Other Barks & Bites for Friday, August 12: Canada to Add Resale Royalties to Copyright Law, Fifth Circuit Affirms Exclusion of Evidence in ‘Call of Duty’ Copyright Suit, and Ninth Circuit Rejects Trademark Appeal in Yoga Pants Case

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https://depositphotos.com/273647490/stock-photo-dog-reading-newspaper.htmlThis week in Other Barks & Bites: the Federal Circuit again finds Minerva estopped from challenging the validity of patent claims after remand by the U.S. Supreme Court; the Ninth Circuit affirms a summary judgment ruling nixing trademark infringement claims against lululemon’s Align yoga pants; government officials in the EU and South Korea claim EV tax credit provisions in the Inflation Reduction Act flout international treaties; the Fifth Circuit affirms the exclusion of improper character evidence in a copyright infringement case involving a video game character from the Call of Duty: Black Ops series; Canadian ministers are drafting amendments to that nation’s copyright laws that would create a right to royalties on resales of works by painters, sculptors and other visual artists; and President Biden signs the CHIPS and Science Act into law.


CAFC Again Dismisses Minerva’s Validity Challenge Under Assignor Estoppel Doctrine – On Thursday, August 11, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Hologic, Inc. v. Minerva Surgical, Inc. in which the appellate court affirmed a district court’s application of assignor estoppel doctrine in rejecting a validity challenge from Minerva against patent claims owned by Hologic covering a technology first developed by Minerva’s founder and then assigned to a company acquired by Hologic. The decision comes after the U.S. Supreme Court had previously remanded the case to the Federal Circuit with instructions to determine if the challenged claim, which had been broadened after assignment through a continuation filing, was materially broader than the original claim obtained by Minerva’s founder.

Fifth Circuit Affirms Exclusion of Copying Evidence in “Call of Duty” Copyright Suit – On Thursday, August 11, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Huffman v. Activision Publishing, Inc. in which the appellate court affirmed the Eastern District of Texas’ decision to exclude exhibits provided by Huffman, who wrestles professionally under the name Booker T., as improper character evidence meant to show that Activision Blizzard, who allegedly copied Booker T.’s “G.I. Bro” comic book character to create the character “Prophet” for the video game series Call of Duty: Black Ops, had developed other characters resembling personas from movies and television shows.

CAFC Affirms PTAB Ruling That Asserted Prior Art Was Not Reference “By Another” – On Thursday, August 11, the Federal Circuit issued a precedential decision in LSI Corp. v. Regents of the University of Minnesota in which the appellate court affirmed a final written decision by the Patent Trial and Appeal Board (PTAB). The Federal Circuit agreed that LSI failed to timely raise anticipation arguments regarding one prior art reference and that a second prior art reference did not anticipate challenged patent claims as the relevant portions of that prior art merely summarized information from a report authored by the inventors of the challenged patent, thus the asserted reference was not “by another” under the terms of 35 U.S.C. § 102(e).

CAFC Nixes Reissue Patent for Impermissible Attempt to Recapture Subject Matter – On Wednesday, August 10, the Federal Circuit issued a precedential decision in In re: McDonald in which the appellate court affirmed a patent examiner’s decision at the U.S. Patent and Trademark Office to reject reissue patent claims covering methods for displaying search engine results. The Federal Circuit found that McDonald “impermissibly attempt[ed] to recapture subject matter that the patentee intentionally surrendered during prosecution” by deleting references in claims to a processor limitation that were originally added to overcome an obviousness issue during prosecution.

President Biden Signs CHIPS and Science Act Into Law – On Tuesday, August 9, President Joe Biden signed the Creating Helpful Incentives to Produce Semiconductors (CHIPS) and Science Act, a legislative package authorizing $280 billion in federal funding for various projects supporting the domestic production of semiconductors and basic research in several critical areas of emerging technology, including clean energy and artificial intelligence.

Ninth Circuit Affirms SJ Dismissal of Trademark Claims Against lululemon – On Tuesday, August 9, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Aliign Activation Wear, LLC v. Lululemon Athletica Canada, Inc. in which the appellate court affirmed the district court’s grant of summary judgment to lululemon dismissing trademark infringement claims filed by Aliign. The Ninth Circuit found that the district court properly ruled that no reasonable jury could find for Aliign on its forward infringement, reverse infringement and initial interest confusion claims over yoga pants sold by lululemon.

CAFC Denies HPE’s Mandamus Bid to Transfer Western Texas Case to Massachusetts – On Tuesday, August 9, the Federal Circuit issued an order on petition in In re: Hewlett Packard Enterprise Co. denying Hewlett Packard’s request for mandamus relief to transfer a patent infringement case filed by Intellectual Ventures I from the Western District of Texas to the District of Massachusetts. The appellate court found that, although the district court did weigh the local interest factor in favor of transferring the case, the willing witness factor only slightly favored transfer and the other factors were neutral, which did not support an extension of CAFC precedent on venue transfers from In re: Genentech, Inc.

Canadian Copyright Law Amendments to Include Artist Rights to Resale Royalties – On Sunday, August 7, Canadian news outlet The Globe and Mail reported on a statement from the office of Canada’s Innovation Minister, François-Philippe Champagne, that the country’s Innovation Minister and Heritage Minister, Pablo Rodriguez, would be drafting amendments to Canada’s copyright law including a newly established resale right that would provide painters, sculptors and visual artists with royalties on the resale of their works during the term of copyright. 


