From the Chair
E.Anthony Figg
Section Chair, 2005-2006

I write this final column for the Chair’s Bulletin with mixed emotions. While it will be a relief to be out from under the day-to-day responsibilities as Section Chair, it has been interesting, fun and challenging to lead this great organization over the past year. I thank the members for the honor and privilege of serving as Chair, and I thank the officers, Council and staff for their indispensable support and camaraderie.

The 2005-06 Section year ended with the close of the ABA Annual Meeting in Honolulu. Although this year’s Annual Meeting was not the Section’s main meeting of the year (we re-join our main meeting with the ABA Annual Meeting beginning next August in San Francisco), we did have a very successful program in Hawaii. The program included our annual business meeting, with election of officers, a Council meeting, a reception co-sponsored by our Section and the Section of Science and Technology Law, and two outstanding and well-attended CLE programs: “Intellectual Property Harmonization: Does the World Want It?” and “Hot Topics in Patent, Trademark and Copyright Law.” Thanks to the speakers for these fine programs and thanks to program chairs, George Frank, Nick Setty and Leighton Chong for their hard work in organizing the meeting.

One of the more important substantive accomplishments during the Annual Meeting was to secure House of Delegates approval of the Section’s resolution relating to the Supreme Court case, KSR International Co. v. Teleflex Inc. As previously reported, Committee 108 issued a report and proposed resolution earlier this summer. The resolution, which was adopted by Council at its meeting in June, supports the Federal Circuit’s so-called “teaching, motivation or suggestion” approach for combining references when determining whether or not a claimed invention was obvious.

The Supreme Court granted KSR’s petition for certiorari earlier this year. In late July, our Section submitted its resolution and report to the ABA House of Delegates for adoption as Association policy. House of Delegates (“HOD”) approval is required before an amicus brief can be filed with the Supreme Court.

The Section was informed that our resolution would be opposed by the Section of Administrative Law, and that other sections were considering whether or not to support or oppose it. Our presence at the ABA Annual Meeting allowed us to meet with representatives of other sections and to explain our position. As a consequence, the resolution was co-sponsored by the Section of Science and Technology Law, and the Section of Litigation agreed to support it. The Section of Antitrust Law, which initially had some concerns, agreed not to oppose after being informed of the details of our position.

When the resolution finally came to the House floor, it was passed without anyone speaking in opposition. The resolution, as passed, reads as follows:

RESOLVED, that the American Bar Association supports maintaining a “teaching, suggestion, or motivation” inquiry with respect to combining elements or features in the prior art in determining obviousness of an invention under 35 U.S.C. §103, as a means of guarding against the use of hindsight, wherein a showing must be made as to why the teachings of the references would have been combined by a person skilled in the art based upon, but not limited to, the explicit or implicit teachings of the pertinent references, the knowledge of one of ordinary skill in the art, and/or the nature of the problem as supported by evidence.

Some have criticized the “teaching, suggestion or motivation” test for requiring that a patent examiner or court find an explicit statement in the prior art references that their teachings be combined. However, such was not the holding in the KSR case, nor is it the position reflected in the Section’s resolution. Our position is that, to avoid improper use of hindsight in an obviousness analysis, the “teaching, suggestion or motivation” inquiry should look both to the explicit and the implicit teachings of the prior art, the knowledge of those skilled in the art and the nature of the problem addressed by the invention. This approach to determining obviousness is consistent with Federal Circuit case law as a whole, including the Court’s recent decision in In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006).

The Section will now seek ABA approval to file an amicus brief consistent with the approved resolution. Our Section Delegates, Don Dunner and Jack Goldstein, and Committee 108 Co-Chair, Joe Potenza, deserve special recognition for their efforts to enlist support for the resolution and for shepherding it through the HOD approval process.

The experience at the ABA Annual Meeting in Honolulu and a similar experience at the ABA Midyear Meeting in Chicago in gaining approval of our eBay resolution confirm the importance of the Section’s active participation in these major Association meetings. The opportunity for officers, Council members and committee and division chairs to interact with leaders of other ABA entities brings diverse views to our decision-making and enhances our ability to effectuate Section policy. The changes implemented this year as a result of our Long-Range Plan—particularly moving our leadership meeting to November and re-joining the ABA Annual Meeting—will facilitate our involvement with other ABA entities.

Again, I thank you for the privilege of serving as Chair of the Section, and I wish the new Chair, Susan Barbieri Montgomery, every success in the coming year.

