IPOwners Quarterly™ 06/30/2020

IN THIS ISSUE…

• Executive Director’s Welcome Message
• 2020 Virtual Annual Meeting to be Held Week of September 21
• IP Harmonization: An Overview and A Discussion with IPO President Daniel J. Staudt
• U.S. IP Policy Developments – 2nd Quarter 2020
• U.S. IP Case Law Roundup
• IPO Education Foundation Launches Stroke of Genius™ Season Three
• IPO Member Highlight – Kirby Lee, Ecolab
• Remembering Gerry Mossinghoff and Todd Dickinson
• IPO and IPO Education Foundation Joined World IP Day Celebration
• A History of the Solar Cell, in Patents

Jessica Landacre

Executive Director’s Welcome Message

Welcome to the second issue of the IPOwners Quarterly™.  Since the last issue, the fight against the pandemic continues, and in recent weeks, the tragic death of George Floyd has caused an uprising in the U.S. against systemic racism and inequality. The events that have dominated the first half of 2020 will likely be weighing on our minds for the remainder of the year and beyond.  In this rapidly changing and uncertain environment, it is imperative that we reflect and evaluate opportunities to evolve as individuals and as a community.

IPO is more than an intellectual property trade association—we are a community. We join our Black members, colleagues, and friends in the fight against racism and injustice. The IPO Board of Directors is committed to creating a diverse and inclusive membership. Our vitality as an association—and an IP profession—depends on valuing and reflecting diverse perspectives. With that in mind, IPO will be intentional about providing inclusive services, professional development, and leadership opportunities for its members and staff to inform and support a strong intellectual property system.

Some progress has been made in recent years, with the development and implementation of a policy to feature diverse panels on IPO CLE programs and the establishment of a Diversity & Inclusion Committee and four Resource Groups (Black IP Professionals, Pride and Allies IP Professionals, Asian IP Professionals and Hispanic IP Professionals) which are open to all members as an additional way to connect and learn from one another. The Diversity & Inclusion Committee has published a beta version of its Practical Guide to D&I for the Legal Profession. The Pride and Allies Resource Group recently published a slide deck on IPO.org celebrating Pride Month by highlighting individuals from the LGBTQ+ community with ties to IP. The Black IP Professionals Resource Group is planning a free webinar on the challenges facing Black patentees and is developing a directory of Black IP professionals.  If you have not already, join a Resource Group to be a part of the conversation and to help our association continue to evolve and thrive.

Since the March issue, we have made the difficult but responsible decision to hold the 2020 IPO Annual Meeting virtually.  Our priority is the health and safety of our members, but we are also aware that many organizations have restricted travel and spending through the fall or longer.  We will convene our members on a secure and engaging virtual platform during the week of September 21. Many aspects of the meeting that IPO is well-known for will remain unchanged—particularly high-quality CLE topics and excellent speakers. The 2020 Virtual IPO Annual Meeting will feature live, simulated-live, and on-demand educational sessions in four tracks: Patents, Trademarks/Copyrights, Industrial Designs, and new this year, Operations.  We are also working diligently to create valuable networking opportunities in a virtual format via workshops, an interactive exhibit hall experience, and other social events.  Look for a complete program and other details—including a significantly discounted registration fee— in July.

The IPO Education Foundation Board of Directors has also decided to change the format of its Annual Awards Dinner from an in-person gala to a free online-event that will showcase award winners and other special guests.  Although we will miss the in-person conversations and reunions that are a highlight of this event, the Foundation Board intends to celebrate the organization’s 20th anniversary in an innovative new way, bringing you inspirational insights, ideas, and opinions from leaders in our field. Stay tuned for more information about the 2020 Foundation Awards Online Events, which will be held in December.

I am disappointed that we will not see each other in person this year. But I am certain this is the right decision and one that provides us with the opportunity to create new experiences and traditions. Our outlook on the challenges we face will determine our success.

I am proud that IPO evolves and grows stronger every year. Current events bring into focus the importance of community and the necessity of fostering an IP system that stimulates the development of innovative solutions to address new challenges.  Individually and together, we can make a difference.

Be well, stay safe, and I look forward to connecting with you soon.

2020 Virtual Annual Meeting to be Held Week of September 21

We are looking forward to bringing our members together in a new and innovative way this year for the 2020 Virtual Annual Meeting on a secure and engaging virtual platform. The dates will remain the same: the meeting will begin on Monday, September 21, and end on Wednesday, September 23. For information about topics, speakers, and to view the schedule, visit www.ipo.org/AM2020. In the meantime, some of the highlights that the 2020 Virtual Annual Meeting will offer include:

• Significantly discounted registration fees – pricing and registration details will be available in July 
• Live, simulated-live, and on-demand educational sessions in four tracks: 
  • Patents 
  • Trademarks/Copyrights 
  • Industrial Designs (offered for the 2nd year) 
  • Operations (new offering this year!) 
• CLE credit, including ethics and diversity & inclusion credit
• Interactive workshops 
• Committee organized presentations and meetings 
• Engaging keynote presentations by IP thought leaders
• Networking opportunities where members can connect 
• Virtual Exhibit Hall 

