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

On July 19, 2011 at noon central, I will be presenting a webinar for West, along with Thomas Dougherty, patent counsel for Gates Corp., and my colleague Mitchell Herbert of Holland & Knight.  We will be discussing how to deal with patent trolls, including direct steps for protecting your company and ways to limit your defense budget without harming your defense.  Registration is still available, and you can use the following special code to get 25% off of the $135 program fee:  0711LEC25.  And if you miss us on the 19th, you can purchase the recording of the presentation through the end of the year.

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Earlier this month, I spent several days attending the 9th Annual Rocky Mountain IP & Technology Institute. In addition to two days of excellent continual legal education and meeting many interesting people, I also spoke with in-house counsel from Microsoft and Hewlett Packard about how to limit fees in intellectual property litigation (more on that panel soon). For those who are looking for some high quality continuing legal education, that is in a beautiful location, you should come to the 10th Annual Rocky Mountain IP & Technology Institute next June. It is one of the two best CLE programs I have ever attended.

One of the excellent sessions at the conference was Scott Alter's (of Faegre & Benson) presentation about the state and history of joint and divided infringement.  Here are some of the highlights:

• BMC v. Paymentech (2007): This case involved method claims directed to separate parties -- caller, debit processor & bank. The parties agreed that no single party performed each step. The Federal Circuit said Section 271 required one party to perform every step, unless one defendant played a "mastermind" role. BMC had argued that plaintiff just needed to show participation and combined actions. Court noted that patentee could have drafted the claims to apply to a single entity.
   
• Muniauction v. Thomson (2008): Relying upon BMC, the Federal Circuit required that a single party perform every step of a method for direct infringement. Again, the parties agreed that no signal party performed all steps. Thomson controlled access by bidders to its system and instructed bidders about how to use the system. The Federal Circuit held that one party must exercise "control and direction" over the other parties to complete all steps. It was not enough to give bidders instructions as Thomson did to the bidders in this case. Therefore, no joint infringement.
   
• Golden Hour v. emsCharts & Softtech (2009): emsCharts provided billing software and Softtech provided dispatch software. They partnered together and sold their software as a single unit. The district court found no control or direction of one party over the other. But there was no discussion of indirect infringement. Regardless of joint infringement issues, the joint product may have infringed the system claims, but the system claims were not put before the jury. So, the Federal Circuit did not decide the issue.
   
• Centillion v. Qwest (2011): The technology at issue was a system for collecting and sending service provider (telephone) information to a customer. The claims required a data processing means and a home computer. The district court held that no single party practiced each limitation of any asserted claims and there was insufficient control. The Federal Circuit overturned the district court, holding that to "use" a system a party must put the invention into service by controling the system and benefiting from it. Without customers' actions (using their computers to interact with the Qwest system), the system would never be put into service. Qwest did not "use" because it did not put the system into service and could not do so without a personal computer. The Court also looked at vicarious liability, but Qwest's customers were not agents.
   
• Akamai v. Limelight (2010): The patent was for a web content delivery method, embedded objects (pictures) were stored on a server and tagged so that when a user requested the page, the embedded objects could be found by their tag. Limelight instructed customers to tag. Limelight's contract also obligated customers to tag. The Federal Circuit held that when a party is contractually obligated to perform a method step, joint infringement exists. The Court also required an agency relationship between the parties or a contractual requirement before joint infringement could be found.
   
• McKesson v. Epic Systems (2011): Epic did not "use," but licensed its accused MyChart software. Epic was charged with induced infringement, for allegedly inducing its licensee healthcare providers to infringe. The first step of the method claim requires "initiating a communication by [a user/patient]." Parties agreed healthcare providers did not initiate the communication. There was no direct infringement, unless there was joint infringement. The only issue was whether the relationship between Epic's customers and patients was sufficient to create an agency relationship. The Federal Circuit said no. Patients chose whether to communicate and were not obligated to do so. The doctor-patient relationship did not create either agency or a contractual obligation. The Federal Circuit also held that indirect infringement addresses any concern about joint tortfeasors that are not jointly infringing. Judge Newman's dissent said that the majority decision made joint infringement of the claim "impossible." Newman also argued that McKesson conflicted with pre-BMC decisions.
   
• Akamai and McKesson are both set for rehearing en banc.  The key issue on each appeal is whether if multiple entities perform the steps of a method, under what circumstances can they be liable for indirect infringement. A majority of the judges -- all but Newman & Bryson, who see inconsistency in the cases, and O'Malley and Meara, who have not decided the issue -- appear to believe that the pre and post-BMC case law is consistent. So, the en banc decisions may not change the current state of the law so much as clarify it.

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I spent several days last week attending the 9th Annual Rocky Mountain IP & Technology Institute. In addition to two days of excellent continual legal education and meeting many interesting people, I also spoke with in-house counsel from Microsoft and Hewlett Packard about how to limit fees in intellectual property litigation (more on that panel soon). For those who are looking for some high quality continuing legal education, that is in a beautiful location, you should come to the 10th Annual Rocky Mountain IP & Technology Institute next June. It is one of the two best CLE programs I have ever attended.

One of the highlights of the Institute was a panel of sitting and retired federal judges sharing their views on intellectual property litigation, with a focus upon patent litigation. What follows is the second and final installment of the highlights from that panel. Last week, I provided highlights from Judge Philip Brimmer (D. Col.) and retired Judge James Rosenbaum (D. Minn.).  What follows is the highlights of the thoughts from the two other panelists, Magistrate Judge Boland (D. Col.) and retired Judge McKelvie (D. Del.).

Hon. Boyd Boland (D. Col.):

• Until appellate courts resolve the issue, whether Twombly/Iqbal apply to answers and affirmative defenses will be judge specific.
   
