Other Barks & Bites for Friday, November 20: USPTO Extends Comment Period for Discretion on PTAB Institutions, ITC Rescinds Orders in Rovi Case Against Comcast and CAFC Says CBM Determinations Not Appealable Under Thryv

This week in Other Barks & Bites: the USPTO issues a final rule on trademark fee adjustments at the agency and also extends the public comment period for soliciting input on the agency’s exercise of discretion in institution trials at the PTAB; the UKIPO issues updates to post-Brexit rules narrowing acceptable Addresses for Service on agency filings; the Federal Circuit affirms a $90 million infringement verdict against GlaxoSmithKline’s sale of Ellipta inhalers, and rules that the Supreme Court’s decision in Thryv renders non-appealable the PTAB’s determination of a challenged patent’s eligibility for covered business method (CBM) review; GM announces a $7 billion increase to the company’s now-$27 billion plan to invest in electric vehicle and autonomous vehicle development; the ITC rescinds limited exclusion and cease and desist orders entered in a Section 337 proceeding brought by Rovi against Comcast; and the Second Circuit revives trademark infringement claims after finding bad faith in defendant’s employee emails regarding the development of a car air freshener designed to create consumer confusion.

Bites

CAFC Affirms Infringement Verdict for Vectura on GSK Ellipta Inhalers – On Thursday, November 19, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Vectura Limited v. GlaxoSmithKline LLC in which the appellate court affirmed the District of Delaware’s denial of post-trial motions filed by GSK, leaving in place a $90 million jury verdict entered over GSK’s infringement of Vectura patent claims through its sale of Ellipta-brand inhalers administering active ingredients to users.

ITC Rescinds LEO, CDOs Entered for Rovi Against Comcast in Section 337 Proceeding – On Thursday, November 19, the U.S. International Trade Commission issued a notice that the agency had granted and terminated a rescission proceeding in which the ITC rescinded a limited exclusion order (LEO) and cease and desist orders (CDOs) that had been previously entered in a Section 337 proceeding filed in March 2018 by Rovi Guides alleging patent infringement committed by Comcast Corporation through the sale of certain digital video receivers and related hardware and software components.

UKIPO Post-Brexit Rules Update Includes Changes to Address for Service Rules – On Thursday, November 19, the UK Intellectual Property Office updated a webpage on important rule changes that will take effect when the Brexit transition period ends December 31 of this year. The updates include changes to Address for Service rules which will require a UK or Channel Islands address on all new filings for applications and contentious proceedings at the UKIPO, narrowing the prior rule that had allowed such filings to include addresses from anywhere in the European Economic Area (EEA).

CAFC Reverses Inventorship Judgment Because Assignment Void Under CA Law – On Thursday, November 19, the Federal Circuit issued a precedential decision in Whitewater West Industries, Ltd. v. Alleshouse in which the appellate court reversed a ruling by the Southern District of California that had removed an inventor listed on patents claiming water-park attractions, finding that Whitewater lacked standing to challenge inventorship because a relevant assignment provision was void under California contract law.

USPTO Extends Comment Period for PTAB Discretion on Trial Institution – On Wednesday, November 18, the U.S. Patent and Trademark Office published notice in the Federal Register that it would extend the public comment period for soliciting input on factors that the agency should consider when deciding whether or not to exercise discretion to deny institution to patent validity trials petitioned at the Patent Trial and Appeal Board (PTAB). The public comment period is now extended to December 3.

Former Raytheon Engineer Faces 38-Month Sentence for Exporting Missile Technology – On Wednesday, November 18, U.S. District Judge Rósemary Marquez of the District of Arizona sentenced Chinese national Wei Sun to 38 months in prison for violating the Arms Export Control Act by transporting to China a laptop containing defense technical information related to advanced missile guidance systems developed by Raytheon Missiles and Defense.

USPTO Final Rule on Trademark Fees Includes Increases to TEAS, Opposition Filings – On Tuesday, November 17, the USPTO issued a final rule in the Federal Register codifying various adjustments to trademark fees charged by the agency, including significant increases to fees for standard applications filed through the Trademark Electronic Application System (TEAS) as well as filing fees for petitions to cancel or oppose trademarks.

