Intellectual Property

Cybersecurity: Private Sector Faces Increasing Regulatory Risk From Agency Enforcement and Informal “Guidance” Becoming Standard of Care

Litigation Practice Group Teleforum Thursday, October 15, 03:00 PMFederalist Society Teleforum Conference Call

After Target, Anthem, Sony and Ashley Madison, cybersecurity is at the top of every company and regulator’s list of worries. As Congress considers legislation, the Executive Branch has been implementing a Presidential Executive Order to develop a “voluntary” framework for cybersecurity. The private sector faces a rapidly shifting terrain without clear standards. Agencies are flexing their regulatory muscles to expand oversight through informal guidance and threat of enforcement, as embodied in a recent victory by the FTC in the Wyndham case.

This Teleforum will provide an overview of the cybersecurity trends facing the private sector, and will discuss the implications for predictability, transparency, and innovation. Will the President’s Executive Order, and the NIST Cybersecurity Framework, become the de facto standard for the private sector? Is the federal government regulating through the threat of enforcement by FTC, FCC and other federal agencies, instead of through more regular administrative processes? What should companies make of emerging agency “guidance” from agencies like the FDA, SEC, NHTSA, and DoD, on operations and innovation in areas like the Internet of Things, mobile applications and devices, cloud services, connected cars?

Join us for a lively discussion about these trends and what the private sector faces in 2015 and 2016.


  • Megan Brown, Partner, Wiley Rein LLP
  • Brent McIntosh, Partner, Sullivan & Cromwell LLP
  • Rebecca Seidel, General Counsel, Senate Commerce, Science and Transportation Committee

"Going Dark" and the Intersection of Law Enforcement and Privacy Interests - Podcast

Criminal Law & Procedure Practice Group Podcast
Peter Swire, Benjamin Wittes September 30, 2015

FBI Director James Comey recently testified before Congress about what he characterized as law enforcement's increasing lack of technical ability to carry out court orders to intercept and access communications and information because of a fundamental shift in communications services and technologies. This issue has been coined the “going dark" problem. According to Comey, changes in technology such as encryption hinder law enforcement’s ability to use investigative tools and follow critical leads to stop terrorists and cyber criminals.

Is "going dark" a real problem, or are Director Comey's concerns overblown? Do the means exist to develop techniques and tools, designed to mitigate the challenges associated with "going dark," while maintaining the privacy-protecting attributes of the technologies at issue?


  • Prof. Peter Swire, Nancy J. and Lawrence P. Huang Professor of Law and Ethics, Scheller College of Business, Georgia Institute of Technology and Senior Counsel, Alston & Bird LLP
  • Mr. Benjamin Wittes, Senior Fellow, Governance Studies, The Brookings Institution

An Opportunity Missed?: Kimble v. Marvel Enterprises - Podcast

Intellectual Property Practice Group Podcast
Gregory Dolin June 25, 2015

In Kimble v. Marvel Enterprises, citing stare decisis, the Court held that a patent holder cannot charge royalties for the use of his invention after its patent term has expired. In so holding, the Court affirmed a 60 year-old case along the same lines. But in yesterday’s decision, three justices dissented, stating that “[t] he Court employs stare decisis, normally a tool of restraint, to reaffirm a clear case of judicial overreach.” Should the Court have reversed course?

  • Prof. Gregory Dolin, Co-director, Center for Medicine and Law, University of Baltimore School of Law

The Telecommunications Act: Can it Rein in the FCC? - Audio/Video

Third Annual Executive Branch Review Conference
Jonathan Adelstein, Kelly Cole, Grace Koh, David B. Quinalty, Scott Belcher June 23, 2015

The communications and technology sectors have seen an explosion of growth and innovation over the last decade, and yet the primary body of law governing these areas, The Communications Act, has not been updated since the days of dial-up internet. In 2013, House Energy and Commerce Committee Chairman Fred Upton (Mich.) and Communications and Technology Subcommittee Chairman Greg Walden (Oreg.) announced that they would commence efforts to “update the law to better meet the dynamic needs of the 21st century.” In January, Senate Commerce Committee Chairman John Thune (S. Dak.) announced similar plans.

Our panel will discuss recent efforts to update the Communications Act for the modern internet age. What should a new framework look like? With the convergence of technologies, should the current platform-specific regulation be replaced with a more flexible, service-based regulatory scheme? Should special considerations still apply in certain services? How could such regulations impact developing business models and evolving technologies? Should the scope of the FCC’s jurisdiction remain the same? These and other issues will be explored.

This panel was presented on June 18, 2015, at the Mayflower Hotel in Washington, DC during the Third Annual Executive Branch Review Conference.

The Telecommunications Act: Can it Rein in the FCC?
9:40 – 11:10 a.m.
Senate Room

  • Mr. Jonathan Adelstein, President & CEO, PCIA - The Wireless Infrastructure Association
  • Ms. Kelly Cole, National Association of Broadcasters
  • Ms. Grace Koh, U.S. House of Representatives Committee on Energy and Commerce
  • Mr. David B. Quinalty, U.S. Senate Committee on Commerce, Science, and Transportation
  • Moderator: Mr. Scott Belcher, Telecommunications Industry Association

June 18, 2015
Washington, DC

Administrative "Death Squads" for Patents? Assessing the New Administrative Procedures for Challenging Patents - Podcast

Intellectual Property Practice Group Podcast
Peter Cicala, Gregory Dolin, Robert Sterne, Mark F. Schultz June 17, 2015

Property rights in patented inventions are being struck down at an unprecedented rate in a new administrative forum. This new post-grant review procedure (PGR), instituted in late 2012, takes place not in a court, but rather in an administrative forum known as the Patent Trials and Appeals Board. The Board has invalidated the vast majority of the patent claims it has reviewed, around 80% by some measures.

The US Patent and Trademark Office appears to have erected a vast and expensive system for granting rights with one hand and taking them away with the other. The former Chief Judge of the nation's patent appeals court, Randall Rader, has called the Board a "death squad" for patents. Many businesses and their attorneys have commented that investors and corporate decisionmakers are re-evaluating their investments in R&D whose value is secured by patents.

Are these criticisms confirmed by the actions of opportunistic hedge funds and law firms? PGR challenges have no standing requirement -- they can be instituted by anyone. Hedge fund manager Kyle Bass has filed a PGR challenge against Jazz Pharmaceuticals after shorting the company's stock. PGRs are viewed as so deadly by investors that they reacted just as Bass hoped -- the stock's value plummeted. Similarly, law firms have been contacting innovative companies and demanding payments not to file PGR challenges against their patents.

This Teleform discussed the expansion of the administrative powers of the Patent Office in establishing the Board, and whether this is another example of overreach by the executive branch that should be reined in via reform measures currently under consideration in Congress.

  • Mr. Peter Cicala, Vice President of Intellectual Property, Chief Patent Counsel, Celgene Corporation
  • Prof. Gregory Dolin, Associate Professor of Law, Co-Director, Center for Medicine and Law, University of Baltimore, School of Law
  • Mr. Robert Sterne, Partner, Sterne Kessler Goldstein Fox
  • Moderator: Prof. Mark Schultz, Senior Scholar, Center for the Protection of Intellectual Property, George Mason University School of Law, Associate Professor, Southern Illinois University School of Law