A Publication of The New York Intellectual Property Law Association

August/September 2009 Bulletin In This Issue When Your Case May Hang on a Single Comma:

Article: Ariad Revives the Written Description Debate When Your Case under 35 U.S.C. §112, ¶1 May Hang on a Single Comma ...... 1, 3-5 By Dorothy R. Auth and John P. Halski

President’s Corner ...... 2 or over four decades, patent prac- requirement is. The rehearing en banc titioners have struggled to cut is bound to be one of the most closely Report on F through a seemingly ever-growing watched proceedings this year, and the Annual Dinner ...... 6-7 thicket of not necessarily consistent validity of countless patents may hang jurisprudence concerning the meaning on the grammatical significance of a Leadership in the of the first paragraph of 35 U.S.C. §112. stray comma. Practice of Law ...... 8-10 Of particular concern is whether the first paragraph of Section 112 only requires Basis for the Written Description Honorable that the specification enable the skilled Requirement William C. Conner reader to make and use the invention, or Originally appearing in 1870, the Tribute ...... 11-16 whether it also demands that the specifi- first counterpart of 35 U.S.C. §112, ¶1 cation convey that the inventor actually demands: Historian’s Corner ...... 16 possessed the claimed invention at the The specification shall contain time of the application. After years of a written description of the in- allowing the question to percolate, the vention, and of the manner and CLE Program Reports: Federal Circuit has at last decided to process of making and using • Patent/Trade tackle the controversy head on, having it, in such full, clear, concise Secret Comple- granted a petition for rehearing en banc and exact terms as to enable mentariness ...... 17 by the plaintiffs in Ariad Pharmaceuti- any person skilled in the art to cals, Inc. v. Eli Lilly and Co., 560 F.3d which it pertains or with which •Hot Topics in 1366 (Fed. Cir. 2009). Specifically, the it is most nearly connected, to Trademark & Federal Circuit will address whether make and use the same, and Copyright Law ...... 18-21 Section 112 contains a separate writ- shall set forth the best mode ten description requirement and, if so, contemplated by the inventor •Issue of Future what the scope and purpose of that of carrying out his invention. Damages/Ongoing cont. on page 3 Royalties Post eBay ...22 NYIPLA’s NYIPLA Calendar ...... 23 Tribute to Judge William C. Conner on pages 11-15

New Members ...... 23-24 The views expressed in the Bulletin are the views of the authors except where Board of Directors approval is expressly indicated. © Copyright 2009 The New York Intellectual Property Law Association, Inc.

NN Y Y I IP P L L A A PageAugust/September 1 www.NYIPLA.org 2009 September 2009 t is a privilege and an honor to write my first letter as President of our Association. The INYIPLA is a growing and vibrant organization, and I thank each one of you for your continued support of the Association and its mission. My term follows a highly successful year, and I would like to thank immediate past president Anthony Giaccio for his vision, leadership and dedication. Having been involved in NYIPLA activities for 20 years, I greatly appreciate the professional and social benefits of the Association. Excellent and ethical representation is a hallmark of the As- sociation and the opportunity to interact with so many attorneys who exemplify these values has been a true pleasure. I am fortunate to count a great number of friends among the current and former the leadership of Committee Chairs Richard Er- leaders of the Association and its membership. wine and Richard Martinelli and Board Liaison These are exciting and challenging times for Tom Meloro, has hosted two luncheon meetings. the NYIPLA and our practice. Our membership is Judge Clark of the Eastern District of Texas spoke growing and participation in committees, activi- at one meeting and Chief Administrative Judge ties and events is increasing. During my term as Fleming of the Board of Patent Appeals and President, I intend to enhance opportunities for Interferences of the U.S. Patent and Trademark our members to become engaged in the activities Office spoke at the other. of the Association. Please join me in this effort. • The Membership Committee, under the lead- This year, in addition to the filing of amicus ership of Committee Chairs Joseph DeGirolamo briefs, presentation of Continuing Legal Educa- and Paul Bondor and Board Liaison Anthony tion programs, our Judgesʼ Dinner and our Annual LoCicero, has been active throughout the summer Dinner and Awards Ceremony, some of my key in promoting membership in the Association. objectives include fostering cooperation with the • The Corporate Practice Committee, under Conner Inn of Court and finding avenues for the the leadership of Committee Chairs Alexandra NYIPLA to participate in the AIPLA spring meet- Urban and Susan McHale McGahan and Board ing which will be held in New York City. Liaison Jeffrey Myers, has been working on a Following are some notable committee ac- number of initiatives to increase participation by tivities that are already underway. corporate attorneys. • The CLE Committee, under the leadership of Committee Chairs Dorothy Auth and Richard • The Young Lawyers Committee, under the Parke and Board Liaison Anthony Giaccio, has leadership of Committee Chairs Sonja Keenan and Andrew Stein and Board Liaison Alice Bren-

PRESIDENT’S CORNER been working throughout the summer to plan the Fall one-day CLE program, which will be held nan, organized a happy hour event for associates on November 5, 2009. Publicity for this event and summer associates interested in intellectual has begun. property law in New York City. • The Amicus Committee, under the leadership Finally, I would like to extend my grati- of Committee Chairs Charles Weiss and John tude to Steve Quigley, Chair of the Publica- Hintz and Board Liaison David Ryan, has filed tions Committee, who was instrumental in amicus briefs at the Federal Circuit in Tafas v. overseeing this newsletter, including the trib- Doll , Princo v. ITC and Shire v. Sandoz. Chuck utes to Judge Conner. Miller, David Ryan and Charles Weiss wrote We are off to an excellent start of the Asso- the briefs in those cases, respectively, which are ciation year. I look forward to serving you during available on our website. my term as President and hope to see you soon at • The Meetings and Forums Committee, under an NYIPLA event.

