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Category Archives: Legal Seminars

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CLE: Loyola University Program on Patents, Innovation & Freedom to Use Ideas

By R. David Donoghue on Posted in Legal Seminars, Uncategorized

On Thursday, April 11 at Loyola University Law School, the Loyola University Chicago Law Journal is putting on a program called:  Patents, Innovation & Freedom to Use Ideas.  Click here for the program brochure.  The program has an interesting mix of theoretical and practical discussions.  Among the more interesting topics are:

  • Chief Judge Holderman discussing Innovations to Improve Juror Understanding in Patent Trials
  • Emory University’s Professor Timothy Holbrook (a former Chicagoan), Boston University’s Professor Michael Mueur (who has written interesting articles regarding the costs of NPE suits); and University of San Diego Professor Ted Sichelman discussing Shortcomings in the Patent System.

This looks like an excellent program.

CLE: 7th Circuit on Social Media Discovery

By R. David Donoghue on Posted in Legal Seminars
The Seventh Circuit Electronic Discovery Pilot Project and Seyfarth Shaw LLP are offering a free webinar (register here) on the discovery of social media April 5 from 12:00 – 1:15 central.  The program will focus on the particular issues with discovery of social media including:
  • The discoverability of social media
  • The preservation duty as it applies to this data
  • Methods of and limitations of discovery of social media
  • Overview of technical tools that assist with the preservation and collection of social media
One CLE credit is available for Illinois.

Rocky Mountain IP Institute: Writing Agreements to Avoid IP Litigation

By R. David Donoghue on Posted in Legal Seminars

I recently attended and spoke at the Rocky Mountain IP Institute in Denver.  It was the second year in a row I have attended and spoken at the Institute.  In my opinion, the Rocky Mountain IP Institute is one of the two best IP CLE events (and destinations) in the country.  As evidence of that, the following is one of a series of posts from the excellent presentations over the two days of the conference.  I encourage you to consider joining me at next year’s Rocky Mountain IP Institute. 

This post (cross-posted from my Retail Patent Litigation Blog) focuses upon a presentation by Steve DuPont of Gross Hartman and William Leone of Fulbright & Jaworski looking at how to write agreements to avoid IP disputes.  In my experience this is something that every entity is focused on either expressly or implicitly.  Here are some of the key takeaways:

  •  Focus on precise, thoughtful definitions.
  • Avoid puzzles.  Stay away from complicated, nested provisions and multiple references back to other sections.
  • Often it is the drafting party that wants to enforce their contract.  And often they have written an overly complex contract.  But the more complex the contract, the harder the story is to tell to the judge and jury.
  • Of course, a licensee defending against a breach claim may want a very complex agreement as it will be confusing and/or is more likely to have a variety of arguments to avoid the agreement provisions.
  • Do not neglect your integration clause.  Integration clauses are not just boilerplate.  They are critical to make sure that the written contract is the only representation of the parties’ agreement.  Integration clauses are the best way to avoid parties bringing promises, sales conversations and email exchanges into the agreement.
  • Consider bringing in a litigator to review agreements early.  Even if a litigator does not review the agreement before it is executed, bring a litigator in as a dispute arises not after you have gone back and forth multiple times with the opponent in letters or emails.

 

Rocky Mountain IP Institute: Should you get an Opinion Letter for Indirect Infringement?

By R. David Donoghue on Posted in Legal Seminars

I recently attended and spoke at the Rocky Mountain IP Institute in Denver.  It was the second year in a row I have attended and spoken at the Institute.  In my opinion, the Rocky Mountain IP Institute is one of the two best IP CLE events (and destinations) in the country.  As evidence of that, the following is one of a series of posts from the excellent presentations over the two days of the conference.  I encourage you to consider joining me at next year’s Rocky Mountain IP Institute. 

