IPO Daily News™
Tuesday, 29 September 2015 12:31 pm
IPO DAILY NEWS: ANNUAL MEETING EDITION
LESSON FROM THE U.S. SUPREME COURT: YOU ARE NOT SPECIAL
Speakers on yesterday’s opening plenary panel discussed the facts and implications of the 15 IP cases taken up by the U.S. Supreme Court in the last two terms. The panelists agreed that cases like Teva Pharms. USA, Inc. v. Sandoz, Inc. (13-854)—which held that deference must be given to district courts on findings of fact in claim construction cases—and Hana Financial, Inc. v. Hana Bank (13-1211)—which said that trademark “tacking” cases should be decided by juries—demonstrate a common trend. “The key theme is that the Court is looking to see if there should really be a difference between patent cases and other cases,” said Retired U.S. District Chief Judge JAMES HOLDERMAN.
MARK PARTRIDGE of Partridge & Garcia P.C., who reviewed the trademark and copyright cases, said that, while Hana Financial is not likely to have broad impact for IP owners, “it shows that the Supreme Court wants to defer to lower decision makers.” Mr. Partridge also reviewed B&B Hardware, Inc. v. Hargis Industries, Inc. (13-352), which held that a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met. The case, which will be discussed in more depth during today’s breakout session, “TTAB Update and Implications of B&B Hardware, Inc. v. Hargis Industries, Inc. for Corporations,” will change TTAB practice, said Mr. Partridge. “Previously, we were better off spending all of our time in court, but now it makes sense to do the case at the TTAB first and tell the court to apply that decision. It makes TTAB cases more important.”
WILLIAM JAY of Goodwin Procter reviewed landmark patent cases such as Alice Corporation Pty. Ltd. v. CLS Bank Int’l (13-298) which dealt with the issue of patent eligible subject matter, and predicted that the many cases on this topic being dealt with by the Patent Trial and Appeal Board would be less likely to “push the right buttons” for the Supreme Court than Alice or Myriad, for example. When moderator KEVIN RHODES of 3M asked the panelists for other “fearless predictions” on issues the Court might consider next term, they said to keep an eye on Pro-Football, Inc. v. Harjo, in which a group of Native Americans are suing the Washington Redskins football team for disparagement, as well as more cases on the issue of attorney fee-shifting.
IPO SELECTS MARK W. LAUROESCH AS THE ASSOCIATION’S NEW EXECUTIVE DIRECTOR
During Monday’s Annual Meeting Luncheon, IPO President PHIL JOHNSON announced that MARK W. LAUROESCH, a member of IPO’s Board of Directors from 2011 – 2013, will take over for outgoing Executive Director HERB WAMSLEY beginning October 13. Mr. Lauroesch has worked for Corning Inc. since 1996, serving as Vice President & General Intellectual Property Counsel from 2005- 2014, and most recently acted as a consultant to the company. Mr. Johnson told attendees that Mr. Lauroesch was unanimously chosen from an impressive list of applicants and described him as “a terrific successor” to Mr. Wamsley, who will be retiring from IPO this year after 32 years with the Association. Mr. Wamsley will remain on board with IPO through the end of 2015 in order to ensure a seamless transition.
The IPO Education Foundation’s Innovator Insights blog will feature an in-depth interview with Mr. Lauroesch during the first weeks of his new role.
IPO EDUCATION FOUNDATION ANNOUNCES 2015 IP VIDEO CONTEST WINNERS
IPO Annual Meeting attendees got a sneak peek at the winning videos of this year’s IP Video Contest during yesterday’s luncheon.
This year’s winners are:
a. 13-15 years old category:
i. JOHN CAPORALETTI; Olney, MD
ii. MIA LAZAR; Blacksburg, VA
b. 16-18 years old category:
i. DAVID HAMILTON; Lewisville, NC
ii. KEVIN BEAL; Frederick, MD
c. 19 years and over category:
i. TAL MINKS; Tampa, FL
PAUL GRAYSON of the 19 and over category received the President’s Honorable Mention.
The winning videos will soon be posted on the IPOEF website, and the winners will be honored at this year’s Foundation Awards Dinner in Washington, DC on December 8.
2015 INVENTOR OF THE YEAR ANNOUNCED DURING ANNUAL MEETING LUNCHEON
IPO Education Foundation President (IPOEF) LOUIS FOREMAN announced JAY WALKER as the winner of IPO’s 2015 Inventor of the Year Award during yesterday’s Annual Meeting Luncheon. Mr. Walker is Executive Chairman of Walker Innovation, Inc. and founder of the travel and hospitality site, Priceline, and multichannel marketing company, Synapse Group. He is the eleventh most patented living inventor, as named inventor on more than 700 U.S. patents. He is also curator and chairman of TEDMED, the health and medicine edition of the TED organization.
Tune in to the IPOEF’s Innovator Insights blog series for an upcoming in-depth interview with Mr. Walker examining his road to being an inventor, as well as his insight on some of the key issues surrounding patent protection today.
