Other Barks & Bites, Friday, March 6: CAFC Upholds $1.1 Billion Verdict Against Apple and Broadcom, Library of Congress Seeks Input on Next Register of Copyrights, USPTO Clarifies Practice on Additional Info for Unintentional Delay

This week in Other Barks & Bites: Daren Tang of IPOS is elected next Director of WIPO; the CNIPA waives patent annuity late fees and major American tech firms ask employees to work from home in response to the spread of coronavirus; the Library of Congress asks for public input on the qualities and priorities of the next Register of Copyrights; the Federal Circuit affirms rulings involving inequitable conduct in filing patent applications and the ITC’s cease-and-desist order against Comcast X1 set-top box sales; former Google engineer Anthony Levandowski files for Chapter 11 bankruptcy following trade secret verdict; HP rejects Xerox’s $35 billion takeover bid; and Charter Communications seeks to overturn $1 billion copyright verdict by alleging improper copyright registrations.

Bites

Federal Circuit Affirms PTAB Decision to Uphold Patent in $1.1B CalTech Case – On Thursday, March 5, the Federal Circuit issued a Rule 36 summary judgment which affirmed a previous decision by the Patent Trial and Appeal Board (PTAB) upholding the validity of patent claims owned by the California Institute of Technology and asserted in district court against Apple and Broadcom leading to a $1.1 billion jury verdict against those companies in January. 

USPTO Clarifies Rule on Submitting Information About Unintentional Delay – On Monday, March 2, the U.S. Patent and Trademark Office published a clarification in the Federal Register regarding the agency’s practice related to collecting additional information to assess whether delays in reviving abandoned patent applications or paying maintenance fees were unintentional.

CJEU Overturns General Court Ruling That “BBQLOUMI” Mark Isn’t Precluded – On Thursday, March 6, the Court of Justice of the European Union issued a ruling remanding a trademark case to the General Court, which must determine whether there is a likelihood of confusion between the trademark “BBQLOUMI” and the collective mark “HALLOUMI.”

IPOS’ Tang Tapped to Lead WIPO – On Wednesday, March 4, the World Intellectual Property Organization (WIPO) announced that Daren Tang, formerly the Chief Executive of the Intellectual Property Office of Singapore (IPOS), has been elected to serve as the next Director of WIPO.

CNIPA Waives Patent Annuity Late Fees Due to Coronavirus – On Wednesday, March 4, the China National Intellectual Property Administration (CNIPA) announced that the agency will not make parties owing patent annuity fees pay additional late fees if the delay in paying those fees was caused by the coronavirus epidemic. This follows a previous announcement in which the CNIPA told patent owners that they could request restoration of patent rights without additional fees if the coronavirus impacted their ability to restore patent rights.

Library of Congress Seeks Public Input on Next Register of Copyrights – On Tuesday, March 3, the Library of Congress published a request for public input in the Federal Register on the next Register of Copyrights for the U.S. Copyright Office to inform the Library understanding of the top qualities being sought in the next Register as well as the top three priorities for any candidate filling that position. 

Copyright Office Announces Practice Updates for Enterprise Copyright System – On Tuesday, March 3, the U.S. Copyright Office published a statement of policy in the Federal Register announcing intended practice updates that will be adopted along with an enterprise copyright system being developed by the agency based on public comments regarding reforms to the administration of registration applications and deposit requirements for registration.

CAFC Affirms Invalidation of Patent Claims for Inequitable Conduct – On Monday, March 2, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in GS CleanTech Corporation v. Adkins Energy LLC which affirmed a Northern District of Illinois ruling that patent claims asserted by GS CleanTech were unenforceable due to inequitable conduct. The district court had found that the oil recovery system covered by the patent claims was offered for sale and ready for patenting more than one year prior to the filing of a provisional patent application covering the system.

CAFC Affirms Section 337 Infringement Findings Against Comcast – On Monday, March 2, the Federal Circuit issued a precedential decision in Comcast Corporation v. U.S. International Trade Commission in which the appellate court upheld an ITC ruling which prohibited ARRIS and Technicolor from importing components used by Comcast in its X1 set-top boxes and ordered Comcast to cease its marketing of those set-top boxes.

Barks

Levandowski Files Chapter 11 Bankruptcy After Trade Secret Verdict – On Wednesday, March 4, former Google engineer Anthony Levandowski filed for Chapter 11 bankruptcy after a California state court affirmed an arbitration ruling for Google which followed a trade secret case brought by Google. That case led to a $179 million judgment against Levandowski for stealing Google trade secrets before starting a self-driving car company that was later bought by Uber.

Panini Settles Trademark Case Over Custom Sports Cards – On Tuesday, March 3, the Eastern District of Pennsylvania dismissed with prejudice a trademark suit brought by sports card company Panini America against a Pennsylvania individual who created custom sports cards using a “Rated Rookie” mark owned by Panini.

Google Says Sonos Engaging in “Revisionist History” in Patent Case – On Monday, March 2, Google filed a counterclaim in the Central District of California alleging that Sonos’ patent infringement suit was based on “revisionist history,” as Google only obtained access to Sonos’ wireless speaker technology after Sonos approached Google about integrating Chromecast into its speakers.

Judge Evans Again Finds Fair Use for Georgia State Student Textbook Downloads – On Monday, March 2, U.S. District Judge Orinda Evans of the Northern District of Georgia issued a 245-page opinion finding that 37 of 48 textbook excerpts downloaded by Georgia State University students were covered by fair use after the U.S. Court of Appeals for the Eleventh Circuit remanded a previous ruling, asking Judge Evans for a more detailed approach to assessing fair use factors.

Darkspliver Can Maintain Anonymity in Jehovah’s Witness Copyright Case – On Monday, March 2, the Northern District of California issued a ruling allowing a Redditor who posts under the pseudonym Darkspliver to proceed in a copyright case brought by the publisher of the Jehovah’s Witness periodical The Watchtower without having his identity revealed after the court found that Darkspliver’s posting of content from The Watchtower was likely covered by fair use.

“This Land Is Your Land” Copyright Challenger Loses Suit – On Friday, February 28, U.S. District Judge Kevin Castel of the Southern District of New York issued a ruling in a copyright case brought by a party challenging the validity of the copyright to the Woody Guthrie song “This Land Is Your Land,” finding that the court didn’t need to rule on the copyright’s validity because the challenger had already paid the license fee to the work.

Charter Challenges Copyright Ownership in $1B Music Case – On Friday, February 28, Charter Communications filed a submission in support of a discovery request seeking to have Warner Bros. and other music publishers produce work for hire agreements proving that they own the copyrights to music recordings asserted in a District of Colorado copyright case. Charter alleges that the music publishers inaccurately registered a large number of recordings as works for hire.

This Week on Wall Street

Major Tech Firms Ask Employees to Remain Home Over Coronavirus Fears – Over the past week, executives at major tech firms including Google, Amazon, Facebook and Twitter have asked employees who work at corporate headquarters to instead work remotely from home to mitigate risks related to the spread of the coronavirus.

HP Rejects Xerox Takeover Bid, Remains Open to Merger – On Thursday, March 5, Financial Times reported that HP had rejected a $35 billion takeover bid from Xerox because the offer undervalued the company. Remarks from HP CEO Enrique Lores indicated that HP was continuing to analyze potential merger opportunities.

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: Schaeffler AG (130th)
• Wednesday: Delta Electronics Inc. (t-233rd)
• Thursday: Adobe Inc. (102nd); Oracle Corp. (52nd)
• Friday: None