Jones Day v. Blockshopper: Lighting the Legal Web on Fire

Posted on September 17, 2008 by R. David Donoghue

Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).

As I have described in earlier posts (click here and here) plaintiff Jones Day sued defendants, BlockShopper.com and two individuals associated with the website (collectively "Blockshopper"), for allegedly using Jones Day’s service marks and linking to its website in at least two articles discussing Chicago real estate transactions of Jones Day associates. Jones Day claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition. Plaintiff also moved for a temporary restraining order (“TRO”).  The parties stipulated to a TRO which the Court entered ordering defendants not to:  1) use Jones Day's service mark; 2) use any content from or link to Jones Day's website; or reference Jones Day in Blockshopper headlines.  Blockshopper has a deadline of this Friday, September 19, to file a motion to dismiss
 
It is not surprising that the suit has gotten a lot of interest in the legal blogosphere.  Here are some of the most significant posts:
  • Consumer Law & Policy Blog -- considering the merits of the claims.
     
  • [UPDATE]:  Las Vegas Trademark Attorney -- pointing out that individuals could avoid being the subject of a Blockshopper story by purchasing through a trust.
     
  • Legal Blog Watch -- questioning the PR ramifications of the suit.
     
  • [UPDATE]:  MediaPost -- noting that Blockshopper's Florida stories also run in the South Florida Sun-Sentinel based on a deal with the Tribune company.
     
  • Techdirt

While I generally save my commentary for the opinions, there is one point that needs to be made.  Many bloggers are using an alleged quote from Judge Darrah (I did not hear it and have not seen a transcript of the hearing, so cannot confirm it) warning Blockshopper that defending the suit would be very expensive.  Unless the comment was made in a hostile or aggressive manner, which I very much doubt and which has not been suggested in the posts I have seen, that is simply a statement of legal reality.  Defending federal intellectual property cases has become expensive, very expensive.  And defense costs are a factor in the calculus of every defendant's business decisions about  a law suit.

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Obviousness Redux: Arm-chair Quarterbacking KSR v. Teleflex

Posted on May 1, 2007 by R. David Donoghue

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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