Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

In re Bilski, __ F.3d __ (Fed. Cir. 2008) (en banc).*

Chief Judge Michel, writing for a nine judge majority, affirmed the Board of Patent Appeals and Interferences' finding that Bilski's invention -- a commodities trading method for hedging risks -- did not meet the 35 U.S.C. § 101 patentable subject matter requirement.  The Federal Circuit held that State Street's "useful, concrete, and tangible result" test was insufficient to determine patentability -- disagreements have already started regarding whether State Street was narrowed or overturned.  The Federal Circuit held that the Supreme Court's "machine-or-transformation" test was the only test for determining patentability:

A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

I found Judge Dyk's concurrence tracing the history of the "machine-or-transformation" test back to the Patent Act of 1793 especially interesting:

In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793).

• Email This
• Print
• Trackbacks
• Share Link

I previously described the high-level findings of the Seventh Circuit’s American Jury Project – click here for that post, including links to PDFs of the report and related documents. Having discussed the Commission’s findings, I am now looking at findings for the specific Principles studied. This post focuses on twelve person juries.

In seventeen trials, counsel were allowed to make interim statements before or after witness testimony and at the end or beginning of each week, as follows:

• Counsel could make interim statements before or after their questioning of a witness, on either direct or cross;
   
• The statements were given outside the presence of fact witnesses;
   
• Counsel could object having interim statements just as in an opening or closing, but could not respond to them, to avoid excessive contentiousness;Advance notice of interim statements was not required;
   
• Counsel’s statements for a trial were time-limited at the start of trial; and
   
• Counsel were given ten minutes at the end and beginning of each trial week to summarize old testimony or preview the coming testimony.

• Email This
• Print
• Trackbacks (2)
• Share Link

This is not directly related to IP law, and is not legal advice or an endorsement of any candidate.  I am supporting a blog initiative to get state voting rules on the web, as a public service to blog readers. The following information comes from the Cook County Clerk’s Office election site, a great place if you have voting or election questions. Also, early voting ends tomorrow evening. After that, you must vote on election day, Tuesday, November 4 or by absentee ballot. Finally, to provide an IP connection to this post, click here for an interesting Patent Docs post outlining each presidential candidate’s respective positions on patent law issues.

• Email This
• Print
• Trackbacks (1)
• Share Link

Baxter Int’l, Inc. v. Fresenius Med. Care Holdings, Inc., No. 08 C 2389, Slip Op. (N.D. Ill. Sep. 25, 2008) (Ashman, Mag. J.)

Judge Ashman granted defendants Fresenius’s motion for a stay pending the Federal Circuit appeal of an earlier case between the parties involving related, but not the same, hemodialysis patents. But the Court denied a stay pending an ex parte reexam of plaintiff’s related patents (the same as in the Federal Circuit appeal) and an inter partes reexam of the patents in suit. The reexam of the related patents had only uncertain and limited benefits to the Northern District. Because the patents under reexam were not the patents in suit, there could be no issue preclusion.  And any potential streamlining of the case the reexam might achieve was outweighed by the reexam’s potential for extreme delay.

• Email This
• Print
• Trackbacks (1)
• Share Link

I previously described the high-level findings of the Seventh Circuit’s American Jury Project – click here for that post, including links to PDFs of the report and related documents. Having discussed the Commission’s findings, I am now looking at findings for the specific Principles studied. This post focuses on twelve person juries – click here for a previous post regarding juror questions and click here for a previous post regarding preliminary jury instructions.

Twelve person juries had the least conclusive results of the four Phase Two Principles. Mathematical modeling and other data suggested that twelve person juries would increase jury diversity and, therefore, presumably fairness. Fifty trials used twelve person juries. 50% of the judges in the trials believed the larger panels resulted in increased diversity, but only 39% of the trial attorneys agreed. But relatively few judges (25%) and trial attorneys (25%) thought the larger juries increased the fairness of the trial. Judges (78%) and trial attorneys (64%) largely agreed that the larger juries did not decrease trial efficiency. Finally, 93% of jurors and 77% of attorneys agreed that “the right number” of jurors were empanelled expanded in their cases.

• Email This
• Print
• Trackbacks (2)
• Share Link

 New Medium LLC v. Barco N.V., No. 05 C 5620, 2008 WL 4615682 (N.D. Ill. Oct. 16, 2008) (Posner, J. sitting by designation).

