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MPAA Praises Senate Judiciary Committee’s Action on Bill to Make Illegal Streaming a Felony

June 16, 2011

The U.S. Senate Judiciary Committee’s June 16 approval of a bill to make illegal streaming a felony was praised by groups closely aligned with Motion Picture Association of America.

The Senate committee approved the Commercial Felony Streaming Act (S. 978), which was sponsored May 12 by Senators Amy Klobuchar (D-MN) and John Cornyn (R-TX). This bill would reconcile the current legal disparity between the unlawful distribution of content through streaming and peer-to-peer (P2P) downloading. Currently, only P2P downloading is a felony.

It its press release, the MPAA stated:

These are different technologies, but criminals use them for the same purpose: stealing content made by hundreds of people who support their families by working in the entertainment industry. The bill would apply only in cases in which a website operator has willfully and knowingly violated a copyright and profited from it, and does not allow law enforcement to prosecute people who stream videos without intending to profit – a parent sharing a video of her child with friends and family, for example.

“The illegal streaming of motion pictures and television programming is as financially devastating for our industry as is illegal downloading,” said Jean Prewitt,Independent Film & Television Alliance President and CEO.

“We commend the Committee for moving this important piece of legislation for consideration by the Senate,” said National Association of Theatre Owners President and CEO John Fithian. “It will close a gaping hole in the law and go far in protecting the livelihoods of theater employees from the threat posed by illegal streaming.”

“To the technicians, designers, construction workers, and artists who support their families through their work in entertainment, there’s no difference between illegal downloading and illegal streaming – it’s all theft that hurts their work, their wages and their benefits. There should be no difference in the law, either,” said Michael O’Leary, MPAA’s Executive Vice President for Government Affairs.

The groups thanked the Senate committee members for their effort on this bill and urged them to continue working for passage before the full Senate and the House.

USPTO Hires a New Deputy Commissioner for Trademarks

June 15, 2011

The U.S. Patent and Trademark Office on June 15 appointed Mary Boney Denison as Deputy Commissioner for Trademark Operations.

Ms. Denison is a founding partner of Manelli Denison & Selter PLLC in Washington, D.C. where she specialized in trademark prosecution and litigation. She has been an active member of the 5,500 member International Trademark Association (INTA) for many years and served on the INTA Board of Directors for three years. Before founding Manelli Denison & Selter in 1996, she was a partner with Graham & James LLP. Ms. Dennison is a graduate of Duke University and the University of North Carolina School of Law.

“Mary brings unparalleled experience and expertise to the agency and will be a great addition to our team,” said USPTO Director David Kappos in a press release.  “I very much look forward to working with her in her new capacity, and I know she will keep the Trademarks organization on its current path of success.”


Apple Is Sued Over Trademark Rights in “ICloud”

June 9, 2011

Just days after Apple Inc.’s CEO Steve Jobs announced the launch of the company’s new “iCloud” computing telecommunications and data storage platform, the company was sued on June 9 for trademark infringement by an Arizona company called ICloud Communications LLC (ICloud Communications LLC v. Apple Inc., D. Ariz., No. 2:11-cv-01158-DGC, filed 6/9/11).

ICloud’s complaint charges that Apple’s use of the “iCloud” mark constitutes  unfair competition and false designation of origin under Section 43 of the Lanham Act, 15 U.S.C. § 1125(a), and also violates state and common law. The complaint alleges that, at the time of the launch announcement at Apple’s June 6 Worldwide Developer Conference, “Apple was aware of or was willfully blind to iCloud Communications’ use of and rights in the iCloud Marks.”

ICloud’s complaint further points more than 30 years back to a “long and well known history of knowingly and willfully treading on the trademark rights of others.” Specifically, it notes that Apple was first sued in the early 1970s by Beatles record label, Apple Corp. While that suit was settled on the condition that Apple not enter into the music business, Apple was sued again when it became a seller of online music in the 1990s, according to the complaint. ICloud’s complaint further notes that Apple was sued by McIntosh Labs over the naming of the Macintosh computer, that it was sued by the owner of the famous “Mighty Mouse” cartoon character trademark after adopting the name for computer devices, and that in 2007 it used Cisco’s “iPhone” mark even after being unable to acquire licensing rights during two years of discussions.

Among other things, ICloud’s complaint seeks preliminary and permanent injunctive relief, treble damages, and the transfer of Apple’s domain name.

