From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Monday, 26 September 2016

ChIPs Global Summit Report 4: Facebook, Apple and the DoJ discuss the tension between privacy and security

The privacy v security panel ready for a robust
On the evening of the first day of the ChIPs Global Summit, the AmeriKat surrounded herself with some more inspiring women, in the form of rising IP star, Guinevere Jobson (Fenwick & West), her mom and the AmeriKat's mom.  Over cheese and wine, two generations of women discussed how life in the workplace and expectations have changed for women and how balance can (if ever) be struck.  The issue of balance was also at the heart of the following morning's panel session on the tension between privacy and security.  The tension came to the forefront following the FBI's ex parte order served on Apple following the San Bernardino terrorist attack (see background here) requesting that Apple create new software that would allow the FBI to unlock an iPhone 5c belonging to one of the terrorists. Law enforcement agencies are concerned with protecting national security, whereas companies are concerned with losing the confidence of their customers in protecting their privacy.

In one of the AmeriKat's favorite panels of the Summit, Erin Egan (VP & Chief Privacy Officer, Facebook),  Erika Brown Lee (Chief Privacy and Civil Liberties Officer, U.S. Department of Justice), Nuala O’Connor (President & CEO, Center for Democracy & Technology) and Noreen Krall (ChIPs Co-founder; Vice President, Chief Litigation Counsel, Apple Inc) debated the tension with moderator Jeanne Heffernan (Kirkland & Ellis LLP).

The debate highlighted the detailed and subtle nature of the tension between numerous stakeholders and corporate and law enforcement objectives.  Although the panellists dove into the detail of the legislative and policy debate over 90 minutes, the AmeriKat has summarized the top eight themes emerging from the session for readers as follows:
1.  The privacy v security fallacy.  National security and personal privacy are not at odds with each other. It is a false choice - it is really security v security.  As Noreen highlighted 17.5 million people were victims of direct hacks which violated their personal privacy, but importantly they were also victims of crime.  Privacy is a security issue and security is a privacy issue.  People who put products into the marketplace want to stop crime at the onset and law enforcement want to stop it once it happens.  The argument is that that you cannot undermine encryption to protect customer's security and privacy in the interests of law enforcement because in doing so you will inevitably create back doors which allow "the bad guys" in resulting in crime (and, therefore, threats to security).  
2.  Security and privacy have taken center stage.  The FBI's order against Apple was ex parte.  There was no opportunity for Apple to be heard.  The manner in which the FBI obtained the order (after months of working whit Apple and not under seal, so that it was public) therefore generated controversy and ignited fights between various factions on the public stage.  Noreen explained that Apple was and had been cooperating with law enforcement for months until the February ex parte order.  The FBI's order asked Apple to write a new operating system so that they could gain access to the iPhone 5c at issue which was running on iOS 9 (reportedly known internally at Apple as GovtOS).   If Apple complied with the order they would risk the security of other Apple customers.  The panel recommended this TIME article interview with Tim Cook to the audience for background reading.  The panel appreciated FBI Director Comey's efforts to keep the issue in the forefront of public discussion, but some panellists stated that his comment that an "adult conversation" was needed in the wake of the controversy was probably an unfortunate choice of words as the insinuation was that if you did not agree with the FBI, you were not an adult. Now that the "fervor" has died down, many panellists felt it was time to reignite the conversation.  
Is the privacy v security debate really a fallacy?
3. Protecting customers' security.  Customers demand secure devices and products. The counter is that if we make devices secure we lose the ability to obtain information.  What really is at stake, commented Erika, was the ability to obtain information.   There may be a perception from law enforcement that you are trying to create an impenetrable device - but that is impossible.  These are human-developed systems.  All that companies, like Apple, are trying to do is to stay ahead of the "bad guys" who want to gain access to customers' data.  Humans will always be able to get into devices (indeed, the AmeriKat notes, the FBI found a way into phone with the assistance of a third party - see Washington Post article here).  Erin explained that "for the trust of the people who use our products, we have to strengthen our security.  If we are not [permitted to provide] end-to-end encryption, there are numerous people outside of the jurisdictional reach of the US who can and people will use those services."  In those circumstances, when law enforcement wants information they are at disadvantage.  You will not be able to obtain metadata - US companies and law enforcement will then both at a competitive disadvantage.   
4.  Judiciary is getting this right?  Some panellists noted that the judiciary seems to be getting the balance between privacy and security right in the few instances where it has had to rule.  Just because technology has expanded into every sector of our life, it does not mean that the role of federal government in our lives is automatically expanded.  The Supreme Court has held firm that there is a strong boundary between privacy and security, upholding the strength of the Fourth Amendment with limitations (Riley v California) .  The Courts also recognize the limits to how much information is actually held on devices and that 90% of people who have phones have some sort of digital information about themselves contained therein.  In the absence of a plethora of court cases, it was noted that a more robust debate on these issues was needed.  
5.  Mixed messages on a global scale and the shadow of data localization.  The panel noted that there is real tension between law enforcement and data protection authorities.  When working with data protection authorities around the world, some authorities do not want you to retain data and want you to get rid of it.  However, law enforcement in these same countries want you to keep it.  Some countries demand strong encryption on devices.  Other countries require easier access to data for law enforcement.  There is a perpetual conflict that companies have to navigate.  Noreen and Erin stated they, like many companies, are engaged in conversations about this conflict, but data protection authorities need to be speaking directly with law enforcement and security so that commerce do not find themselves in the middle.  The panel explained that there are countries around the world who are investigating crimes who want access to data from US companies about activities being undertaken in their country.  The current method to obtain this information is via the Mutual Legal Assistance Treaty, but this is a long and cumbersome process which is not always fit for purpose in a digital age.  Stakeholders are looking to fix the MLAT so it is not so cumbersome.  However, in response to this problem, some countries are enacting laws to localize data storage; there are approximately 40 laws in the works around the world on data localization.  Data localization can be a concern as there are some regimes who are not providing for localized storage for legitimate aims.   Noreen commented that she understands why countries ask for data localization in order to enhance the tools available for local law enforcement.  However, from a company perspective companies are concerned about their customer's privacy and security and experience.  Data localization can also increase costs and may also impact quality of services.
Erin Egan (Facebook) and Noreen Krall (Apple) working
to protect customer's privacy and security

