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Tag Archives: Chicago Tribune

Parties Settle Trademark Dispute on Eve of Trial

Posted in Settlement

SPSS Inc. v. Nie, No. 08 C 66 (N.D. Ill.) (Darrah, Jr.).

The parties recently settled this trademark dispute shortly before trial.  For more on the parties’ history and the settlement, click here for Chicago Tribune reporter and Chicago Law blogger Ameet Sachdev’s reporting on the case in the Tribune, and click here for more coverage of the case in the Blog’s archives.

IP News Shorts

Posted in Legal News

Here are several stories and updates, as well as a new IP blog:

  • At Patently-O, Dennis Crouch covers the Federal Circuit decision in the appeal from the Northern District of Illinois case SourceOne Global Partners, LLC v. KGK Synergize, Inc. – Click here for Crouch’s post on the appeal and here for my post on the underlying decision.
  • The latest installment of Doug Lichtman’s IP Colloquium is available — click here to listen.  Lichtman and his guests from Microsoft, Paramount Pictures and MySpace discuss the protection of content in the digital age.  As always, it is an excellent listen and CLE credit is available.
  • Seattle Trademark Lawyer Michael Atkins has another great post up about Olympic trademarks, this time featuring an article that ran in the Chicago Tribune (here) and LA Times (here) quoting both Atkins and me.
  • California attorney and mediator Erica Bristol has started the IP Watchtower blog.  The blog covers all facets of intellectual property and the initial posts suggest it will be a great read.  I have added it to my feed reader.

Senator Durbin Sends Northern District Judicial Nominees List to President Obama

Posted in Legal News

Illinois’s senior senator Dick Durbin recently sent President Obama the names of seven nominees to fill three vacancies on the Northern District of Illinois bench.  The nominees are AUSA Edmond Chang, Illinois appellate Judge Sharon Coleman, Magistrate Judge Susan Cox (click here to read about Judge Cox’s IP opinions in the Blog’s archives), Thomas Durkin, Gary Feinerman, Mary Rowland and Magistrate Judge Maria Valdez (click here to read about Judge Valdez’s IP opinions in the Blog’s archives). 

Here are biographies of each nominee from Senator Durbin’s press release:

Chang has served as an assistant U.S. attorney in the Northern District of Illinois since 1999, and he is currently the chief of appeals.  He previously worked as an associate at Sidley Austin, and as a judicial law clerk to Judge Marvin Aspen in the Northern District of Illinois and Judge James Ryan on the U.S. Court of Appeals for the 6th Circuit. He has served as an adjunct professor at Northwestern University law school, where he graduated with honors and served on the law review. He lives in Northbrook.

Coleman is a judge on the Illinois Appellate Court, following her election in 2008. She served as a judge on the Circuit Court of Cook County from 1996 to 2008. Before that, she was a supervisor in the Cook County state’s attorney’s office and an assistant U.S. attorney in the Northern District of Illinois. She has served on the boards of numerous bar associations and public interest organizations. She is a graduate of Washington University law school in St. Louis, and she lives in Chicago.

Cox has been a U.S. Magistrate Judge in the Northern District of Illinois since 2007. She previously worked as a litigator at several Chicago law firms, as an assistant U.S. attorney in the Northern District of Illinois, and as a judicial law clerk to Judge Wayne Andersen in that district. Judge Cox has served on the boards of many bar associations and public interest organizations. She has taught as an adjunct professor at DePaul University law school, and she is a graduate of Boston University law school, where she served on the law review. Judge Cox lives in LaGrange.

Durkin has been a partner at Mayer Brown since 1993 and was the chair of the firm’s pro bono committee for nearly a decade. He previously served as an assistant U.S. attorney in the Northern District of Illinois for over twelve years.  He served as a judicial law clerk to Judge Stanley Roszkowski in the Northern District of Illinois. He is a graduate of DePaul University law school, where he has taught as an adjunct professor. Durkin lives in Downers Grove.

