Promoting Innovation—that is one of my main goals as President of the New York Intellectual Property Law Association (NYIPLA). We need more medicines to treat cancer, more exoskeletons and related advances to treat paraplegics, and more advanced transportation technologies to help those, like me, who are commuting into to Penn Station each day!
We need strong and reasonable intellectual property laws in place to serve as the catalyst for these innovations to occur. As President of the NYIPLA, I have been working with the NYIPLA Board, its Officers, and active NYIPLA members to effect this Innovation goal.
I became the proud President of the NYIPLA back in May of this year, had a little break in the summer to get the kids off to college and to enjoy some vacation (not enough), and the fall has been quite busy. The list below includes some of the matters the NYIPLA has been actively working on:
1) Working with the IPO and AIPLA team on their joint 101 statutory proposal to replace the current language in Section 101 and in effect, to overrule the relevant Section 101 U.S. Supreme Court cases between 2010 – 2014 (Bilski, Mayo, Myriad, and Alice). We have also been working with other IP Bar Associations to encourage them to support the joint Section 101 IPO-AIPLA proposal and are pleased to note that New Jersey, Pennsylvania, Boston, and the National Association of Patent Practitioners (NAPP) have agreed to do so.
2) A new PTAB Committee was formed this year and has been very active, holding at least monthly meetings and/or teleconferences. The PTAB Committee recently hosted a PTAB meeting related to the U.S. Supreme Court’s SAS decision, and the Vice Chief Judge of the PTAB, Judge Tim Fink, attended and participated in our program along with our moderators Charles Macedo, Kenneth Adamo and Brian Murphy. The PTAB Committee also provided comments to the USPTO supporting the USPTO’s plan to use the Phillips claim construction standard in PTAB cases as compared to the former BRI standard.
3) The Patent Law Committee hosted a helpful patent quality meeting with representatives from the U.S. Patent Office Patent Quality Team.
4) The Amicus Committee continues to be one of the most active committees, preparing and submitting a number of amicus briefs including an amicus brief in the RPX Corp. v. ChanBond, LLC (No. 17-1686) case, which challenged a ruling that the defensive patent group RPX lacks standing to appeal a Patent Trial and Appeal Board decision to the Court of Appeals for the Federal Circuit.
5) The China Committee hosted a meeting at Benjamin N. Cardozo School of Law with representatives from the USPTO’s China Intellectual Property Team, to discuss recent developments in China’s intellectual property law.
In This Issue:
NYIPLA President's Corner
After TC Heartland Artificial Infringement Could Create Real Problems for Hatch-Waxman Litigants
Caution Explicit Content Ahead: End of the Road for the Scandalous Provision?
Recent Developments in Patent Law at the U.S. Supreme Court: Oil States, SAS Institute, and WesternGeco
What Keeps In-House Counsel Up At Night?
Summer- Fall IP Media Links: IP is (Not?) Child's Play
Notable Trademark Decisions
NYIPLA Event Programming
Moving Up and Moving On
Welcome New Members
Friday, March 22nd, 2019
New York Hilton Midtown Hotel
Outstanding Public Service Award
Honorable Kathleen M. O'Malley
United States Court of Appeals
for the Federal Circuit
Defining Your Baseline - Developing Your Brand
NYIPLA Annual Meeting
Princeton Club of New York
35th Annual Joint Patent Practice Seminar
Crowne Plaza Times Square
97th Annual Dinner in Honor of the Federal Judiciary
Three in One Global Patent Trials
Daniel Patrick Moynihan Courthouse
When Worlds Collide: Trademark Disputes Pitting Fictional Entertainment Works Against 'Non-Fictional' Businesses
After TC Heartland Artificial Infringement Could Create Real Problems for Hatch-Waxman Litigants
By: nicholas marcello
Imagine being in Marshall, Texas on a warm day and seeing an ice skating rink right outside the historic Marshall courthouse. This is not a scene from a fantasy; this is real life thanks to the expansive interpretation of the patent venue statute. Samsung, holder of the second-most United States patents, is the generous organization behind the rink. Why would a huge Korean company sponsor an outdoor ice skating rink in Texas? Many believe it is an attempt by the “frequent defendant Samsung to curry favor with local juries.” This bizarre behavior is a result of the old interpretation of the patent venue statute in which very few contacts were needed to establish venue. The Eastern District of Texas, and its courthouse in Marshall, Texas, soon became a hotbed for patent litigation, especially for patent trolls with weak cases.
On May 22, 2017, in TC Heartland v. Kraft Food Groups Brand, the Supreme Court ruled that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.” Alternatively, venue may be obtained where the defendant has committed acts of infringement and has a “regular and established place of business,” which was later clarified to be a “physical place” and which “must be the place of the defendant.” Since few defendants are incorporated in or have a regular and established physical business in east Texas, patent litigation has begun to dry up in east Texas.
As is already apparent from their effects in the Eastern District of Texas, TC Heartland and its progeny are sure to change the liberal venue practices that have permeated patent litigation nationwide. These cases will also bring about new challenges for courts and litigants alike to grapple with in the niche field of Hatch-Waxman litigation. What separates Hatch-Waxman litigation from other patent litigation is that the act of infringement is typically artificial—that is, purely a creature of statute. Under the Hatch-Waxman Act, the submission of an Abbreviated New Drug Application (“ANDA”) to the Food and Drug Administration constitutes infringement, rather than the manufacture or sale of an infringing product. Consequently, there is an inherent conflict: the patent venue statute is backward-looking in nature while the Hatch-Waxman Act is forward-looking. This paper will address how that conflict will affect venue for patent litigation after TC Heartland.
II. The Road to Texas
Congress has afforded patent litigants a venue statute that applies independent of the general venue statute. The patent specific venue statute provides two avenues for selecting a venue: first, venue is proper where the defendant resides; and second, venue is proper where the defendant has committed acts of infringement and has a regular and established place of business. Prior to TC Heartland, this meant, in effect, that venue was proper in the defendant-corporation’s state of incorporation and any state in which the defendant practiced the patent. Equally important to the patent venue statute is the general venue statute. In 1988, the general venue statute was amended by The Judicial Improvements and Access to Justice Act of 1988. The amendment provided that defendant-corporations “reside in any judicial district in which [they are] subject to personal jurisdiction at the time the action is commenced.” Although this amendment was made to the general venue statute, the Federal Circuit’s ruling in VE Holding Corp. v. Johnson Gas Appliance Co. applied this amendment to patent litigation. The Federal Circuit reasoned that § 1400(b) of the patent venue statute falls under the purview of the general venue statute and, consequently, “redefines the meaning of the term ‘resides’ in that section.” This definition, when applied to patent litigation, makes venue proper against a corporate defendant in any state where it intentionally sells the patented goods. This expansive holding by the Federal Circuit made forum shopping a prevalent tactic in patent litigation.
After VE Holding, the Eastern District of Texas in Marshall, Texas emerged as a favorite venue in which to bring patent cases. In 2016, the year prior to TC Heartland, 36.4% of all patent cases were filed in the Eastern District of Texas. This percentage is consistent with the breakdown for at least 2014 and 2015. The second-most popular district for patent litigation was the District of Delaware, in which only 10% of the total patent cases were filed. These numbers are all the more striking when one considers that Marshall, Texas sees more patent litigation suits than venues comprising Silicon Valley, Massachusetts’ Route 128, Detroit’s Automation Alley, Illinois’ Golden Corridor, and North Carolina’s Research Triangle combined. Perhaps this is indicative of why corporations such as Samsung have spent thousands of dollars, and resources, in Marshall, a city of only 23,000 people.
Scholars have grappled with the reasons why the Eastern District of Texas has become so popular. One prevailing theory is that the Eastern District of Texas has the reputation of being a fast docket, that is, a “rocket docket.” A second reason is the belief that judges, and jurors, are unusually sympathetic to plaintiffs in that district. A final reason is that cases in the Eastern District of Texas are disproportionately likely to go to trial. Whichever reason litigants believe in, the bottom line is that it all comes down to money. If the docket moves quickly, there are less total litigation costs. If the judges and jurors are unusually sympathetic to plaintiffs—perhaps because of certain outdoor ice skating rinks—then the verdicts should reflect that with more frequent and valuable rewards. Finally, if the cases are disproportionately likely to go to trial, then the side with the deeper pockets has more leverage.
There is some evidence to back up these theories. From 1997 to 2016, patent holders bringing suit in the Eastern District of Texas have had a staggering overall success rate of 54%, the highest of all Federal districts. Any litigant will take those odds time and time again. When each district is ranked—based on median time-to-trial, plaintiff success rate, and median damages awarded—the Eastern District of Texas comes in second in the country. Whichever the reason, the fact remains that patent holders have always flocked to the Eastern District of Texas. TC Heartland stands to change that.
III. Legislative History of the Venue Statutes
To understand the issue in TC Heartland, it is necessary to view the path that each venue statute has taken to today. The Judiciary Act of 1789 allowed a plaintiff to file a suit in a district court if the defendant could be found for service in that district, or if the defendant was “an inhabitant” of that district. This statute covered patent suits as well. The statute was amended in 1887 to permit suit only where the defendant or plaintiff was an inhabitant. This amendment caused some confusion among patent litigants, resulting in a split among the courts. Some courts applied the new rules of the 1887 act, while others continued to apply the pre-amendment rules. The dilemma was resolved when Congress passed a patent venue statute in the Act of 1897, which made venue proper wherever the “defendant is an inhabitant, or in any district in which the defendant . . . committed acts of infringement and [has] a regular and established place of business.” The Act of 1897, which contained a patent venue statue provision, is the predecessor of today’s patent venue statute. Today’s version is virtually identical, replacing “defendant is an inhabitant” with “where the defendant resides.”
In 1952 Congress codified the modern patent venue statute. At the same time, Congress enacted the general venue statute, which defined the “residence” of corporate defendants. The question of whether the general venue statute’s definition of “resides” applied to patent cases made its way to the Supreme Court in Fourco Glass Co. v. Transmirra Prod. Corp. In that case, the Court held that because § 1391 “is a general corporation venue statute” and § 1400(b) “is a special venue statute applicable . . . [to] patent infringement actions,” § 1400(b) “is the sole and exclusive provision” for venue in patent litigations. This remained the law for about thirty years until 1998 when § 1391, the general corporate venue statute, was amended. The new general venue statute stated that “under this chapter” a defendant corporation resides wherever it is subject to the personal jurisdiction of the court.
Shortly thereafter, the Federal Circuit grappled with whether the most recent amendment changed the application to patent litigation. In VE Holding Corp. v. Johnson Gas Appliance Co., the Federal Circuit held that § 1400(b) of the patent venue statute was included in the phrase “under this chapter,” so the general venue rules applied to patent litigation. This remained steady law until Congress passed the Federal Courts Jurisdiction and Venue Clarification Act of 2011. This act changed the general venue statute to read that “except as otherwise provided . . . this section shall govern the venue of all civil actions brought in district courts of the United States.” In TC Heartland at the Federal Circuit level, the court reaffirmed VE Holding, reasoning that it found no evidence that Congress intended to codify the holding in Fourco. This decision pushed TC Heartland to the Supreme Court.
IV. The TC Heartland Ruling and Effect
A. TC Heartland Case
In TC Heartland, Kraft Food Groups sued Heartland over certain “liquid water enhancer products.” Kraft is organized under the laws of Delaware and maintains a principal place of business in Illinois. Its business in Delaware consists of selling products and maintaining manufacturing facilities within the state. Heartland is organized and maintains a headquarters in Indiana. Heartland’s only ties to Delaware, the original venue, are shipping orders to Delaware through contracts with two national accounts that are headquartered outside of Delaware. These contracts amount to only 2% of Heartland’s total sales of the accused products. Heartland’s petition for a writ of mandamus, seeking to have the case dismissed or transferred from the District Court of Delaware, was denied by the Federal Circuit.
The Supreme Court unanimously overruled the Federal Circuit and, once again, separated the general and patent venue statutes. The Supreme Court boiled the issue down to one problem, “whether Congress changed the meaning of § 1400(b) when it amended § 1391.” The Court first looked for a “relatively clear indication” in § 1391 to show that Congress intended to change § 1400(b) as well. Consistent with its decision in Fourco, the Court was unable to find one. Even though § 1391 has a catch-all provision, the Court in Fourco dealt with the same language when it kept § 1391 and § 1400(b) separate. The Court recognized that § 1391 does say “for all venue purposes,” but this was not enough of a material change in language to evidence an intent to alter § 1400(b).
The Court further supported its holding by evaluating what it dubbed as the “saving clause.” The “saving clause” is the beginning portion of § 1391 (the general venue statute) which reads, “[e]xcept as otherwise provided by law . . . .” The earlier version of the statute, evaluated in Fourco, contained no such clause. Yet, the previous Court still held that § 1400(b) did not fall within the purview of § 1391. This subtle difference holds Fourco “on even firmer footing now” and “makes explicit the qualification that [the Supreme Court] previously found implicit.”
Finally, the Court found no evidence that Congress intended to ratify the Federal Circuit’s decision in VE Holding with the 2011 amendment. If anything, the amendment undermines the argument that Congress ratified VE Holding. The opinion in VE Holding was heavily influenced by Congress’s decision to include “under this chapter” in the 1988 version of the general venue statute. However, the 2011 version deleted that language and added the “saving clause.” Because the Supreme Court was unable to find any textual support for VE Holding, the Federal Circuit was overruled, and § 1400(b) once again became the sole venue provision for patent litigation. Therefore, venue is proper in the state of incorporation or where the defendant corporation has committed acts of infringement and has a regular and established place of business.
B. TC Heartland’s Aftermath
Any case that rules on something as ubiquitous as venue is sure to have a drastic and immediate impact. One way district courts are approaching TC Heartland is to act as though nothing has changed. Because the Supreme Court held that it was merely reaffirming its decision in Fourco, some courts are treating venue as though the law has not changed. Courts supporting this view have argued that the improper venue defense Heartland raised has always been available, despite the Federal Circuit’s decision in VE Holding. To support their denial of a motion to dismiss or transfer, these courts argue that the parties waived their right to bring this defense and TC Heartland does not revive that defense. One example of a court taking this view is the District of Delaware’s decision in Koninklijke Philips NV v. ASUSTeK Computer Inc. In Koninklijke Philips, the defendants argued that venue was improper and the case should be transferred. The court denied this argument because defendants were actively litigating and subsequently waived their right to challenge venue. Additionally, that court stated that TC Heartland did not constitute an intervening change in the law, which would revive the improper venue defense, because it only affirmed the viability of Fourco.
On the opposite end of the spectrum, “a growing number” of courts have determined that TC Heartland constitutes an intervening change in law. Proponents of this argument have permitted parties to raise improper venue arguments even if such arguments were not included in preliminary responses. Courts have held that failing to initially include venue arguments was not a waiver because it was not a “relinquishment of a known right” and defendants could not have predicted “that a circuit court precedent would be overruled.”
In the future we can expect to see many more patent cases outside of the Eastern District of Texas, whether they are transferred away or filed elsewhere in the first instance. Historically, “approximately 83% of cases involving companies in N.D. Cal. were filed outside of the district.” Commentators now expect to see more cases brought in the technology laden Northern District of California. The same effect is expected in Delaware, where “the majority of Fortune 500 companies are incorporated.” The number of patent litigation filings in these districts has already started to increase. In the month following TC Heartland, patent litigation filings in the Northern District of California increased 300%, and in Delaware they increased 160%.
V. Brief Overview of Hatch-Waxman Litigation
The Hatch-Waxman Act, also known as The Drug Price Competition and Patent Term Restoration Act, was passed in 1984. Its purpose is to “speed up the process of Federal approval of inexpensive generic versions of many brand name drugs, make the generic versions more widely available to consumers, and grant pharmaceutical firms added incentives to develop new drugs.” The idea is that increasing generics in the marketplace will drive the prices down for the branded drugs. Before the Hatch-Waxman Act, generic producers could not begin experimentation on developing a new drug until after the expiration of a patent on the branded drug. The result was a lag of several years before any marketing could even begin for the generic drug. The first way that the Hatch-Waxman Act assists generic producers is by allowing them to submit an ANDA for a bioequivalent drug instead of repeating the entire New Drug Application (“NDA”) process. Along with the ANDA, the filer must submit a Paragraph IV certification which alleges that the listed drug’s patent is invalid or will not be infringed. The ANDA applicant must notify both the patent holder and the NDA holder that it has made this certification, accompanied by a factual and legal basis for the assertion. The NDA holder then has 45 days to review the notice and, if it so chooses, bring an infringement action. The NDA holder is able to bring a lawsuit even though no actual infringement has actually occurred.
