As we reflect back on 2018 and ring in the new year, we celebrate the worldwide innovations that have taken place and their impact on the IP system. As one of the largest IP practices in the nation, we have more than 165 attorneys, patent agents, scientists and other professionals across 15 offices, with more than 90 collective technical degrees. We look forward to partnering with you during this time of both great change and great opportunity.
2018 BROUGHT MAJOR CHANGES TO IP LAW
Major changes occurred within the IP industry in 2018. Below are reflections and take-aways from Shareholder Q. Todd Dickinson, former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO).
Oil States v. Greene’s Energy and SAS Institute Inc. v. Iancu
In two Supreme Court rulings issued on the same day, the Court turned again to reviewing aspects of the America Invents Act (AIA)’s post grant processes. In Oil States, the Court ruled on the constitutionality of the post grant review system itself, in particular the constitutional right to a jury trial. The Court held that the IPR process was constitutional on the grounds raised but left the door open to other challenges.
In SAS, the question presented was whether the Patent Trial and Appeal Board (PTAB) must evaluate the validity of all claims in the challenged patent or only the claims which were the subject of the challenge. In a statutory interpretation analysis, the Court held that all claims must be reviewed by the PTAB. Consequently, the PTAB had to rereview almost half of its pending cases, which
were partial initiations, and Petitioners now have to reevaluate their basic strategic considerations, in particular whether to file an initial response and the impact of estoppel.
New Director of USPTO
On February 5, Andrei Iancu was confirmed as Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Prior to joining the USPTO, Mr. Iancu was the Managing Partner at Irell & Manella LLP, where his practice focused on intellectual property litigation, representing clients in a variety of technologies, including medical devices, genetic testing, therapeutics and the internet. Mr. Iancu holds a Juris Doctor from the UCLA School of Law, a Master of Science in mechanical engineering and a Bachelor of Science in aerospace engineering from UCLA. Mr. Iancu has also taught patent law at UCLA. In his initial actions, he has sought to reform PTAB processes and alter the basic standard of review in claim construction at the PTAB.
On the policy front, the basic issue of patent eligibility under §101 of the Patent Act has become a top priority. Ever since the Supreme Court’s Alice and Prometheus/Mayo decisions, the Court of Appeals for the Federal Circuit (CAFC) and many in the IP stakeholder community have been wrestling with the appropriate analysis under each. Many, including Director Iancu, have argued that Alice in particular has introduced significant uncertainty into both litigation and the USPTO’s examination process. To address these issues, the USPTO will soon issue revised 101 Examination Guidelines and two members of the Senate Judiciary Committee, Sens. Coons (D-DE) and Tillis (R-NC) have convened a multi-technology stakeholders’ roundtable to consider legislative changes to 101.
As we reflect back on 2018 and look forward to moving into 2019, the growth of our Department remains a focus. We are excited about our newest team members and what they are going to accomplish on behalf of our clients. We have grown in key markets such as San Francisco, Silicon Valley, Washington, D.C., Chicago and Denver. This year we welcomed more than 10 new attorneys, including but not limited to Shareholders and Counsel Shelton Austin, Darren Donnelly, Frank Kang, Shankar Krithivasan, Angel Lezak, Duy Nguyen and John Posthumus. Each of these attorneys brings a strong legal skillset to the table and fresh vision for the future of the department.
In 2018 we filed and/or defended:
- 3,864 patent applications filed, 1,981 obtained
- 1,182 trademark applications filed, 529 obtained
- 119 cases filed with the USPTO, including 70 at PTAB and 49 at TTAB
- 71 cases in appellate and U.S. federal district courts
- 12 IPR cases filed
Celebrity Dance Debate
Fabio E. Marino, Silicon Valley Office Managing Partner and Chair of Intellectual Property and Technology Litigation Practice, spoke with CNN’s Eric Levenson on choreography and U.S. copyright law. If you’re familiar with the dance popularly known as “The Carlton,” you may also be aware that actor Alfonso Ribeiro who made the dance famous is currently suing the creators of the video game Fortnite for profiting off the dance without his permission.
"However, Fabio Marino, an intellectual property lawyer at the law firm Polsinelli, said the lawsuits may be more likely to succeed on a right of publicity claim. The right of publicity protects a person’s right to his or her likeness, which could come into play if a court found that “Fortnite’s” dances are significantly identifiable as a specific person’s likeness. ‘If that dance was unique enough that you would associate it with the actor, then I think that would be a good cause of action and a more likely cause of action to succeed than a copyright action,’ Marino said."
Pro Bono Case
This year, Polsinelli represented a client who was sued by a former employer in Houston, Texas, for breach of contract and misappropriation of trade secrets. The client denied signing non-disclosure or non-competition agreements. The automotive company was unable to produce copies of the executed agreements. We had to react quickly as the client had a pending hearing on an application for a Temporary Restraining Order against him. After the hearing, the Application was denied by the court. Upon the close of discovery, we moved for summary judgment on all counts, which was granted by the judge. These efforts saved the client’s business from closure, which would have devastated him and his family. The client walked into our office off the street in a desperate legal bind. Having moved to the U.S. to work with his now former employer, anything less than success would have been disastrous for him and his family. He has become one of the most grateful and genuine clients that we have worked with in a long while. We were lucky to be asked to join his team.
