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

• Amazon and Valentino try to stamp out counterfeiting.

• Weil Gotshal scores patent wins in California and Texas.

• Three district judges offer veteran advice for young lawyers.

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

Left to right: Valentino design patents, Valentino Garavani shoes embodying the patents, Kaitlyn Pan Shoes accused products, as depicted in Amazon's and Valentino's complaint.

 

Amazon: These Shoes Aren't Made for Counterfeiting

When "Amazon.com" and "trademark lawsuit" are used in the same sentence, it's usually not good news for the e-commerce giant. Daimler, Williams Sonoma and Elastic are among those who've brought high-profile trademark actions against the company in the last few years.

But Amazon does play offense occasionally, filing suits to protect merchants such as Vera Bradley and Otter Products from alleged counterfeiters.

On Thursday, the company partnered with one of the world's most famous fashion brands to make perhaps its loudest statement yet. Amazon and Valentino sued Kaitlyn Pan Group, accusing the online retailer of copying Valentino's Rockstud line of footwear.

"Since 1960, Valentino has been synonymous with high fashion apparel and merchandise worn by the well-dressed and fashionistas and beloved and endorsed by countless movie stars and celebrities," the companies' joint complaint announces. Kaitlyn Pan Group has "blatantly" copied the Rockstud design, which features metallic, three-dimensional, pyramid-shaped studs. Kaitlyn Pan even tried to register the mark ROCK'N STUDS BY KAITLYN PAN with the PTO last year, the plaintiffs allege.

Davis Wright Tremaine partner Bonnie MacNaughton, a regular for Amazon in trademark cases, has signed onto the complaint along with Davis Wright associate Nathan Rouse. Also on board are Arent Fox partners Michelle Mancino Marsh, Anthony Lupo and Katie Heilman, and associate Laura Zell.

True, Kaitlyn Pan Group once operated an account and sold allegedly infringing shoes on Amazon's platform, the lawyers acknowledge. By doing so Kaitlyn Pan "willfully deceived Amazon and its customers." But that leads to what seems to be the real thrust of the lawsuit: Amazon is seriously-no-kidding-now cracking down on "a small number of bad actors" who are abusing the trust of the company and its customers.

Amazon launched its Brand Registry in 2017. "More than 350,000 brands are enrolled in Brand Registry"—including Valentino—"and those brands that do so are finding and reporting 99% fewer suspected infringements than before," the complaint asserts.

In 2018, Amazon launched Transparency, "a product serialization service that effectively eliminates counterfeits for enrolled products." And last year Amazon launched Amazon Project Zero, "a novel self-service counterfeit removal tool that enables brands to remove counterfeit listings directly from Amazon stores."

Then, of course, there are "lawsuits like this one, targeted directly at identified bad actors," which "further complement Amazon's efforts to prevent the sale and distribution of counterfeit and infringing goods."

Though Amazon supplies most of the complaint's narrative, Valentino is bringing the most claims: for trademark infringement and trademark counterfeiting; state and federal unfair competition; and six counts of design patent infringement. Amazon is lodging a single cause of action for breach of contract.

Last year, Simon Baggs, CEO of online brand protection company Incopro, told Trademarks and Brands Online that Amazon has been discussing initiatives to fight counterfeiters for years. "Yet the issue continues to grow, and this is largely down to not putting action behind their words and not putting comprehensive enough programmes in place to adequately protect their consumers," he was quoted as saying.

It sounds as if Amazon.com v. Kaitlyn Pan Group is the next step in the process.

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Announcing Two Incredible Keynote Speakers for the Women, Influence & Power in Law Conference

WIPL is known for having some of the most engaging and energizing keynote speakers attend to share their thoughts, experiences, war stories and tips on effective leadership. And this year is no exception. This year, we are grateful to welcome two remarkable women come and inspire us: Tina Tchen, the President and CEO of the "Times Up" Legal Defense Fund and Paula Boggs, Founder of Boggs Media LLC and Former Executive Vice President, General Counsel and Secretary, Law and Corporate Affairs at Starbucks from 2002-2012. READ MORE

 

Weil Gotshal partner Ed Reines.

 

Would You Like Fees With That Injunction?

If Skilled in the Art had a Litigator of the Week contest, my vote this week would go to Ed Reines.

The Weil Gotshal & Manges partner helped win a preliminary injunction for Illumina DNA sequencing technology in San Francisco, and a Dallas judge's recommendation that Hewlett-Packard Co. be awarded $403,000 in exceptional case attorneys fees.

