Other Barks & Bites for Friday, May 20: CAFC Remands No Case or Controversy Determination to Eastern Texas, Ninth Circuit Rules 2018 Farm Act Legalized Delta-8 THC Trademarks, and EU Commission Directs Member States to Codify Copyright Rules

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This week in Other Barks & Bites: the European Commission sent notice to several EU member states directing them to codify recent rule changes to EU copyright law; a WIPO report shows that China has a significant lead in global patent application filings for hydrogen fuel cell vehicle technologies; Judge O’Grady is removed from the criminal copyright case against Kim Dotcom over reported ties to Disney; the Federal Circuit remands a dismissal of a suit seeking declaratory judgment of noninfringement for a finer analysis of the case or controversy presented; the Ninth Circuit rules that the 2018 Farm Act’s changes to the Controlled Substances Act legalized delta-8 THC products such that trademarks for those products are valid; and members of the Senate Antitrust Subcommittee introduce a bill designed to prevent Google and other Big Tech firms from operating at multiple steps along the digital advertising business.


CAFC Reverses Denial of Prejudgment Interest in Patent Damages Award Against Microsoft – On Friday, May 20, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Kaufman v. Microsoft Corp. in which the appellate court denied Microsoft’s appeal of the Southern District of New York’s denial of post-judgment motions following a $7 million patent infringement verdict for Kaufman, in part because Microsoft did not properly preserve claim construction arguments under O2 Micro International v. Beyond Innovation Technology (2008). The Federal Circuit did reverse the district court’s denial of prejudgment interest for Kaufman, finding that the jury’s verdict did not subsume interest into the reasonable royalty award to Kaufman.

CAFC Remands Noninfringement Suit to Eastern Texas for Finer Case or Controversy Analysis – On Friday, May 20, the Federal Circuit issued a precedential decision in Mitek Systems, Inc. v. United Services Automobile Association in which the appellate court reversed a ruling by the Eastern District of Texas dismissing a declaratory judgment action filed by Mitek, finding that the district court did not properly analyze whether Mitek had alleged a proper case or controversy required for Article III standing. The Federal Circuit, however, denied part of Mitek’s appeal seeking transfer of the case back to the Northern District of California, finding that Mitek had not identified an abuse of discretion in the transfer order issued by Northern California. 

Ninth Circuit Rules 2018 Farm Act Legalized Delta-8 THC Products for Valid Trademark – On Thursday, May 19, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in AK Futures LLC v. Boyd Street Distro, LLC in which the appellate court found that the 2018 Farm Act enacted by U.S. Congress, which removed the word “hemp” from the definition of marijuana under the Controlled Substances Act, legalized the delta-8 tetrahydrocannabinol (THC) present within AK Futures’ e-cigarette and vaping products. The appellate court then affirmed the validity of AK Futures’ trademarks as well as the preliminary injunction entered by the Central District of California against Boyd Street Distro’s sale of infringing goods.

CAFC Remands Google IPRs After Finding PTAB Didn’t Resolve Evidentiary Conflicts – On Thursday, May 19, the Federal Circuit issued a precedential decision in Google LLC v. IPA Technologies Inc. in which the appellate court reversed and remanded a trio of inter partes review (IPR) rulings issued by the Patent Trial and Appeal Board (PTAB) after finding that the PTAB improperly credited expert testimony for both sides as credible without resolving factual disputes in testimony regarding whether references asserted to challenge patent validity qualified as prior art.

EU Commission Directs Member States to Codify Copyright Rules Into National Law – On Thursday, May 19, the European Commission announced that it has sent reasoned opinions to ten EU member states regarding their failure to codify recent EU rule changes on copyrights applicable to certain online transmissions, and twelve EU member states regarding their failure to codify copyright rules under the Digital Single Market, which begins a two month period during which the member states must adopt those rules into national law or the EU Commission may refer those states to the Court of Justice for the European Union (CJEU).

Ninth Circuit Reverses Denial of Document Discovery for German Patent Case Against Apple – On Wednesday, May 18, the Ninth Circuit issued a decision in CPC Patent Technologies PTY Ltd. v. Apple, Inc. in which the appellate court reversed a magistrate judge’s ruling from the Northern District of California, which had denied a request by CPC Patent Technologies to compel document discovery from Apple to be used in patent infringement litigation against Apple in Germany. The Ninth Circuit ruled that the magistrate judge lacked authority to decide a dispositive matter and the district court should have reviewed the magistrate’s ruling de novo instead of reviewing for clear error. 

Hyatt Petition for Cert at the Supreme Court Distributed for Conference – On Tuesday, May 17, a petition for writ of certiorari filed by inventor Gil Hyatt was distributed for conference at the U.S. Supreme Court. The petition asks the nation’s highest court to declare the proper summary judgment standard for review of agency actions under the Administrative Procedures Act (APA) as part of Hyatt’s case against the U.S. Patent and Trademark Office for instituting a “no patents for Hyatt” rule which has delayed the issuance of patents on patent applications that were first filed by Hyatt back in the 1990s.

Judge O’Grady Removed From Kim Dotcom Extradition Case Over Disney Ties – On Monday, May 16, U.S. District Judge Liam O’Grady of the Eastern District of Virginia was replaced with U.S. District Judge Anthony Trenga, who will now preside over the criminal copyright case being brought by the U.S. government against Kim Dotcom, founder of the file sharing website Megaupload, after it was reported that Judge O’Grady had ties to Disney, which is one of the studio production firms initiating the criminal action against Dotcom.

