Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Apple, Samsung, Erich Spangenberg, Depomed, Alibaba, Jay-Z, Kanye West, more monkey selfie – the week in IP

Apple and Samsung being referred to mediation, Erich Spangenberg making a draft IPR available to challenge a Depomed patent, Alibaba’s patent portfolio growth, Jay-Z and Kanye West winning a case in New York, and the monkey selfie's implications for the scope of copyright law were in the IP headlines this week

apple20samsung20phones20200.jpg Apple and Samsung to mediate – again

Judge Lucy Koh of the Northern District of California on Monday referred Apple and Samsung to mediation before Magistrate Judge Spero, reports the Foss Patents blog. The settlement effort has a November 15 deadline.

The latest development comes a year after the two parties settled all non-US patent litigation.

Florian Mueller commented on the Foss Patents blog: “I've always said that Apple should get something, but the longer this dispute has taken, the clearer it has become that Apple's leverage is limited, and let's not forget that Apple at some point needs a licence, on FRAND terms obviously, to Samsung's standard-essential patents.”

Is the scope of copyright law expanding?

David Kluft had an interesting post on the Trademark & Copyright Law blog this week identifying a trend of the increasing use of copyright law to solve problems not traditionally seen as copyright problems.

The Foley Hoag partner identified Peta’s lawsuit filed last week on behalf on behalf of a crested macaque that took the infamous monkey selfie as an example of this trend. The suit requests that any profits from the photo are used solely for the benefit of the monkey’s community of crested macaques and the preservation of their habitat.

“Here, Peta’s real (laudable) concern is not protecting Naruto’s intellectual property, but his habitat. Whether or not copyright law will provide the remedy sought, it is the vehicle being used to put the matter before a judge,” wrote Kluft in the blog post.

As other examples of this trend, Kluft pointed to copyright law becoming a popular substitute for defamation claims rendered impotent by the Communications Decency Act, being used as a bodyguard against a fatwa in Garcia v Google, and being brought to the fore by a judge to dismiss a case where the creator of a recipe for a chicken sandwich felt he had not been properly compensated.

Kluft concluded: “So what is going on here? Somehow, the perception of the potential scope of copyright law has expanded to the point where it is worth asking ‘Are you sure this isn’t a copyright case?’ just in case.”

In other monkey selfie news, Sarah Jeong on Motherboard had an entertaining interview with Peta’s general counsel that skirts close to farce at various points, including the following exchange:

Does Naruto know about this lawsuit? [pause] Um, the… fact here is that Naruto is unable to come into court himself and so we are standing as Next Friend. Your question is silly, frankly. The issue is as I’ve stated it. Does Naruto know about his selfies? [pause]

         I have the same response.

erich20spangenberg20150new.jpg Spangenberg delivers on his word

Last week in a blog post, nXn Partner owner Erich Spangenberg revealed his intention to make publically available substantially final draft versions of inter partes review petitions for pharma patents he wanted invalidated.

"My hope is that, via crowd-sourcing or some other way, people far smarter than me will comment on the petitions and make them even better,” he said. “After the petitions are polished and suitable for hanging in The Louvre of IPR petitions, perhaps some person with altruistic motives will file them or maybe a person that is mean to puppies will file them."


This week Spangenberg made good on this by releasing the first draft IPR document. It is for the Nucynta and Nucynta ER chronic pain medications marketed by Depomed. He said the price of these medications is about $7,000 a year, up from less than $3,000 when it was first launched in 2008.

“Depomed’s business strategy is to buy lesser-known drugs and then massively increase the price of those drugs immediately after acquisition,” said Spangenberg. “When Depomed bought the rights to Nucynta and Nucynta ER in 2015 from Johnson & Johnson, the first thing the company did was raise the price by 44%.”

Spangenberg said the ideal filer of the IPR – which you can download in Word format here – would be a charitable organisation, law school or consumer-focused action group. He added that he does hold a long or short position in Depomed.

Last Friday, Depomed received more-favourable Patent Trial and Appeal Board news when the Board confirmed the patentability of all 23 clams of two of its patents in an IPR brought by Endo Pharmaceuticals related to the Opana ER treatment.

