The Future is in Our Hands; No Room in the U.S. for Second Best

By Renee C. Quinn
December 6, 2018

In November, John Marshall Law School held the 62nd Annual Intellectual Property Conference of the 

Judge Pauline Newman of the United States Court of Appeals for the Federal Circuit

In November, John Marshall Law School held the 62nd Annual Intellectual Property Conference of the John Marshall Law School in Chicago, IL.  This year, the conference covered developments in patent, trade secrets, antitrust, trademarks, copyrights, IP management and in-house counsel practice, entertainment, and information technology and privacy law.  And IPWatchdog’s Gene Quinn was there.

The program kicked off with the Honorable Judge Pauline Newman of the U.S. Court of Appeals for the Federal Circuit.  In her keynote, titled The Future is in Our Hands, Judge Newman spoke about the need for understanding the relationship between patent law and economic progress. She noted that patent law “is a law of practical economics.” The question is not whether patented products are overpriced, as is often told to the courts. Rather, The real question is whether these products would exist at all, whether the research, development, and investment would have been undertaken, without a system of patents or something like it, something to balance the risks. In reviewing the history of the Court of Appeals for the Federal Circuit, the America Invents Acts, and the Bayh-Doh Act, she challenged attendees to consider whether larger changes are needed to patent law such as in carving out special laws for software and diagnostics. As she put it:

Law lives in the past, […] that’s its strength, but science and the new technologies are the future. A reliable and predictable patent law is more necessary than ever, for technology is a much larger part of our industrial product than ever. The recent Supreme Court attention to patent cases reflects their importance to the nation. The balances are not simple, the fresh balances among creativity, business risk, competition, trade, the creation of new knowledge, the production of industrial capital, and fairness, justice. There is no room in the United States for second best. You and we, lawyers and judges, share this responsibility.

We asked a group of individuals to share with us what they felt was a key message that they took from the conference this year.  Following are comments from several attendees of the conference.

 

Hon. (ret.) Arthur Gajarsa
Senior Counsel, Wilmer Cutler Pickering Hale and Dorr LLP

The John Marshall Law School IP Conference attracted numerous leaders of the IP community that are focused on solving the various legal issues facing us today.

With regard to the Conference, I must point out that I agree wholeheartedly with Judge Newman, that patents are essential to the development of our technology and a strong patent system is what has made the quantum leap in the US economy a reality. This will continue provided we do not limit the legal parameters of our IP world. As is well established by economists, a strong economy in developed and developing countries is fostered by a recognition that a legal system that protects innovation creates an environment allowing more cutting edge products to be marketed in medicine, artificial intelligence, medical devices, computers and other disciplines.

As we discussed at the conference, I am concerned that the law has not been able to keep pace with innovation in our technological world. For example, the US Supreme Court has had and continues to have dialectic legal tensions with the Federal Circuit. Where the Federal Circuit has been trying to rationalize and nationalize patent law per its statutory mandate, the Supreme Court has been proceeding in the alternate path, for instance in their decisions such as Alice and Mayo among others. If this path continues, it will negatively impact our patent laws and diminish our competitive global standing by limiting innovation and technology. It is critical that we assure that our statutes and case law lead rather than lag behind our patent system. The alternative is a stagnant economy, which should be unacceptable to all.

 

Donald R. Dunner
Senior Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Keynote Speaker for the 61st Annual JMLS IP Law Conference

Daryl Lim and his colleagues at John Marshall Law School have once again demonstrated that they are in the top tier of law school IP programs.  On November 1st and 2nd, Daryl masterminded a multi-segment program, the first segment on November 1st involving an IP Roundtable consisting of three panels covering the Section 101 universe.  The participants in this first day’s sessions included the best and the brightest in the IP profession who shed much light on the problems created by the Supreme Court’s Section 101 jurisprudence.  An outgrowth of those first day’s sessions will be the formation of a relatively small Ad Hoc Section 101 Committee whose task will be to try to bridge the gap between the diverse Section 101 views and suggest potential solutions to the problem.

