Other Barks & Bites, Friday, December 6: Lawmakers Concerned with Copyright Restatement, USPTO Pushed to Keep SEP Injunction Policy, Qualcomm Pushes Back on Koh at Ninth Circuit

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Barks and Bites - https://depositphotos.com/17158459/stock-photo-skiing-dog.htmlThis week in Other Barks & Bites: the U.S. Supreme Court hears oral arguments over copyright status of the Official Code of Georgia Annotated; the Federal Circuit remands Ericsson appeal to calculate release payment in patent license; Apple, Ford and others urge the USPTO to retain policy against injunctions on companies practicing SEPs; Huawei asks the Fifth Circuit to undo the FCC’s ban preventing it from supplying U.S. networks; Sergey Brin and Larry Page relinquish executive duties at Google; U.S. antitrust regulators explore Amazon’s cloud business; Washington politicians send letter to ALI over Copyright Restatement Effort concerns; and Qualcomm challenges Judge Koh’s class action certification at the Ninth Circuit.


Companies Push USPTO to Keep Policy Against SEP Injunctions – On Thursday, December 5, a collection of three dozen companies including Apple and Ford sent a letter addressed to Department of Commerce Secretary Wilbur Ross and U.S. Patent and Trademark Office Director Andrei Iancu asking that the USPTO preserve a policy that discourages the use of injunctions against companies that are practicing standard essential patents (SEPs). 

Lawmakers Send Letter to ALI Over Copyright Restatement Concerns – On Tuesday, December 3, Senator Thom Tillis and Representatives Ben Cline (R-VA), Ted Deutch (R-FL), Martha Roby (R-AL) and Harley Rouda (D-CA) sent a letter to the American Law Institute (ALI) expressing concerns with the Copyright Restatement Effort and the effect it could have on court interpretations of federal copyright law. 

Counterfeit Goods Seizure Act Introduced into Senate – On Thursday, December 5, Senators Thom Tillis (R-NC), Chris Coons (D-DE), Bill Cassidy (R-LA) and Mazie Hirono (D-HI) introduced the Counterfeit Goods Seizure Act of 2019 into the Senate. The bill would give U.S Customs and Border Patrol agents the authority to seize imported goods that infringe U.S. design patents.

https://depositphotos.com/13561580/stock-illustration-beware-of-dog.htmlCAFC Finds Ericsson Entitled to Jury Trial on Release Payment – On Thursday, December 5, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in TCL Communication v. Ericsson in which the appellate court vacated-in-part a decision rendered by Central District of California after determining that the term “release payment” in a court-ordered license referred to compensatory relief for TCL’s past infringement, thus entitling Ericsson to a jury trial on the calculation of the release payment amount.

Huawei Petitions Fifth Circuit to Overturn FCC Order – On Thursday, December 5, Chinese telecom firm Huawei filed a petition in the U.S. Court of Appeals for the Fifth Circuit in which the company asked the court to overturn a November order from the Federal Communications Commission labelling Huawei a national security threat for lacking due process protections and being unsupported by evidence or sound reasoning.

CAFC Affirms Noninfringement Judgment for Donghee – On Tuesday, December 3, the Federal Circuit unsealed a precedential decision in Plastic Omnium Advanced Innovation and Research v. Donghee America, originally issued in late November, in which the appellate majority upheld the District of Delaware’s grant of summary judgment of noninfringement for Donghee over Plastic Omnium’s arguments that the district court’s claim construction was erroneous.

SCOTUS Hears Oral Arguments in George Annotated Code Case – On Monday, December 2, the U.S. Supreme Court heard oral arguments in Georgia v. Public.Resource.Org which asks the court to decide whether the Official Code of Georgia Annotated has copyright protections that can be asserted by the state against those like Public.Resource.Org who publish the code.

Qualcomm Argues Class Action Certification in Patent Royalty Case at Ninth Circuit – On Monday, December 2, the U.S. Court of Appeals for the Ninth Circuit heard oral arguments in a Qualcomm appeal of a class action lawsuit over antitrust violations caused by chipset patent royalty payments charged to smartphone makers, in which Qualcomm argued that U.S. District Judge Lucy Koh’s certification of a class of 250 million consumers improperly imposed California law nationwide.



