Other Barks & Bites, January 10: SCOTUS to Review Section 101 Petitions Today and Hear Oral Arguments in Trademark Cases Next Week

This week in Other Barks & Bites: the U.S. Supreme Court will meet today for a conference during which it will consider several petitions regarding patent-eligibility under Section 101; next week, the Supreme Court will also hear oral arguments in a pair of trademark cases regarding defense preclusion and profits awards; the Fifth Circuit decides a novel issue and denies statutory copyright damages for post-registration infringement; China announces that its domestic invention patent grants surpass goals set by the national government; Sonos sues Google for patent infringement a few years after the two companies collaborate on speaker technology; the BBC wins a trademark case in China over the BBC logo; the PTAB rules that Google isn’t an interested party in a validity trial petitioned by RPX; and China rules that an AI-produced news article has copyright protections.

Bites 

SCOTUS to Hear Oral Arguments in Trademark Cases on Profits Awards, Defense Preclusion – On Monday, January 13, oral arguments in Lucky Brand Dungarees Inc. v. Marcel Fashion Group Inc. will ask the nation’s highest court to determine whether res judicata precludes a party from litigating a defense to trademark infringement that wasn’t raised in a previous case between the parties. On Tuesday, January 14, oral arguments in Romag Fasteners Inc. v. Fossil, Inc. will ask SCOTUS to decide whether a finding of willfulness is required to award profits to a party proving trademark infringement under 15 U.S.C. § 1125(a).

SCOTUS to Review Six Petitions on Patent-Eligibility Cases – On Friday, January 10, the Justices of the U.S. Supreme Court will hold an afternoon conference to consider petitions for certiorari from parties seeking appeal to the nation’s highest court. Among the cases being considered, six petitions present questions related to patent-eligibility under Section 101 of the Patent Act.

CAFC Overturns Claim Construction While Affirming Application of Prosecution History Estoppel – On Tuesday, January 7, the Federal Circuit issued a precedential decision in Amgen Inc. v. Amneal Pharmaceuticals LLC which vacated claim constructions entered in the District of Delaware as incorrect, undoing a finding that Amneal didn’t infringe patent claims asserted by Amgen. However, the appellate court affirmed the lower court’s finding that prosecution history estoppel barred Amgen’s infringement arguments against co-defendant Piramal. 

Fifth Circuit Eliminates Statutory Damages for Pre-Registration Copyright Infringement – On Thursday, January 9, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Southern Credentialing Support Services v. Hammond Surgical Hospital which eliminated statutory damages entered by the Eastern District of Louisiana in a copyright case after the appellate court determined that such damages are barred when infringement of a work began before the work’s copyright was registered, even when the type of infringement post-registration differs from the type of infringement occurring pre-registration.

UK High Court Finds Huawei Infringed Conversant SEPs in Case on Global FRAND Rates – On Wednesday, January 8, global IP management firm Conversant announced that the High Court of Justice in London issued a decision finding that Chinese telecom firms Huawei and ZTE both infringed on claims of two standard essential patents (SEPs) owned by Conversant which cover LTE mobile communications technologies. This April, the High Court will begin another trial in this case where it will set global fair, reasonable and non-discriminatory (FRAND) royalty rates on the infringed patents.

Chinese Patent Grants to Domestic Entities Surpasses CNIPA Goals – On Wednesday, January 8, Chinese state-run media outlets reported statistics from China’s National Intellectual Property Administration (CNIPA) which showed that the nation’s IP office issued 453,000 invention patents during 2019, an average of 13.3 patents per 10,000 Chinese citizens. These numbers surpass targets that were set by the Chinese government in its 13th Five Year Plan.

Copyright Royalty Board Sets Annual Assessment for Mechanical Licensing Collective Funding – On Wednesday, January 8, the Copyright Royalty Board published a final rule in the Federal Register which sets the first annual assessment of money to be paid by digital music providers and significant nonblanket licensees for funding the Mechanical Licensing Collective at $33.5 million. The final rule also addresses other aspects of Music Modernization Act (MMA) implementation including annual minimum fees for licensees and how each annual assessment should be allocated.

