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Tag Archives: LexBlog

R. David Donoghue Honored With the Chicago Bar Association’s Herman Kogan Media Award

Posted in Legal News

I am proud to announce that the Chicago Bar Association has honored me, and the Blog, with the 2010 Herman Kogan Media Award.  I usually do not post about personal awards, but I am making an exception because this one stems from my work on the Blog.  I was the first winner of the Kogan Award’s new online category.  The print and broadcast category recipients of the 2010 Kogan Awards were, respectively, The Chicago Reporter and Chicago’s ABC 7 News.  I received the award for my series of posts on the Local Patent Rules at the end of 2009 — click here to read the posts.  The award comes with a $1,000 journalism scholarship, which I have given to Loyola University Chicago’s journalism school.

Here is a little bit more about the Herman Kogan Media Awards:

Established in 1989, CBA’s Herman Kogan Media Awards competition honors local journalists and legal affairs reporting. Qualified candidates in the Chicago metropolitan area submitted entries in one of three entries: Print, Broadcast or Online. The competition celebrates the life of Herman Kogan, whose career spanned more than 50 years and included positions as an editor, reporter, feature and editorial writer, historian, literary critic and radio host.

Thank you to the Chicago Bar Association and the Herman Kogan Media Award committee for this honor.  And if you are interested in hearing more about the award and how I blog, click here for an interview LexBlog did with me after the award.

Blawg Review #225: A Trademark Focus from Pike Place Market

Posted in Legal News

Seattle Trademark Lawyer Michael Atkins did a superb job hosting this week’s Blawg Reviewclick here to read it.  Atkins takes a stroll through Seattle’s famous Pike’s Place Market looking at Seattle-based blogs — Washington State Patent Law Blog, LexBlog and the China Law Blog, among others — as well as a number of trademark blogs.  I was fortunate to be featured on Atkins’s tour with last week’s post about the Lettuce trademark dispute — click here to read my post.  Thanks Mike, for a great Blawg Review and for including the Blog.

New Blogs & IP ADR News

Posted in Legal News

A new blog and several stories I have been meaning to get to, but have not had enough time:

  • Tom Patterson, from Chicago, has joined the blogosphere with the Emergency Business Litigation blog, another blog by Lexblog.  It does not have an IP focus, but some of Patterson’s first post deal with Federal Circuit decisions regarding injunctions in patent cases — click here and here to read them.  Welcome to the blogging conversation Tom.
  • The IP ADR Blog has an interesting guest post from Robert Rose discussing patent arbitration rules — click here to read the post.  Of particular interest, Rose points out the oft forgotten statutory obligation to notify the PTO of any arbitration award, which is made part of the file history.
  • Also from the IP ADR Blog, Victoria Pynchon has posted the slides that were the basis of a February 2009 CLE presentation we did about alternative dispute resolution in patent disputes, a valuable tool particularly in difficult economic times.  Click here for Pynchon’s post with the slides.

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.

Top 50 Internet & Digital Law Blogs

Posted in Legal News

I am a little late to this story, but before Thanksgiving the new e-Justice Blog published a list of the top 50 internet and digital law blogs — click here for the list.  I am honored that this blog made the e-Justice list, especially when you look at the other blogs on the list.  Here are some of the blogs, listed more or less by e-Justice’s categories:

Academic Blogs

Copyright, Intellectual Property and Defamation

New Media and Digital Law

Firms & Lawyers

News and Business

Blawg Review #186

Posted in Legal News

Blawg Review #186 is up at Res Ipsaclick here to read it.  Befitting a blog that focuses on the use of technology in the law, there is plenty of IP content:

  • Traverse Legal has a great post, including a podcast, (click here to read/listen to it) explaining that while it is possible to register your marks without a lawyer, the smart decision is to use a lawyer that is an expert in the field.
  • IP’s What’s Up makes the argument that open source licenses are a powerful use of a copyright — click here to read it.
  • The mighty IPKat looks at the best IP advice provided by its readers in response to a recent contest — click here to read the advice and IP Kat’s thoughts.