Feinerman has been a partner at Sidley Austin since 2007. From 2003 to 2007, he served as Illinois’s solicitor general, and before that he was a partner at Mayer Brown.  He has argued numerous cases before the U.S. Supreme Court and Illinois Supreme Court. He served as a judicial law clerk to Justice Anthony Kennedy on the U.S. Supreme Court and Judge Joel Flaum on the U.S. Court of Appeals for the 7th Circuit in Chicago. He has served on numerous boards and is the president of the Appellate Lawyers Association of Illinois. He graduated from Stanford Law School and lives in Winnetka.

Rowland is a partner at the Chicago law firm of Hughes Socol Piers Resnick & Dym, where she has worked since 2000. From 1990 to 2000, she worked at the Federal Defender Program in Chicago, including five years as the chief appellate attorney. She has served on numerous boards. She was a judicial law clerk to Judge Julian Cook in the Eastern District of Michigan, and she is a graduate of the University of Chicago law school. Rowland lives in Oak Park.

Valdez has been a U.S. Magistrate Judge in the Northern District of Illinois since 2005. From 1992 to 2005, she was the Chicago regional counsel and staff attorney for the Mexican American Legal Defense and Educational Fund. Prior to that, she worked as a Deputy Federal Public Defender in California. She has served on many boards. She is a graduate of the University of California-Hastings law school, and she lives in Western Springs.

A hat tip to Ameet Sachdev at the Chicago Tribune’s Chicago Law Blog for identifying this story last week.

Cheezborger! Cheezborger! No Fries . . . . Meet the Bloggers VI

Posted in Legal News

IP Business Congress 2009 comes to Chicago in about  two weeks, June 21-23, 2009 — click here for registration information.  In honor of such an impressive group of IP lawyers coming to Chicago, I am hosting Meet the Bloggers VI on Tuesday evening June 23 starting at 5pm. 

The IPBC is at the beautiful Four Seasons Chicago, but in order to make sure that attendees get a well-rounded taste of Chicago, Meet the Bloggers VI will be held at the world famous Billy Goat Tavern.  The Billy Goat is just down and below the street from the Four Seasons at 430 N. Michigan Avenue.  Go to the Tribune Tower on Michigan Avenue and take the stairs below the sidewalk to find the Billy Goat.  Those who have a long history in the IP blogosphere will remember that the Billy Goat was also the site of Meet the Blogger III (I am on the left side of the second picture).  Also, I want to thank Meet the Blogger creator and Meet the Blogger III host John Welch of the TTABlog for allowing me to use the Meet the Blogger name.

I am not making any promises, but I am hopeful that if you attend you will meet Chicago legal blogging luminaries such as Internet Cases; Chicago Law (an excellent new blog by the Chicago Tribune’s Ameet Sachdev); the anonymous Editor of Blawg Review; Cyberlaw Central; and 12:01 Tuesday. and the 271 Patent Blog.

Patent News: Patent Reform & Supreme Court Shortlist

Posted in Legal News

Here are a few stories that do not warrant a full post:

  • The mainstream media and the blogosphere are buzzing with predictions of who is on President Obama’s shortlist for replacing Justice Souter  The Northern District’s Judge Castillo and the Seventh Circuit’s Judge Wood are both making many of the lists — check out one list at the Daily Writ.  Both excellent choices.  Over the weekend, the Chicago Tribune ran a story about a local expectation that someone connected to the University of Chicago would be appointed to the Supreme Court during the Obama presidency.  I also wonder if the Northern District’s Judge St. Eve is or should be on some shortlists.
  • Ronald Slusky is bringing his two-day patent claim drafting seminar to Chicago May 19-20.  Slusky promises to teach "a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims.  Through this interactive seminar, participants will enhance their skills in a classroom setting."  I have not attended Slusky’s seminar myself, so I cannot speak to its value, but it definitely looks interesting.

  • Last week the House held hearings about the Patent Reform Act.  Check out some commentary on the hearings at Patently-O.
  • I got out of the habit of posting each week’s Blawg Review, but last week’s was both too good and too unique to pass up.  Blawg Review #209 is up at John Hochfelder’s New York Injury Cases Blog (another LexBlog site) — read it here.  Hochfelder tells the moving story of his father’s life, the life of an American hero.   Blawg Review #210 is also available at the China Law Blogclick here to read it.  It is also an excellent Review based loosely on the 90th anniversary of China’s May 4th Movement.

