IPPro Issue 25

Issue 25 09 July 2019

If it aint broke ...

Section 101 reforms

The PCT Network 2020’s goals

Get FUCT

Iancu v Brunetti analysed

In the issue

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Editor: Barney Dixon barneydixon@blackknightmedialtd.com +44 (0)208 075 0928

Reporter: Ben Wodecki benwodecki@blackknightmedialtd.com

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If it ain’t broke ...

What the FUCT?

Has the US patent system bitten off more than it can chew regarding subject matter eligibility guideline reforms

The second case in two years concerning First Amendment rights under section 2(a) of the Lanham Act

+44 (0)208 075 0926

Designer: James Hickman jameshickman@blackknightmedialtd.com

Apple Suit

IP Politics

+44 (0)208 075 0930

Apple has been sued by LBT IP, which claims the technology company infringed four US patents related to sustaining the battery life of electronic devices

Chinese telecommunications giant Huawei has published a white paper declaring that innovation and intellectual property should not be “politicised”

Contributors: Becky Butcher, and Rebecca Delaney

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Account Manager: Bea Ipaye beaipaye@blackknightmedialtd.com

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+44 (0)208 075 0933

Kimono Trademark

Salmon Patent

Associate Publisher: John Savage

The term ‘Kimono’ should “not be monopolised”, mayor of Kyoto, Daisaku Kadokawa, has said

A coalition of 30 organisations have filed an opposition against a European patent covering salmon and trout

johnsavage@blackknightmedialtd.com +44 (0)208 075 0931

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Publisher: Justin Lawson justinlawson@blackknightmedialtd.com

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+44 (0)208 075 0929

PCT Network

Return to Sender

Office Manager: Chelsea Bowles

Senior members of the PCT Network and International Renewals Group discuss its goals moving into 2020

Return Mail’s long fought battle with the US Postal Service is over

accounts@blackknightmedialtd.com Published by Black Knight Media Ltd Copyright © 2019 All rights reserved

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News Focus

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First UK multimedia mark granted by UKIPO The UK Intellectual Property Office (UKIPO) has granted the first multimedia trademark under recently revised trademark laws. The trademark was registered by Japanese technology company Toshiba. The UK updated its trademark guidelines at the start of the year as part of the 2015 Trademarks Directive.

Apple hit with low power mode patent lawsuit Apple has been sued by LBT IP, which claims the technology company infringed four US patents related to sustaining the battery life of electronic devices.

According to the filing, which was filed in the US District Court for the District of Delaware, the claims of the asserted patents offer “improvements in battery conservation of portable electronic devices”.

The technology is used in LBT’s PocketFinder GPS devices.

LBT argued the patents “improve battery life through systems and methods that monitor various signals and inputs received by the portable electronic device and using those signals and inputs to control battery consumption”.

LBT claims that battery conservation has become a critical aspect of portable electronic devices, “with many consumers rating it as a high priority in purchasing decisions”.

LBT is seeking an order permanently enjoining Apple and restraining it from further infringement, an order that Apple must pay an ongoing royalty for continuing infringement and increased damages.

This lawsuit comes following another contention against Apple filed in the same district court alleging it infringed a patent covering a universal keyboard.

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The milestone trademark shows Toshiba’s logo dramatically zooming out with several multi-coloured polygons representing Origami appearing and disappearing around it. The trademark was created to “reflect the Toshiba brand”, according to an official release. The company’s head of communications for its European operations, Matt McDowell, said the company is “thrilled and honoured” to have received the first multimedia mark in the UK. McDowell added: “The Toshiba brand is synonymous with innovation and reliability, and this initiative further demonstrates that our brand identity guides the business in both our communications and our behaviours in delivering our brand promise.”

“As a forward-looking and entrepreneurial company, we have developed a new brand identity that provides a strong and consistent framework for all communication. This is more than just a refreshed logo. Our communication strategy is a content-centric, digital first strategy, and because of this, we believed it was essential to trademark all aspects of the brand, including our motion mark.”

Tim Moss, UKIPO CEO, said: “Trademarks are likely to become increasingly innovative in the digital age, as organisations explore imaginative ways of reflecting their distinctive brand personalities using creative IP. Under the amended trademark law, submission of motion marks, hologram trademarks and sound marks via multimedia format now enables examiners to see exactly what the creator of the mark intended.”

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News Focus

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Mitchell Silberberg & Knupp hires IP litigation partner Mitchell Silberberg & Knupp has added Eleanor Lackman to its entertainment and intellectual property litigation practice group as a partner.

Lackman spent almost eight years as a partner at Cowan, DeBaets, Abrahams & Sheppard.

She brings extensive experience in litigation and licensing and has previously represented clients in the music, sports, and luxury goods industries.

A former co-chair of the New York Chapter of the Copyright Society of the US, she is also a member of the International Amicus Committee of the International Trademark Association.

Sonos turns up the volume in Bluesound patent dispute Speaker maker Sonos has filed a lawsuit against rival brand Bluesound, alleging infringement of seven of its US patents.

