Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. This week I'm going Roger Ebert on you and offering a few reflections on “Invalidated,“ a motion picture that gives voice to inventor and conservative concerns about the direction of the U.S. patent system. Let's get right to it. Remember that you can always email me your thoughts and feedback (and I'm guessing there will be a lot this week) and follow me on Twitter.

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The Case Against the PTAB

OK, I'll admit it. On patent litigation matters, I probably lean toward the accused infringer side. I worked next door to Silicon Valley for 25 years. It'll have that effect on you.

Still, I try to keep my eyes and ears open to all sides of the debate. So I was delighted to attend a screening of “Invalidated: The Shredding of the U.S. Patent System” presented Tuesday at the San Diego Inventors Forum. The film was followed by a panel discussion that included Josh Malone, the film's protagonist; Paul Morinville of U.S. Inventor; and Rep. Dana Rohrabacher, author of HR6557, the Inventor Protection Act.

In short, it was a couple of hours of inhaling patent owner concentrate.

A few takeaways.

➤ First, the movie is worth checking out. Sure, it's a polemic aimed at the Patent Trial and Appeal Board, and it's entirely one-sided. But the personal stories of the Malone family and other inventors featured in the film are compelling and effectively told. The passion these inventors share about creating, the grievance they experience from feeling their ideas are being ripped off, and their sense of betrayal from the government they thought would protect them should not be brushed aside too quickly.

➤ There are plenty of howler claims, including several from George Mason law professor Adam Mossoff, the film's featured academic. He says the PTAB's “sole job is geared toward invalidating patents,” and that invalidation rates run “anywhere between the high 60 percents to almost 100 percent.” The PTAB actually rejects about half of the AIA petitions that are filed outright. Others settle. For those that make it through to final written decision, about 35 percent end with some or all patent claims upheld. Those claims then become more powerful in litigation.

➤ Patents are pretty clearly becoming a partisan issue. My former ALM colleague Jan Wolfe flagged this trend last year. Invalidated was produced by the Tea Party Patriots and features appearances from Reps. Thomas Massie of Kentucky and Louie Gohmert of Texas; Dan Schneider of the American Conservative Union; and Reagan administration AG Ed Meese. The biggest elephant yet might be getting ready to enter the debate. “I think that we now have an ally in the presidency,” Rohrabacher said during the panel discussion.

One glaring exception to the partisan divide: Outgoing Rep. Darrell Issa, the chairman of the House Subcommittee on Courts, Intellectual Property and the Internet, is seen among this group as a sellout who sided with the tech industry and the America Invents Act. Issa and his supporters “presented themselves as being pro-inventor, and they weren't,” Rohrabacher said during the panel discussion.

➤ Aside from the PTAB, the two big villains of the film are Silicon Valley tech companies – Google, Apple and Facebook make brief, menacing appearances in Invalidated – and China, which is at once reviled for stealing U.S. inventors ideas and revered for protecting their own inventors' rights. China is “providing more stable and effective patent rights to innovators than than the United States,” Mossoff declares in the film.

➤ The inventors are promoting two pieces of legislation introduced this summer. Massie's HR6264, the Restoring America's Leadership in Innovation Act, wouldessentially undo the America Invents Act. No more PTAB, no more inter partes reviews, no more first-to-file. On top of that, it would strengthen Section 101 patent eligibility and increase the availability of injunctions in patent infringement cases.

Even the activists on hand Tuesday recognize that's a big ask. They see Rohrabacher's HR6557, the Inventor Protection Act, as an alternate plan. His bill would carve out patents “held entirely by the inventor of the claimed invention” from the venue requirements of TC Heartland, from the tough injunction standards of eBay v. MercExchange, and—most important of all—from validity review by the PTAB.

➤ Malone is an effective spokesman for the group. Having become involved in patent policy, he's now “watching the film as a critic,” he said Tuesday, acknowledging the real problem of patent trolling against small businesses. But equally unfair, he argued, is to dump a massive stack of AIA petitions on an independent inventor, giving them and their often single attorney only 90 days to respond.

“These are not patent trolls,” he said. “These are real inventors with real patents.”

From left, Jenny Beth Martin of Tea Party Patriots; Josh Malone; Paul Morinville; Dana Rohrabacher; “Invalidated” director Luke Livingston

First Circuit to Former Bandmates: Cool the Engines

The First Circuit has turned away IP and contract claims from Boston's Tom Scholz and former guitarist Barry Goudreau.

Goudreau left the band after playing on Boston's two platinum-selling albums of the 1970s. They struck a deal: Goudreau would receive 20 percent of the royalties from those albums, so long as he forswore any connection with the band, other than to refer to himself as “formerly of Boston.”

Twenty-five years later, Goudreau and Boston alum Sib Hashian formed a band with Ernie Boch Jr. called Ernie and the Automatics. On the band's website, Boch promoted Goudreau and Hashian as “'former' original members of the band 'Boston.'” Promotional materials touted that “Barry Goudreau and Sib Hashian, two former original members of the multi-platinum selling band BOSTON have reunited.”

