Amicus Urges Reversal in Newman Case; USPTO and POPA Sign Collective Bargaining Agreement; IPO Urges Trump to Pick IP-Savvy USPTO Director

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This week in Other Barks & Bites: the U.S. Patent and Trademark Office signed its first new collective bargaining agreement with the union representing its patent employees in nearly 40 years; the Second Circuit denied a petition for rehearing of an earlier panel decision affirming the dismissal of copyright infringement claims against Ed Sheeran’s “Thinking Out Loud”; Public Citizen published a report claiming that patent evergreening will cost Medicare up to $5.4 billion in lost savings from generic competition; shares of Adobe stock dropped 13% following poor guidance in first quarter generative AI sales; the Supreme Court heard oral arguments on the application of Section 1117(a)’s just sum provision to disgorged profits award calculated from non-party affiliate revenues; and the European Patent Office began the implementation of sanctions against patent applications filed by Russian applicants.

Bites

Amicus Urges Reversal of District Court Judgment in Newman Case

On Thursday, December 12, several law professors and a former International Trade Commission (ITC) commissioner joined the Manhattan Institute in submitting an amicus brief to the U.S. Court of Appeals for the District of Columbia Circuit in support of Judge Pauline Newman’s appeal from the dismissal of her case against the U.S. Court of Appeals for the Federal Circuit (CAFC). The brief, filed Thursday, December 12, urges reversal of the district court’s judgment and a declaration that the CAFC’s proceeding against Judge Newman is unconstitutional for its failure to transfer the complaint to a different circuit initially. 

SCOTUS Hears Oral Arguments on Calculating Just Sum in Trademark Profits Awards – On Wednesday, December 11, the U.S. Supreme Court heard oral arguments in Dewberry Group v. Dewberry Engineers to determine whether the Fourth Circuit’s $43 million disgorged profits award is authorized by the just sum provision of 15 U.S.C. § 1117(a). Petitioner Dewberry Group argued that the profits award, calculated using revenues held by non-party real estate affiliates, improperly disregard corporate separateness, while Dewberry Engineers and the U.S. Solicitor General argued that Section 1117(a)’s just sum provisions allowed the court to consider the affiliates’ revenues the true economic gain of the property management firm who created the economic value and directed the accounting of those revenues.

IPO Sends Trump Recommendations on Hiring USPTO Director

On Wednesday, December 11, the Intellectual Property Owners Association (IPO) sent a letter to President-Elect Donald Trump urging him to “give careful attention to selecting a superb candidate to lead the U.S. Patent & Trademark Office (USPTO).” The letter recommended that the nominee must possess IP expertise; be a practicing IP attorney; have a minimum of 15 years IP/patent experience; have five years’ experience running a large organization; and should have business-side knowledge of IP as well as policy and advocacy experience, among other recommendations.

Second Circuit Affirms Dismissal of Copyright Claims Against Ta-Nehisi Coates Novel – On Wednesday, December 11, the U.S. Court of Appeals for the Second Circuit entered a summary order affirming the Southern District of New York’s dismissal of Ralph Baker, who alleged that Ta-Nehisi Coates’ 2019 novel “The Water Dancer” infringed upon Baker’s copyright to his self-published memoir. The Second Circuit agreed with the district court that Baker failed to allege substantial similarity and that no lay observer would regard Coates’ work as appropriating the style and content of Coates’ memoir.

Public Citizen Report Says Patent Evergreening Will Cost Medicare $5.4B – On Wednesday, December 11, consumer advocacy organization Public Citizen published a report on patent evergreening abuses concluding that Medicare could lose anywhere between $4.9 billion and $5.4 billion in savings due to the anticompetitive impacts of patenting advances to Medicare-approved medical treatments, extending periods of exclusivity that prevent competition from generic drugmakers. Public Citizen’s report also expresses support for both the Inflation Reduction Act and Affordable Prescriptions for Patients Act while stating that the PREDVAIL Act introduced by Sens. Chris Coons (D-DE) and Thom Tillis (R-NC) “could be devastating for patient access.” 

USPTO Signs First Collective Bargaining Agreement With Union in Four Decades – On Wednesday, December 11, the U.S. Patent and Trademark Office (USPTO) announced that the agency had signed a new collective bargaining agreement (CBA) with the Patent Office Professional Association, the first new CBA with the union representing employees of the USPTO since 1986. The new CBA has a five-year term and covers more than 9,600 of the agency’s patent-side employees.

