Other Barks & Bites for Friday, April 1: Sanders and Warren Raise Microsoft-Activision Merger Concerns, PTAB Denies Request for Rehearing on VLSI Patent, and Second Circuit Vacates Denial of Trademark Injunction Over Licensee Estoppel

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

Bark (noun): peripheral noise worth your attention.

https://depositphotos.com/461052886/stock-photo-dog-labrador-clown-wears-jester.htmlThis week in Other Barks & Bites: the National Academy of Public Administration tells Senator Tillis that the agency will conduct a study into the possibility of a stand-alone U.S. IP office; the Fifth Circuit finds that two sales of allegedly infringing products may create minimum contacts with Texas but doesn’t support specific personal jurisdiction over trademark claims; Bernie Sanders, Elizabeth Warren and other Democrat Senators send a letter to the FTC regarding concerns over the Microsoft-Activision merger and how it may obfuscate investigations into wrongdoing at Activision; President Joe Biden is expected to invoke the Defense Production Act to support the domestic EV battery production industry; the Supreme Court grants a petition for writ to review the Second Circuit’s fair use ruling on Andy Warhol’s Prince Series; the PTAB denies a request for rehearing from petition OpenSky on an IPR challenging one of two VLSI patents supporting a $2.2 billion verdict in district court; Judge Gilstrap orders a new trial in a garage door opener patent case as sanctions for the defendant’s failure to disclose a new product that allegedly infringe on claims asserted by the Chamberlain Group; and the Second Circuit vacates the District of Connecticut’s denial of a preliminary injunction, finding that the district court didn’t properly consider previous licensing agreements between the parties and their effect on licensee estoppel.


NAPA to Perform Study on Feasibility of Stand-Alone U.S. IP Office – On Thursday, March 31, the National Academy of Public Administration (NAPA) sent a letter to Senator Thom Tillis (R-NC) to inform Tillis that the agency will begin conversations with both the U.S. Patent and Trademark Office as well as the U.S. Copyright Office to determine the feasibility of folding the operations of both IP agencies into a single, stand-alone intellectual property office serving the United States.

Democrats, Sanders Send Letter to FTC Over Microsoft-Activision Merger Concerns – On Thursday, March 31, Senators Elizabeth Warren (D-MA), Sheldon Whitehouse (D-RI), Cory Booker (D-NJ) and Bernie Sanders (I-VT) sent a letter addressed to the Federal Trade Commission (FTC) voicing the Senators’ concerns over allegations of sexual abuse and other wrongdoing at Activision and whether the proposed merger would impede federal and state investigations into those matters.

Second Circuit Vacates Denial of Injunction for Failure to Consider Licensee Estoppel – On Wednesday, March 30, the U.S. Court of Appeals for the Second Circuit issued a ruling in Colony Grill Development, LLC v. Colony Grill, Inc. in which the appellate court vacated a denial of preliminary injunction entered by the District of Connecticut after finding that the district court erred in determining whether plaintiff Colony Grill, Inc. (CGI) was entitled to an injunction prevent defendant Colony Grill Development (CGD) from using its trademarks, in part for failing to consider past licensing agreements between the parties which include provisions preventing licensees like CGD from challenging the validity or ownership of CGI’s trademarks.

Fifth Circuit Says Trademark Claims Do Not Arise From Jet’s Minimum Contacts With Texas – On Wednesday, March 30, the U.S. Court of Appeals for the Fifth Circuit issued a ruling in Getagadget, LLC v. Jet Creations Inc. in which the appellate court affirmed a district court ruling dismissing Getagadget’s trademark claims over the sale of a pair of pool floats that allegedly infringe on Getagadget’s “BIG BITE” mark. The Fifth Circuit found that, regardless whether two sales of infringing pool floats could satisfy minimum contacts with Texas for personal jurisdiction, those two sales cannot support specific personal jurisdiction for Getagadget’s trademark, trade dress and unfair competition claims.

Second Circuit Affirms Fair Use Dismissal of Copyright Suit Over New York Post Photo – On Tuesday, March 29, the Second Circuit issued a ruling in Yang v. Mic Network Inc. in which the appellate court affirmed a district court’s Rule 12(b)(6) dismissal of copyright infringement claims over Mic Network’s use of a photograph by Stephen Yang, originally licensed for use in a New York Post article, which Mic used in an article covering Twitter’s reaction to the original piece in the New York Post. The district court had ruled that Mic’s use of Yang’s photograph was covered by the fair use doctrine.

SCOTUS To Review Second Circuit Fair Use Ruling on Andy Warhol’s Prince Series – On Monday, March 28, the U.S. Supreme Court issued an order list indicating that the nation’s highest court granted a petition for writ of certiorari to take up Andy Warhol Foundation v. Goldsmith, a case that asks the nation’s highest court to clarify the contours of the fair use doctrine in copyright law. Several amicus filings supporting the petition argued that the Second Circuit’s ruling that Andy Warhol’s Prince Series was substantially similar to a reference photograph of Prince taken by photographer Lynn Goldsmith as a matter of law violates Supreme Court precedent on the First Amendment. 

