Other Barks & Bites, Friday, September 27: CAFC Partially Vacates PTAB Decision, Colarulli Appointed to Head LESI, and Copyright Office Seeks Comments on Music Modernization Act

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

Barks (noun): peripheral noise worth your attention.

https://depositphotos.com/58643025/stock-photo-funny-french-bulldog-reading-newspaper.htmlThis week in Other Barks & Bites: the Federal Circuit issued a precedential decision reversing the PTAB regarding proper primary reference and CBM review findings; USPTO Director Iancu told IPO Annual Meeting attendees that subject matter eligibility guidelines are working; an EPO-EUIPO report shows IP-intensive industries contribute nearly half of EU GDP; the producers of the Broadway musical Hamilton have filed a motion to dismiss copyright claims filed in connection with a museum exhibit; eBay CEO Devin Wenig stepped down; the Ninth Circuit heard oral arguments in the en banc rehearing of the “Stairway to Heaven” copyright case; the U.S. Copyright Office is seeking public comments regarding the blanket licensing structure under the Music Modernization Act; and Sandoz has moved forward with a PTAB challenge on patent claims covering AbbVie’s Imbruvica.


CAFC Affirms-in-Part, Vacates-in-Part, Remands PTAB Finding on Proper Primary Reference – On Thursday, September 26, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Campbell Soup Company v. Gamon Plus where the majority vacated-in-part a decision by the Patent Trial and Appeal Board (PTAB) to uphold the validity of  design patent claims as non-obvious. The CAFC found that the PTAB erred in finding that an asserted piece of prior art was not a proper primary reference but was correct in finding that another reference was not proper.

LESI Appoints Dana Colarulli Executive Director – The Licensing Executives Society International (LESI) announced this week that Dana Robert Colarulli will serve as its new Executive Director. Colarulli most recently served as Director of the Office of Governmental Affairs at the USPTO as well as a member of the USPTO Executive Committee.

Director Iancu Remarks on Subject Matter Eligibility Guidelines, AI Inventions – On Wednesday, September 25, U.S. Patent and Trademark Office Director Andrei Iancu made remarks at the annual Intellectual Property Owners Association Annual Meeting in which he stated that the agency’s patent eligibility guidelines are working as intended and that the guidelines have reduced rejections of patent applications covering artificial intelligence inventions.

New IPO Toolkit Aims to Improve Gender Parity in Innovation – The Intellectual Property Owners Association this week released its Gender Diversity in Innovation Toolkit. Developed by IPO’s Women in IP Committee, the toolkit compiles data from the USPTO, WIPO, NSF and the Institute for Women’s Policy Research, along with self-evaluation tools and sample communications and presentations, and is meant to be “a blueprint for companies to assess and cultivate gender parity in innovation,” according to a press release.

IP-Intensive Industries Contribute Nearly Half of European GDP – On Wednesday, September 25, a joint report was released by the European Patent Office (EPO) and the European Intellectual Property Office (EUIPO) showing that industries making intensive use of intellectual property rights contribute €6.6 trillion, or about 45%, of European gross domestic product (GDP) and contribute 63 million jobs to the region.

Eleventh Circuit Upholds Contempt Charges, Attorneys’ Fee Award in Trademark Case – On Tuesday, September 24, the U.S. Court of Appeals for the Eleventh Circuit issued a decision affirming a district court’s decision to charge Velex Corporation and its officers with civil contempt of court and entering an award of nearly $46,500 in attorneys’ fees against them for their unwillingness to comply with a previous injunction preventing them from selling trademark-infringing “Gorilla Gym” branded children’s play equipment.

Copyright Office Seeks Public Comment on MMA Blanket Licensing Structure – On Tuesday, September 24, the U.S. Copyright Office published a notification of inquiry in the Federal Register announcing that the agency would seek public comments on various aspects of the blanket licensing structure under the Music Modernization Act, including collection efforts by both digital music providers and copyright owners.

Ninth Circuit Hears Oral Arguments En Banc in “Stairway to Heaven” Case – On Monday, September 23, the U.S. Court of Appeals for the Ninth Circuit heard oral arguments in the copyright case brought by a representative for the estate of Randy Wolfe, the former front man of Spirit, against the rock band Led Zeppelin. Counsel representing Spirit contended that the deposit copy of the band’s song “Taurus” registered with the U.S. Copyright Office was flawed, leading many commentators to believe that Led Zeppelin will likely win this round of litigation.

