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April 21, 2021 |
Wayne Barsky Named 2021 Top Intellectual Property Lawyer

The Daily Journal named Century City partner Wayne Barsky among its 2021 Top Intellectual Property Lawyers. His profile was published on April 21, 2021. Wayne Barsky is Co-Chair of Gibson Dunn’s Intellectual Property Practice Group.  He focuses on patent litigation for clients in the life science, pharmaceutical, and medical device industries, and has extensive trial and appellate experience in federal courts throughout the country and in matters before the U.S. International Trade Commission.

April 5, 2021 |
Federal Circuit Update (March 2021)

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This edition of Gibson Dunn’s Federal Circuit Update summarizes key petitions for certiorari in cases originating in the Federal Circuit, addresses the Federal Circuit’s announcement that Judge Wallach will be taking senior status and the court’s updated Rules of Practice, and discusses recent Federal Circuit decisions concerning issue preclusion, Section 101, appellate procedure for PTAB appeals, and the latest mandamus petitions on motions to transfer from the Western District of Texas.

Federal Circuit News

Supreme Court:

Today, the Court decided Google LLC v. Oracle America, Inc. (U.S. No. 18-956).  In a 6-2 decision, the Court held that because Google “reimplemented” a user interface, “taking only what was needed to allow users to put their accrued talents to work in a new and transformative program,” Google’s copying of the Java API was a fair use of that material as a matter of law.  The Court did not decide the question whether the Copyright Act protects software interfaces.  “Given the rapidly changing technological, economic, and business-related circumstances,” the Court explained, “[the Court] should not answer more than is necessary to resolve the parties’ dispute.”  The Court therefore assumed, “purely for argument’s sake,” that the Java interface is protected by copyright.

This month, the Supreme Court did not add any new cases originating at the Federal Circuit.  As we summarized in our January and February updates, the Court has two such cases pending: United States v. Arthrex, Inc. (U.S. Nos. 19-1434, 19-1452, 19-1458); and Minerva Surgical Inc. v. Hologic Inc. (U.S. No. 20-440).

The Court will hear argument on the doctrine of assignor estoppel on Wednesday, April 21, 2021, in Minerva v. Hologic.

Noteworthy Petitions for a Writ of Certiorari:

There are three new potentially impactful certiorari petitions that are currently before the Supreme Court:

Ono Pharmaceutical v. Dana-Farber Cancer Institute (U.S. No. 20-1258):  “Whether the Federal Circuit erred in adopting a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are ‘not probative’ of whether those alleged contributions were significant to conception.”

Warsaw Orthopedic v. Sasso (U.S. No. 20-1284):  “Whether a federal court with exclusive jurisdiction over a claim may abstain in favor of a state court with no jurisdiction over that claim.”

Sandoz v. Immunex (U.S. No. 20-1110):  “May the patent owner avoid the rule against double patenting by buying all of the substantial rights to a second, later-expiring patent for essentially the same invention, so long as the seller retains nominal ownership and a theoretical secondary right to sue for infringement?”

The petitions in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC (U.S. No. 20-891) and Ariosa Diagnostics, Inc. v. Illumina, Inc. (U.S. No. 20-892) are still pending.

After requesting a response, the Court denied Argentum’s petition in Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corporation (U.S. No. 20-779).  Gibson Dunn partners Mark Perry and Jane Love were counsel for Novartis.

Other Federal Circuit News:

Judge Wallach to Retire.  On March 16, 2021, the Federal Circuit announced that Judge Evan J. Wallach will retire from active service and assume senior status, effective May 31, 2021.  Judge Wallach served on the Federal Circuit for nearly 10 years and, prior to that, served on the U.S. Court of International Trade for 16 years.  Judge Wallach’s full biography is available on the court’s website.  On March 30, President Biden announced his intent to nominate Tiffany Cunningham for the empty seat.  Ms. Cunningham has been a partner in the Patent Litigation practice of Perkins Coie LLP since 2014, and serves on the 17-member Executive Committee of the firm.  She began her legal career as a law clerk to Judge Dyk.

Federal Circuit Practice Update

Updated Federal Circuit Rules.  Pursuant to the court’s December 9, 2020 public notice, the court has published an updated edition of the Federal Circuit Rules.  This edition incorporates the emergency amendment to Federal Circuit Rule 15(f) brought about by the court’s en banc decision in NOVA v. Secretary of Veterans Affairs (Fed. Cir. No. 20‑1321).

Upcoming Oral Argument Calendar

The list of upcoming arguments at the Federal Circuit are available on the court’s website.

Live streaming audio is available on the Federal Circuit’s new YouTube channel.  Connection information is posted on the court’s website.

Case of Interest:

New Vision Gaming & Development, Inc. v. SG Gaming, Inc. (Fed. Cir. No. 20‑1399):  This case concerns “[w]hether the unusual structure for instituting and funding AIA post-grant reviews violates the Due Process Clause in view of Tumey v. Ohio, 273 U.S. 510 (1927), and its progeny, which establish ‘structural bias’ as a violation of due process.”  It attracted an amicus brief from US Inventor in support of appellant, which argues that the administrative patent judges’ compensation and performance rating system affects their decision making.  Panel M will hear argument in New Vision Gaming on April 9, 2021, at 10:00 AM Eastern.

Key Case Summaries (March 2021)

SynQor, Inc. v. Vicor Corp. (Fed. Cir. No. 19-1704):  In an inter partes reexamination (“IPR”), the Patent Trial and Appeal Board (“PTAB”) found several claims of SynQor’s patent unpatentable over the prior art.  SynQor appealed, arguing that common law preclusion arising from a prior reexamination involving two related patents collaterally estopped the Board from finding a motivation to combine.

The Federal Circuit panel majority (Hughes, J., joined by Clevenger, J.) vacated and remanded, holding that common law issue preclusion can apply to IPRs.  Analyzing the statutory scheme, the majority determined that Congress did not intend to prevent application of common law estoppel.  Instead, the estoppel provisions of 35 U.S.C. §§ 315(c), 317(b) were more robust than common law collateral estoppel and fully consistent with allowing common law estoppel.  The majority also determined that IPRs satisfied the traditional elements of issue preclusion.  The majority explained that unlike an ex parte reexamination, Congress provided the third-party reexamination requestor the opportunity to fully participate in inter partes proceedings.  The majority also determined that inter partes reexaminations contained sufficient procedural elements necessary to invoke issue preclusion.  In an IPR, a party has the opportunity to respond to the other party’s evidence, challenge an expert’s credibility and submit its own expert opinions.  Thus, the majority found that the lack of cross-examination did not prevent common law issue preclusion from applying to IPRs.

Judge Dyk dissented, arguing that common law issue preclusion should not apply to inter partes reexaminations because of the lack of compulsory process and cross-examination.

In Re: Board of Trustees of the Leland Stanford Junior University (Fed. Cir. No. 20-1012):  The PTAB affirmed the examiner’s final rejection of Stanford’s claims directed to determining haplotype phase, on the basis that the claims were ineligible.  The process of haplotype phasing involves determining from which parent an allele was inherited.  The PTAB held that the claims were directed to “receiving and analyzing information,” which are “mental processes within the abstract idea category,” and that the claims lacked an inventive concept.

The Federal Circuit (Reyna, J., joined by Prost, C.J. and Lourie, J.) affirmed.  At step one, the court held that the claims were directed to the abstract idea of “mathematically calculating alleles’ haplotype phase.”  At step two, it held that the claims lacked an inventive concept, noting that the claims recited no steps that “practically apply the claimed mathematical algorithm.”  The court held that, instead, the claims merely stored the haplotype phase information, which could not transform the abstract idea into patent-eligible subject matter.  It further held that the dependent claims recited limitations amounting to no more than an instruction to apply that abstract idea.

Mylan Laboratories v. Janssen Pharmaceutica (Fed. Cir. No. 20-1071):  Mylan petitioned for IPR of Janssen’s patent.  Janssen opposed institution on the grounds that instituting the IPR would be an inefficient use of the PTAB’s resources because of two co-pending district court actions: one against Mylan and a second against Teva Pharmaceuticals that was set to go to trial soon after the institution decision.  The Board applied its six-factor standard articulated in Fintiv and denied institution.  Mylan appealed and requested mandamus relief; arguing that denying IPR based on litigation with a third party undermined Mylan’s constitutional and other due process rights, and that application of the six-factor standard violated congressional intent.

The Federal Circuit (Moore, J., joined by Newman, J. and Stoll, J.) granted Janssen’s motion to dismiss the appeal and denied Mylan’s petition for a writ of mandamus.  The court dismissed Mylan’s direct appeal and reiterated that the court lacks jurisdiction over appeals from decisions denying institution because Section 314(d) specifically makes institution decisions “nonappealable.”  The court noted that “judicial review [of institution decisions] is available in extraordinary circumstances by petition for mandamus,” even though “the mandamus standard will be especially difficult to satisfy” when challenging a decision denying institution of an IPR.  Indeed, the court noted that “it is difficult to imagine a mandamus petition that challenges a denial of institution and identifies a clear and indisputable right to relief.”  Considering the merits of Mylan’s petition, the court explained that “there is no reviewability of the Director’s exercise of his discretion to deny institution except for colorable constitutional claims,” which Mylan had failed to present.

Uniloc 2017 v. Facebook (Fed. Cir. No. 19-1688):  Uniloc appealed from a PTAB ruling that the petitioners were not estopped from challenging the claims and that the patents at issue were invalid as obvious.  Facebook filed two IPR petitions and then joined an IPR petition that had been previously filed by Apple, which challenged only a subset of the claims in the Facebook petitions.  LG then joined Facebook’s two petitions, but not Apple’s.  After instituting trial on Facebook’s two IPR petitions, the PTAB issued it final written decision in the Apple IPR, upholding the validity of Apple’s claims.  The PTAB determined that, as of the final written decision on the Apple IPR, Facebook was estopped from challenging the overlapping claims in its own IPR petitions under § 315 (e)(1).  LG, however, was not estopped from challenging the overlapping claims.

The Federal Circuit (Chen, J., joined by Lourie, J. and Wallach, J.) affirmed.  The panel first determined that it had jurisdiction to review the challenge because the final written decision in the Apple IPR did not issue until after the institution of trial on the Facebook petitions.  Next, the panel held that LG was not a real-party-at-interest or privy of Facebook because there was no evidence of any sort of preexisting, established relationship that indicates coordination related to the Apple IPR.  According to the panel, moreover, Facebook was not estopped from addressing the non-overlapping claims (even the claim that depended from an overlapping claim) because § 315 (e)(1) specifically applies to claims in a patent.  The panel then addressed the PTAB’s obviousness determination regarding the challenged claims and affirmed the Board’s obviousness findings as supported by substantial evidence.

In Re TracFone Wireless (Fed. Cir. No. 21-118): Precis Group sued TracFone in the Western District of Texas, alleging that venue was proper because TracFone has a store in San Antonio.  TracFone moved to transfer on the grounds that venue was inconvenient, as well as improper because it no longer has a branded store in the district.  For several months, the district court (Judge Albright) did not decide the motion, and instead kept the case moving towards trial.  After eight months, TracFone petitioned the Federal Circuit for a writ of mandamus.