CBP, U.S. Chamber Collaborate on Back-to-School Anticounterfeiting Campaign – On Thursday, August 11, U.S. Customs and Border Patrol (CBP) announced that it would be collaborating with the U.S. Chamber of Commerce on a “Shop Smart” anticounterfeiting campaign designed to educate students and parents about the dangers of counterfeit goods during the back-to-school shopping season and ways to spot products that may be counterfeits.

Google Files Pair of Section 337 Complaints at USITC Against Sonos – On Wednesday, August 10, the U.S. International Trade Commission (USITC) announced that it had received a pair of complaints by Internet services giant Google alleging Section 337 violations created by patent infringing audio players and components thereof imported into the U.S. for sale by wireless speaker firm Sonos.

USPTO to Replace Legacy Patent Search Systems With PPUBS – On Wednesday, August 10, the U.S. Patent and Trademark Office published a post on the Director’s Blog announcing that, as of this September, the agency’s recently unveiled Patent Public Search (PPUBS) tool, which enables searches of U.S. patent applications and patent grants, will replace four legacy patent search systems currently in use at the agency.

Precedential TTAB Decision Affirms Examiner Rejection of SMART BEZEL – On Tuesday, August 9, the Trademark Trial and Appeal Board (TTAB) issued a precedential decision affirming a trademark examiner’s rejection of Zuma Array Limited’s application to register the mark “SMART BEZEL” for electronic sensor modules. The TTAB ruled that the mark was merely descriptive within the context of the goods claimed in the trademark application.

Monsanto, Bayer Crop Science Face Patent Suit Over Herbicide-Resistant Corn – On Tuesday, August 9, agricultural chemical firm Corteva Agriscience filed a lawsuit in the District of Delaware alleging claims of patent infringement against both Bayer Crop Science and Monsanto over genetically modified corn plants resistant to Monsanto’s RoundUp herbicide.

Judge Miller Adds $21.6M Attorneys’ Fees Award to Trade Secret Judgment Against IBM – On Monday, August 8, U.S. District Judge Gray H. Miller of the Southern District of Texas granted BMC Software’s motion for attorneys’ fees in a breach of contract and trade secret case against tech giant IBM, which has already resulted in a $1.6 billion judgment against IBM for fraudulently inducing a software license agreement with BMC and then violating that agreement by replacing BMC software from mainframe systems utilized by AT&T with IBM software without paying BMC for a license.

Taylor Swift Files SJ Motion in “Shake It Off” Copyright Suit – On Monday, August 8, singer/songwriter Taylor Swift and other defendants in a copyright case brought by the authors of the 2000 3LW single “Playas Gon’ Play” filed a motion for summary judgment, arguing that the plaintiffs no longer own the copyright to their asserted work, that the evidence does not raise a genuine dispute of copying, and that Swift’s “Shake It Off” makes a transformative use of the lyrics allegedly copied from “Playas Gon’ Play.”

Intel Transfers Portfolio of 5,000 Patent Assets to IPValue – On Monday, August 8, IP management firm IPValue announced that it had acquired a portfolio of 5,000 patent assets from major chip developer Intel, which cover technologies including microprocessors, logic devices, computing systems and semiconductor manufacturing, to be held by a new entity known as Tahoe Research Limited.

This Week on Wall Street

EU, South Korea Challenge EV Tax Credit Bans in Climate and Energy Bill – On Thursday, August 11, news reports indicated that government officials from the European Union and South Korea made public remarks regarding climate and energy provisions of the Inflation Reduction Act, which was passed by Congress this past weekend, raising concerns that provisions preventing foreign produced electric vehicles (EVs) from obtaining tax credits for EV purchasers run afoul of international rules administered by the World Trade Organization (WTO).

Streaming Subscriptions, Theme Park Attendance Buoy Disney’s Quarterly Earnings – On Wednesday, August 10, entertainment firm Walt Disney Company reported earnings for the third quarter of the 2022 fiscal year, beating analyst expectations on Disney+ streaming service subscribers (152.1 million new accounts vs. 147 million expected) and a 72% revenue increase in the company’s theme parks division compared to the same period last year.

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: Wal-Mart Stores, Inc. (t-202nd)
  • Wednesday: Analog Devices, Inc. (t-178th); Cisco Systems, Inc. (40th); Tencent Holdings Ltd. (68th)
  • Thursday: Applied Materials, Inc. (59th)
  • Friday: Deere & Co. (101st)

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Author: damedeeso


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  • [Avatar for Pro Say]
    Pro Say
    August 12, 2022 04:48 pm

    “provisions preventing foreign produced electric vehicles (EVs) from obtaining tax credits for EV purchasers run afoul of international rules administered by the World Trade Organization (WTO).”

    Which they do.

    But then again, so does SCOTUS’ limits on (and the CAFC’s improper great expansion) patentable subject matter.

    And we see what a difference that’s made.

    The U.S. — like most if not all signatories — is only too happy to embrace WTO rules when it suits . . . and fine ignoring them when it doesn’t.

    Surprising . . . absolutely no one.

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