Chair's Bulletin
VOL. 6 NO. 7 MARCH 2002
Service to Members Rate High
Section Survey Answers Question: Who Are We?
Charles P. Baker
Section Chair, 2001-2002
To better serve our members, the Section recently hired Thompson Opinion Research to find out more about who we are and what we want. The most striking thing is our diversity. Two-thirds of those surveyed focus primarily on non-litigation matters. 40% work for general practice firms, 30% for IP specialty firms, and 20% for corporations, with the balance mainly in government or solo practice. 30% of us spend most of our time on patent matters, but 45% spend no time on patent matters. 65% of us spend some of our time on trademarks, and 60% spend some of our time on copyrights. Combining the survey with other data that our Section Director Betsi Roach has gleaned from ABA statistics, most of our members are between 30 and 45 years old, and about 3,500 of us are active on committees, which two-thirds find to be "rewarding." The committees most participated in are the those on Federal Trial Practice and Procedure, Copyrights and the Internet, Biotechnology, Trade Secrets, Patent Legislation, and PTO Affairs.More of our members are from California (3,400) than any other state, but there is strong representation across the country: New York has 1,900 members, Illinois 1,400, the District of Columbia 1,200, Texas 1,100, Virginia 1,000, Massachusetts 800, Pennsylvania 700, New Jersey and Florida 600 each, Ohio, Minnesota, Michigan, Maryland and Washington 500 each. Concerning the importance of membership in the Section, 70% of our youngest and 70% of our oldest members agree that all IP lawyers should belong to the ABA IP Law Section. Employers evidently agree on the importance of IP membership: two-thirds of the members surveyed have their dues paid by their employer. The Section rates high in service to its members, but the survey found that there is room for improvement. While 94% view the Section favorably, only a third of those view the Section "very" favorably. The services the Section provides best are its informative publications, its high-quality CLE programs, its national influence and lobbying, and its debate forum for IP issues. 85% of respondents consider IP Law Section publications "very important," and 80% consider representation of IP owners’ interests to Congress, the PTO and international organizations to be "important" or "very important".Turning to our meetings, while there is some interest in moving our principal business meeting back to the ABA Annual Meeting, most members preferred the present June meeting format, alternating between a city and a resort. The June meeting was most favored among the younger lawyers, which may indicate a desire to bring their families when school is out.
The Survey Report had the following recommendations, which we will be working on:
a. Work to provide more information, to build on the survey’s finding that the Section is valued most of all as an information resource.
b. Work to engage more members in Section committee work, particularly for younger members and those outside the patent field.
c. Work to increase meeting attendance, so that the Section’s valuable CLE, its role as a forum for debate, and its networking activities are available to more lawyers.
If you would like to become involved in one or more of these goals, or any other facet of the Section’s work, we would be delighted to hear from you. For a list of committees and chairs, please visit the Section website at www.abanet.org/intelprop/committees.html
Nominating Committee Announces Candidates
I. Fred Koenigsberg, Chair of the Section Nominating Committee reports that the following candidates have been nominated for the 2002-2001 year.Chair-Elect: Robert W. Sacoff, Chicago, IL. Mr. Sacoff currently serves as Section Vice-Chair.Vice-Chair: William L. LaFuze, Houston, TX. Mr. LaFuze currently serves as a Section Council Member.Joseph M. Potenza, Washington, DC. (Secretary) and Mark K. Dickson (Financial Officer) were both re-nominated to their respective positions.Members of the Section Council for a four-year term ending in 2005: Thomas W. Brooke, Washington, D.C., currently Chair of Division VII. Information, James A. Forstner, Arlington, VA, currently Co-Chair of Committee #902 (Annual Publications), Robert O. Lindefjeld, Pittsburgh, PA, currently Chair of Committee #805 (Spring CLE Program) and Teresa S. Rea, Alexandria, VA, currently Chair of Division IV. Related Issues.In addition to Chair I. Fred Koenigsberg, New York, NY, the Nominating Committee is comprised of Gregory J. Maier of Arlington, VA and James R. Sims III of Washington, D.C.Elections for open positions will be held at the ABA Annual Meeting in Washington, DC on Saturday morning, August 10, 2002 at the Four Seasons Hotel during the Section's Annual Business Meeting.
