All posts by thomason

About thomason

My favorite comment to clients is that "in a typical case," but then, "I've never had a typical case." After 25 years litigating complex commercial cases, e.g, patent, environmental, antitrust, all that I can say for sure is that "I'm still practicing." Despite volumes of precedent and statutory law, outcomes are no more predictable. Still, when I sit in the courtroom, hearing the witnesses, viewing the evidence, and appraising what's in the eye of the Judge or the jurors, I get a strong and clear feeling of what conclusion the case is heading toward. If your ship must travel a straight course, through still water, then any mate can handle that. If however, rough water or unexpected difficulties may be encountered, then you are better served with a captain who has completed many such voyages before.

Way to Punch Up Your Law Practice.

IP and acheter kamagra en france

patent attorneys tend to wonder how best to position their advertising.  The back, and fold-over on the phone books are taken up with ‘are you injured?’ as is most of afternoon TV.

Saturday night at the Hard Rock Hotel, few knew about the super flyweight bout, but it too was sporting some lawyer advertising.  On the front of the boxing trunks of pugilist Robles, who hails from Kansas City, was embroidered “Immigration Law” below the firm name.  Now there’s an option for some TV time that few considered.

Remember When You First Heard “Kick Out The Jams!”

Hey Forever 21 got sued, again, for copyright infringement – and it’s not over clothing design.
It is alleged in a L.A. Federal Court complaint that F21 made and sold clothing bearing a copyrighted photo of the [to some, legendary] rock band, the MC-5. Said photo, exhibit A to said complaint, was on the F21 garment “H81Rock-N-Roll Studded Top.” That’s rock and roll with a capitol N, and in caps MC-5 (Motor City 5).

Well-known rock icon photographer, Robert Matheu, intends to kick the jams out of that F21, H81 “Studded Top.” His photo, taken in the ‘summer of `69’ was not attached to the PACER copy, but it’s likely this photo on his website, Matheu’s suit filing nearly coincides with the passing of another legend of Detroit hard rock, Ron Asheton of the Stooges. The filing is 2:2010cv0214-CAS (C.D. Cal.).  Rock on Ron.

Procedural Process Errors, and Uninfringed Product by Process Claims = Certiorari?

At its conference today, the Supreme Court may decide, or decline, to consider the product-by-process issues in Astrellas Pharma v. Lupin Ltd., 09-335. The mystery of the chemistry was detailed by blawgers right after the CAFC issued its 8-4 decision on May 18, 2009. In the end, the CAFC ruled that that only the claimed product of a claimed process can be infringed.
The petitioner, after a 5-page table of cases, says it’s a case “without precedent,” then follows that with “the Federal Circuit violated the Court’s precedent.” Indeed, on pg. 16, petitioner points to an instance in the majority opinion that “ignores over 110 years of precedent.” One wonders if the rationale of 100 years ago to allow claiming a novel, but mysterious, product of known process steps is still viable in today’s laboratories.
Initially, petitioner argues error with the CAFC ruling en banc, sua sponte (my, those Latin classes at X have come in handy) to resolve an intra-circuit conflict about product by process claims. If the Supreme Court takes an issue, then it is more likely to review patent issues than Circuit operating procedures.
Petitioner’s further contentions regard fears that the CAFC crossed the bright-line rule that patent claims be interpreted the same for validity and infringement purposes. That point is key to disputes between the majority opinion or J. Rader and the dissent of J. Newman. And too, in a nutshell, it provokes the issue: what’s the issue, and how should product-by-process claims be treated? The legal inquiry may devolve upon claim interpretation (nonstatutory), or definiteness and full enablement (statutory), or 110 years of precedent (?), or more plainly, what ground sustains product-by-process claiming (nonstatutory).
The respondents point to the en banc issue arising within a “rarely invoked exception” for “rare” products that are not understood, but are known only as the product of a fully enabled process. That “exception” is nonstatutory, like many of the central issues. Respondents’ arguments also highlight whether the fundamental question is claim interpretation – should a claim be construed to cover unclaimed products of claimed process – or is it some broader inquiry into product-by-process claiming.
The proverbial ‘fly on the wall’ at today’s in camera conference (one more Latinism) will hear how constitutional rights have been stripped, property taken without due process, statutes violated, etc. When the Astrellas petition comes up, then that fly will wonder whether the CAFC’s treatment of nonstatutory product-by-process claims deserves further, Supreme review.

