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With at least one landscape-shifting case to watch, budgets to keep in mind and IP protection still a high priority, 2018 promises to be a busy year for in-house counsel and IP.

As for what IP issues will be top of mind for legal departments in the new year, it seems to be all of the above and then some.

Court Watch

One of the biggest cases to watch, and one that could have a massive impact, is a suit currently before the U.S. Supreme Court, said Gillian Thackray, vice president, associate general counsel and global chief counsel for intellectual property at The Clorox Co. The Oil States case, which questions the constitutionality of inter partes review proceedings, threatens the future of an administrative process used by the Patent Trial and Appeal Board that has had a “big impact on the patent landscape,” she said.

“It's been an important tool in the tool box and if the Supreme Court were to take that away now, it would cause a lot of re-evaluation as to litigation strategy,” Thackray said.

The case creates a lot of uncertainty for in-house counsel, both in the time leading up to the decision and in the months after, as lower courts interpret the high court's ruling, Thackray added. This means planning for the various possible outcomes to ensure the business is “ready to pivot as needed,” she said. “It's sort of like when you're playing chess, just planning three or four moves ahead, such that when you get to that point in time [when the business has to react], you've already put some analysis into the options and you don't have to start from scratch.”

Thackray also said she's keeping an eye on lower court decisions interpreting the high court's recent patent venue ruling. With TC Heartland, she said, one of the questions now is: Will this start impacting where companies open plants or place offices or have salespeople?

It's not yet exactly clear how this case will change business decisions, Thackray explained, adding that it'll probably vary by industry and by company maturity. “The change in venue is unlikely to change, for example, where major corporations are incorporated … but maybe for smaller startup companies, it might make an impact,” she said. “That's something that I'll definitely, in the general business landscape, keep an eye on over the next year.”

Beyond the Courtroom

Scott McKeown, IP litigation partner and PTAB chair at Ropes & Gray, attended the oral arguments in the Oil States case and the companion SAS Institute case that questions the PTAB's way of adjudicating IPRs. He said he doesn't think the votes are there at the high court in either case to upend PTAB practices, which he said will likely shift focus to changes by way of legislation.

“I think the story of 2018 is, once the Supreme Court weighs in and critics of the PTAB don't get the relief they want, I think then the focus will have to go back to legislation and maybe some fine-tuning to the process,” he explained. While legislation such as the STRONGER Patents Act of 2017 is currently up for consideration, McKeown said that “if legislation is going to get though, there has to be a more balanced bill,” adding that “we haven't seen it yet.”

Also important, according to Clorox's Thackray, is the evolution of Section 101 jurisprudence. With products crossing sectors and companies expanding beyond their traditional industries, it's increasingly important to understand what's patentable and what's not, she said. “In-house counsel, regardless of what industry they might be in, are, if they are smart, thinking about Section 101, how it could apply in their field and how it applies to future business developments,” she said.

The wise in-house attorney is also considering how to protect company trademarks without negative repercussions, Thackray noted. “There's an issue of how to work that line of protecting your brands while not coming across as too heavy-handed,” she said. “So we're very conscious in-house that there is the potential that if you word something in a way that comes across as heavy-handed, that it's very easy for people to publicize things on social media and you can end up with unintended consequences of being perceived as a bully.”

Strategy Changes

The new year also seems to bring with it an increased focus on approaching IP protection differently, according to McKeown.

“We're seeing an uptick in [International Trade Commission] actions, which is certainly a different way of thinking,” McKeown pointed out as an example. “I sort of view it as folks are going to the ITC not necessarily because they want that remedy or they want to be there … but it's a way to sort of stay in the game, it's a way to keep the pressure on potential infringers,” he explained.

He added that there are noticeable changes in prosecution practices and the way patents are being drafted. “I'm just seeing a lot of changes in the way that people are approaching their portfolio, whether it's procurement or ultimately asserting it.”