Other Barks & Bites for Friday, June 25: EPO Board of Appeal Issues Preliminary DABUS Decisions, Tillis Sends Out QFRs on ‘Gold-Plated Patents,’ CJEU Clarifies Online Platform Liability for User Uploads of Infringing Works

By IPWatchdog
June 25, 2021

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

Bark” (noun): peripheral noise worth your attention.

https://depositphotos.com/purchased.html?backURL%5Bpage%5D=%2Fstock-photos%2Fnews-dogThis week in Other Barks & Bites: The EPO Board of Appeal issues preliminary communications on artificial intelligence-invented DABUS patents; the House Judiciary Committee passes a legislative package of six Big Tech antitrust bills after a 29-hour marathon markup session; Google announces the JioPhone Next as it seeks to increase sales on the Indian subcontinent; the Senate IP Subcommittee holds a hearing on patent quality, after which Senator Tillis sent questions for response to panel witnesses on several topics including the possibility of “gold-plated patents;” the Directors of WIPO, WHO and WTO agreed to collaborate on workshops for facilitating medical technology distribution during the COVID-19 pandemic; the Supreme Court rules in Arthrex that the USPTO Director must review decisions of the PTAB to cure the constitutional defect in that case; the CJEU holds that online platforms normally do not make a communication of copyrighted works under EU law when users upload infringing content; and the Ninth Circuit rules that damages claims against online social media platforms for liability stemming from attacks by terrorist groups posting content on those platforms are barred by Section 230 immunity.

Bites

EPO Board of Appeal Issues Preliminary Decisions on DABUS Patents – The European Patent Office (EPO) Board of Appeal (BOA) today issued two preliminary communications in appeals of the EPO’s rejection of patent applications for inventions designating an artificial intelligence named DABUS as the inventor. The BOA agreed with the EPO’s January 2020 decisions, and said that, under the European Patent Convention (EPC), an inventor on a patent application must have “legal capacity,” meaning the “ability, according to a source of law, to be the subject of rights and duties.” Oral proceedings are scheduled for December 21, 2021.

WIPO, WHO, WTO Enter Cooperative Agreement to Improve Global Access to Medical Technologies – On Thursday, June 24, the Directors of the World Intellectual Property Organization (WIPO), World Trade Organization (WTO) and World Health Organization (WHO) agreed to collaborate on a series of workshops to facilitate the flow of medical technology and provide technical assistance to government bodies for addressing needs during the COVID-19 pandemic. The first workshop in September will be focused on tech transfer and licensing.

Tillis and Leahy ask Copyright Register to Convene Working Group on STMs to Curb Online Copyright Theft – On June 24, Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT) sent a letter to Shira Perlmutter, the U.S. Copyright Office’s Register of Copyrights, asking that she “convene a representative working group of relevant stakeholders in order to identify and implement standard technical measures and recommend other necessary steps to stop online copyright theft and improve the digital ecosystem for creators, content owners, and lawful internet users.” The goal would be for the Copyright Office to produce a report based on the working group’s input “identifying and clarifying what STMs currently exist in the marketplace and should be adopted by online service providers in order to fulfill the obligations expected by Congress in enacting the DMCA.” The letter also asked that the Copyright Office issue a notice of inquiry and produce a report responding to eight questions about the Office’s views on STMs.

House Judiciary Passes Big Tech Antitrust Legislation After Marathon Markup Session – On Thursday, June 24, the House Committee on the Judiciary announced that it had favorably reported six bills out of committee as part of a legislative agenda to increase antitrust regulation of Big Tech firms after reportedly spending 29 hours debating over amendments and concerns over potential spending targets for the Federal Trade Commission and the U.S. Department of Justice as authorized by those bills.

CAFC Remands Apple IPR Based on PTAB’s Clear Mathematical Error – On Wednesday, June 23, the U.S. Court of Appeals for the Federal Circuit issued a decision in Apple Inc. v. Corephotonics Ltd. in which the appellate court found that, although the Patent Trial and Appeal Board (PTAB) only committed harmless error in improperly shifting the burden to Apple to prove that a printed publication was an enabling prior art reference, the Board’s finding that there was no motivation to combine asserted prior art references was based on a mathematical error requiring vacatur and remand to the PTAB.

