Other Barks & Bites for Friday, July 17: CJEU Says Commercial Partnership May Make Google Liable for Gambling Ads; CAFC Corrects CFC on Book of Wisdom; Tillis Indicates PERA Tweaks

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Henry Hadad’s Australian Shepherds Bodhi (8 red) and Loki (6 black tri).

This week in Other Barks & Bites: Senator Thom Tillis (R-NC) indicates that the Patent Eligibility Restoration Act’s language could be changed to address concerns about gene patents; the Seventh Circuit says that Teva plausibly alleged that Eli Lilly breached the terms of a Hatch-Waxman settlement by extending its market exclusivity to Forteo through regulatory pathways; the Tenth Circuit vacates-in-part a ruling dismissing KetoNatural’s claims that Hill’s engaged in false speech actionable under the Lanham Act by disparaging grain-free dog foods; the Court of Justice for the European Union rules that Google could be liable for fines under Italian law due to its commercial partnership with a YouTube channel promoting gambling advertisements; the Federal Circuit finds that the Court of Federal Claims erred in reading unforeseen changed circumstances into the book of wisdom that informs hypothetical negotiation analysis; and major chipmaker TSMC announces a $100 billion investment into Arizona production facilities on the same day that it reported a second quarter earnings beat.

Barks

CAFC Corrects Court of Federal Claims on Proper Book of Wisdom Application – On Thursday, July 16, the U.S. Court of Appeals for the Federal Circuit issued a ruling in 4DD Holdings, LLC v. United States vacating-in-part a judgment by the U.S. Federal Court of Claims awarding $12.7 million to 4DD Holdings for the U.S. federal government’s infringement of its healthcare data recording software TETRA by making thousands of unauthorized copies to develop adapted versions of TETRA that were compatible with government databases. The Federal Circuit found that the Court of Federal Claims improperly applied the book of wisdom doctrine stemming from the U.S. Supreme Court’s 1933 ruling in Sinclair Refining Co. v. Jenkins Petroleum Process Co., which requires taking certain post-infringement acts into account when calculating licenses from hypothetical negotiations, when it took into account the Department of Veterans Affairs’ decision to cancel its contract for TETRA following a change in leadership, though evidence that 4DD Holdings may have offered development licenses or provided volume discounts for such licenses could be part of the district court’s consideration on remand.

CJEU Says Google May Be Liable for Gambling Ads Due to Commercial Partnership – On Thursday, July 16, the Court of Justice for the European Union (CJEU) issued a judgment following Google’s appeal of a €750,000 fine by the Italian communications regulator AGCOM finding that, while the activity of online hosting is not intrinsically related to gambling, hosting service providers must act as intermediaries carrying out a strictly technical and passive activity excluding knowledge or control over the information. The CJEU remanded the case to the Italian national court that referred the question to verify if Google could reasonably have been unaware that the main theme of the YouTube channel promoting gambling in breach of Italian law within the context of that channel’s commercial partnership contract sharing advertising revenue with Google.

Tillis Indicates PERA Tweaks at Senate Judiciary Hearing on Human Genome Patents – On Tuesday, July 14, the U.S. Senate Committee on the Judiciary convened for a hearing entitled From Genes to Machines: the Patent Eligibility Debate featuring a panel of witnesses including former U.S. Patent and Trademark Office Director (USPTO) Andrei Iancu and representatives from the healthcare and computer software sectors to debate potential changes to the Patent Eligibility Restoration Act (PERA), which has been introduced to abrogate U.S. Supreme Court decisions expanding judicial exceptions to patentability under 35 U.S.C. § 101. While committee members including Senator Chris Coons (D-DE) questioned the supposed positive impacts of cases like Alice v. CLS Bank, comments from panelist Dr. Debra Leonard of the University of Vermont about the impacts of gene patents on her ability to perform laboratory tests for patients led to comments from Judiciary Committee Chairman Senator Thom Tillis (R-NC) calling upon stakeholders to be open to changes to PERA’s language that would ensure the bill’s passage in light of opposition to gene patents.

Tenth Circuit Says Some Dog Food Statements Challenged By KetoNatural are Commercial Speech – On Tuesday, July 14, the U.S. Court of Appeals for the Tenth Circuit issued a ruling in KetoNatural Pet Foods, Inc. v. Hill’s Pet Nutrition, Inc. reversing-in-part a ruling by the District of Kansas dismissing KetoNatural’s complaint alleging that dog food competitor Hill’s made false statements actionable under the Lanham Act that KetoNatural’s grain-free foods were unhealthy for dogs to harm KetoNatural’s sales. Although the Tenth Circuit agreed with the district court that statements about grain-free diets made by veterinarians and canine health non-profits were not commercial speech, that content developed by Hill’s for its own websites and veterinary education materials were plausibly alleged to be commercial speech following factors on core commercial speech highlighted by the U.S. Supreme Court in its 1983 ruling in Bolger v. Youngs Drug Products Corp. 

Ninth Circuit Reverses Trade Secret Jury Verdict Over Judge Bumatay Dissent – On Tuesday, July 14, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in Comet Technologies USA Inc. v. XP Power, LLC reversing the Northern District of California after finding that the district court issued a jury instruction erroneously saying that XP bore the burden of proving that Comet Technologies’ alleged trade secrets in manufacturing components for computer chip fabrication were not readily ascertainable by proper means. Dissenting from the panel majority was Circuit Judge Patrick Bumatay who agreed that the jury instruction was erroneous but argued that the error was harmless in the face of undisputed evidence produced at trial that would have led the jury to the same conclusion awarding $40 million in compensatory and punitive damages, a permanent injunction and $17 million in attorney’s fees to Comet Technologies. Circuit Judge David Hamilton, sitting by designation from the Seventh Circuit, wrote a concurrence addressing XP’s challenge to the relief awarded in which he argued that an award of damages for unjust enrichment based on avoided costs along with injunctive relief does not create an impermissible double recovery.

