Other Barks & Bites for Friday, October 8: Tillis Sends Letter to USTR on TRIPS Waiver for Copyright, SCOTUS Seeks Solicitor General Brief on PersonalWeb’s Cert Petition, and CAFC Rules NDA Forum Selection Clause Doesn’t Preclude IPR Petitions

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

Bark (noun): peripheral noise worth your attention.

https://depositphotos.com/220243566/stock-photo-retriever-dog-cap-eyeglasses-holding.htmlThis week in Other Barks & Bites: the Second Circuit affirms an attorneys’ fee award to Spanish Broadcasting System after finding that key plaintiff witness was “basically making up his testimony”; Circuit Judge Reyna calls out the Federal Circuit’s Section 101 analysis under Alice; Senator Tillis renews call to end U.S. support of TRIPS waiver after calls to extend waiver to copyright; Circuit Judge Newman dissents from a Federal Circuit panel majority’s decision that a forum selection clause in a non-disclosure agreement did not prevent Samsung from challenging patent validity in inter partes review (IPR) proceedings; Moderna announces its plans to invest $500 million in building a vaccine manufacturing facility in Africa; the Copyright Office starts a crowdsourcing campaign to digitally transcribe 95,000 title pages from works registered during the Office’s first century of existence; and the U.S. Supreme Court invites the Solicitor General to file a brief on PersonalWeb’s petition for writ challenging the Federal Circuit’s application of Kessler v. Eldred to create patent-specific preclusion doctrine.


Senator Tillis Renews Call on USTR Tai to Abandon TRIPS Waiver – On Thursday, October 7, Senator Thom Tillis (R-NC) sent a letter addressed to U.S. Trade Representative Katherine Tai reiterating previous calls by Tillis and other members of Congress upon the Biden Administration to “abandon [the] disastrous and ill-conceived waiver” of intellectual property obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Tillis’ recent letter was prompted by recent calls from open-content organizations to extend the TRIPS waiver to copyright and other IP rights covering COVID-19-related technologies. 

CAFC Rules Forum Selection Clause in NDA Doesn’t Foreclose IPRs Over Newman Dissent – On Thursday, October 7, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Kannuu Pty. Ltd. v. Samsung Electronics Co., Ltd. in which the appellate court affirmed the Southern District of New York’s refusal of a permanent injunction preventing Samsung from challenging Kannuu’s patent claims in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Judge Pauline Newman authored a dissent in which she argued that the forum selection clause in a non-disclosure agreement (NDA) between Kannuu and Samsung controlled the forum for patent-related issues arising under the NDA despite the absence of a patent license between the parties.

Second Circuit Affirms Attorneys’ Fees for Frivolous Copyright Claims Against SBS – On Tuesday, October 5, the U.S. Court of Appeals for the Second Circuit issued a decision in Latin American Music Company, Inc. v. Spanish Broadcasting System, Inc. in which the appellate court affirmed an award of attorneys’ fees and costs to Spanish Broadcasting System (SBS). The Second Circuit found that the record supported the district court’s finding that the plaintiff’s sole testifying witness, who alleged that he heard SBS radio stations play songs whose copyrights were owned by the plaintiff, was “basically making up his testimony as he went along.”

Third Circuit Reverses Denial of Attorneys’ Fees in Trademark Case Over Improper Analysis – On Tuesday, October 5, the U.S. Court of Appeals for the Third Circuit issued a decision in Wholesale Fireworks, Corp. v. Wholesale Fireworks Enterprises, LLC in which the appellate court reversed a district court’s denial of attorneys’ fees in a trademark case voluntarily dismissed by the plaintiff partway through discovery. The Second Circuit found that the lower court misapplied the test for attorneys’ fees under the Lanham Act by failing to consider whether an unusual discrepancy existed between the merits of the winning and losing parties’ positions.

CAFC Rules That Design Patent Claims are Limited to Claimed Article of Manufacture – On Monday, October 4, the Federal Circuit issued a precedential decision in In re: SurgiSil, L.L.P. in which the appellate court reversed the PTAB’s affirmation of an examiner rejection of design patent claims covering the ornamental design for a lip implant. The Federal Circuit determined that the PTAB erred as a matter of law in rejecting SurgiSil’s claimed design in light of prior art covering the ornamental design of a stump, a drawing tool used for blending lines in charcoal art, holding that “[a] design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.”

SCOTUS Seeks SG’s Views on Granting Petition for Certiorari in Infringement Claim Preclusion Case – On Monday, October 4, the U.S. Supreme Court invited Acting Solicitor General Brian H. Fletcher to file a brief reflecting the government’s views on whether the Court should grant a petition for writ of certiorari to take up PersonalWeb Technologies’ appeal of a Federal Circuit decision affirming that PersonalWeb was precluded from asserting patent infringement claims against several of Amazon’s customers after PersonalWeb had voluntarily dismissed an earlier case against Amazon involving the same patent claims. The petition asks whether the Federal Circuit was correct in holding that the Supreme Court’s 1907 decision in Kessler v. Eldred created a freestanding preclusion doctrine for patent cases that applies where traditional claim and issue preclusion do not.

