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Issue 19

16 April 2019

Also in this issue:

US District Court Analysis What to do at INTA 2019

A clear road to the top

The future of the US IP system


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In this issue

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US Profile

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District Courts

Ben Wodecki explores what makes America great. Again.

Analysis of two US district courts and how recent case law have altered their day-to-day

Alibaba Award

Trump Policy

Editor: Barney Dixon barneydixon@blackknightmedialtd.com +44 (0)203 750 6026 Reporter: Ben Wodecki benwodecki@blackknightmedialtd.com +44 (0)203 750 6017

Alibaba’s Matthew Bassiur has won the Luxury Law Innovator in IP Rights at Technology Award at the Luxury Law Summit

Designer: James Hickman

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jameshickman@blackknightmedialtd.com +44 (0)203 750 6021 Contributors: Becky Butcher Associate Publisher: John Savage johnsavage@blackknightmedialtd.com +44 (0)203 750 6021

EPO Grants

EPO president António Campinos has submitted questions to the Enlarged Board of Appeal related to the patentability of plants

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Publisher: Justin Lawson justinlawson@blackknightmedialtd.com +44 (0)203 750 6028 Office Manager: Chelsea Bowles accounts@blackknightmedialtd.com

US president Donald Trump has signed a memorandum on combating trafficking in counterfeit and pirated goods

Industry Events

Pick up your copy of IPPro at all of IP’s major events

p7

Social Dialogue

Despite a change of hands at the EPO, little has changed in terms of social dialogue, representatives from the office’s Central Staff Committee have claimed

p13

INTA Preview

What’s on at the International Trademark Association’s 2019 Annual Conference

Published by Black Knight Media Ltd Copyright © 2018 All rights reserved

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Trademarks • Latest News

Nopparat Khokthong/shutterstock.com

Alibaba IP VP wins IP protection innovator award from Luxury Law Alliance Alibaba’s vice president of global IP enforcement, Matthew Bassiur, has won the Luxury Law Innovator in Intellectual Property Rights and Technology award at the Luxury Law Summit in London. The award was presented at the summit on 2 April. The summit is made up of leaders and executives from various luxury brands including Gucci, Louis Vuitton, and Chanel. Fred Mostert, president of the Luxury Law Alliance, which presides over the awards, said that they recognise leaders in the practice of luxury law. Bassiur’s award recognised “extraordinary leadership in IP protection on an international level and his many accomplishments throughout a distinguished career in both the government and private sectors”. Members of the Luxury Law Alliance, including Gucci, Tiffany, and Michael Kors left the International AntiCounterfeiting Coalition (IACC) in protest over Alibaba’s membership in May 2016. The IACC suspended Alibaba from the coalition, even as it continued to cooperate with it on the MarketSafe programme. Along with this award, which sees Gucci, Tiffany and Michael Kors seemingly endorse the ecommerce company’s IP efforts, 5 IPPro

despite previous disagreements, Michael Kors recently joined Alibaba’s Anti-Counterfeiting Alliance. Mostert emphasised that Alibaba “has significantly improved its standing within the international community. Alibaba over the past three years has gone from being criticised for its efforts in IP protection to being viewed as a leader and innovator in the field.” Bassiur said he was honoured to receive the award on behalf of Alibaba. He added: “Through meaningful collaboration and continuous innovation, we are achieving great success together with industry stakeholders. We have come far, but there is still much to do.” “We are all part of the solution and our past accomplishments in IPR protection are just the beginning.” The award comes less than a week after the Alibaba AntiCounterfeiting Alliance held its annual spring meeting in Shanghai, where it announced that investigations by its members led to counterfeit product seizures worth $536.2 million in 2018. American Apparel & Footwear Association president and CEO Rick Helfenbein said: “Alibaba has grabbed the flag on IPR protection and is running with it.” www.ippromagazine.com


Trademarks • Latest News Public is misinformed about IP, CIPU report finds By and large, the public is “misinformed” or, at best underinformed, about intellectual property, according to a report from the Center for IP Understanding (CIPU). The report, which focuses on IP awareness and attitudes conducted over the past decade in the US, Europe and Asia “reveals a growing disconnect between consumers IP awareness and behaviour”, CIPU said. This has resulted in higher levels of infringement and reduced use and value of IP.

