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This week in IP: Lidl shelves Tesco claims, US’s new copyright board opens, and more


Oracle wins $54m from HPE in copyright battle and Optis beats Apple on validity appeal

Leahy and Tillis introduce PTAB Reform Act

US senators Patrick Leahy, John Cornyn and Thom Tillis have introduced a new bill related to the Patent Trial and Appeal Board.

Click here to read more.

Other Managing IP stories published this week include:

Vidal bolsters clarity with new PTAB prior art guidance: counsel

Managing IP Summit: how COVID changed IP

UPC special focus: Review licensing deals to avoid heartbreak, counsel warn

Exclusive: UKIPO clears patent backlog for first time in 15 years

New EPO tribunal could ease ‘painfully slow’ staff appeal routes

Exclusive: USPTO to release Fintiv guidance before month’s end

Issa could drop House RAIA soon after Leahy-Tillis bill agreed

Data lays bare drop in Chinese trademark filings abroad

UK judge sends stark message over poor expert witnesses

Huawei hints at deal with Sisvel patent pool

‘Covidiot’ shows morality should not be IP office issue: lawyers

Lidl gets Tesco arguments shelved in UKTM row

In an early win for the German supermarket chain in its $3 million infringement case, Lidl beat the UK’s largest supermarket brand Tesco on its counterclaim of bad faith filing at the England and Wales High Court on Monday, June 13.

Mrs Justice Joanna Smith found that Tesco hadn’t provided enough evidence to back up the assertion that Lidl trademarked its logo over a blank yellow-and-blue sign in bad faith. Tesco had argued that Lidl never intended to use the sign without its branded logo.

Citing the ruling in Sky v Skykick, Smith wrote in her judgment that while lack of intention to use a trademark may evidence bad faith, it wasn’t possible to equate the two in every circumstance.

“As Sir Christopher Floyd said in Skykick: ‘Lack of intention to use, on its own, does not amount to bad faith’,” she noted.

The two supermarkets are now set to have the full matter heard by the High Court.

Lidl will argue in the £2.35 million ($2.88 million) case that Tesco exploited the background to its trademarked logo – a blue square containing a yellow circle with a thin red border – to promote its hugely popular Clubcard discounts.

Tesco introduced its unique Clubcard loyalty scheme prices three years ago, which it advertises using a yellow circle cropped onto a blue square.

As part of the evidence backing its claim, Lidl put forward the results of a survey, in which interviewees were shown the disputed background without the Lidl name and asked what it was.

In her last edict, Smith also threw out Tesco’s assertion that the survey’s results couldn’t be used in trial.

Tesco's lawyers had argued that the survey results ought not to be included because, among other things, the way the questions were phrased had been leading.

A trial date has yet to be set by the High Court.

Oracle wins $54m from HPE in copyright damages

A California federal jury awarded Oracle $54 million in damages in its copyright infringement case against Hewlett Packard Enterprise (HPE) on Tuesday, June 14.

The jury from the District Court for the Northern District of California gave Oracle $30 million for copyright infringement and said HPE was liable for a further $24 million for intentionally interfering in the plaintiff’s customer relationships.

Oracle convinced the jury after a three-week trial in Oracle v HPE that the defendant misused its software to maintain the Solaris operating system for customers using Oracle servers, despite lacking a support contract with the company.

Part of Oracle's revenue from Solaris came from contracts to provide customers with software patches and other technical support. Other companies competed with Oracle to provide these services, including HPE.

HPE allegedly infringed Oracle's copyrights along with software-support provider Terix, which settled a related lawsuit with Oracle in 2015 for nearly $58 million.

HPE argued that it hadn’t misused Oracle's copyrights nor caused the company any harm.

Judge Jon Tigar at the Northern District of California threw out Oracle’s case in a summary judgment in 2019, but the Court of Appeals for the Ninth Circuit revived the matter the following year.

A spokesperson for HPE said the company disagreed with the latest verdict and was evaluating its options.

Copyright Claims Board goes live

The US’s Copyright Claims Board went live today, June 16.

As of then, parties could file claims, opt out of proceedings, reference CCB handbook materials, and contact the CCB with questions on Claimants could also register for eCCB, the board’s electronic filing and case management system.

Shira Perlmutter, register of copyrights said the office was thrilled to open the board’s doors.

“The Copyright Office, the Library of Congress, and the CCB staff have worked hard over the past year and a half to achieve this exciting milestone,” she said.

“The CCB has been designed to be user-friendly and will contribute to the office’s goal of copyright for all, which aims to make the copyright system as understandable and accessible to as many members of the public as possible, including individuals and small businesses.”

The CCB was set up to hear copyright cases with actual damages of $30,000 or less. The forum hears infringement disputes and oversees claims for declarations of non-infringement and for misrepresentation during the notice and counter-notice process set out in the Digital Millennium Copyright Act.

Claims are decided by Brad Newberg, David Carson and Monica McCabe, the first three copyright claims officers at the CCB.

Managing IP interviewed Newberg last week about what would go into making these rulings.

Optis beats Apple on validity appeal

The England and Wales Court of Appeal in London rejected Apple’s attempt to invalidate an Optis standard essential patent on Monday, June 13.

Apple asked the court to look at whether the patent licensor’s SEP was anticipated by prior art, but the appellate body decided that the claims were novel. The patent related to a method and arrangement in a wireless communication network.

Mr Justice Richard Meade said in the first instance judgment in June 2021 that the patent was valid, essential and infringed, but allowed Apple to appeal on validity.

The companies are now in a fair reasonable and non-discriminatory licensing (FRAND) dispute at the England and Wales High Court, which also started on Monday. The hearing will determine how much the tech company would need to pay for a global licence.

Meade said at the High Court in September 2021 that Apple had to agree to take a licence on FRAND terms or face an injunction.

More from across our site

The UPC held a pilot training system for its new IT system in London last Thursday, June 30, and a full programme will follow later this year
In-house sources say clarity on what counts as lawful access to data will be key to the success of the UK’s new copyright exception
The attitude of ISPs continues to shift following a copyright claim filed at the England and Wales High Court
The EU is seeking to create a single market for data and trade secrets owners will need to prepare early, according to IP lawyers at Osborne Clarke
In-house and private practice counsel discuss issues with pre-grant opposition in India, including the rise of non-speaking orders and straw man filings
The US Supreme Court rejected an appeal on American Axle, dashing hopes of a judicial fix to patent eligibility uncertainty
The Copyright Office refused to grant protection on the basis that the authorship couldn’t be distinguished from the final work produced by the program
COVID vaccines top Clarivate’s new brands list; Fed Circuit reverses Coca-Cola’s TTAB win; Skechers sues Brooks; USPTO to retire Public PAIR tool; CCB sees cricket complaint
Lawyers should pay attention to APJs’ questions and remember that PTAB proceedings aren’t jury trials, say former PTAB judges
The USPTO cancelled ‘Galavava’ and 'Surfstar Wake' and partly cancelled ‘Heika’ this month
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