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
Bilski: Some Business Method & Software Patents Survive
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.
Continue Reading Bilski: Some Business Method & Software Patents Survive
Posner Inequitable Conduct Opinion Analysis
New Medium LLC v. Barco N.V., No. 05 C 5620, 2008 WL 4615682 (N.D. Ill. Oct. 16, 2008) (Posner, J. sitting by designation).
In my previous entry about this case, I linked to a copy of this decision and briefly explained the result, but did not provide any analysis of the opinion because I was previously involved in the case — click here to read that entry in the Blog’s archives. Since that post, Dennis Crouch has provided some excellent analysis of the opinion — click here to read it at Patently-O. Thanks Dennis.
Continue Reading Posner Inequitable Conduct Opinion Analysis
Nike v. Wal-Mart: Complaint May Show Future of Twombly Pleading
Nike, Inc. v. Wal-Mart Stores, Inc., No. 08 C 5840 (N.D. Ill.) (Hibbler, J.).
As I have said before, I generally do not discuss complaints, but Nike’s design patent suit against Wal-Mart last week has drawn significant blog coverage — click here for the complaint. And most of that coverage has missed the most interesting element of the complaint, from a legal procedure perspective (and yes, legal procedure is interesting, at least to me): Nike’s detailed pleadings. Instead of simply identifying its design patents (related to its Nike Shox product line) and Wal-Mart’s allegedly infringing shoes, Nike put detailed design patent claim charts in its complaint showing an accused product from the same angle as each figure in the design patent. Here is a portion of one of the charts:
Continue Reading Nike v. Wal-Mart: Complaint May Show Future of Twombly Pleading
Blawg Review #173
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
An Important Voice Leaves the Blogosphere
Bill Patry announced that he is ending his blog, the Patry Copyright Blog. I will miss Patry’s insight into the copyright world. For the last several years I have routinely turned to his blog when I needed a fresh take on or a deeper understanding of a current event in the copyright world. Patry’s posts were always thoughtful, detailed and powerful, sometimes even provocative. Sadly for me, I will have to turn elsewhere the next time I struggle with a copyright issue. And I am not alone in my disappointment:
Fire of Genius
Patently-O
Rob Hyndman
Bill, Thank you for your time and your insight over the last several years and 800 posts.
Continue Reading An Important Voice Leaves the Blogosphere
Federal Circuit Upholds Northern District’s Attorney’s Fees Award
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 v. LG: Patent Exhaustion
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
New Legal Resources
In addition to the new regional IP blogs, here are several new legal resources:
* Startup guru Guy Kawasaki has started the Alltop project which categorizes blogs by subject matter and aggregates blog content for each subject on a single page. The law Alltop site is excellent, although I would suggest adding the Chicago IP Litigation Blog. It is like having someone else set up and update feed readers for you. This is how Alltop describes itself:
We help you explore your passions by collecting stories from “all the top” sites on the web. We’ve grouped these collections — “aggregations” — into individual Alltop sites based on topics such as environment, photography, science, celebrity gossip, fashion, gaming, sports, politics, automobiles, and Macintosh. At each Alltop site, we display the latest five stories from thirty or more sites on a single page — we call this “single-page aggregation.”
* The Patent Appeal Tracer follows patent cases from filing of a Federal Circuit appeal, after many of the regional IP blogs stop following them, until an opinion issues, when Patently-O and others take over. It is an interesting idea and a well written blog. As an example of what they do, check out this recent post on the Federal Circuit appeal of Northern District case Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., No. 05 C 3684 (N.D. Ill.) (Der-Yeghiayan, J.) — click here or here for coverage of the case in the Blog’s archives.
[UPDATE]: The Chicago IP Litigation Blog has been added to Alltop’s law page. Thanks Guy. Now, if I could just get Kawasakied.
Continue Reading New Legal Resources
Ray Niro & Dennis Crouch on Anonymous Blogging
I thought I was done discussing anonymous blogging — click here for my posts about Troll Tracker and anonymous blogging. But the Legal Talk Network’s Lawyer 2 Lawyer podcast has just published an edition about Troll Tracker and anonymous blogging featuring Ray Niro Sr. of Niro Scavone (who offered $15,000 for anyone who revealed Troll Tracker’s identity) and Dennis Crouch of Patently-O. It is a very interesting set of interviews. I only wish that Niro and Crouch had been on together, instead of in separate interviews. Here are some highlights:
Niro stated that no one has claimed the $15,000 reward for identifying Troll Tracker.
Niro emailed Troll Tracker and offered to donate the reward to charity (at that time it was $10,000) and fly Troll Tracker to Chicago to meet with Niro and see his firm.
Niro went back and forth between saying that anonymous blogging was wrong and that it was harmful and should not be allowed because you could not judge the author’s credibility.
Crouch supported anonymous blogging, done correctly, but acknowledged that anonymous comments on his site tended to be more aggressive than those with identified authors.
Crouch offered Troll Tracker an opportunity to contribute to Patently-O.
Crouch sees much of this as a generational change. Among other things, those under thirty have no expectation of privacy or concern at revealing their identity on the internet. Those over thirty are careful with their privacy and identity, making anonymity more enticing. That suggests that anonymous blogs will become less prevalent with time. Troll Tracker is likely mid-thirties, putting him right on the cusp of Crouch’s dividing line.
Crouch’s generation-split argument may have been displayed when Niro and Crouch were asked for their contact information. Crouch told people to go to Patently-O. Niro was uncomfortable providing his contact information and, when gently prodded, explained that he could be contacted through his firm, Niro Scavone. Of course, Niro’s reluctance could also be explained by the anonymous threats made against him in the recent past.
Finally, Business Week has a good article detailing the Troll Tracker story — click here to read it.
Continue Reading Ray Niro & Dennis Crouch on Anonymous Blogging