Other Barks & Bites for Friday, May 13: Solicitor General Tells SCOTUS Not to Grant Appeal on Markman Issue, Director Vidal Announces Patent Examiner Training Program and Hawley Introduces Bill to Limit Copyright Term to 56 Years

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

Bark (noun): peripheral noise worth your attention.

Hello, I’m Willie Xie-Koernig! I loved hanging out near the golf clubs in Wilmington, North Carolina with my wonderful mom, June. When June became too old to care for me, I was adopted by her grandson, Kevin, and his new wife, Wen, and we went to live in Arlington together with two cats that I definitely did not invite.

Show us your dogs!!! Submit your favorite pup to be the next Barks and Bites-featured Watchdog. Read more here.

Today’s inaugural reader-submitted pup comes from Wen Xie, who is also author of the IPWatchdog-hosted IP Practice Vlogs series.

This week in Other Barks & Bites: Senator Josh Hawley introduces a bill that would retroactively limit copyright terms to a single 28-year term with the possibility of one 28-year extension; the Federal Circuit reverses a Northern California summary judgment ruling of noninfringement after finding that the district court improperly defined the claim term “buffer”; SoftBank’s Vision Fund posts a $20 billion loss for the 2021 fiscal year; Senators Thom Tillis and Patrick Leahy introduce a bill to create music-related cultural exchange programs to improve international relations; USPTO Director Kathi Vidal announces developments on a patent examiner training program and plans to issue a request for comments for the Director review process under Arthrex; the Eighth Circuit affirms injunctive relief preventing former Sleep Number consultants from prosecuting a patent application for biometric data collection through mattresses; and the U.S. Solicitor General files a brief telling the U.S. Supreme Court to deny a petition for writ filed by Olaf Sööt Design challenging the Markman claim construction process under the Seventh Amendment’s jury trial guarantee.


Senators Leahy, Tillis Introduce Bill to Create International Music and Cultural Exchange Program – On Thursday, May 12, Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT) introduced the Promoting Peace, Education, and Cultural Exchange (PEACE) through Music Diplomacy Act into the U.S. Senate. If enacted, the bill would amend the Fulbright-Hays Act to authorize the President to provide for exchange programs focused on music and performing arts, in consultation with the domestic private sector, that provide opportunities for building cross-cultural understanding and advancing peace between Americans and foreign nationals. The bill would also direct the U.S. Secretary of State to submit a strategy for advancing foreign policy goals through music-related cultural exchange programs to appropriate congressional committees within one year of the bill’s enactment. 

CAFC Reverses Summary Judgment of Noninfringement After Disagreement on “Buffer” Claim Term – On Wednesday, May 11, the U.S. Court of Appeals for the Federal Circuit issued a decision in Sound View Innovations, LLC v. Hulu, LLC in which the appellate court reversed a summary judgment ruling of noninfringement after finding that the Northern District of California improperly ruled that the claim term “buffer” could not cover a cache used to host video portions on an edge server for retrieval by a client device. The Federal Circuit ruled that the district court erred both by failing to adopt an affirmative meaning for the claim term “buffer” and failing to determine that “cache” had a uniform meaning in the art limiting the meaning of the term in the patent-at-issue.

U.S. Solicitor General Tells SCOTUS Not to Grant Cert on Markman Claim Construction Question – On Wednesday, May 11, the office of U.S. Solicitor General Elizabeth B. Prelogar filed a brief on a petition for writ of certiorari filed at the U.S. Supreme Court by engineering consulting firm Olaf Sööt Design, advising the nation’s highest court not to grant cert to the case as the Court’s precedent on the Seventh Amendment’s guarantee of a jury trial does not conflict with the Federal Circuit’s reversal of a $1.7 million jury verdict for patent infringement based on the appellate court’s own construction of non-technical terms included in patent claims.

