New Federal Circuit Opinions - December 30, 2013

Allergan, Inc. v. Athena Cosmetics, Inc., No. 2013-1286 (Fed. Cir. Dec. 30, 2013).

Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, No. 2012-1485 (Fed. Cir. Dec. 30, 2013).

New Federal Circuit Opinions - December 26, 2013

Kilopass Tech., Inc. v. Sidense Corp., No. 2018-1193 (Fed. Cir. Dec. 26, 2013)

New Federal Circuit Opinions - December 14, 2013

Motorola Mobility LLC v. Int'l Trade Comm'n, No. 2012-1535 (Fed. Cir. Dec. 16, 2013).

New Federal Circuit Opinions - December 13, 2013

Suprema, Inc. v. Int'l Trade Comm'n, Nos. 2012-1170, -1026, -1124 (Fed. Cir. Dec. 13, 2013).

CBT Flint Partners, LLC v. Return Path, Inc., No. 2013-1036 (Fed. Cir. Dec. 13, 2013).

New Federal Circuit Opinions - December 11, 2013

Galderma Labs., L.P. v. Tolmar, Inc., No. 2013-1034 (Fed. Cir. Dec. 11, 2013).

New Federal Circuit Opinions - December 3, 2013

Futurewei Techs., Inc. v. Acacia Research Corp., No. 2013-1090 (Fed. Cir. Dec. 3, 2013).

New Federal Circuit Opinions - November 18, 2013

Apple Inc. v. Samsung Electronics Co., No. 2013-1129 (Fed. Cir. Nov. 18, 2013).

New Federal Circuit Opinions - November 15, 2013

Ohio Willow Wood Co. v. Alps SOuth, LLC, Nos. 2012-1642, 2013-1024 (Fed. Cir. Nov. 15, 2013).

New Federal Circuit Opinions - November 5, 2013

Sanofi-Aventis v. Pfizer Inc., No. 2012-1345 (Fed. Cir. Nov. 5, 2013).

Fresenius USA, Inc. v. Baxter Int’l, Inc., Nos. 2012-1334, -1335 (Fed. Cir. Nov. 5, 2013) (Order).

New Federal Circuit Opinions - November 4, 2013

LifeScan Scotland, Ltd. v. Shasta Techs., LLC, No. 2013-1271 (Fed. Cir. Nov. 4, 2013).

Integrated Tech. Corp. v. Rudolph Techs., Inc., Nos. 2012-1593, -1618 (Fed. Cir. Nov. 4, 2013).

New Federal Circuit Opinions - October 30, 2013

Randall Mfg. v. Rea, No. 2012-1611 (Fed. Cir. Oct. 30, 2013).

New Federal Circuit Opinions - October 29, 2013

Synthes USA, LLC v. Spinal Kinetics, Inc., Nos. 2013-1047, -1059 (Fed. Cir. Oct. 29, 2013).

New Federal Circuit Opinions - October 22, 2013

Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, No. 2013-1007 (Fed. Cir. Oct. 22, 2013).

New Federal Circuit Opinions - October 18, 2013

In re Biedermann, No. 2013-1080 (Fed. Cir. Oct. 18, 2013).

New Federal Circuit Opinions - October 17, 2013

Keurig, Inc. v. Sturm Foods, Inc., No. 2013-1072 (Fed. Cir. Oct. 17, 2013).

New Federal Circuit Opinions - October 10, 2013

nCube Corp. v. SeaChange Int’l, Inc., No. 2013-1066 (Fed. Cir. Oct. 10, 2013).

New Federal Circuit Opinions - October 9, 2013

Intellect Wireless, Inc. v. HTC Corp., No. 2012-1658 (Fed. Cir. Oct. 9, 2013).

New Federal Circuit Opinions - October 7, 2013

Broadcom Corp. v. Emulex Corp., No. 2013-1309 (Fed. Cir. Oct. 7, 2013).

New Federal Circuit Opinions - October 3, 2013

Microsoft Corp. v. Int'l Trade Comm'n, Nos. 2012-1445, -1535 (Fed. Cir. Oct. 3, 2013).

New Federal Circuit Opinions - October 2, 2013

TecSec, Inc. v. Int’l Bus. Machs. Corp., No. 2012-1415 (Fed. Cir. Oct. 2, 2013).

New Federal Circuit Opinions - September 26, 2013

MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., Nos. 2012-1518, -1527 (Fed. Cir. Sept. 26, 2013).

Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc., No.2013-1335 (Fed. Cir. Sept. 26, 2013).

