Other Barks & Bites for Friday, September 4: CAFC Issues Modified Opinion in Facebook v. Windy City, USIJ Letter to Senate Supports PTAB Reforms, and United States Holds Third in WIPO Global Innovation Index

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

Barks (noun): peripheral noise worth your attention.

https://depositphotos.com/48267109/stock-photo-dog-reading-newspaper.htmlThis week in Other Barks & Bites: Modified Opinion issued in Facebook v. Windy City at CAFC; the Alliance for U.S. Startups and Inventors for Jobs (USIJ) tells Senate not to fall for high-tech attempts to block PTAB reforms; a Chinese court issues jail sentences to several individuals found guilty of infringing upon Lego copyrights; the Copyright Office extends certain filing deadlines to November 9 due to the COVID-19 pandemic; major tech firms sue the USPTO under the Administrative Procedures Act over the NHK-Fintiv discretionary denial factors for inter partes review (IPR) petitions; the Federal Circuit says that an inventorship petition at the USPTO doesn’t create judicial estoppel on inventorship in district court proceedings; Advocate General Hogan tells the CJEU that the submission of copyright-protected content as evidence in court proceedings doesn’t infringe copyright; the United States retains the #3 position in WIPO’s Global Innovation Index 2020; the heads of IP offices from each of the BRICS nations agree to a digital cooperation roadmap; and the U.S. Department of Justice plans to file antitrust charges against Google in September despite concerns that AG William Barr is rushing the case.


Modified Opinion Issued in Facebook v. Windy City: The Federal Circuit on September 4 denied a request for rehearing en banc and issued a modified opinion accounting for the Supreme Court’s ruling in Thryv v. Click-to-Call Technologies. The holding was ultimately the same, but because the CAFC lacks authority to review the Board’s institution of the two late-filed petitions as per Thryv, the Court remanded the case to the PTAB “to consider whether the termination of those proceedings finally resolves them.”

CAFC Issues Rule 36 Ruling Affirming Invalidation of Amarin’s Vascepa Patent Claims – On Thursday, September 3, the U.S. Court of Appeals for the Federal Circuit issued a Rule 36 summary affirmance upholding a ruling from the District of Nevada which had invalidated patent claims owned by Amarin covering the fish oil supplement Vascepa, the first drug approved by the U.S. Food and Drug Administration (FDA) as a secondary therapy to reduce cardiovascular events among adults with elevated levels of triglycerides.

AG Hogan Tells CJEU That Submission of Evidence Doesn’t Infringe Copyright – On Thursday, September 3, an opinion delivered by Advocate General Gerard Hogan to the Court of Justice of the European Union (CJEU) found that the submission of a copyright-protected photo to a lower court as evidence in a copyright case was neither a communication or a distribution to the public under the terms of EU copyright law despite the fact that its submission as evidence makes the photo available to the public.

U.S. Holds #3 Position in WIPO Global Innovation Index 2020 – On Wednesday, September 2, the World Intellectual Property Organization (WIPO) issued its Global Innovation Index 2020 report which showed that the United States remains in 3rd place behind Switzerland and Sweden in WIPO’s ranking of global economies in terms of innovation capacity and output. Among countries seeing slight increases to their position over last year’s rankings were the United Kingdom (4th), Denmark (6th) and South Korea (10th). 

Chinese Court Issues Six-Year Jail Sentences in Lego Copyright Case – On Wednesday, September 2, the Shanghai Third Intermediate Court announced sentencing for nine individuals that had been found guilty of infringing copyright owned by Lego by selling counterfeit building block toy kits under the Lepin brand, including prison terms for the guilty individuals of up to six years. 

Copyright Office Extends CARES Act Filing Deadline Relief Until November 9 – On Wednesday, September 2, the U.S. Copyright Office announced that it was exercising its authority under the Coronavirus Aid, Relief, and Economic Security (CARES) Act to extend deadlines for various filings, including adjustments to certain registration claims, notices of termination and Section 115 notices of intention, until November 9 of this year.

BRICS Heads of IP Offices Agree to Bolster Digital Cooperation – On Tuesday, September 1, China’s National Intellectual Property Administration (CNIPA) announced that the intellectual property offices of Brazil, Russia, India, China and South Africa (BRICS) had agreed to a cooperation roadmap to bolster digital cooperation between BRICS IP offices to reduce the impact of the COVID-19 pandemic and improve the authorization of patents for medicines during the global health crisis.

USIJ Letter to Senate Judiciary Committee Supports PTAB Reforms –  The Alliance for U.S. Startups and Inventors for Jobs (USIJ) submitted a letter to the Senate Judiciary Committee on August 31 in response to a June 18 letter from a number of big-tech groups objecting to efforts by the USPTO to clarify procedures for the institution phase of inter partes review (IPR) proceedings. The USIJ letter “strongly supports the effort by PTO Director Andrei Iancu to erect a more rational legal structure around the unbridled discretion that previously was given to the Patent Trial & Appeal Board (“PTAB”) in deciding whether to institute an IPR.” USIJ said that the June 18 letter is biased and that the signatories’ interest is in preserving the significant benefit the companies they represent get “from rules that make patents vulnerable to attack by infringers.”

