This week in IP: Albright trial lessons revealed, Coke diversity policy on ice, Senate passes IDEA Act

On Thursday, April 29, Managing IP revealed the top lessons learned by litigators while watching Judge Alan Albright’s first four patent trials at the US District Court for the Western District of Texas.

Albright, who took up his position at the court in 2018, has fast become the busiest judge for patent cases in the US. Last year, 855 cases were filed in his court, 124 more than in the Delaware district court, the next busiest venue.

One of the five key lessons that lawyers have taken away is that they need to give careful thought to how they prepare (and select) their witnesses.

Syed Fareed, partner at Baker Botts in Austin, says the first thing to note is that Albright wants witnesses to actually answer questions in cross-examinations.

“Judge Albright is very keen on experts and witnesses answering the questions that they’re asked because the jury learns through them, and if they’re not answering the questions, they’re doing a disservice to the jury.”

Beyond that, private practice lawyers and in-house counsel tell Managing IP that parties should understand how to approach disputes that are broken down into multiple trials, and learn how to take advantage of Albright’s approach towards dispositive motions, among other things.

Click here to read the full article.

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The US Senate Judiciary Committee passed the Inventor Diversity for Economic Advancement Act yesterday, April 29, compelling the USPTO to collect demographic data, including on gender, race and other categories, from patent applicants on a voluntary basis.

The act also requires the USPTO to issue reports on the data collected and make the data available to the public, on the basis that external researchers can use the information to conduct their own analyses and offer insights into the various patent gaps in society.

After the bill was passed, Senator Dick Durbin of Illinois, the Senate majority whip, suggested it was an important step forward in opening up the patent system to broader society.

“We want to make sure the patent system is not only open to all inventors, regardless of race, gender and economic status, but we know the studies show women and minorities apply for and obtain patents at significantly lower rates than their white, male counterparts.” 

The IDEA Act was introduced in July 2019 following the implementation of the Study of Underrepresented Classes Chasing Engineering and Science (SUCCESS) Act in 2018.

SUCCESS asked the USPTO to study and recommend ways to promote the participation of women, minorities, and veterans in entrepreneurship activities and the patent system.

Coca-Cola has paused its landmark law firm diversity initiative, it was reported yesterday, April 29, a week after the departure of the policy’s architect.  

According to a report from Law.com, Coca-Cola’s new general counsel, Monica Howard Douglas, told the company’s global legal team during a virtual meeting that they were “taking a pause for now” on the initiative introduced in January.

She also said that the company would likely salvage some parts of the plan.

On request for comment, a Coca-Cola spokesperson told Managing IP: “When there is a leadership change, it takes time for the new leader to review the current status of the team, organisation and initiatives.

“Monica is fully committed to the notions of equity and diversity in the legal profession, and we fully expect she will take the time necessary to thoughtfully review any plans going forward.”

The policy had set out that at least 30% of Coca-Cola’s billed private practice lawyers should come from diverse backgrounds, and called for those firms to provide data on racial diversity among staff, as well as information on employees who identify as LGBTQ+ and people with disabilities.

The news comes just over a week after Douglas replaced Bradley Gayton as senior vice president and general counsel. Gayton resigned after less than a year as general counsel to take on a strategic consultancy role within the company.

Gayton, who was the driver behind the diversity policy, told Managing IP in February that diversity should be treated as a business imperative.

“The truth is that our profession is not treating the issue of diversity as a business imperative. We are too quick to celebrate stagnant progress and reward intention.”

Douglas, who has been with the company for 17 years having previously served as chief compliance officer and associate general counsel for the North America unit of the business, was confirmed as Coca-Cola’s new general counsel on April 23.

In her new role, Douglas will oversees the company’s global legal function, reporting to CEO James Quincey.

Trademark applications are up but patent and design filings have decreased slightly, according to figures reported by Australia’s intellectual property office.

According to the Australian IP Report (the office’s annual report), published yesterday, April 29, trademark applications increased by 8% compared to 2019 – up to 81,702 from 75,166.

Applications for patent and design rights fell by 2% and 4% respectively. In 2020, IP Australia received 29,293 patent applications compared to 29,789 in 2019. There were 7,165 design applications during 2020 compared to 7,462 in 2019.

According to the office, the fall in patenting is due to a reduction in filings originating in Australia.

In a statement accompanying the report, IP Australia said 2020 was an unprecedented year in which businesses had faced significant challenges because of the COVID-19 pandemic.

“Through this uncertainty, our IP system has played an important role in providing Australians with the confidence to innovate, by ensuring that they can protect their innovations and brands both in Australia and abroad,” the office added.

A new study has put Finnish telecoms company Nokia at the top of the list for 5G standard essential patents, it was revealed on Wednesday, April 28.

According to a statement from Nokia, this is the second time it has been ranked first for 5G SEPs by PA Consulting, the company that authored the study.

The analysis company says it uses its own methodology to analyse the 5G patent landscape rather than relying on companies to report their numbers.

Jenni Lukander, president of Nokia Technologies, said: “These independent findings reflect the significant contribution Nokia makes to developing industry standards, our continuous investment in R&D, and the strength of our patent portfolio.

“The study is also a reminder that you need to look at not just the number of patents but also the quality when assessing the strength of a patent portfolio.”

The PA Consultancy study confirms previous findings. According to an IPlytics report released in February 2021, Nokia had the highest share of US or European patents granted and active 5G patent families multiplied by essentiality at 15.29%, slightly ahead of Samsung at 15.1%.