New Federal Circuit Opinions - September 24, 2013

Network Signatures, Inc. v. State Farm Mut. Auto. Ins. Co., No. 2012-1492 (Fed. Cir. Sept. 24, 2013).

Rambus Inc. v. Rea, No. 2012-1634 (Fed. Cir. Sept. 24, 2013).

New Federal Circuit Opinions - September 11, 2013

St. Jude Med., Inc. v. Access Closure, Inc., No. 2012-1452 (Fed. Cir. Sept. 11, 2013).

High Point Design LLC v. Buyer’s Direct, Inc., No. 2012-1455 (Fed. Cir. Sept. 11, 2013).

New Federal Circuit Opinions - September 6, 2013

Wawrzynski v. H. J. Heinz Co., No. 2012-1624 (Fed. Cir. Sept. 6, 2013).

New Federal Circuit Opinions - September 5, 2013

Accenture Global Servs., GmbH v. Guidewire Software, Inc., No. 2011-1486 (Fed. Cir. Sept. 5, 2013).

New Federal Circuit Opinions - September 4, 2013

Soverain Software LLC v. Newegg, Inc., No. 2011-1009 (Fed. Cir. Sept. 4, 2013).

New Federal Circuit Opinions - September 3, 2013

Bayer CropScience AG v. Dow AgroSciences LLC, No. 2013-1002 (Fed. Cir. Sept. 3, 2013)

New Federal Circuit Opinions - August 30, 2013

Trading Techs. Int'l, Inc. v. Open E Cry, LLC, No. 2012-1583 (Fed. Cir. Aug. 30, 2013).

New Federal Circuit Opinions - August 29, 2013

Aevoe Corp. v. AE Tech Co., No. 2012-1422 (Fed. Cir. Aug. 29, 2013).

New Federal Circuit Opinions - August 23, 2013

Apple, Inc. v. Samsung Electronics Co., No. 2012-1600, -1606, 2013-1146 (Fed. Cir. Aug. 23, 2013).

SkinMedica, Inc. v. Histogen Inc., No. 2012-1560 (Fed. Cir. Aug. 23, 2013).

New Federal Circuit Opinions - August 19, 2013

Univ. of Utah v. Max Planck Gesellschaft zur Forderung der Wissenschaften e.V., No. 2012-1540 (Fed. Cir. Aug. 19, 2013).

New Federal Circuit Opinions - August 14, 2013

Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc., No. 2012-1581 (Fed. Cir. Aug. 14, 2013).

New Federal Circuit Opinions - August 13, 2013

Monolithic Power Sys., Inc. v. O2 Micro Int’l Ltd., No. 2012-1221 (Fed. Cir. Aug. 13, 2013).

New Federal Circuit Opinions - August 12, 2013

Leo Pharm. Prods., Ltd. v. Rea, No. 2012-1520 (Fed. Cir. Aug. 12, 2013).

New Federal Circuit Opinions - August 9, 2013

Taurus IP, LLC v. DaimlerChrysler Corp., Nos. 2008-1462, -1463, -1464, -1465 (Fed. Cir. Aug. 9, 2013).

Aria Diagnostics, Inc. v. Sequenom, Inc., No. 2012-1531 (Fed. Cir. Aug. 9, 2013).

New Federal Circuit Opinions - August 7, 2013

Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc., No. 2012-1510 (Fed. Cir. Aug. 7, 2013).

Apple Inc. v. Int'l Trade Comm'n, No. 2012-1338 (Fed. Cir. Aug. 7, 2013).

New Federal Circuit Opinions - August 6, 2013

3M Innovative Prop. Co. v. Tredegar Co., No. 2012-1241 (Fed. Cir. Aug. 6, 2013).

Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., Nos. 2012-1463, -1501 (Fed. Cir. Aug. 6, 2013).

New Federal Circuit Opinions - July 31, 2013

Plantronics, Inc. v. Aliph, Inc., No. 2012-1355 (Fed. Cir. July 31, 2013).

New Federal Circuit Opinions - July 26, 2013

Teva Pharms. USA, Inc. v. Sandoz, Inc., Nos. 2012-1567, -1568, -1569, -1570 (Fed. Cir. July 26, 2013).

Charles Machine Works, Inc. v. Vermeer Mfg. Co., No. 2012-1578 (Fed. Cir. July 26, 2013).

New Federal Circuit Opinions - July 25, 2013

In re Bimeda Research & Development Limited, No. 2012-1240 (Fed. Cir. July 25, 2013).

