Evolutionary Tales: Times of the Best and Worst

• Author: Scott F. Partridge
• Position: Scott F. Partridge is chair of the ABA Section of Intellectual Property Law. He is a partner at Baker Botts LLP in Houston, Texas. He specializes in patent, trade secret, and licensing litigation and client counseling in all areas of intellectual property law. He can be reached at scott.partridge@bakerbotts.com.
• Pages: 3-70

Perspective

Published in Landslide® magazine, Volume 10, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar

Association.

It was the best of times, it was the worst

of times, it was the age of wisdom, it was

the age of foolishness, it was the epoch of

belief, it was the epoch of incredulity . . . .

—Charles Dickens, A Tale of Two Cities

W

e live in interesting and

challenging times: in

politics, business, religion,

international affairs, and surely in intel-

lectual property (IP) law.

And so it is in our own times, as in

those of Dickens and other eras, that we

see dramatic twists and turns, even in IP

law. Perhaps never in the history of the

IP law system has its role been subject

to more attention and scrutiny every-

where—by the Supreme Court, Congress,

users of the system, alleged abusers, and

the public at large. Even the long view

that IP law substantially contributes to our

nation’s economy as a driver of invest-

ment in innovation is increasingly subject

to challenge in some circles. Depending

on your perspective on the many pend-

ing issues in IP law, this may be your own

best of times or worst of times.

Let’s test that beginning with pat-

ent eligibility. If you are a high tech

company whose products rely on com-

puter methods or a diagnostic laboratory

where diagnostic testing methods use

laws of nature often discovered by oth-

ers, these may be the best of times when

considering how the courts now apply

Supreme Court precedent on patent eli-

gibility found in Mayo and Alice. But,

if you are a start-up, joint venture, uni-

versity researcher, life science innovator,

or owner of a large portfolio of patents

whose intangible value was considered

substantial prior to Mayo and Alice,

these are truly the worst of times. We

may wonder, then, is this the age of wis-

dom or foolishness in patent eligibility,

and to the extent patent law requires x-

ing, is anyone—the courts, Congress,

the executive branch—willing to suffer

the protestations that would follow in

putting the future of the patent system

ahead of the politics of the times? The

ABA-IPL Section spent two years tack-

ling the challenges in putting together

a balanced proposal that we think puts

the future of the patent system rst (see

Highlights of the 2016-17 Association

Year, p. 6).

What about patent venue? Need

we say any more than “TC Heart-

land”? That case is the best of times

for frequent, unhappy defendants in

the Eastern District of Texas. But it

certainly is the worst of times for non-

practicing entities—and not just for

those who have been characterized

with the pejorative patent troll moni-

ker. Will our system now require most

patent suits to be brought on the home

turf of those who are alleged to be tort-

feasors—patent infringers? And is that

wisdom or foolishness? In an amicus

brief that our Section prepared for the

American Bar Association (ABA), our

Section took no position on the wisdom

of the concentration of patent cases in

the Eastern District of Texas, but we

did take a position that was consistent

with the outcome in the US Supreme

Court, simply because as a matter of

proper statutory construction Congress

had said so (see p.8). We think we sided

with the rule of law.

Then we entered the era of inter par-

tes reviews (IPRs). The IPR system is

the best of times for alleged tortfeasors

accused of patent infringement. They can

avoid a jury and a clear and convincing

standard in district court, potentially run

up costs in a parallel proceeding (or even

a series of parallel proceedings brought

by multiple defendants), stay district court

proceedings, face a potentially narrow

estoppel risk (if Shaw and its progeny are

rightly decided), and make the risk of an

eventual defeat in a patent infringement

case substantially less in the United States

than in China and Europe today. IPRs

are the worst of times, though, for rst-

to-market patent holders of all stripes. Is

the America Invents Act system as imple-

mented by the US Patent and Trademark

Ofce wisdom or foolishness? One might

wonder if we have entered an “epoch of

incredulity,” while another would contend

that this is the age of wisdom.

In patent law, laches, exhaustion,

Octane Fitness, willfulness, eBay,

potential legislation telling courts how

to manage their cases, and other issues

in patent evolution pose more best and

worst of times scenarios.