6.  Concern for European start-ups in light of the GDPR.  The panel also noted that the US and UK are working together to share data - it is proposed that US companies holding data can share that data with UK authorities and vice versa.  The proposal before Congress involving the US and UK was said by a member of the panel to "really lift restrictions from companies for [the sharing of] different types of data."  The proposal involves collaborative measures between law enforcement and service providers (see summary of the legislative proposal here) and was commented that the sharing would be similar to the information sharing provisions under the Cybersecurity Information Sharing Act which came into effect last year.  Companies on the panel also explained that they are spending a lot of time on the new General Data Protection Regulation (GDPR) in Europe.  They are in the process of combing through the GDPR's provisions.  Some on the panel felt that there was a "paternalistic view" of the authorities knowing what is best for the public, as against the notion of the "self" and people being in control of their own data.  However, as companies "we have responsibilities to make sure people understand what is going on and how they can exercise control" with respect to their data, explained Erin noting in particular Facebook's privacy health check-up.  Customers are at the center of this process.  Facebook is constantly innovating to find ways to ensure people understand their rights and privacy options.  There was concern expressed in the panel about how start-ups could ever get off the ground in Europe in light of the GDPR as even sophisticated companies need a team of 15 lawyers to identify their obligations on the legislation.   
7.  The consequence of cheaper and easier data storage.  With easier and cheaper data storage (see in particular cloud storage), companies are able to identify customer trends over a long period of time.  Companies use this data to predict their customer's needs (see your customer experience on Amazon).    The amount of data stored on customers - be it on Facebook or Amazon - is reaching 20 years.  Think about what has happened in your life in 20 years.  Graduating college, getting married, having kids.  The data about you is enough for a family history.  This creates a luxurious data pool upon which to conduct sales and trend analysis to recommend products to you (see for example, the story of Target predicting that a teenage girl was pregnant before her father knew - here and here).  As long as everyone knows that companies are using that information for this reason, this is fine.  However, how do you minimize the risk to the individual and company in the storage of long term data, while maximizing the utility of the information?  But we also have incredibly useful data that could be potentially used to identify health trends and risk areas for the greater social good.  How do we use this data as part of a larger link analysis without unique identifiers?  There were no immediate answers to these complex questions.  However, there is some vocal groups that oppose the storage of data long term so that it cannot be used for such trend analysis. Further, the more data stored, the more data is at risk of cybersecurity attacks and the more data that is at risk of being turned over to law enforcement.  Companies have to quantify this customer experience benefit against the security and privacy risk.
How long is your digital snail trail, and where does it lead?
8.  Future collaborative work.    It was agreed that this is the golden age of surveillance.  Everyone is leaving digital data everywhere.  We need to fund agencies to ensure that despite this digital snail trail (the AmeriKat's words, not the more eloquent panel's), the public is kept safe.  The panel suggested more funding for national security agencies to retain and train the best and brightest to help find a resolution of these issues from a technical and legal perspective.  It was also suggested that we move beyond the encryption conversation as neither party - companies, nor law enforcement - want to be disadvantaged (as noted above).  There also needs to be an increase to transparency.  The panel noted that with the impending election, there will be new faces in government.  However, it was hoped that the benefits and fruits of the collaboration between the private and government sectors in this area continue.  