In my previous entry about this case, I linked to a copy of this decision and briefly explained the result, but did not provide any analysis of the opinion because I was previously involved in the case -- click here to read that entry in the Blog's archives.  Since that post, Dennis Crouch has provided some excellent analysis of the opinion -- click here to read it at Patently-O.  Thanks Dennis.

• Email This
• Print
• Trackbacks
• Share Link

Here are several stories that did not warrant a full post, or that were so well done by another blogger that there was no point in recreating the wheel:

• The Federal Circuit upheld Judge Coar's preliminary injunction in Abbott v. Sandoz, No. 05 C 5373 -- click here to read the Federal Circuit's opinion and here to read the Blog's prior posts on the case.  Dennis Crouch at Patently-O has a good post explaining the central issue of the case -- a defendant's burden of proof regarding invalidity in the likelihood of success analysis.  Judge Newman wrote the majority decision with Judge Gajarsa dissenting.  Crouch sees the case as a "good vehicle" for en banc review of the preliminary injunction standard.
   
• Ocean Tomo is holding its 8th IP auction at home in Chicago this Wednesday and Thursday.
   

• Email This
• Print
• Trackbacks
• Share Link

New Medium LLC v. Barco N.V., No. 05 C 5620, 2008 WL 4615682 (N.D. Ill. Oct. 16, 2008) (Posner, J. sitting by designation).

I was previously involved in this case and, therefore, I have not posted about prior opinions in detail.  But because I posted that Judge Posner (who is sitting by designation) was holding an inequitable conduct bench trial/evidentiary hearing in the case, I am posting the opinion Judge Posner issued based upon that hearing -- click here to read the opinion and here for the Blog's prior post.  The Court dismissed one of defendant's inequitable conduct arguments, but based upon the other, held two of the patents in suit unenforceable because of inequitable conduct.

• Email This
• Print
• Trackbacks (2)
• Share Link

Nova Design Build, Inc. v. Grace Hotels, LLC., No. 08 C 2855, 2008 WL 4450305 (N.D. Ill. Sep. 30, 2008) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants’ motion to dismiss plaintiffs’ copyright infringement and related state law claims. Plaintiffs claimed that they developed plans for a Holiday Inn Express hotel defendants planned to build, and that defendants infringed the copyrights in plaintiffs’ plans by revising them with another firm and using them without plaintiffs’ permission. The Court held that plaintiffs’ copyright claim was sufficiently pled. Plaintiffs alleged ownership of a copyright, attaching the copyright registration, and that defendants infringed the copyright. Defendants’ argument that plaintiffs’ plan were a derivative work were beyond the pleadings and, therefore, not appropriate for a Fed. R. Civ. P. 12(b)(6) motion. 

• Email This
• Print
• Trackbacks
• Share Link

I previously described the high-level findings of the Seventh Circuit’s American Jury Project – click here for that post, including links to PDFs of the report and related documents. Having discussed the Commission’s findings, I am now looking at findings for the specific Principles studied  -- click here for the last post discussing the use of juror questions.

The second Phase Two Principle tested was substantive preliminary jury instructions. Courts were instructed to follow traditional jury instruction procedures to develop initial substantive jury instructions explaining:

• The jury’s rule;
   
• Trial procedures, including taking notes and juror questions – click here for the Blog’s post about jury questions;
   
• The native and evaluation of evidence;
   
• Issues to be addressed;
   
• The elements of the claims; and
   
• Jurors’ obligations during trial.

Courts were also encouraged to repeat instructions throughout trials as necessary. When I clerked for District Judge Gordon Quest (W.D. Mich.), I saw numerous trials, in a very short period, all of which used preliminary instructions. It is hard to believe a trial without preliminary instructions could be as effective as one with them. Most jurors come to a trial without significant trial experience beyond Law & Order or CSI – both great series, but lousy juror education. Going through a trial without instructions until the end is like asking people to play football, without telling the rules of the game until the fourth quarter. The results of the study confirm my belief. Thirty four trials used preliminary instructions. Judges from 87% of the trials reported that the preliminary instructions approved juror understanding. 80% of the judges said the instructions increased the judge’s satisfaction with the trials. And judges believed that the instructions increased fairness in 76% of the trials. No judge believed that the instructions harmed the trial process. Chief Judge Holderman believed the preliminary instruction were valuable:

I have found that preliminary instructions helped to orient the jurors to the case and allowed the jurors to start making connections between the evidence and the disputed issues in the case more quickly.

