This week in IP: Redskins rebrand as ‘Commanders’, M&S settles caterpillar dispute, and more

Standard-essential patent owners are braced for a new policy from the European Commission on essentiality this year, according to telecoms industry sources who expect a roadmap document for an updated licensing framework to be published within a matter of weeks.

Sources from both SEP owner and implementer companies say that while they don’t know exactly what the Commission plans to do with its policy review at this stage, they expect essentiality and transparency to emerge as key themes.

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Retailers Marks & Spencer and Aldi have reached a settlement in a high-profile trademark row over their respective caterpillar cakes, it was revealed on Wednesday, February 2.

M&S had accused the German supermarket brand of copying its Colin the Caterpillar cake with its alternative confection called Cuthbert the Caterpillar.

The British brand filed its case at the England and Wales High Court in April last year. M&S owns three trademarks relating to Colin, a product launched 30 years ago.

The cake is a sponge with milk chocolate and buttercream, topped with chocolate sweets and a smiling white chocolate face.

The supermarkets declined to share details of the settlement.

According to reports, Mr Justice Timothy John Bowles allowed the legal claim to be withdrawn on Thursday, January 27, on the basis that the retailers had signed a confidential agreement in November last year.

M&S said it was pleased with the outcome, and Aldi took to social media to reignite the #FreeCuthbert hashtag it used when the dispute first came to light.

In a hint that Aldi may have agreed to alter the appearance of its product, the retailer tweeted: “Getting out early on good behaviour, keep an eye out for Cuthy B this Spring.”

The National Football League team formerly known as the Washington Redskins announced that it had rebranded as the Washington Commanders on Wednesday, February 2.

There were hints in the past few days that ‘Commanders’ would be the chosen name. A Twitter user spotted that the domain, Commanders.com, had been transferred to IP services company MarkMonitor, which the NFL uses to handle domain names for its teams and brands.

The team also reportedly filed for several trademarks covering its potential names, including Commanders.

The Redskins name was considered deeply offensive to Native Americans and was subject to a long-running legal dispute.

But it wasn’t until the death of George Floyd in 2020 and the subsequent focus on racism that the team decided to rebrand. Several other well-established brands, including Uncle Ben’s and Aunt Jemima, made similar decisions around the same time.

The ‘Redskins’ trademarks were cancelled in 2014 on the grounds that they were disparaging.

But this decision was later declared moot after the 2017 Supreme Court case Matal v Tam, in which SCOTUS found the Lanham Act’s prohibition against registering disparaging marks unconstitutional.

Between 2020 and now, the team was known as the Washington Football Team.

Qualcomm’s case to prove the validity of an important modem chip patent has been given new life, after the US Court of Appeals for the Federal Circuit handed it a victory over its long-time rival Apple on Wednesday, February 1.

In a precedential opinion, the appeals court ruled that the Patent Trial and Appeal Board (PTAB) may have wrongly considered admissions made within the Qualcomm patent itself as prior art.

The case has now been sent back to the PTAB to consider whether Apple’s case was primarily based on said admissions.

“We agree with Qualcomm and the USPTO that the patents or printed publications that form the basis of a ground for inter partes review must themselves be prior art to the challenged patent,” wrote circuit judge Raymond Chen.

“That conclusion excludes any descriptions of the prior art contained in the challenged patent,” he added.

The USPTO had asked the Federal Circuit to remand the case to allow the board to apply guidance issued by then-USPTO director Andrei Iancu in August 2020.

The dispute stems from the high-profile litigation that Qualcomm and Apple settled in 2019. While that deal provided for a global licensing agreement and a resolution to Qualcomm’s patent infringement claims against Apple, it left the iPhone maker’s challenge at the PTAB outstanding.

The PTAB invalidated Qualcomm’s patent on the basis that a person of ordinary skill in the art would have been motivated to combine the method set out with other prior art.

The Federal Circuit confirmed that while disclosures made in the patent itself couldn’t be considered prior art, they could still help the PTAB determine the background knowledge of a skilled person.

BlackBerry said on Monday, January 31, that it had sold a legacy patent portfolio to specially formed capital venture Catapult IP Innovations for $600 million, making the agreement one of the most lucrative patent acquisition deals in history.

The portfolio contains approximately 38,000 “non-core” patents, mostly covering mobile devices, wireless networks, and messaging technology, according to the Canadian telecoms company.

The deal will see BlackBerry receive $450 million in cash now and a further $150 million in over five years.

The Canadian telecoms company will also get a licence to all of the patents included in the sale as part of the deal so not to impact any BlackBerry products or services.

