This week on MIP: UPC 'hired guns', lawyer defends 'surprise' damages bid
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This week on MIP: UPC 'hired guns', lawyer defends 'surprise' damages bid

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The Court of Appeals for the Federal Circuit

We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP

CIPA president: UK ‘hired guns’ can compete with German UPC rivals

The story of the Unified Patent Court has so far been one of German domination.

But the new president of the UK-based Chartered Institute of Patent Attorneys (CIPA) for 2024 said that, in time, UK attorneys can disrupt their German colleagues’ position of leadership.

In an interview with Managing IP this week, Matt Dixon, of counsel at Cranach Patent Attorneys in London, spoke about the need for UK attorneys to market themselves more aggressively to international clients.

Dixon, who took on the CIPA role on January 1, also commented on the implications of a new Code of Conduct imposed by IPReg, the body that regulates patent and trademark attorneys in the UK, and the profession’s response to climate change.

Click here to read the full interview.

New Finnegan partner to offer ‘bird’s-eye view’ of copyright policy

Finnegan’s latest partner hire said she is excited to leverage her government and trade association experience to build the firm’s capacity to advise on copyright policy.

Anna Chauvet has rejoined Finnegan, the firm she left in 2012, to lead its copyright practice in Washington DC. The firm announced the news on Monday, January 8.

Chauvet was formerly vice president of public policy at trade association the National Association of Broadcasters. Before that she was associate general counsel at the US Copyright Office.

Click here to read the full story.

Other articles published by Managing IP this week include:

Lawyer defends ‘surprise’ UPC damages bid, mulls appeal

Chinese counsel: FRAND and AI litigation to loom large in 2024

Weekly take: Can Disney prevent a Mickey Mouse copyright horror show?

Five minutes with … Yihong Ying, Starbucks

AI dominance and a metaverse ‘comeback’: IP lawyers’ 2024 predictions

Elsewhere in IP

InterDigital: licensing and litigation

InterDigital has renewed its licence agreement with Panasonic, just days after winning a German injunction against Oppo for patent infringement.

The Panasonic licence, which covers InterDigital’s HEVC video patents, was confirmed on Wednesday, January 10.

“It is always gratifying to renew our agreements with a long-term partner like Panasonic,” said Eeva Hakoranta, chief licensing officer at InterDigital.

Meanwhile, on Monday, January 8, the Munich Regional Court granted an injunction against Oppo, which it deemed an unwilling licensee in negotiations with InterDigital.

SEPs and the UPC

Dolby has sued Hewlett-Packard and Asus at the Unified Patent Court for allegedly infringing patents licensed via the Access Advance patent pool.

The pool covers patents essential to the HEVC/H.265 video codec standard.

Nokia has also used the new forum to litigate its SEPs with a suit against Amazon and HP, filed in October.

Cult counterfeiter fined

A counterfeiter who made and sold 40,000 pirated DVDs at his UK home has been ordered to repay more than £75,000 ($95,000).

John Williams, 72 was also fined £7,500 and given a 16-month suspended jail sentence.

Williams pleaded guilty to one offence under the Copyright, Designs, and Patents Act 1998 and one under the Trademark Act 1994. He was told to pay a Proceeds of Crime Order of £77,182, plus prosecution costs.

The trading standards team at Suffolk County Council began investigating Williams after receiving a report of fake cult and classic DVDs being sold online.

IP-based lending

UK bank NatWest will give some businesses the chance to use their intellectual property as collateral to secure loans, it confirmed yesterday, January 11.

The bank will work with IP evaluation company Inngot to evaluate IP assets that could be used as security.

“As the UK’s leading business bank, we are delighted to have joined forces with Inngot, to provide a truly innovative and progressive proposition for high growth SMEs and scale-up businesses,” said Andy Gray, managing director of commercial mid-market at NatWest Group.

Bayh-Dole update

US Democratic Senator Chris Coons and Republican Thom Tillis introduced a new bill to require a study on the disclosure processes for IP developed by federal grantees on Wednesday, January 10.

The Improving Efficiency to Increase Competition Act of 2024 would require the US Government Accountability Office’s Comptroller General to conduct a study on barriers to efficient reporting and opportunities to improve the reporting system, among other issues.

The Bayh-Dole Act requires federal grantees and contractors to report any IP that has been developed using government funding.

Apple Watch latest

Health technology company Masimo asked the Court of Appeals for the Federal Circuit to deny Apple’s attempt to halt a ban on the importation of some of its smart watches on Wednesday, January 10.

Apple has argued that the Federal Circuit should pause a ban on Apple Watches while it appeals against a ban imposed by the International Trade Commission (ITC).

The ITC also filed a brief opposing the pause on Wednesday.

Apple was able to secure a temporary halt on the ban on December 27, pending the Federal Circuit's decision.

That's it for today, see you again next week.

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