Other Barks & Bites for Friday, September 10: HHS Secretary Proposes USPTO and FDA Collaborate on Drug Patents, Judge Koh Nominated to the Ninth Circuit and Tillis and Leahy Pen Letter on Inconsistent Patent Applicant Disclosures

This week in Other Barks & Bites: Senators Thom Tillis and Patrick Leahy ask the USPTO’s Drew Hirshfeld what the agency will do to enforce patent disclosure requirements at other federal agencies on patent applicants; the Fifth Circuit affirms sovereign immunity for Texas A&M’s athletic department but nixes a qualified immunity defense for a media relations director involved in unauthorized online republication of a copyrighted book excerpt; Judge Lucy Koh is nominated by President Biden to serve on the Ninth Circuit; the European Court of Justice rules that the protected designation of origin covering French champagne may be enforced against a Spanish tapas bar operator using champagne in its name and logo if the use causes consumer confusion; the Ninth Circuit reiterates that de minimis copying is not a defense to copyright infringement; increased scrutiny by Chinese regulators over restrictions to child online gaming sends shares of Tencent and NetEase down; and HHS Secretary Becerra outlines a proposal to reduce drug prices that includes plans to have the FDA and USPTO collaborate on efforts to eliminate drug companies’ ability to artificially extend market exclusivity after patent expiry.

Bites

Senators Tillis, Leahy Send Letter to USPTO’s Hirshfeld on Inconsistent Patent Applicant Disclosures – On Thursday, September 9, Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT) sent a letter addressed to Drew Hirshfeld, performing the functions and duties of Director of the U.S. Patent and Trademark Office, asking the USPTO to take steps to enforce patent applicant’s duties to make their patent disclosures consistent among federal agencies. The Senators indicated that such measures are necessary in the face of instances of inconsistent prior art disclosures by patent applicants to the USPTO to secure patent rights and the U.S. Food and Drug Administration (FDA) to secure market exclusivity for pharmaceutical products.

HHS Secretary Becerra Announces Drug Pricing Plan Including FDA, USPTO Cooperation – On Thursday, September 9, Health and Human Services Secretary Xavier Becerra issued a comprehensive plan for addressing high drug prices, including proposals for curbing patent abuses by brand name pharmaceutical firms to improperly extend market exclusivities preventing the market entry of generics that will involve collaboration between the USPTO and FDA on efforts to incentivize the rapid availability of generics.

Ninth Circuit Says De Minimis Use is Not a Defense to Copyright Infringement – On Thursday, September 9, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Bell v. Wilmot Storage Services, LLC in which the appellate court reversed a grant of summary judgment issued by the district court in favor of defendant Wilmot as the district court improperly found that Wilmot’s use of Bell’s photograph of the Indianapolis skyline on its website was a de minimis use that provided a defense to infringement. The Ninth Circuit wrote that the circuit court “has never recognized a de minimis defense based on the allegedly minimal use of concededly infringing material.”

ECJ Rules That PDOs Extend to Products and Services in Champanillo Tapas Bar Case – On Thursday, September 9, the European Court of Justice (ECJ) issued a ruling finding that the rights afforded by the protected designation of origin (PDO) for champagne extends to products and services and remanded to Spanish courts to decide whether the owner of Champanillos tapas bars, which use a logo depicting champagne, misleads consumers such that they believed that there was a link between French PDO-protected champagne and the tapas bars.

CAFC Denies Mandamus Over O’Malley Dissent That IPR Shouldn’t Revoke Arbitration Clauses – On Wednesday, September 8, the U.S. Court of Appeals for the Federal Circuit issued an order in In re: MaxPower Semiconductor in which the appellate court dismissed a petition for writ of mandamus seeking relief from a series of inter partes review (IPR) institutions by the Patent Trial and Appeal Board due to the nonappealability of decisions to institute under 35 U.S.C. § 314(d). Circuit Judge Kathleen O’Malley authored a dissent arguing that the majority’s approach improperly added a caveat to 35 U.S.C. § 294, which holds that agreements to arbitrate patent validity are valid, and flew in the face of strong policy favoring arbitration agreements like the one asserted by MaxPower.

Biden Nominates Judge Koh to Ninth Circuit – On Wednesday, September 8, President Joe Biden issued nominations for a series of eight judgeships in U.S. district courts and in the U.S. courts of appeal, including the nomination of U.S. District Judge Lucy H. Koh to serve as a circuit judge in the U.S. Court of Appeals for the Ninth Circuit.

Fifth Circuit Affirms Texas A&M Sovereign Immunity Win in 12th Man Copyright Case – On Wednesday, September 8, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Canada Hockey, L.L.C. v. Texas A&M University Athletic Department in which the appellate court affirmed a sovereign immunity defense for Texas A&M’s athletic department and dismissed Takings Clause claims raised by the writer of an unpublished book titled 12th Man that the department republished online without authorization. That same day, the Fifth Circuit also decided Canada Hockey, L.L.C. v. Marquardt, ruling that a Texas A&M media relations director did not have qualified immunity to evade liability for his actions in republishing the 12th Man excerpt.