Finally, it is not directly IP-related, but the Review also looks at an interesting technology debate that is occupying the legal blogosphere — the value of Twitter as a legal marketing tool.  Calling himself a curmudgeon, David Giacalone at f/k/a argues against Twitter, or at least questions its business development value  — click here to read the post, which has generated significant discussion and response.  LexBlog’s Kevin O’Keefe responded strongly arguing Twitter’s value — click here to read it.  O’Keefe’s arguments for Twitter boil down to the fact that Twitter is a powerful networking tool.  It allows colleagues around the country and world with common backgrounds and issues to find each other and engage in far-reaching conversations.  And building networks builds both professional satisfaction and business.  I agree with O’Keefe  whole-heartedly.  But I also understand Giacalone’s uncertainty and lack of comfort with Twitter  It takes most lawyers multiple tries to get Twitter and more than that to get comfortable using it.  Hopefully, Giacalone will keep trying and figure it out eventually.

Jones Day v. Blockshopper: Amicus Filing

Posted in Legal News

Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).

As I have described in earlier posts (click here, here and here) plaintiff Jones Day sued defendants, BlockShopper LLC and two individuals associated with the website (collectively "Blockshopper"), for allegedly using Jones Day’s service marks and linking to its website in at least two articles discussing Chicago real estate transactions of Jones Day associates. Jones Day claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition. Plaintiff also moved for a temporary restraining order (“TRO”).  The parties stipulated to a TRO which the Court entered ordering defendants not to:  1) use Jones Day’s service mark; 2) use any content from or link to Jones Day’s website; or reference Jones Day in Blockshopper headlines. 

Last Friday, Blockshopper filed a motion to dismiss.  And several public interest groups — the Electronic Frontier Foundation, Public Knowledge and the Citizen Media Law Project — has sought leave to file this amicus brief supporting Blockshopper’s motion to dismiss.  Jones Day opposed the motion, arguing that the three groups and their arguments do not meet any of the Seventh Circuit’s standards for amicus filings.  I will keep you posted about the case generally and as to  whether the Court enters the amicus brief.

And the case continues to draw fairly strong legal blog interest:

The legal blog commentary continues to run heavily against Jones Day and in favor of Blockshopper.

Welcome LexMonitor Readers

Posted in Legal News

Yesterday, LexMonitor featured me as its blogger of the day — click here for LexMonitor’s page on the Blog and me.  That leads to a thank you, an apology and some disclosure.  Thanks to LexMonitor for highlighting the Blog and for all of the work the LexMonitor team does aggregating legal blog content in one place.  Next, I apologize for not posting specifically about LexMonitor when it debuted earlier this year.  In my defense, I did immediately add them to my blog roll.  LexMonitor is a great resource for identifying new legal content to follow.  They take a process that, on your own, is like drinking from a fire hose and make it manageable to find the legal blogs in your areas of interest.  Finally, full disclosure:  LexMonitor was created and is run by the great people at LexBlog who run this site for me and who I routinely credit for the great job they do on this blog and so many others.

Blawg Review #176 — Fighting for Literacy

Posted in Legal News

Blawg Review #176 is hosted by Legal Literacyclick here for the Review — on the United Nations’ International Literacy Day. Literacy is worthy of far more than a single day of focus, and it turns out that the United Nations agrees.  Apparently, we are halfway through the Literacy Decade (running from 2003 until 2012).

Legal Literacy’s Review is full of great content, including some interesting IP-related topics.  Thomas Colson at  Securing Innovations (another LexBlog site) has a very interesting post (click here) on a new series of commercials by the PTO and Invent Now, among others, aimed at encouraging 8 – 11 year old boys and girls to invent.  Colson is concerned that the commercials feed gender stereotypes and links to A Girl Named Pants his series of children’s books that motivate young girls to overcome gender stereotypes. 

I can see the stereotype concerns to a degree, but the ads that I found were pretty powerful and funny.  Click here for the LA Times article Colson links to containing a video of one add — I would love to add a suction bike to my bike collection.  And to the extent that there is stereotyping, I think it is far outweighed by the potential good of the program.  Having said that, I am impressed by Colson’s books and vision.  When my daughter is old enough, I will be reading to her about the adventures of Pants. 

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.

