Each December, we ask a panel of industry experts to identify the Biggest Moments in IP for the previous year, and likewise ask them for their wishes for the new year. And in 2017, another series was born—Predictions and Thoughts for the New Year.
Attorneys don’t normally like to make predictions, but these brave souls have gone out on a limb to either provide their personal crystal ball readings, or simply to give their thoughts on what we should be watching or expecting for the year ahead.
So, without further ado, on this first day of 2020, here are the thoughts and predictions of our esteemed panel.
Knowles Intellectual Property Strategies
The Solicitor General’s opinion in Vanda was a well-thought out and wonderful year-end holiday present for all of those 101 advocates pushing for patent eligibility reform. I predict the U.S. Supreme Court will accept the Athena Diagnostics Petition for Cert. (going to committee January 10th), which will provide a platform via Amicus briefs to speak directly to SCOTUS about the damage caused when it veers away from statutory law and substitutes inconsistent common law based on judicial exceptions in its place. It is hard to predict how SCOTUS would decide the case, given its dislike of incentive-based statutory monopolies. Some predict that SCOTUS could conclude that a scope of patent eligibility that includes applied discoveries is itself unconstitutional because it impedes instead of promotes the progress of science and the useful arts. However, the better argument is that Congress was given the sole power to decide in its full discretion what will and how to promote the progress of science and the useful arts, such that SCOTUS would be acting outside of its constitutionally delegated power to decide that issue at all. While Marbury v. Madison in its broadest sense states that SCOTUS can strike any Congressional law inconsistent with the Constitution, Marbury was actually a case which demonstrated an extraordinary restraint of power by the Court. In Marbury, SCOTUS refused to exercise power given to it under a Congressional mandamus law that SCOTUS said it was not empowered to accept under the Constitution because the Constitution only gave it appellate not original jurisdiction over mandamuses. Let’s hope (predict?) that SCOTUS returns to the great Marbury v. Madison legacy of judicial self-restraint and rules that it was not given the power under the Constitution to amend or create exceptions to the patent laws.
Ms. Knowles was formerly Senior Vice President and Chief Patent Counsel at GlaxoSmithKline, where she served as the worldwide head of patents for all litigation and transactional matters. She has been recognized as one of the most influential people in IP, and numerous times as one of the top IP strategists in the world.
Lee S. Brenner
1. Continued rise of paparazzi suits against celebrities posting their photos on social media and emergence of new legal theories regarding implied licenses or joint authorship of paparazzi photos.
Recently, there has been a surge of lawsuits filed by paparazzi photographers alleging copyright infringement against celebrities (such as Gigi Hadid, Justin Bieber, Katy Perry, and Jennifer Lopez) who post photos of themselves taken by paparazzi. These cases illustrate the evolving intersection of a celebrity’s right of publicity in their own image and a photographer’s right to copyright their artistic work. While some have settled copyright infringement claims brought by a paparazzi photographer, Gigi Hadid successfully moved to dismiss her case in XClusive-Lee, Inc. v. Jelena Noura “Gigi” Hadid, No. 19 Civ. 520, ECF No. 15 (E.D.N.Y. June 5, 2019). Though Hadid’s case was dismissed due to a lack of a copyright registration, the briefing in Hadid’s case raises intriguing questions for future cases.
2. Lawsuits related to deepfakes as the legal theories in this area begin to emerge.
In October 2019, California Gov. Gavin Newsom signed two deepfakes bills into state law. AB 730 makes it illegal to circulate doctored videos, images or audio of politicians within 60 days of an election. AB 602 addresses deepfakes and pornography, providing a private right of action against any person who “[c]reates and intentionally discloses sexually explicit material if that person knows or reasonably should have known the depicted individual did not consent; or [i]ntentionally discloses sexually explicit material that the person did not create if the person knows the depicted individual did not consent.” Critics of the legislation contend that it does not go far enough to protect people from the damage deepfakes can cause. First Amendment advocates have also criticized the laws based on concerns about its constitutionality. AB 730, for example, would likely prohibit the use of altered content to reenact true events that were not recorded and could bar a candidate’s use of altered videos of him or herself. AB 602 potentially imposes liability for content viewed solely by the creator and does not explain what happens when consent is revoked after creation or distribution. Recent activity in Congress also suggests federal lawmakers are considering potential federal regulation of deepfakes in politics. Stay tuned!