Sunday, 25 September 2016

ChIPs Global Summit Report 3: Congratulations - your patent has been allowed, when is it finally final?

Problems, problems everywhere,but
where is the solution for the dual-track system?
The problem of a dual track system was the final session the AmeriKat attended before lunch on the first day of the ChIPs Global Summit 2016, a topic which came up at this year's Fordham IP conference (see post here).  What is the impact of a system where a patent cannot be declared finally valid, only finally invalid?  This problem has been, in part, generated by the America Invents Act with the creation of inter partes review (IPRs), which has resulted in some patentees facing serial IPRs and parallel attacks in the district courts.  In Europe, the dual track problem is between national courts and EPO oppositions where a national court may hold a patent valid and infringed only for the patent, many years later to be held invalid by virtue of an EPO opposition.  So what is the latest thinking in the US on this issue?

Judge Rama Elluru (Administrative Patent Judge, USPTO) - who was not speaking on behalf of the USPTO or Patent Trial and Appeal Board (PTAB) - stated that there was an opportunity for serial petitioners.  However where there is a subsequent challenge to the same patent, the petition is usually assigned to the panel who dealt with the first petition as they are familiar with the history, prior art and arguments.  When the same petitioner challenges the same claims, there is a possibility for estoppel.  There is also discretion not to institute an IPR if the petitioner could have raised the challenge in the post grant review or if the petitioner is accused of harassment.  If the petitioner has already challenged validity and lost in district court and there is some evidence of undue harassment then that may be something that is taken into consideration when instituting an IPR.  However, it depends on the facts of the case.  In answer to a question as to whether the PTAB looks at a successful invalidity win in district court during their proceedings, the answer was that they "will make an independent decision based on the record in front of it."

Chief Judge Barbara Lynn (US District Court for the Northern District of Texas) first declared that nothing she said was, of course, binding on herself.  She then commented that she "loves complex patent cases but I only want to hear them once."  The worst outcome is to be reversed and remanded as its a huge expense of resource for the parties.  The America Invents Act has stymied the ability to achieve finality of a patent's validity.  The lack of finality is a real problem for certainty and especially the patentee whose fight is never over.  Chief Judge Lynn commented that the judges look at what is happening in the PTAB - what they are doing, how fast they are doing it and how the district courts and PTAB are or should be interacting.  Chief Judge Lynn stated that "I have to worry about multiple actions in my own court and actions in other courts construing the same patent that I am considering."  One has to be alert to the potential for contradictory decisions emanating from different fora.   Chief Judge Lynn noted that district court judges do the best they can to reassemble cases.  Indeed, Chief Judge Lynn explained how she and a district judge in another case concerning the same patent met to construe the patent claims together so to avoid contradictory decisions as much as possible.  Judges are therefore finding ways to work around these problems.  

