Intellectual Property

Constitutional Challenges to the America Invents Act - Podcast

Intellectual Property Practice Group Podcast
Robert P. Greenspoon, Adam Mossoff, Tejinder Singh, Trevor K. Copeland August 15, 2016

The America Invents Act (AIA) significantly affects the Constitutional separation of powers by creating a new inter partes review (IPR) regime for challenging an issued patent under an Article II Executive Branch entity, the Patent Trials and Appeals Board (PTAB). In practice, the PTAB has become an alternative forum for accused infringers to attack patent claims with less risk and expense than in U.S. federal district courts. Combined with the reluctance and sometime refusal of Article III courts (including the U.S. Court of Appeals for the Federal Circuit) to exert authority over final application of patent law, the statutory adjudicative powers given PTAB judges give rise to separation of powers issues.

As a result, patents that have successfully overcome validity challenges in a “final judgment” of a court are now subjected to double jeopardy in the PTAB, and those valuable but limited patent property rights can be challenged and taken away entirely within an Article II administrative forum. At least two cases pending cert before the U.S. Supreme Court challenge provisions of the AIA on separation of power bases (Cooper v. Lee and MCM Portfolio LLC v. Hewlett-Packard Co.), while another (Cuozzo Speed Technologies, LLC v. Lee) challenging the differences between the PTAB’s and the courts’ claim construction regimes has already been decided. In Cuozzo, the Court upheld the PTAB/USPTO’s application of a different claim construction standard from the courts, tipping the scales against patentees who face a validity challenge during IPRs as compared against in federal district court. Critics of the AIA rules –and particularly IPRs– as applied by the USPTO/PTAB assert that they weaken patents and the patent system, and undermine the incentives for innovation that have driven economic growth for much of this country’s history. This teleforum will include a discussion of the Constitutional challenges to the AIA’s patent review provisions, including the Court’s hints in Cuozzo that it is aware of other Constitutional issues.


  • Mr. Rob Greenspoon, Founding Member, Flachsbart & Greenspoon, LLC
  • Prof. Adam Mossoff, Professor of Law and Co-Director of Academic Programs, Senior Scholar,Center for the Protection of Intellectual Property, Antonin Scalia School of Law, George Mason University
  • Mr. Tejinder Singh, Partner, Goldstein & Russell
  • Moderator: Mr. Trevor K. Copeland, Shareholder, Brinks Gilson and Lione

Kirtsaeng v. John Wiley & Sons - Post-Decision SCOTUScast

SCOTUScast 7-28-16 featuring Christopher Newman
Christopher Newman July 28, 2016

On June 16, 2016, the Supreme Court decided Kirtsaeng v. John Wiley & Sons. Academic textbook publisher John Wiley & Sons, Inc. (Wiley) owns the American copyright for textbooks and often assigns its rights to its foreign subsidiaries to publish, print, and sell its textbooks abroad. Supap Kirtsaeng, a Thai citizen who came to the United States in 1997 to study mathematics, asked friends and family in Thailand to buy the English-language versions of his textbooks in Thailand, where they were cheaper and mail them to him. Kirtsaeng would then sell these textbooks in America, reimburse his friends and family, and make a profit.

In 2008, Wiley sued Kirtsaeng for copyright infringement. He ultimately prevailed before the U.S. Supreme Court on the question whether the “first sale” doctrine--under which the owner of a “lawfully made” copy can dispose of it without permission of the copyright owner--applies to copies of a copyrighted work lawfully made abroad. On remand, the U.S. Court of Appeals for the Second Circuit ruled that the “first sale” doctrine provided Kirstaeng with a complete defense to Wiley’s infringement claim. Kirtsaeng thereafter sought an award of attorneys’ fees pursuant to Section 505 of the Copyright Act, which allows the award of fees to a prevailing party at the court’s discretion. The federal Courts of Appeals have applied several different standards in resolving such fee requests. Here, the Second Circuit affirmed the denial of attorneys’ fees to Kirtsaeng based on the district court’s view that Wiley had taken an “objectively reasonable” position in the underlying litigation.

