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

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 Blog -- click here to read it.  It is also an excellent Review based loosely on the 90th anniversary of China's May 4th Movement.

• Email This
• Print
• Trackbacks

As promised, the new Patent Reform Acts were introduced in Congress this week -- click here for the Senate bill and here for the House bill.  While I have not yet done a comprehensive review, I understand that the bills are largely similar.  Here are some highlights of the bills:

• They move from the current first to invent system to the international norm, first to file.
   
• Expanded reexamination and a new period of post-grant review.
   
• Damages provisions require that the specific contribution over the prior art be considered and allow consideration of licensing terms for similar noninfringing substitutes.  As Dennis Crouch points out, for alternatives in the public domain the comparable license could be free.
   
• Specifically allows for Federal Circuit jurisdiction of interlocutory claim construction appeals where the district court approves the appeal.
   
• Federal Circuit judges would no longer be required to live within fifty miles of the District of Columbia.
   
• The venue provisions are changed to narrow possible venues.

There is plenty of commentary in the blogosphere.  Here are some of the best:

• 271 Patent Blog (giving highlights, noting changes from the last version and do not miss Peter Zura's blog makeover);
   
• Patent Docs (discussing the Senate press conference announcing the Senate bill and noting BIO's response to the bills); and
   
• Patently-O (giving highlights and noting changes from the most recent attempted reforms) and here (reposting comments from Google's Head of Patents and Patent Strategy, Michelle Lee).

• Email This
• Print
• Trackbacks

The Patent Reform Act is on the Senate’s calendar and is expected to be voted on in February. The version voted out of the Senate Judiciary Committee is different than the version passed by the House. Experts expect that, instead of forming a joint committee to resolve the differences which generally requires a second vote by both chambers, the House will vote on any version of the Patent Reform Act passed by the Senate.

That means that it is time to take a close look at the Senate version of the Patent Reform Act. The damages and venue provisions continue to be some of the most significant and hotly-contested. And it is no surprise that the various stakeholders are making their positions heard loudly again. I considered analyzing each provision of the current Senate bill, but Patent Docs beat me to it and did an excellent job:

• First to File
  
• Assignee Filings, Mandatory Publication, and Third Party Submissions
  
• Interlocutory Decisions & Venue
  
• Damages
  
• Applicant Quality Submissions & Micro-Entities
  
• Post-Grant Procedures
  
• Inequitable Conduct Provisions
  
• Late Patent Filings         

Several other blogs are also keeping a close eye on the stakeholders and the sausage-making aspects of the Patent Reform Act, among the best:

• 271 Patent Blog
  
• Filewrapper
  
• IP Biz
  
• Patent Baristas
  
• Patently-O
  
• Maryland IP Law Blog (and here regarding the increased internet coverage of Patent Reform during February)

• Email This
• Print
• Trackbacks

With Patent Reform not expected to be considered by the full Senate before January 2008, the House appear to be turning its focus to copyright reform.  The Maryland Intellectual Property Law Blog has a series of posts on the new copyright legislation (click here and here to read them).  The most recent bill would prevent lawsuits from being dismissed for unintentional errors in copyright registration forms and would give courts discretion to treat compilations as more than one work for statutory damages purposes.  Treating compilations* as multiple works for damages is significant because it increases the potential award for infringing a compilation from a maximum of $150,000 (the maximum willful infringement award for a work) to multiples of $150,000 depending on how many separate works the court determines the compilation to be.

*  Compilations are grouped works such as collections of short stories, magazines with multiple articles or databases.

• Email This
• Print
• Trackbacks

This week the House Judiciary Committee sent its version of the Patent Reform Act of 2007 to the full body for a vote.  The damages provisions that Federal Circuit Chief Judge Michel publicly spoke against remained in the House bill, but the controversial post-grant review process was removed completely, instead of being limited as many interested parties are suggesting.  The Senate continues to markup its version of the Patent Reform Act, but so far has tightened venue requirements and is debating the damages provisions.  The Patent Reform Act feels like a long breakaway in the Tour de France.*  When a group of riders is leading the peloton (the large group consisting of most of the riders in the race) they each want to win the day's race, but in order to do that they must work together until the last 200-500 meters of what may be a 200 km ride.  If they stop cooperating before the last several hundred meters, they become disorganized, slow down and get swallowed by the peloton.  They are generally exhausted from their efforts in the breakaway and have no chance of winning once they rejoin the peloton -- all of their individual efforts are thrown away because they stopped cooperating with their competitors too early.  Cooperating with competitors is difficult and counter-intuitive, but is often the only way to achieve individual success.  The Patent Reform Act is just such an effort, but it looks like the interested parties may not win this race.

You can read more about Congress's deliberations at:

• Patently-O
  
• FileWrapper
  
• Patent Prospector
  
• Patent Baristas
  
• 271 Patent Blog
  
• Maryland Intellectual Property Blog -- a new regional IP blog & a new member of the LexBlog family.  Welcome to the conversation Brian.

* Forgive the analogy, but I love the Tour and today is the first individual time trial of this year's race.  Go Levi, Alberto & the rest of the Discovery Channel team!

• Email This
• Print
• Trackbacks (1)