The second day’s program on November 2nd opened with a thought-provoking keynote speech by Federal Circuit Judge Polly Newman, followed by a full day of separate panel discussions involving current developments in patent law, IP and antitrust law, copyright law, trademark law, music and entertainment law, trade secret law, and IP and piracy law.  Given the high quality of the participants, the discussions covered the waterfront of cutting edge thinking on diverse and important IP topics.  Together with the first day’s program, the success of this educational venture was guaranteed.

 

Ted Essex
Counsel, Hogan Lovells

I believe that continued clashes among the courts of nations around the world will feed uncertainty regarding SEPs and FRAND in the foreseeable future.  We have seen direct conflicts, particularly with Huawei v. Samsung in China’s Intermediate Peoples Court in Shenzhen and the Northern District of CA.  In Unwired Planet the  English judge has also suggested the courts have the authority to set rates and rule on matters of worldwide concern, ignoring national jurisdiction.  In addition to these early shots fired in the conflict, the European Commission has adopted SEP guidelines that may or may not be similar to those desired by China, Korea, India and other countries.  To further fuel conflict, countries such as India, China, and Korea may be interested in some aspects of SEP patents, such as excessive royalties, more than others, while the US and Europe may focus on willingness of licensees and licensing practice.  China’s secretary-general of the Mobile China Alliance has said “The smartphone patents were dominated by foreign telecom firms including Qualcomm Inc, Ericsson AB and Nokia Oyj in the past, and China has no right of speech in this sector.” They will want a voice going forward as new standards such as 5G are developed.

 

Kenneth R. Adamo
Partner, Kirkland & Ellis LLP

The complexities and challenges presented by 35 USC 101 and the USSupCt’s Alice decision were explored by a lively , intense   panel of knowledgeable law professors and practitioners, in the context of various historical and recent decisions and the anticipated  imminent USPTO proposal of a new framework on the subject. In sum, a strong consensus agreed that the state of play of Alice issues was not viable, that the Court seemed incapable of fixing the situation that it has created, that the Federal Circuit was similarly adrift, that Congress had no resolution on the immediate horizon, and that there is a hopeful expectation that that Office proposal will present a real start to a more – readily applied and understood mechanism that will affect a fair and clear application of 101 in the immediate future.

 

Gary S. Friedlander
Senior Vice President, International Division General Counsel & Global IP, TransUnion

The Annual IP Conference was once again an event not to be missed whether you are a dedicated IP practitioner or a house counsel whose role includes IP and privacy. The new “Meet the Press” type of format used for the plenary sessions ensured a lively and informative discussion on the key IP areas. As an in-house attorney, I found them worthwhile to attend in order help keep up with key trends. However, I always find the afternoon breakout sessions particularly relevant to my role. The breakout sessions provide a more intimate setting and an opportunity to really engaged with the panelists. There is always at least one afternoon track that is particularly responsive to the interests of in-house counsel. I just wish I could clone myself to attend simultaneous sessions.

 

Carlos Aboim
Partner, Licks Attorneys

The Annual Intellectual Property Conference of the John Marshall Law School in Chicago, IL, has been an outstanding opportunity to meet expert speakers from all fields of practice, often with opposing but balanced views – making it impossible to miss. As Judge Newman pointed out during the event, only the exchange of ideas can promote innovation and economic growth. As a litigation attorney, it is paramount for me to understand how courts in the US, UK, DE, and others are dealing with the challenging interface between Antitrust and IP law, choosing between competing narratives will influence innovation across multiple industries. I tried to provide my contribution by sharing my concern that foreign decisions may be misrepresented in developing countries, where antitrust agencies may “misuse” competition law to undermine IP rights to protect “national champions”.

 

Kira Alvarez
Legislative Consultant, ABA Section of Intellectual property Law

I had the pleasure and honor to participate in John Marshall Law School’s IP Conference this year. I thought the level of discussion and participation in all the panels was stellar, both as a participant and as an audience member. In particular, I thought the 101 discussion with thought leaders in academia, business and policy (including the indefatigable Judge Newman) was thought provoking and useful. It is clear from these discussions that for any legislation to “fix” 101 to move forward it will have to be multi-faceted and clearly include issues that all sides are concerned about, so that everyone will be invested in its success.

