In this week’s edition of Other Barks – A growing Chinese consumer electronics firm acquires a patent portfolio which makes them the fourth global producer of smartphones with the capacity to develop semiconductors in-house. The Supreme Court denies writ in a case, leaving in place a lower court’s decision on plaintiff standing in asserting foreign trademarks in the U.S. The Federal Circuit upholds patent invalidations levied against IP monetization firm Intellectual Ventures. Also, songwriter industry groups lobby the Copyright Office to adjust royalty fee structures in light of the growth of online streaming media.
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- This Week on Capitol Hill – This morning gets under with two early hearings of subcommittees of the U.S. Senate Committee on Appropriations, one a 10 AM hearing which will examine funding the nation’s transportation infrastructure needs, the other a 10:30 AM hearing on saving lives through medical research. At 10 AM today, the U.S. Senate Committee on Commerce, Science, & Transportation will hold a hearing about oversight of the Federal Communications Commission. At 10:15 AM Thursday, a subcommittee of the U.S. Senate Committee on Homeland Security & Governmental Affairs will convene a hearing that examines the use of science in the rulemaking process, including proposals for improving transparency and accountability. Over in the U.S. House of Representatives, today is a very busy day which will include 10 AM hearings of the House Transportation Committee on building air transportation infrastructure in the 21st century as well as a subcommittee of the House Committee on Science, Space, and Technology on the regulation of space with a focus on innovation, liberty and international obligations. At 11 AM today, the House Small Business Committee will convene a hearing to examine small business cybersecurity concerns. Thursday will see 10 AM hearings from the House Transportation Committee on the role of federal agencies in building the nation’s water infrastructure as well as a hearing of a subcommittee of the House Homeland Security Committee on engagement between the Department of Homeland Security and the private sector on cybersecurity concerns; at 11 AM on Thursday, the research and technology subcommittee of the House science committee will look at oversight of the National Science Foundation.
- Sprint Earns $139.8M Reasonable Royalty with Willful Infringement Against Time Warner Cable – On Friday, March 3rd, a jury returned a verdict in the U.S. District Court for the District of Kansas (D. Kan.) which found Time Warner Cable (NYSE:TWX) guilty of infringing claims of five patents asserted by Sprint Corp. (NYSE:S) The jury verdict form indicates that Sprint not only proved that the reasonable royalty for Time Warner’s infringement totaled $139.8 million but that Time Warner’s infringement was willful, which could cause trebled damages down the road. Sprint first filed suit against Time Warner back in December 2013 asserting a series of patents from a Voice-over-Packet (VoP) patent portfolio which Sprint alleged were infringed by Time Warner’s broadband and/or packet-based telephony services marketed as Digital Home Phone or Business Class Phone services. (Link to original complaint filed in Sprint Communications Company v. Time Warner Cable Inc. et. al.) (Link to jury verdict form entered in case)
- Epson Files Series of Lawsuits in D. Ore. Targeting Online Ink Cartridge Resellers – On Friday, March 3rd, Japanese hardware electronics giant Seiko Epson Corporation (TYO:6724) and two of its American subsidiaries filed lawsuits against three companies selling ink cartridges online through e-commerce platforms like Amazon. Epson is asserting the same two patents covering ink cartridges for printers against each defendant. Each suit also notes that the asserted patents have been involved in legal actions at the U.S. International Trade Commission (ITC) which have resulted in general exclusion, limited exclusion and cease and desist orders against an overlapping group of products. (Link to official complaint in Seiko Epson Corporation et. al. v. Gaea Supplies Corporation) (Link to official complaint in Seiko Epson Corporation et. al. v. Ow Supplies Corp. et. al.) (Link to official complaint in Seiko Epson Corporation et. al. v. Ta Trix USA Inc.)