Pro Bono Award
Shareholder Dr. Tara Nealey was honored this year as a recipient of the Pro Bono Award from the Missouri Lawyers Weekly’s annual Women’s Justice awards. Tara’s civic and charitable work includes pro bono work as a Guardian ad litem for the City of St. Louis and legal representation of women seeking restraining orders against domestic abusers. Tara is also the current Board President of Prison Performing Arts, an organization that directly impacts the lives of adults and youth caught up in the criminal justice system by offering opportunities for teamwork, improved literacy and personal development. Within Polsinelli, Tara is an advocate for improving policies in support of female attorneys, diverse attorneys and attorneys who are parents of young children.
First-Filer Pharmaceutical Case
Represented a global pharmaceutical company with more than $4 billion in net sales in a Hatch-Waxman firstfiler case. The case is related to their FDA application seeking approval to market and sell a gel used to treat various skin conditions. The dispute involved numerous patents related to the branded version of this gel. We obtained favorable settlement this past October.
Non-Practicing Entity Venue and Jurisdictional Requirements
In December 2018, we received a decision from the Federal Circuit Court of Appeals on behalf of our client, Jack Henry & Associates. The decision held that non-practicing entities could be subject to venue and jurisdiction wherever they send demand letters because sending a demand letter into a jurisdiction is “doing business” in that jurisdiction, thereby satisfying the test for personal jurisdiction. This ruling will allow companies that receive demand letters to institute declaratory judgment actions where they reside rather than waiting to be sued in the non-practicing entity’s choice of venue. “We know demand letters can create a great deal of anxiety for our customers, and they look to Jack Henry & Associates for answers and support. Jay Heidrick and the rest of the team at Polsinelli have been strong partners over the years in helping us address these concerns. We are pleased with the court’s decision, but even more pleased with our customers’ continued faith in our ability to address legal issues that can be disruptive to their business objectives,” said Craig Morgan, General Counsel at Jack Henry.
Women in IP
Polsinelli continued to increase the number of women IP attorneys in 2018, and was thrilled to welcome Shareholders Angel Lezak to both our Silicon Valley and Washington, D.C. offices and Dr. Roberta (Bert) Hanson to our Denver office. We were also excited to welcome Associates Helena Berezowskyj (Chicago), Rebecca Horton (San Francisco) and Shaleez Ozlat (Houston). Following an inspired Senior Women’s Corporate Counsel meeting in Vail, and the firm’s partner retreat in San Antonio, the women IP partners decided to form a network of women IP attorneys across the country. Engaging clients and prospective clients in creative, fun events across the country will serve to bring women IP attorneys closer as friends, colleagues, current clients and future clients.
Biosimilars continued to gain momentum in 2018. The FDA approved seven biosimilar products (bringing the total to 16 approvals since 2015), although only six biosimilars are currently marketed in the U.S. Biosimilar manufacturers have demonstrated an increased willingness to attack reference product sponsors, including through antitrust lawsuits and FDA citizen petitions. The total number of lawsuits filed under the BPCIA has now exceeded 20, with 2018 being the busiest filing year to date with eight such suits filed. Also, Congress passed the Patient Right to Know Drug Prices Act which requires drug manufacturers to submit details of biosimilar deals to the Federal Trade Commission for antitrust scrutiny. We expect biosimilars to continue increasing in importance and are well positioned to continue assisting our clients in pursuing approval and marketing ability.
Polsinelli continues to expand its patent preparation and prosecution team and skills. We represent a wide range of clients, ranging from some of the most valuable companies in the world to individual inventors, start-ups and universities. Polsinelli added experienced patent prosecutors throughout our offices and across disciplines, including patent attorneys with expertise in computer technology, cellular and molecular biology, chemical manufacturing, pharmaceuticals and medical devices, in offices including Chicago, Washington D.C., Denver, Los Angeles and Silicon Valley.
Unpatentable so-called “Abstract Ideas” continue to be a challenge for the U.S. Patent System, and Polsinelli is at the forefront of developing successful strategies for addressing such issues and working with policy makers to help provide more predictability in 2019. Polsinelli is also assisting numerous clients to protect technologies related to 5G, Artificial Intelligence and Machine Learning, Blockchain, the Internet of Things and other areas of intense development and competition.
We continue to develop IP strategies for blockchain-based businesses and continue to write papers about IP and blockchain technology. As more development occurs in the blockchain space, and as the Patent Office becomes more familiar with the technology, we continue to work with clients to address potential “abstract idea” issues. We insure that the innovation addresses a technical problem with a technological solution based on new uses of the underlying blockchain technology rather than merely a software solution.
Polsinelli’s IP Department is a full service national powerhouse with a large interactive team that can handle any IP-related issue both domestically and internationally. Our department includes respected IP professionals who have previously served in positions such as Under Secretary of Commerce for Intellectual Property, Director of the USPTO and Executive Director of the American Intellectual Property Law Association (AIPLA). Members of our department are currently serving on many industry organizations including the USPTO’s Patent Public Advisory Committee (PPAC) and as President of the 1,250+ member New York Intellectual Property Law Association (NYIPLA). Our professionals hold more than 90 technical degrees in subjects such as electrical engineering, computer science, materials science, chemistry, biomedical engineering, cell and molecular biology, pharmacology and biophysics. We represent not only a number of household name brands but also emerging technology companies in protecting their most valuable assets in the fields of patent prosecution, litigation, trademark portfolios and IPRs.
We are excited about the significant growth we have seen and look forward to continuing to serve our clients in this ever-changing field.
Best wishes in 2019.
Intellectual Property Department