Additional nominations for any position may be made by petition signed by not less than 100 members of the Section, listed by their ABA ID number. The 100 names must be representative of at least three states and must indicate that the individual has agreed to the nomination. The petition must be sent to the Chair and the Secretary of the Section and must be received by these individuals not less than four months before the Opening Assembly of the Annual Meeting. The Opening Assembly will be held on Saturday, August 10, 2002.
Section Resolutions
Become ABA Policy
Jack C. Goldstein and John K. Uilkema, the Section's Delegates to the ABA House of Delegates, report that the House of Delegates approved two resolutions submitted by the Section during the ABA Midyear Meeting in Philadelphia last month.The approval of these resolutions helps ensure that the ABA remains at the forefront of critical IP issues. These resolutions demonstrate that the excellent work of the Section's committees do impact the organized bar on a national level.As reported in the February issue of the Chair's Bulletin, Resolution 111A proposed that the ABA favor, in principle, a requirement by the Internet Corporation for Assigned Names and Numbers (ICANN) that all accredited domain name registrars provide continued, free access to "WHOIS" information, consisting of basic contract information obtained from domain name registrants. The public availability of complete and accurate contact information in the Whois databases is essential to the enforcement of intellectual property rights in an Internet environment.Resolution 111B urged the ABA to adopt a policy favoring in principle the enactment of legislation to broaden the scope of the Plant Patent Act by deleting language which has denied patents to tuber-propogated plants and by deleting language that unduly limits remedies available to owners of plant patents.Approval by the ABA House of Delegates establishes these two resolutions as ABA policy, and consequently lays the basis to use these recommendations in future policymaking decisions, congressional testimony and legal opinions.
The resolutions and the accompanying reports can be found within the Section website
Julia Gillespie Joins Staff
The Section is pleased to announce the appointment of Julia Gillespie. Ms. Gillespie will devote much of her time to technological issues that will help the Section to better utilize its technology capabilities. This will include working on updating the Section website and refining its content and visual presentation. In addition she will manage the registration process for Section conferences, and the e-mail discussion group Listserv lists that the Section maintains.Ms. Gillespie earned her B.A. degree in 2000 from the University of Notre Dame, where she majored in English and Computer Applications.She comes to the ABA from The Ad Council, where she worked with Midwest Media Outreach Relations. Prior to The Ad Council, she was a consultant in the Technology Risk Consulting Division at Arthur Andersen in Chicago.
In addition to her academic training, she was on the staff of The Observer, the University of Notre Dame newspaper, where she served as an assistant editor and reporter. She also worked as a law clerk with the Chief Judge’s Office at the Circuit Court of Cook County for a summer internship while attending college.
