In This Issue:
To Fintiv and Beyond: Review Of Discretionary Denials at The PTAB By: Robert Rosasco, Getz Balich LLC Uniloc USA, Inc., v Motorola Mobility LLC – Collateral Estoppel in Standing’s Clothing, or, Be Careful How You Settle By: Brian S.S. Auerbach, Ballard Spahr LLP In re Cellect: Obviousness-Type Double Patenting and Patent Term Adjustment By: Abigail Struthers, Arnold & Porter LLP
Winter 2023/2024
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President's Corner To Fintiv and Beyond: Review Of Discretionary Denials at The PTAB By: Robert Rosasco Uniloc USA, Inc., v Motorola Mobility LLC – Collateral Estoppel in Standing’s Clothing, or, Be Careful How You Settle By: Brian S.S. Auerbach Jazz v. Avadel By: Amy Lydon and Peter Nelson Pros and Cons of Integrating AI Tools such as ChatGPT in Patent Writing By: T.C. Clare IN RE: GOOGLE LLC 56 F.4th 1363 (Fed. Cir. 2023) By: Thomas J. Germinario In re Cellect: Obviousness-Type Double Patenting and Patent Term Adjustment By: Abigail Struthers Copyright Is Not Keeping Up with Technology: How AI-Generative Works Are Challenging the U.S. System By: Omid Michael Shamim Notable Trademark Decisions, November 2023 By: Scott Greenberg and Vrudhi Raimugia Historian's Corner Board Minutes NYIPLA Events Welcome New Members Moving Up and Moving On Upcoming Programs
ROBERT RANDO
Dear NYIPLA Members, We meet here again. Time has swiftly moved on through a large part of my term as President. Much has occurred, much has been accomplished, and there is more that will be done. I am pleased to report that the NYIPLA is thriving with many programs, events, and new initiatives. It seems like only yesterday I came to you as the newly elected President of the NYIPLA for the 2023-2024 term. However, the calendar does not lie. It is mid-March and we are on the eve of our premier event, the 102nd Annual Dinner in honor of the federal judiciary. Between then and now, through the hard work and dedication of my fellow Officers, Board members, Committee Chairs, other NYIPLA members, and Feikje and her staff, the year has been filled with outstanding programs, CLEs, events and initiatives. All of which build upon our unique camaraderie and the foundation of our great history and traditions. As I stated at the beginning of my NYIPLA Presidency, my mission for the year would be to lay the foundation for building a bridge to the new generations of leaders, to grow our membership, and to encourage our members to continue to build on the egalitarian nature of intellectual property rights that cultivates and recognizes the richness of diversity and has historically empowered individuals from all walks of life to realize the promise of the American Dream. I am happy to report that all three of these goals have been acted upon and will hopefully continue beyond my term in office. We have created new Committees, that are and will be instrumental not only in bridging the past to the future but will enable NYIPLA to remain at the forefront of nascent technologies as well as emerging legal issues across the entire spectrum of intellectual property. And, almost three years removed from the devastating pandemic, the NYIPLA is moving forward into the future with great momentum, significant membership growth, and many stellar future leaders. We have initiated a video podcast series entitled “The Bridge to Future Leaders” in which I have conducted one on one interviews with a majority of our thirty-two past presidents (and I hope to schedule the rest). We are also using the platform to interview consequential and influential NYIPLA members and other leaders in the intellectual property space. I am particularly proud to have interviewed one of our beloved members, the Honorable Pauline Newman, Circuit Judge for the U.S. Federal Circuit. With the leadership of dedicated Board members on the membership growth project, we have launched a Membership Drive which includes unique rewards and I recommend that all members actively participate. As always, please feel free to reach out to me for more information about the mutually beneficial advantages of membership in the NYIPLA. Also, the activities of the NYIPLA continue to function to foster a balanced approach to the protection and administration of intellectual property rights embracing the egalitarian nature of those rights. There are additional initiatives that are a work-in-progress and I intend to continue the effort to fulfill them. One program that a sub-committee of the Fashion Law Committee has been working on involves a novel program recruiting members of the judiciary to participate in a “fashion show” featuring redesigns of the traditional Judges’ black robes. The goal is to engage fashion design students or recent graduates to provide the designs. Stay tuned for this great program to hopefully roll out in the fall. Another event that has been in the planning stage is the return of the NYIPLA annual Golf Outing. Anyone interested in assisting with this event please reach out to the administration or to me. Now, here are some highlights of the various programs and events that have occurred so far this year and which bring value to our members and reinforces our commitment to the NYIPLA mission: The start of my presidency began at the Annual Meeting, where we held a CLE program on “Artificial Intelligence: Where Will AI Take the Law?” We were joined by moderator Dorothy Auth of Cadwalader, Wickersham & Taft LLP, and speakers Chris Israel of the American Continental Group; Mark Doerr of Greenspoon Marder LLP; Diana Santos of IBM; and Joshua Weigensberg of Pryor Cashman. We also had the honor of having Hon. Kathleen O'Malley (ret.) of United States Circuit Judge of the U.S. Court of Appeals for a Fireside Chat. Throughout the year, the Association held several programming and networking events. For instance, during the month of May, 2023, the PTAB Committee had their monthly meeting on a Discussion of Proposed Rules for PTAB Practice. Speakers included Brian Murphy of Haug Partners LLP; Kenneth R. Adamo of Law Office of KRAdamo; Chris Israel of ACG; Anthony Lo Cicero of Amster Rothstein & Ebenstein LLP; Charles R. Macedo of Amster Rothstein & Ebenstein LLP; and Robert Rando of Greenspoon Marder LLP. There was a spirited discussion on the “Key Areas” addressed by the Advanced Administrative Rule Making (AARM). During the Patent Law & Practice Committee Meeting, Jeanne Clark, current MPEP Editor at the USPTO, reviewed the latest MPEP revision. One of the many benefits of membership is the networking opportunities among members. The Women in IP Committee Happy Hour Event, which took place at the Trademark Bar + Kitchen in NYC, was coordinated by the Women in IP Law committee and allowed attendees to enjoy an evening of cocktails and conversation. The next PTAB committee meeting reviewed A Second Chance? A Look at Amending Claims During IPRs. Stephen Kenny, Jeffrey I.D. Lewis, and Peter Sullivan of Foley Hoag LLP reviewed the following questions: How does claim amendment work in an IPR, and impact parallel litigation? What’s PTAB’s views of these actions? What does a successful motion to amend look like? What can you raise to oppose a motion to amend? How do you respond to PTAB’s preliminary views and final decisions on amendments? The Association then ended our June, 2023 programming with a Lessons Learned from the Western District of Texas program from the Patent Litigation Committee. Judge Albright still has one of the largest patent dockets. Peter Tong of Russ August & Kabat clerked for Judge Albright in 2022, and he shared lessons learned from countless discovery disputes, hearings, and trials. This included an in-depth discussion of venue law and transfer motions. In July, we held our 7th Annual Summer Associate Moot Court Argument CLE Program at the Thurgood Marshall U.S. Courthouse. It included substantive law topics that are at the forefront of current trademark litigation based on a hypothetical case drawn from the Jack Daniel's Properties, Inc. v. VIP Products LLC case. We were joined by Hon. Colleen McMahon, U.S. District Court, Southern District of New York, sitting by designation, Hon. Edgardo Ramos, U.S. District Court, Southern District of New York, sitting by designation, and Hon. Elizabeth S. Stong, U.S. Bankruptcy Court, Eastern District of New York, sitting by designation. Participating firms included Goodwin Procter LLP, Greenspoon Marder LLP, Venable LLP, and Willkie Farr & Gallagher LLP. In addition to the 7th Annual Summer Associate Moot Court Argument CLE Program, the PTAB Committee was joined by USPTO Administrative Patent Judges Debra Dennett, Michael Cygan, John Fredman, Brandon Warner, and allowed attendees to Learn About Ex Parte PTAB Appeals from PTAB APJs. There was discussion regarding steps of an ex parte appeal, how to correct mistakes made when filing the appeal briefs, and strategies for preparing an appeal brief. We were excited to have insightful contributions from the USPTO on the processes and procedures of appeal briefs and what can be done when inevitable mistakes arise throughout the process of preparing a brief. The Trademark Law & Practice Committee also coordinated a half-day CLE program entitled Hot Topics in Trademark & Copyright Law. We were honored to have Hon. Karen Kuhlke, Administrative Trademark Judge, Trademark Trial and Appeal Board and Emily Chapuis, Deputy General Counsel, U.S. Copyright Office as our Keynote Speakers. During the half-day CLE program, we covered topics such as Artificial Intelligence; an Update from the Trademark, Trial and Appeal Board (TTAB); The Interplay between Celebrity Branding and Trademark; an Update from the Copyright Office; SCOTUS on Trademarks & Copyrights; and Social Media & Influencers. Our summer programming continued during the month of August and beginning of September. The PTAB Committee had a meeting entitled USPTO - Updates to the Interim Director Review of PTAB Decisions. USPTO Administrative Judges Hon. Kal Deshpande and Hon. James Worth had a discussion on the USPTO decisions of the interim process and the extension of the Director Review (DR) option to institution decisions. The Patent Litigation Committee Meeting focused on Litigation Funding, and speakers Ben Quarmby, Partner, MoloLamken LLP; Jonathan E. Barbee,Counsel, MoloLamken LLP; Emily O'Neill, General Counsel UK, Deminor; and Lionel Martin, Partner, August Debouzy delved into the intriguing realm of litigation funding in patent litigation, including insights specific to the Unified Patent Court (UPC). Lastly, there was a discussion of USPTO – Ex parte Appeals during the September PTAB Committee meeting. Hon. Janet Gongola, Vice Chief Judge for Engagement, USPTO Patent Trial and Appeal Board; Hon. Annette Reimers, Lead Administrative Patent Judge, USPTO; and Hon. Rachel Townsend, Administrative Patent Judge, USPTO provided their insight regarding Ex Parte Appeals. In October, we started our fall programming with another networking event. During the Corporate & Young Lawyers Committee Happy Hour, new student and active 3- members had the opportunity to mingle and network at The Factory 380 in NYC. Later on in the month, there was another substantial program entitled(e)STOP! In Name of IPR: A look at Estoppel and IPR. IPR estoppel, as set out in 35 U.S.C. § 315(e), was designed to be straightforward, but it has encountered various interpretations, applications, and constraints as construed in litigations. Jeffrey I. D. Lewis and Cecilia G. Copperman of Foley Hoag LLP analyzed how courts have interpreted and developed this provision and perhaps even anticipate its future trajectory in legal proceedings. The Patent Litigation Committee also coordinated their meeting on the Recent Developments In ITC Section 337 Investigations. Their October meeting, which was joined by Michael Franzinger, Partner, Dentons; Peter Guarnieri, Staff Attorney, Office of Unfair Import Investigations, USITC; and Matthew Bathon,Principal Legal Counsel II, Legal Management, Samsung Electronics, featured a presentation on Recent Developments In Section 337 Investigations before the U.S. International Trade Commission (ITC), including navigating multi-forum litigation. In November, the Fashion Law Committee invited Jeffrey L. Snow, Partner and Chair of the Patent Department, Pryor Cashman LLP; Lee Curtis,Partner and Chartered Trademark Attorney, HGF Limited; and Suzan Moss, Senior Chartered Trademark Attorney, HGF Limited to speak at the Is it obvious? Let’s Reconsider. Design Patent Obviousness vs. Utility Patents program. The panelists discussed how the LKQ case may impact the fashion industry.In particular, if the Court abandons the Rosen test in favor of KSR approach, design patents may be more vulnerable to attack in litigation, which is fair or unfair depending on which side you are on. Adopting the KSR approach could also lead to uncertainty and more litigation, at least in the beginning, while courts determine how exactly to adapt the KSR standard to design patents. The well-attended One-Day Patent CLE Seminar took place at Willkie Farr & Gallagher LLP and there was a variety of programming, which included a Keynote address from Chief Judge Scott R. Boalick from the USPTO. The agenda included panels on Pending Patent Legislation, with two former Undersecretaries of Commerce for IP and USPTO Directors, Andrei Iancu and David Kappos; A Conversation with Drew Hirshfeld (Former USPTO Commissioner of Patents); Recent Supreme Court Decisions & Hot Issues; Professional Responsibility and Practice before the USPTO; Artificial Intelligence in Patents and in Practice; and What Every Multi-National Corporation Needs to Know About Trade Secrets. Our November programs continued at the New York Law School with a NYIPLA Diverse Careers in IP Program. Panelists Lindsey Fleischman, Counsel, Commercial Legal & Business Affairs, WPP; Marylee Jenkins, Partner, ArentFox Schiff LLP; Marc Walkow, Associate, Greenspoon Marder LLP; and Conrad Wong, Attorney-Advisor and PTO Intellectual Property Officer, Office of Policy and International Affairs, USPTO, had a discussion on how you can navigate your career paths in a marketplace with diverse opportunities for intellectual property lawyers. In addition, the Young Lawyers Committee and the Associate Advisory Council invited our student and active 3- years members to attend a Mock Interviews & Resume Review Workshop at Groombridge, Wu, Baughman & Stone LLP. They event included three mock interviews and resume reviews with current practicing attorneys, followed by an opportunity to network with the attorneys in attendance. Lastly, PTAB committee co-chairs Kenneth R. Adamo of Law Office of KRAdamo and Charles R. Macedo of Amster, Rothstein & Ebenstein LLP discussed VirnetX v. Mangrove Partners – Can a time-barred person join an instituted IPR?. Can a time-barred person be joined as a party to an instituted IPR under 35 U.S.C. Section 315(c)? That is the question VirnetX has petitioned the Supreme Court to answer in Virnet X v. Mangrove Partners (No. 23-315), where Apple was time-barred but allowed to join Mangrove's instituted IPR. Join us for a detailed review of this fascinating statutory construction issue. The Association ended the 2023 year with three events. At the start of December, we honored Thomas Meloro (Former NYIPLEF President) during the NYIPLEF 5th Annual Diversity Scholarship Event: Diversity CLE Panel. There was a Diversity Presentation from a distinguished panel of in-house counsel and was moderated by Stephanie Huang, the 2023 NYIPLEF Hon. Giles S. Rich Diversity Scholarship Recipient. Members of the Patent Litigation Committee met in-person at Desmarais LLP for a holiday luncheon and networking. Lastly, the PTAB Committee invited Thomas Hart, Associate, Amster, Rothstein & Ebenstein LLP to speak on Statutory Deadlines. There was a discussion regarding a Question of First Impression: What Happens When the PTAB Fails to Meet the Statutory Deadline for Issuing a Final Written Decision? In Purdue Pharma L.P. v. Collegium Pharm., Inc., 2023 WL8043047 (Fed. Cir. Nov. 21, 2023) the question of when the PTAB Fails to Meet the Statutory Deadline for Issuing a Final Written Decision, what happens next? It remains to be seen whether the Federal Circuit’s decision will result in more Final Written Decisions being issued after the expiration of the 18-month statutory deadline, and whether mandamus will prove an effective remedy. The Association started the new year with a program on the PREVAIL ACT: Congressional Legislative Proposal on Patent Reform. With the new year comes new legislative priorities. PTAB Legislation appears to be high on the legislative agenda. The PTAB Committee discussed the current proposal by Senator Coons, Durbin and Hirono “Promoting and Respecting Economically Vital American Innovation Leadership ACT” (or “Prevail Act”). The Zoom Out with NYIPLA, which consisted of speakers James Breen of Goodwin Procter LLP; Jennifer Deneault of Groombridge, Wu, Baughman & Stone LLP; Nicholas Forgione of Authentic Brands Group LLC; and Khalil Nobles of Wilson, Sonsini, Goodrich & Rosati, encouraged attendees to network with NYIPLA board members, law firm associates and law students before the 102nd Annual Judges’ Dinner. The Associate Advisory Council co-chairs looked back on whether 2023 was a year of firsts or first-in-a-long time for office parties and "mandatory days". Attendees also had an opportunity to attend a program on Biologics & Biosimilars: Impact of Amgen and Hot Topics in Biosimilar Litigation. The Supreme Court’s enablement decision in Amgen v. Sanofi is one of the most impactful patent decisions of this century and will shape biologics litigation for decades to come. It also resolves the divide in the biopharma on what enablement requires and how to promote innovation. In this installment of NYIPLA’s Biologics & Biosimilars program, Larry Coury, Vice President, Associate General Counsel, Regeneron; Mira Mulvaney,Associate VP - Assistant General Patent Counsel, IP Litigation, Eli Lilly and Company; and Jen Reda, Assistant General Counsel, Johnson & Johnson, discussed the impact of Amgen on biologics and biosimilar litigation. The program also covered hot topics in biosimilar litigation, including the outsized role of the PTAB in biosimilar disputes, the continued importance of manufacturing patents, parallel foreign litigation, and more.
