Patent Filings Roundup: Disney Displeasure Cruise; WSOU Investments’ Recordation Problems; and Chinese Company Targets Chinese Counterfeiters in U.S. Court
A slightly higher than average 38 petitions were filed at the U.S. Patent and Trademark Office (USPTO) last week, all inter partes reviews (IPRs), a number again propped up by five more patent filings against the prolific Craig Etchegoyen-led WSOU. That entity’s near-200 patents and 200 lawsuits brought in the district court represent roughly 5% of all 2020 litigation, and they show no signs of slowing their aggressive stance. District court litigation was roughly stable, with a few new campaigns popping up as outlined below. It’s worth noting—not because it’s evidence of any trend or even statistically significant, but just given the rarity—that for the first time since I started writing these updates more than a year ago, the USPTO did not issue any Fintiv trial date or other procedural denials.
The arts and entertainment industry has boosted South Korea’s economy and produced some of the country’s key products and exports. The country’s population of 51 million people was the sixth largest music market in the world in 2020, according to IFPI’s Global Music Report 2021. Also in 2020, South Korea had a $160 million surplus in cultural and arts intellectual property (IP)-related assets trade, according to South Korea’s Maeil Business Newspaper. It was the first time a surplus in such a category was registered. However, entertainment-related IP assets have been big Korean exports for years: in 2019, the country exported $8.62 billion in copyright-protected content, according to Yonhap News Agency. South Korea also has proven itself to be a prolific environment for creating music, film, content, and experiences for fans, and also to be great at making the most of their intangible assets through IP strategies.
Solutions for Promoting Patent Practitioner Diversity at the USPTO in the Battle Against Systemic Racism
A critical battle against systemic racism currently engages the United States. Patent practitioners across the country—from the University of Minnesota Law School (a mere 2.5 miles from the location of the killing of George Floyd) to the U.S. Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia (another 1,000 miles away)—must cast a critical eye towards our profession to identify systemic barriers in the patent field.
NYIPLA Amicus Brief in Ericsson v. Samsung Advocates the Adjudication of U.S. Patent Rights by U.S. Courts
On April 9, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief in Ericsson Inc. v. Samsung Electronics Co., Ltd., No. 2021-1565, urging a panel of the U.S. Court of Appeals for the Federal Circuit to balance U.S. interests in adjudicating U.S. patent rights against the rule of comity, with respect to an order by a Chinese court restricting the litigation of certain U.S. patents in U.S. courts. Senator Thom Tillis (R-NC), Judge Paul Michel and former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu also filed an amicus brief in the case on the same day in support of Ericsson…. Although the NYIPLA did not take a position on the exact scope and content of Judge Gilstrap’s order, it filed an amicus brief to highlight our country’s “strong policy interest in allowing U.S. patent rights to be adjudicated in U.S. courts” and to point out that “[a]llowing China to exercise exclusive dominion over U.S. patent rights and royalty rates and to preclude enforcement of U.S. patent rights within the United States would cause a severe reduction in the value of U.S. patents and jeopardize the very underpinnings of the U.S. patent system.”
Most commentators agree that Google v. Oracle is the most important copyright decision of the last 25 years (since Campbell v. Acuff-Rose Music). But what if the Court got it wrong? The Court has not always done well with issues of technology (the Sony v. Universal “Betamax” case being an exception), and the majority decision in Google v. Oracle appears to be more of the same. For many reasons, the powerful dissent from Justices Thomas and Alito may be the better opinion.
Though the parties have quickly settled their case, the question remains open: was Lil Nas X’s “Satan Shoe” an exercise of free speech or a trademark violation? What we do know is that sneaker giant Nike’s complaint filed in the Eastern District of New York on March 29, 2021 alleged a dispute of biblical proportions against Brooklyn art collective MSCHF Product Studio, Inc. Nike targeted its own Air Max 97 shoe, which it claimed MSCHF and its collaborator Lil Nas X (who was not named in the lawsuit) materially altered to feature an upside down cross, a pentagram, and an injection of human blood into the sole to create the “Satan Shoe” – 666 of them to be exact. The Satan Shoe still displays Nike’s famous Swoosh, which inspired calls to boycott the brand for its alleged association with the controversial shoes. Nike asserted claims of trademark infringement, trademark dilution, false designation of origin, and unfair competition, and sought a temporary restraining order, a permanent injunction, and damages.
Shortly after we posted about Moderna, Inc.’s October 2020 pledge not to enforce its COVID-19-related patents during the pandemic, the United States Food & Drug Administration (FDA) granted emergency regulatory approval for two COVID-19 vaccines produced by Moderna and BioNTech (with Pfizer), making these groups the first to ever enter the commercial market with mRNA-based therapies. This little-known and never-before-approved mRNA technology has since been widely administered and represents a primary weapon being used to defeat the pandemic. While this effort carries on, market players are confident that COVID-19 is but one of many indications that the mRNA technology platform might be utilized for, and that approval of the mRNA vaccines could open the door for the approval of other mRNA-based medicines, creating a wide range of new markets. With the anticipated increase in market activity and competition, we will provide an overview of the mRNA IP and competitive landscape in a series of three posts in the context of certain key players’ patent positions, drug pipelines, strategic relationships, and other attributes. These posts are based on publicly available information, are non-exhaustive, and do not identify all market players or potential market players in this space.
