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

Next week, June 21-23, Chicago plays host to IAM's IP Business Congress 2009.  IAM promises that attendees will include "Chief IP Officers from Fortune 500 companies, heads of IP at other major companies, global IP thought leaders and senior policy makers."  And the conference also will include an impressive list of bloggers, including Peter Zura, the anonymous editor of Blawg Review and me, using a generously offered press pass.  The faculty for the event is very impressive, including the following confirmed speakers:

• Marshall Phelps, Corporate VP for IP Policy and Strategy, Microsoft
• Ruud Peters, CEO, Philips IP & Standards
• Carl Horton, Chief IP Counsel, GE
• Scott Frank, President and CEO, AT&T Intellectual Property
• Todd Dickinson, Executive Director, AIPLA
• Ciarán McGinley, Head of the Controlling Office, European Patent Office
• Beatrix de Russé, Executive VP of IP and Licensing, Thomson
• Keith Bergelt, CEO, Open Invention Network
• Sherry Knowles, Senior VP and Chief IP Counsel, GlaxoSmithKline
• Marcella Watkins, Managing Counsel, IP, Shell Oil Company
• Don Merino, General Manager Acquisitions, Intellectual Ventures
• Damon Matteo, Chief IP Officer and VP IP, Palo Alto Research Center

For more information on the event and to register, click here.  You can still register and if you register online using the code WC10, you will get a reduced rate of $1,350, 10% off of the full $1,500 rate.

Finally, whether or not you can make it to the conference, if you are in Chicago Tuesday night, June 23, come to Meet the Bloggers VI at the world famous Billy Goat Tavern.  It will be a great chance to meet law bloggers from Chicago and around the world, and to discuss insights gained at the conference.  I hope to see you at both the conference and the Billy Goat.

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The Administrative Office of the U.S. Courts has issued its 2008 annually report* analyzing the federal court case load for fiscal year 2008.  The Northern District of Illinois remains an important IP court, ranking fourth in IP case filings for 2008, with 385 cases filed, behind the Central District of California, the Southern District of New York and the Northern District of California.

Nationwide, patent and trademark case filings remained steady with only slight increases, but copyright case filings fell over 25%.  One other interesting note, almost four percent of patent cases terminated in 2008 went through a trial.  That is a relatively large amount of trials in the federal courts where an average of 1% of cases are tried.  The 3% difference is not enough to show a post-eBay trend of increasing trials, but it could be the beginning of such a trend.

For more analysis of the report check out Peter Zura's 271 Patent Blog and Patently-O.

*  Click here to read the report.

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As promised, the new Patent Reform Acts were introduced in Congress this week -- click here for the Senate bill and here for the House bill.  While I have not yet done a comprehensive review, I understand that the bills are largely similar.  Here are some highlights of the bills:

• They move from the current first to invent system to the international norm, first to file.
   
• Expanded reexamination and a new period of post-grant review.
   
• Damages provisions require that the specific contribution over the prior art be considered and allow consideration of licensing terms for similar noninfringing substitutes.  As Dennis Crouch points out, for alternatives in the public domain the comparable license could be free.
   
• Specifically allows for Federal Circuit jurisdiction of interlocutory claim construction appeals where the district court approves the appeal.
   
• Federal Circuit judges would no longer be required to live within fifty miles of the District of Columbia.
   
• The venue provisions are changed to narrow possible venues.

There is plenty of commentary in the blogosphere.  Here are some of the best:

• 271 Patent Blog (giving highlights, noting changes from the last version and do not miss Peter Zura's blog makeover);
   
• Patent Docs (discussing the Senate press conference announcing the Senate bill and noting BIO's response to the bills); and
   
• Patently-O (giving highlights and noting changes from the most recent attempted reforms) and here (reposting comments from Google's Head of Patents and Patent Strategy, Michelle Lee).

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Here are a few stories and announcements from the Chicago IP world:

• Hinshaw & Culbertson LLP has launched a new blog:  Practical Ediscovery.  The blog is written by a team of the firm's attorney and focuses on practical considerations and approaches for handling issues arising with the production of electronically stored information. Check out Evan Brown's first post here.
   
