JONES DAY TALKS®: Women in IP — Our 2020 Outlook
2019 was undeniably a very active year for intellectual property law—there were notable Supreme Court decisions relating to trademarks and patent litigation, and significant developments relating to AI and life sciences.
2020 promises to be just as interesting. Jones Day's Meredith Wilkes, Patricia Campbell, and Tracy Stitt explain what's recently happened and let us know what to look for in the year ahead. They also talk about what Jones Day's Women in IP initiative has planned for 2020.
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Dave Dalton:
2019 was undeniably a very active year for intellectual property law. There were notable Supreme Court decisions relating to trademark and patent litigation and significant developments relating to artificial intelligence and life sciences. And 2020 promises to be just as interesting. We have Jones Day's Meredith Wilkes, Patricia Campbell, and Tracy Stitt here to explain what's recently happened and let us know what to look for next. We'll also talk about what Jones Day's Women in IP initiative has planned for 2020. I'm Dave Dalton, you're listening to JONES DAY TALKS®.
Dave Dalton:
Meredith Wilkes co-leads Jones Day's global trademarks, unfair competition and copyrights group. She focuses on high stakes trademark, trade dress, trade secret, false advertising and design patent litigation matters for global brands in federal and state courts. Patricia Campbell has more than 10 years experience counseling clients in all aspect of patent portfolio development in the pharmaceutical and biotech sectors. She has prosecuted some of the most fable patent portfolios, covering approved products from several of the world's premier biotech and pharmaceutical companies. And Tracy Stitt has represented clients as an intellectual property litigator in high stakes cases before numerous US district courts, the International Trade Commission and the Trademark Trial and Appeal Board. In addition to litigating infringement cases, she counsels clients on trademark prosecution matters, trademark policing efforts and domain name protection strategies. Thanks to you all for being here. Meredith, Patricia, Tracy, thanks for being here.
Meredith Wilkes:
Thanks for having us Dave.
Tracy Stitt:
Thank you.
Patricia Campbell:
Thank you.
Dave Dalton:
Well, first of all a hat tip to the three of you. Darn it, if Meredith didn't at the beginning of the year say we're going to do four Women in IP podcasts this year, one a quarter, and we're doing it. Congratulations to Meredith and to you all. Quite an effort. And appropriately I think, today's subject matter is a glance back at 2019 and a look ahead to 2020. I love these kinds of programs because we can cover a lot of material in a relatively short bit of time.
Dave Dalton:
We're going to talk about trademarks, patent litigation, other areas of focus, sort of a catch all category and then we'll get into life sciences a little bit and we'll end with what the Women in IP initiative Jones Day did this year and plans for 2020. Let's go, let's kick it off with Meredith. Meredith, thanks again for being here today. Let's talk about trademarks in 2019, some notable decisions in Iancu v. Brunetti, the US Supreme Court ruled that Lanham Act prohibitions against the registering of immoral or scandalous trademarks violates the first amendment. Meredith, run through the case for us and tell us about the reaction to that decision.
Meredith Wilkes:
Well, first of all Dave, thanks so much for having us and for hosting our fourth Women in IP podcast for 2019. We're really just so delighted to be here.
Dave Dalton:
And they keep getting better. Have you noticed?
Meredith Wilkes:
Well, yes. And thank you for that.
Dave Dalton:
Practice.
Meredith Wilkes:
Brunetti decision is of course, the very famous past participle of a well known term of profanity. The litigants referred to it when they were arguing in front of the United States Supreme Court. It involved attempts to register the brand name F-U-C-T.
Dave Dalton:
Right.
Meredith Wilkes:
Separated out, F-U-C-T to identify clothing. At the trademark office, the examiner refused registration on the grounds that it constituted immoral or scandalous trademark matter. Up and until the Brunetti decision, that was a valid constitutional basis upon which to refuse registration. But the United States Supreme Court said no, that type of prohibition is viewpoint based discrimination in violation of the First Amendment.
Meredith Wilkes:
Folks who've been watching, I don't think we're too surprised by this decision. We got a preview of it a few terms back in the Matal versus Tam case where the Supreme Court had said a ban on disparaging trademarks was also viewpoint based in violation of the First Amendment. So the ban on scandalous and immoral marks has been stricken down, the ban on disparaging mark has been stricken down. But I think there's probably more to the story here in the future and so we'll just wait and see what happens.
