March 29, 2008 by thomason.

Lance Corporal David Newcomb, USMC, 22, of Bardstown, KY.

 A soldier gives, and gives, and gives.

A war takes, and takes, and takes.

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March 27, 2008 by thomason.

Sure, some will get $300 to stimulate our economy, but ‘wait there’s more.’

The Order of the week, thusfar, comes from 3Com v. Realtek, 03-2177 (N.D. Cal.), in the form of a mandate to “furnish daily refreshments for the members of the jury in the above-entitled matter at the expense of the United States effective March 24, 2008 through the completion of the trial.” OK, who ordered a salad with extra dressing on the side? Do high paid jury selection consultants profile what jurors ‘refresh’ on, at least when its ordered at the “expense of” the U.S.?

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March 21, 2008 by thomason.

My Google search for ambiguous and “federal circuit” yielded over 81K linked pages (probably including “ambiguous books, click [Amazon] Here,” and “Hotels in Ambiguous, click here”).   Years of ‘going Markman’ on the language has resulted in having one full shelf of dictionaries.  So, instead of coloring Easter eggs, there seemed to be some utility in counting how many “accepted” definitions there are of the word, ambiguous.  First, I counted, and at the end of that, noticed that the last listed definition was “has more than one accepted meaning.”  The multitudinous list, then, of “ambiguous” definitions was, to paraphrase: ‘a spade calling a spade a spade’; ‘a rose by the name of rose’; ‘I know what you are but so am I’.

During this Holy season, one wonders how many religions now exist or have existed.  Then, just think how many more there would be if patent attorneys had translated the scriptures.

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March 19, 2008 by thomason.

One past ‘practice in the vicinage’ of the SDNY was for a Judge to announce a rule in open court. Only those attorneys who happened to be there that day heard this new, unwritten rule. It worked for those firms that were in court everyday, but for those there occasionally, it could work a hardship. Who knew that this Judge required you to call his chambers 24 hours before appearing, or your client would be defaulted.

Today, in LSI Indus., Inc. v. Imagepoint, Inc., the CAFC put forth some practice rules for patent cases, but did so in a nonprecedential opinion. Why? The panel chastises litigation counsel for making “little effort to simply” the patent issues for the judge, and instead bulk-filing a “firestorm of issues and arguments” plus a “voluminous” reexam file wrapper. Then, as mentors to their members, the CAFC instructs that it “warrants our reemphasizing that an attorney has a duty …to aid in the fair and efficient adminstration of justice,” and then, cited its earlier ruling that attorneys “are expected to assist the court …particularly in difficult cases involving complex issues of law and technology.” That’s what we, the flock admitted to practice as trial counsel, were told to do.

Next, the panel opinion was politely uncomplimentary of the work of District Judge Wm. Bertelsman (W.D. Ky.). In the main, the panel reversed some of his claim term interpretations. That follows their review, a year ago, of his “erroneous approach in construing the claims,” in Byrne v. Black & Decker Corp. (CAFC 5/21/2007) which affirmed his conclusion, in another non-precedential ruling. The LSI panel notes his expressed “lack of familiarity with patent law.” It goes on to state its dislike for a district judge having “adopted [one party’s] proposed findings of fact and conclusions of law verbatim.” [Yeah, like that never happens.] The panel observes, nonprecedentially, that although “this practice is not prohibited, it is frowned upon.” That wholesale adoption can give “the impression that there was insufficient independent evaluation” of all the arguments of record. The best precedent cited in support of the panelists’ ‘frown’ and “impression” was a 9th Circuit case about TBS withholding royalties payable under Director Wm. Wyler’s 1958 contract to direct “Ben-Hur.” That’s IP, right?

So, if you weren’t in court today, you may’ve missed this practice pointer, but don’t worry, it’s nonprecedential and can’t be cited in another CAFC case.

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March 18, 2008 by thomason.

Two points of interest about patent suit experts come out of the pretrial ruling in Seitz v. Envirotech Sys., 4:02CV4782 (S.D. Tex. 3/6/2008). The named plaintiff, apparently, had years of experience running his tankless water-heater company, and also, “twenty years of experience in corporate finance and mortgage banking.” On that basis, plaintiff-patentee Seitz sought to act as an expert, and he issued a damages report that quantified lost market share, lost profits and reasonable royalty rates. The district judge disallowed Seitz testifying as an expert on those topics, but did allow him to “provide a lay opinion on lost profits and reasonable royalty rates.” His “financial underwriting work did not involve calculating lost profits from patent infringement.” Yeah, but, courts routinely allow CPA’s and economists to do that for the first time in patent cases. The interesting commentary comes when the judge compares and contrasts the evidence rules on lay and expert opinion. He quotes from Judge Whyte’s recent ruling in Hynix v. Rambus, that the two rules try to provide an “unflinching” separation between what comes in as expert and lay opinion, but then notes that the “advisory committee note …blinks.” Judge Rosenthal blinks and, while refusing to let Seitz speak as an expert, allows his “opinion on damages, based on his personal knowledge of the company’s sales and the [entire] market” to come in. That recalls the old saw, ‘Judge I don’t know what rule this evidence comes in under, but it’s OK as long as it comes in.’

