A Busy ERISA Week in the Ninth Circuit: Moyle v. Liberty Mutual and Rich v. Shrader
Last week, I spoke on a panel with, among others, Trucker Huss’ Joe Faucher, who discussed some aspects of Ninth Circuit ERISA jurisprudence with a mostly East Coast-centric audience. A week later, that circuit has turned out two of the more interesting and potentially significant appellate decisions in ERISA that any court has produced in awhile.
In the first one, Moyle v. Liberty Mutual Retirement Benefits Plan, the Ninth Circuit tackled an old chestnut in ERISA litigation, namely the argument that a plaintiff could not bring an action alleging both the wrongful denial of benefits and seeking equitable relief under ERISA as well. Many courts – and pretty much every defendant ever sued by a plaintiff making both claims – have taken the position over the years that Supreme Court precedent precludes bringing both claims, and that, if a plaintiff pled both claims, the equitable relief claim could and should be dismissed at the outset of the case. As a long-time commercial litigator who has litigated a range of cases from IP disputes to reinsurance cases to everything in-between, this always struck me as an odd proposition, because it ran contrary to the standard rule in the federal court system allowing a plaintiff to plead in the alternative, meaning that a plaintiff could allege multiple claims even if they were sufficiently inconsistent that, at the end of the day, the plaintiff could recover on only one of the claims. In Moyle, the Ninth Circuit, following the lead of an excellent analysis of the issue by the Eighth Circuit, found that, in light of the Supreme Court’s decision in Amara, a plaintiff could pursue denied benefits and equitable relief under ERISA in the same case. You can find what I hope is a cogent explanation of why, after Amara, it is clear that both such claims can be brought in the same action in this reply brief, which I recently filed in the First Circuit (the discussion begins at page 22 of the brief). The Ninth Circuit’s decision now reinforces the Eighth Circuit’s conclusion to this effect.
By the way, even aside from its significance to ERISA litigation, I took note of Moyle for a personal reason. In this profession of specialists – and I am one as well – people are often interested to find out that I have, over the years, maintained an active (sometimes more active, sometimes less active) intellectual property litigation practice, alongside my much larger ERISA practice. I have tried patent infringement cases, done more consumer product copyright infringement cases than I can count, and done a fair amount of software infringement litigation and counseling. It all goes back originally, though, to Golden Eagle Insurance Company, the once defunct California insurer whose employees are at the heart of the Moyle case. Through a client at Golden Eagle, I represented Golden Eagle’s California insureds in IP litigation from the Southern District of New York to Rhode Island and in Massachusetts (I don’t recall any of those cases going further north, and I know they didn’t go further south) starting in the 1990s, and my IP practice grew from there. Its funny to see these different sides of my practice come together in Moyle, with a major ERISA decision stemming from a client that was instrumental in building my IP practice.
The other case decided by the Ninth Circuit is less novel, but still important. In Rich v. Shrader, the Ninth Circuit held that a stock option program for officers was not subject to ERISA, because its intended purpose wasn’t to provide retirement income. Whether ERISA reaches particular stock grant or other compensation plans is often a hotly contested issue in disputes between companies and their former officers, and Rich is a fine example both of that circumstance, and of how to analyze whether ERISA is applicable. You can find an excellent summary of it in this Bloomberg BNA write up of the case.
Déjà Vu All Over Again: Patenting Retirement Plan Features
You know, you live long enough and you see everything come back around again. Ties get skinny, then they get wide. Standardized testing is seen as the key to everything, then as evil incarnate, then as the key to everything again. Baseball is learning to again look at the quality of the player on the field, after ignoring it in the belief that numbers on a computer screen can tell you everything. And so on, and so on, and so on.
I could not help but think of this when I read this story this morning in the Wall Street Journal on whether certain 401(k) features infringe on patents held by others, an article in which my colleague, Marcia Wagner, played a featured role. Why couldn’t I help but think of this? Because in 2007, the folks at BNA were, as they often are, well ahead of the curve (in this instance by almost a decade), writing about the question of whether tax strategies should be patented. Why do I remember that so clearly? Because they interviewed me for the article and I was quoted in depth on the subject. I wrote about it here, and later returned to the subject a few months later when I wrote a post on whether patenting ERISA strategies had reached its end game.
Yogi Berra once famously said that its like déjà vu all over again. Its amazing how often that rings true if you practice law long enough.
Copyright Infringement and Architects (Software and Otherwise)
Riddle me this, Riddler: what does the design of a center entrance colonial house have to do with complex computer software?
A lot, it turns out, if you are interested in the borders that should attach to IP rights so as to best balance the need to encourage the creation of new products against the risk of stifling innovation. Anytime one renders a design or technical development exclusive to one owner, such as when an inventor obtains exclusivity by means of a patent or an author obtains it by means of holding the copyright, we encourage the original owner to exploit that product, but preclude others from doing the same. When we do that, it is important to create a structure that gives enough protection to the original inventor to motivate people to create new products, but not so much protection that it discourages others from creating related advancements; if we get that balance wrong, we impede the technological advancement that is the original purpose of granting exclusivity in the first place.
