Letter from AmeriKat: Happy New Year!

The AmeriKat ready to pounce on any jolly intruder
that dare touch her Christmas tree

It has been an embarrassingly long time since the AmeriKat has stretched her US paws, owing mainly to becoming the UnitaryPatKat for much of the past year.  But with signs that the unitary patent is pretty much done and dusted, save for getting her head and paws around a hefty volume of draft Rules of Procedure (apparently to be formally published for consultation in the New Year once all Member States return with their verbal thumbs up on the final Draft Agreement), she started to miss her old stomping ground of American IP news.  Over a brief "break" during the holidays, she spent some quality work time in New York and Boston where, in between frantic holiday wrapping, Christmas tree admiring, repeated reading of the ABC book to her niece and compulsory Mr. Rogers viewing, she immersed herself into some good old fashioned IP news.  So on the theme of the much-beloved ABC book that has seen two generations of AmeriKittens through the early days of education, here is the latest news from the US. 

J is for jury awards: Following a four week trial, lasts Wednesday and full of holiday cheer, a Pennsylvania federal jury awarded Carnegie Mellon University $1.17 billion in damages for the infringement of its patents relating to "noise predictive detection" technology by Marvell Technology Group, a Santa Clara, California head-quartered chip manufacturer.  Noise predictive detection is used to increase the reliability of retrieving data from disk drives in computers and servers. Marvell, who was represented by Quinn Emmanuel, alleged that information relating to prior art that should havebeen disclosed to the USPTO prior to grant was withheld and as such the patent was improperly obtained.  The jury disagreed and found that Marvell had willfully (although not explicitly stated in the verdict, see the excellent PatentlyO post here) infringed the patent much to the “gratification” of Carnegie Mellon (see press statement here).  According to reports, the jury award ranks as the third largest ever in a patent case beating out the Apple v Samsung jury award last summer (see this post by Merpel as reproduced in LegalWeek). It is understood that Marvell, who was sued by Carnegie Mellon in 2009, will be filing post-trial motions before Judge Fischer in order to reverse the jury award. The final ruling by the judge is anticipated in May 2013. 

YSL's Tribute shoe

R is for red:  Last Thursday, the final order in the infamous Louboutin v Yves Saint Laurent case involving Louboutin’s red soles trade mark was entered in district court in the Southern District of New York (see previous AmeriKat reporting on the case here).  The order dismissing the lawsuit follows September's Second Circuit Court of Appeals ruling that the mark’s scope of protection did not extend to monochrome shoes – red upper, red soles – like the Yves Saint Laurent shoes at issue.  Contrasting shoes – black, green, blue, etc upper, red soles – may still fall within the scope of the trade mark.  A statement by YSL welcomed the end of the case which “…had put at risk the ability of fashion designers to trademark color, as well as to now have confirmation from the Court that it is entitled to continue to sell its unique and famous monochromatic red shoes.”  The AmeriKat is sad to see this case go, mostly as it would have been highly entertaining to watch some of the Justices on the Supreme Court (not naming any names, Justice Scalia) examine counsel on the use of color as a trade mark in the fashion industry.

Chief Policy Officer and
Director for International Affairs
Shira Perlmutter

O is for orphan:  A little known fact about the AmeriKat is that she wrote her Masters dissertation at UCL on the hot topic (cue sniggering from some patent practitioners) on the problem of orphans works.  Back in October, she attend UCL IBIL’s seminar entitled “Digital Copyright Exchange(s), the Hooper Report and Orphan Works” with a star-studded cast from the IPO, the USPTO and the IP Directorate from the European Commission.  Although walking away without having any clear, tangible idea as to what a “digital copyright exchange” is [“Does anyone?”, asks Merpel], she was most taken with the fact that very little has changed since she wrote her dissertation comparing the UK, European and US position on the issue all those years ago.  Not to ruin the ending of her paper, but her conclusion was that the now-defunct Shawn Bentley Bill which limited the recoverability of damages for use of an orphan work in the event that the copyright owner came forward was a pretty tidy solution.  Mr Justice Arnold, who also attended the event, commented that limited damages would still necessitate a finding of liability for copyright infringement, a finding that, at least from the UK perspective, some non-profit institutions who get their funding from the government would not be willing to have on their record.  Shira Perlmutter, the Chief Policy Officer and Director of International Affairs at the USPTO commented that such a stigma was an unlikely consideration in the US for dismissing such a solution.  Copyright owners and users can now publicly agree or disagree with the comments from Mr. Justice Arnold courtesy of the US Copyright Office who is again reviewing the problem of orphan works.  Since the last inquiry almost 8 years ago, much has changed in the digital environment, for example, the ease, speed and format in which people are sharing copyright content (Pinterest anyone?).  This latest notice of inquiry requests comments regarding “the current state of play for orphan works”, what has changed in the legal and business environments over the past few years and what legislative/regulatory solutions would be welcome.  The deadline to get your comments in is 4 February 2013.  For more info please click here and for a report of the IBIL event by IPKat friend Peter Groves on his blog, Ipso Jure, click here. 

Outgoing USPTO Director
David Kappos

K is for Kappos:  This month sees the untimely and much-regretted departure of USPTO Director David Kappos who invested an incredible wealth of expertise and effort in working towards a more harmonized (or “converged”, in the words of ChiefJudge Rader) and efficient international IP system.  To the shock of the IP community, Director Kappos announced last month that he would be leaving the USPTO.  Rumors quickly abounded that the departure quickly followed an allegedly political speech made by Director Kappos in November on the issue of software patents which was touted in some sectors as indicating a divergence in his view on policy with that of the Obama administration.  However, others, including the Amerikat, believed (or at least hoped) that the speech had nothing to do with his departure.  Whatever the reasons for his departure, the IPKat, AmeriKat and Merpel thank Director Kappos for his constant efforts in reinvigorating the international IP community with a sense of collaboration and common purpose, as well as openly communicating the promise and pitfalls in our intellectual property systems.  The AmeriKat only hopes that someone with as much energy, credibility and expertise will be able to fill the space.  Surely there will be plenty of candidates, given that two weeks ago the USPTO was named one of the best federal governmental agencies to work for (NASA was number one).  In the meantime, the job will be filled by Acting Director Theresa Stanek Rea who was a partner at Crowell & Moring LLP in Washington D.C. where she specialized in pharmaceutical, biotechnology and life sciences patent litigation.  

H is for Happy New Year!:   The past year was an exciting (and exhausting) year for the AmeriKat, but throughout it she has benefited from the constant joy and challenge of reporting on the latest IP intrigue.  The best perk of the job, however, is exchanging views, information and IP gossip with our wonderful community.  It is you, our readers, who make the Kat what it is and it is for you who we spend our weekends, evenings and early mornings prowling through IP judgments, news and countless e-mails.  The AmeriKat wishes the IPKat's readers and their families a very happy and prosperous 2013 - the 10th anniversary year of the IPKat.  She very much looks forward to enjoying the anticipated drama of IP law and politics with you over the coming year.