Other Barks & Bites for Wednesday, January 25th, 2017

Wednesday morning is upon us once more and we’re here to celebrate the start of this week’s midpoint with the latest installment of Other Barks & Bites! As always, we hope you’re able to glean some useful information on developments affecting the world of intellectual property from Washington D.C., Wall Street and beyond.

On the menu this week for Other Barks & Bites, the Supreme Court hears oral arguments in a case challenging the Lanham Act’s disparagement provision, a six-figure damages verdict goes in favor of former USPTO Deputy Director Russell Slifer, a TTAB petition is filed to challenge the trademark application for an NFL franchise currently in the relocation process, an announcement by a Japanese academic-industry research project that claims to have doubled the effectiveness of solar cell panel conversion rates, the FTC takes action against a pharmaceutical company and much more. 

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• This Week on Capitol Hill – Most of the activity on Capitol Hill has already concluded for the week as Monday and Tuesday were the only two days in which committee hearings were scheduled either in the U.S. Senate or the U.S. House of Representatives. On Tuesday morning, the U.S. Senate Committee on Commerce, Science & Transportation convened an executive session to formally adopt the rules and budget resolution for the 115th Congress and consider legislative measures including the Developing Innovation and Growing the Internet of Things (DIGIT) Act, the Improving Rural Call Quality and Reliability Act of 2017 and the Digital Coast Act. Also on Tuesday, the U.S. House of Representatives Judiciary Committee had a hearing to adopt committee rules and ratify subcommittee assignments.

• SCOTUS Hears Oral Arguments in Lee v. Tam – On Wednesday, January 18th, the U.S. Supreme Court heard oral arguments in Lee v. Tam, a case which will decide whether the disparagement provision of the Lanham Act is facially invalid under the Free Speech Clause of the First Amendment. According to coverage of the oral argument session from NPR, the day’s events were “schizophrenic” in the way that each side’s counsel was questioned and the case’s outcome is difficult to discern as a result. The case focuses on federal trademark registration for “The Slants,” an Asian-American rock band contending that they want to reappropriate a former racial slur. (Link to oral arguments before SCOTUS in Lee v. Tam)

• Fed. Cir. Vacates Ruling of Noninfringement of Patent Covering CoQ10 Supplements – On Monday, January 23rd, the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) issued a ruling vacating and remanding a decision from the U.S. District Court for the Southern District of Texas (S.D. Tex.) in which the district court ruled that Chinese drugmaker Zhejiang Medicine (SHA:600216) did not infringe upon a patent held by Japanese chemical firm Kaneka Health (TYO:4118). An S.D. Tex. judge held that Zhejiang manufacturing processes did not infringe a patent covering an industrial process for producing oxidized coenzyme Q10, an antioxidant used in health supplements. Fed. Cir.’s decision focused largely on how the term “oxidizing” was construed from the patent’s claims and the judicial panel concluded that there was a dispute of material fact regarding whether Zheijiang’s processes meet the “oxidizing” limitations in those claims. (Link to U.S. Patent No. 7910340, titled Processes for Producing Coenzyme Q10) (Link to Fed. Cir.’s decision in Zhejiang Medicine v. Kaneka Corporation appeal)

• FTC Takes Action Against Antitrust Violations by Endo Pharmaceuticals – On Monday, January 23rd, the Federal Trade Commission (FTC) announced that it had refiled a complaint and also filed a proposed stipulated order to resolve charges that Endo Pharmaceuticals (NASDAQ:ENDP) used pay-for-delay settlements to block consumer access to generic versions of its branded pain medications Lidoderm and Opana ER. These actions revive charges made by the FTC last March against Endo and other companies involved in reverse-payment settlements that eliminated generic competition. If upheld, the order would prevent Endo and its subsidiaries from entering into such anticompetitive schemes including “no-authorized generic” commitments in which brand companies agree not to compete with an authorized generic version of a drug for a period of time. The complaint and order for permanent injunction are both filed in the U.S. District Court for the Northern District of California (N.D. Cal.). (Link to official FTC complaint for injunctive and other equitable relief) (Link to official FTC joint motion for entry of stipulated order for permanent injunction)

