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This week in Other Barks & Bites: The UK High Court delivers a key ruling on standard essential patents (SEPs) in a FRAND battle between InterDigital and Lenovo; the U.S. Patent and Trademark Office updates Patent Term Extension listings to add Food and Drug Administration and Department of Agriculture information following collaboration initiatives; the U.S. Copyright Office (USCO) launches a new plan to tackle AI’s impact on copyright law and policy; a Miami nightclub attempts to block LIV Golf’s trademark applications; and the U.S. Court of Appeals for the Federal Circuit (CAFC) rules in favor of Apple in its ongoing dispute with the USPTO.
UK Judge Delivers Mixed Ruling in Lenovo-InterDigital SEP Licensing Dispute
On Thursday, March 16, a United Kingdom High Court judge ruled that the Chinese multinational Lenovo must pay InterDigital $140 million in patent licensing fees for cellular technology. Lenovo argued that InterDigital was not offering fair licensing rates, while InterDigital argued Lenovo was not a willing licensee. The UK ruling said neither party’s offer was FRAND (Fair, Reasonable, and Non-discriminatory) and provided a new FRAND analysis that in part said Lenovo must pay in full for past sales beyond the statute of limitations. However, in a statement, Lenovo said it is encouraged by the ruling’s finding that Lenovo was a willing licensee. “We see this as a major win for the technology industry and the customers we serve, as it underscores both the importance of fair, reasonable, and non-discriminatory terms for patent licensing and the requirement of transparency by patent holders engaged in licensing practices.”
InterDigital was also pleased with the judgment in part: “We welcome the Court’s decision as the first major SEP FRAND judgment that recognizes that a licensee should pay in full for the past infringement of standard essential patents and we agree with the Court that this could be a powerful way of guarding against patent holdout in the future,” commented Josh Schmidt, Chief Legal Officer, InterDigital. “However, we plan to appeal, as we believe that certain aspects of the decision do not accurately reflect our licensing program.”
USPTO to Add FDA Info to Patent Term Extension Page
The U.S. Patent and Trademark Office (USPTO) announced Thursday that it will be adding the U.S. Food and Drug Administration or U.S. Department of Agriculture designated numbers for applicable patents listed on the public webpage that provides information on patent term extension applications. The change comes in response to feedback received during the joint USPTO-FDA public listening session held on January 19, 2023, according to the announcement. The Office launched the webpage listing information on PTE applications and extensions in September 2022. The listings originally included the patent application number, patent number, and trade name identified in the PTE application and a link to the electronically filed PTE papers. Now, the spreadsheet will also indicate the application numbers for Biologics License Application (BLA), and New Drug Applications (NDA), for example, for all PTE applications filed after January 19, 2023. More information is available in the Manual of Patent Examining Procedure, section 2750 et seq.
U.S. Copyright Office Launches AI Initiative
On Thursday, March 16, the USCO announced the launch of a new artificial intelligence imitative that will examine new challenges presented by AI to copyright law and policy. The office also announced a new registration guideline that requires copyright applicants to disclose the use of AI-generated content when submitting for registration. The new initiative and guidelines come as AI use has increased rapidly in recent months, with several high-profile AI-related copyright cases making headlines. In the coming months, the USCO has scheduled public listening sessions with stakeholders from a range of creative, legal, and technological industries.
USPTO Provides Relief to IP Applicants and Patent Holders Affected by Earthquake in Turkey and Syria
On Thursday, March 16, the United States Patent and Trademark Office (USPTO) announced relief and special accommodations for patent and trademark applicants, patentees, reexamination parties, and registered trademark owners who have been impacted by the devasting earthquakes in Turkey and Syria on February 6. This will allow affected stakeholders to waive petition fees and patent applicants to restart a time period for reply, among other relief options. The USPTO declared the effect of the earthquake as an “extraordinary situation” allowing the office to implement relief measures. A full breakdown of the relief measures can be found here.
District Court Voids Majority of Gamevice’s Patent Claims in Dispute with Nintendo
On Tuesday, March 14, a district court judge ruled that all but one of Gamevice’s asserted patent claims are invalid as they were anticipated by the Nintendo Switch. The claims involved three patents from Gamevice, a California-based gaming product manufacturer. The only claim that the district judge denied Nintendo a summary judgment was a claim in U.S. Patent No. 9,808,713 related to the structural bridge in a controller. On the other claims, Nintendo was able to successfully argue that Gamevice did not have prior knowledge of the technology prior to its Switch device being sold on the market.
