Highlights of the 2013–14 Association Year

Vol. 6 No. 6

ABA-IPL Chair Robert O. Lindefjeld led Section Council, Divisions, Committees, Boards, and Action Groups during a very active 2013-14 Association year. The Section contributed to the professional community and the community at large through organizational activities directed toward improving the administration of intellectual property laws and policy-making.

ADVOCACY

ABA-IPL Divisions and Committees keep watch on emerging IP developments and the Section advocates in all three branches of government on issues throughout the broad spectrum of IP law, in comments based on established ABA or Section policy. Comments based on Section policy alone must not be inconsistent with policy of the Association. This year saw comments to many governmental entities, which comments were developed in cooperation with many groups within the American Bar Association.

  • On the recommendation of the Section, Thomas W. Susman, Director of the ABA Governmental Affairs Office, wrote to Robert W. Goodlatte, Chair of the House Committee on the Judiciary, and John Conyers, Jr., Ranking Member, House Committee on the Judiciary, to express the views of the American Bar Association on H.R. 3309, the Innovation Act. The letter urged the Committee to continue reviewing and refining the bill, “with a particular emphasis on providing guidance to the Judicial Conference and district courts in their development and improvement of rules of procedure and case management to address the concerns regarding abusive litigation practices that prompted the legislation. It stated that “the ABA understands that these proposed changes are designed to address practices by litigants that have come to be identified as ‘patent assertion entities’ and that the ABA “agrees that changes in court procedures relating to pleadings, disclosure of real parties in interest, joinder of parties, and discovery can improve the administration of justice in our nation’s federal courts, including in patent cases.” However, the letter opposed the enactment of H.R. 3309 as introduced and urged the Committee “to continue further development and revision of the bill to achieve its worthy objectives.” The primary concerns of the ABA regarded provisions in the bill that “call for Congress, rather than the courts, to establish certain rules of procedure for the federal courts.” The ABA’s position is that a more effective approach is to continue to rely on the “time-proven policy of allowing the federal judicial system to prescribe procedural rules, augmented by the local rules of the district courts.”
  • The Section responded to a request for comments from the U.S. Patent and Trademark Office (USPTO) on proposed rules regarding “Making ‘Real Party-in-Interest’ the New Default” as directed to the USPTO by the White House in its report entitled “Patent Assertion and Innovation.” The Section acknowledged that the Executive Branch can play a role in “reducing incentives for systematic abusers of patents,” such as those associated with patent assertion entities but stated that it did not support a blanket rule that will burden all patent owners. It called to attention its “concern that a blanket, detailed disclosure requirement will create a heavy burden on innocent patent owners and the USPTO.” The letter outlined two areas that illustrate this: 1) the fact that there are legitimate non-practicing entities and that “high-risk private capital investment in new technology should continue to be encouraged,” and emphasizing the even more important 2) “obligation to identify interrelationships among owners of equity in various organizations would be substantial for all patent owners;” that relationships between related companies and subsidiaries may change without the awareness of those managing the patent portfolio. If a blanket rule would be implemented, the Section urged that the USPTO minimize the burdens to be imposed.
  • At the recommendation of the Section, Thomas Susman, Director of the ABA Governmental Affairs Office, wrote to U.S. Senate Judiciary Committee Chairman Patrick Leahy, and Charles E. Grassley, Ranking Member of the Committee, with the views of the ABA and the ABA-IPL Section regarding S. 1720, the “Patent Transparency and Improvements Act of 2013,” and related bills pending before the Judiciary Committee. A number of bills have been introduced in the 113th Congress that are designed to curb abusive litigation practices associated with “patent trolls” or “patent assertion entities” (PAEs), entities so named because they acquire and hold patents not for commercial exploitation, but primarily, if not solely, to sue for monetary relief or extortionist settlements. Senate bills included S. 1720 (Leahy), S. 1013 (Cornyn), S. 1612 (Hatch), and S. 866 (Schumer), all of which were referred to the Judiciary Committee. H.R. 3309 (Goodlatte), a bill that addresses many of the same issues as the Senate bills, passed the House on December 5, 2013, and was sent to the Senate and referred to the Judiciary Committee. These comments addressed several issues raised by bills pending before the Senate Judiciary Committee, including the House-passed bill, H.R. 3309. The Susman letter expressed views on issues raised by the bills that are covered by ABA policy, and referenced an attached letter from Section Chair Robert Lindefjeld that expressed views of the Section on issues on which the ABA has not adopted policy. The ABA letter addressed significant issues that were raised by the pending bills before the House and the Senate relating to the “proper allocation of authority and responsibility for rulemaking for the conduct of litigation in the U.S. federal courts.” The letter from the ABA-IPL Section provided comments and recommendations of the Section alone on a number of issues raised by the bills.