CHIEF JUDGE PROST TO IPO MEMBERS: WE NEED YOUR HELP
U.S. Court of Appeals for the Federal Circuit Chief Judge SHARON PROST told Annual Meeting attendees during her luncheon keynote yesterday that, as the Federal Circuit’s workload increases and issues continue to grow more complex, “it’s really important for us to hear the view of innovators.” She urged IPO members to continue to submit amicus briefs and to make their voices heard through organizations like IPO. “It’s up to you,” she said. On the topic of the Supreme Court, the Chief Judge said that, although the High Court’s tendency to overturn Federal Circuit decisions can be a challenge, it is not surprising that the justices would want to rein in special rules for IP cases.
“Irrespective of what any of us might think, these are the checks and balances we have in the greatest judicial system in the world,” she said. Reiterating a theme of her recent interview with Innovator Insights, Chief Judge Prost also told attendees that her now full court is up to the challenges ahead with respect to the rising number of appeals from the Patent Trial and Appeal Board (PTAB). “We have 12 active judges and six senior judges, so our court is up to it,” she said.
NEW IPO BOARD MEMBERS ELECTED
Just prior to Monday’s opening plenary session of the Annual Meeting, Association President PHIL JOHNSON asked members to approve the nomination of JOSEPH KIRINCICH of Avaya, Inc. and STEVEN WILDFEUER of RELX Group to the IPO Board of Directors. The nominations were approved and both were elected. Their two-year terms begin January 1, 2016.
DON’T MISS: IPO EXECUTIVE DIRECTOR HERB WAMSLEY TO SHARE HIS INSIGHT ON THE PATENT SYSTEM AFTER 32 YEARS WITH IPO
During today’s Annual Meeting Luncheon, IPO Executive Director HERB WAMSLEY, who retires from his position at the end of this year, will share his “call to arms” for IP owners and practitioners with an interest in preserving the U.S. patent system. Mr. Wamsley has served as IPO’s Executive Director for 32 years, since leaving his 18-year career with the USPTO. Don’t miss his last Annual Meeting address as Executive Director today between 12:00n.n. and 1:30p.m. in the Regency Ballroom/Gold West.
DON’T MISS: GET YOUR NON-PATENT CLE FIX WITH THIS YEAR’S TRADEMARK TRACK
Choosing the content for this year’s trademark track was a unique challenge, due to the number of important developments and cases in the so-called soft IP realm, says 2015 Program Committee Vice Chair for Trademarks, MATTHEW OWEN of Caterpillar, Inc. Yesterday’s plenary session on U.S. Supreme Court cases (see above) included discussion of a number of trademark and copyright cases, and the five individual trademark sessions taking place this year promise to be just as exciting. “There’s a very interesting session planned that will talk about the convergence of patent and copyright in software, and another on 3D shape marks,” says Mr. Owen. “For people looking to get their fix of non-patent CLE, there’s something at every turn.”
Today’s panel, “TTAB Update and Implications of B&B Hardware, Inc. v. Hargis Industries, Inc. for Corporations,” will expand upon yesterday’s opening plenary discussion of the B&B Hardware case. The panel will be moderated by MICHAEL METTEAUR of Norton Rose Fulbright and speakers will include Judge GERARD ROGERS of the TTAB, KATHERINE BASILE of Reed Smith and Mr. Owen offering an in-house perspective. “It’s an opportunity for us to look at the practical considerations of when to bring cases before the TTAB, when to bring them before the courts and when to try both. It’s not every year we get a trademark case at the Supreme Court,” says Mr. Owen.
Many of the planned sessions will also examine timely international developments, such as plain packaging and the re-opening of the Cuban market. “I’m excited to see that four out of the six committee breakout sessions chosen this year have a very strong international theme—many of them with international panelists and speakers,” says Mr. Owen. “For folks looking to gain a broader perspective, there’s certainly going to be a lot to consider.”
Don’t miss Mr. Owen’s session, “TTAB Update and Implications of B&B Hardware, Inc. v. Hargis Industries, Inc. for Corporations,” which will take place from 10:15a.m. to 11:45a.m. in Columbus Hall A-E/GOLD EAST.
DON’T MISS: HOW TO STEER CLEAR OF ETHICAL BATTLES ON SOCIAL MEDIA
Today’s closing plenary session, “Ethics in Social Media Controversies,” featuring DARREN CAHR of Drinker, Biddle & Reath, MATTHEW CHUNG of IBM, EVAN GOURVITZ of Ropes & Gray, and CARLA MICHELOTTI of Leo Burnett Worldwide, will address some lesser-known pitfalls for companies that are active on social media. For instance, did you know that, as an attorney, your LinkedIn profile may put you at legal risk? Or that sending Lady Gaga a Happy Birthday Tweet could land your company in court? For that matter – does your marketing department know?
The session will take place today from 4:00p.m. to 5:30p.m. in the Grand Ballroom/GOLD EAST and will be moderated by Mr. Gourvitz, who has 20 years of experience working with social media issues. “Companies and their brands are using Facebook, Twitter and other social media venues more than ever, and they and their marketing departments aren’t always aware of the potential risk that poses – both in terms of legal liability and ethical exposure,” says Mr. Gourvitz.