• Email This
• Print
• Trackbacks (1)
• Share Link

Blawg Review #182 is up at Dave Gulbransen's blog -- click here to read it.  Having just passed the Illinois bar exam (congratulations), Gulbransen did his review in the form of the multiple choice portion of the exam.  You can even check your answers.  Gulbransen's exam contains a heavy dose of IP, unlike the exam itself.  Here are a few of the IP posts:

• Citizen Media Law Project -- discussing Digital Millennium Copyright Act take down notices as used by, or against, the presidential campaigns and how the appeal process does not help campaigns because it takes 10 - 14 days.
   
• Las Vegas Trademark Attorney -- discussing a suit over the Little House on the Prairie trademarks.
   
• Mass Law Blog -- discussing an award of attorney's fees based upon "advocacy abuse" when plaintiff's counsel argued outside the claim constructions at trial.

• Email This
• Print
• Trackbacks
• Share Link

Helferich Patent Licensing v. ASUStek Computer Inc., No. 08 C 5189, Min. Order (N.D. Ill. Sep. 22, 2008) (Castillo, J.)

Judge Castillo sua sponte dismissed without prejudice plaintiff’s patent infringement complaint. The Court held that defendants were foreign entities without business entities in the Northern District. The Court allowed plaintiff to proceed with expedited jurisdictional discovery, and gave plaintiff until December 15 to refile an amended complaint, if they could, with more facts supporting jurisdiction and venue. The Court did not cite the Supreme Court’s Twombly decision regarding Fed. R. Civ. P. 8 pleading standards in its brief opinion. But this decision could flow from Twombly’s plausibility pleading standards.

• Email This
• Print
• Trackbacks
• Share Link

Nike, Inc. v. Wal-Mart Stores, Inc., No. 08 C 5840 (N.D. Ill.) (Hibbler, J.).

As I have said before, I generally do not discuss complaints, but Nike's design patent suit against Wal-Mart last week has drawn significant blog coverage  -- click here for the complaint.  And most of that coverage has missed the most interesting element of the complaint, from a legal procedure perspective (and yes, legal procedure is interesting, at least to me):  Nike's detailed pleadings.  Instead of simply identifying its design patents (related to its Nike Shox product line) and Wal-Mart's allegedly infringing shoes, Nike put detailed design patent claim charts in its complaint showing an accused product from the same angle as each figure in the design patent.  Here is a portion of one of the charts:

• Email This
• Print
• Trackbacks
• Share Link

I previously described the high-level findings of the Seventh Circuit’s American Jury Project – click here for that post, including links to PDFs of the report and related documents. Having discussed the Commission’s findings, I am now looking at findings for the specific Principles studied.

First up is allowing jurors to submit written questions for witnesses. As I discussed previously, jurors and judges both overwhelmingly believed juror questions benefited both juries and trials. It is hard to imagine that juror questions would not benefit trials and justice. If you ever have the opportunity for a post-trial discussion with a jury, a common theme is what the jury did not understand about the trial and the questions jurors wanted the lawyers to ask. While it is a little frightening for trial lawyers to give up some control of the trial process, overall both sides are better off with the jurors’ questions answered, removing a huge distraction for jurors. And you can learn much about how a jury is leaning or what you need to do in your case by listening to jurors’ questions.

Of course, as with most things during a trial, the details are very important. The Commission used the following initial jury instruction explaining that written questions could be submitted, that they would be asked only if allowed by the Fed. R. Evid., that they might be revised to comport with the Rules, and that questions may or may not be asked of all witnesses:

• Email This
• Print
• Trackbacks (3)
• Share Link

Aller-Caire, Inc. v. Am. Textile Co., No. 07 C 4086, 2008 WL 4066976 (N.D. Ill. Aug. 28, 2008) (Andersen, J.)