The complaint, which was filed in the US District Court for the Central District of California, alleged that Lenbrook Industries, which served as a distributor of Sonos’ wireless audio products in Canada between 2007-2008, had “actual and/or constructive knowledge” of Sonos’ US patents, before it launched its Bluesound range in 2013.

Lenbrook’s Bluesound range became a direct competitor with Sonos in the high-end speaker market.

Sonos stated that Bluesound copied its marketing aesthetics, as well as its product lineup.

The company sent Lenbrook a notice of infringement in November 2018 and sent another notice in June of this year.

Kevin Gaut, chair of Mitchell Silberberg & Knupp, commented: “Eleanor Lackman’s track record of success in prominent and precedent-setting entertainment and IP litigation and licensing matters speaks for itself.”

“She is a terrific addition to our litigation team and a perfect fit at Mitchell Silberberg & Knupp as we continue to invest in expanding our New York presence and bolstering our nationally known IP practice.”

Lackman commented on the move: “Mitchell Silberberg & Knupp has a deep bench of experienced litigators and has long had a dominant presence in the media and entertainment industry.”

“The firm consistently works on some of the most cutting-edge matters, and I am excited to join such an accomplished and creative team.”

Sonos is seeking a judgement of willful infringement, costs and enhanced damages, and an injunction preventing Lenbrook’s staff from further infringement.

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News Focus Huawei: IP should not be ‘politicised’ Chinese telecommunications giant Huawei has published a white paper declaring that innovation and intellectual property should not be “politicised”.

President Trump and his various attorney generals have continuously attacked Huawei and other Chinese firms over the alleged theft of trade secrets and IP.

In the white paper, dubbed “Respecting and Protecting IP: The Foundation of Innovation”, Huawei went into great detail expressing its dedication to innovation and research and development. Huawei notes that it is one of the major 4G patent holders in the ICT sector, and “has cemented [its] leading position in 5G”.

Huawei emphasised in its white paper that it shares its IP with other companies through “licensing and cross-licensing to promote the industrialisation of innovations”.

“We believe that respecting and protecting IP is the foundation of innovation. We share our own IP with other companies through licensing and cross-licensing to promote the industrialisation of innovations,” the telecoms company said.

Huawei’s chief legal officer, Song Liuping, said that IP is the cornerstone of innovation and its politicisation threatens progress across the world.

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“We also publish papers on the achievements of our research.”

Song said: “As always, Huawei is ready and willing to share our technology with the world. That includes 5G. It includes US companies and US consumers. Together, we can drive our industry forward and advance technology for all mankind. If politicians use IP as a political tool, they will destroy confidence in the patent protection system. If some governments selectively strip companies of their IP, it will break the foundation of global innovation.”

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News Focus

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Supreme Court upholds Iancu v Brunetti Fed Circuit ruling The US Supreme Court has upheld a Federal Circuit ruling that section 2(a) of the Lanham Act violates the First Amendment.

Erik Brunetti, a US-based designer, had attempted to register the term ‘FUCT’ for a line of streetwear clothing.

The application was rejected on the grounds that it was unregistrable due to its scandalous nature. The examiner referenced the Lanham Act. The Supreme Court decided to hear the case after the Federal Circuit ruled that the scandalous aspect of section 2(a) was unconstitutional under Matal v Tam. The justices found that the statute is “markedly different” to what the US Patent and Trademark Office proposed.

In its written opinion, the court said: “The ‘immoral’ or ‘scandalous’ bar does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose ‘mode of expression’, independent of viewpoint, is particularly offensive. To cut the statute off where the government urges is not to interpret the statute Congress enacted but to fashion a new one. And once the ‘immoral or scandalous’ bar is interpreted fairly, it must be invalidated.”

Justice Elena Kagan delivered the opinion of the court.

Justices Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch and Brett Kavanaugh filed concurring opinions. Justice Stephen Breyer and chief justice John Roberts filed opinions both in concurrence and dissent. Justice Sonia Sotomayer also filed an opinion in part concurring and dissenting, in which justice Breyer joined.

In her opinion, Kagan questioned how the government claims that the ‘immoral’ or ‘scandalous’ bar is viewpointneutral when many trademarks had been granted or rejected based on varying stipulations.

“The ‘immoral’ or ‘scandalous’ bar stretches far beyond the government’s proposed construction. The statute as written does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose ‘mode of expression,’ independent of viewpoint, is particularly offensive.”

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Kagan wrote that the court found the ‘immoral’ or ‘scandalous’ aspects of the statute to be “substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swear words), and the Lanham Act covers them all. It, therefore, violates the First Amendment.”

In his concurring opinion, Alito wrote that the court’s decision “is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends”.

He added that the affirming of the Federal Circuit’s ruling “does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas”.

During the oral arguments, Alito had been vigorously against any form of a list of terms that would be barred from receiving federal trademark registration.

He said such a list would be “unconstitutional” after questioning whether such a list would be valid under the free speech clause of the First Amendment. Both Roberts and Sotomayer dissented over the term ‘scandalous’ in the statute, and wrote that narrowing the definition of section 2(a) of the Lanham Act “is appropriate in this context”.

Roberts wrote that the government “has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.”

Justice Breyer wrote that a “category-based approach to the First Amendment cannot adequately resolve the problem.

