Other Barks & Bites for Friday, December 2: Court of Federal Claims Rules CDC Patents Breached Gilead Agreements; Eleventh Circuit Affirms Trademark Win for Viacom; and Delaware Litigation Funding Case Heats Up at CAFC

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

Bark (noun): peripheral noise worth your attention.

biteThis week in Other Barks & Bites: Amici urge the U.S. Court of Appeals for the Federal Circuit to Reject Attempts to Curb Delaware Chief Judge’s Litigation Funding Rules; the U.S. Court of Federal Claims rules that the Centers for Disease Control and Prevention breached transfer agreements with Gilead Sciences in obtaining patents to HIV treatment that the agency has asserted against Gilead; the High Court of Delhi issues an order indicating that Telegram has disclosed IP addresses of copyright infringing accounts on its messaging platform; Judge Brasher concurs in an Eleventh Circuit ruling affirming a successful First Amendment defense for MTV Floribama Shore to urge the Eleventh Circuit to reject the Second Circuit’s “title-versus-title” exception to the Rogers test; the U.S. Food and Drug Administration halts authorization for Eli Lilly’s COVID-19 treatment for lack of effectiveness against dominant Omicron subvariants; the UK’s High Court invalidates wind turbine patents owned by Siemens Gamesa after Siemens won an infringement verdict against GE in U.S. district court; and the Federal Trade Commission and several state AGs file lawsuit against Google and iHeartMedia for deceptive ads promoting Google’s Pixel 4 smartphone.


USPTO Updates PCT Search Fees for KIPO – The United States Patent and Trademark Office (USPTO) updated its fee schedule on December 1 to decrease Patent Cooperation Treaty (PCT) fees for international searches with the Korean Intellectual Property Office (KIPO) as International Searching Authority (ISA) from $955 to $881. For more information, visit the PCT Fees page of the USPTO website.

Supreme Court to Decide Whether to Take Up Judicial Ethics Appeal in Patent Case – On Friday, December 2, the U.S. Supreme Court will meet in private conference to discuss whether the nation’s highest court will grant the petition for writ of certiorari filed in Centripetal Networks Inc. v. Cisco Systems Inc., a case which asks the Supreme Court to decide whether placing stock in a blind trust satisfies the provisions under 28 U.S.C. § 455(f) by which a judge can divest a previously undiscovered financial interest in a party to avoid recusal. The Federal Circuit’s decision ruled that a district court judge did not satisfy Section 455(f) after placing 100 Cisco shares owned by the judge’s wife in a blind trust, reversing a $3.2 billion patent damages award for Centripetal against Cisco, the largest patent damages award in U.S. history.

CAFC Case on Delaware Litigation Funding Rules Heats Up – A number of amici filed briefs this week in support of Chief Judge Colm Conolly’s recent efforts to require transparency with respect to disclosures of litigation funding entities involved in patent cases. According to the National Law Journal, amici ranging from the U.S. Chamber of Commerce to the Electronic Frontier Foundation have filed briefs urging the CAFC not to stymie Judge Connolly’s efforts as “opaque litigation funding can pose national security concerns,” among other issues.   

IP Experts Urge AAG Kanter to Ignore Unscientific Calls to Address “Patent Trolls” – On Wednesday, November 30, a letter signed by 25 experts in intellectual property law was sent to Jonathan Kanter, Assistant Attorney General of the U.S. Department of Justice’s Antitrust Division, to push back on claims raised in an October 17 letter that had urged Kanter to review a business review letter regarding the Avanci patent licensing pool. The recent November letter notes that the earlier claims are not based on any empirical evidence of “patent holdup” caused by so-called “patent trolls” and argued that the October letter had mischaracterized the rulings from several European patent cases on patent holdup.

CFC Unseals Ruling Finding CDC Breached Gilead Agreements by Obtaining Patents – On Wednesday, November 30, the U.S. Court of Federal Claims (CFC) issued a ruling in Gilead Sciences, Inc. v. United States in which the CFC found that the Centers for Disease Control and Prevention (CDC) breached the terms of a trio of material transfer agreements under which Gilead provided proprietary drugs developed through research into human immunodeficiency virus (HIV) treatments. The CFC found that the CDC breached those agreements by failing to notify Gilead that the agency was pursuing patents on inventions that were based on Gilead’s research.