 

Charisse Castagnoli
General Counsel, Instapay Flexible LLC

The JMLS IP conference brings together academics, government and practitioners in a morning session rapid fire tour through the years critical IP issues. The afternoon sessions follow an interactive format exploring specific issues in greater detail. These sessions really enable a richer understanding of the topic and are also a lot of fun.

 

Tom Cotter
Briggs and Morgan Professor in Law, University of Minnesota Law School and Comparative Pent Remedies Blog

I greatly enjoyed attending the 62nd Annual JMLS IP Conference, and participating in the session on patentable subject matter. My main takeaway from that session is that, while most everyone agrees that it makes sense to exclude laws of nature and products of nature from the scope of patentable subject matter, because the social benefits from conferring patent protection on such fundamental “building blocks” would exceed the social costs, there’s still a lot of disagreement over how far this exclusion should extend.  Sure, the law of gravity is a fundamental building block and hence unpatentable–but is an isolated DNA sequence, or a diagnostic method based on a naturally-occurring correlation, one of these necessarily-unpatentable building blocks too? The Supreme Court thinks so, but it’s not at all clear to me what that intuition is based on; and the risk of inadvertently discouraging investment in developing new diagnostics and naturally-derived products may be substantial. That said, there are potential efficiencies in having a tool for screening out potentially weak patents on a motion to dismiss, where possible; the question then is whether the downside is too great.

 

Dave Djavaherian
Senior Partner and Founder, PacTech Law, P.C.

As usual, the JMLS Conference was a great success. It brought together a fantastic collection of international IP thought leaders and practitioners, with a perfectly coordinated agenda. I will definitely look forward to another great event in 2019.

 

 

Lisa Dunner
Managing Partner, Dunner Law PLLC

I recently participated as a speaker in The John Marshall Law School 62nd Annual  Intellectual Property Law Conference in Chicago, Illinois. When Daryl Lim, John Marshall’s Director, Center for Intellectual Property, asked that I participate on a copyright panel for the conference, I assumed it would be similar to every other speaking opportunity I have had. I was wrong. This conference had the most impressive roster of speakers – 90 in all – on various topics ranging from patents, copyrights, trademarks, antitrust, IT and privacy, and the format was an engaging, enlightening and lively discussion on each of the topics. The audience was involved in the discussions, and the speakers were able to showcase their breadth of knowledge on so many IP-related topics, both old and cutting edge. It was an amazing opportunity to network and learn. It was an honor to be part of this conference.

 

Tobias Hahn
Partner, Hoyng, Rokh, Monegier

Irrespective of the specific subject matters discussed at the Conference, my biggest take-away was that its format, being really set for conversations – among panellists and participants, all of which were thought leaders in the IP world –, made a true difference to the “usual” conference format of lengthy presentations.

This format allowed for some really great discussions. My main focus lies with patents, so particularly the discussions evolving around patentability (section 101), the intersection of patents and antitrust as well as global IP developments were of significant interest. What became apparent once more is that what is needed most in the IP world is judicial reliability. A further take-away was that harmonisation in IP does not always have to take the legislative route, but that harmonisation by way of national courts and judges exchanging their views is sometimes at least equally effective. In this regard, from an outsider’s perspective it may be helpful in the section 101 discussions to also take into consideration how other jurisdictions and institutions such as the EPO deal with patentability.

Utmostly impressive – one is inclined to say “as usual”, but that would not express how outstanding it is – was Judge Newman’s inspirational talk about the relevance of the IP system to today’s economies and societies, and her plea to get involved in ensuring its protection.

 

Reginald Hill
Partner, Jenner & Block

The conference was excellent.  I caught up on some areas where I don’t practice extensively these days, namely trademarks and copyrights.  The panels were interesting and informative. I especially enjoyed hearing about recent and ongoing cases. I also got some great diverse perspectives form practitioners on a range of issues.  In the patent area, I heard some diverse perspectives on 101 issues and some interesting proposals for “addressing” 101. I also got an update on patent damages and other recent patent law changes. Adam Kelly did a great job moderating the patent litigation panel I sat on.