• Average time to trial in D. Col. is 23 months, and that is with a mindset of swift trial. Bifurcating discovery with claim construction discovery going first would significantly delay time to trial and therefore is unlikely to occur.
   
• Not unusual to get a motion to amend a complaint with 800 pages of exhibits, and it is worse for complex or case dispositive motions. Judges do not have resources to read the 800 pages. You should always have in mind that you need to prepare the most compact argument possible.
   
• With many magistrates the audience is only the judge because the clerk may be solely focused upon pro se prisoner matters.
   
• You should always keep in the back of your mind that almost all cases settle, so you should keep that in mind in all that you do.
   
• Boland tracks settlements in D. Col. Over the last several years, plaintiffs have won a slight majority of the relatively small number of IP trials in Colorado with significant verdicts. In contrast, patent settlements have averaged $130,000, with trademark and copyright significantly less. So, there is significant upside to settlement for defendants, and plaintiffs if they fall within the averages.
   
• Tips for making settlements effective: Do paid up, upfront licenses. The litigation between the parties usually suggests that they do not get along well or trust each other. Ongoing obligations are a recipe for disaster.
   
• Motions to stay pending reexam are disfavored, but a motion to administratively close a case with the ability to reopen for good cause after the reexam as necessary could be successful because it takes the case off of the court's docket.

Hon. Roderick McKelvie (D. Del. Ret.):

• Suspects plaintiffs and defendants are avoiding many Fed. R. Civ. P. 12(b)(6) motions because defendants know if they file one their answers will get one in response. Also, there is a tension with Rule 11, where plaintiff has to have done their pre-suit investigation.
   
• Prefers Markman to be done along with summary judgment because it focuses his attention.
   
• Began asking lawyers to submit videos of the technology. It helped with law clerk transitions (easy tool for teaching new law clerks about an ongoing case). Valued tutorials, but the parties resisted because of expense of the videos.
   
• When you write briefs you have two audiences: 1) the clerks and 2) the judge. For the law clerk, you want to provide everything they need to write the opinion -- technology, facts, law, key cases and supporting cases. For judge, you are showing the themes and who should win on a somewhat higher level.
   
• Pay attention to the law clerk cycle: September they arrive; October their heads are spinning; by April they have hit their stride. That is the time for complex motions to be considered or for trial dates, if possible because the judge is not busy training the clerks.
   
• Think about having your brief stand out by: 1) being well-written; 2) avoiding cliches; and 3) being appropriately unique.
   
• One concern with multi defendant cases is the cost of the joint defense group. Also, he believes the Federal Circuit is waiting for a mandamus case on motions to transfer.
   
• There is a provision of the Patent Reform Act being considered in the House right now that would prohibit multi-defendant cases where the defendants and their products are unrelated.

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I spent the last several days attending the 9th Annual Rocky Mountain IP & Technology Institute. In addition to two days of excellent continual legal education and meeting many interesting people, I also spoke with in-house counsel from Microsoft and Hewlett Packard about how to limit fees in intellectual property litigation (more on that panel soon). For those who are looking for some high quality continuing legal education, that is in a beautiful location, you should come to the 10th Annual Rocky Mountain IP & Technology Institute next June. It is one of the two best CLE programs I have ever attended.

One of the highlights of the Institute was a panel of sitting and retired federal judges sharing their views on intellectual property litigation, with a focus upon patent litigation. What follows is the beginning of the highlights. There was simply too much information to digest it in a single post. So, this post begins with the thoughts from Judge Philip Brimmer (D. Col.) and retired Judge James Rosenbaum (D. Minn.). In an upcoming post, I will provide the highlights of the thoughts from the two other panelists, Magistrate Judge Boland (D. Col.) and retired Judge McKelvie (D. Del.).

Hon. Philip Brimmer (D. Col.):

• Encourages pursuing motions to dismiss for failure to sufficiently plead patent claims, but if there is an easy amendment you should confer with plaintiff first.
   
• In a fairly technical case, Judge Brimmer values a technical presentation. And video is the best format because he can view it in chambers several times and let it sink in. Generally, each side submits a separate video. Occasionally, one is more polished, but that does not mean it is more instructive.
   
• Law clerks are the critical audience for briefs. They read, digest and analyze briefs all day.
   
• The trend is toward applying eBay v. MercExchange to all IP cases. The Second Circuit's recent Catcher in the Rye case, regarding Salinger's Catcher in the Rye copyright, highlights the trend. So, as a practitioner you should not be relying solely upon a presumption of irreparable harm.
   
• In Colorado, there is a bias against stays pending reexams because they delay cases.

Hon. James Rosenbaum (D. Minn. Ret.):

• It is not clear whether Iqbal & Twombly apply to answers and affirmative defenses. At least in D. Minn., there is a district split. Courts of appeal need to resolve the issue more clearly, or Federal Rules need to be adjusted.
   
• Markman was a case that went to trial and the court's opinion was post-trial. Having said that, the Markman process should be completed before summary judgment. Otherwise, it is difficult for parties to seek summary judgment without knowing the law of the case. Whether Markman should be early or late sees a split of opinion with religious fervor on both sides.
   
• He did not use technology tutorials. One of the "dirty secrets" of patent litigation is that most of the cases are not about the technology as much as accusations of lying, cheating & stealing. Even when technology was key to the case and complex, lawyers' explanation usually sufficed.
   
• Do not write at the page limits.
   
• Do not rely upon spell check alone.
   
• The problem of multi-defendant cases is not new to the federal judiciary, just to the patent bar. Judges have many tools to deal with multi-defendant cases -- bellwether trials, splitting defendants into groups based upon characteristics, etc.
   
• Remember that the vast majority of patent trials are quickly followed by an appeal. So, the trial is rarely an end.
   
