Other Barks & Bites for Friday, March 4: Judge Michel Urges SCOTUS to Fix Section 101, CAFC Puts Appellate Bar on Notice of Sanctions for COVID-19 Protocol Violations, and Fifth Circuit Modifies Verdict on Trade Secret Misappropriation

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

Bark (noun): peripheral noise worth your attention.

https://depositphotos.com/10882248/stock-photo-cross-breed-dog-4-years.htmlThis week in Other Barks & Bites: the Senate Judiciary advances the controversial nomination of Gigi Sohn to serve on the FCC; the Fifth Circuit nixes “license-to-all” arguments in an antitrust case brought against an SEP owner refusing to license a components supplier; the Fifth Circuit also modified a district court judgment on trade secret misappropriation to avoid double recovery; the Federal Circuit issues a decision putting the appellate bar on notice that violations of its revised in-person argument protocols will lead to sanctions; Judge Michel and Intertrust both urge the Supreme Court to take up an appeal that would help the Court rein in the Federal Circuit’s expansive application of Alice/Mayo; Sony and Honda sign a memorandum of understanding to collaborate on electric vehicle development; an a copyright case brought by photographers against Instagram for its embedded photo tools is being appealed to the Ninth Circuit.

Bites

Senate Judiciary Advances Sohn’s Nomination to FCC By Tied 14-14 Vote – On Thursday, March 3, the U.S. Senate Committee on the Judiciary advanced the nomination of Gigi Sohn, President Biden’s selection to serve as Commissioner on the Federal Communications Commission (FCC), toward a full vote on the Senate floor by a tied 14-14 vote. Sohn’s nomination process has been contested by Senate Republicans who argue that the former senior staffer to former FCC Chair Tom Wheeler has extreme views on weakening intellectual property protections and regulating broadband Internet like a public utility.

Fifth Circuit Modifies Trade Secret Misappropriation Verdict to Prevent Double Recovery – On Thursday, March 3, the U.S. Court of Appeals for the Fifth Circuit entered a ruling in Thomas v. Hughes in which the appellate court affirmed most of a final judgment following a district court jury verdict finding that Hughes breached her fiduciary duty as an attorney to a client and also misappropriated trade secrets surrounding probiotic supplements for livestock. While the Fifth Circuit found no abuse in discretion in deriving a $1.4 million actual damages award from a previous Texas state court ruling finding Hughes in breach of a licensing agreement covering the supplements, the appellate court modified the district court’s judgment to ensure that no further compensatory damages for trade secret misappropriation are owed if Hughes satisfies the amount due remaining from the Texas state court ruling.

Judge Michel, Intertrust File Amici Briefs Urging SCOTUS to Rein In Section 101 – On Wednesday, March 2, amicus briefs supporting Universal Secure Registry’s petition for writ of certiorari at the U.S. Supreme Court, asking the Court to take up an appeal from the Federal Circuit’s invalidation of patent claims covering secure electronic payments without exposing a credit card number, were filed by both former Federal Circuit Chief Judge Paul Michel and computing R&D firm Intertrust Technologies Corporation. In both briefs, amici urge the Supreme Court to grant the appeal in order to enter a ruling that reins in the Federal Circuit’s overly expansive application of the Alice/Mayo framework and bring more reliability to Section 101 subject matter eligibility.

Ninth Circuit Affirms Contempt Order in Trademark Case Over Judge Baker Dissent – On Wednesday, March 2, the U.S. Court of Appeals for the Ninth Circuit entered a ruling in Just Goods, Inc. v. Eat Just, Inc. in which the appellate court affirmed the district court’s entry of a district court’s order holding Eat Just in contempt for violating a settlement agreement extinguishing trademark infringement claims by capitalizing the trademark “JUST” and using it in certain ways prohibited by the agreement. The Honorable M. Miller Baker, Judge for the U.S. Court of International Trade sitting by designation, authored a dissent in which he found that, while the stand-alone use of “JUST” violated the settlement agreement, the appellate majority improperly applied the California variant of ejusdem generis in construing the language of the settlement agreement and ignored inconsistencies present throughout the agreement.

CAFC Affirms $6 Million Penalty for Violating Consent Order on Invalidated Patent Claims – On Tuesday, March 1, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in DBN Holding, Inc. v. International Trade Commission in which the appellate court affirmed a $6.2 million penalty imposed by the USITC over DBN Holding’s violation of a consent order prohibiting the company from importing two-way global satellite communications devices that infringed upon patent claims asserted against DBN in Section 337 proceedings at the USITC, but which were subsequently invalidated in the Eastern District of Virginia before the invalidation was affirmed by the Federal Circuit.

Fifth Circuit Nixes Article III Standing for Continental in SEP Antitrust Case – On Monday, February 28, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Continental Automotive Systems, Inc. v. Avanci, L.L.C. in which the appellate court reversed the Northern District of Texas’ ruling that Continental had alleged an injury in fact conferring Article III standing. The Fifth Circuit remanded the case with orders to dismiss after finding that Continental was not denied any property right through Avanci’s decision to license standard-essential patents (SEPs) covering mobile networking technologies with original equipment manufacturers downstream of Continental on the automotive supply chain, instead of directly with Continental.