Judge Andersen granted in part and denied in part defendant American Textile Co.’s (“ATC”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Aller-Caire’s trademark infringement case. Aller-Caire allegedly began using its ALLER-CAIRE mark in 1990, but never registered it.  ATC registered its ALLER CARE mark in 2006. Both use the marks to market, at least, allergy sensitive pillow and mattress encasements. The Court dismissed Aller-Caire’s trademark count with leave to refile because it did not expressly allege a likelihood of confusion. It was not sufficient that the complaint alleged facts sufficient to infer confusion, plaintiff must plead confusion. The Court did not dismiss Aller-Caire’s tortious interference claim. Aller-Caire’s allegations would have been insufficient pursuant to Illinois law because Aller-Caire did not plead that ATC interfered with Aller-Caire’s business expectancy with a specific third party. But federal pleading requirements governed, and did not require identification of an entity.

Finally, a competitor’s privilege did not defeat Aller-Caire’s tortious interference claim. Competition cannot be tortious interference unless the competition employs wrongful means. Aller-Caire’s allegation that ATC’s alleged trademark infringement was done with malice constituted wrongful means.

• Email This
• Print
• Trackbacks
• Share Link

Compliance Software Sol’ns. Corp. v. MODA Tech. Partners, Inc., No. 07 C 6752, 2008 WL 2960711 (N.D. Ill. Jul. 31, 2008) (Manning, J.)

Judge Manning granted defendants’ (collectively “MODA”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. MODA was a Pennsylvania resident, as were its employees. Its alleged Illinois contacts were: 1) attendance at an Illinois trade show, Pittcon, where it demonstrated its software – software that allegedly infringed plaintiff CSSC’s patent and copyright covering CSSC’s environmental monitoring software; and 2) signing a contract with an Illinois choice of law provision.

• Email This
• Print
• Trackbacks
• Share Link

Diane Levin hosted this week's Blawg Review #181 at Mediation Channel -- click here to read it.  As you would expect from one of Ed.'s Blawg Review Sherpas, the Review is both well-written and exhaustive.  Levin's focus was International Conflict Resolution Day.  And when Ed. realized that he had created an international incident by not acknowledging Canadian Thanksgiving, Levin even updated the Review with some Canadian content.  By the way, happy Thanksgiving to the Blog's Canadian friends and readers.

Among other posts, Levin highlighted the October Carnival of Trust, hosted by its founder Charles Green at Trust Matters -- click here to read it.  Green links to a post at Without Wax about what to do when your trust in someone begins slipping away -- click here to read it.  The blog, and the post, appear to be focused more on family and friend relationships.  But the issue and the proposed resolution translate to the legal realm because trust is paramount in the law just as it is with family and friends -- with courts, with opposing counsel, with clients and with colleagues.  Without Wax suggests that instead of pulling back when trust is disappearing, you engage that person and the problem.  Silence rarely fixes trust.  You are far better off facing the issue and trying to fix the problem so that it does not recur, whether it is a misunderstanding or an actual breach of trust.

Finally, Larry Lessig's enthralling Wall Street Journal op-ed piece about the current state of copyright law and whether it fits with modern life did not make the Review (probably because it was not a blog post), but it is worth a read -- click here for Lessig's op-ed.  Or you could skip right to Victoria Pynchon's excellent analysis at the IP ADR Blog -- click here to read Pynchon's post.

[UPDATE]:  Lessig makes clear at his Lessig 2.0 blog that despite the title the WSJ gave his op-ed -- A Defense of Piracy -- he does not support piracy.  Lessig is proposing conforming copyright law to what he sees as the realities of modern living.

• Email This
• Print
• Trackbacks
• Share Link

The Seventh Circuit instituted a Commission to study the implementation of the ABA Jury Project.  The Northern District was heavily represented on the Commission.  The following Northern District Judges were members of the Commission:  Bucklo, Brown, Coar, Darrah, Denlow, Der-Yeghiayan, Gottschall, Holderman, Kennelly, Lefkow, Moran, Schenkier, St. Eve, and Zagel.  The Commission recently published its report -- click here to read it.  The report describes a two phase analysis.  In the first phase, district judges tested the following seven ABA Principles:

