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This week in IP: CAFC rehearing rates revealed, TTAB untouched by Arthrex, Switzerland joins GI agreement

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

Federal Circuit rehearing grant rates revealed

The US Court of Appeals for the Federal Circuit revealed statistics on its grant rates for petitions for panel and en banc rehearing to Managing IP this week. 

The data shows that petitions for cases originating at the Patent Trial and Appeal Board do better than for those coming from the district courts - although only slightly. 

Counsel explained how, despite these odds, they could get petitions through at the Federal Circuit by learning from the successes of the past, going in with a good story and taking advantage of division at the appellate court. 

Click here to read the full article

Other Managing IP stories published this week include:

China patent linkage receives poor early reviews

PTAB reversals at Federal Circuit: how counsel snag rare wins

Fakefluencers: how IP counsel have duped consumers online

Checks needed amid Chinese UK trademark boom: sources

IP Australia appeals seminal AI inventorship ruling

Five IP trends in Argentina counsel should know about

TTAB unaffected by Arthrex, Federal Circuit confirms

The US Court of Appeals for the Federal Circuit confirmed on Wednesday, September 1, that the Trademark Trial and Appeal Board was not affected by the Supreme Court’s ruling in Arthrex v US, which found that administrative patent judges should be considered to be principal officers.

In its judgment in Piano Factor Group and Sweet 16 Musical Properties v Schiedmayer Celesta, the Federal Circuit rejected Sweet 16’s argument that ATJs were appointed in violation of the appointments clause of the US Constitution.

Sweet 16 had contended that since SCOTUS had found that APJs were unconstitutionally appointed because they were not selected by the president and confirmed by the Senate, and yet enjoyed the power of principal officers, the ruling should also apply to ATJs at the TTAB.

But the Federal Circuit pointed out that the Trademark Modernization Act (TMA), enacted in 2020, explicitly confirmed the USPTO director’s authority to review TTAB decisions, rendering ATJs as inferior officers.

The three-judge panel added that various trademark statutes also gave the director much more supervisory control over ATJ’s and their decisions prior to the TMA than he enjoyed over APJs in inter partes review proceedings.

“In sum, the 2020 [TMA] confirms that the director’s authority to review TTAB decisions was the same before the legislation as afterwards,” the panel wrote.

“Thus, considering the Supreme Court’s favourable reference to the constitutional status of ATJs as inferior officers of the US, we reject Sweet 16’s appointments clause challenge to the legitimacy of the TTAB panel that decided this case.”

The Federal Circuit also affirmed the TTAB’s cancellation of Sweet 16’s trademark.

First black judge at Federal Circuit sworn in

The first black judge at the US Court of Appeals for the Federal Circuit was sworn in to her position on Wednesday, September 1.

Chief Judge Kimberly Moore administered the oath of office to Tiffany Cunningham, who was confirmed by the Senate on July 19 and received her judicial commission on August 6. Personal guests of Cunningham, along with several of the court’s judges, witnessed the ceremony.

President Joe Biden announced his intention to nominate Cunningham, who was previously a partner at Perkins Coie, to her position on March 30.

Cunningham replaced Judge Evan Wallach, who was nominated by President Barack Obama and had served on the Federal Circuit for nearly 10 years between November 2011 and May 2021.

Before Cunningham joined Perkins Coie in 2014, she was a partner and associate at Kirkland & Ellis. She also clerked for Federal Circuit Judge Timothy Dyk.

China threatens to crack down on IP-flouting e-commerce sites

China’s State Administration for Market Regulation announced on Tuesday, August 31, that e-commerce platforms would be restricted from online business operations or even have their licences revoked if they failed to deal with serious violations of IP rights.

The market watchdog said that to strengthen the protection of IP rights and promote sustainable and healthy e-commerce, it had drafted the Decision on Amending the E-Commerce Law of the People's Republic of China, on which it was seeking public comment.

It stated that the general public was welcome to submit comments and feedback to the office before October 14 2021.

Chinese platforms have long struggled with allegations that they allow pirated or counterfeit goods to be trafficked through their websites.

In March, the state-owned news agency Xinhua said the country would adopt more punitive measures to help clean up the online shopping market.

Fifth Circuit upholds Ericsson FRAND victory against HTC

The US Court of Appeals for the Fifth Circuit has ruled in favour of Ericsson in its dispute with HTC, upholding an earlier jury decision that the licensing offer made by the Swedish company was fair, reasonable, and non-discriminatory.

In a judgment handed down on Tuesday, August 31, the court said HTC failed to show that Ericsson's proposed licence was out of line with previous licences for similar companies. The dispute centred on Ericsson’s 2G, 3G and 4G wireless patents.

