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,Twitter row photographerwins $1.2 millionContinued from page 1US pays $50 million for piratedarmy softwareContinued from page 1NewsInBriefIPProINBRIEFphotos without consent, known as Suero, boremost of the responsibility for the outcome.“Suero took them and said they were his own.That was Suero’s problem. He basically tookthem off his site and said, these are my pictures.That’s where Suero went wrong,” said JoshuaKaufman, an attorney for AFP, during the trial.But Apptricity realised in 2008 that the armyhad deployed the software above and beyondthe terms of its agreement.It filed a copyright infringement claim againstthe US army in the Court of Federal Claimsin 2012, seeking compensation for approximately100 server and 9000 device licences.Some news outlets, including The WashingtonPost, CBS, ABC and CNN, which published Morel’simages, have settled with the photographerfor undisclosed amounts.Court tells search engines andISPs to block video sitesContinued from page 1French movie and TV trade groups, includingL’Association des Producteurs de Cinémaand La Fédération Nationale des Distributeursde Films, brought the case against thesearch engines and ISPs in 2011. They representmore than 120 companies.The High Court of Paris also ruled that theplaintiffs and their members must bear thecosts of blocking or delisting the websites.The actions must be implemented within afew weeks.The High Court of Paris’s decision to orderFrench ISPs to block access to copyright infringingwebsites is the latest in a European trend.Delivering his preliminary opinion on four questionsreferred to the Court of Justice of the EUby Austria’s Supreme Court, advocate generalPedro Cruz Villalón said on 26 November thatan Austrian ISP can be considered an intermediarywhose services are used by a third partyto access a copyright infringing website, andso can be ordered to block access.In the UK, ISPs have blocked access to multiplewebsites, including popular BitTorrent sites suchas TorrentDownloads, 1337x and FilesTube, followinginjunction grants. The total number ofblocked sites in the UK stands at 25.BitTorrent sites are also under pressure inthe US.BitTorrent tracker isoHunt.com closed on 23October after the website’s owner settledwith major US movies studios in their longrunningcopyright infringement case.The site’s owner, Gary Fung, agreed toclose the website, which claimed to offer44.2 million peers and 13.7 million activetorrents, and pay $110 million in damagesto Disney, Twentieth Century Fox, Universaland Warner Brothers, as well as Columbia,Paramount and Tristar Pictures.Following alternative dispute resolution proceedings,Apptricity and the Department ofJustice agreed to settle for $50 million.The figure represents a fraction of the software’snegotiated contract value, accordingto Apptricity. As part of the deal, the US Departmentof Defense has received a “materialquantity” of server and device licences for ongoingand future use.“Now that this process is behind us, it isenvisioned the Apptricity and army relationshipwill continue to grow exponentially,”said retired Major General Tim McHale, asenior advisor to Apptricity.Randy Lieberman, chief financial officer atApptricity, said that the $50 million will beinvested in the company.“Apptricity is now incredibly energised to usethe settlement resolution as a catalyst foraggressive investment in our team, our solutionsand our untapped market opportunities.“Our principal priority never shifted: ensuringthat our intellectual property drives globalefficiencies in commercial, educational andfederal enterprises.”The US Department of Justice did notcomment on the settlement.Newegg liable for $2.3 millionA jury has ordered online retailer Neweggto pay $2.3 million in damages to a nonpracticingentity over infringement of a webencryption patent.The US District Court for the Eastern Districtof Texas jury found that Newegg had infringedall of the patent’s claims, which aredirected to an encrypted data transmissionsystem that randomly alters encryption keys.Michael Jones, the technology’s inventor,sold the patent to TQP Development followingits registration in the 1990s. Jones is anemployee of the NPE and acts as an expertwitness for it during litigation.TQP has enforced the patent, which hasemerged successfully from a US Patent andTrademark Office re-examination, against2Latest newsThe maker of the popular videogamefranchise Grand Theft Auto fails towin gta.tvp3Latest newsInternational enforcement authorities comedown on Cyber Monday counterfeitersp4Latest newsWordPress backs its users over misuse ofcopyright complaintsp6SEP insightSpeakers, including an FTC commissioner,on standard-essential patent injunctionsp10ICANN meetingBen Anderson of NetNames revealswhat went down at the ICANN meetingin Buenos Airesp12People movesKurt Pritz resurfaces at the DomainName Association, the MPAA names anew general counsel, and morep15www.ipprotheinternet.com

