Bites (noun): more meaty news to sink your teeth into.
Barks (noun): peripheral noise worth your attention.
This week in Other Barks & Bites: the USPTO’s Precedential Opinion Panel delivers a key ruling for inventors; the Second Circuit rules that a series of six film scores weren’t works for hire under U.S. or Italian law; Gilead files for inter partes review of patents owned by the U.S. government covering PrEP treatments; Qualcomm and LG Electronics enter into a five-year patent licensing agreement for wireless technologies; Taiwan begins implementing a patent linkage system for drug approvals; HP appoints a new CEO; Eminem music publishing firm files a copyright infringement suit against Spotify; and the DOJ and the Copyright Office support Led Zeppelin in the “Stairway to Heaven” copyright case.
USPTO Precedential Opinion Panel Rules on Time Bar for IPRs
The Precedential Opinion Panel (POP) of the United States Patent and Trademark Office (USPTO) on Friday, August 23, overruled the institution decision of the Patent Trial and Appeal Board (PTAB) in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, holding that 35 U.S.C. 315(b), which relates to the time bar for filing inter partes review petitions, is not ambiguous and is triggered by any “service of a pleading asserting a claim alleging infringement, including where the serving party lacks standing to sue or the pleading is otherwise deficient.”
Federal Circuit’s 101 Invalidation Vacates Injunction, Enhanced Damages – On Wednesday, August 21, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Chamberlain Group v. Techtronic Industries which invalidated claims of a Chamberlain Group patent under Section 101 after the district court denied judgment as a matter of law (JMOL) by determining that the patent claims were valid after step 1 of the Alice test. The invalidated claims also resulted in vacature of an injunction, enhanced damages and attorney’s fees.
Second Circuit Determines Film Scores Not Works for Hire Under Italian or U.S. Law – On Wednesday, August 21, the U.S. Court of Appeals for the Second Circuit issued a decision in Ennio Morricone Music v. Bixio Music Group which reversed a district court’s grant of summary judgment that had prevented composer Ennie Morricone from terminating an assignment of copyrights covering scores for six films. The Second Circuit found that the scores weren’t considered works for hire under either U.S. law or Italian law.
Gilead Challenges U.S. Government’s Patents Covering HIV PrEP Treatment – On Wednesday, August 21, Gilead Sciences filed a petition for inter partes review at the U.S. Patent and Trademark Office seeking to challenge the U.S. Department of Health and Human Services’ patents covering the use of Gilead’s Truvada treatment as a pre-exposure prophylactic (PrEP) treatment to prevent the transmission of HIV.
Singapore Releases World’s First App for Trademark Application Filing – On Wednesday, August 21, the Intellectual Property Office of Singapore (IPOS) announced that it had released an app called IPOS Go on the Apple App and Google Play stores which will allow entities to file for trademark registrations directly from a mobile device in less than 10 minutes.
Qualcomm, LG Enter Into Five-Year Patent Licensing Agreement – On Tuesday, August 20, Qualcomm announced that it had reached an agreement with LG Electronics to license Qualcomm’s portfolio of wireless patents for the development of LG’s 3G, 4G and 5G single-mode and multimode smartphones.
Taiwan’s Patent Linkage System for Drug Approvals is Implemented – On Tuesday, August 20, the government of Taiwan began implementation of a patent linkage system that gives the owner of a new drug approval, and not just a patent owner, the right to file an application for patent-related information with the Taiwan Food and Drug Administration.
Federal Circuit Reverses-in-Part District Court’s Dismissal of Patent Complaint Under Time-Bar – On Friday, August 16, the Federal Circuit issued a precedential decision in Anza Technology v. Mushkin which reversed-in-part a district court’s grant of a motion to dismiss a second amended complaint as time-barred by the six-year statute of limitations for patent infringement damages claims under 35 U.S.C. § 286.
DOJ, Copyright Office Files Brief Supporting Led Zeppelin in “Stairway to Heaven” Case – On Thursday, August 15, the U.S. Department of Justice and the U.S. Copyright Office filed an amicus brief in Skidmore v. Led Zeppelin, currently before the U.S. Court of Appeals for the Ninth Circuit, asking the appellate court to find that the relevant portion of the copyrighted song “Taurus” was only entitled to “thin” copyright protection, which wasn’t violated since the relevant passage of “Stairway to Heaven” wasn’t virtually identical to that portion.