• Japanese Industry-Academic Project Doubles Solar Cell Efficiency – On Wednesday, January 18th, Kyoto University and gas supplier Osaka Gas announced the results of an effort to double the rate at which solar cells can convert solar energy to electrical energy, up from 20 percent to 40 percent. Researchers used a nano-sized intrinsic silicon semiconductor etched with a number of identical, equidistantly-spaced rods to both narrow the wavelength of light bandwidths to concentrate energy and also withstand the heat of emitting visible wavelengths. (Link to Science Advances published research on this solar cell innovation)

• USPTO Deputy Director Slifer Wins $400K Verdict in S.D.N.Y. – On Tuesday, January 17th, IP monetization publication The Patent Investor broke news of a $400,000 jury verdict in the U.S. District Court for the Southern District for New York (S.D.N.Y.) against Cantor Technology, a division of Cantor Fitzgerald & Co. in favor of Russell Slifer, the deputy director of the U.S. Patent and Trademark Office. Slifer had filed a lawsuit against Cantor for reneging on the terms of a 2008 patent sale agreement which entitled Slifer to either $250,000 or the return of his patents if he had only been paid $100,000 within five years. Further judicial review could return the rights of the patents-in-suit to Slifer, according to comments by counsel published by Patent Investor. (Link to U.S. Patent No. 6899628, titled System and Method for Providing Game Event Management to a User of a Gaming Application) (Link to U.S. Patent No. 8641511, titled Real-Time Interactive Wagering on Event Outcomes) (Link to memorandum of law in support of Cantor in S.D.N.Y., October 2016)

• Microsoft Ventures Makes Strategic Investment in Cybersecurity Developer – On Tuesday, January 24th, Tel Aviv, Israel-based cybersecurity firm Illusive Networks announced a recent round of funding which included a strategic investment from Microsoft Ventures, the venture capital arm of Redmond, WA-based tech giant Microsoft Corporation (NASDAQ:MSFT). Illusive provides Deceptions Everywhere solutions involving patent-pending technology designed to neutralize targeted cyber attacks by creating a deceptive layer on a network and delivering a breach report to security administrators. Multiple rounds of funding have netted $30 million in capital for Illusive according to a press release. (Link to Illusive Networks press release on Microsoft Ventures funding)

• 1st Cir. BAP Upholds Rights of Trademark Licensees Over Trademark Owner Bankruptcy – It’s not often that a bankruptcy appellate panel (BAP) provides a substantive ruling involving intellectual property but the BAP for the U.S. Court of Appeals for the First Circuit (1st Cir.) issued a decision last November which has interesting implications for trademark holders. In deciding Mission Product Holdings, Inc. v. Tempnology LLC, 1st Cir.’s BAP gave Mission the right to use Tempnology’s trademark and logo in marketing athletic products. Tempnology had moved to terminate the licensing agreement while in Chapter 11 bankruptcy. The impacts of this decision were given some life on the newswire thanks to a January 24th analysis of the case published online by JDSupra Business Advisor. (Link to 1st Cir. BAP’s decision in Mission Product Holdings v. Tempnology)

• L.A. Gear Files Trademark Opposition to Application by NFL’s LA Chargers – The announcement of a planned move of the National Football League’s Chargers franchise from their current home in San Diego to Los Angeles is fairly recent, but the team had filed trademark applications for “LA CHARGERS” going back to January 2016. Weeks before the Chargers’ relocation was announced, that organization faced a trademark opposition brought by fashion designer L.A. Gear to the USPTO’s Trademark Trial and Appeal Board (TTAB). L.A. Gear’s petition, filed December 20th, opposes the LA Chargers mark on grounds of priority and likelihood of confusion that a consumer might think that goods marketed with the LA Chargers logo were sponsored or approved by L.A. Gear. (Link to official TTAB proceedings in LA Chargers trademark opposition) (Link to LA Chargers U.S. trademark application being opposed by L.A. Gear)

