This post comes more than a week after the Supreme Court decided Bilski. Last Monday when the decision came down I was struggling with what value I could add to the many reports that would fill the intellectual property blogosphere, and was leaning towards waiting a few days (which also allowed me to deal with various client commitments and new opportunities). Then a good friend praised me for being the lone IP blog who had not said a word about Bilski on the day of the decision, after receiving an email of the blog’s content for the day. That comment cemented it for me. I decided to give myself some time to think about the decision before posting here. Of course, that means that much of what can be said already has been. So, links to many excellent commentaries are below.
At its heart, the Bilski decision continues the Supreme Court’s patent law trend moving away from bright line rules and allowing the flexibility to adapt the law to future situations. The business method in Bilski was struck down, but the Court did not strike down all business methods. And the justices made clear that the machine-or-transformation test was not the only option for determining patentability, increasing the law’s flexibility even more. Having preserved at least some business methods, the Court obviously left software patents intact as well. So, Bilski was not the death of business methods or software. And just as after KSR (obviousness) and eBay (injunction standard), the decision injects uncertainty into the law that will take 18 – 24 months to sort out, first in the district courts and then more slowly in the Federal Circuit. The one thing you can be sure of is that you will see lots of Bilski-based motions over the next year. And I am sure I will be writing about Northern District Bilski decisions during that time.
Here is some of the commentary from across the blogosphere:
* 271 Patent Blog;
* Chisum’s Notes on Bilski;
* Filewrapper (noting that the Supreme Court issued grant, vacate and remand orders in two business method cases assuring we will get some realtively quick Federal Circuit guidance on the outlines of Bilski);
* IPWatchdog (arguing, among other things, that even in the post-Bilski world one could write claims that would capture Bilski innovation);
* New York Times Bits Blog (looking at the uncertainty the decision injects into litigation);
* Patent Docs (looking at Bilski’s impact upon biotech patents);
* Patently-O (and here, here, here and here); and
* WSJ Law Blog.

Continue Reading Bislki: More of the Same

The legal blogosphere is full of analysis and commentary regarding the Patent Reform Act, here is more of the best:
FileWrapper;
Patent Baristas (surveying industry responses to the Act);
Patent Docs (discussing the witness list for Patent Reform Act hearings);
Patently-O (damages provisions analysis), and here and here;
Washington State Patent Law Blog.
And the Bilski amicus briefs began coming into the Supreme Court today. Click here for Dennis Crouch’s post with links to many of the amicus briefs. And here for Crouch’s post discussing the PTO’s Bilski guidance to Examiners.

Continue Reading Patent News: Patent Reform & Bilski

The Bilski analyzers are moving away from the opinion itself, and toward the practical impacts of the decision and the unanswered questions it left, as opinions always do. Here are several of the best:
271 Patent Blog (asking whether a method for swinging on a swing meets the Bilski standard);
FileWrapper;
Maryland IP Law;
Patently-O (and here and here and here and here); and
The Prior Art.