Fabrizio Andrea Bertani/shutterstock.com

MLS opposes Inter Milan trademark A US trademark for the term Inter from Inter Milan has been opposed by Major League Soccer (MLS) over fears it would damage the name of David Beckham’s new American soccer team. Inter Milan had attempted to register the term Inter, but MLS opposed its application as the term is associated with various other football clubs around the globe. Examples shown by the league included Inter Leipzig from Germany’s fifth tier, NK Inter Zaprešić from Croatia’s Prva HNL (first tier), and S.C. Internacional from Brazil, who are commonly known as Inter. MLS argued that consumers don’t associate the term Inter with one team and the examining attorney stated that the Inter application was a potential bar to the registration of Beckham’s team due to a likelihood of confusion. Beckham’s expansion team Club Internacional de Fútbol Miami, known as Inter Miami, is due to appear in Major League Soccer (MLS) in 2020 along with two other expansion teams. Some 24 teams now compete in the league, compared to the ten when it first launched in 1994. Beckham previously played for Inter Milan’s biggest rivals, AC Milan. He also played in Major League Soccer (MLS) for soccer club LA Galaxy.

The report says: “With IP posed to make an even bigger impact on the global economy in the 21st century, there is much work to be done to raise awareness about the practical implications of IP on commerce, culture and individual lives.” Among the reports key findings is that more people understand copyright than patents, meaning it may be better to ‘bundle’ the discussion of patents with copyrights, counterfeits and brands. Despite this greater understanding, 31 percent of those who purchased counterfeits said that it was acceptable to do so if no legal alternative was available. The report also found that there was a common perception that IP rights only benefit large corporations, which it said reflects “very low awareness of the fact that IP protections are often most beneficial to small- and medium-sized enterprises and individuals”. One area the report touched on was whether or not IP should be taught at higher education institutions, with surveyed teaching staff overwhelmingly saying yes (76 percent). The report concluded that both education level and age have a “pronounced effect” on an individual’s understanding of IP and suggested that if programmes can be designed to effectively reach young people about IP basics, those same resources can improve understanding among adults.

MLS filed its own application for Inter Miami’s name and logo in September 2018. 6 IPPro

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Trademarks • Latest News Andrea Izzotti/shutterstock.com

Quarles & Brady hires four Quarles & Brady has added four patent attorneys to its intellectual property group. Kris Fredrick, Tambryn VanHeyningen, and Scott McBride will join the firm as partner, while Tolga Gulmen will join as of counsel.

Trump signs memorandum on tackling illicit goods and piracy US president Donald Trump has signed a memorandum on combating trafficking in counterfeit and pirated goods. Trump signed the memorandum, which outlines policies aimed at tackling counterfeits online on 3 April. The memorandum states that the policy of Trump’s administration is to “protect American businesses, intellectual property rights holders [and] consumers...from the dangers and negative effects of counterfeit and pirated goods”. It said that the US “must improve coordinated efforts within the Federal Government to address this challenge”. The memorandum called for the efforts currently used by the Federal Government against online counterfeiting and piracy to be expanded and enhanced “to better address the scale, scope, and consequences of counterfeit and pirated goods trafficking”. The memorandum orders comprehensive data regarding the extent of counterfeit trafficking through online third-party marketplaces, suggesting such data is currently “lacking”. Within 210 days of the memorandum’s signing, a report on the state of counterfeit and pirated goods trafficking and recommendations will be published. Various government agencies, as well as the attorney general, will prepare and submit a report to the president. The report will provide data and extra information on the extent of counterfeits on online third-party marketplaces and will identify factors that contribute to trafficking illicit goods. 7 IPPro

Fredrick is a former general counsel and IP counsel for Honeywell International Laboratories. He will work in the firm’s Minneapolis office. Over his two-decade career, he has built up extensive experience in implementing portfolio development and growth, as well as conducting licensing and expansion opportunities. Gulmen and VanHeyningen will be joining the firm’s Madison office. Gulmen previously founded a law firm focused on university technology transfer offices and startups. He works with technologies across a wide variety of industries, including chemical sciences, nanotechnology, and life sciences. VanHeyningen focuses her practice on both domestic and international patent prosecution. She works with companies in the life sciences, chemistry and biotechnology industries. Scott McBride works on counselling and opinion work related to freedom-to-operate, non-infringement and patent invalidity. A former research scientist, he provides patent prosecution and enforcement both domestically and internationally. Jack Cook, national IP practice group chair at Quarles & Brady, commented: “Kris Fredrick, Tolga Gulmen, Tambryn VanHeyningen, and Scott McBride each bring unique backgrounds. Their ability to craft unique IP strategies that help to drive business objectives is widely recognised, as reflected by their national practices.” Cook concluded: “The fit was natural because they join an already-outstanding team designed to help our clients see around corners and utilise IP to advance their business goals.”

