Other Barks & Bites for Friday, November 18: Canada’s Supreme Court Affirms ‘Springboard’ Profits Award for Dow, VLSI Wins Another Massive Verdict Against Intel, and Ninth Circuit Says Director Service Applies to Court Proceedings

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

Bark (noun): peripheral noise worth your attention.

BitesThis week in Other Barks & Bites: the Ninth Circuit rules that service on the USPTO Director under Section 1051(e) for reaching foreign-domiciled defendants applies in U.S. district court proceedings; the Federal Circuit restores a patent claim owned by VLSI Technology on the same day that a Western Texas jury enters a $948 million verdict for VLSI against Intel; the Eighth Circuit affirms a summary judgment ruling that Pocket Plus’ asserted trade dress is functional; the European Patent Office will begin transitional measures on unitary patents for patent applicants on January 1 of next year; major tech firms including Amazon and Twitter have been shedding large amounts of employees; AMD and Analog Devices announce a settlement agreement ending ongoing patent litigation between the firms; and the Supreme Court of Canada affirms a damages award for patent infringement including “springboard” profits earned by the infringer after the asserted patent rights expired.


USPTO Extends Deadline for Comments on Changes to PTA Statements in Information Disclosure Statement – The United States Patent and Trademark Office (USPTO) announced Friday that it is extending the comment period for its proposed rule, “Standardization of the Patent Term Adjustment Statement Regarding Information Disclosure Statements” that was published in the Federal Register on July 12, 2022. According to the announcement, “[a]fter the comment deadline for the proposed rule closed, the USPTO became aware of some continued stakeholder interest in submitting comments on the proposal.” The new deadline will be December 2, 2022. The full text of the notice is available at the Federal Register and on the Patent Related Notices webpage.

Canada’s Supreme Court Affirms “Springboard” Patent Profits for Dow Chemical – On Friday, November 18, the Supreme Court of Canada issued a ruling in Nova Chemicals Corp. v. Dow Chemical Co. in which Canada’s highest court ruled that a lower court did not err in calculating a damages award for Dow based on Nova’s profits from patent infringement, including “springboard” profits that Nova received after Dow’s patent expiry that were earned because of Nova’s prior infringement allowing it to more quickly receive market share once Dow’s patent to ethylene plastics for strengthening plastic bags had expired.

CAFC Clarifies That Disclaimers During IPRs Do Not Impact Board’s Patentability Analysis – On Wednesday, November 16, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in CUPP Computing AS v. Trend Micro Inc. in which the appellate court affirmed a trio of final written decisions by the Patent Trial and Appeal Board (PTAB) invalidating CUPP Computing’s patent claims for obviousness. The Federal Circuit’s ruling expressly stated that the PTAB is able to ignore disclaimers by the patentee made during inter partes review (IPR) proceedings in performing its patentability analysis of claims challenged by the IPR petitioner.

Eighth Circuit Affirms SJ Ruling on Functionality of Portable Pouch Trade Dress – On Tuesday, November 15, the U.S. Court of Appeals for the Eighth Circuit issued a ruling in Pocket Plus, LLC v. Pike Brands, LLC in which the appellate court affirmed the district court’s ruling on summary judgment that Pocket Plus’ alleged trade dress was functional and thus unprotectable for being essential to the pouch’s purpose of holding beverages or cell phones. The Eighth Circuit also affirmed a partial attorneys’ fees award to Pike Brands, finding that the award was warranted for Pocket Plus’ unreasonable position in litigation but that the district court had discretion to reduce the award in part due to Pike Brands’ use of Rule 11 sanctions to harass Pocket Plus.

Western Texas Jury Verdict Issues Another Major Damages Award to VLSI – On Tuesday, November 15, a jury verdict entered into the Western District of Texas awarded $948 million in damages for patent infringement to VLSI Technology after finding Intel liable for infringing a patent for maintaining high data speeds in computer processors. The verdict comes about a year and a half after VLSI won $2.18 billion in a separate patent infringement lawsuit against Intel.

CAFC Finds No Reason for PTAB to Prioritize District Court’s Claim Construction – On Tuesday, November 15, the Federal Circuit issued a precedential decision in VLSI Technology LLC v. Intel Corp. in which the appellate court ruled that the PTAB was not required to prioritize the District of Delaware’s construction of a claim limitation in forming the Board’s own construction of the same claim term. The Federal Circuit found that the district court’s claim construction did not resolve the true dispute between the parties in light of arguments made before the PTAB, so the Board’s failure to adopt the district court’s claim construction was harmless error at most. However, the Federal Circuit reversed the PTAB’s construction of claim terms in a separate patent claim and remanded to the PTAB to reconsider its patentability determination.

Ninth Circuit Finds News Provider’s Use of “Punchbowl” Expressive in Nature – On Monday, November 14, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Punchbowl, Inc. v. AJ Press, LLC in which the appellate court affirmed a district court’s grant of summary judgment to AJ Press, operators of the political news outlet Punchbowl News, as its use of “Punchbowl” was protected expression. The Ninth Circuit found that AJ Press’ use of “Punchbowl” in its commercial branding was sufficiently expressive to merit protection under the Rogers test nor was AJ Press’ use of Punchbowl’s mark explicitly misleading to consumers.

