Other Barks & Bites for Wednesday, July 3: Athena v. Mayo Denied En Banc Review; USPTO Announces Trademark Attorney Rule; China Says IP Theft Will Be Compensated

Bites (noun): more meaty news to sink your teeth into.

Barks (noun): peripheral noise worth your attention.

https://depositphotos.com/11078435/stock-photo-american-dog.htmlHappy 4th! This week Barks & Bites comes early, starting with a bite: The Federal Circuit denies rehearing of Athena Diagnostics v. Mayo Collaborative Services, shattering the hopes of many amici and diagnostic companies; Huawei warns against politicization of IP law after the Trump Administration rolls back part of its ban against Huawei’s U.S. suppliers; Chinese President Xi Jinping talks IP theft compensation at G20 summit; USPTO announces new rule for attorneys representing foreign-domiciled trademark applicants and amends its software acquisition plan; the University of California earns a seventh patent covering CRISPR-Cas9 gene editing; Toshiba registers the UK’s first motion trademark; major U.S. tech firms plan to move production away from China; and Ed Sheeran’s copyright case is stayed until the “Stairway to Heaven” case is resolved at the Ninth Circuit.


Federal Circuit Denies Rehearing of Athena v. Mayo– in an 86-page order issued on Wednesday, a majority of Court of Appeals for the Federal Circuit judges denied en banc rehearing of Athena Diagnostics v. Mayo Collaborative Services in a 7-5 vote. Judges Lourie, Reyna, Chen, Hughes, Taranto, and Chief Judge Prost denied the petition. Judges Moore, Newman, O’Malley, Wallach and Stoll dissented from the decision to deny. Many amici and patent stakeholders were hoping—though largely skeptical—that the Court would reconsider the case. 

USPTO Announces New Rule for Trademark Attorneys – On Tuesday, July 2, the U.S. Patent and Trademark Office announced a new rule that requires all foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board (TTAB) proceedings to be represented by a U.S.-licensed attorney in all trademark matters before the USPTO. 

Huawei White Paper Warns Against the Politicization of IP – On Tuesday, July 2, Chinese telecom giant Huawei released a white paper on innovation and intellectual property which discusses the company’s intellectual property activities over 30 years and warns that “if politicians use IP as a political tool, they will destroy confidence in the patent protection system.” 

President Xi Tells G20 That IP Theft Will Be Compensated – On Friday, June 28, Chinese President Xi Jinping told world leaders meeting at the Group of 20 summit in Osaka that China would establish a mechanism that will punish infringers of intellectual property and compensate those whose IP has been stolen. 

USPTO Amends $1 Billion Software Acquisition Plan – On Tuesday, July 2, Bloomberg Government reported that the USPTO had rebranded its $1 billion plan for purchasing software and database solutions, renaming it Business Oriented Software Solutions (BOSS) and using the agency’s Alternative Acquisition Clause to evaluate companies which may be deemed eligible to bid on BOSS contracts. 

Federal Circuit Upholds Invalidation of Patents Asserted Against Amazon – On Tuesday, July 2, the Court of Appeals for the Federal Circuit issued a decision in Innovation Sciences, LLC v. Amazon.com, Inc. which upholds a ruling from the Eastern District of Virginia invalidating a patent claim asserted against Amazon on Section 101 grounds and granting summary judgment to Amazon for noninfringement of claims to another patent.

CJEU Advocate General Recommends “Fack Ju Göhte” Mark Should be Registrable – In echoes of the recent U.S. case, Iancu v. Brunetti, an opinion of the Advocate General (AG) of the Court of Justice of the European Union proposes that the CJEU should set aside a judgment of the General Court and annul a decision by the EUIPO to reject the trademark “‘Fack Ju Göhte’”. “Freedom of expression clearly applies in the field of trade marks,” wrote the AG. 

https://depositphotos.com/75370073/stock-photo-happy-dog-playing-outside-and.htmlPresident Trump Rescinds Part of Huawei’s Supplier Ban – On Saturday, June 29, President Donald Trump announced at the G20 summit that certain U.S. companies would be able to resume sales of high tech products to Huawei, which has been facing a supplier ban from the Trump Administration since May. 

HHS Receives HIV Preventative Treatment Patent – On Tuesday, July 2, the USPTO issued a patent to the U.S. Department of Health and Human Services covering medicines derived from tenofovir, the same ingredient in Gilead Sciences’ Truvada, for preventative treatment against HIV, leading to some speculation that the U.S. government could demand royalties from Gilead. 

Third Circuit Vacates Permanent Injunction Against Former Commerce Bank CEO – On Monday, July 1, the Court of Appeals for the Third Circuit vacated a ruling by the District of New Jersey which had issued a permanent injunction against banking executive Vernon Hill preventing him from selling a book he co-authored while he served as CEO of Commerce Bank.



University of California Issued Another Patent Covering CRISPR-Cas9 – On Tuesday, July 2, the University of California announced that it was granted a seventh patent from the USPTO covering a technology related to CRISPR-Cas9 gene editing techniques one week after the Patent Trial and Appeal Board (PTAB) declared a new patent interference proceeding between UC and the Broad Instituted regarding CRISPR-Cas9 patents.