- Xiaomi Ramps Up Patent Acquisition with Image Capture Portfolio from Casio – On Tuesday, March 7th, intellectual property publication IAM Magazine reported on a patent assignment filed with the U.S. Patent and Trademark Office (USPTO) indicating that Japanese consumer electronics firm Casio Computer (TYO:6952) transferred a total of 59 IP assets covering image capture, image processing and camera technologies to Chinese communications equipment developer Xiaomi Corporation. As IAM notes, this is the latest in a series of Xiaomi patent acquisitions from major tech developers and protects its manufacture and marketing of the first semiconductor produced in-house, making it one of four smartphone companies which develop their own chips after Korea’s Samsung Electronics (KRX:005930), U.S.-based Apple Inc. (NASDAQ:AAPL) and China’s Huawei Technologies. (Link to IAM Magazine report on Xiaomi patent acquisition) (Link to patent assignment document filed with the USPTO)
- SCOTUS Denies Writ in Case on Plaintiff Standing in Foreign Trademark Assertions – Last Monday, February 27th, the U.S. Supreme Court denied to grant a writ of certiorari to take up Belmora LLC v. Bayer Consumer Care AG on appeal. The denial leaves in place a decision handed down by the U.S. Court of Appeals for the Fourth Circuit (4th Cir.) in which that court interpreted the Lanham Act did not require an entity to use a mark in commerce within the United States in order to assert rights to that trademark within the U.S. Bayer filed the original suit in this case, alleging that Belmora’s marketing of its FLANAX pain relief product created consumer confusion with the FLANAX pain relief product marketed by Bayer in Mexico for four decades. (Link to petition for writ by Belmora filed with the U.S. Supreme Court)
- USPTO Adjusts Forms for Electronic Trademark Registration Filings – On Thursday, March 2nd, The National Law Review reported on changes to certain electronic filing forms put into effect this January by the USPTO. The changes affect forms available through the Trademark Electronic Application System (TEAS) and the Trademark Electronic Application System International (TEASi). Among the reported form changes include adjustments to the declaration and signature portion of trademark application and declaration of use forms. (Link to The National Law Review article on the form and fee changes)
- Songwriter Groups Petition U.S. Copyright Office for Better Streaming Royalties – Today, a hearing at the Copyright Royalty Board (CRB) will feature representatives from the songwriting industry who will ask the board to consider a new standard for royalty rates paid by online music streaming services like Spotify or Pandora, according to a Tuesday report from Bloomberg. Quotes published by Bloomberg from songwriter industry representatives indicate that groups will ask the CRB to consider moving from a structure based on revenues to a per-stream royalty structure. (Link to Bloomberg report on today’s hearing at the CRB)
- Italian Copyright Case Forces Facebook to Turn Off Location-Sharing Feature – On Monday, March 6th, Reuters reported on a decision in Italian court from last August that was only recently made public in which an Italian software development firm successfully argued that American social media giant Facebook Inc. (NASDAQ:FB) copied an application which helped Facebook users connect with friends in the vicinity. The suit from Italy-based Business Competence, filed in 2013, argued that Facebook incorporated features of the company’s Faround app into Facebook’s Nearby feature. Reuters reports that Facebook was ordered to stop operating the Nearby feature or pay 5,000 euros per day, and that an additional hearing in the matter is scheduled for April 4th. (Link to Reuters report on Italian copyright suit targeting Facebook)
- Conservative, Internet Industry Groups Ask Congress to Roll Back Digital Privacy Rules – On Tuesday, March 7th, a collection of 18 organizations representing conservative think-tanks and Internet industry players alike sent a letter to the chairman and ranking member of the Senate commerce committee asking them to exercise authority they have under the Congressional Review Act to eliminate broadband privacy rules adopted during the Obama Administration. The letter expresses the groups’ concerns that Federal Communications Commission (FCC) oversight of Internet service providers (ISPs) and subsequent broadband privacy rules create a confusing regulatory environment in which some Internet companies are regulated by the FCC and others by the Federal Trade Commission (FTC). The letter comes not long after FCC Chairman Ajit Pai decided to stay the enacting of the broadband privacy rules through an internal procedure at the agency. (Link to letter on FCC broadband privacy rules address to Senate commerce committee leadership)
- Fed. Cir. Deals a Pair of Blows to Intellectual Ventures, Affirms Patent Invalidations – On Tuesday, March 7th, the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) released a pair of decisions affirming the conclusions reached at separate district courts that patents asserted by IP licensing company Intellectual Ventures in both cases are directed at ineligible subject matter under 35 U.S.C. Section 101. Fed. Cir. found that the patents, which were directed at methods of managing data stored in the extensible markup language (XML) format, covered subject matter which failed the two-step test for patent eligible subject matter established by SCOTUS’s June 2014 decision in Alice Corporation v. CLS Bank International. (Link to Fed. Cir.’s decision in Intellectual Ventures I LLC et. al. v. Capital One Financial Corporation et. al.) (Link to Fed. Cir.’s decision in Intellectual Ventures I LLC et. al. v. Erie Indemnity Company et. al.)
- N.D. Cal. Upholds Validity of Wireless Device Pairing Patent in Face of Alice Challenge – In late February, biotech and pharma patent news blog Patent Docs reported on an early February court order filed in the U.S. District Court for the Northern District of California (N.D. Cal.) denying a motion for a judgment on the pleadings in Fitbit Inc. v. Aliphcom et. al. The motion, filed by Jawbone fitness device developer Aliphcom, argued that claims of three patents directed at pairing portable monitoring devices, clients and servers were patent-ineligible under the Alice standard. The N.D. Cal. judge found that Fitbit’s asserted patents were directed to an inventive step and satisfied step two of the Alice standard test; the court declined to make a judgment based on step one of the Alice standard test. (Link to Patent Docs coverage of N.D. Cal.’s order denying the motion for judgment on the pleadings) (Link to official court order denying the motion for judgment on the pleadings in Fitbit Inc. v. Aliphcom et. al.)
- This Week on Wall Street – It’s a very light week in terms of patenting firms reporting quarterly earnings and the first significant release doesn’t come until Thursday. German chemical company Merck KGaA (ETR:MRK) will report its earnings for the fourth quarter of 2016 on that day. In 2015, Merck’s patent holding subsidiary placed 167th overall by earning a total of 199 U.S. patents that year, according to the Intellectual Property Owners Association (IPO). Friday will also see fourth quarter earnings from Taiwanese power supply and component developer Delta Electronics, Inc. (TPE:2308); Delta placed 195th overall in 2015 with 166 U.S. patents earned that year.
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