In the vein of networking, I ran into a number of practitioners I had not connected with in some time.  I also made some new acquaintances, including some IP practitioners early in their careers. As an aside, I got several recommendations for things to do in Hong Kong from three different people over lunch. I left for a visit to Hong Kong just after the conference.

 

Lisa K. Jorgenson
Executive Director, AIPLA

This month, I attended for the first time, the Annual Intellectual Property Law Conference at The John Marshall Law School, my alma mater. The rooms were packed as the conference brought together many thought leaders from around the globe, including Judge Pauline Newman, live from her office in D.C.. The first half of the day was fast paced with lively panel discussions providing updates in all areas of the law from trademarks, trade secrets, patents, copyrights and more. The second half of the day, with various break-out sessions, provided in-depth coverage of specific topics from which to choose. This conference exceeded my expectations, being both informative and fun with lots of networking opportunities

 

Adam Kelly
Partner, Loeb and Loeb LLP

The conference was the consummate example of a refreshing civil discourse addressing academic and practical solutions to fixing several current issues facing intellectual property law. Attendees who represented diverse viewpoints—academia, the judiciary, corporate, U.S. government, and private practice—came together to discuss some very difficult, but important issues. From those discussions, I am sincerely optimistic for the future of intellectual property.

 

Alice O. Martin, Ph.D., J.D.
Partner, Barnes & Thornburg LLP

What a marvelous opportunity to get immersed in a full day of all aspects of Intellectual Property law, beginning with the inspirational, historical perspective from Judge Pauline Newman.  The take-away message I absorbed from the Judge was that protection of valuable intellectual property is still important, hurdles and glitches will be smoothed out, so keep thinking and working!  It was a real pep talk!

The following morning Plenary Session panels were lively and allowed us to hear various experts with varying views on patent, antitrust, copyright and trademark law.  The panel moderator kept the interactions lively and informative.

Because of concurrent sessions in the afternoon, I only heard the patent sequence.  It was particularly satisfying to have discussions during the breaks with law students.  Updates on the law – in particular regarding patent eligibility, were helpful.  At the end of the conference, I was grateful that the organization prowess of JMLS Professor Darryl Lim, and Chairman of the IP Advisory Board, Don Dunner resulted in such a worthwhile conference.

 

Kevin E. Noonan
Partner, McDonnell Boehnen Hulbert & Berghoff LLP

The JMLS Conference, in both its private roundtable session and in the public session the next day, illustrated the two principal messages evident to anyone paying attention over the past several years.  The first is that U.S. patent law, particularly with regard to what is eligible for patenting, has been seriously and negatively affected by recent Supreme Court decisions (and the Court shows no indication it is willing to revisit these decisions no matter what). The second is that there is no consensus regarding what needs to be done to correct the situation. The conference permitted practitioners, judges, government policymakers, business representatives, and legal academics to provide their perspectives.  Insofar as this enlightened participants from each group to better understand various stakeholders’ concerns the conference was an unqualified success.  There was much less success in coming to a better understanding of how to do what most agree needs to be done, recalibrate U.S. patent law to have eligibility requirements more in line with other industrialized countries.  Of course, it is unlikely that any of the participants had any expectation that a solution to the eligibility problem would be found, and in that no one was disappointed.

 

Kevin C. Parks
Member, Leydig, Volt & Mayer, Ltd.

In terms of overall quality, the 62nd Annual Conference was the best I have attended. The morning plenary sessions featured a range of topics, presented in a manner accessible to specialists and generalists alike.

The afternoon sessions drilled down further—there were no less than three copyright panels discussing trends in this specialty with essentially no substantive overlap. I was honored to moderate the final copyright panel focusing on music and entertainment, featuring conversations among six highly regarded practitioners, academics, policy advocates and business professionals.

Outstanding faculty, truly a learning environment.

