2009 July

ICLEF and WEMMH are working to develop an impressive lineup of speakers for this year’s Midwest Intellectual Property Symposium, a two-day CLE event to be held at University Place Hotel and Conference Center in Indianapolis, IN. The Symposium will include presentations and discussions on a wide variety of intellectual property topics, including topical case reports, patent prosecution, trademark prosecution, trade secret law, biotechnology topics, and intellectual property litigation. Featured speakers during the luncheons will be Judge (ret.) Roderick McKelvie, who presided over more than 200 patent infringement cases during his 10 years on the bench of the United States District Court for the District of Delaware, and Mike Kirk, former Executive Director of the American Intellectual Property Law Association and avid proponent of patent reform. Additionally, WEMMH’s managing partner, Thomas Henry, will be featured on a panel of expert patent prosecutors to discuss his experiences in patent prosecution. The Symposium will be moderated by WEMMH’s Trial Practice Group Chair, Holiday W. Banta, and anyone interested in speaking opportunities at the event or information on attending the event should contact Ms. Banta. Click here to download a copy of the brochure and registration information.

We litigate in a digital age. As a result, electronically stored information (ESI) is subject to discovery in a lawsuit. Discovery demands that each side produce to the other side its information that is relevant to the suit. These days, business information is commonly “filed” in computers, servers and other electronic storage medium more so than in filing cabinets. These electronic sources are repositories of relevant ESI, which must be identified and produced in litigation.

How does a party identify all of the relevant information located in these electronic storage media? The “rules” for how to search ESI are still being written, but recent cases are laying out some boundaries.

In Qualcomm Inc. v. Broadcomm Corp., a district court in California found that Qualcomm’s failure to conduct basic searches on ESI prior to trial was equivalent to withholding documents. The penalty for not producing the 46,000 relevant documents was Broadcomm’s attorney’s fees – about $10 million. Importantly, the court believed that Qualcomm, its attorneys, or both had intentionally not searched for the highly relevant documents in order to preserve their case.

Qualcomm’s take home message: Make sure that your company searches all ESI relevant to the litigation. Attorneys handling your company’s litigation will need to understand your business’s structure, the various roles of your employees, and where information is kept. Any witness for deposition or trial will also need to have his or her data searched.

In Victor Stanley, Inc. v. Creative Pipe Inc., a district court in Maryland found that Creative Pipe had waived privilege on 165 electronically stored documents it had inadvertently produced to opposing counsel. The waiver allows opposing counsel to use the documents as evidence at trial, provided they are otherwise admissible. Importantly, the court determined that Creative Pipe “overproduced” as a result of not conducting reasonable searches, and not reviewing what they were producing.

In the digital age of litigation, companies must straddle the line between producing relevant ESI, but not “overproducing” ESI. Is there a method for doing this? Studies are still underway to evaluate ESI searching procedures and recommend standard processes for litigants. In the meantime, both Qualcomm and Victor Stanley agree that companies must be able to justify the search process they use. This includes choosing appropriate keywords; performing sophisticated searches when necessary; and “sampling” the results to assure it is yielding the expected results. Courts suggest the ideal is that parties devise and adhere to a joint protocol for searching.

While appropriate searching may seem intimidating, it is possible to do it appropriately and cost-effectively. Attorneys at Woodard, Emhardt, Moriarty, McNett & Henry possess the scientific and technical backgrounds necessary to ensure that a correct methodology is chosen for ESI searching. As stated in Victor Stanley, “…doing it right the first time is always cheaper than doing it over if ordered to do so by the court.” 250 F.R.D. 251, 261 (D. Md. 2008).

The Trademark Trial and Appeal Board (TTAB) has ruled, precedentially, that the correction of a false statement regarding use of a trademark in commerce, if made before a registration has been challenged, creates a rebuttable presumption that the registrant did not intend to commit fraud. As background, a trademark applicant must file a statement with the Trademark Office alleging that the applicant’s mark is being used in interstate commerce with the specified goods and/or services identified in the trademark application before a trademark can be registered. Such statements are also required to be made post-registration as part of the renewal process of a trademark registration. In this particular case, the registrant corrected its registrations by omitting the unused items from the Section 8 Declaration. This encouraging decision from the TTAB makes it vitally important to continually review trademark registrations to ensure that each good or service named in the registration is being used in commerce and, if not, remove such items from the registration before the registration is challenged. Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2008) [precedential].

On July 6, the Federal Circuit granted rehearing en banc in Tafas v. Doll regarding the USPTO’s power to implement new rules on restrictions for continuations and claim limitations.  No comment concerning the underlying opinion was given beyond announcing its vacatur and reinstatement of the appeal.  The original appeal was taken from a summary judgment decision in favor of plaintiffs Tafas, SmithKline Beecham Corp. et al., and the Federal Circuit initially affirmed in part and vacated in part.  Plaintiffs petitioned for the rehearing that was granted.  The parties jointly filed a request to stay the en banc review until 60 days after the U.S. Senate confirms David Kappos as the new director of the Patent Office, giving the new director an opportunity review the rules at issue and make any changes to the Patent Office’s position with respect to the proposed rules.

The Indianapolis-Marion County Public Library now provides five dedicated PubWEST patent searching terminals at its downtown Central Library location, thanks to a donation to the Library Foundation by Woodard, Emhardt. The five dedicated PubWEST computer terminals are located on the fourth floor of the Central Library at the east end. The Central Library is one of two designated Patent and Trademark Depository Libraries (PTDLs) in Indiana, the other being the Siegesmund Engineering Library at Purdue University in West Lafayette. As a designated PTDL, the Central Library is able to provide free public access to PubWEST, a web-based examiner search tool used by patent examiners at the U.S. Patent and Trademark Office, in addition to a variety of other patent and trademark resources. The PubWEST system is only available to the public at designated PTDLs and is a valuable inventor resource which is not otherwise available on the Internet. Please visit www.imcpl.org for library hours.

Although it is still several months away, the EPO will dramatically changes its practice effective April 1, 2010 relating to divisional applications and European search reports.  A review of the changes is presented below:

• Limitation on Filing Divisional Applications
  In addition to tight substantive limitations on divisional applications, the EPO will temporally limit such applications.  As of the effective date, any divisional application must be filed within 24 months of the Examiner’s first communication or a unity-of-invention communication.  A six-month grace period is provided for filing of divisional applications based on parent applications filed before the effective date.

• Requirement to Respond to Search Report
  As of the effective date, a response must be filed with respect to each EP search report.  The deadline for the response is six months from the publication date of the search report, or two months in the case of an extended search report.

• Invitation to Respond to PCT Written Opinion
  The EPO will not conduct a new search in PCT applications for which it performed the international search.  In line with the response requirement for EP search reports, the EPO will issue a notice requiring a response to the PCT Written Opinion after entry into the European regional phase.  The response will be due one month after the EPO’s notification.

• Changes to Amendment Practice
  As of the effective date, no voluntary amendments are permitted except when filed with a response to a written opinion, and further amendments are subject to the examiner’s discretion.  Applicants will be required to provide basis for amendments in the application text, and a one-month deadline will be set by notification if such basis is not provided with the amendments.

• Searching Multiple Independent Claims
  Present EPO practice is to search the first of multiple independent claims, particularly where a lack of unity of invention exists.  The new practice will have the applicant elect which claim to have searched.

Please contact us if you have any questions regarding the upcoming changes to EPO practice or would like to discuss the effects of these changes in greater detail.