Posts in IPWatchdog Articles

It was a return to form this week in the district courts, with 115 new patent filings (led by more than 40 new IP Edge complaints) to just 23 new Patent Trial and Appeal Board (PTAB) filings—the latter number being bolstered by a number of challenges to patents held by Raymond Anthony Joao subsidiary Beteiro, LLC by a conglomerate of gambling companies, including PointsBet USA, DraftKings, Inc., BetMGM, LLC, Hillside New Jersey LLC, and Entain Corporate Services Ltd. Micron filed another set of challenges against Katana Silicon Technologies patents, Ecobee challenged another Magnetar entity, Ollnova, which has brought suit on Internet of Things (IoT) related devices; and it was another week without any discretionary denials.

Security issues have long dogged the U.S. trademark system. Unscrupulous operators – sometimes competitors, sometimes bad actors with nothing better to do – too frequently muck up the application process by modifying those filings or filing improper submissions. This is no small problem given the U.S. Patent and Trademark Office (the USPTO) remains a mammoth and international hub of trademark filings. In fiscal 2021, trademark application filings topped 943,000, a record high. This marked an increase of about 28% from the prior year, with that increase driven primarily by Chinese filers.

The right-to-repair movement has been making strides in recent years, as many states are now contemplating bills that would require electronic device manufacturers to make their parts, tools and know-how available to device owners and independent repair shops. While the goal of expanding repair opportunities for consumers is certainly laudable, repair advocates are pulling a fast one when it comes to the federal copyright law implications of their preferred state legislative solutions. As Professor Adam Mossoff and I explain in a new Hudson Institute policy memo, these proposed state right-to-repair bills are unconstitutional on their face because they directly conflict with the rights secured to authors under the federal Copyright Act. They are also the wrong policy since they would upset the legal and policy foundations that have led to the unprecedented success of today’s thriving digital marketplace. States should not waste valuable time and resources on harmful right-to-repair bills that will be struck down when they are inevitably challenged.

Three amici filed briefs last week in Jump Rope System’s petition asking the U.S. Supreme Court to review a U.S. Court of Appeals for the Federal Circuit (CAFC) decision upholding a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Eagle Forum Education and Legal Defense Fund and the Fair Inventing Fund filed briefs in support of the jump rope company while DivX filed in support of neither party .

Jump Rope Systems, the inventor of a novel jump rope system, is petitioning the Supreme Court to clarify “whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the definition of a claim term in a patent incorporated by reference into the patents at issue does not dictate the definition of claims in the asserted patents. The CAFC thus reversed the district court’s claim construction and vacated and remanded its grant of summary judgment of invalidity based on indefiniteness.

On October 28, Kristina Kashtanova, an artist and artificial intelligence (AI) consultant and researcher, received notice from the U.S. Copyright Office (USCO) that the registration for the first issue of her partially AI-generated graphic novel, Zarya Of The Dawn, may be canceled. A month earlier, on September 15, the USCO issued a registration for Kashtanova’s work, which was subsequently widely publicized as the first known instance of an AI-generated work being successfully registered with the USCO. In the USCO’s recent communication, “I was asked to provide details of my process to show that there was substantial human involvement in the process of creation of this graphic novel,” Kashtanova explained by email. When asked to confirm the potential cancellation for Kashtanova’s registration, the USCO provided a written statement saying…“Copyright under U.S. law requires human authorship. The Office will not knowingly grant registration to a work that was claimed to have been created solely by machine with artificial intelligence.”

Virtual Reality (VR) and Augmented Reality (AR) intellectual property (IP) have been around for some time now, but how do they relate to the Metaverse? And how will VR and AR patent rights change as the Metaverse continues to evolve? The Patently Strategic Podcast will be exploring these topics in our next installment of Into the Patentverse.

Intellectual property (IP) law developments may not be high up on most people’s list of worst nightmares this Halloween, but for IP owners and lawyers, they can cause a fright. From patent eligibility to the economy, here are some thoughts on the scariest IP issues out there; add yours in the comments—if you dare.

This week in Washington IP news, both house of Congress remain quiet during regularly scheduled work periods. Elsewhere, the Hudson Institute explores the growing right-to-repair movement and potential conflicts with federal policy on intellectual property protections. The Center for Strategic & International Studies explores the first three-year strategic plan for the Cybersecurity and Infrastructure Security Agency and how it should be implemented. Finally, the U.S. Patent and Trademark Office closes the week with a webinar discussing the agency’s recent request for comments (RFC) on initiatives to support robust and reliable patent rights being issued by the agency. 

The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of an inter partes review (IPR) proceeding under 35 U.S.C. § 325(d) if “the same or substantially the same prior art or arguments previously were presented to the Office.” In Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH (“Advanced Bionics”), the PTAB established a two-part framework for determining whether a PTAB panel should exercise discretion under Section 325(d). This article surveys recent PTAB decisions having the common fact that the IPR challenges rely upon prior art that is the same or substantially the same as prior art submitted in an IDS during prosecution to glean insights as to how parties and the Board are addressing Advanced Bionics in this scenario.

It was February 2017 when Waymo, Google’s self-driving car unit, sued Uber in what would become the biggest trade secret case of the century. Waymo alleged that its former manager, Anthony Levandowski, had organized a competing company while still at Waymo, and before leaving had downloaded 14,000 confidential documents. As it turned out, Uber had known about this when it agreed to pay $680 million for Levandowski’s brand new startup; and we’ve already looked at how the hubris of that hasty transaction provides lessons for hiring in new markets driven by emerging technology.

In two separate precedential opinions issued Friday, October 28, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated two separate preliminary injunction orders granted by the U.S. District Court for the Northern District of Illinois against hoverboard products alleged to infringe four design patents due to “substantive defects” in the court’s reasoning for granting the injunctions. Judges Dyk, Taranto and Stoll heard both appeals.

This week in Other Barks & Bites: the Supreme Court of Japan rules that students taking lessons at music schools are not subject to copyright fees for in-lesson performances for instructors; the England and Wales Court of Appeal denies Apple’s request to set aside an injunction in its SEP/FRAND case with Optis Cellular; Retired Chief Judge Paul Michel urges the Federal Circuit to issue more en banc decisions to clarify patent law; the Federal Circuit reverses a district court’s preliminary injunction for applying the improper legal standard in determining the plaintiff’s likelihood of success in a design patent suit against Gyroor hoverboards; Elon Musk’s takeover of Twitter begins by firing executives linked to misreported bot accounts; Senators Thom Tillis and Chris Coons ask the U.S. Patent and Trademark Office and the U.S. Copyright Office to collaborate on a national commission on AI; and more.

Usain Bolt filed a recent U.S. trademark application depicting his widely recognized victory pose. The trademark has been applied for in relation to items such as clothing, jewellery, shoes and restaurant and bar services. As Bolt has retired from athletics, he is clearly hoping to add more strings to his bow.

The England and Wales Court of Appeal this morning said that Optis Cellular Technology is entitled to an injunction before a lower court has set fair, reasonable and non-discriminatory (FRAND) terms for a license to Optis’ standard essential patents (SEPs) if Apple refuses to take a court-determined FRAND license. But in a post script to the ruling, Lord Justice Arnold said both Apple’s appeal and Optis’s cross-appeal “illustrate yet again the dysfunctional state of the current system for determining SEP/FRAND disputes” and that the European Telecommunications Standards Institute (ETSI) and other standards development organizaitons (SDOs) should “make legally-enforceable arbitration of such disputes part of their IPR policies” to curb the problem.