June 2009

Team USA placed an impressive third in the international Patent Cup Regatta. Team USA was skippered by Chicago patent attorneys Gary Ropski, President of Brinks Hofer, and Leif Sigmond, a former Managing Partner at McDonnell Boehnen Hulbert & Berghoff. This year’s Cup was held at the Yacht Club de Ilhabela, located on the island of Ilhabela on the northeast coast of the Brazilian state of Sao Paolo. Ropski’s and Sigmond’s crew included: Marcus Thymian of McDonnell Boehnen and Derek Minihane , in-house counsel at Intermolecular. In 2007, the team also placed third when the competition was in Venice. Team USA won the United States’ first Patent Cup in 2006, when the event was hosted in Chicago. Congratulations Team USA!
The Cup was created in 1989 by a German patent attorney and a French patent attorney to foster camaraderie and relationships among IP lawyers internationally. The Cup is held in a different country each year, with the host country organizing the event, providing vessels and setting the rules.
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Continue Reading Chicago-Skippered Team USA Places Third in Patent Cup Regatta

Heriot v. Byrne, No. 08 C 2272, Slip Op. (N.D. Ill., Apr. 9, 2008) (Ashman, Mag. J.).
Judge Ashman issued this Order finding that certain of defendants’ allegedly privileged documents were privileged and ordering that others be produced. The Court did not discuss specific documents or the analysis that went into the decisions. But the Court did provide the following list of general explanations for why some documents asserted to be privileged were in fact not privileged and had to be produced:
* not confidential;
* did not reveal privileged communications, directly or indirectly; or
* the advice was that of accountants, not lawyers, and was not used to assist the lawyers in giving legal advice.
Both young lawyers preparing privilege logs and senior lawyers reviewing them for exchange would do well to read this list. It covers most of the common reasons documents are erroneously withheld as privileged.
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Continue Reading Court Orders Production of Allegedly Privileged Documents After In Camera Review

SPSS Inc. v. Nie, No. 08 C 66, Slip Op. (N.D. Ill. Apr. 2, 2009) (Darrah, J.).
Judge Darrah denied the parties’ cross-motions for summary judgment. Plaintiff SPSS sought a declaratory judgment that defendants, SPSS’s founders and former officers, were estopped from asserting any rights pursuant to the parties’ Trademark Agreement. Defendants countersued for trademark infringement. While still officers of SPSS, defendants entered a Trademark Agreement with SPSS by which defendants gave SPSS rights to use the SPSS trademark. Defendants argue that SPSS’s continued use of the SPSS mark is an infringement. SPSS argued that it owns the mark and, as proof, cited various documents signed by a defendant when SPSS went public. In those documents, defendants allegedly made assurances that SPSS owned its trademarks and otherwise failed to disclose the Trademark Agreement.
The Court denied plaintiff’s summary judgment motion because the parties disputed defendant’s state of mind when the documents at issue were signed. Because estoppel required a finding as to defendant’s intent when he signed the documents, summary judgment was not appropriate. Similarly, the Court denied the parties’ cross-motions regarding SPSS’s trademark infringement claim. There were factual disputes regarding defendant’s conduct during the public offering, which party made the first sale using the SPSS mark, and SPSS’s knowledge of the Trademark Agreement.
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Continue Reading Alleged TM Owner’s State of Mind is a Question of Fact

IP Business Congress 2009 comes to Chicago in about two weeks, June 21-23, 2009 — click here for registration information. In honor of such an impressive group of IP lawyers coming to Chicago, I am hosting Meet the Bloggers VI on Tuesday evening June 23 starting at 5pm.
The IPBC is at the beautiful Four Seasons Chicago, but in order to make sure that attendees get a well-rounded taste of Chicago, Meet the Bloggers VI will be held at the world famous Billy Goat Tavern. The Billy Goat is just down and below the street from the Four Seasons at 430 N. Michigan Avenue. Go to the Tribune Tower on Michigan Avenue and take the stairs below the sidewalk to find the Billy Goat. Those who have a long history in the IP blogosphere will remember that the Billy Goat was also the site of Meet the Blogger III (I am on the left side of the second picture). Also, I want to thank Meet the Blogger creator and Meet the Blogger III host John Welch of the TTABlog for allowing me to use the Meet the Blogger name.
I am not making any promises, but I am hopeful that if you attend you will meet Chicago legal blogging luminaries such as Internet Cases; Chicago Law (an excellent new blog by the Chicago Tribune’s Ameet Sachdev); the anonymous Editor of Blawg Review; Cyberlaw Central; and 12:01 Tuesday. and the 271 Patent Blog.
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Continue Reading Cheezborger! Cheezborger! No Fries . . . . Meet the Bloggers VI