I would place less emphasis on trying to decide whether the statute at issue should be categorised as an example of ‘viewpoint discrimination,’ ‘content discrimination,’ ‘commercial speech,’ ‘government speech,’ or the like.” www.ippromagazine.com

News Focus ‘Kimono’ should not be monopolised, says Kyoto mayor The term ‘Kimono’ should “not be monopolised”, mayor of Kyoto, Daisaku Kadokawa, has said. In an open letter to Kim Kardashian West, who has been attempting to trademark the term ‘Kimono’ for her new line of shapewear, Kadokawa asked Kardashian West to “reconsider” her decision of using the name ‘Kimono’ in her trademark.

Kardashian West has filed various trademark applications with the US Patent and Trademark Office (USPTO), including “Kimono World”, “Kimono Body”, “Kimono Solutionwear” and simply “Kimono”.

In his letter, Daisaku Kadokawa described the term ‘Kimono’ as “fostered in our rich nature and history”, emphasising its symbolisation of the “beauty, spirits and values” of Japanese culture. He also highlighted that the City of Kyoto is currently attempting to register the term “Kimono Culture” with the United Nations Educational, Scientific and Cultural Organizations’ (UNESCO) Intangible Cultural Heritage list. Kadokawa said the term should be a

collective term, particularly among members of Japanese society and culture.

While the filed trademarks have not yet been reviewed by the USPTO, it is important to note that the body cannot deny a trademark on the basis of cultural appropriation, as was evidenced in the controversial Aloha Poke case in September 2018, which saw an American food chain trademark the Hawaiian term “aloha”.

Following public backlash and the letter, Kardashian West has chosen to relaunch her new Solutionwear brand under a new name.

Kardashian West made the announcement on her official Twitter account, reiterating that the original brand idea was conceived “with the best intentions in mind”.

She emphasised the brand values of “inclusivity and diversity”, which ultimately led to the as yet undisclosed name change.

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News Focus

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Group opposition filed against European salmon patent A coalition of 30 organisations have filed an opposition against a European patent covering salmon and trout, arguing it violates rules on patents covering conventionally bred plants and animals.

The groups, including No Patents on Seeds, have called for the patent to be revoked, claiming it is not a technical invention, but instead “simply patented plagiarism”.

Apple device unlock patent rejected in EPO appeal Apple’s appeal to dismiss a European Patent Office (EPO) ruling denying a patent for unlocking a device by performing gestures on an unlock image has been dismissed.

The patent was found to be lacking in novelty and did not show an inventive step.

It covered methods that would allow users to unlock their Apple devices using various swipes, compared to the current old method of simply swiping right.

It would also allow users to unlock the devices via several unlock images, each being associated to a specific application.

Apple appealed to the EPO Technical Board of Appeal, but it has now been dismissed.

The Technical Board of Appeal found the implementation of the invention to be “straightforward”.

It also found that claim one of the pending patent lacked an inventive step as it “specif[ies] the invention in more general terms”.

The board said it considers gesture inputs on a touch screen to be a technical process, in that “it implies the tracking of the user’s finger position to identify a gesture and the comparison of that gesture with a required, reference gesture”.

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Patents covering conventionally bred plants and animals are prohibited by rule 28(2) for the interpretation of the European Patent Convention.

However, the European Patent Office has come under heavy fire for granting patents on what some claim are conventionally bred patents on plants and animals This disputed patent covers salmon and trout reared with selected plants to increase the level of unsaturated fatty acids in their muscle tissue. Such acids are meant to offer health benefits to humans.

The groups argue “there is nothing new about these plants showing naturally high concentrations of suitable fatty acids”.

Johanna Eckhardt of No Patents on Seeds commented: “The supposed ‘invention’ is no more than rearing fish in aquaculture with plants already known to be especially suitable.

There is no inventive effort. Therefore, this patent is [a] pure fake invention.”

“The patent claims natural and biological phenomena for the production of animals which are explicitly excluded by European patent law.”

The groups warn that similar European patents covering meat and milk derived from animals fed with selected plants are currently pending.

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News Focus Supreme Court grants law students copyright limitation case

USITC launches section 337 investigation into Amazon, Samsung and Microsoft

The US Supreme Court has agreed to hear Georgia v Public.Resource.Org Inc, a case concerning whether copyright rules limit access to crucial information for law students.Almost 120 US law students, 50 solo legal practitioners or small-firm attorneys and 21 law professionals or legal educators asked the Supreme Court to clarify a 2018 US Court of Appeals for the Eleventh Circuit ruling that ensured the “rights of citizens to have unfettered access to the legal edicts that govern their lives”. This only applied to the state of Georgia.

They argued that the limited application of the ruling was unfair and that they “must be able to access the law in order to advise their clients competently and are particularly harmed when access can be limited to certain expensive databases”.

The US International Trade Commission (USITC) has voted to begin an investigation into “touchcontrolled mobile devices, computers, and components thereof”.

A complaint was originally filed in May 2019

by Neodron, which claimed that a number of companies, including Amazon, Dell, Samsung and Microsoft, had violated section 337 of the US Tariff Act. Other respondents listed in the investigation include HP, Motorola and Lenovo.

