Other Barks & Bites for Friday, September 3: Google Appeals Major Copyright Fine by French Regulators, CAFC Rejects Arthrex Argument Against TTAB ATJs and CJEU Says “Zero Tariff” Data Transmissions Run Contrary to Open Internet Regulations

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

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



This week on Other Barks & Bites: the Fifth Circuit Court of Appeals affirms a district court’s ruling that Ericsson did not breach its FRAND obligations in its mobile SEP licensing practices; the EU’s highest court rules that “zero tariff” programs by telecom providers violate EU regulations on open Internet standards; the Federal Circuit affirms an inequitable conduct ruling against Belcher Pharmceuticals’ patent prosecution practices, and rejected an Appointments Clause challenge to the process of appointing administrative trademark judges to the TTAB; GM announces that most of its North American production plants will close due to the global chip shortage; the USPTO extends the deadline for public comments on the agency’s patent eligibility jurisprudence study; the USPTO and the Copyright Office issue their reports to Congress on state sovereign immunity in the context of copyright infringement; and WhatsApp is fined nearly $270 million USD by Irish regulators over its data sharing practices.


CJEU Finds “Zero Tariff” on Certain Data Traffic Contrary to Open Internet Regulations – On Thursday, September 2, the Court of Justice for the European Union (CJEU) entered a decision ruling that “zero tariff” programs offered to consumers by Vodafone and Telekom Deutschland, which do not count certain data transmissions against the data volume provided to consumers in basic subscriptions, are contrary to EU regulations surrounding open Internet access because it “draws a distinction within Internet traffic, on the basis of commercial considerations.”

CAFC Finds No Error in Inequitable Conduct Ruling Against Belcher Pharmaceuticals – On Wednesday, September 1, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Belcher Pharmaceuticals, LLC v. Hospira, Inc. in which the appellate court affirmed the District of Delaware’s ruling that patent claims asserted by Belcher were unenforceable for inequitable conduct. The appellate court dismissed arguments that withheld references were cumulative of other prior art references submitted during prosecution and upheld a finding of intent to deceive despite no clear evidence of deceptive intent.

Google Appeals €500 Million Copyright Fine From French Antitrust Regulators – On Wednesday, September 1, news reports indicate that Google had appealed a €500 million ($591 million USD) fine levied this June by French antitrust regulators over the American Internet search giant’s unauthorized use of news reports from French news publishers and for failing to comply with orders from regulators on how Google was able to conduct its licensing talks with those publishers.

CAFC Remands E-Cig Verdict on Lack of Infringement Notice Over Newman Dissent – On Wednesday, September 1, the Federal Circuit issued a precedential decision in Lubby Holdings LLC. v. Chung in which the appellate court reversed-in-part a jury verdict entered in the Northern District of California after finding that the district court erred in analyzing product marking and infringement notice requirements in 35 U.S.C. § 287. Circuit Judge Pauline Newman dissented on this point, accusing the panel majority of improperly taking a factfinder role in the decision when there was plenty of evidence, including testimony on Chung’s past business relationship with Lubby Holdings, to find that Chung was on notice of his infringement and not simply the issuance of Lubby’s e-cigarette patent.

CAFC Rejects Arthrex-Style Challenge to ATJ Appointments at TTAB – On Wednesday, September 1, the Federal Circuit issued a precedential decision in Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH in which the appellate court affirmed a ruling by the Trademark Trial and Appeal Board (TTAB) cancelling the registered mark “SCHIEDMAYER” for pianos for falsely suggesting a connection with a famed line of German piano makers of that name. In affirming, the Federal Circuit struck down arguments that the Trademark Modernization Act (TMA) of 2020, which clarified that the Director of the U.S. Patent and Trademark Office has the power to review TTAB decisions, indicated that an Appointments Clause issue existed with the administrative trademark judges (ATJs) of the TTAB appointed prior to the TMA’s passage.

Fifth Circuit Finds No Error in Ruling That Ericsson Didn’t Breach FRAND Obligations – On Tuesday, August 31, the U.S. Court of Appeals for the Fifth Circuit entered a decision in HTC Corp. v. Telefonaktiebolaget LM Ericsson in which the appellate court affirmed a district court ruling finding that Ericsson had complied with its fair, reasonable and non-discriminatory (FRAND) licensing obligations regarding patents essential to mobile standards promulgated by the European Telecommunications Standards Institute, in part because HTC failed to properly preserve its challenge to the declaratory judgment by filing a Rule 50(b) renewed motion for judgment as a matter of law.

USPTO, Copyright Office Issue State Sovereign Immunity Studies on Copyright Infringement – On Tuesday, August 31, both the U.S. Copyright Office and the U.S. Patent and Trademark Office issued reports on instances of state infringement of copyrighted works following the U.S. Supreme Court’s decision in Allen v. Cooper declaring unconstitutional a Congressional statute abrogating state sovereign immunity in copyright suits. Although the agencies were unsure whether the record of alleged infringements supported further legislation abrogating sovereign immunity in this context, the Copyright Office in particular noted that “the number of allegations of state infringement provided in the course of this study is substantially greater than the number Congress considered when it adopted its prior abrogation legislation.”

