Virginia LawyerVOL. 61/NO. 1 • JUNE/JULY 2012 The Official Publication of the Virginia State Bar

2012–13 VSB President W. David Harless feature articles by the Intellectual Property Section

Highlights of the June Council Meeting and the 74th Annual Meeting www.vsb.org Mark your calendar! TRUST

TROUBLE &

TIDBITSmove insideS 4/c An ALPS Ethics and Professionalism Program (WKLFV&/(&UHGLW+RXUV‡,QSDUWQHUVKLSZLWKWKH9LUJLQLD6WDWH%DU

CITY / SESSION DATE LOCATION Chesapeake AM Sept. 10 Chesapeake Convention Center

Richmond AM Sept. 11 Richmond Covention Center

Charlottesville AM Sept. 12 Charlottesville Double Tree

Manassas AM Sept. 13 Manassas Verizon Center

Salem AM Oct. 1 Salem Civic Center

NOVA AM Oct. 3 The Waterford

NOVA PM Oct. 3 The Waterford

AM Session Times: PM Session Times: 8:30 am Check-In 1:00 pm Check-In 9:00-12:15 pm Program 1:30-4:45 pm Program

,i}ˆÃÌÀ>̈œ˜Ê"«i˜ÃÊՏÞÊ£ÊUÊÜÜÜ°>«Ã˜iÌ°Vœ“ÉÛ>“Vi Virginia Lawyer The Official Publication of the Virginia State Bar June/July 2012 Volume 61/ Number 1

Features

INTELLECTUAL PROPERTY SECTION

17 Intellectual Property Section Serves Members and Encourages Interest in Intellectual Property Law by Stephen W. Palan

18 First-To-File or First-To-Invent: What’s the Difference? The U.S. Patent System Transitions by Matthew R. Osenga

20 IP Owners in Foreign Proceedings May Force the Disclosure of Information Inside the United States by Christopher P. Foley

24 Trademark Board Finds CRACKBERRY Infringing and Not a Parody of BLACKBERRY by Timothy J. Lockhart

28 Recent Developments Regarding Business Method Patents by Suzanne C. Walts and William J. Sauers

2012–13 VSB PRESIDENT 10 Lifelong Ties to Lawyer Mentors Led Harless to Career, VSB Presidency

Access to Legal Services

34 At White House, Whitfield Describes Valley’s Legal Aid Woes and Heroes

34 Richardson Receives Norfolk & Portsmouth Bar Association’s Eggleston/I’Anson Professionalism Award

35 JusticeServer Pro Bono Matchmaker Will Improve Services

Cover: Virginia State Bar President W. David Harless and his family were photographed at the Col. C. W. Woodson, Jr. Memorial Gallery at the Virginia State Police Academy in Richmond. The gallery houses portraits of sworn members of the State Police who have given their lives while protecting and serving the public. David’s father, Trooper Warren Y. Harless (portrait center), was killed in the line of duty in 1968. Pictured (left to right) are children Kenzie, Taylor, and Sarah; David and his wife Debbe; and children Jordan and Ann Warren. Noteworthy

VSB NEWS PEOPLE 38 Highlights of the June 14, 2012, Council 42 VSB Honors Attorneys Meeting 43 VSB Honors Local Bar Associations 38 Proposed Payee Notification Statute 43 Virginia Law Foundation Taps New Officers, 39 Sharon D. Nelson is President-elect of Board Members Virginia State Bar 44 In Memoriam 40 VSB Dues Can Be Paid Online 45 Local and Specialty Bar Elections 40 New MCLE Record View (TBD) 45 Lawyers Helping Lawyers Video Wins 40 Check Your MCLE Hours Online Now Public Relations Award 41 20th Anniversary Conclave Examines Education of Lawyers

Columns 14 President’s Message 47 Law Libraries 15 Executive Director’s Message 48 Consultus Electronica 46 Book Review: Writing to Win: The Legal Writer 50 Risk Management

Departments 54 CLE Calendar 59 Classified Ads 57 Professional Notices 60 VSB 74th Annual Meeting Highlights

Letters VSB.org: A Member Benefit Send your letter to the editor to: [email protected]; fax: (804) 775-0582; or mail to: VSB.org — the Virginia State Bar’s website — helps you with Virginia State Bar, Virginia Lawyer Magazine your membership obligations and your practice. 707 E. Main Street, Suite 1500 Richmond, VA 23219-2800 There you’ll find the Member Login, where you can: • download your dues statement and pay your dues, Letters published in Virginia Lawyer may be edited for length • certify Mandatory Continuing Legal Education, and clarity and are subject to guidelines available at • conduct research on Fastcase, and http://www.vsb.org/site/publications/valawyer/. • update your contact information with the bar. At VSB.org, you also can link to: • Latest News on VSB regulation, programs, and practice information; • the Professional Guidelines that contain the Rules of Have You Moved? Professional Conduct; To check or change your address of record with the Virginia • Rule Changes, proposed and approved; State Bar, go to the VSB Member Login at • the Ethics Hotline; https://member.vsb.org/vsbportal/. Go to “Membership • Meetings and Events; and Information,” where your current address of record is listed. • Search Resources for locating Virginia attorneys and To change, go to “Edit Official Address of Record,” click the checking their status with the state bar. appropriate box, then click “next.” You can type your new address, phone numbers, and email address on the form. VSB.org will keep you current and connected. Check it out. Contact the VSB Membership Department ([email protected] or (804) 775-0530) with questions.

4 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org Virginia State Bar Virginia Lawyer The Official Publication of the Virginia State Bar 2012–13 OFFICERS 17th Circuit W. David Harless, Richmond, President Raymond B. Benzinger, Arlington Sharon D. Nelson, Fairfax, President-elect Mark D. Cummings, Arlington http://www.vsb.org George Warren Shanks, Luray, Immediate Adam D. Elfenbein, Arlington Past President Gregory T. Hunter, Arlington Editor: Karen A. Gould, Executive Director and David A. Oblon, Arlington Rodney A.Coggin Chief Operating Officer 18th Circuit ([email protected]) EXECUTIVE COMMITTEE Alan S. Anderson, Alexandria W. David Harless, Richmond, President-elect Foster S. B. Friedman, Alexandria Assistant Editor: Sharon D. Nelson, Fairfax, President-elect Carolyn M. Grimes, Alexandria Gordon Hickey George Warren Shanks, Luray, Immediate 19th Circuit ([email protected]) Past President Susan M. Butler, Fairfax Brian L. Buniva, Richmond Elizabeth S. Finberg, Vienna Advertising: Doris H. Causey, Richmond Peter D. Greenspun, Fairfax Nancy Brizendine Donna Sue Baker Cox, Wise Paul W. Hammack, Jr., Fairfax ([email protected]) Tracy A. Giles, Roanoke Joyce M. Henry-Schargorodski, Fairfax Ray W. King, Norfolk Sean P. Kelly, Fairfax Graphic Design and Production: Kevin E. Martingayle, Virginia Beach Daniel B. Krisky, Fairfax Caryn B.Persinger Brian R. Charville, Arlington, YLC President Luis A. Perez, Falls Church ([email protected]) Plato George Eliades, Hopewell, CLBA Chair William B. Porter, Fairfax F. Warren Haynie, Lottsburg, SLC Chair Catherine M. Reese, Fairfax Michael W. Robinson, Tysons Corner COUNCIL William L. Schmidt, Fairfax VIRGINIA LAWYER (USPS 660-120, ISSN 0899-9473) 1st Circuit Melinda L. VanLowe, Fairfax is published ten times a year in alternating Nancy G. Parr, Chesapeake Edward L. Weiner, Fairfax formats by the Virginia State Bar, Eighth & Main 20th Circuit 2nd Circuit Building, 707 East Main Street, Suite 1500, Richmond, William Drinkwater, Virginia Beach Peter C. Burnett, Leesburg Kevin E. Martingayle, Virginia Beach T. Huntley Thorpe, III, Warrenton Virginia 23219-2800; Telephone: (804) 775-0500. Judith L. Rosenblatt, Virginia Beach 21st Circuit Subscription Rates: $18.00 per year for non-members. 3rd Circuit Joan Ziglar, Martinsville This material is presented with the understanding that George M. Willson, Portsmouth 22nd Circuit the publisher and the authors do not render any legal, 4th Circuit Mark B. Holland, Danville accounting, or other professional service. It is intended I. Lionel Hancock, III, Norfolk 23rd Circuit for use by attorneys licensed to practice law in Virginia. Ray W. King, Norfolk Mark K. Cathey, Roanoke Because of the rapidly changing nature of the law, infor- David W. Lannetti, Norfolk Tracy A. Giles, Roanoke mation contained in this publication may become out- 5th Circuit 24th Circuit dated. As a result, an attorney using this material must William H. Riddick, III, Smithfield Theodore L. Craddock, Lynchburg always research original sources of authority and update 6th Circuit 25th Circuit Peter D. Eliades, Hopewell Roscoe B. Stephenson, III, Covington information to ensure accuracy when dealing with a specific client’s legal matters. In no event will the 7th Circuit 26th Circuit Leonard C. Heath, Jr., Newport News W. Andrew Harding, Harrisonburg authors, the reviewers, or the publisher be liable for any direct, indirect, or consequential damages resulting from 8th Circuit 27th Circuit Lesa J. Yeatts, Hampton Richard L. Chidester, Pearisburg the use of this material. The views expressed herein are 9th Circuit 28th Circuit not necessarily those of the Virginia State Bar. The inclu- John Tarley, Jr., Williamsburg Roy F. Evans, Jr., Marion sion of an advertisement herein does not include an 10th Circuit 29th Circuit endorsement by the Virginia State Bar of the goods or Robert E. Hawthorne, Kenbridge C. Eugene Compton, Lebanon services of the advertiser, unless explicitly stated other- 11th Circuit 30th Circuit wise. Periodical postage paid at Richmond, Virginia, and Ray P. Lupold, III, Petersburg William E. Bradshaw, Big Stone Gap other offices. 12th Circuit 31st Circuit Graham C. Daniels, Chester Gifford R. Hampshire, Manassas 13th Circuit MEMBERS AT LARGE POSTMASTER: Paula S. Beran, Richmond D. Sue Baker Cox, Wise Michael HuYoung, Richmond Send address changes to Brian L. Buniva, Richmond Beverly P. Leatherbury, Eastville Doris Henderson Causey, Richmond Virginia State Bar Membership Department Darrel Tillar Mason, Manakin Sabot Guy C. Crowgey, Richmond Eighth & Main Building Margaret A. Nelson, Lynchburg George W. Marget, III, Richmond Todd A. Pilot, Alexandria 707 East Main Street, Suite 1500 Eric M. Page, Richmond Savalle C. Sims, Silver Spring, MD Richmond, Virginia 23219-2800 O. Randolph Rollins, Richmond Lorrie A. Sinclair, Leesburg 14th Circuit Edna R. Vincent, Fairfax Thomas A. Edmonds, Richmond Senior Lawyers Conference Chair Daniel L. Rosenthal, Richmond F. Warren Haynie, Jr., Lottsburg William J. Viverette, Richmond Young Lawyers Conference President 15th Circuit Brian R. Charville, Arlington Grayson S. Johnson, Rockville Conference of Local Bar Associations Chair Virginia State Bar Staff Directory 16th Circuit Plato George Eliades, II Bruce T. Clark, Culpeper Frequently requested bar contact Ronald R. Tweel, Charlottesville Diversity Conference Chair Peter C. Burnett, Leesburg information is available online at www.vsb.org/site/about/bar-staff. www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 5 I work to protect our clients’ interests. Now I know a bank that does the same for my firm.

Private Wealth Management Legal Specialty Group. You’re always focused on what’s best for your clients. With SunTrust’s dedicated Legal Specialty Group, you’ll get that very same treatment. Our knowledgeable ÀQDQFLDODGYLVRUVSURYLGHÀUPVOLNH\RXUVZLWKYDOXDEOHVWUDWHJLHVRQHYHU\WKLQJIURPFDVKÁRZWRH[SHQVH management to insurance. Simply put, your interests are our passion. How can we help you? Visit us at VXQWUXVWFRPODZRUFRQWDFWRQHRIRXUDGYLVRUVDQGJHWWRNQRZDOOWKHEHQHÀWVRIZRUNLQJZLWK6XQ7UXVW

John Wallace, Managing Director, SunTrust Investment Services, Inc., Hampton Roads, 757.624.5451, [email protected]

Matthew Scott, Managing Director, SunTrust Investment Services, Inc., Central Virginia, 804.782.7285, [email protected]

Bob Martin, Managing Director, SunTrust Investment Services, Inc., Western Virginia, 540.982.3252, [email protected]

Deposit products and services are offered through SunTrust Bank, Member FDIC. )NVESTMENTAND)NSURANCE0RODUCTSs!RENOT&$)#ORANYOTHER'OVERNMENT!GENCY)NSUREDs!RENOT"ANK'UARANTEEDs-AY,OSE6ALUE SunTrust Private Wealth Management Legal Specialty Group is a marketing name used by SunTrust Banks, Inc., and the following affiliates: Banking and trust products and services, including investment advisory products and services, are provided by SunTrust Bank. Securities, insurance (including annuities) and other investment products and services are offered by SunTrust Investment Services, Inc., an SEC-registered broker-dealer and a member of the FINRA and SIPC, and a licensed insurance agency. Investment advisory products and services are offered by SunTrust Investment Services, Inc., RidgeWorth Capital Management, Inc., and GenSpring Family Offices, LLC, investment advisers registered with the SEC. © 2012 SunTrust Banks, Inc. SunTrust and Live Solid. Bank Solid. are federally registered service marks of SunTrust Banks, Inc.

The PEOPLE behind the POLICY

ALPS has always prided ourselves on our accessibility. Nearly 25 years ago, we provided a stable option IRUODZ\HUV¶SURIHVVLRQDOOLDELOLW\LQVXUDQFHDWDWLPHZKHQODZ\HUVVLPSO\FRXOGQRW¿QGRQH:H FRQWLQXHWREHKHUHIRUWKHOHJDOFRPPXQLW\WRGD\:KHQ\RXFDOOZHDQVZHU2XUSROLF\SURWHFWV\RXU SUDFWLFH2XUSHRSOHSURYLGH\RXSHDFHRIPLQG /HW¶VFRQQHFW  ‡ZZZDOSVQHWFRP

West LegalEdcenter

To receive a complimentary program and learn more LEARN WHERE, about taking advantage of West LegalEdcenter

WHEN, AND Call us at: HOW YOU WANT. * 1.800.258.8538 Visit us online: West LegalEdcenter provides: WestLegalEdcenter.com/link/learnmore Everything you need to complete your 12 CLE credits Hard-to-find ethics credits More than 120 Virginia-accredited live webcasts each month Coverage That’s Windows & Mac Right For You Support

Computer Services

Technology was designed to make life easier... but it’s also the cause of frustration and anxiety.

IT is the most critical element to any business – creating a network within your company between you, your employees and clients. If one component of the system goes down an entire project can be delayed.

AFY takes away the confusion, delivering hassle-free IT to you – guaranteed.

(703) 283-0139

www.afycomputerser.com/ www.pearlinsurance.com/lpl | 800.322.2488 AFY has been serving law firms since 2001 Appeals When it comes time to appeal or to resist an appeal, call Steve Emmert at (757) 965-5021.

L. STEVEN EMMERT Rated AV www.virginia-appeals.com by Martindale Hubbell [email protected] SYKES, BOURDON, AHERN & LEVY VIRGINIA BEACH LitigationoitagitiL canacn helplehn resolveerp vlos manyname conflicts.stcilfnocy B. Butuutt it’sti ’s noton t theht idealaedie solutionoitulosl in sn somemos cases.sesace . MosaiciasoM MediationnoitaideMc canac helplehn youruoyp clientstneilcr t settlelttess complexelpmoce disputesetupsidx overevos r divorces,ecrovid ss,, estates,etatse ss,, oor familyafr lima conflicts,tcilfnocy ss,, allla whilelihwl preservingnivreserpe g their pieht privacyavirr ccyy aand mn minimizingminid sniizm strain iiartg in tn their riehn relationships.ler at .spihsnoi

elf on oitanibmocy MMy combinationoitanibmocy on of legalelf ag andnal mediationoitaidemd experiencecneirepxen canace n helpleh youruoyp clientstneilcr reachcaers resolutionoituloserh quickerekciuqn andnar withtiwd lessselh s expensesnepxe e — and erfdna— oye uu p ffoo rowr ahtk dnamedt roms e 1a n I. esitrepxer uoyf o uoyf esitrepxer . I. Inn a 1a 15-minutetunim-51 meetingniteeme overevog coffee,focr ffeeee,, I’lll’I l showohs youoyw howohu ouruow serviceesr civre canace expeditetidepxen resolutionoitulosere n ffoforor your cuoy client — andatneilr you.yn .uod

CCaallll Liza HHiilllll,, EEss . aq at ((88044)) 7788 -4 00337766 an sn udehcd llee yyoour FFRR coE talusnE .noitta

MosaicMediationLLC.comoc.CLLnoitaideMciasoM mo

You Have Done Everything Your Client Expected.

Why is he suing you? $WWRUQH\VUHSRUWLQJDPDOSUDFWLFHFODLPURXWLQHO\FRPPHQWWKDW ODZ\HUDQGWKHFOLHQW WKH\NQHZWKH\VKRXOGKDYHQHYHUDJUHHGWRUHSUHVHQWWKDWSDUWLFX $W0LQQHVRWD/DZ\HUV0XWXDOZHGRQ¶WMXVWVHOO\RXDSROLF\ ODUFOLHQW :HZRUNKDUGWRJLYH\RXWKHWRROVDQGNQRZOHGJHQHFHVVDU\WR $EUHDNGRZQLQFOLHQWUHODWLRQVDFFRXQWVIRURIDOOHJHG UHGXFH\RXUULVNRIDPDOSUDFWLFHFODLP:HLQYLWH\RXWRJLYHXVD HUURUV OHDGLQJWRPDOSUDFWLFHFODLPV$VLPSOHPHWKRGWRDYRLG FDOODWRUJRRQOLQHDWZZZPOPLQVFRPDQG¿QGRXW FOLHQWUHODWLRQHUURUVLVWRPDNHFHUWDLQ\RXUUHWDLQHUOHWWHUFOHDUO\ IRU\RXUVHOIZKDWZHPHDQZKHQZHVD\³3URWHFWLQJ\RXUSUDFWLFH LGHQWL¿HVWKHFOLHQWWKHVFRSHRI\RXUUHSUHVHQWDWLRQKRZWKH LVRXUSROLF\´ H[SHQVHVDQGIHHVZLOOEHKDQGOHGDQGZKDWLVH[SHFWHGRIERWKWKH $PHULFDQ%DU$VVRFLDWLRQ6WDQGLQJ&RPPLWWHHRQ/DZ\HUV¶3URIHVVLRQDO/LDELOLW\  3UR¿OHRI/HJDO0DOSUDFWLFH&ODLPV&KLFDJR,/+DVNLQV3DXODQG(ZLQV.DWKOHHQ0DULH

800.422.1370 5 www.mlmins.com Protecting Your Practice is Our Policy.

    2012–13 VSB President Lifelong Ties to Lawyer Mentors Led Harless to Career, VSB Presidency by Gordon Hickey

One morning when W. David Harless about 55. Apart from school, he spent for the many lawyers who came to the was thirteen years old, he and his two his days hunting and fishing and doing aid of the family. younger brothers woke to find what he what jobs he could find — mowing Today, Harless is a partner at later described as “a bunch of strangers lawns, shoveling snow, putting up hay, Christian & Barton and this fall he will in my house.” They were there because working on farms, bagging groceries. mark thirty years as a practicing lawyer. the night before, while David slept, his As the years passed after his father’s What’s his area of practice? “Pick a pile,” father had been shot. death, Harless was more and more in he said, laughing, during a recent inter- Warren Yokely Harless was a the company of lawyers. Two of those view in his downtown Richmond office. Virginia State Trooper. It was the Jonesville lawyers who came to his house The papers and files all have to do with November 1968 deer hunting season in that morning were Glen Williams, who commercial litigation matters, but it’s a Lee County, where the Harlesses lived, had been a state senator and went on to very broad field. “I’ve had the good for- and David’s father had been helping to be a United States District Court judge, tune to be involved in a lot of really arrest a mentally ill man who had occu- and Edgar Bacon, who was also a mem- interesting cases.” One he mentioned was pied an abandoned house on a property a suit involving the family of the pilot of ber of the Virginia House of Delegates. that was popular with hunters. The man, the space shuttle Challenger. His firm “I think Mr. Bacon was probably the who was armed, claimed he owned the represented the company that manufac- first one to approach me,” about becom- property and was taking rifles away from tured the O-rings many say were suspect ing a lawyer. “He and Judge Williams the passing hunters. in the explosion. separately encouraged me. I knew by age Because the roads were washed out Harless and his wife, Debbe, have 15 that was what I wanted to do.” by a storm, the police couldn’t get their five children. Sarah works for CNN Harless’s connections with the armored vehicle to the site. Trooper International in Hong Kong after receiv- lawyers and judges around him grew. Harless volunteered to approach the ing her master’s degree in broadcast His mother took a job as a legal secre- house with a spotlight in his hand so journalism at the University of Hong tary with a local attorney, Ronnie others could shoot teargas inside. The Kong; Taylor, a UVA graduate in sociol- Montgomery. Harless’s first legal job man opened fire, probably at the light, ogy, is a union organizer in Los Angeles; and Warren Harless was hit. He died in was during college as an intern with Jordan is a 2011 economics graduate of the morning. That, of course, changed Commonwealth’s Attorney Larry Lewis Hampden-Sydney College and works for David Harless’s life. and he spent time there with many local a commercial construction company in Harless grew up in Jonesville, popu- judges and lawyers. He clerked at law Richmond; and Kenzie is a May graduate lation about 800, in Lee County. “There firms while in law school and his first of Virginia Tech and is in the graduate were no traffic lights in the entire job out of law school was as a law clerk program for elementary education at county, no fast food joints, no 4-lane in Big Stone Gap with Judge Williams. In Virginia Commonwealth University. roads,” Harless said. The road system 1982, he joined Christian & Barton LLP Their youngest daughter, Ann Warren, was so bad it wasn’t possible to safely in Richmond. now 14, is a rising sophomore at Mills transport students, so there were eight While his father’s death was a Godwin High School. community high schools in the small tragedy, “there are a lot of opportuni- “They are all remarkably close,” he county. Jonesville High School had ties I had that I probably wouldn’t have said of his family. about 300 students, grades 7–12. had,” he said. “I probably wouldn’t be Harless has been “involved” in bar Harless’s graduating class numbered practicing law today,” if it hadn’t been and other activities for many, many

10 VIRGINIA LAWYER | June/July 2012 | Vol. 61 2012–13 VSB President years. He is a former president of the other statewide bar association needs a Richmond Bar Association and served specific project,” he said. “If we continue for seven years on its board before to do well and improve on what we do, assuming the presidency. He has chaired then we can turn it over to (President- the VSB Bench-Bar Relations elect) Sharon Nelson at the end of my Committee, served on the Budget and term better than we found it.” Finance Committee and was on the task And he said he intends to be careful force that established the Diversity with the bar’s finances. “I don’t have in Conference. mind any project or initiatives that will Christian & Barton has a long tradi- require the expenditure of additional tion of bar service. Harless is the fifth money. We are stewards of the dues of member of the firm to serve as VSB our members. I choose to call it their president and many partners have served money, not ours. If someone has a pro- as president of other bar organizations, posal, one of the first things that I will such as the VBA, Richmond Bar ask is how much? And second, is there a Association, and American College of demonstrable return to our members on W. David Harless Trial Lawyers. those dollars?” Christian & Barton LLP, Richmond Partner and Executive Committee member On top of all his bar-related activi- He also knows it won’t be easy. “I Education: ties, he was a director of the Virginia am not a thrill seeker, but we’ve got our University of Virginia School of Law, J.D., 1981 Public Safety Foundation from 1992 to hands full of a lot of things. We’ve got a University of Kentucky, B.B.A., 1978 2006 and its president in 1997–98. The lot of successes and activities we can Experience: foundation provides scholarship assis- improve on.” Harless acknowledged that Judicial Clerkship — Hon. Glen M. Williams, U.S. District Judge, Western District of Virginia tance and financial aid to dependents of unanticipated issues will pop up. “We (1981–1982) Publications/Presentations public safety officers killed in the line of have an energetic and extremely wise Professional Recognitions and Activities: duty. It also persuaded the General Council; we have very good relationships American College of Trial Lawyers, Fellow Lewis F. Powell, Jr. American Inn of Court, Assembly to allow dependents to attend with our colleagues at the VBA, VTLA, Barrister state schools tuition-free. Given what and other statewide bar organizations. U.S. Fourth Circuit Judicial Conference, Attorney Member happened to his father, working with I’m very confident that we will take a Virginia State Bar: President-elect; member, Bar Council and Executive Committee that organization “was right in my collaborative approach to the issues.” Faculty, Virginia State Bar Mandatory Course wheelhouse,” Harless said. Though he has been a lawyer in on Professionalism, 2000–2003 Faculty, Law School Professionalism Course, Harless sought the presidency of the Richmond for thirty years, he hasn’t for- 2006–present Virginia State Bar after serving four gotten his small-town, rural background. Virginia Law Foundation, Fellow years on Council. He was encouraged to Now, “the county has a four-lane road Other Professional Organizations: The Bar Association of the City of Richmond, consider the post by former presidents and a red light in Jonesville. The town President, 1999–2000 and leaders of the bar, including his still doesn’t have a fast food restaurant, Virginia Bar Association: Labor & Employment Law Section partners R. Harvey Chappell and Mike but the county does.” His mother still Virginia Trial Lawyers Association Smith. “I believe in the mission of the lives in his boyhood home. His brother Boyd-Graves Conference, Attorney Member bar,” Harless said. “Our profession’s abil- Ron is a businessman living in North Community Activities: Virginia Public Safety Foundation: Director ity to self-regulate under the Supreme Carolina, and his brother Gary, a Emeritus; Director, 1992-2006; President, Court is quite a privilege. After talking to recently retired Virginia State Trooper, 1997-1998; Distinguished Service Award recipient, 2001 lawyers in other states, I appreciate how lives in nearby Clintwood, Virginia. Commonwealth Public Safety Medal of Valor Review Board: member and Chair, 2003–2010 well our bar operates.” Harless and his brothers gather often at Boy Scouts of America, Heart of Virginia Council: Harless brings a simple philosophy their mother’s home. “I really enjoy Executive Board (2006–2011); former Asst. Scoutmaster, Troop 772; Adult Advisor, Troop to his new position. “I do not believe a going back and seeing the folks who 772 Philmont Expeditions, 2001, 2003 successful president of a state bar or any were so kind to us then,” he said.

