Winter 2020
Outreach by NYIPLA and its members has continued apace since my column in the Summer/Fall 2019 issue of The Report. So many of you have reached out to help with and participate in important programs and projects like: the Patent Litigation Committee’s judges’ panel discussing the “View from the Bench” on patent litigation issues; the Corporate Committee and Young Lawyers Committee’s joint networking program and reception providing young lawyers with the chance to hear a panel of corporate counsel discuss their paths to an in-house career; the webinar on how and why clients buy IP services; the One-Day Patent CLE program, truly demonstrating joint outreach efforts from many committees working together to bring 6 different panels on a variety of important IP topics with a keynote address by District of New Jersey Chief Judge Wolfson; the President’s Forum addressing the issue of liability in the realm of online platforms and follow-on formation of a task force on continued interface with the government’s IPR center; the NYIPLEF’s 2nd Annual Diversity Scholarship Event featuring three retired federal judges on the panel and impromptu comments from a fourth retired federal judge and former board member; the Women in IP Law and Young Lawyers Committees’ negotiating skills panel aimed at overcoming stereotypes and implicit bias during negotiations; the PTAB Committee’s ongoing meetings discussing and debating important issues arising in PTAB practice; the Trademark Committee’s Trademark Update Panel with USPTO officials; the Amicus’ Committee’s continued support and hard work, with a Supreme Court brief submitted with help from the Trademark Committee on the issue of protection for marks comprised of terms with gTLDs in the Booking.com case; the selection of The Inventor of the Year by that committee; and The Legislative Action Committee’s continued important work on monitoring and providing guidance on legislative proposals affecting IP rights including many efforts addressing patents in the pharma space, the formation of a task force on the issue of adding design patents to Customs seizure authority, and with participation from the Trademark Committee, meetings and writings addressing proposed legislation affecting trademark enforcement and applications. And now this Report issue with timely and important contributions submitted from across the committees. The level of outreach from the members of the Association has been impressive and humbling. There are only 3 months left in my term as President. Let’s keep it up. Please get involved. Please reach out. Your ideas, contributions, suggestions, involvement, and most of all your outreach, make it all possible.
In This Issue:
NYIPLA President's Corner
KATHLEEN MCCARTHY
President's Corner Calendar The Patent Paradox: Challenging the Presumption Against Extraterritoriality Patent Trial and Appeal Board Clarifies Public Accessibility Evidentiary Standard in Hulu v. Sound View An Interview with the 2019 NYIPLA Inventor of the Year, Dr. Sharon Shacham Notable Trademark Decisions Trademark Portfolio Management: A Client's Guide to Glocal Success IP Media Links NYIPLA Event Programming Board Minutes Moving Up and Moving On Welcome New Members
NYIPLA Calendar
LAW FIRM RANKINGS - WHY THEY MATTER AND HOW TO IMPROVE YOUR RESULTS WEBINAR
MAY 12
PTAB's MOTION TO AMEND PRACTICE IN PTAB PROCEEDINGS AMSTER ROTHSTEIN & EBENSTEIN
APRIL 7
aPRIL 8
2020 ANNUAL MEETING AND AWARDS DINNER AMSTER ROTHSTEIN & EBENSTEIN
Abstract The Presumption against Extraterritoriality presumes that federal statutes concerning intellectual property apply only within the territorial jurisdiction of the United States, to prevent conflicts between domestic and foreign legislation. This Article explores the impact of the Supreme Court decision in WesternGeco LLC. v. ION Geophysical Corp., which held that recovery of lost foreign profits is a permissible application of §284 of the Patent Act. Although the Court limits the holding to 35 U.S.C. §271(f)(2) damages, subsequent precedent has applied damages for lost foreign profits under other statutory bases for §271 infringement. Allowing U.S. patent owners to use U.S. courts to extend monopolies to foreign markets invites other countries to use their own patent laws and courts to assert control over the U.S. economy. Furthermore, allowing recovery of lost foreign profits for infringement of domestic patents may impose greater liability upon multinational companies that conduct collaborative research and development (“R&D”), thereby discouraging investors and innovators from conducting research in the U.S. Introduction Intellectual property law governs the sharing of knowledge and facilitates access to debt and venture capital markets for emerging innovators.[i] Empirical analyses of the causal effect of patent invalidation using decisions of the U.S. Federal Circuit demonstrate that patent invalidation causes innovators to reduce subsequent research and development (“R&D”) expenditure by an average of 50%.[ii] Intellectual property intensive industries account for roughly 38% of U.S. GDP annually. It is imperative to the U.S. economy that domestic research is protected against exploitation.[iii] The Supreme Court has historically held that the federal patent system makes no claim to extraterritorial effect and rejected encroachment upon the federal patent system by foreign nations.[iv] Foreign conduct is generally the domain of foreign law, and foreign patent law may embody conflicting policy judgments governing the respective rights of inventors, competitors, and consumers of patented inventions.[v] Guidance by the Supreme Court has traditionally provided that the proper remedy to prevent the selling of patented inventions in foreign countries is to obtain and enforce foreign patents.[vi] This Article analyzes the Supreme decision in WesternGeco LLC. v. ION Geophysical Corp., which held that recovery of lost foreign profits is a permissible application of § 284 of the Patent Act. Part I of this Article discusses the presumption against extraterritoriality, Part II discusses the presumption’s curtailing as it pertains to intellectual property, Part III discusses concerns regarding extraterritorial effectuation of federal statutes, and Part IV discusses mitigating threats to the sovereignty of nations’ patent law. I. Presumption against Extraterritoriality In 1972, the presumption against extraterritoriality bound the Supreme Court to declare that existing patent law was unable to preclude companies from developing components of technology domestically and sending them abroad for assembly, even if the assembled technology infringed on another technology’s patent.[vii] The Court held that a combination patent protects only against the operable assembly of the whole, and not the manufacture of its parts.[viii] Thus, if a manufacturer had not combined components into an operable assembly within the U.S., the Court would refuse to find any direct infringement within the meaning of 35 U.S.C. §271(a).[ix] This statute provides that whoever without authority makes, uses, offers to sell, or sells any patented invention, within the U.S. or imports into the U.S. any patented invention during the term of the patent, infringes the patent.[x] In 1984, Congress passed the Patent Law Amendments Act, which [1] forbid companies from sending components of a patented product abroad with the intent to combine them into a U.S. patented product.[xi] This statute provides that whoever without authority supplies or causes to be supplied in or from the U.S., 1) all or a substantial portion of components of a patented invention, or 2) any component of a patented invention, in a manner that would infringe the patent if it occurred within the U.S., shall be liable as an infringer.[xii] In effect, a company can be liable for patent infringement if it ships components of a patented invention overseas for assembly; however, the presumption against extraterritoriality bars recovery of lost foreign profits under §271.[xiii] A. The Extraterritorial Effect of a Domestic Statute In 2016, in RJR Nabisco, Inc. v. European Community the United States Supreme Court evaluated the extraterritorial effect of a domestic statute.[xiv] In this case, the plaintiff alleged that the defendant directed, managed, and controlled a global money-laundering enterprise in violation of the Racketeer Influenced and Corrupt Organizations (“RICO”) statute and New York state law.[xv] The district court granted the defendant’s motion to dismiss the claim, based on the presumption that the U.S. states did not apply extraterritorially without explicit Congressional intent.[xvi] The U.S. Court of Appeals for the Second Circuit reversed and held that claims that violate federal statutes can apply extraterritorially when the claim is a violation of a predicate statute that Congress clearly intended to apply abroad.[xvii] The Supreme Court granted Certiorari and held that RICO applies extraterritoriality, only to the extent that the predicate offenses in a particular case apply extraterritoriality.[xviii] In its decision, the Supreme Court established a two-step framework for deciding extraterritoriality, which involves asking, first, whether the presumption has been rebutted.[xix] Second, if the presumption is not rebutted, the Court must ask whether the case involves a domestic application of the statute.[xx] Courts make the second determination by identifying what the focus of the statute is and whether the conduct relevant to that focus occurred in the United States territory.[xxi] If so, the case involves a permissible domestic application of the statute.[xxii] II. Reevaluating the Presumption against Extraterritoriality In 2018, inWesternGeco LLC v. ION Geophysical Corp., the United States Supreme Court curtailed the application of the presumption against extraterritoriality.[xxiii] In the case, the plaintiff owned four patents for a system that it developed for surveying the ocean floor, using lateral-steering technology to produce higher quality data than previous survey systems.[xxiv] The plaintiff did not sell its technology or license it to competitors, but rather used the technology to perform surveys for customers.[xxv] For several years, the plaintiff was the only surveyor that used such lateral-steering technology, until 2007, when the defendant began selling a competing system.[xxvi] The defendant manufactured the components for its system in the United States and then shipped them to companies abroad, who combined the components to create a surveying system indistinguishable from the plaintiff’s and used the system to compete with the plaintiff’s.[xxvii] The plaintiff sued for patent infringement under §§271(f)(1) and (f)(2), which makes liable any infringement of all or a substantial portion of components or single component of a patented invention, in a manner that would infringe the patent if it occurred within the U.S.[xxviii] At trial, the plaintiff proved that it had lost ten specific survey contracts due to the defendant’s infringement.[xxix] Accordingly, the jury found the defendant liable and awarded the plaintiff damages of $12.5 million in royalties and $93.4 million in lost profits.[xxx] The defendant subsequently filed a post-trial motion to set aside the verdict, arguing that the plaintiff could not recover damages for lost profits because §271(f) did not apply extraterritorially.[xxxi] The District Court denied the motion, and the Court of Appeals for the Federal Circuit reversed the award of lost-profits damages.[xxxii] The Federal Circuit had previously held that §271(a), the general infringement provision, does not allow patent owners to recover for lost foreign sales.[xxxiii] The Federal Circuit argued that §271(f) should be interpreted the same way, because it was designed to put patent infringers in a similar position.[xxxiv] The plaintiff petitioned for review in Supreme Court, and on remand, the panel majority reinstated the portion of its decision regarding the extraterritoriality of §271(f).[xxxv] The plaintiff’s award for lost profits was deemed a permissible domestic application of §284 of the Patent Act, which, in a case involving infringement under §271(f)(2), focuses on the act of exporting components from the United States.[xxxvi] The Court concluded that because the plaintiff’s award of lost profits was no more than a domestic application of §284, the award was not barred due to extraterritoriality.[xxxvii] Section 284 provides that an infringer shall pay damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.[xxxviii] Until WesternGeco, in all of the cases in which the Supreme Court has addressed the presumption against extraterritoriality, it had confronted an issue of liability for recovery under §284: whether foreign conduct could create liability within the United States.[xxxix] In WesternGeco, the Supreme Court evaluated the availability of damages under §284 for activities arising outside the territorial United States.[xl] The Supreme Court held that because Congress enacted §271(f) with the express purpose of enforcing U.S. patent rights abroad, it had satisfied the test set forth in RJR Nabisco, Inc. v. European Community, and lost profits would be recoverable.[xli][ 2] By finding that the award of lost profits in WesternGeco LLC v. ION Geophysical Corp. pertained to domestic activity, the Supreme Court did not resolve whether the presumption against extraterritoriality applies to other statutes, such as 35 U.S.C. §284, that merely provide a general damages remedy for conduct that Congress has declared unlawful.[xlii] Given the additional damages now available in foreign patent infringement suits established in WesternGeco, disputes will emerge over whether the infringing conduct under §271(f) actually caused the plaintiff’s lost profits, or whether an intervening cause resulted in the lost profits.[xliii] The Court declined to resolve this issue, known as the doctrine of proximate cause, leaving for another case the question of how far removed damages incurred overseas may be from the domestic infringing act to still be compensable.[xliv] The Court’s acknowledgement of the unreconciled treatment of proximate cause in WesternGeco may be an indication that it is time for the Federal Circuit to revisit the potential for abuse of the “foreseeability” standard.[xlv] In 1995, in Rite-Hite Corp. v. Kelley Co., the Federal Circuit held that a patent owner could obtain lost profits for lost sales of a device that competed in the same market and whose sales were lost due to the acts of infringement.[xlvi] The court held that under §284, the reasonable limits of liability encompassed by general principles of law can best be viewed in terms of reasonable, objective foreseeability, which is a standard prone to abuse.[xlvii] III. Concerns regarding Extraterritorial Effectuation of Domestic Statutes The dissenting opinion in WesternGeco expressed concern that the majority opinion would allow U.S. patent owners to use American courts to extend their monopolies to foreign markets, inviting other countries to use their own patent laws and courts to assert control over our economy.[xlviii] Justice Gorsuch, with whom Justice Breyer joined in dissent, asserted a stark hypothetical, involving a microchip developer who infringed a foreign patent in the course of developing its new chip abroad, which sold in the United States, a jurisdiction where the foreign patent owner maintains no right to exclude from its product.[xlix] A foreign court would reasonably hold the American company liable for infringing the foreign patent in its respective country.[l] Per the majority opinion, however, the foreign court shall also award monopoly rent damages, reflecting a right to control the market for the chip in the United States, despite the patent’s lack of legality here.[li] In its brief in support of the defendant, the Electronic Frontier Foundation and R Street Institute expressed concern that allowing extraterritorial damages would encourage other nations’ courts to impose damages for sales and use in the United States, thereby undermining U.S. sovereignty.[lii] Similarly, the United States would infringe upon the sovereignty of foreign nations by enforcing domestic laws in foreign territories.[liii] The brief presents an example of such a scenario, demonstrated by New Zealand’s 2013 amendment to its Patent Act, to exclude computer programs in a similar fashion as India’s non-patented cyber framework.[liv] If a patent owner claims that allegedly infringing U.S. research and development is a proximate cause of New Zealand or Indian sales and seeks royalties on those sales, the damages award would effectively undermine foreign sovereignty because it would conflict with policy choices that those nations reached through their respective democracies.[lv] The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) has streamlined global patent law; however, nations must still retain discretion in how to structure their patent system.[lvi] A holding allowing extraterritorial damages may encourage companies to leverage U.S. patent litigation to evade more restrictive patent regimes in force in foreign nations.[lvii] To draw a comparison in the global patent paradigm, the median damages award in a U.S. patent case between 2012 and 2016 was $5.8 million, whereas average damages awarded in patent infringement cases in China was a mere $18,253.[lviii] In 2016, the number of patent applications in China skyrocketed, while the number of U.S. patent applications decreased.[lix] In turn, patents granted in China have outnumbered the patents granted in the U.S. and continue to rise.