Dave Dalton:
Sure. In fact, we'll get into later on, we're going to talk about maybe is their legislation coming or what other things might be coming up from the ground. But have you seen a rush of trademark applications that you may have not seen in other words, based on this ruling?
Meredith Wilkes:
I think Justice Sotomayor and some of the judges were concerned a little bit about would a decision like the Brunetti decision open the flood gates to lewd or obscene trademarks in a rush to apply and register for these types of marks. And the answer to that is no. And I don't think that we're going to, because the marketplace reality, I think will quell some of those concerns. In the United States at least, you have to use a mark for it to be registered. And I think truly lewd and truly obscene marks aren't going to get a lot of traction such that people will not be able to use them to the point where they could get the United States trademark registration or maintain United States trademark registration protection.
Dave Dalton:
Sure. All right, let's stay with trademarks with you for a second Meredith. Mission Product Holdings, the Tempnology, LLC. Now this was about bankruptcy and trademark licenses, correct? We did a program on this earlier this year. Remind everybody what that was all about and what the likely impact you see coming.
Meredith Wilkes:
That's right Dave. We did talk about this one as well in our Scandalous podcast.
Dave Dalton:
Yeah, it was.
Meredith Wilkes:
Trademark day at the Supreme Court. The mission case involved what happens to a trademark license in bankruptcy. The question was answered by virtue of the bankruptcy code with respect to patents and with respect to copyrights, but the bankruptcy code was silent with respect to what happens when you reject a trademark license in bankruptcy and the court and Justice Kagan pening the 8-1, majority opinion answered that question for us. She said, "We're going to treat them the exact same way."
Dave Dalton:
Right.
Meredith Wilkes:
And so just because a trademark license is rejected, doesn't mean necessarily that the license rights terminate. But simply is going to be treated as a breach of the license as opposed to a flat out rescission of it. And so the practical effect of this decision, I think, is played out in Justice Sotomayor's concurring opinion where she cautions folks saying, "Listen, this doesn't mean that every single trademark license is going to survive bankruptcy."
Meredith Wilkes:
And this puts the power in the hands of the drafters essentially. And you can draft around what happens to your license in bankruptcy. If you want license rights to terminate by virtue of a breach, then you can put it in the trademark license. And in fact, a lot of licenses do contain such a provision. It's not an earth shattering decision, but it does answer an open question that had been out there for some time and it also means that state law will play a role in what happens to your license. And there may be others, depending on what type of industry you're in and all of those things are still alive and well.
Dave Dalton:
I see. Well, at least some clarity now for situations like that which I-
Meredith Wilkes:
Exactly.
Dave Dalton:
I'm guessing it was badly needed. All right, let's talk about 2020, and we're going to stay with Meredith for a second on this. We did talk about Romag Fasteners v. Fossil, Inc. earlier this year. Now this discussion is moving over to the damages side, is that correct?
Meredith Wilkes:
That's exactly right. The Romag decision's an interesting one because we literally have a 50/50 split in the circuits right now as to whether or not you have to prove willful infringement to disgorge an infringer's profits. And profits are recoverable under the Lanham Act. They are a recoverable measure of damages and there is a split of the circuits out there as to whether or not you absolutely, positively have to prove willfulness as a prerequisite to recover them or if willfulness is just a factor to be considered.
Dave Dalton:
Okay. That was the Supreme Court decision, correct?
Meredith Wilkes:
Well, the Supreme Court is currently reviewing that issue right now. In fact, not too long ago, I believe a bunch of law professors just filed their amicus brief on the issue, urging that willfulness should be an absolute requirement before you can recover an infringer's profits. There's competing considerations here and I think that's why you see a 50/50 split. On the one hand for a brand owner, quantifying lost sales and damage to a brand by virtue of infringement can be difficult. And so disgorgement may be the only way to compensate a plaintiff and to deter infringement. But by the same token, there's balancing considerations. If the parties aren't competitors, does a plaintiff get a windfall? There's no statute of limitations in the Lanham Act so longtime infringers can face the prospect of significant profits being disgorged over a long period of time. When you see these competing considerations, I think you get a better understanding about why there is literally a 50/50 split right now.
