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This week in IP: Stark confirmed to Fed Circuit, BASF and Carpmaels settle, and more

Len Stark, who is now set to join the Federal Circuit in March

China joins Hague System; EU aims for unitary SPC this year; EPO clarifies VICO edict; DoJ targets Hytera over trade secrets; Sarepta can’t challenge Nippon at PTAB; Arm replaces CEO with IP head; UKIPO publishes counter-infringement plan; McDonald's files metaverse marks

LG joins Avanci SEP pool as licensor

LG Electronics has joined the Avanci licensing pool as a licensor, making it the 49th standard essential patent owner to join the automotive-focused platform, it was announced yesterday, February 10.

Click here to read the full article. 

Other Managing IP stories published this week include:

Len Stark 'honoured' to become Federal Circuit judge

Leonard Stark was confirmed as a judge for the Court of Appeals for the Federal Circuit on Wednesday, February 9.

The former chief judge of the District Court for the District of Delaware will replace Kathleen O’Malley, who will retire from the court in March but will remain active on intellectual property policy.  

Stark told Managing IP yesterday, February 10: “I am grateful to President Biden for nominating me, and to the United States Senate for confirming me to the Federal Circuit. 

“I am honoured to be succeeding Judge O’Malley, the first former district judge to serve on the Federal Circuit. I have enjoyed being a district judge and look forward to continuing serving in the federal judiciary in a new and challenging role.”

O’Malley posted on LinkedIn yesterday, saying of Stark: “He is a brilliant jurist and a great man.”

The judge’s confirmation will come as welcome news to IP stakeholders. Counsel told Managing IP last November that Stark would be a fair, diligent and wise judge at the Federal Circuit if confirmed.

President Joe Biden announced his intention to nominate Stark to the Federal Circuit on November 3 last year.

Stark has worked as a district judge at the District of Delaware – one of the most popular courts for patent cases in the US – since 2010. He served as the court’s chief judge between July 2014 and July 2021.


BASF and Carpmaels’ ‘billion-pound’ patent war ends with a £1 award

German chemical company BASF and attorney firm Carpmaels & Ransford have concluded their high-profile dispute over a missed appeal deadline at the EPO, it emerged on Wednesday, February 9.

Mr Justice Adam Johnson found that the chemical business should be awarded nominal damages of £1 ($1.36) to account for Carpmaels’ missed deadline. BASF, however, was ordered to pay £3.5 million ($4.7 million) in legal costs to Carpmaels and its insurer.

The document outlining these outcomes clarified that BASF wouldn’t seek permission to appeal.

The dispute centred on a European patent (‘458 patent) that, according to the claim, occupied “vital space” in relation to complying with diesel emission standards. BASF contended that Carpmaels failed to file an appeal in time after the ‘458 patent was revoked by the EPO in 2012.

In October last year, the England and Wales High Court found that Carpmaels should only be liable for nominal damages. Those damages were set to be determined at a later hearing, which concluded last month.

The final outcome was a far cry away from the figures put forth by BASF in the initial claim, where it alleged that the total loss of profits it suffered was €1.05 billion ($1.2 billion).

The law firm, which admitted it was responsible for the loss of the appeal, said the case was a “misguided attempt to blame Carpmaels” and that the decision to revoke the patent was correct.

EPO clarifies VICO edict – twice

The EPO refused an appellant’s request for in-person oral proceedings on Friday, February 4.

This decision applied the law established in the Boards of Appeal’s (BoA) G1/21 decision in November 2021, which clarified that virtual hearings could proceed without the consent of both parties in a general emergency.

The Friday ruling followed an earlier decision, T1499/16, in January 2022, in which the BoA came to a similar conclusion.

These marked the first two times the boards have specifically referred to G1/21 when deciding to conduct proceedings virtually. In both cases, the patentees lodged appeals to postpone the in-person hearings to later dates.

The concept of VICO has not been without controversy. In the early stages of the technology's adoption, some parties told Managing IP that requesting in-person hearings could be used as a delay tactic.

