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Want to strike fear in a patentee’s heart? Just mention the PTAB, the USPTO’s judicial arm responsible for adjudicating IPR petitions filed by patent challengers. True, the perception that the PTAB is an automatic patent-killing machine has moderated a bit over time. But that changed perception in the public consciousness is of little solace to patent owners forced to run the PTAB gauntlet in the hopes of keeping their assets alive. It is therefore unsurprising that patentees, especially those in the midst of patent-enforcement efforts, will do almost anything to avoid being dragged into a PTAB battle where avoiding a premature end to an enforcement campaign is the primary goal.

For most patentees, there is not much they can do to avoid being dragged into an IPR defense. Especially if they are looking to recover more than nuisance value for a license to their patents. (As has been noted in this column and elsewhere, IPRs have done more to reduce the amount of money considered nuisance value in patent litigation than perhaps any other legal development in the patent space). Nowadays, it is almost a given that a defendant will file at least one IPR within the one-year time limit against any patent asserted against that defendant in litigation. And some defendants like to push the PTAB to the limits, by filing multiple IPRs (six in one case I know about) against a single patent. In short, IPRs are de rigeur in modern patent litigation.

Every so often, however, a patentee has the ability to try and stop IPRs in their tracks. The motivation to try and do so is clear. Eliminating the single greatest threat to an asserted patent is always worth the effort, especially in those high-value cases where the patentee is hoping for a real, rather than nuisance value, level of recovery. In fact, two recent decisions help define the contours around when a patentee may be able to keep a filed IPR from proceeding. Both cases involved contractual language involving the parties in the litigation — but also led to different results based on the different postures of the parties in each case.

The easier case perhaps is where the defendant had previously agreed not to challenge the validity of the patent, while also agreeing to a forum selection clause. In an April opinion, the Federal Circuit upheld the grant of a preliminary injunction requiring the defendant (MerchSource) to withdraw three filed IPRs against patents asserted against them by a small VR headset seller called Dodocase. Dodocase had entered into a licensing arrangement with MerchSource, with the governing license agreement containing a forum selection clause specifying that any disputes arising out of the licensing agreement would be litigated in California. Such a dispute arose when MerchSource decided to stop paying royalties. Which led Dodocase to sue, followed by MerchSource filing IPRs. The Federal Circuit agreed that the district court had not abused its discretion by interpreting the forum selection clause as excluding MerchSource’s ability to challenge the patents in the PTAB. 

In contrast to the result in Dodocase, a plaintiff called NuCurrent (designer of wireless charging solutions) was unable to stop Samsung IPRs targeting each of NuCurrent’s asserted patents. Like Dodocase, NuCurrent filed a motion for a preliminary injunction asking the court to order Samsung to withdraw the IPRs, based on an NDA that had been entered into by the parties a few years prior. That NDA had a forum selection clause requiring that any cases arising out of the NDA be filed in New York and no other jurisdiction — which would ostensibly include the PTAB. Here, however, the operative contract — the NDA — had expired a year before Samsung filed its IPRs. Accordingly, the SDNY’s Judge Denise Cote found that Samsung was not in breach of any obligations when it filed its IPRs. Without a breach by Samsung, no preliminary injunction could issue.

Interestingly, Judge Cote also decided to address the other preliminary injunction factors, providing a glimpse into how she views IPRs in the process. With respect to factor two, likelihood of irreparable injury, Judge Cote found that the AIA specifically contemplates IPRs proceeding concurrently with patent infringement cases. Add in the PTAB’s unique role in determining the validity of already-issued patents, and there was no basis for arguing that NuCurrent faced irreparable harm if the IPRs proceeded.

Similarly, the balance of hardships also tilted in Samsung’s favor, since it would face a time-bar against filing new IPRs if the preliminary injunction issued. Finally, Judge Cote found the public interest was satisfied if Samsung was allowed to challenge the patents via IPR, rather than being forced to litigate validity solely before her.