CAFC Affirms Mixed Claim Findings Over Challenges to Claim Amendments – On Monday, November 14, the Federal Circuit issued a precedential decision in American National Manufacturing Inc. v. Sleep Number Corp. in which the appellate court affirmed mixed claim findings from a pair of IPRs at the PTAB after dismissing several arguments raised on appeal by American National regarding claim amendments accepted by the PTAB. The Federal Circuit found no issue in the PTAB’s decision to accept claim amendments including wording changes not related to challenges raised in the petition, that there was no enablement issue stemming from a clear typographical error in the specification, and that the introduction of a new claim term did not create an inventorship issue because the patents-in-suit incorporate by reference the patents from which Sleep Number’s amended claim terms originated.

Ninth Circuit Rules That Section 1051(e) Director Service Applies to District Court Proceedings – On Monday, November 14, the Ninth Circuit issued a decision in San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd. in which the appellate court ruled that the process for serving a foreign-domiciled trademark application through the USPTO Director under the provisions of 17 U.S.C. § 1051(e) also applies in U.S. district court proceedings and not just in administrative proceedings before the USPTO based on the plain language of Section 1051(e).


USPTO Issues Final Rule on Receipt Dates for Electronic Correspondence – On Thursday, November 17, the U.S. Patent and Trademark Office issued a final rule in the Federal Register amending the agency’s rules of patent practice to clarify that the receipt date of electronic correspondence is the date by which the USPTO received the correspondence, which because of the agency’s use of remote servers will be different than the time the same correspondence is received at the USPTO’s headquarters in Alexandria, VA.

AMD, Analog Devices Announce Settlement to Wireless Communications Patent Suits – On Thursday, November 17, semiconductor rivals AMD and Analog Devices announced that the two companies had entered into an agreement to settle ongoing patent infringement between the firms over patent claims covering systems for wireless communications.

CAFC Issues Notice of Deferral to Adoption of Amended Rules of Practice – On Thursday, November 17, the U.S. Court of Appeals for the Federal Circuit announced that it would be deferring the appellate court’s adoption of several amendments to the Federal Circuit Rules of Practice that were first proposed in early September. Instead of being made effective on December 1, those amendments will instead be published that day with official adoption being deferred to a later date.

USPTO Requests Comments on Info Collection for Priority Restoration Under Patent Law Treaty – On Thursday, November 17, the USPTO issued a request for comments in the Federal Register soliciting public comment on information collected by the agency in petitions for restoration of the right of priority to a foreign-filed patent application available under the Patent Law Treaty.

USITC Announces Initial Determination of Section 337 Violation by Alarm.com, Ecobee – On Wednesday, November 16, the U.S. International Trade Commission (USITC) issued a request for submissions on the public interest after announcing that an administrative law judge (ALJ) at the agency had issued an initial determination finding a violation of Section 337 caused by the importation into the U.S. for sale of certain smart thermostats and load switches by several respondents including Alarm.com, Ecobee and Resideo Smart Homes Technology.

USPTO Partners With Department of Commerce to Launch Women’s Entrepreneurship Initiative – On Wednesday, November 16, the USPTO announced that it would be launching a Women’s Entrepreneurship (WE) initiative in partnership with the U.S. Department of Commerce to collect resources available from private industry and government entities to be made available to women entrepreneurs through a recently established online hub and host a symposium on women’s entrepreneurship in March 2023.

CAFC Issues Revised Protocols on Motions to Appear Remotely, Intervening Events – On Tuesday, November 15, the Federal Circuit issued revised protocols for in-person arguments that modify protocols regarding the Federal Circuit’s response to the COVID-19 pandemic, including motions for leave to appear remotely for oral arguments as well as intervening events, including COVID-19-related reasons, preventing in-person appearance at the Federal Circuit.

EPO to Start Transitional Measures on Unitary Patent on New Years Day – On Monday, November 14, the European Patent Office (EPO) announced that it would begin implementing the agency’s transitional measures allowing patent applicants to file for patents with unitary effect on January 1, 2023, a few months ahead of the beginning of the Unitary Patent Protection system expected to go into effect on April 1, 2023.

This Week on Wall Street

Labor Issues and Layoffs Take Root Among Big Tech Stalwarts – On Thursday, November 17, Amazon.com CEO Andy Jassy reportedly notified employees that the e-commerce giant had begun to trim about 10,000 jobs from the company as part of Amazon’s largest ever round of layoffs. The same day, news reports indicated that hundreds of Twitter employees had left their jobs after new CEO Elon Musk issued an ultimatum to employees on longer working hours.

Walmart Q3 Earnings Beat on EPS, Revenue Thanks to Low-Priced Grocery Sales – On Tuesday, November 15, American retail giant Walmart issued its earnings report for the third quarter showing that the company beat analyst expectations on both quarterly revenues ($152.81 billion vs. $147.75 billion expected) and earnings per share ($1.50 EPS vs. $1.32 EPS expected) thanks in large part to more consumers buying Walmart’s inventory of low-priced grocery items.

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

  • Monday: Dell Technologies, Inc. (16th)
  • Tuesday: Analog Devices, Inc. (t-178th); Baidu, Inc. (99th); HP Inc. (41st); Medtronic plc (32nd); Siemens AG (38th); VMware, Inc. (45th)
  • Wednesday: Deere & Co. (101st); Xiaomi Inc. (117th)
  • Thursday: None
  • Friday: None

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