Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

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 Force -- click 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.

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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. 

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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.)

This isn’t abstract or speculative. Indeed, after the release of some information regarding then-Judge Bork’s viewing habits came out in his Supreme Court confirmation hearings, Congress passed the Video Privacy Protection Act of 1988, codified at 18 USC 2710. (See the background page on this provided by the Electronic Privacy Information Center.)

I am unaware of any decisions assessing whether an online video provider like YouTube is covered by the VPPA, but it is written in sufficiently media-neutral terms that it appears that YouTube would be covered. If so, that triggers a number of obligations. The VPPA requires the destruction of records containing personally identifiable information “as soon as practicable, but no later than one year from the date the information is no longer necessary for the purpose for which it was collected.” Personally identifiable information is, unsurprisingly, a defined term and “includes information which identifies a person is having requested or obtain specific video materials or services from a videotape service provider.”

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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:

• Chicago Tribune
  
• Slashdot
  
• Tech Report
  
• ZDNet

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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.

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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.

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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."

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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. 

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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.

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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.

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The Chicago Tribune and the Washington Post have reported that the Senate confirmed Judge Filip as Deputy Attorney General yesterday, making Judge Filip the number two official in the Justice Department.  Congratulations Deputy Attorney General Filip.

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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.

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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.

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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:

Justice Breyer suggested that the “doctrine that you cannot impose equitable servitudes upon chattel” might help to decide the case.  And he returned several times to a hypothetical in which a patent holder tries to enforce restrictions on a consumer’s use of patented bicycle pedals: 

“Imagine that I want to buy some bicycle pedals, so I go to the bicycle shop….The inventor has licensed somebody to make them, and he sold them to the shop.  I go and buy the pedals.  I put it in my bicycle.  I start pedaling down the road.  Now, we don’t want 19 patent inspectors chasing me….” 

Breyer apparently finds this a troubling scenario even if the pedals come with some sort express notice of the use restrictions.  He asked whether

“if … I go in the bicycle shop and I buy the pedals and then they give me … one of these pieces of paper that has all of the 42,000 words on it and there are in these 42,000 words it says, and now you are put on notice that once you put it in your bicycle and you pedal away, they’re going to get you and you’re going to be hauled into Patent Court, then--then that’s ok?”

I don’t want to read too much into the tea leaves of this oral argument transcript.  But Breyer seems to be suggesting (in part relying on the traditional rule against chattel servitudes) that consumers would be justifiably surprised to find themselves “hauled into Patent Court” for merely using things they had lawfully acquired, even where the restriction was imposed by a patent holder by means of a written notice attached to the good.  As Henry's post suggests, the problem here is not exactly lack of notice--the information is available in the “42,000 words” in Breyer’s hypothetical.  But it may not be reasonable or even desirable to expect people (at least not retail pedal purchasers) to absorb that information.  The Court expressed this same anxiety back in Straus v. Victor Talking Machine Co., in which it refused to enforce a restriction printed on plates attached to record players after noting that “not one purchaser in many would read such a notice, and that not one in a much greater number, if he did read it, could understand its involved and intricate phraseology.” 

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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.

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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.

 

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The Chicago papers had a few IP-related articles this week. First, the Chicago Tribune reported – click here for the story -- that Chicago software company SPSS is in a trademark dispute with its co-founder and former chairman, Norman Nie. Nie has informed SPSS that he believes he owns SPSS’s trademark, which he licensed to SPSS beginning in 1976. Nie is reportedly offering to sell SPSS the mark for $20M.

Second, the Tribune reported – click here for the story – that Motorola and Metrologic Instruments settled their patent disputes regard bar code scanning and mobile computing technology for an undisclosed amount and a limited-term cross-licensing agreement. The Chicago Sun-Times ran a similar story – click here to read it -- and reported that Motorola entered the dispute with Metrologic based upon its 2006 acquisition of Symbol Technologies.

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The Chicago Tribune has had a few IP-related articles this week. First, the Tribune reported – click here for the story -- that the House is about to take up a bill that would allow an abbreviated approval process for generic versions of biotech drugs, commonly known as biosimilars or biogenerics, similar to abbreviated new drug applications. The Senate Health, Education, Labor and Pensions Committee approved a similar bill in June, called the Biologics Price Competition and Innovation Act of 2007.