• When thinking about IP litigation generally and settlement specifically, remember the perspective of the client who is running a business. Lawyers are almost always a cost-center and litigation creates big uncertainties. So, settlement is usually very valuable to clients.
   
• Hard to tell whether eBay v. MercExchange will be applied to IP cases outside the patent space. Believes that presumptions are now fairly uniformly suspect in the federal courts, e.g. the Uniloc case and the 25% rule of thumb.
   
• He was not a fan of ediscovery sanctions. Most lawyers have figured out how to do ediscovery. Virtually everything is in an electric form. The problem now is that everything continues to exist in digital form, which makes winnowing the information very cost and time intensive. There will occasionally be sanctions and spoliation cases, but the big issue is in whether cost-shifting is required for really burdensome discovery.
   

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The Seventh Circuit Electronic Discovery Pilot Program is sponsoring a free e-discovery webinar on April 6, 2011 from noon until 1:30 pm CDT.  This is the next in a series of e-discovery seminars sponsored by the local federal courts which have been excellent so far.  Participation is limited to 1,500.  So, sign up early -- click here to register.  Attendance for the past events has been impressive.  1.5 hours of MCLE credit have been applied for in Illinois, Indiana and Wisconsin.

Here are the details of the webinar from the Northern District's inviation:

What Everyone Should Know About the Mechanics of E-Discovery

April 6, 2011 - Noon - 1:30 p.m. (CDT)

Understanding the mechanics of electronic discovery is essential to your effectiveness in litigation and to fulfill your responsibility to your clients. The Seventh Circuit Electronic Discovery Pilot Program, together with Merrill Corporation, has developed a program designed to assist you in mastering the e-discovery challenges of today’s litigation and to help you manage the preservation, retrieval and production of ESI through the e-discovery process. You will gain information including:

• A basic understanding of the terminology unique to the realm of e-discovery.
   
• The meaning of preservation and how to achieve this crucial obligation in an evolving technological landscape.
   
• How to assess and manage the challenges of an e-discovery project.
   
• A foundational understanding to help you identify potential e-discovery pitfalls and potential problems.

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The annual Chicago IP Colloquium continues this Tuesday, February 22, 2011.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be this Tuesday, February 22 from 4:10 pm to 5:50 pm at Chicago-Kent Room 305 and will feature Professor Shyamkrishna Balganesh, University of Pennsylvania Law School discussing the paper:  "Hot News": The Enduring Myth of Property in News

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Heartland Angels, a Chicago based, early-stage private equity capital investment network, is sponsoring a new educational series on Intellectual Property in the 21st Century.

The first in the series will be a panel discussion on February 7, 2011, starting at 6:30pm in the Chicago offices of Drinker, Biddle and Reath LLP,  191 N. Wacker Drive, Suite 3700.  The panel will consider answers to the question:  Are the copyright laws out of touch in the new reality of digital on-line media?

Panelists include:

David Frey, J.D, Partner, Drinker, Biddle and Reath LLP

Ed Lee, J. D., Professor, Chicago-Kent College of Law

Daliah Saper, J.D., Saper Law

Tim McCarthy, J.D., Senior Counsel of Clark Hill (Moderator)

Space is limited and pre-registration is required. Registration and inquiries by e-mail only to: Ron@heartlandangels.com. There will be a $10 charge (payable by cash or check only) at the door.

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On October 29 from 7:30 until 9:15 am at the Gleacher Center in Chicago, Analysis Group is hosting a free seminar about the entire market value rule that looks very interestin.  Here is how they describe it:

The entire market value rule (or "EMVR") allows for the recovery of patent infringement damages based on the value of the entire product that contains an infringing component (when the patent-related feature is the basis for consumer demand). It has historically been a potent tool for patentholders claiming damages in intellectual property cases. However, increased scrutiny of the application of the EMVR suggests that more rigorous, empirical approaches are needed to provide adequately detailed evidence of consumer-driven demand. In this seminar:

David C. Giardina, Esq., Partner at Sidley Austin LLP, will address the impact recent cases such as Lucent Technologies v. Gateway Inc. may have on future damages claims and analytic requirements by the courts.

Iain M. Cockburn, Ph.D., George Schultz Professor of Economics, The University of Chicago Booth School of Business; Dean Designate, Yale School of Management, will discuss hedonic analysis, a method that uses actual product, price, and sales data, to evaluate consumer demand.

John R. Hauser, Sc.D., Professor of Marketing and Head of the Management Science Area of MIT Sloan School of Management, will focus on the use of conjoint analysis, a survey methodology that can be employed in the absence of sufficient market data, to assess consumer preferences.

Click here to register for the seminar.

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The Intellectual Property Law Association of Chicago will be holding its annual Patent Law Symposium October 1, 2010 beginning at 8:45 am at the Union League Club of Chicago.  Presentations and panels include:

• Life Under the N.D. of Illinois Local Patent Rules and Jury Instructions -- Northern District of Illinois Chief Judge, Presiding Magistrate Judge Sidney Schenkier and Allan Sternstein of Dykema Gossett

• Recent Developments In IP Law:  The Year In Review -- Edward Manzo of Husch Blackwell

• Mock Inventor Deposition  -- Timothy Delaney of Brinks Hofer Gilson & Lione and Paul Vickrey of Niro, Haller & Niro

• Best Practices:  Attorney-Client Privilege and Ethical Considerations in IP Transactions -- Glen Belvis of Foroenergy

• Reexamination:  Ex Parte and Inter Partes -- Janet Garetto of Nixon Peabody (moderator), Joseph Berghammer of Banner & Witcoff and Jessica Harrison, PTO's Central Reexamination Unit

• Patent Damages -- Garret Leach of Kirkland & Ellis and Raymond Sims, Vice-President of CRA International

• Common Mistakes in Briefs and Arguments before the Federal Circuit and How to Avoid Them -- Olivia Luk of Jenner & Block (moderator), the Federal Circuit's Chief Judge Randall Rader, John Whealan, Dean at the George Washington University Law School, and Emily Johnson, Federal Circuit Law Clerk

The Symposium schedule is here.  A cocktail reception will take place following the Symposium.  Register here, $275 for members and $425 for non-members.  Following the program, IPLAC will host its annual judges dinner with keynote speech by Judge Rader.  Click here for registration information cost for members and non-members is $150.