Committee News
Unfair Competition: Trade Identity (Committee 205)
J. Michael Monahan, Chair
Committee 205 (Unfair Competition -- Trade Identity) has a lively variety of important items on its plate, including trade dress, trademark dilution, internet domain name issues and rights of publicity. This year, each subcommittee has focused its efforts on significant recent developments, many of which are also the focus of Committee 201 (Federal Trademark Legislation).The Trade Dress Subcommittee, chaired by Jerome Broadhurst, Memphis, TN, is shouldering the task of surveying the circuits to determine how courts are receiving two recent decisions of the U.S. Supreme Court. In Samara v. Wal-Mart, the Court held that product configuration trade dress can never be inherently distinctive, and, in TrafFix Devices Inc. v. Marketing Displays, Inc. the Supreme Court spoke to the functionality doctrine and its role in the interplay between product configuration trade dress and an expired utility patent. Both of these decisions are predicted to substantially impact trade dress litigation, an increasingly important means of trade identity. The subcommittee has diligently gathered cases in all the circuits and continues to assist Committee 201 in its study of potential legislative responses to these decisions.James Arden, New York, chairs the Trademark Dilution Subcommittee, which has focused on the necessary elements for a Federal Trademark Dilution Act claim. Specifically, that subcommittee has gathered cases and information on the split among the Federal appeals courts over whether a trademark dilution claim must include proof of actual dilution damage or likelihood of dilution. Because of the gradual nature of trademark dilution, this can be a pivotal issue. The subcommittee is coordinating its efforts with the Likelihood of Dilution subcommittee of Committee 201. Additionally, because the FTDA only protects "famous marks", the nature and extent of "fame" needed to clear this threshold issue is also a discussion item. The subcommittee has gathered cases from around the circuits regarding both issues.The relevance of internet domain name registration has steadily increased for all trademark practitioners. This year, the Internet Domain Name Registration Subcommittee, co-chaired by Jordan Weinstein, Arlington, VA and Stephen Feingold, Scarsdale, NY, is preparing a report on several developments in that area. Specifically, new top-level-domains (i.e. .biz, .info, .name, .pro, .aero, .coop, and museum); the Second WIPO Internet Domain Name Process, which elaborates on the UDRP and its treatment certain concepts such as personal names, geographic terms, intergovernmental organizations, and other important topics are both covered in the report. Additionally, the subcommittee has included coverage of internet privacy issues.Finally, the Right of Publicity is covered by the subcommittee chaired by Peter Harvey, San Francisco, and David Bernstein, New York. This subcommittee is gathering information relevant to the possibility of a Federal statute for uniform protection of an individual’s publicity right. Last year, the Section approved a resolution in favor of such protection in principle in response to the diligent efforts and great work of Committee 201. Working together with that group this year, the Right of Publicity subcommittee is reviewing the draft statutory language included in last year’s report from Committee 201, and consulting with various portions of the entertainment, advertising and marketing industries to see how best to further the idea of national protection of these rights. Additionally, the subcommittee is continuing its nationwide survey of relevant caselaw and other recent developments.
Each area covered by Committee 205 this year is faced with digesting or preparing for substantial new developments. Thankfully, the subcommittee chairs have met their respective challenges head on. If you would like to contribute to any the activities of this committee, please contact the Section by e-mail at intelprop@abanet.org.
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Markman Hearing Survey Federal Trial Practice and Procedures Committee (#601) In Markman v. Westview Instruments, Inc., the Court of Appeals for the Federal Circuit held that patent claim interpretation is a matter exclusively within the province of the trial court. That holding was affirmed by the U.S. Supreme Court. Since then, trial courts have adopted various approaches to implement that process. In 1997-98, and again in 1999, the Federal Trial Practice and Procedures Committee (#601) conducted a survey of Section members regarding the experiences they had with Markman hearings. The surveys were very successful due to the high response rate from members. Responses were reviewed and a summary reports issued. The reports were very thorough and proved to be quite helpful to our members. The results provided not only a valuable insight into how trial courts go about interpreting patent claims, but also a helpful analytical tool in assessing the relative merits of the different approaches to that process. Survey results have been cited in various literature circulated to federal judges and attorneys considering the import of Markman. As we have several more years of Markman hearing experience since that time, the committee has prepared a revised questionnaire for Section members to complete which will be used to update the previous reports. We urge all Section members to complete and return the survey as soon as possible, and no later than March 29. In order for this project to be most useful to our members we need as many responses as we can get so we will truly capture our collective experience. Thank you in advance for your assistance with this survey. Response Requested by March 29, 2002 Questionnaire General: 1. Since the Federal Circuit decided Markman, have you or your firm represented a party involved in district court proceedings for construing patent claims? 2. Please identify the proceedings at least by listing the year, parties' names, district court, and judge and identify whether you represented the patentee or alleged infringer (please make and complete additional copies of this questionnaire if you are reporting on multiple cases): 3. Was there a jury demand? Matters of Timing: 4. At what point in the litigation did the claim construction proceedings occur? Please check the following options: 5. Was the timing of the claim construction proceeding the subject of a local or courtroom rule? If yes, briefly describe the rule. If the rule was a written rule, please attach a copy of the rule. 6. Did you consider the court's timing of the claim construction proceeding to be effective and appropriate? Why? _________________________________________________________________________________________ 7. Do you believe the timing of the Markman hearing influenced your substantive litigation strategy? If yes, please explain. __________________________________________________________________ 8. Do you believe the timing of the Markman hearing influenced your discovery strategy? If yes, please explain. _________________________________________________________________________________________ 9. Do you believe the timing of the Markman hearing influenced settlement discussions? If yes, please explain. _________________________________________________________________________________________ Matters Regarding Discovery: 10. In those cases where the court held a Markman hearing prior to the close of discovery, did the court limit the discovery before the Markman hearing?
