Patently-O Bits & Bytes by Lawrence Higgins

Freedom of Speech and Facebook

  • Technology is forever changing, and with technological change there is also legal change. In a recent Virginia District Court case, the judge decided that liking a Facebook page is not protected speech. The judge stated that, "It is the court's conclusion that merely 'liking' a Facebook page is insufficient speech to merit constitutional protection. In cases where courts have found that constitutional speech protections extended to Facebook posts, actual statements existed in the record." I would like to think that if I like a page or a comment on Facebook or any other website with similar features that it is protected under law. Eugene Volokh of the University of California recently stated in a blog post that: A Facebook "like" is a means of conveying a message of support for the thing you're liking. That's the whole point of the "like" button; that's what people intend by clicking "like," and that's what viewers will perceive… I would treat "liking" as verbal expression — though it takes just one mouse-click, it publishes to the world text that says that you like something. But even if it's just treated as symbolic expression, it is still constitutionally protected, as cases such as Texas v. Johnson (1989) (the flag-burning case) show." [Link] Case

AOL Will "Supposedly Give Shareholders Proceeds From Patent Sale

  • Last month AOL sold an estimated 800 patents to Microsoft for around $1 billion. When making the sale, AOL stated that they would give significant amount of the sales proceeds to shareholders. Subsequently, AOL shares rose 35% in April and is currently trading around $26.50 per share. AOL's CEO recently stated that AOL will give 100% of the proceeds of the sale to shareholders, with details to be released. [Link] [Link]

Chisum Patent Academy

  • Earn Advanced Patent Law CLE in Spectacular Seattle This Summer: The Chisum Patent Academy is now accepting registrations for its 4th annual summer seminar in Seattle, July 30 – August 1, 2012. Their uniquely insightful, interactive seminars are limited to 10 participants. All sessions are taught by Donald Chisum and Janice Mueller. For further details on seminar coverage and registration information, see or e-mail

Patent Jobs:

  • Faegre Baker Daniels is seeking a patent associate with 2-6 years of experience to work at their Minneapolis office. [Link]
  • Luminex is searching for a patent associate with 3-6 years of experience and a graduate degree in molecular bio to work at their Austin, Texas location. [Link]
  • Faegre Baker Daniels is looking for a patent litigation associate with 1-2 years of experience to work at their Indianapolis office. [Link]
  • North Star IP is seeking patent associates with 3 to 4+ years of experience and a background in EE, CS, or CE to work at their Washington DC office. [Link]
  • Finnegan is searching for an attorney with a background in electrical technologies and 1 to 3 years of experience in patent prosecution or litigation to work at their Reston, VA office. [Link]
  • Tarolli, Sundheim, Covell & Tummino is looking for a patent attorney with at least 4 years of experience and a chemical or biochemical background to work at their Cleveland office. [Link]
  • Hickman Palermo Truong Becker Bingham Wong is seeking attorney with 2+ years of experience and a degree in CS, EE, CE, or physics to work at their San Jose office. [Link]
  • Dickstein Shapiro is searching for 2 IP associates with 2-5 years of experience in prosecution and litigation and a degree in EE to work at their DC office. [Link]
  • Tokyo Electron is looking for a patent agent/attorney with 5 years of experience and an advanced degree in EE to work at their Austin, Texas location. [Link]
  • Hiscock & Barclay is seeking patent attorneys and patent agents with 3-5 years of experience to work in their upstate NY office. [Link]
  • Hodgson Russ is searching for a patent attorney with at least 2 years of experience with a degree in EE to work at their Buffalo, NY office. [Link]
  • Myers Wolin is looking for a partner level attorney (patent or trademark) for their Morristown, NJ office. [Link]
  • Brooks Kushman is seeking a patent attorney with an EE or CS degree and 3-6 years of experience to work at their Southfield, Michigan office. [Link]
  • Michaud-Kinney Group is searching for an IP attorney with a chem or bio background and at least 3 year of experience to work at their Middletown, Connecticut office. [Link]
  • Sutherland is looking for an associate or patent agent with a degree in EE, CE, CS, or a related discipline to work at their Atlanta or Austin office. [Link]
  • Abel IP is seeking a patent associate with 4+ years of experience in the chemical and/or ceramic materials art areas to work at their Austin, Texas office. [Link]
  • Murphy, Bilak & Homiller is searching for a patent attorney or patent agent with 1-4 years of experience and a degree in EE to work at their Cary, NC office. [Link]
  • Sheppard Mullin Richter & Hampton is looking doe a mid-level associate with a CS or EE degree to work at their Palo Alto office. [Link]
  • The Ovidian Groupis is seeking Director, IP asset development, to work at their Berkeley, CA location; this person will have a JD degree and 2-5 years of patent pro experience. [Link]

Upcoming Events:

