Other Barks & Bites for Friday, April 29: SCOTUS Denies Petition on Substantial Similarity Tests, Google Decries ‘Rising Tide’ of Patent Litigation, and China Concludes First Drug Patent Linkage Cases

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https://depositphotos.com/68397603/stock-photo-dog-reading-newspaper.htmlThis week in Other Barks & Bites: Google’s General Counsel authors a blog post calling for reforms to the U.S. patent system; Smartflash files a lawsuit against the USPTO to compel the agency’s compliance with FOIA; the CJEU turns down a challenge from the government of Poland to Article 17 of the EU Copyright Directive; Apple issues its quarterly earnings report showing that the consumer tech giant earned a record $97.3 billion in revenues; the U.S. Supreme Court denies a petition for writ asking the nation’s highest court to solve a circuit split on the substantial similarity test under copyright law; China’s IP administration announces that the first round of lawsuits under China’s drug patent linkage law have concluded; the Tenth Circuit issues decisions affirm a securities fraud judgment against GenAudio’s CEO for misrepresenting emails from licensing negotiations with Apple; and Twitter acknowledges that it has been over-counting its user base since early 2019 by counting multiple linked accounts as separate users.


Google’s General Counsel Sounds Alarm on “Rising Tide of Wasteful Patent Litigation” – On Thursday, April 28, Google’s General Counsel, Halimah DeLaine Prado authored a post on Google’s official blog voicing the company’s concerns over a “rising tide of wasteful patent litigation” which the company believes is due to declining levels of patent quality, a rising concentration of more than one-quarter of all patent lawsuits being filed in a single courthouse, which the blog post does not name, and U.S. Patent and Trademark Office rules that have “weakened” inter partes review (IPR) proceedings.

USTR Special 301 Report Focuses on “Long-Standing Concerns” With China – On Wednesday, April 27, the U.S. Trade Representative issued its annual Special 301 Report highlighting intellectual property concerns posed by foreign counterfeiters and lax governmental enforcement of property rights, much of which focused on failures by the Chinese government to address fundamental issues with their IP legal regime, including forced tech transfer and overwhelming numbers of bad faith trademark registrations, despite several amendments to China’s copyright and patent laws in recent years. This year’s Special 301 Report also suspended review of IP issues in Ukraine due to the ongoing Russian invasion of that country.

Senators Tillis and Hirono Seek Answers from Vidal on Abuse of IPR Proceedings at PTAB – On Wednesday, April 27, Senators Mazie Hirono (D-HI) and Thom Tillis (R-NC) sent a letter addressed to Kathi Vidal, Director of the U.S. Patent and Trademark Office, seeking responses to a series of questions regarding abuses of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) in light of recent reports of petitioners attempting to manipulate IPR proceedings challenging the validity of VLSI Technology patents supporting a $2.18 billion infringement verdict in U.S. district court.

CJEU Turns Down Poland’s Challenge to Article 17 of EU Copyright Directive – On Tuesday, April 26, the Court of Justice for the European Union (CJEU) issued a decision in which the EU’s highest court upheld the legality of Article 17 of the EU Copyright Directive, which requires online content providers to obtain permission from copyright owners before allowing copyrighted works to be shared to online platforms, over a challenge from the government of Poland, which argued that such rules infringed its citizens rights to freedom of both expression and information.

Tenth Circuit Affirms Lack of Personal Jurisdiction Over Tort Claims Related to IP Transfer – On Tuesday, April 26, the U.S. Court of Appeals for the Tenth Circuit issued a decision in Eighteen Seventy, LP v. Jayson in which the appellate court affirmed the district court’s dismissal of business tort claims filed against a former director and CFO of the multinational firm CRUPE for his role in transferring IP from CRUPE in violation of an investment agreement. The Tenth Circuit found that the record showed no evidentiary support for determining that Jayson’s acts were expressly aimed at Wyoming as required for personal jurisdiction under the purposeful direction theory alleged by the plaintiff investors.

Tenth Circuit Affirms Judgment of Securities Fraud for Fabricating Apple’s Interest in Software License – On Tuesday, April 26, the Tenth Circuit issued a decision in Securities and Exchange Commission v. GenAudio Inc. in which the appellate court affirmed a district court’s judgment that GenAudio’s founder and CEO, Taj Jerry Mahabub, violated federal securities law when he altered emails sent between GenAudio and Apple to make it appear that Apple was interested in obtaining a software license to GenAudio’s three-dimensional audio technology.

Smartflash Files Complaint Against USPTO Over Alleged FOIA Violations – On Monday, April 25, patent owner Smartflash, owned by multimedia content access systems inventor Patrick Racz, filed a lawsuit in the District of Columbia to compel the USPTO’s compliance with the Freedom of Information Act (FOIA) to challenge the agency’s redactions in responses to FOIA requests regarding the use of expanded panels in PTAB trials petitioned by Apple as well as the agency’s reasoning in assigning administrative patent judges (APJs) to those PTAB trials, including one APJ who formerly served Apple as counsel in district court patent infringement litigation who went on to work as in-house counsel for Apple after sitting on a series of APJ panels invalidating all patent claims challenged by Apple in 24 of 25 final written decisions.