Judge Newman Dissents from CAFC Ruling Nixing Challenge to Section 315(b) Time Bar – On Friday, May 13, the Federal Circuit issued a precedential decision in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc. in which the appellate panel majority dismissed Atlanta Gas’ appeal of the PTAB’s decision to vacate a previous decision to institute an IPR, finding that the PTAB’s decision was based in part on the application of the one-year time bar for IPR petitions under 35 U.S.C. § 315(b) and thus was unreviewable under the Supreme Court’s decision in Thryv v. Click-to-Call Technologies (2020). Circuit Judge Pauline Newman authored a dissent in which she argued that Thryv’s holding on the unreviewable nature of PTAB institution decisions did not mean that the PTAB’s time-bar determinations were themselves unreviewable.


Judge Alsup Delays “Patent Showdown” Trial Between Google and Sonos to October – On Wednesday, May 18, U.S. District Judge William Alsup of the Northern District of California issued a ruling delaying a “patent showdown” trial, which is designed to reach a speedy summary judgment ruling in patent cases before Judge Alsup, between consumer tech giant Google and wireless speaker developer Sonos from July 14 to October 3.

Western Texas Jury Verdict Clears Redfin of Infringement Allegations From Co-Founder – On Tuesday, May 17, a jury verdict entered into the Western District of Texas found that Appliance Computing III, doing business as Surefield and founded by Redfin co-founder David Eraker, did not prove that Redfin infringed on 10 patent claims asserted by Surefield against Redfin’s use of 3D home touring technology. The jury verdict also found that Redfin proved that all of the patent claims in suit were invalid.

Copyright Office Issues Final Rule on CCB Active Proceedings and Evidence – On Tuesday, May 17, the U.S. Copyright Office issued a final rule in the Federal Register establishing procedures governing active proceedings, including evidentiary and post-determination procedures as well as party conduct, before the Copyright Claims Board (CCB). The final rule also describes procedures for “smaller claims” less than $5,000 and solicits public comment on those procedures.

WIPO Report Shows China, Japan and Germany Leading in Hydrogen Fuel Cell Technologies – On Tuesday, May 17, the World Intellectual Property Organization (WIPO) issued a report on the global patent landscape for hydrogen fuel cell (HFC) vehicle technologies showing that China has grown to be the top source of patent applications in 2020 among all countries despite only ranking fifth-place in such patent application filings five years ago. China accounted for 7,261 HFC patent applications (69 percent of global total), followed by Japan (1,186 patent applications, 11.3 percent of global total) and Germany (646 patent applications, 6.2 percent of global total).

EPO Announces Finalists for 2022 European Inventor Award – On Tuesday, May 17, the European Patent Office announced that it has selected 13 inventors, both individuals and teams, as finalists of the 2022 European Inventor Award including three finalists in the categories of Industry, Research and Non-EPO Countries, and four finalists in the Small- and Medium-sized Enterprises (SMEs) category.

USPTO Accelerates Issuance of Electronic Trademark Registration Certificates to May 24 – On Monday, May 16, the U.S. Patent and Trademark Office announced that it would accelerate the date on which the agency would begin issuing electronic certificates for trademark registration to May 24, two weeks earlier than expected, in part due to a recent disruption at the agency’s paper vendor.

Sycamore Brewing Settles Trademark Case One Day After Stone Brewing Counterclaim – On Friday, May 13, a joint stipulation of dismissal without prejudice was entered into a Western District of North Carolina trademark infringement case filed by Sycamore Brewing against rival craft brewery Stone Brewing. The stipulated dismissal comes one day after Stone Brewing filed a counterclaim alleging that “[Sycamore’s] lawsuit is a sham” and that other breweries had used the alleged trademark “Keep It Juicy” for a few years prior to Sycamore’s registration of that mark with the USPTO.

Ravens QB Lamar Jackson Files Pair of Trademark Applications for Restaurant Services – On Friday, May 13, Lamar Jackson, the star quarterback of the NFL’s Baltimore Ravens, filed a pair of trademark applications with the USPTO, one for the standard character mark “You 8 yet?” and the other for the standard character mark “Play Action Soulfood and More,” both of which would cover the sale of footwear, headwear, clothing and restaurant services.

This Week on Wall Street

Meta Platforms Adds Commercial API Dashboard Tools to Monetize WhatsApp – On Thursday, May 19, news reports indicated that Facebook owner Meta Platforms had plans to roll out application programming interface (API) tools for commercial business users of its WhatsApp messaging service as the company attempts to find new revenue streams to account for headwinds posed by Apple’s iPhone changes that have hurt advertising revenues for many tech firms. 

Senate Antitrust Subcommittee Members Introduce Bill to Breakup Google’s Ad Business – On Thursday, May 19, the Competition and Transparency in Digital Advertising Act was introduced into the U.S. Senate by key members of the Senate Antitrust Subcommittee, including Chair Amy Klobuchar (D-MN) and Ranking Member Mike Lee (R-UT). If enacted, the bill would ban companies making more than $20 billion in annual digital advertising revenues from engaging in more than one step of the process for selling digital ads.

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: Intuit Inc. (233rd)
  • Wednesday: NVIDIA Corp. (t-163rd); Splunk Inc. (t-186th)
  • Thursday: Dell Technologies Inc. (16th); Lenovo Group Ltd. (75th); Medtronic plc (32nd)
  • Friday: None



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