New Federal Circuit Opinions - July 22, 2013

Novozymes A/S v. DuPont Nutrition Biosciences APS, No. 2012-1433 (Fed. Cir. July 22, 2013).

New Federal Circuit Opinions - July 18, 2013

In re Adler, No. 2012-1610 (Fed. Cir. July 18, 2013).

Three Tips For Protecting Patent Rights At Chinese Customs

The article co-authored by Mei & Mark's Jiwei Zhang and titled “3 Tips For Protecting Patent Rights At Chinese Customs” has been published in IP Law360 and International Trade Law360.
 
A copy of the article is reproduced here:

Law360, New York (July 18, 2013, 1:22 PM ET) — Many intellectual property owners are familiar with functions of the U.S. Custom and Border Protection in protecting their IP rights at the U.S. border. CBP is authorized to exclude, detain and/or seize imported merchandise that infringes federally registered and recorded trademarks and copyrights and/or is covered by an exclusion order issued by the U.S. International Trade Commission in patent cases. Many IP owners do not know, however, that they can also take actions before infringing merchandise arrive in the U.S.

The Customs of the People’s Republic of China (“CPRC”) is one good example. It has procedures in place to protect IP rights. Article 3 of the “Regulation of the People’s Republic of China on the Customs Protection of Intellectual Property Rights” states that “[t]he People’s Republic of China forbids import or export of goods that infringe intellectual property rights.” Since the procedures for protecting trademarks and copyrights are well established, we focus on how patent owners can take advantage of this regulation. Here are three practice tips for patent owners.

1) Obtain Chinese Patents and Record Your Chinese Patents With CPRC

Article 2 of the Regulation states that “[c]ustoms protection of intellectual property rights used in these Regulations refers to protection of the exclusive right to use a trademark, copyright and related rights, and patent right (referred hereinafter as ‘intellectual property rights’) over imported or exported goods that are protected by laws and administrative regulations of the People’s Republic of China.” This means that only Chinese patent rights are protected by the regulation. To become a Chinese patent owner, you could file an original patent application, or you could file a patent application based on your U.S. or Patent Cooperation Treaty application.

After you obtain a Chinese patent, you should consider recording your Chinese patent with CPRC to protect your rights before any infringing products are being exported from China. There are two types of protection procedures provided by CPRC — application protection procedure (“APP”) and duty protection procedure (“DPP”). APP is a case-by-case procedure and does not require recordation of patent right. Patent owners have to take initial action to initiate this CPRC procedure.

DPP, however, requires recordation. Once recordation is complete, CPRC will take initial action and inform patent owners when it finds that suspected infringing products are about to be imported or exported.

The requirements for recordation are as follows:
• CPRC requires that only patent owners and their agents can apply for recordation.
• Licensees are not qualified to apply for recordation.
• Either patent owners or their agents must be located in mainland China.
• One recordation could include one patent only.
• There cannot be more than two contact persons.
• The contact person(s) must be standby 24/7 to be contacted by the local CPRC office.

2) Keep an Eye on Your Competitors

It is crucial for patent owners to know their competitors well, especially when they use APP without first recording their patents with CPRC.

For example, in a 2011 case regarding APP, a well-known printing supplies company in Zhuhai, China (“Company N”) found that another local company (“Company S”) manufactured a large number of printer cartridges for export to Japan using Company N’s patented technology. [Note that the identities of the companies are withheld for confidentiality reasons.] Although Company N did not record its patent with CPRC, it still requested CPRC to detain Company S’s suspected products and supplied supporting evidence.

On Nov. 24, 2011, CPRC suspended Company S’ clearance of products. After further examination, CPRC confirmed that the infringing products are over 40,000 in number. CPRC then seized these products. Consequently, Company S and its Japanese client signed an agreement with Company N and promised that they would not infringe Company N’s patents in the future.

Even in DPP, a patent owner’s knowledge can help CPRC expedite the process. For example, in a 2008 DPP case, an electronic technology company (“Company A”) owns a patent regarding circuit breakers and recorded the patent with CPRC. Company A exported most of its circuit breakers to the U.S. When Company A noticed an unusual decease of its market share, it investigated and found another company (“Company B”) in Guangdong province that manufactured similar products for export to the U.S. In January 2008, Company A purchased Company B’s suspected products in the U.S. for evaluation. In May 2008, Company A filed a request to CPRC in Shenzhen and CPRC subsequently detained the suspected products.