The filing of an ANDA and a Paragraph IV certification with the FDA creates an artificial act of infringement under the Hatch-Waxman Act. This gives the NDA holder the immediate right to sue, even though the ANDA filer has not made, used, offered to sell, or sold the patented drug. It is this artificial act of infringement that will pose problems for litigants moving forward in the wake of TC Heartland.
VI. The Effect of TC Heartland on Hatch-Waxman Litigation
The decision in TC Heartland is expected to have “wide ranging implications for Hatch-Waxman cases.” The artificial act of infringement created under the Hatch-Waxman Act has become a concern for legal scholars. Defendants used to be amenable to venue wherever the ANDA holder was located, or wherever the products were intended to be sold. After TC Heartland, it is expected that many more litigants will rely on the second prong of § 1400(b) to choose a venue. The issue, now more important than ever, concerns where the artificial act of infringement occurs. Does it occur where the ANDA is filed, where the ANDA is prepared, where the applicant seeks approval to market, or something else? Further, where is the ANDA filer’s regular and established place of business? Another problem that now arises, due to the stricter venue rules, concerns where multiple defendants may be sued. Prior to TC Heartland, it was common in a Hatch-Waxman suit for all Paragraph IV filers to be sued in the same district. Since not all filers are typically located in the same place, this can prove to be much more difficult now, making cases more expensive and difficult to litigate.
Additional problems will arise, not only for the litigants, but also for the courts. Two districts in the entire country are home to more than 75% of Hatch-Waxman cases: the District of Delaware and the District of New Jersey. It is already expected that more patent litigation cases will be funneled to the District of Delaware since a large number of Fortune 500 companies are incorporated in Delaware and, now, Hatch-Waxman cases can be added to that log jam as well. Compounding the situation is the fact that there are now two vacancies on the bench in the District of Delaware. In July of 2017, Judge Sue Robinson retired, and in April of 2017, Judge Gregory Sleet took senior status. In response, Delaware has relied heavily on its magistrate judges and judges from other districts, some from the Third Circuit and some from outside the Third Circuit.
A. Bristol-Myers Squibb the First to Address the Issue
Not surprisingly, the first district to address a TC Heartland issue in the context of Hatch-Waxman was the District of Delaware, in Bristol-Myers Squibb, Co. v. Mylan Pharmaceuticals, Inc. In that case, Mylan Pharmaceuticals (“MPI”) “filed a motion to dismiss for improper venue in view of the Supreme Court’s recent decision in TC Heartland . . . .” MPI, a generic drug manufacturer, was sued by Bristol-Myers Squibb in Delaware shortly after MPI filed an ANDA to market a generic version of the drug ELIQUIS®. MPI is a West Virginia corporation with its principle place of business in West Virginia. While the court found that MPI failed to refute infringement, it held that “the record is less clear with respect to whether MPI has a regular and established place of business [in Delaware].”
As the court noted in the beginning of its analysis, it has never confronted a Hatch-Waxman case that applies the second prong of § 1400(b). This prong reads, “[a]ny civil action for patent infringement may be brought . . . where the defendant has committed acts of infringement and has a regular and established place of business.” The second prong of § 1400(b) will be used because it gives a plaintiff an opportunity to sue an infringer in a state other than where the defendant-corporation is incorporated. As noted, litigants love to sue in the Eastern District of Texas. The crux of the TC Heartland issue lies in the conflicting temporal focus of the Hatch-Waxman Act and the venue statute. The language of the Hatch-Waxman Act focuses on future acts of infringement while the patent venue statute looks at past acts. Consistent with this logic, the court concluded that “planned future acts that the ANDA filer will take in this District must be considered now in determining whether venue is proper here.” Despite the use of the past tense in the patent venue statute, these future acts of infringement “are properly considered” when evaluating § 1400(b). Thus, in conjunction with an ANDA, any non-speculative acts the applicant intends to take in the district must be considered for venue purposes. In support of this argument, Chief Judge Leonard Stark looked to Congress’s intent. In his view, it is illogical to think that Congress would not have intended the second prong of § 1400(b) to apply to Hatch-Waxman cases, or that the residence of the defendant is the sole factor for determining venue. The court seemed to hint that there are flaws to its holding when it stated that “no more persuasive conclusion has revealed itself.” The court’s statement puts its opinion on unsteady ground because it seems to suggest that there may be a more persuasive argument which the litigants failed to present.
Looking at MPI’s non-speculative acts, the court concluded that MPI “committed” acts of infringement in Delaware. MPI “intends a future course of conduct that includes acts of patent infringement in Delaware . . . . [MPI] will make, use, import, sell, and/or offer for sale the [MPI] ANDA product . . . .” Further, MPI will direct sales of the generic drug in the state of Delaware. Though these acts have not occurred yet, they are non-speculative and are proper to consider for venue purposes.
After concluding that the future infringing acts contained within the ANDA will occur in Delaware, the court turned to whether MPI has a regular and established place of business in the state. As discussed above, after TC Heartland this is likely the prong litigants will rely on, and it too poses unique problems in a Hatch-Waxman case. First, the court stated that, without more, simply doing business in a district is not enough for a regular and established place of business. Second, establishing minimum contacts in a district does not necessarily mean that the corporation has a regular and established place of business. The same goes for allowing consumers in that district to purchase products through a website. Finally, simply shipping goods into the district does not create a regular and established place of business.
As expected, there are facts to support transferring the case as well as to support leaving it in Delaware. As support for leaving the case in Delaware, MPI is part of a global Mylan family of companies which is large enough to “fill one out of every 13 prescriptions dispensed . . . .” Additionally, the Mylan family of companies owns 55 subsidiaries, 40 of which are incorporated in Delaware. Through those subsidiaries, MPI admitted that it conducted business in Delaware and that its products have been sold there. Furthermore, MPI has been a frequent litigant in the Delaware District Court. “In the past ten years, MPI has appeared in more than 100 cases in the District of Delaware.” In that span, there has always been at least one Mylan action pending in Delaware at any given time. In fact, MPI even convinced a district court in West Virginia (where it is incorporated) to transfer a Hatch-Waxman case from its state of incorporation to the District of Delaware. The court took special note that Hatch-Waxman cases are “a key to Mylan’s success in the generic drug business . . . .” The court suggested that these cases are more than “merely litigating” in a district (which is insufficient to give rise to proper venue) because MPI’s frequent Hatch-Waxman litigation in Delaware is “an integral part of its generic business.” Finally, MPI is licensed to do business in Delaware and has even “reported several promotional ‘in-kind’ payments to physicians during 2016, indicating that MPI has targeted some Delaware physicians.”
On the other hand, there are additional facts in this case to support transfer. First, MPI does not own or lease any real property in the state of Delaware. Also, it has no Delaware telephone listings or addresses. Finally, MPI does not have any employees in Delaware and made no sales in Delaware in 2016.
When presented with all of the facts, the court concluded that it was unable to determine whether MPI has a regular and established place of business in Delaware. Despite this conclusion, it did note that MPI conducts a “great deal of activity” in Delaware. Thus, even though the court determined that MPI committed acts of infringement in Delaware, the court ordered further discovery on whether or not MPI had a regular and established place of business in Delaware.
In its ruling, the court provided some guidance to the parties. For example, after additional discovery the court will consider whether MPI has any sales representatives who travel to Delaware, how the pharmaceutical industry operates in marketing and sales, and MPI’s relationship with end users and pharmacies.
B. Guidance After Bristol-Myers Squibb
While the District of Delaware did not ultimately resolve the motion in Bristol-Myers Squibb, this case provides some guidance on what courts will consider when deciding if venue is proper under the second prong of § 1400(b) for a Hatch-Waxman litigation. A first takeaway is that the court recognizes that the pharmaceutical industry operates in a unique way and the court will consider this when determining a defendant’s regular and established place of business. The court recognized that the pharmaceutical market may function differently from other markets, so it will pay close attention to “the way that the industry operates, the way that sales are made, [and how] marketing and promotions are done.” This implies that each venue challenge will be open to arguments from each party based on the relationships that the movant has established in the relevant district. This will put the pressure on litigants to fully develop the record so the court will be able to make a decision without ordering further discovery. Here, the court had ample evidence describing MPI’s involvement in the state of Delaware, including MPI’s motion to transfer into Delaware in a previous business litigation, yet the court was still unable to conclude whether MPI has a regular and established place of business in Delaware.
A second takeaway is that the future acts referenced in the ANDA and Paragraph IV certification will be considered in analysis of infringing acts under § 1400(b). Litigants are now on notice that any future plans they may have to market and sell their products in a jurisdiction will be subject to scrutiny when deciding venue questions. However, litigants may want to consider arguing that future acts should not count for venue considerations. In Bristol-Myers Squibb, the court seemed to question its own holding and recognized the faults in its reasoning. Litigants may want to explore arguments that MPI did not make if it is in their best interest. Additionally, Congress may want to get involved and amend the language of the venue statute or create a venue provision within the Hatch-Waxman Act. In view of the unique structure of Hatch-Waxman cases, it would be best for Congress to amend the Hatch-Waxman Act to create its own venue clause. This will allow Congress to consider the future infringing acts of ANDA filers in several ways. First, it will allow Congress to ultimately decide if future acts should be considered when deciding venue. Second, it may be able to craft a rule that is finely tuned toward the types of actions ANDA filers take.
Another strategy that patent infringement litigants will have to consider is consolidating cases for discovery purposes. TC Heartland will make it much more difficult to sue multiple parties in one jurisdiction. If multiple defendants are incorporated in different states, the plaintiff would have to prove that each one has committed acts of infringement and has a regular and established place of business in the selected venue. Depending upon on how the law develops post-TC Heartland, this could prove to be a difficult and expensive endeavor. In the meantime, it will be in litigants’ best interests to consolidate for discovery purposes. This will be more efficient for both the crowded dockets and the parties involved.
Ultimately, this is a brand-new problem within a niche field of law that will have to be addressed over time. Litigants must keep abreast with the law as it is sure to mold itself rapidly as venue challenges flood the courts. Whatever the outcome, it will be the aftershock from the bomb TC Heartland dropped on patent litigation strategy.
 See Daniel Nazer & Vera Ranieri, Why Do Patent Trolls Go to Texas? It’s Not for the BBQ, Electronic Frontier Foundation (July 9, 2014), https://www.eff.org/deeplinks/2014/07/why-do-patent-trolls-go-
 United States Patent and Trademark Office, Patenting by Organizations Report (Pt. B) (2015), https://www.uspto.gov/web/offices/ac/ido/oeip/taf/topo_15.htm. The most recent report offered by the USPTO lists Samsung second in patent count only to IBM. Id.
 Colleen V. Chien & Michael Risch, Recalibrating Patent Venue, 77 Md. L. Rev. 47, 50 (2017).
 See VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1580 n.18 (Fed. Cir. 1990). A corporate defendant is amenable to suit wherever it is a resident: “The [old] general venue statute defines the residence of a corporation as ‘any judicial district in which it is incorporate or licnesed to do business or is doing business'." Id.
 TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514, 1517 (2017).
 In re Cray, Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017).
 See generally Diem LLC v. BigCommerce, Inc., 2017 WL 6729907 (E.D. Tex. Dec. 28, 2017) (demonstrating that the Federal Circuit may soon further limit venue to the district where a defendant resides or has a regular and established place of business in a multi-district state, thereby further reducing the Eastern District of Texas’s reach).
 See Eli Lilly & Co. v. Medtronic, 496 U.S. 661, 676 (1990) (“The function of the paragraphs in question is to define a new (and somewhat artificial) act of infringement . . . .”); 35 U.S.C. § 271(a) (2018) (“[W]hoever without authority makes, uses, offers to sell, or sells any patented invention...infringes the paten.")
 See 28 U.S.C. § 1391(c) (2018).
 See 28 U.S.C. § 1400(b) (2018).
 See Brian L. Frye & Christopher J. Ryan Jr., Fixing Forum Selling, 25 U. Miami Bus. L. Rev. 2, 6 (2017).
 See Judicial Improvements & Access to Justice Act of 1988, Pub. L. No. 100-702, 102 Stat. 4642 (1988).
 See VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990).
 Id. at 1578.
 See Frye & Ryan Jr., supra note 11.
 Brian Howard, 2016 Fourth Quarter Litigation Update, Lex Machina at 2 (Jan. 12, 2017), https://lexmachina.com/q4-litigation-update/.
 Since 2014 more than a third of patent suits were brought in the Eastern District of Texas. See Brian J. Love & James Yoon, Predictably Expensive: A Critical Look at Patent Litigation in the Eastern District of Texas, 20 Stan. Tech. L. Rev. 1, 6 (2017).
 Howard, supra note 17.
 Love & Yoon, supra note 18, at 7.
 Samsung’s generosity has provided $50,000 in high school scholarships, a holiday celebration show, $8,000 in monitors to Marshall High School, and a field trip to its semiconductor plant in Austin. Bruce Berman, For Samsung Charity Begins at “Home,” Marshall, Texas, IP Close Up (Feb. 25, 2015), https://ipcloseup.com/2015/02/25/for-samsung-charity-begins-at-
 See Love & Yoon, supra note 18, at 13–15.
 See id. at 15.
 See id. at 18.
 Chris Barry et al., 2017 Patent Litigation Study: Change on the Horizon, PricewaterhouseCoopers, at 22 (May 2017), https://www.pwc.com/us/en/forensic-services/publications/assets/
 Id. The first overall spot goes to Delaware, a popular venue for pharmaceutical cases, which sees the second most patent suits per year; see also Howard, supra note 17.
 See TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1518; see also Judiciary Act of 1789 § 11, 1 Stat. 79 (Sept. 24, 1789).
 See TC Heartland, 137 S. Ct. at 1518.
 See id.; see also Act of Mar. 3, 1887, § 1, 24 Stat. 552.
 See TC Heartland, 137 S. Ct. at 1518.
 See id.
 Act of Mar. 3, 1897, ch. 395, 29 Stat. 695.
 Originally codified in 1948. See Act of June 25, 1948, 62. Stat. 936.
 28 USC § 1400(b) (2018).
 TC Heartland, 137 S. Ct. at 1519; see also 28 U.S.C. § 1391(c) (1952).
 See Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222 (1957).
 Id. at 228–29.
 See TC Heartland, 137 S. Ct. at 1519.
 Judicial Improvements & Access to Justice Act, § 1013(a), 102 Stat. 4669 (1988).
 VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1580 (Fed. Cir. 1990).
 See Federal Courts Jurisdiction & Venue Clarification Act of 2011, Pub. 112-63, 125 Stat. 758 (2011).
 See In re TC Heartland LLC, 821 F.3d 1338, 1343 (Fed. Cir. 2016) (holding that Fourco’s decision that section 1400(b) is the sole venue provision for patent litigations remains good law because Congress did not indicate an intention to overturn it).
 Id. at 1340.
 In re TC Heartland LLC, 821 F.3d at 1340.
 See TC Heartland, 137 S. Ct. at 1520–21 (with the exception of Justice Gorsuch who did not take part in the case).
 Id. at 1520.
 Id. at 1520–21.
 Id. at 1520–21.
 TC Heartland, 137 S. Ct. at 1521.
 Id. Compare 28 U.S.C. § 1391 (providing that this section applies to civil suits “except as otherwise provided by law”), with 28 U.S.C. § 1400(b) (containing no such language).
 See TC Heartland, 137 S. Ct. at 1521; see also Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222 (1957).
 See Fourco Glass, 353 U.S. at 228–29.
 TC Heartland, 137 S. Ct. at 1521.
 Id.; see also 28 U.S.C. § 1400(b) (2018); 28 U.S.C. § 1391(c) (2018).
 See TC Heartland, 137 S. Ct. at 1521.
