Insights

Intellectual Property Report: August 2019

Firm Thought Leadership

Serial Petitions at the PTAB: The Pendulum Swings Back for Patent Owners
Cason Cole
Created with the passage of the America Invents Act in 2011, inter partes review (“IPR”) procedures were created with the “purpose of . . . providing quick and cost effective alternatives to litigation” in determining patent invalidity. IPR has indeed proven to be an efficient vehicle for contesting validity, but many stakeholders fear that IPR has become too attractive to patent challengers—that high invalidation rates have weakened patent rights and caused American innovation to suffer. In recent years, the Patent Trial and Appeal Board has increasingly policed IPR filings to curb perceived unfairness and inefficiency. The Board’s decisions in General Plastic and Valve, as well as the Board’s other recent guidance, provide insight as to how the Board evaluates “serial” petitions that mount a subsequent or simultaneous challenge to the same patent as another petition.

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Bright Spark: New Technologies in the Oil and Gas Industry Ignite a Rethink in Protection Strategies
Neil Coulson, Paul R. Morico
The rapid advancement of technology and innovation in oil and gas recovery and extraction has forced a fundamental rethink of protection strategies, the valuation of intellectual property rights, and how best to exploit them in an increasingly competitive global market.

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Supreme Court Strikes Down Prohibition on Immoral or Scandalous Trademarks
Rob Maier
In 2011, Erik Brunetti, an artist and entrepreneur, filed an application to register the trademark "FUCT" for use in connection with "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps; children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments." Established in the 1990s, an era featuring the rise of streetwear labels like Supreme and Stilssy, FUCT was used in commerce by Brunetti in connection with a punk-political streetwear clothing line. The mark, according to Brunetti, is an acronym for "Friends U Can't Trust," to be pronounced with each letter said in turn-F-U-C-T. However, the U.S. Patent and Trademark Office (USPTO) took issue with the fact that the mark may also be pronounced as a word with less savory connotations.

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Limited Deference Owed USPTO After High Court Kisor Ruling
Jonathan Brit, Jessica Lin, Kanxian Ding
In a highly anticipated decision affecting administrative law, the U.S. Supreme Court in Kisor v. Wilkie declined to overrule a long-standing doctrine, from Auer v. Robins, known as Auer deference, in which courts defer to an agency's interpretations of its own regulations. The case had the potential to greatly impact all aspects of patent law before the U.S. Patent and Trademark Office, e.g., prosecution, reexamination and inter partes review.

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Cleaning Up the CCPA Updates on Applicability and Amendments to California's Consumer Privacy Act
Cynthia Cole
2018: the year of privacy. May 25, 2018, the EU’s General Data Protection Regulation (GDPR) goes into effect and on June 28, 2018, California, to avoid a voter ballet initiative, passes a hastily drafted bill aimed directly at companies who sell the personal information of California consumers. The passage of the California Consumer Privacy Act (CCPA) sets off a chain reaction and other states adopt similar legislation. And just like that, in a matter of months, US companies have to face consumer privacy from an entirely new direction. The race for federal preemption is launched. But a federal law on consumer privacy which would un-seed state momentum has not yet seen the light of day, so California, responding to criticism in drafting and intent, works quickly to amend the CCPA and clean it up in time for its January 1, 2020 effective date.

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