The IP headlines last week included Judge Lucy Koh being nominated for the Ninth Circuit, a House of Representatives hearing on WIPO, Dominion Harbor buying WiLAN patents, Marathon and Uniloc calling off their merger, the Copyright Royalty Board agreeing to a rehearing for SoundExchange, Booking.com not being allowed to register tis name as a trade mark, and Disney asking employees to pitch in to help in its copyright fight
Also on the blog this week:
Guest post: Tackling IP unknowns is fundamental to oil and gas tech expansion
In our news and analysis:
Digging deeper into 2015 US district court patent litigation figures
UPC scenario 2: a blockbuster drug patent with an SPC
Confusion reigns over patenting of computer programs
PTAB taking a harder line on CBM institution
Supreme Court considers enhanced damages rule in Halo/Stryker arguments
Analysing the Federal Circuit’s Nike opinion on amending claims in IPRs
Hot debate over patent jurisdiction
Judge Koh nominated to Ninth Circuit
US President Barack Obama has nominated Judge Lucy Haeran Koh to serve on the United States Court of Appeals for the Ninth Circuit.
“Judge Lucy Haeran Koh has distinguished herself as a first-rate jurist with unflagging integrity and evenhandedness," Obama said. "I am grateful for her service to the state of California and look forward to adding her considerable wisdom and experience to the Ninth Circuit Court."
Koh has been a US District Judge for the Northern District of California since 2010 and was previously a California Superior Court Judge for Santa Clara County from 2008 to 2010.
She has taken a prominent role presiding over Apple’s patent war with Samsung. Her confirmation may face long odds in the Republican-controlled Senate in a presidential election year.
WIPO under fire in House of Representatives
The US House of Representatives this week held a hearing into “Establishing Accountability at the World Intellectual Property Organization: Illicit Technology Transfers, Whistleblowing, and Reform”. The witnesses included: James Pooley, former deputy director for innovation and technology and former senior US official at WIPO; Miranda Brown, former strategic adviser to the director general at WIPO, and Matthew Parish, managing director of Gentium Law Group.
In his testimony, Pooley commented on WIPO Director General Francis Gurry: “Based on my experience I can report to you that the vast majority of the people at WIPO are competent, dedicated and deliver as required, many of them well beyond that. But this belies a profoundly serious problem with governance. The agency, in my opinion, is run by a single person who is not accountable for his behaviour. He is able to rule as he does only with the tacit cooperation of member countries who are supposed to act as WIPO’s board of directors. And he is ultimately protected by an anachronistic shield of diplomatic immunity.”
Dominion Harbor acquires WiLAN patents
Dominion Harbor Group will acquire a portfolio of patents from WiLAN. The initial portfolio consists of fewer than 100 patent families, and will be managed by Dominion Harbor Group's affiliate, the Monument Bank of Intellectual Property.
"In the past two quarters we have acquired two significant portfolios – Qimonda and Freescale – which together have increased the size of our entire patent portfolio by almost five times," said Jim Skippen, CEO of WiLAN. "In addition to monetising the key patents in those portfolios, we are actively looking to monetise those patents which we feel are non-core to our business strategy.”
Monument Bank of Intellectual Property invests in third-party patents in start-up companies to increase their value and attractiveness. Monument Bank and its partners such as WiLAN hope to share in that success.
"Sharing in the equity upside of a start-up's success is a great way for established IP owners like WiLAN to unlock much greater value from patent assets that may be non-essential to their business," said David Pridham, chairman and CEO of Dominion Harbor Group.
Marathon and Uniloc call off merger
In perhaps a more worrying sign of the state of the patent licensing market, Marathon Patent Group and Uniloc Luxembourg have terminated the merger they announced in August.
"Uniloc and Marathon share a common vision of data-driven success in patent licensing,” said Doug Croxall, Chairman and Chief Executive Officer of Marathon, in a statement. “While the timing might not have worked at this juncture, we will remain in contact with Uniloc and its executive team about future possibilities."
Neither Marathon nor Uniloc is entitled to a breakup or termination fee.
Copyright Royalty Board grants SoundExchange rehearing
The US Copyright Royalty Judges have posted the public version of their determination in the Web IV proceeding, reports the Copyright Alliance. The determination sets the royalty rates for webcasters streaming sound recordings from 2016 to 2020, the public redacted version of which can be viewed here.
The Board originally announced the rates in December. The per-performance rate for 2016 will increase to $0.0017 for ad-supported streaming, up 21% from $0.0014 under the previous "Pureplay Rate" for 2015. However, the rate decreased to $0.0022 for subscription streaming, down from $0.0025. The rates and terms announced by the three-judge panel took effect January 1, with the rate rising with inflation during the period.
In addition, the judges announced they have granted in part a motion from SoundExchange requesting a rehearing. SoundExchange – a non-profit performance rights organisation that collects and distributes royalties on the behalf of sound recording copyright owners – submitted the motion on December 31. In its order granting the rehearing, the judges noted they may only order a rehearing in “exceptional circumstances”. The Copyright Royalty Board said it would “issue a post-hearing determination in the near future”.
After the rates were announced in December, SoundExchange said in a statement: “It’s only fair that artists and record labels receive a market price when their music is used. We believe the rates set by the CRB do not reflect a market price for music and will erode the value of music in our economy. We will review the decision closely and consider all of our options.
“Additionally it is deeply disappointing to see that broadcasters are being given another unfair advantage. In their terrestrial business they do not pay a dime for the recordings they use and now this $17B industry will receive an additional huge subsidy on the music they use in webcasting.”
Booking dot no
Booking.com has not been allowed to register its name as a trade mark in standard character form, reports TTABlog. In an affirmation of a refusal to register the mark, the Trademark Trial and Appeal Board found the term to be generic for travel agency and hotel reservation services.
The Board affirmed genericness refusals in three related cases involving the term in design form. It also agreed with the USPTO’s additional refusal on the ground of mere descriptiveness, with the Board saying it is a “very highly descriptive term”.
Disney asks employees to help in copyright fight
Ars Technica reports that Walt Disney’s CEO Bob Iver has sent a letter to his employees asking them to contribute to the company’s political action committee, DisneyPAC.
According to the letter obtained by Ars, Iver said: “"With the support of the US Government we achieved a win in the Supreme Court against Aereo – an Internet service claiming the right to retransmit our broadcast signals without paying copyright or retransmission consent fees. In the coming year, we expect Congress and the Administration to be active on copyright regime issues, efforts to enact legislation to approve and implement the Trans-Pacific Partnership trade agreement, tax reform, and more proposals to weaken retransmission consent, to name a few."
The letter concluded by noting that employees could deduct a contribution to the PAC from their weekly pay check, if they so choose.