 James Dabney, TC Heartland and Its Aftermath: A Litigant’s View, Law360 (September 28, 2017, 4:15 PM), https://www.law360.com/articles/966696/tc-heartland-and-its-
aftermath-a-litigant-s-view. See e.g., Navico, Inc. v. Garmin Int'l, Inc., 2017 WL 2957882, at *2 (E.D. Tex. July 11, 2017); Infogation Corp. v. HTC Corp., 2017 WL 2869717, at *4 (S.D. Cal. July 5, 2017); Amax, Inc. v. ACCO Brands Corp., 2017 WL 2818986, at *3 (D. Mass. June 29, 2017); iLife Techs., Inc. v. Nintendo of Am., Inc., 2017 WL 2778006, at *5–7 (N.D. Tex. June 27, 2017); Elbit Sys. Land & C4l Ltd. v. Hughes Network Sys., LLC, 2017 WL 2651618, at *20 (E.D. Tex. June 20, 2017); Cobalt Boats, LLC v. Sea Ray Boats, Inc., 254 F.Supp.3d 836, 839–40 (E.D. Va. June 7, 2017).
 See TC Heartland, 137 S. Ct. at 1520–21.
 See Dabney, supra note 68.
 See id.
 See id. A defendant can waive an improper venue defense by actively litigating the suit. See United States v. Ziegler Bolts & Parts Co., 111 F.3d 878, 882 (Fed. Cir. 1997). Ordinarily a change in the law can revive a defense. Beazer E., Inc. v. Mead Corp., 525 F.3d 255, 263 (3d Cir. 2008). However, because TC Heartland is not viewed as a change in the law it cannot be used to revive the defense. Koninklijke Philips N.V. v. ASUSTeK Computer Inc., 2017 WL 3055517, at *4 (D. Del. Jul. 19, 2017).
 See, e.g., Koninklijke Philips, 2017 WL 3055517.
 Id. at *1.
 Id. at *3.
 Id. at *4. Courts will often allow new arguments to be raised when there is an intervening change in the law.
 See Dabney, supra note 68. See e.g., Simpson Performance Prods., Inc. v. NecksGen, Inc., 2017 WL 3616764, at *4–5 (W.D.N.C. Aug. 23, 2017); Maxchief Invs. Ltd. v. Plastic Dev. Grp., LLC, 2017 WL 3479504, at *3–4 (E.D. Tenn. Aug. 14, 2017); Cutsforth, Inc. v. LEMM Liquidating Co., LLC, 2017 WL 3381816, at *3 (D. Minn. Aug. 4, 2017); OptoLum, Inc. v. Cree, Inc., 2017 WL 3130642, at *3–4 (D. Ariz. July 24, 2017); Westech Aerosol Corp. v. 3M Co., 2017 WL 2671297, at *2 (W.D. Wash. June 21, 2017).
 See Dabney, supra note 68.
 Betty H. Chen et al., Practical Aftermath of ‘TC Heartland’: Book Your Flights for the Coasts, The Recorder (July 20, 2017), https://www.law.com/therecorder/almID/1202793474560. The Northern District of California contains Silicon Valley and “is a hotbed for tech and biotech companies.”
 See id.
 See President Ronald Reagan, Remarks on Signing the Drug Price Competition and Patent Term Restoration Act of 1984 (Sept. 24, 1984), available at https://www.reaganlibrary.gov/research/speeches/92484b; see also HR Rep. No. 98-857(I), at *15 (1984) (The purpose of the Hatch-Waxman Act “is to create a new incentive for increased expenditures for research and development”).
 See Brendan Murphy, Getting High on Profits: An Analysis of Current State and Federal Proposals to Rein in Soaring Drug Prices, 12 J. Health & Biomed. L. 37, 44 (2016).
 See Steven J. Lee et al., International Pharmaceutical Law and Practice, chapter 19 (2016). An ANDA works by the generic company showing that it has the same active ingredient in the same dosage as the branded drug. The basic provisions state that the ANDA must show that “the conditions of the use prescribed, recommended, or suggested, have been previously approved for a drug.” See also 21 U.S.C. § 355 (2018).
 See Lee et al., supra note 87, at chapter 19.
 See id.; see also 21 U.S.C. § 355(j)(2)(B) (2018).
 See Lee et al., supra note 87, at chapter 19; see also 21 U.S.C. § 355(j)(5)(B)(iii).
 See 35 U.S.C. § 271(e)(2) (2018).
 See Emily M. Morris, The Myth of Generic Pharmaceutical Competition Under the Hatch-Waxman Act, 22 Fordham Intell. Prop. Media & Ent. L.J. 245, 264 (2012); see also Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 676 (1990) (“The function of the paragraphs in question is to define a new (and somewhat artificial) act of infringement . . . .”).
 See 4 R. Carl Moy, Moy’s Walker on Patents § 14:64 (4th ed.); see also 35 U.S.C. § 271.
 See Mark Deming, TC Heartland Considerations For Hatch-Waxman Cases, Law360 (June 23, 2017, 12:28 PM), https://www.law360.com/articles/935758/tc-heartland-consideration
 See Acorda Therapeutics Inc. v. Mylan Pharmaceuticals Inc., 817 F.3d 755 (Fed. Cir. 2016).
 See 28 U.S.C. § 1400(b) (“Any civil action for patent infringement may be brought . . . where the defendant has committed acts of infringement and has a regular and established place of business.”).
 See Nicole DeAbrantes, How Will TC Heartland Impact BPCIA and Hatch-Waxman Litigation, Lexology (July 7, 2017), https://www.lexology.com/library/detail.aspx?g=9db5ef8c-68e1-4bd
b-adac-8592d7df7a79; see also Bristol-Myers Squibb Co. v. Mylan Pharm. Inc., 2017 WL 3980155 at *11 (D. Del. Sept. 11, 2017).
 See Deming, supra note 94; see also Zeneca Ltd. v. Mylan Pharm. Inc., 173 F.3d 829, 832–34 (Fed. Cir. 1999) (the act of infringement and the regular and established place of business must coincide).
 See Deming, supra note 94.
 Karen Keller & David Fry, District of Delaware’s Bench In the Wake of TC Heartland, Law360 (Aug. 23, 2017, 11:51 AM), https://www.law360.com/articles/953718/district-of-delaware-s-
 Id. Judges from the Eastern District of Pennsylvania and the District of Nebraska are visiting judges.
 Bristol-Myers Squibb Co. v. Mylan Pharm. Inc., 2017 WL 3980155, at *6 (D. Del. Sept. 11, 2017).
 Id. at *1.
 Id. The drug ELIQUIS® is a blood thinner covered by in the Orange Book patents 6,967,208 and 9,326,945. See Electronic Orange Book, U.S. Food & Drug Administration, https://www.accessdata.fda.gov/scripts/cder/ob/search_patent.cfm (ANDA Number 202155).
 Bristol-Myers Squibb, 2017 WL 3980155, at *1.
 Id. at *6.
 28 U.S.C. § 1400(b) (2018).
 See supra Section II.
 See Bristol-Myers Squibb, 2017 WL 3980155, at *6.
 See id. at 8. The court references Acorda Therapeutics Inc. v. Mylan Pharm. Inc. to indicate that for personal jurisdiction in Hatch-Waxman cases the court must consider all future acts the ANDA filer non-speculatively intends to commit upon receiving final FDA approval for its ANDA product. 817 F.3d 755, 762 (Fed. Cir. 2016).
 Bristol-Myers Squibb, 2017 WL 3980155, at *9.
 Id. at *13.
 Id. at *10.
 Id. at *11. MPI also posited other arguments in favor of using a present act of infringement rather than the future acts. One such argument was that the act of infringement occurs where the ANDA was created, where it was submitted from, or where the “center of gravity of the work” for the ANDA’s preparation took place. The court rejected these arguments because these actions are explicitly non-infringing under the Hatch-Waxman safe harbor and it saw no reason to expand acts of infringement.
 Id. at *13.
 Bristol-Myers Squibb, 2017 WL 3980155, at *13.
 See id. at *13. But see Galderma Labs. L.P. v. Teva Pharm. USA, Inc., 290 F. Supp. 3d 599, 607–09 (N.D. Tex. Nov. 17, 2017). The Northern District of Texas used a strict textualist approach to hold that “[i]n determining proper venue in a Hatch-Waxman Act case, it is appropriate to look to the forum where the ANDA submission itself was prepared and submitted.” This court faulted the analysis of the District of Delaware because its rationale was inconsistent with the backward-looking language of the venue statute; thus, it is unnecessary to look at non-speculative acts of infringement and where the ANDA was prepared should be determinant.
 Bristol-Myers Squibb, 2017 WL 3980155, at *16 (referencing TC Heartland where the court explained in Fourco that merely doing business in a district is not enough). See TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1519 (2017).
 Bristol-Myers Squibb, 2017 WL 3980155, at *16.
 Id. at *17.
 Bristol-Myers Squibb, 2017 WL 3980155, at *18.
 Id. See Teva Pharm. USA, Inc. v. Mylan Pharm., Inc., 2017 WL 958324, at *7 (N.D. W. Va., Mar. 10, 2017).
 Bristol-Myers Squibb, 2017 WL 3980155, at *18.
 Id. at *18 n.22 (citing In re Cordis, 769 F.2d 733, 736 (Fed. Cir. 1985) (internal citation omitted)).
 Id. at *19. MPI does sell drugs in Delaware and is licensed in the state for “Pharmacy—Wholesale” and “Distributor/Manufacturer CSR.”
 Id. (noting that some physical presence is required).
 ristol-Myers SquibbB, 2017 WL 3980155, at *19.
 Id. at *21.
 See id. at *22 (denying the motion to dismiss for improper venue without prejudice).
 Id. at *21 (edit in original).
 See Bristol-Myers Squibb, 2017 WL 3980155, at *12. But see Galderma Labs. L.P. v. Teva Pharm. USA, Inc., 290 F. Supp. 3d 599, 607–09 (N.D. Tex. Nov. 17, 2017). For litigants in a jurisdiction known to employ a textualist technique, venue may be proper where the preparation of the ANDA application took place.
 Bristol-Myers Squibb, 2017 WL 3980155, at *11.
 See 28 U.S.C. § 1407 (2018) (“When civil actions involving one or more common questions of fact are pending in different districts, such actions may be transferred to any district for coordinated or consolidated pretrial proceedings.”).
 See Deming, supra note 94.
2018 Hon. William C. Conner
IP Writing Competition first PLACE Winner
William C. Conner Intellectual Property Law Writing Competition
Monday, March 4, 2019
Awards to be presented on Tuesday, May 14, 2019 at the Princeton Club of New York
during the NYIPLA Annual Meeting
First Place $1,500.00
The competition is open to students enrolled in a J.D. or LL.M. program (day or evening). The subject matter must be directed to one of the traditional subject areas of intellectual property, i.e., patents, trademarks, copyrights, trade secrets, unfair trade practices and antitrust. Entries must be submitted electronically by March 4, 2019, to the address provided below. See Rules for details on submission requirements.
Richard H. Brown
NYIPLA Conner Writing Competition Co-Chair
Day Pitney LLP
7 Times Square
New York, NY 10036-7311
Tel: +1 212.297.5854 Fax: +1 212.916.2940
In 2017, both the disparagement and scandalous clause of the Lanham Act were successfully challenged in Matal v. Tam and In re Brunetti. The Supreme Court in Matal, and the Federal Circuit in Brunetti, concluded that these clauses violated the Free Speech Clause under the First Amendment on the grounds of viewpoint discrimination and content-based restriction, respectively. These recent decisions have significant implications for those seeking to register marks with offensive terms that would traditionally be rejected, and following these decisions, there are no apparent restrictions on entities or individuals that can take advantage of these decisions. However, with respect to Brunetti, the United States Patent and Trademark Office (“USPTO”) filed a petition for certiorari on September 7, 2018, challenging the Federal Circuit’s holding that the scandalous clause was unconstitutional on First Amendment grounds. If the Supreme Court does grant cert, the decision may provide more clarity on what restrictions, if any, still exist on the registration of offensive marks. The response to the petition for certiorari is due on November 8, 2018 and will be a case to watch.
Although trademark protection has long existed under both the common law and state statues, the enactment of the Lanham Act, 15 U.S.C. § 1051 et seq., provided additional protections to individuals and businesses who applied for federal trademark registration. See Petition for Writ of Certiorari at 3, Iancu v. Brunetti (No. 18-302) (Sept. 7, 2018). The benefits conferred through federal registration of a mark include (i) constructive notice of the holder’s ownership claim to the mark; (ii) prima facie evidence of the owner’s exclusive right to use the mark in connection with the claimed goods and services; (iii) the right to use the “®” symbol with the mark; and (iv) the ability for the mark to become “incontestable” after being registered for five years, which means that the mark may only be challenged on limited grounds after five years have elapsed since registration. Id. at 4.
Excluded from these added federal protections were certain types of marks which the Lanham Act did not consider registrable. Among these restrictions, the USPTO was required to “refuse registration” of marks that “[c]onsist of or comprise immoral, deceptive, or scandalous matter.” 15 U.S.C. § 1052(a). This clause, commonly known as the scandalous clause, limits the registration of marks under the Lanham Act and was challenged by Mr. Brunetti as unconstitutional under the First Amendment’s Free Speech Clause.
Generally, when determining if a proposed trademark should be barred as immoral or scandalous, the USPTO would ask whether a “‘substantial composite of the general public’ would find the mark scandalous.” Petition for Writ of Certiorari at 5, Iancu v. Brunetti (No. 18-302) (Sept. 7, 2018) (internal citation omitted). Under this analysis, the USPTO defined “scandalous” as “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation.” Id. (internal quotation marks and citation omitted). Additionally, the USPTO could deny registration if the mark was found to be “vulgar,” i.e. “lacking in taste, indelicate, [or] morally crude.” Id. (internal quotation marks and citation omitted). In either analysis the USPTO based its determination on the contemporary beliefs of society meaning that the outcome can vary over time as the public’s attitude on what is considered scandalous or immoral evolves. In re Brunetti, Serial No. 85310960, 2014 WL 3976439 at *2 (T.T.A.B. Aug. 1, 2014) (hereinafter “TTAB Opinion”) (internal citations omitted).
While the USPTO has been implementing this rule since 1905, the recent Supreme Court decision in Matal invalidating § 1052(a)’s ban on disparaging marks has called into question the constitutionality of § 1052(a)’s ban on immoral and scandalous marks (the “scandalous provision”). See Matal v. Tam, 137 S. Ct. 1744 (2017). Similar to the issue in Matal, the question in the present Iancu v. Brunetti case is whether the scandalous provision violates the Free Speech Clause of the First Amendment. See Matal v. Tam, 137 S. Ct. 1744 (2017); Petition for Writ of Certiorari at I, Iancu v. Brunetti (No. 18-302) (Sept. 7, 2018).
The instant Iancu v. Brunetti case initially stems from the USPTO’s refusal of Mr. Brunetti’s application for federal registration of the mark “FUCT” in connection with apparel. Petition for Writ of Certiorari at 5, Iancu v. Brunetti (No. 18-302) (Sept. 7, 2018). As background, Mr. Brunetti had been using the term “fuct” with his clothing brand since 1990, and in 2011, he applied for federal registration of the mark. Id. Mr. Brunetti’s application was denied registration under § 1052(a) because the examining attorney found that the mark consisted of scandalous matter. Id.; TTAB Opinion at *1. As evidence of the mark’s scandalous nature, the examining attorney determined that the term “fuct” was a homonym for the past tense of the word “fuck.” TTAB Opinion at *1. As such, the examiner refused registration of the mark for containing a term which is commonly regarded as “vulgar, profane, and scandalous slang.” Id. (internal quotation marks omitted).
Mr. Brunetti requested reconsideration, claiming that the mark was a coined term that has no meaning outside of his brand name. Id. The examining attorney denied his request, and following the denial, Mr. Brunetti filed an appeal to the USPTO’s Trademark Trial and Appeal Board (“TTAB”) and alternatively argued that the scandalous provision violates the First Amendment. Id. The TTAB rejected Mr. Brunetti’s assertion that the mark is a coined term with no alternate meaning as incredulous and affirmed the refusal, concluding that consumers would identify the term “fuct” with the vulgar word with which it is a phonetic equivalent. Id. at *4-*6. With respect to Mr. Brunetti’s constitutionality claim, the TTAB acknowledged that it did not have the statutory authority to rule on that particular issue and noted that it was a question better suited for an Article III court. Id. at *5.
