Other Barks & Bites for Friday, September 24: Albright Admonished Again by CAFC; Senate IP Subcommittee Moves Patent Bills Forward; Tillis Questions Google and Facebook on Ad-Supported Piracy

This week in Other Barks & Bites: the Federal Circuit grants mandamus in another motion to transfer case from the Western District of Texas; the U.S. Department of Justice unseals an indictment charging three individuals with conducting a TV piracy scheme worth $30 million; the Third Circuit holds that right of publicity claims fall under the IP claim carveout to Section 230’s limited liability provisions; the leadership of the Senate IP Subcommittee starts to take action on a set of patent bills that are receiving mixed reactions within the IP community; DABUS AI loses another inventorship case in the UK; Nike revises its 2022 sales forecast downward due to supply chain issues; the United States maintains its third-place ranking in WIPO’s Global Innovation Index; Senator Tillis issues questions to Google and Facebook executives regarding ad-supported copyright piracy abetted by online platforms following a contentious Senate Antitrust hearing on Big Data; and the USPTO publishes an interim rule increasing the annual limit of Track One prioritized examination requests to 15,000. 

Bites 

Federal Circuit Grants Mandamus to Juniper Networks in Latest Rebuke of Albright – The U.S. Court of Appeals for the Federal Circuit on Friday, September 24, granted Juniper Networks’ petition for a writ of mandamus to transfer six complaints relating to six different patents of WSOU Investments LLC d/b/a Brazos Licensing and Development from Judge Alan Albright’s Western District of Texas Court to the United States District Court for the Northern District of California. Likening the case to petitions by Samsung and Hulu in which the court granted mandamus, the Federal Circuit held that “in denying the motion to transfer, the district court committed legal errors that require that we vacate the order denying transfer.” The Federal Circuit has repeatedly granted such mandamus petitions from the WD of TX, or ordered Albright to reconsider denials of motions to transfer, in recent months.

Third Circuit Rules That Right of Publicity Claims Are Within Section 230’s IP Carveout – On Thursday, September 23, the U.S. Court of Appeals for the Third Circuit issued a ruling in Hepp v. Facebook in which the appellate court ruled that Hepp’s right of publicity claims, involving the unauthorized use of a photo captured at a convenience store in online dating ads, were included within the intellectual property carveout found at 47 U.S.C. § 203(e)(2) such that they were not precluded by the limited liability provisions under Section 230 of the Communications Decency Act.

DOJ Unseals Indictment of Three Individuals Convicted of Large-Scale Piracy Scheme – On Wednesday, September 22, the U.S. Department of Justice unsealed the formal indictment of three men who are accused of running a scheme involving the fraudulent obtainment of cable television accounts for the reselling of copyrighted content to thousands of subscribers, earning more than $30 million over the course of the scheme.

Senate IP Subcommittee Leadership Starts Moving Forward Patent Bills – On Tuesday, September 21, Senators Patrick Leahy (D-VT) and Thom Tillis (R-NC), respectively the Chair and Ranking Member of the Senate IP Subcommittee, introduced a pair of patent bills into the Senate: the Unleashing American Innovators Act (UAIA), designed to expand access of underrepresented groups to the U.S. patent system and provide first-time patent applicants with patentability assessments; and the Pride in Patent Ownership Act (PPOA), which would require increased transparency on patent ownership without any reciprocal transparency for parties petitioning the Patent Trial and Appeal Board (PTAB) to challenge patent rights. Then on Thursday, September 23, IPWatchdog reported on a draft summary of the Restoring the America Invents Act bill expected to be introduced by Sen. Leahy to limit the PTAB’s ability to deny institution of patent validity challenges under the NHK/Fintiv discretionary denial framework.

Senate Antitrust Subcommittee Takes on Big Data, Tillis QFRs Focus on Piracy Issues – On Tuesday, September 21, the Senate Antitrust Subcommittee held a hearing on competition issues in the realm of data-driven Internet business models with panel witnesses either representing major tech firms like Google and Facebook, who took many heated questions from Senators, or those presenting solutions giving U.S. consumers greater leverage in personal data transactions. Senator Tillis, who is an Antitrust Subcommittee member as well as the Ranking Member of the Senate IP Subcommittee, submitted several questions for the record to hearing panel witnesses, including questions regarding advertisements for pirated digital content services that are promoted on Google and Facebook’s Internet platforms.

UK Court of Appeals Rules that DABUS AI Cannot Be Named Inventor – On Tuesday, September 21, the UK’s Court of Appeals entered a ruling that found that DABUS AI, the artificial intelligence system built by Dr. Stephen Thaler and named as the sole inventor in several patent applications filed at IP offices around the world, cannot be considered an inventor under UK law because patents can only be granted to natural persons.

