IP Law Daily, WORTH NOTING—Other IP law developments, (Jun 9, 2023)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community.

PATENT—Fed. Cir.: The U.S. Court of Appeals for the Federal Circuit has granted Microsoft’s petition for mandamus for an order directing the federal district court in the Western District of Texas to transfer under 28 U.S.C. § 1404(a) a patent infringement action filed by Virtu Corporation to the Western District of Washington. The district court abused its discretion in finding there was no difference in the comparative convenience to the party witnesses. There were at least 27 Microsoft witnesses in WDWA and only two Microsoft software engineers who were located in Texas, though not in the WDTX. In addition, there were almost twice as many non-party potential witnesses in WDWA as compared to WDTX. The only factor the district court weighed against transfer was court congestion based on a 3- to 7-month time-to-trial difference. The center of gravity clearly was in the WDT and the district court’s denial of transfer “was patently erroneous,” the Federal Circuit concluded (In re: Microsoft Corp., June 7, 2023, per curiam).

PATENT—Fed. Cir.: Substantial evidence supported the Patent Trial and Appeal Board’s post grant review (PGR) decision finding that all claims of U.S. Patent No. 10,769,894 (the ’894 patent) are unpatentable as obvious in view of U.S. Patent 7,627,497 (Szrek), the U.S. Court of Appeals for the Federal Circuit has decided. The ’894 patent is directed to systems for facilitating the sale and activation of draw-based pre-printed lottery tickets, which allow purchasers to wager bets regarding a future event such as a random selection of a set of numbers. The tickets disclosed in the ’894 patent may be activated by scanning a bar code on each ticket and transmitting a payment confirmation to a central authority administering the lottery using traditional point-of-sale (“POS”) terminals, such as cash registers in grocery store checkout lanes. Szrek describes an approach to activating lottery tickets involving a store’s back office, a POS terminal, and a lottery administration system (Blackhawk Network, Inc. v. Interactive Communications International, Inc., June 7, 2023, Lourie, A.).

PATENT—Fed. Cir.: A Texas federal district court did not abuse its discretion in dismissing a patent infringement action filed by Ubiquitous Connectivity, LP against TXU Energy Retail Co. LLC for failure to prosecute, the U.S. Court of Appeals for the Federal Circuit has held. After counsel for Ubiquitous withdrew from representation, replacement counsel was never named despite court orders to do so and several warnings that dismissal for failure to prosecute would result if counsel was not named. Instead of complying with the court orders, Ubiquitous’ s president, Charles Shamoon, assigned the three asserted patents to himself in his personal capacity and moved to substitute himself for Ubiquitous as the plaintiff, pro se. The district court dismissed the action without prejudice and denied Shamoon’s motion to substitute as moot. “[T]he burden on Ubiquitous of appearing with counsel was quite limited—perhaps amounting to little more than appearing for proceedings on the motion to substitute,” the Federal Circuit noted, pointing out that the dismissal was without prejudice (Ubiquitous Connectivity, LP v. TXU Energy Retail Co. LLC, June 9, 2023, per curiam).

PATENT—Fed. Cir.: The Patent Trial and Appeal Board did not err in rejecting the pending claims of a patent application reciting methods, systems, media, and machines for maintaining augmented telepathic data for telepathic communication as a gadget-free extension of human senses, the U.S. Court of Appeals for the Federal Circuit has determined. The Board affirmed the examiner’s rejection of all 22 claims on several grounds, but the appeals court affirmed the rejection for lack of enablement under 35 U.S.C. §112(a) and did not reach the other grounds. “The application’s disclosure of a broad and abstract organizational structure used to accomplish the maintenance of augmented telepathic data amounts to little more than a ‘research assignment’ requiring a skilled artisan to undertake undue experimentation to discover what types of devices are encompassed by the claim limitations and how they would function,” the court said (In re: Starrett, June 8, 2023, per curiam).