It's That Time of Year Again! Sign up On-Line for the Committee of Your Choice

It is time to sign-up for committee membership for the 2006 - 2007 ABA year. The Section's committees are re-formed at this time each year. New members are welcome and all members are encouraged to get involved in the committee or committees that interest them most. Even if you want to continue on the same committee, please be sure to sign-up now. Chair-elect Susan Barbieri Montgomery has mailed a letter reminding you that committee work in the Section is the foundation of our productive efforts. Our committees actively write, critique and comment on current and proposed policies, laws, rules and cases relating to intellectual property, plan CLE programs, and much more. Committee work usually is the basis on which the Section Council and membership take action in Congress, the U.S. Patent and Trademark Office, the U.S. Copyright Office, other agencies and the courts. The work of our committees makes a difference in advancing our profession. Active participation in committee work is professionally rewarding and educational, and provides an opportunity for members to interact with colleagues and leaders in the intellectual property bar.

As you may know, the Section is the largest and most influential organization of intellectual property lawyers in the world. We are seeking volunteers who are interested in actively participating in the Section’s committee work for the next year.

Please use this link and the on-line form to join a committee today – www.abanet.org/intelprop/committees.html. When you fill out the committee preference form, please be sure to include your email address for committee communications. Timely, active, and effective participation in the work of the Section’s committees requires electronic communication among committee members and electronic voting on the committees' reports and resolutions. Please also visit www.abanet.org/abanet/common/MyABA/home.cfm to update your contact information.

Committee work will begin in September, so be sure to sign up now. We look forward to working with you to keep our Section a leader on IP issues.

top of page

Committee News
Committee 805
Co-Chairs – Jim Sims and Rich de Bodo

Committee 805 (Spring CLE Program) Co-Chairs Jim Sims and Rich de Bodo invite you to submit suggestions for session topics and speakers for the Section's 22nd Annual Intellectual Property Law Conference in April next year. As with prior years, the program will cover aspects of trademarks, copyrights, patents, trade secrets, IP litigation, and ethics. Although it seems far away at the moment, this widely attended program will be here soon. Please use this form to provide suggestions in writing (with as much detail as possible regarding the proposed topic and contact information for any suggested speakers) by September 15, 2006 to Jim at jsims@morganlewis.com and Rich at rdebodo@irell.com.

Upcoming Section Events

Practical Tips on Enforcing and Defending Patents Program Set for Twin Cities

William Mitchell College of Law in St. Paul, Minnesota will host the Section of Intellectual Property Law’s one-day CLE program, “Practical Tips on Enforcing and Defending Patents,” on October 12, 2006.

Young Lawyers’ Committee co-chairs Robert Fergan and Christopher McGeehan would like to give special thanks to program co-chair Kristine Boylan for assembling an outstanding panel of speakers for this event.

The program will feature top professionals from the IP field who will provide practical advice on dealing with the “nuts and bolts” of every day patent practice. It is designed to enhance a broad array of skills and enable IP practitioners to handle the many tasks that routinely arise in intellectual property law practice.

The Practical Tips series, sponsored by the Section’s Young Lawyers Committee, is now in its ninth year, and has featured programs on Trademark Law, general IP law, Enforcing and Defending Patents, Handling Intellectual Property Disputes, and Patent Prosecution. These programs have been held in a variety of cities across the U.S., including Seattle, San Francisco, Palo Alto, San Diego, Chicago, Atlanta, Raleigh-Durham, Philadelphia, Boston, Dallas, and Washington, DC.

The October 12 program will be held in cooperation with the Minnesota Intellectual Property Lawyers Association, and the William Mitchell College of Law.

Full program information and registration is available, details here Register online today.

The advance registration deadline for the Practical Tips on Enforcing and Defending Patents program is September 28, 2006.

top of page

Old Presidential-Signed Patents on Display
Richard Beem

Richard Beem, Chair of ABA/IPL Committee 408 (Interests of Individuals and Small Businesses), announces that he has acquired the Arthur Seidel Collection of Presidential-Signed Patents, and that the collection is on display and available for viewing by appointment in the offices of Beem Patent Law Firm in Chicago. The collection comprises 16 original patents from the early 1800s, signed by the nation’s first presidents (or in two instances by British monarchs), plus a working patent model and original letters signed by famous inventors. Contact Rich at Richard@beemlaw.com