Another sign that patent reform is heating up again:  the ABA’s IP Section has sent the Senate Judiciary Committee a position paper regarding inequitable conduct reform (click here to get to the Section’s advocacy page which has a link to the letter).  The ABA argues that inequitable conduct materiality should be based upon the law and standards at the time of the alleged conduct, not based upon the present day standards.  The ABA also argues that inequitable conduct decisions should continue to be made by the federal courts, not the PTO.  And finally, the ABA argues that the standard for inequitable conduct should be:

(1) that a person having a duty of candor and good faith to the PTO in connection with the patent or an application therefor knowingly and willfully misrepresented a material fact or material information to the PTO or omitted a known material fact or known material information from the PTO;

(2) that, in the absence of such misrepresentation or omission, the PTO, acting reasonably, would not have granted or maintained in force at least one invalid patent claim; and

(3) that the misrepresentation or omission occurred with a specific intent to deceive the PTO, and that such intent cannot be established by the mere materiality of the misrepresentation or omission.

The Northern District has set up a new page on its website collecting educational information about the Court and the Dirksen Courthouse.  The Northern District intends the site to help school groups planning to or interested in visiting the Court.  It is a great resource for visiting school groups, but it is also interesting for members of the Northern District Bar.  In addition to logistical information and educational background on the operations of the district courts, it also provides the Court’s historic highlights.  For example, there are lists of famous trials and appeals.  No patent cases made the list, they were bumped by defendants like Capone, Hoffa, the Chicago Seven and public officials from Project Graylord.

Here are a few stories and announcements from the Chicago IP world:

  • Hinshaw & Culbertson LLP has launched a new blog:  Practical Ediscovery.  The blog is written by a team of the firm’s attorney and focuses on practical considerations and approaches for handling issues arising with the production of electronically stored information. Check out Evan Brown’s first post here.
  • Anne Reed has a post that every patent litigator should read at Deliberations — click here to read it.  Reed looked at the issue of how and when to introduce technical jargon to juries.  Reed makes to important points:  1) trust juror’ intelligence, people like to learn; and 2) despite that, do not teach the jargon both unless and until it is relevant to the jury.

  • There is an interesting new paper out arguing for a revised venue statute by Sidney Rosenzweig, a visiting fellow at the Progress and Freedom Foundation.  Rosenzweig argues for the following rewording of the venue statute:*

    Notwithstanding subsection 1391(c) of this title, any civil action for patent infringement may be brought against a corporation only in a judicial district:

    (1) where the defendant has its principal place of business or where the defendant is incorporated;

    (2) where the defendant has committed a substantial portion of the acts of infringement and has a regular and established physical facility that it controls;

    (3) where any defendant has committed a substantial portion of the acts of infringement and has a regular and established physical facility that it controls, if there is no other district in which the action may be brought under subsections (1) or (2); or

    (4) where any defendant has its principal place of business, where any defendant is incorporated, where any defendant may be found, or where any defendant has committed acts of infringement, if there is no other district in which the action may be brought under subsections (1), (2) or (3).

*  Click here to read the report.  And a hat tip to Peter Zura for identifying the paper.

IPWatchdog Gene Quinn recently published his list of the top 26 patent blogs, based upon Technorati rankings (Quinn only considered blogs in the top 1M of the Technorati rankings) — click here to read Quinn’s post.  Quinn manually determined which blogs counted as patent blogs, and did nice work.  Although I would add the IP ADR Blog to the list.  While I do not place much weight in blog rangings, the list identified a few new blogs that I plan to follow, and it is gratifying to see that the Chicago IP Litigation Blog has a strong reader base in the patent world.

Here are Quinn’s rankings:

  1. Patently-O – Technorati Rank 21,202
  2. Patent Baristas – Technorati Rank 61,134
  3. IPWatchdog – Technorati Rank 80,245
  4. Against Monopoly – Technorati Rank 80,245
  5. Patently Silly – Technorati Rank 90,082
  6. Chicago IP Litigation Blog – Technorati Rank 117,073
  7. PHOSITA – Technorati Rank 101,726
  8. Spicy IP – Technorati Rank 129,347
  9. PLI Patent Practice Center – Technorati Rank 132,753
  10. Duncan Bucknell Company’s IP Think Tank – Technorati Rank 136,348
  11. Patent Prospector – Technorati  Rank 152,448
  12. Securing Innovation – Technorati Rank 162,007
  13. Peter Zura’s 271 Patent Blog – Technorati Rank 163,794
  14. The Invent Blog– Technorati Rank 167,214
  15. Promote the Progress – Technorati Rank 198,166
  16. I/P Updates– Technorati Rank 213,371
  17. IP NewsFlash– Technorati Rank 221,777
  18. Orange Book Blog – Technorati Rank 221,777
  19. The IP Factor – Technorati Rank 250,588
  20. Philip Brook’s Patent Infringement Updates– Technorati Rank 273,434
  21. Patent Docs – Technorati Rank 300,413
  22. Antiticpate This! – Technorati Rank 351,677
  23. Patent Fools (now operated by IPWatchdog.com) – Technorati Rank 351,092
  24. Patentably Defined – Technorati Rank 614,978
  25. Steve van Dulke’s Patent Blog –  Technorati Rank 676,101
  26. IP Spotlight – Technorati Rank 752,199

Here are several Chicago-area intellectual property CLEs that look like worthwhile programs:

  • On February 27, John Marshall is hosting its 53rd annual Intellectual Property Law Conference.  The day-long program has two tracks:  1) patents; and 2) trademarks, copyrights and trade secrets.  The program is full of interesting presenters, including Internet Cases’ Evan Brown — click here for a preview of his presentation regarding open source disputes.

