Other Barks & Bites for Friday, January 14: Property Rights Groups Oppose SEP Draft Policy Statement, PTAB POP Issues Ruling on Wire Transfer of IPR Filing Fee, and SCOTUS Denies Appeal in Breach of Royalty Agreement Case

This week in Other Barks & Bites: Nominees Kathi Vidal and Judge Leonard Stark clear the Senate Judiciary Committee; PTAB Precedential Opinion Panel says Fedwire confirmation constitutes payment for purpose of inter partes review (IPR) filing date; IFI CLAIMS reports show that IBM leads U.S. patent grants and Samsung leads global patent ownership; the Fifth Circuit affirms a bankruptcy court’s approval of the sale of a cargo vessel incorporating patented technology; the Supreme Court denies certiorari to Warsaw Orthopedic’s appeal of a ruling that it breached an agreement to pay patent royalties; Alan Davidson is confirmed as head of the NTIA to direct $48.2 billion broadband infrastructure investment; a coalition of 28 property rights groups oppose the recent draft policy statement on negotiation FRAND licensing terms for SEPs; Judge Albright denies Google’s request for a continuance that cited Omicron concerns; Apple and Google are targeted in a copyright suit by the developer of the multiplayer online game PUBG; and the TTAB enters a precedential decision sustaining Spotify’s claim for dilution by blurring against a trademark application covering medical marijuana dispensary services.

Bites

PTAB POP Says Fedwire Confirmation of Payment is Sufficient Evidence of Payment for IPRs – On Friday, January 14, the Precedential Opinion Panel (POP) of the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) held that inter partes review (IPR) filing fees paid by wire transfer should be accorded the filing date that the transfer was made and Fedwire confirmation received, rather than the date payment is actually delivered to the USPTO. 

Fifth Circuit Approves Bankruptcy Sale of Cargo Vessel With Patented Technology – On Thursday, January 13, the U.S. Court of Appeals for the Fifth Circuit issued a decision in In re: C Whale Corp. in which the appellate court affirmed the U.S. Bankruptcy Court for the Southern District of Texas’ order approving the sale of a cargo vessel utilizing under-deck piping technology for carrying ore and oil despite claims that patent rights to the under-deck piping technology should have prevented the sale. 

Vidal, Stark Nominations Advanced from Senate Judiciary for Full Senate Confirmation Vote – On Thursday, January 13, the Senate Judiciary Committee advanced the nominations of Kathi Vidal, to serve as the Director of the U.S. Patent and Trademark Office, and Judge Leonard P. Stark, to serve on the U.S. Court of Appeals for the Federal Circuit, towards a full vote on the floor of the U.S. Senate. Vidal was advanced by a 17-5 vote despite concerns about her connections to Big Tech, while Judge Stark was advanced by a 16-6 vote.

Property Rights Groups Say U.S. Draft Policy Statement on SEP Licensing Benefits China – On Wednesday, January 12, signatories from 28 property rights advocacy groups sent a letter addressed to U.S. Attorney General Merrick Garland and U.S. Assistant Attorney General for Antitrust Jonathan Kanter raising concerns that the December 2021 draft policy statement on licensing negotiations for standard-essential patents (SEPs) subject to fair, reasonable and non-discriminatory (FRAND) licensing obligations “effectively turns a FRAND commitment into a compulsory licensing clause” and weakens IP rights in favor of Big Tech implementers and Chinese manufacturers infringing on IP rights.

IFI CLAIMS Reports Show IBM, Samsung Remain Dominant in Patent Grants, Ownership – On Tuesday, January 11, patent data analytics firm IFI CLAIMS released its Top 50 and Global 250 lists showing that IBM was again the top recipient of U.S. patent grants during 2021 with 8,682 U.S. patent grants, while Samsung Electronics continues to lead in terms of ownership of global active patent families with 90,416 active patent families worldwide.

Davidson Confirmed as Head of NTIA, Will Direct $48.2B Broadband Investment – On Tuesday, January 11, the U.S. Senate voted to confirm Alan Davidson as Assistant Secretary of Commerce for Communications and Information and Director of the National Telecommunications and Information Administration (NTIA), where Davidson will lead an effort to invest $48.2 billion in broadband infrastructure deployment investment under the Infrastructure Investment and Jobs Act.

SCOTUS Denies Cert in Warsaw Orthopedic’s Appeal of Breach of Royalty Agreement – On Monday, January 10, the U.S. Supreme Court entered an order list showing that the nation’s highest court had denied a petition for writ of certiorari in Warsaw Orthopedics v. Sasso, leaving in place a decision in Indiana state courts awarding $112 million to Sasso for Warsaw Orthopedics’ breach of a royalty agreement for surgical spine patents despite Warsaw Orthopedics’ arguments that the dispute is subject to exclusive jurisdiction in the federal courts.

TTAB Precedential Decision Holds for “Exceedingly Famous” Spotify on Dilution Claim – On Monday, January 10, the Trademark Trial and Appeal Board (TTAB) entered a precedential decision in Spotify AB v. U.S. Software Inc. in which the Board sustained an opposition filed by streaming music provider Spotify alleging dilution by blurring from U.S. Software’s “POTIFY” mark for medical marijuana dispensary services, finding that Spotify’s mark is “widely recognized and exceedingly famous in the United States” and that dilution by blurring was inevitable.

