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Usually I post a holiday-related patent on major holidays (which Halloween is in my house). But in light of today’s Eastern District of Virginia preliminary injunction hearing regarding whether to allow the PTO’s new continuation rules to take effect tomorrow, November 1, as planned, I thought a post on the continuation rules was more appropriate. The patent world, and more particularly the patent prosecution world, has been busy analyzing and preparing for the new continuation rules for several months. For analysis of the new rules check out the Maryland Intellectual Property Law Blog (click here and here) and the 271 Patent Blog (click here).
While most were just probing the rules for loopholes or preparing to comply with them, two also filed suits in the Eastern District of Virginia seeking to enjoin enactment of the new rules — Triantafyllos Tafas v. Dudas, No. 07 C 846 (E.D. Va.) and SmithKline Beecham Corp./GSK v. Dudas, No 07 C 1008. Click here for Patent Docs’ excellent coverage of the SmithKline/GSK suit.
The two suits were consolidated and a preliminary injunction hearing has been set for today — click here and here to download the briefs at Patently-O. Numerous entities have taken sides, filing amicus briefs — click here for a list of the briefs and links to some of them at the PLI Patent Practice Center Blog. And for those of you who cannot wait to read the result here shortly after it comes out and who are not busy with legal work or preparing for tonight’s trick or treating, click here for the PLI Patent Practice Center Blog’s live blogging coverage of the PI hearing.
Happy Halloween.
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Continue Reading Trick or Treat: Have a Preliminary Injunction to Eat

Wednesday, the Senate held its first hearings regarding the Patent Reform Act. Both the main stream media and the legal blogs are busy handicapping the battle over the legislation and the Act’s chances of success. Here are some of the highlights:
The WSJ Law Blog handicaps the big players in Patent Reform’s Battle Royale
The WSJ print edition featured the Senate hearings in a page-one story (subscription required).
FileWrapper provides a nice summary of each witness’s positions.
The New York Times also ran a Business section story.
Patent Prospector takes a very strong position:
The thankful result of today’s Senate hearing is watching the Patent Reform Act of 2007 appear the statutory tub of lard that it is.
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Continue Reading Patent Reform Enters the Spotlight

The Wall Street Journal print edition had an interesting article about a new trend in defending lawsuits that focused on an IP dispute — A Growing Dispute: Fertilizer Start-Up Uses Web as Defense (subscription required). The article discusses TerraCycle Inc.’s use of a website (www.suedbyscotts.com) to bolster its defense of a lawsuit Scotts Miracle-Gro Co. filed against TerraCycle alleging trade dress infringement and false advertising.* According to the article, TerraCycle has not raised much money from its online solicitation for defense fund donations. But during the first four weeks of its online defense, TerraCycle’s sales jumped 122%, as opposed to 31% during the same period last year. TerraCycle also saw a corresponding spike in visits to its primary website. The WSJ Law Blog picked up on the story and developed it further, identifying several other defendants that have used websites as an aspect of their defense strategies, including Vonage’s site (www.freetocompete.com) developed in connection with its prominent patent dispute.
It appears that defending cases on the internet is a growing trend. I doubt it will benefit defendants within the confines of the courtroom or the legal proceedings generally. Perhaps bringing details of the suit into the public eye will help identify additional prior art or apply pressure from interest groups like consumers or shareholders to get plaintiffs to change tactics. But it seems to me that the biggest benefit of these sites may commercial, they make news and drive additional traffic to the defendant’s primary site.
* You can read more about the Scotts Miracle-Gro v. TerraCycle dispute at the Seattle Trademark Lawyer.
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Continue Reading Taking IP Defense to the Court of Public Opinion

