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

Here is some IP-related news for your weekend enjoyment:

• Seattle Trademark Lawyer Mike Graham warns that the excellent Stanford IP Clearinghouse may not be counting all cases in its data based on Graham's comparison of 2008 trademark filings in the Western District of Washington using PACER and the Stanford IP Clearinghouse -- click here to read the post.  I echo Graham's statement that even if there are discrepancies, or even missing data, the Stanford IP Clearinghouse is an excellent resource with vast potential.
   
• Blawg Review #196 was hosted on Australia Day this week by Peter Black's Freedom to Differ, an Australian blog focused on internet regulation -- click here to read the Review.    After tackling controversy surrounding the date of Australia day, Black discusses several IP issues including Duncan Bucknell's post regarding YouTube copyright issues; and Brendan Scott's series on closed source software.

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Last fall, the Federal Circuit issued an en banc decision in In re Bilski, holding that the “machine-or-transformation test” was the only test for determining whether a claimed process was eligible for patenting pursuant to § 101. The decision required that a process either:  1) be tied to a particular machine or apparatus; or 2) transform an article into a different state or thing.  The Federal Circuit affirmed the PTO's rejection of Bilski's claimed method of hedging the risk of bad weather through commodities trading as lacking patentable subject matter.  The Federal Circuit held that the method failed the machine-or-transformation test.  Click here for the Federal Circuit decision.

Earlier this week, Bilski petitioned the Supreme Court for a writ of certiorari to consider the following two issues:

 

Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing … despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Click here to read the petition.  Pursuant to Supreme Court procedural rules, amici briefs are due at the end of February, although the PTO can seek an extension.

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The Chicago IP Colloquium has another strong line up for its 2009 edition.  The Colloquium jointly sponsored by Chicago-Kent and Loyola Chicago began yesterday at Kent with Professor Joseph Miller of Lewis & Clark Law School presenting his paper Hoisting Originality. Papers from past Colloquia are available here.

The leaders of the Colloquium are Professor Graeme Dinwoodie, Director, Program in Intellectual Property Law, Chicago-Kent College of Law and Professor Cynthia Ho, Loyola law School.  Mark your calendars for the remaining sessions of the 2009 Colloquium:

February 10, Loyola University Chicago School of Law, Room 1103
Professor Colleen Chien, Santa Clara University Law School
Paper: Patent Detente - Solutions to the Patent Arms Race

February 24, Chicago-Kent College of Law, Room 305
Professor Anupam Chander, UC Davis School of Law
Paper: Youthful Indiscretion & Digital Memory

March 24, Loyola University Chicago School of Law, Room 1103
Professor David Adelman, The University of Arizona
Paper: Visualizing Patent Domains: Emerging Empirical Methods & Their Implications for Patent Policy

April 7, Chicago-Kent College of Law, Room 305
Professor Lisa Ramsey, University of San Diego School of Law
Paper: Free Speech and International Obligations to Protect Trademarks

April 21, Loyola University Chicago School of Law, Room 1103
Professor Frank Pasquale, Seton Hall University School of Law
Paper: Search, Copyright, and Speech

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Magistrate Judge Mason's term ends on September 28, 2009.  As part of considering reappointing Judge Mason for an additional eight year term, the Northern District is establishing an advisory panel of Northern District citizens.  Additionally, the Northern District Clerk is accepting written comments to regarding Judge Mason to assist the panel until March 20, 2009 at the following address:

Magistrate Judge Advisory Panel
c/o Mr. Michael W. Dobbins
Clerk of Court
U.S. District Court
219 South Dearborn St. - Rm. 2050
Chicago, IL 60604

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Along with the IP ADR Blog's Victoria Pynchon, I am giving an ALI-ABA continuing legal education teleconference discussing alternative dispute resolution as a low-cost alternative for intellectual property disputes -- click here to register.  The program is at 11 am CT on February 18.  Here are ALI-ABA's program highlights:

Why Attend?

In a difficult economy, intellectual property protection and assertion is more important than ever. The combined stressors of a poor fiscal climate and shrinking legal budgets place a significant strain on any business dependent upon IP assets. as companies face difficult economic decisions, it is increasingly difficult to fit the expense and extended uncertainty of copyright, patent and trademark litigation into a forward looking business plan. This one-hour seminar explores the use of alternative dispute resolution as a means of protecting intellectual property and business activity, while minimizing the expense and devotion of time related to traditional IP litigation.

