This week in IP: Slovenia deposits UPC ratification, IV sues three car makers, and more
Warner blocks documentary; INTA urges SCOTUS clarification; EUIPO design winners revealed; Federal Circuit launches new website; Tesla design case survives; PTAB vice chief judge moves to Covington
In-house reveal thoughts on Vidal for USPTO chief
In-house counsel told Managing IP this week that if Kathi Vidal were to be selected as President Joe Biden’s nominee for USPTO director, that wouldn’t be such a bad thing – although some have reservations about her private practice background and how that might influence her on matters related to the District Court for the Western District of Texas.
The head of IP litigation said he would love Vidal, a patent litigator and managing partner of Winston & Strawn’s Silicon Valley office, to become USPTO director for a few reasons – the first being that she has real, hands-on experience in a leadership position, having run Winston & Strawn’s Silicon Valley office for almost five years.
The chief IP counsel said he would be disappointed, however, because having her in charge would just be “more of the same”.
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Other Managing IP stories published this week include:
Eyes on the spies: why IP raids in China are not all they seem
Delhi IP division rules yet to allay IPAB abolition concerns
UK patent attorneys hopeful over proposed qualification overhaul
Ecuador eased border enforcement but must fix backlog: lawyers
Rise of the self-filers? EUTM trends show lawyers still relevant
Intellectual Ventures targets connected car makers
Non-practising entity Intellectual Ventures sued General Motors, Toyota and Honda in two Texas courts on Tuesday, October 19, for allegedly infringing patents covering wireless technology used in connected cars.
The complaints mostly related to wireless tech features including infotainment systems, navigation tools and real-time traffic information.
The NPE asserted 11 patents against Honda and Toyota in the District Court for the Eastern District of Texas and 12 against General Motors in the District Court for the Western District of Texas.
The plaintiff claimed that the courts, which are seen as favourable venues for patent plaintiffs, had jurisdiction because dealerships sold the defendants’ vehicles in these districts.
Toyota’s Prius and Lexus brands and General Motors’ Chevrolet were among the allegedly infringing vehicles.
Intellectual Ventures claimed the defendants either knew, should have known or were wilfully blind to the existence of its patents.
Each had actual knowledge of the alleged infringement since October 18, the complaints added.
Intellectual Ventures was founded in 2000 by former Microsoft chief technology officer Nathan Myhrvold.
The company has previously obtained damages awards from from companies such as Symantec, T-Mobile and Ericsson.
Warner Chappell blocks unauthorised music documentary
Warner Chappell Music has tried to block the release of a documentary about British music duo The KLF for a year, it was revealed on Tuesday, October 19.
According to the Guardian, the music publisher asserted that director Chris Atkins didn’t have the right to use the pair’s music in his new film ‘Who Killed the KLF?’.
Atkins told the paper that his use of the songs was protected under the UK’s fair dealing for criticism exception to copyright protection because he used archival footage of band members Bill Drummond and Jimmy Cauty critiquing their own music.
The KLF (also known as The Justified Ancients of Mu Mu and The K Foundation) was forced to pull its debut album ‘1987 (What the Fuck Is Going On?)’ from the market and destroy all unsold copies after a copyright dispute with Abba.
Drummond and Cauty made extensive use of uncleared samples on ‘1987’, including Abba's ‘Dancing Queen’.
Lawyers acting on behalf of Warner Chappell and The KLF have reportedly told the producers of the film that they take potential copyright infringement “extremely seriously”.
“Feature-length documentaries made for profit which make extensive use of an artist’s music are not covered by the fair dealing exception to copyright law, which is why we took action in this case,” a Warner Chappell spokesperson said.
INTA urges SCOTUS to clarify product features row
INTA filed an amicus brief at the US Supreme Court on Monday, October 18, urging it to hear Sulzer Mixpac v A&N Trading, a case concerning the protection of product features as trademarks.
The case, on appeal from the Court of Appeals for the Second Circuit, could clarify the proper test to determine whether a feature’s functionality may limit protection.
In its brief, INTA argued that SCOTUS should grant the petition for certiorari and agree to hear engineering company Sulzer’s appeal.
The underlying dispute concerns whether mixing tips used for candy-coloured dental adhesives are functional and therefore not protectable as trademarks.
In February, the Second Circuit reversed a decision from the District Court for the Southern District of New York in which the candy-coloured components (the product features) were deemed non-functional.
The Second Circuit found the mixing tips to be functional because each colour represented a different size and were therefore useful to dentists.
In its brief, INTA said there were conflicting opinions from various circuit courts when it came to functionality. The association argued that the Second Circuit failed to apply the proper test and inserted further discord and confusion into an important area of trademark law.
“Despite clear Supreme Court precedent regarding the proper tests for assessing functionality, many circuits have failed to apply the tests at all or have adopted divergent frameworks,” said INTA.
