Bites (noun): more meaty news to sink your teeth into.
Barks (noun): peripheral noise worth your attention.
This week in Other Barks & Bites: the Federal Circuit announces that Judge Moore will move into the role of Chief Judge for the appellate court this May; the Ninth Circuit revives a case including claims of reverse trademark infringement against Dropbox; HPE, Facebook and Microsoft announce a Low-Carbon Patent Pledge to increase innovator access to patented climate change mitigation technologies; the App Association issues a press release supporting the Department of Justice’s apparent restoration of Obama-era interpretations of FRAND policy for SEP licensing; Ericsson earnings show that the company’s increasing 5G infrastructure sales are helping offset lost patent royalty revenue from Samsung; Judge Roumel orders costs and attorney’s fees against the U.S. government for a late patent validity challenge; and the Supreme Court hears oral arguments in a case that could introduce new limits to the doctrine of patent assignor estoppel.
Judge Moore to Succeed Chief Judge Prost at the Federal Circuit – On Wednesday, April 21, the U.S. Court of Appeals for the Federal Circuit announced that, on May 22, Circuit Judge Kimberly A. Moore will succeed Chief Judge Sharon Prost as the top judge on the court that has appellate jurisdiction over all U.S. district court patent cases and Patent Trial and Appeal Board (PTAB) proceedings. Chief Judge Prost will continue in active judicial service after May 22.
Michigan Man Convicted of Stealing BPA-Free Coating Trade Secrets from Coca-Cola – On Thursday, April 22, the U.S. Department of Justice (DOJ) announced that a federal jury in the Eastern District of Tennessee had convicted Dr. Xiaorong You of Lansing, MI, for conspiracy to commit trade secret theft for stealing trade secrets related to formulations of bisphenol-A-free (BPA-free) coatings for beverage cans while working at Coca-Cola for the purpose of starting a Chinese company to exploit the trade secrets.
SCOTUS Hears Oral Arguments in Patent Assignor Estoppel Appeal – On Wednesday, April 21, the U.S. Supreme Court heard oral arguments in Minerva Surgical, Inc. v. Hologic Inc. in which the nation’s highest court will decide whether Minerva has the ability in U.S. district court to challenge the validity of Hologic patents invented by a party in privity with Minerva, or whether such a defense is barred by the doctrine of assignor estoppel.
CAFC Rules Mojave Desert Holdings is Successor-in-Interest in PTAB Reexamination – On Wednesday, April 21, the Federal Circuit issued a precedential revised order on motion in Mojave Desert Holdings, LLC v. Crocs, Inc. in which the appellate court found that U.S.A. Dawgs, which went bankrupt after petitioning for inter partes reexamination proceedings at the PTAB to challenge a design patent owned by Crocs, had effectively transferred its right to request the reexamination to Mojave by also transferring to Mojave liability for past infringement of Crocs’ design patent.
Ninth Circuit Revives Reverse Confusion Trademark Claims Filed Against Dropbox – On Tuesday, April 20, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Ironhawk Technologies, Inc. v. Dropbox, Inc. in which the appellate court reversed the district court’s grant of summary judgment on Ironhawk’s reverse confusion trademark infringement claims after finding that genuine issues of material fact existed on the relevant consuming public for measuring consumer confusion as well as the highly factual inquiry for consumer confusion under the Sleekcraft factors.
Copyright Groups Ask EU Parliament to Expand Know Your Customer Obligations in DSA – On Tuesday, April 20, letters sent by a few dozen organizations representing creators and copyright owners in European creative industries sent letters to the European Parliament and the European Council asking both groups to expand “know your business customer” obligations under the proposed Digital Services Act beyond the context of online marketplaces in order to better address piracy and counterfeits distributed through other channels accessible via the Internet.
CAFC Vacates PTAB Obviousness Finding After Ruling Prior Art Not Enabled – On Friday, April 16, the Federal Circuit issued a precedential decision in Raytheon Technologies Corp. v. General Electric Co. in which the appellate court vacated a final written decision in an IPR proceeding at the PTAB after finding that Raytheon had presented unrebutted evidence that prior art relied on by GE during the PTAB proceeding was not properly enabled as the disclosure was based on the use of nonexistent composite materials.
App Association Applauds DOJ for Reportedly Returning to Obama-Era FRAND Licensing Policy – On Thursday, April 16, ACT | The App Association issued a press release lauding the U.S. Department of Justice (DOJ) for restoring policy interpretations under the 2015 Business Review Letter to the IEEE which reads a “license to all” requirement into fair, reasonable and non-discriminatory (FRAND) obligations in standard-setting organization (SSO) agreements. The DOJ did not issue a statement but merely removed former Antitrust Assistant Attorney General Makan Delrahim’s September 2020 updated and appended Business Review Letter to the IEEE.
Major Tech Firms Announce Low-Carbon Patent Pledge – On Thursday, April 22, Hewlett Packard Enterprise, Facebook and Microsoft announced that the tech companies were beginning a Low-Carbon Patent Pledge initiative aiming to make available patented technologies for climate change mitigation, including enablement of zero-carbon energy sources and power management tech, to innovators developing technologies related to climate change mitigation.
USPTO Announces Info Collection on Customer Satisfaction With Agency Services – On Thursday, April 22, the U.S. Patent and Trademark Office published a request for comment in the Federal Register soliciting qualitative public feedback on its service delivery to identify operational changes needed to improve the USPTO’s programs and services and gain insights into stakeholder experiences and expectations.