The Passing of Judge Moran

Posted in Legal News

Judge Moran passed away yesterday.  Click here for the Northern District’s official statement.*  This is a difficult post for me to write.  It is hard, maybe impossible, to capture Judge Moran’s impact on the Northern District of Illinois in a relatively short blog post.  Judge Moran served as a federal district judge for almost thirty years, including as Chief Judge in the early 1990s.  Judge Moran also served Illinois as a state representative and spent several years in the Army after getting his undergraduate degree from the University of Michigan and before attending Harvard Law School. 

As a district judge, Judge Moran was respectful, thoughtful, and thorough.  Judge Moran’s most lasting contributions to the Northern District were likely as a mentor and a writer.  Judge Moran’s opinions were detailed and well reasoned, but most of all his opinions were written in straight forward language that opened the federal courts to people without legal training.  Judge Moran’s passing is a significant loss.

[UPDATE:]  The Chicago Tribune posted a detailed obituary here with more comments from Judge Moran’s peers and a more detailed account of his impressive legal career.

*  I will post more information regarding any memorials, as the information becomes available.  On a procedural note, Judge St. Eve is hearing any motions pending on Judge Moran’s docket until further notice.

Patent Reform & Another Commerce Secretary

Posted in Legal News

Here are several important, national patent and trademark stories:

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

Chicago Tribune: Monetizing Intellectual Property

Posted in Legal News

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

Blawg Review & the September Carnival of Trust

Posted in Legal News

Blawg Review #175 is up at Jamie Spencer’s Austin DWI Lawyer (another LexBlog site) — click here to read the Review.  Fitting with Ed.’s sense of humor, a DWI lawyer was chosen to host the Labor Day Review, instead of a more traditional pick, like a labor lawyer.  Of course, there are lots of interesting DWI posts, and a few good IP links.  Spencer links to Victoria Pynchon’s post at the IP ADR Blog about the arrest of a blogger who posted new Guns N’ Roses tracks before the group released its new album — click here to read it.  In a "teeny tiny" act of civil disobedience, Pynchon posted the entire text of the LA Times story on the arrest.  While I will admit to one or two acts of civil disobedience in my day, today you are just getting a link to the Chicago Tribune’s story by Michelle Quinn and Swati Pandey on the arrest and the increasing use of criminal copyright infringement prosecutions — click here.

September’s Carnival of Trust is up at Compensation Forceclick here for the Carnival.  There are no specific legal or IP posts this month, but lots of great stuff on building and maintaining relationships with trust.

Tribune on IP & Law

Posted in Legal News

The Chicago Tribune had two interesting legal stories earlier this week:

  • The Tribune’s Jamie Herzlich wrote a good article explaining the basics of trademarks, including why and how to file them — click here for the article.  It is a great first resource for anyone looking at trademarks for the first time.
  • The Tribune’s Ann Therese Palmer wrote about and interviewed Pedro DeJesus, Senior Vice President, General Counsel and Secretary of Tampico Beverages, a Chicago-based company that is the leading refrigerated juice drink manufacturer — click here for the article.  DeJesus, a former associate at DLA predecessor Piper Rudnick, does not appear to have an IP focus.  But his story captured my attention, probably because, like me, he went to law school focused on public interest law, but ended up entering and enjoying commercial legal services.  It is especially worth a read for current and aspiring law students.  I echo Judge Castillo’s advice to DeJesus that anyone planning to do public interest law would benefit from some big firm experience.  Big firms provide exposure to many facets of the law, including exciting public interest opportunities. 

Google Ordered to Produce YouTube Information

Posted in Discovery

The Chicago Tribune’s Jessica Guynn reported last week (click here to read the article) that a Southern District of New York judge ordered Google to produce information about YouTube user’s viewing habits.  Viacom sued YouTube and its parent Google, alleging copyright infringement based upon the alleged infringing posting of Viacom’s copyrighted content on YouTube.  Guynn reports that privacy advocates are concerned about the ruling.  But Guynn also quotes Viacom’s General Counsel Michael Fricklas saying that "unequivocally that this information will not be used" outside of the lawsuit.

