The Inn’s site is here. If you’re not familiar with Inns of Court, let alone IP Inns of Court, they’re designed to foster mentoring and professionalism. I’m a member of the Atlanta Inn, and it’s served those purposes in style.
For those of you in Ohio, I’ll be speaking at the 16th Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy on March 10 in Akron, which you can read about here.
An article is here. (Note to WSJ: I would have linked to you but… noOOoO.) I found the case, but only on Westlaw, not at the N.D. Cal’s bankruptcy site. This is a potential big monkey wrench on hiring lawyers from imploding and exploding firms…
Okay, the New York Times is copying me! Kidding, of course, but there’s an op-ed here about how professors (all of them, not law alone) write garbage that no one reads. Nicholas Kristof wrote it. In part he says:
The latest attempt by academia to wall itself off from the world came when the executive council of the prestigious International Studies Association proposed that its publication editors be barred from having personal blogs. The association might as well scream: We want our scholars to be less influential!
A related problem is that academics seeking tenure must encode their insights into turgid prose. As a double protection against public consumption, this gobbledygook is then sometimes hidden in obscure journals — or published by university presses whose reputations for soporifics keep readers at a distance.
I co-authored a piece a long time ago when I had become tenured, and my colleague was pre-tenured. We watered it down a lot due to the latter fact, but it still made some good points. The title? Why there should be fewer articles like this one. It’s here.
Key paragraph:
Instead of rooting its analysis in the text or history of Section 285, the Federal Circuit has purported to borrow the two-prong test this Court has used to determine, for purposes of the Noerr-Pennington doctrine of antitrust law, whether particular litigation is a “sham.” The Federal Circuit’s test requires (1) a rigid and demanding threshold showing that a claim was objectively without justification; (2) independent evidence of the plaintiff ’s subjective state of mind in bringing the baseless claim; and (3) proof of these elements by “clear and convincing evidence.” These requirements have diminished Section 285’s effective- ness as a tool to discourage abusive patent litigation and mitigate injustice suffered by prevailing parties in particular cases. This Court should reject the Federal Circuit’s analysis, make clear that district courts have broad discretion to award fees in exceptional cases in accordance with equitable principles, and vacate the judgment below.
Full brief is here. Reads like my blog post, below, on this… and Chief’s recent concurrence (also below).
I need to digest this further, but I think I agree with the law profs. Among the change are, as you know, to eliminate the use of the simple forms (including patent infringement), to eliminate the discretion of a judge to allow discovery into matters that are relevant to the subject matter, but not to a claim or defense (which has huge repercussions given the CAFC’s holding (wrong, imho) that FRCP 9(b) applies to inequitable conduct claims, narrow the scope of discovery generally and with respect to specific forms, and more.
The law profs’ letter is here.
I’ve not been heavily involved in discovery in a long time, but apart from ESI issues, troll issues, and a few odd things, haven’t heard a whole lot of carping…
H and W are married. W invents something, and gets a patent. They divorce. W sues accused infringer on the patent. In response, accused infringer takes a license from H for a buck-fifty. Result?
From what I’ve seen over the years, a patent practitioner would say, “the invention is entirely W’s.” Also from what I’ve seen over the years, a divorce attorney in a community property state would say exactly the opposite. (Washington state has (or at least had) some even more interesting statutes about ownership of stuff developed by couples in business together.)
Y’all have fun with this draft article on an issue I should publish on but haven’t gotten around to that relates to competency in prosecution. Somehow, someway, we all think W should own all of the invention, but I’m not sure a state court would say so….
The article by folks at Burns & Levinson is here. It’s short, and the key takeaway is: “it behooves in-house counsel to let their business clients know that if they are considering relinquishing control of the company, they likely will lose the right to keep communications with in-house or outside counsel confidential unless they contract to retain that right in the transaction documents.”
Back in 1985, when the PTO was for the first time going to adopt ethics rules specific to prosecution, a lot of people wrote comments concerned that the PTO was going to try to regulate practice beyond that before the Office. In response, the PTO did several things, all of which made it clear that it was not seeking to regulate practice not before the Office and to eliminate any doubt to the contrary.
First, it adopted 37 CFR 10.1. In part, that provision states: “This part governs solely the practice of patent, trademark, and other law before the Patent and Trademark Office.”
Second, in response to concerns that it was trying to regulate conduct not before the Office it said (several times, but here are two):
Third, in response to (many, many) comments saying “you should put ‘with respect to practice before the Office’ in specific rules,” that the PTO didn’t need to do so in light of its addition of 10.1.
So, it was clear that the PTO did not intend to regulate, and was not intending to regulate, conduct not before the Office. The PTO made that abundantly clear (I could put up a string cite of similar quotes from the notice & comment to the 1985 rules’ adoption.)
In recent speeches by OED Director Covey, he took this position: “Practitioners are subject to discipline for not complying with USPTO regulations, regardless of whether their conduct was related to practice before the Office.” (Copies of these slides are here.)
I know that the OED has taken an extremely broad view of its jurisdiction. The slides themselves point to some cases. (Note: I’m not talking about reciprocal discipline — e.g., Texas disbars me; the PTO can, too. I’m talking about a practitioner who does something in federal court, say, and he gets sanctioned; the PTO can discipline that lawyer for that. This has zero to do with reciprocal discipline and the protections afforded by states in disciplinary proceedings.)
Someone help me reconcile these two positions. No statute changed between 1985 and 2014, so you don’t get an easy answer.
It is here. Having been at the CAFC clerking for Chief Judge Rader when this was decided, I found this very interesting. I’m not sure what I think of relying upon the idea/expression dichotomy…
There’s an article here, and it refers to an article in the Columbia Science & Tech L.J., here, about perceived abuse. The article cites to a survey it conducted that shows 25% of lawyers know of abuse.
