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This week in Other Barks & Bites: the Copyright Office issues its report on the safe harbor provisions of the DMCA codified in Section 512 of U.S. copyright law; the Federal Circuit issues decisions reversing a lower court on patent invalidity for lack of enablement and denying review of PTAB institution decisions; the Eleventh Circuit revives copyright and trade secret claims filed by Compulife; online sales boost during COVID-19 pandemic leads to strong quarterly earnings report for Alibaba; Apple and Cisco each win multi-million attorney’s fees awards against Straight Path IP Group; China’s IP office reports a rebound in patent application filings since the peak of the COVID-19 pandemic; and Reps. Veasey and Wright introduce a bill to prevent airport funds from being spent on IP-infringing manufacturers.
China Reports Rebound From Pandemic-Related Decrease in Patent Application Filings – On Friday, May 22, Chinese state-run media reported on data provided by the China National Intellectual Property Administration (CNIPA) indicating that, despite a steep drop in patent application filings in February, 1.32 million patent applications were filed with the CNIPA in 2020’s first quarter, a 5.7 percent increase compared to the same period last year.
Copyright Office Issues Report on Section 512 Safe Harbor Provisions – On Thursday, May 21, Acting Register of Copyrights Maria Strong delivered to Sen. Thom Tillis (R-NC), Chairman of the Senate IP Subcommittee, a report on safe harbor provisions for online service providers under 17 U.S.C. § 512 developed by the U.S. Copyright Office as part of the agency’s efforts to modernize U.S. copyright law. The report suggests making amendments to eligible online service providers, repeat infringer policies and knowledge requirements for providers under the Digital Millennium Copyright Act. After the report was published, the Artist Rights Alliance issued an official statement challenging tech platforms to address piracy concerns outlined by the report.
CAFC Vacates Patent Invalidity Ruling for Lack of Enablement – On Wednesday, May 20, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in McRO v. Bandai Namco Games America in which the appellate court reversed in part a grant of summary judgment by the Central District of California invalidating McRO’s patent claims for lack of enablement under 35 U.S.C. § 112, although the Federal Circuit did affirm Central California’s summary judgment of noninfringement.
Eleventh Circuit Reverses Dismissal of Copyright, Trade Secret Claims – On Wednesday, May 20, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Compulife Software v. Newman in which the appellate court found that a Southern District of Florida magistrate judge made several legal errors during a bench trial leading to the erroneous dismissal of copyright and trade secret claims filed by life insurance firm Compulife against defendants who allegedly hacked into Compulife’s system to steal proprietary data.
USPTO Contemplates Further Extensions to Filing Deadlines – On Wednesday, May 20, Bloomberg Law reported on public remarks made during an online session by U.S. Patent and Trademark Office Director Andrei Iancu in which he indicated that the agency is considering whether it should extend agency filing deadlines past the current due date of June 1.
CAFC Denies Judicial Review of PTAB Institution Decision – On Tuesday, May 19, the Federal Circuit issued a precedential decision in ESIP Series 2 v. Puzhen Life USA in which the appellate court upheld a decision by the Patent Trial and Appeal Board (PTAB) invalidating patent claims owned by ESIP for obviousness. The Federal Circuit also dismissed ESIP’s argument on appeal that Puzhen failed to identify all real parties in interest, finding that PTAB institution decisions are barred from judicial review under Supreme Court precedent from both Cuozzo and Click-to-Call.
Copyright Office Requests Comments for Satellite and Cable Royalty Allocations – On Monday, May 18, the Copyright Office issued a pair of notices in the Federal Register requesting comments from interested claimants who may have any reasonable objection to the planned distribution of 40 percent of satellite royalties paid for statutory secondary transmission licenses under 17 U.S.C. § 119 and the planned distribution of 40 percent of cable royalties paid for statutory secondary transmission licenses under 17 U.S.C. § 111.
Bipartisan Airport Bridge IP Law Introduced Into Congress – On Friday, May 15, Reps. Marc Veasey (D-TX) and Ron Wright (R-TX) introduced the Airport Infrastructure Resources (AIR) Security Act into Congress. If passed, the bill would prevent federal airport improvement funds from being used to purchase boarding bridges for passenger aircraft from manufacturers that have violated intellectual property rights.