This post (cross-posted from my Retail Patent Litigation Blog) discusses Heidi Keefe of Cooley’s presentation regarding the state of indirect infringement law.  Here are the key points:

  • Indirect infringement includes inducement and contributory and is the codification of pre-1952 case law.
  • Indirect infringement requires intent and was created to prevent a party from knowingly acting and avoiding direct infringement by carving out one or two elements for another to perform.
  • Inducement requires that the accused intended for the end user to infringe.
    • Accused has to have had knowledge in the form of actual knowledge or willful blindness that the end user would be infringing.
    • Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) rejected the Federal Circuit’s “deliberate indifference” test for knowledge, in favor of willful blindness drawn from criminal law.  It is an open question whether willful blindness applies to contributory infringement.  Willful blindness was found where defendant’s freedom to operate opinion was procured without providing opinion counsel key patent information.
  • Contributory infringement requires knowing the product is “especially made or especially adapted” for infringement.
    • As with inducement, there must be (at least) a single, direct infringement.
    • The component cannot have any substantial, noninfringing use.
    • Knowledge of the patent and that the component is especially made or adapted for infringement.
  • Pleading indirect infringement
    • Twombly/Iqbal generally require additional pleading for the intent element of either indirect infringement claim.
    • Inducement – Must plead sufficient facts to plausibly infer the specific intent to induce the infringing acts (knowledge of the patent and of the infringing acts may be enough).
    • Contributory – Must plead sufficient facts to infer there are no substantial noninfringing uses, as well as knowledge of the patents.
    • Trading Tech. Int’l, Inc. v. BCG Partners, Inc., No. 10 C 715, 2011 WL 3946581 (N.D. Ill. Sep. 2, 2011) intent was sufficiently shown where defendants allegedly advertised their products and taught their customers how to commit the allegedly infringing acts.
    • Some case law in Delaware suggests that accusations in a complaint regarding expected continued infringement after the complaint creates knowledge of the patents could be sufficient.
    • McRee v. Goldman, No. 11 CV 991, 2012 WL 929825 (N.D. Cal. Mar. 19, 2012) indirect infringement claims dismissed without prejudice because all of the allegedly knowing acts pre-dated the alleged knowledge of the patent in suit.
  • Should you get an opinion letter to protect against inducement?
    • Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir. 2008) held that failure to secure an opinion “may be probative of intent in this context.”  But that potential inference appears to have been abrogated by the America Invents Act (“AIA”).  Of course, the opinion letter is a powerful story for a jury.
    • Global-Tech Appliances, Inc. v. SEB, S.A., 131 S. Ct. 2060 (2011) had a similar holding.
    • The AIA seems to abrogate the holdings in Broadcom and Global-Tech with clear language.  But the legislative history of the AIA says that it was codifying law, which should have included Broadcom and Global-Tech.  So, there is some tension between the clear language of the statute and its legislative intent.
  • Best practices when deciding whether to get an opinion letter for indirect infringement:
    • Look at the cost/benefit analysis.  The opinion can be valuable before a jury, but also costly.  So, more likely to get them in important or close cases.
    • There is little value in post-filing opinion letters.
  • Best practices for avoiding indirect infringement:
    • Teach non-infringing uses
    • Teach multiple uses
    • Tell users that how they use a device is up to them

 

Rocky Mountain IP Institute: Reasonable Royalty Law Update

By R. David Donoghue on Posted in Legal Seminars

I recently attended and spoke at the Rocky Mountain IP Institute in Denver.  It was the second year in a row I have attended and spoken at the Institute.  In my opinion, the Rocky Mountain IP Institute is one of the two best IP CLE events (and destinations) in the country.  As evidence of that, the following is one of a series of posts from the excellent presentations over the two days of the conference.  I encourage you to consider joining me at next year’s Rocky Mountain IP Institute. 

