IP Law Daily, WORTH NOTING—Other IP law developments, (Dec 11, 2020)

By WK Editorial Staff

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

COPYRIGHT—C.D. Cal.: The federal district court in Los Angeles has dismissed nearly all claims of a complaint filed by actress Rose McGowan against disgraced film producer Harvey Weinstein and others who worked with Weinstein allegedly to prevent McGowan from publicly disclosing in her memoir Brave that Weinstein raped her. McGowan failed plead facts to satisfy the elements of most claims, including racketeering, wiretapping, computer crimes, and intentional infliction of emotional distress. Her claim for invasion of privacy under article 1, section 1 of the California Constitution was barred by the applicable one-year statute of limitations and her conversion claim was preempted by the Copyright Act. The essence of the essence of McGowan’s conversion claim was that the defendants made an unlawful reproduction of her manuscript of Brave and interfered with her right to be the only person in possession of a copy. Where property is capable of being copied, wrongful possession of copies does not typically give rise to a conversion claim if the rightful owner retains possession of the original or retains access to other copies. McGowan, however, adequately alleged that the defendants were directly or vicariously liable for common law fraud and fraudulent deceit under California Civil Code section 1709 for engaging in a deceptive scheme to obtain the content of Brave (McGowan v. Weinstein, December 7, 2020, Wright, O.).

PATENT—Fed. Cir.: A district court did not abuse its discretion in awarding SOTI its reasonable attorney fees after dismissing WPEM’s suit against SOTI for infringing SOTI’s U.S. Patent No. 9,148,762, according to the U.S. Court of Appeals for the Federal Circuit. The district court based its award of fees, in part, on the frivolous nature of WPEM’s infringement position, an issue that could have easily been foreseen with an adequate pre-suit investigation. As the lower court found, a user manual provided a clear indication that there were other versions of the accused technology, and such knowledge would have tipped off a reasonable plaintiff to evaluate whether the product accused of infringement predates, and therefore potentially anticipates, the asserted patent claims (WPEM, LLC v. SOTI Inc., December 9, 2020, Prost, S.).

PATENT—Fed. Cir.: The Patent Trial and Appeal Board correctly denied a motion by the Board of Regents of the University of Texas System ("UT") to dismiss an inter partes review (IPR) proceeding on sovereign immunity grounds, the U.S. Court of Appeals for the Federal Circuit has held. Baylor College of Medicine had filed petitions challenging two patents owned by UT. The Federal Circuit reiterated the principle that sovereign immunity does not apply to IPR proceedings when the patent owner is a state, as detailed in Regents of the University of Minnesota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. 2019), cert. denied, 140 S. Ct. 908 (2020). UT contended that that "the University of Minnesota panel applied the wrong standards and reached the wrong conclusion when it held" that state sovereign immunity does not apply to IPR proceedings. However, the Federal Circuit panel in the instant case explained that it was bound by that decision and affirmed the Board (Board of Regents of the University of Texas System v. Baylor College of Medicine, December 10, 2020, per curiam).

TRADEMARK—TTAB: A trademark examining attorney properly refused registration of the mark RANGERS OF OBLIVION for computer games and software in International Class 9 and entertainment services relating to computer gaming in Class 41 on the ground of likelihood of confusion with the mark OBLIVION (in standard characters) registered on the Principal Register for computer game programs in Class 9, the Trademark Trial and Appeal Board has held. The applicant’s and registrant’s software goods were related and presumed to travel in same trade channels to the same consumers. When considered in their entireties, the marks RANGERS OF OBLIVION and OBLIVION were more similar than dissimilar and did not convey a significantly different meaning or commercial impression The dominant portion of the applicant’s mark was "OBLIVION" because it was the object of the preposition, the world from which the "RANGERS" come. By adding the wording "RANGERS OF" to registrant’s mark "OBLIVION, the applicant’s mark gave the commercial impression of having certain characters, "RANGERS," from registrant’s "OBLIVION," or indicated that the goods and services promoted and sold in connection with the applicant’s mark were a line extension of Registrant’s computer game software (In re Hong Kong NetEase Interactive Entertainment Ltd., November 24, 2020, Hudis, J.).

TRADE SECRETS—5th Cir.: The U.S. Court of Appeals in New Orleans for the third time has rejected an appeal filed by Automation Support, Inc., a Texas company that sued a former employee and his new company for misappropriation of secrets dispute under the Texas Theft Liability Act (TTLA). After the dispute was voluntarily dismissed with prejudice, a magistrate judge awarded attorney fees to the defendant under the TTLA, which is a "loser pays" law. In 2018, the Fifth Circuit affirmed the magistrate judge’s fee award and remanded for the district court to award appellate attorney fees. In early 2020, the Fifth Circuit dismissed a second appeal filed by Automotive Support for lack of jurisdiction. In the current appeal, Automotive Support challenged the district court’s denial of its motion for relief from judgment under Rule 60(b), in which it again argued that the magistrate judge did not have jurisdiction to award attorney fees. To the extent Automation Support was attempting to argue that the defendants were not prevailing parties, the Fifth Circuit said it already had rejected that argument. Automation Support’s novel attack—that the Rule 41 joint dismissal deprived the district court of jurisdiction to later award fees—was wrong. It is well-established law that a court can award attorney fees after a voluntary dismissal. The district court’s judgment was one again affirmed and in view of Automation Support’s continued "stubborn, bad-faith refusal to recognize" the appellate court’s holding three years ago, the defendants were granted leave to file a motion for appellate attorney fees under 28 U.S.C. § 1927 (Automation Support, Inc. v. Humble Design, LLC, December 8, 2020, Costa, G.).

