John Marshall is hosting its 56th Annual Intellectual Property Law Conference this week, on Friday, February 24, 2012.
The content looks excellent, including:
Recent Developments in Intellectual Property Law;
Bernard Knight, General Counsel, U.S. Patent & Trademark Office will present a luncheon keynote on “The Future Challenges of IP Litigation: A Judge’s Perspective”;
Supreme Court’s Renewed Interest in Patent Law;
Critical Trends in 2012 from In-House Perspective;
Monetizing IP and Generating Cash from Patents; and
E-Discovery — Limiting the Solar System or Expanding the Universe?
Registration and additional information is available here.

Continue Reading CLE: John Marshall 56th Annual IP Law Conference

On July 19, 2011 at noon central, I will be presenting a webinar for West, along with Thomas Dougherty, patent counsel for Gates Corp., and my colleague Mitchell Herbert of Holland & Knight. We will be discussing how to deal with patent trolls, including direct steps for protecting your company and ways to limit your defense budget without harming your defense. Registration is still available, and you can use the following special code to get 25% off of the $135 program fee: 0711LEC25. And if you miss us on the 19th, you can purchase the recording of the presentation through the end of the year.

Continue Reading Staving Off Patent Trolls: Steps to Protect Your Company

Earlier this month, I spent several days attending the 9th Annual Rocky Mountain IP & Technology Institute. In addition to two days of excellent continual legal education and meeting many interesting people, I also spoke with in-house counsel from Microsoft and Hewlett Packard about how to limit fees in intellectual property litigation (more on that panel soon). For those who are looking for some high quality continuing legal education, that is in a beautiful location, you should come to the 10th Annual Rocky Mountain IP & Technology Institute next June. It is one of the two best CLE programs I have ever attended.
One of the excellent sessions at the conference was Scott Alter’s (of Faegre & Benson) presentation about the state and history of joint and divided infringement. Here are some of the highlights:
BMC v. Paymentech (2007): This case involved method claims directed to separate parties — caller, debit processor & bank. The parties agreed that no single party performed each step. The Federal Circuit said Section 271 required one party to perform every step, unless one defendant played a “mastermind” role. BMC had argued that plaintiff just needed to show participation and combined actions. Court noted that patentee could have drafted the claims to apply to a single entity.
Muniauction v. Thomson (2008): Relying upon BMC, the Federal Circuit required that a single party perform every step of a method for direct infringement. Again, the parties agreed that no signal party performed all steps. Thomson controlled access by bidders to its system and instructed bidders about how to use the system. The Federal Circuit held that one party must exercise “control and direction” over the other parties to complete all steps. It was not enough to give bidders instructions as Thomson did to the bidders in this case. Therefore, no joint infringement.
Golden Hour v. emsCharts & Softtech (2009): emsCharts provided billing software and Softtech provided dispatch software. They partnered together and sold their software as a single unit. The district court found no control or direction of one party over the other. But there was no discussion of indirect infringement. Regardless of joint infringement issues, the joint product may have infringed the system claims, but the system claims were not put before the jury. So, the Federal Circuit did not decide the issue.
Centillion v. Qwest (2011): The technology at issue was a system for collecting and sending service provider (telephone) information to a customer. The claims required a data processing means and a home computer. The district court held that no single party practiced each limitation of any asserted claims and there was insufficient control. The Federal Circuit overturned the district court, holding that to “use” a system a party must put the invention into service by controling the system and benefiting from it. Without customers’ actions (using their computers to interact with the Qwest system), the system would never be put into service. Qwest did not “use” because it did not put the system into service and could not do so without a personal computer. The Court also looked at vicarious liability, but Qwest’s customers were not agents.
Akamai v. Limelight (2010): The patent was for a web content delivery method, embedded objects (pictures) were stored on a server and tagged so that when a user requested the page, the embedded objects could be found by their tag. Limelight instructed customers to tag. Limelight’s contract also obligated customers to tag. The Federal Circuit held that when a party is contractually obligated to perform a method step, joint infringement exists. The Court also required an agency relationship between the parties or a contractual requirement before joint infringement could be found.
McKesson v. Epic Systems (2011): Epic did not “use,” but licensed its accused MyChart software. Epic was charged with induced infringement, for allegedly inducing its licensee healthcare providers to infringe. The first step of the method claim requires “initiating a communication by [a user/patient].” Parties agreed healthcare providers did not initiate the communication. There was no direct infringement, unless there was joint infringement. The only issue was whether the relationship between Epic’s customers and patients was sufficient to create an agency relationship. The Federal Circuit said no. Patients chose whether to communicate and were not obligated to do so. The doctor-patient relationship did not create either agency or a contractual obligation. The Federal Circuit also held that indirect infringement addresses any concern about joint tortfeasors that are not jointly infringing. Judge Newman’s dissent said that the majority decision made joint infringement of the claim “impossible.” Newman also argued that McKesson conflicted with pre-BMC decisions.
Akamai and McKesson are both set for rehearing en banc. The key issue on each appeal is whether if multiple entities perform the steps of a method, under what circumstances can they be liable for indirect infringement. A majority of the judges — all but Newman & Bryson, who see inconsistency in the cases, and O’Malley and Meara, who have not decided the issue — appear to believe that the pre and post-BMC case law is consistent. So, the en banc decisions may not change the current state of the law so much as clarify it.