multiple companies and secured millionsof dollars in licensing revenue from them,including Microsoft and Amazon.In its case against Newegg, all of the NPE’s patentclaims were found valid and infringed.The eight-person jury, returning its verdict late on25 November, awarded $2.3 million in damagesto TQP, less than the $5 million it had requested.Newegg has vowed to appeal against the ruling,a decision that was successful for it inthe Soverain case.In January, the US Court of Appeals for theFederal Circuit invalidated ‘shopping cart’patents that were asserted against Newegg,overturning the district court’s previous findingof infringement.Soverain Software, which counts Amazonand Johnson & Johnson as licensees of theshopping cart patents, had requested $34million in damages, but the Federal Circuitfound the rights to be obvious.The court said: “We conclude that the priorart ... by clear and convincing evidence, renderedobvious the ‘shopping cart’ claims; thedistrict court’s contrary ruling is reversed.”Newegg called the Soverain verdict a victoryfor companies that oppose NPEs.Gta.tv is going nowhereThe maker of the popular videogame franchiseGrand Theft Auto has failed in its bid towin the domain gta.tv.A World Intellectual Property OrganizationArbitration and Mediation Center panel refusedto transfer gta.tv to Take-Two InteractiveSoftware because the domain namestands for, and resolves to a webpage dedicatedto, the Greater Toronto Area.Take-Two filed the Uniform Domain-NameDispute-Resolution Policy complaint againstiCity Corp, which registered gta.tv in 2010.The Grand Theft Auto creator argued in itscomplaint that its ‘Grant Theft Auto’ and‘GTA’ trademarks enjoy strong protectionaround the world, largely because more than125 million units of the videogames havebeen released and sold.It also said that it is planning to file applicationsfor the trademark ‘GTA TV’ with the USPatent and Trademark Office.iCity Corp, meanwhile, is a domain namespeculator that also owns other domains,including facialbook.com, citilinktravels.comand canadaairtravel.ca, that likely infringethe rights of third parties, argued Take-Two.The domain does not resolve to an activeNewsInBriefwebsite—only a page displaying iCity Corp’s‘GTA’ logo and the tagline “Discover GreaterToronto Area”—and there is no indicationthat iCity Corp is known by the disputed domainname.Ruling in favour of iCity Corp, the panel said:“In this case, the Respondent has demonstratedto the satisfaction of the Panel thatthe term GTA is used as a term related to ageographical location referring to the GreaterToronto Area, and that the inhabitants of saidarea use this term commonly.”“The content of [gta.tv] seems to be legitimateand reflect a use consistent with theRespondent’s Toronto-related theme. TheRespondent does have its domicile in theGreater Toronto Area.”It added: “In the absence of sufficient evidenceof bad faith registration or use of thedisputed domain name on the part of the Respondentand the reasonable explanation forthe selection of the disputed domain name aspart of a common registration theme in connectionwith the Respondent’s domicile, thePanel finds, on balance, that the Complainanthas not demonstrated that the Respondentlacks rights or legitimate interests in thedisputed domain name.”The latest installment in Take-Two’s multiplatformsandbox series, Grand Theft Auto V,grossed more than $800 million in retail sales3www.ipprotheinternet.com

NewsInBriefduring the first 24 hours after its launch, andhit over $1 billion in three days.BT loses High Court caseagainst AssiaUK telecommunications company BT has losta High Court of Justice of England and Walescase against Assia over its Next GenerationAccess broadband network.Assia, a US-based broadband software, assertedtwo European patents (EP1869790and EP2259495) against BT. They describeinventions important to monitoring and automaticallyoptimising digital subscriber line—or broadband—networks.Justice Colin Birss found that BT’s NGAbroadband system infringes Assia’s patentcovering DSL network monitoring, which healso held to be valid.The automatic optimisation patent was heldvalid but not infringed.“As a software developer, Assia’s principalbusiness is to deliver our award-winning productsand services to customers,” said Assiachief technology officer Marc Goldburg.“We attempted for years to work with BT inthis spirit. When it became clear that BT wasusing Assia’s technology without a licenceand was not willing to license Assia’s technologyor products, it became necessary tobring this patent infringement claim.”Wragge & Co represented Assia in the case.Alexandra Brodie, partner and co-chair of thefirm’s technology sector team, said: “This is asignificant patent action in the UK court, andour victory was made possible by our specialistteam which immersed itself in DSL technology.”The court will settle requests for an injunction,damages and costs in January 2014,but either party may yet launch an appeal.Cyber Monday sees domainsput on ICEInternational enforcement authorities cametogether for their annual Cyber Mondaycrackdown on websites on 2 December, seizing706 domain names.US Immigration and Customs Enforcement(ICE) worked with 10 foreign law enforcementagencies, including the EU’s Europoland Hong Kong Customs, to take downwebsites during Cyber Monday, which seesonline retailers slash their prices to attractcustomers ahead of Christmas.The websites were set up to dupe onlineconsumers into buying counterfeit goods,according to ICE. Under the Cyber Mondaystage of Operation In Our Sites, the customsagency seized 297 domain names, takingthe operation’s total to 2550 since it beganin June 2010.Europol seized 393 domain names throughoutEU member states, while Hong KongCustoms coordinated the seizure of 16 domainshosted in Hong Kong.The 706 seized domain names now point to abanner warning against infringement.ICE acting director John Sandweg said:“Counterfeiters take advantage of the holidayseason and sell cheap fakes to unsuspectingconsumers everywhere.”“Consumers need to protect themselves,their families, and their personal financialinformation from the criminal networksoperating these bogus sites.”Popular fakes sold to consumers in the runupto Christmas include headphones, sportsjerseys, personal care products, shoes, toys,luxury goods, cell phones and electronic accessories,according to the National IntellectualProperty Rights Coordination Center,which works with ICE.Salih El Amin Intellectual PropertySALIH EL AMININTELLECTUAL PROPERTYInternational Trademark & Patent AttorneysYour link to trademark & patent registrationin Dubai (U.A.E), GCC, Middle East, Africa,U.S.A., Asia & EuropeInternational Trademark & Patent Attorneys.Registration, Renewal and Protection of Trademarks,Patents, Copyrights, Designs & Domain Names.Tel.: +971-4-286-8869 Mobile: +971-50-450-3212Fax: +971-4-286-8893 P.O. Box 30888, Dubai, U.A.Eiplaw@salihelmin.com www.saips.org / www.salihelamin.com4www.ipprotheinternet.com

