Monday, March 09, 2009

When is an Inventor not an Inventor?

In Nartron Corp. v. Schukra U.S.A., Inc., the Federal Circuit considered the standards for adding an alleged co-inventor to an existing patent. The case serves as a reminder that the simple fact that more than one person contributes to a development project does not mean that every member of the project should be a named inventor on patents that issue as a result.

Schukra makes lumbar support systems for automobile seats. Schukra contracted with Nartron for Nartron to design a control system that would allow existing car seats to massage undoubtedly grateful passengers. A Schukra employee, one Benson, provided the Nartron project team with the idea of an "extender for a lumbar support adjustor" that eventually found its way in to a third-level dependent claim in US Patent 6,049,748. Benson was not one of the named inventors on the patent.

Nartron designed the control system, secured the '748 patent, and eventually sued Schukra and a Schukra supplier for patent infringement. The supplier co-defendant raised the issue of whether Benson was an inventor who should have been named on the patent and also joined as a plaintiff to the infringement suit; since Benson was a Schukra employee and contributed to the invention as such, this would have made it difficult for Nartron to sue Schukra (as well as the supplier).

The district court agreed with the co-defendant, and granted its motion to dismiss, holding that Benson was a co-inventor of the '748 patent based on his conception of the "extender element" of that patent's multi-dependent claim 11. Nartron appealed.

The Federal Circuit reviewed Benson's contribution to the invention disclosed in the '748 patent, and reversed, concluding that "[a]ny contribution Benson made to the invention in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor."

Several things contributed to this finding. First, Benson's contribution of "the extender for a lumbar support adjustor" was "insignificant when measured against the full dimension of the invention of claim 11," not only because it was in the prior art, but also because it was already part of existing car seats. In that sense, Benson's suggestion "amounted to the exercise of ordinary skill in the art."

Second, the focus of the '748 patent was not so much on the structure of the seat (of which Benson's extender was a physical part), but on the control module that operates the seat.

Finally, the complete invention of claim 11 included all of the features of claims 1, 5, and 6, from which that claim depended. The court noted that Benson would not necessarily achieve the status of co-inventor simply by contributing the idea expressed in claim 11 if he did not contribute to any of claims 1, 5, or 6.

The takeaway: Take a careful look at who contributed to the invention that is to be patented and what their respective contributions were; not every project team member is necessarily an inventor. Those who merely suggest obivious applications for the team's inventions may not be entitled to be co-inventors.

Thursday, February 19, 2009

My Twitter Piece for

I write a bi-monthly column for the New York Law Journal's "Technology Today" feature.  It sometimes gets picked up by one or more affiliated websites or publications.  While the title is maybe a little too cute (I do have editors), here is "Tools and Tactics to Tweet Well on Twitter."  

This is a Twitter 101 for lawyers.  

Tuesday, February 17, 2009

Patent Infringement Finding Does Not Equal Lanham Act Violation

A recent Federal Circuit case highlights the contrast between claims of patent infringement and violation of the Lanham Act.

In Baden Sports, Inc. v. Molten USA, Inc., Baden Sports patented a padded basketball that it marketed as containing “cushion control technology.” It sued Molten USA in the Western District of Washington for patent infringement arising out of Molten’s sales of basketballs containing “dual-cushion technology.”

Baden later amended its complaint to add claims that Molten’s advertising of its dual-cushion basketballs violated Section 43 of the Lanham Act, in particular because Molten’s ads for its basketballs had used the terms “proprietary,” “exclusive,” and “innovative.” The district court granted Baden's motion for summary judgment on its patent infringement claims.

The district court dismissed Baden’s Section 43 claims relating to Molten’s use of “proprietary” and “exclusive” because those terms suggested that Molten had invented the technology and were precluded by the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp. It allowed the claims concerning Molten's use of the term “innovative” to go to trial, however, reasoning that it could relate to the “nature, characteristics, or qualities of the basketballs themselves.”

At trial, the jury found in Baden’s favor on the false advertising claim. It awarded Baden a relatively modest $38,031 for patent infringement and a whopping $8,054,579 for intentional false advertising. Molten moved for a JMOL and a new trial; both were denied.

Because this was a patent case, the Federal Circuit caught the appeal, but applied the law of the 9th Circuit on non-patent issues. It analyzed the Section 43(a) issues in two stages, and concluded that “Section 43(a) of the Lanham Act does not create liability from Molten’s advertisements because those advertisements do not concern the ‘origin of goods,’ to which section 43(a)(1)(A) is directed, nor do they concern the ‘nature, characteristics, [or] qualities’ of the goods, which is what Ninth Circuit law has interpreted Section 43(a)(1)(B) to address.”

The Federal Circuit pointed out that there was nothing in the record to show that Molten’s advertising suggested that Molten was not the source of the infringing basketballs that it was marketing. Accordingly, there was no claim under Section 43(a)(1)(A).

As for Molten’s claim that its basketballs were “innovative,” the Federal Circuit noted that “[n]o physical or functional attributes of the basketballs are implied by Molten’s advertisements. ‘Innovative’ only indicates, at most, that is manufacturer created something new, or that the product is new, irrespective of who created it.” Accordingly, there was no claim under Section 43(a)(1)(B) either.

The court noted that there were a number of other arguments that could have been advanced in support of Baden’s false advertising claims, but that the arguments had not been pursued at trial.

Takeaway: Be careful how you present Lanham Act claims arising out of patent infringement allegations. An patent infringer is not automatically liable for Lanham Act false advertising; such a finding will require its own set of carefully-developed proofs.

Friday, February 13, 2009

Jones Day Settles Linking Suit with Blockshopper

In what the ABA Journal characterizes as a "Fig Leaf" settlement, Jones Day and Blockshopper have settled the lawsuit that Jones Day brought when Blockshopper had the temerity to link to the bios of two Jones Day attorneys when it reported on (public) real estate transactions involving the two lawyers.

I blogged about this case back in the fall.

In the settlement, Blockshopper agrees that while it will not use any "Embedded Links" to the Jones Day website in the future, it may use "Deep Links" to the site. Blockshopper must also make some sort of statement indicating that the reference individual is employed by Jones Day, and that more information about the person can be obtained at, adding the appropriate internal reference to the web address.

So what would formerly have read as follows:

Embedded (bad): Steve Brogan, Jones Day's managing partner, recruited me when I was a law student at Notre Dame.