3) Patent Owners Should Consider Obtaining Court Orders

In APP, once a patent owner’s detention application is accepted, CPRC will issue a notice to detain suspected products. Meanwhile, the patent owner needs to request a local court to issue a preliminary injunction order to enjoin infringement or preserve evidence. If a court order is issued within twenty business days after the detention, CPRC will continue detaining the suspected products while assisting the local court to make a final decision on infringement. Otherwise, CPRC will release the suspected products.

In DPP, after recordation, CPRC will inform the patent owner when it finds that suspected infringing products are about to be imported or exported. Upon receiving the notification, the patent owner needs to file an application requesting CPRC to detain the suspected infringing products within three business days. CPRC will then determine whether these products are indeed infringing products within 30 business days after the detention. Once CPRC finds infringement, it will seize infringing products and issue penalties. If CPRC cannot determine whether there is infringement, the patent owner would then need to request a local court to issue a preliminary injunction order to enjoin infringement or preserve evidence. If a court order is issued within 50 business days after the detention, CPRC will continue detaining the suspected products while assisting the local court to make a final decision on infringement. Otherwise, CPRC will release the suspected products.

Therefore, in addition to working with the U.S. Customs and Board Protection, IP owners, including patent owners, could also try to stop infringing products at the country of production. If used properly, it can be an effective option to protect one’s IP rights.

–By Mandy Wei, Ninestar Image Tech Limited, and Jiwei Zhang, Mei & Mark LLP. Mandy Wei is a legal counsel at China-based Ninestar Image Tech Limited. Jiwei Zhang is an attorney with Mei & Mark in Washington, D.C.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

New Federal Circuit Opinions - July 9, 2013

Smith & Nephew, Inc. v. Rea, No. 2012-1343 (Fed. Cir. July 9, 2013).

.

New Federal Circuit Opinions - July 2, 2013

Fresenius USA, Inc. v. Baxter Int'l, Inc., Nos. 2012-1334, -1335 (Fed. Cir. July 2, 2013).

New Federal Circuit Opinions - June 26, 2013

Wyeth v. Abbott Labs., Nos. 2012-1223,-1224 (Fed. Cir. June 26, 2013).

New Federal Circuit Opinions - June 25, 2013

Commil USA, LLC v. Cisco Sys., Inc., No. 2012-1042 (Fed. Cir. June 25, 2013).

New Federal Circuit Opinions - June 21, 2013

Ultramercial, LLC v. Hulu, LLC, No. 2010-1544 (Fed. Cir. June 21, 2011).

New Federal Circuit Opinions - June 18, 2013

Novo Nordisk A/S v. Caraco Pharm. Labs., No. 2011-1223 (Fed. Cir. June 18, 2013).

U.S. Supreme Court Opinion - June 17, 2013

FTC v. Actavis, Inc., 570 U. S. ____ (2013).

New Federal Circuit Opinions - June 14, 2013

Robert Bosch LLC v. Pylon Mfg. Corp., No. 2011-1363 (Fed. Cir. June 14, 2013) (en banc).

U.S. Supreme Court Opinion - June 13, 2013

Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U. S. ____ (2013)

New Federal Circuit Opinions - June 10, 2013

Organic Seed Growers & Trade Ass’n v. Monsanto Co., No. 2012-1298 (Fed. Cir. June 10, 2013).

New Federal Circuit Opinions - June 7, 2013

InterDigital Commc'ns, LLC v. Int'l Trade Comm'n, No. 2012-1628 (Fed. Cir. June 7, 2013).

New Federal Circuit Opinions - June 3, 2013

Regents of the Univ. of Minn. v. AGA Med. Corp., No. 2012-1167 (Fed. Cir., June 3, 2013).

New Federal Circuit Opinions - May 21, 2013

Douglas Dynamics, LLC v. Buyers Prods. Co., Nos. 2011-1291, 2012-1046, -1057, -1087, -1088 (Fed. Cir. May 21, 2013).

Ateliers de la Haute-Garonne v. Broetje Automation USA Inc., Nos. 2012-1038, -1077 (Fed. Cir. May 21, 2013).

New Federal Circuit Opinions - May 20, 2013

Dey, L.P. v. Sunovion Pharm., Inc., No. 2012-1428 (Fed. Cir. May 20, 2013).

Aventis Pharm., Inc. v. Amino Chems. Ltd., Nos. 2011-1335, -1336 (Fed. Cir. May 20, 2013).

Alexsam, Inc. v. IDT Corp., Nos. 2012-1063, -1064 (Fed. Cir. May 20, 2013).