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At the end of September, September 26-29, the Licensing Executives Society is hosting its annual meeting in Chicago at the Sheraton Hotel & Towers.  The meeting, themed "Deals, Deals and more Deals" will focus upon IP's critical role in business strategies and ways to use IP to maximize deals and profitability.  There are an impressive array of presentations and workshops, headlined by the following very impressive plenary sessions, as described by the Society:

• The SuperFreakonomics of IP Licensing – Do Patents Slow Innovation? - Steven Levitt, co-author of the New York Times best-seller Freakonomics and its recent follow-up SuperFreakonomics, will present a keynote address on the unintended impact of the patent system on innovation. He will also discuss his groundbreaking research on the effects of incentives on economics and market behavior as they relate to innovation. A book signing will follow Mr. Levitt’s presentation.
   
• Is the U.S. Patent System Under Siege: Congress, the PTO, the FTC and the Supreme Court -The Honorable Judge Paul Michel, retired Chief Judge of the United States Court of Appeals for the Federal Circuit will look at the many challenges facing the U.S. patent system including the reform legislation currently pending in Congress, the USPTO’s efforts to reduce backlogs and improve the quality of issued patents, and increased scrutiny by the Supreme Court and FTC.
   
• IP as a National Responsibility: A Global Outlook for Strategies, Policies and Laws - Economist and Former Vice Presidential Candidate Pat Choate, will join John Whealan, Associate Dean of Intellectual Property Law at George Washington University Law School and Suzanne Michel, Deputy Director of FTC’s Office of Policy Planning to discuss how the United States, Europe, Asia and developing countries might leverage IP to secure future wealth and what this could mean for commercial collaboration across national boundaries.
   
• IP100 Recap: IP Hot Topics 2010 - Over the course of 2010, LES has hosted innovative IP100 forums comprised of high-level IP leaders who have analyzed several hot IP topics. This panel will revisit the topics, review previous findings and discuss what we’ve learned from the world-class IP100 panels about best practices in licensing. Key ‘take-aways’ will be included in a white paper available after the meeting for attendees.

Click here for registration information.  I plan to attend, and hope to see you there.

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Chicago Kent has an excellent program coming up on September 30, 2010 at 1:00pm. Kent has gathered a very impressive group of experts to kick off its inaugural Supreme Court Intellectual Property Review. The Northern District's own Judge Zagel will be a featured speaker.

The program promises to address the big IP decisions from last year's Supreme Court: American Needle, Inc. v. NFL, Bilski v. Kappos, and Reed Elsevier, Inc. v. Muchnick. The event will also look at significant IP cases that await certiorari decisions, including Costco v. Omega, S.A., and Schwarzenegger v. Entertainment Merchants Ass’n.

In addition to Judge Zagel, the impressive panel includes:

• Donald Chisum, author of Chisum on Patents, Patent Law Digest and Chisum Patent Law Reference Guides;
• Roy T. Englert, Jr., of Robbins, Russell, Englert, Orseck, Untereiner & Sauber LLP (counsel for Costco);
• Randal C. Picker, Paul H. and Theo Leffmann Professor of Commercial Law at the University of Chicago Law School; and
• Paul M. Smith of Jenner & Block LLP (counsel for Entertainment Merchants Association and Entertainment Software Association).

Other speakers include: 

• Thomas C. Goldstein of Akin Gump Strauss Hauer & Feld LLP and publisher of SCOTUSblog;
• Deborah Jones Merritt, John Deaver Drinko-Baker & Hostetler Chair in Law at Moritz College of Law, Ohio State University (court-appointed amicus in Reed Elsevier);
• Jeffrey M. Carey, general counsel of American Needle, Inc.; and
• Scott E. Gant of Boies, Schiller & Flexner LLP.

The program is free of charge, but requires registration. Contact Patricia O’Neal at (312) 906-5128 or ipconference@kentlaw.edu for registration or more information.

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The Corporate Intellectual Property Law Conference is being held in Chicago on May 25, 2010.  The conference promises to address a number of topics, including a patent law update led by the Northern District of Illinois's Chief Judge James Holderman.  Other intellectual property-related topics include:

• General Session -- A discussion of conflicts and ethical challenges facing management and outside counsel;
   
• "Unfair" patent marking: The law may be changing, but has management learned its valuable lesson?
   
• Managing IP assets, patent enforcement & damages, and the Patent Reform Act of 2010.

Click here for more information about the conference. The registration fee is $109, but only $89 if you register before May 10, 2010.  Click here to register.

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The 2010 Chicago IP Colloquium concludes next Tuesday, April 27, 2010.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The last session will be Tuesday, April 27 from 4:10 pm to 5:50 pm at Loyola, 1 E. Pearson, Maguire Hall, Room 260, Professor Wendy J. Gordon, Boston University School of Law, will present her paper: A Tale of Two Torts: Negligence and Copyright Infringement.

