New Group Registration for Frequently Updated News Websites, Trade Secret Claims Against TikTok Survive Dismissal, and USPTO’s Estoppel Provisions in IPR Proceedings Upheld

This week in Other Barks & Bites: the U.S. Court of Appeals for the Federal Circuit affirms the U.S. Patent and Trademark Office’s statutory authority to apply its estoppel provisions to claim validity rulings at the Patent Trial and Appeal Board; the U.S. Copyright Office issues a final rule creating a new group registration for frequently updated news websites; energy drink brand PRIME faces a trademark suit from the U.S. Olympic Committee over a promotional campaign featuring Kevin Durant; the Ninth Circuit affirms a forum non conveniens dismissal following a counter notification filed pursuant to a DMCA takedown notice; a second straight quarter of missing analyst expectations leads Ford to lose nearly 20% in share value in Thursday’s trading; and copyright and trade secret claims against TikTok from a Chinese developer of video and audio editing source code survive TikTok’s motion to dismiss.

Bites 

CAFC Upholds IPR Estoppel Provisions But Limits Them to New or Amended Claims – On Friday, July 26, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in SoftView LLC v. Apple Inc. affirming the Patent Trial and Appeal Board’s (PTAB) application of 37 CFR § 42.73(d)(3)(i)’s estoppel provisions in invalidating amended claims submitted by SoftView in inter partes and ex parte reexaminations that were not patentably distinct from claims previously invalidated in inter partes review (IPR) proceedings involving SoftView. Although the Federal Circuit upheld the U.S. Patent and Trademark Office’s authority under the America Invents Act to promulgate the estoppel rules, the court limited its application to new or amended claims and remanded the case for reconsideration of claims issued prior to the reexaminations. 

CAFC Says “Very Simple” Combination Does Not Support Reasonable Likelihood of Success – On Wednesday, July 24, the Federal Circuit issued a nonprecedential ruling in Juniper Networks, Inc. v. Correct Transmission, LLC affirming PTAB decisions that upheld the validity of communications networking patent claims owned by Correct Transmission. The Federal Circuit agreed with the PTAB that Juniper Networks’ expert testimony that it would be “very simple” for a person of ordinary skill in the art to combine prior art references was not a credible basis for finding that a skilled artisan would have a reasonable likelihood of success in making that combination.

CAFC Renews Recommendation to Sanction Judge Newman For Additional Year – On Wednesday, July 24, the Special Committee of the Federal Circuit issued a report and recommendation renewing sanctions against Circuit Judge Pauline Newman, preventing Judge Newman from hearing panel or en banc cases, for an additional year over Judge Newman’s purported serious misconduct in the face of allegations that she is mentally unfit to serve as a Circuit Judge.

CAFC Reverses PTAB’s Nonobviousness Finding Over Faulty Implicit Claim Construction – On Tuesday, July 23, the Federal Circuit issued a nonprecedential decision in Netflix, Inc. v. Avago Technologies International Sales Pte. Ltd. in which the appellate court reversed PTAB rulings in a pair of IPR proceedings finding that Netflix had not proved the invalidity of network performance monitoring patent claims owned by Avago. In so ruling, the Federal Circuit found that the PTAB had employed an erroneous implicit construction of the claim term “performance data” and remanded with instructions to adopt a new construction that includes application-level, device-level and tier-level data along with application instance-level data. 

Ninth Circuit Says DMCA Counter Notification Does Not Nix Forum Non Conveniens – On Monday, July 22, the U.S. Court of Appeals for the Ninth Circuit issued an unpublished opinion in Nexon Korea Corp. v. Ironmace Co. Ltd. in which the appellate court affirmed the Western District of Washington’s decision to grant Ironmace’s motion to dismiss copyright claims under forum non conveniens, noting that Ironmace’s decision to file a counter notification under Section 512(g) of the Digital Millennium Copyright Act (DMCA) consented to jurisdiction in Western Washington but not venue.

U.S. Copyright Office Creates Group Registration for Frequently Updated News Websites – On Monday, July 22, the U.S. Copyright Office issued a final rule in the Federal Register creating a new group registration option for publishers of online news websites that are frequently updating, allowing those publishers to deposit sufficient portions of the work rather than the complete contents of their websites.

Barks

USPTO Requests Public Comment on Trademark Filings Post Registration – On Thursday, July 25, the U.S. Patent and Trademark Office issued a notice of information collection and request for comment in the Federal Register seeking public input on the effectiveness of the agency’s information collections related to trademark communications filed after registration including deletion of goods and services, continued use declarations or registration amendments.