CAFC Says Thryv Precludes Appeal of CBM Determination at PTAB – On Tuesday, November 17, the Federal Circuit issued a precedential decision in SIPCO, LLC v. Emerson Electric Co. in which the appellate court held that the U.S. Supreme Court’s decision in Thryv v. Click-to-Call Technologies makes the Patent Trial and Appeal Board’s (PTAB) determination that a patent qualifies for covered business method (CBM) review is nonappealable under 35 U.S.C. § 324(e).

Barks

Second Circuit Finds Bad Faith in Car Air Freshener Trademark Case, Revives Infringement Claims – On Thursday, November 19, the U.S. Court of Appeals for the Second Circuit issued a ruling in Car-Freshner Corporation v. American Covers, LLC in which the appellate court reversed-in-part a summary judgment ruling after it “hear[d] a good bit more than an echo” of bad faith sounding from internal emails among defendants who used the name “Midnight Black Ice Storm” in an attempt to create consumer confusion with Car-Freshner’s top-selling “Black Ice” auto fragrance.

Google Signs Copyright Agreement With Series of French News Publications – On Thursday, November 19, Google announced that it had signed copyright agreements with six French daily newspapers and magazines following court rulings in the EU which directed Google to enter negotiations with French news publishers to comply with provisions of the EU’s Copyright Directive.

USPTO Announces Worksharing Agreement With Cambodian IP Office – On Thursday, November 19, the USPTO announced that, during October, Director Andrei Iancu signed a landmark workshare agreement with the Cambodian Ministry of Industry, Science, Technology, & Innovation (MISTI) which will allow U.S. patent holders to request issuance of corresponding patent rights in Cambodia without a substantive examination of a patent application by MISTI.

Mediacom Files Trademark Suit Over Chicago-Area “Gigabit+” Internet Access Service – On Wednesday, November 18, national cable TV provider Mediacom filed a lawsuit in the Northern District of Illinois alleging claims of trademark infringement against Everywhere Wireless over its use of the designations “Gigabit+” and “Gigabit Plus” in connection with the provision of Internet access services to residences and businesses across the Chicago metropolitan area.

Judge Breyer Says Insurance Provider Has No Duty to Reimburse for Defensive Copyright Suit – On Tuesday, November 17, U.S. District Judge Charles R. Breyer of the Northern District of California granted a motion on the pleadings, ruling that National Fire Insurance Company of Hartford had no duty to reimburse its subscriber Hurricane Electric, a provider of upstream services to Internet service providers, for legal action taken to challenge copyright claims made against it by several movie copyright owners.

USPTO Seeks Stakeholder Input on Campaign to Combat Piracy, Counterfeits – On Tuesday, November 17, the USPTO issued a request for comments in the Federal Register seeking input from stakeholders, including online third-party marketplaces and IP rights holders, related to the development of a national consumer awareness campaign coordinated by the U.S. Department of Homeland Security to combat trafficking in pirated and counterfeit goods.

Copyright Suit Against Beyoncé, Jay-Z Over “Black Effect” Vocals Dismissed Voluntarily – On Monday, November 16, Lenora Stiles, a Jamaican choreographer who had filed a copyright suit against Beyonce and Jay-Z Carter over their unauthorized use of a voice recording taken by the music producing couple in their 2018 single “Black Effect,” filed a motion for voluntary dismissal of her copyright suit against the Carters.

EPO, LESI Sign Joint Work Plan to Increase Awareness of European Patent System – On Monday, November 16, the European Patent Office (EPO) and Licensing Executives Society International (LESI) announced that they had signed a joint work agreement covering more than 30 activities which are designed to increase IP awareness and help innovators worldwide make more effective use of the European patent system.

This Week on Wall Street 

Roblox Files Form S-1 With SEC to Start IPO Process – On Thursday, November 19, 3D digital world platform provider Roblox Corporation filed a Form S-1 registration statement with the U.S. Securities and Exchange Commission announcing the company’s intent to offer shares of Class A common stock in an initial public offering (IPO) on the New York Stock Exchange under the ticker symbol “RBLX.”

GM Announces $27B Plan to Invest in Electric, Autonomous Vehicle Developments – On Thursday, November 19, American carmaker General Motors announced plans to invest up to $27 billion in research and development efforts to develop electric and autonomous vehicle technologies, including the release of 30 new electric vehicle models globally by 2025, increasing an initial plan announced in March by $7 billion, or about 35 percent.

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: Analog Devices, Inc. (178th); Dell Technologies Inc. (16th); HP Inc. (47th)
• Wednesday: Deere & Company (118th)