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Trademarks • Latest News LinkedIn dominates sexual fetish site Social media platform LinkedIn has emerged victorious in a UK trademark dispute with a sexual fetishist site. The site, KinkedIn, attempted to register its name in class 45, covering dating services in 2017. LinkedIn opposed the registration, arguing that KinkedIn is “highly similar” and that it was registered in similar classes. LinkedIn’s trademark is registered in class 45. It argued that KinkedIn would lead to misrepresentation and would cause damage to its brand, adding “particularly if the services provided by the applicant are of an adult and sexual nature”. In its counterstatement, KinkedIn denied all of the grounds of LinkedIn’s opposition and denied that the marks aren’t similar. It also alleged that there is no similarity in the services offered, logo, or website.

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The UK Intellectual Property Office (UKIPO)’s examining officer found that bar the first letter of each term, both are entirely identical and the first syllable of each term, ‘Link’ and ‘Kink’ are ”aurally similar to a high degree”. The examiner found that the distinctiveness of LinkedIn’s mark has “not been enhanced in relation to the identical or similar services in class 45 but it is inherently distinctive to a medium degree”. However, the examiner noted that the marks are “conceptually different”. Despite this, the contested mark was refused on the grounds that it was similar in terms of aesthetic and services, adding that social introduction and networking services is a broad term and could cover KinkedIn’s offerings. UKIPO ordered KinkedIn’s owners, JK Solutions, to pay LinkedIn £1,200 in costs.

www.ippromagazine.com


Trademarks • Latest News Stone Brewing denied preliminary junction v MillerCoors Stone Brewing’s attempt to get a preliminary injunction against MillerCoors in a trademark infringement case over the term ‘stone’ has been denied. The US District Court for the Southern District of California denied Stone’s motion, ruling that the brewing company had not shown a likelihood of suffering irreparable harm, despite finding its trademark infringement claim against Miller “moderately strong”. Stone Brewing accused MillerCoors of trademark infringement in 2018, following the rebrand of MillerCoors’ Keystone product, which now prominently features the term ‘stone’ on its packaging. Stone Brewing accused MillerCoors of running a “misguided campaign to steal the consumer loyalty and awesome reputation of Stone’s craft brews and iconic stone trademark. MillerCoors recently decided to rebrand its Colorado Rockies-themed “Keystone” beer as “Stone”—simultaneously

abandoning Keystone’s own heritage and falsely associating itself with Stone’s well-known craft brews.” MillerCoors hit back at Stone Brewing’s claims, denying the allegations and lambasting Stone’s “bombastic hyperbole” and “pugnacious attitude”. MillerCoors added that the Stone brand is “well known in the beer industry for its bombastic hyperbole, pugnacious attitude, and for launching public insults at brewers small and large”. “Stone Brewing even proudly markets itself as ‘Arrogant Bastard,’ and sells a whole line of beers under the ‘Arrogant Bastard’ name.” “MillerCoors admits that Stone Brewing has obtained a federal trademark registration for the Stone trademark. MillerCoors denies that Stone Brewing’s Stone trademark is incontestable as to MillerCoors.”

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Trademarks • Latest News

WIPO launches free AI trademark search tool for brands The World Intellectual Property Organization (WIPO) has launched an artificial intelligence (AI) powered image search tool for brands. The search tool can determine trademark image similarity by identifying shapes and colours in trademarks. It utilises trademark data from the Madrid System, as well as from large trademark offices. The search tool currently covers national collections from 45 trademark offices, which covers a total number of almost 38 million trademarks. WIPO’s new search tool aims at providing narrower and more precise results for similar marks compared to previous tools.

Campinos asks Board of Appeal to clarify pepper plant ruling European Patent Office (EPO) president António Campinos has submitted questions to the Enlarged Board of Appeal related to the patentability of plants related to conventional breeding. The president’s questions comes after a EPO Administrative Council meeting where a Board of Appeal ruling in the revocation of a pepper plant was discussed. Campinos’ questions to the Board of Appeal ask it to clarify the applicable legal framework. Patents covering conventionally bred plants and animals are prohibited by rule 28(2) for the interpretation of the European Patent Convention (EPC). Campinos has come under pressure from representatives from member states, EPO users, and independent pressure groups as a result of the ruling. Some organisations recently organised a protest outside the EPO’s building in Munich. According to an EPO statement, Campinos’ considers the referral to the Enlarged Board of Appeal as “an important step on the way to restore legal certainty in the interest of the users of the European patent system and the general public”. 10 IPPro