Vol. 61 | June/July 2012 | VIRGINIA LAWYER 11 VIRGINIA STATE BAR MEMBERS’ INSURANCE CENTER An affiliate of Dominion Benefits and endorsed by the Virginia State Bar Disability Income Insurance The Virginia State Bar Disability Insurance Plan offers attorneys the best of both worlds – group rates and an “own occupation” definition of disability.

Call us and learn why this plan was designed by VSB members for VSB members.

Disability Income Insurance Life Insurance Health Insurance

For more information please contact Robert H. Spicknall, CEBS President [email protected] Page Gordon Client Manager [email protected] Toll Free 877-214-5239 vsbmic.com Nominations Sought for Board and Committee Vacancies

Volunteers are needed to serve the Virginia State Bar’s special boards and committees. The Nominating Committee will refer nominees to the VSB Council for consideration at its October meeting.

Vacancies in 2013 are listed below. All appointments or elections will be for the terms specified, beginning on July 1, 2013.

Council Members at Large: 3 lawyer vacancies (of which 2 incumbents are eligible for reappointment to a second term and 1 incumbent is not eligible for reappointment). May serve 2 consecutive 3-year terms.

Disciplinary Board: 7 lawyer vacancies and 1 lay member vacancy (of which 3 lawyer members are eligible for reappointment to a second 3-year term, 4 lawyer members are not eligible for reappointment, and 1 lay member is eligible for reappointment to a second 3-year term). District committee service is required. May serve 2 consecutive 3-year terms.

Mandatory Continuing Legal Education Board: 3 lawyer vacancies (of which 1 current member is eligible for reappointment to a second term and 2 members are not eligible for reappointment). May serve 2 consecutive 3-year terms.

Nominations, along with a brief résumé, should be sent by September 7, 2012, to George W. Shanks, Chair, VSB Nominating Committee, Virginia State Bar, 707 E. Main St., Suite 1500, Richmond, VA 23219, or emailed to [email protected]. President’s Message by W. David Harless

No Trace

IN JUNE, I TOOK THE OATH as small-firm conferences free of I believe that the VSB is serving the seventy-fourth president of the charge in the Northern Neck, well the mission and core purposes for Virginia State Bar. I am humbled and Farmville, and Big Stone Gap, areas which it was created by the General will endeavor to serve in a manner historically underserved with live Assembly and the Supreme Court. The commensurate with the trust you have CLEs by traditional providers. More bar has no immediate need for “new” reposed in me. I will strive also to be than 400 attendees received seven projects and I will exercise restraint in guided by the example and wisdom of hours of CLE, four in ethics. These proposing such endeavors. my immediate predecessors, George sessions concluded with town hall To be clear, I am not advocating Shanks and Irv Blank. We are indebted meetings conducted by Justice complacency. We are committed to to each for their dedication and tire- Mims, Justice Lemons, and Chief improving our current operations and less work. Justice Kinser, respectively. programs and service to the public and In preparation for this column, I • More than 1,000 active volunteers our members. However, the bar’s suc- reviewed the articles submitted by my devoted their services this past year to cess this year will be attributable to our devoted council members, talented five predecessors. I concluded that fulfillment of the VSB’s mission. By staff professionals, and committed there are few topics of immediate the conclusion of FY 2012, these vol- lawyer volunteers, not to a passing pro- importance to the bar that they have unteers will have driven more than not addressed comprehensively. I will gram or initiative. 300,000 miles and invested thousands Years ago I accompanied my two attempt to avoid repetition. of hours of their labors to the sons on two trips to Philmont Scout Recently, many folks have asked improvement of our profession. Ranch in northern New Mexico. me related questions that seem particu- • The fiscal condition of the VSB is Philmont covers 137,000 acres, approx- larly appropriate for discussion in this strong. The bar is a frugally operated, imately 214 square miles, of rugged inaugural column. What new programs mountain terrain. Over ten days young will you propose? Do you have a pro- fiscally austere agency. Indeed, with a men and their adult leaders packed ject? Will you seek changes in VSB $25 reduction of dues in 2011–12, our seventy pounds of food, water, and operations? In contemplating the need annual dues are tied for the lowest among mandatory bars in the nation. personal gear over seventy miles of for such undertakings, I inventoried undeveloped terrain. • The statewide bar organizations share the recent activities of the bar. I am The campsites and natural envi- delighted to share this sample of the a robust commitment to cooperation ronment of Philmont should now accomplishments and activities of the and collaboration in addressing issues reveal the scars of the 950,000 campers VSB during the past year: critical to the public and our profes- who have lodged there since 1939. sion. For example, during the past However, through a practice known as • Through the dedication of the year representatives of the VSB, VBA, “no trace camping,” Philmont today is Committee on Lawyer Discipline, bar VTLA, VADA, and VWAA met to as pristine as when it opened. This counsel’s staff, and our district com- address multi-faceted approaches to practice is simple: Leave the campsite mittees, the bar has hired additional protecting the public from lawyer better than you found it with no trace investigators and a new assistant bar defalcations. This task force has rec- of your earlier presence. counsel, dramatically improved ommended two measures for consid- This summarizes our simple goal. response times to and quicker investi- If through good stewardship of your eration by the Supreme Court and gations of disciplinary complaints, money and fulfillment of our Bar Council that entail a proposed and reduced pre-FY 2011 cases as of appointed purposes we leave the bar March 31, 2012, from 197 to 54, a payee notification statute, and a pro- better than we found it with no trace of remarkable 72.5 percent reduction. posal that the Clients Protection Fund our presence, we will have done our • The Conference of Local Bar and Bar Council increase the sums job well this coming year. I hope you Associations conducted solo and available and payable for such losses. will agree.

14 VIRGINIA LAWYER | June/July 2012 | Vol. 61 Executive Director’s Message by Karen A. Gould

VSB Presidents Past and Present Share in Call to Service

Sixteen presidents of the Virginia State Bar, many accompanied by spouses, attended the second Presidents FIFTEEN FORMER PRESIDENTS of Dinner at the University of Richmond Jepson Alumni Center on May 10. Left to right they were Irving M. Blank, the Virginia State Bar recently joined John A.C. Keith, David P. Bobzien, Philip B. Morris, Jean P. Dahnk, Karen A. Gould, Jon D. Huddleston, George George Warren Shanks to socialize and Warren Shanks, Michael A. Glasser, Howard W. Dobbins, Robert B. Altizer, Howard W. Martin Jr., Kathleen O’Brien, R. Edwin Burnette Jr., William T. Prince, and Waller H. Horsley. renew long friendships at the second Presidents Dinner. The event, which included many spouses, was at the Today, the Virginia General Jepson Alumni Center at the University Assembly includes a mere thirty-seven of Richmond on May 10, 2012. lawyers. That’s just one-quarter of the At the suggestion of past President total membership, and it is a huge Jon D. Huddleston, Irving M. Blank change from just a few elections ago organized the first Presidents Dinner in when as many as three-quarters of our 2011 and said he hopes the event will lawmakers were lawyers. In fact, it become an annual affair. seems a little counter-intuitive that the While there was some reminiscing, number of lawyer-legislators has the main topic of discussion was how declined when one considers that the the former presidents can continue the current and all eight living former Former VSB President Irving M. Blank talked with for- mer Governor Gerald L. Baliles, director of the Miller work of supporting and improving the governors are lawyers. Center of Public Affairs at the University of Virginia, at bar and serving the public. VSB presidents have also made the Presidents Dinner. Blank was one of sixteen presi- Former Governor Gerald L. serving the public a common theme. dents who attended the dinner on May 10, 2012, at Baliles, a lawyer who is now director of Huddleston promoted it through the which Baliles was the speaker. the Miller Center of Public Affairs at Virginia is for Good Lawyers initiative the University of Virginia, struck a that he started; Shanks did the same familiar note and stuck to the theme of when he wrote in his October 2011 In the interest of further encour- the evening when he spoke about the column that we should encourage our aging would-be lawyer-legislators, fol- importance, and relative lack, of colleagues to run for public office at all lowing is the text of Governor Baliles’s lawyer-legislators in the Virginia levels, and support them when they do. call to service. General Assembly. Remarks continued on page 16

Vol. 61 | June/July 2012 | VIRGINIA LAWYER 15 THE REMARKS OF THE HONORABLE GERALD L. BALILES

The Remarks of The Honorable Gerald L. Baliles Former Governor of Virginia Director and CEO of the Miller Center at the University of Virginia at the Virginia State Bar Past Presidents Annual Dinner University of Richmond, Richmond, Virginia May 10, 2012

Distinguished guests, ladies and sider myself a lawyer who cares about But something hard to put a finger gentlemen. our profession. on, something hard to name exactly, It’s a pleasure to be a part of this The lawyer-leaders in this room increasingly feels awry with the profes- gathering of leaders of the bar, many are good examples of what I wish to sion, with OUR profession. I suspect — if not most — I’ve known, worked focus on for a few minutes. you’ve had occasional senses of it, too. with and admired over the years. When one thinks about it, According to an old Roman say- While I now reside in Virginia has an unrivaled tradition ing, an illness, that is at first hard to Charlottesville, where I am the director of citizen lawyers — lawyers of honed diagnose, but easy to treat, later of the Miller Center at the University ability and integrity who take posi- becomes increasingly easy to diagnose of Virginia, I lived in Richmond for tions of civic and political leadership, but impossible to treat. almost forty years. I grew up in a small and apply their skills for the broad It’s hard to put a finger on it, this town in a rural area along Southern public good. Many of our schoolbook sense of something amiss, but I have it. Virginia’s Blue Ridge Parkway. So, all heroes from Virginia history (four Sometimes the sense washes over my life, as a child, as a teenager, and as hundred-plus years of it now) are me when I’m reading Virginia Lawyers an adult, I have known, observed and lawyers: Patrick Henry, Thomas Weekly and I see an article about this or worked with many wonderful lawyers Jefferson, James Monroe, John that company “automating” some of its — in small towns, suburban counties Marshall, Lewis Powell, Oliver Hill, legal needs — having a software pro- and large cities. Attorneys, in general, Harry Carrico, Leroy Hassell, Liz gram fill out patent applications or have always impressed me with their Lacy and Cynthia Kinser — to name employment contracts. Not too many dedication to the law, their representa- only several. years ago a bill was introduced in the tion of their clients and their leader- And this assembled gathering General Assembly to allow automated ship roles in their communities. tonight — without flattery — brings legal kiosks that would dump out legal During my public career and pri- together true citizen lawyers, of the first formula wills and divorce papers. And vate practice, I have attended bar meet- order, from across the commonwealth. today, I’m sure you must have seen the ings, served on legal issues committees The profession is strong in advertisements by a recognizable name and work on pro bono projects. I have Virginia, its seedbed, and is doing good in the legal profession, about the con- seen leaders of our profession up close, venience of visiting a website to find the forms to assist one with setting up wills, opening businesses, and a variety of related legal services anywhere in The profession is strong in Virginia, its seedbed, and is the country. doing good work, all the political chatter and criticism Sometimes it washes over me when I’m at a bar meeting and I talk to of lawyers notwithstanding. law students who express deep con- cerns about finding law firm employ- ment in this economic environment or if they do, they worry that actually and admired their legal skills, their ser- work, all the political chatter and criti- practicing law will be intolerable, and vice to people and communities, their cism of lawyers notwithstanding. they lament heading down the track to insights, and their understanding of A colleague and I were remarking becoming a lawyer. Or it rushes over human nature and societal challenges. recently that the future of the profes- me when I talk to lawyers in practice That’s what I want to talk about sion is promising, too — the common- who are burned out and desperate to tonight — the importance of the citi- wealth today has a more glittering change careers. zen lawyer in today’s world of change array of law schools, I think, than per- and challenge. By the way, I still con- haps any other state. Remarks continued on page 52

16 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org Intellectual Property Section Serves Members and Encourages Interest in Intellectual Property Law

by Stephen W. Palan

The Intellectual Property Section of the Virginia The Intellectual Property Section also contin- State Bar was formed in 1970 in recognition of ued its annual Intellectual Property Law Student Virginia’s significance to the field of intellectual Writing Competition, now in its eighth year. The property law. The United States Patent and brainchild of former section chair Lee N. Kump, Trademark Office (USPTO) had recently relo- the writing competition seeks to promote acade- cated from Washington, D.C., to Arlington, and mic debate and the dissemination of ideas and many intellectual property attorneys followed. scholarly writing in the field of intellectual prop- Since that time, intellectual property has become erty. Open to students at any Virginia law school increasingly significant to the overall U.S. econ- or residents of Virginia who are students at a law omy, and intellectual property issues are now fre- school outside the state, the competition awards a quently before the United States Supreme Court cash prize and publication to the top article on an and Congress. Thus, it is now particularly impor- issue concerning intellectual property law or prac- tant to keep section members up-to-date on the tice. The Honorable Richard Linn of the U.S. latest developments in intellectual property law. Court of Appeals for the Federal Circuit has gen- Our section strives to achieve many of the erously honored our section with his support for same goals set by its founders by providing low- the writing competition by serving as the final cost and high-quality continuing legal education judge each year since the contest’s inception. Judge to our members through three annual programs: Linn was a founding member and past chair of the the Fall CLE Weekend Seminar; the Spring CLE section board of governors, and the section has Ethics Seminar; and the CLE program at the appreciated his continued involvement. Virginia State Bar’s Annual Convention. Our The articles in this issue of Virginia Lawyer twenty-third annual Fall CLE Weekend Seminar reflect the diverse practices of our section mem- featured Robert Stoll, the Commissioner of bership, including patents, trademarks, trade Patents, speaking on the America Invents Act, a secrets, and Federal District Court practice. live hearing of the Trademark Trial and Appeals Board, and a panel discussion with Judge Liam O’Grady and Magistrate Judge T. Rawles Jones Jr. of the Eastern District. These presentations pro- vided our section members with invaluable insider practice tips and insights so our members could more effectively represent their clients before the USPTO and Federal District Courts. Our Spring Ethics Seminar speaker is William R. Covey, Deputy General Counsel for

Enrollment and Discipline at the USPTO. Our Stephen W. Palan is a partner in the Intellectual Annual Convention CLE features a panel discus- Property group at Crowell & Moring LLP. He also sion with the two lead attorneys that represented worked as a patent examiner at the United States Patent and Trademark Office. He is a graduate of DuPont in obtaining a $920 million judgment in Tulane University and the Columbus School of Law a trade secrets case. at the Catholic University of America.

www.vsb.org INTELLECTUAL PROPERTY SECTION | Vol. 61 | June/July 2012 | VIRGINIA LAWYER 17 First-To-File or First-To-Invent: What’s the Difference? The U.S. Patent System Transitions by Matthew R. Osenga

The America Invents Act (AIA) During an interference, the party that has the earlier patent application filing date is the “senior of 2011 makes a number of changes to party,” while the party that has a later filing date is U.S. patent law.1 One of the most signifi- the “junior party.” The senior party is presumed cant will be the transition from a first-to- to have been the first to invent the interfering subject matter. The junior party can overcome invent system to a first-to-file system that this presumption with evidence showing that its Matthew R. Osenga is a takes effect in 2013. The most significant invention pre-dates the invention of the senior registered patent attorney with Goodman Allen & implications of the transition to first-to- party. The senior party would then have the Filetti in Glen Allen. He opportunity to demonstrate an earlier invention previously practiced with file include changes in awarding priority date by presenting its own evidence. large international law between applications claiming the same To prove that it was the first to invent, a party firms in Washington, needs to show corroborated evidence that it was D.C., and Chicago, and at subject matter and in pre-dating prior art. smaller law firms in the first to “conceive” of the invention and that it Richmond. His practice worked diligently from the time of that concep- Current System: Priority Between Applications 2 includes a wide variety of In the vast majority of cases, when a patent appli- tion to “reduce the invention to practice.” technology areas encom- cation is filed, whether it is entitled to a patent is “Conception” refers to “formation in the mind of passing all aspects of the inventor of a definite and permanent idea of patent prosecution before simply a matter of examining the application to the U.S. Patent and the complete and operative invention, as it is determine whether it meets the requirements for 3 Trademark Office, patent patentability under the Patent Act. At times, how- thereafter to be applied to practice.” In other opinions, and other ever, two or more applicants may claim the same words, conception is the mental act of thinking transactional matters, as subject matter. If multiple inventors claim to have of the idea of the invention and how it would be well as patent litigation implemented. “Reduction to practice” refers to the support. He is a member invented the same invention, which, if any, is enti- of the Board of Directors act of actually making the invention work for its tled to a patent? Should the patent go to the party 4 of the Intellectual that filed its application first? Should it go to the intended purpose. Alternatively, constructive Property Section and a party that invented the invention first? Should reduction to practice occurs when an inventor files past president of the they both get a patent for the invention? a patent application for the invention that com- Greater Richmond plies with the requirements of the Patent Act.5 Intellectual Property Law Throughout its history, the United States has Association. He has been decided between two applications that claim the the author of a blog dedi- same subject matter by awarding the patent to the Current System: Pre-Dating Prior Art cated to patent law issues first inventor. The facts of which party was the Under current patent rules, once a patent applica- and strategies called tion is filed, the examiner will review the applica- Inventive Step since 2008. first to invent the subject matter was determined by a rather complex administrative procedure tion for compliance with the Patent Act and called an “interference.” An interference is basi- patent rules. This includes performing a search of cally a mini-trial where the various parties submit the prior art to determine whether the invention evidence and testimony to the U.S. Patent and meets the statute’s novelty and non-obviousness Trademark Office (PTO) to determine which requirements. Under current rules, if the search inventor was the first. The mini-trial takes place finds prior art that was published less than one before a panel of Administrative Patent Judges year before the patent application’s filing date, the (APJs) that are part of the Board of Patent applicant has the opportunity to file an affidavit Appeals and Interferences (BPAI). The decision as with evidence to demonstrate that he invented the claimed subject matter prior to the publication to the priority between the applications is made 6 by the APJs. date of the prior art. If the applicant can make

18 VIRGINIA LAWYER | June/July 2012 | Vol. 61 | INTELLECTUAL PROPERTY SECTION www.vsb.org FIRST-TO-FILE OR FIRST-TO-INVENT: WHAT’S THE DIFFERENCE? such a demonstration, he can still obtain a patent provide evidence to prove that it conceived of the despite the intervening publication. invention before the senior party’s filing date; in a The standard for pre-dating the prior art is derivation proceeding, the junior party must pro- similar to that for an interference as stated above. vide evidence that the senior party “derived” the The inventor must demonstrate conception of the invention from the junior party. In the interfer- invention prior to the prior art publication date. ence context, if such evidence exists, it will be in Because patent applications are filed on an ex the possession of the junior party. In a derivation parte basis, this is significantly less onerous than proceeding, if such evidence exists, it will often in the interference context. not be available to the junior party.10 It may therefore be more difficult for a junior party to New System: First-to-File prevail in a derivation proceeding than in an The AIA changes the first-to-invent system to a interference. first-to-file system. The new first-to-file rules will To initiate a derivation proceeding, the PTO apply to most patent applications filed after will require a petition that: states with particular- March 16, 2013 (eighteen months after enactment ity the basis for finding that a named inventor in of the AIA).7 Under the new system, applicants the earlier application derived the claimed inven- will no longer be able to rely on earlier inventive tion from an inventor named in the petitioner’s activity to pre-date prior art or to win an interfer- application; and is filed within one year of first ence over a senior party. Instead, if multiple appli- publication of the earlier application.11 The cations are filed that claim the same subject derivation proceeding will then proceed before a matter, the patent will generally be awarded to the panel of APJs who are part of a new Patent Trial first applicant to file an application that meets the and Appeal Board (PTAB). The APJs will decide patentability requirements. whether the invention was derived by the senior We will be working under both the first-to- party from the junior party in a manner similar invent and the first-to-file systems for quite some to how interferences are currently decided. time. Patents whose applications were filed before the transition date will be subject to the first-to- The Dilemma invent rules throughout their enforceable lives, up What does the change from first-to-invent to to twenty years or more from their earliest filing first-to-file mean for clients? It seems that one dates. Further, some applications that are filed implication will be a rush to the PTO to file appli- after the transition date will still be subject to the cations earlier in the invention process. first-to-invent rules. In some circumstances, an Rushing to the PTO may have several nega- applicant can file another patent application, tive effects on patent applications. First, a rushed known as a continuation application, based on patent application may not be adequate to protect the invention disclosure in an earlier application. the invention. Patent applications must include Continuation applications that include only disclosure of the invention in such detail to claims that are supported by the disclosure of an enable one of ordinary skill in the art to make application filed prior to that date will still be and use the invention.12 This typically requires governed by the current first-to-invent system.8 In that case, the applicant may still use earlier inven- tive activity to pre-date prior art and overcome a We will be working under both the first-to-invent and senior party in an interference. the first-to-file systems for quite some time. Derivation Proceedings The AIA contains a potential exception to the more than mere conception of the invention; it strict first-to-file rule. If a junior party can prove usually requires a significant understanding of that a senior party “derived” the invention from how it can be implemented. If a patent applica- the junior party, the junior party may still be enti- tion does not include sufficient disclosure to meet tled to the patent.9 Situations where such deriva- this requirement, the claims of the patent will not tion might occur include where an inventor has be valid. left the company where the inventive activity took Second, applications will likely be filed before place and took the invention with him. the invention is fully developed. As an inventor These proceedings may be somewhat akin to works to reduce an invention to practice and interference proceedings with a significant differ- implement the invention in ways that will be of ence: in an interference, the junior party must First-to-file continued on page 33

INTELLECTUAL PROPERTY SECTION | Vol. 61 | June/July 2012 | VIRGINIA LAWYER 19 IP Owners in Foreign Proceedings May Force the Disclosure of Information Inside the United States by Christopher P. Foley

In the global economy of the or testimony from an individual within the court’s jurisdiction for use in a foreign or interna- 21st century, geographic boundaries set tional tribunal. no barriers to consumer interest in inno- The Supreme Court has identified four fac- vation. The latest iPad computer attracts tors to aid courts in their decisions to grant these applications: as many customers in Osaka, Japan, as in Christopher P. Foley is a • Whether “the person from whom discovery is partner in the Reston Columbus, Ohio. Similarly, the introduc- sought is a participant in the foreign proceeding office of Finnegan, tion of Nike’s “Galaxy Foamposite” causes Henderson, Farabow, [in which case] the need for § 1782(a) aid gener- Garrett & Dunner LLP. raucous lines at midnight in Orlando and ally is not as apparent as it ordinarily is when From 2000 to 2006, he sellouts in stores around the world. One evidence is sought from a nonparticipant in the served as the firm’s man- matter arising abroad”; aging partner and chair- feature common to Apple’s iPad and man of the firm’s • The “nature of the foreign tribunal, the charac- management committee. Nike’s Galaxy sneakers is their intellectual ter of the proceedings underway abroad, and the He is chair-elect of the IP property, which is constrained by regula- receptivity of the foreign government or the Section of the Virginia court or agency abroad to U.S. federal-court State Bar. tions that vary from country to country. judicial assistance”; As innovators market their new products • Whether the request “conceals an attempt to cir- globally, the risk of litigation outside the cumvent foreign proof-gathering restrictions or other policies of a foreign country or the United United States increases. And that litiga- States”; and tion quite likely will involve intellectual • Whether the discovery requests should be scaled back to avoid undue burden. Intel Corp. v. property — patents, trademarks, and Advanced Micro Devices, Inc., 542 U.S. 241, 264- copyrights. 65 (2004).

