Other Barks & Bites for Friday, June 17: Bills to Reform PTAB and Increase USPTO-FDA Cooperation Introduced, CCB Officially Begins Accepting Copyright Small Claims and SCOTUS Petition Filed in Texas A&M ‘12th Man’ Copyright Case

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https://depositphotos.com/99956332/stock-photo-dog-on-hammock-in-summer.htmlThis week in Other Barks & Bites: the U.S. Supreme Court receives petitions for writ of certiorari regarding the Takings Clause and state sovereign immunity issues in the Texas A&M “12th Man” copyright case and the Federal Circuit’s recent indefiniteness ruling invaliding patent claims supporting a $1.2 billion patent infringement verdict for June Therapeutics; Lego announces that it is investing more than $1 billion to build a manufacturing facility in Virginia; the PTAB Reform Act is introduced into the U.S. Senate; the EGC rescinds a €1 billion fine imposed by EU regulators against Qualcomm for alleged abuses of market dominance in LTE chipsets; a former professor at the University of Arkansas receives a prison sentence for failing to disclose two dozen patent application filings in China; and the CCB officially begins accepting claims for copyright infringement and declarations of non-infringement in cases involving copyright small claims.


Bill Introduced to Improve Collaboration Between USPTO and FDA – Senators Dick Durbin (D-IL), Thom Tillis (R-NC) and Chuck Grassley (R-IA) today announced the introduction of a bipartisan bill to establish a task force between agencies to share information [and] foster good governance in activities related to patents.” The legislation would create a task force between the United States Patent and Trademark Office (USPTO) and the Food and Drug Administration (FDA) “to improve communication and coordination in implementing each agency’s activities related to patents.” The press release about the bill said it aims to “enhance information sharing on each agency’s processes, standards, and methods; improve dialogue on new technologies and scientific trends; and enable confidential reciprocal access to information, if requested and only as needed, related to prior art; accurate representations by companies between the two agencies; and accuracy of patent listings.”

PTAB Reform Act Introduced by Leahy, Cornyn, Tillis – On Thursday, June 16, Senators Patrick Leahy (D-VT), John Cornyn (R-TX) and Thom Tillis (R-NC) introduced the Patent Trial and Appeal Board (PTAB) Reform Act into the U.S. Senate. If passed, the bill would expand opportunities for petitioners to appeal adverse rulings by the PTAB and limit discretionary denials under Fintiv while also implementing a code of conduct for administrative patent judges (APJs) and prevent serial petitions by petitioners challenging the same patent claims in multiple petitions for PTAB trials.

CCB Officially Begins Accepting Small Claims for Copyright Infringement – On Thursday, June 16, the U.S. Copyright Office announced that the Copyright Claims Board (CCB) has officially begun hearing certain copyright disputes with claims up to $30,000 including claims for copyright infringement, declarations of noninfringement and improper notices or counter-notices filed under the Digital Millennium Copyright Act (DMCA). The previous day, the Copyright Office issued a correction in the Federal Register amending certain provisions governing proceedings before the CCB for typographical errors and inconsistent phrasing.

Fourth Circuit Says Novartis Not “Found” Within Eastern Virginia in Patent Discovery Suit – On Thursday, June 16, the U.S. Court of Appeals for the Fourth Circuit issued a decision in In re: Eli Lilly and Company in which the appellate court affirmed the Eastern District of Virginia’s ruling denying a motion for an order under 28 U.S.C. § 1782 filed by Eli Lilly seeking to compel discovery from Novartis for use in patent litigation ongoing between those parties in several European countries. The Fourth Circuit agreed with the district court that Novartis was not “found” within the Eastern District of Virginia and that discretionary factors under the Supreme Court’s ruling in Intel v. Advanced Micro Devices (2004) weighed in favor of denying the Section 1782 application. 

Petition for Writ Filed With SCOTUS in Texas A&M “12th Man” Copyright Case – On Wednesday, June 15, Canada Hockey and Michael Bynum filed a petition for writ of certiorari with the U.S. Supreme Court asking the nation’s highest court to answer whether copyright infringement by a state entity can never constitute a taking for purposes of the U.S. Constitution’s Takings Clause, and whether state sovereign immunity altogether bars Canada Hockey and Bynum’s takings claim against Texas A&M University for its unauthorized reproduction of Bynum’s book on the history of the 12th Man tradition at Texas A&M.

EGC Annuls €1B Fine Against Qualcomm Over Abuse of LTE Chipset Market Dominance – On Wednesday, June 15, the European General Court (EGC) issued a decision annulling a 2018 fine of €1 billion ($1.06 billion USD) imposed on American semiconductor developer Qualcomm by the European Commission over alleged abuse of market dominance in Long-Term Evolution (LTE) chipsets. The EGC ruled that procedural irregularities affected Qualcomm’s rights of defense and that the EU Commission failed to take into account relevant factual circumstances affecting the analysis of whether incentive payments by Qualcomm were capable of having anticompetitive effects.

Eighth Circuit Affirms Dismissal of Breach Claims in Medical Device IP Agreement Case – On Tuesday, June 14, the U.S. Court of Appeals for the Eighth Circuit issued a pair of decisions in a long-running lawsuit between Cardiovascular Systems Inc. (CSI) and inventor Dr. Leonid Shturman involving breach of contract claims surrounding a 2012 settlement agreement regarding the ownership of patent claims covering a technology used in atherectomy devices. In one decision, the Eighth Circuit affirmed that Cardio Flow, which later received patent assets from the inventor’s widow, was not a party to the original settlement agreement, and in another, that breach of contract claims filed by CSI against one of Cardio Flow’s owners were time-barred and that CSI’s tortious interference claim was not supported by an underlying breach.