WIPO director general Francis Gurry commented: “In the field of trademarks, our state-of-the-art AI technology is a major improvement that will create greater certainty for the development of new image marks and greater ease for monitoring potentially misleading or conflicting new registrations.” “This kind of enhanced business intelligence is invaluable in a globalized economy in which the volume of economic agents seeking brand protection is expanding rapidly.” He added: “The increasing demand for IP rights across the globe is overwhelming currentgeneration systems.” “This is why WIPO is leading on the development of artificial intelligence-based tools that improve the global IP system.” “A larger data pool means better AI results, so I encourage trademark offices whose collections are not included in the Global Brand Database to consider adding them as soon as they can.”

www.ippromagazine.com


Patents • Latest News PTAB’s IBM patent ruling reversed by Court of Appeals A Patent Trial and Appeal Board (PTAB) ruling that considered an IBM patent to be invalid has been reversed by the US Court of Appeals for the Federal Circuit. IBM’s US patent (7,631,346) covered a method and system for a user account creation option through a single sign-on process. It covers technology that gives a user access to multiple applications “without regard to authentication barriers that protect each particular system supporting those applications”.

US patent (7,680,819) owned by Mellmer and Japanese Publication (Tokkai 2004-302907A) from Sunada. IBM appealed the PTAB’s ruling, with the US Court of Appeals for the Federal Circuit reversing the Mellmer ruling. “We have been pointed to no substantial evidence to support the PTAB’s finding that Mellmer discloses the separate ‘singlesign-on’ limitation of all claims at issue.”

US Patent and Trademark Office (USPTO) director Andrei Iancu acted on behalf of several private companies in filing two inter partes reviews that argued several claims of the patent were invalid. Some of the private companies who took issue with the patent have settled with IBM and were not parties in this instance. The Patent Trial and Appeal Board (PTAB) found the claims unpatentable in two instances, due to anticipation from a

However, the court of appeals vacated the decision related to the Sunada ruling, due to it resting on an incorrect claim construction on the federated computing environment limitation of all the claims at issue. The court remanded the Sunada ruling for further consideration under the correct construction. With relation to the PTAB’s Mellmer decision though, the court of appeals found that it featured the same claim construction error, but said “it does not affect our result”.

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Patents • Latest News Little has changed in terms of EPO social dialogue, CSC reps say Despite a change of hands at the European Patent Office (EPO), little has changed in terms of social dialogue, representatives from the office’s Central Staff Committee (CSC) have claimed. In an intervention at the EPO’s most recent Administrative Council meeting, staff representatives claimed that while they would have liked to provide positive news about social dialogue and the social situation at the office, “no progress worth noting has been observed”. During the meeting, EPO president António Campinos gave an update to the council on the development of the EPO’s strategic plan. Campinos also discussed developments on social dialogue and the need to foster it. The first goal of the strategic plan is to build an engaged, knowledgeable and collaborative organisation. This includes looking at ways to attract talent, as well as achieving more harmonious social relations and to ensure there is meaningful dialogue between social partners. During his speech, Campinos said that the office would be reviewing its communications with staff, as the larger the organisation gets, the more difficult it becomes to communicate effectively. He explained that in an organisation the size of the EPO, this was important and without effective communication, there was a danger that staff could be left without the information they need. He said effective communication would be crucial for building confidence in management decisions and for management decisions and for promoting a shared vision on the opportunities and challenges ahead. But he noted that communication is not a one-way street and said the office needed to be a more active listener as well. Campinos said the office’s communication strategy will be reviewed, strengthened and made more effective, with an aim to ultimately increase staff engagement. However, in interventions from staff representatives, it was said that, while Campinos is less “hostile” than his predecessor Benoît Battistelli, he is still surrounded by the same former administration. Battistelli’s administration was hounded by disagreements with staff.The representatives said it was difficult to express the “level of perplexity” they sometimes experience in the council. For example, they added that the council is applauding and praising staff for their impressive work, but on the work floor of the EPO staff are facing the “worst reporting exercise in terms of negative reports in the history of the EPO”. 12 IPPro

The staff representatives also pointed out pending cases regarding staff representatives that they claimed were unduly targeted by the previous administration. These cases were said to be far from any semblance of an acceptable solution. Thirdly, the staff representatives said the voice of staff was still being ignored when it comes to excessive production pressure and its link to quality. They explained that their expressed concerns that excessive production leads to lower quality have been “derided and dismissed”. A recent publication by the Staff Union of the EPO (SUEPO) in Munich said that production pressures were equal to last year, and questioned how the office expects patent quality to increase. SUEPO said: “Newcomers face high production pressure and are on five-year contracts, which make it very difficult for them to settle down in Munich and have a family. In the meantime, the average retirement age drops below 60. How can the office expect to retain and keep high skilled works?” SUEPO also noted that despite claims of increasing social dialogue, SUEPO—which represents about half of the staff—is still excluded as a negotiation partner.