 

Marci Rolnik Walker
Legal Director, Lawyers for the Creative Arts

The John Marshall Law School Annual Intellectual Property Conference is one of the most valuable that I attend and look forward to each year. Directors from its Center for Intellectual  Property, Information, and Privacy Law do an incredible job bringing together thought leaders from a variety of sectors, including academic, private practice, judicial, and overall public interest. This year they introduced a new lively moderated discussion format among panelists, which elicited both useful practice points and insight on upcoming trends and pending cases. I enjoyed interacting with fellow panelists and the opportunity to compare opinions and learn about their practical experience and research. I will definitely attend again and highly recommend the conference to anyone interested in staying abreast of IP developments.

 

Kyle Serilla
IP Law Fellow, John Marshall Law School

As a first time attendee, I was impressed by the scale of this conference and how it attracts not just from our Midwest legal community but scholars and attorneys from all over the nation and the world. Although I had mostly administrative duties to attend to during the morning sessions, I was happy to be able to sit-in on some of the afternoon panels in the “session A” room. I especially enjoyed the copyright law panel’s discussion the 5 Pointz graffiti case and the continuing struggle of American ideas of property rights with V.A.R.A. Additionally, I thought Jacqueline Charlesworth’s insight during the music law panel into the behind-the-scenes reality of writing and passing the Music Modernization Act was a real highlight of the afternoon.

 

Marshall Leaffer
Professor of Law; Distinguished Scholar in Intellectual Property Law; University Fellow, Indiana University Mauer School of Law

I have been lucky to have participated in John Marshall’s 62nd Annual Intellectual Property Conference.  This year was a stellar event—one of the best conferences of its type that I have attended.  These days there are an abundance of IP conferences available.  Most follow the roughly the same format where you have a number of panelists who present their topics in twenty minutes or so and then take questions from the audience time permitting.   What distinguishes the Chicago is its spontaneity and a freshness that others lack.  Its success can also be attributed the optimal mix has a diverse mix of academics and practitioners, and the deft way the moderators keep the participants to succinctly setting out their two or three pertinent points within short time limit.  Verbose padded talks don’t take place in this setting and the range of issues covered was unparalleled in a one-day conference. This format should be used more often because you can cover such a variety of topics and issues in a way that avoids the risk of what I call “talking heads conference fatigue.”

 

Paras Shah
Law Student, John Marshall Law School; Law Clerk, Advítam IP, LLC

I had the pleasure of being a student volunteer and attendee at the 61st and 62nd John Marshall Law School Annual Intellectual Property Conferences. Both conferences included a variety of Intellectual Property experts ranging from government, academia, and private practice. As a student, it was a great opportunity to further develop classroom materials and discussions in an entirely unique manner. The wide array of discussion topics and legal professionals at both conferences allowed me to learn about specific topics of interest and to expand my professional network. Learning and understanding a variety of perspectives from Intellectual Property experts was an important stepping stone in building a better and stronger future. For example, the discussion on IT & Privacy made me realize how important it is to learn about and understand reasonable cybersecurity and digital identity, especially at the rate technology is advancing – how we currently handle these particular areas on a legal level will drastically impact our daily lives in the future.

 

Jomarie Fredericks
Deputy General Counsel; Chief Intellectual Property Counsel, Rotary International

Hope you were able to catch John Marshall’s 62nd Annual IP Law Conference this past 2 November.  I’ve attended for at least the past 25 years and have always found it a great use of my time.  I’ve been fortunate to be a participant in the conference the past few years and (in my somewhat biased opinion), I think the quality of the programming and educators just keeps going up.  We’re seeing national and international experts in the IP field all gathered in one place on this one day for some power-packed sessions.  And having Judge Pauline Newman of the Federal Circuit as the keynote speaker really elevates the conference to a whole new level.  Kudos to Daryl Lim and his whole team at the Center for IP, Privacy and Technology Law at JMLS.  Keep up the good work and looking forward to next year’s 63rd Annual edition on 1 November 2019.  Hope to see you there!”

