Other Barks & Bites for Friday, May 7: FTC Issues Report to Congress on Repair Restrictions, SCOTUS Calls for Solicitor General Brief in American Axle and USPTO Seeks to Hire Hundreds of Patent Examiners

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

Barks (noun): peripheral noise worth your attention.

https://depositphotos.com/68397603/stock-photo-dog-reading-newspaper.htmlThis week in Other Barks & Bites: the U.S. Patent and Trademark Office (USPTO) announces a hiring initiative to fill hundreds of patent examiner positions at its Alexandria headquarters; Samsung and Ericsson enter a global cross-license agreement ending all patent litigation between the two companies; the FTC issues a report to Congress finding scant evidence to support justifications for copyright protecting measures on software and other repair restrictions; IBM announces the creation of a new 2-nm semiconductor that will have widespread industry applications; the Federal Circuit affirms a Rule 60(b)(3) ruling setting aside an injunction for patent infringement after the patent owner’s expert witness misrepresented knowledge of invalidating prior art; the Supreme Court asks the U.S. Solicitor General to file a brief on the Section 101 issues involved in American Axle; and Register Perlmutter tells the House Judiciary Committee that she believes Section 512 of the DMCA needs fine-tuning for better balance between online platforms and rightsholders.


Samsung, Ericsson Enter Cross-License Agreement Ending All Cellular Tech Patent Litigation – On Friday, May 7, Swedish telecom firm Ericsson announced that it had entered into a cross-license agreement with South Korean electronics giant Samsung ending all global litigation between the two companies regarding patent claims to cellular technologies, including network infrastructure and handsets. Ericsson expects the multi-year agreement to improve IP licensing revenues for 2021’s second quarter up to as much as 2.5 billion Swedish krona ($299.4 million USD).

FTC Finds “Scant Evidence” From Manufacturers to Support Copyright-Based Repair Restrictions – On Thursday, May 6, the Federal Trade Commission (FTC) issued a report to Congress identifying numerous repair restrictions utilized by manufacturers of smartphones and automobiles, including technological protection measures (TPM) used to protect copyrighted software, finding that the assertion of IP rights and other reasons given by manufacturers for these repair restrictions are only supported by scant evidence.

USTR Tai Says U.S. Will Back India-South Africa Proposed COVID-19 Patent Waiver – On Wednesday, May 5, news reports indicated that U.S. Trade Representative Katherine Tai made public remarks that the U.S. would support a proposal made by government leaders in India and South Africa at the World Trade Organization (WTO) to suspend intellectual property rights under the Trade-Based Aspects of Intellectual Property Rights (TRIPS) Agreement for products and services related to the prevention, containment or treatment of COVID-19.

Register Perlmutter Tells House Judiciary Committee that Section 512 of DMCA Needs Fine-Tuning – On Wednesday, May 5, Register of Copyrights Shira Perlmutter testified at an oversight hearing of the U.S. Copyright Office convened by the House Judiciary Committee, telling the committee that she agrees with the findings of a report on Section 512 of the Digital Millennium Copyright Act (DMCA) released last May, before Perlmutter took over as Register, indicating that the notice-and-takedown provisions of the DMCA require better balance between the rights and responsibilities of online platforms and copyright owners.

CAFC Affirms Rule 60(b)(3) Judgment for Fraudulent Prior Art Testimony – On Wednesday, May 5, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Cap Export, LLC v. Zinus, Inc. in which the appellate court affirmed the Central District of California’s Rule 60(b)(3) ruling setting aside a judgment and injunction as relief for misrepresentations committed by Zinus’ president and expert witness at trial, who denied knowledge of and experience with invalidating prior art.

SCOTUS Call for Solicitor General Brief Could Lead to Granting Cert in Section 101 Case – On Monday, May 3, the U.S. Supreme Court issued an order list directing the U.S. Solicitor General to file a brief reflecting the government’s views of the issues at play in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, a case in which the Federal Circuit found patent claims covering a method for manufacturing propeller shafts to be unpatentable subject matter under Section 101 as directed to a law of nature.

Tenth Circuit Says District Court Used Improper Legal Standard on Actual Trademark Use – On Friday, April 30, the U.S. Court of Appeals for the Tenth Circuit issued a decision in Underwood v. Bank of America Corporation in which the appellate court mainly affirmed a district court’s grant of summary judgment cancelling trademarks owned by Erik Underwood, who claimed the use of “E.R.I.C.A.” and “my24erica.com” trademarks prior to Bank of America’s “ERICA” mobile banking application. However, the court vacated the portion of the summary judgment ruling after finding that the district court applied the wrong legal standard on when a protectable interest in a mark arises from the mark’s actual use.

Tenth Circuit Affirms Trade Secret Claims Barred by Statute of Limitations – On Friday, April 30, the Tenth Circuit issued a decision in Beus Gilbert PLLC v. Donald L. Robertson Trust in which the appellate court affirmed-in-part the district court’s decision to deny a motion to amend a complaint after finding that the trade secret claims to be alleged in the amended complaint from the successor-in-interest to claims of co-discovery of an enzyme used in the development of the blockbuster arthritis drug Celebrex were barred by the statute of limitations.