CAFC Rules that Apple Can Challenge Improper Process for USPTO Discretionary Denial Practice
On Monday, March 13, the CAFC issued a precedential ruling that said Apple can pursue its claim against the U.S. Patent and Trademark Office (USPTO). Apple, Cisco, Google, and Intel filed an appeal with the CAFC arguing that the USPTO Director’s instructions to the Patent Trial and Appeal Board (PTAB) regarding discretionary denial practice under Apple Inc. v. Fintiv, Inc. were made without proper notice-and-comment rulemaking. The CAFC affirmed a district court’s ruling on two challenges brought by Apple, Cisco, Intel and Edwards Lifesciences, but it said that Apple “has standing to press” a challenge that the discretionary denial instructions were improperly issued and reversed on that ground. Read a detailed account of the case here.
Bill to Televise Supreme Court Proceeding Introduced in Senate Judiciary Committee
On Thursday, March 16, U.S. Senate Majority Whip Dick Durbin (D-IL), Chair of the Senate Judiciary Committee, and U.S. Senator Chuck Grassley (R-IA) re-introduced bipartisan legislation that would require the Supreme Court to televise all open Court sessions, unless a majority of justices determine that televising a case would violate due process. The re-introduction of the bill falls during National Sunshine Week, which celebrates open and transparent governance. “Allowing cameras access to Supreme Court would be a victory for transparency and would help the American people grow in confidence and understanding of the judiciary,” said Grassley.
USPTO Updates Forms for Transition from Paper Grants to eGrants
On Thursday, March 16, the USPTO modified the Issue Fee Transmittal form (PTOL-85B) to reflect the switch to the issuance of electronic patent grants starting April 18. You can no longer make an advance order of a patent copy since it can be directly printed from the Patent Center when issued. The USPTO said the switch to eGrants will allow for grants to be issued quicker. The newly modified form can be found here.
USCO Appoints Iyauta Green as Deputy Director of Operations
On Wednesday, March 15, the USCO announced the appointment of Iyauta Green as Deputy Director of Operations. In the role, Green will assist the USCO with strategic planning, financial activities, and business processes. Green worked previously at the U.S. Department of Housing and Urban Development (HUD) as an associate deputy assistant secretary.
Miami Nightclub Tries to Block Saudi’s LIV Golf Trademarks
On Saturday, March 11, the LIV nightclub in Miami filed a notice of opposition to trademark applications made by Saudi Arabia’s LIV Golf. The notice was filed before the Trademark Trial and Appeal Board (TTAB). The nightclub said in its notice that LIV golf’s proposed trademarks “are highly similar in sight, sound, meaning, and overall commercial impression.” Saudi-backed LIV Golf is attempting to compete with the PGA Tour.
This Week on Wall Street
DOJ Arrests Chinese Billionaire and Bannon Ally Guo Wengui in $1 Billion Fraud Case
On Wednesday, March 15, the Department of Justice announced the arrest of Guo Wengui, a Chinese billionaire in self-imposed exile, for defrauding his online followers out of over $1 billion. Wengui went by a variety of names and aliases including Ho Wan Kwok and Miles Guo. The Chinese tycoon was a fervent critic of the Chinese Communist Party and a close ally of Trump backers including Steve Bannon and Rudy Giuliani. When Bannon was arrested for fraud in 2020, he was on Wengui’s yacht in Long Island. Wengui fled China in 2014 during a crackdown on corruption in the country.
Treasury, Federal Reserve, and FDIC Fully Protect Silicon Valley Bank Depositors
On Sunday, March 12, the Treasury, Federal Reserve, and FDIC issued a joint statement announcing that depositors of the failed Silicon Valley Bank (SVB) would receive their full deposit, not just the $250,000 FDIC limit. SVB suffered a bank run after depositors, mostly startup founders, began trying to pull their money from the bank based on shaky financial news swirling around the bank. Likewise, the statement assured Signature Bank depositors that they would receive full protection after the New York-based bank collapsed. In remarks made Monday, President Biden tried to assuage the public and said, “small businesses across the country that had deposit accounts at these banks can breathe easier knowing they’ll be able to pay their workers and pay their bills.”
Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2022 are announcing quarterly earnings next week (2022 rank in parentheses):
- Monday: None
- Tuesday: Nike (111)
- Wednesday: None
- Thursday: Accenture (177)
- Friday: None
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