Next Wednesday, April 8, John Marshall is offering a free (click here to register) CLE lecture by George Washington Professor John Duffy discussing how the state of federal laws may cause financial firms to shift from secret innovations to using patents and other legal mechanisms that foster innovation and transparency.

Continue Reading CLE: Duffy on Financial Patents & the Transparency Crisis

Here are some IP stories with a broad focused from Chicago-based institutions:
The latest edition of the John Marshall Review of Intellectual Property Law is available here. The issue is focused on International Trade Commission (“ITC”) litigation. ITC is a powerful tool, because of the speed of the proceedings and because personal jurisdiction is not required, only that the product or service is brought into the United States. One of the most interesting articles is an overview of the Administrative Law Judge’s (“ALJ”) role in Section 337 ITC proceedings by ALJ Carl Charneski — click here to read the article.
The University of Chicago Faculty Blog is wrapping up an intriguing blog conversation amongst intellectual heavyweights regarding the underpinnings of IP theory and whether the standard economic theories (incentivizing innovation) supporting IP should be broadened to included social and cultural theories (incentivizing broader participation) — click here to read the last post and here to read the first. I cannot do it justice in a paragraph or two, but as we look at various IP reforms in Congress this year, in particular the 2009 version of the Patent Reform Act, it is a good time to consider the underlying reasons and purposes of the IP laws.

Continue Reading Chicago IP News: ITC & U of Chicago IP Conversation

Here are several Chicago-area intellectual property CLEs that look like worthwhile programs:
The next installment on the Chicago IP Colloquium is February 24, at Chicago-Kent, Room 305. Professor Anupam Chander, UC Davis School of Law, will discuss his paper: Youthful Indiscretion & Digital Memory.
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.

Continue Reading Upcoming Chicago IP CLE

I published an article in the most recent edition of the John Marshall Review of Intellectual Property Law surveying the application of the Twombly “plausibility” pleading standard, in place of the former any set of facts regime, to patent cases — The Uneven Application of Twombly in Patent Cases: An Argument for Leveling the Playing Field (click here to read it). I found that district courts have largely followed the Federal Circuit’s one case addressing Twombly, which unfortunately involved a pro se plaintiff, and held that Twombly did not change the pleading standards for patent plaintiffs. But despite that ruling, many district courts are requiring that patent defendants plead affirmative defenses and, in some cases, counterclaims to the higher plausibility standard. This creates a harmful dichotomy which can be remedied in two ways: 1) as some courts already do, use strict Local Patent Rules to require early disclosures of plaintiff’s claims followed in short order by defendant’s defenses; or 2) as at least the Western District of Wisconsin already does, require patent plaintiffs to identify the asserted claims and the accused products. Either or both level the playing field for the parties and come at little cost to plaintiffs who already have a Fed. R. Civ. P. 11 pre-suit investigation requirement.
In addition to my article, there are several excellent pieces in Volume 8, Issue 1 of Review of Intellectual Property Law, including:
European IP attorney Paul Cole provides a Eurpoean view of the KSR obviousness standard — click here to read the article;
Timothy Trainer looks at inconsistent international application of TRIPS and discusses what can be done to better protect intellectual property worldwide — click here to read the article.
Lawrence Ebert (of IPBiz fame) draws lessons from the patenting and licensing of the transistor — click here to read the article;
Vangelis Economou argues that a covenant not to sue should not destroy a court’s declaratory judgment jurisdiction over a patent defendant’s invalidity and inequitable conduct counterclaims and that the Federal Circuit should overturn its Super Sack decision — click here to read the article;
Nicholas Dernick looked at sovereign immunity — click here to read the comment;
Graham Liccardi considered the Computer Fraud & Abuse Act as a vehicle for getting federal jurisdiction of trade secret disputes — click here to read the comment; and
Mark Petrolis argued that fair use should not be an absolute defense to a moral rights violation — click here to read the comment.