[lx] The possibility that access to American courts may encourage forum shopping by the influx of foreign litigants seeking higher damages is a legitimate concern.[lxi] A. Extending the Statutory Bases for §271 Infringement The Supreme Court’s holding in WesternGeco LLC v. ION Geophysical Corp. set a precedent that recovery of lost foreign profits is a permissible application of §284 of the Patent Act.[lxii] Although the Court limited the holding to 35 U.S.C. §271(f)(2) damages, it has been cited to allow recovery of lost foreign profits under other statutory bases for §271 infringement.[lxiii] In Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., the United States District Court for the District of Delaware held that the Supreme Court'sWesternGeco decision implicitly overruled the Federal Circuit's Power opinion.[lxiv] In this case, the plaintiff sued the defendants for infringement of four patents, and recovered lost profits incurred within the United States.[lxv] On appeal, the Court of Appeals for the Federal Circuit affirmed the award of domestic lost profits, contrary to law for being based on worldwide sales.[lxvi] The Court remanded the case with instructions to conduct a new trial on damages for direct infringement alone, and the plaintiff’s petition for a Writ of Certiorari on the issue of worldwide sales recovery was denied.[lxvii] In October of 2018, the District Court of the District of Delaware reversed its decision in Power, holding that the Supreme Court's analysis of §284 in WesternGeco has equal applicability to the infringement allegations in Power as governed by §271(a), as it does to the supplying a component infringement claims at issue in WesternGeco, which were governed by §271(f)(2).[lxviii] In effect, the District Court in Power leveraged the decision rendered in WesternGeco to allow recovery of foreign profits under §284 for an infringement governed by §271(a), the main avenue for patent infringement cases.[lxix] Despite the decision rendered in Power, some courts remain hesitant to apply foreign profits to the recovery under §284 for an infringement governed by §271(a).[lxx] In November of 2018, in MLC Intellectual Prop., LLC v. Micron Tech., Inc., the United States District Court for the Northern District of California expressed uncertainty in the applicability of foreign profits to recovery for a §271(a) infringement.[lxxi] In this case, the plaintiff accused the defendant of infringing its patent,and the defendant counterclaimed for invalidity of the patent).[lxxii][ 3] In doing so, the counter-plaintiff required the counter-defendant’s worldwide sales data, to assess its determination of what constitutes foreign sale[ 4].[lxxiii] In its decision, the District Court acknowledged that some courts have held that worldwide sales are relevant to royalty calculations to claims of direct infringement under §271(a).[lxxiv] The District Court granted discovery of the Counter-Defendant’s foreign sales, because the applicability of foreign damages to claims of direct infringement under §271(a) was not clearly addressed by the Supreme Court inWesternGeco, yet declined to make a decision on the applicability of foreign sales to damages[ 5].[lxxv] In January of 2019, the District Court held that Power was not proper precedent, because in that case, the plaintiff and defendant were competitors, and the district court held that the plaintiff could seek damages for lost foreign sales that the plaintiff would have made but for the defendant's domestic infringement.[lxxvi] The fact pattern did not match that in Power because the plaintiff is a non-practicing entity seeking a reasonable royalty and not lost profits as damages; therefore,the Court did not follow its precedent.[lxxvii][ 6] The decision rendered in WesternGeco has been leveraged as precedent beyond the realm of intellectual property litigation.[lxxviii] In January of 2019, in SEC v. Scoville, the United States Court of Appeals for the Tenth Circuit affirmed a preliminary injunction against the defendant, an internet traffic business, which had been found guilty of operating a Ponzi scheme in violation of 15 U.S.C.S. §§77q(a)(1), (3) and 78j(b) as well as SEC Rule 10b-5(a).[lxxix] The Court found that although much of defendants' business was conducted outside the United States, the federal antifraud statutes that were violated had extraterritorial reach, relying on the guidance set forth by the Supreme Court in WesternGeco.[lxxx] This guidance provided that because the statutory conduct-and-effects test was met by defendants' sales and offers to sell its investment contracts fell within the definition of "security" under the statutes.[lxxxi] IV. Preventing Threats to U.S. and Foreign Sovereignty A. A Test for Extraterritoriality that Considers Foreign Interests In Trader Joe’s Co. v. Hallatt, the U.S. Court of Appeals for the Ninth Circuit evaluated the extraterritorial effect of the Lanham Act, the federal trademark statute, which prohibits violations such as trademark infringement, trademark dilution, and false advertising.[lxxxii]In 15 U.S.C. §1127, Congress specified that the Lanham Act applies to all commerce regulated by Congress.[lxxxiii]To determine whether this provision includes foreign activities, the Ninth Circuit used a three-part test originally applied to the Sherman Act in Timberlane Lumber Co. v. Bank of America National Trust & Savings Ass'n.[lxxxiv] Under the test established inTimberlane, the Lanham Act applies extraterritorially if: (1) the alleged violations effect American foreign commerce; (2) the effect is sufficiently great to present a cognizable injury to the plaintiffs under the Lanham Act; and (3) the interests of and links to American foreign commerce are sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial authority.[lxxxv] Plaintiffs usually satisfy the test’s first and second prongs by alleging that infringing commodities, though sold initially in a foreign country, eventually flowed into American domestic markets.[lxxxvi] The third prong of the test established in Timberlane gives effect to the rule that the Supreme Court construes statutes to avoid unreasonable interference with other nations’ sovereign authority where possible.[lxxxvii] This prong involves weighing seven factors: (1) the degree of conflict with foreign law or policy, (2) the nationality or allegiance of the parties and the locations or principal places of business of corporations, (3) the extent to which enforcement by either state can be expected to 18 achieve compliance, (4) the relative significance of effects on the United States as compared with those elsewhere, (5) the extent to which there is explicit purpose to harm or affect American commerce, (6) the foreseeability of such effect, and (7) the relative importance to the violations charged of conduct within the United States as compared with conduct abroad”.[lxxxviii] No single factor of the third prong of the test established in Timberlane is dispositive, but rather each factor is an independent to be balanced holistically.[lxxxix] This three-prong Timberlane test is a pragmatic approach that can provide case-by-case consideration of potential conflicts of law in assessing whether domestic laws should apply extraterritorially.[xc] To determine whether U.S. patent law should apply to extraterritorial conduct, courts should consider foreign patent law and comity factors represented in the third prong of the Timberlane test.[xci] Evaluation of comity factors provides consideration for the sovereignty of foreign countries, and prevents conflict that may arise by undermining foreign patent law.[xcii] The test used in RJR Nabisco, Inc. v. European Community risks application that is too capacious, as satisfying either prong may still result in significant extraterritorial reach.[xciii] In RJR Nabisco, Inc., the Court noted that providing a private civil remedy for foreign infringement risks international friction beyond that posed by applying U.S. substantive law to foreign conduct.[xciv] Further, where a risk for international conflict over extraterritorial application of domestic patent law is evident, the need to enforce the presumption against extraterritoriality is at its apex.[xcv] B. Harmonizing the International Patent System Before the curtailing of the presumption against extraterritoriality,foreign conduct was presumed to be the domain of foreign law, because foreign patent law embodies conflicting policy judgments governing the respective rights of inventors, competitors, and consumers of patented inventions.[xcvi] Guidance by the Supreme Court traditionally provided that the proper remedy to prevent the selling of patented inventions in foreign countries was to obtain and enforce foreign patents.[xcvii] In order to streamline the global patent framework, the Patent Cooperation Treaty has established a network of collaborating nations to streamline the process of obtaining foreign patent.[xcviii] The Treaty enables a patent applicant to secure a filing date by filing in any member country and designate any other member country, in order to obtain the benefit of a filing date in the country of patenting without being present.[xcix] In 2018, the United States Patent Trademark Office established the Collaborative Search and Examination Pilot Program as part of the Treaty, in which examiners from the intellectual property offices of member nations collaborate on the search and examination of patent applications.[c] The result is an international search report and written opinion from the International Searching Authority, based on contributions from all participating offices.[ci] By facilitating the process for applicants to file for foreign patents and for foreign applicants to file to United States patents, the Treaty preserves the domestic intellectual property laws of each respective nation.[cii] In 2012, Congress enacted the America Invests Act to further harmonize the United States patent law with the rest of the world.[ciii] The Act established the “first-inventor-to-file” rule, a doctrine shared by most other countries, which means that the inventor who first conceived of an invention and diligently pursued its patent application is entitled to ownership of her research product.[civ] The Act also established a post-grant review period, which is a process by which any person can request cancellation of the patent claims, and reflects opposition proceedings under European law.[cv] By incorporating the processes by which other countries protect intellectual property, the United States has improved the ease with which foreign patent applicants can navigate U.S. intellectual property law, as well as the ease with which Americans may apply for patents abroad.[cvi] Conclusion As a result of WesternGeco LLC v. ION Geophysical Corp., patent owners will reconsider damages in cases where infringers export technical components offshore for assembly.This decision does not explicitly expand damages under §271(a); however, subsequent cases have used the WesternGeco decision as precedent to do so. Allowing U.S. patent owners to use American courts to extend their monopolies to foreign markets invites other countries to use their own patent laws to assert control over the U.S. economy. Furthermore, allowing extraterritorial damage encourages other nations’ courts to impose damages for sales and use in the United States, thereby undermining U.S. sovereignty. Similarly, the United States infringes upon the sovereignty of foreign nations by enforcing domestic laws in foreign territories. The three-prong Timberlane test provides an adaptive framework to evaluate cases of foreign infringement on an individual basis, with express concern for preventing conflict over international patent law. Nonetheless, obtaining patents in every nation an applicant seeks protection is the most effective measure to mitigate infringement of national sovereignty. *J.D. Candidate, UCLA School of Law (expected 2021); B.S., University of California at Berkeley (2014). [i] Bronwyn H. Hall, Is There a Role for Patents in the Financing of New Innovative Firms?Max Planck Institute for Innovation & Competition Research Paper No. 18-06, http://dx.doi.org/10.2139/ssrn.3177027 (last visited Feb. 18, 2020). [ii] Alberto Galasso & Mark Schankerman,Patent Rights, Innovation, and Firm Exit, 49 The RAND J. of Econ., 64-86 (2018). [iii] See U.S. Patent and Trademark Office, Intellectual Property and the U.S. Economy: 2016 Update(2016). [iv] See Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 531 (1972) (holding that a United States patent cannot be enforced in foreign nations). [v] Microsoft Corp. v. AT&T Corp. 550 U.S. 437, 455 (2007) (quoting Brief for United States as Amicus Curiae at 28). [vi] Deepsouth, 406 U.S. at 531. [vii] Id. [viii] Id. at 528. [ix]35 U.S.C. §271(a); Deepsouth, 406 U.S. at 528. [x]35 U.S.C. §271(a). [xi] Patent Law Amendments Act of 1984, Pub. L. 98-622, § 101, 98 Stat. 3383 (1984) (codified at 35 U.S.C. § 271(f) (2000)). [xii] 35 U.S.C. §271(f). [xiii] 35 U. S. C. §271(f)(2); §284. [xiv] 136 S.Ct. 2090, 2091 (2016). [xv] Id. [xvi] Id. [xvii] Id. [xviii] Id. at 2095. [xix] Id. at 2093-2094. [xx] Id. [xxi] Id. [xxii] Id. [xxiii] See WesternGeco,138 S.Ct. at 2133 (2018) (implicitly curtailing the the presumption against extraterritoriality by holding that an award for lost foreign profits is a permissible domestic application of §284). [xxiv] Id. at 2131. [xxv] Id. at 2135. [xxvi] Id. [xxvii] Id. [xxviii] 35 U.S.C. §271(f). [xxix] Id. [xxx] WesternGeco, 138 S.Ct. at 2129 (2018). [xxxi] Id. [xxxii] Id. [xxxiii] Id. at 2135 (citing Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F. 3d 1348 (Fed. Cir. 2013)). [xxxiv] WesternGeco, 138 S.Ct. at 2135 (2018). [xxxv] Id. at 2133–2134. [xxxvi] Id. at 2138. [xxxvii] Id. [xxxviii] 35 U.S.C. §284. [xxxix] Brief of Intellectual Property Law Scholars as Amici Curiae in Support of Neither Party, WesternGeco LLC v. Ion Geophysical Corp.(2018) (No. 16-1011); WesternGeco, 138 S.Ct. at 2133. [xl] Id. [xli] Id. [xlii] Id. at 2136. [xliii] Id. [xliv] Id. [xlv] Timothy Richard Holbrook, Extraterritoriality and Proximate Cause after WesternGeco, 21 Yale J. of Law & Tech.25 j(Oct. 2, 2018). [xlvi] 56 F.3d 1538, 1546 (Fed. Cir. 1995). [xlvii] Id. at 1546. [xlviii] 138 S.Ct. at 2139. [xlix] Id. [l] Id. [li] Id. [lii] Brief of Electronic Frontier Foundation and R Sreet Institute as Amici Curiae in Support of Respondent, WesternGeco LLC v. Ion Geophysical Corp., (2018) (No. 16-1011). [liii] Id. [liv] Id. at 20. [lv] Id. at 21. [lvi] Id. at 18; See Agreement on Trade-Related Aspects of Intellectual Property Rights, Jan. 1, 1995. (TRIPS established minimum standards for all member nations of the World Trade Organization (“WTO”) for the regulation of intellectual property as applied to nationals of other WTO nations.) [lvii] See Bernard Chao, Patent Imperialism, 109 NW. U. L. REV. ONLINE 77, 86-88 (2014) (Chao asserts that allowing United States patent law to trump laws in other countries would undermine foreign regimes). [lviii] See Xiaowu Li & Don Wang, Chinese Patent Law’s Statutory Damages Provision: The One Size That Fits None, 26 WASH. INT’L L.J. 209, 211 (2017). [lix] Ana Maria Santacreu & Heting Zhu,Has China Overtaken the U.S. in Terms of Innovation?, FED. RES. BANK OF ST. LOUIS: ON THE ECON., https://www.stlouisfed.org/on-the-economy/2018/ march/china-overtaken-us-terms-innovation (last visited Mon. DD, 2019). [lx] Id. [lxi] Id. [lxii] 138 S.Ct. 2133. [lxiii] See Power Integrations, Inc. v. Fairchild Semiconductor Int'l Inc., 711 F.3d 1348, page number (2013) (parenthetical). [lxiv] Id. [lxv] Id. [lxvi] Id. at 1354. [lxvii] Id. at 1377. [lxviii] Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., Case No. Civil Action No. 04-1371-LPS (D. Del. October 4, 2018). [lxix] See id. [lxx] MLC Intellectual Prop., LLC v. Micron Tech., Inc., Case No. 14-cv-03657-SI, 2018 U.S. Dist. LEXIS 199769 (N.D. Cal. Nov. 26, 2018) [lxxi] Id. at *6–7. [lxxii] Id. [lxxiii] Id. [lxxiv] Id.at *6. [lxxv] Id. at *7. [lxxvi] MLC Intellectual Prop., LLC v. Micron Tech., Inc., Case No. 14-cv-03657-SI, 2019 U.S. Dist. LEXIS 6528, at *9 (Jan. 14, 2019). [lxxvii] See id. [lxxviii] SEC v. Scoville, 913 F.3d 1204 (10th Cir. 2019). [lxxix] Id. at 1214. [lxxx] Id.; at 1215–16. [lxxxi] Id. at 1216, 1219–21; see also 15 U.S.C.S. §77b(a)(1). [lxxxii] Trader Joe’s Co. v. Hallatt, 835 F.3d 960, 972–73 (9th Cir. 2016). [lxxxiii] See 15 U.S.C. §1127. [lxxxiv] See Trader Joe’s, 835 F.3d at 972–73 (2016) (citing Timberlane Lumber Co. v. Bank of Am., N.T. & S.A.), 549 F.2d 597 (9th Cir. 1976). [lxxxv] See Trader Joe’s, 835 F.3d at 969. [lxxxvi] See id. at 969–70 (citing Reebok Int'l, Ltd. v. Marnatech Enters., Inc., 970 F.2d 552, 556 (1992)). [lxxxvii] See id.(citing RJR Nabisco, 136 S.Ct. at 2106–07 & n.9). [lxxxviii] See id. [lxxxix] See Wells Fargo & Co. v. Wells Fargo Express Co., 556 F.2d 406, 428–29 (9th Cir. 1977). [xc] Brief of Intellectual Property Law Scholars as Amici Curiae in Support of Neither Party, WesternGeco LLC v. Ion Geophysical Corp.(2018) (No. 16-1011). [xci] Id.at 18. [xcii] Id. [xciii] Id. at 16. [xciv] 136 S. Ct. at 2106 (2016). [xcv] Id.at 2107. [xcvi] See Microsoft Corp, 550 U.S. at 455 (quoting Brief for United States as Amicus Curiae 28, Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007)). [xcvii] See Deepsouth, 406 U.S. at 531. [xcviii] Patent Cooperation Treaty, June 19, 1970, 28 U.S.T. 7645, 1160 U.N.T.S. 231 reprinted in 9 I.L.M. 978 (1970).. [xcix] Id. [c] Patent and Trademark Office,Patent Cooperation Treaty Collaborative Search and Examination Pilot Project between the IP5 Offices, 83 Fed. Reg. 30145, 30146–47 (2018). [ci] Id. [cii] Id. [ciii] Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011). [civ] Id. [cv] Id. [cvi] Id.
