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Tag Archives: Dennis Crouch

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.

Chicagoan to Become Deputy Director of the Patent Office

Posted in Legal News

Congratulations to Sharon Barner, a Chicagoan and the head of Foley & Lardner’s IP practice.  Barner has been nominated to become the next Deputy Director of the Patent & Trademark Office.  Based upon reputation and my limited contact with Barner, including among others speaking on a panel at Northwestern with her, the administration made an excellent choice.  For more on the nomination, check out Patently-O and Chicago Law.

IP News Shorts

Posted in Legal News

Here are several stories to start your Monday morning with that I was not able to get to last week because of client commitments and some new business opportunities:

  • The first round of Bilski briefing has been filed  with the Supreme Court.  Click here for links to the various amici briefs at Patently-O, and here for an analysis of Bilski’s opening brief at BlawgIT.
  • Victoria Pynchon has an important warning for IP litigators about understanding a client’s insurance coverage at her IP ADR Blogclick here to read the story and here to check out Pynchon’s husband’s new Catastrophic Insurance Coverage Blog.  The blog appears to be a good read, but more importantly IP litigators should make sure that they investigate client’s insurance policies early in a case.
  • William Patry has a new copyright-related blog, Moral Panics and the Copyright Wars.  It is a companion to his book of the same name, which is excellent.  I had the privilege of receiving an advance copy, which I loved.  I will post a review soon.  For now though, click here for Patry’s first post on the new blog.
  • Finally, last Friday, as they were headed into the August recess the Senate confirmed David Kappos as the next Director of the PTO — click here for the PTO’s press release.

August Carnival of Trust

Posted in Legal News

Welcome to the August 2009 Carnival of Trust.  The Carnival of Trust is a monthly, traveling review of the last month’s best posts related to various aspects of trust in the business world.  It is much like the weekly Blawg Reviews that I post links to and have hosted (click here and here), but those generally contain far more than ten links.  My job this month was to pick those ten posts for you and provide an introduction to each post that makes you want to click through and read more.  For my regular Chicago IP Litigation blog readers, this will be a slight departure from the case analysis format you have come to expect, but very similar to my earlier stints hosting the Carnival of Trust and Blawg Review. 

It is the trust that matters, not the title.

At IP Think Tank, Duncan Bucknell added to the recent debate in the patent community about whether the IP function should move into the corporate C-level suite, adding a Chief Intellectual Property Office to the ranks of CEO, COO, CTO, CIO, CLO and CMO – click here and here to read Bucknell’s posts. Following up on comments by Microsoft’s Marshall Phelps and Rockwell Collins’ Bill Elkington, Bucknell explained that the issue is not the name, but in a company having an IP champion that earns the organization’s trust and respect, whatever title that person is given:

You have to build your own credibility within your organisation as someone who reliably gets the job done.  As you build trust with those senior to you, then your (ongoing?) commitment to communicating the value that can be added using intellectual property will become more prominent. 

Make some (achievable) promises and then deliver.  The more that you do this, the more credibility will be given to the IP function, and the greater awareness those senior to you will have.  Some would call such a person an ‘IP Evangelist’ – I would say that they are just doing their job.  People executing on difficult tasks bit by bit has always been what success is about.

As usual, Bucknell’s analysis is excellent. A person’s respect within an organization is at least as important as their title.

Running an organization is all about building trust.

The patent community focused much of its attention this week on the confirmation hearings for David J. Kappos, nominee for Director of the US Patent & Trademark Office. Click here for Patentability’s summary of the hearing highlights and here for a copy of Kappos’s statement at Patently-O. The hearings were relatively short, likely because there appears to be widespread trust in Kappos’s background and abilities. And although much of the hearing focused on procedural patent office issues, Kappos showed he deserved that trust by focusing his statement on his plans to earn trust with all of the stakeholders in the patent world. He specifically addressed concerns that his corporate background could disadvantage individual inventors or academics:

I am mindful that the USPTO serves the interests of ALL innovators in this country, small and large, corporate and independent, academic and applied, and – most importantly — the public interest. While I have spent my career to date at a large corporate enterprise, I am familiar with the concerns and issues of all USPTO constituents – including small and independent inventors, the venture and start-up community, public interest groups, the patent bar and many others – and will reach out to all of them.