Blawg Review #173

Posted in Legal News

Last week’s Olympic edition Blawg Review focused on the medals. Building on that, this week I discuss the elements of a world record swim. If you were watching last week, instead of blogging, you saw 20 of them in the Olympic pool; seven by Mr. Phelps.



Nothing is more critical than preparation. A big part of preparation is tightening your stroke and cutting out unnecessary motion. Reese Morrison, at the Law Department Management blog, discusses blunt suggestions for trimming legal bills.


Endless hours in the pool alone are not enough, you need a good coach. Business development coach Cordell Parvin provides an excellent three part series at his Law Consulting Blogone, two, and three – on persistence, an important element of any Olympic training program. In an Olympic caliber display of persistence, Drug & Device Law had an exhaustive post discussing and classifying each medical device preemption case since the landmark Supreme Court decision in Riegel v. Medtronic, Inc., 128 S. Ct. 999 (2008).


You also need a support network to help you get through all of the pool time. Bruce Allen, at Marketing Catalyst, teaches us how to avoid the cocktail conversation you cannot escape from at a networking event. At Copyblogger, John Morrow explains that content is no longer king in the blogosphere, you need friends. And he teaches you how to get them. At BlawgIT, Brett Trout – who is a fighter, not a swimmer – has an interesting post about how to work together as a community to thwart webjackings (the hijacking of a website). And Mediation Channel’s Diane Levin discusses the social side of blogging, and reading blogs.


Of course, if you do not have time to practice you will never set the record. So, you need a job, or at least some cash. On that note, Harmful Error posts the great news that loan forgiveness programs were expanded this week for legal aid lawyers, state prosecutors and public defenders. 


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Where Have All the IP Addresses Gone?

Posted in Legal News

Proskauer Rose’s just launched New Media & Technology  Law Blog* has a very interesting post by Jeff Neuburger on the upcoming scarcity of IP addresses (the numeric identifier required for each unique location on the internet) — click here to read the post.  The current IP address protocol, IPv4, is a 32-bit scheme that provides about 4.3B addresses.  That is an astounding number, but according to some reports we could use all of those addresses as early as 2010 or 2011.  The most likely solution to the problem is a switch to the 128-bit scheme that is known as IPv6.  But doing that will come at the cost of switching out hardware not designed for IPv6 and retraining network operators. 

You may be wondering whether there is a legal take away from this, and here it is.  Neuburger’s post discusses the US government’s efforts to prepare for the change over by beginning to require new equipment to be IPv6 compliant.  Of course, this is just as much an issue for corporations as it is for governments.  And if we are running out of IPv4 addresses and if there is a switch to IPv6, we could see a large number of technology contract disputes and law suits over whether agreements were breached by failing to provide IPv6 ready hardware.  But those suits will be more effective if you add a IPv6 representation and warranty to your new agreements, as Neuburger explains:

If you are an attorney involved in technology transactions, at a minimum, become IPv6 aware. You might want to query your clients on the need for representations and warranties on IPv6 capability in technology transactions. And keep your eye on the horizon for legal developments related to IPv6. If the alarmists are right and scarcity of addresses is truly looming, we may see legal disputes over issues such as hoarding of IP addresses, and efforts to create a market for IP addresses, the allocation of which is currently controlled by non-profit corporations.

* The New Media & Technology  Law Blog, another LexBlog site, is off to a great start and is worth a spot in your RSS feed.  In particular, I was very impressed with the quality of the writing.

May Carnival of Trust — Addendum

Posted in Legal News

Since writing my May Carnival of Trust post (click here for the post), several others have commented on Web Strategy by Jeremiah’s post suggesting that people do not trust bloggers.  Of course, the real point of the studies Owyang cites is that people do not trust an unspecified blogger as much as their family or other unspecified news sources.  As I said before, that should be an expected result and it shows good judgment.  But it is easy to get caught up in the survey and miss the fact that people trust "their" bloggers — those that they have entered a conversation with, read regularly and, therefore, have developed a trust with.  Several others have picked up on Owyang’s post and the surveys, with similar comments.  I am posting them in an Addendum to avoid breaking the Carnival of Trust ten post rule (although I will update that post with a link to this one).  Here are some of the commentaries:

  • Kevin O’Keefe at LexBlog and Real Lawyers Have Blogs says that he must be trusted, there is no explanation for his site traffic and speaking engagements except trust — click here for Kevin’s post:

People put their butts on the line at least once a month asking me to speak in front of large groups. Just received invites to speak at the Texas Bar Annual Conference and to keynote at a Wisconsin Bar Association Conference. I don’t know any of the people who invite me. They’re reading my blog. If they didn’t trust what I was writing, would I get an invite?

