Other Barks & Bites, October 5: USPTO Rulemaking Updates, Federal Circuit Weighs in on 101, and DOJ Tells SCOTUS to Deny Google Appeal

This past week in Other Barks & Bites: the Federal Circuit upholds the invalidation of method of manufacture claims as being directed to a natural law over a dissent from Judge Moore; the USPTO delays the effective date for mandating electronic trademark application submissions and issues a proposed rulemaking on Patent Term Adjustments in light of Supernus; UKIPO report shows that women inventors represent only 12.7 percent of inventors worldwide; trademark dispute leads street artist Banksy to open a retail store; the screenwriter of The Terminator files a copyright termination notice; Tesla stock drops after missing analyst expectations on car sales; Seinfeld beats copyright case over Comedians in Cars Getting Coffee; and the Department of Justice tells the Supreme Court not to review Google’s appeal over the ability to copyright Java code.

Bites

CAFC Affirms Invalidation of Patent Claims Covering Propeller Shaft Manufacture – On Thursday, October 3, the Federal Circuit published a precedential decision in American Axle & Manufacturing v. Neapco Holdings in which the majority affirmed a district court’s invalidation of patent claims covering a method for manufacturing driveline propeller shafts because it claimed a natural law without claiming any additional physical structure or steps for achieving the natural law’s result. Circuit Judge Kimberly Moore dissented, claiming that the majority reduced the Alice/Mayo test to a single inquiry on natural laws that disregards evidence of non-conventionality, and Rep. Doug Collins (R-GA) took the unusual step of issuing a press release to criticize the analysis as “flawed”.

USPTO Proposes Rulemaking After CAFC’s Supernus Decision – On Friday, October 4, the U.S. Patent and Trademark Office published a notice of proposed rulemaking in the Federal Register for revising the agency’s rules of practice for patent term adjustment (PTA) under 35 U.S.C. § 154(b) in light of the U.S. Court of Appeals for the Federal Circuit’s decision in Supernus Pharm. v. Iancu, where the court held that a PTA reduction must be equal to the time during which a patent applicant failed to engage in reasonable efforts to conclude an application’s prosecution. 

Women Inventors Only Represent 12.7% of All Inventors Worldwide – On Wednesday, October 2, the UK Intellectual Property Office (UKIPO) published a report on gender profiles in worldwide patenting which showed that, although women inventors as a percentage of all inventors has doubled since 1998, female inventors still only represent 12.7 percent as a share of all inventors listed on patents filed across the globe.

CAFC Vacates Post-Grant Review Determinations Based on PTAB’s Abuse of Discretion – On Tuesday, October 1, the Federal Circuit issued a precedential decision in Honeywell International Inc. v. Arkema Inc. that vacated and remanded post-grant review (PGR) proceedings at the Patent Trial and Appeal Board (PTAB) after finding that the PTAB abused its discretion in blocking Honeywell’s attempt to correct a mistake in the patent’s chain of priority, which allowed Arkema to petition the PTAB for the PGR proceeding.

USPTO Delays Date for Mandating Electronic Filing of Trademark Applications – On Wednesday, October 2, the USPTO published a final rule in the Federal Register delaying the effective date of the rule requiring that trademark applications and all related submissions be submitted electronically. The rule, which was supposed to become effective on October 5, will now be effective on December 21.

Copyright Office Leadership Responds to Tillis Letter on Modernization – On Monday, September 30, Librarian of Congress Carla Hayden and Register of Copyrights Karyn Temple sent a letter to Senator Thom Tillis (R-NC) outlining the IT modernization efforts undertaken by the U.S. Copyright Office such as building a series of Enterprise Copyright System apps and considering the implementation of a pilot program to collect registration data in real-time.

USPTO Extends Public Comment Period on AI Inventions – On Monday, September 30, the USPTO published a notice of an extension of a public comment period in the Federal Register which extends the period in which the agency is soliciting comments on patent issues related to artificial intelligence inventions to develop patent examination guidelines for those inventions.

Trump Administration Tells SCOTUS to Deny Google Copyright Appeal – On Friday, September 27, the Solicitor General of the U.S. Department of Justice filed an amicus brief for the United States asking the U.S. Supreme Court to deny granting certiorari in Google v. Oracle, refuting Google’s arguments that application programming interface (API) declarations it copied from Oracle’s Java platform aren’t eligible for copyright protection.