Second, the Tribune reported – click here for the story – about a new book, "The Telephone Gambit: Chasing Alexander Graham Bell's Secret," by Seth Shulman -- which argues that Alexander Graham Bell, one of America’s most famous patentees, stole his most famous invention, the telephone, from his rival Elisha Gray. And Shulman argues that he was aided by attorneys and a corrupt patent examiner.  The book is due out January 7. It looks like it could be an interesting read.

Third, the Tribune reported – click here for the story -- that the Federal Circuit reversed in part the Western District of Wisconsin’s April 2007 decision which held that Google’s AutoLink and AdSense feature did not infringe HyperPhrase’s patents. The Court upheld Judge Shabaz’s decision that AdSense did not infringe the patents and remanded the case for further proceedings regarding whether the AutoLink feature infringed two of the patents in suit. Click here for a copy of the Federal Circuit decision.

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The Chicago Tribune reported last week -- click here for the story -- that Northwestern University received $700M from Royalty Pharma in exchange for certain of Northwestern's royalty rights to its patents covering pregabalin.  Pregabalin is a key component of Pfizer's Lyrica, which is used to treat nerve pain associated with diabetes, shingles and fibromyalgia.  Northwestern plans to use some of the money to fund its new nanotechnology initiative.

I will be on a panel at Northwestern's IP Law Week next month.  Perhaps in light of Northwestern's new found wealth I should have requested a speaker's fee.  Seriously though, this will be a great event and is worth your time if you are in town.  They have not published their literature on the event yet, but as soon as they do I will post it.

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On Sunday, the Chicago Tribune reported on the latest round of the Sugar v. Splenda fight (click here for the article).  An initial hearing was scheduled for yesterday in the Central District of California regarding the suit five U.S. sugar companies -- American Sugar Refining Inc., C&H Sugar Co. (owned by American Sugar), Imperial Sugar Co., Rio Grande Valley Sugar Growers Inc. and Western Sugar Cooperative (collectively "Sugar Companies") -- brought against Johnson & Johnson's McNeil Nutritionals ("McNeil") which makes Splenda.  Splenda is a sugar substitute which McNeil advertises with the tagline, "tastes like sugar."  The Sugar Companies alleged that the "tastes like sugar" advertising campaign was false advertising in violation of the Lanham Act.  And they further alleged that McNeil continued its advertisements despite knowledge that consumers were confused.  McNeil countered that consumers were not misled by its advertisements.

The parties have engaged in various out-of-court disputes as well as this action and the two cases already settled, one in France and one in the United States.  For example, the parties maintain opposing websites regarding Splenda:  McNeil's is www.splendatruth.com and the Sugar Companies maintain www.truthaboutsplenda.com. 

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New Attorney General Michael Mukasey has nominated Northern District Judge Mark Filip to be his Deputy Attorney General (the #2 position at the Department of Justice), replacing acting Deputy Attorney General Craig Morford.  Judge Filip clerked for Justice Scalia and served as a Northern District Assistant United States Attorney for five years, before briefly entering private practice and then taking the bench.  Here is what the Chicago Tribune (via the Associated Press) had to say about Judge Filip's sterling reputation as a judge:

Filip was nominated for the federal bench in November 2003, and he is widely viewed as a smart and down-to-earth jurist. He was ranked first among federal judges in terms of integrity and professionalism in a 2006 poll of Chicago-area attorneys.

Congratulations Judge Filip.  You will be missed in the Northern District.

I will keep you updated on the confirmation process and the efforts to fill the vacancy that Judge Filip's confirmation will create.

*  A hat tip to the WSJ Law Blog for the fast post regarding Judge Filip's nomination.

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On Sunday, the Chicago Tribune reported that a copyright dispute is brewing on 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 Agam originally used. 

Agam's counsel admits that VARA, the Visual Artists Rights Act, does not protect Agam's position because the work was created before 1990 and because Agam no longer owns his work.  But Agam claims to hold the copyright in the work and argues that the copyright allows him to prevent the current owner from creating a derivative work, which Agam believes the restored 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 when the wooden stump currently in the work's place is 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. 