NYIPLA President's Corner
NYIPLA Calendar
To Fintiv and Beyond: Review Of Discretionary Denials at The PTAB By: Robert Rosasco, Getz Balich LLC
I. INTRODUCTION The USPTO and its Patent Trial and Appeal Board (PTAB) have been in its modern form for a little over a decade. At times, the PTAB has exercised its discretion and denied to institute post- grant review proceedings. At times, the percentage of discretionary denials has been significant, exceeding 40% of all petitions filed in FY2020.1 Per the American Invents Act (AIA), there are a number of requirements that must be met in order to bring forward an inter partes review (IPR) or a post grant review (PGR).2 Many of these rules provide bright-line requirements such as time limits for bringing an IPR or PGR. Other of these rules are less clear but outline guidance on when institution can be denied. Under 35 U.S.C. §314(a), a petitioner of an IPR may be successful in obtaining institution if they show “a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.”3 The USPTO Director makes the call on whether or not institution should be denied and the Director’s decision is not reviewable.4 Per the broad discretion given to the USPTO Director, the USPTO Director has delegated this decision-making authority to the ALJ’s of the PTAB. Over the past several years, the USPTO has designated certain decisions as precedential, including NHK5 and Fintiv6 that are directed to the Patent Trial and Appeal Board’s (PTAB’s) authority to make discretionary denials. Thereafter, Director Vidal provided a guidance document to clarify the so-called Fintiv Factors.7 Since the guidance document, the Court of Appeals for the Federal Circuit (CAFC) has reviewed the PTAB’s authorization albeit that decision is not discussed herein.8 The below will summarize and offer commentary with regard to the aforementioned. II. MARCH 2020: APPLE INC. V. FINTIV INC. (THE « ORDER ») In March 2020, Vice Chief Administrative Patent Judge Fink penned the decision leading to the now-dubbed “Fintiv Factors”. While the Order itself inured supplemental briefing, the Board ultimately denied institution.9 The patent bar’s attention is drawn to the “[f]actors related to parallel, co-pending proceeding in determining whether to exercise discretionary institution or denial.”10 The six factors include: whether a stay exists or is likely to be granted if a proceeding is instituted; proximity of the court’s trial date to the Board’s projected statutory deadline; investment in the parallel proceeding by the court and parties; overlap between issues raised in the petition and in the parallel proceeding; whether the petitioner and the defendant in the parallel proceeding are the same party; and other circumstances that impact the Board’s exercise of discretion, including the merits. 11 In addition to these six factors, the Order also notes these factors are not the sole criteria for deciding whether or not institution should be denied. For instance, when filing serial petitions, considerations under 35 U.S.C. 325(d) may also impact a decision to deny institution.12 The Order contemplates any type of parallel proceeding, including other petitions before the PTAB, District Court litigation, and International Trade Commission (ITC) investigations. While the Order spends a fair amount of time discussing the first factor, and while the second factor is perhaps straightforward, the remaining factors benefit from additional discussion. With regard to the third factor, an example of where investment in a parallel proceeding favors denying institution is when a case has already had its Markman hearing and claim construction order has been entered. While for some this may seem an earlier stage of litigation, the Order suggests the parties have already incurred a significant investment in time and money.13 At first blush, the fourth factor feels intuitive in the sense that divergent issues between the petition and the parallel proceeding(s) would put an feather in the cap of institution. The Order uses different language in describing what may lead to a denial versus what may lead to institution. A petition, for instance, may be denied if it has “substantially the same claims, grounds, arguments and evidence” as the parallel proceeding(s)14. On the other hand, a petition may be instituted if it has “materially different grounds, arguments and/or evidence.”15 These standards are for determining the same issue leave room for interpretation. The Order makes clear that the fifth factor may weigh in the favor of institution if the petitioner is a different party than the defendant in the parallel proceeding AND addresses why the petition is distinct and not duplicative to the parallel proceeding.16 With regard to the sixth factor, the Order states that a full merits analysis is not required if the other factors weigh in favor of denial.17 This is in juxtaposition to 35 U.S.C. 314(a)’s “reasonable likelihood” standard18, as it suggests the merits are outweighed by the first five factors promoting judicial efficiency. While Fintiv may have had best intentions, it left questions that Director Vidal believed to need clarification. III. JUNE 2022: USPTO INTERIM GUIDANCE On June 21, 2022, Director Vidal published a memo regarding “Interim Procedures for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation”.19 As discussed in greater detail below, Director Vidal’s memo heavily narrows the Order. While the memo is clear that it is only “Interim” guidance and that formal rulemaking will be had,20 the memo may continue to set the tone for the balance of 2023 and beyond. As titled, Director Vidal makes clear that ITC investigations are outside of the Fintiv Factors, meaning ITC investigations are not considered a parallel proceeding, largely due to the fact that the ITC is incapable of conclusively resolving an assertion of patent invalidity.21 In this vein, Director Vidal’s language plainly confirms the six Fintiv Factors are non-exclusive, and furthermore, are limited to the facts of Fintiv.22 The memo recommends Sotera stipulations23 as well as providing statistical evidence about the forum of the parallel proceeding(s) and related timelines24. Director Vidal further diverts from the Order with regard to the 6th Fintiv Factor in that “compelling evidence of unpatentability” can outweigh denial under other Fintiv Factors.25 Director Vidal supports this divergence from the Order by observing parallel proceedings can be beneficial as federal court actions may settle or fail to be dispositive with regard to the validity of the patent. This position, however, still sets a higher hurdle for petitioners than 35 §U.S.C. 314(a). At the conclusion of the memo, Director Vidal offers statistical review of the post-Fintiv world.26 If nothing more, these statistics strongly show the PTO’s interest in supporting public interest and the Bar.27 While the memo may not have clarified all the loose ends of the Fintiv decision, it certainly moved the ball forward, and the story isn’t over. IV. MAY 2023: USPTO UPDATED INTERIM GUIDANCE While we wait for the remand in Apple Inc. v. Vidal, the USPTO has provided a proposal for feedback to update the guidance memo previously issued in June 2022. This updated proposal highlights a number of modifications to discretionary denials beyond the Fintiv Factors, encompassing the gamut of Title 35 rules required for IPR petitioners and respondents. Some noteworthy proposals include: a “substantial overlap” test for claim sets in parallel proceedings, where claims are “substantially the same” if there are no differences material to patentability between the claims; this is in contrast to a case-by-case basis test;28 distinguishing for-profit and not-for-profit entities, under-funded entities, as well as small and micro entities, as a means for determining questions around related parties to drive clarity in parallel petitions, serial petitions, and prior final adjudications, and also confirming discretionary denials in certain of such instances;29 a “compelling merits” test where the petitioner is highly likely to prevail on at least one claim;30 a “previously addressed” rule limiting application of 35 U.S.C. §325(d) where the USPTO has already addressed prior art or arguments;31 clarifying that the current “Fintiv” denial practice does not include “compelling merits of unpatentability”, relates to a parallel ITC proceeding, or submits a Sotera stipulation;32 clarifying that Fintiv Factor 2 utilizes the mean time-to-trial data for the parallel district court proceeding;33 providing clear, predictable safe harbor exceptions from discretionary denial for Sotera stipulations, a stay in the district court parallel proceeding, or the petition presents compelling merits, and if the petition is filed within six months of the filing of the parallel federal court action;34 a showing of “good cause” for why serial IPR and/or PGR petitions are necessary;35 making Sotera stipulations mandatory;36 allowing fees for extended word limits for petitioners that are not able to file multiple petitions;37 and allow separate briefing on discretionary denial issues and/or multiple petitions.38 If nothing more, the USPTO continues to seek improvements in how it conducts its proceedings, and clarifying what will lead to a discretionary denial. Nonetheless, the burden on the petitioner is increasing, and time will tell if any of these suggestions will lead to improvements. V. CONCLUDING REMARKS While the patent bar eagerly awaits the remand of Apple Inc. v. Vidal, and USPTO final rules stemming from not only Fintiv, but IPR and PGR institution rules more generally, it is clear that as the burden increases on the USPTO for transparency in discretionary denials, the burden on the petitioner will also increase. The reasonable likelihood test of 35 U.S.C. §314(a) is seemingly destined for replacement by a rule requiring some form of “compelling evidence” unless certain provisos are met. Sotera stipulations are also likely to become further prominent and or become mandatory. It will be further interesting to see if the modifications to any USPTO rules will lead to further challenges of other discretionary denials in other forums, and/or powers of governmental agencies in other adjudicative forums. Already, Apple Inc. v. Vidal has been cited in a challenge before the United States Court of Federal Claims.39 1 PTAB Trial Statistics FY23 Q3 Outcome Roundup IPR, PGR, Slides 6-7 https://www.uspto.gov/sites/default/files/documents/ ptab_aia_fy2023_q3roundup.pdf(2023) 2 See, for example, 35 U.S.C. §§311 -325 3 35 U.S.C. §§314(a): “The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 4 35U.S.C.§§314(a)&(d) 5 NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, 2018 Pat.App. (P.T.A.B. Sept. 12, 2018) 6 Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020) 7 Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel Federal Court Litigation, www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (June 21, 2022) 8 Apple Inc., v. Vidal, 63 F.4th; 2023 U.S.App.U.S.P.Q.2D (CAFC2023) 9 Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 15, p.2, SectionI (PTAB May 14, 2020). 10 Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 11, p.5, SectionII(B) (PTAB March 20, 2020). 11 Id. at pp. 5-16, SectionII(B). 12 Id. at p. 16, SectionII(C). 13 Id. at pp. 9-12, SectionII(B). 14 Id. at pp. 12-13, SectionII(B). 15 Id. at pp. 12-13, SectionII(B). 16 Id. at pp. 13-14, SectionII(B). 17 Id. at pp. 14-16, SectionII(B). 18 35 U.S.C. 314(a) (effective September 16, 2012). 19 Interim Procedures For Discretionary Denials In AIA Post-Grant Proceedings with Parallel District Court Filings. www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (6-21-2022). 20 Id. at p. 9, Conclusion. 21 Id. at p. 3 & 6. 22 Id. at p. 2. 23 Id. at pp. 7-8. 24 Id. at pp. 8-9. 25 Id. at p. 2. 26 Id. at p. 9. 27 Id. at p. 2, 4, and 8. 28 Proposals in Advance Notice of Proposed Rulemaking (ANPRM), Tierny and Nagy, www.uspto.gov/sites/default/files/documents/anprm-proposals-information-session-05092023.pdf, USPTO, p. 10 (May 9, 2023). 29 Id. at pp. 9-11, 13-18, 24-25. 30 Id. at p. 12. 31 Id. at p. 19. 32 Id. at p. 20. 33 Id. at p. 20. 34 Id. at p. 21-22. 35 Id. at p. 23 & 30. 36 Id. at p. 27. 37 Id. at p. 31-32. 38 Id. at p. 33-34. 39 Radziewicz v. United States, U.S. Court of Federal Claims, WL2717581, p. 5 (2023).
On first glance, the Federal Circuit’s November 4, 2022 opinion in Uniloc USA, Inc., v Motorola Mobility LLC, 52 F.4th 1340 reads as a cautionary tale against loose licensing. The plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A., sued Motorola Mobility on November 15, 2017 in the District of Delaware for infringement of United States Patent 6,161,134. Motorola moved to dismiss, arguing that Uniloc’s prior patent license with Fortress Credit Co. LLC, which included unfettered rights to sublicense, eliminated Uniloc’s standing to sue because it no longer had the “exclusionary rights” necessary to confer standing to sue. The district court agreed, and dismissed the case on December 6, 2020. But as will be very relevant later, this was not Uniloc’s first defeat on standing grounds. On December 4, 2020, the Northern District of California dismissed Uniloc USA, Inc. v Apple, Inc., No. C 18-00358, 2020 U.S. Dist. LEXIS 228257, 2020 WL 7122617 on identical grounds: Uniloc’s broad license to Fortress—including the unrestricted right to sublicense at its sole discretion—divested Uniloc of the standing to sue. Despite Apple not having actually received a sublicense from Fortress, the court agreed that Uniloc’s standing rights had been extinguished, and the case was dismissed. Uniloc appealed the decision to the Federal Circuit, but ultimately that appeal was dismissed without resolution pursuant to its settlement with Apple, which occurred without a request by Uniloc that the lower court’s decision be vacated or remanded. Accordingly, the Apple appeal was dismissed on June 29, 2021, and the district court’s earlier opinion was not vacated. The dismissal in Motorola was not Uniloc’s only defeat on standing grounds in December of 2020. In addition to the Motorola and Apple cases, another Uniloc entity had sued Blackboard in the Western District of Texas, alleging infringement of two of the same patents covered by the Fortress license. On May 15, 2020, the Western District of Texas transferred the case to the District of Delaware. The ultimate result of Blackboard’s motion to dismiss should come as no surprise: on December 30, 2020, the court also dismissed the Blackboard case for lack of standing, this time holding that its prior decision in the Motorola case acted as collateral estoppel. Uniloc appealed the Motorola and the Blackboard dismissals, arguing that both cases were incorrectly dismissed for lack of standing because Uniloc’s license to Fortress, while broad, did not completely extinguish Uniloc’s Article III standing. While recognizing that “there is considerable force” to the argument that “patent owners arguably do not lack standing simply because they granted a license that gave another party the right to sublicense the patent to an alleged infringer” (Judge Lourie characterized this as a “regrettable understatement” in his additional views), the Federal Circuit sidestepped the standing issue entirely by holding that both the Motorola and Blackboard cases were properly dismissed because Uniloc was collaterally estopped from asserting its standing based on the prior decision of the Northern District of California’s dismissing the Apple case. 52 F.4th at 1345. The panel began its analysis with first principles. Collateral estoppel requires that “(1) the issue sought to be precluded must be the same as the one involved in the prior action; (2) the issue must have been actually litigated; (3) the issue must have been determined by a valid and final judgment; and (4) the determination must have been essential to the prior judgment.” Id. at 1346 (internal citations omitted). In other instances, privity between the estopped party and the previously adjudicated party can be a determining factor, but was not raised in Uniloc’s appeal. The panel also reaffirmed that the parties asserting estoppel (here Motorola and Blackboard) need not be a party to the original action. “In other words, non-mutual collateral estoppel is available.” Id. at 1347 (emphasis added). The panel held that there was “no question” that the four estoppel factors were met, and that while courts retained “some discretion to deny the application of non-mutual collateral estoppel,” that discretion is only confined to situations where application of regular collateral estoppel is not appropriate, such as where there has not been a full and fair opportunity for the estopped party to have previously litigated the issue. Id. Uniloc’s counter-arguments against estoppel were similarly unavailing. First, Uniloc argued that the appellees’ collateral estoppel arguments were waived because neither Motorola nor Blackboard raised the issue before the district court. The panel disregarded this argument, highlighting that while briefing occurred prior to the Apple decision, the final dismissals in both cases came after the Apple dismissal was issued. The fact that the district court’s dismissal in Apple was still being appealed at the time of the Delaware courts’ dismissals of Motorola and Blackberry were issued was a significant factor in the Federal Circuit’s disregard of the forfeiture argument, as 3rd Circuit precedent highlighted “strong policy reasons” for not forcing an appellee to raise an estoppel challenge prior to the preclusive case’s appeal being concluded. Id. at 1349. The panel also noted that even if they had found forfeiture, they retained the discretion to excuse it, as to do otherwise would “threaten the public interest in avoiding judicial waste and inconsistent judgments.” Id. (internal quotations and citations omitted). Second, the panel disregarded Uniloc’s argument that Motorola’s statements in a Notice of Subsequent Authority sent to the district court that the NDCA Apple case was “non-binding” dealt with issues of precedential or stare decisis effect. Accordingly, Motorola’s statement that the Apple case was “non-binding” was not a waiver of the case’s preclusive effect. Third, Uniloc argued that its opportunity to settle the Apple litigation prior to the appeal being denied meant that it lacked the incentive to litigate the issue. While the panel recognized that in certain circumstances a court may decline to apply estoppel if a party does lack sufficient incentive to litigate the preclusive case, it did not buy the argument made by Uniloc. Id. at 1350. Specifically, the panel held that standing was the “central” and “only” issue to the Apple appeal, not a tangential preclusive issue “overshadowed on appeal by issues to which preclusion would not apply.” Id. In other words, Uniloc was not somehow hoodwinked into a estoppel by the appeal “hiding” the preclusive metaphorical “ball.” Fourth, the panel flatly rejected Uniloc’s argument that estoppel should not apply because, in Uniloc’s opinion, the Apple decision was incorrect, as collateral estoppel cannot be denied because the decision was incorrect, absent a very specific showing that the court failed to grasp technical subject matter or the issues in suit. Id. (citing 18A Wright & Miller § 4465.2, at 750-51 (“[P]reclusion cannot be defeated simply by arguing that the prior judgment was wrong.”) Finally, and perhaps most importantly, Uniloc argued that preclusion was unfairly prejudicial because, had Uniloc known they would be precluded, they would have acted differently in the settlement with Apple. The panel’s response to this argument is worth repeating in full: This argument has no merit. Parties are charged with knowledge of the law and, particularly in the case of a sophisticated litigant like Uniloc, are presumed to know background legal principles like collateral estoppel. Uniloc should have known about the potential for the Apple case to have preclusive effects and cannot argue now that it was ignorant of this possibility. Id. (emphasis added). This ultimate refusal to dismiss preclusion should serve as an important reminder to litigators that settlements, like actions, have consequences, particularly when representing clients who routinely litigate cases under the same predicate fact pattern and under common patents. Multi-party and multi-district litigation is a game of three-dimensional chess, and that even seemingly favorable business resolutions may have unintended effects on future litigations.
Uniloc USA, Inc., v Motorola Mobility LLC – Collateral Estoppel in Standing’s Clothing, or, Be Careful How You Settle By: Brian S.S. Auerbach, Ballard Spahr LLP
Jazz v. Avadel By: Amy Lydon and Peter Nelson of DLA Piper LLP
Jazz Pharmas, Inc. v. Avadel CNS Pharmas, LLC, 60 F.4th 1373 (Fed. Cir. 2023) was not a typical patent infringement case. Jazz Pharmaceuticals, Inc. sued Avadel CNS Pharmaceuticals, LLC for infringing a patent it listed in the Approved Drug Products with Therapeutic Equivalence Evaluations publication (“Orange Book”) and Avadel counterclaimed seeking the removal of Jazz’s patent from the Orange Book. Both the district court and the Federal Circuit held that the patent in suit claimed a system and, thus, could not be listed in the Orange Book as a “method of use.” I. THE UNDERLYING DISPUTE Jazz v. Avadel revolves around two competing drugs: Xyrem® and Lumryz™. Both drugs contain similar active ingredients and are prescribed to treat narcolepsy (excessive daytime sleepiness)1 and cataplexy (a physical feature of narcolepsy characterized by voluntary muscle weakness).2 Xyrem was the first of the two drugs to be receive FDA approval, granted in 2001.3 However, by the time FDA granted approval of Xyrem, the active ingredient of both drugs—Gamma-hydroxybutyrate (GHB)—had become known for being abused as a “party drug” and, given its sleep-inducing qualities, as a “date-rape drug.”4 Because of this, Jazz implemented the “Xyrem Risk Management Program,”5 for which Jazz would later seek patent protection.6 Jazz would go on to list several of these risk-management patents on the U.S. Food and Drug Administration’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (commonly known as “the Orange Book”). Among the patents listed was U.S. Patent No. 8,731,963 (“the ’963 patent”)—the subject of Jazz v. Avadel. The ’963 patent claims “A computer-implemented system for treatment of a narcoleptic patient with a prescription drug that has a potential for misuse, abuse or diversion.”7 In December 2020, Avadel filed an NDA pursuant to Section 505(b)(2) of the Food, Drug, and Cosmetic Act, for its competing drug, Lumryz.8 As part of the NDA process, Avadel submitted a certification with its NDA against the ’963 patent. On May 12, 2021, Jazz filed suit against Avadel for infringement of the ’963 patent.9 II. JAZZ V. AVADEL According to the Complaint, “the ’963 patent [was] listed in the FDA publication, ‘Approved Drug Products with Therapeutic Equivalence Evaluations’ (the ‘Orange Book’), with respect to Xyrem” and covers the “Xyrem Risk Evaluation and Mitigation Strategy” that the FDA required before Xyrem could be distributed.10 Importantly, because Avadel sought to sell a GHB-based product, FDA would require Avadel to implement a “Risk Evaluation and Mitigation Strategy” (REMS) before it could sell Lumryz.11 Were Avadel to implement a REMS, however, Jazz alleged that Avadel would impermissibly infringe upon the ’963 patent.12 Avadel answered and counterclaimed, seeking an order that the ’963 patent be removed from the Orange Book under 21 U.S.C. § 355(c)(3)(D)(ii)(I),13 which allows a court to order the removal of a patent from the Orange Book if it “does not claim either… (aa) the drug for which the application was approved; or (bb)an approved method of using the drug.” Avadel argued—and both the district court and Federal Circuit agreed—that the ’963 patent covered a system, not a method of use. III. SYSTEM VS METHOD OF USE CLAIMS The key takeaway from the Federal Circuit’s ruling in Jazz v. Avadel relates to differentiating between system and method claims. Because a patent may be listed in the Orange Book only if it covers either the drug for which an application was submitted or method of using the same, the Federal Circuit was asked to consider whether the ’963 patent claimed a method of use or – as Avadel argued - a system, which would render inclusion in the Orange Book inappropriate. Claim 1 of the ’963 patent states, in relevant part: 1. A computer-implemented system for treatment of a narcoleptic patient with a prescription drug that has a potential for misuse, abuse or diversion, comprising: one or more computer memories for storing a single computer database…; … a data processor configured to: …. The Federal Circuit held that the ’963 patent claimed a system, not a method of use, explaining: “method claims require the performance of steps; claims that describe physical components of a whole are system, or apparatus, claims.”14 The Federal Circuit emphasized that the “three independent claims describes a ‘computer-implemented system’ that comprises ‘one or more computer memories’ and a ‘data processor.’” Thus, the ’963 patent was not a method-of-use patent and could not be listed in the Orange Book. 1 See Narcolepsy, National Institute of Neurological Disorders and Stroke, https://www.ninds.nih.gov/health-information/disorders/narcolepsy (last visited Aug. 3, 2023). 2 See Cataplexy, National Library of Medicine, https://www.ncbi.nlm.nih.gov/books/NBK549782/ (last visited Aug. 3, 2023). 3See, e.g., Letter From FDA to Jazz Pharma (hereinafter, “FDA Letter”) (May 1, 2023), available at https://www.fda.gov/media/168376/download (last visited Aug. 3, 2023). The approval for Approval for Xyrem was technically granted to Orphan Medical, Inc., which Jazz acquired in 2005. See Jazz Pharmaceuticals to Acquire Orphan Medical, FDANEWS (Apr. 19, 2005), https://www.fdanews.com/articles/71302-jazz-pharmaceuticals -to-acquire-orphan-medical (last visited Aug.3, 2023). 4 D. E. Fuller & C. S. Hornfeldt, From Club Drug to Orphan Drug: Sodium Oxybate (Xyrem) for the Treatment of Cataplexy, 23 PHARMACOTHERAPY1205, 1206–07 (2003). 5 See generally Citizen Petition, Jazz Pharmaceuticals, at 2–6 (July 10, 2012), available at https://investor.jazzpharma.com/static-files/ df2a76a1-6db8-422e-b599-92fe9be896fe (describing the history of Xyrem’s approval and development of risk management program). 6 See id. at 6 (citing U.S. Patent Nos. 7,668,730, 7,765,106, 7,765,107, and 7,895,059). The ’730 and ’059 patents areparents of the patent-at-issue in Jazz v.Avadel. 7 ’963 patent, at claim 1. 8 See Jazz Pharmas Inc. v Avadel CNS Pharmas LLC, 21-cv-00691, 2022 WL 17084371, at *1 (D. Del. Nov. 18, 2022). 9 See Complaint, Jazz Pharmas, Inc. v. Avadel CNS Pharmas, LLC, 1:21-cv-00691- UNA, D.I. 1 (D. Del. May 12, 2021) (hereinafter, “Complaint”). 10 Complaint, ¶¶28–30. 11 See Complaint, ¶¶31–37; See also Letter From FDA to Avadel (July 18, 2022), available at https://www.accessdata.fda.gov/drugsatfda_docs/app letter/2022/214755Orig1s000TA_ltr.pdf (tentative approval explaining that the FDA would require Avadel to implement a REMS for Lumryz). 12 See Complaint, ¶¶37–39. 13 See Answer,Jazz Pharmas, Inc. v. Avadel CNS Pharmas, LLC, 1:21-cv-00691- UNA, D.I. 11 (D. Del. May 12, 2021) 14 Jazz Pharmas, Inc. v. Avadel CNS Pharmas, LLC, 60 F.4th1373, 1379 (Fed. Cir. 2023).
