Category Archives: Uncategorized

Word density

Why is that parties are limited to only so many words or pages, or density of type when pleading a cause, but courts can use unlimited pages to set out their decisions.  Presumably, the pleader is the better editor, relying on clearer, declarative sentences, while the deciders just let it all flow across endless pages. 
Maybe some judicial decisions should be released on  twitter.

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.”

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.

Ariad v. Lilly – amicus diverge.

My initial reading of the amicus briefs to the Federal Circuit, on the two en banc questions about the written description requirement, indicated two clusters of argument.  There are contentions that the requirements “as applied” impact the life sciences harshly.  Others contend that there is, or is not, a description requirement in 112,1 separate from having to enable.

The “as applied” contentions may have merit, or may be anecdotally accurate.  Either way, anecdotes are not a sound basis for precedential rulings.  The statute says what it says.  No one would desire a result that allows a patent to issue, before the invention is to the point of invention.  So sure, there are applications and issued patents that get treated harshly, especially if the final claim set is more a product of negotiation with the examiner than based on a restatement of the specification.

As part of my adjunct professor work, an amicus brief was filed with the assistance of law students in the IP Law Society at the University of Kentucky College of Law.  It now is published on, and accessible at:

CAFC Could Be Cited As Authority In Rocket Clemens Defense.

Showing their every-widening expertise in everything from IP to HGH to Latinisms, the Federal Circuit has reversed 2-1 a decision over the firing of a federal correctional officer, who had tested positive for steroids after losing his bout in a Ultimate Fighting Championship event UFC 75 in London.

Anthony Torres used what sounds like the same defense employed by The Rocket, and other [alleged] sports-roiders – that ‘I didn’t know what the trainer injected in me.’  Torres filed a grievance over being fired by the U.S. Bureau of Prisons, and the CAFC reversed the arbitrator’s decision.  Torres v. DOJ, (Fed. Cir. 8/10/2009).  The CAFC decided that to have been fired for “illegal conduct,” it would have to be proved that Torres knew he’d been injected with illegal drugs.   As it is with hair color and tan tones, ‘only his trainer knows for sure’ what was injected.

I ‘Know a Guy’ – Generically Speaking.

One word added to the parlance, but still known as “fixed” to a novel and film is “The Godfather.” Capece? It seems the term is at once, unique and attributable to the Puzo book and Coppola film, while too being generic and adjectival. Can you brand your next product with it; can you put the godfather in your next film…

Indeed, can its use infringe the constitutional rights of an accused, as argued in U.S. v. Kincannon, — F.3d —-, 2009 WL 1577686 (7th Cir. 2009). There, Kincannon (no relation to James Mason’s character in “The Verdict”) complained that “the prosecutor inflamed the passions of the jury, rendering the trial unfair, by referring in closing argument to The Godfather.” Kincannon, a 77-year old meth dealer (but only 30-35 in the 1960’s) was accused of masterminding the actions of others, and in his closing soliloquy, the prosecutor brought in an allusion to Coppola’s work.

The Circuit panel suggested that there’s a right and wrong way to do that. “It would be one thing if the government compared Kincannon to Michael Corleone, an organized crime kingpin responsible for murders and a whole host of other criminal activity.” That’s the wrong way, or the way that could ‘inflame’ an Illinois jury. But by contrast, it “was not Corleone’s criminality, but Francis Ford Coppola’s direction that was at the heart of the prosecutor’s closing remarks.” That apparently is the right way to send the jury away, un-inflamed. “The prosecutor explained to the jury that he would try to do orally what Coppola did in his film-that is, tie together the events that occurred during the two controlled buys into one seamless story.” Not only was that an errorless way to close, it too is the hard way to do it. “To do so as eloquently as Coppola is a tall task, but there is certainly nothing improper about the attempt” by this prosecutor.