Ninth Circuit Reverses “CANDY-GRAM” Trademark Ruling Over Improper Genericness Analysis – On Wednesday, July 24, the Ninth Circuit issued an unpublished opinion in Global Apogee v. Sugarfina, Inc. in which the appellate court reversed a ruling on summary judgment entered by the Central District of California, finding that the district court erred in finding that defendant Sugarfina was not properly on notice of Global Apogee’s claims that it was infringing the federally registered trademark “CANDY-GRAM,” leading the district court to improperly place the burden in its genericness analysis on the plaintiff.

Copyright, Trade Secret Claims Against TikTok Over Source Code Survive MTD – On Tuesday, July 23, U.S. District Judge Susan Illston of the Northern District of California issued a ruling on a motion to dismiss filed by TikTok, denying the motion as it pertains to copyright infringement and trade secret misappropriation claims filed by Chinese company Beijing Meishe Network Technology over audio and video editing source code allegedly stolen by a former employee of Beijing Meishe.

Virginia-Based PR Firm Sues Social Media Giant X for Trademark Infringement – On Sunday, July 21, Virginia-based social media and public relations firm Multiply filed a lawsuit in the Northern District of California against X Corp., formerly Twitter, alleging that the social media giant’s rebrand infringes on a stylized X logo under which Multiply has marketed its services since 2019.

PRIME Faces Trademark Suit From U.S. Olympic Committee Over Kevin Durant Ad Campaign – On Friday, July 19, the U.S. Olympic & Paralympic Committee filed a lawsuit in the District of Colorado against Prime Hydration, which markets the popular energy drink brand PRIME, alleging that the drink company has infringed upon several trademarks owned by the committee in packaging and social media advertisements that feature basketball star and three-time Olympic gold medal winner Kevin Durant. 

14 NBA Teams Targeted in Copyright Lawsuits Filed by Music Publishers – On Friday, July 19, a series of lawsuits were filed in the Southern District of New York against 14 professional franchises with the National Basketball Association (NBA) by music publishers, including Artist Publishing Group and Kobalt Music Publishing America, alleging that the NBA teams made unauthorized uses of copyrighted music in videos released on various social media channels.

This Week on Wall Street

Quarterly Earnings Miss Causes Ford Stock to Lose Nearly 20% of Value – On Thursday, July 25, shares of carmarker Ford Motor Company stock had dropped by 18.4% as of the close of trading due in large part to continuing vehicle warranty problems that caused Ford to miss bottom line expectations forecasted by Wall Street analysts for the second straight quarter. 

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2023 are announcing quarterly earnings next week (2023 rank in parentheses):

• Monday: Fanuc Corp. (t-158th); Komatsu Ltd. (281st); Koninklijke Philips N.V. (t-61st); ON Semiconductor Corp. (t-255th); Western Digital Corp. (59th)
• Tuesday: Advanced Micro Devices, Inc. (88th); Airbus SE (86th); Caterpillar Inc. (92nd); Corning Inc. (74th); Denso Corp. (50th); Makita Corp. (t-284th); NEC Corp. (43rd); Samsung SDI Co. Ltd. (t-166th); Siemens AG (37th); Skyworks Solutions, Inc. (186th); Stryker Corp. (82nd); TDK Corp. (68th); Zebra Technologies Corp. (t-272nd)
• Wednesday: Boeing Co. (47th); Delta Electronics, Inc. (139th); eBay Inc. (t-151st); Fresenius SE & Co., KGaA (t-261st); Hitachi Ltd. (30th); Johnson Controls International (103rd); Konica Minolta, Inc. (t-237th); Mastercard Inc. (144th); Mediatek Inc. (111th); Mitsubishi Electric Corp. (46th); Panasonic Corp. (23rd); PayPal Holdings, Inc. (136th); Qualcomm Inc. (4th); Samsung Electro-Mechanics Co. Ltd. (t-90th); Samsung Electronics Co. Ltd. (1st); Seiko Epson Corp. (27th); Subaru Corp. (t-151st); T-Mobile US Inc. (58th); United Microelectronics Corp. (138th)
• Thursday:com, Inc. (18th); Apple Inc. (9th); Becton Dickinson & Co. (87th); Eaton Corp. (185th); Intel Corp. (12th); Interdigital Inc. (116th); Kyocera Corp. (52nd); Merck Group (264th); Nippon Steel Corp. (209th); Regeneron Pharmaceuticals Inc. (t-295th); Resmed Inc. (265th); Snap Inc. (60th); Toyota Motor Corp. (7th); Winbond Electronics Corp. (223rd)
• Friday: Exxon Mobil Corp. (192nd); Kubota Corp. (t-288th); Magna International Inc. (129th); Sharp Corp. (93rd)