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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:

Implementing A Method of Suing for Theft of Patented or Publicly Known Secrets.

The Ad world tends to self-publicize events involving itself, such as the suit against WPP and JWT arising from an ad campaign for Microsoft’s Bing search service (they’re so cool, everyone in the club knows them by their initials). News reports suggested a patented method to produce a “program-intergrated advertisement” was allegedly infringed. Actually the suit began as a breach of an NDA against Mindshare, a subsidiary of WPP (Del. Ch. dkt. #4659-VCL), seeking injunctive relief. That now has expanded to a damages suit under the UTSA, in the Delaware Superior Court (dkt. #09C-08-138), against WPP, which owns JWT and Mindshare. The origin of both cases was a meeting between plaintiff Denizen’s principals and Mindshare’s reps.

There’s a wide path to travel when suing for misappropriation of trade secrets under the UTSA, or based on a NDA, where the technology is patented or was published in a patent application, but it leads to a narrow gate. “It is well established that disclosure of a trade secret in a patent places the information comprising the secret into the public domain.” Stutz Motor Car of America, Inc. v. Reebok Intern., Ltd., 909 F.Supp. 1353, 1359 (C.D.Cal. 1995), aff’d, 113 F.3d 1258 (table) (case involving “The Pump” hi-tops from Reebok – which you really wanted!). The method of producing a “program-intergrated advertisement” was patented “in 2005” according to plaintiff Denizen’s pleadings. Separate research disclosed that the BPAI (Appeal no. 2008-0732) upheld rejection of all claims in a CIP of Denizen’s USP 6,859,936.

The case recalls those NDA forms that define “Confidential Information” to include “patents,” followed by the anti-definition that excludes information in the public domain. I know what thou art, but what art thou not?  It too recalls words like foreclosed, preempted and barred.

What Denizen pleads is its confidential disclosure, and Mindshare’s misappropriation of, how “to implement program integrated advertisements, such as …ways to shoot the ad[]s, strategies for obtaining [SAGuild] contracts, methods to gain access or rights to [TV] program content, and how an ad[] agency could work with a production house or network.” Curiosity suggests that persons at JWT/WPP with skill in the art, may have known much about those elements of the secrets.  Denizen’s method is patented, some further methods in its CIP were rejected as anticipated, but Denizen’s suit alleges that how “to implement” what it had disclosed (presumably in an enabling manner) in its patent and patent applications, are trade secrets.

It’s no secret that in all litigation, and so too, in IP litigation, to win – you’ll need some luck.

SOX Whistleblower Liability Claim Raised by Firing IP Lawyers Who Reported Possible Inequitable Conduct by a Merger Party.

Husband & wife IP lawyers, working in-house, raised with their superiors the possibility of a material, pre-merger non-disclosure by a merger partner about its key patent, which could impact the post-merger revenue that the patent may generate. Within weeks, both lawyers were fired by execs who came over from the merger partner.

The Ninth Circuit reviewed the summary judgment dismissing the lawyers’ whistleblower claims under the Sarbanes-Oxley Act, as an issue of first impression in that Circuit. Van Asdale v. Int’l Game Technol., 2009 WL 2461906 (9th Cir. Aug. 13, 2009). With a bit of recasting of the facts, the decision could be the basis to turn inequitable conduct into grist for SOX whistleblower suits. While the panel emphasizes that no fraud may be proven later, they did reverse the summary judgment and remand for further proceedings.

Section 1514A of the SOX Act proscribes discriminatory action against employees for providing information about “conduct which the employee reasonably believes constitutes a violation of” federal statutes against fraud. The employee must have a subjective belief that the reported conduct violates those laws, and the belief must be objectively reasonable. To make the claim, the employee must establish a nexus between the “protected activity” of reporting possible fraud and the adverse employment action, here, getting fired right after the report. On that point, the decision holds that “causation can be inferred from timing alone.” The Van Asdales were fired days after the meeting where the fraud issues were discussed.

The facts, taken in the light most favorable to the plaintiffs, were that the merger partner had a patent that generated much of its revenue, which was described as “the Crown Jewel” that the merger partner brought to the deal. That patent was being asserted against a competitor, but the due diligence did not disclose a “flyer” that, as described, appears to have been Section 102(a) prior art. After the merger, one of the plaintiffs obtained the “flyer” from outside counsel, and that provoked his concern that its non-disclosure was material to the valuation of the merger partner, as well as to the revenue stream generated by the patent.