BlackBerry halted support for its mobile devices last month, amid a longer-term transition to software services.

Catapult IP has borrowed the $450 million for the initial sum and agreed to make five additional payments of $30 million a year.

Funding for the loan was provided by a syndicate, which includes Toronto-based private lender Third Eye Capital.

GlaxoSmithKline and Gilead Sciences have settled their global patent infringement dispute over HIV medication for $1.25 billion, GSK announced on Tuesday, February 1.

ViiV Healthcare, an HIV unit primarily owned by GSK, alleged in its 2018 lawsuits filed in the US and Canada that Gilead’s drug Biktarvy infringed its patents relating to dolutegravir, an antiretroviral medication used to treat HIV.

Gilead agreed to pay ViiV Healthcare $1.25 billion in the first quarter of 2022. It will also pay a 3% royalty on all future US sales of Biktarvy, which contains the HIV integrase inhibitor bictegravir, tenofovir alafenamide and emtricitabine.

It will pay the same royalty rate on the bictegravir component of any other future bictegravir-containing products sold in the US. Gilead will pay the royalties until the expiration of ViiV Healthcare’s patent on October 5, 2027.

Pfizer and Shionogi are minority shareholders in ViiV Healthcare and will receive upfront payments and royalties in proportion to their stakes in the company.

Pfizer owns an 11.7% stake, and Shionogi has a 10% share.

Rapper Lil Yachty filed a trademark infringement lawsuit in the US District Court for the Central District of California on Thursday, January 27, against non-fungible tokens platform Opulous for maliciously using his likeness and name to raise over $6.5 million in venture capital funds.

The lawsuit alleged that the music-industry focused NFT startup published numerous advertisements and made multiple statements to the media falsely suggesting that Lil Yachty was involved with its products and services.

The rapper – real name Miles McCollum – claimed that he had meetings with Opulous numerous times in May last year, but no agreement or deal terms were reached.

On June 1, 2021, Opulous announced that it would be “kicking things off with a series of unmissable NFT drops led by world-famous artists including Lil Yachty”. A press and social media campaign followed, said the plaintiff.

“In these publications, defendants prominently displayed the plaintiff’s name, trademark, and photograph, all without the plaintiff’s permission or consent,” the complaint read.

Opulous never remitted any of the $6.5 million in venture capital funds to McCollum, according to the rapper.

The USPTO released a patent public search tool on Tuesday, February 1, to make it more convenient to search for US patents and published applications.

The tool is based on the Patents End-to-End search tool USPTO examiners use to identify prior art.

It combines the capabilities of four existing technologies: Public-Examiner’s Automated Search Tool (PubEAST), Public-Web-based Examiner’s Search Tool (PubWEST), Patent Full-Text and Image Database, and Patent Application Full-Text and Image Database. These are scheduled to be retired in September.

The new tool includes multi-colour highlighting that can be turned on and off, the ability to tag documents into multiple groups that can be renamed and colour coordinated, and the same searching syntax as PubEAST and PubWEST.

Users could only access PubEAST and PubWEST at a USPTO facility, but anyone with internet access will be able to use the new tool.

Drew Hirshfeld, the de-facto acting USPTO director, said the platform represented a significant step forward in the office’s efforts to meet stakeholders where they were, particularly during COVID.

“Knowing that our previous tools did not provide users with the convenience or similar functionality as those used by our examiners, it is incredibly gratifying to know that now more stakeholders can search for patents using the resources of four powerful search platforms in one expansive tool,” he said.

The office said upcoming public training sessions would be posted on its website as soon as they were scheduled.

US Senator Thom Tillis wrote a letter on Wednesday, January 26, asking the Administrative Conference of the US to conduct a study on whether Congress should create a unified, stand-alone and independent intellectual property office.

He addressed the letter to acting chair Matthew Lee Wiener and counsel for congressional affairs Todd Rubin, both at ACUS.

Such an agency would combine the USPTO, the Copyright Office and possibly the White House Office of the US IP Enforcement Coordinator.

Tillis said this office should be led by a director who would be appointed by the president and confirmed by the Senate. But it would have separate commissioners for patents, trademarks, copyrights, and policy coordination, all reporting to the director.

The senator said the study should investigate whether this combined office should be funded from fees or from taxpayer dollars.

He added that it should also assess how the unified office would perform certain functions, such as registering trademarks, copyrights and patents, advising government officials on IP issues and representing the US in international IP-related negotiations.

He asked the recipients to confirm receipt of the letter no later than February 15 and complete the study no later than February 1, 2023.