This week in IP: USPTO releases Fintiv guidance, Paris Hilton faces CCB suit, and more
Nokia beats Oppo in Germany; Australia and EPO to continue PPH; Ed Sheeran nets nearly £1m in legal fees; Google backs down in €500m French appeal
SEP counsel on edge over future of injunctions in US
Counsel concerned with standard essential patent practices in the US were put on edge this month after two big developments on injunctive relief.
First, the USPTO, Department of Justice and National Institute of Standards and Technology withdrew their 2019 policy statement on SEP remedies and FRAND (fair, reasonable and non-discriminatory) commitments on June 8 and chose not to replace it with a different policy.
A day later, the Court of Appeals for the Federal Circuit considered in Philips v Thales whether SEP owners could seek exclusionary relief at the International Trade Commission.
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Other Managing IP stories published this week include:
How to craft compelling EPO amicus briefs
Digital dreams or dilemmas? Reflections on the Managing IP Summit
Exclusive: Peppa Pig wins Russia IP ruling on appeal
Exclusive: UPC committee in U-turn on access to judgments
Exclusive: ‘Russian warship’ applicant seizes control of rival filing
Takedowns inadequate but needed for infringing NFTs: counsel
Managing IP Summit: Strong evidence key to high damages in China
Managing IP Summit: Auto and telecoms leaders debate SEP fix
Three fair use issues challenging US litigators today
Breaking: Leahy and Tillis introduce PTAB Reform Act
USPTO releases Fintiv guidance
The USPTO announced new Fintiv guidance on Wednesday, June 22.
The guidance addressed some concerns patent challengers had with Fintiv, which compels Patent Trial and Appeal Board judges to discretionarily deny inter partes reviews if parallel district court proceedings are due to finish first.
Managing IP announced that the office would present such guidance last week.
The new policy set out that the board wouldn’t use Fintiv to discretionarily deny petitions based on parallel proceedings at the International Trade Commission.
It also said the board wouldn’t deny petitions under Fintiv when petitioners presented compelling evidence of unpatentability or agreed not to pursue the same grounds in parallel district court proceedings.
The document acknowledged that trial dates often changed and were unreliable, noting that parties could present evidence regarding median time to trial for civil actions in district courts.
The USPTO presented data on how often Fintiv had actually been used.
It noted that there were only three instances of Fintiv denials in pharmaceutical patent challenges and that the board had issued no such denials based on parallel litigation in the District Court for the Western District of Texas since August 2021.
Paris Hilton faces Copyright Claims Board suit
Fairy wing designer Angela Jarman filed a complaint at the US’s new Copyright Claims Board against a company owned by Paris Hilton on Thursday, June 16 – the day of the launch of the board.
The complaint read: “My own photos of my design were used in image edits and displayed on 11:11 Digital and Paris Hilton’s social media accounts without my permission. The same IP, Titania Fairy Wings, has actually been infringed three different times by Paris Hilton and [her company] 11:11 Digital.
“I am seeking roughly $12,000 in relief, based on previous copyright settlements for online displays of my work and due to the frequency with which the same IP has been infringed by Paris and 11:11 Digital.”
Other big-name defendants at the board include Apple, YouTube and Columbia Records.
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.
Nokia claims win over Oppo in global patent battle
Nokia has secured victory in the first stage of its global patent battle with Oppo after a German court granted an injunction on Tuesday, June 21.
The Mannheim Regional Court found in Nokia’s favour in its case against China-based Oppo and its German subsidiary OnePlus. OnePlus supports the marketing and sales of Oppo-branded smartphones in Germany.
The case concerned Nokia’s European patent, EP1704731, which identifies hidden networks that do not advertise their presence in beacon signals.
Oppo had also lodged a parallel lawsuit at the German Federal Patent Court arguing that the patent was invalid.
But Judge Holger Kircher ruled that a stay pending nullity proceedings was not appropriate, instead granting an injunction affecting all of Oppo’s smartphones sold in Germany.
A Nokia spokesperson said: “The judgment confirms the strength of Nokia’s leading patent portfolio.
“We have conducted our negotiations in a fair way and hope that Oppo will now accept its obligations and, like its competitors, renew its licence on fair terms, rather than continue to operate without one.”