Judge Stadtmueller Trims Trade Secret Claims in Danaher Suit Against Former Exec – On Wednesday, May 20, U.S. District Judge J.P. Stadtmueller of the Eastern District of Wisconsin granted in part a motion to dismiss trade secret claims filed by Danaher Corp. relating to a former executive’s use of confidential data after going to work for a rival industrial manufacturing firm.
Sam’s Club Avoids Trademark Liability on Summary Judgment in Baby Stroller Case – On Wednesday, May 20, U.S. District Judge F. Dennis Saylor IV denied a motion for summary judgment filed by Monahan Products which had sought a ruling that Sam’s Club committed trademark infringement through the unauthorized sale of UPPAbaby branded strollers. Judge Saylor determined that a reasonable jury could disagree on whether the gray-market goods sold by Sam’s Club differed materially from stroller products authorized by Monahan.
Photographer Files Suit Against Microsoft Over China Wine Revolution Picture – On Tuesday, May 19, photographer Matilde Gattoni filed a lawsuit in the Southern District of New York against Microsoft Corporation alleging that the tech firm infringed Gattoni’s copyright through the unauthorized use of a picture of women leading China’s wine revolution in conjunction with an article on the same topic published on MSN.
Judge Alsup Awards $4.2M Attorney’s Fees Award to Apple, Cisco – On Tuesday, May 19, U.S. District Judge William Alsup of the Northern District of California issued a ruling adopting a special master’s recommendations awarding attorney’s fees of more than $2.3 million to Apple and $1.9 million to Cisco after Straight Path IP Group sued both of those companies on a broad theory of claim construction which conflicted with a narrow construction pursued in an earlier case against Apple and Cisco which Straight Path used to argue for validity of its patent claims.
PTAB Denies Rehearing of Institution Decision, No Abuse of Discretion in Admitting Prior Art – On Tuesday, May 19, the PTAB issued a decision denying patent owner Mimzi’s request for rehearing a decision to institute an inter partes review (IPR) proceeding after finding that Mimzi presented no evidence of abuse of discretion by the PTAB in admitting prior art. Mimzi had argued that the decision should be set aside because a prior art reference was admitted erroneously under post-America Invents Act rules.
Web-Based Community Development Firm Files Trade Secret Suit Against Lenovo – On Tuesday, May 19, web-based community platform host Khoros filed a lawsuit in the Northern District of California alleging breach of contract and trade secret claims against tech conglomerate Lenovo, including the direct copying of source code developed by Khoros for various components of Lenovo’s own community development site.
USPTO Launches Information Page for COVID-19 Priority Examination Program – On Monday, May 18, the USPTO launched a webpage containing information regarding the agency’s prioritized examination pilot program for patent applications covering technologies related to COVID-19.
Copyright Office Seeking Contractors for Cloud-Based Enterprise Copyright System – On Friday, May 15, the Copyright Office announced that it was issuing a request for information on potential contractors that can help the agency develop a web-based, cloud-hosted Enterprise Copyright System. Responses may be used in the future for solicitations or to request more in-depth data.
This Week on Wall Street
Alibaba Posts Strong Quarterly Earnings on Increased Online Sales During Pandemic – On Friday, May 22, Alibaba reported earnings for the fourth quarter of 2019 in which the Chinese e-commerce giant beat analyst expectations on earnings per share by 44 cents and revenues by nearly $900 million thanks in large part to increased online sales spurred by COVID-19 related shutdowns in China.
Hewlett Packard Cites Supply Chain Issues Leading to Second Quarter Loss – On Thursday, May 21, Hewlett Packard Enterprise announced earnings for 2020’s second quarter, reporting revenues of $6.01 billion, 16 percent lower than corporate revenues during 2019’s second quarter. Hewlett Packard CEO Antonio Neri cited supply chain issues leading to an order backlog which was twice the company’s historical average backlog.
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: NGK Spark Plug Co., Ltd. (t-290th)
- Tuesday: Konica Minolta, Inc. (t-67th)
- Wednesday: Hitachi Metals Ltd. (t-278th); HP Inc. (48th); NetApp, Inc. (t-292nd); Toray Industries Inc. (222nd)
- Thursday: Dell Technologies (12th); Marvell International Ltd. (t-197th); Nikon Corp. (141st); Nissan Motor Co., Ltd. (t-123rd); Salesforce.com, Inc. (155th)
- Friday: Fuji Electric Co., Ltd. (109th); Hitachi, Ltd. (90th); Olympus Corp. (66th)
HAPPY MEMORIAL DAY!
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