IP News - Fall 2018
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Judge William Alsup Delivers Address at 2018 Supreme Court IP Review
The Honorable William Alsup of the U.S. District Court for the Northern District of California delivered the 2018 Supreme Court IP Review (SCIPR) Address at this year’s conference, which was the largest in attendance in its nine-year history. SCIPR is the premier conference in the country focused exclusively on intellectual property cases before the Supreme Court. This year, SCIPR convened leading experts from academia, law practice, tech and pharmaceutical companies, and the USPTO. Find out more about the sessions and speakers at www.kentlaw.iit.edu/scipr.
Judge Alsup’s address, “Huge Numbers of Patent Cases: How One District Judge Manages Them,” offered a rare view into the thoughts of one of the most important judges for intellectual property law today. Judge Alsup has presided over 15 trials in IP cases and hundreds more IP cases that settled before trial, including the ongoing high-profile case involving Oracle v. Google and the trade secret case Waymo v. Uber, which settled during trial.
For those of you who think this is a great system, I don’t know how you ever came to that conclusion.
— The Honorable William Alsup
Speaking in his personal capacity, Judge Alsup criticized aspects of the patent system that he contended hampered innovation, particularly patent lawsuits asserting numerous unspecified claims by non-practicing entities. Judge Alsup praised the Supreme Court’s recent patent decisions as well as the America Invents Act’s establishment of inter partes review before the Patent Trial and Appeal Board (PTAB) as offering helpful changes.
Judge Alsup outlined a new “showdown” procedure he devised for some of his cases that requires parties in patent cases involving numerous (potentially hundreds of) claims to select their best claim to defend or contest in the lawsuit. If the patent holder/plaintiff wins, a motion for an injunction against the defendant may be raised at that time. If the defendant wins, a motion for fee shifting, in an exceptional case, against the patent holder may be raised.
The morning panels focused on patent cases from last year’s Term and offered analytics of Supreme Court trends in IP cases. Lawyers from the upcoming IP cases before the Court previewed their cases. The afternoon sessions, organized with the help of PTAB Bar Association members, focused on the changing practice and procedure at PTAB in light of Supreme Court decisions and the PTO’s proposed changes.
SCIPR 2018 was made possible in part by the generous support of law firm sponsors, including Gould & Ratner LLP; McAndrews, Held & Malloy Ltd.; McDonnell Boehnen Hulbert & Berghoff LLP; Morgan Lewis & Bockius LLP; Polsinelli PC; and Seyfarth Shaw LLP, as well as of the PTAB Bar Association.
Center for Design, Law & Technology (c∆) Hosts Interdisciplinary Event and New Series on “What Is Design?”
Chicago-Kent’s new Center for Design, Law & Technology (c∆) will host an interdisciplinary conference, “An Evening of Design,” on October 11. The conference, which was organized and co-sponsored by the Young Lawyers Committee of the Intellectual Property Law Association of Chicago (IPLAC) and Chicago-Kent’s Intellectual Property Law Society, features TED talk-style presentations by a range of speakers from different disciplines: Rotimi Solola, an industrial designer; Joey Zeledón, design principal of Steelcase; Alisa Abbott, attorney from Banner & Witcoff; and Christopher Carani, shareholder of McAndrews, Held & Malloy. The innovative conference will culminate with a panel discussion consisting of the entire group of speakers, led by Professor Graeme Dinwoodie, c∆’s co-director and co-founder, who will moderate a discussion on design and design protection.
The Center also has an upcoming speaker series that will focus on answering the question “What Is Design?” Speakers and creators from different disciplines will offer their answers to this basic question, which is fundamental to design law. The question is central to the scope of design protection, yet the answer may differ depending on one’s view of design.
Professor Sarah Burstein of the University of Oklahoma College of Law, who is a c∆ research affiliate, is this year’s first speaker. On November 14, she will present her paper on “Whole Designs,” which examines the question of statutory subject matter of the design patent act and how we might reimagine the concept of what is a “design.”
In the spring semester, the series continues with an interview of Felicia Ferrone, an internationally renowned designer based in Chicago. Ferrone will give her perspective on design and the design process, from idea to production. Felicia Ferrone’s work is deeply informed by her early experience as an architect in Milan, where she was first taught to “blur boundaries.” In 2010, she founded fferrone, her international namesake brand. Produced in close collaboration with master artisans, fferrone’s handcrafted furniture and products continue to blur boundaries, challenge archetypes, and blend typologies with whimsy, mastery of proportions, and innovative production techniques.
