Other Barks & Bites for Friday, June 12: USPTO Provides Relief for Restoring Priority/ Benefit Rights; China Reducing Patent Pendency; CJEU Says Copyright Can Cover Functional Shapes; Tillis Questions Internet Archive on Copyright Concerns
June 12, 2020
Bites (noun): more meaty news to sink your teeth into.
Barks (noun): peripheral noise worth your attention.
This week in Other Barks & Bites: USPTO announces relief under the CARES Act for restoring priority/ benefit rights; the CJEU has ruled that “functional shapes” are eligible for copyright protection if they are original works; China’s IP agency releases its annual budget including details on reducing patent pendency times to nearly seven months shorter than the USPTO; the Second Circuit finds a commercial activity exception to the Welsh government’s sovereign immunity defense against copyright infringement; Google creates takedown form for search results leading to counterfeits; the USPTO and Facebook tell the Federal Circuit that the Supreme Court’s Thryv decision requires vacatur of Windy City Innovations; Johnson & Johnson seeks a 70 percent success rate in COVID-19 vaccine trials; Sen. Thom Tillis voices increased concerns about copyright infringement by the Internet Archive; USPTO Director Iancu asks Congress for additional fee spending authority to maintain continuity during the pandemic; and Sony is successful in its Section 101 invalidation of patent claims covering an in-game reward system for slot machine games.
USPTO Extends Timeline to Restore Priority/ Benefit Rights – the USPTO announced today that pursuant to the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the Office will be extending the two-month time-period for restoring the right of priority to or benefit of a foreign or provisional application for any nonprovisional application due to be filed on or after March 27, 2020, but on or before July 30, 2020. Comments and inquiries on the notice should be sent to Covid19PatentsRelief@uspto.gov.
China to Reduce Patent Pendency, Increase Copyright Protection for Photographs – On Thursday, June 11, the China National Intellectual Property Administration (CNIPA) released its annual budget, which indicated that China’s IP agency has set a goal of achieving a 16.5-month period of pendency from patent application filing to issued patent grant by 2022, a shorter pendency period than the 23.4-month average at the U.S. Patent and Trademark Office. That same day, China’s National Copyright Administration announced that it would work to establish long-term copyright protections for photographic works.
CJEU Says Copyright Protections Can Be Extended to Functional Shapes – On Thursday, June 11, the Court of Justice of the European Union (CJEU) issued a ruling in Brompton Bicycle v. Chedech/Get2Get in which the EU’s highest court ruled that copyright protections under European law can be extended to a product whose shape is necessary to achieve a technical result where that product shape also reflects creative choices reflecting the author’s personality.
Director Iancu Asks Congress for Fee Spending Authority During COVID-19 – On Wednesday, June 10, USPTO Director Andrei Iancu sent a letter addressed to the leaders of the judiciary and IP committees in both houses of Congress requesting that the federal legislature grant additional fee spending authority to the USPTO which would allow the agency to spend funds collected through user fees between 1990 and 2011 to ensure continuity in USPTO operations during the COVID-19 pandemic.
Senator Tillis Questions Internet Archive on Additional Copyright Concerns – On Wednesday, June 10, Senator Thom Tillis (R-NC), Chair of the Senate IP Subcommittee, sent a letter addressed to Brewster Kahle, founder of the Internet Archive, raising concerns about potential copyright infringements posed by the organization’s plans to digitize 500,000 sound recordings for free use. The same day, the Internet Archive announced that it would be closing its National Emergency Library which is at the center of a recent copyright lawsuit filed by major publishing houses.
USPTO, Facebook Tells CAFC That Thryv Requires Vacatur of Windy City – On Wednesday, June 10, the USPTO and Facebook both submitted briefs to the U.S. Court of Appeals for the Federal Circuit (CAFC) in which both entities argue that the U.S. Supreme Court’s recent decision in Thryv v. Click-to-Call Technologies compels the CAFC to vacate the panel decision entered this March in Facebook v. Windy City Innovations. Both entities argue that Thryv’s ruling that decisions to institute trials at the Patent Trial and Appeal Board (PTAB) are not reviewable conflicts with the CAFC’s ruling that the PTAB erred in allowing Facebook to join multiple inter partes review (IPR) proceedings it filed to challenge Windy City’s patent claims.
Second Circuit Affirms Dismissal of Plagiarism Claims for Lack of Copyright Registration – On Tuesday, June 9, the U.S. Court of Appeals for the Second Circuit issued a summary order in Biswas v. Rouen which affirmed a ruling by the Southern District of New York dismissing copyright claims filed by a Columbia University student against a graduate student and professors who allegedly plagiarized a paper. The case was dismissed by the lower court in part because the academic paper at issue was never registered with the U.S. Copyright Office.
CAFC Finds District Court Abused Discretion in Awarding Attorney’s Fees – On Monday, June 8, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Munchkin v. Luv N’ Care in which the appellate court found that the Central District of California abused its discretion in determining that a dismissed patent infringement suit was an exceptional case under 35 U.S.C. § 285 after determining that the issues supporting the exceptional case determination were never fully adjudicated by the court on the merits.
