This week in Other Barks & Bites: the USPTO updates its website to improve transparency surrounding the process for requests of Director review of PTAB decisions under Arthrex; former Federal Circuit Judge Kathleen O’Malley joins Irell & Manella as of counsel with a practice focusing on litigation consulting; the Ninth Circuit affirms the dismissal of trademark and right of publicity claims filed by Chuck Yeager against sales and promotional material developed by Airbus; the Ninth Circuit also affirmed an injunction preventing LinkedIn from using technical measures to prevent a people analytics firm from scraping publicly available data; Netflix stock drops by 35% this week after it reported its first net subscriber loss in more than a decade; statements from the Biden Administration to HuffPost indicate efforts to get the WTO to release its draft text of the proposed TRIPS waiver; and the U.S. Supreme Court invites the U.S. Solicitor General to file a brief on the Section 112 enablement issues involved in Amgen v. Sanofi.
USPTO Publishes Webpages for Greater Transparency in Arthrex Director Reviews – On Friday, April 22, the U.S. Patent and Trademark Office published updates to its webpage on the interim process for Director review requests of Patent Trial and Appeal Board (PTAB) decisions under Arthrex v. Smith & Nephew, and also published a new webpage providing status updates on Director review requests. In the agency’s announcement, USPTO Director Kathi Vidal also indicated that the agency will issue a request for comment in the coming weeks as the USPTO works to formalize the Director review request process under Arthrex and improve transparency in those agency processes.
USPTO Report Summarizes Public Comments on ‘Article of Manufacture’ Requirement – The USPTO has published a summary of comments received following its December 2020 Federal Register Notice (FRN) on whether the Office’s interpretation of 35 U.S.C. section 171—specifically, the “article of manufacture” requirement—”should be revised to protect new and emerging technologies including digital designs.” The full report is available here. USPTO Director Kathi Vidal also discusses the comments in her latest Director’s blog.
USTR Statement to HuffPost Indicates Efforts Toward Releasing Draft Text of TRIPS Waiver – On Thursday, April 21, HuffPost reported that the Biden Administration had sent a statement through the office of the U.S. Trade Representative to the online news site indicating that the United States was increasing efforts to get World Trade Organization (WTO) Director-General Ngozi Okonjo-Iweala to publicly release the current draft text of the waiver of reciprocal IP obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) for patents covering inventions related to COVID-19. The Biden Administration is hoping that it can obtain feedback from members of Congress on the draft waiver text.
Former CAFC Judge O’Malley Joins Irell & Manella as Of Counsel Litigation Consultant – On Thursday, April 21, Los Angeles-based law firm Irell & Manella announced that Kathleen O’Malley, formerly a Circuit Judge with the U.S. Court of Appeals for the Federal Circuit, would be joining Irell’s Washington D.C. office as of counsel with a practice focused on litigation consulting, including alternative dispute resolution (ADR) and intellectual property matters.
Ninth Circuit Affirms Dismissal of Chuck Yeager’s Publicity Claims Against Airbus – On Wednesday, April 20, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Yeager v. Airbus Group SE in which the appellate court affirmed the district court’s dismissal of trademark and right of publicity claims filed by the estate of famed American pilot Chuck Yeager against French airplane maker Airbus. The Ninth Circuit found that the sales video and promotional statement at the center of Yeager’s claims did not give rise to personal jurisdiction in California because neither of those acts were expressly aimed at the state.
Senators Tillis, Rubio and Cotton Urge DoJ to Withdraw Draft Policy Statement on SEP Remedies – On Tuesday, April 19, Senators Marco Rubio (R-FL), Thom Tillis (R-NC) and Tom Cotton (R-AR) sent a letter addressed to U.S. Attorney General Merrick Garland urging Garland to withdraw the U.S. Department of Justice’s (DoJ) draft policy statement on remedies for standard-essential patents (SEPs), arguing that the statement drafted jointly with the U.S. Patent and Trademark Office and the National Institute of Standards and Technology would harm American competitiveness against major foreign rival China by emboldening infringers in that country through weakened support for remedies resulting from the infringement of SEPs subject to fair, reasonable and non-discriminatory (FRAND) licensing obligations.
Petition for Initial En Banc Hearing Challenges CAFC’s Collateral Estoppel Ruling in XY LLC – On Tuesday, April 19, patent owner Jump Rope Systems filed a petition with the U.S. Court of Appeals for the Federal Circuit for initial hearing en banc of an appeal from a consent judgment entered in Southern Ohio invalidating patent claims under the collateral estoppel holding of XY, LLC v. Trans Ova Genetics, L.C. The petition argues that XY LLC, which holds that patent owners are collaterally estopped from asserting validity of patents in U.S. district court that have been invalidated in Patent Trial and Appeal Board (PTAB) proceedings, conflicts with Supreme Court rulings that have found collateral estoppel unavailable when the issue was initially litigated under different evidentiary burdens of proof.