New Balance Prevails in Trademark Infringement Case Against Chinese Firm – On Thursday, December 5, the District of Delaware entered a ruling which found that the U.S. subsidiary of Chinese shoemaker New Bunren infringed upon U.S. shoe company New Balance’s “N” trademark through marketing material on New Bunren’s website, which the court found was enough evidence to establish “use in commerce” despite none of its shoes actually being sold in the U.S. 

Fortinet Loses Motion to Dismiss, Doesn’t Prove UK Court Can Hear Patent Case – On Thursday, December 5, an order issued by the District of Delaware denied a motion to dismiss filed by cybersecurity firm Fortinet after finding that Fortinet didn’t prove with any certainty that a UK court could hear patent infringement claims brought against it by British Telecommunications PLC. 

InterDigital Sues Huawei in UK for Patent Infringement – On Wednesday, December 4, wireless technology firm InterDigital announced that it had filed a patent infringement suit in the UK against Huawei seeking a declaration by the British court, which is considering whether it has the authority to set global licensing rates in patent actions, on the licensing rates that Huawei should be paying for InterDigital’s 3G, 4G and 5G communications technologies. 

https://depositphotos.com/30633387/stock-illustration-postman-followed-by-a-dog.htmlCopyright Office Seeks to Clear Up Publication Requirements – On Wednesday, December 4, the U.S. Copyright Office published a notification of inquiry in the Federal Register in which the agency announced that it would be seeking public comments regarding statutory requirements on the publication status of works in registration applications to see if the agency should use its regulatory authority to clear up uncertainty regarding what constitutes publication.

USPTO Extends Public Comment Period on IP Protection for AI Innovation – On Tuesday, December 3, the USPTO announced in the Federal Register an extension to January 10 of the public comment period regarding the impact of artificial intelligence technologies on intellectual property law and policy.

TTAB Allows Cancellation Proceeding to Continue Despite District Court Action – On Monday, December 2, the Trademark Trial and Appeal Board (TTAB) issued an order denying a request by Century Sports, Inc., to end a cancellation proceeding brought by Ross Bicycles in which the TTAB ruled that Century Sports’ request to stay pending district court litigation between the two parties was filed after trial in the TTAB proceeding and thus was untimely.

Lyft Seeks Attorney’s Fees in RideApp Case – On Monday, December 2, ride hailing firm Lyft filed a motion in the Northern District of California seeking an award of attorney’s fees from RideApp for continuing a lawsuit after the Patent Trial and Appeal Board determined that asserted patent claims were invalid for indefiniteness, the same conclusion eventually reached by the district court. 

Jason Mraz Files Copyright, Trademark Suit Over Coors Light Ad – On Monday, December 2, singer-songwriter Jason Mraz filed a lawsuit in the Central District of California asserting copyright and trademark infringement claims against MillerCoors for the use of audio and video footage from a live performance of “I’m Yours” in a Coors Light commercial.

This Week on Wall Street

FTC Extends Amazon Antitrust Investigation to Cloud Business – On Wednesday, December 4, Bloomberg reported that the Federal Trade Commission has broadened its exploration of potential antitrust violations by e-commerce giant Amazon beyond online retail to investigate the company’s cloud computing business activities. 

Brin, Page Step Away from Google’s Day-to-Day Operations – On Tuesday, December 3, a post on Google’s official blog authored by the company’s founders Larry Page and Sergey Brin announced that those two had relinquished all executive duties in Google and Alphabet to Sunday Pichai and that they would be stepping away from day-to-day operations at the company.

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: Adobe Inc. (102nd); Oracle Corp. (52nd)
  • Friday: None



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One comment so far.

  • [Avatar for Pro Say]
    Pro Say
    December 6, 2019 04:58 pm

    Huawei: ” … for lacking due process protections and being unsupported by evidence or sound reasoning.”

    All those unconstitutional, innovation-killing Alice / Mayo rejections immediately come to mind.