Other Barks & Bites, Friday, February 21: Federal Circuit Upholds Damages Limit for Failure to Mark, India Signs IP Accord with U.S. and Copyright Office Announces Fee Increases

This week in Other Barks & Bites: The CAFC issued a precedential decision in Arctic Cat Inc. v. Bombardier Recreational Products Inc., affirming a ruling that Arctic Cat cannot recover pre-complaint infringement damages because its licensee failed to mark products covered by Arctic Cat’s patent claims; the USPTO relaxes a proposed rule requiring email addresses on trademark applications; the Copyright Royalty Board announces royalty rates for sound recordings transmitted by subscription services; the Department of Justice and other amici file briefs supporting Oracle at the Supreme Court in its copyright case against Google; India’s cabinet approves an IP plan with the U.S. ahead of a visit by President Trump; Sprint and T-Mobile revise their merger deal to hand a larger stake to Deutsche Telekom; a California state court jury hears closing arguments in a $1 billion trade secret case against Uber; Motorola Solutions announces a massive win on trade secret and copyright damages; and licensing talks between Nokia and Daimler on connected car technologies reportedly fail.

Bites 

CAFC Upholds Damages Limit for Failure to Mark Thrust Steering Products – On Wednesday, February 19, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Arctic Cat Inc. v. Bombardier Recreational Products Inc., affirming the Southern District of Florida’s ruling that Arctic Cat cannot recover pre-complaint infringement damages because its licensee, Honda, failed to mark products covered by Arctic Cat’s patent claims in compliance with 35 U.S.C. § 287. In reaching this ruling, the Federal Circuit found that willful infringement didn’t establish the actual notice required by Section 287. 

CRB Announces Rates, Terms for Digital Performances of Sound Recordings – On Thursday, February 20, the Copyright Royalty Board published a final rule in the Federal Register announcing the rates and terms governing the digital performance of sound recordings by new subscription services providing transmissions to residential subscribers as part of a cable or satellite television bundle and ephemeral recordings necessary to facilitate those transmissions. The new rates and terms will go into effect January 1, 2021, and remain in effect until December 31, 2025.

DOJ, Other Amici File Supreme Court Briefs in Google v. Oracle – On Wednesday, February 19, about two dozen amici filed their briefs with the U.S. Supreme Court in the Google v. Oracle copyright case which is slated for oral argument on March 24. Among the notable amici who filed that day are the U.S. Department of Justice, former Congressmen Orrin Hatch, Robert Goodlatte and Dennis DeConcini, the Motion Picture Association and USTelecom – The Broadband Association, each of which supports Oracle’s position that Google copied copyrighted Java code to build its Android mobile operating system. 

Copyright Office Announces Service Fee Increases – On Wednesday, February 19, the U.S. Copyright Office published a final rule in the Federal Register announcing fee adjustments for various agency services, including fee increases for paper and online standard application registration filings, revisions for databases including mostly non-photographic works and service charges for various types of failed payments.

India Signs IP Accord with the U.S. Before Trump Visit – On Wednesday, February 19, India’s Union Council of Ministers approved the signing of a memorandum of understanding on an intellectual property pact with the United States less than a week before Donald Trump makes his first visit to India as U.S. President.

USPTO Creates New System of Records for Trademark Applications and Registrations – On Tuesday, February 18, the U.S. Patent and Trademark Office published a notice of a new system of records in the Federal Register for maintaining information related to trademark applications and registrations to help the agency carry out its duties in issuing federal trademarks and maintaining a register of trademarks.

Eleventh Circuit Upends Southern Florida’s Invalidation of Real-Estate Trademark – On Tuesday, February 18, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Royal Palm Properties, LLC v. Pink Palm Properties, LLC which overturned the Southern District of Florida’s grant of renewed judgment as a matter of law after the Eleventh Circuit found that Pink Palm Properties did not meet its burden of proving that the “Royal Palm Properties” trademark should be cancelled for lack of distinctiveness or confusing similarities with previously registered marks.

USPTO Issues Revised Examination Guide Relaxing Email Rule – On Friday, February 14, the USPTO issued a revised examination guide on mandatory electronic filing requirements for trademark applications which allows applicants to include email addresses for outside counsel or foreign counsel in response to privacy concerns on the prior rule which required the submission of the trademark owner’s email address that would be publicly displayed on documents electronically accessible through the Trademark Electronic Application System.

