Google on Friday August 24 filed its supplemental list of bloggers and all.  The article about it, with links to Google's submissions, is here.

Over in the main site, there's a post by Jason Rantanen about Whiteserve v. Computer Packages, here. He points out that Judge Mayer, sua sponte, would have held some claims invalid for lack of patentable subject matter.  

There's an argument that this is not a validity defense, which I find interesting.  Briefly, we're dealing with a statute, not common law, and so the statute matters. Under the statute, there are specifically enumerated defenses.  See Aristrocrat Tech. v. Int'l. Game Tech, 543 F.3d 567, 661-63 (Fed. Cir. 2008).  If a statutory requirement is not identified as an invalidity defense, then it's not.  Id.

Section 282 lists a number of things as defenses, but lack of patentable subject matter under Section 101 is not expressly listed.  You would have to argue that it's implicit, I guess, in "non-infringement" under 282(1).  But that seems to be a very loose reading of the statute (I wrote a book on statutory interpretation and won't bore you with a lot of the mumbo jumbo).

Wait, you say, it's long been recognized as a defense.  Maybe, but a lot of statutes are read wrongly for a long time.  E.g., Central Bank of Denver v. First Interstate Bank of Denver, 511 U.S. 164, 177, 191 (1994) (overruling 60 years of judicial decisions authorizing a statutory cause of action on the ground that Congress in fact had not authorized it).

What's the ethics angle in this?  Heck, I don't know, except that under our system, the statute matters.  Someone explain to me how we can get to an invalidity defense under the statutory language, based on 101…?

There's a split in the law (even in the USPTO) on whether a lawyer who calendars or sends maintenance fee reminders creates an on-going attorney-client relationship with the recipient/patent owner.  This is highly significant since, for example, a lawyer who represents a client cannot be adverse to it, at all, and "adversity" has a very unwieldy definition in all areas, but especially patent practice.  (In addition, in some states an on-going attorney-client relationship tolls the running of the statute of limitations.)

So, what do you think of this language, for an engagement letter, say, to help avoid misunderstanding?

"If a patent is granted to you as a result of our prosecution, you must periodically pay maintenance fees or the patent will lapse, perhaps rendering it worthless.  Generally, fees will be due 3½, 7½, and 11½ years after the date of issuance.  We will send to your last known address maintenance fee reminders as a service, even though our attorney-client relationship has concluded, but only if you request us in writing to do so when we forward any patent to you.  If you do not ask us in writing to do so, we strongly suggest that you either hire a commercial service to do this for you, or place reminders of maintenance fees in more than one calendaring system.  Failure to docket maintenance fees can result in the loss of patent rights."

Judge Alsup held Google’s disclosures were insufficient, and clarified in a way that he suggested might result in further disclosures by Oracle. He explained: “the order was designed to bring to light authors whose statements about the issues in the case might have been influenced by the receipt of money.” He also wrote: “listing all commenters known by Google to have received payments as consultants, contractors, vendors, or employees. As for organizations receiving money, they need not be listed unless one of its employees was a commenter.”

My impression from going through all these orders is that the Judge has seen some smoke, and believes there is fire. Whether that fire is something the judiciary should be concerned with is itself an interesting question.  Again, I analogize it to sponsored science, where disclosure by a scientist that he has been paid by X corporation to conduct a study on Y compound, which is made by X corporation, is something that should be disclosed. Arguably, the case is stronger in instances of “soft” information like legal analysis, since, in theory, a scientific article should disclose enough that it could be judged on its own.

The order is here.

 There is an article here.

The parties made their disclosures. An article about it is here.  Google's list is here and Oracle's is here.

An interesting broader issue arsises from the allegation by Oracle (if true) about Google having a "network" of advisors, and what that might mean for broader issues, beyond this case. Oracle allege a vast network of folks paid to advance Google's IP agenda (pretty much in those words).  In one of my worlds, academic research and writing, no one discloses ties like that.  What if, for example, Google saw my masterful piece on why TheraSense might not be retroactive, and paid me $100,000 to publish it far and wide and further it, since it needed that defense to succeed in a case?  What if I'm just on a retainer to Google, but I'm blogging here on some on-going Google litigation, or a pending appeal?  Shouldn't I disclose that?

