Other Barks & Bites, Friday, January 17: IP Provisions in Partial U.S.-China Trade Deal Are a Boon for Pharma, IBM Joins LOT Network, and Alphabet Hits $1 Trillion Market Cap

This week in Other Barks & Bites: The new China-U.S Trade Deal offers stronger patent dispute mechanism for drug companies; IBM joins LOT Network and tops the list of top U.S. patent recipients for a 27th straight year; the U.S. Supreme Court hears a pair of appeals in trademark cases and seems eager to overturn lower court rulings in both; Federal Circuit Judge Pauline Newman dissents on a pair of precedential decisions issued by the CAFC; tech giant Alphabet is the fourth U.S. tech company to hit a $1 trillion market capitalization; China announces that it received 1.401 million invention patent applications during 2019; Ed Sheeran loses a motion to compel and must disclose concert revenue information in “Thinking Out Loud” copyright case; USAA wins a second nine-figure judgment in a patent infringement case against Wells Fargo; and CompuMark reports that 85% of global brands were infringed during 2019.

Bites

China, U.S. Sign Partial Trade Deal Including Provisions That Could Boost Protection for Brand Drugs – On Wednesday, January 15, a ceremony at the White House featured the signing of the first phase of a trade deal between the nations of China and the U.S. Phase one of the economic and trade agreement between the U.S. and China includes several provisions on intellectual property, including agreements on trade secret protection, pharmaceutical-related IP, patents and e-commerce counterfeiting.

IBM Joins LOT Network – On January 14, IBM announced that it has joined the License on Transfer (LOT) Network, a move the company described as “a major step in its dedication to open innovation and responsible stewardship of technology.” LOT Network is a non-profit consortium that offers members a legal mechanism affording them protection from patent assertion entities (PAEs), immunizing them against patent suits from non-operating entities. IBM’s membership adds 80,000 patents and patent applications to LOT’s community of 600-plus companies. “What makes this particular membership announcement interesting is that IBM, a top holder of blockchain patents, is a leading monetizer of their patent portfolio — meaning, that they make a substantial part of their revenue selling to operating companies and NPEs alike,” said a LOT Network spokesperson in an email sent to IPWatchdog last week.

Fifth Circuit Finds Failure to Mitigate is Not Complete Defense to Copyright Claims – On Wednesday, January 15, the U.S. Court of Appeals for the Fifth Circuit issued a decision in Energy Intelligence Group, Inc. v. Kayne Anderson Capital Advisors, L.P. The Fifth Circuit’s decision addressed an issue of first impression in determining that Energy Intelligence Group’s failure to mitigate damages was not a complete defense to liability for statutory damages under the Copyright Act and the Digital Millennium Copyright Act (DMCA).

SCOTUS Looks Poised to Overturn Circuit Courts After Hearing Trademark Cases – This week, the U.S. Supreme Court heard oral arguments in two trademark infringement cases and the line of questioning taken by the nation’s highest court made it seem likely that SCOTUS will overturn the Circuit Court holdings in both cases. On Monday, January 13, the Supreme Court heard arguments in Lucky Brand Dungarees v. Marcel Fashion Group, an appeal from the Second Circuit’s finding that federal preclusion principles can prevent a defendant from raising a defense in a second suit involving new claims but based on the same cause of action as a first suit where the defense could have been but wasn’t litigated. On Tuesday, January 14, SCOTUS heard oral arguments in Romag Fasteners v. Fossil, an appeal from the Federal Circuit’s decision that a finding of willfulness is a prerequisite to a court award of infringer’s profits to a party proving trademark infringement.

IBM Takes Top Spot Among U.S. Patent Owners for 27th Straight Year – On Tuesday, January 14, patent services firm IFI CLAIMS published data showing that information technology giant IBM earned 9,262 U.S. patent grants in 2019, making this the 27th straight year that IBM has placed first among all U.S. patent recipients. The data also shows that the U.S. Patent and Trademark Office issued a record 333,530 patents last year, a 15% increase from the number of patents granted in 2018.

CNIPA Announces 2019 Statistics for Chinese Patent Filings and Grants – On Tuesday, January 14, the Chinese National Intellectual Property Administration (CNIPA) held a press conference in which it announced that the CNIPA received 1.401 million invention patent applications in 2019 and that there are currently 1.862 million invention patents in force within the country.

CAFC Denies BioDelivery Sciences Rehearing Petition Over Newman Dissent – On Monday, January 13, the U.S. Court of Appeals for the Federal Circuit issued a decision denying a petition for rehearing en banc in BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc. Circuit Judge Pauline Newman penned a dissent to the rehearing denial where she argued that the PTAB decision to disobey a remand order that asked the agency to comply with SAS Institute v. Iancu required review to protect the balance of agency and judicial authority.

CAFC Majority Affirms Patent Invalidation Over Newman Dissent – On Friday, January 10, the Federal Circuit issued a precedential opinion in Genentech, Inc. v. Hospira, Inc. in which the appellate court majority affirmed a Patent Trial and Appeal Board (PTAB) decision to invalidate patent claims owned by Genentech and covering methods of purifying antibodies and other proteins. Circuit Judge Pauline Newman wrote a dissent arguing that no prior art showed the claimed method nor suggests that the method might be successful.