Barks 

USPTO Beats Race and Age Discrimination Suit Filed by Former Worker – On Thursday, February 20, U.S. District Judge T.S. Ellis III of the Eastern District of Virginia granted a motion on summary judgment in favor of the USPTO in an age and racial discrimination case brought by a former agency employee after finding no genuine issue of material fact related to any workplace hostility caused by the employee’s race or age and the severity or pervasiveness of the hostile workplace. 

Closing Arguments Reached in $1B Trade Secret Case Against Uber – On Wednesday, February 19, a jury in San Francisco Superior Court heard closing arguments in a trade secret case filed by Kevin Halpern, the founder of Celluride Wireless who is seeking $1 billion in damages from Uber for alleged trade secret theft in building its mobile ride hailing service. 

District Court Suit Accuses Google of Committing Fraud at the PTAB – On Tuesday, February 18, Taiwanese-based video delivery firm CyWee Group filed a lawsuit in the Western District of Texas accusing Google of perpetrating fraud against the USPTO by misleading the Patent Trial and Appeal Board (PTAB) regarding the time-barred nature of petitions Google filed for inter partes review (IPR) proceedings on CyWee’s patents. 

Apple Moves to Dismiss Copyright Suit Against Servant TV Series – On Tuesday, February 18, consumer tech giant Apple Inc. filed a motion to dismiss a Central California copyright case for failure to state a claim, arguing that plaintiff Francesca Gregorini, the director and screenplay writer for The Truth About Emanuel, has only alleged that Apple copied unprotectable concepts in producing the AppleTV+ series Servant.

J&J Subsidiary Loses Some Robotic Surgical Tool Patent Claims at PTAB – On Tuesday, February 18, Johnson & Johnson’s surgical systems subsidiary Ethicon LLC faced the invalidation of some patent claims related to a mounting portion of a robotic surgical tool by the PTAB, although other claims related to rotational motion of the tool were upheld as valid after the Board’s final written decision.

Youth Development Nonprofit Files Trademark Suit Against LeBron James’ Company – On Tuesday, February 18, Maryland-based youth development nonprofit Game Plan Inc. filed a trademark infringement suit in the District of D.C. against Nike, ESPN and Uninterrupted LLC, an athletic apparel brand company owned by NBA superstar LeBron James, over their use of “More Than an Athlete” on branded merchandise.

Motorola Solutions Wins $765M Trade Secret, Copyright Verdict Against Hytera – On Friday, February 14, Motorola Solutions announced that a jury verdict entered in the Northern District of Illinois awarded the company $764.6 million in damages for trade secret and copyright theft alleged against Chinese-based telecom firm Hytera Communications for copying confidential documents and source code related to two-way radio technologies.

Nokia, Daimler Licensing Talks for Connected Vehicle Patents Reportedly Fail – On Friday, February 14, software patent news blog FOSS Patents reported information from unnamed sources close to patent licensing talks between vehicle maker Daimler AG and networking tech developer Nokia who indicated that a second round of negotiations for a license to Nokia’s connected vehicle patents has failed.

This Week on Wall Street 

John Deere Posts Beat on EPS and Revenue, Bolsters Confidence in U.S. Agriculture Sector – On Friday, February 21, agricultural equipment company John Deere reported earnings for 2020’s first quarter in which the company beat analyst expectations on earnings per share by 28 cents and revenues by $520 million, thanks in large part to stabilization in the U.S. farm sector.

Sprint, T-Mobile Revise Merger Deal to Improve Deutsche Telekom’s Stake – On Thursday, February 20, mobile telecommunications providers T-Mobile and Sprint jointly announced that they have agreed to revise the merger agreement between those two companies to improve the stake of Deutsche Telekom, the Germany-based majority owner of T-Mobile, up to 43 percent of shares in the newly formed mobile company.

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: HP Inc. (48th); Japan Display Inc. (64th)
• Tuesday:com, Inc. (155th)
• Wednesday: None
• Thursday: Bayer AG (50th); Dell Technologies (12th); Nielsen Holdings PLC (t-202nd)
• Friday: BASF SE (99th)

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