Other Barks & Bites for Friday, June 24: Federal Circuit Says PTAB Can Consider 101 in IPR Motions to Amend, Senators Crack Down on COVID-19 IP Theft, and Cheetah Omni Petitions SCOTUS

This week in Other Barks & Bites: Congress passes the 2021 NDAA, including provisions of a sustainable chemistry research bill; the Federal Circuit says that the PTAB can consider Section 101 patent-eligibility issues when patent owners submit motions to amend in IPRs; Senator Thom Tillis and colleagues take steps to protect U.S. COVID-19 IP; the USPTO issues updated study figures showing slight increases for U.S. women inventors; Under Armour wins nearly $300K in a trademark case decided by China’s highest court; the Ninth Circuit vacates a substantial similarity analysis, reviving copyright claims filed against Disney’s Pirates of the Caribbean: Curse of the Black Pearl; a major tech antitrust hearing at the House of Representatives will likely be postponed due to the memorial service for Representative John Lewis; and patent owner Cheetah Omni files a petition for writ of certiorari asking the Supreme Court to overturn the Federal Circuit’s ruling on an implied license stemming from a grandparent patent.

Bites

Cheetah Omni Files Petition for Certiorari on Grandparent Patent License Ruling – On Thursday, July 23, Bloomberg Law reported that patent owner Cheetah Omni had filed a petition for writ with the U.S. Supreme Court to challenge a February ruling by the U.S. Court of Appeals for the Federal Circuit which affirmed the dismissal of patent infringement claims filed by Cheetah Omni after finding that the defendant AT&T Services was covered by an implied license deriving from a previous license agreement involving the grandparent patent to the patent asserted by Cheetah Omni.

Tillis and Colleagues Crack Down on COVID-19 IP Theft – U.S. Senator Thom Tillis (R-NC) this week took measures to protect U.S. intellectual property related to COVID-19 research. Following reported attempts by China and Russia to steal COVID-19 research, on Monday, July 20, Tillis and Senator Richard Blumenthal (D-CT) sent a letter to Majority Leader Mitch McConnell (R-KY) and Minority Leader Chuck Schumer (D-NY) asking that funding be included in the next stimulus package for “cyber-security grants for small American companies engaged in COVID-19 research.” The next day, Tillis announced he is co-sponsoring bipartisan legislation to impose “strong economic penalties on foreign firms and individuals involved in stealing American intellectual property.” The bill, titled the Protecting American Intellectual Property Act, calls for sanctions “on foreign individuals and firms found to engage in, benefit from, or enable the significant and serial theft of U.S. intellectual property.”

Sustainable Chemistry Innovation Bill Passed as Part of NDAA – On Thursday, July 23, the Senate passed the most recent National Defense Authorization Act (NDAA) authorizing U.S. defense spending for the 2021 fiscal year. The bill includes provisions of the Sustainable Chemistry Research and Development Act of 2019, which supports chemistry research for more efficient resource use, reducing hazardous substances and otherwise mitigating environmental harm.

CAFC Majority Says PTAB Can Consider Section 101 on Proposed Amended Claims – On Wednesday, July 22, the Federal Circuit issued a precedential decision in Uniloc 2017 LLC v. Hulu, LLC in which the appellate court affirmed the Patent Trial and Appeal Board’s (PTAB) decision to analyze 35 U.S.C. § 101 patent eligibility issues during an inter partes review (IPR) proceeding when considering proposed claims submitted by a patent owner in a motion to amend. Circuit Judge Kathleen O’Malley authored a dissent in which she chastised the majority for “breath[ing] life into a dead patent and us[ing] the zombie it has created as a means to dramatically expand the scope of [IPR] proceedings.”

USPTO Reports Slight Increases to Women Inventor Rate, Decreases in Gender Gap – On Wednesday, July 22, the U.S. Patent and Trademark Office released a follow-up study to its previous research on U.S. women inventors, finding that the “women inventor rate,” or the share of U.S. inventors receiving patents who are women, had risen to 12.8 percent in 2019 up from 12.1 percent in 2016. The study also found a decreasing gender gap between the percentage of women inventors patenting again within five years (46 percent) versus men inventors doing the same (52 percent).

D.C. Circuit Affirms Discovery Sanctions, Final Royalty Distribution in CRB Ruling – On Tuesday, July 21, the U.S. Court of Appeals for the D.C. Circuit issued a decision in Independent Producers Group v. Copyright Royalty Board in which the appellate court affirmed the CRB’s revocation of the presumption of validity as well as discovery sanctions entered for a fraudulent claim filed by IPG during a proceeding on the distribution of royalties for cable and satellite retransmissions of TV programming.

First Circuit Reverses Trade Secret Claims in Puerto Rico Tax Management Case – On Tuesday, July 21, the U.S. Court of Appeals for the First Circuit entered a ruling in TLS Management and Marketing Services, LLC v. Rodríguez-Toledo in which the appellate court reversed a ruling by the District of Puerto Rico on trade secret misappropriation claims. The First Circuit found that TLS Management failed to prove the existence of trade secrets in capital preservation reports and a U.S.-Puerto Rico tax arbitrage strategy.

ITC Institutes Section 337 Investigation Filed By Novartis Against Regeneron – On Tuesday, July 21, the U.S. International Trade Commission (ITC) issued a notice of institution of a Section 337 investigation into certain pre-filled syringes for intravitreal injection imported for sale by Regeneron Pharmaceuticals after Novartis Pharma filed a complaint for patent infringement with the ITC.

China’s Supreme People’s Court Awards $286K in Trademark Damages to Under Armour – On Friday, July 17, China’s Supreme People’s Court entered a ruling which awarded 2 million RMB ($286,000 USD) to athletic apparel maker Under Armour for trademark and unfair competition claims filed against Chinese domestic firm Fujian Tingfeilong Sporting Goods for its use of an infringing Uncle Martian sportswear brand.

Barks 

Director Iancu Discusses National Consumer Awareness Campaign in NAM Remarks – On Thursday, July 23, USPTO Director Andrei Iancu made remarks at an event on counterfeiting issues sponsored by the National Association of Manufacturers in which he discussed the agency’s efforts on developing a national consumer awareness campaign to reduce trademark counterfeiting in conjunction with the National Crime Prevention Council.

Ninth Circuit Says District Court Erred in Substantial Similarity Analysis in Pirates of the Caribbean Copyright Case – On Wednesday, July 22, the U.S. Court of Appeals for the ninth Circuit issued a decision in Alfred v. Walt Disney Company in which the appellate court reversed a Central District of California ruling dismissing copyright claims filed against Disney. The Ninth Circuit found that the plaintiff sufficiently alleged substantial similarities between a copyrighted screenplay and Disney’s Pirates of the Caribbean: Curse of the Black Pearl, including a prologue taking place 10 years prior to the main story, introduction of the main characters during a battle at gunpoint and “fearful moments driven by skeleton crews.” 

Copyright Office Reports No Compliance Issues in Independent Audit of FY2019 – On Wednesday, July 22, the U.S. Copyright Office announced that an independent audit of the agency’s financial statements for fiscal year 2019 conducted by Cotton & Company LLP had found no weaknesses in internal control over financial reporting and no reportable noncompliance with laws or regulations.

Ninth Circuit Reverses Punitive Damages, Denial of Disgorgement Award in Monster Energy Trademark Case – On Wednesday, July 22, the Ninth Circuit issued a decision in Monster Energy Company v. Integrated Supply Network, LLC in which the appellate court vacated parts of a Central District of California ruling which awarded punitive damages to Monster Energy based on a common law claim as actual damages are a prerequisite for punitive damages under California law. The Ninth Circuit also vacated the district court’s denial of a disgorgement award to Monster Energy under the Supreme Court’s recent ruling in Romag Fasteners v. Fossil.

Facebook Files Opposition at TTAB Against “DOGBOOK” Trademark – On Wednesday, July 22, Facebook filed a notice of opposition with the Trademark Trial and Appeal Board (TTAB) raising grounds of likeliness of confusion and trademark dilution over an application for the standard character mark “DOGBOOK” for use with Internet-based and online social networking services.

Judge Gilstrap Says Jury Selection for Apple Patent Trial Will Move Forward – On Tuesday, July 21, U.S. District Judge Rodney Gilstrap of the Eastern District of Texas entered an order denying a request by Apple to delay jury selection from August 3 to October 5 in a patent infringement case brought by PanOptis. Judge Gilstrap ruled that the court had taken sufficient precautions to safely handle a jury trial during the COVID-19 pandemic.