New U.S. Supreme Court Opinion - May 16, 2013

Forrester Envtl. Servs., Inc. v. Wheelabrator Techs., Inc., No. 2012-1686 (Fed. Cir. May 16, 2013).

New U.S. Supreme Court Opinion - May 13, 2013

Bowman v. Monsanto Co., 569 U. S. ____ (2013).

New Federal Circuit Opinions - May 13, 2013

Motiva, LLC v. Int'l Trade Comm'n, No. 2012-1252 (Fed. Cir. May 13, 2013).

New Federal Circuit Opinions - May 10, 2013

Sanofi–Aventis Deutschland GmbH v. Genentech, Inc., No. 2012-1454 (Fed. Cir. May 10, 2013).

CLS Bank Int’l v. Alice Corp., No. 2011-1301 (Fed. Cir. May 10, 2013).

New Federal Circuit Opinions - May 7, 2013

Baron Servs. v. Media Weather Innovations LLC, Nos. 2012-1285, -1443 (Fed. Cir. May 7, 2013).

New Federal Circuit Opinions - May 1, 2013

Allergan, Inc. v. Sandoz Inc., Nos. 2011-1619, -1620, -1635, -1639 (Fed. Cir. May 1, 2013).

Versata Software, Inc. v. SAP Am., Inc., Nos. 2012-1029, -1049 (Fed. Cir. May 1, 2013).

New Federal Circuit Opinions - Apr. 26, 2013

Biosig Instruments, Inc. v. Nautilus, Inc., No. 2012-1289 (Fed. Cir. Apr. 26, 2013).

New Federal Circuit Opinions - Apr. 19, 2013

Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., No. 2012-1247 (Fed. Cir. Apr. 19, 2013).

Aspex Eyewear, Inc. v. Zenni Optical, LLC, No. 2012-1318 (Fed. Cir. Apr. 19, 2013).

New Federal Circuit Opinions - Apr. 18, 2013

K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., No. 2012-1425 (Fed. Cir. Apr. 18, 2013).

New Federal Circuit Opinions - Apr. 15, 2013

Biogen Idec, Inc. v. GlaxoSmithKline LLC, No. 2012-1120 (Fed. Cir. Apr. 15, 2013).

Bayer Healthcare Pharm., Inc. v. Watson Pharm., Inc., Nos. 2012-1397, -1398, -1400 (Fed. Cir. Apr. 15, 2013).

New Federal Circuit Opinions - Apr. 5, 2013

In re Morsa, No. 2012-1609 (Fed. Cir. Apr. 5, 2012).

New Federal Circuit Opinions - Apr. 4, 2013

Saffran v. Johnson & Johnson, No. 2012-1043 (Fed. Cir. Apr. 4, 2013).

New Federal Circuit Opinions - Mar. 26, 2013

Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., Nos. 2011-1218, -1238 (Fed. Cir. Mar. 26, 2013).

In re Owens, No. 2012-1261 (Fed. Cir. Mar. 26, 2013).

New Federal Circuit Opinions - Mar. 25, 2013

Dawson v. Dawson, Nos. 2012-1214,-1215,-1216,-1217 (Fed. Cir. Mar. 25, 2013).

Checkpoint Sys., Inc. v. All-Tag Sec. S.A., No. 2012-1085 (Fed. Cir. Mar. 25, 2013).

New Federal Circuit Opinions - Mar. 13, 2013

Aristocrat Techs. Austl. Pty, Ltd. v. Int’l Game Tech., No. 2010-1426 (Fed. Cir. Mar. 13, 2013).

SynQor, Inc. v. Artesyn Techs., Inc., Nos. 2011-1191, -1192, -1194, 2012-1070, -1071, -1072 (Fed. Cir. Mar. 13, 2013).

Three Lessons from Apple’s “iPad” Trademark Dispute in China

NOTE: This article was published by IP and Technology Law360 in a slightly modified form on March 6, 2013.

One of the high-profile intellectual property (“IP”) cases in 2012 was the dispute between Apple and Proview Technology of Shenzhen, China regarding Apple’s use of the “iPad” mark in China. Apple eventually paid $60 million to settle the dispute. The implications from this dispute, including how it may impact Apple’s business in the U.S. and how Samsung missed a golden opportunity in its patent war against Apple, are less understood. This article discusses three general lessons that U.S. companies and IP professionals can learn from this dispute.

First, understand potential risks of doing business in China. Doing business in China can be very rewarding, but one must also understand the possible risks. This article focuses on risks involving trademarks.