N Y I P L A Page 2 www.NYIPL A.org cont. from page 1 There is no disagreement that this section includes at (CCPA 1981) (“This court ha[s] said that a rejection of least two disclosure requirements, i.e. “enablement” an amended claim under §132 is equivalent to a rejec- and “best mode.” The divide amongst jurists centers tion under §112, first paragraph.”). on the first eleven words of the sentence. In a sense, the entire controversy may be summed up as a question Raising the Bar for the Chemical Arts? of grammar, specifically whether the comma between In 1997, when faced with a new challenge over “invention” and “and” separates out two distinct predi- patentability of DNA sequences, the Federal Circuit cate phrases (the “written description of the invention” again turned to the Ruschig holding, but now applied the on the one hand and the remaining language that con- holding outside the context of Section 132. In Regents of stitutes the “enablement” requirement on the other) or Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. simply divides two descriptive phrases. Compare In re 1997), the court held that originally submitted claims Barker, 559 F.2d 588, 594-95 (CCPA 1977) (Markey, may fail the written description requirement of §112 dissenting) (arguing that the comma merely separates when the specification does not convey to the skilled out descriptive phrases of a single requirement); Enzo person that the inventors had possession of the invention Biochem Inc. v. Gen-Probe Inc., et al., 323 F.3d 956, recited in the claims at the time of filing. The facts here 971 (Fed. Cir. 2002) (Lourie, concurring) (arguing that related to claims directed to mammalian, vertebrate and the comma clearly divides two distinguishable require- human insulin cDNA sequences, but a specification ments). However, despite the commentary about the that described (i.e., provided the nucleic acid sequence “errant” comma over the years, the story of the “written for) a rat single DNA sequence. The court held that “an description” requirement begins not with an elementary adequate written description of a DNA requires more school fixation on the proper rules of English grammar than a mere statement that it is part of the invention but in a classroom down the hall where the early pio- and reference to a potential method for isolating it; what neers in chemistry struggled to lay down the rules for is required is a description of the DNA itself.” Id. at identifying (and patenting) new chemical compounds. 1566, quoting Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Ironically, the modern “written description” require- Cir. 1993). Thus, Lilly extended the written description ment is widely recognized as originating in 1967 with the requirement to impose a higher standard of disclosure landmark In re Ruschig decision (379 F.2d 990 (CCPA on biotechnological inventions, i.e., one where long 1967)), where a claim directed to a chemical species accepted prophetic examples would no longer suffice. was invalidated because the specification provided no Post Lilly , the question remained as to whether clue that the claimed species was a preferred member this new standard was specific to the chemical arts. of the disclosed genus. The claims at issue were found Over the years, the “written description” requirement invalid under 35 U.S.C. §132 on the basis of new matter has been applied occasionally outside the context introduced by claim amendment. Faced with a specifi- of the chemical arts. See, e.g., In re Wilder, 736 F.2d cation that may have satisfied the enablement require- 1516 (Fed. Cir. 1984) (concerning a mechanism for ment yet provided no clear evidence that the inventors indicating the location of information recorded on a had actually identified the compound later claimed by dictating machine); Tronzo v. Biomet, Inc., 156 F.3d amendment, the esteemed Judge Rich declared it insuf- 1154 (Fed. Cir. 1998) (concerning a generic shape for ficient “in finding oneʼs way through the woods ... to be cup implants inserted into hip bones); LizardTech, Inc. confronted by a large number of unmarked trees” with v. Earth Res. Mapping, Inc., 424 F.3d 1336 (Fed. Cir. no “blaze marks” to “single out a particular tree.” 379 2005) (concerning data compression of digital images F.2d at 996. The court therefore rejected the claims on by “wavelet transforms”). However, it has not escaped the basis that the original disclosure failed to convey “in anyoneʼs attention that the chemical arts face challenges any way, the information that appellants invented that not encountered in other areas of research. specific compound” at the time of filing. Id. The Lilly case and two others illustrate the direction, In keeping with the fact pattern in Ruschig, the “writ- vis-à-vis possession, the written description requirement ten description” requirement served for nearly 30 years has taken in the chemical arts. The first of these challenged as a companion piece to the “new matter” prohibitions whether a biological deposit was sufficient to satisfy of Section 132, policing the introduction of new mat- the written description requirement for claims directed ter by claim amendment that exceeded the scope of the to nucleic acid probes where no sequence information specification as filed. See, e.g., In re Barker, 559 F.2d at is provided. Enzo Biochem Inc. v. Gen-Probe Inc., et 594 (Rich, concurring) (noting that the Ruschig “written al., 323 F.3d 956 (Fed. Cir. 2002). In its first review description” requirement can be very easily absorbed of this case, the Enzo Court held that mere possession into §132) and In re Rasmussen, 650 F.2d 1212, 1214 of the claimed invention was not sufficient to meet the cont. on page 4 N Y I P L A Page 3 www.NYIPLA.org cont. from page 3 “statutory mandate” to adequately describe the claimed cDNA is not defined or described by the mere name invention. Enzo Biochem Inc. v. Gen-Probe Inc., et al., ʻcDNAʼ” but rather requires “a kind of specificity usu- 285 F.3d 1013, 1021 (Fed. Cir. 2002). “Even if [it] were ally achieved by means of the recitation of the sequence correct”, wrote Judge Lourie for the majority, “that one of nucleotides that made up the cDNA”. 119 F.3d at of skill in the art could routinely sequence the deposited 1568-69. Later, in University of Rochester, the Court material and so obtain a description of those deposits, went so far as to conclude that the patent itself was clear that description is not in the patent.” Id. at 1022. But and convincing evidence of its own invalidity because in a dramatic reversal, the Federal Circuit in its second of its lack of any disclosure relating to the Inhibitor. review of the case, held that the deposited sequences, Judge Lourie analogized the nascent state of the DNA incorporated by reference in the specification, were art in these cases with use of the term ʻautomobileʼ in “thus accessible from the disclosure” and therefore a patent in the nineteenth century, and how this word satisfy the “written description” requirement. 323 F.3d alone at that time “would not have sufficed to describe at 966. a newly invented automobile; an inventor would need Next, in 2004, the Federal Circuit reviewed a claim to describe what an automobile is, viz., a chassis, an directed to a method for inhibiting a particular molecule engine, seats, wheels on axles, etc.” 358 F.3d at 923. that resulted in (potentially) therapeutic effects where The recent Ariad decision again raises the issues of the molecule being inhibited (the Target) was disclosed, what constitutes sufficient disclosure in a field of art but the molecule inhibiting it (the Inhibitor) was not that is new and not yet defined. The claims at issue known. University of Rochester v. G.D. Searle & Co., concerned methods for the reduction of NF-KB activ- Inc. 358 F.3d 916 (Fed. Cir. 2004). Before this case, ity – a protein complex that plays a regulatory role in written description in the biotech area had been largely a number of diseases – where NF- KB was the Target, limited to nucleic acid sequences. Here, the court but the Inhibitor was not yet known. Here, prophetic agreed with the defendants that the claimed method was examples of Inhibitor molecules were described, but “nothing more than a hope-for function for an as-yet-to- just as in University of Rochester, the majority held that be-discovered compound, and a research plan for trying these hypothetical molecules for reducing NF-KB activ- to find it.” Id. at 926-7. Without any disclosure of the ity were merely prophetic, particularly in view of the Inhibitor, the specification did not describe the claimed “new and unpredictable field” of the art at the time of method sufficiently to allow the skilled artisan to carry filing, “where the existing knowledge and prior art was it out and was therefore invalid under 35 U.S.C. §112, scant.” 560 F.3d at 1372. first paragraph. Judge Linnʼs concurring opinion in Ariad challenged the majority for sidestepping what could have easily Are Written Description and Enablement Inex- been an “enablement” analysis by relying instead on the tricably Intertwined? nebulous “written description” requirement (echoing “Perhaps there is little difference in electrical and one of the early criticisms of Judge Markey in Ruschig) mechanical inventions between describing an invention (560 F.3d at 1380), while both plaintiffs petitioned for and enabling one to make and use it,” wrote Judge Lou- a rehearing en banc to settle for once and for all the rie in a concurring opinion in Enzo Biochem, “but that is correct reading of Section 112. Judge Linnʼs position not true of chemical and chemical-like inventions.” 323 echoes the admonition of Judge Markey 30 years earlier F.3d at 974. Tellingly, the most significant cases in the in Barker, who questioned the two-pronged standard: jurisprudence of the “written description” requirement “I cannot see how one may in ʻfull, clear, concise and concern the chemical arts. Whereas Ruschig address- exact termsʼ enable the skilled to practice an invention, es the identification of a specific chemical compound and still have failed to ʻdescribeʼ it.” 559 F.2d at 595 where only the general chemical formula is set forth in (Markey, dissenting). Judge Rader in Enzo Biochem the specification, Lilly involves claims directed to broad similarly questioned the “written description” require- groups of DNA sequences, where the specification only ment as “an ill-defined disclosure doctrine” that has described a single cDNA sequence, the rat gene, and essentially replaced “enablement.” While the oppo- University of Rochester involves methods of inhibiting nents of the “written description” requirement see it as a target where the inhibitor is not yet known. Citing the subverting the “enablement” requirement, other patent relatively primitive state of art of cDNA identification systems have long recognized and reconciled the two at the time, the Federal Circuit in Lilly found that “a separate standards without controversy. N Y I P L A Page 4 www.NYIPL A.org Ariad in the International Context could re-establish the limited application of Ruschig to On the international scene, the European Patent new matter introduced by claim amendment in prosecu- Convention, for example, requires “clear and concise” tion, as Judge Rich suggested over 30 years ago in Bark- support in the specification for “the matter for which er. Alternatively, the Court could reinterpret the line of protection is sought by the claims” in Article 84, and cases as simply extrapolated applications of the enable- separately requires disclosure of the claimed invention ment requirement, thus tying the failure to convey pos- “in a manner sufficiently clear and complete for it to session of the claimed invention with an intrinsic failure be carried out by a person skilled in the art” in Article to sufficiently enable the claimed invention in certain cir- 83. These separate provisions are analogous to the sepa- cumstances. As a third alternative, the Court could offi- rate written description and enablement requirement in cially bless a standard requiring separate enablement and the U.S. Similarly, in China, Article 26 (3) requires that written description requirements, based on the malleable the description set forth the invention in a manner suf- language of Section 112, in cases where the grasp of the ficiently clear and complete so as to enable a person prophetic inventor in a new field of discovery clearly ex- skilled in the relevant field of teaching to carry it out, ceeds his reach. This last approach would align the US while Article 26(4) states that the claims be supported patent system more closely with our global neighbors. by the description and state the extent of the patent pro- Conclusions tection sought. Though the so-called “written description” require- ment has inspired a dedicated and passionate opposi- Rehearing Ariad en banc tion, it has also garnered proponents who dispute the Now that the Federal Circuit has at long last decided opposition from nearly every angle of consideration, to address the uncertainties of Section 112, the entire from the meaning of a comma to the practical impact line of “written description” cases from Ruschig to the “written description” requirement has had on sci- Ariad face renewed scrutiny. On the one hand, it is un- entific advancement. The patent attorney has much to likely that the Court will dismiss over 40 years of stare take away from this decades long debate born out of decisis by sweeping aside the “written description” one courtʼs frustration with an early researcherʼs fail- requirement entirely. On the other, the Section 112 ju- ure to describe a particular chemical compound in a risprudence discussed above provides several possible disclosed genus. While later courts used the statutory compromises between the hard line approaches taken language in Section 112 as a peg to hang the Ruschig in Lilly and its progeny and the strident objections of doctrine on, the course of jurisprudence – from the the dissenters in those cases. For example, the Court oblique uncertainties of DNA sequencing in Lilly to the obviousness of the same process in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) – suggests a disturbing fluidity in the Courtʼs perception of the state of the art. In any event, the status quo is suddenly up in the air, and where the Court goes from here, the eyes of patent practitio- ners everywhere will follow. The final outcome in Ariad will provide new guidelines for every step of the patenting process, from initial disclosures to litigation. Though the legal grammarians may still Dr. Dorothy Auth is a Partner in the Intellectual Property Group at debate the import of an ambiguous Cadwalader, Wickersham & Taft LLP and is currently the Chair of the CLE comma to Section 112, those more committee of the NYIPLA. She can be contacted at [email protected] outcome-oriented will hopefully find clarity after 40 years of juris- John Peter Halski is an associate at the firm, practicing in the same group. prudential ambiguity. He can be contacted at [email protected]