In its decision granting mandamus, the Federal Circuit (Reyna, J., joined by Chen, J. and Hughes, J.) ordered Judge Albright to “issue its ruling on the motion to transfer within 30 days from the issuance of this order, and to provide a reasoned basis for its ruling that is capable of meaningful appellate review.”  It also ordered that all proceedings in the case be stayed until further notice.  Notably, the court explained “that any familiarity that [the district court] has gained with the underlying litigation due to the progress of the case since the filing of the complaint is irrelevant when considering the transfer motion and should not color its decision.”  Judge Albright denied the motion to transfer the day after the mandamus decision issued.

The Federal Circuit has recently denied two other petitions for mandamus involving cases before Judge Albright.  In In re Adtran, Inc. (Fed. Cir. No. 21-115), the court denied a petition for mandamus directing Judge Albright to stay all deadlines unrelated to venue pending a decision on transfer.  In In re True Chemical Solutions (Fed. Cir. No. 21-131), the court denied a petition for mandamus reversing Judge Albright’s grant of a motion for intra-division transfer.  Notably, Judge Albright now oversees 20% of new US patent cases (link).


Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding developments at the Federal Circuit.  Please contact the Gibson Dunn lawyer with whom you usually work or the authors of this alert:

Blaine H. Evanson - Orange County (+1 949-451-3805, bevanson@gibsondunn.com) Jessica A. Hudak - Orange County (+1 949-451-3837, jhudak@gibsondunn.com)

Please also feel free to contact any of the following practice group co-chairs or any member of the firm’s Appellate and Constitutional Law or Intellectual Property practice groups:

Appellate and Constitutional Law Group: Allyson N. Ho - Dallas (+1 214-698-3233, aho@gibsondunn.com) Mark A. Perry - Washington, D.C. (+1 202-887-3667, mperry@gibsondunn.com)

Intellectual Property Group: Wayne Barsky - Los Angeles (+1 310-552-8500, wbarsky@gibsondunn.com) Josh Krevitt - New York (+1 212-351-4000, jkrevitt@gibsondunn.com) Mark Reiter - Dallas (+1 214-698-3100, mreiter@gibsondunn.com)

© 2021 Gibson, Dunn & Crutcher LLP

Attorney Advertising:  The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.

April 5, 2021 |
Supreme Court Holds That Google’s Use Of Oracle’s Java Software Interface Is Fair Use

Click for PDF Decided April 5, 2021 Google LLC v. Oracle America, Inc., No. 18-956

Today, the Supreme Court held 6-2 that Google’s use of the Java interface in the Android platform falls within the fair use doctrine. 

Background: Sun Microsystems launched the Java platform in the 1990s to allow software developers to write and run applications in the Java programming language. The Java platform includes pre-written code to perform a number of common functions (e.g., calculating an arithmetic mean), which software developers can incorporate directly into their own applications through the use of the Java software interface. By using Java’s software interface in their applications, developers avoid having to compose the underlying, functional code themselves.

Google launched its Android operating system in 2008. Like Java, Android includes pre-written code to perform certain common functions, making it easier for developers to create applications for Android. Although the code used by Android to perform these functions is entirely original, Android used portions of Java’s software interface. By doing so, Google allowed developers to create applications for Android using the same interface that they use to create applications for Java. In all, Android uses 11,330 lines (or 0.4 percent) of Java’s software interface.

After acquiring Java from Sun Microsystems, Oracle sued Google for copyright infringement based on Android’s use of the Java software interface. The district court concluded that copyright protection did not extend to the Java software interface, but the Federal Circuit reversed, concluding that Java’s software interface is protectable under copyright law and that the merger doctrine, which bars copyright protection when there are only a few ways to express a function, was inapplicable. On remand, a jury found that Google’s use of the Java software interface was protected under the fair use doctrine, but the Federal Circuit again reversed.

Issue: Does the Copyright Act protect a software interface and, if so, does Android’s use of the Java software interface constitute fair use?

Court's Holding: The Court assumed, “purely for argument’s sake,” that the Java interface is protected by copyright, and held that Google’s use of that interface in the Android platform falls within the fair use doctrine.

“We reach the conclusion that in this case, where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google’s copying of the Sun Java API was a fair use of that material as a matter of law.

Justice Breyer, writing for the Court

What It Means:
  • The Court clarified that “fair use” is a mixed question of law and fact. Reviewing courts should appropriately defer to the jury’s findings of underlying facts, but the ultimate question whether those facts show a fair use is a legal question for judges to decide de novo.
  • The Court explained that the fair use doctrine is particularly important when applying copyright law to computer programs because they almost always serve functional purposes and are bound up with uncopyrightable material. “[F]air use can play an important role in determining the lawful scope of a computer program copyright” because it provides a context-based check that can help to keep a copyright monopoly within its lawful bound.
  • The application of fair use in this case does not undermine the general copyright protection Congress provided for computer programs because the declaring code at issue, “if copyrightable at all,” is further than most computer programs are from “the core of copyright.”  This is because, as part of a user interface, the declaring code’s use “is inherently bound together with uncopyrightable ideas (general task division and organization) and new creative expression (Android’s implementing code).”  Moreover, its value (1) derives from the value that computer programmers invest of their own time and effort to learn the API’s system and (2) lies in its efforts to encourage programmers to learn and to use that system so that they will use Sun-related implementing programs.
  • Despite Google having copied portions of the Java interface “precisely,” the Court held that its use was nonetheless “transformative” because Google used the code to “create a new platform that could be readily used by programmers.” Google’s use was therefore “consistent with that creative ‘progress’ that is the basic constitutional objective of copyright itself.”
  • Commercial use does not necessarily tip the scales against fair use. The Court explained that, even though Google’s use was a commercial endeavor, that is not dispositive of the “purpose and character of use” factor, particularly because Google’s use was transformative.
  • The Court’s fair use ruling will make it easier for platform developers to reuse software interfaces when creating new platforms. This may lead to the development of less-expensive competing versions of applications, but may also disincentivize research and development of new software platforms or languages.
  • The question whether the Copyright Act protects software interfaces remains unanswered. “Given the rapidly changing technological, economic, and business-related circumstances,” the Court explained, “[the Court] should not answer more than is necessary to resolve the parties’ dispute.” The Court therefore assumed, “purely for argument’s sake,” that the Java interface is protected by copyright.

The Court's opinion is available here.

Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding developments at the Supreme Court. Please feel free to contact the following practice leaders:

Appellate and Constitutional Law Practice

Allyson N. Ho +1 214.698.3233 aho@gibsondunn.com Mark A. Perry +1 202.887.3667 mperry@gibsondunn.com Blaine H. Evanson +1 949-451-3805 bevanson@gibsondunn.com
Lucas C. Townsend +1 202.887.3731 ltownsend@gibsondunn.com Bradley J. Hamburger +1 213.229.7658 bhamburger@gibsondunn.com

Related Practice: Intellectual Property

Wayne Barsky +1 310.552.8500 wbarsky@gibsondunn.com Josh Krevitt +1 212.351.4000, jkrevitt@gibsondunn.com Mark Reiter +1 214.698.3100 ,mreiter@gibsondunn.com
Howard S. Hogan +1 202.887.3640 hhogan@gibsondunn.com

March 3, 2021 |
Federal Circuit Update (February 2021)

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This edition of Gibson Dunn’s Federal Circuit Update summarizes the three pending Supreme Court cases originating in the Federal Circuit and key filings for certiorari review.  We address the Federal Circuit’s announcement that it will now offer a live audio streaming program for oral argument.  And we discuss other recent Federal Circuit decisions concerning induced infringement via “skinny labels,” patent term adjustment, motions to transfer from the Western District of Texas, and whether anticipation is inherent in an obviousness theory.

Federal Circuit News

Supreme Court:

In February, the Supreme Court did not add any new cases originating in the Federal Circuit.  It has three such cases pending.

United States v. Arthrex, Inc. (U.S. Nos. 19-1434, 19-1452, 19-1458):  On Monday, March 1, the Court heard argument on the question of whether PTAB administrative patent judges are principal Officers and therefore unconstitutionally appointed in violation the Appointments Clause.  Gibson Dunn partner Mark Perry argued for Smith & Nephew.

Minerva Surgical Inc. v. Hologic Inc. (U.S. No. 20-440):  As we summarized in our January 2021 update, the Supreme Court granted certiorari to determine the viability of the assignor estoppel doctrine, which bars assignors from challenging the patent’s validity in district court.  Minerva Surgical filed its opening brief on the merits asking the Court to eliminate assignor estoppel.  Engine Advocacy filed a brief in support.  Hologic’s brief is due at the end of March.

Google LLC v. Oracle America, Inc. (U.S. No. 18-956):  As we summarized in our January 2021 update, the Court is considering whether copyright protection extends to a software interface and, if so, whether Google’s use constitutes fair use.  The Court heard argument on October 7, 2020.

Noteworthy Petitions for a Writ of Certiorari:

There are three potentially impactful petitions currently before the Supreme Court.

As we summarized in our January 2021 update, petitioners in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC (U.S. No. 20-891) and Ariosa Diagnostics, Inc. v. Illumina, Inc. (U.S. No. 20-892) both raise questions related to patent eligibility under 35 U.S.C. § 101.  The Court has requested responses to both petitions, which are due March 21, 2021, and April 19, 2021, respectively.

The Court also requested a response in Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corporation (U.S. No. 20-779), which Novartis filed on February 16, 2021.  The question presented is whether the Federal Circuit correctly found that Argentum’s evidence of alleged injury was insufficient to establish Article III standing.  Gibson Dunn partners Mark Perry and Jane Love are counsel for Novartis.

Other Federal Circuit News:

In GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. No. 18-1976), on February 9, 2021, the panel granted panel rehearing, vacated the judgment, withdrew its October opinion, and ordered a second oral argument, which it held on February 23, 2021.  On October 2, 2020, a panel (Newman, J., joined by Moore, J.) vacated the district court’s grant of JMOL and reinstated the jury verdicts of infringement and damages.  Over Chief Judge Prost’s dissent, the panel majority held that Teva induced infringement of GSK’s patent by marketing its generic carvedilol, even though the “skinny label” carved out the infringing method.  Teva petitioned for rehearing on the question of whether a generic manufacturer can “be held liable for induced infringement based on evidence that would be available in every carve-out case.”  Three amicus briefs were filed before the panel’s initial decision, and eight amicus briefs were filed in support of rehearing.

Federal Circuit Practice Update

Live streaming audio of oral argument.  Beginning this week, as part of the Federal Circuit’s ongoing response to the COVID-19 pandemic, the court will offer a new live audio streaming program for oral argument panels.  For the March 2021 session, Panels B, E, H, K, and N will have daily live streaming audio on the Federal Circuit’s new YouTube channel.  Connection information is posted on the court’s website on the first day of the month’s session.  The court anticipates that, by the April session, all oral arguments will be live audio streamed online while the courthouse remains closed to the public.

Upcoming Oral Argument Calendar

The list of upcoming arguments at the Federal Circuit are available on the court’s website.

