Other Barks & Bites, Friday, January 3: USPTO Names New CFO, CAFC Invalidates Zohydro ER Patent Claims, Ninth Circuit Says TTAB Proceedings Don’t Preclude District Court Case

This week in Other Barks & Bites: the Federal Circuit affirms a district court’s obviousness finding invalidating Persion Pharmaceutical’s liver pain treatment patent; Deputy Trademark Commissioner Meryl Hershkowitz is promoted to Acting Commissioner for Trademarks at the USPTO; Jay Hoffman will begin his new role as  Chief Financial Officer at the USPTO on January 6; the Copyright Royalty Board publishes a notice of inquiry on royalties for statutory licenses; the Ninth Circuit finds that TTAB cancellation proceedings don’t preclude claims of trademark infringement in district court; the creators of the children’s cartoon Peppa Pig score a copyright victory in Chinese courts; a New Jersey District Court finds that the SCOTUS decision in Impression Products doesn’t prevent trademark claims against resellers; Singapore announces a new chief for its international IP commercialization agency; and Tesla beats Wall Street expectations on fourth quarter car deliveries.

Bites 

CAFC Obviousness Finding Invalidates Liver Pain Treatment Patent – On Friday, December 27, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd. in which the appellate court affirmed a District of Delaware decision invalidating Persion’s patent for Zohydro ER, covering a method of treating pain in patients with liver conditions. The CAFC found no reversible error in the district court’s obviousness determination, despite Persion’s arguments that the lower court improperly relied on inherency as well as improper pharmacokinetic and patient profiles. 

Jay Hoffman Appointed USPTO Chief Financial Officer -the USPTO announced on Friday that Jay Hoffman will serve as the agency’s new Chief Financial Officer starting January 6. “Hoffman will oversee an annual budget exceeding $3 billion and serve as the principal financial advisor to the USPTO’s director and senior leadership team,” said a press release. Hoffman has more than 22 years of federal financial management experience, including 15 years as a member of the Senior Executive Service and, most recently, eight years as the CFO for the U.S. Consumer Product Safety Commission (CPSC), where he was the principal adviser to the CPSC chairman on all aspects of financial management.

USPTO Appoints Hershkowitz to Serve as Acting Trademark Commissioner – On Thursday, January 2, Bloomberg Law reported that the U.S. Patent and Trademark Office had appointed Meryl Hershkowitz, a long-time agency employee and formerly the Deputy Commissioner for Trademark Operations, to serve as Acting Commissioner for Trademarks as the USPTO searches for a replacement for former Commissioner Mary Boney Denison. 

Carla Hayden Responds to Senators’ Request for Copyright Office Modernization Committee – On Thursday, January 2, Librarian of Congress Carla Hayden sent a letter addressed to Senators Thom Tillis (R-NC), Patrick Leahy (D-VT), John Cornyn (R-TX) and Mazie Hirono (D-HI) discussing the U.S. Copyright Office’s modernization efforts and expressing willingness to discuss the modernization advisory committee suggested by those Senators in a December 12 letter to the Copyright Office.

Singapore Announces New Head of International IP Commercialization – On Thursday, January 2, the Intellectual Property Office of Singapore (IPOS) announced that it had appointed Ming Tan, previously the Head of Stewardship for the Singapore lifestyle firm COMO Group, to lead IPOS International, the agency’s international IP commercialization subsidiary.

Philippines, Laos Enter Into IP Cooperation Treaty – On Thursday, January 2, the intellectual property offices of the Southeastern Asian countries Laos and the Philippines announced that they had agreed to a bilateral cooperation deal to develop frameworks for mutual capacity-building initiatives as well as a streamlined mechanism for exchanging information and best practices between their IP offices. 

Copyright Royalty Board Issues Inquiry on Categorizing Claims for Statutory License Royalties – On Monday, December 30, the Copyright Royalty Board published a notice of inquiry in the Federal Register regarding the categorization of claims for royalties submitted for cable or satellite royalties paid under Section 111 and Section 119 statutory licenses as well as identifying invalid claims for those royalties. 

Ninth Circuit Revives Trademark Claim After Finding No TTAB Preclusion – On Friday, December 27, the U.S. Court of Appeals for the Ninth Circuit issued a decision in V.V.V. & Sons Edible Oils v. Meenakshi Overseas in which the appellate court reversed a district court’s finding that V.V.V. & Sons’ petition for cancelling trademarks at the Trademark Trial and Appeal Board (TTAB) precluded that party’s ability to sue for trademark infringement. The Ninth Circuit determined that the TTAB cancellation proceedings had no preclusive effect because it’s a limited proceeding with no ability to determine issues of infringement.

