Other Barks & Bites for Friday, November 6: CAFC Limits Venue in ANDA Cases, VirnetX Scores $503 Million Infringement Verdict Against Apple, and CRISPR Patent Revoked by European Patent Office

https://depositphotos.com/126326578/stock-photo-cute-dog-with-uncle-sam.htmlThis week in Other Barks & Bites: the Federal Circuit rules that “acts of infringement” under Section 1400(b) limits venue in Hatch-Waxman patent cases to jurisdictions where ANDA submission activities took place; A Technical Board of Appeal of the European Patent Office Upholds the revocation of a patent for CRISPR gene editing technology; Skidmore files a petition for rehearing of a petition for writ of certiorari in the “Stairway to Heaven” copyright case; the U.S. Patent and Trademark Office and the Copyright Office issue notices related to studies on IP infringement committed by sovereign state actors; the Copyright Office also issued a supplemental notice of proposed rulemaking (NPRM) related to statements of accounts submissions and payment of accrued royalties under the MMA; a magistrate judge in Southern New York denies a request to determine the accuracy of the copyright registration for the Phillie Phanatic baseball mascot; Amazon announces a second regional infrastructure for AWS in India by mid-2022; and VirnetX wins a $502.8 million infringement verdict over Apple’s infringement of patent claims covering virtual private network technologies.


CAFC Says Section 1400(b) “Acts of Infringement” Limits Venue in ANDA Cases – On Thursday, November 5, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Valeant Pharmaceuticals v. Mylan Pharmaceuticals in which the appellate court held that, applying U.S. Supreme Court precedent from TC Heartland v. Kraft Foods Group Brands (2017), “acts of infringement” under 35 U.S.C. § 1400(b) limit venue in patent cases arising from Abbreviated New Drug Applications (ANDAs) to jurisdictions where ANDA submission activities occurred, not any jurisdiction into which the generic drug will be distributed.

European Patent Office Upholds Revocation of CRISPR Patent – A Technical Board of Appeal of the European Patent Office (EPO) has upheld a decision of the opposition division revoking the Broad Institute’s patent related to CRISPR gene editing (case T 844/18). The decision cited a lack of novelty due to an invalid claim to priority. The EPO found that priority for EP 2 771 468, titled “Engineering of Systems, Methods and Optimized Guide Compositions for Sequence Manipulation, had not been validly claimed from several US provisional applications. “Therefore, documents became relevant prior art over which the claimed subject-matter was not novel [and] the Board thus dismissed the patent proprietors’ appeal against the opposition division’s decision to revoke the patent,” said the EPO in a press release.

USPTO, Copyright Office Issue Notices on Sovereign Immunity Studies – On Thursday, November 5, the U.S. Patent and Trademark Office issued a request for information in the Federal Register in regards to a study on the extent to which patent and trademark owners are experiencing infringement by state entities without adequate remedies under state law. That same day, the Copyright Office issued a notice of public roundtable meetings designed to give members of the public a chance to offer information relevant to the agency’s own study on copyright infringement by sovereign state entities.

Copyright Office Issues Supplemental NPRM on MLC Submissions, Royalty Payments – On Thursday, November 5, the U.S. Copyright Office issued a supplemental notice of proposed rulemaking (NPRM) updating a previous NPRM issued in July concerning implementation of the Music Modernization Act (MMA), specifically with regards to alternative routes for cumulative statements of account submitted by digital service providers to the mechanical licensing collective (MLC) and estimate and adjustment provisions with respect to the payment of accrued royalties in connection with MLC statement of account submissions.

CAFC Majority Affirms Interference Win for University of Wyoming Over Newman Dissent – On Wednesday, November 4, a 2-1 panel majority at the Federal Circuit in Chevron U.S.A. v. University of Wyoming Research Corporation affirmed a victory in an interference proceeding at the Patent Trial and Appeal Board (PTAB) for the University of Wyoming over a patent claim covering a technology for oil processing. Circuit Judge Pauline Newman dissented on the issue because Wyoming’s patent specification neither described nor supported the claim which it admittedly copied from Chevron to provoke the interference proceeding.

