Google, HTC, TTAB, PTAB, Judge Michel, Apple, Acacia, Microsoft – the week in IP

We’ve posted the following articles in the past week:

How Allergan’s Indian tribe patent deal could blow up the IPR system

Federal Circuit rejects Gilstrap’s test for patent venue

Judge Stark’s patent venue guidance has far-reaching implications

Doctrine of equivalents after Actavis v Eli Lilly

Keep your patent litigation strategy flexible

We Shall Overcome not covered by copyright

Interview: Julie Desrosiers

Positive signs for IP enforcement in Argentina

Interview: Say Sujintaya

Google and HTC Corporation have announced a definitive agreement under which certain HTC employees will join Google. HTC will receive $1.1bn in cash from Google as part of the transaction. Separately, Google will receive a non-exclusive licence for HTC intellectual property.

“For Google, this agreement further reinforces its commitment to smartphones and overall investment in its emerging hardware business,” a joint statement read. “In addition to the talented and experienced team of professionals, Google will continue to have access to HTC's IP to support the Pixel smartphone family. Additionally, this agreement also represents a significant investment by Google in Taiwan as a key innovation and technology hub.”

The Trademark Trial and Appeal Board has again found the term “Pretzel Crisps” to be generic for pretzel crackers, reports TTABlog. Frito-Lay is seeking cancellation of Princeton Vanguard’s supplemental registration for the mark.  

The Federal Circuit in May 2015 had vacated the TTAB’s original decision, asking the Board to apply the two-part test for genericness outlined in 1986’s Marvin Ginn decision: 1) what is the genus of goods or services at issue? (2) does the relevant public understand the designation primarily to refer to that genus of goods or services? The appeals court ruled the Board did not consider evidence of the public’s understanding of Pretzel Crisps as a whole.

In its new opinion, the TTAB said the genus of goods was described in Princeton Vanguard’s identification of the goods in the application and registration, satisfying the first question of the Marvin Ginn test.

Analysing the second question, the Board considered two Teflon surveys from the parties as well as evidence that Princeton Vanguard’s own use of the term “Pretzel Crisp” was sometimes generic and only sometimes brand-identifying. It concluded that the record indicated that the primary consumer perception of the term “Pretzel Crisps” is likely to be that if a common name for the identified good, “pretzel crackers”.

This will not be the end of this long-running dispute. Akerman’s Marks, Works & Secrets blog concluded: “No doubt, Princeton Vanguard will again appeal. It should be noted that Eastern District of Virginia recently found persuasive a Teflon-type survey in ruling that BOOKING.COM is not generic for travel agency and hotel reservations services … The acceptability of Teflon surveys in cases such as PRETZEL CRISPS will be a central issue on appeal.”

The Patent Trial and Appeal Board (PTAB) has designated its General Plastic Industrial Co v Canon Kabushiki Kaisha decision from this month as informative.

This expanded panel decision explains that applying factors to evaluate the equities of permitting follow-on petitions in AIA proceedings is a proper exercise of the Board’s discretion Section 314 and provides a non-exhaustive list of factors that the Board considers in evaluating follow-on petitions.  

Former Federal Circuit Chief Judge Paul Michel has suggested seven ways to improve the US patent system to the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet, reports IP Watchdog.

His first action item is potential amendments to the America Invents Act. “After six years, the AIA has caused more harm than good,” supplemental testimony provided by Michel to the committee says.

IP Watchdog’s Steve Brachmann wrote: “These include an off-ramp to reexamination processes, respect for the patent owner’s right to amend claims, dismissal of the broadest reasonable interpretation (BRI) claim construction and application of both the clear and convincing evidentiary standard and the presumption of patent validity. Judge Michel also calls for the PTAB to make sure that the decisionmaker who institutes a patent validity review trial is different than the panel who end up deciding on the merits of the case.”

The six other suggestions were amending Section 101 to fix the “chaos” into which the US patent system has descended after recent Supreme Court decisions, amendments to the patent venue statute Section 1400(b) in light of TC Heartland, ending fee diversions from the USPTO, authorising technical support staff for the district court judges who are participating in the Patent Pilot Program, requiring the USPTO director be qualified and admitted to the patent bar, and giving the USPTO director the authorisation to reward patent examiners who provide excellent work as well as discipline those examiners which engage in improper conduct.

The Eastern District of Texas has granted a dismissal of Cellular Communications Equipment v Apple after the parties settled all claims against each other.

The court dismissed Acacia subsidiary Cellular Communications Equipment’s claims against Apple, as well as claims against AT&T Mobility, Cellco Partnership, Sprint, Boost Mobile and T-Mobile.

A jury in September last year found that Apple’s iPhones and iPads infringed wireless communication patents, and awarded $22.1 million. The jury found that the infringement was willful.

Microsoft Azure IP Advantage will be available in China beginning October 1.

“We have had a tremendous response to the programme since we launched it last February,” said Erich Andersen, corporate vice-president and chief IP counsel at Microsoft Intellectual Property, in a blog post. 

“Customers recognise that uncapped indemnification coverage, including for open source software that powers Azure experiences, access to 10,000 Microsoft patents, and the springing license right are valuable benefits that help them manage IP risk.”

Andersen said that extending these benefits to China aligns well with Microsoft’s approach to delivering cloud services on a global scale. Azure has 42 regions around the world. 

In China, Microsoft has partnered with 21Vianet to deliver Microsoft Azure services to its customers since March 2014.

Andersen continued: “The benefit of Azure IP Advantage is obvious. A recent study by IPlytics has shown that patent assertion entities have increased their stockpile of cloud computing patents by 130% since 2011. Worse, cloud-related patent litigation in the US has grown by 700% since 2012. We can see these trends taking hold in China as well where patent litigation has increased 158% between 2011 and 2016. Patent filings in China have surpassed the US since 2015.”

Managing IP published an interview with Andersen about the Azure programme in February.

-       Intellectual Ventures is becoming more aggressive about getting its inventions into the marketplace through new companies in which it has an equity stake, reports The Seattle Times.

-       A new study by Kevin Madigan and Adam Mossoff has identified 1,728 patent applications granted in both China and the EU but rejected in the US as ineligible for patent protection.

-       A Northern District of Georgia judge has allowed 54 Sudanese refugees to pursue copyright and fraud Claims over a Reese Witherspoon film, according to The Hollywood Reporter.

-       Netflix received a lot of praise this week for sending a nerdy cease-and-desist letter to an unauthorised pop-up bar themed around its Stranger Things programme, reports Fortune. The letter includes lines such as: “Look, I don’t want you to think I’m a total wastoid, and I love how much you guys love the show. (Just wait until you see Season 2!) But unless I’m living in the Upside Down, I don’t think we did a deal with you for this pop-up.”

-       After previously refusing to register STOP ISLAMIZATION OF AMERICA because it was disparaging, the USPTO has now approved the mark after the Supreme Court’s Tam ruling.