Undeterred by the TTAB’s ruling, Mr. Brunetti then appealed the TTAB’s decision to the Court of Appeals for the Federal Circuit. At the Federal Circuit, Mr. Brunetti argued (i) that the finding that his mark was vulgar was unsubstantiated and should be reversed; and (ii) in the alternative that § 1052(a)’s ban on scandalous marks was unconstitutional under the First Amendment’s Free Speech Clause. In re Brunetti, 877 F.3d 1330, 1337 (Fed. Cir. 2017). In reviewing the TTAB’s decision, the Federal Circuit agreed that the evidence did support a finding that “‘fuct is a ‘phonetic twin’ of ‘fucked,’” and was a vulgar term. Id. at 1337-38. As such, the Federal Circuit found that the TTAB did not err in concluding the mark was not registrable under § 1052(a)’s scandalous provision. Id. at 1339-40. Nevertheless, in addressing Mr. Brunetti’s constitutional challenge, the Federal Circuit held that the scandalous provision of the Lanham Act was unconstitutional under the First Amendment. Id. at 1357.
In finding the scandalous provision unconstitutional, the Federal Circuit relied on the Supreme Court’s decision in Matal, which held § 1052(a)’s ban on disparaging marks was a viewpoint restriction that violated the Free Speech Clause of the First Amendment. See e.g. Matal, 137 S. Ct. 1744, 1751 (2017). Although the Federal Circuit acknowledged that the scandalous provision involved a content-based restriction rather than a viewpoint restriction, it concluded that “the provision impermissibly discriminates based on content in violation of the First Amendment.” Brunetti, 877 F.3d at 1341.
Under First Amendment precedent “content-based statutes are presumptively invalid” and must pass strict-scrutiny review in order to be found constitutional. Id. at 1342 (internal citation omitted). The USPTO provided two main arguments for why First Amendment strict scrutiny should not be applied: first, trademark registration does not implicate the First Amendment because it is either a government subsidy program or a limited public forum; or in the alternative, trademarks are commercial speech, which only require intermediate scrutiny under the test articulated in Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557, 566 (1980). The Federal Circuit ultimately found the USPTO’s arguments unpersuasive under both the strict scrutiny and intermediate scrutiny analyses.
With respect to the USPTO’s strict scrutiny arguments, the Court held that trademark registration does not constitute a government subsidy program nor a limited public forum. See Brunetti, 877 F.3d at 1342-43 (noting that trademark registration is not a government subsidy program); id. at 1346-48 (finding that trademark registration is not a limited public forum). In ruling that strict scrutiny applies, the Court stated that while trademarks convey a commercial message, they “often have an expressive content.” Id. at 1349 (quoting Matal, 137 S. Ct. at 1760). Noting that “[s]peech may not be barred on the grounds that it expresses ideas that offend,” the Federal Circuit concluded that the scandalous provision failed strict scrutiny because “whether marks comprise immoral or scandalous subject matter hinges on the expressive, not source-identifying, nature of trademarks.” Id. at 1341, 1349; see also Matal, 137 S. Ct. at 1751.
With respect to the USPTO’s alternative argument that trademarks are commercial speech, which only require intermediate scrutiny, the Federal Circuit also found this position unconvincing. Under Central Hudson’s intermediate scrutiny test for commercial speech, the court must evaluate “whether (i) the speech concerns lawful activity and is not misleading; (ii) the asserted government interest is substantial; (iii) the regulation directly advances that government interest; and (iv) whether the regulation is ‘not more extensive than necessary to serve that interest.’” 447 U.S. 557, 566 (1980). In applying this analysis, the Federal Circuit found that while the first prong was clearly met, the USPTO failed to prove the other three prongs. Brunetti, 877 F.3d at 1350-55. Thus, the Federal Circuit concluded that the scandalous provision also failed to under intermediate scrutiny. Id. at 1355.
Having failed under both strict scrutiny and intermediate scrutiny analyses, the Federal Circuit held that the scandalous provision was facially invalid for violating the Free Speech Clause of the First Amendment. Id. at 1357. The USPTO petitioned the Federal Circuit for a rehearing en banc but was denied. In re Brunetti, No. 2015-1109 (Fed. Cir. Apr. 12, 2018) (denying petition for rehearing en banc). Following the Federal Circuit’s denial of an en banc hearing, the USPTO filed the instant Petition for Writ of Certiorari on September 7, 2018.
Question Presented to the Supreme Court
As stated in the USPTO’s Petition for Writ of Certiorari, the question presented is:
Whether Section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.
See Petition for Writ of Certiorari at I, Iancu v. Brunetti (No. 18-302) (Sept. 7, 2018).
USPTO’s Petition for Certiorari - Arguments Presented
The USPTO filed its Petition for Writ of Certiorari requesting that the Supreme Court review the Federal Circuit’s decision. The USPTO asserted three main arguments for why the Federal Circuit’s decision warrants review. First, the USPTO argued that Matal should not be viewed as controlling law because the disparagement clause at issue in Matal constituted viewpoint discrimination, which is distinguishable from the viewpoint neutral restrictions of the scandalous provision. Petition for Writ of Certiorari at 12-14, Iancu v. Brunetti (No. 18-302) (Sept. 7, 2018). In support of its position, the USPTO cited to Justice Kennedy’s concurring opinion in Matal, which noted that this decision does not present “‘the question of how other . . . provisions of the Lanham Act should be analyzed under the First Amendment.’” Id. at 14 (quoting Matal, 137 S. Ct. at 1768). Because the USPTO prohibited the registration of scandalous terms to all applicants, the USPTO claims that its content based restriction did not affect the expressive nature of trademarks, and as such should not be examined under the same analysis as Matal. Id. at 14-15.
Second, the USPTO asserted that the scandalous provision “does not prohibit any speech, proscribe any conduct, or restrict the use of any trademark.” Id. at 10. In support of this claim, the USPTO argued that federal registration is voluntary and that even without federal registration, Mr. Brunetti can use his mark to identify his goods, which he has been doing since at least 1990. Id. at 16-17. Furthermore, the USPTO noted that even without federal registration, both federal and common law remedies are still available to Mr. Brunetti to enforce his rights over the mark. Id. Accordingly, the USPTO reasoned that although the First Amendment prohibits the government from denying free speech, Mr. Brunetti cannot require the USPTO to assist him in expressing his speech through federal trademark registration. Id. at 18-19.
Third, the USPTO claimed that the Federal Circuit erred when it held that trademark registration is not a government subsidy program, a limited public forum, or commercial speech. Id. at 20-24. In reiterating its positions on these issues, the USPTO asserted that “[u]nder the proper analysis, the First Amendment does not prohibit Congress from making vulgar terms and graphic sexual images ineligible for federal trademark registration.” Id. at 10.
The USPTO concluded with a warning that if the Federal Circuit decision is not reversed, there will be no legal remedy with which the USPTO can prevent an influx of applications for highly offensive, vulgar, and/or obscene marks from being registered. See id. at 23-25.
Looking Forward: The Potential Implications
Given the similar, albeit not exact analyses used in Matal v. Tam and in In re Brunetti, it seems unlikely that the Supreme Court will grant the USPTO’s Petition for Writ of Certiorari. The elimination of restrictions with respect to scandalous marks may mean that the USPTO could see an uptick in the number of applications filed containing scandalous material and that moving forward there will not be a procedure in which these marks can be barred from federal registration. This calls into question whether all scandalous marks will be registrable, or if there are yet-to-be-determined limitations that can pass constitutional muster. One possible limitation was raised by Judge Dyk’s in his concurrence to the Federal Circuit’s Brunetti decision and would include barring registration of marks considered obscene. In his concurrence Judge Dyk specifically noted that obscene marks are not protected by the First Amendment. Brunetti, 877 F.3d at 1358-59. Therefore, this kind of analysis for obscenity rejections may become a more prominent tool for examiners looking to limit applications for federal registration of “scandalous” marks. These denials, as well as denials based on other provisions of the Lanham Act, could lead to additional challenges to those provisions. However, until courts weigh in on these potential implications of the unconstitutionality of the disparagement and scandalous clauses, the USPTO will likely be issuing updated guidance stating that federal registration is available for all scandalous marks.
Caution Explicit Content Ahead: End of the Road for the Scandalous Provision?
By: ben natter, jessica sblendorio, and kyle koemm
Recent Developments in Patent Law at the U.S. Supreme Court: Oil States, SAS Institute, and WESTERNGECO
By: charles macedo, Jung hahm, david goldberg, christopher lisiewski, and chandler sturm
On April 24, 2018, the U.S. Supreme Court (“Supreme Court”) issued its much-anticipated decisions in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute Inc. v. Iancu. The first decision reaffirms the constitutionality of inter partes review proceedings, and the second rejects current Patent Trial and Appeal Board (“PTAB”) practice to grant the partial institution of inter partes reviews as ultra vires. Accordingly, these two decisions mean that the U.S. Patent and Trademark Office’s (“PTO”) inter partes review proceedings for the reconsideration of a prior grant of a patent will continue to be available, but only with appropriate procedural adjustments.
Further, on June 22, 2018, the Supreme Court in WesternGeco LLC v. ION Geophysical Corp. held that the damages provision of 35 U.S.C. § 284 permits recovery of foreign lost profits when infringement is found under 35 U.S.C. § 271(f)(2), expanding the scope of damages under the Patent Act.
Together, this past term at the Supreme Court brought additional insight into the role of Patent Law within our administrative state and revitalized some theories related to damages law.
I. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC
In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit’s (“Federal Circuit”) judgment that inter partes review does not violate Article III or the Seventh Amendment of the U.S. Constitution. 138 S. Ct. 1365 (U.S. 2018). The decision centered on the debate over whether issued patents are a “public right” or a “private right.” The Court had previously recognized that “the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise.” Id. at 1373. Therefore, the Court held, because “inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration,” that the PTO can reevaluate the patentability of claims without violating Article III. Id. The 7-2 majority opinion of the Court was written by Justice Thomas and joined by Justices Kennedy, Ginsburg, Breyer, Alito, Sotomayor and Kagan. Justice Gorsuch filed a dissenting opinion, in which Chief Justice Roberts joined.
A. Question Presented
The Supreme Court accepted certiorari on the question of “whether inter partes review—an adversarial process used by the Patent and Trademark Office . . . to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” See Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 137 S. Ct. 2239 (U.S. 2018).
The Leahy-Smith America Invents Act of 2012 (“AIA”) established a process called inter partes review (“IPR”) by which the PTO may reconsider and cancel wrongly issued patent claims. The procedure may only be commenced by a third-party petitioner and not by the owner of the patent at issue. 35 U.S.C. § 311(a). The petitioner may file a petition with the PTO seeking cancellation of claims as obvious or anticipated. 35 U.S.C. § 311(b). If there is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged,” and review is granted, the PTAB will examine the patent’s validity. 35 U.S.C. §§ 314, 316. Unless the proceeding is settled or dismissed, the PTAB must issue a final written decision, confirming or canceling patent claims. 35 U.S.C. § 318. The decision is subject to judicial review by the Federal Circuit. 35 U.S.C. § 319.
In the IPR proceeding below, the PTAB issued a final written decision holding the challenged claims of the patent owned by Oil States Energy Services, LLC (“Oil States”) to be unpatentable. 138 S. Ct. at 1372. In appealing from the PTAB’s decision, Oil States challenged the constitutionality of IPR, arguing that “actions to revoke a patent must be tried in an Article III court before a jury.” Id. The Federal Circuit affirmed the PTAB’s decision because it had already rejected such constitutional arguments in MCM Portfolio LLC v Hewlett-Packard Co. 812 F.3d 1284 (Fed. Cir. 2015). The Supreme Court granted certiorari to determine whether IPR violates Article III or the Seventh Amendment of the U.S. Constitution and concluded that it violates neither. 138 S. Ct. at 1379.
In reaching its decision, the Court focused on whether issued patents are a “public right” or a “private right.” The Court’s “precedents have distinguished between ‘public rights’ and ‘private rights’” when determining whether a proceeding should involve an “exercise of Article III judicial power.” Id. at 1373. These precedents have given Congress the power “to assign adjudication of public rights,” as opposed to private rights, to decision-making entities other than Article III federal courts. Id.
Since the grant of a patent has been recognized as a “matter involving public rights,” and because “inter partes review involves the same basic matter as the grant of a patent,” the Supreme Court determined that “[i]nter partes review falls squarely within the public rights doctrine.” Id. at 1373-74. Specifically, the Court explained that:
This Court has recognized, and the parties do not dispute, that the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration. Thus, the PTO can do so without violating Article III.
Id. at 1373.
Citing Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131, 2144 (U.S. 2016), the Court reaffirmed that IPRs are merely a “second look at an earlier administrative grant of a patent,” because “[t]he Board considers the same statutory requirements that the PTO considered when granting the patent.” Id. at 1374. Considering these same statutory requirements prevents the “issuance of patents whose effects are to remove existent knowledge from public domain.” Id. Similar to the initial review of a patent application:
[T]he Board’s inter partes review protects “the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope,” Cuozzo. Thus, inter partes review involves the same interests as the determination to grant a patent in the first instance. Id. (citations omitted).
It “does not make a difference” that IPR occurs after the issue of a patent. Id. In fact, the grant of a patent claim is subject to the qualification that the PTO has the authority to reexamine, and potentially cancel, the patent claim in IPR. Id. Thus, patents remain subject to the PTAB’s authority even after the issue of the patent. Id.
Next, the Court determined that the prior decisions cited by Oil States that recognize patent rights as the “private property of the patentee” do not contradict the conclusion that IPR does not violate Article III. Id. at 1375. The Court noted that those precedents were decided under the Patent Act of 1870, which did not provide for any post-issuance administrative review, and held that “[t]hose precedents . . . are best read as a description of the statutory scheme that existed at that time.” Id. at 1376.
The Court also held that, contrary to the contention by Oil States and the dissent, “history does not establish that patent validity is a matter that, ‘from its nature,’ must be decided by a court.” Id. (citation omitted). The Court explained:
Historical practice is not decisive here because matters governed by the public rights doctrine “from their nature” can be resolved in multiple ways: Congress can “reserve to itself the power to decide,” “delegate that power to executive officers,” or “commit it to judicial tribunals.” That Congress chose the courts in the past does not foreclose its choice of the PTO today. Id. at 1378 (citation omitted).
In addition, the Court rejected Oil States’s argument that IPR violates Article III based on the similarities between the various procedures used in IPR and typical court procedures, noting that:
[T]his Court has never adopted a “looks like” test to determine if an adjudication has improperly occurred outside of an Article III court. The fact that an agency uses court-like procedures does not necessarily mean it is exercising the judicial power.
Id. (citation omitted).
Finally, the Court determined that IPR does not violate the Seventh Amendment, because “when Congress properly assigns a matter to adjudication in a non-Article III tribunal, the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder.” Id. at 1379 (citations and internal quotation marks omitted).
Emphasizing the narrowness of its holding, the Court noted that its decision only addresses the constitutionality of IPR and that it does not consider “whether inter partes review would be constitutional without any sort of intervention by a court at any stage of the proceedings.” Id. (citation and internal quotation marks omitted). The Court also explained that “Oil States does not challenge the retroactive application of inter partes review, even though that procedure was not in place when its patent issued.” Id. Finally, the Court cautioned against misconstruing its decision “as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.” Id. (citations omitted).
Justice Breyer, joined by Justices Ginsberg and Sotomayor, concurred, emphasizing that the Court’s conclusion does not necessarily bar private rights from being adjudicated in anything other than by Article III courts. Id. (Breyer, J., concurring).
Justice Gorsuch’s dissenting opinion, joined by Chief Justice Roberts, analogized a patent to a “personal right-no less than a home or a farm,” and argued that patent rights should be adjudicated by Article III courts. Id. at 1380 (Gorsuch, J., dissenting). According to the dissent, patentees can only be divested of patent rights by Article III judges. Id. Disputing the Court’s equation of grant and revocation, the dissent argued that just because one gives a gift, such as a patent, does not mean that one can forever enjoy the right to reclaim it. Id. at 1385. Such a stance, they viewed, is “a retreat from Article III’s guarantees.” Id. at 1386.