COPYRIGHT OFFICE NEWS: The Copyright Office announced the initiation of the ninth triennial rulemaking under Section 1201 of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1201, to consider possible temporary exemptions to the DMCA's prohibition against circumvention of technological measures that control access to copyrighted works. Section 1201 provides that the Librarian of Congress, upon the recommendation of the Register of Copyrights, may adopt temporary exemptions to the DMCA’s prohibition against circumvention of technological measures that control access to copyrighted works. The goal of the proceeding is to identify particular classes of works for exemption that otherwise would adversely affect users’ ability to make noninfringing uses. According to the Notice published in the Federal Register, the Office is again adopting a streamlined procedure for processing petitions to renew the exemptions that were granted during the eighth triennial rulemaking. Current temporary exemptions are codified at 37 C.F.R. §201.40. If approved, the exemption will remain in force for an additional three-year period (October 2024–October 2027). The Office is also accepting petitions for new exemptions to engage in activities not currently permitted by existing exemptions. Proposals that would expand on a current exemption must be filed as a petition for a new exemption. Following the petition phase, the Office will publish a notice of proposed rulemaking (NPRM) to initiate the next phase of the rulemaking process. Petitions for renewal of current exemptions are due July 7, 2023, written comments in response to any petitions for renewal are due August 11, 2023, and written petitions proposing new exemptions are due August 11, 2023. More information is available on the Ninth Triennial Section 1201 Proceeding webpage (88 Fed. Reg. 37486, June 7, 2023).

FEDERAL CIRCUIT NEWS: The Judicial Council of the U.S. Court of Appeals for the Federal Circuit issued an order on June 5 preluding Circuit Judge Pauline Newman from receiving new case assignments. The Council concluded that Judge Newman’s backlog of cases and her inability to clear the backlog despite the absence of new cases assignments demanding her attention, and her delays in pending cases “provide a complete and sufficient basis for an order barring her from the assignment of new cases.” Prior orders and other filings in the proceeding against Judge Newman are available on the court’s Judicial Conduct and Disability webpage.

JUDICIARY NEWS: Judge Stephen Alexander Vaden, U.S. Court of International Trade, has issued an order on Artificial Intelligence. Recognizing that “[g]enerative artificial intelligence programs that supply natural language answers to user prompts, such as ChatGPT or Google Bard, create novel risks to the security of confidential information” and the court’s ability to protect confidential and proprietary information from access by third-parties, the order sets forth a disclosure and certification requirement for submissions that are prepared using an AI program. Any submission to the court that “contains text drafted with the assistance of a generative AI program” must be accompanied by (1) a disclosure notice that identifies the program used and the specific portions of text that have been so drafted, and (2) a certification that the use of such program has not resulted in the disclosure of any confidential or business proprietary information to any unauthorized party. Judge Vaden’s order follow an order issued last week by Judge Brantly Starr, of the Northern District of Texas. Judge Starr’s order requires attorneys and pro se litigants to file on the docket “a certificate attesting either that no portion of any filing will be drafted by generative artificial intelligence (such as ChatGPT, Harvey.AI, or Google Bard) or that any language drafted by generative artificial intelligence will be checked for accuracy, using print reporters or traditional legal databases, by a human being.” According to Judge Starr, the generative AI platforms in their current states are prone to “hallucinations” (they “make stuff up”) and “bias” (they “hold no allegiance to any client, the rule of law, or the laws and Constitution of the United States”).

INTERNATIONAL TRADEMARK NEWS: The Court of Justice of the European Union has affirmed a decision of the EUIPO’s Board of Appeal rejecting an Italian company and its owner’s attempt to cancel DC Comics’ registered design mark for the Batman logo. The Batman logo mark was registered in 1998. Luigi Aprile and Commerciale Italiana Srl sought to cancel the Batman logo for certain types of goods, such as clothing in Class 25 and novelty items in Class 28, on the ground that the mark was descriptive and lacked acquired distinctiveness. The cancellation petitioners failed to produce evidence that the relevant public did not associate the Batman character with DC Comics when its application was filed. The court also rejected the argument that the Batman logo could not be protected as a trademark because the Batman insignia is a literary and artistic work that should be protected under copyright, noting that “the existence of copyright protection does not preclude the sign from being protected under trade mark law at the same time” (Aprile v. European Union Intellectual Property Office, Case No. T-735/21, June 7, 2023).