The complaint was filed by Robert J. Itri and Charles E. Runyan of Gallagher & Kennedy, Phoenix.


Librarian of Congress James H. Billington Appoints Maria A. Pallante as the 12th Register of Copyrights

June 1, 2011

Librarian of Congress James H. Billington on June 1 appointed Maria A. Pallante as the 12th Register of Copyrights at the U.S. Copyright Office. Effective immediately, Pallante replaces Marybeth Peters, who retired on Dec. 31, 2010.

"Maria’s background and experience make her an ideal choice to lead the Copyright Office at this time," Billington said in a press release. "She is a thoughtful civil servant, a proven and effective manager, a leader in the wider copyright community and a recognized expert in domestic and international copyright law." In making his announcement, Billington noted the enormously complex issues that the21st century digital landscape presents for both copyright owners and users of copyrighted materials.

"I am honored by the appointment and by Dr. Billington’s trust in me," Pallante said. "I look forward to working with the talented staff of the Copyright Office and Library of Congress to set a path for the future, and I will look to engage and partner with my colleagues in the copyright community in as many ways as possible."

From 1999-2007, Pallante served as intellectual property counsel and director of licensing for the Guggenheim Museums, and has held two senior positions in the Copyright Office. Pallante earned her juris doctor degree from George Washington University and her bachelor’s degree from Misericordia University, where she was also awarded an honorary doctorate of humane letters.

The U.S. Copyright Office has been part of the Library of Congress since 1870. The Library is the nation’s oldest federal cultural institution and the main repository of American authorship.

To learn more about the U.S. Copyright Office, please click here.

Commerce Secretary Locke Sends Letter of Support for America Invents Act

May 31, 2011

U.S. Commerce Secretary Gary Locke on May 31 sent a letter to U.S. House Judiciary Committee Chairman Lamar Smith and Ranking Member John Conyers stating the views of the Obama administration on H.R. 1249, the America Invents Act. The legislation to reform the U.S. patent system was voted out of the House Judiciary Committee by a bipartisan vote of 32 to 3 on April 14, and a similar measure overwhelmingly passed the U.S. Senate on March 8.

According to the U.S. Patent and Trademark Office press release announcing Locke’s support:

The America Invents Act, sponsored by Chairman Smith, enhances the U.S. patent system by increasing certainty of patent rights through implementation of a first-inventor-to-file standard for patent approval while also reducing the need for cost-prohibitive litigation, which all too often ties up new ideas in court, stifling innovation and holding back job creation. It will also allow the United States Patent and Trademark Office (USPTO), which is entirely fee funded, to set and retain the fees it collects from its users. This fee-setting authority will ensure high-quality, timely patent review and address the backlog of patent applications that is currently preventing new innovations from reaching the marketplace. Ultimately, the proposed legislation will provide the most meaningful reforms to the U.S. patent system in 60 years.

“The Administration continues to strongly support the bipartisan efforts of Congress to enact patent reform legislation that will accelerate innovation, and create new jobs, new industries and new economic opportunities for Americans,” Locke said in his letter to Chairman Smith. Enacting a balanced bill is key to the Administration's goal of "out-innovating" our economic competitors “and winning the future -and it can be done with no cost to taxpayers and no addition to the deficit,” Locke wrote.

After CAFC’s En Banc Ruling in Therasense, the PTO Is Studying the Impact on Agency Practice and Procedures and Will ‘Soon’ Issue Guidelines

May 27, 2011

Two days after the Federal Circuit’s en banc ruling in Therasense Inc. v. Becton, Dickinson and Co. that tightened standards for proving the charge of inequitable conduct, the U.S. Patent and Trademark Office May 27 said that it is studying the impact of the court’s decision on agency practice and procedure and will “soon” issue guidance to patent applicants.

Federal Circuit Moves to “But-For” Materiality Standard.

The inequitable conduct defense places patents at risk of being held unenforceable where an affirmative misrepresentation of a material fact, a failure to disclose material information, or a submission of false material information is coupled with the intent to deceive the Patent and Trademark Office during prosecution. An infringer asserting inequitable conduct must prove the separate elements of materiality and intent by clear and convincing evidence.

