Bites (noun): more meaty news to sink your teeth into.
Barks (noun): peripheral noise worth your attention.
This week in Other Barks & Bites: the FTC files an antitrust suit against Facebook in U.S. district court over monopolistic business acquisitions and anticompetitive conditions on software developers; the EPO releases a report on Fourth Industrial Revolution (4IR) technology trends; the CJEU nixes a 2016 licensing agreement between Paramount and EU regulators because of its impact on contractual rights of third party licensees; the USPTO publishes a final rule eliminating a presumption in favor of IPR petitioners when a genuine issue of material fact is created by patent owner testimony; Senator Tillis proposes a legislative draft creating prison sentences for illegal streaming that is expected to be passed in next week’s omnibus spending bill; shares of Ericsson stock drop after the company files a U.S. patent suit against Samsung; the Federal Circuit finds abuse of discretion in a lower court’s refusal to transfer disputed Japanese patents to their rightful inventor; and the CNIPA issues administrative penalties against a regional trademark agency in China that forged documents to solicit business.
Sen. Tillis Releases Legislative Draft Creating Prison Sentences for Illegal Streaming – On Thursday, December 10, the officer of Senator Thom Tillis (R-NC) released a draft text of the Protecting Lawful Streaming Act, a bill co-sponsored by a bipartisan group of nine other Senators which would amend Title 18 of U.S. Code to create maximum prison sentences ranging from three years to five years for offering unauthorized streaming transmissions of copyright-protected content. This bill and two others, the Copyright Alternative in Small-Claims Enforcement (CASE) Act and the Trademark Modernization Act, are expected to be included in the omnibus appropriations bill that is likely to be passed by Congress next week.
PTAB Rule Changes Eliminate Presumption in Favor of IPR Petitioners – On Wednesday, December 9, the U.S. Patent and Trademark Office published a final rule in the Federal Register revising the rules of practice at the Patent Trial and Appeal Board to eliminate the presumption that a genuine issue of material fact created by a patent owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for the purposes of deciding whether to institute a review. The final rule also changes PTAB institution rules in accordance with the U.S. Supreme Court’s decision in SAS Institute v. Iancu.
FTC Files Antitrust Suit Against Facebook Over Alleged Monopoly in Social Networking – On Wednesday, December 9, the Federal Trade Commission (FTC) filed a lawsuit in the U.S. District Court for the District of Columbia alleging violations of the FTC Act committed by social network giant Facebook for engaging in a systemic strategy to eliminate threats to its monopoly through business acquisitions and imposing anticompetitive conditions on software developers.
EPO Study Shows Fourth Industrial Revolution Tech is Growing at Record Rate – The European Patent Office (EPO) issued a press release and 75-page study on December 10, titled “Patents and the Fourth Industrial Revolution – the global technology trends enabling the data-driven economy,” which examined global trends in innovation in fourth industrial revolution (4IR) technologies. The study revealed that, between 2010 and 2018, global patent filings for 4IR technologies, including smart connected objects, Internet of Things, Big Data, 5G, and Artificial Intelligence (AI), grew at an average annual rate of almost 20%, which is nearly five times faster than the average of all technology fields.
CJEU Nixes Paramount Licensing Agreement With EU Regulators Over Third-Party Impacts – On Wednesday, December 9, the Court of Justice for the European Union issued a ruling in Groupe Canal + v. Commission in which the CJEU nixed a 2016 deal between Paramount Pictures and the European Commission regarding the enforcement of territorial protections in a movie licensing deal with Sky UK after the EU’s highest court found that the agreement, meant to address issues with geoblocking, infringed on the contractual provisions of third parties that had their own licensing deals with Paramount.
USITC Delays Decision in EV Battery Cell Trade Secret Case to February – On Wednesday, December 9, the U.S. International Trade Commission (ITC) decided to delay until February 10 a decision in a trade secret case between LG Chem and SK Innovation that could block SK Innovation’s importation of components used to create electric vehicle battery cells that are supplied to Volkswagen and Ford.
Third Circuit Says Twitter Barbs Are Not Commercial Speech for Lanham Act Claims – On Tuesday, December 8, the U.S. Court of Appeals for the Third Circuit issued a ruling in Konowicz v. Carr affirming a district court’s grant of summary judgment on claims that Twitter posts attacking the qualifications of a rival meteorologist were not actionable under the Lanham Act because they did not constitute commercial speech that referred to a specific product or service.
CAFC Finds Abuse of Discretion in Denying Motion to Transfer Ownership of Disputed Patents – On Monday, December 7, the U.S. Court of Appeals for the Federal Circuit issued a decision in SiOnyx LLC v. Hamamatsu Photonics K.K. in which the appellate court reversed the District of Massachusetts decision to deny a motion filed by SiOnyx to transfer ownership of disputed Japanese patents from Hamamatsu despite the district court finding that U.S. patents covering the same invention should be transferred to SiOnyx pursuant to a non-disclosure agreement provision giving SiOnyx patent rights to inventions based on information it disclosed.