The panel also noted that the presumption of validity under US patent law assists the patentee in showing that they have something of real value and that the burden of proving that the patent is invalid falls on the other side.  However, in reality if we took a poll, many would comment that there are a lot of weak patents out there.  It was suggested that perhaps the focus therefore should be on patent quality so that the presumption of validity and the standard of evidence to rebut that presumption (clear and convincing) is actually appropriate. Just because a patent has survived one patent challenge does not mean that the patent is necessarily stronger.  If the patent has survived a challenge in front of a really good judge, then the panel noted that that may deter opponents.  However, in reality, that decision is not binding on anyone who is not party to that case.  Those parties will try a different tactic before different judges in a different forum.  This is of course correct - it is not fair to an absent party to be faced with the bias of a decision in a case they had no right to participate in.  There cannot be a time bar for bringing a challenge to a patent in district court as potential litigants and controversy may not be in existence at the time of the first action.
Chief Judge Lynn explained that most district courts are staying cases pending inter partes reviews.  If a patent is invalidated, then that is the end.  If it is not, then the district court goes forward and may still invalidate the patent.  The district court judges pay attention and review the decisions coming from the PTAB.  There is a lot of intersection between the tracks.  However, the dual tracks create significant tension but she did not have an immediate solution - although the problem greatly demands one.  Chief Judge Lynn did note that there needs to be a way of bringing "everyone in" on the process.  

Melissa Scanlan (Senior Director, IP Litigation and Antitrust, T-Mobile USA) noted that she is usually on the defence side and, therefore, joked that she never thinks about the "poor patent owner" especially those whose patent claims are overly broad, tenuous and are asserted with a hefty multi-million dollar price tag [she didn't say it, but the AmeriKat understood her to mean patent assertion entities, or whatever they are now called].  Melissa stated that she liked "having as many tools in my patent tool chest as I can.  That includes asserting my best arguments in district court on validity and then going to PTAB in parallel and to play one off against the other where there is an opportunity to do it; there are tons of strategic decisions which go into that."  However, she recognized that it can create an inefficient system.  Inefficiency is generally a bad thing, but as a litigator you will use every tool that you can "as aggressively as I can to shift some costs back in the other direction".  Perhaps, the AmeriKat muses, that is the heart of the issue on multiple attacks in a dual track system - costs.  Would blanket wide costs-shifting deter serial attacks?   Melissa also commented that a validity assessment before a jury is almost always daunting.  There is a fear that as soon as jurors see the official stamp on the patent and watch a glittering video in court about the invention, they are then unable to look beyond that to the merits.  "We have been successful in invalidating patents, so we know it is possible.  We have done it, but we sure do not count on it.  We feel better about our chances on infringement."

If the panellists could change one thing about this dual track landscape, what would it be?  There was no consensus, however, two panellists suggested that they would rather all arguments be articulated at the PTAB and the district court case stayed until the PTAB conducts its assessment, rather than to "drag on and on in a slow expensive process in district court."

Closing the session, moderator Rachel Krevans (Morrison & Foerster) explained that the US has one system of patent laws, regardless of technology and regardless of the identity of the patentee.  However, recent history with the rise of non-practising entities has generated a lot of cynicism about the value of patents, i.e. not being worth the paper they are printed on.  However, when companies start the R&D and investment cycle for products, they need to have confidence in strong patent protection and in the patent system to assure investors that their investment will become good.

If the quality of patents being issued is in doubt and the number of times a patent will be subject to attack is almost limitless, then confidence in the strength of patent protection and the system begins to falter.  The value of the bargain struck in obtaining patent protection begins to erode.  The AmeriKat wonders whether if such a state of affairs is permitted to continue, more inventions will be protected by way of trade secrets, not by patents.  Surely, such an outcome will be classed as devastating failure of laws that were established to promote innovation for the good of society.  But who has a solution?  AIPPI has been working on a full scale global survey on this dual-track problem over the past few months to identify potential solutions.  This work will continue over the next few months and the AmeriKat will keep readers updated on this work as practitioners grapple with this problem, not just in the US, but across the world.  