Dave Dalton:
Sure, it's confusing. Weren't there a bunch of people and a bunch of companies named in that suit? I mean, beyond Fossil, weren't there a bunch of major retailers? I'm thinking Macy's and some people. This is a catch all. I'm thinking of that right case, I think.
Meredith Wilkes:
Yep, that's exactly right. Yeah, retailers are involved in this. It has pretty broad sweeping implications one way or the other. And again, I think one of those true IP cases that the court's going to have to weigh in on.
Dave Dalton:
Okay. I'm surprised something like this hasn't happened before. Booking.com, right? Booking.com, popular travel site. I think people, they book flights and hotels and rental cars and so forth. And the good people at Booking.com want to trademark Booking.com, but the patent office is saying not so fast. What's going on here?
Meredith Wilkes:
That's exactly right. The Booking case is interesting for a whole bunch of different reasons and for trademark nerds, it poses a whole bunch of different questions, but at a very high level, we're talking about generic trademarks and under the Lanham Act, the question is, is this a thing, Booking.com or is it a brand? And if Booking.com is a brand, it can be protected. If it's a thing, then it's not going to be worthy of trademark protection and so the question the Supreme Court is going to have to decide is whether Booking.com is essentially a thing or a brand by virtue of adding the .com to the word Booking. And it raises a whole bunch of different issues with respect to the formalities of trademark prosecution, as well as some implications about recoverable attorney's fees when you take on the trademark office and appeal decisions and so there's a lot really bound up here, but at the end of the day, is adding this .com to Booking enough to make this a brand, as opposed to a thing?
Meredith Wilkes:
And it's very interesting here because Booking.com is a pretty sophisticated trademark owner or it hopes to be called a trademark owner. And it went along and went to the trademark office, got refused, appealed to the TTAB, was refused again. Went into the United States District Court for the Eastern District of Virginia. Introduced new evidence, which is why you go into the district court in a situation like this and implicates the fee provisions and introduced survey evidence. Very compelling survey evidence that 74% of consumers recognize Booking.com not as a thing, but as a brand.
Dave Dalton:
As a brand.
Meredith Wilkes:
And so all of that is going to be in front of the Supreme Court this term if granted cert to make this decision.
Dave Dalton:
Well, based on all the activity and all the flurry of legal action, Booking.com has invested a lot in this and obviously, they're going to play it out to the end. Meredith, I'm always doing this to you, what's your hunch? Give me your take on what's going to happen here.
Meredith Wilkes:
Oh, this one. This one is tough because the question here is the adding of the .com enough to take this as a composite mark and turn it into basically the parts being greater than just Booking or just .com. Because .com on its own is a place, right? It's a top level domain and booking is something that you do to get a hotel reservation. Is the whole greater than the sum of its parts? Maybe. Maybe it is. There are other situations where adding .com can result in a non-generic type of configuration. This one is a tough call, Dave. I don't know that I can make a call on this one. This one's too close to call on the generic issue.
Dave Dalton:
Even as a lay person who knows nothing really about trademark law, other than what I've learned from you guys doing these programs. I have no idea. Sometimes you kind of think, well, this makes sense based on other things I've read and other opinions I know of, but this is a tough one. I'm anxious to see what happens here too.
Dave Dalton:
Not so tough or maybe real tough, depending on your point of view, Patent and Trademark Office is focusing on fraudulent filings moving into 2020. Talk about, if you could briefly, Meredith, and by the way, Patricia, Tracy, we're just moving through the jet, I don't mean to ignore you guys. Please chime in where appropriate. But tell me about what fraudulent filings are, Meredith and what the focus is now. What brought all that about?
Meredith Wilkes:
Last couple of years, the trademark office has seen a substantial increase in applications for marks that really are never going to be used in the United States. This influx of filing creates problems for legitimate brand owners who may want to try and use or register something that arguably is confusingly similar. United States is one of the few jurisdictions in the world that requires use before you can obtain a trademark registration. Most other jurisdictions in the world, they're just first to file and so you don't have to use. And so you file an application and you can get a mark registered and you never have to use it and then that becomes a weapon to use against other folks. But that's not how things work in the United States and we've seen a significant uptick in those filings.
