COVID-19 IP Catch-Up: Delays, Masks & Ducks

By Dani Kass
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Law360 (July 17, 2020, 10:23 PM EDT) -- Even as a remote patent trial finishes up in New York, judges in Delaware are pushing dates back and Apple is asking for further delays in Texas. On the trademark end, 3M has reported back on its litigation campaign over N95 masks. Here are some recent intellectual property updates tied to the coronavirus outbreak that you may have missed.

Trials

In New York, the long-awaited Zoom trial between Ferring Pharmaceuticals and Serenity Pharmaceuticals over patents tied to the nighttime urination medication Nocdurna pressed on, with testimony wrapping up on Wednesday. The trial will resume this week, with closing arguments expected to be held July 22.

But elsewhere, trials are continuing to be pushed back over virus concerns, or at least parties are pushing for delays.

In the Eastern District of Texas, Apple on Tuesday asked U.S. District Judge Rodney Gilstrap to postpone its trial against PanOptis over 4G LTE technology patents by two months. An expert cited by Apple said a trial starting Aug. 3 would "pose an extraordinary risk to those people who would be involved."

On the same day, Apple also asked the Texas court for a pretrial conference in its looming retrial with VirnetX to be held remotely. The company said an in-person hearing before the Aug. 17 retrial would needlessly risk the health of everyone involved, especially when the country as a whole — and Texas in particular — has had a "significant upsurge" in COVID-19 in recent weeks.

On July 13, an Illinois federal magistrate judge said waste hauling company Sonrai Systems LLC has to make do with remotely deposing witnesses offered by a fleet management technology firm that Sonrai says improperly obtained confidential information from a former employee, finding that COVID-19 health risks outweigh calls for an in-person deposition.

In Delaware, U.S. District Judge Leonard Stark on July 13 rescheduled a jury trial planned for August between Sunoco and Magellan Midstream over gasoline patents. He scrapped an "experimental" plan to have jurors attend in-person with witnesses testifying remotely due to the pandemic. While Magellan was fine with going to trial, Sunoco pushed for the delay, citing an increase in COVID-19 cases in the state.

Then on Wednesday, another Delaware judge caved to Cox Communications Inc.'s plea to delay a patent infringement trial scheduled to begin Aug. 18, given the risks posed by the pandemic.

Masks

In a statement Thursday, 3M said overall it has filed 18 suits related to COVID-19 fraud, including against companies selling N95 masks at inflated prices. 3M also said it's been able to shut down thousands of websites and social media posts tied to the alleged misconduct.

"The schemes we shut down were not only unlawful, they also endangered lives and wasted precious time and resources by diverting buyers from legitimate sources of much-needed respirators," Denise Rutherford, senior vice president of corporate affairs, said in a statement.

Among those suits was one filed against AIME LLC and its owners Wednesday. The Lanham Act suit in Washington federal court alleges that AIME has been selling 3M N95 respirators at inflated prices and lying about its relationship with 3M.

Also in the realm of mask sales, a Chinese electric car maker turned N95 respirator mask manufacturer on July 10 won a preliminary injunction in its own Lanham Act suit. BYD Co. Ltd.'s suit, filed in California, is against a handful of individuals who are allegedly "operating an illegal scheme" to sell counterfeit versions of its masks.

"Plaintiffs have shown that their loss of control over the supply of 'BYD' branded respirator masks, including the sale of unapproved, potentially ineffective masks, will result in intangible harm to their business reputation, particularly given the exigencies of the COVID-19 crisis in the United States," U.S. District Judge Dolly M. Gee said in granting the injunction.

The defendants in both of these cases couldn't be reached for comment Friday.

More

The U.S. Copyright Office on July 10 said it was expanding deadline relief tied to the virus for another 60 days, until Sept. 8. These changes are related to when a copyright owner must register their work after its first publication, timing for authors trying to recapture copyrights that had been transferred to others and the delivery of physical statements. 

"In each of these areas, the Copyright Office became aware that participants in the copyright system may have been prevented from meeting the relevant deadlines due to the pandemic," the acting register said in a letter to Congress. 

On Thursday, business associations from Germany, Canada, the U.K., Korea, France and the U.S. published an open letter to world leaders, which the U.S. Chamber of Commerce said hoped to find "partnership in removing obstacles to innovation access, maintaining strong intellectual property (IP) protections, and encouraging smart global collaboration through existing technology licensing models."

Additionally, Law360 talked with the co-chair of Fish & Richardson PC's post-grant practice group about adjusting to remote proceedings at the Patent Trial and Appeal Board, what patent concerns may be coming down the line and how he ended up quarantining in Virginia with a trio of mail-order ducklings, as part of our Coronavirus Q&A series.

--Additional reporting by Daniel Siegal, Cara Salvatore, Tiffany Hu, Jon Steingart and Sarah Jarvis. Editing by Kelly Duncan.

For a reprint of this article, please contact reprints@law360.com.

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Case Information

Case Title

VirnetX Inc. et al v. Apple Inc.


Case Number

6:12-cv-00855

Court

Texas Eastern

Nature of Suit

Patent

Judge

Robert W. Schroeder, III

Date Filed

November 06, 2012


Case Title

ChanBond, LLC v. Atlantic Broadband Group, LLC, et al.


Case Number

1:15-cv-00842

Court

Delaware

Nature of Suit

Patent

Judge

Richard G. Andrews

Date Filed

September 21, 2015


Case Title

Sonrai Systems, LLC et al v. Anthony M. Romano et al


Case Number

1:16-cv-03371

Court

Illinois Northern

Nature of Suit

190(Contract: Other)

Judge

Honorable Thomas M. Durkin

Date Filed

March 16, 2016


Case Title

Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC et al


Case Number

1:17-cv-01390

Court

Delaware

Nature of Suit

Patent

Judge

Leonard P. Stark

Date Filed

October 04, 2017


Case Title

Ferring Pharmaceuticals Inc. et al v. Serenity Pharmaceuticals, LLC et al


Case Number

1:17-cv-09922

Court

New York Southern

Nature of Suit

Patent

Judge

Colleen McMahon

Date Filed

December 20, 2017


Case Title

Optis Wireless Technology, LLC et al v. Apple Inc.


Case Number

2:19-cv-00066

Court

Texas Eastern

Nature of Suit

Patent

Judge

Rodney Gilstrap

Date Filed

February 25, 2019


Case Title

BYD Company Ltd et al v. Alexander Khazai et al


Case Number

2:20-cv-05530

Court

California Central

Nature of Suit

Trademark

Judge

Dolly M. Gee

Date Filed

June 22, 2020


Case Title

3M Company v. AIME LLC et al


Case Number

2:20-cv-01096

Court

Washington Western

Nature of Suit

Trademark

Judge

Richard A. Jones

Date Filed

July 15, 2020

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