SCOTUS Denies Petition for Writ Seeking Clarity on Substantial Similarity Tests – On Monday, April 25, the U.S. Supreme Court issued an order list showing that the nation’s highest court had denied a petition for writ in Johannsongs Publishing, Ltd. v. Peermusic Ltd., which asked the court to satisfy a circuit split on substantial similarity tests applied in copyright cases in the Ninth Circuit, which requires an extrinsic test of copyrightability to be satisfied before analyzing the intrinsic test of similarity to the ears of ordinary listeners, and the Second Circuit, which examines the total concept and feel of a copyrighted work after filtering out elements that are unprotectable under copyright law.


EPO-EIB Report Shows U.S. Leads Global Patenting Activities in 4IR Technologies – On Thursday, April 28, the European Patent Office (EPO) and the European Investment Bank (EIB) issued a report on global patenting activity in Fourth Industrial Revolution (4IR) technologies, including artificial intelligence, cloud computing and 5G networking, which showed that the 27 nations of the European Union accounted for 15 percent of international patent families, although the region trailed second-place Japan and top-ranked United States. 

USPTO to Accept PDF Versions of Patent Applications Prior to Non-DOCX Filing Fees – On Thursday, April 28, the U.S. Patent and Trademark Office issued a notice in the Federal Register announcing that the agency would continue to accept PDF versions of patent application filings during the period in which the agency is transitioning to mandatory DOCX-only filings, up to the establishment of a surcharge for non-DOCX patent application filings on January 1 of next year.

INTA Asks Ninth Circuit to Revisit Rogers Test for Consumer Products in Dog Toy Case – On Tuesday, April 26, the International Trademark Association (INTA) filed an amicus brief with the United States Court of Appeals for the Ninth Circuit in VIP Products, LLC v. Jack Daniel’s Properties, Inc., urging the court “to reconsider the application of Rogers v. Grimaldi to the use of trademarks on any commercial product having some ‘expressive’ quality and to realign with other circuit courts.” The Ninth Circuit held in March 2020 that a dog toy mimicking a bottle of Jack Daniel’s whiskey is an expressive work entitled to First Amendment protection.

First Chinese Patent Linkage Decisions Finds No Infringement By Generic SR Oxycodone – On Tuesday, April 26, China’s National Intellectual Property Administration (CNIPA) announced that it had decided the first round of cases under China’s drug patent linkage law, resulting in a decision that a generic version of sustained release oxycodone tablets do not infringe upon patent rights owned by Purdue Pharmaceuticals.

Judge Albright Delays Trial Between VLSI and Intel for COVID-19 Cases – On Tuesday, April 26, U.S. District Judge Alan D. Albright of the Western District of Texas issued minute entries in a patent infringement lawsuit between VLSI Technology and Intel delaying a jury trial and dismissing selected jurors after being notified that multiple attorneys representing either side in the case have contracted COVID-19.

Taco John’s Files Trademark Suit Against St. Cloud-Based Taco Chon – On Tuesday, April 26, Mexican-style fast food chain Taco John’s filed a lawsuit in the District of Minnesota against the operators of a pair of restaurants named Taco Chon, which are located in St. Cloud, MN and Burnsville, MN, alleging claims of trademark infringement, trademark dilution and unfair business practices after having sent a cease-and-desist letter to Taco Chon in February.

Young Adults from Syria, Ghana and China Win Top Spots in WIPO Youth Video Competition – On Tuesday, April 26, the World Intellectual Property Organization (WIPO) announced the winners of its youth video contest being held in conjunction with World Intellectual Property Day, including 25 year old Hekma Jabouli of Syria, 27 year old John Wobil of Ghana and Chinese nationals Li Binglu and Cai Quinge.

Judge Kronstadt Requests Briefing on Copyright Royalties After Termination – On Monday, April 25, U.S. District Judge John Arnold Kronstadt of the Central District of California requested briefing from counsel representing Cher and Mary Bono in a dispute over royalties for Sonny & Cher songs, specifically regarding the impact of copyright termination on the payment of royalties.

USPTO Announces Info Collections on Madrid Protocol, Practitioner Discipline – On Monday, April 25, the USPTO issued a pair of notices in the Federal Register regarding information collections being administered by the agency, one concerning info collected by the USPTO during the process of receiving applications for international trademark registrations under the Madrid Protocol, and another concerning info collected by the agency during the course of disciplining practitioners who violate the USPTO Rules of Professional Conduct.