IP Harmonization: An Overview and A Discussion with IPO President Daniel J. Staudt 

Thomas Valente

By Thomas Valente, IPO Senior Director for Global Affairs

IPO has long been involved in a range of efforts to harmonize substantive IP laws and procedures around the world.  The potential benefits of harmonization are extensive—some include efficiency, cost savings, predictability, higher quality, and transparency.  While pessimists might view attempts at harmonization as quixotic due to the many legal and procedural differences that exist in different jurisdictions, concrete achievements have already occurred and further successes appear to be in sight.

IPO’s involvement in discussions about how best to harmonize patent office procedures primarily take place through the IP5 Industry group.  IP5 Industry comprises a total of six associations based in China, Europe, Japan, Korea, and the U.S.  Delegates from these associations meet with and provide stakeholder views to the IP5 Offices (China’s National Intellectual Property Administration (CNIPA), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KINPA), the U.S. Patent Office (USPTO)), and the World Intellectual Property Organization.  Activities include an annual meeting of IP5 Industry with the IP5 Heads of Office, as well as meetings of a Global Dossier Task Force and an IP5 Industry Consultation Group.

The Industry Trilateral is another harmonization-related group in which IPO participates, with three additional U.S., European, and Japanese organizations. Its aim is to create a package for harmonization of substantive patent laws.  The group reports on these discussions to government representatives from Group B+ and Sub-Group B+.  Traditionally, the Industry Trilateral has also met once a year with the heads of the EPO, JPO, and USPTO.

IPO also participates in stakeholder discussions about harmonizing issues related to trademarks and industrial designs through the TM5 and the ID5, respectively.  These are venues for cooperative efforts between governments, which include meetings where stakeholders can hear updates on TM5 Office projects and provide feedback, suggestions, and proposals. CNIPA, the European Union Intellectual Property Office, JPO, KIPO, and the USPTO participate in the TM5 and the ID5.

IPO President Dan Staudt (Siemens Corp.) has been very involved in IPO’s patent harmonization efforts and has led IPO’s Industry IP5 and Industry Trilateral delegations for some time.  I recently asked him some questions about the past, present, and future of these harmonization efforts.

Interview with IPO President Dan Staudt 

Dan Staudt

Q: What initially led you to join the IPO harmonization team— and what motivates you to continue to volunteer your time to work on these issues? 

A: I have always had an interest in international patent law, beginning in law school. So, it is very fitting that I work for a global company, and I was very fortunate to live in Germany for over a year managing the Siemens Patent activities in Europe and working with the EPO, the Germany Patent Office, and interfacing with WIPO while there.  I enjoy discussing issues with the global patent bar and the various patent offices to try to make patenting more efficient and cost–effective for everyone.  

Q: The IP5 has been very active in trying to find ways to harmonize patent office procedures.  What do you view as its greatest accomplishment in recent years?  

A: There have been a number of great accomplishments and Global Dossier, which provides access to dossier information of families of applications filed in participating IP offices, is an excellent example.  There are still many additional projects that we would like to pursue in order to achieve further benefits for patent owners and for the system as a whole.   

Q: Which areas seem most promising for procedural harmonization going forward? 

A: The global assignment project, where one assignment could be filed in one jurisdiction that would satisfy assignment recoding requirements globally, would save a lot of time and effort for IPO members.  Also, harmonizing claim formatting and drawing formatting are two great examples of how we can make things more uniform procedurally and thus save a lot of administrative time and cost for patent filers.  In addition, we believe that there are great possibilities to expand the Global Dossier system and, that e-authentication measures that could alleviate the need for wet signatures, notarization, and other authentication requirements hold great promise.

Q: There is widespread recognition that substantive patent law harmonization is very complicated and is a long-term project.  What is the greatest challenge in trying to harmonize patent laws and how can it best be addressed?  

A: Probably the greatest challenge has been each country’s different perspective on patents.  Here in the U.S, we primarily use IP to protect our innovations.  In some other nations, IP is primarily used in a defensive manner to make sure entities do not infringe upon someone else’s rights—that is why grace period is such an issue for those countries. They do not like the fact that, due to a grace period, if an inventor published his invention before filing his patent, that publication would not automatically be prior art allowing one to know whether or not the invention can be practiced.  A grace period is very unsettling to them.  We have tried to meet this concern by coming up with defenses of use around a grace period that would make a grace period more acceptable to these countries while maintaining the principles of a grace period that would be necessary to obtain approval of harmonization here in the U.S.

Q: Some U.S. users would say that they would rather keep the patent system that we have, rather than change it at all in order to have international harmonization.  What would you say to them about the benefits of harmonization? 

