This week in IP: Software developer jailed for IP theft, AI co-author seeks US protection, and more
UAE adopts large law reform; J&J to license COVID vaccine patent; Lululemon sues Peloton; Moderna loses COVID appeals; USPTO teams up with crime dog; Pulp Fiction suit thrown out; Fed Circuit nominee grilled
Vidal tackles Senate questions on Section 101, Fintiv and SEPs
Kathi Vidal faced a bombardment of questions from members of the Senate Judiciary Committee on Wednesday, December 1, as part of her nomination hearing for the position of USPTO director.
Vidal, the managing partner of Winston & Strawn’s Silicon Valley office, was selected by President Joe Biden for the role on October 26, more than 10 months after former director Andrei Iancu stepped down.
The nominee was questioned by several intellectual property-savvy senators, including Patrick Leahy, Chris Coons and Thom Tillis, on matters related to Section 101, standard essential patents, the Fintiv rule at the Patent Trial and Appeal Board and drug pricing.
Click here to read the full article.
Other Managing IP stories published this week include:
Why in-house need specialist and generalist patent litigators
The road to Waco: Alan Albright on his rise to fame and infamy
HPE IP chief on why making green patents free is ‘force for good’
Albright picks IP litigator Derek Gilliland as new magistrate judge
Software developer who circumvented IP rights jailed
A UK man who built a software package that enabled users to illegally access subscription-based channels including BT and Sky was jailed for two and a half years on Tuesday, November 30.
The software package created by 42-year-old Stephen Millington was distributed to thousands of users, enabling them to access television and film content without payment, causing heavy losses to the legitimate broadcast industry.
Millington appeared at Chester Crown Court in England after pleading guilty to multiple fraud and copyright offences.
His software package was referred to as ‘stephen-builds’.
He also supplied ‘supremacy’ and ‘supremacy sports’ add-ons, which enabled users to access content via a Facebook group.
In addition, Millington shared login details for his Netflix, allowing others to access his accounts.
The case was brought after the UK-based Federation Against Copyright Theft (FACT) worked alongside BT to identify Millington. Once they found him, they referred the case to the North West Regional Organised Crime Unit and Greater Manchester Police.
Kieron Sharp, chief executive of FACT, said: “Enabling illegal access to content is fraud, a crime with serious consequences, as shown in this sentencing.
“It is clear that the courts will hold those choosing to break the law to account and will deliver convictions that will have a significant and long-lasting effect on individuals involved.”
Richard Crisp, corporate investigations manager at BT, added: “The development of add-ons that carry unauthorised channels causes a significant loss of revenue for the UK creative industries.
“BT will continue to work with FACT and wider industry partners to prosecute developers enabling this illegal distribution.”
Indian AI copyright co-author seeks protection in the US and Canada
Ankit Sahni, who secured India's first-ever copyright registration recognising an AI tool as the co-author of an artwork last year, filed corresponding applications at the USPTO and CIPO on Wednesday, November 1.
The applications designate the AI tool RAGHAV Artificial Intelligence Painting App and Sahni as co-authors, and also list Sahni as the owner of the artwork.
RAGHAV created the digital painting 'Suryast' by using Vincent van Gogh’s painting ‘Starry Night’ and a photograph taken by Sahni as base datasets.
Sahni tells Managing IP that his team wanted to take the debate to a global level to see how different IP offices react to the legal test case.
"We filed in the US and Canada in phase one, but we plan to apply for copyright registration in more jurisdictions in the future."
But he notes that not many countries have a system in place for securing copyright registration through the IP office, as opposed to patents.
While the DABUS case has tested whether an AI tool could be a patent inventor in several jurisdictions, the copyright position has yet to be assessed on a global scale.
Sahni expects objections to his copyright applications from the USPTO and CIPO on the grounds that an AI app cannot be nominated as an author.
Fed Circuit nominee Len Stark grilled by senators
Judge Len Stark, President Joe Biden’s nominee for the Court of Appeals for the Federal Circuit, faced questions from senators at his judiciary nomination hearing on Wednesday, December 1.
Stark, a judge at the District Court for the District of Delaware, was probed by Senators Patrick Leahy and Chris Coons on appeals from the Patent Trial and Appeal Board, the District Court for the Western District of Texas and his experience as a trial judge.
When Stark introduced himself, he said it was a special privilege to be the first Delawarian to be nominated to the Federal Circuit and the first to be nominated by a Delawarian president.
