Other Barks & Bites for Friday, April 8: Hirshfeld Leaving Government Service this Summer, Judge Jackson Confirmed to SCOTUS, Ninth Circuit Says Chrysler’s First Sale Doctrine Defense Deserves Another Look

This week in Other Barks & Bites: The U.S. Court of Appeals for the Federal Circuit (CAFC) says Roche infringed on patents it owns but that Meso Scale Diagnostics, LLC claims to have an exclusive license to; Judge Ketanji Brown Jackson is confirmed by the U.S. Senate to the Supreme Court in a 53-47 vote; the House Judiciary Committee passes the NDO Fairness Act towards a vote on the House floor; the Ninth Circuit rules that Fiat Chrysler’s entertainment systems may qualify for defense against Bluetooth trademark claims under first sale doctrine; Nissan announces that it’s working with NASA on developing a solid-state battery for electric vehicles; Drew Hirshfeld announces that he’s leaving government service this summer after serving as Acting Deputy Director during the USPTO’s transition under Director Vidal; the Copyright Office issues a final rule expanding representation opportunities for law school students at the Copyright Claims Board; a WIPO intellectual property report shows that global innovation has increased 25-fold over the past century; and the EPO extends its pilot program for VICO hearings in opposition proceedings through the end of this year.

Bites

CAFC Says Roche Infringed, But Did Not Induce Infringement, of Patents to Which Meso Scale Diagnostics Had Exclusive Rights; Newman Dissents – On Friday, April 7, the CAFC held that Roche Diagnostics directly infringed one patent but did not induce infringement of another, and vacated a damages award for Meso Scale Diagnostics, which said it has exclusive rights to the patent claims at issue, even though a Roche subsidiary owns them. In her dissent, Judge Newman said “Roche cannot infringe patents it owns.”

Judge Ketanji Brown Jackson to Join SCOTUS – The United States Senate on Thursday, April 7, confirmed U.S. Court of Appeals for the District of Columbia Circuit Judge Ketanji Brown Jackson to be the next U.S. Supreme Court Justice by a vote of 53-47. Judge Jackson recently responded to a series of questions posed by Senator Thom Tillis (R-NC) on IP and antitrust.

WIPO’s World IP Report Shows 25-Fold Increase in Innovation Over Past Century – On Thursday, April 7, the World Intellectual Property Organization (WIPO) issued a World Intellectual Property Report analyzing global patenting rates over the past century, finding that the world has experienced a 25-fold increase in innovation over the past 100 years with recent increases being largely attributable to patenting rates in digital innovations, which have quadrupled over the past two decades and represented 12 percent of global patent applications filed in 2020.

House Judiciary Passes NDO Fairness Act Out of Committee – On Wednesday, April 6, the U.S. House of Representatives Committee on the Judiciary approved H.R. 7072, the NDO Fairness Act, which if enacted by Congress would create a heightened standard for prosecutors seeking a non-disclosure order (NDO) preventing service providers from informing their customers that their electronic communications, including email and phone records, have been requested by prosecutors in connection with a criminal investigation even if that individual is not suspected of wrongdoing.

Ninth Circuit Revives Chrysler’s Exhaustion Defense in Bluetooth Trademark Case – On Wednesday, April 6, the U.S. Court of Appeals for the Ninth Circuit issued a per curiam opinion in Bluetooth SIG Inc. v. FCA US LLC in which the appellate court reversed the Western District of Washington’s grant of summary judgment in favor of Bluetooth SIG after finding that district court improperly dismissed Fiat Chrysler’s defense under the first sale doctrine against Bluetooth SIG’s claims that the automaker improperly marketed cars with entertainment platforms that are Bluetooth-compatible.

Vidal Nominated to USPTO Director, Hirshfeld to Serve as Acting Deputy – On Tuesday, April 5, the U.S. Senate confirmed Kathi Vidal via voice vote to serve as the next Director of the U.S. Patent and Trademark Office a little more than five months after she was first nominated to the position by President Joe Biden. Then on Thursday, April 7, the USPTO published a bulletin authored by Drew Hirshfeld, who was performing the functions and duties of the USPTO Director, in which Hirshfeld announced that he would serve as Acting Deputy Director of the USPTO until a permanent Deputy Director is named sometime this summer, at which point Hirshfeld plans to leave government service.

U.S., Huawei Lead European Patent Application Filings During 2021 – On Tuesday, April 5, the European Patent Office (EPO) released statistics on patent applications received by the agency throughout 2021 showing that, while the United States still ranked as the top country of origin among EPO patent applicants with 46,533 filings during 2021, an increase of 5.2 percent over U.S. filings at the EPO during 2020, Chinese telecom firm Huawei ranked as the top applicant with 3,544 patent applications filed during 2021.

CAFC Says District Court Claim Construction Fails Under Doctrine of Claim Differentiation – On Monday, April 4, the U.S. Court of Appeals for the Federal Circuit entered a precedential ruling in Littlefuse, Inc. v. Mersen USA EP Corp. in which the appellate court overturned a claim construction ruling entered in the District of Massachusetts after finding that the construction of “fastening stem” in patent claims covering a fuse end cap to cover only a multiple-piece apparatus was erroneous under the doctrine of claim differentiation as claims dependent on the independent “fastening stem” claims recited a single-piece apparatus, indicating that the claimed “fastening stem” could have single- and multiple-piece constructions.

