Bites (noun): more meaty news to sink your teeth into.
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This week in Other Barks & Bites: Senator Tillis asks Biden to snub anti-IP proposals to the World Trade Organization; China’s national IP agency released statistics for the five year period from 2016 to 2020 showing major increases in patent commercialization activity; the Eleventh Circuit affirms a summary judgment ruling in favor of Stephen King in a copyright case over “The Dark Tower” novel series; a Northern California grand jury investigation leads to expanded charges against a former Stanford University researcher; Taylor Swift’s IP holding company files a copyright suit against the Evermore theme park in Utah; the Federal Circuit rules that the Navy breached an implied license to its use of a 3D graphics rendering software program, resulting in copyright infringement liability; TikTok enters a proposed $92 million settlement agreement over data privacy claims; and the Copyright Office issues a final rule on the registration of works associated with a music album, including liner notes and cover art.
Tillis Urges Biden to Oppose Anti-IP Proposals to WTO – Senator Thom Tillis (R-NC) on Friday, February 26 sent a letter to President Biden urging him to support international IP protections and to oppose anti-intellectual property proposals such as those recently made by India and South Africa to the World Trade Organization (WTO) suggesting that all IP rights be waived for any innovation related to COVID-19. ‘This dangerous WTO proposal, as well as similar initiatives in countries and other international organizations, risks grave and permanent damage to the global system of intellectual property rights protections that underpin biomedical research,” said Tillis.
USPTO Hosts Public Roundtable on Trademark Modernization Act Next Week – On Monday, March 1 at 1 PM, the U.S. Patent and Trademark Office will convene a virtual roundtable to solicit public input regarding the implementation of the Trademark Modernization Act of 2020, which grants the USPTO authority to shorten response deadlines to expedite trademark applications and codifies third-party evidence submissions related to trademark applications being processed by the Office.
CAFC Finds Infringement Liability for Navy in 3D Graphics Software Copyright Case – On Thursday, February 25, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Bitmanagement Software GmbH v. United States in which the appellate court vacated a ruling by the U.S. Court of Federal Claims, finding that the lower court erred in determining whether the U.S. Navy breached an implied license to 3D graphics rendering software it purchased from Bitmanagement for virtual reality visualizations of Navy installation and facilities. Circuit Judge Pauline Newman wrote a concurrence in which she argued that the Navy failed to prove that it had an implied license “to make hundreds of thousands of copies of Bitmanagement’s commercial software product” without authorization or payment.
CNIPA Reports Major Gains in Patent Commercialization During 13th Five-Year Plan – On Wednesday, February 24, China’s National Intellectual Property Administration (CNIPA) released statistics regarding patent commercialization during the 13th Five-Year Plan from 2016 to 2020 showing that 1.386 million patent transfer, license and pledge financing transactions took place during the five-year period, a total two-and-a-half times higher than the number of similar transactions during the 12th Five-Year Plan.
Eleventh Circuit Affirms SJ for Stephen King in “The Dark Tower” Copyright Case – On Tuesday, February 23, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in DuBay v. King in which the appellate court affirmed a lower court’s grant of summary judgment to Stephen King after finding that the plaintiff did not prove substantial similarity between his own comic book character and the Roland Deschain character developed by King for his “The Dark Tower” book series.
Copyright Office Issues Final Rule on Group Registration of Music Album Works – On Tuesday, February 23, the U.S. Copyright Office published a final rule in the Federal Register regarding the implementation of a new group registration option at the agency for musical works, sound recordings, and associated literary, pictorial and graphic works contained on an album. This group option enables the registration of cover art, liner notes and posters along with music recordings for a phonorecord release.
CAFC Vacates Obviousness Finding By PTAB as Precluded By Prior Reexam Proceedings – On Monday, February 22, the Federal Circuit issued a precedential decision in SynQor, Inc. v. Vicor Corp. in which the appellate court vacated a ruling by the Patent Trial and Appeal Board (PTAB) in an inter parties reexamination proceeding finding that other reexam decisions rendered by the PTAB precluded the Board’s ability to invalidate SynQor’s patent claims based on the grounds relied upon by the PTAB. Circuit Judge Timothy Dyk dissented on the argument that the reexam proceedings are inquisitorial and thus collateral estoppel shouldn’t apply to the PTAB’s obviousness findings under Supreme Court precedent.
Seventh Circuit Affirms Denial of Attorney’s Fees Under Octane Fitness Standard – On Friday, February 19, the U.S. Court of Appeals for the Seventh Circuit issued a decision in LHO Chicago River, L.L.C. v. Rosemoor Suites, LLC in which the appellate court affirmed the Northern District of Illinois’ denial of attorney’s fees to Rosemoor after LHO Chicago River voluntarily dismissed its claims. The Seventh Circuit had previously remanded this case to the district court in 2018 after Northern Illinois rebuffed Rosemoor’s first request for attorney’s fees, instructing the district court to apply the fee-shifting standard from the Supreme Court’s 2014 decision in Octane Fitness.