Key Case Summaries (February 2021)

Amgen, Inc. v. Sanofi (Fed. Cir. No. 20-1074):  Amgen appealed from the district court’s grant of JMOL of lack of enablement of its claims to antibodies that bind to a protein and block it from binding to low-density lipoprotein (“LDL”) receptors (elevated LDL cholesterol is linked to heart disease).  The claimed antibodies are defined by their function:  binding to a combination of sites on the protein and blocking the protein/LDL receptor interaction.  The district court concluded, based on the Wands factors, that the claims are not enabled because they require undue experimentation.

The panel (Lourie, J., joined by Prost, C.J., and Hughes, J.) affirmed.  The panel explained that, under the court’s precedents, “the enablement inquiry for claims that include functional requirements can be particularly focused on the breadth of those requirements, especially where predictability and guidance fall short.”  It further explained that “[w]hile functional claim limitations are not necessarily precluded in claims that meet the enablement requirement, such limitations pose high hurdles in fulfilling the enablement requirement for claims with broad functional language.”  The panel held that the claims were not enabled because undue experimentation would be required to practice the full scope of these claims.

In re: SK hynix Inc. (Fed. Cir. No. 21-113):  SK hynix petitioned for a writ of mandamus directing the district court (Judge Albright in the Western District of Texas) to transfer the underlying case to the Central District of California.  On May 4, 2020, SK hynix moved to transfer the case and, although briefing was complete by May 26, 2020, the court had yet to rule.  Meanwhile, Judge Albright ordered the parties to engage in extensive discovery and scheduled a Markman hearing for March 19, 2021.  After SK Hynix petitioned the Federal Circuit, on January 28, 2021, the district court issued an order setting a hearing on the transfer motion for the morning of February 2, 2021.

The panel (Moore, J., joined by Newman and Stoll, JJ.) granted the petition to the extent that the district court must stay all proceedings concerning the substantive issues of the case and all discovery until such time that it has issued a ruling on the transfer motion.  The panel agreed with SK hynix that the district court’s handling of the transfer motion “amounted to [an] egregious delay and blatant disregard for precedent,” and that disposing of transfer motions should “unquestionably take top priority.”

In re: SK hynix Inc. (Fed. Cir. No. 21-114):  The day after the court granted SK hynix’s petition, the district court denied its transfer motion and issued an opinion with its reasoning.  SK hynix petitioned for mandamus again.  The panel (Taranto, J., joined by Dyk and Bryson, JJ.) denied the petition, concluding that SK hynix had not shown that the district court clearly abused its discretion.

M & K Holdings, Inc. v. Samsung Electronics Co. (Fed. Cir. No. 20-1160):  M & K Holdings appealed from a Board decision in an IPR proceeding that all claims are unpatentable.  M&K argued that the Board erred by finding one claim anticipated when the petition for IPR asserted only obviousness as to that claim.  Although the Board stated it was holding that claim to be invalid as obvious, the Board’s analysis of the patentability of the claim was based on anticipation, not obviousness.

The panel (Bryson, J., joined by Moore and Chen, JJ.) vacated the Board’s holding that the claim is unpatentable, reasoning that the Board’s reliance on anticipation deprived M&K of the notice it was due.  The panel explained that the Board’s anticipation finding was “not inherent” in Samsung’s obviousness theory.  And, in fact, Samsung’s position before the Board contradicted such a conclusion.  M&K was not put on notice that the Board might find that the reference disclosed all of the claim limitations and might invalidate the claim based on anticipation.  That amounted to a “marked deviation” from the invalidity theory set forth in Samsung’s petition.

Chudik v. Hirshfeld (Fed. Cir. No. 20-1833):  Dr. Chudik’s patent issued eleven and a half years after the application was filed.  The PTO ultimately awarded Dr. Chudik a patent term adjustment of 2,066 days under 35 U.S.C. § 154(b), but it rejected Dr. Chudik’s argument that he was entitled to an additional 655 days, under 35 U.S.C. § 154(b)(1)(C)(iii) (C-delay), for the time his four notices of appeal were pending in the PTO.  The PTO concluded that the provision does not apply here because the examiner reopened prosecution during each of his four appeals so the Board never had jurisdiction.  The district court affirmed the PTO’s decision (35 U.S.C. § 154(b)(4)(A)).

The panel (Taranto, J., joined by Bryson and Hughes, JJ.) also affirmed.  The panel held that, under any framework (Chevron or not) and even without Skidmore deference, the best interpretation of the statutory language is the one the PTO adopted.


Gibson Dunn's lawyers are available to assist in addressing any questions you may have regarding developments at the Federal Circuit.  Please contact the Gibson Dunn lawyer with whom you usually work or the authors of this alert:

Blaine H. Evanson - Orange County (+1 949-451-3805, bevanson@gibsondunn.com) Jessica A. Hudak - Orange County (+1 949-451-3837, jhudak@gibsondunn.com)

Please also feel free to contact any of the following practice group co-chairs or any member of the firm's Appellate and Constitutional Law or Intellectual Property practice groups:

Appellate and Constitutional Law Group: Allyson N. Ho - Dallas (+1 214-698-3233, aho@gibsondunn.com) Mark A. Perry - Washington, D.C. (+1 202-887-3667, mperry@gibsondunn.com)

Intellectual Property Group: Wayne Barsky - Los Angeles (+1 310-552-8500, wbarsky@gibsondunn.com) Josh Krevitt - New York (+1 212-351-4000, jkrevitt@gibsondunn.com) Mark Reiter - Dallas (+1 214-698-3100, mreiter@gibsondunn.com)

© 2021 Gibson, Dunn & Crutcher LLP Attorney Advertising:  The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.

February 17, 2021 |
Josh Krevitt and Stuart Rosenberg Named Litigators of the Week

The Am Law Litigation Daily named New York partner Josh Krevitt and Palo Alto partner Stuart Rosenberg as its Litigators of the Week for scoring a complete victory for Fitbit in a high-profile, high-stakes patent case  against Fitbit at the U.S. the International Trade Commission.  The profile was published on February 12, 2021. Josh Krevitt is Co-Chair of Gibson Dunn’s Intellectual Property Practice.  He focuses on intellectual property litigation, chiefly patent litigation, as well as complex commercial litigation.  He has successfully represented some of the leading technology companies in the world in some of their most important and challenging intellectual property matters. Stuart Rosenberg’s practice focuses on intellectual property litigation and counseling.  He has represented clients in a variety of industries and technologies, including software and electronics, medical devices, sporting goods, and automotive design.

February 17, 2021 |
Gibson Dunn, Howard Hogan and Kenneth Parker Named to World Trademark Review 1000 2021 Edition for Enforcement and Litigation

Gibson Dunn, Orange County partner Kenneth Parker and Washington, D.C. partner Howard Hogan were named to the World Trademark Review 1000: The World’s Leading Trademark Professionals 2021 edition for Enforcement and Litigation in the Washington, D.C. metro area and California metro area. The publication noted that Hogan “is superb at framing strategies for complex cases at both the trial and appellate stages,” and Parker, as “a battle-tested patent, trademark and commercial trial lawyer, he will fit right in at a firm known for taking – and winning – the toughest cases.” The list was published February 11, 2021. Howard Hogan’s practice focuses on intellectual property litigation and counseling. He has represented various corporations and individuals in a broad range of industries, including financial services, sports, fashion, cosmetics, entertainment, transportation, pharmaceuticals, and online services. Kenneth Parker is a first-chair trial lawyer who has tried patent, trademark, and business cases to verdict, including International Trade Commission Section 337 patent litigation proceedings. His work spans across industries, including life sciences (for example, research tools, analytical instrumentation/software, medical devices, diagnostics, biomanufacturing systems, etc.), software (encryption, predictive algorithms, AI); electronics and semiconductors, and consumer products.

February 10, 2021 |
ITC Section 337 Patent Investigations: Overview

Palo Alto partner Mark Lyon is the co-author of "ITC Section 337 Patent Investigations: Overview," [PDF] published by Thomson Reuters Practical Law in February 2021.

February 1, 2021 |
Federal Circuit Update (January 2021)

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This edition of Gibson Dunn’s Federal Circuit Update summarizes the three pending Supreme Court cases originating in the Federal Circuit and key filings for certiorari review. We address the Federal Circuit’s updates to its Oral Argument Guide and its new procedures for handling highly sensitive information.  And we discuss other recent Federal Circuit decisions concerning the validity of assignment agreements, motions to transfer from the Western District of Texas, waiver, forfeiture, and venue for ANDA cases.

In case you missed it, on January 11, 2021, Gibson Dunn published its eighth “Federal Circuit Year In Review,” providing a statistical overview and substantive summaries of the 130 precedential patent opinions issued by the Federal Circuit between August 1, 2019, and July 31, 2020.

Federal Circuit News

Supreme Court:

The Supreme Court has three pending cases originating in the Federal Circuit.

Minerva Surgical Inc. v. Hologic Inc. (U.S. No. 20-440): As we summarized in our May 2020 update, a Federal Circuit panel (Stoll, J., joined by Wallach and Clevenger, JJ.) held that, under Federal Circuit precedent, the doctrine of assignor estoppel barred Minerva, the original assignor of the asserted patents, from challenging invalidity of the asserted patents in the district court. The doctrine did not apply to IPRs, however, which allowed Minerva to challenge the validity of the asserted patents via an IPR. The Supreme Court granted certiorari on the following issue: “Whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.” Briefing is complete, but oral argument has not yet been scheduled.

United States v. Arthrex, Inc. (U.S. Nos. 19-1434, 19-1452, 19-1458): As we summarized in our November 2019 update and in our November 5, 2019 alert, a panel of the Federal Circuit (Moore, J., joined by Reyna and Chen, JJ.) held that PTAB administrative patent judges (APJs) were improperly appointed principal Officers under the Appointments Clause. To cure this defect, the court ruled that the statutory provision of for-cause removal for PTO officials is unconstitutional as applied to APJs. In the Supreme Court, no party defends the Federal Circuit’s decision. The United States and Smith & Nephew argue that APJs are inferior Officers because, “from soup to nuts,” their work is supervised by principal Officers, such as the Director. By contrast, Arthrex maintains that APJs are principal Officers solely because the Director does not have the power to directly “review and modify” APJ decisions, which Arthrex claims is an “indispensable” component of supervision. Briefing is nearly complete (Arthrex will file its final brief in mid-February) and oral argument is calendared for March 1, 2021. Gibson Dunn partner Mark Perry is co-counsel for Smith & Nephew.