Meredith Wilkes:
So in response, the Patent and Trademark Office has implemented a number of different mechanisms, essentially to rid the register of what are considered deadwood registrations. Registrations that are not in use in the United States and also taking some steps now to combat these fraudulent filings. The office has been engaged in random audits to sort of kick the tires on people's registrations and calling upon people to demonstrate that they're actually using their mark in interstate commerce, to maintain the registration. They put in into effect requirements for US counsel, if you're a forum pro say applicant, and many other jurisdictions have similar requirements but this is one of the things that the trademark office is trying to do to curb the fraudulent filings. If we require US lawyers to show up then perhaps we'll be able to deter this type of activity.
Meredith Wilkes:
They're considering accelerated cancellation programs, specimen protests and a number of safeguards are being put into place to protect the existing application and registration information to prevent manipulation. A lot of different efforts underway. I think we can expect at some point in 2020 or possibly 2021, that the office will start to utilize software that will help them determine whether or not the specimen of use that you're submitting, the demonstration of use in interstate commerce to determine whether or not this is actually really use or if it's fraudulent. If someone just photo shopped a label onto a good to obtain a registration. I think those are some of the things that we can expect to see. It's becoming a real problem and the office is very engaged in trying to find efficient and effective ways to combat it.
Dave Dalton:
Yeah. Well, it sounds like it was certainly time, based on the way you described everything. Okay, before we leave trademarks, let's talk about what might be happening on the legislative front. There's the possible return of the presumption of irreparable harm to trademark cases and the possible modification of two, a prohibition on dispiriting or scandalous marks. We talked about that a second ago, but talk about where this might come out, legislatively Meredith, who might move something through, which legislative body? What might be happening?
Meredith Wilkes:
I think we talked about this in our Scandalous podcast a while ago, but modifying a landmark just isn't the sexiest way to get yourself reelected to Congress or the Senate in upcoming election. But that said the combination of the uptick in fraudulent filings in the United States Patent and Trademark Office, coupled with the fact that the Lanham Act is now Owen to courtesy of the Brunetti and the Matal decisions may spark some movement. And how sub committee is currently considering legislation on the fraud front, on the reparable harm front. I think in part movement in the house at least, could be impacted by what the court does in romantic, depending on what the court does and what the court finds with respect to willfulness as a prerequisite for disgorgement. That could also impact movement on the legislative front.
Dave Dalton:
Okay. We will watch carefully. Okay. Let's move into patent litigation. We're going to talk to Tracy Stitt for a couple of minutes. Tracy, and forgive me, I'm going to read, so I get this correct. They tell you don't read because it doesn't sound natural, but I have to make sure I present this appropriately. In Helson healthcare V Teva pharmaceuticals. The question was whether under the America Invents Act, an inventor sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining patentability. Okay. Tracy, unwrapped that for me. What happened and what are the implications moving forward.
Tracy Stitt:
Sure and first off, just want to compliment you did a great job reading that. Very well done.
Dave Dalton:
See, I've been at Jones day six years. I finally found something I can do.
Tracy Stitt:
Well. As you mentioned, Dave, the Supreme court started off 2019 with a bang in the patent world by issuing this health in decision. And what the decision did was address some lingering questions regarding the scope of the on-sale bar, which is a provision that holds that sales of an invention that are more than a year before the filing date of a patent can be prior art and can invalidate a patent.
Dave Dalton:
Okay.
Tracy Stitt:
And the questions that sort of led to this was the change in language. There was a slight change in language when the America Invents Act was enacted in 2011, the on-sale bar changed slightly. It used to read simply in public use or on sale on this country. And then it was changed to add somewhat of a catch all phrase. Basically, now it says in public use on sale or otherwise available to the public.
Tracy Stitt:
And so this led to some questions regarding, well, was this a change in the law? Does this change the scope of the on-sale bar? In fact, with respect to a particular type of sales secret sales. In other words, if you sell your invention to a third party, but require them to keep it confidential, can that trigger the on-sale bar?
Dave Dalton:
I see.