Judicial and administrative proceedings out- While § 1782 is not commonly used in intel- side the U.S., however, commonly do not provide lectual property proceedings, some parties have parties to intellectual property disputes with dis- found that it provides a very powerful tool. covery in order to obtain relevant information FG Wilson, a subsidiary of Caterpillar Inc., about the issues in dispute. Even in countries has been a world leader in the manufacture and where some form of discovery exists, courts out- sale of diesel and gas-powered generator sets for side the U.S. most likely cannot exercise jurisdic- decades. The company has authorized dealers tion over individuals or companies residing in the operating in more than 100 countries world- U.S. In appropriate cases, 28 U.S.C. § 1782 may wide. Without FG Wilson’s consent, a U.S. provide the answer. resident fraudulently obtained trademark regis- Section 1782 authorizes a federal court to trations in Colombia for FG Wilson’s name and permit people involved in legal proceedings out- logo, and transferred the registrations to a side the U.S. to obtain discovery from people in Panamanian shell company. The plan was the U.S. for use in those foreign proceedings.1 hatched in collusion with others in Colombia Under this statute, an ex parte application may be for the purpose of negotiating a ransom for filed in federal district court seeking documents rights in the intellectual property.

20 VIRGINIA LAWYER | June/July 2012 | Vol. 61 | INTELLECTUAL PROPERTY SECTION www.vsb.org IP OWNERS IN FOREIGN PROCEEDINGS MAY FORCE THE DISCLOSURE OF INFORMATION INSIDE THE UNITED STATES

In response, FG Wilson contemplated peti- Colombia Council of State could be initiated) and tioning the Colombian Council of State to cancel the filing of that proceeding was clearly within the third-party registrations. In Colombia, peti- reasonable contemplation. In fact, dispositive rul- tions to cancel must be complete when filed. In ings were already issued by the Colombian other words, evidence sufficient to substantiate Trademark Office in granting registrations, which the registrant’s bad faith must accompany the gave rise to FG Wilson’s ability to appeal those petition. The petitioner also may not take discov- decisions to the Colombia Council of State. ery following submission of the petition. Further, The registrant in FG Wilson also maintained the Colombian Council of State cannot exercise that proceedings before the Colombian Council jurisdiction over the U.S. resident and require his of State were not judicial in nature. The Supreme appearance at a hearing or a deposition, even Court in Intel, however, specifically discussed leg- when the registrant is a Colombian citizen. As a islative history on expanding § 1782 to adminis- result, the situation was troubling since the regis- trative and quasi-judicial proceedings. The trant had information highly relevant to FG Supreme Court pointed out that Congress recog- Wilson’s anticipated claims. Indeed, the registrant nized that judicial assistance would be available had information about the Colombian kingpin whether the foreign or international proceeding who formed the shell company, about the king- or investigation is of a criminal, civil, administra- pin’s bad-faith intent in engaging in the fraudu- tive, or other nature. Id. at 258-59. Therefore, the lent filing scheme, and about the details of how Supreme Court specifically considered the issue of the kingpin directed and orchestrated the scheme. whether a proceeding of any nature needed to be FG Wilson took a chance and filed an appli- pending to invoke § 1782, not just whether a judi- cation under 28 U.S.C. § 1782(a) in federal court cial proceeding needed to be pending. in Atlanta seeking targeted discovery of the regis- Furthermore, in response to the question of trant, a Georgia resident, for use in the whether a proceeding before a foreign tribunal Colombian proceeding. In re Application of FG must be pending or at least imminent for an Wilson (Engineering) Limited for Order to Obtain applicant to successfully invoke § 1782(a), the Discovery for Use in a Proceeding Before the Supreme Court answered, unequivocally, “no.” 2 Colombian Council of State, 09-mi-0519, N.D. Ga. Following the approach in Intel, the federal (Dec. 2, 2009). The district court promptly district court in Atlanta rejected the motion for granted the ex parte application, and the third- reconsideration and granted FG Wilson’s applica- party registrant immediately sought reconsidera- tion for ex parte discovery, thus ordering the reg- tion. In particular, the registrant maintained that istrant to appear for a deposition and produce the court committed a manifest error of law in its documents. Through the deposition, FG Wilson order by holding that the Supreme Court in Intel gained conclusive evidence that the registrant reg- required there to be a dispositive ruling in an istered the FG WILSON trademark in Colombia already pending proceeding. But when viewed in in bad faith, and that evidence was available for the context of the rest of the 30-plus page Intel use in the Colombian proceeding. In addition, decision, the only reasonable interpretation of based on the registrant’s failure to produce docu- that language is that a dispositive ruling be ments, FG Wilson succeeded in a motion for con- “within reasonable contemplation.” The Intel case involved the filing of an antitrust complaint before a European agency. 542 U.S. at 254. The complaint did not mark the The Intel case involved the filing of an antitrust commencement of an action against Intel; rather, it merely began an investigation by the agency complaint before a European agency. with which the complaint was filed. Id. Accordingly, the Supreme Court was concerned with whether a dispositive ruling was within rea- tempt. The Court ordered the registrant to sonable contemplation because that would be the produce his computer and other electronic data point at which a proceeding could be initiated. to an independent forensics expert for mirror But in FG Wilson the dispositive-ruling language imaging. The data responsive to FG Wilson’s sub- did not apply because the filing of the Colombia poena was produced to FG Wilson for use in the proceeding was the relevant trigger point (i.e., Colombian proceeding. there was no dispositive motion that needed to be As a result of the ex parte discovery of the decided before FG Wilson’s action before the registrant, FG Wilson obtained sufficient infor-

INTELLECTUAL PROPERTY SECTION | Vol. 61 | June/July 2012 | VIRGINIA LAWYER 21 IP OWNERS IN FOREIGN PROCEEDINGS MAY FORCE THE DISCLOSURE OF INFORMATION INSIDE THE UNITED STATES

mation to establish a connection between the reg- sponsored-link advertisements on Google’s main istrant and a disgruntled former distributor of FG google.com website. Wilson products in Colombia, now residing in Because Engineeringsky advertised its online Florida, who continued to operate an electric- business via Google, API reasonably believed that generator-supply company in Colombia. Google had information relevant to API’s actions Additional § 1782 discovery was ordered to be against Engineeringsky in China. Thus, API produced by the disgruntled distributor and his sought limited discovery of Google under wife, a company executive. In re Application of FG § 1782(a), including documents sufficient to iden- Wilson (Engineering) Limited (Ex Parte Order – tify Engineeringsky’s sponsored-link advertise- Luis Eduardo Lopez Vargas), 10-mc-20839, M.D. ments distributed by Google, Engineeringsky’s Fla. (2010); In re Application of FG Wilson payments to Google (as charged on a cost-per- click basis), the publishers’ websites on which Engineeringsky’s sponsored-link advertisements appeared, the publishers’ names, and the amounts Section 1782 discovery is equally available in disputes of Google’s payments to the publishers. These documents were relevant to API’s copyright, involving patents and copyrights. trademark, and unfair-competition actions in China because, among other things, they would show that Engineeringsky engaged in trademark infringement by prominently using the API trade- (Engineering) Limited (Ex Parte Order - Carmen mark in its advertisements without authorization Consuelo Moreno Rojas), 10-mc-20842, M.D. Fla. from API, that Internet users were diverted to the (2010). Eventually, the intellectual property was infringing engineeringsky.com website, and that transferred to FG Wilson. API was damaged by Engineeringsky’s unlawful Section 1782 discovery is equally available in activities. Shortly after obtaining the requested disputes involving patents and copyrights. For discovery from Google, the foreign litigations set- example, American Petroleum Institute (API) tled favorably to API. obtained an ex parte order to obtain discovery Patent litigants have also become aware of requiring Google Inc., a resident of Mountain the advantages of § 1782. The U.S. District Court View, California, to provide targeted documents for Connecticut granted § 1782 discovery to Eli for use in connection with six copyright, trade- Lilly in connection with a patent-infringement mark, and/or unfair-competition actions in litigation in Canada. In re Application of Eli Lilly China. In re Ex Parte Application of American and Company and Eli Lilly, Canada, Inc. for Petroleum Institute for Order to Obtain Discovery Order to Obtain Discovery for Use in Action for Use in Foreign Proceedings, Case No.: C11- Pending Before the Federal Court of Canada, 80008 JF (PSG) (N.D. Cal. Apr. 7, 2011). In grant- No. 3:09MC296 (AWT) (Apr. 7, 2011). In the ing the subpoena, the court concluded that it had underlying Canadian litigation, Lilly alleged that the authority to issue the subpoena, and the the defendant Hospira Healthcare Corp. Supreme Court’s discretionary factors in Intel infringed Lilly’s patented process for manufactur- strongly favored issuance. ing the chemical compound gemcitabine Among other things, the complaints in API’s hydrochloride, the active pharmaceutical ingredi- cases in China alleged that a company doing busi- ent in a chemotherapy agent. Lilly sought discov- ness under the name Engineeringsky engaged in ery from Hospira’s North American sales and copyright infringement, trademark infringement, regulatory agent, ChemWorthUSA, regarding the and unfair competition by using API’s trademarks process its manufacturer used to make the gemc- without authorization and by offering unautho- itabine Hospira sold in Canada. Specifically, Lilly rized and infringing copies of API’s standards, requested batch production records and related specifications, and recommended-practices publi- certificates of analysis for the gemcitabine prod- cations on its website in violation of API’s copy- uct actually imported and offered for sale in rights. Engineeringsky conducted its business Canada by Hospira. ChemWorth strongly online and advertised its engineeringsky.com resisted discovery, but the district court granted website online via Google. Specifically, Lilly’s application for ex parte discovery, as well as Engineeringsky had one or more “sponsored-link its motion to compel. advertisements” it created using Google’s advertis- In view of the experiences reflected in the FG ing services. Google distributed Engineeringsky’s Wilson, API, and Lilly cases, a party to a judicial or

22 VIRGINIA LAWYER | June/July 2012 | Vol. 61 | INTELLECTUAL PROPERTY SECTION www.vsb.org IP OWNERS IN FOREIGN PROCEEDINGS MAY FORCE THE DISCLOSURE OF INFORMATION INSIDE THE UNITED STATES administrative proceeding that is outside the tions conducted before formal accusation. The United States and that involves intellectual prop- order may be made pursuant to a letter rogatory erty should seriously consider using § 1782 to issued, or request made, by a foreign or interna- tional tribunal or upon the application of any uncover factual information in the U.S. that interested person and may direct that the testi- would aid the foreign proceeding. Circumstances mony or statement be given, or the document or may arise when an inventor, scientist, or other thing be produced, before a person researcher relocates to the U.S., or when a trade- appointed by the court. By virtue of his appoint- mark is licensed or assigned to a company in the ment, the person appointed has the power to administer any necessary oath and take the testi- U.S.. In these situations, valuable information mony or statement. The order may prescribe the may go with the individual or be transferred to practice and procedure of the foreign country or the company, and thus fall outside the jurisdiction the international tribunal, for taking the testimony of the judicial or administrative tribunal in the or statement or producing the document or other foreign country. thing. To the extent that the order does not pre- scribe otherwise, the testimony or statement shall Section 1782 does not seek to replace foreign be taken, and the document or other thing pro- law or foreign evidentiary requirements. Instead, duced, in accordance with the Federal Rules of it enables a litigant to obtain information directly Civil Procedure.” relevant to issues in the foreign proceeding. It also 2 The Supreme Court granted review on the follow- does not try to circumvent foreign proof-gather- ing two questions. First, does § 1782(a) make dis- covery available to complainants, such as AMD, ing restrictions. Indeed, it is well recognized that who do not have the status of private “litigants” the foreign tribunal has the power to determine and are not sovereign agents? See Pet. for Cert. (i). admissibility of any information obtained under Second, must a “proceeding” before a foreign “tri- § 1782. Notwithstanding these concerns, given the bunal” be “pending” or at least “imminent” for an significant role of intellectual property in the applicant to invoke § 1782(a) successfully? Compare In re Letter of Request from Crown global economy, § 1782 provides a valuable tool Prosecution Service, 870 F.2d 686, 691, 276 U.S. when individuals or companies, who may have App. D.C. 272 (D.C. Cir. 1989) (proceeding must information relevant to a foreign dispute, reside be “within reasonable contemplation”), with In re in the United States. Ishihari Chemical Co., 251 F.3d 120, 125 (CA2 2001) (proceeding must be “imminent — very likely to occur and very soon to occur”); In re Endnotes: International Judicial Assistance (Letter Rogatory) 1 According to 28 U.S.C. § 1782(a), “the district for Federative Republic of Brazil, 936 F.2d 702, 706 court of the district in which a person resides or is (2nd Cir. 1991) (same). In answering “yes” to the found may order him to give his testimony or first question and “no” to the second, the Supreme statement or to produce a document or other Court affirmed the Ninth Circuit’s judgment. Id. thing for use in a proceeding in a foreign or inter- at 253-54 (emphasis added). national tribunal, including criminal investiga-

Join the VSB Intellectual Property Law Section

Founded in 1970, the IP Section seeks to advance the quality of intellectual property law practice in the commonwealth of Virginia. We strive to create opportunities for our members to get to know one another, to provide good CLEs to IP and non-IP attorneys, and to keep our members informed about developments in IP practice in the commonwealth.

Visit our website at http://www.vsb.org/site/sections/intellectualproperty.

INTELLECTUAL PROPERTY SECTION | Vol. 61 | June/July 2012 | VIRGINIA LAWYER 23 Trademark Board Finds CRACKBERRY Infringing and Not a Parody of BLACKBERRY by Timothy J. Lockhart

A recent decision of the CLOUDBERRY3 as used and registered for “handheld devices including smart phones and Trademark Trial and Appeal Board related goods and services as well as promotional (TTAB) of the United States Patent and and collateral goods.” 4 RIM also claimed that Trademark Office (USPTO) is one of CRACKBERRY would dilute, by blurring, the dis- tinctive quality of its allegedly famous BLACK- the relatively few decisions involving a BERRY mark. Timothy J. Lockhart heads the Intellectual successful trademark dilution claim. In The TTAB found that the USPTO records Property Group at Research in Motion Ltd. v. Defining RIM submitted in the case proved its BLACK- Willcox Savage. Lockhart BERRY and CLOUDBERRY registrations were concentrates his practice Presence Marketing Group, Inc. & Axel valid and subsisting, thereby establishing RIM’s on trademark and copy- Ltd. Co.1 the TTAB held that the pro- standing to bring the opposition proceedings. The right counseling, registra- TTAB also found that RIM had priority over the tion, and enforcement; posed uses of the trademark CRACK- software and technology defendants with respect to RIM’s goods in licensing; and intellectual BERRY would blur and therefore International Classes 9 and 16 and its services in property litigation. In impermissibly dilute the distinctiveness International Classes 38 and 41. addition, he performs In their answers the defendants argued, due-diligence reviews in of the famous BLACKBERRY mark. The connection with merger among other things, that their CRACKBERRY and acquisition transac- TTAB also held that most of the pro- mark was a parody of the BLACKBERRY mark. tions and counsels clients posed uses of CRACKBERRY would be The TTAB acknowledged that some court cases regarding noncompeti- indicate that “a successful parody seems to make tion, nondisclosure, and likely to cause confusion with BLACK- confusion less likely.” 5 For example, the TTAB other employment issues. He is a member of the BERRY. Accordingly, the TTAB sus- cited the case of Hormel Foods Corp. v. Jim Henson Board of Governors of tained the opposition of Research in Productions, Inc., in which the court held that the the Intellectual Property Henson company’s use of the term “Spa’am” on Section of the Virginia Motion (RIM) to the trademark appli- merchandise for its movie Muppet Treasure Island State Bar. cations in question. was a successful parody of, and therefore not likely to cause confusion with, Hormel’s SPAM In December 2006 and May 2007, Defining mark as used with luncheon meat.6 Presence Marketing Group filed four intent-to- The TTAB also noted that when courts deal use applications to register CRACKBERRY with with alleged trademark infringement, the First the USPTO for clothing items and for marketing, Amendment’s “protective penumbra of free computer, and communications services.2 Axel speech” applies.7 According to the TTAB, the right Ltd. Co. obtained the applications by assignment of free speech “may well support the premise that in September and December 2007, and after RIM members of the public have a right to use words filed three Notices of Opposition to the applica- in the English language to interest and amuse tions in August, September, and December 2007, other persons,” thereby making a finding of the TTAB joined Axel as a defendant. infringement less likely.8 RIM claimed that the CRACKBERRY mark In contrast, the question of an applicant’s would be likely to cause confusion with its several right to obtain a trademark registration under marks consisting of or including the word Section 2(d) of the Lanham Act9 is a “narrower” BLACKBERRY (in block or stylized lettering and one, said the TTAB, and in that context “the First with and without design elements) and its mark Amendment claim is not as strong as with issues

24 VIRGINIA LAWYER | June/July 2012 | Vol. 61 | INTELLECTUAL PROPERTY SECTION www.vsb.org TRADEMARK BOARD FINDS CRACKBERRY INFRINGING AND NOT A PARODY OF BLACKBERRY of restraint on use.”10 Thus, if the du Pont factors Turning to the issue of dilution under 21 used in the likelihood-of-confusion test for trade- Section 43(c) of the Lanham Act, the TTAB mark infringement11 point to a similarity between found that the BLACKBERRY mark is sufficiently parties’ respective goods or services and the rele- famous to meet the higher standard for fame vant channels of trade such that consumers might required in the dilution context (as opposed to believe those goods or services have a common the lower standard in the likelihood-of-confusion 22 source, “the likelihood of confusion will usually context). The TTAB also found that BLACK- trump any First Amendment concerns.”12 BERRY became famous before the filing dates of Before applying the du Pont factors, the any of the four applications at issue. TTAB considered whether BLACKBERRY is a The TTAB then considered whether, under 23 famous mark. The TTAB noted that, according to the six relevant statutory factors, CRACK- documents RIM submitted in the case, RIM has BERRY was likely to dilute, by blurring, the dis- sold billions of dollars’ worth of BLACKBERRY- tinctiveness of the BLACKBERRY mark. A major brand products to millions of consumers and factor in such an analysis is the degree of similar- spent tens of millions of dollars advertising and ity between the famous mark and the junior promoting its BLACKBERRY marks. The TTAB mark. The TTAB said that in this context the also noted that RIM’s documents show that the marks need not be “substantially identical,” only 24 media have extensively covered the BLACK- “highly similar.” Noting that in their parody BERRY brand and that BLACKBERRY consis- defense the applicants had conceded some simi- tently appears on the lists of the most famous and larity between the marks, the TTAB found “a high 25 valuable trademarks in the world. Thus, the TTAB degree of similarity.” concluded, based on the evidence RIM made of The TTAB also found that BLACKBERRY is record, BLACKBERRY is a famous mark and a distinctive and widely recognized mark and that therefore is entitled to “the wide latitude of legal RIM was engaged in substantially exclusive use of protection” that such a mark receives.13 the mark. Finally, the TTAB found that the appli- Given the marks’ obvious similarities in sight cants intended to, and did, choose a mark that the and sound and the significant fact that the public public would actually associate with the BLACK- began using the nickname “Crackberry” to refer BERRY mark. Thus, the TTAB concluded, all six to “addictive” BLACKBERRY devices before the statutory factors supported RIM’s contention that defendants applied to register CRACKBERRY,14 CRACKBERRY was likely to dilute BLACKBERRY the TTAB readily found that the du Pont factors by blurring the distinctiveness of RIM’s famous 26 point toward a likelihood of confusion. The mark. TTAB also found that the du Pont factors sup- The TTAB considered at some length ported RIM’s position that its goods and services whether the defendants were, as they claimed, and the defendants’ services are “quite closely entitled to the statutory “fair-use” defense of 27 related.”15 The defendants argued that because parody under Section 43(c)(3)(A). The TTAB their CRACKBERRY-brand goods and services observed that, as Professor J. Thomas McCarthy were intended to be offered online as opposed to has said, the “safe harbor” that the dilution in retail stores, there was “no overlap between the goods and services of the parties.”16 But the TTAB noted that “it is not necessary that the goods and The TTAB also found that BLACKBERRY is a distinctive services overlap in order to be found related in such a way that confusion is likely.”17 and widely recognized mark and that RIM was engaged The TTAB did find a “large overlap” in the parties’ channels of trade, given that “applicants’ in substantially exclusive use of the mark. prospective customers are by design substantially all prior customers of [RIM].”18 Accordingly, the TTAB found a likelihood of confusion with statute affords to parody “is obviously intended respect to the applicants’ three applications to to accommodate the interests of using famous register the CRACKBERRY mark for services.19 marks in free speech and expression,” not to 28 Because of a lack of relevant evidence of record, permit the use of parodies as trademarks. however, the TTAB did not agree with RIM that Nevertheless, as some cases have held, under its alleged common-law rights in the mark certain narrow circumstances the use of a par- BLACKBERRY supported its position regarding ody of a famous mark may be permissible in a the defendants’ application for clothing.20 trademark context.