The Patent Paradox: Challenging the Presumption Against Extraterritoriality By: samantha zurcher
Introduction On December 20, 2019, in Hulu, LLC v. Sound View Innovs.,[2] the PTAB Precedential Opinion Panel (“POP”) clarified the evidentiary standard for demonstrating public accessibility of a “printed publication” in an Inter Partes Review proceeding. This paper will examine the impact of the Hulu decision on AIA trial proceedings, but the decision must be placed within the larger context of USPTO Director Iancu’s PTAB policy initiatives since his confirmation in early 2018. PTAB AIA trial reform has been a high priority for Director Iancu, resulting in a series of initiatives to better“balance” the AIA trial process and make it more “predictable” and “reliable.”[ 1][3] Policy changes include changing USPTO’s broadest reasonable interpretation (BRI) claim construction standard to match the district courtPhillipsstandard,[4] expanding the Director’s discretionary denial power[2][5], launchinga Pilot Program to ease claim amendments[3][6], and establishing thePrecedential Opinion Panel (“POP”)[4][7]. The Director’s policy goals dovetail with a significant decrease in new patent litigation filings since 2015. The result has been a 26% drop in PTAB petitions filed in calendar year 2019 (1322) versus 2017 (1801), by far the fewest since AIA trial proceedings began in late 2012.[8] Wow! Director Iancu followed his inaugural April 2018 policy speech to the U.S. Chamber of Commerce with a two-pronged policy approach:(i) refine patent eligibility standards and (ii) recalibrate PTAB AIA trial procedures. On the latter score, one of his first acts was to compel contesting parties in AIA trial proceedings to use the same claim construction standard used in district court litigation – the Phillips standard.[5][9] “The Office’s goal is to implement a balanced approach, providing greater predictability and certainty in the patent system.”[10] Petitioners can no longer use BRI to justify broader claim constructions at the PTAB than those presented in district court for purposes of non-infringement contentions. Director Iancu did not stop there. He followed up by designating a clutch of discretionary denial decisions as precedential to underscore the PTAB’s power to decline institution for reasons of fairness and efficiency[ 6][11]. And in March 2019, the Director launched the claim amendment pilot program to make it easier for patent owners to amend claims invalidated in an AIA trial[7], which, ironically, was the justification for USPTO choosing the BRI claim construction standard in the first place. Suffice to say, there is a lot for patent owners to like in the Director’s policy initiatives. The Precedential Opinion Panel (POP) The Director’s most consequential initiative was formation of the POP. In September 2018, the Director established the POP to decide “issues of exceptional importance involving policy or procedure” to enforce consistency among PTAB AIA panels, while being careful to avoid weighing in directly on the merits of specific decisions.[12] Prior to formation of the POP, PTAB required a vote of some 270 PTAB judges to designate a decision precedential.[8] The process became unwieldly for contentious issues where such a large number of judges could not reach a clear consensus, such as whether a petitioner could join its own petition to add new issues to the petition after institution.[9][13] Formation of the POP greatly streamlined the process and created an effective mechanism for the Director to provide policy guidance to the PTAB judges andresolve some of the more intractable procedural issues in AIA trial proceedings.[10][14] In Proppant, the POP finally resolved the question of whether a petitioner could join its own instituted petition in the affirmative, albeit in limited circumstances. For example, where a patent owner adds additional claims of a patent to an infringement action in district court, the defendant/IPR petitioner can add challenges to the validity of those newly asserted claims in a motion for joinder to the PTAB. In similar fashion, the Hulu case teed up an issue where different panels of PTAB AIA trial judges have taken different approaches – what level of proof is required in a petition to establish public accessibility of a “printed publication” under 35 U.S.C. § 102, both at the institution stage and for purposes of a final written decision? Backdrop to the Hulu Decision Regarding Evidence of Public Accessibility The PTAB follows the Federal Rules of Evidence.[15] Most technical journal articles and textbooks are self-authenticating and “require no extrinsic evidence of authenticity in order to be admitted.” Fed. R. Evid. 902(6). Beyond admissibility, conventional indicia of publication within traditional references such as journal articles and textbooks, are sufficient to establish that such documents “constitute printed publication prior art, absent additional evidence indicating otherwise.”[16] The Frontier Therapeutics case set an appropriate baseline for self-authenticating “peer-reviewed scientific articles or portions of a reference book that were published on the dates indicated on the documents.”[17] The Frontier Therapeutics panel further distinguished between self-authenticating references and a printed pharmaceutical package insert bearing only a date and supported by “conclusory” declaration testimony “without citing sufficient evidence in support,” such as prescribing information published in the Physician’s Desk Reference.[18] The PTAB rejected petitioner’s evidentiary proffer as insufficient to satisfy its burden of making “at least a preliminary threshold showing” that the package insert was a prior art “printed publication.”[19] Not all PTAB panels have followed the sensible path of Frontier Therapeutics in assessing the sufficiency of the evidence to make a threshold showing of public accessibility at the institution stage. In Power Integrations, Inc. v. Semiconductor Components Industries, LLC,[20] for example, a PTAB panel took a hard line on the level of proof of public accessibility required in a petition. The panel denied petitioner’s request for rehearing and chastised petitioner for including only a “single sentence” in the petition arguing for printed publication status of a conference paper and not doing more “to demonstrate that thesolereference relied upon . . . was a printed publication.”[21] The PTAB further admonished petitioner for not requesting an opportunity to submit additional evidence in response to patent owner’s preliminary response. The panel failed to explain, however, why it had denied petitioner’s request to file a reply to the preliminary response, but then upbraided petitioner for not making sufficient arguments on the printed publication proofs that were submitted with the petition. The panel also gave short shrift to declaration testimony that the conference papers were “freely distributed.”[22] The panel’s attitude can be summed up by the harrumph that “a reply is not a second chance to cure deficiencies in the Petition.”[23] In Ingenico Inc. v. Ioengine, LLC,[24] a split PTAB panel denied petitioner’s post-institution motion to file a declaration supporting printed publication status of a software product guide and to apply for a subpoena of the third-party declarant to permit cross-examination by patent owner. The declarant refused to testify voluntarily and required a subpoena.[11][25] The panel majority determined that PTAB rules “do[] not contemplate a proponent’s unilateral application for a subpoena . . . as a mechanism for complying with [the] requirement” to make a declarant available for cross-examination.[26] As the dissent pointed out, however, patent owner wanted to cross-examine the third-party declarant and faulted petitioner for failing to make the declarant available, but at the same time patent owner delayed the proceedings by “opposing Petitioner’s efforts to make the declarant available.”[27] Hard to reconcile indeed. By way of contrast, in Caterpillar Inc. v. Wirtgen America, Inc.,[28] a PTAB panel made short work of patent owner objections to the public accessibility of a Caterpillar operation manual shipped with its cold planer machines used in road milling operations. The panel acknowledged that document dates and copyright notices “do not, standing alone, establish publication on that date,” but observed that the dates are probative and “consistent with other evidence in the record showing shipment of the [manual] in the years after 1999.”[29] The other evidence included corporate policy documents and factory notification lists regarding shipment of manuals with the cold planer machines, invoices, and declaration testimony of a quality control department witness.[30] The panel further noted that even though shipment of only 11 operation manuals to customers was publication of a “limited nature,” the manuals were shipped without restriction.[31] Taking the evidence as a whole, the panel determined there was sufficient evidence to establish the manuals as publicly accessible prior art by a preponderance of the evidence. In view of the varied evidentiary treatment of public accessibility by different PTAB panels, of which the above cases are a small sample, the POP agreed to hear Hulu’s request for reconsideration to answer the question:What is required for a petitioner to establish that an asserted reference qualifies as a “printed publication” at the institution stage? The Hulu Decision In Hulu, the POP held that a petitioner must provide sufficient evidence “to establish a reasonable likelihood that the [] reference was publicly accessible before the critical date of the challenged patent,” to qualify the reference (here, a text book) as a printed publication for purposes of institution.[32] The POP found petitioner’s identification of conventional indicia of publication, including copyright and printing dates, a library date stamp, ISBN number and date, and publication by an established commercial publisher, sufficient to qualify the text book as a prior art printed publication for purposes of institution.[33] The POP further stated that a librarian’s affidavit submitted by petitioner was “not required” at the institution stage to establish public accessibility of the text book.[34] The POP granted petitioner’s request for rehearing and remanded the case to the original merits panel, which had denied institution, for further consideration of the evidence regarding the text book’s public accessibility. The remand will result in consideration of the textbook as a prior art “printed publication” and the merits of petitioner’s obviousness ground. The POP’s analysis emphasizes the reasonable likelihood standard applied at the institution stage “is lower than the ‘preponderance’ standard to prevail in a final written decision.”[35] Such emphasis mandates a more flexible and tolerant approach than was taken by the original merits panel in Hulu and in the Power Integrations cases. The POP opinion also provides useful guidance to differentiate the most probative types of evidence pertaining to different types of documents.“[F]or manuscripts or dissertations stored in libraries,” evidence of whether and how the document was indexed, catalogued, and shelved is significant.[36] For printed information such as posters or handouts presented at meetings, conferences, or trade shows, on the other hand, “indexing is not required if it was sufficiently disseminated.”[37] The POP noted other acceptable evidentiary examples to establish public accessibility of a reference for purposes of institution, which may include a webpage screenshot with Internet Archive declaration, a thesis with the advisor’s declaration discussing university thesis publication practices, or a user manual with copyright notice, print release date, and declarations from the Internet Archive and an expert.[38] The POP does an excellent job of providing useful, concrete examples of how to analyze the evidence used to support “printed publication” status in the most commonly encountered circumstances.In the end, a petitioner must make “‘a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’”[39] The Hulu decision is a welcome clarification that resolves a diversity of views among PTAB judges as to the level of public accessibility proof required at the institution stage of a trial proceeding. The key takeaway from Hulu is that for traditional references (e.g. textbooks, journal articles, reference works, and technical standards) bearing conventional indicia of commercial publication – copyright dates, printing dates, a library date stamp, ISBN number and date, and/or permanent editorial, production, advertising, and administrative staff – the PTAB will not require a librarian declaration to be filed with the petition. In Hulu, the POP went out of its way to underscore that librarian declarations are not required at the institution stage if sufficient indicia of publication are present in the document itself:“[W]e do not find the affidavit necessary to our decision that Petitioner has presented sufficient evidence for purposes of institution.”[40] This clarification reinforces the approach taken in the seminal Frontier Therapeutics case. A petitioner with sufficient time and resources may still choose to file a librarian declaration with the petition in support of a self-authenticating reference bearing conventional indicia of publication, but failure to do so will not be fatal at the institution stage under Hulu. It is also wise to advise the declarant of the possibility of having to give deposition testimony in the United States. A recent Federal Circuit decision further underscores the point. In Telefonaktiebolaget LM Ericsson v. TCL Corp.,[41] a German language journal was “catalogued and shelved with the shelf call number,” “had been published for at least thirty years,” and “the library was accessible to the public.”[42] The court determined that a German librarian’s declaration was substantial evidence supporting the PTAB’s public accessibility finding, even though petitioner had to request late submission of a second declaration because the first declarant refused to give a deposition. In sum, librarian declarations that identify the library shelf mark and the date the library received a reference, catalogued and shelved it, and made it available for public use, are usually sufficient to establish the reference as a prior art “printed publication” by a preponderance of the evidence.[43] See also Cisco Systems, Inc. v. Centripetal Networks, Inc., IPR 2018-01436, Paper 40, 23-31 (PTAB January 23, 2020) (network security system user guide qualified as prior art “printed publication” because the user guide was included on CD-ROM/DVD sold with product, available on customer support website, purchased by 586 customers, freely reproducible for non-commercial use, and actively advertised and promoted). The Hulu decision further underscores the procedural mechanisms available for a petitioner to submit additional evidence if a patent owner (or the PTAB) questions printed publication status. These include filing a reply to a preliminary response, submitting a reply and additional supporting evidence to a patent owner response, and requesting authorization for a post-institution motion to file supplemental information in support of the petition.[44] The POP panel emphasized, in particular, a petitioner’s ability to submit a declaration in support of the public accessibility of a reference in petitioner’s reply to patent owner’s response or “through the supplemental information process.”[45] Such guidance is a welcome clarification to ensure consistent treatment by PTAB panels going forward. Petitioners are well-advised to take full advantage. [1] Mr. Murphy is a partner in Haug Partners, LLC and a former PTAB Lead Judge who presided over nearly 200 AIA trial proceedings. The views expressed in this paper are his own and are not to be attributed to Haug Partners, LLC or any of its clients. [2] IPR 2018-01039, Paper 29 (PTAB Dec. 20, 2019) (hereafter “Hulu”). [3] See Iancu, Andrei,“Role of U.S. Patent Policy in Domestic Innovation and Potential Impacts on Investment,”U.S. Chamber of Commerce Patent Policy Conference (April 11, 2018). [4] See Phillips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005 (en banc) (claims ‘‘‘are generally given their ordinary and customary meaning’ . . . to a person of ordinary skill in the art in question at the time of the invention.’’), 1315 (“the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’’’) (internal citations omitted) ; see also 37 C.F.R. §§ 42.100(b), 42.200(b), and 42.300(b). [5] NHK Spring Co. v. Intri-Plex Techns.,IPR 2018-00752, Paper 8 (PTAB Sept. 12, 2018) (designated Precedential: May 7, 2019). [6] 84 Fed. Reg. No. 51, 9497 (March 15, 2019). [7] SOP 2 (Rev. 10) (PTAB Sept. 20, 2018) [8] Source:Unified Patents 2019 Patent Dispute Report. [9] 83 Fed. Reg. No. 197, 51340 (Oct. 11, 2018). [10] 83 Fed. Reg.at 51,342 col. 3 – 51,343 col. 1. [11] See NHK Spring, supra, n.5; Becton, Dickinson & Co. v. B. Braun Melsungen AG(§ III.C.5, first paragraph), IPR 2017-01586, Paper 8 (PTAB Dec. 15, 2017) (designated Precedential: Aug. 2, 2019); Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00064, -00065, -00085, Paper 10 (PTAB May 1, 2019) (designated Precedential: Aug. 2, 2019). [12] PTAB SOP 2 (Rev. 10) Sept. 20, 2018. [13] Proppant Express Investments, LLC v. Oren Techs LLC, IPR 2018-00914, Paper 38 (PTAB March 13, 2019) [14] See Proppant Express v. Oren Tech., IPR 2018-00914, Paper 38 (Precedential). [15] See 37 C.F.R. § 42.62. [16] Frontier Therapeutics v. Medac, IPR 2016-00649, Paper 10, 21–22 (PTAB Sept. 1, 2016). [17] Id. [18] Id. [19] Id. [20] IPR 2017-01904, Paper 12 (PTAB April 30, 2018). [21] Id. at 4, 10 (emphasis in original). [22] Id. at 6 n.2. [23] Id. at 11. [24] IPR 2019-00879, Paper 35, (PTAB Nov. 22, 2019). [25] Id. at 2-3. [26] Id. at 5. [27] Id. at 11. [28] IPR 2018-01091, Paper 49 (PTAB Nov. 27, 2019). [29] Id. at 57. [30] Id. at 57-58. [31] Id. at 59. [32] Hulu at 3. [33] Id. at 19-20. [34] Id. at 20. [35] Id. at 13. [36] Id. at 9 (citations omitted). [37] Id. at 9-10 (citations omitted). [38] Id. at 18-19 (citations omitted). [39] Id. at 10-11 (citations omitted). [40] Id. at 20. [41] 941 F.3d 1341 (Fed. Cir. 2019). [42] Id. at 1346–47. [43] I note that petitioner, faced with a librarian declarant from Germany who refused to give a deposition, found another declarant rather than request a subpoena as in the Ingenico case. [44] Hulu at 14. The request should be made within one month of institution. 37 C.F.R.§ 42.123(a). [45] Id. at 7-8 (citing Belden v. BerkTek LLC, 805 F.3d 1064, 1077-78 (Fed. Cir. 2015)), 15.