Tracy Stitt:
The law was clear before the AIA. In fact, there was well-established precedent that held that those secret sales could in fact invalidate a patent. And so with this slight change in language came questions as to whether it was in fact a change in the scope of the on-sale bar. And the Supreme court came out with a unanimous opinion written by Justice Thomas holding that in fact, the meaning of the on-sale bar was well settled before the enactment of the AIA and the new language did not upset that body of legal precedent. Basically, holding all of that, all of the case law remained good case law and the on-sale bar was not in fact expanded in scope by this edition of, or otherwise available to the public. In other words, a commercial sale to a third party who's required to keep the invention confidential is still enough to trigger the on-sale bar.
Dave Dalton:
Okay. Was that an outcome you expected? As the matter was moving through the judicial system.
Tracy Stitt:
Yeah. It makes sense. Given the amount of pre-AIA precedent holding that the on-sale bar has a well-established meaning. And I think the fact that the court's opinion was unanimous is demonstrative of the fact that this is the right outcome.
Dave Dalton:
Yeah. I don't know if there's any such thing, I should say as a slam dunk at that level, but 9-0 sounds pretty definitive to me. In mid December in Peter V NantKwest, the Supreme Court unanimously held that the United States Patent and Trademark Office cannot recover the salaries of its legal personnel under section 145 of the Patent Act. Tracy, this was sort of a slam dunk, I think. 9-0 decision, Justice Sotomayer wrote the opinion. Tell us what the arguments were here, what the issues were and what are the ramifications of that high court decision moving forward.
Tracy Stitt:
Well, first I think it's interesting to note that the Supreme Court ended 2019 in a similar way that it started, which is with a unanimous affirmance of the Federal Circuit. And the Nan quiz case was a case about fee shifting. And for a little background, the Patent Act essentially sets out to mutually exclusive pathways to appeal an adverse decision by the PTO. You can go either directly to the Federal Circuit or choose a De Novo route where you essentially file a new civil action at the Eastern District of Virginia. If you choose the latter route, you're allowed to introduce new evidence, potentially expert testimony and thus that route is often more expensive. Applicants who choose to go through the Eastern District of Virginia are subject to a fee shifting provision, 35 USC section 145. And that provision provides that all of the expenses of the proceedings shall be paid by the applicant. That provision applies regardless of who wins. The fee shifting isn't limited to prevailing parties.
Dave Dalton:
Okay.
Tracy Stitt:
And so the NantKwest case actually has an interesting history before we get up to the Supreme Court. It started when the applicant challenged an adverse decision from the PTO denying a cancer drug. They chose the De Novo route, so the more expensive route and the Eastern District of Virginia granted summary judgment to the Patent and Trademark Office. And so at that point, the director did something that hadn't been done in over 170 years of section 45 and that is to seek over $100,000 in expenses, which included attorney's fees that were incurred in defending the action. The Eastern District of Virginia denied that recovery and the PTO appealed to the Federal Circuit. In February of 2017 is when we first go to the Federal Circuit. And a divided panel, reversed and remanded for actually for grant of attorney's fees, holding that they weren't sure of the American rule applied here. And the American rule is sort of a bedrock principle of litigation here in the U S, which is that each party pays their own fees. They pay their own way, unless that presumption can be overcome.
Dave Dalton:
Okay.
Tracy Stitt:
The Federal Circuit said, initially, they weren't sure that the American rule would apply, but even if it did, they held that the language of section 145, which used the term expenses included attorney's fees. But then an interesting thing happened, which is that without any prompting from the parties, the Federal Circuit Suiz Vonte issued an order, vacating its opinion and reinstating the appeal and voted in favor of conducting an on bonk hearing. Essentially a do over.
Dave Dalton:
Okay.
Tracy Stitt:
And in July of 2018, the on bonk opinion issued and this time the Federal Circuit came out the other way and affirmed the Eastern District of Virginia's denial of attorney's fees, holding that the American rule applied and the language of the statute didn't overcome it. It was interestingly, it created somewhat of a circuit split because the fourth circuit had previously held that expenses as used in a corresponding fee shifting provision in the Lanham Act, which is addressing trademarks, included attorney's fees. With that background, we get to the Supreme Court and they accept the petition and the question that was presented to them earlier in 2019 was whether the phrase, all of the expenses as used in section 145, could encompass personnel expenses of the USPTO, such as attorney's fees that are incurred when they defend litigations. The Supreme Court hears arguments on October 7th and as you noted, they made short work of this one. Their opinion came out on December 11th. That's pretty quick considering how slow the wheels of justice can often move.