I. SAS Institute Inc. v. Iancu
On the same day that the Oil States decision was issued, the Supreme Court also issued a 5-4 opinion in SAS Institute Inc. v. Iancu that reversed the decision of the Federal Circuit and held that “the petitioner in an inter partes review is entitled to a decision on all the claims it has challenged.” 138 S. Ct. 1348, 1358 (U.S. 2018).
The majority opinion, written by Justice Gorsuch and joined by Chief Justice Roberts and Justices Kennedy, Thomas and Alito, concluded that 35 U.S.C. § 318(a) provides a “clear” answer, because “any” in this statutory provision means “every.” Id. at 1353. The decision focuses heavily on the plain language of the statute and determined that “everything in the statute before [the Court] confirms that [petitioner] is entitled to a final written decision addressing all of the claims it has challenged and nothing suggests [that the Court] lack[s] the power to say so[.]” Id. at 1360.
A. Question Presented
The Supreme Court granted certiorari on the question: “Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review ‘shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,’ require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?” SAS Institute Inc. v. Lee, 137 S. Ct. 2160 (U.S. 2017).
By way of background, this case began when SAS Institute Inc. (“SAS”) petitioned for IPR of ComplementSoft, LLC’s (“ComplementSoft”) software patent. Id. at 1353. In its petition, SAS alleged that all 16 of the patent’s claims were unpatentable. The PTAB concluded that SAS likely would succeed with respect to at least one of the claims and that an IPR was warranted. However, the PTAB did not institute review on all of the challenged claims in the petition, and instead, only instituted review on some of the claims while denying review on the rest. The final written decision ultimately issued by the PTAB did not address those claims on which the PTAB refused to institute review. SAS, 138 S. Ct. at 1354.
SAS appealed to the Federal Circuit, arguing that 35 U.S.C. § 318(a) required the PTAB to decide the patentability of every claim a petitioner challenges in its petition, not just some. Id.
The relevant statute addressed by the SAS Court, as applied to IPRs, provides:
(a) Final Written Decision—
If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).
35 U.S.C. § 318(a) (emphasis added).
The Federal Circuit rejected SAS’s argument and the Supreme Court granted certiorari to decide the question for itself. SAS, 137 S. Ct. at 2160.
The majority of the Court found that the plain language of the text of 35 U.S.C. § 318(a) “supplies a ready answer.” SAS, 138 S. Ct. at 1354. In particular, the Court focused on interpretation of the terms “shall” and “any” in the statute. While “shall” tends to “impose a nondiscretionary duty,” the “any” carries a more “expansive meaning.” Id. Therefore, the Court determined that the statute requires that “the Board must address every claim the petitioner has challenged.” Id. (emphasis added).
In reaching the decision, the Court rejected the notion that the Director of the Patent Office (“Director”) retains a discretionary “partial institution” power since such power does not appear anywhere in the statute. Instead, the Court explained:
Much as in the civil litigation system it mimics, in an inter partes review the petitioner is master of its complaint and normally entitled to judgment on all of the claims it raises, not just those the decisionmaker might wish to address.
Id. at 1355.
In this connection, the Court observed that “[f]rom the outset, we see that Congress chose to structure a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” Id.
35 U.S.C. § 314(a) provides that the Director may not institute an IPR unless “there is a reasonable likelihood” that the petitioner will prevail on at least one of the challenged claims. Id. at 1356. However, the Court rejected the Director’s argument that the this statutory provision on institution of inter partes review supports the Director’s “partial institution” power because, “while § 314(a) invests the Director with discretion on the question whether to institute review, it doesn’t follow that the statute affords him discretion regarding what claims that review will encompass.” Id.
The Director also argued that because language of the statute requires him to “evaluate claims individually,” it, therefore, allows him to institute review on a claim-by-claim basis. However, the Court reasoned:
Section 314(a) . . . simply requires [the Director] to decide whether the petitioner is likely to succeed on “at least 1” claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review. Rather than contemplate claim-by-claim institution, then, the language anticipates a regime where a reasonable prospect of success on a single claim justifies review of all.
Id. at 1356.
The Director’s argument that the statute is ambiguous on the propriety of the partial institution practice was flatly denied. “[A]fter applying traditional tools of interpretation here, we are left with no uncertainty that could warrant deference” to the Director’s interpretation under Chevron USA Inc. v Natural Resources Defense Council, Inc., 467 US 837 (1984). Id. at 1538. “There is no room in this [statutory] scheme for a wholly unmentioned ‘partial institution’ power that lets the Director select only some challenged claims for decision.” Id.
The Court also rejected the Director’s argument that judicial review of the question of whether the partial institution practice is permitted under the statute is itself foreclosed by 35 U.S.C. § 314(d) and previous Supreme Court precedent in Cuozzo. The Court determined that the Director “overread both the statute and [the Court’s] precedent,” and held that judicial review remains available to determine whether the Director exceeded his statutory authority by limiting IPR to fewer than all of the claims the petitioner challenged. Id. at 1360.
Finally, the Court rejected the Director’s policy argument on the efficiency of partial institution, noting that “[p]olicy arguments are properly addressed to Congress, not this Court.” Id. at 1358.
Ultimately, the Court decided that “everything in the statute before [the Court] confirms that [petitioner] is entitled to a final written decision addressing all of the claims it has challenged and nothing suggests [that the Court] lack[s] the power to say so[.]” Id. at 1360.
D. Dissenting Opinions
In a dissent, Justice Ginsburg described the majority’s reading of the statute as “wooden” and lacking of any true understanding of congressional intent. Id. at 1360 (Ginsberg, J., dissenting). Justice Ginsburg also fully supported Justice Breyer’s dissenting opinion.
In his separate dissent, Justice Breyer argued that the statute is ambiguous and that the PTO’s interpretation is reasonable. His dissent observes that, under Chevron, an agency is granted leeway to enact rules that are reasonable in light of the text, nature, and purpose of an ambiguous statute. Id. at 1364 (Breyer, J., dissenting). He explained that, “there is a gap, the agency possesses gap-filling authority, and it filled the gap with a regulation that . . . is a reasonable exercise of that authority.” Id. at 1365.
E. The PTO’s Response to the SAS Decision
On April 26, 2018, just two days after the SAS decision, the PTAB issued guidance on the effects the Supreme Court’s decision would have on the IPR process and other AIA proceedings.
The PTAB’s new guidelines clarify that from April 26 on, “[a]s required by the decision, the PTAB will institute as to all claims or none,” and if a trial is instituted, the PTAB will institute on “all challenges raised in the petition,” Memorandum from the Patent Trial and Appeal Board on Guidance on the Impact of SAS on AIA Proceedings (Apr. 26, 2018), https://www.uspto.gov/patents-application-
guidance-impact-sas-aia-trial (emphasis added). In other words, a petition will either be granted in its entirety, or denied in its entirety. Id.
For cases in which the PTAB has already instituted an IPR on only some (but not all) of the challenges raised in the petition, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.” Id. The PTAB panel may then take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding. Id.
Finally, the new guidelines specify that “upon receipt of an order supplementing the institution decision, the petitioner and patent owner shall meet and confer to discuss the need for additional briefing and/or any other adjustments to the schedule. While the Board may act sua sponte in some cases, additional briefing and schedule adjustments might not be ordered if not requested by the parties.” Id. (emphasis added). The parties may agree to affirmatively waive additional briefing or schedule changes,” and contact the Board to discuss any request. Id. (emphasis added).
As for the scope of the final written decision, it “will address, to the extent claims are still pending at the time of decision, all patent claims challenged by the petitioner and all new claims added through the amendment process.” Id.
Concurrent with the issued guidance, the PTAB designated as informative its order in Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00082, Paper 11 (PTAB Apr. 25, 2018). In this case, IPR was instituted on all of four grounds against 11 claims presented in the petition, even though only two grounds against two claims met the reasonable likelihood threshold.
Additionally, as a sample order supplementing an institution decision, Emerson Elec. Co. v. IPCO, LLC, IPR2017-00213, Paper 41 (PTAB Apr. 26, 2018), was recognized as being informative for amending the institution decision to include review of all claims and all grounds presented in the petition, and to asking whether the parties desire any changes to the schedule or additional briefing.
Lastly, SK Hynix Inc. v. Netlist, Inc., IPR2017-00548, Paper 25 at 16 (PTAB May 3, 2018), was recognized as being a sample post-SAS final written decision. The final written decision addressed only the instituted grounds (two out of five grounds presented in the petition), but authorized the parties to file a rehearing request “[t]o the extent either Patent Owner or Petitioner believes that the Court’s decision in SAS Institute requires additional consideration in this proceeding.” Id.
III. WesternGeco LLC v. ION Geophysical Corp.
On June 22, 2018, the Supreme Court in WesternGeco LLC v. ION Geophysical Corp. reversed the Federal Circuit’s decision, and held in a 7-2 decision that a patent owner can collect lost foreign profits. 138 S. Ct. 2129 (U.S. 2018).
The majority opinion authored by Justice Thomas, joined by Chief Justice Roberts and Justices Kennedy, Ginsburg, Alito, Sotomayor and Kagan, confirmed that the presumption against extraterritoriality does not preclude patent owners from recovering lost profits that arise from infringement resulting from conduct outside of the United States. The majority opinion concentrated on “the focus” of the statute, and whether that “focus” can be said to have occurred domestically. Id. at 2137-38.
A. Question Presented
WesternGeco addressed an important question regarding whether a patent owner can recover damages for a defendant’s activities outside the United States. Specifically, the Supreme Court granted certiorari on the question of “whether the court of appeals erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f).” See WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 734 (U.S. 2018).
WesternGeco LLC (“WesternGeco”) owns patents for a system used to scan the ocean floor for oil and gas deposits. WesternGeco, 138 S. Ct. at 2135. ION Geophysical Corp. (“ION”) began selling a competing system that was built from components manufactured in the United States. Id. The components were shipped by ION to companies abroad, which then assembled the components to create a system that is indistinguishable from—and competes with—that of WesternGeco. Id.
WesternGeco brought suit against ION alleging patent infringement under 35 U.S.C. § 271(f)(2) of the Patent Act, thereby arguing its entitlement to damages to compensate for infringement under 35 U.S.C. § 284. Id.
The United States District Court for the Southern District of Texas found ION liable for infringement, and awarded WesternGeco $93.4 million in damages. Id.
ION appealed to the Federal Circuit, arguing that WesternGeco could not recover damages for lost profits because § 271(f) does not apply extraterritorially. Because it had previously held that the general infringement provision, § 271(a), does not allow patent owners to recover for lost foreign sales, the Federal Circuit reasoned that § 271(f) should be interpreted in the same way. Id. Therefore, the Federal Circuit held that WesternGeco was not entitled to damages for lost foreign profits. Id.
WesternGeco petitioned for review in the Supreme Court, which granted certiorari on the question of whether the general damages provision, 35 U.S.C. § 284, permits recovery of foreign lost profits for infringement under 35 U.S.C. § 271(f)(2). Id. at 2135-36.
Reversing the decision of the Federal Circuit below, the Supreme Court concluded that WesternGeco’s award for lost foreign profits attributable to domestic acts of infringement under 35 USC § 271(f)(2) was a permissible domestic application of § 284. Id. at 2139. The Court determined that the “focus” of § 284 was “infringement,” and that the infringement at issue —namely the supplying of components—was domestic. Id. at 2138.
Because Congress is said to generally legislate with domestic concerns in mind, and to prevent dispute between our laws and those of other nations, the presumption of the Courts is that federal statutes only “apply only within the territorial jurisdiction of the United States.” Id. at 2136.
The Supreme Court has established a two-step framework for determining questions of extraterritoriality. Id. First, a court asks “whether the presumption against extraterritoriality has been rebutted.” Id. To be considered rebutted, the text must provide a “clear indication of an extraterritorial application.” Id. If the presumption against extraterritoriality has not been rebutted, the second step is to ask “whether the case involves a domestic application of the statute.” Id. This determination is made by identifying the “focus” of the statute, and asking “whether the conduct relevant to that focus occurred in the United States territory.” Id. If the answer to this question is in the affirmative, then the case involves a permissible domestic application of the statute. Id.
While it is preferable to begin the analysis at step one, courts have discretion to begin with step two in “appropriate cases,” where addressing step one would require resolving “difficult questions” that do not change “the outcome of the case” but could have far-reaching effects in future cases. Id. In this case, the Court decided to exercise the discretion to begin with step two. Id. at 2136-37.
In determining whether the case involves domestic applications of the statutes, the second step requires consideration of the “focus” of the statutes. Id. at 1237. The Court explained, the “‘focus’ of a statute is the ‘objec[t] of [its] solicitude,’ which can include the conduct it ‘seeks to regulate,’ as well as the parties and interests it ‘seeks to protect[t]’ or vindicate.’” Id. The case involves permissible domestic application of the statute if the conduct relevant to the statute’s focus occurred in the United States. However, regardless of any other conduct that occurred within the United States, if the relevant conduct occurs in another country, the extraterritorial application of the statute is impermissible. Id.
Applying the above principles to the statutes at issue in the case at hand, the Court concluded that the conduct relevant to the statutory focus in the case was domestic. Id. 35 U.S.C. § 284 provides a general damages remedy for various types of patent infringement, stating that “the court shall award the claimant damages adequate to compensate for the infringement.” Id. The Court concluded that the focus of this statute was “the infringement,” as its main purpose is to “affor[d] patent owners complete compensation” for infringement. Id.
The Court rejected ION’s arguments that the focus of § 284 was on the award of damages, reasoning that while the statute authorizes damages, “the damages themselves are merely the means by which the statute achieves its end of remedying infringements.” Id. at 2138.
However, the observation that “infringement” is the focus of § 284 is not enough to “fully resolve this case.” Id. at 1237. To determine the focus of the statute in a specific case, a court looks to the type of infringement that occurred. Id. In this case, the Court turned to 35 U.S.C. § 271(f)(2), which was the basis for WesternGeco’s infringement claim and the lost-profits damages it received. Id.
The Court determined that § 271(f)(2) focuses on domestic conduct, as it regulates the domestic act of “supplying” in or from the United States. Id. The statute “protects against domestic entities who export components from the United States,” because it provides:
[A] company “shall be liable as an infringer” if it “supplies” certain components of a patented invention “in or from the United States” with the intent that they “will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.”
Id. at 2137-38.
ION’s assertion that the case involves an extraterritorial application of § 284 because the lost-profits damages occurred extraterritorially, and because foreign conduct subsequent to ION’s infringement was necessary to give rise to the injury, was rejected. Id. The Court reasoned that the foreign events were merely incidental to the infringement that occurred when ION supplied the components from the United States. Id.
The Court concluded that the focus of § 284 in a case involving infringement under § 271(f)(2) is on the act of exporting components from the United States. Because it was ION’s domestic act of supplying the components that infringed WesternGeco’s patent, the award of lost foreign profits damages to WesternGeco was a proper domestic application of § 284. Id. at 2139.
In a dissenting opinion, Justice Gorsuch, joined by Justice Breyer, agreed that “WesternGeco’s lost profits claim does not offend the judicially created presumption against the extraterritorial application of statutes.” Id. (Gorsuch, J., dissenting). However, they argued that the Patent Act does not permit damages awards for lost foreign profits, no matter the presumption against extraterritoriality. Id. The dissent reasoned that a U.S. patent provides a lawful monopoly over the manufacture, use and sale of an invention only within the United States, therefore, foreign conduct is not infringement and cannot provide a basis for awarding compensation. Id.
The dissent further expressed concern that permitting damages for lost foreign sales under U.S. patent law would encourage other countries to use their own patent laws to exert control over the U.S. economy. Id.
The dissenting opinion concluded that, by assuming a patent owner can recover any lost foreign profit, the Court’s majority opinion allows U.S. patent owners to extend their patent monopolies beyond what Congress had authorized under the Patent Act, and shields them from foreign competition. Id. at 2144.
In these three key decisions, the Supreme Court has confirmed the constitutionality of IPRs, rejected current PTAB practice to grant partial institutions as ultra vires, and permitted the recovery of foreign lost profits.
What Keeps In-House Counsel Up At Night?
By: dyan finguerra-ducharme
To prepare for the panel presentation What Keeps In-House Counsel Up At Night?, we sent a survey to a few dozen in-house attorneys inquiring about the most challenging aspects of their jobs. Their responses not only illuminated the difficulties they face, but also the ways outside counsel can help make their work easier. Most of the respondents have been in-house for over seven years, though several others have been in-house for at least four.