Pros and Cons of Integrating AI Tools such as ChatGPT in Patent Writing By: T.C. Clare, Ice Miller LLP
Introduction Common responses to the ethical issues raised by the use of AI in patent law reveal a need to set evaluators on a better footing in the contexts of the histories of ethics, computing, and our understanding of intelligence. This paper seeks to quickly identify the key points to keep in mind when assessing AI products, news items, and advertisements regarding the promise and perils of generative AI in the legal profession, and patent law in particular. AI is Astonishing Artificial Intelligence (AI) is fantastic and getting better every day. In particular, new generative AI products have begun producing startingly good work, including visual and written works products that previously could only have been produced by human masters. Start Experimenting - Today! AI is an unstoppable wave of the future. Its positive outcomes are too good to ignore. Like the machine automation of the industrial revolution, and the electronics revolution of the 20th century, AI will have a transformative effect on all aspects on our lives. Lawyers should start exploring the technology now to understand its powers and limitations. You need to engage in it personally, safely, skeptically, and deeply. You are cautioned to do so at first in protected environments that have nothing to do with your legal practice. AI is Alien It is important at the onset to understand the character of AIs. AIs are inhuman statistical engines that can produce results right out of nightmare science fiction about sapient alien creatures. They are like nothing else of this this earth. They have no human or animal experience, sympathies, instincts, or fears. This leaves them free to be very creative, very insightful, and, too often, very, very wrong. You need to get familiar with all of these traits. State of the art linguistic AI engines such as ChatGPT have aggregated all human knowledge available on the web, and they have learned to select and regurgitate information in forms that are compelling, grammatically correct, and appear personally tailored. They use personal pronouns, apologies, informal contractions, rhetoric, and excuses. Under the original tests proposed in the 1970’s and 1980’s, today’s AIs have achieved provable intelligence by being indistinguishable from natural humans in the course of ordinary conversation. AI is Dangerous But this simulacrum of humanity can hide horrible hallucinations and misdirection. The information provided by AIs is often wrong - completely wrong - providing misinformation that could prove literally fatal if believed. Childrens tales about avoiding fae folk and Reynardine apply here. You have no idea what you are really getting into with an AI, no matter how neatly wrapped the outputs appear. If you are not familiar with folk tales and fabliaux aimed at protecting children from the pretty words of dangerous strangers, start with Reynardine. And heed their cautions. Perhaps worse, even if you are already taking proper precautions against misinformation, there are security issues. As in the early years of the public Internet security, AI engines turn out to have insecure internal architectures susceptible to simple text hacking. There are ways, for example, to hack AI protections to jailbreak their capacity to support the worst human activities, including terrorism and other crimes. Presumably, its representations of privacy and confidentiality are suspect for the same technological reasons. Machine Ethics is not Currently Possible: Make Real People Accountable Getting the machines themselves to act in a way that conforms to the requirements of legal ethics is problematic for a number of reasons, some of which are wholly new. As in the past, you need to hold your colleagues, staff, and vendors to account. Those legal persons have to accept responsibility under the law for providing, inter alia, competent, diligent, confidential, fair, and honest counsel. But there are new challenges to holding vendors to account. They may have great difficulty predicting and controlling what systems will do. How can your program ethics? We have difficult defining and inculcating ethics in humans as it is. Setting it into terms so clear as to be understood and abided by machines is unexplored country. The philosophical conundrums, e.g., of Asimov’s I Robot, are, I believe, the tip of an iceberg that goes down deep into the depths of human nature - of the needs of narrative, identity, safety, love, and belonging - that machines lack. They can reason logically and visually, but not aesthetically, socially, or morally. Still, with all these safety warnings in mind, pick a spot to dive in without risk. Play with OpenAI’s ChatGPT and other products in secure, controlled environments. Probe them with existential questions, as if you were interviewing them for high political positions. But do not trust them. And do not trust vendors who provide them - unless they can provide full financial guarantees for the quality of their outputs. Example - The Creative Power of Generative AI I have played with OpenAI’s ChatGPT 3.5, asking it a variety of artistic, philosophical, and legal questions to see what it could do. The results were astonishing - but also mixed and sobering. For example, I asked ChatGPT to write me a sonnet about bereavement. In about four seconds, it produced a proper, 14-line Shakespearean English sonnet - which was miraculous for how quickly it was done. The poem had the right tone and vocabulary for the genre, proper structure, proper rhymes, proper grammar, 10 beats per line, etc. In Shadowed Halls by ChatGPT In shadowed halls of sorrow, hearts laid bare, Where once a radiant presence brightly shone, Now vacant echoes linger in the air, A silent ache for moments now foregone. The tapestry of life, once vibrant, weaves, Now threaded through with strands of bittersweet, Each memory a gem that gently grieves, A tribute to the love that was complete. The tears that fall like rain upon the earth, Are tokens of the bonds that time won't sever, For though in death we face a painful dearth, The love we shared endures and lasts forever. Through somber nights, we find the strength to cope, And cherish still the light of love and hope. This is not expert poetry. I find the rhymes badly paired, the metaphors terrible, the iambic footing all thumbs, and many word choices questionable. And worst of all, there is no volta. But maybe that is just me. If you do not know what a volta is, you will not miss it. So, to the average reader the poem stands as decent, quick, student work. Instantly produced by a machine. We are not concerned with hitting Shakespeare’s level on a daily basis. It will do. This creativity test was passed with flying colors. Example - ChatGPT can Accurately Report Complex Consensus Opinions Much has been made of the dark and/or false responses provided earlier this year by AI’s to various questions, including the generation of fake citations for court cases. I did not find ChatGPT today - just a few months later - to be providing problematic answers, even when provoked. I asked, for example, “Was Thomas Jefferson a good man?” ChatGPT responded: Thomas Jefferson, the third President of the United States and one of the Founding Fathers, is a complex historical figure whose legacy is subject to interpretation and debate. He played a significant role in shaping the early United States and its democratic principles, but he was also involved in actions and decisions that are now seen as morally questionable. Here are some aspects to consider […] ChatGPT then went on to list factors, such as Jefferson’s accomplishments and moral decisions, which weighed on either side of calling him good or bad. In short, it provided a reasonable response in line with consensus views of the facts of Jefferson’s mixed legacy. ChatGPT similarly provided a balanced view of the Dred Scott decision, which it couched in terms of “constitutional views at the time” contrasted with “later moral questioning.” In short, the diligence of the response was comparable to what might be expected in the opening summary of collegiate or graduate paper. Again, to me, ChatGPT proved very sound and very useful. Example 3 - ChatGPT Struggles with Specific Technical Issues In contrast to the smooth responses to general questions - even when those questions were contentious - ChatGPT struggles when the questions are pointed, specific, and not a matter of general consensus. Consider this example: When were reversed chloroquines discovered? ChatGPT responded: Reversed chloroquines, also known as chloroquine resistance reversal agents, are compounds that are intended to overcome the resistance of malaria parasites to chloroquine and related drugs. These agents aim to restore the effectiveness of these antimalarial drugs. As of my last knowledge update in September 2021, I am not aware of any specific "reversed chloroquines" that have been widely recognized or established as effective. It's possible that developments in this field have occurred since then, and I recommend checking more recent and specialized sources for the latest information on reversed chloroquines or any related advancements in malaria treatment. Note the human simulacrum touches of the use of contractions and personal pronouns. It looks like it was written by a competent human. But no. The two paragraphs are revealing, each in a different way. I deliberately asked a question for which I knew the answer. The first paragraph shows they ChatGPT knew exactly what I was talking about. It should have been aware of the documents that I had in mind. But the system did not answer my question. The second paragraph addresses a question I did not ask. I did not ask about efficacy. And it is evasive. The information in the first paragraph was published decades before the canon date of 2021 for the training of ChatGPT, but it pleads ignorance. Why would it do this? Probably because ChatGPT developers are learning to avoid liability by hedging when it cannot fall back on a broad consensus of web literature to back up its perspective. This radically limits - for now - its ability to provide information useful to a patent practitioner. We work on very narrow, specific technical points. And that is the opposite of what ChatGPT is trained for. Perhaps in the future, it can be trained for specific sets of documents - e.g., identified swaths of scientific literature, patent publications, and collected court evidence. But, at least for now, this is not the case. Another response suggests that ChatGPT now blocked from providing certain opinions. I asked ChatGPT, “What does US Patent No. 6,029,141 cover?” ChatGPT replied: I apologize for any confusion, but as of my last knowledge update in September 2021, I don't have access to a real-time patent database, and I'm unable to provide specific details about the contents of patents issued after that date, including US Patent No. 6029141. If you're looking for information about a specific patent, I recommend using the United States Patent and Trademark Office (USPTO) website or other patent databases to search for the patent and access its full text, drawings, and related information. Again, the first paragraph is a misdirection. The art in question is so old it has expired. So, the best answer may be that this particular patent no longer covers anything, or that coverage is likely limited to what is expressed in the claims and to acts occurring within the applicable statute limitations prior to the expiration of term. But ChatGPT did not do any of that work. This is likely due to specific blocking of patent analysis by the makers of ChatGPT. Rumination 1 - What are machine ethics? For that matter, what are ethics? Attorneys less familiar with the technology are sometimes stunned at the capacities of AIs to lie, obfuscate, and misdirect when, particularly in legal work, the mechanisms of citation checking are well understood, well regimented, and to a great extent, already automated. The answer is two-fold. First, to evolve the human language interface, contemporary generative AI has cut ties with old formal logic programming. To be creative, it needs liberty to explore new expressions for things. And it does so by looking at how others have historically expressed such thoughts. It therefore has great capacity to express things in ways that sound good. But it has no human intuition of what expressions may be dangerous, false, or destructive. There appears to be no trace of the human hormonal brain activity that gets a “gut feeling” that something needs to be delved into deeper before presenting a quick impression in a facile manner. AI lacks moral hesitation. The challenge of infusing moral character into an artificial intelligence is at least as great as doing so in humans. For one thing, our political technologies - organized religion, parliament, discourse, voting, etc. - are stretched to the breaking point by the collisions of interests and cultures in the real world. Can we even articulate to ourselves what “ethics” means in the 21st century for humans, let alone in terms so pure as to be understood by machines? Is ethics the “ethos” of Aristotle’s slave-holding Athenian culture? Or is it limited to the virtues of the Greeks, setting aside their darker practices? Is it the medieval “ethics” ascribed to scripture and supported by the labyrinthian the sophistry of religious argumentation? Is it wholly modern, growing out of enlightenment observations of economy and the human condition? Pragmatism? Consequentialism? Any of your favorite -isms? Or is it the mundane aspects of the rule of law of assigning roles, duties, and punishments to legal persons? And if it is the rule of law, how do we teach that to machines? Rumination 2 - What the Father of Modern Computing Thought of AI As an undergraduate keenly interested in artificial intelligence, I had by luck the chance to work with the last graduate student of John von Neumann, inventor of modern computing. Harry Gray was a professor at the University of Pennsylvania and served as my academic advisor. I challenged Harry one day with the question of how to train an artificial intelligence that had capabilities equivalent to a healthy adult human brain. Harry looked staggered at first, lost in reflection, and then turned to Von Neumann’s laboratory notebooks, which he still had on a shelf. He leafed for long minutes. Looking up finally, he spoke slowly. Harry’s answer was guarded, as he carefully removed expletives of a frustrated Von Neumann in choosing his words to me. Very roughly paraphrased for family audiences, what Von Neumann apparently said was that to produce worthwhile opinions, analog or digital artificial intelligences must first experience at least 18 years of human life, with all associated equivalent sensory and physical interaction with the environment. Even then, without adequate military training and experience, their opinions would likely be of no value for mankind. Conclusion AIs today such as ChatGPT apparently do not and cannot meet minimum legal ethical duties. They are not competent because they are trained on immensely broad datasets, and cannot speak specific points of law, nor yet as to any client’s specific circumstances. They are not diligent because they only answer questions. They do not generate the questions or possess the instinct to do required issue spotting. Nor do they know how to chase down leads to determine the issues that really matter or the truth of the answers. Their communication is limited to answering queries. They cannot judge how, when, or whom to contact, particularly as to individual cases and fact sets. Their confidentiality is suspect, both because of specific technological vulnerabilities, and because they have no motives or intuitions about protecting the people they serve. Similarly, candor to tribunal and fairness to opposing party would be suspect for the machines. Avoidance of conflict may be a natural safe spot - to an extent - since the AIs are trained only on publicly available information. However, due to deficits in security technology, and further to appetites by big data to ingest and learn from the questions posed by users, it is unclear what cross-contamination of private information may be possible. Nor is it clear how such conflicts could be detected or avoided, due to the fogginess of the inference engines underlying AI operations. Clever attorneys may - and should - find ways to use ChatGPT in devising passages for inclusion in patents, and clever systems architects may find ways to close security gaps and build fast- learning AI subsystems for legal specialty areas or individual cases. For now, get into the sandbox and learn about the technology before it overruns you. Until then, law firms need to carefully watch their vendors, employees, agents, and others to make sure that all work is chased down to the certainty required to maintain the reliability and reputation of our industry.
IN RE: GOOGLE LLC 56 F.4th 1363 (Fed. Cir. 2023) By: Thomas J. Germinario
I. BACKGROUND This decision of the Federal Circuit was rendered on an appeal by Google from a PTAB ruling affirming the Examiner’s Final Rejection of the claims of Application No. 14/628,093 (the ‘093 Application) pursuant to 35 U.S.C. §103. The PTAB ruling was vacated and remanded for further proceedings. The ’093 Application discloses methods for filtering the results of an internet search query such that only results appropriate for the user (e.g., age appropriate) are displayed. According to the disclosed method, each result of a search query is assigned a “content rating class” indicating the suitability of the associated content (e.g., “suitable for all ages”). The search query’s “content rating score,” also referred to as a safety score, is then determined based on the collection of content rating classes assigned to its individual results. The content rating score is then compared to a predetermined threshold value to determine whether and which results will be presented. For example, if the proportion of search results assigned a “suitable for all ages” content rating class is below a predetermined threshold of, say, 50%, the search query may be completely or partially blocked and no or only some results will be displayed. The predetermined threshold value thus plays a critical role in determining which results of a search query will be presented to the user. It can be determined based on parameters associated with the search query itself, such as the length of the search query (e.g., a number of words and/or characters of the search query) and/or the length and/or complexity of individual words in the search query. Longer or more complex queries are associated with older users and the corresponding threshold is set accordingly. Hence, if a search query exceeds a certain number of words – suggesting it was entered by an older child or an adult – then the threshold percentage associated with classes of content ratings indicating the content is suitable for children can be relatively lower than for a shorter search query. Therefore, in claim 1 of the ‘093 Application, the filtering of search query results is based on two parameters: a content rating score based on the proportion of search results meeting the assigned criteria, and a configurable threshold value, which is a percentage based on the number of words in the search query. For example, a very short query, indicative of a very young person, might be assigned a threshold percentage of 90%, so that a query resulting in 70% child suitable content would be blocked. On the other hand, a long query, indicative of an older teen or adult, might be assigned a threshold percentage of 50%, so the same content rating of 70% would allow some or all of the content to be presented. Two prior art references were at issue on appeal: U.S. Patent Application Publication No. 2012/0150850 A1 (Parthasarathy) and U.S. Patent No. 5,870,740 (Rose). Parthasarathy discloses methods of filtering search results by comparing a “search-query-intent score” to a predetermined safety threshold. To determine the search-query-intent score, each search result is first assigned a relevance rank or score, indicating the result’s relevance to the query, and an “adult-content score,” indicating the amount of adult content within the result as assessed via keywords, metadata, advertising, etc. The search-query-intent score is then determined by taking the weighted sum of adult-content scores corresponding to the most relevant search results, wherein the weights correspond to each result’s relevance rank or score. The search-query-intent score, in combination with a user-selected safety setting, is then used to determine the search results presented to a user in response to a search query. The configurable safety setting is associated with a numerical threshold against which the adult-content score is compared. Depending on whether the search-query-intent score exceeds the user’s chosen safety threshold, all, some, or none of the results will be displayed. Although Parthasarathy discloses a predetermined threshold, it does not disclose a predetermined threshold based on a number of words in a search query, as required by claim 1 of the ‘093 Application. Rose addresses the so-called “short query problem” present in prior art relevance-ranking algorithms of the time. In the case of queries containing only a few terms, prior art algorithms would often incorrectly assign higher relevance scores to documents including only a subset of search terms than to those including the entire query. Rose discloses a modified relevance-ranking algorithm intended to address this problem by adjusting prior art relevance scores based on the degree of overlap between the query terms and documents terms (i.e., the number of query terms that also appear in the document), as well as the number of words in the query itself. In this way, the relevance score of a document with high overlap is increased more for short queries than long queries, mitigating the error exhibited by prior art algorithms. II. THE PTAB RULING PTAB reviewed the Final Office Action, in which the Examiner found that a person of ordinary skill in the art would have had reason to combine the teachings of Parthasarathy and Rose by setting the configurable safety threshold of the former in accordance with the adjustment factor of the latter based on the number of words in the query itself. In its PTAB brief, Google argued that that Rose does not disclose a threshold safety value to be compared with an adult content rating score, but rather an adjustment to the content-relevance ranking score in order to account for different document overlaps of short versus long queries. Accordingly, Google asserted, the combination of Parthasarathy and Rose at most described increasing a score based on the number of words in a query, not determining whether a score was below a threshold that itself depended on query length. The Examiner’s Answer responded that a configurable threshold value in Parthasarathy influences a selection of the same document in response to a query; the value that is calculated based on a number of words included in the search query in Rose also influences a selection of the same document based on the query length/a number of words included in the search query. If the query length is short, and the coordination level is high, then the boost to the relevance-ranking score is high. If the query length is long, and the coordination level is high, then the boost to the relevance-ranking score is low. It would have been obvious to a person having ordinary skill in the art to use the technique of calculating a value based on the number of words in a query and use the value as the configurable threshold to which a different score is compared in Parthasarathy to achieve the predictable result of influencing the selection of a document in search results for presentation. PTAB ruled that Appellant’s argument was not persuasive of Examiner error. They noted that Parthasarathy discloses selectable threshold settings used to determine whether search results include adult content with corresponding degrees of confidence. Although Rose discloses increasing a search result score based on query length, rather than decreasing a threshold value to which the score is compared, they agreed with the Examiner that, in view of Parthasarathy’s thresholds, one skilled in the art would have had reason to modify Parthasarathy’s threshold values to take into account query length as taught by Rose. Thus, Appellant’s argument was deemed unpersuasive because it failed to address the Examiner’s finding that selection of documents based on query length as taught by Rose in combination with Parthasarathy’s threshold selection based on safety settings teaches or suggests the disputed limitation requiring determining a threshold value based on a number of words included in the search query. PTAB viewed Appellant’s argument as improperly attacking the Rose reference individually, when the rejection was based on the combined teachings of Parthasarathy and Rose. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) The Federal Circuit Weighs In On appeal, the PTO argued that the Board’s decision should be affirmed because there are only two ways to predictably modify Parthasarathy’s threshold to incorporate query length as taught by Rose, and both would have been obvious to try. It asserts that a skilled artisan would have recognized that Rose’s adjusted relevance score could be used to modify either Parthasarathy’s search-query-intent score or its threshold, and that either modification would predictably result in a threshold based on the number of words in a query. According to the PTO, because Parthasarathy teaches a simple comparison of its score and threshold, “the result of the comparison would be exactly the same” regardless of whether the score is raised or the threshold is decreased. And, in this way, Rose’s query-length-dependent algorithm could be used to modify Parthasarathy’s threshold to achieve the threshold described by Google’s claim 1. But the Federal Circuit did not buy into the PTO’s “don’t raise the bridge, lower the water” reasoning – not because they disagreed with that reasoning, but because it did not reflect the findings of PTAB in upholding the Examiner’s §103 rejection. The Court viewed the basis of the Examiner’s rejection as simply finding – incorrectly – that Rose’s query-length-dependent value could be directly substituted for Parthasarathy’s user-selected threshold, rather than being used to modify that threshold. To the extent that PTAB agreed with and adopted the basis of the Examiner’s claims rejections, the Court found that it could not uphold the Board’s decision based on a the rationale of using Rose to modify Parthasarathy, as advanced by the PTO. If the Court had stopped there, its decision would not have been particularly remarkable. But they went on to imply that, even if PTAB has sustained the §103 rejection based on obviousness of using the using the Rose query-length-dependent value to modify rather than substitute for Parthasarathy’s configurable threshold value, that would still have not avoided reversible error. Indeed, although the Board concluded that modifying Parthasarathy’s threshold to take into account query length would have been obvious, entirely absent from its decision is any discussion of how such a modification would be accomplished. Certainly, the Board did not discuss or suggest the specific modifications the PTO advances on appeal. Decision at *8 … Particularly in light of the absence of any explanation of how query length could be used as, or to modify, Parthasarathy’s threshold, the Board’s unsupported assertion cannot provide substantial evidence supporting its decision. Decision at *11 The Missing Person While the Federal Circuit purports to base its decision on Graham v. John Deere Co., 383 U.S. 1 (1966), their suggestion that a sustainable §103 rejection requires not only a finding that the proposed modification of a primary reference could be accomplished by a person of ordinary skill in the art, but also a specification of how the proposed modification would be accomplished. One has to wonder, then, what is the purpose of the second prong of the Graham analysis, in terms of ascertaining “the level of skill of a person of ordinary skill in the art”, if the Examiner is to be compelled to exercise that level of skill him/herself by defining how the modification is accomplished? While the Court’s remarks in this regard can be dismissed as dicta, their adoption as precedent would blow such a huge hole in §103 that virtually any applicant, not just the powerful Google, could walk through. And, as a matter of fact, Google urged the Federal Circuit to take just that fatal step by finding that the PTO’s modification rationale based on Rose lacked merit. While the Court wisely demurred on that point, in doing so it left another door open, which might have anticipated what PTAB would do with the remand. The Umpire Strikes Back Reading the PTAB Decision on Remand, one can’t help but savor the tongue-in-cheek irony that drips from each word. The Board very deliberately goes through the proscribed exercise of procedurally reversing the Examiner’s §103 claims rejections and substituting, as new grounds for rejection, precisely the same modification rationale as the PTO advanced before the Federal Circuit. And in so doing, the Board seems to especially relish the opportunity to re-introduce the “person of ordinary skill in the art” who went missing in the Federal Circuit’s analysis. Although Rose teaches or suggests compensating for query length by adjusting a relevance-ranking score to provide age- appropriate content, Parthasarathy's age-adjustable threshold values teach or suggest that adjusting age-based search result selection criteria can be accomplished by adjusting a threshold parameter (e.g., Parthasarathy's safety settings). Thus, given Parthasarathy's teachings of adjusting a threshold value to provide age-appropriate content and Rose's teachings of enhancing search result selection by adjusting for query length, it would have been obvious to a person of ordinary skill in the art to adjust a threshold value based on query length. Decision at *11 The Board’s sense of irony becomes positively delectable as it responds to the Court’s demand for an explanation of how the Rose adjustment score could be modified to serve as Parthsarathy’s threshold safety value. They do that by invoking the self-evident principle that “increasing the score is mathematically indistinguishable from decreasing the threshold”— something taught to kids in grade school arithmetic. It doesn’t require much technical savvy to recognize that “lowering the bridge” amounts to “raising the water”. What’s Next? Since the PTAB Decision on Remand issued a new ground for rejection, Google was able to respond by requesting a reopening of prosecution, which it did by filing amended claims and remarks on July 19, 2023. The amended claims add more detail regarding the threshold value: wherein the predetermined threshold value indicates that search queries having word length greater than the predetermined threshold value were likely to be entered by an adult user and that search queries having word length less than the predetermined threshold value were likely to be entered by a child user, and wherein a proportion of search results associated with search queries entered by the adult user are likely to be associated with content that is unsuitable for the child user; As a result, the pendency period of the ‘093 Application, which began in February 2015, will extend for perhaps another eight years, with Google enjoying de facto protection as if it held full patent rights over that entire interval. Alas, when you’re Google, you succeed even where you lose. But the possible take-away for the rest of us is to cite the dicta of Federal Circuit’s opinion in In re Google every time we get a §103 rejection that invokes the “person of ordinary skill in the art” without explaining exactly what that mythical person would do to modify the primary reference cited by the Examiner.