CAFC Says Topical Skin Composition Claim Can’t Be Construed By Plain Meaning – On Monday, June 13, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in University of Massachusetts v. L’Oréal S.A. in which the appellate court reversed and vacated in part a ruling by the District of Delaware invalidating patent claims covering a method of enhancing skin by applying a topical composition. The Federal Circuit found that the district court improperly construed disputed claim terms according to their plain and ordinary meaning, finding that their meaning was not plain when taken in light of the context of the whole claim as well as the methodology applied by an expert witness for UMass.

Juno Therapeutics Challenges CAFC Indefiniteness Ruling in Petition for Writ – On Monday, June 13, Juno Therapeutics and Sloan Kettering Institute for Cancer Research filed a petition for writ of certiorari with the Supreme Court asking the nation’s highest court to take up an appeal of a ruling by the Federal Circuit. The CAFC had previously overturned a $1.2 billion verdict for Juno, a subsidiary of Bristol Myers Squibb, after finding that the written description requirement of U.S.C. § 112 requires that the inventor demonstrate possession of the full scope of the claimed invention, including all known and unknown various of each component.


Former University Professor Sentenced to Jail for Failing to Disclose Chinese Patents – On Thursday, June 16, the U.S. Department of Justice announced that Simon Saw-Teong Ang, formerly a professor with the University of Arkansas, had been sentenced to a prison sentence of one year and one day for failing to disclose the fact that he filed 24 patent applications in China under his own name in violation of his employment agreement which required Ang to provide “full and complete” disclosures of his inventions to the university.

Audi Files Trademark Suit in Germany Against Chinese EV Maker Nio – On Thursday, June 16, news reports indicated that German automaker Audi had filed a lawsuit in Munich regional court alleging claims of trademark infringement against Chinese electric vehicle firm Nio over that firm’s decision to choose EV model designations that allegedly infringe upon Audi’s S6 and S8 automobile trademarks.

 EPO Reiterates That VICO Proceedings Before Examining Divisions Continues Until Dec. 31 – On Wednesday, June 15, the European Patent Office (EPO) issued a press release in light of recurring inquiries reminding patent applicants that oral proceedings before examining divisions at the agency will continue to be held by videoconference (VICO) through December 31 as a rule, noting that the use of VICO for examination proceedings is not a pilot project unlike the EPO’s use of VICO in opposition proceedings.

Kyocera Terminates Section 337 Investigation at USITC Following CAFC Remand – On Wednesday, June 15, the U.S. International Trade Commission published a notice announcing that the agency had granted Kyocera’s motion to terminate a Section 337 investigation into certain gas spring nailer products and components thereof imported into the U.S. for sale by Koki Holdings America. The termination follows a CAFC decision this January vacating the USITC’s finding of a Section 337 violation by Koki for improper use of expert testimony and erroneous claim constructions.

Ninth Circuit Affirms TD Ameritrade Win in Trading Algorithm Copyright Case – On Tuesday, June 14, the U.S. Court of Appeals for the Ninth Circuit issued a decision in TD Ameritrade, Inc. v. Matthews in which the appellate court affirmed a district court’s summary judgment ruling dismissing Matthews counterclaims of copyright infringement and Digital Millennium Copyright Act (DMCA) violations. The Ninth Circuit agreed with the lower court that TD Ameritrade properly rebutted Matthews’ claims that he owned the copyright to a compilation work including portions of TD Ameritrade’s thinkScript programming code.

Northern California Jury Awards $30 Million to Oracle for Copyright Claims Against HPE – On Tuesday, June 14, a jury verdict entered in the Northern District of California awarded $30 million in copyright infringement damages and $24 million in damages for intentional interference with business contracts to Oracle against Hewlett Packard Enterprise (HPE) in a case over HPE’s unauthorized distribution of Oracle software updates to HPE customers without a support contract with Oracle.

EPO’s Observer Status in TTO Circle Expected to Promote PATLIB Network – On Tuesday, June 14, the EPO announced that it has officially gained observer status with the European Technology Transfer Offices (TTO) Circle, which comprises 31 members from major European research institutions, a move that the agency expects to improve the visibility of its PATLIB patent information centers in the technology transfer field.

CAFC Issues New Revised Protocols for In-Person Arguments – On Monday, June 13, the Federal Circuit issued revised protocols for in-person arguments that clarify and expand the COVID-19 testing and medical documentation options available to counsel participating in oral arguments. The Federal Circuit also revised the compliance form on COVID-19 testing and medical documentation that arguing counsel must file before oral arguments.

This Week on Wall Street

PBOC Accepts Ant Group Application for Financial Holding Company – On Friday, June 17, Reuters reported that the People’s Bank of China (PBOC) had accepted an application from Jack Ma’s Ant Group, which owns the major Chinese digital payment platform Alipay, to set up a financial holding company. The announcement sent stock of major Chinese firms like Alibaba, also founded by Jack Ma, higher in hopes that the move signals that the Chinese government is easing its regulatory crackdown on major tech and financial firms.

Lego to Invest $1B in Toy Brick Factory in Virginia – On Wednesday, June 15, Danish toymaker Lego announced that it would invest more than $1 billion into constructing a factory in Virginia that will be completed in 2025. The facility, which is expected to employ more than 1,800 people, marks Lego’s return to America after it closed its Connecticut factory in 2006.

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: None
  • Wednesday: None
  • Thursday: Accenture plc (t-141st); BlackBerry Ltd. (213th)
  • Friday: None

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