Except as Provided Elsewhere, or Trumped, I’ll Own all the IP.

An IP decision of the Delaware Chancery Court reminds of two risks – wholesale incorporation by reference between separate IP agreements, and judicial misreading of patent law. In Cepahlon v. Johns Hopkins, 2009 WL 4896227 (Del. Ch. 12/18/09), three forms of agreement dealt with the ultimate ownership of IP developed by a university researcher. Rather than reading these separately and, if possible, consistently, the Vice Chancellor ruled that the terms of one “trumps any contrary language” in the other. Also, instead of defining the agreed terms using the common and accepted meanings, the VC applied definitions unique to patent law.

The first lesson is to avoid having two provisions dealing with the same subject matter, because of the risk of inconsistency, or of inconsistent interpretations. A form of drafting simplicity, to be avoided in IP transactions, is simply referring to parts of separate agreements rather than making revisions so as to make it all consistent. What good can come in court from phrases like ‘except as otherwise provided in [other provisions or agreements],’ or that ‘the foregoing does [not] supersede provisions [else where] not inconsistent herewith.’ Those flaws were not found in this case, but the outcome on ownership was not what Cephalon expected.

Cephalon supported the research, and its agreement with JHU (A) required the JHU researcher to “disclose to Cephalon any discovery or invention, whether or not patentable, that is conceived or reduced to practice,” and (B) it granted to Cephalon “all rights in and title to …all Inventions that result from the …use of” its proprietary compounds, and to “all ..intellectual property rights related thereto.”

The first misstroke of the pen was having the duty to disclose provision end with a shorthand, collective term “Invention.” On that basis, the court took that “Invention” definition and applied it where it appeared in the grant provision. The effect was that Cephalon did not own “any discovery.” Rather its ownership was limited to any “Invention” that was “conceived or reduced to practice,” and limited to conception and reduction to practice as defined in patent caselaw. An alternative construction would recognize that “any discovery” is much broader than “invention”, and broadened still by the term “whether or not patentable.” A “discovery” implies no usage confined to any legal regime.  Discovery is just that, and is distinct from an “invention,” which flows from legally-cognizable “conception” and “reduction to practice.”  Indeed, the opinion suggest that the researcher made discoveries about what compounds met certain criteria, but that only after all the agreements had expired did the claimed invention reach the stage of being an invention.

The next pointer is not to introduce shorthand definitions, mid-sentence. It always is difficult to define known IP, and even harder to set metes and bounds on IP yet to be developed. “The possibilities of such circumstances cannot possibly be enumerated. If the inventor had merely a conception or was working towards development of that conception, it can be said there is not yet any ‘invention’.” UMC Electronics Co. v. U.S., 816 F.2d 647, 656-7 (Fed. Cir. 1987). Such definitional terms must be well-crafted, not shorthanded, and threshold definitions deserve to be set out early in the agreement, in or near the primary grant clause.

The crucial misstroke was a later-made amendment incorporating by reference the IP “policies” of Johns Hopkins, along with what the court called the “primacy” provision. Ostensibly, the amendment clarified that, although Cephalon was compensating the researcher, his primary duties were as a researcher in Hopkins’ employ. The incorporated “policies” gave Hopkins “the right to obtain [IP] developed as the result” of its supporting the research. The court ruled this was an outright grant of ownership to Hopkins, rather than an executory “right to obtain.” That conclusion hinged too on boilerplate that the “Hopkins’ policies” and the researcher’s “obligations to the University shall govern and be afforded primacy in the event a conflict arises with” the agreement granting all ownership to Cephalon.