Now must read thus:

Deep (good): Steve Brogan, who is employed by Jones Day as its managing partner, recruited me when I was a law student at Notre Dame. More information about Steve Brogan can be obtained at

Hugh Whiting signed the settlement on behalf of Jones Day.

I have to admit that I hadn't heard of the term "fig leaf" settlement; I looked it up, but all I could find were other blogs and newsletters that referenced the Jones Day/Blockshopper case. Wikipedia, in addition to teaching me about a turn-of-the-last-century bodybuilder named Eugen Sandow who used to pose nude save for the protective covering of a fig leaf, provided some information that I think pretty much covers (pun intended) the settlement:

"The expression fig leaf has a perjorative metaphorical sense meaning a cover for any thing or behaviour that might be considered shameful, with the implication that the cover is only a token gesture and the truth is obvious to all who choose to see it."

Are Recession's Roots in September 2001?

This blog is nominally devoted to IP and Technology law, but anyone who knows me well has had to put up with my frequent rants over the increasingly-intrusive nature of our government’s efforts to secure our country against future attacks of the type we endured in September 2001.

My views are that much of what passes for security is nonsense, or “security theater.” (Yes, I read and like much of what Bruce Schneier has to say on security measures, but I’m not going to presume that he would agree with anything I might do with that information.) Efforts such as random bag checks and heavily-armored patrols in subways, virtual strip-searching and shoe-scanning by TSA personnel in airports, attempted bans on photographing plainly-visible infrastructure such as bridges and trains, and mass information capture and data mining by the NSA do little to help make us more secure, but much to erode our individual Constitutional rights.

One thing I understand is that many of these efforts have been justified as evils that are necessary in our continuing War on Terror. I also understand that many, many people are satisfied with that explanation, and are willing to part with a little bit of their liberty in exchange for feeling a little bit safer. That willingness implies as well that many, many people trust our government to do the right thing, and not to abuse its power even as it intrudes further into our personal lives. For more that seven years, people have been conditioned to leave much of their personal security, and some of their personal rights, freedom, and information, in our government’s hands.

Two columns in today’s New York Times about our current economic crisis have caused me to wonder whether the government’s increasingly-intrusive security measures on behalf of the War on Terror may have contributed to the crisis of confidence that a number of commentators seem to believe is at the root of this recession.

Now I am not an economist, and frankly am a bit mystified (if not terrified) at the strongly-held, often completely divergent solutions economists of differing ideological stripes are advocating as “the way” to pull us out of this recession. But if there is a common theme that runs through any of the pieces I’ve read, it’s that nothing positive is going to happen until consumers begin to believe in whatever solution is implemented, open their wallets, and begin spending again.

In “The Worst-Case Scenario,” David Brooks looks back from a hypothetical future and analyzes what made the recovery efforts fail:

“The crisis was labeled an economic crisis, but it was really a psychological crisis. . . . Essentially, Americans had migrated from one society to another – from a society of high trust to a society of low trust, from a society of optimisim to a society of foreboding, from a society in which certain financial habits applied to a society in which they did not.”

Did that social migration begin with the September 2001 attacks? Just look at how we reacted: after a brief period of collective patriotism, mourning, and general flailing about, we settled in to a steady state of government-sponsored security warnings, threat-levels, illegal surveillance, and all manner of terror-driven searches and seizures. We started and have continued two wars, and have interred and detained thousands of people in the furtherance of the War on Terror. Against all of that, how could we not have moved from a “society of high trust to a society of low trust,” and become a “society of foreboding?”

Our government has repeatedly justified its efforts as necessary, if perhaps unpleasant, if we wanted to defeat our widely-dispersed enemies and assure our national security. We were asked to trust that the little intrusions as well as major incursions were in our collective self-interest. And the economy? Well, that was the least of our worries, of course. The economy was humming along more or less nicely, and could pretty much take care of itself. Those pesky terrorists, on the other hand . . . that’s where our attention should be focused.

So while we were waging this War on Terror, the economy didn’t take care of itself. In fact, it turned out that nobody had really been minding the store, and here we are scrambling. Who could blame consumers for their current lack of trust? Consumers had been set up.

Moving across the Times’s editorial page, Paul Krugman in “Failure to Rise” says that he has “a sick feeling in the pit of my stomach – a feeling that America just isn’t rising to the greatest economic challenge in 70 years. The best may not lack conviction, but they seem willing to settle for half-measures. And the worst are, as ever, full of passionate intensity, oblivious to the grotesque failure of their doctrine in practice.”

Layer that statement over the way that we responded following the September 2001 attacks. We didn’t rise to that challenge either. Instead of embracing the principles of freedom and liberty that built this country and made it great, we showed a lack of conviction. We chose safety and security over our rights and liberties; we settled for the illusion of protection as a band-aid applied over the government-induced wound of a potential future terror attack. We forgot that with freedom comes responsibility and risk; we were unwilling to assume the risk, and preferred instead to yield our freedom. We settled, and got used to doing so. And we may be doing so again.

Wednesday, February 04, 2009

LegalTech Panel: Adopting Web 2.0 Capabilities Into Your Web Presence

This was a lively panel consisting of the following:

Maia Benson – Director of Search Enging Marketing, Lexis/Nexis

Roland Goss – Jorden Burt law firm. Reinsurance and arbitration blog.

Brian Green – Edwards Angell Palmer & Dodge LLP; An insurance/reinsurance law blog.

Rees Morrison - blog

David Gottlieb – Baker Sanders, etc. in Newark. No-fault and CPLR blogs

Roy MuraInsurance coverage and fraud blog

This was essentially a panel on starting and maintaining a blog. It was well-run, spirited, and informative – even for existing bloggers. Moderator Maia Benson kept the five-person panel on-topic, asking key questions, allowing a reasonable amount of discussion, and moving things along to the next point.

Starting from the beginning, the panel discussed their reasons for blogging and why they selected their particular blogging platform. There are a number of different blogging platforms – Blogger, Wordpress, and MoveableType are several popular ones. For a survey article discussing popular blog platforms, check here.

The panelists each agreed that their blogs consumed more time than they initially thought they would. The general consensus among individual bloggers was that their blogs consumed more than an hour a day on average. Two of the blogs were law firm projects, with teams of attorneys assigned to creating content and editing posts.

The next point was what the panelists considered the value of their blogs to be.

