The week in IP – GSK, Teva, Brexit, Blackberry, Snap, Lindsay Lohan, WestenGeco v Ion, false advertising, digital assistant patents

We’ve posted the following articles in the past week:

Top firms for copyright work: IP STARS rankings

PTAB round-up: quarterly filing rebounds; an end to BRI?; two informative decisions; first derivation trial instituted

Trade mark C&D letters: the good, the bad and the ugly

Global blockchain patent filing increased three-fold in 2017

A CRISPR picture - patent filing and litigation trends

Special Report: Will blockchain revolutionise IP?

Federal Circuit revives Oracle v Google

A jury award of $235 million for willful induced infringement of GlaxoSmithKline' congestive heart failure treatment patent has been overturned, according to Docket Report.

The District of Delaware granted Teva's renewed motion for judgment of noninfringement as a matter of law because substantial evidence did not support the jury's finding that defendant induced doctors to infringe.

Judge Leonard Stark wrote: "[Plaintiffs] failed to prove by a preponderance of the evidence that [defendant's] alleged inducement, as opposed to other factors, actually caused the physicians [i.e., as a class or even at least one of them] to directly infringe,' by prescribing generic carvedilol and to do so for the treatment of mild to severe CHF. Without proof of causation, which is an essential element of [plaintiffs'] action, a finding of inducement cannot stand.”

The judge added Teva’s “uncontroverted evidence of alternative factors that caused physicians to prescribe carvedilol in an infringing manner cannot be ignored”.

A number of European intellectual property organisations have issued a joint statement on Brexit to the European Commission following the publication of its recent draft withdrawal agreement and the ongoing negotiations between the EU and UK.

The statement, signed by AIM, APRAM, BMM, CITMA, ECTA, INTA and MARQUES, sets out proposed solutions to some of the issues posed by IP post-Brexit.

The joint statement covers: existing registered IP rights; pending applications; unregistered designs; use requirement; exhaustion of rights; enforcement; and rights of representation.

CITMA President Kate O’Rourke said in a statement: “It is important to show there is agreement across a number of organisations on the solutions to how IP should be handled post-Brexit. Minimising cost to business and maximising legal certainty are very important for all businesses and IP professionals both in the UK, Europe and beyond.

“We have been working with our colleagues across Europe since the referendum result, to put forward the best available solutions to how IP should be handled once the transition period has concluded. UK professionals retaining the right to practice before the EUIPO is of paramount importance and we continue to push for a solution.”

Blackberry has accused Snap of infringing its patents for messaging technology, reports Bloomberg. The complaint is similar to a case brought against Facebook last month in which Blackberry alleged the social network’s apps copy methods for displaying messages.

The new lawsuit accuses Snap of infringing six patents issued in 2012 and 2014, two of which were also included in the suit against Facebook.

Lindsay Lohan has lost an appeal in New York that accused the makers of the Grand Theft Auto V video game of invading her privacy, reports Reuters.

The actress had claimed that characters in the game looked and sounded like her. The state Court of Appeals by a 6-0 vote ruled that Take-Two Interactive Software’s depictions were “nothing more than cultural comment”. The court said the game depicted a generic “twenty something” woman.

“The amended complaint was properly dismissed because the artistic renderings are indistinct, satirical representations of the style, look, and persona of a modern, beach-going young woman that are not reasonably identifiable as plaintiff,” Judge Eugene Fahey wrote.

Eric Goldman, professor of law at Santa Clara University School of Law, commented in a blog post: “It would have been better if the court had found a more general way to resolve this case, rather than the relatively fact-specific nature of its ruling. We are seeing way too many problems with overexpansive publicity rights in video games, especially compared to other media.”

The Patently-O blog gave an overview of the three patent cases at the US Supreme Court this term, which Dennis Crouch noted is a “light” docket. The two PTAB cases – Oil States and SAS – already been argued and the opinions are pending.

The third case, WesternGeco v Ion Geophysical, is being argued on April 16, and has a more narrow focus. It will address whether lost profit damages are available for an infringer’s extra-territorial use of an unlicensed export. Crouch commented: “The case would have been much bigger but for the 2007 Supreme Court decision in Microsoft v AT&T holding that electronic files don’t count as components under the export provisions of 35 USC 271(f).”

The petitioner and the alleged infringer have now filed their briefs. In addition, there are two supporting briefs to Ion’s defence from the Electronic Frontier Foundation and Fairchild Semiconductor. Crouch noted: “Both the EFF brief and the Fairchild Semiconductor brief argue, inter alia, that the proposed ‘worldwide damage regime’ will have the negative consequence of overcompensating patent owners.”

In a blog post, EFF explained that Section 271(f) was enacted to close a loophole relating to certain exports but was not intended to expand patent remedies to regulate international use.

“If that was the only issue, however, the case might not have much impact. Section 271(f) cases are fairly rare,” wrote EFF’s Daniel Nazer. “But a much bigger question is lurking in the background. The Solicitor General argued that overseas damages should be available in all patent cases if domestic infringement can be seen as a cause of overseas sales or uses. Thanks to today’s global supply chains, this could radically expand the scope of US patent law and inflate damage awards.

“On this broader question, we explain that making extraterritorial damages available in all patent cases would harm US innovation.”

Harvard Law School professor Rebeccca Tushnet on her blog brings news of an “actual jury verdict favoring plaintiff in false advertising case based on false patent claims”, in Hillman Group v Minute Key.

The parties compete in the self-service, automatic key duplication industry. Tushnet picks the story up: “Hillman initially sued Minute Key, seeking a declaratory judgment of non-infringement and invalidity of US Patent No. 8,532,809; Minute Key provided Hillman with a covenant not to sue, but Hillman’s claims under the Lanham Act/Ohio Deceptive Trade Practices Act continued based on allegedly false and misleading representations of patent infringement to Walmart, the parties’ mutual customer for key duplication machines.  A jury trial resulted in a verdict in favor of Hillman.”

The jury found that Hillman proved by clear and convincing evidence that Minute Key knew that Hillman’s FastKey kiosk did not infringe the patent but still represented to Walmart that it did. The blog post includes some emails that, to be put it nicely, did not help Minute Key’s case, which Tushnet describes as “the bad stuff that almost always shows up in discovery”.

The jury awarded $164,072 in damages.

Patent applications for Amazon and Google’s digital assistants hit the news this week. The New York Times reported that both companies have filed patent applications that cover an array of possibilities for how devices could monitor more of what users say and do.

The newspaper reported: “In one set of patent applications, Amazon describes how a ‘voice sniffer algorithm’ could be used on an array of devices, like tablets and e-book readers, to analyze audio almost in real time when it hears words like ‘love,’ ‘bought’ or ‘dislike.’ A diagram included with the application illustrated how a phone call between two friends could result in one receiving an offer for the San Diego Zoo and the other seeing an ad for a Wine of the Month Club membership.”

Applications from Google describe how audio and visual signals could be used in smart home setups. One application covers how audio monitoring could help detect when a child is up to “mischief” at home.

The New York Times continued: “A separate application regarding personalizing content for people while respecting their privacy noted that voices could be used to determine a speaker’s mood using the ‘volume of the user’s voice, detected breathing rate, crying and so forth,’ and medical condition ‘based on detected coughing, sneezing and so forth.’”