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This week in IP: SkyKick opens door for brands, IP ‘heart’ of UK innovation, InterDigital beats Lenovo

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

Sky v SkyKick: door open for broad brands, but caution remains

In-house and private practice sources say the latest ruling in Sky v SkyKick, which limits the ability to invalidate broad trademarks based on bad faith, accounts for the difficulty brands face when trying to predict future product launches.

In a decision handed down on Monday, July 26, the England and Wales Court of Appeal reversed a High Court decision that had said some trademark specifications of media company Sky were too broad and had been filed in bad faith.

However, the finding that cloud management company SkyKick infringed Sky’s trademarks still stands, as does the High Court’s rejection of Sky’s passing off claims.

Click here to read the full article

Other Managing IP stories published this week include:

DABUS: South Africa issues first-ever patent with AI inventor

ANDA cases will hit decade low, suggests H1 2021 data

Counsel: EU IP support schemes for SMEs lack ‘winning formula’

Putting the IP in IPOs: how counsel help companies go public

Counsel weigh up options as EU eyes enhanced GI protection

Delhi IP division welcome but beset with challenges: sources

DoJ antitrust chief is ‘less radical choice’ than SEP owners feared

Trademark rejections: top obstacles counsel must overcome

Counsel: AI tools are no ‘panacea’ but can optimise patent data

IP ‘at the heart’ of UK’s innovation strategy, says UKIPO

The UK government’s Innovation Strategy will see intellectual property play a vital role in plans to spur R&D in the country, the UKIPO said today, July 30, when it revealed the new schemes it intends to launch.

According to the office, an effective IP system gives businesses, creators and investors confidence that their ideas will be protected, and that they can get a return for their work.

The so-called Innovation Strategy, launched last week on July 22, sets out the government’s vision to make the UK a global hub for innovation by 2035.

Future measures announced by the UKIPO today include a new IP access fund to help businesses grow and build back following the pandemic and a new and free support offer for businesses and organisations to make the most of their IP overseas.

The plan will also provide clearer routes to access the UK’s network of IP experts based around the world.

The UKIPO said it will also extend its education programme to reach more higher education-based researchers, to help them better understand and manage the IP they create.

As previously indicated, the office will begin a consultation in the autumn on the protection of inventions and creations made by artificial intelligence and will lead a call for views on how to better understand the framework for standard essential patents. 

Tim Moss, chief executive of the UKIPO, said: “The UK’s new innovation strategy is the starting point for the government’s long-term vision of how we will cement our role as global leaders in innovation – and it has IP running through the heart of it.

“The strategy recognises that a strong IP system, that protects and allows for a return on investment on ideas, creates the confidence on which this success is built.”

InterDigital wins UK SEP battle against Lenovo

InterDigital won its first standard essential patent battle against Lenovo at the England and Wales High Court yesterday, July 29.

In the first of five technical trials between the two companies in London, InterDigital’s SEP was found to be valid, infringed and essential to the 4G LTE wireless standard by His Honour Judge Richard Hacon.

The second trial has already been held in London, and the two companies are awaiting a decision.

On the back of the recent win, a new trial will be held at the High Court in January to determine a fair, reasonable and non-discriminatory licensing rate.

The case at the High Court concerned European patent number 2,485,558 for a ‘method and apparatus for providing and utilising a non-contention based channel in a wireless communication system’.

InterDigital and Lenovo had been in licensing discussion since November 2009, which came to nothing. InterDigital, having seen the success of Unwired Planet against Huawei, filed a suit at the High Court in 2019, alleging that Lenovo was an unwilling licensee.

The news comes after Nokia and Lenovo settled their SEP dispute in April with a multi-year and multi-tech cross-licensing agreement.

Nokia net sales jump 20%, underpinned by licensing wins

Nokia net sales have increased by 20% largely as a result of its patent licence agreements, including those with Daimler and another unnamed car company, the Finnish telecoms firm announced yesterday, July 29.

The company’s net sales rose by 18% in the second quarter of 2021 compared to Q2 2020 and by 20% on a constant currency basis. Its net sales increased by 11% in the first half of 2021 compared to the same time in 2020, and by 13% on a constant currency basis.

Nokia said the increase was partly due to catch-up sales generated by its settlement with German car maker Daimler after a long litigation spat in Europe, and a separate licensing deal with another automotive maker, which Nokia couldn’t name under the terms of its agreement.

The telecoms company did reveal that that the unnamed firm was an OEM and that the licence was given at the end vehicle level. The deal was made directly between Nokia and the other party, rather than through the Avanci pool, and was reportedly reached amicably without litigation.

In a statement, the Finnish telecoms firm said: “The two agreements, both of which generated net sales starting from Q2 2021, underline the strength of our cellular portfolio and growth opportunities for our automotive licensing programme.”

The rest of the revenue bump was largely generated by higher patent licensing net sales related to new and renewed agreements signed this year and in the fourth quarter of 2020.