The UK’S FaSTeST GroWinG SPeCialiST SearCh ComPany“The highstandard ofprofessionalpatent searchesand cost-effectiveapproachprovided byPatent Seekershas enabled usto offer thesekinds of servicesto the full rangeof clients we dealwith”. N.J.Akers“I am glad wecame acrossPatent Seekers.They areresponsive andgood value.I intend tocontinue to usethem as my firstport of call formany patentsearches”.Barker Brettell“Patent Seekershave providedus with apatent searchservice that isprofessional,costeffectiveandresponsive”.Mewburn EllisWe don’t like to blow our own trumpet,so we thought we’d let our clients do it for us.Patent Seekers is the UK’s fastest growing specialistsearch company. We work on behalf of PatentAttorneys and other organisations and businessesbased in Europe and North America. Our staff areall qualified, professionally trained patent analysts(including former UK Patent Office Examiners)providing patent search services for their specific areasof expertise. We work in teams to ensure attentionto detail, each follow meticulous processes as wellas utilising multiple databases. One of our teamsspecialises in Pharmaceutical, Biotech and Chemicalsearches whilst another provides the same levelof expertise for Electrical, Electronic, Software andMechanical. If you have a requirement for any of ourservices or want to find out more informationabout Patent Seekers, please get in touch.Patent Seekers Ltd., Suite 53 Imperial House,Imperial Park, Celtic Lakes, Newport NP10 8UH.Tel: +44 (0)1633 816601Fax:+44 (0)5600 757713Email: mail@patentseekers.comwww.patentseekers.comINvaLIdITy INFrINgEmENT STaTE oF THE arT NovELTy dESIgNThe UK’s Fastest Growing Patent Search Company

NewsInBriefThe operation saw law enforcement officersmake undercover purchases from websites suspectedof selling counterfeits.Once they were confirmed as fakes, orders toseize the domain names linked to the websiteswere sought and obtained.“This operation is another good example ofhow transatlantic law enforcement cooperationworks. It sends a signal to criminals that theyshould not feel safe anywhere,” said Rob Wainwright,director of Europol.“Unfortunately the economic downturn hasmeant that disposable income has gone down,which may tempt more people to buy productsfor prices that are too good to be true.”“Consumers should realise that, by buying theseproducts, they risk supporting organised crime.”US authorities seized $1.26 billion of counterfeitgoods in 2012, but the number of seizures wasdown on the previous year.Customs and Border Protection and ICE collectivelyseized 22,848 items in 2012, down from24,792 in 2011.But the manufacturer’s suggested retailprice—the amount that the goods could havesold for if they were legitimate—for seizedcounterfeit goods increased to $1.26 billionin 2010, up from $1.11 billion in the previousyear. The average value of a fake was morethan $10,450.The majority of the seized goods—9852—weresent through standard mail, while 8490 wereshipped through express carriers.China was the source of 72 percent of all seizedfakes in 2012, with a value of $906 million.ICE took down 697 websites that were involvedin trafficking counterfeit goods in 2012.WordPress backs users overcopyright misuseWordPress is standing up for its users as ittakes the campaign group Straight Pride UK tocourt over copyright law misuse.The blogging platform filed a complaint in USDistrict Court for the Northern District of Californiaon 21 November, arguing that StraightPride UK, which campaigns for ‘heterosexualrights’, sent a takedown notice to a Word-Press user without rights to the assertedcopyrighted material.In August, Straight Pride UK used the DigitalMillennium Copyright Act (DMCA) to make Automattic,the company behind WordPress, removean interview from the blogging site thatthe group had done with Oliver Hotham, a London-basedstudent journalist.Straight Pride UK claimed that the interview thatthe group gave to Hotham in a document, entitled‘press release’, was a private documentthat he had no right to distribute.In its complaint, Automattic said: “The HothamPost [Oliver Hotham’s blog on WordPress] doesnot infringe any copyright owned by defendantor by any entity on whose behalf defendant wasauthorised to act.”“The takedown notice contained misrepresentationsthat material or activity was infringing.”Paul Sieminski, Automattic’s general counsel,wrote in a blog post: “These cases are both infuriatingand increasingly common. While thereare no legal consequences (like fines) under theDMCA for copyright abusers, there is a provision6www.ipprotheinternet.com

