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

I have missed the first few presenters in the Chicago-Kent & Loyola University Chicago IP Colloquium, but the next presentation is set for tomorrow, Tuesday, April 8, in Room 305 at Kent at 4:10 pm.  Professor R. Polk Wagner of the University of Pennsylvania Law School will discuss his article Did Phillips Change Anything?  The article poses a question that should interest all patent litigators and I am sure there will be a lively discussion.

The Chicago Tribune ran three law-related, non-IP stories that are worth a read over the weekend:

• A profile of Jenner & Block's new managing partner Susan Levy -- click here for the story;
  
• A long story on the disparity in starting legal salaries and the consistency in law school tuition rates -- click here for the story; and
  
• An excerpt by Chicago attorney R. Eugene Pincham, who died Thursday, from Your Witness: Lessons on Cross-Examination and Life from Great Chicago Trial Lawyers, which goes on sale Monday at www.yourwitnessbook.com -- click here for the story.  The essay details how Pincham prepared for trial and is a must read for all trial attorneys.  Pincham's excerpt got my attention.  I will be getting a copy of the book and will post a review when I am done with it.  Here is how the Tribune described Pincham:

a pioneering African-American lawyer and champion of unpopular causes. His colorful oratory, which drew on personal history, made him a legend in Chicago courthouses.

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There is a debate brewing in the patent litigation community over the correct scope of a state institution's waiver of 11th Amendment immunity when that institution asserts its patents. In Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999), the Supreme Court held that state institutions were immune from patent infringement suits. Of course, if a state institution asserts a patent claim against a party, immunity is generally waived as to that party for counterclaims. But the Federal Circuit recently held in BPMC v. California Dept. of Health (Fed. Cir. 2007), that when the California Department of Health (“Cal. DoH”) intervened as a plaintiff in a patent suit (which is considered a waiver of immunity), it is only a waiver as to that suit. So, when the original suit was dismissed because of improper venue, the waiver was rescinded. As a result, the defendant in the first case, BPMC, could not bring a declaratory judgment suit that mirrored the original suit because of the Cal. DoH’s 11th Amendment immunity. 

The Federal Circuit’s decision has ignited substantial controversy (click here for the WSJ Law Blog’s article on the subject and click here for IP Biz’s responsive blog post) and some are predicting that this will be the next patent case that the Supreme Court takes on cert. It is an interesting issue, but not one that we see often in the Northern District, which caused me to investigate whether Chicago-area colleges are prolific patentees. None makes the top ten, like my alma mater the University of Michigan – Go Blue! But there is some substantial patenting going on at Chicago-area universities. The following chart show the number of patents assigned to the identified universities or their related entities between 1969 and 2005:

As you can see from the chart, this issue has significant consequences for Chicago-area schools. I will keep you posted as the case develops.

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Tomorrow afternoon the last installment of the Chicago IP Colloquium will feature Professor Pamela Samuelson of the University of California, Berkeley, School of Law
discussing her paper:  What Section 102(b) Excludes from Copyright Protection and Why.  The event will start at 4:10 PM in Loyola's Rubloff Reception Room.

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This afternoon the latest installment of the Chicago IP Colloquium will feature Professor Robin Feldman, University of California, Hastings College of the Law discussing her paper:  The Role of Science in Law.  The event will start at 4:10 PM in Loyola's Rubloff Reception Room.  Unfortunately, work will interfere once again and I will not be able to be there, but I am looking forward to the final installments of this year's Colloquium on April 10th and 24th -- hope to see you there.

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This afternoon is the second installment of the 2007 Chicago IP Colloquium.  Professor Margaret Chon of the Seattle University School of Law will be discussing her paper Intellectual Property "from Below": Copyright and Capability for Education,  starting at 4:00 4:00 in the Rubloff Reception Room at Loyola (25 E. Pearson).  It should be a great presentation.