CAFC Affirms Decision to Strike Expert Report for Applying Wrong Claim Construction – On Wednesday, November 30, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Treehouse Avatar LLC v. Valve Corp. in which the appellate court affirmed the Western District of Washington’s motion to strike an infringement expert’s report introduced by Treehouse Avatar. The Federal Circuit agreed with the district court that the report, which analyzed infringement through the plain and ordinary meaning of a claim term, relied upon a claim construction that was materially different from the construction agreed upon by both Treehouse Avatar and Valve during the district court proceedings.

UK High Court Invalidates Siemens Wind Turbine Patent After GE Loses U.S. Suit – On Wednesday, November 30, Justice Richard Meade of the UK’s High Court issued a ruling invalidating wind turbine patent claims owned by Siemens Gamesa and finding that a GE wind turbine did not infringe upon Siemens Gamesa’s patent claims. GE had previously lost an infringement suit brought by Siemens Gamesa in U.S. district court asserting the counterpart U.S. patent claims recently invalidated by the UK’s High Court against the same wind turbine systems being marketed by GE.

Judge Brasher Tells Eleventh Circuit to Reject “Title-Versus-Title” Exception to Rogers Test – On Tuesday, November 29, the U.S. Court of Appeals for the Eleventh Circuit issued a ruling in MGFB Properties, Inc. v. Viacom Inc. in which the appellate court affirmed a ruling by the Northern District of Florida granting summary judgment to Viacom against MGFB’s claims that the TV show MTV Floribama Shore infringes upon its trademark for “FLORA-BAMA” used for bar and restaurant services. Concurring with the judgment was Circuit Judge Andrew L. Brasher, who wrote separately to argue that the Eleventh Circuit should join the Ninth Circuit in rejecting the “title-versus-title” exception to First Amendment protections to expressive titles that originated from a footnote in the Second Circuit’s seminal First Amendment decision in Rogers v. Grimaldi (1989).

FTC, State AGs Sue Google, iHeartMedia Over Deceptive Pixel 4 Radio Ads – On Monday, November 28, the Federal Trade Commission (FTC) announced that it, along with several state attorneys general (AGs), had filed lawsuits against Internet services giant Google and mass media company iHeartMedia over the two firms’ activities behind a deceptive ad campaign in which nearly 29,000 endorsements featured radio personalities endorsing Google’s Pixel 4 smartphone without the personalities receiving the Pixel 4 smartphone prior to recording.

Telegram Hands Over Copyright Infringing IP Address After Delhi HC Ruling – On Thursday, November 24, Justice Prathiba M. Singh of India’s High Court of Delhi issued an order indicating that global messaging company Telegram has complied with a previous copyright infringement ruling requiring Telegram to disclose data of operators of channels and devices for distributing pirated content including admin names, phone numbers and IP addresses.


CRB Announces Intent to Audit Sirius XM’s Section 112 and 114 Royalty Payments – On Thursday, December 1, the Copyright Royalty Board (CRB) issued a public notice in the Federal Register announcing the agency’s intent to audit 2019, 2020 and 2021 accounting statements submitted by Sirius XM Radio concerning royalty payments made by the Internet radio company pursuant to statutory licenses under 17 U.S.C. § 112(e) and 17 U.S.C. § 114(f).

USITC Institutes Section 337 Proceeding Into Retractable Vehicle Steps – On Thursday, December 1, the U.S. International Trade Commission announced that it had instituted a Section 337 investigation based on a complaint for patent infringement filed by Brea, CA-based Lund Motion Products regarding certain automated retractable vehicle steps imported into the U.S. for sale by one Chinese respondent and four other entities from the United States.

EUIPO Adopts Revised Regulation and Directive on Community Designs – On Wednesday, November 30, the European Union Intellectual Property Office (EUIPO) announced that the agency had officially adopted a pair of proposals advanced by the European Commission for revised regulations and directive on community designs, including clarifications to the scope and limitations of the unitary industrial design right and providing a repair clause allowing for the reproduction of original designs for repair purposes.