Below is a summary of our survey findings, followed by a list of key issues and pitfalls in-house counsel must be mindful of in their jobs.
Generally speaking, what has been the most stressful part of the job? A bad legal decision? A PR nightmare?
·Launching a new company name for a global company and dealing with the attendant oppositions/potential litigations surrounding same.
·Finding out that something bad has been going on for a long time and I had no idea and now it’s very bad.
·The possibility of both - bad court decisions and bad press - especially bad press involving senior executives.
·Launching a brand without proper clearance and/or getting sued.
·Internal HR issues.
·Unreasonable client deadlines which they could have told us about a long time ago.
·Clients who don't listen to advice when the better course of action is easy to appreciate.
·Clients who waste energy examining issues and decisions that don't merit so much attention.
·Overall volume of work and competing high priorities.
·Compliance in the age of cybersecurity and data privacy combined with evolution of consumer engagement, marketing and PR practices.
·The volume of matters handled by this one position - something is bound to fall through the cracks. And yes, a bad court decision.
Are you often asked to opine on matters outside of your core discipline? If so, how do you approach getting up to speed on the issue?
·Yes, some of it is common sense or commonly known among in house counsel but I also reach out to outside counsel as needed.
·All the time – I figure it out.
·Networking, reading articles, going to CLEs, calling outside counsel, Google JD.
·Yes. If there is a relevant expert in-house, I try to refer the question to or get an answer from that person. I also try searching online, and consulting outside counsel.
·Relying on external counsels or other in-house counsels who are experts in that new field.
·Yes, ask a friend, Google, then external counsel if really necessary.
·Once in a while. If it's an area I might be able to understand, I do some limited research (internet search, law firm articles, publicly available law if possible, Westlaw if really needed), and give an answer based on the limited research with the qualification that I don't know the area, but it seems like X, and if you want a more qualified review it will cost X and take some time to use outside counsel. If it's an area I have no clue about, I ask around with other attorneys in the organization, and then maybe look for outside counsel.
·Routinely. I search for info on the Internet and/or PLI or Westlaw. If I can make a connection with someone with relevant expertise, all the better.
·Relatively often; usually a quick prep suffices for initial inquiries - a variety of resources available online
·Not too often. If so, then we conduct research (legal research tools, Google, etc.) and/or consult outside counsel.
How do you approach explaining complicated legal matters to non-lawyers?
·Step by step. Visuals also help. Explain the rationale of why the laws are like that...or why I think the laws are like that.
·I like to meet with the people in person or on the phone if possible to go over things and then follow up with a short email confirming what we discussed. In cases such as likelihood of confusion, I bring up well known cases or appeal to the non-lawyers' sense of fairness.
·I use plain English and keep things simple -- boil things down to the key points (3 or so) relevant to the decision the non-lawyer needs to make.
·Keep legalese to a minimum and use examples.
·You have to be able to write a brief executive summary to capture the issue and solution.
·Try to think how could it be explained to a someone on a jury.
·Pictures and simple language.
·Identify audience and tailor my response to their preferred communications. By default, non-lawyers like short bulleted lists with quick overviews. If it seems particularly complicated with too many caveats, I might schedule a meeting to discuss in person.
·I work for a foreign corporation so we have to use short sentences, simple words, PowerPoint, examples, etc.
What one thing do you value most in your outside counsel? How do they help you make your life easier?
·Knowing our business and our risk tolerance but providing practical advice. Can shut some things down quicker with outside counsel and also can have them handle something that maybe I could do but I don't have time for.
·Gut checks. Capped bills.
·Quick informal responses with actionable tweaks...as opposed to being too conservative and not giving me actual advice.
·Efficient execution of thoughtful strategies that we're aligned on. They make my life easier by helping me meet my goals.
·Sometimes it's just as simple as getting a 2nd opinion that confirms your initial "gut reaction" - can then use external counsel opinion as further leverage to convince business.
·Mutual trust. When it works it’s brilliant, they can turn paperwork faster than we can, they reinforce our position.
·Not really one thing. Combination of accuracy, honesty, responsiveness, and being practical.
·Understanding our business and risk appetite and giving actionable advice/analysis that we can actually use, not just what the law says.
·Responsiveness and whether advice is practical for the business.
·Responsiveness (it shocks me how fast my main outside counsel is sometimes) and practical advice.
· In a busy legal department, it doesn't help to have long-winding theoretical solutions.
What do outside counsel do that drives you crazy?
·Nothing really - I think anytime there is an issue, it is because I wasn't clear with what I was looking for. Making sure everyone understands the expected work product is key.
·Run up the bill.
·Not answering my questions.
·Not being responsive, being late, or not planning ahead so that everything is a last minute rush.
·I don't need a memo - short and sweet is always better. With so many matters to juggle daily, I don't have time to read an extensive memo. Also, when giving chances of success, don't give me 50% - take a side even if it's 49% or 51%.
·Not bill in accordance with our billing requirements.
·Lie about time spent on the file. Padding the bill.
·Send huge files that I cannot access on my phone.
·Not give clear answers. I'm fine if the answer is "it depends," but at least say so and explain it.
·Giving impractical answers.
·Failing to return calls or emails timely.
·Thinking they understand our business better than I do.
·Lengthy assessments without a practical recommendation; strongly recommending impractical advice that ends up taking me down a path I expressly stated I did not want to get into - essentially costing money to get me exactly where I did not want to be and still not actually resolving the heart of the issue.
·Double bill on invoices - charge for reading the policies and procedures manual for OC; lack of responsiveness.
What do you find most rewarding about the job?
·Helping a marketing team find a name that works for them and is a reasonably likely to be clear for use and registration.
·Being a partner with the business.
·The integrity of the company and my colleagues make me proud of the work I do.
·Variety of issues and unpredictability of most days.
·Seeing a fair solution to disputes.
·Making a difference to the business.
·Variety of work, not having to work weekends, and not having to bill hours.
·Driving my company’s mission forward. Adding value to my business colleagues all across the company.
·Never a dull day.
·The variety and complexity of IP issues that we handle.
What advice would you give someone going in-house for the first time?
·No is not a good answer nor is "it's a business decision." Own your advice and find ways to help the marketing and other teams reach their goals. And, don't call them "clients" or "the business," you are part of the business as well. Finally, don't write really long emails if you want people to read your emails; instead, conclusions and short advice up front and bullet points.
·Add value...don't just say "no."
·Network with your colleagues and work to gain an understanding of the business.
·Learn the business so you can speak their jargon and understand better where the business is coming from.
·It’s a long game. Learn the business.
·Be prepared to give short direct advice.
·Learn to manage risk.
·Spend a while learning your company, the personalities you need to work with, the legal situation of its industry, and practical implications of your advice before trying to make any waves.
·Have patience and don't rock the boat too much once you get on it, or you may never leave the harbor. You'll learn a lot over time and can easily alienate people early by being brash.
·Build relationships all across the business and learn as much as you can about priorities, goals and risk tolerance to counsel most effectively.
·Be comfortable living with imperfection and some level of risks.
·I was lucky to find someone who had been at my company for many years, and could steer me the right way in terms of institutional knowledge and corporate culture, etc. Try to seek out those precious sources of knowledge.
Other Issues Specific to Practicing In-House and Pitfalls to Avoid
·In-house counsel should make sure he or she is properly licensed. In-house lawyers have been suspended for not renewing law licenses. See, e.g., Disciplinary Counsel v. Fhury, 151 Ohio St.3d 549, 2017-Ohio-8813. In other cases, courts have found that there is no attorney-client privilege because the in-house counsel was not licensed and, therefore, not an “attorney.” See, e.g., Anwar v. Fairfield Greenwich Ltd., 982 F. Supp.2d 260 (S.D.N.Y. 2013).
·Do not disclose confidential information! Former in-house lawyer was justified in disclosing confidential corporate information about alleged fraud by company in whistleblower complaints but she violated professional ethic rules by leaking the same documents to the press. In the Matter of Koeck et al, Board Docket No. 14-BD-061 (D.C.A. Board of Professional Responsibility Jan. 11, 2017).
·Litigants may be sanctioned if in-house counsel does not take active steps to preserve evidence and oversee that process by the business. See Harkabi v. SanDisk Corp., 275 F.R.D. 414 (S.D.N.Y. 2010).
·In-house counsel may engage in multijurisdictional practice under a safe harbor provision of ABA Model Rule 5.5(d); see also Comment  to Model Rule 5.5.
·In-house lawyers may be disqualified under certain circumstances. In Dynamic 3D Geosolutions LLC v. Schlumberger Ltd, 837 F.3d 1280 (Fed. Cir. 2016), CAFC affirmed a district court’s disqualification of in-house counsel and outside counsel due to a conflict of interest arising from an in-house lawyer’s work for her new company in a patent infringement suit against her former company in a substantially related matter involving communication of her former company’s confidential information to other in-house counsel and outside counsel.
Summer-Fall IP Media Links :
IP is (not?) child's plAY
By: Jayson L. Cohen
As many parents (and their kids) are aware, a mass, bittersweet phenomenon occurred in Spring 2018 as Toys ’R’ Us stores across the nation closed out their inventories at deep discounts and shuttered their doors, seemingly for good. There was meant to be a bankruptcy auction of the brand name and other Toys ’R’ Us IP rights and assets. But, to borrow Billy Crystal’s famous line from the movie adaptation of The Princess Bride, apparently Toys ’R’ Us was “only mostly dead.” In an October 2, 2018 article for Reuters, Soundarya J and Siddharth Cavale reported that “Toys ’R’ Us lenders cancel auction, plan to revive brand.” The lenders will attempt to revive the “Toys ’R’ Us” and “Babies ’R’´Us” brand names through a new “branding company that maintains existing global license agreements and can invest and develop new retail shops.” The lenders apparently also have bigger plans for the brands internationally and privately. Parents, stay tuned for the (possible) return of Toys ’R’ Us and Geoffrey the Giraffe. (LINK)
In July 2018, KitKat was in the mainstream news. Megan Dollar and Alastair Macdonald reported on the long-running European trademark war between Nestle and Mondelez over the shape of KitKat. According to the Reuters article, the European Court of Justice in Luxembourg found that “Nestle had failed to show if consumers in enough EU countries recognized the shape as distinctive,” but the ruling was sent back to the EU Intellectual Property Office (EUIPO) for review and left open the possibility that Nestle could show the EUIPO “new proof [that] the shape is distinctive to people in more countries — and might preserve protection for KitKat’s shape.” Apparently the KitKat war is being watched by trademark lawyers because it relates to a company’s ability to trademark aspects of a product in the single EU market despite different experiences and histories for that product in the constituent national markets. The article also ties KitKat to Brexit issues, “with some supporters of [the UK] cutting ties with the EU suggesting that EU courts have failed to defend a much loved British treat first marketed by Rowntree.” (Rowntree was acquired by Nestle in that late 1980s.) (LINK) see also (LINK 2)
Matthew Townsend suggested in a Bloomberg article that Amazon is set to “roll out more clothing brands, part of its bid to become a bigger fashion destination.” His September article entitled, “Amazon’s Trademark Applications Hint at More Fashion,” focused on Amazon’s recent trademark filings for apparel lines “aimed at outerwear and children’s gear,” including the “League of Outstanding Kids” and “Zanie Kids.” (LINK)
Speaking of brands and their protection, there are few brands as powerful (still) among kids as Harry Potter, now over twenty-years old. The Associated Press reported on September 8, 2018, that “‘Harry Potter’ author J.K. Rowling wins copyright claim.” Rowling and Warner Brothers secured a copyright infringement ruling and permanent injunction to block the publication of material from fan Vander Ark’s “Harry Potter Lexicon Website” by Michigan publisher RDR Books. The article states that “[t]hough Rowling had once praised the Web site, she testified earlier this year that the lexicon was nothing more than a rearrangement of her material.” The Judge found that the proposed publication was not a mere reference guide or companion book that might have qualified as fair use, but rather “‘appropriates too much of Rowling’s creative work for its purposes as a reference guide.’” (LINK) see also (LINK 2)
The history of the NYIPLA is replete with tongue-twisting acronyms. Back in 1981, the Association’s Bulletin was called the “The New York Patent Law Association Bulletin.” The September 1981 issue was identified as Volume 21, Number 1 – suggesting that the Bulletin of the Association was entering its 21st year of publication then.
In 1983, the Association’s name was changed to The New York Patent, Trademark and Copyright Law Association. Although that name aptly reflected the important role that trademark and copyright lawyers brought, and continue to bring, to the table as members of our Association, the name was a bit cumbersome. Accordingly, the Board of Directors searched for an acronym, settling on “NYPTC” since that was considered “easier to say” than “NYPTCLA.” To see if you agree, try saying “NYPTC” three times fast!
In any event, the December 1983 Bulletin was published as “The New York Patent, Trademark and Copyright Law Association NYPTC Bulletin.” That rather substantial, if not redundant, moniker stuck for a number of years.
Later, when “intellectual property” became a popular catch-all phrase, our Association changed its name again, and the Bulletin became the “NYIPLA Bulletin”, and later became “The Report” as we know it today.
Perusing the last three decades of Bulletins offers more than just a glimpse at Association name changes. It also offers a glimpse at people changes within the Association: to wit, members becoming committee chairs, committee chairs becoming directors, directors becoming officers.
These people changes flow from the various tasks that the committees set out to accomplish, and the accomplishments themselves: amicus brief submissions, commentaries on pending IP legislation, CLE meeting synopses, case law digests, articles of interest, and so forth. The over-arching theme for our Association is education about the significance of intellectual property to our society. This IP education speaks to a myriad of audiences: members educating members, members educating the general public, members hopefully educating even SCOTUS Justices.
Unfortunately, both judicial and legislative actions during the past decade have had a demonstrably negative impact on predictability and uniformity within the American IP system. Lobbying money has helped to degrade a system that once was the envy of the world, and it seems that many dedicated IP lawyers were caught sitting on their hands.
Many years ago a past president, who shall remain nameless, of a sister organization, the Connecticut IP Law Association was asked why lawyers within general practice law firms couldn’t become officers of that organization. In this regard, it is an open secret that CIPLA officers are selected from among four or five IP boutiques, or clients of those boutiques. The reply was something to the effect that the CIPLA is mainly a “social club”. That moniker conjured up images, in my mind at least, of the club that John Gotti frequented, The Ravenite Social Club. (2)
Fortunately for our Association, NYIPLA’s officers are not selected from just a few firms and their clients. Nonetheless, several NYIPLA past presidents, who also shall also remain nameless, have expressed private concerns that the NYIPLA seems to be devoling into a social club remembered mainly for its signature event, the “patent prom”.
If you, too, are concerned that this might happen, now would be a good time to get involved in the organization by rolling up your shirtsleeves and joining an NYIPLA committee to make a difference. Otherwise, the risk is that our Association will forgo its role in helping to develop better IP policy, or worse yet, leave policy development to national organizations, like IPO, AIPLA and ABA, that were instrumental in ushering in the national policy crisis we now face.
If you’re already engaged in NYIPLA committee work, that’s great. If you’re not, then please feel free to reach out to the Association’s Administrator, Feikje van Rein, to express an interest in becoming active. If you do become actively involved in the Association now, that activity will become its own reward since it will make you a better IP lawyer. It will also lead to friendships and business contacts that will last a lifetime.
So, what’s in a name? If it is NYPLA or NYPTC or NYIPLA, then a rose is a rose. However, if the name is the “New York Intellectual Property Social Club”, you might not want to find out.
(1) Mr. Carlson is NYIPLA past president and current historian. He directs the IP law concentration at Quinnipiac University School of Law in North Haven, CT. The views expressed herein are those of the author and do not reflect the views of NYIPLA or Quinnipiac University School of Law.
