Posts in IPWatchdog Articles

Does an architect, as author of an artistic work in the form of a building covered by copyright, have a right to restrain the owner of the land to demolish the building and construct another in its place? The Delhi High Court of India recently answered this firmly in the negative in the case of Raj Rewal v. Union Of India and Ors. The Delhi Court’s judgment gave preference to requirements of urban planning over the moral rights of an architect. It held that the owner of the building has full power to dispose of or destroy it. The judgment is significant in its contribution to the jurisprudence on the scope and limitations of “moral rights” in Indian Copyright Law.

On Wednesday, July 31, Acting Chief Financial Officer of the USPTO Sean Mildrew posted an announcement on the USPTO’s blog explaining the Office’s reasoning for its proposal to raise patent fees in a number of areas. The increase will enhance quality and timeliness of examination, America Invents Act (AIA) trials, and replenish the patent operations reserve to stabilize the Office’s finance, Mildrew said. According to the Notice of Proposed Rulemaking, at least part of the need for the proposed increase is due to the fact that patent application filings are down. “Actual Utility, Plant, and Reissue (UPR) application filings in FYs 2017 and 2018 were less robust than expected,” said the Notice. “In the FY 2020 Budget, given the lower than expected previous year filings, and an analysis of domestic and global economic forecasts, the USPTO has lowered future year filing projections from what was expected when the January 2018 Final Rule was published.”

As we enter the August heat, it’s worth remembering some of the patents that have made summers more bearable through the years, for kids and adults alike. Below are three that stand out from my lifetime—unfortunately, the oft-cited on IPWatchdog and now-popular Bunch O’ Balloons toy was well after my time. Let us know in the comments which inventions made your summers cooler.

This week in Other Barks & Bites: The Federal Circuit issues several precedential decisions, including one reviving the patent claims in VirnetX and another determining that America Invents Act (AIA) validity trials don’t violate the Fifth Amendment’s Takings Clause in Celgene. This week in Other Barks & Bites: The Federal Circuit issues several precedential decisions, including one reviving the patent claims in VirnetX and another determining that America Invents Act (AIA) validity trials don’t violate the Fifth Amendment’s Takings Clause in Celgene; the USPTO proposes fee increases to patent examination and AIA trials and issues a final rule on e-filing in trademark registrations; Katy Perry is ordered to pay $2.7 million for copyright infringement; free OTA TV service Locast is targeted in a copyright suit filed by Disney and other major broadcasters; Pfizer and Mylan consider creating a global giant in off-patent drugs; the University of California files patent suits against major retailers over LED light bulb technology; and patent applications listing artificial intelligence machine inventor are filed in patent offices across the world.

Last week, the Patent Trial and Appeal Board (PTAB) issued 39 decisions on inter partes review (IPR) proceedings, instituting 24 IPRs and denying 15. The PTAB instituted one of four IPR petitions filed by Comcast to challenge a single patent owned by Rovi, adding a new chapter to the legal battle between those two parties over unlicensed television technologies. Spotify also saw the institution of one of three IPR petitions challenging user profile and playlist recommendation patents owned by S.I.S.V.E.L.

The Court of Justice of the European Union (CJEU) has ruled that a phonogram producer can prevent another person from taking a sample, even if it is very short, and including it in another phonogram, “unless that sample is included in a modified form unrecognisable to the ear.” The Court was interpreting certain provisions of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (the 2001 Directive) in the light of the rights enshrined in the Charter of Fundamental Rights of the European Union. See Pelham GmbH, Moses Pelham, Martin Haas v. Ralf Hütter, Florian Schneider?Esleben (Case C-476/17, July 29 2019). The case concerned a two-second sample of the Kraftwerk track Metall auf Metall, which was used in the song Nur mir, composed by Pelham and Haas. Hütter and Schneider?Esleben, members of Kraftwerk, brought an action for copyright infringement in the German courts, and the Bundesgerichtshof (Federal Court of Germany) referred six questions to the CJEU.

Over the past decade—and likely for the rest of our lifetimes—China has become a favored venue for patent filings due to its increasing GDP and expansive market. However, U.S. applicants familiar with U.S. patent rules should be careful not to employ the same prosecution strategies as used in the United States when filing Chinese patents, as the rules in the two jurisdictions are materially different. For example, in the United States, it is common to file a string of continuation applications for inventions that are licensing/litigation worthy. In China, there is no corresponding opportunity.

As online marketplaces have been created and subsequently evolved over time, there always seems to be a point where counterfeits and diverted gray-market goods make their way onto those marketplaces. eBay was one of the first e-commerce sites that gave brand owners and trademark owners the ability to review, monitor and take down infringing goods. This program was called VERO (Verified Rights Owner Program). Alibaba and Amazon are now making their own similar efforts to rid their platforms of counterfeit and infringing goods in an effort to keep the big brands interested in selling on their sites.

On Tuesday, the Senate Judiciary Committee’s Subcommittee on Intellectual Property convened an oversight hearing of the U.S. Copyright Office featuring testimony from Karyn Temple, the Register of Copyrights and Director of the Copyright Office. Much of the hearing focused on the Office’s efforts to modernize its information technology infrastructure and business processes, although implementation of the recently passed Music Modernization Act (MMA) and new forms of digital piracy were also discussed.