Ninth Circuit Finds No Copyright Infringement Against Office Depot for Copying Curriculum Materials – On Friday, December 27, the Ninth Circuit issued a decision in Great Minds v. Office Depot, Inc. in which the appellate court affirmed the Central District of California’s earlier decision to dismiss copyright infringement claims filed against Office Depot. The district court found that Office Depot didn’t become a Creative Commons licensee of Great Minds through the copying of Eureka Math materials for school and school district licensees. 

Barks 

Goodyear Settles Trademark Suit Against Punk Rock Band – On Thursday, January 2, Goodyear filed documents in the Northern District of Illinois indicating that it had settled its trademark dispute against an Illinois punk rock band after the band admitted that its use of both the moniker “Good Year Pimps” as well as Goodyear logos violated an earlier agreement between the band and Goodyear.

Peppa Pig Creator Wins Copyright Case in China – On Wednesday, January 1, China’s Intermediate People’s Court of Ji’an City ordered that the creators of the children’s cartoon Peppa Pig were owed royalties from a Chinese entity selling an infringing toy because of the accession of both the UK and China to the Berne Convention.

Supercell Sued for Patent Infringement Over “Clash Royale” Mobile Game – On Monday, December 30, Japanese social media software firm Gree Inc. filed a lawsuit in the Eastern District of Texas alleging claims of patent infringement against Supercell Oy, makers of the popular “Clash Royale” mobile app video game, asserting patent claims covering a system of dividing group battles based on battle conditions and skill levels.

New Jersey Decides Impression Products Doesn’t Preclude Trademark Claims Against Reseller – On Monday, December 30, a ruling entered in the District of New Jersey found that the U.S. Supreme Court’s 2017 decision in Impression Products v. Lexmark International doesn’t prevent Rockwell Automation from pursuing trademark infringement claims against resellers of its industrial automation systems.

Indiana Court Rules Eli Lilly’s Alimta Patent Would Be Infringed By Generic – On Monday, December 30, Eli Lilly and Company announced that the District Court for the Southern District of Indiana issued a ruling in a patent infringement case which found that Apotex’s generic version of the Alimta vitamin regimen treatment would infringe upon Eli Lilly’s patent covering that treatment.

Kylie Jenner Settles Case Over “Born to Sparkle” Trademark – On Monday, December 30, legal documents filed in the Central District of California indicated that reality TV star Kylie Jenner had settled a trademark dispute with Sheree Cosmetics LLC which had sued Jenner over her use of the mark “Born to Sparkle” on cosmetics products.

Pfizer Subsidiary Drops Trade Secret Claims in Cancer Treatment Appeal – On Friday, December 27, Array BioPharma, a subsidiary of Pfizer, removed its trade secret claims from an appeal of the District of Colorado’s refusal to enter a preliminary injunction against Loxo Oncology, a subsidiary of Eli Lilly, in a case involving the development of targeted cancer drugs.

Apple Adds Unlawful Trafficking to Copyright Case Against Corellium – On Friday, December 27, Apple filed a first amended complaint in its copyright lawsuit against Corellium which added a claim for unlawful trafficking caused by Corellium’s actions in commercializing copies of Apple’s mobile operating system to circumvent technological protection measures.

This Week on Wall Street

Tesla Beats Expectations on Fourth Quarter Car Deliveries – On Friday, January 3, Tesla announced that it made 112,000 vehicle deliveries globally during 2019’s fourth quarter, beating Wall Street expectations on deliveries and helping stock jump up by 5 percent to about $452 per share in early morning trading.

Chinese Cash Reserve Stimulus Lifts Wall Street – On Thursday, January 2, the S&P 500 opened at a record high and both the Dow Jones Industrial Average and Nasdaq hit large market values at the start of trading a day after China announced a plan to reduce the amount of cash that national banks are mandated to hold as reserves, the eighth time China has cut these reserves since the beginning of 2018.

AMD, 2019’s Fastest Growing S&P Stock, Continues to Stoke Optimism – On Thursday, January 2, a stock analyst from Nomura Instinet raised his price target for AMD stock by $18 to $58 per share after AMD closed out the year as the best-performing stock on the S&P 500, increasing its per share price by 148 percent during the year.