COVID-19 IP Catch-Up: USPTO Gets Busy, Zoom Trial Begins

By Dani Kass
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Law360 (May 8, 2020, 6:59 PM EDT) -- The U.S. Patent and Trademark Office has issued a new update almost every day lately about how the pandemic is affecting its operations. Meanwhile, coronavirus-related issues also have been in play in court, leading to a patent trial conducted over Zoom, a fight over accessing Roku's source code remotely and more.

The push to expand access to intellectual property that could help fight COVID-19 also saw a big update on Thursday, as Canon, Toyota and other Japan-based tech companies pledged not to enforce their patents, copyrights and other IP rights against activities relating to the "diagnosis, prevention containment and treatment of COVID-19."

Here, Law360 takes a look at other IP-related COVID-19 news you may have missed.

In the Government

The USPTO saw a flurry of COVID-related efforts. On May 4, it launched an online marketplace called Patents 4 Partnership. The platform is aimed at supporting patent owners who want to license intellectual property related to the prevention, treatment and diagnosis of COVID-19, the agency said.

Then on May 6, the agency said it's temporarily allowing plant patent applications and follow-on documents to be filed digitally.

The next day, the USPTO held a Patent Public Advisory Committee meeting, featuring a budget update for the fee-funded agency. Officials said the pandemic and economic downturn have not yet had a significant impact on operations, but the agency is closely monitoring how a projected decline in revenue due to fewer filings could affect its budget.

Finally, the agency on Friday launched the COVID-19 Prioritized Examination Pilot Program, which will provide accelerated review for patent applications filed by independent inventors and small businesses while waiving fees usually associated with prioritized examination. These patent applications must involve products or processes that can be used to treat or prevent COVID-19, and are subject to U.S. Food and Drug Administration approval.

Across the Atlantic, the European Patent Office said it's again pushing back certain deadlines — including for in-person oral proceedings in its opposition divisions, where patents are challenged — until June 2.

Meanwhile, U.S. Immigration and Customs Enforcement unit Homeland Security Investigations and the National Intellectual Property Rights Coordination Center said they're teaming up with Pfizer, 3M, Citi, Alibaba, Amazon and Merck to target COVID-19-related fraud.

In a statement Tuesday, HSI said there's been "a significant increase in criminals attempting to capitalize and profit from the fear and anxiety surrounding the virus," including with counterfeit pharmaceuticals and medical equipment and the importation of products claiming to be treatments. The "unprecedented" partnership aims to rein that in.

In the Courts

On May 4, 3M won the first preliminary injunction in its fight accusing companies of violating federal trademark law with grossly inflated N95 protective masks prices. A New York federal judge issued the injunction against Performance Supply LLC, one of at least 10 companies 3M has sued since the pandemic began.

In Virginia, a bench trial to decide whether Cisco Systems infringed a startup's network security patents kicked off over Zoom on May 6. The first day ended up being a full-day technical tutorial, but by day two, it was revealed that the startup is seeking $445 million to $557 million.

A California federal magistrate judge on Friday shot down Roku Inc. when the company accused Canon Inc. of trying to access its source code through unsecure means during the pandemic. The judge said the companies hadn't worked out their disagreement in good faith before coming to the court and that they needed to try again.

"At a time when the country and the world is facing a health crisis, the court expects counsel and the parties to make extra efforts to resolve discovery issues amicably," the order states.

Roku had been asking to quash a subpoena from Canon in the latter company's Texas-based patent litigation with TCL Electronics Holdings Ltd over the TCL Roku TV. The fight isn't over whether Canon gets the source code, but whether its attorneys and experts can view it from their own homes, rather than the "secured and monitored environment typical for source code review." Roku, which isn't a party in the litigation, called the request "unprecedented, unnecessary, and [an] unjustifiable risk to its key business asset." 

In Ohio, a member of China's intelligence agency charged with attempting to steal trade secrets from jet engine manufacturer GE Aviation has asked the court to let him prepare for trial somewhere other than where he's currently incarcerated in Michigan. Yanjun Xu said the Federal Correctional Institution in Milan has failed to stop the spread of the virus, and that the threat to his health "cannot be overstated."

Prosecutors objected to his request, saying in a heavily redacted brief that transferring him would pose risks to the new facility. They also said he wouldn't get any more face time with his attorneys to prepare for trial at other facilities, since in-person visits are being restricted across the board.

And finally, DuraSeal Pipe's former CEO Lee Kraus was ordered to post a $2 million bond on May 4 to stay a $24 million judgment. Kraus, who lost a trial accusing him of forcing the bankruptcy of pipeline coating maker Xurex Inc. in order to take its intellectual property, had argued that he was having difficulty coming up with money, given the hardships posed by the coronavirus.

--Additional reporting by Tiffany Hu, Ryan Davis, Khorri Atkinson, Frank G. Runyeon and Cara Salvatore. Editing by Alanna Weissman.

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

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