Ninth Circuit Rules Guest-Tek Bargained Away Right to PTAB Petitions in Forum Selection Clause – On Friday, September 3, the Ninth Circuit issued a pair of decisions in Nomadix, Inc. v. Guest-Tek Interactive Entertainment Ltd. in which the appellate court affirmed a permanent injunction preventing Guest-Tek from petitioning the PTAB to challenge the validity of patents related to a licensing agreement with Nomadix having a forum selection clause that requires disputes involving the agreement to be brought in suits filed in the Central District of California. The Ninth Circuit vacated part of an attorneys’ fees award to Nomadix, however, as the relevant provision in the licensing agreement only required reimbursement for legal costs in federal district and state superior courts, not the PTAB.

Barks 

Copyright Office Extends Filing Deadlines in Response to COVID-19, eCO System Outage – On Wednesday, September 8, the U.S. Copyright Office announced that it would once again extend certain timing requirements related to certain registration claims and notices of termination for persons affected by the COVID-19 pandemic pursuant to the agency’s authority under the Coronavirus Aid, Relief, and Economic Security (CARES) Act. The agency also announced an accommodation for copyright applicants affected by last month’s outage of the Office’s Electronic Copyright Office (eCO) system, allowing them to contact the Public Information Office to request reopening a claim that was closed for failure to correspond with the Office during the eCO outage period.

Judge Gilstrap Undoes Willfulness Finding After $300 Million Verdict for Optis Wireless – On Wednesday, September 8, U.S. District Judge J. Rodney Gilstrap of the Eastern District of Texas entered a final judgment in Optis Wireless’ patent infringement case against Apple’s 4G mobile devices, declining to award enhanced damages despite a finding of willful infringement in the jury’s verdict after finding that Apple’s conduct did not constitute the type of egregious behavior that enables a court to award enhanced damages under 35 U.S.C. § 284.

EPO Launches Largest Training Program Ever Outside Europe With ARIPO Offices – On Wednesday, September 8, the European Patent Office (EPO) announced that it had officially launched the virtual Regional ARIPO Patent Examination Training (ARPET) program with the national IP offices of the 20 member nations of the African Regional Intellectual Property Organization (ARIPO) and the national offices of Angola and Ethiopia, the largest ever training program undertaken by the EPO with IP offices outside of Europe.

Judge Albright Grants Motion to Transfer Emoji Copyright Case Against Apple to N.D. Cal. – On Tuesday, September 7, U.S. District Judge Alan D. Albright of the Western District of Texas granted a motion to transfer to the Northern District of California a copyright and trade dress infringement suit filed by Cub Club Investment against Apple’s allegedly unauthorized use of racially diverse emojis developed by Cub Club and marketed as iDiversicons.

USITC’s OUII Says Google Redesigns Do Not Infringe Asserted Sonos Patents – On Tuesday, September 7, the U.S. International Trade Commission’s (ITC) Office of Unfair Import Investigations (OUII) filed a response to petitions for review of a previous determination of a Section 337 violation by Google for infringing on certain wireless speaker patents asserted by Sonos, finding that Google had successfully adjudicated asserted redesigns during the investigation and that those redesigns allow Google to evade some of the previous infringement findings.

Apple Faces Western Texas Patent Suit Over Mobile Payment System – On Tuesday, September 7, patent owner RFCyber Corp. filed a lawsuit in the Western District of Texas alleging claims of patent infringement by consumer tech giant Apple for implementing its Apple Pay system on mobile devices, infringing upon RFCyber patent claims covering devices and methods for enabling secure contactless payment with a portable device.

USPTO Solicits Public Comments on Representative and Address Provision Info Collections – On Tuesday, September 7, the USPTO issued a request for comments in the Federal Register opening a 60-day public comment period regarding information collected by the agency in submissions requesting grants or revocations of power of attorney for a patent application as well as submissions requesting changes to correspondence addresses associated with a patent application or patent.

Judge Gilstrap Denies PNC’s Motion to Dismiss USAA Mobile Check Deposit Patent Case – On Friday, September 3, U.S. District Judge J. Rodney Gilstrap of the Eastern District of Texas denied a motion to dismiss filed by defendant PNC Bank as Judge Gilstrap found that patent owner United States Automobile Association (USAA) plausibly alleged that PNC Bank’s mobile check deposit technology infringes upon patents, ruling that it was too early to decide whether the PNC Mobile Deposit system does not directly infringe USAA’s asserted patents.

This Week on Wall Street 

Cybersecurity Firm ZScaler Nearly Doubles Analyst Expectations on Quarterly EPS – On Friday, September 10, cloud-based cybersecurity firm ZScaler posted earnings for the fourth quarter of its 2021 fiscal year during which the firm earned revenues of $197.1 million, well ahead of analyst expectations of $125.9 million in revenue, representing 14 cents earnings per share (EPS), nearly doubling analyst forecasts of 8 cents EPS for the quarter.

Shares of Tencent, NetEase Drop on Increased Scrutiny From Chinese Regulators – On Thursday, September 9, shares of Chinese Internet tech companies Tencent and NetEase dropped by about 8.5 percent and 11 percent respectively on news that both of the companies were summoned into interviews by a collection of Chinese regulatory agencies where the companies were informed that there would be serious repercussions for any violations of legal restrictions on children’s game time.

Ford Shuttering India Operations as Company Increases Focus on Chinese Market – On Thursday, September 9, news reports indicated that Ford Motor Company would immediately cease production of automobiles for the consumer market in the Asian subcontinent of India, the latest global restructuring of Ford’s operations which has seen the company make substantial forays into China’s consumer market.