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This week in Other Barks & Bites: CAFC grants mandamus to Apple regarding Western District of Texas transfer from Austin to Waco; the Department of Justice’s Jeffrey Wilder remarks at an SEP conference that antitrust is “not the right tool” for licensees dissatisfied with SEP royalty rates; the Ninth Circuit reverses a class certification in a class antitrust action against Qualcomm’s SEP licensing practices because of an improper choice of law analysis; the Second Circuit affirms that Victor Miller was an independent contractor when writing the screenplay for Friday the 13th; the Federal Circuit clarifies its willfulness standard in reinstating a damages award against Cisco, and orders the USPTO to dismiss a petition for ex parte reexamination filed by a serial petitioner of IPRs at the PTAB; Judge Albright dismisses Google and YouTube’s arguments that VideoShare patent claims should be invalidated due to a terminal disclaimer linking the patent-in-suit to two previously invalidated patents; the Unified Patent Court is set to begin hearing EU patent cases by mid-2022 after Germany ratifies jurisdictional protocols; and Merck enters into a $11.5 billion agreement to buy Acceleron Pharma in a bid to stave off the 2028 patent cliff for Keytruda.
Federal Circuit Grants Mandamus to Apple, Orders Albright to Vacate Transfer from Austin to Waco – On Friday, October 1, the U.S. Court of Appeals for the Federal Circuit continued its trend of granting mandamus petitions on transfer motions, ordering the United States District Court for the Western District of Texas to vacate its order transferring a case between Apple, Inc. and Fintiv, Inc. from the Austin Division of the Western District of Texas to the Waco Division. The CAFC said the district court cited no statutory authority for its re-transfer and Austin remains the more convenient forum.
Order Second Circuit Affirms Ruling That Miller Was Independent Contractor for Friday the 13th – On Thursday, September 30, the U.S. Court of Appeals for the Second Circuit issued a ruling in Horror Inc. v. Miller in which the appellate court affirmed a lower court’s summary judgment ruling that Victor Miller, who wrote the screenplay for the classic horror movie Friday the 13th, was an independent contractor while writing the screenplay and is therefore entitled to authorship rights for the movie, for which Miller has filed copyright termination notices to claim authorship.
CAFC Orders USPTO to Dismiss Ex Parte Reexam Petition by Serial IPR Petitioner – On Wednesday, September 29, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in In re: Vivint, Inc. in which the appellate court found that the U.S. Patent and Trademark Office abused its discretion in granting a petition for ex parte reexamination of Vivint patent claims filed by Alarm.com, which had filed a series of three inter partes review to challenge Vivint’s claims at the Patent Trial and Appeal Board (PTAB). Despite raising substantial new questions of patentability, the petition was ordered by the Federal Circuit to be dismissed as the USPTO made a legal error in determining that it lacked authority to terminate an ex parte reexamination.
DOJ’s Wilder: Antitrust “Is Not The Right Tool” For Dissatisfaction Over SEP Royalty Rates – On Wednesday, September 29, Jeffrey Wilder, the U.S. Department of Justice’s Director of Economics for the Antitrust Division, gave prepared remarks at the IAM and GCR Connect SEP Summit in which he said that, while antitrust law may be applicable to deceptive promises of fair, reasonable and non-discriminatory (FRAND) rates for licensing standard-essential patents (SEPs), “[a]ntitrust is not the right tool for licensees who are simply dissatisfied with the rate being offered to them by an SEP holder.” Wilder also clarified the Antitrust Division’s recent relocation of the 2020 supplemental competition advocacy letter to the IEEE, indicating that the Division believed it was more appropriately located on the Division’s comments and advocacy webpage. The DOJ removed the letter from the IEEE’s 2015 business review file this past April.