The Federal Circuit’s May 25 decision noted that the court for years has tried “to address the proliferation of inequitable conduct charges by raising the intent standard alone.” On this point, the appellate court cited its 1988 en banc ruling in Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988), which held that gross negligence is not enough to justify an inference of intent to deceive. “This higher intent standard, standing alone, did not reduce the number of inequitable conduct cases before the courts and did not cure the problem of overdisclosure of marginally relevant prior art to the PTO. To address these concerns, this court adjusts as well the standard for materiality,” said Chief Judge Randall R. Rader, writing for the majority in Therasense.

Among other things, the court’s May 25 ruling rejected the PTO’s current standard for materiality under PTO Rule 56, 37 C.F.R. § 1.56, which provides that information is material if it is not cumulative and:

(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.

Rader said that the court should no longer look to current Rule 56 in defining inequitable conduct “because reliance on this standard has resulted in the very problems this court sought to address by taking this case en banc.” Rader noted that Rule 56 has gone through several metamorphoses over the years, from the “fraud” standard in its original promulgation in 1949 to the “reasonable examiner” standard in 1977 to the current “refutes or is inconsistent with” language. “Tying the materiality standard for inequitable conduct to PTO rules, which understandably change from time to time, has led to uncertainty and inconsistency in the development of the inequitable conduct doctrine,” Rader said. This uncertainty and inconsistency have led to the defense of inequitable conduct being asserted in far too many cases and becoming known as a patent litigation “plague”, he noted. “With inequitable conduct casting the shadow of a hangman’s noose, it is unsurprising that patent prosecutors regularly bury PTO examiners with a deluge of prior art references, most of which have marginal value.”

Dissatisfied with Rule 56, Rader said that Supreme Court authority supported the adoption of a “but-for” test for materiality, which works as follows:

When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Hence, in assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction. … Often the patentability of a claim will be congruent with the validity determination—if a claim is properly invalidated in district court based on the deliberately withheld reference, then that reference is necessarily material because a finding of invalidity in a district court requires clear and convincing evidence, a higher evidentiary burden than that used in prosecution at the PTO. However, even if a district court does not invalidate a claim based on a deliberately withheld reference, the reference may be material if it would have blocked patent issuance under the PTO’s different evidentiary standards.

Having adopted the “but-for” test as a general rule, the Federal Circuit created an exception in cases where the patentee has engaged “in cases of affirmative egregious misconduct.”  In those cases, “such as the filing of an unmistakably false affidavit, the misconduct is material,” Rader stated.

PTO’s Response to Ruling.

In response to the Federal Circuit’s Therasense ruling, the PTO issued a May 27 press release. “We are now studying the potential impact of Therasense v. Becton, Dickinson on Office practice, and we expect to soon issue guidance to applicants regarding the materials they must submit to the Office under their duty of disclosure,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.



Senate Judiciary Committee Unanimously Approves S.968 (the PROTECT IP ACT)

May 26, 2011

The U.S. Senate Judiciary Committee on May 26 voted to approve S.968, the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act, or PROTECT IP Act.

The legislation, introduced May 12 by Senators Patrick Leahy (D-Vt.), Orrin Hatch (R-Utah), and Chuck Grassley (R-Iowa), targets rogue websites dedicated to the sale of infringing or counterfeit goods. The Senate Judiciary Committee approved the legislation unanimously by a voice vote.

“Copyright infringement and the sale of counterfeit goods can cost American businesses billions of dollars, and result in hundreds of thousands of lost jobs,” said Leahy in a May 26 press release. “Protecting intellectual property is not uniquely a Democratic or Republican priority – it is a bipartisan priority.”

“Today the Judiciary Committee took an important step in protecting online intellectual property rights. The Internet is not a lawless free-for-all where anything goes,” said Hatch. “The Constitution protects both property and speech, both online and off.”

“Increased online theft of intellectual property has become a rampant problem. The impact of copyright piracy and sale of counterfeit goods imposes a huge cost on the American economy – lost jobs, lost sales, and lost income,” Grassley said.

Responding to the legislation’s introduction, U.S. Chamber of Commerce president and CEO Thomas J. Donohue in a May 12 press release applauded the senators for their work and stressed that sites “dedicated to trafficking in counterfeit products and digital theft dupe consumers, steal our jobs, and threaten the vibrant Internet marketplace.” According to the U.S. Chamber of Commerce statistics, America’s IP industries account for more than $7.7 trillion of the U.S. GDP, drive 60% of U.S. exports, and employ more than 19 million Americans.