A song of Ice and Ice

Iceland, a country famous for the northern lights, skyr yoghurt, and their recent performance in the Euros, has made headlines this week for threatening the trade mark rights of a major UK supermarket. The cause of this ire is unclear, as some sources report that Icelandic tourist board, ‘Promote Iceland’ was faced with opposition proceedings when they attempted to register an EU trade mark ‘Inspired by Iceland’. Other reports state that Icelandic companies are being prevented from trading under their country name due to Iceland Foods’ earlier right.

Iceland the grocery

Iceland Foods has held the EU trade mark for the word ‘Iceland’ since 2014. This registration was no easy feat as it took 12 years from the date of filing, due to the obstacles posed by five oppositions. Since receiving the trade mark, they have opposed registrations which include the word 
‘Iceland’ to varying degrees of success. This Kat can understand the frustration of Icelandic entities who pay patronage to their country in their trade mark choice, but does not see how the Icelandic government can mount a valid cancellation action.

There are two types of cancellation proceedings; revocation and a declaration of invalidity.

Grounds for revocation

The grounds for revocation of a trade mark are found under Article 12 of the EU Trade Mark Directive.  Under this Article, a mark can be revoked for non-use over a continuous period of five years, genericide, or use which has caused the mark to be misleading as to the nature, quality or geographical origin of those goods or services. None of these grounds apply to the ‘Iceland’ trade mark.

Declaration of invalidity

There are two grounds for invalidity; absolute and relative. These are found under Articles 3 and 4 of the EU Trade Mark Directive respectively.  As for the absolute grounds of invalidity, the mark ‘Iceland’ has distinctive character after years of use in the UK and other European countries. It does not indicate geographic origin, and it has not suffered from genericide. Furthermore, it does not fall foul of the shapes, public policy and morality, deception, religious symbol, national emblem or bad faith provisions.
Iceland the country

The relative grounds of invalidity were tested in the numerous oppositions, to no avail, so it is unlikely that there are any relative grounds which exist at this point. If there are, it would be unusual for the country of Iceland to initiate proceedings, as the relative grounds are based on conflict with an earlier existing mark, and it does not appear that Iceland (the country) owns any such mark.

Tip of the Iceberg?

Iceland (the country) probably does not have any realistic chance of cancelling Iceland Food’s trade mark.  However, this issue is the tip of a policy iceberg, raising the question of whether a country’s name should be registrable, particularly considering present restrictions on the registration of national emblems.

Under Article 3(2)(c)  of the EU Trade Mark Directive, registration of flags and emblems of Paris Convention member states is prohibited, in accordance with Article 6ter of the Paris Convention.  According to WIPO:

“The purpose of official signs and hallmarks indicating control and warranty is to certify that a State or an organization duly appointed by a State to that effect has checked that certain goods meet specific standards or have a given level of quality. Official signs and hallmarks indicating control and warranty exist in several States with respect to precious metals or products such as butter, cheese, meat, electrical equipment, etc. In principle, officials signs and hallmarks indicating control and warranty may also apply to services, for instance those relating to education, tourism, etc.”

This information is pertinent considering one of the alleged stakeholders in any opposition is the Icelandic tourist board. If the purpose of denying registration to national emblems is to allow countries to exercise control over goods and services, why not extend this protection to country names? The reason is likely to be that producers often incorporate their country’s name into their trade marks, like the Icelandic Seafood Company, whose trade mark ‘Iceland Gold’ was opposed by Iceland Foods. Limiting the use of country names to official state organizations would not sit well with many existing right holders.

Perhaps the utilitarian solution in the present situation would be to allow registrations of country names, but restrict oppositions where there is a genuine link to the country (the difficulty of assessing ‘genuine links’ is an issue in itself). This would prevent companies such as Iceland Foods from preventing Icelandic entities from using their country’s name.

It would be an unfortunate day for trade mark law if Iceland Foods successfully opposes the Icelandic tourist board’s application for ‘Inspired by Iceland’.

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