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

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

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

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

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

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On Tuesday, September 16 the John Marshall Law School is putting on an impressive conference looking at the legacy of the Federal Circuit's Chief Judge Markey.  For those that never had the opportunity to know or experience Judge Markey, here is part of Judge Michel's tribute to Judge Markey in the Legal Times after he passed in 2006:

Leadership for Howard Markey began with setting a vigorous example. He simply heard more appeals, wrote more opinions, gave more speeches, drafted more articles, taught more law school classes, and judged more moot courts than any other member of the court. And he did so despite all his administrative duties. Meanwhile, he chaired both the board of directors of the American Inns of Court and the Committee on Codes of Conduct of the Judicial Conference of the United States. He traveled constantly and sat with every regional circuit court, the first and only judge to do so.
 

Despite a life in overdrive, he was the happiest and funniest man I ever met, routinely reeling off five or six successive jokes without pausing to recollect, or even to breathe. Family members report that he had a perfect memory, an asset especially helpful to a tireless storyteller, which he was.

(Click here for a link to the article and more on Judge Markey). If Judge Michel's description of Markey is not enough to get you to the event, Supreme Court Justice Antonin Scalia will be giving the keynote address.  I have had the privilege of hearing Justice Scalia speak a couple of times.  He is an excellent speaker and should not be missed. 

Click here for John Marshall's conference brochure and here for Patent Docs' description of the event, they are a seminar sponsor.  The registration deadline is this Friday, September 12.  I hope to see you there.

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Here are several items that did not necessarily warrant a separate post, but are worth some attention:

• Chicago blogger Evan Brown of Internet Cases recently participated in episode 16 of the This Week in the Law podcast with law blog luminaries Denise Howell (the host), Nicole Black, Marty Schwimmer and Ernie Svenson -- click here for Brown's post and a link to the podcast. Their lively discussion included numerous IP topics including: 
  • DMCA anticircumvention provisions;
  • ediscovery; and
  • the Viacom v. Google discovery issues (the parties ultimately agreed that the compelled user data could be produced anonymously).
    
• Mike Atkins did a great series of post comparing the benefits of state and federal trademark registration -- click here and here for the posts.  These posts are a great primer, if you want to understand the differences between and trade offs for state versus federal registration.
  
• The John Marshall Law School has been included in the PTO's new Law School Clinic Program.  Beginning this fall, second and third year John Marshall students will represent inventors in actual PTO proceedings.  This is a great opportunity for both the students and the inventors.  Click here for John Marshall's press release about the new program.

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I have several smaller IP-related items today, none of which warranted a single post:

• The Wall Street Journal reported last Friday that the Patent Reform Act (S. 1145) will likely not reach the Senate floor -- click here for the story.  It was widely reported throughout the first quarter that the bill was expected to be brought to the full Senate by March or April of this year.  The WSJ reported that the Act's move out of the Judiciary Committee stalled because of a stalemate over the Act's controversial damages provision.
  
• Virtually Blind hosts a Blawg Review #156 focused on, no surprise, all thinks virtual and Second Life.
  
• The John Marshall Law School is hosting a free presentation by Southern Methodist University Law School Professor Shubha Ghosh tited IP as CP:  Competition Policy Norms in Intellectual Property Law.  Click here for registration information.
  
• The final edition of the 2008 Chicago IP Colloquium is this afternoon from 4:10 - 5:50 pm.  The presentation will be by Professor Mark McKenna of the Saint Louis University School of Law about his paper Testing Modern Trademark Law's Theory of Harm.  It looks like it will be another excellent IP discussion.
  
• The Lewis & Clark Law School has a new podcast up with Chicago-Kent College of Law's Associate Dean and Director of the Program in Intellectual Property Law Graeme B. Dinwoodie. Professor Dinwoodie speaks about developing trademark defenses.

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