Kappos addressed his plans to build trust with his employees at the USPTO:

I am mindful of the incredible dedication of the thousands of USPTO employees, and the essential role they play to the success of the US innovation system. I will work every day with the USPTO employees and the unions that represent them to establish strong, positive relationships grounded in professional treatment for these workers producing work product based on professional judgment.

He addressed the need to build global trust and relationships:

I am acutely mindful that innovation today is global and that IP policy is of paramount importance, not only in our country, but also in the EU and Japan, in China, India, Brazil and many other developing countries. I will use my international experience and my understanding of global IP trends to help this Administration represent, advance, and protect the interests of American innovators in the global arena and to lead the world in developing strong, balanced, inclusive intellectual property systems that advance the well-being of all participants.

And he addressed the need to build trust with the Administration he seeks to join and the American people the Administration serves:

Finally, I am mindful that the office for which I am being considered, working as part of Secretary Locke’s team and within the Administration’s agenda, must be intensely focused on how to serve the American people at this time of economic uncertainty.

Gene Quinn provides proof that Kappos’s trust-building efforts worked in his IPWatchdog post about the hearings (click here to read the post):

In all, what Kappos said was certainly reassuring, and he should have absolutely no problem getting confirmed.  If he does stay mindful of the needs of all those who use the USPTO, small, large and in between, and the interests of the diverse industries who sometimes need contradictory things in order to thrive, he will not only be a good leader, but he will be an exceptional leader and might really reform the Patent Office into the entity it can and should be in order to foster economic development and job creation in the US. 

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Patent News: Patent Reform & Bilski

Posted in Legal News

The legal blogosphere is full of analysis and commentary regarding the Patent Reform Act, here is more of the best:

And the Bilski amicus briefs began coming into the Supreme Court today.  Click here for Dennis Crouch’s post with links to many of the amicus briefs.  And here for Crouch’s post discussing the PTO’s Bilski guidance to Examiners.

Time’s 2008 Inventions of the Year: Chicago Connections

Posted in Legal News

Time has  published a list of 2008’s best inventions — click here to read it.  Here are a couple of inventions with Chicago connections:

  • 12.  MacroMarkets — MacroMarkets was instrumental in  starting  housing futures trading on the Chicago Mercantile Exchange (the Chicago connection).  Now MacroMarkets is working on exchange-traded funds that allow regular investors to bet on housing futures.
  • 23.  The Branded Candidate — This invention is actually about a trademark and a brand.  Chicago’s own President-elect Obama created a marketing sensation with his branding this year.  Here is how Time describes it:

Barack Obama hat: $15. Barack Obama special-edition Beyoncé T shirt: $60. Devising a system to make and sell your own swag and garner millions in profits, not to mention the phone numbers and addresses of hundreds of thousands of potential volunteers? Priceless.

Hat tip to Dennis Crouch who identified Time’s list at Patently-O.

Bilski: Some Business Method & Software Patents Survive

Posted in Legal News

In re Bilski, __ F.3d __ (Fed. Cir. 2008) (en banc).*

Chief Judge Michel, writing for a nine judge majority, affirmed the Board of Patent Appeals and Interferences’ finding that Bilski’s invention — a commodities trading method for hedging risks — did not meet the 35 U.S.C. § 101 patentable subject matter requirement.  The Federal Circuit held that State Street’s "useful, concrete, and tangible result" test was insufficient to determine patentability — disagreements have already started regarding whether State Street was narrowed or overturned.  The Federal Circuit held that the Supreme Court’s "machine-or-transformation" test was the only test for determining patentability:

A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

I found Judge Dyk’s concurrence tracing the history of the "machine-or-transformation" test back to the Patent Act of 1793 especially interesting:

In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793).