Ericsson and HTC had previously signed cross-licensing agreements for their standard essential patents (SEPs), but talks broke down when the two began negotiating for a new licence in 2016.

Ericsson offered HTC a rate of $2.50 per 4G device, in line with the amount HTC paid for the previous licence.

HTC responded with an offer of $0.10 per device, arguing the rate should be based on the smallest saleable unit that practised the patents. It was this offer that “chilled” the negotiations, according to Ericsson.

HTC then sued Ericsson at the District Court for the Eastern District of Texas in 2017, alleging Ericsson had breached its obligation to license its SEPs on FRAND terms.

According to the jury in the Texas court, HTC failed to prove that Ericsson breached its FRAND duties.

HTC appealed against that ruling to the Fifth Circuit. But according to Circuit Judge Jennifer Elrod, it failed to preserve its challenge.

“Ericsson presented substantial evidence to support its position that it had offered FRAND terms to HTC. Ericsson pointed to licences with similarly situated companies to HTC that had terms that were remarkably similar to those offered to HTC,” the judgment found.

Switzerland shores up GI protection by joining Geneva Act

Switzerland has joined a WIPO-administered agreement that enhances protection for geographical indications and other location-based protection mechanisms, it was announced on Tuesday, August 31.

In joining the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, Switzerland will be able to protect both agricultural and non-agricultural products, including Swiss watches and Gruyere cheese.

The act, adopted in May 2015, allows the international registration of GIs in addition to appellations of origin through a single registration procedure with WIPO.

Switzerland’s instrument of accession was deposited with WIPO director general Darren Tang by Felix Baumann, deputy permanent representative of Switzerland to the United Nations.

The act will enter into force with respect to Switzerland on December 1.

Copyright report shows US states' infringement greater than thought

The US Copyright Office issued a report on Tuesday, August 31, looking at the extent to which copyright owners’ property was being infringed by US states without adequate remedy.

In the report, the office found that the record of alleged state infringements was substantially greater than the record that Congress was aware of when it passed the Copyright Remedy Clarification Act (CRCA) in 1990.

But the copyright bureau said it was uncertain whether this evidence of infringement would be enough to abrogate state immunity.

“The office nevertheless continues to believe that the ability of copyright owners to obtain adequate relief when their rights are violated – including by state entities – is important to the balance of interests struck by the Copyright Act,” the report noted.

Senators Thom Tillis and Patrick Leahy (the ranking member and chair of the Senate Judiciary IP Subcommittee respectively) requested that the office study this issue after the 2020 US Supreme Court decision in Allen v Cooper.

In this case, the court said Congress lacked authority to abrogate states’ sovereign immunity for copyright infringement since it passed the CRCA.

SCOTUS ruled the way it did in part because of a lack of evidence that states had intentionally infringed copyright and that they had not provided adequate state remedies.

The office added that it would support alternative approaches if Congress decided not to proceed with legislation that would abrogate state sovereign immunity.

Ninth Circuit revives beauty brand Ayla’s trademark suit

The US Court of Appeals for the Ninth Circuit ruled on Friday, August 27, that Australian skin-care company Alya Skin couldn’t escape trademark infringement claims on jurisdictional grounds.

The San Francisco-based court had earlier dismissed US beauty brand Ayla’s complaint against Alya Skin before the US company appealed to the Ninth Circuit.

Alya Skin had submitted that it had no retail stores, offices or real property in the US, nor did it sell its products in any retail store in the country.

A three-judge panel at the Ninth Circuit held that the exercise of jurisdiction was reasonable because Alya intentionally directed its activities towards and availed the protections and benefits of the US.

The court observed that Alya promoted its allegedly infringing product via references explicitly aimed at Americans.

“Though the burden on Alya of litigating this case under a foreign dispute resolution system may be relatively high, it does not outweigh Ayla’s interest in adjudicating its trademark dispute in the US,” noted the panel.

Justice Jed Rakoff, opining for the panel, concluded that Alya did not present a compelling case that the exercise of jurisdiction would be unreasonable and violate due process.

China patent practitioner numbers soar to 53,000

CNIPA published a report on Friday, August 27, revealing that the number of patent practitioners nationwide had reached 53,090.

The US has 47,228 registered patent practitioners despite having approximately a quarter of the population of China and roughly a third of the invention patent applications filed annually.

According to the report, more than 5,000 new patent attorneys were added in 2020, representing an annual growth rate of 10.7%.

The report also stated that CNIPA approved 615 patent agencies for legal practice licences in 2020. It meant the number of agencies increased by 276% compared to 2011.

The figures don’t take Hong Kong, Macao and Taiwan into account.

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