Google LLC v. Oracle America, Inc. (U.S. No. 18-956): As we summarized in our March 2018 update, our November 2019 update, and our May 2020 update, a Federal Circuit panel (O’Malley, J., joined by Plager and Taranto, JJ.) held in 2014 that a software interface comprising of declaring code for the Java programming language was copyrightable. The same panel of the Federal Circuit ruled in 2018 that Google’s use of the Java declaring code in its Android operating system was not fair use. The Supreme Court granted certiorari to consider two issues: “(1) Whether copyright protection extends to a software interface; and (2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.” On October 7, 2020, the Court heard oral argument in this case. On the first issue, the Court challenged both sides’ arguments concerning the applicability of the merger doctrine (under which there is no copyright protection if there is only one conceivable form of expression) in this case. The Court also questioned whether merger should be evaluated when the program was first written or when it was used, particularly if the use occurs well after the program becomes the accepted method in the industry. On the second issue, the Court was concerned that the Federal Circuit applied an incorrect standard of review and did not give the jury verdict of fair use sufficient deference. Gibson Dunn partners Mark Perry and Blaine Evanson serve as counsel for Amicus Curiae Rimini Street, Inc. supporting reversal.

Noteworthy Petitions for a Writ of Certiorari:

There are two potentially impactful petitions that are asking for clarification of Section 101 jurisprudence currently pending before the Supreme Court.

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC (U.S. No. 20-891): “[1] What is the appropriate standard for determining whether a patent claim is ‘directed to’ a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101? [2] Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?”

Ariosa Diagnostics, Inc. v. Illumina, Inc. (U.S. No. 20-892): “Whether a patent that claims nothing more than a method for separating smaller DNA fragments from larger ones, and analyzing the separated DNA for diagnostic purposes, using well-known laboratory techniques is unpatentable under Section 101 and Myriad.”

The Court will consider American Axle during its February 19 conference. Ariosa has not yet been scheduled for conference.

Noteworthy Federal Circuit En Banc Petitions:

This month we highlight the pending en banc petition in In re Apple Inc. (Fed. Cir. No. 20-135).

The panel majority, over Judge Moore’s dissent, granted Apple’s mandamus petition, finding that Judge Albright (Western District of Texas) clearly abused his discretion in denying Apple’s motion for transfer to the Northern District of California. The panel opinion is further summarized below. Uniloc 2017 (plaintiff in the district court) filed an en banc petition presenting the issues of the level of deference that should be afforded, on mandamus review, to discretionary transfer decisions, and the circumstances in which a clear abuse of discretion can occur. US Inventor, Inc., filed an amicus brief in support of rehearing. At the court’s invitation, Apple responded to Uniloc 2017’s petition on December 29, 2020.

Other Federal Circuit News:

Dan Bagatell published his fourth annual article, providing an empirical review of the Federal Circuit’s decisions in patent cases during calendar year 2020. Bagatell found that the Federal Circuit’s affirmance rate in PTAB appeals rose over 5% to nearly 86% in 2020. IPR appeals, specifically, were affirmed 83% of the time. Notably, appellants prevailed outright in only 6% of PTAB appeals and 7% of IPR appeals. Patent challenger appellants fared slightly better than patent owner appellants, prevailing outright 17% of the time as compared to only 10% for patent owner appellants.

Federal Circuit Practice Update

In response to recent disclosures of widespread breaches of both private sector and government computer systems, the Federal Circuit has adopted new procedures for the handling of highly sensitive documents outside of the court’s electronic case filing system (CM/ECF) as well as for documents already electronically filed in CM/ECF. The administrative order and new procedures go into effect immediately and are available on the court’s website here and here.

The Clerk’s Office has also updated the Federal Circuit’s Guide for Oral Argument, which includes minor procedural clarifications and designates new Access Coordinators responsible for coordinating auxiliary aids and services to participants in proceedings who have communication disabilities.

Our May 2020 update summarized the key rule changes the Federal Circuit first proposed last spring. The December 2020 updated rules have taken effect and are now available on the court’s website.

Upcoming Oral Argument Calendar

The list of upcoming arguments at the Federal Circuit are available on the court’s website.

The court is scheduled to hear argument in 52% of the cases on its February 2021 calendar. This is up from the early days of the pandemic when, for example, the court heard argument in only 29% of its April 2020 cases. The number of argued cases, however, is still dramatically lower than pre-pandemic numbers. For example, in February 2020, the court heard argument in 81% of its scheduled cases.

Case of Interest:

On Friday, February 12, the court will hear argument in Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V. on Janssen’s motion to dismiss Mylan’s appeal. Janssen and the USPTO, as intervenor, argue that Mylan’s appeal should be dismissed for lack of jurisdiction because the Director’s institution decision is “final and nonappealable.” 35 U.S.C. § 314(d). Mylan maintains that judicial review remains available because the PTAB exceeded its congressional authority and violated Mylan’s due process rights by denying Mylan’s timely IPR petition based on the NHK/Fintiv rule.

Key Case Summaries (November 2020–January 2021)

Whitewater W. Indus., Ltd. v. Alleshouse, 981 F.3d 1045 (Fed. Cir. 2020): Alleshouse, while an employee of Whitewater, signed an agreement assigning to Whitewater, all of his rights or interests in any invention he “may make or conceive,” “whether solely or jointly with others,” if the invention is either “resulting from or suggested by” his “work for” Whitewater or “in any way connected to any subject matter within the existing or contemplated business of” Whitewater. Alleshouse left Whitewater to start his own venture, Pacific Surf. Alleshouse then began filing patent applications. Whitehouse sued, alleging breach of contract and that Alleshouse had to assign Pacific Surf’s patents to Whitehouse. The district court upheld the agreement as valid and determined that Alleshouse breached the contract by failing to assign the patents.

The Federal Circuit panel (Taranto, J., joined by Dyk and Moore, JJ.) reversed. The Federal Circuit held that the agreement’s assignment provision was invalid for violating California Business and Professions Code § 16600, which as applied by California courts, forbids employers from impairing post-employment liberties of former employees.

In re Google Tech. Holdings LLC, 980 F.3d 858 (Fed. Cir. 2020): Google appealed a PTAB decision that sustained the Examiner’s final rejection of certain claims for obviousness, arguing that the Board relied on incorrect claim constructions.

The Federal Circuit panel (Chen, J., joined by Taranto and Stoll, JJ.) affirmed, and found that Google had forfeited the claim construction arguments by not presenting them to the Board. The court also noted the distinction between forfeiture and waiver: “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’”

In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020): Apple moved to transfer Uniloc 2017’s lawsuit from the Western District of Texas (“WDTX”) to the Northern District of California (“NDCA”). Judge Alan Albright held a hearing and stated that he would deny the motion to transfer, but did not enter an order. After holding a Markman hearing, issuing a claim construction order, holding a discovery hearing, and issuing a discovery order, Apple filed a writ of mandamus at the Federal Circuit. Judge Albright issued his order denying the transfer a week later.

The Federal Circuit (Prost, C.J., joined by Hughes, J.) granted Apple’s mandamus petition. The majority held that the district court made several errors in assessing whether the Fifth Circuit’s public and private factors favor transfer. First, the majority held that the factor dealing with the relative ease of access to sources of proof analyzes only non-witness evidence, such as documents and physical evidence. Second, the majority held that the district court erred by too rigidly applying the Fifth Circuit’s 100-mile rule regarding witness inconvenience. The majority found that New York–based witnesses will only be slightly more inconvenienced by having to travel to California than to Texas. Third, the district court erred by faulting Apple for the fact that significant steps, such as the Markman hearing, had occurred in the case because those steps occurred after Apple moved for a transfer. Fourth, the panel found that the district court erred in its analysis of court congestion and time to trial. The panel found that WDTX and NDCA have had comparable times to trial and that the district court cannot set an aggressive trial date and then conclude other forums are more congested. Fifth and finally, the panel held that the consideration of local interests analyzes whether there are significant connections between a particular venue and the events that gave rise to the suit and not the parties’ connections to each forum writ large.

Judge Moore dissented, emphasizing the deferential clear abuse of discretion standard of review.

Valeant Pharm. N. Am. LLC v. Mylan Pharm. Inc., 978 F.3d 1374 (Fed. Cir. 2020): Valeant filed a Hatch-Waxman action against Mylan Pharmaceuticals Inc. (“MPI”), a West Virginia corporation; Mylan Inc., a Pennsylvania Corporation; and Mylan Laboratories Ltd. (“MLL”), a foreign corporation based in India. The defendants moved to dismiss for improper venue under § 1400(b) because the only alleged act of infringement—submission of the ANDA—did not occur in New Jersey, and the defendants do not reside or have regular and established places of business in New Jersey. The district court granted the motion to dismiss.

The Federal Circuit (O’Malley, J., joined by Newman and Taranto, JJ.) affirmed-in-part, reversed-in-part, and remanded. The panel held that, in cases brought under 35 U.S.C. § 271(e)(2)(A), infringement occurs for venue purposes only in districts where actions related to the submission of the ANDA occur, and not in all locations where future distribution of the generic products specified in the ANDA is contemplated. The Federal Circuit therefore affirmed the district court’s dismissal of MPI and Mylan Inc. for improper venue. The Federal Circuit, however, reversed the venue-based dismissal against the foreign-based entity MLL, which is subject to venue in any district, and remanded for consideration of the failure to state a claim defense, based on whether MLL’s involvement in submission of the ANDA is sufficient for it to be considered a “submitter,” and thus amenable to suit.

The court denied Valeant’s petition for en banc rehearing on January 26, 2021.


Gibson Dunn's lawyers are available to assist in addressing any questions you may have regarding developments at the Federal Circuit.  Please contact the Gibson Dunn lawyer with whom you usually work or the authors of this alert:

Blaine H. Evanson - Orange County (+1 949-451-3805, bevanson@gibsondunn.com) Jessica A. Hudak - Orange County (+1 949-451-3837, jhudak@gibsondunn.com)

Please also feel free to contact any of the following practice group co-chairs or any member of the firm's Appellate and Constitutional Law or Intellectual Property practice groups:

Appellate and Constitutional Law Group: Allyson N. Ho - Dallas (+1 214-698-3233, aho@gibsondunn.com) Mark A. Perry - Washington, D.C. (+1 202-887-3667, mperry@gibsondunn.com)

Intellectual Property Group: Wayne Barsky - Los Angeles (+1 310-552-8500, wbarsky@gibsondunn.com) Josh Krevitt - New York (+1 212-351-4000, jkrevitt@gibsondunn.com) Mark Reiter - Dallas (+1 214-698-3100, mreiter@gibsondunn.com)

© 2021 Gibson, Dunn & Crutcher LLP

Attorney Advertising:  The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.

January 11, 2021 |
2019/2020 Federal Circuit Year in Review

We are pleased to present Gibson Dunn’s eighth “Federal Circuit Year In Review,” providing a statistical overview and substantive summaries of the 130 precedential patent opinions issued by the Federal Circuit between August 1, 2019 and July 31, 2020. This term was marked by significant panel decisions with regard to the constitutionality of the PTAB and its jurisdiction and procedures (Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), Samsung Electronics America, Inc. v. Prisua Engineering Corp., 948 F.3d 1342 (Fed. Cir. 2020), and Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir. 2020)), subject matter eligibility (American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020) and Illumina, Inc. v. Ariosa Diagnostics, Inc.,952 F.3d 1367 (Fed. Cir. 2020)), and venue (In re Google LLC). The issues most frequently addressed in precedential decisions by the Court were: obviousness (43 opinions); infringement (24 opinions); claim construction (22 opinions); PTO procedures (21 opinions); and Jurisdiction, Venue, and Standing (19 opinions).