University of California Issued Eleventh U.S. Patent on CRISPR Technology – On August 20, the USPTO granted the University of California (UC) its eleventh U.S. patent on CRISPR-Cas9 gene-editing technology. UC expects six more patents to be granted soon.
“Baby Shark” at Center of South Korean Copyright Case – On Thursday, August 22, The Binghamton Press & Sun-Bulletin reported that Jonathan Wright, an Endwell, NY-based children’s entertainer who goes by the stage name Johnny Only, had filed a lawsuit in South Korean court alleging that SmartStudy, the company behind Pinkfong’s viral “Baby Shark” video, had infringed on Wright’s copyright in the song.
Eminem Publishing Company Sues Spotify for Willful Copyright Infringement – On Wednesday, August 21, Eight Mile Style, the publishing company for rapper Eminem, filed a lawsuit in the Middle District of Tennessee alleging that streaming music service Spotify has willfully infringed the copyright of 250 Eminem songs while failing to live up to the service’s obligations under the Music Modernization Act to properly distribute streaming royalties.
FDA Announces Public Comment Period on Patent Information Collection – On Wednesday, August 21, the Food and Drug Administration (FDA) published a notice in the Federal Register announcing a public comment period on the agency’s information collection practices related to the FDA’s authority to extend patent terms under the Drug Price Competition and Patent Term Restoration Act of 1984 and the Generic Animal Drug and Patent Term Restoration Act of 1988.
New Balance Alleges Patent, Trademark Infringement Against Nautica – On Wednesday, August 21, athletic apparel firm New Balance filed a lawsuit with claims of patent and trademark infringement against Authentic Brands Group, owner of the shoemaker Nautica which is selling footwear that allegedly copies New Balance’s designs including a large capital “N” on the side of the sneakers.
TTAB Finds That “Ricardo” Not Too Similar to “Richard” – On Wednesday, August 21, the Trademark Trial and Appeal Board (TTAB) found that the differences between the registered trademark “Ricardo” and a trademark application for “Richard Magazine” significantly outweighed the similarities in a decision showing the limits of the doctrine of foreign equivalents.
“Wild America” Trademark Infringement Claims Survive Motion to Dismiss – On Tuesday, August 20, U.S. District Judge William Martínez of the District of Colorado issued an order which denied parts of a motion for summary judgment filed by National Geographic, allowing trademark infringement claims filed by television personality Marty Stouffer, producer of the nature TV series “Wild America,” to move forward against National Geographic shows using similar names.
NIH Contemplating Exclusive Patent License for Blood Cancer Treatment Patents – On Tuesday, August 20, the National Institutes of Health (NIH) published a notice in the Federal Register announcing that it was contemplating granting an exclusive license to patent assets covering treatments for leukemia and lymphoma to San Francisco, CA-based immunotherapy firm Lyell Immunopharma.
TTAB Denies Windbrella Trademark Due to Functional Purpose – On Monday, August 19, the TTAB denied a trademark registration being sought by OEP Enterprise on the design of the two-canopy umbrella marketed under the brand name Windbrella because the mesh incorporated into the design served a functional purpose.
This Week on Wall Street
HP Promotes Lores to Serve as CEO – On Thursday, August 22, HP announced that Enrique Lores will be promoted from head of the company’s Imaging, Printing and Solutions division to serve as company CEO on November 1, taking over for current CEO Dion Weisler once he steps down from his position.
Salesforce Beats Revenue in First Earnings Report Since Tableau Acquisition – On Thursday, August 22, shares of Salesforce stock were up about 7 percent after the company posted second quarter earnings, posting $4 billion in revenue over analyst expectations of $3.95 billion in the first earnings report since the company acquired data visualization firm Tableau Software for $15.3 billion earlier this month.
Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2018 are announcing quarterly earnings next week (2018 rank in parentheses):
- Monday: None
- Tuesday: Hewlett Packard Company (80th)
- Wednesday: ZTE Corp. (94th)
- Thursday: Marvell Technology Group (t-197th)
- Friday: None
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