Today, the US PTO issued revisions to the Rules of Procedure for the Patent Trial and Appeal Board, at 81 Fed. Reg. 18750.  This Federal Register Notice includes various changes to the duty of candor, the rules on pleading page limits, as well as grounds for instituting IPR and PGR proceedings. 

Swedish furniture company IKEA has long maintained a portfolio of trademark registrations in Indonesia since at least as early as 2005. However, IKEA did not open its first store in the country until 2014. An applicant is not required to show use of the mark in Indonesia as a requirement for registration (in direct contrast to the United States requirements). However, the registration may be vulnerable to cancellation if the owner fails to make use of the mark for a three-year period after registration. 

In the unending saga of Samsung v. Apple, the Supreme Court has recently granted certiorari on a single question relating to damages in a case of design patent infringement, that is: where a design patent only covers a single component of an overall product, should a damages award be limited only to those profits attributed to that component?  For more on this case, head over to SCOTUSblog

In an ongoing dispute between VirnetX Inc. vs. Apple Inc., Apple Inc. had challenged the validity of two asserted VirnetX patents (US Patent Nos. 6,502,135 and 7,490,151).  Apple was initially unsuccessful in its IPR institution requests, because it was time barred under the IPR statute of limitations, which requires a PTAB IPR challenge to be brought within 1-year from the date that the complaint is served on the defendant.  After several failed attempts, Apple Inc. recently circumvented the IPR statute of limitations, via 35 U.S.C. 315(c) joinder to another petitioner, The Mangrove Partners Master Fund, Ltd.

In the perpetual Apple v. Samsung (and Samsung v. Apple) battles for patent dominance, the Federal Circuit's most recent decision invalidated two of Apple's asserted patents, notwithstanding a jury verdict finding the opposite.  The two claims were directed to Apple's mobile device patents, including automated spell corection, slide-to-unlock (found in the lower court to have been infringed by Samsung devices, and resulting in $119 million in damages).  The claimed features were invalidated on appeal to the Federal Circuit based on 35 U.S.C. 103, in that each of the "slide-to-unlock" and "spell correction" claims were obvious in view of the prior art.  In support of the patents, Apple presented evidence of copying, industry praise, long-felt but unsolved need, and commercial success all being secondary considerations of nonobvious.  The Federal Circuit reviewed Apple's presented evidence, and collectively found the secondary evidence to be too weak to overcome the evidence of obviousness based on the prior art, and reversed the lower court's jury verdict.

As a follow-up to a previous blog entry, it’s finally official -- reform legislation in the European Community (“EU”) will take effect on March 23, 2016 and bring major changes to the CTM (“Community Trade Mark”) registration system.  Over the past 20 years, the CTM has become a staple of international trademark portfolios as a cost-effective way to achieve protection in 28 member countries in a single package.  Among the most notable changes, the CTM name will be changed to the “European Union Trade Mark,” or “EUTM.”  Also, the registrar’s office in Alicante, Spain, now known as OHIM (“Office of Harmonization in the International Market”), will be re-named as the “European Union Intellectual Property Office,” or “EUIPO.”  In addition to minor, technical changes, the overhaul will increase filing fees for multiple-class applications, replacing the existing structure of up-to 3 classes for the initial filing fee.  Of note, any application filed before March 23rd will still benefit from the 3-for-1 filing fee, so clients are encouraged to consider immediate filing to reduce costs.  Other changes to the law will impose stricter rules for specific listings of goods and services, which will affect existing registrations and upcoming renewals, and there also will be enhanced enforcement provisions available to registrants, especially against counterfeit and gray market goods.  The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.

Does someone other than LeBron James own the rights to the tattoos on LeBron James' body?

The videogame maker, Take-Two Software, has been sued by a company that has demanded more than $1.1 million in licensing fees for eight tattoo designs featured on the bodies of NBA All-Stars LeBron James and Kobe Bryant, as well as Kenyon Martin, DeAndre Jordan and Eric Bledsoe.
The lawsuit was filed on Monday in New York federal court by Solid Oak Sketches, which claims to own copyrights to several tattoo designs featured prominently in the video game. The lawsuit alleges that Take-Two Interactive Software and other companies associated with the realistic videogame NBA 2K16 committed unauthorized reproductions of those tattoo designs.

The interesting legal question over whether tattoo designs are copyrightable has never been fully decided by a court, as acknowledged in the new lawsuit. A prior lawsuit related to the "Mike Tyson face tattoo" against Warner Bros. over the Hangover 2 settled, as have other disputes including one by a tattoo artist, Christopher Escobedo, who tattooed a UFC fighter and later asked a bankruptcy court to determine the value of his tattoo claim against videogame publisher THQ.

In a demand letter to Take-Two Software before the lawsuit was filed, Solid Oak Sketches offered a perpetual license to the eight tattoos in question, for a fee of $1,144,000.

Apparently, Take-Two Software declined the licensing fee offer. Take-Two declined to comment about the lawsuit, which demands injunctive relief and monetary damages. We will monitor this case for further developments.

In a recent decision in Lumen View v. FindTheBest.Com, the Federal Circuit held that Section 285 of U.S. patent laws does not support the deterrence based award of fees or sanctions, instead the Federal Circuit suggested that sanctions under Rule 11 of the FRCP to be the more appropriate vehicle.  The Federal Circuit in this case did affirm the lower court's "exceptional case" finding under 35 U.S.C. 285 as well as the award of "reasonable attorney fees", but has vacated the doubling of the award to "deter baseless litigation" as unjustifiable.

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