Steps and Leaps
| Author | George W. Jordan III |
| Position | George W. Jordan III is chair of the ABA Section of Intellectual Property Law. As senior counsel at Norton Rose Fulbright in Houston, Texas, he specializes in patent litigation and investigations with an emphasis on wireless, mobile, and e-commerce technologies, as well as licensing and due diligence in all areas of intellectual property law. ... |
| Pages | 3-62 |
Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 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.
Perspective
I
grew up in Atlanta as the only child of an aerospace engi-
neer (dad) and certied public accountant (mom), the rst in
their generation to attend college. My parents encouraged me
to pursue excellence, no matter the challenge. As an African
American dreaming of my own future accomplishments, an
early role model was Maynard Jackson, Atlanta’s rst African
American mayor, an important milestone in the South.
The study of electrical engineering at Duke—with sum-
mers interning at Northern Telecom followed by law school
in Austin—started my path that led to a profession in intellec-
tual property (IP) law. These choices were part of my desire
to solve complex real-world problems for a living. During my
seventh year of practice, I decided to pursue networking and
professional opportunities beyond my local reach. It was ser-
endipity that I joined the ABA-IPL Section.
Our Section is a welcoming place where I could select
whatever I wanted to do to distinguish myself and further
my practice. ABA-IPL’s steady dedication and persistence
toward the advancement of IP law attracted and inspired me.
There were many things that kept me excited, motivated,
and connected: working with and learning from experts in
the profession; tackling big challenges and real-world issues
where I could add my voice for solutions; and beneting from
a wealth of opportunities to participate, including as author,
speaker, and continuous learner.
Joining a Section committee, where policy work often begins,
turned out to be a great way for me to invest in myself and chart
my own course. Through working on policy at the grassroots,
I became a better lawyer and a better advocate for my clients.
Although we did not know it at the time, one of our committee
members was to become a role model herself: Kimberly Moore,
now a judge at the U.S. Court of Appeals for the Federal Circuit.
Different views are always part of our balanced and
thoughtful process toward improving the IP system. They
sharpen how we are tenacious with weighing all sides, stay-
ing the course for critical analysis, and aiming for the best
result—even if the best choice may be to take no action at all.
When I joined the Section though, it still had a way to go
toward broad diversity in its own community. Many of the
faces I saw in those days were white males over the age of
50. There have been big changes in the Section’s diversity
since then, and changes continue at a fast pace. This wider
representation signicantly contributes to helping us solve
the important issues. I have been proud to witness and hon-
ored to contribute to many of our efforts. We have seen the
rst female chair, four others in quick succession, and the
establishment of our Diversity Plan and Diversity Action
Group (DAG). Following a 15-year successful Young Lawyer
Fellows Program, an important next step was the Section’s
creation of a young lawyer member position on our Council.
Today, not only do we have vibrant action groups for inter-
national associates, young lawyers, and law students, but
also our Women in IP (WIP) Law Action Group has over 400
members. Productive work with the Hispanic National Bar
Association, the National Asian Pacic American Bar Associ-
ation, and other external groups is in high gear.
Strength in our diversity has had direct impact on ABA-
IPL advocacy. This past June, two letters from our Section
responded to a U.S. Patent and Trademark Ofce request
for public comments on the report required by the Study of
Underrepresented Classes Chasing Engineering and Science
(SUCCESS) Act. This study concerns the goal of increasing
participation of women, minorities, and veterans in the pat-
ent system and entrepreneurial activities. A WIP task force
led the Section effort in responding, and a DAG task force
was responsible for a supplemental letter emphasizing the
importance of initial assignee data. Such dedicated work by
our diverse group of volunteers is a hallmark of our advocacy
efforts—keeping us at the forefront to ensure that the IP sys-
tem fullls its promise for the future.
The Section has taken important steps toward safeguard-
ing the future health and role of the IP system. For example,
ABA-IPL has long championed restoring patent eligibility to
its proper role. Meritorious inventions have repeatedly been
ruled patent ineligible without a proper patentability analysis,
and as a result it has become impossible to predict with any
certainty whether an invention is patent eligible. Anticipating
this problem years in advance, the ABA in its Myriad brief
on behalf of the Section cautioned the U.S. Supreme Court
against conating the threshold requirement of patent eligi-
bility and the ultimate requirement of patentability.