Excluding these catch-up net sales, Nokia Technologies' annualised net sales run rate were reported to be in the range of €1.4 billion to €1.5 billion ($1.7 billion to $1.8 billion) in Q2 2021.

O’Malley to retire from Federal Circuit

Judge Kathleen O'Malley will retire from the US Court of Appeals for the Federal Circuit in March 2022, it was announced on Wednesday, July 28.

Her retirement will leave a slot open at the Federal Circuit, giving President Joe Biden a second opportunity to appoint an appellate judge to the court. His last appointment, Tiffany Cunningham, was confirmed on July 19.

In an interview with Managing IP in June 2020, O'Malley noted that she wasn’t far off from starting another chapter of her career.

“You have to be on the bench until you’re 65 because if you retire a minute before, you don’t get a pension. I don’t know – it’s one of the things I’ve said recently that I better start thinking about, but I haven’t gone down that road.”

O'Malley, who is 64, will be 65 when she steps down.

She added that switching from serving as a judge at the District Court for the Northern District of Ohio to the Federal Circuit in 2010 had regenerated her interest in being a judge.

During her time as a Federal Circuit judge, O'Malley has been a strong proponent of IP rights. In July 2020, she argued that the Federal Circuit should hold an en banc rehearing to review American Axle v Neapco, in which the court ruled that a patent for a novel automobile driveshaft was invalid.

She said the majority had announced a new test for patentable subject matter without adequate briefing, and that rather than remand the matter to the district court, the majority applied the test itself.

O'Malley reaffirmed her support for patents in her interview with this publication.

“In terms of patent law, this country has lost sight of the importance of IP rights and how it is important to protect ideas to spur innovation and the economy, and ultimately protect our democratic ideals,” she said.

EU demands explanation for member state copyright delay

The EU has kicked off the first stage of action that could see more than 20 member states reprimanded in court for failing to enact the Copyright Directive on time, it was revealed on Monday, July 26.

The European Commission said it had written to 23 member states asking them how they planned to implement the directive’s rules into their national laws.

“As the member states have not communicated national transposition measures or have done it only partially, the commission decided today to open infringement procedures by sending letters of formal notice,” the commission said.

As Managing IP reported in June, most EU member states missed the deadline for implementing the directive into national law.

The directive entered into force in June 2019, after which member states were given until June 7, 2021, to implement it into their domestic laws.

Only four member states, Germany, Hungary, Malta and The Netherlands, have done so as of today.

The commission can launch infringement proceedings against any member state that doesn’t fulfil implementation obligations. This starts with a letter requiring further information and could culminate in legal action at the Court of Justice of the EU.

The countries that have been written to are Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Greece, Finland, France, Ireland, Italy, Lithuania, Luxembourg, Latvia, Poland, Portugal, Romania, Sweden, Slovenia, Slovakia and Spain.

Indian parliament reviews IPR regime

India’s Parliamentary Standing Committee on Commerce released a report on Friday, July 23, proposing several changes to strengthen the intellectual property rights regime in India.

The committee recommended a review of the IPR Policy adopted in 2016 and examined the challenges in strengthening the IPR regime, the related procedural and substantive limitations, legal aspects, and other issues such as low IP awareness, counterfeiting and piracy and IP financing.

One of the most striking suggestions was to revive the controversial Intellectual Property Appellate Board, which the Indian government abolished in April.

The panel observed that the scrapping of the specialised tribunal could create a void in appellate resolution of IP issues leading to increased pendency on commercial or high courts.

“The committee notes with distress the absence of any judicial impact assessment, or active consultations with stakeholders, being conducted by the government prior to the abolishing of tribunals under the Tribunals Reforms Ordinance, 2021,” the report read.

The panel also recommended reviewing the existing patent and copyright laws to incorporate artificial intelligence and related inventions and establish patent prosecution highways.

Noting that the pandemic has led to a national health emergency in India, the panel urged the government to consider compulsory licensing of patents related to COVID medicines and vaccines.

Serial copyright filer Liebowitz loses monetary sanctions appeal

The US Court of Appeals for the Second Circuit upheld a ruling on Friday, July 23, that a New York lawyer known for filing low-value copyright lawsuits for photographers had to pay over $103,000 in sanctions.

The Second Circuit agreed with the District Court for the Southern District of New York that sanctions against copyright lawyer Richard Liebowitz made sense in light of his conduct.

“Liebowitz’s brief time as a member of the bar so far has been replete with actions suggesting an unwillingness to comply with his obligations as an officer of the court,” the appellate court wrote.

“The district court did not abuse its discretion in determining that sanctions were appropriate and in imposing the sanctions here.”

The Southern District of New York had determined that Liebowitz brought and maintained a copyright infringement action in bad faith, violated multiple court orders and lied to the court under oath when questioned about his conduct.

The penalties included $83,517.49 in attorney’s fees and $20,000 in additional monetary sanctions.

Last month, the Second Circuit upheld non-monetary sanctions that the Southern District of New York imposed on Liebowitz. The lower court had required Liebowitz to file a copy of the sanction orders in every court where he was litigating and to give copies of those orders to his clients.

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