EUIPO Issues Calls for Proposals to Raise Awareness of Damage From Counterfeits, Piracy – On Thursday, May 6, the European Union Intellectual Property Office (EUIPO) announced that it was issuing a fourth call for proposals to support research activities and programming initiatives to raise awareness of the economic and societal damage caused by counterfeits and piracy that occurs in violation of intellectual property rights.

Childish Gambino Targeted By Copyright Suit Over “This is America” – On Thursday, May 6, hip-hop artist Emilike Nwosuocha, performing under the name Kidd Wes, filed a lawsuit in the Southern District of New York against Donald McKinley Glover, who performs as the rap artist Childish Gambino, alleging infringement claims based on substantial similarities between Glover’s 2018 release “This is America” and Nwosuocha’s 2016 single “Made in America.”

Global Recording Industry Group Files Italian Suit Against Vimeo’s Copyright Infringement – On Wednesday, May 5, global recording industry association International Federation of the Phonographic Industry (IFPI) announced that it was taking legal action in Italy in conjunction with Italian rights organization Federazione Industria Musicale Italiana (FIMI) and the Federation against Music and Multimedia Piracy (FMP) against online content sharing service Vimeo for its failure to act in removing videos infringing copyright.

USITC Seeks Comments on Public Interest for Entering LEO Against Google, Alarm.com, Vivint – On Tuesday, May 4, the U.S. International Trade Commission issued a notice of request for submissions on the public interest following an administrative law judge’s initial determination of a Section 337 violation by Google, Alarm.com, Vivint, Schneider Electric, Daikin and ecobee, especially as to the impact of entering a limited exclusion order preventing those companies from importing for sale certain smart thermostats, smart HVAC systems and components thereof.

USPTO Requests Comments on Trademark Petitions – On Monday, May 3, the U.S. Patent and Trademark Office issued a request for comments in the Federal Register soliciting public feedback for evaluating the usefulness of the information collected by the agency regarding various trademark-related communications including letters of protest, requests to make special and responses to petition inquiry letters.

Wrigley Files Trademark Suit Against “ZKITTLEZ” Cannabis Brand – On Monday, May 3, candy manufacturer Wm. Wrigley Jr. Company, owner of the Skittles candy brand, filed a lawsuit in the Northern District of Illinois  alleging claims of trademark infringement, trademark dilution and cybersquatting against Terphogz, LLC, a company marketing cannabis products and related drug paraphernalia under the brand “Zkittlez.”

USPTO Announces Hiring Initiative to Build Patent Examiner Corps – On Monday, May 3, the U.S. Patent and Trademark Office announced that it would be accepting applications through June 24 from recent graduates and professionals with engineering, science or graphic design backgrounds as the agency looks to add hundreds of new hires to its patent examination corps working at the agency’s headquarters in Alexandria, VA.

Judge Casper Knocks Out Multiplayer Bandwidth Patent Claims Under Alice/Mayo – On Friday, April 30, U.S. District Judge Denise J. Casper of the District of Massachusetts granted a motion for summary judgment invalidating all remaining patent claims asserted by Worlds, Inc., covering systems for managing bandwidth in online multiplayer environments, against video game maker Activision Blizzard after finding the claims were invalid under Section 101 for being directed to the natural phenomenon of achieving crowd control by filtering information.

This Week on Wall Street

IBM’s New 2-nm Chip Expected to Improve Computing Performance Across Industries – On Thursday, May 6, information technology giant IBM announced that it had created a new 2-nanometer (nm) semiconductor which will provide 45 percent greater performance along with a 75 percent reduction in energy usage when compared to industry standard 7-nm semiconductors; the new chips are expected to go into production by IBM’s prospective licensing partners by 2025.

Square’s Cash App Processed $35B in Bitcoin Volume During 2021’s First Quarter – On Thursday, May 6, digital payments firm Square reported earnings for the first quarter of 2021 showing that the company’s Cash App processed bitcoin payments totalling $35.1 billion USD of value, resulting in revenues of $75 million of the total $964 revenues earned by Square during 2021’s first quarter.

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: Kawasaki Heavy Industries Ltd. (t-255th); Panasonic Corp. (20th); Siemens AG (31st); Yamaha Corp. (168th)
  • Tuesday: Daikin Industries, Ltd. (t-290th); Hon Hai Precision Industry (116th); Nissan Motor Co., Ltd. (102nd); Sharp Corp. (44th); Shimadzu Corp. (195th); Thyssenkrupp AG (t-298th); Wistron Corp. (t-290th)
  • Wednesday: Applied Materials, Inc. (62nd); Bayer AG (68th); Deutsche Telekom AG (t-140th); Fujifilm Holdings Corp. (30th); The Merck Group (t-220th); Nippon Telegraph & Telephone Corp. (142nd); Schaeffler AG (t-192nd); Sumitomo Rubber Industries, Ltd. (t-216th); Toyota Motor Corp. (13th);
  • Thursday: Nikon Corp. (205th); Sumitomo Chemical Corp. (176th); Sumitomo Electric Industries Ltd. (61st); The Walt Disney Co. (188th)
  • Friday: AAC Technologies Holding Inc. (177th); Honda Motor Co., Ltd. (35th); Japan Display Inc. (84th); Konica Minolta, Inc. (83rd); Mazda Motor Corp. (t-186th); Toshiba Corp. (34th)



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