McDonnell Boehnen Hulbert & Berghoff

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 24, 2013) (Keys, Mag. J.).

Judge Keys granted plaintiff’s motion to clarify the Court’s order that plaintiff produce documents related to two copyrighted, scientific articles that plaintiff alleges that defendants infringed by using

Team USA won the international Patent Cup Regatta earlier this month. Team USA was skippered by Chicago patent attorney Leif Sigmond, a former Managing Partner at McDonnell Boehnen Hulbert & Berghoff (“MBHB”). This year’s Cup was held in Sweden off the island of Marstrand. Sigmond’s crew included: Marcus Thymian and Michael Gannon, MBHB attorneys; and Derek Minihane , in-house counsel at Intermolecular. Team USA won five of their six races, all while building goodwill amongst the international patent community. 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. Chicago hosted the Cup in 2006, and Sigmond’s crew won the Cup that year as well.

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This Friday, March 5, 2010, the Northwestern Journal of Technology & Intellectual Property hosts its Fifth Annual Symposium. The Symposium, titled “New Rules for a New Day,” includes the following sessions:
• The Patenting of Social Interactions: Bilski Before the Supreme Court – a panel discussion on the Bilski case, what is at stake, and the Supreme Court’s options featuring Professor Matthew Sag of the DePaul University College of Law; Professor Joshua Sarnoff of the Washington College of Law at American University; Professor Jonathan Masur of the University of Chicago Law School; and Daniel Williams, a Partner at McDonnell Boehnen Hulbert & Berghoff LLP;
• Sharon Barner, Deputy Under Secretary and Deputy Director of the U.S. Patent and Trademark Office will provide the luncheon keynote on “Strategies for the USPTO: Ensuring America’s Innovation Future”;
• Trademark and Copyright in the Days of Internet: The Google Influence – a panel discussion on the ramifications of the Google Books and Google AdWords cases and the protection of IP in the fluid landscape of the internet featuring Michael Baniak, a Partner at McDonnell Boehnen Hulbert & Berghoff LLP and Professor Matthew Sag of the DePaul University College of Law;
• Who Defines the Law? USPTO Rule Making Authority – a panel discussion on recent court challenges to the USPTO’s rulemaking and interpreting power, including the Cooper Technologies, Tafas, and Wyeth cases featuring Professor James Speta of the Northwestern University School of Law; Patent Docs author Donald Zuhn, a Partner at McDonnell Boehnen Hulbert & Berghoff LLP; Nicholas Zovko of Knobbe Martens Olson & Bear LLP; and Professor Jonathan Masur of the University of Chicago Law School; and
• Redefining “Free”: A Look at Open Source Software Management — a panel discussion on the pitfalls and issues that arise when open source code is included in a deal featuring John Hines, a Partner at Reed Smith LLP; Jon Christiansen of EscrowTech International Inc.; Alfred Hanna, a Partner at Reed Smith LLP; and Joseph Herndon, a Partner at McDonnell Boehnen Hulbert & Berghoff LLP.
More information is available at the Symposium’s website. Registration for the Symposium is free. CLE credit will be available to attendees for a fee of $200.

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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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Please join me this Friday, March 6 for the Northwestern Journal of Technology & Intellectual Property’s annual symposium. I will be moderating a debate over whether business methods should be patentable in light of the recent Bilski decision. McDonnell Boehnen’s Bob Irvine will argue for business methods and Knobbe Martens’ Lauren Katzenellenbogen will argue against. If that debate is not enough to get you to the Symposium, here is a sampling of the other excellent presentations:
The Northern District’s Chief Judge Holderman will give the not to be missed keynote presentation: “Ten Commandments for Conducting an Intellectual Property Jury Trial.”
Panel on Tafas v. Dudas, Patent Rules Changes, and Patent Reform – a panel discussion on the Tafas case and patent reform bills recently considered by Congress featuring Chris Singer of McDonnell Boehnen Hulbert & Berghoff, and Patent Docs author, will discuss the Tafas v. Dudas decision and the effects the proposed changes would have had on patent practice, and Prof. Sean Seymore of the Washington and Lee University School of Law, and Prof. Matthew Sag of DePaul University College of Law, who will add a viewpoint from outside the practicing legal community.
Discussion of Employer Invention Assignment Agreements after DDB Technologies L.L.C. v. MLB Advanced Media, L.P. – a panel discussion regarding the best ways for protecting a client’s interests (whether the individual or the company) in an invention assignment agreement following DDB Technologies, featuring Mike Baniak of McDonnell Boehnen Hulbert & Berghoff, and Todd Dawson, Vice President of Legal Affairs at Zimmer, Inc.
More information is available at the Symposium’s website. Registration is free, although CLE credit costs $50 per credit hour. To register contact the development editor, Michael Hammer, m-hammer2009@nlaw.northwestern.edu.