Eighth Circuit Says No Jurisdiction for Appeal of Trademark Stay Under Colorado River – On Friday, January 7, the U.S. Court of Appeals for the Eighth Circuit issued a decision in Window World International, LLC v. O’Toole in which the appellate court dismissed an appeal from the Eastern District of Missouri’s ruling staying Window World’s trademark infringement claims pending the determination of the scope of the licensing agreement for Window World’s marks in ongoing litigation filed in North Carolina Business Court. While the Eighth Circuit majority found the non-final nature of the district court’s stay prevented appellate jurisdiction under 28 U.S.C. § 1291, Circuit Judge Steven M. Colloton dissented, arguing that the appellate court had jurisdiction to affirm Eastern Missouri’s ruling entering a stay under the Supreme Court’s Colorado River abstention doctrine despite the strong preference for the exercise of federal jurisdiction.

Barks

EUIPO Boards of Appeal Adopts Action Plan for 2021 to 2026 – On Friday, January 14, the Presidium of the Boards of Appeal at the European Union Intellectual Property Office (EUIPO) adopted an action plan outlining key initiatives that the Boards of Appeal will incorporate into their proceedings for the years 2021 to 2026, including optimizing operational efficiency and promoting consistent decisional practice.

Judge Albright Denies Continuance for Google in EcoFactor Patent Case – On Wednesday, January 12, U.S. District Judge Alan D. Albright of the Western District of Texas entered an order denying Google’s motion for a continuance of a January 31 trial date in a patent infringement case brought by EcoFactor after Judge Albright found that Google presented no evidence that the Omicron variant of COVID-19, which Google cited as a reason why its witnesses couldn’t testify in-person, would die down by the time of Google’s new requested trial date.

TTAB Grants Motion to Amend Opposition Against “READY4LIFE” Trademark – On Wednesday, January 12, the TTAB granted a motion filed by Topco Holdings to amend its opposition filed against Hand 2 Hand Industries’ trademark application covering the use of “READY4LIFE” on antibacterial sanitizer gel, finding no undue delay or prejudice in allowing Topco to include ownership of two applications for “READY FOR LIFE” marks filed after the opposition was filed.

Joint Settlement Ends Predator Copyright Dispute in Central California – On Wednesday, January 12, a joint stipulation for dismissal with prejudice was entered in the Central District of California, terminating a copyright lawsuit involving James E. Thomas and John C. Thomas, writers of the 1987 screenplay Predator, and Twentieth Century Fox Film Corp. over copyright ownership to the Predator script.

Atlanta-Based Playwright Files Copyright Suit Over P-Valley TV Series – On Wednesday, January 12, Atlanta, GA-based playwright Nicole Gilbert-Daniels filed a lawsuit in the Northern District of Georgia against Lions Gate Entertainment and other entities involved with producing the television drama series P-Valley, which Gilbert-Daniels alleges violates her copyright to a musical stage play Soul Kittens Cabaret.

BGI Genomics Files Motions for Renewed JMOL, New Trial in Illumina Patent Case – On Tuesday, January 11, Chinese genomic sequencing company BGI Genomics filed a renewed motion for judgment as a matter of law (JMOL) and a motion for a new trial in the Northern District of California arguing that American biotech firm Illumina did not present substantial evidence of nonobviousness of an asserted patent as well as BGI’s willfulness in infringement and that Illumina prejudicially maligned BGI Genomics’ ties to China.

Greenville, TX, Approves $8,500 Settlement to Avoid Artist’s Copyright Claims – On Tuesday, January 11, the city council of Greenville, TX, voted to approve an $8,500 payment settling claims from Minnesota-based artist Jon Q. Wright that the city had made an unauthorized use of an image from Wright’s copyrighted series “Legend Series: Rainbow Trout.”

Apple, Google Face Copyright Suit From PUBG Developer – On Monday, January 10, Krafton Inc., developer of the popular online multiplayer battleground game PUBG, filed a lawsuit in the Central District of California against consumer tech giants Apple and Google alleging that they infringed Krafton’s copyright in PUBG by making a Free Fire battleground game available for iOS and Android devices.

This Week on Wall Street

Wells Fargo Posts Quarterly Beat on Revenue, EPS – On Friday, January 14, American banking firm Wells Fargo & Co. reported quarterly revenues showing that the company beat analyst expectations on revenue ($20.86 billion versus $18.82 billion expected) and earnings per share ($1.25 per share versus $1.13 per share expected), sending shares about 3 percent higher during trading.

TSMC Announces $40B Plan to Upgrade Chip Capacity During 2022 – On Thursday, January 13, Taiwan Semiconductor Manufacturing Co., the world’s largest contract manufacturer of computer chips, announced that it would be investing $40 billion to $44 billion during 2022 to upgrade the company’s chip production capacity in order to keep up with increased worldwide demand during the global chip shortage.

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: Citrix Systems, Inc. (227th)
• Tuesday: None
• Wednesday: ASML Holding N.V. (t-151st); Bank of America Corp. (108th); Intel Corp. (5th); Procter & Gamble Co. (77th)
• Thursday: Baker Hughes Co. (86th)
• Friday: Schlumberger N.V. (79th)