Ninth Circuit Reverses Class Certification in Qualcomm Antitrust Suit on Erroneous Choice of Law – On Wednesday, September 29, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Stromberg v. Qualcomm Inc. in which the appellate court reversed a district court’s ruling certifying a class of 250 million cellphone purchasers for a class action antitrust suit against Qualcomm’s standard-essential patent (SEP) licensing activities. The Ninth Circuit, deciding a California choice of law question in the antitrust context for the first time, held that the district court had misapplied the three-step governmental interest test for determining predominance of state laws under Federal Rule of Civil Procedure 23(b)(3) by applying California antitrust law, which includes a statute repealing the U.S. Supreme Court’s prohibition against indirect purchaser antitrust claims in Illinois Brick v. Illinois (1977), over other state law covering putative class members and not abrogating Illinois Brick.
Copyright Office Issues NPRM on Copyright Claims Board Initial Claims, Opt-Outs – On Wednesday, September 29, the U.S. Copyright Office issued a notice of proposed rulemaking in the Federal Register that would establish procedures for the initial stages of small claims before the Copyright Claims Board, including initial claim filings, compliance review, service and opt-out procedures, in procedures established by the Copyright Alternative in Small-Claims Enforcement (CASE) Act.
CAFC Clarifies Willfulness Standard, Reinstates Enhanced Damages Award Against Cisco – On Tuesday, September 28, the Federal Circuit issued a precedential decision in SRI International, Inc. v. Cisco Systems, Inc. in which the appellate court reversed the District of Delaware’s refusal to reinstate a jury’s finding that Cisco willfully infringement as well as an award of enhanced damages to SRI International. In so holding, the Federal Circuit clarified that language regarding “wanton, malicious and bad-faith behavior” from the U.S. Supreme Court’s decision in Halo Electronics v. Pulse Electronics refers to conduct warranting enhanced damages, not findings of willfulness.
Eleventh Circuit Affirms No Likelihood of Confusion in Healthprint Trademark Appeal – On Tuesday, September 28, the U.S. Court of Appeals for the Eleventh Circuit issued a ruling in Superior Consulting Services, Inc. v. Shaklee Corp. in which the appellate court affirmed a bench ruling finding for defendant Shaklee in a trademark infringement case brought over Shaklee’s use of the “Healthprint” mark on an online questionnaire to promote Shaklee’s own nutritional supplements, finding no abuse of discretion in the lower court’s decision to deny a jury trial and excluding a survey conducted by Superior’s expert. The Eleventh Circuit also found that, while the lower court erred in its consideration of the similarity of the advertising media, the lower court’s finding of no likelihood of consumer confusion was not clearly erroneous.
UPC to Begin Operations in Mid-2022 After Germany Ratifies Protocols – On Monday, September 27, Germany’s Federal Ministry of Justice and Consumer Protection announced that the nation’s federal government had ratified the protocols necessary to transfer jurisdiction of patent infringement and validity proceedings involving EU patents to the Unified Patent Court, which is expected to begin operations in mid-2022 once the protocols are ratified by two more EU countries in the weeks to come.
TTAB Sustains Opposition to “Dantanna’s” Restaurant Mark for Likelihood of Confusion, Fraudulent Statements – On Thursday, September 30, the Trademark Trial and Appeal Board (TTAB) entered a precedential decision sustaining an opposition to a series of trademark applications covering the word mark “DANTANNA’S” in connection with restaurant services, cancelling one mark for fraudulent statements made by applicant’s counsel regarding other legal proceedings in which the mark was involved, and sustaining the opposition to two others for a likelihood of confusion with the Dan Tana’s Italian restaurant located in West Hollywood, CA.
Judge Albright Dismisses Google’s Terminal Disclaimer Argument Against VideoShare – On Wednesday, September 29, U.S. District Judge Alan D. Albright of the Western District of Texas entered a ruling denying a motion to dismiss filed by Google and YouTube, who had argued that patent claims asserted against them by VideoShare should be invalidated because the patent-in-suit included a terminal disclaimer to two patents that were previously invalidated.