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Yesterday the Sedona Conference (a nonprofit research and educational institute dedicated to the advanced study of law and policy in the areas of antitrust law, complex litigation, and intellectual property rights) issued its Cooperation Proclamation — click here to read the Proclamation and click here for the slides from the related press conference.* Every litigator knows that she has a duty to be a zealous advocate for her client. The Cooperation Proclamation focuses on the litigator’s other main duty, the one that is sometimes forgotten in the quest for zealous advocacy — the attorney as an officer of the court. As an officer of the court the Federal Rules of Civil Procedure require that we cooperate to fully and properly complete the discovery process. Unfortunately, the discovery process (just like code pleading that open discovery was created to fix) can become a ritualized fight focused on procedural rules and technicalities, instead of exchanging the necessary facts so that the case can be pared down and prepared for trial, mediation or settlement.
The Sedona Conference suggests that litigators first focus on their roles as officers of the court to cooperatively define the scope of and complete discovery in a case. Then, once all of the facts have been made available to the extent possible, the attorney focuses on the role of zealous advocate, working the produced evidence to make the client’s case. The Sedona Conference bills this as a somewhat radical proposal that will require fairly extensive awareness campaigns and retraining. But my experience suggests that the change may not be as radical as the Sedona Conference thinks. In many cases (although not all) the parties do try to produce the relevant documents and witnesses, and to resolve discovery disputes reasonably. I think what needs radical change is a pervasive lack of trust between litigators. Everyone is afraid their opponent is gaming the system and hiding the smoking guns. What most needs change is trust among the officers of the court. Perhaps the Sedona Conference’s plan of educating attorneys to perform cooperative discovery will begin to generate that trust.
And if you are disregarding the Cooperation Proclamation as you read this, click here to see if any of the judges you are currently appearing before have endorsed the Proclamation. I bet a few have; it is a long list.
Finally, I have to pay tribute to my former colleague, Gary Hood (now at McDonnell Boehnen Hulbert & Berghoff) who arguably called for the Cooperation Proclamation several years before the Sedona Conference. In 2004, Hood wrote an excellent article arguing for a reasonable discovery plan in patent cases: Refuse to Play the Game: An Alternative Document Production Strategy in Intellectual Property Litigation, Intellectual Property & Technology Law Journal, Volume 16, Number 5, May, 2004. Unfortunately, the article is not currently available in electronic form and I do not have rights from the publisher to make my own electronic copy. So, for now, if you would like to read it, you can go here to buy a reprint from the publisher.
* Hat tip to ediscovery info for directing me to the Proclamation. And thanks to Victoria Pynchon at the IP ADR Blog (and on Twitter @vpynchon) for anticipating this post while traveling through France.

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Team USA placed an impressive third in the international Patent Cup Regatta, skippered by Chicago patent attorneys Gary Ropski, President of Brinks Hofer, and Leif Sigmond, a former Managing Partner at McDonnell Boehnen Hulbert & Berghoff (“MBHB”). This year’s Cup was held in Venice, Italy on the Adriatic Sea. Ropski’s and Sigmond’s crew included: Marcus Thymian and Michael Gannon, MBHB attorneys; Derek Minihane, in-house counsel at Intermolecular; and Michael Pophal, in-house counsel at Energizer. 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. Chicago hosted the Cup in 2006, and Ropski’s and Sigmond’s crew won the Cup that year.

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The Chicago IP boutique McDonnell Boehnen Hulbert & Berghoff (former home of Dennis Crouch and Patently-O) has generated another patent blog:  Patent Docs.  Patent Docs is focused on the biotech/pharma arts written by a group of attorneys who are all PhDs (hence the blog’s name).  Welcome to the conversation Docs.  We are glad to