This week in IP: UK attorneys welcome UPC rules, Albright rejects NPE suit v Epic Games

New legislative measures in Russia designed to hit back at sanctioning countries may have prompted locals to rush to appropriate the intellectual property of famous Western brands, but Rospatent and courts are not likely to side with the squatters, Russian counsel have told Managing IP.

Several Russian applicants have filed trademark applications at Rospatent for marks that are identical or closely similar to marks and logos belonging to IKEA, McDonald’s, and Starbucks.

Russian lawyers, however, say (and hope) that all is not lost, as none of the existing laws allow for squatting of others’ IP rights and authorities know that granting conflicting IP to locals would impede the return of foreign businesses to the country.

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Other Managing IP stories published this week include:

• US firms prioritise Europe as UPC countdown begins

• Exclusive: Most Canada IP cases to be held in person again

• UPC could create litigation finance hub to rival US, say funders

• Breaking: USPTO plans to cut Russia PCT authority

• Irish IP firms face onslaught of new competition

• Trickle of EUTMs suggests brands cautious of metaverse

• CITMA 2022 puts spotlight on mental health

• Ed Sheeran trial puts spotlight on copyright-music relationship

• Indiamart must boost work with brands to avoid USTR crosshairs

• The trade secret skills gap and why firms must close it: in-house

Litigators who qualified from UK institutions before the end of 2020 will be able to represent clients at the Unified Patent Court, it was confirmed on Tuesday, March 22.

The court’s new administrative committee published rules on the rights of representation at the UPC, as well as the process for acquiring the European Patent Litigation Certificate (EPLC).

The EPLC is a new qualification that will be awarded by higher education institutions that have been accredited by the UPC.

The rules set out this week outline the course content that an institution must offer in order to be accredited, as well as a list of qualifications that will be accepted during a one-year transitional period when the UPC opens.

Those include courses from Queen Mary University of London, Nottingham Law School, and the Intellectual Property Regulation Board (which regulates patent and trademark attorneys), as long as the qualification was awarded by the end of the Brexit transition period, on December 31 2020.

The news has been welcomed by the UK patent attorney profession, following a period of uncertainty over whether UK-qualified attorneys would be allowed to represent clients before the new court.

Matthew Critten, chair of the Chartered Institute of Patent Attorneys’ litigation committee, said: “European patent attorneys from across Europe have obtained these qualifications and expected to be able to rely on them under the transitional provisions. The administrative committee is right to recognise that expectation as legitimate.”

The US Supreme Court denied Intel’s writ of certiorari challenging the NHK-Fintiv rule on Monday, March 21.

This rule sets out that Patent Trial and Appeal Board (PTAB) judges can discretionarily deny inter partes reviews (IPRs) if parallel district court proceedings are due to finish first.

Intel filed its petition in December 2021 after it lost a patent infringement case at the District Court for the Western District of Texas in March 2021 and was ordered to pay $2.175 billion in damages.

It had brought a Fintiv challenge to the US Court of Appeals for the Federal Circuit, but the court said in May 2021 that it didn’t have jurisdiction over Intel’s appeals of institution decisions.

The company argued in its SCOTUS petition that Fintiv violated the America Invents Act and undermined the role of IPRs in Congress’s effort to improve the integrity of the patent system.

“Congress gave the PTO no authority to decline to institute IPR merely because an overlapping infringement lawsuit is pending,” it wrote.

Some Fintiv critics had hoped that SCOTUS would take up Intel’s case after it denied Apple and Mylan’s challenges to Fintiv in March 2022.

Ed Sheeran’s 11-day copyright trial surrounding his hit song ‘Shape of You’ concluded on Tuesday, March 22.

The singer was accused of copying parts of the 2015 track ‘Oh Why’, written by Sami Chokri and Ross O’Donoghue, in his chartbuster song ‘Shape of You’, released in 2017.

Chokri performed ‘Oh Why’ under the alias Sami Switch.

Switch alleged in his complaint that the ‘oh I, oh I, oh I’ hook of Sheeran’s song was virtually identical to the ‘oh why, oh why, oh why’ reference in his track.

In order to prove infringement under UK copyright law, a defendant must be adjudged to have had access to the allegedly infringing work and copied a substantial portion of it.

