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Tribute to a Section Leader One cannot think of Don Banner without thinking of his unwavering commitment to our system of protection of intellectual property rights and its importance to the strength and prosperity of the United States. He was a man of high principles who never shied away from difficult or contentious issues. Our Section, with its long tradition of open and vigorous debate, provided an ideal forum for Don to express and defend his views. Don was an effective participant in the Section’s debates, and that participation educated, enriched and entertained those who had the privilege and good fortune to attend some of the many meetings at which he spoke. Don’s defense of this country’s first-to-invent system – even when the Section came around to supporting adoption of a first-inventor-to-file system – is well known. His position was consistent and his views were firmly held over many years. For example, at the 1982 ABA Annual Meeting, Don spoke against a resolution supporting adoption of first-to-file: “First of all, I would take great issue with the statement that a first-to-file system is more efficient or economically better than our present system. It is very true, of course, that interferences can be expensive. However, few of them are that expensive; and even more importantly, very few applications get into interference.” In opposing a 1987 resolution linking the twenty-year patent term to a first-to-file system, Don again made his views clear: “I don’t think that’s in the best interest of the United States of America. . . . If we want a system in which patents expire in twenty years, we can have that under the present system. None of these things have the slightest thing to do with the issue or, indeed, the necessity of going to a first to file system. . .” Don used the forum of the Section's annual business meeting debate in 1994 to caution that changing the law to implement broad prior user rights could be detrimental to public interests by encouraging reliance on trade secrets. He argued that, “[t]he patent system is supposed to improve the ability of the United States not only to invest but also to build on other people’s activities and contribute something to the world. Trade secrets don’t do that.” But Don was not opposed to change when he thought that it would improve the system and benefit the country. For example, in 1984 he vigorously supported the changes now embodied in Section 271(d) to counter what he believed to be a pernicious use of the patent misuse defense. He proposed improvements to the patent interference rules and advocated changes to Section 103 that later were enacted into law. Don was a consistent advocate for a properly funded PTO, an issue on which recent progress has been made, but one that remains a top legislative initiative of the ABA. Twenty years ago, he introduced a resolution favoring “funding the Patent and Trademark Office sufficiently to administer efficiently and expeditiously the nation’s patent and trademark laws.” These snippets of history give a sense of Don’s passion for our system of intellectual property protection and his effective use of the debate forum offered by our Section to influence policy decisions. When the future of such debates was in jeopardy as a result of proposed changes to the Section’s Bylaws at last year’s Annual Meeting, Don was there – ready to do battle if necessary. These few examples, of course, do not do justice to Don’s many contributions. He was not only an advocate for the system, but was an educator. I first met him in 1974 when, as a member of the faculty of the John Marshall Law School patent, trademark and copyright graduate program, he organized a program to train young lawyers in the skills of drafting patent applications. His interest in educating IP lawyers continued for his entire career, with his frequent lectures and publications, his serving as director of the intellectual property programs at the John Marshall Law School and the George Washington Law School and his co-founding of the Giles S. Rich American Inn of Courts. A discussion of Don’s career and his contributions to the ABA would be incomplete without also mentioning his remarkable family. His children -- our friends and colleagues -- carry on their father’s tradition of unselfishly devoting their time and considerable talents as advocates for a strong intellectual property system. Their contribution to the Section has been immeasurable, as Council members, officers, past Chair and current Vice-Chair. We join them in celebrating their dad’s impressive career. Don Banner made his mark on our profession. Whether you agreed or disagreed with him on any particular issue, you could never doubt that he had the best interests of the profession and the country at heart. He was a longstanding distinguished member and friend to our Section, and we will miss him.