The WSJ Law Blog also has a great post about the order — click here for the post — explaining the type of information that Google was ordered to disclose:

Viacom wants records from a YouTube database that records each time a video is watched and pairs that with two kinds of information about people who viewed it: log-in names (for YouTube users that have accounts), and IP addresses (for YouTube users without accounts).

For those concerned about the production, there is nothing to be worried about.  Virtually every federal case involving sensitive information is governed by a protective order preventing use or disclosure of the information outside of the litigation.  And in virtually all of those cases the parties honor the protective order and the information is not disclosed or used besides in the litigation.

[UPDATE:]  Randy Picker at the University of Chicago Faculty Law Blog has an interesting post questioning how the information could be kept or produced by Google differently to avoid disclosing identities along with the viewing information, and whether the information is covered by the Video Privacy Protection Act of 1988 (enacted after Judge Bork’s video rental records were obtained during Senate confirmation hearings):

So Viacom has a legitimate interest in seeing YouTube’s viewing records. But of course viewers have a privacy interest in those records as well. Exactly how many views have I contributed to The Evolution of Dance, the, I gather, most-viewed video on YouTube (currently at 91,619,702 views)? (I have watched only because I teach copyright, not because it is quite funny.)

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Chicago Company LimitNone Sues Google

Posted in Legal News

LimitNone v. Google, Inc., (Cook County Ct. Jun. 24, 2008).

Last week, LimitNone, a Chicago company, sued Google for trade secret misappropriation seek $1B.  LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone’s gMove software — software that helps Microsoft Outlook users migrate data to the Google platform.  Google allegedly assured LimitNone that it would not offer a competing product, but after receiving LimitNone’s trade secrets and promoting the $19 gMove software, Google began offering a free, competing software package which allegedly used LimitNone’s trade secrets.  LimitNone filed a speaking complaint, for example:

With gMove priced at $19 per copy and Google’s prediction that there were potentially 50 million users, Google deprived LimitNone of a $950m opportunity by offering Google’s competitive product for free as a part of its ‘premier’ Google Apps package

This appears to be an interesting and potentially significant case.  I will keep my eye on it and update you as opinions and events occur.  For more on the filing, check out:

State of the Northern District is “Good”

Posted in Legal News

According to Chief Judge Holderman during the annual state of the Northern District speech, the state of the Northern District is "good" — click here for the Northern District’s statement regarding the speech.  The Northern District was briefly at full capacity, between Judge Dow’s appointment to the Northern District and Judge Filip’s resignation to join the Department of Justice.  Other highlights of the presentation included:

  • The Northern District remains in the top ten districts in terms of median time to civil case disposition at 6.2 months.
  • Magistrate Judges Brown and Mahoney were reappointed to additional eight year terms; and
  • The Northern District’s 2007 civil case load remained nearly constant, falling only .5% from its 2006 level.

The Northern District’s steady civil case load is especially impressive in light of the Seventh Circuit’s reduced case load in 2007.  The Chicago Tribune’s Ameet Sachdev reported — click here for the story — that the Seventh Circuit’s Chief Judge Easterbrook, during his state of the Seventh Circuit speech, reported that the Seventh Circuit’s case load dropped 10% for the second year in a row.  Sachdev noted that federal appellate court case loads had averaged a 5% drop per year since 2000.  And Easterbrook explained the Seventh Circuit’s 10% drop for 2007 as based upon two primary factors:

  • The Seventh Circuit’s district courts saw an overall 6% drop in their case loads; and
  • The Seventh Circuit’s preference for bright line rules over totality of the circumstance tests made it easier for entities to settle their disputes, saying:

Rules make it easier for private parties to avoid litigation, or settle their disputes, without asking for appellate evaluation in every case.

Blawg Review & Avoiding Jury Duty

Posted in Legal News

Blawg Review #160 is available across the pond at Ruthie’s Law.