This post (cross-posted from my Retail Patent Litigation Blog) focuses upon a presentation regarding the state of patent damages law and specifically reasonable royalty analysis by Mark Pedigo of Crowe Horwath and Lee Johnston of Dorsey & Whitney.  As you are likely aware, a patentee with a valid and enforceable patent that is found to have been infringed is due damages in the amount of no less than a reasonable royalty.  Here are the highlights of the presentation:

  • A big area of change has been the Entire Market Value Rule.
    • There is an increased scrutiny on the basis of consumer demand required for the entire market value rule to apply.
    • How do you stand up to that scrutiny?
      • §  Consumer surveys (Lucent v. Microsoft)
      • §  Statistical or regression analyses
  • Cornell University v. Hewlett-Packard Co., 609 F. Supp.2d 279, 283-290 (N.D.N.Y. 2009) (Rader, J. by designation) the jury awarded $184M based upon the entire market value rule despite a lack of evidence from Cornell that the claimed invention (processors) formed the basis of the demand for the CPU bricks or even a market for CPU bricks.  Rader granted HP’s JMOL offering Cornell a remittitur to $53.5M (based upon the value of the processors) or a new trial.  The case settled.
  • Lucent v. Microsoft, 580 F.3d 1301, 1336 (Fed. Cir. 2009) involved a date picker for Outlook software.  It had no direct impact upon how Outlook functioned.  Jury awarded $358M using a royalty base of all Outlook software.  Because there was no evidence that the date picker functionality was the basis of consumer demand for Outlook, the Court ordered a new trial.  The second jury awarded less than 10% of the original award.
  • Laserdynamics, Inc. v. Quanta Computer, Inc. (E.D. Tex. Jun. 9, 2010) jury awarded $52M based upon a separate royalty for stand-alone drives and for computers the drives were sold in.  The district court held there was no evidence to support the entire market value rule and that the computers could not be included in the analysis.
  • Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1375 (Fed. Cir. 2010) allowed the entire market value rule finding that at the time there was a significant demand for smaller VCRs and that the patented technology helped to reduce the size of the VCRs.
  • Uniloc v. Microsoft, 632 F.3d 1292, 1318 (Fed. Cir. 2011) rejected the 25% rule as not scientifically sound.  The Court also explained that it was not enough to use a sufficiently low royalty percentage of the entire market value.  The entire market value rule has to be independently justified.
  • Reasonable royalty analysis (Georgia-Pacific factors)
    • Lucent v. Microsoft, 580 F.3d 1301, 1325 (Fed. Cir. 2009) held that comparable licenses must have some relationship to the accused activities.
    • ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 868 (Fed. Cir. 2010) held that proof of damages must be carefully to the claimed invention’s industry footprint.  Comparable licenses should either be for the patents-in-suit or should only be used very carefully and sparingly.  The Federal Circuit cautioned the district court on remand not to rely on unrelated licenses to increase the reasonable royalty rate above rates more clearly linked to the economic demand for the claimed technology.  On remand, the district court awarded a 3% royalty instead of the 12.5% rate used by the jury.
    • IP Innovation LLC v. Red Hat, Inc., 705 F. Supp.2d 687, 690 (E.D. Tex. 2010) (Rader, J. by designation) held that plaintiff’s expert arbitrarily picked a royalty rate higher than the existing rates for patents-in-suit.  The proper analysis would have been to use the comparable licenses and adjust them for the age of those licenses.  There was no evidence that industry agreement relied upon by plaintiff’s expert were not tied to the case by evidence.  The damages issues were ultimately not decided because Red Hat was held not to infringe.

 

 

Rocky Mountain IP Institute: Divided Infringement, Waiting for McKesson & Akamai

By R. David Donoghue on Posted in Legal Seminars

I recently attended and spoke at the Rocky Mountain IP Institute in Denver.  It was the second year in a row I have attended and spoken at the Institute.  In my opinion, the Rocky Mountain IP Institute is one of the two best IP CLE events (and destinations) in the country.  As evidence of that, the following is one of a series of posts from the excellent presentations over the two days of the conference.  I encourage you to consider joining me at next year’s Rocky Mountain IP Institute. 