Section Resolution, MERCEXCHANGE V. EBAY, Passes In ABA House Of Delegates Upon final approval by the House, the ABA policy now reads: RESOLVED, that the American Bar Association supports the granting of a permanent injunction enjoining a patent infringer from future infringement of a patent that has been adjudicated to be valid, enforceable and infringed, in accordance with the principles of equity on such terms as the court deems reasonable; FURTHER RESOLVED, that the Association opposes consideration of the extent to which the patent owner has practiced the patented invention or has licensed others to do so, except when determining whether grant of a permanent injunction would adversely affect public safety, public welfare, the national security, or the like. The Executive Committee of the ABA Board of Governors has approved filing of the brief, which can be found on the Section website at: (www.abanet.org/intelprop/judicialbranch.html.) President's Budget Request For PTO Funding Provides Full Access To Fee Collectors The President's Budget Request for funding of the federal government in fiscal year 2007 (October 1, 2006-September 30, 2007) was sent to Congress on February 6, 2006. The President requests funding of $1,842,966,000 for the U.S. Patent and Trademark Office, an increase of $160 million over the appropriation for FY 06. The request states that this amount provides "full access for the agency to its fee collections." The proposed appropriation contains standard language included in each annual appropriation to the effect that the appropriation will be automatically reduced by any such amount by which fee collections fall short of the amount called for in the appropriation. This provision is particularly significant for FY 2007, since the temporary PTO fee increases enacted two years ago expire at the end of FY 06. Unless the fee increases are extended, annual fee collections will drop by more than $200 million. The proposed appropriation that the Administration is asking Congress to enact itself contains a one-year extension of the fee increases. Explanatory material accompanying the request states that the Administration will be sending a bill to Congress to permanently extend the fee changes beyond FY 2007. On November 9, 2005, the House Judiciary Committee voted to favorably report H.R. 2791, the "United States Patent and Trademark Fee Modernization Act of 2005." H.R. 2791 would make permanent the PTO fee increases enacted for two years in 2004, and contains provisions designed to permanently prevent diversion of PTO user fees
New Intellectual Property Bills Advance in Congress The Subcommittee on Courts, the Internet, and Intellectual Property of the House Judiciary Committee on March 1 voted to favorably report two intellectual property related bills to the full Judiciary Committee. S. 1785, the "Vessel Hull Design Protection Amendments of 2005," would amend the statute enacted in 1998 to provide copyright-like protection for original designs of vessel hulls. The amendments would make the design of a deck of a vessel eligible for protection separately from the hull; current law defines "hull" to also include the deck of a vessel. S. 1785 passed the Senate on November 18, 2005. The Subcommittee today approved both H.R. 4742 and S. 1785 by voice votes and without amendment. Nominating Committee Announces Candidates Mark T. Banner, Chair of the Section's Nominating Committee, reports that the following candidates have been nominated for the 2006-2007 year: Chair-Elect: Pamela Banner Krupka, Los Angeles, CA. Ms. Krupka currently serves as the Vice-Chair and is a former Council Member, Committee Chair, Division Chair and Liaison to the ABA Commission on Women in the Profession;
Vice-Chair: Gordon T. Arnold, Houston, TX. Mr. Arnold has served as the Section’s Secretary for several years and is a former Council Member and Committee Chair;
Members of the Section Council for a four-year term ending in 2010: In addition to Chair Mark T. Banner, Chicago, IL, the Nominating Committee is comprised of Elizabeth Chien-Hale, Fremont, CA, Linda DeBruin, Chicago, IL, George A. Frank, PhD, Philadelphia, PA and William L. LaFuze, Houston, TX.