US DoJ targets Hytera for trade secret theft

The US Department of Justice has charged telecoms company Hytera with conspiracy to commit trade secret theft, according to records that were partly unsealed on Monday, February 7.

In the documents from the District Court for the Northern District of Illinois, the DoJ alleged that the defendant hired Motorola Solutions employees and told them to take trade secret information from Motorola without authorisation.

The department also alleged that some of these employees accessed trade secret information from Motorola’s internal database and sent emails that described their plans to use the tech at Hytera, a Chinese manufacturer of radio transceivers and radio systems.

Hytera could have to pay a fine of three times the value of the stolen trade secrets if convicted.

The DoJ also charged the business and others with possession or attempted possession of stolen trade secrets, but redacted the names of the other defendants that hadn’t appeared in federal court.

Although these records were unsealed on Monday, the charges were filed on May 11 2021.

Sarepta loses rights to challenge Nippon’s patents at PTAB

The US Court of Appeals for the Federal Circuit ruled on Tuesday, February 8, that a contract prevented Sarepta Therapeutics from filing inter partes reviews against Nippon Shinyaku at the Patent Trial and Appeal Board.

The parties signed a confidentiality agreement that prevented them from filing patent suits and validity challenges until June 2021 and said any US patent disputes for the next two years had to be filed at the District Court for the District of Delaware.

The Federal Circuit said the plain language of the forum selection clause made it clear that Sarepta had to challenge validity at the District of Delaware, not at the PTAB.

This ruling reversed the decision of Judge Leonard Stark, who was confirmed to the Federal Circuit on Tuesday, February 9. Stark denied the motion for a preliminary injunction that would have enjoined Sarepta from proceeding with its IPR petition.

Nippon sued Sarepta in the Delaware court in July for breach of contract after Sarepta filed seven IPRs. Nippon also requested a declaratory judgment that it hadn’t infringed Sarepta’s patents, that said registrations were invalid, and that Sarepta had infringed its patents.

The board had granted institution in all seven IPRs as of January 13.

China joins Hague System to protect international designs

China acceded to the Hague System for the International Registration of Industrial Designs on Saturday, February 5, allowing applicants from other member countries to secure international design protection in China.

The move also allows Chinese proprietors to secure international design registration in the 94 countries covered under the Hague System.

The provisions will enter into force in China on May 5.

WIPO offers the international design registration facility under the Hague System to help rights owners secure design protection simultaneously in multiple jurisdictions by filing a single international application with one set of fees.

Unlike the Madrid System for trademarks, design applicants using the Hague System don’t need to file a national application before seeking international protection.

WIPO director general Daren Tang said: “China’s accession to the Hague System means that the design community in China will find it easier to protect and bring their designs out of China, and overseas designers will find it easier to move their designs into one of the world's largest and most dynamic markets."

Along with the Hague System, China has also acceded to WIPO’s Marrakesh Treaty, which makes the production and international transfer of specially adapted books for blind or visually impaired people easier.

Arm replaces CEO with IP head after Nvidia deal collapses

The CEO of Arm has been replaced by the company’s intellectual property head in the wake of a collapsed acquisition deal with Nvidia, it emerged this week.

Nvidia’s planned acquisition of the semiconductor leader from SoftBank fell through due to “significant regulatory challenges,” the corporations said in a joint release on Tuesday, February 8.

Arm CEO Simon Segars stepped down shortly after the announcement and Rene Haas – president of the company’s IP group – took over the role with immediate effect.

Haas joined Arm in 2013 as vice president of strategic alliances and became president of IP in January 2017.

Before that, he served as vice president and general manager of Nvidia’s computing products business unit between 2006 and 2013.

“It is an honour to lead the world’s most influential technology company at a time when Arm’s market opportunity has never been greater,” said Haas.

“We are now uniquely positioned to address the diverse demands of AI, cloud, IoT, automotive and the metaverse.

“And with the uncertainty of the past several months behind us, we are emboldened by a renewed energy to move into a growth strategy and change lives around the world – again.”

SoftBank will proceed with an initial public offering of Arm in the US before March 31 2023.