1.       Twelve-Person Juries;

2.       Jury Selection Questionnaires;

3.       Preliminary Substantive Jury Instructions;

4.       Trial Time Limits;

5.       Juror Questions;

6.       Interim Trial Statements by Counsel; and

7.       Enhanced Jury Deliberations.

Other Principles, such as juror notebooks and allowing jurors to take notes, were already in such widespread use that they were not tested.  Click here for the Phase One Project manual detailing the principles, the rationales and authority behind them, and suggested procedures.  Phase One resulted in questionnaires from 22 participating federal trial judges, 74 participating attorneys and 303 jurors from 38 trials that used one or more of the seven Principles.  Based upon the analysis of Phase One results and questionnaires, the Commission focused Phase Two on the following four Principles:

• Email This
• Print
• Trackbacks (4)
• Share Link

Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7718, 2008 WL 4083145 (N.D. Ill. Aug. 27, 2008) (Moran, Sen. J.)*

Judge Moran granted defendant’s summary judgment of invalidity as to plaintiff’s patented technology for cleaning printing press components. The Court previously granted defendants summary judgment of noninfringement on a reissued patent and the patent at issue in this opinion, but the Federal Circuit reversed as to the patent at issue after revising the Court’s claim construction – click here for more on this case in the Blog’s archives.

After holding that each element of the claims were taught by various pieces of prior art, the Court considered whether the art could be combined pursuant to the Supreme Court’s KSR standard. The Court held that the creation of strict new industry standards and a finite number of solutions that met the standards created jurisdiction for combining the prior art references:

The introduction of strict regulations regarding the use of high VOC solvents was an outside impetus to begin using low VOC solvents to clean presses. By plaintiff’s own admission, the existing spray bar/dry roll systems worked poorly with low VOC solvents. Therefore, a problem needed to be solved. The mechanics of printing press design led to a finite number of solutions. The pieces for the ultimately embraced solution were all present in the prior art, and it was only a matter of time before they were put together in the manner described in the asserted claims of the ‘976 patent. We find this to be true, particularly in light of KSR’s instruction that “Common sense teaches … that familiar items may have obvious uses beyond their primary purposes, and in many cases a person or ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 127 S.Ct. at 1742. See also, Muniauction, Inc. v. Thomson Corp., ___ F.3d ___, 2008 WL 2717689, at *6-*10 (Fed. Cir. July 14, 2008); Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1160-63 (Fed. Cir. 2007).

(parentheticals omitted).

The Court also found the patent invalid because “reduced air content” was indefinite. The patent did not teach how or when to measure the air content reduction. Because three different experts could start the calculation from three different baselines and get three different, but equally correct results, the term was indefinite.

*  Click here for more on this case in the Blog's archives.

• Email This
• Print
• Trackbacks
• Share Link

Para Gear Equip. v. Square One Parachute, Inc., No. 04 C 601, Min. Order (N.D. Ill. Sep. 2, 2008) (Brown, Mag. J.)

Judge Brown granted defendants–counterplaintiffs Square One Parachute’s (“SOP”) motion for summary judgment that plaintiff–counterdefendant Para Gear (“Para”) infringed SOP’s design patent based solely upon Para’s failure to plead noninfringement as an affirmative defense. Originally, Para filed this case seeking a declaratory judgment of noninfringement and SOP counterclaimed for infringement. But Para later voluntarily dismissed its claim with prejudice.

When Para answered SOP’s counterclaim, it did not plead noninfringement as an affirmative defense. The Court held that Para’s declaratory judgment noninfringement claim was a sufficient affirmative statement of Para’s defense. But once Para dismissed its claim, Para’s pleadings did not support a noninfringement defense. It was not enough that Para’s answer denied infringement, an affirmative statement of the defense was required. And while Para had not sought to amend its papers to support its defense, the Court would not have granted leave to amend four years into the case.

Practice Tip: Always ask, at least in the alternative, for leave to amend when accused of pleading deficiencies. Even though it would not have worked here, it rarely hurts to ask.

• Email This
• Print
• Trackbacks
• Share Link

 Yesterday the Sedona Conference (a nonprofit research and educational institute dedicated to the advanced study of law and policy in the areas of antitrust law, complex litigation, and intellectual property rights) issued its Cooperation Proclamation -- click here to read the Proclamation and click here for the slides from the related press conference.*  Every litigator knows that she has a duty to be a zealous advocate for her client.  The Cooperation Proclamation focuses on the litigator's other main duty, the one that is sometimes forgotten in the quest for zealous advocacy -- the attorney as an officer of the court.  As an officer of the court the Federal Rules of Civil Procedure require that we cooperate to fully and properly complete the discovery process.  Unfortunately, the discovery process (just like code pleading that open discovery was created to fix) can become a ritualized fight  focused on procedural rules and technicalities, instead of exchanging the necessary facts so that the case can be pared down and prepared for trial, mediation or settlement.

