Blawg Review #222 was hosted this week by Duncan Bucknell’s IP Think Tank — click here to read it. The Review is themed around Australian community festivals, which sound much like American community festivals. Of particular interest, are links to the following IP-related posts:
Drug & Device Law and Point of Law posts discussing the Twombly/Iqbal pleading requirements, a subject I have discussed on this blog here and here. These posts suggest that Twombly-style pleading is spreading to most substantive legal areas, as the Supreme Court required in Iqbal.
Spicy IP’s post highlighting the fact that Managing Intellectual Property magazine named IP bloggers generically as one of the fifty most influential people in IP — click here for the post.

Continue Reading Blawg Review #222 on Twombly & the Power of IP Bloggers

Niro Scavone’s Joe Hosteny recently responded to my John Marshall Review of Intellectual Property article, The Uneven Application of Twombly in Patent Cases: An Argument for Leveling the Playing Field (click here to read it). In the article, I argued that Twombly’s increased pleading standard should be applied to patent cases, but that it was being applied unevenly to patent plaintiffs and defendants. To fix that, I argued that plaintiffs should be required to identify the asserted claims and the products accused of infringing those claims in their complaints.
Hosteny responded in his February 2009 IP Today column, the Litigator’s Corner — click here to read it — contending that increasing pleading standards, in his experience, has either wrongly streamlined cases, where a defendant attempted to limit plaintiff to its original complaint regardless of what discovery later showed, or has increased the cost of discovery when plaintiff was required to move to compel after defendant unreasonably limited the scope of discovery defendant would provide based upon a more detailed complaint.
Hosteny admits his argument is based upon anecdotal evidence, and I do not fault him for that. As litigators, we constantly rely upon our own anecdotal evidence to make decisions about our cases. But I do disagree with Hosteny’s conclusion. If the Federal Circuit adopted rules requiring more detailed pleadings, or even if just an individual district court did it, just like with other rules a body of law would be created guiding litigants in future cases. Over time Hosteny’s anecdotal examples would stop recurring as defendants relied upon prior opinions telling them how much discovery beyond the claims was required. And plaintiffs would learn how long they generally had to amend their complaints to add new claims or products. So, while increased patent pleading standards might briefly increase the scope of discovery in patent cases, over time increased pleading standards would significantly reduce the cost and scope of patent cases.

Continue Reading Patent Pleading Standards: A Response

Blawg Review #189 is up at Colin Samuels’ Infamy or Praise Blog — click here to read it. As would be expected of a Blawg Review Sherpa, Samuels’ provided an epic Review, centered around The Rime of the Ancient Mariner. In addition to excellent writing focused around a strong theme, Samuels features some excellent IP content, including my post about the unequal application of Twombly pleading standards in patent cases:
Maya Richard suggested four tactics to preemptively protect patent assets from patent trolls: monitoring patent filings for applications related to your portfolio; hedging risk with patent infringement insurance; retaining skilled IP counsel to build a case for major patent assets; and joining an industry protection group. Also writing on a patent-related topic was R. David Donoghue, who noted that despite the Twombly decision, “many district courts are requiring that patent defendants plead affirmative defenses and, in some cases, counterclaims to the higher plausibility standard.” He suggests remedies for this uneven application of the Twombly standards.
And as an encore, after seeing Twitter driving traffic to his Review, Samuels posted a list of the Twitter accounts of the bloggers featured in Blawg Review #189 — click here to read it.

Continue Reading Blawg Review #189

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

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

Medallion Products, Inc. v. H.C.T.V., Inc., No. 06 C 2597, 2007 WL 3085913 (N.D. Ill. Oct. 18, 2007) (Darrah, J.).
Judge Darrah dismissed defendant Broadcast Arts Group (“BAG”) for lack of personal jurisdiction, but held that the Court had personal jurisdiction over defendant ICC, Woodridge Specialty Products Corp. and an individual defendant (collectively “ICC Defendants”). Plaintiffs argued that BAG’s tortious acts against plaintiffs, all Illinois residents, created personal jurisdiction based upon the effects test doctrine. But the Court held that the alleged tortious acts against were not sufficient for jurisdiction because BAG was a Florida resident and all of its allegedly tortious acts were performed in Florida or Pennsylvania, at the request of non-Illinois residents.
The alleged tortious acts of the ICC Defendants, however, did create personal jurisdiction pursuant to the effects test doctrine. The ICC Defendants allegedly entered an agreement to develop, market and sell a counterfeit pet-stain removal product that was packaged in bottles using plaintiff’s “Urine Gone” logo. The alleged acts and resulting injury would have occurred in Illinois.
The Court also held that plaintiffs met the Fed. R. Civ. P. 8 pleading standards as clarified in Atlantic Corp. v. Twombly, ____ U.S. ____, 127 S. Ct. 1955 (2007). So, the Court denied defendant’s motion to dismiss plaintiffs’ state law claims.

Continue Reading Jursidictional Effects Test Doctrine Still Requires Some Connection to the Forum

Sotelo v. Suburban 171, Inc., No. 07 C 2447, 2007 WL 2570355 (N.D. Ill. Aug. 29, 2007) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ Lanham Act unfair competition claim. Plaintiffs operated a salon called “Studio 171.” Defendants took over the location of plaintiffs’ salon and operated their own salon using all of the Studio 171 signage and marks. Defendants argued that plaintiffs’ unfair competition claim should be dismissed because the Studio 171 mark was either descriptive or generic and plaintiff did not plead secondary meaning. But the Court held that the argument was premature. A plaintiff need not plead secondary meaning.* And furthermore, plaintiffs did plead secondary meaning, stating that the Studio 171 mark had developed “considerable value” and become “uniquely associated” with plaintiffs’ business. The Court did, however, dismiss plaintiffs’ RICO claim for failing to plead their fraud allegations with particularity pursuant to Fed. R. Civ. P. 9(b).
* The Court did not cite the Supreme Court’s recent decision in Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955 (2007) (read more about the decision at the University of Chicago Faculty Blog). But based on other recent opinions citing Twombly for heightened pleading requirements, I wonder if plaintiffs at least should plead secondary meaning now.

Continue Reading Plaintiff Not Required to Plead Trademark’s Secondary Meaning