INTELLECTUAL PROPERTY SECTION | Vol. 61 | June/July 2012 | VIRGINIA LAWYER 25 TRADEMARK BOARD FINDS CRACKBERRY INFRINGING AND NOT A PARODY OF BLACKBERRY

For trademark purposes “[a] ‘parody’ is other words, using a parody as a trademark may, defined as a simple form of entertainment con- depending on the circumstances, sometimes be veyed by juxtaposing the irreverent representation permissible even if such use does not fall within of the trademark with the idealized image created the safe harbor provided by the dilution statute. by the mark’s owner.”29 To be a parody, a mark But in Research in Motion Ltd. the TTAB held that “must convey two simultaneous — and contradic- “the alleged parody does not . . . insulate the tory — messages: that it is the original, but also [defendants] from the claim of dilution.”39 that it is not the original and is instead a par- The TTAB listed two key reasons for its rul- ody.”30 A parody of a trademark must “communi- ing. First, the public, not the defendants, had cate some articulable element of satire, ridicule, adopted “Crackberry” as a nickname for BLACK- joking or amusement”31 and therefore “relies BERRY-brand devices. Second, the defendants’ upon a difference from the original mark, pre- applied-for services were, for the most part, sumably a humorous difference, in order to pro- closely related to RIM’s goods and services. duce its desired effect.” 32 According to the TTAB, those facts served to dis- In support of that position the defendants tinguish the claimed parody of CRACKBERRY relied heavily on the Virginia case of Louis Vuitton from the actual parody of CHEWY VUITON, Malletier S.A. v. Haute Diggity Dog, LLC.33 In that where the parody mark identified an inexpensive case the court held that Haute Diggity Dog’s toy to be chewed by a dog in sharp contrast to the CHEWY VUITON mark for inexpensive pet chew original mark’s identification of an expensive toys was clearly a joking reference to the plaintiff’s handbag that must not be chewed by a dog.40 expensive LOUIS VUITTON handbags. The court Accordingly, the TTAB sustained RIM’s opposi- said that given the rhyming nature of the parties’ tion to all four CRACKBERRY applications on respective marks, the defendant’s parody of the the grounds of dilution.41 plaintiff’s trade dress as well as of its word mark, The CRACKBERRY decision shows that and other factors, consumers were not likely to be owners of arguably famous marks should con- confused into thinking that CHEWY VUITON sider alleging dilution when opposing the regis- pet toys came from the same source as LOUIS tration of identical or highly similar marks used VUITTON handbags.34 or intended for use with non-competitive goods The CRACKBERRY defendants claimed that or services. (Such owners can allege a likelihood in view of the Louis Vuitton Malletier case, the of confusion as well as dilution if the defendants’ TTAB should impose on RIM an “‘increased bur- goods or services are competitive with those of den’ to demonstrate that the distinctiveness of its the plaintiffs.) The decision also suggests the sorts famous mark is likely to be impaired” by the of facts such owners will need to make of record defendants’ parody.35 The TTAB disagreed, stating to prove that their marks are actually famous and that, per the express language of the federal dilu- the sorts of defenses the owners are likely to face tion statute,36 the “safe harbor” is available to an in making a case for dilution as well as for a likeli- entity only if its parody does not designate the hood of confusion. Finally, the decision shows source of that entity’s goods or services.37 that, given relevant statutory and case law, the TTAB is not likely to be sympathetic to applicants that claim their marks are permissible parodies of In that case the court held that Haute Diggity Dog’s famous marks. CHEWY VUITON mark for inexpensive pet chew toys Endnotes: 1 Opposition Nos. 91178668, 91179490, & 91181076 was clearly a joking reference to the plaintiff’s expensive (February 27, 2012) [precedential]. The TTAB’s decision is available online at http://ttabvue.uspto .gov/ttabvue/v?pno=91178668&pty= LOUIS VUITTON handbags. OPP&eno=65. 2 The four applications are: (1) No. 77059205, filed on December 7, 2006, for marketing services, The TTAB noted, however, that the foregoing namely providing informational web pages observation “does not end the inquiry,” and that, designed to generate sales traffic via hyperlinks to other websites; online retail store services featur- like the Fourth Circuit, the TTAB would “assess ing downloadable ring tones; online retail store the alleged parody ‘as part of the circumstances to services featuring consumer electronics and be considered for determining whether [RIM] has telecommunication products and accessories; pro- made out a claim for dilution by blurring.’”38 In viding online directory information services also

26 VIRGINIA LAWYER | June/July 2012 | Vol. 61 | INTELLECTUAL PROPERTY SECTION www.vsb.org TRADEMARK BOARD FINDS CRACKBERRY INFRINGING AND NOT A PARODY OF BLACKBERRY

featuring hyperlinks to other websites, in shirts versus CLOTHES ENCOUNTERS for items International Class 35; (2) No. 77059214, filed on of clothing)). December 7, 2006, for computer services, namely, 13 Research in Motion Ltd. at 11-12. creating an online community for registered users 14 Research in Motion Ltd. at 15-16. For example, the to participate in competitions, showcase their TTAB noted that the “Crackberry” moniker for skills, get feedback from their peers, form virtual BLACKBERRY brand devices was selected as communities, engage in social networking and “Word of the Year” in 2006, the year in which the improve their talent; computer services, namely, defendants filed their first intent-to-use applica- redirecting electronic mail to changed personal tions for the CRACKBERRY mark. Id. electronic address, in International Class 42; (3) 15 Research in Motion Ltd. at 18. No. 77059232, filed on December 7, 2006, for pro- 16 Id. viding online chat rooms and electronic bulletin 17 Id. boards for transmission of messages among users 18 Id. at 22-23 (emphasis in original). in the field of general interest; providing online 19 Id. at 23. chat rooms for transmission of messages among 20 Id. at 21, 24. computer users concerning telecommunications, 21 15 U.S.C. § 1125(c). mobile telephony, email, mobile phones, PDAs 22 Research in Motion Ltd. at 25 (citing Toro Co. v. and wireless communications; providing general ToroHead, Inc., 61 U.S.P.Q.2d 1164 (T.T.A.B. and non-consumer information online in the field 2001)). of telecommunications, mobile telephony, e-mail, 23 Those factors are: (1) the degree of similarity mobile phones, PDAs and wireless communica- between the mark or trade name and the famous tions, in International Class 38; and (4) No. mark, (2) the degree of inherent or acquired dis- 77179267, filed on May 11, 2007, for headgear, tinctiveness of the famous mark, (3) the extent to namely, hats and caps; jackets; coats; dress shirts; which the owner of the famous mark is engaging polo shirts; shirts; shirts for suits; sport shirts; in substantially exclusive use of the mark, (4) the sweat shirts; t-shirts; denims; pants; sweat pants; degree of recognition of the famous mark, (5) board shorts; boxer shorts; shorts; sweat shorts; whether the user of the mark or trade name skirt suits; skirts and dresses; bathing suits; body intended to create an association with the famous suits; dress suits; jogging suits; boxer briefs; lin- mark, and (6) any actual association between the gerie; socks; beach shoes; canvas shoes; shoes; gym mark or trade name and the famous mark. 15 shorts, in International Class 25. U.S.C. § 1125(c)(2)(B)(i)-(vi). 3 Exhibit A to each of the three Notices of 24 Id. at 28 (citing UMG Recordings Inc. v. Mattel Inc., Opposition lists 12 RIM registrations for various 100 U.S.P.Q.2d 1868 (T.T.A.B. 2011) (MOTOWN forms of BLACKBERRY marks and 1 RIM regis- versus MOTOWN METAL); Nike Inc. v. Mahar, tration for the mark CLOUDBERRY. RIM 100 U.S.P.Q.2d 1018 (T.T.A.B. 2011) (JUST DO IT obtained its first U.S. registration (No. 2402763) versus JUST JESU IT)). for a BLACKBERRY mark on November 7, 2000, 25 Id. at 29. based on a claimed date of first use in commerce 26 Id. at 34. of January 19, 1999. 27 15 U.S.C. § 1125(c)(3)(A). 4 Research in Motion Ltd. at 3 (quoting from RIM’s 28 Research in Motion Ltd. at 35 (citing J.T. pleadings). McCarthy, 4 McCarthy on Trademarks and Unfair 5 Research in Motion Ltd. at 8. Competition § 24:126 (2010)). 6 Id. (citing Hormel Foods Corp. v. Jim Henson 29 People for the Ethical Treatment of Animals v. Prods., Inc., 73 F.3d 497 (2d Cir. 1996)). The Doughney, 263 F.3d 359, 366 (4th Cir. 2001) Muppet character Spa’am—whose name is men- (internal quotation marks omitted). tioned only once in the entire movie—is the high 30 Id. (internal quotation marks and citation omit- priest of a tribe of wild boars that worships Miss ted). Piggy as “Queen Sha Ka La Ka La.” Hormel Foods 31 Louis Vuitton Malletier S.A. v. Haute Diggity Dog, Corp., 73 F.3d at 501. 507 F.3d 252, 260 (4th Cir. 2007). 7 Id. at 9. 32 Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 8 Id. Interestingly, the TTAB did not cite any cases F.2d 1482, 1486 (10th Cir. 1987) (LARDASHE to support this assertion. jeans for larger women a successful and permissi- 9 15 U.S.C. §1052(d). ble parody of JORDACHE jeans). 10 Research in Motion Ltd. at 9. 33 507 F.3d 252, 84 U.S.P.Q.2d 1969 (4th Cir. 2007). 11 See In re E.I. du Pont de Nemours & Co., 476 F.2d 34 Id. Although it followed Louis Vuitton Malletier, 1357 (C.C.PA. 1973). the TTAB noted that the case “has on occasion 12 Research in Motion Ltd. at 9 (citing Starbucks U.S. come under criticism.” Research in Motion Ltd. at Brands, LLC & Starbucks Corp. D.B.A. Starbucks fn. 33 (citing Anthony L. Fletcher, “The Product Coffee Co. v. Marshall S. Ruben, 78 U.S.P.Q.2d with the Parody Trademark: What’s Wrong with 1741 (T.T.A.B. 2006) (STARBUCKS versus LESS- CHEWY VUITON?” 100 Trademark Reporter 1091 BUCKS for coffee); Columbia Pictures Indus., Inc. at 1142-45 (September-October 2010)). v. Miller, 211 U.S.P.Q. 816 (T.T.A.B. 1981) (CLOSE ENCOUNTERS OF THE THIRD KIND for t- Parody continued on page 32

INTELLECTUAL PROPERTY SECTION | Vol. 61 | June/July 2012 | VIRGINIA LAWYER 27 Recent Developments Regarding Business Method Patents by Suzanne C. Walts and William J. Sauers

In recent years there has been con- market.6 The Supreme Court analyzed the siderable debate about whether business claimed method in view of its decisions in Benson,7 Flook,8 and Diehr,9 and concluded that methods should be patentable. Although the claimed method was an example of an there is no precise definition of business unpatentable abstract idea.10 methods, they often relate to trading, According to the Supreme Court, granting a patent in Bilski would impermissibly give the Suzanne C. Walts is a finance, economics, advertising, or counsel in the Intellectual applicant a monopoly over risk hedging in all 11 Property Group of customer service. In a recent decision, fields. Further, claims limiting the method to Crowell & Moring LLP. Bilski v. Kappos,1 a fractured Supreme commodities and energy markets were mere field- Her practice includes of-use restrictions that did not render the idea patent prosecution, Court rejected a categorical rule that patentable.12 In analyzing the patentability of the litigation, and counseling. She holds a bachelor’s business methods are unpatentable. claimed method, the Supreme Court rejected the degree in physics and a Instead, the Supreme Court emphasized machine-or-transformation test proposed by the master’s degree in electri- Federal Circuit as the sole test for patentability cal engineering, and pre- the limitation that patents should not be under Section 101, because this test may not viously worked as an granted for abstract ideas.2 In addition, always be suitable for evaluating inventions in the optical engineer for a Information Age.13 However, the machine-or- government contracting recently enacted legislation is likely to laboratory. transformation test may provide an important have a significant impact on business and useful clue for determining whether an method patents. invention is patentable.14 The Supreme Court invited the Federal Section 101 of the Patent Act states that Circuit to develop further principles clarifying the “[w]hoever invents or discovers any new and limits on the patentability of business methods.15 useful process, machine, manufacture, or compo- Since Bilski, the Federal Circuit has decided sev- sition of matter, or any new and useful improve- eral cases that provide further guidance regarding ment thereof, may obtain a patent therefor.”3 what constitutes an unpatentable abstract idea. William J. Sauers is a The term “process” is defined as a “process, art, The Federal Circuit itself has noted the substan- counsel in the Intellectual or method, and includes a new use of a known tial difficulties in defining an abstract idea, as well Property Group of Crowell & Moring LLP. process, machine, manufacture, composition of as its own internal disagreements regarding what 4 16 His practice includes matter, or material.” However, despite this constitutes patentable subject matter. intellectual property liti- broad statutory language, the Supreme Court In Cybersource, the Federal Circuit held that a gation regarding patents, and the Court of Appeals for the Federal Circuit method of detecting credit card fraud in transac- trademarks, copyrights have imposed limitations on patentable subject tions over the Internet was unpatentable.17 The and trade secrets, as well as counseling and trade- matter, with significant consequences for busi- court first affirmed that the claimed method mark prosecution. ness methods. failed to meet the machine-or-transformation test. With regard to the machine prong, the Business Method Patents Post-Bilski explicit language of the claim did not require the As the Supreme Court noted in Bilski, its prece- method to be performed by a machine, such as a dents prohibit granting patents for “laws of computer or the Internet. Further, although the nature, physical phenomena, and abstract ideas.”5 credit card transaction was performed over the The applicant in Bilski claimed a method of pro- Internet, the claim did not require the Internet to tecting against the risk of price fluctuations in a be used to obtain the data.18 In addition, the

28 VIRGINIA LAWYER | June/July 2012 | Vol. 61 | INTELLECTUAL PROPERTY SECTION www.vsb.org RECENT DEVELOPMENTS REGARDING BUSINESS METHOD PATENTS

Internet could not perform the recited fraud Applying these principles to the claimed detection steps, and was merely the source of the invention in Ultramercial, the Federal Circuit rea- data.19 With regard to the transformation prong, soned that a purpose of the invention was to merely collecting and organizing data regarding address problems with banner advertising, credit card numbers and Internet addresses was thereby improving existing technology in the insufficient to transform a particular article into a marketplace.30 Further, the claimed invention different state or thing.20 recited a practical application of the abstract idea The Federal Circuit then analyzed whether of using advertising as currency.31 Many of the the method claim was directed to an abstract recited method steps were “likely to require intri- idea. The court found that the claim was cate and complex computer programming,” and unpatentable because it was drawn to “an some steps “clearly require specific application to unpatentable mental process — a subcategory of the Internet and a cyber-market environment.”32 unpatentable abstract ideas.”21 In particular, all However, the Federal Circuit purposefully of the steps could be performed entirely in the declined to define the required level of complexity human mind, or by a human using only a pen of computer programming, and did not hold that and paper.22 Neither the claim nor the specifica- using an Internet website to practice the method tion described any specific fraud detection algo- was necessary or sufficient to render the invention 33 rithm. Citing Benson, the court stated that eligible for patent protection. The court implied “computational methods which can be performed that the invention in Ultramercial would satisfy entirely in the human mind are the types of meth- the machine prong of the machine-or-transfor- ods that embody the ‘basic tools of scientific and mation test, because a general purpose computer technological work’ that are free to all men and would become a special purpose computer upon reserved exclusively to none.”23 being programmed to perform the claimed method, even though the claims did not explicitly The Federal Circuit then held that a corre- recite a computer or processor.34 Further, failing sponding Beauregard claim was also unpatentable. to recite a specific mechanism for delivering the A Beauregard claim is directed to a computer copyrighted products to the consumer did not readable medium, such as a disk or a hard drive, render the claims too abstract.35 that contains program instructions (i.e., software) The Federal Circuit characterized the inven- for causing a computer to perform a method. tion in Ultramercial as “a particular method for Previously Beauregard claims were typically collecting revenue from the distribution of media considered to be patentable articles of manufac- products over the Internet.”36 This distinguished ture, even if the corresponding method was the invention from the mental process that was unpatentable. However, according to the Federal found to be unpatentable in Cybersource. Circuit, it was clear that the Beauregard claim in Specifically, the court concluded that the con- Cybersource was directed to the underlying trolled interaction with the consumer via the method of credit card fraud detection, instead of a specific computer readable medium.24 Further, the incidental use of a computer to perform the The court noted that although abstract ideas are unpatentable mental process did not render the claim patentable.25 Instead, the computer “must unpatentable, it may be possible to patent the application play a significant part in permitting the claimed method to be performed.”26 of an abstract idea to a “new and useful end.” In contrast to its decision in Cybersource, the Federal Circuit held in Ultramercial that a method for distributing copyrighted products Internet website in Ultramercial was “far removed over the Internet for free in exchange for view- from purely mental steps.”37 ing advertising materials was patentable.27 The The Federal Circuit has provided two addi- court noted that although abstract ideas are tional examples of business methods considered unpatentable, it may be possible to patent the to be unpatentable abstract ideas in Dealertrack38 application of an abstract idea to a “new and and Fort Properties.39 In Dealertrack the court useful end.”28 In particular, “inventions with held that a computer-aided method of processing specific applications or improvements to tech- credit applications over electronic networks was nologies in the marketplace” are likely to be eli- unpatentable. The claims were “directed to an gible for patent protection.29 abstract idea preemptive of a fundamental

INTELLECTUAL PROPERTY SECTION | Vol. 61 | June/July 2012 | VIRGINIA LAWYER 29 RECENT DEVELOPMENTS REGARDING BUSINESS METHOD PATENTS

concept or idea that would foreclose innovation computer or the Internet is required to perform in this area.”40 According to the Federal Circuit, the method, providing examples of specific algo- granting a patent for the broad claims would rithms that can perform the method, and distin- impermissibly preempt the concept of processing guishing data analysis steps from merely information through a clearinghouse. Further, the gathering or organizing the data. Complex com- recital of “computer-aided” in the preamble of the puter programming and a specific Internet appli- claims was insufficient to limit the claims to a cation seem to weigh heavily in favor of practical application of the concept. The claims patentability of a business method. Also, a paten- did not specify “how a computer aids the method, tee should avoid agreeing to claim constructions the extent to which a computer aids the method, that characterize the invention as being per- formed by a general-purpose computer.

It is clear that an application for a business method Post-Grant Review Under the America Invents Act patent must be carefully drafted to illustrate that the In September 2011, the Leahy-Smith America Invents Act (the AIA) was signed into law. The invention is not an abstract idea. AIA created a new “post-grant review” procedure that will allow third parties to challenge the valid- ity of issued patents, including business method or the significance of a computer to the perfor- patents.46 Under the new post-grant review pro- mance of the method.”41 The district court con- cedure, a petitioner may challenge a patent based strued the claims as not being limited to any on any ground of invalidity, except for best specific algorithm, and the patentee did not chal- mode.47 The petitioner must show that it is more lenge this construction. Further, using the clear- likely than not that at least one of the challenged inghouse only for car loan applications was a claims is unpatentable, or raise a novel or unset- “field of use” limitation that was insufficient to tled question of law.48 For example, the petitioner render the claims patentable.42 will be able to challenge a business method patent Similarly, in Fort Properties the Federal under Section 101 based on the grounds discussed Circuit held that an investment tool for enabling in the above cases. However, post-grant review owners to buy and sell properties without incur- will not be effective until September 16, 2012, and ring tax liability was unpatentable. The court only applies to patents with an effective date on found that the claimed method of aggregating or after March 16, 2013.49 Moreover, the peti- property, making the property subject to an tioner must institute post-grant review within agreement, and issuing ownership interests in the nine months of the issuance of the patent.50 property to multiple parties consisted “entirely of In view of these limitations, the AIA also mental processes and abstract intellectual con- includes a transitional program that allows for cepts.”43 The ties to deeds, contracts, and real post-grant review of certain types of business property were insufficient to render the invest- method patents. This transitional program may ment tool patentable. Further, like the “computer only be used by parties that have either been sued aided” recital in Dealertrack, a claim limitation or charged with infringement of “covered busi- requiring a computer to generate deedshares was ness method patents.”51 A “covered business characterized as “insignificant post-solution activ- method patent” is “a patent that claims a method ity.”44 The computer did not play a significant or corresponding apparatus for performing data role in allowing the claimed method to be per- processing or other operations used in the prac- formed. During claim construction, the patentee tice, administration, or management of a financial agreed that “using a computer” should be inter- product or service, except that the term does not preted simply as “operating an electronic device include patents for technological inventions.”52 that features a central processing unit.” 45 As with the other post-grant review procedure, the The cases discussed above provide some transitional program related to covered business guidance regarding best practices for preparing, method patents will take effect on September 16, prosecuting, and enforcing business method 2012. However, unlike the other post-grant review patents. It is clear that an application for a busi- procedure, the transitional program will apply “to ness method patent must be carefully drafted to any covered business method patent issued before, illustrate that the invention is not an abstract on, or after that effective date … .”53 Also, it is idea. Some possibilities include explaining why a unnecessary to request post-grant review for cov-

30 VIRGINIA LAWYER | June/July 2012 | Vol. 61 | INTELLECTUAL PROPERTY SECTION www.vsb.org RECENT DEVELOPMENTS REGARDING BUSINESS METHOD PATENTS ered business method patents within the nine- engineered easily, it may be advantageous to seek month window. Thus, as of September 16, 2012, patent protection at least as a defensive measure. the transitional program will enable a defendant in a patent litigation to challenge a covered busi- Conclusion ness method patent-in-suit via post-grant review. The law related to obtaining and enforcing busi- The transitional program is set to expire on ness method patents is undergoing substantial September 16, 2020.54 changes stemming from the Bilski decision and the AIA. As a result, companies seeking to protect Business Method Patent or Trade Secret? their intellectual property rights and business As described above, there are noticeable inconsis- operations face an uncertain landscape when try- tencies in the Federal Circuit decisions, and it ing to determine the proper course of action. may be difficult to predict how the U.S. Patent Entities are therefore likely to be best served by and Trademark Office55 and the federal courts closely considering the business and legal implica- will analyze a specific business method claim. tions associated with pursuing the differing types Moreover, even if a party successfully obtains a of intellectual property protection available on a business method patent, it may be subject to post- case-by-case basis. grant review by a third party, increasing the chances that the patent will be invalidated or lim- Endnotes: ited. As a result, the inventor of a business 1 130 S. Ct. 3218, 3228-29 (2010). Four of the method may want to consider keeping the busi- Justices would have held that all business methods ness method as a trade secret, especially if it are unpatentable. Id. at 3232 (Stevens, J., concur- ring). would be difficult for a competitor to reverse- 2 Id. at 3229-30. engineer the method based on publicly available 3 35 U.S.C. § 101 (2006). information. Alternatively, if the inventor only 4 35 U.S.C. § 100(b) (2006). plans to file a patent application in the United 5 Bilski, 130 S. Ct. at 3221. States, the inventor could file a non-publication 6 Id. at 3223. request, in which case the application would be 7 Gottschalk v. Benson, 409 U.S. 63 (1972). published only if it eventually issues as a patent. 8 Parker v. Flook, 437 U.S. 584 (1978). The business method could remain a trade secret 9 Diamond v. Diehr, 450 U.S. 175 (1981). if the patent is never granted. 10 Bilski, 130 S. Ct. at 3229-30. 11 Id. at 3231. Of course, a party that chooses to practice its 12 Id. invention as a trade secret must meet certain 13 Id. at 3225-26. The Federal Circuit had held that requirements. In Virginia, trade secrets are an invention is patentable only if “(1) it is tied to a defined by the Virginia Uniform Trade Secrets Act particular machine or apparatus, or (2) it trans- (VUTSA) as “information, including but not lim- forms a particular article into a different state or ited to, a formula, pattern, compilation, program, thing.” Bilski v. Kappos, 545 F.3d 943, 954-956 device, method, technique, or process, that: (Fed. Cir. 2008) (en banc). 14 Id. at 3227. • Derives independent economic value, actual or 15 Id. at 3222-23. 16 MySpace, Inc. v. Graphon Corp., 2012 U.S. App. potential, from not being generally known to, LEXIS 4375 (Fed. Cir. 2012) at *19-21. As Judge and not being readily ascertainable by proper Plager colorfully remarked: “This effort to descrip- means by, other persons who can obtain eco- tively cabin § 101 jurisprudence is reminiscent of nomic value from its disclosure or use, and the oenologists trying to describe a new wine. They have an abundance of adjectives — earthy, • Is the subject of efforts that are reasonable under fruity, grassy, nutty, tart, woody, to name just a few the circumstances to maintain its secrecy.”56 — but picking and choosing in a given circum- stance which ones apply and in what combination depends less on the assumed content of the words Thus, while the up-front costs of filing a than on the taste of the tongue pronouncing patent application and obtaining an issued patent them.” Id. at *21. may be a significant, the ongoing costs associated 17 Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d with maintaining the secrecy of the information 1366 (Fed. Cir. 2011). can be substantial and difficult to implement, 18 Id. at 1370. especially for certain types of business informa- tion. In addition, if the trade secret can be reverse

INTELLECTUAL PROPERTY SECTION | Vol. 61 | June/July 2012 | VIRGINIA LAWYER 31 RECENT DEVELOPMENTS REGARDING BUSINESS METHOD PATENTS

19 Id. According to the Federal Circuit’s precedents, 39 Fort Properties, Inc. v. American Master Lease LLC, “mere data-gathering steps cannot make an other- 2012 U.S. App. LEXIS 3900 (Fed. Cir. 2012). wise nonstatutory claim statutory.” 40 Dealertrack, 2012 U.S. App. LEXIS at *47. 20 Id. 41 Id. at *48. 21 Id. at 1371. 42 Id. at *50-51. 22 Id. at 1372. 43 Fort Properties, 2012 U.S. App. LEXIS at *12-13. 23 Id. at 1373 (emphasis in original). 44 Id. at *17. 24 Id. at 1374-75. The Federal Circuit previously held 45 Id. that “as a general matter, programming a general 46 See 35 U.S.C. §§ 321-329. purpose computer to perform an algorithm ‘cre- 47 See 35 U.S.C. § 321(b) ates a new machine, because a general purpose 48 See 35 U.S.C. §§ 324(a) and (b) computer in effect becomes a special purpose 49 See 35 U.S.C. § 329(f)(1). computer once it is programmed to perform par- 50 See 35 U.S.C. § 321(c) (“A petition for a post-grant ticular functions pursuant to instructions from review may only be filed not later than the date program software.’” Id. at 1375, citing In re that is 9 months after the date of the grant of the Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994). In patent or of the issuance of a reissue patent (as the Cybersource, the Federal Circuit clarified that case may be)”). “simply reciting the use of a computer to execute 51 Leahy–Smith America Invents Act, § 18(a)(1)(B). an algorithm that can be performed entirely in the 52 Id. at § 18(d)(1). human mind” did not fall within the Alappat rule. 53 Id. at § 18(a)(2). 25 Id. at 1375. 54 Id. at § 18(a)(3). 26 Id. 55 The U.S. Patent and Trademark Office has issued 27 Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 “Interim Guidance for Determining Subject (Fed. Cir. 2011). Matter Eligibility for Process Claims in View of 28 Id. at 1327 (citing Benson). Bilski v. Kappos” (July 27, 2010), available at 29 Id. http://www.uspto.gov/patents/law/exam/bilski_ 30 Id. at 1328. guidance_27jul2010.pdf. The Interim Guidance 31 Id. lists several dozen factors that may be weighted by 32 Id. the Examiner in assessing the patentability of a 33 Id. business method claim. 34 Id. at 1329. Specifically, “a programmed computer 56 Virginia Uniform Trade Secrets Act, VA Code contains circuitry unique to that computer. That § 59.1-336. ‘new machine’ could be claimed in terms of a complex array of hardware circuits, or more effi- ciently, in terms of the programming that facili- tates a unique function.” Id. 35 Id. 36 Id. 37 Id. at 1330 (emphasis in original). 38 Dealertrack, Inc. v. Huber, 2012 U.S. App. LEXIS 1161 (Fed. Cir. 2012).