Arm – a leading technology provider of semiconductor IP – creates and licenses microprocessor designs and architectures. More than 95% of the world’s smartphones and tablets use its processors.

When Nvidia announced its $40 billion bid to buy the British semiconductor company in September 2020, several Arm customers and end users expressed concerns.

Regulators were also worried that Nvidia would gain an unfair advantage over other companies should the deal go through.

Consequently, the US Federal Trade Commission sued Nvidia to block the deal on antitrust grounds in December. The buyout also faced scrutiny in the UK and the EU and was awaiting regulatory approval in China.

European Commission aims for unitary SPC this year

The European Commission aims to finalise plans for a unitary supplementary protection certificate in the first quarter of this year, it was announced this week.

The commission said that while the current SPC regime was fit for purpose, differences between EU member states in enforcement and administration created inefficiencies.

“This initiative will put in place a unitary SPC and/or a single procedure for granting national SPCs. This will make SPCs more accessible and efficient, and benefit the health sector,” the commission stated.

Managing IP has previously reported on the strong enthusiasm of in-house counsel at pharmaceutical innovator companies for a unitary SPC system.

Progress on a unitary SPC comes as the Unified Patent Court edges closer towards opening its doors, potentially later this year.

Advocates of a unitary SPC have said such a right would reduce costs and streamline enforcement, much like a unitary patent.

Separately, the commission announced it would propose a revised compulsory licensing regime in the third quarter of this year.

It said the current arrangement was too fragmented and ill-equipped to deal with EU-wide crises.

In particular, the commission noted that it would pay attention to the efficiency of current EU rules on compulsory licensing for export to “countries with public health problems”.

The two initiatives come as part of a flurry of activity from Brussels, where the commission is also finalising a new policy on standard essential patents.

UKIPO publishes counter-infringement plan

The UKIPO revealed a five-year counter-infringement plan aimed at making UK intellectual property rights the “best protected in the world” last Friday, February 4.

While the UKIPO said it couldn’t reveal specific actions that could be taken over the next five years, it said it was committed to developing the infrastructure required to deal with major IP infringement issues.

The plan included a commitment to establish a “national centre of excellence” for the analysis of IP enforcement and to foster greater collaboration between government agencies.

It also identified a need to embed IP enforcement expertise in regional authorities, something the UKIPO said would further improve the quality of intelligence available on IP infringement and enforcement issues.

The five-year strategy included a commitment to ensure the UK’s IP regime wouldn’t be weakened as part of new trade deals agreed after Brexit.

When introducing the plan, science, research, and innovation minister George Freeman said IP enforcement was needed to make the UK a “global science superpower”.

“Now, more than ever, we must support innovators as the UK looks to embrace the science and innovation that is at the heart of our post-pandemic economic plan to build back better,” Freeman said.

McDonald's gears up for metaverse with trademark filings

American fast-food chain McDonald's has applied for 10 trademarks covering metaverse-related activity, it emerged this week.

Josh Gerben, trademark attorney and founder of Gerben Intellectual Property, tweeted on Wednesday, February 9, that McDonald’s submitted trademarks for “a virtual restaurant featuring actual and virtual goods” and “operating a virtual restaurant featuring home delivery.”

McDonald's is headed to the metaverse. The company has filed 10 (TEN!) trademark applications indicating it plans to offer "a virtual restaurant featuring actual and virtual goods" and "operating a virtual restaurant featuring home delivery."#Mcdonalds #Metaverse pic.twitter.com/J9pK7EK9nl — Josh Gerben (@JoshGerben) February 9, 2022

McDonald's also aimed to trademark “online actual and virtual concerts” and other entertainment services within its virtual McCafe, according to the filings.  

The restaurant chain isn’t the first food business to try to trademark metaverse-related brands, however. Bakery and cafe chain Panera Bread submitted a similar application on February 3 for a virtual restaurant and cafe chain called Paneraverse.

Gerben suggested that these filings were only the start of a broader trend. “I think you’re going to see every brand that you can think of make these filings within the next 12 months.” 

Managing IP reported in November that IP owners should embrace the metaverse sooner rather than later – and it seems they may have taken heed of that advice. 

 

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