And the Chicago Tribune’s R. Kelly trial blog, Gavel to Gavel, has an enlightening post about numerous answers (read "excuses") that got potential jurors knocked out of the R. Kelly trial jury pool.*  My favorite:

A legal secretary wrote on her questionnaire, "I believe Mr. Kelly is guilty of the charges due to what I have read in the papers, and the fact that he was indicted by the grand jury further validates my beliefs." The woman and her perfectly worded response were excused. Lest she think she pulled a fast one on the court, Cook County Judge Vincent Gaughan knew her answer had been coached.

*  Hat tip to Legal Antics for reminding me about the article.

Identity Theft: The Perils of Social Networking Sites

Posted in Legal News

In Sunday’s Chicago Tribune, Josh Noel reported on the town of Cicero’s efforts to identify the creators of two MySpace pages containing false and allegedly defamatory statements about Cicero Town President Larry Dominick and claiming to be authored by him– click here for the story.  The incident and Noel’s story raise questions about the problems with the anonymity of the internet that are equally interesting and difficult.  Noel talked to me about the difficulties of policing social networking sites for the story.  Here are my quotes:

"There’s an element of this we just have to live with," said Dave Donoghue, an attorney with DLA Piper who specializes in intellectual property litigation. "It’s impossible to have large-scale social networking sites, which people clearly want, without having some risk of this."

Greater policing of social networking sites would be impractical, Donoghue said, comparing it to air travel.

"To make air travel 100 percent safe, the background checks and checks of personal possessions of each individual getting on an airplane would be so cumbersome, time consuming and expensive, it would make air travel impractical," he said. "There has to be a balance."

Chicago Litigation News: New Chicago Trial Blog

Posted in Legal News

The Chicago Sun-Times has begun live blogging the R. Kelly trial in Cook County state court at its new blog the Kelly Chronicles.  As with the Chicago Tribune’s Rezko trial blog, Rezko Gavel to Gavel, the Kelly Chronicles is not IP-related.  But regardless of the legal claims, trial blogs are a great way to get a non-legal perspective on a trial from start to finish.  Fortunately for Chicago-area litigators and litigants, the Chicago papers have begun actively live-blogging local trials which should provide a wealth of this kind of information. 

Creator Returns to Inspect “Reconstructed” Work of Art

Posted in Legal News

The Chicago Tribune’s Ameet Sachdev reported that an ongoing copyright dispute may be coming to a head at the corner of Michigan Avenue and Randolph Street in Chicago, click here for the Tribune article.  In the 1980s, Israeli artist Yaacov Agam was commissioned to create a sculpture for what would become the Stone Container building at 150 N. Michigan Avenue.*  Over time, Chicago weather faded the work and the current owner hired an expert to restore the multi-hued work to its original look.  Agam is unhappy with the restoration because he believes the colors were not restored to the exact shades he originally used.  The work is now back on display at the corner of Michigan and Randolph, and Agam is headed to Chicago this weekend to view the restored, or as he calls it "reconstructed," work.

In a previous Tribune article,** Agam’s counsel admits that VARA, the Visual Artists Rights Act, did not protect Agam’s position because the work was created before 1990 and because Agam no longer owns his work.  But Agam claimed to hold the copyright in the work and argued that the copyright allowed him to prevent the current owner from creating a derivative work, which Agam believed the restored or reconstructed work to be because of the changed colors.  The dispute is likely governed by the contract commissioning Agam to make the work.  Of course, it is possible, and maybe even likely, that the contract is silent or ambiguous regarding derivative works or that it was an oral contract without proof of what the parties intended.  It will be interesting to see how the dispute is resolved and, I am sure, people who work in the area will be glad that the wooden stump that stood in the work’s place has been replaced by some restored version of the work.

Click here for a picture of the sculpture and further discussion of this dispute at the One-Way Street

**  Click here to read the blog’s post about that article.

Chicago IP News

Posted in Legal News

I have missed the first few presenters in the Chicago-Kent & Loyola University Chicago IP Colloquium, but the next presentation is set for tomorrow, Tuesday, April 8, in Room 305 at Kent at 4:10 pm.  Professor R. Polk Wagner of the University of Pennsylvania Law School will discuss his article Did Phillips Change Anything?  The article poses a question that should interest all patent litigators and I am sure there will be a lively discussion.