Mr. Brenner is chair of Venable’s Entertainment and Media Litigation Group, and is a trial attorney and business litigator.
Judge Theodore Essex
I think we are going to see battles on jurisdiction, as judges will not accept judges from other countries setting [FRAND] rates worldwide, or issuing antisuit rulings in countries they have never been in. Both judges in the United States and the UK have attempted to make rulings impacting China, and I do not believe this will be accepted.
Judge Essex served as a U.S. International Trade Commission (ITC) judge for a decade, and is now Senior Counsel at Hogan Lovells in Washington, D.C. In addition to being admitted to the bars in the District of Columbia and Louisiana, he is also a registered solicitor in England and Wales.
More changes to China’s IP laws – China has been working to get a seat at the “world IP table” for the last decade. Recent changes are proof they’ve been working on IP protection and enforcement for a number of years, and we will see more changes in 2020
Economic changes could push organizations to think critically about where they file for IP protection – If organizations are more budget conscious, they may not be able to file for IP protection in every market. Eric will say that with limited funds, inventors and organizations should prioritize the U.S. and China given they are the two biggest markets globally
AI will play an even bigger role – Whether AI is creating inventions on its own or being used by the USPTO to vet and review patent and trademark applications, we’ll see the technology’s impact on IP increase
Amazon will be pushed to solidify its stance on IP protection – Amazon launched its IP Accelerator this year to help small and medium-sized businesses secure trademark protection, but also faced continued criticism for selling low quality and counterfeit goods. In 2020, we’ll see if the IP Accelerator is a step in the right direction for the retail giant or whether it’s just a distraction from Amazon’s larger IP challenges.
Eric Giler is CEO of Ciprun Global, overseeing the company’s business strategy, growth and operations. He is also a trustee of Carnegie-Mellon University, an adjunct lecturer at Babson College.
Flachsbart & Greenspoon
The Solicitor General just went on record telling the Supreme Court that it should fix the current patent eligibility mess. In two invitation briefs this month, the SG recommended that the Court decide the Athena case, which raises the question whether medical diagnostic tests are patent eligible. The Supreme Court takes SG recommendations 80% of the time. Watch for a re-list of Athena after the January 10 conference, and then a cert grant following the January 17 conference. This would leave time to add Athena to the 2019 Term, with a decision expected by June 30, 2020.
Robert Greenspoon is a founding member of Flachsbart & Greenspoon, LLC. He is a registered patent attorney who concentrates his practice in the litigation, trial and appeal of patent and other complex cases. Mr. Greenspoon has argued numerous cases before the Courts of Appeals for the Fourth, Eighth and Federal Circuits.
Goldberg Kohn Ltd.
The cannabis industry will continue to be a major focus. We will begin to receive more guidance on protection of IP in the cannabis industry, but frustrations and unexpected turns are still inevitable. The FDA is facing intense pressure to provide more guidance on CBD, so we can expect updates as the FDA collects data and conducts additional studies, which will affect how cannabis brand owners label and market their goods. Trademark applications at the USPTO covering some hemp-derived products are finally starting to be examined and approved in light of the 2018 Farm Bill, which will help bolster the rights of trademark owners. However, brand owners still need to brace themselves for unexpected decisions like the Kiva Health decision out of the Northern District of California this fall, in which earlier state-legal common law rights for cannabis-infused edibles were insufficient to establish priority in defense to a federal trademark infringement claim, since cannabis remains illegal federally. Practitioners and businesses in the cannabis space will need to remain diligent with their trademark searches and monitoring and have the ability to shift gears as the legal landscape shifts.
Danielle Johnson is a trademark attorney with Goldberg Kohn, and a former trademark examining attorney at the U.S. Patent & Trademark Office. She currently serves as Chair of the Women’s Bar Association of Illinois’ Intellectual Property Committee and on the Marketing Committee of Chicago Women in Intellectual Property.