Continue Reading More Bilski News

Last week’s Olympic edition Blawg Review focused on the medals. Building on that, this week I discuss the elements of a world record swim. If you were watching last week, instead of blogging, you saw 20 of them in the Olympic pool; seven by Mr. Phelps.
Practice
Nothing is more critical than preparation. A big part of preparation is tightening your stroke and cutting out unnecessary motion. Reese Morrison, at the Law Department Management blog, discusses blunt suggestions for trimming legal bills.
Endless hours in the pool alone are not enough, you need a good coach. Business development coach Cordell Parvin provides an excellent three part series at his Law Consulting Blog – one, two, and three – on persistence, an important element of any Olympic training program. In an Olympic caliber display of persistence, Drug & Device Law had an exhaustive post discussing and classifying each medical device preemption case since the landmark Supreme Court decision in Riegel v. Medtronic, Inc., 128 S. Ct. 999 (2008).
You also need a support network to help you get through all of the pool time. Bruce Allen, at Marketing Catalyst, teaches us how to avoid the cocktail conversation you cannot escape from at a networking event. At Copyblogger, John Morrow explains that content is no longer king in the blogosphere, you need friends. And he teaches you how to get them. At BlawgIT, Brett Trout – who is a fighter, not a swimmer – has an interesting post about how to work together as a community to thwart webjackings (the hijacking of a website). And Mediation Channel’s Diane Levin discusses the social side of blogging, and reading blogs.
Of course, if you do not have time to practice you will never set the record. So, you need a job, or at least some cash. On that note, Harmful Error posts the great news that loan forgiveness programs were expanded this week for legal aid lawyers, state prosecutors and public defenders.
The Suit
The clothes make the man (or the woman). This year the go-to duds were Speedo’s LZR suits. Patent Librarian Michael White tells us that, no surprise, Speedo patented the LZR. IPKat expands on swimming patents, providing a broader view of Olympics-related patents.
Genes
As a guy who swam for a lot of years and practiced hard throughout, I can tell you not everyone has what it takes to set world records. The closest I came was getting beat by an Olympian and world record holder. Of course, you might be less impressed by my loss if you knew that at the time his Olympic medals were four or five decades old, and I was 19. At Idealawg, Stephanie West Allen discusses the traits that make entrepreneurs entrepreneurial.
Mental Focus
One of the big stories on Phelps this week was how he thinks of nothing but not losing during a race. At Litigation & Trial, Maxwell Kennerly tells us that you have to know when you are sweating the details more than your client would want by over emphasizing proof-reading. Of course, even Kennerly agrees that some details matter.
Knowing the Rules
You have to know the rules. Turn wrong or break the rules for your stroke and beating a record by ten seconds will not matter. At the Legal Juice, John Mesirow reports that kids at the Lake County Florida library are allowed to rent R-rated movies because they believe it is an unconstitutional delegation of authority for the Motion Picture Association of America’s guidelines for determining obscenity. I am sure kids from all over that area are flocking to the Lake County library because the rules are on their side, at least for now.
Filewrapper reports on a Federal Circuit decision holding that copyright infringement, and not just breach of contract, when the terms of an open source license governing the copyrighted material are breached. For more on this major decision in the IP world, check out: BLT; Law Pundit; and Patently-O.
Seattle Trademark Lawyer Mike Graham shows the consequences of not following the rules using two Western District of Washington opinions.
Ethan Lieb, guest blogging at Freakonomics, argues that we need to change the rules requiring unanimous juries. And the WSJ Law Blog discusses a judge and a juror who clashed over jury nullification.
The Start
A bad start is hard to recover from, especially when you are chasing the fastest time ever. Evan Schaeffer shows how to open well at trial at the Illinois Trial Practice Weblog, and he links to Trial Theatre’s opening statement quiz.
Turns
Coming off the wall in a turn is the fastest a swimmer goes during a race. So, you need good turns. IntLawGrrls discuss how to turn around the conflict between Georgia and Russia (sorry the turns section was tough).
Legal Literacy discusses Whole Foods’ turned around (or recalled) beef and looks behind the scenes at how it happened and Whole Foods’ impressively quick response.
The Finish
Do you do an extra stroke or do you glide in hard? Always a tough question, but the .01 seconds the decision costs you can mean the race and the record.
At his E.D. Texas Weblog, Michael Smith reports that while the E.D. Texas started out as a rocket docket, particularly for patents, it has now slowed down and let many other districts catch it with a time to trial of 24 – 30 months.
The Law and Magic Blog reminds us that we cannot always win, and that trying to rig the system to guarantee wins – he is talking about the stock market, but it holds true for the pool – is dangerous work.
At the IP ADR Blog, Victoria Pynchon praises several Perkins Coie attorneys who went the distance for their pro bono clients at Gitmo and earned the clients’ respect for providing them an able defense.
** Images provided via a Creative Commons license by A. Dawson or Andre from Flicker. **
Next week’s Blawg Review will be at fellow LexBlog site, the Texas Appellate Law Blog.
Blawg Review has information about next week’s host, and instructions on how to get your blawg posts reviewed in upcoming issues.