Senator Tillis Renews Request for FDA, USPTO to Independently Assess I-MAK Data – On Friday, April 1, Senator Thom Tillis (R-NC) sent a letter addressed to Dr. Robert Califf, M.D., Commissioner of the U.S. Food and Drug Administration, and Drew Hirshfeld, performing the duties and functions of the Director of the USPTO, asking both agency heads to direct agency resources to perform an independent assessment of drug patent data published by the Initiative for Medicines, Access & Knowledge (I-MAK) and voicing concerns about opaque methodologies employed by I-MAK and the possibility that skewed data could be misinforming policymakers about the impact of drug patents.

Barks

Copyright Office Extends Law Student Representation at CCB in Final Rule – On Friday, April 8, the U.S. Copyright Office issued a final rule in the Federal Register establishing procedures governing representation of parties before the Copyright Claims Board (CCB) by law students, expanding the scope of law student representation beyond the original notice of proposed rulemaking to students working through pro bono legal services organizations as well as law school clinics, and establishing that fiduciaries can represent parties at the CCB along with attorneys or law students.

Judge Hellerstein Grants SJ Dismissing Girl Scouts’ Trademark Suit Against Boy Scouts – On Thursday, April 7, U.S. District Judge Alvin K. Hellerstein of the Southern District of New York granted a motion for summary judgment filed by the Boy Scouts of America, terminating trademark infringement claims filed by the Girl Scouts of America over a dispute involving the Boy Scouts’ decision to incorporate girls into co-ed programming.

Chinese National Receives Prison Sentence for Conspiring to Steal Monsanto Trade Secrets – On Thursday, April 7, the U.S. Department of Justice announced that Chinese national Xiang Haitao was sentenced to 29 months in prison to be followed by three years of supervised release as well as a $150,000 fine for conspiring to steal trade secrets from a subsidiary of Monsanto for the benefit of the government of the People’s Republic of China.

Copyright Office Launches CCB.gov as Online Portal for Small Claims Tribunal – On Thursday, April 7, the U.S. Copyright Office announced that it had launched the website ccb.gov to serve as an online portal for the Copyright Claims Board (CCB). Website resources will include a directory of designated service agents for processing small copyright claims, libraries and archives that have pre-emptively opted out of CCB proceedings, as well as information about filing and responding to small claims at the CCB.

Stone Brewing Faces Trademark Suit Over “Keep It Hazy” IPA Branding – On Wednesday, April 6, craft beer maker Sycamore Brewing filed a lawsuit in the Western District of North Carolina alleging claims of trademark infringement against Stone Brewing, a pioneer of the craft beer industry, over Stone’s use of branding for its Hazy IPA beer that allegedly incorporates Sycamore’s registered mark for “KEEP IT HAZY”.

EPO Extends VICO Pilot Program for Oral Proceedings in Oppositions to End of 2022 – On Wednesday, April 6, the European Patent Office (EPO) announced that the agency had agreed to extend its pilot project for holding oral hearings in opposition proceedings via videoconference (VICO) through the end of 2022 to continue evaluating the program prior to a large-scale implementation.

First Meeting of European Network of Authenticities Held in Thessaloniki – On Monday, April 4, representatives from six European cities that have been selected as part of the European Network of Authenticities, which is responsible for organizing events and campaigns that inform members of the public of the dangers of counterfeit products, held the first meeting of that network since it was first formed back in 2020.

USITC Institutes Section 337 Investigation into Interactive Fitness Bikes – On Friday, April 1, the U.S. International Trade Commission announced that it had instituted a Section 337 investigation into certain interactive fitness products including stationary exercise bikes, treadmills, elliptical machines and rowing machines imported into the U.S. for sale by ICON Fitness, iFit and NordicTrack based on a complaint for patent infringement filed at the USITC by Peloton Interactive.

This Week on Wall Street 

Nissan, NASA to Develop Solid-State EV Battery That Fully Charges in 15 Minutes – On Friday, April 8, Japanese automaker Nissan announced that it was collaborating with the United States’ National Aeronautic and Space Administration (NASA) to develop a solid-state battery for electric vehicles (EVs) to replace lithium-ion batteries in Nissan models by 2028. The solid-state battery is expected to be both about half the size of traditional lithium-ion batteries and fully chargeable within 15 minutes.

HP Stock Pops After Buffett Reveals 11.4% Stake – On Wednesday, April 6, Berkshire Hathaway filed documents with the U.S. Securities & Exchange Commission (SEC) disclosing that the multinational conglomerate led by legendary investor Warren Buffett owns about 121 million shares of information technology firm HP Inc. Shares of HP stock were up about 15 percent on the news.

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: JPMorgan Chase & Co. (t-275th)
• Thursday: Taiwan Semiconductor Manufacturing Co. (7th)
• Friday: None