Law firms, from solo’s to the largest in the country, call me for advise on blogging. The same firms subscribe to LexBlog’s blog service. No other way those folks know me than my blogging.

And for the record, Kevin is wrong, he is pretty funny.  But he is correct in that the legal community would not keep reading his blog for the humor alone, it is for his insights coupled with his delivery.

  • Kevin also cited Bill Ives at the Fast Foward Blog who had similar comments, arguing that blogs (as opposed to MSM sources) require more work on the part of readers to determine whether they should trust the blogger and on the part of the blogger to cultivate and earn that trust — click here for the post:

Blogs are conversations and they do put more responsibility on the reader to judge the material than say, the New York Times, with its army of fact checkers. But even the NYT gets it wrong some times and everyone has some type of bias. Blogs are also a medium. The NYT also has many of them. Do you trust a magazine article more than television? In each case, the answer would be it depends on the person. This is not say that communication channels do not have their own properties. Naturally, seeing someone on TV gives you more information than a magazine article. Blogs are usually the voice of a single person or a group of individuals and not an editorial board. However, a blogger has to build the trust of his or her audience by being consistent and transparent as the first commenter wrote above.

May Carnival of Trust

Posted in Legal News

Welcome to the May 2008 Carnival of Trust.  For regular Blog readers, this will be a slight departure from the case analysis format you have come to expect.  But I promise you the trust-related links will still be valuable reading for IP litigators and IP litigants.  And in the spirit of the Carnival, I will now proceed to build your trust in me by following through on that promise.

The Carnival of Trust is a monthly, traveling review of ten 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, 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. 

Do you trust me?  Jeremiah Owyang at Web Strategy by Jeremiah says you do not , unless you are related to me.  But the real point of Owyang’s post and the studies he cites is that people do not trust an unspecified blogger as much as their family or other unspecified news sources.  That is not surprising and even shows good judgment.  As Anne Reed at the Deliberations blog points out, choosing blogs is about developing trust.  You find a few that you like and trust, trust developed by entering that blogger’s conversation and developing confidence in that person’s posts, and based on your trust in those blogs, you begin to find other quality blogs:

I learned the territory one or two blogs at a time, first coming to like and trust a few blogs (and bloggers) and then following their links and blogrolls to others. 

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New Regional IP Blogs

Posted in Legal News

Since my last post listing the Blog’s "cousin" blogs — regional IP blogs – another has joined the family. The Los Angeles Intellectual Property Trademark Attorney Blog, published by Milord & Associates.  Welcome to the family. Here is the revised list:

Australian Trademarks Law Blog*

Canadian Trademark Blog

Delaware IP Law Blog

E. D. Texas Blog

Florida IP Blog*

Georgia Patent Law Blog (N.D. Georgia)

Illinois Trial Pratice Weblog (okay, it is not IP specific, but it is regional and provides excellent content)

IP Dragon(China) 

IP Legal Lounge

Las Vegas Trademark Attorney

Los Angeles Intellectual Property Trademark Attorney Blog

Maryland Intellectual Property Law Blog*

Patent Trademark Blog(some Orange County focus) 

Seattle Trademark Lawyer Blog

Tech Law Forum Blog (N.D. Cal.)

Washington State Patent Law Blog

[UPDATE]:  I was quickly reminded that I forgot the excellent Washington State Patent Law Blog, which has been added to this post, and in that process I discovered the Georgia Patent Law Blog, also added, thanks to Mark Walter’s (Washington State Patent Law Blog) blog roll.

If you know of other regional IP blogs, post a comment or send me an email and I will add them to the list.  A hat tip to Mike Atkins for pointing out the new blog at his Seattle Trademark Lawyer blog.

*These are blogs developed and hosted by LexBlog just like this Blog.

