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

Here are several important, national patent and trademark stories:

• Via Patent Docs (which has a new web address -- http://www.patentdocs.org) a new patent reform bill (perhaps the first of three) may be issued as early as Monday, March 2 -- click here to read the Patent Docs post.
   
• President Obama has nominated Gary Locke to be the next Secretary of Commerce, which would  put Locke in charge of the PTO.  Locke, formerly the Governor of the state of Washington, is currently a partner in Davis Wright Tremaine's Seattle office.  For more on the appointment from the Chicago Tribune's Swamp blog, click here.  In his speech announcing the nomination, President Obama pointed out that among Locke's many impressive credentials and accomplishments, he is an Eagle Scout.  As an Eagle myself, I am always glad to see another succeed.

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Richter v. INSTAR Enterprises Int'l, Inc., No. 08 C 50026, Slip Op. (N.D. Ill. Jan. 23, 2009) (Kapala, J.).

Judge Kapala granted defendant INSTAR's Fed. R. Civ. P. 12(b)(2) motion to dismiss plaintiff's copyright infringement claims for lack of personal jurisdiction. INSTAR did not have sufficient contacts with Illinois for general jurisdiction. INSTAR did not maintain offices or otherwise regularly do business in Illinois. Its contacts with Illinois were: 1) its interactive website; and 2) INSTAR's customer's resale of its products within Illinois. Additionally, INSTAR produced undisputed evidence that less than .1% of its business came from Illinois and that none of the accused products were sold directly into Illinois.

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C.S.B. Commodities, Inc. v. Urban Trend (HK) Ltd., No. 08 C 1548, Slip Op. (N.D. Ill. Jan. 7, 2009) (Dow, J.).

Judge Dow granted corporate defendant Urban Trend's (“Urban Trend”) and denied the individual defendant's respective Fed. R. Civ. P. 12(b)(2) motions to dismiss plaintiff's Lanham Act unfair competition and related state law claims for lack of personal jurisdiction. Plaintiff served the individual defendant, who was Urban Trend's president, while he was representing Urban Trend at a trade show in Illinois. The Court held that personal service created jurisdiction over the individual defendant, even though the Court may not have had jurisdiction but for personal service. And while the individual defendant was in Illinois as part of his job responsibilities representing Urban Trend at the trade show, the Fiduciary Shield Doctrine did not protect him. As Urban Trend's president, the individual defendant would have gained independent economic benefit from selling Urban Trend's products at the trade show. And as president, the individual defendant had at least some control over whether to sell or promote products in Illinois.

The Court, however, held that personal service upon Urban Trend's president was not sufficient to create jurisdiction over Urban Trend. And tradeshow attendance alone was not sufficient to create specific jurisdiction over Urban Trend. There was no evidence that Urban Trend's tradeshow efforts were particularly focused on Illinois sales, or that Urban Trend completed any sales.

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Another sign that patent reform is heating up again:  the ABA's IP Section has sent the Senate Judiciary Committee a position paper regarding inequitable conduct reform (click here to get to the Section's advocacy page which has a link to the letter).  The ABA argues that inequitable conduct materiality should be based upon the law and standards at the time of the alleged conduct, not based upon the present day standards.  The ABA also argues that inequitable conduct decisions should continue to be made by the federal courts, not the PTO.  And finally, the ABA argues that the standard for inequitable conduct should be:

(1) that a person having a duty of candor and good faith to the PTO in connection with the patent or an application therefor knowingly and willfully misrepresented a material fact or material information to the PTO or omitted a known material fact or known material information from the PTO;

(2) that, in the absence of such misrepresentation or omission, the PTO, acting reasonably, would not have granted or maintained in force at least one invalid patent claim; and

(3) that the misrepresentation or omission occurred with a specific intent to deceive the PTO, and that such intent cannot be established by the mere materiality of the misrepresentation or omission.

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The Northern District has set up a new page on its website collecting educational information about the Court and the Dirksen Courthouse.  The Northern District intends the site to help school groups planning to or interested in visiting the Court.  It is a great resource for visiting school groups, but it is also interesting for members of the Northern District Bar.  In addition to logistical information and educational background on the operations of the district courts, it also provides the Court's historic highlights.  For example, there are lists of famous trials and appeals.  No patent cases made the list, they were bumped by defendants like Capone, Hoffa, the Chicago Seven and public officials from Project Graylord.

