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Google, Unwired Planet, Burberry, JC Penney, post-Form 18 patent complaints, Led Zeppelin – the week in IP



Michael Loney


The Federal Circuit vacating an $85m award, Optis buying Unwired Planet for up to $40m, Burberry dropping its trade mark case against JC Penney, an analysis of patent complaint rulings after the elimination of Form 18, and the latest in the “Stairway to Heaven” copyright case were in the intellectual property headlines in the past week

Also on the blog this week:

Now online: IP Stars 2016 Copyright Rankings

ITC, trade secrets, PTAB, Form 18 elimination, design patents – the takeaways from our US Patent Forum

Sponsored post: Belmora LLC v Bayer Consumer Care AG et al

And in our news and analysis:

US patent litigation plummets in first quarter

USPTO proposes first TTAB changes for nine years

US trade secrets bill passed unanimously in Senate

MIP Africa Roadshow 2016 - live updates

Analysing the PTAB’s final rule changes

Why we love (and hate) design rights

China Supreme Court clarifies patent infringement proceeding

Golden age for foreign trade name protection

ITC patent reform bill introduced in House targeting trolls

Federal Circuit vacates $85m verdict

The Federal Circuit has vacated an $85 million Eastern District of Texas award to SimpleAir for Google infringing its patents through its Cloud Messenger services, reports Ars Technica.

Google new logoThe Federal Circuit in its opinion, written by Judge Wallach and joined by Judges Moore and Reyna, determined the district court erred in its constructions of "a data channel" and "whether said devices are online or offline from a data channel associated with each device", and concluded that no reasonable jury could find infringement under the correct constructions.

Google had asserted the claim term "a data channel" is indefinite under the Supreme Court’s Nautilus v Biosig Instruments decision in 2014, or alternatively, that Google did not infringe under the correct construction of "a data channel". Google also challenged the district court’s constructions of "transmission gateway" and "parsing said data with parsers," its application of the law of joint infringement, and the damages award.

SimpleAir had filed a second lawsuit against Google in 2014 seeking $100 million in damages, but the jury found the patents in that case were not infringed.

Optis buys Unwired Planet

Optis UP Holdings will acquire Unwired Planet LLC, including its patent and trade mark assets and select EU employees. The parent company Unwired Planet Inc has decided to evaluate its strategic alternatives and focus the company on reinventing itself.

Unwired Planet will receive $30 million in cash at the closing of the transactions and up to an additional $10 million in cash on the second anniversary of the closing of the transactions.

Unwired Planet expects the transaction to close in the second or third quarter. It has received the consents necessary to complete the transaction both from the holders of its senior secured notes and from Telefonaktiebolaget LM Ericsson.

The purchase agreement provides for termination by Unwired Planet following payment of a $2 million fee to Optis UP.

Boris Teksler, chief executive officer of Unwired Planet, said: "My team and I joined Unwired Planet 10 months ago, and in that time we have replaced a record of losses with several litigation victories. However, after assessing the company’s financial situation, we felt it prudent to develop a range of alternatives for our IP business."

Unwired Planet expects Teksler to step down as CEO, and other IP members of the Unwired Planet team are expected to depart from Unwired Planet in connection with the divestiture.

Unwired Planet is involved in a series of litigations in the UK over wireless patents. In March, the UK High Court ruled Samsung and Huawei infringed a standards-essential patent held by Unwired Planet. This was the third verdict so far, following two patents being invalidated in January and Samsung and Huawei being found to infringe another patent last November.


Burberry drops case against JC Penney

Burberry checkBurberry has dismissed its trade mark case against JC Penney, reports The Fashion Law. The UK fashion brand had sued JC Penney in the Southern District of New York, accusing it of selling products that infringed its iconic plaid pattern.

"While the terms of the parties’ settlement are confidential, we do know that all of the allegedly infringing goods have been removed from JC Penney’s website," said The Fashion Law. "From the outset, the retailer denied any liability, as it held that the Levy Group, one of its New York City-based apparel suppliers, which was also named as a party in the suit, was responsible for indemnifying JC Penney in case of any infringement actions."

JC Penney had issued a statement that it is "fully indemnified by the supplier, and therefore any damages awarded in the case will be fully covered by the supplier." It added that the suit will have "no financial impact" on it. 

 

Complaints in the post-Form 18 era

The Patently-O blog has run an analysis by Quinn Emanuel’s Leeron Morad and Andrew Bramhall reviewing the impact of the elimination of Form 18 on pleading direct infringement.

"Early indications from the few issued district court decisions interpreting the amended Rules confirm that the pleading standard for direct infringement claims may indeed have changed," they noted.

Morad and Bramhall looked at two decisions applying the amended rules that they said suggest plaintiffs were right to be concerned about a heightened requirement for pleading direct infringement.

In Raindance Techs v 10x Genomics, Judge Andrews of the District of Delaware granted 10x Genomics’ motion to dismiss claims of infringement of seven patents. The 35 page complaint would "almost certainly" have passed muster under Form 18, said the WilmerHale lawyers. The complaint also identified representative claims for each patent and the accused product. But Judge Andrews found the Raindance complaint lacking, saying the "essential factual allegations so not take up much space". The judge also suggested 10x Genomics had not spent enough time investigating the alleged infringing product and had not attempted to relate the factual assertions with any of the claims. Judge Andrews applied the post-December 1 2015 direct infringement standard to the amended complaint, despite the fact it was filed in April 2015, "in the interest of justice".

In InCom v The Walt Disney Co in the Central District of California, Judge Gutierrez denied Disney’s motion to dismiss despite applying the new standard. He found that InCom had done enough by specifically identifying the defendants’ products and "alleging that they perform the same unique function as plaintiff’s patented system". He did not require InCom to identify any exemplary asserted claims in its complaint.

They said these two cases suggest that "even under the heightened 'plausibility’ standard, we would not be surprised to see meaningful differences emerge in the ways different districts – and even individual judges within districts – apply that standard to direct infringement claims." 

Led Zeppelin trial to proceed

Judge Gary Klausner of the Central District of California has ordered a copyright trial over Led Zeppelin’s 1971 song "Stairway to Heaven" to proceed, reports Reuters.

The judge believes the song and 1967 instrumental "Taurus" by Spirit are similar enough that a jury should decide whether Robert Plant and Jimmy Page are liable for copyright infringement.

The lawsuit was bought by the trustees of Randy Wolfe, the late guitarist in Spirit and composer of Taurus. It is claimed the first two minutes of Stairway to Heaven was inspired by Taurus. The two bands toured together in 1968 and 1969.

The defendants claim the chord progressions are so common they do not deserve copyright protection.

Klausner wrote: "While it is true that a descending chromatic four-chord progression is a common convention that abounds in the music industry, the similarities here transcend this core structure. What remains is a subjective assessment of the 'concept and feel' of two works ... a task no more suitable for a judge than for a jury."

The judge dismissed claims against Led Zeppelin bassist John Paul Jones and Warner Music. He also said the trustee can only receive 50% of any damages, as stipulated in a 1967 contract Wolfe signed.

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@KellyIPllp Well done to all at the firm!

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@SmartBiggar Congratulations!

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@caseychisick @casselsbrock Congratulations to all of you!

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