Other Barks & Bites, Friday, February 28: CAFC Declines En Banc Rehearing in HZNP Finance, SCOTUS Shoots Down Apple Appeal and Delaware is Top Patent Forum in 2019

This week in Other Barks & Bites: the U.S. Department of Justice announces a two year prison sentence for trade secret theft; a new Lex Machina report shows that the District of Delaware receives the most patent suits among any U.S. district court during 2019; the U.S. Supreme Court declines to hear Apple’s appeal of $440 million patent ruling for VirnetX; a divided Federal Circuit declines a petition for en banc rehearing in a patent case involving the definiteness requirement under Section 112; Microsoft revises its quarterly guidance due to supply chain issues related to the coronavirus; the European Union’s highest court finds that the trademark “Fack Ju Göhte” is not morally unacceptable to German speakers; and an inventors’ class action lawsuit against the U.S. Patent and Trademark Office’s Sensitive Application Warning System (SAWS) proceeds past a motion to dismiss. 

Bites

District of Delaware Receives Most New Patent Cases in 2019 – Earlier this week Lex Machina released its Patent Litigation Report for 2020, which took a look back on the previous year of activity in both the federal district courts and at the Patent Trial and Appeal Board (PTAB). The District of Delaware saw 1,001 new patent cases filed during 2019, leading all districts and well ahead of second-place Central California (346 cases), Eastern Texas (333 cases) and the Western District of Texas (279 cases). On February 27, IPWatchdog and Lex Machina hosted an hour long webinar to review the Patent Litigation Landscape, discuss the strong surge in filings in the Western District of Texas, as well as the drop in inter partes review (IPR) petitions at the PTAB. Click Here Watch the Webinar.

DoJ Sentences Chinese National to Two Years’ Imprisonment in Trade Secret Case – On Thursday, February 27, the U.S. Department of Justice announced that Hongjin Tan, a Chinese national accused of stealing $1 billion worth of proprietary information from a former employer, has been sentenced to two years in prison. Last November, Tan pled guilty to charges including theft, unauthorized transmission and unauthorized possession of trade secrets.

CJEU Finds that G?hte Trademark Is Not Morally Unacceptable – On Thursday, February 27, the Court of Justice of the European Union issued a decision finding that the European Union Intellectual Property Office (EUIPO) improperly refused registration to a trademark application for the word sign “Fack Ju Göhte,” the title of a 2013 German comedic film, after finding that contextual factors indicate that the German-speaking public didn’t perceive the mark as morally unacceptable.

Copyright Office Issues Rule Allowing Email Submissions for DMCA Designated Agent Submissions – On Thursday, February 27, the U.S. Copyright Office issued a final rule in the Federal Register making technical amendments to the agency’s regulations for accepting submissions related to designated agent and service provider information required by the Digital Millennium Copyright Act (DMCA), permitting electronic waiver requests to be submitted to the Office via email.

Divided CAFC Declines En Banc Rehearing on Section 112 Definiteness Requirement – On Tuesday, February 25, a majority of the U.S. Court of Appeals for the Federal Circuit declined a petition for en banc rehearing in HZNP Finance Limited v. Actavis Laboratories UT. A dissent penned by Circuit Judge Alan Lourie argued that the Federal Circuit majority upheld an erroneous claim construction at the district court in evaluating the definiteness requirement under 35 U.S.C. § 112.

Copyright Office Issues Final Rule Requiring Email Submissions for Litigation Notices – On Tuesday, February 25, the Copyright Office published a final rule in the Federal Register requiring email submissions for statutory litigation notices which are required to be sent by litigants to the agency under Sections 411 and 508 of the Copyright Act.

SCOTUS Denies Apple’s Bid to Appeal Ruling for VirnetX – On Monday, February 24, the U.S. Supreme Court denied certiorari to an appeal filed by consumer tech giant Apple, leaving in place a Federal Circuit ruling affirming a patent infringement damages award of about $440 million to patent owner VirnetX.

