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Blog Home | September 21, 2014

The Best Global Brands

Recently, Interbrand, a leading brand consulting firm, released their ranking of the top 100 brands based on brand value. This is the ninth consecutive year that Interbrand has released the ranking. Interbrand reports that this is the first year that the aggregate value of the top 100 brands has declined, a loss of about 4.6% or about $55 billion. Interbrand 2009 Global Ranking Press Release.

That said, many brands increased in value. Coca-Cola maintained its #1 spot and increased in value by 3%.  And, Google increased in value by 25% giving the company the largest positive change in brand value this year.

Check out the rankings at
http://www.interbrand.com/best_global_brands.aspx?year=2009&langid=1000

Image from: http://www.interbrand.com/best_global_brands_intro.aspx?langid=1000

Prius Patent Infringement

http://www.toyota.com/img/vehicles/2010/prius/gallery/full/ext_image3.jpgRecently, Paice LLC filed a complaint with the U.S. International Trade Commission (“ITC”) claiming Toyota is infringing its patent. The ITC was set up to protect U.S. markets from unfair trade practices. To protect U.S. markets, the ITC has the power to order U.S. Customs and Border Patrol to block products that infringe on U.S. patents from entering the country. Paice’s complaint seeks to prevent Toyota from importing all hybrids. This includes all hybrids made by Toyota, including the best selling Prius, as well as any hybrid made by Toyota’s Lexus division.

Under ITC rules, Paice must show “that it has a market to protect.” Bloomberg.com: Toyota Patent Trade Case May Affect Hybrid Imports.  Paice does not make any products related to the patent; however, Paice does claim to have invested in vendors, suppliers, research and licensing. Currently, the ITC is looking at the standards that allow patent holders who don’t make products to file lawsuits.

This matter is not the first time that Paice and Toyota have fought over patent infringement. In 2005, Toyota was ordered to pay $4.3 million dollars to Paice for infringing on Paice’s patents related to drivetrains. The infringing products were the drivetrains of the hybrid Toyota Highlander and the Lexus RX400h.

A list of Paice’s patents relating to hybrid electric vehicles can be found at the following site: Paice’s Patents.

Image from: http://www.toyota.com/prius-hybrid/photo-gallery.html

Teva Pharmaceuticals

Recently, U.S. District Court Judge Garrett Brown rejected the argument made by Teva Pharmaceuticals Industries Ltd. that the patent covering the main ingredient in Merck & Co.’s asthma and allergy treatment drug Singulair® was invalid or unenforceable. The patent that covers Singulair’s® main ingredient is U.S. Patent No. 5,565,473 and can be viewed at Google patents with this link: U.S. Patent No. 5,565,473.

Teva is the world’s largest generic drug maker and has a 22% market share of generic-drugs in the U.S. (Fortune Magazine – Teva: The King of Generic Drugs). The company has a history of persuading courts to invalidate pharmaceutical patents. For example, in 2004, Teva filed and won a lawsuit against Novartis International AG. In the lawsuit, the court found that Novartis’s patent for the blood pressure medicine Lotrel® was invalid.

A provision in the Hatch-Waxman Act, passed by Congress in 1984, gives generic drug companies an incentive to challenge pharmaceutical patents. According to the Hatch-Waxman Act, if a generic drug maker is able to prove that a patent protecting a drug is invalid, then the generic drug maker is given a six month window of sales exclusivity to sell their generic version of the drug.

Oddly enough, even though Teva is the world’s largest generic drug maker, the company does a significant amount of research on new drugs. In fact, the company developed and patented the active ingredient in the multiple sclerosis treatment Copaxone®, the patent for which expires in 2014.

Image from: http://tevausa.com/default.aspx?pageid=31

Oprah Sues Acai Berry Advertisers For Trademark Infringement

http://x.weightlossblog2009.com/images/dr-oz-and-oprah-pic.jpgAttorney General Lisa Madigan recently filed lawsuits against three suppliers and one marketer of the Acai berry in the Circuit Court of Cook County.  The lawsuits allege that the companies use deceptive techniques to lure customers, prematurely charge their credit cards, and make it almost impossible to cancel orders of the berry. Madigan stated “[t]he acai berry supplement sales programs are among the most aggressive that we have seen using misleading sales tactics to scam consumers.”