  • The ABA-IPL Section wrote to the Secretariat of the European Patent Office to comment on proposed rules of procedure of the Unified Patent Court. The Section noted its recognition and appreciation for the efforts being made to establish operations of the Unified Patent Court in Europe and that it supported in principle the establishment of these rules. The letter outlined areas that remain of concern to the Section, those 1) relating to opt out provisions, and 2) involving “bifurcation of infringement and revocation actions, the need for further consideration of the timeframes during which actions can be filed, consultation among local/regional division and the central division, and the timing of stays.”
  • The Section wrote to the USPTO regarding Prior Art Resources for Use in the Examination of Software-Related Patent Applications. The letter applauded the outreach by the USPTO regarding efforts for software-related inventions and 1) provided an overview and pros and cons regarding “various prior art resources that may be available to the Office as part of further enhancing the quality and efficiency of the examination process,” and 2) included a brief discussion of “concerns related to formulation of searches for software-related patent applications.”
  • The Section addressed a letter to the European Commission in Brussels regarding proposed regulatory changes within the European Union aimed at harmonizing trademark laws with the EU and its Member States. The Section noted that the amendments are a welcome step toward the “modernization of trademark laws in the EU, and that the Commission’s proposals “lead the way to further harmonization and a better practicality of the CTM system as well as the trademark laws in the Member States, thereby allowing trademark owners to make a more time – and cost-efficient use of the systems and to defend their trademark rights more effectively.” The Section letter provided comments concerning the proposed regulatory changes, which are directed to “selected issues of the proposals which are of key interest for trademark owners and their advisors” and were divided into procedural law, substantive law, and anti-counterfeiting issues.
  • The ABA-IPL Section sent comments to the USPTO Strategic Plan Coordinator on the Draft USPTO 2014–2018 Strategic Plan. The Section noted its support for USPTO efforts to reduce the application backlog by 18%, first-action pendency by 7.4 months, and average total pendency by 5.2 months. The comments expressed the Section’s agreement with the five goals of the strategic plan, but noted that it believed that the goals should include more emphasis on stakeholder participation and cooperation with the customers who are actively participating in the system and whose fees are supporting the USPTO. The comments conveyed the Section support of the USPTO’s goal for full access to all fee collections. The comments noted the Section’s support for ratification of an international harmonization treaty memorializing an international-type grace period; also that the Plan did not specifically mention encouraging the international adoption of a grace period. In the letter, the Section emphasized its strong encouragement for USPTO initiatives to deliver IP information and education worldwide, and the Section offered its membership and resources to help with this endeavor.
  • A letter from the Section was sent to the Commissioner of Trademarks in response to the USPTO request for comments on Post Registration Amendments to Identifications of Goods and Services Due to Technology Evolution. The letter provided the results of the survey of its members that the Section conducted. Comments generally encouraged the allowance of both pre- and post-registration amendments to the identification of goods and services, when such amendments simply relate to the medium by which the public receives the good or service as necessitated by evolving technology, and the essential nature of the good or service has not changed and the identification is not otherwise expanded.
  • The Section addressed a letter to the Commissioner for Trademarks at the USPTO to provide comments on Proposed Rule Amending the Trademark Rules of Practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Section generally favored the proposed rule changes and offered additional comments regarding other rule changes that might be considered.
  • ABA-IPL wrote to the Commissioner for Trademarks to provide comments on Proposed Changes in Requirements for Collective Trademarks and Service Marks, Collective Membership Marks, and Certification Marks.