It had to be unpleasant when that incorporation by reference provision was given primacy, so as to ‘trump’ an express grant of ownership; particularly, when fn. 94 points out that Cephalon never “received a copy of [the] JHU IP policy.” To that pain point, the court added the irritant that “Cephalon cannot rely on ignorance.”

If nothing else, patent attys will follow the semantics.

All the upsurging interest in computer-operated method claims being Bilski-ed out of existence raised curiosity about whether ‘lip service’ was being paid to the machine-or-tranformation standard.

A search in the published, pending patent applications database yielded 1867 apps, published in 2009, describing a computer and using the claim term “transform.” That total would be reduced by eliminating claims to Fourier operations.

Among the many claimed transformation were the following:

“to transform said plurality of sensitive data values into a plurality of desensitized data”

“transforming through the computer readable storage medium a first operator variable of a first operator”

“to transform the encoded information to a readable format in that the user authenticates himself using a personal code”

Hard to know whether the “transform” limitation is there to particularly point out an essential feature, or was inserted so as to come out on the side of ‘claiming it the way they said to.’  Equally unknown about these apps is whether the intangible data, which is claimed to be part of the transformation, might be “representative of physical objects or substances.” In re Bilski. Let’s leave that inquiry – whether the data refers to a physical article – for some examiner to consider.

Odd Inventions of Ought-Nine

The Telegraph of London devoted many-megapixels to show some odd inventions from this year.

Take a look at these.  The “Husband Hunting Bra”, the “robo-toilet” with the “AutoClose” feature, the “PediSedate,” which gently sedates youngsters, the “JetLev-Flyer” that flies you over your pool, or the “Isophone” that lets you speak with other in the pool, and the “Amphicoach” that drives on land or across water.

Vive la Different Way of Co-creating.

The French court decided a design case by a petit-mains, which are seamtresses who present design samples to major fashion houses, hoping to secure a contract to purchase.  Basically, the court issued a split decision, granting both sides damages that nearly offset, and ruling for each side on some claims.  The case highlights how in IP, the ‘old ways’ used in design industries – working without contracts or copyrights – hit up against the modern, rights-based rules of IP ownership.

Press reports leave it unclear whether the court rendered a verdict, with some oral explanation, or also issued a written opinion on the claims and their disposition.  The backstory is that Carmen Colle, grew a firm of seamtresses in France, and her products were adopted in the several major fashion lines.  A crocheted sample was presented to Chanel, but her offer was not accepted.  Later, Colle saw a finished garment, incorporating her sample design, being sold in a Chanel store in Asia.  She called it to Chanel’s attention, but no resolution was reached.  She sued for counterfeiting her design, and for breach of contract. Chanel cut off business to Colle, and countersued for commercial disparagement (based either on the suit allegations, or more likely, public comments by Colle about the alleged taking of her original design).  The historic practice of not copyrighting the designs (allowed under French law), and not having an agreement setting out ownership rights or limits on use without attribution, left Madam Colle without much of a remedy in court.

Consistent with modern IP practice – “get it in writing” is the norm.  Sure, software writers, screenplay editors, collaborators, etc., still put their creative contributions in the hands of others to use, or refuse, and often without an expectation of specific remuneration.  Old way -> bad; written IP agreements – > often best.

The further points of interest are how Chanel’s pre-trial defenses fit or misfit with the verdict.  Colle’s counterfeit charge was tossed out, but the reasons are not clear.  In pre-trial comments, Chanel’s stated defenses were either that the design was the result of specific instructions it gave to Colle, and/or that Chanel had used a design that was ‘at the very least a product of collaboration’ by the parties.  The first of those often arises with software or screenplays – write me a routine that performs these functions, or a story which has these plot elements.  Both wind back to the question of who owns, or has any rights to the end product, where only one person wrote the work, but the other suggested the content.  The second of those defenses, joint ownership or collaboration, is more an acknowledgment of the uncertain nature of the relationship.  If both own, that is, own an undivided joint interest in the work, then one cannot appropriate from the other entirely, but neither must account to the other for gains made from a joint work.

