Welcome to The SNIP, a monthly newsletter by Urška Petrovčič, Adam Mossoff, and Devlin Hartline of Hudson Institute's Forum for Intellectual Property. The SNIP offers a brief breakdown of the latest policy issues and case developments in intellectual property. 

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THE LATEST FROM HUDSON

Hudson Legal Fellow Devlin Hartline Testifies at House Subcommittee Hearing on IP and Right to Repair

On July 18, 2023, Devlin Hartline testified before the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet at a hearing on the intersection of intellectual property (IP) law and the right‑to‑repair movement, which advocates for legislation mandating that manufacturers make available the tools, parts, and know-how to repair their products. The hearing focused on whether device manufacturers’ IP rights unfairly limit consumers’ repair opportunities. Mr. Hartline cautioned against broad interventions that would restrict IP rights and undermine policies that have enabled the development of a thriving marketplace that benefits consumers. He explained that repair advocates often wrongly equate the normal exercise of IP owners’ rights with abusive or unfair practices. He also noted that to the extent manufacturers’ practices are truly abusive, antitrust law already provides mechanisms to police anticompetitive behavior, and he consequently urged Congress to resist calls to upend a thriving free market given the lack of evidence of market failure.

The SNIP: Hudson’s Devlin Hartline asks House Subcommittee to be cautious of the repair movement’s unfounded rhetoric that ignores the successes of the IP system.

Learn More:

• WATCH: “Is There a Right to Repair?,” House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet (July 18, 2023).

• READ: “Written Testimony,” Devlin Hartline, Hudson Institute (July 18, 2023).

• READ: “House IP Subcommittee Mulls Copyright and Design Patent Revisions Amid Right-to-Repair Debate,” Eileen McDermott, IPWatchdog (July 18, 2023).

• READ: “Federal ‘Right to Repair’ Turns on IP Law Changes, Congress Told,” Isaiah Poritz, Bloomberg Law (July 18, 2023).

Hudson Senior Fellow Adam Mossoff Submits Comments to Patent Office on Proposed PTAB Rule Changes

On June 20, 2023, Adam Mossoff submitted comments in response to an Advance Notice of Proposed Rulemaking by the U.S. Patent and Trademark Office (USPTO) concerning the operations of the Patent Trial and Appeal Board (PTAB). Professor Mossoff detailed how Big Tech companies have abused the PTAB to impose massive costs on innovators as a key part of their business strategy of predatory infringement. This includes, among many others, the filing of multiple PTAB petitions against patent owners. He supports the USPTO adopting rules that would impose due process and rule of law requirements on the PTAB. Professor Mossoff suggested that if the USPTO determines that it lacks the authority to adopt some rules, it should also recommend to Congress to enact legislation to address the continuing abuses of the PTAB.

The SNIP: Hudson’s Adam Mossoff files comments with USPTO urging changes to end strategic abuses at the PTAB.

Learn More:

• READ: “Written Comments,” Adam Mossoff, Hudson Institute (June 20, 2023).

• READ: “USPTO Announces Advance Notice of Proposed Rulemaking for Potential PTAB Reforms,” U.S. Patent and Trademark Office (April 20, 2023).

• READ: “Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board,” U.S. Patent and Trademark Office (April 21, 2023).

• READ: “Big Tech’s Abuse of Patent Owners in the PTAB Must End,” Adam Mossoff, Heritage Legal Memorandum (June 29, 2023).

Hudson Senior Fellow Urška Petrovčič Moderates Hudson Webinar on Geopolitics of Global Technology Standards

On June 12, 2023, Urška Petrovčič moderated an online webinar with leading innovation experts—Thomas Duesterberg, Fredrik Erixon, Agatha Kratz, and Nigel Cory—on recent developments in the global technology standards landscape. While global technological standards have enabled the development of a thriving ecosystem that has benefited markets and consumers worldwide, the discussion focused on how rising geopolitical tensions, particularly between China and the United States, could have adverse effects on a global standardization ecosystem. The panelists agreed that preserving global technological standards is strategically important and should be the policymakers’ goal. They recognized nonetheless the need to improve governance over standard-development organizations to address abuses by national governments and large companies.

The SNIP: Hudson’s Urška Petrovčič leads webinar discussion on combatting China’s rising threat in global technological standards development.