Major Tech Firms Sue USPTO, Says NHK-Fintiv Factors Violate AIA – On Monday, August 31, a series of American tech giants including Apple, Google, Cisco and Intel filed a lawsuit against the U.S. Patent and Trademark Office in the Northern District of California asserting claims under the Administrative Procedures Act (APA). The tech firms claim that the USPTO’s NHK-Fintiv discretionary factors for denying institution of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) should be set aside as a violation of the America Invents Act (AIA).

CAFC Finds No Judicial Estoppel Based on Inventorship Petition at USPTO – On Friday, August 28, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Egenera, Inc. v. Cisco Systems, Inc. in which the appellate court struck down part of a District of Massachusetts ruling after finding that a petition filed by Egenera at the USPTO to remove an inventor from a patent in response to an IPR petition filed by Cisco at the PTAB did not judicially estop Egenera from restoring inventorship to the revoked inventor during the district court proceedings.


10tales Inc. is Latest Firm to File Patent Suit Against TikTok – On Wednesday, September 2, 10tales Inc. filed a patent suit in the Western District of Texas alleging that TikTok’s recommendation engine infringes upon patent claims owned by that firm. The suit is the latest of three that have been filed in Western Texas this summer against the Chinese-owned social media video-sharing company, suits that have come as the Trump Administration has increased pressure to encourage TikTok to sell its business to a U.S.-based owner.

ITC Institutes Section 337 Investigation Into Siemens Wind Turbine Generators – On Tuesday, September 1, the U.S. International Trade Commission (ITC) issued a notice of institution of a Section 337 investigation into certain variable speed wind turbine generators imported by Siemens and Gamesa Electric based upon a complaint for patent infringement filed with the agency by General Electric.

Major Tech Firms Face Patent Suit Over Cross-Platform Web Applications – On Tuesday, September 1, Express Mobile announced that it had filed a series of nine lawsuits against major tech firms including eBay, Google, Microsoft and Facebook, asserting patent claims covering systems and methods for authoring web applications and generating displays for those applications that are cross-platform optimized for any mobile or desktop interface.

Judge Orrick Grants Infringement Ruling to Contour Over GoPro – On Monday, August 31, U.S. District Judge William Orrick III of the Northern District of California issued a ruling granting partial summary judgment to Contour finding that GoPro has infringed upon claims of two asserted patents covering systems of remote image acquisition control and viewing with portable digital video cameras.

USPTO Submits Information Collection Request to OMB on GIPA Surveys – On Monday, August 31, the USPTO published notice in the Federal Register that it would be submitting an information collection request with the Office of Management and Budget (OMB) for a series of three surveys sent to different groups of participants in the agency’s Global Intellectual Property Academy (GIPA) training program.

UC Santa Barbara Increases Patent Enforcement Campaign Over LED Lighting With ITC Filing – On Monday, August 31, the Regents of the University of California filed a complaint with the ITC asking that agency to block the importation of filament light-emitting diode (LED) technology covered by patented technologies developed at UC Santa Barbara. General Electric, Home Depot and Ikea are among the respondents named in the filing.

McDonald’s Opens Australian Trademark Campaign Against the “Big Jack” – On Friday, August 28, McDonald’s filed a legal action at the Federal Court of Australia which alleges that Hungry Jack’s, a fast food franchise with locations across Australia, is imitating the “distinctive appearance or build” of the American chain’s Big Mac with its own “Big Jack” burger.

Ninth Circuit Says Court Clerk’s Required USPTO Filing Isn’t Meaningful District Court Participation – On Friday, August 28, the U.S. Court of Appeals for the Ninth Circuit issued an unpublished opinion dismissing an appeal from Starline Tours of Hollywood over the Central District of California’s dismissal of an amended counterclaim after the case was voluntarily dismissed by the parties. Starline had argued in part that the lower court suggested the dismissal and that the court clerk’s docket entry of a Report on the Filing or Determination of an Action Regarding a Patent or Trademark, a filing required by statute, constituted meaningful participation.

This Week on Wall Street

DoJ to Bring Antitrust Case Against Alphabet, Google in September – On Thursday, September 3, The New York Times reported news from sources within the U.S. Department of Justice which indicated that Attorney General William Barr was planning to file antitrust charges against Google and YouTube parent company Alphabet in September despite concerns from lawyers working on the investigation that more time is required to build a stronger case against the tech giant.

GM, Honda Sign MoU on Strategic Alliance Including R&D in Vehicle, Propulsion Platforms – On Thursday, September 3, automakers General Motors and Honda announced that the two companies had entered into a non-binding memorandum of understanding establishing a strategic alliance in North America including collaboration on research and development programs on advanced technology areas including electrical architecture, advanced driver assist systems and vehicle-to-everything communication.

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: None
  • Tuesday: None
  • Wednesday: Oracle Corp. (52nd)
  • Thursday: Japan Display Inc. (71st)
  • Friday: None

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