Other Barks & Bites, Friday, August 9: IP Litigation Getting More Expensive, WIPO Launches .CN Dispute Resolution Service

Bites (noun): more meaty news to sink your teeth into.

Barks (noun): peripheral noise worth your attention.

https://depositphotos.com/59960165/stock-photo-dog-beach-chair.htmlAn earlier version of this article incorrectly stated that the Second Circuit Court of Appeals had affirmed a treble damages award in 4 Pillar Dynasty LLC v. New York & Company, Inc. The Court in fact ruled that the district court “did not err by amending the judgment to remove the trebled portion of the profits award.” We regret the error.

This week in Other Barks & Bites: WIPO launches dispute resolution service for Chinese domain names; Morrison Foerster report shows that IP litigation costs are increasing as the number of IP matters being handled are decreasing; the Federal Circuit issues precedential decisions upholding claim construction findings at the ITC and overturning a district court jury verdict finding invalidity for being unsupported by record evidence; the Second Circuit clarifies when profits can be awarded in trademark cases; Uber IP transfer creates $6.1 billion tax break for the company; major football associations call for crackdown on Saudi piracy service; OPPO inks patent agreements with Intel and Ericsson; and Broadcom acquires Symantec’s enterprise security business.


Second Circuit Clarifies That Actual Consumer Confusion is Not Prerequisite to a Profits Award– On Thursday, August 8, the U.S. Court of Appeals for the Second Circuit issued a decision in 4 Pillar Dynasty LLC v. New York & Company, Inc. in which the appellate court clarified that plaintiffs don’t need to prove actual consumer confusion to be entitled to a profits award.

Eleventh Circuit Upholds Trademark Infringement Ruling for Luxottica – On Wednesday, August 7, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Luxottica Group v. Airport Mini Mall, LLC which affirmed a district court’s ruling that discount mall operators had committed contributory trademark infringement by leasing to subtenants who were selling counterfeit Ray-Ban eyewear.

Morrison Foerster Report Shows IP Matters Becoming More Complex, Expensive – On Wednesday, August 7, global law firm Morrison Foerster issued a report on the state of intellectual property litigation, which showed that annual IP litigation expenditures have increased from $1.7 billion in 2005 to $3.3 billion in 2019, while the number of IP matters being handled by companies has decreased by 27% over the past four years.

WIPO Launches Domain Name Dispute Resolution Services for China – On Wednesday, August 7, the World Intellectual Property Organization (WIPO) announced that its Arbitration and Mediation Center is the first non-Chinese entity authorized by the Cyberspace Administration of China to provide dispute resolution services for both the .CN domain and the .?? country-code Top Level Domain (ccTLD). 

Federal Circuit Affirms ITC Claim Construction Leading to Finding of No Infringement – On Tuesday, August 6, the U.S. Court of Appeals for the Federal Circuit handed out a precedential decision in Ajinomoto Co., Inc. v. International Trade Commission in which the appellate court upheld claim constructions made during a Section 337 investigation that led the ITC to determine that E. coli strains imported by CJ ChielJedang didn’t infringe on Ajinomoto’s asserted patent claims.

Federal Circuit Overturns Invalidity Ruling from Central District of California – On Tuesday, August 6, the Federal Circuit issued a precedential decision in ATEN International Co., Ltd. v. Uniclass Technology Co., Ltd. in which the court overturned the Central District of California’s findings that an ATEN patent was invalid as anticipated, as the jury verdict of anticipation wasn’t supported by record evidence as to either prior art reference asserted by Uniclass.

U.S. Treasury Authorizes IP Protections in Venezuela – On Monday, August 5, the U.S. Treasury Department issued a General License that explicitly authorizes U.S. companies to obtain patents, trademark, copyright and other forms of intellectual property protections in Venezuela, addressing an issue created by federal government rules prohibiting transactions using cryptocurrency developed by the Venezuelan government. 

Enzo Files Rehearing Petition at Federal Circuit Over DNA Testing Patents – Enzo Life Sciences has filed a petition for rehearing with the Federal Circuit asking the appellate court to reconsider a panel decision issued last month which affirmed a district court’s invalidation of a pair of DNA testing patents for lack of enablement. 


