Other Barks & Bites for Friday, July 8: CNIPA Publishes Trademark Exhaustion Guidance, SawStop Petition Challenges Double Patenting Doctrine, and European Court Restores ‘BALLON D’OR’ Trademark Rights for Entertainment Services

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This week in Other Barks & Bites: the European General Court reverses part of a ruling by the European Union Intellectual Property Office, restoring some trademark rights for the “BALLON D’OR” mark; Senator Chuck Grassley urges the U.S. Department of Justice to enforce against counterfeit drug sellers; the European Patent Office publishes its decision rejecting patent applications filed for an artificial intelligence inventor; the Eleventh Circuit rules that a successful defense against infringement claims does not lead to costs recovery under Rule 54; SawStop files a petition for writ of certiorari with the U.S. Supreme Court to challenge the judicially-created doctrine of obviousness-type double patenting; Volkswagen breaks ground on its first of six planned factory construction projects in Europe that will produce electric vehicle batteries; and China’s National Intellectual Property Administration publishes the results of an administrative ruling to serve as guidance on the nation’s trademark exhaustion doctrine.

Bites

Eleventh Circuit Says Successful Infringement Defense Does Not Lead to Rule 54 Costs Award – On Thursday, July 7, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Royal Palm Properties, LLC v. Pink Palm Properties, LLC in which the appellate court affirmed a district court’s ruling that there was no clear winner in a trademark case where both parties lost on their claims, dismissing Pink Palm’s argument that its successful defense against Royal Palm’s trademark infringement claims should entitle Pink Palm to costs recovery under Federal Rule of Civil Procedure 54 as well as enhanced fees under the Lanham Act as an exceptional case.

USPTO, FDA Collaborate on Initiatives to Prevent Incremental Patents – On Wednesday, July 6, the U.S. Patent and Trademark Office announced in a blog post that it had recently completed an exchange of letters with the U.S. Food and Drug Administration (FDA) containing several proposed initiatives to implement President Biden’s July 2021 Executive Order on Promoting Competition in the American Economy. These initiatives are designed to prevent the issuance of so-called “incremental” patents on pharmaceutical innovations to lower drug prices by encouraging better competition from generic drugmakers.

EPO Publishes Written Decision Denying Patent Rights to AI System – On Wednesday, July 6, the European Patent Office (EPO) officially published the written decision explaining the reasoning behind its decision last December to deny a pair of patent applications filed on behalf of DABUS AI, the artificial intelligence system developing the inventions claimed in those applications. The published opinion explains that the patent applications must be denied because they do not comply with Article 81, first sentence, of the European Patent Convention (EPC), which requires that an inventor must be a person with legal capacity. 

EGC Revokes EUIPO Invalidation of “BALLON D’OR” Trademark for Entertainment Services – On Wednesday, July 6, the European General Court (EGC) issued a ruling annulling part of a decision by the European Union Intellectual Property Office (EUIPO) to invalidate trademark rights for the mark “BALLON D’OR.” The EGC found that, while Les Éditions P. Amaury, the French media group coordinating the Ballon d’Or award presented annually to the world’s best football player, did not establish use of the mark in connection with telecommunication services and other forms of media covered by the mark, the football award ceremony itself was an entertainment service and the EUIPO was wrong to conclude that Les Éditions P. Amaury did not supply entertainment services in connection with the “BALLON D’OR” mark.

CNIPA Publishes ‘TSINGTAO’ Beer Case as Significant Guidance for Trademark Exhaustion – On Monday, July 4, China’s National Intellectual Property Administration (CNIPA) published the findings of a trademark ruling involving the refurbishing of Tsingtao Brewery beer bottles for resale, which was previously resolved this March by authorities in Shandong Province. The CNIPA is now promulgating as guidance to administrative IP protection agencies within China regarding the rights of secondhand sellers to distribute refurbished goods under the trademark exhaustion doctrine.

Senator Grassley Urges FDA to Use CPB Authorities To Address Deadly Counterfeit Drugs – On Friday, July 1, U.S. Senator Chuck Grassley (R-IA) sent a letter addressed to Attorney General Merrick Garland urging him to exercise all authorities at the U.S. Department of Justice (DoJ), including enforcement mechanisms available through the the DoJ’s Consumer Protection Branch (CPB), in order to address the rising threat posed by imports of counterfeit drugs, especially those from Mexican drug trafficking organizations, which have been found to be laced with deadly substances like fentanyl.

SawStop Petition for Writ Challenges Judicial Doctrine of Non-Statutory Double Patenting – On Wednesday, June 29, table saw maker SawStop Holding LLC filed a petition for writ of certiorari with the U.S. Supreme Court seeking the nation’s highest court to take up its case stemming from an ex parte appeal of a patent application rejection claiming a new band saw despite meeting all statutory conditions for patentability. The petition asks the Supreme Court whether the judiciary has the authority to require a patent applicant to meet conditions for patentability not required by the Patent Act, and whether the judicially created doctrine of non-statutory, or obviousness-type, double patenting is ultra vires.

Rep. Stevens Introduces CHIPPING IN Act to Build Semiconductor Manufacturing Workforce – On Wednesday, June 29, U.S. Representative Haley Stevens (D-MI), along with a bipartisan collection of co-sponsors, introduced H.R. 8251, the Creating Helpful Initiatives to Produce Personnel in Needed Growth Industries (CHIPPING IN) Act of 2022 into the House of Representatives. If enacted, the bill would establish awards to be granted by the National Science Foundation (NSF) to promote microelectronics education and workforce development projects as well as traineeship programs funding research for students pursuing masters or doctoral degrees related to microelectronics.

