Other Barks & Bites for Friday, July 9: Biden Order Targets IP Industry Practices, German Constitutional Court Nixes Challenge to Unified Patent Court and Google Faces New Antitrust Suit Over App Store Practices

This week in Other Barks & Bites: a Fact Sheet announcing a Biden Administration Executive Order on competition policy includes measures aimed at cracking down on perceived anti-competitive practices across a number of IP industries; the attorneys general of 36 states and the District of Columbia file an antitrust suit against Google over its practices surrounding the Google Play Store; the EU’s highest court rules that sound marks must cause consumers to recall the commercial origin of a product to be registered as a trademark; the Ninth Circuit issues a divided opinion on whether trademark claims between family members within an Indian incense enterprise must be settled through arbitration; the USPTO launches a patent eligibility study after a request from several U.S. Senators; Softbank pays $1.6 billion USD for the perpetual rights to Yahoo’s branding and technology in Japan; and the Federal Circuit grants another writ of mandamus transferring another Ikorongo patent suit out of Western Texas and into Northern California.

Bites

Biden Issues Executive Order Targeting Big Tech, Pharma and Other IP Industry Practices – President Joe Biden on July 9 announced that he will issue an “Executive Order on Promoting Competition in the American Economy” that will in part encourage leading antitrust agencies to focus enforcement efforts on Big Tech and pharmaceutical companies’ practices, such as unfair methods of competition on internet marketplaces and so-called pay-for-delay settlement agreements between brand pharmaceutical companies and generics manufacturers. The announcement explains: “For decades, corporate consolidation has been accelerating. In over 75% of U.S. industries, a smaller number of large companies now control more of the business than they did twenty years ago. This is true across healthcare, financial services, agriculture and more.”

The order also encourages the Federal Trade Commission to “limit powerful equipment manufacturers from restricting people’s ability to use independent repair shops or do DIY repairs—such as when tractor companies block farmers from repairing their own tractors,” a directive that Re:Create in a statement said “will deliver direct benefits to consumers, researchers and innovation, and demonstrates the value [the Administration] places on pro-consumer policies. The idea that copyright law can be abused to prevent Americans from doing perfectly legal activities shows the breadth and damage that can happen if left unchecked while powerful industries fight to prevent consumers from repairing their stuff.”

Letter from Senators Spurs USPTO Patent Eligibility Jurisprudence Study – On Friday, July 9, the U.S. Patent and Trademark Office issued a request for information in the Federal Register seeking public comments on the state of patent eligibility jurisprudence in the U.S., particularly in areas such as artificial intelligence, diagnostic methods and pharmaceutical treatments, in response to a letter from Senators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE) seeking information on how patent eligibility standards following Alice and Mayo have adversely impacted investment into critical innovations.

German Constitutional Court Nixes Injunction Against Unified Patent Court – On Friday, July 9, the German Federal Constitutional Court in Karlsruhe dismissed a suit seeking injunctive relief against a law passed last year by Germany’s legislature to enact provisions of a 2013 agreement designed to create a Unified Patent Court for unified patent grants and infringement proceedings across the EU after the German court determined that the plaintiffs did not show that Germany’s constitutional right to self-determination would be violated by the court. 

Copyright Office Issues Report on Best Practices for Unclaimed Royalties Under MMA – On Thursday, July 8, the U.S. Copyright Office released an unclaimed royalties study that the agency was directed to complete under the provisions of the Music Modernization Act (MMA), informing the public of best practices to be used by the Mechanical Licensing Collective (MLC) for identifying and locating individuals who have not claimed royalties collected by the MLC under blanket licenses administered by the MLC to streaming music services.

CJEU Rules That Sound Marks Must Recall Commercial Origin For Registration – On Wednesday, July 7, the Court of Justice for the European Union (CJEU) issued its first ruling on an application for the registration of a sound mark submitted in audio format to the European Union Intellectual Property Office (EUIPO), holding that sound marks must have a certain resonance allowing consumers to perceive the commercial origin of the good or service covered by the mark. Applying this finding, the CJEU held that a sound mark consisting of opening a can followed by silence and then fizz sounds lacked distinctiveness necessary for registration in respect to various drinks and metal containers for storage or transport.

CAFC Scratches Head Over Section 101 During Oral Arguments in Appeal Against Facebook – On Wednesday, July 7, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in an appeal by inventor Thaddeus Gabara, whose patent claims asserted against Facebook were invalidated by the district court under Section 101, in which Chief Judge Kimberly Moore and Circuit Judge Jimmie Reyna both raised questions as to whether Gabara’s map display via smartphone patents could be revived under the current state of Section 101 jurisprudence.

Thirty-Six State AGs File Antitrust Suit Against Google’s App Store Practices – On Wednesday, July 7, a bipartisan coalition of attorneys general from 36 states and the District of Columbia filed a lawsuit in the Northern District of California alleging antitrust violations committed by Google in order to maintain a monopoly over the distribution of apps on the company’s Android mobile operating system, including collusion with Samsung and Amazon to ensure that their app stores did not compete with the Google Play Store.

Divided Ninth Circuit Panel Affirms Denial of Motion to Compel Arbitration in Incense Trademark Case – On Wednesday, July 7, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Setty v. Shrinivas Sugandhalaya LLP in which the appellate court affirmed a lower court’s decision to deny a motion to compel arbitration after finding that the trademark claims brought between family members signing a partnership deed in 1999 to carry on their father’s Indian incense business did not arise from the 1999 deed containing the asserted arbitration clause. Circuit Judge Carlos Bea wrote in dissent to argue that the case should be remanded for for an appropriate choice of law analysis to find whether the arbitration agreement is governed by the Federal Arbitration Act (FAA) or the Convention on the Recognition and Enforcement of Foreign Arbitral Awards (New York Convention).