Ultimately, the role of IPRs in modern patent litigation shows no signs of abatement. Litigants on both sides, therefore, will continue to look for every advantage when it comes to IPRs. What Dodocase and NuCurrent demonstrate is that parties must show extreme caution when negotiating forum selection and non-aggression clauses — particularly where a patent dispute between the parties may end up in court.  For patentees, getting prospective defendants to agree to forum selection clauses that preclude those entities from filing IPRs is a worthwhile effort. And those worried about infringement claims should be very careful about agreeing to any restrictions on their ability to file IPRs in the future. Because defendants know that patentees will do everything they can to dodge the PTAB. Best not make it an easy dodge.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

New York City Pride has concluded. Although many of the rainbow banners and decorations have been removed from storefronts and apartment terraces, the celebration’s energy continues throughout the city’s downtown neighborhoods. This year’s Pride was especially festive as it celebrated  the 50^th anniversary of the Stonewall riots. A precursor to Pride, one month after the Stonewall riots in 1969, a “Gay Power” demonstration was held in Washington Square Park. In 1970, Christopher Street Liberation Day commemorated the one-year anniversary of Stonewall.

Since the Stonewall riots, gay rights, like Pride, have grown. Perhaps the greatest advancement has been United States v. Windsor, a landmark United States Supreme Court case which held that the Defense of Marriage Act (DOMA) in its denial of the recognition of same-sex marriage, was a violation of due process.  “Love Wins!” was the popular message that emerged from Windsor. I imagine that most do not realize that Windsor involved a trusts and estates issue, as it applied to a married, same-sex couple. During Pride, I often reflect on the case and how an issue as mundane as estate tax could spark something as powerful as Windsor and its aftermath.

Edith Windsor and Thea Spyer married in Canada in 2007 after a decades-long relationship. Their home state of New York recognized the marriage. When Spyer died, in 2009, Windsor could not claim a marital deduction for estate tax, a deduction that was available for a heterosexual married couple. As a result, Windsor had to pay estate tax when Spyer died. In 2010, Windsor sued the federal government. The lawsuit sought to have DOMA declared unconstitutional and also to refund Spyer’s estate’s paid tax in the amount of $350,000. In a majority decision, Justice Anthony Kennedy, joined by Justices Ginsburg, Breyer, Sotomayor, and Kagan, held that DOMA was “a deprivation of the liberty of the person protected by the Fifth Amendment.”

Trusts and estates issues arise during the most difficult times in people’s lives. While mourning the loss of her spouse, Windsor was denied recognition of the relationship by something as stoic and ministerial as the IRS and its treatment of an estate tax deduction. In the past, same-sex couples suffered even worse inequities including inheritance laws that excluded same-sex spouses and partners. Couples who spent their lives together for decades were denied standing as next-of-kin in courts and unable to receive inheritances. Same-sex couples could not gift freely between each other without incurring tax, unlike heterosexual couples. Same-sex spouses were denied decision-making authority in end-of-life situations. Adoption by same-sex couples was difficult if not impossible.

Many of the aforesaid issues were dealt with by establishing a last will and testament  and advanced directives.  A proper estate plan will ensure your assets are distributed to whom you want, when, and how you want. Decisions will be made by your nominee and not whom the law dictates to be your decision maker. This is foundational to the practice of trusts and estates. The best way to ensure how to dispose of your assets is to express your wishes in a last will and testament, regardless of whether you are married or single. Similarly, a health care proxy is necessary to appoint an individual whom you choose to make medical decisions. Asserting one’s wishes in a last will and testament and health care directive guard not only against statutes, but also family members who may not be supportive or accepting of your life choices.

Pride, through the context of Windsor, provides several lessons. Although “Love Wins!” is the popular takeaway, we are also reminded that through family composition, relationship, and asset level, it is incumbent upon each of us to take care of our estate plan and further to be protected and treated equally by the law.

Cori A. Robinson is a solo practitioner having founded Cori A. Robinson PLLC, a New York and New Jersey law firm, in 2017. For more than a decade Cori has focused her law practice on trusts and estates and elder law including estate and Medicaid planning, probate and administration, estate litigation, and guardianships. She can be reached at cori@robinsonestatelaw.com. 

People like to talk about Merrick Garland’s stolen seat and Keggy McAssaulterton’s dubious ascent to the Supreme Court, but people are largely sleeping on the lower courts that have been systematically restocked with FedSoc Pizza Managers. Elie, working on a big upcoming piece on this subject in The Nation, shares some of his thoughts on the state of the judicial system.