We have consistently advocated for efforts to modern-
ize the U.S. Copyright Ofce to keep pace with the needs
of users and twenty-rst century copyright challenges. Last
year, at the Section’s request, the ABA adopted policy urg-
ing Congress to approve appropriations to adequately staff,
maintain, modernize, and enhance its services, facilities,
databases, studies, and digital products.
In the trademark arena, ABA-IPL has worked tirelessly on
George W. Jordan III is chair of the ABA Section of Intellectual Property Law. As senior counsel at Norton Rose Fulbright in Houston,
Texas, he specializes in patent litigation and investigations with an emphasis on wireless, mobile, and e-commerce technologies, as well as
licensing and due diligence in all areas of intellectual property law. He can be reached at george.jordan@nortonrosefulbright.com.
By George W. Jordan III
Steps and Leaps
Continued on page 60
Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 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 12 • Number 1 • September/October 2019
2 LANDSLIDE n September/October 2019
10 Legal Implications of Public Spaces
in Virtual Reality
Engage in a thought experiment on technology and its implications for
the law: What are virtual public spaces, and how will they challenge the
contractual freedom granted to and exercised by online platform holders?
By Daniel B. Koburger
16 Into the Fandom-Verse: Fanworks and Fair Use
Fan-created content, shared online and ofine, has caused businesses to nd
ways to balance their rights in protecting their works with fans’ rights in
discussing and sharing their creativity.
By Heidi Howard Tandy
22 Arbitration in the Age of Amazon
Resolution of IP disputes remains a challenge for online e-commerce
marketplaces. One industry leader is piloting an arbitration proceeding for
resolving utility patent disputes on its platform.
By Gaston Kroub
Columns
1 Perspective
Steps and Leaps
By George W. Jordan III
5 Proles in IP Law
David Jones
By Eli Mazour
55 Decisions in Brief
By John C. Gatz
Departments
®
®
Editorial Policy: Landslide® magazine provides
articles on contemporary issues in intellectual
property law for practicing attorneys and others
interested in the subject matter. The materials
contained herein represent the opinions of
the authors and should not be construed to be
those of either the American Bar Association,
the Magazine Editorial Board, or the ABA
Section of Intellectual Property Law (ABA-
IPL) unless adopted pursuant to the bylaws of
the Association. Nothing contained herein is to
be considered as the rendering of legal advice
for specic cases, and readers are responsible
for obtaining such advice from their own legal
counsel. These materials and any forms and
agreements herein are intended for educational
and informational purposes only. Landslide
magazine advertisers are responsible for the
content of their ads as printed. The ABA, ABA-
IPL, and its Magazine Editorial Board are not
responsible for the accuracy of ad content.
Pg. 16
Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 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.
32 Patenting Articial Intelligence
Inventions in Canada
Drafting claims that solve a technical problem and include
signicant details regarding the AI-based invention’s technical
underpinnings help to establish patent eligibility in Canada.
By Shahrzad Esmaili and Roch Ripley
36 Weaponizing IPRs
Patent reform created a perfectly legal route for large tech
companies to bury upstarts in litigation. The Valencell case
reveals one tech giant’s strategy to use the PTAB’s open
jurisdictional standards to impose that burden.
By Steven C. Carlson
41 Frequent Filers? What the Data
Says about Parallel PTAB Cases
Analyze trends in the use of AIA challenges by district court
litigants, including the effect of changes in patent law and
USPTO policy.
By Roshan S. Mansinghani and Robert K. Jain
46 Columbia Sportswear v. Seirus:
Pacesetter for Application of
the Government’s “Article of
Manufacture” Test in Design
Patent Damages Cases
Examination of a pending Federal Circuit case highlights
potential pitfalls of the government’s four-factor test for
determining the “article of manufacture” when calculating
design patent damages.
By Perry J. Saidman and William P. Gvoth
51 How Purchase Probability
Scales Can Shed Light on
Consumer Purchase Intentions
Purchase probability scales are a proven method for
answering critical antitrust questions, including whether
trademarks affect consumers’ choices.
By Rene Befurt and Alvin J. Silk
25 Practical Tips for Trademark
Protection in China
Consider these tips when developing trademark
protection strategies and maintaining the stability of
registered trademark rights in China.
By Nina Li
28 Ethical Representation
of Every Inventor, Whether
Paying or Pro Bono
Patent pro bono programs match nancially
disadvantaged inventors with registered patent attorneys.
A review of the applicable ethical rules further solidies
the importance of these services.
By Mark R. Privratsky
Pg. 32
Landslide® magazine
A Publication of the ABA Section of
Intellectual Property Law
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