Copyright Office Issues Proposed Rule on Newsletter Group Registrations – On Monday, February 24, the Copyright Office published a notice of proposed rulemaking in the Federal Register that would eliminate the requirement that newsletters must be published at least two days each week to qualify for a group registration. This rule seeks to encourage a broader range of publishers to register a month of newsletter issues without creating an administrative burden on the agency.

Barks

USPTO to Request Comments for Foreign Filing, Law School Clinic Programs – On Friday, February 28, the USPTO published a pair of notices on information collection proposals which it will submit to the Office of Management and Budget (OMB) related both to secrecy and license to export for foreign patent application filings as well as applications for the agency’s Law School Clinic Certification Program.

Peloton, Music Publishers Settle Copyright Infringement Suit – On Thursday, February 27, streaming bike exercise firm Peloton and members of the National Music Publishers’ Association (NMPA) announced that they had reached an agreement to fully settle all claims stemming from a lawsuit for copyright infringement filed by the NMPA over Peloton’s allegedly unlicensed use of copyright-protected music in its streaming exercise sessions

USPTO Updates Patent Assignment Dataset With 2019 Data – On Wednesday, February 26, the U.S. Patent and Trademark Office announced that the latest update to the agency’s Patent Assignment Dataset had been completed, providing freely available data on 8.6 million patent assignments involving about 14.9 million patents and patent applications occurring between 1970 and 2019.

Inventors’ Suit Against USPTO’s SAWS Program Survives Motion to Dismiss – On Wednesday, February 26, U.S. District Judge Colleen Kollar-Kotelly of the District of Columbia issued a ruling denying the USPTO’s motion to dismiss claims filed by inventors Paul Morinville and Gil Hyatt after finding that the inventors alleged sufficient facts to create an inference that records collected by the USPTO’s Sensitive Application Warning System (SAWS) program were covered by the Privacy Act.

Hologic Beats Patent Case By Invalidating bioMérieux SA Patent – On Tuesday, February 25, a jury verdict in the District of Delaware found that a patent covering an HIV detection technology and asserted by medical diagnostics firm bioMérieux SA was invalid, helping Hologic Inc. and Grifols SA escape a patent infringement suit in which bioMérieux SA was seeking patent infringement damages of up to $90 million.

New Hampshire Judge Sides With SIG Sauer in Handgun Patent Case – On Tuesday, February 25, U.S. District Judge Joseph DiClerico of the District of New Hampshire issued an order on summary judgment closing a patent case filed by Steyr Arms after finding that accused pistols manufactured by SIG Sauer did not infringe upon Steyr’s patent claims because they didn’t include a bridge for a one-piece multifunction metal part as covered by the asserted claims.

Netflix Says “Choose Your Own Adventure” Trademark is Generic – On Tuesday, February 25, Netflix filed an answer in a District of Vermont trademark infringement case brought by Chooseco arguing that the asserted trademark “Choose Your Own Adventure” should be invalidated because it is generic.

Lyft Loses Bid for Attorneys Fees Following PTAB Invalidation of Asserted Patent – On Monday, February 24, U.S. District Judge Jon Tigar of the Northern District of California issued a ruling finding that Lyft was not entitled to attorneys fees under 35 U.S.C. § 285 after Judge Tigar found that the Patent Trial and Appeal Board’s invalidation of RideApp’s patent was non-dispositive on the federal district court infringement proceeding.

This Week on Wall Street

Senate Approves $1B Budget to Remove Huawei, ZTE Gear From Rural Carriers – On Thursday, February 27, the U.S. Senate voted unanimously to send a bill to President Donald Trump which would provide $1 billion to U.S. rural telecommunications companies to be used for removing networking infrastructure and equipment provided by Chinese telecoms Huawei or ZTE and replace it with gear from other suppliers.

Microsoft Revises Quarterly Guidance Based on Coronavirus Fears – On Wednesday, February 26, computer software giant Microsoft announced that the company’s More Personal Computing segment, which includes sales of the Windows computer operating system, would likely grow slower than the company’s guidance for the third quarter of 2020 due to Chinese supply chain issues caused by the coronavirus.

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 Enterprise (80th)
• Wednesday: Marvell Technology Group (t-197th)
• Thursday: Continental AG (161st); Merck KGAA (t-170th)
• Friday: None