A: The biggest benefits of harmonization for IP owners will increase efficiency and lower costs.  If you are looking to obtain a patent on an innovation here in the U.S. only,  I can understand your desire to maintain the current U.S. system, but if you want to file outside the U.S., the lack of harmonization means reworking an application and spending more of your foreign counsels’ time to meet local standards, thus greatly increasing expense.

Harmonization would result in not only cost savings for the patent owner, but also for the patent offices, which would be able to better share search and examination results.  This should also reduce the office fees paid by patent owners.  This joint search and examination would also result in better quality patents.

The lower costs achieved through harmonization will allow IP owners to direct more of our resources to innovation and to filing more patent applications.  Harmonization would also provide the same consistent scope of patent protection in each country and improve the certainty of rights.  All of these things are good for innovators seeking international protection.

U.S. IP Policy Developments – 2nd Quarter 2020

Samantha Aguayo

By Samantha Aguayo, IPO Deputy Executive Director & Chief Policy Counsel

When we published the first Quarterly on March 30, the U.S. had just entered the throes of responding to the coronavirus pandemic. The U.S. government was focused on managing the crisis, including providing relief to those who were most affected by illness and the economic devastation that the pandemic caused.  

While the pandemic and the resulting economic turmoil shifted Congress’ attention away from the specific policy issues that populated IPO’s legislative and regulatory agenda for much of the first quarter of this year, it also afforded IPO an opportunity to educate Members of Congress about the relationship of intellectual property rights to the scientific and medical innovations that are crucial to saving lives as well as the importance of intellectual property rights to U.S. economic prosperity.   

We shared with each chamber’s Judiciary Committee members the first episode of IPO Education’s new season of the Stroke of Genius™. “Patents in Pandemic” addresses the COVID-19 outbreak through the lens of intellectual property. Experts from across industries discuss how intellectual property incentivizes innovation and how it is being leveraged to respond to COVID-19.   

IPO shared with Congress multiple reports published in the IPO Daily News™ highlighting our corporate members who are providing relief and support to their communities and the world during the current public health crisis. 

Finally, in celebration of PRIDE month during June, we shared with the House co-chair of the Congressional LGBTQ+ Equality Caucus a 30-page slide presentation created by IPO’s Pride and Allies Resource Group, a division of Diversity and Inclusion Committee, showcasing LGBTQ+ individuals with connections to intellectual property.

Aside from this education campaign, IPO continued its legislative and regulatory work in the second quarter of 2020, and we summarize such activities below.  

Impact of COVID-19 on USPTO Operations and Funding  

The USPTO instituted several measures in response to the pandemic. In mid-March, it closed all offices to the public until further notice and waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card. Exercising authority Congress provided under the “Coronavirus Aid, Relief, and Economic Security Act” or the “CARES Act,” a $2 trillion stimulus package, the USPTO also extended the time allowed to file certain patent and trademark-related documents and to pay certain required fees for delays caused by the outbreak.

In response to concerns about the impact of the economic downturn on USPTO funding, in early April the leaders of the Patent Public Advisory Committee (PPAC) and Trademark Public Advisory Committee (TPAC) issued a letter to House and Senate Judiciary Committee leadership requesting that $1.023 billion in user fees collected by the USPTO from 1990-2011 that it was not authorized to be made available now so the Patent Office “has the resources to support the recovery efforts of our nation’s economy during and in the aftermath of the COVID-19 pandemic.”

A week later, leaders of both the House and Senate Judiciary Committees and IP Subcommittees wrote to USPTO Director Andrei Iancu asking about the effect of the COVID-19 pandemic on the Office’s operations and funding. In his June 10  response, the Director indicated that trademark fee collections were  9.2% lower than expected for 2020 and that he expected 2021 trademark revenues to be lower than previous projections. The trademark operating reserve is supplementing fee collections, which could fund trademark operations for 13 weeks in the absence of fee collections. However, the fund is dependent on fee collections and will be more rapidly depleted as it is used to supplement fee revenues.

The impact of economic downturns on patent fee collections tends to be somewhat delayed. Iancu indicated that the patent operating reserve will likely be sufficient to supplement any loss of revenue in 2020 but that recent decreases in filing will likely lead to revising revenue projections downward for 2021 and 2022. The agency is “conducting multiple revenue assessments and contingency plans to compensate for anticipated lower revenues.”

The USPTO has undertaken numerous cost-cutting measures and is adjusting plans for 2021 in response to the expected decrease in revenue. However, Iancu’s letter notes that should supplemental funding become necessary due to the shortfall and depletion of operating reserves, “Congress could make available user fees and surcharges previously collected by the USPTO (between 1990 and 2011)” that the USPTO was not authorized to spend.