Dave Dalton:
Well, yeah. And I got to give you, perhaps here because you and I had talked about this case middle of last year or so. Somehow it came up maybe in another podcast, maybe you just you were... And you kind of predicted this outcome. I didn't know if you said it was going to be 9-0, but I remember you were leaning certainly this way if I can tell our audience that.
Tracy Stitt:
Yeah. Maybe I should retire from ever predicting Supreme Court outcomes again, but I think this one... The tenor of the oral argument sort of indicated where the justices were going to go here and the way they came out was, first of all, they held... That the American rule did apply to section 145, so they rejected the government's argument that that rule only applied to so-called, prevailing party statutes. And then the question became, okay, let's look at section 45. And are we in a world where that presumption is overcome? In other words, is it clear enough that attorney's fees should be included here that we're going to allow them to be recovered.
Dave Dalton:
Okay.
Tracy Stitt:
And the Supreme court obviously, all of them were in agreement that the answer to that was no. The plain text of section 145, doesn't overcome the presumption that the use of expenses in other common statutes also doesn't overcome the presumption of the American rule. And finally, the history of the Patent Act itself. In fact, reaffirms that attorney's fees should not have been included. Again, the practice of the Patent Office for over 170 years before this case was really to not seek those types of fees. And that weighed in the Supreme Court's decision. And other parts of the Patent Act where attorney's fees are included. The Congress was explicit, for example, section 285. This was a case where again, the Supreme Court didn't take too long to make up their mind and came out in a unanimous way.
Dave Dalton:
Okay. Besides the obvious, what do we take away from this decision? Is there anything underlying that we ought to be aware of moving forward.
Tracy Stitt:
I think the American rule continues to be very important in US litigation and this reaffirms that, and in practical terms what's going to happen is the PTO will go back to the practice that it had really been following for over 150 years. And that is they won't be seeking attorney's fees in these appeals or the De Novo Review at the Eastern District of Virginia when an applicant is dissatisfied with a decision that they have.
Dave Dalton:
All this backstory going back to October 17 or something, you said. And yet we're kind of back where we are or where we were, aren't we.
Tracy Stitt:
Yep. In effect, the Baton office tried something different and then they were not successful. And so we'll go back to the status quo.
Dave Dalton:
Good enough. Tracy, thanks.
Tracy Stitt:
Thank you.
Dave Dalton:
Let's go with Patricia Campbell. We recorded a podcast on section 101, in patent eligibility earlier in 2019. Patricia, what's happening? Or what should we be looking for in terms of section 101 reform, moving forward.
Patricia Campbell:
Yeah, David. The three branches of the government have been busy. We have the courts being busy, USPTO being busy, and we also have Congress being busy, so maybe we'll start with the courts. And we've had a case that was decided by the Federal Circuit in 2018. And anybody who's a patent practitioner will know this case. It's a Berkheimer versus Hewlett Packard. And in 2018, the Federal Circuit held that the question of whether certain claims limitations represent, and I'm going to put this in quotes, "Well understood routine conventional activity."
Patricia Campbell:
Raised a disputed factual issue, which precluded summary judgment that all of the claims that issue were not patent-eligible. Then at the end of 2018, Hewlett Packard petitioned for right of on the following question. And the question is whether patent eligibility is a question of law for the court, based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent. And the point is the following, that if patent eligibility is a question of law, then patents can be kicked out by courts early on in summary judgment as not meeting their hurdle for 101. But if patent eligibility becomes a question of fact, then litigation proceedings continue. This is a hot topic.
Dave Dalton:
Right.
Patricia Campbell:
We've seen a lot of amicus briefs filed in 2019. It's not clear that the Supreme Court is going to grant cert for this particular case, but we should know reasonably soon.
Dave Dalton:
Okay. Go ahead please, but if the court doesn't then what happens then? We just stay where we are?
Patricia Campbell:
Then the Federal Circuit case law becomes a law of the land.
Dave Dalton:
Okay.
Patricia Campbell:
And Meredith, I wanted to turn to you for a moment because you've been watching the filings in the Berkheimer case, and you may have an update for us.