NIH Considering Exclusive Patent License for Radiotherapeutic Cancer Treatment – On Thursday, August 8, the National Institutes of Health (NIH) issued a public notice in the Federal Register indicating that the agency was contemplating granting an exclusive license to patent assets owned by the federal government covering radiotherapy methods used to treat glioblastoma multiforme or small cell lung cancers.

FIFA, UEFA Call On Saudi Government to Address beoutQ Piracy – On Thursday, August 8, IPProMagazine.com reported that major football associations including FIFA, UEFA, Bundesliga, Premier League and Serie A have called upon Saudi Arabian authorities to take action against illegal streaming provider beoutQ, which streams broadcasts of live matches in violation of copyright.

Oyster Bar Files Trademark Suit Against Viacom Over Reality TV Show – On Tuesday, August 6, a lawsuit alleging claims of trademark infringement was filed in the Northern District of Florida by the owners of the Flora-Bama lounge and oyster bar against media conglomerate Viacom over the MTV reality TV show “Floribama Shore.”

Federal Circuit Upholds PTAB Invalidation of WiLAN Patents – On Monday, August 5, the Federal Circuit issued a pair of decisions, one of them a Rule 36 summary affirmance, which upheld the invalidation of semiconductor patents owned by WiLAN subsidiary Collabo Innovations which had previously been asserted against Sony. 

$8.2 Million Patent Infringement Judgment for Acantha Halved by District Court – On Monday, August 5, U.S. District Judge William Griesbach of the Eastern District of Wisconsin entered a ruling which cut a $8.2 million jury verdict in half after Judge Griesbach determined that expert testimony entered by Acantha erroneously interpreted claim construction regarding one of two accused orthopedic implant assemblies manufactured by Depuy Synthes. 

https://depositphotos.com/10882248/stock-photo-cross-breed-dog-4-years.htmlOPPO Announces Global Agreements to Wireless Patents With Intel, Ericsson – On Monday, August 5, Chinese smartphone maker OPPO announced a patent transfer agreement with Intel involving 58 cellular mobile communications patents and a rights agreement with Ericsson involving more than 500 patents in the U.S., Europe, China and India in an effort to grow business in global markets.

Procter & Gamble Faces Copyright Suit Over Old Spice Jingle – On Monday, August 5, a copyright lawsuit was filed in the Central District of California by H. Scott Salinas who alleges that consumer goods giant Procter & Gamble licensed a whistle jingle created by Salinas for use on TV commercials for Old Spice deodorant but that the company created a similar melody copying Salinas’ jingle once the license expired.

Cellino & Barnes Trademark Suit Tossed Out By Judge – On Monday, August 5, District Judge Elizabeth Wolford of the Western District of New York dismissed a trademark lawsuit filed on behalf of personal injury law firm Cellino & Barnes by Stephen Barnes who was attempting to prevent a law firm run by family members of his partner Ross Cellino from using the name Cellino & Cellino. 

This Week on Wall Street

Broadcom to Acquire Symantec Cybersecurity Business for $10.7 Billion – On Thursday, August 8, semiconductor and infrastructure development firm Broadcom announced that it had agreed to purchase Symantec Corporation’s enterprise security business in a cash deal valued at $10.7 billion.

Uber Transfers IP to Dutch Subsidiary to Create $6.1 Billion Tax Deduction – On Thursday, August 8, Bloomberg reported that ride hailing firm Uber Technologies had transferred intellectual property from a Bermuda subsidiary to one based in the Netherlands, generating a $6.1 billion tax deduction resulting from new European Union tax rules affecting multinational corporations.

Quarterly Earnings– The following firms identified among the IPO’s Top 300 Patent Recipients for 2018 are announcing quarterly earnings next week (2018 rank in parentheses):

  • Monday: Foxconn Technology Co. (t-247th); HTC Corp. (t-233rd); LG Corp. (7th); Wistron Corp. (t-266th)
  • Tuesday: None
  • Wednesday: Cisco Systems Inc. (40th); NetApp, Inc. (t-292nd); Tencent Holdings Ltd. (110th)
  • Thursday: Applied Materials Inc. (t-69th); Lenovo Group Ltd. (t-173rd); Nvidia Corp. (t-156th)
  • Friday: Deere & Co. (t-123rd); Weatherford International plc (t-282nd)

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