Nike Files Trade Dress Suit Against Knockoff Air Jordan 1 and Dunk Sneakers – On Wednesday, November 30, athletic footwear maker Nike filed a lawsuit in the Southern District of Texas against the operators of footwear companies Kool Kiy and Omi over those firms’ sales of sneakers that allegedly infringe upon Nike’s registered trade dress in its Air Jordan 1 and Dunk sneaker designs.

CNN Faces Copyright Lawsuit in Central California Over Songs in Broadcast Segments – On Wednesday, November 30, production music library firm Freeplay Music filed a lawsuit in the Central District of California against Cable News Network (CNN), alleging that the 24-hour news network had willfully infringed Freeplay’s copyright to more than 115 musical works that CNN has allegedly reproduced without license in more than 280 broadcast segments.

Judge Corley Denies Meta’s Motion to Dismiss Royalty-Free Music Copyright Suit – On Monday, November 28, U.S. District Judge Jacqueline Scott Corley of the Northern District of California entered a ruling denying a motion to dismiss filed by social media giant Meta Platforms, finding that royalty-free music soundtrack provider Epidemic Sound had plausibly alleged copyright infringement claims pleading factual content allowing the court to draw the inference that Meta is liable for the alleged misconduct.

USPTO Corrects Date in Post Allowance and Reissue Info Collection – On Monday, November 28, the U.S. Patent and Trademark Office issued a correction in the Federal Register noting that the agency had incorrectly set February 21, 2023 as the deadline to receive public comments for an agency information collection regarding post allowance and reissue submissions. The correct date as noted by the agency is January 23, 2023.

EPO, CNIPA Renew Memorandum of Understanding on Cooperative Patent Classification – On Monday, November 28, the European Patent Office (EPO) announced that EPO President António Campinos and China National Intellectual Property Administration (CNIPA) Commissioner Shen Changyu had signed a renewed memorandum of understanding (MoU) indicating that the two IP agencies would continue to collaborate on the Cooperative Patent Classification scheme between the agencies.

This Week on Wall Street 

Omicron Subvariants Lead FDA to Halt Authorization of Eli Lilly’s COVID-19 Treatment – On Wednesday, November 30, the U.S. Food and Drug Administration (FDA) announced that it had declined to authorize bebtelovimab, a COVID-19 treatment under development by Eli Lilly & Co., as the drug is not expected to have any effectiveness against a pair of Omicron subvariants that are causing the majority of COVID-19 infections currently in the United States. 

Marc Benioff Back as Sole Salesforce CEO After Bret Taylor Steps Down – On Wednesday, November 30, customer relationship management (CRM) software firm Salesforce announced that Bret Taylor, who had been promoted one year ago to co-CEO of Salesforce along with company founder Marc Benioff, would be stepping away from the company at the end of next January in order to focus on founding a new company.

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: None
  • Tuesday: None
  • Wednesday: Oracle Corp. (70th)
  • Thursday: None
  • Friday: Carl Zeiss Meditec AG (143rd)

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Join the Discussion

2 comments so far. Add my comment.

  • [Avatar for Anon]
    December 3, 2022 08:25 am

    Mixed emotions in regards to the Centripetal Networks Inc. v. Cisco Systems Inc. case. Even though I am normally very much pro-patent holder, and the infringer here appears to be escaping on a mere technicality, …

    I would prefer a “letter of the law” ruling — even in this case in which it appears that the Judge really was attempting to be ‘fair.’

    I would not want an “Ends Justify the Means” decision just because here the Ends of the Supreme Court reaching a decision I like would be in favor of the patent holder.

  • [Avatar for Pro Say]
    Pro Say
    December 2, 2022 07:49 pm

    . . . and as we all get ready to turn our calendars over from 2022 to 2023, Congressional restoration of patent protection for all areas of innovation is . . . where?

    . . . and why is it that the only patent stakeholders feasting on steak this season . . . and all year round . . . are the infringers?

    Happy Holidays indeed.

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