SCOTUS Invites Solicitor General to File Brief on Section 112 Issues in Amgen v. Sanofi – On Monday, April 18, the U.S. Supreme Court issued an order list showing that the nation’s highest court had invited the U.S. Solicitor General to file a brief on the petition for writ of certiorari in Amgen v. Sanofi, a case which asks whether enablement under 35 U.S.C. § 112 is a question of fact to be determined by the jury instead of a question of law decided by a court, and whether Section 112 requires that a patent specification enables artisans skilled in the art to reach the full scope of claimed embodiments without undue experimentation or whether it only needs to teach a skilled artisan how to make and use the claimed invention.
Ninth Circuit Reaffirms Injunction Preventing LinkedIn From Stopping Data Scraping Activity – On Monday, April 18, the Ninth Circuit issued a ruling in hiQ Labs, Inc. v. LinkedIn Corp. in which the appellate court reaffirmed the district court’s entry of a preliminary injunction against LinkedIn’s use of technical measures to prevent people analytics firm hiQ from scraping publically available data from LinkedIn user profiles to help business clients retain valuable employees and identify skills gaps in their workforces. The Ninth Circuit reaffirmed the preliminary injunction after the Supreme Court ordered it to reassess LinkedIn’s Computer Fraud and Abuse Act in light of the Court’s recent ruling in Van Buren v. U.S. (2021), which “reinforce[d the court’s] determination that hiQ has raised serious questions about whether LinkedIn may invoke the [CFAA] to preempt hiQ’s possibly meritorious tortious interference claim.”
CAFC Reverses Dismissal of Apple’s DJ Suit on Noninfringement Under Burger King Factors – On Monday, April 18, the Federal Circuit issued a precedential decision in Apple Inc. v. Zipit Wireless, Inc. in which the appellate court reversed the Northern District of California’s dismissal of Apple’s complaint for declaratory judgment of noninfringement of wireless instant messaging patent claims owned by Zipit Wireless for lack of personal jurisdiction. Applying the personal jurisdiction factors from Burger King Corp. v. Rudzewicz, the Federal Circuit found that communications from Zipit to Apple regarding the patents-in-suit, including licensing negotiations for those patents, created minimum contacts and that Zipit had not established that Northern California’s exercise of personal jurisdiction would be unreasonable.
Tenth Circuit Affirms Dismissal of Complaint Over Breach of Trademark Licensing Agreement – On Friday, April 15, the U.S. Court of Appeals for the Tenth Circuit issued a decision in Lim v. Boone in which the appellate court affirmed the district court’s dismissal of breach of contract claims related to a trademark licensing agreement covering the sale of pre-cooked meat snacks. The Tenth Circuit found that the breach of contract claims were barred by the ten-year statute of limitations as the licensing agreement was breached when the licensee failed to make monthly royalty payments, which under the agreement gave the plaintiff the right to immediately terminate the trademark license, over the plaintiff’s arguments that those missed payments were just anticipatory breaches to the material breach occurred when the licensee later failed to pay an annual royalty payment provided by the agreement, which would have brought the plaintiff’s claims within the ten-year statute.
Melomega Music Files Copyright Suit Against Justin Bieber’s “10,000 Hours” – On Thursday, April 21, International Manufacturing Concepts, trading as Melomega Music, filed a lawsuit in the Central District of California alleging claims of copyright infringement against Canadian pop star Justin Bieber and several other parties involved in the production of the 2021 single “10,000 Hours.” Melomega argues that the song is a knock-off of the Palmer Rakes and Frank Fioravanti song “The First Time Baby Is A Holiday,” which was written in 1980 but not released until 2014.
Two-Thirds of Respondents Tell EPO They Plan to Use New Ombuds Office – On Thursday, April 21, the European Patent Office (EPO) announced the results of its public consultation on the agency’s new Ombuds Office, showing that 67% of respondents plan on using the office’s resources for resolving problems with EPO services at least once per year.
IMDb.com Faces Trademark Suit Over Freevee Movie Streaming Service – On Wednesday, April 20, Kamino Trade Federation, operator of the ad-supported movie streaming service Freebie TV, filed a lawsuit in the Northern District of Texas against online movie database IMDb.com over that firm’s rebrand of its IMDb TV ad-supported movie service to Freevee, which Kamino alleges is confusingly similar to registered trademarks covering Freebie TV.
