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

Another sign that patent reform is heating up again:  the ABA's IP Section has sent the Senate Judiciary Committee a position paper regarding inequitable conduct reform (click here to get to the Section's advocacy page which has a link to the letter).  The ABA argues that inequitable conduct materiality should be based upon the law and standards at the time of the alleged conduct, not based upon the present day standards.  The ABA also argues that inequitable conduct decisions should continue to be made by the federal courts, not the PTO.  And finally, the ABA argues that the standard for inequitable conduct should be:

(1) that a person having a duty of candor and good faith to the PTO in connection with the patent or an application therefor knowingly and willfully misrepresented a material fact or material information to the PTO or omitted a known material fact or known material information from the PTO;

(2) that, in the absence of such misrepresentation or omission, the PTO, acting reasonably, would not have granted or maintained in force at least one invalid patent claim; and

(3) that the misrepresentation or omission occurred with a specific intent to deceive the PTO, and that such intent cannot be established by the mere materiality of the misrepresentation or omission.

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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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Last Thursday, the Senate Judiciary Committee began marking up the Patent Reform Act.  At the beginning of the Committee's public markup session, Committee Chairman Leahy (D-Vt.) stated that he wanted to finish the markup Thursday, vote on the bill and send it to the full Senate.  The Committee, however, only got through two amendments, one of which was a "manager's amendment" which just includes technical/clerical revisions."  And Leahy, prodded by several Republican senators and Dianne Feinstein (D-Ca.), agreed to provide the Committee additional time to consider the Act further.  The one substantive amendment (which you can read here) further limited venue in patent cases.  The amendment was strongly worded stating that in any patent case:

. . . a party shall not manufacture venue by assignment, incorporation, or otherwise to invoke the venue of a specific district court.

This preamble language is very interesting.  It has the potential to lead to a big increase in initial motion practice in which defendants argue that whatever entity sues them was created to create venue in the jurisdiction.  But this problem is seemingly resolved because in almost all cases plaintiff's principal place of business or state of incorporation will not create venue, it will almost always be based upon defendant's footprint and infringing activities.  The amendment goes on to specify that venue would be proper:

1. where defendant has a principal place of business or is incorporated;
   
2. where defendant has committed "substantial" infringing acts and maintains a physical facility constituting a "substantial portion" of defendant's operations; or
   
3. where plaintiff resides, if plaintiff is a university or an individual inventor.

The 271 Patent Blog also has a good post on the markup.

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Bill Patry has just published Patry on Copyright -- a seven volume treatise on copyright law and the first new copyright treatise in seventeen years according to Patry.  Patry spent seven years working on his nearly 6,000 page treatise and brings a distinguished background to the subject.  He is currently Google, Inc.'s Senior Copyright Counsel, he was a professor of copyright law at Cardozo (and an adjunct professor at my alma matter, the Georgetown University Law Center), copyright counsel to the U.S. House Judiciary Committee and Policy Planning Advisor to the Register of Copyrights.  You can see the table of contents here and you can buy Patry on Copyrights here.  You can also read Patry's own thoughts about his treatise on his Patry Copyright Blog or give him feedback on the treatise at his Patry Treatise Blog, both hosted by Google's Blogger, of course.

This appears to be an excellent, exhaustive resource for copyright practitioners and academics.  Stay tuned for more from Patry himself on his treatise.  Later today or tomorrow I will be posting the Blog's first e-interview (of Patry), which I plan to make a quasi-regular Blog feature. 

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