This week in IP: Google v Oracle unpacked, EUTM celebrates 25th birthday, USPTO creates COVID award

Managing IP spoke to four in-house counsel about the impact of the US Supreme Court’s ruling in Google v Oracle, from Monday, April 5.  

The court ruled that Google’s use of Oracle’s code was fair – in a decision that concluded a decade-long battle between the two businesses.  

Sources said that the ruling was good for the software industry, but they disagreed on whether the court got the details right. 

Some attorneys, for example, thought that the court made the right move in declining to rule on the copyrightability of application programming interfaces (APIs).  

Others would have liked to see the court rule in Google’s favour on the copyrightability of APIs (and decide that they were not copyrightable). But they were pleased with the decision on fair use.  

Kathleen Lu, senior IP counsel in California at open source mapping platform Mapbox, said: “The court’s strong statements reaffirming the role of fair use in holding copyright law to its constitutional purpose of progress and serving the public interests at large are beneficial to creativity and innovation as a whole, not just in the realm of APIs.” 

To find out more about Google v Oracle, click here. 

Managing IP Americas Awards 2021: all the winners revealed 

Litigators reveal how they get record patent damages 

EUTM data: tobacco brands quit traditional smokes 

An IP guide to winning investors for biotech start-ups 

Partners reveal how they hone junior litigator talent 

EUTMs face distinctiveness challenge in new language rules 

Nokia announced on Wednesday, April 7, that it had settled all patent licensing litigation with Chinese company Lenovo over the alleged infringement of 20 video-compression technology patents. 

Though the terms of the cross-licensing agreement remain confidential, Lenovo has agreed to make a net balancing payment to Nokia.  

Jenni Lukander, president of Nokia Technologies, said: “We are delighted to have reached an agreement with Lenovo. The agreement reflects Nokia’s decades-long investments in R&D and contributions to cellular and multimedia standards.  

“We appreciate, and very much respect, the constructive spirit Lenovo brought to our negotiations, and look forward to working together to bring further innovation to their users around the world.” 

Nokia began its litigation with Lenovo in 2019 and had cases in the US, Germany and Brazil. In September the Lower Regional Court of Munich issued an injunction against the Chinese company and ordered a recall of all products from retailers. Two months later the Munich Higher Regional Court stayed the injunction.  

John Mulgrew, chief IP officer of Lenovo, commented: “Our agreement with Nokia reflects the value of both Nokia’s technology leadership and Lenovo’s continued investment in 5G innovation. The global accord struck will enable future collaboration between our companies for the benefit of customers worldwide.” 

Nokia is a leading standard essential patent owner with more than 3,500 patent families declared essential to 5G and over 20,000 families in total.  

The settlement resolves all pending litigation and proceedings in all jurisdictions between the two companies. 

Indian president Ram Nath Kovind has ordered the immediate closure of the country’s Intellectual Property Appellate Board even though it was supposed to be subject to parliamentary debate.  

Using powers afforded to him under India’s constitution, Kovind promulgated the Tribunal Reforms (Rationalisation and Conditions of Service) Bill 2021 on Sunday, April 4. 

The bill, which was introduced in the lower house of India’s parliament (Lok Sabha) on February 11, proposed closing the IPAB and transferring its functions to the courts. 

According to a notice shared by the SpicyIP blog, Article 123 of the constitution gives the president the power to take these measures if they are satisfied that circumstances exist which “render it necessary  ... to take immediate action”. 

Under the bill, India’s high courts will hear patent, trademark, geographical indication and plant variety cases that would have previously been heard at the IPAB. The government’s view is that tribunals – including the IPAB – have not fulfilled their purpose of providing speedy access to justice. 

The IPAB was created in 2003 with the aim of reducing the burden on courts and providing a specialised forum to challenge decisions by the Indian Patent Office. Its headquarters are in Chennai but it also conducts sittings in Mumbai, Delhi, Kolkata and Ahmedabad.  

However, in recent years it has been blighted by delays and a lack of appointed experts to sit on the panel.  

After the bill was introduced, in-house and private practice lawyers told Managing IP that it should spark wider reform of India’s overburdened judicial system.  

The EUIPO received its first EU trademark application 25 years ago this month, the office has announced in a special post to commemorate the milestone.  