Seventh Circuit Find Settlement Covenants Outlasting Patent Rights Support Teva’s Contract Claim – On Monday, July 13, the U.S. Court of Appeals for the Seventh Circuit issued a ruling in Teva Pharmaceuticals USA, Inc. v. Eli Lilly & Co. reversing the Southern District of Indiana’s dismissal of Teva’s breach of contract claims following Eli Lilly’s submission of a supplement to its New Drug Application (NDA) for the osteoporosis injectable treatment Forteo. The Seventh Circuit disagreed with the district court that a 2018 settlement agreement ending Hatch-Waxman litigation over Teva’s Abbreviated New Drug Application (ANDA) to market generic Forteo was no longer effective following expiration of the patents named in the settlement agreement, finding that covenants not to sue and other provisions of the agreement outlasted patent expiration and made Teva’s allegations plausible at the pleadings stage.

Bites

USPTO Announces Updated Landing and Statistics Pages for PTAB Trials – On Wednesday, July 15, the USPTO announced that the agency had published new landing and statistics webpages for the Patent Trial and Appeal Board (PTAB) designed to improve user experience and highlight information about procedures governing PTAB trials and appeals.

Second Circuit Won’t Modify Acorda Arbitration Award to Repay Post-Expiration Royalties Willingly Paid – On Wednesday, July 15, the U.S. Court of Appeals for the Second Circuit issued a summary order in Acorda Therapeutics, Inc. v. Alkermes PLC denying Acorda’s appeal seeking modification of its $16.5 million restitution award from Alkermes for repayment of patent royalties paid after expiration of the patent rights, refusing to add $65 million in restitution for other post-expiration royalty payments that were not paid to Alkermes under protest by Acorda.

Fifth Circuit Dismisses Challenge to Default Judgment Filed Before TM Damages Calculated – On Wednesday, July 15, the U.S. Court of Appeals for the Fifth Circuit issued a per curiam ruling in Spectrum Laboratories, L.L.C. v. URZ Trendz, L.L.C. dismissing URZ Trendz’s appeal of a default judgment from the Southern District of Texas for lack of jurisdiction, finding that the judgment was not a final judgment because the district court had yet to calculate damages for Spectrum’s counterfeiting synthetic urine and infringing on URZ Trendz’s trademarks.

USPTO to Transition International Trademark Filings from TEAS to Madrid e-Filing – On Wednesday, July 15, the USPTO announced that it would begin transitioning outbound international trademark application filings from the agency’s Trademark Electronic Application System (TEAS) to the World Intellectual Property Organization’s (WIPO) Madrid e-Filing system, with all Madrid Protocol filings originating from the USPTO to transition to WIPO’s system by October 1.

Copyright Office Proposes First Changes to Fee Schedule Since 2020 – On Tuesday, July 14, the U.S. Copyright Office announced that it had submitted a proposed new fee schedule to Congress along with supporting analysis calling for a reasonable inflation adjustment to allow the Office to recover costs closer to the historical percentage of its operational budget, which would be the first change to the Office’s fees since 2020.

USPTO Launches International Patent Assignment Initiative to Modernize PCT – On Tuesday, July 14, the USPTO announced that it was establishing the International Patent Assignment Initiative, including the creation of a cross-functional team working to create concrete solutions that simplify and modernize the administration of cross-border patent ownership and assignments under the Patent Cooperation Treaty (PCT).

Former USPTO Deputy Commissioner Charles Kim Joins Jones Day as Partner – On Tuesday, July 14, the multinational law firm Jones Day announced that Charles Kim, formerly the Deputy Commissioner for Patents at the USPTO, is joining the firm as a partner in its global Intellectual Property Practice based out of Jones Day’s Washington, D.C. office.

This Week on Wall Street

TSMC Announces Q2 Profits Beat, Additional $100B Investment in Arizona Plant – On Thursday, July 16, major chipmaker Taiwan Semiconductor Manufacturing Company (TSMC) reported earnings for the second quarter of 2026 showing that strong AI demand helped the company earn 1.27 trillion New Taiwanese dollars ($39.45 billion USD) versus analyst expectations of NT$1.264 trillion ($39.17 billion USD), with TSMC also announcing that it would be investing an additional $100 million into the company’s semiconductor fabrication facilities in Arizona. 

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2025 are announcing quarterly earnings next week (2025 rank in parentheses):

• Monday: None
• Tuesday: Capital One Financial Corp. (39th); 3M Co. (116th); General Motors Co. (29th); Halliburton Co. (77th); LG Display Co., Ltd. (43rd)
• Wednesday: Alphabet Inc. (12th); Philip Morris International Inc. (t-211th); Texas Instruments Inc. (t-51st); International Business Machines Corp. (9th); AT&T Inc. (102nd); TE Connectivity Ltd. (169th)
• Thursday: Intel Corp. (15th); T-Mobile US, Inc. (t-90th); Thermo Fisher Scientific Inc. (t-276th); SAP SE (t-90th); Comcast Corp. (89th); Honeywell International Inc. (53rd); Nokia Corp. (34th); STMicroelectronics N.V. (67th); Edwards Lifesciences Corp. (t-227th)
• Friday: Verizon Communications Inc. (115th); Charter Communications, Inc. (t-283rd)