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

As I mentioned several days ago, Northwestern's excellent IP Law Week series begins Monday, January 14.  The student IP group is hosting a panel each day next week.  The Monday through Thursday panels will run from noon until 1:15.  Friday's panel starts at 1:40 and ends at 2:35.  All events will be held in Rubloff 140.  The panels are listed below and promise to be very interesting.  I am part of Monday's Patent Reform panel, and I look forward to seeing you there.

• Monday: Patent Reform – Motivations, Impact and Controversy
  
• Tuesday: Balancing the Right to Life vs. the Right to Patent
  
• Wednesday: Copyright Law and Media Distribution over the Internet
  
• Thursday: Patent and Pharmaceutical / Drug Issues
  
• Friday: KSR v. Teleflex and Patent Prosecution

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The Chicago Tribune reported last week -- click here for the story -- that Northwestern University received $700M from Royalty Pharma in exchange for certain of Northwestern's royalty rights to its patents covering pregabalin.  Pregabalin is a key component of Pfizer's Lyrica, which is used to treat nerve pain associated with diabetes, shingles and fibromyalgia.  Northwestern plans to use some of the money to fund its new nanotechnology initiative.

I will be on a panel at Northwestern's IP Law Week next month.  Perhaps in light of Northwestern's new found wealth I should have requested a speaker's fee.  Seriously though, this will be a great event and is worth your time if you are in town.  They have not published their literature on the event yet, but as soon as they do I will post it.

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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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Northwestern University statistics professor Bruce Spencer concluded in a recent paper that juries  provide accurate results 80% of the time. The paper, "Estimating the Accuracy of Jury Verdicts” was recently released online prior to a planned publication in this month’s issue of the Journal of Empirical Legal Studies (if you do not want to wade through Spencer’s statistical analysis and discussions, Northwestern created a very detailed press release that is a good start). Spencer considers two studies of 271 criminal juries in which the presiding judge filled out a survey explaining what the judge believed the correct verdict to be prior to hearing the jury’s verdict. Approximately the juries agreed with the presiding judges approximately 80% of the time. Spencer is careful to point out that a jury that disagrees with a presiding judge is not necessarily wrong. But he explains that jury-judge agreement is a reliable indicator of jury accuracy. Spencer also argues that his study is based upon a relatively limited data set, and that his study should not be a basis for broad conclusions so much as additional research.

As you might imagine, Spencer’s study has generated lots of blogosphere commentary. Anne Reed of the Deliberations blog (an excellent blog and my source for this post -- thanks Anne) has an interesting prospective. She argues that the study highlights the tension between the jury’s job – applying the facts to the law and determining whether the party with the burden has met that burden – and what the jury thought its job would be – seeking truth and justice:

In short, the relevance of Prof. Spencer's work to trial lawyers may be not in what it says about juries, but in what it says about jurors.  From high-school dropouts to university professors, they come to court with a clear, and often mistaken, idea of what their task is.  If your case depends on correcting that idea, you may need to work harder than you imagined. 

I think Reed makes an interesting point. But I took something a little more positive away from Spencer’s work. I was very impressed that juries and judges agreed 80% of the time. As a child, my dad (a criminal defense attorney) routinely asked my family and me to predict the outcomes of his trials. We were usually correct. My dad was not. At some point during law school, I stopped being able to predict his case outcomes. The law changes how you think. Perhaps lawyers become too clouded with burdens of proof and rules of evidence to appreciate how a jury sees a trial. As a federal district court law clerk, I had a similar experience. I saw a number of trials and as we waited for the jury, we would often try to predict the results in chambers. The only people who reliably predicted the results were those without law degrees. So, the 80% accuracy rate suggests to me that juries are doing a good job of putting aside their Law & Order notions of the courtroom and making the parties meet their burdens.

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In January, Cisco's General Counsel Mark Chandler gave a speech at Northwestern's Securities Regulation Institute that made major headlines.  Because several in-house friends and colleagues have mentioned it to me recently, I thought it was worth a post.  Anyone involved in the private practice of law should take the time to read it.  It highlights an issue that is critical to achieving a client's desired results and to developing a strong relationship between a client and its outside counsel -- aligning the interests of the counsel to those of the client.  Chandler's speech resonates with me because when I was in-house, I struggled to align my outside counsel's interests with those of my company.  It seems that it should be an easy task, but many outside counsel do not get it. 

Here is an excerpt from the speech:

From the law firm think perspective, “sales” too often means a one to one relationship with a lawyer who bills by the hour. As a client, I can tell you what I want to buy is access to information, strategy, and negotiation, and, in the case of litigation, to courtroom skill as well.

There’s a fundamental misalignment at work here. Law firms cannot afford to own the business risks of their clients, have a lot of employees to pay and also have to allocate the limited resources of extraordinary star partners. On the other hand, we clients want access to information and counseling and want to pay for value received. Put most bluntly, the most fundamental misalignment of interests is between clients who are driven to manage expenses, and law firms which are compensated by the hour.

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F]irst, winners will be those who are able to standardize services to meet clients’ cost management and predictability needs where very good is good enough. Second, those who can differentiate themselves by providing the top notch of customized services, where that is needed, will also win. 

As you can see, it is very provactive.  Private practitioners should read the speech, I can assure you your clients are reading it.  For further discussion and analysis check out:

WSJ Law Blog

Legal Blog Watch

shlep:  the Self-Help Law ExPress

My Shingle

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According to this Chicago Tribune article, 'Struck By Lightning' 3 Times Over, three recent Northwestern grads Andrianna Kastanek (2005), Jessica Phillips (2006) and Katherine Shaw (2006) are headed to the Supreme Court next term.  The three will clerk for Kennedy, Alito and Stevens, respectively.  Congratulations to each and to Northwestern.  The school on the Lake will a U. of Chicago size presence on the Court next term.

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