Barks

Lewis Black Sues Pandora Over Unauthorized Transmissions of Stand-Up Recordings – On Thursday, July 7, American comedian Lewis Black filed a lawsuit in the Central District of California alleging claims of copyright infringement against streaming audio firm Pandora Media for delivering unauthorized transmissions of Black’s stand-up comedy routines to about 103,000 monthly listeners.

USPTO to Streamline Patent, Trademark Assignments Through Online Portal Starting Aug. 1 – On Thursday, July 7, the U.S. Patent and Trademark Office announced that, beginning on August 1, the agency will be streamlining all requests for recording patent and trademark assignments through either the agency’s Electronic Patent Assignment System (EPAS) or its Electronic Trademark Assignment System (ETAS) online portals.

Philips Loses at ITC – On Wednesday, July 6, the International Trade Commission (ITC) affirmed a final initial determination in Koninklijke Philips N.V. v. Thales USA, Inc., finding that patents asserted by Philips against Thales USA were not infringed and unenforceable. Philips sought an exclusion order against Thales to keep it from importing its products—cellular communication modules used in CPAP machines, vehicle monitoring, wireless meters and data terminals—into the U.S. market, but the ITC administrative law judge ultimately found no violation.

Independent Audit of Copyright Office’s Licensing Section Finds No Reportable Issues – On Tuesday, July 5, the U.S. Copyright Office announced the results of an independent audit of financial statements prepared for fiduciary assets administered by the U.S. Copyright Office’s Licensing Section, which found no material weakness in internal control over financial reporting and no reportable noncompliance with legal or regulatory provisions.

Judge Torres Denies Preliminary Injunction in “Republic Records” Trademark Case – On Tuesday, July 5, U.S. District Judge Analisa Torres of the Southern District of New York issued an order denying major music publisher UMG Recordings’ motion for a preliminary injunction against investment firm OpenDeal which would have prevented OpenDeal from operating its financial investment platform under the brand name Republic after Judge Torres found that UMG failed to show consumer confusion regarding its own Republic Records brand.

Motorola, Lenovo, Acer Targeted by Section 337 Complaint on Video Processing Devices – On Tuesday, July 5, the U.S. International Trade Commission announced that California-based intellectual property services firm VideoLabs Inc. filed a complaint seeking a Section 337 investigation into certain video processing devices and products containing the same imported into the U.S. for sale by several firms including Motorola Mobility, Lenovo Group Limited, Acer and ASUSTeK Computer.

EPO Expands Resources in Fighting Coronavirus Search Strategy Platform – On Monday, July 4, the European Patent Office (EPO) announced that it had added 42 additional search strategies to the agency’s Fighting Coronavirus technical platform, many of which relate to medicines of interest as therapeutics for treating COVID-19, bringing the total number of search strategies available through the EPO’s platform to about 350, a three-fold increase from the resources available in the first iteration of the platform.

Judge Bloom Dismisses Trademark Claims Against Individuals in Selfie Museum Case – On Friday, July 1, U.S. District Judge Beth Bloom of the Southern District of Florida issued an order dismissing with prejudice trademark infringement claims filed by Museum of Selfies against several individual defendants involved in the operation of Miami Selfie for failing to allege the necessary elements for making out cases of individual liability against each defendant.

Judge Fischer Affirms $175 Million Arbitration Award for Breach of Trademark Settlement – On Thursday, June 30, U.S. District Judge Dale S. Fischer of the Central District of California issued an order confirming a $175 million arbitration award in favor of Orange Bang and Monster Energy Company, as well as a 5 percent royalty to those firms on all sales of “BANG”-branded creatine-based sports beverages sold by Vital Pharmaceuticals in breach of a 2010 agreement settling trademark infringement claims between those parties.

This Week on Wall Street 

Volkswagen Starts Construction on €2B Battery Factory in Germany – On Thursday, July 7, German automaker Volkswagen announced that it had broken ground on a €2 billion project to construct an electric vehicle (EV) battery production plant in Salzgitter, which will begin production in 2025 and is one of six EV battery factories that Volkswagen plans to construct across Europe over the next decade.

Merck & Co. Mulls $40B Purchase of Seagen to Build Cancer Drug Portfolio – On Thursday, July 7, The Wall Street Journal reported that sources close to the matter indicate that major pharmaceutical developer Merck & Co. is currently exploring options to purchase American biotech firm Seagen Inc. for about $40 billion, a deal that would value Seagen at about $200 per share, in order to expand the company’s cancer drug portfolio beyond its current blockbuster treatment Keytruda.

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: Nanya Technology Corp. (t-295th)
  • Tuesday: None
  • Wednesday: None
  • Thursday: JPMorgan Chase & Co. (t-275th); Taiwan Semiconductor Manufacturing Co. (7th); Telefonaktiebolaget LM Ericsson (26th)
  • Friday: Wells Fargo & Co. (114th)

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Join the Discussion

One comment so far.

  • [Avatar for Pro Say]
    Pro Say
    July 10, 2022 05:22 pm

    Knock knock.

    Who’s there?

    The restoration of patent protection for all fields of innovation in America.

    Go away! Haven’t you been listening to Congress, SCOTUS, and the CAFC?!

    There’s no place for you here!

    Communist China, however, is open for business.

    Take your innovations there.