Anyhow, if Google wants to pay me a lot of money to write articles, they can, I'd just disclose it.  Hint, hint.

Near entry of judgment, Judge Alsup orderd Oracle and Google in a major IP tussle to reveal ties to bloggers, journalists, and academics — including apparently at least one person who blogged for a long while without revealing that he was a paid consultant to one of the parties. The order is here:  "each side and its counsel shall file a statement herein clear identifying all authors, journalists, commentators or bloggers who have reported or commented on any issues in this case and who have received money (other than normal subscription fees) from the party or its counsel during the pendency of this action"

The judge ordered both parties to reveal any relationship with not just bloggers, but journalists and academics with whom either had a financial relationship. A longer article is here.

I co-wrote an "appellate lawyer's creed" in Texas back in the day, and I've also served on committees that write disciplinary rules, and the former always seemed duplicative and mushy, but they said that they were just rough guides, so, I thought, who cares.

A new article wants them to be clearer:

It is a well-settled and often-recited fact that lawyers are “officers of the court.” That title, however, is notoriously hortatory and devoid of meaning. Nevertheless, the Eleventh Circuit recently took the somewhat unprecedented step of utilizing the officer-of-the-court label to, in effect, sanction an attorney for the purportedly uncivil act of failing to provide defendant attorneys with pre-suit notice. While the author applauds the court’s desire to place greater emphasis on lawyer-to-lawyer collegiality as a component of officer-of-the-court status, the uncertainty the decision creates in terms of a lawyer’s role will potentially force litigators to compromise important client-centered duties. This Article argues that it would be preferable for courts to define sanctionable officer-of-the-court duties by reference to well-defined, existing procedural and ethical norms, thereby enhancing predictability and imbuing the label with much-needed substance.

The full article is here.

A short article covering this topic by Foley & Lardner entitled "USPTO reverses course to permit anonymous ex parte reexamination requests" is here.  Boiled down, the PTO decided that identification of the real party in interest requesting reexam was not required because the practitioner requesting reexam is required to include a "certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request."

However, the article notes;

In eliminating the requirement to identify the real party in interest, the USPTO has left open the possibility that a requester’s estoppel certification might be called into question during the ex parte reexamination proceeding:

If the Office becomes aware of facts that call the certification into question, the Office will determine, on a case-by-case basis, whether the request for ex parte reexamination is prohibited by statute.

Thus, patent owners may have a new way to terminate an ex parte reexamination against their patents if they learn the identity of the real party in interest — or of its privies – and are able to bring that information to the USPTO’s attention.

I can see this set up creating some potential for mischief, and understand why the Office first wanted identification.  Thoughts?

This follows up on a post below about former client conflicts, about the catch-all rules.

The OED, of course, regulates patent agents and patent lawyers.  A practitioner who violates a provision of the PTO Code can be disciplined by the OED.  Discipline can include disbarment, suspension, a public reprimand, or a private reprimand.  So, if a practitioner steals money from a client for whom he is prosecuting a case, there's no doubt the OED would have jurisdiction to discipline the practitioner.

Over the years, I've had practitioners contact me because the OED was coming after them for things the practitioner did in, for example, patent litigation involving a patent that the practitioner had nothing to do with prosecuting.  Say, for example, the lawyer overcharged the patentee for representing it in an infringement suit.

There are lots of rules in the PTO that could "reach" this conduct and so permit the OED to discipline the practitioner for conduct having nothing to do with practice before the Office.  For example, 37 C.F.R. § 10.23(b)(5) prohibits conduct that is “prejudicial to the administration of justice.”  (In the forthcoming edition of our book, I go into what the PTO says that phrase means, but let's put that to the side.)  Thus, on its face section 10.23(b)(5) would reach this conduct: overcharge a plaintiff in a patent suit, and lose your ability to prosecute patents.