Following the Senate Judiciary Committee’s passage of S.968, the Motion Picture Association of America also offered praise in a May 26 press release. “By helping shut down rogue websites that profit from stolen films, television shows, and other counterfeit goods, this legislation will protect wages and benefits for the millions of middle class workers who bring America’s creativity to life,” said Michael O’Leary, MPAA’s executive vice president of government affairs.


PayPal and eBay Sue Google Over Mobile Payment System Trade Secrets

May 26, 2011

PayPal Inc. and eBay Inc. have brought a suit in California state court which charges that Google Inc.’s Android mobile payment system is based on trade secrets stolen by two key PayPal executives who now work for Google (PayPal Inc. v. Google Inc., Cal. Super. Ct., No. 11-cv-201863, filed 5/26/11).

In the complaint, PayPal, which was acquired by eBay for 1.5 billion in 2002, cites industry projections that “the domestic mobile payment market will reach $200 billion to $1 trillion annually within the next few years.” PayPal further notes that it has spent the past 10 years building a global leadership position in online and mobile payments and “has substantial intellectual property in these fields.”



Leahy Is Joined by Other Senators in Introducing Bill to Fight Online Piracy

May 12, 2011

Senator Patrick Leahy joined his Senate Judiciary Committee colleagues May 12 in renewed bipartisan efforts to fight the illegal online sale of counterfeit goods by introducing S.968, the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act, or PROTECT IP Act. This measure follows bipartisan legislation introduced in 2010, which had unanimous support from Senate Judiciary Committee members.

The legislation, introduced by Senators Patrick Leahy (D-Vt.), Orrin Hatch (R-Utah), and Chuck Grassley (R-Iowa), targets rogue websites dedicated to the sale of infringing or counterfeit goods.

According to Leahy’s press release:

The PROTECT IP Act narrows the definition of a rogue website, while ensuring that law enforcement can get at the “worst-of-the-worst” websites dedicated to selling infringing goods. Copyright infringement and the sale of counterfeit goods reported cost the U.S. economy billions of dollars and hundreds of thousands of jobs, as well as billions of dollars in lost tax revenue for federal, state and local governments.

“This legislation will protect the investment American companies make in developing brands and creating content and will protect the jobs associated with those investments,” said Leahy.  “It will also protect American consumers, who should feel confident that the goods they purchase are of the type and quality they expect.  The PROTECT IP Act targets the most egregious actors, and is an important first step to putting a stop to online piracy and sale of counterfeit goods.”

“With this legislation, we are sending a strong message to those selling or distributing counterfeit goods online that the United States will strongly protect its intellectual property rights,” said Hatch.  “Just because it’s on the Internet doesn’t mean it’s free. Fake pharmaceuticals threaten people’s lives. Stolen movies, music, and other products put many out of work. This is why protecting property rights is a critical imperative and is why we’ve come together in introducing this common-sense bill.”

In reaction to the legislation’s introduction, Recording Industry Association of America Chairman & CEO Mitch Bainwol issued a  statement applauding Senate Judiciary Committee Chairman Leahy, Ranking Member Grassley, Hatch, and the cosponsors for their support of the PROTECT IP Act. “We look forward to working with the Senate and the House as they continue to develop an effective law that will save American jobs, protect creators’ property from rampant online theft and foster a legitimate online shopping experience for consumers,” Bainwol said.

CAFC Refuses to Dismiss TiVo-EchoStar Appeal, Saying That Notice of Settlement Came Too Late

May 10, 2011

Despite a settlement of TiVo’s patent suit against EchoStar and DISH Network, the U.S. Court of Appeals for the Federal Circuit on May 10 refused to dismiss the appeal in the en banc case decided Apr. 20 because it found that doing so would be improper after the decision has been issued (TiVo Inc. v. EchoStar Corp., Fed. Cir., No. 09-1374, 5/10/11).

The parties in this patent infringement case announced in a May 2 press release that they had reached a $500 million settlement. According to the statement, “DISH Network and EchoStar agreed to pay TiVo $500 million, including an initial payment of $300 million with the remaining $200 million distributed in six equal annual installments between 2012 and 2017. TiVo, DISH Network and EchoStar agreed to dismiss all pending litigation between the companies with prejudice and to dissolve all injunctions against DISH Network and EchoStar.”