CAFC Affirms Noninfringement Rulings, Moots Appeal in Video Game Networking Case – On Monday, October 4, the Federal Circuit issued a precedential decision in Acceleration Bay LLC v. 2K Sports, Inc. in which the appellate court affirmed the District of Delaware’s summary judgment ruling that the makers of the Grand Theft Auto and 2K Sports video game series did not infringe patent claims covering in-game broadcasting techniques. The Federal Circuit also mooted Acceleration Bay’s appeal regarding non-infringement of claims of two asserted patents as Acceleration Bay failed to challenge each independent ground that the district court relied on in its non-infringement ruling.

CAFC Reverses Section 101 Ineligibility Finding, Reyna Concurrence Calls Out Alice Analysis – On Monday, October 4, the Federal Circuit issued a precedential decision in CosmoKey Solutions GmbH & Co. KG v. DuoSecurity LLC in which the appellate court reversed the District of Delaware’s judgment on the pleadings invalidating CosmoKey’s patent claims covering authentication technologies as patent-ineligible subject matter under Section 101. Circuit Judge Jimmie Reyna penned a concurrence in which, although Judge Reyna agreed that CosmoKey’s claims were patent-eligible, he argued that the panel majority should have found that the claimed improvement to computer technology was patent-eligible at step 1 of the Alice framework instead of step 2.


Copyright Office Starts Crowdsourcing Campaign to Digitize Office’s Early Records – On Thursday, October 7, the U.S. Copyright Office announced that it was launching a crowdsourcing transcription campaign that invites members of the public to help the Office transcribe more than 95,000 title pages from works submitted to the agency for registration from 1790 to 1870.

Western Texas Jury Clears Google of Infringement Charges in Digital Image Patent Case – On Wednesday, October 6, a jury verdict entered in the Western District of Texas found that patent owner Profectus Technology did not prove that Google infringed on asserted patent claims covering mountable picture frame technology for displaying digital images. The jury also found that Google had proved that five challenged patent claims were invalid over asserted prior art.

USPTO Issues Final Rule Implementing Nice Agreement Trademark Classification Changes – On Wednesday, October 6, the U.S. Patent and Trademark Office issued a final rule in the Federal Register incorporating trademark classification changes under the Nice Agreement recently adopted by the World Intellectual Property Organization (WIPO) and going into effect on January 1, 2022.

EUIPO Announces Agency Has Received 1.5 Million Designs – On Tuesday, October 5, the European Union Intellectual Property Office (EUIPO) announced that it had received its 1.5 millionth design application filing in the agency’s history, more than 320,000 of which have been filed by entities from top-ranked Germany.

USPTO Requests Public Comments on Matters Related to First Inventor to File  – On Tuesday, October 5, the USPTO issued a request for comment in the Federal Register opening a 60-day comment period inviting comments on matters related to the America Invents Act’s (AIA) transition of the U.S. patent system from first to invent to first to file, especially regarding information that the USPTO should collect in order to determine whether certain patent applications should be examined under pre-AIA first to invent rules.

USITC Finds Section 337 Violation Involving In-Ear Speaker Components – On Monday, October 4, the U.S. International Trade Commission voted to affirm an administrative law judge’s (ALJ) finding of a Section 337 violation of balanced armature devices for in-ear speakers imported into the U.S. for sale by Bellspring and Chinese national Liang Li in violation of intellectual property rights asserted by micro-acoustic electronics firm Knowles Corporation.

WIPO Assemblies Get Underway in Geneva – On Monday, October 4, WIPO Director General Daren Tang spoke at the opening of the WIPO Assemblies, a week-long convention of various standing and advisory committees on IP issues, discussing the resiliency of global innovation during the COVID-19 pandemic and reiterating his administration’s priority on improving access to the global IP system to women, small- and medium-sized businesses and other traditionally underrepresented groups.

Ericsson Seeks Declaratory Judgment that SEP Licensing Offer to Apple Complies With FRAND – On Monday, October 4, Swedish telecommunication firm Ericsson filed a complaint for declaratory judgment in the Eastern District of Texas seeking a declaration that its licensing offers to consumer tech giant Apple for standard-essential patent (SEP) claims covering 5G mobile technologies complies with Ericsson’s fair, reasonable and non-discriminatory (FRAND) licensing obligations imposed by the European Telecommunications Standards Institute (ETSI).

This Week on Wall Street

Samsung Announces 28% YOY Increase in Operating Profit, Still Misses Analyst Forecast – On Friday, October 8, South Korean consumer electronics conglomerate Samsung Electronics issued quarterly earnings showing that the company earned 15.8 trillion won ($13.26 billion USD) in operating profits for the recent quarter, a year-over-year increase of 28%  over the same period in 2020, although Samsung missed on financial analysts expectations of 16.1 trillion won ($13.49 billion USD) in quarterly profits.

Moderna Announces Plans to Build Vaccine Factory in Africa – On Thursday, October 7, Cambridge, MA-based biotech firm Moderna announced that it plans to invest about $500 million to build a vaccine manufacturing facility on the African continent that will produce up to 500 million vaccine doses each year to combat vaccine shortages in Africa for COVID-19, Zika and other viral pathogens spreading on the continent.

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: None
  • Thursday: Bank of America Corp. (108th); Taiwan Semiconductor Manufacturing Co. (9th); Wells Fargo & Co. (t-173rd)
  • Friday: None


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