Patent Trial and Appeal Board Clarifies Public Accessibility Evidentiary Standard in Hulu v. Sound View By: brian murphy
An Interview with the 2019 NYIPLA Inventor of the Year Award Winner Dr. Sharon Shacham By: INVENTOR OF THE YEAR AWARD COMMITTEE
The New York Intellectual Property Law Association (NYIPLA) annually presents an Inventor of the Year Award to an individual who, through his or her inventive talents, has made worthy contributions to society by promoting “the progress of Science and useful Arts.” Earlier this year, the NYIPLA was pleased to name Dr. Sharon Shacham the Inventor of the Year for 2019. Dr. Shacham graciously agreed to answer a few questions about her research and this breakthrough invention. The NYIPLA was pleased to name you Inventor of the Year for 2019 for your significant research developing Selinexor, a cancer treatment for adult patients with relapsed or refractory multiple myeloma (RRMM), that received an accelerated FDA approval in July. After years of research, what is it like to be able to provide this much-needed drug to the world? It has been the best experience of my life. It is satisfying to hear stories from physicians about patients doing well with Selinexor after they have run out of treatment options to treat this devastating disease. Have you had the opportunity to interact with any patients who have been treated with the drug that you have invented? Several patients have visited us throughout the years, sharing their stories with the employees. I remember when the first patient arrived. My hands were shaking because this sick patient decided to take the time to come to Boston from New York to tell us her experience; it was so touching. We heard about what she went through and gained an understanding of what it was like to live with this disease, these therapies, the side effects, and be bound to clinical trials that impact your quality of life. Understanding that your work impacts people’s lives was amazing. We have to make sure we do the best we can to ensure we develop new medicine but also improve quality of life. In science and literature people use the word “subject,” but in all our documents we called them patients—these are real people suffering from terrible diseases, and when you see them and meet them you understand that they are patients and not subjects. Are there any patient experiences that you can share, without getting into confidential matters, of course? I try to have as many people from the company meet the patients because it is such a rewarding experience. Recently we met with one patient that has a brain tumor (glioblastoma) who joined our clinical study and received Selinexor. He could not travel, so we met him and his wife via video. They were both so kind and appreciative. Spending just a short amount of time with them gave fuel to the company to continue to work hard, bringing new medicines to the market. Please explain, for the general audience, how your drug works to treat RRMM cancers? Cells have a group of proteins that act as the guardians of the genome—these proteins detect damaged DNA in the nucleus and work to get rid of it. In most cancer cells, there is DNA damage. But in these cancerous cells, the guardians of the genome do not recognize it. One reason is that these proteins are being exported out of the cancerous cell's nucleus by the protein we work on called XPO1. Selinexor blocks XPO1, and therefore, the guardians remain in the nucleus, where they can recognize that the cell has DNA damage and is cancerous, and can force the cell to self-destruct. How did you come up with this mechanism for fighting recurring cancers? I was helped by computational drug discovery, which utilizes power of computers to accelerate the development of new drugs. When I looked for a new project in 2008/9, the structure of XPO1 was just solved, and I thought this is such a simple and beautiful idea—and I can use my background in structural based drug design to identify inhibitors of XPO1. What in your educational and/or personal background led to your interest in cancer research and your invention of this new treatment? My Ph.D. was focused on using computer modeling to understand the three-dimensional structure of complex proteins, and at my first company we implemented this modeling approach for drug discovery. The treatment of cancer and our understanding of cancer in the last 20 years has advanced so much. Cancer is a unique disease in that we can get a sample of the disease, which can be studied to understand the mechanism of the disease and possible approaches to treat it. My experience in computational drug discovery allowed me to do this. I hope that when we look back 20 years from now, cancer treatment will be approached in a completely different fashion, and it becomes a chronic but not a fatal disease. How did it feel to go through FDA approval process, and to finally receive an approval for this drug? We received FDA approval on July 3, 2019, and I have to say that the next day, we felt the July 4th fireworks were all for us. If you are able to share, what are you working on currently? We are working on expanding the use of Selinexor for other cancers, including lymphoma, sarcoma, GBM, and endometrial cancers. And also providing earlier lines of treatment in multiple myeloma cancers. Your story is inspirational to young inventors, who are researching solutions to other chronic illnesses and significant health issues. What advice would you give to them? Don’t give up. Working to develop treatments for serious health issues is a challenging industry.You have to fight and imagine the points of success. When you start a new research project, you have to imagine your first patient getting your therapy. In clinical trials, you have to believe positive results will occur, leading to FDA approval. You also have to imagine the moments when everything goes wrong, because that gives you the focus to keep on fighting.
Notable Trademark Decisions By: Scott Greenberg, frank misiti, and reece brassler
TTAB Finds The Color Red Generic For Saw Blades Based on Widespread Competitive Use Freud America, Inc. (“Freud America”) owns Reg. No. 2464769 for the following mark: (line-coded for the color red; dotted outline of the goods showing location of the mark only) in connection with “cutting tools for power woodworking machines, namely, shaper cutters, saw blades, router bits and forestner bits” (the “’769 Registration”), and Reg. No. 4028314 for the following mark: (dotted lines showing position of the mark only) in connection with “blades for reciprocating power saws” (the “’314 Registration”). Both marks were registered on the Principal Register based on a showing of acquired distinctiveness under Section 2(f) of the Trademark Act (15 U.S.C. § 1052).Milwaukee Electric Tool Corp. (“Milwaukee Electric”), a competing manufacturer of saw blades for power tools, petitioned to cancel (a) the ‘769 Registration with regard to “saw blades” and the ’314 Registration in its entirety on the ground that the color red is generic with respect to the subject saw blades, (b) the ’314 Registration only, on the alternative ground that the mark has not acquired distinctiveness (a similar claim against the ’769 Registration would apparently have been time-barred under the statute because that registration was more than five years old when the petition to cancel was filed), and (c) the ’769 registration only, on the additional ground of procurement by fraud. In a precedential decision, the Trademark Trial and Appeal Board (“the Board”) granted cancellation of the ’769 Registration with regard to saw blades and the ’314 Registration in its entirety on the ground of genericness. The Board also upheld the claim that the mark in the ’314 Registration was not shown to have acquired distinctiveness, and denied the claim of fraud with respect to the ’769 Registration. Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354, slip op. at *3, 18, 74-5, 78, 83-4, 87-88 (TTAB December 2, 2019). Genericness – The Board noted that an element of product design, including a single color applied to the surface of the goods, can theoretically serve as a source-indicating trademark, although it can never be inherently distinctive and an applicant for registration must establish that the color has acquired distinctiveness as a mark for the goods. Id. at 14-15 (citing Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12 (2000)). On the other hand, a claimed element of product packaging or product design trade dress, including a claimed color mark, may be deemed generic for the goods if, either at the time of registration or the present day, it is “at a minimum, so common in the industry that it cannot be said to identify a particular source.” Id. at 16 (quoting In re Odd Sox LLC, 2019 USPQ2d 370879 (TTAB 2019)). Also, if a claimed mark is generic, acquired distinctiveness cannot save it. Id. at 15. As cancellation-petitioner, the burden is on Milwaukee Electric to prove by a preponderance of the evidence that Freud America’s color marks are generic. Id. at 14. In determining the genericness of any mark including a single color mark, the Board applies a two-step process. First, the Board considers the genus of the goods or services at issue. Then, the Board considers “whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services,” a consideration which, in the present case, hinges on “whether the color red is so common within the relevant genus that consumers would primarily associate it with the genus rather than as indicating a unique source of goods within the genus.” Id. at 17-18. The Board determined that it will view the genus of Freud America’s goods based on the challenged identifications of goods in each registration. Therefore, as to the ’769 Registration, the genus of the goods are “saw blades” in the nature of“cutting tools for power woodworking machines.”Milwaukee Electric Tool Corp., 2019 USPQ2d, slip op. at 18. Based on this description of the goods in the registration, the Board rejected Freud America’s argument that the genus of the ’769 Registration goods should be viewed more narrowly as circular saw blades for cutting wood Therefore, the genus of the ’769 Registration goods includes “circular saw blades, reciprocating saw blades, jigsaw blades, sabre saw blades, and even hole saw blades” for any power woodworking machines. Id. at 18-19. This genus also includes saw blades that cut material besides wood so long as they can be used with power woodworking machines. As to the ’314 Registration goods, again based on the identification of goods, the genus is “blades for reciprocating power saws,” including blades for cutting any material that can be cut by a reciprocating power saw, e.g., wood, plastic, laminates or metal. Id. at 20. The second part of the genericness test is whether the color red is so common in the industry for the genus of goods in question that it cannot be said to identify a particular source to the relevant public. In this case, since there are no related limitations in the identifications of goods, “the relevant public includes all consumers of saw blades, including both members of the general public and persons employed in professions that use such tools.” Id. at 20-1. The Board held that Milwaukee Electric sustained its burden of proving that the color red is generic for the two subject genera of saw blades, specifically, the evidence “overwhelmingly demonstrates that the color red on saw blades is so common in the industry that it cannot identify a single source for saw blades for power woodworking machines or saw blades for reciprocating power saws.” Id. at 66-7. First, Milwaukee Electric showed that it used the color red on a variety of power tool products, including reciprocating saw blades, jigsaw blades and hole saws for decades before Freud America’s claimed first use of the color red on saw blades, and that Milwaukee Electric’s use is both long-running and significant in volume. Id. at 38-40, 68-70. Beyond that, Milwaukee Electric introduced evidence of saw blades colored red in whole or in part, being sold and/or advertised for sale in the U.S. by more than 48 third parties, in categories including circular saw blades, reciprocating saw blades, jigsaw and sabre saw blades, and hole saws, including use by some parties prior to Freud America’s first use. Milwaukee Electric Tool Corp., 2019 USPQ2d, slip op. at 40-66. The evidence showed that these third-party red saw blades are made available to consumers through a variety of sources such as retail stores, tool catalogs, and manufacturer or retail websites. Id. at 66-7. This evidence was sufficient to establish that “the color red was generic for power saw blades when Freud applied for both of its marks and remains so now,” notwithstanding the failure to establish the number of red third-party saw blades sold, the length of time they have been sold, or the precise degree to which consumers have been exposed to them. The evidence, including evidence of advertising of red saw blades by numerous parties over an extended time period as well as Milwaukee Electric’s ability to purchase many of these products, indicated sufficient consumer exposure to the color red on saw blades by others. Id. at 67-8. In sum, the Board found that the presence in the market of red saw blades from numerous sources, offered side-by-side in stores, catalogs and online, renders it unlikely that the relevant consuming public could be conditioned to perceive the color red as an indicator of unique source. Instead, consumers are “more likely to view the color red simply as an eye-catching ornamentation customarily used for saw blades generally”. Id. at 70. Freud America’s evidence and arguments to the contrary were unavailing. The Board rejected Freud America’s contrary argument based on its efforts to police the use of the color red by competitors, finding that most of these actions were in connection with other tool product categories in which Freud also claimed trademark rights to the color red, such as shaper cutters and router bits, and not saw blades. Only a handful of these enforcement cases involved saw blades, and the instances where these sellers acquiesced to Freud America’s demands more likely resulted from a desire to avoid litigation, particularly in view of the fact many of the competitors contacted by Freud America in the various tool product categories denied Freud’s asserted right in the color red for cutting tools. Id. at 71-72. The Board also rejected Freud America’s arguments based on its sales and marketing efforts in connection with red saw blade products. While Freud proved substantial sales and extensive advertising and promotion in connection with red saw blade products, the Board held Freud’s ability to establish consumer recognition is undermined by the extensive use of the color red by other manufacturers. Id. at 72-73. “Freud’s attempts to seek exclusive trademark rights in the color red for saw blades have not borne fruit in light of the widespread use of the color red on saw blades by Milwaukee and others.” Id. at 74. Lack of distinctiveness – The Board also upheld Milwaukee Electric’s claim to cancel the ’314 Registration on the ground that the mark lacked acquired distinctiveness at the time of registration or at present, as is required for registration of a single-color mark. Milwaukee Electric introduced approximately twenty examples of third-party use of the color red on reciprocating power saw blades going as far back as the 1950’s. The Board determined that this evidence overcame the registration’s statutory presumption of validity and established non-distinctiveness. Milwaukee Electric Tool Corp., 2019 USPQ2d, slip op. at 75-78. The Board also held that Freud America failed to rebut this showing with its evidence of its own sales levels and advertising that highlighted the red color of the saw blades. This evidence was “undercut” by the voluminous evidence of use by others of the color red on reciprocating saw blades. Id. at 81-3. Fraud – The Board held that none of Milwaukee Electric’s four specific allegations of Freud America’s fraud in procuring the ’769 Registration were sufficiently proven: Although there was evidence that Freud America knew of at least one other party using the color red for saw blades at the time of filing, there was no evidence that the supporting oath in the original application was knowingly false or made with deceptive intent, because it was not shown that Freud knew that any other user had a superior or clearly established right to use the mark. Id. at 84-85. While Freud America’s provision of a few third-party ads in response to the Examining Attorney’s request for information regarding third-party use was “woefully lacking” and superficial, it did not rise to the level of fraud.Here again, it was not shown that Freud knew of any party having a superior right to use the mark and intentionally failed to explain such circumstances to the Examining Attorney. Id. at 85-6. Freud America’s failure to provide dates of first use with respect to each good in the application did not constitute fraud, especially given the absence of any evidence that the mark was not in use on all identified goods at the time of filing. Id. at 86-7. Milwaukee Electric also claimed that Freud’s showing of acquired distinctiveness was fraudulent because the sales and advertising information, which was submitted collectively as to all identified goods, pertained mostly to shaper cutters and not saw blades. However, the Board held that there was a lack of clear and convincing evidence that this was done with an intent to deceive. Id. at 87-88. Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354 (TTAB 2019)[precedential].[SG] TTAB Dismisses Appeal of Section 2(d) Refusal Due To Failure To Address Formal Requirements Rainier Enterprises, LLC (“Rainier”) was refused registration on the Principal Register for the mark MONTE CARLO WORLD’S MOST PRESTIGIOUS VODKA (plus design) because Rainier failed to comply with a drawing requirement and failed to amend the color claim associated with the mark. The Examining Attorney also refused registration based on the likelihood of confusion with two registrations associated with beer. In re Rainier Enterprises, LLC, 2019 U.S.P.Q.2d 463361 at *1 (TTAB December 3, 2019). Specifically, the Examining Attorney required that Rainier provide a substitute drawing of the mark that clearly showed the gold outline around the wording in the mark and to amend the color claim to clarify that the color white was being claimed as a feature of the mark. Rainier submitted arguments against the likelihood of confusion refusal, but did not address the drawing requirement or the color claim in response to the Office Action. After the refusal was made final, Rainier appealed to the Trademark Trial and Appeal Board. Id. The Board noted that timely and accurate public notification of the filing of applications, which includes the accuracy of the drawing of the mark, is important. The Board stated that when a mark includes color, the drawing must show the mark in color and the applicant must name the color(s), describe the color(s) on the mark, and submit that the color(s) is a feature of the mark. Further, if the mark contains a white interior area, and color is being claimed as a feature of the mark, the applicant must also explain the purpose of the interior white areas on the mark. Id. at 1-2. The Board held that Rainier’s failure to submit an acceptable drawing of the mark and to amend its color claim was a failure to comply with a requirement of the Trademark Rules of Practice and, by itself, is sufficient grounds to refuse registration of the mark. Further, the Board noted that it is not required to address refusals or requirements that an appellant does not raise in its brief. Here, Rainier’s brief was silent on the drawing requirement and the color claim, and the Board is allowed to treat Rainier’s silence as the equivalent of not filing a brief on that issue and dismiss the appeal. Id. at 2-3. As a result, the Board dismissed the appeal with respect to the requirements for a substitute drawing and an amended description of the mark, and determined that the application is deemed abandoned. Id. at 3. In re Rainier Enterprises, LLC,2019 U.S.P.Q.2d 463361 (TTAB December 3, 2019) [precedential]. [FM] TTAB Affirms Descriptiveness Refusal of Mark SEQUENCING BY BINDING The Trademark Trial and Appeal Board upheld an Examining Attorney’s refusal to register a mark under Trademark Act Section 2(e)(1) on the grounds that the proposed mark, as applied to the goods and services identified in the application, was merely descriptive. Omniome, Inc. (“Omniome”) sought registration of its SEQUENCING BY BINDING mark in connection with the following goods and services: Reagents for analysis of biological analytes; Research laboratory analyzers for analysis of biological analytes for non-medical purposes; Devices for analysis of biological analytes for medical purposes; and Analysis of biological analytes. The Examining Attorney refused registration on the grounds that the proposed mark was merely descriptive. When the refusal was made final, Omniome requested reconsideration of the Examining Attorney’s determination, which was denied, and Omniome appealed. On appeal, the Examining Attorney argued that the term “sequencing by binding” describes a process and procedure used in connection with Omniome’s goods and services. Specifically, “sequencing by binding” is the way to reference Omniome’s DNA analysis, that is, the process that it uses to identify binding sites to determine the sequence of DNA molecular structure. In support of this position, the Examining Attorney cites definitions in the Merriam-Webster dictionary, Wikipedia definitions, industry articles, and copies of Omniome’s patents and patent applications which use the term “sequencing by binding” in a descriptive manner. Omniome counters the arguments put forth by the Examining Attorney by stating that the patent filings show its use of “sequencing by binding” as shorthand for its complex DNA sequencing technology for invention purposes. It also argues, in the alternative, that its patent filings use “sequence by binding” as a concise identified label or shorthand name for a complex DNA sequencing technique for conveying its inventive technology. Omniome also argues that its proposed mark is a coined term that has no recognized meaning and fails to describe its goods or services with any degree of particularity. Omniome states that its mark is suggestive because the term has far too many different meanings to describe its goods and services. Lastly, Omniome argues that there is no dictionary definition for “sequencing by binding” and the term is not used in the relevant industry. In its decision, the Board stated that a mark is merely descriptive “if it immediately conveys information concerning a feature, quality, or characteristics of the goods or services for which registration is sought.” In re Omniome, Inc., 2019 BL 503454 at *7 (TTAB December 19, 2019). The question is whether someone who knows what the goods and services are will understand the mark to convey information about the goods and services. Moreover, when the mark contains multiple words, like the mark at issue here, the mark will be analyzed as a whole, but each element of the mark may be considered separately in evaluating the entirety of the mark. The Board concluded that based on the evidence submitted, the proposed mark is not suggestive and that SEQUENCING BY BINDING immediately describes the function and purposes of Omniome’s goods and services. This is because the identified goods and services are“used to sequence DNA by the process of binding.” Id. at *21. Each component of the phrase is descriptive in its relation to the goods and services, and the combination results in a composite that is descriptive. The Board’s finding was based on all the evidence in the record, but in particular the following: (1) definition of “Sequencing,” “Binding,” “DNA Binding Site,” and “DNA Sequencing”; (2) industry articles; (3) Omniome’s patents and patent applications; (4) specific news articles; and (5) Omniome’s own repeated explanations of its DNA sequencing technology. In re Omniome, Inc., 2019 BL 503454 (TTAB December 19, 2019). [precedential]. [FM] District Court Dismisses Appeal of TTAB Decision Because Appellant Had Appealed Prior Decision To Federal Circuit The U.S. District Court for the Western District of North Carolina dismissed an appeal from a decision-on-remand of the Trademark Trial and Appeal Board (the “Board”) because the appellant had appealed the Board’s first decision in the case to the Court of Appeals for the Federal Circuit. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 2019 USPQ2d 401574 (W.D.N.C. October 21, 2019). Frito-Lay North America, Inc. (“Frito-Lay”) brought cancellation and opposition proceedings against Princeton Vanguard, LLC’s (“Princeton Vanguard’s”) respective registration and application for the mark PRETZEL CRISPS in connection with “pretzel crackers”). In 2014, the Board issued a decision in the consolidated proceeding finding the mark to be generic, granting cancellation and sustaining the opposition. Princeton Vanguard appealed that decision to the Court of the Appeals to the Federal Circuit pursuant to 15 U.S.C. § 1071(a). The Federal Circuit, determining that the Board had applied an incorrect test for genericness, vacated the decision and remanded the case to the Board to consider the question of genericness under the correct legal standard. In 2017, the Board issued its decision-on-remand seeking to apply the correct legal standard, in which the Board again found the mark to be generic. Id. at 2. This time, Princeton Vanguard commenced a de novo appeal to the U.S. District Court for the Western District of North Carolina (“District Court”) pursuant to 15 U.S.C. § 1071(b). The District Court, on its own initiative, considered whether it had subject matter jurisdiction to hear the appeal in view of Princeton Vanguard’s election to bring the first appeal in the case to the Federal Circuit. After obtaining briefing from the parties on the issue, the District Court concluded that it lacked subject matter jurisdiction, based primarily on the wording of the statute. 15 U.S.C. § 1071(a)(1) states that a party dissatisfied with “the decision” of the Board may appeal to the Federal Circuit, “thereby waiving his right to proceed under subsection (b) of this section.”15 U.S.C. § 1071(b), in turn, states that the dissatisfied party before the Board may have remedy by a civil action “unless appeal has been taken to said United States Court of Appeals for the Federal Circuit.” Finally, 15 U.S.C. § 1071(a)(4) states that the Federal Circuit’s determination on appeal “shall govern the further proceedings in the case.” The District Court noted that the waiver language of 1071’s subsections (a) and (b) is “without limitation as to time or a particular decision.” Id. at 4. Therefore, the Court determined that once an appellant exercises this option by appealing to the Federal Circuit, that choice and the related waiver apply to all further proceedings in the same case. The Court accordingly rejected Princeton Vanguard’s argument that the statutory language gives a party the option to appeal to the Federal Circuit or seek District Court review after each and every “decision” of the Board. Id. The District Court stated that the provision in 1071’s subsection (a)(4) that the Federal Circuit’s determination on appeal “shall govern the further proceedings in the case,” lends further support to the Court’s decision. In particular, the Court reasoned that if a party could bring its second appeal in a case to a district court after bringing the first appeal to the Federal Circuit, the governing effect of the Federal Circuit’s decision on the first appeal could undercut the supposed de novo nature of the appeal to the District Court, and might also constrain any review of the District Court’s decision by its governing Circuit Court of Appeals. Id. The District Court therefore dismissed the appeal without prejudice due to lack of subject matter jurisdiction. Princeton Vanguard has commenced an appeal of the District Court’s decision with the Court of Appeals for the Fourth Circuit. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 2019 USPQ2d 401574 (W.D.N.C October 21, 2019). [SG] TTAB Holds That Stylization Preserves Registrability of Generic Mark ‘ALLERGY CARE’ on Supplemental Register On September 13, 2016, James Haden, M.D., P.A. (“Haden” or “Applicant”) applied under Section 1(b) for registration of the stylized mark ALLERGY CARE, alleging a bona fide intent to use the mark in commerce. In re James Haden, M.D., P.A., 2019 USPQ2d 467424 (TTAB 2019). The stylized mark featured the words ALLERGY CARE, in white capital letters with a blue outline with “a red, horizontal oval with a white and blue border” background. Id. at 2. The examining attorney refused to register the mark on the Principal Register on Section 2(e)(1) of the Trademark Act on the ground that the mark was merely descriptive because the mark “directly convey[ed] some information about the [Applicant’s] services.” Id. at 2 (internal quotations omitted). After the Examining Attorney denied Haden’s request for reconsideration, the Applicant appealed on the issue or mere descriptiveness and amended its application seeking registration on the Supplemental Register. The Examining Attorney accepted the amendment but refused to register the mark on the Supplemental Register under Trademark Act Sections 23(c) and 45, finding that the mark was generic and “thus incapable of distinguishing Applicant’s services.” Id. at 2. Upon the Examining Attorney’s final refusal of the grounds of genericness, Applicant’s appeal resumed and the Trademark Trial and Appeal Board (“TTAB” or the “Board”) considered the question of whether the Applicant’s mark as a whole was generic. Id.at 3. The TTAB conducted the two-part genericness inquiry and found that the phrase ALLERGY CARE is generic because: (1) medical professional advertising medical services for patients with allergies commonly use the term ALLERGY CARE; and (2) the “relevant consumers would readily understand the term ALLERGY CARE to refer to [medical and health care services regarding allergies].” Id. at 4, 11. Applicant argued that the term CARE has many meanings and interpretations, that the Applicant did not actually provide all services encompassed by the term ALLERGY CARE, and that third-parties had successfully registered marks including the terms ALLERGY and CARE, but the TTAB found each of these arguments unavailing. Id. at 8-10. In rejecting Applicant’s first argument, the TTAB stated that the many meanings and interpretations of the term CARE does not rebut evidence establishing that consumers use the phrase ALLERGY CARE to refer to healthcare services concerning the “diagnosis and treatment of allergies.” Id. at 8. In rejecting Applicant’s second argument, the TTAB emphasized Applicant’s failure to cite any precedent supporting the contention that if an applicant does not offer one of the services encompassed by an allegedly generic term or phrase’s definition, then the allegedly generic term is not generic as applied to the applicant. In support, the TTAB cited the finding from In re Cordua Rests., Inc., 118 USPQ2d 1632, 1638 (Fed. Cir. 2016) that “[a] registration is properly refused if the word is the generic name of any of the goods or services for which registration is sought.” Id. at 8-9. The TTAB also expounded that the Board is not bound by the findings of examining attorneys in other cases, and in any event, distinguished the registrations cited by Applicant because the cited marks largely disclaim the terms ALLERGY and/or CARE, do not contain both words, or are not used in connection with health care services. Id. at 10. After holding, in chorus with the Examining Attorney, that the phrase ALLERGY CARE is generic for Applicant’s identified services, the TTAB considered whether the stylization of Applicant’s mark was capable of distinguishing Applicant’s services, and therefore registrable on the Supplemental Register, so long as Applicant disclaims the phrase ALLERGY CARE. Id. at 11. The TTAB contradicted the Examining Attorney’s argument that the “background design, stylization, and color features of the mark are insufficient to support registration,” citing In re Guildford Mills Inc., 33 USPQ2s 1042, 1043 (TTAB 1994), and found that the Examining Attorney wrongfully applied the applicable standard for registrability on the Principal Register in determining that the non-distinctiveness of the stylized elements of Applicant’s Mark rendered it incapable of serving as a source indicator and thus unregistrable on the Supplemental Register. Id. at 12-13. The TTAB stated that because “stylized non-distinctive wording, common geometric shapes, and background designs may be registered on the Principal Register with a showing of acquired distinctiveness, they are capable of serving as indicators of source and also may be registered on the Supplemental