(2) A club in Little Italy that served as the headquarters for the Gambino crime family. See https://en.wikipedia.org/wiki/Ravenite_
By : Dale carlson
AS TIME GOES BY - NYIPLA, By Any Other Name
Notable Trademark Decisions
By: Scott Greenberg and Michael kraich
Federal Circuit Finds Likelihood of Confusion Between DETROIT ATHLETIC CO. For Clothing Retail Services and DETROIT ATHLETIC CLUB For Clothing Goods
Detroit Athletic Co. (“DACo”) applied to register the mark DETROIT ATHLETIC CO., seeking, via amendment, registration on the Supplemental Register with “ATHLETIC CO.” disclaimed, in connection with various sports apparel retail services. Registration was refused under Section 2(d) of the Lanham Act (15 U.S.C. § 1052(d)) based on likelihood of confusion with the prior registered mark DETROIT ATHLETIC CLUB (with a disclaimer of “ATHLETIC CLUB”), registered on the Principal Register for various types of clothing goods by the Detroit Athletic Club (“DAClub”). The TTAB affirmed the refusal, and DACo appealed to Court of Appeals for the Federal Circuit (the “Federal Circuit”). In a precedential decision, the Federal Circuit affirmed the Board’s decision. In re Detroit Athletic Co., __ F.3d __, __ USPQ2d __ (Fed. Cir. Sept. 10, 2018) (slip op.).
The Federal Circuit noted that it reviews the Board’s determination of likelihood of confusion without deference, and reviews for substantial supporting evidence for the Board’s underlying factual findings, i.e. the Board’s findings on the likelihood-of-confusion factors recognized under In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973). Slip op. at 3. The Federal Circuit found that, in the present case, the Board’s findings on those DuPont factors considered most relevant by the Board were supported by substantial evidence, and the Court agreed with the Board’s ultimate conclusion that confusion was likely.
Regarding the specific relevant DuPont factors:
Similarity/Dissimilarity of the Marks – The Federal Circuit agreed with the following analysis of the Board: Both marks solely consist of three words, the first two being “Detroit Athletic” followed by one-syllable “C”-words. Notwithstanding the conceptual weakness of “Detroit Athletic” in view of the inherent meaning of the two words, those two lead words will make a greater impression upon consumers than the final word in each case. Both marks “conjure an image of sporting goods or services having a connection to Detroit” and have an identical structure and similar appearance. (Slip op. at 5). Regarding the final words “Co.” and “Club,” in addition to both being monosyllabic words beginning with “C,” each describes the form of business entity of the mark-owner (slip op. at 7), and neither word serves any source-indicating significance in and of itself. The record showed that an entity doing business as a club can also be a corporation, as is the cited registrant DAClub. (Slip op. at 9). Also, the Federal Circuit held that the Board did not err in ascribing less weight to the final words “Co.” and “Club” in each mark, because the Board expressly and demonstrably did so in the context of comparing the marks in their entireties (slip op. at 6), and did not simply ignore those words outright. (Slip op. at 8).
Nature, Relatedness and Trade Channels of the Goods and Services – The Federal Circuit agreed with the Board that the sports-related apparel to which DACo’s retail services are directed overlap with the clothing goods identified in DAClub’s registration, rendering DACo’s services related to DAClub’s goods, noting the well-established principle that confusion may be likely to occur from the use of same or similar marks for goods, on one hand, and services involving those goods, on the other. (Slip op. at 11-12). The Court rejected DACo’s argument that consumers will distinguish between the two sources due to DAClub’s nature as a private social club. Even if true, the point is not relevant because the inquiry in an ex parte proceeding must focus on the goods and services as described in the application and registration, and DAClub’s registration describes clothing products with no reference to a social club. (Slip op. at 12-13). The Court also upheld the Board’s finding that, as identified in the respective registration and application, DAClub’s clothing comprises the type of goods likely to be sold through DACo’s sports apparel retail services, rendering the trade channels similar to one another. (Slip op. at 13-14). In this context, the Federal Circuit rejected DACo’s argument that DAClub only sells its clothing to its club members and only in its onsite gift shop, again noting that DAClub’s registration does not include any such limitations. (Slip op. at 14). The Federal Circuit also noted that an applicant who considers the description of goods in a cited registration to be unfairly overbroad may bring a cancellation proceeding seeking to limit the specification of goods under 15 U.S.C. § 1068, but that, in the absence of such a proceeding, such a limitation cannot be entertained in an ex parte appeal. (Slip op. at 15).
Evidence of a Lack of Actual Confusion -- The Federal Circuit held that substantial evidence supported the Board’s finding that DACo’s evidence purporting to show a lack of actual confusion was not sufficiently probative. The Court noted that, in general, evidence of a lack of actual confusion may be relevant but is not dispositive in the ex parte setting, where likelihood of confusion can be established even in the face of evidence that consumers were not actually confused. Moreover, DACo’s evidence was not probative – the search engine results showing one company but not the other “speak only to how the search engine’s software processes the search terms”; and the affidavit from a customer of DACo for 16 years did not mention the DETROIT ATHLETIC CLUB mark, let alone suggest a lack of confusion between the two mark. (Slip op. at 16).
Finally, the Court agreed with the Board that it is not necessary to address every DuPont factor because, in a given case, even a single factor may be dispositive. Balancing all of the factors considered the most relevant in the present case, the Federal Circuit affirmed the Board’s conclusion that confusion was likely. In re Detroit Athletic Co., __ F.3d __, __ USPQ2d __ (Fed. Cir. Sept. 10, 2018) [precedential].
Reply Brief of Party in the Position of Defendant Before the TTAB May Be Stricken or Given No Consideration
Diamond Hong, Inc. (“Appellee”) petitioned the Board to cancel the mark “WU DANG TAI CHI GREEN TEA,” (“Appellant’s mark”) registered by Zheng Cai DBA Tai Chi Green Tea Inc. (“Appellant”) on the Principal Register. See WU DANG TAI CHI GREEN TEA, Registration No. 4114136. The Board issued an opinion canceling registration of Appellant’s mark, affirming that Appellant’s mark was likely to cause confusion in view of the mark “TAI CHI” (“Appellee’s mark”). See Diamond Hong, Inc. v. Cai, 2018 TTAB LEXIS 43 (T.T.A.B. Feb. 14, 2018); see also 35 U.S.C. § 1052(d) (2012). The Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed cancelation of Appellant’s mark. Cai v. Diamond Hong, Inc., 2018 U.S. App. LEXIS 24152 (Fed. Cir. Aug. 27, 2018) (hereinafter “Tai Chi Green Tea”).
Before the Federal Circuit, Appellant argued that the Board failed to consider factual assertions, including certain figures displayed and discussed in Appellant’s brief to the Board. Specifically, Appellant argued that the Board improperly excluded evidence submitted by Appellant in a reply brief. The Federal Circuit held that the Board was not obligated to consider Appellant’s reply brief, noting that while the guidelines codified in the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) do not have the force of law, they are accorded a degree of deference akin to the “power to persuade.” Tai Chi Green Tea at 3, 4 (citing Christensen v. Harris Cty., 529 U.S. 576, 587 (2000)). Having found that Appellant’s brief included assertions of fact, and that the Board was not required to consider Appellant’s reply brief, the Court held that the Board did not abuse its discretion by disregarding Appellant’s reply brief.
The Federal Circuit also held that the Board did not err in its finding of a likelihood of confusion between the two marks at issue. In its de novo review of the Board’s DuPont analysis, the Federal Circuit considered the similarity of the marks, the similarity and nature of the goods described in the marks’ registrations, and the similarity of trade channels along which the goods travel. Tai Chi Green Tea at 7 (noting that the three listed factors were the only factors to which evidence was submitted by either party). The Federal Circuit held that substantial evidence supported the Board’s findings, noting that both marks are directed to tea, and insufficient evidence was presented to rebut Federal Circuit precedent that presumes “identical goods move in the same channels of trade and are available to the same classes of customers for such goods,” and that the marks themselves when considered as a whole are similar. With regard to the similarity of the marks, the Federal Circuit noted that “they both invoke a large yin-yang symbol and prominently display the term TAI CHI. Id. at 9. Further, since color was not claimed as a feature of Appellee’s mark, Appellee’s mark could be presented in a green-and-white color scheme, similar to Appellant’s.
Accordingly, the Federal Circuit affirmed the Board’s cancelation of Appellant’s mark.
Zheng Cai v. Diamond Hong, Inc., 2018 U.S. App. LEXIS 24152, __ F.3d __ (Fed. Cir. Aug. 27, 2018).
TTAB Holds Mark Unregistrable As An Impermissible Phantom Mark
Applicant Society of Health and Physical Education (“SHPE”) applied to register a mark set forth as “SHAPE XXXX” in standard characters, stating in the application that “XXXX” was intended to denote an unabbreviated name of one of the 50 states or “Puerto Rico.” Registration was sought in connection with (a) printed materials for educational association members in Class 16, (b) clothing in Class 25, and (c) educational services for educational association members in Class 41. The specimen of use of the mark in Class 16 appeared as follows:
The Examining Attorney refused registration on the ground that the applied-for mark was a phantom mark that actually constitutes more than one mark, which is prohibited under Sections 1 and 45 of the Lanham Act (15 U.S.C. §§ 1051 and 1127). The TTAB agreed and affirmed the refusal. In re Society of Health and Physical Educators, 127 USPQ2d 1584 (T.T.A.B. Aug. 16. 2018).
The Board considered two precedential decisions of its primary reviewing court, the Court of Appeals for the Federal Circuit. In the first decision, In re International Flavors & Fragrances, Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999), the application stated that the variable element "XXXX" "indicated 'a botanical or extract thereof, to wit: 'flower', 'fruit', 'yellow sunset orchard', 'osmanthus', 'fragrance', 'raspberry' and the like". The Board noted the Federal Circuit’s conclusion in International Flavors that the proposed mark violated the one-mark-per-application requirement because the variable element encompassed too many combinations and permutations for such a registration to provide meaningful constructive notice of the nature of the registered mark. Id. at 1586.
In the second Federal Circuit decision, In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), the Federal Circuit held that the mark 1-888-M-A-T-R-E-S-S, in connection with telephone shop-at-home retail services in the field of mattresses, was registrable pursuant to a claim of acquired distinctiveness under Section 2(f) of the statute, based on the applicant’s ownership of a prior registration for “(212) M-A-T-T-R-E-S” in which the term (212) was a changeable element. In so holding, the Federal Circuit rejected the USPTO’s arguments that the prior registration was not entitled too much weight because the two marks were not legally equivalent and the prior registration was actually for an improper phantom mark. The Federal Circuit concluded that the two versions of the mark were legally equivalent because they both created the same, continuing commercial impression, and the prior registration was entitled to consideration notwithstanding the changeable element because it was apparent that the changeable element was “an area code, the possibilities of which are limited by the offerings of the telephone company.” Id. at 1586 (quoting Dial-A-Mattress, 57 USPQ2d at 1813).
Applying these Federal Circuit precedents as well as prior Board decisions, the Board concluded that SHPE’s mark violated the one mark per application requirement, noting the following:
In order for a mark with a variable element to not violate the one-mark-per-application rule, the possible permutations of the variable element must not affect the commercial impression made by the mark; that is, the commercial impression must continue to be the same, which would render the possible variations of the mark legally equivalent to one another in their entirety. Id. at 1587-1588.
In the case of SHPE’s mark, the permutations of the variable element are different state names and/or Puerto Rico; e.g. “SHAPE MICHIGAN,” “SHAPE OHIO,” etc. The Board held that the different possible state-names affected the commercial impression of the mark in its entirety for several reasons: geographically descriptive terms, such as the names of states, are capable of acquiring source-indicating distinctiveness (Id. at 1588); the inclusion of different state names in the mark will significantly affect the meaning of the mark, e.g. “SHAPE MICHIGAN” signifies educational services emanating from Michigan while “SHAPE OHIO” signifies such services emanating from Ohio (Id. at 1589); the owner of a mark consisting of or including “CALIFORNIA” might object to “SHAPE CALIFORNIA” but not to “SHAPE NEW YORK” (Id.); the difference in the appearance and pronunciation of SHPE’s mark with different state names included would also be significant, and more significant than was the case with the different possible area codes in Dial-A-Mattress which in all cases were numerical, fixed in length, and part of a telephone number mnemonic (Id. at 1590).
In addition to the above factors, the Board found that the following points also militated against registrability: there are 51 possible permutations; someone searching for a specific state name, e.g. NEVADA, would not find the subject mark; and SHPE was not actually using all of the possible permutations. Id. at 1588 and 1590.
The Board therefore affirmed the refusal to register on the ground of the mark was an impermissible phantom mark that actually constitutes more than one mark. The Board also held that, in view of its affirmance of the foregoing ground of refusal, it was not necessary to reach the Examining Attorney’s other ground of refusal, i.e. that the specimen of use did not show the mark as applied-for. Id. at 1590.
In re Society of Health and Physical Educators, 127 USPQ2d 1584 (T.T.A.B. Aug. 16, 2018) [precedential].
“I’M SMOKING HOT” Held Not Confusingly Similar to “SMOKIN’ HOT SHOW TIME” For Cosmetics
FabFitFun, Inc. (“Fab”) applied to register the mark “I’M SMOKING HOT” for various cosmetic, personal care and fragrance products. Registration was refused under Section 2(d) based on likelihood of confusion with the prior registered mark “SMOKIN’ HOT SHOW TIME” for “cosmetics, mascara.” On appeal, the TTAB concluded that confusion was not likely and reversed the refusal. In re FabFitFun, Inc., 127 USPQ2d 1670 (T.T.A.B. Aug. 23, 2018).
The Board agreed with the Examining Attorney that Fab’s goods were partially identical and otherwise related to the cited registrant’s cosmetics. Both parties’ “cosmetics” are presumed to have the same customers, trade channels and conditions of sale (e.g. pricing). Id. at 1672-1673.
However, the Board agreed with Fab that the marks were not confusingly similar when considering the relative weakness of the shared term “Smoking Hot” (or “Smokin’ Hot”) and the overall differences between the two marks.
As to strength or weakness of “SMOKIN’ HOT”, there were dictionary definitions of record establishing that, in connection with cosmetic products, the term indicates that use of the products will render the user’s appearance attractive or sexy looking. Therefore, the term “SMOKIN’ HOT” has some degree of conceptual weakness and is at best highly suggestive in connection with cosmetics. Id. at 1673. In addition, Fab made of record online evidence of ten third-party uses of “SMOKIN’ HOT” as a formative for cosmetic product marks, plus four other examples of third-party use of “SMOKIN’ HOT” either as a descriptive term applied to make-up or as marks in the United Kingdom (although there was no evidence as to what extent, if any, U.S. consumers will be exposed to the latter U.K. websites). Even though this evidence reflected a “more modest amount” of third-party usage than the “extensive” evidence found “powerful on its face” in precedential Federal Circuit decisions such as Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 , 115 USPQ2d 1671, 1674 (Fed. Cir. 2015), the Board nevertheless determined that the totality of the evidence showed that the shared term “SMOKIN’ HOT” was somewhat weak and at best suggestive of the result of using the subject cosmetic products, and that this weakness weighs somewhat in favor of a finding of no likelihood of confusion. Id. at 1674-1675.
Comparing the two marks in their entirety for similarity, while bearing in mind that the only common element between them is weak as source identifier for cosmetics, the Board concluded that the marks were sufficiently dissimilar to avoid likelihood of confusion. The marks “I’M SMOKING HOT” and “SMOKIN’ HOT SHOW TIME” are only somewhat similar in appearance and sound, and their respective connotations and overall commercial impressions are more different than similar. Fab’s mark “I’M SMOKING HOT” connotes an individual’s declaration that “I am attractive or sexy looking,” while the registered mark “SMOKIN’ HOT SHOW TIME” connotes the time for sexy entertainment or activity to begin. Id. at 1676-1677. Therefore, primarily because of the overall differences between the marks and weakness of the term shared by them, the Board concluded that there was no likelihood of confusion and reversed the refusal to register.
Use of a Hashtag Not Enough to Overcome A Similar Shared Term
i.am.symbolic, llc (“Applicant”) filed an application to register the standard-character mark “#WILLPOWER” (“the mark”) on the Principal Register for clothing in International Class 25. U.S. Trademark Application Serial No. 85/916,778 (filed April 27, 2018). The Examining Attorney refused registration under Section 2(d) of the Trademark Act stating that the mark, when used in connection with the identified goods, resembles a mark on the Principal Register (reproduced below), also in International Class 25 for hats, jackets, pants, shirts, and shoes, and would likely cause confusion, mistake, or deception. WILLPOWER WEAR HAVE THE WILL…, Registration No. 3765222 (“Registrant’s mark”).
