Patently-O Bits & Bytes by Lawrence Higgins

Is There a Trend Towards IP Litigation Boutiques?

  • On February 29th of this year Renee Quinn of IPWatchdog wrote a post titled, Boutique Rising: A Conversation with Winthrop & Weinstine, in which she discusses the increase in IP litigation boutiques. [Link] I recently spoke with attorney Jason Mudd of the newly formed IP law firm Erise IP ( about the trend towards IP litigation boutiques. Jason recently left a large Kansas City law firm, along with partners Eric Buresh and Adam Seitz, to start Erise IP with a team of attorneys from their prior firm. Erise IP brought along several large clients, including Garmin, Sony, Ubisoft, Ford, and Mazda, to name a few. Jason believes their new firm is consistent with a trend of IP litigation groups departing large law firms to form boutique firms that are able to provide clients with greater flexibility demanded by the rapidly changing IP litigation landscape. While the numbers are not out yet, there could possibly be a recent trend towards IP litigation boutiques.

Copyright Infringement

  • Last week while I was in copyright class, Professor Crouch brought up the Lexis-Nexis and Westlaw class action copyright infringement case. The plaintiffs in the case claim that the defendants (Lexis and Westlaw) copied thousands of copyright-protected works created by, and owned by, the attorneys and law firms who authored them. So, this case got me thinking, do companies like Google Patents infringe patent lawyers and patent firms copyrights? Similar to Westlaw and Lexis, Google downloads thousands of patent applications to store in their database. While there is not a clear answer on whether patent applications are copyrightable or not, it seems that patent applications can have parts covered by copyright –drawings for example, even if the entire patent application is not copyrightable. In Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003), the 7th Circuit recognized the copyrightability of an inventor's patent drawings. Does, this case alone indicate that Google and others may be guilty of copyright infringement for downloading patent applications? [Link]
  • It should be noted that Google is distinguishable from Lexis and Westlaw because Google does not charge users directly, and this fact adds weight to their fair use argument.

Patent Searching Tool

  • ArchPatent, a free-to-use patent search resource which provides novel ways to search, sort, and view patent information, has launched a revamped website this week. The revamp drew its inspiration from beta feedback over the last five months from individuals within the IP industry. ArchPatent Founder Brad Chassee indicates that the objective with the revamp is to focus the site on providing the simplest, most intuitive USPTO search tool – one which experts enjoy using and one which those new to patent searching would actually be able to navigate. ArchPatent wants everyone to be able to "slice and dice" patent search results quickly and efficiently, which should drastically reduce search times and simplify complex search tasks. The site is now ad free with some additional functionality being developed as part of a soon-to-be-released premium offering. The site has a useful filtering tool and filter types include: classification, assignee, examiner, agent, applicant and most referenced. The site now provides access to searchable USPTO data back to 1920 and pdfs back to 1790. [Link]

Patent Jobs:

  • Buchanan Ingersoll & Rooney is seeking an Electrical patent agent with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • Stoel Rives is searching for a patent attorney with 3-5 years of experience drafting electrical-related patent applications to work in their Portland or Seattle office. [Link]
  • Buchanan Ingersoll & Rooney is seeking an Electrical patent associate with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • SAS is looking for a patent counsel with 3 years of patent prep and prosecution experience in the software field and a degree in EE or CS to work at their Cary, NC location. [Link]
  • Sterne, Kessler, Goldstein & Fox is seeking chemist patent attorneys with at least a master's degree in organic or medicinal chemistry to work in their DC office. [Link]
  • Sterne, Kessler, Goldstein & Fox is searching for a chemical or biochemical IP attorney with a degree in CE, BM, or ME and 1-3 years of experience to work in their DC office. [Link]
  • Millennium Inorganic Chemicals is looking for corporate counsel with a degree in chemistry or chemical engineering and 7+ years of experience to work at their Glen Burnie, MD location. [Link]
  • Rutan & Tucker is seeking a trademark clerk with a minimum of 1 year of IP docket & filing experience to work at their Costa Mesa, CA office. [Link]
  • Westerman, Hattori, Daniels & Adrian is searching for a chemical IP attorney/agent with a 3 years or less of experience to work at their DC office. [Link]
  • Cantor Colburn is looking for an associate patent attorney with a chemical engineering degree and 2-5 years of experience to work in one of their offices. [Link]
  • Roberts Mlotkowski Safran & Cole is seeking a patent attorney with 2-4 years of experience and a degree in EE to work in their McLean, VA office. [Link]

Upcoming Events:

  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • The New Jersey Intellectual Property Law Association will hold a half-day Patent Litigation Seminar on Wednesday, March 14, 2012 11:45 am to 5:45 pm. Guest speakers include: Paul Berghoff, Kara Stoll, William McElwain, Richard Bress, Barbara Fiacco, and Lewis Ho. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • The 14th Annual Richard C. Sughrue Symposium on IP Law and Policy will be held March 19th at The University of Akron Law School. The program will include a review of recent developments in patent, trademark, and copyright law, as well as a panel discussion on international IP. David Kappos will be the featured speaker and he will discuss the USPTO's implementation of the American Invents Act. Other guest speakers include: Timothy Holbrook, Mark Janis, former chief judge Paul Michel, Samuel Oddi, Ryan Vacca, Susan Pan, Harold Wegner, and many others.
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, "Provisional Patent Applications: Making Substance in a Land Without Form," on March 21, 2012 at 12 noon EST. The first-to-invent impact of the America Invents Act requires a serious reevaluation of the use and content of provisional patent applications. Stephen G. Parmelee will address approaches to leveraging the provisional patent application opportunity by encouraging the inclusion of substantive content while taking economic advantage of the stylistic freedom that provisional filings permit. [Link]
  • The University of Pittsburgh School of Law will have their annual Innovation Law Lecture on March 22, 2012, 4-5PM. This year's guest speaker will be Professor Rochelle Dreyfuss from NYU School of Law and her talk is entitled "Are Patents Good for Science?" The event is open to the general public and one (1) CLE credit has been requested for the lecture. [Link] [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • Managing Intellectual Property is holdings its US Patent Reform Forum conference March 27, 2012 in Washington D.C. The forum will bring together top officials, leading counsel at US corporations and their private practice advisers for a number of lively and informative sessions looking at the strategic implications of US Patent Reform. Speakers include: David Kappos, Judge Paul Michel, Gene Quinn, Robert Armitage, Phil Johnson, and many others. (Patently-O readers will receive a discount and in-house IP counsel from large corporations and research institutes attend free of charge.) [Link]
  • The ABA Section of IP Law will hold its 27th Annual IP Law Conference March 28-30 in Arlington, VA. The conference is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world. Speakers and moderators include: Sharon Marsh, Keisha Hylton-Rodic, Alexander Wilson, Steven Emmert, Teresa Rea, James Bikoff, David Kappos, and many others. The discounted early registration deadline is March 14. [Link] [Link]
  • AIPLA and The University of San Diego School of Law will host the 2012 Electronic & Computer Patent Law Summit on April 2nd. The summit will include in-house counsel from Qualcomm, Apple, SAP, Covidien, ViaSat, Google, and Cisco, among others, as well as a distinguished panel of US District Court judges. Topics will include the new First to File system, an update on divided infringement, how the patent portfolio use and acquisition landscape is changing, and a discussion of the patent pilot program. [Link]
  • On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]

Contact with leads for future Bits and Bytes.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.