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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Anonymous Bloggers Carry on Tradition of the Federalist Papers

Posted in Legal News

There has been a lot of coverage of Troll Tracker’s recently disclosed identity.* Troll Tracker ended his anonymity a few weeks ago and now faces a libel law suit along with his employer, Cisco, based upon statements he made about a case involving Cisco — this is one of the many reasons I do not write about cases that my firm or I are involved in.

I did not intend to weigh in on this story because there was not much to add (see below for links to some of the best coverage). But then I read Joe Hosteny’s March 2008 IP Today article – click here for the article — about anonymous blogging and anonymous commenting. Hosteny is a partner in the Niro Scavone firm, a firm that was often a focus of Troll Tracker’s posts. I have not always seen eye to eye with Hosteny in the courtroom, but I found his article both very good and thought provoking.

Hosteny raises real concerns about how the anger surrounding the non-practicing entity dispute has gotten out of hand. Death threats over patent litigation (even assuming they are idle threats) cannot be tolerated. These threats make me question whether the patent litigation bar is maintaining the levels of civility and sanity required by our professional standards.

Violent threats and, more broadly, incivility have no more place in the realm of legal blogs than in the legal system. But it does not follow that anonymous blogging and commenting are inherently bad – the issue is more complex than that. Lots of electrons have been spilled over the pros and cons of anonymous blogging – blog guru Kevin O’Keefe is no fan of anonymous blogging, whereas the anonymous editor of Blawg Review provides a great service to both the legal and the blogging communities with the weekly Blawg Review, despite his anonymity.

Anonymous blogging is not the problem. The problem is with anonymous bloggers who believe that anonymity allows them to comment on cases involving themselves or their clients , or to post threatening comments (Troll Tracker, of course, never posted any threats that I am aware of). If Troll Tracker had not blogged about his client’s case and if he had stuck to the verifiable facts, he likely would not have gotten sued.

Similarly, anonymous commenting is not the problem if legal bloggers, including Troll Tracker, monitored and approved comments before** they went live, the death threats against Niro never would have been published. I moderate the comments to this Blog and, as a result, angry rants against a judge or an attorney (none have been violent) do not make it on the Blog. And that anonymity may have provided the writer with false courage. But I prevent that, and so can any blogger, by acting as a gatekeeper.

Hosteny argued that anonymity is cowardly and not in the tradition of the First Amendment because the Declaration of Independence was signed by the Continental Congress. But he leaves out that the Federalist Papers were signed with aliases. Anonymity can be useful in that it can provide courage to voice ideas that otherwise might not be interjected into public discourse. For that reason, I think there is a place for anonymous blogging and commenting, as long as anonymous bloggers do not use anonymity as an excuse to avoid the rules of our profession and of common sense.

As promised above, for more coverage of Troll Tracker and the defamation suit, see:

E.D. Texas Blog

IP Law360 (subscription required, but a very thorough history)

Patently O — discussing a related federal suit filed in the District of Arkansas, including a link to the complaint.

Prior Art Blog — detailing the history of the suit and here and here on other aspects of the story as well.

WSJ Law Blog

[Update]:  Blawg Review #151 at Lex Ferenda was just updated discussing this post.

* There are no Troll Tracker links because the site is currently either down or subscriber only.

**  Troll Tracker did remove violent and offensive comments, but only after they were posted and he became aware of them.

Unique Perspectives on Juries & Trials

Posted in Trial

I have run across a couple of items that fall outside of the Blog’s Northern District IP focus, but that are useful for all of us focused on resolving IP disputes in the courts:

  • An Idaho Business Review* article about a patent trial between Rambus and Micron reminded me of the importance of viewing trial proceedings through the eyes of the jury.   The reporter explained that after a week and a half of proceedings, much of them under seal, the Court has issued an order requiring that the jury be provided daily refreshments paid for by the United States.  That was the extent of what the reporter knew about the proceedings.  Of course, the Court likely decided numerous complex issues during the week and a half, but all the reporter, and likely the jury, saw was mysterious and sometimes frustrating delay.  Lawyers often forget how juries see repeated sidebars and morning or mid-day motion hearings.  Do your best to fill in or at least explain the gaps and delays for your jury, otherwise they will do it themselves. 
  • Patent Troll Tracker identified this blog by E.D. Texas patent defendant Desire2Learn chronicling its ongoing patent infringement trial.  This is dangerous territory for a litigant, but it could be a fascinating look at the trial process from the corporate litigant’s vantage point.

