IP News
November 01, 2003
Highlights of the latest intellectual property news and cases from around the country.
Federal Circuit Decides <i>Festo</i> on Remand from Supreme Court
November 01, 2003
On September 26, 2003, the Federal Circuit decided <i>Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,</i> 344 F.3d 1359 (Fed. Cir. 2003), which was on remand from the Supreme Court. In its opinion, the Federal Circuit summarized the current law on prosecution history estoppel and shed some light on the applicability of the Supreme Court's criteria for rebutting the presumption of total surrender that results when a narrowing amendment is made for reasons substantially related to patentability. The Federal Circuit's decision appears to be directed toward a very limited exception to the total surrender presumption, and the minority opinions illustrate that there is tension within the Federal Circuit regarding the approach to barring equivalents.
FTC Urges Changes to U.S. Patent Policy
November 01, 2003
In October, the FTC issued a report titled "To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy." Citing an existing system that relies on presumptions in favor of the issuance and validity of patents and that makes challenges to the validity of existing patents difficult and costly, the report contains specific recommendations on what the FTC considered to be improvements to the U.S. patent system. The report comes nearly 1 year after the FTC and the DOJ completed a series of public hearings on the proper balance between patent and antitrust law with an aim to foster innovation and maximize consumer welfare. The hearings, which took place over 24 days between February and November of 2002, attracted the participation of more than 300 panelists and more than 100 written submissions from business representatives, the independent inventor community, and leading patent and antitrust practitioners, scholars and organizations.
Evidence Comes to Life with the Click of a Mouse
November 01, 2003
From humble beginnings in 1951 when the first blackboard was used in a courtroom, visual props have evolved in sophistication. The blackboard led to flip charts and photo enlargements, overhead projection, the playing of videotapes and now to the integration of sight and sound with electronic slide presentations. While props in the courtroom provide razzle-dazzle to keep jurors attentive, they should never be overlooked in situations such as settlement conferences, mediations and arbitrations where strict evidentiary rules do not apply.
Fact or Fiction: Trial Counsel Should Author Patent Opinions
November 01, 2003
When patent issues arise, clients often need both trial counsel and opinions of counsel. Opinions are primarily needed for: 1) advice on how to avoid infringement; 2) assessment of liability risks and potential outcomes of infringement lawsuits; and 3) protection against a finding that any infringement was willful. Trial counsel are needed when a patent infringement suit is threatened, imminent, or instituted. This article discusses the advantages of employing the same attorney or law firm as both opinion counsel and trial counsel. It explains why disqualification of counsel is not as much of a concern as some commentators emphasize. Finally, it analyzes the issues surrounding attorney-client privilege and work-product protection and concludes that the dangers are minimal with experienced trial counsel.
Product Review: ProLaw
November 01, 2003
After considerable analysis of our firm's existing software and case management practices, we went shopping. We chose tradeshows like the ABA Techshow to familiarize ourselves with software options. Anyone who's ever attended a tradeshow knows how overwhelming the vendor presentations can be, and how after a while all products appear to blend in one's mind. It's inevitable, given the amount of information every vendor attempts to convey in each short, intense demo session. We solved that by picking up demo disks wherever possible, and then looking them over in the comfort of our own offices once we'd returned. ProLaw stood out for many reasons, including its ability to integrate all firm practice management functions under one database - something nobody else at the time was doing well, if at all.
E-mail and Records Management in the Legal Environment
November 01, 2003
Law firms have historically recognized the need to keep all legal matters in some kind of permanent file. Therefore, the position of "record manager" is well known. However, the definition of a "record" has expanded in scope to encompass all computer-generated documents. Importantly, that now includes e-mail and e-mail attachments. This article will explore the differences between records and documents, the unique challenge e-mail represents and issues to be aware of when setting up a cutting edge records management system.
<b><i>Practice Tip</b></i>Security on the Desktop
November 01, 2003
Information security has come to play an extremely vital role in today's business environment. Whether you are a solo practitioner or an IT Director of an AmLaw 100 or 200 firm, how can you best protect your company's data from being compromised? Anyone who experienced the "Slammer Worm" attack last January or the "So Big Worm" this past August knows the astonishing speed these viruses spread across the Internet. Hundreds of thousands of networks were affected within hours of each of those outbreaks. What is even more disconcerting is that in the case of the Slammer Worm, the attack exploited a well-known vulnerability in SQL Server; one which Microsoft had already fixed in a patch six months earlier. For mid- to large-size firms, a security policy is of paramount importance in order to ensure that the most appropriate security measures have been implemented with an acceptable level of competency and consistency throughout the organization. Physical desktop security, password best practices, virus protection, software installation and e-mail best practices are a few of the subjects that would form the core of the security policy document.
Post Mortem of the Reverse Doctrine of Equivalents
November 01, 2003
The Federal Circuit in <i>Tate Access Floors,Inc. v. Interface Architectural,</i> 279 F.3d 1357, 1368 (2002), announced the death of the Reverse Doctrine of Equivalents (RDOE). The Supreme Court created the RDOE as an equitable release valve for accused devices that literally infringe claims. The RDOE applies "where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim." <i>Graver Tank & Manufacturing Co. v. Linde Air Products Co.,</i> 339 U.S. 605, 608-609 (1950); <i>see also Boyden Power-Brake Co. v. Westinghouse,</i> 170 U.S. 537 (1898). In such a case, the RDOE "may be used to restrict the claim and defeat the patentee's action for infringement." <i>Graver Tank,</i> 399 U.S. at 609.
Corporate Governance Primer: Authority of the Board
November 01, 2003
As the ultimate repository of management authority, the board of directors is spared the often laborious process by which matters are presented to it for its determination. By necessity boards must, and are entitled to, rely on corporate officers and advisers to select, refine, and present crisply for resolution the issues that come before it. The cost of such efficiency is the risk that board meetings become formulaic, board action becomes automatous, and board members fail to learn the alternatives, procedural or substantive, that might be available. This article is intended as a corporate governance primer, identifying the toggles, levers, and switches the board can set, pull, push, in the cab of the corporate crane.
