Lack of trials is tribulation, say district court judges
In a series of interviews with Managing IP, four of the busiest district court judges in the US said their top priority this year was to restart jury trials as soon as possible – but noted that the process would be tricky, and that they needed professionalism and understanding from attorneys to make it work.
“My first, second, third and fourth priorities this year are the same – getting back to trials. There really is no number two,” says Judge Alan Albright of the District Court for the Western District of Texas, the US’s most popular patent court.
Len Stark, chief judge at the District Court for the District of Delaware, says litigators can help his district’s judges meet the challenges facing their busy court by understanding the situation they confront and that civil cases may not be at the top of the to-do list once jury trials resume.
“IP counsel especially need to recognise and explain to their clients that as we restart jury trials, we are required to give priority to criminal trials, which might lead to further delays and cancellations of civil jury trials,” he says.
Other Managing IP stories published this week include:
Xiaomi sues Philips and ETSI in Paris
A new battle in the standard essential patent wars has erupted, it emerged on Wednesday, February 3, after the standards-setting organisation ETSI informed its members that Xiaomi had filed a suit against it at the Paris Court of First Instance.
The Chinese smartphone maker demanded that ETSI contributed to the conclusion of a licence agreement with Philips on fair, reasonable and non-discriminatory (FRAND) terms and that the standards-setting body pay €1 ($0.80) in damages.
The phone maker also demanded that ETSI hold a general assembly to expel Philips for breach of its obligations in accordance with Articles 8 and 14 of its IPR policy.
Xiaomi’s decision to sue ETSI in Paris followed the precedent set by TCL v Philips in 2019, in which the Paris court established that it had jurisdiction to hear FRAND-related disputes involving ETSI because the standard body was headquartered in France.
Philips has sued Xiaomi in multiple jurisdictions including Germany, the Netherlands and India for infringement and refusal to accept a FRAND licence for its 3G and 4G technology.
The recent decision to sue in France has been seen by some as a delay tactic for Xiaomi to stay litigation in these other countries.
Coca-Cola makes bold diversity demands of counsel
Coca-Cola set out new expectations for its external counsel network last week, including that at least 30% of billed lawyers are from diverse backgrounds.
The company called for the law firms it works with to provide data on racial diversity among staff, as well as information on employees who identify as LGBTQ+ and people with disabilities.
At the moment, the measures apply only to Coca-Cola’s US business.
Bradley Gayton, who became Coca-Cola general counsel in September last year, revealed the guidelines in an open letter published last Thursday(January 28). The letter was also endorsed by the firm’s associate general counsel for intellectual property, Benny Lee.
In the letter, addressed to ‘US law firms supporting the Coca-Cola company’, Gayton – an African-American man – said: “The hard truth is that our profession is not treating the issue of diversity and inclusion as a business imperative.
“We have a crisis on our hands and we need to commit ourselves to specific actions that will accelerate the diversity of the legal profession.”
In a Managing IP article last year that focussed on the experiences of black IP lawyers, one source told us that when seeking external private practice lawyers, some in-house decision makers may ask for a diverse team but may not necessarily pay close attention to the roles within that team.
ITC probes Ericsson Samsung patent case
The US International Trade Commission announced on Tuesday, February 2, that it would investigate patent infringement complaints that Ericsson made against Samsung.
Ericsson requested that the ITC look into the claims and issue limited exclusion and cease and desist orders. The telecoms company submitted its petition on January 4. Samsung filed its own ITC complaint against Ericsson on January 7.
The two companies recently made headlines (including one in Managing IP) when Chief Judge Rodney Gilstrap at the District Court for the Eastern District of Texas granted Ericsson’s request for an anti-anti suit injunction in a licensing dispute on January 11.
He also told Samsung that any litigation in China would not prevent the US from rightfully setting its own fair, reasonable and non-discriminatory rate.
Delays at district courts may compel companies to use the ITC more this year. According to the Docket Navigator database, 54 cases were filed at the commission in 2020 and nine have been filed so far this year. As of February 4, the website estimated that 94 complaints will be filed in 2021.
British political magazine rebukes US trademark challenge
The Spectator, a weekly political magazine based in the UK, published a scolding retort on Tuesday, February 2, to a trademark suit filed against it at the District Court for the Eastern District of Virginia by the The American Spectator Foundation.
The retort argued that The Spectator’s brand long preceded that of The American Spectator, pointing out that the British publication was founded in 1828 and has been read in the US since at least the 1860s. The American Spectator, previously called The Alternative: An American Spectator, was founded in the 1920s.
It suggested that the magazine’s team was surprised by the suit, noting that the two publications had a friendly relationship and that The Spectator had wished The Alternative well when it rebranded in the 1960s and then again in the 1970s.
“The Spectator and The American Spectator (and many other publications that use the word ‘Spectator’ in their masthead) have co-existed for many decades without issue,” said the article’s author.
“The Spectator today is a very different magazine to The American Spectator. The Spectator has by its nature a much more international outlook, believes in diversity of opinion and covers culture, books and the arts from a range of perspectives.
“The American Spectator is more ideological and narrowly focused on the politics of the American right. So we have always operated on the basis that there should be room for both of us and more in the marketplace.”
The American Spectator Foundation filed its suit in September 2020, seeking damages and a corrective advertising campaign from The Spectator’s holding company Press Holdings Media Group.
It claimed that The Spectator’s US edition and ‘Spectator USA’ were similar in sound, meaning and appearance, and created the same commercial impression as the ‘The American Spectator’ mark.
The motion to continue the rule was passed on January 29 and legal counsel for The Spectator are expected to appear before the Court of Appeals for the Second Circuit on February 17.
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