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USPTO teleworking, Happy Birthday, TTAB, Michael Jordan, Qualcomm, ParkerVision – the week in IP

A study on the USPTO teleworking programme, a "smoking gun” in the Happy Birthday copyright case, the TTAB criticising an attorney for being pedantic, Michael Jordan losing a trade mark case in China, and the Federal Circuit weighing in on the ParkerVision/Qualcomm case were in the IP headlines in the past week

Also on the blog this week

Celgene files motion for sanctions against Kyle Bass

Why Twitter is not seeing the funny side to copying tweets

Meet our most diverse MIP 50 ever



Study on USPTO teleworking released

An eight-month study by the National Academy of Public Administration into the USPTO’s teleworking programme was released on Friday. The Washington Post reports that the study found that the patent system stresses “quantitative production over quality” and questions whether examiners work hard enough.

The report found that oversight has been improved in the past year, such as making it tougher for examiners to take credit for work they have not submitted and requiring some employees to use an electronic device to indicate when they are at their computers.

“We were struck by the supervisors’ need for better backing,” The Washington Post quoted David Chu, who led a panel of five public policy specialists conducting the study, as saying. “They need more tools and more authority.”

Examiners have been given two-and-a-half hours on average to examine patents in recent years, which is an increase on before.

“This one-size-fits-all approach may provide more time than necessary for less-complex patent applications,” the review said. It noted that technological advances such as search engines speed up examinations, not slow them down.

The Washington Post last year levelled charges against the USPTO that the teleworking programme was a hotbed of mismanagement and that employers were abusing the work-from-home programme by lying about work hours.


A Happy Birthday present

The long-running dispute over the song “Happy Birthday to You” was back in the headlines this week. The Hollywood Reporter revealed that a “smoking gun” had emerged on the eve of a judge’s ruling in the dispute over filmmakers working on a documentary and Warner/Chappell, which claims rights to the song.

The filmmakers are working on a documentary about the song and are suing for right to use it without paying a $1,500 licence fee. They filed documents this week claiming to prove “conclusively that there is no copyright to the Happy Birthday lyrics”.

The documents cited a book of children’s songs from 1922 that included the song’s lyrics without any copyright notice. The plaintiffs argue this shows the lyrics were dedicated to the public before the copyright registration in 1935 that Warner/Chappell is relying upon.

A hearing two days after the filing was made did not include discussion of the motion, however. "I was a little disappointed that [discussion of the new evidence] didn’t happen because I think the evidence is so compelling,” the plaintiffs’ attorney Mark Rifkin told The Hollywood Reporter.

TTAB calls attorney “pedantic, unreasonable, and uncooperative”

The Trademark Trial and Appeal Board this week called out the attorney for chocolate maker Cadbury UK. According to the TTABlog, the Board grated Meenai’s motion to compel petitioner Cadbury to respond to a request for documents.

Cadbury had refused to do this because it said there was “an obvious and inadvertent” typographical error in the request. The TTAB said that Cadbury’s response was “unreasonable” and wasted the time of the parties and the Board.

In Meenai’s motion it had mistakenly referred to the petitioner as “Venture Execution Partners”.

The TTAB said: “The isolated reference to Venture Execution Partners, Inc, was clearly a typographical error; it did not cause a matter of real confusion or misunderstanding. The motion to compel is the result of Petitioner’s attorney apparently concluding, upon the discovery of a typographical error, that he had found an excuse to become pedantic, unreasonable, and uncooperative.”

Press reports identified Fross Zelnick as Cadbury’s law firm in the case.


Federal Circuit gives Qualcomm good news

ParkerVision has lost in its efforts to revive a $173 patent infringement verdict against Qualcomm. On Friday, the Federal Circuit affirmed the District Court for the Middle District of Florida’s verdict of non-infringement of ParkerVision’s patents relating to “down-converting” electromagnetic signals.

In the initial trial, the jury awarded ParkerVision $173 million in damages but found that Qualcomm’s infringement was not wilful. The damages verdict was later overturned by the judge in the case.

The Federal Circuit furthermore upheld the district court's decision denying Qualcomm's judgement as a matter of law (JMOL) motion for invalidity with regard to claim 27 of the '518 patent but reversed the district court's decision with regard to Qualcomm's JMOL for invalidity on the remaining claims in the case.

Jeffrey Parker, ParkerVision's chairman and chief executive officer, said in a statement: "Despite this setback, we will consider further options on appeal, and will move forward in our second infringement case against Qualcomm, HTC and Samsung.”


Michael Jordan loses China trade mark dispute

Basketball legend Michael Jordan has lost a lawsuit against Qiaodan Sports in China’s Supreme Court after a number of appeals, reports International Business Times.

Jordan sued the company in 2012 for using his Chinese name, his 23 playing number, and a silhouette logo (left) similar to Nike’s iconic Jumpman one. He said Qiaodan’s “use of Michael Jordan’s name and its aggressive marketing tactics have misled Chinese consumers”.

The lawsuit was dismissed on the grounds that there was insufficient evidence that Qiaodan’s trade marks referred to Jordan.



IP referenced in Capitol Building barricade crash

A driver who crashed into a barricade at the US Capitol Building on Friday said that he was angry about a patent application.

According to NBC Washington, Antonio Pierorazio hit a barrier intentionally. "I have a European Brazilian patent that are gone," he said as police escorted him away. This apparently was a reference to his clothing designs.

In our news and analysis this week:

US legislators consider trade secrets bills and patent box

USPTO names Drew Hirshfeld as commissioner for patents

The 50 most influential people in IP

Federal Circuit says TTAB must take third-party registrations into account more

Federal Circuit says biosimilar applicants can decline patent dance

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