USPTO Issues Final Rule on International Trademark Classification Changes – On Tuesday, November 3, the USPTO issued a final rule in the Federal Register to incorporate changes to international trademark classifications under the Nice Agreement made this summer which added business organization and administration to services under Class 35 as well as financial, monetary, and banking services under Class 36.

Second Circuit Affirms Preliminary Injunction on Team Rubicon Trademarks – On Tuesday, November 3, the U.S. Court of Appeals for the Second Circuit issued a decision in Team Rubicon Global, Ltd. v. Team Rubicon, Inc. in which the appellate court found no abuse of discretion in the district court’s grant of a preliminary injunction to Team Rubicon against Rubicon Global regarding the latter firm’s use of Team Rubicon trademarks after a licensing agreement between the two was ended as a result of sexual harassment claims lodged against Rubicon Global’s sublicensees.

Texas Jury Enters $503 Million Infringement Verdict for VirnetX Against Apple – On Friday, October 30, a jury verdict entered in the Eastern District of Texas awarded $502.8 million in reasonable royalty damages to VirnetX for Apple’s infringement of patent claims covering virtual private network (VPN) technology in Apple’s FaceTime and iMessage technologies.

Skidmore Seeks Certiorari Rehearing at Supreme Court in Led Zeppelin Case – On Friday, October 30, Michael Skidmore, trustee for the estate of Spirit guitarist Randy Craig Wolfe (“Randy California”), filed a petition for rehearing of a petition for writ of certiorari filed at the Supreme Court, arguing that the Ninth Circuit improperly revised its standard for the substantial similar extrinsic test in finding that Led Zeppelin’s “Stairway to Heaven” did not infringe the copyright to “Taurus” by Spirit.


HEXO Settles Trademark Infringement Claims Over Unauthorized CBD Products – On Thursday, November 5, Canadian-based cannabis consumer packaging firm HEXO announced that it had entered into a settlement agreement with Assi Project Management, a California firm, extinguishing legal claims filed by HEXO in the Southern District of California which targeted HEXOCBD products being sold by Assi.

Ninth Circuit Says Conversion of Personal Data Claims Preempted by Copyright Act – On Wednesday, November 4, the U.S. Court of Appeals for the Ninth Circuit issued an unpublished decision in Bokenfohr v. Gladen affirming a district court’s finding that a state law conversion claim filed by Bokenfohr against a party involved with Gladen’s access, possession and distribution of Bokenfohr’s personal electronic data was preempted by the Copyright Act.

SDNY Denies Copyright Office Request in Phillie Phanatic Case – On Wednesday, November 4, U.S. Magistrate Judge Sarah Netburn of the Southern District of New York issued an order denying a request to the Register of Copyrights as to the propriety of classifying the Phillie Phanatic baseball mascot as an “artistic sculpture” instead of a “costume,” finding that the request from the mascot’s creators failed to satisfy the statutory requirements for such a request because they didn’t allege that any of the information in the registration was inaccurate.

ITC Institutes Section 337 Investigation Into Automated Storage and Robot Systems – On Monday, November 2, the U.S. International Trade Commission announced that it had decided to institute a Section 337 investigation into certain automated storage and retrieval systems, robots and components thereof based upon a complaint filed by AutoStore Technology alleging claims of patent infringement against Ocado.

Eleventh Circuit Remands SJ on Trademark Claims to Determine Appellate Jurisdiction – On Monday, November 2, the U.S. Court of Appeals for the Eleventh Circuit issued an order in Savannah College of Art and Design v. Sportswear, Inc. in which the appellate court remanded a grant of summary judgment awarded to plaintiff Savannah College on trademark infringement and false designation of origin without any apparent relief to determine whether the Eleventh Circuit had appellate jurisdiction over an appeal filed by Sportswear.

OpenText Sues Hyland Over Remote Data Storage Technology – On Monday, November 2, Canadian information management software provider OpenText Corporation filed a lawsuit in the Central District of California alleging claims of patent infringement against Hyland Software over its ShareBase platform for cloud-based sharing and content collaboration in enterprise environments.