• 9th Cir. Affirms C.D. Cal. Ruling in Copyright Case Involving Illegally Distributed Adult Photos – On Monday, January 23rd, the U.S. Court of Appeals for the Ninth Circuit (9th Cir.) filed a ruling in Perfect 10 v. Giganews which upheld an earlier ruling in the case from the U.S. District Court for the Central District of California (C.D. Cal). 9th Cir. affirmed C.D. Cal.’s ruling that Perfect 10, exclusive owner to the copyright for thousands adult images, could not charge Giganews, a maintainer of Usenet servers available for fee-based access, as liable for infringement because Perfect 10 failed to raise a triable issue of fact as to whether Giganews materially contributed to or induced infringement of Perfect 10’s copyrights. The 9th Cir. judicial panel found that evidence brought forth by Perfect 10 did not meet the “volitional conduct” requirement to prove copyright infringement as Perfect 10 could only prove that Giganews passively stored material on Usenet servers to make that material available to others upon request. (Link to 9th Cir.’s decision in Perfect 10 v. Giganews)

• World Trademark Review Releases WTR 1000 Identifying Top Trademark Firms – On Tuesday, January 17th, World Trademark Review released the 2017 edition of its WTR 1000, a research directory which identifies the top trademark firms in many jurisdictions, including the United States. Among the top U.S. firms identified by the WTR 1000 include Debevoise & Plimpton LLP, Fross Zelnick Lehrman & Zissu PC, Kilpatrick Townsend & Stockton LLP and Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP. A press release from Fish & Richardson PC notes that this year marks the seventh consecutive year that the firm has been named a top firm by WTR 1000. (Link to top U.S. trademark firms and practitioners identified by WTR 1000)

• This Week on Wall Street – This week’s earnings report calendar kicked off with earnings reports from oil field service company Halliburton (NYSE:HAL) of Houston, TX, and Taiwanese semiconductor firm United Microelectronics Corp (NYSE:UMC). Neither of these companies were in IFI CLAIMS Top 50 U.S. patent assignees for 2016 but both were among the Top 300 organizations granted U.S. patents according to the Intellectual Property Owners Association (IPO); in that year, Halliburton was 85th overall with 464 U.S. patents in 2015 and United Microelectronics was 132nd overall with 252 U.S. patents. On Tuesday, materials firm 3M (NYSE:MMM) of Saint Paul, MN, posted a one cent beat on earnings per share (EPS) for 2016’s fourth quarter; 3M was 83rd in 2015 with 484 U.S. patents. On the same day, Dutch electronics firm Koninklijke Philips (NYSE:PHG) reported that it had missed fourth quarter earnings and noted a regulatory issue involving its defibrillators at the U.S. Food and Drug Administration (FDA); IFI CLAIMS places Philips at 28th overall during 2016 with 1,069 U.S. patents last year. Today, look for Dallas, TX-based telecom giant AT&T (NYSE:T) to release earnings after the market closes and Chicago, IL-based aircraft developer Boeing Company (NYSE:BA) to report earnings before the market opens. Korean consumer tech developer LG Electronics (KRX:066570) will also release earnings on Wednesday. AT&T, Boeing and LG all placed among IFI CLAIMS’ top 50 patent earners for 2016, placing 37th, 30th and 7th overall, respectively. Thursday will see the most recent earnings release from Alphabet Inc. (NASDAQ:GOOGL) of Mountain View, CA, the parent company of Google which was IFI CLAIMS’ 5th-ranked firm with 2,835 U.S. patents in 2016. Friday will wrap up with an earnings report from German manufacturing and electronics firm Siemens AG (ETR:SIE), a company which took in 984 U.S. patents in 2016 to rank 33rd that year.

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