USITC appoints SEC veteran as administrative law judge Judge Cameron Elliot has been made an administrative law judge at the US International Trade Commission (USITC). Elliot will be managing litigation with cases that most often involve allegations of patent and trademark infringement. Before joining the USITC, Elliot served in a similar role with the US Securities and Exchange Commission in Washington DC and the Social Security Administration in both New York and Newark. He has served as a US attorney for the Eastern District of New York in Brooklyn, and the Southern District of Florida in Miami. He was also a trial attorney on the Intellectual Property Staff in the Commercial Litigation Branch of the US Department of Justice’s Civil Division.

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Patents • Latest News Achinthamb/shutterstock.com

Yamaha in the rough after PTAB quashes invalidation calls Yamaha Golf Car Company has lost two Patent Trial and Appeal Board (PTAB) oppositions against two golf cart-related patents owned by Club Car. Yamaha alleged that two Club Car patents (7,239,965 and 7,480,569) covering systems for tracking golf carts were invalid across several claims. The patents cover automatically restricting a golf cart’s movement and reducing risks from driving in wet areas. The 965 patent

Google loses invalidation call on traffic information patent Google has lost a battle with an inventor after it called for invalidation of a patent related to a traffic information system. The search engine giant alleged that a US patent (6,233,518) assigned to Ji-Soo Lee was invalid in two of its claims (45 and 46) and filed an inter partes review petition. The Patent Trial and Appeal Board (PTAB) opted to review both claims, but only on one of the five grounds Google raised in its petition. In its final written decision, the board held that Google failed to establish that claims 45 and 46 are unpatentable. Upon appeal to the US Court of Appeals for the Federal Circuit, Google again was rebuffed after it affirmed the PTAB’s ruling. The Court of Appeals remanded the case back to the PTAB for it to consider whether claims 45 and 46 are unpatentable based on the four non instituted grounds raised by Google.

The PTAB denied Yamaha’s challenge against the 965 patent in the first instance on all claims bar claim 20. It then reconsidered Yahama’s inter partes review, as it “overlooked material fact disputes created by competing expert testimony, which at the institution stage should have been viewed in a light most favourable to Yamaha rather than Club Car”. Club Car opposed Yamaha’s challenges and filed a statutory disclaimer under section 253 of the US Patent Act for claim 20 of the 965 patent. The PTAB ruled in favour of Club Car, stating that Yamaha hadn’t provided enough evidence to support its argument that nine of the patent’s claims were unpatentable. The 569 patent Like the 965 patent, the PTAB instigated Yamaha’s calls for a review in the first instance, but denied a review over certain claims. Yamaha called for a rehearing, which was granted. The PTAB said it had again overlooked material fact disputes and competing witness testimony related to the patent’s previous disclosure. On reconsideration, the PTAB ruled in favour of Club Car, holding that Yamaha had not shown sufficient evidence that claims 11 and 17 to 19 of the 569 patent are unpatentable. The 569 is now the subject of litigation in the US District Court for the Southern District of Georgia as Yamaha continues to argue that the patent is invalid.

The court awarded costs to Lee. 14 IPPro

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US • Country Profile

A clear road to the top A number of changes to intellectual property jurisdictions with close ties to the US could have a knock on-effect on its future

T

Ben Wodecki reports

hroughout the course of his presidency, US president Donald Trump’s two key stances appear to have been immigration and intellectual property. The Music Modernization Act, a new national cybersecurity strategy and a tough stance against IP theft in China have been some of the former reality TV stars key policies during a tumultuous time in office.

16 IPPro Robert Clay Photography/shutterstock.com

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US • Country Profile

One such policy gracing headlines over recent months is the renegotiation of the North American Free Trade Agreement (NAFTA), the US-Mexico-Canada Agreement (USMCA), has been touted as changing the face of America’s IP relationship with its neighbours. USMCA aims to bring Canadian and Mexican IP law in line with that in the US. For example, USMCA would bring in an extension of patent protection for pharmaceutical companies in Mexico and Canada to 10 years for biologics, bringing the term closer to the US’s 12-year protection. The agreement also expands the scope of products eligible for protection. Also required under the USMCA are adjustments to patent terms in both neighbouring nations, which in turn should remove unreasonable patent office delays. On top of this, trademark and copyright infringement cases will have to allow for statutory damages to be awarded if applicable and more robust trade secret protection laws are required. Under the USMCA, both Mexico and Canada have been instructed to tighten up their border controls to quell the number of counterfeits, as well as offer remedies to police units countering counterfeit activities. The deal was close to completing, but recent changes to Mexico’s government and prospective changes in Canada could throw a proverbial spanner in the works. But, regardless of any delays, how could the agreement affect US IP?