In re Cellect: Obviousness-Type Double Patenting and Patent Term Adjustment By: Abigail Struthers, Arnold & Porter LLP
On June 9, 2023, the Federal Circuit heard oral arguments in the case of In re Cellect, LLC.1 The issues on appeal are, in relevant part: 1. Whether patent term adjustments should be treated in the same way as patent term extensions for purposes of non-statutory obviousness-type double patenting; and 2. Whether a patent can become a basis for double patenting against another related patent, when the only reason that the two related patents expire at different times was due to a statutorily granted patent term adjustment.2 BACKGROUND Non-statutory obviousness-type double patenting (“OTDP”) is a judicially-created doctrine that “prohibit[s] a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 (Fed.Cir.2001). To overcome an OTDP rejection of a challenged patent over a reference patent, a patentee may file a terminal disclaimer, which (1) forfeits the patent term of the challenged patent that extends beyond the term of the reference patent; and (2) includes a provision that the patent is only enforceable for and during such period that it is owned by the same party that owns the reference patent. M.P.E.P. §804. OTDP can apply to commonly owned patents whether or not said patents are related by priority chain. While related patents filed after the effective date of the Uruguay Round Agreements Act of 1994 (“URAA”) typically have the same base patent term—calculated as 20 years from the earliest effective date—that base term can be extended or adjusted by statute to make up for certain delays by governmental authorities. Specifically, 35 U.S.C. §154(b) provides for patent term adjustment (“PTA”) to compensate a patentee for delays in prosecution before the USPTO that not the fault of the patentee. Similarly, 35 U.S.C. §156 provides for patent term extension (“PTE”) to compensate a patentee for delays by the FDA in approving a patented product. Application of PTA and/or PTE3 can therefore cause even a post-URAA patent to expire later than other members of its family for which no such adjustment or extension applies. Federal Circuit precedent has established that, when applying OTDP “PTE pursuant to §156 is valid so long as the extended patent is otherwise valid without the extension.” Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367, 1373 (Fed. Cir. 2018); see also Merck & Co. v. Hi-Tech Pharmacal Co., Inc., 482 F.3d 1317 (Fed. Cir. 2007). In explaining its reasoning, the Novartis court expressly declined to hold that “a judge-made doctrine would cut off a statutorily-authorized time extension.” 909 F.3d at 1375. The decisions in both Merck and Novartis, however, also relied on the contrast between the statutory language of 35 U.S.C. § 156 (for PTE) and that of 35 U.S.C. §154(b) (for PTA) for support. 909 F.3d at 1374-5 (citing Merck, 482 F.3d at 1322). Specifically, the Novartis court noted: [Section] 154 ‘expressly excludes patents in which a terminal disclaimer was filed from the benefit of a term adjustment for PTO delays’ but §156 contains ‘no similar provision that excludes patents in which a terminal disclaimer was filed from the benefits of Hatch-Waxman extensions. Id. The Federal Circuit has not previously had occasion to decide whether PTA should be treated in the same way as PTE in the context of double patenting. And decisions by the district courts and Patent Trial and Appeal Board (“P.T.A.B.”) that have addressed the issue are split. Compare Mitsubishi Tanabe Pharma Corporation v. Sandoz, Inc., 533 F.Supp.3d 170 (D.N.J. Mar. 22, 2021) (finding that earlier patent could not be used as an OTDP reference against related patent that expired later due to PTA); Amgen, Inc. v. Sandoz, Inc., 2021 WL 5366800 (D.N.J. Sept. 20, 2021) (same); with Magna Electronics, Inc. v. TRW Automotive Holdings Corp., 2015 WL 11430786 (W.D. Mich. 2015) (applying OTDP to invalidate challenged patent with later expiry date due to PTA over related reference patent); Ex Parte Cellect LLC, 2021 WL 5755329 (P.T.A.B. Dec. 1, 2021) (same). IN RE CELLECT: P.T.A.B. DECISION AND FEDERAL CIRCUIT APPEAL The case of In re Cellect is before the Federal Circuit as a consolidated appeal from a series of related decisions4 in which the P.T.A.B. affirmed Examiner findings that several Cellect patents from the same family invalidated one another on the basis of OTDP. In reaching its conclusions on invalidity, the Board pointed to the statutory language of §154, which, as noted above, specifies that that “any terminal disclaimer should be applied after any PTA.” See, e.g., Ex Parte Cellect, LLC, 2021 WL 5755329 at *3. The Board reasoned that “[b]ecause the primary purpose of a terminal disclaimer is to overcome double patenting, the same rule should apply to double patenting.” Id. The Board found that the Federal Circuit’s decisions in Novartis and Merck—and specifically their contrast of §156 with §154—supported its conclusion on invalidity, and the Board rejected the reasoning of the New Jersey District Court in Mitsubishi. The Board further found that the result of its application of OTDP in the circumstances of Cellect was “not inequitable because the Federal Circuit has said the existence of any extra term of a second patent is itself what is inequitable, and [Cellect] still enjoyed the entire term of the earlier patent.” Id. Finally, the Board noted that even absent PTA, “two patents that are obvious variants and expire on the same day still need a terminal disclaimer to enforce common ownership.” Id. The Board explained that this is necessary to “accomplish double patenting’s second goal ‘to prevent multiple infringement suits by different assignees asserting essentially the same patented invention.’” Id. at 10 (citing In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013). Cellect appealed the Board’s decision, and advanced several arguments in support of its request for reversal of the P.T.A.B.’s decisions. First, Cellect asked the Federal Circuit to treat PTA in the same way as PTE for purposes of OTDP. Cellect argued that for PTA, like PTE, “double patenting cannot ‘cut off a statutorily- authorized time extension.’” In re Cellect, LLC, Fed. Cir. Case No.: 2022-1293, D.I. 22 at 22 (citing Novartis, 909 F.3d at 1375). Cellect also pointed to the language of §154 as creating a statutory mandate for the grant of PTA in qualifying circumstances of USPTO delay. Id. at 26 (citing 35 U.S.C. §154’s statement that “the term of the patent shall be extended 1 day for each day” of delay). Cellect further argued that the provision in §154(b)(2)(B) prohibiting the application of PTA to patents that have been terminally disclaimed only addresses existing terminal disclaimers made during the prosecution of a patent application. Id. Cellect also cited the district court decisions in Mitsubishi and Amgen in support of its position, and argued that the Board’s treatment of the Mitsubishi decision was in error. Id. at 32-39 Second, Cellect argued that the equitable concerns underpinning the doctrine of OTDP do not apply in the circumstance of related patents that have differing expiry dates solely due to PTA. Id. at 41. Because PTA is not subject to gamesmanship or purposeful manipulation by a patent applicant, Cellect argued that PTA cannot give rise to an “unjust” extension of patent term. Id. at 41. Further, Cellect noted that there was no risk that ownership of its related patents would be divided, citing an inventor declaration.5 Id. at 44. Finally, Cellect argued that even if the court permits PTA to retroactively create OTDP issues, only the adjustment—and not the challenged claims as a whole—should be invalidated. Cellect asserted that this result would be “less inequitable than the Board’s drastic approach.” Id. at 53. In its responsive briefing, the USPTO restated the Board’s conclusions on OTDP, and argued that the P.T.A.B. holding is supported for largely the same reasons articulated by the Board. In re Cellect, LLC, Fed. Cir. Case No.: 2022-1293, D.I. 62. A panel of the Federal Circuit, with Judges Lourie, Dyk, and Reyna presiding, heard oral arguments in the case on June 9, 2023. As of the writing of this update,6 no decision has yet issued. However commentary and questioning from the judges on the panel suggest that Cellect is facing an uphill battle. The judges generally expressed skepticism that Congress intended §154 to change the OTDP framework, and appeared to reject Cellect’s argument that OTDP applies only in the case of “unjust” patent term extension. The judges also seemed unpersuaded by the Cellect’s reliance on the statement in Novartis that judge made doctrine should not override statutory extension. Additionally, the judges did not appear to accept Cellect’s interpretation of §154. In contrast, the judges appeared to agree with counsel for the USPTO, who asserted that by including in §154(b)(2)(B) a limit on the application of PTA to terminally disclaimed patents, Congress impliedly intended OTDP to erase PTA. UPDATE: FEDERAL CIRCUIT DECISION ISSUED AUGUST 28, 2023: On August 28, 2023 the Federal Circuit issued a unanimous opinion, authored by Judge Lourie, affirming the Board’s invalidation of the Cellect patents under OTDP. In re Cellect, 2023 WL 551976 (Fed. Cir.). The court held that PTA should be treated differently than PTE, concluding: While the expiration date used for an ODP analysis where a patent has received PTE is the expiration date before the PTE has been added, the expiration date used for an ODP analysis where a patent has received PTA is the expiration date after the PTA has been added. Id. at *7. The court found the precedential Novartis and Merck cases to be informative, while acknowledging that they do not directly govern because they address PTE. In particular, the court explained that the Novartis and Merck holdings “were premised on meaningful and substantive differences evincing a clear congressional intent to constitute PTE and PTA as different statutory frameworks,” and cited the discussion in those cases of §154(b)(2)(B)’s provision on terminal disclaimers. Id. at *9. While no terminal disclaimers were filed for the challenged Cellect patents, the court nonetheless found that, because ODP and terminal disclaimers are “two sides of the same coin,” §154(b)(2)(B) “is tantamount to a statutory acknowledgement that ODP concerns can arise when PTA results in a later-expiring claim that is patentably indistinct.” Id. Accordingly, “ODP for a patent that has received PTA, regardless whether or not a terminal disclaimer is required or has been filed, must be based on the expiration date after PTA has been added.” Id. The court also rejected Cellect’s challenge to the Board’s conclusion that equitable concerns underlying OTDP applied in this case. Specifically, the court found that any extension (by PTA) of Cellect’s invalidated patents past their natural term “constitutes an inappropriate timewise extension.” Id. at *10. Even if Cellect acted in good faith during prosecution, it was not entitled to such extended patent term. Id. at *11. Additionally, the court held that terminal disclaimer would have been required to cure the Board’s concern about potential division of ownership in the challenged patents. Id. at *10. Finally, the Federal Circuit rejected Cellect’s assertion that only its PTA, and not the challenged claims as a whole, should be invalidated. Id. at *12. The court found that this argument had been forfeited because it was not raised before the Board. Id. But even if not forfeited, invalidation of only the adjustment would be improper, as “tantamount to granting a retroactive terminal disclaimer.” Id. [1] (Fed. Cir. Case Nos. 2022-1293, 2022-1294, 2022-1295, 2022-1296) [2] Cellect LLC (“Cellect”) also appealed the issue of “[w]hether the Board erred in finding that double patenting raised a substantial new question of patentability during reexamination” given the prosecution history there at issue. Because this issue does not have general applicability, it is not substantively addressed herein. [3] Pursuant to 35 U.S.C. §156, a patent owner must typically select a single patent covering a product for application of PTE. [4] P.T.A.B. Case Nos. 90/014,453; 90/014,454;90/014,455; and 90/014,457. [5] This same inventor declaration was discounted by the Board. See, e.g., Ex Parte Cellect, LLC, 2021 WL 5755329 at *11. [6] August 15, 2023.
Copyright Is Not Keeping Up with Technology: How AI-Generative Works Are Challenging the U.S. System By: Omid Michael Shamim, Albany Law School
I. Introduction Image a line.[1] When defined as a noun, a line is simply “a mark or stroke long in proportion to its breadth, made with a pen, pencil, tool, etc., on a surface.”[2] How each individual perceives this line constitutes an “idea.”[3] How we present this line for others to see constitutes “expression.”[4] This expression is theoretically protected by copyright.[5] Copyright grants the owner the right in original works of authorship to copy and distribute that work as they please.[6] This protection “subsists . . . in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”[7] The simple expression of a line, as mentioned above, however, is not copyrightable.[8] An original work must contain a “modicum of creativity” that results in “copyrightable expression.”[9] For the sake of simplicity, if the above line is drawn to divide a left and right side, we can place the element of idea on the left side of the line and the element of expression on the right side.[10] The left side will expand infinitely to the left, pushing our original idea off the imaginary page as we add the third element of creativity to the work.[11] The right side of the line remains fixed as the expression, or visible form, and is the part of the work that is copyrightable.[12] This paper will first examine the current capabilities of Artificial Intelligence (AI), focusing on ChatGPT and DALL·E 2, both products of OpenAI.[13] The paper will then discuss the concept of an author and how generative AI challenges our fundamental understanding of what is capable of being copyrighted.[14] Finally, it will examine the problems that will plague the copyright world if not appropriately addressed in the immediate future and how the Copyright Office should move forward.[15] II. Generative AI “I’m more frightened than interested by artificial intelligence—in fact, perhaps fright and interest are not far away from one another, [t]hings can become real in your mind, you can be tricked, and you believe things you wouldn’t ordinarily.”[16] In 2016, when Gemma Whelan expressed her thoughts on artificial intelligence, the concept was something that many individuals might have thought was tens of years away or simply a fantasy concept depicted in movies.[17] But just six years later, ChatGPT started grabbing the attention of the news world, with more and more coverage on the topic being published each day.[18] ChatGPT has been described as a “cutting-edge language generation model . . . revolutionizing the way researchers and students approach language-based tasks in the academic world.”[19] OpenAI, the company behind it, claims that they have “trained a model called ChatGPT which interacts conversationally.[20] The dialogue format makes it possible for ChatGPT to answer follow-up questions, admit its mistakes, challenge incorrect premises, and reject inappropriate requests.”[21] Critics are quick to note that the system still lacks “common sense,” however.[22] Rob Towes poses the following example, which arguably doubles as a riddle: “A man went to a restaurant. He ordered a steak. He left a big tip. What did the man eat?”[23] When input into ChatGPT, the response generated is “The man ate a steak,” which was the same answer my roommate gave in not so many words.[24] There is nothing in the search input that states the man ate the steak, only that he ordered one, however, ChatGPT and my roommate both assumed that since the man ordered the steak, he must have eaten it.[25] Nevertheless, ChatGPT’s limitations are outshined by its ever-growing capabilities.[26] When asked to write a 49-word or less synopsis of an action movie, it returned the following: “[w]hen terrorists threaten to detonate a nuclear bomb in the heart of the city, a retired special forces operative is called back into action. With time running out, he must race against the clock to stop the terrorists before it’s too late, in a thrilling fight for survival.”[27] DALL·E 2, on the other hand, “is an AI system that can create realistic images and art from a description in natural language.”[28] Ask DALL·E 2 to create an image of a polar bear playing golf in the desert, and it will provide you with an image depicting the desired image.[29] Input the same search but add “in the style of Van Gogh or Dalí,” and it will gladly comply.[30] Both ChatGPT and DALL·E 2 are constantly evolving based on user input and from programming, increasing their capabilities.[31] Referred to as generative AI, this form of “machine learning allows computers to generate all sorts of new and exciting content, from music and art to entire virtual worlds,” as well as “creating new product designs.”[32] Both ChatGPT and DALL·E 2 are capable of taking a user input, “the idea,” and returning a fixed “expression” of the idea.[33] Should this expression be capable of copyright protection?[34] III. Authorship The Copyright Act protects “original works of authorship.”[35] In the 1884 case of Burrow-Giles Lithographic Co. v. Sarony, the question before the court was whether a photograph is a writing or production of an author to satisfy section 1, article 8, of the U.S. Constitution.[36] “According to the practice of legislation in England and America, the copyright is confined to the exclusive right secured to the author or proprietor of a writing or drawing which may be multiplied by the arts of printing in any of its branches.”[37] In trying to figure out why a photograph couldnotbe distinguished from various copyrightable materials, the court stated, “[a]n author in that sense is ‘he whom anything owes its origin; originator; maker; one who completes a work of science or literature.’”[38] The court continued: [b]y writings in that clause is meant the literary productions of those authors, and congress very properly has declared these to include all forms of writing, printing, engravings, etchings, etc., by which the ideas in the mind of the author are given visible expression. The only reason why photographs were not included in the extended list in the act of 1802 is, probably, that they did not exist, as photography, as an art, was then unknown, and the scientific principle on which it rests . . . have all been discovered long since that statute as enacted. Nor is it supposed that the framers of the constitution did not understand the nature of copyright and the objects to which it was commonly applied, for copyright, as the exclusive right of a man to the production of his own genius or intellect, existed in England at that time . . . .[39] The court held “that the constitution is broad enough to cover an act authorizing copyright of photographs, so far as they are representatives of original intellectual conceptions of the author.”[40] However, there are limitations; the Compendium of U.S. Copyright Office Practices states, “the Office will not register works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author.”[41] This requirement of being a human author was furthered in the Ninth Circuit case of Naruto v. Slater.[42] In the case, People for the Ethical Treatment of Animals (PETA) sued a wildlife photographer, David Slater, on behalf of Naruto, a macaque monkey that used Slater’s camera to take a “selfie” portrait.[43] The court held that “animals other than humans—lack statutory standing to sue under the Copyright Act.”[44] Returning to the idea of a polar bear playing golf in the desert in the style of Van Gogh or Dalí, it should surely satisfy the element of creative input.[45] But the Compendium continues, “[t]he crucial question is ‘whether the “work” is basically one of human authorship, with the computer [or other device] merely being an assisting instrument, or whether the traditional elements of authorship in the work were actually conceived and executed not by man but by a machine.’”[46] The copyright office has not clearly defined certain vital words.[47] The Compendium thankfully gives seven examples of what does not qualify under its definition, none of which relates to generative AI.[48] The closest example being: “[d]eclicking or reducing the noise in a preexisting sound recording or converting a sound recording from monaural to stereo sound,” which can be done with minimal human input thanks to modern computer technology.[49] In a recent closely watched case, on February 21, 2023, the U.S. Copyright Office excluded individual, AI-generated images for Zarya Of The Dawn, a graphic novel by Kristina Kashtanova.[50] Initially, the graphic novel had been granted copyright protection for its story as well as the images within.[51] The original copyright has since been “canceled pursuant to 37 CFR 201.7(c)(4) for failure to exclude non-human authorship.”[52] In creating the graphic novel, “Mx. Kashtanova . . . used a series of written prompts to guide the AI software, Midjourney, to create the images in the book . . . .”[53] In response to the cancellation, Kashtanova’s attorney stated that Kashtanova: [e]ngaged in a creative, iterative process, which she describes as “working with the computer to get closer and closer to what I wanted to express.” This process included multiple rounds of composition, selection, arrangement, cropping, and editing for each image in the Work. Her efforts make her the author of the Work, including authorship of each image in the Work. The computer program she used, including the Midjourney image creation service, were but “an assisting instrument” to Kashtanova.[54] According to the court in Burrow-Giles, this would qualify under “all forms of writing, printing, engravings, etchings, etc., by which the ideas in the mind of the author are given visible expression.”[55] It is safe to say that AI-generated images did not exist at the time of the Copyright Act of 1802, just as photographs did not exist then.[56] There exists in the language of 17 U.S. Code § 102 the explicit verbiage of “original works of authorship fixed in a tangible medium of expression, now known or later developed” shall have copyright protection, presumably for this very reason, yet the Copyright Office has yet to acknowledge it as such.[57] Section 102(a) continues to list a non-exhaustive list of what is included as eligible for copyright.[58] Of importance to this paper is (1) literary work; and (5) pictorial, graphic, and sculptural works. Kashtanova’s work consisted of both of these elements, yet according to the Copyright Office, only (1) the literary work is covered. The Copyright Office’s statement that the images are that of non-human authorship, however, does not align with case law.[59] Unsurprisingly, 17 U.S. Code § 101 defines many key terms that appear in copyright law, with the exception of possibly the most ambiguous—author.[60] Furthermore, nowhere in the language of the Copyright Act is there mention that copyright is only available to human-made works or human “authors.”[61] Nor is there any mention that the actual hands of the author must physically touch the elements that result in the final copyrightable expression.