Impact of COVID-19 on U.S. Copyright Office 

The U.S. Copyright Office also rolled out several changes in response to the COVID-19 pandemic. For instance, the Office has adjusted through July 10th regulations related to certain registration claims, notices of termination, and section 115 notices of intention and statements of account. On May 8th, the Copyright Office published an interim rule amending its regulations governing the registration of copyright claims in secure tests to address disruptions caused by COVID-19. The interim rule allows otherwise-eligible tests that are administered online during the national emergency to qualify as secure tests, provided that the test administrator employs sufficient security measures. It also solicited comments on the technological requirements needed for examination of secure test claims via secure teleconference in June.

Section 101 Reform   

In late April, the USPTO published a report authored by the Office of the Chief Economist titled “Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International.” The report highlighted how recent actions undertaken by the USPTO, including revised examination guidance issued by the Office in 2019, have brought greater predictability and certainty to the determination of patent eligibility in the technology areas most affected by the decision.  

In May 2020, Senate Judiciary Subcommittee on IP Chairman Thom Tillis (R-N.C.) published a piece in IP Watchdog saying “If IP Stakeholders Can’t Find Consensus, Congress Can’t Help…..Last year, [Ranking Member Chris] Coons[(D-Del.)] and I led an extensive effort to lay out a framework for Section 101 reform. At the end of the day, that process stalled because stakeholders refused to compromise. They let the great and perfect get in the way of the good.” 

Congressional Action on Counterfeit Goods 

In early March, House Judiciary Committee Chairman Jerrold Nadler (D-N.Y.) and Ranking Member Doug Collins (R-Ga.) joined IP Subcommittee Chairman Hank Johnson (D-Ga.) and Ranking Member Martha Roby (R-Ala.) to introduce the “Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce” (SHOP SAFE) Act of 2020. This legislation seeks to combat the sale of unsafe counterfeit goods by incentivizing platforms to engage in best practices for screening and vetting sellers and goods, penalizing repeat offenders, and ensuring that consumers have the best (and most accurate) information available to them when purchasing goods online. In exchange for adhering to these best practices, online platforms would benefit from being immunized from contributory liability for trademark infringement.    

The House Energy & Commerce Consumer Protection Subcommittee held a hearing titled “Buyer Beware: Fake and Unsafe Products on Online Marketplaces.” Witnesses included Dharmesh Mehta (Vice President of Worldwide Customer Trust and Partner Support at Amazon), Amber Leavitt (Associate General Counsel and Head of IP at eBay), Jeff Myers (Senior Director for Intellectual Property, Apple), Andrew Love (Head of Brand Security / Investigations / Global Enforcement at Specialized Bicycles), Lori Wallach (Director, Global Trade Watch at Public Citizen), and David Friedman (Vice President of Advocacy at Consumer Report). The discussion focused on the prevalence of counterfeit, stolen, and unsafe products on online platforms and how they threaten American consumers. In her opening statement, Chair Schakowsky declared that “organized retail crime, selling counterfeits and stolen products, poses a threat to consumers who are unwittingly purchasing these items.” She called on online marketplaces to prioritize safety and accountability over profit. Schakowsky outlined the goal of strengthening the existing Consumer Products Safety Commission’s (CPSC) relationship with Customs and Border Patrol (CBP) to slow down the flow of counterfeit and unsafe products flooding the market.  

Digital Millennium Copyright Act Review 

On May 21, the U.S. Copyright Office released the findings of its multi-year study of Section 512 of the U.S. Copyright Act. Enacted as part of the Digital Millennium Copyright Act (DMCA), Section 512 established a system for copyright owners and online entities to address online infringement, including limitations on liability for compliant service providers to help foster the growth of internet-based services.  The report concludes that the operation of the section 512 safe harbor system today is unbalanced and highlights areas where current implementation of Section 512 is out of sync with Congress’ original intent, including: eligibility qualifications for the service provider safe harbors; repeat infringer policies; knowledge requirement standards; specificity within takedown notices; non-standard notice requirements; subpoenas; and injunctions.

Although the report does not recommend any wholesale changes to Section 512, the Copyright Office points out these and other areas where Congress may wish to consider legislation to rebuild the original balance between rightsholders and online service providers. It also identifies several non-statutory areas of untapped potential to increase the efficacy of the statute and recommends additional and government and stakeholder focus on education, voluntary cooperation, and the use of standard technical measures.

After initial delays in the schedule due to the COVID-19 pandemic, the Senate IP Subcommittee resumed its DMCA review with a hearing on Section 512 on June 2that considered the statute’s notice-and-takedown system. The following witnesses testified on the first panel: Don Henley, Jon Berroya (Internet Association), Douglas Preston (The Authors Guild), and David Hansen (Duke University). The following witnesses will testify on the second panel: Abigal Rivers (Engine), Kerry Muzzey (Kirbyko Music LLC), Meredith Rose (Public Knowledge), and Jeff Sedlik (Sedlik Photography).  Henley, Preston, Muzzey, and Sedlik all testified in favor of Section 512 reform, stating that the notice and takedown system is antiquated and ineffective.  Berroya, Hansen, Rives, and Rose testified in defense of the current notice and takedown system, advocating against wholesale changes to the statute. In his opening statement, Chairman Tillis remarked that “grand bargain” between copyright owners and online platforms isn’t working, citing the recent Copyright Office study. During the Q&A, Ranking Member Coons expressed concern that the most profitable companies have found success at expense of smallest members of the creative community.