Funny Cide Ventures, LLC v. Miami Herald Publishing Co., No. 4D06-2347, Slip Op. (Fla. 4th Dist. May 16, 2007).
Funny Cide Ventures is not a Northern District opinion, nor is it about intellectual property, but it is worth reading. In a two-page per curiam opinion, the appellate panel dismissed Funny Cide Venture’s (“FCV”) claims of injurious falsehood against defendants the Miami Herald and Knight-Ridder. FCV’s horse Funny Cide won the Kentucky Derby in 2003. After the race, the Miami Herald falsely reported that Funny Cide’s jockey admitted carrying something during the race and implied that the jockey had cheated by carrying an illegal, battery-operated device perhaps to shock Funny Cide. Funny Cide and his jockey went on to win the Preakness Stakes with a substantial lead over the field, completing two-thirds of the Triple Crown. But they lost the final race at Belmont and, with it, the Triple Crown. FCV filed suit against defendants claiming that the Miami Herald’s erroneous story caused the jockey to run Funny Cide too hard at the Preakness in an effort to prove his and Funny Cide’s superiority and, therefore, their innocence. As a result of that effort, Funny Cide lost at Belmont and, therefore, lost the revenue generated by a Triple Crown winner. The Court held that despite the “novelty and creativity” of the claims, the loss was not a direct result of defendants’ article.
While the opinion is timely (the Preakness was run last weekend), what is most interesting about it is Judge Farmer’s concurring opinion. His concurrence does not make any novel legal arguments or take issue with the substance of the per curiam decision. Instead, it leads with an argument against “dreary,” “tedious” and unnecessarily long judicial opinions.
Judge Farmer argued that some opinions should be written in alternative styles to open the law to a larger audience, and he resolved to occasionally write in other styles:
In my view nothing that is available in human experience ought to be banned by convention in judicial opinion writing.
I should state publicly my own resolution, made several months ago. I had decided that the style of some opinions could–and should– be unconventionally changed for greater openness to all readers. I would try to write some opinions in styles and tones calculated to make legal reasoning clearer for those without law degrees. Then came this case.
Judge Farmer chose this case to act upon his resolution. He wrote his opinion as though he were telling a story/writing a novel — it has a plot (at least a loose one), avoided legal-ease or citation, and it used short, decisive sentences:
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Continue Reading A Different Style of Legal Writing

KSR v. Teleflex, 550 U.S. __ (2007).

A unanimous Supreme Court rolled back the Federal Circuit’s teaching, suggestion or motivation obviousness test in favor of the Court’s prior, and substantially broader, test as set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).  Justice Kennedy delivered the Court’s…

In January, Cisco’s General Counsel Mark Chandler gave a speech at Northwestern’s Securities Regulation Institute that made major headlines.  Because several in-house friends and colleagues have mentioned it to me recently, I thought it was worth a post.  Anyone involved in the private practice of law should take the time to read it.  It highlights an issue that is critical to achieving a client’s desired results and to developing a strong relationship between a client and its outside counsel — aligning the interests of the counsel to those of the client.  Chandler’s speech resonates with me because when I was in-house, I struggled to align my outside counsel’s interests with those of my company.  It seems that it should be an easy task, but many outside counsel do not get it. Continue Reading Cisco’s GC Speech is Heard Around the Country

In January the House of Representatives passed a bill that would establish a pilot program in five district courts to develop district court judges with patent expertise.  The program will provide judges in the five districts the opportunity to get specialized patent training.  Cases, including patent suits, in the five districts will continue to be…

As a life-long Lions fan — yes, I did say "fan" — it pains me to say "Go Bears", but this is a Chicago-focused blog and so, with Chicago’s Bears preparing for Sunday’s Big Game* I feel obliged to write the post.  In order to keep this law-related, I direct you to the WSJ Law…

Father Robert Drinan, S.J. died on Sunday.  Father Drinan was a founder of modern (post-Watergate) legal ethics and a colorful, important character in American political history, having been a member of the House Judiciary Committee during the Nixon impeachment proceedings and an outspoken critic of American activities in Vietnam and Cambodia while he was in Congress.  Father Drinan was also a professor at Boston College (actually the Dean) and then at Georgetown.  While getting my JD at Georgetown, I was blessed to spend a considerable amount of time with Fr. Drinan as an Editor on the Georgetown Journal of Legal Ethics, created by Fr. Drinan and still the only ethics journal in the country, and when I took several of his classes, including his Advanced Legal Ethics Seminar.  Fr. Drinan loved teaching and he had an endless supply of experience from which to teach.  Continue Reading Father Drinan: Losing A Legend