Databases like Pacer charge users for access to US court documents. The petition said: “While the Eleventh Circuit properly applied the edicts of government doctrine to reach the correct decision regarding the Official Code of Georgia Annotated (OCGA), holding that ‘no valid copyright can subsist’, other jurisdictions inside and outside of the Eleventh Circuit remain in limbo.”

The above companies are alleged to have infringed four registered US patents held

by Neodron, which is seeking both a limited exclusion and cease and desist orders following the investigation.

C H A N D R A K A N T M. J O S H I INDIAN PATENT & TRADE MARK ATTORNEYS (Established in 1968)

SOLITAIRE-II, 7th FLOOR, OPP. INFINITY MALL, LINK ROAD, MALAD (WEST), MUMBAI-400 064, INDIA Tel.: +91-222 888 6858 Fax: Fax No: +91-222 888 6859/65 Email: mail@cmjoshi.com info@cmjoshi.com Web.: www.cmjoshi.us Our law firm has been exclusively practicing Intellectual Property Rights matters since 1968. The clientele of the firm includes multinationals, Research Institutes, Private and Public Companies. The law firm represents its global clients not only in India but also in many other countries around the world. Our law takes pride in its ethical standards, quality of services and best law practices. The firm has specialists in the field of Chemical, Pharmaceutical, Biotechnology, Electronic and Mechanical Patent Law and Practice in India.

Areas of Practice: . Patent and Trade Mark Search, Patent and Trade Mark Watch. . Registration, post registration and Infringement etc. for Patent, Trade Marks, Design and Copyright. . Translation of Patent Specification. . Franchise and Joint Venture Agreements, Cyberlaw, Mergers and Acquisition.

Other Offices: New Delhi, Kolkata, Ahmedabad, Hyderabad & Chennai

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Languages: English, French, German & Italian.

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Section 101 · Feature

Section 101: If ain’t broke ...

Has the US patent system bitten off more than it can chew regarding subject matter eligibility guideline reforms?

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You know the old saying: if it ain’t broke, don’t fix it. But some spectators in the US patent world would say that the US Senate’s Judiciary Subcommittee on Intellectual Property has ignored this sage advice.

Senior members of the subcommittee proposed new reforms to section 101 of the US Patent Act, a piece of legislation overshadowed by the decision in Alice Corp v CLS Bank International, just over 5 years ago.

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Section 101 · Feature The case was widely considered a decision on software patents or patents on software for business methods, despite not directly mentioning software.

Since then, hundreds of patents have been invalidated under section 101 in US District Courts.

With the threat of reform, groups like the Electronic Frontier Foundation (EFF) cried out in fear, arguing that it would “drive the patent system into uncharted territory”.

Such outcries actually caused subcommittee chair Thom Tillis and ranking member Chris Coons to alter certain aspects and languages of the reforms.

Despite criticism, many professionals in the patent industry have come forward in support of the changes, for example, the Licensing Executives Society (LES), praised it as a “sensible reform that will improve our patent system and further encourage innovation”.

The previously mentioned concerns of change raised by the EFF were not felt by LES, whose stance was that a change was duly needed. LES said that judicial decisions like Alice and Mayo have confusing “distinct legal principles of what constitutes the act of invention with what field of endeavour should be eligible for protection”.

And LES was not alone with this thought. Knobbe Martins partner Bridget Smith echoed those words.

She said that despite it currently only being a proposal, “any legislative change that aligns the USPTO’s rules for issuing patents and the court’s standards for assessing them will create more certainty”.

Smith also noted that certain areas of US patent law would “improve harmony between the USPTO that issues patents and the courts that enforce them”.

Striking a balance Addressing the EFF’s comments regarding the uncertainty of changes, Smith reminded that “any change to the status quo” would drive the US patent system into uncertain territory.

The EFF called it “a handout to patent trolls and other abusers of the system”, and that any changes would “kill the many Supreme Court decisions that have interpreted section 101 in ways that promote innovation”.

The EFF is a big proponent of the Alice ruling, with its ‘Saved by Alice’ project collecting 11 IPPro

various stories from entities who have been helped by legislation altered by the ruling.

During the first of three hearings conducted by the Judiciary Subcommittee on IP about the reform changes, the EFF’s staff attorney Alex Moss testified. She further emphasised the group’s stance against the reforms, stating the protections are crucial for ensuring the patent system promotes more innovation than it deters.

The three hearings saw 45 witnesses of varying roles in the IP community testifying, with academics, scholars, and former USPTO commissioners present and speaking.

The divide between the 45 testimonies was evident, and senator Tillis stressed that he had attentively listened to the arguments from both sides and wanted to create “a reasonable solution or compromise”.

“I am convinced that we can improve the system and with continued, thoughtful engagement we can avoid unintended consequences.”

Tillis revealed that the most common concern he had heard was that the current state of the US patent system is undermining research and development innovation across many industries due to the uncertainty regarding eligible subject matters.

Coons furthered Tillis’ point by claiming the uncertainty surrounding section 101 in the medical diagnostics industry “has lead to [a] presumption against eligibility that is nearly impossible to overcome”.