What You Will Learn

This program examines how to move an IP dispute toward alternative dispute resolution; best practices for controlling the expense and length of the process; and best practices for successful alternative dispute resolution. Whether you are an experienced IP practitioner or simply one grappling with IP issues in your general commercial practice, knowing how to offer your clients a wide array of ADR options might make the difference between a practice that survives and one that thrives. The seminar will cover the following topics:

• How to choose between litigation and ADR.
   
• The most successful strategies for guiding your dispute into the best ADR forum at the most productive time.
   
• The five basic rules of “distributive” or “fixed sum” bargaining that will give you the “edge” in all future settlement negotiations.
   
• The five ways to “expand the fixed sum pie” by exploring and exploiting the client interests underlying your own and your opponents’ legal positions.
   
• The Ten Mediation/Settlement Conference Traps for the Unwary.
   

Invest just 60 minutes at your home or office to learn about alternative dispute resolution in the IP field from this duo of experts. This audio program comes to you live on Wednesday, February 18, 2009, 12:00-1:00 pm CST, via your phone or your computer. Materials corresponding to the course may be downloaded or viewed online.

Planning Chair

R. David Donoghue, Esquire, Holland & Knight LLP, Chicago, IL

Faculty

Victoria Pynchon, Esquire, Settle It Now Dispute Resolution Services, Beverly Hills, CA

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Here are several IP-related stories and news items that I found valuable or interesting:

• The Maryland IP Law Blog reports that Patent Secrecy Act activity was down in 2008, with a significant reduction in issuance of new secrecy orders -- down to 68 in 2008 from 128 in 2009 -- and existing secrecy orders down about .5% to 5,023 total in FY 2008 -- click here to read the post.
   
• Daily Writing Tips warns against genericide -- the death of a trademark caused by using the mark as a generic term -- and gives numerous examples.
   
• A sincere thank you to Patent Baristas; Rush on Business; and Securing Innovation.  I do not buy into the blog awards  or best blog lists, but it is an honor  to be nominated for Blawg Review of the year by such accomplished bloggers and lawyers.  My 2008 Blawg Review was an ode to world record swims and America's favorite Olympic son Michael Phelps -- click here to read it.

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Kingsbury Int'l., Ltd. v. Trade the News, Inc., No 08 C 3110, Slip Op. (N.D. Ill. Oct. 28, 2008) (Lindberg, Sen. J.).

Judge Lindberg denied defendant's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff's copyright infringement claim and defendant's alternative Fed. R. Civ. P. 12(e) motion for a more definite statement of the claim. Plaintiff alleged that it owned a copyright in its Chicago Business Barometer monthly business index; that it specifically informed its subscribers that the index was copyrighted and that it could not be reproduced or rebroadcast in any manner until plaintiff publicly released the index at 8:45 AM; and that defendant released unidentified “parts” of the May 2007 issue of the index at 8:42 AM, three minutes before plaintiff's public release. The Court held that these allegations met the Fed. R. Civ. P. 8(a) pleading standards, without specifically identifying which parts of the index were copied, noting that copyright claims did not require Fed. R. Civ. P. 9(b) heightened pleading. Furthermore, defendant's defense that, if anything, it copied only unprotected facts was not appropriate for a Rule 12(b) determination on the pleadings.

Finally, the Court held that the complaint was not “so vague or ambiguous” that it warranted requiring a more definite statement.

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Publications Int'l. Ltd. v. LeapFrog Enters., Inc., No. 08 C 2800, Slip Op. (Dec. 4, 2008) (Guzmán, J.).

Judge Guzmán granted declaratory judgment defendant LeapFrog's Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff Publication International's (“PIL”) claim for declaratory relief regarding the POINGO mark used in association with a pen-like electronic reading device. PIL alleged, and LeapFrog admitted, that LeapFrog used the POINGO mark for a pen reader system in one presentation to a retailer, but never marketed or sold a pen reader using the name and never sought to register the mark with the PTO. PIL also alleged that LeapFrog sent PIL cease and desist letters warning that LeapFrog's earlier use of the POINGO mark gave it priority in the mark. The Court held that PIL had not met its burden because it had not alleged that LeapFrog had used the mark on products in commerce or that LeapFrog had sufficient intent to use the mark in commerce. Without a use in commerce or an intent to use, the immediacy required for a declaratory judgment action was not present.

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While I head out to watch Chicago's adopted son, President-elect Barack Obama become the nation's next president, I thought it was appropriate to provide some thoughts on where the new administration might lead the IP community.  I am an IP litigator and fortunate enough to be able to watch one of the most amazing spectacles of our democracy, the peaceful transfer of power, but I do not pretend to be either a prognosticator or political expert.  So I will leave the predictions to those who feel qualified to make predictions:

• Computer Business Review magazine's Jason Stamper Blog;
   
• IAM Magazine Blog;
  
  
• Intellectual Property Watch Blog;
   
• National Journal's Tech Daily Dose; and
  
  
• Patent Baristas.