In Apple’s case, Apple, through an intermediate company, purchased the right to use the “iPad” mark in various countries from a Proview entity in Taiwan. Later, however, Proview filed a trademark infringement lawsuit against Apple in China, claiming that the purchase agreement does not cover China.

It appears that the purchase agreement was not clear as to whether it covers the “iPad” mark in China. Since China is a civil law country, parol evidence regarding the parties’ intent carries little or no weight even if the agreement is ambiguous. To effect a transfer of the right, the agreement itself must comply with the statutory requirements. After a court initially ruled in Proview’s favor, the Chinese authorities began seizing iPads in several Chinese cities.

Luckily for Apple, Proview only sought to stop Apple’s sales of iPads in China, but did not seek to stop Apple’s manufacturing of iPads in China that would be shipped to the U.S. and other countries. Essentially, Apple may have dodged a lethal bullet because a less-known aspect of China’s Trademark Law is not even on the radar of many Chinese trademark lawyers.

Specifically, China’s Trademark Law does not explicitly say whether the manufacture of trademark-bearing products in China exclusively for export infringes the trademark rights of the party that has registered the trademark in China. Several Chinese courts have ruled that such manufacturing activities in China constitute trademark infringement regardless of whether the products are bound exclusively for export.

For example, in 2002, a Chinese court found that manufacturing branded products exclusively for export in China constitutes infringement of the Chinese trademark owner’s rights. Nike Int’l Ltd. v. Cidesport, Dec. 10, 2002, Civ. No. 55 (Shenzhen Intermediate People’s Court) (in Chinese). In that case, Nike and Cidesport owned the exclusive-use rights to the “NIKE” mark in China and Spain, respectively. Cidesport authorized a Chinese manufacturer to produce men’s ski jackets bearing the “NIKE” mark for export to Spain. Nike alleged that the Chinese manufacturer’s production infringed on Nike’s exclusive-use rights of the trademark “NIKE” in China despite the fact that the ski jackets would be exported to Spain. The Shenzhen Intermediate People’s Court ordered Cidesport and its Chinese manufacturer to halt production, destroy all branded products, and compensate Nike.

Therefore, it is important for U.S. companies that have their products manufactured in China to have a proper clearance procedure for trademarks in China, even if they do not sell such products in China. Obviously, if Proview had requested an order prohibiting Apple from manufacturing iPads in China, it would have posed a much bigger threat to Apple since it could affect Apple’s business internationally. This leads to our second general lesson.

Second, appreciate the international aspects of today’s IP practice. In today’s global business environment, IP practice has also evolved. One must appreciate the international aspects of today’s IP practice in order to properly manage and minimize risks for companies doing business internationally. As discussed above, Proview’s claim of ownership of the “iPad” mark in China could have threatened Apple’s business not only in China, but in other countries as well.

Therefore, for contentious IP matters such as patent litigation, optimal solutions often require global strategies. For example, as companies protect their inventions worldwide by filing for patent protection in different countries, patent litigation can turn into global warfare. Hypothetically, when a company sues its competitor for patent infringement in the U.S. and seeks an injunction to stop the competitor from selling competing products in the U.S., the company may also choose to sue its competitor for patent infringement in China, where the competitor’s products are manufactured. Note that under China’s Patent Law, manufacturing activities constitute patent infringement even if the products are bound exclusively for export.

In this manner, the company can manage its litigation risks in the U.S. by hedging its bets in China. In other words, even if the company loses the lawsuit in the U.S., it may win the lawsuit in China under China’s Patent Law to stop the manufacturing of the competing products, thus potentially obtaining the same business goal — stopping the competitor from selling competing products in the U.S.

Conversely, the competitor, when facing a patent infringement lawsuit brought by the first company in the U.S., could proactively sue the first company for patent infringement in China, where the first company’s products are also manufactured. In this manner, the competitor manages its own litigation risks by creating leverage. For example, if the competitor loses in the U.S., but prevails in China to stop manufacturing of the first company’s products, neither company may be able to sell its products in the U.S. and each would then be more willing to reach a business compromise to settle their dispute. This leads to our third general lesson.

Third, leverage competitors’ legal trouble in China for one’s own competitive business advantage in the U.S.  For the reasons below, Apple’s legal trouble in China regarding the “iPad” mark actually was an opportunity for a number of Apple’s competitors, such as Samsung and HTC. Unfortunately, no one seized this opportunity.