Ninth Circuit Finds Australian Beauty Brand Subject to Specific Personal Jurisdiction in Trademark Case – On Friday, August 27, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Ayla, LLC v. Ayla Skin Pty. Ltd. in which the appellate court reversed the district court’s dismissal of a trademark infringement complaint for lack of personal jurisdiction. The Ninth Circuit found specific personal jurisdiction over the Australian beauty brand defendant in the case under Federal Rule of Civil Procedure 4(k)(2) after finding that Australia’s Ayla purposefully directed its activities at the forum, that the U.S.-based plaintiff’s claims arise out of those activities, and that Ayla Skin’s burden in litigating the case in a forum venue did not outweigh plaintiff Ayla’s interest in adjudicating its trademark dispute within the U.S.


USPTO Extends Patent Eligibility Jurisprudence Study, Modifies COVID-19 Priority Program – On Friday, September 3, the USPTO issued a pair of notices in the Federal Register, one which announced that the agency was extending its study on the current state of U.S. patent eligibility jurisprudence from September 7 to October 15 of this year, and another which announced that the agency would continue to accept patent applications into the COVID-19 Prioritized Examination Pilot Program for consideration on the merits through December 31 of this year instead of expiring after accepting 500 patent applications as initially planned.

Fifth Circuit Affirms Summary Judgment in Civil Rights Suit From Former USPTO Employee – On Thursday, September 2, the Fifth Circuit issued a decision in Marable v. Department of Commerce in which the appellate court affirmed rulings issued on summary judgment terminating discrimination and retaliation claims under Title VII of the Civil Rights Act filed by a former employee of the U.S. Patent and Trademark Office’s satellite office in Dallas, TX. The appellate court agreed with the lower court that the former employee should have sued the USPTO Director, not the U.S. Department of Commerce, and that the district court committed no abuse of discretion in denying Marable’s motion to amend his complaint, which was filed 15 months after the scheduling order deadline in the case.

Cystic Fibrosis Survivor Files Copyright Suit Over “Five Feet Apart” Film – On Wednesday, September 1, Travis Flores, a survivor of cystic fibrosis who has become an activist and motivational speaker on the subject, filed a lawsuit in the Central District of California alleging claims of copyright infringement against the producers of the 2019 romantic drama “Five Feet Apart,” which allegedly is copied from Flores’ own screenplay entitled “Three Feet Distance.” 

Copyright Office Issues Opt-Out Procedures at CCB for Libraries, Class Action Proceedings – On Wednesday, September 1, the U.S. Copyright Office issued a notice of proposed rulemaking in the Federal Register outlining proposed procedures to allow for pre-emptive opt-outs of small claims actions at the Copyright Claims Board (CCB) by libraries and other public archives, as well as opt-out procedures for anyone with a small copyright claim filed at the CCB who has the alternative of joining a class action suit in U.S. district court when the class action claim covers the events and conduct giving rise to the small claim filed at the CCB.

EUIPO Opens SME Fund for IP Financial Aid to EU SMEs Through September – On Wednesday, September 1, the European Union Intellectual Property Office (EUIPO) announced that it had opened the agency’s SME Fund, which grants financial aid for intellectual property services sought by small- and medium-sized enterprises (SMEs), through the month of September.

Judge Stanton Rules No Section 111 Liability Exemption for Locast – On Tuesday, August 31, U.S. District Judge Louis L. Stanton of the U.S. District Court for the Southern District of New York issued a ruling denying summary judgment to streaming service Locast, which retransmits local over-the-air TV broadcasts via the Internet, after finding that donations accepted by the company from customers were fees in excess of what was necessary to defray actual and reasonable costs of operating the retransmission service, eliminating Locast’s fair use defense for retransmissions under 17 U.S.C. § 111(a)(5).

USITC Institutes Section 337 Investigation Against Major Tech Firms Over Mobile Battery Patents – On Tuesday, August 31, the U.S. International Trade Commission announced that it was instituting a Section 337 investigation based on infringement claims regarding mobile battery management patent claims owned by Sonraí Memory and asserted against certain laptops, desktops, mobile phones and tablets imported into the U.S. for sale by several companies including Amazon.com, Dell, Lenovo, Motorola, LG Electronics and Samsung.

Delaware Jury Awards $4.7M to ArcherDx, Mass General in Cancer Diagnostics Case – On Friday, August 27, a jury verdict entered into the District of Delaware awarded $4.7 million in royalties and lost profits to patent owners ArcherDx and Massachusetts General Hospital after finding that German molecular diagnostics firm Qiagen, which spun off ArcherDx as part of a business reorganization in 2015, for willfully infringing a pair of patents covering technologies for detecting gene fusions in cancer molecular diagnostics.

This Week on Wall Street 

Global Chip Shortage Causes Massive Shutdown of GM’s North American Plants – On Thursday, September 2, American automaker General Motors announced that, due to shortages in computer chip supplies, the company would be shuttering operations temporarily at nearly all of its production facilities in North America except for a few facilities producing SUVs, heavy-duty pickups, Corvettes, Camaros and Cadillac Blackwings.

Irish Regulators Fine WhatsApp €225M Over Personal Information Sharing Practices – On Thursday, September 2, Ireland’s Data Protection Commission announced that it had levied a €225 million ($267 million USD) fine against WhatsApp for the social media company’s failure to inform EU citizens about its practices regarding personal information collected by WhatsApp and shared with its parent company Facebook.

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: None
  • Wednesday: Oracle Corp. (56th)
  • Thursday: None
  • Friday: None

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Author: SSilver
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