Augmented reality and Intellectual Property virtual reality: IP considerations DLA Piper launches global and Technology News Artificial Intelligence practice PERSPECTIVES • ANALYSIS • VISIONARY IDEAS ITC update Supreme Court Corner The Russian Supreme Court clarifies IP legislation ISSUE 43 / Q3 2019 / ATTORNEY ADVERTISING IPT NEWS Editor’s Column We are excited to bring you this 43rd issue of IPT As a firm, DLA Piper is proud to announce the launch News. Inside are thought-provoking articles about of a new global practice group focused on artificial ITC Section 337, intellectual property rights in intelligence. And, adding depth and strength to our augmented and virtual reality, and two cases we are West Coast patent practice, we welcome two new following in the Supreme Court – Iancu v. Brunetti, patent prosecution partners to IPT in Silicon Valley: which held that the Lanham Act’s prohibition Christopher Mooney, who focuses on strategic patent Matt Gruenberg on the registration of “immoral or scandalous” counseling, patent prosecution and patent litigation, Partner trademarks violates the First Amendment, and and Maria Swiatek, who focuses on cross-border Intellectual Property Return Mail Inc. v. USPS, which held that the federal prosecution and portfolio management for high and Technology government is not a “person” capable of filing a technology, energy and life sciences clients. covered business method review petition under I hope you will enjoy this issue of IPT News. the America Invents Act. You will also find an article about Ruling No. 10, in which the Russian Supreme Court has clarified its IP law, and a look at potential “influencer” liabilities arising from promotions on Instagram. [email protected] Helping you embrace the changing marketplace Artificial intelligence, virtual reality, augmented reality, digital assets, and blockchain are among the new technologies we discuss in this issue, each of them requiring regular review and analysis of current laws and sometimes new laws to ensure appropriate protection. Frank Ryan Partner We are here to help you embrace the changing marketplace while protecting your digital assets and intellectual Global Co-Chair and property. Whether it’s helping you overcome legal challenges in the age of digitization or protecting your US Co-Chair, Intellectual intellectual property concerning a virtual reality, we have the legal experience you need. We’re proud of our 34 Property and Technology lawyers in 9 countries who were ranked by the IAM Patent 1000 as some of the top patent professionals in the world. The members of our team, among them the authors in this issue, strive to stay at the cutting edge of IPT business law. Our global footprint can help you manage your operations in important geographies around the world, online, and in the virtual space. To learn more about how DLA Piper can help you, please contact any member of our team. Ann K. Ford Partner Global Co-Head, Sectors, [email protected] [email protected] US Co-Chair, Intellectual Property and Technology 2 DLAPIPER.COM/IP_GLOBAL DLA Piper launches global Artificial Intelligence practice DLA Piper’s new Artificial Intelligence practice aims to assist companies as they navigate the legal landscape of AI’s emerging and disruptive technologies. The launch responds to the rapidly evolving needs of clients who work with and in technology. In recent months, the firm also established practices dedicated to blockchain and digital assets, proptech, and fintech. Larissa Bifano, co-chair of the AI practice, commented, “Artificial intelligence and automation are changing the way we do business, and organizations across a wide range of industries are deploying machine learning technologies to automate and optimize processes in almost every facet of their operations.” She adds, “Our global platform provides us with a broad base of sector- focused practitioners to respond to the wide range of legal challenges across jurisdictions, especially in areas such as regulatory compliance, privacy and ethics.” See more at: dlapiper.com/en/us/focus/artificial-intelligence 3 IPT NEWS Patent prosecution capabilities grow on the West Coast Supreme Court Corner Cases we are following Christopher Mooney Maria Swiatek By Stan Panikowski and Brian Biggs Patent prosecution partners Christopher Mooney and Maria Swiatek have joined the firm’s Intellectual Property and Technology practice in Silicon Valley. Chris focuses on strategic patent counseling, patent prosecution and patent litigation. He is often consulted by clients to help them monetize, enforce and build high-quality portfolios in a number of sectors, among them technology, artificial intelligence, manufacturing and life sciences. He received his J.D. from Franklin Pierce Law Center, his M.S. from the University of Texas at Dallas and his B.S. from Texas A&M University. Maria focuses on the cross-border prosecution and portfolio management of high technology, energy and life science clients. She is often sought out by emerging growth companies