This was too much for Boston's Scholz. He and Goudreau went all the way to a jury trial on their dispute, with neither side prevailing on their claims or counterclaims. Now the First Circuit too is closing its eyes and letting the dispute slip away.

The appellate court agreed with U.S. District Judge Denise Casper that there was no evidence of Goudreau's fault. “Scholz pointed to no specific instance in which Goudreau did, at any point, direct anyone to bill him as an 'original member' of BOSTON,” Judge Juan Torruella wrote for the First Circuit.

Norr did Casper err by turning away Goudreau's request for “exceptional case” attorney fees under the Lanham Act. In so ruling, the First Circuit joined the Third, Fourth, Fifth, Sixth and Ninth in applying the analytical framework from the Supreme Court's Octane Fitness ruling on fee shifting in patent cases to Lanham Act cases. Burns & Levinson partner Susan Stenger argued the appeal for Scholz. Jeffrey Baker of Baker and Associates argued for Goudreau.

Creeping McCarthyism

The McCarthy Institute, which bills itself as the world's preeminent trademark consumer behavior and branding institute, is moving across San Francisco. After 17 years at the University of San Francisco, the institute founded by trademark scholar J. Thomas McCarthy will be housed at Golden Gate University's law and business schools.

“The McCarthy Institute has a proven record of supporting high quality conferences, teaching, and research into trademark and branding issues,” McCarthy said in a written statement. “I look forward to the Institute continuing this important work at Golden Gate University.”

U.S. Commissioner of Trademarks Mary Denison will join McCarthy, Golden Gate president David Fike and others at a grand opening on Sept. 13.

Judge Wu's Patient Approach to Section 101

The headline on my story Wednesday was “BlackBerry Mostly Survives Facebook's and Snap's Section 101 Attack.” And that BlackBerry did—you can read it right here in the order.

But a transcript of the August 2 hearing on Facebook's and Snap's motions to dismiss suggests that trouble could still be in store for BlackBerry's case.

U.S. District Judge George Wu started the hearing by telling the parties his tentative ruling—which he mostly adopted—was dictated by the Federal Circuit's recent Core Wireless decision. “I don't necessarily agree with that decision,” he told the parties, “but understand the decision and I have to follow it.”

He also reminded the parties, repeatedly, that he is the judge who was reversed by the Federal Circuit for finding a patent on automated 3D animation ineligible, in the McRO v. Bandai Namco decision. As with Facebook and Snap, the accused infringers in that case brought their Section 101 motion on the pleadings.

“I think my lesson from that is not to get too far ahead of the Federal Circuit on issues,” Wu told the parties. Patent eligibility overlaps with other traditional patent infringement defenses like novelty and obviousness, he said. “So the thing is that one shouldn't jump ahead to do that type of analysis until there is a Markman and considerations of all those issues.”

If BlackBerry does get the case to trial, it will pit three of the world's most sophisticated mobile communications companies before a judge who doesn't have any use for them.

Quinn Emanuel Urquhart & Sullivan partner Jordan Jaffe began his argument for BlackBerry by saying that “in 2018, everyone uses phones all the time whether it be iPhones or Android.”

“I don't,” Wu interjected. “I have one, but I don't use it.”

“So do you use a flip phone?” Jaffe inquired.

“No. I use a landline,” Wu told him.

“Better connection I am sure,” Jaffe said.

Goodwin, Morgan Lewis and Cozen Keep Hiring

The lateral-ometer keeps on spinning in the IP world.

My ALM colleague Lizzy McLellan reports that Morgan, Lewis & Bockius has hired more IP attorneys from McDermott Will & Emery. A nine-partner group led by Orange County, California, partner Mark Itri and nearly 40 other lawyers and staff are joining Morgan Lewis on the heels of the seven-partner group that came over from McDermott last month. Other partners in the current move include Christopher Bright, Michael Dreznes, M. Todd Hales, Karen Laub, John Magluyan, Andrew Mickelsen, Nathan Smith and Kenneth Cheney.

Meanwhile, Frank Abramonte and Lorraine Linford have joined Cozen O'Connorin Seattle from Seed IP. Abramonte told my ALM colleague Xiumei Dong that general practice firms have been making inroads in the Seattle IP market. “General practice firms [noticed] there was a lot of revenue that could be had, and they felt like they could integrate with the client business more,” Abramonte said.

But there's still room for IP boutiques on the West Coast. Four-lawyer Fernando & Partners has spun off from Squire Patton Boggs. Ronald Fernando and his team joined Squire a year and a half ago but have decided, as a group, to reestablish their Palo Alto boutique. “The business relationship didn't work,” Fernando told Dong. “This is just the reality of any business, sometimes business relationship works out, and sometimes [they don't].”

Dong also reported this week that Vinson & Elkins IP co-chair Darryl Woo is joining Goodwin Procter in San Francisco. Woo said he's excited to be joining forces with Neel Chatterjee, who joined Goodwin last year from Orrick, Herrington & Sutcliffe, and Brett Schuman, who came over from Morgan Lewis in 2014. “Together we'll have three first-chair IP trial lawyers in California,” Woo said. “I think that is a pretty compelling proposition.”