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This week in IP: in-house balance budgets, DoJ updates IEEE letter, Sharp beats Daimler

Managing IP rounds up the latest trademark, copyright and patent news, including some stories you might have missed

In-house counsel tackle shrinking budgets with new portfolio plans

COVID-19 is forcing companies to make hard choices on how to trim their budgets, and in-house lawyers are responding by finding creative ways to save money and protect their patent portfolios from their companies’ cutting shears, reports Charlotte Kilpatrick.

Lawyers from IT, insurance, chemical, and veterinary businesses have told Managing IP that they are either under pressure to reduce their intellectual property budgets or they fear that changing global circumstances will force them to reduce their costs in the coming year.

Many of them will have to trim their patent portfolios, a process that will involve deciding which registrations are absolutely necessary and which ones they can do without.

“I am coming in under my budget because we want to be on the good side of the finance department. That way, I can create a wish list for next year. If I’m careful with my budget now, I can invest in things I want to focus on next year,” says Cassandra Derham, senior IP attorney at Amadeus in Paris.

Read more here.

Other Managing IP stories from the week that you might like to read include:

Department of Justice updates IEEE business review letter

The US Department of Justice yesterday, September 10, updated the business review letter it issued to the standards-setting organisation IEEE in 2015, in an attempt to prevent the letter from being “repeatedly and widely misconstrued and misapplied”.

The original 2015 letter analysed proposed revisions to the IEEE Patent Policy, which were largely opposed by standard essential patent (SEP) owners, and came to the conclusion that the SSO had not violated antitrust law.

The DoJ’s new supplemental letter, which was intended to “supplement, update and append” the 2015 version, set out that the original letter should not be construed as an endorsement of IEEE’s policy.

The letter, written by assistant attorney general Makan Delrahim, also set out that the 2015 letter was outdated because of developments in SEP licensing matters such as FTC v Qualcomm, which was recently ruled on by the Court of Appeals for the Ninth Circuit, over the past five years.

“We fear that reliance on its analysis, both in the United States and abroad, could actually harm competition and chill innovation,” wrote Delrahim. 

The Antitrust Division’s supplemental letter also encouraged IEEE to consider the letter’s content and all applicable facts when assessing whether an update to the Patent Policy is warranted.

Sharp wins injunction against Daimler in Germany

In a new setback for German car manufacturer Daimler, the Munich Regional Court ruled in favour of Sharp yesterday, September 10, in a case involving one of the Japanese electronics company’s LTE standard essential patents.

The German court found that Daimler was an unwilling licensee, and granted an injunction, which it said Sharp could enforce with a security of €5.5 million ($6.5 million).

The judgment came less than a month after the Mannheim Regional Court ruled in favour of Nokia, which, like Sharp, is a member of the Avanci patent pool, in a similar dispute with Daimler. The Mannheim court asked Nokia to pay a €7 billion ($8.2 billion) security to enforce its injunction.

The ruling also came two months after Sharp and Huawei agreed a licence, which led the electronics company to withdraw parts of its lawsuits against Daimler. Yesterday’s judgment thus does not affect all Daimler cars.

Responding to the judgment, an Avanci spokesperson said: "While we don't comment on the details of cases we are not party to, Daimler's legal disputes with Nokia and Sharp could still be resolved easily and quickly by Daimler taking an Avanci licence.”

Daimler confirmed yesterday that it would appeal the decision in Munich.

SEP stakeholders have yet to find out whether the Düsseldorf Regional Court will submit certain issues in Nokia v Daimler to the Court of Justice of the EU for clarification, as it indicated it might at the start of this month.

AG says some website links need IP owner approval

In an opinion published yesterday, September 10, an advocate general told the Court of Justice of the EU that the embedding of copyright-protected works via automatic links on web pages requires authorisation from the IP owner.

In his opinion in Bild-Kunst (C-392/19), Advocate General Maciej Szpunar made a distinction between clickable links and automatic links and concluded that clickable links using the framing technique did not require such authorisation.

He said that the same reasoning applied even where that embedding circumvented technological protection measures against framing adopted or imposed by the rights holder.

He wrote: “The court has consistently held that hyperlinks to copyright-protected subject matter made freely available to the public on the internet with the authorisation of the copyright holder do not constitute acts which require that rightholder’s authorisation.

“However, more recent decisions cast that settled case law in a slightly different light. Accordingly, it is necessary to determine whether the fact that a copyright holder uses technical means intended to prevent the use of his or her work in the form of hyperlinks or by means of framing changes that assessment from the point of view of copyright.

“It will also be necessary, in my view, to reconsider the issue of the embedding of works from one site in the web pages of another site.”

The CJEU does not have to follow the AG’s opinion, but the court often chooses to do so. The court has yet to schedule a date and time for when it will issue its judgment on this matter.

UKIPO asks for views on artificial intelligence

The UKIPO published an open consultation on artificial intelligence and intellectual property on Monday, September 7, calling for views on the impact AI might have on IP, and vice versa, in the near to medium term.

The consultation, which closes at 11.45pm GMT on November 30, covers the intersection of AI with all IP rights, including patents, copyright, trademarks, designs and trade secrets, as well as how AI can be used to fight counterfeiting and piracy.

The UKIPO website states that the consultation is being held to look at the legal framework relating to IP rights, but will not consider the use of AI tools to fight infringement, even though the office does recognise and support the use of such technologies by IP owners.

To respond to the consultation, interested parties should send an email to AIcallforviews@ipo.gov.uk.

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