Copyright Office Modernization 

In an IPWatchdog interview published on May 5, 2020 Senator Tillis said that his short-term goal as Chairman of the Senate Judiciary IP Subcommittee is to introduce the Copyright Office Modernization Act. To inform the drafting of this legislation, the IP Subcommittee held a series of roundtables during the fall on topics related to modernizing the Copyright Office. Chairman Tillis’ office proposed legislation that would impact the Copyright Office and Library of Congress IT infrastructure and modify language for deposit requirements.

Prior to the pandemic, the bill was slated to be introduced this spring. Given the Senator’s comments to IP Watchdog and the conclusion of stakeholder discussions, it is possible that this bill will be introduced at some point this summer.

Register of Copyrights Selection  

The Library of Congress is in the process of selecting the next Register. It held two “listening sessions” on the process on January 28 and February 13, 2020. The job posting went live on USAJobs on April 15th, and applications were due June 15th.  During the listening sessions, Ryan Ramsey, Chief of Staff for the Library of Congress stated multiple times that the goal is to have a new Register on board by “summertime.” Ramsey also stated at the February listening session that he would be “shocked” if 2020 closes without a new Register, which indicates that this process could go on beyond summer.

I hope this review has been useful and informative.  If there are specific issues you would like to see covered in future issues, I welcome suggestions.

U.S. IP Case Law Roundup

Eric Moran and Paul Berghoff

by Eric Moran, McDonnell Boehnen Hulbert & Berghoff LLP and IPO Amicus Brief Committee Co-Vice Chair Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP

It seems like a lifetime ago that many of us gathered at the IPO Spring Summit in Washington, D.C. in early March. Sadly, that may have been the last significant physical gathering of IP attorneys in the U.S. in 2020. While it would have been reasonable to expect that IP law would go dormant while we all sheltered at home, quite the opposite has happened. Since mid-March, there have been six—count them SIX—Supreme Court decisions in the IP space.

Copyrights

Starting with copyrights, the Supreme Court in Allen v. Cooper affirmed state sovereign immunity as a defense to copyright infringement. Allen had sued the State of North Carolina for using his videos without permission. North Carolina asserted sovereign immunity, but Allen successfully argued in the district court that Congress had removed state immunity in the Copyright Remedy Clarification Act of 1990. The Supreme Court, however, agreed with the Fourth Circuit (in an opinion by Justice Kagan, without dissent), holding that its prior decision in Florida Prepaid limited Congress’ power to abrogate sovereign immunity under either Article I or the 14th Amendment absent strong evidence of unconstitutional infringement, which was lacking.

Not done yet, in Georgia v. Public.Resource.org the Supreme Court addressed who owns the copyright in official annotations to state law. In a 5-4 decision authored by Chief Justice Roberts, the Court held that “copyright does not vest in works that are (1) created by judges and legislators (2) in the course of their judicial and legislative duties,” placing the official annotations in the public domain.

But the biggest copyright fish is still out there. The Supreme Court delayed until its next term hearing arguments in Google v. Oracle concerning Google’s use of Java in Android phones. Arguments in the fall and a decision in 2021 seem likely.

Trademarks

In Romag Fasteners v. Fossil Group, the Supreme Court held that willful infringement of a trademark is not required for a plaintiff to recover a defendant’s profits upon a showing of a likelihood of confusion. Justice Gorsuch, writing for the Court, focused on the language of 15 U.S.C. § 1117 of the Lanham Act, finding that it “has never required a showing of willfulness” to win profits in a likelihood of confusion case, while expressly making “a showing of willfulness a precondition to a profits award” in a dilution case. In concurrence, Justice Alito joined by Justices Breyer and Kagan =, would have held that “willfulness is a highly important consideration in awarding profits under § 1117(a), but not an absolute precondition.” Justice Sotomayor concurred in the judgment only, taking issue with the majority’s discussion concerning the historical context of the award of profits for innocent versus willful infringement.

In Lucky Brand Dungarees v. Marcel Fashions Group, the Supreme Court issued a unanimous opinion in a case arising from a series of trademark disputes stretching back to 2001. The question presented was whether Lucky Brand’s failure to litigate a defense in an earlier suit between the same parties barred Lucky Brand from invoking that defense in the later suit. In an opinion authored by Justice Sotomayor, the Court held that Lucky Brand was not barred from raising the defense in a later action, because the later action involved different marks, different legal theories, and different conduct, all occurring at different times. The Court specifically pointed out the risk in barring such claims in trademark cases, when “liability for trademark infringement turns on marketplace realities that can change dramatically from year to year.”

