This week in IP: Koh nominated to Ninth Circuit, UKIPO gives Deloitte $33m, and more
Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed
Foreign sales trademark case ‘ripe for SCOTUS appeal’ to fix split
A case on how the Lanham Act could apply to foreign sales could be ripe for an appeal at the US Supreme Court, counsel told Managing IP this week.
The Court of Appeals for the Tenth Circuit upheld a $113 million damages award to manufacturer Hetronic in Hetronic International v Hetronic Germany on August 24 on the basis that the scope of the Lanham Act – the US’s primary trademark statute – extended to the defendants’ conduct.
Sources said SCOTUS justices could be tempted to accept an appeal because the ruling exacerbated a split among the circuit appellate courts on the issue.
Other Managing IP stories published this week include:
Biden nominates FTC v Qualcomm judge Koh to Ninth Circuit
President Joe Bien nominated the judge that issued the district court decision in FTC v Qualcomm to the appellate court that later overruled her on Wednesday, September 8.
Biden named Judge Lucy Koh at the District Court for the Northern District of California and two other candidates to fill vacancies on the Court of Appeals for the Ninth Circuit, which sided with Qualcomm in its patent antitrust case against the Federal Trade Commission.
Koh is also well known for having presided over the famous patent spat between Apple and Samsung – although she would no longer oversee patent infringement disputes if she joined the appellate court that covers nine states, including California, Washington and Oregon.
She would, of course, be able to hear appeals of copyright and trademark matters and cases related to patent antitrust. The Northern District of California oversees a significant number of trademark and copyright cases, and the Ninth Circuit has made a few notable recent decisions in those spaces.
Last year, the venue ruled in Led Zeppelin's favour in a copyright dispute and overturned the inverse ratio rule, which set out that the greater access a defendant had to a plaintiff’s work, the less the plaintiff needed to prove substantial similarity.
In March 2020, the court decided that dog toys that parodied the Jack Daniel's brand were expressive works entitled to first amendment protection.
Koh would be the first Korean-American woman to serve as a federal circuit judge if her nomination were confirmed.
Biden also nominated Justice Gabriel Sanchez at the California Court of Appeal and Judge Holly Thomas in the family law division of the Los Angeles County Superior Court to the Ninth Circuit.
UKIPO gives £24m to Deloitte to revamp patent system
The UKIPO has awarded a £23.8 million ($32.8 million) contract to Deloitte in an effort to transform its patent, trademark and copyright filing system, it was announced last Friday, September 3.
According to the award notice published by the office, Deloitte will serve as a “strategic supplier to deliver digital services” under the terms of the contract as part of the UKIPO’s phase-one transformation.
The office also awarded software consultancy NTT Data £7.1 million ($9.8 million) in August to offer the common technology components workstream within its transformation programme.
The UKIPO said in April that it was embarking on a five-year programme called ‘One IPO’, which, according to the office, would transform the way services were delivered and would implement modern technology.
CEO Tim Moss said in a statement that the UKIPO hoped to become the best IP office in the world.
“Our transformation programme is our pledge to up our game – to deliver excellent IP services that meet the needs of our customers,” he said.
The key to the transformation, according the UKIPO, would be a single, integrated system for all registered IP rights known as the common IP system, which would allow users to seamlessly apply for, manage, and research all of their IP in one place.
Australia backs COVID IP waiver
Australia trade minister Dan Tehan has said his government will support the proposal at the World Trade Organization to waive intellectual property protections for COVID vaccines and other therapeutics, it was reported on Wednesday, September 8.
The announcement comes after several advocacy groups pressed the government to back the waiver. The groups, which met with Tehan this week, said the minister made a private commitment that Australia would support the proposal.
Tehan later said to reporters: “Well, we have always said we will support a TRIPS waiver when it came to COVID-19.
“When the US came out and said this, the prime minister welcomed the news. ”
He added: “We continue to work constructively in Geneva to do everything we can to expand the production of vaccines globally because we need everyone across the globe to get access to a vaccine ultimately if we are to be safe.”
The US backed the proposal from India and South Africa to waive COVID patents earlier this year, saying "extraordinary measures" were needed to ramp up global production of vaccines to fight the spread of the virus.
Pharma counsel later told Managing IP that the proposal would cause more problems by undermining innovation while failing to ramp up global production.
SCOTUS to resume oral arguments in person
The US Supreme Court will hear oral arguments in person again this October, it announced on Wednesday, September 8.
The court has been hearing cases remotely because of COVID since May 2020, when the trademark dispute USPTO v Booking.com was the first SCOTUS case ever to be argued virtually.
This announcement means that the court will hear copyright case Unicolors v H&M on November 8 in person.
SCOTUS noted that it only planned to open proceedings to justices, essential court personnel, counsel in the scheduled cases and journalists with full-time press credentials.
“Out of concern for the health and safety of the public and Supreme Court employees, the courtroom sessions will not be open to the public,” the court stated. “The court will continue to closely monitor public health guidance in determining plans.”
The court said, however, that it planned to provide a live audio feed of the October, November, and December oral arguments, as it had during remote oral arguments.
Lawyers spoke positively to Managing IP about the ability to listen into these proceedings during the Booking.com oral arguments.
PNC must face USAA in next round of fintech fights
The US District Court for the Eastern District of Texas held on Friday, September 3, that PNC Bank had to face United Services Automobile Association’s claims that it had infringed patents on mobile banking technology.
USAA initiated a suit against PNC Bank in September 2020, alleging that certain PNC applications that enabled customers to scan, upload, and deposit checks from their mobile devices infringed its patents.
Shortly after, PNC filed a motion to dismiss USAA’s allegations of infringement.
Judge Rodney Gilstrap ruled that PNC’s claims of non-infringement involved issues of fact and law that were not ripe for resolution at the pleading stage, noting: “USAA has put forth enough to demonstrate a plausible claim.”
Gilstrap observed that USAA had identified the accused system, alleged that PNC infringed one or more claims of the patents-in-suit, and identified components of the accused applications that allegedly infringed its patents, which were sufficient at that stage to avoid dismissal.
The court also found it plausible that PNC knew of the patents-in-suit in the highly competitive banking field and opined that USAA had made a case for both direct and indirect infringement.
USAA had previously successfully sued Wells Fargo for infringing related patents and won more than $300 million in jury trials before the parties settled their disputes.
US customs seize fake Cartier jewellery worth $5.2m
US Customs and Border Protection officers in Cincinnati recently seized 500 counterfeit Cartier bracelets and rings, which, if genuine, would have been worth $5.2 million.
The counterfeit jewellery was sent in two different shipments to the US.
The CBP officials found the first shipment, which contained 450 fake Cartier Love bracelets and rings mixed with other non-infringing jewellery, on August 16. The counterfeit goods were dispatched from China and headed to a residential address in Florida.
Just two days later, the officials came across a second shipment from Hong Kong containing 50 infringing bracelets. The counterfeit goods were mixed with other bracelets and headed to a residence in Mississippi.
CBP’s Centers of Excellence and Expertise inspected the seized goods and determined them to be counterfeits.
LaFonda Sutton-Burke, field operations director at the agency’s Chicago Field Office, said in a press release: “Counterfeit goods defraud consumers and businesses. Our officers are dedicated to the CBP mission and work diligently for American consumers by stopping the flow of illegitimate and pirated merchandise.”
The agency earlier reported that it had seized more than 26,000 shipments containing counterfeits in 2020, which would have been worth $1.3 billion if they had been genuine.