Other Barks & Bites for Friday, August 13: Senators Introduce Open App Markets Act, Chris Wilson Nominated as Chief IP Negotiator, and Federal Circuit Invalidates PersonalWeb Patent Claims Under Section 101

Bite” (noun): more meaty news to sink your teeth into.

Bark” (noun): peripheral noise worth your attention.

https://depositphotos.com/3726250/stock-photo-dog-news.htmlThis week in Other Barks & Bites: members of the Senate Antitrust Subcommittee, including Chair Amy Klobuchar (D-MN), introduce the Open App Markets Act into Congress; the Federal Circuit vacates an erroneous claim construction ruling by the PTAB and invalidates PersonalWeb patent claims asserted against Google under Section 101; the Seventh Circuit finds that trade secrets involving spinal implant systems were not disclosed in patents obtained by Life Spine; the Biden Administration nominates Chris Wilson to serve as Chief Innovation and IP Negotiator; Foxconn announces that it will construct electric vehicle factories in Thailand and the U.S. by 2022; B.E. Tech and inventor Martin David Hoyle file a Bivens action suit alleging due process violations committed by former USPTO officials, including former USPTO Director Michelle Lee; and a U.S. magistrate judge recommends that copyright claims filed against Canadian rock band Nickelback should proceed toward trial.


CAFC’s Section 101 Ruling Knocks Out More PersonalWeb Patent Claims – On Thursday, August 12, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in PersonalWeb Technologies LLC v. Google LLC in which the appellate court affirmed a judgment on the pleadings entered in the Northern District of California finding that patent claims covering data-processing systems using content-based identifiers and asserted in an infringement suit by PersonalWeb were invalid as being directed to a patent-ineligible abstract idea under the Alice/Mayo framework.

Fifth Circuit Finds Cognizable Copyright Claim in “Hooker to Looker” Makeup Guide Case – On Thursday, August 12, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Di Angelo Publications, Inc. v. Kelley in which the appellate court reversed and remanded a district court’s ruling that there was no federal jurisdiction over alleged breach of contract claims involving the publication of Jentry Kelley’s “Hooker to Looker” makeup guide. The Fifth Circuit found that “[a]lthough Di Angelo muddles its complaint with contract allegations aplenty,” the firm’s declaratory judgment complaint stated a cognizable copyright claim regarding ownership over the makeup guide.

Senate Antitrust Leadership Introduces Open App Markets Act – On Wednesday, August 11, Senators Richard Blumenthal (D-CT), Marsha Blackburn (R-TN) and Senate Antitrust Subcommittee Chair Amy Klobuchar (D-MN) introduced the Open App Markets Act into the U.S. Senate. If enacted, the bill would increase app developers’ ability to offer competitive pricing to consumers, protect app sideloading and increase opportunities for app store developers to offer their platforms on consumer devices.

CAFC Vacates PTAB Ruling on Erroneous Claim Construction for Seismic Tech Patent – On Wednesday, August 11, the Federal Circuit issued a precedential decision in Seabed Geosolutions (US) Inc. v. Magseis FF LLC in which the appellate court vacated a ruling by the Patent Trial and Appeal Board (PTAB), which found that Seabed did not prove that Magseis’ patent claims were anticipated or obvious. The Federal Circuit ruled that the PTAB erroneously construed a claim limitation to require a non-gimbaled geophone despite the patent specification’s silence on the subject of gimbal pivoted supports for passive geophone sensors that measure seismic activity.

Biden Nominates Chris Wilson to Serve as Chief IP Negotiator – On Tuesday, August 10, the White House announced that President Joe Biden had nominated ten individuals to serve key roles within the Biden Administration, including Christopher Wilson who is nominated to serve as the Chief Innovation and Intellectual Property Negotiator within the Office of the U.S. Trade Representative. Wilson has served the USTR for 20 years and has experience developing regional trade relationships in areas such as Latin America, Europe, the Middle East, and South and Central Asia.

Fifth Circuit Revives Trademark Case Over Bait-and-Switch Click-to-Call Lawyer Ads – On Tuesday, August 10, the Fifth Circuit issued a decision in Jim S. Adler, P.C. v. McNeil Consultants, L.L.C. in which the appellate court reversed the district court’s grant of a motion to dismiss for failure to state a claim under the Lanham Act. The Fifth Circuit found that Adler plausibly stated a claim that McNeil’s purchase of Adler advertising keywords to place unidentified click-to-call advertisements next to Adler online ads to bait customers searching for Adler poses a potential likelihood of confusion in the search-engine advertising context.

Third Circuit Vacates Laches, Disgorgement Findings in “Cars for Kids” Trademark Case – On Tuesday, August 10, the U.S. Court of Appeals for the Third Circuit issued a decision in Kars 4 Kids Inc. v. America Can! in which the appellate court affirmed most of a trademark infringement ruling in favor of Kars 4 Kids, although the Third Circuit vacated the district court’s findings that laches didn’t bar the Lanham Act claims for failing to consider whether the plaintiff’s national advertising campaign reached the relevant market in Texas. Further, the Third Circuit vacated a $10 million disgorgement award to Kars 4 Kids after finding that the district court all the relevant equitable factors including intent to deceive and actual diversion of sales.