Copyright Case Over MormonLeaks Website Settled For $15K – On Monday, July 20, The Salt Lake Tribune reported that the founders of the MormonLeaks website had paid $15,000 to settle copyright infringement claims filed by the Watch Tower Bible and Tract Society, the main legal entity for the religious organization of Jehovah’s Witnesses, over the online publication of videos containing content shown during Watch Tower Bible’s annual conventions.

Tesla Files Trade Secret Claims Against Rivian in CA State Court – On Friday, July 17, Tesla filed a lawsuit in California Superior Court against Rivian Automotive and several former Tesla employees, alleging that Rivian poached employees from Tesla and stole confidential information related to Tesla’s high-volume recruiting process, personnel compensation and bonuses, and various manufacturing specifications.

John Lewis Memorial Will Likely Delay Tech Antitrust Hearing on Capitol Hill – On Thursday, July 23, CNBC reported info from unnamed sources indicating that Monday’s hearing on antitrust issues in the tech industry by the House Antitrust Subcommittee, which was to feature testimony from the CEOs of Amazon, Apple, Facebook and Google, will likely be postponed due to a conflict with a planned memorial service for Representative John Lewis.

This Week on Wall Street

Intel Says 7nm Semiconductor Is Six Months Behind Schedule – On Thursday, July 23, shares of Intel stock sank by about 9 percent after the company acknowledged that it was six months behind schedule on developing a 7-nanometer semiconductor to compete with AMD and Nvidia. The company also announced that it was considering outsourcing some semiconductor manufacturing operations. 

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: Nitto Denko Corp. (t-281st); NXP Semiconductor N.V. (77th); SAP SE (73rd)
• Tuesday: 3M Co. (86th); Advanced Micro Devices Inc. (192nd); Canon Inc. (3rd); Corning Inc. (91st); eBay Inc. (t-179th); Fanuc (75th); Innolux Corp. (t-283rd); Juniper Networks Inc. (t-161st); Nissan Motor Co. (101st); Omron Corp. (t-168th); Raytheon Technologies Corp. (124th); Rockwell Automation Inc. (t-267th); Samsung Electro-Mechanics (t-127th); Samsung SDI Co., Ltd. (129th); Seagate Technology PLC (125th); Shimano Inc. (t-233rd); Shin-Etsu Chemical Co., Ltd. (211th); Tokyo Electron Ltd. (116th); Visa Inc. (t-200th); Xerox Holdings Corp. (117th)
• Wednesday: BASF SE (83rd); Boeing Co. (29th); Boston Scientific Corp. (t-88th); Eaton Corporation PLC (110th); Facebook Inc. (34th); General Electric Co. (6th); General Motors Co. (30th); Qorvo Inc. (t-289th); Qualcomm Inc. (17th); Sanofi SA (165th); TE Connectivity Ltd. (151st); United Microelectronics Corp. (136th)
• Thursday: Airbus SE (80th); Alphabet Inc. (12th); Amazon.com Inc. (15th); Apple Inc. (14th); Comcast Corp. (176th); Delta Electronics Inc. (257th); Denso Corp. (39th); Dolby Laboratories Inc. (t-139th); DuPont de Nemours Inc. (t-218th); Ford Motor Co. (13th); Fresenius SE & Co. KGaA (230th); Fujitsu Ltd. (36th); Hitachi Ltd. (24th); Hubbell Inc. (t-274th); Kyocera Corp. (43rd); LG Electronics Inc. (9th); Mastercard Inc. (t-184th); Mitsubishi Electric Corp. (33rd); Northrop Grumman Corp. (256th); Panasonic Corp. (20th); Proctor & Gamble Co. (93rd); Renesas Electronics Corp. (97th); Samsung Electronics (2nd); Stryker Corp. (132nd); TDK Corp. (95th); Textron Inc. (204th); Xilinx Inc. (t-233rd)
• Friday: Aisin Seiki Co. (164th); Casio Computer (188th); Caterpillar Inc. (98th); Colgate-Palmolive Co. (t-261st); Exxon Mobil Corp. (135th); HTC Corp. (t-283rd); Johnson Controls International PLC (163rd); Jtekt Corp. (t-225th); LG Chemical Ltd. (59th); Mazda Motor Corp. (t-221st); Mediatek Inc. (t-107th); Merck & Co., Inc. (t-253rd); Murata Manufacturing Co., Ltd. (48th); NEC Corp. (45th); NGK Insulators Ltd. (250th); Nokia Oyj (49th); Seiko Epson Corp. (32nd); Sumitomo Electric Industries Ltd. (70th)