N Y I P L A Page 5 www.NYIPLA.org ANNUAL DINNER May 20, 2009

Incoming Association President Mark Abate wel- comed members and guests at the NYIPLAʼs Annual Dinner at the University Club. Mark expressed his appreciation for outgoing President Anthony Giac- cio and with First Vice President Theresa Gillis as the eveningʼs Master of Ceremonies, presented the Inventors of the Year and Intellectual Property Law Educator Award. Inventors of the Year The Inventor of the Year award recognizes an

Incoming President Mark Abate and outgoing President Anthony Giaccio individual or group who, through inventive talents, has made worthwhile contributions to society by promoting “the progress of Science and useful Arts.” Two awards were granted this year: Dr. Sadeg Faris for his contributions related to electro-mechanical sciences. Dr. Faris epitomizes the consummate inventor with over 200 patents spanning diverse fields in technology including superconductiv- ity, electro-optics, energy, water tech- nologies, DNA se- quencing and nano- lithography. Dr. James J. Dr. Sadeg Faris receiving the NYIPLA Inventor of the Year Award from John Moehringer Wynne, Dr. Samu- el E. Blum and Dr. Rangsaswamy Srinivasan for their work in the field of medicine. Their significant invention (U.S. Patent No. 4,784,135) led to the current success of LASIK and PRK laser vision correction procedures. Dr. Rangsaswamy Srinivasan and Dr. James J. Wynne receiving the NYIPLA Inventors of the Year Award from John Moehringer

2009 Intellectual Property Law Educator Award – Karl F. Jorda

Professor Jorda, former president of this Associa- tion, and currently the David Rines Professor of Intellectual Property Law and Industrial Innovation at the Franklin Pierce Law Center, was the recipient of the NYIPLAʼs 2009 Intellectual Property Law Educator Award. Professor Jorda teaches Technol- ogy Licensing and Intellectual Property Manage- ment at the Franklin Pierce Law Center and also Prof. Karl F. Jorda receiving the NYIPLA Intellectual Property directs the activities of the Germeshausen Center Law Educator Award from Mark Abate and Terri Gillis for the Law of Innovation and Entrepreneurship. N Y I P L A Page 6 www.NYIPL A.org Conner Writing Competition Winners

This award, named in honor of the late Honor- able William C. Conner, Senior District Judge, Southern District of New York, and past presi- dent of the NYIPLA, and namesake of the new Conner Inn of Court for Intellectual Property Law recognizes excellence in writing by law stu- dents in the field of intellectual property law. Judge Conner presented the awards to: Victoria Elman of Cardozo School of Law Victoria Elman receiving the Conner Writing (First Place) for her paper Girl Talk on Trial in Competition Award from Hon.William C. Conner 2009: Could Fair Use Prevail? and Brian R. Day of The George Washington University Law School (Second Place) for his paper Collective Manage- ment of Music Copyright in the Digital Age: The Online Clearinghouse.

NYIPLA Diversity Scholarship Award

The NYIPLA awarded its first diversity scholarship program grant of $10,000 to Fordham Law School. Accepting on behalf of Fordham were Professor Hugh Hansen and Karen A. Deasy of the law schoolʼs Office for Development. The Association will award at least one scholarship annually to offset tuition costs for a student in a local law school with an interest in intellectual property law who is from a background traditionally underrepre- sented in the legal profession. A Diversity Scholarship Prof. Hugh Hansen and Karen Deasy of Fordham Law School receiving the Committee has been created to enlist the support of, NYIPLA Diversity Scholarship Grant from Mark Abate and Edward Bailey and donations from, the local IP community. Keynote Speaker – Hon. Richard Linn, Circuit Judge, United States Court of Appeals for the Federal Circuit

Judge Linnʼs talk focused on the factors that contributed to an attorneyʼs ability to be a leader in the practice of law: integrity, judgment, confidence, diligence, vision and trust. His address is 2009-10 Officers and Board: seated (left to right): Alice Brennan, Treasurer; Dale Carlson, President-Elect; Mark Abate, President; Theresa Gillis, First Vice President; printed in its entirety in this issue Charles Hoffman, Secretary; standing (left to right): Anthony Giaccio, Immediate Past President; of the Bulletin. John Moehringer, Board Member; John Delehanty, Board Member; David Ryan, Board Member

N Y I P L A Page 7 www.NYIPLA.org Leadership in the Practice of Law Address by Hon. Richard Linn of the Court of Appeals for the Federal Circuit at the NYIPLA Annual Meeting and Dinner, The University Club, New York May 20, 2009 am delighted to be here and to have the oppor- to such an inquiry might briefly read the patent, ar- tunity to celebrate with you another outstanding range a meeting with the client, and inquire into the Iyear of the New York Intellectual Property Law background facts leading up to the letter. It would Association. Because so much of the success of this not be unusual for the lawyer to recommend that a association is due to the efforts of its outstanding formal infringement and validity investigation be leaders, and because we are celebrating not only undertaken. Assuming the client agrees, the lawyer the successful completion of another year but also might then diligently undertake the investigation; the accomplishments of this yearʼs award winners, studying the patent, examining the prosecution who are by definition leaders among members of history, and doing whatever else might be needed the bar, I thought I would focus my remarks on the to render a sound legal opinion. In due course, the topic of leadership. results of the investigation will be reported to the The dictionary definition of “leadership” is client, the clientʼs questions will be answered, and “the office or position of a leader; the capacity to the lawyer might be satisfied that he has effectively lead.” The dictionary goes on to define “leader” as and efficiently done what the client has asked. At “a person who has commanding authority or influ- that point, the lawyer may think he or she is done. ence; a person who leads.” Finally, the dictionary For sophisticated clients, that may be so. But for definition of “lead” is “to direct on a course or in a some clients, they may still be at a loss as to what direction; to guide someone along a way.” to do next. Considering these definitions, it is apparent This reminds me of a story I have told a few that leadership in the context of the legal profession times before about a man who is flying in a hot air has relevance to many things. For example, leader- balloon and realizes he is lost. He spots a man on ship in the law, and in particular IP law, can mean the ground and shouts down, “Excuse me, can you leadership in bar association activities, leadership in tell me where I am?” The man below says, “Yes, law firm management, and leadership in teaching, you are in a large hot air balloon, hovering about 80 inventing, writing, or promoting diversity. A study feet above my head.” “You must be a lawyer,” says of leadership in the legal profession surely would the balloonist. “I am,” replies the man. “How did include an examination of the actions and experi- you know?” “Well,” says the balloonist, “everything ences of lawyers engaged in all of those kinds of you have told me is technically correct, but itʼs of things. But this evening, what I want to talk about no help to me whatsoever.” is something more fundamental. Something that Some clients facing the infringement charges I goes to the very heart of the legal profession: the described earlier may have no better sense of the di- attorney-client relationship. Specifically, I want to rection they should take after receiving the infringe- talk to you about the leadership roles attorneys play ment and validity opinion than they had before they in the professional relationships they have with their obtained the advice of counsel. They may not fully clients, and the expectations clients have of lawyers understand their options. More importantly, they in those relationships. may not even know what further questions to ask or A leader in the practice of law should, of course, what further legal advice to seek. Such clients need possess the ability to give the client sound legal lawyers who not only have the ability to give sound advice. But a true leader must not only be able to legal advice but the leadership skills to help them give sound legal advice, but must also have the skill find answers to problems they cannot solve on their to guide and to lead the client in the right direction. own. That requires more than just the ability to do For example, a client may seek advice on how to assigned tasks. It requires an investment in learning contend with a typical patent infringement cease- about the client and the clientʼs interests and in being and-desist letter. A competent lawyer responding sensitive to and perceptive of the clientʼs needs. It