Ed Sheeran Copyright Suit Stayed Until “Stairway to Heaven” Case Decided – On Tuesday, July 2, U.S. District Judge Louis Stanton of the Southern District of New York issued an order delaying a trial for copyright infringement brought by the estate of Ed Townsend, co-writer of the Marvin Gaye classic “Let’s Get It On,” against Ed Sheeran over his single “Thinking Out Loud” until the Court of Appeals for the Ninth Circuit issues a decision in the copyright case involving Led Zeppelin’s “Stairway to Heaven.” 

Coinbase Targeted in Blockchain Sector’s First Patent Infringement Case – On Friday, June 28, Anuwave LLC filed a patent infringement case in the District of Delaware against cryptocurrency exchange Coinbase in what is believed to be the first patent infringement case involving blockchain-related patent claims. 

Damages Limited in Copyright Case Against Miley Ray Cyrus – On Friday, June 28, U.S. District Judge Lewis Kaplan of the Southern District of New York issued a ruling allowing a copyright infringement case against Miley Ray Cyrus’ “We Can’t Stop” to continue although Judge Kaplan ordered that Jamaican singer/songwriter Michael May can only seek damages for the three years leading up to his May 2018 lawsuit.

https://depositphotos.com/154852622/stock-photo-soldier-with-military-dog-outdoors.htmlGibson Fails to Register Flying V Guitar as Trademark in EU – On Friday, June 28, the Second Chamber of the EU General Court issued a ruling in which it determined that Gibson Brands’ trademark for the shape of its Flying V guitars was invalid based on a challenge from German guitar and stringed instrument companies Warwick and Framus because Gibson’s mark hadn’t acquired a distinctive character.

Snap Sees Mixed Results in Patent Challenges at the PTAB – On Friday, June 28, the PTAB upheld the validity of messaging patent claims from two patents owned by Vaporstream and challenged by Snap, although the PTAB invalidated claims from two other Vaporstream patents based on Snap validity challenges.

Toshiba Registers First Motion Mark in UK – In late June, news reports indicated that Japanese tech conglomerate Toshiba became the first entity to successfully register a motion mark with the UK Intellectual Property Office. Such marks recently became available thanks to revised trademark laws in the UK. 

Colorado Judge Rules That No Clinical Trial Means No Injunction in Trade Secret Case – On Wednesday, June 26, U.S. District Judge Philip Brimmer of the District of Colorado denying a permanent injunction against Eli Lilly subsidiary Loxo after Array BioPharma produced no evidence that its prior partnership with Loxo resulted in a drug ready for clinical trials.

This Week on Wall Street

U.S.-China Trade War Leads Major Tech Firms to Move Production Out of China – On Wednesday, July 3, news reports indicated that major U.S. tech firms including Dell, HP, Microsoft, Alphabet and Amazon are making plans to shift production out of China in order to reduce their costs of operating in that country.

Reports Indicate Broadcom May Acquire Symantec – On Tuesday, July 2, Bloomberg reported that semiconductor giant Broadcom is in the advanced stages of acquisition talks with the cybersecurity firm Symantec according to sources close to the discussion.

House Financial Services Democrats Ask Facebook to Halt Libra Cryptocurrency – On Tuesday, July 2, House Financial Services Committee Chairwoman Maxine Waters (D-CA) and other Democrats on the committee sent a letter to Facebook executives asking the social media giant to delay the implementation of its Libra cryptocurrency until the committee could assess privacy, national security and monetary policy issues.


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Join the Discussion

5 comments so far.

  • [Avatar for Anon]
    July 8, 2019 08:51 am

    Night Writer @ 4,

    It is more than a bit disconcerting that this parade of views resulted in en banc being denied – when it is made abundantly clear that at a fundamental level, there is such shocking disparity of views on not only what the law as written by Congress means, but also what the law as re-written by the Court means.

    THIS really should be emphasized in a follow-up to Tillis and Coons just how unwilling the judicial branch is in cleaning up the mess that branch has created.

  • [Avatar for Night Writer]
    Night Writer
    July 5, 2019 07:27 am

    The most striking thing about this is that the judges are telling us their policy decisions on eligibility and making findings of fact with no evidence.

    It illustrates that the judges think that they can decide what is patentable or not based on their personal opinions of what should and should not be eligible.

  • [Avatar for Pro Say]
    Pro Say
    July 3, 2019 07:20 pm

    “All your patents are belong to us.” (though we’re willing to share them w/SCOTUS)


  • [Avatar for Anon]
    July 3, 2019 05:51 pm

    Mr. Cole,

    I would posit that the fragmented nature of the rationale behind the votes is far more of a disappointing result.

    On something so very basic and critical as subject matter eligibility, we have a range across a wide spectrum from “there is nothing wrong per se with the Supreme Court rulings” to “the Supreme Court has it very wrong at a foundational level.”

    While ALL 12 speak to some degree that the Supreme Court “is to blame,” the disparity of the entire group — and the decision to NOT take the matter en banc to AT LEAST TRY to speak as a single group — shows that THIS group has outlived its usefulness and needs to be dispersed and a new group (free from the fire-hose training of the Supreme Court) needs to be established.

  • [Avatar for Paul Cole]
    Paul Cole
    July 3, 2019 04:17 pm

    Athena is a VERY DISAPPOINTING result, although possibly now bound for the Supreme Court. The fragmented nature of the votes would point in that direction.