The Sedona Conference suggests that litigators first focus on their roles as officers of the court to cooperatively define the scope of and complete discovery in a case.  Then, once all of the facts have been made available to the extent possible, the attorney focuses on the role of zealous advocate, working the produced evidence to make the client's case.  The Sedona Conference bills this as a somewhat radical proposal that will require fairly extensive awareness campaigns and retraining.  But my experience suggests that the change may not be as radical as the Sedona Conference thinks.  In many cases (although not all) the parties do try to produce the relevant documents and witnesses, and to resolve discovery disputes reasonably.  I think what needs radical change is a pervasive lack of trust between litigators.  Everyone is afraid their opponent is gaming the system and hiding the smoking guns.  What most needs change is trust among the officers of the court.  Perhaps the Sedona Conference's plan of educating attorneys to perform cooperative discovery will begin to generate that trust.

• Email This
• Print
• Trackbacks
• Share Link

The Blawg Reviews are not belated, just my post about them.  Last week's Blawg Review #179 is up at Securing Innovation -- click here to read it.  It is an ode to the ballpoint pen on its seventieth anniversary.  It was a transformative invention, dispersing the power of the pen much more broadly across societies.  I am a rollerball guy, but it is still a great review.  And as would be expected from an IP-focused blog, there is a heavy dose of IP.

This week's Blawg Review #180 is up at Law Pundit -- click here to read it.  Law Pundit focuses on German-American Day with exhaustive information about German-Americans and Oktoberfest.  After completing Review #179, Securing Innovation also plays a role in #180 because of its highlight of an article suggesting that the US nonpracticing entity patent litigation strategy has found its way to Germany and Europe generally -- click here for Phillipa Maister's IP Law & Business article discussing NPE's in Europe.

Next week's Blawg Reivew #181 by the Mediation Channel.

• Email This
• Print
• Trackbacks
• Share Link

Rowe Int’l. Corp. v. Ecast, Inc., No. 06 C 2708, 2008 WL 4133516 (N.D. Ill. Aug. 25, 2008) (Kennelly, J.)

Judge Kennelly granted in part plaintiff’s patent infringement summary judgment motion and denied defendants’ noninfringement summary judgment motion.* Of particular interest, the Court held that defendant Ecast could directly infringe the patents in suit, despite the fact that it did not make or assemble all components of the system – Ecast contributed the memory and the network, while the other defendants supplied the jukebox components. But the Court held that Ecast could directly infringe the patent for at least two reasons. First, Ecast produced promotional and technical materials advertising complete jukebox systems. Second, the evidence showed that Ecast directed and controlled the other defendants’ production of computer jukeboxes specifically designed to work with Ecast’s system.

* For more on this computer jukebox infringement case in the Blog’s archive click here.

• Email This
• Print
• Trackbacks
• Share Link

Kelley v. Chicago Park District, No. 04 C 7715, Slip Op. (N.D. Ill. Sep. 29, 2007) (Coar, J.).

Judge Coar entered judgment for defendant the Chicago Park District (“CPD”) on plaintiff Chapman Kelley’s (“Kelley”) two Visual Artists Rights Act (“VARA) claims and for Kelley as to his implied breach of contract claim, after holding a bench trial.* Kelley brought this suit arguing that his work of art “Wildflower Works” (“WW”) was copyrightable as a sculpture pursuant to the Copyright Act and the VARA. Kelley originally installed his WW in Chicago’s Grant Park in 1984 pursuant to a permit from the City of Chicago. WW was an installation of wild flowers in two elliptical shapes surrounded by gravel — click here for pictures from Kelley's website — that Kelley replanted and tended each year. Chicago periodically renewed the permit until 1994, when Kelley continued his WW pursuant to an oral permit renewal. Then in 2004, Chicago fenced off WW, effectively destroying it. 