Lastly on the trademark front, this term, for the first time, the Supreme Court conducted arguments remotely by telephone and streamed live audio to the general public. As its first case, the Court selected USPTO v. Booking.com, presenting the issue of whether the addition of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

The Court decided the case this morning in the affirmative– IPO will distribute a summary of the Ginsberg opinion today in a special issue of the IPO Daily News™.

Patents

The Supreme Court was not done yet. In a 7-2 decision authored by Justice Ginsburg, the Supreme Court in Thryv v. Click-to-Call reinforced the nonappealability of PTAB institution decisions. The Federal Circuit had held that application of the one-year time bar in 35 U.S.C. § 315(b) was an appealable issue. The Supreme Court begged to differ, citing its prior decision in Cuozzo and essentially asking what part of “nonappealable” don’t you understand.

Though perhaps not as prolific as the Supreme Court, the Federal Circuit also issued several significant opinions in recent months:

· In Facebook v. Windy City Innovations, the Federal Circuit slammed the door on same party joinder of IPRs as a procedural maneuver to skirt the one-year time bar;

· The Court denied rehearing en banc of its controversial decision in Arthrex; and

· In Ciena v. Oyster Optics, the Federal Circuit clarified that Arthrex only applies to appeals from patentees because petitioners consented to adjudication before the PTAB by the filing of their petitions.

That’s it for now. Stay safe everyone!

IPO Education Foundation Launches Stroke of Genius™ Season Three

Season 3 of the Stroke of Genius™ podcast explores the most pressing questions, fascinating stories, and often-overlooked marvels that make up the world of intellectual property—one episode at a time. The new season launched June 3 with an episode about COVID-19, titled “Patents in Pandemic”. A different episode was planned to launch the season, but current events demanded that we address the pandemic through the lens of intellectual property.

This season features a range of intellectual property topics. From famous copyright cases to the unheard stories behind impactful inventions, each episode transports us to a different place within the landscape of human innovation. Can we invent our way out of the world’s largest problems? Can you trademark a color? What do monkeys and muggles have in common? Find out in Season 3!

“Our mission is to promote an understanding of intellectual property rights and their value to society,” said IPOEF’s Jessica Landacre. “Many people may not know that intellectual property is the driver behind the innovation that makes up the world around us, from vaccines, to technology we use on a daily basis, to the songs we love. We want to reveal this hidden world and how it works to our listeners.”

Episodes You Might Have Missed:

“Patents in Pandemic”: In this premiere episode of Stroke of Genius™ Season 3, join experts from across industries as they discuss how intellectual property incentivizes innovation and how it is leveraged during a pandemic.

“Trashing the Plastic Problem”: Hear how one field trip to a recycling center sent students Miranda Wang and Jeanny Yao on a lifelong quest to rid the world of its plastic problem.

Upcoming episodes:

July 1 – “The Wizarding World of Copyright” The magical world of copyright is full of extraordinary animals and wizards involved in fascinating lawsuits and muggle disputes.

July 15 – “Secure in Your Thoughts”: We’ve come a long way from a time when people didn’t believe computer viruses could be real. Now, we’re using fingerprints and facial recognition as passwords. And some are going a step further, exploring ways to use our brain patterns to unlock devices. Join us as we explore the past, present and future of cybersecurity.

July 29 – “Bringing Books to Life Through Technology”: From personal struggles, to unexpected “aha” moments, to their creative determination, hear about the inspiration behind inventors Matt & Melissa Hammersley’s invention and how intellectual property plays an important role in their dreams becoming reality.

Stroke of Genius Season 3 can be heard here and on all major podcast platforms including Apple, Google, Spotify, and wherever you listen to podcasts.

A special thank you to our sponsors:

IPO Member Highlight – Kirby Lee, Ecolab

Kirby Lee

Ecolab is the global leader in water, hygiene, and infection prevention solutions and services that protect people and vital resources. As its Assistant Chief Intellectual Property Counsel, Kirby Lee is responsible for patent and other intellectual property matters, including supporting the needs of Nalco Water business operations. This involves overseeing patent prosecution, managing technology portfolios, and supervising IP litigation and dispute resolution.

Lee currently serves as co-chair of IPO’s Litigation Committee, is a member of IPO’s Membership Committee, and has also served as a panelist on IP Chat Channel webinars. We recently asked him about his experience as an IPO member.

How did you get involved with IPO?

When I joined Ecolab, I looked for ways to be active in the IP community, to contribute to the advancement of IP laws and regulations, and to meet like-minded professionals with a passion for IP. IPO was the perfect match for those goals, with its impressive range of benefits and resources for both the individual member and the company.

What do you get the most out of serving as a committee leader?

As co-chair of IPO’s Litigation Committee, I have the good fortune of working with esteemed colleagues from the bar who share a sincere interest in IP and are experts in our field. I consider this the greatest benefit of my service as a committee leader. This kind of connection to outstanding professionals and the valuable education on current developments in IP law are available to all IPO members, and they are terrific reasons for new members to join.

What is your advice for a new IPO member looking to get involved?