AMICUS BRIEFS

As important intellectual property-related issues emerge in court cases, particularly in cases in the U.S. Supreme Court or the U.S. Court of Appeals for the Federal Circuit, the Section develops and recommends policy positions that the ABA House of Delegates adopts as ABA policy. Policy established in this manner may then form the basis for an amicus brief that the Section asks the ABA to file in the United States Supreme Court or the United States Court of Appeals for the Federal Circuit. Because the Supreme Court has been active this past year in reviewing intellectual property related cases, the Section has been active in filing amicus briefs in several important cases before the Court.

  • The American Bar Association filed an amicus brief in the United States Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., which concerns the Federal Circuit’s interpretation of the standard for indefiniteness of a patent claim under section 112 of the patent statute. The ABA’s brief, which was filed in support of neither party, argued that the amenability of an issued patent claim to more than one reasonable construction does not itself render that claim indefinite if a court, by applying established principles of claim construction, can reasonably choose one of those possible constructions to resolve any real and concrete dispute between the parties.
  • The ABA filed an amicus brief in Limelight Networks, Inc. v. Akamai Technologies, Inc., et. al. The Supreme Court granted certiorari only on the issue of induced infringement under 35 U.S.C. §271(b). The ABA’s amicus brief pointed out that in its decision, the Federal Circuit established a new rule allowing induced infringement under §271(b) to be found even when no party has committed direct infringement under §271(a), and urged reversal of this ruling. The ABA brief urged the Supreme Court to also address the issue of joint or divided infringement under §271(a), and proposed standards for finding direct infringement under §271(a) in such circumstances.
  • The ABA Amicus Committee approved a recommendation of the Section that an ABA brief be filed in Teva Pharm. USA, Inc. v. Sandoz, Inc. The Section will take the lead in drafting the brief, which will be in support of neither party, and will address the standard for review of district court determinations of patent claim construction. In the brief, the ABA will urge that, while the Federal Circuit should review de novo the ultimate issue of claim construction, a review under the clearly erroneous standard of the trial court’s underlying findings of fact would better account for the often fact-intensive complexities inherent in these cases.

PARTICIPATION IN INTERNATIONAL MATTERS

Working with its international patent, trademark, and copyright committees, international liaison representatives, and fellow ABA Sections, the ABA-IPL Section significantly increased its activity this year in international matters and those regarding the global reach of IP law.

  • Section Chair Robert Lindefjeld attended the Brazilian IP Association (ABPI) 2013 Congress in August 2013 in Rio de Janeiro and met with the director of the Brazilian IP Office.
  • Chair Lindefjeld wrote to the World Intellectual Property Organization (WIPO) in Geneva to express congratulations on the successful negotiation of the Marrakesh Treaty and expressing appreciation for the invitation to Ralph Oman as the Section’s representative. He expressed the Section’s offer to work with WIPO to help build consensus for action of issues ripe for international resolution.
  • Phil Swain represented the Section at the Global IP Summit in Helsinki, Finland. The Summit was held by the Global Network of National IP Practitioner Associations, a group of IP associations of a number of nations around the globe. Its goals are communication among the member organizations, education of laws and practice in all countries of the world, collaboration on opinions and information related to IP law, and cooperation to gather and disseminate information to member institutes and others and to communicate with international IP associations.
  • Elizabeth Chien-Hale represented the Section at the Asian Pacific Attorneys Association (APAA) 62nd Council Meeting in Hanoi, Vietnam where she delivered a message from the ABA-IPL Section Chair.
  • The Section’s Antitrust and IP Law Interface Committee hosted a brown bag on FRAND in Asia, co-sponsored by the Antitrust Law Section IP Committee and International Law Section Antitrust Committee.
  • Christopher Bullard represented the Section at a visit by a delegation representing the Republic of Korea’s Ministry of Justice to the ABA’s Washington, D.C. office.
  • Ji Yung Kim attended the TM5 annual meeting in Seoul, Korea on behalf of the Section.
  • In February, at the ABA Midyear Meeting, the Section sought and received ABA Board of Governors approval for the Section’s proposed cooperating agreement with Fédération Internationale Des Conseils En Propriété Intellectuelle (FICPI).
  • Fred Koenig represented the Section at the SIPO/US Bar Liaison Council Meeting on May 7-8 in Beijing where attendees met with the new director of the State IP Office (SIPO) of China, the Chinese equivalent of the USPTO.
  • Section Vice-Chair Ted Davis travelled to the INTA Annual Meeting in Hong Kong.