He said: “I worry that the continuing lack of clarity in the law, even despite heroic efforts by the USPTO’s director Andrei Iancu, has lead to reduced investment in the expensive and intensive research and development necessary to develop cures and technological breakthroughs.”

Both senators are clearly for the reforms, but the willingness to listen, address and change aspects from opposing feedback is a rare sliver of bipartisan cooperation seldom seen in Washington today. This further emphasises the importance of not only changing the law, but striking a balance over an issue that could reduce the US’ world-leading innovation economy.

The overall outcome will lead to change that all sides of the US patent world will have to come together, acknowledge, address, and overcome, regardless of whether it will break the system, or if it is already broken. www.ippromagazine.com

PCT Network ¡ Interview

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The Patent Network Senior members of the PCT Network and International Renewals Group discuss its goals moving into 2020 Ben Wodecki reports 12 IPPro

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PCT Network · Interview What is the purpose of the PCT Network and what is your goal?

Lauren Pick: The PCT Network is currently the world’s largest network of IP attorneys dealing with foreign filings. We want to create a situation where all of the participating firms in the network are able to speak the same language. In the next couple of decades, the entire world will be using a single unified currency because, at this point in time with globalisation, the existing system is very inefficient.

Our goals and visions for the future are to facilitate the creation of a standard and a certain language.

The idea behind this is to create greater efficiency and increase the bandwidth of every individual member firm within our network to be able to handle more work themselves, thereby increasing their standing, reducing costs and enhancing quality. It will have a lasting impact on everyone, from firms to end clients, and will hopefully, create significant improvement in the market.

Right now, we see the PCT Network as the centre of this global network.

In order to move towards that vision we are putting different steps in place, such as a member portal. What really sets this portal apart is that it does everything you would expect a portal to do, such as automatically generating estimates and quickly processing cases, as well as creating access to the global IP community under one roof. This means that IP firms can now obtain all of the resources and expertise of this giant community of global firms, all in one place. This is groundbreaking and there is nothing else like it out there. Simultaneously, they can also track their own business vis-à-vis these other firms to monitor how they are doing in terms of sending and receiving cases within our network.

Therefore, this portal is moving in the direction of creating that standard, common language and sense of communal interaction that ultimately improves every individual as well as firms overall.

Ahron Glazer: With the integration of this portal, the advancement of the technology and the value of our mission statement so strong, we are able to do what no other international firm can do. We are putting the network under one roof, with immediate communication and streamlining for any IP filings. We are able to essentially operate as one big partner anywhere. No matter how large any international firm is, no-one has that kind of access in the same way we do.

Pick: It’s almost like creating one international law firm.

If you are a US firm, it’s not that you’re reaching out to a foreign associate in Japan, you’re reaching to a colleague in Japan who is almost an extension of yourself. That’s the broader view of seeing things, but right now we are excited about a the growth and momentum that we have seen from all of these firms in terms of their increased access to different capabilities.

Our goals and visions for the future are to facilitate the creation of a standard and a certain language Lauren Pick, CEO, PCT Network

How significant is this partnership for the PCT Network and its members?

Pick: For the PCT Network, the partnership with the International Renewals Group (IRG) means that now our members don’t just have access to the filing stage, but they’re also able to benefit from the entire life of the patent using the IRG for that proponents of the process.

What’s phenomenal about IRG is that they have created a platform that again creates a streamlined, efficient, costeffective and safe system. There’s a lot of value added for our existing members in this partnership. It’s also great that when you handle a filing, the natural progression is into renewals. It’s a very organic relationship and we’re very excited about what this will mean for our members.

For us, it is a significant and an indication of the growth trajectory that we have been operating on, and that we’re really welcoming all of our member firms to join us on that journey of growth. We see this as a starting point rather than an ending.

Ariel Davis: Going back to the aim of establishing a common dialect, that is why this partnership was so natural, because of the fact that one of our central commitments is transparency. Every single client will have access to exact official fees, exchange rates, all that makes up the end fee, which is not necessarily the way that it currently exists in the industry. When we talk about how partners expect a common language, this cannot work effectively without transparency throughout the IP cycle.

PCT Network · Interview When the PCT Network was looking for a partner to do the renewals, it really made a lot of sense to collaborate with someone whose system is built on that transparency, because that’s what our members need. In that regard, there was a strong synergy of values.

Glazer: When you care about the quality of your clients, you are always looking for ways to create opportunities for them to benefit and improve the quality of service provision.

It was really just a natural conversation where we realised that this was a great resource—we handle the filings while they handle the renewals. It was a question of how can we create a way that helps our members to benefit from the filing components while also looking at the trajectory of the life of a patent?

Pick: In general, that is part of our mindset. We are constantly looking for ways to further that vision, so we are actively looking for partners like IRG who can help to create those types of benefits for our existing membership, to raise the bar for what it means to use a quality associated in any country and what it means to reap the benefits of that quality. It starts with IRG and is certainly something that we’re looking to pursue in terms of other avenues of the IP world. For our next steps, we might be looking at something

When you care about the quality of your clients, you are always looking for ways to create opportunities for them of service provision Ahron Glazer, director of marketing, PCT Network

With designs we have been doing, we have been ensuring that we are covering the entire scope of the process. Right now we are reaching out, making payments in over 130 countries, ensuring that we cover the entire globe.