PTAB Denies Request for Rehearing of IPR Petition Challenging Patent in $2.2 Billion VLSI Verdict – On Monday, March 28, the Patent Trial and Appeal Board (PTAB) issued a decision denying a request for rehearing of a petition for inter partes review (IPR) filed by OpenSky Industries and challenging the validity of one of two patents infringed by Intel Corporation leading to a $2.2 billion damages verdict in U.S. district court for patent owner VLSI Technologies. In separate IPR proceedings challenging the same patent, OpenSky offered a highly controversial “construct” to VLSI Technologies that some commentators believe flouts the USPTO’s Rules of Professional Conduct.

USPTO Tasked With Inclusive Innovation, Register Cleanup Duties in Commerce Department Plan – On Monday, March 28, the U.S. Department of Commerce issued a strategic plan for fiscal years 2022 through 2026 which charges the U.S. Patent and Trademark Office with serving as the lead agency on the Department’s objective of promoting accessibility and reliability in intellectual property rights, including collaborating with the Council for Inclusive Innovation on programs to aid independent inventors in commercializing their inventions and establishing a trademark examiner academy to reduce registration of fraudulent trademarks.


USPTO Seeking Public Comments on Info Collected in Inventor Promoter Complaints – On Thursday, March 31, the USPTO issued a request for comments in the Federal Register seeking public input on information collected by the agency for the publication of complaints concerning invention promoters and promotion firms, as well as responses from the promoters regarding those complaints.

EPO and ARIPO Launch University IP Outreach Project – On Thursday, March 31, the heads of the European Patent Office (EPO) and the African Regional Intellectual Property Organization (ARIPO) announced that the agencies had launched a pilot program for university IP outreach and capacity building, which will provide training in basic IP understanding and prior art search tools to tech transfer employees with 25 universities from ARIPO member states.

Judge Kendall Denies SJ of Noninfringement in Medical-Infusion Pump Patent Case – On Wednesday, March 30, U.S. District Judge Virginia M. Kendall of the Northern District of Illinois denied a motion for summary judgment filed by defendants CareFusion and Becton, Dickinson & Co. after finding that those parties had not proven as a matter of law that their Alaris-brand medical-infusion pump systems did not infringe upon patent claims asserted in the case by healthcare company Baxter International.

CRB Withdraws Proposed Rule in Phonorecords IV Royalty Rate Determination – On Wednesday, March 30, the Copyright Royalty Board (CRB) issued a notice in the Federal Register that it was withdrawing a proposed rule that would have set rates and terms for statutory licenses for distributing phonorecords of nondramatic musical works under 17 U.S.C. § 115 after receiving numerous negative comments from songwriters and other parties whose mechanical license rates would be affected by a partial settlement of the license rate proceeding between licensor and label parties.

Judge Gilstrap Orders New Trial in Garage Door Opener Patent Case – On Wednesday, March 30, U.S. District Judge Rodney Gilstrap granted a motion for sanctions in a patent lawsuit filed in the Eastern District of Texas by the Chamberlain Group and ordered defendants Overhead Door Corporation and GMI Holdings $1.1 million in costs for concealing the release of a new garage door opener product that allegedly practices technology covered by Chamberlain Group’s claims.

Napier Appointed Assistant Register and Director of Operations at Copyright Office – On Tuesday, March 29, the U.S. Copyright Office announced that Jacqueline Napier, who formerly served the U.S. Department of the Navy as an integrated risk management program manager and deputy director of financial operations, has been appointed to serve as the Assistant Register of Copyrights as well as the Director of Operations at the Copyright Office.

Jury Awards $15M for Patent Infringement by Yahoo’s Search Suggest Feature – On Tuesday, March 29, a jury verdict entered into the Northern District of California awarded $15 million in reasonable royalty damages to Droplets Inc. after finding that Yahoo’s Search Suggest feature infringed upon a patent claim owned by Droplets.

USPTO Announces Combined Petition Option for Expanded CSP Program – On Tuesday, March 29, the USPTO issued a notice in the Federal Register announcing that the agency, in collaboration with the Japan Patent Office and the Korean Intellectual Property Office, have developed a new petition option for the Expanded Collaborative Search Pilot (CSP) program, which provides patent applicants cross-filing in those three offices with comprehensive prior art search services, that allows to file a single petition to qualify for the program instead of separate petitions at each office. 

This Week on Wall Street:

Early Returns Show Amazon Workers in Alabama Voting Against Union – On Thursday, March 31, news reports indicated that early counts of ballot voting in a second vote on union representation for Amazon workers at a warehouse in Bessemer, AL, showed that most votes opposed the formation of a union, although the number of challenged ballots was greater than the deficit for those in favor of union representation and the results are expected to be challenged with the National Labor Relations Board.

Biden Plans to Invoke Defense Production Act to Support Domestic EV Battery Production – On Thursday, March 31, news reports indicated that President Joe Biden planned to invoke the Truman-era Defense Production Act to provide federal funding support for feasibility projects aimed at the extraction of earth materials that are used in the manufacture of batteries produced for use in electric vehicles (EVs).

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2021 are announcing quarterly earnings next week (2020 rank in parentheses):

  • Monday: None
  • Tuesday: None
  • Wednesday: None
  • Thursday: Nanya Technology (t-295th)
  • Friday: None

Image Source: Deposit Photos
Author: Iridi
Image ID: 461052886


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

No comments yet.