ADDITIONAL ACTIVITIES

  • In October, the ABA, through its Section of Intellectual Property Law, became a founding member of the America Invents Act (AIA) Pro Bono Advisory Council. Section 32 of the Act provides for the USPTO Director to “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.” Section Chair Robert Lindefjeld and Chair-Elect Lisa Dunner represented the ABA in signing the charter formally establishing the Council. Pro Bono Committee Chair Amy Salmela serves as the ABA appointed representative to the new Advisory Council. President Obama signed the AIA into law on September 16, 2011. The AIA Pro Bono Advisory Council will provide support and guidance to existing IP pro bono programs throughout the country, and the Section is committed to increased activity and cooperation.
  • The Section participated in the biennial Antitrust and Intellectual Property Conference at Stanford Law School in conjunction with the Section of Antitrust Law. The conference explored issues and risks related to patent aggregation, standard essential patents, and other issues relating to enforcement of intellectual property rights.
  • At the invitation of the USPTO, Patent System Policy Planning Committee Vice Chair Kevin Greenleaf attended a glossary discussion roundtable at the Software Partnership Meeting at U.C. Berkeley School of Law on the potential use of glossaries to aid patent prosecution. At the roundtable, Mr. Greenleaf provided the Section’s basic position on the use of glossaries, as well as proposals to improve the record to clarify claim terms using existing techniques.
  • Members of the Section’s Trademark Inter Partes Committee represented the ABA Intellectual Property Law Section at a roundtable discussion with the Trademark Trial and Appeal Board (TTAB) on reducing “end to end” processing times in both ex parte appeals and contested proceedings before the Board. Chief Judge Gerard F. Rogers, Judge T. Jeffrey Quinn, and Judge Peter W. Cataldo met with stakeholders from the trademark bar as “Part I” in an on-going discussion regarding possible modes of shortening.
  • Jonathan Hudis and Erik Pelton represented the Section at the Trademark and Trial Appeals Board (TTAB) for a discussion of the TTAB Strategic Plan.
  • The Section cosponsored in LEI Conference in January in Colorado, sponsored by the Colorado Bar Association, and also cosponsored the Rocky Mountain IP Institute in May.
  • The Copyright Office Affairs Committee held its annual February meeting with the U.S. Copyright Office’s senior staff. The Copyright Office staff participating included Karyn Temple Claggett, Associate Register of Copyrights and Director of the Office of Policy & International Affairs, Jacqueline Charlesworth, General Counsel and Associate Register, Maria Strong, Senior Counsel for Policy & International Affairs, Robert Kasunic, Director of Registration, and Christopher Reed, Acting Chief, Information and Records Division. Lisa Dunner and Erik Pelton represented the ABA-IPL Section at a U.S. Patent and Trademark Office public roundtable to discuss trademark “Post-Registration Amendments to Identifications of Goods and Services due to Technological Evolution.” Also present were representatives from the International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), and Intellectual Property Owners Association (IPO).
  • The Section joined with the U.S. Patent and Trademark Office and other IP organizations in sponsoring the annual USPTO Design Day with its theme of “Design of Things to Come.”
  • Christopher Bullard represented the Section at a USPTO forum on the impact of the Supreme Court decisions in Myriad and Mayo and the development of guidelines for implementation of those decisions.