For example, another high-profile IP dispute in 2012 was the global patent war for smartphones and tablets between Apple and Samsung, which resulted in a verdict of over $1 billion in damages against Samsung (NOTE: the court since has vacated a portion of the verdict). The two have litigated and continue to litigate in many countries.

Because China’s Trademark Law likely prohibits manufacturing of products in China that would infringe someone else’s mark, as discussed above, the “iPad” mark in China could have been a huge bargaining chip for Samsung. Indeed, Proview was in a bankruptcy proceeding when it sued Apple for trademark infringement in China. Had Samsung stepped in and purchased the “iPad” mark in China from Proview, Samsung could have extracted much more value from this mark. This could have helped Samsung gain leverage in its global patent war with Apple.

The lesson here, therefore, is to monitor competitors’ legal troubles in key countries. And  be prepared to seize the opportunity for one’s own competitive business advantage.

            Overall, in today’s global economy, IP practice has become increasingly multi-faceted and multi-national. Even if a dispute arises in one specific country, it might impact a company’s business elsewhere. Therefore, a company doing business globally should think about a global strategy for resolving localized disputes. There are many lessons that a company can learn from Apple’s “iPad” trademark dispute in China.

About the Author:

Lei Mei is the managing partner of Mei & Mark LLP, an Intellectual Property and Litigation law firm based in Washington, DC.  He is the author of a new book ConductingBusiness in China: An Intellectual Property Perspective (Oxford University Press 2012).

New Federal Circuit Opinions - Mar. 7, 2013

In re Hubbell, No. 2011-1547 (Fed. Cir. Mar. 7, 2013).

New Federal Circuit Opinions - Mar. 6, 2013

Radio Sys. Corp. v. Lalor, No. 2012-1233 (Fed. Cir. Mar. 6, 2013).

New Federal Circuit Opinions - Mar. 4, 2013

Move, Inc. v. Real Estate Alliance Ltd., No. 2012-1342 (Fed. Cir. Mar. 4, 2013).

The Demise of 35 U.S.C. § 102(f)

The main provisions of the Leahy-Smith America Invents Act (AIA) will go into effect on March 16, 2013. Among these, 35 U.S.C. § 102(f), which provided a defense to patent infringement based on lack of inventorship, will be repealed. This section provided that a person is not entitled to a patent if “he did not himself invent the subject matter sought to be patented.”

However, 35 U.S.C. § 101 will to some extent, at least, fill that gap. Thus, the repeal of § 102(f) will require those seeking to invalidate a patent or prevent a patent from being granted to fall back on § 101. This raises this question of how “lack of inventorship” under § 101 will be treated the same and how it will be treated different from § 102(f). For example, will it now be treated more similarly to the subject-matter eligibility requirement that coexists in § 101?

First, some review. Although sometimes overlooked, § 101 actually provides the basis for four requirements to obtain a patent: (i) inventorship, (ii) patent-eligible subject matter, (iii) utility, and (iv) absence of double-patenting on an anticipation rationale. As Joe Matal discussed in his excellent Guide to the Legislative History of the America Invents Act, the legislative histories of both the 1952 Patent Act and the AIA include commentary that § 101 requires the named inventor to have actually invented the subject matter that he seeks to patent.

Meanwhile, defenses that may be asserted in any patent infringement action are enumerated in 35 U.S.C. § 282. In the new Post-Grant Review established by the AIA, review is explicitly limited to the grounds for invalidation specified in § 282. In relevant part, § 282 states that an accused infringer may assert “[i]nvalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability” (emphasis added).

Professor David Hricik, interestingly, has made the case that the defenses available under § 282(b) may not include the patent-eligible subject matter requirement as “a condition for patentability.” Professor Hricik also appears to believe that § 282 is the exclusive source of defenses to infringement in district court litigation, just as in the new Post-Grant Review and Inter Partes Review. If Professor Hricik is correct, then courts have been wrongly assuming that a patent can properly be invalidated on subject-matter-eligibility grounds during litigation.

Since Professor Hricik’s based his conclusion that subject-matter eligibility falls outside of the ambit of § 282(b) on the wording of §§ 282 and 101 generally, then § 282(b) should similarly be interpreted to leave out the lack-of-inventorship defense. If so, lack of inventorship does not provide a basis for invalidity in Post-Grant Review and probably also does not provide a defense to infringement during litigation. (Inter Partes Review, meanwhile, is limited even more narrowly to §§ 102 and 103.)

Similarly, statutory double-patenting and the other requirements of § 101 would also not provide a defense to infringement during litigation. This would turn out to be very strange since, e.g., courts have frequently recognized judicially-created obviousness-type double patenting as a defense to infringement during litigation.

