Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Here's what's cooking today:

• A quick conversation with former Assistant to the Solicitor General Zack Tripp, now with Weil Gotshal & Manges, about the Supreme Court, the SG's office and IP.
• Latham shakes off a Federal Circuit indefiniteness ruling but not an antitrust decision.
• Nobody's home for GoPro PTAB appeal.

As always, you can email me your feedback and follow me on Twitter.

Weil Gotshal partner Zack Tripp.

Q&A With Weil Gotshal's Zack Tripp

Fresh off a five-year stint as an assistant to the solicitor general, Zack Tripp has joined Weil, Gotshal & Manges as co-head of the firm's appellate practice, as my ALM colleague Patrick Smith reported here. Tripp's brief at the SG's office included intellectual property. The former Ruth Bader Ginsburg clerk argued two cases at the Supreme Court involving worldwide damages for patent infringement under Section 271(f) of the Patent Act, plus a trademark case during his tenure.

Tripp made some time for a quick conversation Thursday about the Supreme Court, the solicitor general and IP.

Skilled in the Art: The Supreme Court has already granted cert in eight IP cases this year. Last year the number was six. Do you think this is the new normal, or is something causing a temporary spike?

Zack Tripp: Whenever you're looking at the court and making predictions, it's important to remember how little information you have, and how much each case is its own one-off, individual world. So I generally like to caution against reading too much into anything.

Going back maybe 10 years, the court has had multiple patent cases in every given term. That does seem to be consistently part of its docket [now]. There has been a stream of cases about interpreting the [America Invents Act] and addressing the administrative law issues that are arising under the AIA. That's something that happens whenever Congress enacts a significant statute. There's going to be a series of disputes about that.

SITA: How do you think the addition of Justices Neil Gorsuch and Brett Kavanaugh have changed the court's outlook, if at all, to intellectual property?

ZT: We really don't know yet. They've had so few cases since they've been on. It's a textualist court and they're both going to continue to pay a lot attention to the text, but I'm not sure how big a shift that is [for the court]. Probably especially from Gorsuch you'll get some skepticism about the administrative state that shows up in the more admin-type cases. But I think in plenty of the court's cases, neither of those factors is going to tell you that much.

SITA: How about for the administration as a whole? Other than the change in PTO directors, do you think the change from the Obama to the Trump administration has changed the government's outlook in significant ways toward intellectual property?

ZT: This strikes me as an area that's been relatively stable. There's not a strong left-right valence on intellectual property issues. One way to think about this is the SG and the principal deputy are the ones who typically argue the most high-profile cases where there will be that kind of interest – the New York guns case, the Title VII cases, cases like that. They're not arguing patent cases, right? Within the government, Malcolm Stewart, the deputy who's been on these [IP cases] for many years, he's a very significant force in this space.

SITA: You argued two cases involving overseas patent infringement and the damages available for that. What were your takeaways from that experience?

ZT: Those 271(f) cases are an interesting interplay between the patent world and foreign affairs, which is another area where the court is going to pay close attention. The fact that there've already been a couple at the court jumps out at you, compared to the total number of 271(f) cases in the real world, which I gather is fairly small. They're fun issues, it's an interesting statute. The history of the statute is tied in with this older Supreme Court case about shrimp deveiners. It's a response to that decision.

SITA: The solicitor general's office just filed two briefs in patent eligibility cases, saying don't take these two, but do take a close look at a third one that's coming up, probably next month. Do you have any hunches as to what the Supreme Court's next step might be?

ZT: Looking at it completely from the outside, it's a significant development, to have the Justice Department say that these Section 101 issues are significant and may well warrant the court's review at some time.

What happens in those patent cases is the court doesn't have a circuit split to help it figure out what's going to be cert-worthy. It often turns to the government as a neutral party, especially in these kinds of private disputes, to help it [determine], are these really the important disputes, or is it just the petitioners telling us it's important.

It's certainly an important development for the next case, for the Athena petition. They'll look at that quite closely, though who knows if they'll take it. They could deny it, they could [call for the views of the solicitor general] again. But that will certainly raise the profile of that issue.

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A Diebold ATM module allegedly containing an infringing "check standby unit" (in blue).

Latham Gets a New Set of Downs on Indefinitness …

Recently I wrote about the risk a patent owner took by ignoring a PTAB claim construction of indefiniteness and plowing ahead with its district court case. The district judge wound up agreeing with the PTAB and now accused infringer Lyft is seeking $500,000 in attorneys fees.

Well, Latham & Watkins appears to be running a similar playbook for a manufacturer of automated teller machines that's locked in patent litigation with a competitor. But so far, it's working.

Korea's Hyosung TNS sued Ohio-based Diebold Nixdorf in the Northern District of Texas and the International Trade Commission in 2016. Hyosung accused Diebold of infringing its patent on an ATM that incorporates a "check standby unit" configured to hold deposited checks and return them if the user cancels the transaction.

The ITC issued exclusion and cease-and-desist orders, but the Federal Circuit reversed, finding "check standby unit" to be an indefinite means-plus-function claim without corresponding structure in the specification.