Register.” Id. at 13. Given that Haden’s application was for registration on the Supplemental Register, the TTAB stated that the proper inquiry under these circumstances was not whether Applicant’s mark is “inherently distinctive or has acquired distinctiveness, but whether the mark is capable of serving as an indicator of source.” Id. In holding that Applicant’s mark could beregistrable, the TTAB found that the “combination of colors, borders, and stylized generic wording” of Applicant’s mark were not so “commonly used or so lacking creativity that it could never serve to distinguish Applicant’s services from similar services offered by others.” Id. at 14-15. Even so, the TTAB held that in order for Applicant’s mark to be registrable, Applicant must disclaim the phrase ALLERGY CARE within thirty days of the Board’s decision. Accordingly, the Board held that, in the absence of Applicant’s timely disclaimer, the Examining Attorney’s refusal to register Applicant’s mark on the grounds that ALLERGY CARE is generic is affirmed. In re James Haden, M.D., P.A., 2019 USPQ2d 467424 (TTAB 2019) [precedential]. [RB] In Re Ocean Technology, Inc.: 100% Real Failure-to-Function Refusal Affirmed from the Trademark Trial and Appeals Board On April 10, 2017, Ocean Technology, Inc. (“Ocean” or “Applicant”) filed for registration of the mark 100% REAL CALLINECTES CRAB FROM NORTH AMERICA in stylized form, featuring the phrase superimposed over a circular design. In re Ocean Technology, 2019 USPQ2d 450686 (TTAB 2019). The Examining Attorney refused registration of Applicant’s mark, finding: (1) it was merely informational under Sections 1, 2, and 45 of the Trademark Act; and (2) Applicant “failed to comply with [Trademark Rule 2.61(b)] requirement to provide information about the identified goods.” Id. at 2. Applicant appealed and requested re-consideration after approvals were made final. The Trademark Trial and Appeals Board (“TTAB” or the “Board”) began its analysis of Applicant’s mark by turning to Trademark Rule 2.61(b) which empowers the Examining Attorney to “require the applicant to furnish such information, exhibits, affidavits or declarations... as may be reasonably necessary to the proper examination of the application.” Id. at 3. In a July 12, 2017 Office Action, the Examining Attorney, concerned with the possibility that Applicant’s proposed mark was deceptive or deceptively misdescriptive, required Applicant to explain whether Applicant’s goods featuring the proposed mark would in fact consist of 100% real Callinectes crab from North America. Id. After Applicant failed to respond by the February 2018 deadline, the refusal was made final. In August 2018, Applicant requested reconsideration, amended the identification of goods to “crabmeat,” and argued that the amendment made the Examining Attorney’s requirement for information moot because “[‘crabmeat’] clearly describes the goods.” Id. at 4. Although the Examining attorney accepted Applicant’s amendment, he did not consider Applicant’s argument responsive to the requirement for information. Citing a panoply of case law, the TTAB held that: (1) applicants have a duty to respond to examining attorney’s information requirement so long as the requirement is “reasonably necessary to the proper examination of the application”; (2) an applicant’s failure to respond is proper grounds for refusing registration of proposed marks; and (3) because the Examining Attorney’s information requirement was reasonably necessary, Applicant’s failure to comply with the information was a sufficient basis to refuse registration. Id. at 4-5. Even so, the Board considered whether Applicant’s mark was merely informational under Sections 1, 2, and 45 of the Trademark Act. The Board first explained that registrable marks must function as a source identifier for an applicant’s goods and services and whether they function as source identifiers “depends on how [the mark] would be perceived by the relevant public.” Id. at 5. In determining how a phrase would be perceived by the public, the Board considered the common usage of the term or expression, noting that “the less likely that the public will use it to identify only one source . . . the less likely that it will be recognized by purchasers as a trademark.” Id. at 6. The Board also noted that if a proposed mark merely conveys information, it is not registrable. Id. The Examining Attorney argued that Applicant’s proposed mark could not function as a source identifier for “crabmeat” because it includes common terms that are widely used in the industry to describe the quality and geographic origin of Applicant’s goods and other similar categories of goods, including fish and scallops. Id. at 7. The Examining Attorney also argued that the Applicant’s specimen ‘just conveys the contents of the package to consumers, and does not show any indication of source that may be perceived by the general public.” Id. at 8. Applicant argued that the proposed mark was not merely informational matter, but rather suggestive and capable of showing source. Id. The TTAB found the Applicant’s argument unavailing. Citing In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827, the TTAB stated that the issue at hand was “not whether the proposed mark is suggestive . . . but whether the relevant public will recognize it as a trademark identifying only one source.” Id. at 9. The TTAB adopted the Examining Attorney’s argument, finding that consumers “would not associate [Applicant’s mark] with a particular source” and it therefore could not function as a mark because: (1) the record of use of the same or equivalent wording in the industry to show the quality or geographic origin of the same or similar goods to those of Applicant; and (2) the proposed mark on the specimen provided merely indicates the contents of the package. Id. Applicant tried to overcome the failure-to-function refusal by amending its application to the Supplemental Register and claiming acquired and inherent distinctiveness, but to no avail. Id. at 10. In refusing to register the mark, the TTAB stated that if the mark does not indicate origin or source of the identified goods in a way that distinguishes the applicant’s goods from others goods of the same genus, it is unregistrable, regardless of whether registration on the Principal or Supplemental Register is sought. Id. Applicant also submitted various declarations from “knowledgeable customer/industry representatives” to no avail. Id. at 11 (internal quotations omitted). The Board found that the testimony had limited probative value because it represented a very small sample, was largely general and conclusory, and “omit[ted] any documentary evidence to support claims about Applicant’s sales figures and ‘confidential’ advertising expenditures.” Id. The Board also found “particularly problematic” Applicant’s testimony about the “enormous commercial value and recognition attributable” which was supported by no evidence. Id. Finally, in deciding that Applicant’s mark was unregistrable, the Board found that “[t]he inclusion of stylization and minimal background design” did not change their conclusion concerning “consumer perceptions of the proposed mark as a whole.” And thus, the TTAB affirmed the refusals to register Applicant’s proposed mark. In re Ocean Technology, Inc., 2019 USPQ2d 450686 (TTAB 2019) [precedential].[RB]
In this technological era and age of globalization, a strong trademark portfolio is now more than ever a company’s most valuable investment. A client’s brand identity is highly dependent upon how it portrays, protects, and grows its portfolio of single-territory or multi-territory intellectual property assets. Trademark portfolios, in particular, can encompass not only registered trademarks, but also service marks, marks that are in use but not registered, trademark licenses, assignments, and co-branding agreements. Counsel must be able to advise a client on not only where to file trademarks, but also on how to cultivate and expand those filings worldwide through appropriate use in commerce.[1] To get ahead in this adversarial marketplace, counsel must work with clients to regularly audit the value of the respective assets in a trademark portfolio. That includes providing clients with an account of existing trademarks and identifying risks for potential non-use, improper use, chain-of-title issues, and third-party conflicts.[2] From there, counsel can work with clients to establish creative strategies to not only continue acquiring, but also to preserve, implement, and maximize the portfolio’s long-term value. Here are 3 best practice tips for effectively managing trademark portfolios. Create a strategy. A client must first and foremost consider all the relevant factors that go into deciding where to file a trademark and how to enforce its trademark rights. From counsel’s perspective, that means gaining a thorough understanding of a client’s overall plan for trademark registration, monitoring, and enforcement. In creating a strategy, counsel should remain flexible in its tactics, thereby being open to tweaking and adjusting a client’s asset management and enforcement goals based on the client’s respective preferences. Counsel who are proactive in creating an effective strategy will help reduce the potential for unexpected surprises, potential vulnerability, and cancellation actions in the future. Maintain communication. A client must maintain its interest in protecting its trademark assets. That includes knowing what trademarks are registered around the world and understanding which trademarks are at risk for cancellation due to non-use based on country-specific norms. This starts with counsel creating and maintaining an open line of communication with a client, as well as transparency in educating a client on a country’s local laws and the overall importance of trademark protection. Counsel must work with their clients to understand which countries take priority in registration, what products and services the clients seek to protect, and in what countries clients plan to use their marks in the future. Counsel must have a strong and practical grasp on these technicalities in order to bring their clients the best return on investment. Minimize infringement. A client must be alert to when competitors file a trademark application for a new mark. Understanding what competitors are doing in the marketplace allows a client to perceive what kinds of products and services might soon come down the pipeline and, accordingly, influence their own decision-making as to registration. Counsel must work with their clients to monitor the marketplace for potential infringement and misuse, investigate suspected infringement and misuse, and take appropriate action against any identified infringement and misuse.[3] Unless clients are actively looking for channels of counterfeiting and false representation, it could be only a matter of time before inattentiveness might incur substantial and irreversible harm to the brand. The marketplace for trademarks continues to grow at a rapid pace each year. Counsel’s primary goal in advising clients on a day-to-day basis is to mitigate risk and protect vulnerable assets while simultaneously meeting clients’ short-term and long-term goals. Taking the measures outlined above in addition to conducting an annual portfolio review and staying on top of trademark renewals can serve as insurance policies to guard against what could otherwise be an extremely costly mistake. Heather N. Bowen, Esq. is a results-driven and solutions-oriented attorney who focuses her practice on domestic and international trademark, copyright, licensing, technology, new media, data privacy, and business law matters. She has experience serving as corporate counsel to global companies in both the media & entertainment and healthcare technology spaces. Heather has also helped over 125 startup businesses in New York avoid pitfalls as they navigated from newly-commenced startups to established and successful corporate entities. She continues to be a thought leader in the intellectual property and technology fields through frequent publications in the legal press as well as her effective involvement in multiple bar association committees. [1] Developing and Managing a Trademark Portfolio, Practical Law Intellectual Prop. & Tech., Thomson Reuters Practical Law (July 15, 2014), https://content.next.westlaw.com/Document/I22cfb1730dc211e498db8b09b4f043e0/View/ FullText.html?contextData=(sc.Default)&transitionType=Default&firstPage=true&bhcp=1. [2] Id. [3] Id.
Trademark Portfolio Management: A Client's Secret to Global Success By: Heather bowen
IP Media Links By: jayson cohen
Patenting a Coronavirus Treatment On February 5, 2020, as the coronavirus outbreak was dominating the news worldwide, Bloomberg published an article entitled “China Wants to Patent Gilead’s Experimental Coronavirus Drug.” The article reports that the Wuhan Institute of Virology in China has applied for a patent on the use of remdesivir—a Gilead Sciences drug that has not yet been approved for marketing and sale—to treat the coronavirus strain, 2019-nCOV, that is causing the epidemic. The piece discusses the Institute’s laboratory studies, which were reported to the journal Cell Research in a letter available at Nature’s website (LINK). These studies purport to show the effectiveness of remdesivir and another drug, chloroquine, in treating 2019-nCOV and led to a rapid push for clinical trials on patients in China, which began almost immediately. The article also suggests that, as part of China’s evolving respect for intellectual property rights, the Wuhan Institute and the Chinese government are coordinating with Gilead on IP rights to remdesivir (given Gilead’s pre-existing global IP rights in the drug) and on receiving a supply of the drug for trials, rather than having the Chinese government force a compulsory license on Gilead (LINK). See (LINK) (LINK) reporting, on February 6, that Chinese clinical trials on remdesivir to treat 2019-nCOV were starting). Facebook’s Augmented Reality Patents Christopher Yasiejko and Sarah Frier wrote an article in The Los Angeles Times in January 2020 relating to Facebook’s issued patents in 2019. The article emphasizes the company’s focus on the emerging marketplace for augmented reality. It reports statistics from Fairview Research’s IFI Patent Claims Services showing Facebook secured 64% more patents in 2019 than 2018, with a total of 989 patents issued as compared to 274 in 2014. The reported categories of patents include not only data processing and digital transmission patents but also 169 “Optical Elements” patents aimed more specifically at “Heads Up Displays.” These latter patents are thought to relate to Facebook’s virtual reality headsets and its purchase last November of virtual reality company Oculus. The article quotes Facebook spokeswoman Ha Thai, stating that the company is “‘investing in AR, VR and home hardware products.’” That statement followed an earlier quote from Facebook CEO Mark Zuckerberg: “‘At some point in the 2020s, we will get breakthrough augmented reality glasses that will redefine our relationship with technology. Even though some of the early devices seem clunky, I think these will be the most human and social technology platforms anyone has built yet (LINK).’” Is the “Fake News” Trademark Fake? Last October, Brian Niemitz published a real news story in the New York Daily News about a federal trademark application for “Fake News” filed by members of the Florida Pro Chapter of the Society of Professional Journalists. The piece was entitled “Group of journalists attempt to trademark the president’s ‘Fake News’ mantra.” The article suggests that the journalists do not believe that they will ultimately be granted the trademark but in the meantime are using the application as justification to send cease and desist letters, including to the President. The group’s letter to the President apparently says that “‘[r]eferring to factual stories that are critical of your administration as FAKE NEWS (TM pending) is indeed trademark infringement’” and “‘[i]f you fail to comply with our request, we may pursue legal action.’” Niemitz writes that one of the journalists, Emily Bloch, told him “she has been ridiculed, harassed and threatened since becoming a journalist in 2016 and she blames the [P]resident’s incendiary rhetoric for fueling antipathy toward reporters.” But, according to Niemitz, the journalists’ apparent, true aims are satire and public awareness. The journalists created a website (LINK), to advance their cause (LINK).