• Anne Reed has a post that every patent litigator should read at Deliberations -- click here to read it.  Reed looked at the issue of how and when to introduce technical jargon to juries.  Reed makes to important points:  1) trust juror' intelligence, people like to learn; and 2) despite that, do not teach the jargon both unless and until it is relevant to the jury.
   

• There is an interesting new paper out arguing for a revised venue statute by Sidney Rosenzweig, a visiting fellow at the Progress and Freedom Foundation.  Rosenzweig argues for the following rewording of the venue statute:*

  Notwithstanding subsection 1391(c) of this title, any civil action for patent infringement may be brought against a corporation only in a judicial district:

  (1) where the defendant has its principal place of business or where the defendant is incorporated;

  (2) where the defendant has committed a substantial portion of the acts of infringement and has a regular and established physical facility that it controls;

  (3) where any defendant has committed a substantial portion of the acts of infringement and has a regular and established physical facility that it controls, if there is no other district in which the action may be brought under subsections (1) or (2); or

  (4) where any defendant has its principal place of business, where any defendant is incorporated, where any defendant may be found, or where any defendant has committed acts of infringement, if there is no other district in which the action may be brought under subsections (1), (2) or (3).

*  Click here to read the report.  And a hat tip to Peter Zura for identifying the paper.

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IPWatchdog Gene Quinn recently published his list of the top 26 patent blogs, based upon Technorati rankings (Quinn only considered blogs in the top 1M of the Technorati rankings) -- click here to read Quinn's post.  Quinn manually determined which blogs counted as patent blogs, and did nice work.  Although I would add the IP ADR Blog to the list.  While I do not place much weight in blog rangings, the list identified a few new blogs that I plan to follow, and it is gratifying to see that the Chicago IP Litigation Blog has a strong reader base in the patent world.

Here are Quinn's rankings:

1. Patently-O - Technorati Rank 21,202
2. Patent Baristas - Technorati Rank 61,134
3. IPWatchdog - Technorati Rank 80,245
4. Against Monopoly - Technorati Rank 80,245
5. Patently Silly - Technorati Rank 90,082
6. Chicago IP Litigation Blog - Technorati Rank 117,073
7. PHOSITA - Technorati Rank 101,726
8. Spicy IP - Technorati Rank 129,347
9. PLI Patent Practice Center - Technorati Rank 132,753
10. Duncan Bucknell Company’s IP Think Tank - Technorati Rank 136,348
11. Patent Prospector - Technorati  Rank 152,448
12. Securing Innovation - Technorati Rank 162,007
13. Peter Zura’s 271 Patent Blog - Technorati Rank 163,794
14. The Invent Blog- Technorati Rank 167,214
15. Promote the Progress - Technorati Rank 198,166
16. I/P Updates- Technorati Rank 213,371
17. IP NewsFlash- Technorati Rank 221,777
18. Orange Book Blog - Technorati Rank 221,777
19. The IP Factor - Technorati Rank 250,588
20. Philip Brook’s Patent Infringement Updates- Technorati Rank 273,434
21. Patent Docs - Technorati Rank 300,413
22. Antiticpate This! - Technorati Rank 351,677
23. Patent Fools (now operated by IPWatchdog.com) - Technorati Rank 351,092
24. Patentably Defined - Technorati Rank 614,978
25. Steve van Dulke’s Patent Blog -  Technorati Rank 676,101
26. IP Spotlight - Technorati Rank 752,199

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Here are several Northern District and IP news stories that did not warrant separate posts:

• The Northern District's new Rockford courthouse is being named for retired Judge Roszkowski.  Judge Roszkowski was the first federal judge permanently seated in Rockford and served for over twenty years.
   
• Blawg Review #198 is up at the East Central Illinois Criminal Law & DUI Blog (click here to read it).  As you might expect based upon the blog's subject matter, there is not a lot of IP content.  But there are several Illinois-specific stories that Blog readers may find interesting.  For example, My Law Life warns that an Illinois statute makes it illegal to jog (or walk) on Illinois roadways where sidewalks are available -- click here to read the post.
   