Grand Jury Charges Expanded Against Former Stanford Researcher – On Friday, February 19, the U.S. Department of Justice announced that a grand jury investigation in the Northern District of California added visa fraud, obstruction of justice, destruction of documents and false statement charges against a former researcher at Stanford University who failed to disclose her status as a member of China’s People’s Liberation Army on a J-1 non-immigrant visa application to study brain disease at Stanford.
CAFC Finds PTAB Erred in Obviousness Analysis, Vacates Ruling Upholding Melanoscan Patent Claims – On Thursday, February 18, the Federal Circuit issued a precedential decision in Canfield Scientific, Inc. v. Melanoscan, LLC in which the appellate court vacated a ruling by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding. The Federal Circuit found that the PTAB erroneously applied its obviousness analysis to determine that prior art asserted by Canfield did not invalidate Melanoscan patent claims covering an imaging device for the detection, diagnosis and treatment of skin cancer.
Copyright Office Issues Final Rule on Modernizing Notices of Termination – On Friday, February 26, the Copyright Office published a final rule and statement of policy in the Federal Register amending regulations governing the recordation of notices of termination that clarify the rules regarding notices that are barred for being untimely as well as a broadening of the harmless errors exception to errors that don’t materially affect the Office’s ability to record the notices.
USPTO Starts Info Collections on PTRC Metrics, Trademark Registration Applications – On Friday, February 26, the U.S. Patent and Trademark Office announced in the Federal Register an information collection it plans to submit for approval to the Office of Management and Budget regarding regulations on the recognition and conduct of patent attorneys and agents admitted to practice at the USPTO. The previous day, the agency also announced information collections regarding public use of Patent and Trademark Resource Center (PTRC) services and regulations for initial trademark registration applications.
EPO, INPI Directors Discuss Updates to Strategic Technical Partnership – On Thursday, February 25, European Patent Office (EPO) President António Campinos and National Institute of Intellectual Property of Brazil (INPI) President Cláudio Vilar Furtado met to discuss their agencies’ commitment to the Technical and Strategic Reinforced Partnership their offices signed in 2019, which has to this point mapped 10,000 Brazilian national patent applications to their corresponding European applications to improve the efficiency of patent grants.
USITC Institutes Section 337 Investigation Into SharkNinja Robotic Floor Cleaners – On Thursday, February 25, the U.S. International Trade Commission instituted a Section 337 proceeding based on patent infringement claims filed by iRobot against certain robotic floor cleaning devices and components thereof imported into the U.S. for sale by SharkNinja.
Judge Baylson Allows Trademark Claims Against Nike to Survive SJ – On Wednesday, February 24, U.S. District Judge Michael M. Baylson of the Eastern District of Pennsylvania issued a ruling denying a motion for summary judgment filed by Nike allowing trademark infringement claims filed by apparel company Lontex Corp. over Nike’s use of the words “cool compression” on compression apparel branding to proceed toward trial.
Taylor Swift Files Copyright Suit Against Theme Park Over Unlicensed Music Usage – On Monday, February 22, TAS Rights Management, the IP holding company for American singer-songwriter Taylor Swift, filed a lawsuit in the Middle District of Tennessee against the operators of the Utah-based theme park Evermore alleging that the theme park, which previously filed a trademark action against Swift’s “Evermore” album, has been engaging in unauthorized playback of songs by Swift, Katy Perry, Britney Spears, Nirvana, Billy Joel and other pop stars within its theme park.
Molo Design Files Patent Suit Against Chanel Over Store Displays – On Monday, February 22, Canadian design studio Molo Design filed a lawsuit in the Southern District of New York asserting claims of patent infringement against luxury brand Chanel over that firm’s use of infringing softwall and softblock displays for space partitioning in Chanel stores.
Copyright Office Issues Interim Rule on Remote Examination of Secure Test Registrations – On Friday, February 19, the Copyright Office published an interim rule in the Federal Register providing for the examination of registrations for secure tests, which require a high degree of confidentiality and were required to be examined in-person in the presence of the applicant or its representative, to be performed remotely via secure videoconference to process such claims during the COVID-19 pandemic.
This Week on Wall Street
TikTok Settles Data Privacy Class Action Suit for $92 Million – On Thursday, February 25, a proposed settlement agreement was entered into the Northern District of Illinois that would require social media platform TikTok to pay $92 million to settle claims that it violated state and federal law by harvesting private data and collecting facial biometric data from its 89 million users in the United States and then selling that data to third-party advertisers in China.
Verizon, AT&T are Top Bidders in FCC 5G Spectrum Auction – On Wednesday, February 24, the Federal Communications Commission (FCC) announced that its recent midband 5G spectrum auction drew $81 billion in bids, including nearly $45.5 billion from Verizon Communications, $23.4 billion from AT&T and $9.3 billion from T-Mobile; these three carriers won 90% of the licenses up for auction.
Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2020 are announcing quarterly earnings next week (2020 rank in parentheses):
- Monday: None
- Tuesday: Hewlett Packard Enterprise Co. (53rd)
- Wednesday: Marvell Technology Group Ltd. (207th)
- Thursday: Broadcom Inc. (148th); Merck KGaA (t-220th); Schaeffler AG (t-192nd)
- Friday: None
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