Andrew Sutcliffe QC, for Chokri, said his client made several attempts to send ‘Oh Why’ to Sheeran in the hope that he would like the song and promote it.

He also argued there was an “indisputable similarity between the works” and that Sheeran must have had ‘Oh Why’ “consciously or unconsciously in his head” when he wrote ‘Shape of You’.

Sheeran and his co-writers Johnny McDaid and Steve Mac denied all allegations and said they do not remember hearing ‘Oh Why’.

‘Shape of You’ is one of Sheeran’s most successful tracks and was number one in the singles charts of 34 countries.

This is not the first copyright infringement allegation Sheeran has faced.

In 2016, US songwriters Martin Harrington and Tom Leonard claimed Sheeran's 2015 song ‘Photograph’ was nearly identical to their song ‘Amazing’. That case was subsequently settled.

A non-practising entity can’t sue Fortnite developer Epic Games in the Western District of Texas just because the games company has employees working from home in that region, Judge Alan Albright ruled last Friday, March 18.

The US District Court for the Western District of Texas is considered to be one of the most pro-plaintiff venues available to patent owners looking to file infringement suits, and typically refuses motions for summary judgment filed by defendants.

But in last Friday’s opinion, Albright granted Epic’s motion to dismiss NPE IngenioShare’s lawsuit on the grounds of improper venue.

Epic convinced the court that it didn’t have a regular and established place of business in the district, even though it has employees working out of their home offices there.

Albright cited case law from the US Court of Appeals for the Federal Circuit, which has previously rejected remote employees as a basis for establishing venue.

“While the plaintiff tries to support its argument with nuanced arguments of Zoom policies enforced at home, stipends, and location restrictions, such arguments still do not meet the demands of venue set out by the Federal Circuit,” Albright wrote.

Ingenio had cited Epic’s requirement for employees to attend meetings over Zoom, a practice the NPE said provided a “view into their home offices where they conduct Epic’s business” and were subject to Epic’s code of conduct.

But US law specifies that the relevant question here is whether Epic controls the place of work, rather than the conduct of its employees, Albright concluded.

Albright’s court was the most popular venue for US patent litigation last year, with the judge hearing approximately 25% of all infringement lawsuits filed that year.

The judge has previously expressed his desire to hear cases quickly, as well as a preference for jury trials.

Apple and intellectual property licensing company WiLAN have signed a licence agreement to settle cases in the US, Canada and Germany, it emerged on Tuesday, March 22.

The terms and conditions of this agreement have been not disclosed.

The companies have a long history of litigation.

The iPhone maker sued WiLAN in 2014 in the District Court for the Southern District of California, seeking a determination that it did not infringe patents related to allocating bandwidth in a wireless communication system. WiLAN argued that the iPhone 5 and 6 did infringe its patents.

A jury awarded the patent licensor $145 million in damages in 2018, but Dana Makoto Sabraw, chief judge in the Southern District of California, rejected this damages award and said WiLAN had to either undergo a retrial to determine damages or accept a $10 million award instead.

WiLAN chose to undergo a new trial, and a different jury awarded the licensor $85 million.

Apple convinced the Court of Appeals for the Federal Circuit to throw out this verdict in February, and the Federal Circuit agreed and ordered yet another trial to determine damages.

Cameroon has become the first country belonging to the African Intellectual Property Organisation to receive geographical indication protection in the EU.

The west African nation’s poivre de penja, a type of pepper, was granted registration on Thursday, March 17. It is the second African product to be recorded GI status.

South Africa's rooibos tea was previously granted GI status in May 2021.

With this grant, the number of non-EU countries that have registered GIs has increased to 21. There are currently 227 GIs.

Poivre de penja is a strong and pungent spice obtained from the berries of piper nigrum, a perennial vine of the Piperaceae family cultivated for its peppercorns.

Penja refers to a commune located in the Littoral region of west Cameroon.

Christian Archambeau, the EUIPO’s executive director, said: “A strong global environment for IP will give producers the cross-border foundation they need, enabling them to fully participate in the world economy, thereby helping to stimulate innovation and competitiveness in their sectors.”