USPTO NEWS: The USPTO this week unveiled its 2022-2026 Strategic Plan. “We gathered extensive comments from our employees, public advisory committees, IP industry groups, and the public to help shape this document into a clear and consistent plan,” USPTO Director Kathi Vidal said in a blog post. Director Vidal noted that this plan adds measurable goal-based objectives to better measure progress. The plan supports the USPTO’s new mission of driving U.S. innovation, inclusive capitalism, and global competitiveness, and its new vision of unleashing America’s potential. The 2022-2026 Strategic Plan outlines five strategic goals: (1) Drive inclusive U.S. innovation and global competitiveness; (2) Promote the efficient delivery of reliable intellectual property (IP) rights; (3) Promote the protection of IP against new and persistent threats; (4) Bring innovation to impact for the public good; and (5) Generate impactful employee and customer experiences by maximizing agency operations. The current and prior strategic plans are available on the USPTO Strategic Plan webpage.

USPTO PATENT NEWS: The USPTO published a final rule in the Federal Register to delay for the third time the effective date of the fee change previously adopted for patent applications (except for design, plant, or provisional applications) that are not filed in the DOCX format as set forth in 37 CFR § 1.16(u). Instead of June 30, 2023, the fee change will now take effect on January 17, 2024. The original final rule adopting the fee change was published in the Federal Register on August 3, 2020. According to the USPTO, this further delay will provide applicants more time to adjust to filing patent applications in the DOCX format and will give the Office an opportunity, through a separate Federal Register Notice, to invite and consider public comments on a proposed information collection pertaining to the impact of the § 1.16(u) fee on the filing of nonprovisional utility applications under 35 U.S.C. 111, including continuing applications (88 Fed. Reg. 36956, June 6, 2023). The USPTO published a separate notice extending the option for patent applicants to submit an applicant-generated PDF of a patent application along with the validated DOCX file(s) when filing an application in Patent Center. This temporary period for the PDF filing option, which was scheduled to end June 30, 2023, is now extended indefinitely until further notice (88 Fed. Reg. 37036, June 6, 2023).

USPTO PATENT NEWS: The USPTO published a request for comment seeking information to inform the planning and design of the USPTO satellite offices (regional offices) and newly-authorized community outreach offices (COOs) The USPTO is also seeking information on potential locations for a future USPTO regional office in the southeast region of the United States (Southeast Regional Office or SERO) and a COO in the northern New England (NNE) region (Northern New England Community Outreach Office) that the USPTO was directed to establish under the Unleashing American Innovators Act of 2022 (UAIA), signed into law as part of the Consolidated Appropriations Act, 2023 on December 29, 2022. The USPTO currently has four regional offices that are located in Detroit, Michigan; San Jose, California (Silicon Valley); Denver, Colorado; and Dallas, Texas. Written comments must be received by 5 p.m. Eastern Time on July 11, 2023 (88 Fed. Reg. 37037, June 6, 2023).

Attorneys: Jason W. Wolff (Fish & Richardson P.C.) for Microsoft Corp. Brian Robert Matsui (Morrison & Foerster LLP) for Virtru Corp. Orion Armon (Cooley LLP) for Blackhawk Network, Inc. Patrick D. McPherson (Duane Morris LLP) for Interactive Communications International, Inc. Anita Spieth (Choate Hall & Stewart LLC) for TXU Energy Retail Co. LLC. Robert McBride, U.S. Patent and Trademark Office, for Katherine K. Vidal.

Companies: Microsoft Corp.; Virtru Corp.; Blackhawk Network, Inc.; Interactive Communications International, Inc.; Ubiquitous Connectivity, LP; TXU Energy Retail Co. LLC

News: Copyright Trademark TechnologyInternet FedCirNews USPTO