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I, along with many others, blogged last week that the Patent Reform Act had stalled in Congress.  But Congress has changed its mind and today the House is debating its version of the bill (available here).  And experts expect some version of the bill to be passed by the House at the end of today's debate.  You can find an excellent summary of key amendments to the House bill at Tech Daily Dose.  If you want a list of each amendment to the bill, by Congressperson, go to the House website.  And it should come as no surprise that with the Patent Reform Act moving forward again both the MSM and blogs are full of commentary.  Here is some of the best:

• Chicago Tribune surveys the opinions of some Chicago-area companies.
  
• 271 Patent Blog weighs in with the President's view and a survey of news stories on the Act.
  
• FileWrapper says that the House will likely pass some form of the Patent Reform Act today, but that the Senate is not expected to consider it until October.
  
• IP Central is watching the House debate on CSPAN and says that most of it centers on procedural issues, not substance.

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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):

• Likelihood of Confusion -- Ron Coleman agrees with E. Leonard Rubin, interviewed in the Chicago Tribune today, who says that the written "Two Thumbs Up" mark is pretty strong.
  
• Robert Feder of the Chicago Sun-Times -- Feder says that the "Two Thumbs Up" mark is "the most powerful and influential symbol in movie marketing."

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

• Maryland IP Law Blog -- Citing my post.
  
• Patently-O -- Dennis Crouch says that the Patent Reform Act is not just stalled, it is dead.
  
• 271 Patent Blog -- Leads with a great Simpsons' quote in saying the Act is on hold.

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On Saturday, the Chicago Tribune reported that Roger Ebert has withdrawn the right to use his trademarked (co-owned with Siskel's estate) thumbs-up/thumbs-down rating system.  Ebert is negotiating a new contract with Disney, the show's producer, after a one year hiatus during which he successfully battled cancer.  Ebert allowed the show and his co-host Richard Roeper to continue using the thumb ratings during what he called "good faith negotiations," but recently changed his mind when he felt negotiations were not progressing sufficiently.  So far, two episodes have been taped without thumb ratings. 

It will be interesting to see whether the thumb ratings are a powerful enough mark to get Ebert the contract he is looking for.  My feeling is that we have moved from the era of thumbs to the era of more comprehensive ratings like Rotten Tomatoes.  It is much easier and more reliable to go to an internet site available whenever you want it (for example, right after you decide to go to a movie) that aggregates opinions of critics around the country, than to wait for a television program and a couple of thumbs.  But the thumbs are icons.

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The Chicago Tribune had a great article in Monday’s business section discussing how to hire a lawyer. The first suggestion is to get referrals from colleagues. This is a good suggestion, but also a dangerous one. Colleagues’ thoughts are valuable, but anyone who has been on a bad blind date knows that you cannot rely too heavily upon the recommendations of even trusted friends and colleagues when it comes to complex, personal matters. And hiring counsel is both complex and personal. Whether you are the GC of a Fortune 100 or a small business owner, your relationship with outside counsel on a litigation or business deal is a very personal one. You need counsel who can achieve your legal goals and communicate effectively with you, but that is not enough. You also need counsel that is sensitive to your business model and the constraints of your industry, eager to work with you and willing to follow your direction in the matters you give them. And, maybe more important than all of these, you need counsel that is honest with you. When you interview potential counsel – and you should interview any new counsel before hiring them – listen to what they have to say about your case. They should tell you about their plan for your success, but they should also identify problems with the case. If they do not, that should raise a red flag. A lawyer who does not warn you about problems at the outset of a representation, is less likely to do it later. And not learning about problems with your case can be very expensive. For example, not learning that new discovery shows that your claims are not as strong as you originally expected can cause a case, and the related attorneys’ fees, to drag on when you would be settling if you knew the real state of the case. So, in addition to getting referrals and interviewing,  also try to gauge whether you can trust new counsel to give you a dispassionate review of your case and warn you of any problems quickly.