 In my view, the OED does lack jurisdiction, but the OED believes otherwise, and some have agreed with it in articles.

Let's start with the text of this rule:  on its face, it reaches the conduct I've described (assuming that overcharging is, in fact, "prejudicial to the administration of justice."  Nothing in the rule itself says that it has to be prejudicial to the administration of justice at the PTO.  And, some say the rule means what it says.  An important commentator, Cameron K. Weiffenbach,  wrote: 

(Emph. added.)

Again, I know the OED believes that this rule reaches very far.  From what I have seen, the OED believes it can come after you for conduct done anywhere if it is "prejudicial to the administration of justice."  And, I have to tell you, there are several other provisions of the PTO Code that aren't limited, expressly, to practice beforre the Office.

Why do I think that it doesn't have jurisdiction unless it's a matter before the Office?  Well, because the PTO said so, repeatedly, and to avoid an interpretation of this very rule that would let it have that power.

Here's what happened.

When the PTO was adopting the PTO Code back before 1985, many people complained that, as then proposed, the PTO Code applied to anything the practitioner was doing — in prosecution, or not.  The PTO repeatedly responded to those comments before adopting the final rules by doing three things: (1) it adopted 37 CFR 10.1 to say that the PTO was intending solely to regulate practice before the Office; (2) the PTO amended many rules in light of comments to include a provision in 37 CFR 10.1 that says "with respect to practice before the Office," and (3) with respect to other rules, in comments the PTO repeatedly said, basically, "we don't have to include a phrase saying this specific rule only applies to conduct before the Office because 10.1 says no rule reaches that far."  

With respect to this specific rule —  "prejudicial to the administration of justice" provision — in fact, the PTO said that that rule was limited to practice before the Office, and pointed to Section 10.1 as a basis for not having to say so explicitly.

So, where we are in my view is:  these catch-all rules can't catch anything that does not constitute "practice before the Office."  The PTO said they didn't, so they can't.

But, like I said, I've had folks make that argument to the OED, and I know it disagrees.  Seems to me there's a problem with that, but you need to be aware of it.

In closing, and to be clear, there are rules in the procedural rules at the OED that allow for "reciprocal discipline."  So, if a state bar (or, I suppose, a federal court) were to discipline a lawyer for overcharging a patent infringement client, or for failing to pay that parking ticket, the OED could also impose discipline.  But, without getting boring on you (ha, you say, you did that at the headline!), there are a lot of procedural protections in that circumstance that aren't present even where, say, a judge were to issue an order sanctioning a practitioner for something done in litigation.

Finally, I'll note that there are some choice of law issues beneath all of this that lead me to believe that he OED would never be applying these rules to conduct that occured in a parking ticket matter, or a patent infringement suit, but those are for another day.

No, that's not what I think, but some of my fellow law professors do feel that way, a fact I learned from a wonderful book by Brian Z. Tamanaha called "Failing Law Schools," that I'm about half way through.

I'll post more about the salary issue later, but on this lazy day (I'm at the beach with my wife, on a well-deserved but brief vacation after serving as an expert witness in the Monsanto v. DuPont case just tried in St. Louis (I was an expert retained by DuPont)), I wanted to just ask a question that underlies some strong opinions I have on that I'll leave aside for now, but the question is this:

Do law professors' writings ever help you in your practice?  How often if ever to they really give you help, or give you information that you cite in a brief? (I'd like to focus on law reviews, etc., but blogs matter too, but if you mean a blog rather than an article, please say so.  I'm curious.

Thoughts?

The federal register notice is here.

The "new" provisions of Federal Rule of Evidence 502 provide that, if a privileged document is inadvertently produced, there is no waiver of privilege if (1) the disclosure had been inadvertent; (2) the party had taken reasonable steps to prevent disclsoure; and (3) the partypromptly took steps to rectify the error.

Suppose you inadvertently produce a privilege document in an ITC investigation.  Does the rule apply?  On its face, it applies to inadvertent production "in a federal proceeding…."  Sounds like it applies, right?

Not so fast.

