News of Note in IP: April 15, 2016

Each week, Sheppard Mullin brings you News of Note in IP: The latest news in the IP-related fields of technology, privacy, fashion, advertising, music, and social media, curated by our IP team.  Here are some of the stories that we’ve been reading:

House Subcommittee Holds Hearing on ITC Patent Litigation

The House’s Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet convened for a hearing focused patent litigation at the United States International Trade Commission (ITC).  The purpose of the hearing as to review how patent disputes are handled by the ITC to determine if the current arrangement complements district court litigation and produces fair and beneficial results.  The hearing focused a great deal on Section 337 investigations conducted by the ITC to look into complaints alleging unfair practices in import trade.  A high percentage of Section 337 investigations and the leveraging power they create in parallel litigation.

Buying a Stairway to . . . Trial

The opening riff from Led Zepplin’s “Stairway to Heaven” is headed to trial in the Central District of California on May 10 after the district court denied Led Zepplin’s motion for summary judgment.  In the Order, U.S. District Judge Gary Klausner found enough similar protectable expression for the copyright-infringement case to proceed to the jury.

USPTO Launches New Online Payment Tools

On April 9, the USPTO rolled out two new online fee payment tools to the public: Financial Manager and the Patent Maintenance Fees Storefront.  New features include bulk file payments, secure user permissions, and streamlined transactions reports or itemized receipts.  Existing deposit accounts and EFTs must be transferred to the new system by June 30, 2016.

Proposed Patent Venue Reform Bill Proves Controversial

Last month, the Senate Bill titled “Venue Equity and Non-Uniformity Elimination Act of 2016” was introduced in an effort to limit forum shopping and strike a blow to so-called patent trolls.  The legislation has garnered support from the Computer & Communications Industry Association and the Consumer Technology Association, while the 21st Century Patent Reform coalition—which consists of 43 corporations across industries—has criticized the bill.

News of Note in IP: April 8, 2016

Each week, Sheppard Mullin brings you News of Note in IP: The latest news in the IP-related fields of technology, privacy, fashion, advertising, music, and social media, curated by our IP team.  Here are some of the stories that we’ve been reading:

Senate Unanimously Approves Trade Secrets Bill

The bipartisan “Defend Trade Secrets Act of 2015” is intended to give owners of trade secrets the same legal protections as other intellectual-property owners, establishing for the first time a uniform, national trade-secret-protection standard.  The DTSA largely parallels the Uniform Trade Secrets Act, which has been passed in some form in nearly all states.

Copyright Remix—Via the Department of Commerce

The U.S. Department of Commerce recently issued recommendations for amendments to U.S. Copyright law. The recommendations call for providing courts with better guidance and greater flexibility in awarding copyright damages and address song remixes.

USPTO Finalizes New AIA Rules

The amendments affect inter partes review, post-grant review, and covered-business-method proceedings before the Patent Trial and Appeal Board.  Major revisions include confirmation that PTAB proceedings will continue to use the “broadest reasonable interpretation” standard for claim construction, permitting declarant testimony in preliminary responses, Rule-11 type certifications, and clarification on motions to amend.  The new rules go into effect May 1.

The Cold War—of Vodka

The 12-year battle over the trademark rights to Stolichnaya (“Stoli”) vodka post Soviet-Union collapse may be heading for the U.S. Supreme Court.  A request for a stay of the litigation pending a planned petition for a writ was filed in response to a Second Circuit ruling that a Russian state-owned company had standing to sue over the brand in U.S. court.

Google and Oracle Agree to Forego Research of Juror’s Social Media

The trial court determined in its discretion it could impose a total ban on social-media and internet searches, but gave Google and Oracle the choice between agreeing to such a ban or to disclose the details of the scope of their proposed research.  The parties agreed to rely on traditional voir dire to vet potential jurors.

Patent Trial & Appeal Board Institutes 17 Inter Partes Reviews for TCL Communication Technology Holdings, LTD.

In Fiscal Year 2015, the Patent Trial and Appeal Board (“PTAB”) instituted inter partes reviews (“IPR”) on approximately 68% of petitions filed.  Overcoming these odds, the PTAB recently instituted 17 out of 17 IPRs filed by Sheppard Mullin on behalf of TCL Communication Technology Holdings, LTD.  Not only was this a 100% institution rate, but also the institutions resulted in the Eastern District of Texas staying a patent infringement case less than three weeks before trial. Continue Reading

T.T.A.B. Emphasizes the Fame of the Movie ‘Jaws’ in Its Refusal to Register a Cooking Show’s Mark