Meredith Wilkes:
It's interesting, Patricia. Earlier this year, I think like two days after the Supreme Court asked the Solicitor General to weigh in on this 101 issue in the Berkheimer case, we were talking about in our podcast and I don't know what's going on with the vibes out there, but literally last week, as we were planning for our podcast, the Solicitor General had responded to the Supreme Court's request and provided its commentary on both the Berkheimer petition and the Vanda case, which is an important decision in your space and in diagnostic medicine. And the Solicitor General has told the Supreme Court that it does not think that granting certiorari in either the Berkheimer decision or Vanda is the right thing to do. And for reasons that I'll let you expand on with respect to Vanda. And the court said, "Listen, the Berkheimer question really is one that is sort of a civil procedure type question, right? It's just a question of laws, is just a question of fact, and it's premature to make that determination until we get to the other issue. The more 101-centric issue that's raised by Vanda and all the other sort of splits that are there running around out there." And so the Solicitor General at least has weighed in now and said to the Supreme Court on both cases, "No, we don't think the time is right."
Patricia Campbell:
Yeah. And that's an interesting segue for taking a look at what's going on in the life sciences. Meredith, you mentioned the Vanda decision, which was a decision in 2018 in the Federal Circuit. And there was another important decision in the Federal Circuit, Athena Diagnostics versus Mayo Collaborative Services. And earlier on in 2019, the Federal Circuit invalidated a seen as patent claims again, under section 101, as being directed to diagnosing neurological disorders by detecting the presence of antibodies to a certain protein. Athena didn't like that result and in October of this year they filed a petition for writ of cert on the following question, whether renew in specific method of diagnosing a medical condition is patent eligible subject matter where the method detects a molecule, and here's the key, never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.
Patricia Campbell:
What they're really saying is, look, if we meet the hurdle for novelty and probably also for inventive step, why are we being cut off at the knees with respect to patent-eligible subject matter. That was the petition in November, just last month of 2019, Mayo filed its brief arguing that, and I put this in quotes, "Any further action regarding the patentability of medical diagnostic claims such as Athena's that employ conventional known techniques should and does rest with Congress." Yeah so we're going to turn to Congress in a minute here Dave.
Dave Dalton:
That's reassuring, but go ahead.
Patricia Campbell:
I know. And then just yesterday, yesterday being December the 9th, 2019, Athena filed its reply brief. And this reply again, reiterated the points made in its petition for cert and dismissed may of argument. And this is kind of interesting because speaking of timing, as Meredith was pointing to a few minutes ago, this reply, that is Athena's reply comes three days after the United States Solicitor General recommended that the Supreme Court grants cert in Athena or another case rather than in Vanda pharmaceuticals and Berkheimer. Who knows what's going to happen, but it's possible that the Supreme Court might grant cert for Athena, might not grant cert for Berkheimer. We really don't know. And I really can't prognosticate-
Dave Dalton:
You knew what I was going to ask, right? You cut me off. You know I was going to try and put you in a corner and you just wouldn't have it so good for you Patricia.
Patricia Campbell:
I really don't think any of us really know how the Supreme Court is going to rule on these life science cases. And I really wouldn't even want to hazard a guess, but there's going to be a lot of action in 2020. And I think we might well see this Athena case go to the Supreme Court. That's what's happening with the courts. If I can take two seconds and talk about the USPTO and then Congress and then we can move on to AI.
Dave Dalton:
That sounds great Patricia, go ahead.
Patricia Campbell:
Okay. With the USPTO as you pointed out David, our very first podcast of 2019 was about patent subject matter eligibility and included the USPTOs revised guidance in January of this year. And the USPTO has not been idle. In October of this year they published a patent eligibility guidance update, where they had additional new examples and index of all the old examples in a chart of subject matter eligibility court decisions. What you can say about the USPTO is that they're trying their darndest to keep up with the courts and with every new Federal Circuit decision that comes along and to provide their guidance to applicants and to patent examiners going forward and then all eyes on Congress.
Dave Dalton:
Right.
Patricia Campbell:
Congress has been busy as well. What we know is that on April 17th of this year, 2019, several lawmakers, and here's the key, from the Senate and also the House of Representatives released a bipartisan. When was the last time we saw that? Bipartisan, bicameral framework for statutory reform and the statutory reform is really, let's get rid of the old judicial exceptions based on case law for patent eligibility and let's just enumerate what is patent-eligible? We'll see what happens. Congress has been busy with other things as we know, but all eyes are on Congress for 2020.