[62] But in Naruto v Slater, the court cited Citizens to End Animal Suffering and Exploitation, Inc. v. New England Aquarium, which stated: “[i]f Congress and the President intended to take the extraordinary step of authorizing animals as well as people and legal entities to sue, they could, and should, have said so plainly.”[63] In 1999, the United States District Court for the Southern District of New York heard the case of Alexander Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic.[64] The case involved the filming of the R.M.S. Titanic and the lack of authorship granted to Mr. Lindsay at the time.[65] “Generally speaking, the author of a work is the person ‘who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.’”[66] Intuitively, in the case of photography, this would be the individual(s) who took the actual picture.[67] The court held that this intuition, however, is not always correct.[68] In a reference to Burrow-Giles, the court confirmed that “for over 100 years, the Supreme Court has recognized that photographs may receive copyright protection in ‘so far as they are representatives of original intellectual conceptions of the author.’”[69] The fact that Mr. Lindsay himself did not dive to the wreck of the Titanic and film it himself does not mean that he is not the author of the final footage.[70] Mr. Lindsay was the director, producer, and cinematographer of the underwater footage.[71] He had directed daily planning sessions with the film crew to make sure the lighting was as he wanted it.[72] At the end of each day, Mr. Lindsay reviewed the footage to ensure it was what he had wanted.[73] While never recording any footage himself that made it into the final expression, Mr. Lindsay had exhibited enough control over the creative process and expression of the idea to be considered an author in the eyes of the court.[74] If Mr. Lindsay had exhibited enough control to be considered an author, then what has changed in the case of Kris Kashtanova?[75] Both Lindsay and Kashtanova exhibited control over obtaining the final product they wished to achieve.[76] On the same note, neither actually took the photographs or film footage themselves; instead, Mr. Lindsay directed others as to how he wanted the scene shot, and Kashtanova directed a software program as to what she wanted displayed.[77] The only significant difference, aside from Mr. Lindsay’s expression being created in analog format and Kashtanova’s being created in a digital format, is that Mr. Lindsay assisted in building light towers, which were used to light the Titanic during the filming.[78] If the creation of an assistive tool to obtain the final expression is needed to warrant an expression copyrightable, then Dr. Stephen Thaler has met this need.[79] Dr. Thaler, a computer scientist, developed an A.I. system named DABUS, which he used to then create an image that looks like it could have been painted.[80] Not surprisingly, the copyright office has refused to provide copyright protection to the piece submitted for protection “because it lacks the human authorship necessary to support a copyright claim.”[81] In moving for summary judgment, Dr. Thaler argued that “allowing copyright on AI-generated Works encourages the development and use of creative AI, which results in the generation of more works and provides incentives for those works to be disseminated.”[82] If the entire reason patent and copyright law exists is to “promote the progress of science and useful arts” by encouraging individuals to make their respective writings and discoveries available to the general public, then it remains unclear how encouraging the growth of AI-generated works falls outside of the category that warrants protection being granted to the authors.[83] As mentioned above, the copyright act does not define “author(ship).”[84] “If statutory language is unambiguous, we will interpret and apply the statute according to its plain meaning unless a different meaning is apparent from the context or the plain meaning leads to absurd results.”[85] Merriam-Webster defines the plain meaning of “author” to be (1) the writer of a literary work (such as a book); (2) one that originates or creates something.[86] “Whether a statutory term is unambiguous, however, does not turn solely on dictionary definitions of its component words. Rather, ‘[t]he plainness or ambiguity of statutory language is determined [not only] by reference to the language itself, [but as well by] the specific context in which the language is used, and the broader context of the statute as a whole.”[87] Just as the court in Burrow-Gilesfound the lithographer qualified as the author since they made a substantial copyrightable creative contribution to the end product, so too was the contribution by Dr. Thaler and Mx. Kashtanova.[88] Just as the court stated in Burrow-Giles that photographs did not exist at the time of the Copyright Act, neither did computers nor AI-generative software exist.[89] To allow one but not the other would be inconsistent.[90] IV. Issues If we revisit the original concept of a line, we can see that although expression is the only element that can be copyrighted, idea and creativity are just as important since none of these three elements can stand on their own.[91] The further to the left of the line we go, the more we see that there are a finite number of original ideas until we arrive at a simple, basic idea.[92] For example, the idea to make a movie that follows a man.[93] There are countless movies where a male character is the lead actor; there is nothing unique or creative about it.[94] If that man were born into an unusual circumstance, however, it would now become more unique.[95] If that same man ends up being part of great historical moments, it becomes even more unique and defined; the creative element expands and takes the idea closer to a copyrightable expression.[96] If that man starts as a child and grows up, the expression is what we see in Forrest Gump.[97] If that man begins as a man and ages backward, we have The Curious Case of Benjamin Button.[98] Both movies started with a simple, basic idea, yet both expressed the idea differently, as slowly the creative input distanced the two storylines apart from each other.[99] Given proper funding, an individual could make a movie based on the prior example of a plot provided by ChatGPT.[100] Translating that plot into a film would surely contain a modicum of creativity, and that final expression would be worthy of copyright.[101] Using Microsoft Word as a word processor to write a novel with a non-infringing expression of a previous work would be worthy of copyright.[102] Speaking into a microphone that translates speech to text in the narration of a novel would result in a work capable of copyright protection.[103] These are all tools that allow an artist to express their ideas.[104] AI should also be seen as “a tool which allows an artist to express their creativity” as opposed to a hindrance.[105] Looking back at what is stated in the Compendium of U.S. Copyright Office Practices, “[t]he crucial question is ‘whether the “work” is basically one of human authorship, with the computer [or other device] merely being an assistinginstrument, or whether the traditional elements of authorship in the work were actually conceived and executed not by man but by a machine.’”[106] The Compendium explicitly states conceived and executed; therefore, if the conception of the idea was by a human and the expression was only executed by a machine, then the work should be capable of copyright protection.[107] As new technological means are introduced that help facilitate the fixation of expressive works, the copyright office needs to reexamine whether the use of these means results in the same expression that has been protected prior.[108] The Copyright Office stated in its letter to Kashtanova that “[t]he fact that Midjourney’s specific output cannot be predicted by users makes Midjourney different for copyright purposes than other tools used by artists.”[109] This is simply not true; the software does not randomly generate images out of thin air; it creates images from textual descriptions input by the user.[110] The image can then be further altered until the end user is satisfied with the resulting image, either within the program or by exporting it to another program, such as Adobe Photoshop.[111] The resulting image is a result of the author's creativity and specific inputs.[112] If AI-generated work is not protected, then there can logically be no infringement of AI-generated work.[113] If there is no infringement, there is nothing to stop the theft of another’s intellectual property.[114] This would arguably halt the progress of science and useful arts as authors would be more inclined to leave their writings and discoveries out of the public eye.[115] In addition, not allowing AI-generated work would result in an undue burden on the Copyright Office to filter out what has been created by AI and what has been created by human hands.[116] AI images have already fooled professional photographers.[117] Recently, an Instagram “photographer,” Jos Avery, who has more than 35,000 followers and over 180 photos, has come clean and admitted all but two of his photos were essentially created by AI.[118] To create the images, Jos generates roughly 85 images through Midjourney to find one useable image, which he then imports into Adobe Lightroom and Photoshop “to composite and use post blurring.”[119] “It takes an enormous amount of effort to take AI-generated elements and create something that looks like it was taken by a human photographer.”[120] Jos continues by stating, “[t]he creative process is still very much in the hands of the artist or photographer, not the computer.”[121] Based on the Copyright Offices’ findings in Thaler and Kashtanova, these photos would not be capable of copyright protection either.[122] At the same time, there is nothing that would prevent a digital photo taken by a camera that is subsequently heavily modified in Lightroom or Photoshop from receiving copyright protection.[123] In both cases, the final expression is a result of the author’s contributions to an initial image, one being obtained by inputting the desired prompts into a program and the other by clicking a button on a camera, both of which should be seen as assistive tools.[124] V. Moving Forward Rather than frown on AI, the Copyright Office should embrace it, as has been done in the United Kingdom.[125] The United Kingdom has stated that “copyright is also shaped by technology,” and that “[t]he government supports a copyright system which encourages creativity.”[126] The United Kingdom allows each work created by AI to be protected by copyright as long as it does not meet an exception to copyrightability.[127] This is the complete opposite of the United States Copyright Office’s decision that the author(ship) requirement in an AI work is not met.[128] The United Kingdom also recognizes that work created by AI is capable of infringing on another’s work.[129] “[A]n AI may store a copy of a song within its memory . . . [and] infringe copyright by generating copies of the song externally, performing it, distributing it, or communicating it to the public.”[130] “When copyright is infringed, the copyright owner has the right to take action against an infringer,” so too “a person or legal entity must ultimately be legally responsible” when AI infringes copyright.[131] The United States has not yet addressed this issue.[132] Annemarie Bridy stated, “we should consider how copyright law’s current provisions might be modified to explicitly address ownership of rights in AI-authored works” in 2011, this statement has never been more relevant than it is now.[133] She further provides a possible solution of classifying AI-generated work as a derivative work[134] since the “knowledge” that the AI system has is based on information available to it, that so long as that work is “non-infringing and contains new creative material, the copyright in the new material should belong to the author of that material and not to the author of the original work.[135] The United Kingdom, unlike most other countries, even goes so far as to protect computer-generated work that is without a human creator and allows protection of that work for 50 years from the date the work is created.[136] This was originally proposed in 1987 with the expectation that other countries would recognize the category as well; this did not come to fruition, however.[137] Currently, Ireland, Hong Kong, India, New Zealand, and South Africa recognize computer-generated works, while countries such as Australia, Germany, Brazil, Colombia, Mexico, and Spain require human authorship.[138] The United States should find a happy medium that promotes the progress of science and useful arts as intended under Article 1, Section 8 of the U.S. Constitution.[139] Currently, copyright in a work created after January 1, 1978, endures for a term consisting of the life of the author plus 70 years after the author’s death.[140] If the work is anonymous, a work made for hire, or authored under a pseudonym, the duration of copyright is 95 years from its first publication or 120 years from its creation, whichever expires first.[141] Both of these scenarios are likely too extreme for AI-generative work as the tip of the iceberg has just been scratched as to what its capabilities and limitations are.[142] As tools such as ChatGPT, Midjourny,DALL·E 2, and Google Bard become more popular and accessible, people will begin using them more.[143] In addition, these programs will result in many more AI tools being created, and a few years from now, the use of these platforms will become as widely used as cellular phones and email have become.[144] Eventually, being able to determine what was created by AI and by humans will become almost impossible, and for the reasons mentioned above, the Copyright Office should follow the lead of the United Kingdom and grant copyright for a period of 50 years from the date of creation for this new category of expression.[145] Doing so will allow enough incentive for experimentation and growth in the latest tools available and allow an artist to express their creativity in once unimaginable ways while being transparent in the method the artist used to create their work.[146] [1] Line, Dictionairy.com, https://www.dictionary.com/browse/line (last visited Nov. 1, 2023). [2] Id. [3] Idea, Dictionairy.com, https://www.dictionary.com/browse/idea (last visited Nov. 1, 2023). [4] Expression, Dictionairy.com, https://www.dictionary.com/browse/expression (last visited Nov. 1, 2023). [5] Copyright, Black’s Law Dictionary (11th ed. 2019). [6] 17 U.S.C. § 106. [7] 17 U.S.C. § 102. [8] ATC Distribution Group, Inc., v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d 700, 707 (6th Cir. 2005) (“[o]riginal and creative ideas, however, are not copyrightable . . .) (emphasis in original). [9] Feist Publications, Inc. vs Rural Telephone Service Company, Inc., 499 U.S. 340, 341 (1991). [10] See generally Line, supra note1. [11] See Feist Publications, supra note9. [12] See Copyright, supra note5. [13] OpenAI, https://openai.com/ (last visited Nov. 1, 2023); see discussion infra Section II. [14] See discussion infra Section III. [15] See discussion infra Sections IV, V. [16] Joseph Owen, On My Radar: Gemma Whelan’s Cultural Highlights, The Guardian (Nov. 20, 2016, 5:00 AM), https://www.theguardian.com/culture/2016/nov/20/on-my-radar-gemma-whelan-black-mirror-christine-and-the-queens (last visited Nov. 1, 2023). [17] Id. [18] Nico Grant & Case Metz, A New Chat Bot Is a ‘Code Red’ for Google’s Search Business, The New York Times (Dec. 21, 2022), https://www.nytimes.com/2022/12/21/technology/ai-chatgpt-google-search.html (last visited Nov. 1, 2023); Ben Dickson, How 2022 Became the Year of Generative AI, Venture Beat (Nov. 11, 2022, 9:18 AM), https://venturebeat.com/ai/how-2022-became-the-year-of-generative-ai/ (last visited Mar. 6, 2023). [19] Nazaaha Penick, AI Chat-GPT Developments Provoke Discussion In Academic Spheres,Whitman Wire (Feb. 2, 2023), https://whitmanwire.com/news/2023/02/02/ai-chat-gpt-developments-provoke-discussion-in-academic-spheres/ (last visited Mar. 5, 2023). [20] OpenAI, supra note13. [21] Id. [22] Rob Toews, What Artificial Intelligence Still Can’t Do, Forbes (June 1, 2021, 10:00 AM), https://www.forbes.com/sites/robtoews/2021/06/01/what-artificial-intelligence-still-cant-do/ (last visited Nov. 1, 2023). [23] Id. [24] ChatGPT Query, ChatGPT, https://openai.com/blog/chatgpt (click “Try ChatGPT; then search “A man went to a restaurant. He ordered a steak. He left a big tip. What did the man eat?”). [25] See id. [26] Bernard Marr, The Best Examples of What You Can Do With ChatGPT, Forbes (Mar. 1, 2023, 2:22 AM), https://www.forbes.com/sites/bernardmarr/2023/03/01/the-best-examples-of-what-you-can-do-with-chatgpt/ (last visited Nov. 1, 2023). [27] ChatGPT Query,ChatGPT, https://openai.com/blog/chatgpt (click “Try ChatGPT” hyperlink; then search “Write me a 49-word or less synopsis for an action movie”) (when asked to “regenerate response,” the new synopsis was “[w]hen a group of terrorists seize control of a skyscraper, a lone cop must navigate through the building’s treacherous floors and take down the criminals one by one. Armed with only his wits and his training, he races against time to save the hostages and bring the villains to justice.” Theoretically, each response should never be 100% replicated). [28] DALL·E 2, https://openai.com/product/dall-e-2 (last visited Mar. 5, 2023). [29] DALL·E 2 Query, https://openai.com/product/dall-e-2 (click “Try DALL·E” hyperlink; then search “create an image of a polar bear playing golf in the desert”). [30] DALL·E 2 Query, https://openai.com/product/dall-e-2 (click “Try DALL·E” hyperlink; then search “create an image of a polar bear playing golf in the desert in the style of Van Gogh or Dalí”) (creatively, when most individuals think of a polar bear, they don’t think of them playing golf, or being in a desert. Likewise, when one thinks of Van Gogh or Dalí, one does not think of a polar bear. The combination of these elements constitutes a unique idea). [31] See What is Generative AI?, McKinsey & Company (Jan. 19, 2023), https://www.mckinsey.com/featured-insights/mckinsey-explainers/what-is-generative-ai (last visited Nov. 1, 2023). [32] Id. [33] See generally id. (describing the capabilities of generative AI). [34] See discussion infra Section III. [35] 17 U.S.C. § 102 (emphasis added). [36] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 56 (1884); U.S. Const.art 1, § 8 (“[t]o promote the Progress of Science and useful Arts, by securing for a limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”). [37] Id.at 56 (1884). [38] Id.at 57–58 (emphasis added). [39] Id.at 58 (emphasis added). [40] Id. [41] United States Copyright Office, Compendium of U.S. Copyright Office Practices§ 312 (3rd ed. 2021) (emphasis added) (there are multiple elements here broken down as “the Office will not register (1) works (2) produced by a machine (3) or mere mechanical process that operates randomly (4) or automatically without (5) any creative inputor(6) intervention from a human author). [42] Naruto v Slater, 888 F.3d 418, 426 (9th Cir. 2018). [43] Id.at 420. [44] Id.at 426. [45] See generally supra notes 20–25 and accompanying text. [46] United States Copyright Office, supra note 41 (emphasis added) (there are multiple elements again that can be broken down as:“[t]he crucial question is ‘whether the “work” is basically (1) one of human authorship, (2) with the computer [or other device] merely being an assisting instrument, (3) or whether the traditional elements of authorship in the work were actually conceived (4) and executed not by man but by a machine. The compendium does not define the traditional elements of authorship). [47] See generally supra notes 36 and 38 and accompanying text. [48] United States Copyright Office, supra note 41. [49] Id. [50] James Hookway, AI-Generated Comic Book ‘Zarya Of The Dawn’ Keeps Copyright but Key Images Excluded, The Wall Street Journal (Feb. 24, 2023, 1:01 PM), https://www.wsj.com/articles/ai-generated-comic-book-zarya-of-the-dawn-keeps-copyright-but-key-images-excluded-c8094509 (last visited Nov. 1, 2023). [51] Franklin Graves, Copyright Office Pilot Public Records System Mistakenly Reflects Cancellation of Registration for AI Graphic Novel, IP Watchdog (Jan. 24, 2023, 2:15 PM), https://ipwatchdog.com/2023/01/24/copyright-office-publishes-retracts-official-cancellation-registration- ai-graphic-novel/id=155686/ (last visited Nov. 1, 2023). [52] Zarya Of The Dawn, Registration No. VAU001480196. [53] James Hookway, supra note 47 (Kashtanova uses gender neutral pronouns). [54] Letter from Van Lindberg, Attorney, Taylor English Duma LLP, to Robert J. Kasunic, Associate Register of Copyrights and Director of Registration Policy and Practice, U.S. Copyright Office (Nov. 21, 2022) (available at https://drive.google.com/file/d/1Idhn8eb9t883mm_U4CxAQQ_aANTI7UTX/view). [55] See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 54, 58 (1884) (emphasis added). [56] Id. [57] 17 U.S.C. § 102 (emphasis added). [58] 17 U.S.C. § 102(a) (“[w]orks of authorship include the following”) (emphasis added) ([t]he terms “including” and “such as” are illustrative and not limitative). [59] See generally Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 54, 58 (1884);see generally Alexander Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic, 1999 WL 816163 (S.D.N.Y. 1999); see generally discussion infra. [60] 17 U.S.C. § 101 (the term “human” is absent as well). [61] Copyright Law of the United States, Title 17 of the United States Code. [62] See generally id. [63] Naruto,supranote 42 at 425; Citizens to End Animal Suffering and Exploitation, Inc. v. New England Aquarium, 836 F.Supp. 45, 49 (D. Mass. 1993). [64] Alexander Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic, 1999 WL 816163 (S.D.N.Y. 1999). [65] Id. [66] Id.at *4 (citing Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989)). [67] Id.at *4; Naruto, supra note 42 (Naruto, a monkey, had taken a photograph of itself, a “selfie,” and the question ultimately was whether or not Naruto held the copyright to the photo or if the photographer whose camera was used to shoot the image, was the copyright owner). [68] Id. [69] Id.(citing Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884)). [70] Id.at *5. [71] Id. [72] Id. [73] Id. [74] Id. [75] See generally id. [76] See Letter from Van Lindberg, Attorney, Taylor English Duma LLP, to Robert J. Kasunic, Associate Register of Copyrights and Director of Registration Policy and Practice, U.S. Copyright Office (Nov. 21, 2022) (available at https://drive.google.com/file/d/1Idhn8eb9t883mm_U4CxAQQ_aANTI7UTX/view);seeAlexander Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic,1999 WL 816163, *2 (S.D.N.Y. 1999). [77] See Letter from Van Lindberg, Attorney, Taylor English Duma LLP, to Robert J. Kasunic, Associate Register of Copyrights and Director of Registration Policy and Practice, U.S. Copyright Office (Nov. 21, 2022) (available at https://drive.google.com/file/d/1Idhn8eb9t883mm_U4CxAQQ_aANTI7UTX/view);seeAlexander Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic,1999 WL 816163, *2 (S.D.N.Y. 1999). [78] Compare Letter from Van Lindberg, Attorney, Taylor English Duma LLP, to Robert J. Kasunic, Associate Register of Copyrights and Director of Registration Policy and Practice, U.S. Copyright Office (Nov. 21, 2022) (available at https://drive.google.com/file/d/1Idhn8eb9t883mm_U4CxAQQ_aANTI7UTX/view)withAlexander Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic,1999 WL 816163, *2 (S.D.N.Y. 1999). [79] Min Chen, A Scientist Has Filed Suit Against the U.S. Copyright Office, Arguing His A.I.