As an initial matter, the Court noted that there was a significant tension between the laws desire to define things, like what a sculpture is, and modern art:

There is a tension between the law and the evolution of ideas in modern or avant garde art; the former requires legislatures to taxonomize artistic creations, whereas the latter is occupied with expanding the definition of what we accept to be art. While Andy Warhol’s suggestion that “art is whatever you can get away with” is too nihilistic for the law to accommodate, neither should VARA be read so narrowly as to protect on the most revered work of the Old Masters. In other words, the “plain and ordinary” meanings of words describing modern art are still slippery.

The Court held that WW was a sculpture, or three dimensional art work, based upon Kelley’s manipulation of the flowers, metal and gravel used to form the contours and colors of WW. Similarly, while WW was not just two dimensional, it was also a painting because it “corral[ed] the variegation of wildflowers in bloom into pleasing oval swatches . . . .”

• Email This
• Print
• Trackbacks
• Share Link

Several stories and updates that are worth a mention, but do not warrant a separate post:

• I was going to write a post explaining new Federal Rule of Evidence 502, but Beck & Herrmann at Drug & Device Law beat me to it and did an excellent job (actually, they did not, but their colleague David B. Alden of Jones Day  did) -- click here to read the post.  Every litigator should read FRE 502 for themselves and then read the Drug & Device Law post or some other guide.  It is a significant rule, even though it codifies much of what was already the standard practice.
   
• Anne Reed at Deliberations provides a series of links to the most recent edition of The Jury Expert -- click here for Reed's post.  If you do not already subscribe to The Jury Expert, do it now.  This is a fabulous publication.  My favorite article is by Oklahoma State's Edward Burkley and Darshon Anderson, discussing translating the science of persuasion into the courtroom.  Anyone who makes it their business to persuade judges, juries, colleagues or even their spouse should read this article.  Much of the article will not be new to anyone who studies the art of persuasion.  But at a minimum it is an excellent distilling of important persuasion techniques and everyone will learn or rethink a few things. 
   
• Patent Reform is back, or at least Minority Whip Senator Kyl (R-AR) has introduced a new patent reform bill.  It is hard to imagine there is much traction in the midst of a presidential election and all of the economic unrest swirling around Washington.  But you can read more about the bill at Patent Docs and the 271 Patent Blog.

• Email This
• Print
• Trackbacks
• Share Link

Hyperquest, Inc. v. N’Site Solutions, Inc., No. 08 C 483, 2008 WL 3978310 (N.D. Ill. Aug. 22, 2008) (Shadur, Sen. J.)

Judge Shadur continued defendants’ motion for fees as a prevailing party in this copyright case pursuant to 17 U.S.C. §505, after previously requiring additional briefing as to the reasonableness of defendants’ requested fees – click here to read about that opinion in the Blog’s archives. Defendants collectively requested approximately $260K in fees. The Court dismissed plaintiff’s argument that defendants did not offer proof that defendants had paid their counsels’ fees. But the Court set a hearing to discuss an appropriate award, noting that plaintiff’s counsel’s fees, approximately $110K, were a more appropriate sum, with some adjustment for the fact that there were two defendants.

• Email This
• Print
• Trackbacks
• Share Link

Tuthill Corp. v. ArvinMeritor, Inc., No. 07 C 2758, 2008 WL 4200888 (N.D. Ill. Sep. 5, 2008) (Gottschall, J.)

Judge Gottschall denied declaratory judgment (“DJ”) defendant ArvinMeritor’s Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction. ArvinMeritor sent DJ plaintiff Tuthill Corp. a letter alleging that Tuthill infringed a group of patents to recreational vehicle suspension systems (the “RV patents”). Tuthill responded that its product did not infringe, that the patents were invalid, and that the accused products were not in production yet. Tuthill alleged that the parties had continuing discussions regarding the RV patents. ArvinMeritor claimed that the discussions went dormant as to the RV patents after it received Tuthill’s letter. Tuthill filed this suit after its accused products were put on the market. The Court held that regardless of whether the discussions went dormant, Tuthill’s claim met the Supreme Court’s MedImmune standard, as defined in the Federal Circuit’s SanDisk opinion. And ArvinMeritor never dissolved the controversy by providing Tuthill a covenant not to sue.

• Email This
• Print
• Trackbacks
• Share Link