N Y I P L A Page 8 www.NYIPL A.org means asking questions and listening carefully to the a suspicion and a certain contempt for lawyers if clientʼs answers, giving guidance both in the answers for no other reason than the natural discomfort that provided and in the follow-up questions posed. It arises from having to trust another human being in means taking the initiative to go above and beyond matters both important and not fully understood. what is asked, to try to help the client find the right But I am encouraged by the extent to which the direction and make the right choices. These are the time honored ideals of the legal profession are being traits of good leadership in the practice of law. embraced of late in such widely popular activities Of course, there is nothing like leadership as the American Inns of Court. by example. And despite all the jokes suggesting It seems to me that the seemingly perplexing the contrary, leadership in the practice of law first conclusion that lawyers will “say anything and do demands that lawyers understand the meaning of anything” is nothing more than a reflection of the ap- integrity, professionalism, and civility before offer- parent contradiction--or at least tension--between the ing advice to others. ethical rule instructing lawyers to zealously pursue Several years ago, before coming on to the the interests of their clients and the separate ethical bench, I worked with a jury consultant in connection rule obligating lawyers to conduct themselves as with a trade secret case. As part of our preparations, officers of the court--presumably a more balanced our consultant conducted a poll of potential jurors. position. In the book “Law in America,” the authors Among the questions asked in this poll were a series comment on the popular perceptions of lawyers in of questions intended to develop a sense of how the terms reminiscent of the famed glass of water that potential jurors in that community perceived law- the optimist sees as half full and the pessimist sees yers. When asked to rank lawyers in comparison as half empty. They note that lawyers are seen by with other professions, lawyers were ranked near the some as “a reflection of peopleʼs hopes” and by oth- bottom along with used car salesmen and insurance ers as “a reflection of peopleʼs worst fears.” Again, brokers. When asked why the lawyers were held diametrically opposed perceptions and seemingly in such relative disrespect, the polled individuals contradictory conclusions. answered that “lawyers will say anything and do On reflection, I have come to understand that the anything to advance their clientʼs cause.” ethical constraints under which lawyers function are The consultant then asked the same potential not contradictions and are not in tension at all. For jurors what they would look for in a lawyer if they one cannot serve as an officer of the court without were in serious trouble and needed to hire an at- zealously pursuing the interests of his or her client. torney to represent them. Interestingly enough, the Nor can one zealously serve the interests of a client answer was exactly the same: they would look for without acting as an officer of the court. The two a lawyer who would “say anything and do anything go hand in hand. cont. on page 10 to advance their cause.” I must say that at the time I found that absolutely fascinating. After all, how could it be that the criteria used to hold lawyers in disrespect were the same criteria used to select the lawyer they would most want to represent them? This seemed to me to be self-contradictory and inconsistent. I think it is fair to say that over the years, we have seen high and low watermarks in the reputation and conduct of lawyers. There is now, and I suppose always will be, Anthony Giaccio, Hon. Richard Linn, Mark Abate

N Y I P L A Page 9 www.NYIPLA.org cont. from page 9 Being a zealous advocate means being creative, thus requires the judgment it takes to achieve results being diligent, and being dogged in the pursuit of the and to do it in a way that will invite future retention relevant facts. But it does not mean misrepresent- by the client the next time the client is confronted ing, obscuring or concealing material information. with a legal problem. It means being scholarly in the quest to find an Confidence--you must instill confidence in understanding of the law applicable to your clientʼs your clients. A true leader must have the confidence case and being candid with your client and the court. to carry out decisions made, without doubt or hesita- It means telling your client when he has a case and tion. The facts are not always going to be entirely when he doesnʼt. It means cooperating with your favorable. Indeed, in most cases, there will be facts adversary at all times, not to compromise strategic that are troubling. Likewise, the law may not always advantage, but to advance the case to resolution- be fully supportive of your clientʼs case. But once promptly, fairly and in the interests of justice. you have examined your clientʼs options and have The point here is that the jury poll participants developed a strategic plan to achieve the result your were right. Lawyers will do anything and say any- client is after, you must instill confidence, not only thing to advance the cause of their clients, and that in your client but in all those around you, that you is not a reason to hold lawyers in disrespect but is are on the right path to success. entirely proper when done with the honesty, intel- Diligence--there is no substitute for hard work, ligence, and fairness expected from an officer of the thoroughness, and attention to detail. Lawyers who court and a member of a learned profession. And are leaders in the practice of law know this and they how well these interests are maintained in balance do it well. They read, they study, they examine, they is a true sign of leadership in the practice of law. reflect and they challenge their own conclusions In my view, leadership in the context of the until they are satisfied they have worked out the best attorney/client relationship has at its core six es- approach possible. Every successful lawyer I know sential values, and I will comment briefly on each: works incredibly hard and tries to confront every integrity, judgment, confidence, diligence, vision challenge with diligence. and trust. Vision--leaders have vision. They come to Integrity--you cannot be a leader and expect think in terms of goals, results, and objectives. They clients to follow and benefit from your advice if know where they are going and how to get there. your integrity is compromised. A true leader must They think out of the box and anticipate not only command authority and garner support for the ac- what needs to be done today, but will need to be tions he or she determines are in order. Clients have done tomorrow. neither the time nor the inclination to risk further And finally, trust--a leader in the practice of law complicating the already complicated legal problems must conduct himself or herself in a way that com- they face by associating themselves with lawyers mands respect and engenders trust. Clients are not whose integrity is subject to question and whose interested in learning the law and may have neither authority, for that reason, is open to challenge. It is the ability nor the time to understand the legal nice- as simple as that. And in practice, you will be con- ties of the problem before them. They have to trust tinually challenged to cut corners and compromise that the lawyers who represent them will do the right your integrity. Donʼt let it happen. things and will look after their interests. A leader Judgment--a true leader in the practice of law knows the importance of trust and will take great knows how to listen to a client, knows enough to pains never to compromise or abuse that trust. be skeptical and to hesitate in reaching conclusions As members of the intellectual property bar, until all of the relevant facts are learned, and knows and more specifically as members of the New York enough about the clientʼs business to be able to for- intellectual property bar, you should be very proud mulate and determine a course of conduct and a legal of the fact that you have within your ranks some of strategy that will best serve the clientʼs interests. In the finest leaders in the legal profession, exemplified this sense, judgment includes results, which are what by the officers of the NYIPLA who are here with us most clients are after. In todayʼs complex world, and by the distinguished lawyers you honor tonight. clients look to lawyers to solve problems--efficiently I am privileged to be in your company and I thank and effectively. To be a leader in the practice of law you for the chance to address you. N Y I P L A Page 10 www.NYIPL A.org Hon. William C. Conner March 27, 1920 - July 9, 2009 The Hon. William firms and banks in the En- C. Conner, a past Presi- ron matter. Other notable dent of the New York In- cases involved copyright tellectual Property Law infringement of photos Association, died on July of the actor James Dean, 9, 2009 at the age of 89. publicity rights for the Marx Brothers estate, and Born in Wichita misleading advertisements Falls, Texas, Judge Conner about the side effects of received a B.B.A. from the the painkillers Advil and University of Texas at Aus- Tylenol. Regarding this last tin and an LL.B. from the case, Judge Conner wrote University of Texas School in his opinion: “Small na- of Law. He was nominated tions have fought less for to the district court for the their survival with less Southern District of New resources and resourceful- York in 1973 by Presi- dent Richard M. Nixon ness than these antagonists on the recommendation have brought to their epic of Sen. James Buckley struggle for commercial whose search committee primacy in the O.T.C. an- convinced him that the algesic field.” Southern District needed a patent law expert. Judge Conner assumed senior status Judge Conner’s early interest in ama- in 1987 and remained active on the bench teur radio was supplemented with courses until his death. As recently as last year, he at Harvard and M.I.T. and he later provided denied ASCAP’s request for a 3 percent roy- electronics support on two U.S. Navy aircraft alty from songs streamed over AOL, Yahoo carriers fighting in the Pacific during World and RealNetworks, granting a 2.5 percent War II. Judge Conner moved to New York after royalty instead. the war. One of his early patent matters as an attorney at Curtis, Morris & Safford involved During his practice as a patent attorney the basic patent on the first commercially suc- from 1946 through 1973, Judge Conner served cessful office photocopying system. the IP community with great distinction, in- cluding a term as president of the NYIPLA in His judicial career ranged well beyond 1972-73. His legacy in our Association is well patents. He presided over Litton Industries’ established and will continue to thrive through 1981 antitrust suit against AT&T in which the Conner Writing Competition which an- the jury’s $92 million damages award (which nually awards cash prizes for law students’ was automatically tripled) was upheld by the papers and as the namesake of the recently United States Supreme Court. Judge Conner founded Conner Inn of Court. supervised the implementation of a consent order governing ASCAP’s licensing of songs to Judge Conner is survived by his wife of radio stations and served as special mediator in 65 years, the former Janice Files, and their three the settlement of claims filed against brokerage sons and one daughter.

