Other Barks & Bites for Friday, June 19: USPTO to Adjust Trademark Fees, Copyright Office Hosts Section 1201 Webinar and WTO Finds TRIPS Violated by Saudis

This week in Other Barks and Bites: the U.S. Patent and Trademark Office proposes adjustments to trademark fees, issues a final rule on patent term adjustments under Supernus, launches a priority examination program for COVID-19-related trademarks and service marks, and seeks nominations for members of the Patent Public Advisory Committee (PPAC) and Trademark Public Advisory Committee (TPAC); the Federal Circuit strikes down patent suits filed by PersonalWeb Technologies under the Kessler doctrine; the Copyright Office announces virtual forums on agency modernization efforts and upcoming Section 1201 rulemaking; Mylan successfully invalidates Biogen’s Tecfidera patent claims in district court; the WTO issues a panel opinion finding that the Saudi Arabian government wrongfully prevented the enforcement of IP rights; and the Seventh Circuit affirms the denial of an attorney’s fee award in a case involving frivolous copyright claims.

Bites

USPTO Proposes Trademark Fee Adjustments – On Friday, June 19, the U.S. Patent and Trademark Office issued a notice of proposed rulemaking in the Federal Register adjusting trademark fees collected by the agency, including the introduction of new fees for requests for reconsideration filed more than three months after a final action and filing letters of protest. 

CAFC Strikes Down Patent Suits Under Kessler Doctrine – On Wednesday, June 17, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in In Re PersonalWeb Technologies in which the appellate court affirmed a ruling from the Northern District of California to dismiss a series of patent suits filed by PersonalWeb under the Kessler doctrine after PersonalWeb lost a patent suit against Amazon before filing the series of suits against Amazon’s customers.

U.S. Copyright Office Announces Public Forum on Agency Modernization – On Wednesday, June 17, the U.S. Copyright Office announced that it would be hosting a virtual public forum on July 16 to discuss the agency’s progress on modernization efforts with stakeholders, including demonstrations of recordation pilots and discussion on planning for registration and licensing applications.

WTO Finds TRIPS Violation by Saudi Government – On Tuesday, June 16, the World Trade Organization (WTO) issued a panel report finding that the government of Saudi Arabia violated provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) by preventing the enforcement of IP rights against the Saudi Arabian individuals involved with the pirated TV broadcaster beoutQ.

USPTO Issues Final Rule on Patent Term Adjustments Under Supernus – On Tuesday, June 16, the USPTO published a final rule in the Federal Register revising the rules of practice regarding patent term adjustments in light of the Federal Circuit’s 2019 decision in Supernus Pharmaceuticals v. Iancu, which held that reductions to patent term adjustments must be equal to the time in which the applicant failed to make reasonable efforts to conclude prosecution of the application.

Copyright Office to Host Webinar on DMCA Section 1201 Rulemaking – On Tuesday, June 16, the Copyright Office announced that it would host an online webinar regarding the agency’s upcoming eighth triennial rulemaking on Section 1201 of the Digital Millennium Copyright Act (DMCA) to discuss the rulemaking process for allowing exemptions to the law’s general prohibition against circumventing technological protection measures used to control copyright-protected content. 

USPTO Launches Priority Examination Program for COVID-19 Trademarks and Service Marks – On Monday, June 15, the U.S. Patent and Trademark Office announced that the agency would be launching a prioritized examination program to fasttrack the processing of trademarks and service marks related to qualifying COVID-19 medical products and services to help bring those products to the market more quickly during the pandemic.

D.C. Circuit Affirms Dismissal of Legal Malpractice Claims Over Patent Suit – On Friday, June 12, the U.S. Court of Appeals for the District of Columbia Circuit issued a decision in Seed Co. v. Westerman, Hatori, Daniels & Adrian in which the appellate court affirmed a District of Columbia ruling dismissing legal malpractice claims filed by Seed. The district court found that Seed waived any claim for damages stemming from negligence in giving legal advice and that Seed failed to establish that another firm’s legal advice was the proximate cause of its injuries. 