Continue Reading Uneven Application of Twombly Pleading Standards in Patent Cases

John Marshall’s Summer 2008 edition of its Review of Intellectual Property Law is on bookshelves everywhere, plus it is online (click here for the table of contents of the current edition with links to pdfs of each article). Some of the highlights in:
The text of Chief Judge Michel’s address to the Federal Circuit Judicial Conference in which he discussed the state of the Circuit and asked Congress to add a fourth law clerk for each appellate judge to speed the Federal Circuit’s output;
An article by R. Mark Halligan arguing for the addition of a trade secret misappropriation cause of action to be added to the Economic Espionage Act of 1996; and
Hal Wegner’s discussion of the impact of the Supreme Court’s patent exhaustion decision in Quanta v. LG; and
Daniel Sullivan’s student arguing that an Article I patent tribunal should be created and that patents should know longer be subject to trial by jury.
Whether you agree or disagree with the authors, this edition has some provocative arguments.

Continue Reading Latest Edition of the John Marshall Review of Intellectual Property

On Tuesday, September 16 the John Marshall Law School is putting on an impressive conference looking at the legacy of the Federal Circuit’s Chief Judge Markey. For those that never had the opportunity to know or experience Judge Markey, here is part of Judge Michel’s tribute to Judge Markey in the Legal Times after he passed in 2006:
Leadership for Howard Markey began with setting a vigorous example. He simply heard more appeals, wrote more opinions, gave more speeches, drafted more articles, taught more law school classes, and judged more moot courts than any other member of the court. And he did so despite all his administrative duties. Meanwhile, he chaired both the board of directors of the American Inns of Court and the Committee on Codes of Conduct of the Judicial Conference of the United States. He traveled constantly and sat with every regional circuit court, the first and only judge to do so.
Despite a life in overdrive, he was the happiest and funniest man I ever met, routinely reeling off five or six successive jokes without pausing to recollect, or even to breathe. Family members report that he had a perfect memory, an asset especially helpful to a tireless storyteller, which he was.
(Click here for a link to the article and more on Judge Markey). If Judge Michel’s description of Markey is not enough to get you to the event, Supreme Court Justice Antonin Scalia will be giving the keynote address. I have had the privilege of hearing Justice Scalia speak a couple of times. He is an excellent speaker and should not be missed.
Click here for John Marshall’s conference brochure and here for Patent Docs’ description of the event, they are a seminar sponsor. The registration deadline is this Friday, September 12. I hope to see you there.

Continue Reading Legacy of Federal Circuit Chief Judge Markey

James Sweeney, a prominent member of Chicago’s IP bar, passed away last week — click here for the Sun Time’s obituary. Sweeney graduated from Northwestern Law in 1956, after serving in the U.S. Navy aboard a submarine from 1950-1953. He practiced law most recently with Barnes & Thornburg. In 2000, at the request of the State Department, he traveled through Malaysia with his wife speaking about IP counterfeiting and piracy. Sweeney also organized and directed John Marshall’s Center for Intellectual Property Law:
The John Marshall Law School hired Mr. Sweeney in 1998 to run its Center for Intellectual Property Law because of his extensive background and his many contacts, said John E. Corkery, dean of the school. Mr. Sweeney retired in 2003.
“Jim was a big, gregarious fellow and he knew many, many people in the legal profession and particularly in intellectual property,” Corkery said. “It was hard to walk down the street with Jim Sweeney and not have him say hello to someone he knew.
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“He organized and directed the program and hired the practicing lawyers who would come to the law school and teach for us.”

Continue Reading James R. Sweeney — 1928-2008

I am sad to report that Mark Banner of Banner & Witcoff passed away over the weekend. Mark was an important member of Chicago’s IP bar and an active participant in educating numerous lawyers as an adjunct professor at both John Marshall in Chicago and my alma mater the Georgetown University Law Center. My condolences go out to Mark’s family and the Banner & Witcoff firm.
Here is some more information on Mark’s legacy from Banner & Witcoff:
Mark was the lead trial counsel in many successful intellectual property trials from both the plaintiff’s and the defendant’s perspectives. He had a particular passion for jury trials of patent cases and computer-related technologies. Despite battling cancer for the last five years, Mark continued his involvement in litigation and counseling work. “Mark made significant contributions to the field of intellectual property law. He was an extremely gifted attorney, a loyal partner, and a devoted friend. Mark was an integral part of the firm and will be greatly missed,” said Thomas K. Pratt, President of Banner & Witcoff.

Continue Reading In Memory of Mark Banner