Abbott Files Trade Secret Claims Against Former Global Marketing VP Clavel – On Friday, October 30, Abbott Laboratories filed a lawsuit in the Northern District of Illinois alleging that Jerome Clavel, the company’s former vice president for global marketing, violated state and federal trade secret laws by misappropriating confidential documents related to demand forecasts and market assumptions about Abbott’s COVID-19 test before going to work for rival firm Bio-Rad.

Children of George Jones File Copyright Suit Over Royalties to Music Recordings – On Monday, October 26, Bryan Jones and Jeffrey Jones, sons of now-deceased country music star George Jones, filed a lawsuit in the Middle District of Tennessee against Glad Music Publishing and other music industry entities seeking a declaratory judgment that the brothers are each entitled to 25 percent copyright ownership to musical compositions created by Jones and published or controlled by BMI.

This Week on Wall Street 

Amazon to Expand AWS in India With Second Regional Infrastructure – On Friday, November 6, Amazon cloud subsidiary Amazon Web Services announced that it would be expanding its cloud services in India with the introduction of a new AWS Asia Region consisting of three Availability Zones. Amazon plans to be operating this second regional AWS infrastructure within India by mid-2022.

Qualcomm Shares Pop on Big EPS Beat, Company to Break Out QCT Financials – On Wednesday, November 4, chip designer Qualcomm reported earnings for 2020’s fourth quarter posting earnings per share of $1.45 for the quarter, beating analyst expectations of $1.17 per share. Shares of Qualcomm stock rose 12 percent on the earnings news. The company also announced that it would break out its financial reporting for handset, radio frequency, automotive and Internet of Things (IoT) revenues in future earnings reports instead of continuing to report those financials as part of the company’s QCT segment.

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: Infineon Technologies AG (55th); LG Corporation (9th); Mazda Motor Corp. (t-221st); Shimadzu Corp. (t-202nd); Softbank Group Corp. (82nd)
  • Thursday: Casio Computer (188th); Fujifilm Holdings Corp. (31st); Rockwell Automation Inc. (t-267th); Schaeffler AG (t-171st)
  • Wednesday: Continental AG (100th); Foxconn Technology Co., Ltd. (t-102nd); Toshiba Corporation (25th)
  • Thursday: Deutsche Telekom AG (167th); Dolby Laboratories Inc. (t-139th); International Game Technology plc (t-277th); Merck KGaA (208th); Nissan Motor Co. (101st); Siemens AG (21st); Tencent Holdings Ltd. (111th); Walt Disney Co. (189th)
  • Friday: Japan Display Inc. (71st); Olympus Corp. (66th)


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Join the Discussion

3 comments so far.

  • [Avatar for Anon]
    November 7, 2020 07:32 am

    In the Bites section, on the Sovereign immunity to copyright issue, this caught my eye: “experiencing infringement by state entities without adequate remedies under state law

    Am I missing something here? The qualification of being immune means that NO level of recompense is required.


    Only If there were a LACK of immunity would the State be on the hook.

    This is precisely why this case was such a big deal.

  • [Avatar for Pro Say]
    Pro Say
    November 6, 2020 09:14 pm

    Thanks Max. Heads are sure to roll as a result on this priority “boo-boo.”

    And a big, big congratulations to VirnetX. Hard fought and well deserved.

    Oh that all inventors had the financial wherewithal to obtain proper remuneration for Big Tech’s illegal use of their innovations.

    Congress: For gosh sakes, 2021 is just around the corner. How much more American innovation must the CAFC and SCOTUS be allowed to trash with impunity?

    How much more?

  • [Avatar for MaxDrei]
    November 6, 2020 04:23 pm

    Any readers with a keen interest in the CRISPR litigation and/or how priority between rival applicants is decided under the European Patent Convention might find the Link below useful. We knew back in January what was the outcome but have been waiting until now for the reasoned written Decision

    But, be warned, the EPO Decision runs to 58 pages:


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