On March 16, 2016, the TTAB affirmed the refusals of an applicant’s mark, JAWS DEVOUR YOUR HUNGER, for online streaming cooking shows, holding that it is confusingly similar to the registered mark from the movie JAWS. Though the Board will rarely consider the fame of a mark in its du Pont analysis, the fame of the JAWS mark played a predominant role in the decision here. In re Mr. Recipe, LLC, Serial Nos. 86040643 and 86040656 [precedential]. Continue Reading

Federal Circuit Limits Estoppel Provision of the AIA

On March 23, 2016, the Federal Circuit addressed the scope of the estoppel provision for inter partes reviews (“IPRs”) contained in Section 315 of the American Invents Act.  The Court relied on the plain reading of “during” to find that § 315(e) actually prohibits future estoppel on grounds for which an IPR was sought, but rejected—even if merely based on redundancy Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 2015-1116 (“Slip Op.”). Continue Reading

Improper Use of Commercial Signs — Proposed Revisions to Article 5 of the PRC Anti-Unfair Competition Law

On February 25, 2016, The State Counsel Legislative Affairs Office (“SCLAO”) released a draft amendment (“Draft Amendment”) of the PRC Anti-Unfair Competition Law (“AUCL”) for comment by industry and other stakeholders.  Article 5 of the 1993 AUCL provides the basis for claims against Business Operators for unfair trade practices involving the misuse and misappropriation of trade dress, enterprise names, and other commercial signs.  The Draft Amendment of the AUCL contains some interesting and encouraging language, but could benefit from additional clarification and fine tuning.  Industry has until March 25, 2016 to submit comments on the Draft Amendment to the AUCL, and numerous industry organizations have been collecting comments for submission to SCLAO over the last few weeks.  Here are some highlights of proposed changes to Article 5, and some of the open issues that will hopefully be addressed before a final version of the revised AUCL sees the light of day. Continue Reading

Federal Circuit Reaffirms Its Longstanding Patent Exhaustion Precedents in Lexmark. v. Impression Products (Fed. Cir. Feb. 12, 2016) (en banc)

Under the doctrine of patent exhaustion, otherwise referred to as the “first sale doctrine,” the initial authorized sale of a patented item exhausts a patent owner’s rights to further control the sale, offer for sale, or use of the item. Bowman v. Monsanto Co., 133 S. Ct. 1761 (2013).  In other words, once a patented article is sold to a buyer in a sale authorized by the patentee, the buyer, or any subsequent purchaser of the article, is free to use or resell the article without restraint from patent law.  The doctrine of patent exhaustion thus seeks to prevent patent holders from receiving any overcompensation or potential double recovery, under the assumption that the patent owner has already received a just reward from the initial sale.  Procedurally, an accused infringer can raise patent exhaustion as an affirmative defense in a patent infringement action. Continue Reading

Federal Circuit Won’t Review USPTO’s Alice Guidelines

On March 10, 2016, the Federal Circuit ruled that it cannot review the U.S. Patent and Trademark Office’s patent-eligibility guidelines to examiners on how to apply the Supreme Court’s Alice ruling.  The appeals court held that could not consider the USPTO’s Interim Eligibility Guidance because it did not create any substantive or procedural right enforceable against the USPTO. In re Smith, Case No.  2015-1664, 2016 WL 909410, (Fed. Cir. Mar. 10, 2016) (precedential). Continue Reading

Second Circuit Tosses Out Time-Barred Copyright Claims Against Jay Z

Last month, the Second Circuit Court of Appeals affirmed a New York judge’s decision to dismiss federal copyright and state tort law claims alleged against the hip-hop icon, Jay Z, and his affiliated companies. Mahan v. ROC Nation, LLC, et al., No. 15-1238-cv, 2016 U.S. App. Lexis 3182 (2d. Cir. Feb. 24, 2016).  The Second Circuit also directed the district court to calculate an award of attorneys’ fees and costs to award to the defendants for litigating what the court called a “baseless” appeal, adding to the more than $253,000 the lower court already awarded to the defendants. Continue Reading

Recent Developments in Recordal Procedures for Trademark Licenses in China

On August 26, 2015, the Trademark Office of The State Administration For Industry & Commerce of the People’s Republic of China (“TMO”) issued revised guidelines entitled Applications for Recordal of Licenses of Registered Trademarks, Recordal of Licensor/Licensee Name Change, Recordal of Early Termination of Trademark Licenses and Recordal of Withdrawal of Trademark Licenses (“2015 Guidelines”). The 2015 Guidelines are a slightly revised version of guidelines issued in 2014 that were intended to bring the license recordal regime in line with the 2014 Trademark Law and its Implementing Regulations.  The TMO has not indicated whether the 1997 Measures for the Filing of Recordals of Trademark License Contracts (“1997 Recordal Measures”) will remain in effect after the establishment of new recordal procedures and the issuance of the 2015 Guidelines, but it is clear that a number of provisions of those earlier measures have been rendered moot under the new regime.  Continue Reading