On Wednesday, January 25, 2023, from 1:00 p.m. to 2:00 p.m. CT, The Richard Linn American Inn of Court and the Intellectual Property Law Association of Chicago (“IPLAC”) are hosting an interactive panel discussion focusing on lessons learned in evaluating whether lawyers are satisfying their responsibilities competently and diligently, and with integrity and satisfaction. 

In advance of the meeting, questions were posed to Inn members relating to issues addressed and lessons learned regarding our responsibilities as lawyers. 

Questions might include:

  • “how do you competently and diligently satisfy the responsibilities that we have as lawyers,”
  • “how can we, as lawyers, be good public citizens having special responsibilities for the quality of justice,”
  • “what do you believe we lawyers should strive for in the legal profession,”
  • “do you have suggestions to others about thinking of these issues,”
  • “do you have suggestions to leaders in the profession about these issues,”
  • “how can we realize personal satisfaction in our responsibilities as lawyers,”
  • “how can our career and life goals be consistent with our responsibilities as lawyers,”
  • “if you had to do it all over again, would you do anything differently to satisfy such responsibilities,” etc.

Survey results will be circulated before the meeting. 

At the meeting: there will be panel discussion followed by interactive discussion with audience members, with all discussion lead by moderators (we will have more than one moderator).  

There will be three phases:

  1. panelists go around and give their perspectives on the above questions and survey results,
  2. moderators pose questions to panelists, and
  3. moderators pose questions to, and invite questions from, audience regarding the above questions and survey results. 

The virtual event is free for IPLAC Members.  Click here to register. 

On Tuesday, January 24, 2023, from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (“IPLAC”) is hosting a panel discussion focusing on the complexities and nuances of trade secrets damages.  The panel is moderated by Timothy Oliver, Grogan, Hesse & Uditsky.  Panel members include:

  • John Bone, CPA, Managing Director, Stout; and
  • David Duski, Principal, Charles River Associates

The virtual event is free for IPLAC Members and $15.00 for Non-Members.  Click here to register. 

On Wednesday, January 18, 2023 from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (IPLAC) is hosting a discussion on navigating common sticking points in technology and licensing transactions.  IP licensing and technology transactions attorneys Cole Hardy, Walgreens and Francesca Cardillo, Norton Rose Fulbright US LLP will discuss the most common sticking points in transaction involving IP, data, or technology, share negotiation tips and tricks, offer considerations to keep in mind for both licensor and licensee, and provide guidance on how to discuss these issues with your clients.

This virtual event is $15 for members and $45 for non-members.  Please register by clicking here.

The Intellectual Property Law Association of Chicago (IPLAC) is presenting a series of speed networking events.  The next, live speed networking event will be Loyola University of Chicago’s School of Law in the 13th floor faculty lounge on Thursday, January 19, 2023 from 5:40 p.m. to 8:00 p.m. CT. 

The event is free for Members and $25.00 for Non-Members.  Please click here to register.

Congratulations to Judge Feinerman who has decided to retire from the federal bench and return to private practice at the end of the year. His thoughtful analysis, kind demeanor and thorough, well-reasoned opinions will be missed.

Judge Feinerman’s move will create a third vacancy on the Northern District of Illinois bench. The others were created when Judge Norgle took inactive senior status in October and when Judge Dow left the bench to become counselor to Chief Justice Roberts.

Congratulations to Judge Dow. He left the Northern District bench to become Counselor to Chief Justice Roberts. As Counselor, Judge Dow will focus on “Court-wide policies and initiatives” and “matters of judicial administration.” Our local loss is the country’s game. Anyone who has appeared before Judge Dow knows that he is exceptionally bright and hard working. No doubt those traits will benefit him and the Supreme Court in his new role.

By Dinis Cheian on October 21, 2022

The following article by Dinis Cheian is an interesting analysis of patent extension calculation errors that Cheian claims to have found in the Patent Office’s software. I thought Chicago IP Blog readers would find it interesting.

The Patent Office’s software is miscalculating the expiration extensions of some patents. Typically, a patent expires twenty years after the filing of the underlying application. However, the Patent Office extends patent terms to compensate for certain delays in processing applications. This extension is known as PTA. By default, the PTA is automatically calculated by a computer program administered by the Patent Office. However, that program was not originally designed to compute PTA and, given the complex rules governing the calculation, it makes mistakes.

I discuss two types of these systematically observed mistakes at length in my paper. First, the program sometimes fails to detect the applicant’s delayed replies, which leads to a smaller applicant delay and an excessive PTA. I found this problem in 24,914 patents. 121 have been litigated as of 2016. Second, the dates of some correspondence between the applicant and the examiner appear backdated in the records used by the program to determine the PTA. For example, if the computer believes that an applicant’s late reply to a rejection was received earlier than it was, the computer will fail to detect the applicant’s delay. In turn, this will lead to a shorter applicant delay and a longer PTA than warranted. I observed this glitch in 2,618 patents, 21 of which have been litigated as of 2016. My list of the software’s errors is not exhaustive. I suspect there could be additional inaccuracies in the software’s calculations, impacting even more patents.