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Posner Inequitable Conduct Opinion Analysis

Posted in Legal News

 New Medium LLC v. Barco N.V., No. 05 C 5620, 2008 WL 4615682 (N.D. Ill. Oct. 16, 2008) (Posner, J. sitting by designation).

In my previous entry about this case, I linked to a copy of this decision and briefly explained the result, but did not provide any analysis of the opinion because I was previously involved in the case — click here to read that entry in the Blog’s archives.  Since that post, Dennis Crouch has provided some excellent analysis of the opinion — click here to read it at Patently-O.  Thanks Dennis.

Ray Niro & Dennis Crouch on Anonymous Blogging

Posted in Legal News

I thought I was done discussing anonymous blogging — click here for my posts about Troll Tracker and anonymous blogging.  But the Legal Talk Network’s Lawyer 2 Lawyer podcast has just published an edition about Troll Tracker and anonymous blogging featuring Ray Niro Sr. of Niro Scavone (who offered $15,000 for anyone who revealed Troll Tracker’s identity) and Dennis Crouch of Patently-O.  It is a very interesting set of interviews.  I only wish that Niro and Crouch had been on together, instead of in separate interviews.  Here are some highlights:

  • Niro stated that no one has claimed the $15,000 reward for identifying Troll Tracker.
  • Niro emailed Troll Tracker and offered to donate the reward to charity (at that time it was $10,000) and fly Troll Tracker to Chicago to meet with Niro and see his firm.

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Troll Tracker Allowed to Blog

Posted in Legal News

Dennis Crouch at Patently-O is reporting that Cisco has amended its employee blogging policy to require that any Cisco employee blogging about issues involving or related to Cisco identify themselves as a Cisco employee and provide a disclaimer that the opinions are those of the employee alone and not necessarily Cisco.  This is a reasonable policy.  It provides Cisco’s employees the freedom to blog while protecting both Cisco and its employees.  And it prevents future occurences of the mistake Troll Tracker made (anonymously commenting on cases his employer was involved in), as I discussed in my post on anonymous blogging last week, click here for the post.

Cisco also told Crouch that Troll Tracker would be free to continue blogging, presumably as long as he follows the policy.  Hopefully, that means that Troll Tracker will return to the patent litigation conversation soon, although it is easy to believe that this experience may have soured him on blogging or changed his voice substantially.  Here is Cisco’s explanation of Troll Tracker’s status from Cisco’s official blog, The Platform:

As an employee, Rick is free to continue his personal blog, Patent Troll Tracker, in compliance with the revised policy. Rick has many fans who appreciate the information he collects and disseminates on patent litigation trends and recognize his blog as an important voice in the on-going national dialogue on patent issues.

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In Memory of Mark Banner

Posted in Legal News

I am sad to report that Mark Banner of Banner & Witcoff passed away over the weekend.  Mark was an important member of Chicago’s IP bar and an active participant in educating numerous lawyers as an adjunct professor at both John Marshall in Chicago and my alma mater the Georgetown University Law Center.  My condolences go out to Mark’s family and the Banner & Witcoff firm. 

Here is some more information on Mark’s legacy from Banner & Witcoff:

Mark was the lead trial counsel in many successful intellectual property trials from both the plaintiff’s and the defendant’s perspectives. He had a particular passion for jury trials of patent cases and computer-related technologies. Despite battling cancer for the last five years, Mark continued his involvement in litigation and counseling work. “Mark made significant contributions to the field of intellectual property law. He was an extremely gifted attorney, a loyal partner, and a devoted friend. Mark was an integral part of the firm and will be greatly missed,” said Thomas K. Pratt, President of Banner & Witcoff.