[UPDATE:]  Duncan Bucknell's weekly podcast, which is always worth your time, discussed how the Obama administration might impact US IP policy -- click here to listen to it.

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Please join me this Friday, January 23 at the Chicago Bar Association's annual Practice Management and Legal Technology Conference.  I will be presenting from 1:30-2:30 CT with Evan Brown of Internet Cases fame.  We will be discussing the broad topic of using the internet and social media, in particular blogs, to network and develop your practice.  The conference promises to be a great day of learning about new technologies from a wide array of experts.  The cost is $99 dollars for CBA members and $199 for non-members both pay an extra $10 for registration at the event.  Click here for more information on the seminar and registration forms.

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Brinks Hofer's Robyn Bowland is the winner of the 2008 George Hutchinson Writing Competition, Hutchinson was the first Federal Circuit Chief Clerk. The competition honors an excellent articls or paper from a law student. Bowland's article -- Distress Signals: Considering the Patentability of Signals in Light of Nuijten considered whether electromagnetic signals were patentable focusing on In re Nuijten.  It is expected to be published later this month in the Federal Circuit Bar Journal.   It is great to see another strong writer joining the Chicago IP bar.

*  Hat tip to the Chicago Lawyer for identifying this story -- click here to read the Chicago Lawyer story.

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2008 was another busy IP year for the Northern District of Illinois.  Once again, there was an increase in patent case filings, and the Northern District continues to be among the top five patent dockets in the country and the most active district court in the Seventh Circuit by far.  Trademark cases were steady, with only two fewer filings than in 2007.  And as with its patent docket, the Northern District's trademark docket continues to be one of the five most active in the country.  Finally, copyright cases continued a relatively steep decline.  But despite the decline, the Northern District maintains one of the most active copyright dockets outside of California and the Southern District of New York.  This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2008 (data gathered from the Stanford IP Clearinghouse):

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I am proud to announce that I am joining the exceptional faculty of the newly formed Solo Practice University, teaching a course focused on learing how to successfully litigate in federal district courts.  I am honored to be a part of SPU's impressive faculty.  And I look forward to working with the SPU student body to improve the practice of law in the federal district courts. 

I joined SPU and agreed to fit one more thing into an already busy schedule for two reasons.  First, I enjoy teaching and I believe that SPU's vision of a collaborative environment where students can learn and interact in the digital world and at their own pace is an excellent model.  Second, I have been interested in creating a district court practice course for several years and SPU became a catalyst for the idea.  Eventually, I expect I will use the bones of the course created for SPU either to a law school, perhaps Loyola where I have enjoyed teaching several courses, or to write a text on district court practice.  The course will teach the fundamentals of district court litigation, and I will weave in lessons I have learned over the course of a career both as a district court law clerk and as a practicing lawyer.  I hope that it will both help students avoid the learning curve most of us face as we start litigating and help to increase the quality and skill of district court advocacy. 

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ACCO Brands USA LLC v. PC Guardian Anti-Theft Prods., Inc., No 06 C 7102, Slip Op. (N.D. Ill. Dec. 10, 2008) (Zagel, J.).*

Judge Zagel denied defendant PC Guardian's ("PCG") renewed motion to transfer plaintiff's patent suit against PCG, but not necessarily the other defendants, to the Northern District of California, where plaintiff and PCG were litigating a related patent.  The Court previously denied this motion, reasoning that all issues related to the patents in suit should be tried in one court, as opposed to the Northern District of California resolving the case as to PCG and the Northern District of Illinois to resolve the issues as to the other defendants in this suit. 

PCG renewed its motion because its new Northern District of California inequitable conduct motion implicated both the patents in suit in the Northern District of California and those at issue in the Northern District of Illinois.  But the Court held that transfer of the case would still leave this Court to resolve the identical issues as to the remaining defendants.  Additionally, because the Northern District of California court would likely rule on the issues before this Court, this Court would have the opportunity to consider the California rulings before deciding the issues.  And this Court had already construed the claims in this case (click here), resulting in only two minor differences between the courts.

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

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Consumers Digest Comms., LLC v. Westpoint Home, Inc., No. 08 C 3486, Slip Op. (N.D. Ill. Dec. 9, 2008) (Shadur, Sen. J.).

Plaintiff filed an amended complaint including a copyright claim, after Judge Shadur orally granted defendant's motion to dismiss its original copyright and related state law claims.  The Court noted that the amended complaint did not include a copy of the allegedly infringing publications as exhibits.  The Court, therefore, ordered plaintiff to deliver copies of the allegedly infringing publications to the Court and defendant's counsel. 