Subcommittees of the Committee on Patent Litigation (# 112) and the Committee on Trial and Appellate Rules and Procedures (#601) Review AIPLA Survey As part of a joint project involving subcommittees from Committee 112 and Committee 601, IPL Section members recently reviewed the results of the AIPLA Economic Survey for 2005. Members of these two committees reviewed typical costs of patent litigation, as determined by the AIPLA survey for various geographic regions within the U.S. The purpose of this review was to determine whether litigation costs tend to be higher in federal districts that have adopted local rules specific to patent infringement cases, such as the Northern District of California and the Northern District of Georgia. The AIPLA survey found that, for cases involving less than $1 million in claimed damages, the most expensive region in which to litigate was Washington, DC (mean cost of $658,158 through discovery, and $1,097,059 through conclusion of case), followed by “Metro Southeast” (which includes Atlanta, Miami, and several metro areas in North Carolina). The lowest litigation costs in this category of cases were found in San Francisco ($298,077 through discovery, and $605,769 through conclusion of case) and “Other Southeast” (which includes non-metro areas in the Carolinas, Georgia, and Florida). For cases involving claimed damages of $1-25 million, the most expensive regions were New York City ($1,678,000 through discovery, and $3,667,308 through conclusion of case), Philadelphia, and Washington DC, while the least expensive were Minneapolis-St. Paul ($955,556 through discovery and $1,567,500 through conclusion of case) and “Other Southeast.” For cases involving claimed damages of more than $25 million, the most expensive areas, in terms of mean costs, were the Metro Southeast ($7,118,182 through discovery and $9,440,909 through conclusion of case) and San Francisco, with the lowest average costs in “Other East” (New England and the Atlantic coast, outside of Boston, New York City, Philadelphia, and Washington, DC) and “Other Central” (generally the Midwest, outside of Chicago and Minneapolis-St. Paul). With respect to the question of whether the adoption of local patent rules increases litigation costs, the Section subcommittees determined that the results of the AIPLA survey were inconclusive. Although two regions in which such rules have been adopted (San Francisco and “Metro Southeast”) had the highest mean litigation costs for cases involving more than $25 million in dispute, these regions generally had lower costs in other cases. In addition, even for the cases with higher claimed damages, these two regions had median costs that were roughly equivalent to other regions such as New York, Philadelphia, and Washington, DC, thus suggesting that the higher mean costs might have been caused by a relatively small number of particularly large and complex cases that skewed the overall results. The Section will continue to study these issues, and is grateful to the AIPLA for its efforts in publishing the results of its Economic Survey. Special Committee on Online Trademark Issues (# 254)
The Special Committee on Online Trademark Issues (#254) devoted its efforts this year to preparing a summary of two key areas of trademark law that developed rapidly during the past year. Members analyzed a variety of new cases concerning online contextual marketing, including decisions addressing pop-up ads, sponsored links in search results, hyper-linking and framing, metatags, search engine manipulation and other uses of trademarks on the Internet. Members of the committee also are reporting on the status of federal and state spyware legislation and related FTC initiatives. Committee 254 members also examined hundreds of decisions concerning domain names and summarized key developments in each of the federal circuits as well as some of the most significant decisions issued by the arbitral panels operating under the domain name management rules of the Internet Corporation for Assigned Names and Numbers (ICANN). The sheer number of court decisions concerning domain names appears to be declining. Fewer cases appeared to involve pure cybersquatting (in the sense of registering names of the purpose of extortion). In most, that issue was tangential to a broader dispute in the classic “likelihood of confusion” context. Absent evidence of extortionate behavior, almost every court confronted with a domain name attached to a truly non-commercial site, deemed the use and registration of that domain name non actionable under the Lanham Act. A minority of decisions did suggest that even these non-commercial sites owners must add a negative or at least a clearly descriptive word to the domain name to be nonactionable. Additionally, when a trademark is used in the domain name for a commercial web site operated by an unauthorized reseller of the trademark holder’s goods, courts and arbiters generally rejected that use as inconsistent with trademark holder’s rights. Members of the committee also have proposed a panel presentation about current online trademark issues for the IPL Section’s June meeting. Committee on International Patent Treaties and Laws (#102), Report on the Fourth Annual Ambassador’s IPR Roundtable on Intellectual Property Rights in China
