Welcome to our weekly installment of Other Barks & Bites! This is the first edition of this news feature sporting a title we’ve chosen from over a dozen suggestions provided by our readers (Credit to the reader known as American Cowboy for offering this idea). We choose this title because it not only fits the IPWatchdog theme but it also conveys the sense that these headlines are a collection of stories that we want to feature for our readers, but haven’t had the time to write about in depth for one reason or another.
Once again, we’re offering a quick look at the wider world of intellectual property as well as developments on Wall Street and Capitol Hill, which could impact business as well as research & development.
This week’s news headlines include nomination hearings for the potential incoming U.S. Commerce Secretary, the Supreme Court’s granting certiorari for an important case in biologics, a patent infringement suit targeting the NFL, the expiration of copyright protecting the works of a very influential science fiction author from the early 20th century, and another sports figure — this time UFC Lightweight Champion Conor McGregor — filing trademark applications. If you have news you’d like to see in next week’s Other Barks & Bites, CLICK HERE.
- This Week on Capitol Hill – Today, at 10 AM, the U.S. Senate Committee on Commerce, Science, & Transportation will hold a hearing to examine the nomination of Wilbur Ross as President-elect Trump’s pick to serve as Secretary of the Department of Commerce. As we noted last week before Ross’s first hearing was rescheduled, the next commerce secretary will have the power to appoint a new director of the U.S. Patent and Trademark Office. Other nomination hearings that could have a big impact on American business, which could impact how research and development dollars are spent by companies in the near future, include the U.S. Senate Committee on Environment & Public Works’ examination of Scott Pruitt to lead the U.S. Environmental Protection Agency (EPA) at 10 AM Wednesday, and the U.S. Senate Committee on Energy & Natural Resources’ 10 AM Thursday hearing to examine the nomination of Rick Perry to serve as Secretary of the Department of Energy. As of Tuesday afternoon, there were no hearings scheduled for the remainder of the week at the U.S. House of Representatives.
- SCOTUS Grants Certiorari in Amgen v. Sandoz – On Friday, January 13th, the U.S. Supreme Court granted a petition for a writ of certiorari in Amgen Inc. v. Sandoz Inc., a case which could affect the process by which pharmaceutical firms developing drugs which are biosimilar to drugs already on the market. One of the issues in the case will ask SCOTUS to decide potential recourse, including patent infringement actions, for sponsors of products referenced by biosimilar applicants when such applicants fail to provide required information. (Link to Supreme Court orders dated January 13th including grant of certiorari in Amgen Inc. v. Sandoz Inc.)
- FTC, DOJ Update 20+ Year Old Guidance on Antitrust Guidelines for IP Licensing – Also on January 13th, the Federal Trade Commission (FTC) and the U.S. Department of Justice (DOJ) announced new guidelines explaining how those agencies will evaluate activities related to the licensing of intellectual property, including patents, copyrights and trade secrets. This is the first major update to antitrust guidelines regarding IP licensing since 1995 and was designed to reflect changes in statutory and case law since that time, such as the passage of the Defend Trade Secrets Act as well as Supreme Court decisions in Illinois Tool Works Inc. v. Independent Ink, Inc. and Leegin Creative Leather Products, Inc. v. PSKS, Inc. (Link to FTC press release on joint FTC/DOJ announcement of new guidelines) (Link to official version of updated guidelines issued by FTC and DOJ)
- Expensify Prevails at TTAB in Trademark Spat Targeting Concierge Virtual Assistant – In late December, San Francisco-based expense management service developer Expensify, Inc., secured a win at the USPTO’s Trademark Trial and Appeal Board (TTAB) when a party opposing an Expensify’s trademark application for the standard character mark “CONCIERGE” dismissed its opposition with prejudice. Expensify pursued the “CONCIERGE” mark to protect its use on online and mobile software automating business processes like expense reporting through the use of tech like optical character recognition. Expensify was represented by commercial litigation firm Kasowitz, Benson, Torres & Friedman LLP, which argued that the party opposing a trademark was a shell company representing the interests of Michael Gleissner, a German entrepreneur and film producer who has allegedly warehouses trademarks without a good faith intent to use those marks. (Link to trademark opposition proceedings available through TTABVUE)
- Google Files Patent Application for Autonomous Pickup/Dropoff Tech – A patent application filed by Google in June 2015 has recently gotten some media attention over its implications in the autonomous vehicle sector. The filing started getting headlines in early January when PatentYogi reported on the patent application’s publication, calling the invention “an Uber-killer.” According to the filing, Google is hoping to patent a system having a memory storing map information identifying locations where passengers can be picked up and dropped off, and a server computer with processors that can receive a request identifying a location for pick-up or drop-off. (Link to U.S. Patent Application No. 20160370194, titled Determining Pickup and Destination Locations for Autonomous Vehicles)