I was thinking of this today because of an odd correlation that popped up in my reading. I have litigated copyright infringement cases both over plans for commercial architecture and over very complex computer code, each time defending someone who had created and sold a new product but was charged with allegedly having infringed upon the prior copyright protected work of a prior author (in one case another architect, in the other a different software company). While I effectively won both cases – to the extent that very favorable settlements count as wins in a world in which 99% of cases never see a trial – the more interesting point is that I prevailed on both cases on essentially the same theory, which was that the similarities between my client’s work (whether the design for the building or the code for the software) and that of the holder of the copyright on the prior work concerned aspects of the prior author’s work that copyright law does not protect. Copyright law, through various means – such as the merger doctrine and others – does not protect common or universal design elements, nor does it protect substance that, in essence, cannot be designed around, such as certain problems in software coding that can only be solved in very limited ways. Copyright law allows later-in-time creators to make use of those types of elements in their work (whether that be the design of a house or the design of high value software) even if they were also used in previous, otherwise copyrightable work. In this way, copyright law successfully draws the line between encouraging innovation through the grant of exclusive ownership and corresponding rights of exploitation, on the one hand, and the risk, on the other, of stifling innovation through that grant of exclusivity; these doctrines keep open for other innovators the use of certain elements, whether lines of software code or aspects of building design or other forms of expression, without which further advancement of the art in question is not possible.
This is one of the great, somewhat hidden achievements of American copyright law, one that is worth bearing in mind, and perhaps emulating to some extent, in the world of patent law, as we try to come to grips with the patent troll phenomenon and the runaway nature of patent infringement litigation in this day and age. The trick to solving those problems in that area of the law right now is figuring out how to find that sweet spot – the one that copyright law has, to a large extent, already found – between granting enough exclusivity to drive innovation but not so much that it simply generates excessive patent infringement litigation and gives rise to mills full of patent trolls.
So the answer to the riddle that commenced this discourse lies in this excellent article on the manner in which doctrines limiting the scope of copyright protection just defeated an architect’s claim of copyright infringement based on the architect’s use of certain historical and consumer driven elements in a design for a classic New England colonial home. These same doctrines were, as I mentioned before, the basis for my prior representations of both architects and computer software programmers, with the doctrines generating good results in both circumstances. I liked how clearly the article articulated the use and role of these doctrines in the context of home design, and was immediately struck by the fact that you could replace the references to architect and houses with references to programmers and software and have an equally accurate article. The same copyright doctrines, in my experience, control the outcome of both litigation over building plans and over computer software. That consistency across the board is one of the things that makes American copyright law great, both intellectually and as a practitioner, and is what makes it possible for competitors to plan ahead and understand when they can, and when they cannot, touch on prior work.
Me, Lawyers Weekly and Patent Infringement Litigation
I am quoted extensively in this week’s Massachusetts Lawyers Weekly in the article “Businesses increasingly assert patents for strategic reasons,” which discusses companies bringing patent infringement claims against their competitors as a business tactic, and whether recent Supreme Court decisions making it theoretically easier to obtain an award of attorney’s fees will reduce the number of such suits. It’s a well done article, particularly because it is not just based on the anecdotal evidence provided by lawyers, like me, but also on existing hard data that supports the thesis that such claims are on the rise. It is definitely worth a read if you have an interest in this phenomenon.
Putting Limits on Patent Trolling: An Infringement Litigator's Perspective
The whole question of patent trolling, and the concern over it, is an issue that has gnawed at me for some time, having defended small companies against patent infringement claims by competing manufacturers and having prosecuted licensing disputes on behalf of non-manufacturing, but inventive, patent holders. My latest bugaboo on this topic is the massive patent infringement lawsuit launched by patent holding entity Rockstar against Google, and the continuing effort by state Attorney Generals to crack down on entities deemed by those offices to be trolls. What bothers me, at the end of the day, is the promiscuous use of the term patent troll, and the underlying – and somewhat Orwellian – extent to which the term is clearly thrown into the lexicon to create a negative impression of non-manufacturing patent holders who seek to enforce their rights. Certainly, there are some patent holding entities, and their accompanying lawyers, who are basically in the business of simply suing on patents to collect licensing revenue or damages. This does not, however, mean that it is fair or appropriate to call all patent holders who do not manufacture or sell in the market trolls, or to treat all such entities as somehow entitled to less than the full protection of the patent laws. Many of us have experience with university patent holders, or have worked –as I have– with inventors whose very purpose is to invent and patent a product, to thereafter license it (hopefully); sometimes these types of patent holders are never able to find a market for their product, and thus their invention is never manufactured, but this should not deprive them later of their right to damages if, years down the road, a company sells a product that infringes on one of their patents.