Oppo signed a patent licence with Nokia that expired at the end of June 2021. Nokia took legal action when the companies failed to negotiate a renewal agreement.
Nokia has also sued Oppo in the UK, France, Spain, China, India, Indonesia, and the Netherlands. Another lawsuit filed in Russia was abandoned following that country’s invasion of Ukraine. Nokia instead filed additional cases in Finland and Sweden.
The Mannheim court is expected to rule on another case between the pair concerning standard essential patents on July 5.
Australia and EPO to continue PPH
Australia’s intellectual property office, IP Australia, and the EPO will continue their Patent Prosecution Highway partnership following a successful pilot stage, it was announced on Monday, June 20.
Under a PPH, a patent applicant who has received a ruling that at least one claim in an application is patentable or allowable can fast-track examination of a corresponding application filed with the other partner office.
Australian patent applicants may continue to request fast-track examination of any corresponding applications filed at the EPO. The partnership first launched in 2020.
According to IP Australia, the EPO is the second most popular destination for Australian overseas patent filings after the USPTO.
The IP Australia-EPO PPH programme covers applications filed via the Patent Cooperation Treaty and the Paris Convention.
Ed Sheeran team nets nearly £1m in legal fees
Two songwriters who sued Ed Sheeran for copyright infringement must pay £916,200 ($1.12 million) in legal fees, the England and Wales High Court ruled on Wednesday, June 22.
Grime artist Sami Chokri, who performs as Sami Switch, and songwriter Ross O’Donoghue claimed Sheeran’s 2017 hit ‘Shape of You’ substantially copied a musical phrase from a song they released in 2015.
They filed infringement claims against Sheeran and co-authors John McDaid, of the band Snow Patrol, and producer Steven McCutcheon.
Sheeran said baseless copyright claims were harming the music industry after the court ruled in his favour in April.
“Whilst we're obviously happy with the result, I feel like claims like this are way too common now and it's become a culture where a claim is made with the idea that a settlement will be cheaper than taking them to court, even if there's no basis for the claim,” he said.
Lawyers for Chokri and O’Donoghue said Sheeran’s team should pay their own legal fees because they failed to provide documents on time and had shown awkwardness and opacity throughout the proceedings.
But Mr Justice Antony Zacaroli said none of those documents would have made a difference to the pair’s case if Sheeran’s side had provided them earlier.
“None of the disclosure nor explanations, once provided to the defendants, caused them to alter their approach at all.
“Instead, they not only maintained their attack on Mr Sheeran but broadened it by asserting that he was a ‘magpie’ who habitually misappropriated song ideas from other writers,” the judge wrote.
Zacaroli ordered an interim payment ahead of another hearing to finalise the sum.
“I consider it is appropriate that the claimants’ success is reflected in an order that their costs are paid by the defendants, without reduction save for that which is made as part of the process of detailed assessment,” Zacaroli said.
Google backs down in €500m French appeal
Google owner Alphabet has backed down in a dispute with France’s competition authority over the platform’s obligation to pay publishers for news content, the regulator announced on Tuesday, June 21.
The authority (Autorité de la concurrence) accepted Alphabet’s commitments to overhaul its system for compensating publishers, and the tech firm dropped its appeal against a €500 million ($528 million) fine paid last year.
Alphabet agreed to share information on its use of news content and any related revenues with publishers to assist them with their negotiations for royalty payments.
The tech company will be required to share data including click-through rates of content on Google Search, Google News and Google Discover, as well as data on Google's revenues from online advertising in France.
An independent trustee will supervise publishers’ requests for additional information ahead of any negotiations.
Under the commitments, Alphabet must make publishers an offer for compensation within three months of the start of negotiations.
If the parties are unable to agree, they can ask an independent arbitrator to determine appropriate compensation.
Alphabet made the commitments last month in an updated submission to the competition regulator, which rejected five previous versions submitted after December 2021.
Benoît Cœuré, president of the competition authority, said publishers would benefit from greater financial security as a result of the deal.
“For the first time in Europe, the commitments taken by Google provide a dynamic framework for negotiation and sharing of the information necessary for a transparent assessment of the remuneration of direct and indirect related rights,” he said.