  • LES 2012 Spring Meeting – "Licensing to Solve the Innovation Gap" will be held May 15-17, Boston, MA. Speakers from GE Healthcare, Harvard, Hoffmann-LaRoche, Intel, Johnson & Johnson, Merck, MIT, Pfizer, Stanford and more will share their expertise on licensing to solve the innovation gap. (Patently-O readers save $100 by using promo code PO12 when registering) [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]
  • Fitch, Even, Tabin & Flannery, LLP will present a free one-hour CLE webinar, "Inequitable Conduct After Therasense: Materiality and the Intent to Deceive in Aventis Pharma S.A. v. Hospira, Inc.," on May 23, 2012 at 12 noon EST. On April 9, 2012, for the first time after the Therasense decision, the Federal Circuit affirmed a finding of inequitable conduct in Aventis, signifying that inequitable conduct based on failure to cite prior art to the U.S. Patent and Trademark Office is still a viable patent infringement defense. During this webinar, Fitch Even partner Alison Aubry Richards will discuss how to defend against an inequitable conduct defense; how to maximize the chances of a successful inequitable conduct defense; and how to avoid inequitable conduct as a prosecuting attorney, before and during litigation. [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. Randall 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]
  • On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
  • ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]
  • The Los Angeles Intellectual Property Law Association invites you to join us for the 2012 LAIPLA Spring Seminar at the beautiful Lodge at Torrey Pines in La Jolla, California, on June 8-10, 2012. The Spring Seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities at the cocktail receptions and dinners, and allows sufficient time for relaxation and enjoyable outdoor activities, including a golf tournament at the Torrey Pines Golf Course, home of the 2008 U.S. Open. Speakers and panelists include federal judges, practitioners (including in-house attorneys), and academics. [Link]
  • The C5's 11th Annual International Conference on Maximising Pharma Patent Lifecycles conference will be held June 20-21 in London. Patent lifecycle management is becoming more crucial for pharmaceutical companies with the cost of research and drugs continually rising and companies constantly trying to obtain the maximum financial benefit from existing patent terms. In addition to protecting existing IP rights and seeking methods to extend current patent lifecycles, pharmaceutical companies are faced with the challenge of inventing new drugs and diversifying portfolios to replace sales on older and generic drugs. [Link]
  • The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]

Contact with leads for future Bits and Bytes.

13 thoughts on “Patently-O Bits & Bytes by Lawrence Higgins

  1. 12

    Isn’t that the same for all candidates?

    I don’t think that addresses the 5 year cap that cystal was referencing.

  2. 11

    That Facebook “like” case is really interesting, but it seems unlikely that the Fourth Circuit would ever reach the free speech question if it ever hears an appeal in the case. The defendants successfully asserted both qualified and sovereign immunity defenses that case, and they provide a much simpler basis for affirmance on appeal than the trickier free speech issue.

  3. 10

    “…result … depend on the specific language in the contract ….”

    No, it’s pretty much governed by the 37 CFR 401…

  4. 9

    I’ve beat my head against a brick wall trying to explain the exact same thing to the NIH; wish I’d had this court case available back then. I even went so far to ask the NIH manager “If the Petri dish had been developed under an NIH grant 80 years ago, do all bacteriology-related developments using Petri dishes implicate the B-D act?”.

  5. 8

    Speaking as a hiring partner at one of the advertising firms, if you’re a good fit you apply anyway. Just be prepared to have a very good story for why it is going to be worth the firm’s investment to bring you in, equip you, get you up to speed on procedures and client technologies, etc., all while paying you at a level that’s going to make you happy and productive.

  6. 7

    Looking at these job want ads, what do patent lawyers do when they no longer fall within that golden “3 – 5 years of experience” range?

  7. 6

    Malcolm, perhaps. But isn’t the whole point of Bayh-Dole to allow the government contractors to retain title to inventions and technology, while protecting the government’s right to use. How is the government’s right to use impacted at all if the U’s later patents claim later-conceived inventions? I think Ward had a problem with the defendant’s theory as well.

  8. 5

    “Plaintiffs argue that, at most, they built upon knowledge from the reach [sic] grants when developing the patented nanophase diamond films, but that this is not enough to make the patented nanophase diamond films subject inventions of the gamma ray laser project funded by the Navy. The Court agrees. “[U]sing knowledge gained from governmental research to create a related advance does not transform that subsequent advance into a subject invention.”

    Seems to me the result in any particular case would greatly depend on the specific language in the contract that accompanied the research grant at issue.

  9. 4

    Collins v. WESTERN DIGITAL TECHNOLOGIES, INC., Eastern District of Texas, 2011 (Ward, J.),
    link to
    Aff’d, link to (Fed. Cir. 2012)(Rule 36)

      1) An assignment that was ineffective because it is not assign the right to sue for past, present and future damages can be perfected by a quitclaim deed.

      2) Research funded by University of Texas and non-government entities was not subject Bayh-Dole even though the subject matter of the research borrowed from an earlier invention that was subject to Bayh-Dole Act.

      a. “Plaintiffs argue that, at most, they built upon knowledge from the reach [sic] grants when developing the patented nanophase diamond films, but that this is not enough to make the patented nanophase diamond films subject inventions of the gamma ray laser project funded by the Navy. The Court agrees. “[U]sing knowledge gained from governmental research to create a related advance does not transform that subsequent advance into a subject invention.”
  10. 3

    I was not aware of the “insufficient speech” exception to the First Amendment.

  11. 2

    You really should include the Federal Circuit Judicial Conference, occurring this week.

  12. 1

    Are you searching to buy the Microsoft software so you are looking to get the discount so give the microsoft promo code to get the benefit about Microsoft software as well as product get the code because we give you facility to get it online it is the Microsoft promo code to get advantage online.

Comments are closed.