USPTO Sued in FOIA Lawsuit Over Employee Treatment – On Monday, September 23, trademark filing firm LegalForce RAPC Worldwide filed a lawsuit in the Northern District of California against the USPTO accusing the agency of failing to respond to Freedom of Information Act (FOIA) requests regarding favorable treatment the USPTO allegedly gave to a former employee during an investigation on signature rule violations.


FHWA Revises Regulations Allowing Use of Patented Materials in Highway Projects – On Friday, September 27, the Federal Highway Administration (FHWA) published a final rule in the Federal Register announcing that it was revising regulations codified under 23 C.F.R. § 635.411 to give states greater flexibility in using patented or proprietary materials in highway projects aided by the federal government.

Trade Secret Case Against Aerojet Rocketdyne Moves Forward – On Thursday, September 26, U.S. District Judge Frank Geraci of the Western District of New York denied-in-part a motion to dismiss filed by Aerojet Rocketdyne, allowing some trade secret claims filed by ValveTech alleging a misuse of proprietary information regarding valve tech to move forward toward trial.

PTAB Institutes IPR Against AbbVie’s Imbruvica Patent – On Thursday, September 26, the PTAB decided to institute an inter partes review (IPR) proceeding against an AbbVie patent covering the cancer drug Imbruvica, specifically covering a method for treating a condition known as “graft versus host disease,” based on a petition for IPR filed by Sandoz, a division of Novartis. 

Screenwriter Files Suit Against Paramount Over What Men Want – On Wednesday, September 25, screenwriter Joe Carlini filed a copyright suit in the Central District of California against Paramount Pictures and other defendants involved in producing the 2019 film What Men Want, which allegedly shares similarities with a screenplay Carlini tried to get produced in 2015. 

https://depositphotos.com/10882248/stock-photo-cross-breed-dog-4-years.htmlUSPTO Announces Login Changes to TEAS – On Monday, September 23, the USPTO announced that customers using the online Trademark Electronic Application System (TEAS), or the international version of TEAS (TEASi), will need to complete a two-step authentication requirement for logging into those services using their USPTO.gov accounts beginning on October 26.

Bandai Namco Files Copyright Suit Over Unauthorized Ms. Pac-Man Game – On Friday, September 20, Bandai Namco filed a trademark infringement complaint in the Northern District of California against AtGames Holdings, which it alleges produced a Ms. Pac-Man video game in violation of its license to create a Pac-Man game.

Hamilton Producers File Motion to Dismiss in Copyright Case Over Museum Exhibit – On Friday, September 20, Hamilton Exhibition, an entity formed by the producers of Hamilton: An American Musical, filed a motion to dismiss in the Southern District of New York asking the court to throw out copyright infringement and fraudulent misrepresentation claims brought by the firm charged with designing an exhibit featuring Alexander Hamilton and displayed on Chicago’s Northerly Island.

“The Clash” Files Copyright Suit Against Wilson Over Tennis Rackets – On Friday, September 20, Dorisimo Limited, an entity created by surviving members of the British rock band “The Clash,” filed a copyright suit in the Central District of California against Wilson Sporting Goods over that company’s Clash brand of tennis rackets.

This Week on Wall Street

U.S. GDP Growth Slips to 2 Percent in Second Quarter – On Thursday, September 26, the U.S. Department of Commerce released economic statistics for 2019’s second quarter which showed that the increase in the U.S. GDP had dropped to 2 percent, a decrease from the 3.1 percent growth seen in the first quarter of 2019 and well below the 2.9 percent GDP growth experienced through 2018.

Peloton Stock Drops 11 Percent After Company’s IPO – On Thursday, September 26, shares of Peloton stock were down 11 percent after the company began public trading that day at $27 per share, $2 per share below its original initial public offering (IPO) price.

eBay CEO Wenig Steps Down Amid Plans of Asset Sales – On Wednesday, September 25, eBay announced that CEO Devin Wenig had decided to resign ahead of the company completing a review of its asset portfolio to determine whether it will sell off major divisions such as StubHub or eBay Classifieds Group.


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