The Chicago Tribune ran three law-related, non-IP stories that are worth a read over the weekend:

  • A profile of Jenner & Block’s new managing partner Susan Levy — click here for the story;
  • A long story on the disparity in starting legal salaries and the consistency in law school tuition rates – click here for the story; and
  • An excerpt by Chicago attorney R. Eugene Pincham, who died Thursday, from Your Witness: Lessons on Cross-Examination and Life from Great Chicago Trial Lawyers, which goes on sale Monday at www.yourwitnessbook.com – click here for the story.  The essay details how Pincham prepared for trial and is a must read for all trial attorneys.  Pincham’s excerpt got my attention.  I will be getting a copy of the book and will post a review when I am done with it.  Here is how the Tribune described Pincham:

a pioneering African-American lawyer and champion of unpopular causes. His colorful oratory, which drew on personal history, made him a legend in Chicago courthouses.

Live Northern District Trial Blog

Posted in Trial

The Chicago Tribune has set up a live blog, written by Bob Secter and Jeff Coen, of the government’s criminal case against Tony Rezko.  The blog promises daily, "gavel-to-gavel" coverage of the Rezko trial — click here for background on the case from the Tribune.  This case does not have an intellectual property angle that I am aware of, but it provides an excellent view of a trial as seen through the eyes of non-lawyers, a very important perspective for litigators.  Additionally, Judge St. Eve gets at least her share of IP cases — click here for discussion of Judge St. Eve’s opinions in the Blog’s archives.*

Here is some of the Tribune’s coverage of the voir dire from yesterday, largely performed by the Court:

Another potential juror, No. 475, teaches cooking classes, often on Fridays. St. Eve sounded as if she was ready to work with the cooking teacher to accommodate her schedule. "If we structured the trial so that it would go Mondays through Thursday and not have trial on Fridays, the days you have cooking classes, would that be good for you?" the judge asked.

Some of St. Eve’s questions were more chatty than legal. The cooking teacher, for example, was asked what was on the menu at her next class. The answer: Beef Bourguignon and mashed potatoes.

Another juror was asked where she liked to go snowboarding. Still another was asked about her desire to learn Spanish. "Have you learned any words yet?" the judge asked.

"Just the bad things," the woman responded.

St. Eve also complimented No. 475 on an answer the prospective juror gave to a presubmitted question about whether people who contribute to a campaign should expect something in return. "A thank-you would be nice," the woman wrote.

I will keep an eye on the Tribune’s blog and will highlight other especially interesting items from it.

*  Judge St. Eve also gets her share of high profile cases.  She must be tired of the publicity after having the Conrad Black trial and now the Rezko trial within twelve months of each other.

Judge Filip to Get Senate Confirmation Vote

Posted in Legal News

The Chicago Sun-Times reported that Judge Filip’s nomination as Deputy Attorney General has cleared one of its final hurdles — click here for the story.  Senator Dick Durbin (D-Ill.) agreed to remove a hold placed on Judge Filip’s confirmation vote after Attorney General Michael Mukasey answered Senator Durbin’s questions regarding the legality of interrogation techniques.  According to a Chicago Tribune story (click here for the story), Judge Filip is expected to be confirmed by the Senate.  Of course, that is not surprising since the Senate previously confirmed him to become a federal district judge.

Chicago-area IP News

Posted in Legal News

A couple of unrelated IP stories from Chicago, where most have been focused on snow & the primaries this week:

  • The Chicago Tribune reported — click here for the story — that a yearly $5,000 scholarship has been established in the name of Allen J. Hoover, a patent attorney at the law firm of Wood Phillips, who was killed in Wood Phillips’s offices in December 2006.  The scholarship will be given to a third-year DePaul University law student focusing on intellectual property law.  Hoover was a DePaul alum.  At least some good can come from such senseless violence.
  • The University of Chicago Faculty Blog discussed patent exhaustion and the recent LG v. Quanta Supreme Court oral argument in this post, as part of an ongoing discussion about "New Servitudes" — licenses that attempt to control a purchaser’s rights in software, digital music, etc. (click here to read Professor Van Houweling’s initial post and click here to get the current version of her New Servitudes article at SSRN).  Van Houweling’s analysis of the oral argument may not be as deep (note sarcasm) as my analysis of Justice Breyer’s cycling analogy, but it is quite interesting and she edges closer than most to predicting an outcome:

