This week in Other Barks & Bites: the Federal Circuit reverses a lower court’s erroneous application of the first-to-file rule in denying a motion to transfer venue in a patent case, and also finds standing for parties bringing a statutory cause of action for trademark cancellation proceedings; the USPTO issues trademark examiner guidance following the Supreme Court’s ruling in USPTO v. Booking.com as well as a benchmark study showing a 100% increase in AI patent applications between 2002 and 2018; registration for short online literary works is now available through the Copyright Office’s electronic registration system; the Ninth Circuit denies the Federal Trade Commission’s petition for en banc rehearing in its antitrust case against Qualcomm; Moderna reports $1.1 billion in customer deposits for its yet-to-be-approved COVID-19 vaccine; the Department of Justice announces $60 million in criminal trade secret fines to United Microelectronics Company; and Eko seeks a temporary restraining order to freeze Quibi’s assets related to IP infringement claims totaling nearly $100 million.
CAFC Says Court Erred in Balancing Factors Under First-to-File Rule – On Wednesday, October 28, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision on motion in In re: Nitro Fluids L.L.C. in which the appellate court found that the Western District of Texas erred in applying the balancing factors under the first-to-file rule, holding that the rule requires transfer to the venue to the Southern District of Texas, where a related patent infringement case between the parties was first filed, absent compelling circumstances against the transfer; the district court formulated the rule such that compelling circumstances to transfer the case were required.
USPTO Issues “Generic.com” Trademark Guidance in Wake of SCOTUS Decision – On Wednesday, October 28, the U.S. Patent and Trademark Office issued updated examiner guidance for trademark examiners to help them incorporate the U.S. Supreme Court’s June decision in USPTO v. Booking.com, B.V. as it relates to a trademark applicant’s ability to register “generic.com” trademarks with the USPTO.
Ninth Circuit Denies En Banc Rehearing in FTC v. Qualcomm – On Wednesday, October 28, the U.S. Court of Appeals for the Ninth Circuit denied a request for en banc rehearing of Federal Trade Commission v. Qualcomm without issuing an opinion, leaving in place a panel decision in August which reversed a lower court’s ruling that Qualcomm’s core business practices violated Qualcomm’s fair, reasonable and non-discriminatory (FRAND) licensing obligations for standard-essential patents (SEPs) covering mobile chip technologies.
DOJ Announces $60 Million Fine to UMC for Trade Secret Theft – On Wednesday, October 28, the U.S. Department of Justice (DoJ) announced that Taiwanese semiconductor firm United Microelectronics Company (UMC) pled guilty to criminal trade secret theft related to computer memory technologies stolen by Chinese state-owned entity Fujian Jinhua Integrated Circuit Co. from American semiconductor firm Micron Technologies. UMC was sentenced to pay a criminal fine of $60 million and has agreed to cooperate with the DoJ on the trade secret investigation.
Third Circuit Affirms No Statute of Limitations Defense for WARF, Reverses on Prejudgment Interest – On Wednesday, October 28, the U.S. Court of Appeals for the Third Circuit issued a decision in Washington University v. Wisconsin Alumni Research Foundation in which the appellate court affirmed a district court’s finding that breach of contract claims filed against WARF for royalty payments on patented technologies were not filed outside of the statute of limitations for such actions. The Third Circuit also found that the district court erred in not awarding prejudgment interest to Washington University.
Eleventh Circuit Affirms Summary Judgment Against “Narcos” Copyright Claims – On Tuesday, October 27, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Vallejo v. Narcos Productions LLC affirming the district court’s grant of summary judgment to the producers of the Netflix show “Narcos” over Columbian journalist Virginia Vallejo’s claims that two scenes from the television series infringed her copyright to portions of a memoir discussing aspects of her personal romantic relationship with famed drug trafficker Pablo Escobar.
USPTO AI Benchmark Study Shows 100% Increase in AI Patent Applications Since 2002 – On Tuesday, October 27, the USPTO issued a benchmark study on artificial intelligence technologies in U.S. patent applications, finding that such patent applications increased by 100% from about 30,000 such patent applications in 2002 up to more than 60,000 patent applications in 2018.
CAFC Affirms Trademark Cancellation Sanction Over Lack of Standing Argument – On Tuesday, October 27, the Federal Circuit issued a precedential decision in Corcamore, LLC v. SFM, LLC in which the appellate court affirmed a default judgment by the Trademark Trial and Appeal Board (TTAB) issuing sanctions that cancelled the registration of Corcamore’s “SPROUT” trademark after finding that SFM had standing to bring a petition for cancellation under 15 U.S.C. § 1064 as it was a statutory cause of action, conferring standing on SFM outside of traditional Article III standing for a cause of action.
New Group Registration for Short Online Literary Works Now in Effect at Copyright Office – On Thursday, October 29, the U.S. Copyright Office announced that its new group registration option for short online literary works, each work ranging in size from 50 words to 17,500 words, is now available through the Office’s eCO electronic registration system.