The Board affirmed the Examining Attorney’s refusal to register the mark. In re i.am.symbolic, 2018 TTAB LEXIS 281 (T.T.A.B. Mar. 28, 2018) (hereinafter “WillPower”). In considering whether a likelihood of confusion exists between the mark and the existing mark, the Board placed emphasis on two DuPont factors, both the similarities between the marks and the similarities between the goods associated with the marks. WillPower at 4.
Regarding the similarities between the goods, channels of trade, and classes of consumers, the Board noted that Applicant’s “jackets,” and “pants,” were identical to Registrant’s “jackets,” and “pants,” and that the remaining categories of goods identified by Applicant were encompassed within Registrant’s designations. Id. at 5, 6. Applicant argued that the goods associated with the mark are targeted to individuals interested in purchasing Applicant’s founder’s (Will Adams, known under his stage name as “WILL.I.AM”) music album (titled “# willpower”). Id. at 7. The Board noted that “[w]hile the Applicant may be associated with William Adams, there is nothing in the application that limits the marketing of the goods to methods that would unmistakably associate the goods with him, his persona, or his album.” Id. Further, based on Federal Circuit precedent, the Board reiterated that such a restriction would not obviate a finding that the trade channels and classes of consumers overlap. Id. at 8 (citing In re i.am.symbolic, llc, 866 F.3d 1315 (Fed. Cir. 2017) aff’g 116 USPQ2d 1406 (T.T.A.B. 2015)). As such, the Board affirmed that a likelihood of confusion exists between the two marks.
The Board next addressed Applicant’s argument that “a consumer who sees the two marks in the marketplace, which appear dramatically and substantially different in appearance, would plainly conclude that the goods come from distinct sources.” Id. at 14. In clarifying the standard for review, the Board noted that "the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.” Id. Having identified the shared term “WILLPOWER” as the most dominant element of both marks, and that the relevant trade channels and classes of consumers included all ordinary channels and customers, the Board held that the ordinary meaning of the word WILLPOWER, found in both marks, presents the same connotation of “ability to control yourself” “strong determination that allows you to do something difficult.” Id. at 17. Further, the use of the “#” was noted as adding little, if any, source-indicating distinctiveness. Id. at 21 (citing TMEP § 1202.18).
Finally, the Board considered the number and nature of similar marks in use on similar goods (the sixth DuPont factor). Id. at 28. In doing so, the Board noted that “[i]f the evidence establishes that the consuming public is exposed to third-party uses of similar marks for similar goods it is relevant to show that a mark is relative weak and entitled to only a narrow scope of protection.” Id. (citing Palm Bay v. Vevue Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)). In view of the evidence of record the Board found that, on balance, the evidence of third-party use of WILLPOWER for clothing was insufficient to demonstrate that Registrant’s mark was weak or entitled to a narrow scope of protection. Ultimately, the Board held that this factor was neutral when comparing the two marks.
In view of the Board’s analysis, findings that both the channels of trade and consumers were “in part legally identical,” and the similarities between the appearance, connotation, and overall commercial impression of the two marks, the Board affirmed the Examining Attorney’s finding of a likelihood of confusion.
In re i.am.symbolic, 127 USPQ2d 1627 (T.T.A.B. March 28, 2018) [precedential].
Use of the Phrase “I LOVE YOU” is both Merely Decorative and Confusing Similar to “I LUV U”
Peace Love World Live, LLC (“Applicant”) filed an application to register the standard-character mark “I LOVE YOU” (“the mark”) on the Principal Register for bracelets in Class 14. U.S. Trademark Application Serial Number 86,705,287. The Examining Attorney refused registration under Sections 1, 2, and 45 of the Trademark Act for being merely a decorative feature and failing to function as a trademark. Additionally, the Examining Attorney refused registration under Section 2(d) on the ground that the mark resembles the registered mark “I LOVE U” registered for, among other things, jewelry including bracelets in Class 14. The Board affirmed the Examining Attorney’s refusal to register the mark on both grounds. In re Peace Love World Live, 127 USPQ2d 1400 (T.T.A.B. July 23, 2018) (hereinafter “Peace Love World Live”).
Upon review of the finding that the mark was merely decorative, the Board noted that “[i]f the evidence establishes the applied-for matter would be perceived merely as an informational or common message, then that provides a separate reason to issue a failure-to function refusal under Sections 1, 2, and 45 of the Trademark Act.” Peace Love World Live, at 1401. Noting that the phrase “I Love You,” as shown in Applicant’s specimen essentially forms the bracelet itself, the phrase was identified as conveying a term of endearment and thus, was ornamental. The Board also noted that Applicant’s arguments, namely that the mark comprises shapes and a look which is in accordance with the theme of the product itself and that many of Applicant’s products share “a common distinctive thread — love and peace oriented themes having playful and chunky design elements,” were not persuasive. Id. at 1404. Specifically, the Board found these arguments not commensurate with the scope to which Applicant was seeking to cover with registration of the mark (i.e., a standard character mark). Additionally, the “theme” to which Applicant argued the goods were directed included merely aesthetic features and would not be perceived as indicating the source of the goods. Id. As such, the use of “I LOVE YOU” by Applicant in connection with bracelets was found to be ornamental. Id. at 1404, 1405.
Next, the Board affirmed the Examining Attorney’s refusal to register the mark under Section 2(d) of the Trademark Act. Specifically, based on the Board’s analysis of the relevant DuPont factors, the board found that the mark was likely to cause confusion with the registered mark “I LUV U.” Id. at 1405. The Board noted that both marks were directed to bracelets, and were, in part, identical and, by extension, travel through the same channels of trade and classes of purchasers. Id. (citing In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012)). Additionally, the Board held that, while third-party registrations are not evidence of use of the mark, they may be used to show possible uses for the term. Id. at 1406. As such, the Board found that, in view of the registrations proffered by Applicant, the use of “I LOVE YOU” with jewelry was so common that “consumers are conditioned to look for differences among trademarks consisting of or including I LOVE YOU for jewelry,” and not the phrase itself. Id.
Finally, considering the similarity or dissimilarity of the marks in connection with their appearance, sound, connotation, and commercial impression, the Board found that the marks look, sound, and mean the same thing while engendering the same commercial impression. Peace Love World Live at 1406, 1407. When analyzing the marks in view of this DuPont factor, the Board noted that “[s]imilarity in any one of these elements may be sufficient to find the marks confusingly similar.” Id. (citation omitted). Further, the Board recognized that the proper test is not a side-by-side comparison, but “whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Id. (citation omitted). The Board reasoned that “I LOVE YOU” and “I LUV U” share the same structure, sound similar, mean the same thing, and engender the same commercial impression. Id. Noting that the spellings of the two marks were different, these differences were seen as inconsequential. As such, the minor differences identified by Applicant were found not to be dispositive, and the marks were found to be similar.
Based on the above-described analysis, the Board ultimately found that the mark was both ornamental under Sections 1, 2, and 45 of the Trademark Act and likely to cause confusion under Section 2(d) of the Trademark Act, and thus, unregisterable on the Principal Register.
In re Peace Love World Live, 127 USPQ2d 1400 (T.T.A.B. July 23, 2018) [precedential].
Mediating Patent Infringement Disputes: Current Trends and Future Considerations
By: Patrick murphy III
2018 Hot Topics in IP Law
By: Scott greenberg, michael cannata, and frank misiti
On June 19, 2018, JAMS New York in conjunction with NYIPLA hosted a CLE event featuring moderator Bryan J. Vogel, Partner of Robins Kaplan LLP and speakers Hon. Garrett E. Brown, Jr (JAMS). Scott Burtt, SVP GC, & Chief IP Counsel of Conversant IP Management, Thomas L. Creel (JAMS), & John Lindgren CEO of IP Value. The discussion provided insight to the values of mediating patent infringement disputes and the current and future considerations. Also covered was the prominent role that mediation takes in IP Patent infringement disputes in resolving these complex disputes and the impact of mediation moving forward. The topics covered in this insightful event ranged from the major issues that are typical drivers in mediation, timing, and how different approaches play into the overall outcome in a resolution.
On July 17, 2018, the Trademark Law and Practice Committee hosted its annual half-day CLE event entitled “Hot Topics In IP Law” at the Princeton Club in New York City. The event was well attended by members of the Association.
This year’s Keynote Address was given by the Honorable Gerard Rogers, the Chief Administrative Trademark Judge for the Trademark Trial and Appeal Board. Judge Rogers provided a comprehensive overview and update concerning the Trademark Trial and Appeal Board (“TTAB”). Judge Rogers’ presentation covered timely topics such as, recent calls for change at the TTAB, leveraging the internet to better assist in handling TTAB proceedings, TTAB rulemaking, and recent outreach efforts to improve the efficiency of TTAB proceedings.
After the keynote presentation, Nicholas Bartelt from the U.S. Copyright Office moderated a panel discussion entitled “Breaking the Internet?: What Unresolved Issues of ‘Secondary’ Liability May Mean for Copyright Owners, Publishers, and ISPs.” The panelists included Caleb Donaldson, Senior Copyright Counsel at Google, and Lauren Emerson, counsel at Leason Ellis LLP. The panelists presented a thought provoking discussion concerning the ever-changing landscape of copyright infringement claims predicated on a theory of secondary liability in the online arena. The presentation was highlighted by the introduction, and analysis, of recent cases addressing this important issue.
The next panel discussion, entitled “Opening The Virtual Door to All: Online Accessibility Standards,” was moderated by John W. Egan, a partner in the Labor and Employment Department at Seyfarth Shaw LLP. The panelists included Nancy Del Pizzo, a partner in the Commercial Litigation, Intellectual Property, and Privacy, Data & Cyber Law practice groups at Rivkin Radler LLP and Thomas Logan, the Chief Executive Officer of Equal Entry LLC. The panelists offered an overview of the substantive regulations governing website accessibility standards and provided a comprehensive analysis of what it means for websites to be accessible to disabled individuals.
The next speaker was Martin Schwimmer, a partner at Leason Ellis LLP, who presented a program titled “Blockchain: Deconstructing Trademarks.” Martin is well known as the publisher of The Trademark Blog, the world’s oldest blog devoted to trademark and copyright law, as well as a Twitter microblog (@trademarkblog). Given the emergence of blockchain technology, Martin provided a detailed overview of what exactly this important technology is and the interplay between this technology and trademark law.
Following that presentation, Dyan Finguerra-DuCharme, a partner in the Intellectual Property, Litigation, and Media+Entertainment practice groups at Pryor Cashman LLP, moderated a panel titled “What Keeps In-House Counsel Up at Night?” The panelists included Lisa Gigliotti, Vice-President and Chief Trademark Counsel at L’Oréal USA, John Maltbie, Director of Intellectual Property, Civil Enforcement, Louis Vuitton Americas, and Brian McCloskey, Chief Patent Counsel at Avon Products, Inc. The panelists engaged in a candid dialogue concerning best practices for outside counsel.
The next presentation, entitled “Brexit – Should Trademark Owners Care?,” focused on the issue of trademark ownership in light of the United Kingdom’s exit from the European Union. The presenter, Simon Tracey, is the Founding Partner of Bear & Wolf. This presentation highlighted the issues that attorneys and trademarks owners may face “if” the United Kingdom ceases to be a member state of the European Union in March 2019. The presentation explained the current framework for trademarks in the European Union and what could be expected for trademarks, including pending trademark applications, to the extent that Brexit occurs.
The last presentation was a panel discussion moderated by David Herrington, a partner at Clearly Gottlieb Steen & Hamilton LLP. This panel was entitled “Litigation Finance: The Basics, The Details, and the Ethics.” The panel consisted of Boaz Weinstein, Co-Founder of Lake Whillans Litigation Finance, as well as Lake Whillans Litigation Finance’s Managing Director, Marla Decker. This discussion provided a unique look at litigation finance starting with the fundamental building blocks that are needed in order to determine whether litigation financing is a viable option. The discussion focused on two main areas: (i) the ethical considerations that must be examined for each step of the process; and (ii) how litigation financing can help lawyers and clients achieve certain business and litigation objectives.
gerald flattmann, jr.
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MOVING UP & MOVING ON
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mark peroff & Darren saunders
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Last First Membership Firm/Company/Law School State
Adickman Cary Active 3+ Quinn Emanuel Urquhart & Sullivan New York
Ahmed Soban Student Fordham IP Institute New York
Allbert Aurelia Student Columbia Law School New York
Baldinger Jacob Active 3+ Weiss & Arons New York
Balzer Mary Student UCLA School of Law California
Barkaus Keith Active 3+ Amster, Rothstein & Ebenstein New York
Bowen Heather Student Northwestern University Pritzker School of Law New York
Chandler Mallory Student Fordham University School of Law New York
Charles Veronique Student Vermont Law School Vermont
Chen Kevin Student New York Law School New York
Cole David Active 3+ Paul, Weiss, Rifkind, Wharton & Garrison New York
Colt Angela Active 3+ Orrick New York
Conlon Nicole Active 3- Patterson, Belknap, Webb & Tyler New York
Dellaporte Christina Student Brooklyn Law School New York
DeVries Katherine Active 3- Cadwalader, Wickersham & Taft New York
Fede Alexis Active 3- Cooper & Dunham New York
Foit Linda Active 3+ Fox Rothschild New York
Fremed Brandon Active 3- McGivney, Kluger & Cook New York
Gergely Peter Active 3+ Merchant & Gould New York
Green Cassandra Student Michigan State University College of Law Michigan
Guitelman Nicole Student Brooklyn Law School New York
Halajian Dina Active 3- Cadwalader, Wickersham & Taft New York
Herring Doug Student Fordham Intellectual Property Institute New York
Hersh Ryan Active 3+ Axinn, Veltrop & Harkrider New York
Hung Howah Corporate Memorial Sloan Kettering Cancer Center New York
Internoscia Brittany Active 3- Cooper & Dunham New York
Jones Kat Student Fordham Intellectual Property Institute New York
Kennedy Dwight Active 3+ Carrieri & Carrieti New York
Kim Isaac Student Seton Hall Law School New Jersey
Leavy Tanya Active 3+ Troutman Sanders New York
Leclerc Alain Associate Goudreau Gage Dubuc Quebec
Lehman Christine Associate Finnegan District of Columbia
Li Yida Student Mitchell Hamline School of Law Minnesota
LoGiudice Lisamarie Active 3+ Jones Day New York
LoPiano James Student Fordham University School of Law New York
Medenica Olivera Active 3+ Dunnington Bartholow & Miller New York
Meena Raghuveer Student George Washington University Law School District of Columbia
Melson Terra Student Fordham University School of Law New York
Miller Tyler Active 3+ Orrick New York
Miller Larry Active 3+ Feder Kaszovitz New York
Moss Alexandra Active 3+ Sullivan & Cromwell New York
Mutell Taylor Student New York Law School New York
Patel Rikesh Active 3+ McCarter & English Connecticut
Rabbat Amanda Active 3+ Fox Rothschild New York
Rabin Gregory Active 3+ Schwegman Lundberg Woessner Minnesota
Rivera Brenda Active 3- Gibson, Dunn & Crutcher New York
Sahachartsiri Bobby Active 3- Cooper & Dunham New York
Sayfulloeva Khosiyatkhon Student Brooklyn Law School New York
Last First Membership Firm/Company/law school State
Scholem Jeremy Active 3+ DOAR, Inc. New York
Silvia David Active 3+ McCarter & English Connecticut
Singh Sanskriti Student Benjamin N. Cardozo School of Law New York
Speckhard Gordon Active 3- Berg & David New York
Strino Paolo Active 3+ Gibbons New York
Stroud Jonathan Associate Unified Patents Inc. District of Columbia
Wang Yuan Yuan Student Fordham IP Institute New York
Weiss Zachary Student Benjamin N. Cardozo School of Law New York
Wenske Rilana Student Fordham IP Institute New York
Wheeler Margaret Active 3+ Orrick New York
Wieche Kayla Student Gibson, Dunn & Crutcher LLP New York
Wilk Matthew Active 3- Cooper & Dunham New York
Wilson Damias Active 3+ Cullen and Dykman New York
Xie Rong Active 3+ Law Offices of Albert Wai-Kit Chan New York
WELCOME NEW MEMBERS
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