Monster Energy Files Trademark Suit Against Monster Dollar Retail Store – On Wednesday, April 20, energy drink maker Monster Energy filed a lawsuit in the Western District of Washington alleging claims of trademark and trade dress infringement against Pelmir Enterprise, which operates a retail store doing business as Monster Dollar in Federal Way, WA.
Judge Wright II Issues SJ Nixing Copyright Claims to Final Recording of Post Malone’s “Circles” – On Monday, April 18, U.S. District Judge Otis D. Wright II of the Central District of California entered an order granting partial summary judgment to American rapper Austin Richard Post, better known as Post Malone, on copyright claims filed by musician Tyler Armes to the commercial release version of Post Malone’s “Circles,” although Armes’ claims to the copyright in an earlier composition of the song completed during a session recording were allowed to proceed to trial.
USITC Finds Section 337 Violation By Infringing Container Opening Apparatuses – On Monday, April 18, the U.S. International Trade Commission announced that it was issuing a general exclusion order against the import into the U.S. for sale of certain apparatuses and methods of opening containers by nine respondents, including seven defaulting respondents situated in China, Chinese firm Mintiml and California-based Tofba International, after finding that those apparatuses infringe upon patent claims owned by Long Beach, NJ-based Draft Top.
This Week on Wall Street
Snap Stock Sees Volatile After-Hours Trading After Missing on Revenue Expectations – On Thursday, April 21, American social media firm Snap Inc. issued its earnings report for the first quarter of the 2022 fiscal year, showing that the company slightly missed on revenue expectations ($1.06 billion earned vs. $1.07 billion expected), although the company did beat analyst forecasts on global daily active subscribers (332 million vs. 330 million expected). Snap stock saw volatile after-hours trading, falling by more than 4% and then rising by 7% before returning to essentially the stock’s price at close of trading on Thursday.
Netflix Stock Drops 35% This Week After Reporting First Net Subscriber Loss in Last Decade – On Tuesday, April 19, American streaming media firm Netflix issued its earnings report for the first quarter of 2022 in which the company acknowledged that it lost 200,000 subscribers during the quarter, badly missing analyst expectations that the company would add 2.5 million subscribers during the quarter and sending share prices of Netflix stock down as much as 35% in Wednesday trading.
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: Denso Corp. (34th); ZTE Corp. (207th)
- Tuesday: 3M Co. (74th); Alphabet Inc. (17th); Canon Inc. (4th); Capital One Financial Corp. (63rd); Corning Inc. (t-102nd); General Electric Co. (21st); General Motors Co. (58th); Microsoft Corp. (12th); Raytheon Technologies Corp. (9th); Renesas Electronics (159th); Shimano, Inc. (t-269th); TCL Corp. (51st); Texas Instruments Inc. (42nd); Tianma Microelectronics (t-170th); Visa Inc. (t-148th)
- Wednesday: Boeing Co. (27th); Boston Scientific Corp. (83rd); Citrix Systems, Inc. (161st); Dish Network Corp. (t-236th); Ford Motor Co. (20th); Fuji Electric Co., Ltd. (167th); Mediatek Inc. (107th); PayPal Holdings, Inc. (131st); Qualcomm Inc. (13th); Samsung Electro-Mechanics (92nd); Seagate Technology plc (185th); Shin-Etsu Chemical Co., Ltd. (211th); STMicroelectronics N.V. (71st); TE Connectivity Ltd. (t-163rd); United Microelectronics Corp. (t-190th)
- Thursday:com, Inc. (15th); Apple Inc. (11th); Baxter International Inc. (t-234th); BOE Technology Group (14th); Caterpillar Inc. (93rd); Comcast Corp. (122nd); Fujitsu Ltd. (53rd); Hitachi, Ltd. (23rd); Intel Corp. (6th); Komatsu Ltd. (t-227th); LG Corp. (3rd); Mastercard Inc. (125th); Mitsubishi Electric Corp. (28th); Nielsen Holdings plc (t-202nd); Nokia Corp. (64th); Samsung Electronics Co., Ltd. (2nd); Samsung SDI (162nd); Sanofi S.A. (200th); Schneider Electric (t-254th); Seiko Epson Corp. (29th); Stanley Black & Decker, Inc. (t-287th); Stryker Corp. (95th); Textron Inc. (t-135th); Thermo Fisher Scientific (154th); Western Digital Corp. (57th)
- Friday: Berkshire Hathaway (230th); Delta Electronics, Inc. (t-174th); Exxon Mobil Corp. (t-135th); Honeywell International Inc. (43rd); Magna International Inc. (t-155th); Signify N.V. (t-150th)