Other Barks & Bites for Friday, October 15: TRIPS IP Waiver Negotiations Heat Up, CAFC Finds No Due Process Violations in Mobility Workx, and the Copyright Office Will Study Copyright Protections for News Publishers

https://depositphotos.com/182060190/stock-photo-dog-reading-newspaper-on-a.htmlThis week in Other Barks & Bites: the U.S. Copyright Office announces that it will study the current state of copyright protections for news content; the Ninth Circuit affirms the dismissal of copyright claims against The Weeknd over the 2016 release of “A Lonely Night”; the Sixth Circuit finds that laches are not available to Honeywell as an equitable defense against claims that its online sales of MAX-branded earplugs violates a 1995 consent decree; news reports indicate that negotiations between the EU and South Africa on the proposed TRIPS IP waiver for COVID-19 vaccines have been increasing in recent days; the USPTO issues a final rule on high-capacity physical media submissions for determining patentability of amino acid sequences and computer program information; the U.S. Supreme Court approves the Solicitor General’s request to participate in oral arguments for Unicolors v. H&M; and a Federal Circuit panel majority nixes due process arguments raised by Mobility Workx regarding bias in IPR proceedings at the PTAB.


Negotiations on TRIPS IP Waiver for COVID-19 Heat Up – On Thursday, October 14, news reports indicated that officials from the European Union and South Africa had intensified their discussions to negotiate a compromise that would potentially break the deadlock on approving a waiver of intellectual property (IP) right obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) at the World Trade Organization (WTO). That same day, WTO Director-General Ngozi Okonjo-Iweala gave public remarks indicating that a “pragmatic compromise” to move forward a TRIPS waiver on IP rights covering COVID-19 vaccines was possible.

CAFC Affirms Exceptionality Determination in Hydraulic Fracturing Patent Case – On Thursday, October 14, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Energy Heating, LLC v. Heat On-The-Fly, LLC in which the Federal Circuit affirmed the District of North Dakota’s determination on remand that Heat On-The-Fly’s litigation conduct qualified the suit as an “exceptional case” under 35 U.S.C. § 285 for purposes of awarding attorneys’ fees. The Federal Circuit found that the district court did not abuse its discretion in crediting the jury’s determination of bad faith despite finding no deceit under state law tort claims, and that the district court was not required to weigh factual findings purportedly underlying its previous denial of attorneys’ fees as that order was later vacated on appeal.

CAFC Nixes Due Process Arguments in Mobility Workx Over Judge Newman Dissent – On Wednesday, October 13, the Federal Circuit issued a precedential decision in Mobility Workx, LLC v. Unified Patents, LLC in which the appellate court, while it ultimately remanded the inter partes review (IPR) proceeding in question for reconsideration under the Supreme Court’s decision in Arthrex v. Smith & Nephew, dismissed several due process challenges to the IPR system at the Patent Trial and Appeal Board raised by patent owner Mobility Workx. Circuit Judge Pauline Newman dissented from her “colleagues’ endorsement of the status quo,” arguing that due process concerns stem from the combination of investigative and adjudicatory functions at the PTAB, whereas the language of the America Invents Act contemplates that institution decisions are to be made by the Director of the U.S. Patent and Trademark Office.

Supreme Court Approves Solicitor General’s Motion for Participation in Unicolors v. H&M – On Tuesday, October 12, the U.S. Supreme Court issued an order list in which the Court granted a motion filed by the office of the U.S. Solicitor General seeking leave to participate in oral argument as amicus curiae in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. This case will ask the nation’s highest court to decide whether 17 U.S.C. § 411(b)(1), which was enacted as part of the Prioritizing Resources and Organization for Intellectual Property (PRO IP) Act of 2008, includes an intent-to-defraud requirement which requires proving that a copyright applicant had knowledge that an application included inaccurate information prior to ruling that the copyright registration is invalid.

Copyright Office Announces Study to Evaluate Copyright Protections for News Publishers – On Tuesday, October 12, the U.S. Copyright Office filed a notice of inquiry in the Federal Register announcing that the agency would be conducting a study to evaluate the current state of copyright protections for the publication of news content and whether it would be desirable to create additional protections like those that have been implemented recently through legal developments in the European Union and Australia.

CAFC Affirms Traxcell Noninfringement Findings Under Prosecution History Estoppel – On Tuesday, October 12, the Federal Circuit issued a pair of precedential decisions affirming rulings by the Eastern District of Texas that telecom firms Nokia, Sprint and Verizon did not infringe upon patent claims asserted by location monitoring firm Traxcell Technologies. In both decisions, the Federal Circuit cited arguments made by Traxcell to distinguish its self-optimizing network (SON) technology from prior art inventions such that Traxcell couldn’t maintain its infringement theories based on systems using multiple computers to implement the SON technology.

Sixth Circuit Finds No Laches Available for Honeywell in Trademark Consent Decree Case – On Friday, October 8, the U.S. Court of Appeals for the Sixth Circuit issued a decision in McKeon Products, Inc. v. Leight in which the appellate court affirmed a district court’s ruling that laches was not available as an equitable defense to Leight’s online sales of MAX-branded earplugs via Amazon in violation of a 1995 consent decree approving a trademark settlement between Leight and McKeon Products, which confined Leight’s sales of MAX-branded earplugs to the industrial safety market.