Barks

Trump Tweet Removed in Response to Copyright Complaint  – Twitter on Thursday took the rare step of pulling a video featured in one of President Donald Trump’s tweets following a copyright infringement complaint reportedly filed by Warner Music Group. The tweet included a clip from the music video of Nickelback’s 2006 hit “Photograph” that had been edited to show a photo of Joe Biden and his son posing with a Ukranian gas company executive. YouTube has also removed the video.

Terminator Screenwriter Moves to Terminate Copyright Grant – On Wednesday, October 2, The Hollywood Reporter published a story indicating that Gale Anne Hurd, the original screenwriter for the 1984 film The Terminator, served a notice on Skydance Media, the firm holding the copyright to The Terminator, to terminate the copyright grant on the movie and transfer copyright back to Hurd.

Sutter Home Files Trademark Infringement Suit Over “Clos de Napa Cellars” – On Wednesday, October 2, family-run winery Sutter Home filed a lawsuit in the Northern District of California alleging trademark infringement against wine wholesaler Tri-Vin Imports over its “Clos de Napa Cellars” brand, which Sutter Home alleges infringes on its “Napa Cellars” trademark.

Trademark Dispute Prompts Banksy to Open Homewares Store – On Tuesday, October 1, famed street artist Banksy opened a homewares store called Gross Domestic Product, which will only conduct online sales for a period of two weeks, in a bid to prevent a greeting card company from challenging his trademark.

PTAB Invalidates Claims From Two Nasdaq Patents Under Section 101 – On Tuesday, October 1, the PTAB issued rulings finding that challenged claims from two Nasdaq ISE patents covering methods of automated trading were invalid under Section 101 as being directed to abstract ideas.

CRISPR-Cas9 Patent Grant Gives UC Largest Patent Portfolio in Sector – On Tuesday, October 1, the USPTO granted a patent covering methods for CRISPR-Cas9 gene editing in prokaryotic cells to the University of California, increasing UC’s portfolio of CRISPR-Cas9 patents to 16 and giving that institution the country’s largest portfolio of patent assets in that field.

USPTO Publishes Final Rule on Eliminating Unnecessary Regulations – On Tuesday, October 1, the USPTO published a final rule in the Federal Register announcing the removal of unnecessary provisions in the Code of Federal Regulations that are no longer necessary, including a prohibition on reservation clauses in patent applications and limits to inter partes review (IPR) and post-grant review (PGR) proceedings that may be instituted during the first four years after passage of the America Invents Act.

SDNY Issues Mixed Ruling in TiVo-Comcast Patent Case – On Monday, September 30, the U.S. District Court for the Southern District of New York issued an order on summary judgment which found that Comcast’s X1 platform doesn’t currently infringe on a TiVo patent covering methods of text searching from user input but also found a genuine dispute as to whether the X1 platform infringed that patent during an unlicensed period prior to technical changes implemented in January 2017.

Judge Dismisses Copyright Suit Against Comedians in Cars Getting Coffee – On Monday, September 30, U.S. District Judge Alison Nathan of the Southern District of New York dismissed a copyright suit filed by Christian Charles, director the 2002 Seinfeld documentary Comedian who alleged that Seinfeld’s Comedians in Cars Getting Coffee was based an idea he pitched to Seinfeld, as being barred by the statute of limitations.

Elasticsearch Files Trademark Infringement Claims Against Amazon – On Friday, September 27, search engine developer Elasticsearch filed a lawsuit in the Northern District of California alleging claims of trademark infringement and false description/advertising against Amazon.com over the e-commerce giant’s Amazon Elasticsearch Service and Open Distro for Elasticsearch products.

This Week on Wall Street

Tesla Stock Falls After Missing Yet Another Quarterly Sales Forecast – On Thursday, October 3, shares of Tesla stock dropped by 4 percent before the market close after the company announced that it had shipped 97,000 electric vehicles during 2018’s third quarter, 2,000 vehicles shy of analyst expectations of third-quarter sales.

Dow Dips Nearly 2 Percent on Economy Concerns – On Wednesday, October 2, the Dow Jones Industrial Average closed nearly 500 points lower, a loss of 1.9 percent on the day, due in large part to reports showing a second straight month of economic contraction in the manufacturing sector and missed expectations in private payrolls as reported by the ADP.

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: None
• Tuesday: None
• Wednesday: None
• Thursday: None
• Friday: Weatherford International plc (t-282nd)

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