This settlement follows an Apr. 20 ruling by the en banc Federal Circuit, which found that EchoStar violated one provision of a permanent injunction relating to TiVo Inc.’s DVR technology patent (6,233,389) and set forth new standards governing contempt proceedings in patent infringement cases. (TiVo Inc. v. EchoStar Corp., Fed. Cir., No. 09-1374, 4/20/11).

On May 2, the parties informed the court that they had settled the case on April 29 and asked to dismiss the appeal.

Declining the motion, Judge Alan Lourie, who authored of the en banc decision, spoke here for the unanimous court. Lourie said that the court was given no notice of any settlement deal, and that “if the parties had entered into such an agreement before issuance of our decision, it was counsel’s duty to inform this court of the agreement. … Clearly, they did not settle before our decision.” As the en banc ruling vacated in part, affirmed in part, and remanded to the district court, granting this motion now would mean dismissing the appeal, he said.

Citing a line of cases from other circuits, Lourie found dismissal improper here, stating:

Although the parties do not ask us to vacate our decision, at this stage, days before issuance of a mandate, we determine that granting the motion to dismiss, which would result in a modification or vacatur of our en banc judgment, is neither required nor a proper use of the judicial system. …

The parties are of course free upon our remand to the district court to request that the district court dismiss the complaint and vacate its previously imposed sanctions because they have settled the underlying matter. However, consistent with our sister circuits, we conclude that we should not dismiss the appeal after it has been decided.

The opinion was joined by Chief Judge Randall R. Rader and Judges Pauline Newman, Haldane Robert Mayer, William Bryson, Arthur Gajarsa, Richard Linn, Timothy Dyk, Sharon Prost, Kimberly Moore, Kathleen O’Malley, and Jimmie Reyna.

FTC Says That Sanofi-Aventis and Other Companies Failed to Disclose Drug Pacts Relating to Sanofi’s Insomnia Drug Ambien

May 10, 2011

The Federal Trade Commission on May 10 announced that Sanofi-Aventis U.S. LLC, Synthon Holding B.V., and Watson Pharmaceuticals Inc., failed to inform antitrust authorities about agreements reached relating to patent infringement litigation over generic versions of Sanofi’s insomnia drug Ambien CR.

However, for several reasons, including that there was no harm to consumers or competition, the agency decided not to pursue enforcement action and instead sent the companies advisory letters as a way of ensuring future compliance and providing guidance to the pharmaceutical industry.

In a press release, the FTC said its Bureau of Competition notified Sanofi-Aventis, Watson Pharmaceuticals, Inc., and Synthon Holding B.V., of the belief that they violated the requirements of the Medicare Prescription Drug, Improvement, and Modernization Act of 2003 (MMA). Under the MMA, brand name and generic drug companies must file drug patent agreements with the FTC and U.S. Department of Justice within 10 business days when the agreement involves a drug for which the generic has submitted the Abbreviated New Drug Application containing a “Paragraph IV” certification claiming that patent the asserted to cover the brand drug is either invalid or not infringed by the generic applicant. The failure to file timely drug patent agreements can result in a civil penalty of up to $11,000 for each day that a required filing has not been made.

While believing that the law was violated, the FTC chose not to recommend enforcement and decided to issue  advisory letters to the companies. The Bureau of Competition provided the following rationale for its decision in this case:

  • the companies’ failure to file does not appear to have harmed consumers or competition, nor benefitted the companies;
  • the failure to file does not appear to have been a deliberate effort on the part of the companies to evade the requirements of the MMA; and
  • guidance to the industry via the advisory letters may serve a broader enforcement purpose.

“The Bureau of Competition recognizes the importance of clear guidance concerning the types of agreements that are subject to the MMA filing requirement,” said Bureau of Competition Director Richard Feinstein. “We expect that these companies, and the pharmaceutical industry more broadly, will closely consider the contents of these advisory letters in connection with future agreements that may be subject to the MMA.  We will consider enforcement recommendations, including appropriate penalties, in the future when the MMA filing requirements have not been met.”

Read the FTC’s letter Sanofi-Aventis’s counsel, Helene D. Jaffe, of Weil, Gotshal & Manges, New York.

Read the FTC’s letter to Synthon Holding’s counsel, E. Anthony Figg, of Rothwell, Figg, Ernst & Manbeck, Washington, D.C.

Read the FTC’s letter to Watson Pharmaceuticals’s counsel, Steven C. Sunshine, of Skadden, Arps, Slate, Meagher & Flom, New York.

