Other Barks & Bites for Friday, June 3: CAFC Finds No Issue with Judicial Correction of Patent Claim, AG Szpunar Says No EU Liability for Amazon from Louboutin Counterfeit Sales, and USPTO Creates Climate Change Mitigation Pilot Program

Ninja Kasznik is a six-year old German Shepherd who lives in Stanford, California, and likes chasing after squirrels and loud garbage trucks! He belongs to Efrat Kasznik, President at Foresight Valuation Group, LLC.

Show us your dogs!!! Submit your favorite pup to be the next Barks and Bites-featured Watchdog. Read more here.

This week in Other Barks & Bites: Tesla CEO Elon Musk cites worsening U.S. economy in an internal email telling executives that the company’s workforce should be reduced by 10%; Ford Motor Company signs a patent licensing agreement with Avanci after an adverse patent ruling in Munich; the Federal Circuit affirms a jury verdict of willful infringement after dismissing an appeal challenging the district court’s judicial correction of a claim term; the U.S. Patent and Trademark Office announces that it has established a pilot program to prioritize examination of climate change patent applications; the Ninth Circuit remands a trademark cancellation claim to the district court after finding an improper application of Star-Kist’s precedent on standing; and Advocate General Szpunar tells the Court of Justice of the European Union that Amazon has not made a use of Louboutin trademarks under the meaning of EU law by listing offers for sale by third-parties offering counterfeit Louboutin footwear.

Bites

CAFC Affirms Willfulness Verdict Over Appeal on Judicial Correction of Patent Claim – On Friday, June 3, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Pavo Solutions LLC v. Kingston Technology Co., Inc. in which the appellate court affirmed a Central California jury verdict awarding $7.5 million in compensatory damages enhanced for willful infringement. The Federal Circuit dismissed Kingston’s arguments on appeal that the district court improperly corrected a patent claim during claim construction, that willfulness should not have been found because Kingston reasonably relied on the fact that it didn’t infringe the patent’s claims as originally written, and that the district court improperly relied upon a non-binding non-payment term from a license entered into by Pavo’s predecessor-in-interest.

CJEU Finds No Liability for Amazon for Third-Party Sales of Counterfeit Louboutins – On Thursday, June 2, the Court of Justice of the European Union (CJEU) issued an opinion authored by Advocate General Maciej Szpunar which recommended that the CJEU rule against any finding of infringement liability on e-commerce giant Amazon.com for third-party sales of counterfeit Louboutin footwear. AG Szpunar argued that, despite the commercial services offered by Amazon to display and conduct sales of counterfeit products, Amazon’s business practices do not support the finding that it has used Louboutin’s trademark under EU law.

Ninth Circuit Remands Trademark Cancellation Claim for Improper Star-Kist Application – On Thursday, June 2, the U.S. Court of Appeals for the Ninth Circuit entered a ruling in Chemeon Surface Technology LLC v. Metalast International, Inc. in which the appellate court affirmed the district court’s summary judgment denial of Chemeon’s claims for trademark infringement and attorney’s fees under the Lanham Act. However, the appellate court did remand Chemeon’s trademark cancellation claim after finding that the district court improperly found that Chemeon did not have standing for the cancellation claim under Ninth Circuit precedent from Star-Kist Foods v. P.J. Rhodes & Co. (1984).

CAFC Says Intrinsic Evidence Shows That “Self-Similar” Claim Term is Not Indefinite – On Wednesday, June 1, the Federal Circuit issued a precedential decision in ClearOne, Inc. v. Shure Acquisition Holdings, Inc. in which the appellate court affirmed a ruling by the Patent Trial and Appeal Board (PTAB) that a substituted claim for a patent on microphone arrays including the claim term “self-similar” was not indefinite. The Federal Circuit affirmed the PTAB’s ruling on the intrinsic evidence of the patent’s specification alone, though the appellate court acknowledged that dictionary definitions and expert testimony also provided substantial evidence supporting the PTAB’s ruling.

BlackBerry Announces No Exclusivity With Catapult IP on Non-Core Patent Asset Sale – On Wednesday, June 1, Canadian mobile cybersecurity firm BlackBerry announced that its sale of non-core patent assets to Catapult IP Innovations for $600 million, an agreement entered into by BlackBerry during the fourth quarter of fiscal year 2022, is no longer under exclusivity and BlackBerry is now looking at exploring alternative options in parallel to Catapult IP’s effort to secure financing to complete the patent sale.

CAFC Sustains Barclays’ Opposition to “LEHMAN BROTHERS” Whisky Trademark – On Wednesday, June 1, the Federal Circuit issued a precedential decision in Tiger Lily Ventures Ltd. v. Barclays Capital Inc. in which the appellate court affirmed a ruling by the Trademark Trial and Appeal Board (TTAB) sustaining a pair of oppositions filed by Barclays, who purchased assets including trademarks from Lehman Brothers after that firm declared bankruptcy in 2008, against trademark applications filed by Tiger Lily for the standard character mark “LEHMAN BROTHERS” for bar services, beer and spirits. The Federal Circuit ruled that Lehman Brothers’ trademarks had not been abandoned as Barclays had continued to use the former banking giant’s trademarks and because Lehman Brothers’ bankruptcy had not yet concluded.