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The Seventh Circuit's Electronic Discovery Committee is offering what appears to be an excellent CLE program, with one hour of Illinois credit, discussing when and how lawyers should communicate with their clients about e-discovery issues.  Click here to register for the April 28, 2010 noon CT webinar.  Here is the Committee's description of the program:

“You and Your Clients: Communicating About E-Discovery, How to Talk to Your Clients about E-Discovery and the Application of the Seventh Circuit E-Discovery Principles” should not be missed. It will provide an in-depth discussion regarding the following topics:

• When should communications regarding ESI begin with your client;
  
• What are the categories of discoverable ESI you need to discuss;
  
• How do you help your client assess where discoverable ESI might be stored;
  
• What steps should be taken to preserve relevant ESI;          
  
• When (and if) backup tapes should be considered an ESI source that needs to be preserved/disclosed/produced;
  
• How vendors can be used effectively in the collection/processing/production of ESI;
  
• Practical approaches for the production of ESI; and
  
• When to use and how to select an electronic discovery liaison.

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The annual Chicago IP Colloquium continues next Tuesday, April 12, 2010.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be Tuesday, April 12 from 4:10 pm to 5:50 pm at Chicago-Kent College of Law, Room 305, Professor Gregory N. Mandel, Temple University, will present his paper: Competing Conceptions of Creativity in Intellectual Property Law.

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The annual Chicago IP Colloquium continues this Tuesday, March 30, 2010.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be Tuesday, March 30 from 4:10 pm to 5:50 pm at Loyola, 1 E. Pearson, Maguire Hall, Room 260, featuring Professor Amy Kapczynski, UC Berkeley School of Law and her paper: Free as in Speech or Free as in Beer? How Cost Matters in IP Law.

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I am speaking tomorrow, March 25, at Chicago's Community Media Workshop on the Legal Ramifications of Blogging.  The topic tends to spark intense interest and lots of questions, so I expect a lively seminar.  If you are interested, sign up here and I will post slides and thoughts from the conference in the next few weeks.

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This Tuesday, March 23 at noon central, I am presenting a CLE program to the Chicago Bar Association's Intellectual Property Law Committee about the Local Patent Rules.  If you read the Blog regularly, you have read a lot of my thoughts on the new Rules.  The presentation Tuesday will spend some time on the logistics of the Rules, but will focus far more heavily on how to use the Rules in practice both offensively and defensively.  The event is being held at the CBA's building, 321 S. Plymouth Court, and lunch will be served.

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The annual Chicago IP Colloquium continues this Tuesday, March 9, 2010.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be Tuesday, March 9 from 4:10 pm to 5:50 pm at Chicago-Kent Room 305 and will feature Professor Oren Bracha, The University of Texas School of Law, discussing Motion Pictures: The Development of Modern American Copyright and the Film Industry.

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On March 8, I will be speaking at the Publishing Business Conference & Expo in New York City with Camille Miller of Cozen O'Connor.  Our panel is titled Online Legal-ease: Fair Use, Copyright and Content Aggregation Issues in the Digital Age, and here is the program description:

With the advent of digital publishing, social networking and user-generated content, publishers are faced with a litany of new legal issues to consider. A pair of legal experts will arm you with strategies to protect yourself -- and your content -- in this increasingly litigious age.

We have a lot to cover in a one hour program, so it promises to be a lively discussion.  If you are interested in attending the premier conference for book and magazine publishers click here for registration information.

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Wednesday, February 17, 2010 at noon central, Law.com is hosting an in-depth webinar discussion of the Seventh Circuit's new Principles Relating to the Discovery of Electronically Stored Information – click here for registration information. The Principles are designed to streamline discovery and resolve e-discovery disputes by, among other things, incentivizing early and informal information exchange on common issues. The Principles also identify formats of e-discovery that are generally not required to be preserved in order to reduce fights and costs. For more on the Principles, click here.  In October 2009, the Seventh Circuit initiated Phase One of its E-Discovery Pilot Program across the Seventh Circuit's district courts, with a special emphasis on the Northern District of Illinois. In Phase One, the Principles are being applied to 80 selected cases during Phase One. 

The panelists for the webinar include:

• Chief Judge Holderman;
  
• Magistrate Judge Nolan;
  
• Thomas Lidbury, Mayer Brown; and
  
• Alexandra Buck, Senior Counsel and Director of E-Discovery and Records Management at Abbott Laboratories.   

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The annual Chicago IP Colloquium continues this Tuesday, February 9, 2010.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be Tuesday, February 9 from 4:10 pm to 5:50 pm at Loyola and will feature Professor Jeanne C. Fromer, Fordham University School of Law, discussing her paper District Courts as Patent Laboratories.

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The annual Chicago IP Colloquium returns this Tuesday, January 26, 2010.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The first session of 2010 will be Tuesday, January 26 from 4:10 pm to 5:50 pm in Room 305 at Chicago-Kent and will feature Professor Peter C. DiCola, Northwestern University School of Law,  discussing his paper: Sequential Musical Creation and Sample Licensing.

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On March 8, I will be speaking at the Publishing Business Conference & Expo in New York City with Camille Miller of Cozen O'Connor.  Our panel is titled Online Legal-ease: Fair Use, Copyright and Content Aggregation Issues in the Digital Age, and here is the program description:

With the advent of digital publishing, social networking and user-generated content, publishers are faced with a litany of new legal issues to consider. A pair of legal experts will arm you with strategies to protect yourself -- and your content -- in this increasingly litigious age.

We have a lot to cover in a one hour program, so it promises to be a lively discussion.  If you are interested in attending the premier conference for book and magazine publishers click here for registration information.

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Tomorrow, January 12, at noon, I will be participating in a panel discussion of the Bilski case as we await the Supreme Court's decision that could significantly change patentability of business method and potentially software patents.  Here is Northwestern's description of the panel:

Currently pending in the Supreme Court, the Bilski case stands to redefine the boundaries of what is patentable and has captured the attention of major software and technology giants like Microsoft and Google.  Practicing IP attorneys will discuss the potential ramifications of this case on patent law and the issues presented by patenting abstract business practices and innovations.
 