Page 11 Tribute to Judge William C. Conner BY MARK ABATE, PRESIDENT OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION

It is with great sadness that I tell Judge Mukasey, Judge Preska (the Court’s Rules Committee Chair you that we have recently lost one of our at the time), M.J. Pittman, Rob Scheinfeld, Dan Devito and myself most thoughtful and esteemed judges to to discuss the Association’s proposed local patent rules. sit on the bench, the Honorable Wil- The judiciary and legal profession have been enriched by liam C. Conner. Judge Conner’s enthusiastic and thoughtful contributions, even Many of you were well-acquainted as he enjoyed the many roles he played over a long and event- with Judge Conner, as he was a fixture ful career. His legacy includes the NYIPLA Conner Writing at NYIPLA events. He attended our Competition, which annually awards cash prizes for law stu- annual Judges’ Dinner, the black-tie dents’ papers. Judge Conner found great pleasure in the writing event at the Waldorf=Astoria that at- competition, and each year he would ask for the papers and read tracts over 3,000 people each year, and them before personally making the presentation of the awards is known as one of the seminal social to the students at our annual dinner. He would comment on events for the patent bar. Judge Con- the topic of each paper, often telling stories of cases he presided ner also attended our Past Presidents’ over involving the very issues addressed in the papers. Dinner every year and participated in Judge Conner will be sorely missed, but his legacy will con- many of our CLE programs. Always by tinue to inspire. his side at these NYIPLA events was his treasured wife, the former Janice Files, whose gracious presence as a past The Judges of the first lady of the Association welcomed United States District Court for the new and familiar faces. Southern District of New York Judge Conner relished his role as Cordially invite you to serving as a mentor to many NYIPLA presidents and always made the time A Memorial Service to promote the Association’s ideals of for development and administration of intellectual property interests. At the The Honorable William C. Conner Past Presidents’ Dinner, to which past presidents, officers and board members United States Courthouse, 500 Pearl Street, NYC are invited, he would recount entertain- ing stories of NYIPLA events of the Ceremonial Courtroom - 9th Floor past, reliving the rich history of the Association and passing it on to the Friday, November 6, 2009 next generation of leadership. On a personal note, I recall visiting 4:00 p.m. Judge Conner in his chambers in White Plains, New York a few years ago with Reception to Follow in the immediate past president Anthony Charles L. Brieant Conference Center - 8th Floor Giaccio. We met to discuss NYIPLA activities and solicited his help in Sponsored by increasing the involvement of his col- leagues in the Southern District of New the Hon. William C. Conner Inn of Court York. Judge Conner called then Chief Judge Mukasey, made an introduction, RSVP: October 15, 2009 and was instrumental in facilitating greater S.D.N.Y participation in our 212-805-0504, [email protected] events. This included a meeting with

Page 12 Tribute BY JUDGE RICHARD LINN In the ten years I have been a judge on the Fed- Judges’ Dinner. That is why our time together at that eral Circuit, I can remember missing the NYIPLA event was so special. I know that when Patti and I Judges’ Dinner only once. It is a truly remarkable arrive at the cocktail reception next year there will gathering of the who’s-who of the New York intel- be an emptiness in our hearts knowing that our dear lectual property bar in a resplendent setting. Each friend will not be there. year, my wife Patti and I would look forward to a Many who know me appreciate that I have a fantastic evening among colleagues and friends. The special interest in the American Inns of Court. I high point of the evening was always walking into have been an active member of the Giles Rich Inn the judges’ reception and seeing across the room Bill of Court for the past decade and have worked across and Janice Conner. Bill would keep an eye out for the country to help form new Inns of Court focused me and when he saw me come in, would smile and on intellectual property. I was gratified last year when wave me over. He and Janice were our “official” greet- Anthony Giaccio expressed an interest in putting ers. The evening only began after we all exchanged together an Organizing Committee to form a new hugs. IP focused Inn of Court in New York. I was even At those receptions, we would always reminisce more pleased when I learned that the organizers about our days in private practice and catch up on decided to name the Inn after Judge Conner. interesting things that happened to us in the past I remember vividly the look on his face when he year. He was very curious about recent develop- got the news and the joy both he and Janice showed ments at the Federal Circuit and supportive when at the inaugural dinner meeting of the Inn last Janu- he thought I had written a particularly interesting ary. He loved the idea of the Conner Inn and the and important opinion. I don’t ever remember him ideals it represented—civility, professionalism, and being critical of my opinions, although I am sure excellence in the law. These are traits that charac- there were at least one or two with which he might terize his entire professional career. I am grateful to have quibbled. all those who made the Conner Inn a reality in his We had similar backgrounds in private practice lifetime. Naming the Inn after him was a wonder- as patent attorneys and both spent time tinkering ful and altogether fitting tribute to an outstanding with radios and tuning into the world as amateur judge, a caring family man, and a cherished friend radio operators. We had a special bond that over who I miss very much. the years grew into a special friendship. Living in different cities made it hard to get together, but we Judge Linn is a judge on the U.S. Court of Appeals for always knew that we would see each other at the the Federal Circuit You Are Cordially Invited to the Inurnment Service of

Honorable William C. Conner

Thursday, November 5, 2009 at 1:30 pm

Arlington National Cemetery, Arlington, Virginia

Please arrive at the Arlington National Cemetery Administration Building promptly at 1:30 pm in your own vehicle, which you will need to drive from the Administration Building to the Inurnment Service.

RSVP: October 15, 2009 212-908-6419, [email protected]

Page 13 Personal Recollections of Judge Conner BY DAVID H.T. KANE

Having been asked by the Association’s Historian singular coherence they had brought to patent law to share a few of many pleasant memories of Judge from the Court of Appeals for the Federal Circuit. Conner, it is appropriate that I begin with my oldest The Circuit Judges would have none of it, and strongly memory from the Fall of 1973. Bill Conner was im- rejoined that the Federal Circuit itself might not have mediate past president of the then - called “New York come into being if Judge Conner had not paved the Patent Law Association”. One day, the senior partner way by illustrating the benefits derived from coherent in my firm remarked that he guessed Bill Conner had application of patent law, many years before the Federal decided to accept a Federal judgeship. This remark was Circuit’s creation, when he took up his duties on the based on contact the partner had received from the Federal bench in the Southern District of New York. FBI doing a pre-nomination background check. The My association with the judges of the Federal Cir- nomination shortly followed with confirmation oc- cuit Court through the Court’s Bar Association has curring in a lightning fast five weeks (which included made clear to me that the warm sentiments expressed the Thanksgiving Holiday)! To wit: “Nominated by for Judge Conner that day are not unique to Chief Richard M. Nixon on November 9, 1973, Confirmed Judge Markey and Judge Rich, but rather are com- by the Senate on December 13, 1973.” monly shared among the judges of the Federal Circuit Some years after Judge Conner had settled in at then and now. the Southern District of New York, I appeared be- On a personal level, my wife Siegrun and I have fore him with an adversary from St. Louis. I can no always looked forward to the Waldorf dinner where longer remember who was arguing for what proposi- we were sure to find Bill and Jan Conner settled at a tion, but I do remember Judge Conner’s concluding table and greeting us with warmth as we caught up remarks to us that day. As we both headed for the with one another on the affairs of the day. door of his chambers, he looked up from his desk and Many great stories flowed from Judge Conner, said with absolute deadpan expression, “I knew both including this one which contained the seeds of his your fathers” (both of whom were patent attorneys). career in patent law. It deals with the time he flunked We waited at the door for the judge to complete his his military physical, but was saved as if by miracle thought -- perhaps “and you’re a credit to your Dads” when he mentioned his nascent radio operator skills but he left the thought unexpressed. As we descended as he left the building and was overheard by a recruiter to Foley Square, the St. Louis attorney and I imagined looking for someone with just such a background. that the comparison Judge Conner refrained from This led to a further period of intense study at the making with our distinguished fathers was not going Texas ranch of Jan’s father, and a successful retake of to be so favorable. Bill Conner of Wichita Falls, Texas the physical and subsequent entry into MIT courtesy was never one to mince words. of the U.S. Navy. This, in turn, led to service as an In the Fall of 1989, I organized a luncheon for officer in the new science of radar on an aircraft past presidents of the Association that was held on a carrier. It also led to near ejection from a high-flying splendid Fall day at a very long table in the Yale Club’s aircraft over the Solomon Islands during WW II. roof-top dining room. Attending were the always sup- On that mission, he opened the canopy of a gunner’s portive Judge Conner (Pres. ’72-’73), as well as two position, and stood up to take a picture of the South visitors from Washington, Federal Circuit Judge Giles Pacific thousands of feet below, as requested by a S. Rich (NYIPLA Pres. ’50-‘51) and Federal Circuit comrade back on the aircraft carrier. Suddenly the Chief Judge Howard T. Markey. The lunch included plane lurched into a steep and twisting dive, nearly the usual robust exchange of compliments and barbs ejecting radar officer Conner from his photo perch. A among the “former greats” present. (If memory serves, well-engaged safety harness saved the day for all who John Tramontine (Pres. ’85-‘86) at one end of the long came to know Judge Bill Conner throughout his long table and Doug Wyatt (Pres. ’83-’84) at the other were career at bar and bench. particularly active in this phase of the proceedings.) The highlight was a sincere exchange of compli- Mr. Kane, a past president of our Association [’88-’89], ments between and among the judges. Judge Conner is of counsel with the firm Locke Lord Bissell & Liddell. saluted Judge Rich and Chief Judge Markey for the He can be contacted at [email protected].

Page 14 Celebrating the Legacy of Judge Conner Hon. William C. Conner Inn of Court he NYIPLA co-sponsored a dinner The Conner Inn is the seventh IP- Tcelebrating the inauguration of The focused Inn of Court in the nation. To- Hon. William C. Conner Inn of Court at the gether, these Inns comprise the “Linn Inn Union League Club of New York on Janu- Alliance”, which serves to facilitate the ary 15, 2009. Judge Conner had served our exchange of program information among IP community with distinction as a patent the IP Inns, and to welcome attendance at attorney, as Past President of our Associa- Inn meetings across the country by visit- tion, and as a District Judge in the South- ing members from other IP Inns. ern District of New York. Then NYIPLA President The Conner Inn (www.con- Anthony Giaccio delivered the nerinn.org) comprises a cross- welcoming remarks. The Din- section of judges, lawyers and ner Committee was chaired by law students having an interest NYIPLA Board Member Thomas in IP law. The goal of the Inn is Meloro and the Commemorative to encourage civility, excellence Journal Committee was chaired and professionalism within the by then NYIPLA’s First Vice Pres- profession. ident Dale Carlson.