Last Friday, May 29 the Northern District held its tenth annual pro bono awards ceremony. Federal Bar Association President Juanita Sales Lee was the keynote speaker. The Court gave out both Awards for Excellence in Pro Bono and an Award for Special Service to the Court. The Excellence awards went to:
* Richard L. Marcus of Sonnenschein Nath Rosenthal LLP (presented by Judge Cox);
* Howard L. Mocerf, Richard P. Darke and Amy E. McCracken of Duane Morris LLP (presented by Judge Manning);
* Kate Jillian Grossman of Sidley Austin LLP (presented by Judge Schenkier);
* Edward M. Fox of Ed Fox & Associates (presented by Chief Judge Holderman);
* Jeffrey D. Colman of Jenner & Block LLP (presented by Judge Bucklo);
* James P. Condon of Central States Funds (presented by Judge St. Eve and Judge Cole);
* Michael George Kelly of the Law Offices of Chadwick & Lakerdas (presented by Judge Manning and Judge Cox);
* Arthur J. Howe of Schopf & Weiss LLP and Julie Ann Sebastian of Cook County State’s Attorney’s Office (presented by Judge Lefkow);
And the Special Service Award went to:
* Joel Daly, District Court Information Officer (presented by Chief Judge Holderman).
Congratulations to all of the recipients, and thanks to all of the award recipients for their service.
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Continue Reading Tenth Annual Northern District of Illinois Pro Bono Awards

The patent blogosphere loves a cert grant in a patent case. A patent case pending before the Supreme Court gives months of blog material and lots to debate, not to mention months of law review articles like the one I have slated for publication later this summer. So, it is no surprise to see some strong commentary lighting up the patent blogs. Here are two of the most thorough and interesting:
Patent Docs (predicting that the Supreme Court moves away from the Federal Circuit’s “bright line” machine-or-transformation test and questioning whether the Court will address the patentability of diagnostic method claims as raised in Justice Breyer’s dissent from the Court’s dismissal of Cert in Labcorp v. Metabolite); and
The Prior Art (handicapping the Supreme Court’s eventual decision, including a brief look at appointee Judge Sotomayor’s potential impact on the decision).
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Continue Reading More Bilski Commentary

Earlier today, the Supreme Court granted cert in Bilski, the Federal Circuit’s en banc decision limiting the patentability of business method and software patents. Many commentators are predicting that the Supreme Court will further restrict business method and software claims through the machine or transformation test, although it is hard to imagine that either type of claim will be completely eliminated. Of course, the Supreme Court could also move the law back toward the State Street decision allowing business methods and software to be patented more freely. The questions presented are:
Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”
Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.
For more takes on the cert decision and its implications, check out:
271 Patent Blog;
IPWatchdog;
Patently-O;
SCOTUS Blog; and
WSJ Law Blog.
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Continue Reading Supreme Court Grants Cert in BIlski

Heriot v. Byrne, No. 08 C 2272, Slip Op. (N.D. Ill., Mar. 20, 2008) (Ashman, Mag. J.).
Judge Ashman denied in part and granted in part Defendants’ discovery motion seeking certain allegedly privileged documents, and denied in part and withheld ruling on the remainder of plaintiffs discovery motion regarding allegedly privileged documents. Of particular interest, the Court held that new Fed. R. Evid. 502 governing inadvertent disclosure of privileged documents applied in this case although it was not filed after the rule took effect because the case was pending at that time and because defendants, who opposed application of the rule, identified no reason that its application in this case would be unjust. Having decided that Fed. R. Evid. 502(b) applied to allegedly inadvertent disclosures, the Court identified the test to determine whether the disclosure was a waiver of privilege as follows: 1) determine whether the disclosed material was privileged; 2) determine whether all three Fed. R. Evid. 502(b) factors are met, including inadvertence. The Court also noted that in analyzing the three factors courts were free to consider any of the five factors from Judson Atkinson Candies, Inc. v. Latini-Hohberger Dhimantec, 529 F.3d 371 (7th Cir. 2008).
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Continue Reading FRE 502 Applies in Case Pending on 502’s Effective Date