This week in IP: Samsung top PTAB petitioner, UPC faces more delay, Michael Jordan wins in China

Managing IP compiled and analysed data from the Docket Navigator database that showed the Patent Trial and Appeal Board saw more cases in 2020 than it did in 2019.

This increase was probably because of the introduction of the NHK-Fintiv rule, which said that PTAB judges can deny institutions on the basis that parallel proceedings in the district courts will finish first.

Another notable finding from the data was that Samsung was the top PTAB petitioner in 2020, overtaking Apple, which had filed the highest number of petitions in 2019 and 2018.

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·       AT&T chief launches US IP Alliance; wants ‘every citizen to join’

·       Counsel call for action over lingering bad-faith filers in China

·       Landmark US trademark act ‘bolsters plaintiffs and fights fraud’

·       UK practitioners call for ambitious post-Brexit IP vision

·       Podcast: BMS and Bird & Bird on doing major deals in a pandemic

·       Counsel: Europe not ‘losing ground’ in IoT race

·       EU GMO Directive ‘stunts’ CRISPR patents

·       Opinion: What open-source software can teach big pharma

The fabled unitary patent and concurrent Unified Patent Court look set to be delayed again, at least in the short term, following a request from Germany’s Federal Constitutional Court to pause the final ratification step. 

On Wednesday, January 13, the FCC asked Germany’s president Frank-Walter Steinmeier to refrain from signing the country’s ratification into law while it considers two new constitutional complaints challenging ratification that were filed with the court in December.

The court will now decide whether to throw out the complaints as inadmissible or unfounded in the short term, or consider one or both of the challenges. If the FCC opts for the latter option it could severely delay the UPC coming to fruition, or even put an end to the plans.

Sources have told Managing IP that the president’s agreement to delay signing the bill is not an indication of the case’s strength, but is a procedural matter. The FCC has not commented on the contents of the complaints.

Ingve Stjerna, the German attorney who filed the first constitutional complaint against the UPC in 2017 – and which the FCC partially allowed in 2020, has confirmed he submitted one of the latest cases.

The identity of the second complainant is unknown, but one organisation that has previously indicated it would challenge the UPC is the Foundation for a Free Information Infrastructure. In March last year, the FCC declared that the act approving the UPC Agreement had not been signed off by a required two-thirds majority in the Bundestag, Germany’s parliament. At the end of November last year, the Bundestag approved the act with the necessary qualified majority.

Former basketball star Michael Jordan has secured a partial victory against a Chinese sportswear company whose name when converted from Chinese characters is the same as the star’s surname.

The Shanghai Second Intermediate People’s Court ordered Qiao Dan Sports to stop using the Chinese characters for Qiao Dan in its corporate name and products, and told the company it must issue a public apology clarifying it has no ties to Jordan.

The court added that Qiao Dan must also stop using the name when it is combined with the number 23 – which Jordan wore – according to a report on January 8 by the People’s Daily newspaper.

But the court did not revoke the company’s right to use earlier trademarks for the phonetic English spelling ‘Qiao Dan’.

The court also ordered Qiao Dan to pay Jordan RMB 300,000 ($46,000) for “emotional damages” and RMB 49,000 for legal expenses.

Jordan has filed multiple lawsuits against the company dating back to 2012.

The ruling is consistent with a verdict from China’s Supreme People’s Court in April last year.

In that case, the court found a logo owned by Qiao Dan, the silhouette of a jumping basketball player, was similar to the well-known ‘Jumpman’ logo. The Nike-owned trademark, which is used on the Air Jordan brand of trainers, shows a silhouette of Jordan jumping to dunk a basketball.

Dehns, a European firm of patent and trademark attorneys, has acquired Norwegian intellectual property consultancy Leogriff.

Announced on Tuesday, January 12, the deal not only gives Dehns access to Leogriff’s expertise but allows the firm to represent clients directly at the Norwegian Intellectual Property Office.

Commenting on the deal, Leogriff chairman Axel Moulin said: “With several mutual clients already, I am delighted that we are now part of the Dehns family; it is a very natural fit, both culturally and technically.”

Dehns now has offices in three countries: Norway, Germany and the UK. 

On Monday, January 11, Nokia won its first patent validity hearing against Daimler at the Opposition Division of the EPO, in what is a wider dispute between the companies. 

Nokia’s patent (EP2087626) was upheld as being essential to the 3G (UMTS) standard. The EPO decision on patent validity was in relation to an infringement hearing which will take place this summer in Munich. 

It is another small victory for the Finnish telecoms company in what has been a long and drawn-out fair, reasonable and non-discriminatory battle with Daimler over where licensing should take place in the supply chain. 

A Nokia spokesperson said that Monday’s decision makes the company’s infringement case very strong: “This once again demonstrates the strength of Nokia’s portfolio and provides further evidence in support of our case against Daimler.”

American singer-songwriter Tracy Chapman and fellow artist Nicki Minaj settled a two-year copyright dispute on January 8, with Minaj agreeing to pay Chapman $450,000.

Chapman sued Minaj in 2018 for using a sample of Chapman’s recording ‘Baby Can I Hold You’ in Minaj’s song ‘Sorry’, which was leaked to the public when DJ Flex played it on the radio. Minaj claimed she did not release the song to him.

In September 2020, Judge Virginia Phillips at the District Court for the Central District of California ruled that Minaj’s use of the song ‘Sorry’ was fair because the creation of a work for private experimentation with intent to secure a licence did not affect the commercial market for the original song.

However, the judge sent the case to a jury to decide whether Minaj sent the song to DJ Flex without Chapman’s permission and violated Chapman’s distribution rights.

The case would have gone to trial on March 2.