Joining me on the panel will be:
 

• Andrea Augustine from Foley & Lardner; and
   
• Thomas Donovan from Barnes & Thornburg.

The panel is open to the public, so please join us January 12 at noon in Northwestern Law's Room RB140.

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DePaul Law is hosting an impressive CLE program (11 hours of credit) this Thursday and Friday, October 15-16 at its downtown Chicago campus titled Cyberlaw 2.1: Legal Challenges of an Evolving Internet. The panels are largely academic and very impressive. Here is how DePaul describes the program:

[The conference] contemplates the changing role of the internet in society. These developments bring, as technological advances often do, both opportunities and risks.   Correspondingly, cyberlaw doctrine now confronts challenges resulting from the increasing importance of social networking applications and cloud computing, the drive toward "personalization" of search, advertising, and other internet experiences, and, as life is lived more and more online, the related threats to private life caused by the potential to store more and more complete records of individuals' experiences. Our speakers will explore the ways in which Web 2.0 and beyond affects a wide spectrum of legal issues, ranging from privacy and freedom of expression through intellectual property.

In connection with the program, DePaul is also hosting the 12^th Annual Niro Distinguished Intellectual Property Lecture and Luncheon. The speaker will be Stanford's Mark Lemley presenting his paper, "Irrelevant Confusion." Click here to register and here for more information on either program. 

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Next Tuesday, September 29, at noon central, Adrian Dayton and I are giving an ALI-ABA audio seminar titled:  IP Issues in Social Media.  Dayton and I will discuss the growing importance of social media for businesses and look at strategies for protecting and promoting your brands with a focus on social media sites such as Twitter.  Click here to register for the program.  I hope to "see" you there.

Here is more detail about the program from ALI-ABA:

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Next week, June 21-23, Chicago plays host to IAM's IP Business Congress 2009.  IAM promises that attendees will include "Chief IP Officers from Fortune 500 companies, heads of IP at other major companies, global IP thought leaders and senior policy makers."  And the conference also will include an impressive list of bloggers, including Peter Zura, the anonymous editor of Blawg Review and me, using a generously offered press pass.  The faculty for the event is very impressive, including the following confirmed speakers:

• Marshall Phelps, Corporate VP for IP Policy and Strategy, Microsoft
• Ruud Peters, CEO, Philips IP & Standards
• Carl Horton, Chief IP Counsel, GE
• Scott Frank, President and CEO, AT&T Intellectual Property
• Todd Dickinson, Executive Director, AIPLA
• Ciarán McGinley, Head of the Controlling Office, European Patent Office
• Beatrix de Russé, Executive VP of IP and Licensing, Thomson
• Keith Bergelt, CEO, Open Invention Network
• Sherry Knowles, Senior VP and Chief IP Counsel, GlaxoSmithKline
• Marcella Watkins, Managing Counsel, IP, Shell Oil Company
• Don Merino, General Manager Acquisitions, Intellectual Ventures
• Damon Matteo, Chief IP Officer and VP IP, Palo Alto Research Center

For more information on the event and to register, click here.  You can still register and if you register online using the code WC10, you will get a reduced rate of $1,350, 10% off of the full $1,500 rate.

Finally, whether or not you can make it to the conference, if you are in Chicago Tuesday night, June 23, come to Meet the Bloggers VI at the world famous Billy Goat Tavern.  It will be a great chance to meet law bloggers from Chicago and around the world, and to discuss insights gained at the conference.  I hope to see you at both the conference and the Billy Goat.

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Today, May 5 from 12:00 until 1:30, the Intellectual Property Law Association of Chicago is hosting a seminar about the Northern District of Illinois's proposed Local Patent Rules.  Click here for my earlier post discussing the highlights and background of the Rules, as well as a link to the Rules themselves.  The seminar will be held in the Chief Judge Holderman's courtroom, 2541.  To register for the event, email Alicia Diaz.

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Next week, May 1, John Marshall is hosting a Law Day IP legal ethics program:  Ethics in the Practice of Intellectual Property Law.  The program offers four hours of ethics credits (the same amount of ethics credits required by Illinois in every two year reporting period).  The program looks excellent and appears to be free.  Click here for more information.

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The next edition of the Chicago IP Colloquium will be hosted by Chicago-Kent tomorrow, April 7, in Room 305.  The presenter will be Professor Lisa Ramsey, of the University of San Diego School of Law.  Professor Ramsey will discuss her paper, Free Speech and International Obligations to Protect Trademarks.

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The latest installment of the Chicago IP Colloquium is this afternoon, March 24.  Loyola is hosting
Professor David Adelman from the University of Arizona Law School discussing his paper, Beyond Patents: Mitigating the Impact of the Health Care Crisis on Drug Development.

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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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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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This Thursday, November 20 at noon central time, I am presenting a one hour program audio conference on drafting and negotiating effective settlements.  The program is not IP-specific, but will be very useful for IP lawyers and litigants, as well as general commercial litigators.  I will focus on knowing your needs and those of your opponents, using relationship building to create an effective agreement built for long-term success, and tips for writing long-lasting, realistic agreements that fit the needs of the parties and the realities of their business operations.  Click here to read more about the presentation, and here to register for it.  The program's costs $199, although I understand you can invite as many people from your firm as you would like to participate on the call.

The program is being put on by the National Constitution Center, which hosts a regular series of CLE programs.  For example, on Tuesday, November 25, the NCC is hosting a program entitled IP Issues In Business Transactions: What Every Lawyer Needs To Know.  That program will be presented by Brian Kelly, a California-based IP licensing partner of Manatt, Phelps & Phillips.
 