This Week on Wall Street

Apple Posts Quarterly Revenue Record in Q2 2022 Earnings – On Thursday, April 28, consumer tech giant Apple issued its earnings report for the second quarter of 2022 showing that the company took in $97.3 billion in revenues, the highest amount of quarterly revenues that the company has ever earned and a 9 percent year-over-year increase from revenues earned during the same period last year.

Twitter Admits to Over-Counting User Base Since Q1 2019 in Quarterly Earnings Report – On Monday, April 25, social media firm Twitter issued its earnings report for the first quarter of 2022 in which the company posted a slight miss on analyst revenue forecasts ($1.2 billion earned vs. $1.23 billion expected). The earnings report also acknowledged that Twitter had been over-counting users since the first quarter of 2019 by counting multiple accounts linked to a single user as instead representing different users entirely.

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: NXP Semiconductors N.V. (t-90th); ON Semiconductor Corp. (t-170th); Rambus Inc. (t-297th)
  • Tuesday: Eaton Corp. (t-141st); Skyworks Solutions, Inc. (238th); Zimmer Biomet Holdings, Inc. (283rd)
  • Wednesday: Borgwarner Inc. (t-281st); eBay Inc. (158th); Emerson Electric Co. (127th); Novo Nordisk A/S (300th); Qorvo, Inc. (t-295th)
  • Thursday: Bayerische Motoren Werke AG (t-129th); Becton, Dickinson and Co. (133rd); Dolby Laboratories, Inc. (232nd); Winbond Electronics Corp. (210th); Wistron Corp. (t-272nd)
  • Friday: Novatek Microelectronics Corp. (t-289th)

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Join the Discussion

5 comments so far.

  • [Avatar for PTO-indentured]
    April 30, 2022 12:43 pm

    And … correct me if I am wrong — was it not 427 visits of top Google brass that were welcomed — not into private Washington DC meetings — but rather, right into the White House, during the Obama administration alone?

    Such would have raised an eyebrow had it been even a tenth of such visits!

    Oh, to be backed by such privilege.

  • [Avatar for PTO-indentured]
    April 30, 2022 11:59 am

    Drinks are on me — let’s have another round of patent troll kool-aid

    As oligarch-scale multinationals wend their way into the $Trillion-O-Sphere — re-touting their own version of the patent troll Fairy Tale along the way — we must ever keep in mind, there is no way a corporation with such stores of wealth could ever pay — what would amount to no more than 1/10th of 1% of it — to rightfully use US inventions, their own braintrusts (of highest IQs) have proved unable to conceive [important part –>] before US inventors do.

    While were at it, let’s note, biggest of oligarch multinationals are often themselves holders, and fire-sale acquirers, of gazillions of patents, who, unsatisfied with such an amassing, then build and enter into coalitions with other biggest of patent holders … hmm, lets see, why? No! Not to try to control markets is it? Why if any did such a thing, that would put (alleged) patent trolling with a measly patent or two to shame!

    Surely, such gatherings up and leveraging of tens of thousands of patents — ‘best practices’ — are precisely what our founding fathers had in mind, when they sought to foster and protect intellectual property rights of individuals in our constitution.

    How they would love to see, such an intent, twisted into the confines of AIA enabled efficient infringers.

  • [Avatar for Pro Say]
    Pro Say
    April 29, 2022 05:48 pm

    Re: “Google’s General Counsel Sounds Alarm on ‘Rising Tide of Wasteful Patent Litigation'”

    “Over the years, Google has worked to ensure that the United States patent system continued to spur new inventions and technologies.”

    Here, GC Prado; let me de-1984 that for you:

    “Over the years, Google has worked to ensure that the United States patent system continues to allow us and other members of our Big Tech cabal to quickly and easily steal with impunity the new inventions and technologies of others.”

    Ahhh . . . see how nice truth and honesty makes one feel.

  • [Avatar for Anon]
    April 29, 2022 04:44 pm

    Over the years, Google has worked to ensure that the United States patent system continued to spur new inventions and technologies.

    Excuse me, but HOW exactly?

    Is this tied to those meeting-minuteLESS private meetings under Director Lee?

    Sorry, but “Supporting that balanced approach, we were one of the first companies to pledge not to sue any user, distributor, or developer of open-source software on specified patents, unless first attacked.” has nothing to do AT ALL with making patent examination better.


    Another hint: relying on misinformation from an academic like Chien is a non-starter.

    The rest of that self-serving slop sounds in the Orwellian 1984, which cements Google’s transformation of Evil of “Do no Evil” to “Be Evil.”

  • [Avatar for IpAdvocate]
    April 29, 2022 02:59 pm

    Re: Google – it would be good to get Halimah DeLaine Prado on record as to which of Google’s 42,000 patents are “low quality”.

    I will save her the breath – answer:

    “None of them. It is only patents that are asserted against Google that are “low quality”.

    Got it.