 

Dr. Shlomit Yanisky-Ravid
Visiting Professor, Fordham Law School;
Fellow, Information Society Project, Yale Law School
Founder and Head of the Shalom Institute of Comparative Law;

The conference served as a wonderful stage for discussions on IP law. It bravely envisioned the future of the IP regime, confronted new challenges, and suggested innovative solutions. The conference was also a meeting point for practitioners, judges, academic professors, students, and representatives from the relevant industries. There was a high level of innovative discourse during the conference. For example, many creative new legal copyright tools were discussed as part of the copyright plenary session in which I participated. Associate Register of Copyrights Catherine Rowland introduced a new tool of small claims. It gives inventors and creators who cannot afford expensive litigation access to justice. The panel also discussed other contemporary copyright issues, including copyright trolling.

The Author

Renee C. Quinn

Renee C. Quinn Renée C Quinn is the Chief Operating Officer of IPWatchdog, Inc. She has worked with IPWatchdog since April 2006, where she is in charge of all of the day to day, behind-the-scenes operations of IPWatchdog. She handles all public relations, marketing and advertising inquiries and is the first point of contact for IPWatchdog.  One of her primary responsibilities with IPWatchdog includes soliciting, approving and preparing guest contributions for publication on IPWatchdog.  In addition, Renée is the producer for the IPWatchdog Weekly Webinar series, the IPWatchdog Institute Suite of courses and is responsible for planing the IPWatchdog Patent Masters Symposium events.

Renée holds a Bachelor of Science degree in Psychology and a Masters of Business Administration. She writes on various business and social media topics for IPWatchdog.com and is available to consult with individuals and businesses on how to effectively establish a successful marketing and brand building campaign.

Click to contact Renee via e-mail.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 4 Comments comments. Join the discussion.

  1. Paul Morinville December 6, 2018 6:21 am

    “but that harmonisation by way of national courts and judges exchanging their views is sometimes at least equally effective”

    Wow. Legislating from the bench is a good thing.

  2. Night Writer December 6, 2018 11:04 am

    One thing that I don’t think many people realize is that patent law is affected by the low interest rates.

    Consider that companies like Tesla are funded primarily through the stock market. So what we have is the stock market is acting like funds. You don’t need patents nearly as much in this case.

  3. Pro Say December 6, 2018 3:28 pm

    The only sure way to return America to #1 in patented innovation is to abolish 101 entirely.

    Quick. Easy. Certain.

    102, 103, and 112 will (continue to) do the job just fine.

    And bless Judge Newman’s heart.

    She knows of what she speaks.

  4. Eric Berend December 10, 2018 11:01 am

    “Attendees who represented diverse viewpoints…”

    Adam Kelly
    Partner, Loeb and Loeb LLP

    All, except that of actual inventors.

    Yeah, Adam, how’s the view from the techoristocrat’s luxury suite? Such an easy ride in the greased-rail, kangaroo-court based regime you’re enjoying the illicit fruits of, there – is this not the truth of this whole sordid matter?

    Will these lordlings never learn? The original and Constitutional notion is SUPPOSED to be that of PROVIDING an INCENTIVE for taking on the DIFFICULT RISKS of INVENTION.

    Unless and until ACTUAL, REAL LIFE INVENTORS are also considered to be so-called “stakeholders” in this domain, we will continue to treated with disdain and outright contempt.

    That the judge-attorney-legislator overclass continues to congratulate itself at such a gathering when this ‘house’ (domain) is already largely burnt down from the perspective of knowledgeable inventors, displays a cognitive dissonance so extreme as to beggar any notion of intelligence among its participants.

    Frankly, to an inventor of a talent sufficient to make world-improving, seminal, ‘cornerstone’ inventions, this is the babble of jackasses. Do any of these august self-congratulating participants even dare admit what rubbish this navel-gazing all is, at this point?

    Where is John Adams’ sterling statement of clarity regarding American jurisprudence: “Ours is a Nation of Laws, not Men” ?

    Are they even aware of, let alone observant about, Justice Potter’s infamous “…but I know it when I see it”?

    How is it that U.S. patent law has become degenerate enough to be meaningfully expressed in terms of cases regarding obscenity?

    And, lest any of you esquires and lordlings take personal offense to my well-founded criticism here: Is the present state of affairs for all but the wealthiest IP pirates and thieves, not truly OBSCENE?

    If the shoe fits, wear it.

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