Later in 2019, the Center will host an interview with Chef Edward Kim of Mott Street restaurant in Chicago, which has received distinctions from Bon Appétit, Condé Nast Traveler and the James Beard Foundation. Chef Kim will discuss how he creates new dishes and the creative process as a chef. Kim intended to become an attorney, but eventually found his passion in the culinary arts, earning a degree from Pasadena’s Le Cordon Bleu. His first restaurant was the widely acclaimed Ruxbin. Chef Kim is known for crafting straightforward yet progressive menus influenced by French technique and the chef’s Asian heritage.
Chicago-Kent Students Win Prestigious National Trademark Competitions
The Chicago-Kent team of Brittany Kaplan ’19 and Evan Kline-Wedeen ’18 won first place in the national finals of the International Trademark Association’s 2018 Saul Lefkowitz Moot Court Competition, held in March at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. Along with their first-place finish overall in the competition, the team earned the first-place award for best oral argument and the second-place award for best brief. Ashly Boesche ’04, a partner at Pattishall McAuliffe, coached the team, with help from Professor Mickie Piatt, deputy director of Chicago-Kent’s Program in Intellectual Property Law. Before this national championship, teams from Chicago-Kent placed second in the national competition in 2016 and finished in fourth place in 2014 and 2017.
Established in 1990 by the International Trademark Association, the competition is named for the late Saul Lefkowitz, former chairman of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, to honor his contributions to the development of trademark law and to the education of the trademark bar. The late Dolores K. Hanna ’52, an influential trademark attorney and former INTA president, was instrumental in establishing the competition. The best brief award is named in her honor.
Meaghan Fontein, a 2018 graduate of Chicago-Kent, won the International Trademark Association’s 2018 Ladas Memorial Award for her article “Digital Resurrections Necessitate Federal Post-Mortem Publicity Rights.” Each year, two law or graduate student authors from a worldwide competition are selected for the Ladas award, which honors the best papers on trademark law or related matters.
In her award-winning article, Meaghan addresses the recent phenomenon of “digital resurrections” and the lack of intellectual property protection for misappropriating a deceased celebrity’s likeness. She wrote the paper under the guidance of Professor Graeme Dinwoodie, Chicago-Kent’s Global Professor of Intellectual Property Law, for his spring 2017 seminar on Advanced Trademarks. The article was published in the September 2017 issue of the Journal of the Patent and Trademark Office Society and is under consideration for republication by the Trademark Reporter, the legal journal of the International Trademark Association.
Center for Empirical Studies of Intellectual Property — 2018 Events
On August 29, the Center for Empirical Studies of Intellectual Property (CESIP) kicked off the year with a talk by Professor Edward Lee on his empirical study of fair use—or the lack of it—in music copyright cases, including the recent decision involving “Blurred Lines.” Professor Lee wrote about his study in a recent BillBoard op-ed; a longer analysis is in his article Fair Use Avoidance in Music Cases, published by the Boston College Law Review.
Professor Jessica Silbey of Northeastern University School of Law will present a faculty workshop on November 27 on her empirical study (with Professors Eva Subotnik and Peter DiCola) on how photographers from various genres and at different career stages price their photographs, and copyright’s role in this process. This year, the John Simon Guggenheim Memorial Foundation awarded Professor Silbey one of its prestigious fellowships for her research; she was the only law professor selected this year in the nationwide search.
Chicago-Kent’s Empirical IP Fellow Runhua Wang will deliver a talk in November on her paper “How Do Patent Subsidies Drive SMEs’ Patenting in China?” (co-authored with Professor Jay Kesan). The paper collects and analyzes data from China to explore how subsidies encourage innovation and patenting by small to medium enterprises in a stable, pro-patent legal environment.
Meet Runhua Wang, Chicago-Kent’s New Empirical IP Fellow
Dr. Runhua Wang’s interests are in the areas of intellectual property law and policy, corporate finance, innovation, and entrepreneurship. Her research employs empirical methods, law and economics theories, and comparative analyses. She teaches legal writing for Chicago-Kent’s LL.M. Program in International Intellectual Property Law.