First, involvement at the committee level is where a new member can work with other IP professionals and find terrific engagement on substantive IP issues that matter. For example, committee work may include preparing a resolution or white paper for the IPO Board of Directors, which necessarily taps into members’ IP expertise and experience.

Second, IPO’s Annual Meeting and IPOwners Spring Summit are top-quality conferences that provide valuable, relevant CLE and great networking opportunities. The sessions feature the best speakers, including notable elected officials and high-ranking agency officers, and they are always professionally staged. They are not to be missed.

What is the best advice you ever received?

Early in my career, a mentor told me to keep an open mind about new opportunities in work and in life. I don’t know that I could have predicted the different stages of my career development, but I am certain that I have benefited greatly from a willingness to explore unique and unusual possibilities.

Outside of IPO, what’s something you’re passionate about?

I love music and theater of all types. I perform with an outstanding community ensemble, the DuPage Symphony Orchestra, and I serve on its Board of Directors. Although classical music may seem far afield from IP law, I am glad to draw on my work skills and experience to help the organization. Further, I have been lucky to forge good friendships with fellow IPO members who share these passions, which a testament to how diverse and talented IPO’s membership is.

Thanks to Kirby for telling us about his membership experience. IPO has 29 active committees working on the most important areas of IP law and practice. To learn more and get involved visit IPO’s Committee Resources page.

Remembering Gerry Mossinghoff and Todd Dickinson

by Herbert C. Wamsley, IPO Executive Director, 1983-2015

This spring the intellectual property community lost two of its best known and most respected leaders.  Gerald J. Mossinghoff died on March 20; Q. Todd Dickinson followed on May 3.  Gerry led the U.S. Patent and Trademark Office from 1981 to 1985.  Todd held the position from 1999 to 2001. 

Many tributes and obituaries have been published, but I would like to add a little more history about Gerry and Todd in the world of IP based on my recollections and those of IPO members and other friends and colleagues.   

Gerry Mossinghoff 

Gerry Mossinghoff

Gerry was from St. Louis.  He started his IP career as a patent examiner in the USPTO in 1957 while he attended law school; it was a common way for aspiring lawyers to earn tuition money.

I heard about Gerry when I joined the art unit in which he had examined.  He had taken another job by then, but my co-workers told me he was one of the greatest examiners ever.  I first met him when he came back to the USPTO to MC a retirement party for our boss.  He arrived early, as he always did, and chatted with everyone in the room.  It struck me that he was an exceptional lawyer and public speaker with a great sense of humor and that he would go far.

Gerry went to work as an attorney at NASA during its heyday.  The Apollo program was underway for landing a person on the moon.  As NASA’s legislative director and then deputy general counsel, he knew astronauts including Jack Schmitt.  In 1972, Schmitt became the last of 12 people to walk on the moon.  A national hero, Schmitt was elected to the U.S. Senate from New Mexico. In 1981 he supported Gerry’s appointment to be USPTO Commissioner. Gerry was in.

In the book Reagan Remembered, Gerry recalled that on the eve of his nomination for the position of “Commissioner,” as it was then titled, he and the secretary of commerce met personally with President Reagan. It was a rare audience for a USPTO nominee with the President of the United States.  Gerry was impressed with how much Reagan, a former movie actor, knew about intellectual property – not only copyrights, but also patents and trademarks.

In Gerry’s four years as commissioner he worked hard on the USPTO’s operational problems.  He developed the “18 by 87” plan for cutting the waiting time for a patent to 18 months by 1987.  He repeated the slogan everywhere he went.  He persuaded people to go along with a huge increase in patent fees in return for better service.

When Gerry led a U.S. delegation to revise the Paris Convention, the U.S. State Department took the unusual step of giving him the rank of ambassador.  He organized the Trilateral Patent Offices group with the European and Japanese offices that still exists.

For 11 years after his government service, Gerry was president of the Pharmaceutical Research and Manufacturers of America, “PhRMA”, one of the world’s largest trade associations and lobby groups. He could never explain to me why the acronym isn’t spelled “PHARMA.”

Government and post-government, he testified before Congress more than 75 times.  He then entered private law practice and testified as an expert witness in numerous patent trials.

Throughout his career, Gerry was committed to IP education.  He was an early and enthusiastic member of the IPO Education Foundation Board of Directors.

For some 25 years Gerry taught IP classes at George Washington University and other law schools. For many of those years, he invited me to speak to his IP legislation students. I invited him to our annual IPO committee leadership meetings to scout for ideas for his students’ papers.  During his career, he authored more than 100 articles himself.

Todd Dickinson 

Todd Dickinson

I met Todd in 1997 when he anticipated that he might be nominated by President Clinton to be second in command at the USPTO.  He came to the IPO office to ask me about the views of IPO members and who he should meet in Washington.  It was clear that he had the ability to make friends and he knew a lot about IP.  Pretty soon, everyone knew Todd.