It added: “Clarity regarding a single, nationwide standard would benefit brand owners and prevent forum shopping.”
Philips and Olympic torch designer among EUIPO design winners
The winners of the EUIPO’s biannual design awards, which included a professional lighting system and a portable patient monitor for use in hospitals, received prizes on Tuesday, October 19, at the third edition of the DesignEuropa Awards.
The lighting system Relio², created by Italian designer Marco Bozzola and engineered to emit a light comparable to sunlight, won the small and emerging companies award.
The industry award went to the IntelliVue X3 portable patient monitor, designed by Fabian Benedikter and Ceren Bagatar of Philips.
The awards give recognition to registered community designs (RCD).
Christian Archambeau, executive director of the EUIPO, said: “The DesignEuropa Awards show creativity and innovation at its best. We have two excellent winners, who prove the power of design as a motor of economic growth and job creation, even in times of economic turmoil.”
The EUIPO receives around 100,000 RCD filings every year and has now reached 1.5 million design filings since 2003, when the protection was first introduced.
André Ricard, whose designs include the torch used for the 1992 summer Olympics in Barcelona, won for the lifetime achievement category, reserved for designers with a significant body of work.
Slovenia completes its UPC protocol ratification
Slovenia completed ratification of the Protocol on the Provisional Application of the Unified Patent Court Agreement and the UPC Agreement itself on Friday, October 15.
According to the UPC preparatory committee, Slovenia’s move has brought the agreement one step closer to its launch.
The country’s legislation that ratified the protocol under the UPC agreement came into force on September 24.
Only one more nation needs to ratify the protocol now to trigger the provisional application phase and the implementation of the UPC as an international organisation.
The committee has said the provisional application phase will entail the adoption of the secondary legislation prepared by the preparatory committee, the completion of the electronic case management system and the beginning of the process to select and appoint the UPC’s judges.
In August, the committee estimated that the UPC would start operations around mid-2022. But whether or not the UPC will start on this date will depend on when the decisive member state ratifies the protocol.
Federal Circuit launches new website
The US Court of Appeals for the Federal Circuit launched its new website on Monday, October 18.
The new website includes search options for court opinions and orders, reference icons on the main page for frequently visited content and a streamlined process for communicating with the court.
Visitors can now access court statistics and audio recordings of oral arguments on the homepage.
The court has also provided extensive resources for litigants and counsel on filing with the forum and on the different stages of the appellate process under the new ‘Case Information’ and ‘Oral Argument’ tabs.
The website also features a new ‘Information For…’ menu that directs visitors to audience-focused content sections, including new public civic education content and resources.
The court said this change was in line with the federal judiciary’s ongoing initiative to increase public engagement opportunities.
California judge declines to dismiss Tesla design case
Judge James Donato at the District Court for the Northern District of California ruled on Monday, October 18, that Nikola’s design patent case against Tesla would not be dismissed for the time being.
Donato said, however, that this could change if the plaintiff did not move the case forward in an efficient and timely manner. He added that Nikola’s reasons for not responding to court orders were not particularly compelling.
The judge also set a technology tutorial for January 13 2022 and a claim construction hearing for January 27 2022. But Nikola v Tesla would remain administratively closed pending further order, he said.
Donato administratively closed this case on September 29 after neither party responded to requests from the court to schedule new tutorial and claim construction hearing dates.
He ordered Nikola, a start-up, to show why the case should not be dismissed for failure to prosecute under Rule 41(b) of the federal rules of civil procedure.
“Nikola Corp. bears the burden of prosecuting this case and moving it to a resolution. It has dropped the ball, and this 2018 action is languishing without explanation or apparent good cause,” he wrote in September.
Nikola sued Tesla in 2018. The defendant filed a request for inter partes review at the Patent Trial and Appeal Board, but the PTAB declined to institute this proceeding in March 2020.
PTAB vice chief judge moves back to Covington
A former vice chief judge at the Patent Trial and Appeal Board has rejoined Covington as a patent litigator and partner in the firm’s Washington DC office, it was announced on Tuesday, October 19.
Scott Weidenfeller, who joined the PTAB in 2017 as one of its four vice chief administrative patent judges, told Managing IP that he left for Covington to pursue what seemed like an “interesting opportunity”.
“I’ve been at the board for four years now, and when there’s a change in administration, you start thinking about your career and consider new opportunities.
“It seemed like a very interesting opportunity to come to Covington to work on PTAB and Federal Circuit matters and other patent litigation,” he said.
He added that he always enjoyed litigating, which made the move back to private practice appealing to him.
Weidenfeller first went to the USPTO in 2009 as an associate solicitor, and was promoted to senior counsel for patent law and litigation in 2012.
Prior to his time at the office, Weidenfeller worked as an associate for Covington between 2004 and 2009.