Northern District & IP Legal News

Several stories and updates that are worth a mention, but do not warrant a separate post:

  • I was going to write a post explaining new Federal Rule of Evidence 502, but Beck & Herrmann at Drug & Device Law beat me to it and did an excellent job (actually, they did not, but their colleague David B. Alden of Jones Day  did) -- click here to read the post.  Every litigator should read FRE 502 for themselves and then read the Drug & Device Law post or some other guide.  It is a significant rule, even though it codifies much of what was already the standard practice.
     
  • Anne Reed at Deliberations provides a series of links to the most recent edition of The Jury Expert -- click here for Reed's post.  If you do not already subscribe to The Jury Expert, do it now.  This is a fabulous publication.  My favorite article is by Oklahoma State's Edward Burkley and Darshon Anderson, discussing translating the science of persuasion into the courtroom.  Anyone who makes it their business to persuade judges, juries, colleagues or even their spouse should read this article.  Much of the article will not be new to anyone who studies the art of persuasion.  But at a minimum it is an excellent distilling of important persuasion techniques and everyone will learn or rethink a few things. 
     
  • Patent Reform is back, or at least Minority Whip Senator Kyl (R-AR) has introduced a new patent reform bill.  It is hard to imagine there is much traction in the midst of a presidential election and all of the economic unrest swirling around Washington.  But you can read more about the bill at Patent Docs and the 271 Patent Blog.

Quanta v. LG: Patent Exhaustion

Quanta Computer, Inc. v. LG Elecs., No. 06-937, 553 U.S. ___ (2008).

The Supreme Court concluded its latest review of the patent laws Monday when Justice Thomas delivered the Court's succinct, unanimous decision in Quanta v. LG.  Client obligations this week prevent me from providing a detailed analysis today.  But, no surprise, there is plenty of commentary out there already.  For more about decision, check out:

Northern District & IP News: Pro Bono & Patent Reform

Tomorrow I will be back to case analysis, but there is some Northern District news and some excellent IP and litigation blog posts worth reading, here they are:

  • Ninth Annual Pro Bono and Public Interest Awards -- The Northern District and the Federal Bar Association are seeking nominations for excellence in pro bono and public interest work. Nominations should be based upon work performed in civil cases before the Northern District which are no longer pending. Send nominations by March 28 to:

Amy Rettberg, Executive Law Clerk
Email: amy_rettberg@ilnd.uscourts.gov
Chambers of the Chief Judge James F. Holderman
219 South Dearborn Street, Suite 2548
Chicago, Illinois 60604

  • Patent Reform is Moving Forward -- The Senate is preparing to vote on the Patent Reform Act after its spring recess (yes, it is spring already in DC).  Here is some additional coverage of the Act's status:

271 Patent Blog -- looking at the latest amendments to the Act.

Maryland Intellectual Property Blog -- looking at the latest amendments and questioning whether proponents have the sixty votes necessary for cloture, thereby avoiding a filibuster.

Patent Docs -- taking sides, but asking you to call your Senators regardless of which side you take.

  • Check out the newest entry to Chicago's law blog scene, the Lean & Mean Litigation Blog.  It is not IP-focused, but it is an interesting read for any commercial litigator or litigant.
  • William Patry at Patry on Copyright has an interesting post about the difficulties of serving corporate entities based upon a District of the District of Columbia case involving a pro se plaintiff.  The best advice, of course, is to hire counsel because if you do not get the party served properly, you have no case.
  • The Seventh Circuit affirmed Judge St. Eve's ground breaking opinion in the CLC v. Craigslist case.  The Seventh Circuit held that an ISP is exempt from cases based upon user content when the case attempts to treat the ISP as a publisher of the content.  This is considerably narrower than most of the other circuits, which have held that Section 230 exempts ISPs from essentially all suits based upon user content.  For more coverage, check out the WSJ Law Blog (which erroneously elevates Judge St. Eve to the Seventh Circuit), Internet Cases, and the Technology & Marketing Law Blog (very detailed analysis of Judge Easterbrook's opinion).