Along with the IP ADR Blog’s Victoria Pynchon, I am giving an ALI-ABA continuing legal education teleconference discussing alternative dispute resolution as a low-cost alternative for intellectual property disputes — click here to register.  The program is at 12 pm CT on this Wednesday, February 18.  Here are ALI-ABA’s program highlights:

Why Attend?

 

In a difficult economy, intellectual property protection and assertion is more important than ever. The combined stressors of a poor fiscal climate and shrinking legal budgets place a significant strain on any business dependent upon IP assets. as companies face difficult economic decisions, it is increasingly difficult to fit the expense and extended uncertainty of copyright, patent and trademark litigation into a forward looking business plan. This one-hour seminar explores the use of alternative dispute resolution as a means of protecting intellectual property and business activity, while minimizing the expense and devotion of time related to traditional IP litigation.

 

What You Will Learn

 

This program examines how to move an IP dispute toward alternative dispute resolution; best practices for controlling the expense and length of the process; and best practices for successful alternative dispute resolution. Whether you are an experienced IP practitioner or simply one grappling with IP issues in your general commercial practice, knowing how to offer your clients a wide array of ADR options might make the difference between a practice that survives and one that thrives. The seminar will cover the following topics:

  • How to choose between litigation and ADR.
  • The most successful strategies for guiding your dispute into the best ADR forum at the most productive time. 
  • The five basic rules of “distributive” or “fixed sum” bargaining that will give you the “edge” in all future settlement negotiations. 
  • The five ways to “expand the fixed sum pie” by exploring and exploiting the client interests underlying your own and your opponents’ legal positions. 
  • The Ten Mediation/Settlement Conference Traps for the Unwary.  

Invest just 60 minutes at your home or office to learn about alternative dispute resolution in the IP field from this duo of experts. This audio program comes to you live on Wednesday, February 18, 2009, 12:00-1:00 pm CST, via your phone or your computer. Materials corresponding to the course may be downloaded or viewed online.


Planning Chair

 

R. David Donoghue, Esquire, Holland & Knight LLP, Chicago, IL

 

Faculty

 

Victoria Pynchon, Esquire, Settle It Now Dispute Resolution Services, Beverly Hills, CA 

On March 3, the Northern District will celebrate 190 years of Illinois federal courts.  The celebration begins at 3:00 pm with a program in the Dirksen Courthouse ceremonial courtroom, Room 2525.  The Northern District bar is invited to the celebration, e-mail rsvps to ilnd_190th_Anniversary@ilnd.uscourts.gov.

The celebration will include a panel of Northern District judges discussing "The Future of the Federal Courts" and a sketch of the court’s history by Richard Cahan, the author of A Court That Shaped America: Chicago’s Federal District Court from Abe Lincoln to Abbie Hoffman.  The celebration also serves as the grand opening of the court’s exhibit:  “The 190th Anniversary of

the United States District Court in Illinois: A Celebration of the Federal Judiciary’s Contribution

to Illinois and the Nation.”  The exhibit, featuring court artifacts, photographs and sketches will remain on display through May 1, 2009, and will be located on the second floor of the Dirksen United States Courthouse.

Here are several Northern District and IP news stories that did not warrant separate posts:

  • The Northern District’s new Rockford courthouse is being named for retired Judge Roszkowski.  Judge Roszkowski was the first federal judge permanently seated in Rockford and served for over twenty years.
  • Blawg Review #198 is up at the East Central Illinois Criminal Law & DUI Blog (click here to read it).  As you might expect based upon the blog’s subject matter, there is not a lot of IP content.  But there are several Illinois-specific stories that Blog readers may find interesting.  For example, My Law Life warns that an Illinois statute makes it illegal to jog (or walk) on Illinois roadways where sidewalks are available — click here to read the post.
  • Several blogs are reporting that patent reform may be back on in Congress this year:  Patently-O; and 271 Patent Blog.

At his IP Think Tank Blog, Duncan Bucknell reflected upon Doug Lichtman’s recent IP Colloquium interview with Federal Circuit Chief Judge Michel — click here to read Bucknell’s post and here to get the Michel interview, which you is well worth any patent litigator’s time.  Bucknell’s take away from the interview is a very timely question in light of the news that patent reform may be back before Congress in 2009:

If the intellectual property laws could be codified so that the result in intellectual property disputes is always certain – even though it might not be fair – would that be ok? Or would you prefer that the legislative guidelines remain broad and the fine details in each circumstance be worked out in context – in litigation? (As happens today?)

I think this is a difficult question to answer.  My experience is that many, maybe most, would like certainty over justice in the abstract.  It makes sense to reduce transaction costs and to provide businesses increased certainty.  But when asked the same question about their own IP case, most prefer a more complex and less certain system designed with the goal of reaching fair (I would substitute the word "just" here) outcomes.

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jan. 9, 2009) (Cox, Mag. J.).*

Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony following the reasoning of a previous opinion in a related case about the same expert — click here to read about that opinion in the Blog’s archives. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.

* Click here for more on this case and related cases in the Blog’s archives. Also, note that the Court continues the progressive use of footnote citation.