• Several blogs are reporting that patent reform may be back on in Congress this year:  Patently-O; and 271 Patent Blog.

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Yesterday, President Obama announced that he was appointing Senator Judd Gregg (R-N.H.) to become the next Secretary of Commerce, a significant position in the intellectual property world.  As Secretary of Commerce, Gregg will oversee the PTO and have a strong voice in any patent reform that might occur while he is Secretary.  The blogosphere and mainstream media are slowly providing background regarding Gregg:*

• Patently-O
   
• Peter Zura's 271 Patent Blog (highlighting this Congressional Quarterly article which points out that Gregg once voted to abolish the Department of Commerce).
   
• Washington Post's 44 Blog.

*  I will update this post with more links if I see anything especially valuable.

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The Bilski analyzers are moving away from the opinion itself, and toward the practical impacts of the decision and the unanswered questions it left, as opinions always do.  Here are several of the best:

• 271 Patent Blog (asking whether a method for swinging on a swing meets the Bilski standard);
   
• FileWrapper;
   
• Maryland IP Law;
   
• Patently-O (and here and here and here and here); and
   
• The Prior Art.

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In re Bilski, __ F.3d __ (Fed. Cir. 2008) (en banc).*

Chief Judge Michel, writing for a nine judge majority, affirmed the Board of Patent Appeals and Interferences' finding that Bilski's invention -- a commodities trading method for hedging risks -- did not meet the 35 U.S.C. § 101 patentable subject matter requirement.  The Federal Circuit held that State Street's "useful, concrete, and tangible result" test was insufficient to determine patentability -- disagreements have already started regarding whether State Street was narrowed or overturned.  The Federal Circuit held that the Supreme Court's "machine-or-transformation" test was the only test for determining patentability:

A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

I found Judge Dyk's concurrence tracing the history of the "machine-or-transformation" test back to the Patent Act of 1793 especially interesting:

In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793).

As with any major appellate decision, we will need eighteen to twenty four months of district court and Federal Circuit decisions to flesh out and fully understand Bilski's implications.  While we argue those cases and await the decisions, there will be plenty of law review and blog analysis.  Here are some of the first (I will update with additional posts as they come):**

• 271 Patent Blog (glad to see Peter Zura back in the blogosphere);
   
• IP ADR Blog;
  
  
• Likelihood of Confusion;
  
  
• Patent Baristas;
   
• Patently-O (with Crouch's usual, in-depth analysis);
   
• The University of Chicago Law Faculty Blog (Randy Picker has an exceptionally detailed take on the opinion); and
   
• WSJ Law Blog (saying experts are torn as to whether Bilski will make it to the Supreme Court).

*  Click here for the opinion.

**  I have updated the list of Bilski blog posts with some new ones.

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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.

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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:

• 271 Patent Blog

• Agricultural Law

• FileWrapper

• IP Thinktank

• Patent Docs
  

• Patently-O

• WSJ Law Blog

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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).
  

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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):

• Likelihood of Confusion -- Ron Coleman agrees with E. Leonard Rubin, interviewed in the Chicago Tribune today, who says that the written "Two Thumbs Up" mark is pretty strong.
  
• Robert Feder of the Chicago Sun-Times -- Feder says that the "Two Thumbs Up" mark is "the most powerful and influential symbol in movie marketing."

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

• Maryland IP Law Blog -- Citing my post.
  
• Patently-O -- Dennis Crouch says that the Patent Reform Act is not just stalled, it is dead.
  
• 271 Patent Blog -- Leads with a great Simpsons' quote in saying the Act is on hold.

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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:

• Patently-O
  
• FileWrapper
  
• Patent Prospector
  
• Patent Baristas
  
• 271 Patent Blog
  
• Maryland Intellectual Property Blog -- a new regional IP blog & a new member of the LexBlog family.  Welcome to the conversation Brian.

* 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!

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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.

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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.

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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

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