Barks 

Chinese Court Rules That AI-Written Document is Copyright Protected – On Thursday, January 9, Chinese state-owned news outlet Ecns.cn reported that the Shenzhen Nanshan District People’s Court has recently ruled that Chinese tech firm Tencent owns the copyright to a financial news article that was produced by an artificial intelligence algorithm and copied by another Chinese tech firm without permission.

PTAB Rules That RPX Subscriber Google Isn’t Interested Party in RPX IPR – On Tuesday, January 7, the Patent Trial and Appeal Board (PTAB) issued a final written decision in an inter partes review (IPR) proceeding petitioned by RPX Corp. to challenge patent claims owned by Publishing Technologies LLC that cover a method of managing information content over wireless networks. The PTAB’s ruling found that RPX subscriber Google, which has previously been sued on the now-invalidated claims, wasn’t an interested party in the IPR proceedings. 

National Inventors Hall of Fame Inducts 22 Inventors into Class of 2020 – On Tuesday, January 7, the National Inventors Hall of Fame announced at the consumer electronics show CES that it was inducting 22 inventors into the Hall of Fame as the Class of 2020. Among the inductees are included R. Rox Anderson for laser dermatology, James McEwen for the automatic surgical tourniquet and Stewart Adams and John Nicholson for ibuprofen.

Chinese Court Rules in Favor of BBC in Trademark Case – On Tuesday, January 7, Chinese state-owned news outlet Xinhua reported that Haidian District People’s Court issued an injunction against Beijing iYuba Tech Company after finding that it infringed a trademark owned by the British Broadcasting Corporation through its unauthorized use of a “BBC” logo. The ruling also awards costs and compensation to the BBC totaling 1 million yuan ($143,400 USD).

Sonos Files Patent Suit Against Google Over Speaker Technology – On Tuesday, January 7, speaker technology developer Sonos filed a lawsuit in the Central District of California alleging that Google’s sale of audio devices infringes on patent claims asserted by Sonos. Sonos claims that the infringement began occurring two years after the two firms collaborated on integrating Google Play Music with multi-room speaker systems created by Sonos.

Facebook Faces Patent Suit Over Walkie-Talkie Technology – On Tuesday, January 7, communications solutions firm Voxer filed a patent infringement suit against Facebook in the Western District of Texas alleging that various aspects of Facebook’s social messaging platforms, including Facebook Live and Instagram Live, infringe upon patent claims covering methods for voice and video transmission under unreliable network conditions and regardless of recipient availability.

TTAB Rules That “Sequencing by Binding” is Too Descriptive for DNA Trademark – On Monday, January 6, the Trademark Trial and Appeal Board (TTAB) issued a precedential decision in which it rejected a trademark application filed by Omniome, Inc. for the standard character mark “Sequencing by Binding” on the grounds that the phrase was merely descriptive of the DNA analysis products and methods which the mark would have covered.

Judge Sorokin Rules Against Fair Use Argument in Prince Copyright Case – On Monday, January 6, U.S. District Judge Leo Sorokin of the District of Massachusetts issued a ruling that dismissed a fair use argument raised by Kian Andrew Habib, a Massachusetts resident being sued by the estate of the late pop superstar Prince after posting videos of Prince concerts recorded by Habib to YouTube.

This Week on Wall Street 

Both Apple and Dow Jones Reach New Highs – On Thursday, January 9, both consumer tech giant Apple and the Dow Jones Industrial Average hit new record highs as most of Wall Street was buoyed by relaxed tensions regarding the potential of a military conflict with Iran.

Veeam Bought for $5B, Deal Will Move Headquarters to U.S. – On Thursday, January 9, U.S. venture capital firm Insight Partners announced that it had agreed to purchase Swiss data management company Veeam, which develops backup and disaster recovery software, in a deal valued at $5 billion. The acquisition will also involve moving Veeam’s executive headquarters into the U.S.

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: None
• Wednesday: Bank of America Corp. (111th)
• Thursday: Taiwan Semiconductor Manufacturing Co., Ltd. (8th)
• Friday: Schlumberger NV (59th)

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