Bite (noun): more meaty news to sink your teeth into.
Bark (noun): peripheral noise worth your attention.
This week in Other Barks & Bites: Senator Tillis tells Becerra not to fall for march-in rights petitions; the U.S. Supreme Court asks the Solicitor General to brief the court on the views of the U.S. federal government regarding the Article III standing issues in Apple v. Qualcomm; Sen. Grassley asks DHS Secretary Mayorkas to dispel concerns that the OPT STEM program is expanding beyond its original mission of aiding the U.S. high tech workforce; the United States remains top ranked in the Global IP Index despite ongoing issues regarding the certainty of patent validity under current U.S. law; the Supreme Court sides with Unicolors in ruling that its innocent mistake of law in filing a copyright registration does not require the district court to inquire about the registration’s validity with the Register of Copyrights; Alibaba posts its slowest year-over-year quarterly revenue growth since its initial public offering in 2014; Ireland’s highest court refers questions to the European Court of Justice seeking clarification to rules around extending market exclusivity for certain medicines past patent expiry; and the General Court of the European Union dismissed an appeal from the government of Andorra after finding that “ANDORRA” would likely be perceived as a geographical indication and not a trademark.
Tillis Sends Letter on March-In Rights to Becerra – Senator Thom Tillis (R-NC) sent a letter on Thursday to Secretary of the Department of Health and Human Services, Xavier Becerra, asking him to reject petitions from “certain Congressional colleagues to misuse the government’s march-in rights.” Tillis called such a policy “toxic to America’s biopharmaceutical innovation” and said it is not a solution to the complex problem of drug pricing. The letter added: “As policymakers, we want private industry to save American taxpayers money by commercializing and applying academic research. This commercializing ultimately benefits the public by allowing them to utilize the applications of this research and investment. But, if you were to use march-in rights in this context, it would create and add an unnecessary element of risk to the development of biopharmaceuticals, all of which would cause private firms to be reluctant to invest in the development of such products.”
SCOTUS Reverses Ninth Circuit, Excuses Mistakes of Either Fact or Law in Copyright Registrations – On Thursday, February 24, the U.S. Supreme Court handed down a decision in Unicolors, Inc. v. Hennes & Mauritz, L.P. in which the nation’s highest court ruled that 17 U.S.C. § 411(b), which governs requirements that certificates of copyright registration must meet prior to the filing of a civil action for copyright infringement, does not distinguish between mistakes of either fact or law. In so holding, the Court reversed a ruling from the U.S. Court of Appeals for the Ninth Circuit, which had held that a mistake of law in Unicolors’ copyright registration covering 31 fabric designs in a single registration required the district court to ask the Register of Copyrights if the registration would have been refused due to the mistake, regardless of Unicolors’ lack of knowledge that it had committed a mistake of law.
U.S. Ranks First in GIPC IP Index Despite Continuing “Degree of Uncertainty” in Patent Law – On Thursday, February 24, the U.S. Chamber of Commerce’s Global Innovation Policy Center (GIPC) released the 10th annual edition of its Global IP Index, showing that the United States continues to fill the top spot among all nations in terms of the state of the nation’s IP environment and protections for various forms of IP rights. Despite the strong showing, the IP Index noted that U.S. patent owners continue to face a “degree of uncertainty” regarding patent claims that will be upheld as valid in the face of growing invalidity challenges in U.S. federal courts and at the Patent Trial and Appeal Board (PTAB).
EGC Rules Public Likely to Perceive “ANDORRA” as Origin Indicator, Not Trademark – On Wednesday, February 23, the General Court of the European Union (EGC) issued a ruling dismissing an action brought by the Government of the Principality of Andorra challenging the European Union Intellectual Property Office’s (EUIPO) rejection of a trademark application covering the figurative sign mark “ANDORRA” for several goods and services. The EGC ruled that members of the public were likely to perceive the mark as an indicator of the geographical origin of the goods and services in question instead of a trademark specifying a commercial origin of the goods and services.