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Here are several Chicago-area, or close, continuing legal education programs worth your time if you are looking for CLE credit:

• Northwestern's Law School is hosting an Advocacy and Ethics Film Series.*  There are three sessions, each built around a classic legal movie, offering 1.5 ethics credits (everyone needs ethics credits) per session.  Once you sign up, they mail you a DVD of the movie, watch it before the session and then discuss it with a distinguished Northwestern professor, over popcorn.  Each session costs $175 ($500 for all three) with early registration, or $225 ($600 for all three) after the deadline.  This looks like a great CLE series, but I have to question the decision not to include my favorite legal movie, Anatomy of a Murder.  Maybe they are saving it for the 2009 series.  Here is the information for each session:
  
  
  • To Kill a Mockingbird, presented by Steve Lubet – October 3, 5:30–6:30 p.m. Registration and popcorn: 5:00 p.m.
     
  •  12 Angry Men, presented by Bob Burns – October 22, 5:30–6:30 p.m. Registration and popcorn: 5:00 p.m.
     
  • Judgment at Nuremberg, presented by David Scheffer – November 13, 5:30–6:30 p.m. Registration and popcorn: 5:00 p.m.
     
• Notre Dame's Law School is offering CLE programs on home football Saturdays this year.  Each session includes a continental breakfast, two hours of CLE programming before the game and the opportunity to buy tickets for the day's game (tickets must be picked up at the CLE session).  The only session still open is Syracuse on November 22, could be a bit chilly.  But Domers should keep their eyes open for next year.  Great excuse to get to a game.
   
• On September 23, Loyola University is hosting Attorney General Lisa Madigan speaking as part of the Albert Schweitzer Fellows for Life Lecture Series.  The title of Madigan's presentation is, Leadership by Example:  Idealists Creating Change.  No CLE credit for this one, but it looks very interesting.  It is free, but RSVPs are recommended  to either rsvp@hmprg.org or 312.372.4292 ext. 24.

*  Hat tip to Fastcase for pointing me to the the Advocacy and Ethics Film Series.

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On Tuesday, September 16 the John Marshall Law School is putting on an impressive conference looking at the legacy of the Federal Circuit's Chief Judge Markey.  For those that never had the opportunity to know or experience Judge Markey, here is part of Judge Michel's tribute to Judge Markey in the Legal Times after he passed in 2006:

Leadership for Howard Markey began with setting a vigorous example. He simply heard more appeals, wrote more opinions, gave more speeches, drafted more articles, taught more law school classes, and judged more moot courts than any other member of the court. And he did so despite all his administrative duties. Meanwhile, he chaired both the board of directors of the American Inns of Court and the Committee on Codes of Conduct of the Judicial Conference of the United States. He traveled constantly and sat with every regional circuit court, the first and only judge to do so.
 

Despite a life in overdrive, he was the happiest and funniest man I ever met, routinely reeling off five or six successive jokes without pausing to recollect, or even to breathe. Family members report that he had a perfect memory, an asset especially helpful to a tireless storyteller, which he was.

(Click here for a link to the article and more on Judge Markey). If Judge Michel's description of Markey is not enough to get you to the event, Supreme Court Justice Antonin Scalia will be giving the keynote address.  I have had the privilege of hearing Justice Scalia speak a couple of times.  He is an excellent speaker and should not be missed. 

Click here for John Marshall's conference brochure and here for Patent Docs' description of the event, they are a seminar sponsor.  The registration deadline is this Friday, September 12.  I hope to see you there.

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On Wednesday, August 13 at noon CT, I am giving a teleseminar with Evan Brown (a fellow Chicagoan who writes the insightful Internet Cases blog) and Professor Eric Goldman (who writes the excellent Technology & Marketing Law Blog) discussing the current state of the Communication Decency Act's Good Samaritan clause.  The seminar will focus on, among other things, the Roommates decision in the Ninth Circuit -- click here for Goldman's posts on the case -- and the Craigslist decision from the Seventh Circuit (upholding a Judge St. Eve opinion) -- click here for the Blog's posts about that case and here for Brown's posts. 

Click here for ALI-ABA's web brochure about the seminar.  It promises to be an interesting discussion with lively debate.  And ALI-ABA has generously offered a $30 discount off of the seminar's $149 cost for Blog readers that use this code:  TSPV02DD.

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Counsel on Call is putting on a two hour seminar next Wednesday, June 25, titled “Were You Born to Blog?”  It is being held in Counsel on Call's office at  from 3:00-5:00 pm. 

The panelists are three (relatively) local bloggers with great credentials:

• Mark Herrmann of Jones Day and the Drug & Device Law Blog;
  
• Patrick Lamb of the Valorem Law Group and the In Search of Perfect Client Service blog; and
  
• John Wallbillich of  Lexvista Partners and the Wired GC.

According to Wallbillich, they will "pull the veil back a bit and give a real-world view of why legal blogging matters, where it is going and how it can be used by firms and in-house law departments to foster service delivery and collaboration."  These guys are each excellent bloggers.  I have no doubt the program will be well worth the time.  And although I am already sold on the value of blogging, I will try to attend.

Program and registration information is here.