NewsInBriefthat allows victims of censorship (and their webhosts) to bring legal action against those whosubmit fraudulent DMCA notices.”“Until there are some teeth to the copyrightlaws, it’s up to us—websites and users, together—tostand up to DMCA fraud and protectfreedom of expression.”“Through these suits, we’d like to remind our usersthat we’re doing all we can to combat DMCAabuse on WordPress.com…and most importantly,remind copyright abusers to think twicebefore submitting fraudulent takedown notices.We’ll be watching, and are ready to fight back.”US academics proposepatent reformsAcademics from across the US have written toCongress recommending changes to the country’spatent laws in a bid to encourage developmentof new technologies.Sixty professors, who teach IP law and policy,sent the public letter on 25 November, expressingthe need for patent reform in order to acceleratethe pace of innovation within the US in thewake of high-profile abusive patent litigation.In their letter, the academics said that the cost ofdefending against frivolous patent infringementallegations is high and still rising.“The American Intellectual Property Law Associationestimates that the median cost of litigatinga moderately-sized patent suit is now$2.6 million, an amount that has increasedover 70 percent since 2001. These and othersurveys suggest that the expense of defendingeven a low-stakes patent suit will generallyexceed $600,000.”In cases between product producing companies,the accused party can file a counterclaimand can impose an equal amount of discoverycosts on the plaintiff.This, the academics argued, spurs on innovationas companies compete in the marketplacewith their products and prices.But in cases brought by aggressive non-practicingentities that enforce unproven patents, thisis not possible.In the letter, the academics recommended sixreforms that would help to solve the problem.They suggested reducing the size and frontloadednature of patent litigation costs and limitingthe scope of discovery before the issuanceof a claim construction order.Courts should “stay suits filed against partiesthat simply sell or use allegedly infringingtechnology until after the conclusion of parallellitigation between the patentee and the technology’smanufacturer; facilitating early adjudicationof patent infringement suits”.The academics added that Congress shouldconsider additional legislation designed to deterfraudulent, misleading or otherwise abusive licensingdemands made outside of court.The US government has attempted to addressabusive patent litigation.Earlier in November, Senator Patrick Leahyproposed legislation that could increase transparencyin patent ownership and would makeprocedural changes in litigation.Representative Bob Goodlatte introduced theInnovation Act into Congress in October.If adopted, the act would introduce heightenedpleading standards and transparency provisionsinto patent litigation, as well as a modernisedversion of fee shifting.The House of Representatives passed theInnovaction Act by a vote of 325-91 on the 5December. It will now head to The Senate.8www.ipprotheinternet.com

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SEPInsightAnti-trust or bustReporting from the Standards & Patents conference in London, IPPro looksat standard-essential patents and how the speakers viewed their useMARK DUGDALE REPORTSThe decision to litigate or negotiate first is adifficult one to make, according to Yann Dietrich,vice president of electronics and IT atFrance Brevets.Speaking at the Standards & Patents conferencein London on 5 December, he said that“it can be bad to hold licensing negotiations[before litigation], because ... you can bebound by what you said” when it’s time todecide damages.On the other hand, while a litigate-first-askquestions-laterapproach provides a partywith a “blank sheet” when damages are beingdecided, litigation usually only covers afew patents. During licensing negotiations, aprice will be agreed against the backdrop ofan entire portfolio and the value that its patentscollectively demand. Litigation damages,he said, will rest on the asserted few: “[Duringlitigation] do you really want to be bound bythis consideration?”It is with this legal versus commercial decisionin mind that he and his panel gavetheir thoughts on standard-essential patents(SEPs). An SEP is integral to a particulartechnology. The right covers an aspect ofthe technology that—should a party wish todevelop a related product—must be licensedon fair, reasonable and non-discriminatory(FRAND) terms. A standard-setting organisationdeems a patent to be ‘essential’ to acertain technological standard.Technology companies Google, through its$12.5 billion subsidiary Motorola Mobility, andSamsung, which favours Google’s Androidoperating system for its smartphones, haveattracted the attention of US and Europeancompetition authorities because they haveenforced SEPs in court.Specifically, they have sought permanentinjunctions based on their asserted SEPs, apractice that the competition authorities worrythreatens consumers.Google and Samsung have reached agreementswith the authorities—the former in theUS and the latter in the EU. The interventionof competition authorities worried one speaker,who said: “Anything that takes away importantrights risks unbalancing incentives tocontribute to standards.”Dietrich echoed this sentiment and added thatwhile the consumer is important, so is his orher ability to spend on new products, which isnot possible without a good economy and theresulting employment. If there are fewer jobsbecause employers are scaling back their operationsdue to governmental interference inthe free market, the consumer will have lessmoney to spend, so went his argument.The consumer, Dietrich added, is intelligentenough to shop around and avoid overpayingfor products such as already-expensivesmartphones, which presumably would be the‘real-world’ effect of reduced competition inthe high-technology spaces.The US Federal Trade Commission’s (FTC)Maureen Ohlhausen, a commissioner sinceApril 2012, delivered a speech at the Standards& Patents conference on 4 December.She discussed how best to navigate the intersectionof intellectual property and anti-trustlaws, arguing that it requires pragmatism.