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This week in IP – INTA goes virtual, in-person hearings halted, Walmart and Alibaba make patent gains

The sort of fun regular INTA goers will miss this year. Managing IP Americas editor Patrick Wingrove apprehends a couple of 'copyright pirates' at the 2018 INTA Annual Meeting in Seattle.

Managing IP rounds up the latest patent, trademark and copyright news, including some stories you may have missed

INTA the digital yonder

INTA announced this week that its 142nd annual meeting in November will be held as an all-digital event instead of taking place in Houston because of COVID-19 concerns.

The meeting, which regularly attracts more than 10,000 people and had originally been organised for Singapore in April, will now largely take place via virtual conferencing platforms.

The new-look event, which will go ahead between November 16 and 20, will include live, simulated-live and on-demand educational sessions, multiple networking opportunities, an interactive exhibit hall, and features such as table topics and speed networking.

The organisation said it will reduce its registration fees to $850 for standard members and $750 for early birds. Registration will open in early July.

In a press release on May 20, INTA CEO Etienne Sanz de Acedo said: “While the path here has come with a heavy heart, we believe this forward-looking approach is the safest option right now and keeps registrants’ best interests in mind.

“Moreover, we are excited about the prospect of not only bringing our community together again, but doing so in a new and innovative way, on a secure and engaging platform. The meeting aligns with our digital transformation and pioneers a future that incorporates virtual offerings into our in-person events.”

INTA also tweeted a similar statement and posted a video message from Sanz de Acedo on Wednesday.

We believe this forward-looking approach is the safest option and keeps registrants’ best interests in mind. We’re excited about the prospect of bringing out community together in a new and innovative way. Read more details here: — International Trademark Association (INTA) (@INTA) May 20, 2020

The organisation confirmed that next year's annual meeting is still scheduled to take place in San Diego on May 1 to 5. 

Federal Circuit halts in-person hearings indefinitely

On Monday, the US Court of Appeals for the Federal Circuit announced that in-person arguments would be suspended until further notice.

This new policy replaced the court’s previous process, used since March, of deciding whether oral arguments could safely be held in person on a month-by-month basis.

Federal Circuit Chief Judge Sharon Prost said the decision was made in the interest of providing greater predictability for attorneys, who had previously been forced to wait for monthly announcements.

In her administrative order, she noted: “Counsel appearing in cases before this court are currently subject to various approaches to, and timeframes for, community recovery and reopening, which may impact their ability to travel for argument.”

In an effort to mitigate the risks posed by in-person gatherings during the COVID-19 pandemic, the Federal Circuit has been holding arguments remotely since March 16, either virtually or by telephone.

Prost announced that these modifications shall remain in effect simply until this order is rescinded.

Several major patent courts, including the Eastern District of Texas and the District of Delaware, have been holding virtual hearings from as early as March. The traditionally tech-averse US Supreme Court recently held (live-streamed) oral arguments by telephone on a key trademark case.

The announcement may be well received by patent practitioners, especially in-house counsel, some of whom previously indicated in a recent Managing IP survey that they are largely in favour of continuing virtual hearings after the COVID lockdown.

IPO publishes 2019 top patent owners list

Businesses including Capital One, Walmart and Alibaba made huge gains in their patent portfolios in 2019, according to the Intellectual Property Owners Association’s latest top patent owners list.

The list, published by the IPO on May 18, shows that the top five portfolio movers last year were US-based bank Capital One (232% increase), Walmart (115%), manufacturing business Tata Sons (110%), Alibaba (96%) and chemicals firms Koch Industries (86%).

Other notable shakers were MasterCard (79%), Becton Dickinson (74%) and oil company Saudi Aramco (62%).

IBM, once again, took first place for most US patents (9,477). Samsung came in second (8,735), Canon third (4,102), Intel fourth (3,680) and Microsoft fifth (3,144).

New additions to the list include China Star Optoelectronics (678), Dow Chemical (565), Corteva (547) and Pure Storage (341).

This report was compiled by patent analytics firm Harrity Analytics from patent data provided by the USPTO. The IPO has published this report annually since 1984.

Managing IP interviewed IPO president and Siemens IP head Dan Staudt earlier this year. 

Battle of the Mercks decided in UK

The England and Wales High court ruled on Wednesday that US-based Merck Sharp & Dohme had infringed the trademark rights of German drug maker Merck KGaA.

In his decision in Merck KGaA v Merck Sharp & Dohme, Mr Justice Norris said the defendant (MSD) had violated a decades-old co-existence agreement over shared nomenclature between the two companies when it used the name ‘Merck’ by itself in the UK.

The judge dismissed MSD’s argument that injunctions were unnecessary because, among other reasons, once declarations had been granted, that should be sufficient and it should be left to the parties to negotiate the practical application of the declaratory relief.

Norris did allow some carve-outs from the injunctions, however, such as MSD's use of ‘Merck’ on social media so long as it used country-restriction techniques, such as geo-blocking, to the fullest extent available.

In his published decision, Norris said he regretted the time it had taken him to produce the judgment.

“I felt a personal responsibility to deal with the remitted matters and unwisely allowed it to be listed whilst I was still dealing with another very heavy case,” he said. “The combination occasioned some health issues which hindered the preparation of both.”

MSD has yet to announce whether it will appeal the decision.

New dates and cancellations: Nokia v Daimler in Germany

After considering the arguments in perhaps the world’s most famous automotive connectivity licensing spat, the Munich Regional Court this week decided to hold another hearing for Nokia v Daimler on July 23.

On Wednesday, the court decided to cancel a hearing for the matter, where some practitioners thought a judgment could be handed down, on short notice.

The announcement comes on the back of a hearing on February 6 in front of Judge Matthias Zigann. The meeting lasted 12 hours and was the first instance where Daimler co-litigants Renault and Huawei participated.

On Tuesday, the Mannheim Regional Court conducted a hearing for the same dispute and announced that it would issue a verdict on June 23.   

Nokia has sued the German car manufacturer Daimler in Mannheim, Munich and Düsseldorf for infringing the telecoms company’s connectivity patents.


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