Online platforms like Amazon, eBay, Google, Facebook, Etsy, Zazzle, Uber, Airbnb, and many others make many aspects of our daily lives easier than ever before and have become an integral part of our lives. However, for all the beneficial activities that are made easier by online platforms, there will always be bad actors who utilize the platforms for nefarious reasons. When online platforms were in their infancy, in the 1990s, Congress passed two laws relating to platform liability with the intent of providing immunity to permit the emerging businesses and innovation represented by these platforms to grow and develop: The Digital Millennium Copyright Act (DMCA) addresses copyright infringement and provides notice and takedown procedures and immunity for online platforms who follow those procedures. Section 230 of the Communications Decency Act (CDA) provides online service provider immunity for claims relating to the publication of information provided by a third party. Section 230 specifically states that it does not limit or expand intellectual property law so the online service provider immunity provided by Section 230 will not apply to trademark, copyright or patent claims, but will protect online platforms from third party activities regarding related claims like false advertising, false association, defamation, and trade secret misappropriation. What about trademark infringement and trademark counterfeiting? For trademarks, we have common law doctrines that essentially bless a notice and takedown procedure: Inwood Supreme Court test: “if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 US 844, 854 (1982). Tiffany v. eBay then applied Inwood to the online world in 2010: “For contributory trademark infringement liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.” Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 107 (2d Cir. 2010). On Thursday, December 5, 2019, 35 NYIPLA members and guests gathered at the Thurgood Marshall Federal Courthouse in Manhattan to discuss and debate the current state of online platform liability in the U.S. NYIPLA president Katie McCarthy introduced the topic, and board member Robert Rando introduced the facilitators, namely: Honorable Richard Sullivan, United States Court of Appeals for the Second Circuit providing the view from the bench; Deputy Director Derek Benner, U.S. Immigration and Customs Enforcement providing the view from law enforcement; Professor Eric Goldman, Santa Clara University School of Law providing the view in favor of continued Section 230 protection; Professor Felix Wu, Benjamin N. Cardozo School of Law providing the view in favor of increased regulation for commercial speech; Ronald Chillemi, Senior Vice President and Senior Counsel, Business Affairs, Fanatics, Inc. providing the view from a brand owner; and Chris Israel, American Continental Group, providing an update from Capitol Hill. After an initial presentation by each of the facilitators, discussion and questions from the group quickly turned to what could be done to address the frustrations of brand owners in connection with their efforts to combat trademark counterfeiting online. Questions discussed and debated included: Do trademark takedown procedures work well even without a corresponding DMCA? Case law supports holding landlords and flea market organizers responsible after notice that counterfeiters are using their buildings and markets. Is the treatment of online platforms different? How should platforms deal with repeat offenders? What are the best practices for platforms in terms of trademark disputes? Should the platforms be expected to mediate disputes? What information should the platforms provide to brand owners in the case of the sale of counterfeits? Do programs like the Amazon Brand Registry, Transparency and Project Zero work? Does the DMCA work the way it should? Should the upshot of Section 230 be that an online retailer has immunity from claims regarding its sales of a product that a brick and mortar retailer would be held responsible for? Platforms ban the sale of certain products and have developed upfront algorithms and procedures in place to ensure that the products never reach the platform marketplace. Can a similar process be developed for counterfeits? What about genuine, but used goods? How can a platform determine what is real and what is fake? What should, or can, we do to keep the development of online platforms robust and competitive, while also setting guiderails for handling bad actors? Is the current state of the law on platform liability working? Should issues concerning safety and security, peddling of disinformation, consumer manipulation and first amendment protections inform or define how we should move forward with respect to Section 230 and if so how and for whom should it remain? For example, should it be modulated to apply only to start-up companies or new entrants into the arena of a certain size or valuation? Is government regulation or private industry self-regulation in our best interests? What about the tensions between censorship and free speech and who gets to decide? The discussion was followed by, and continued in, a reception in the courthouse concourse. The NYIPLA will continue to monitor this important issueThose interested in pursuing this issue further should consider joining one of our committees where the topic can be addressed in various ways including in further programs: (a) Trademark Law and Practice, (b) Fashion Law, (c) Copyright Law and Practice, (d) Trade Secrets, or (e) Privacy, Big Data & Cybersecurity. The NYIPLA also intends to continue its Presidents’ Forum series to periodically investigate various viewpoints on critical issues that affect the acquisition, regulation and enforcement of intellectual property rights.
Negotiating Skills Panel By: Women in ip law committee
On December 3, 2019, the Women in IP Law and Young Lawyers Committees co-hosted a negotiating skills panel aimed at overcoming stereotypes and implicit bias during negotiations. The event was held at the offices of Willkie Farr & Gallagher LLP, and moderated by Maegan Fuller of Cadwalader Wickersham & Taft. Kathy Holub, a lawyer and consultant who teaches negotiations at Columbia University and Harvard University engaged the audience with a presentation outlining best practices. A panel of three experienced litigators: Eugene Chang of Willkie Farr & Gallagher, Christina Licursi of Wolf Greenfield, and Rebecca Kahan Waldman of Dechert, shared their personal experiences and practical advice for turning an adversary’s attempts to push your buttons into a negotiation advantage. The attendees, including a number of young and diverse members of the Association, enjoyed and benefited from this meaningful panel.
NYIPLA Presidents' Forum: Online Forum Platform Liability By: Katie mccarthy
On February 11, 2020, the NYIPLA’s Women in IP Law and Patent Litigation Committees co-hosted an interactive panel presentation titled, “BPCIA Litigation - Lessons from the Trenches.” The members of the panel included Karen Shen (Senior Corporate Counsel, Pfizer), Heather Schneider (Partner, Willke Farr & Gallagher), and Irena Royzman (Partner, Kramer Levin), with Katherine Helm (Partner, Dechert) serving as moderator. The panelists provided insight on some of the unique issues and challenges that arise in BPCIA (“Biologics Price Competition and Innovation Act”) litigation, from both an in-house and outside counsel perspective. Topics addressed included differences between BPCIA and Hatch-Waxman litigation, BPCIA pre-litigation considerations, application of the 271(e)(1) safe harbor provision, and considerations when settling BPCIA litigation. The panel also took questions from the audience, leading to lively group discussions of a variety of BPCIA-related topics, ranging from logistical details to overarching strategy.
BPCIA Litigation - Lessons from the Trenches By: Women in ip law committee
MINUTES OF OCTOBER 15, 2019 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held at King & Spalding LLP, 1185 Avenue of the Americas, 34th floor, New York, NY 10036. In attendance were: Kathleen McCarthy Colman Ragan Robert Isackson (by phone) Irena Royzman John Moehringer Robert Rando (by phone) Alicia Russo (by phone) Gene Lee Patrice Jean Marc Pensabene Heather Schneider Abigail Langsam Dyan Finguerra-DuCharme Peter Thurlow Feikje van Rein Board Members Not Present: Marian Underweiser and Douglas Nemec. Kathleen McCarthy brought the meeting to order and entertained a motion to waive the reading of the minutes and to approve them. The motions were approved. Abigail Langsam provided the financial report. Our assets are down but our spending is conservative. The NYIPLA is on the right track in terms of next steps. The auditors gave a presentation to the Board on October 2nd and the financials were approved by the Board with the minor changes proposed. The Board discussed having a student member and student price at the Judges’ dinner. The student rates can be offered to firms to use for their summer associates who will be placed at their own table. The NYIPLA has 14 new members from September 17, 2019 to October 15, 2019. A majority of the new members are students. We are short 3+ and 3- members. The Board discussed how millennials may prefer having a monthly statement rather than one fixed fee for membership. The Board also discussed moving towards more audible services rather than live programming. One idea presented was asking each committee to record a podcast on a recent case development; each committee would be responsible for one case. The Board discussed different pricing structures for events, the Judge’s dinner and CLE programming. Motions were made to waive the reading of the new members’ names and to admit the new members; the Board approved both motions. Kathleen McCarthy then asked for selected discussion from the committees: Amicus Brief Committee: The Board discussed the draft brief for Athena Diagnostics, Inc. v. Mayo. The NYIPLA is unique in addressing the preemption issue which had come up in the rehearing en banc. The Board tabled approving the brief until after the meeting. Patrice Jean and Heather McDonald are recused. The Board discussed Dex Media v. Click-to-Call Techs, which involves the issue of whether decisions to institute IPRs based on whether requests were filed in accordance with the time bar in 35 USC 315(b) are appealable. The Board tabled approving the brief until after the meeting. Kathleen McCarthy, Marian Underweiser and Patrice Jean were recused. Legislative Action Committee: McCarthy reported that Rep. Jeffries’ office has requested for the NYIPLA to submit a letter on the CASE Act. McCarthy is working closely with the Copyright Committee on the draft letter. Coleman Ragan reported on 101, which appears to have largely stalled. The lack of momentum on the issue underscores why the Athena case is important. There will be a trademark roundtable in the House on October 22nd. Feikje van Rein plans to reach out to member firms with DC offices to solicit a trademark attorney to attend and report to the Board. Colman Ragan raised the issue that California has passed laws that ban patent settlements; the LAC will review the new law and advise. All of the white papers have been put on hold because Congress is not currently working on the relevant legislation. Kathleen McCarthy reported that the NYIPLA is hosting a speed mentoring program at King & Spalding on November 7th. Kathleen McCarthy is going to the University of Pennsylvania in November to present to the students on trademark developments. Robert Rando reported that he will be moderating a panel on “Careers in IP Law” at St. John’s Law School on October 23rd. Dyan Finguerra-DuCharme reported about the Fashion Committee’s upcoming event on the Hard Candy case. Attendance numbers are promising. Phil Cox is having a webinar program on November 6thproviding advice on best practices for attorney marketing. Heather Schneider reported that planning for the One Day Patent event moving along well. The event will include several substantive programs as well as a diversity program on successful initiatives. Keynote speaker will be the Honorable Freda Wolfson, the Chief Judge of the District Court of New Jersey. Patrice Jean reported on the Foundation event which will have a silent auction, live motion and a CLE program comprised of retired judges who will speak on diversity and inclusion and elimination of bias in the legal profession. Hughes Hubbard can host fundraiser, but would prefer to not have the event around the AIPLA. The Board was asked to obtain auction items. The Board approved a motion to provide tickets for Day of Dinner, Judge’s Dinner and Half-Day Trademark Program as donation items to be auctioned by the Foundation. Board approved providing a hotel room for the evening of the Judge’s Dinner as an auction item. The Women in IP Law Committee is hosting a joint Biosimilars program with the Patent Litigation Committee on February 11th and the focus is on the APICA litigation and those of us who have been through it. The IP Czar declined the NYIPLA’s offer to speak at the President’s Forum. We reached out to a representative at ICE that does border enforcement work. Peter Thurlow and Charlie Macedo are working on the PTAB program and are corresponding with Patent Office to secure a speaker. They are also soliciting nominations for Inventor of the Year. The meeting was adjourned.
The Board meeting was held at King & Spalding LLP, 1185 Avenue of the Americas, 34th floor, New York, NY 10036. In attendance were: Kathleen McCarthy Colman Ragan (phone) Douglas Nemec (phone) John Moehringer Gene Lee Alicia Russo Douglas Nemec Marc Pensabene Heather Schneider Abigail Langsam Robert Isackson Dyan Finguerra-DuCharme Marian Underweiser (phone) Robert Rando Patrice Jean (phone) Peter Thurlow (arrived at 5.10pm) Feikje van Rein Board Members Not Present: Irena Royzman. Kathleen McCarthy brought the meeting to order and entertained a motion to waive the reading of the minutes and to approve them. The motions were approved. Abigail Langsam provided the financial report. Our assets are down but our net income is in better shape than it was this time last year. We have 20 new members over the past month. Membership down slightly from last year, but we are strong in getting new student members. Not many mentees signed up for the speed networking; Kathleen McCarthy took the three students who had signed up out for drinks. The Board discussed ways to increase student membership and outreach. Motions were made to waive the reading of the new members’ names and to admit the new members; the Board approved both motions. Kathleen McCarthy then asked for selected discussion from the Committees: Amicus Brief Committee: Robert Isackson reported that there are no current briefs in progress. SCOTUS granted certiorari in Bookings case and the Trademark Committee has shown interest in drafting the amicus brief. ABC is keeping an eye on several cases and is finalizing two podcasts. Legislative Action Committee: Colman Ragan indicated that because there is not much time left in this legislative session, there is not much to report. The NYIPLA submitted a letter in response to the Trademark Roundtable. The Copyright Committee was working on a letter concerning the CASE Act, but then the bill passed out of the House. Kathleen McCarthy will touch base with Chris Israel to see if it makes sense for the NYIPLA to still submit a letter. The Board discussed IP issues relating to artificial intelligence. Pharma Subcommittee has posted several papers on the NYIPLA website. Robert Rando moderated a successful Careers in IP program at St. John’s Law School on October 23, 2019, which had over 60 attendees. Robert Rando encouraged students to participate in the writing competition. Dyan Finguerra-DuCharme reported about the Fashion Committee’s October 30thevent on the Hard Candy case, which had over 60 attendees. The Fashion Law Committee also increased its membership following the program. The NYIPLA held a webinar on November 6th on best practices for attorney marketing, which had 30 participants. Heather Schneider reported about the upcoming One Day Patent Program, which is set to cover a broad range of substantive patent topics as well as a panel discussion on diversity issues. Judge Wolfson will be providing the keynote address. Patrice Jean reported on the Foundation event scheduled for November 18, 2019 at Orrick. We have had significant success in obtaining donations for the silent auction, and NYIPLA members will be able to participate in the bidding online. Orrick has donated $2500 to the event and will provide a wine tasting. The Board committed to spreading the word to increase attendance. Kathleen McCarthy reported on the planning for the President’s Forum scheduled for December 5, 2019. Kathleen McCarthy is finalizing the speakers for the panel. Peter Thurlow and Charlie Macedo are working on the PTAB program and are corresponding with Patent Office to secure a speaker. Kathleen McCarthy reported that the speed mentoring program was cancelled for lack of interest. The Board discussed creative programming for mentoring. The Women in IP Law Committee is hosting a joint program with the Patent Litigation Biosimilars program on February 11th and the focus is on the APICA litigation. The Women in IP Law and Young Lawyers Committees are planning a joint event. Details are still in progress. Dyan Finguerra-DuCharme reported on the Trademark Committee’s annual winter program that features a policy maker from the Trademark Office and an administrative judge from the TTAB. Pryor Cashman has agreed to host the event and to handle the on-site administrative tasks the night of the event. The Board discussed hosting a cocktail party for law students in February as a way to encourage renewal of membership. The Board discussed alternative membership pricing, incentives and billing structures. The meeting was adjourned.