“Strong intellectual property rights promoteconsumer welfare by encouraging innovationand commercialisation”, she said, while“competition laws also play a valuable role inpromoting consumer welfare, although theirmain objective is to promote commercialisation,with an eye in particular on short-runefficiencies”, including “short-term gains forconsumers in the form of lower prices andhigher quality”.“Knowing at a theoretical level that our competitionand intellectual property laws mustcoexist to promote consumer welfare is importantand, frankly, took all of us in the barprobably a bit too long to recognise. But thenagging question for enforcers is how to handlespecific situations in which we see a competitionproblem rooted directly in a facet ofthe patent regime.”Samsung in the EUIn October of this year, the European Commissionrevealed that Samsung had made aproposal to end the authority’s competition investigationinto the South Korean electronicscompany’s conduct in the EU.It asserted SEPs against Apple, which filed acomplaint that initiated the investigation, andrequested injunctions that would, if granted,ban allegedly infringing products from sale inthe UK, Germany, France, Italy, and the Netherlands.The commission announced Samsung’sguilt in December 2012.According to the European Commission:“[This] amounts to an abuse of a dominantmarket position prohibited by EU anti-trustrules ... Recourse to injunctions under thespecific circumstances of this case may undulydistort FRAND licensing negotiations andallow SEP holders to impose licensing termswhich a licensee would not agree to absentthe threat of having its products excludedfrom the market.”10 www.ipprotheinternet.com

SEPInsightFacing a potential fine of 10 percent of itsworldwide turnover, Samsung promised notto sue smartphone rivals over infringement ofits related SEPs for the next five years. Thatpromise hinders on whether the companyis willing to license the essential rights onFRAND terms, and is subject to a proposedframework, which stipulates a negotiation periodof up to 12 months, during which, if noagreement is reached, a court or an arbitratorcan determine the FRAND terms.The European Commission put Samsung’sproposals to the market in October, seekingfeedback on their viability.Joaquín Almunia, vice president in chargeof competition policy at the European Commission,said: “I am looking forwardto receiving the feedback of other marketplayers on Samsung’s proposals. Enforcingpatents through injunctions can be perfectlylegitimate. However, when patents are standard-essential,abuses must be preventedso that standard-setting works properly andconsumers do not have to suffer negativeconsequences from the so-called patentwars. If we reach a good solution in thiscase, it will bring clarity to the industry.”Speaking shortly after the European Commissionput Samsung’s proposals to the test,Dr Tobias Wuttke, who is the chief litigator atMeissner Bolte, said that the situation has tobe seen in the context of the LTE-Standarddecision of the Düsseldorf court in March2013 to refer a case that relates to SEPs tothe Court of Justice of the EU.“The referral was made because the courtwas not sure whether, under European competitionlaw, it is possible to seek injunctiverelief from an SEP for which a FRAND-declarationhas been made as long as the infringer,in principle, is willing to negotiate a licence onFRAND terms.”“I think this could have a huge impact on thetelecommunication litigation activity in Europebecause if there is no injunction relief, theamount of litigation could reduce. Without thatrelief, litigation will not be as attractive. Most ofthe settlements are made against the backdropof the possibility of an injunction. It’s like thependulum hanging over the infringing party.”Of Samsung’s proposals, Wuttke added:“The offer made by Samsung is far friendlierthan any offer that Motorola Mobility/Googlewould have made. But they will have to submitsomething similar, in my view.”Indeed, the European Commission toldMotorola Mobility in May to that it had abusedits dominant position and was in violation ofthe same rules as Samsung, because it assertedan SEP, and applied for and won an injunctionagainst Apple in Germany. The caseis still ongoing, and the Google subsidiary isalso facing a similar complaint from Microsoft,filed with the European Commission inDecember 2012, which it will have to contend soon.Google’s commitmentsIn the US, the story is much the same. Followingan FTC investigation, Google was foundto have refused to license Motorola MobilityownedSEPs on FRAND terms, brought infringementsuits against companies using thepatented technologies, and sought injunctionsto ban the sale of infringing products.After period of public consultation on howGoogle should change its practices to complywith FTC rules, the commission issued a finalorder against the internet company in July 2012.Although it dropped an allegation of anti-competitiveconduct, the FTC outlined multiplescenarios in which Google cannot seek injunctiverelief when asserting SEPs, includingif the potential licensee categorically refusesto license on FRAND terms. Like Samsung’sproposals to the European Commission, a periodof negotiation was included—six monthsin this instance—after which a dispute wouldhave to head to district court or arbitration.The order, in force until 2023, was not unanimouslyagreed. Commissioner Ohlhausendissented because the FTC alleged thatGoogle and Motorola Mobility violated Section5 of the FTC Act—“but not the anti-trust laws”,she told attendees of the Standards & Patentsconference on 4 December.Chiefly, she took issue with the lack of transparencyand guidance that the FTC’s decisionsprovided to patent holders and otherssubject to the FTC’s jurisdiction, includingother US agencies and courts, which wouldconsider, interpret and incorporate the commission’sview into their own practices.She said: “In particular, I raised concernsabout the FTC enforcing Section 5 withoutproviding sufficient information about the relationshipbetween that statutory provisionand the antitrust laws, including the Shermanand Clayton Acts. Without such information,it is unclear what the term ‘unfair method ofcompetition’ means or how the commissionwill use its enforcement discretion under Section5. The inherent ambiguity in the FTCAct makes it all the more important that theagency provide meaningful limiting principlesto application of Section 5.”Ohlhausen also feared that the Google ordercould create conflict with other US agencies.