Yes
No If yes, how so? _________________________________________________________________________________________ 11. In those cases where the court held a Markman hearing prior to the close of discovery, did the court limit discovery after its claim interpretation? If yes, how so? 12. Did the parties successfully limit discovery after the claim interpretation based on relevance objections grounded in the construction? 13. Did the claim interpretation effectively cause the parties to limit the scope of discovery from the scope employed before the claim interpretation? 14. Was discovery regulated by any local or courtroom rules directed specifically to patent cases? If yes, briefly describe the rules. If the rule was a written rule, please attach a copy. ________________________________________________________________________________________ 15. Do you believe the discovery process could have been streamlined had the Markman hearing occurred earlier? If so, how [why]? 16. Do you believe that an earlier Markman hearing would have altered the burden on the Court? Yes No If so, how [why]? Matters Regarding Relevancy of Evidence: 17. What kinds of affidavit evidence (other than patent and file history) did the court admit and reject in the context of its claim interpretation process? Technical expert testimony? Admitted Rejected Legal expert testimony? Admitted Rejected Inventor testimony? Admitted Rejected Non-inventor factual testimony? Admitted Rejected Prior patents or publications? Admitted Rejected Other: _________________________________________________________________________________________ 18. What kinds of live witness testimonial evidence did the court admit and reject in the context of its claim interpretation process? Technical expert testimony? Admitted Rejected Legal expert testimony? Admitted Rejected Inventor testimony? Admitted Rejected Non-inventor factual testimony? Admitted Rejected Prior patents or publications? Admitted Rejected Other: _________________________________________________________________________________ 19. In ruling on claim construction, did the court ultimately rely on any of the above evidence? Which types of evidence did the Court rely on? Which ones did the Court reject? What was the court's rationale for doing so or not doing so? 20. Did the court refuse to rely on any of the above categories of evidence? If so, which ones? What was the rationale? Matters Regarding Nature of Hearing: 21. Did the court hold a hearing on claim construction, as opposed to ruling on the briefs? 22. Did the court permit testimony by affidavit? 23. Did the court permit live testimony? 24. Who proceeded first in the order of proof? 25. Was the hearing limited to literal claim construction issues? If no, please explain. 26. How long (number of days) did the hearing last? 27. Did the hearing outcome lead to settlement prior to trial? Discussion: 28. Did the hearing outcome have an adverse effect on settlement prospects? Matters Regarding Form of Ruling: 29. In what form did the court issue its Markman ruling (claim construction)? 30. In what way, if any, did the form of the claim construction affect subsequent proceedings (including appeal, if applicable)? Appeal: 31. Did you ask the trial court to certify its claim construction ruling for immediate appeal pursuant to 28 U.S.C. '1292? 32. Did the trial court so certify the ruling? 33. Did you apply for an appeal of the certified order with the CAFC? 34. Are you aware of any case in which the CAFC has accepted such an application? 35. Did you otherwise appeal the trial court's claim interpretation before trial (e.g., consent to summary judgment, appeal of preliminary injunction ruling)? If so, how: Yes No In part upheld, in part rejected. Briefly explain the CAFC's decision. 37. If the trial court's claim interpretation was not in whole upheld on appeal, did the CAFC remand for further proceedings? Briefly explain the CAFC's disposition of the matter. Recommendations: 38. Whether or not you or someone in your firm has been involved in Markman-type proceedings, please list any Markman-related recommendations you would like our subcommittee to consider. Date: __________________________ ________________________________ Please Fax completed questionnaire to Alan L. Briggs THANK YOU! |
Presenting the 2002
Summer IPL Conference
June 26-30, 2002Loews Philadelphia Hotel
Philadelphia, Pennsylvania
Visit the Section website for complete program details.