In addition, Harpo, Inc., the producers of “The Oprah Winfrey Show,” and Dr. Mehmet Oz filed over 40 trademark infringement suits against internet marketers of the Acai berry. Last year, Dr. Oz talked about the Acai berry on an episode of the Oprah Winfrey show.  Dr. Oz did not endorse any companies or their products.  The Oprah Winfrey show is one of the most watched shows in America, and when Oprah endorses a product, it oten becomes an overnight hit.  Oprah’s approval of weight loss supplements is golden, and many Americans trust her judgment.  Internet advertisers have been using this publicity as a marketing tool by claiming that Oprah and Dr. Oz endorse and support their products.  The internet advertisers have allegedly fabricated quotes and voice recordings to sell their product.

Dr. Oz even stated “[a]nd more importantly, when consumers trusting us try to buy these products over the Web, what they end up getting are fake products, pills that don’t really have what’s promised in them. They’re often duped into paying more than they should. If my picture is next to a product, endorsing it and supporting your purchase of it, I did not give them permission.”

Oprah has posted on her website

“ *  Consumers should be aware that neither Oprah Winfrey nor Dr. Oz are associated with nor do they endorse any açaí berry product, company or online solicitation of such products, including MonaVie juice products. Attorneys for Harpo are pursuing companies that claim such an affiliation.

* Neither Oprah nor Dr. Oz are associated with nor do they endorse any specific resveratrol product, company or online solicitation of such products. Any companies that misrepresent their affiliation are making false claims. Harpo attorneys are pursuing companies that claim such an affiliation.”

http://www.oprah.com/article/health/nutrition/20090105_orig_acai

Image from:  http://x.weightlossblog2009.com/images/dr-oz-and-oprah-pic.jpg

David Kappos Sworn In As New Director Of The United States Patent And Trademark Office

http://www.uspto.gov/images/newsheadlines/2009aug13kappos_sworn.jpg

On August 13, 2009, Gary Locke, Secretary of Commerce, swore in David Kappos as the new Director of the United States Patent and Trademark Office (USPTO).  Kappos faces many challenges in the USPTO.  To read about the challenges that face the new director, please read the two earlier blog posts.

Possible Changes to Come in the USPTO

David Kappos Nominated as the New Director of the U.S. Patent and Trademark Office

Image from:  http://www.uspto.gov/images/newsheadlines/2009aug13kappos_sworn.jpg

Microsoft Ordered to Stop Selling Word!

http://www.aqsa.org.uk/Portals/0/Misc/Microsoft%20Word.pngOn August 11, 2009, a United States District Court Judge in the Eastern District of Texas ordered Microsoft to stop selling Microsoft Word.  Judge Leonard Davis ordered the permanent injunction because Microsoft Word is infringing a patent to I4I or Infrastructures for Information Inc., namely,U.S. Patent No. 5,787,449, which is titled “Method and system for manipulating the architecture and the content of a document separately from each other.”  The permanent injunction goes into effect sixty days from the decision.  Microsoft will no longer be able to use, market, advertise, or sell Word 2003, 2007, or any other similar word processing program.

In May 2009, a Texas jury also ordered Microsoft to pay $200 million in damages to I4I for infringing the patent. Other news sources have stated that Microsoft plans on appealing.  A Microsoft spokeswoman stated that Microsoft alleges they are not infringing I4I’s patent and, in addition, the patent is invalid.

I4I is a Canadian company, and the ’449 patent issued on July 28, 1998.  The patent discloses “[a] system and method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations. The system, for use by computer software developers, removes dependency on document encoding technology. A map of metacodes found in the document is produced and provided and stored separately from the document. The map indicates the location and addresses of metacodes in the document. The system allows of multiple views of the same content, the ability to work solely on structure and solely on content, storage efficiency of multiple versions and efficiency of operation.”

View the patent at:  http://www.google.com/patents/about?id=y8UkAAAAEBAJ&dq=5,787,449

Image from:  http://www.aqsa.org.uk/Portals/0/Misc/Microsoft%20Word.png

Les Paul, The True American Inventor

http://www.guitar-list.com/files/LP-patent.JPGLes Paul (born Lester William Polsfuss), a great American musician, recently passed away on August 13, 2009 due to pneumonia complications.  Paul will always be remembered for his music, but he will especially be remembered for his contribution to the design and sound of the electric guitar.