This post (cross-posted from my Retail Patent Litigation Blog) focuses upon William Sloan Coates’ presentation on the status of divided patent infringement.  Coates acknowledged that he had been hoping for decisions in the McKesson and Akamai cases currently before the Federal Circuit.  Unfortunately, until the Federal Circuit decides those cases, much of the presentation had to be speculative with the exception, of course, of the history of divided infringement.  Here are the highlights:

  • Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983) was an early case looking at divided infringement.  The Federal Circuit held that the company that produced printing plates could not be directly infringing because its customers had to apply a coating to the plates as a final step.
  • Cross Medical Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005) is a more recent case involving surgeons placing bone screws into a spinal column.  The claim was construed to require connection of a bone interface in an anchor to the spinal bone.  The screw maker could not directly infringe because a surgeon was required to set the screw into the bone.
  • On Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331 (Fed. Cir. 2006) introduced the single entity rule.  The Federal Circuit holds that where more than one entity together perform all of the elements of a claim they can be joint infringers with joint liability.
  • BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) reinforced that a single entity must perform all elements, unless there is a “mastermind” that contracts out the steps to another entity or otherwise directs or controls the other parties.  The Court reasoned that expanding direct infringement to encompass multiple parties performing infringement in concert would “subvert” indirect infringement because indirect infringement requires intent which is not required by direct infringement.
  • Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) elaborates on the definition of a mastermind.  Controlling access to the accused system was not sufficient control.
  • Golden Hour Data Systems, Inc. v. emsCharts, Inc., 614 F.3d 1367 (Fed. Cir. 2010) further defined direction and control.  The two companies that put the accused product together were not joint infringers, because one company sold the entire, combined product and therefore could have been a direct infringer.
  • Akamai v. Limelight is about content delivery services.  The district court held that joint infringement occurred when one entity was the agent of the other or was contractually obligated to perform the steps of the claim.  The issue is being heard en banc by the Federal Circuit and is awaiting decision.
  • McKesson (argued the same day as Akamai) is about a patient communication system.  The district court held that there was no evidence that the healthcare provider directed or controlled the other parties.  As a result, there was no direct infringement.  The Federal Circuit looked at the Akamai holding and discussed the issue of joint tortfeasors as being addressed by contributory and induced infringement.  Patent law is different than tort law because the patentee is able to control and define the bounds of its invention to avoid problems of joint infringement. The issue is being heard en banc by the Federal Circuit and is awaiting decision.

Rocky Mountain IP Institute: IP Budgeting for Small & Mid-Size Companies

By R. David Donoghue on Posted in Legal Seminars

I recently attended and spoke at the Rocky Mountain IP Institute in Denver.  It was the second year in a row I have attended and spoken at the Institute.  In my opinion, the Rocky Mountain IP Institute is one of the two best IP CLE events (and destinations) in the country.  As evidence of that, the following is one of a series of posts from the excellent presentations over the two days of the conference.  I encourage you to consider joining me at next year’s Rocky Mountain IP Institute. 

This presentation (cross-posted from my Retail Patent Litigation Blog) focuses upon budgeting IP matters for small and mid-size companies.  The panel was moderated by Molly Kocialski of Oracle, Chris Amrhein General Counsel of ADA-ES and Jeff Thurnau Chief IP Counsel of Gates Corporation.  The session provides valuable insights to both companies facing their first IP litigation as well as companies that have established IP budgets, but want to refine their best practices:

  • Budgeting requires an understanding of your businesses and business priorities.  A budget divorced from the business goals and realities is a failed budget.
  • Educating business people, engineers and other stakeholders is a key part of budgeting.
  • Clearly identify the variables and uncertainties that may change or break the budget with your business people up front.
  • Consider establishing a deep relationship with a firm rather than shopping every project around.  You can save money while preserving quality long term with deep counsel relationships, as opposed to finding the lowest cost provider.
  • Look for counsel before you receive the cease & desist letter or the complaint.  Relationships developed before an immediate threat can be more valuable and save significant resources, both in terms of economics and coaching up new counsel.
  • You need to understand what your business people want from counsel – do they want a name, a particular relationship or a specific expertise.
  • Develop a relationship between outside counsel and your business people to establish credibility and trust.  It costs some time up front, but pays dividends in business trust and confidence throughout a case.  But do not remove in-house counsel completely.  A business person who does not realize the costing realities can run up a huge bill calling counsel directly without in-house input.