Continue Reading Blawg Review #173

Nilssen v. Osram Sylvania, Inc., No. 2007-1998, -1348 Slip. Op. (Fed. Cir. June 17, 2008).
The Federal Circuit affirmed Judge Darrah’s award of defendant’s/appellee’s attorney’s fees – click here to read the Blog’s post about the inequitable conduct opinion. Judge Darrah previously held and the Federal Circuit previously affirmed that plaintiffs committed inequitable conduct by, among other things: (1) falsely claiming small entity status; (2) failing to disclose material prior art to the PTO; and (3) failing to disclose related litigation to the PTO. Judge Darrah then held that the case was exceptional based upon plaintiff’s inequitable conduct, filing of a frivolous suit, and litigation misconduct. Because the case was exceptional, Judge Darrah awarded defendants their attorney’s fees.
The Federal Circuit agreed with plaintiffs, holding that an inequitable conduct finding did not require a case be deemed exceptional. But the Court held that Judge Darrah’s findings were supported by evidence and, therefore, were within his discretion.
Judge Newman dissented, stating:
The court today promotes unexceptional trial procedures and non-culpable prosecution errors into an “exceptional case” of such severity as to warrant the award of attorney fees. That is not what the status, or precedent, or policy contemplates. I respectfully dissent.
Check the following blogs for more on this opinion:
Filewrapper
Patently-O

Continue Reading Federal Circuit Upholds Northern District’s Attorney’s Fees Award

Quanta Computer, Inc. v. LG Elecs., No. 06-937, 553 U.S. ___ (2008).
The Supreme Court concluded its latest review of the patent laws Monday when Justice Thomas delivered the Court’s succinct, unanimous decision in Quanta v. LG. Client obligations this week prevent me from providing a detailed analysis today. But, no surprise, there is plenty of commentary out there already. For more about decision, check out:
* 271 Patent Blog
* Agricultural Law
* FileWrapper
* IP Thinktank
* Patent Docs
* Patently-O
* WSJ Law Blog

Continue Reading Quanta v. LG: Patent Exhaustion

The Patent Reform Act is on the Senate’s calendar and is expected to be voted on in February. The version voted out of the Senate Judiciary Committee is different than the version passed by the House. Experts expect that, instead of forming a joint committee to resolve the differences which generally requires a second vote by both chambers, the House will vote on any version of the Patent Reform Act passed by the Senate.
That means that it is time to take a close look at the Senate version of the Patent Reform Act. The damages and venue provisions continue to be some of the most significant and hotly-contested. And it is no surprise that the various stakeholders are making their positions heard loudly again. I considered analyzing each provision of the current Senate bill, but Patent Docs beat me to it and did an excellent job:
Venue
Damages
First to file
Several other blogs are also keeping a close eye on the stakeholders and the sausage-making aspects of the Patent Reform Act, among the best:
271 Patent Blog
Filewrapper
IP Biz
Patent Barristers
Patently-O
Maryland IP Law Blog (and here regarding the increased internet coverage of Patent Reform during February)

Continue Reading Patent Reform: It’s Baaaaaaaaack!