Maier & Maier
My concerns about the IP front for 2020 are directly related to 2020 being an election year and the potential for Congress to focus their attention on more pressing political issues than to address IP legislation and passing full year appropriation bills to adequately fund the Federal Government. I wish I could be more optimistic, but unless there is some form of an omnibus bill that could include IP legislation I don’t see much chance for the passage of IP stand-alone legislation next year.
Mr. Kunin is a Partner with Maier & Maier, where he specializes in all areas of patent practice. He previously spent a 35 year career at the U.S. Patent and Trademark Office, rising to spend a decade as Deputy Commissioner for Patent Examination Policy.
Jeffrey I.D. Lewis
Norton Rose Fulbright
Patent eligibility is what all of the patent world is watching. There are stalled proposals in Congress, numerous petitions to the Supreme Court for review, and lots of public clamor for certainty – although some seek broader patent protection while others are using Section 101 eligibility as a vehicle for a narrowing of patent protection.
Compulsory IP licensing will be a big issue in Congress this year. Currently, there are a number of pending bills that would introduce a basket approach to pharmaceutical pricing, but there also is a push afoot to move that into compulsory licensing as a first step – it is rumored – to more general compulsory licensing for all IP rights.
The “electronic and digital age” continues, and it will be a big challenge in 2020. The explosion of “big data” and advances in artificial intelligence will continue to test our conventional ideas of ownership and invention/authorship. The USPTO is currently considering how to deal with AI-created inventions, it has published a Federal Register request for comment, and two pending patent applications – one for a fractal bottle design and another for strobe lights mimicking human neural pathways – will certainly draw this issue to a head.
International trade and financial issues will become more of a focus. Whether multi-national issues of SEP/FRAND or the use of national cryptocurrencies for IP filing payments (as Venezuela tried to implement), the scope of IP work will continue to broaden into more international and financial issues. This also will be impact the scope of US litigation discovery in aid of international tribunal considerations.
Digital health issues will cause the “tech IP” and “life science IP” worlds to collide, and importantly find common ground on IP issues.
Mr. Lewis is a partner at Norton Rose Fulbright, and is a past President of the AIPLA. He concentrates on patent and trademark litigation, counseling, and licensing, as well as other intellectual property and general litigation.
Center for Intellectual Property, Information & Privacy Law John Marshall Law School
The Section 101 Endgame: Catalyzed by judicial and/or congressional action, we will see parties moderating their expectations on the Section 101 impasse similar to what we saw, and continue to see, with parties involved in the smartphone wars.
The Ninth Circuit will decide FTC/Qualcomm narrowly The decision may nonetheless revive views animating the Ninth Circuit’s 1997 Kodak opinion on refusals to license. This view, if adopted, will bring the U.S. closer toward the EU’s “abuse of dominance” standard at the IP-competition interface and encourage more robust antitrust intervention of licensing practices, particularly when imposed by patent owners of FRAND-encumbered technology.
Courts will hear their first AI cases Most courts will likely defer to Congress or fall back on first principles. A few bolder judges will attempt to reconcile the traditional IP framework with the emerging reality of machine-centric innovation, creativity, and brand protection.
Daryl Lim is Professor of Law and the Director of the Center for Intellectual Property (IP), Information & Privacy Law at the University of Illinois at Chicago John Marshall Law School. He is a multi-award winning author, observer, and commentator of IP trends and how they influence and are influenced by law, technology, economics, and politics.
Patent law will be forced to grapple with the patentability of AI-generated inventions in 2020, now that AI as a tool for innovation is rapidly transitioning from an academic curiosity to real-world invention engine. Patent offices and attorneys will need to figure out how to apply existing law to inventions designed in significant part by machines. Patentability for AI is now at the point where patentability for software was in the early 90s, and the consequences of decisions made on AI patent applications being examined now will likely be with us for many years.
Robert Plotkin is an MIT-educated computer scientist, engineer, patent attorney and author. He has been a leader in obtaining software patents for two decades.