Patent prosecutors have little incentive to correct Patent Office’s mistakes when it favors their clients, if they are even aware of the errors. When a patent is awarded less PTA than it is entitled to, the applicant may challenge the Patent Office’s determination within two months after the date of the grant. Applicants routinely file such challenges as a longer patent life benefits them. In contrast, there are few incentives to correct the Patent Office when it errs in the opposite direction and awards more PTA. Under current regulations, there is no obligation to file a request to correct excessive PTA. In addition, when submitting a request to correct the PTA, even one to lower it, the applicant must pay a fee. It appears that the Patent Office sometimes refunds or does not charge the fee, but the regulation sets out the fee and does not guarantee it will be refunded. It is worth noting that requests to lower the PTA are nevertheless submitted by practitioners in some cases. Nevertheless, the incentives to submit such requests are lacking even when the applicant is aware that she was awarded excess PTA.

Until and unless the Patent Office improves its algorithms and/or changes the incentives, patent practitioners and especially patent litigators and lawyers should be on the lookout for inflated PTA. If the error is detected during litigation, defendants have options. Under 35 U.S.C. § 282(c)(2), “[i]nvalidity of the extension of a patent term . . . because of the material failure . . . by the Director [of the Patent Office] to comply with the requirements of [the patent statutes] shall be a defense in any action involving the infringement of a patent during the period of the extension of its term.” Thus, defendants in patent infringement lawsuits can raise the erroneously granted PTA as a defense to avoid paying damages during the excess period. Notably, however, there isn’t even a single case in which such a defense was raised in the almost forty years since that subsection was enacted. This lacuna suggests that patent litigators rarely double-check the PTA. However, other explanations are possible. For example, it may be the case that such defenses were raised in confidential communications between the parties or that plaintiffs do not assert patents with excessive PTA.

Another subset of patent practitioners that urgently needs to take note of these bugs is the group assisting pharmaceutical companies in registering generic drugs with the FDA. At the expiration of a patent covering a drug, entities that would like to sell generic versions of the drug need to register the generic with the FDA. The entity that files first for such a registration has the exclusive right to market the generic drug for 180 days. As part of the filing, the entity must certify that the patent covering the original drug is invalid. Therefore, lawyers on the lookout for PTA errors may discover that certain patents expire, and are thus invalid, earlier than it appears if one blindly relies on the Patent Office’s calculations. This realization would allow lawyers to file the generic registration earlier, thus securing the exclusive rights for their clients.

H-D USA, LLC v. Partnerships & Unincorporated Assocs., No. 21 C 496, Slip Op. (N.D. Ill. Mar. 14, 2022) (Tharp, J.).

Judge Tharp granted plaintiff Harley Davidson’s Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s first counterlcaim and granted in part its motion to dismiss affirmative defenses in this trademark dispute involving HARLEY DAVIDSON marks.

Defendants’ counterclaims were a bare list of legal conclusions without any supporting facts. The Court, therefore, dismissed them. Similarly, defendants’ statute of limitations, laches, estoppel, and implied license affirmative defenses were bare recitations of the law. The Court, therefore, dismissed them. Defendants’ non-counterfeit and lack-of-willfulness defenses were not stricken  because they were not affirmative defenses, but instead directly attack plaintiff’s allegations.

Nulogy Corp. v. Menasha Packaging Co. LLC, No. 21 C 1164, Slip Op. (N.D. Ill. Mar. 10, 2022) (Rowland, J.).

Judge Rowland granted defendant Menasha’s motion to dismiss for forum non conveniens and denied defendant Deloitte’s as moot in this trade secret action involving supply chain software.

The parties Agreement had a forum selection clause mandating that Canadian law governed and that any action related to the Agreement be brought in Toronto. While Nulogy’s claims are based in trade secret, not upon the Agreement, the forum selection clause still governed. The Supreme Court requires that forum selection clauses be read broadly. And here Nulogy’s claim is supported by the Agreement.

The fact that Deloitte is not party to the Agreement does not avoid the forum selection clause. Nulogy originally sued both Menasha and Deloitte in Canada, but then voluntarily dismissed Deloitte and dropped its Canadian trade secret claims. A plaintiff cannot avoid forum selection clauses by selecting its claims and forums separately.

The Intellectual Property, Information & Privacy Law has announced the 2022 Don Dunner Leadership Award will be presented at its 66th annual IP Conference on Friday, November 11, 2022.  The inaugural 2020 Award was presented to Hon. Pauline Newman, U.S. Court of Appeals for the Federal Circuit. The 2021 Award was presented to Mr. David Kappos, former Under Secretary of Commerce and Director of the United States Patent and Trademark Office.  To be eligible for consideration, award nominations must be submitted online by Monday, October 10, 2022, using this link. And if you would like to hear my story of the time I worked for Don Dunner as a summer associate, send me a note or give me a call.

Donald R. Dunner
2016–2019 Chair,
IP Center Advisory Board
Learn More about Mr. Dunner