SERVING ABA-IPL MEMBERS

In addition to advocacy and policy work, the volunteers and staff of the ABA Section of Intellectual Property Law serve a diverse community of over 24,000 members, providing vital programs, publications, and public outreach initiatives. Some highlights this year:

  • To further the Section’s commitment to the ABA Goal III for increasing diversity in the profession, the Diversity Action Group (DAG) has hosted several diversity-focused networking receptions at the ABA-IPL Spring Conference and the ABA Annual Meeting and focused on developing pipeline programs to promote IP careers to diverse high school, college, and law students
  • The Section’s Liaison to the ABA Commission on Disability Rights worked with the Commission to develop and obtain Section cosponsorship of a resolution to the ABA House of Delegates supporting ratification by the U.S. and other nations of the Marrakesh Treaty, which focuses on facilitating access to published works to those who are blind, visually impaired, or otherwise print disabled.
  • Over the past year, DAG has continued to work with the ABA Center for Racial and Ethnic Diversity in support of the Center’s efforts to develop an ABA-wide database of diverse speakers.
  • ABA-IPL continues to participate as a founding partner of the American Intellectual Property Law Educational Foundation (AIPLEF). AIPLEF awards the Sydney B. Williams scholarship to assist underrepresented minority law students entering intellectual property law. AIPLEF’s Jan Jancin Award is presented annually to an outstanding IP law student. In 2013, AIPLEF awarded 17 law students with the Sidney B. Williams, Jr. Intellectual Property Law Scholarship, the highest number of recipients since the inception of this program in 2001. This prestigious honor includes a $10,000 award. Beginning this past year, AIPLEF scholarship winners also participate in a mentorship program, in which they are paired with mentors from the Fitzpatrick Cella firm.
  • The Section continued co-sponsorship with the Section of Litigation in the annual Judicial Intern Opportunity Program (JIOP) that provides students who are members of racial and ethnic groups that are traditionally underrepresented in the profession with full-time, six-week summer internships with state or federal judges. In 2013, JIOP placed 179 first – and second-year law students with 150 judges across the country. Over 100 applicants expressed particular interest in intellectual property law, and 20 were selected and placed in IP-focused internships.
  • In 2013-14, the ninth year of the ABA-IPL Young Lawyer Fellows Program saw more than a 50% increase in applications. Ida Gladys Wahlquist-Ortiz, Thompson & Knight LLP, Dallas, Texas and Jameson Quinn-Houng Ma, Bookoff McAndrews PLLC, Washington, DC are the new young lawyers who have been awarded three-year terms with funding and opportunities to develop into future leaders of the Section.
  • ABA-IPL Law Student Action Group (LSAG) selected 13 law students from across the country for the Law Student Reporter Program. These students reported on events in real time via Twitter, blogs, and LSAG Tumblr. Hashtag #IPLSpring reached over 247,000 individual handles on Twitter.
  • The Section is publishing its A Section White Paper: A Call for Action on Online Piracy. This important book is the product of the Section’s Online Piracy Task Force, led by Christina Frangiosa and Chris Katopis.
  • The Section’s publishing enterprise is at the center of our work, visibility, and value. This year’s Publishing Summit in November recognized our expanding books enterprise, soon to reach 50 titles in the portfolio. Landslide® magazine, the Section’s flagship periodical, is concluding its sixth successful year of publication.
  • In the spring, the Section’s 29th Annual Intellectual Property Law Conference drew near-record attendance—highlighted by a wide range of comprehensive CLE programs as well as events and opportunities to network with experts, colleagues, and potential clients from around the world.

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