Other Barks & Bites, Friday, September 13: CASE Act Moves Out of Committee, Iancu Discusses SEPs and PTAB Designates Two Decisions as Precedential

This week in Other Barks & Bites: the Federal Circuit issued precedential decisions regarding secondary considerations of non-obviousness, limits to design patents and collateral estoppel of antitrust claims in patent cases; the CASE Act moved out of the House Judiciary Committee towards a floor vote; AIPLA reported increasing prices for trade secret and pharmaceutical patent lawsuits; the PTAB designated a pair of precedential decisions that limit IPR institutions; the DOJ identified two foreign nationals in GE Aviation trade secret case; LeBron James and Ohio State University lost their respective trademark bids; USPTO Director Iancu talked about balancing innovation and preventing hold-up in the SEP context; Google agreed to a $1 billion fine over European tax evasion; and the UKIPO reported lower patent application filing levels for 2018.

Bites

CAFC Affirms Limitation of Design Patent to Claimed Chair – On Thursday, September 12, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Curver Luxembourg, SARL v. Home Expressions Inc. which upheld a district court’s dismissal of design patent infringement claims against Home Expression for its use of an ornamental design in baskets after determining that the claimed ornamental design was limited to chair patterns.

CAFC Affirms PTAB Non-Obviousness Finding Based on Industry Praise – On Thursday, September 12, the Federal Circuit issued a precedential decision in Henny Penny Corporation v. Frymaster LLC affirming a final written decision by the Patent Trial and Appeal Board (PTAB) which found challenged patent claims covering a deep fryer as non-obvious. The CAFC held that the PTAB properly credited evidence of secondary considerations, including a pair of industry awards earned by the covered deep fryer technology. 

PTAB Designates Two New Precedential Decisions Limiting Institution Decisions – On Monday, September 9, the Patent Trial and Appeal Board (PTAB) designated two decisions issued by the agency within the past year as precedential. This includes General Electric Company v. United Technologies Corporation, issued this July, which denied institution of an inter partes review (IPR) proceeding because the patent owner had already disclaimed all challenged claims, and Infiltrator Water Technologies, LLC v. Presby Patent Trust, issued last October, which vacated a decision to institute IPR as untimely under the Section 315(b) time-bar in light of the Federal Circuit’s ruling in Click-to-Call v. Ingenio because of a previous complaint asserting patent infringement which had been dismissed without prejudice for lack of personal jurisdiction.

Director Iancu Makes Remarks at Standard-Essential Patents Conference – On Tuesday, September 10, U.S. Patent and Trademark Office Director Andrei Iancu delivered prepared remarks at the Standard-Essential Patents Strategy Conference hosted at the Solvay Business School in Brussels, Belgium. In his remarks, Director Iancu discussed the USPTO’s review of SEP policy issues in light of the U.S. Department of Justice’s withdrawal from a 2013 policy statement on SEPs, saying that, “[I]f we are to state a new policy… any policy statement should incentivize good faith negotiations and dis-incentivize threats of either patent hold-up or patent hold-out.” 

CASE Act Passes Out of House Judiciary Committee Towards Floor Vote – On Tuesday, September 10, the House Judiciary Committee passed the Copyright Alternative in Small-Claims Enforcement (CASE) Act out of committee. Both the Senate and House versions are ready for a floor vote and industry sources indicate that Congress could vote on the bill prior to the October recess. 

AIPLA Report Shows Increasing Costs for Trade Secret and Pharma Patent Lawsuits – On Tuesday, September 10, Bloomberg Law reported that the American Intellectual Property Law Association’s 2019 Report of the Economic Survey indicated that the median price of pharma patent cases rose 67 percent between 2015 and 2019 while trade secret cases involving more than $25 million in risk had tripled in cost over the same period of time.

CAFC Affirms Dismissal of Capitol One’s Antitrust Claims in IV Patent Case – On Tuesday, September 10, the Federal Circuit issued a precedential opinion in Intellectual Ventures I LLC v. Capital One Financial Corp., upholding a district court judge’s grant of summary judgment of antitrust claims raised by Capital One after determining that those claims were collaterally estopped by similar claims raised in a separate district court case between the two parties.