Madam Colle believed that the exchange of designs, as a step to reaching an agreement, was understood as a matter of “honour and justice and noblesse.”  Her lawsuit, however, provoked Chanel to point out the lack of a copyright and of a written understanding about ownership and exploitation of the disclosed designs.  Again, the ‘old way’ is passing away, supplanted with the ‘rely on rights and writings’ approach now necessary to those in the creative industries.

If Patent Troll Sends the Letter, Then a Case-or-Controversy “Implicitly” is Asserted.

 The CAFC reversed the dismissal of a DJ action, noting that it was a close case for jurisdiction, but the scales tipped due to the notice letter coming from a “non-competitor patent holding company.”  (N/K/A, “no-co-pho-co” which I find has an alliterative syncopation more appealling than ‘patent troll’).                                    So, it is not what was said, but who said it.  Plaintiff Acceleron’s letter “did not contain language threatening to sue for infringement or demand a license.”  It expressly was intended to provide “both parties with appropriate protections to create a productive atmosphere” to discuss the noted patent.  Where’s the case?      Judge Robinson in Delaware ruled that litigation was “too speculative a prospect” to exercise DJ jurisdiction.  The CAFC, in an opinion by C.J. Michel, disagreed and reversed.  It decided it was “not unreasonable for HP to interpret Acceleron’s letters as implicitly asserting” its patent rights. (‘I can tell what you’re thinking, even if you’re not saying it’).  In the conclusion of the ruling, the panel notes that its decision “undoubtedly marks a shift from past declaratory judgment cases,” and a “jurisprudence [that] must …evolve.” A moderate shift of the techtonic plates, but evolution to the one advanced is revolution to those comfortable with the past.   For a CAFC panel to feel empowered by the Supreme Court’s reversal in the Medimmune decision is evolutionary or shifty.                                                                           The case is HP v. Acceleron, 09-1283 (Fed. Cir. 12/4/09).

Citizen Copyright Monitors

A recently-filed copyright case pleads that one of defendant’s employees called and reported that the single-user license for a subscription was being exceeded.  The plaintiff in Energy Intelligence Partners v. Fitch, publishes reports on the oil & gas markets.  Fitch, or someone there, subscribed to the reports.  The complaint, recently filed in Chicago, but earlier-filed in NYC, pleads the following:

…Plaintiff received a telephone call from an individual working in Defendant’s office informing Plaintiff of past, current and ongoing infringement of some of Plaintiff’s publications.

Ouch!  This sort of whistleblowing in copyright cases is not uncommon where single-user software is being used on multiple machines.  Seeing it pleaded in a case involving published and printed material suggests some interesting proof problems.  The complaint attaches specimens and registrations, but not a copy of the alleged single-user license.  Unless the reports were being copied wholesale and re-distributed, then what would prove infringment?  Whatever else is disovered, deposing the mystery telephone reporter should be interesting.

Business Method – Reverse Auction by USPTO.

Your USPTO needs copy paper, and it solicits bids in a notice in FedBizOpps.  But, it is not a lowest, when-opened bid solicitation.  Rather, the Commerce Dept. uses a reverse auction method, as stated in the solicitation:                                            “United States Patent and Trademark Office intends to conduct an online competitive reverse auction to be facilitated by the third-party reverse auction provider, [which] has developed an online, anonymous, browser based application to conduct the reverse auction. An Offeror may submit a series of pricing bids, which descend in price during the specified period of time for the aforementioned reverse auction. The United States Patent and Trademark Office is taking this action in an effort to improve both vendor access and awareness of requests and the agency’s ability to gather multiple, competed, real-time bids.”                                             With its ‘other hand’ the USPTO has been issuing patents on methods for conducting online competitive reverse auctios, such as USP 7,376,593 or 7,571,131 or 7,412,412.  Perhaps the copy paper is needed for office actions on these sorts of business methods.