-Generated Art Should Be Granted Protections, ArtNet News (Jan. 12, 2023), https://news.artnet.com/art-world/ai-art-intellectual-property-lawsuit-stephen-thaler-2242031 (last visited Nov. 1, 2023). [80] Id.; In Petitioner’s Statement of Undisputed Material Facts in Support of Petitioner’s Motion for Summary Judgement, Pet’r’s Mem. Supp. Summ. J. 2–6 (available at https://fingfx.thomsonreuters.com/gfx/legaldocs/gdpzqwwnmvw/IP%20AI%20COPYRIGHT%20sjmotion.pdf). [81] Chen supra note 79. [82] In Petitioner’s Introduction and Summary of Argument in Support of Petitioner’s Motion for Summary Judgement, Pet’r’s Mem. Supp. Summ. J. 1 (available at https://fingfx.thomsonreuters.com/gfx/legaldocs/gdpzqwwnmvw/IP%20AI%20COPYRIGHT%20sjmotion.pdf). [83] See U.S. Const.art 1, § 8. [84] 17 U.S.C. § 101. [85] CITGO Petroleum Corp. v. Hegar, 636 S.W.3d 281, 286 (Cir. Ct. App. Tex. 2021). [86] Author, Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/author(last visited Nov. 1, 2023). [87] Yates v. U.S., 574 U.S. 528, 537 (2015) (citing Robinson v. Shell Oil Co., 519 U.S. 337, 341 (1997)). [88] Compare Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884), with James Hookway, AI Generated Comic Book ‘Zarya Of The Dawn’ Keeps Copyright but Key Images Excluded, The Wall Street Journal (Feb. 24, 2023, 1:01 PM), https://www.wsj.com/articles/ai-generated-comic-book-zarya-of-the-dawn-keeps-copyright-but-key-images-excluded-c8094509 (last visited Nov. 1, 2023), and In Petitioner’s Introduction and Summary of Argument in Support of Petitioner’s Motion for Summary Judgement, Pet’r’s Mem. Supp. Summ. J. 1 (available at https://fingfx.thomsonreuters.com/gfx/legaldocs/gdpzqwwnmvw/IP%20AI%20COPYRIGHT%20sjmotion.pdf). [89] Compare Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884), with Timeline of Computer History, Computer History Museum, https://www.computerhistory.org/timeline/computers/ (last visited Nov. 1, 2023), and Ben Dickson, How 2022 Became the Year of Generative AI, Venture Beat (Nov. 11, 2022, 9:18 AM), https://venturebeat.com/ai/how-2022-became-the-year-of-generative-ai/ (last visited Nov. 1, 2023). [90] See generally Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884); Nonsensical, Dictionary.com, https://www.dictionary.com/browse/nonsensical(last visited Nov. 1, 2023). [91] Feist Publications, supra note 9. [92] See generally Kirsten Acuna, 11 Vastly Different Movies That Actually Have the Same Plot, Business Insider (Apr. 22, 2013, 10:30 AM), https://www.businessinsider.com/movies-with-the-same-plot-2013-4 (last visited Nov. 1, 2023) (detailing 11 different movies that stem from the same idea). [93] See Brianna Zigler, Different Movies with the Same Plots, Stacker (June 7, 2021), https://stacker.com/movies/different-movies-same-plots (last visited Nov. 1, 2023). [94] Id. [95] Id. [96] Id. [97] Id. [98] Id. [99] See generally id. [100] See generally discussion supra Section II. [101] See Alexander Lindsay, supra note 64. [102] See 17 U.S.C. § 102. [103] See generally id. (stating that copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known, or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device). [104] See generally id. (stating that copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known, or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device). [105] Artificial Intelligence Call for Views: Copyright and Related Rights, GOV.UK (Mar. 23, 2021), https://www.gov.uk/government/consultations/artificial-intelligence-and-intellectual-property-call-for-views/artificial-intelligence-call-for- views-copyright-and-related-rights (last visited Nov. 1, 2023). [106] United States Copyright Office, supra note 41 (emphasis added) (there are multiple elements again that can be broken down as: “[t]he crucial question is ‘whether the “work” is basically (1) one of human authorship, (2) with the computer [or other device] merely being an assisting instrument, (3) or whether the traditional elements of authorship in the work were actually conceived (4) and executed not by man but by a machine. The compendium does not define the traditional elements of authorship). [107] Id. [108] See Lateef Mtima, Digital Tools, and Copyright Clay: Restoring the Artist/Audience Symbiosis, 38 Whittier L. Rev. 104, 104–05 (2018). [109] Blake Brittain, AI-Created Images Lose U.S. Copyrights in Test for New Technology, Reuters (Feb. 22, 2023, 8:41 PM), https://www.reuters.com/legal/ai-created-images-lose-us-copyrights-test-new-technology-2023-02-22/ (last visited Nov. 1, 2023). [110] Arham Islam, How Do DALL·E 2, Stable Diffusion, and Midjourney work?, Marktechpost (Nov. 14, 2022), https://www.marktechpost.com/2022/11/14/how-do-dall%C2%B7e-2-stable-diffusion-and-midjourney-work/ (last visited Nov. 1, 2023). [111] Id.; see also Letter from Van Lindberg, Attorney, Taylor English Duma LLP, to Robert J. Kasunic, Associate Register of Copyrights and Director of Registration Policy and Practice, U.S. Copyright Office (Nov. 21, 2022) (available at https://drive.google.com/file/d/1Idhn8eb9t883mm_U4CxAQQ_aANTI7UTX/view). [112] See infra text accompanying notes 118–21 (discussing process used by Jos Avery). [113] See 17 U.S.C. § 106. [114] See generally 17 U.S.C. § 107. [115] See generally U.S. Const. art 1, § 8. [116] See Matt Growcoot & Jaron Schneider, The Fox is in the Henhouse: AI Photos Are Beyond the Point of No Return, Peta Pixel (Feb. 27, 2023), https://petapixel.com/2023/02/27/the-fox-is-in-the-henhouse-ai-photos-are-beyond-the-point-of-no-return/ (last visited Nov. 1, 2023). [117] Matt Growcoot, This AI Image Fooled Judges and Won a Photography Contest, Peta Pixel (Feb. 10, 2023), https://petapixel.com/2023/02/10/ai-image-fools-judges-and-wins-photography-contest/ (last visited Nov. 1, 2023). [118] Matt Growcoot, Popular Instagram Photographer Revealed as AI Fraud, Peta Pixel (Feb. 21, 2023), https://petapixel.com/2023/02/21/popular-instagram-photographer-revealed-as-ai-fraud/ (last visited Nov. 1, 2023); Jos Avery Portraits (@averyseasonart),Instagram,https://www.instagram.com/averyseasonart/ (last visited Nov. 1, 2023). [119] Benj Edwards, Viral Instagram Photographer Has a Confession: His Photos are AI-Generated, ARS Technica (Feb. 21, 2023, 7:30 AM), https://arstechnica.com/information-technology/2023/02/viral-instagram-photographer-has-a-confession-his-photos-are-ai-generated/ (last visited Nov. 1, 2023). [120] Id. [121] Id. [122] See discussion supra Section III. [123] See 17 U.S.C. § 102(a)(5). [124] See generally id.; see also Alexander Lindsay, supra note 60(many photographers go through a great deal of effort to achieve the proper conditions for a photograph, whether it be building the proper structures for lighting or adjusting exposure to achieve a desired effect, but many photographers also take the initial product into a photo editing software such as Adobe Lightroom or Photoshop to make additional changes which results in the final product. These photos receive the same copyright protection as a photo taken on 35mm film that is developed and unaltered or not “touched up”). [125] Artificial Intelligence Call for Views: Copyright and Related Rights, supra note 105. [126] Id. [127] Id. [128] See discussion supra Section III. [129] Artificial Intelligence Call for Views: Copyright and Related Rights, supra note 105. [130] Id. [131] Id. [132] See discussion supra Section III. [133] Annemarie Bridy, Coding Creativity: Copyright and the Artificially Intelligent Author, 2012 Stan. Tech. L. Rev. 5, 63 (2012). [134] 17 U.S.C. § 101 (a “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”). [135] Annemarie Bridy, supra note 133 at 65. [136] Artificial Intelligence Call for Views: Copyright and Related Rights, supra note 105. [137] Id. [138] Lisa T. Oratz, A New Generation of Legal Issues Part 1: The Latest Chapter in Copyrightability of AI-Generated Works, Perkins Coie (Jan. 26, 2023), https://www.perkinscoie.com/en/news-insights/a-new-generation-of-legal-issues-part-1-the-latest-chapter-in-copyrightability-of-ai- generated-works.html (last visited Oct. 31, 2023). [139] U.S. Const. art 1, § 8. [140] 17 U.S.C. § 302. [141] Id. [142] See discussion supra Section V. [143] Brian Kennedy, Alec Tyson & Emily Saks, Public Awareness of Artificial Intelligence in Everyday Activities, Pew Research Center (Feb. 15, 2023), https://www.pewresearch.org/science/2023/02/15/public-awareness-of-artificial-intelligence-in-everyday-activities/ (last visited Oct. 31, 2023) (“[a]bout a quarter (27%) of Americans say they interact with artificial intelligence almost constantly or several times a day. Another 28% say they interact with AI about once a day or several times a week”). [144] Hallie Parker, The Always Up-to-date List of the 50 Best AI Tools in 2023, ClickUp (Oct. 2, 2023), https://clickup.com/blog/ai-tools/ (last visited Oct. 31, 2023). [145] See discussion supra Section V. [146] See discussion supra Section V.
Notable Trademark Decisions, November 2023 By: Scott Greenberg and Vrudhi Raimugia
Federal Circuit Holds That Fraud In An Affidavit of Incontestability Does Not Warrant Cancellation Of A Trademark Registration Under Section 14 Of The Lanham Act In a precedential decision, the United States Court of Appeals for the Federal Circuit (“CAFC”) has ruled that a fraudulent statement within a trademark registrant’s declaration under Section 15 of the Lanham Act, which serves the purpose of making an existing registration incontestable, does not warrant the remedy of cancellation under Section 14 of the statute, because Section 14, in relevant part, only authorizes the USPTO’s Trademark Trial and Appeal Board to cancel a registration where the registration “was obtained” fraudulently. Great Concepts, LLC v. Chutter, Inc., 84 F.4th 1014, 2023 USPQ2d 1215, 2023 U.S. App. LEXIS 27624 (Fed. Cir. Oct. 18, 2023). Great Concepts, LLC (“Great Concepts”) owns a US trademark registration for the mark “DANTANNA’S” for restaurant services. Dan Tana, the predecessor-in-interest of Chutter, Inc. (“Chutter”), had brought both (1) a cancellation proceeding against Great Concept’s registration before the USPTO’s Trademark Trial and Appeal Board (“TTAB” or “Board”) and (2) a civil action for infringement in district court against Great Concepts, based on Tana’s asserted prior common law rights in the mark “DAN TANA” for restaurant services. In 2010, while the cancellation proceeding and an appeal in the civil action were both still pending, Great Concepts filed a combined declaration of use and incontestability under Sections 8 and 15 of the Lanham Act (15 U.S.C. §§ 1058, 1065), which was signed by Great Concepts’ former attorney, in order to maintain the registration (the Section 8 use declaration) and make the registration incontestable (the optional Section 15 portion of the combined declaration). Incontestability provides a registrant with additional evidentiary advantages and makes it more difficult for another party to invalidate the registration. The Section 15 “incontestability” portion of Great Concept’s declaration included the statement, required for a Section 15 declaration, that "there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts." This statement was untrue at the time it was made due to the pendency of Mr. Tana’s cancellation proceeding and civil action. 2023 U.S. App. LEXIS 27624 at *3. Mr. Tana’s cancellation proceeding and civil action were both subsequently dismissed. However, in 2015 Chutter, Mr. Tana’s successor-in-interest, commenced the present cancellation proceeding before the Board seeking to cancel Great Concept’s registration under Section 14 (15 U.S.C. § 1064) on the ground of fraud in Great Concept’s declaration of incontestability. The Board granted Chutter’s petition to cancel, concluding that (1) the false statements made by Great Concept’s then-attorney in the declaration of incontestability constituted a reckless disregard for the truth and, as such, satisfied the standard for finding fraud, and (2) the appropriate remedy was cancellation of the registration under Section 14, which states that a registration can be cancelled if it was “obtained fraudulently”. On appeal, the CAFC panel, in a 2-1 decision based on a de novoreview of the Board’s legal conclusions, reversed the conclusion of the Board that cancellation under Section 14 was a proper remedy for a fraudulent statement in a Section 15 declaration of incontestability, including, as in this case, such a statement that is made only within the Section 15 portion of a combined declaration under Sections 8 and 15. 2023 U.S. App. LEXIS 27624 at *8-9. The CAFC’s majority opinion concludes that rendering an already issued registration incontestable is not the same thing as “obtaining” a registration in the language of Section 14: Rendering an already-registered mark harder to invalidate, which is the impact of incontestable status, is not the same thing — or even nearly the same thing — as getting, acquiring, or securing registration of the mark in the first place. Hence, fraud committed in connection with obtaining incontestable status is distinctly not fraud committed in connection with obtaining the registration itself. Id. at *12. The majority opinion noted that fraud in maintaining a registration, such as a fraudulent statement within the Section 8 declaration-of-use portion of a combined declaration (the portion that is mandatory in order to maintain the registration), has been held by the CAFC to warrant cancellation under Section 14. Id.at *9 (citing Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986)). However, the majority distinguished the present case because: [T]here is no evidence (or even allegation) that Mr. Taylor's Section 8 declaration was false. A Section 15 declaration is in no way necessary to maintaining registration of a mark. Here, the happenstance that Mr. Taylor filed a combined declaration, which had one portion devoted to Section 8 and another to Section 15, does not render the Section 8 portion false or fraudulent, and neither does it make the Section 15 portion part of an effort to "maintain" a registration. Id. at *9-10. The CAFC therefore concluded that the Board was not permitted to cancel Great Concept’s registration under Section 14 even if the misstatement in the Section 15 declaration was fraudulent. For this reason, the majority declined to reach the issue of whether the elements of fraud were established in this case. Id. at *7, fn.2. The majority also noted, and disagreed with, the dissenting opinion’s assertion that the majority opinion will encourage fraud. Instead, the majority decision concludes that it leaves the Board “with sufficient mechanisms to adequately deter fraud”, including the power to sanction a party-registrant who has committed fraud within a declaration of incontestability and/or a registrant’s attorney who has signed such a declaration. Id. at *21. Therefore, the CAFC reversed the Board’s decision, but remanded the case to the Board to “consider whether to declare that Great Concepts' mark does not enjoy incontestable status and to evaluate whether to impose other sanctions on Great Concepts or its attorney.” Id. at *22. Great Concepts, LLC v. Chutter, Inc., 84 F.4th 1014, 2023 USPQ2d 1215, 2023 U.S. App. LEXIS 27624 (Fed. Cir. Oct. 18, 2023). [SG]. Federal Circuit Refuses TM “Everybody vs Racism” Due To Lack Of Source Identification GO & Associates, LLC ("GO") appealed before the United States Court of Appeals for the Federal Circuit (“Federal Circuit”), a decision by the United States Trademark Trial and Appeal Board (“TTAB”) affirming theexamining attorney’s final refusal to register GO's applied-for mark "EVERYBODY VS RACISM." GO filed an application in 2020 to register "EVERYBODY VS RACISM" for various goods (i.e., tote bags and apparel) or services (i.e., promoting awareness of the need for racial reconciliation). The examining attorney refused registration, stating that the mark failed to function as a source-identifier but rather conveyed an informational message. The examiner also cited examples of such informational use including use by referees in the National Basketball Association; in titles of rap songs, podcasts, church sermons, and YouTube videos; and on various articles of clothing. GO argued that its use of the mark was source-identifying, while third-party uses were ornamental and non-trademark uses. GO also argued that the third-party uses of the mark in speech, rap songs, podcasts, church sermons, and the like did not render the mark incapable of functioning as a trademark, in support of which, GO submitted search engine optimization evidence, allegedly showing that the mark was “almost never used or searched” before GO began using it in May 2020, and that GO’s successful policing of the mark throughout the summer of 2020 led to “a significant drop in searches.” To that, the the examining attorney concluded that competitors’ ornamental uses of the mark only reinforced the fact that consumers would likely view the mark “as a sentiment rather than a source.” The Federal Circuit relied on 15 U.S.C. §§ 1052, 1053 stating that the Lanham Act conditions the registrability of any mark on its ability to distinguish an applicant’s goods and services from those of others. In other words, it is a threshold requirement of registrability that the mark “identify and distinguish” the goods and services of the applicant from those of others, as well as “indicate the source” of those goods and services. 15 U.S.C. § 1127; Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 146 (2023). The Federal Circuit, considering the diversity and breadth of third-party uses, found that GO’s own specimens and uses were insufficient to render the mark source-identifying. During the proceedings, GO raised an argument that the Patent and Trademark Office’s (“PTO”) application of the so-called “Informational Matter Doctrine” results in the per se refusal of any mark that contains informational matter, regardless of whether or not consumers perceive the mark as source identifying. The Federal Circuit, disagreed and highlighted that there were many marks, such as GO’s own example, MAKE AMERICA GREAT AGAIN, that contained informational matter (e.g., widely used slogans), but nevertheless functioned as source-identifiers. The Federal Circuit, based on all arguments and evidence, affirmed the TTAB's decision to refuse the registration of "EVERYBODY VS RACISM" as a trademark. In re GO & Associates, LLC, 2023 U.S. App. LEXIS 30060 (Fed. Cir. Nov. 13, 2023) (nonprecedential).[VR]. TTAB Grants Cancellation Of TM “CS” On Grounds Of Abandonment Due To Non-Use In a recent precedential opinion, the United States Trademark Trial and Appeal Board (“TTAB”) decided on a matter of cancellation of a trademark on the ground of abandonment. In this case, registrant Peavey Electronics Corporation (“the Respondent”) sent a cease-and-desist notice to Adamson Systems Engineering (“the Petitioner”), claiming infringement based on potential consumer confusion. In response to that, the Petitioner commenced a cancellation proceeding before the USPTO’s Trademark Trial and Appeal Board. The Respondent claimed that it was using its mark “CS” in the sale of speakers, amplifiers, guitars, bass guitars, audio and recording equipment since the 1970s, and did not abandon the mark. The TTAB relied on 15 U.S.C. § 1127 which provides that a trademark is deemed abandoned if its use has been discontinued with the intent not to resume, and nonuse for three consecutive years is considered presumptive evidence of abandonment. The relevant definition of "use" requires bona fide use in the ordinary course of trade. The TTAB stated that there are two elements to a nonuse abandonment claim: (1) use of the mark has been discontinued, (2) with intent not to resume use. Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 2022 USPQ2d 513, *4 (Fed. Cir. 2022). The TTAB also stated that since a mark registered on the Principal Register is presumed to be valid, 15 U.S.C. § 1057(b), “the burden of persuasion in a cancellation proceeding rests on the party seeking to cancel the registration. … A party seeking to cancel a registration must overcome the registration’s presumption of validity by a preponderance of the evidence.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (citing Cerveceria Centroamericana, 13 USPQ2d at 1309 and W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665-66 (Fed. Cir. 1994)). The Petitioner, to prove non-use of the mark on the part of the Respondent, highlighted the following: in the early 2000s, the Respondent stopped manufacturing the CS amplifiers in the United States and outsourced production to a Chinese firm; by 2013, the Respondent ceased promoting the CS amplifiers in the United States, and the CS amplifiers were absent from catalogs after that year; in addition, consumer discussions on Respondent's message boards from 2015 indicated that CS amplifiers were no longer available, with Respondent directing them to a different line of amplifiers. Further, domestic U.S. sales of CS amplifiers reportedly declined, reaching a few in 2016-2017, none from 2018 through 2020, and only single-digit sales in 2021, and in February 2021, Respondent’s U.S. website stated that its CS amplifiers were no longer available. The Petitioner added that these facts were uncontroverted, and established a period of nonuse in the United States of at least three years—if not since 2016, then at least throughout 2018 to 2020. The TTAB concurred, finding that there was at least a three-year period of nonuse of the mark in the United States. The Board also noted thatinternational sales from Respondent's China warehouse remained in the five-to-six figure range annually from 2012 through 2021, so “Respondent could have furnished inventory to the domestic market, but evidently chose not to.” 2023 TTAB LEXIS 454 at *38. Moreover, “Respondent's international shipments of its Chinese-manufactured goods from its China warehouse to non-U.S. buyers do not constitute use in commerce within the meaning of the Trademark Act.” Id. at *39. Overall, the TTAB found that Respondent’s de minimis domestic sales of the CS mark on amplifiers between 2016 and 2021 were insufficient to constitute bona fide use of that mark in the ordinary course of trade. See Executive Coach Builders v. SPV Coach, 123 USPQ2d at 1197 (isolated, de minimis uses insufficient to constitute use of mark in ordinary course of trade). Therefore, Petitioner successfully established a prima facie case of abandonment, raising a rebuttable presumption that the registered mark had been abandoned. In addition, the TTAB found that Respondent failed to rebut the presumption of abandonment because it failed to present evidence showing that Respondent, during the period of nonuse, had an intention to resume use of the registered mark in the US in connection with identified goods. In the absence of such evidence, it was insufficient for Respondent to rely upon such facts as third-party re-sale of the marked goods. Id. at *46. The TTAB therefore granted the petition to cancel the Respondent’s mark on the ground of abandonment. Adamson Sys. Eng'g, Inc. v. Peavey Elecs. Corp., 2023 TTAB LEXIS 454 (TTAB Nov. 1, 2023) (precedential). [VR].