The U.S. Supreme Court again granted certiorari, to address the following question: What is the appropriate standard for awarding attorneys’ fees to a prevailing party under section 505 of the Copyright Act?

By a vote of 8-0, the Supreme Court vacated the judgment of the Second Circuit and remanded the case. Justice Kagan delivered the opinion for a unanimous Court, which held that (1) when deciding whether to award attorney's fees under the Copyright Act’s fee-shifting provision, a district court should give substantial weight to the objective reasonableness of the losing party's position, while still taking into account all other circumstances relevant to granting fees; and (2) while the Second Circuit properly calls for district courts to give "substantial weight" to the reasonableness of a losing party's litigating positions, its language at times suggests that a finding of reasonableness raises a presumption against granting fees, and that goes too far in cabining the district court's analysis.

To discuss the case, we have Christopher M. Newman, who is Associate Professor of Law at George Mason University School of Law.

Trillions of Dollars at Stake: The Internet of Things - Podcast

Telecommunications & Electronic Media Practice Group Podcast
Neil Chilson, Jamie Susskind, Eric Wenger, Kelly A. Donohue July 21, 2016

Cisco and other industry leaders estimate that the Internet of Things (the “IoT”) has the potential to inject trillions of dollars of value over the next decade into both the public and private sectors. It holds tremendous promise to transform and improve our lives, generating unprecedented opportunities in the way we govern and are governed, the way we do business, and the way we manage our daily activities. We stand at the cusp of an era in which everything from cars to cows can be given an Internet address and connected to the IoT network.

This rapid expansion of new technologies and capabilities brings new technical, legal, and policy challenges to the forefront. The IoT has undoubtedly caught the attention of federal policy makers, as demonstrated by the National Telecommunications and Information Administration’s (“NTIA”) recent request for comments. There are many potential touchpoints in the IoT ecosystem for regulators and policymakers, from addressing spectrum requirements to ensuring the security of systems to establishing data protection frameworks. Unfortunately, the risk of overregulating or promulgating inconsistent regulations runs high.

Our experts discussed the current and future regulatory landscape of the IoT. Is the NTIA’s proceeding a harbinger for more regulation in this nascent space? What is the correct framework to ensure the successful deployment of the IoT? Is there any role for government? What policy decisions could make or break the evolution of the IoT?


  • Neil Chilson, Attorney-Advisor to Commissioner Maureen Ohlhausen, Federal Trade Commission
  • Jamie Susskind, Legislative Counsel, Senator Deb Fischer
  • Eric Wenger, Director for Cybersecurity and Privacy Policy, Global Government Affairs, Cisco
  • Moderator: Kelly A. Donohue, Partner, Wilkinson Barker Knauer LLP

Privacy and Cell-Site Simulators - Podcast

Criminal Law & Procedure Practice Group Podcast
Howard W. Cox, Brian L. Owsley July 20, 2016

Cell-site simulators are devices used by law enforcement. In response to the signals emitted by a cell-site simulator, cellular devices in the proximity identify the simulator as the most attractive cell tower in the area and transmit signals to the simulator that identify the device. Using these simulators, investigators can locate cellular devices whose unique identifiers are already known to law enforcement, or determine the unique identifiers of an unknown device by collecting limited signaling information from devices in the simulator user’s vicinity.

It has been a subject of debate whether the use of cell-site simulators by the government requires a warrant supported by probable cause. In September 2015, the Justice Department released a policy requiring federal investigators to obtain a warrant prior to employing a simulator, except under exceptional circumstances.

Is there a Fourth Amendment reasonable expectation of privacy in the data collected by cell-site simulators? Who is in the best position to establish limits in this area (if any), Congress or the courts? Should investigators be permitted to use simulators, even with a warrant?


  • Howard W. Cox, Adjunct Professor, George Washington University
  • Prof. Brian L. Owsley, Assistant Professor of Law, UNT Dallas College of Law