MINUTES OF NOVEMBER 12, 2019 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
MINUTES OF DECEMBER 11, 2019 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held at King & Spalding LLP, 1185 Avenue of the Americas, 34th floor, New York, NY 10036. In attendance were: Kathleen McCarthy Colman Ragan Robert Isackson Heather Schneider Abigail Langsam Douglas Nemec (phone) John Moehringer Gene Lee Alicia Russo Marc Pensabene (Phone) Irena Royzman Robert Rando Patrice Jean Peter Thurlow (phone) Feikje van Rein Board Members Not Present: Marian Underweiser and Dyan Finguerra-DuCharme. Kathleen McCarthy brought the meeting to order and entertained a motion to waive the reading of the minutes and to approve them. The motions were approved. Abigail Langsam provided the financial report, which is in good order. We have 4 new members over the past month, 3 of whom are students. President McCarthy and the Young Lawyers Committee will do outreach. Motions were made to waive the reading of the new members’ names and to admit the new members; the Board approved both motions. President McCarthy then asked for selected discussion from the Committees: Amicus Brief Committee: Robert Isackson and Irena Royzman led a discussion on Booking.com, which addresses the question of whether, if a mark is generic ab initio, you can use survey evidence such as a Teflon survey. The Board discussed whether it’s not always clear what is generic ab initio. The brief would be taking the Patent Office’s position. The committee will update the proposal with more detail and the Board will vote via email. The Board also discussed the Vanda case. The Solicitor General has recommended the Court take up Athena instead. In Arthrex, the Patent Office will likely ask for a rehearing. Legislative Action Committee: Colman Ragan reported that there may be movement on the BLOCKING Act, for which the NYIPLA prepared an initial white paper that had not been submitted. The LAC is also looking at the California Settlement Law and is updating the white paper on that. The Board will vote on the white papers via email. There was also discussion of the USMCA trade agreement between the US, Canada, and Mexico which has provisions that affect patents and drug prices, and may impact provisions of Hatch-Waxman and the BPCIA. Section 101: Peter Thurlow updated the Board on recent 101 activities and a possible WIPO event to be held with David Kappos. The Board discussed whether NYIPLA should get involved in that or hold its own event. The Board then discussed many recent programs including the One-Day Patent CLE, the NYIPLEF fundraised, the Women’s Committee event on IP transactions, the President’s Forum, and the PTAB event scheduled for this evening. The Board also discussed the upcoming Biosimilar panels, TTAB event, Day of Dinner CLE and possible speed networking. Ms. Schneider reported on the Program Committee’s preparations for the Day of Dinner CLE, including the potential of inviting Judge Connolly, Judge Albright, and others, and discussing How to Manage Complex Cases, such as BPCIA cases, using local rules and other practices. Next, other Board liaisons reported on committees such as Inventor of the Year, Conner Writing Competition and Big Data. Next, the Board discussed membership, pricing, attendance for the Judges Dinner, and the Centennial celebration. The Board continues to discuss ideas for alternate pricing models and ways to increase attendance at the Judges Dinner since moving from the Waldorf. The meeting was adjourned.
MINUTES OF JANUARY 14, 2020 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held at King & Spalding LLP, 1185 Avenue of the Americas, 34th floor, New York, NY 10036. In attendance were: Kathleen McCarthy Colman Ragan Douglas Nemec John Moehringer (By Telephone) Gene Lee Abigail Langsam Robert Isackson Marc Pensabene Dyan Finguerra-DuCharme Marian Underweiser (By Telephone) Robert Rando Patrice Jean (By Telephone) Irena Royzman Peter Thurlow, Alicia Russo, and Heather Schneider were absent from the meeting. Feikje van Rein attended from the Association’s executive office. Kathleen McCarthy brought the meeting to order and entertained a motion to waive the reading of the minutes and to approve them. The motion was approved. Abigail Langsam provided the financial report. Expenditures are down and are below where they were last year, but revenues are also down. The Board discussed creating an audit committee to look for a new audit company. Our current audit company was acquired by a larger company; the fees have increased and the relationship is less personal. A motion was made to form an ad hoc committee to find a new auditing firm. Colman Ragan, Rob Rando and Abigail Langsam volunteered to serve on the committee. We have 7 new members from December to January. Motions were made to waive the reading of the new members’ names and to admit the new members; the Board approved both motions. Kathleen McCarthy then asked for selected discussion from the Committees: Amicus Brief Committee: Kathleen McCarthy is revising the Booking.com appellate brief to take a position in support of Booking.com. Robert Isackson reported that NantKwest ruled consistent with the NYIPLA’s amicus brief by ruling that the USPTO cannot collect fees. In Syngenta, the CAFC agreed with the NYIPLA’s two positions regarding copyright preemption and the divided infringement issue. SCOTUS denied cert in Athena re Section 101 issues and it was noted that the NYIPLA’s our amicus brief received unsolicited media attention. The Amicus Brief Committee is considering submitting a brief in the Association for Accessible Medicines appeal. The Amicus Brief Committee decided not to pursue theIdenix Pharms v. Gilead Scis, Inc. case. Legislative Action Committee: There are certain pieces of IP legislation that may be passed despite the budget resolutions including legislation concerning patent settlements. Section 101 legislation will probably not pass, but LAC is keeping an eye on certain issues. Patent thickening legislation is in the House; some form may be used in a resolution in May. NYIPLA should continue to push on Section 101, but it may not be attached to any budget resolution because there are no proposed savings for the government. The Board discussed reviewing whether Customs should be able to seize goods based on design patent infringement. Robert Isackson indicated that he would examine this issue with Anthony Lo Cicero. Colman Ragan updated the Board on the Super Patent bill. Scott Greenburg was invited to attend another trademark roundtable in D.C. The Board approved motions for Greenburg to attend the January 22nd roundtable and to serve as the designated Association person to address proposed trademark legislation. Kathleen McCarthy suggested that certain committees, including trademark, copyright, fashion and corporate, coordinate with the National IPR Center regarding online enforcement and procedure; Kathleen McCarthy plans to circulate an email seeking volunteers. Judge’s Dinner: The Board discussed expanding the list of judges invited to include the 40 judges involved in the patent pilot program. The Board approved a motion to invite the additional judges. The Board also discussed ways in which to make the dinner more appealing to judges including a reception for the OBS recipient. The Day of Dinner CLE will feature a presentation by Judge Connolly from Delaware, Judge Albright and Judge Kovner from Eastern District will present on managing complex cases using local rules. The Day of Dinner invitations have been mailed. The Board discussed how to manage inventor activists at the events. Patrice Jean reported that the Foundation is in the process of putting together a new application to allow for two scholarships this year. The second scholarship will be awarded to law students directly rather than to an institution. The application period will open the beginning of February. The Board approved funding the Giles Rich scholarship at $10,000. Patrice Jean indicated that the Foundation was planning to name the new scholarship in order to raise additional funds. The Board discussed the Annual Dinner including the criteria and nominees for the Lifetime Achievement Award and the Volunteer Award. The Board also discussed potential speakers. Abigail Langsam reported on the February 11th Women in IP Law and Patent Litigation Committees Biosimilars program. Several speakers are confirmed including an in-house attorney from Pfizer, Irena Royzman and Heather Schneider.
The Board meeting was held at King & Spalding LLP, 1185 Avenue of the Americas, New York, NY 10036. In attendance were: Kathleen McCarthy Heather Schneider Robert Isackson Colman Ragan Abigail Langsam Dyan Finguerra-DuCharme Marian Underweiser (phone) Robert Rando (phone) Patrice Jean Alicia Russo Gene Lee Peter Thurlow Douglas Nemec John Moehringer Irena Royzman Marc Pensabene was absent from the meeting. Feikje van Rein attended from the Association’s Executive Office. Kathleen McCarthy brought the meeting to order and entertained a motion to waive the reading of the minutes and to approve them. The motions were approved. Abigail Langsam provided the financial report. The Judge’s dinner revenue is down $100,000.00 from this time last year. We are down by 31 tables this year. The Board of Directors discussed exploring alternate venues for next year and ways in which to generate interest in this year’s event. We have 3 new members from January to February. Motions were made to waive the reading of the new members’ names and to admit the new members; the Board approved both motions. The Board discussed targeting younger lawyers to participate in drafting amicus briefs as a way to increase membership generally in the NYIPLA. The Board discussed ways to advertise and market the amicus brief opportunities of the NYIPLA. The Board is considering having a panel discussion about the amicus briefs NYIPLA has submitted and to include the younger authors and contributors on that panel. This type of program can be held at the One-Day Patent CLE Seminar and the Annual Meeting. Kathleen McCarthy then asked for selected discussion from the Committees: Amicus Brief Committee: Kathleen McCarthy is working closely with the Trademark Committee on theBooking.comappellate brief. Robert Isackson reported that Athena was denied again. We are waiting on several decisions. Legislative Action Committee: Colman Ragan reported that the last Pharma subgroup call discussed Pay for Delay. The Term Act may also be back on the table, as well as state settlement legislation (Connecticut, New York, Illinois and Minnesota). The LAC may weigh in on legislation proposed by Connecticut and New York. Robert Isackson said that Congress is unlikely to focus on Section 101, but may focus instead on copyright and design patent issues. Patrice Jean provided an overview of the top candidates for the Inventor of the Year Award. A motion was made to accept the Inventor of the Year Award Committee’s recommendation to give the award to Dr. Rajiv V. Joshi; the motion was approved. Heather Schneider indicated that the Committee is having difficulty finding a speaker for the Day of Dinner. The Board decided to modify the topic in order to expand the potential speakers. Patrice Jean advised that the application is live for the $10,000 scholarship that the NYIPLEF will award at the Annual Meeting. Heather Schneider suggested that we only have one track at the Annual Meeting on the Google v. Oracle case. The Board discussed having the authors of the amicus brief participate on the panel. The Board also discussed potential keynote speakers and candidates for the following awards: Lifetime Achievement Award; Volunteer of the Year Award and Impact Award. A motion was made to accept the nominations; the motion was approved. The meeting was adjourned.
MINUTES OF FEBRUARY 11, 2020 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held at King & Spalding LLP, 1185 Avenue of the Americas, New York, NY 10036. In attendance were: Kathleen McCarthy Heather Schneider (phone) Dyan Finguerra-DuCharme Marian Underweiser (phone) Robert Rando (phone) Patrice Jean Alicia Russo Gene Lee (phone) Peter Thurlow (phone) Douglas Nemec John Moehringer Irena Royzman Colman Ragan Abigail Langsam, Robert Isackson, and Marc Pensabene was absent from the meeting. Feikje van Rein attended from the Association’s Executive Office. Kathleen McCarthy brought the meeting to order and entertained a motion to waive the reading of the minutes and to approve them. The motions were approved. Feikje van Rein reported on the financial condition of NYIPLA. Feikje reported that NYIPLA has not yet paid the full deposit for the Judges’ dinner. The force majeure provision of the NYIPLA contract with the Conrad does not apply until the State of New York or the City of New York declares a state of emergency. If the Association were to postpone the Judges Dinner, the New York Hilton Hotel has offered June 14th as an alternative date. However, if NYIPLA were to cancel without a state of emergency, the Association would have to pay a $300,000.00 penalty. Feikje plans to send out a notice to all members with an update on the coronavirus and the present intention to move forward with the Judges’ Dinner. We have 8 new members from January to February. Motions were made to waive the reading of the new members’ names and to admit the new members; the Board approved both motions. Kathleen McCarthy then asked for selected discussion from the NYIPLA committees: Amicus Brief Committee: Kathleen McCarthy reported that NYIPLA filed the Booking.com appellate brief. Robert Isackson reported that Athena was denied again. Legislative Action Committee: The Board discussed proposed comments to the current trademark legislative proposals. Robert Rando is coordinating working groups that will focus on design patent legislation concerning providing customs with the ability to stop importation of counterfeits issues as well as a task force that will coordinate with the IPR task center on IP issues. Judge Preska, SDNY, Judge Bumb, DNJ, and Judge Brinkema, EDVA will be speaking on the Day of Dinner panel. Heather Schneider provided an update on planning for the Annual Meeting including potential panelists. Heather reported on the Women in IP Law and Patent Litigation Committee biosimilars program, which was very well attended (about 80 attendees). Members of the Women in IP Law Committee stayed after the presentation to network. Dyan Finguerra-DuCharme reported on the USPTO/TTAB program held on March 2nd, 2020.The event was well attended and the USPTO was receptive to criticism about the new requirements to include an applicant’s email in filings. Patrice Jean reported that Young Lawyers Committee Skills Deposition workshop was successful and generated several new members. On April 8th, 2020, Phil Cox plans to talk about the importance of law firm rankings by publications and other trade groups. The Board discussed potential implications of the coronavirus on future events. The meeting was adjourned.
MINUTES OF MARCH 5, 2020 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
Andrea calvaruso
Have been promoted to Partner at Leason Ellis LLP.
MOVING UP & MOVING ON
Has been promoted to Partner at Fross Zelnick Lehrman & Zissu PC.
tamar niv bessinger
john bauer
todd nosher
Has been promoted to Executive Committee member at Kelley Drye & Warren LLP.
jordan garner & Lauren emerson
Formerly of Venable LLP, has joined Calhoun Bhella & Sechrest LLP as a Partner.
Alexandra valenti
Formerly of Mintz Levin Cohen Ferris Glovsky and Popeo PC, has joined Nelson Mullins Riley & Scarborough LLP as a Partner.
Has been promoted to Partner at Goodwin Procter LLP.
Last First Membership Firm/Company/Law School State Elkin Camerin Student Michigan State University College of Law Michigan Higgins James Associate Young Conaway Stargatt & Taylor LLP Delaware Rahman Joy Student Touro College Jacob D. Fuchsberg Law Center New York Bloomfield Andrew Student St. John's University School of Law New York Goykhman Daniela Student New York Law School New York Jordan Akinyele Student Benjamin N. Cardozo School of Law New York Kostro Katarzyna Student Fordham University School of Law New York McLaughlin Roger Active 3- Venable LLP New York Moore Heidi Student New York Law School New York Scholnick Leah Student Benjamin N. Cardozo School of Law New York Wohlhieter Brian Student Benjamin N. Cardozo School of Law New York
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WELCOME NEW MEMBERS
NYIPLA Publications Committee Editorial Team Committee Co-Chairs Jessica Sblendorio and Margaret Welsh Committee Members Giselle Ayala Heather Bowen Dale Carlson William Dippert Bobby Greenfeld Richard Koehl Kyle Koemm Keith McWha Clint Mehall Suzanna Morales Liz Murphy Ben Natter Calvin Wingfield NYIPLA Executive Office 2125 Center Avenue Suite 406 Fort Lee, NJ 07024 USA Tel: 1.201.461.6603 Email: admin@nyipla.org Web: www.nyipla.org