L to R: Melvin Garner, John Lane, Prof. Hugh Hansen, Hon. Timothy Dyk, Hon. Paul Michel, Hon. Colleen McMahon, Hon. William C. Conner, Hon. Barbara Jones, Hon. Richard Linn, Hon. Pauline Newman, Anthony Giaccio, Thomas Meloro Page 15 HISTORIAN’S CORNER eral Fed- the of Michel Judge Chief for clerk to writing competition, Matthew Dowd, went on great jobs. One recent two-time winner of the get to on go to them inspired doubtless have students the to praise of words his years, the writing competition named in his honor. Over NYIPLAʼsthe student of law winners the to awards out handing his of occasion the on Dinner Awards and 20, Meeting May our at Annual spoke 2009 he recently, Most and adead-pansenseofhumor. graciousness polite a with and sharp-witted, our before speak to always way Association, family. Time and time again he went out of his Conner andtheNYIPLA tothank.” Judge have definitely “I observed: Matthew learning andteaching. teach what heʼd learned, and he never stopped to and learn to loved He mind. to fore-most comes curiosity intellectual His haul. long a the about it was what wonder may Weman that catalyzed his productivity over such fledgling Associationʼs reputationgrew. our as up grew he Association, our of birth ciation immediate family, was patent law. Our Asso- most, apart from his beloved wife Jan and his B His actions made clear that what he loved Circuit. Upon gaining this opportunity, this gaining Upon Circuit. and most-productive life. Born before the y any measure, Judge Conner lived a full and its members became his extended One Epic Shining Moment” One EpicShiningMoment” c Asso- our before S t inspira- gave Conner Judge Elect. President- as and Historian, NYIPLA the as servesDana, a partner at Wiggin & Carlson, Dale ional speeches speeches ional iationʼs larger larger iationʼs everal times times everal “As TimeGoesBy- by DaleCarlson Page 16 sion occa- the on 1997 in Judiciary Federal the at the NYIPLA Waldorf Dinner in Honor of speech his was stand-out One gatherings. sador ambas- Associationʼsour as Conner Judge sion, variations lead to theall sametold, inevitablewas story conclu- the whom to and when story has several variations, depending upon Worldduring Islands War that II. Although Judge Connerʼs plane trip over the Solomon about tale hair-raising a tells Bulletin recollections” this “personal Kaneʼs avid of section tribute special the in appearing “down-the-road”. read interesting an for make doubtless will that one is answer long The could”. being human one “no course, of is, answer short D “Inaugural DinnerJournal”. site on the William C. Conner Inn of Court web- makes for an interesting read. It can be found (which boils down to “Yes-and-then-some”) answer long “Yes”,the be to answer short the know now all we Although Federal Bench?”. the on Happiness Find Attorney Patent a “Can entitled: was It Bench. the to earlier,decades elevated being after shortly two speech from his is Dinner Waldorfwell-known NYIPLA less the Perhaps at S. Rich(NYIPLA Pres.ʻ50-ʼ51). that evening with the Federal Circuitʼs Giles podium the shared ʻ72-73) Pres. (NYIPLA Conner Judge 1996). Winter 4, Number 6, (VolumeJournal Bar Circuit Federal the in nationally, largely because it was published celebration. His speech became well-known that wedid. time extended the for less much instance, first the in us amongst Conner Judge had We may wonder who will succeed succeed will who wonder may We at : at of our Associationʼs 75th anniversary 75th Associationʼsour of namely that weʼre very lucky to have to lucky very weʼre that namely to the world in all things patent. The patent. things all in world the to by clicking on clicking www.connerinn.orgby

CLE Program TOPIC: Patent/Trade Secret Complementariness

On May 15, 2009, the NYIPLA Com- Professor Jorda offered several advan- mittee on Meetings and Forums hosted a tages that trade secrets have over patents. Trade Continuing Legal Education (CLE) luncheon secrets can last indefinitely (e.g., the Coca-Cola at the Harvard Club, presented by Professor formula). Trade secrets are also enforceable Karl F. Jorda of Franklin Pierce Law Center. immediately without awaiting any government Professor Jordaʼs program was entitled “Pat- grant or approval. ent/Trade Secret Complementariness: An Finally, Professor Jorda debunked many Unsuspected Synergy.” myths surrounding trade secrets. Such myths Professor Jorda discussed how patent include that U.S. patent lawʼs “best mode” and trade secrets can be used to complement requirement precludes maintaining both patent each other, creating a broader and more com- and trade secret protection, that trade secrets prehensive “seamless web” of intellectual can protect only unpatentable “know how,” property protection. Trade secrets can act as a and that a subsequent third-party patentee can “backup” to patent protection in case the latter prevent a trade secret holder from practicing is determined to be invalid or unenforceable. its own invention. Moreover, trade secrets can protect intel- Professor Jorda was asked a number of lectual property that cannot be patented, i.e., questions from an interested audience. Several does not meet the statutory requirements for audience members engaged Professor Jorda patentability. Professor Jorda also noted that in a discussion as to whether the “best mode” as patent applications are usually filed very requirement for U.S. patents should be retained early in the development process, and that the in patent reform legislation presently making most commercially useful “know-how” often its way through Congress. is not created until afterwards, trade secret protection can be very valuable. CLE PROGRAMS

Kevin Reiner and Professor Karl F. Jorda

N Y I P L A Page 17 www.NYIPLA.org CLE Program TOPIC: Hot Topics in Trademark & Copyright Law On June 3, 2009, the NYIPLA hosted the 2009 Spring Half-Day Trademark and Copyright CLE Program and Luncheon at The Princeton Club. Speakers included Howard J. Shire of Kenyon & Kenyon; Rita Rodin Johnston of Skadden, Arps, Slate, Meagher & Flom and a Director on the ICANN Board of Directors; Nadine H. Jacobson of Fross Zelnick Lehrman & Zissu; Fernando Torres, Senior Economist at Consor Intellectual Asset Management; Anna Erenburg of Cadwalader, Wickersham & Taft; Peter J. Toren of Kasowitz Benson Torres & Friedman; and Kathleen E. McCarthy of King & Spalding. The program was moderated by Amy J. Benjamin of Benjamin Law PC and Chairperson of the NYIPLA’s Trademark Law and Practice Committee.

Rescue.com – Keyword Buys – Now That sion. Rescuecom also raised the doctrine of “initial “Use” Has Been Accepted, How Will “Likeli- interest confusion” alleging that when consumers hood of Confusion” Be Established? type the RESCUECOM trademark into the Google Howard Shire provided an overview of the Res- search engine, they will be initially confused when cuecom v. Google case in which Rescuecom sued they see and click on advertisements for competi- Google for trademark infringement and dilution tors. Mr. Shire discussed how Rescuecom might alleging that 1) Google was selling the RESCUE- go about proving initial interest confusion and the COM trademark as a keyword to Rescuecomʼs obstacles it faces including the heavily fact-driven competitors, and 2) advertising for Rescuecomʼs nature of the analysis and the difficulty in designing competitors appeared in the sponsored search re- and conducting a survey on the Internet to establish sults when RESCUECOM was typed in the Google confusion. search engine. The District Court for the Northern Mr. Shire also commented on the only reported District of New York dismissed the action, but on keyword advertising case to have advanced to trial April 3, 2009, the Court of Appeals for the Second – GEICO v. Google. In GEICO, a survey attempted Circuit unanimously vacated the dismissal holding to measure initial interest confusion by having that keyword search advertising constitutes action- participants enter “GEICO” into the Google search able “trademark use” within the Lanham Act. Mr. engine and then viewing the “results page” which Shire discussed how the Second Circuitʼs holding showed five sponsored links alongside the organic significantly narrowed what many perceived to be listings. Two “results” pages were shown to the the precedential holding of 1-800 Contacts, Inc. participants. The first was an actual Google search v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005), results page from April 2004 which showed five stating that the Northern District in Rescuecom and sponsored links for GEICOʼs car insurance com- several other district courts in the Second Circuit petitors. The second or “control” group was shown had “misunderstood” and “overread[]” 1-800 to a “results” page created specifically for the survey mean that the inclusion of a trademark in an internal which displayed only advertisements for NIKE ap- computer directory cannot constitute “use in com- parel in the sponsored links on the right side. The merce” under the Lanham Act. court had many problems with the survey. Most Mr. Shire explained that Rescuecomʼs holding that importantly, advertisements which used GEICO in keyword sales constitute “use in commerce” brings the text should have been removed so as to determine the Second Circuit into the mainstream view because whether consumers would have been confused by Rescuecom must now prove that Googleʼs keyword those advertisements where GEICO was not used in advertising sales are likely to cause consumer confu- the text of the advertisement. The survey was also