In In the Matter of Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same (USITC Inv. No. 337-TA-803 Order No. 63 May 14, 2012), 2012 WL 3058613, the ALJ was faced with the demand by a non-party for return of a privileged document it had produced in response to a subpoena in that proceeding.  The non-party argued that the Fed. R. Evid. 502 bound the ITC, but the ALJ rejected that position, but also held that even if the rule applied, waiver of privilege had occurred.

His rationale to me is less than clear.  He cited three cases to support his position, none of which interpreted the phrase "in a federal proceeding" from this rule, but instead analyzed other rules of evidence or, in one case, subpart 502(d), which by its terms only permits a "federal court" to make orders concerning litigation pending before it.

So, I'm left with giving you this warning:  a proceeding before the ITC is not a "federal proceeding" under Fed. R. Evid. 502(b).  

On a related note, and I do tend to agree with his observation, the ALJ stated that he found provisions that allowed for clawback of privilege documents to reduce the incentive for extremely careful privilege review.  The problem, of course, with that belief is that the drafters of Rule 502 have indicated that the balance should be in favor of less review and easier clawback.  (And, I realize that there might be interesting seperation of power issues if Fed. R. Evid. 502(b) is read to apply to the ITC, but my point is that on its face, it does.)

Apparently, Samsung has an auto-delete feature that deletes employee e-mail on its proprietary system after a set time. While Samsung apparently took some steps to warn employees to preserve relevant emails after suit had been filed, it left on the auto-delete feeature.  The judge has entered an adverse inference order in the suit.  The order is here.  It's too fact-based to summarize effectively, but Apple in part used the fact that there were many more relevant emails on the non-proprietary system than on the proprietary one to establish the fact of some likely harm.

I like Jack Daniels, though frankly I'm an IPA guy.  Jack Daniels sent a cease and desist letter that is going around, not because it's nasty, but because it's nice.  An article about the letter and its impact is here.

On a broader level, I also teach civ pro (plus ethics and patent law), and I enjoyed seeing this because usually the stuff that gets the publicity are the nasty letters, the orders from judges who have to order lawyers to play rock/paper/scissors to determine where a depo will be, and the like.

Being a lawyer is hard, and kudos to those who are still doing it with some class.

But, sorry Jack, I still prefer my IPA.

I deal alot with malpractice claims, conflicts of interest, and so on.  I'm not part of the firm, and so privilege attaches to communications between me and the firms who contact me.

What about intra-firm communications?  

A recente Georgia appellate court surveyed existing law and rejecting the dominant approaches to that issue.  The case is Hunter, Maclean, Exley & Dunn v. St. Simon's Island Waterfront LLC, and  is available here.

Boiled down, the firm was concerned it had committed malpractice, thought the client had accused it of that, but could not withdraw because there were multiple on-going representations.  The firm consulted with its own lawyers, as well as outside counsel, on the issues. When this case, the malpractice suit, was filed, the firm asserted privilege as to the communications.

The court rejected the notion that a firm cannot assert a privilege against its own client because all conflicts are imputed, and also rejected the notion that it can assert the privilege unless the fiduciary exception applies.  Instead, in broad terms it adopted the approach of Professor Elizabeth Chambliss from The Scope of In-Firm Privilege, 80 NOTRE DAME L. REV. 1721, 1745 (2005).  In part the court explained:

Nevertheless, when firm counsel “individually has no conflict of interest under Rule 1.7 or Rule 1.9, and the in-firm communication meets the ordinary requirements for privilege,” we conclude that “courts should not automatically impute a conflict under Rule 1.10.”43 Instead, imputation should depend on “the structure of the in- house position.”44 Thus, when “firm counsel holds a full-time position and does not represent outside clients, courts should not impute a conflict under Rule 1.10." In this regard, compensation is perhaps the clearest way to demarcate firm counsel’s role, particularly through the use of billing procedures “to establish the firm as the client and to distinguish the lawyer who acts as firm counsel from other lawyers in the firm.” The role can be further demarcated by ensuring that its function is known and understood throughout the firm, that its compensation is not significantly determined by firm profit, and other similar measures.