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

IP Law & Business recently named its top 50 IP lawyers under 45 years old (free registration required).  Two of those 50 are Chicagoans -- David Callahan and James Malackowski.

• David Callahan is an IP litigator and partner at Kirkland & Ellis.  As I have mentioned before, I had the opportunity to work with Callahan early in my career.  So, I can confirm that he is a top notch litigator.  Here is what IP Law & Business said about Callahan:

A political science major from the University of Chicago, David Callahan learned electronic warfare, including cryptography, as a U.S. Army Reserve captain. The military discipline has served him well. A University of Michigan Law School grad, Callahan has commanded the defense in key patent infringement wins for 3M, Amazon.com, and Gast Manufacturing in cases covering everything from one-click Internet payment systems to chewing gum additives and dental compounds. He has excelled at big-ticket defense cases involving multiple patents and parties, where his leadership and organizational skills-to say nothing of his legal marksmanship-force plaintiffs to duck.

• James Malackowski is the President, CEO and founder of  Ocean Tomo, a Chicago-based and IP-focused merchant banc.  Here is what IP Law & Business said about Malackowski:

This University of Notre Dame-trained CPA has made a name as a patent market-maker. Twenty years ago he cofounded a firm that did patent valuations. In 2003 Ocean Tomo started offering investment banking services, and it broke new ground in 2006 with the first live auction for IP. The company has conducted six so far-the most recent in April in San Francisco-that have generated $70 million in transactions, including the $15 million sale of guitarist Jimi Hendrix's catalog and the $6 million sale of patents related to digital systems media and management. The latest innovation from Malackowski? He is trying to market insurance that would lessen the cost to companies of patent troll attacks.

Congratulations to both Callahan and Malackowski.  The honor is well deserved for both men.

• Email This
• Print
• Comments
• Trackbacks

Top Tobacco, L.P. v. North Atlantic Op. Co., No. 08 C 950, 2007 WL 2688452 (N.D. Ill. Sep. 6, 2007) (Kennelly, J.).

Judge Kennelly previously granted defendant summary judgment on all claims in this trademark infringement case regarding plaintiff’s “TOP and “Fresh-Top Canister” marks and awarded defendant’s attorneys’ fees pursuant to 15 U.S.C. § 1117(a).* The Court reduced the rates charged by defendant’s counsel Kirkland & Ellis’ summer associates from $185 to $125, more in line with paralegal rates. The Court acknowledged that Kirkland & Ellis’s attorneys showed skill “commensurate with its… high rates,”** but reduced Kirkland & Ellis’s rates because that skill did not result in the time savings (as required by the Seventh Circuit). Kirkland & Ellis billed roughly 30% more hours than plaintiff’s counsel. The Court, therefore, reduced Kirkland & Ellis’s rates to those charged by plaintiff’s counsel.

* Click here to read more about this case and related cases in the Blog’s archives.

** Having worked with Kirkland & Ellis’s lead counsel on this matter, Paul Garcia, I can confirm the Court’s praise.

• Email This
• Print
• Comments
• Trackbacks

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.

• Email This
• Print
• Comments
• Trackbacks

Using nonprivileged documents that are connected to privileged documents, such as fax coversheets or cover emails used to send a privileged report, to question a witness regarding the related privileged documents can waive the privilege.  Applying Seventh Circuit law (the privilege questions at issue are unrelated to substantive patent law, so Federal Circuit law does not apply), the Court held that plaintiff Abbott waived privilege with respect to an entire document where:  1) Abbott produced a fax coversheet from a document over which it had claimed attorney-client and work product privilege; and 2) used that cover sheet in a line of questioning regarding the underlying document, despite Abbott’s decision not to produce the underlying document.

There are several useful practice tips to draw from this case. First:  fax cover sheets that do not contain separately privileged information are generally not privileged themselves. Of course, there are exceptions and nuances to this general rule, but I suspect that many litigators claim privilege over coversheets that have no more information on them than what must be included in the privilege log anyway. In this case, the remainder of the fax was a marked-up copy of a patent application at issue in the case, but the cover sheet made no mention of the substance or title of the included document and, therefore, the cover sheet itself was not privileged.

At the beginning of my career a wise attorney  -- David Callahan of Kirkland & Ellis -- told me that privilege logs should be reviewed by at least two attorneys before they are finalized. He also drilled into me that you should never simply push the task of logging privileged documents to the youngest associate on a case. Privilege decisions are complicated and the ramifications from privilege log mistakes can be very serious. As the youngest associate on all of my cases at the time, I was thrilled by his sage advice, and I have become more convinced of it over time.

The final practice tip:  you must make all of your arguments. Attorneys tend to focus their arguments only on either the attorney-client privilege or the work product privilege, excluding the other. In this case, Abbott alleged that the document was protected by both work product and attorney-client privilege, but did not bother proving that the document was work product. The Court noted that waiver of attorney-client privilege does not automatically waive work product protection, and did not address work product protection because Abbott had not made its case as to work product.

• Email This
• Print
• Comments
• Trackbacks (1)