Dr. Wang has two bachelor’s degrees, in industrial engineering and in law, from Beihang University in Beijing, China. She earned LL.M. and J.S.D. degrees from the University of Illinois at Urbana-Champaign College of Law. Her dissertation was about how to stimulate technical innovation by small and medium-sized enterprises in China, for which she did a firm-level analysis for the IP regime, tax system, and financial regulation systems in China.
Learn more about Dr. Wang at www.kentlaw.iit.edu/fellows/runhua-wang.
CHECK IT OUT
Introducing Our New IP Portal
The new intellectual property portal on our website provides quick pathways to everything IP-related at Chicago-Kent, including information about faculty, curricular offerings, student activities, academic centers, events and the Chicago-Kent Patent Hub.
We invite you to visit www.kentlaw.iit.edu/ip to explore.
Chicago-Kent Journal of Intellectual Property Becomes Official Journal of the PTAB Bar Association
The Patent Trial and Appeal Board (PTAB) Bar Association and Chicago-Kent have partnered to establish a new online platform for PTAB Bar Association members to submit scholarly articles on PTAB-related topics.
The Chicago-Kent Journal of Intellectual Property, now the official law journal of the PTAB Bar Association, published the first eight PTAB Bar Association articles in its spring 2018 issue, covering various PTAB-related issues such as AIA estoppel, interpartes review (IPR) precedential opinions, claim construction, and the Supreme Court’s recent decision in SAS Institute v. Matal.
The partnership is an innovative collaboration between a leading organization of legal practitioners and an academic law journal. Professor Greg Reilly serves as faculty advisor to the PTAB section of the Journal. Editor-in-Chief Luis Polanco ’18 and Managing Editor James Mitchell ’18 oversaw the student editors for the first issue featuring the PTAB section, and all involved helped to ensure a successful, on-time publication.
FACULTY SCHOLARSHIP SPOTLIGHT
Professor Andrews Honored with Award for Article on Digital Privacy
Distinguished Professor Lori Andrews won the 2018 AALL Spectrum Article of the Year Award from the American Association of Law Libraries for her article iSpy: Threats to Individual and Institutional Privacy in the Digital World. Professor Andrews is an internationally recognized expert on emerging technologies. The ABA Journal describes her as “a lawyer with a literary bent who has the scientific chops to rival any CSI investigator.” Professor Andrews ranked 15th in the most recent rankings of most-cited health law scholars in the United States (by Greg Sisk).
Recent IP Scholarship
Chicago-Kent faculty members have long been on the forefront of tackling emerging issues. Since 2016, the IP faculty published or had accepted for publication approximately 50 articles, books, and other works. For a list of recent publications, visit www.kentlaw.iit.edu/ip/faculty-scholarship.
COMING IN 2019
BookIT Talk with Jennifer Rothman on the Right of Publicity
In her widely acclaimed book The Right of Publicity: Privacy Reimagined for a Public World (Harvard University Press 2018), Professor Jennifer Rothman of Loyola Law School, Los Angeles, argues that the right of publicity has lost its way. She proposes returning the right to its origins and in the process reclaiming privacy for a public world.
Watch www.kentlaw.iit.edu/ip/eventsfor announcements about this and other forthcoming IP events.
IP THOUGHT LEADERS
Chicago IP Colloquium Hosts Six Nationally Recognized IP Scholars for 2019
For the past 17 years, Chicago-Kent College of Law and Loyola University Chicago School of Law have jointly sponsored and hosted the Chicago Intellectual Property Colloquium, which promotes discussion of a range of issues in intellectual property. Each year, during the spring academic semester, six nationally renowned IP scholars are invited to Chicago to present and discuss their current research projects before selected Chicago-Kent and Loyola students — known as Chicago IP Colloquium Fellows.
The 2019 speakers are:
- JANUARY 29
University of Chicago Law School
Book excerpt on how law shapes computer competition and innovation
- FEBRUARY 12
University of Pennsylvania Law School
Rethinking the Idea/Expression Dichotomy: Insights from Linguistics and Cognitive Science
- FEBRUARY 26
Northeastern University School of Law
Forgotten by Whom? Remembering “Invention of a Slave,” Patents, and African American Civil Rights
- MARCH 26
Georgia State University, J. Mack Robinson College of Business
Similar Secrets (co-authored with Joseph Fishman)
- APRIL 9
Georgetown University Law Center
Trademarks vs. Brands
- APRIL 23
University of Idaho College of Law