Online registration available April 1!
As an intellectual property lawyer you require the latest information on patents, trademarks, copyrights, E-commerce, and litigation to meet the needs of your clients. The Summer IPL Conference combines the best of continuing legal education programming with Section business, networking opportunities, social events, exciting sporting tournaments and memorable tours-- all developed to ensure that this conference is the must-attend conference of the year for all IP lawyers. And Philadelphia promises to be a popular location. With its rich historical heritage, wealth of museums, fine arts and culture, lively streets, and of course Philly cheesesteak sandwiches, it is a great backdrop for the Summer IPL Conference. Check it out:
CLE Highlights:Focus on Global IP: ? Patent Litigation ? TrademarksInternet/Business: Patent Prosecution and LicensingCurrent Ethics Issues (CLE Ethics credit available) Copyright Issues : Hot Topics in Intellectual Property Law Get Acquainted Reception: Wednesday, June 26. Get to know the IPL Section at this reception as new members, first-time attendees, and young lawyer members are invited to meet with Section Leadership Officers, Council, Division and Committee Chairs.Welcome Reception/Dinner: Thursday, June 27. All attendees, their spouses, and guests are invited to this reception at the Franklin Institute Museum of Science, where there will be a sumptuous spread of cuisine, cocktails, music, and fascinating hands-on exhibits. Section Business: The Section Business Session on Thursday afternoon, June 27, will feature committee resolutions which will be presented, analyzed and debated for the development of positions that will lay the foundation for future Section and ABA statements and testimony on intellectual property law issues. Section Luncheons: The guest luncheon speaker on Thursday, June 27 will be James E. Rogan, new Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The luncheon on Friday, June 28 will feature Hon. Marjorie O. Rendell, Circuit Judge, U.S. Circuit Court of Appeals for the 3rd Circuit. Annual Dinner/Dance: Friday, June 28th. This enjoyable and memorable evening is included in your registration fee and features a first-class dining experience followed by dancing to the sounds of big band music. Bringing Out Your Inner IP Sporting Enthusiast: On Saturday, June 29th, the Section will host its traditional golf and tennis tournaments, as well as a group bike-ride along river bike trails, which will provide a fun way to get to know your fellow IPL Section members. Tours to Appeal to the Whole Family: This year’s tours incoporate a complement of half-day and full day tours that encompass the best of Philadelphia and the surrounding area. Tours will include the Museum of Art and Rodin Museum; an historic Philadelphia walking tour; a tour of the Seaport Museum, the USS Olympia and USS New Jersey; Longwood Gardens, and Brandywine Battlefield and Museum; Winterthr Estate and the Hagley Museum; the Barnes Foundation; and an excursion to Atlantic City. The Loews Philadelphia Hotel: For hotel reservations, call the Loews directly at 215/627-1200. Mention the ABA-IPL Summer Conference to receive the conference rate of $215 single/$235 double occupancy. The room reservation cutoff date is May 24.
The Summer IPL Conference will provide something of value to everyone in attendance. Don’t miss out on this opportunity. For further information, or to register online, visit the Section website at www.abanet.org/intelprop, or call 312/988-6254.
The Summer IPL Conference
Where IP Lawyers Should Be
