Other Barks & Bites for Friday, August 27: Tenth Circuit Sides with First on Lanham Act’s Extraterritoriality, CAFC Overturns $1.2 Billion Verdict in Cancer Immunotherapy Case, and Ninth Circuit Says No Public Performance Rights in CA Copyright Law

This week in Other Barks & Bites: a series of Big Tech CEOs meet with White House officials to coordinate efforts on U.S. cybersecurity initiatives and training programs; the Federal Circuit issues decisions affirming Section 101 invalidations of secure mobile transaction claims asserted against Apple, and overturning a $1.2 billion jury verdict for Juno Therapeutics after ruling that asserted patent claims failed the Section 112 written description requirement; the Tenth Circuit decides an issue of first impression and sides with the First Circuit in interpreting the extraterritorial reach of infringement claims under the Lanham Act; Judge Koeltl orders additional briefing on impact of Warhol Foundation’s fair use ruling in copyright case against former President Donald Trump; the Ninth Circuit rules that California law does not grant music copyright owners a right of public performance that would require digital and satellite radio providers to pay royalties for pre-1972 sound recordings; and Judge Koh rejects VoIP-Pal’s motion to dismiss a declaratory judgment action filed by AT&T despite a covenant not to sue on the patent AT&T seeks to invalidate.

Bites

$1.2 Billion Juno Therapeutics Verdict Overturned by CAFC for Section 112 Written Description Requirement – On Thursday, August 26, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Juno Therapeutics, Inc. v. Kite Pharma, Inc. in which the appellate court overturned a jury verdict awarding $1.2 billion to Juno Therapeutics for Kite Pharma’s infringement of patented cancer immunotherapy technology. The CAFC held that the patent claims owned by Juno and Sloan Kettering Institute for Cancer Research failed the Section 112 written description requirement for failing to disclose structural features common to a claimed genus of antibodies to support that the inventors actually possessed the claimed invention.

CAFC Affirms Section 101 Invalidation of Patent Claims Owned by Secure Transaction Pioneer USR – On Thursday, August 26, the Federal Circuit issued a precedential decision in Universal Secure Registry LLC v. Apple Inc. in which the appellate court affirmed a ruling by the District of Delaware invalidating a series of patent claims owned by USR, a company founded by secure mobile transaction pioneer Dr. Kenneth Weiss, as directed to the abstract idea of verifying a device user’s identity in order to enable a transaction across devices.

Second Circuit Maintains Monopolization Claims Against Takeda’s Actos Over Motion to Dismiss – On Wednesday, August 25, the U.S. Court of Appeals for the Second Circuit issued a decision in United Food & Commercial Workers Local 1776 v. Takeda Pharmaceutical Company Ltd. in which the appellate court affirmed the district court’s denial of Takeda’s motion to dismiss Sherman Act claims involving allegations that Takeda improperly listed combination patents on the Orange Book in order to maintain an unlawful monopoly over its Actos diabetes treatment despite expiry of patent claims covering the drug’s only active ingredient.

Sixth Circuit Revives Trade Secret Claims Over Industrial Equipment Drawings – On Tuesday, August 24, the U.S. Court of Appeals for the Sixth Circuit issued a decision in B&P Littleford, LLC v. Prescott Machinery, LLC in which the appellate court reversed a district court’s grant of summary judgment dismissing trade secret claims as time-barred, as well as sanctions against B&P and its counsel, after finding multiple issues of material fact surrounding allegations of misappropriation of B&P’s industrial drawings by Prescott, a company created by a former president of B&P, during a 2017 bidding process with the U.S. Navy to rebuild a vertical batch rocket fuel mixer that was previously built by B&P’s predecessor.

CAFC Reverses Denial of No Infringement JMOL in Portable Wireless Amplifier Case – On Tuesday, August 24, the Federal Circuit issued a decision in CommScope Technologies LLC v. Dali Wireless Inc. in which the appellate court reversed the Northern District of Texas’ decision to deny a motion for JMOL that CommScope’s FlexWave device did not infringe patent claims asserted by Dali. The Federal Circuit found that Dali’s expert testimony did not support its infringement theory as it provided no evidence that the claimed power amplifier’s switch or controller was rendered “nonoperating” through a specific mechanism.

Tenth Circuit Sides With First Circuit in Interpreting Extraterritoriality of Lanham Act – On Tuesday, August 24, the U.S. Court of Appeals for the Tenth Circuit issued a decision in Hetronic International, Inc. v. Hetronic Germany GmbH in which the appellate court reversed-in-part a $100 million jury verdict for trademark infringement based on foreign sales and a global injunction. Although the Tenth Circuit, siding with the First Circuit’s reasoning in McBee v. Delica Co., found that the district court properly found that the Lanham Act could be used to reach infringing acts abroad, the appellate court held that the inquiry should have been decided as a matter of law and not after a factual inquiry, and that the global injunction against Hetronic Germany was too broad in scope.

Ninth Circuit Says Public Performance Rights Not Included in CA Copyright Law – On Monday, August 23, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Flo & Eddie, Inc. v. Sirius XM Radio, Inc. in which the appellate court reversed a district court’s grant of partial summary judgment for Flo & Eddie, an entity representing members of the American rock band The Turtles, after finding that grants of “exclusive ownership” to musicians under California copyright law did not include a right of public performance that requires Sirius XM and other digital and satellite radio providers to pay for broadcasting pre-1972 music recordings.