The second point of interest is whether to strike the defendant’s expert, whose report was written, to some extent, by defense counsel. “Envirotech produced fifteen” drafts of the report, but not the “original” draft version. The expert testified in a deposition that he rendered his opinion to counsel “in face-to-face meetings” and by telephone “before any initial written drafts were created.” He “stated that the expert reports reflected the opinions he had previously expressed to counsel,” and that “the initial draft reports …[were] prepared by Envirotech’s counsel.” The judge denied the motion to strike, because the movant had “not met its burden of showing that Dr. Butler had so little involvement in preparing the reports of his opinions as to warrant striking” them.

Perhaps both the plaintiff and the defense lawyers could provide lay opinion testimony.

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March 17, 2008 by thomason.

When preparing to argue a case to the CAFC, you may get there early and wander about, and even read from the bulletin board what recent rulings have issued. The nonprecedential ones, with a one-liner per curiam order, create curiousity - what was no meager among the issues presented. Twice, the CAFC has deemed nonprecedential its affirmances in Neutrino Devel. Corp. v. Sonosite, Inc., (CAFC 12/8/2006 and 3/14/2008).

The first appeal was an invalidity ruling, based on impermissible “new matter,” which followed a Markman ruling and a finding of literal infringement. The `021 patent claimed apparatus for “Penile Hemodynamic Stimulation” (see, scary FIGS.). The “new matter” added was that the apparatus is “hand-held” (hopefully by one highly skilled in the art). Plaintiff said “no matter,” and defendant said “new matter,” and the district judge called the whole thing off, and invalidated (thus, freeing the public to do hand-held hemodynamic stimulation without fear of infringement).

Why isn’t invalidation for “new matter” something worthy of CAFC explication, rather than an unworthy, nonprecedential one-pager? Difficulty will afflict any district court judge with a “new matter” challenge who tries to apply the “inherency” standard, or that reflected in dicta in Turbocare Division v.GE, 264 F.3d 1111 (CAFC 2001) (”disclosure is not a model of clarity, neither is it so obscure”). The new matter bar was touched on blandly, as recently as in Baldwin Graphic Sys., Inc. v. Siebert, Inc. (CAFC 1/15/2008).

After the first nonprecedential affirmance, the parties on remand fought the “exceptional case” battle, with the district court rejecting the averments of inequitable conduct and of bad faith coercion to settle. That ruling goes up, and it too is affirmed in a CAFC nonprecedential order. The general rule on “exceptional” case assessments, as applied last fall in Digeo, Inc. v. Audible, Inc., might benefit from a CAFC opinion about the intersection between “new matter” invalidity and an “exceptional” case.

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March 11, 2008 by thomason.

Rule 16 scheduling orders “control” further proceedings in a case. Parties may stipulate to Rule 16 limits on discovery, thinking that the final pretrial order will become the governing document at trial. For example, counsel may agree to limits on depositions, which would be unpalatable during trial. Deposition strategy - what is asked then and what is saved to ask at trial - enables these Rule 16 stipulations. But without all the caveats made express, presuming the effect of the stipulated limits can bite you, as indicated in Judge Whyte’s ruling in the consolidated Rambus v. Hynix cases.The parties agreed in a Rule 16 order that deps taken in any “related” case could be used “as if taken” in the California case. That served to avoid duplicative depositions, and to enforce the time limits for deposing a single witness. The defendant manufacturers believed that their Rule 16 agreement would not carry forward and become a right to read at trial every dep taken in a “related” case. The deps were not noticed as de bene esse examinations for use at trial, but only as  discovery deps. In that situation, a party may prefer at a dep not to ask a non-party witness about a particular matter, preferring instead to wait and see if the witness shows up on the trial witness list.Bad presumption by the manufacturers, according to Judge Whyte’s March 10th ruling. In essence, he decides that the manufacturers needed to be more diligent in asserting their objection to use of the deps at trial, when they agreed that the “related” cases deps could be used “as if taken” in the case before Judge Whyte. Wasn’t there a story about two ships with the same name, and the mutual mistake about that? The takeaway is that the Rule 16 stipulation needs to state that once discovery is over, that all objections as to admissibility and use of discovery at trial are preserved, and that the final pretrial order will supplant the case management order.