Rocky Mountain IP Institute: Judge Kozinski’s Advocacy Lessons for IP Lawyers

By R. David Donoghue on Posted in Legal Seminars

I recently attended and spoke at the Rocky Mountain IP Institute in Denver.  It was the second year in a row I have attended and spoken at the Institute.  In my opinion, the Rocky Mountain IP Institute is one of the two best IP CLE events (and destinations) in the country.  As evidence of that, the following is one of a series of posts from the excellent presentations over the two days of the conference.  I encourage you to consider joining me at next year’s Rocky Mountain IP Institute. 

This post (cross-posted from my Retail Patent Litigation Blog) discusses Ninth Circuit Judge Alex Kozinski’s advocacy lessons and tips for IP lawyers.  It is relatively rare that you get the opportunity to get advocacy lessons from the bench, and Judge Kozinski did not disappoint.  His lessons are clear, specific and backed up by concrete examples:

  • “Simplify. Simplify. Simplify.”  IP lawyers forget how complex the technology can be.  It is harder for the Court to understand the law when it does not understand the underlying technology.  Concrete examples are important.  Move from the abstract to the concrete examples to maintain the readers attention.
    • Example Galoob v. Nintendo:  Galoob’s appellate brief begins with a story involving a child that grabs the reader’s attention about the Nintendo game system as part of the questions presented to ground a panel of judges that (at the time) likely had never played the video games at issue in the case.
  •  Words are an abstraction.  Use pictures and examples because words are always an abstraction at least one or two levels removed from whatever is being described.  Consider the power of the word “ice cream” as opposed to the power of a picture of ice cream.
    • Example Fisher v. Dees:  Case over parody song called “When Sunny Gets Blue.”  The judges were uncertain about the outcome until they got copies of the two songs and listened to them.  They knew it was a parody upon listening.  The words in the briefs and arguments did not do it.
    • Example US v. Adams:  Case over a battery used by US in a war effort.  At the Supreme Court, Adam’s counsel set up an experiment with the battery.  He was asked few questions because the justices were focused upon the light bulb.  The experiment worked as counsel was about to sit down and Adams won.
  • Avoid claims of disaster.  In judges’ views, disaster rarely actually plays out.
    • Example Vestron v. HBO:  Movie producers of Platoon backed out of a video distribution deal to go with HBO.  Producers had no legal argument for what they had done and had gotten an injunction against them.  They appealed arguing that they faced disaster based upon an injunction.  Judges allowed the injunction because of skepticism over claims of disaster.  In fact, pent up demand for the movie during the injunction actually increased demand for the movie.
  • Wear the white hat.  Judges and juries can be swayed by the equities.  When you can, show why your client is the good guy.
    • Example Vermonster v. Monster:  Vermonster (a small Vermont-based brewery) used a social media campaign posing as David to Monster’s (energy drink company) Goliath.  Kozinski suspects that the social media campaign forced resolution of the case.

 

Rocky Mountain IP Institute: Persuading Patent Juries, Some Counterintuitive Research

By R. David Donoghue on Posted in Legal Seminars, Trial

I recently attended and spoke at the Rocky Mountain IP Institute in Denver.  It was the second year in a row I have attended and spoken at the Institute.  In my opinion, the Rocky Mountain IP Institute is one of the two best IP CLE events (and destinations) in the country.  As evidence of that, the following is one of a series of posts from the excellent presentations over the two days of the conference.  I encourage you to consider joining me at next year’s Rocky Mountain IP Institute.