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Here are a few stories and announcements from the Chicago IP world:

• Hinshaw & Culbertson LLP has launched a new blog:  Practical Ediscovery.  The blog is written by a team of the firm's attorney and focuses on practical considerations and approaches for handling issues arising with the production of electronically stored information. Check out Evan Brown's first post here.
   
• Anne Reed has a post that every patent litigator should read at Deliberations -- click here to read it.  Reed looked at the issue of how and when to introduce technical jargon to juries.  Reed makes to important points:  1) trust juror' intelligence, people like to learn; and 2) despite that, do not teach the jargon both unless and until it is relevant to the jury.
   

• There is an interesting new paper out arguing for a revised venue statute by Sidney Rosenzweig, a visiting fellow at the Progress and Freedom Foundation.  Rosenzweig argues for the following rewording of the venue statute:*

  Notwithstanding subsection 1391(c) of this title, any civil action for patent infringement may be brought against a corporation only in a judicial district:

  (1) where the defendant has its principal place of business or where the defendant is incorporated;

  (2) where the defendant has committed a substantial portion of the acts of infringement and has a regular and established physical facility that it controls;

  (3) where any defendant has committed a substantial portion of the acts of infringement and has a regular and established physical facility that it controls, if there is no other district in which the action may be brought under subsections (1) or (2); or

  (4) where any defendant has its principal place of business, where any defendant is incorporated, where any defendant may be found, or where any defendant has committed acts of infringement, if there is no other district in which the action may be brought under subsections (1), (2) or (3).

*  Click here to read the report.  And a hat tip to Peter Zura for identifying the paper.

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IPWatchdog Gene Quinn recently published his list of the top 26 patent blogs, based upon Technorati rankings (Quinn only considered blogs in the top 1M of the Technorati rankings) -- click here to read Quinn's post.  Quinn manually determined which blogs counted as patent blogs, and did nice work.  Although I would add the IP ADR Blog to the list.  While I do not place much weight in blog rangings, the list identified a few new blogs that I plan to follow, and it is gratifying to see that the Chicago IP Litigation Blog has a strong reader base in the patent world.

Here are Quinn's rankings:

1. Patently-O - Technorati Rank 21,202
2. Patent Baristas - Technorati Rank 61,134
3. IPWatchdog - Technorati Rank 80,245
4. Against Monopoly - Technorati Rank 80,245
5. Patently Silly - Technorati Rank 90,082
6. Chicago IP Litigation Blog - Technorati Rank 117,073
7. PHOSITA - Technorati Rank 101,726
8. Spicy IP - Technorati Rank 129,347
9. PLI Patent Practice Center - Technorati Rank 132,753
10. Duncan Bucknell Company’s IP Think Tank - Technorati Rank 136,348
11. Patent Prospector - Technorati  Rank 152,448
12. Securing Innovation - Technorati Rank 162,007
13. Peter Zura’s 271 Patent Blog - Technorati Rank 163,794
14. The Invent Blog- Technorati Rank 167,214
15. Promote the Progress - Technorati Rank 198,166
16. I/P Updates- Technorati Rank 213,371
17. IP NewsFlash- Technorati Rank 221,777
18. Orange Book Blog - Technorati Rank 221,777
19. The IP Factor - Technorati Rank 250,588
20. Philip Brook’s Patent Infringement Updates- Technorati Rank 273,434
21. Patent Docs - Technorati Rank 300,413
22. Antiticpate This! - Technorati Rank 351,677
23. Patent Fools (now operated by IPWatchdog.com) - Technorati Rank 351,092
24. Patentably Defined - Technorati Rank 614,978
25. Steve van Dulke’s Patent Blog -  Technorati Rank 676,101
26. IP Spotlight - Technorati Rank 752,199

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Here are several Chicago-area intellectual property CLEs that look like worthwhile programs:

• The next installment on the Chicago IP Colloquium is February 24, at Chicago-Kent, Room 305.  Professor Anupam Chander, UC Davis School of Law, will discuss his paper:  Youthful Indiscretion & Digital Memory.