“Our decisions effectively tell holders of standard-essentialpatents that they cannot goto the ITC [International Trade Commission],where the only available relief is an exclusion,”she explained.“I am not saying that competition policy shouldtake a secondary position to other industrialpolicy concerns. Quite the contrary, the FTChas correctly advocated for a greater role forcompetition in US industrial policy decisions.However, as I have noted, I believe we needto exhibit a certain amount of regulatory humilityand recognise that we may not be thebest-positioned governmental entity to act ina particular area.”Finally, the FTC’s Google order could be perceivedas having “insufficient recognition” ofIP rights, said Ohlhausen.“The FTC placed significant restrictions on theability of holders of standard-essential patentsto seek injunctions, which is a critical intellectualproperty right. In my view, the FTC did this ineach case with very little, if any, evidence thatthe patent holder agreed to waive this right whenit participated in the standard-setting process.”The commissioner saw this perception in practiceat an event in China, where it was claimedthat the US has an essential facilities doctrine,and when the Google order is read in light of thisdoctrine, an unreasonable refusal to licence anSEP could constitute monopolisation, an actionthat could be remedied by compulsory licencesto the SEP in question.“This is not an accurate reading of relevantUS law or, in my opinion, of the FTC’s decisionin Google,” said Ohlhausen.“This sort of misinterpretation is troublingon two levels. First, it undercuts the valueof intellectual property rights and gives ourcounterparts abroad the misperception thatwe support wide application of compulsory licensing,which is completely incorrect.”“Second, if these misperceptions about our SEPenforcement actions here in the US are implementedelsewhere in the world, the resultingharm to patent rights would create serious disincentivesfor investment in research and developmentand ultimately harm innovation.”Despite Ohlhausen’s misgivings, the act of obtainingan injunction off the back of an SEP doesseem to be frowned upon. As US Judge RichardPosner put it when dismissing a patent infringementcase between Apple and Motorola Mobilityin June 2012: “How could it be permitted to enjoinApple from using an invention that [MotorolaMobility] contends Apple must use if it wants tomake a cellphone with UMTS telecommunicationscapability—without which it would not bea cellphone[?]”The intersection of IP and anti-trust laws doesrequire pragmatism, because innovation mustbe sought with the end consumer in mind.After all, innovative products are created withhim or her in mind, and it is the consumer thatultimately funds their development. It is up togovernment agencies such as the FTC andthe European Commission to tread carefullyduring their investigations into IP practices,and make sure that they seek feedback fromall parties concerned. IPPro11 www.ipprotheinternet.com

ICANNMeetingNew gTLD delegationsDate gTLD Registry30 November .Menu Wedding TLD230 November .Uno Dot Latin23 November Japanese for ‘everyone’ Charleston Road Registry19 November .Diamonds John Edge19 November .Tips Corn Willow19 November .Photography Sugar Glen19 November .Directory Extra Madison19 November .Enterprises Snow Oaks19 November .Kitchen Just Goodbye19 November .Today Pearl Woods14 November .Plumbing Spring Tigers14 November .Graphics Over Madison14 November .Contractors Magic Woods14 November .Gallery Sugar House14 November .Sexy Uniregistry14 November .Construction Fox Dynamite14 November .Tattoo Uniregistry14 November .Technology Auburn Falls14 November .Estate Trixy Park14 November .Land Pine Moon14 November .Bike Grand Hollow06 November .Ventures Binky Lake06 November .Camera Atomic Maple06 November .Clothing Steel Lake06 November .Lighting John McCook06 November .Singles Fern Madison06 November .Voyage Ruby House06 November .Guru Pioneer Cypress06 November .Holdings John Madison06 November .Equipment Corn Station23 October Arabic for ‘web/network’ International Domain Registry23 October Cyrillic for ‘online’ CORE Association23 October Cyrillic for ‘site’ CORE Association23 October Chinese for ‘game(s)’ Spring FieldsSource: ICANNwill see is those that do not want to take theICANN route will look to resolve their contentionsbefore the end of the year/mid-January,because after that point they will then be forcedinto ICANN auctions.How expensive could privateauctions become?TLD contentions are being resolved in the millionsof dollars, so if you have 20 TLDs in contention,you need to have very deep pockets toparticipate in these auctions and win.The debate around closed generics is stillongoing and further complicates the auctionpossibility. Brands that have applied for closedgenerics may be forced to turn them into openTLDs, so the question has to be asked: doesa brand want to turn into a domain registry?Some may not be able to use their TLDs asthey had anticipated two years ago.As a result, they may use the auction as anexit strategy to recoup money. I cannot thinkof a single business that is not under financialpressure and speculating more millions maynot be the right approach for many, especiallyat the board level.Auctions may provide the exit opportunity thatsome of these applicants have been looking for.Aside from the new gTLD programme,what else came up in Buenos Aires?The last couple of years have solely beenabout the new gTLD programme, but as thattrain leaves the station, attention is turningback towards other important parts withinICANN, particularly how the corporation is involvingitself in internet governance.Every country wants to get involved, so ICANNneeds to be less insular, as it has been with thenew gTLD programme, and look further afield,to working on a global stage, so that it can showthat it is the body to run the internet. IPProBen AndersonHead of new gTLDsNetNames13 www.ipprotheinternet.com