Second Circuit Affirms Exception to Sovereign Immunity in Copyright Appeal – On Monday, June 8, the Second Circuit issued a decision in Pablo Star v. Welsh Government in which the appellate court affirmed the Southern District of New York’s decision to dismiss a copyright suit filed against the country of Wales, finding that the Welsh government’s use of copyrighted images in tourism advertising triggered the commercial activity exception to sovereign immunity under the Foreign Sovereign Immunities Act.
Google Creates Takedown Request Form for Counterfeit Search Results – On Thursday, June 11, Search Engine Land reported that Internet giant Google has created a takedown notice system, similar to the one established by the Digital Millennium Copyright Act (DMCA), which will allow users to request the removal of search results including counterfeit products, although sources at Google indicate that takedowns will not be available for other forms of trademark infringement.
Texas A&M Is Latest University to Offer Free Licenses to COVID-19 Technologies – On Thursday, June 11, news reports indicated that Texas A&M University is the latest of more than 80 U.S. research universities to offer free licenses to technologies that are used in response to the COVID-19 pandemic under licensing guidelines established by the Association of University Technology Managers (AUTM).
Google Files Countersuit Against Sonos for Patent Infringement – On Thursday, June 11, Google filed a complaint in the Northern District of California alleging claims of patent infringement involving software application and radio services offered by Sonos, which filed its own lawsuit against Google earlier this year after a partnership between the two companies to develop wireless speaker technologies.
Southern District of New York Awards Spanish Broadcasting System Nearly $850,000 in Copyright Suit – the U.S. District Court for the Southern District of New York granted Spanish Broadcasting System’s motion for attorneys’ fees, costs, and expenses, against Latin American Music Company, Inc. in a copyright infringement case that could have broader impact on “copyright trolls” in the media and entertainment industry, according to the winning firm, Pryor Cashman.
Judge Alsup Finds Improved Slot Machine Claims are Invalid Abstract Idea – On Wednesday, June 10, U.S. District Judge William Alsup of the Northern District of California granted a motion for summary judgment filed by Sony, ruling that patent claims covering a system of providing in-game rewards based on slot machine play are invalid under 35 U.S.C. § 101 for being directed to an abstract idea.
Hurricane Alleges Cease and Desist Letters are Unlawful Extension of Copyright – On Wednesday, June 10, upstream service provider Hurricane Electric filed complaints in Nevada and California federal district courts for declaratory judgment against a series of film copyright owners, alleging that letters demanding that Hurricane shut down Internet service providers (ISPs) for copyright infringement by those ISPs end users constitute “an improper and unlawful overextension of Defendants’ alleged copyright rights.”
Twitch Will Increase Copyright Takedowns for Music Used in Live Streams – On Wednesday, June 10, posts on the official Twitter account for video game streaming company Twitch indicated that it would be partnering with Audible to increase scanning of music included in user-created video clips and automatically taking down clips that use copyrighted music.
Judge Simpson Awards Attorney’s Fees After No Response to Trademark Complaint – On Tuesday, June 9, U.S. District Judge Charles R. Simpson III of the Western District of Kentucky issued a ruling awarding attorney’s fees to the Chimney Safety Institute of America after determining that the Chimney Safety Institute’s allegations that First Call Chimney Service willfully and blatantly infringed its certification mark must be accepted as true because First Call never filed a response in the case.
Judge Guidry Dismisses “METCHUP” Trademark Suit Filed Against Heinz – On Monday, June 8, U.S. District Judge Greg Gerard Guidry of the Eastern District of Louisiana granted a motion to dismiss a trademark case targeting Heinz’s sale of Mayochup condiment sauce after Judge Guidry ruled that plaintiff Dennis Perry failed to make a lawful non-de minimis use of his registered trademark for “METCHUP” after selling a total of 34 bottles of that condiment in the lobby of a Louisiana motel.
This Week on Wall Street
Johnson & Johnson Aiming for 70 Percent Success Rate for COVID-19 Vaccine – On Thursday, June 11, Johnson & Johnson’s Chief Scientific Officer Dr. Paul Stoffels made public remarks indicating that the medical and consumer good firm was seeking to achieve a successful outcome in 70 percent of the company’s clinical trials for an experimental vaccine designed to prevent COVID-19 infection.
Tecfidera Patent Challenge Prompts Biogen Stock Downgrade – On Tuesday, June 9, shares of Biogen stock were down about 2.3 percent after Sanford C. Bernstein analyst Ronny Gal downgraded the company to market perform due to concerns posed by generic competition that could increase once a judge in the Northern District of West Virginia rules on the validity of the patent covering Biogen’s multiple sclerosis treatment Tecfidera.
Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2019 are announcing quarterly earnings next week (2019 rank in parentheses):
Tuesday: Oracle Corp. (52nd)