This week in Other Barks & Bites: the Supreme Court denies petitions for certiorari in cases over Lanham Act claims asserted by professional models against strip clubs using their likenesses in nightclub ads, as well as an appeal challenging the Eighth Circuit’s determination that a product’s expense doesn’t create higher buyer sophistication as a matter of law in initial interest confusion cases; Samsung announces plans to build a $17 billion computer chip plant in Tyler, TX; a successful mediation between Nike and Skechers leads to a settlement of patent infringement claims between those two footwear rivals; Senate Democrats, along with Bernie Sanders (I-VT), renew calls for a TRIPS waiver on COVID-19 vaccines; amendments to national copyright law increasing copyright protections go into effect in Singapore; Apple files a petition for cert asking the Supreme Court to reverse the Federal Circuit’s finding that its license with Qualcomm eliminates Article III standing to challenge the validity of the licensed patents; and the Fifth Circuit finds that the mere availability of a website without anything targeting a forum state cannot meet the “purposeful availment” requirement for personal jurisdiction to sustain a copyright and trade dress infringement case.
Senate Democrats, With Sanders, Reiterate Call for TRIPS Waiver at WTO – On Tuesday, November 23, a group of Senate Democrats including Tammy Baldwin (D-WI), Sherrod Brown (D-OH), Elizabeth Warren (D-MA), along with Sen. Bernie Sanders (I-VT), sent a letter addressed to President Joe Biden calling on the White House to renew a push for waiving intellectual property obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) ahead of the World Trade Organization Ministerial Conference getting underway next week.
SCOTUS Denies Cert Petitions in Stripper Publicity Rights and Initial Interest Confusion Cases – On Monday, November 22, the U.S. Supreme Court entered an order list in which the nation’s highest court denied a petition for writ of certiorari in Dires, LLC v. Select Comfort Corp., which was appealed after the U.S. Court of Appeals for the Eighth Circuit ruled that the question of buyer sophistication in initial interest confusion cases should be submitted to a jury rather than presuming that the expense of Sleep Number mattresses created high buyer sophistication. The Supreme Court also denied a petition for cert in Electra v. 59 Murray Enterprises, which had asked the Court to decide whether right of publicity claims asserted under provisions of the Lanham Act required the purported mark holder to have a famous persona and not simply a commercial interest in their personal identity.
Build Back Better Act Passes House With Several R&D Funding Provisions – On Friday, November 19, the U.S. House of Representatives passed H.R. 5376, the Build Back Better Act, the massive infrastructure bill being pushed through Congress with encouragement from the Biden Administration. The bill, which now travels to the U.S. Senate for consideration in the other house of Congress, includes provision setting aside federal funding for several research and development programs, including those related to climate change and COVID-19. House Science Committee Chair Eddie Berniece Johnson (D-TX) lauded the bill’s passage as “a historic investment in our Nation’s research and innovation capabilities.”
Fifth Circuit Finds No Purposeful Availment of Forum State Through Website Platform – On Friday, November 19, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Admar International, Inc. v. Eastrock, L.L.C. in which the appellate court ruled that a website operated by the defendant Eastrock selling baby products that allegedly infringe copyright and trade dress owned by Admar does not by itself create the sufficient minimum contacts within the forum state for personal jurisdiction over the defendant. The Fifth Circuit ruled that Eastrock’s website must have taken additional steps of targeting the forum state in order to find purposeful availment of the forum state for personal jurisdiction under the Supreme Court’s standard in Burger King Corp. v. Rudzewicz (1985).
CAFC Sends Uniloc Patent Claims Back to PTAB on Facebook’s Cross-Appeal – On Thursday, November 18, the U.S. Court of Appeals for the Federal Circuit issued a decision in Uniloc 2017 LLC v. Facebook, Inc. in which the appellate court affirmed the Patent Trial and Appeal Board’s (PTAB) invalidation of several Uniloc patent claims covering voice-over-Internet-protocol (VoIP) communications technology, finding that the PTAB’s obviousness findings were based on substantial evidence. The Federal Circuit did, however, grant a cross-appeal filed by Facebook, vacating the portion of the PTAB’s ruling that two Uniloc patent claims were not unpatentable and remanding in light of the Board overlooking statements by Facebook in a reply brief regarding the definition of the claim term “instant voice message.”
Amgen Files Petition for Cert to Challenge Federal Circuit’s Section 112 Enablement Rulings – On Thursday, November 18, pharmaceutical developer Amgen Inc. filed a petition for writ of certiorari asking the Supreme Court to overturn the Federal Circuit’s ruling that Section 112 enablement issues can be determined as a matter of law instead of requiring submission to the jury as factfinder, and whether genus claims must only meet the statutory requirements that the claim teaches skilled artisans how to “make and use” the invention rather than requiring the patent’s specification to teach the full scope of claimed embodiments as was required by the Federal Circuit in Amgen’s patent infringement case against Sanofi and Regeneron.