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As promised earlier this week, click here for the slides from my Northern District of Illinois Cyberlaw Trends presentation to the Chicago Bar Association's Cyberlaw & Data Privacy Committee last Tuesday.  It was a very interactive presentation, so the slides cannot convey the full content of the presentation, but I think you will still find them useful.  Here is an overview of the ten trends I discussed:

1. Downloading music has consequences
    
2. Copyright infringement can lead to jail time
   
3. Dot com’s are favorite defendants
   
4. Non-practicing entities are a major force
   
5. Keywords and thumbnails
   
6. Virtual world – Real litigation
   
7. Website content
   
8. Old world content – New world tracking
   
9. CLC v. Craigslist  -- Communications Decency Act
   
10. Electronic Discovery

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I will be speaking with the Chicago Bar Association's Cyberlaw & Data Privacy Committee tomorrow, Tuesday, February 19 at noon.  My presentation is titled:  “Northern District of Illinois Cyberlaw Trends."  If you are in Chicago tomorrow, please join us.  The event is being held at the Chicago Bar Association building, 321 S. Plymouth.  If you cannot make it, I will post the slides later this week and I understand that the Chicago Bar Association will post it as a podcast.  It will not be the same as what I hope will be a highly interactive presentation, but I will post the slides later this week and a link to the podcast when it is available.

Thanks again to Evan Brown and his Internet Cases blog for the opportunity.

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Tomorrow, Wednesday, September 18, from 3:00 - 4:00 PM, the Chicago-Kent College of Law is hosting its fourth annual Federal Circuit Roundtable.  The Roundtable, composed of former Federal Circuit law clerks, will address the topic, "MedImmune and SanDisk:  Seeking a License Without Getting a Lawsuit."  The scheduled participants are:

• Laura L. Donoghue, Sidley Austin;
  
• Lisa A. Schneider, Sidley Austin;
  
• Jonathan R. Spivey, Foley & Lardner, 
  
• Meredith Martin Addy, Brinks Hofer Gilson & Lione;
  
• Laura A. Lydigsen, Brinks Hofer Gilson & Lione;
  
• Leonard D. Conapinski, McDermott Will & Emory;
  
• Sasha D. Mayergoyz, Latham & Watkins;
  
• David C. McKone, Latham & Watkins;
  
• Michael R. Weiner, Marshall, Gerstein & Borun; and
  
• Michelle Armond, Marshall, Gerstein & Borun. 

The Roundtable will be moderated by Chicago-Kent Professor Timothy R. Holbrook. 

I will not be able to attend this year's event because I am teaching an IP course at Loyola on Wednesday afternoons, but I can vouch for the program.  It is an hour of excellent insight from former Federal Circuit clerks.  Also, in the interest of full disclosure, my wife (Laura Donoghue) is a roundtable participant.  So, I am biased, but it is still an excellent program.

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Tomorrow afternoon the last installment of the Chicago IP Colloquium will feature Professor Pamela Samuelson of the University of California, Berkeley, School of Law
discussing her paper:  What Section 102(b) Excludes from Copyright Protection and Why.  The event will start at 4:10 PM in Loyola's Rubloff Reception Room.

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Tomorrow afternoon the latest installment of the Chicago IP Colloquium will feature Professor James Thuo Gathii of the Albany Law School discussing his paper:  What History Teaches Us About International Protection of Intellectual Property Rights: The Case of Least Developed Countries.  The event will start at 4:10 PM in Room 305 at Kent.

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This afternoon is the second installment of the 2007 Chicago IP Colloquium.  Professor Margaret Chon of the Seattle University School of Law will be discussing her paper Intellectual Property "from Below": Copyright and Capability for Education,  starting at 4:00 4:00 in the Rubloff Reception Room at Loyola (25 E. Pearson).  It should be a great presentation.

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Don't forget that tomorrow is the first day of the 2007 Chicago IP Colloquium.  Professor Glynn Lunney of Tulane University Law School will be discussing Copyright as a Coordinating Mechanism starting at 4:10 in Room 305 of the Kent Law School.  It should be a great presentation.

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Chicago-Kent College of Law and Loyola University Chicago School of Law  (where I previously served as an Adjunct Professor of Legal Writing) are jointly sponsoring and hosting the Chicago Intellectual Property Colloquium.  The Colloquium brings six nationally renowned IP scholars to Chicago to discuss their current IP research. The presentations look very interesting.  They start January 30th and run through April on Tuesday afternoons (schedule after the jump).  Each lasts just under two hours and they rotate between Kent and Loyola.  

Attendance is by invitation only.  If you would like an invitation, contact Patricia O'Neal at Kent -- poneal@kentlaw.edu.  I will be attending as many as I can and blogging about them afterward.  If you see me, please say "hello."

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The Chicago-Kent College of Law is hosting two seminars in the upcoming weeks that IP practitioners will find very useful.  On this Thursday, October 26, from 9:00 AM - 12:00 PM, the school is hosting a seminar entitled, "Copyright at the World Intellectual Property Organization: An Update."
At the seminar key World Intellectual Property Organization officials will update you on pending and emerging international copyright issues, and will address the challenges facing WIPO and international copyright policymakers.  Please note, prior registration is preferred and can be accomplished by email or fax.

On Wednesday, November 1st, from 3:00 - 4:00 PM, the Chicago-Kent College of Law is hosting its third annual Federal Circuit Roundtable.  The Roundtable, composed of former Federal Circuit law clerks, will address the topic, "Not So Obvious: Patent Law, the Supreme Court, and KSR International." The scheduled participants are Meredith Martin Addy, Brinks Hofer Gilson & Lione, Leonard D. Conapinski, McAndrews, Held & Malloy, Ltd., Sasha D. Mayergoyz, Latham & Watkins LLP, and Michael R. Weiner, Marshall, Gerstein & Borun LLP.  The Roundtable will be moderated by Chicago-Kent Professor Timothy R. Holbrook.  The Roundtable is free and registration is not required.  Because my wife, Laura L. Donoghue, former law clerk for the Hon. Timothy B. Dyk, has spoken at prior Roundtables, I can vouch for this as an excellent event that is worth a few hours out of your Wednesday afternoon.

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