ICC IP Roadmap Covers Effect of COVID-19 on Counterfeiting – The International Chamber of Commerce (ICC) has published the latest edition of its Intellectual Property (IP) Roadmap, covering topics including artificial intelligence, sustainable innovation and persistent threats posed by piracy and counterfeiting to business operations. According to a press release, “since the outbreak of the COVID-19 pandemic, disrupted supply chains, supply shortages and demand surges have aggravated existing piracy and counterfeiting. The Roadmap included contributions from over 100 IP experts from around the world.
Judge Wallach Dissents From CAFC En Banc Denial on TTAB Standing Issue – On Friday, December 4, the Federal Circuit denied a petition for en banc rehearing in Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, leaving in place a panel decision finding that the Trademark Trial and Appeal Board (TTAB) erred in finding that Australian Therapeutic had no standing to challenge a trademark owned by Naked. Dissenting from the denial was Circuit Judge Evan J. Wallach, who found that Australian Therapeutic lacked a legitimate commercial interest required for standing to challenge Naked’s mark because it had previously entered into a settlement agreement with Naked under which Australian Therapeutic agreed to abstain from using Naked’s marks in the U.S.
Four USPTO IP Attachés Receive “Counselor” Rank at U.S. Embassies – On Thursday, December 10, the USPTO announced that four IP attachés have been elevated to the rank of “Counselor” at the U.S. embassies in the countries where those attachés are stationed: India, Mexico, China and Belgium.
Unidentified Individual Pleads Guilty to DoJ Charges Following 2016 DDoS Attacks – On Wednesday, December 9, the U.S. Department of Justice announced that an individual pleaded guilty to charges that, as a juvenile, the individual took part in a conspiracy to commit computer fraud and abuse using a botnet to perpetrate a distributed denial of service (DDoS) cyberattack against online gaming platforms, especially the Sony PlayStation Network, in October 2016.
USPTO Appoints Critharis to Serve as Chief Policy Officer – On Tuesday, December 8, the USPTO announced that Mary Critharis has officially been appointed to serve the agency as Chief Policy Officer and Director of International Affairs, positions Critharis had been serving on an interim basis after Shira Perlmutter left those roles earlier this year to serve the U.S. Copyright Office as Register of Copyrights.
CNIPA Issues Administrative Penalties for Forged Trademark Documents – On Monday, December 7, China’s National Intellectual Property Administration (CNIPA) entered an administrative decision levying fines and other punishments against certain employees of the Shanghai Xuenai Trademark Office for forging trademark documents to solicit business from trademark registrants and applicants.
USPTO Launches Parallel Patent Grant Initiative With Mexico – On Monday, December 7, the USPTO announced that it had entered into an agreement with the Mexican Institute of Industrial Property (MIIP) to launch the Parallel Patent Grant Initiative, a worksharing agreement between the two national agencies to expedite the granting of Mexican patents to entities who have already been granted a corresponding U.S. patent.
Judge Connolly Rules SmileDirectClub Patent Invalid as Directed to Abstract Idea – On Monday, December 7, U.S. District Judge Colm Connolly of the District of Delaware entered a ruling finding that patent claims asserted by SmileDirectClub against a competing firm were invalid as directed to the abstract idea of “having patients arrange for and receive dental aligners without ever seeing a dentist in person.”
USPTO Announces New Members of PPAC and TPAC – On Monday, December 7, the USPTO announced two new members to the agency’s Public Patent Advisory Committee (PPAC): Judge Susan Braden, former Chief Judge of the U.S. Court of Federal Claims; and Daniel Brown, inventor and professor at the Segal Design Institute-Northwestern University. The USPTO also announced three new members of the Trademark Public Advisory Committee (TPAC): David Cho, Assistant Vice President and Senior Legal Counsel, Trademarks and Copyrights, AT&T; Tracy Deutmeyer, trademark lawyer at Fredrikson & Byron; and Jomarie Fredericks, Deputy General Counsel, Chief IP and Brand Counsel, Rotary International.
Publishing Deal Values 80% of Stevie Nicks’ Catalog at $100 Million – On Friday, December 4, news reports indicated that American singer-songwriter Stevie Nicks sold an 80 percent stake in her music recording copyright ownership with Primary Wave in a deal that values that stake in Nicks’ catalog at $100 million.
This Week on Wall Street
Ericsson Shares Drop on News of U.S. Patent Lawsuit Filed Against Samsung – On Friday, December 11, stock prices for Swedish telecommunications firm Ericsson fell in price by about 7 percent after the company warned investors that a patent infringement suit that Ericsson filed in U.S. district court against Samsung could reduce operating income for the company due to lost royalties on its patent portfolio.
SEC Levies $200M Fine Against GE for Misleading Investors – On Wednesday, December 9, the U.S. Securities and Exchange Commission issued a $200 million fine against General Electric for making misleading statements to investors in 2016 and 2017 regarding the source of profits for the company’s GE Power business as well as failing to inform investors of risks related to its GE Capital business.
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: None
- Thursday: Accenture plc (174th)
- Friday: Blackberry Ltd. (138th); Nike Inc. (t-107th)
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