutory law such that Delaware was not a proper venue for the infringement suit against it. This case has been closely watched by practitioners, lawmakers, and the USPTO, who are concerned that half of all patent cases are filed in a single judicial district (TC Heartland LLC v. Kraft Food Brands Group LLC, Dkt. No. 16-341).

Patent exhaustion. On December 2, the Court agreed to hear reseller Impression Products, Inc.’s appeal of a Federal Circuit decision that inkjet toner cartridge manufacturer Lexmark International’s patent rights were not exhausted upon the first authorized sale, either domestically or abroad, by Lexmark of its products to end users (Impression Products Inc. v. Lexmark International, Inc., Dkt. No. 15-1189).

Denied Petitions

Of the 12 recently denied petitions, the following are noteworthy.

Trademark nominative fair use. On January 9, the High Court declined an invitation by a security training company to resolve a circuit split regarding application of the nominative fair use doctrine. In May, the U.S. Court of Appeals in New York City adopted its own hybrid-test for district courts to use when considering nominative fair use. Nominative fair use protects a defendant’s use of a plaintiff’s trademark to describe the plaintiff's product rather than its own. Some circuit courts consider the doctrine to be an affirmative defense, while others fold it into the infringement analysis. The Sixth Circuit has rejected nominative fair use altogether and several circuit courts have yet to address the issue.

The training company’s petition had asked, "What is the proper standard under the Lanham Act for analyzing a defendant’s nominative use of a plaintiff’s trademark?" The International Trademark Association (INTA) had urged the Court to grant the petition and resolve the existing conflict (Security University LLC v. Int’l Information Systems v. Security Certification Consortium Inc., Dkt. No. 16-352).

Tariff Act jurisdiction. Last week, the Court denied a Chinese chemical manufacturer’s petition seeking review of a limited exclusion order imposed by the International Trade Commission under Section 337 of the Tariff Act, after finding that the company misappropriated trade secrets from an American company. The Federal Circuit summarily affirmed the ITC’s final decision. The petitioners argued that the ITC’s jurisdiction should not extend application of U.S. common law to acts wholly occurring abroad. According to the petitioners, courts in China had concluded that no trade secret misappropriation took place in this case (Sino Legend (Zhangjiagang) Chemical Co. Ltd. v. ITC, Dkt. No. 16-428).

Patent claim construction. The Supreme Court has denied a request by Google, Inc., to review a ruling regarding the use of the record of patent prosecution in construing a patent’s claim terms. Left standing is the Federal Circuit’s decision reversing a patent infringement suit against Google for allegedly infringing four data security patents through malware-detection features of Google’s Chrome web browser (Google Inc. v. Cioffi, Dkt. No. 16-200).

New Petitions

In the past several weeks, only a few petitions seeking review in IP cases were filed.

Scope of copyright protection for architectural works. A residential design firm has asked the Supreme Court to review a decision of the U.S. Court of Appeals in Atlanta, affirming a district court’s judgment notwithstanding a jury’s verdict (JNOV) that a builder’s floor plans for two single family homes infringed the design firm’s copyrighted floor plan. In finding that no reasonable jury could find that parties’ plans were "substantially similar," the appellate panel relied on a 2008 Eleventh Circuit precedential decision (Intervest Constr., Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914, 919-920), holding that architectural works, similar to "compilations," are entitled to only to "thin," making the issue of substantial similarity more suitable for resolution by a judge over a jury. The petition asks whether Intervest should be overruled (Home Design Services Inc. v. Turner Heritage Homes Inc., Dkt. No. 16-858).

Patent eligibility. A company whose patents were invalidated during covered business review in part for failure to claim patent-eligible subject matter has asked the Supreme Court whether "a court must consider secondary consideration evidence in its Section 101 analysis." The Patent Trial and Appeal Board found that the patents at issue—directed to imaging, storing, and transmitting checks—recited an abstract idea of data capture and transfer (DataTreasury Corp. v. Fidelity National Information Services, Dkt. No. 16-833).

For details about these and other petitions and cases pending before the Supreme Court, please consult the chart of intellectual property law cases awaiting decision in the 2016 term. The chart, which includes summaries of the questions presented and the current status of each case, is divided into three sections: Granted Petitions, Pending Petitions, and Denied or Dismissed Petitions.