Roland Goss pointed out that the question of value was more properly stated as “value to whom?” His view was that blog value in the firm context can sometimes be a hard sell. Blogs have a connotation to some people as being a loose form of communications. While it is difficult to measure client generations as a result of a blog, his point was that institutional clients are looking for their law firms to provide them value. If you are trying to reach that audience, your blog should target their perceived needs. If you do a good job of identifing your audience, you’ll hit the mark.

In the case of the Jorden Burt firm, when Goss was considering developing a blog, he noted that there did not appear to be a one-stop place for information on reinsurance arbitration. So he built one. In the course of running the blog, analytical tools helped him see that readers were gravitating to law review articles on insurance and reinsurance, so he made that more prominent and easy to find. It helps for people to know that you have timely and deep knowledge in your area.

The next question focused on audience; who is your audience? What value are you trying to give?

Rees Morrison, in a bit of a tangent, made a strong argument on several points: make your header clear; keep your posts “short and sweet;” identify your sources; and back-reference your content. While not strictly responsive to the question, they were good points and are worth keeping in mind.

Brian Green pointed out one dilemma that his firm’s blog faced: whether to write about news developments that affected the client’s industry. He noted that the audience was reading those news posts, so the coverage shifted slightly to include the news. (I will note that Brian and I each work for the same firm, but I have no involvement in the operation of the blog.)

David Gottlieb’s audience consists of attorneys he sees in court. He finds that their feedback is helpful. In addition to legal posts, he includes more personal, perhaps somewhat off-topic posts such as family pictures and workplace commentary – one of his more popular posts was a seating chart showing where the “regulars” tended to sit in one of the courtrooms he frequents. This point echoes one raised in Tuesday’s Twitter panel – to develop a relationship with your readers don’t make your posts completely business. Inject some personality into your blog. (This obviously makes more sense with individually-authored blogs than group or firm efforts, though there is no reason why a firm blog could not include the occasional personal note as well.)

Roy Mura said that he believes that he as several categories of readers, ranging from individual clients to “everyone.”

The next question asked what kinds of feedback or anecdotes the panelists were hearing as a result of the their blogs.

David Gottlieb said that almost everyone who practices in his area reads it, including judges, clerks, and other attorneys. He noted, as a result, that this meant that he had some control over what that audience saw. He warned against using the blog as an advertisement. The goal is to provide value.

Roy Mura could count one discrete matter resulting from his blog.

Roland Goss pointed out that blogs aren’t only about getting new clients. He believes that his firm’s blog provides a lot of value as a cross-selling tool, a good way to show existing clients in other areas what else you can do. The blog is also a good way to increase the knowledge base of your attorney writers – a point that applies both to team-written blogs and single-author efforts.

Rees Morrison pointed out that an active blog is a good resource for creating articles. It becomes easy to put together an article on a particular topic by combinging and editing related blog posts.
The topic then turned to metrics – how the bloggers used various tools to learn more about their audience. Rees Morrison jumped up and ran through a nice set of screens that identified some of the tools he uses to help him with his blogs. These include:

SiteMeter – details re: every visit, can drill down to individual visitor

TypePad – gives some stats for its blogs. Also gives you what search led to view.

Feedburner – tells you how many RSS subscribers you have, how many came directly, how many from searches, how many from another site.

Technorati – how many other blogs are referring to you – find out who is writing about you.

Google Analytics – combines some other data, gives you great info.

Bloglines – helps manage subscribers.

Blogpulse – as a percent of ALL blog posts, what did I account for.

Google Groups – more analytical tools.

Roy Mura said that he uses Feedblitz for subscriptions – a vehicle by which readers can subscribe and get an email summary to new posts. Monday night to Tuesday morning is when most people seem to read.

Maia Benson recommended putting a phone number on your blog because it’s tracked. If someone calls you because of the blog, you’ll know it.

One set of concerns – and an area of polite difference – related to whether blogs should accommodate comments.

Brian Green said that his blog does not allow comments because of concerns regarding attorney-client relationships and inadvertent disclosure of confidential information. In the event a dialog takes place, there is a concern that the give-and-take will lead to an inadvertent attorney-client relationship.

Roland Goss’s firm’s blog also does not accept comments, for same reasons. As a firm-authored blog, he pointed out that not having to deal with comments also helps reduce the time associated with managing the blog.

Roy Mura’s blog originally accepted comments without requiring each comment to be moderated. He said that he thought that comments would be an academic exercise, until a completely unacceptable comment was psoted. He now moderates comments, as do David Gottlieb and Rees Morrison.

This panel provided a great overview of issues related to starting and maintaining blogs. It was an extremely worthwhile presentation, and I’m afraid that this post does not do it justice.

LegalTech Panel: Best Practices for Online Networking

I will keep this short.

The best thing about this panel was its moderator, Bob Ambrogi, who made several polite but ultimately unsuccessful attempts to steer the panelists somewhere in the vicinity of their panel's promised subject matter.

Here is what was promised in the LegalTech brochure:

- Opportunities in online networking for attorneys

- Re-energize the traditional, valuable art of networking with tightened budgets, time and resources

- Growth areas, benefits and challenges of online networking

- Best practices on selecting a network

- Gaining the strategic advantage of an online network

Here is what was delivered:

- Martindale-Hubbell Connected, a "gated community" attorney networking system currently in private beta, with features that are yet to be finalized, is going to be the best way ever for private practice lawyers to network and for in-house counsel to get free information.

- Other kinds of networking - the ones where you aren't in a "gated community," apparently - present all sorts of dangers to lawyers, who might inadvertently disclose confidential client information or create surprise attorney-client relationships as a result of said networking.

I had the "if you can't say anything nice, then don't say anything at all" refrain drilled into me as a child, so I won't post the names of the panelists here.

In sum, the panel was a disappointment.

Tuesday, February 03, 2009

LegalTech Panel: "Five Things Every Practice Should Know About Web 2.0 Technology"

This was an information-packed session presented by Mary Abraham (lawyer and “knowledge manager”) and Lee Bryant (director at Headshift, London). The focus of this presentation was on tools used within the enterprise.

The presentation began on an ironic note – with a wifi signal freely available, no password codes were available for those hoping to live blog. This was not an auspicious start for the first of a set of three presentations focusing on “Web 2.0 Technology.” That said, once the presentation was underway, passwords were distributed to those who were blogging. That said, I couldn’t get my connection going. Perhaps I digress (but please, in the future give all LegalTech conference attendees a strong, free Wifi signal.)

If this session suffered from anything it was information overload. I was very impressed with both panelists; they kept things moving quickly, and each had a lot of information to share.
Some of the points they made follow.