Senate IP Subcommittee Mulls Patent Quality, Tillis Issues QFRs on “Gold-Plated Patents – On Tuesday, June 22, the Senate Committee on the Judiciary’s Subcommittee on Intellectual Property held a hearing on protecting real innovation by improving patent quality during which the debate focused on concerns related to assertions of overbroad patents in infringement proceedings versus harming true innovators by weakening their patent rights. Following the hearing, the subcommittee’s Ranking Member, Senator Thom Tillis (R-NC), sent out questions for the record on several subjects, including the prospect of the USPTO issuing “gold-plated patents” presumed valid by courts in exchange for additional examination paid for by the patent owner, to each of the panel witnesses: Professor Jorge L. Contreras of S.J. Quinney College of Law, University of Utah; Troy Lester  of Acushnet; Bridget Asay, Partner at Stris & Maher; and Julio Garceran of Cree, Inc.

CJEU Finds No Communication of Copyrighted Work by Online Platform for User Uploads – On Tuesday, June 22, the Court of Justice for the European Union (CJEU) issued a ruling in a pair of cases consolidated before the EU’s highest court in which it ruled that online content sharing platforms YouTube and Cyando do not make public communications of copyrighted works within the meaning of EU copyright law giving rise to infringement liability for the unauthorized posting of copyrighted content by platform users, unless platform operators contribute to the communication beyond merely making their platforms available.

Ninth Circuit Rules Section 230 Bars Terrorism Damages Claims Against Social Media Platforms – On Tuesday, June 22, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Gonzalez v. Google, LLC in which the appellate court ruled in a series of appeals from suits brought by family members of individuals killed in terrorist attacks in Paris, Istanbul and San Bernardino, finding that damages claims under the Anti-Terrorism Act filed against Google, Twitter and Facebook for allowing the posting of ISIS videos and running ads close to ISIS content were mainly barred by Section 230 of the Communications Decency Act.

SCOTUS Decides USPTO Director Review Solves Constitutional Issue in Arthrex – On Monday, June 21, the U.S. Supreme Court issued its decision in Arthrex v. Smith & Nephew in which the nation’s highest court agreed with the U.S. Court of Appeals for the Federal Circuit that the appointment of administrative patent judges (APJs) at the PTAB violates the Appointments Clause of the U.S. Constitution. However, the Supreme Court’s plurality opinion cured the violation not by severing tenure provisions for APJs but rather by directing the USPTO Director to review PTAB trials decided by APJs.

SCOTUS Denies Cert in Case on Federal Court Abstention From DJ Action for Patent Invalidity – On Monday, June 21, the Supreme Court issued an order list indicating that the nation’s highest court had denied a petition for writ of certiorari in Warsaw Orthopedic Inc. v. Sasso, refusing to pass on the question of whether a federal court may abstain from a declaratory judgment action filed to invalidate patent claims that are at issue in pending state court litigation involving breach of patent licensing agreement claims. The orders also show that the Supreme Court denied a petition for writ in AbbVie v. FTC, in which AbbVie asked the nation’s highest court to overturn findings that its Hatch-Waxman litigation over AndroGel generics met the sham litigation exception to Noerr-Pennington antitrust doctrine offering First Amendment protections to companies asserting rights in ways that harm competitors.

Barks

CRB Proposes Rate Determination for Making and Distributing Phonorecords – On Friday, June 25, the Copyright Royalty Board (CRB) issued a proposed rule in the Federal Register seeking public comment on the Board’s determination of rates and terms for Section 115 statutory licenses for digital transmissions of phonorecords of nondramatic musical works, including transmissions as digital downloads and ringtones.

USPTO Increases Public Comment Period for PPH Program, Public Search Facility Accounts – On Friday, June 25, the U.S. Patent and Trademark Office issued a pair of notices in the Federal Register indicating that the agency was extending by 30 days a public comments periods seeking input on information collected from applicants to the Patent Prosecution Highway (PPH) accelerated examination program and those applying for USPTO online access accounts to use electronic search systems at the Public Search Facility.

CRB Announces Partial Distributions of 2019 Cable, Satellite Royalty Funds – On Thursday, June 24, the Copyright Royalty Board (CRB) issued a pair of notices requesting comment on motions filed before the CRB requesting distribution of 40 percent of royalties collected pursuant to Section 111 statutory licenses for cable retransmissions of over-the-air television and radio broadcasts and 40 percent of royalties collected pursuant to Section 119 statutory licenses for satellite retransmissions of over-the-air television broadcasts.

