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At the end of September, September 26-29, the Licensing Executives Society is hosting its annual meeting in Chicago at the Sheraton Hotel & Towers. The meeting, themed “Deals, Deals and more Deals” will focus upon IP’s critical role in business strategies and ways to use IP to maximize deals and profitability. There are an impressive array of presentations and workshops, headlined by the following very impressive plenary sessions, as described by the Society:
The SuperFreakonomics of IP Licensing – Do Patents Slow Innovation? – Steven Levitt, co-author of the New York Times best-seller Freakonomics and its recent follow-up SuperFreakonomics, will present a keynote address on the unintended impact of the patent system on innovation. He will also discuss his groundbreaking research on the effects of incentives on economics and market behavior as they relate to innovation. A book signing will follow Mr. Levitt’s presentation.
Is the U.S. Patent System Under Siege: Congress, the PTO, the FTC and the Supreme Court -The Honorable Judge Paul Michel, retired Chief Judge of the United States Court of Appeals for the Federal Circuit will look at the many challenges facing the U.S. patent system including the reform legislation currently pending in Congress, the USPTO’s efforts to reduce backlogs and improve the quality of issued patents, and increased scrutiny by the Supreme Court and FTC.
IP as a National Responsibility: A Global Outlook for Strategies, Policies and Laws – Economist and Former Vice Presidential Candidate Pat Choate, will join John Whealan, Associate Dean of Intellectual Property Law at George Washington University Law School and Suzanne Michel, Deputy Director of FTC’s Office of Policy Planning to discuss how the United States, Europe, Asia and developing countries might leverage IP to secure future wealth and what this could mean for commercial collaboration across national boundaries.
IP100 Recap: IP Hot Topics 2010 – Over the course of 2010, LES has hosted innovative IP100 forums comprised of high-level IP leaders who have analyzed several hot IP topics. This panel will revisit the topics, review previous findings and discuss what we’ve learned from the world-class IP100 panels about best practices in licensing. Key ‘take-aways’ will be included in a white paper available after the meeting for attendees.
Click here for registration information. I plan to attend, and hope to see you there.
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Continue Reading Licensing Executives Society Comes to Chicago

Here are a few stories you do not want to miss:
The Wisconsin Law Journal has an article based upon a Northern District of Illinois case in which a summary judgment decision hinged upon a failure to substantively answer one of the other party’s Local Rule 56.1 statements of material fact. In that case, a procedural objection was made, but no substantive answer was given. So, when the objection was denied, the fact was deemed admitted. This is a point I have made often: follow Local Rule 56.1 closely and carefully.
The Blog of the Legal Times reported that in a recent interview the Federal Circuit’s Chief Judge Michel suggested that the next nominees to the Federal Circuit should have the following backgrounds: a patent-experienced district judge; a trial lawyer with patent experience; or a chief corporate lawyer with patent experience.
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Continue Reading Patent & Procedure News

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.
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Continue Reading Do you prefer IP law certain or fair?

Making good on his promise to turn his IP Colloquium into National Public Radio for IP law, Doug Lichtman’s newest offering is an extended interview with Federal Circuit Chief Judge Michel. Click here to listen to Licthman’s interview, you can even apply for New York or California CLE credit after listening. Here are some of Judge Michel’s more interesting observations:
Petitions for rehearing are too often “shallow and weak.”
Votes denying en banc rehearings are often close, making the poor petitions for rehearing especially surprising and disappointing.
Parties interested in supporting cases with amicus briefs should consider filing briefs supporting rehearing petitions. An amicus brief that was both well researched and well written could play an important role in strengthening a case’s en banc potential and tipping close votes for rehearing.
In re Bilski did not answer all of the 101 questions because not all of the questions were raised in the case or ripe for consideration. It will take a series of 101 cases to flesh out the post-Bilski state of the law.
Judge Michel is hopeful that the new patent jury instructions — click here to read the Blog’s post about them — will help bring some clarity and continuity to, among other things, damages and obviousness instructions, although at the time of the interview it appeared that he had not seen the instructions yet.
The Doctrine of Equivalents has almost “dried up.”
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Continue Reading Chief Judge Michel: The State of Patent Law