U.S. Remains in Third-Place, China Makes Gains in WIPO’s GII 2021 – On Monday, September 20, the World Intellectual Property Organization (WIPO) published the Global Innovation Index (GII) 2021 report showing that the United States remains the third-most innovative economy in the world in measurable technology inputs and outputs, behind second-place Sweden and top-ranked Switzerland, which has ranked first in the index for 11 straight years. China ranked 12th overall in the index, continuing a trend of positive growth for the country’s GII ranking since 2013.

Ninth Circuit Reverses Dismissal of Copyright Claims Under Separate Accrual Rule – On Monday, September 20, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in Howard v. Pearl in which the appellate court reversed the district court’s dismissal of copyright claims filed by Howard, who claims he co-wrote a gospel music song with defendants in 1996. The Ninth Circuit held that the district court must consider whether the separate accrual rule applies to Howard’s allegations that the songs continue to be sold by defendants constitute infringing acts with the Copyright Act’s three-year statute of limitations.

Barks

USPTO Publishes Interim Rule Increasing Annual Limit on Track One Requests – On Friday, September 24, the U.S. Patent and Trademark Office published an interim rule in the Federal Register expanding the availability of the agency’s Track One prioritized examination program by increasing the limit of annual requests that the agency can accept in a single fiscal year to 15,000 requests, up from the current limit of 12,000 requests.

Keyana Pusey Welcomed as Latest Ringer Fellow to Copyright Office – On Thursday, September 23, the U.S. Copyright Office announced that Keyana Pusey, who earned her JD from American University Washington College of Law this year, recently started a two-year appointment serving the Office as a fellow in the Barbara A. Ringer Copyright Honors Program.

Judge Hinkle Grants Summary Judgment Nixing Trademark Claims Against MTV’s Floribama Shore – On Wednesday, September 22, U.S. District Judge Robert L. Hinkle of the Northern District of Florida entered an order granting a motion for summary judgment filed by the producers of the MTV reality show Floribama Shore after determining that the plaintiffs, owners of a Pensacola, FL beach bar called Flora-Bama, did not show enough likelihood of consumer confusion to meet the strong standard required to show infringement in the context of artistic works.

USPTO Updates GRB Eligibility Requirements, Expands Category A Degrees – On Wednesday, September 22, the USPTO published a notice in the Federal Register announcing that it was updating the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the USPTO (GRB) by increasing the specified bachelor’s degrees qualifying prospective patent practitioners under Category A, accepting advanced degrees under Category A and allowing a combination of core sciences coursework for Category B, Options 2 and 4, as long as one of the core sciences courses has a lab component.

Merck & Co. Settles Vaccine Patent Dispute With Pfizer Subsidiary – On Tuesday, September 21, American pharmaceutical firm Merck Sharp & Dohme (Merck & Co.) filed a stipulation of dismissal in the District of Delaware, ending a suit seeking a declaratory judgment that Merck’s pneumococcal vaccine did not infringe patent claims owned by Pfizer subsidiary Wyeth, or that Wyeth’s patent claims were invalid.

USPTO Reopens Comment Period on Patent Maintenance Fee Rules – On Tuesday, September 21, the USPTO published a notice in the Federal Register reopening a public comment period that had previously expired on April 30 of this year regarding the agency’s rules for patent maintenance fees. The current comment period will remain open for 30 days.

New York City Files Trademark Suit Over NYC Cannabis Merchandise – On Tuesday, September 21, the City of New York filed a lawsuit in the Southern District of New York against Robert G. Lopez over allegations that Lopez has been marketing several lines of merchandise with cannabis-related branding that makes unauthorized use of several registered trademarks owned by the city.

Judge Breyer Dismisses Copyright Claims Against Instagram Under Perfect 10 Server Test – On Friday, September 17, U.S. District Judge Charles R. Breyer entered an order granting a motion to dismiss copyright claims filed against social media network Instagram after ruling that, under Ninth Circuit precedent in Perfect 10 v. Amazon, Instagram is not liable for copyright infringement conducted by third parties using Instagram’s embedding feature as the feature does not “fix” the copyrighted work in a “tangible medium of expression.”

This Week on Wall Street

Nike Shares Drop After-Hours After Sales Guidance Downgraded on Supply Chain Issues – On Thursday, September 23, shares of American athletic footwear firm Nike were down by 3 percent after the firm revised its sales forecast for 2022 downward due to the impacts of supply chain issues including transit, labor and Southeast Asia production shutdowns.

Novavax Shares Up Nearly 10% After Emergency Use Filing at WHO – On Thursday, September 23, shares of American biotech firm Novavax increased by 9.7 percent during morning trading hours after the company announced that it and the Serum Institute of India had filed for an emergency use listing through the World Health Organization for a COVID-19 vaccine developed jointly by those two entities.

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: Micron Technology, Inc. (22nd)
• Wednesday: None
• Thursday: None
• Friday: None