Second Circuit Affirms SJ Against Bikini Copyright Plaintiff for Time-Barred Ownership Claim – On Tuesday, May 31, the U.S. Court of Appeals for the Second Circuit issued a decision in Ferrarini v. Irgit in which the appellate court affirmed a ruling by the Southern District of New York that Ferrarini’s copyright claims against an allegedly infringing bikini sold by Irgit were time-barred because Ferrarini’s complaint was filed more than three years after the crocheted bikini maker was on notice that there was a dispute as to ownership of the copyright to the bikini design.

DOJ Announces Sentencing of Prolific Member of Transnational Cybercrime Enterprise – On Friday, May 27, the U.S. Department of Justice announced that John Telusma of Brooklyn was sentenced to four years in prison for his role in promoting and maintaining the membership of the Infraud Organization, a transnational cybercrime entity engaging in mass acquisition and sale of fraud-related goods including stolen identities, stolen credit card information and malware. Telusma is the 14th defendant to be sentenced for having a role in promoting the Infraud Organization.

Barks

USPTO Creates New Prioritized Examination Pilot for Climate Change Technologies – On Friday, June 3, the U.S. Patent and Trademark Office issued a notice in the Federal Register announcing that the agency had established a Climate Change Mitigation Pilot Program that will immediately begin accepting requests for prioritized examination of patent applications related to technologies reducing greenhouse gas emissions or otherwise addressing climate change issues.

CCB to Start Accepting Copyright Small Claims by Mid-June – On Thursday, June 2, the U.S. Copyright Office announced that the Copyright Claims Board (CCB), established by the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2020, will begin accepting small copyright infringement claims up to $30,000 in damages on Thursday, June 16. That same day, the CCB’s electronic filing and case management system (eCCB) will begin accepting registrations from CCB participants.

USPTO Releases New Patent Quality Metrics Webpage – On Thursday, June 2, the U.S. Patent and Trademark Office issued a patent alert announcing that the agency had published a new patent quality metrics webpage on the agency’s website which will publicly show quality scores on a range of metrics across categories including statutory compliance, examination process measures and internal and external stakeholder perception surveys.

XFL Faces Trademark Suit from Togethxr Equity-Focused Sports Brand Over Logo – On Wednesday, June 1, sports media firm AXM LLC, also known as Togethxr, filed a lawsuit in the Central District of California against the operators of the professional American football league XFL alleging that the XFL has adopted a logo that is confusingly similar to the X design used in the Togethxr logo.

USPTO Termination of Rospatent as Receiving Office Will Be Effective This December – On Wednesday, June 1, the U.S. Patent and Trademark Office announced that, under the terms of its obligations under the Patent Cooperation Treaty (PCT), its decision to terminate its agreement concerning Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) as a search or preliminary examination authority on international patent filings will become effective as of December 1 of this year.

USITC Institutes Section 337 Investigation Into TCL Digital TV Sets – On Wednesday, June 1, the U.S. International Trade Commission (USITC) announced that it had instituted a Section 337 investigation into certain graphics systems, components thereof, and digital televisions containing those systems imported into the U.S. for sale by Realtek Semiconductors as well as nearly a dozen entities related to Chinese electronics firm TCL Technology.

CRB Issues Proposed Rule on Section 115 Compulsory License Royalties for Music Downloads – On Wednesday, June 1, the Copyright Royalty Board (CRB) issued a proposed rule in the Federal Register proposing that the 2023 royalty rate for compulsory licenses under 17 U.S.C. § 115 for permanent digital downloads of phonorecords should be either 12 cents per download or 2.31 cents per minute of playing time, whichever amount is larger.

Ford Signs Avanci Patent License after Munich Verdict on IP Bridge Patent – On Tuesday, May 31, Internet of Things (IoT) patent licensing firm Avanci announced that Ford Motor Company had entered into an agreement to license 2G, 3G and 4G wireless networking standard-essential patents (SEPs) in Avanci’s licensing pool. The agreement comes a few weeks after Ford was found liable in Munich Regional Court for infringing a wireless networking SEP owned by IP Bridge, a member of the Avanci licensing pool.

This Week on Wall Street

Elon Musk Intends to Cut 10% of Workforce Due to Worsening Economy – On Friday, June 3, Reuters reported that Tesla CEO Elon Musk had sent an email to other executives at Tesla indicating that the electric car firm would have to cut 10 percent of its 100,000 employee workforce in order to deal with worsening conditions within the U.S. economy.

New York Passes State Bill Banning Bitcoin Mining Operations Tied to Carbon-Based Energy – On Friday, June 3, state lawmakers in New York passed a bill that prohibits certain bitcoin mining operations that rely upon carbon-based sources of energy for completing proof-of-work authentication methods for verifying transactions. The moratorium against such practices under the New York law will last for two years. 

Burnout, Internal Investigations Push Sheryl Sandberg to Leave Facebook – On Thursday, June 2, The Wall Street Journal reported that Sheryl Sandberg, Facebook’s longtime Chief Operating Officer, had decided to step down from that position although she would remain on the board of Facebook owner Meta Platforms. WSJ reported from sources close to Meta that Sandberg’s departure was largely owing to burnout with her position as well as internal investigations into Sandberg’s personal use of Meta’s corporate resources.