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Tag Archives: Gene Quinn

Patentability at the Supreme Court: Bilski Oral Arguments

Posted in Legal News

The Supreme Court hears oral argument today in Bilski v. Kappos.  The Court will decide the proper test for Section 101 patentability and will either decide or at least significantly impact the patentability of software and business method patents.  Here are the questions presented:

  1. Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas." 
  2. Whether the Federal Circuit’s "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. § 273.

For more on the history of both the Bilski case, check out my recent article with my colleague Mike Grill in the Northwestern Journal of Technology and Intellectual Property.  Patently-O has compiled the amicus briefs — click here for the briefs supporting Bilski or neither party, and here for the briefs supporting the government.  The briefs supporting the government include a brief by a group of Internet Retailers that, I am proud to say, cites my law review article arguing for an even application of the Twombly pleading standard as to both patent plaintiffs and patent defendants — click here for the amicus brief and here for my article from the John Marshall Review of Intellectual Property Law.

Click here for the SCOTUSBlog’s preview of the argument.  For post-argument CLE options, click here for a list of courses compiled by Patent Docs and here for information on a CLE from IPWatchdog’s Gene Quinn, who plans to attend oral arguments.

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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Top Patent Blogs

Posted in Legal News

Gene Quinn has done some great work in developing a list of the top 50 patent blogs at IPWatchdog, based on a combination of objective and subjective criteria — click here to read the post.  With all of the usual caveats about the value of top blog lists and competitions, I am proud that the Chicago IP Litigation blog came in at number 28 and the top regional US patent blog.  I am honored to be among the top regional patent blogs, including Washington State Patent Blog, California Biotech Blog,* and Georgia Patent Law.  I am also proud to be among the numerous Chicago patent blogs that made the list, including Patent Docs, Orange Book Blog and the 271 Patent Blog.

Here is the top 50:

  1. Patently-O
  2. IPWatchdog.com
  3. IP Kat
  4. Spicy IP
  5. Patent Baristas
  6. Intellectual Property Watch
  7. Patent Docs
  8. 271 Patent Blog
  9. BlawgIT
  10. Patent Prospector
  11. The Invent Blog
  12. IP Think Tank and The Prior Art
  13. -
  14. Orange Book Blog
  15. IPJUR and European Patent Caselaw
  16. -
  17. Promote the Progress
  18. IP NewsFlash
  19. Anticipate This!
  20. Patentably Defined
  21. India Patent
  22. Intellectual Asset Management
  23. Against Monopoly
  24. Patent Circle
  25. I/P Updates
  26. PHOSITA
  27. IP Spotlight
  28. Chicago IP Litigation
  29. The IP Factor
  30. Patent Arcade and File Wrapper
  31. -
  32. Securing Innovation
  33. Patents 101 and IP Estonia
  34. -
  35. PatLit
  36. Just An Examiner
  37. The Business of Patents
  38. Patentability
  39. Inventive Step
  40. Holman’s Biotech IP
  41. Washington State Patent Law
  42. California Biotech Law
  43. Patent Infringement Updates and Patent Assassins
  44. -
  45. Russian Patents
  46. Georgia Patent Law
  47. Patentnapsis
  48. Honoring the Inventor
  49. OC Patent Lawyer
  50. Nanomedicine & IP

*  Another blog by LexBlog.

Chicago IP Litigation Blog is a Top Patent Blog

Posted in Legal News

IP Watchdog’s Gene Quinn is continuing his quest to identify the top patent blogs.  As a starting point he used traffic-based ratings from Technorati and Alexa to identify 50 of the most read patent blogs.  But Quinn did not stop there.  In order to add a subjective evaluation of the blogs, he is asking you to vote for your favorite and identify those that you follow here — if you chose to vote for this blog, thank you.

I am generally not a fan of best blog competitions because blogging is so personal to both bloggers and blog readers.  But as the wise folks at Securing Innovation* pointed out, surveys like Quinn’s benefit the entire intellectual property community by highlighting and promoting the best of the blogosphere.

Here is Quinn’s list of top patent blogs in alphabetical order:

*  Thank you to Securing Innovation for putting together the hyperlinked list of blogs and giving me permission to copy them into this post.

Ten Commandments for Trying Patent Cases

Posted in Legal News

Gene Quinn at IPWatchdog recently posted his notes from Chief Judge Holderman’s Ten Commandments for Trying Patent Cases presentation at a recent Thomas Jefferson School of Law symposium.  I have had the opportunity to hear versions of the presentation a couple of times and learn something new every time.  Here are Judge Holderman’s ten commandments.  Thou shalt not try a patent case to a judge or to a jury without:

  1. A clear theory for victory
  2. Targeting your final argument
  3. Anticipating your opponent’s arguments
  4. Speaking understandable words
  5. Telling the story
  6. Using visuals
  7. Organizing the exhibits for the decision maker
  8. Presenting your theme early and often
  9. Being straight forward and focused
  10. Remembering you are “ON STAGE”

Some of the ten seem relatively obvious as you read them, but even the obvious ones are valuable reminders as you head into the stress of trial preparation.  One that always jumps out at me is organizing exhibits for the decision maker.  Far too many trial teams simply line up their exhibits in numeric order or the order they were shown at trial without thoughtfully organizing the exhibits so that they tell a story for the jury.  If you have a chance to see Judge Holderman give a version of this talk, do not miss it.

IP News: ADR & Copyright Damages

Posted in Legal News

Here are several items from around the web that are worth your attention:

  • The latest edition of Doug Lichtman’s IP Colloquium is available here and it is another excellent listen.  The program looks at copyright’s statutory damages regime through the lens of music downloading.  Lichtman moderates an impressive group of experts and stakeholders in the debate.  It would be worth the time, even if CLE credit was not available, but it is.
  • Congratulations to Victoria Pynchon of the IP ADR Blog and Settle It Now on her move to ADR Services — click here to read Pynchon’s post about the move.
  • The Alternative Patent Dispute Resolution Project at San Diego’s Thomas Jefferson School of Law has an interesting survey up about how ADR should be used in patent cases.  No results yet, but I will discuss them here when they are made available.  The survey follows up a survey done ten years ago by IPWatchdog’s Gene Quinn.  Click here to take the survey.

Most Read Patent Blogs

Posted in Legal News

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

Here are Quinn’s rankings:

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

PTO Preliminarily Enjoined From Using New Continuation Rules

Posted in Legal News

This morning, the Eastern District of Virginia held a hearing on SmithKline’s motion for a preliminary injunction against the PTO to prevent the new continuation rules from becoming effective tomorrow, November 1st — click here for the Blog’s coverage of the case this morning.  Gene Quinn and John White of the PLI Patent Practice Center Blog, who attended the hearing, are reporting that the Court preliminarily enjoined the PTO from making the new continuation rules effective.  Of course, the injunction is only preliminary so there is no way to tell what the ultimate result will be.  But everyone that was busy trying to file one last continuation today and worried about whether the PTO’s e-filing system would crash under the weight of all of the last minute filings, can put down their pens and rest easy.  The deadline may still come, but it is no longer today.