Continue Reading Rocky Mountain IP Conference: Joint Infringement Update

I spent several days last week attending the 9th Annual Rocky Mountain IP & Technology Institute. In addition to two days of excellent continual legal education and meeting many interesting people, I also spoke with in-house counsel from Microsoft and Hewlett Packard about how to limit fees in intellectual property litigation (more on that panel soon). For those who are looking for some high quality continuing legal education, that is in a beautiful location, you should come to the 10th Annual Rocky Mountain IP & Technology Institute next June. It is one of the two best CLE programs I have ever attended.
One of the highlights of the Institute was a panel of sitting and retired federal judges sharing their views on intellectual property litigation, with a focus upon patent litigation. What follows is the second and final installment of the highlights from that panel. Last week, I provided highlights from Judge Philip Brimmer (D. Col.) and retired Judge James Rosenbaum (D. Minn.). What follows is the highlights of the thoughts from the two other panelists, Magistrate Judge Boland (D. Col.) and retired Judge McKelvie (D. Del.).
Hon. Boyd Boland (D. Col.):
Until appellate courts resolve the issue, whether Twombly/Iqbal apply to answers and affirmative defenses will be judge specific.
Average time to trial in D. Col. is 23 months, and that is with a mindset of swift trial. Bifurcating discovery with claim construction discovery going first would significantly delay time to trial and therefore is unlikely to occur.
Not unusual to get a motion to amend a complaint with 800 pages of exhibits, and it is worse for complex or case dispositive motions. Judges do not have resources to read the 800 pages. You should always have in mind that you need to prepare the most compact argument possible.
With many magistrates the audience is only the judge because the clerk may be solely focused upon pro se prisoner matters.
You should always keep in the back of your mind that almost all cases settle, so you should keep that in mind in all that you do.
Boland tracks settlements in D. Col. Over the last several years, plaintiffs have won a slight majority of the relatively small number of IP trials in Colorado with significant verdicts. In contrast, patent settlements have averaged $130,000, with trademark and copyright significantly less. So, there is significant upside to settlement for defendants, and plaintiffs if they fall within the averages.
Tips for making settlements effective: Do paid up, upfront licenses. The litigation between the parties usually suggests that they do not get along well or trust each other. Ongoing obligations are a recipe for disaster.
Motions to stay pending reexam are disfavored, but a motion to administratively close a case with the ability to reopen for good cause after the reexam as necessary could be successful because it takes the case off of the court’s docket.
Hon. Roderick McKelvie (D. Del. Ret.):
Suspects plaintiffs and defendants are avoiding many Fed. R. Civ. P. 12(b)(6) motions because defendants know if they file one their answers will get one in response. Also, there is a tension with Rule 11, where plaintiff has to have done their pre-suit investigation.
Prefers Markman to be done along with summary judgment because it focuses his attention.
Began asking lawyers to submit videos of the technology. It helped with law clerk transitions (easy tool for teaching new law clerks about an ongoing case). Valued tutorials, but the parties resisted because of expense of the videos.
When you write briefs you have two audiences: 1) the clerks and 2) the judge. For the law clerk, you want to provide everything they need to write the opinion — technology, facts, law, key cases and supporting cases. For judge, you are showing the themes and who should win on a somewhat higher level.
Pay attention to the law clerk cycle: September they arrive; October their heads are spinning; by April they have hit their stride. That is the time for complex motions to be considered or for trial dates, if possible because the judge is not busy training the clerks.
Think about having your brief stand out by: 1) being well-written; 2) avoiding cliches; and 3) being appropriately unique.
One concern with multi defendant cases is the cost of the joint defense group. Also, he believes the Federal Circuit is waiting for a mandamus case on motions to transfer.
There is a provision of the Patent Reform Act being considered in the House right now that would prohibit multi-defendant cases where the defendants and their products are unrelated.