With this move, are you open to any partnerships with other groups in the future, and can you give us an indication of who they might be?

Pick: This is something that we have just started exploring, so I can’t say there are any specific organisations that we have set our sights on. However, it is something that we may have a better vision for by 2020.

Glazer: If we’re not planning ahead, we’re falling behind.

When we started, because of the nature of the business, we were exclusively focused on patents Ariel Davis, manager, International Renewals Group

in the field of docketing software, because again that speaks to the idea of creating a commonality where we can have all of our members doing things in the same uniform and standardised way by creating a baseline that all clients can come to expect and appreciate.

Following on from the partnership, what’s next for the PCT Network?

Davis: When we started, because of the nature of the business, we were exclusively focused on patents. For a while now, we have introduced trademark renewals, which clients are very excited about, more so than patent renewals because it is harder for them to deal with so we are able to take it off their agenda.

Pick: We started in 2015 and ended that year with 40-something members. By 2016, we were up to 86, and by 2017 we had 257 members. We then ended 2018 with over 500 members, and at this point in 2019, we currently have over 600. The growth trajectory is really tremendous, over 450 percent in the last three years. We are thrilled with this partnership and what it means for the PCT Network and our existing members, because it really shows the momentum that has been building, almost a snowball effect as we actualise our vision. The reason why there is so much momentum is that these firms see that we are creating something really unique, which they want to be a part of. I hope that by 2020 we will reach 1,000 member firms; by the end of 2019, as a conservative estimate, I think we will have over 750. We have put a strong emphasis on developing our business in China to bring on many more firms. Obviously, we are also looking towards the rest of Asia in the near future, and are very eager to put down even stronger roots.

Glazer: One of our goals is to help the benefit and value of all our firms. That does not just mean establishing a foreign filing service, but becoming a resource of professional development and growth. We have recruited an advisory board of attorneys that we consult with to ensure that we are always moving forward and addressing our members’ needs in more active professional development.

Iancu v Brunetti ¡ Case Analysis

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What the FUCT? The second case in two years concerning First Amendment rights under section 2(a) of the Lanham Act has led to a very obscene outcome Ben Wodecki reports The ink on Matal v Tam had barely dried before the trademark world found itself once again in the US Supreme Court discussing and dissecting section 2(a) of the Lanham Act. This time, the attempts of American fashion designer Erik Brunetti to trademark the term FUCT for his street clothing 16 IPPro

brand came to a struggle under the scandalous clause of the Lanham Act. Brunetti, who bemoaned that the likes of FCUK and FVCK are allowed to have received registration, asked the court whether section 2(a) of the Lanham Act is facially invalid under the free speech clause of the first amendment. He won the case, but could more obscene marks surface and where is the line? www.ippromagazine.com

Iancu v Brunetti · Case Analysis Superfluous swears Brunetti attempted to register the name of his streetwear brand, FUCT under international classes 22, 25, and 39— covering various fashion products—but it was rejected by the US Patent and Trademark Office (USPTO) under section 2(a) of the Lanham Act. On appeal, the US Court of Appeals for the Federal Circuit found that section 2(a) of the Lanham Act was unconstitutional under Matal v Tam. Matal v Tam was a unanimous Supreme Court ruling in 2017 that found the banning of “disparaging” trademarks violated the First Amendment.

The USPTO petitioned for the Supreme Court to hear Iancu v Brunetti in order to further define the statute. According to one of its filings, the term ‘scandalous’ is defined as “shocking to the sense of truth, decency, or propriety, disgraceful, offensive, disreputable … giving offence to the conscience of moral feelings … or calling out for condemnation”.

The USPTO said it observed Brunetti’s use of the mark in connection with clothing and promotional materials as displaying “strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny”.

The USPTO found Brunetti’s brand name to be “perceived by his targeted market segment as the obscene word for which it is a homonym”.

what they believe to be immoral, adding there is “no way to make a sensible determination between those that come in and those must stay out”.

The concept of a scandalous mark is for all intents and purposes a hypothetical statute that reflects the public’s perception of the vulgarity of a concept. Brunetti argued such a hypothetical statute should be validated by the Supreme Court, and that it “does not defend the plain language of the statute”.

Turning to the concept of refusals, Brunetti asked if the government could refuse to register a deed where it finds the purchaser’s name offensive or if the Coast Guard could refuse to register a boat because the vessel’s name is a bit salacious. Justice Sonia Sotomayer agreed with the concept.

Raucous ruling Brunetti secured the victory, with the justices finding the statute is “markedly different” to what the USPTO proposed.

In its written opinion, the court said: “The ‘immoral’ or ‘scandalous’ bar does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose ‘mode of expression’, independent of viewpoint, is particularly offensive.”

“To cut the statute off where the government urges is not to interpret the statute Congress enacted but to fashion a new one. And once the ‘immoral or scandalous’ bar is interpreted fairly, it must be invalidated.”

