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Oracle, Google, USPTO, Happy Birthday, Microsoft, Lenovo, Rovi, Dish Network, FTC – the week in IP



Michael Loney


Oracle asking for Google’s copyright win to be thrown out, the USPTO being sued for declaring federal holidays, details of lawyers’ fees in the Happy Birthday case, Microsoft and Lenovo agreeing a patent cross-licensing deal, Rovi renewing a licence with Dish, and the FTC’s crackdown on social media influencers were in the intellectual property headlines

Also on the blog in the past week were:

Managing IP out and about over the coming months  

We’ve also posted the following articles in the past week (log in via subscription or free trial):

Seven scenarios for EU trade marks post-Brexit

2016 GII identifies emerging economies and need for cross-border collaboration

PTAB 4 Years In: PGRs ready for primetime

PTAB 4 Years In: A "new norm" for petition filing

Halo – is it clarity you’re looking for?

Oracle v Google – the re-rematch?

Oracle last week argued in a hearing in the Northern District of California that its loss in its high-profile copyright case with Google should be thrown out, reports Ars Technica. Lawyers for the company said Google should have informed it of the launch of Google Play on Chrome OS in the middle of the trial, which they claimed increased the amount of harm to Oracle.

Oracle’s lawyer Annette Hurst said the verdict is "tainted" by the jury’s being denied this evidence.

Google’s attorney Christa Anderson retorted that Oracle knew Google was trying to port Android apps to laptops.

Judge Alsup asked why Oracle could not file a new lawsuit on this issue. Hurst responded it could but the previous trail was now tainted.

Google new logo"Google's whole pitch was 'We didn’t harm Java SE because we weren’t on desktops and laptops,'" Ars Technica quoted her as saying. "This jury was entitled to consider the context – yes, now they are on desktops and laptops. It's outrageous. They're lying to the jury! The court can't countenance this!"

The FOSS Patents blog reported Judge Alsup issued an order the day after the hearing asking Google’s counsel to "submit a sworn statement explaining why the discovery responses referenced in Court yesterday were not updated, including the full extent to which counsel knew Google's intention to launch a full version of Marshmallow, including the Google Play Store, for Chrome OS."

USPTO sued over holiday declaration

The USPTO has been sued over its declaration of a federal holiday on December 22, 23 and 24 last year. The office was reacting to a power outage that shut down its electronic systems.

Elm 3DS Innovations sued USPTO director Michelle Lee (right) in the Eastern District of Virginia, saying that nine inter partes review petitions challenging its patents were accepted after the statutory period. It argues she had no authority to declare a federal holiday. The statutory deadline for filing the petitions was December 24 2015 but the PTAB accepted them on December 28.

The USPTO explained the decision to declare the days as holidays at the time: "In light of this emergency situation, the USPTO will consider each day from Tuesday, December 22 2015, through Thursday, December 24 2015, to be a 'Federal holiday within the District of Columbia’ under 35 USC § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196."

Gene Quinn on the IP Watchdog blog noted that the USPTO director does not have the authority to declare a federal holiday.

"In retrospect, the proper thing for Director Lee to have done would have been to declare an emergency under the powers vested in her by 35 USC 21(a)," wrote Quinn. "Under §21(a) the Director of the USPTO can declare that a paper was filed on a day that it would have been filed but for a disruption in mail service or emergency."

Quinn concluded: "Why Director Lee relied upon some unspecified power she clearly does not possess instead of a power she clearly does possess is a complete mystery. The law is enormously clear. Unless the Eastern District and ultimately the Federal Circuit decide to ignore the law, the outcome of this case is easy to predict. Director Lee will be found to have lacked the authority to declare a federal holiday and the IPR petitions filed on December 28, 2015 will be time barred."

Others disagree. Oblon’s Scott McKeown on the Patents Post-Grant blog, said "3DS has an uphill battle".

On the Pharma Patent blog, Foley & Lardner’s Courtenay Brinckerhoff noted: "Interestingly, when the USPTO experienced problems with the electronic filing system for filing petitions for IPR, CBM and PGR proceedings in December of 2014, it took a different approach."

She concluded: "The court’s decision on this issue could have far-reaching consequences. In addition to potentially invalidating other IPR, CBM and PGR proceedings that relied on the "holidays" for timeliness, a finding that the declaration of holidays was ultra vires  could impact the validity of patent applications that relied on the holidays to satisfy statutory deadlines, such as to avoid statutory bars or satisfy filing deadlines."

A $4.6m birthday present

The lawyers that won the case that brought Happy Birthday into the public domain will receive $4.62 million in fees, reports Ars Technica. This amounts to one third of the total $14 million settlement fund.

According to a fee order, Judge George King in the Central District of California deemed a $3.85 million payment appropriate with a multiplier added.

"Given the unusually positive results achieved by the settlement, the highly complex nature of the action, the risk class counsel faced by taking this case on a contingency-fee basis, and the impressive skill and effort of counsel, we conclude that a 1.2 multiplier is warranted," wrote King.

Five lawyers billed the bulk of the hours. Wolf Haldenstein Adler Freeman & Herz’s Randall Newman billed the most work, a total of 2,193 hours.

Microsoft and Lenovo deepen relationship

Microsoft and Lenovo have announced "a deepening of their strategic relationship".

Lenovo will load Microsoft’s productivity apps – including Microsoft Office, OneDrive and Skype – on select Lenovo devices that use the Android operating system. This expanded collaboration between Microsoft and Lenovo also includes a patent cross-licensing agreement that covers Lenovo and Motorola devices.

Since Microsoft launched its IP licensing program in December 2003, it has entered into more than 1,200 licensing agreements.

Rovi renews DISH licence

Rovi Corporation has agreed a 10-year patent renewal licence agreement with DISH Network.

Dish NetworkTom Carson, president and CEO of Rovi, said: "With this most recent renewal, Rovi now has nine of the top 10 US pay-TV operators under licence, with significant recent momentum, as seven of those agreements have been signed over the last seven quarters."

The patent license renewal is subject to certain contingencies relating to the closing of Rovi’s acquisition of TiVo, expected to become effective next month.

The FTC crackdown on influencers

Bloomberg ran an interesting analysis of the FTC cracking down on endorsements on social media. The article revealed that more than 300,000 sponsored posts on Instagram in July used hashtags such as #ad, #sponsored and #sp, an increase from about 120,000 a year earlier.

The article noted Warner Bros’ settlement with the FTC last month over charges that it deceived customers by paying influencers to promote the video game Middle-Earth: Shadow of Mordor with positive reviews, without disclosing that they were paid and told how to promote it.

FTC Lord & TaylorThis followed the FTC announcing  a settlement with Lord & Taylor in March, for paying 50 fashion influencers to create posts about one of its dresses on Instagram. The posts did not disclose that the influencers were paid.  

"We hope by bringing these cases that we not only stop the marketer and influencer who didn’t have adequate disclosures previously, but also get the message out that other companies should have clear and conspicuous disclosures," Michael Ostheimer, a deputy in the FTC’s ad practices division, told Bloomberg.

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