PANELISTS DISCUSS SOFTWARE PROTECTION IN POST-ALICE, POST-ORACLE WORLD
ANDREW WOJNICKI of IBM set the tone of yesterday’s breakout session, “Double the Opportunity: Patent and Copyright Protection for Software after Alice and Oracle,” by remarking that “times are tough in the world of software patents.” Wojnicki described three post-Alice trends related to software protection, including: (1) driving inventions away from the software interface to make discovery more difficult; (2) increasing the patentee’s pleading burden; and (3) developing creative terms to contract around patent issues. MATTHEW SARBORARIA of Oracle said that patent allowance rates post-Alice have “fallen off a cliff.” He contrasted the low allowance rates with Oracle v. Google, in which the Federal Circuit found Java code copyrightable as “original,” “creative,” and “expressive.” Mr. Sarboraria also noted the court instructed that any constraints on interoperability or compatibility were the copier’s burden and were not relevant to copyrightability. DAVID LEICHTMAN (Robins Kaplan) concluded with a comprehensive overview of available copyright-related remedies, including statutory damages and injunctive relief. Mr. Leichtman highlighted that the injunction grant rate has remained high, while the motions requesting such relief have fallen significantly. The session was organized by the Software & Business Methods and Copyright & Anti-Piracy Committees and moderated by JOSHSUA SIMMONS of Kirkland & Ellis.
IN-HOUSE IP COUNSELS REVEAL FINDINGS OF PROJECT ON CORPORATE BEST PRACTICES FOR MANAGING IP
In yesterday’s breakout session, “Corporate IP Management Best Practices,” SCOTT WEINGUST of Stout Risius Ross, a member of IPO’s Corporate IP Management Committee, moderated a panel discussion of four in-house IP counsels: ALYSSA HARVEY DAWSON of Harman International Industries, Inc., SAM PACE of Praxair, Inc., DANIEL STAUDT of Siemens Corp., and MIKE YOUNG of Roche, Inc. Mr. Weingust shared results of IPO’s Corporate IP Management Committee project to capture information regarding corporate best practices for managing IP. The speakers discussed and reacted to the information obtained through interviews of in-house counsel at more than a dozen leading companies across various industries, focusing on topics such as IP strategy, organizational structure, patent prosecution, software, metrics, and licensing.
Preliminary findings of the project are that a best practice for one company may not be relevant for another, since best practices are contingent on various unique aspects of a company, such as industry, size, culture, and diversity. Even among similar companies, different practices can be equally effective.
On the issue of IP strategy, preliminary findings are that most companies obtained IP for freedom-to-operate and defensive purposes and that fewer were focused on excluding others. A significant amount of time was devoted to discussing models for developing an IP strategy and alignment to business purposes. Success seemed tied involving legal, business leaders, R&D, IP managers, and other stakeholders.
With regard to patent prosecution, Pace said that Praxair prepares a significant percentage of its patent applications in house. He said the perceived value and importance of a patent to a company is a very important consideration in determining whether to take prosecution in-house, but he believes that doing more in-house leads to higher quality patents—particularly depending on the longevity of in-house counsel.
ANNUAL MEETING PANEL SUGGESTS BEST PRACTICES IN PATENT LITIGATION
In yesterday’s committee breakout session, “Best Practices in Patent Litigation: What Practitioners Need to Know Given Recent Procedural Changes,” members of the IPO Litigation Committee discussed best practices for securing just, speedy, and inexpensive resolution of patent cases in light of recent developments in local patent rules, the Judicial Conference, patent legislation and proposals from the recent WG 10 reports of The Sedona Conference. Moderator DAVID LONG of Kelley Drye & Warren LLP, ERIC COHEN of Katten Muchin Rosenman LLP, GARY HOFFMAN of Pillsbury Winthrop Shaw Pittman LLP, Retired U.S. District Chief Judge, JAMES HOLDERMAN of JAMS and ADR Neutral, and ELEY THOMPSON of Foley & Lardner LLP discussed possible litigation strategies given changes to the standard for pleading patent infringement that will occur at the end of 2015, when Form 18 and Rule 84 are deleted from the Federal Rules of Civil Procedure. Panelists suggested that including a claim chart for at least one claim in a complaint may help avoid a motion to dismiss. They also suggested getting clients’ permission to speak with opposing counsel.
Other amendments to the Federal Rules that will take effect later this year also warrant best practices on a number of topics. These include: allowing only discovery that is relevant to claims and defenses and proportional to the needs of the case; issues regarding pre-discovery motions, such as the appropriate timing for raising Section 101 issues and legislative proposals to limit venue or automatically stay discovery pending resolution of certain motions; when to request stays pending the resolution of inter partes review and covered business method review proceedings; and issues related to claim construction, such as the timing of the claim construction hearing.
Judge Holderman made several comments on best practices for managing trials, including allowing jurors to submit questions to clerks during the trial that could be asked during the evidentiary phase and allowing attorneys to make interim statements between witnesses to provide context or explain the importance of evidence presented.
PICTURES FROM YESTERDAY’S ANNUAL MEETING EVENTS ARE UP ON IPO’S FACEBOOK PAGE