U.S. District Judge William Orrick III on Monday enjoined China-based BGI Genomics from introducing a series of products in the United States that allegedly infringe Illumina's patented methods of sequencing-by-synthesis. BGI, which is represented by Arnold & Porter Kaye Scholer, had called Illumina's motion "a monopolist's overreach and misuse of the patent system."

But Orrick ruled in a 21-page order that BGI likely infringes Illumina's five patents, and had failed to identify significant questions as to their validity, "several of which have been challenged and found to be valid in the past."

Illumina GC Charles Dadwell said in a written statement the decision "validates that BGI has blatantly copied Illumina's proprietary sequencing chemistry." BGI sibling company MGI Americas said in its own statement that the injunction will "curb fair competition in the global gene-sequencing instruments sector" and that it's considering an appeal.

Weil Gotshal partners Derek Walter and Doug McClellan appeared with Reines at an hour-and-a-half long Zoom hearing on the PI motion in May.

Meanwhile, Reines and Fish & Richardson partner Jackob Ben-Ezra played leading roles defending multidistrict litigation brought by Industrial Print Technologies (IPT) in the Northern District of Texas. U.S. District Judge Barbara Lynn previously found a portion of the litigation exceptional and tasked U.S. Magistrate Judge Rebecca Rutherford with recommending a fee award.

Weil sought $271,918 for its portion of the work while Fish requested $132,098. Rutherford awarded all of that save for $1,149 in paralegal fees.

IPT had complained that Weil Gotshal was billing Silicon Valley rates as high as $1,210 an hour for a case that was litigated in Dallas. But Rutherford found Weil's rates reasonable, given Reines places "in the top echelon" of IP lawyers in the country—and because Weil had discounted its rates.

Rutherford did side with IPT on one point, though, disallowing Weil's and Fish's request for an additional $70,000 to litigate the fee motion.

U.S. District Judge Jon Tigar.

 

At-Bats More Important Than Wins for Young Lawyers

Winning isn't everything, and far from the only thing, for young lawyers who need stand-up experience in the courtroom.

So advised U.S. District Judge Jon Tigar during an online discussion among three jurists last week with active patent dockets.

Tigar said the year-and-a-half he spent trying misdemeanor cases at the San Francisco public defender's office had a big impact on his career. Upon returning to private practice he sought out pro bono cases to keep his courtroom skills sharp. "You do a pro bono case, you help somebody who really needed the help, you feel good inside, you've given back," he said. "And now you've got a marketable skill. You can go to the partners in the firm and say, 'Hey, you know what? I know how to do this. I've done it successfully.'"

Some young lawyers get hung up on how winnable a pro bono case might be, but the losing cases can provide the best learning opportunities. Tigar recalled "a terrible criminal case. The guy had clearly done it" but couldn't plead guilty because it would revoke terms of federal probation. "So there was no way to resolve the case. It was definitely going to trial. And I was definitely going to lose. And I could not have been happier. Because I knew I was going to get a jury trial," Tigar said.

Today, Tigar is one of many federal judges whose standing orders encourage litigants to find important roles for junior lawyers in civil proceedings. He and Judges Barbara Lynn and Alan Albright emphasized that the young lawyers of today need meaningful opportunities in court to become the seasoned veterans of tomorrow.

Tigar said when he's prepared to decide a motion on the papers, he'll sometimes let parties know that he'll put it back on the calendar if a junior lawyer who's never argued in federal court will get the shot. If one side says yes, often the other side will send a junior lawyer too. "So what we get is two young lawyers, one on each side, and so it just has worked out very well," he said.

Lynn, the chief judge of the Northern District of Texas, said that as a young associate she was always pleading with more senior attorneys to "put me in coach." As a judge her standing order "strongly encourages" litigants to be mindful of speaking opportunities for young lawyers, especially when they're involved in drafting a motion or opposition. "I thought I needed to give a little help to young lawyers, who could then talk to more senior lawyers about opportunities, and they could blame it on that Judge Lynn who has this crazy scheduling order," she said.

Lynn and Albright, of the Western District of Texas, said claim construction hearings involving multiple claim terms are especially ripe opportunities for younger lawyers to get speaking roles. Lynn said the only problem is she occasionally kicks off the hearings by giving her own take on the simplest claim terms. "Everybody says, 'That's fine, judge,' and I see one dejected junior lawyer," she said. "I want to take it back, but it's just too late."

The June 11 webinar was co-sponsored by the Berkeley Center for Law and Technology, the Berkeley Judicial Institute, CLI, ChIPs Network and the Federal Circuit Bar Association. Winston & Strawn associates Yarden Kakon, Kate Marcom and DaWanna McCray moderated the discussion. Winston partner Kathi Vidal and Dropbox's Elena DiMuzio, who are both active with ChIPs' Next Gen effort, introduced the event.

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