In 1939, Paul invented one of the first electric guitars called “The Log.”  Paul was dissatisfied with conventional acoustic guitars and desired an increase in volume.  “The Log” was a solid 4″ by 4″ piece of wood with guitar strings attached.  “The Log” had a bridge, neck, and pickup.  Because of the awkward appearance, he added wooden wings to give “The Log” a traditional guitar appearance.  Paul played “The Log” in clubs and it eventually grew popular.  In 1952, Gibson Guitar Corporation approached Paul about using Paul’s design in the company’s guitars.  Paul signed a contract with Gibson, and they began selling the Les Paul solid body electric guitars with “Les Paul” on them.  Gibson soon changed the design of the guitar, and Paul revoked his contract.  Paul eventually returned to Gibson and designed other guitars in which the famous Gibson Les Paul was designed.

Paul was always interested in increasing the volume of the guitar.  At age 13, he placed a telephone receiver under the strings of a guitar.  Although the receiver barely amplified the sound, it set the stage for his creative thought process.  He later used a phonograph needle in the guitar to amplify the sounds which worked much better.

Paul also invented the multi-track recording system.  Paul recorded his guitar song onto an acetate disk and then recorded another track on top of it.  Therefore, he eventually created overlaid tracks.  The system allowed artists to record different instruments individually and then overlay them into a final harmonizing product.  In 1954, Paul worked with Ampex to build the first eight-track recording device.

In May 2005, Paul was inducted into the National Inventors’ Hall of Fame for his solid body electric guitar. Without Paul’s ingenuity, Eric Clapton, Pete Townsend, Jimmy Page and other rock-n-roll artists would not have been able to create such amazing electric guitar sounds.  Paul said “To have the dynamics, to have the way of expressing yourself beyond the normal limits of an unamplified instrument, was incredible. Today a guy wouldn’t think of singing a song on a stage without a microphone and a sound system.”

Image from:  http://www.guitar-list.com/files/LP-patent.JPG

Virtual Trademark

3,531,683Massively multiplayer online games (“MMO”) are online role playing games where players from all over the world interact with one another. Often in MMOs, a player creates a character, also known as an avatar, which becomes an embodiment of the player in the game. MMO players may set up a virtual business where they provide virtual goods and services in exchange for virtual money which may be exchanged for real money.

Already, a number of intellectual property issues have arisen in these games. For example, in 2004, Marvel Comics filed a lawsuit against the MMO “City of Heros” alleging trademark infringement.  Marvel Comics alleged that the game allowed and promoted users to create characters that infringed on Marvel’s trademarks. The lawsuit settled in December 2005 under undisclosed terms.

More recently, the U.S. Patent and Trademark Office issued a design trademark registration for an avatar in the MMO “Second Life”. The avatar and mark are owned by Alyssa Laroche. The mark, Registration No.: 3,531,683, is for “Computer programming services, namely, content creation for virtual worlds and three dimensional platforms.”

A second mark, also owned by LaRoche, “AIMEE WEBER STUDIO”, Registration No.: 3,531,682, registered on the same day for “Computer services, namely, content creation for virtual worlds and three dimensional platforms.”

Law.com reported that these were the first two U.S. trademarks to be issued for marks that identify services solely within a virtual world; however, this is not entirely correct. (http://www.law.com/jsp/legaltechnology/pubArticleLT.jsp?id=1202432993006&Intellectual_Property_in_Virtual_Worlds). Though the content created may exist in the virtual world, the services, namely computer programming, take place in the real world.

Image from: http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77110299

The Microsoft Store

http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=77791528

On July 28, 2009, Microsoft Corporation filed an application for a trademark in the U.S. Trademark Office. The application, U.S. Serial No. 77/791,528, seeks registration of a design in International Class 35 for “retail store services and online retail services featuring computers, computer hardware, software, computer games, computer peripherals, portable music players and accessories, personal digital assistants, cell phones and accessories, video game consoles and accessories, webcams, books clothing, back packs, messenger bags, computer bags and novelty items.”

The design appears to be similar to the traditional Microsoft Windows logo; however, the design appears to depict a flag that is more rigid than the wavy flag of the traditional Microsoft Windows’ logo. (http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77791528).