Tricia McDermott Thompkins to Serve as Interim Member of TPAC – On Wednesday, October 28, the USPTO announced that Tricia McDermott Thompkins, Executive Vice President and General Counsel at Perry Ellis, would be sworn in as an interim member of the Trademark Public Advisory Committee (TPAC) at the TPAC’s public session today.
TikTok’s Parent Company Files Declaratory Judgment Action Against Triller – On Wednesday, October 28, Chinese firm ByteDance, the owner of the social media app TikTok, filed a suit in the Northern District of California against rival firm Triller seeking a declaratory judgment that TikTok does not infringe upon patented technologies for synchronizing audio files with video files which are at issue in a separate infringement proceeding filed by Triller this summer in the Western District of Texas.
Eko Seeks $96.5 Million for IP Infringement From Quibi, Asks Court to Freeze Assets – On Wednesday, October 28, mobile video playback firm Eko filed a motion for a temporary restraining order in a Central District of California case against Quibi, the mobile video app which is currently winding down operations due to lack of business viability, asking the court to freeze assets related to Eko’s patent and trade secret infringement claims which the firm estimates to be about $96.5 million in value.
Patent Suit Filed Against AT&T Over TV Broadcast Tracking Technology – On Tuesday, October 27, Global Interactive Media filed a lawsuit in the District of Maryland alleging claims of patent infringement against telecommunications giant AT&T over that company’s incorporation of broadcast identification and TV program information presentation technologies into its U-Verse Channel Guide television programming guide service.
Ninth Circuit Affirms Summary Judgment Grant of Liquidated and Trademark Damages – On Monday, October 26, the Ninth Circuit issued a ruling in Seattle Pacific Industries, Inc. v. S3 Holding LLC in which the appellate court affirmed a grant of summary judgment to Seattle Pacific awarding both liquidated damages for breach of contract as well as actual trademark damages in a dispute regarding a failed licensing agreement for Unionbay-branded footwear.
Perlmutter Officially Takes Over as Register of Copyrights – On Monday, October 26, the Copyright Office announced that Shira Perlmutter had officially assumed her duties as the 14th Register of Copyrights and Director of the Copyright Office, jumping directly into the Office’s modernization efforts as well as other ongoing projects.
Zoom Faces Trademark Suit Over Third-Party App Integration Services – On Monday, October 26, third-party app integration firm Zapier filed a lawsuit in the Northern District of California alleging claims of trademark infringement against video conferencing firm Zoom over its development of third-party app integration services that Zoom refers to as “Zapps,” allegedly infringing on Zapier’s own “Zaps” brand for similar integration services.
This Week on Wall Street
Alphabet Shares Pop After Positive Third Quarter Earnings Report – On Thursday, October 29, shares of Alphabet stock were up by 7.63 percent in after-hours trading following the Internet services giant’s earnings report for the third quarter in which the company posted net income of $11.25 billion, a major year-over-year increase from the $7.06 billion in net income earned during 2019’s third quarter, due in large part to increase revenue from advertising services and Google Cloud sales.
Moderna Quarterly Earnings Shows $1.1 Billion in Customer Deposits for COVID-19 Vaccine Candidate – On Thursday, October 29, biotech firm Moderna announced its earnings for 2020’s third quarter, including $1.1 billion in customer deposits which have already been received by the company for its mRNA-1273 vaccine candidate which is currently in clinical trials to assess its efficacy in preventing transmissions of COVID-19.
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: Berkshire Hathaway Inc. (t-237th); Cirrus Logic (266th); Ingersoll Rand (t-277th); NTT Data (t-161st); ON Semiconductor (t-142nd); Paypal Holdings Inc. (t-171st); Rambus Inc. (t-221st); Skyworks Solutions Inc. (166th)
- Tuesday: Bayer AG (57th); Eaton Corp. (110th); Emerson Electric Co. (130th); Johnson Controls International (163rd); Lenovo Group (78th)
- Wednesday: Baidu Inc. (209th); Bayerische Motoren Werke (t-184th); Qualcomm Inc. (17th); Ricoh Co., Ltd. (46th); SK Hynix Inc. (58th)
- Thursday: Alibaba Group Holding Ltd. (t-154th); Daikin Industries Ltd. (t-251st); Dropbox Inc. (t-292nd); General Motors Co. (30th); GoPro Inc. (t-287th); InterDigital Inc. (t-142nd); Nielsen Holdings PLC (t-212th); Toray Industries Inc. (t-253rd); Toyota Motor Corp. (10th)
- Friday: Honda Motor Co. (42nd); Innolux Corp. (t-283rd); Magna International Inc. (t-154th); Nippon Steel Corp. (t-179th); Sharp Corp. (54th); Sumitomo Electric Industries Ltd. (70th); Zimmer Biomet Holdings Inc. (194th)
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