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Making good on his promise to turn his IP Colloquium into National Public Radio for IP law, Doug Lichtman's newest offering is an extended interview with Federal Circuit Chief Judge Michel.  Click here to listen to Licthman's interview, you can even apply for New York or California CLE credit after listening.  Here are some of Judge Michel's more interesting observations:

• Petitions for rehearing are too often "shallow and weak."
   
• Votes denying en banc rehearings are often close, making the poor petitions for rehearing especially surprising and disappointing. 
   
• Parties interested in supporting cases with amicus briefs should consider filing briefs supporting rehearing petitions.  An amicus brief that was both well researched and well written could play an important role in strengthening a case's en banc potential and tipping close votes for rehearing. 
   
• In re Bilski did not answer all of the 101 questions because not all of the questions were raised in the case or ripe for consideration.  It will take a series of 101 cases to flesh out the post-Bilski state of the law.
   
• Judge Michel is hopeful that the new patent jury instructions -- click here to read the Blog's post about them -- will help bring some clarity and continuity to, among other things, damages and obviousness instructions, although at the time of the interview it appeared that he had not seen the instructions yet.
   
• The Doctrine of Equivalents has almost "dried up."

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Rowe Int'l. Corp. v. ECast, No. 06 C 2703, Slip Op. (N.D. Ill. Nov. 28, 2008) (Kennelly, J.).

Judge Kennelly construed the terms of plaintiff's computer jukebox patents -- click here for more on this case in the Blog's archives, including more on claim construction.  Of particular interest, the Court held that "programmable computer memory" and "programmable memory" both mean a computer memory that can be programmed, requiring little construction.  The Court rejected defendant's construction that would have limited the term to random access memory. 

The parties both sought further construction of "user attract", but the Court had previously construed the term and saw no basis to revisit the construction without a clear and succinct explanation from counsel as to why it was required.

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Krippelz v. Ford Motor Co., No. 98 C 2361, Min. Order (N.D. Ill. Dec. 5, 2008) (Zagel, J.).

Judge Zagel ruled upon various motions in limine.  Of particular interest, the Court denied defendants motion for reconsideration of the Court's grant of summary judgment of infringement.  The Court held that the evidence defendant used to create a material question of fact was inadmissible.  And while the motion could be construed to include new arguments, they were too late to overcome summary judgment.

The Court also granted plaintiff's motion to preclude defendant's evidence of noninfringing alternatives because plaintiff was only seeking a reasonable royalty, not lost profits.  Finally, the Court denied defendant's motion to exclude evidence of defendant's vehicle sales as evidence of commercial excess.  While it is unlikely that anyone purchased a vehicle because of the infringing puddle lamp, the fact that defendant used the lamps in its vehicles and sold a "fair number" is evidence of commercial success.

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UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582 Slip Op. (N.D. Ill. Dec. 5, 2008) (Lindberg, Sen. J.).

Judge Lindberg granted in part plaintiff's motion to dismiss certain of defendant Starent's counterclaims.  Starent's allegations that specific patentee withheld specific references from the Patent Office were sufficient to meet the Rule 9(b) heightened pleading standards for inequitable conduct.  But the Court dismissed Starent's tortious interference counterclaim to the extent that it was based upon the filing of a law suit because Illinois prohibits tortious interference with prospective economic advantage claims based upon filing law suits.  The Court also dismissed Starent's malicious prosecution counterclaim because Starent did not allege a special injury, such as arrest, seizure of property, taking or interference with property.

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Bajer Design & Marketing, Inc. v. Base4 Group, Inc., No. 08 C 02296, Slip Op. (N.D. Ill.  Nov. 12, 2008) (Coar, J.).

Judge Coar entered the parties consent judgment, holding that defendant Base4 infringed plaintiff Bajer Design's patents and trademarks, as well as granting judgment for Bajer Design as to its related state law claims.  The Court also awarded Bajer Design damages equal to slightly more than 20% of Base4's gross sales.  Finally, the Court permanently enjoined Base4 from making, using or selling the infringing product and from using Bajer Design's POP-UPS! and POP OPEN trademarks, absent a license from Bajer Design.

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Happy New Year.  As we all reflect on 2008 and what is to come in 2009, I wish you health, happiness and success.  While everyone faces adversity in this difficult economy, I hope you are able to look beyond and rise above yours in 2009.  And may you enjoy a great New Year's Day filled with family, friends, football, and, in my case at least, a big Chicago Blackhawks win in the Winter Classic.

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