Use the Federal Circuit Year In Review to find out:

  • The easy-to-use Table of Contents is organized by substantive issue, so that the reader can easily identify all of the relevant cases bearing on the issue of choice.
  • Which issues may have a better chance (or risk) on appeal based on the Federal Circuit’s history of affirming or reversing on those issues in the past.
  • The average length of time from issuance of a final decision in the district court and docketing at the Federal Circuit to issuance of a Federal Circuit opinion on appeal.
  • What the success rate has been at the Federal Circuit if you are a patentee or the opponent based on the issue being appealed.
  • The Federal Circuit’s history of affirming or reversing cases from a specific district court.
  • How likely a particular panel may be to render a unanimous opinion or a fractured decision with a majority, concurrence, or dissent.
  • The Federal Circuit’s affirmance/reversal rate in cases from the district court, ITC, and the PTO.

The Year In Review provides statistical analyses of how the Federal Circuit has been deciding precedential patent cases, such as affirmance and reversal rates (overall, by issue, and by District Court), average time from lower tribunal decision to key milestones (oral argument, decision), win rate for patentee versus opponent (overall, by issue, and by District Court), decision rate by Judge (number of unanimous, majority, plurality, concurring, or dissenting opinions), and other helpful metrics. The Year In Review is an ideal resource for participants in intellectual property litigation seeking an objective report on the Court’s decisions.

Gibson Dunn is nationally recognized for its premier practices in both Intellectual Property and Appellate litigation. Our lawyers work seamlessly together on all aspects of patent litigation, including appeals to the Federal Circuit from both district courts and the agencies.

Please click here to view the FEDERAL CIRCUIT YEAR IN REVIEW


Gibson Dunn's lawyers are available to assist in addressing any questions you may have regarding developments at the Federal Circuit. Please contact the Gibson Dunn lawyer with whom you usually work or the authors of this alert:

Mark A. Perry - Washington, D.C. (+1 202-887-3667, mperry@gibsondunn.com) Omar F. Amin - Washington, D.C. (+1 202-887-3710, oamin@gibsondunn.com) Nathan R. Curtis - Dallas (+1 214-698-3423, ncurtis@gibsondunn.com)

Please also feel free to contact any of the following practice group co-chairs or any member of the firm's Appellate and Constitutional Law or Intellectual Property practice groups:

Appellate and Constitutional Law Group: Allyson N. Ho - Dallas (+1 214-698-3233, aho@gibsondunn.com) Mark A. Perry - Washington, D.C. (+1 202-887-3667, mperry@gibsondunn.com)

Intellectual Property Group: Wayne Barsky - Los Angeles (+1 310-552-8500, wbarsky@gibsondunn.com) Josh Krevitt - New York (+1 212-351-4000, jkrevitt@gibsondunn.com) Mark Reiter - Dallas (+1 214-698-3100, mreiter@gibsondunn.com)

© 2020 Gibson, Dunn & Crutcher LLP Attorney Advertising:  The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.

January 8, 2021 |
Update on Intellectual Property Issues in the Response to COVID-19

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This Alert reports on recent intellectual property law developments relating to the COVID-19 pandemic, and provides updates on various developments we covered in previous alerts. First, we briefly review the intellectual property-related provisions of the COVID-19 relief and government funding bill that the President signed into law at the end of December. Second, we discuss ongoing efforts around the world to facilitate the donation of intellectual property rights, including through the Open COVID Pledge, and a proposal pending before the World Trade Organization (“WTO”). Finally, we include updated figures regarding the frequency of patent litigation in 2020, and note manufacturer 3M’s success in using trademark law to combat price gouging of its personal protective equipment.

(1) New Intellectual Property Laws in the COVID-19 Relief and Government Funding Bill

The COVID-19 relief and government funding bill that became law on December 27, 2020 incorporates three sections focused on intellectual property-related measures: the Copyright Alternative in Small-Claims Enforcement Act (“CASE Act”), which amends certain provisions of the Copyright Act, 17 U.S.C. § 101 et seq; amendments to the Federal Criminal Code that make it a felony to engage in unauthorized streaming of copyrighted content (commonly referred to as the Protecting Lawful Streaming Act); and the Trademark Modernization Act, which includes revisions to the Lanham Act, 15 U.S.C. § 1051 et seq. We summarize these developments below; more detailed discussions can be found in Gibson Dunn’s prior alerts about the intellectual property Acts in the bill, available here and here.

The CASE Act (Consolidated Appropriations Act of 2021, Division Q, Title II, Subtitle A) establishes a new Copyright Claims Board (“Board”) within the United States Copyright Office to serve as an alternative forum to federal courts for parties to resolve small copyright infringement claims, with streamlined procedures, and limited remedies amounting to no more than $30,000 in total damages in a single proceeding for registered works, and $15,000 of the same for unregistered works.[1] Decisions of the Board will not be precedential, and the Act provides for limited appellate review. This new procedure has the potential to provide individual rights holders (such as composers and graphic artists), an alternative mechanism that should be more efficient and affordable than federal court litigation for resolving small claims. Whether copyright owners will use this alternative forum remains to be seen.

An additional measure, widely referred to as “The Protecting Lawful Streaming Act” (Consolidated Appropriations Act of 2021, Division Q, Title II, Subtitle A), adds a new Section 2319C to the federal criminal code that makes it a criminal offense for a person “to willfully, and for purposes of commercial advantage or private financial gain” digitally transmit material without authorization of the copyright owner, or the law. The provision will allow the Department of Justice to bring felony charges against digital transmission services that are “primarily designed” for the purpose of streaming copyrighted materials without authorization. The maximum penalty for violation is imprisonment for up to ten years.[2] Before this provision, criminal copyright infringement based on unauthorized streaming could be charged only as a misdemeanor.

The Trademark Modernization Act of 2020 (Consolidated Appropriations Act of 2021, Division Q, Title II, Subtitle B) revises various provisions of the Lanham Act, 15 U.S.C. §§ 1501 et seq., in response to a recent rise in fraudulent trademark applications. Specifically, the Act enhances trademark examination proceedings by formalizing the process third-parties may use to submit evidence to the USPTO, and by providing the Office with greater authority and flexibility to set deadlines for trademark applicants to respond to actions taken by examiners.[3] The Act also clarifies the standard for finding the irreparable harm necessary for injunctions in trademark cases, bringing uniformity in response to inconsistencies that have emerged across federal courts after the Supreme Court’s decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).[4]

(2) Ongoing Efforts to Facilitate the Donation of Intellectual Property Rights During the COVID-19 Pandemic

WTO Proposal to Suspend IP Rights Under the TRIPS Agreement. The TRIPS council met again on December 10, 2020, to discuss a proposal, originally submitted in October by South Africa and India, seeking the temporary waiver of various provisions in Section II of the TRIPS Agreement that grant Member countries intellectual property rights, and impose obligations to enforce them. The proposal, if passed, would effectively waive all copyright, trademark, industrial design, and patent rights provided under the TRIPS Agreement, insofar as such rights relate to the prevention, containment, or treatment of COVID-19; the effective waiver would apply until vaccination is widespread and “the majority of the world’s population has developed immunity” to the virus.[5] The TRIPS Agreement already includes provisions that require compulsory licensing of intellectual property rights during health emergencies to assist low-income countries that do not have the capacity to make pharmaceutical products. Proponents of the proposed waiver contend that these provisions are cumbersome and do not facilitate the necessary access to other personal protective equipment and vaccines.[6]

The TRIPS proposal has gained support from more than 99 countries, but major players, including the United States, the United Kingdom, Japan, Canada, and the European Union oppose it. The United Kingdom explained that its opposition to the proposal arises in part from a lack of “clear ways in which IP has acted as a barrier to accessing vaccines, treatments, or technologies” in the response to COVID-19.[7] The WTO has postponed further discussion of the proposal.

Open COVID Pledge. Organizations continue to sign onto the Open COVID Pledge, through which signatories grant a non-exclusive, royalty-free, worldwide license to use their patents and copyrights “for the sole purpose of ending” the COVID-19 pandemic. The pledge now includes patents related to wearable technology to perform contact tracing and proximity alerts, face covering and face shield designs, and computer software relating to diagnosing the virus. A Japanese-led Open COVID Pledge Coalition was founded last spring. That coalition, which includes several major Japanese companies, has also continued to grow, with voluntary pledges now having contributed approximately 1 million patents.

COVID-19 Technology Access Framework. The COVID-19 Technology Access Framework, which was established in April, creates a mechanism for universities to grant “non-exclusive royalty free licenses . . . for the purpose of making and distributing products to prevent, diagnose and treat COVID-19 infection during the pandemic and for a short period thereafter.” Since our prior reporting on the framework (see here), 21 more universities have now signed on.

Medicines Patent Pooling. As we previously reported, the UN-backed nonprofit Medicines Patent Pool (“MPP”) has been compiling patent information relating to products that are being used in clinical trials to treat COVID-19. The MPP also negotiates licenses with patent holders to facilitate widespread access to treatments. Twenty-one generic pharmaceutical manufacturers have now signed a pledge to work with the MPP to (among other things) negotiate licenses for patented COVID-19 therapeutics, and to accelerate development and delivery timelines for new treatments.

(3) Patent Litigation Sees Steady Increase While 3M’s Use of Trademark Law to Combat Price Gouging Proves Successful

Patent Lawsuits. Nearly 4,000 patent cases were filed in federal district courts in 2020, an increase of approximately 400 cases over 2019.[8] The Patent Trial and Appeal Board has seen a small increase in filings, with approximately 1500 petitions for inter partes, covered business method, and post-grant review, filed in 2020—an increase of approximately 200 proceedings over 2019.[9] District courts across the country continue to delay jury trials, and hold hearings remotely. The Federal Circuit’s May 18, 2020 order suspending in-person oral arguments indefinitely, and opting in favor of telephonic arguments (or no argument at all, if the Court so orders) remains in effect. In the Eastern District of Texas, Judge Gilstrap announced in November that all of his jury trials would be postponed until March 2021, with other judges ordering similar delays. Many courts, however, continue to hold the majority of proceedings online and have ordered jury trials to be continued. The Western District of Texas has postponed all jury trials until after January 31 while the Southern District of New York has postponed the same until after February 12.

3M Litigation. As reported in a previous update, in the summer of 2020, manufacturer 3M brought a wave of lawsuits across the country against online vendors, asserting claims under the Lanham Act for the sale of counterfeit PPE using 3M’s trademarks, and related state law claims, in an effort to combat both the counterfeit production of PPE, as well as price gouging of the same. In some of these cases, 3M established irreparable harm under a reputational theory of injury—namely, that “[n]o amount of money could repair the damage to 3M’s brand and reputation” if it were associated with “price-gouging at the expense of healthcare workers and other first responders in the midst of the COVID-19 crisis.”[10] In analyzing these trademark infringement claims based on the sale of counterfeit PPE at inflated prices, courts have also paid particular attention to the “bad faith” prong of the trademark infringement analysis, with one, for example, noting that the defendant’s decision to stop selling automobiles in favor of selling N95 masks constituted “textbook bad faith.”[11]

*          *          *

We are continuing to monitor intellectual property-related updates and trends relating to COVID-19.