-- Web 2.0 makes sense in a downturn

The recession provides perfect conditions to move forward with these tools and strategies. We have to demonstrate value quickly; but that doesn’t mean a retreat into existing projects or a failure to start new projects. Adding a “social layer” to existing enterprise tools can rejuvinate old, unloved systems. Existing systems can do the heavy lifting well – the data management. What they don’t do too well is the last mile – connecting the information and the users. The new tools should build on the existing systems.

-- There are several levels of collaboration tools. These were presented in the form of a “social stack”:

-- at the base level, these consist of public feeds and flows; RSS feeds, and email;

-- the next level includes bookmarks and tags that create “signals of relevance” for users to share and comment. Clay Shirkey talks about information overload; bookmarks and tags help users filter information for each other.

-- the third level includes blogs and networks, with items or topics shared within networks or discussed in blogs. This information can come from the bookmarks and tags. Professional bloggers typically self-filter this information; they will take in many news feeds, tagging some of them (for later review, in my experience), and then will blog about a lesser number. (Consider the “old” way of doing this, where someone in the firm would circulate an email with some piece of relevant information).

-- the fourth level involves group collaboration – groups or teams that organize knowledge in wikis and group systems, with features such as reviews and voting. The hard part here is getting things started, getting that first draft down. This is becoming popular, with in-firm wikis being managed within groups or subgroups of firms.

Michael Idinopolous says that it’s best to leave knowledge workers “in the flow” of the information to make it easier for them to share useful information. We shouldn’t workers to step “out of the flow” if we want them to share. Our systems should try to make it easy for people to share, and to see what’s been shared. Asking people to share day-to-day just for the heck of it is not going to work.

-- the fifth level: personal tools allow people to organize their own information by tags, or a portal, or a newsreader (for example).

(I wonder whether the fourth and fifth levels should switch places. It seems to me that group collaboration is some higher order byproduct of the use of Web 2.0 tools, sort of the ultimate goal here, the most focused result of the use of the other tools.)

There are many tools available for this. Reading, writing, collaborating, messaging, sharing, and some all-in-one.

-- How to make the business case.

The fact that the tools are relatively cheap and easy to roll out make it easier to sell. They can replace expensive systems (for example, the typical “intranet project” or CRM tool can sometimes be replaced with cheaper, more effective tools).

The key is to select the right tools – many of which are open source. Mallesons in Sydney is an example of a firm that has done very interesting things using social networking tools. There were failures, but they used cheap tools, rolled them out quickly, integrated user feedback, and worked fast.

-- Some examples are as follows:

-- Internal wikis allow multiple users to view, comment, and modify the same document: using something called “Confluences” – seeing hundreds of edits a day to wikis, 1000 page views.

-- Social tools are not about personal blogs, what you’ve had for lunch, etc. Often a group blog is adopted. Freshfields has adopted groups of wikis; only certain people have permission to edit. Trusted editors are a premise behind much social software. You have to trust people to act in a responsible manner. Many existing systems are built on a platform of distrust.

Lawyers don’t seem to be so worried about sharing knowledge; it’s more like projecting ego. It does depend on the context – internal sharing is going to see much more sharing than external.

There was additional discussion of some of the tools available to help implement these projects. Frankly, this moved a bit quickly for my notes. Suffice to say there are more than a few layers of collaboration tools available to those seeking to increase the level of internal collaboration.
This was an excellent session, with more information presented than your humble narrator was able to repeat. My takeaway point: it is past time to begin thinking about ways to manage information flow. The technology is now at the point where it is feasible to start implementing some of those “gee, wouldn’t it be nice if . . .” projects from the past.

LegalTech Panel Report: "What is Twitter and How Can I Use It?"

I attended an excellent LegalTech panel discussion yesterday titled “What is Twitter and How Can I Use it?” Bob Ambrogi introduced the panel (each introduction done in 140 characters or less), which consisted of Kevin O’Keefe (@kevinokeefe), Matthew W. Homann (@matthoman), Chris Winfield (@chriswinfield), and Monica Bay (@commonscold).

Monica, who is the editor-in-chief of Law Technology News, moderated the panel and opened by noting that she was a very reluctant social networker who finally gave up (particularly when she took the post at Law Technology News), and was instantly hooked. She is actively participating on a number of social networking sites, and has three Twitter accounts. She offered an example of using Twitter to troll for story pitches for her publication, and was impressed with how quickly she received substantive proposals from contributors.

Chris Winfield, president of 10e20, a social media marketing consultancy, spoke next. He provided a thorough overview of what Twitter is, starting with the signup page and moving through the various user features that the basic Twitter site offers.

He noted that Twitter is essentially a communications tool – it’s about talking and communicating. I think that this is a great point that is sometimes lost in the back-and-forth questioning of what Twitter is. Just as the telephone can be used to deliver messages ranging from the most trivial to the most important, so can Twitter. It’s up to the user to decide whether and how to use Twitter.

Chris highlighted Twitter’s search function – which has improved over the past couple of months – to highlight how flexible it is. Users can search for specific terms within tweets, or for specific user names.

As a demonstration of Twitter’s utility, Chris showed how he used it to help him create his presentation. A few days before the panel discussion, he tweeted three questions for the presentation and in short order received 135 responses, saving him a lot of work. The questions, and my favorite responses, follow:

- How would you explain Twitter in 140 characters or less? “A social conversation tool that allows people to connect within communities.”

- What is your MUST have Twitter tool? Answers ranged, but included the search feature; Tweetdeck; the Twitterfon application for iPhone; and EasyTweets.

- How could a lawyer or someone in the legal field use Twitter effectively? Answers included using it for education; to answer client or potential client questions; for personal branding; to help with relationship building; to interact with a community; to make connections, to keep up with people in a particular field or industry; to gain insight by using polls.

Matt Homann is the founder of LexThink LLC and writes the [non]billable hour blog. His experience with Twitter is similar to mine, in that he had been on Twitter for a couple of years, but only started using it regularly during last 6 months. He made the following excellent points about the Twitter tool:

- Twitter is easy to learn to use.

- It can be hard to understand why Twitter should be used– why do I want to follow people, why would they follow me?

- Twitter is a “kool-aid technology;” once you get it, you can’t stop telling other people about it.

- Twitter’s greatest value comes from knowing what people are thinking (not what they’re doing). It’s a form of “instant anthropology,” allowing you to plug in to what people are discussing all over the world. He highlighted the “Trending Topics” posted on the Twitter search page as an indication of what Twitter users were talking about at any given point in time. This can provide Twitter users with faster news, particularly about breaking stories.