His first patent-related question came from Leahy, who noted that the Federal Circuit had increasingly raised the bar for Article 3 standing.
The senator asked: “Do you agree judicial review is important and both sides should have a chance to seek review before being estopped?”
Stark replied: “In all instances when an issue related to the PTAB comes before me, I apply the law to the specific facts of the case.”
Leahy then turned to western Texas, asking whether he saw any issues with the fact that a quarter of US patent cases were going to one venue.
Stark gave a similar answer, saying he saw patent venue disputes regularly in Delaware and in each case looked at the specifics before him and applied the law.
Coons later asked how Stark thought his experience at the District of Delaware might help him at the Federal Circuit.
Stark said he would bring with him a recognition of how challenging it was to put together a reviewable record in a patent case.
“The tech is always complex and the facts are challenging and patent litigators, as you know, often disagree with one another,” he said.
“I estimate in a typical patent case that goes to trial, I make many hundreds of decisions and maybe more than 1,000 decisions. Typically, only a handful of those decisions will ever get appealed to the Federal Circuit.
“I would bring with me an understanding of the context in which those appeals arise.”
Stark was questioned in the same hearing as USPTO director nominee Kathi Vidal.
UAE adopts largest law reform in its history
Sheikh Khalifa bin Zayed Al Nahyan, the president of the UAE, recently approved a sweeping reform of 40 laws in the country, including those related to trademarks, copyright and industrial property, reported state media Emirates News Agency on Saturday, November 27.
The amendments will come into effect on January 2, 2022.
The trademark law amendment aims to expand the scope of protection available for individuals and businesses. The new law introduces provisions for the registration of three-dimensional trademarks, holograms, and non-traditional trademarks such as sound and smell marks.
Multiclass filing will also be available to applicants once the changes come into effect.
Some other progressive changes include the abolition of the requirement to have a trade licence to secure trademark registrations, and the grant of temporary trademark protection to small and medium enterprise owners for products displayed in exhibitions.
Applicants will also be able to register geographical names of products that originate from specific regions, countries or cities under the amended law.
As far as copyright is concerned, the amendments seek to maximise the contribution of creative industries in the UAE economy by strengthening protections on original works and neighbouring rights.
The industrial property law reform also offers stronger protection for patents, designs, and integrated circuits, and streamlines the procedures for their registration, use, exploitation, and assignment.
J&J to license generic COVID-19 vaccine for African market
Johnson & Johnson confirmed this week that it was in advanced talks with South African generics manufacturer Aspen on a deal to create a lower-cost version of its COVID vaccine.
The proposed licence would allow Aspen to produce its own-brand version of the J&J one-shot vaccine for sale across Africa.
Aspen confirmed on Tuesday, November 30, that it had reached a non-binding agreement for a licence, pending final negotiations.
The agreement would cover potential supply deals between Aspen and national governments of African Union member states, as well as multilateral bodies including COVAX, UNICEF, and the African Vaccine Acquisition Trust.
J&J chief scientific officer Paul Stoffels said the drug maker had been “committed to supporting Africa’s response to COVID-19 through our vaccine clinical development programme, large-scale implementation studies, first-of-their-kind purchase agreements, and COVID-19 vaccine manufacturing at Aspen”.
Vaccination rates in southern Africa are lagging behind richer nations, leading to fears that the region might incubate new mutant strains of the virus.
The Omicron variant, the latest to be flagged by the World Health Organization, was first sequenced in South Africa and is fuelling a surge in cases there.
The country has administered just 42 vaccine doses per 100 people, compared to the global average of 100 doses.
Lululemon hits Peloton with design patent suit
Canadian sportswear brand Lululemon Athletica sued rival and former business partner Peloton for design patent infringement on Monday, November 29.
The lawsuit filed at the US District Court for the Central District of California is the latest escalation in a legal dispute that grew out of the end of a co-branding agreement between the parties.
Just last week, Peloton filed its own suit accusing Vancouver-based Lululemon of infringing six design patents as well as trade dress. The patents mostly covered designs for sports bras and leggings.
The two brands had previously collaborated on a Peloton-branded line of sports apparel, which was supplied by Lululemon.
According to the Canadian brand, Peloton ended the arrangement earlier this year and then copied Lululemon’s designs.
“Peloton did not spend the time, effort, and expense to create an original product line. Instead, Peloton imitated several of Lululemon’s innovative designs and sold knock-offs of Lululemon’s products, claiming them as its own,” the suit claimed.