Last week the intellectual property world obsessed over injunctions – specifically, a preliminary injunction hearing in the Eastern District of Virginia resulting in an injunction against the U.S. Patent & Trademark Office’s (“PTO”) new continuation rules. There was a lot of analysis about the injunction, including live blogging by Patent Practice Center Patent Blog and a lot of post-injunction analysis by, among others: 271 Patent Blog; FileWrapper; Patent Baristas; Patent Docs (and here); Patent Prospector; PHOSITA; Patently-O; WSJ Law Blog; and Washington State Patent Law Blog. For those of you who have no idea what a continuation is or just do not care about the particulars of the rules, I promise that I am done with patent continuations for this post. Honestly, I find the rules rather tedious myself. I prefer to focus on litigating patents, rather than the PTO’s prosecution rules. So, today we talk about injunctions:
According to TechCrunch, Patent Monkey received a permanent injunction when it was sold to the Internet Real Estate Group. But Patent Monkey’s patent search technology will see its injunction lifted when it is used on www.patents.com. Hopefully, for those like me who enjoyed it, Patent Monkey’s Infinite Monkey Theorem Blog will also see its injunction lifted.
Virtually Blind has an interesting report on Second Life’s* new Patent & Trademark Office, the SLPTO. No word on whether the SLPTO and the Second Life legal system generally will allow for any permanent injunctions. Right now it appears that the SLPTO will be heavily skewed toward copyright and trademark, which makes sense in a virtual world. And before we learn whether the SLPTO has any enforcement mechanisms, Blawg IT is offering to represent virtual clients before the SLPTO. I would get a retainer up front Brett – virtual clients can be difficult to track down when the bills are due.
The Patry Copyright Blog shows why Second Life injunctions may be necessary. Six Second Life players have sued a Queens man in the Eastern District of New York for trademark and copyright infringement based upon sales of goods in Second Life. I wonder if the trademarks and copyrights were registered with the SLPTO or the US PTO/Copyright Office. And does the E.D.N.Y. have authority to issue cyber-injunctions?
Promote the Progress provides an interesting piece on the long-term effects of last week’s injunction against the PTO on shaping patent reform.
SportsBiz explains that plaintiffs who were bilked out of millions in attorneys’ fees by their now-jailed lawyers were not irreparably harmed. A Kentucky court awarded them a 20% ownership interest in Curlin, the prize race horse and Breeder’s Cup Classic winner partially owned by the jailed lawyers.
Adams Drafting issues its own injunction against using virgules. Using what? The virgule, or the forward slash. He explains that it is frequently used to mean: 1) “per” – 50 miles/hour; 2) “or” – and/or; and 3) “and” – all parents/subsidiaries/affiliates are bound by the obligations. The problem is that the various uses create ambiguity. Adams acknowledges that he cannot find any litigation specifically about the virgule. But the best solution is to remove the virgule from your writing before you become embroiled in the first litigation over one. And when it comes to rules of writing and grammar, the best solution is to listen to Adams.
What if you do not want an injunction or just want a faster, cheaper resolution? The IP ADR blog is talking about last week’s big settlement between Vonage and Verizon. They suggest that you consider using contingent agreements to control for changing future conditions and charitable contributions. They also point out that creativity and out-of-the-box thinking are important elements for reaching settlements.
Another way to avoid an injunction is to understand how best to argue against the opposing party and their counsel. The Center for Internet & Society discusses how men and women in the United States and in other cultures communicate and suggests that understanding the nuances of how different people communicate around the globe could advance legal discourse.
Lowering the Bar reports on a Michigan man sentenced to sixty days in jail for a home invasion that ended in him throwing two large pickles at residents of the home. No word on whether he will be enjoined from pickle ownership. Okay, that is a weak tie-in, but who can resist a pickle invasion story.
Deliberations discusses one of the basic truths of trial law – you must connect with your jury about basic truths of your case. That is equally true when seeking an injunction – if the judge senses something is not right about your argument, you will not get your injunction.
The writers’ strike that is expected this week is not an injunction, but it will mean an end to new scripted television and movies. Concurring Opinions has an interesting post about a brewing legal dispute between the studios and the writers’ union, the Writers Guild of America (“WGA”). The WGA is requiring that members provide information on all unproduced projects and an update on the status of those projects, as per the labor agreement between the WGA and the studios. But the studios, based upon their individual agreements with writers, are warning writers that the studios own the scripts and the writers are barred by contract from giving the WGA any information about the projects. These conflicting contracts place the writers in quite a pickle (I could not resist), and it poses an interesting legal question as to which contract controls.
And I end with a post that is actually about an injunction. The Maryland IP Law Blog (another LexBlog creation) posted about a District of Delaware court that upheld a jury verdict of patent infringement and plans to enter a permanent injunction against Lonza, Ltd., Nutrinova Inc. and Nutrinova Nutrition Specialties & Food Ingredients GmbH prohibiting the U.S. sale and use of a fatty acid product currently marketed under the brand name Lonza DHA for use in functional foods and dietary supplements.
Thanks for reading. And for the Blog’s regular readers, I will be back to my usual Northern District of Illinois focus tomorrow.
* Second Life is an internet-based virtual world where “residents” interact through avatars. For example, the Seventh Circuit’s Judge Posner appeared in Second Life with an avatar closely resembling him to answer questions from, among others, a DC IP lawyer using an avatar of a humanized raccoon. Check out the New World Notes blog for a transcript and some screenshots.