News: Copyright Patent TechnologyInternet Trademark TradeSecrets

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TRADEMARK: Proposal would allow private sector to help Customs agents detect infringing imports

By Cheryl Beise, J.D.

The Department of Homeland Security’s U.S. Customs and Border Protection (CBP) is seeking public comments on proposed amendments to the Customs and Border Protection regulations (19 CFR Part 133) in order to establish procedures for the donation of technologies, training, and other support services to assist CBP in intellectual property rights (IPR) enforcement. The purpose of the donations is improve CBP's knowledge of intellectual property and improve its ability to detect infringing articles and prevent their importation. According to the notice in today’s Federal Register, the proposal implements a mandate of the Trade Facilitation and Trade Enforcement Act of 2015. (82 Fed. Reg. 4800, January 17, 2017).

The Trade Facilitation and Trade Enforcement Act of 2015 (TFTEA), Public Law 114-125, 130 Stat. 122 (19 U.S.C. 4301), enacted February 24, 2016, includes various trade facilitation and enforcement provisions, including several that focus on improving CBP's IPR enforcement at the border. Section 308(d) of the TFTEA requires the Commissioner of CBP to prescribe regulatory procedures for donations of hardware, software, equipment, and similar technologies, as well as training and support services, for the purpose of assisting CBP in detecting and identifying imports that infringe intellectual property rights.

The proposal would add a new subpart H, as set forth in proposed new §?133.61, to prescribe the methods by which donations of IPR technology and support services may be made. The proposed rule would enhance CBP's IPR enforcement capabilities by making donations of authentication devices, equipment, and training available to CBP personnel. This would help protect the entities making donations from the illegal importation of IPR-infringing products. CBP estimates that approximately 50 entities would each make one donation annually.

The acceptance of donations also must be consistent with either section 482 of the Homeland Security Act of 2002, as amended by section 2 of the Cross-Border Trade Enhancement Act of 2016 (Pub. L. 114-279), or section 507 of the Department of Homeland Security Appropriations Act of 2004 (Pub. L. 108-90). Section 482 of the Homeland Security Act permits CBP, in consultation with the General Services Administration (GSA), to "enter into an agreement with any entity to accept a donation of personal property, money, or nonpersonal services" to be used for certain CBP activities at most ports of entry where CBP performs inspection services. Donations also may be considered under section 507 of the DHS Appropriations Act of 2004, which makes the DHS Gifts and Donations account "available to the Department of Homeland Security … for the Secretary of Homeland Security to accept, hold, administer and utilize gifts and bequests, including property, to facilitate the work of the Department of Homeland Security." DHS policy on the acceptance of gifts pursuant to section 507 is contained in DHS Directive 112-02 and DHS Instruction 112-02-001.

Comments on the proposed amendments must be received on or before March 3, 2017. Additional information, including instructions for submitting comments, is provided in the notice.

News: Copyright Trademark TechnologyInternet

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In the News

LAW FIRMS

Blank Rome, LLP |Cozen O'Connor |Cravath, Swaine & Moore LLP |DeCaro Doran Siciliano Gallagher & DeBlasis LLP |DurretteCrump PLC |Gerard Fox Law PC |Hodgson Russ, LLP |Jeffer Mangels Butler & Mitchell LLP |Kirkland & Ellis LLP |Morgan Lewis & Bockius LLP |Potter Anderson & Corroon, LLP |Stalwart Law Group |Sughrue Mion PLLC |Tensegrity Law Group, LLP |Wawrzyn & Jarvis LLC |Williams Mullen

COMPANIES

Acta Medical, LLC | Amgen Inc. | Amgen Manufacturing Limited | Apotex, Inc. | Bonaport LLC | Ciceksepeti Internet Hizmetleri Anonim Sirketi | Curlin Medical Inc. | Efficient Frontiers, Inc. | Ericsson Inc. and Telefonaktiebolaget LM Ericsson | Moog Inc. | Nash Manufacturing, Inc. | Patron Spirits International AG | Pisco Porton, LLC | Qualcomm Inc. | Reserve Media, Inc. | Sandoz, Inc. | Wi-LAN Inc. | Wi-LAN USA Inc. | Zevex, Inc. | Zup, LLC

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