The Fourth Annual Intellectual Property Rights Roundtable, organized by the U.S. Embassy in Beijing, was held on Nov. 3-4, 2005, in Beijing, and on Nov. 6-7, 2005 in Shanghai. Elizabeth Chien-Hale, the Chair of Committee 102 and the China Task Force, attended the Beijing portion of the Roundtable on behalf of the Section. A delegation of U.S. officials traveled to Beijing for this event, including Special IPR Enforcement Coordinator Chris Israel, Under Secretary of Commerce for Intellectual Property Jon Dudas, FBI Assistant Director for Cyber Division Louis Reigel, Assistant USTR for Intellectual Property Victoria Espinel, and Assistant USTR for China Affairs Timothy Stratford. The U.S. government emphasized its continued commitment to improving intellectual property protection in China, and kept on its 2006 IPR Work Plan the promises made by the Chinese government through Joint Commission on Commerce and Trade (“JCCT”), including transfer of criminal cases and criminal prosecution, software piracy and the use of licensed software, expanded US-China law enforcement cooperation, and China’s accession to WIPO internet treaties. The U.S. government has also filed an Article 63.3 request with the WTO for China to detail the specific of its IPR enforcement efforts. Industry representatives also made their presentations. The old concerns for piracy and counterfeits are still there; according to statistics provided by the U.S. Customs, 70% of the seized goods originated from Hong Kong and mainland China during the first half of 2005, and the value of the goods seized went up by 8% compared to the same period in 2004. They also raised new concerns, such as the growing number of China’s home-grown standards, the setting and development of which were considered lacking in transparency. On the Chinese government side, speakers from the State Office of Intellectual Property Protection (not the same as the State Intellectual Property Office which overseas patent administration), the Supreme People’s Procuratorate, the Ministry of Public Security, General Customs Administration, and the State Administration of Industry and Commerce were present. Following the Judicial Interpretation of 2004 which, among other things, lowered the thresholds of initiating criminal IP cases, these agencies are working together to formulate regulations for case initiation and administrative-to-criminal case transfer. The agenda on the Shanghai portion of the Roundtable included special reports from US companies on the IP enforcement status in Shanghai, presentations from the judges and officials of the IP administrative agencies in Shanghai and the nearby areas, and views from the officers of IP-based companies in China. Not on the Agenda of the Roundtable but discussed privately among participants, is the upcoming third major set of amendments of the PRC Patent Law. Committee 102 is setting up a new subcommittee to monitor legislative changes in Chinese patent law and other China-related issues. Section members who are interested in these topics please send an e-mail to Elizabeth Chien-Hale at ech@institute-ip-asia.org. Neukom Nominated as ABA President-Elect Seattle lawyer William H. Neukom was nominated last month to be president-elect of the association, and, if elected in August, he will become ABA president in August 2007 after serving as president-elect for one year. Neukom, the chair of Preston Gates & Ellis LLP, is a former general counsel for Microsoft Corporation. During his tenure at Microsoft, he established the company’s Law and Corporate Affairs Department, which grew from five employees to more than 600. In addition to overseeing legal matters, Neukom also oversaw corporate affairs, including government, industry and community affairs. Neukom, who has been active in the organized bar for more than 35 years and is serving his third term as the Washington state delegate to the ABA House of Delegates, said that as president of the ABA, he “would like to enhance ABA programs that help lawyers better serve their clients, our communities and our nation.” He said he also plans to emphasize the rule of law in the United States and abroad. In addition to serving in the House of Delegates, Neukom is a former secretary of the ABA and chaired the ABA’s Young Lawyers Division and the Young Lawyers Division of the Seattle-King County Bar Association. He also is active in community affairs, serving as chair of the board of trustees of Dartmouth College and as a board member of the Greater Seattle Chamber of Commerce, the YMCA of Greater Seattle, the National Judicial College, the Pacific Council on International Policy and the University of Puget Sound. 