____________________

   [1]   17 U.S.C. § 1504(e)(1)(A), (D).

   [2]   Id. § 2319C(c).

   [3]   15 U.S.C. § 1051(f).

   [4]   15 U.S.C. § 1116(a).

   [5]   WTO, Council for Trade-Related Aspects of Intellectual Property Rights, Waiver from Certain Provisions of the TRIPS Agreement for the Prevention, Containment and Treatment of COVID-19, p. 2, October 2, 2020, https://docs.wto.org/dol2fe/Pages/SS/directdoc.aspx?filename=q:/IP/C/W669.pdf&Open=True.

   [6]   See WTO, Members discuss intellectual property response to the COVID-19 pandemic, October 20, 2020, https://www.wto.org/english/news_e/news20_e/trip_20oct20_e.htm.

   [7]   See, e.g., UK Mission to the WTO, UN, and Other International Organizations (Geneva), “UK Statement to the TRIPS Council: Item 15 Waiver Proposal for COVID-19,” UK Government, October 16, 2020.

   [8]   These figures were obtained from Docket Navigator’s Omnibus Reporting of Patent Cases by year. A “patent case” here refers to actions “addressing the infringement, validity or enforceability of a U.S. patent flagged with Nature of Suit ("NOS") 830 in the PACER system as well as other cases that are known to meet the above criteria.” Docket Navigator, Scope of Data Available in Docket Navigator, https://search.docketnavigator.com/help/scope.html (last visited January 6, 2021).

[9]   Docket Navigator, Omnibus Report PTAB Petitions,  https://search.docketnavigator.com/patent/binder/390087/13 (last visited January 8, 2021). This does not include proceedings conducted pursuant to 35 U.S.C. § 6(b)(1)-(3), such as appeals of adverse decisions of examiners, appeals of reexaminations, or derivation proceedings.

[10]   3M Co. v. Performance Supply, LLC, 1:20-cv-02949, Dkt. No. 23 (S.D.N.Y. May 4, 2020).

[11]   Id.


Gibson Dunn lawyers regularly counsel clients on the issues raised by this pandemic, and we are working with many of our clients on their response to COVID-19.  For additional information, please contact any member of the firm’s Coronavirus (COVID-19) Response Team.  Please also feel free to contact the Gibson Dunn lawyer with whom you usually work, or the authors in New York:

Richard Mark (+1 212-351-3818, rmark@gibsondunn.com) Joe Evall (+1 212-351-3902, jevall@gibsondunn.com) Doran Satanove (+1 212-351-4098, dsatanove@gibsondunn.com) Wendy Cai (+1 212-351-6306, wcai@gibsondunn.com)

© 2021 Gibson, Dunn & Crutcher LLP Attorney Advertising:  The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.

December 28, 2020 |
COVID-19 Relief Bill Creates New Small Claims Copyright Board, Stronger Criminal Penalties for Illicit Streaming

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On December 27, 2020, President Trump signed the bipartisan COVID-19 relief and government funding bill, which incorporated the Copyright Alternative in Small-Claims Enforcement Act of 2020 (“CASE Act”) that had been pending as part of H.R. 133, as well as legislation designed to increase criminal penalties for illicit streaming of copyright-protected content. The CASE Act contains various revisions to the Copyright Act, 17 U.S.C. §§ 101 et seq., with the goal of creating a new avenue for copyright owners to enforce their rights without having to file a lawsuit in federal court. The CASE Act creates a Copyright Claims Board within the United States Copyright Office that may adjudicate small claims of copyright infringement using streamlined procedures and award limited remedies, including no more than $30,000 in total damages in any single proceeding. The stimulus package also includes the language of a separate bipartisan bill, the Protecting Lawful Streaming Act, that amends Title 18 of the U.S. Code to make it a felony (rather than just a misdemeanor) to unlawfully stream copyright-protected content online for profit, with penalties of up to 10 years of imprisonment. We briefly summarize these key copyright provisions below.

  • Creation of Copyright Claims Board. While federal courts generally exercise exclusive jurisdiction over claims of copyright infringement,[1] the CASE Act establishes a Copyright Claims Board as an alternative forum in which parties may voluntarily resolve small claims of copyright infringement arising under Section 106 of the Copyright Act.[2] The Board consists of three Copyright Claims Officers who may conduct individualized proceedings to resolve disputes before them, including by managing discovery and conducting hearings as necessary, and awarding monetary and other relief.[3] The Officers must issue written decisions setting forth their factual findings and legal conclusions.[4]  But parties that choose to proceed before the Board waive their right to formal motion practice and a jury trial.[5] Participation in a proceeding before the Board is voluntary, and parties may opt out upon being served with a claim, choosing instead to resolve their dispute in federal court.[6]
  • Board Decisions. The CASE Act grants the Register of Copyrights authority to issue regulations setting forth specific claim-resolution procedures, but the CASE Act expressly articulates choice-of-law principles and states that Board decisions are not precedential.
    • Choice of Law: Although the Board sits within the Copyright Office in Washington, D.C., the Board must follow the law in the federal jurisdiction in which the action could have been brought if filed in federal court.[7] Given the conflicts that could arise where an action could have been brought in multiple jurisdictions that are split on a legal question, the Act provides that the Board may apply the law of the jurisdiction the Board determines has the most significant ties to the parties and conduct at issue.[8]
    • Board Decisions Are Not Precedential: The CASE Act provides that Board decisions may not be cited or relied upon as legal precedent in any action before any tribunal, including the Board.[9] And Board decisions have preclusive effect solely with respect to the parties to the proceeding and the claims asserted and resolved in the proceeding.[10]
  • Board Remedies. As in federal court, parties before the Board may seek actual or statutory damages. But the CASE Act caps the amount of damages the Board may award. Specifically, the Board may not award more than $15,000 in statutory damages per work, may not consider whether infringement was willful (and, therefore, may not increase a per work statutory award based on willfulness, as is permitted in federal court), and may not award more than $30,000 in total actual or statutory damages in any single proceeding, notwithstanding the number of claims asserted.[11] While attorneys’ fees are recoverable under the Copyright Act,[12] the Board may not award attorneys’ fees except in the case of bad faith conduct—in which case, any fee award may not exceed $5,000, absent extraordinary circumstances, such as where a party has engaged in a pattern of bad faith conduct.[13]
  • Limited Appellate Review. The CASE Act permits parties to seek limited review of Board decisions. After the Board issues its written decision in a matter, a party may submit to the Board a written request for reconsideration.[14] If the Board declines to reconsider its decision, the party may ask the Register of Copyrights to review the Board’s decision under an abuse of discretion standard of review.[15] If the Register does not provide the requested relief, the party may then seek an order from a district court vacating, modifying, or correcting the Board’s determination under only very limited circumstances: if (a) the determination was the result of fraud, corruption, misrepresentation, or other misconduct; (b) the Board exceeded its authority or failed to render a final determination; or (c) the determination was based on a default or failure to prosecute due to excusable neglect.[16]
  • Bar on Repeat Frivolous Filings. In an attempt to deter copyright trolls from filing repeated, frivolous claims before the Board, the CASE Act provides that any party who pursues a claim or defense in bad faith more than once in a 12-month period may be barred from initiating a claim before the Board for 12 months.[17] The CASE Act also grants the Register of Copyrights authority to issue regulations limiting the number of proceedings a claimant may initiate in any given year.[18]
  • Implications of the CASE Act. The CASE Act authorizes the Register of Copyrights to issue implementing regulations setting forth specific procedures for proceedings before the Board, so it remains to be seen exactly how the Board will conduct proceedings before it. It also is an open question how and whether the Board will resolve constitutional questions that arise in copyright infringement actions, such as First Amendment questions relating to the fair use defense. Further, it remains to be seen whether defendants in small copyright disputes will consent to Board proceedings, or will opt out in favor of the federal courts. Regardless, the CASE Act creates mechanisms for the more efficient and economical pursuit of small claims of copyright infringement, where the expense of litigating in federal court would otherwise exceed any potential recovery.
  • Protecting Lawful Streaming Act. The separate criminal copyright provisions tucked into the stimulus bill are designed to address a loophole under current law that allows the reproduction and distribution of copyright-protected material to be charged as felonies, but only allows the live streaming (or “publicly performing”) of such works to be charged as a misdemeanor. According to the legislative history, the bill sponsors thought it was important to recognize that streaming, rather than copying, has become the primary way that audiences consume entertainment. This new statutory language will allow the U.S. Justice Department to bring felony charges not against individual users, but rather against a digital transmission service that: (1) is primarily designed or provided for the purpose of streaming copyrighted works without the authority of the copyright owner or the law; (2) has no commercially significant purpose or use other than to stream copyrighted works without the authority of the copyright owner or the law; or (3) is intentionally marketed or directed to promote its use in streaming copyrighted works without the authority of the copyright owner or the law.[19] The statutory language represents a compromise with some critics who had feared that broader criminal provisions could be used to limit free speech online.
______________________

[1]   28 U.S.C. § 1338(a) (“The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to … copyrights,” and “[n]o State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to … copyrights.”).

[2]   H.R. 133 § 1502(a); § 1504(c); see also 17 U.S.C. § 106 (“the owner of copyright under this title has the exclusive rights to … reproduce the copyrighted work”; “to prepare derivative works based upon the copyrighted work”; “to distribute copies or phonorecords of the copyrighted work to the public”; “to perform the copyrighted work publicly”; “to display the copyrighted work publicly”; and “to perform the copyrighted work publicly”).

[3]   H.R. 133 §§ 1502(b)(1)–(3), 1503(a)–(b), 1504(e)(2).

[4]   Id. § 1506(s)–(t).

[5]   Id. § 1506(c), (e)-(g), (m), (p).

[6]   Id. §§ 1504(a), 1506(g).

[7]   Id. § 1506(a)(2).

[8]   Id. § 1506(a)(2).

[9]   Id. § 1507(a)(3).

[10]   Id. § 1507(a).

[11]   Id. § 1504(e)(1)(A), (D).

[12]   17 U.S.C. § 505.

[13]   H.R. 133 §§ 1504(e)(3), 1506(y)(2).

[14]   Id. § 1506(w).

[15]   Id. § 1506(x).

[16]   Id. § 1508(c).

[17]   Id. § 1506(y)(3).

[18]   Id. § 1504(g).

[19]   18 U.S.C. § 2319C.


Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding these developments. Please feel free to contact the Gibson Dunn lawyer with whom you usually work in the firm's Intellectual Property, Media, Entertainment and Technology, or Fashion, Retail, and Consumer Products practice groups, or the following authors:

Howard S. Hogan – Washington, D.C. (+1 202-887-3640, hhogan@gibsondunn.com) Ilissa Samplin – Los Angeles (+1 213-229-7354, isamplin@gibsondunn.com) Jonathan N. Soleimani – Los Angeles (+1 213-229-7761, jsoleimani@gibsondunn.com) Shaun Mathur – Orange County (+1 949-451-3998, smathur@gibsondunn.com)

Please also feel free to contact the following practice leaders:

Intellectual Property Group: Wayne Barsky – Los Angeles (+1 310-552-8500, wbarsky@gibsondunn.com) Josh Krevitt – New York (+1 212-351-4000, jkrevitt@gibsondunn.com) Mark Reiter – Dallas (+1 214-698-3100, mreiter@gibsondunn.com)

Media, Entertainment and Technology Group: Scott A. Edelman – Los Angeles (+1 310-557-8061, sedelman@gibsondunn.com) Kevin Masuda – Los Angeles (+1 213-229-7872, kmasuda@gibsondunn.com) Orin Snyder – New York (+1 212-351-2400, osnyder@gibsondunn.com)

© 2020 Gibson, Dunn & Crutcher LLP Attorney Advertising:  The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.

December 22, 2020 |
New Law Creates Procedural Tools to Challenge Fraudulent Trademark Filings and Formalizes Presumption of Irreparable Injury for Trademark Violations

Click for PDF On December 22, 2020, Congress passed the content of a pending bill, H.R. 6196, the “Trademark Modernization Act of 2020,” as part of its year-end virus relief and spending package.[1] The Act includes various revisions to the Lanham Act, 15 U.S.C. §§ 1051 et seq., intended to respond to a recent rise in fraudulent trademark applications. Among other things, the Act seeks to create more efficient processes to challenge registrations that are not being used in commerce, including by establishing new ex parte proceedings. The Act also seeks to unify the standard for irreparable harm with respect to injunctions in trademark cases, in light of inconsistencies that have emerged across federal courts after the Supreme Court’s decision in eBay v. MercExchange, LLC, 547 U.S. 388 (2006). We briefly summarize these key features of the Act below.

  • Presumption of Irreparable Harm. Section 6 of the Act provides that a “plaintiff seeking an injunction shall be entitled to a rebuttable presumption of irreparable harm” upon a finding of a violation or a likelihood of success on the merits, depending on the type of injunction sought.[2] That language effectively reinstates the standard that most courts applied in trademark cases until the Supreme Court’s decision in the patent case, eBay v. MercExchange, LLC, 547 U.S. 388 (2006). Before eBay, courts generally treated proof of likelihood of confusion as sufficient to establish both a likelihood of success on the merits and irreparable harm. In eBay, however, the Supreme Court concluded that courts deciding whether an injunction should issue must consider only “traditional equitable principles,” which do not permit “broad classifications.” Id. at 393. In light of that decision, some courts determined that liability for trademark infringement no longer presumptively supported injunctive relief and that irreparable injury had to be shown independently.[3] This Act resolves the division among the courts following eBay and clarifies that a rebuttable presumption of irreparable harm applies for trademark violations.
  • New Ex Parte Processes. Section 5 of the Act creates two new ex parte cancellation proceedings, designed to address concerns that the trademark register is becoming overcrowded with marks that have not been used in commerce properly, as the Lanham Act requires.[4] The first creates a new Section 16A to the Lanham Act, that allows for ex parte expungement of a registration that has never been used before in commerce.[5] The second creates a new Section 16B to the Lanham Act that allows for ex parte reexamination of a registration where the mark was not in use in commerce at the time of either the first claimed use, or when the application was filed.[6] The Act further authorizes the Director to promulgate regulations regarding the conduct of these proceedings.[7]
  • Changes to the Examination Process. The Act establishes two notable updates to the trademark examination process: first, it formalizes the process by which third-parties can submit evidence to the United States Patent and Trademark Office concerning a given application; second, it provides the Office with greater authority and flexibility to set the deadlines by which trademark applicants must respond to actions taken by the examiner.
    • Third-Party Evidence: The Act effectively codifies the longstanding informal practice by which third parties submit evidence to the Office regarding the registrability of a mark during the examination process. Section 3 expressly permits the submission of this evidence and also establishes new formalities concerning the process to do so—including by requiring that the submitted evidence include a description identifying the ground of refusal to which it relates, and by providing the Office with the authority to charge a fee for the submission.[8] The Act also imposes a two-month deadline for the Office to act on a third-party submission,[9] which should incentivize third-parties to submit relevant evidence to the examiner before he or she makes any decision on an initial application.
    • Response Times: Section 4 of the Act amends the Lanham Act’s provision that imposes a six month deadline for an applicant to respond to an examiner’s actions during the application process.[10] Specifically, Section 4 grants the Office the authority to determine, by regulation, response periods for different categories of applications, so long as the period is between 60 days and six months.[11]

It remains to be seen how the Office will interpret the Act and what procedures it will promulgate. It is also an open question whether the new ex parte and examination procedures created by the Act will address Congress’ underlying concerns that the register has become overcrowded with fraudulent registrations obtained by foreign entities, especially from China.[12] But it is clear that the Act will open up new fronts for administrative proceedings to challenge registered trademarks, and create new weapons for those who believe they are or would be affected by a pending application or registration. At the same time, the restoration of a formal presumption of irreparable harm in trademark infringement cases will make it procedurally easier for trademark owners to enjoin uses of confusingly similar marks and avoid consumer confusion about the source of a good or service.

_______________________

[1] See Office of Congressman Hank Johnson, Congressman Johnson’s Bipartisan, Bicameral Trademark Modernization Act Becomes Law, available at https://hankjohnson.house.gov/media-center/press-releases/congressman-johnson-s-bipartisan-bicameral-trademark-modernization-act (Dec. 22, 2020).

[2] The Act also clarifies that this amendment “shall not be construed to mean that a plaintiff seeking an injunction was not entitled to a presumption of irreparable harm before the date of the enactment of this Act.” H.R. 6196 § 6(a).

[3] See, e.g., Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., Inc., 736 F.3d 1239, 1249 (9th Cir. 2013) (reading eBay as signaling “a shift away from the presumption of irreparable harm” and holding that a plaintiff must separately establish irreparable harm for a preliminary injunction to issue in a trademark infringement case); Salinger v. Colting, 607 F.3d 68, 78 n.7 (2d Cir. 2010) (suggesting that eBay’s “central lesson” that courts should not “presume that a party has met an element of the injunction standard” applies to all injunctions); see also Voice of the Arab World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d 26, 31 (1st Cir. 2011) (questioning whether, after eBay, irreparable harm can be presumed upon a finding of likelihood of success on the merits of an infringement claim).

[4] See H.R. 6196 § 5(a); House Report Section C.1 (explaining the intent behind the new proceedings).

[5] H.R. 6196 § 5(a).

[6] Id. § 5(c).

[7] Id. § 5(d) (providing that the Director “shall issue regulations to carry out” the new “sections 16A and 16B” “[n]ot later than one year after the date of the enactment of this Act.”).

[8] See H.R. 6196 § 3(a) (“A third party may submit for consideration for inclusion in the record of an application evidence relevant to a ground for refusal of registration. The third-party submission shall identify the ground for refusal and include a concise description of each piece of evidence submitted in support of each identified ground for refusal. Within two months after the date on which the submission is filed, the Director shall determine whether the evidence should be included in the record of the application. The Director shall establish by regulation appropriate procedures for the consideration of evidence submitted by a third party under this subsection and may prescribe a fee to accompany the submission.”).

[9] Id.

[10] See 15 U.S.C. § 1062(b).

[11] See H.R. 6196 § 4.

[12] See, e.g., Tim Lince, Fraudulent Specimens at the USPTO: Five Takeaways from Our Investigation – Share Your Experience, World Trademark Rev. (June 19, 2019), https://www.worldtrademarkreview.com/brand-management/fraudulent-specimens-uspto-five-takeaways-our-investigation-share-your (reporting on investigation of nearly 10,000 US trademark applications filed in May 2019 with many seemingly fraudulent specimens originating from China).


Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding these developments. Please feel free to contact the Gibson Dunn lawyer with whom you usually work in the firm's Intellectual Property, Fashion, Retail, and Consumer Products, or Media, Entertainment and Technology practice groups, or the following authors:

Howard S. Hogan – Washington, D.C. (+1 202-887-3640, hhogan@gibsondunn.com) Alexandra Perloff-Giles – New York (+1 212-351-6307, aperloff-giles@gibsondunn.com) Doran J. Satanove – New York (+1 212-351-4098, dsatanove@gibsondunn.com)

Please also feel free to contact the following practice leaders:

Intellectual Property Group: Wayne Barsky – Los Angeles (+1 310-552-8500, wbarsky@gibsondunn.com) Josh Krevitt – New York (+1 212-351-4000, jkrevitt@gibsondunn.com) Mark Reiter – Dallas (+1 214-698-3100, mreiter@gibsondunn.com)

Media, Entertainment and Technology Group: Scott A. Edelman – Los Angeles (+1 310-557-8061, sedelman@gibsondunn.com) Kevin Masuda – Los Angeles (+1 213-229-7872, kmasuda@gibsondunn.com) Orin Snyder – New York (+1 212-351-2400, osnyder@gibsondunn.com) © 2020 Gibson, Dunn & Crutcher LLP Attorney Advertising:  The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.

November 5, 2020 |
Gibson Dunn Named Among Top 50 Law Firms in Germany

German publication Kanzleimonitor 2020/2021 listed Gibson Dunn among the top 50 law firms in Germany recommended by in-house lawyers. In the categories of Stock Corporation and Corporate Governance Law, Munich partner Ferdinand Fromholzer was one of two most recommended lawyers, Munich of counsel Silke Beiter was frequently recommended, and the firm was ranked among the top 10 in Germany. Partners who are also frequently recommended were Frankfurt partners Dirk Oberbracht in Mergers & Acquisitions and Georg Weidenbach in the area of Antitrust Law. Gibson Dunn’s German offices were also recommended among the leading law firms for Compliance, Corporate Law, IP, and Mergers & Acquisitions. The study, based on approximately 5,610 recommendations by 603 in-house legal departments and set up by Deutsches Institut fuer Rechtsabteilungen & Unternehmensjuristen (diruj), was published on October 26, 2020.

October 16, 2020 |
Benchmark Litigation US 2021 Gives Top Marks to Gibson Dunn

Benchmark Litigation US recognized Gibson Dunn in eight national litigation practice areas in its 2021 edition and named 66 partners as Litigation Stars and Future Stars across the U.S.  Nationally, the firm received Tier 1 rankings in the Appellate, Competition/Antitrust, Commercial, Intellectual Property, Labor and Employment, Securities and White Collar Crime categories.  In addition, the firm received a Tier 2 ranking in Product Liability. The publication also named the firm as one of the “Top 20 Trial Firms” in the nation and named four partners to its annual “Top 100 Trial Lawyers in America” list:  New York partners Mitchell KarlanRandy Mastro and Orin Snyder, and Washington DC partner Richard Parker.  Seven partners were also named to its annual “Top 250 Women in Litigation” list: Los Angles partners Theane Evangelis, Perlette Michèle Jura and Deborah Stein, New York partners Mylan Denerstein and Andrea Neuman, Orange County partner Meryl Young and Washington, DC partner Elizabeth Papez. The main rankings were released October 1, 2020. The Top 100 Trial Lawyer rankings were released October 8, 2020. The Top 250 Women in Litigation rankings were released August 13, 2020.

