Welcome to Skilled in the Art. I’m Law.com IP reporter Scott Graham. Like a lot of you I spent the first few months of this year anticipating the Supreme Court’s decision in Oil States. It was big news when the court upheld the constitutionality of IPRs six weeks ago. But to hear one Federal Circuit judge tell it Monday, parts of the decision may already be passé. I’ll explain below. I’ve also got news of a failed attempt to disqualify attorneys representing Twitter in a trademark case, and two significant lateral moves. As always you can email metips and feedback and follow me on Twitter.
Is Oil States Still Good Law?
Remember, way back on April 24, when the Supreme Court issued the Oil States decision? The high court finally resolved the debate over whether inter partes review is a type of private litigation entitled to Article III protection, or just the PTO taking a second look at a decision to grant a patent.
“Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration,” Justice Clarence Thomas wrote. “Thus, the PTO can do so without violating Article III. ”
The PTO figured that was great authority for its argument that Indian tribal immunity cannot be used to shield patents from administrative review. IPR “is a public, regulatory act of the United States government,” DOJ attorney Mark Freeman argued Monday to the Federal Circuit. “And no Indian tribe has a sovereign right to prevent the United States government from making that public, regulatory act.”
That seemed to resonate with Judges Timothy Dyk and Jimmie Reyna. “Why isn’t it enough to say that an IPR is not a suit?” Reyna said. “And all the other questions just fall by the wayside.”
“They do, your honor,” Freeman agreed.
But Judge Kimberly Moore was not on board. The problem from her perspective is the other Supreme Court decision issued on that same day in April, SAS Institute v. Iancu. Justice Neil Gorsuch’s opinion in SASrepeatedly emphasized the private attributes of IPRs. It’s “an adversarial process before the Patent Office that mimics civil litigation,” Gorsuch wrote. It “mimics” civil litigation, he repeated, by letting the petitioner decide which claims to challenge and on what grounds. On the whole it “looks a good deal more like civil litigation,” he added.
Those three separate mentions were no accident, Moore said during Monday’s hour-long argument in Saint Regis Mohawk Tribe v. Mylan. Nor is it a coincidence that Gorsuch was the dissenter in Oil States, she suggested. “Those two cases really come to loggerheads here in this exact instance for us,” she told Jonathan Massey, representing the Saint Regis Mohawk Tribe and Allergan.
Massey, of Massey & Gail, tried to argue that IPRs are like civil litigation, where tribal immunity would apply. Freeman and Eric Miller, the Perkins Coie partner representing Mylan, emphasized the examinational nature of IPRs. Moore wasn’t having either argument.
“Anyone who stands up in this court and says it’s all of one or all of the other has no credibility,” she told Freeman.
Moore even crossed swords with Judge Dyk when he said that under SAS, the PTO is reconsidering patentability.
“No, that’s reconsideration of one issue of patentability,” she told her colleague. “That’s not reconsideration of patentability.”
Ropes & Gray counsel Matt Rizzolo, who’s not involved in the case, said that whether the Oil States or SAS view of IPRs applies could ultimately prove circumstantial. “In certain circumstances, like Article III, it doesn’t matter” whether IPRs operate like civil litigation, he said. “But in other circumstances, it might matter, and I think that’s what the court is tasked with here.”
Rizzolo, who’s written about sovereign immunity for AIPLA, notes that all three members of the panel are experienced with the subject in a variety of contexts, including one case in which Reyna wrote the majority opinion and Moore dissented.
Durie Tangri’s Twin Killing for Twitter
Durie Tangri and Twitter got some good news Friday from U.S. Magistrate Judge Jacqueline Scott Corley in the Northern District of California. First off, Corley rejected netcasting company TWiT’s bid to disqualify the firm from representing Twitter in TWiT’s breach of contract and trademark action.
Second, she granted Twitter’s bid to dismiss all of TWiT’s contract claims with prejudice. The trademark claims were dismissed with leave to amend. “Plaintiffs have not plausibly alleged that they entered into a contract with Twitter, that Twitter defrauded plaintiffs, or that Twitter is doing something that infringes on plaintiffs’ trademarks,” Corley wrote.
TWiT, which stands for This Week in Tech, began distributing audio and video content over the internet about a year before Twitter launched its micro-blogging service in 2006. TWiT owner Leo Laporte interviewed Twitter co-founder Ev Williams on TWiT’s net@night program the following year. The two discussed the similarities of their marks, but Williams indicated there was no conflict because Twitter was focused on the text space.