• On February 27, John Marshall is hosting its 53rd annual Intellectual Property Law Conference.  The day-long program has two tracks:  1) patents; and 2) trademarks, copyrights and trade secrets.  The program is full of interesting presenters, including Internet Cases' Evan Brown -- click here for a preview of his presentation regarding open source disputes.

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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 12 pm CT on this Wednesday, 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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On March 3, the Northern District will celebrate 190 years of Illinois federal courts.  The celebration begins at 3:00 pm with a program in the Dirksen Courthouse ceremonial courtroom, Room 2525.  The Northern District bar is invited to the celebration, e-mail rsvps to ilnd_190th_Anniversary@ilnd.uscourts.gov.

The celebration will include a panel of Northern District judges discussing "The Future of the Federal Courts" and a sketch of the court's history by Richard Cahan, the author of A Court That Shaped America: Chicago’s Federal District Court from Abe Lincoln to Abbie Hoffman.  The celebration also serves as the grand opening of the court's exhibit:  “The 190th Anniversary of
the United States District Court in Illinois: A Celebration of the Federal Judiciary’s Contribution
to Illinois and the Nation.”  The exhibit, featuring court artifacts, photographs and sketches will remain on display through May 1, 2009, and will be located on the second floor of the Dirksen United States Courthouse.

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Here are several Northern District and IP news stories that did not warrant separate posts:

• The Northern District's new Rockford courthouse is being named for retired Judge Roszkowski.  Judge Roszkowski was the first federal judge permanently seated in Rockford and served for over twenty years.
   
• Blawg Review #198 is up at the East Central Illinois Criminal Law & DUI Blog (click here to read it).  As you might expect based upon the blog's subject matter, there is not a lot of IP content.  But there are several Illinois-specific stories that Blog readers may find interesting.  For example, My Law Life warns that an Illinois statute makes it illegal to jog (or walk) on Illinois roadways where sidewalks are available -- click here to read the post.
   
• Several blogs are reporting that patent reform may be back on in Congress this year:  Patently-O; and 271 Patent Blog.

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At his IP Think Tank Blog, Duncan Bucknell reflected upon Doug Lichtman's recent IP Colloquium interview with Federal Circuit Chief Judge Michel -- click here to read Bucknell's post and here to get the Michel interview, which you is well worth any patent litigator's time.  Bucknell's take away from the interview is a very timely question in light of the news that patent reform may be back before Congress in 2009:

If the intellectual property laws could be codified so that the result in intellectual property disputes is always certain - even though it might not be fair - would that be ok? Or would you prefer that the legislative guidelines remain broad and the fine details in each circumstance be worked out in context - in litigation? (As happens today?)

 

I think this is a difficult question to answer.  My experience is that many, maybe most, would like certainty over justice in the abstract.  It makes sense to reduce transaction costs and to provide businesses increased certainty.  But when asked the same question about their own IP case, most prefer a more complex and less certain system designed with the goal of reaching fair (I would substitute the word "just" here) outcomes.

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Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jan. 9, 2009) (Cox, Mag. J.).*

Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony following the reasoning of a previous opinion in a related case about the same expert -- click here to read about that opinion in the Blog's archives. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.

* Click here for more on this case and related cases in the Blog’s archives. Also, note that the Court continues the progressive use of footnote citation.

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Ratner v. M&M Control Serv., Inc., No. 08 C 6928, Slip Op. (N.D. Ill. Jan. 5, 2009) (Shadur, Sen. J.).

Judge Shadur ordered that certain denials in patent defendant's answers be stricken pursuant to Fed. R. Civ. P. 8(b)(5) and 11 (b).  The Court held that when a defendant lacked sufficient knowledge to answer an allegation and so stated, it was deemed a denial pursuant to Rule 8(b)(5).  But defendant cannot actually deny the allegation because defendant has already stated that it lacks sufficient knowledge to admit or deny the allegation.  As such, denying the allegation conflicts with Rule 11(b) obligations.