AG Sánchez-Bordona Says Serioius National Security Threat Required for Data Collections – On Thursday, November 18, Advocate General Campos Sánchez-Bordona issued an opinion in several cases before the Court of Justice for the European Union’s (CJEU) regarding the CJEU’s case law on the power of authorities in individual EU member countries to collect data from electronic communications to combat crime and terrorism. AG Sánchez-Bordona’s opinion reiterated that indiscriminate retention of traffic and location data is only permitted under EU law in the event of a serious threat to national security and not simply for the prosecution of serious crimes.
Apple Petition for Cert Renews Article III Standing for Licensee Argument Endorsed by Judge Newman – On Wednesday, November 17, Apple Inc. filed a petition for writ of certiorari asking the Supreme Court to take up an appeal of the Federal Circuit’s recent decision that Apple lacked Article III standing to challenge Qualcomm patents at the PTAB after settling patent infringement claims with a license agreement. Apple asks the nation’s highest court whether a licensee has Article III standing to challenge the validity of patents included in the license agreement, a question that Circuit Judge Pauline Newman answered in the affirmative in her dissent over the Federal Circuit’s recent decision in the case.
CRB Issues Cost of Living Adjustment to Noncommercial Radio Station Section 118 Licenses – On Tuesday, November 23, the Copyright Royalty Board issued a final rule in the Federal Register increasing Section 118 statutory license fees paid by noncommercial radio stations at educational institutions by 6.2 percent in 2022, increasing the per station license from $164 up to $174, to reflect a cost of living adjustment to the licensing rates.
USPTO Extends Public Comment Period Regarding Fee Deficiency Submissions – On Tuesday, November 23, the U.S. Patent and Trademark Office issued a notice in the Federal Register announcing that the agency would be extending by 30 days the filing period for public comments regarding an information collection on agency procedures for determining whether a particular small entity is eligible to have erroneous payments of various patent prosecution and post-grant fees excused.
Singapore’s Amended Copyright Law Comes Into Effect, Increases Copyright Protections – On Sunday, November 21, amendments to the Singapore Copyright Act officially became effective in that country. New amendments to the law create a default presumption that copyright to contracted works belong to the creator, unless the contract explicitly assigns those rights to the hiring party, and notice requirements mandating that those making a public use of a creator’s or performer’s work provide notice to the creator or performer of that use.
Online Retailer Argues Insufficient Contacts in Motion to Dismiss St. Andrews Trademark Case – On Friday, November 19, UK-based online clothing retailer Source and Design International filed a motion to dismiss in the Northern District of California, arguing that it lacks sufficient contacts with the United States for the Northern California federal court to find personal jurisdiction over it as the defendant in a trademark case brought by the centuries-old Scottish golf course St. Andrews Links.
Nike, Skechers Settle Patent Infringement Claims After Successful Mediation – On Friday, November 19, footwear rivals Nike and Skechers filed a mediation report in the Central District of California reporting that the two companies had reached an agreement through mediation to settle three lawsuits filed by Nike alleging that Skechers had infringed upon a series of design and utility patents incorporated into several lines of Skechers shoes.
USITC to Review Whether Google Audio Players Infringed Sonos Patents at Time of Importation – On Friday, November 19, the U.S. International Trade Commission announced that the agency would review an initial determination by a chief administrative law judge (CALJ) finding a Section 337 violation by Google for importing certain audio players and controllers in violation of patent claims owned by Sonos. The USITC will review whether those products infringed upon Sonos patents at the time of importation.
Saudi Arabia Becomes 10th Non-EU Country to Sign Partnership Agreement With EPO – On Thursday, November 18, the European Patent Office (EPO) announced that the agency had signed a reinforced partnership agreement with the Saudi Authority for Intellectual Property (SAIP), the 10th such agreement entered into between the EPO and IP offices in non-European countries, for collaboration on the patent granting process and examiner training initiatives.
This Week on Wall Street
Samsung to Build $17B Computer Chip Factory in Tyler, TX – On Tuesday, November 23, news reports indicated that South Korean technology conglomerate Samsung Electronics would announce that Tyler, TX, has been chosen as the location for a new computer chip production facility for Samsung, with the $17 billion factory expected to drive the creation of 1,800 jobs when the plant enters full production in 2024.
Walmart to Host Its First Shoppable Livestream on Twitter This Sunday – On Monday, November 22, a post on the official blog for retail giant Walmart announced that the company, which has hosted shoppable livestreams on TikTok and other platforms over the past year, will partner for the first time with social media giant Twitter to host a shoppable livestream on Sunday, November 28, beginning at 7 PM Eastern Time to kick off Cyber Week.
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: None
- Tuesday: Hewlett Packard Enterprise (53rd)
- Wednesday: Splunk Inc. (t-232nd)
- Thursday: Marvell Technology Group Ltd. (207th)
- Friday: None
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