PTAB Interference Proceeding Rules Broad Institute Has Priority to CRISPR-Cas9 Invention – On Monday, February 28, the Patent Trial and Appeal Board issued a ruling in an interference proceeding between competing developers of genomic engineering technology using CRISPR-Cas9 editing techniques, finding that entities associated with The Broad Institute had established an earlier date by which its technology was reduced to practice, giving them priority over competing invention claims from the University of California, the University of Vienna and Nobel Prize-winner Emmanuelle Charpentier.

CAFC Puts Appellate Bar on Notice That Violating COVID-19 Protocols Will Bring Sanctions – On Friday, February 25, the Federal Circuit issued a precedential decision in In re: Violation of the Revised Protocols for In-Person Arguments and Related Order in which the appellate court found a violation of its revised in-person argument protocols released last August by the attendance of special counsel at a hearing despite the Federal Circuit’s denial of a motion to allow more than the revised protocol’s limit of two persons, arguing counsel plus one attendee, to appear at oral arguments. While the Federal Circuit declined to enter sanctions on this occasion, it wrote that “the bar is on notice that this court takes compliance with these protocols very seriously and that sanctions will likely be imposed if a future violation of the protocols takes place.”

Barks 

USPTO Announces Termination of Engagement With Rospatent, Eurasian Patent Organization – On Friday, March 4, the U.S. Patent and Trademark Office announced that, pursuant to guidance from the U.S. Department of State based on the ongoing military situation in Ukraine, the federal agency officially terminated all engagement with Russia’s Federal Service for Intellectual Property, formerly Rospatent, and the Eurasian Patent Organization.

Judge Halpern Says More Information Needed for Regeneron’s Experimental Use Exception – On Wednesday, March 2, U.S. District Judge Philip M. Halpern of the Southern District of New York said during an oral hearing that he could not grant Regeneron’s motion to dismiss a patent infringement suit filed by Allele Biotechnology over the alleged infringement of a patented protein used in developing Regeneron’s COVID-19 treatment, finding that more information was needed to make sure that Regeneron’s use of the protein met the statutory experimental use exception codified in the Hatch-Waxman Act.

Ninth Circuit Nixes Copyright Appeal Against Paramount’s “What Men Want” – On Wednesday, March 2, the Ninth Circuit entered an unpublished ruling in Carlini v. Paramount Pictures Corporation in which the appellate court affirmed the district court’s grant of a Rule 12(b)(6) motion to dismiss for failure to state a claim upon which relief can be granted. The Ninth Circuit found that Carlini did not sufficiently allege substantial similarity between Paramount’s 2019 film “What Men Want” and an unpublished screenplay co-authored by Carlini.

Boart Longyear, Globaltech Face Section 337 Investigation Over Core Orientation Systems – On Wednesday, March 2, the U.S. International Trade Commission announced that it had received a complaint from Australian Mud Company and Reflex USA seeking a Section 337 investigation into claims that their patent rights are being infringed by core orientation systems and products containing those systems that are imported into the U.S. for sale by several respondents including Boart Longyear Group and Globaltech Corp.

UPC Administrative Committee Adopts Rules of Procedure, Service Regulations  – On Wednesday, March 2, the Administrative Committee of the Unitary Patent Court (UPC) held its inaugural meeting during which the committee adopted several important series of rules and regulations including Rules of Procedure, Rules on the European Patent Litigation Certificate and Service Regulations for UPC judges and administrative staff.

EUIPO and OLAF Agree to Collaborate on Developing Anti-Counterfeiting IT Tools – On Tuesday, March 1, the European Union Intellectual Property Office (EUIPO) and the European Anti-Fraud Office (OLAF) entered into a service level agreement under which the two organizations will collaborate on developing IT tools for sharing and analyzing data related to EU counterfeiting cases.

Joint Dismissal Entered in Northern California Copyright Case on Databasing Software – On Tuesday, March 1, American software firm Oracle and Japanese information technology firm NEC Corp. filed a joint stipulation of dismissal with prejudice in the Northern District of California, terminating copyright infringement claims filed by Oracle against NEC’s use of Oracle’s flagship database management software which allegedly exceeded NEC’s license with Oracle.

Copyright Case Against Instagram Embedded Photos Appealed to Ninth Circuit – On Friday, February 25, photographers Alexis Huntley and Matthew Scott Brauer filed a notice of appeal to challenge the Northern District of California’s decision to dismiss copyright claims filed against Instagram for its role in providing embedded versions of the photographers’ copyrighted photos for use on several third-party websites. The appeal will be heard by the U.S. Court of Appeals for the Ninth Circuit.

This Week on Wall Street

Sony, Honda Sign Memorandum of Understanding on Joint EV Development – On Friday, March 4, Japanese electronics conglomerate Sony Group announced that it had entered into a memorandum of understanding with Japanese automaker Honda Motor to collaborate on a new joint venture company that will undertake the development and commercialization of high value-added battery electric vehicles (EVs), with sales of the first EV model developed by this joint venture expected to come by 2025.

Ford Corporate Reorganization Will Separate EV, Gas-Engine Divisions – On Wednesday, March 2, major American automaker Ford Motor Co. announced that it would be separating its electric vehicle business, which financial analysts expect to enjoy a high valuation, from its internal combustion engine business, although the company is not expected to spin off its EV division into a new company, which many investors have called upon Ford to consider.

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: None
  • Tuesday: Oracle Corp. (70th); Schaeffler AG (t-186th); ZTE Corp. (207th)
  • Wednesday: Continental AG (98th)
  • Thursday: None
  • Friday: Tianma Microelectronics Co., Ltd. (t-170th)

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