USPTO Issues NPRM to Implement WIPO Technical Standard on Nucleotide, Amino Acid Sequences – On Tuesday, July 6, the USPTO issued a notice of proposed rulemaking in the Federal Register that would revise the agency’s rules of practice requiring those filing patent applications listing nucleotide or amino acid sequences to submit single sequence listings in eXtensible Mark-up Language (XML) in order to implement a new technical standard developed by the World Intellectual Property Office (WIPO) for the standardization of patent filings listing biological sequence data.

Barks

CAFC Grants Another Writ of Mandamus in Ikorongo Patent Suit Filed in Western Texas – On Thursday, July 8, the U.S. Court of Appeals for the Federal Circuit issued a decision in In re: Uber Technologies in which the appellate court granted a petition for writ of mandamus to transfer another patent infringement proceeding filed by Ikorongo out of the Western District of Texas and into the Northern District of California under circumstances similar to an appeal of another Ikorongo suit against Samsung which the Federal Circuit granted mandamus to transfer after U.S. District Judge Alan D. Albright rejected such a motion due to Ikorongo’s contractual obligations to only assert the infringed patent claims within Texas. 

CAFC Nixes Ralph Lauren Appeal That PTAB Failed to Consider Reply Brief Arguments – On Wednesday, July 7, the Federal Circuit issued a decision in Ralph Lauren Corp. v. Hirshfeld in which the appellate court affirmed findings by the Patent Trial and Appeal Board (PTAB) that Ralph Lauren had failed to prove obviousness of patent claims challenged in two inter partes review (IPR) petitions, declining arguments on prior art that were raised for the first time in Ralph Lauren’s reply briefs.

Second Circuit Affirms Copyright Infringement Ruling Over “Mafietta” Film – On Wednesday, July 7, the U.S. Court of Appeals for the Second Circuit issued a ruling in Brooks v. Dash in which the appellate court affirmed a district court ruling that director Damon Dash infringed copyright owned by screenwriter Edwyna Brooks from making unauthorized sales of the 2016 film Mafietta: Rise of a Female Boss on iTunes and on Dame Dash Studios’ website.

Stryker Settles Infringement Suit Over Patient-Specific Implants for $15M – On Wednesday, July 7, customized knee and hip replacement firm Conformis filed a Form 8-K with the U.S. Securities and Exchange Commission in which the company disclosed that it had reached a settlement with medical device firms Stryker Corporation, Wright Medical Technology and Tornier that will pay $15 million to Conformis to end litigation involving patent claims covering patient-specific instrument and implant systems.

Judge Kronstadt Orders Private Mediation in “Cold Steel” Axe Throwing Trademark Case – On Wednesday, July 7, U.S. District Judge John A. Kronstadt of the Central District of California entered an order telling both the World Axe Throwing League (WATL) and axe maker Cold Steel to enter private mediation to settle WATL’s claims that Cold Steel has been marketing throwing axes as “WATL-complaint” without any authorization from the league.

USPTO Updates Patent Assignment and Examination Research Datasets – On Wednesday, July 7, the USPTO announced that it had updated both its Patent Assignment Dataset, which now contains data on 8.97 million assignments and transactions recorded since 1970, and its Patent Examination Research Dataset (PatEx), which now contains data on 16.5 million U.S. and Patent Cooperation Treaty (PCT) patent applications filed at the agency through 2021.

Major Film, TV Studios File Copyright Suit Against Unauthorized Streaming Services – On Tuesday, July 6, a series of film and television studios including Amazon Content Services, Columbia Pictures, Warner Bros. Entertainment and Netflix Studios filed a copyright and breach of contract lawsuit in the Central District of California against Jason Tusa, operator of several Internet protocol television (IPTV) services providing unauthorized content streams despite a previous settlement agreement with Tusa forbidding him from launching such services.

Crocs Complaint Spurs Section 337 Investigation at USITC Against Skechers, Hobby Lobby – On Tuesday, July 6, the U.S. International Trade Commission announced that it had decided to institute a Section 337 investigation into certain casual footwear and packaging thereof based on a complaint for trademark infringement filed by Crocs against a series of 23 respondents including Skechers USA and Hobby Lobby Stores.

This Week on Wall Street

Facebook’s App Head Hired by Instacart to Serve as CEO – On Thursday, July 8, grocery delivery app Instacart announced that it had hired Fidji Simo, previously Facebook’s head of the social media giant’s flagship app, to serve as Instacart’s CEO, taking the reins from the company’s founder Apoorva Mehta in early August.

Softbank Subsidiary Buys Yahoo’s Japanese Trademark and Technology Rights for $1.6B – On Monday, July 6, Internet business Z Holdings Corp., a subsidiary of Japanese tech conglomerate SoftBank, announced that it had agreed to purchase the rights to the branding and technology of Yahoo web services for use in Japan in perpetuity from Verizon Communications for 178.5 billion yen ($1.61 billion USD).

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: Bank of America Corp. (108th); Wells Fargo & Co. (t-173rd)
• Thursday: Taiwan Semiconductor Manufacturing Co. (9th)
• Friday: Telefonaktiebolaget LM Ericsson (29th)