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March 10, 2008 by thomason.

A local TV news anchor, whose on-air name is Catherine Bosley, was a wet T-shirt contest participant in Florida in 2003. She claimed back the photos of her, resigned from her TV job, then registered the photos for copyrights in 2004.  In a prior case, an injunction against use of the photos was stayed on appeal, as a prior restraint Bosley v. WildWetT.com, 2004 WL 2169179, 70 USPQ2d 1537 (6th Cir., No. 04-3428, 2004), noting that the speech at issue lacked a creative component. Now, Hustler has published some photos of her, and she has sued. Balsley et al. v. LFP Inc. et al., No. 08-0491, (N.D. Ohio, Feb. 27, 2008).

Would these photos rise to the level of “originality” necessary to be registrable for copyrights?

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March 7, 2008 by thomason.

All the recent furor over the sanctions imposed on the client and counsel in the Qualcomm v. Broadcom (05CV1958 S.D. Cal.) took a real turn. The Magistrate ruled on the sanctions, and now, the Judge has vacated the sanctions as to the objectors. The issue was the “self-defense exception” to the privilege against disclosure of attorney-client communications. The objecting attorneys were given leave to defend the sanctions rulings, on remand to the Magistrate, using attorney-client communications “(electronic or other)”.One of the oddities in the intersection of the discovery sanctions rules of the courts and the rules of professional responsibility and of privileges is that an attorney cannot rat on his client. When attorneys make representations about discovery, then that attorney takes the heat for that representation. It is unprofessional, indeed prohibited by the rules of professional responsibility, to respond to a discovery sanction motion by claiming that your client was not candid or had misled you about what records or discoverable information it possessed. It is a unique feeling to stand before a Judge and get dressed down, knowing that all you did was repeat what your client told you in a privileged conversation. The client said ‘we have no documents’ about topic A, and the attorney repeated that in a discovery response or in opposition to a motion to compel. Then, the client’s privileged statement is proven to be false, and the attorney gets sanctioned along with the client.The next level of that hell is that the attorney cannot, or is very limited, in appealing the sanction against the attorney. It often is a non-final ruling, or is a collateral order not involving a party. If the attorney cannot put on the record the communications that were at the heart of the sanctioned conduct, then even if he could appeal, there would be nothing in the record to be reviewed.An attorney just cannot rat on the client, or blame the client for the discovery misconduct. This recent ruling in Qualcomm turns on the fact that, in the prior proceedings, there was no adversity of interest between Qualcomm and its attorneys. Then, in connection with the most recent round of sanctions motions, Qualcomm filed declarations that “were exonerative of Qualcomm and critical” of the attorneys. On that basis, the Judge sustained the objections and granted leave for the attorneys to defend themselves using privileged communications.

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March 5, 2008 by thomason.

Patent cases often are easy to spot on PACER, especially from the docket of the N.D. Cal.  The typical format for the style of the case is E-something vs. I-something, or Patent Holding Portfolio LLC vs. Fortune 500 name.  Familiarity with those style conventions almost made me miss a recently-filed patent case styled, American Mexican Insurance Service, LLC v. International Insurance Group, Inc., 08CV840-EMC.  My current-Bilski interest in post-State Street “methods” patents did cause me to question whether Mexican Insurance might reflect recent criticism of PTO granting patents on known business methods.The Complaint is not available on PACER, but the USPTO website yielded a patent assigned to Int’l Insurance, USP 7,240,017 for “dispensing insurance through a computer network.”  A visit to the American Mexican Insurance website indicated that they arrange coverage for Americans on adventurous travels in Mexico.  That put the matter in the sightlines of the `017 patent, which claims a method to provide “coverage in a country other than the country in which the customer resides.”  Sounds like a match.My adversion to business methods patents revolves around breadth, both in the claim as a whole and in the words used in the claim.  Consider, for yourself, whether the claimed method sounds novel.  It recites the steps of receiving “policy information” from a “plurality of insurance companies” such as “rates,” then contracting with an insurance “agent to sell” a policy as described in the policy information, receiving “customer data,” obtaining rate “calculations,” providing the customer with the “rates,” receiving a “selection from the customer” of a policy and the customer’s “instruction to purchase” and “customer financial” information, and “facilitating” the purchase and distributing a binder of coverage - using a computer network.  If the “other country” term is taken out, would the other steps suggest a novel method of offering, pricing and binding insurance coverage?Even Mexican Adventure insurance is not as novel as it may sound, but apparently it ‘rang the bell’ with the USPTO examiner.

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