December 7, 2021

The IPLAC 2021 Annual IP Symposium Recap

IPLAC and the Symposium Committee held the Annual IP Symposium on December 7, 2021. Jim Muraff of McDonald Hopkins and Matt Marrone of McAndrews, Held & Malloy served as Co-Chairs, and Viren Soni of Accenture served as Vice Chair in organizing the event. Kwanwoo Lee of Marshall Gerstein & Borun and Margot Wilson of McDonnell Boehnen Hulbert & Berghoff assisted as well.

The first session, the Online Trademark Policing Panel, included Eric W. Gallender, Senior Counsel, Marketing and Intellectual Property, McDonald’s Corporation; Selena Spritz, Senior Director & Managing Counsel, Retail & IP Legal Group, Walgreen Co.; and Colin O’Brien, UDRP Panelist for WIPO and Partner, Latimer LeVay Fyock LLC, and was moderated by Kara Smith, Neal, Gerber & Eisenberg LLP. The discussion can be summarized as follows: due to the pandemic, online activity has thrived, but so have bad actors infringing trademarks or domain names. Some organizations combat online counterfeit activity by proactively using technology like artificial intelligence to protect brands. Others have taken down 3rd party food delivery sites that fraudulently associate themselves with well-known restaurants. To combat online bullying such as registering domain names confusingly similar to actual legitimate domain names, some large organizations have filed UDRP complaints to take down these domain names.

The second session, the TTAB Fireside Chat, included Judge Cindy Greenbaum, Administrative Trademark Judge, Trademark Trial and Appeal Board; Jennifer Elgin, Interlocutory Attorney, Trademark Trial and Appeal Board, and was hosted by Jessica A. Ekhoff, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP. The discussion can be summarized as follows: various roles of the TTAB were discussed, including judges and interlocutory attorneys, and their day-to-day activities. TTAB judges work in panels of three, while interlocutory attorneys work individually on assignments from their managing interlocutory attorney. Frequent issues addressed by TTAB judges and interlocutory attorneys include a rising number of failure to function cases, as well as procedural issues, some of which do not have precedential cases. Some advice offered by the panel when arguing at the TTAB include: (1) stick to what is in the record and start with your strongest evidence; (2) be careful to not inadvertently say something that hurts your case; (3) don’t make a new argument or present any evidence that is not in the record, and (4) if the case is complicated (legally and/or factually), explain and clarify the record, but be careful not to add anything to the record.

The third session, the PTAB Fireside Chat, included Deputy Chief Judge Jacqueline D. Wright Bonilla, Patent Trial and Appeal Board, and was hosted by Julianne M. Hartzell, Marshall, Gerstein & Borun LLP. The discussion can be summarized as follows: Deputy Chief Judge Bonilla discussed new initiatives offered by the PTAB, including a program that provides foundational information to people brand new to the PTAB, including inventors, as well as the Legal Experience and Advancement Program (“LEAP”) program, which gives 15 more minutes of oral argument time to each party represented by a LEAP attorney. Other topics discussed included statistical studies related to patent petitions, options that parties have upon rehearing, discretionary denials under 35 U.S.C. § 325(d), and fast-track appeals.

The last session, the Federal Court Panel, included Judge Sharon Prost, U.S. Court of Appeals for the Federal Circuit; Chief Judge Rebecca R. Pallmeyer, U.S. District Court for the Northern District of Illinois; and Judge Matthew F. Kennelly, U.S. District Court for the Northern District of Illinois, and was moderated by Stephen Rosenfeld, McDonald Hopkins LLC. The discussion can be summarized as follows: the judges expressed their views on how the pandemic has affected federal court practice. The judges also described the claim construction process, and explained why having claim construction occur in later stages after discovery is beneficial. Fully aware of how complicated patent cases are, judges typically provide jury instructions at the beginning of trial and at the end of trial. The judges reminded the audience that they do not have science degrees, and the onus is on the lawyer to describe the invention in a clear and understandable manner. When writing briefs, the judges recommended to carefully construct the introduction, and write about complicated subject matter in a very clear way – if judges need to read a paragraph more than once, the paragraph is not clear enough. Sometimes, judges do not have time to read the appeal fully even once, so even carefully describing the Table of Contents effectively goes a long way.