Dave Dalton:
Is it in committee somewhere or is it moving to the floor of the House or what are you hearing in terms of how soon might something move along with this?
Patricia Campbell:
I think it's stalled, David. I can't tell you exactly where it is, but I think that Congress has had its eyes in different directions.
Dave Dalton:
Sure.
Patricia Campbell:
I would expect them to pick it up again in 2020.
Dave Dalton:
Okay. All right, good. Well, it's nice to see progress at least, or the appearance of progress if nothing else. We're going to wrap this up in a few minutes. I wanted to talk about AI for a second, artificial intelligence. If there's a hotter topic relating to IP, in a lot of other areas of law for that matter, I don't know what it would be, but Patricia can you talk about some of the significant developments in the artificial intelligence space this year. Is there anything moving that we should know about?
Patricia Campbell:
Yeah, no case law, other than a deep concern, that subject matter eligibility may come into play here, but the USPTO here again has been busy. In August of 2019 they published questions related to the impact of artificial intelligence inventions on patent law and policy.
Dave Dalton:
Okay.
Patricia Campbell:
In October of this year, they extended this inquiry to copyright trade secret trademark and other IP rights impacted by AI. And then again, in October of 2019, the USPTO issued guidance to address, quote unquote, "mental step" challenges to patent eligibility of AI inventions. Just to step back momentarily, or there's a case law that suggests that if you can do the calculation in your head through mental steps, it's not patent-eligible subject matter. One thing that AI is, is very disruptive and clearly the USPTO examiners don't know how to review patent applications directed to this area of artificial intelligence. And it's a moving target right now.
Dave Dalton:
Lots to watch next year.
Patricia Campbell:
Lots to watch.
Dave Dalton:
Let's wrap it up with this. Women in IP, Meredith let's get back to you. Jones Day's Women in IP initiative had another great year in 2019. Talk for a moment, if you could, about what the group did this year and what the plans are for 2020.
Meredith Wilkes:
I agree a 100% Dave. Our Women in IP initiative really did have a fantastic 2019. We did some terrific podcasts.
Dave Dalton:
Yes we did.
Meredith Wilkes:
And we also offered some really great CLE programs that are Jones Day offices throughout the United States in all sorts of disciplines. In the trade secret discipline, in the litigation discipline, in the brand discipline and in leadership. And these were well attended by our clients, by members of the community and of course by all of our Jones Day attorneys. And we are looking to continue that very positive momentum into 2020, without giving away everything. To sharing all of our secrets. You can look for more of the same. We're going to do some more podcasts if you'll have us. And we will offer at least four more CLE programs next year. In the brand space, in the leadership space, in the courtroom space. And new to our lineup in Silicon Valley, we'll be doing a technology transactions and licensing program. A lot of really great content to come from Women in IP in 2020 to say the very least.
Dave Dalton:
And you guys really do do a good job. Some of these things are not always well attended. It depends, it's nobodys fault, but what's interesting, what isn't, what do people need in terms of CLE, all that stuff. But you guys tend to, I don't know if there's any such thing as a sellout in this context, but I know you guys pack the room, so congratulations. You're doing something right to bring people in. That's awesome. So, congrats.
Meredith Wilkes:
Well thank you so much. We've got a really great group of people devoted to the cause and we really pride ourselves in being able to deliver some great programming. We're very blessed in that respect.
Dave Dalton:
Yeah. I look forward to keeping tabs and you guys do a lot more of these, so thanks so much. Meredith, thanks. Patricia, thanks. Tracy, thanks.
Tracy Stitt:
Thank you so much Dave.
Meredith Wilkes:
Thank you.
Patricia Campbell:
Thank you.
Meredith Wilkes:
Complete bios for Meredith Wilkes, Patricia Campbell and Tracy Stitt can be found at jonesday.com. While you're there, check out our insights page for more podcasts, publications, videos, blogs, newsletters and other important information. Subscribe to JONES DAY TALKS® at Apple Podcasts or where else podcasts can be found. As always, thanks for listening. I'm Dave Dalton. We'll talk to you next time.
Speaker 5:
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