*  Why do I read the Idaho Business Review?  I don’t.  I found the article through the wonders of RSS feeds and content searches.  Thank you Kevin O’Keefe and LexBlog for teaching me the power of RSS.

Will eBay v. MercExchange Lead to Compulsory Licensing?

Posted in Damages

In a recent post on the University of Houston Law Center Faculty Blog (another LexBlog site), Ray Nimmer asks whether the Supreme Court’s recent eBay v. MercExchange permanent injunction decision will lead to compulsory licensing.  Nimmer discusses two alternatives when a permanent injunction is not granted after a patent infringement finding:

One response is simply to assess damages as to past infringement, leaving any future use of the patent for a voluntary agreement of the parties (a license) or a subsequent infringement suit for the subsequent infringements. That is clearly the preferable option, although it does raise limited issues of judicial economy.

A second alternative is to permit subsequent use by the defendant subject to the payment of a reasonable royalty imposed by the court. This is a form of compulsory licensing that rewards the wrongdoer, unless the remedy has been requested by the patent owner. Nevertheless, a panel of the Federal Circuit indicated that such a remedy may be appropriate. One wonders why.

Nimmer concludes that courts should not impose compulsory licensing for future infringement absent substantial public policy reasons:

The preconditions should be both an opportunity to negotiate a license and, failing a bargain, a request by both parties for the court to impose a royalty as part of the remedy for infringement. A patent creates a right to exclude and, where the patent owner prefers to exercise that right, it should not be forced into a licensing arrangement resulting from a case in which it prevailed on the infringement claim. There may be some cases in which vital public policy interests justify this result, but those cannot be grounded simply in the fact that the court denied a permanent injunction or the parties have not agreed to license terms. A remedy should not penalize the person to whom the remedy is awarded. 

Happy Anniversary Electronic Data Discovery Rules!

Posted in Federal Rules

Tomorrow is the first anniversary of the “new” electronic data discovery (“EDD”) rules.* In fact, the EDD rules were not new, they were intended to be a codification of the basic rules already in use by the various district courts. Despite that, a study conducted by LexisNexis at the October Association of Corporate Counsel 2007 Annual Meeting in Chicago found that corporate counsel continue to struggle with implementation of the rules and confusion about what the EDD rules required. For example, 70% of respondents believed that electronic files had to be produced in their native formats. In fact, you simply must work with opposing counsel to decide what format to produce the files in, either their native formats or some chosen standard format. This confusion should not have surprised anyone. Even in IP circles, lawyers rarely fully understand a company’s IT infrastructure and the IT people rarely understand the legal process. This disconnect can be very dangerous when it comes to meeting EDD obligations.

If your company is still struggling with the EDD rules or, worse, avoiding them completely, you can solve your problems with some relatively simple actions. First, take a breath, open your copy of the Federal Rules and read them thoughtfully and then set up a meeting with the head of your company’s IT infrastructure, the head of your company’s legal department or litigation staff and an outside counsel with EDD experience. Working together, come up with a general plan for gathering and preserving the appropriate information as cases arise. Pay special attention to how your plan fits with the company’s overall data retention policies (yes, your company should have data retention policies and the policy should be followed carefully) and how to suspend any periodic or automatic data removal when a litigation hold needs to be instituted. Once you have a plan, meet periodically to update it and to ensure that it is being followed. If you are prepared for EDD, it is an excellent litigation tool. If you are not, it is a potential disaster.

For more on EDD, check out these blogs:

Alextronic Discovery

Dennis Kennedy

EDD Update

E-Discovery Team

E-discovery 2.0

Electronic Discovery Blog

Electronic Discovery Law (another LexBlog blog)

Ride the Lightning

Sound Evidence

Hat tip to the EDD Blog Online via Legal Blog Watch for identifying the LexisNexis survey..