Connections for protections Trump previously said the USMCA is “a great deal for all three countries” and would “solve deficiencies and mistakes in NAFTA”. Trump has continually praised the USMCA, asking Congress to pass the agreement in a recent State of the Union Address. During that speech, he said it will “protect IP” for US workers. The USCMA undoubtedly holds the potential to help keep the US competitive in terms of trade stemming from

17 IPPro Robert Clay Photography/shutterstock.com

innovation and Trump has been extremely forward-looking when it comes to trying to make the nation competitive in IP. But any effect on US workers will likely be indirect, and the same will go for workers in Canada and Mexico. Robert Duminiak, partner at Howson & Howson, remarks that most IP is held by the employers of US workers, not the workers themselves. He adds that those who do hold some form of stake or innovative contribution would see a more direct impact, but mentions that workers holding such stakes are “relatively few”. Gaston Kroub, partner at Kroub, Silbersher & Kolmykov, notes that content creators and workers who produce copyrighted materials could stand to benefit from the USMCA, as the neighbouring nations will be tightening their copyright laws. Backing this was Motion Picture Association of America chair and CEO Charles Rivkin, who applauded Trump’s efforts regarding the USMCA. Josh Gerben, founder of Gerben Law Firm, dubbed the USMCA “a modernisation effort”. He agreed that it does look to protect US business and called it “a positive development for US companies” but questions Trump’s comments on whether it would directly help US workers. Despite shared concerns, Gerben, Kroub and Duminiak all hope that at least some benefits will be enjoyed by the average US worker.

Dealing with bad actors Another issue that Trump’s stance on IP has thrust into the limelight is Chinese-originating bad actors stealing US IP. Trump embarked on a trade war with the nation over the issue, slapping them with billions of dollars worth of tariffs. At the start of February, Trump met with Chinese vice premier Liu He to discuss the ongoing trade war and the improvement of IP protection in China.

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US • Country Profile

Despite his approach, Trump’s efforts have done little to pause the issue. Both Duminiak and Gerben remark that they have seen no significant changes regarding this. However, Duminiak conceded that Trump’s efforts regarding tariffs have “pressed the Chinese government to at least engage in meaningful talks”. The president heralded his cyber strategy last September, claiming it would stop Chinese thefts of US IP. The strategy specifically mentions China, claiming that it has been engaged in “cyber-enabled economic espionage and trillions of dollars of IP theft”. It says that those who steal US IP are “adversaries” attempting to undermine the US economy and “sow discord in our democratic processes”. Entities are also supposedly subsidised by the Chinese government to steal IP and, according to Gerben, file fraudulent trademarks in order to intentionally jam up the US trademark system. Figures shared by Gerben show that around 10 percent of all trademark filings in the US over the last few years have come from Chinese-based entities, a “massive number”. He says: “The concern is that they are flooding our trademark system and sometimes they are obtaining trademarks for things that they are not even selling in the US.” Chinese individuals can obtain $1,200 to $1,500 from the Chinese government for registering a US trademark, despite it only costing $200 to $300 to file the application. China’s behaviour may affect it on a higher macro level in terms of trade with the US, but any broader trade deal should include penalties for any theft of US IP, according to Gerben. He said, although very unlikely, this would “bring some teeth to US protection”. He adds that these thieves are “making out like bandits, they’re getting what they want and just getting a slap on the wrist”.

18 IPPro Robert Clay Photography/shutterstock.com

Trump’s team is currently in talks with China, but it seems that such a complex issue may require a bit more than just one or two meetings. Any deal needs to also address the forced transfer of technologies, which ultimately benefits Chinese entities planning on infringing. Until a deal containing those provisions is reached, Kroub refers to the US’ efforts to rein in Chinese IP theft as a “work in progress”. Trump is due to meet with Chinese president Xi Jinping to discuss IP protections and a possible end to the tariffs. After meeting with Chinese vice premier Liu He earlier this year, he tweeted that the meetings are “going well with good intent and spirit on both sides”. But despite Trump’s claims of good intent, Kroub offers some scepticism in relation to whether a deal is actually imminent and questions whether China’s mass overhaul its domestic IP framework is “truly focused” on ending theft of US IP, as opposed to better positioning Chinese companies to compete globally. With all this emphasis on international agreement, there are still many things left unanswered at home. Additional judicial resources to address IP disputes, as well as extra resources for the US International Trade Commission, are in serious need warns Kroub, especially when the US IP scene is continuing to pick up the pieces following the introduction of the American Invents Act and the decision in Alice v CLS Bank. Kroub expressed a dire need for there to be a publicprivate partnership that is “realistic about addressing IP infringement in the US, by offering various mechanisms to US IP owners to deal with that infringement in a costeffective and timely way”. A lot may need to change for the US’ IP system to remain the best in the world, but with the prospective implementation of the USMCA and China now firmly seated at the table, the road ahead seems clear.