Two observations in conclusion. First, assuming that Professor Hricik is correct, at what stage could inventorship actually be challenged? The USPTO’s implementation of the AIA’s Third-Party Submissions provision permits persons to submit, before issuance of a patent, “patents, published patent applications, or other printed publications of potential relevance to examination.” However, given the facts that lack-of-inventorship evidence often does not take the form of a printed publication and that patents are often not published before issuance, in the vast majority of cases this will not be a useful way to challenge a patent before issuance.

Second, the Supreme Court stated in Bilski v. Kappos, 130 S. Ct. 3218 (2010), that the subject-matter eligibility requirement of § 101 presents a “threshold test.” 130 S. Ct. at 3225. Certain judges on the Federal Circuit appear to interpret this “threshold” language as imposing some kind of procedural framework. For example, Judge Mayer wrote in his dissent in Myspace, Inc. v. GraphOn Corp., 672 F.3d 1250 (Fed. Cir. 2012):

The issue of whether a claimed method meets the subject matter eligibility requirements contained in 35 U.S.C. § 101 is an “antecedent question” that must be addressed before this court can consider whether particular claims are invalid as obvious or anticipated. In re Comiskey, 554 F.3d 967, 975 n.7 (Fed. Cir. 2009). . . . This court must first resolve the issue of whether the GraphOn patents are directed to an unpatentable “abstract idea” before proceeding to consider subordinate issues related to obviousness and anticipation.

672 at 1264 (emphasis added). This point specifically, and the topic generally, have been discussed at the Patently-O Blog.

Given the Supreme Court’s basis in Bilski for stating that subject-matter eligibility is “threshold test," which appears to be the language of § 101 and its location in the Patent Act, there is no obvious reason why the other three requirements of § 101 also should not be considered to be of a procedurally “threshold” nature. Thus, with the repeal of § 102(f) we may come to find inventorship also being explicitly treated as a “threshold test” that must be resolved before “subordinate issues” such as obviousness and anticipation.

New Federal Circuit Opinions - Feb. 20, 2013

Brilliant Instruments, Inc. v. GuideTech, LLC., No. 2012-1018 (Fed. Cir. Feb. 20, 2013).

New Federal Circuit Opinions - Feb. 14, 2013

Cephalon, Inc. v. Watson Pharms., Inc., No. 2011-1325 (Fed. Cir. Feb. 14, 2013).

New Federal Circuit Opinions - Feb. 11, 2013

Function Media L.L.C. v. Google, Inc., No. 2012-1020 (Fed. Cir. Feb. 13, 2013).

New Federal Circuit Opinions - Feb. 11, 2013

Semiconductor Energy Lab. Co. v. Nagata, No. 2012-1245 (Fed. Cir. Feb. 11, 2013).

New Federal Circuit Opinions - Feb. 5, 2013

Arkema, Inc. v. Honeywell Int’l, Inc., No. 2012-1308 (Fed. Cir. Feb. 5, 2013).

New Federal Circuit Opinions - Feb. 4, 2013

Accent Packaging, Inc. v. Leggett & Platt, Inc., No. 2012-1011 (Fed. Cir. Feb. 4, 2013).

New Federal Circuit Opinions - Jan. 25, 2013

Hall v. Bed Bath & Beyond, Nos. 2011-1165, -1235 (Fed. Cir. Jan. 25, 2012).

New Federal Circuit Opinions - Jan. 23, 2013

Rexnord Indus. v. Kappos, No. 2011-1434 (Fed. Cir. Jan. 23, 2013).

New Federal Circuit Opinions - Jan. 22, 2013

Soverain Software LLC v. Newegg, Inc., No. 2011-1009 (Fed. Cir. Jan. 22, 2013).

New Federal Circuit Opinions - Jan. 17, 2013

Allflex U.S.A., Inc. v. Avid Identification Sys., Inc., No. 2011-1621 (Fed. Cir. Jan. 17, 2012).

New Federal Circuit Opinions - Jan. 16, 2013

Parallel Networks, LLC v. Abercrombie & Fitch, Co., No. 2012-1227 (Fed. Cir. Jan. 16, 2013).

New Federal Circuit Opinions - Jan. 10, 2013

InterDigital Commcn’s, LLC v. Int’l Trade Comm’n, No. 2010-1093 (Fed. Cir. Jan. 10, 2013) (Order denying Nokia's combined petition for panel rehearing and for rehearing en banc).