Seventh Circuit Holds That Spinal Implant Patents Don’t Sink Trade Secret Claims – On Monday, August 9, the U.S. Court of Appeals for the Seventh Circuit issued a decision in Life Spine, Inc. v. Aegis Spine, Inc. in which the appellate court affirmed “the district court’s meticulous analysis” leading to a preliminary injunction against Aegis from marketing an expandable cage spinal implant system developed using confidential information gained during a business relationship with Life Spine, ruling that Life Spine’s patents covering the spinal implant system did not disclose the trade secrets that were misappropriated by Aegis. 



Magistrate Judge Finds Copyright Claims Against Nickelback’s “Rockstar” Should Survive – On Wednesday, August 11, U.S. Magistrate Judge Susan Hightower of the Western District of Texas entered a report and recommendation finding that Canadian rock band Nickelback had sufficient access to a tape sent by Kirk Johnston to Nickelback’s record label that contained a song called “Rock Star,” which Johnston alleges was copied by Nickelback’s 2005 release “Rockstar.”

USITC Institutes Section 337 Investigation Into F5 Networks Networking Devices – On Tuesday, August 10, the U.S. International Trade Commission announced that it had instituted a Section 337 investigation into certain networking devices, computers and components thereof imported into the U.S. for sale by F5 Networks of Los Angeles, CA, based on allegations of patent infringement filed by LA-based rival Proven Networks, who has already filed infringement litigation in U.S. district court against F5 Networks as of last April.

Magistrate Judge Recommends Derivative Protections for Redesigned Phillie Phanatic – On Tuesday, August 10, U.S. Magistrate Judge Sarah Netburn of the Southern District of New York issued a report and recommendation in a copyright and trademark case over the Phillie Phanatic mascot for Major League Baseball’s Philadelphia Phillies, finding that a redesigned version of the Phanatic unveiled this year by the Phillies is a protectable derivative work that the Phillies can continue to use as the case continues toward trial.

B.E. Tech Files Bivens Action Against Former USPTO Officials for Due Process Violations – On Monday, August 9, Martin David Hoyle, inventor of targeted advertising systems implemented via online search engines, and his company B.E. Technology filed a Bivens action in the Western District of Tennessee alleging that several former USPTO officials, including former USPTO Director Michelle Lee, violated Hoyle and B.E. Tech’s Fifth Amendment Due Process rights to cancel patent claims asserted by B.E. Tech against Lee’s former employer Google.

Judge Albright Strikes Down Post-Trial Motions by Intel, $2.18B Verdict for VLSI Stands For Now – On Monday, August 9, U.S. District Judge Alan D. Albright of the Western District of Texas entered a pair of sealed orders denying post-trial motions filed by Intel Corp. seeking either a new trial or a judgment barring recovery under the unclean hands doctrine, leaving in place a $2.18 billion patent infringement verdict awarded by a jury to VLSI Technology LLC this March.

GAO Denies Protest Filed Against USPTO’s IT Modernization Contracts – On Monday, August 9, the U.S. Government Accountability Office (GAO) formally denied a protest filed by American software firm Salient CGRT against five contracts totalling $2 billion awarded by the U.S. Patent and Trademark Office to firms including Booz Allen Hamilton and Science Applications International Corporation, finding that the USPTO’s comparative analysis during the bidding process were “reasonable, adequately documented and consistent” with the agency’s Business-Oriented Software Solutions (BOSS) IT modernization solicitation.

Judge Carney Rules That Sponsored Influencer Must Face Trademark Infringement Claims – On Friday, August 6, U.S. District Judge Cormac J. Carney of the Central District of California issued a ruling denying-in-part a motion to dismiss trademark infringement claims filed against celebrity endorser Molly Sims for a sponsored blog post promoting an allegedly trademark-infringing eyebrow product, finding that the paid blog post was a commercial use contributing to a likelihood of consumer confusion.

Judge Gilstrap Finds PMC Patent Claims Unenforceable for Prosecution Laches – On Friday, August 6, U.S. District Judge J. Rodney Gilstrap of the Eastern District of Texas entered a final judgment terminating a patent infringement suit filed by Personalized Media Communications (PMC) after ruling that patent claims obtained by PMC in 2012 based on a parent patent application first filed in 1981 were unenforceable under the doctrine of prosecution laches.

This Week on Wall Street

Adidas Sells Reebok for $2.5B to Concentrate on Core Brand – On Thursday, August 12, news reports indicate that German sportswear manufacturer Adidas had sold the rights to the sporting good brand Reebok to Authentic Brands Group, owner of Sports Illustrated, Juicy Couture and Aéropostale, for nearly €2.1 billion ($2.5 billion USD) as Adidas continues to focus on its core brand which has successfully broken into the U.S. market despite Nike’s dominance in athletic footwear and apparel.

Foxconn Announces EV Factories in U.S., Thailand Will Be Built By 2022 – On Thursday, August 12, Foxconn Chairman Liu Young announced during an earnings call with investors that the contract manufacturer for the semiconductor industry had plans to open factories in both the United States and Thailand by 2022. The manufacturing facilities will be focused on the production of electric vehicles.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2020 are announcing quarterly earnings next week (2020 rank in parentheses):

  • Monday: None
  • Tuesday: Walmart Inc. (125th)
  • Wednesday: Analog Devices, Inc. (160th); Cisco Systems, Inc. (39th); NVIDIA Corp. (t-192nd); Tencent Holdings Ltd. (81st)
  • Thursday: Applied Materials, Inc. (62nd)
  • Friday: Deere & Co. (t-104th)




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