Teva Pharmaceuticals Purchases Cephalon for $6.8 Billion

May 2, 2011

Generic drug giant Teva Pharmaceutical Industries Inc. on May 2 announced the purchase of Cephalon Inc. for $6.8 billion in a move that will provide a “significantly broader portfolio,” Teva’s CEO Shlomo Yanai said in a press release.

According to Teva’s announcement, the companies’ respective boards of directors approved a deal under which Teva will acquire all of the outstanding shares of Cephalon for $81.50 per share in cash, or a total enterprise value of approximately $6.8 billion. The transaction is not conditioned on financing and is expected to be completed in the third quarter of 2011.

“The transaction reinforces Teva's long term strategy of building out its branded and specialty pharmaceuticals business through diversification and expansion of the company's product portfolio and pipeline,” Teva’s statement said. Cephalon’s pipeline includes approved drugs such as the Nuvugil, which treats sleep disorders, and Treanda, which treats lymphocytic leukemia.

"We are embarking today on a new and exciting future for Teva's branded business, and we are delighted that we will be working together with the Cephalon team," said Yanai. "This is transforming for Teva's branded business, as it will help us to deliver on our strategic goal of creating a diversified, multi-faceted company. We have been following Cephalon for a long time and are very happy with the opportunity to join forces. Our significantly broader portfolio will permit marketing and sales synergies and enhance profitability. We look forward to welcoming our colleagues at Cephalon to the Teva family."

"By joining forces with Teva, we will benefit from their scale, worldwide reach and operational excellence, we will benefit from their scale, worldwide reach and operational excellence, allowing us to further pursue our shared goals of delivering new, innovative therapies to help patients around the world,” said Cephalon CEO Kevin Buchi.


USTR Releases Annual “Special 301” Report on IP Rights Protection and Enforcement

May 2, 2011

The Office of the United States Trade Representative (USTR) on May 2 issued its annual "Special 301" report highlighting foreign markets with the worst intellectual rights protection and enforcement problems.

“This year’s Special 301 Report comes with a call to action for our trading partners. We are ready to work intensively with you to stop intellectual property theft that threatens IP-related jobs in the United States and other countries,” said Ambassador Ron Kirk in a press release. He stressed that the report “is a springboard for ambitious and collaborative partnerships in the coming year to strengthen protection for the innovation and creativity that drive jobs and exports for the United States and our partners around the world.”

In this year’s report, the USTR cites America’s two largest trading partners, Canada and China, for remaining on the Priority Watch List. “Trading partners on the Priority Watch List present the most significant concerns regarding insufficient IPR protection or enforcement, or otherwise limited market access for persons relying on intellectual property protection,” the USTR announcement said. The USTR statement continued:

Twelve countries – China, Russia, Algeria, Argentina, Canada, Chile, India, Indonesia, Israel, Pakistan, Thailand, and Venezuela – are on the Priority Watch List. These countries will be the subject of particularly intense bilateral engagement during the coming year.

Twenty-nine trading partners are on the Watch List, also meriting bilateral attention to address underlying IPR problems: Belarus, Bolivia, Brazil, Brunei, Colombia, Costa Rica, Dominican Republic, Ecuador, Egypt, Finland, Greece, Guatemala, Italy, Jamaica, Kuwait, Lebanon, Malaysia, Mexico, Norway, Peru, Philippines, Romania, Spain, Tajikistan, Turkey, Turkmenistan, Ukraine, Uzbekistan, and Vietnam.

The full Special 301 Report is available here.

After CAFC’s En Banc Ruling, TiVo, DISH Network and EchoStar Announce $500 Million Settlement of Patent Litigation

May 2, 2011

Less than two weeks after the Federal Circuit’s en banc ruling affirming a $90 sanctions award to TiVo Inc. against EchoStar Corp., the parties on May 2 announced a $500 million settlement of all pending litigation relating to TiVo’s digital video recorder technology.

According to TiVo’s May 2 press release, “DISH Network and EchoStar agreed to pay TiVo $500 million, including an initial payment of $300 million with the remaining $200 million distributed in six equal annual installments between 2012 and 2017. TiVo, DISH Network and EchoStar agreed to dismiss all pending litigation between the companies with prejudice and to dissolve all injunctions against DISH Network and EchoStar.”