Microsoft plans to open retail stores across the country in the fall of 2009 and will compete directly against Apple Computers Inc. and Sony Corp. who already have retail operations. Microsoft signed leases at shopping centers in Mission Viejo, California and Scottsdale, Arizona. Notably, the Mission Viejo shopping center has an Apple retail store.  (http://www.google.com/hostednews/ap/article/ALeqM5hmkUCtrfuNoIugojhC6Os8fPlsdgD99NNEFG0).

Image from: http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=77791528

Possible Changes to Come in the USPTO

After the announcement that David Kappos was nominated for the Director of the United States Patent and Trademark Office (USPTO), there has been much speculation about possible reform programs that Kappos may enact.  The USTPO faces a few major problems due to the increase in applications and complexity of technology.  The USPTO is backlogged with almost one million patent applications.  Further, some allege that low quality patents are being issued that increases the amount of litigation and/or the costs of litigation.  In addition, the USPTO must harmonize its examination process and patentability requirements with recent court rulings.

In March 2009, David Kappos, while working for IBM, offered his support on behalf of IBM for the S. 515 Patent Reform Act of 2009.  David Kappos’s testimony focused on the benefit that improving the value of patents and controlling litigation may have on innovation.  To overcome the alleged low quality patent problem, the Act proposed two solutions.  One solution is to allow third parties to submit prior art to the USTPO during examination and to comment on how that prior art is relevant.  Secondly, the Act proposed allowing the public to submit relevant information, after a patent has issued, about whether the patent was properly issued.  These solutions open up patentability determinations by encouraging the public to come forward with any relevant information.  They allow the Patent Office to become more collaborative, which harnesses the knowledge of the public and may provide for issuance of a greater quality of patents. Additionally, allowing the public to submit information regarding the validity of a patent after the patent has issued may eventually decrease patent litigation costs.

Patent litigation has significantly increased in the last ten years.  Some allege the increase is due to low quality patents and uncertainty in intellectual property law.  Litigation diminishes innovation by discouraging other inventors and competitors in the field.  Requirements of patentability and validity must be clear; otherwise, the public cannot determine the scope of a patent which may lead to more litigation.  Unclear patentability also impedes the public from investing in technology that might be in the scope of a patent but for which the potential applicant may be unsure because of the requirements.  The market favors licensing and fair deal making.  When infringement occurs, there needs to be damages, but only computed in an efficient manner that does not interfere with innovation.

To overcome the increase in litigation, Kappos supported a set of three methods that courts may use in determining damages.  First, courts can adopt the“essential features” factor which was used in the Supreme Court case Quanta v. LG Electronics.  Damages are determined by what the inventor actually invented, i.e. the “essential features.”  Therefore, an inventor will only receive the value of their contribution, and whether background or contextual elements are added to their claims is irrelevant. The second method may take into consideration where a component is placed in a product.  This approach determines whether demand for the product was driven by a certain feature of the patented invention or by other components. The last method  may increase the strength of the district courts in making royalty decisions.  Better articulation and logic by the district courts may be better for review later, and may instigate licensing and other deal making.

The Patent Reform Act of 2009 also proposes: changing the patent filing system to a first to file system; revising the prior art definition to include inventions that were “otherwise available to the public”; permitting a company to file an application on behalf of an inventor when there is an obligation to assign; eliminating interferences; expanding inter partes reexamination; codifying the 2007 In re Seagate Technology, LLC decision’s standard for willful infringement; and permitting use of evidence of prior public use or sale as permissible grounds for reexamination.

In the months to come, if Kappos gets the position as director of the USPTO, the programs ultimately implemented and positions supported will become evident.  The Act was proposed when Kappos was working for IBM; however, his responsibility will include all inventors, small and large, in the intellecutal property field.  In his confirmation hearing on July 29, 2009, David stated “I am mindful that the USPTO serves the interests of all innovators in this country, small and large, corporate and independent, academic and applied, and most importantly the public interest.  While I have spent my career to date at a large corporate enterprise, I am familiar with the concerns of all USPTO constituents, including small and independent inventors, the venture and start-up community, public interest groups, the patent bar and many others, and I will reach out to all of them.”