In a broad sense, awareness by counsel for publicly-traded companies that acquired IP may be challenged as invalid or unenforceable must be considered seriously. In the Van Asdale case, the employed lawyers had “allegedly accused high-level IGT executives who had previously worked at Anchor of intentionally withholding material information prior to the merger.” However, the SOX wrong only occurs if management takes adverse employment actions that ostensibly were done to retaliate against or to silence employees who reported the conduct.

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.


The USPTO Assuredly Takes No Blame.

When a deadline is missed or a requirement passes without response, learned patent counsel file a petition seeking relief. Experience with petitions has shown that the contentions that often fail are: blaming the USPTO or claiming that it contributed to the problem, arguing against the unfairness, or expressing surprise or dismay about the situation. The more effective approach is to unsheath one’s sword, then fall forward upon it. Blame thyself, grovel, perhaps do some self-flaggellation – never deny, admit admit – that you’re to blame. If you don’t, then the Petition likely gets denied, and then you’re really stuck.

Consider the malpractice suit, Landmark Screens v. Morgan Lewis, 5:08CV2581 (N.D. Cal.). The PTO, in its increasingly common effort to get additional filing fees, issued a restriction requirement. Counsel divided out claims to be filed as a second application, but failed to include the original spec, and used an out-fo-date form for incorporating the earlier application by reference. The first application issued before the notice of missing parts went out. The incompleteness of the divisional filing prevented it from being accorded a filing date, and the issuance of the earlier application meant no application with the earliest filing date was pending.

The Morgan Lewis attorney filed a petition, which relied largely on the “I” defenses: intent, interests of justice, and indicia of completeness. The petition was not accompanied by an affidavit, or an explanation accepting blame.  The petition was denied, and the filing date lost.  That argument in the petition about the USPTO taking 10 months to send out the notice of incompleteness was acknowledged to be “unfortunate,” but that did “not shift responsibility” (or the misfortune) to the PTO. Same too with the ‘intention’ and ‘indicia’ contentions – “The applicant must be ‘vigilant and active’ in complying with” patent prosecution requirements. That translates to: accept blame, call yourself negligent or non-vigilant.

The countervailing concern is that signing an affidavit that admits screwing up could invite a malpractice claim. But then, if the petition is denied, such a claim is to be expected. If the petition is granted, however, then it’s only client comforting time or a public relations issue, instead of facing up to a client’s publicly-filed complaint.

Civil to the Crime Bar, But Less So to the Civil Bar.

With regularity, CLE presentations on ethics are devoted to “civility” among lawyers, esp. litigators (that’s an alligator not in an alley), but not much about judging with civility. For many years, and in many vicinages, patent litigators acome with the reputation of being painful to deal with or outright obnoxious. It has to be wondered whether this tends to provoke derisive comments in judges’ patent case opinions; or, is it that reputation deserved. Here’s a few passages from one court, over a ten-day period, in patent rulings:

“The present motion is nothing more than an attempt to get a second bite at the apple and should therefore be denied on that ground alone.”

The “Court finds the motion confusing.”

“In effect, they may be conceding [the point]… but would nevertheless like to continue to belabor this point ad infinitum.”

The party’s “opening memorandum made no effort whatsoever to justify the motions.”

“Neither plaintiff nor defendant have given a ‘compelling reason’ [for the position taken].”

“It is unfair for counsel to blame the judge for their own failure.”

These comments emit an odour of disgust, of veiled contempt, and in a way accuse, patent counsel of being deceptive or dissembling. Is that deserved? That is known only to those actually in these cases.

During many trips to many federal courts, my belief is that the most obnoxious attorneys during trials are criminal defense attorneys. They can get away with about anything, and the Judges, fearing reversal, will let it go on without comment. The irony is that these Judges are less civil to civil litigants, than to counsel in criminal cases. No federal judge, in my experience, would say during a trial and in front of a jury that a criminal defendant’s position was “meritless,” or was a “waste of everyone’s time” – but, many would say that in a civil case.

So, I’ll stand up for the litigating patent bar, even though it includes some litigators who act like classAasses. Is it a fair for Judges to say that patent cases are the ‘most boring’ cases? Go, sit through a trial about tax evasion, or medicare overcharging, or a lot of statutory cases, and see how those excite you. Think that that patent litigator is a wiseacre? Watch some criminal defense attorney that drives a Rolls or Lambo with a vanity plate, and you often see trial theatrics that make patent lawyers looks like something from moot court class.