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US District Courts • Analysis

A tale of two districts The best of times, the worst of times

Ben Wodecki reports

A

recent RPX report revealed that patent litigation in the US saw a seven percent drop last year, with District Courts still missing out as a result of the fallout of TC Heartland v Kraft Foods, Alice v CLS Bank and the America Invents Act (AIA). www.ippromagazine.com

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US District Courts • Analysis For example, the decision in TC Heartland has meant that the Eastern District of Texas has seen a significant drop in filings and has a far lower number of injunctions granted than district courts in Delaware or Northern California.

The statistics may not be out yet, but both Ossola and McGraw expect the district to maintain its fast docketing speeds and continue to be “one of, if not the, fastest dockets in the country”.

The report stated that TC Heartland has “continued to cause notable increases in litigation for certain districts that have historically been less popular”.

Steadfastness

The report greatly focused on the Eastern District of Texas, the District of Delaware, and the Northern District of California and may have revealed some interesting observations, but what about other districts?

The rule From January 1994 to December 2014, US district courts have seen an average of 9,167 IP cases filed every year. The Eastern District of Virginia was expected to see an uptick in cases last year following TC Heartland, as it was seen as a venue with fast trial times and a close proximity to the nation’s capital. The district is also attractive for IP cases due to its quick rulings on pre-trial motions, its experienced bench for such cases and its well-educated jury pool. However, patent filings in 2018, like the rest of the nation, were down, with Alice, AIA, and stricter venue requirements likely taking its toll.

Another popular IP venue in the district court scene is the District Court for the Middle District of Florida. In a nation facing declining patent case numbers, the Middle District of Florida stands tall in relation to its patent favourability. It is so renowned for its patent favourability that is ranked as a top patentee favourable jurisdiction. But it is not just patents that are favoured in this district. Equally compelling are its open arms to trademark and copyright cases, particularly from an owner’s perspective. The judges here adopt a no-nonsense approach to case management and aggressively manage their cases so none are lingering around for years without action. Alejandro Fernandez, a Brinks Gilson & Lione shareholder referred to the judges in this district as being “as expeditious as they are well prepared and experienced”.

Despite the decline in patent cases, overall IP filings here have remained fairly constant over recent years and the court has maintained its rocket speed for its docket.

Despite missing the speed that can be found in Eastern Virginia, Fernandez says the cases in Florida’s Middle District “really move with alacrity”.

Charles Ossola and Wendy McGraw from Hunton Andrews Kurth explain that the cases in this district court are challenging given their sizes, but express that they are worthy of the investment required.

In terms of juries in this district, they tend to be made up of retirees with both military and law enforcement backgrounds, with Fernandez describing them as “serious and thoughtful”.

According to Ossola and McGraw, one of the most notable cases in 2019 at the Eastern District of Virginia, involved Korean electronics giant Samsung, who was alleged to have infringed four US patents (9280640, 9378657, 9514655, and 9728102) belonging to smarTen. The patents all related to mobile computing devices that act as a personal trainer and nutrition expert. Samsung was granted a motion to dismiss after it successfully argued that the four patents were ineligible under section 101 of the US Patent Act. The district will likely feature more IP cases in 2019, with both Ossola and McGraw highlighting a potential rise in trade secrets litigation, with the Defend Trade Secrets Act a root cause. 21 IPPro

This combination of thoughtful juries and expert judges helps the cases flow through similar to the Alachua Sink. The cost to litigate in this district is considerably lower than a larger district like Southern District of New York or the aforementioned Eastern Virginia. Fernandez remarks that the lower cost “makes it an attractive option for IP owners”. When it comes to this district’s popularity, Fernandez highlights that its recognition has been obtained via statistical assessments of case outcomes, which trumps word of mouth. He adds: “Nobody set out to make this an IP favourable district. Rather, any such favourability is simply a by-product of a court that has its house in order.” www.ippromagazine.com


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Industry Events

INTA: 141st Annual Meeting Boston

inta.org/2019

18-22 May 2019 GDPR ConfEx & Law Tech Exhibition Bangalore

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30 May 2019 IP Law Europe Summit Switzerland

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23-25 June 2019 23 IPPro

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Chicago

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Chief Litigation Officer Summit

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17-18 June 2019

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What’s on at INTA’s Annual Meeting?