This year, I am going to make the easy prediction of more uncertainty for the U.S. patent system in 2020, but that is an obvious layup. I’m also going to go out on a limb and make three specific predictions as well. My first specific prediction is that we will see further increases in filings in China, at the European Patent Office and elsewhere around the world, as the U.S. continues to founder relative to patent eligibility and the fundamental question of whether patents are a property right. My second specific prediction is that during the 2020 campaign we will hear that exclusive rights (i.e., patents and data exclusivity) are the reasons drug prices are too high in America and the solution is to roll back protections and make it ever easier for generics to enter the marketplace. My final specific prediction is that the STRONGER Patents Act is dead. STRONGER, which includes a statutory overruling of eBay v. MercExchange (i.e., a return to a presumption of an injunction for a victorious patent owner in a patent infringement action) is politically not feasible (i.e., it won’t even get a vote in the Senate Judiciary Committee).
Mr. Quinn is a patent attorney and a leading commentator on patent law and innovation policy. He is one of the 50 most influential people in IP and one of the top 300 IP strategists in the world.
For 2020, I am looking forward to seeing how U.S. courts and federal agencies continue to address the questions around FRAND licensing and standard essential patents. As cellular technology has quickly moved to 5G, which is headed to being more widely implemented than predecessor cellular technologies, it will be interesting to see whether US courts or federal agencies will provide guidance regarding FRAND determinations, licensing behavior, patent pools, and a host of related topics before we enter into the next phase of cellular technology disputes. We just touched the surface with some of the issues in this area with 3G and 4G/LTE, but given the broad range of use cases and product applicability for 5G and the interplay with other standards, the licensing and enforcement related to 5G will present many more challenges.
Ms. Sanford is the Deputy Chair of the Intellectual Property Litigation Group at Baker Botts.
Holwell Shuster & Goldberg
The law of patent-eligible subject matter should continue to be front and center in 2020. Part of what makes the patent eligibility debate so important is the impact that U.S. law in this area can have on incentives to innovate, which encourage investments in key research and development that, in turn, can influence the strength of the United States as a technological world leader. At the same time, a delicate balance is necessary to ensure that such patents do not forestall key discoveries and inventions. One case that I will be closely watching is Athena Diagnostics v. Mayo Collaborative Services LLC, where the Supreme Court has an opportunity to clarify whether claims specifically directed to medical diagnostic tests are eligible for patent protection under its Alice/Mayo framework and, ideally, enhance predictability under Section 101 in general. It is not every day that all twelve active Federal Circuit judges invite clarification by either the Supreme Court or Congress, and the stakes for key technology sectors like biotech could not be higher. Regardless of whether the Supreme Court grants or denies certiorari in Athena, Congress can be expected to be closely watching. This past year, we saw the release of two draft bipartisan proposals for legislative Section 101 reform, and a series of related hearings before the Senate Judiciary Subcommittee on Intellectual Property. To the extent that Congress maintains its focus on patent reform in 2020, a draft bill to reform Section 101 would be a natural step forward.
Ms. Sebaski is Counsel to Holwell Shuster & Goldberg and specializes in patent litigation and complex commercial litigation.
Unified Patents Inc.
I predict that litigation funding and rebounding secondary market activity leads to a number of protracted, sprawling, high-profile patent litigations in 2020 (which will increase the cost of defense, at least in the aggregate or average); that we will see increased attention given to serious antitrust regulation of the kind not seen since the late 90s; and that serious progress on potential 101 legislative reform will stall out or be tabled until after the Presidential election. I also predict that the Supreme Court will grant cert in Athena at the January 10 conference.
Mr. Stroud is Chief IP Counsel for United Patents, where he manages Unified Patents intellectual property work, focusing on Patent Trial and Appeal Board (PTAB), district court, and appellate litigation, licensing, and settlement negotiations.
Lowenstein & Weatherwax LLP
We will likely see ongoing, and possibly legislative, activity involving major IP developments from last year, including the constitutionality of America Invents Act proceedings (Arthrex) and the limits of patent eligibility (Athena, American Axle). That’s especially true now that the United States has stated in HP v. Berkheimer and Hikma v. Vanda that it agrees with many judges and stakeholders that substantive patent eligibility standards have become unacceptably unclear. We may also see a surprising Supreme Court decision in Thryv v. Click-to-Call adjusting the USPTO director’s unreviewable power to decide whether to review patents. But one of 2020’s most surprising IP developments may be a dog that doesn’t bark: the lack of a law putting off into the future the expiration of copyright protection for the many works from the early Twentieth Century that are about to enter the public domain.