Learn More:

• WATCH: “Global Technological Standards and Geopolitics,” Hudson Institute (June 12, 2023).

• READ: “FACT SHEET: Biden-Harris Administration Announces National Standards Strategy for Critical and Emerging Technology,” White House (May 4, 2023).

• READ: “How the EU Is Using Technological Standards as a Protectionist Tool in Its Quest for Cybersovereignty,” Nigel Cory, Information Technology & Innovation Foundation (September 19, 2022).

Amicus Brief Supports Illumina’s Appeal to Fifth Circuit Seeking Reversal of FTC’s Rejection of Illumina-Grail Merger

On June 12, 2023, Adam Mossoff and Richard A. Epstein joined with numerous law professors, economists, and former government officials in filing an amicus brief supporting biotechnology company Illumina’s appeal from the order by the Federal Trade Commission (FTC) to undo its merger with Grail. The FTC ordered Illumina to divest Grail, a company that created innovative cancer-testing technologies, accusing the merged companies of monopolizing the market given their combined patents on these innovative blood tests. The amicus brief explained how the FTC’s actions in this case—including its evasion of evidence countering its arguments and its violation of rules of due process and the separation of powers—more than justified reversal by a court of law. The brief further emphasized how the FTC’s enforcement action against Illumina exemplifies all of the constitutional infirmities that can arise in independent agencies like the FTC.

The SNIP: Amicus brief by leading scholars and former officials supports reversal of FTC’s wrongful rejection of Illumina-Grail merger.

Learn More:

• READ: “Brief of Amici Curiae Antitrust, Patent, and Law-and-Economics Scholars and Jurists in Support of Petitioners,” Illumina Inc. and Grail Inc. v. Federal Trade Commission, U.S. Court of Appeals for the Fifth Circuit (June 12, 2023).

• READ: “Petitioners’ Brief,” Illumina Inc. and Grail Inc. v. Federal Trade Commission, U.S. Court of Appeals for the Fifth Circuit (June 5, 2023).

• READ: “Illumina Wins Fast-Track Appeal of FTC Order to Offload Grail,” Mike Scarcella, Reuters (April 19, 2023).

• READ: “Illumina’s Appeal Poses ‘Biggest’ Attack Yet on FTC,” Dan Papscun, Bloomberg Law (June 7, 2023).

CASE DEVELOPMENTS

Supreme Court Unanimously Upholds Importance of Trademark Protection in First Amendment Challenge

On June 8, 2023, the Supreme Court issued its unanimous decision in Jack Daniel’s Properties Inc. v. VIP Products LLC, overruling a lower court’s ruling that VIP Products’ dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to heightened First Amendment protection. The Court rejected the test applied by the appeals court that preempted any application of the standard “likelihood of confusion” test in a trademark infringement lawsuit. Consistent with an amicus brief in support of Jack Daniel’s that was organized by Adam Mossoff and Devlin Hartline, the Court focused on the central purpose of trademark law to protect the indicators of a product’s unique source to avoid consumer confusion and to safeguard the goodwill of commercial enterprises producing and selling their products in the marketplace. The Court did not rule on whether VIP Products violated Jack Daniel’s trademarks and instead sent the case back to the lower courts to determine whether VIP Products committed trademark infringement with its dog toy that is similar enough to Jack Daniel’s famous Tennessee Whiskey bottle that a consumer survey found a significant number of respondents believed it was approved by the company.

The SNIP: The Supreme Court holds that special First Amendment test for expressive works does not apply when the alleged infringer uses the mark to indicate source.

Learn More:

• READ: “Opinion of the Court,” Jack Daniel’s Properties Inc. v. VIP Products LLC, U.S. Supreme Court (June 8, 2023).

• READ: “Brief of Scholars, Former Judges, and Former Government Officials as Amici Curiae Supporting Petitioner in Favor of Reversal,” Jack Daniel’s Properties Inc. v. VIP Products LLC, U.S. Supreme Court (January 18, 2023).

• READ: “Jack Daniel’s Wins Big in Challenge to Spoofing ‘Bad Spaniels’ Dog Toy,” Ronald Mann, SCOTUSblog (June 9, 2023).

• READ: “Jack Daniel’s Gets Last Laugh for Now in SCOTUS’ Ruling in ‘Bad Spaniels’ Case,” Eileen McDermott, IPWatchdog (June 8, 2023).