Continue Reading Judicial Panel: Best Practices in IP Litigation (Part 2)

I spent the last several days attending the 9th Annual Rocky Mountain IP & Technology Institute. In addition to two days of excellent continual legal education and meeting many interesting people, I also spoke with in-house counsel from Microsoft and Hewlett Packard about how to limit fees in intellectual property litigation (more on that panel soon). For those who are looking for some high quality continuing legal education, that is in a beautiful location, you should come to the 10th Annual Rocky Mountain IP & Technology Institute next June. It is one of the two best CLE programs I have ever attended.
One of the highlights of the Institute was a panel of sitting and retired federal judges sharing their views on intellectual property litigation, with a focus upon patent litigation. What follows is the beginning of the highlights. There was simply too much information to digest it in a single post. So, this post begins with the thoughts from Judge Philip Brimmer (D. Col.) and retired Judge James Rosenbaum (D. Minn.). In an upcoming post, I will provide the highlights of the thoughts from the two other panelists, Magistrate Judge Boland (D. Col.) and retired Judge McKelvie (D. Del.).
Hon. Philip Brimmer (D. Col.):
Encourages pursuing motions to dismiss for failure to sufficiently plead patent claims, but if there is an easy amendment you should confer with plaintiff first.
In a fairly technical case, Judge Brimmer values a technical presentation. And video is the best format because he can view it in chambers several times and let it sink in. Generally, each side submits a separate video. Occasionally, one is more polished, but that does not mean it is more instructive.
Law clerks are the critical audience for briefs. They read, digest and analyze briefs all day.
The trend is toward applying eBay v. MercExchange to all IP cases. The Second Circuit’s recent Catcher in the Rye case, regarding Salinger’s Catcher in the Rye copyright, highlights the trend. So, as a practitioner you should not be relying solely upon a presumption of irreparable harm.
In Colorado, there is a bias against stays pending reexams because they delay cases.
Hon. James Rosenbaum (D. Minn. Ret.):
It is not clear whether Iqbal & Twombly apply to answers and affirmative defenses. At least in D. Minn., there is a district split. Courts of appeal need to resolve the issue more clearly, or Federal Rules need to be adjusted.
Markman was a case that went to trial and the court’s opinion was post-trial. Having said that, the Markman process should be completed before summary judgment. Otherwise, it is difficult for parties to seek summary judgment without knowing the law of the case. Whether Markman should be early or late sees a split of opinion with religious fervor on both sides.
He did not use technology tutorials. One of the “dirty secrets” of patent litigation is that most of the cases are not about the technology as much as accusations of lying, cheating & stealing. Even when technology was key to the case and complex, lawyers’ explanation usually sufficed.
Do not write at the page limits.
Do not rely upon spell check alone.
The problem of multi-defendant cases is not new to the federal judiciary, just to the patent bar. Judges have many tools to deal with multi-defendant cases — bellwether trials, splitting defendants into groups based upon characteristics, etc.
Remember that the vast majority of patent trials are quickly followed by an appeal. So, the trial is rarely an end.
When thinking about IP litigation generally and settlement specifically, remember the perspective of the client who is running a business. Lawyers are almost always a cost-center and litigation creates big uncertainties. So, settlement is usually very valuable to clients.
Hard to tell whether eBay v. MercExchange will be applied to IP cases outside the patent space. Believes that presumptions are now fairly uniformly suspect in the federal courts, e.g. the Uniloc case and the 25% rule of thumb.
He was not a fan of ediscovery sanctions. Most lawyers have figured out how to do ediscovery. Virtually everything is in an electric form. The problem now is that everything continues to exist in digital form, which makes winnowing the information very cost and time intensive. There will occasionally be sanctions and spoliation cases, but the big issue is in whether cost-shifting is required for really burdensome discovery.

Continue Reading Judicial Panel: Best Practices in IP Litigation (Part 1)

The Seventh Circuit Electronic Discovery Pilot Program is sponsoring a free e-discovery webinar on April 6, 2011 from noon until 1:30 pm CDT. This is the next in a series of e-discovery seminars sponsored by the local federal courts which have been excellent so far. Participation is limited to 1,500. So, sign up early — click here to register. Attendance for the past events has been impressive. 1.5 hours of MCLE credit have been applied for in Illinois, Indiana and Wisconsin.
Here are the details of the webinar from the Northern District’s inviation:
What Everyone Should Know About the Mechanics of E-Discovery
April 6, 2011 – Noon – 1:30 p.m. (CDT)
Understanding the mechanics of electronic discovery is essential to your effectiveness in litigation and to fulfill your responsibility to your clients. The Seventh Circuit Electronic Discovery Pilot Program, together with Merrill Corporation, has developed a program designed to assist you in mastering the e-discovery challenges of today’s litigation and to help you manage the preservation, retrieval and production of ESI through the e-discovery process. You will gain information including:
A basic understanding of the terminology unique to the realm of e-discovery.
The meaning of preservation and how to achieve this crucial obligation in an evolving technological landscape.
How to assess and manage the challenges of an e-discovery project.
A foundational understanding to help you identify potential e-discovery pitfalls and potential problems.

Continue Reading CLE: What Everyone Should Know About the Mechanics of E-Discovery

The annual Chicago IP Colloquium continues this Tuesday, February 22, 2011. The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars. The sessions are uniformly excellent, and well worth your time. The next session will be this Tuesday, February 22 from 4:10 pm to 5:50 pm at Chicago-Kent Room 305 and will feature Professor Shyamkrishna Balganesh, University of Pennsylvania Law School discussing the paper: “Hot News”: The Enduring Myth of Property in News

Continue Reading Chicago IP Colloquium Discusses Hot News