N Y I P L A Page 18 www.NYIPL A.org insufficient to prove a likelihood of confusion where Notice; a Uniform Rapid Suspension System (URS); the GEICO trademark did not appear in the text of Post-Delegation Dispute Resolution Mechanism at the advertisement. The court found that GEICO Top Level; Thick WHOIS; and expansion of test for failed to produce evidence that the use of GEICO as string comparison during initial TLD evaluation. a keyword, without more, causes consumer confu- Ms. Johnston discussed each of these proposals in sion. The court did, however, find that the sponsored detail and explained that it was not too late to get links which referenced GEICO in the text qualified involved in the evaluation of these proposals. as trademark infringement for which “Google may be liable.” Recent and Proposed Changes to the Madrid Protocol ICANN Domain Name Proposed New Rules Nadine Jacobson discussed the Madrid Agree- Rita Rodin Johnston discussed ICANN, its mis- ment and Madrid Protocol (collectively, the Madrid sion and how policy is developed. She then ex- System), how it worked, the changes that went into plained the proposals currently under consider- effect on September 1, 2008, and proposals for ad- ation by ICANN including new gTLDs (general ditional changes which are still pending. The 2008 top level domains), such as .eco, .sport, and even changes included the right to submit an application .tallchick. Currently, there are 21 gTLDs; the pro- in English, French or Spanish; increased fees; and posal would make the number of gTLDs limited the repeal of the Safeguard Clause. only by the imagination. The proposal also includes The original Safeguard Clause provided that for new registries for cities, countries, regions, and members of both the Protocol and the Agreement, affinity groups. If approved, this proposal would the provisions of the Agreement would apply as bring about the biggest change in the Internet since between the country of origin and the extension its inception 40 years ago. countries. The new rule provides that only the Pro- The overarching issue is the impact of additional tocol will apply between Member States bound by gTLDs on trademark owners. ICANN has received both the Agreement and the Protocol – with two significant public comment regarding the increased important exceptions: 1) the extended time limit of costs and burdens trademark owners would face if 18 months (instead of 12 months) for a trademark this proposal is passed. Additional cost-effective office to issue a refusal are inoperative; and 2) the trademark protection measures have been requested Protocol provisions that enable Member States to by many groups. Ms. Johnston explained that an charge an individual fee, rather than rely upon the Implementation Recommendation Team (IRT) had WIPO complementary and supplementary fee sys- been formed by ICANN to study the proposal and tem, are inoperative. The overall effect of the 2008 make a presentation to ICANNʼs Board on June changes is to bring the benefits of the Protocol to all 21, 2009. In addition, a group of 15 organizations Member States that are parties to both the Agreement and individuals who had submitted comments on and the Protocol, while retaining certain benefits of the First Draft Report of the IRT were also invited the Agreement. to address the IRT. This group included WIPO, The proposed changes fall into two categories: trademark owners, non-trademark Internet users, The Issue of Replacement and Elimination of the members of the securities industry and financial Basic Registration. Under the current system, if markets associations, organizations operating RPM an owner of an International Registration (IR) also (Nominet UK, eBay), organizations that proposed owns a national or regional registration for the same new RPM (Deloitte, Demand Media), and Brand mark and “all the goods and services listed in the Protection Registrars. national or regional registration are also listed in The initial IRT Report presented five proposals for the IR” and the IR is later in time, then the IR is additional trademark protection: IP Clearinghouse, deemed to replace the national or regional registra- Globally Protected Marks List, IP Claims and Watch tion “without prejudice to any rights acquired by the cont. on page 20 N Y I P L A Page 19 www.NYIPLA.org cont. from page 19 national or regional registration.” This replacement different ways of obtaining value from intellectual happens automatically. The IR owner can request property assets such as sale, license, settling with that the replacement be noted on the International creditors, using the IP as security for loans, or litiga- Register but it is not a requirement for the replace- tion to enforce an intellectual property asset against ment to be effective. Ms. Jacobson explained that a third party infringer. He also discussed the process this practice has been confusing and problematic of direct marketing assets in bankruptcy versus a for many reasons. Proposed actions to address the static auction of intellectual property assets. problems of the replacement include establishment of an Internet forum that PTOs of Member States How Are Trademarks Viewed in Bankruptcy Proceedings? can use for harmonizing the various current prac- tices, and a WIPO survey of current PTO practices Anna Erenburg discussed the different types of regarding replacement which would hopefully be bankruptcy proceedings and whether trademarks made available not only to PTO personnel, but also are considered “property” under bankruptcy law. to users. She then discussed how to dispose of assets in a bankruptcy proceeding, the diligence that needs Trademark and Copyright Valuation, Mon- to be done before purchasing intellectual property etization and Disposition in Bankruptcy assets from a bankrupt entity and what needs to be Fernando Torres of Consor Intellectual Asset Man- done to perfect a sale or license of those assets. agement, which specializes in valuation and moneti- zation of intellectual property assets, explained the Security Interests/Assignment of Trade- marks in Corporate Transactions issue of intellectual property assets in the context of Consorʼs valuation and sale of the intellectual Peter Toren discussed the process of assigning property assets in the bankruptcy proceedings of and licensing trademarks and the potential pitfalls. Fortunoff and Washington Mutual bank. He also discussed how trademarks can be used as Mr. Torres discussed the many types of intellectual security or collateral for loans. He explained that a property assets that should be considered beyond security interest does not transfer ownership of the patents, trademarks and copyrights, such as license mark to the lender; it is simply an agreement to as- agreements, software, websites, e-commerce solu- sign the trademark rights to the lender in the event tions, secondary brands and characters, customer that the debtor defaults. It is important, therefore, databases, formulae and proprietary test results. He that the document make it clear that only a security explained how these assets are categorized and val- interest is being granted, not an assignment of the ued and that a debtor may own assets which might mark. An improperly drafted document runs the risk be very valuable to a third party, but hardly used by of being an assignment in gross which could destroy the debtor. Mr. Torres also explained the different the trademark rights. Mr. Toren also explained how methods for determining the value of an intellec- to perfect a security interest and provided recom- tual property asset, such as looking at conventional mended practices. standards of value (cost, fair market value, income Fraud at the Trademark Office: TTAB’s from the asset) as well as potential royalty streams, Medinol Approach Hits the Federal Circuit market multiples or the value of waiting to exploit an asset to account for market uncertainty. With Kathleen McCarthy gave an explanation and his- respect to trademarks, Mr. Torres indicated that in tory of the fraud standard before the Trademark Of- bankruptcy, the value of a trademark is on average fice leading up to the 2003 decision in Medinol Ltd. only 13.6% of the going concern value, that two- v. Neuro Vax, Inc. Under Medinol , it is fraud when a thirds of trademarks in liquidation sell at discounts false statement, misrepresentation or omission of a between 81% and 91% and that global trademarks material fact is made that the affiant knew or should are more valuable per $1 of sales. He also discussed have known was false and but for the false state- ment, the PTO would not have issued or maintained

N Y I P L A Page 20 www.NYIPL A.org the registration. Intent to deceive is not subjective CANYON WEST was opposed on the ground that it but is inferred from knowledge of the falsity of the was descriptive. In response, the applicant amended statement or reckless disregard for the truth. the services to delete certain types of transportation. Ms. McCarthy discussed two cases on appeal be- The opposer then amended the Notice of Opposi- fore the Federal Circuit: Bose Corp. v. Hexawave, tion to assert fraud on the ground that the mark was Inc. and Grand Canyon West Ranch, LLC v. Huala- never used for the deleted goods. The services in the pai Tribe. In Bose, Bose Corp. opposed an appli- application were considered accurate but vague and cation to register HEXAWAVE on the ground of after a discussion with the applicant, an Examinerʼs likelihood of confusion with Boseʼs WAVE marks. Amendment issued amending the services. Thus, One of the registrations pleaded by Bose had been there was silence as to whether the Examinerʼs renewed in 2000 and included goods no longer Amendment was correct with respect to use in manufactured by Bose, although it continued to re- commerce because there was not a sworn statement pair those goods that had been previously purchased by the applicant concerning the amended services. by consumers. Boseʼs General Counsel who signed During the opposition, the applicant deleted services the renewal believed that the repair of those goods which had been subjects of the Examinerʼs Amend- was use in commerce. Hexawave counterclaimed for ment. The issues on appeal are whether the TTAB fraud and sought to have the registration cancelled. erred in finding fraud absent a finding that the ap- On issue in the appeal is whether the TTAB had plicant intended to deceive the PTO with a material erred in determining that a trademark owner who misrepresentation regarding its right to register the repairs goods it manufactured and sold bearing its mark and whether the TTAB lacked substantial evi- mark must also own the repaired goods at the time it dence in finding that the applicant knew (or should transports them in commerce in order to satisfy the have known) that it was not using the mark for the use in commerce requirement of 15 U.S.C. §1127. disputed services at the time of the trademark ap- In Hualapai Tribe, the applied-for mark GRAND plication was filed. CALL FOR MEMORABILIA