Barks 

Judge Keeley Ruling Invalidates Biogen’s Tecfidera Patent Claims – On Thursday, June 18, U.S. District Judge Irene Keeley of the Northern District of West Virginia issued a ruling invalidating all challenged claims of a patent owned by Biogen and covering its multiple sclerosis treatment Tecfidera, siding with generic drugmaker Mylan in the case.

USPTO Seeks Nominations for PPAC, TPAC Members – On Wednesday, June 17, the USPTO published a request for nominations in the Federal Register seeking nominations for up to three members to sit on either the Patent Public Advisory Committee (PPAC) or the Trademark Public Advisory Committee (TPAC), each serving a term of three years to begin this December.

Seventh Circuit Affirms Denial of Attorney’s Fees for Frivolous Copyright Claims – On Wednesday, June 17, the U.S. Court of Appeals for the Seventh Circuit issued a decision in Timothy B. O’Brien LLC v. Knott in which the appellate court affirmed the Western District of Wisconsin’s denial of an attorney’s fees award. Although the copyright claims brought by O’Brien LLC were frivolous, the district court did not abuse its discretion in determining that the totality of the circumstances did not support such an award.

Trademark Suit Filed Against Rapper’s Escobar Restaurants – On Wednesday, June 17, Puerto Rico-based Escobar Inc. filed a trademark infringement suit in the Central District of California against rapper Tauheed Epps, who performs under the name 2 Chainz, and others involved in the operation of a pair of Pablo Escobar-themed restaurants in the state of Georgia.

Judge Glasser Says Covenant Not to Sue Sinks Patent License Breach Claims – On Wednesday, June 17, U.S. District Judge I. Leo Glasser of the Eastern District of New York granted a motion for summary judgment filed by MasterCard after finding that a covenant-not-to-sue between MasterCard and Alexsam, which Alexsam successfully asserted to prevent Patent Trial and Appeal Board (PTAB) trials petitioned by MasterCard, prevented Alexsam from bringing claims regarding breach of the patent license to district court.

Photographer Selling Copyright to Nirvana’s First Magazine Cover Shoot – On Wednesday, June 17, PetaPixel reported that photographer Greg Watermann had offered to transfer the copyright and sell various assets related to a photo shoot with the grunge band Nirvana featured on the January 1992 edition of SPIN Magazine.

Judge Sabraw Increases WiLAN Award Against Apple to $109M – On Tuesday, June 16, U.S. District Judge Dana Sabraw of the Southern District of California issued a ruling denying post-trial motions by Apple in a patent case brought by WiLAN, leaving in place an $85 million jury verdict entered this January, and tacking on an additional $24 million in prejudgment interest to bring WiLAN’s total award to nearly $109 million.

Jay-Z, Beyonce Face Copyright Suit Over Recorded Vocals in “Black Effect” – On Tuesday, June 16, Dr. Lenora Stines filed a lawsuit alleging copyright infringement claims in the Central District of California against Beyonce and Jay-Z over the couple’s unauthorized use of a vocal recording of Stines during the first minute of the 2018 single “Black Effect.”

This Week on Wall Street

Saudi Fund Invests $1.5B in Indian Tech Platform – On Thursday, June 18, Indian telecom firm Jio Platforms announced that Saudi Arabia’s Public Investment Fund had agreed to spend $1.5 billion to purchase a 2.3 percent stake in the mobile firm, pushing Jio Platform’s value up to $68 billion.

Texas School District Offers $68M in Tax Incentives for Tesla Factory – On Thursday, June 18, a tax application filed by Tesla with the Texas state comptroller’s office showed that the Austin-area Del Valle Independent School District is offering the tech company about $68 million in property tax incentives over 10 years to encourage Tesla to build a factory on a 2,100-acre site within the district.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2019 are announcing quarterly earnings next week (2019 rank in parentheses):

• Monday: None
• Tuesday: None
• Wednesday: Blackberry Ltd. (138th)
• Thursday: Accenture Plc (174th); Nike Inc. (t-107th)
• Friday: None

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