Other Barks & Bites for Friday, August 21: White House Reviews PTAB Amendments, Iancu Says IPRs Can’t Be Based on Applicant Specifications, and China Issues Second Draft of Copyright Law

Bites (noun): more meaty news to sink your teeth into.

Barks (noun): peripheral noise worth your attention.

BitesThis week in Other Barks & Bites: news reports indicate that the White House is currently reviewing amendments proposed by the USPTO to amend the rules of practice at the PTAB; USPTO Director Iancu issues binding guidance to the PTAB stating that applicant-admitted prior art cannot be the basis of IPR institutions; the Federal Circuit affirms the dismissal of APA claims against the PTAB for jurisdictional issues; both Lizzo and Rick Ross receive favorable rulings in copyright cases filed over their music recordings; the Second Circuit says that Costco is able under the Lanham Act to use Tiffany branding to describe a style of ring; Nvidia’s most recent earnings show that its data center business has eclipsed its gaming business for the first time ever; and China’s national legislature issues its second deliberative draft including major amendments to China’s Copyright Law.


White House OIRA Reviewing Proposed Amendments to PTAB Trials – On Thursday, August 20, Bloomberg Law reported that the White House Office of Information and Regulatory Affairs is currently reviewing amendments advanced by the U.S. Patent and Trademark Office regarding rules of practice in patent validity trials. The amendments, which are yet to be made public, would impact Patent Trial and Appeal Board (PTAB) proceedings including inter partes review (IPR) and post-grant review (PGR). 

CAFC Affirms That District Courts Lack Jurisdiction for APA Claims Over PTAB Final Decisions – On Thursday, August 20, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Security People, Inc. v. Iancu in which the appellate court affirmed the dismissal of Administrative Procedure Act (APA) claims filed in U.S. district court to challenge a final written decision at the Patent Trial and Appeal Board (PTAB) because such district court review is foreclosed by Congress.

Second Circuit Says Rick Ross’ Right of Publicity Claim Preempted by Copyright Act – On Wednesday, August 19, the U.S. Court of Appeals for the Second Circuit issued a decision in In re: Jackson, which stems from a suit filed by Curtis James Jackson III, also known as 50 Cent, against William Leonard Roberts II, known professionally as Rick Ross, affirming a summary judgment denial of Jackson’s right of publicity claims stemming from Rick Ross’ use of his name and sampled lyrics from the rap track “In Da Club” after finding that such claims were statutorily preempted by the Copyright Act.

Director Iancu Issues Memo Stating Applicant Specification Admissions Can’t Be Basis of IPR – On Tuesday, August 18, U.S. Patent and Trademark Office Director Andrei Iancu issued binding guidance to the members of the Patent Trial and Appeal Board (PTAB) finding that statements made by patent applicants in specifications, sometimes referred to as “applicant admitted prior art,” cannot be the basis for institution of inter partes review (IPR) proceedings, which must be based upon prior art consisting of patents or printed publications under the statute.

D.C. Circuit Tells CRB That Music Choice Gets Grandfathered Royalty Rate Under DMCA – On Tuesday, August 18, the U.S. Court of Appeals for the D.C. Circuit issued a decision in Music Choice v. Copyright Royalty Board in which the appellate court vacated a ruling in a royalty rate setting proceeding at the CRB after determining that the Board erred in categorically excluding Music Choice’s Internet transmissions of digital music from grandfathered royalty rates allowable under the Digital Millennium Copyright Act.

China’s National Legislature Issues Second Deliberative Draft of Copyright Law Amendments – On Monday, August 17, China’s National People’s Congress issued its second deliberative draft on amendments to Chinese copyright law. The updated draft includes changes to rights to create digital reproductions, payments to copyright owners for the creation of derivative works and determinations of potential damages based on licensing fees.