Todd had gone to law school in Pittsburgh and held corporate and law firm patent jobs for more than 15 years in San Francisco and Philadelphia before coming to DC for government service.  He used to say he’d had so many jobs that people probably thought he couldn’t hold one down.

He was exceptionally active in local political and civic affairs before his USPTO appointment.  He was appointed city parking commissioner by then San Francisco mayor and now U.S. Senator Dianne Feinstein.  He later moved to Philadelphia, where he was again active in civic affairs and friends with his congressman.

Todd was appointed Commissioner of Patents and Trademarks in 1999 after serving more than a year as deputy. During Todd’s time, Congress enacted the American Inventors Protection (AIPA), which at the time was called the biggest patent bill since the 1836 and 1952 acts.  It proved easier to implement than the later and still somewhat controversial America Invents Act.  Todd introduced an electronic patent application filing system in 2000.  He became good friends with the heads of other patent offices and learned the byzantine Geneva bureaucracy.

When Todd came to the USPTO, he was the “Commissioner,” the title since 1836.  Congress changed Todd’s title to “Director.”  He used to joke that he liked the old name much better, except that the new one made him an Under Secretary of Commerce, which gave him more clout in the government.

Todd encouraged communication between the USPTO and  IP associations such as IPOs.  Many times he said to IPO members, “When an issue comes up, I call the associations first.  They are the ones who try to develop a consensus.”

At the end of the Clinton administration, Todd joined a Washington law firm and later became chief IP counsel for General Electric Co.  While at GE, he was a member of IPO’s Board of Directors. He once told me he was going to be a cheerleader for IP and that he planned to remind the other living former USPTO heads to be cheerleaders.

He returned to Washington to be AIPLA executive director for seven years. As his counterpart at IPO, I compared notes with him weekly.  The IPO officers and I traveled with him to many international conferences, where he was remembered and respected from his USPTO days. He then returned to private law practice and was omnipresent in the IP community.

Until Todd’s death, he continued to volunteer countless hours for IP causes. He testified before the Senate Judiciary Committee as recently as last year.  He was a fixture at the IPO Education Foundation’s large awards dinner held every December and often spoke at IPO meetings.  Todd took up teaching at GW law school recently.

Two Great Friends of the IP Community 

Gerry and Todd received nearly every major award given to IP lawyers.  They continued to promote and teach IP after they left the PTO because they loved IP.

They had interests outside IP too numerous to mention.  And devotion to family.

They touched thousands of people and contributed immeasurably to preserving IP incentives for creativity and innovation.  I am certain their influence will live on.

IPO and IPO Education FoundationJoined World IP Day Celebration

April 26 marks World IP Day. Initially established in 2000 by the World Intellectual Property Organization (WIPO), the day meant to celebrate intellectual property on a global scale has grown every year. IPO proudly participates in the celebration. This year’s theme, Innovate for a Green Future, brought attention to the impact intellectual property has on green innovation. IPO co-sponsored a video compiled by the USPTO that featured green innovators. In addition, IPO’s committee members also lent their expertise to the World IP Day theme. Karthik Kumar, a member of IPO’s Artificial Intelligence and Other Emerging Technologies Committee, wrote an article published in Intellectual Property Magazine on solar cell technology.

The IPO Education Foundation (IPOEF) originally had plans to do an educational event, like the World IP Day IP Patch event it hosted last year for student-athletes with Shruti Costales (HP) and Piper Crowell (Nike). Due to COVID-19, IPOEF instead took advantage of distance learning and created educational videos on the World IP Day theme. The IPOEF YouTube page featured video interviews with contemporary inventors of green technologies. These interviews included an inventor from IBM, the owners of a biodegradable t-shirt company, and former Stroke of Genius podcast host, Andrea Madho, who co-founded a sustainably-conscious fashion technology startup. Visit the IPOEF YouTube page to view each of these video interviews.

A History of the Solar Cell, in Patents

by Karthik Kumar, Ph.D., Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 

Introduction 

Solar cell technology has seen exponential growth over the last two decades.  It has evolved from serving small-scale niche applications to being considered a mainstream energy source.  For example, worldwide solar photovoltaic capacity had grown to 512 Gigawatts by the end of 2018 (representing 27% growth from 2017)1.  In 1956, solar panels cost roughly $300 per watt.  By 1975, that figure had dropped to just over $100 a watt.  Today, a solar panel can cost as little as $0.50 a watt.  Several countries are edging towards double-digit contribution to their electricity needs from solar technology, a trend that by most accounts is forecast to continue into the foreseeable future.  This exponential adoption has been made possible by 180 years of continuing technological innovation in this industry.  Aided by patent protection, this centuries-long technological innovation has steadily improved solar energy conversion efficiency while lowering volume production costs.  That history is also littered with the names of some of the foremost scientists and engineers to walk this earth.  In this article, we review that history, as captured in the patents filed contemporaneously with the technological innovation. 

Click here to read the full article.