- To effectively use Twitter in a work context, it’s important to be yourself. Use your name, or your company’s name, if you want to build relationships.

- If you fear that Twitter will interfere with your ability to get your work done, you’re not afraid of Twitter, you’re afraid of doing your work. He made an excellent point that you don’t have to use Twitter all the time, but can “dip in” to the Twitter “stream” whenever you have the time to do so. This makes most sense when you use enhanced search tools such as those available on Tweetdeck that allow you to view multiple search results on one screen.

- To use Twitter most effectively, you should integrate it with you phone. This doesn’t necessarily mean tweeting from your phone; it means bridging the gap between communicating with people via Twitter and then picking up the phone and calling them in person. This is the best way to use Twitter to build client and personal relationships. The successful Twitter user is one who turn Twitter friends into real-life friends.

- Matt described Twitter as being like a networking meeting on steroids – though the conversation’s better and there’s a lot fewer insurance salesmen in the room. From my perspective, the unfiltered feeds can sometimes resemble an Internet chat room, with multiple cross-conversations going on simultaneously. This is why effective use of search tools is so important.

- Finally, Matt noted that the number of followers you have is far less important than the number of followers you deserve. You should always work to deserve more, by contributing to the conversation and building your community.

Kevin O’Keefe is the CEO of LexBlog, Inc., and the author of Real Lawyers Have Blogs. His points were as follows:

- From a big picture perspective, Twitter is a great tool, but sometimes dangerous.

- Kevin provided a number of examples of ways that he could trace new business to his use of Twitter. What I liked about these examples is that they each involved a personal tweet – a comment about a ball game, or a poll-type question about whether a golfer was going to make a putt – that connected with a client or potential client and generated a follow-up. The takeaway from this – and it was a point that Matt raised as well – is that at least some of your tweets should reflect your personality.

- Kevin firmly believes that social media, such as Twitter, is more important than maximizing the hits on your blog or website. Twitter is a tool that allows your message to spread not only to those who follow you directly, but virally as well. People who re-tweet messages help spread your word beyond your immediate network.

- Twitter is not a kids’ tool; its demographics are strong. There are a lot of well-educated, forward-thinking adults using Twitter.

- In Kevin’s personal experience, nothing has had the impact on his company LexBlog quite like Twitter. He’s seen this happen just in past six months. He quoted Guy Kawasaki: Twitter is the single biggest branding tool since TV. Kevin is convinced that Twitter is here to stay.

- He suggests using Twitter to discover people you’d like to get to know and would like to have a conversation with.

- Kevin tweets things that his target audience is interested in; he tries to make his tweets relevant to his target audience, and includes some personal items (within reason).

- He pointed out how his company is helping law firms use Twitter to develop micro-blogging site pages that show what firm lawyers are doing or have to say on a particular topic.

There were a number of questions after the presentations; one that stuck with me was about fair use copyright issues. Presumably this relates to re-tweeting of tweets. My immediate take on this is that one of the things you consent to when you submit a tweet via Twitter is to the re-tweeting of that tweet. While I could see there being an issue if someone were to aggregate multiple tweets in a book or article. I’ve commented on this in the blog post context elsewhere.

Takeaway points:

1. Take advantage of Twitter's search features, particularly those available on Tweetdeck, to receive up-to-date news and information on topics that matter to you from people all over the world.

2. Contribute some of your personality to your tweets. Don't be a corporate drone all the time; occasionally reveal your interests and show that you are a real person.

3. Twitter relationships are a start. It's up to you to take them to the next level.

Wednesday, January 28, 2009

The Register Confuses Utility and Design Patents

It surprises me how often even industry publications get IP wrong. A case in point: The Register, the well-respected, often irreverent, but definitely tech-savvy website issuing mainly out of the UK today published a piece poking fun at Apple for patenting (and the PTO for issuing) what appears to be a power adapter for what used to be known as an automobile cigarette lighter (now known in PC-speak as a 12-volt power port).

The Register noted that "the device is so substantially similar to a standar automotive 12-volt power plug . . . that the penetrating intelligence of the US Patent and Trademark Office would surely not grant a patent for it if that were, indeed, its sole purpose. After all, the USPTO defines a patent - or, more specifically, a utility patent, as 'a new, useful, and nonobvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof." The post then went on to speculate as to what other possible uses the "power connector" could be put to.

The problem? The patent number -- D585,375 -- clearly signifies that the patent is a design patent, not a utility patent.

I might be more forgiving if the mistake had been made by a general-interest publication, but The Register holds itself out as "Biting the Hand that Feeds IT" and should know better.

Tuesday, January 27, 2009

Federal Circuit Revises In re Comiskey (again), Recants 101 Determination

Today the Federal Circuit issued a curious revised opinion in In re Comiskey, an appeal of a Board of Patent Appeals and Interferences decision affirming an examiner's rejection of Mr. Comiskey's patent claims.

What's curious, of course, is not the fact of the revision, but what was revised: where the original opinion had stated that certain of Comiskey's claims described "patentable subject matter under §101," the revised opinion deleted that discussion and instead remanded the claims to the PTO for that question to be addressed "in the first instance."

The bulk of the revised opinion is very similar to the original, in that it affirms the rejection of two independent and a number of dependent claims as not claiming patentable subject matter because they attempted "to patent the use of human intelligence" and described "an allegedly novel way of requiring and conducting an arbitration."

The original opinion then went on to consider two additional independent claims and 29 dependent claims, declared that they "claim patentable subject matter under §101," and remanded the case to the PTO for a consideration of whether the remanded claims are obvious.

In the revised opinion, however, the Federal Circuit removed this entire section discussing these additional claims, and replaced it with a paragraph remanding them to the PTO for the question of patentability under §101 to be considered "in the first instance."

So in the span of 13 days, 31 claims went from enjoying the imprimatur of "claim[ing] patentable subject matter under §101" to worrying in the uncertainty of a remand so that same issue could be "addressed in the first instance by the PTO."

What makes this change so very curious is the court's discussion at the beginning of the opinion. Mr. Comiskey had initially argued that the Federal Circuit lacked the power to consider §101 as a ground for rejection because that ground was not relied on by the BPAI. The court explained that the question of whether the claims were invalid for failure to claim statutory subject matter was "a question of law which we review without deference," and so was a ground that the court had the power to raise. (This reasoning is somewhat tortured, and has come under attack.) The court also noted that raising and resolving the §101 issue made sense where it "'would be wasteful to send' the case back to the agency for a determination as to patentable subject matter."