HARARE – Zimbabwe lawmaker Job Sikhala, vice-chairman of the opposition MDC party, was on Tuesday charged with treason after allegedly saying the party would overthrow the government before the next election, his lawyer said.

“He has been formerly charged with attempting to overthrow the government unconstitutionally,” his lawyer Obey Shava told AFP, saying his client denied the charges.

Zimbabweans have little faith in the economic record of the ZANU-PF government, which was led by President Robert Mugabe until 2017 when he was ousted in favour of current President of Zimbabwe Emmerson Mnangagwa.

The country has recently endured another bout of sharply rising prices, with official inflation now at nearly 100 percent – the highest since the hyperinflation era when it hit 500 billion percent.

Since early May, a terrifying ordeal has been playing out in San Francisco. A journalist, Bryan Carmody, had his home raided by the San Francisco police department after he refused to divulge a confidential source. This was an objectively deplorable raid for a couple of reasons.

First, in the infamous Pentagon Papers case, members of the United States Supreme Court noted that “[b]oth the history and language of the First Amendment” supported the view that the press must “be left free to publish news, whatever the source, without censorship, injunctions, or prior restraints.” In the press world, Bryan Carmody “is what’s known as a stringer,” a person who collects material and provides it to news organizations. In other words, Carmody is not a source; he is, by his very nature, a reporter of information and deserving of First Amendment protection. Secondly, California has a shield law that protects the confidentiality of Carmody’s sources.

Given the First Amendment implications and the state specific protection, the fact that not one but two judges signed-off on the raid of Carmody’s home amounts to nothing less than a judicial disgrace. A disturbing failure by the California magistrates to adequately protect a journalist from unjust detainment and gross abuse of state power. The judicial sign-off to the raid is also the product of a grossly abused Fourth Amendment standard that lacks meaningful judicial oversight and is regularly satisfied by incredibly flawed evidence with absurdly high error rates.

The only encouraging fact about the Carmody story is that in an era where the current president regularly calls the press the enemy of the people, the state’s actions towards Carmody have been almost universally condemned, including by right-wing leading publications. The undeniable result of the widespread condemnation is that Carmody had his documents returned, and the police were forced to concede the raid and the warrants were illegal. In another case involving a publisher of information however, and one that you might have heard of involving Julian Assange, the widespread reaction to the actions of the government could not be any more different.

For those who are unaware, Julian Assange is the head of Wikileaks, an organization that regularly publishes dangerous and damning material, and that the CIA describes as a “non-state hostile intelligence service.” Just recently, Assange was charged by the United States for multiple felonies and again, unlike the Carmody story, many instead view the government’s actions as justified. For example, to David French at the National Review, Assange should not even be considered a member of the press. This is because, as French argues, Assange isn’t doing “what the ‘media’ should do, unless you think the media should publish sailing schedules of troop transports in the face of a submarine threat — or that the media should publish military plans on the eve of an offensive.”

The fundamental problem with French’s view, as pointed out by Jacob Sullum at Reason, is that whether Assange behaves as a member of the traditional media or not is irrelevant. First Amendment protection is thankfully not based on a categorical and vague distinction of “media.” An originalist, historical analysis of how freedom of press was understood at the time of the founding reveals that constitutional protection was intended for all who utilize the written word for mass publication.

Accordingly, to those such as Sullum, the prosecution of Julian Assange represents a troubling assault on the free press, akin to what happened to Carmody, per Sullum:

Counts 9 through 17 involve “disclosure of national defense information,” a felony punishable by up 10 years in prison. That penalty applies to anyone who “willfully communicates, delivers, transmits or causes to be communicated” such information to “any person not entitled to receive it.” This felony is the bread and butter of any journalist who covers national security issues and publishes information that the government would prefer to keep secret.

As First Amendment scholars have noted, that statute squarely applies to indisputably valuable journalism such as publication of the Pentagon Papers.

Although I agree with Sullum that the statute he references is far too broad and unconstitutionally criminalizes a core function of the press, I disagree that Assange cannot be held criminally liable for his actions at Wikileaks.

To be absolutely clear, it is not the act of Assange publishing factual national defense information that I find to be criminal. If that were the case, then every major publication in the country can be classified as a criminal organization and the free press would cease to exist. The criminal act that could be properly attached to Assange, in my opinion, is his alleged “active participation” in the theft of the information published by Wikileaks. As part of its indictment, the Department of Justice is alleging that Assange tried to help Chelsea Manning hack into classified systems. If true, this sort of active participation goes beyond simply publishing information and thus, beyond the scope of protection afforded to the press by the constitution.