that are seeking to offer new and innovative devices or methods in markets around the world. Maria received her J.D. from the University of the Pacific, McGeorge School of Law, and her B.S. from California State Polytechnic University, Pomona. Learn more about Christopher Mooney at: dlapiper.com/en/us/people/m/mooney-christopher Learn more about Maria Swiatek at: dlapiper.com/en/us/people/s/swiatek-maria 4 DLAPIPER.COM/IP_GLOBAL Iancu v. Brunetti Return Mail Inc. v. United States TRADEMARK – DECIDED: JUNE 24, 2019 Postal Service Holding: The Lanham Act’s prohibition on PATENT – DECIDED: JUNE 10, 2019 registration of “immoral or scandalous” trademarks Issue: The federal government is not a “person” capable violates the First Amendment of filing a covered business method review petition under the Leahy-Smith America Invents Act. Supreme Section 2(a) of the Lanham Act permits the USPTO to refuse a trademark if it “comprises immoral, deceptive, The AIA allows a “person” to challenge a patent’s validity or scandalous matter…” 15 U.S.C. § 1052(a). Erik through a covered business method (CBM) review Brunetti has used the mark “FUCT” for his clothing line before the Patent Trial and Appeal Board (PTAB). AIA Court Corner since 1990, only applying for federal registration in §18(a)(1)(B). 2011. Citing § 2(a), the USPTO refused registration as When patent-holder Return Mail’s attempts to license a “scandalous.” The TTAB affirmed the mark as vulgar and patent to USPS were unsuccessful, Return Mail filed suit Cases we are following unregistrable in light of the “strong, and often explicit” in the United States Court of Federal Claims. Then USPS imagery in the apparel’s promotional material. Brunetti By Stan Panikowski and Brian Biggs filed a CBM petition with the PTAB. In its final written appealed to the Federal Circuit. decision, the PTAB rejected Return Mail’s argument During the appeal, the Supreme Court issued its opinion that USPS lacked statutory standing to file a CBM suit in Matal v. Tam, 137 S. Ct. 1744 (2017), finding the and invalidated all of the challenged claims as drawn to Lanham Act’s disparagement clause an unconstitutional ineligible subject matter under 35 U.S.C. § 101. viewpoint-based restriction of speech. In light of Tam, In a 6-3 opinion by Justice Sonia Sotomayor, the Court the Federal Circuit reversed, deeming the registration held the AIA excludes the Postal Service and other bar on “immoral” or “scandalous” marks facially invalid. federal agencies from the definition of “person.” There In a 6-3 opinion by Justice Elena Kagan, the Court is a “longstanding interpretive presumption that postulated, “[t]he government may not discriminate ‘person’ does not include the sovereign.” The Court against speech based on the ideas or opinions it rejected the Postal Service’s arguments to overcome conveys.” When the PTO disapproves marks that some the presumption, finding no evidence that Congress may find offensive, it infringes the First Amendment. In intended to allow a federal agency to file an adversarial dissent, Justice Sonia Sotomayor contended Brunetti’s challenge like a CBM review petition. mark should be rejected, opining one could read In dissent, Justice Stephen Breyer found the “scandalous” narrowly to mean “vulgar” or “obscene,” presumption is overcome because the Postal Service which is viewpoint-neutral and thus does not violate the can apply for, obtain, and maintain a patent; sue First Amendment. others for, be sued for, and assert defenses to patent In a win for free speech, Brunetti reaffirms that restrictions infringement; and invoke and defend against other on the content of a trademark must be viewpoint-neutral. administrative procedures for challenging patents. But four justices (Justice Samuel Alito in concurrence and Return Mail restricts the federal government’s ability Chief Justice John Roberts and Justices Stephen Breyer to challenge a patent – even one asserted against it and Sonia Sotomayor in dissent) expressed concern that in a patent infringement lawsuit – through the AIA’s the Court’s decision would open the door for obscene streamlined, post-issuance review procedures. Patent trademark applications – and recent reporting shows that holders, particularly those considering suit against a concern is being realized. Practitioners should watch this federal agency, will see this as a win, but they should space, including whether the PTO rejects offensive or also note the Court’s opinion does not restrict a federal vulgar marks under other provisions in the Lanham Act agency’s ability to petition for ex parte reexamination or or whether Congress amends the Lanham Act, to more for Congress to clarify the AIA’s definition of “person.” narrowly prohibit obscene marks. Partner Stan Panikowski, based in San Diego, focuses on IP, Associate Brian Biggs, based in Wilmington, Delaware, represents antitrust, appeals and other areas of business litigation. Reach clients across many technical fields in patent litigation. Reach him at him at [email protected].