Jim Schoeneck, president and chief executive officer of Depomed commented in a statement: “This marks the second favourable ruling in this quarter where Depomed has defended these same patents with the prior ruling upholding the 25 contested claims of these same patents.”

Alibaba says open sesame to IP portfolio

Envision IP had an interesting analysis on its Patent Vue blog this week of Alibaba’s patent portfolio.

It ran the numbers and reckons that in the year since the Chinese e-commerce company’s $25 billion IPO – the largest ever – it has strengthened tis US patent portfolio.

alibabas20us20patent20portfolio400new.jpgBefore the IPO, Envision IP identified 102 US patents and 302 pending US patent applications assigned to the company. The company in a pre-float filing also revealed it had acquired a number of Yahoo’s patents in 2013 for $70 million.

After the IPO, the patent research law firm identified 184 US patents assigned to Alibaba, with 22 patent bought from IBM.

“The remaining patents appear to be organically obtained; the result of the company’s own R&D efforts,” said Envision IP. “In addition, Alibaba owns 342 published, pending US patent applications.”

Alibaba’s US patent portfolio is comprised of the following areas: 32% search engine, 26% cloud computing, 15% mobile related technologies, 10% message and chat, 9% security and authentication, and 8% payment processing.

Jay-Z and Kanye win rap copyright battle

Kanye West and Jay-Z have secured a dismissal of a copyright infringement action brought by musician Joel McDonald in the US District Court for the Southern District of New York. Mike Dean, UMG Recordings, Roc-A-Fella Records and Roc Nation were also defendants in the case.


McDonald claimed the song “Made in America”, from Jay-Z and West’s 2011 Watch the Throne album, infringed McDonald’s copyright in a song he had written in 2008 with the same title.

He argued both songs share the same title, his song contains the lyric “Made in America” while the defendants’ song has the lyric “Made it in America”, both songs make reference to historical figures Malcolm X and Martin Luther King and appear in the same order, and the songs contain certain musical similarities.

The defendants, represented by Pryor Cashman, argued that “Made in America” is not protectable under copyright law as a title or short phrase, the use of the names Martin Luther King and Malcolm X is not protectable under copyright law, and McDonald failed to allege any musical similarities between the two compositions.

US district judge Alison Nathan granted a motion to dismiss, finding that the phrase “Made in America” is not copyrightable as a title or lyric because it is “too brief, common and unoriginal to create any exclusive right vested in [McDonald]”, copyright cannot be claimed over names of historical figures, and no substantial musical similarities between the two songs were plausible argued.

Also on the blog this week:

Seven takeaways from the Luxury Brands & Retail Forum

In our news and analysis this week:

Federal Circuit rules it cannot review PTAB decisions to institute

Google and Microsoft settle all patent litigation

Are PTAB institution procedures unfair?

Practical tips following CJEU’s Kit Kat shape ruling

Practitioners react to the CJEU’s ruling on the Kit Kat shape

The view from inside the UPC courtroom

EPO oppositions are affordable, powerful and increasingly important

Circuit overload: How the Federal Circuit is changing

The Federal Circuit's Section 101 uncertainty

Federal Circuit deals MPHJ a blow in its dispute with Vermont

PTAB refuses to sanction Bass, Spangenberg calls for crowdsourcing of IPRs

Chief Judge Prost weighs in on Supreme Court pushback

Federal Circuit review - A look at eBay v MercExchange, API supplier liability and lump sum awards for future damages

more from across site and ros bottom lb

More from across our site

Online storytelling platform Humans of Bombay isn’t wrong for trying to protect its copyright, but it could have handled its dispute better
We have started accepting submissions from in-house counsel and teams for the 19th annual Managing IP Awards programme
Patient groups and generics makers may have to bear the brunt of India’s latest attempt at patent reform
Each week Managing IP speaks to a different IP lawyer about their life and career
Paolo Tavolato, who will share the role, said private equity support would help the IP consultancy achieve its ambitious M&A plans
Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP