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Federal Circuit Upholds Albright’s Ruling on Denial of Transfer for GM

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied General Motors’ petition for a writ of mandamus seeking to compel Judge Alan Albright to transfer a patent infringement case brought against GM by Intellectual Ventures (IV) to the U.S. District Court for the Eastern District of Michigan. IV sued GM in Albright’s Western District of Texas court for infringing 12 patents covering services and products installed in GM cars, including certain features of GM’s OnStar service. GM moved to transfer the case to Michigan, arguing that “the employees most knowledgeable about the design and development of the accused products and certain third-party component suppliers” are based there. IV countered that GM has “an IT Innovation Center” in Austin, Texas, where employees knowledgeable about the accused technology work.

Darrell Issa Doesn’t Understand That He is the Problem

US Inventor is publicly opposing the appointment of Representative Darrell Issa (R – CA) to Chair the IP Subcommittee due to Issa’s record of IP reforms that are harmful to independent inventors and startups. To accomplish these IP reforms, Issa squelches the voices of independent inventors and startups while amplifying the voices of Big Tech and Chinese Communist Party (CCP) controlled multinationals. Now, in a recent statement, Issa argues that his IP reforms have made the patent system more fair for everyone, even as the facts show he is completely wrong. Issa is unfit to be IP Subcommittee Chair.

This Week in Washington IP: FTC’s Non-compete Proposal, Competition in Ticketing Services, and the Effectiveness of AI in Content Moderation

This week in Washington IP news, Congress is back in session with a light week of hearings including a Senate Judiciary hearing on competition in live entertainment. Elsewhere, there is a U.S. Patent and Trademark Office (USPTO) training session on the patent appeals process, and a discussion about President Biden’s tech agenda from the ITIF.

Amici Urge SCOTUS to Reverse Overly Broad Definition of ‘Expressive Work’ in Jack Daniel’s v. VIP Products

Last November, the U.S. Supreme Court granted a petition for writ of certiorari filed by famed whiskey brand owner Jack Daniel’s Properties. The petition filed by Jack Daniel’s appealed the U.S. Court of Appeals for the Ninth Circuit’s March 2020 ruling that a “Bad Spaniels” dog toy marketed by VIP Products was an expressive work entitled to First Amendment protections against trademark infringement liability under the Rogers test. On January 18, a series of 16 amicus briefs were filed with the Supreme Court, the vast majority of which urged the nation’s highest court to reverse the Ninth Circuit’s ruling and limit the application of the Rogers test to clearly artistic works and exclude consumer products that happened to have some humorous expression. Several amici also pushed back on the Ninth Circuit’s ruling that VIP Products’ use of Jack Daniel’s marks was noncommercial.

New USPTO Tool Aims to Help IP Newbies Identify Their Rights

At the U.S. Patent and Trademark Office’s (USPTO) Women’s Entrepreneurship (WE) event in Naples, Florida, on Wednesday, January 18, USPTO Director Kathi Vidal announced that the Office has a new tool, called the Intellectual Property (IP) Identifier, intended to assist those “less familiar with IP” in identifying what IP they have and what rights they need to protect it. The tool also provides basic information on patents, trademarks, trade secrets and copyright. Vidal said in a press release Wednesday that anyone “considering starting a business or trying to grow one” should use the tool and that “it’s another example of our work to bring more people into the innovation ecosystem to increase American competitiveness, grow the economy, and solve world problems.” 

Other Barks & Bites for Friday, January 20: Getty Images Files Lawsuit Against AI Art Company; USPTO Extends Deadline for Strategic Plan Input; and the U.S. Solicitor General Files a Brief in Support of Jack Daniel’s in Trademark Dispute

This week in Other Barks & Bites: The U.S. Copyright Office appoints a new Deputy Director of Policy & International Affairs; Getty Images launches a lawsuit against an AI art company; the United States Patent and Trademark Office pushes back the deadline for comments on its Draft 2022-2026 Strategic Plan; and the U.S. Solicitor General supports Jack Daniel’s in its Supreme Court trademark case.

Apple Scores Win at CAFC in Split Ruling on Prosecution Laches

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled today in a split precedential decision authored by Judge Reyna that a district court properly found Personalized Media Communications’ (PMC) patent unenforceable due to prosecution laches. Judge Stark dissented, arguing that, although he agreed PMC’s delay in prosecuting its patent was “unreasonable and inexcusable,” Apple failed to establish that it suffered prejudice during the period of delay. PMC sued Apple in the U.S. District Court for the Eastern District of Texas in 2015, alleging that Apple’s digital rights management software, FairPlay, infringed claim 13 of PMC’s U.S. Patent No. 8,191,091. A jury found that Apple infringed at least one of claims 13-16, but in a subsequent bench trial the district court found that the patent was unenforceable due to prosecution laches under Hyatt v. Hirshfeld.