He focuses on high-stakes IP and technologycases for both plaintiffs and defendants,and has tried multiple jury and bench trials,and has handled numerous appeals beforethe United States Court of Appeals for theFederal Circuit.Ryland represents clients in matters involvingcopyright and trademark infringement, theft oftrade secrets, breach of contract, fraud, productliability, and unfair competition.Manning joins as counsel in the firm’s IPgroup within the business department.He has more than 15 years of experiencecounselling clients on patent and trademarkprocurement, post-grant proceedings,right to market and infringement opinions,and IP agreements.“We’re thrilled to welcome Campbell, Ryland,and Manning to the firm,” said Tucker Ellismanaging partner Joe Morford.“They are exactly the type of top quality lawyersand people our firm is fast becomingknown for both growing and attracting. Asour clients continue to ask us to do more andmore of their IP work, this group adds a depthof capability and expertise to our IP team thatwill serve our client relationships and firm verywell, for many years to come.”EIP has appointed John Williams to the roleof CEO.Williams will take responsibility of EIP’s day-todayoperations and report to the executive board.He has held the position of the non-executivedirector since 2009. Williams has built andsold businesses, including a patent and trademarkcompany, which he co-founded in 2001.In the last four years, EIP has changed itsstructure from a limited company to a limitedliability partnership and has doubled in size.Partner Jerome Spaargaren said: “The firm’scontinued growth constantly presents newand exciting challenges. Greater size andreach brings with it ever increasing managementissues.”“The partners are delighted that Williamsagreed to take on this new role as chief executiveofficer. Williams has played a significantpart in the growth and success of EIP over thelast few years and he will play an even greaterrole in its development.”Williams said: “I am very pleased to take onthis role. EIP is a great firm and I look forwardto working with the partners and managers tosustain the excellent progress made over thelast few years.”Richard Hacon has been named as the newpermanent, presiding judge of the IntellectualProperty Enterprise Court (IPEC), formallyknown as the Patents County Court.Hacon will also be the new chair of the CopyrightTribunal. He took up the roles on 3 December.Hacon has dealt with a variety of aspectsof IP law, including the biotechnology andchemical fields. He has worked in trademarkand design litigation.He has also worked in the English courts at alllevels, in the European Court of Justice andthe European Court of First Instance.UK IP minister Lord James Younger said: “Iam delighted with the appointment of RichardHacon as presiding judge of the IPEC and chairof the Copyright Tribunal. He will bring his extensiveexperience as a barrister specialising inintellectual property law to the important work ofthe IPEC and the Copyright Tribunal.”The IPEC has undergone a number of reformsand a rebrand recently.Recent reforms at the IPEC include the introductionof a scale of recoverable costs thatcover up to £50,000, and the creation of SmallClaims Track for copyright, trademark andunregistered designs.These changes have made the court lesscostly and easier to use, with the aim of supportingbusinesses and helping them protecttheir IP while saving time and money.Younger added: “Following a series of reforms,the IPEC is now a crucial forum forthe effective and proportionate resolution ofIP disputes and takes in the full range of IPrights. This allows UK businesses, both smalland large, to continue to protect their IP.Greenberg Traurig LLP has bolstered its IP andtechnology practice with three new shareholders.Mark Davis, Stephen Shahida and RonaldPabis will join the firm from Weil, Gotshal &Manges LLP.Davis joins as chair of Greenberg Traurig’s InternationalTrade Commission (ITC) practice.His practice focuses on IP litigation and associatedanti-trust issues. He has experiencerepresenting clients before the US ITC andboth district and appellate federal courts.Pabis focuses on patent trials as well as licensingand other technology-related disputes.He has established a track record inSection 337 investigations before the US ITCon behalf of both complainants and respondentsand in arbitrating IP disputes.Shahida focuses on complex patent disputes.Prior to joining Weil Gotshal, he co-headedthe Washington DC IP litigation practice atMcDermott Will & Emery LLP.16PeopleMovesHe has handled numerous cases before multipledistrict courts, the US Court of Appealsfor the Federal Circuit, and the US ITC.“We are pleased to welcome these worldclasslawyers to our patent litigation team andto our Washington DC office,” said GreenbergTraurig CEO Richard Rosenbaum.