Patent News: Patent Reform & Supreme Court Shortlist

Posted on May 6, 2009 by R. David Donoghue

Here are a few stories that do not warrant a full post:

  • The mainstream media and the blogosphere are buzzing with predictions of who is on President Obama's shortlist for replacing Justice Souter  The Northern District's Judge Castillo and the Seventh Circuit's Judge Wood are both making many of the lists -- check out one list at the Daily Writ.  Both excellent choices.  Over the weekend, the Chicago Tribune ran a story about a local expectation that someone connected to the University of Chicago would be appointed to the Supreme Court during the Obama presidency.  I also wonder if the Northern District's Judge St. Eve is or should be on some shortlists.
     
  • Ronald Slusky is bringing his two-day patent claim drafting seminar to Chicago May 19-20.  Slusky promises to teach "a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims.  Through this interactive seminar, participants will enhance their skills in a classroom setting."  I have not attended Slusky's seminar myself, so I cannot speak to its value, but it definitely looks interesting.

  • Last week the House held hearings about the Patent Reform Act.  Check out some commentary on the hearings at Patently-O.
     
  • I got out of the habit of posting each week's Blawg Review, but last week's was both too good and too unique to pass up.  Blawg Review #209 is up at John Hochfelder's New York Injury Cases Blog (another LexBlog site) -- read it here.  Hochfelder tells the moving story of his father's life, the life of an American hero.   Blawg Review #210 is also available at the China Law Blog -- click here to read it.  It is also an excellent Review based loosely on the 90th anniversary of China's May 4th Movement.
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Trademark Plaintiff Entitled to All Defendants' Revenue

Posted on September 30, 2008 by R. David Donoghue

WMS Gaming Inc. v. WPC Gaming Prods. Ltd., No. 07-3585, Slip Op. (7th Cir. Sep. 8, 2008) (Wood, J.).*

Judge Wood delivered the Seventh Circuit’s opinion reversing and revealing Judge Manning’s damages award. Plaintiff-Appellant WMS Gaming (“WMS”) alleged that defendants (collectively “PartyGaming”) infringed its JACKPOT PARTY and SUPER JACKPOT PARTY marks. Defendants chose not to participate in the suit. The Northern District, therefore, entered a default judgment for WMS and a permanent injunction. WMS sought $287M in damages, an amount equal to PartyGaming’s reported U.S. revenues during the relevant period. The Court, however, held that WMS was entitled to damages, not an equitable accounting of all of defendants revenues and awarded approximately $900K per year, or $2.7M total. As an initial matter, the Seventh Circuit held that Fed. R. Civ. P. 54(c) requires that in the case of a default judgment the award cannot differ from or exceed the type and amount of requested damages. Because WMS’s complaint and its subsequent pleadings all requested both an equitable accounting and actual damages, either were an allowable damages award.

Having determined that an equitable accounting was an appropriate remedy, the Court explained that WMS was entitled to an award of PartyGaming’s revenues attributable to PartyGaming’s trademark infringement. Further, WMS’s burden was only to prove PartyGaming’s revenue. WMS did that by proving PartyGaming’s $287M of U.S. revenues during the relevant period. The burden then shifted to PartyGaming to prove which portions of its revenue were not attributable to its infringement. The Seventh Circuit, therefore, reversed and remanded to the Northern District.

*  Click here for the opinion and click here for a podcast of the oral argument.

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