Unfortunately, it appears that the prosecution of Assange goes further than his alleged assistance in the theft of the information and seeks to criminalize the publication of information. Therefore, even if an important distinction between the actions of Carmody and Assange can be made, the prosecution of Assange remains every bit as troubling and dangerous to freedom of the press as Sullum claims.

Tyler Broker’s work has been published in the Gonzaga Law Review, the Albany Law Review, and is forthcoming in the University of Memphis Law Review. Feel free to email him or follow him on Twitter to discuss his column.

President Cyril Ramaphosa has said he will discuss Zimbabwe’s energy woes with Eskom, adding that boosting the supply of electricity to SA’s northern neighbour requires a “balancing act”.

The president was speaking on the sidelines of the 12th Extraordinary Summit on the Continental Free Trade Area in Niger, after discussions with his Zimbabwean counterpart, President Emmerson Mnangagwa.

Zimbabwe started implementing rotational load shedding in May, due to a combination of low water levels at Kariba Dam’s hydroelectric power plant, generation constraints at ageing power stations and limited foreign imports.

In an interview with the state broadcaster the Zimbabwe Broadcasting Corporation, Ramaphosa said he had had a “wonderful meeting” with Mnangagwa. He said one of the issues discussed was energy.

“They [Zimbabwe] have been going through a massive drought and as a result they need energy and obviously they would like South Africa to support. President Mnangagwa requested for further support and this is the type of thing that we are going to discuss with Eskom,” he said.

Ramaphosa said the fortunes of SA’s struggling power utility and energy supply in the Southern African Development Community were linked.

“Therefore as we go through our own challenges we have to do a balancing act to see how best we are able to support them but at the same time look after our own interests,” he said.

Last week Zimbabwe paid Eskom $10m. It still owes the SA utility about $23m.

Zimbabwe is facing a shortfall of about 600 MW of electricity and load shedding can cause power to be out for as long as 24 hours in some places.

Zimbabwe, meanwhile, is also having talks with Mozambique on increasing imports of electricity.

Post published in: Business

Ed. note: This is the latest installment in a series of posts on motherhood in the legal profession, in partnership with our friends at MothersEsquire. Welcome Tiffany Hendrix Blackmon to our pages.

As I walked into the first day of the bar exam, a wave of nausea hit. It was not test anxiety. It was morning sickness. At 9 weeks pregnant, I was as concerned about managing my first trimester symptoms as I was with remembering anything about the rule against perpetuities.

Law school prepared me to take the bar. Nothing had prepared me for breaking into the legal field while becoming a mother. I was not close with anyone who had been pregnant while taking the bar. I looked online and found minimal resources. There were occasional articles about women who were pregnant or had a baby during their 3L year, but most of the time the articles focused on why women felt pressured to have a baby before they began their career. The articles didn’t talk about the logistics — how did these women actually manage their symptoms, balance appointments and studying, etc.?

I read through message boards, and found women who shared stories about their time preparing for and taking the bar while pregnant or with a young child. These message boards were the only resource I found that gave any concrete examples and ideas. I learned that you can request accommodations for the bar, but it required completing paperwork and waiting for approval.
Since I was so early on in pregnancy, I didn’t know what symptoms I may have or what accommodations I may need. I wondered, why is no one talking about this topic? Why is there not more assistance available to help women excel in their career while also building the life they want at home? It seemed that I was supposed to strive for the elusive work-life balance without ever being able to talk about my actual life.

Taking the bar while pregnant is not unheard of, it is just not commonly talked about. Studying for the bar (the first time), likely looked a lot like most people’s schedules who were studying while working. I listened to lectures on an app during my commute to and from work. I used flash cards and outlines to study during my breaks. After work and on weekends, I watched lecture videos and took practice tests. It also included naps when I got too tired, and breaks when I was too nauseous. I kept peppermint candies and crackers with my study materials, to try to keep the nausea at bay.