21st Annual Intellectual Property Law Conference The 21st Annual Intellectual Property Law Conference is fast approaching. Be sure to register today and remember the hotel deadline is March 22. Log on to www.abanet.org/intelprop/spring2006 to see the complete registration details. Highlights of this year’s conference are in-house counsel issues, including many panels with prominent in-house counsel representatives and different views from the bench and the bar. Featured guest luncheon speakers are Tommy Warlick, General Counsel, Motorsports Authentics and former Assistant General Counsel of NASCAR, and Oliver Mitchell, Chairman of the Dealer Policy Board of Ford Motor Company. We are pleased to welcome teh following speakers: Hon. Paul R. Michel, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Hon. Randall R. Rader, U.S. Court of Appeals for the Federal Circuit; Hon. T.S. Ellis, U.S. District Court for the Eastern District of Virginia; Hon. Susan Illston, U.S. District Court for the Northern District of California; Hon. Kathleen McDonald O’Malley, U.S. District Court for the Northern District of Ohio; and Hon. Mary Beth Peters, U.S. Register of Copyrights. Corporate presenters are from diverse firms such as: Wal-Mart Stores, Inc., Seven For All Mankind, NBC Universal, America Online Incorporated, EMI Music North America, Microsoft Corporation, Eli Lilly and Company, Amylin Pharmaceuticals, Inc., Cisco Systems, Inc., Google, Inc. and The Walt Disney Company among many others. Also will be the following group represented: Recording Industry Association of America, Biotechnology Industry Organization, Business Software Alliance, Future of Music Coalition, Electronic Frontier Foundation, Creative Commons, Association of American Publishers, and Internet Archives. The panels will be rounded out by expert speakers from private practice, and academia. The conference will address recent developments in IP law and will cover current IP topics including:
As in past years, the ABA Section of Science & Technology Law joins with the Section of Intellectual Property Law as a co-sponsor of the conference. A special session on Internet Law and Litigation Strategy will be presented, coordinated by both sections.
Special One-Day Program: Practical Tips on Intellectual Property Law Before the Annual IPL Conference you can us for a separate one-day program, Practical Tips on Intellectual Property Law, to be held at the Crystal Gateway Marriott Hotel on Wednesday, April 5, 2006. This program provides a background on patent and trademark law information for new practitioners in IP law practice in light of current developments in the field. The special guest luncheon speaker for the day will be Sean Carter, “Humorist at Law,” author of a weekly syndicated legal humor column entitled “Lawpsided.” Lawpsided has been published in newspapers in 30 states and on many web sites. For information and a registration form for this Practical Tips program, visit our website at www.abanet.org/intelprop/2006ptips_dc, or e-mail us at iplaw@abanet.org. This program will also offer CLE credit. Mark your calendar for the 2006 IPL Summer Conference!
You are invited to the 2006 Summer IPL Conference of the ABA Section of Intellectual Property Law, to be held June 21-24 at the Marriot Copley Place Hotel in Boston. This conference has become an absolute must for intellectual property law practitioners. It will provide opportunities for all—members, non members, the new and the experienced—to gain insights into new developments, debate current issues and share ideas with others interested in improving the protection of intellectual property nationally and internationally. The educational programs will feature the latest developments in IP law presented by leading authorities in the field. The Business Session will include reports from the Section's substantive committees for analysis, debate and adoption of resolutions that will be the foundation of Section and ABA positions, Congressional testimony, and statements to the PTO and international IP bodies on intellectual property law issues for years to come. CLE credit will be available for both the educational programs and the Business Session. Boston is a fascinating place for you and your family to visit, and the Section is planning a variety of social events and tours that take advantage of the unique and varied attractions of the city. The mixture will include programs for attendees, their spouses and guests, and their children. Register today, and make your hotel and airline and hotel reservations as soon as possible. For complete information, visit: www.abanet.org/intelprop/summer2006. This year the Section welcomes the participation of several local IP law organizations and the International Bar Association. Members of these cooperating organizations may register for the conference at the Section member rate.
We look forward to seeing all of you in June at the Marriot Copley Place Hotel in Boston.
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Don Banner was the Chair of the ABA Section of Intellectual Property Law – then known as the Section of Patent, Trademark and Copyright Law – more than three decades ago. But his leadership in the Section and the intellectual property law bar in general continued virtually until his death at the end of January. This article is not intended to be another obituary, several fine examples of which have already appeared in other publications and on our own website. (