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Federal Circuit Further Defines Ordinary Observer Test

Posted in Summary Judgment

Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., No. 06-1561, Slip Op. (Fed. Cir. Sept. 12, 2007) (Holderman, C.J., sitting by designation.).*

On behalf of Chief Judge Michel and Judge Gajarsa, the Northern District’s Chief Judge Holderman affirmed C.D. California’s holding that declaratory judgment plaintiffs’ (“Arminak”) “AA Trigger” shroud design for a spray bottle did not infringe declaratory judgment defendant’s (“Calmar”) design patents covering certain design elements of shrouds. The main issue, and one of first impression, was whether the “ordinary observer” for purposes of design patent infringement should be the end-user/purchaser of spray bottles or the industrial purchaser that buys triggers or shrouds for assembly into a finished spray bottle product. The district court held that the ordinary observer was the industrial purchaser and the evidence clearly established that industrial purchasers would not be confused by similarities between Arminak’s and Calmar’s patented shrouds. Calmar argued, however, that the Supreme Court in Gorham Mfg. Co. v. White, 81 U.S. 511 (1871), expressly excluded experts from being ordinary observers and that, therefore, retail purchasers had to be the ordinary observer. But the Federal Circuit noted that did not sell shrouds or fully assembled spray bottles including their respective shrouds to retail purchasers. The parties sell shrouds to industrial purchasers. Industrial purchasers, therefore, are the appropriate population of ordinary observers. The ordinary observer is:

A person who is either a purchaser or, or sufficiently interested in, the item that displays the patented designs and who has the capability of making a reasonably discerning decision when observing the accused item’s design whether the accused item is substantially the same as the item claimed in the design patent.

* This is not an appeal from the Northern District, but I am covering it because Chief Judge Holderman authored the Opinion. Thanks to Dennis Crouch at Patently-O for bringing the case to my attention.

Chicago IP Blog in the News

Posted in Legal News

My recent story about Ebert’s use of his "Two Thumbs Up" has been receiving a lot of attention (and I even scooped the Sun-Times):

The fact that the Patent Reform Act has stalled in Congress, which I discussed earlier this week, has been picked up by several blogs:

Are Local Patent Rules Coming to a District Near You

Posted in Legal News

According to this Law.com article, effective May 1st the Northern District of Texas, based in Dallas, has instituted local patent rules similar to those used in the more famous (at least in patent circles) Eastern District of Texas, which were modeled after the Northern District of California’s Local Patent Rules.  Additionally, the Southern District of Texas, based in Houston, is considering adopting a similar set of local patent rules.  Perhaps the courts think that the variety of direct flights to Dallas or Houston combined with the same Texas charm and hospitality available in Marshall, will give the Northern and Southern Districts a leg up on their colleagues to the east.  Of course, all of this would fall apart if Congress revises the venue requirements as Patently-O suggests it might.

But regardless of what Congress does, this spreading of special patent local rules, which I am all for, makes me wonder if the Northern District of Illinois will follow the trend and adopt their own special patent rules.  Some judges already have standing orders outlining their processes for claim construction proceedings.  For example, Judge St. Eve’s procedures can be found on her site in the "Patent Cases" section.

New Biotech/Pharma Blog

Posted in Legal News

The Chicago IP boutique McDonnell Boehnen Hulbert & Berghoff (former home of Dennis Crouch and Patently-O) has generated another patent blog:  Patent Docs.  Patent Docs is focused on the biotech/pharma arts written by a group of attorneys who are all PhDs (hence the blog’s name).  Welcome to the conversation Docs.  We are glad to have you.

Revising the N.D. Cal. Local Patent Rules

Posted in Local Rules

The Northern District of California is considering revising its patent rules (enacted in January 2001).  To start its review, the Northern District of California is seeking public comments.  Comments must be sent by December 15, 2006 to patentlocalrulescommittee@gmail.com.  The notice is here.   The Northern District of California Local Rules are not directly relevant to Northern District of Illinois cases, but because the Northern District of California’s patent rules serve as a pattern for courts across the country, including in the Northern District of Illinois, any changes to the Northern District of California’s rules could effect courts in the Northern District of Illinois and across the country.

Thanks to Dennis Crouch at Patently-O for identifying the request for comments and for an interesting post, followed interesting comments, on proposed changes.