CFC Orders Costs Against U.S. Government for Late Validity Challenge – On Wednesday, April 21, Judge Eleni M. Roumel of the U.S. Court of Federal Claims issued a ruling awarding costs and attorney’s fees to Science Applications International Corp. for its motion to strike invalidity defenses raised by the U.S. government after claim construction had occurred in the case, although Judge Roumel did not strike the invalidity defenses.
Intel Avoids Second Multi-Billion Damages Award to VLSI For Now – On Wednesday, April 21, a jury verdict entered in the Western District of Texas found that Intel Corp. was not liable for the infringement of patent claims covering computer processor technologies asserted by VLSI Technology, avoiding $3.1 billion in damages sought by VLSI although a third patent infringement trial between those two companies is scheduled for June.
PTAB Invalidates Remote Application Patent Claims Asserted Against Google, Amazon – On Wednesday, April 21, the PTAB entered a final written decision in an inter partes review (IPR) proceeding finding that patent claims asserted against Google and Amazon in the Western District of Texas and covering methods for executing an application by a remote communication device were invalid as obvious over the prior art.
GCEU Rules Huawei Logo Bears No Similarity to Chanel Trademark – On Wednesday, April 21, the General Court of the European Union (GCEU) issued a decision dismissing a objection filed by Chanel at the European Union Intellectual Property Office (EUIPO) seeking to prevent registration of a trademark application filed by Huawei for a logo having two vertical interlocking semicircles, which Chanel argued was confusingly similar to its own mark for luxury goods.
IBM, IPwe Partner on NFT Blockchain Platform for Patent Assets – On Tuesday, April 20, information technology R&D giant IBM and global patent marketplace IPwe announced that the two firms had entered into a partnership to collaborate on the development of a blockchain platform including non-fungible token (NFT) representations of patents as digital assets in order to improve liquidity in the patent market.
UC Berkeley Team Wins USPTO National Patent Drafting Competition – On Monday, April 19, the USPTO announced that Emily Roberts, Rachel Wilson and Karnik Hajjar from the University of California, Berkeley School of Law were the first-place team from the agency’s National Patent Drafting Competition that was held on April 8.
This Week on Wall Street
Intel Earnings Report Shows Stability in Gelsinger’s First Quarter as CEO – On Thursday, April 22, Intel Corp. announced earnings for the first quarter of 2021, the first full quarter of business under new CEO Pat Gelsinger, in which the semiconductor company beat analyst expectations on revenue by $700 million with sales relatively unchanged from the same period in 2020.
Ericsson Earnings Report Shows 5G Equipment Sales Offset Samsung Patent Royalty Loss – On Wednesday, April 21, Swedish telecommunications firm Ericsson reported earnings for the first quarter of 2021 including revenues of 49.8 billion Swedish crowns ($5.9 billion USD), missing analyst estimates by more than 3.5 billion Swedish crowns due in part to losing patent royalties from Samsung, although an uptick in sales for 5G networking equipment helped offset this loss.
Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2020 are announcing quarterly earnings next week (2020 rank in parentheses):
- Monday: Advanced Micro Devices, Inc. (199th); Canon Inc. (4th); Fujitsu Ltd. (42nd); Koninklijke Philips N.V. (48th); NXP Semiconductors N.V. (73rd)
- Tuesday: 3M Co. (71st); Alphabet Inc. (15th); Denso Corp. (36th); Fuji Electric Co., Ltd. (175th); Hubbell Inc. (t-278th); Juniper Networks, Inc. (166th); Kyocera Corp. (47th); Microsoft Corp. (8th); Novartis AG (180th); Omron Corp. (138th); Raytheon Technologies (6th); Samsung SDI Co., Ltd. (t-153rd); Shimano, Inc. (t-269th); Stryker Corp. (t-114th); Texas Instruments Inc. (38th)
- Wednesday:com, Inc. (16th); Apple Inc. (11th); The Boeing Co. (26th); Boston Scientific Corp. (82nd); eBay Inc. (200th); Facebook, Inc. (23rd); Ford Motor Co. (19th); Hitachi, Ltd. (25th); Jtekt Corp. (294th); Mitsubishi Electric Corp. (33rd); Qualcomm Inc. (17th); Realtek Semiconductor Corp. (t-216th); Renesas Electronics Corp. (118th); Rockwell Automation, Inc. (272nd); Samsung Electro-Mechanics Co., Ltd. (101st); Sanofi S.A. (211th); Seiko Epson Corp. (32nd); Shin-Etsu Chemical Co., Ltd. (162nd); TCL Corp. (51st); United Microelectronics Corp. (t-151st)
- Thursday: BASF SE (95th); Bristol Myers Squibb (t-216th); Caterpillar Inc. (113th); Cirrus Logic, Inc. (t-265th); Citrix Systems, Inc. (227th); Delta Electronics, Inc. (183th); KLA Corp. (t-232nd); LG Corp. (3rd); Mastercard Inc. (143rd); Merck & Co., Inc. (297th); Nokia Oyj (58th); Samsung Electronics Co., Ltd. (2nd); STMicroelectronics N.V. (74th); Textron Inc. (150th); Thermo Fisher Scientific Inc. (131st); ZTE Corp. (208th)
- Friday: Chevron Corp. (275th); Colgate-Palmolive Co. (t-265th); Exxon Mobil Corp. (126th); Komatsu Ltd. (t-220th); Johnson Controls International (119th); Tokyo Electron Ltd. (97th)