Reports Indicate That USPTO Has Scrapped Demands for Proof of Legal Residence – On Friday, September 6, Boston-based media outlet WGBH reported that the USPTO has issued new guidelines to its trademark examination staff that dropped previous requirements to ask foreign trademark applicants using a U.S. address to provide proof of legal permanent residence in the United States; the rules now require only proof of residence at the U.S. address.

Barks

Unsealed DOJ Complaint Shows Trade Secret Claims Against Italian, Russian Nationals – On Thursday, September 12, the U.S. Department of Justice unsealed a criminal complaint which showed that two men, one Italian and the other Russian, were charged with trade secret theft for attempting to steal jet engine engineering designs from GE Aviation. 

Google Wins German Copyright Case Over News Snippets – On Thursday, September 12, the Court of Justice of the European Union (ECJ) issued a ruling which found that German news publishers couldn’t demand copyright fees going back to 2013 from Internet giant Google for publishing news snippets online because Google hadn’t been made aware of the German copyright regulation on which the lawsuit was based.

LeBron James Loses “Taco Tuesday” Trademark Bid – On Wednesday, September 11, the USPTO rejected a trademark application filed by NBA superstar LeBron James to cover the use of “Taco Tuesday” in commerce. A spokesperson for James said that the application was filed to ensure that the basketball player couldn’t be sued for his use of the phrase.

“THE” Trademark Application from Ohio State Receives Initial Refusal – On Wednesday, September 11, the USPTO issued a nonfinal office action refusing a trademark application filed by The Ohio State University that would cover the use of “THE” on hats, clothing and other apparel. The agency found that the mark was merely ornamental, doesn’t indicate the source of the clothing and doesn’t distinguish the university’s product from others.

UKIPO Reports 5 Percent Decline in Patent Application Filings – On Tuesday, September 10, the UK Intellectual Property Office issued a report showing that the agency received 20,391 patent applications during 2018, a decrease of 5 percent from 2017’s totals. The UKIPO also reported a 12 percent decrease in trademark applications and a 26 percent decrease in design applications.

Nintendo Sues Another ROM Website for Copyright Infringement – On Tuesday, September 10, Nintendo of America filed a lawsuit alleging claims of copyright infringement in the Central District of California against the operators of the website RomUniverse.com, accusing the website of hosting a major online hub for pirated Nintendo video games, the latest in the Japanese video game developers efforts to curb online piracy of its games.

Ninth Circuit Vacates Punitive Damages in John Steinbeck Estate Case – On Monday, September 9, the Ninth Circuit decided an appeal arising out of a dispute over the intellectual property behind the works of author John Steinbeck, upholding a $5.25 million compensatory damages award to the estate of Steinbeck’s wife while vacating a $7.9 million punitive damages award entered against Gail Steinbeck and the estate of her husband Thomas Steinbeck, the author’s son.

Sixth Circuit Awards Attorneys’ Fees to Willie Nelson Photographer – On Monday, September 9, the U.S. Court of Appeals for the Sixth Circuit awarded attorneys’ fees to a photographer who owned the copyright to a 2009 picture of Willie Nelson after he prevailed in a copyright case against a radio station that misused the Nelson photo.

This Week on Wall Street

Google Agrees to Settle French Tax Probe for $1.1 Billion – On Thursday, September 12, Reuters reported that Google that the company has agreed to settle charges of tax evasion with regulators in France for nearly 1 billion euros ($1.1 billion USD), ending a dispute over whether Google used its Europe headquarters in Ireland to shelter certain taxable business activities.

Google Antitrust Probe Will Focus on Advertising Business – Recent news reports indicate that the antitrust probe of Google that is being pursued by a collection of state’s attorneys general will focus on the company’s lucrative advertising business which is supported by activities such as requiring those interested in advertising on Google’s platform to use other Google services related to ad placement.

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: Oracle Corp. (52nd)
• Tuesday: Adobe Inc. (102nd)
• Wednesday: None
• Thursday: None
• Friday: None

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