In re Bilski, __ F.3d __ (Fed. Cir. 2008) (en banc).*
Chief Judge Michel, writing for a nine judge majority, affirmed the Board of Patent Appeals and Interferences’ finding that Bilski’s invention — a commodities trading method for hedging risks — did not meet the 35 U.S.C. § 101 patentable subject matter requirement. The Federal Circuit overturned State Street’s “useful, concrete, and tangible result” test as insufficient to determine patentability. The Federal Circuit held that the Supreme Court’s “machine-or-transformation” test was the only test for determining patentability:
A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.
I found Judge Dyk’s concurrence tracing the history of the “machine-or-transformation” test back to the Patent Act of 1793 especially interesting:
In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793).
As with any major appellate decision, we will need eighteen to twenty four months of district court and Federal Circuit decisions to flesh out and fully understand Bilski’s implications. While we argue those cases and await the decisions, there will be plenty of law review and blog analysis. Here are some of the first (I will update with additional posts as they come):**
* 271 Patent Blog (glad to see Peter Zura back in the blogosphere);
* IP ADR Blog;
* Likelihood of Confusion;
* Patent Baristas;
* Patently-O (with Crouch’s usual, in-depth analysis);
* The University of Chicago Law Faculty Blog (Randy Picker has an exceptionally detailed take on the opinion); and
* WSJ Law Blog (saying experts are torn as to whether Bilski will make it to the Supreme Court).
* Click here for the opinion.
** I have updated the list of Bilski blog posts with some new ones.
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Continue Reading Bilski: Some Business Method & Software Patents Survive

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.
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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.
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Continue Reading Legacy of Federal Circuit Chief Judge Markey

Managing Intellectual Property published its annual list of the fifty most powerful people in the international IP community (hat tip to Patent Docs for pointing it out). Click here for the list (subscription or two week free trial sign up required). There were two honorees with Chicago connections:
Rhonda Steele (#8) — Steele is both the president of INTA and Asia-Pacific marketing properties manager for Mars. While Steele does not necessarily work in Chicago or on Chicago-specific IP, Mars makes Fun Size versions of its 3 Musketeers, Snickers and Milky Way candy bars in Chicago.
Jim Malackowski (#34) — Malackowski is a founder of Chicago-based Ocean Tomo, as well as its president and CEO. Among other things, Ocean Tomo is well known for its patent auctions (at leas the last several of which have each totalled more than $10M in sales), IP valuation services and damages expert work.
These IP luminaries share the honor with Second Life avatars (#1), the PTO’s Director John Dudas (#4), the Federal Circuit’s Judge Michel (#9), Harry Potter (#14),and blogger and Google copyright counsel William Patry, of the Patry Copyright Blog.
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Continue Reading Chicago Connections to Managing IP’s Top 50

Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., No. 06-1561, Slip Op. (Fed. Cir. Sept. 12, 2007) (Holderman, C.J., sitting by designation.).*
On behalf of Chief Judge Michel and Judge Gajarsa, the Northern District’s Chief Judge Holderman affirmed C.D. California’s holding that declaratory judgment plaintiffs’ (“Arminak”) “AA Trigger” shroud design for a spray bottle did not infringe declaratory judgment defendant’s (“Calmar”) design patents covering certain design elements of shrouds. The main issue, and one of first impression, was whether the “ordinary observer” for purposes of design patent infringement should be the end-user/purchaser of spray bottles or the industrial purchaser that buys triggers or shrouds for assembly into a finished spray bottle product. The district court held that the ordinary observer was the industrial purchaser and the evidence clearly established that industrial purchasers would not be confused by similarities between Arminak’s and Calmar’s patented shrouds. Calmar argued, however, that the Supreme Court in Gorham Mfg. Co. v. White, 81 U.S. 511 (1871), expressly excluded experts from being ordinary observers and that, therefore, retail purchasers had to be the ordinary observer. But the Federal Circuit noted that did not sell shrouds or fully assembled spray bottles including their respective shrouds to retail purchasers. The parties sell shrouds to industrial purchasers. Industrial purchasers, therefore, are the appropriate population of ordinary observers. The ordinary observer is:
A person who is either a purchaser or, or sufficiently interested in, the item that displays the patented designs and who has the capability of making a reasonably discerning decision when observing the accused item’s design whether the accused item is substantially the same as the item claimed in the design patent.
* This is not an appeal from the Northern District, but I am covering it because Chief Judge Holderman authored the Opinion. Thanks to Dennis Crouch at Patently-O for bringing the case to my attention.
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Continue Reading Federal Circuit Further Defines Ordinary Observer Test