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

At the request of Federal Circuit Chief Judge Michel, an all-star panel was established to create a comprehensive set of model patent jury instructions -- click here to download them.  The panel included patent litigation heavy weights like Don Dunner and federal judges -- Judges Ward (E.D. Texas) and Whyte (N.D. Cal.).  The Federal Circuit has not officially endorsed the jury instructions, but they are very comprehensive and deal with just about every recent case law development.  In particular, they provide an excellent glossary of patent terms for the jury (something that should be in every set of patent jury instructions, but often is not) and they provide two KSR obviousness instructions, one for if the jury is making the final determination and one if the judge does (the panel could not come to a consensus on what the correct reading of the law was). 

The one instruction I had hoped to see that was missing was an instruction for awarding royalties on post-verdict sales -- see the MTTLR Blog on the issue here or read commentary on Judge Clark's plan to submit post-verdict damages to the jury here at Michael Smith's E.D. Texas blog.  If anyone has seen an instruction for post-verdict damages, send it to me and I will post it for all to consider.

You can also read more about patent jury instructions in the Blog's archives -- click here for the Seventh Circuit's model patent jury instructions and here for a list of jury instructions Northern District judges have offered as precedent in IP cases.

Hat tip to Dennis Crouch for linking to the new model jury instructions here at Patently-O.

• Email This
• Print
• Trackbacks

Here are several IP posts that you should check out:

• The MTTLR Blog's Lauren Strandbergh has an interesting post (click here for it) about the implications of the Google Book's settlement and how the Book Rights Registry -- a Copyright Clearance Center or ASCAP-like entity that will, among other things, distribute proceeds from out-of-print books to the authors or rights holders  -- will change the publishing industry.  Strandbergh raises the right questions, but we will only get answers as we ee how the system works.
   
• [UPDATE:]  Speaking of the Copyright Clearance Center and ASCAP, the WSJ Law Blog has a post today (click here to read it) based upon this WSJ story (subscription required for the full text) about two new companies that are aggregating patents and guaranteeing never to assert those patents against their members.  It is not clear from the story if they plan to assert them against non-members, but it is an interesting move in the struggle between non-practicing entities and corporations that feel targeted by patent litigation.  I believe there have been industry-specific versions of these companies in Europe for some time.  As I understand some of those entities, the do assert their patents against non-members to help fund operations.
   
• Victoria Pynchon offers advice for dealing with those uncomfortable Thanksgiving political conversations with family and friends at her Settle It Now Negotiation blog -- click here to read it.  The advice translates well for unwinable conversations with opposing counsel.
   
• This week's Blawg Review is up at LawyerCasting -- click here to read it.  It provides lots of advice for lawyers dealing with the tough economic times.

• Email This
• Print
• Trackbacks

Here are some interesting IP-related posts and because everyone (at least in Chicago) still seems to have last week's election on their minds, the first is election related:

• The MTTLR Blog's Dorothy Eshelman has an interesting post on whether the use of debate clips by, among others, the candidates involved is fair use -- click here to read it.  I agree with Eshelman's conclusion that it is probably not fair use.  And I agree that debate footage should be dedicated to the public domain, at least on a limited basis.  It would be an easy matter for debate commissions to require that for the privilege of filming the debate networks agree that their footage be available in the public domain so long as it is not used near in time to the debate itself (perhaps within an hour) and so long as clips are limited to no longer than a few minutes or one question and set of answers. 
   
• The MTTLR Blog's Sherri Nazarian looks at the application of the Computer Fraud and Abuse Act ("CFAA") to hacking VP candidate Sarah Palin's email and argues that the CFAA needs to be modernized -- click here to read the post.  Nazarian explains that the email hacking was not enough to trigger the CFAA, enacted in 1984.  Perhaps it is time to update the 24 year old CFAA to meet the massive changes in technology.

• Email This
• Print
• Trackbacks

Here are several stories that did not warrant a full post, or that were so well done by another blogger that there was no point in recreating the wheel:

• The Federal Circuit upheld Judge Coar's preliminary injunction in Abbott v. Sandoz, No. 05 C 5373 -- click here to read the Federal Circuit's opinion and here to read the Blog's prior posts on the case.  Dennis Crouch at Patently-O has a good post explaining the central issue of the case -- a defendant's burden of proof regarding invalidity in the likelihood of success analysis.  Judge Newman wrote the majority decision with Judge Gajarsa dissenting.  Crouch sees the case as a "good vehicle" for en banc review of the preliminary injunction standard.
   
• Ocean Tomo is holding its 8th IP auction at home in Chicago this Wednesday and Thursday.
   

• Michael Sadowitz at the MTTLR Blog has a great post (click here to read it) discussing one of the big post-eBay unknowns, who sets post-verdict damages when a permanent injunction is not issued, judges or juries.  Sadowitz looks at a string of Eastern District of Texas cases letting juries set post-verdict damages.  Sadowitz also notes that the few courts that have looked at the issue have split as to whether post-verdict damages can be severed from the damages portion of the trial. 
   
• Finally, having mastered all things drug and device related, the Drug & Device Law blog has moved into the patent realm, with some excellent analysis by their colleagues Kevin McDonald and Larry Rosenberg of Jones Day.  The post (click here to read it) discusses a recent Federal Circuit decision which held that cash payments made to settle Hatch-Waxman patent litigations do not violate antitrust laws, under certain conditions:

On October 15, 2008, the Federal Circuit joined the growing list of federal courts to hold that the use of cash payments to settle Hatch-Waxman patent litigation does not violate the antitrust laws as long as (1) the settlement excludes no more competition than would the patent itself and (2) the claim for patent infringement and/or validity is not a “sham,” that is, not “objectively baseless.” In In re Ciprofloxacin Hydrochloride Antitrust Litigation, No. 08-1097, 2008 WL 4570669 (Fed. Cir. Oct. 15, 2008), a unanimous panel of the United States Court of Appeals for the Federal Circuit affirmed the summary judgment granted to Bayer by the United States District Court for the Eastern District of New York, holding that Bayer’s settlement of patent litigation with a generic pharmaceutical manufacturer did not violate the antitrust laws.

• Email This
• Print
• Trackbacks