Parody continued from page 27

35 Research in Motion Ltd. at 36. 36 15 U.S.C. § 1125(c)(3)(A) (fair use does not include a person’s use of a parody “as a designation of source for the person’s own goods or services”). 37 Research in Motion Ltd. at 36 (citing Louis Vuitton Malletier, 507 F.3d at 266-67, 84 U.S.P.Q.2d 1969, 1978; also citing Am. Express Marketing & Dev. Corp. v. Gilad Dev. Corp., 94 U.S.P.Q.2d 1294 (T.T.A.B. 2010)). 38 Id. at 36-37 (citing Louis Vuitton Malletier at 507 F.3d at 266, 84 U.S.P.Q.2d at 1978). 39 Id. at 37. 40 Id. (citing Louis Vuitton Malletier, 507 F.3d at 261, 84 U.S.P.Q.2d at 1974). 41 Id. at 38.

32 VIRGINIA LAWYER | June/July 2012 | Vol. 61 | INTELLECTUAL PROPERTY SECTION www.vsb.org FIRST-TO-FILE OR FIRST-TO-INVENT: WHAT’S THE DIFFERENCE?

First-to-file continued from page 19 entitled to the filing date of the non-provisional application. commercial significance, improvements or changes Currently, inventors often file a quick provi- are inevitably developed. Often, these improve- sional application before a public disclosure and ments or changes can alter the invention in signif- then wait a year to file a full non-provisional icant ways. An earlier filed patent application may application that includes sufficient detail to war- not even cover the invention once it reaches this rant a patent. Under the first-to-file system, if the stage of development. Currently, by keeping good first provisional is not adequately supported and records of inventive activity, inventors can take advantage of the pre-dating procedures to wait until an invention is perfected or at least well The best advice for winning the race to the Patent developed before filing a patent application. This will not be the case under a first-to-file system. Office is to be the first one to file. Further, the race will create more pressure on patent attorneys. Each day that an invention dis- enabled, an intervening filing by a competitor closure or patent application is not filed is a day may trump the first provisional. That first provi- that could result in loss of the race to the PTO or sional still has merit, but during the first year of the ability to pre-date new prior art. Attorneys development inventors should consider filing will be required to file applications more quickly additional provisional applications often as details or risk the loss of patent rights for their clients. of the invention are developed to prevent the harm from intervening applications. Applicants File Early, File Often will no longer be able to rely on inventive activity The best advice for winning the race to the Patent to pre-date prior art. Office is to be the first one to file.13 File a patent Although the March 16, 2013, deadline may application at an early stage in the inventive seem a long way off, now is the time for clients process. As the invention is developed further and and attorneys to prepare for the change to the improvements and other changes take place, addi- U.S. patent system. Inventors should seek to file tional patent applications should be filed. Each applications prior to the deadline to take advan- filing will provide protection to the inventor tage of the current rules as long as possible. Then, against filings by other parties. they must gear up for a system that will require a During the first year of an invention’s devel- race to the Patent Office after that date by prepar- opment, applicants may choose to file a provi- ing to file more patent applications with greater sional patent application.14 A provisional patent frequency. application is a patent application that may be Endnotes: filed at the PTO that can be used to establish an 1 Leahy-Smith America Invents Act of 2011, Pub. early filing date. The PTO does not examine pro- Law 112-29, 125 Stat. 284. visional applications, but merely keeps them in its 2 35 U.S.C. § 102(g) (2006). records. The application expires a year from its 3 Townsend v. Smith, 36 F.2d 292, 295 (CCPA 1930). filing date. In order to claim the benefit of the 4 Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). 5 Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998). provisional application filing date, a non-provi- 6 37 C.F.R. § 1.131. sional application and any foreign applications 7 Pub. Law 112-29, 125 Stat. 284, 293. must be filed within that twelve month period. 8 Id. The public does not get access to a provisional 9 Pub. Law 112-29, 125 Stat. 284, 289. application unless and until a non-provisional 10 http://www.intellectualpropertylawfirms.com/ resources/intellectual-property/patents/first application that claims the benefit of the provi- -file-derivation-proceedings.htm. sional application filing date is published.15 11 PTO proposed rules. In order for a later-filed non-provisional 12 35 U.S.C. § 112, ¶ 1 (2006). application to obtain the benefit of the filing date 13 Additional information on transitioning to first- to-file is available at of an earlier provisional application, the claims of http://www.goodmanallen.com/images/uploads/2 the non-provisional application must be sup- 012_01_18-FirsttoFileTips.pdf. ported by the disclosure of the provisional appli- 14 Additional information on provisional applica- cation. The applicant must include sufficient tions is available at http://inventivestep.net/ detail in the provisional application to permit one 2011/10/31/provisional-patent-applications-2/. 15 35 U.S.C. § 122(b)(2)(A)(iii) (2006); 37 C.F.R. of ordinary skill in the art to make and use the § 1.14(a)(1)(v). 16 invention. Otherwise, the application is only 16 35 U.S.C. § 119(e)(1) (2006).

www.vsb.org INTELLECTUAL PROPERTY SECTION | Vol. 61 | June/July 2012 | VIRGINIA LAWYER 33 Access to Legal Services At White House, Whitfield Describes Valley’s Legal Aid Woes and Heroes by Dawn Chase

Blue Ridge Legal Services Executive Blue Ridge came into the recession Director John E. Whitfield lauded the with only a few employees in each of its community spirit of Shenandoah Valley four offices, in Winchester, Harrisonburg, bar associations but underscored the Lexington, and Roanoke. “They’re dedi- dire condition of legal aid funding, in a cated, hardworking, smart. They’re presentation at the White House on doing great legal work,” he said. April 17. In the last eighteen months, how- Whitfield was one of six legal aid ever, the program had to lay off 26 per- directors invited to speak about the state cent of its employees. “We’re trying to of civil legal assistance in a program keep those four offices open, but they’re co-sponsored by the Legal Services only going to be skeletally staffed, with Corporation (LSC) and the White just two or three people in each office. House. President Obama made a brief We’ve lost all benefit of economy of appearance at the program. He said civil scale, and that’s really frustrating. Our referral program accepts 130 to 140 cases legal assistance to the poor is “central to costs per case have gone up, because we a year, including difficult cases and our notion of equal justice under the law.” have to keep the lights on. We still have appeals, and distributes them among 170 Blue Ridge’s funding has fallen by to maintain the office, with half as many private lawyers. Since the Harrisonburg- twenty percent in the last two years. attorneys in some of the offices. Rockingham pro bono referral program Whitfield said the program was hit by a “In the meantime our poverty popu- began in 1982, volunteer attorneys have “double whammy — collapsing IOLTA lation has increased 42 percent. We’re handled more than 2,700 cases and revenue and federal funding cuts.” focusing on the most urgent cases,… but spent 22,000 hours on those cases —a Interest on Lawyers Trust Accounts con- we’re forced to turn away two or three contribution of $3.2 million at a modest tributions declined with the housing times as many as we help.” billing rate of $150 per hour. market and interest rates, and in the fall Whitfield said that in the face of The bar association’s pro bono pro- of 2011 Congress significantly cut LSC’s these “crippling statistics,” one support gram is still flourishing thirty years later, budget, which supports civil legal assis- stands stalwart — a “strong culture of Whitfield said. Eighty-five percent of the tance to low-income Americans. Blue nurturing pro bono” by the Valley’s local HRBA’s firms and solo practitioners have Ridge is one of six Virginia programs bar, led by the Harrisonburg-Rockingham been involved in an active pro bono case that receives LSC grants. Bar Association. The HRBA’s pro bono in the last eighteen months.

Richardson Receives Norfolk & Portsmouth Bar Association’s Eggleston/I’Anson Professionalism Award

Virginia Beach attorney John Y. Richardson Jr. was recently named the recipient of the Norfolk & Portsmouth Bar Association’s Eggleston/I’Anson Professionalism Award. The award was presented at the association’s annual dinner on May 8, 2012. At the same event, Andrew R. Fox was presented the Walter E. Hoffman Award for Community Service.

34 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org Access to Legal Services JusticeServer Pro Bono Matchmaker Will Improve Services by Dawn Chase

In Central Virginia now, getting a pro But Richmond law firms and Virginia Bar Association to create a plan bono case referral is as easy as sitting at Capital One donated the cost of devel- to increase pro bono. your computer, logging onto a password- oping the system. Capital One provided By the 2010 summit, the key players controlled bulletin board, and selecting senior staff from its information tech- were assembled. They included: from a list of clients with the types of nology and other departments to do the case the website knows you prefer. initial work and train Legal Aid staff. • The co-chairs of the VBA Pro Bono At first, all you’ll see is the names of JusticeServer is designed to save Committee: Harry M. “Pete” Johnson the client and adverse party. If your con- Legal Aid staff time and, by making the III of Hunton & Williams and Scott flicts check is clean, you hit “accept.” The process more convenient, to increase the C. Oostdyk of McGuireWoods. As case file — and the client — are yours. number of pro bono lawyers. It also will these two partners of competing firms The case is brought to you by replace the legal aid program’s aging collaborate on the JusticeServer pro- JusticeServer — developed through a internal case management system. Early ject, they demonstrate what Oostdyk collaboration among the Virginia Bar in the development, the designers real- calls a “nonaggression pact” to sup- Association, Capital One, several of the ized it would be more efficient to create port Legal Aid. state’s law firms, the Greater Richmond a new system with the pro bono referral Bar Foundation, and two Legal Aid pro- service as a feature, rather than try to • Supreme Court Justice Donald W. grams. The JusticeServer project offers cobble the pro bono manager onto the Lemons, who served as the Court’s cases from the Central Virginia Legal Aid existing system. liaison for the project. Society, the Legal Aid Justice Center, and The collaboration started with the the Pro Bono Clearinghouse, which first Pro Bono Summit in April 2010, • The Greater Richmond Bar helps nonprofit groups. convened by the late Chief Justice Leroy Foundation, which develops resources In 2013, JusticeServer will be avail- R. Hassell Sr., who throughout his to fix legal access problems. The foun- able to more Legal Aid programs and administration had tried to muster dation agreed that “you can link others that provide civil legal services to Virginia lawyers to provide more pro attorney resources with need by using the poor and to volunteer lawyers from firms large and small, across Virginia. When plans for the pro bono matchmaking software were unveiled at the Virginia Chief Justice’s Pro Bono Summit on April 24, James J. Sandman, JusticeServer is designed to save Legal Aid staff time and, president of the federal Legal Services by making the process more convenient, to increase the Corporation, told the Supreme Court that JusticeServer “has the ability to number of pro bono lawyers. transform legal services in the United States.” Getting case referrals off the Internet may seem more humdrum than gee-whiz these days, but not to Legal Aid. Until now, most pro bono bono representation in civil matters. He technology,” said its president, Brian referrals required telephone calls and a often said he did not believe it was right A. Marron. Legal Aid staff member downloading for a parent to have to fight a child the file from the office case manage- custody battle or termination of The foundation is the fiscal man- ment system and faxing it to the volun- parental rights without a lawyer. ager for the project. It obtained grants teer. Legal Aid did not have the money Before the summit, in his State of of $50,000 from the Mary Morton for a system upgrade. the Judiciary address, Hassell enlisted the Parsons Foundation and $25,000 from www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 35 Access to Legal Services

the Community Foundation, and is seeking more financial support. Through its Pro Bono Clearinghouse, the foundation is testing JusticeServer, and it plans to market the system, train users, and recruit more volunteer lawyers when the pilot ends and the system attains wider usage.

• John G. Finneran Jr., general counsel and corporate secretary of Capital One 1 2 Financial Corporation. Finneran pledged Capital One’s commitment to the project at the 2010 Pro Bono Summit and brought with him senior managers, including the IT staff that built the system.

• Firms in Service-Richmond, a group of law firms that work together to sup- port pro bono.

• Steve Dickinson, executive director of the Richmond-based Central Virginia Legal Aid Society, and Alex R. Gulotta, executive director of the Charlottesville- based Legal Aid Justice Center. 3 In January 2012, the JusticeServer team announced its plans at a gathering of law firm partners. Capital One said that it was jumpstarting the project with a $25,000 grant. A partner of one law firm stood and said, “We donate $25,000.” A second lawyer from another firm matched the $25,000. The pledging continued. By the end of the week, $155,000 had been promised by eight firms, bringing JusticeServer’s seed money to $180,000. Alexandra S. Fannon, the founda- tion’s director of programs and develop- 4 ment, said, “We were thrilled that the 1. Pete Johnson of Hunton & Williams and Scott Oostdyk of McGuireWoods were co-chairs of the Virginia Bar Richmond law firms immediately Association’s Pro Bono Committee when the JusticeServer project began. 2. John G. Finneran Jr., general counsel and corporate secretary of Capital One Financial Corporation, brought a understood the potential of the project team of experts to the project. and chose to invest in its success.” 3. The Capital One team (l–r): IT Director Andy Schwarz, Michelle Deane for supply chain management, Brent Foundation President Marron said Timberlake from the legal department, Elizabeth Wood in communications, and Bill Burnet from operations. he doesn’t think the response was 4. Virginia Attorney General Ken Cuccinelli presents JusticeServer T-shirts to Alex Gulotta (left) and Steve Dickinson, at a luncheon following the April Pro Bono Summit. The shirt portrays Gulotta’s comparison of the old Legal Aid choreographed. “There’s a certain level case management system to a plastic picnic knife — not effective for getting the work done. of fundamental competition among all the firms around town, whether it’s winning cases in court or doing good works,” he said.

36 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org Access to Legal Services

“I’ve never seen anything like it lawyers who help Legal Aid will project so far, at a cost of $150 to $175 before,” said Capital One’s Finneran. increase from 200 to 700, according to per hour. Donations continue. The Salesforce the press release. Capital One’s IT director, Andy .com Foundation donated the platform Schwarz, put the human face on the pro- and the initial ten licenses for use with • “Distance lawyering”— a vision of ject in his report to the Court. He said the project, as it has done for 15,000 Oostdyk’s — could become common- he had recently received a phone call nonprofits and higher education orga- place. Urban lawyers from Richmond from a Capital One employee who asked nizations nationally. Etherios, a tech and Northern Virginia, for example, if he was “JusticeServer.” She said she consultant company, gave the founda- can help clients in areas where pro desperately needed help. She’s a young tion a 20 percent discount on the cost bono activity is low, such as Southwest woman with two children, and she said of customizing the platform to meet Virginia and Hampton Roads. her husband was beating her. requirements for case management “I usually don’t have these kinds of and confidentiality protection, and • JusticeServer will be available to other conversations. I’m in IT, so I get to hide,” transferring data from the old system providers of legal services — every Schwarz said. “All the statistics, all the to the new. Dominion Resources will Legal Aid program in the state and work you do — it is extremely impor- provide ongoing basic tech support nonprofits that help cancer patients, tant. It’s not about me. It is about the without charge. veterans, and restoration of prisoners person on the other side.” The JusticeServer team was in high who have returned to the community, spirits as they outlined their progress and for example. plans to the Supreme Court in April. • The licensing costs will be significantly • “It will bring about huge efficiencies in lower than what Legal Aid is paying our internal ability to manage clients now — at least for the immediate and cases and to place cases with pro future, said Central Virginia Legal bono lawyers,” the Legal Aid Justice Society’s Dickinson. “We have had a Center’s Gulotta said. “It’s the first small taste of the power that system that’s been designed with legal Salesforce.com is, and we realize the aid lawyers in mind.” power that JusticeServer could be.” If they add features such as searchable • In a joint press release, the team scanned documents — the price will announced goals: the waiting time for go up. pro bono case placement will be cut by 35 percent, and Central Virginia’s back- The outpouring of support has been log in uncontested divorce cases will heartening to a Legal Aid system that has fall from 250 to zero. been slammed by the recession and gov- ernment funding cutbacks in recent • JusticeServer will double the participat- years. “Capital One has been incredibly Dawn Chase is director of communica- ing Legal Aid programs’ capacity from generous with their time and treasure,” tions for Virginia’s legal aid system. She works at the Virginia Poverty Law Center, 1,500 to 3,000 matters in twelve Dickinson said. The company has put in 700 East Main St., Suite 1410, Richmond, months, and the number of volunteer probably 1,600 personnel hours into the Virginia 23219. http://www.vplc.org

Free and Low-Cost Pro Bono Training

Visit the Pro Bono page on the VSB website for free and low-cost pro bono training and volunteer opportunities: http://www.vsb.org/site/pro_bono/resources-for-attorneys

www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 37 Noteworthy > VSB NEWS Highlights of the June 14, 2012, Council Meeting

At its meeting on June 14, 2012, in tlement proceeds of $5,000 or more to domestic relations. Jones spent six years Virginia Beach, the Virginia State Bar claimants’ attorneys. The proposed statute on a partnership track at an Orange Council heard the following significant is out for notice and comment. See County, California, law firm before relo- reports and took the following actions: below. The task force also passed a mea- cating to Virginia. She has been a general sure encouraging the Clients Protection practitioner since then focusing on Budget Fund and VSB Council to increase the criminal defense, domestic relations, The council approved a $13.6 million current loss limits of $50,000 per indi- estates, and small business. budget for 2012–13. This is an increase vidual client to at least $100,000 and to of $793,000 over the 2011–12 operating increase the current 10 percent of the Resolutions budget. The budget includes a 3 percent net worth of fund limit per attorney to The council unanimously approved a bonus for VSB staff and an increase in at least 15 percent. resolution honoring Kimberly Slayton funding for Lawyers Helping Lawyers. White for her years of service to the VSB. Personnel Matters The council also approved resolutions Payee Notification Robert L. “Scott” Prince and Anastasia K. honoring George Warren Shanks for his The Payee Notification Task Force’s rec- Jones will join the Department of years of service and his law firm for its ommendations will be presented to the Professional Regulation as the newest support of Shanks during his years on VSB Council for a vote in October. The assistant bar counsel. Prince has spent the VSB Council. legislation would require insurers to twenty years as a general practitioner notify claimants when they disburse set- focusing on criminal defense and

Proposed Payee Notification Statute

On April 25, 2012, the Virginia State Bar of such payment as required by sub- and within five business days of the Payee Notification Task Force approved section B within five business days date payment is made or sent to the the proposed statute. The task force has of the date payment is made or sent attorney or other representative, and recommended unanimously that insur- to the attorney or other representa- the notice shall contain only the fol- ance companies be required to notify tive of the claimant or judgment lowing language: claimants or judgment creditors that the creditor. insurer has issued a payment of $5,000 “Pursuant to § _____ of the or more in settlement of a liability claim B. The notice required pursuant to Code of Virginia, you are or judgment to the attorney or other subsection A shall be sent to the hereby notified that a payment representative of the claimant or judg- physical or electronic address fur- was sent on (insert date on ment creditor. The proposed statute will nished by the claimant or judgment which payment sent) by (insert be presented to the VSB Council in creditor to the insurance company, name of insurer) to your attor- October. unless the claimant or judgment ney or other representative creditor has advised the insurance (insert name, address, and Notice of settlement payment. company that no such notice shall telephone number of attorney be sent. In the absence of any or other representative known A. Upon payment by any insurer of at address or advice furnished by the to insurer), in satisfaction of least $5,000 in a single check to an claimant or judgment creditor, the your claim or judgment attorney licensed in Virginia, or notice shall be sent to the last known against (insert name of other representative, in settlement physical or electronic address of the insurer, or insured, whichever or satisfaction by an insured or a claimant or judgment creditor. is appropriate). third party of any claim arising out of an insurance policy issued or The notice shall be sent by the If you have any questions, please delivered in Virginia, the insurer insurance company only after a set- contact your attorney or other shall send to the claimant or judg- tlement has been agreed to by the representative.” ment creditor on the underlying attorney or other representative of insurance or liability claim a notice the claimant or judgment creditor Payee Notification continued on page 39

38 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org VSB NEWS < Noteworthy Sharon D. Nelson is President-elect of Virginia State Bar

Sharon D. Nelson, president of Sensei Bar Association’s TECHSHOW, and Enterprises Inc., is the Virginia State serves on the Virginia State Bar govern- Bar’s new president-elect. She will serve ing Council and on its Executive for a year, then succeed W. David Harless Committee, on its Technology for the 2013–14 term as president. Committee, and as chair of the Nelson took the office June 17 Unauthorized Practice of Law during the VSB’s annual meeting in Committee. Virginia Beach. The Supreme Court of Virginia Sensei Enterprises Inc. is a digital appointed her to the statewide E-Filing forensics, information security, and legal Committee beginning in 2010. technology firm in Fairfax. She is a co-author of Locked Down: Nelson graduated from Georgetown Information Security for Lawyers University Law Center and has been in (American Bar Association, 2012), The private practice since, now concentrating Electronic Evidence and Discovery and is a co-host of the American Bar exclusively in electronic evidence law. Handbook: Forms, Checklists and Association podcast series called “The She is a past president of the Fairfax Guidelines (American Bar Association, Digital Edge: Lawyers and Technology” Bar Association, a director of the Fairfax 2006) and Information Security for and the Legal Talk Network podcast Law Foundation, and serves as a mem- Lawyers and Law Firms (American Bar “Digital Detectives.” ber of ARMA’s E-Discovery Advisory Association, 2006), as well as the 2008, She is a frequent author and speaker Group. She is a former chair of the 2009, 2010, 2011and 2012 Solo and Small on legal technology, information tech- American Bar Association’s Law Practice Firm Legal Technology Guides (American nology, and electronic evidence. She is Management Publishing Board and Bar Association, 2008–2012). She is also also a court appointed special advocate chair of the Law Practice Management a co-author of How Good Lawyers for abused and neglected children. Education Board. Survive Bad Times (ABA, 2009). Nelson is married to John W. Simek, She is also a graduate of Leadership Nelson is the author of the noted elec- vice-president of Sensei Enterprises. Fairfax, is a past chair of the American tronic evidence blog, Ride the Lightning

Payee Notification continued from page 38 Virginia, no insurer shall otherwise The VSB E-News C. Nothing in subsection A or B shall communicate with a claimant or (i) create any cause of action for judgment creditor known to be rep- Have you been receiving the monetary damages for any person resented by an attorney licensed in Virginia State Bar E-News? The against an insurer based upon a fail- Virginia, or other representative, E-News is a brief monthly sum- ure to provide notice as required by regarding settlement of a claim or mary of deadlines, programs, rule this section or the provision of a satisfaction of a judgment, without defective notice, (ii) establish a the written consent of such attorney changes, and news about your defense for any person to any cause or other representative. regulatory bar. The E-News is of action based on a failure to pro- emailed to all VSB members. If vide notice as required by this sec- Deadline for comment: September 30, your Virginia State Bar E-News is tion or the provision of a defective 2012 being blocked by your spam filter, notice, or (iii) invalidate or in any contact your email administrator way affect the settlement or satisfac- Comments should be submitted in writ- tion for which the payment was ing to Karen A. Gould, Executive and ask to have the VSB.org made by the insurer. Director, Virginia State Bar, 707 E. Main domain added to your permis- Street, Suite 1500, Richmond, VA 23219, sions list. D. Except as provided and authorized no later than the end of the business day by this section of the Code of on the day of the deadline. www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 39 Noteworthy > VSB NEWS VSB Dues Can Be Paid Online

Lawyers can now renew their Virginia As with the paper statements, members membership renewal, insurance certifi- State Bar memberships and pay their who choose “Online Membership cation, and dues payment are processed dues online. Renewal” certify whether they are cov- immediately, and a receipt is issued. Online Membership Renewal is ered by a professional liability insurance Access to the Online Membership available to members in good standing policy, select what voluntary sections Renewal option is available until early with active, active/Virginia corporate they wish to join, and pay their manda- October, when attorneys are administra- counsel, and associate memberships. tory annual dues (including the manda- tively suspended for membership non- Members also still have the option of tory $25 Clients’ Protection Fund fee), compliance. renewing by postal mail. Dues state- plus any section dues, by credit card. Online Membership Renewal is the ments were mailed June 15. The site accepts MasterCard and first of several planned improvements to The online service accepts individ- Visa, which can be applied to dues- give members more flexibility and con- ual attorney renewals only. related payments only. These include late venience through the VSB website. Access is provided through the fees that accrue after the membership secure “Member Login” area of VSB.org. compliance deadline of July 31. The

NOTICE: Check Your MCLE Hours Online Now

The Mandatory Continuing Legal Education compliance deadline is October 31, 2012. Go to https://member.vsb.org/vsbportal/ to review your MCLE record. An Interim Report and infor- mation on new MCLE require- ments will be mailed to all active “Forever Tree” Dedicated members in July. Of the 12.0 CLE hours required each year, 2.0 must John H. Tate Jr., past chair of the Senior Lawyer’s Conference of the Virginia be in ethics and 4.0 must be from State Bar; Cynthia D. Kinser, Chief Justice of the Supreme Court of Virginia; and Robert L. Calhoun, chair of the Senior Lawyer’s Conference were among live, interactive programs. If you those who attended the dedication of a “Forever Tree” memorial to former have any questions, please contact Chief Justice Leroy Rountree Hassell Sr. at the State Capitol on April 24. the MCLE Department at (804) 775-0577 or [email protected].