Kenneth Weatherwax is a founding and co-Managing Partner of Lowenstein & Weatherwax LLP. A Princeton-trained engineer, Mr. Weatherwax is a nationally recognized patent litigator in proceedings before the patent office and the courts.
Womble Bond Dickinson
The Google v. Oracle software/copyright litigation case being accepted on appeal by the US Supreme Court is and will be arguably the biggest copyright case in the 21st Century to date. The 2020 results of that case likely will govern both software development and copyright case law for years thereafter. The legal dispute in the case should provide at least some guidance as to where software developers can draw a line as to both what is copyright eligible/protectable material and what may be “fair use” in the software space. It also likely will have significant “ripple effects” into other industries as well in terms of copyright law. Further, results from the decision may pave the way for new copyright legislation directed to software and other emerging technologies.
Mr. Whittle leads Womble Bond Dickinson’s International IP Energy Group and serves as Managing Partner of the firm’s Houston office. He is also a past president and chair of the Licensing Executives Society (LES) for the USA and Canada (2015-2016) and served on the LES Board for over seven years. He currently serves as the Co-Chair of the Americas Committee for Licensing Executives Society International (LESI).
Foresight Valuation Group
Thinking about the future of IP in the next decade, I see the biggest challenge facing the business community exemplified in the mismatch between the assets that bring the most value to companies, and the IP protection afforded to them. The problem has two sides to it: on the one hand, we see the erosion of what used to be the strongest legal protection, patent rights, which largely protect technology assets. On the other hand, we see new types of digital assets that may be even more valuable than technology in some industries, like data assets, which have little or no IP protection at all. This is how we get to the extreme situations of Unicorns (startups with valuation higher than $1 billion) having incredible valuations with no patents, and no other meaningful IP protection to speak of. This problem is mostly pronounced with software companies, who are no longer bothering to patent their underlying technology because of the many hurdles facing software patents, while at the same time developing data-driven assets (collected primarily around their users) which drive their valuation and monetization, but have no legal protection and are easy target for breaches and misappropriation.
As far as activism coming from the IP community, I see a lot of focus on the patent front, and virtually nothing done on the data front. Even if the strength of the patent system is fully restored to its glory days, this will solve only part of the problem. Data assets, growing in importance across many industries, from software to biotech, are left unprotected. The only protection I see is physical protection (limited access or cybersecurity measures), but there is no legal protection. Without legal protection, there is no way to create or price transfer mechanisms (such as licensing in the case of patents), and no way to remunerate the holder of these data assets in cases of misappropriation. My call for action to the IP community is to advocate for the IP protection of data assets. This may require the creation of new classes of IP rights, or at the very least expanding the protection and enforcement of existing types of IP rights.
Efrat Kasznik the President of Foresight Valuation Group, and a lecturer at the Stanford Graduate School of Business. She is a valuation and intellectual property (IP) expert, with 20 years of consulting experience, focusing on assisting clients with the creation, commercialization and protection of their intangible assets.
Stuart Duncan Smith
Intellectual property will have a big year at the Supreme Court. Some of the big-ticket cases slated for a decision include Google LLC v. Oracle America Inc., which concerns the copyrightability of a software interface, and Romag Fasteners, Inc. v. Fossil, Inc., which concerns trademark damages. The Federal Circuit will weigh in on the scope of IPR estoppel in district court under Section 315(e)(2). District courts are teeing up questions about the scope of the estoppel and how to prove that it applies. And at the PTAB, expect more patent owners to seek discretionary denials under Sections 314(a) and 325(d) and to file motions to amend under the PTAB’s new procedures.
Stuart Duncan Smith focuses his practice on patent, trademark, trade secret, and copyright litigation, as well as patent post-grant proceedings.
HAPPY NEW YEAR FROM IPWATCHDOG!!!
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