The court did acknowledge that in some cases, it would not be appropriate for the appellate court to raise and resolve the patentability issue sua sponte, for example where there were additional factual determinations needed that had not been made by the BPAI. In its revised opinion, however, it did not direct the PTO to make any such factual determinations, nor did in indicate that the lack of such facts prevented the Federal Circuit from making its own determination of whether the additional claims satisfied §101 in the same manner as it had no problem doing with the first set of claims.

As a final curiousity, this was a Bilksi-free opinion, perhaps because this is the second/third go-round for this opinion, which vacated the court's 2007 pre-Bilski opinion.

Monday, January 26, 2009

Good Discussion on Invention and Education

Woody Norris is a serial inventor. In this TED Talk, he discusses one of his recent inventions -- an "acoustic cannon" -- as well as his thoughts on the connection between invention and education.

TED is a great source of interesting discussions on all sorts of topics. It's fun to listen to Norris take the invention at the core of his talk and riff on its many potential applications.

Friday, January 23, 2009

NSA Agents Reduced to Conducting E-Discovery on Citizens?

New allegations from Russell Tice, the former NSA analyst who earlier revealed the agency's role in warrantless eavesdropping on international phone calls, suggest that the NSA has also been compiling a vast database of information about the domestic communications of US citizens.  In two interviews with MSNBC's Keith Olbermann -- who is probably not the most objective person to be hosting the discussion -- Tice described in fairly rough terms a practice of data collection and analysis that sounds very much like some forms of electronic discovery.  Wired has a good summary of the assertions here.   

In particular, Tice describes a system of information gathering that is less direct eavesdropping than it is data mining: "This is garnered from algorithms that have been put together to try to just dream-up scenarios that might be information that is associated with how a terrorist could operate," Tice said. "And once that information gets to the NSA, and they start to put it through the filters there . . . and they start looking for word-recognition, if someone just talked about the daily news and mentioned something about the Middle East they could easily be brought to the forefront of having that little flag put by their name that says 'potential terrorist'."  The process he talks about is similar to earlier speculation as to how such surveillance would operate.   

If true, Tice's claims raise obvious Fourth Amendment issues.  They also paint the rather sad picture of some of our country's best intelligence analysts toiling away at tasks that are little different than those practiced by junior associates and contract attorneys in law firms and e-discovery companies from New York to New Dehli.  It would be adding insult to injury, of course, if Tice's allegations are true and the analysis is being directed at the analysts' fellow citizens.  

Thursday, January 22, 2009

UK IPO Opens Two New Patent Search Databases

The UK Intellectual Property Office has introduced two new searchable databases that could be helpful to companies doing business there.

The first is a database of expired patents; useful because calculating terms from issue dates is a cumbersome and often inaccurate way of determining whether a patent is in force (for example, if maintenance fees aren't paid, the invention could enter the public domain well before its apparent expiration date).

The second database lists patents that are available for a "License of Right," a form of compulsory license available in the UK where the patent holder agrees to make the patent available for license at a reasonable royalty, and the UK IPO acts as the arbiter of last resort in the event the parties are not able to come to terms.

The search interface is simple -- very Google-like, with a single search box -- and the test searches that I ran executed very quickly. Not at all like what the USPTO forces us to work with.

Wednesday, January 21, 2009

RIAA Fights Internet Broadcast of File-Sharing Hearing

As you may have heard, a Massachusetts federal district court judge recently granted the motion of the defendant in a file-sharing copyright infringement case brought by the RIAA to broadcast a pre-trial hearing over the Internet. Yesterday, that order was stayed so that the RIAA could appeal it to the First Circuit. The RIAA's mandamus petition is interesting reading. The main ground of the petition is essentially that the judge's order is against the rules, namely rule 83.3 of the local rules.

Really. Let's take a look at Rule 83.3.

-- (a) Recording and Broadcasting Prohibited. Except as specifically provided in these rules or by order of the court, no person shall take any photograph, make any recording, or make any broadcast by radio, television, or other means, in the course of or in connection with any proceedings in this court, on any floor of any building on which proceedings of this court are or, in the regular course of the business of the court, may be held. [Emphasis supplied]

Looks to me like the judge has some discretion there. But, the RIAA argues, allowing recording conflicts with the policies of the Judicial Conference of the United States. This appears to be a stronger argument -- the Judicial Conference has repeatedly come out against permitting the recording or broadcast of court proceedings. In a 2007 statement to Congress, Judge John Tenheim explained the bases for the opposition:

-- The Judicial Conference position is based on a thoughtful and reasoned concern regarding the impact cameras could have on trial proceedings. This legislation has the potential to undermine the fundamental right of citizens to a fair trial. It could jeopardize court security and the safety of trial participants, including judges, U.S. attorneys, trial counsel, U.S. marshals, court reporters, and courtroom deputies. The use of cameras in the trial courts could also raise privacy concerns and produce intimidating effects on litigants, witnesses, and jurors, many of whom have no direct connection to the proceeding. In addition, appearing on television could lead some trial participants to act more dramatically, to pontificate about their personal views, to promote commercial interests to a national audience, or to increase their courtroom actions so as to lengthen their appearance on camera. Finally, camera coverage could become a negotiating tactic in pretrial settlement discussions or cause parties to choose not to exercise their right to have a trial.

While few if any of those concerns apply in this case, there's no arguing that the Judicial Conference is not a fan of broadcasting contentious courtroom proceedings.

So is the RIAA simply defending the Judicial Conference against the actions of a wayward District Court judge? No; the RIAA is concerned that allowing the hearing to be broadcast will cause "irreparable harm." The nature of that harm?

-- Here, where the district court's interpretation of the Local Rule may well open the doors to a flood of applications by broadcasters seeking to record and broadcast other proceedings throughout the District of Massachusetts, there is necessarily a "sufficient showing of irreparable harm" to merit the exercise of this Court's power of mandamus.

So the RIAA is also defending the rest of the Massachusetts Federal Judiciary from the increased burdens of having to deal with this "flood of applications" from others seeking permission to broadcast other trials. A very noble position, to be sure, but of course the RIAA is also worried on its own behalf:

-- Nor is there any doubt that Petitioners would suffer irreparable harm if the proposed broadcast of the proceedings in this case is allowed to proceed.