40 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org VSB NEWS < Noteworthy 20th Anniversary Conclave Examines Education of Lawyers by Gordon Hickey

How do we make better lawyers without increasing the already excessive cost of a legal education? That question was woven through the 20th Anniversary Conclave on the Education of Lawyers in Virginia held in Charlottesville on April 22 and 23. The conclave brought together more than seventy of the best legal minds in Virginia, including lawyers from across the state, educators from all eight law schools, and judges at every level of the bench including the seven justices of the Supreme Court of Virginia. Program Chair W. Taylor Reveley III, president of the College of William and Mary, opened the conclave by not- William R. Rakes, of Gentry Locke Rakes and Moore, addressed the 20th Anniversary Conclave on the Education of Lawyers in Virginia as he received the first William R. Rakes Leadership in Education Award. Presenting Rakes with ing that “the education of lawyers is a the award were (from left, rear) G. Michael Pace Jr., of Gentry Locke, A. Benjamin Spencer, of the Washington and long journey.” He guided the participants Lee School of Law, and W. Taylor Reveley III, president of the College of William and Mary. More than seventy lawyers, educators, and judges, including the justices of the Supreme Court of Virginia, attended the two-day event through four panel discussions: in Charlottesville.

• How are law schools addressing major changes in the practice of law and in They included providing incentives worse and must be improved; the accrediting standards for legal for a different kind of law school profes- American Bar Association requirements education? sor who specializes in teaching and is are difficult when considering changes in not required to research and publish legal education; the U.S. News and World • How should we measure preparedness scholarly work; changing the curriculum Report rankings of law school are detri- for admission to the bar? for the second and third years of law mental; and the bar exam forces law school; eliminating the third year of law schools to teach to the test. • How do we most effectively seek to school; changing the bar exam to focus All four discussions, along with the educate lawyers throughout their more on what a lawyer really needs to be lunch and dinner presentations, will be careers? a lawyer; creating mandatory mentoring covered by reporters assigned to the pan- programs at law firms and bar associa- els, and will be summarized in the • Do judges have a meaningful role in tions; and providing continuing legal October issue of Virginia Lawyer. legal education? education credits for activities aimed at educating and mentoring. Conclave participants offered exten- While the panels touched on multi- sive suggestions for dealing with the ple subjects, some common laments questions. included: legal writing is bad and getting www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 41 Noteworthy > PEOPLE VSB Honors Attorneys

The Virginia State Bar presented awards ing Turner, Alex R. Gulotta, executive VIRGINIA STATE BAR DIVERSITY to the following lawyers during its director of the center, wrote, “Abigail CONFERENCE’S CLARENCE M. annual meeting: Turner’s dedication to legal services DUNNAVILLE, JR. ACHIEVEMENT AWARD began more than thirty-five years ago Presented by the Diversity Conference TRADITION OF EXCELLENCE AWARD when she joined the Lawyers Committee Presented by the General Practice Section for Civil Rights in Washington, D.C., in Clarence M. 1975. Since then, Abigail has served Dunnaville, Jr. William L. low-income communities in five states Schmidt, William and was named Litigation Director for Beginning with the L. Schmidt & three separate organizations. . . . She is civil rights demon- Associates PC, a passionate and determined advocate strations of the Fairfax for those whom she represents and a 1950s and contin- valued and respected mentor to all her uing through a William L. colleagues.” distinguished legal career, Dunnaville Schmidt, who is has devoted his life to the cause of equal as prolific and accomplished in his com- R. Peyton Whiteley justice. He is the first recipient of this munity service as he is in his extensive of Legal Services of annual award, which is being created in law practice, has been named the 2012 Northern Virginia his honor, and is being recognized as recipient of the Tradition of Excellence setting the example of excellence the Award by the Virginia State Bar’s R. Peyton Whiteley members of the Diversity Conference General Practice Section. In nominating has been legal aspire to achieve. Schmidt, Sharon D. Nelson, Fairfax advocacy coordi- attorney and president of Sensei nator for Legal Enterprises Inc., wrote: “An honor is Services of Northern Virginia since 1988. only an honor — and Bill is the kind of In nominating Whitely, Susan Stoney, guy who would rather see food given to deputy director of the firm, wrote, the hungry than receive an award — but “Peyton regularly and tirelessly avails this is an honor that is richly deserved himself to the attorney staff at LSNV, to for a truly noble lifetime of professional- pro bono attorneys, to community ism and public service.” members and to members of the greater legal aid community statewide, provid- VIRGINIA LEGAL AID AWARD ing training and guidance to his col- (Two Winners) leagues on procedural and substantive Presented by the Special Committee on legal issues in many practice areas. He Access to Legal Service has the ability to see the big picture, and to advocate for positive change, not just Abigail Turner of for the individual, but for the multitude the Legal Aid of legal aid clients.” Justice Center

Abigail Turner has been the Legal Aid Justice Center’s Litigation Director since 2008. The center is a non-federally funded civil legal services provider for people who live in poverty. In nominat-

42 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org PEOPLE < Noteworthy VSB Honors Local Bar Associations

The following bar associations received Sustained Projects: Fredericksburg Area Bar Association awards from the Conference of Local Bar Law Day, educating as many students as Associations during the Virginia State Local Government Attorneys possible in elementary, middle and high Bar Annual Meeting. The awards recog- Association of Virginia schools about the law. nize projects that serve the bench, the The Handbook of Virginia Local bar, and the people of Virginia. Government Law, first published in 1982. Loudoun County Bar Association The CLBA makes information on Back to School with the Loudoun Bar, winning projects available to other The Prince William County Bar distributing more than 300 backpacks groups that want to consider similar Association Inc. containing school supplies to needy chil- programs. For information, contact So You’re 18 presentations in schools, dren in the county. Paulette J. Davidson at Davidson started in 1999. @vsb.org or (804) 775-0521. The Prince William County Bar Roanoke Bar Association Association Inc. AWARDS OF MERIT Santa in the Square holiday party for Books for Troubled Teens, providing For excellence in bar projects children and their families living in area books about positive role models to shelters, started in 2006. teens in the county juvenile detention First-time Awardees: center and the juvenile shelter. CERTIFICATES OF ACHIEVEMENT Virginia Women Attorneys Association, For high achievement in bar projects The Prince William County Bar Loudoun Chapter Association Inc. Empty Bowls, an international effort to Virginia Women Attorneys Association, Historic Preservation Project, celebrating fight hunger, benefitting the local food Prince William Chapter the 70th anniversary of the association. pantry for Loudoun County. Holiday Party and Gift Drive, providing gifts to more than twenty needy children Virginia Women Attorneys Association Metropolitan Richmond Women’s in the area. Beyond Networking: Defining Yourself Bar Association in Today’s Market, helping women attor- CARITAS Partnership, providing pro Virginia Women Attorneys Association, neys define themselves by learning the bono legal services, donations of furni- Prince William Chapter latest trends in today’s market in order ture and home goods, and volunteer Annual Circuit Court Judicial Law to advance their careers. labor. Clerks’ Reception, fostering acquain- tances among local practicing lawyers Roanoke Bar Association The Prince William County Bar and new law clerks. Mentor Match Program, providing new Association Inc. lawyers with the tools to enable them to Holly Acres Pro Bono Project, providing Virginia Women Attorneys Association, attain professional excellence. free legal services to residents of the Hampton Roads Chapter Holly Acres Mobile Home Park who Norfolk Social Services Holiday Foster were displaced by flooding from tropical Care Project, providing gifts to needy storm Lee. foster children.

Virginia Law Foundation Taps New Officers, Board Members

At its Annual Meeting on June 15, the Virginia Law Foundation Board of Directors elected its new slate of officers for FY 2012–13, as follows: President Manuel A. Capsalis (Capsalis Fitzgerald, PLC, Leesburg), President-Elect James V. Meath (Williams Mullen, Richmond), Vice-President John D. Epps (Hunton & Williams, Richmond), Secretary Yvonne C. McGhee (Virginia Bar Association, Richmond), and Treasurer Karen A. Gould (Virginia State Bar, Richmond) Current board member G. Michael Pace Jr. (Gentry Locke Rakes & Moore, LLP, Roanoke) and Kathy Mays Coleman (Richmond), and new mem- bers Matthew E. Cheek (Williams Mullen, Richmond), Jan Leslie Proctor (Deputy City Attorney, City of Chesapeake), and George W. Shanks (Miller Earle & Shanks, PLLC, Luray) were elected to three-year terms ending in 2015. They join the following continuing board members: Frank A. Thomas (Orange); David P. Bobzien (Fairfax); Barbara Ann Williams (Richmond); Hon. Paul F. Sheridan (Arlington); Irving M. Blank (Richmond); Stephen D. Busch (Richmond); Cynthia E. Hudson (Hampton); Angelica D. Light (Norfolk); F. Anderson Morse (Clifton); John M. Oakey Jr. (Richmond); Lucia Anna Trigiani (Alexandria); and J. Page Williams (Charlottesville). The Virginia Law Foundation, a law-related not-for-profit organization, was established in 1974. Both the Virginia State Bar and the Virginia Bar Association nominate members of its board. Its mission is to promote through philanthropy the rule of law, access to justice, and law-related educa- tion. As a grant maker, the Foundation has provided over $23 million to support law-related public service projects throughout Virginia.

www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 43 Noteworthy > PEOPLE In Memoriam

Scott Aaron Ammons William J. Kinnamon Jr. H. L. Opie Jr. Charlotte, North Carolina Frederiscksburg Staunton July 1969–May 2012 August 1937–April 2012 March 1916–January 2006

Robert G. Bailey Louis Koutoulakos Dabney Lancaster Pasco Jr. Charlottesville Arlington Covington July 1943–January 2007 August 1917–November 2010 January 1971–May 2012

George F. Ball Mark David Krohn Frederick W. Richards Alexandria Washington D.C. Arlington February 1926–April 2011 March 1959–April 2012 October 1921–November 1997

William G. Beninghove Edwin P. Latimer Glenwood P. Roane Mechanicsville Manassas Memphis, Tennessee March 1933 –April 2012 October 1930–March 2012 July 1930–December 2011

C. Glasgow Butts Richard L. Lawrence Spencer T. Nissen South Hill Roanoke Alexandria January 1917–May 2012 January 1938–March 2012 April 1928–March 2012

Johnny F. Catterton Harold Levine Julian D. Sanger Richmond Dallas, Texas Richmond December 1916 – May 2012 April 1931–February 2011 March 1918–February 2012

L. Shelton Clarke John L. Lewis III Julian Savage Richmond Powhatan Chevy Chase, Maryland July 1922–December 2011 March 1938–May 2012 February 1919–February 2012

Kenneth F. Currier William Randall Light William V. Slaughter Alexandria Lynchburg Richmond February 1943–March 2012 September 1958–October 2011 December 1912–April 2005

Raymond A. Delahanty Jr. Hubert H. Marlow Jr. Richmond O. Swim Yardley, Pennsylvania Front Royal Virginia Beach December 1928–April 2012 December 1933–February 2012 May 1927–April 2010

Fred Gorham Folsom Jr. Roderick B. Mathews H. Franklin Taylor III Alexandria Richmond Richmond September 1914–January 2012 March 1941–April 2012 October 1940–March 2012

Duval Q. Hicks Jr. Cleyburn L. McCauley Hugh R. Thompson Jr. Fredericksburg Wilmington, N.C. Richmond March 1920–October 2005 February 1929–December 2010 January 1915–August 2005

John Le Cato Hummer Garland T. McCoy Thomas Greer Valentine Laguna Niguel, California Lansdowne Richmond July 1921–April, 2012 March 1922–November 2012 September 1947–May 2012

L. Farnum Johnson Jr. Chandler A. Nelson Littleton, Colorado South Boston January 1930–March 2012 March 1932–November 2011

Julian O. Von Kalinowski Gail Susan Ogle Los Angeles, California Charlottesville May 1916–February 2012 March 1955–January 2012

44 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org PEOPLE < Noteworthy Local and Specialty Bar Elections

Conference of Local Bar Associations Metropolitan Richmond Women’s Virginia Academy of Elder Plato George Eliades II, Chair Bar Association Law Attorneys Eugene Millan Elliott Jr., Chair-elect Sakina Karima Paige, President Evan Harris Farr, President Mary Margaret Benzinger, Secretary Colleen Marea Quinn, President-elect Karen L. Fortier, President-elect George William Nolley, Treasurer Sharon Choi Stuart, Vice President Yahne Yvonne Miorini, Vice President Jack W. Burtch Jr., Member At-Large Melissa Suzanne VanZile, Secretary Elizabeth Ellen Bircher, Secretary Renae Reed Patrick, Member At-Large Kimberly Anne Skiba, Treasurer Elizabeth Louise Wildhack, Treasurer Barbara Sattler Anderson, Member At-Large Powhatan Bar Association Virginia Trial Lawyers Association Rebecca Elizabeth Duffie, Robert Beman Beasley Jr., President Lisa Palmer O’Donnell, President Tara Dowdy Hatcher, Vice President Member At-Large Barbara S. Williams, President-elect Richard Kenneth Cox, Secretary Juan Ever Milanes, Member At-Large Thomas Joseph Curcio, Vice President Philip Leroy McDaniel, Treasurer David Wayne Lannetti, John Eric Lichtenstein, Vice President Member At-Large The Bar Association of the City Stephanie Elaine Grana, Vice President Bernard Alan McGraw, of Richmond Ronald Lee Livingston, Vice President Member At-Large Craig Thomas Merritt, President Michael Bryan Slaughter, Treasurer Petula Cherise Alston Metzler, Anne Gaines Scher, President-elect Member At-Large John Kirkland Burke Jr., Vice President Williamsburg Bar Association Chuong Dong Nguyen, The Honorable Melvin R. Hughes Jr., William Hunter Old, President Member At-Large Hon. Vice President Gordon Carmalt Klugh, Vice President Edward Laurence Weiner, John Tracy Walker IV, Nancy Kahn Bolash, Secretary Immediate Past Chair Secretary-Treasurer Matthew Westcott Smith, Treasurer Lawyers Helping Lawyers Video Wins Public Relations Award

A video about the value and history of Supreme Court of Virginia Harry L. Virginia Lawyers Helping Lawyers is Lawyers Helping Lawyers has won a Carrico, the Honorable E. Eugene a non-profit organization using a Capital Merit Award from the Public Luther, legal secretary Barbara Treese, statewide network of volunteers to pro- Relations Society of America — and James E. Leffler, executive director vide confidential, 24-hour assistance to Richmond Chapter. of Lawyers Helping Lawyers. attorneys and judges who are experienc- The video, titled “Lawyers Helping ing substance abuse or mental health The award in the “external video Lawyers — Confidential Road to problems. Trained volunteers serve as Recovery,” features members of the programs” category was presented on peer counselors, conduct assessments, Virginia legal community discussing May 16, 2012, to Patricia C. Hassard, implement interventions, provide treat- substance abuse and mental illness President of GateHouse Communica- ment referrals, monitor rehabilitation among lawyers and judges and how the tions, during the 65th Virginia Public contracts, and support family members. organization works to help them over- Relations Awards ceremony at The For more information on Lawyers come their problems. Appearing on the Jefferson Hotel in Richmond. Helping Lawyers or to obtain a DVD of video are William D. Dolan III of David S. Mercer developed the the video, contact David Mercer at Venable, George H. Hettrick of Hunton video concept and he and his partner, [email protected] Public Relations Society of America & Williams, Barbara Ann Williams of Pia Trigiani, funded production. McGuireWoods, David S. Mercer of — Richmond hosts the Annual Virginia Originally showcased during September MercerTrigiani, the Honorable Marilynn Public Relations Awards to recognize the C. Goss, Thurston R. Moore of Hunton 2010 in recognition of the organization’s most innovative and influential public & Williams, Professor Susan S. Grover 25th anniversary, the video is now pre- relations programs of the year. This year from the College of William and Mary sented during CLE seminars conducted more than eighty-nine entries were sub- School of Law, the Honorable R. for Virginia law firms, law schools, bar mitted in twenty- three categories for Terrence Ney, Senior Chief Justice of the associations, and judicial groups. public relations campaigns and tactics. www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 45 Book Review Why Can’t Law School Graduates Write? by Sharon D. Nelson

Ask judges and senior lawyers to iden- Mr. Stark has taught legal writing tify the most disturbing things about at Harvard Law for more than a decade younger lawyers and they will reply in so he is well-qualified to speak with one voice: “They can’t write.” authority. As he points out, lawyers who Recently, I took part in a Conclave improve their writing also improve on the Education of Lawyers convened their credibility and their attractiveness by the Virginia State Bar Section on the to potential employers. Education of Lawyers in Virginia and This book is a pleasure to read attended by a number of judges, law because Mr. Stark infuses his own school deans and professors, and writing with examples of excellent and

Ask judges and senior lawyers to identify the most disturbing things about younger lawyers and they will reply in one voice: “They can’t write.”

lawyers involved in bar leadership. The terrible writing samples from real life number one issue raised at the confer- along with a good mix of memorable ence was that recent law school gradu- quotations which illustrate his points. ates seem to emerge from their I can’t imagine any lawyer (myself education with such poor writing skills. included) who wouldn’t benefit from a With that in mind, I wanted to careful reading of this very timely and spread the word about an excellent new effective book. book I just finished called Writing to Win: The Legal Writer by Steven D. Stark. The first edition was published Sharon D. Nelson is president of Sensei Enterprises Inc., a legal tech- twelve years ago. The new addition nology, information security and includes substantial revisions including computer forensics firm based in Fairfax, Virginia. (703) 359-0700 or sections on writing in the digital age www.senseient.com. She is president- (sorely needed). elect of the Virginia State Bar.

46 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org Law Libraries An Overview of Patent Prosecution by Fred Dingledy

Whether it is talk about the new America be “novel” and “non-obvious.” Novel Search http://www.google.com/advanced Invents Act or patent wars between means it was never been invented _patent_search – a useful tool if you’re smartphone manufacturers, patents have before;3 non-obvious means it should not trying to find completed patents. been appearing in the news quite fre- be something that any expert in the field The filed patents themselves are also quently lately. While most people under- could have thought of based on existing a source of useful information. The front stand the basic idea of a patent and what technology.4 This is where the term prior page of a patent alone will give you it does, the process of obtaining a patent art comes into play — it refers to the information on prior art, who owns the remains shrouded in mystery to many, state of technological development patent, and what classifications the containing terms of art specific to the before an application is filed. To be con- patent was filed under, among other field, not to mention terms that take on sidered “new,” the invention must be dif- things. Queen’s University has a useful a special meanings in patent law other ferent from the prior art. After the sheet that lists all the information avail- than what may normally come to mind. examiner studies the application, the able on the first page at The process of obtaining a patent is claims will either be accepted or http://library.queensu.ca/webeng/patents called prosecution — not to be confused rejected;5 rejected claims may be /Anatomy_of_a_US_patent.pdf. with criminal prosecutions. Patents come amended.6 Once all the claims are in different types: utility, design, and accepted, a patent can be granted.7 Special thanks to Alyssa Altshuler and plant; but the most common is the util- Pam Cline of Ropes & Gray for their ity patent, which covers items designed Free Patent Resources invaluable help writing this article. to produce a useful invention. This arti- So now you know the basics of the pros- cle presents a simplified summary of the ecution process, but what free resources Endnotes: prosecution process for a utility patent. are available to research patents? 1 1-SA DONALD S. CHISUM, CHISUM ON Fortunately, the USPTO’s website has an PATENTS § 3 (1978 & Supp. 2012); Leahy-Smith America Invents Act, Pub. Overview of Patent Prosecution excellent patent research section at L. 112-29, § 3, 125 Stat. 284, 285-293 Patent prosecution begins with filing an http://www.uspto.gov/patents/index.jsp. (2011). application with the U.S. Patent and You can use this site to search for patents 2MUELLER, PATENT LAW, at 45; 35 Trademark Office (USPTO). Traditionally, or patent owners, and get a useful U.S.C.S. §§ 101-103 (2012). the United States awards patent protec- description of the prosecution process. 3 35 U.S.C.S. § 102 (2012). 4 35 U.S.C.S. § 103 (2012). tion to the person deemed the first to Note that normally patent applications 5 35 U.S.C.S. §§ 131,132 (2012). invent. The recently-passed America are not made public, or published, until 6 37 C.F.R. § 1.116 (2012). Invents Act, however, changed that; as of eighteen months after they are filed. An 7 35 U.S.C.S. § 151 (2012). March 16, 2013, the priority for an applicant can prevent their application 8JANICE M. MUELLER, PATENT LAW 53-4 invention will go to the party deemed from being published by swearing that (3d ed. 2009); 35 U.S.C.S. § 122 (2012). “first to file.” 1 they will not file the same patent in any At the USPTO, an examiner evalu- other country, but this is very unusual.8 ates the application. The examiner’s job You can use the USPTO’s public PAIR is to check the application and ensure it (Patent Application Information adequately discloses what the invention Retrieval) system http://www.uspto.gov is, how it is made, and how it is used. /patents/process/status/index.jsp to The examiner will also weigh the claims search for file wrappers, which are the in the application.2 In patent law, claim collections of filings and communica- takes on a very specific meaning — it tions connected with a patent’s prosecu- defines exactly what the applicant is tion process. PAIR’s public system seeking patent protection for, the thing contains information about patent appli- Fred Dingledy is a reference librarian at the applicant wants no one else to be cations and patents; the private version the College of William & Mary Law able to make without the applicant’s per- is used by patent attorneys and USPTO School. He received his J.D. from the mission. Claims must also belong to one examiners, and has detailed information University of Minnesota-Twin Cities, and of the acceptable categories of patentable on prosecution histories. People who his M.A. in Library and Information Studies from the University of Wisconsin- subject matter. The subject of the patent prefer searching Google-style can take Madison. He is a past president of the must have a useful purpose, and it has to advantage of Google’s Advanced Patent Virginia Association of Law Libraries. www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 47 Consultus Electronica Understanding Botnets by Blackwell N. Shelley Jr.