USPTO Says 63% Increase in 2021 Trademark Filings Due to Pandemic Increase in E-Commerce – On Wednesday, June 23, a post on the USPTO’s Director’s Forum blog authored by USPTO Commissioner for Trademarks David Gooder disclosed that the USPTO had received 211,000 more applications through June 17 than the agency had received during the same period in 2020, a 63 percent year-over-year increase in filings, owing in part to increased filings from foreign and domestic entities seeking to cover marks in response to increases in global e-commerce during the COVID-19 pandemic.

USITC Institutes Section 337 Investigation Into Touch Sensing Components – On Wednesday, June 23, the U.S. International Trade Commission announced that it had decided to institute a Section 337 investigation based on patent infringement allegations filed at the agency by Irish firm Neodron against certain capacitive touch sensing systems and controllers, and microcontrollers with touch sensing functionality, imported into the U.S. for sale by STMicroelectronics, Cypress Semiconductor and Renesas Electronics.

Copyright Office Issues Final Rule on Agency Reorganization, CCB Reporting Mechanism – On Wednesday, June 23, the U.S. Copyright Office issued a final rule in the Federal Register making technical changes to agency regulations pertaining to organizational structure after the Office completed in May a reorganization of many agency division and created a mechanism authorizing officers of the Copyright Claims Board, newly established by the Copyright Alternative in Small-Claims Enforcement (CASE) Act, to report decisions to the Office’s General Counsel.

Ninth Circuit Finds No Abuse of Discretion in Denying Injunction on “FREELANCER” Trademark – On Tuesday, June 22, the Ninth Circuit issued an unpublished opinion in Freelancer International Pty Ltd. v. Upwork Global, Inc. in which the appellate court found no abuse of discretion in the district court’s denial of a motion for preliminary injunction filed against Upwork’s use of the “FREELANCER” trademark registered by Freelancer International.

Copyright Office Announces Membership of the Copyright Public Modernization Committee – On Tuesday, June 22, the Copyright Office announced that it had selected 13 individuals to serve the agency’s new Copyright Public Modernization Committee, which will hold its first public meeting in July to enhance communication and provide a public forum for the technology-related aspects of the Office’s modernization initiative. 

This Week on Wall Street

Nike Beats Analyst Expectations for Fourth Quarter on Record North America Revenues – On Thursday, June 24, athletic shoe developer Nike announced its earnings for the fourth quarter of the company’s fiscal year, with revenues of $12.34 billion beating analyst expectations of $11.01 billion in quarterly revenues thanks in large part to a company record $5.38 billion in North America sales, more than double the revenues earned from that segment by Nike during the same period last year.

Google Unveils Smartphone for Indian Market in Partnership With Jio – On Thursday, June 24, a post on Google’s official India Blog announced that the company, as part of its partnership beginning last year with Indian telecom firm Reliance Jio, will be releasing an affordable smartphone option for consumers in India branded as the JioPhone Next.

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: None
  • Wednesday: Micron Technology Inc. (22nd)
  • Thursday: None
  • Friday: None

 

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IPWatchdog

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Discuss this

There are currently 12 Comments comments. Join the discussion.

  1. Pro Say June 25, 2021 6:16 pm

    . . . while yet another week goes by . . . with Congress still not restoring patent eligibility . . . to all areas of innovation.

    Yet. Another. Week.

    They SAY that Big Tech’s a concern . . . that China’s a concern . . . that Alice / Mayo is a concern . . . that the CAFC is a concern . . . yet America hears . . . only crickets.

    Only crickets.

  2. mike June 25, 2021 7:53 pm

    Tillis sent out questions for the record on several subjects, including the prospect of the USPTO issuing “gold-plated patents” presumed valid by courts in exchange for additional examination paid for by the patent owner.

    Then what the fudge are we paying for already? Has there been any statutory change in examination that made today’s patents not presumed valid? Any change?!

    Oh right. There hasn’t been any change in examination. The real change came by the AIA and how it affects the patent AFTER it has already been granted, and now the same office that issues a patent no longer considers it valid (when their unconstitutionally appointed judges review it, mind you).

    Nothing has changed with examination. Patents should already be gold-plated when they leave the office.

    Fix the presumption of validity problem that Congress created on the backend with the AIA, Tillis. This has nothing to do with examination. It has everything to do with the PTAB.

    Plus, what are you trying to do here? Exclude MORE inventors from filing for patents by increasing costs in order to obtain a “gold plated” status that they should already possess upon issuance today?