Latham partner Gregory Garre invited the court at oral argument to "Google 'ATM escrow unit' and you will find a specific structure." But the Federal Circuit said that evidence had not been presented to the ITC.

Now the ITC case is over and the Texas district court litigation has been restarted. Diebold moved to dismiss in April on the ground that the only asserted patent "was held to be invalid as a matter of law by a superior tribunal, the United States Court of Appeals for the Federal Circuit."

Not so fast, argued a Latham team led by partner Kevin Wheeler. "The Federal Circuit did not hold that the '235 Patent would be indefinite on any factual record," they argued. "To the contrary, the court identified and discussed the type of evidence that was absent from the ITC record that, if present, could impact the outcome on indefiniteness."

U.S. District Judge David Godbey agreed with Hyosung and Latham. "The Court finds that there may be evidence not presented on the ITC record" that could lead to a different outcome, Godbey wrote in a Dec. 5 order. "But this is a fact issue that cannot be resolved on the pleadings."

Godbey ordered the parties to conduct mediation by January 31.

… but Not on Its IP/Antitrust Case

Latham got less positive news in its attempt to revive an antitrust suit against Intellectual Ventures. A Latham team led by partner Matt Moore had asked the Federal Circuit to reconsider its September decision that Capital One Bank is collaterally estopped from pursuing its antitrust allegations.

"The panel's trail-blazing exceptions" to the law of preclusion "flout Fourth Circuit law and require rehearing," Moore argued.

On Wednesday the Federal Circuit panel that decided the case issued an order—a precedential one at that—turning away the request. Nothing from Fourth Circuit precedent "is inconsistent with the analysis in our initial opinion," the panel wrote.

Bob Freitas of Freitas & Weinberg represented Intellectual Ventures.

Nobody's Home for PTAB Appeal

What if they noticed an appeal and nobody showed up?

That seems to be GoPro's fate as it tried to overturn a recent Precedential Opinion Panel (POP) decision of the Patent Trial and Appeal Board.

The POP declined to institute IPR proceedings last August on a patent held by 360Heros on a holding assembly for multiple cameras. Chief Judge Scott Boalick wrote that because 360Heros had sued GoPro more than a year earlier, GoPro's IPR petition was time-barred—even if 360Heros didn't have Article III standing to sue. PTO Director Andrei Iancu and Commissioner of Patents Drew Hirshfeld concurred.

GoPro appealed to the Federal Circuit on October 31, indicating it would challenge both the time-bar decision and whether Iancu, Boalick and Hirschfeld were constitutionally appointed. Grab some popcorn! But two weeks later, 360Heros attorney Rob Greenspoon of Flachsbart & Greenspoon notified the court that 360Heros would not be participating on the ground that institution decisions are non-appealable.

The Federal Circuit issued an order to show cause and asked the PTO if it planned to participate.

Nope, said the PTO on Wednesday. "In light of the lack of statutory grounds to appeal, a certified list [of documents comprising the PTAB record] will not be forwarded to the Court," the agency stated.

GoPro got the message. It moved to dismiss its own appeal Wednesday. "In making this Motion," its Kilpatrick Townsend & Stockton counsel wrote, "GoPro does not concede that this Court lacks jurisdiction over GoPro's appeal, because the underlying decision implicates Article III of the Constitution."

Quick Hits

➤ If Mutual of Omaha seems synonymous with the television show Wild Kingdom, there's a reason: The insurance company has spent more than $100 million developing and promoting the show since its original 1963 debut, according to a complaint it's filed in Nebraska federal court. Mutual of Omaha is accusing Hong Kong's Lanard Toys of trading on its goodwill with its "Wild Kingdom Collection" of stuffed toys based on the movie Jumanji. Lanard sells the toys through Walmart and other retailers, Mutual of Omaha alleges in its Dec. 9 complaint bringing claims of service and trademark infringement and dilution, unfair competition and deceptive trade practices. Mutual of Omaha is represented by Venable partner Edmund Haughey and partner Timothy Thalken and associate Brian Fahey of Fraser Stryker.

➤ The USPTO is in the market for a new regional director for Silicon Valley. Thirty-year PTO veteran John Cabeca is getting a diplomatic post as the agency's IP attache for South Asia. He'll be based out of the U.S. embassy in New Delhi. Cabeca has been in charge in Silicon Valley for the last six years. He said in a PTO blog post that he considers leading the design, build-out and opening of the PTO's San Jose branch office in 2015 to be among his proudest accomplishments.

➤ My ALM colleague Jack Newsham reports that Jones Day is suing a former pharmaceutical client for $5.3 million in allegedly unpaid legal fees from patent litigation. Jones Day is seeking to pierce Serenity Pharmaceuticals' corporate veil and hold its CEO and its president personally liable. Serenity had been a client of partner James Sottile, a partner who came to Jones Day from Zuckerman Spaeder in 2016 and left last year for an in-house role at Scientific Games. Jones Day says that when it brought up payment, Serenity executives would highlight that a key licensee had gone bankrupt, and "repeatedly represented that [Serenity] would pay the unpaid bills after it found a new commercial partner who would be willing to provide a sufficient up-front payment."

That's all from Skilled in the Art this week. I'll see you all again on Tuesday.