Fifth Circuit Vacates Injunction, Expedited Discovery in Virtual Data Room Trade Secret Case – On Monday, August 23, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Document Operations, L.L.C. v. AOS Legal Technologies, Inc. in which the appellate court vacated the district court’s grant of a preliminary injunction and an expedited discovery order after finding that the district court improperly converted a hearing for temporary restraining order into a hearing for preliminary injunction without notice to AOS, and improperly ordered Zoom depositions of AOS’ corporate representatives in Japan in contravention of the U.S.-Japan Consular Convention of 1964.

Barks

Judge Koeltl Orders Briefing on Impact of Warhol Foundation on Trump Copyright Case – On Thursday, August 26, U.S. District Judge John G. Koeltl of the Southern District of New York ordered additional briefing in a copyright case brought by Eddy Grant, writer of the 1982 reggae hit “Electric Avenue,” against Donald Trump for his use of the song in political ads during his Presidential campaign against Joe Biden. Judge Koeltl’s order seeks parties to brief the court on the impact of the Second Circuit’s recent ruling in Warhol Foundation v. Goldsmith on the fair use issues raised by Trump.

Five-Year EU-Funded AfrIPI Initiative Gets Underway – On Thursday, August 26, the European Union Intellectual Property Office (EUIPO) announced that the Africa Intellectual Property Rights and Innovation Project (AfrIPI) was officially launched during a regional IP conference held in Kampala, Uganda, beginning a five-year EU-funded project to promote IP rights across Africa in collaboration with African governments and regional IP organizations on the continent.

Judge Koh Denies VoIP-Pal Motion to Dismiss Based on Past Litigation – On Wednesday, August 25, U.S. District Judge Lucy H. Koh of the Northern District of California denied a motion to dismiss a complaint for declaratory judgment filed by telecom firm AT&T despite VoIP-Pal’s entry into a covenant not to sue on the patent-in-suit, in part due to VoIP-Pal’s other lawsuits against AT&T based on patent claims covering similar technologies.

USPTO Solicits Public Comments on Fee Deficiency Submissions – On Wednesday, August 25, the U.S. Patent and Trademark Office published a request for comment in the Federal Register announcing an information collection regarding deficiency payments to be made by patent applicants who in good faith identified themselves as small or micro entities for paying reduced application fees under the America Invents Act (AIA) but later find that they do not qualify for those reduced fees.

EA Announces No Infringement Suit Pledge on Accessibility Tech Patents – On Tuesday, August 24, video game developer Electronic Arts announced that the company is promising that it will not file patent infringement lawsuits against other game developers for any infringements of a series of four U.S. patent, and one Canadian patent, covering various improvements to accessibility for vision and hearing impaired individuals.

Ninth Circuit Affirms Dismissal of Pro Se Copyright Infringement, DMCA Claims – On Tuesday, August 24, the Ninth Circuit issued a decision in Barazahi v. Amazon.com in which the appellate court affirmed the district court’s dismissal of copyright infringement claims against Amazon.com, finding that Barazahi failed to allege that Amazon violated exclusive distribution rights, and Digital Millennium Copyright Act claims, finding that Barazahi did not allege facts sufficient to show that Amazon circumvented any technological control with respect to any of Barazahi’s copyrighted works.

Ninth Circuit Reiterates Strength of Fourth Fair Use Factor in Spiritual Leader Painting Case – On Monday, August 23, the Ninth Circuit issued a decision in Divine Dharma Meditation International Inc. v. Institute of Latent Energy Studies in which the appellate court affirmed a jury verdict finding that the Institute’s use of a painting of spiritual leader Dasira Narada constituted a fair use. The Ninth Circuit, after finding that only the fourth fair use factor regarding the alleged infringement’s effects on the copyrighted work’s potential market weighed in favor of fair use, affirmed the jury’s verdict after noting that the fourth fair use factor is the single most important element of fair use.

Carvana Seeks Declaratory Judgment That It Doesn’t Infringe “CARVANT” Trademark – On Friday, August 20, online used car retailer Carvana filed a complaint for declaratory judgment in the Northern District of Georgia asking the court to declare that the company’s federally registered “CARVANA” trademark does not infringe upon trademarks owned by auto financing firm Carvant and that Carvant is not entitled to any injunctive relief over any mark infringement claims.

This Week on Wall Street

TSMC Semiconductor Price Increases Could Drive Up Consumer Device Prices – On Thursday, August 26, The Wall Street Journal reported that sources close to Taiwan Semiconductor Manufacturing Co. (TSMC), the world’s largest contract manufacturer of computing chips, would be raising prices for its most advanced chips by 10 percent and for its other chip products by 20 percent, which is likely to increase consumer prices for devices utilizing TSMC chips, including many Apple devices.

Big Tech CEOs Pledge Aid on Cybersecurity Initiatives to Biden Administration – On Wednesday, August 25, a meeting at the White House between top Biden Administration officials and the chief executives of several big tech firms including IBM, Microsoft, Apple, Google’s parent company Alphabet and Amazon.com, during which the tech firms pledged to invest more than $30 billion in cybersecurity initiatives and to increase cybersecurity training programs to address the growing threat of cyber attacks on the U.S. economy.

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: Midea Group Co., Ltd. (t-267th)
• Wednesday: None
• Thursday: Broadcom Inc. (148th); Hewlett Packard Enterprise Co. (53rd)
• Friday: None