This week in IP: Spain adopts Copyright Directive, USPTO head grants first Arthrex review, and more
PTAB wrong on Fintiv ‘94% of the time’; Jaguar Land Rover joins Avanci; Senators ask SCOTUS to study forum shopping; FTC commissioner suggests pro-implementer shift; UKIPO backs WIPO for Creators; Spruson & Ferguson becomes Australia’s largest IP firm
Federal Circuit ‘in good hands’ with Len Stark, says O’Malley
President Joe Biden announced his intention to nominate former Delaware chief judge Leonard Stark to the Court of Appeals for the Federal Circuit on Wednesday, November 3.
If he is confirmed by the Senate, Stark will replace Kathleen O’Malley, who plans to retire in March 2022.
O’Malley told Managing IP that she couldn’t be more pleased with the announcement.
“He will bring a wealth of knowledge regarding how trial records are developed in patent cases and the challenges district courts face in those complex and contentious matters,” she said.
Other Managing IP stories published this week include:
PTAB wrong on trial dates ‘94% of the time’ when issuing Fintiv denials
The Patent Trial and Appeal Board has almost always been wrong when it discretionarily denied institutions on the basis of trial dates set by district courts in parallel litigation proceedings, according to a new report from Seattle-based law firm Perkins Coie.
In a study of discretionary denials based on parallel litigation and issued between May and October 2020, only seven denials out of 55 (13%) cited a trial date that proved accurate – and in four of those, the cited date was correct because the trial had already occurred when the institution was denied.
Excluding those four instances, the PTAB appropriately denied just three institutions out of 51 – meaning that the board was wrong 94% of the time.
The Fintiv rule, established by the precedential decision in Apple v Fintiv in 2020, sets out that administrative patent judges can deny institutions on the basis that parallel proceedings in the district courts will finish first.
The rule has been heavily criticised by patent challengers at the PTAB – particularly high-tech companies – on the basis that it unfairly restricts their ability to invalidate low-quality patents and works contrary to Congress’s intentions in the America Invents Act.
Several challengers have resorted to filing for ex-parte reexams after their PTAB challenges were discretionarily rejected, and with reasonable success.
Jaguar Land Rover joins Avanci SEP platform
Jaguar Land Rover signed a licence agreement with Avanci on Wednesday, November 3, for access to the 2G, 3G and 4G standard essential patents on its platform.
The news comes shortly after another British car maker, Aston Martin, joined Avanci, bringing the total number of automotive licensees on the platform to 25. Other car brands include BMW, Volvo and Audi.
“We are very pleased to welcome Jaguar Land Rover, the UK’s largest automotive manufacturer with its two iconic British car brands as an Avanci licensee,” said Kasim Alfalahi, founder and chief executive officer of Avanci.
“This agreement demonstrates our focus on streamlining the patent licensing process for the automotive market with efficient, predictable licensing solutions through our one-stop Avanci marketplace.”
Avanci, a licensing platform catering to the automotive industry, also has 43 SEP licensors signed up, including Ericsson, Nokia and InterDigital.
The platform is currently involved in an antitrust dispute against Continental, which is due to be decided by the Court of Appeals for the Fifth Circuit soon.
The District Court for the Northern District of Texas dismissed the suit, brought by Continental, on September 10, 2020. Continental subsequently appealed to the Fifth Circuit.
Spain adopts EU Copyright Directive
Spain became the latest country to adopt the EU’s Copyright Directive this week, three months after the EU began legal action against the member states that had yet to implement the law.
The Spanish government’s adoption of the directive, announced on Tuesday, November 2, is significant because it paves the way for Google News to return to the country after a six-year hiatus.
Google News, which links to third-party content, closed in Spain in 2014 in response to domestic legislation that forced it to pay a collective licensing fee to republish headlines or snippets of news.
The EU’s directive still requires platforms such as Google to share revenue with publishers but also removes the collective fee and allows them to reach individual or group agreements.
“Today, we’re announcing that Google News will soon be available once again in Spain,” Google’s parent company Alphabet said in a blog post.
Spain, as it stands, is one of only a handful of countries to have adopted the directive into their national laws, joining Germany, Hungary, Malta and the Netherlands.
In August, Managing IP reported that the European Commission had written to 23 member states asking them how they planned to implement the directive’s rules into their national laws.
The action – known as infringement proceedings – can be taken against any member state that doesn’t fulfil implementation obligations. This starts with a letter like the one that was sent in August and could eventually lead to the commission sending a formal request to comply with EU law.
The directive entered into force in June 2019, after which member states were given until June 7, 2021 to implement it domestically.
Senators ask SCOTUS to study forum shopping after west Texas rise
US senators Patrick Leahy and Thom Tillis wrote a letter to Chief Justice John Roberts at the Supreme Court on Tuesday, November 2, asking him to direct the judicial conference to conduct a study on abuses of forum shopping in patent cases.