Brunetti argued it wasn’t vulgar, and that the term has no meaning, but if it had, he claimed it would be ‘‘Friends yoU Can’t Trust”.

Justice Elena Kagan delivered the opinion of the court.

Justices Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch, and Brett Kavanaugh filed concurring opinions.

A quick Urban Dictionary search shows varying differences in what the term fuct means: a technical word meaning broken or beyond repair, Failed Under Continuous Testing, the past tense of the verb fuck which can also be used to express a general state of incapability, and a fun fact.

Justice Stephen Breyer and chief justice John Roberts filed opinions both in concurrence and dissent.

The definition offered by Brunetti appears third and fourth on the search, with his ‘Friends yoU Can’t Trust’ phrase appearing separate to entries mentioning his name. This entry was uploaded on 25 April 2011, with his brand appearing earlier that month.

During oral proceedings at the US Supreme Court, Brunetti argued that US citizens hold extremely differing beliefs as to 17 IPPro

Justice Sotomayer also filed an opinion in part concurring and dissent in which justice Breyer joined.

In her opinion, Kagan questioned how the government claims that the ‘immoral’ or ‘scandalous’ bar is viewpointneutral when many trademarks had been granted or rejected based on varying stipulations.

“The ‘immoral’ or ‘scandalous’ bar stretches far beyond the government’s proposed construction. The statute as written does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose ‘mode of www.ippromagazine.com

Iancu v Brunetti · Case Analysis expression,’ independent of viewpoint, is particularly offensive.”

Kagan wrote that the court found the ‘immoral’ or ‘scandalous’ aspects of the statute to be “substantially overbroad”.

“There are a great many immoral and scandalous ideas in the world (even more than there are swear words), and the Lanham Act covers them all. It, therefore, violates the First Amendment.”

In his concurring opinion, Alito wrote that the court’s decision “is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends”.

He added that the affirming of the Federal Circuit’s ruling “does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas”.

During the oral arguments, Alito had been vigorously against any form of a list of terms that would be barred from receiving federal trademark registration.

He said such a list would be “unconstitutional” after questioning whether such a list would be valid under the free speech clause of the First Amendment.

Both Roberts and Sotomayer dissented over the term ‘scandalous’ in the statute, and wrote that narrowing the definition of section 2(a) of the Lanham Act “is appropriate in this context”.

Roberts wrote that the government “has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane”.

“The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.”

Justice Breyer wrote that a “category-based approach to the First Amendment cannot adequately resolve the problem”.

“I would place less emphasis on trying to decide whether the statute at issue should be categorised as an example of ‘viewpoint discrimination,’ ‘content discrimination,’ ‘commercial speech,’ ‘government speech,’ or the like.”

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Obscene outcomes The likelihood of what previously would have been deemed ‘scandalous’ now being registered is extremely likely. The likes of ‘Stoned as Fuck’, ‘Fuck you you fuckin’ fuck’, and ‘Make Portland Shitty Again’ have all been registered since the ruling in late June. Jacqueline Lesser, counsel at BakerHostetler, also reminded that many questions still remain over what can and cannot be granted registration.

“The court still would not opine on whether trademarks are commercial speech. The court signalled it would entertain a more narrowly drawn restriction that was limited to particular words but gave no direction on what that would be.”

The concept of a list of ‘scandalous’ terms that would be barred from receiving federal trademark registration was the focus of major debate during the oral arguments.

Marsha Gentner, a DC-based attorney from Dykema suggested justice Sotomayer’s dissenting opinion raised an “interesting question” when she asked whether the USPTO would try to include a ban on the registration of racial or ethnic epithets.

Brian Iverson of Bass, Berry & Sims stated that with the five separate opinions, the understanding of the decision was unclear. He said: “Unfortunately, with so many different analyses, the Court did not provide the clear guidance many had hoped for concerning the appropriate level of constitutional scrutiny for trademark statutes.” He called the ruling “a win for brands that rely upon shock value”.

Despite the victory, Iverson noted that the Supreme Court “seemed to invite Congress to rewrite a more narrowly tailored restriction on registering obscene, vulgar, or profane marks”.

McGuireWoods partner Lucy Wheatley furthered Iverson’s point, suggesting that the majority opinion along with the varying concurrences and dissents, offers Congress the ability to amend the Lanham Act using “more focused language, and allow the USPTO to bar ‘vulgar’ or ‘lewd’ trademarks in a content-neutral manner”.

Danielle Johnson of Goldberg Kohn said that by striking down the ‘immoral’ and ‘scandalous’ provisions of the Lanham Act, the court “got this right”.

She said those provisions had “resulted in many instances of viewpoint discrimination by the USPTO over the years”. www.ippromagazine.com

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Return Mail · Case Analysis

Return to Sender Return Mail’s long fought battle with the US Postal Service is over after the Supreme Court delivered the package it had been looking for Ben Wodecki reports When the US Postal Service challenged Return Mail’s US patent covering the processing of mail items that are undeliverable, the puns seemed to write themselves.

Return Mail held a patent for the processing of mail items that are undeliverable that was invalidated by the US Patent Trial and Appeal Board following an inter partes review from the Postal Service. The Postal Service argued that it was invalid due to its ineligible subject matter.