EPO Study Shows Eightfold Growth in Electrical Grid Patents Over Two Decades – On Tuesday, December 10, the European Patent Office (EPO) published the results of a joint study conducted with the International Energy Agency (IEA) showing that international patent families covering enhanced electricity grids increased eightfold from 2001 to 2022, with patent families for artificial intelligence-enhanced smart grids increasing sixfold since 2018.

Second Circuit Denies En Banc Rehearing in Sheeran “Thinking Out Loud” Copyright Appeal – On Thursday, December 6, the Second Circuit denied a petition for panel and en banc rehearing filed by Structured Asset Sales, leaving in place an earlier panel ruling by the Second Circuit affirming the dismissal of copyright infringement claims against Ed Sheeran’s 2014 release “Thinking Out Loud” after agreeing that SAS’s copyright infringement claim was properly limited to the deposit copy version of Marvin Gaye’s 1973 single “Let’s Get It On” and that the asserted similarities were too unoriginal even in combination to merit copyright protection.

Barks

Copyright Office Announces Changes to Statutory License Reporting Practices – On Thursday, December 12, the U.S. Copyright Office published a final rule in the Federal Register amending rules surrounding information to be reported by cable, satellite and digital audio recording devices or media in statements of account for statutory licenses under 17 U.S.C. § 111 to display works embodied in a primary transmission. That same day, the Copyright Office also published a notice of proposed rulemaking to make Section 111 statutory license royalties payable electronically via Pay.gov.

USPTO Opens 100th Patent and Trademark Resource Center – On Thursday, December 12, the USPTO announced that it was adding both Tuskegee University and the University of the Virgin Islands to the agency’s Patent and Trademark Resource Centers network, bringing to 100 the total number of libraries in the United States with specialized resources for individuals interested in protecting their own intellectual property rights.

Copyright Alliance Urges UK to Protect Copyrighted Material from AI Training – On Thursday, December 12, British newspaper Financial Times reported that U.S. media organization Copyright Alliance sent a letter addressed to highly-ranked ministers in the UK government asking the UK to forgo any legal frameworks that would allow artificial intelligence companies to freely train their algorithms with the use of copyrighted content, an exception that could result from the UK government’s upcoming consultation into AI and creative industries.

EPO Moves to Implement EU Sanctions Against Russian IP Filings – On Thursday, December 12, the European Patent Office (EPO) announced that its Administrative Council had voted to implement the European Union’s 14th sanctions package against Russia in the EU’s patent framework. Under the rules, the designation of EU member states will be deemed to be withdrawn on patent applications filed by Russian applicants falling under the sanctions, with similar sanctions to be applied against Patent Cooperation Treaty (PCT) patent applications entering the European phase.

Micron Technology Extends Patent License with Rambus for Five Years – On Tuesday, December 10, computer chip developer Rambus announced that chipmaker Micron Technology had extended its license to Rambus’ patent portfolio for an additional five years, granting Micron access to Rambus’ chip technologies through late 2019.

USPTO to Host Anti-Piracy Symposium on January 25 – On Tuesday, December 10, the USPTO published a notice in the Federal Register announcing that the agency would be conducting an Anti-Piracy Symposium in the Clara Barton Auditorium in Alexandria, VA, on January 25, 2025, as part of the USPTO’s effort to improve intellectual property enforcement and reduce IP crime and infringement.

U.S. Chamber’s “Shop Smart” Anti-Counterfeiting Campaign Ramps Up for Holiday Season – On Tuesday, December 10, the U.S. Chamber of Commerce announced that it had begun its “Shop Smart” anti-counterfeit awareness campaign in concert with U.S. Customs and Border Patrol for the 2024 holiday season, advising consumers to prioritize secure payments on websites beginning with “https://” and updating cybersecurity protections on devices.

This Week on Wall Street

Adobe Revises Revenue Guidance Downward Following Weak Generative AI Sales – On Thursday, December 12, shares of software company Adobe had dropped 13% in value following the company reporting sales guidance of $5.63 billion to $5.68 billion in the coming quarter, less than analyst expectations of $5.73 billion, due in part to issues that Adobe has faced in monetizing generative artificial intelligence products like the Firefly image generator.

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: None
• Tuesday: Accenture plc (t-244th)
• Wednesday: Micron Technology Inc. (11th)
• Thursday: Nike Inc. (100th)