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

I am slow in posting this because of an early November patent trial in the Northern District (a resounding win). But my delay does not change how honored I am to have been selected by Chicago Lawyer magazine as one of Chicago's 40 Under 40 lawyers for 2010. Click here to read the article.

I am very thankful to each of my clients that nominated me, including those quoted in the article. I am especially honored that each of them took time out of very busy schedules to nominate me.

I would also like to congratulate the other IP lawyers that were honored this year:

• Christopher Carani (McAndrews Held & Malloy);
   
• Thad Chaloemtiarana (Pattishall McAullife);
   
• Christina Martini (DLA Piper); and
   
• Michael Nutter (Winston & Strawn).
   

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I published an article  in the most recent edition of the John Marshall Review of Intellectual Property Law surveying the application of the Twombly "plausibility" pleading standard, in place of the former any set of facts regime, to patent cases -- The Uneven Application of Twombly in Patent Cases: An Argument for Leveling the Playing Field (click here to read it).  I found that district courts have largely followed the Federal Circuit's one case addressing Twombly, which unfortunately involved a pro se plaintiff, and held that Twombly did not change the pleading standards for patent plaintiffs.  But despite that ruling, many district courts are requiring that patent defendants plead affirmative defenses and, in some cases, counterclaims to the higher plausibility standard.  This creates a harmful dichotomy which can be remedied in two ways:  1) as some courts already do, use strict Local Patent Rules to require early disclosures of plaintiff's claims followed in short order by defendant's defenses; or 2) as at least the Western District of Wisconsin already does, require patent plaintiffs to identify the asserted claims and the accused products.  Either or both level the playing field for the parties and come at little cost to plaintiffs who already have a Fed. R. Civ. P. 11 pre-suit investigation requirement.

In addition to my article, there are several excellent pieces in Volume 8, Issue 1 of Review of Intellectual Property Law, including:

• European IP attorney Paul Cole provides a Eurpoean view of the KSR obviousness standard -- click here to read the article;
   
• Timothy Trainer looks at inconsistent international application of TRIPS and discusses what can be done to better protect intellectual property worldwide -- click here to read the article.
   
• Lawrence Ebert (of IPBiz fame) draws lessons from the patenting and licensing of the transistor -- click here to read the article;
   

• Vangelis Economou argues that a covenant not to sue should not destroy a court's declaratory judgment jurisdiction over a patent defendant's invalidity and inequitable conduct counterclaims and that the Federal Circuit should overturn its Super Sack decision -- click here to read the article;
   
• Nicholas Dernick looked at sovereign immunity -- click here to read the comment;
   
• Graham Liccardi considered the Computer Fraud & Abuse Act as a vehicle for getting federal jurisdiction of trade secret disputes -- click here to read the comment; and
   
• Mark Petrolis argued that fair use should not be an absolute defense to a moral rights violation -- click here to read the comment.

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This Thursday, November 20 at noon central time, I am presenting a one hour program audio conference on drafting and negotiating effective settlements.  The program is not IP-specific, but will be very useful for IP lawyers and litigants, as well as general commercial litigators.  I will focus on knowing your needs and those of your opponents, using relationship building to create an effective agreement built for long-term success, and tips for writing long-lasting, realistic agreements that fit the needs of the parties and the realities of their business operations.  Click here to read more about the presentation, and here to register for it.  The program's costs $199, although I understand you can invite as many people from your firm as you would like to participate on the call.

The program is being put on by the National Constitution Center, which hosts a regular series of CLE programs.  For example, on Tuesday, November 25, the NCC is hosting a program entitled IP Issues In Business Transactions: What Every Lawyer Needs To Know.  That program will be presented by Brian Kelly, a California-based IP licensing partner of Manatt, Phelps & Phillips.
 

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"There's an element of this we just have to live with," said Dave Donoghue, an attorney with DLA Piper who specializes in intellectual property litigation. "It's impossible to have large-scale social networking sites, which people clearly want, without having some risk of this."

Greater policing of social networking sites would be impractical, Donoghue said, comparing it to air travel.

"To make air travel 100 percent safe, the background checks and checks of personal possessions of each individual getting on an airplane would be so cumbersome, time consuming and expensive, it would make air travel impractical," he said. "There has to be a balance."

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This morning the Chicago Tribune ran an article (click here for the Tribune's piece) based upon IFI Patent Intelligence's ranking of 2007's top U.S. patent assignees -- click here for IFI's press release.   The article focused on Motorola's movement from number 34 in 2006 to 44 in 2007.  Motorola explained that it has shifted focus from a goal of being one of the largest patent assignees to a more limited portfolio focused around Motorola's core technologies.  I was quoted in the story about the value of what I refer to as "strategic patenting":

Motorola's approach is a more common one across industries, said David Donoghue, special counsel at DLA Piper in Chicago who specializes in intellectual property. In general, most companies are "focusing their patenting efforts on their most important technologies and their biggest innovations -- the things that differentiate them from their competitors," Donoghue said.

There is also value in having a large patent portfolio, particularly if you need to use your portfolio for cross-licensing or defensively against a patent-aggressive competitor, or if you are not sure which of your technologies will drive your industry and profits in five or ten years. 

Shortly after reading the Tribune article this morning, an IPLaw 360 article caught my attention (click here for the story, subscription required).  The article discussed a study by Morgan Lewis attorneys Craig Opperman and Carina Tan (to read the Intellectual Asset Management article about Opperman's and Tan's research, click here on Opperman's biography and click the link to the article in the upper right hand corner of the page).*  Opperman and Tan argue that a high volume, low cost (per application) patenting strategy has a greater final cost than a strategic patenting strategy in which a company pays more for each individual application, but files fewer applications clustered around their core technologies.  They also offer to provide a spreadsheet proving their analysis to anyone who contacts them and asks for it.  It is an interesting premise.  Of course, it does not appear to take in to account those companies that have a high volume strategy without unnaturally driving down their patent costs.  I think few would argue that, if a company has the resources either in terms of in-house prosecutors or prosecution budget, more high value patents are better than fewer high value patents. 

*  I would provide you a pdf of the article, but I want to stay on the right side of the copyright laws.

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