The other side of the coin.
On a larger scale, it is quite odd to have the PTO saying, over and over again, that it got it wrong by issuing a patent.
| Intellectual Property Section CLE Program – Real Ethical Issues in Patent Prosecution and Litigation SPEAKER: Professor David Hricik, Mercer University School of Law, Macon, GA This 2-hour seminar will focus on issues of interest to all in the patent field, including areas of particular interest to litigators and prosecutors. – This seminar is taking place live in Phoenix – You can attend the live seminar in Phoenix, the group viewing of the live webcast in Tucson, or register for the webcast and view the seminar whereever you have an internet connection. 12:00 p.m. to 2:00 p.m. Location: Snell & Wilmer LLP, Phoenix and Tucson, Snell & Wilmer LLP, One Arizona Center, 400 East Van Buren St., Suite 1900, Phoenix and Snell & Wilmer LLP, One South Church Ave., Suite 1500, Tucson Contact: Betty Flores or Wendell Chin – 602.340.7307 or 520.623.9944 |
The notice and request for comment is here. Among other things, the need for disclosure will foster identification of conflicts by PTO personnel and reducing abusive litigation…
I was speaking last month at the PTO, and the OED director gave a talk on several issues that surprised me. I’ll be posting about them in the coming days.
One was the suggestion that customer number practice can result in greater instances of inequitable conduct. Although he mentioned imputation, I don’t think that’s what he meant: if three lawyers are on a customer number, then each might be deemed, for that reason alone, to be substantively involved in prosecution and, so, their knowledge would “count.” So, even though only one lawyer is actually doing any work on the file, if another lawyer on the customer number “withheld” information, that could be an omission.
I don’t know how you can possibly get, absent unusual facts, intent to deceive by the lawyer who didn’t know his information mattered, but I also think it elevates form over substance to say that everyone listed on the same CN is involved.
But, he suggested that firms rethink the structure of their customer number practice….
Here’s my Monday morning rant… Unless you’ve been under a rock (or yoga mat — see below), you know that the Supreme Court held that in a dec action for non-infringement by a licensee, the patentee still bears the burden of proof. You may not have noticed a case a while back called Frolow v. Wilson Sporting Goods, from the Federal Circuit, and available here and summarized previously by Dennis on the main page here. Boiled down, under quite divided and unclear rationales, a divided three-judge panel held that marking by a licensee, or paying a royalty on products, is “circumstantial evidence” of infringement. In the particular case, as to some rackets, although the licensee had marked them, there was no evidence they actually met every limitation of any asserted claim. Nonetheless, the court held there was some evidence of infringement — marking and royalties — and so a question for the jury. It viewed marking as an admission, just as if a corporate representative admitted infringement in deposition… Ignoring the fact that, imho, that’s quite wrong analytically and as a practical matter (long story, but licensing and royalties don’t generally work like the court thinks they do, or at least not in my experience), a licensee who sues for non-infringement of a product that it has either (a) marked or (b) paid a royalty on will have to try the case, even though the patentee has the burden of proof, and even if the licensee shows that those products do not literally come within any claim. Odd. Also odd is, although it said it was not adopting marking estoppel, in practical effect, it did…
Earlier I wrote about Judge Grewal’s order concerning the disclosure of an unredacted expert report in the Apple v. Samsung suit. Yesterday, the judge held that Quinn should reimburse Apple for its expenses, and imposed some other remedies, but largely declined the sanctions sought by Apple. The order is here.
In my own view, the remedies might be right if all that had happened was a mistake, but, and as the judge wrote, what happened here was a mistake followed by what, in his view, was a failure to correct it.
There’s a great post by Oblon here discussing Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014). The PTAB did not hold that privity existed solely because of an indemnity obligation (and didn’t need to under the particular facts), but (a) it recognized that “in privity” must mean more than “real party in interest,” and (b) at least implies that an indemnity obligation might fit within the scope.
I’ve advised a lot of lawyers over the years who are pondering leaving one firm for another, or for a solo career. There are a lot of “do’s and don’ts” that are pretty common, and a nice summary, under Illinois law, is here.
Philadelphia’s bar association recently addressed whether the firm from which a lawyer had left could, or must, monitor the departed lawyer’s email or, instead, had to set it up so that emails automatically bounced. Opinion 2013-4 (Sept. 2013) is here. Boiled down, it says that the firm has to monitor but also has to watch out for email that it needs to forward to the lawyer, or otherwise take action on.
If you've been living under a rock, you've missed the discussion of this patent, Claiming priority way back to… 2010… it claims a way of recording yoga classes set up so you can see the instructor and the participants. I am not making that up. From the file history, it seems the point of novelty is the height of the camera.
Seriously?
Okay, so it's not really ethics, but it's interesting. The story is here but basically Scalia interrupted an apparently obviously nervous advocate who was reading from his notes, which made him stop until another Justice said "it's all right," and then everything went great. Folks are fighting over whether Scalia was decent, or not.
I've watched a few oral arguments there and everyone seemed nervous. Understandably!
Dennis has something on the main page, but this complaint by MPHJ Technologies v. FTC presents an interesting issue — if the holder of a presumptively valid patent enforces it, and (allegedly) complies with Rule 11 before doing so, can it violate any federal law?
Obviously the facts matter a lot, but if, as is alleged, they did all they reasonably could before sending infringement letters and their conclusion of infringement wasn't in bad faith, sanctions or liability would be in appropriate. The new edition of my book on ethical issues in patent litigation (which should be in print soon!) has chapters on both Rule 11 pre-suit investigations of infringement (and invalidity), as well as the protections afforded by the Constitution to sending C&D letters and the like. This complaint alleges, to me, facts that cannot be the basis of liability by the patentee.
But stay tuned…