Second Circuit Says Reasonable Jury Could Conclude Costco’s Use of “Tiffany” is Not Confusing – On Monday, August 17, the Second Circuit issued a ruling in Tiffany and Co. v. Costco Wholesale Corp. in which the appellate court vacated and remanded a $21 million judgment against Costco after finding that evidence on the record raised by Costco showed that a jury could reasonably find that “Tiffany” was widely recognized as a descriptive word for a particular style of ring and/ or that Costco was entitled to use the brand under the Lanham Act in good faith only to describe the style of its rings. 

Second Circuit Affirms Dismissal of Copyright Claims Against Star Trek – On Monday, August 17, the Second Circuit issued a decision in Abdin v. CBS Broadcasting Inc. in which the appellate court upheld the Southern District of New York’s grant to dismiss a third amended complaint in a copyright case brought by the developer of the video game Tardigrades who had alleged that episodes of a 2017 installment of Star Trek copied elements from the game.



CAFC Affirms Dismissal of NJ Prison Inmate’s Patent Suit – On Thursday, August 20, the Federal Circuit issued a decision in Tormasi v. Western Digital Corp. affirming the Northern District of California dismissal of a patent infringement suit filed by an individual who created an intellectual property holding company while incarcerated in New Jersey State Prison. 

Cochlear Pays in $75M Attorneys’ Fees Prior to SCOTUS Appeal – On Wednesday, August 19, medical device industry publication MassDevice reported that Cochlear had agreed to pay out $75 million in attorneys’ fees to the Alfred Mann Foundation and Advanced Bionics as part of a settlement agreement which also involves plans for Cochlear to file a petition for writ with the U.S. Supreme Court to appeal the damages portion of a patent infringement ruling awarding $268 million to Alfred Mann and Advanced Bionics.

USITC Institutes Section 337 Proceeding on Apple’s Mobile Devices and Laptops – On Wednesday, August 19, the U.S. International Trade Commission issued a notice of institution of a Section 337 investigation into certain mobile electronic devices and laptop computers imported into the U.S. for sale by Apple based on allegations that those devices and computers infringe upon claims of five patents owned by Japanese consumer electronics firm Maxell.

Walmart Faces Trademark Suit Over Halloween Tequila Ads – On Wednesday, August 19, John Atanasio, owner of the craft liquor brand Tattoo Tequila, filed a trademark lawsuit in the Northern District of California against Walmart, alleging that the major retailer has infringed Atanasio’s trademark by using Tattoo Tequila-branded bottles in the retailer’s Halloween-themed advertisements.

German Court Rules for Nokia in Patent Battle Against Daimler – On Tuesday, August 18, Germany’s Mannheim Regional Court entered a ruling in favor of Finnish telecom firm Nokia after finding that German automaker Daimler and other defendants were not seriously prepared or ready to conclude a fair, reasonable and non-discriminatory (FRAND) licensing agreement for Nokia’s standard-essential patents (SEPs) covering vehicle communications systems.

Jury Trials in Western Texas Patent Cases Could Resume September 1 – On Tuesday, August 18, U.S. District Judge Alan D. Albright of the Western District of Texas, an increasingly important jurisdiction for patent cases, issued a divisional standing order regarding trials in Waco stating that, due in part to a “meaningful decline” in the number of COVID-19 cases across the Waco Division, bench and jury trials in the Waco Division could begin as early as September 1.

Judge Gee Says No Joint Authorship in Lizzo’s “Truth Hurts” – On Friday, August 14, U.S. District Judge Dolly M. Gee of the Central District of California issued a ruling granting a motion to dismiss copyright claims filed against Melissa Jefferson, known professionally as Lizzo, after finding that claims that lyrics of Jefferson’s song “Truth Hurts” were not jointly authored by other songwriters who contributed lyrics during a writing session for a different song which were then used by Jefferson in “Truth Hurts” as a derivative work.

