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

John Marshall's Summer 2008 edition of its Review of Intellectual Property Law is on bookshelves everywhere, plus it is online (click here for the table of contents of the current edition with links to pdfs of each article).  Some of the highlights in:

• The text of Chief Judge Michel's address to the Federal Circuit Judicial Conference in which he discussed the state of the Circuit and asked Congress to add a fourth law clerk for each appellate judge to speed the Federal Circuit's output;
   
• An article by R. Mark Halligan arguing for the addition of a trade secret misappropriation cause of action to be added to the Economic Espionage Act of 1996; and
   
• Hal Wegner's discussion of the impact of the Supreme Court's patent exhaustion decision in Quanta v. LG; and
   
• Daniel Sullivan's student arguing that an Article I patent tribunal should be created and that patents should know longer be subject to trial by jury.

Whether you agree or disagree with the authors, this edition has some provocative arguments.

 

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The Winter 2008 edition of the John Marshall Review of Intellectual Property Law has been published and is available online by clicking here.  It includes several interesting articles, including:

• An argument for making stage directions copyrightable, Jennifer J. Maxwell, Making a Federal Case for Copyrighting Stage Directions: Einhorn v. Mergatroyd Productions, 7 J. Marshall Rev. Intell. Prop. L. 393 (2008); and
  
• John W. Osborne, Justice Breyer's Bicycle and the Ignored Elephant of Patent Exhaustion: An Avoidable Collision in Quanta v. LGE, 7 J. Marshall Rev. Intell. Prop. L. 245 (2008), arguing that the Supreme Court should chart its own course regarding patent exhaustion, instead of adopting the parties' positions in Quanta v. LG (click here for more on the case in the Blog's archives):

The Federal Circuit held in LGE v. Bizcom that patent exhaustion could be disclaimed by contract.

The confusion regarding patent exhaustion evident in the Federal Circuit’s LGE v. Bizcom decision can be entirely eliminated by strict adherence to the Supreme Court’s Univis Lens decision. Univis Lens makes clear that the sale of an article embodying the essential features of a patent claim results in the exhaustion of that claim.

But patent exhaustion is reflective of the scope of patent rights granted by statute. A statutory grant of rights should not be expandable by private contract. The Supreme Court should thus reverse in Quanta v. LGE. 261 This conclusion applies equally to any type of patent claim, i.e., component, apparatus, composition, system, combination, method, or process claims. Identifying the essential features of a patent claim, i.e., the patentably distinct features, clarifies the exhaustion analysis, results in predictability, and eliminates the confusion between the doctrines of exhaustion and implied license.

 

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The John Marshall Review of Intellectual Property has published an article by Ray Niro senior partner of Niro Scavone, traditionally a patent plaintiff's firm, calling for an end to name-calling in the patent world:  Raymond P. Niro, Who is Really Undermining the Patent System -- "Patent Trolls" or Congress?, 6 J. MARSHALL REV. INTELL. PROP. L. 185 (2007).  First, he traces the history of the term "patent troll" for patent holding companies and then he suggests a few less than pleasant nicknames for the attorneys that defend corporations against patent suits.  And as someone who often, although not exclusively, defends companies in patent suits the names hurt Ray, they really hurt.  But seriously, the article is very interesting, raises some provoking points and is worth a read.

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