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Last Wednesday the Chicago IP Alliance held its second annual Chicago IP Day at Loyola.  It was, no surprise, an excellent program providing an information-packed day.  I do not have the time to summarize all of the presentations, but I will give some highlights.  George McAndrews, McAndrews, Held & Malloy, gave a very interesting presentation outlining his views on the Supreme Court's recent eBay v. MercExchange opinion requiring the use of the standard permanent injunction test to determine whether a permanent injunction should be granted after a patent infringement judgment.  Essentially, he argued that the Supreme Court's ruling contradicts the constitutional grant of a limited monopoly.  His presentation led to some spirited debate at various tables during the excellent lunch in Loyola's beautiful new conference room atop the law school.

The day's keynote presentation was by the USPTO's Deputy General Counsel and Solicitor General John Whealan.  John's presentation lived up to my advance billing.  He gave his take on the Supreme Court's recently increased interest in the patent laws.  While I cannot do all of his remarks justice, he outlined three instances in which he felt the Supreme Court was taking patent appeals.  First, circuit splits -- splits between the Federal Circuit  case law and the law of a regional circuit pre-Federal Circuit.  Second, and maybe the most obvious, splits between different Federal Circuit panels.  And third, on Cert. View of the Solicitor General ("CVSG").  CVSG is a process initiated by the Court, when they ask the Solicitor General for its view on whether the Court should grant cert.  The Solicitor General works with the relevant governmental entity, the USPTO in the case of patents, and hears arguments from each side of the case before sending the Supreme Court its recommendation.  Whealan stated that CVSG had been used once for a patent issue prior to 2000 and 17 times since then.  Once again, if you get the chance to hear Whealan speak, do not pass it up.  You always learn something and he is always an entertaining speaker.

Great job to the folks at Loyola and Kent for putting together an excellent and educational day.

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Wednesday, February 7 is IP Day in Chicago.  This annual event at Loyola (where I previously taught Legal Writing) will focus on a hot topic for IP litigators -- the Supreme Court's recent active role in defining intellectual property law.  You can see from the event brochure that the day is full of great speakers focused on very interesting topics.  Of special note, John Whealan, the USPTO's Deputy General Counsel for IP and Solicitor, is giving the key note speech.  I have heard Mr. Whealan speak on several occasions and can confirm that he is an excellent speaker who always provides a very interesting and thoughtful perspective on any issue he addresses.  This is an event that you should not miss.  I certainly will not miss it, if you see me there please say "hello."

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Chicago-Kent College of Law and Loyola University Chicago School of Law  (where I previously served as an Adjunct Professor of Legal Writing) are jointly sponsoring and hosting the Chicago Intellectual Property Colloquium.  The Colloquium brings six nationally renowned IP scholars to Chicago to discuss their current IP research. The presentations look very interesting.  They start January 30th and run through April on Tuesday afternoons (schedule after the jump).  Each lasts just under two hours and they rotate between Kent and Loyola.  

Attendance is by invitation only.  If you would like an invitation, contact Patricia O'Neal at Kent -- poneal@kentlaw.edu.  I will be attending as many as I can and blogging about them afterward.  If you see me, please say "hello."

Here is the schedule:

January 30, 2007, Chicago-Kent College of Law, Room 305
Professor Glynn Lunney, Tulane University Law School
Paper: Copyright as a Coordinating Mechanism

February 13, 2007, Loyola University Chicago School of Law, Room TBD
Professor Margaret Chon, Seattle University School of Law
Paper: Constitutionalizing the WTO: Intellectual Property's Balance in the Context of Global Social Welfare

February 27, 2007, Chicago-Kent College of Law, Room 305
Professor Laura Heymann, William & Mary School of Law
Paper: The Public Domain in Trademark Law

March 27, 2007, Loyola University Chicago School of Law, Room TBD
Professor Robin Feldman, University of California, Hastings College of the Law
Paper: The Role of Science in Law

April 10, 2007, Chicago-Kent College of Law, Room 305
Professor James Thuo Gathii, Albany Law School
Paper: What History Teaches Us About International Protection of Intellectual Property Rights: The Case of Least Developed Countries

April 24, 2007, Loyola University Chicago School of Law, Room TBD
Professor Pamela Samuelson, University of California, Berkeley, School of Law
Paper: What Section 102(b) Excludes from Copyright Protection and Why

A copy of the paper to be presented will be posted on this website approximately two weeks before each presentation.

Papers presented and discussed at past Colloquia are available here.

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