When Twitter was rumored to be moving into audio and video streaming in 2009, Laporte wrote to Williams expressing concern about their ability to “co-exist.”
“Don’t worry,” Williams emailed back. “We’re not expanding to audio or video under the Twitter brand.”
Fast forward eight years and Twitter ultimately did move into that space. Laporte sued the company in January of this year. For its defense, Twitter enlisted Durie Tangri, a firm that TWiT had retained in 2013 when an NPE called Personal Audio was threatening lawsuits against podcasters.
Durie Tangri billed TWiT only 25 hours, and the matter was closed in 2015 without TWiT ever being sued. But the firm learned TWiT executives’ views about litigation and its financial ability to fight a lawsuit, the company’s new lawyers at Spaulding, McCullough & Tansil and Payne IP argued.
That’s not enough to disqualify a law firm in a subsequent representation, Corley ruled Friday. “At bottom, plaintiffs are arguing that because they are a small business, any information that Durie Tangri obtained from the prior representation is material to this action. But this is not the law,” Corley wrote.
Corley then granted Twitter and Durie Tangri’s motion to dismiss. First, Corley listened to the 2007 interview and said she didn’t hear an oral contract being formed. “No offer was made. No offer was accepted. No consideration was exchanged,” she wrote.
Nor was the “don’t worry” email a written contract. “‘Don’t worry’ does not support a plausible inference that Mr. Williams promised that Twitter would never expand to audio or video under the Twitter brand,” Corley wrote.
As for TWiT’s trademark claims, it has not “adequately pled what Twitter is doing” that is creating a likelihood of confusion between the two marks. She granted leave to amend that claim.
Durie Tangri’s Ragesh Tangri, Joseph Gratz, Josh Lerner and Eric Messinger represented Twitter before Corley.
I Speak Slowly on IP … Frequently
Many thanks to Dominion Harbor’s David Pridham and Brad Sheafe for hosting me on their IP … Frequently podcast earlier this year, where we talked Federal Circuit, Supreme Court and the then-imminent Oil Statesdecision. The podcast was posted this week, and you can hear right away why I work in the print medium. At least my prediction on Oil States—”affirmed with strings attached” held up well.
Gibson Dunn Adds to Appellate Practice
Speaking of Oil States, the patent owner’s counsel in that case, Morgan, Lewis & Bockius partner Allyson Ho, has decamped for Gibson, Dunn & Crutcher, my ALM colleague Tony Mauro reports here.
Ho, one of the few women in private practice to appear with some regularity before the high court, will remain based in Dallas.
Her arrival at Gibson squares a circle in a couple of ways. She was a summer associate there 20 years ago, and her husband, James, practiced at Gibson before his appointment to the Fifth Circuit last year. “In many ways, going to Gibson is like coming home for me,” she said.
Gibson chairman Ken Doran described Ho as “a nationally renowned appellate advocate” who will “add depth and versatility to our exceptional appellate bench, both in Texas and nationwide.”
K&S Tech Transactions Partner Joins Shearman
In other lateral news, tech transactions and data privacy partner Emma Maconick has joined Shearman & Sterling from King & Spalding. She’ll be based in the firm’s Menlo Park office.
Maconick’s experience with complex IP, IT and data issues “dovetails with our mission to provide comprehensive services to our technology-focused clients,” Shearman senior partner David Beveridge said in a written statement. Maconick said she’s “excited about using my creativity and experience to strengthen the firm’s world-class and innovation–focused platform.”
Who Got the Work?
A couple of months ago I looked at the attorneys representing Match Groupin its IP suit against Tinder over the “swipe right” innovation for indicating romantic interest. We knew then from its newspaper ads that Tinder “swipes left on bullies,” but we didn’t know who’d be representing the company in the Western District of Texas.
I speculated at the time that Cooley could be a possibility because it had represented Badoo, majority owner of Tinder parent Bumble Trading Inc., in a previous IP case. Well, Cooley and The Dacus Firm entered last week, subbing in after an initial appearance by McKool Smith. Cooley partner Joseph Drayton of the firm’s New York office and associate Rose Whelan in D.C. are now attorneys of record along with Tyler, Texas-based trial lawyer Deron Dacus.
Match remains represented by McKool Smith spinoff Caldwell, Cassady & Curry.
That’s all from Skilled in the Art today. I’ll see you all again on Friday.