Ben Wodecki, reporter: CSA20 Character Wars: Trademarks v Copyright Protection for Fictional Characters Saturday, 18 May 12:00pm—1:15pm With big budget movie ‘universes’ now the norm in cinema, protection of individual recurring characters is more important than ever. This session could be vital for attorneys seeking information on how to help their clients protect and enforce these valuable assets. It will offer insights into the differences in protection across China, Europe, and the US.

CSU23 Gen Z Insights: Brands and Counterfeit Products Sunday, 19 May 2:45pm—4:00pm By 2020, Generation Z will account for 40 percent of all consumers in the US. Therefore, their attitudes towards illicit goods will be essential in furthering the fight against counterfeit goods. This session will provide brand specialists with expert analysis on industry’s newest batch of consumers.

CT02 Reality Check: Adapting Brand Strategies for AR and VR Tuesday, 21 May 10:15am—11:30am With brands looking to new technologies to reach prospective consumers, this session offers an insight into the hot up and coming technologies that are virtual and augmented reality. The session will look at why some traditional marks may be ineffective in new technological avenues, and discusses parody, infringement, and dilution, as well as the using AR and VR as branding tools.

24 IPPro Sean Pavone/shutterstock.com

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Barney Dixon, editor: CSA24 A Psychological Thriller— Mediation in Action

CM52 Brexit: The Implications for Trademarks in the UK and the EU

Saturday, 18 May 1:30pm—2:45pm

Monday, 20 May 3:30 pm–4:45 pm

As mediation becomes more prevalent in intellectual property disputes, this session could offer a much needed insight into the process for attorneys looking to mediation over litigation. Unique to this session is a psychologist, who will provide analysis on body language, mood, and tone of the participants to demonstrate how they can impact mediation. All this could prove to be an interesting spectacle that will no doubt leave attorneys with a better understanding of how to advise clients and develop a mediation strategy.

It may be a tired old subject at this point, but Brexit remains the biggest disruptor to the UK trademark business in the visible future. This session promises to give a “clearer view” of the likely outcomes and hopefully, by May, the picture of the UK’s future relationship with the EU will be much less foggy. Whether you care about Brexit or not, practical advice from a number of practitioners in a variety of jurisdictions will accent previous recurring Brexit topics and hopefully provide a fresh outlook on the British constitutional crisis.

Justin Lawson, publisher: CSU55 The Future of IP Law Firms in the Digital Age Sunday, 20 May 2:30pm—3:45pm As a publishing house, technology has disrupted us in many ways. Over the past decade, the rise of the internet has changed the way media is made and disseminated. For lawyers, much of the technological change that will disrupt the industry is happening right now. This session will show how the digital age is affecting IP law practice and how its evolution will change the business landscape.

25 IPPro Sean Pavone/shutterstock.com

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Boston has its deep-rooted history in the heart of US independence. You’re not going to be at the conference the whole time, so why not check out this historical landmark? We’ve got you covered: Boston Harbor Cruises Take to the water to visit the feeding grounds for whales, dolphins, seabirds and other marine creatures. You’ll be able to see majestic sea creatures like humpbacks, finbacks, minkes, in their natural habitat. Plus you may catch a glimpse of the critically endangered right whales!

Boston Tea Party Ships and Museum See where the Boston Tea Party took place, and board fully restored 18th century sailing vessels.

The John F. Kennedy Museum Visit a museum dedicated to one of the most famous US presidents, where you can learn all about his life through intriguing interactive galleries.

Atlantic Fish Company Local American seafood? What more could you ask for in Boston? This place is great for both tourists and business meetings. We’d recommend the bacon-wrapped scallops. Atlantic Fish Company offers over 220 different types of wine— perfect to pair with any fish they offer.

Look out for the IPPro team at INTA’s 2019 Annual Meeting in Boston. We look forward to seeing you there!

26 IPPro

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Image credits: Boston Harbor Cruises - Michael Blanchard Photography/The Boston Tea Party Ships & Museum - The JFK Library - Brian Samuels/Atlantic Fish Company


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Profile for IPProMagazine

IPPro Issue 19  

In this issue of IPPro, we take an in-depth look at IP in the US and how the USMCA may alter its IP landscape. Also, find our analysis of ho...

IPPro Issue 19  

In this issue of IPPro, we take an in-depth look at IP in the US and how the USMCA may alter its IP landscape. Also, find our analysis of ho...

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