Lululemon adds that Peloton delayed its response to a cease-and-desist letter to pre-emptively file its own lawsuit last week.
“In requesting the extension, Peloton gave Lululemon the false impression that it needed and would use the additional time to properly respond to Lululemon’s substantive allegations.
“Instead, Peloton used the delay to secretly prepare its own complaint and pre-empt the lawsuit that Lululemon had so clearly threatened in its letter,” the complaint alleged.
USPTO teams up with McGruff the Crime Dog to fight counterfeiting
The USPTO teamed up with the National Crime Prevention Council to release advertisements on Tuesday, November 30, warning children and their parents against the dangers of counterfeits.
The ads depicted a group of children accidently starting a fire after purchasing a counterfeit tablet online. They warned viewers that buying fake products could cost them the health of their face, skin and eyes or scar them for life.
NCPC symbol McGruff the Crime Dog ended the ad by saying: “You’re smart. Buy smart.”
Drew Hirshfeld, who is performing the duties and functions of the USPTO director, said online fakes were a threat to the health and welfare of consumers and to brand owners.
“The USPTO is proud to team up with the iconic McGruff to help younger buyers avoid fakes and stay safe by making informed decisions about what they purchase.”
Paul DelPonte, executive director of NCPC, said no young person wanted to be duped by fake products. “This campaign equips them with the skills to take a bite out of counterfeits. It will save lives and will help choke off a growing global criminal enterprise.”
These ads were part of the Go For Real campaign that the USPTO and NCPC launched in November 2019.
Federal Circuit rules against Moderna on COVID vaccine cases
The US Court of Appeals for the Federal Circuit issued two rulings on Wednesday, December 1, that could open the door to clinical stage pharma company Arbutus suing Moderna for patent infringement over the latter’s COVID vaccine.
The rulings affirmed Patent Trial and Appeal Board decisions that certain claims in Arbutus’s patents were not obvious.
The court dismissed one of the appeals over US Patent 9,364,435 for lack of standing. Moderna claimed it had standing to appeal because there was a significant risk that Arbutus would sue for patent infringement over the COVID vaccine.
But the Federal Circuit pointed out that when Moderna filed this appeal in November 2019, it hadn’t developed its vaccine because the pandemic hadn’t yet begun, which meant that it didn’t have standing.
In the same opinion, the court reviewed a cross-appeal from Arbutus, but affirmed the PTAB’s decision that claims one to six, nine, 12, and 14 to 15 of its `435 patent were unpatentable.
In the other ruling, the Federal Circuit said Moderna had standing to pursue the appeal over US Patent 8,058,069 because it had demonstrated enough of a risk that it could face an infringement suit.
Moderna publicised its plans for its company’s COVID vaccine trial on September 17, 2020 and filed the appeal on September 23, 2020, which meant that the pharma business was able to use the risk of being sued as evidence for standing.
But the court still rejected the appeal on the merits.
Judges Alan David Lourie, Kathleen O'Malley and Kara Farnandez Stoll ruled on both decisions.
Pulp Fiction copyright claim out of time
Film studio Miramax has prevailed in a copyright dispute against the photographer who shot the famous poster for the film Pulp Fiction, it emerged this week.
In a judgment published on November 24, the US District Court for the Central District of California granted summary judgment in favour of Miramax on the basis that the photographer, Firooz Zahedi, did not bring the lawsuit in sufficient time.
Zahedi took the photo, which shows actress Uma Thurman smoking while lying on a bed, in April 1994. He claimed Miramax used the image on “untold thousands of consumer products”.
Miramax, meanwhile, claimed Zahedi took the picture as part of a work-for-hire agreement.
But it was a seemingly innocent social media post in 2015, in which Zahedi acknowledged he was not receiving royalties for Miramax’s use of the poster, that killed the case.
The post, according to Judge Dolly Gee, revealed that Zahedi knew Miramax had repudiated his ownership at least as far back as 2015.
The three-year statute of limitations attached to that date ended in 2018, so summary judgment was granted in favour of the studio.
Gee wrote: “Where the gravamen of a claim is ownership, the statute of limitations will bar a claim if the parties are in a close relationship and there has been an ‘express repudiation’ of the plaintiff’s ownership claim.”
The news comes shortly after it was announced that Miramax was suing director Quentin Tarantino for his attempted selling of Pulp Fiction-related non-fungible tokens.