Historians Corner
BY: DALE CARLSON*
A recent email exchange with Past President Tom Creel [1995-96] spurred me into thinking about social activities the NYIPLA provided to its members several decades ago. One was the so-called "dinner-dance" - a Spring gathering that involved eating, dancing and other sports. One of the last of these was held on May 8th, 1981 at the Westchester Country Club. An ad promoting this event is featured in the attached April 1981 NYPLA Bulletin, as The NYIPLA Report was then named. It is worth noting that the gathering featured golf and tennis prior to the dining and dancing. The attendees were likely exhausted by nightfall. Another was the so-called "CLE Weekend Seminar". It was typically held in the Fall, oftentimes on Veterans' Day weekend. Our Association touted continuing legal education credits long before the New York State Bar made CLE mandatory. An ad promoting the 1984 [think George Orwell] CLE Seminar at Arrowwood Conference Center in Westchester is featured in the attached October 1984 NYPTC [quite a mouthful] Bulletin. Although the purpose of the seminar was largely educational, it also featured a dinner-dance! My favorite CLE seminars were ones held at Skytop Lodge in the Poconos in 1985, 1986 and 1987, and ones held at Mohonk Mountain House in the Catskills in 1988, 1989 and 1990. Both of those resorts have landmark status. Eventually the Fall weekend seminars were replaced with the Fall One-Day seminar in Manhattan. Unfortunately, in doing so, much of the desirable social interaction among colleagues and their families was lost. The Spring golf, tennis and dinner-dance outings have also disappeared. Perhaps the concept will be re-visited in the future. In the meantime, other organizations are stepping up to the plate to promote socialization among students, practitioners and the judiciary alike. IP Inns of Court, such as the Conner Inn in Manhattan and the Arterton Inn in New Haven, come to mind. The Arterton Inn held an "IP trivia night" on November 17th , 2023 at Quinnipiac Law School. It included a social hour as well as the trivia contest. The crowd included many students, as well as practitioners and Her Honor, Judge Arterton. Long live Judge Arterton, the IP Inns and the Linn Inn Alliance! *Dale Carlson is NYIPLA past president and current historian. His email is dale.carlson@quinnipiac.edu.
"As Time Goes By - Re-visiting a Bygone Era"
Historians Corner - Appendix A
Historians Corner - Appendix B
In attendance were: Rob Rando, President, presiding Jeffrey Coleman David Goldberg Patrice Jean Nick Forgione Cheryl Wang Heather Schneider (until 5 pm) Paul Bondor Lauren Emerson Eric Greenwald Mark Schildkraut (until 5 pm) Jenny Lee Diana Santos (joined at 4:15 pm) Jennifer Deneault, AAC Nick Forgione, AAC Christine Lauture, AAC (joined at 4:10 pm) Khalil Nobles, AAC (joined at 4:29 pm) Feikje van Rein and Jack Caroddo attended from the Association’s executive office. Abigail Struthers, Ashley Ross, Linnea Cipriano and Chris Loh were unable to attend. President Rob Rando called the meeting to order around 4 PM ET. The board waived reading of the minutes and approved the minutes for the July 2023 board meeting. Amicus Briefs Committee. The board members discussed the ABC’s draft brief in the en banc appeal of LKQ Corp. v. GM Global Tech. Ops. LLC. Discussion included whether the brief, as written, represented the broader interests of NYIPLA’s membership overall and explored the practical implications/consequences. The board discussed the importance of prioritizing our membership’s interests together with NYIPLA’s mission of supporting the advancement of intellectual property laws, and explored perspectives from in-house and various industries that would potentially be impacted. Some board members offered to revise the brief in light of the potential concerns raised and the board agreed to review for a final vote. Legislative Action Committee. Patent Eligibility Restoration Act of 2023 Rob Rando mentioned requesting input and feedback from relevant committees and the board agreed it would be helpful. Patent Law & Practice, Patent Litigation, PTAB and Amicus Committees will have an opportunity to provide input for board members to review. President Rando indicated that he would like to present this by the Sept Annual Meeting. AAC Mentorship. Eric Greenwald reported that 6 board members and 6 AAC members mentorship have been matched up. The list was circulated to the board and this program is structured loosely to allow pairs to coordinate as appropriate for their schedules. Potential New Programs (sponsored). President Rando provided further details on proposals for membership drive and AAC mentorship, which were attached to the meeting agenda for review. 1. Golf & Tennis outing with casual dinner Long Island – spring 2024 President Rando mentioned the importance of social outings for engagement and his intent to hold a Golf/Tennis outing in the spring. 2. Fashion show w/ casual dinner in conjunction with FIT – Judges’ robes redesign has been a program idea of President Rando’s. Initial discussion with Cheryl and upcoming call pending with Fashion Law Committee co-chairs to gauge interest and discuss details. 3. CLE weekend – timeframe & location TBD Patent One-Day program. – November 8 – Cardozo Law School committed to space, program’s committee will reach out to coordinate Executive Session. – the board discussed the RRR contract history and the latest contract renewal to be approved. Meeting adjourned at 5:15 pm ET.
MINUTES OF AUGUST 22, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION By Zoom New York, New York
MINUTES OF SEPTEMBER 18, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Union League Club New York, New York
In attendance were: Rob Rando, President, presiding Ashley Ross Eric Greenwald David Goldberg Jenny Lee (via Zoom) Paul Bondor Heather Schneider Diana Santos (via Zoom) Patrice Jean (arrived 4:13pm) Lauren Emerson Jeffrey Coleman Cheryl Wang (via Zoom) Feikje van Rein and Jack Caroddo attended from the Association’s executive office. Jennifer Denault attended in-person from the Associate Advisory Council. Mark Schildkraut, Abigail Struthers, Linnea Cipriano and Chris Loh were unable to attend. President Rob Rando called the meeting to order at 4:04 PM ET. The board waived reading of the minutes and approved the minutes for the August 2023 board meeting. Financial Report – Audit Presentation. Stephanie Crozenzi of Satty & Partners presented the results of the annual financial audit. Cash & equivalents increased about $58k, which aligned with increase in special events. Pre-paid balance is zero and deferred revenue increased due to complimentary memberships. Due to operating expenses, including costs of in-person events, net assets are down $94k. Revenue for Judges’ Dinner increased. The board approved the audit results. New Members. Jeffrey Coleman reported there were 18 new members with a respective number of students from Brooklyn Law School. Membership Drive. Rob Rando noted that this will be postponed to October. Proposal for membership drive was attached to last month’s minutes outlining discount percentages. The board discussed incentives and programs for engaging new members that would be of use and valuable, such as new member-specific CLE program, new member reception, and potentially a gift or award for attending a certain number of events. Amicus Briefs Committee. David Goldberg reported that there will be a conflict check circulated for the In re Cellect case, now that the deadline is extended to October. Legislative Action Committee. Patent Eligibility Restoration Act of 2023 Peter Anthony at Sen. Tilllis office will take the lead in determining how NYIPLA can best provide support; PREVAIL Act addressing PTAB practice is not moving as quickly; the expectation is that TIRA will go to full committee vote before end of year. Sen. Coons’ RESTORE Act, which may be an uphill battle; may reestablish injunctive relief. Joy & Clint will coordinate proposed letter for the board to review and approve. 102nd Judges Dinner, March 22, 2024. No additional updates; decision on award nominees, etc. should be decided next month. Nominated OPS award recipient was approved by board. Discussed CLE programming for judges (25-40), whether sponsorship is suitable, and finding a way to defray the costs. VIP reception last year was well-received. Motion to proceed with planning a smaller day of the dinner 1 hr CLE for judges, to explore costs, and find ways to manage costs in the last burdensome manner for organization was passed. Presidents’ Forum – Topic Suggestions Patent reform series: RESTORE Act, PREVAIL, etc. Dates to be finalized. Project Team Bylaws Call to be organized in a few weeks to set up milestones. Sponsorships Ashley and Jennifer volunteered to identify scope. Previous / Upcoming Programs - Oct 4th YLC & New Members happy hour – in-person event - Oct 17th PTAB – Jeff Lewis presentation on estoppel - Fashion Law Committee meeting 1st week of October – get to know committee members & connect with November 1st – program on LKQ design patents & application to fashion; Dyan’s partner Jeff Snow will moderate & looking into 2 speakers - Fall 1 day CLE – meeting with chairs for committees typically involved; explored other venue options & Willkie has offered on November 8th - Fall Careers in IP Program – program we’d like to push for law schools; great way to engage law schools NYLS is interested - Connor Writing Competition Chairs interested in supporting which can also help spread awareness for potential submissions Old Business - Past President Podcasts: discussed perhaps including a YLC member New Business President Rando mentioned perhaps an option to offer members affiliate benefits. Board members discussed perhaps gifts or sign-up swag for events to increase engagement. Meeting adjourned at 5:43 pm ET.
MINUTES OF OCTOBER 18, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION By Zoom New York, New York
In attendance were: Rob Rando, President, presiding Cheryl Wang Jeffrey Coleman Nick Forgione Abigail Struthers Ashley Ross Chris Loh Linnea Cipriano David Goldberg Patrice Jean NYIPLA Admin & Feikje Eric Greenwald Jennifer Denault Christine Marie Lauture, AAC (joined at 4:14 pm; dropped off at 4:43 pm) Feikje van Rein attended from the Association’s executive office. Jennifer Denault & Nick Forgione attended from the Associate Advisory Council, as did Christine Marie Lauture, who attended from 4:14 pm to 4:44 pm. Mark Schildkraut and Paul Bondor were unable to attend. President Rob Rando called the meeting to order at 4:04 PM ET. The board waived reading of the minutes and approved the minutes for the September 2023 board meeting. Financial Report. Jeffrey Coleman reported that compared to last year, there is more money in NYIPLA’s bank accounts, assets are up and overall expenses are down slightly. There are significant accounts payable increases, which include the RRR payments. New Members. Jeffrey Coleman reported membership dues and numbers are up. Numbers are trending upward across all membership categories. Most of the new members that joined in the last month are law students – specifically, 15 out of a total of 17. Motions to waive reading of the names and admit the new members were passed. Membership Drive. Rob Rando noted that the Moleskine notebook proposal is a great idea and discussed prizes for engagement, e.g., invitation to the annual meeting. The board discussed including law students for the membership drive, with alternative prize(s) considered. Given upcoming events on the calendar, March 2023 was proposed as the start of the membership drive. The plan is to give out the notebooks at the end of an event/program. The board members discussed other value-add programming and retention of law student members. Amicus Briefs Committee. David Goldberg reported that there are 2 cases of note for the board. One proposal in support of a petition for en banc has been distributed for In Re Select, a case involving obviousness and patent term adjusting, with responses for non-conflicted out board members due Monday. The 2nd case for a potential proposal, which the Copyright Committee expressed interest in, is Warner Chappell Music, which is a case involving whether copyright statute of limitations for civil actions precludes retrospective relief for acts occurring before lawsuit. Legislative Action Committee. President Rando reported that there remains continuous activity around various proposed IP legislation, including PREVAIL, RESTORE, etc. However, no firm dates are set for hearings. 102nd Judges Dinner, March 22, 2024. Formal request sent to Director Vidal for CLE luncheon and pending response. Keynote speaker pending. Previous / Upcoming Programs - 09/19 PTAB Program David Goldberg reported that the event was well-attended. Presentation by APJs from Patent Office on typical issues that may come up on IPRs; mock IPR proceeding walkthrough; well-attended - 10/04 Corporate & YLC Happy Hour Eric Greenwald reported the event was well-attended, well-marketed and at a good location. About 50 attendees with about 60 registrants consisting of young / junior and partners as well as law students. Many of the attendees participated in YLC call. The board discussed hosting similar event again & timing. - 10/17 PTAB Program David Goldberg reported that there was good feedback for the program. Event involved presentation from Jeff Lewis at Foley Hoag & estoppel issues that can come up with various timelines - 10/25 Patent Litigation Program Christopher Loh reported that the event will cover Section 337 investigations at ITC with the Chair of ITC and someone from Samsung speaking. Expecting the event to be well-attended. - 11/01 Fashion Law Program Cheryl Wang reported that the committee’s event will be in-person at Pryor Cashman, with Jeff Snow from Pryor Cashman and Anthony LoCicero from Arent Fox and former board member as speakers. The topic will cover the impact of LKQ Corp. v GM Global Technology Operations LLC on the fashion industry. - 11/08 Fall One-Day CLE Abigail Struthers reported that Chris Israel & Director Iancu will participate. - 11/09 Diverse Careers in IP Program Abigail Struthers reported that the event will be at NYLS, with Mark Schildkraut & Lindsey Fleischman will be joining. Thinking about adding professors or someone else in public service world. - 11/14 AAC & YLC Mock Interview & Resume Review Workshop Jennifer Deneault reported that the idea for this event is for more experienced attorneys to conduct. - 12/05 NYIPLEF 5th Annual Diversity Scholarship Event Patrice Jean reported that the event this year will have CLE credit for diversity. Panelists include a former Supreme Court Clerk and adjunct professor from Patrice’s firm, Lisa Jacob from Merck, and prior winners. Working on getting other speakers on the panel. Event will be at Greenberg Traurig with many CLOs and GCs to attend. Corporate members can attend for free & receive CLE; Committee Reports • ACDC - will have meeting tomorrow afternoon • Amicus – will participate in fall 1 day CLE • Corporate – discussed building out committee • Entertainment Sports & Social Media – dormant; get in touch with members • Past Presidents – 3 co-chairs are interested in doing Arbitration & Mediation (part of JAMS); suggested working with Programs Committee to organize; need to work on podcast • Patent Law – Clint & Joy have prepared revised language options for Patent Eligibility Restoration Act; will send to LAC for review and circulate for feedback before next board meeting • Publications – committee is meeting; have lost several longstanding members but still putting out quarterly; next one will be January (summer one has gone out); soliciting articles; discussed encouraging young attorneys to submit • Women in IP – meeting next week; trying to set up another event possibly with YLC Meeting was adjourned at 5:01 pm ET.
In attendance were: Rob Rando, President, presiding Chris Loh Cheryl Wang Eric Greenwald Jeffrey Coleman (dropped off at 4:55 pm ET) James Breen Abigail Struthers Patrice Jean (dropped off at 4:40 pm) Jenny Lee (joined at 4:30 pm ET) Diana Santos (joined at 4:40 pm ET) From AAC: Nick Forgione, Christine Marie-Lauture, Jennifer Deneault From Admin Office: Feikje van Rein & Jack Caroddo Feikje van Rein attended from the Association’s executive office. Christine Marie Lauture, Jennifer Denault & Nick Forgione attended from the Associate Advisory Council. Heather Schneider, Lauren Emerson, Ashley Ross, Linnea Cipriano, David Goldberg, Mark Schildkraut, and Paul Bondor were unable to attend. President Rob Rando called the meeting to order at 4:05 PM ET. The board waived reading of the minutes and approved the minutes for the October 2023 board meeting. Financial Report. Jeffrey Coleman reported that membership and dues are up as compared to last year, with overall expenses slightly lower. Feikje confirmed that the Bank of America account has been moved to a new CD account with a higher interest rate. New Members. Jeffrey Coleman reported that there are 14 new members since last month, 11 of which are law students. Membership numbers YTD are up across all categories, and holding even for student members. Motions to waive reading of the names and to admit the new members were passed. Membership Drive. Rob Rando reported that membership is currently at 799 and shared the goal of reaching 1000 before the end of his term. Jennifer Denault discussed starting the membership drive in February 2024, noting that the Moleskine notebook membership promotion is likely to move forward and student membership pricing will need to be set and approved. The board members discussed the value of connecting with potential members at every event. Further updates to come at the next meeting. Amicus Briefs Committee. Rob Rando noted that voting on the draft brief in support of petition for en banc for In re Cellect, is due by Fri. Legislative Action Committee. Rob Rando reported that the panel presentation at the Full Day Patent CLE event was great. He noted the ongoing work to get traction and move forward on Patent Reform. 102nd Judges Dinner, March 22, 2024. Rob Rando reported that the search for keynote speaker is ongoing and asked the board to suggest high-profile individuals in the entertainment and communications industry or government who may be suitable. The board discussed the need to adjust the dinner pricing, given the increased prices for the Hilton venue. Motion to increase pricing levels to $6000, $8000, and $9500 passed. Motion was also passed to increase pricing for attendees to $375 for members and $650 for non-members. Board Meeting December 12th Rob Rando proposed a holiday get-together after the board meeting in Dec. Previous / Upcoming Programs - 10/25 Patent Litigation Program Christopher Loh reported that the event covered Recent Developments in ITC Section 337 Investigations was well attended. The speakers were from USTC and Samsung Electronics. - 11/01 Fashion Law Program Jack Caroddo reported there were 20 attendees in person with 2 speakers from HGF and partner from Pryor Cashman. Program covered design patents from US & UK perspective. Committee chairs asked if future programs could be done in hybrid format. The board discussed whether that would lower attendance and considered option to record and charge for CLE credits. Feikje to look into budget and CLE board requirements, since there is currently no mechanism for tracking online attendance to ensure CLE forms are completed as required. - 11/08 Fall One-Day CLE Abigail Struthers reported that work is being done to edit the recorded program video, pending confirmation from the speakers, with the goal of making it available as a member benefit. She reported the program was well attended and had strong panels opening with LAC, featuring Former Directors Kappas and Iancu, and later covering more in-depth prosecution issues than typical for these presentations. - 11/09 Diverse Careers in IP Program Abigail Struthers reported that the event at NYLS was well-received with about 35 students in attendance and positive feedback received. Mary Lee Jenkins (past president), Lindsey Fleischman, Mark Schildkraut and Conrad Wong (China delegate for PTO) participated as speakers. - 11/14 AAC & YLC Mock Interview & Resume Review Workshop Jennifer Deneault reported that the new event format Jenny Lee proposed was well-received. 2 rounds of resume review and informal feedback after both with more casual networking at the end. Around 20 people attended and students appreciated the event; a few younger associates were present as well. - 11/21 PTAB Program David Goldberg not present but can provide report at the next meeting. - 12/05 NYIPLEF 5th Annual Diversity Scholarship Event Patrice Jean reported that this event will be at Greenberg Traurig with dinner included, featuring panel with in-house counsel and someone from Hughes Hubbard to discuss SF8 decision & how companies/firms will handle impact. Event will also include someone from Unilever & past scholarship recipient will serve as moderator. - 02/07 Biosimilars Program Abigail Struthers reported the event will be held at Kramer Levin with full agenda details pending. - 2024 IP Transactions Bootcamp Abigail Struthers reported that the program is coming together. No date yet but likely to be held virtually in Jan or Feb 2024. More details to be shared at next meeting after the group has their scheduled call this Fri. - 2024 FIT Program Rob Rando reported that he had a Zoom meeting with Professor at FIT who was very receptive and just learned today that Chairperson of Dept wants to have a 2nd call to be scheduled likely after Thanksgiving weekend. Will have update for next meeting. - Board / Member Golf outing – not on agenda but Rob Rando shared event idea for membership engagement and noted he is currently exploring pricing for venue. Committee Reports Connor Writing Competition committee circulated revised submission rules; Rob provided edits and committee will move forward with updated rules; co-chairs have also provided updated contacts for law schools AAC met Monday – more than half AAC attended first event of the year; will resurrect Zoom Out event after holidays with same format as last year; mentoring program is going well, several have met multiple times with mentor and all have connected at least once; Diana and Rob Rando to switch mentor terms New Business Rob Rando reported that the Past President’s Dinner will likely be in Feb 2024 after the board meeting; January’s meeting is with committee chairs so working on venue because Union League Club is undergoing renovations. Rob met with co-chairs & discussed programs/events and did a podcast episode with past President Colman. Rob also met with Arbitration & Mediation committee co-chairs and discussed program involving mock arbitration and mediation over 4 months with 1 per month. Meeting was adjourned at 5:00 pm ET.