Eighth Circuit Reverses Preliminary Injunction for Breach of Roof Tile Patent License – On Wednesday, February 23, the U.S. Court of Appeals for the Eighth Circuit issued a decision in Wildhawk Investments, LLC v. Brava I.P., LLC in which the appellate court reversed a district court’s entry of a preliminary injunction preventing Brava from producing patented composite roof shingles in violation of an exclusive licensing agreement with Wildhawk for producing the shingles. The Eighth Circuit found that the district court abused its discretion in finding that Wildhawk was not estopped from asserting breach of the license agreement after Wildhawk misrepresented its understanding of a right of first refusal arrangement regarding new composite roof shingles developed by Brava.
SCOTUS Invites Solicitor General’s Views on Standing Issues in Apple v. Qualcomm – On Tuesday, February 22, the U.S. Supreme Court issued an order list which included an invitation for the Solicitor General to file a brief reflecting the views of the U.S. federal government on whether the nation’s highest court should grant a writ of certiorari to take up Apple v. Qualcomm. The appeal from the Federal Circuit asks SCOTUS to reconsider the appellate court’s ruling that Apple’s patent licensing agreement with Qualcomm extinguished Apple’s Article III standing to pursue an appeal of unsuccessful validity trials at the Patent Trial and Appeal Board (PTAB) to federal court.
Ireland Supreme Court Refers Drug Patent Question to EU Court of Justice – On Monday, February 21, the Supreme Court of Ireland referred a series of questions to the European Court of Justice asking the EU high court to issue a ruling to clarify the interaction of certain provisions regulating supplementary protection certificates (SPCs), which extends patent protection past the date of expiration. The case involves claims by Irish pharmaceutical firm Clonmel Healthcare that a SPC held by American rival Merck Sharp & Dohme covering its cholesterol treatment Inegy was either invalid or didn’t cover the combination drug treatment marketed by Clonmel.
Jim Olive Reply Brief Reiterates That GVR for Copyright Claims is Proper Under Cedar Point Nursery – On Monday, February 21, copyright owner Jim Olive Photography filed a reply brief at the Supreme Court, arguing that respondent University of Houston System’s response brief in opposition to Jim Olive’s petition for writ of certiorari ignored the Court’s holding in Cedar Point Nursery v. Hassid (2021) that a right to invade property, including the copyright to Jim Olive’s photo of Houston’s skyline republished on the university’s website without permission, constitutes a per se taking that must be compensated by the government under the Fifth Amendment. Jim Olive’s reply brief reiterated that a grant-vacate-remand of its petition by the Supreme Court would be the appropriate vehicle to let the Supreme Court of Texas apply the holding from Cedar Point Nursery.
Sen. Grassley Asks DHS Secretary Mayorkas About Accountability in STEM OPT Program – On Thursday, February 17, Senator Chuck Grassley (R-IA) sent a letter addressed to U.S. Department of Homeland Security Secretary Alejandro Mayorkas expressing concerns that the Optional Practical Training (OPT) program administered by U.S. Immigration and Customs Enforcement (ICE) may be being abused by American colleges and universities that are packaging non-science, technology, engineering and math (STEM) fields into a program only meant to attract foreign students for STEM programs to aid the U.S. tech labor force.
USPTO Extends Comment Period on Info Collections for AIA Trials – On Thursday, February 24, the U.S. Patent and Trademark Office issued a notice in the Federal Register extending by 30 days the period for soliciting public comments regarding the information collected by the agency to petition the PTAB for various America Invents Act trials including inter partes review (IPR), post-grant review (PGR), covered business method (CBM) review and derivation proceedings.
Asia Leads Clarivate’s Top 100 Global Innovators List Thanks to Strong Japan Results – On Wednesday, February 23, innovation lifecycle solutions provider Clarivate issued its Top 100 Global Innovators 2022 ranking showing that Asian firms made up the majority (54) of the top 100 firms ranked by Clarivate in terms of an innovation measurement model looking at global patenting activity and patent citations, with 35 of the top 100 firms coming from Japan.