“This continues our longstanding approach ofcarefully selecting top individuals and groupswho will enhance our quality and fit our culture.We do not follow either of the two popularstrategies of the day: traditionally elitefirms holding on to high prices and consolidatingor those trying to get very big very fast bymergers and vereins.” IPProEditor: Mark Dugdaleeditor@ipprotheinternet.comTel: +44 (0)20 8663 9620Deputy editor: Georgina Laverseditor@ipprotheinternet.comTel: +44 (0)20 8663 9629Reporter: Franki Webbfrankiwebb@ipprolifesciences.comTel: +44 (0)20 8663 9620Associate publisher: Carlos Northoncarlosnorthon@ipprotheinternet.comTel: +44 (0)20 8663 9623Account manager: Wayne Edwardswayneedwards@ipprolifesciences.comTel: +44 (0)20 8663 9625Publisher: Justin Lawsonjustinlawson@ipprotheinternet.comTel: +44 (0)20 8663 9628Marketing director: Steven Laffertydesign@securitieslendingtimes.comDesigner: John Savagejohnsavage@ipprotheinternet.comTel: +44 (0)20 8663 9620Office fax: +44 (0)20 8711 5985Published by Black Knight Media LtdProvident House, 6-20 Burrell RowBeckenham, BR3 1AT, UKCompany reg: 0719464Copyright © 2013 Black Knight Media Ltd.All rights reserved.www.ipprotheinternet.com

IndustryPeopleTakewith.......David LissonIPPro takes five with DavidLisson, an up-and-comingassociate in the litigationdepartment at Davis Polk &Wardwell LLPHow did you get into intellectualproperty law?I fell into intellectual property law almost by accident.I didn’t pursue a technical degree in collegeor have a great deal of exposure to IP earlyin law school. However, as I considered varioustypes of practices as a junior associate, I wasdrawn to the fact that patent cases were complexand high stakes, but also had a decent chanceof going to trial. Patent litigation has provided anopportunity for substantive experience early inmy career, including experience on my feet, whilealso letting me learn from great trial lawyers.What do you specialise in and why?I have worked on patent cases involving anumber of different technologies, including telecommunications,medical devices, and searchengine applications. Instead of specialising ina particular technology, I’ve tried to specialisein the core litigation skills that apply across theboard, as well as the somewhat arcanedoctrines of patent law.In my opinion, the central skill for a patent litigatoris to not only understand a particular technology,but also be able to explain it to a lay judge or jury.It’s my job to translate complex concepts into asimple story and if I can’t understand a concept,then a judge or jury probably won’t either.What is a typical day for you?Because I have a number of matters at differentstages, no day is typical. Within the last fewweeks I have taken depositions, argued claimconstruction positions, and worked with myteam to finalise expert reports and draft briefs.It’s the variety in what I do that keeps me engagedand interested from day to day.How do you get ready for an especiallydifficult case?I find it helpful to practice the difficult parts outloud ahead of time. I know that doesn’t work foreveryone, and I work hard to not to come off astoo scripted. But for me, saying the tough partsout loud shows me what will and won’t soundcredible, where I need to break the argumentdown, and what is and isn’t actually importantto my position. Thinking it through or writing itdown doesn’t have the same sharpening effectas making myself actually say and listen to it.Is there a case you are most proudof, and why?I’m most proud of the first jury trial I participatedin. We represented a company that had developeda truly game-changing medical technologybut was being squeezed by lower cost competitorswho were taking advantage of the years ofR&D that our client had put in. It felt great towatch the inventors tell the jury their story (intrue Silicon Valley style they had founded theircompany in a garage), explain how importantthe technology was to patients, and ultimatelywin. I also found speaking in front of a jury exhilaratingand decided it was something I wantedto do again.What are your ambitions?I’d like to develop my skills and experience as alitigator to the point that clients with high stakesdisputes will trust me in the first chair. Litigationis a craft as much as a profession, and thelearning process is ongoing. My goal is to becomegood enough at discovering, shaping, andtrying a case that clients will reach out to me tohelp resolve their toughest problems.Do you have any advice for studentsthinking of getting into IP law?The various areas of IP law (copyright, trademarkand patents) are all relatively complexwith a number of somewhat obscure doctrines.Choose one area to focus on and take the timeto learn the fundamentals in law school.The next step is to think hard about what typeof practice you want—litigation, transactional,prosecution, etc. Each are very different, willspeak to different interests and skills, and willgive you a different lifestyle.It’s really a misnomer to think about practicing ‘IPlaw’, and taking the time early on in your career toreally think about what you want to do on a dayto-daybasis (beyond the subject area) will helpensure you’re happy doing it years later. IPProDavid Lisson is an associate in the litigation department at Davis Polk & Wardwell LLP andworks in the Menlo Park office. He has experience litigating patent infringement and other intellectualproperty cases, as well as general commercial disputes.David has worked on matters in various industries, including telecommunications, data andvideo networks and services, minimally invasive surgical devices, and search engine anddatabase applications.He has been an associate at Davis Polk since 2007. From 2005 through 2006, he was a lawclerk at the Supreme Court of Canada.17 www.ipprotheinternet.com