The senators highlighted the concentration of cases in the District Court for the Western District of Texas and said the ability of plaintiffs to essentially select their judge created an appearance of impropriety.
They added that judge Alan Albright – though they did not actually name him – repeatedly ignored binding case law and abused his discretion in denying transfer motions.
The concentration of litigation in this court and Albright’s conduct were allowed because of a lack of adequate rules regulating judicial assignments and venue for patent cases, the letter said.
The senators said the study should look into actual and potential abuses that the present system enabled. It should also consider reforms that SCOTUS could make to address this issue and provide legislative recommendations to ensure the problem didn’t arise in the future.
Leahy and Tillis requested that Roberts complete this study no later than May 1, 2022.
Leahy is chair of the Senate’s IP subcommittee and Tillis is its ranking member.
FTC commissioner speech suggests pro-implementer FRAND shift
Federal Trade Commission commissioner Rebecca Kelly Slaughter spoke out in favour of policies that were more favourable to standard essential patent implementers than licensors in a speech on Friday, October 29.
She said the threat of exclusion against a willing licensee allowed SEP holders to demand royalties that were not fair, reasonable and non-discriminatory (FRAND).
She added that the FTC had been correct to bring SEP-related enforcement actions against anticompetitive conduct and that it should continue to do so.
Slaughter said small businesses had serious concerns about unchecked SEP licensing abuses, which could also drive investors away, noting that SEP holders should not be able to seek exclusionary remedies against willing licensees.
She added that holdout, a practice in which licensees refuse to take FRAND licences, did not pose the same problems from a competition standpoint as holdup – when licensors attempt to stop companies from implementing standards unless they agree to higher royalties.
“I want to make clear that I am not on anyone’s ‘side’ – not patent holders or patent licensees. I am on team competition and consumers. And competition and consumers are harmed when market power is exploited to engage in holdup.”
Slaughter said her speech only represented her own views and not those of any other commissioner or of the FTC itself.
UKIPO first member state to back WIPO for Creators
The UKIPO has joined the WIPO for Creators platform, aimed at boosting awareness of music creators’ IP rights, it was announced on Friday, October 29.
The UKIPO is the first WIPO member state to sign up as a sponsor of the platform, a joint venture with the Music Rights Awareness Foundation.
WIPO director general Daren Tang said he hoped the news would “spur other member states” to join the platform.
Tang said: “We are bringing together creators, industry, governments and other stakeholders from across the creative ecosystem to help creators understand how to use IP to bring their creations to the world and sustain themselves.
“This will also support the growth of creative industries everywhere, which is a key sector for many countries.”
In its role as a sponsor, the UKIPO will support the Creators Platform, which WIPO describes as an online rights awareness platform featuring contributions from high-profile creators in the music industry.
UKIPO chief executive Tim Moss said creators “need access to the right information to help them make informed decisions”.
“This exciting project aims to provide artists and others involved in the creative process globally with access to key information which will support them in their careers. We invite other member states to consider joining this important and timely initiative,” Moss said.
Merger makes Spruson & Ferguson Australia’s largest IP firm
Shelston IP has joined Spruson & Ferguson Australia to create the country’s biggest IP firm, it was announced on Monday, November 1.
The combined firm will operate under the Spruson & Ferguson brand, housing a total of 200 employees, including 100 IP professionals.
Full integration of the two firms will be completed by December 13.
Spruson managing director David Kennedy said the combined firm could offer clients “access to the largest team of IP experts in Australia, with easy access into the Asia Pacific [region]”.
“We will also be able to offer staff enhanced career opportunities as part of a larger firm, with an enviable client base,” Kennedy added.
The firm will add more than 25 Shelston lawyers to its ranks as part of the merger. Kennedy will continue to lead the combined team in his role as managing director.
First post-Arthrex USPTO director review granted
The USPTO agreed to review a decision from the Patent Trial and Appeal Board on Monday, November 1, marking the first time a re-hearing has been granted by the USPTO head since the Supreme Court’s decision in US v Arthrex.
In Arthrex, handed down in June, SCOTUS found that the appointment of administrative patent judges at the Patent Trial and Appeal Board (PTAB) was unconstitutional, but that this could be remedied by making its decisions subject to review by the USPTO director.
The order, published on Monday, November 1, from acting USPTO director Drew Hirshfeld concerned patent number 9,819,057 (‘057), owned by Samsung.
Hirshfeld accepted one of the four grounds for review put forward by Samsung, namely that claims five and 17 of the ‘057 patent were entitled to a September 7, 2012, priority date and the patentability of those claims should be reviewed in view of that date.
Counsel have previously speculated about whether Arthrex might make a political animal of the USPTO director, with opinion seemingly split on this point.
The director position had been vacant since Andrei Iancu, who was chosen by President Donald Trump, resigned on January 20.
However, last week President Joe Biden nominated Winston & Strawn litigator Kathi Vidal to the position.