Recent news stories have reported that Technically sophisticated bot order to get its instructions from the bot hacker groups, such as Anonymous and herders might choose to write the mali- herder. A bot herder has several choices LulzSec, have threatened or carried out cious code themselves, but as with so when setting up this command and con- distributed denial of service (DDoS) much on the Internet, bot creation has trol server. If the bot herder has already attacks on websites in response to, for been simplified by the use of malware gained access to a compromised com- example, the arrests of Julian Assange kits. These kits are collections of soft- puter, he or she may install the server and Kim Dotcom, and the threatened ware tools that enable aspiring bot software on it. Other choices include passage of the Stop Online Piracy Act herders to assemble their own bots by establishing secret channels on public (SOPA). The basic idea of a DDoS attack creating and spreading customized mal- Internet Relay Chat5 (IRC) servers, set- is simple: all websites are based on com- ware variants. Some malware kits have ting up servers on the bot herder’s own puter servers that can accept a finite been published as free open source code, computer, or signing on with a provider number of simultaneous connections. and offer discussion forums for users to that resists or ignores efforts to discon- To effectively shut down a website, hit it suggest new features and modules for nect lawbreakers.6 with more simultaneous connections the malware, report bugs and other Once the botnet is up and running, than it can handle. Orchestrating the errors, or enter into discussion with their it can be used to carry out a variety of simultaneous attack requires a botnet. fellow developers.2 Other kits are devel- criminal activities. Apart from the A botnet is a network of computers oped by individuals or groups and sold Denial-of-Service attacks, described that have been compromised by a mali- like legitimate commercial software above, a botnet may be used to steal the cious computer program (a “bot”) and products.3 For bot herders with money confidential information stored on each surreptitiously programmed to follow and little time, independent contractors infected computer, as a spam generator, instructions issued by a different com- will make bespoke code according to the or for click fraud, depending on how the puter.1 The compromised computers in a bot herders’ needs.4 bot herder chooses to configure the indi- botnet, sometimes called nodes or zom- By keeping a low profile, bots are vidual nodes. A botnet can also be self- bies, are typically home or office desktop sometimes able to remain active and propagating, as a means of distributing computers. The hacker who issues the operational for the life of the computer. more of the malicious code. With time command and control instructions to the Most office and residential Internet ser- and patience, a bot herder can use this botnet is called a bot herder or bot master. vices are now high-speed, always-on The user of a zombie computer is rarely aware that the machine has been compromised because the process usu- ally starts quietly, either by exploiting vulnerability in the computer’s software Once the botnet is up and running, it can be used or security system, or by tricking the user into installing the malicious code. to carry out a variety of criminal activities. Examples of this are varied, but include old school hacking (“password1” is not a strong password), or through bogus software (that animated screensaver that connections that provide the bot-herder latter technique to build networks of you downloaded for free, for example), with a large contingent of accessible thousands of infected computers. or through deceptive email (“RE: Why zombies. Botnets are attractive to crimi- Notwithstanding the publicized did you put this photo online?”). The nals because investigators typically can- attacks and threats of “hacktivist” groups hacker, the bogus software, and the link not follow the trail past the innocent like Anonymous and LulzSec, bot herding sent through deceptive email all have owner of a zombie computer. is almost entirely a for-profit endeavor. the purpose of installing unwanted and After the bot has infected the user’s In May, 2012, an Armenian court sen- malicious code — the bot — on the computer, it attempts to contact a cen- tenced 27-year-old Georgy Avanesov to user’s computer. tralized command and control server in four years in prison following his con-

48 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org Consultus Electronica viction on charges of computer sabo- • Scan your [network] traffic while your “Internet Relay Chat Protocol, Section tage. Avanesov, prosecutors said, was PC is idle and see if you find something 1.3 Channels”, available at part of a group of bot herders making suspicious … https://tools.ietf.org/html/rfc1459 (last visited June 10, 2012). about $125,000 a month by renting out a 6 Recently, botnets that use peer-to-peer botnet comprised of some 30 million • Read a blog from [antivirus] vendors (P2P) networks for remote control of zombie computers worldwide and 143 … That stuff is interesting and you are the compromised machines have command and control servers in France always informed what most common appeared in the wild. A P2P botnet does and the Netherlands.7 In an April, 2012, threats are. not use a central command point; post on Reddit,8 an admitted bot herder, instead, each zombie computer passes who used the handle Throwaway236236, • Most important: Try to step out of on instructions to each other zombie in offered this prediction: your consumer role, think about how the botnet. The lack of a centralized command and control server makes P2P malware works. The core functions of botnets more difficult to shut down and The whole fraud system will soon malware all work the same and are the command source more difficult to escalate and only then people will very fragile. track. See The Hacker News, “Thor, start worrying about the fundamen- another P2P botnet in development,” tal flaws in the system. Antiviri don’t Endnotes: available at http://thehackernews work, firewalls never helped, fraud 1 See FTC v. Pricewert LLC, 2009 U.S. Dist. .com/2012/03/thor-another-p2p-botnet detection systems are blind when LEXIS 54043 (N.D. Cal. June 15, 2009). -in-development.html (last visited 2 The Register, ”Malware devs embrace June 10, 2012). abusing the victim computer as a open source”, February 10, 2012, avail- 7 Wired.com, “Bredolab Bot Herder Gets proxy. The only cure is strong cryp- able at http://www.theregister.co.uk 4 Years for 30 Million Infections,” May tography and simple yet unbreak- /2012/02/10/open_source_malware/ 23, 2012, available at http://www.wired able solutions, even if it’s (last visited June 10, 2012). .com/threatlevel/2012/05/bredolab unconvinient. Some European 3 See, e.g., Dell SecureWorks, ZeuS -botmaster-sentenced/ (last visited June countries for example already use Banking Trojan Report, March 11, 2010, 11, 2012). private/public key authentification available at http://www.secureworks 8 Throwaway 236236, “IAmA malware .com/research/threats/zeus/ (last visited coder and botnet operator”, AMA (sub- for banking and only allow credit June 10, 2012). ZeuS is a well-known mitted April 24, 2012), available at cards with chips. Magnetic stripes banking malware program that steals http://www.reddit.com/r/IAmA/ are the most hilarious thing ever, but data from infected computers via web comments/sq7cy/iama_a_malware still work almost everywhere on the browsers and protected storage. Once _coder_and_botnet_operator_ama/ globe. Today Cybercrime is already infected, the computer sends the stolen (last visited June 11, 2012). more profitable than drug dealing data to a bot command and control 9 Id. and it will grow even further. server, where the data is stored. As of March, 2010, prices for the Zeus kit started at $3,000 with additional mod- When asked by other users how to ules available on an a la carte basis. In stay secure on line, Throwaway236236 late 2010, the creator of ZeuS sold the 9 offered the following suggestions: source code to rival SpyEye, which con- tinues to sell Trojan malware kits. Krebs • If the attachment is ending in .exe and on Security, SpyEye v. ZeuS Rivalry Ends pretending to be something else, it’s in Quiet Merger, October 24, 2010, malware for sure. … available at http://krebsonsecurity .com/2010/10/spyeye-v-zeus-rivalry -ends-in-quiet-merger/ (last visited • Facebook friends don’t share funny cat June 10, 2012). pictures on randomly generated 4 See, e.g, The Bot Net, “How to make a domain names. bot request”, available at http:// thebotnet.com/bot-requests/60829 • If your AV says it’s clean … it can still -how-to-make-a-bot-request/ be malware, been there, seen that. Srsly, (last visited June 10, 2012). 5 IRC is a real-time Internet chat proto- don’t trust your AV. col, designed for group text-based con- Blackwell N. Shelley Jr. is an attorney at ferencing. An IRC “channel” is a named Shelley & Schulte PC, in Richmond, Va. He • Windows updates, yes, do them. If you chat group which will all receive mes- is the former chair of the Virginia State Bar have a pirated copy, just buy that s**t sages addressed to that channel. The Special Committee on Technology and the or use linux. Internet Engineering Task Force (IETF), Practice of Law. www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 49 Risk Management Lawyer’s Duty of Confidentiality and Securing Your Smartphone and Handheld Device by Wendy F. Inge © 2012 ALPS Co.

What’s not to love about a smartphone? Who Owns the Device? iPhones have varying levels of encryp- It’s a great tool for keeping up while on One of the first things to consider when tion available. (Many argue the the go. And smartphones aren’t just giving employees access to client and Blackberry is the most secure because of phones; they’re computers. The use of corporate data remotely is who is going the inherent encryption on the phone smart phones and other mobile devices to own the device. It may be preferable and during the communication.) You such as iPads is pervasive, and lawyers from a security and policy standpoint may need additional third-party soft- too have embraced them. for the firm to own the mobile devices ware to get certain functions to upgrade But as with all technology used by used by employees. It makes it easier to the base phone if necessary. Just note lawyers, we have certain ethical duties set policies and controls when the firm however that for iPhones third-party that apply. State bars have consistently owns the asset. This also allows the firm software for encryption is not available. held that the use of technology, such as to select the wireless carrier and the e-mail, cloud computing and portable device that will be used by the employees. Manufacturer’s Security devices requires consideration of the If you don’t own the devices being Recommendations: Follow security rec- rules of professional conduct addressing used by employees to access data on ommendations from the wireless carrier competency and confidentiality. your network you may want to consider and phone manufacturer. Specifically, lawyers using this technology using a Mobile Device Manager (MDM). should be competent in understanding An MDM sits between your infrastruc- Password Protection: All smartphones, the technology (Rule 1.1 Competence) ture and the mobile device. It can be tablets, laptops, and mobile devices must and how its use might impact the client installed on your network or provided have password protection. Your firm either positively or negatively. Also, the by a host, such as your wireless carrier. It should have a password policy for all lawyer needs to act diligently to protect allows you to identify what devices mobile devices (desktops too) requiring client confidences and ensure that client should be allowed to connect to the net- use of a strong password prior to use of information remains secure (Rule 1.6 work and can regulate security policies the device. Use power on passwords and Confidentiality of Information). that are to be applied to the devices. To enable auto-lock features (phone auto- read more about MDMs, see matically locks after a period of time) to Inherent Risks Smartphones for Lawyers: Selecting, protect all devices that carry data about As we all know, the risks inherent in Managing and Securing Them by Sharon a client or their matter. If able, use a using any device that stores or accesses Nelson and John Simek of Sensei strong password that is a combination of our data are that it will be hacked, cor- Enterprises. uppercase and lowercase letters, num- rupted, misused, or stolen. Specific to bers, and symbols, and is a minimum of smartphones, hacking and corruption Securing Your Mobile Devices eight characters long. For more on smart can occur through the downloading of Your firm should make it a policy that passwords see Don’t Trifle with Password applications that are corrupted or con- lawyers and staff using mobile devices Safety by Vivian Manning. Also, some tain malware. Theft of information can that have access to client information apps will allow you to set up an addi- occur if the device is lost or stolen. In follow these security procedures. tional pass code. If you are using an app order to protect the sensitive informa- that will contain sensitive data, create an tion and the client, and to fulfill your Encrypt Data: Encrypt the data on the additional pass code. Finally, some smart ethical duties, you must secure your phone and the expansion card if applica- phones, like the iPhone, can be set to mobile devices. ble. BlackBerry, Android varieties, and erase all data after ten failed attempts to

50 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org Risk Management login; this feature provides additional need to be comfortable with the changes Equipment Upgrades: When the time security if the device is lost or stolen. the application will make. Pick one and comes to upgrade user phones, make use it. Some, such as “Where’s My certain that all data on the old phones is Physically Protect the Device: Keep Droid” and iCloud, will give you a GPS wiped prior to recycling. One way this your device with you and under your fix on the location of your device. can be done is by resetting the device to control at all times. (Don’t lose or mis- factory settings. Prior to taking this step, place it, or lend it to others.) Install Security Application (prevents however, make certain that any data you viruses, malware and bad URLs): want saved has been copied to another VPN Connection Only: If using the While technology experts debate device or computer prior to restoring to device to connect to the office network, only ever do so by way of a secure VPN connection. Text messages, email, and Corruption of data can be a nightmare documents should never be sent in an unencrypted format, which means don’t and expensive to fix. do any work using a Wi-Fi signal.

Limit Bluetooth: Only enable Bluetooth whether and to what degree smart- factory settings. Be aware that factory functionality when you need to use it. phones are susceptible to viruses, resets do not erase data on any microSD For all other times, turn it off. trojans and malware have already been cards. That data must be taken care of used to attack hand held devices. If you separately. Backup Your Data: Devices do get lost, have sensitive information on your are stolen, or sometimes simply get device, it is “better safe than sorry.” Finally, a disclaimer. This risk man- destroyed. Accidents do happen, so make Corruption of data can be a nightmare agement information is provided by sure any critical data is backed up. and expensive to fix. You want an appli- ALPS as general information only. It is cation that will scan for bad actors and not intended to be used or relied on as Remote Data Wipe: Install and use a eliminate threats. Thus, you should legal advice. Also, as technology changes remote data wipe application on all require all mobile devices to be pro- quickly, this information may become mobile devices. This may require a third- tected with anti-virus software. There out-dated. ALPS does not endorse any party application. If your phone or are hundreds of apps for this, some free products. Readers should always engage device were lost or stolen you need to be and some for a small fee, but be careful in their own research and evaluation of able to wipe the data clean so that the to install only a reputable product products and services. thief or others would not be able to hack (AndroidForums.com). You should pick into it (because of course it has a strong one that is highly rated and that comes password.) The Android market has from a reliable source such as the hundreds of different apps that will pro- Android market place (Google) or the vide this service, some free and some for iPhone app store. For droid users con- a fee, but be careful to install only a rep- sider “AGV Antivirus Pro.” For iPhone utable product (AndroidForums.com). users check out “Virus Barrier.” Some You should pick one that is highly rated products will provide both antivirus and that comes from a reliable source protection and remote wiping ability. such as the Android market place (Google) or the iPhone app store. Droid Applications: Do your research and only users might want to consider “Lookout install applications from trusted sources. Wendy Inge is the Virginia risk manager for Mobile Security” and for iPhones use the There have been problems with malware Liability ALPS, the Virginia State Bar-endorsed iCloud functionality under settings. Be apps when downloading from iTunes legal liability insurer. She is available to answer risk management questions at no charge for all advised that applications do change and caution is even required in the members of the VSB. She can be reached at security settings on your phone, and you Android store. (800) 367-2577. www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 51 THE REMARKS OF THE HONORABLE GERALD L. BALILES

Remarks continued from page 16 fostering more and more tight special- lawyers. We would help our image and ization. In many regards wisely, we’ve understanding with the public as well. I am not humorless, but it hits me become very conscious of conflicts of But, most importantly, we would also when I hear the ubiquitous lawyer interest, and often preclude ourselves, further contribute to the public good, jokes, and I laugh at most of them. and our law partners, from sitting on in vital ways, that others—non-lawyers It hit me recently when I realized boards — public or private — with —simply cannot accomplish with the how few lawyers there are now in the which we may do business in our same honed ability. Shaped by practice, General Assembly — less than a third practices. lawyers have skills which are sorely of the members. When I was first The past few decades have brought missed when absent in public affairs. elected to the House some thirty-five us an increasing number of excuses for Maybe we don’t enunciate these years ago, almost three quarters of the avoiding summons to leadership as a skills often enough. members of the General Assembly were profession. Consider them with me quickly. lawyers. The best, most substantive On reflection I think it’s clear what is missing when we don’t offer them to the public good. These “lawyers skills” fall into three basic categories – to my way of Shaped by practice, lawyers have skills which are sorely thinking. Put very simply, lawyers are good at connecting the dots; we’re missed when absent in public affairs. good with language; and we’ve typi- cally got a good “people sense.” Let’s look briefly at each of these.

1. Good at Connecting the Dots. debates came up on the floor when a You’ve heard these responses, I’m Lawyers by profession assess risk lawyer legislator would ask a penetrat- sure: “I’m too busy,” “It’s outside what I all the time. All the time we’re thinking ing question that hadn’t been consid- do,” “I can’t, because I have a potential “how does this affect that?” We do this ered in committee. Citizen lawyers have conflict.” Any of these, in any given cir- in almost everything we do — cases, been at the heart of the work of the cumstance, may be utterly appropriate contracts, transactions, advising. General Assembly. for any one of us, individually, to say. Having to assess risk all the time leads When I look at civic organizations We may, though, have begun to to very logical thinking. Lawyers have a today in Virginia, I likewise also often say them collectively as a profession. practiced ability to see all the way find myself wondering, where are the When we don’t rise to service, and through things and separate the wheat citizen lawyers? our profession fails to deeply encour- from the chaff. Automated contracts, lawyer jokes, age it, it’s not entirely surprising that This logical thinking, risk assess- nervous law students and burned-out law students become nervous and ing, leads also to a honed sense for lawyers point to a real unease with, lawyers become burned out – because I trends, especially with the government, and in, the profession. Our thinning believe lawyers choose the profession which is, really a machine made up of ranks in the General Assembly and and go into practice in order to con- laws. Sensing trends — connecting the civic organizations, even bar activities, tribute to the public good. Lawyers are dots — is very important. Again and point to diminished leadership by practical, but lawyers also — especially again throughout our history in citizen lawyers. the best — have a twinge of idealism, a Virginia and America, lawyers have I think the unease and our dimin- yearning to do good, to act as citizen stood to protect freedoms: Jefferson for ished leadership are related. lawyers, in the long tradition. religion, Lincoln against slavery, Let me explain. Much of the dissatisfaction in the Thurgood Marshall for civil rights. Over the past generation or so, to profession, I think, stems from frustra- Lawyers have always known that be sure, the billable hour, especially in tion in not engaging in earnest in that the old saying from Shakespeare — the larger firms, has come to lord it tradition so proudly established in the “First thing we do, let’s kill all the over us like never before. The dizzying commonwealth many generations ago. lawyers”— is not a reproach but a array of statutes and regulations has In my judgment, we would very compliment. Lawyers are especially only grown, demanding more and much help ourselves by a new devotion, entrusted to be guardians – whom tyr- more time of us to keep pace, and as a profession, to leading as citizen annizing and demagogic forces (at

52 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org THE REMARKS OF THE HONORABLE GERALD L. BALILES

loose today, just as in history) would with people on any given matter, to lead the organizations you are a part just as soon not have around. understand that the disagreement is of. Take on new ones. not — or need not be — personal, not Very candidly, whether Republican 2. Good with Language. ad hominem. or Democrat, consider public office. If Lawyers, because we tend to write So, we’re good at connecting the not you, then who? every day, tend to write well and pre- dots, good with language, and have a Find a young lawyer of promise — cisely. And also, since by profession good “people sense”— which is or two — or three — and tell them with we’re required to speak frequently, we another way of saying: we’re good at conviction that they are a part of the tend to speak well. Also importantly, helping bring some order, some under- Virginia tradition, unbroken, of citizen with their practiced precision with lan- standability to things that are unclear, lawyers, with duties to the common- guage, lawyers tend to listen well too, things that are hazy — unclear trends, wealth and the public good. and get to the heart of matters. unclear language, unclear situations We can help with the needed Language is crucial. The written with people. revival of the citizen lawyer, already word is what the public has to memo- In a complex, fractious world alive among you here. The way I see rialize agreements and set policy and (only becoming more and more so) things, anything awry can be set law. The spoken word is the means to lawyers are clarifiers and harmonizers straight, and our profession, already explain and debate, so plainly vital to — or can be, when we take it upon storied, should ensure that storied days democracy. ourselves to get involved. are still ahead. That’s the way our pre- I think a lack of involvement, that decessors thought. That’s what they 3. Good “People Sense.” has been increasing, is at the root of would want us to do — all across Lawyers, because of what we do the unease in the profession, and at the Virginia. — in our practice, our pro bono work, root of the unease with the profession. There’s one other thing they might in our duties as citizen lawyers — deal I think a lack of involvement is want me to say: It’s been a long day. It’s substantively with lots and lots of peo- also a harm to the public. ple doing lots and lots of different types of things — things the details of which lawyers come to have a real sense of. Because lawyers know and deal with On the “people sense” front as well, because of all of the so many different people in such detailed ways, we tend to be good at people lawyers deal with and all of the human drama directing traffic — at making connec- tions: “Oh you need help with this — we witness, lawyers often have a good, quick sense of well, Jones might be good to talk to; you might also try Smith.” what motivates people. Related to this: law is a profession that especially has in it a real diversity of people too, something I’m very proud of. Lawyers, maybe a little more The public good — government time to wrap things up and say thanks than the average person, know people and civic life — fundamentally depends very much. of all colors and all stripes — making on citizen lawyers, present from the So, many thanks for dinner and them even better at making connections. beginning of the American experiment the invitation to be a part of your On the “people sense” front as in free society, and depends on citizen evening. well, because of all of the people lawyers’ rare abilities — to clarify, to Besides, as that non-lawyer, Mark lawyers deal with and all of the human harmonize. Twain, used to say: “Being talked to drama we witness, lawyers often have a I’m preaching to the very faithful death is a terrible way to go.” good, quick sense of what motivates here, of course, my friends. You carry Thank you, and good night. people. In a given situation, we have a the tradition. honed sense for “what’s really going Indulge me here, to close with a on,” for what games (if any) are being few thoughts. played and who’s playing them. We also You are citizen lawyers and leaders usefully, even in the thick of debate of the law. So, keep serving — and offer

www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 53 CLE Calendar

Introduction to Virginia’s Sentencing Refresher Regional Sentencing Guidelines— six-hour seminars, Guidelines Topics — three-hour seminars, 9:30 AM – 5 PM 9 AM – 10 PM or 1 PM – 4 PM

August 9 — Richmond September 25 — Richmond Henrico County Training Center Henrico County Training Center 7710 E. Parham Road 7710 E. Parham Road

August 17 — Wytheville September 27 — Chesapeake Wytheville Community College Sheriff’s Department 1000 E. Main Street 401 Albermarle Drive National Legal Research Group Advanced Sentencing Guidelines Issues October 11 — Abingdon CHARLOTTESVILLE, VIRGINIA and Ethical Hypotheticals — six-hour Southwest VA Higher Education Center seminars, 9:30 AM – 5 PM One Partnership Circle

October 12 — Roanoke Virginia Lawyer publishes at no charge notices Roanoke Higher Education Center of continuing legal education programs spon- 108 N. Jefferson Street sored by nonprofit bar associations and govern- ment agencies. The next issue will cover October 15, 2012, through December 16, 2012. Send October 16 — Portsmouth information by September 7 to [email protected]. Department of Social Services For other CLE opportunities, see Virginia CLE 1701 High Street offerings below and “Current Virginia Approved Courses” at http://www.vsb.org/site/ members/mcle-courses/ or the websites of commercial providers.

Virginia CLE Calendar Virginia CLE will sponsor the following continuing legal education courses. For details, see http://www.vacle.org/seminars.htm.

July 23 August 7 ADVERTISEMENT Estate Planning for Unmarried Adults Protecting Client Information in the Telephone, NOON–2 PM 21st Century: Confidentiality, Security, and Safe Computing for Virginia Brief Writing a Chore? July 24 Attorneys Recent Developments in the Law: News Telephone, 9 AM–12:15 PM I have spent thirty years repre- from the Courts and General Assembly senting a large federal agency in Video — Norton August 14 EEO and other kinds of cases in 9 AM–4:55 PM Absent Employees: AWOL or Protected? federal district and appellate Telephone, NOON–2 PM courts. Over the last twenty July 24 years, I have been attorney of Recent Developments in Civil August 15 record in over 150 cases in the Immigration Ethics Litigation 2012 federal appellate courts. Telephone, 3–5 PM Telephone, NOON–2 PM Let me do what I do best: July 25 August 15 Traffic Offenses: Your First Case write persuasive briefs and Traffic Offenses: Your First Case memoranda, while you build Telephone, 3–5 PM Live—Charlottesville/Webcast/Telephone your practice servicing and NOON–2 PM August 16 representing your clients. Trustees: Duties and Discretion July 26 Live — Charlottesville/Webcast/ Writing samples available. Protecting Client Information in the Telephone, NOON–2 PM 21st Century: Confidentiality, Security, David G. Karro and Safe Computing for Virginia August 21 703/963-8775 Attorneys Attorney Fee Awards and Sanctions [email protected] Live — Melfa/Telephone Live — Charlottesville/Webcast/ 9 AM–12:15 PM Telephone, NOON–2 PM

54 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org CLE Calendar

August 22 September 12 September 20 The iPad for Lawyers Civil Practice in the General District DUI Defense in Virginia Webcast, NOON–1:30 PM Court Live — Fairfax, 9 AM–4:15 PM Webcast/Telephone, 11 AM–1 PM August 22 September 20 Absent Employees: AWOL or Protected? September 12 Title Insurance Telephone, 2–4 PM Depositions 101: Exploring the Basics Live —Williamsburg, SCHEDULE: TBD Webcast/Telephone, 3–5 PM August 23 September 20 Immigration Ethics September 13 Representation of Children as a Telephone, NOON–2 PM 21st Annual Advanced Elder Law Guardian ad Litem 2011 Live — Fairfax, SCHEDULE: TBD Video —Abingdon, Alexandria, August 24 Charlottesville, Fairfax, Richmond, Trustees: Duties and Discretion September 13 Roanoke, Virginia Beach Telephone, NOON–2 PM Representation of Incapacitated 8:30 AM–5:15 PM Persons as a Guardian ad Litem— 2010 August 28 Qualifying Course September 21 Executions on Judgments Video —Abingdon, Alexandria, Commissioner of Accounts Telephone, NOON–2 PM Charlottesville, Richmond, Roanoke, Live — Fairfax, SCHEDULE: TBD Tysons Corner, Virginia Beach August 29 9 AM–4:05 PM September 21 Everything You Need to Know About Commissioner of Accounts E-Discovery (But Were Afraid to Ask) September 13 Live — Richmond, SCHEDULE: TBD Live — Charlottesville/Webcast/ Everything You Need to Know About Telephone, NOON–2 PM E-Discovery (But Were Afraid to Ask) September 24 Telephone, NOON–2 PM Medicare September 5 Telephone, 10–NOON Medicare September 14–15 Telephone, 10–12 AM 27th Annual Mid-Atlantic Institute on September 24 Bankruptcy and Reorganization Practice Navigating the CPS Maze September 5 Live — Charlottesville Telephone, NOON–1 PM Attorney Fee Awards and Sanctions FRIDAY: 8:55 AM–5:15 PM; Telephone, 3–5 PM SATURDAY: 9 AM–NOON September 25 FRAUD—The Most Used and Least September 6 September 18 Understood Cause of Action: Keeping Your Case Out of Court, and Title Insurance Allegations, Defenses, and Practice Tips Being Nice About It: Advanced Live — Lexington, SCHEDULE: TBD Live — Fairfax, 9 AM–1:05 PM Resolution Skills for the Civil Family Law Practitioner September 18 September 25 Live — Fairfax/Telephone, 9 AM–1:15 PM Tort-Related Damages Commissioner of Accounts Live — Charlottesville/Webcast/ Live — Roanoke, SCHEDULE: TBD September 6 Telephone, 3–5 PM Formal and Informal Information September 25 Exchanges with Government Agencies September 19 Current Ethical Dilemmas Facing the Telephone, NOON–2 PM DUI Defense in Virginia Family Law Practitioner Live — Richmond, 9 AM–4:15 PM Telephone, 10–11 AM September 11 11th Annual Advanced Seminar for September 19 September 27 Guardians Ad Litem for Children—2010 Ethics Tsunami: Surviving the Rising Title Insurance Video —Abingdon, Alexandria, Tide of Legal Ethics Complexity Live — Fredericksburg, SCHEDULE: TBD Charlottesville, Richmond, Roanoke, Live — Fairfax, 9 AM–12:15 PM Tysons Corner, Virginia Beach September 27 9 AM–4:15 PM September 19 Business-Related Damages Life Insurance Live — Charlottesville/Webcast/ September 11 Live — Charlottesville/Webcast/ Telephone, NOON–2 PM Executions on Judgments Telephone, 10 AM–NOON Telephone, 9–11 AM September 27 September 20 The Top 10 Malpractice Mistakes September 11 Ethics Tsunami: Surviving the Rising (and How to Avoid Them) Locked Down: Information Security Tide of Legal Ethics Complexity Telephone, 3–4:30 PM for Law Firms Live — Richmond, 9 AM–12:15 PM Webcast, NOON–1:30 PM CLE Calendar continued on page 56 www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 55 CLE Calendar