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Tribune on Patent Bounties

Posted in Legal News

The Tribune ran a story in its weekly legal industry column yesterday about Ray Niro, senior partner in local patent litigation firm Niro Scavone and a very accomplished trial attorney. Niro is in a dispute with anonymous blogger Troll Tracker. Troll Tracker focuses his blog on cases brought by patent licensing companies or non-practicing entities,* a number of whom are represented by Niro and the Niro Scavone firm. Because of the firm’s prominence in plaintiff-side patent work, Troll Tracker has also discussed both Niro and the firm. That drew Niro’s attention. Niro sent the anonymous Troll Tracker a letter accusing him of infringing a patent held by client Global Patent Holdings which the Tribune described as “covering the compression of data over the Internet, a technology that allows, for instance, Web sites to display JPEG images.” Niro then offered a $5,000 “bounty” for unmasking Troll Tracker’s identity, which he later increased to $10,000. Here is how Niro explained the bounty in the Tribune article:

I want to find out who this person is . . . . Is he an employee with Intel or Microsoft? Does he have a connection with serial infringers? I think that would color what he has to say."

I have generally stayed away from this story because it is closer to patent gossip than the Northern District IP litigation that is the focus of this blog. But I felt that I should cover it since it ran in the Tribune. 

* I have posted before about my dislike of the patent troll name – click here for a post which discussed the Troll Tracker blog and here for a post about Ray Niro’s article calling for an end to the use of patent troll. I think it carries unnecessary baggage and creates unnecessary animosity in legal proceedings that tend to generate plenty without injecting more. So, I was glad to see last week that Troll Tracker is pulling away from the use of the name – click here for Troll Tracker’s post about the term.

The Chicago Tribune & David Donoghue on Strategic Patenting

Posted in Legal News

This morning the Chicago Tribune ran an article (click here for the Tribune’s piece) based upon IFI Patent Intelligence’s ranking of 2007′s top U.S. patent assignees — click here for IFI’s press release.   The article focused on Motorola’s movement from number 34 in 2006 to 44 in 2007.  Motorola explained that it has shifted focus from a goal of being one of the largest patent assignees to a more limited portfolio focused around Motorola’s core technologies.  I was quoted in the story about the value of what I refer to as "strategic patenting":

Motorola’s approach is a more common one across industries, said David Donoghue, special counsel at DLA Piper in Chicago who specializes in intellectual property. In general, most companies are "focusing their patenting efforts on their most important technologies and their biggest innovations — the things that differentiate them from their competitors," Donoghue said.

There is also value in having a large patent portfolio, particularly if you need to use your portfolio for cross-licensing or defensively against a patent-aggressive competitor, or if you are not sure which of your technologies will drive your industry and profits in five or ten years. 

Shortly after reading the Tribune article this morning, an IPLaw 360 article caught my attention (click here for the story, subscription required).  The article discussed a study by Morgan Lewis attorneys Craig Opperman and Carina Tan (to read the Intellectual Asset Management article about Opperman’s and Tan’s research, click here on Opperman’s biography and click the link to the article in the upper right hand corner of the page).*  Opperman and Tan argue that a high volume, low cost (per application) patenting strategy has a greater final cost than a strategic patenting strategy in which a company pays more for each individual application, but files fewer applications clustered around their core technologies.  They also offer to provide a spreadsheet proving their analysis to anyone who contacts them and asks for it.  It is an interesting premise.  Of course, it does not appear to take in to account those companies that have a high volume strategy without unnaturally driving down their patent costs.  I think few would argue that, if a company has the resources either in terms of in-house prosecutors or prosecution budget, more high value patents are better than fewer high value patents. 

*  I would provide you a pdf of the article, but I want to stay on the right side of the copyright laws.