The new Committee on Records is seeking publications, photographs, records, and other Association documents and materials (even the golf trophy!) for contribution to the NYIPLA’s archives. Please dig through your files and send items of interest to either of the co-chairs:

Peter Saxon, Esq. Thomas L. Creel, Esq. Fitzpatrick, Cella, Harper & Scinto Law Offices of Thomas L. Creel, LLC 30 Rockefeller Plaza 25 Beekman Place, Suite 5 New York, NY 10112 New York, NY 10022 212-218-2218 212-421-4213 [email protected] [email protected]

N Y I P L A Page 21 www.NYIPLA.org CLE Program TOPIC: The Issue of Future Damages/Ongoing Royalties Post eBay n June 26, 2009, the NYIPLA presented a irreparable injury, 2) remedies available at law are OCLE luncheon program at the Harvard Club inadequate to compensate, 3) balance of hardships on The Issue of Future Damages/Ongoing Royal- favors injunction and 4) public interest would not ties Post eBay. The speakers at this program were be disserved by an injunction. Hon. Ron Clark, United States District Court for The discussion then shifted to various consider- the Eastern District of Texas in Beaumont, Texas ations related to damages, with a significant focus and Brian Napper, Senior Managing Director at on how future damages may or may not differ from FTI Consulting, Inc. in San Francisco, California. the quantification and assumptions used in deter- Richard Erwine, Counsel at Quinn Emanuel Urqu- mining past damages, that is, damages up to trial. hart Oliver & Hedges, LLP in New York and Chair Judge Clark led a lively discussion as to whether of the Associationʼs future damages is an Meetings and Forums issue that should be Committee, moder- taken up by the court, ated the panel. the current jury that The program be- was also deciding on gan with Mr. Erwine infringement, valid- providing important ity and past damages, historical and recent or a new jury. Fur- context regarding ther, Mr. Napper led the entitlement to a a discussion as to the permanent injunction underlying assump- once patent infringe- Left to Right: Richard W. Erwine, Debra Resnick, Hon. Ron Clark and Brian W. Napper tions a damages ex- ment and validity pert is asked to make were adjudged. Post the Supreme Courtʼs May 15, in determining past damages and whether those 2006 decision in eBay v. MercExchange, 547 U.S. assumptions change economically when determin- 388 (2006), considerable court time (often a few ing future damages in the form of a compulsory months after or, at times, immediately subsequent license rate. Having overseen a number of patent to the patent infringement trial) has been focused trials in which many of these issues have arisen, on testimony and evidence related to the enunci- Judge Clarkʼs views on these subjects were clearly ated four factors that must be considered for the en- and rightfully the focus of the rather active discus- try of a permanent injunction: 1) plaintiff suffered sion at the luncheon. ARTICLES

The Association welcomes articles of interest to the IP bar. Please direct all submissions by e-mail to: Stephen J. Quigley, Bulletin Editor, at [email protected]

N Y I P L A Page 22 www.NYIPL A.org NYIPLA Calendar CLE PROGRAMS October 16, 2009 k Hon. Arthur J. Gonzalez, US Bankruptcy Court, Southern District of New York. l Topic: The Impact of Bankruptcy on Intellectual Property Harvard Club • 35 West 44th Street, NYC November 5, 2009 k Fall One Day CLE Program l The Princeton Club • 15 West 43rd Street, NYC Four panels covering timely issues in: ~ Latest Developments in Statutory Interpretation ~ Litigation ~ Licensing ~ Ethics

k Save the Date l

Friday, March88th Annual 26, 2010 Dinner Waldorf=Astoriain Honor of the HotelFederal Judiciary

k Save the Date Twenty-Sixth Annual Joint Patent Practice Seminar l

Thursday, April 29, 2010 Hilton New York More programs to come! For Additional Information see: WWW.NYIPLA.ORG

NEW MEMBERS Last Name First Name Firm Telephone E-Mail

Adams Jacob Ryan Newman Myers Kreines Gross Harris, P.C. (212) 384-7024 [email protected] Austin Erin J. Student - Benjamin N. Cardozo School of Law Avigliano Charles Bryan Cave LLP (212) 541-1138 [email protected] Beehler David W. Robins, Kaplan, Miller & Ciresi LLP (612) 349-0802 [email protected] Blessing Carolyn A. Kenyon & Kenyon LLP (212) 908-6848 [email protected] Borodach Samuel Fish & Richardson, P.C. (212) 765-5070 [email protected] Bozzuti Joseph J. Powley & Gibson, P.C. (212) 226-5054 [email protected] Casino Joseph Amster, Rothstein & Ebenstein LLP (212) 336-8028 [email protected] Cohen Andrew Darion Jones Day (212) 326-3939 [email protected] Comack Brian A. Amster, Rothstein & Ebenstein LLP (212) 336-8098 [email protected] Conlin Jan M. Robins, Kaplan, Miller & Ciresi LLP (612) 349-8218 [email protected] DeSimone Thomas R. Gibbons P.C. (212) 613-2077 [email protected] Eng, Jr. Joseph D. King & Spalding LLP (212) 827-4318 [email protected] Etra Joseph Paul, Weiss, Rifkind, Wharton & Garrison LLP (212) 373-3709 [email protected] Fox Matthew A. Amster, Rothstein & Ebenstein LLP (212) 336-8103 [email protected] cont. on page 24 N Y I P L A Page 23 www.NYIPLA.org cont. from page 23 NEW MEMBERS Last Name First Name Firm Telephone E-Mail

George Kenneth P. Amster, Rothstein & Ebenstein LLP (212) 336-8000 [email protected] Hollander Liel Amster, Rothstein & Ebenstein LLP (212) 336-8078 [email protected] Holmes, Ph.D. Andrew Darby & Darby PC (212) 527-7608 [email protected] Jacobsen Charlotte Fitzpatrick, Cella, Harper & Scinto (212) 218-2576 [email protected] Kasdan Michael Amster, Rothstein & Ebenstein LLP (212) 336-8000 [email protected] Keisner C. Andrew Paul, Weiss, Rifkind, Wharton & Garrison LLP (212) 373-3697 [email protected] Kim Adrian H. Student - Benjamin N. Cardozo School of Law (415) 577-9000 [email protected] Lai Nicole Sidley Austin LLP (212) 839-5388 [email protected] Lazebnik Ron Fordham University School of Law (646) 312-8721 [email protected] Lewin Harley McCarter & English, LLP (203) 399-5900 [email protected] Lueck Martin R. Robins, Kaplan, Miller & Ciresi LLP (612) 349-8587 [email protected] McCaffrey Norajean Amster, Rothstein & Ebenstein LLP (212) 336-8000 [email protected] Nguyen Brian M. Carter, DeLuca, Farrell & Schmidt LLP (631) 501-5700 [email protected] Noda Samantha The Law Office of Samantha French Noda, LLC (917) 364-9340 [email protected] OʼNeil Michael Bingham McCutchen LLP (212) 705-7692 [email protected] Ornelas Ariana Sidley Austin LLP (212) 539-5409 [email protected] Pacelli Andrea King & Spalding LLP (212) 827-4063 [email protected] Sullivan Stephen K. Fitzpatrick, Cella, Harper & Scinto (212) 218-2272 [email protected] Sum-Ping Joan Karen Ropes & Gray LLP (212) 841-0424 [email protected] Supko Mark Crowell & Moring LLP (202) 624-2734 [email protected] Usvjat Regina [email protected] Vern Max Amster, Rothstein & Ebenstein LLP (212) 336-8000 [email protected] Wizenfeld Charles Goodwin Procter LLP (212) 813-8800 [email protected] Zagar Paul M. Darby & Darby PC (212) 527-7000 [email protected] Zipkin Neil M. Amster, Rothstein & Ebenstein LLP (212) 336-8120 [email protected]

THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION, INC. Telephone (201) 634-1870 www. NYIPLA.org The Bulletin is published periodically for the members of The New York Intellectual Property Law Association. Annual Non-Member Subscription is $25.00. Single copies are $10.00 each. Correspondence may be directed to the Bulletin Editor, Stephen J. Quigley, Ostrolenk Faber LLP, 1180 Avenue of the Americas, New York, NY 10036 • (212) 596-0590 • e-mail: [email protected]

Officers of the Association 2009-2010 Committee on Publications President: Mark J. Abate Committee Leadership President-Elect: Dale L. Carlson Chair and Bulletin Editor: Stephen J. Quigley 1st Vice President: Theresa M. Gillis Graphic Designer: Johanna I. Sturm 2nd Vice President: Thomas J. Meloro Committee Members: Treasurer: Alice C. Brennan William Dippert John Gulbin Secretary: Charles R. Hoffmann Robert Greenfeld Immediate Past President: Anthony Giaccio Mary Richardson N Y I P L A Page 24 www.NYIPL A.org