    What a ridiculous suggestion.

  3. Anon June 26, 2021 9:08 am

    mike – you nailed it.

    The idea of “gold-plated patents” is an abomination of the system we already have and a betrayal of innovators across the board.

    This just seems like a stealthy intrusion of Efficient Infringer Game of Kings by making the patent right subservient to monetary hurdles (of which, the established may use as a competitive advantage as opposed to — you know — using innovation as the competitive advantage).

  4. Paul F Morgan June 26, 2021 10:39 am

    “Gold plated patents” is an academic proposal with many defects. PTO patent examiners do not have the search tools, training or experience for many patent validity issues including on-sale and prior use bars, declaration evaluations, document authentications, several II2 issues, etc. Nor is a purely ex parte proceeding by non attorneys with no or very limited discovery appropriate for deciding in advance that and other patent litigation issues. If its search and examination fees were set high enough even for decent mere patent and publication searches it would rarely be used. Especially since predicting in advance what patents will be widely infringed by others years later, rather than obsolete or not infringed, is difficult.

  5. Josh Malone June 26, 2021 12:00 pm

    The gold plated patent idea has merit. It must come with safeguards to prevent the USPTO from delaying examination while preserving section 145 mandamus rights.

  6. Concerned June 26, 2021 12:46 pm

    The current fees are insulting enough for a process that has judical exceptions added to law, exceptions that are not defined; and rejections that are contrary to the official record and logic.

    Many other areas of commence would refund my fees for such a subpar service. However, I do not think the examiners are incompetent, I think the patent process has already been “gold plated” enough with agendas.

  7. Anon June 26, 2021 2:34 pm

    The link to the DABUS communication makes it but a formality that the underlying issue will not be resolved and instead the “lack of legal personhood” effectively ends the situation.

    Two take-aways with such an unappealing end:

    Hiding behind a technicality means the same process need be engaged if any independent nation decides to give “legal effect” (for example, a ‘mirror’ legal effect such as the juristic personhood enjoyed by non-human corporations) to an AI.

    Questions of joint-inventorship (more likely to be encountered en mass than the DABUS ‘single and total inventor’ situation) remains likewise mired in uncertainty.

    Resolution of the interesting legal questions awaits another day.

  8. Anon June 26, 2021 2:45 pm

    Josh and Paul – do you have a link to more details on the “gold-plating” suggestions?

    All I could find was:

    https://www.ipwatchdog.com/wp-content/uploads/2021/06/6.22.21-Patent-Quality-Act-Hearing-Senator-Tillis-QFRs_Mr.-Garceran.pdf

    And that seems but a throw-away line.

  9. Anon June 26, 2021 3:14 pm

    Without the details, it appears that “gold-plating” was considered a bad re-cycle of an older Lemley attempt at denigrating patents generally (considered a bad retread some 13 years ago):

    http://ipbiz.blogspot.com/2008/11/shame-of-gold-plated-patents.html?m=1

  10. Anon June 26, 2021 4:59 pm

    Another link back to that 2008 era (and quoted in the prior link):

    https://www.patentbaristas.com/archives/2008/11/05/will-the-us-patent-office-see-change-or-more-of-the-same/

    That was indeed an inglorious era with the noted “precipitous drop in allowances,” Dudas, and the Reject Reject Reject = quality false narrative.

  11. American Cowboy June 28, 2021 1:01 pm

    Before the early 1980’s taxpayer money was used to pay for most of the cost of examination, with a fairly nominal filing fee paid by the applicant. Perhaps it is time for the government to quit wasting money on the gazillions of other things it does and put some taxpayer resources into patent examination, so they could say that the patent is gold-plated without soaking the little guy again.

  12. Jacek June 28, 2021 3:15 pm

    “Gold-plated patents” presumed valid by courts in exchange for additional examination paid for by the patent owner.”

    It goes in one direction. It means that whoever can afford the additional fees (Big tech) will have special patents immune to PTAB and courts.

    What about Democracy and equal rights guaranteed by the US constitution. O may. I forget the US constitution is just a propaganda tool since we have so many contradicting laws. Like for example, “Civil forfeiture” law, where a police officer on the street can steal your car or any other possessions like a house without even pretending that you are guilty of anything with the only justification that the way you acquired the thing is suspicious.
    Can we even pretend to be a democracy?

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