The Circuit panel then re-ignited the debate over how the Academy gets it wrong. To present two events, occuring separately, so as to urge a “poetic implication” that the audience “can understand it very easily, is difficult.” With that, the panel did “agree, as did the Academy of Motion Picture Arts and Sciences, who nominated Coppola for an Oscar for best director.” However, in “an upset along the lines of the 2009 Kentucky Derby win by Mine That Bird, the 1972 Oscar went to Bob Fosse (for Cabaret) rather than Coppola.” A search of copyright deposits for “Godfather” yielded 570 entries, including The Godfather Waltz “What are you doing the rest of your life?” but nothing criminal. It just shows that there’s a right and a wrong way to use, reuse, close, and even author anew from the term “The Godfather.”

The Blawger’s Body of Evanescent Work.

One attraction of intellectual property is that, although the exclusive rights are for “limited times,” the I in IP embodies an element of immutability. Even after IP is devoted to the public domain, the invention was one that persons of skill in the particular art, at the time of invention, would consider new, useful and non-obvious. That ‘moment’ of invention and its recognition tend to live on, unchanged. It, perhaps, was the best idea anyone had had up to then. It’ll be mentioned in the inventor or author’s obit. “We feel, conceive or reason …Nought may endure but Mutablilty.”
In this age of disposables and non-renewables, the thought of lasting contribution raises little general interest. Still, my attendance at a ceremony recognizing the life’s work of a group of septuagenarians subsumed thoughts about what current and on the cutting edge. One of the group was absent, having died, but her work was recalled. It was saddening, because she tirelessly spent the first years of her retirement, establishing an exhibit space for creative works. Her vision was ‘reduced to practice’ and no long thereafter she died suddenly. Other tried to keep it going, but the museum although beautiful, later closed and there is no sign of it.
The digital medium, and certainly works in cyberspace, are the most mutable forms of expression. The Dead Sea Scrolls or the Magna Carta appear fragile, but I expect those to be around for centuries to come. When all the works of intellectual creation are arrayed as digital bits, retrievable as long as the electricity holds out, or evanescent if the medium in which those are fixed becomes inaccessible, then hereafter, what “body of work” remains. It hardly seems believable that, if I ever have grandchildren, that they’ll want to come over and look at my hard-drive, just like I wanted to peruse the photo albums of my grandparents.
So, whether you are a blawger or lawyer, you’ll choose a day to give that work up. All those finely-worded and bound briefs, all those well-organized file wrappers, and all those blawg posts will go away, either dumped, shredded or deleted. Only mutability will endure. But, maybe if you invent something patentable, then you can sort of ignore that enduring fact.

Self-Congratulatory Moment.

May celebrates Historic Preservation month, Those who have contributed to the preservation and adaptation of historic places in America are celebrated by The National Trust for Historic Preservation, as well as by local bodies.  16 U.S.C. §470a.

Tonight I am excited to accept an award in the category of best adaptive use of an existing structure from the local Historic Review Board.  My renovation of an ugly duckling building, restoring its original curved corners, and upgrading it with an Art Deco facade and interior, was like IP – fun, but challenging.

Attorneys, who fill in many spaces in downtowns and renovate existing structures, have done as much as any group to contribute to historic preservation and revival.  So, give yourselves a pat on the back, and invite your community to visit that office which gives pride to your profession.

Postscript at Closure.

This IP blog took to cyberspace in August, two years ago.  Now, after 150 posts and 350,000 visits by readers, I’m closing it down.  I’ll still read every CAFC case, and take in most every IP case that I can find {thanks PACER}.  My conclusion, though, is that the ‘space’ occupied by IP blawgers is overcrowded and filled with repetition.  While I haven’t found a blog like mine, there are a bunch that are more widely read.

My thought to close down was sped forward when I got an offer to teach an IP 2.0 law class at my alma mater.  The effort I’ve put into reading and writing about IP on this blawg will be better devoted to teaching. 

The thought I had at the beginning of this blawging experience was ‘why would anyone find what I think of interest, especially when I’m ripping into the CAFC.’  Never got that one answered.  Still, there’d be 20,000 visits per month, which I too never figured out.

It’s been fun, and it is fun, but better to stop before it’s not fun.  Thanks, thanks, thanks to everyone who read my blawg, to all those who sent me comments, and to anyone who cares about the somewhat sad state of affairs concerning the acquisition, value and protection of patents.