Fifth Circuit Says Substantial Similarity in Children’s Pajamas Survives Motion to Dismiss – On Friday, October 8, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Cat and Dogma, LLC v. Target Corp. in which the appellate court reversed and remanded a district court’s grant of a motion to dismiss copyright claims over children’s bedding and garments marketed by Target, finding substantial similarity in its use of printed words reminiscent of a cursive “i love you” design covered by a copyright registration owned by Cat and Dogma.


USPTO Issues Final Rule on High-Capacity Physical Media Submissions – On Thursday, October 14, the U.S. Patent and Trademark Office issued a final rule in the Federal Register regarding high-capacity physical media submissions of plain text formatted data when such data submissions exceed the capacity of the agency’s electronic filing system, as happens with amino acid sequencing or computer program information needed by patent examiners to determine the patentability of a claimed invention. The rule also enables the use of compressed data files in certain kinds of patent applications.

Nippon Steel Sues Toyota, Baowu Steel for Infringing Electrical Steel Sheet Patent Claims – On Thursday, October 14, major Japanese steel producer Nippon Steel announced that it had filed a lawsuit in Tokyo district court including allegations of patent infringement by Toyota Motors and Chinese steelmaker Baowu Steel Group regarding patent claims covering the use of nonoriented electrical steel sheet, a type of metal with a certain steel composition for use in electrical vehicles.

TTAB Rules That “Republic of London” is Fictitious, Not Primarily Misdescriptive – On Thursday, October 14, the Trademark Trial and Appeal Board (TTAB) issued a precedential decision in In re Sibony in which the TTAB reversed a trademark examiner’s rejection of an application for the standard character mark “Republic of London,” finding that the claimed mark referenced a fictitious place and was thus not unregistrable for being primarily geographically misdescriptive under 15 U.S.C. § 1052(e)(3).

Copyright Suit Over Embedded Polar Bear Photo is Dismissed Voluntarily – On Wednesday, October 13, Canadian photographer Paul Nicklen filed a joint stipulation of dismissal, along with telecommunications conglomerate Sinclair Broadcast Group and several of subsidiaries, ending a Southern District of New York copyright case filed by Nicklen over the Sinclair companies’ use of a photo of polar bears captured by Nicklen and embedded in an online news article.

Starz Entertainment Seeks Noninfringement DJ on Content Management Patent Claims – On Wednesday, October 13, television network provider Starz Entertainment filed a complaint in the District of Delaware seeking a declaratory judgment that it does not infringe on a series of four patents covering content management technologies that have been the subject of infringement discussions prompted by professional IP services company VideoLabs.

P&G File Motion to Dismiss Copyright Claims Over Common Note Progression in TV Ads – On Wednesday, October 13, American consumer goods company Procter & Gamble filed a motion to dismiss a copyright case in the Northern District of New York, arguing that the five-note progression used at the end of its television commercials is too common to give rise to liability for copyright claims filed by Cameron Cates, an individual who claims that the jingle copies his 1982 composition “She Loves Her Job.”

Xperi Licenses DBI Hybrid Bonding Semiconductor Technology to Yangtze Memory – On Tuesday, October 12, memory technology firm Xperi Holding Corp. announced that it had licensed a portfolio of patents covering Direct Bond Interconnect (DBI) hybrid bonding technology, which enhances semiconductor device performance while reducing size and cost, to Chinese memory chip manufacturer Yangtze Memory Technology.

Ninth Circuit Affirms Copyright Victory for The Weeknd Over “A Lonely Night” – On Friday, October 8, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Clover v. Tesfaye in which the appellate court affirmed a lower court’s dismissal of copyright claims filed against Tesfaye, a musician performing under the stage name The Weeknd, after finding that Clover never showed a reasonable possibility that Tesfaye could access Clover’s single “I Need To Love,” which was never released to the public, nor that The Weeknd’s 2016 release “A Lonely Night” bore striking similarity to Clover’s work. 

This Week on Wall Street

GitLab Closes First Day of Trading 35% Ahead of IPO – On Thursday, October 14, software developer tool provider GitLab saw shares of its stock close at $103.89 per share, a 35 percent increase over the company’s initial valuation of $77 per share at the opening of the company’s initial public offering (IPO) that day.

Chinese Tech Crackdown Prompts Microsoft to Shutter LinkedIn China – On Thursday, October 14, Microsoft subsidiary and career social networking platform LinkedIn announced in an official blog post that it would sunset the localized version of its social network later this year, becoming the latest major tech firm to move operations away from China as that country’s government continues to engage in a legal crackdown against many of the nation’s top tech firms.

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: Koninklijke Philips NV (48th)
  • Tuesday: Halliburton Co. (57th); Intuitive Surgical, Inc. (240th); Johnson & Johnson (24th); The Procter & Gamble Co. (77th); Telefonaktiebolaget LM Ericsson (29th)
  • Wednesday: Abbott Laboratories (127th); ASML Holding NV (t-151st); Baker Hughes Co. (86th); International Business Machines (1st); Verizon Communications Inc. (67th)
  • Thursday: AT&T Inc. (27th); Intel Corp. (5th); SAP SE (63rd); Snap Inc. (t-241st); Whirlpool Corp. (t-153rd)
  • Friday: Schlumberger NV (79th); Seagate Technology plc (147th)


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