USPTO-FDA Listening Session: Patient Advocates Want Access, Patent Advocates Want Evidence

The U.S. Patent and Trademark Office (USPTO) and the Food and Drug Administration (FDA) today jointly held an all-day listening session featuring speakers from patient advocacy and industry groups, academia, and brand and generic pharmaceutical companies who weighed in on the relationship between patents and affordable access to medicines. The session was announced via a Federal Register Notice and request for comments on the subject, published on November 7, 2022, stemming from a joint July 2022 announcement that the two agencies plan to execute a number of initiatives aimed at lowering drug prices, as directed in July 2021 by President Joe Biden’s “Executive Order on Promoting Competition in the American Economy.”

New Vision Gaming Tells CAFC Final GAO Findings Warrant Dismissal of CBM Institution

Earlier this month, patent owner and casino game innovator New Vision Gaming & Development filed a reply brief in the U.S. Court of Appeals for the Federal Circuit in its latest bid to challenge the Patent Trial and Appeal Board’s (PTAB) institution of covered business method (CBM) review proceedings brought by gambling product company SG Gaming. New  Vision alleged violation of a forum selection clause in an agreement between the two parties and now also points to a final report of the U.S. Government Accountability Office (GAO) as further support for dismissal. New Vision’s most recent brief comes nearly two months after appellee SG Gaming and intervenor USPTO Director Kathi Vidal both filed briefs in the Federal Circuit backing the PTAB’s institution of CBM review proceedings.

Report Calls Out Cloudflare for Facilitating Piracy, Counterfeits

According to new research released by Corsearch, a significant number of websites engaging in piracy and counterfeiting use Cloudflare’s Content Delivery Network (CDN) services. Cloudflare was detected as providing services to websites that infringed trademarks and copyright six times more than the next service provider. 49% of the websites Corsearch flagged for content piracy used Cloudflare in addition to 23.5% of websites flagged for offering counterfeit goods. Additionally, Corsearch notifies Google when it believes a website should be demoted in its search engine due to infringing trademarks or copyright. When Corsearch analyzed this data, it found 71% of these websites used Cloudflare’s services.

WIPO is seeking a Senior Counselor of National IP Strategies

The World Intellectual Property Organization is looking to hire a Senior Counselor of National IP Strategies in the Office of the Assistant Director General, IP and Innovation Ecosystems Sector.  The incumbent provides overall management and coordination of an effective program to assist Member States in the development of their National IP Strategy in the broader context of the country’s national…

High Court Asks for SG Views on Apple’s Petition Challenging Federal Circuit Approach to IPR Estoppel

The U.S. Supreme Court yesterday invited the U.S. Solicitor General to provide its views on Apple’s petition asking the High Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings. The case stems from a February, 2022, decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the court issued a mixed precedential decision that affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California. That ruling related to a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc.

Issa is Not a Fit for IP Subcommittee Chairman

The House of Representatives’ Judiciary Committee—Subcommittee on the Courts, Intellectual Property and the Internet (IP Subcommittee) writes patent law and is responsible for other patent-related initiatives. A country’s patent laws directly affect its innovation economy. In a free-market economy, patent laws can boost or destroy incentives to invent and commercialize new things. As a result, patent law influences economic and job growth, social mobility, technological advances and national security. The 118th congress has begun. Currently, the Republican Steering Committee is selecting the Chairs for the various committees and filling the ranks with members. The next step is for the Chairs of the various committees to select their subcommittee chairs. In the case of the IP Subcommittee, Jim Jordan is the Chair of the Judiciary Committee, so he selects the IP Subcommittee Chair. Representative Darrell Issa (R-CA) is the most likely candidate to be selected.

The Adidas v. Thom Browne Saga: Stripes May Be ‘Earned’ But They Cannot Be Owned

Engagement in proactive IP litigation by global companies is the bedrock of trademark enforcement, and Adidas is no stranger to this strategy. Since 2008, this athleisure accessories manufacturer has consistently protected its intellectual property by signing over 200 settlement agreements and fighting more than 90 court battles. Most recently, on  January 12, 2023, Adidas’s efforts to sue Thom Browne Inc., a Zegna subsidiary, for trademark infringement of its ‘three-stripes logo’ was foiled. The damages claim of around $7.8 million, or £6.4 million, backfired on the German sportswear giant when it was denied by an eight-person Manhattan jury.

Federal Circuit Upholds Two Courts’ Findings that Remote Training Patents are Ineligible

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed one district court decision and dismissed another as moot, finding that Riggs Technology Holdings, Inc.’s U.S. Patent No. 7,299,067 for remote education and training systems is patent ineligible as it is “plainly drawn to an abstract idea.” Judge Chen authored both opinions. Riggs sued Cengage Learning, Inc. in the U.S. District Court for the District of Massachusetts for infringement of the ‘067 patent, but the district court granted Cengage’s Motion to Dismiss based on patent ineligibility. The court held that the patent “is plainly drawn to an abstract idea,” and that “the concept underlying the claims of the ’067 patent—providing, managing, and/or documenting training completed remotely on a handheld device—is akin to those found in claims the Federal Circuit has deemed abstract and ineligible.”