The first EUTM was applied for on April 1 1996. Although it has not revealed who filed the first EUTM (which at the time was known as the Community trademark), the EUIPO said the first applications were from IP user associations such as AIPPI, ECTA, and INTA. 

In 1996 the EUIPO, then called the Office for Harmonization in the Internal Market, had only a handful of staff and all applications were received on paper. Today, almost 99% of applications are filed electronically.  

The original prediction had been for 12,000 applications in the first full year of operations. However, by the end of 1996, a total of 43,200 applications had been received, the EUIPO said.  

In 2020, despite an initial decrease in applications due to the COVID-19 pandemic, the year ended with a record number of applications – 177,000 in total, representing a 10.2% increase on 2019.  

Chinese companies were the number one source of applications in 2020 with their share of filings growing from 9.5% in 2019 to 16.2%.  

Christian Archambeau, executive director of the EUIPO, said: “Twenty-five years ago, the EUIPO received its first trademark applications. Since then, we have processed more than 2.2 million trademarks. The growth in filings over the years, and especially during the latest months, is remarkable by any standards and it does confirm the success of the EUTM.” 

In addition to announcing the milestone, the EUIPO said it has recently launched a set of initiatives aimed at helping small and medium-sized enterprises (SMEs) to protect their IP rights, including a portal offering a one-stop shop for SMEs, a pro-bono advice scheme, and a €20 million ($24 million) SME fund.   

The USPTO announced on Monday, April 5, that it would expand its Patents for Humanity award scheme to include patents that help track, treat, diagnose and prevent COVID-19. 

Launched in February 2012, the programme recognises innovators who contribute inventions that meet global humanitarian challenges, and provides business incentives for meeting those needs.  

Winners of the Patents for Humanity award will receive a certificate that allows them to accelerate USPTO patent processing for one eligible procedure, such as a patent application or an ex parte re-examination proceeding. The award certificate can be transferred to a third party for compensation under the Patents for Humanity Program Improvement Act.  

Drew Hirshfeld, functioning director of the USPTO, said: “Our nation’s innovation community is playing a crucial role in devising creative solutions to the ongoing pandemic.  

“Innovation is central to alleviating the difficulties COVID-19 has brought upon the public, and this new Patents for Humanity COVID-19 category allows us to provide special recognition to innovators tackling this unprecedented challenge.” 

Past winners of the award include Sanaria for developing a whole parasite vaccine for malaria, and Sisu Global for the invention of a mechanical alternative to transfusing donor blood.  

Secretary of Commerce Gina Raimondo said: “The Commerce Department is committed to supporting the groundbreaking work of the inventors and companies creating the new solutions we need to overcome the pandemic and other global challenges of the future.  

“The Patents for Humanity programme stands as a testament to the strength that human ingenuity can bring to solving humanity’s most pressing problems.” 

Companies and inventors who are currently developing or have developed technologies related to COVID-19 are eligible to submit an application for the award when they file a patent application.  

Those interested can click here.  

The US Court of Appeals for the Federal Circuit ruled in Wi-LAN v Sharp Electronics on Tuesday, April 6, upholding decisions from the District Court for the District of Delaware that electronics companies Sharp and Vizio did not infringe Wi-LAN’s patents. 

The plaintiff accused Vizio and Sharp of infringing claims 1, 4, and 9 of its ’654 patent and claims 1, 4, and 6 of its ’250 patent. The District of Delaware managed the cases against Vizio and Sharp in parallel, but the Federal Circuit consolidated the appeals because the cases were related. 

The ’654 patent relates to “methods to display interlaced video on [a] noninterlaced monitor”, while the ‘250 patent is directed “generally to multimedia encoders and specifically [to] an integrated multimedia stream multiplexer”. 

In February 2018, the District of Delaware issued a claim construction order construing certain terms of both patents. Wi-LAN said that it could not prove infringement of the asserted claims of the ‘250 patent under the venue’s constructions of certain words. The court then issued a stipulated judgment of non-infringement of this patent.  

For the ‘654 patent, the parties both filed motions for summary judgment on the issue of infringement at the District of Delaware. The district court granted the defendants’ motion for summary judgment and ruled that Wi-LAN lacked sufficient admissible evidence of the source code that it needed to prove infringement.  

Wi-LAN appealed both decisions to the Federal Circuit.