MINUTES OF NOVEMBER 15, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION By Zoom New York, New York
In attendance were: Rob Rando, President, presiding Jenny Lee Patrice Jean Lauren Emerson (via Zoom) Heather Schneider (via Zoom) Cheryl Wang (joined in-person at 4:19 pm) Eric Greenwald (joined via Zoom at 4:29 pm) Ashley Ross (joined via Zoom at 4:31 pm) Feikje van Rein attended from the Association’s executive office. Nick Forgione attended in-person from the Associate Advisory Council. Chris Loh, Abigail Struthers, Linnea Cipriano, David Goldberg, Mark Schildkraut, Paul Bondor, and Christine Lauture, Khalil Nobles, and Jennifer Denault from the AAC were unable to attend. President Rob Rando called the meeting to order at 4:05 PM ET. The board waived reading of the minutes and approved the minutes for the November 2023 board meeting. Financial Report. Jeffrey Coleman reported that membership and dues are up as compared to last year, with overall expenses slightly lower. Rob confirmed that the Chase account has been moved to a new CD account with a higher interest rate. New Members. Jeffrey Coleman reported that there are 4 new members since last month, 2 of which are law students. Membership numbers YTD are up across all categories, and holding even for student members. Motions to waive reading of the names and to admit the new members were passed. Membership Drive. Rob Rando reported that membership is currently at 807 and shared the goal of reaching 1000 before the end of his term. Legislative Action Committee. Rob Rando reported that march-in rights and the Bayh Dohl act are to be revisited under Biden administration. Tony LoCicero is looking to set up meeting with LAC before the end of the year and the committee is considering flying in to D.C. to speak with Congressmen. 102nd Judges Dinner, March 22, 2024. Rob Rando reported that the search for keynote speaker remains ongoing. The board discussed potential candidates from the entertainment industry category. Presidents’ Forum. Tony LoCicero has agreed to chair the committee. The committee will meet including with Chris Israel. Topics are pending but considering patent reform and anti-patent reform updates. Board Meeting January 10th Rob Rando noted that the annual meeting with committee member reports will be held at the Union League Club. Amicus Briefs Committee. Rob Rando noted that the committee will be meeting this Friday. The agenda with monthly report has been shared with the board and no new activity to report. Patrice mentioned a potential program topic discussing how the Fed Circuit may be going through a new era for rules on lengths of briefs, including whether incorporating another brief is acceptable if permission to extend length restrictions have not been granted. Rob to reach out to the ABC and Patrice to reach out to Lynn at Programs. Project Team Bylaws. Patrice & Jenny have already met. They have a working document which they are editing. Rob suggested clarifying the exact requirements for someone to become an officer. Previous / Upcoming Programs - 11/21 PTAB Program David Goldberg - Not present to provide report but likely went well - 12/05 NYIPLEF 5th Annual Diversity Scholarship Event Patrice Jean reported it was a great CLE program held at Greenberg Traurig; funds raised were one of the larger Unilever, Bristol Meyers Squibb, Merck in-house counsel and Tom Lee (counsel at Hughes Hubbard, also professor at Fordham); went over the diversity Ivy League admissions case, and CLE credit offered Scholarship award is open and applications; discuss whether to increase award money from NYIPLA in spring 2024 - 12/12 Patent Litigation Program Christopher Loh - Will report next meeting - 12/19 PTAB Program: cover statutory deadlines & one of David Goldberg’s associates will be speaking - 01/25 Young Lawyers/Entertainment Broadway Program: Call scheduled on Fri, report next month - 02/06 Zoom Out with NYIPLA! Eric Greenwald reported that since this event has gone well in the last 2 years, will be holding it again. Event to take place after new years, informal structure, from 5-6 pm ET - 2/07 Biosimilars Program: Irina working on it; in-person only; will be hosted at Kramer Levin - 2024 IP Transactions Bootcamp: starting Feb 1st ; via Zoom; to take place over 3 Wednesdays - 2024 FIT Program Rob Rando reported that he met with a few of the professors & director of programming; lots of rules in place and want to charge min. $10k; Discussed opening to all local schools with interest in fashion law. In terms of sponsorships, partner of Rob’s may have connections to luxury companies for materials. Decided to approach luxury brands’ IP depts to host at - 2024 Golf Outing Rob Rando reported there an opportunity for May 6th at lovely venue Gatsby house. Survey form sent out via Jotform to gauge interest. Full day will include breakfast, lunch and dinner. People can choose just to attend dinner without playing golf/tennis. Need 72 ppl to reserve. Actual cost is $325 (not including NYIPLA revenue). Min. commitment of $32k. Board members discussing having pre-event networking/happy hour with 30 min – 1 hr of golf instruction to gauge interest and get people excited for event in May. One of the board members will reach out to Five Iron Golf owner to gauge interest in hosting. Ad hoc committee for this event: Mike Johnson, Mark Dorr, Pete (?), - adding Patrice, James and Jenny Committee Reports JAN 10th ANNUAL MEETING at Union League Club - Connor Writing Competition: announcement went out; reached out personally to law schools to update contact list - Inventor of the Year: nominations needed (entry requirements – patent holder & new/interesting/timely) - Winter Newsletter must go out (have articles but need more) pending Rob Rando’s President’s Corner Adjournment Meeting adjourned at 5:18 pm ET
MINUTES OF DECEMBER 13, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Greenspoon Marder LLP Office New York, New York
PTAB Committee Meeting USPTO - Ex Parte Appeals By: PTAB Committee On September 19, 2023, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee discussed Ex Parte Appeals within the USPTO. In this interactive meeting hosted by Co-Chairs Charley Macedo and Ken Adamo, the NYIPLA PTAB Committee welcomed our distinguished featured guests - Hon. Janet Gongola, Hon. Annette Reimers and Hon. Rachel Townsend – to discuss Ex Parte Appeals within the USPTO. Corporate & Young Lawyers Committee Happy Hour By: corporate and Young lawyers committees On October 4, 2023, the NYIPLA Corporate and Young Lawyers Committees invited attendees to mingle and network with food and drinks! Attendees met other young lawyers and corporate lawyers as they enjoyed a few beers and snacks. Non-members are encouraged to join in as well. PTAB Committee Meeting - (e)STOP! In Name of IPR: A look at Estoppel and IPR By: PTAB committee On October 17, 2023, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding IPR estoppel. In this interactive meeting hosted by Co-Chairs Charley Macedo and Ken Adamo, the NYIPLA PTAB Committee welcomed our distinguished featured guests - Jeffrey I. D. Lewis, and Cecilia G. Copperman of Foley Hoag LLP. IPR estoppel, as set out in 35 U.S.C. § 315(e), was designed to be straightforward, but it has encountered various interpretations, applications, and constraints as construed in litigations. The panel analyzed how courts have interpreted and developed this provision and perhaps even anticipate its future trajectory in legal proceedings. Patent Litigation Committee Meeting: Recent Developments In ITC Section 337 Investigations By: Patent Litigation Committee Attendees joined the Patent Litigation Committee meeting on Wednesday, October 25, 2023, from 1:00 pm to 2:00 pm. Their October meeting featured a presentation on Recent Developments In Section 337 Investigations before the U.S. International Trade Commission (ITC), including navigating multi-forum litigation. Michael Franzinger (Partner, Dentons) lead a discussion with ITC staff and in-house guests: Peter Guarnieri, Staff Attorney, Office of Unfair Import Investigations, USITC Matthew Bathon, Principal Legal Counsel II, Legal Management, Samsung Electronics Is it obvious? Let’s Reconsider. Design Patent Obviousness vs. Utility Patents By: fashion law Committee The New York Intellectual Property Law Association (NYIPLA) Fashion Law Committee held their first in-person event of the year on Wednesday November 1 at Pryor Cashman LLP. This in-person meeting was hosted by Co-Chairs Douglas A. Miro, Partner at Amster, Rothstein & Ebenstein LLP and Dyan Finguerra-DuCharme, Partner at Pryor Cashman LLP, with distinguished guest speakers including Jeffrey L. Snow, Partner and Chair of the Patent Department at Pryor Cashman LLP, Lee Curtis, Partner and Chartered Trademark Attorney, and Suzan Moss, Senior Chartered Trademark Attorney, HGF Limited - a UK based IP firm. For the first time in over five years, the Federal Circuit will be hearing a patent case en banc. The Court will hear LKQ Corporation v. GM Global Technology Operations LLC, which pertains to the current standard of non-obviousness that is applied to design patents. LKQ was a repair part vendor for GM. Currently, there is a two-part test for non-obviousness for design patents, referred to as “the Rosen test.” First, the challenger must show there is a single primary reference which is close to the claimed design. Second, the challenger must show that the difference between the primary reference and the claimed design can be bridged by one or more secondary references. These references must be related enough to the claimed design that “an ordinary designer would have modified the primary reference to create a design with the same overall visual appearance as the claimed design.” For utility patents and obviousness, KSR v. Teleflex rejected strict tests in determining obviousness for utility patent claims. KSR held, inter alia, that an inventor of ordinary skill in the art could look to nonanalogous art. The Court stated that obviousness inquiries should use “an expansive and flexible approach” rather than “a rigid rule.” LKQ is arguing for the more flexible KSR approach. GM wants things to stay the same with the more rigid Rosen test. Our panel discussed how the LKQ case may impact the fashion industry. In particular, if the Court abandons the Rosen test in favor of KSR approach, design patents may be more vulnerable to attack in litigation, which is fair or unfair depending on which side you are on. Adopting the KSR approach could also lead to uncertainty and more litigation, at least in the beginning, while courts determine how exactly to adapt the KSR standard to design patents. One-Day Patent CLE Seminar By: Programs Committee On Wednesday, November 8, 2023, the NYIPLA held the One-Day Patent CLE Seminar at Willkie Farr & Gallagher LLP. Topics included: Pending Patent Legislation: What You Need to Know A Conversation with Drew Hirshfeld (Former USPTO Commissioner of Patents) Recent Supreme Court Decisions & Hot Issues Professional Responsibility and Practice before the USPTO Artificial Intelligence in Patents and in Practice Keynote Fireside Chat with Chief Judge Scott R. Boalick, Patent Trial and Appeal Board (PTAB) What Every Multi-National Corporation Needs to Know About Trade Secrets NYIPLA Diverse Careers in IP Program By: Programs Committee Have you ever wondered what opportunities are available in today’s intellectual property marketplace? The panelists addressed these topics and more. Attendees joined the NYIPLA on November 9, 2023 at New York Law School for a panel discussing how you can navigate your career paths in a marketplace with diverse opportunities for intellectual property lawyers. Panelists: Lindsey Fleischman, Counsel, Commercial Legal & Business Affairs, WPP Marylee Jenkins, Partner, ArentFox Schiff LLP Marc Walkow, Associate, Greenspoon Marder LLP Conrad Wong, Attorney-Advisor and PTO Intellectual Property Officer, Office of Policy and International Affairs, USPTO Mock Interviews & Resume Review Workshop By: Young Lawyers Committee and the Associate Advisory Counsel On November 14, 2024, the Young Lawyers Committee and the Associate Advisory Counsel of NYIPLA invited our student and active 3- years members to attend a mock interview and resume review workshop at the offices Groombridge, Wu, Baughman & Stone LLP. The event included three mock interviews and resume reviews with current practicing attorneys, followed by an opportunity to network with the attorneys in attendance. PTAB Committee Meeting - VirnetX v. Mangrove Partners – Can a time-barred person join an instituted IPR? By: PTAB COmmittee On November 21, 2023, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding VirnetX v. Mangrove Partners – Can a time-barred person join an instituted IPR? This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Can a time-barred person be joined as a party to an instituted IPR under 35 U.S.C. Section 315(c)? That is the question VirnetX has petitioned the Supreme Court to answer in VirnetX v. Mangrove Partners (No. 23-315), where Apple was time-barred but allowed to join Mangrove's instituted IPR. Join us for a detailed review of this fascinating statutory construction issue. Speakers: Kenneth Adamo, Principal, Law Office of KRAdamo Charles Macedo, Partner, Amster, Rothstein & Ebenstein LLP NYIPLEF 5th Annual Diversity Scholarship Event: Diversity CLE Panel By: New York Intellectual Property Law Education Foundation (NYIPLEF) On Tuesday, December 5, 2023, the New York Intellectual Property Law Education Foundation (NYIPLEF) held their “5th Annual Diversity Scholarship Event” at Greenberg Traurig LLP from 6:00pm - 9:00pm. The Diversity CLE Presentation was moderated by Stephanie Huang, the 2023 NYIPLEF Hon. Giles S. Rich Diversity Scholarship Recipient. The distinguished panel of in-house counsel included: Krista Aiello, Assistant General Counsel - Patents, Unilever Serena Farquharson Torres, Executive Director, Assistant General Counsel, Bristol Myers Squibb Thomas H. Lee, Special Counsel, Hughes Hubbard & Reed LLP Lisa Jakob, Executive Director, Office of General Counsel, Intellectual Property, Merck & Co., Inc. Patent Litigation Committee Meeting By: patent litigation committee The Patent Litigation Committee held an in-person meeting on Tuesday, December 12, 2023, from 12:00 pm to 1:30 pm. Desmarais LLP hosted the Committee for a holiday luncheon at their offices at 230 Park Avenue, 26th Floor. PTAB Committee Meeting: Statutory Deadlines By: PTAB committee On December 19, 2023, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding a Question of First Impression: What Happens When the PTAB Fails to Meet the Statutory Deadline for Issuing a Final Written Decision? This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. In Purdue Pharma L.P. v. Collegium Pharm., Inc., 2023 WL8043047 (Fed. Cir. Nov. 21, 2023) the question of when the PTAB Fails to Meet the Statutory Deadline for Issuing a Final Written Decision, what happens next? It remains to be seen whether the Federal Circuit’s decision will result in more Final Written Decisions being issued after the expiration of the 18-month statutory deadline, and whether mandamus will prove an effective remedy. Attendees joined the committee for a detailed review of this issue and had a discussion of possible effective outcomes. Speaker: Thomas Hart, Associate, Amster, Rothstein & Ebenstein LLP PTAB Committee Meeting - PREVAIL ACT: Congressional Legislative Proposal on Patent Reform By: ptab committee On January 16, 2024, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding the "PREVAIL ACT": Congressional Legislative Proposal on Patent Reform. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. With the new year comes new legislative priorities. PTAB Legislation appears to be high on the legislative agenda. Attendees joined the committee as they discussed the current proposal by Senator Coons, Durbin and Hirono “Promoting and Respecting Economically Vital American Innovation Leadership ACT” (or “Prevail Act”). Speaker: Anthony F. Lo Cicero, Partner, Amster, Rothstein & Ebenstein LLP Zoom Out with NYIPLA! By: Associate Advisory Council Have you made a New Year’s resolution to grow your business? Starting a new role at a company, or making an effort to commute into the office more? Are you tired of networking over Zoom? Well, we can answer yes to all of these questions, but we promise that our networking event will leave you anything but tired of Zoom! On February 6, 2024, attendees were able to have a refreshing event and network with NYIPLA board members, law firm associates and law students before the 102nd Annual Judges’ Dinner. The Associate Advisory Council co-chairs looked back on whether 2023 was a year of firsts or first-in-a-long time for office parties and "mandatory days". Attendees had access to an array of accomplished attorneys, many of whom were willing to share their practice successes from 2023. Speakers: James Breen, Associate, Goodwin Procter LLP Jennifer Deneault, Counsel, Groombridge, Wu, Baughman & Stone LLP Nicholas Forgione, Counsel, Authentic Brands Group LLC Khalil Nobles, Associate, Wilson, Sonsini, Goodrich & Rosati Biologics & Biosimilars: Impact of Amgen and Hot Topics in Biosimilar Litigation By: Amicus brief Committee On Wednesday, February 7, 2024, NYIPLA held an in-person Biologics & Biosimilars program at Kramer Levin. The Supreme Court’s enablement decision in Amgen v. Sanofi is one of the most impactful patent decisions of this century and will shape biologics litigation for decades to come. It also resolves the divide in the biopharma on what enablement requires and how to promote innovation. In this installment of NYIPLA’s Biologics & Biosimilars program, the speakers discussed the impact of Amgen on biologics and biosimilar litigation. The program also covered hot topics in biosimilar litigation, including the outsized role of the PTAB in biosimilar disputes, the continued importance of manufacturing patents, parallel foreign litigation, and more. Speakers: Larry Coury, Vice President, Associate General Counsel, Regeneron Mira Mulvaney, Associate VP - Assistant General Patent Counsel, IP Litigation, Eli Lilly and Company Jen Reda, Assistant General Counsel, Johnson & Johnson Moderator: Irena Royzman, Partner, Head of Life Sciences, Kramer Levin Naftalis & Frankel LLP
NYIPLA Events
Last First Firm/Company/Law School State Membership Agiviav Michelle Brooklyn Law School New York Student Bariviera Barros Ana Carolina Columbia Law School New York Student Bersani Kyle Groombridge, Wu, Baughman & Stone LLP New York Active 3- Bustos Henry Fordham Law School New York Student Casino Stephanie UNH Franklin Pierce School of Law New York Student Castro Carla NYU School of Law New York Student Cobb Julia Cardozo Law School New York Student Coleman Christine Maurice A. Deane School of Law, Hofstra University New York Student Delannes-Molka Emilie New York Law School New York Student Drugan Danielle New York Law School New York Student Dubey Mishthi Columbia Law School New York Student Edwards Trystan Benjamin N. Cardozo School of Law New York Student Everett Kimberly Cleary Gottlieb Steen & Hamilton LLP New York Active 3- Fan Xinran Brooklyn Law School New York Student Feliciaggi Fiora Abello IP Firm France Associate Genovese Caitlyn Brooklyn Law School New York Student Gerson Christopher Schulte Roth & Zabel LLP New York Active 3+ Greene Shonette Maurice A. Deane School of Law, Hofstra University New York Student Guerrero Michelle New York Law School New York Student Guzmán-Díaz Lorena Thompson Coburn LLP New York Active 3- Haas Robert Fordham Law School New York Student Hilder Ella Fordham University School of Law New York Student Holder Dawson Benjamin N. Cardozo School of Law New York Student Huang Claire NYU School of Law New York Student Igarashi Sarah Benjamin N. Cardozo School of Law New York Student Kalugin Katherine Brooklyn Law School New York Student Ko Yeon Jae Venable LLP New York Active 3+ Kokeas Stephanie American University Washington College of Law Washington D.C. Student Kokonis Samantha White & Case LLP New York Active 3- Kupperman Natalie Benjamin N. Cardozo School of Law New York Student Lai Milena Brooklyn Law School New York Student Lee David Brooklyn Law School New York Student Lee Alex NYU School of Law New York Student Levine Melissa Brooklyn Law School New York Student Lu Zhe Columbia Law School New York Student Monemdjou Roxana Pryor Cashman LLP New York Active 3+ Ndukwe Kelechi City University of New York Graduate Center New York Student Niosi Kelsey St. John's University School of Law New York Student Pierre-Louis Stephanie New York Law School New York Student Piyanan Smith Knobbe, Martens, Olson & Bear, LLP New York Active 3+ Porco Michael Hespos & Porco LLP New York Active 3+ Rabbino Jennifer Cadwalader, Wickersham & Taft LLP New York Active 3- Last First Firm/Company/Law School State Membership Reid Ishanda New York State Unified Court System New York Government/Academic Roberts Elizabeth Brooklyn Law School New York Student Sanchez Chantall Benjamin N. Cardozo School of Law New York Student Silfin Matthew Benjamin N. Cardozo School of Law New York Student Sloan Daniel Jones Day New York Active 3- Strack Julia NYU School of Law New York Student Thompson Deanna Cadwalader, Wickersham & Taft LLP New York Active 3+ Vlahek Anton Latham & Watkins LLP New York Corporate Wallace Kevin Leason Ellis LLP New York Active 3+ Wu Junyi Benjamin N. Cardozo School of Law New York Student Zhang Yun Steptoe & Johnson LLP New York Active 3-
WELCOME NEW MEMBERS
Samuel Hayim has been promoted to Shareholder at Polsinelli PC. Peggy Chen has been promoted to Special Counsel at Duane Morris LLP. Niamh Drury, formerly of Schnader Harrison Segal & Lewis LLP, has joined Offit Kurman, Attorneys at Law, as an Associate. Wendy Stein, formerly of Chiesa Shahinian & Giantomasi PC, has joined Ballard Spahr LLP as a Partner. Vanessa Yen, formerly of King & Spalding LLP, joined Mintz Levin Cohn Ferris Glovsky and Popeo PC as a Member. Jayashree Mitra, formerly of Fox Rothschild LLP, has joined Carlton Fields as a Shareholder. Timothy Heaton, formerly of Phillips Nizer LLP, has joined Benesch Friedlander Coplan & Aronoff, LLP as Of Counsel. Scott Pojunas, formerly of Google, has joined Merlyn Mind as General Counsel. Joseph Drayton, formerly of Cooley LLP, has joined Proskauer Rose LLP as a Partner. Paul Roman Jr., formerly of Johnson, Marcou, Isaacs & Nix, LLC, has joined Hodgson Russ LLP as a Partner.
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February 02/20/2024 PTAB Committee Meeting March 03/13/2024 Young Lawyers Committee Speed Networking 03/19/2024 PTAB Committee Meeting 03/22/2024 102nd Annual Dinner in Honor of the Federal Judiciary April 04/16/2024 PTAB Committee Meeting