By way of proof, the RIAA then offers the following explanation:

-- The Judicial Conference has repeatedly expressed the view that presence of cameras in district court proceedings "can do irreparable harm to a citizen's right to a fair trial."

That, however, is by no means proof that irreparable harm would occur in this case. The RIAA's next argument is rather ironic, given the nature of the dispute:

-- Petitioners are concerned that, unlike a trial transcript, the broadcast of a court proceeding through the Internet will take on a life of its own in that forum. The broadcast will be readily susceptible to editing and manipulation by any reasonably tech-savvy individual. Even without any improper modification, statements may be taken out of context, spliced together with other statements, and broadcast rebroadcast [sic] as if it were an accurate transcript.

Of course, a written transcript is even more susceptible to manipulation than is a video or audio recording. It's laughably easy to select statements out of context from a written transcript and present them in a way that is unfavorable to one side or the other. If anything, a video record would make any such manipulation more evident, with cuts and splices to the record appearing as odd "jumps" or "skips" in the recording or in the appearance of the speaker.

The RIAA saves what to me is its strongest argument for last: that the Beekman Center, which would host the broadcast, is strongly opposed to the RIAA's suits against alleged file sharers and is closely allied with the defense team. This, however, is the issue that is easiest to fix -- allow a relatively neutral party, such as a "traditional" news organization, to host the feed.

The RIAA, of course, has a legitimate reason to complain where the manner in which users copy or distribute its members' recordings reaches beyond the often-murky boundaries of fair use. Its vehement opposition to having this hearing broadcast appears to masquerade a real concern about looking bad before an Internet audience with a stated concern about protecting the integrity of the judical system. That's a little ironic in view of the RIAA's recent decision to more or less abandon the courts and let ISPs regulate offending users.

Read Wired's take on this here and here.

Tuesday, January 20, 2009 Uses Creative Commons Copyright License is now referring visitors to Behind the notice page, however, the website remains active, which is good to know given the amount of information deposited there.

The copyright policy is a bit simpler now, but still incorporates Creative Commons for third-party content:

Copyright Notice

Pursuant to federal law, government-produced materials appearing on this site are not copyright protected. The United States Government may receive and hold copyrights transferred to it by assignment, bequest, or otherwise.

Except where otherwise noted, third-party content on this site is licensed under a Creative Commons Attribution 3.0 License. Visitors to this website agree to grant a non-exclusive, irrevocable, royalty-free license to the rest of the world for their submissions to under the Creative Commons Attribution 3.0 License.

Friday, January 16, 2009

Fed Circuit Pending Patent Appeals Increase Slightly

The Administrative Office of the United States Courts has posted its latest set of judicial statistics. For the year ending March 31, 2008, the number of pending cases being considered by the Federal Circuit declined by about 20%, from 1201 to 975. Most of that decline, however, is accounted for by a decrease in appeals coming from the Court of Appeals for Veterans Claims.

Pending cases originating out of District Courts -- most of which would be patent-related -- increased from 317 to 336, while cases coming from the PTO declined a bit, from 39 to 34.

View the table here; for more appeal stats for other courts, look here.

Webinar -- Protecting Your Intellectual Property

On February 12, I am participating in a webinar titled "Protecting Your Intellectual Property." It's a "basics" type of presentation; if you read this blog and others like it, you probably know most of what we'll be talking about. However, please feel free to register or suggest it to friends or colleagues who would like a quick overview of the area.

Monday, January 12, 2009

Document Destruction Leads to Unenforceability Ruling in Patent Dispute

A dozen Rambus patents have been declared unenforceable against Micron in a long (going on nine-year) patent dispute in the District of Delaware. The reason: the destruction by Rambus of documents as part of its record retention/destruction policy that the district court (Judge Robinson, D. Del.) held were relevant to Micron's patent misuse, antitrust, and unfair competition defenses.

The 33-page opinion went into some detail about Rambus's long-simmering plan to exploit its patent resources, and determined that "litigation was reasonably foreseeable" by "no later than December 1998." Further, "because the document retention policy was discussed and adopted within the context of Rambus' litigation strategy, the court finds that Rambus knew, or should have known, that a general implementation of the policy was inappropriate because the documents destroyed would become material at some point in the future." Accordingly, the court ruled that "any documents purged" from December 1998 forward "are deemed to have been intentionally destroyed, i.e., destroyed in bad faith."

Had Micron only attacked the Rambus patents on their merits, however, the outcome might have been different. In a footnote, the court noted that "defenses that do not seem likely to depend from evidence internal to Rambus include those of anticipation and obviousness, since prior art references (by definition) must be publicly available. Likewise the written description requirement involves an objective review of the patent. . ." The defenses of unenforceability due to patent misuse, violation of the antitrust and unfair competition laws, and inequitable conduct, however, "are defenses that are illuminated by evidence of a non-public nature, e.g., by internal Rambus documents" -- the documents that were no longer available.

The court concluded that given the "clear and convincing" "showing of bad faith," Micron's "showing of prejudice can be proportionally less." Because the documents that were destroyed included "innumerable documents relating to all aspects of Rambus' business," and in view of "Rambus' litigation conduct" (which the court termed "obstructive at best, misleading at worst"), the "very integrity of the litigation process has been impugned."

There are several points (at least) to take away from this remarkable decision:

- Be careful how you implement or change record retention policies. The court found that Rambus's policy was litigation-driven; while in the opinion it appears that the original policy followed on the heels of a recommendation made in a Kroll Ontrack security audit, Rambus's litigation counsel was involved in the decision to implement it. Had the policy come from the corporate side of Rambus, or as a result of a business-oriented decision to clean out a growing accumulation of old files, the outcome might have been different.

- Make sure those responsible for prosecuting patents are aware of what those responsible for enforcing patents have planned. Another factor that hurt Rambus was the order to clean out patent prosecution files, which happened after the December 1998 "litigation was foreseeable" date.

- Be very careful about the extent and enforcement of a litigation hold. Rambus introduced a litigation hold as a result of the Micron dispute in December of 1999, but a year later disposed of "as many of 480 boxes of Rambus materials in connection with an office move."

- Tell your lawyers about your plans to shred. "Rambus employees, in several instances, did not inform outside counsel of the Rambus shred days."