But patent law is not alone. If you’re

a trademark lawyer, how concerned are

you that the Slants and Washington Red-

skins cases, and the invocation of First

Amendment law, will further impact the

previously well-understood application

of basic principles of trademark law?

Has the introduction of political correct-

ness in trademark law been a function of

wisdom or foolishness? And what about

trademark damages: to what extent

should plaintiffs be entitled to lost prof-

its, and to what extent should defendants

be able to limit damages to actual dam-

ages? Best of times or worst of times?

To be sure, copyright law is part of this

best and worst drama. Will we have a Reg-

ister who can operate independently of the

Library of Congress? Will the Copyright

Ofce be autonomous? Will it end up in

the executive branch, and what lies ahead

if that happens? Will the Copyright Ofce

Scott F. Partridge is chair of the ABA Section of Intellectual Property Law. He is a partner

at Baker Botts LLP in Houston, Texas. He specializes in patent, trade secret, and licensing

litigation and client counseling in all areas of intellectual property law. He can be reached at

scott.partridge@bakerbotts.com.

By ScottF. Partridge

Evolutionary Tales: Times of the Best and Worst

Continued on page 68

Published in Landslide® magazine, Volume 10, Number 1 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Volume 10 • Number 1 • September/October 2017

16 Patenting the Output of Autonomously

Inventive Machines

This article analyzes the phenomenon of machines that autonomously engage

in inventive activity and argues that recognizing computer inventorship would

promote innovation and fairness.

By Ryan B. Abott

23 Form 18, I Just Don’t Know

What I Want: How the

Abrogation of Form 18 Has

Changed Pleading Standards

The authors provide a survey of the

varied direct infringement pleading

standards that have developed since

the fall of Form 18.

By Jeffrey T. Castellano and

Nathan R. Hoeschen

Columns

1 Perspective

Evolutionary Tales: Times

of the Best and Worst

By Scott F. Partridge

5 ABA-IPL Section Focus

Highlights of the 2016-17

Association Year

By Amy Mandel

12 Proles in IP Law

Master Class:

Paul Brown,UL

By Janet A. Marvel

59 Meeting of the Minds

Righting Inventorship

Wrongs—A

Multijurisdictional

Overview

By Todd M. Martin and Pervin

Taleyarkhan

65 Decisions in Brief

By John C. Gatz

Departments

®

®

Pg. 16

Published in Landslide® magazine, Volume 10, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

40 The Hidden Persuader: Sound Marks

as Sonic Indicators of Source

Sonic branding affords brand owners with the opportunity

to reach passive consumers, drive value, and connect

with consumers on a deeper level. This article explores

registrability issues commonly encountered when prosecuting

sound trademarks.

By Anna L. King and Luke S. Curran

44 Toward a Social Networking Law?

(2017 Edition)

The author provides a 2017 update to his 2009 Landslide

article on developments in social media law.

By Hillel I. Parness

48 Jointly Waging the Battle against

Counterfeiters in Asia

Here is a blueprint for how competing brand owners can work

together to effectively combat illegal trademark counterfeiting.

By Wayne Mack

54 The New Trademark Opposition

System in Mexico

Through a series of amendments to the Industrial Property

Law published last year, Mexico created a formal trademark

opposition system. While the new system is far from perfect, it

is an important step forward.

By John M. Murphy

27 One Crack and an “Evisceration”:

The Current State of the DMCA’s

Safe Harbor

While the bedrock of DMCA protection for ISPs

remains strong, cracks are beginning to form as a

result of the natural evolution of ISPs and the tendency

of some to push the limits of acceptable behavior

proscribed by §512(c). This article examines recent case

law and the potential erosion of these protections.

By Louis T. Perry and Katie A. Feiereisel

30 Intellectual Property Suits in the

United States Court of Federal

Claims

This article serves as a primer on patent and copyright

infringement litigation before the United States Court

of Federal Claims. It focuses on the practicalities of

suing the federal government and provides guidance for

government contractors who regularly supply goods and

perform services that potentially infringe patents and

copyrights of third parties.

By Judge Mary Ellen Coster Williams

and Diane E. Ghrist

Pg. 44

Pg. 48

Editorial Policy: Landslide® magazine provides articles on contemporary issues in intellectual property law for practicing attorneys and others interested in the subject

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