Eighth Circuit Affirms Injunction Preventing Prosecution of Biometric Bed Patent Application – On Wednesday, May 11, the U.S. Court of Appeals for the Eighth Circuit issued a decision in Sleep Number Corp. v. Young in which the appellate court affirmed a ruling from the District of Minnesota enjoining UDP Labs and its two co-founders from prosecuting patent applications filed at the U.S. Patent and Trademark Office covering load-bearing sensor technology for tracking biometric data, including respiration and heart rate, through a substrate such as a bed mattress. The Eighth Circuit found no abuse of discretion by the district court in entering the injunction against the defendants, who were formerly consultants with Sleep Number under an agreement to disclose inventions related to sleep monitoring while working with the company.

Director Vidal Announces AIPLA-IPO Training Initiative, Arthrex Request for Comments at PPAC – On Tuesday, May 10, U.S. Patent and Trademark Office Director Kathi Vidal gave remarks at a regular meeting of the agency’s Patent Public Advisory Committee (PPAC) in which she announced that the USPTO was in the early stages of discussions with the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Owners Association (IPO) to develop a training program to educate patent examiners on “the downstream impacts of the patents they issue.” Director Vidal also announced that the agency will issue a request for comments in the Federal Register in the coming weeks to solicit public input on the process of requesting Director review of Patent Trial and Appeal Board (PTAB) decisions under the Supreme Court’s ruling in Arthrex v. Smith & Nephew.

Senator Hawley Copyright Bill Would Reduce Copyright Term to 56 Years – On Tuesday, May 10, Senator Josh Hawley (R-MO) introduced the Copyright Clause Restoration Act into the U.S. Senate, which if enacted would reduce the term of copyright protection under U.S. law to an initial term of 28 years that can be renewed once for an additional 28 year term. A press release issued on Sen. Hawley’s website acknowledges that the bill has been introduced to “strip woke corporations like Disney of special copyright protections,” indicating that the bill is a retributive measure against Disney for its opposition to a Florida state bill limiting discussion of sexual orientation and gender identity in public classrooms.

Senators Ask USTR Tai for More Transparency in TRIPS Waiver Negotiations – On Tuesday, May 10, a bipartisan group of U.S. Senators including Senate Finance Committee Chair Ron Wyden (D-OR) and Ranking Member Mike Crapo (R-ID) sent a letter addressed to U.S. Trade Representative (USTR) Katherine Tai raising issue with the secretive nature of the negotiations at the World Trade Organization (WTO) on the proposed waiver of international IP obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), urging USTR Tai to follow her office’s own guidelines on transparency and Congressional consultation in international negotiations.

ICLE Scholars Urge EU Commission to Avoid Limiting Injunctive Relief for SEPs – On Sunday, May 8, a group of four scholars working with the International Center for Law & Economics sent comments to the EU Commission in response to the Commission’s call for evidence regarding a new framework for standard-essential patents (SEPs), telling the Commission that “[i]t is simply not helpful for a regulatory body to impose a particular vision of licensing negotiations if the goal is more innovation and greater ultimate returns to consumers” and urging the government body that no evidence exists that ties SEP licensing negotiations to technological hold-up in any industry.


Joint EPO-IRENA Report Shows Annual 18% Growth Rate for Hydrogen Production Tech – On Thursday, May 12, the European Patent Office (EPO) and the International Renewable Energy Agency (IRENA) published the findings of a joint study on the development of hydrogen production technologies for renewable energy through electrolysis, showing that patent filings covering such technologies have increased on average by 18 percent per year since 2005.

UberRE Files Trademark Lawsuit in Northern California Against Uber Travel – On Thursday, May 12, temporary travel accommodation firm UberRE filed a lawsuit in the Northern District of California against ride hailing firm Uber alleging that its new Uber Travel service creates a likelihood of consumer confusion with UberRE’s “ÜBER” trademark covering real estate agencies and real estate brokerage services.

Sonraí Memory Files Section 337 Complaint at USITC Against Amazon, Dell, Samsung – On Thursday, May 12, the U.S. International Trade Commission (USITC) announced that it had received a complaint for a Section 337 investigation Ireland-based patent holding firm Sonraí Memory, which alleged claims of patent infringement by certain laptops, desktops, mobile phones, tablets and components thereof imported into the U.S. for sale by Amazon.com, Dell Technologies, EMC Corporation, Lenovo Group, LG Electronics, Motorola Mobility and Samsung Electronics.