Yesterday, 24 law professors, former Chief Judges of the Federal Circuit and former heads of the U.S. Patent and Trademark Office (USPTO) sent a letter to Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Jerrold Nadler (D-NY) and Doug Collins (R-GA) aimed at correcting what the letter characterizes as “misapprehensions of law and misleading rhetoric” on the subject of pending patent reform legislation. The letter makes specific reference to statements made by the American Civil Liberties Union (ACLU) claiming that the draft legislation to amend Section 101 of the patent law “if enacted would authorize patenting products and laws of nature, abstract ideas, and other general fields of knowledge.” The authors of yesterday’s letter, which included Retired Federal Circuit Chief Judges Randall Rader and Paul Michel and former USPTO Directors Todd Dickinson and David Kappos, called such statements “profoundly mistaken and inaccurate” and laid out in detail the specific inaccuracies. Rather than expanding the scope of 101 to abstract ideas and laws of nature, said the letter, “the proposed amendments preclude ‘implicit or judicially created exceptions to subject matter eligibility,’” and do not eliminate existing constitutional and statutory bars.

Recent controversy surrounding Kim Kardashian’s truncated move to trademark the term “Kimono” for her new line of undergarment shapewear has subsided, with Kardashian formally announcing that she is abandoning the effort. Kardashian explained the mark as serving the dual purposes of being a play on her name and showing respect for the Japanese culture. In fact, Kimono is Japanese for a traditional long, baggy garment that has been worn by Japanese women for centuries. Kardashian’s effort caused an uproar among the Japanese community in Japan and here in the United States. The community accused Kardashian of trying to exploit a centuries-old Japanese tradition for commercial gain. The controversy prompted the mayor of Kyoto to write a letter to Kardashian, in which he noted the sensitivity of the Japanese people to her move and urged her to drop the effort. Although the immediate controversy has now subsided, Kardashian’s truncated effort has renewed debate around the larger issue of “cultural appropriation” and its intersection with trademark law.

Earlier this summer, Intel announced that some 8,500 patent assets (i.e., issued patents and pending patent applications) would be auctioned. Approximately 6,000 assets related to 3G, 4G, and 5G cellular standards, while 1,700 assets relate to wireless implementation of cellular standards. According to initial reports from IAM, Intel was hoping to sell these patents separately from the smartphone modem business, although they were open to the possibility that a prospective buyer might seek to acquire both the patent assets and Intel’s smartphone modem business. Shortly after the Intel patent assets were announced as available for sale, Intel abruptly took the assets off the market in favor of negotiating with a single interested suitor. Very quickly, news broke that the negotiations with that unidentified suitor were quite advanced, suggesting that the Intel auction announcement was nothing more than a negotiating ploy to get the unidentified suitor back to the table and for the suitor to realize that they could lose the patent assets if they did not play their hand correctly and misidentified the leverage involved in the negotiation. It has recently come to light that the unidentified suitor for the Intel patent assets was none other than Apple, just as IAM has predicted in its initial reporting. So, now we know that Apple will buy the majority of Intel’s modem business, including the patent assets, for $1 billion. 

Whenever a company finds itself in the cross-hairs of a cease-and-desist letter or patent infringement lawsuit, a license may not be a viable option. That is often the case when the patent holder is a competitor intent on enforcing a patent against its rivals… The lesson to be taken away is that the efficacy of a design-around is likely to depend on how significant the change is in terms of the claimed invention’s novelty and/or functionality. One should also consider the possibility of incorporating changes that make use of long-standing prior art techniques, methods or elements, especially any that were cited by the patent examiner, in response to which prior art the patentee either amended its claims or distinguished its invention from such prior art during the course of prosecution. 

Global IP Holdings, LLC, the owner of U.S. Patent No. 8,690,233, achieved a victory with the Federal Circuit vacating a decision of the Board and remanding for the Board to address predictability and criticality of the claim term to determine whether the written description requirement has been satisfied. Although victorious, Global did not achieve everything it wanted. Global had requested the Federal Circuit to simply overrule the Board. Judge Stoll, however, explained that there was not support in the record sufficient to determine whether the “plastic” claim limitation was critical or important. Therefore, the Federal Circuit vacated the Board’s decision and ordered the Board, on remand, to address predictability and criticality of the claim term in question in order to determine whether the written description requirement has been satisfied.

This March, the U.S. Supreme Court granted a petition for writ of certiorarito take up Peter v. Nantkwest Inc., on appeal from the Court of Appeals for the Federal Circuit. The case will ask the nation’s highest court to determine whether the phrase “[a]ll expenses of the proceeding” found in 35 U.S.C. § 145, which governs appeals to district court of U.S. Patent and Trademark Office decisions to deny the issue of a patent grant, encompasses personnel expenses incurred by the USPTO, including attorneys’ fees, when its employees defend the agency against Section 145 litigation. On July 22, a series of intellectual property and law associations filed amicusbriefs in the case by and large supporting the position of Nantkwest. This includes the American Bar Association, which argued that the USPTO’s interpretation of the statute would “hamper the equal access to justice and chill the assertion of meritorious claims.” Other Nantkwest amici argued that the government has had the statutory authority to collect ‘expenses of the proceeding’ in patent cases since 1839 but for the 174 years prior to the case against Nantkwest, the USPTO has declined to seek attorney’s fees.