Continue Reading Blawg Review #133

Yesterday I blogged briefly about the Eastern District of Virginia’s injunction preventing the PTO’s new continuation rules from taking effect today, November 1st. But the Court’s order was not available yet. The order has been issued — click here for a copy — and it is very interesting. The Court held that plaintiff GSK had shown a likelihood of success on the merits regarding several issues:
That limiting the number of continuations a party can file violates 35 U.S.C. Section 120, which states that later filed applications have the same effect as their parent applications.
That the new rules are impermissably retroactive because the limits on numbers of claims and continuations will change the terms of the bargain struck between inventors currently prosecuting their applications and the PTO when those inventors filed their applications, prior to the new rules going into effect.
That the requirements for Examination Support Documents (“ESD”) are impermissably vague because they do not sufficiently define the paramters of the search required.
The Court also held that GSK would be irreparably harmed by implementation of the rules because GSK has about 2,000 pending applications and GSK’s rights in each of those applications would be materially altered by the new rules.
The balance of hardships weighed in GSK’s favor. The PTO’s losses were sunk costs — updating computer systems and training staff. But if the PTO wins the suit and later implements the continuation rules, the new computer systems and the employee training will still be valuable. On the other hand, the entry of the continuations rules will materially limit GSK’s rights in its 2,000 pending patent applications.
Finally, the public interest is in maintaining the status quo, rather than allowing the implementation of a new set of rules which could be reversed by the Court in a matter of months.
For more on the preliminary injunction and thoughts about whether the PTO will file an emergency appeal with the Federal Circuit, check out:
Patently-O
FileWrapper
271 Patent Blog
WSJ Law Blog
Patent Practice Center Patent Blog
I will continue to update this post with coverage of the injunction and any appeals throughout the day.

Continue Reading Continuation Rules Would Cause GSK Irreparable Harm

I, along with many others, blogged last week that the Patent Reform Act had stalled in Congress. But Congress has changed its mind and today the House is debating its version of the bill (available here). And experts expect some version of the bill to be passed by the House at the end of today’s debate. You can find an excellent summary of key amendments to the House bill at Tech Daily Dose. If you want a list of each amendment to the bill, by Congressperson, go to the House website. And it should come as no surprise that with the Patent Reform Act moving forward again both the MSM and blogs are full of commentary. Here is some of the best:
Chicago Tribune surveys the opinions of some Chicago-area companies.
271 Patent Blog weighs in with the President’s view and a survey of news stories on the Act.
FileWrapper says that the House will likely pass some form of the Patent Reform Act today, but that the Senate is not expected to consider it until October.
IP Central is watching the House debate on CSPAN and says that most of it centers on procedural issues, not substance.

Continue Reading It’s Alive: Patent Reform Act Being Debated in the House