Chicago IP Blog in the News

My recent story about Ebert's use of his "Two Thumbs Up" has been receiving a lot of attention (and I even scooped the Sun-Times):

The fact that the Patent Reform Act has stalled in Congress, which I discussed earlier this week, has been picked up by several blogs:

Can Patent Reform Cross the Finish Line?

This week the House Judiciary Committee sent its version of the Patent Reform Act of 2007 to the full body for a vote.  The damages provisions that Federal Circuit Chief Judge Michel publicly spoke against remained in the House bill, but the controversial post-grant review process was removed completely, instead of being limited as many interested parties are suggesting.  The Senate continues to markup its version of the Patent Reform Act, but so far has tightened venue requirements and is debating the damages provisions.  The Patent Reform Act feels like a long breakaway in the Tour de France.*  When a group of riders is leading the peloton (the large group consisting of most of the riders in the race) they each want to win the day's race, but in order to do that they must work together until the last 200-500 meters of what may be a 200 km ride.  If they stop cooperating before the last several hundred meters, they become disorganized, slow down and get swallowed by the peloton.  They are generally exhausted from their efforts in the breakaway and have no chance of winning once they rejoin the peloton -- all of their individual efforts are thrown away because they stopped cooperating with their competitors too early.  Cooperating with competitors is difficult and counter-intuitive, but is often the only way to achieve individual success.  The Patent Reform Act is just such an effort, but it looks like the interested parties may not win this race.

You can read more about Congress's deliberations at:

 

* Forgive the analogy, but I love the Tour and today is the first individual time trial of this year's race.  Go Levi, Alberto & the rest of the Discovery Channel team!

Patent Reform Act: Senators Limit Venue

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.

Northern District of Illinois is a Top Five Patent District

Peter Zura has an excellent post at his 271 Patent Blog about the latest statistical analysis of patent litigations by Professor Paul Janicke of The University of Houston Law Center -- you can read Prof. Janicke's study here or get a copy of his related PowerPoint slides here.  Of particular note to readers of the Blog, the Northern District remains in the top five districts based upon the number of patent filings, with almost 5% of the nation’s patent cases filed here. Zura also notes that the median verdict was $4.2M, which is almost the median cost litigants pay to take a $25M+ patent case to trial ($4.5M according to the 2005 AIPLA survey).  Finally, post-eBay permanent injunctions are denied 25% of the time, as opposed to 16% pre-eBay.

Obviousness Redux: Arm-chair Quarterbacking KSR v. Teleflex

KSR v. Teleflex, 550 U.S. __ (2007).

A unanimous Supreme Court rolled back the Federal Circuit's teaching, suggestion or motivation obviousness test in favor of the Court's prior, and substantially broader, test as set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).  Justice Kennedy delivered the Court's opinion and called the Supreme Court's approach to obviousness "broad and flexible."  The Court also noted that because the parties did not dispute the prior art, the claim's scope or the level of ordinary skill in the art and because obviousness is a legal question, the district court was correct to grant summary judgment in this case.

In addition to bringing the Fed. Cir. down to size, the Supreme Court also took a swipe at the PTO:

We need not reach the question whether the failure to disclose [the prior art reference] during the prosecution . . . voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption - that the PTO, in its expertise, has approved the claim - seems much diminished here.

The KSR decision opens up obviousness and will make obviousness a much larger issue in patent cases.  And whatever else the "new" old law may do, it will keep patent litigators very busy for years to come.  You can download a PDF of the Court's opinion from the Blog's archives.

Here is a list of links to other KSR commentary across the internet, as you can see you could read about KSR all week:

Patently-O

Prof. Sarnoff via Patently-O

WSJ Law Blog (with interesting comments from several key players and practicioners)

Patent Docs

Infinite Monkey Theorem

File Wrapper

271 Patent Blog

Tech Dirt

Patent Prospector

Fire of Genius and here

Orange Book Blog (for the decisions effect on pharma patents)

Michael Barclay of Wilson Sonsini via the SCOTUS Blog

Dan Bromberg of Quinn Emanuel via the SCOTUS Blog

Chicago Tribune