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In yesterday's edition, the Chicago Tribune published a commentary on the Patent Reform Act of 2007 by Cummins-Allison Corp.'s Chairman William J. Jones -- Cummins-Allison is based in Mt. Prospect, Illinois and develops and distributes coin and currency handling/counting machines.  Jones has strong feelings about the Act and offers some unique opinions.  First, he is against "harmonizing" US law with international patent laws, arguing that the European and Japanese systems are "parochial."  He also makes the, in my experience unfair although widely held, argument that the Chinese system "specializes in intellectual property theft."  I believe if you look at recent Chinese cases or the experts on Chinese IP law -- like the excellent IP Dragon -- you will see that China has become increasingly willing to protect the intellectual property of foreign entities, as long as the entities have invested in the necessary Chinese patents, trademarks, etc.

Jones notes that at the recent Congressional hearings, no manufacturing firms testified, despite some interesting statistics:

U.S. manufacturers undertake 60 to 70 percent of the nation's research and development and hold 60 percent of its patents.

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. . . .  Roughly one-third of all patent applications are made by independent inventors, small manufacturers, universities and non-profit research groups. Their efforts are crucial for leading-edge scientific advances, and their views should be heard.

Jones is against the proposed post-grant review process because he believes it will diminish the value of patents by making their strength very uncertain.  He also suggests that instead of giving an "overburdened" PTO broad, new rule-making powers, Congress should fully fund the PTO so that it can hire and retain a high quality staff of sufficient size to expedite the prosecution of patent applications.  Finally, Jones points to what he believes is the diverse opposition to the Act, which he argues warrants taking the time for additional, robust debate.

Jones has some very strong views, not all of which I agree with.  But I do not see how additional debate and discussion could harm the Act at this point.  There are some strong dissenting voices, the Federal Circuit's Judge Michel for example.

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Abbott Labs. v. Sandoz, Inc., No. 07 C 1721, Slip op. (N.D. Ill. May 3, 2007) (Anderson, J.).

Judge Anderson denied plaintiffs'  motion for a preliminary injunction to prevent defendants Sandoz, Inc. ("Sandoz") and Teva Pharmaceutical Industries, Ltd. ("Teva") from selling a generic version of plaintiff Abbott Laboratories' ("Abbott") antibiotic cefdinir, which it markets using the name Omnicef.  Plaintiffs' original patent, U.S. Patent No. 4,559,334 (the "'334 patent"), covering a form of cefdinir expired on Sunday, May 6, 2007 at 10:59 p.m. CDT.  Plaintiffs' second patent, U.S. Patent No. 4,935,507 (the "'507 patent"), covering a crystalline cefdinir, does not expire until December 4, 2011.  Plaintiffs argued that Sandoz's and Teva's respective formulations of cefdinir (the "accused products"), which the parties agree can be classified as cefdinir monohydrate, infringed the '507 patent and, therefore, sales of the accused products should be enjoined.  The Court, with agreement of the parties, adopted a prior claim construction from Judge Payne of the E.D. Virginia for purposes of the PI determination.  Using Judge Payne's construction, the Court held that the accused products did not likely infringe the '507 patent.  First, cefdinir monohydrate only displayed four of the seven peaks in an x-ray diffraction pattern that the '507 patent identified as indicative of crystalline cefdinir within the +/-.1 degree margin of error that the Court determined was the proper construction of the '507 patent's "about" qualifier.  Second, the Court held that "trace" amounts of crystalline cefdinir that were allegedly in the accused products in addition to the cefdinir monohydrate did not likely amount to literal infringement.

The Court also held that plaintiffs had not shown a likelihood of proving infringement pursuant to the doctrine of equivalents.  First, the Court discounted plaintiffs' expert's allegation of equivalents because he did not support his opinions with "empirical or substantive evidence."  Second, the Court denied plaintiffs' argument that Sandoz's and Teva's statements that the accused products were bioequivalent to crystalline cefdinir in their ANDAs was proof of infringement.  The court noted that if bioequivalency were infringement, there could never be generics during a patent's life.

Because Sandoz's ANDA was previously approved by the U.S. Food & Drug Administration (the "FDA"), the Court's ruling meant that Sandoz was free to sell its generic beginning Sunday, May 6 at 11:00 p.m. CDT.  Teva's ANDA had not been approved, however, so it must wait until the FDA acts upon its ANDA.  You can find the Chicago Tribune's brief coverage of the decision in last weekend's Midwest Briefs.

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