Florida Tourist Attraction Entity Files Suit Over Location in Fortnite Video Game – On Friday, August 14, Coral Castle, Inc., operators of the Coral Castle tourist attraction in Florida’s Miami-Dade County, filed a lawsuit in the Southern District of Florida with trademark infringement and unfair competition claims against Epic Games, developer of the incredibly successful Fortnite video game, over that game’s inclusion of a “Coral Castle” map location.

This Week on Wall Street 

Jeff Wilke to Step Down as Amazon’s Global Consumer CEO – On Friday, August 21, The Wall Street Journal reported that Jeff Wilke, a long-time confidant of Amazon CEO Jeff Bezos and the head of the company’s worldwide consumer division, will be leaving the company during the first quarter of 2021. Wilke will reportedly be replaced by David Clark, currently the company’s senior vice president of worldwide operations. 

Upbeat Nvidia Earnings Show Company’s Data Center Business Eclipses Gaming – On Wednesday, August 19, Nvidia issued its earnings report for 2020’s second quarter which showed that the company’s data center business earned $1.75 billion in revenues, outpacing quarterly revenues taken in by the company’s gaming business for the first time.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2019 are announcing quarterly earnings next week (2019 rank in parentheses):

  • Monday: AAC Technologies Holdings Inc. (205th)
  • Tuesday: Hewlett Packard Enterprise Co. (56th); Intuit Inc. (t-274th); Medtronic PLC (28th); Salesforce.com Inc. (145th)
  • Wednesday: NetApp Inc. (t-248th); Xiaomi Corp. (t-168th);
  • Thursday: Dell Technologies Inc. (16th); HP Inc. (47th); Marvell Technology Group (156th)
  • Friday: None

Image Source: AdobeStock_51536199-dog-news 


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Join the Discussion

3 comments so far.

  • [Avatar for CHARLES ROSCOE]
    September 3, 2020 11:22 pm

    Dissolve unconstitutional PTAB. Restore inventors rights and Due Process.

  • [Avatar for Marco]
    August 24, 2020 06:57 pm

    I have great respect for the Supreme Court, as well as the Federal Circuit, and I have no doubt they are doing their very best to manage the issues that keep resurfacing about the PTAB’s authority under the Constitution to invalidate otherwise lawfully issued patents by the USPTO in an inter partes proceeding.

    We are headed for an inevitable showdown on this issue. It is like a “festering sore,” which will ultimately become nastily infected with a potentially deadly effect, if not fixed soon by effective Congressional or Supreme Court action. Inter partes proceedings before the PTAB and the decisions of this ill-conceived tribunal are skewing the patent law and sucking the patent system down into oblivion. This is no overstatement–it is fact that will be shown to be true over the course of time!

    Return exclusive jurisdiction for determining these issues to Article III courts!

    Patents are property rights, not “Government franchises.” This was a terribly mistaken conclusion by the Supreme Court that has doctrinally skewed our patent law. The Court was misled by overzealous and irresponsible advocates, which seems to be a problem endemic to patent law cases presented to the Court.

    Please, Congress or the Supreme Court, re-Constitutionalize our formerly world-renowned patent system ASAP; and please return exclusive determinations of patent law matters to Article III courts and judges ASAP! Over the course of time, this will inject the common sense and wisdom of our wonderful federal court judges and juries into determination of patent law issues and cases; and help bring us back to center.

    Patent law has become way too overcomplicated. It is just not that difficult.

  • [Avatar for Pro Say]
    Pro Say
    August 21, 2020 06:25 pm

    White House OIRA Reviewing Proposed Amendments to PTAB Trials

    From the Bloomberg article:

    “Companies and groups, including Apple Inc., have or will be meeting with the office about the proposal.”

    And just exactly WHICH companies and groups are being provided with a seat at the table . . . besides the innovation-stealing FANG member Apple?

    Will US Inventor be allowed to give their input? Will independent inventors? How about our country’s small, innovative companies like VirnetX?

    Who’s in? Who’s out?

    Who’s deciding?

    Name names.