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, Min. Order (N.D. Ill. Feb. 2, 2009) (Moran, Sen. J.).*

In this pair of entries, Judge Moran denied plaintiff Trading Technologies' motions for fees and costs related to a discovery motion and referred another fees motion to Magistrate Judge Schenkier.  In the first entry, the Court noted that it was time to end "unnecessary [discovery] battles" in the case and that it might not be as forgiving with the next fees motion.  In the other entry, the Court transferred a fees motion to Judge Schenkier, but questioned how "a single discovery dispute could blossom into a claim for over $300,000.

*  Click here to read much more about this case and the related cases in the Blog's archives.

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Freightquote.com, Inc. v. Air Ocean Land Sol'ns., Inc., No. 98 C 346, Slip Op. (N.D. Ill. Jan. 26, 2009) (Shadur, Sen. J.).

Judge Shadur issued this Memorandum questioning whether plaintiff's trademark infringement and related state law claims should have been brought in the Northern District.  The complaint listed the parties' citizenship as being in Delaware, Kansas, North Carolina and Texas.  The lack of an Illinois resident or citizen in the case caused the Court to question whether the Northern District was the appropriate location for the suit.  The Court did not rule upon the issue, but directed the parties to be prepared to discuss whether the Northern District was the appropriate forum for the case at the next hearing.

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The next installment of the Spring 2009 Chicago Intellectual Property Colloquium is this Tuesday, February 10, at 4:00 pm in Room 1103 at Loyola University Chicago Law School.*  This installment of the Colloquium will be especially interesting to the Blog's readers, as the paper to be presented is directly focused on patent litigation.  Professor Colleen Chien of Santa Clara University Law School will present her paper:  Narratives and Evidence in the Litigation of High-Tech Patents.  The event will be held at Loyola University Chicago School of Law, 25 East Pearson Street, on Tuesday, February 10, 2009, 4:00 p.m. in Room 1103.  Chien's paper uses data from the Stanford IP Litigation Clearinghouse.

*  The Colloquium is jointly sponsored by Chicago-Kent and Loyola University Chicago.

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Yesterday, President Obama announced that he was appointing Senator Judd Gregg (R-N.H.) to become the next Secretary of Commerce, a significant position in the intellectual property world.  As Secretary of Commerce, Gregg will oversee the PTO and have a strong voice in any patent reform that might occur while he is Secretary.  The blogosphere and mainstream media are slowly providing background regarding Gregg:*

• Patently-O
   
• Peter Zura's 271 Patent Blog (highlighting this Congressional Quarterly article which points out that Gregg once voted to abolish the Department of Commerce).
   
• Washington Post's 44 Blog.

*  I will update this post with more links if I see anything especially valuable.

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The Chicago Tribune ran an interesting article by Ann Meyer yesterday (click here to read it) discussing companies monetizing IP, specifically patents and dormant trademarks, not just through the more traditional means of litigation and licensing, but also through sales of the IP.  While there are numerous brokers who help sell IP, the article focused on Chicago-based Ocean Tomo's patent auctions.  It is not very surprising that in a down economy companies are looking to their IP as a significant source of value.  Nor is it surprising that companies would seek to avoid the upfront costs of both licensing and litigation in favor of a more immediate sale for IP the company is not using.  Of course, the continued health of the patent, trademark and copyright dockets in the Northern District of Illinois and across the country prove that companies continue to monetize their IP and protect market space from competitors through more traditional means as well.

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Anyone that has litigated a patent that was originally written in a language other than English has almost certainly dealt with translation issues.  For that matter, anyone that has used foreign language prior art or technical documents has likely faced translation issues.  The new PatLit blog has an interesting post about translation issues related to a European patent litigation -- click here to read the post.  A PatLit reader suggests that there are few written opinions dealing with translation issues, but that translation issues must be common.  My experience is that the complexity and frequency of translation issues are directly related to the complexity of the technology.  Not a shocking conclusion because complex, cutting-edge technology has its own terminology that often does not lend itself to seamless translation.  The fact that there are not many written opinions makes less sense.  But here are a few possible explanations:  1) courts treat translation issues as any other difference of opinion in claim constructions and deal with them without mentioning the translations; or 2) cases that suffer from unclear or bad translations may be more likely to settle before a decision.

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