On appeal, Return Mail contended that the federal government is not a ‘person’ who may petition to institute review proceedings under AIA. This argument was taken all the way to the US Supreme Court.

During oral arguments at the Supreme Court, chief justice John Roberts questioned what the director of the US Patent and Trademark Office (USPTO) should do if the government calls for the reexamination of a patent.

He said: “Is he or she supposed to make an independent determination, or is he or she supposed to salute and go ahead and do it?”

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Roberts took issue with Return Mail’s questioning of whether the director of the USPTO should be able to initiate America Invents Act (AIA) proceedings from a phone call from the government.

Return Mail had argued that the term ‘person’, in this instance, does not extend to include the government because other branches rely on the Dictionary Act definition of person and this court’s presumptive definition of ‘person’ to not include the government.

Return Mail claimed that this “is a stable framework that’s critical to that communication between the branches”.

It argued that the definition presented in the Dictionary Act would “do the work here because that is the reliance

by Congress and the give-and-take before the branches so Congress knows how the word ‘person’ is going to be interpreted when they use it”.

Justice Samuel Alito said that this argument made him doubt your the argument on the statutory language, “because I think if this were presented to Congress and the issue before Congress was do we want a federal agency to initiate one of these AIA proceedings in the open, in accordance with the law, or do we want to allow them to www.ippromagazine.com

Return Mail · Case Analysis pick up the phone to the USPTO … Do you think they chose the latter?”

Justice Neil Gorsuch appeared to agree with the concerns of Roberts and Alito, suggesting that Return Mail’s choice to bring the case to the Supreme Court wouldn’t be needed if Congress wanted to conduct such an action. He said in this scenario the government would be speaking “out of both sides of its mouth”.

Gorsuch referred to the idea of having the USPTO director resolving a case and then coming to the Supreme Court to resolve the dispute about the executive department’s view of the law as “unusual”.

Ruling and reaction The Supreme Court ruled in favour of Return Mail in a 6-3 ruling. Justices Ruth Bader Ginsburg, Stephen Breyer, and Elena Kagan dissented. Breyer wrote the dissent, stating: “The fact that the word ‘person’ does not apply to the Government where that application is close to logically impossible proves nothing at all about the word’s application here.”

In the opinion of the court, justice Sonia Sotomayer wrote that the court concluded the government is not a ‘person’.

She said that excluding federal agencies from AIA proceedings “avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the US Patent Office)”.

The case has now been remanded for further proceedings.

Beth Brinkmann, co-chair of law firm Covington’s appellate and Supreme Court litigation group and Covington partner Richard Rainey co-led Return Mail’s trial team.

Brinkman says the court’s decision “confirms that federal agencies do not get an extra chance to challenge privately held patents under the AIA”.

Rainey adds: “By excluding federal agencies from AIA review proceedings, the court’s decision limits the government’s ability to bring duplicative challenges to the validity of privately-owned patents.”

Speaking with IPPro, the pair expressed their joy at the outcome, but also Return Mails. Rainey has known Return 21 IPPro

Mail for over a decade and says they were “treated very badly by the Postal Service who not only took their invention but serially attacked their patent at the USPTO”.

Brinkmann, who has argued before the supreme court 25 times says this case stood out to her from others as “each of the justices had different types of questions” with some of the justices’ votes being “more predictable than others”.

When asking the pair what advice they would give to US attorneys looking to ascend the hallowed steps of the Supreme Court for their clients, Rainey remarks that they should “hire Brinkmann”.

He emphasises the need to know the audience you’re presenting to: ”it’s a fool’s errand to go before a court with somebody who has never been there before, or has very limited experience because each of these tribunals has nuances that only the experienced practitioners can fully comprehend”.

Brinkmann backs up Rainey’s comments about knowing your audience, adding: “In the Supreme Court, it’s all about the conversation; the justices are coming in there to converse with you and each other. You do have to embrace their questions as an opportunity to really convey your point.”

Rainey says there was one question that he wasn’t prepared for during the oral arguments, which he called “absolutely essential to our winning”.

“That is the presumption that ‘person’ does not include the government. Of course, the Supreme Court can do whatever it wants, they can say that presumption does not make any sense. At the end of Brinkmann’s oral argument, justice Sotomayor asked why we had this presumption. Brinkmann was well-positioned to knock that question out of the park, in a way that I did not even appreciate. It’s interesting to look at why the word “person” excludes the sovereign.”

Return Mail will now be continuing its journey to the Court of Federal Circuits. Rainey dubbed the case “emotionally charged” due to the personal connection he holds with Return Mail and its CEO, but also due to the companies small stature.

For now, Brinkmann and Rainey said they will continue to “partner up”, whilst Return Mail continues its clearly successful march towards fairness for its intellectual property. One thing’s for sure from this case, the government isn’t a ‘person’ in AIA proceedings, and that’s all that matters. www.ippromagazine.com

Industry Events

Industry Events 2019 AIPPI World Congress

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15-18 September 2019 Marques

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17-20 September 2019

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AIPF 2019 Annual Meeting Alexandria, VA, USA

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22-24 September 23-25 June 2019 22 IPPro

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