- If the ruling stands, companies embarking on aggressive patent licensing programs may need to keep a much broader range of documents than companies that are trying to keep competitors out of a given market. If courts are going to assume that among the "reasonably foreseeable" litigation issues arising out of licensing negotiations include business issues such as patent misuse, antitrust, and unfair competition, then companies will need to keep documents that bear on such issues. Given the wide-ranging nature of civil discovery in the U.S., this could be a significant burden.

Tuesday, January 06, 2009

New York Blood Center Drops Social Security Number Requirement

Perhaps on the heels of a New York law that prohibits "[p]rint[ing] an individual's social security account number on any card or tag required for the individual to access . . . services or benefits," the New York Blood Center has finally dropped its longstanding requirement that donors give up their social security numbers to the Blood Center before they were allowed to donate blood or plasma.

I had complained about this more than four years ago, and I knew that the requirement remained in place as of this past fall. In reviewing the new statute, I decided to ask the Blood Center whether it still required its donors social security numbers. A prompt email reply informed me that, as of December 1 of last year, it did not.

Time to roll up my sleeve . . . .

Declaratory Judgment Jurisdiction Still Has its Limits

Contrary to popular belief, there are limits on the scope of declaratory injunction subject matter jurisdiction despite the Supreme Court's broad interpretation of the standard in MedImmune v. Genentech.

For instance, if the patent holder never contacts you at all -- let alone alleges you infringe, or even just sends one of those ├╝ber-bland letters that brings its patent to your attention -- your DJ action is probably going to be difficult to maintain.

That's the message delivered by Panavise Products, Inc. v. National Products, Inc., a January 6, 2009 non-precedential opinion from the Federal Circuit. Panavise and National each manufacture suction cup mounting devices; National is the assignee of U.S. Patent 6,666,420. National had actively pursued a number of alleged infringers of the '402 patent, but had never contacted Panavise concerning the patent or any Panavise product.

Panavise nonetheless filed a DJ action, alleging that Panavise sold a "potentially infringing" product; that "upon information and belief," National had seen the product at a trade show; and that National had sued other parties for infringing the '420 patent as well as other patents.

The Federal Circuit upheld the trial court's grant of National's motion to dismiss for lack of subject matter jurisdiction. National, the court noted, had attacked the factual allegations in Panavise's complaint that National had seen the Panavise product at the trade show, so that the allegations in Panavise's complaint were not controlling. This "placed the burden on Panavise to demonstrate facts sufficient to support its contention regarding the court's jurisdiction."

Panavise failed to meet this burden: "there is nothing 'definite and concrete,' and nothing 'real and substantial,' as Panavise has never presented any evidence and proof to support its allegation."

The Federal Circuit was careful to point out that it did not mean to say "that the lack of direct pre-complaint communication between a patentee and a declaratory judgment plaintiff by itself is sufficient to defeat subject matter jurisdiction." In this case, however, National's only other actions were its earlier lawsuits against other defendants concerning different products, and Panavise did not make a showing that its product was similar to any of those products.

While it denied National's motion for sanctions, the panel did take pains to note that "the appeal can be viewed as very weak from both a factual and a legal standpoint," and that it "approaches wasting the court's time and unduly delaying more deserving litigants."

Takeaway point: there are limits to the breadth of declaratory judgment jurisdiction even after MedImmune. In the absence of a direct communication from the patent holder, a DJ plaintiff will need to show something else -- in this case, perhaps, a showing that the Panavise product was structurally similar to other products accused by National in the past.

Monday, January 05, 2009

Fed Circuit Rains on ED Texas Patent Suit Parade

The Federal Circuit's recent decision in In re TS Tech USA Corporation is going to make it more difficult for out-of-Texas patent holders with few connections to that forum to sue U.S. infringers there. Difficult, that is, where the strongest connection to Texas is that infringing product ended up there.

In TS Tech, the plaintiff was a Delaware corporation with a principal place of business in Michigan; the defendants were two Ohio corporations (with Ohio PPOBs), and a Canadian corporation. The patent infringement lawsuit was filed in the Eastern District of Texas, where the district court denied the defendants' motion for a change of venue (to Ohio). The district court found that the inconvenience to parties and witnesses was outweighed by the "deference" entitled to the plaintiff's choice of forum.

The defendants took the question straight to the Federal Circuit via a writ of mandamus, which ratcheted up the standard of review from the "abuse of discretion" standard applicable to ordinary appeals to the higher "'clear' abuse of discretion" that "produced a 'patently erroneous result'" standard applicable to mandamus cases.

While the Federal Circuit noted that district court was correct in its evaluation of several "neutral" factors, it ruled that there were "several key errors" that together combined to meet the "clear abuse of discretion producing a clearly erroneous result" standard. In particular:

- the district court "ignored" the Fifth Circuit's "100-mile rule," requiring that the court consider "[w]hen the distance between an existing venue . . . and a proposed venue . . . is more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional distance to be traveled." Here, witnesses were identified in Michigan, Ohio, and Canada, making the proposed Ohio venue materially (900 miles) more convenient than the existing Texan one.

- the district court treated the plaintiff's choice of forum as a "factor" against transfer, instead of merely according it "deference." This seems to be a rather fine point, but at a minimum expect to see future district courts explaining how they have given "deference" to plaintiff's forum choice without weighing it as a "factor" in the venue analysis.

- despite the fact that the "vast majority of physical and documentary evidence" was located in Ohio, Michigan, and Canada, and that none of the evidence was in Texas, the district court incorrectly treated the location of the evidence as a "neutral" factor because many of the documents were in electronic form. The Federal Circuit pointed out that, given that all of the physical evidence was "far more conveniently located near the Ohio venue," this factor should have been weighted in favor of transfer.

- the public interest did not favor the Texas forum, since allegedly infringing product was sold nationwide. As a result, the "citizens of the Eastern District of Texas have no more or less of a meaningful connection to this case than any other venue."

- finally, in an effort to justify its decision that this was a "clear abuse of discretion," the Federal Circuit compared the TS Tech case with the Fifth Circuit's most recent leading venue case, In re Volkswagen of Am., Inc., and after listing the factors from that case that favored the same finding (including that the district court "glossed over the fact that not a single relevant factor favored the plaintiff's chosen venue") stated that "the district court's errors here are essentially identical." (Ouch.)

While TS Tech is not going to preclude use of the Eastern District of Texas as a popular forum for patent infringement cases, it will make things more difficult for plaintiffs that cannot show an obvious connection to the forum. Expect to see patent plaintiffs add as defendants ED Tx-based parties in the distribution chain in an effort to bulk up the relevance of the forum to something more than "some infringing products ended up there."