Ninth Circuit Affirms Ruling of No Joint Authorship Over Toni Basil Songs – On Wednesday, May 11, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Stillwater Ltd. v. Basilotta in which the appellate court affirmed a district court’s ruling that record producer Stillwater did not establish its claim to joint authorship to songs written and performed by Antonia Basilotta, performing under the stage name Toni Basil, based on contributions to those songs allegedly made by a record producer working at Stillwater.

Appian Earns $2B Verdict in Willful Trade Secret Misappropriation Case – On Tuesday, May 10, cloud computing firm Appian announced that it had been awarded $2.036 billion, the largest damages award given by a jury verdict entered in Virginia state court, after finding that rival firm Pegasystems engaged in willful and malicious trade secret misappropriation, and violated the Virginia Computer Crimes Act, by hiring a government contractor working as an Appian developer to provide information on Appian’s proprietary development environment.

Judge Conley Rejects WARF’s Request to Reopen Infringement Claim Against Apple – On Tuesday, May 10, U.S. District Judge William M. Conley of the Western District of Wisconsin denied a request from the Wisconsin Alumni Research Foundation (WARF) to reopen an infringement claim after the Federal Circuit overturned a jury verdict finding patent infringement by Apple, and entered final judgment terminating two lawsuits filed by WARF against Apple over the consumer tech giant’s use of certain computer chips in its iPhone and iPad products.

GIPA Director DeChant Appointed to Serve as Associate Register of Copyrights – On Tuesday, May 10, the U.S. Copyright Office announced that Miriam DeChant, formerly the Director of the Global IP Academy at the U.S. Patent and Trademark Office, has been appointed to serve as Associate Register of Copyrights and Director of Public Information and Education (PIE), where she will be responsible for organizing educational and outreach programs as well as provide information on copyright law to the public.

USPTO Recognizes Record Number of Patent Pro Bono Program Participants in 2021 – On Monday, May 9, the U.S. Patent and Trademark Office announced that more than 125 patent practitioners received a Patent Pro Bono Achievement Certificate for reporting 50 or more hours of pro bono work to a regional patent pro bono program during 2021, a record number of participants in the USPTO’s Patent Pro Bono Program since it was first established in 2015.

This Week on Wall Street

SoftBank’s Vision Fund Unit Posts $20B Loss During 2021 – On Thursday, May 12, Japanese conglomerate SoftBank issued an annual earnings report indicating that the company’s Vision Fund unit, a technology-focused investment fund responsible for more than $150 billion in investments, lost 2.64 trillion yen ($20.5 billion USD) for the fiscal year ending March 31.

Fisker Confirms That Foxconn’s Ohio Factory Will Produce PEAR EV – On Thursday, May 12, California-based electric vehicle (EV) company Fisker issued a press release confirming that its second EV model, the Fisker PEAR, will enter production in 2024 at a 6.2 million square foot factory in Lordstown, OH, recently acquired by major semiconductor producer Foxconn.

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: Baidu, Inc. (99th)
  • Tuesday: Walmart Inc. (t-202nd)
  • Wednesday: Cisco Systems, Inc. (40th); Tencent Holdings Ltd. (68th)
  • Thursday: Applied Materials, Inc. (59th)
  • Friday: Deere & Co., Inc. (101st)


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. Read more.

Join the Discussion

One comment so far.

  • [Avatar for Pro Say]
    Pro Say
    May 13, 2022 03:13 pm

    Re: Director Vidal Announces AIPLA-IPO Training Initiative

    “to develop a training program to educate patent examiners on ‘the downstream impacts of the patents they issue.’”

    As if American innovation hasn’t suffered enough over these past 10+ years . . . any such examiner training MUST include the downstream impacts . . . of the patents . . . they DON’T issue.

    America thanks you in advance, Director and AIPLA-IPO.