- NFL Targeted in Patent Infringement Suit Involving Streaming, Interactive Content – On Thursday, January 12th, San Francisco-based digital television firm OpenTV, Inc., filed a patent infringement suit against NFL Enterprises LLC, the media promotional arm of the National Football League. OpenTV is asserting a series of seven patents covering technologies for streaming and interactive multimedia content. The company alleges that NFL Enterprises’ provision of streaming interactive content, including services like NFL Now, NFL Game Pass and NFL Mobile, infringe upon OpenTV’s patents-in-suit. The case has been filed in the U.S. District Court for the Eastern District of Texas (E.D. Tex.). (Link to OpenTV’s complaint for patent infringement)
- UFC Lightweight Champion Conor McGregor Files Trademark Applications – Have any interest in staying at The Notorious Hotel? Or maybe you’d like to get a haircut from a barbershop licensed by current Ultimate Fighting Championship (UFC) lightweight champion Conor McGregor? Either of those could become a reality in the near future, as is indicated by the filing of a pair of trademark applications with the USPTO on January 9th. Both applications, for standard character marks of “THE NOTORIOUS” and “CONOR MCGREGOR”, seek to cover those marks in seven classes covering goods and services like hotel and restaurant services, barber shops, gymnasium services, computer games, aftershave, books and clothing. (Information on U.S. Trademark Serial Nos. 87293402 and 87293336 is available through USPTO’s Trademark Electronic Search System)
- Biogen Agrees to $1.25 Billion Settlement with Forward Pharma over MS Treatments – On Tuesday, January 17th, Cambridge, MA-based biopharmaceutical firm Biogen Inc. (NASDAQ:BIIB) announced that it had agreed to a $1.25 billion cash payment to settle patent infringement claims brought by Danish firm Forward Pharma A/S (NASDAQ:FWP), including an irrevocable license to all of Forward Pharma’s patents. This brings to end part of a dispute over patents held by Forward Pharma covering the use of dimethyl fumarate as an active pharmaceutical ingredient; Biogen uses that agent in its multiple sclerosis treatment Tecfidera, which has earned billions in sales revenues. Other cases between these two firms currently in U.S. and EU courts could impact future royalty payments regarding the sale of Tecfidera. (Link to Biogen’s official announcement of the settlement agreement)
- Works of H.G. Wells Begin to Enter the Public Domain – On August 13th, 1946, the world of science fiction lost a dignitary with the passing of English writer H.G. Wells. Both science fiction and academia received a gift this January, however, when the literary works of H.G. Wells began to lose copyright-protected status and move into the public domain 70 years after the author’s death. According to Scotland’s The National, Scottish universities are readying for a new wave of academic research into Wells’ works.
- Trademark Ruling Gives Viacom Victory in Krusty Krab Restaurant Case – Last Wednesday, January 12th, a judge in the U.S. District Court for the Southern District of Texas (S.D. Tex.) handed a summary judgement victory to NYC-based Viacom, Inc. (NASDAQ:VIAB) which prevents a Texas restaurant from taking the name “The Krusty Krab,” a reference to a fictional eatery in the popular animated television show SpongeBob SquarePants. IJR Capital Investments, which planned to open a restaurant and filed trademarks for the Krusty Krab name, argued that Viacom held no actual trademark and couldn’t assert protection rights because the name was an element of a fictional work and not in use in commerce. The S.D. Tex. judge, however, awarded Viacom’s common law rights to the name. (Link to original complaint filed by Viacom in S.D. Tex.) (Link to Law360 article on trademark ruling in favor of Viacom)
- Zuckerberg Testifies in Copyright Infringement Case Involving OculusVR – On Tuesday, January 17th, Facebook Inc. (NASDAQ:FB) CEO Mark Zuckerberg testified on behalf of Facebook’s virtual reality subsidiary OculusVR in a copyright infringement case currently playing out in the U.S. District Court for the Northern District of Texas (N.D. Tex.). The suit, filed by Rockville, MD-based ZeniMax Media Inc. in May 2014, alleges that OculusVR developed its Rift headset with the use of intellectual property provided by ZeniMax which was never licensed. (Link to original ZeniMax complaint filed in N.D. Tex.)
- This Week on Wall Street – On Tuesday, January 17th, NYC-based financial holding company Morgan Stanley (NYSE:MS) released its fourth quarter 2016 earnings report which showed strong quarterly revenues for both bond and equities trading. Other important financial sector players reporting earnings on Wednesday include NYC-based Citigroup Inc. (NYSE:C) and fellow New York banking firm Goldman Sachs Group (NYSE:GS). On Thursday, January 19th, Irvine, TX-based specialty materials developer Celanese Corporation (NYSE:CE) will release earnings after the market closes; the company was tied for 251st among companies receiving U.S. patent grants in 2015, earning a total of 128 patents that year (IPO will release 2016 patent totals in a few months). Friday, January 20th, will see an earnings release from American industrial giant General Electric (NYSE:GE) of Fairfield, CT before the market opens. Recent statistics released by IFI CLAIMS shows that GE earned 1,646 U.S. patents in 2016, the 16th largest total during that year. Friday will also see a pre-market earnings release from Cincinnati, OH-based consumer goods multinational Procter & Gamble (NYSE:PG). P&G didn’t place among 2016’s top 50 patenting companies but it did earn 453 U.S. patents in 2015 to come in 87th place that year.
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