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

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

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

• Niro went back and forth between saying that anonymous blogging was wrong and that it was harmful and should not be allowed because you could not judge the author's credibility.
  
• Crouch supported anonymous blogging, done correctly, but acknowledged that anonymous comments on his site tended to be more aggressive than those with identified authors.
  
• Crouch offered Troll Tracker an opportunity to contribute to Patently-O.
  
• Crouch sees much of this as a generational change.  Among other things, those under thirty have no expectation of privacy or concern at revealing their identity on the internet.  Those over thirty are careful with their privacy and identity, making anonymity more enticing.  That suggests that anonymous blogs will become less prevalent with time.  Troll Tracker is likely mid-thirties, putting him right on the cusp of Crouch's dividing line.
  
• Crouch's generation-split argument may have been displayed when Niro and Crouch were asked for their contact information.  Crouch told people to go to Patently-O.  Niro was uncomfortable providing his contact information and, when gently prodded, explained that he could be contacted through his firm, Niro Scavone.  Of course, Niro's reluctance could also be explained by the anonymous threats made against him in the recent past.

Finally, Business Week has a good article detailing the Troll Tracker story -- click here to read it.

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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.

IP Law360 (subscription required) has a detailed article this morning outlining Troll Tracker's history, including several quotes from Ray Niro of Niro Scavone who received substantial media attention after offering a reward for Troll Tracker's identity.  Niro reportedly likened Cisco's policy to "repairing a sidewalk after someone was hurt" and said that some of Troll Tracker's statements were "hurtful, harmful and, in many cases, 100% inaccurate."  According to the article, Niro plans to depose Troll Tracker in Illinois Computer Research, LLC v. Fish & Richardson, No. 07 C 5081 (N.D. Ill.) (Pallmeyer, J.) -- click here to read more about the case in the Blog's archives.

Another note on anonymous blogging and commenting, Rob LaGatta at LexBlog addressed the Troll Tracker situation and my anonymous blogging post last week with an important point, click here for Rob's post.  Anonymous blogging and commenting is a relatively small part of legal blogging and most anonymous material is not problematic.  It is easy to get side-tracked by the occasional offensive anonymous content.  But the vast majority of legal blogs operate without problems with either unprofessional or anonymous content.

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

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

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

Mark was a Past-Chair of the American Bar Association (ABA) Section of Intellectual Property Law. He served as a member of the 16-lawyer Council of the ABA Section of Intellectual Property Law for many years. He was the past Editor of the ABA Section of Patent, Trademark and Copyright Law, and a past Contributing Editor of the Quarterly Journal of the American Intellectual Property Law Association. He was a past chairman of the Illinois State Bar Association Section of Intellectual Property Law. He was named one of the top 10 lawyers in the state of Illinois as chosen through a peer balloting process involving 47,000 Illinois lawyers and through a research and review panel
organized by Law & Politics magazine.

Mark frequently lectured on patent law, patent trials, trade secrets, and other intellectual property matters. He served as a faculty member of the first National Institute of Trial Advocacy program specially designed to develop patent litigation trial skills. He was also an adjunct professor at the John Marshall Law School and the Georgetown Law Center, teaching courses on patent trial advocacy and enhanced use of technology in the trial of complex cases. He was also a bar course administrator for the Master Class on Appellate Advocacy, taught by the Hon. Paul R. Michel, Chief Judge, United States Court of Appeals for the Federal Circuit, at the Center for Intellectual Property Law at the John Marshall Law School.

A graduate of Purdue University, West Lafayette, Indiana, and the John Marshall Law School in Chicago, Illinois, Mark was a member of the Law Review and graduated with high honors. Mark was born in Pontiac, Michigan, January 21, 1950.

He was preceded in death by his mother, Ruth, who died in 1985 and his father, Donald W. Banner, who died in 2006. He is survived by his wife Kathie German. He is also survived by his sisters Peggy (Mrs. James) Dau of Bartlesville, OK, and Pamela (Mrs. Robert) Banner Krupka of Los Angeles, CA, and brothers Donald J. (Helen) of Pueblo, CO, and Brian E. (Cathleen) of Washington, DC. Mark is also survived by his stepmother Jean Banner of Tucson, Arizona and his step sisters Nancy (Mrs. Robert) Phipps of Nashville, TN, Helen (Mrs. George) Smith of Atlanta, GA and Louise (Mrs. Robert) Whitaker of Franklin, TN.

The family is planning a memorial service for Mark in January 2008 in Chicago, Illinois.

The family requests that memorials be made to the Donald W. Banner and Mark T. Banner Scholarship Fund at the John Marshall Law School (315 South Plymouth Court, Chicago IL 60604).

Thanks to Dennis Crouch at Patently-O for bringing this sad news to my attention.

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

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

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

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

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

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

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

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

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

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Jim Amend, a founder of the Kirkland & Ellis intellectual property group and longtime Chicagoan, was recently appointed the Federal Circuit's Chief Circuit Mediator.  Jim will take charge of the Federal Circuit mediation program in January 2007, shortly after it was changed from a voluntary to a mandatory program.

I worked with Jim while I was at Kirkland & Ellis and can say that, in addition to having extensive intellectual property litigation and mediation experience, he is an excellent person and will do a tremendous job running the Federal Circuit's mediation program.  Congratulations to Jim on this exciting opportunity and to the Federal Circuit for making such an astute appointment.  Also, a practice tip for anyone in mediation with Jim:  be prepared, Jim is extremely hard working and sharp and, I suspect, he will hold counsel in his mediations to the same high standards he sets for himself.

Thanks to Dennis Crouch at Patently-O for the heads up to Jim's appointment.

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