September 28 October 9 October 16 Commissioner of Accounts Exit Strategies for the Business Owner Tom Spahn on Unauthorized Practice Live —Virginia Beach, SCHEDULE: TBD Telephone. 10 AM–NOON of Law and Multi-Disciplinary Practice Live — Charlottesville/Webcast/ September 28 October 9 Telephone, 11 AM–1 PM 13th Annual Virginia Information Covenants Not to Compete Technology Legal Institute—2012 Telephone, NOON–3 PM October 17 Live — Fairfax, 8 AM–4:25 PM Appellate Practice October 10 Live — Richmond, SCHEDULE TBD September 28 Ethics Tsunami: Surviving the Rising Eminent Domain Law in Virginia Tide of Legal Ethics Complexity October 17 Live — Charlottesville, SCHEDULE: TBD Video —Alexandria, Williamsburg DUI Defense in Virginia 9 AM–12:15 PM Video —Abingdon, Alexandria, September 28 Charlottesville, Danville, Fredericksburg, Life Insurance October 10 Hampton, Richmond, Roanoke, Virginia Telephone, 10 AM–NOON Ethics Update for Virginia Lawyers 2012 Beach, 9 AM–4:15 PM Live — Charlottesville/Webcast/ October 2 Telephone, NOON–2 PM October 17 Recent Developments in the Law: News Tort-Related Damages from the Courts and General Assembly October 11 Telephone, NOON–2 PM Video —Alexandria, Charlottesville, 31st Annual Family Law Seminar: Richmond, Roanoke, Virginia Beach Challenging Issues in Today’s Family October 18 9 AM–4:55 PM Law Practice 31st Annual Family Law Seminar: Live — Richmond, SCHEDULE TBD Challenging Issues in Today’s Family October 3 Law Practice Trials of the Century October 11 Live — Norfolk, SCHEDULE TBD Live — Richmond, 8:55 AM–4:15 PM Ethics Tsunami: Surviving the Rising Tide of Legal Ethics Complexity October 3 Video — Charlottesville, Hampton, Depositions 101: Exploring the Basics Richmond, Roanoke, Tysons Corner, Telephone, 3–5 PM Virginia Beach, Warrenton Young Lawyers Conference 9 AM–12:15 PM October 4 Trials of the Century October 11 Professional Live — Fairfax, 8:55 AM–4:15 PM Civil Practice in the General District October 4 Court Development Recent Developments in the Law: News Telephone, NOON–2 PM Seminar from the Courts and General Assembly Video — Tysons Corner, 9 AM–4:55 PM October 12–13 September 21, 2012 42nd Annual Advanced Business Law 10:00 AM to 5:00 PM October 4 Seminar Formal and Informal Information Live —Williamsburg, SCHEDULE: TBD Two locations this year: Exchanges with Government Agencies Telephone, NOON–2 PM October 15 Richmond: Business-Related Damages Hunton and Williams, Riverfront Plaza, October 4–5 Telephone, NOON–2 PM 951 East Byrd Street 5th Annual Advanced Business Litigation Institute October 16 Washington, DC: Live — Charlottesville, SCHEDULE TBD FRAUD—The Most Used and Least Hunton and Williams, 2200 Pennsylvania Avenue, Understood Cause of Action: NW (Metro: Foggy Bottom-GWU) October 9 Allegations, Defenses, and Practice Tips 31st Annual Family Law Seminar: Video —Abingdon, Alexandria, Featuring: Challenging Issues in Today’s Family Danville, Hampton, Richmond, Roanoke • Quality Writing — Rachel Dufault, Copy Law Practice 9 AM–1:05 PM Editor at Bloomberg BNA, Arlington, VA Live — Fairfax, SCHEDULE TBD • The Exceptional Oral Presentation — October 16 Alec Farr, Partner, Bryan Cave, Washington, DC October 9 31st Annual Family Law Seminar: • Dealing with the International Client The 21st Annual Employment Law Challenging Issues in Today’s Family and Climate — Jay Range, Partner, Hunton Update Seminar Law Practice and Williams, Washington, DC Video — Charlottesville, Richmond, Live — Charlottesville, SCHEDULE TBD Tysons Corner, Virginia Beach More information at 8 AM–4:30 PM www.vayounglawyers.com

56 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org Professional Notices

Robert Lee Aston has been awarded a as the chair-elect in August 2013 and will Gloucester and York Counties, as well as prestigious special award by the Georgia later be the chair of the ABA Antitrust the cities of Williamsburg and Newport State Bar Military Legal Assistance Section, effective August 2014. News. (804) 302-4540 (o), (804) 302- Program for pro bono work for war 4551 (f), [email protected]. veterans, mainly WWII and Vietnam, Andrew A. Gore has become an associ- in obtaining more than 104 combat ate attorney with Greehan, Taves, Pandak Eugene C. Miller is a partner at the new medals for veterans’ meritorious and & Stoner PLLC, practicing out of the firm of Weiner, Spivey & Miller PLC. heroic actions that they had not Woodbridge office. Miller joined the firm in 2011 after received due to military administrative twenty-five years as the managing attor- error or oversight. Hunton & Williams LLP announces its ney for the office of GEICO Staff annual partner promotions. In Richmond, Counsel in Fairfax. He has extensive Sonja N. Aoun and Jennifer L. Stanford, lawyers Steven M. Haas and Brian L. experience in personal injury litigation, formerly of Aoun & Stanford PC, are Hager were admitted to the partnership. in depth knowledge of insurance cover- pleased to announce that Aoun has Steven M. Haas, a member of the firm’s age issues and insurance company poli- joined the law offices of Mark R. Dycio corporate team, concentrates his practice cies and procedures. PC, where she will continue her family on mergers and acquisitions, corporate law practice. Stanford is leaving the pri- law and corporate governance. Brian L. Sharon D. Nelson has been named vate practice of law to pursue a career in Hager’s practice focuses on representing winner of the 2012 Small Business the federal government. public and private companies in connec- Leadership Award by Women in tion with mergers and acquisitions, secu- Technology, an organization of profes- Edward Grantland Burns has joined rities offerings, and corporate and sional women in the technology America Fujikura Ltd. as vice president securities laws. community. Nelson is president of and general counsel in Spartanburg, Sensei Enterprises. South Carolina. He is responsible for all Patrick C. Henry II has joined The Marrs legal matters, including corporate gover- Law Firm PLLC as an associate attorney, G. Michael Pace Jr. has been selected nance, intellectual property, human at its offices at 7272 Glen Forest Drive, to receive the Patrick Henry Award, resources, litigation, and securities com- Suite 307, Richmond, VA 23226. He will given by the Wilson Center for pliance as well as government affairs. continue his practice in civil litigation, Leadership in the Public Interest at with an emphasis on complex business Hampden-Sydney College. Claire G. Cardwell, of Richmond, and personal cases, construction law, and William E. Glover, of Fredericksburg, business-to-business collections. William B. Poff has been honored with and John E. Lichtenstein, of Roanoke, the Roger D. Groot Professionalism have been chosen as fellows of the Bradley Phipps Marrs has formed The Award from the Ted Dalton American American College of Trial Lawyers. Marrs Law Firm PLLC, with offices at Inn of Court in Salem. Poff was president Thomas E. Albro, Virginia state chair, 7272 Glen Forest Drive, Suite 307, of the Virginia State Bar in 1981–82 and said an invitation to be a Fellow is Richmond, VA 23226. Marrs was previ- is a master in the American Inns of Court. extended only to trial lawyers who have ously a co-founder and, for more than mastered the art of advocacy and whose twenty years, the head of civil litigation Lisa A. Robertson has become a senior professional careers have been marked at Meyer, Goergen & Marrs P.C. He will associate attorney with Greehan, Taves, by the highest standards of ethical con- continue his practice in civil litigation, Pandak & Stoner PLLC practicing out of duct, professionalism, civility and colle- with an emphasis on complex business the Woodbridge office. She is the former giality. Lawyers must have a minimum of and personal cases, construction law, and deputy city attorney in Charlottesville fifteen years of trial experience before business-to-business collections. and will focus on local government, land they can be considered for fellowship. use, procurement, growth management, Membership in the college cannot Kathleen McMahon McDaniel, formerly and advising of local boards of supervi- exceed one percent of the total lawyer of McGuireWoods LLP, has opened sors on a myriad of issues. population of a state. Kathleen M. McDaniel PLLC in Gloucester County. The firm’s focus is Anne Rocktashel has joined The Welter Howard Feller, a partner in on juvenile and education law, social Law Firm PC as an associate in its McGuireWoods LLP’s antitrust and security disability benefits, employment Northern Virginia office. Rocktashel trade regulation practice group in law, ERISA litigation, family law, and will focus on employment litigation, Richmond, has been nominated to be work as a guardian ad litem. The office is business torts, commercial matters, and vice chair of the American Bar located at 2894 George Washington business law. Association Section of Antitrust Law, Memorial Hwy, Hayes, Virginia 23072 effective August 2012. He will then serve and easily accessible to Mathews, www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 57 Professional Notices

Daniel B. Schy will join the law offices Jonathan Stone has joined Norris & Joanna L. Suyes has joined the Social of Derek P. Richmond as an associate St. Clair PC as an associate in the Security team at Marks & Harrison law focusing on family law. Schy previously Virginia Beach office. His practice will firm where she focuses on obtaining dis- worked for Legal Services of Northern focus on construction law and com- ability insurance and supplemental secu- Virginia. mercial litigation. rity income benefits for clients. She also handles personal injury and Fair Labor Standard Act cases for the firm.

Benjamin J. Trichilo has become a prin- cipal in McCandlish & Lillard PC. He joined the firm last spring as counsel in its litigation and health care groups. His main practice areas include insurance defense, personal injury, professional malpractice, workers compensation, and sports injury claims.

Matthew Von Schuch has joined Wharton Aldhizer & Weaver PLC. He works in the litigation practice group with a focus in civil litigation. He previ- ously tried matters in the Federal District Court and bankruptcy courts through his work at the United States Department of Justice. He was the lead Having Trouble counsel on a variety of cases, including fraudulent transfer, interpleader, trust fund recovery penalty, tax refund, and Passing the Bar? bankruptcy cases. Von Schuch also served as a Special Assistant United States Attorney in the United States Attorney’s Office for the Eastern District As a law school student you dedicated months in preparing for the Bar exam - the of Virginia where he prosecuted a variety final step in achieving a long-sought professional goal. Now you’re an attorney. You of felony and misdemeanor offenses. have clients, community status, a comfortable income but there’s another bar in your life - one that could put your legal career at risk! Are you drinking during the work day? Feeling guilty about drinking? Breaking promises to reduce your drinking or quit completely? You know you have a problem . . . but there is help.

Lawyers Helping Lawyers provides completely confidential, 24-hour assistance to attorneys and judges who are experiencing substance abuse or mental health issues. Services include assessment, intervention planning, treatment referrals, peer support, family Professional Notices counseling and rehabilitation efforts. LAWYERS Email your news to [email protected] For assistance call 1-877-545-4682 HELPING for publication in Virginia Lawyer. or visit www.valhl.org. LAWYERS All professional notices are free to VSB members and may be edited for The video, “Lawyers Helping Lawyers - Confidential Road to Recovery,” was recognized during length and clarity. the 65th Virginia Public Relations Awards with a Capital Merit Award in the external video category. To order a copy of the DVD, contact [email protected].

58 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org Classified Ads

CONSULTANTS & SERVICES EXAMINERS LIFE SETTLEMENTS: Sell life For confidential toll-free consultation AIRCRAFT APPRAISER/EXPERT insurance policies that are no available to all Virginia attorneys on questions related to WITNESS: Determine the true longer needed: $250,000+ face legal malpractice avoidance, claims repair, professional value of Factory Built, Antique, amount, insured age 65 or older, liability insurance issues, and law office management, Homebuilt, Rotorcraft or policy in force for at least 2 call McLean lawyer, John J. Brandt, who acts under the Commercial aircraft from years. Contact Steve Watson at auspices of the Virginia State Bar at Sopwith Camel to Boeing 767. VSPI, [email protected] or 1-800-215-7854. Valuations for divorces; records, (804) 740-3900. www.vspi.com. maintenance, appraisal reviews for litigation, insurance, taxes, OFFICE SPACE diminution of value. Previous LAW OFFICE: TURNKEY work includes banks, lawyers, OPERATION IN TYSON’S CORNER. individuals and the IRS. NAAA Market rate lease and close to Senior Aircraft Appraiser with 1M gross revenue. Main practice USPAP certification. Contact Dr. areas are Bankruptcy, Ronald L. Herold, appraiser@ Immigration and Contracts aircraft-appraiser.com, Litigation. Fully Bilingual in (703) 573-2222. English and Spanish legal sup- www.aircraft-appraiser.com. port staff. Please call (703) 864- 6171 for more information. ECONOMIST: Lost income for personal injury, wrongful death, RENTALS employment and discrimination cases. Valuation of small busi- ENJOIX ST. CROIX — nesses, pensions and securities 15% LAWYERS DISCOUNT!! for divorce and contract dis- U.S.Virgin Islands. Completely putes. University professor with Renovated Villa! New furniture, Advertisements and Classified Ads extensive experience. Dr. Richard new windows, new doors — Published five times a year, Virginia Lawyer is distributed to all new everything! Even Air B. Edelman, 8515 Whittier members of the Virginia State Bar, judges, law libraries, other state Conditioning in the bedrooms! Boulevard, Bethesda, MD 20817. bar associations, the media, and general subscribers. Telephone (301) 469-9575 or Our agent will greet you at the (800) 257-8626. Refs and Vita on airport and take you to our More information and complete media kits are available online at request. VISA/MC. Please visit at spectacular villa, “The Islander,” http://www.vsb.org/site/publications/valawyer, or you can contact www.economic-analysis.com. with breathtaking Caribbean Nancy Brizendine at (804) 775-0594 or [email protected]. views, located in the most desir- MED-MAL EXPERTS, INC. We able and prestigious east island have thousands of practicing, location. Our unique architec- board certified physician expert turally designed home includes witnesses in all specialties. Flat three MBR suites, private pool, ADVERTISER’S INDEX rate referrals. Your satisfaction all amenities. Walk to gorgeous AFY Computer Services LLC ...... 8 GUARANTEED. Case reviews sandy beach, snorkeling. Tennis, ALPS Corporation ...... 7 too, low flat rate. golf, sport fishing and scuba dive David Karro ...... 54 www.medmalExperts.com (888) five minutes away. We will pro- Geronimo Development Corporation ...... back cover 521-3601 vide you with everything you L. Steven Emmert ...... 8 need to know and do on our Minnesota Lawyers Mutual Insurance Company ...... 9 Mosaic Mediation ...... 9 QDROs: Reduce your malpractice island in the sun to make your National Legal Research Group ...... 54 liability by referring your client vacation perfect! Owner gives Pearl Insurance ...... 8 to a Virginia attorney. Call lawyers 15% discount! Call Suntrust ...... 6 Terese Colling, (202) 347-8000 Raymond S. Dietrich, Esquire at Virginia State Bar Members’ Insurance Center ...... 12 or email me at Colling@ 202.540.9107 or visit Wealth Counsel ...... 13 www.galleonnetwork.com. CollingSwiftHynes.com Check West LegalEdcenter ...... 7 out the website for the villa at stcroixvacations.com. www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 59 74th Annual Meeting

74th Annual Meeting Virginia Beach June 14–17, 2012

The Virginia State Bar’s Seventy-fourth Annual Meeting blew into Virginia Beach on brisk ocean breezes. W. David Harless was sworn in as president of the VSB, succeeding George Warren Shanks. Sharon D. Nelson became president-elect. A highlight was the second of what will probably become the annual “Judiciary Squares” CLE, sponsored by 1 the Young Lawyers Conference. The “squares”— Honorables all — were Jane Roush, Robert W. Wooldridge, S. Bernard Goodwyn, Angela E. Roberts, Cleo Powell, B. Waugh Crigler, Rossie D. Alston Jr. and his dummy, Deborah S. Roe, and Robert J. Humpreys. More than 300 lawyers attended this CLE, which is modeled on the old Hollywood Squares show, and watched the contestants — usually — get the answers right. 23 The day was packed with events and Weekly Lawyers Vieth/Virginia Peter CLEs on everything from antitrust to The speaker there was former trusts. Seminars included construction Justice John Charles Thomas, who law/local government law, criminal law, harkened back to his early career as a health law/general practice, litigation, newsman to present the who, what, real property/taxation, administrative/ when, where, why, and how of “diver- environment, bankruptcy law, and sity.” He allowed that our society has family law. come a long way, but we can’t rest. “We The Virginia Legal Aid Award could lose this,” he warned. 4 Luncheon featured, for the first time in Events at the annual meeting the 20-year history of the event, two 1. W. David Harless (center) is the 74th VSB president, included multiple award ceremonies, the succeeding George Warren Shanks. Sharon D. Nelson recipients — R. Peyton Whiteley and Council Reception and Dinner, the was sworn in as president-elect and will become the Abigail Turner. As Justice William Mims Friday night President’s Reception and president next year. pointed out in his opening remarks at Annual Banquet, the Lawyer’s Expo, a 2. Edward L. Weiner (left) and President-elect Sharon the luncheon, Whiteley and Turner both raffle for a free trip to the Midyear D. Nelson presented the Tradition of Excellence Award lived their lives as if they had taken to Seminar in Rome and, of course, bingo. to William L. Schmidt during the General Session on heart the words from Micah 6:8: “And Saturday morning. The award is sponsored by the what doth the Lord require of thee, but General Practice Section. to do justly, and to love mercy, and to 3. In keeping with a nineteen-year tradition, Executive walk humbly with thy God?” Director Karen A. Gould presents outgoing President Later on Friday was the first George Warren Shanks with a caricature by Michael L. Goodman, a Glen Allen lawyer and cartoonist. Diversity Conference annual meeting. Clarence M. Dunnaville Jr. became the 4. Christy E. Kiely (right) handed off the presidency of first recipient of the conference’s award, the Young Lawyers Conference to Brian R. Charville. which will be named in his honor. He accepted the award and joked that, “I’m not dead yet.”

VIRGINIA STATE BAR • 74TH ANNUAL MEETING

60 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org 74th Annual Meeting

1

2

3

1. The Senior Lawyers Conference recognized more than 150 lawyers who had been members of the VSB for fifty years. Two dozen posed for a group picture at the General Session. 2. Michael HuYoung, chair of the Diversity Conference, presented the inaugural Diversity Conference Award to Clarence M. Dunnaville Jr., for whom the award will be named. 3. R. Peyton Whiteley (left) and Abigail Turner each received the Virginia Legal Aid Award at a luncheon hosted by the Special Committee on Access to Legal Services. The awards were pre- sented by President Shanks. 4. Special Ethics Program speaker Michael H. Rubin with Kevin Edward Martingayle, VSB executive committee member and chair of the Better Annual Meeting (BAM) Committee.

4

JUNE 14 –17, 2012 • VIRGINIA BEACH, VIRGINIA www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 61 74th Annual Meeting

1

2

3 4 5 1. Eugene M. Elliot (left), Nancy M. Reed and Edward L. Weiner joined in the festivities at the Conference of Local Bar Associations annual meeting and breakfast. The CLBA handed out fifteen Awards of Merit and Certificates of Achievement. 2. Judge Rossie D. Alston Jr., of the Virginia Court of Appeals, and his alter-ego Little Bro, were among the “celebrities” who participated in the Judiciary Squares – Civil Procedure Edition CLE program sponsored by the Young Lawyers Conference. 3. W. David Harless was sworn in as the 2012-13 VSB president as his wife, Debbe, held the Bible that Harless’s mother gave him when he graduated from high school. 4. Virginia Supreme Court Justice William C. Mims gave the keynote address at the Virginia Legal Aid Award Luncheon in the Orion’s Roof dining room on Friday. 5. The Annual Meeting was packed with CLE programs, including this one Friday by the Litigation Section titled “Demise of the Civil Jury Trial: Change for the Better?”

6. Newly sworn-in President W. David Harless was sur- 6 rounded by his bow-tied University of Virginia Law School classmates, class of 1981, after the Friday night banquet. They are (from left) Matthew L. Jacobs, John A. Anderson, the Honorable Michael Urbanski, William R. Van Buren III, T. Mark Flanagan Jr., Terence Murphy, and Steve Pearson.

VIRGINIA STATE BAR • 74TH ANNUAL MEETING

62 VIRGINIA LAWYER | June/July 2012 | Vol. 61 www.vsb.org 74th Annual Meeting

1 Peter Vieth/Virginia Lawyers Weekly Lawyers Vieth/Virginia Peter

2

3

4 Peter Vieth/Virginia Lawyers Weekly Lawyers Vieth/Virginia Peter 1. Among those leaving the Council were left to right (first row): Jean K. Niebauer, Michael HuYoung, Andrea L. Bridgeman, Christy E. Kiely, Irving M. Blank, and (back row): Hugh T. Antrim, George Warren Shanks, Patrick B. McDermott, Wayne R. Hairfield, Robert L. Calhoun. 2. Douglas R. Burtch, of Richmond, blew away the field in the Thirty-first Annual Run in the Sun 5K, while his family cheered him on. They are, (from left), Addison, Douglas, Zachary, Jennifer, and Wesley. 3. The Lawyers Expo, sponsored by the VSB General Practice Section, featured law office products and 5 services, a book signing, margaritas, popcorn, and a lot of balloons. 4. Outgoing President George Warren Shanks presented the VSB with a painting done by his daughter, Cindy. 5. Participants in the Tenth Annual Tennis Tournament — Ronald Tweel, Jonathan Joseph, Erica Sartwell, Todd Sartwell, Michelle Harman, and Dan Gray — enjoyed sunny skies and very refreshing breezes. 6. Athletic activities include golf, volleyball, and early morning yoga by the sea.

6

JUNE 14 –17, 2012 • VIRGINIA BEACH, VIRGINIA

www.vsb.org Vol. 61 | June/July 2012 | VIRGINIA LAWYER 63 Ever needed an earlier version of a section of the Virginia Code? ® CaseFinder makes it easy: 1. We show you the text that is currently in effect . . . At the top of each section of the Virginia Code, we tell you the time period during which the displayed text is in effect. Within the text of the section, any cross-references to other Code sections are hyperlinked. If the Code section has been cited by any cases in our databases, the Cited In button at the top of the screen is active. And at the bottom, our exclusive “History” link opens up a page in our Virginia Code Archive, from which . . .

2. We show you how the General Assembly amended the section . . . A picture is worth a thousand words. Rather than a tedious written description, we simply display the words that were added, and the words that were removed. At the top, we identify the Act that made the change, and when it went into effect. If the Act included any additional clauses, which might contain relevant information, they are set out at the bottom.

3. Then we show you the text before those amendments. Again, we tell you the time period during which the displayed text was in effect. When amendments take effect in the future, or when earlier amendments expire in the future, we show the text as it will be effective at that future time.