Patent Filings Roundup: Acacia Gets Another Fintiv Boost; More Vape IPRs Filed; Adenovirus PGR Challenge; IP Edge Files Dozens of New Complaints
District court complaints rose to 93 this week, while Patent Trial and Appeal Board (PTAB) cases fell to 28 (27 inter partes reviews [IPRs] and a post grant review [PGR]), a number propped up in part by Google filing a number of petitions against serial assertor Express Mobile, LLC and ZTE filing a few more against the perennial WSOU. Additional Facebook petitions were denied against Western District of Texas assertor, Onstream Media Corporation; Google filed a spate of petitions against longtime serial assertor Express Mobile; and there were a not-surprising-but-still-remarkable number of IP Edge complaints filed last week, as seen below, from a wide range of subsidiaries.
It’s hard to believe that, not too long ago, alliances between the public and private sectors were unheard of unless the government was picking up the entire tab. After World War II, the policy was that if the government funded even a small percentage of the research, it would take any resulting inventions away from those who created them to make the discovery readily available to anyone and everyone. While that might sound noble, it was a death knell for commercialization because then, like now, these discoveries required significant private sector effort and investment to turn into commercial products. The result was that not only were few government funded inventions ever developed, but even worse, companies avoided alliances with government funded institutions.
Computer boilerplate – such as including “a processor and a memory” in claims – is commonplace in patent applications. However, the recent case of In re Stanford shows that this can be a double-edged sword, having the potential to both undermine an application and to ruin an opinion that could otherwise have shed light on several of the thorniest open questions in patent eligibility jurisprudence. Skeptical that such a common practice could be so counterproductive? Read on.
Much has been said about how 5G will better use the airwaves, giving wings to new communications between people and between devices. Little has been said though about how 5G could change markets and industries. The equipment market for the radio access network (RAN) is a good example of just one market that is now caught in the updraft of such change. Another market bound to rise is the market for patent licensing—and, in particular, standard essential patent licensing for 5G RAN. To help make sense of the 5G patent licensing market, we have developed an AI-based 5G landscaping tool to help identify and weigh the relative patent portfolios (OPAL) and an indexed repository of all technical contributions made to 3GPP 2G-5G standardization work (OPEN).
Peloton Wants to Cancel the Mark SPINNING for Being Generic – the TTAB Has Rarely Granted Such a Petition
Peloton’s petitions to cancel Mad Dogg’s registered trademarks for SPIN and SPINNING (in Classes 41 and 28) for genericism ask the Trademark Trial and Appeal Board (TTAB) to do what it has rarely done before – cancel marks that were distinctive at the time of filing for losing distinctiveness due to the public’s overuse of the terms. While the TTAB has refused to register or cancel registered marks that were generic terms at the time the trademark applications were filed, the TTAB has rarely cancelled a mark that was distinctive when registered, but over time, became a generic term and lost its distinctiveness, as Peloton argues in its petitions. For example, “Kleenex” is often referenced when discussing generic brands, and while Kimberly-Clark Corporation has faced petitions for cancellation of its “Kleenex” mark, “Kleenex” has remained a registered mark of Kimberly-Clark Corporation since 1924.
The COVID-19 pandemic has caused a dramatic shift in how IP professionals manage their patent and trademark portfolios. Fortunately, many IP law firms and corporate IP departments have survived and managed well in this new environment. They are even showing great optimism as the industry trends toward greater consolidation and tighter global integration. Nonetheless, major concerns remain, challenging both IP owners and their advisers to find more effective ways to solve their portfolio management challenges while focusing on the long-term strategic value of IP.
Cryptocurrencies are virtual currencies based on blockchain technology that uses a network of computers to keep a public ledger of past transactions. The most popular cryptocurrency is Bitcoin, which some believe could replace bonds and serve as a reserve currency in the future. The value of Bitcoin has skyrocketed over recent years, as major companies are buying into it. In February 2021, Tesla Inc. bought $1.5 billion worth of Bitcoin and announced plans to start accepting the currency as payment for its electric vehicles. Since Bitcoin has the potential to be used directly in commercial transactions, fintech companies are developing and patenting related technologies.
Patent Filings Roundup: No Fracking IPRs; New Magnetar NPE Identified; Board Rules on Scope of Adverse Judgment
With a pretty-standard 30 Patent Trial and Appeal Board (PTAB) petitions and 70+ district court complaints filed this week, it’s worth noting that the steady stream of IP Edge and Rothschild suits hasn’t let up, that the WSOU matters continue to bump up the numbers in both, and that Magentar Capital-related petitions and cases continue to flourish. To wit, ZTE pulled the trigger on a few inter partes reviews (IPRs) against some of the WSOU patents asserted against them, showing a little backbone against the frequent assertor; Verizon has continued to trickle out the IPRs against Huawei; Gree earned another few denials under the Board’s discretion (and have now on a per-named-entity basis probably the biggest beneficiaries of it). New NPE of unknown origin Sidekick Technology, LLC was DJ’d by a band of online car sales sites in 2:21-cv-06737 over 12 patents; and the same time that Samsung won some IPRs against Solas OLED, the Magnetar-backed entity hit them back (again) in District court.