This post (cross-posted from my Retail Patent Litigation Blog) discusses one of the best presentations of the Institute – an exceptionally high bar.  Drs. Kevin Boully and Karen Lisko of Persuasion Strategies presented a series of maxims that they have learned based upon studies of judges and juries over years.  Their results are very interesting and occasionally counterintuitive.  Here are some of their key takeaways:

  • You should never assume that pro-invalidity jurors have the same characteristics as pro-defense jurors, the way they do in many other types of litigations.  In fact, pro-invalidity jurors can even be quite different from pro-noninfringement jurors.
  • The more education a juror has, the more willing the juror will be to invalidate a patent.
  • You should look at jurors attitudes more than their demographics.
    • For example, it is more important to find out whether the juror has a positive perception of the Patent Office, and will therefore be more likely to find patents valid, than to focus upon the juror’s age.
  • Never use a claim-by-claim approach in opening statements.  It is critical to tell a story.  That is what jurors understand best.
  • You should always assume that judges are more similar to jurors than they are different. 
    • As a result of that, briefs and other papers should be as visual and direct as possible.  It is important to help the judge, just like the jury, understand the story to give the case context and importance.
  • Jurors sometimes view trolls as less credible than practicing entities.
    • 57% of jurors say trolls have less right to damages.
    • Similarly, 47% of judges say trolls have less right to damages.
  • Defendants should always underscore the fallibility of the Patent Office, even if they have their own patents.
    • Perhaps the most interesting part of the presentation to me was that Persuasion Strategies’ evidence show that the Federal Judicial Center’s patent video actually increases jurors’ belief in the fallibility of the Patent Office.
  • Defendants should sometimes tell their noninfringement story before their invalidity story.  My experience disagrees with this somewhat.  I would say that you almost always want to explain your noninfringement story first, realizing that there is an exception to every rule.

CLE: John Marshall 56th Annual IP Law Conference

By R. David Donoghue on Posted in Legal Seminars

John Marshall is hosting its 56th Annual Intellectual Property Law Conference this week, on Friday, February 24, 2012. 

The content looks excellent, including:

  • Recent Developments in Intellectual Property Law;
  • Bernard Knight, General Counsel, U.S. Patent & Trademark Office will present a luncheon keynote on "The Future Challenges of IP Litigation: A Judge’s Perspective";
  • Supreme Court’s Renewed Interest in Patent Law;
  • Critical Trends in 2012 from In-House Perspective;
  • Monetizing IP and Generating Cash from Patents; and
  • E-Discovery — Limiting the Solar System or Expanding the Universe?

Registration and additional information is available here.

Staving Off Patent Trolls: Steps to Protect Your Company

By R. David Donoghue on Posted in Legal Seminars

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.

Rocky Mountain IP Conference: Joint Infringement Update

By R. David Donoghue on Posted in Legal Seminars

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.

Judicial Panel: Best Practices in IP Litigation (Part 2)

By R. David Donoghue on Posted in Legal Seminars

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.

Judicial Panel: Best Practices in IP Litigation (Part 1)

By R. David Donoghue on Posted in Legal Seminars

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.

CLE: What Everyone Should Know About the Mechanics of E-Discovery

By R. David Donoghue on Posted in Legal Seminars

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.

 

Chicago IP Colloquium Discusses Hot News

By R. David Donoghue on Posted in Legal Seminars

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

CLE: Is Copyright Out of Touch with Digital Media?

By R. David Donoghue on Posted in Legal Seminars

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.

CLE: The Entire Market Value Rule and the End of Casual Empiricism

By R. David Donoghue on Posted in Legal Seminars

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.

CLE: IPLAC Patent Symposium & Judges Dinner

By R. David Donoghue on Posted in Legal Seminars

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.

Licensing Executives Society Comes to Chicago

By R. David Donoghue on Posted in Legal Seminars

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.

Supreme Court Intellectual Property Preview at Chicago-Kent

By R. David Donoghue on Posted in Legal Seminars

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.

CLE: Corporate Intellectual Property Law Conference

By R. David Donoghue on Posted in Legal Seminars

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.

Chicago IP Colloquium: Copyright & Negligence

By R. David Donoghue on Posted in Legal Seminars

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.

CLE: Client-Attorney Communications About E-Discovery

By R. David Donoghue on Posted in Legal Seminars

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.