IPlytics explained in the February 2021 report that “neither ETSI nor the declaring companies have published independent assessments of the essentiality or validity of the declared 5G patent families.

“Thus, the 5G patent families presented are only allegedly potentially essential. Many well-known SEP studies estimate that between 20% and 30% of all declared patents are essential.”

Reports such as these highlight the quickly changing 5G landscape and how much of that landscape is still unknown.

INTA announced on Wednesday, April 28, that it will hold its 2021 Annual Meeting virtually because of uncertainties surrounding COVID safety, although it will also host in-person, one-day events in certain cities. 

The organisation will conduct education sessions, business development opportunities and committee meetings on its virtual platform from November 15 to 19 – when the event was originally scheduled to take place in Houston, Texas.

Etienne Sanz de Acedo, CEO of INTA, wrote it an email that the association was prioritising the health and safety of its registrants, sponsors and staff.

“While some countries fortunately are emerging from the COVID-19 pandemic, others unfortunately are in a mounting crisis. The status of the pandemic, vaccine administration, quarantine requirements, government and company travel restrictions, and such are continually shifting, creating too many unknowns to plan a large-scale, in-person event for November,” he said.

Last year’s annual meeting was also scheduled to take place in Houston, after the organisation’s previously scheduled meeting in Singapore was postponed because of COVID.

In May last year, INTA announced that the meeting would be held as an all-digital event instead.

INTA will announce more details on the in-person events as it monitors health and safety conditions around the world.

In a development that will please tax professionals in generic drug companies, the US Tax Court ruled on Tuesday, April 17, that Mylan could deduct the legal fees it incurred defending itself against patent infringement suits from brand-name drug manufacturers in Hatch-Waxman suits.

The court said that because the litigation wasn’t related to the FDA’s approval process for generic drugs, the costs were deductible as ordinary business expenses. It ruled that Mylan didn’t owe all of the $50 million the Internal Revenue Service (IRS) said it did in deficiencies from claimed deductions.

The opinion contradicts longstanding IRS field advice, and potentially applies to other generic drug manufacturers that have had cases related to abbreviated new drug applications (ANDAs) brought against them.

However, the court agreed with the IRS that attorney fees incurred in preparing the ANDA, including notice letters sent to the brand-name manufacturers informing them of the paragraph IV certification, should be regarded as the cost of creating an asset.

To mark World IP Day on Monday, April 26, Vermont senator Patrick Leahy tweeted a statement accusing the government of former US president Donald Trump of trying to weaken the Leahy–Smith America Invents Act (AIA).

Leahy, who chairs the Senate Judiciary Subcommittee on Intellectual Property, wrote that it was important that the next director of the USPTO respect the law, including statutory bounds set by Congress.

“The last administration took steps to undermine the Leahy–Smith Act by acting outside of those statutory bounds,” he said.

The AIA was a bipartisan piece of legislation signed by President Obama in 2011 that moved the US from a first-to-invent to a first-to-file system. The act also expanded post-grant opposition procedures and created a fee-setting authority at the USPTO.

In his tweeted statement, Leahy noted that barriers remain in place keeping new inventors and small companies from filing and protecting IP.

He said those barriers include the high cost of obtaining a patent, legal fees, lack of knowledge of how the system works, and lack of representation of women in the IP system.

The senator concluded his statement saying he wanted “a diverse, accessible and effective intellectual property system that rewards creativity and innovation [that] is essential to our nation's continued prosperity”.

The US Copyright Office proposed a procedure on Monday, April 26, for a 10-day expedited registration for works at issue before the Copyright Claims Board (CCB) – which was established by the Copyright Alternative in Small-Claims Enforcement (CASE) Act.

The US enacted the CASE Act in December 2020.

As part of the proposed rule, a claimant or counter-claimant in a CCB proceeding with a pending copyright application could pay a $50 additional fee and request an expedited registration.

The office is proposing this rule because the CASE Act mandates that the work at issue in a CCB proceeding must be registered by the Copyright Office and the other parties in the proceeding must have the opportunity to address the registration certificate before the CCB issues a decision.

The CASE Act established the CCB as an alternative forum to the federal courts for copyright disputes where damages did not exceed $30,000. Parties can also opt out and ask for a case to be heard in a federal court instead.

The law is expected to go into effect no later than December 2021. This year, the Copyright Office has to establish regulations to implement the law.

Stakeholders that want to submit a comment in response to this proposed rulemaking must do so before 12am EST on May 27 2021.

Daimler and Conversant have settled their patent dispute centring on connected cars, it was announced on Friday, April 23, although a final peace deal between the car industry and standard essential patent owners is still some way off. 

At the end of last week, both parties withdrew lawsuits before the Munich Regional Court and challenges at the EPO.

Conversant had filed four cases against Daimler at the Munich court, in which it accused Daimler of infringing four SEPs protecting mobile communications technologies. 

The court had only decided one case, in favour of Conversant, when the litigation was dropped. It had ruled that Daimler was an unwilling licensee. The car company had appealed that judgment.

Daimler had also filed oppositions at the EPO against the granting of two Conversant-owned patents.

While the settlement marks the end of litigation between these two parties, it doesn’t bring the entire connected car saga surrounding SEP licensing to an end.

Daimler is still involved in other connected car-related litigation. In 2019, Nokia filed 10 complaints against the company in the Düsseldorf, Mannheim and Munich Regional Courts.

In November 2020, the Düsseldorf court referred the dispute between Nokia and Daimler to the Court of Justice of the EU for clarification. The outcome of that referral is still pending.