October 6, 2020 |
Where Does Judge Barrett Fall on IP Issues?

Washington, D.C. partners Howard Hogan and Lucas Townsend and associate Max Schulman are the authors of "Where Does Judge Barrett Fall on IP Issues?" [PDF], published by Bloomberg Law on September 30, 2020.

September 30, 2020 |
LMG Life Sciences Awards 2020 Names a Gibson Dunn Win an Impact Case of the Year

LMG Life Sciences named the firm's win in Mayne Pharma v. Merck Sharpe & Dohme as a Patent Impact Case of the Year.  LMG Life Sciences announced the award at its annual awards presentation on September 23, 2020. Gibson Dunn’s Intellectual Property Practice Group offers strategic insights and solutions to companies facing complex intellectual property issues.  We have a deep bench of trial lawyers with technical backgrounds, advanced degrees and industry experience provides the necessary insight to develop and defend against sophisticated claims in a wide range of industries and complex technologies.  Our litigators are recognized throughout the industry as leaders in prosecuting, defending and trying IP claims in federal and state courts, before administrative bodies including the U.S. International Trade Commission and U.S. Patent and Trademark Office (USPTO), as well as before arbitration panels.

August 20, 2020 |
13 Gibson Dunn Partners Named Lawyers of the Year

Best Lawyers® named 13 Gibson Dunn partners as the 2021 Lawyer of the Year in their respective practice areas and cities: Frederick Brown – San Francisco – Trademark Law Lawyer of the Year, Jessica Brown – Denver – Employment Law – Management Lawyer of the Year, Christopher Dillon – San Jose – Corporate Law Lawyer of the Year, Baruch Fellner – Washington, D.C. – Litigation – Labor and Employment Lawyer of the Year, Stewart McDowell – San Francisco – Banking and Finance Law Lawyer of the Year, Peter Modlin – San Francisco – Litigation – Environmental Lawyer of the Year, Kenneth Parker – Orange County – Litigation – Patent Lawyer of the Year, Doug Rayburn – Dallas – Securities/Capital Markets Law Lawyer of the Year, Douglas Smith – San Francisco – Corporate Governance Law Lawyer of the Year, Beau Stark – Denver – Mergers and Acquisitions Law Lawyer of the Year, Daniel Swanson – Los Angeles – Antitrust Law Lawyer of the Year, Jeffrey Thomas – Orange County – Litigation – Antitrust Lawyer of the Year and Robyn Zolman – Denver – Securities/Capital Markets Law Lawyer of the Year. The lawyers that were selected received particularly high ratings in Best Lawyers’ survey by earning a high level of respect among their peers for their abilities, professionalism and integrity. Only one lawyer in each legal community is selected as the Lawyer of the Year for each practice area.  The list was published in August 20, 2020.

June 30, 2020 |
Supreme Court Holds That Adding “.com” To A Generic Term Can Create A Protectable Trademark

Click for PDF Decided June 30, 2020 U.S. Patent and Trademark Office v. Booking.com B.V., No. 19-46

Today, the Supreme Court held 8-1 that under the Lanham Act, the combination of an otherwise generic term and a top-level Internet domain (such as “.com”) can create a protectable mark if consumers recognize the mark as a brand name. 

Background: Under the Lanham Act, 15 U.S.C. § 1051 et seq., generic terms may not be registered as trademarks, but terms that are “merely descriptive” of goods or services may be registered if the public has come to understand them as identifying the trademark owner’s goods or services. Booking.com, a hotel reservation website, applied to register the mark BOOKING.COM. The U.S. Patent and Trademark Office (PTO) determined that “booking” is the generic term for hotel reservation services and denied registration. Booking.com sought judicial review, and the district court overturned the denial. The court held that the mark was protectable because combining the generic term “booking” with the top-level domain name “.com” resulted in a descriptive term, and survey evidence showed that most consumers recognize BOOKING.COM as a brand name, not merely a product category. A divided Fourth Circuit panel affirmed.

Issue: Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark under the Lanham Act.

Court's Holding: Yes. The addition of “.com” to an otherwise generic term can create a protectable trademark where the evidence shows that consumers understand the combined term as identifying or distinguishing a particular supplier’s goods or services.

“Whether any given ‘generic.com’ term is generic . . . depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.

Justice Ginsburg, writing for the Court

Gibson Dunn submitted an amicus brief on behalf of Salesforce.com, Inc. et al. in support of respondent: Booking.com B.V.

What It Means:
  • The Court grounded its decision in the “principle that consumer perception demarcates a term’s meaning.” Slip op. at 7 n.3. That principle applies even to marks that combine generic elements. The Court thus adopted an evidence-based approach consistent with the position advocated in Gibson Dunn’s amicus brief in this case.
  • The Court rejected the PTO’s reliance on Goodyear’s India Rubber Glove v. Goodyear Rubber Co., 128 U.S. 598 (1888), a pre-Lanham Act case in which the Supreme Court held that combining a generic term with a corporate designation such as “Company” or “Inc.” cannot create a protectable common-law trademark. Rather than interpret Goodyear as a bright-line rule, the Court said, “whether a term is generic depends on its meaning to consumers,” thereby relegating Goodyear to stand for the “more modest” principle that “[a] compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.” Slip op. at 10.
  • The Court also rejected the PTO’s argument that Booking.com’s position would grant it a monopoly on the use of the term “booking.” The Court reasoned that trademark law doctrines such as fair use will provide adequate protection against any potential anti-competitive effects of the ruling, and mark holders still must show a likelihood of consumer confusion to prevail on any trademark infringement claims against competitors.
  • The Court’s decision eschews a bright-line rule that all “.com” marks are protectable, and makes clear that courts and the PTO must consider all relevant evidence in determining how consumers understand a particular term, including consumer surveys, dictionaries, and usage by consumers and competitors. The decision thus continues the Court’s recent trend against establishing bright-line rules in trademark law, as noted in our May 14, 2020 alert on the Court’s decision in Lucky Brand Dungarees v. Marcel Fashions Group, Inc.

The Court's opinion is available here.

Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding developments at the Supreme Court.  Please feel free to contact the following practice leaders:

Appellate and Constitutional Law Practice

Allyson N. Ho +1 214.698.3233 aho@gibsondunn.com Mark A. Perry +1 202.887.3667 mperry@gibsondunn.com Thomas G. Hungar +1 202.887.3784 thungar@gibsondunn.com

Related Practice: Intellectual Property

Howard S. Hogan +1 202.887.3640 hhogan@gibsondunn.com

June 26, 2020 |
Update on Intellectual Property-Related Issues in the Response to COVID-19

Click for PDF This Alert reports on recent intellectual property law developments relating to the COVID-19 pandemic.  First, we describe the United States Patent and Trademark Office’s new initiatives to expedite review of initial trademark applications for COVID-19-related trademarks, and to extend additional relief from certain deadlines under the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”).  Second, we provide updates on the Open COVID Pledge (a project facilitating the donation of patent rights during the pandemic), and a lawsuit arising from the COVID-prompted creation of a “National Emergency Library.” (1) The United States Patent and Trademark Office (“USPTO”) Prioritizes COVID-19-Related Trademarks and Extends Deadlines Under the CARES Act Expedited Trademark Application Process:  On June 12, 2020, the USPTO announced a new examination procedure that aims to prioritize and expedite review of certain COVID-19-related trademark and service mark applications.  The USPTO ordinarily evaluates trademark applications in the order in which they were received, although applicants can request that the initial examination of their application be advanced out of turn when special circumstances exist.  In view of the need for medical products and services to combat the pandemic, the USPTO Director is leveraging this procedure to accept petitions to advance the initial examination of marks specifically used to identify medical products and services intended to help prevent, diagnose, treat, or cure COVID-19.  Having found that the COVID-19 pandemic presents an “extraordinary situation,” the USPTO director has also agreed to waive application fees for these petitions. Medical products and services that qualify for prioritized examination include “diagnostic tests, ventilators, and personal protective equipment,” that prevent, diagnose, treat, or cure COVID-19, and that are subject to FDA approval, and “medical services or research services” in support of the prevention, diagnosis, treatment of, or cure for COVID-19.  If a petition for prioritized examination is granted, the application will be immediately assigned for attorney review, which is intended to expedite examination by approximately two months. Further CARES Act Deadline Relief:  The USPTO has also expanded the type of relief available under the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), which granted the USPTO temporary authority to extend statutory deadlines.  The USPTO previously exercised that authority to extend deadlines regarding prosecution and maintenance fees.  Under the USPTO’s latest June 11 notice, certain non-provisional applications can now claim priority to applications filed more than 12 months earlier.  Specifically, non-provisional applications that are filed before July 31, 2020, can claim priority to those applications for which (i) the original priority period expired between March 27, 2020 and July 30, 2020, (ii) the delay in filing “was due to the COVID-19 outbreak” (as defined in the USPTO’s April 28, 2020 notice), and (iii) the applicant meets other formal filing requirements.  The extension applies to U.S. applications only. (2) Growth of The Open COVID Pledge The urgency of the COVID-19 crisis has prompted initiatives like the Open COVID Pledge, which is intended to help businesses make use of technology needed to provide supplies and treatments to combat the pandemic, without running the risk of becoming defendants in patent infringement litigation.  Signatories to the pledge grant a non-exclusive, royalty-free, worldwide license to use their patents and copyrights “for the sole purpose of ending” the COVID-19 pandemic (prior reporting available here). Since it was launched in April, the pledge has garnered support of some of the world’s largest patent owners, collectively holding hundreds of thousands of patents.  That pledged intellectual property now covers a range of applications in health care, diagnostics, and emergency response, such as 3D-printed respirators, methods for designing grocery stores to ensure social distancing, and software for accelerating COVID-19 diagnoses.  Recently, the Open COVID pledge website added a feature providing examples of how pledged technology can be used, reportedly in an effort to boost the project’s ability to spur follow-on innovation, in light of studies finding that pledge efforts that simply publish lists of patents do not boost such innovation. (3) Internet Archive Ends National Emergency Library Project As reported in our last update, four large publishing companies sued Internet Archive in early June 1 for copyright infringement, arising out of Internet Archive’s “National Emergency Library,” implemented during the pandemic.  Internet Archive described the new library as “a temporary collection of books that supports emergency remote teaching, research activities, independent scholarship, and intellectual stimulation while universities, schools, training centers, and libraries are closed.”  The project was intended to run until the end of June, but Internet Archive ended the project on Tuesday, June 23, due to the pending lawsuit. _____________________ Gibson Dunn lawyers regularly counsel clients on the issues raised by this pandemic, and we are working with many of our clients on their response to COVID-19.  For additional information, please contact any member of the firm’s Coronavirus (COVID-19) Response Team.  Please also feel free to contact the Gibson Dunn lawyer with whom you usually work, or the authors: AUTHORS:  Richard Mark (rmark@gibsondunn.com), Joe Evall (jevall@gibsondunn.com), Doran Satanove (dsatanove@gibsondunn.com), and Amanda First (afirst@gibsondunn.com) © 2020 Gibson, Dunn & Crutcher LLP Attorney Advertising:  The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.