R.J. Reynolds Wins LEO at USITC Excluding Infringing Tobacco Heating Devices – On Wednesday, September 29, the U.S. International Trade Commission announced that it entered limited exclusion and cease-and-desist orders against Philip Morris and Altria after finding violations of Section 337 due to the infringement of patent claims owned by R.J. Reynolds by the importation for sale of tobacco heating devices, including IQOS-branded devices.
USPTO Collecting Public Comments on Quality of Agency Service Delivery – On Monday, September 27, the USPTO issued a notice in the Federal Register announcing that it would be collecting public comments for 30 days regarding qualitative feedback on the delivery of agency services in order to identify strengths and weaknesses of current programs in order to determine changes that can be made to improve those programs and services.
Roblox, NMPA Settle Music Copyright Claims With Licensing Agreement, Open Negotiation Period – On Monday, September 27, the National Music Publishers’ Association (NMPA) and online gaming firm Roblox announced that the two entities agreed to settle copyright litigation surrounding Roblox’s unauthorized use of music in its virtual environments. The settlement agreement includes an opt-in mechanism for NMPA members and an open negotiation period for individual publishers who want to negotiate different terms than the NMPA settlement.
CRB Announces Notice of Intent to Audit iHeartMedia Royalty Payments – On Monday, September 27, the Copyright Royalty Board issued a public notice in the Federal Register indicating that SoundExchange, the sole organization designated by Congress to collect and distribute digital performance royalties, had filed a notice of intent to audit account statements by American media company iHeartMedia for 2018, 2019 and 2020 regarding royalties payable to statutory licenses under 17 U.S.C. § 112 and 17 U.S.C. § 114.
USITC Receives Section 337 Complaint on Composite Baseball, Softball Bats – On Monday, September 27, the USITC announced that it had received a Section 337 complaint from sports apparel manufacturer Easton Diamond Sports asking the agency for a limited exclusion order preventing the importation for sale of certain composite baseball and softball bats by Juno Athletics of Aventura, FL; Monsta Athletics of Calimesa, CA; and Proton Sports of Scottsdale, AZ.
Judge Mahan Says Toy Story 4’s Duke Caboom Character is Not Literal Depiction of Evel Knievel – On Friday, September 23, U.S. District Judge James C. Mahan of the District of Nevada entered a judgment on the pleadings dismissing a trademark infringement case filed by K and K Promotions, which owns intellectual property rights relating to famed American daredevil Evel Knievel, after finding that the character of Duke Caboom from Walt Disney Studios and Pixar’s Toy Story 4 was not a literal depiction of Knievel but rather a transformative use.
This Week on Wall Street
CA DMV Approves Autonomous Vehicle Deployment Permits to Waymo, Cruise – On Thursday, September 30, California’s Department of Motor Vehicles issued autonomous vehicle deployment permits to Alphabet subsidiary Waymo and GM subsidiary Cruise, which puts those companies one step closer to being able to make self-driving cars commercially available on public roads mainly located in San Francisco and San Mateo counties.
Merck to Buy Acceleron for $11.5B in Bid to Avoid 2028 Keytruda Patent Cliff – On Thursday, September 30, American pharmaceutical firm Merck & Co. announced that the company entered into an agreement to buy clinical stage pharmaceutical firm Acceleron Pharma for about $11.5 billion as Merck looks to increase its push into rare disease drug candidates in advance of the loss of patent exclusivity in 2028 for its blockbuster cancer immunotherapy drug Keytruda.
Lordstown Motors Stock Spikes 21% on Deal to Sell Ohio Factory to Foxconn – On Thursday, September 30, shares of Ohio-based automaker Lordstown Motor Corporation spiked by about 21 percent after news reports indicated that sources close to the company believed that Lordstown was nearing a deal to sell its Lordstown, OH manufacturing facility to major Taiwanese electronics contractor Foxconn.
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