This settlement follows an Apr. 20 ruling by the en banc Federal Circuit, which found that EchoStar violated one provision of a permanent injunction relating to TiVo Inc.’s DVR technology patent (6,233,389) and set forth new standards governing contempt proceedings in patent infringement cases. (TiVo Inc. v. EchoStar Corp., Fed. Cir., No. 09-1374, 4/20/11).

The press release also noted TiVo granted DISH a license under the ‘389 patent “and certain related patents, for the remaining life of those patents. TiVo also granted EchoStar a license under the same '389 patent and certain related patents, for the remaining life of those patents, to design and make certain DVR-enabled products solely for DISH Network and two international customers. EchoStar granted TiVo a license under certain DVR-related patents for TiVo-branded, co-branded and ingredient-branded products.”

"The results of TiVo's formidable intellectual property enforcement program speak for themselves, and consequently, we are pleased to put this litigation behind us and move forward," said Charlie Ergen, Chairman and CEO of DISH Network. He said that “our agreement with TiVo provides us a competitive advantage as one of the few multichannel operators with rights to operate under TiVo's Time Warp patent, which ultimately will allow us to enhance the performance of our award-winning DVRs. We look forward to continuing to offer DISH Network customers the most choices in video service."

"We are extremely pleased to reach an agreement with DISH Network and EchoStar which recognizes the value of our intellectual property," said Tom Rogers, president and CEO of TiVo. Rogers said that the settlement compensation, “including the resulting reduction in legal expenditures, puts TiVo in an enviable financial and strategic position. This settlement, which brings the total compensation paid by DISH Network for use of TiVo's '389 patent family to over $600 million, demonstrates the significant return afforded to our shareholders by diligent enforcement of TiVo's intellectual property rights. Those efforts will aggressively continue with other parties."

Ergen added that this deal will with assist in developing the Blockbuster digital video service. “Resolving the patent infringement case allows us to further engage with TiVo on a variety of exciting strategic initiatives, like Blockbuster, where we are uniquely positioned to collaborate."

James Donald Smith Is Named Chief Administrative Patent Judge at USPTO

April 29, 2011

The U.S. Patent and Trademark Office on Apr. 29 announced that U.S. Commerce Secretary Gary Locke has appointed James Donald Smith to serve as the next Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences (BPAI).

As BPAI chief judge, Smith will lead the board that hears and adjudicates patent appeals from decisions of patent examiners. Smith, starting in the post May 8, 2011, replaces Michael Fleming, the former chief judge who retired in the fall of 2010.

Smith currently serves as associate general and chief intellectual property counsel of Illinois-based healthcare company, Baxter International. “We are delighted to have James Smith joining the USPTO as Chief Judge of the BPAI. He is the ideal choice to lead the BPAI at this critical juncture, and is committed to making the Board more efficient and more responsive to the needs of parties filing appeals,” USPTO Director David Kappos said in the agency’s press release.

After becoming a lawyer, Smith clerked for now retired Chief Judge Paul Michel of the U.S. Court of Appeals for the Federal Circuit. He also practiced with Arnold White & Durkee and, later, Dewey Ballantine (now Dewey Le Boeuf), before leaving to serve as the global licensing director for Nokia Corporation.

“Director Kappos has assembled a hard-working and highly talented team at the USPTO, and the board has talented and hard-working judges and staff whose rate of being affirmed is already the highest of the tribunals whose decisions are appealed to the Federal Circuit Court of Appeals. I am pleased to have the opportunity to join them in working to address the board’s backlog,” Smith said.

Smith received his J.D. degree from the School of Law at Duke University and his B.S. in electrical engineering from the University of Maryland at College Park.


USPTO Delays Effective Date of "Track One" Fast-Track Patent Processing

April 27, 2011

The U.S. Patent and Trademark Office (USPTO) on Apr. 27 announced that it has postponed the start date of the Track One prioritized patent examination program scheduled to go into effect on May 4, 2011 until further notice due to spending constraints.

“Without the resources to hire a sufficient number of examiners to implement Track One, we must postpone the effective date of the program until we are in a position to implement it successfully while ensuring there will be no adverse impact on non-prioritized examination applications,” Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said in a press release.

According to the press release, Track One, which is part of the USPTO’s Three-Track Program, would provide applicants with greater control over when their applications are examined and promote greater efficiency in the patent examination process. It further explained that Track One would allow inventors and businesses for a fee to have their patents processed within 12 months.

“The USPTO will announce a new start date for Track One as soon as circumstances permit and will do so via a Federal Register notice,” the press release stated.

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