* Tomorrow is also the date that the next set of changes to the Federal Rules becomes effective. Fortunately, these changes are largely focused on making the rules more readable instead of adding or changing obligations. But once you are prepared for the EDD rules, you should still turn back to your copy of the Federal Rules and read through the revisions.  Look for a blog post next week highlighting some of the substantive changes.

Blawg Review #133

Posted in Legal News

Last week the intellectual property world obsessed over injunctions – specifically, a preliminary injunction hearing in the Eastern District of Virginia resulting in an injunction against the U.S. Patent & Trademark Office’s (“PTO”) new continuation rules. There was a lot of analysis about the injunction, including live blogging by Patent Practice Center Patent Blog and a lot of post-injunction analysis by, among others: 271 Patent Blog; FileWrapper; Patent Baristas; Patent Docs (and here); Patent Prospector; PHOSITA; Patently-O; WSJ Law Blog; and Washington State Patent Law Blog. For those of you who have no idea what a continuation is or just do not care about the particulars of the rules, I promise that I am done with patent continuations for this post. Honestly, I find the rules rather tedious myself. I prefer to focus on litigating patents, rather than the PTO’s prosecution rules. So, today we talk about injunctions:

According to TechCrunch, Patent Monkey received a permanent injunction when it was sold to the Internet Real Estate Group. But Patent Monkey’s patent search technology will see its injunction lifted when it is used on www.patents.com. Hopefully, for those like me who enjoyed it, Patent Monkey’s Infinite Monkey Theorem Blog will also see its injunction lifted.

Virtually Blind has an interesting report on Second Life’s* new Patent & Trademark Office, the SLPTO. No word on whether the SLPTO and the Second Life legal system generally will allow for any permanent injunctions. Right now it appears that the SLPTO will be heavily skewed toward copyright and trademark, which makes sense in a virtual world. And before we learn whether the SLPTO has any enforcement mechanisms, Blawg IT is offering to represent virtual clients before the SLPTO. I would get a retainer up front Brett – virtual clients can be difficult to track down when the bills are due.

The Patry Copyright Blog shows why Second Life injunctions may be necessary. Six Second Life players have sued a Queens man in the Eastern District of New York for trademark and copyright infringement based upon sales of goods in Second Life. I wonder if the trademarks and copyrights were registered with the SLPTO or the US PTO/Copyright Office. And does the E.D.N.Y. have authority to issue cyber-injunctions?

Promote the Progress provides an interesting piece on the long-term effects of last week’s injunction against the PTO on shaping patent reform.

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A New Regional Patent Blog for Washington State

Posted in Legal News



Since my last post listing the Blog’s "cousin" blogs — regional IP blogs – several have joined the family. The Washington State Patent Law Blog and the Las Vegas Trademark Attorney have both started in the last several months. Welcome to the family. Here is the revised list:

Delaware IP Law Blog

E. D. Texas Blog

Florida IP Blog*

Illinois Trial Pratice Weblog (okay, it is not IP specific, but it is regional and provides excellent content)

IP Dragon(China) 

IP Legal Lounge

Las Vegas Trademark Attorney

Maryland Intellectual Property Law Blog

Patent Trademark Blog(some Orange County focus) 

Seattle Trademark Lawyer Blog

Tech Law Forum Blog (N.D. Cal.)

If you know of other regional IP blogs, post a comment or send me an email (david.donoghue@dlapiper.com) and I will add them to the list.

*The Florida IP Blog is another blog developed and hosted by LexBlog just like this Blog and, as usual, it is a great looking site with easy navigation.

Chicago IP Litigation Blog Hosting Blawg Review #133

Posted in Legal News

I am hosting the 133rd weekly Blawg Review on Monday.  For those of you new to the Blawg Review, it is a round up of the best law blog* posts of the last week based upon submissions and the host’s (that’s me) own additions.  Feel free to nominate your own posts — click here for submission guidlines and a form for submitting your posts.  And check back Monday morning for Blawg Review #133.

*  I generally use the term "law blog."  The Blawg Review goes with "blawg" to mean the same thing.  There has been considerable debate on which term  is most appropriate — click here, here or here if you really want to know more about this debate from Kevin O’Keefe at LexBlog