Geophysical Services Files SCOTUS Petition on Implied Copyright License Defense – On Friday, January 10, Geophysical Services, Inc. filed a petition for writ with the Supreme Court asking the nation’s highest court to determine aspects of the implied license defense in the copyright infringement context, including whether a showing of an implied license requires proof of a meeting of the minds and if the burden of proof regarding whether an implied license covered an alleged infringing use should shift from the defendant to the plaintiff.

Barks

USPTO Updates Patent Litigation Database – On Thursday, January 16, the USPTO announced that it has updated its Patent Litigation Dataset, which now includes information on patents asserted in district court proceedings between 2003 and 2016. This brings the agency’s litigation database to more than 81,000 district court cases filed as far back as 1963.

Judge Stanton Grants Motion to Compel Ed Sheeran Concert Revenue Discovery – On Wednesday, January 15, U.S. District Judge Louis Stanton of the Southern District of New York issued an order granting a motion to compel the production of financial information including concert revenue earned by singer/songwriter Ed Sheeran in the copyright case alleging that Sheeran’s “Thinking Out Loud” infringes upon the Marvin Gaye hit “Let’s Get It On.”

PTAB Institutes Validity Trial on Patent Claims Asserted Against YouTube – On Wednesday, January 15, the PTAB decided to institute an inter partes review (IPR) proceeding petitioned by Google against patent claims owned by Virentem Ventures LLC that cover methods of rendering time data related to video files. The patent claims were previously asserted by Virentem against Google subsidiary YouTube in a patent infringement case filed in the District of Delaware.

Einthusan Wins Motion to Dismiss Copyright Case for Forum Non Conveniens – On Wednesday, January 15, U.S. District Judge Edward Chen of the Northern District of California granted a motion to dismiss a copyright infringement case after determining that Canada was a more appropriate forum for copyright infringement claims brought by Tamil-language film distributors against Canadian-based operators of a South Asian streaming content website.

CompuMark Report Shows 85% of Brands Were Infringed During 2019 – On Tuesday, January 14, trademark research firm CompuMark published a trademark ecosystem report including statistics showing that 85% of global brands experienced some form of infringement during 2019, up from 81% of brands in 2018 and 74% of brands in 2017.

Amazon, Book Publishers Settle Copyright Dispute Over Audible Text Feature – On Tuesday, January 14, the Southern District of New York dismissed a copyright case brought by members of the Association of American Publishers after the plaintiffs settled their copyright infringement claims against Amazon regarding a text captioning feature made available through Amazon’s Audible audiobook platform.

Trade Secret Case Against Illumina Fails on Statute of Limitations – On Tuesday, January 14, the Southern District of New York dismissed a trade secret case brought by genetics researchers from Cornell University against genetic analysis firm Illumina after the researchers failed to bring a suit based on their claims within three years of the time by which they were on notice of the trade secret misappropriation.

USAA Wins $102M Against Wells Fargo in Latest Patent Infringement Verdict – On Friday, January 10, a jury verdict entered in the Eastern District of Texas awarded $102.8 million in damages to financial services firm USAA after finding that Wells Fargo wilfully infringed upon remote check deposit patent claims asserted by USAA. Last November, a jury in a separate trial awarded $200 million to USAA for other patent infringements committed by Wells Fargo.

This Week on Wall Street

Alphabet Hits $1 Trillion Market Cap – On Thursday, January 16, the market capitalization of tech conglomerate Alphabet Inc. surpassed $1 trillion, making it the fourth U.S. company to achieve that level of valuation after the same milestone was reached by fellow tech giants Apple, Microsoft and Amazon.

Microsoft Announces Goal to Eliminate Carbon Footprint By 2050 – On Thursday, January 16, computing tech giant Microsoft announced plans to become carbon-negative by the year 2030 and then, by 2050, to remove all carbon emitted by the company since its founding in 1975. The initiative, which targets the company’s entire supply and value chain, will be supported through the creation of a climate innovation fund which will devote $1 billion to the acceleration of carbon capture and removal technologies.

Quarterly Earnings – The following firms identified among the IPO’s it has updated its Patent Litigation Dataset are announcing quarterly earnings next week (2018 rank in parentheses):

• Monday: Samsung SDI Co., Ltd. (106th)
• Tuesday: Capital One Financial Corp. (194th); Halliburton Co. (44th); IBM (1st)
• Wednesday: ASML Holding N.V. (144th); Citrix Systems, Inc. (t-287th); Hyundai Motor Co. (22nd); Johnson & Johnson (t-34th); Texas Instruments, Inc. (46th)
• Thursday: Colgate-Palmolive Co. (t-262nd); Comcast Corp. (223rd); Intel Corp. (5th); Procter & Gamble Co. (82nd); Skyworks Solutions, Inc. (t-156th); STMicroelectronics, Inc. (54th)
• Friday: Telefonaktiebolaget LM Ericsson (23rd)