EUIPO Reports Record Levels of Quality Assurance in Decision Audit – On Wednesday, February 23, the EUIPO announced the results of the agency’s Stakeholder Quality Assurance Panel (SQAP) audit of the compliance of EUIPO decisions with relevant EU statutes, finding a greater than 90 percent compliance rate for agency decisions regarding rejections on absolute grounds, oppositions and registered community design (RCD) invalidity.
Ninth Circuit Reverses 12(b)(6) Dismissal of Copyright Claims Against Apple’s Servant – On Tuesday, February 22, the U.S. Court of Appeals for the Ninth Circuit entered a ruling in Gregorini v. Apple Inc. in which the appellate court reversed a district court’s grant of Apple’s motion to dismiss for failure to state a claim, finding that dismissal was inappropriate at this early stage as reasonable minds could differ on the issue of whether Gregorini’s film The Truth About Emanuel was substantially similar to the M. Night Shyamalan series Servant produced by Apple TV+.
Judge Andrews Dismisses Mobile Device Content Storage Patent Case Under Alice/Mayo – On Tuesday, February 22, U.S. District Judge Richard G. Andrews of the District of Delaware issued a ruling granting remote video platform provider RiversideFM’s motion to dismiss a patent infringement lawsuit filed by rival firm OpenReel, ruling that the mobile device content storage and playback patent claims asserted did not satisfy Section 101 subject matter eligibility under the Alice/Mayo test. Judge Andrews also granted OpenReel’s request to file an amended complaint in the case.
Judge Bryant Enters $776K Damages Award in Baseball Pitching Machine Patent Suit – On Friday, February 18, U.S. District Judge Vanessa L. Bryant of the District of Connecticut entered a damages award following a seven-day bench trial that awarded $776,000 in damages for Sports Tutor’s infringement of baseball pitching machine patents owned by Probatter Sports, which cover methods for creating unpredictable pitch patterns, based on a 3.5 percent royalty derived from Judge Bryant’s hypothetical negotiation analysis.
Ninth Circuit Affirms Trademark Injunction Over Nominative Fair Use Defense – On Friday, February 18, the Ninth Circuit entered a ruling in Neo4j, Inc. v. PureThink, LLC in which the appellate court affirmed a preliminary injunction preventing defendants in a trademark infringement case from using the mark “NEO4J” to market their own graph database management system, finding that the use of the mark to identify defendants’ product as a replacement for the rival Neo4j enterprise-level database management system did not constitute a nominative fair use.
Asian Grocery Supplier Files Trademark Suit Over Infringing Brands Using Japanese Characters – On Friday, February 18, California-based Asian grocery supplier OCM Globe filed a lawsuit in the Central District of California alleging claims of trademark infringement, false designation and unfair competition against a pair of New York firms accused of selling grocery brands that infringe upon brands owned by OCM that incorporate Japanese characters.
This Week on Wall Street
Chinese Economic Headwinds Lead to Slowest Quarterly Revenue Growth for Alibaba – On Thursday, February 24, Chinese e-commerce giant Alibaba reported earnings for the third quarter of its 2022 fiscal year showing that the company’s revenues only grew by 10 percent compared to the same period last year, the slowest such year-over-year revenue growth for Alibaba since it was first publicly listed in 2014.
eBay Hits Earnings Estimates Despite Disappointing Active Annual Buyer Numbers – On Wednesday, February 23, e-commerce company eBay reported earnings for the first quarter of 2021, showing that the company hit analyst expectations by earning $2.61 billion in revenues on the quarter despite a 9 percent reduction in active annual buyers down to 156 million and a 8 percent decline in annual active sellers down to 17 million.
Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2021 are announcing quarterly earnings next week (2020 rank in parentheses):
- Monday: Berkshire Hathaway Inc. (230th); Hewlett-Packard Co. (41st); Nielsen Holdings plc (t-202nd)
- Tuesday: Baidu, Inc. (99th); Bayer AG (84th); Hewlett Packard Enterprise Co. (79th); Salesforce.com, Inc. (73rd)
- Wednesday: None
- Thursday: None
- Friday: None
Image Source: Deposit Photos