PATENT NEWS: The USTPO recently designated three Patent Trial and Appeal Board decisions as precedential: (1) RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) [AIA §§ 312(a)(2), 315(b) – unnamed party is an RPI and Petition was time-barred]; (2) SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020) – [AIA § 312(a)(2), instituting review – no RPI analysis necessary at institution absent allegation of time bar or estoppel based on unnamed RPI] ; and (3) Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020) (designated Dec. 4, 2020) – [AIA §§ 314(a), 315(c), denying institution and joinder motion – analysis of General Plastic factors based on follow-on copycat petition].

PATENT NEWS: The USPTO and the Mexican Institute of Industrial Property (IMPI) announced the launch of the Parallel Patent Grant (PPG) initiative. Under this new work-sharing arrangement, IMPI will expedite the grant of a Mexican patent for businesses and individuals already granted a corresponding U.S. patent. The launch of the PPG follows the signing of a Memorandum of Understanding on Technical and Strategic Collaboration by the USPTO and IMPI on January 28, 2020. Its implementation will accelerate the patent examination process for the large number of commonly filed applications at the USPTO and IMPI.

USPTO PERSONNEL: On December 8, the USPTO announced the appointment of Mary Critharis as its new Chief Policy Officer and Director for International Affairs. Critharis had been serving as the Acting Chief Policy Officer and Director for International Affairs since October 19, following the selection of her predecessor, Shira Perlmutter, to lead the U.S. Copyright Office. In her new role, Critharis will serve as a policy advisor to the Under Secretary of Commerce for Intellectual Property and oversee the USPTO’s domestic and international IP policy activities; legislative engagement, through the Office of Governmental Affairs; education and training, through the Global Intellectual Property Academy (GIPA); global advocacy, through the IP Attache Program; and economic analysis, through the Office of the Chief Economist.

On December 7, the USPTO welcomed two new members of the Patent Public Advisory Committee (PPAC), Judge Susan Braden and Daniel Brown, and three new members of the Trademark Public Advisory Committee (TPAC), David Cho, Tracy Deutmeyer, and Jomarie Fredericks. Additionally, Steven Caltrider, who was previously appointed to complete the term of a retiring member, was reappointed to the PPAC for his first full term. Judge Braden is a former Chief Judge of the U.S. Court of Federal Claims. Brown is an award-winning designer, independent inventor, entrepreneur, and professor at the Segal Design Institute–Northwestern University. Cho is the Assistant Vice President Senior Legal Counsel–Trademarks and Copyrights at AT&T. Deutmeyer practices trademark law at Fredrikson & Byron. Fredericks is the Deputy General Counsel and Chief Intellectual Property and Brand Counsel at Rotary International and the Rotary Foundation. Julie Mar-Spinola will continue to serve as PPAC’s Chair, and Steven Caltrider will serve as PPAC’s new Vice Chair. Christopher Kelly will serve as TPAC’s new Chair, and Susan Natland will serve as TPAC’s new Vice Chair. Returning as PPAC members are Jennifer Camacho, Barney Cassidy, Jeremiah Chan, Tracy Durkin, and Jeff Sears. Returning to TPAC are Stephanie Bald, Jennifer Kovalcik, Tricia Thompkins, and Kelly Walton.

On December 10, the USPTO announced that four of its IP attaches have been elevated to the diplomatic rank of "Counselor" at the U.S. embassies and missions where they serve. The four attaches receiving the rank of Counselor are: John Cabeca (U.S. Embassy, New Delhi, India); Cynthia Henderson (U.S. Embassy, Mexico City, Mexico); Duncan Willson (U.S. Embassy, Beijing, China); and Susan Wilson (U.S. Mission to the European Union, Brussels, Belgium). The USPTO’s IP Attache Program works to improve IP systems and to help U.S. stakeholders internationally. IP attaches directly assist U.S. businesses and advocate to improve IP policies, laws, and regulations abroad.

INTERNATIONAL NEWS—Patent: A study published on December 10 by the European Patent Office (EPO) asserts that innovation in "fourth industrial revolution" (4IR) technologies has accelerated significantly worldwide. Between 2010 and 2018, global patent filings for these technologies—which concern smart connected objects and span the Internet of Things, big data, 5G, and artificial intelligence (AI)—grew at an average annual rate of almost 20%—nearly five times faster than the average of all technology fields. The study, entitled Patents and the Fourth Industrial Revolution - the global technology trends enabling the data-driven economy, looks at all international patent families (IPFs) related to 4IR worldwide between 2000 and 2018. The study found that nearly 40,000 new IPFs were filed for these technologies in 2018 alone, accounting for more than 10% of all patenting activity worldwide that year. An executive summary of the study is available here.

Attorneys: Andrew C. Porter (Salvatore Prescott & Porter, PLLC) for Rose McGowan. Phyllis Kupferstein (Kupferstein Manuel LLP) for Harvey Weinstein. Peter E. Mims (Vinson & Elkins LLP) for Board of Regents of the University of Texas System. Michael Hawes (Baker Botts, LLP) for Baylor College of Medicine. William Peterson Ramey, III (Ramey & Schwaller, LLP) for WPEM, LLC. Robert L. Greeson (Norton Rose Fulbright US LLP) for SOTI Inc. Matthew Howell for the USPTO. Zhi Dong (Hamre, Schumann, Mueller & Larson, PC) for Hong Kong NetEase Interactive Entertainment Ltd. Lindsey Marie Rames (Rames Law Firm, P.C.) for Automation Support, Inc. d\b\a Technical Support. Eric C. Wood (Brown Fox P.L.L.C.) for Humble Design, LLC and Warren David Humble.

Companies: Board of Regents of the University of Texas System; Baylor College of Medicine; WPEM, LLC; SOTI Inc.; Hong Kong NetEase Interactive Entertainment Ltd.; Automation Support, Inc.; Humble Design, LLC

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