Also on the blog in the past week were:
Managing IP out and about over the coming
We’ve also posted the following articles in the
past week (log in via subscription or free
Seven scenarios for EU trade marks post-Brexit
2016 GII identifies emerging economies and need for
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
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
Judge Alsup asked why Oracle could not file a new lawsuit on
this issue. Hurst responded it could but the previous trail was
"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
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
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."
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
Others disagree. Oblon’s Scott McKeown
on the Patents Post-Grant blog, said "3DS has an uphill
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
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
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
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
Rovi renews DISH licence
Rovi Corporation has
agreed a 10-year patent renewal licence agreement with DISH
Tom 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
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.
This followed the FTC
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
"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.