I made it through the first day of the bar without any issues. The second day, my nausea was too much to handle. My “morning sickness” had never confined itself to a specific time of day, and by the afternoon I had to call it quits. I answered every question, but couldn’t focus at the end, and didn’t look over my answers. I left, feeling defeated.

When I looked online and saw that I had not passed, I wasn’t shocked. When I got the letter that I had failed by one point, I was extremely frustrated. Yet, I also knew I could pass. I made the choice to retake in February, since our son was due right before the exam. I enjoyed maternity leave with our son, but also began studying part-time during my leave. I continued studying part-time until July 1, when I made the choice to quit my job. I studied full-time until the exam.

This time, I didn’t just blindly follow the schedule given to me by a bar prep company. I took a critical look at what I could do to use my time most effectively, so I could spend time with my family, study, and pass the bar. I’m a visual learner, and not an auditory learner. Instead of listening to audio lectures and videos, I made color-coded outlines. I created and used charts to study. I spent far more time taking practice tests, and focusing in on the subjects where I was testing poorly. I fit the studying in during our son’s naps, and while he spent time with family members. Best of all, he happily snuggled with me while I read him my outlines. There were certainly challenges, when it was hard to balance caring for a baby who didn’t want to sleep or was fussy, and I worried I would fail again due to time I lost studying. But during my study breaks, I also had the joy of seeing him roll for the first time. He started smiling and laughing. I knew that the sleep deprivation, countless hours studying, and wonderful study breaks would be worth it.

Finding out that I had passed the bar was an amazing moment. I look forward to hearing stories from moms who studied for the bar while cradling their baby bump or cuddling their baby. I don’t want the only stories we hear about to be when women go into labor while taking exams. I hope that we can begin more conversations about how we can support women in building their legal careers as well as supporting them in building the life they want at home.

Tiffany Hendrix Blackmon practices law in Portland, Oregon. She is the Co-Chair of the Oregon Bar’s Pro Bono Committee, and enjoys volunteering in the community. She is married with two sons, a three-year-old and a six-month-old. In her free time, she can be found baking, having family dance parties, trying new restaurants and watching medical dramas. You can connect with her on LinkedIn.

Donald Trump says his biggest regret in office is not, you know, renuclearizing Iran or supercharging a human rights crisis at the border, but the decision to appoint known Jeff Sessions to the Justice Department. Trump’s complaint with Sessions boils down to “he actually followed black letter law” and recused himself from the Russia investigation since he had personally met with Russian officials as a Trump campaign flunky.

Conspiracy theorist-cum-AG Bill Barr wasn’t going to do that to Trump! Barr was the kind of guy willing to read the incredibly detailed Mueller report and just make up stuff in a four-page memo.

So Trump was likely shocked this morning when he learned that Barr has recused himself from the Jeffrey Epstein prosecution that directly implicates the sitting Labor Secretary who has already been benchslapped for his “material omissions” in giving Epstein a sweetheart deal and attempting to stifle public access to the evidence.

We’re not saying that Acosta is going to be charged in this case, but what we are saying is that the case is being run by the group that charges elected officials so… yeah.

Sure, Barr testified that he’d recuse himself from matters involving his former employer Kirkland & Ellis, but did anyone actually believe he’d really do it when his department actually put a cabinet official in the crosshairs? Or, for that matter, Trump himself, as the big guy has been apparently been fingered as a “material witness” by folks close to the investigation.

Barr is notably not recusing himself from any new charges against Epstein since those wouldn’t necessarily involve anything his Kirkland & Ellis partners worked on. But any inquiry into the original deal is ethically off limits for Barr, which means Acosta isn’t going to have Barr in his corner if this case goes down that road.

But any new charges that might, say, implicate Trump will have to go through Barr. Because of course that’s how this would end up.

AG Barr recuses himself from Jeffrey Epstein case, citing past legal work [Fox News]
Barr Won’t Recuse Himself From New Case Against Jeffrey Epstein [Bloomberg]

Earlier: Jeffrey Epstein’s Arrest Forces Us To Ask: Which Dirtbag Lawyers In This Case Will Face Their Own Music?

Joe Patrice is a senior editor at Above the Law and co-host of Thinking Like A Lawyer. Feel free to email any tips, questions, or comments. Follow him on Twitter if you’re interested in law, politics, and a healthy dose of college sports news. Joe also serves as a Managing Director at RPN Executive Search.