The Rockstar lawsuit is another perfect example. I was not the first (I suspect) and will probably not be the last to refer to IP litigation between two competitors in the marketplace as the continuation of business by other means and, frankly, I am not sure there is anything wrong with that. The big players are big boys, and if they want to invest a fortune in legal fees to attack their marketplace rivals in that way, so be it. It doesn’t change the fact, though, that such a patent infringement dispute is only tangentially about invention, and much more about collecting damages or obtaining a competitive advantage in the marketplace.
So what do you do? Everyone who sues over a patent but doesn’t manufacture or sell a product can’t be – and clearly isn’t – a patent troll, nor deserves to be tarred with that smear, and yet we know that the sole value of some patents, and sole reason for the existence of some of their holders, is to sue those who do manufacture and sell (and who by doing so create a significant number of jobs, something not true of entities that exist solely to prosecute patent infringement claims).
To my mind, the answer is easy, and doesn’t even require any type of extensive change to the patent laws or the patent process. Instead, all that is necessary is to change the damages provisions of the patent laws: create some type of sliding scale of potential recovery that is inverse to the extent of manufacturing activity, selling activity, or effort to do so (even if unsuccessful) by the patent holder. It would be easy enough to create some sort of step in the litigation process – just as there is a Markman hearing, or preliminary injunction hearing, or a summary judgment proceeding – where the evidence on this could be submitted and a court could decide this issue and determine the extent of potential damages if and when the case were to go to trial. Alternatively, one could decide that, instead, this determination should be a jury question to be decided as part of the trial. Either way, though, you could seriously alter the incentives for trolling if you made the damages recoverable by patent holders dependent on the extent to which they themselves had tried to put the patented product or method into the marketplace.
Lessons on Intellectual Property Litigation From the Baltimore Ravens Defense
This is a great story on long running copyright litigation between the Baltimore Ravens football club and a security guard and doodler, over the rights to the Ravens’ emblem. The court bifurcated the case, with liability being tried first. The jury in the liability portion of the case found infringement, but the next jury, in the damages portion of the case, awarded nothing in damages, finding that the plaintiff was not injured by the infringement. I bring this story up for three reasons. The first is that it is a just plain, good old fashioned read, even if you don’t care one bit about copyright law or, perhaps even more unforgivably, the Ravens.
The second though, is the more important one. I have done a fair bit of patent and copyright litigation (especially the latter) over the years, almost exclusively for defendants, and it is a lot harder to actually win and recover significant money on copyright infringement claims than many people – including most lawyers – believe. The headline stories of massive awards in patent infringement cases lead people to extrapolate across the board to other types of intellectual property cases, but those cases don’t actually extrapolate well. The various defenses available to defense counsel in copyright infringement cases makes for a tough road in that area for plaintiffs (much to my happiness, I admit, when I am representing copyright defendants).
And finally, the third point the article drives home is this one. When representing plaintiffs in intellectual property cases, always think twice before deciding to accept bifurcation without a vigorous battle. Its hard enough to convince a jury to find infringement, but once having done so, it is better to move onto damages in front of that same jury, with whom you have presumably already established credibility. Bifurcation forces the plaintiff to reestablish that credibility, and any sympathy, all over again in front of a new jury, and causes the plaintiff to lose whatever momentum led to the liability verdict in the first place. All trial lawyers have their own pet theories; that is one of mine.
Working Backwards From a Closing
This is a very entertaining and interesting piece from AON’s Mark Hermann, leaving aside any qualms about the seriousness of the website that published it. In it, Hermann makes the case for litigation counsel to provide overviews to their clients structured around the question of how they plan to win the case, rather than just by providing an overview of the case and its history. I will take his thought one step further, and argue that every single thing a litigator does on a case should be done with that in mind; that, in essence, every decision in a case and every step taken should be subject to a litmus test of whether it gets the client one step closer to winning the case. In many ways, that was the thesis of this article of mine, on patent infringement litigation, in which I discussed the difficulties of cost faced by smaller companies forced to litigate such cases. Having litigated a number of intellectual property cases – including trying a patent case – for smaller and emerging companies who were facing off against deeper pocketed rivals, I knew that the key to cost containment was to focus strategy, discovery, expert issues, and motion practice only on the pieces needed to win at trial or summary judgment, and to avoid the siren song of pursuing interesting but expensive and likely not important side issues in the case. As I explained in the article, costs could be controlled by focusing only on the themes and issues relevant to winning, rather than pursuing every possible thing that could, but probably would not, affect the outcome of the case.
This approach – which Hermann likens to focusing on the closing of a trial – can and should influence everything a trial lawyer does, from the reporting to the client that is the focus of Hermann’s piece to discovery strategy to motion practice, all the way up to trial. If it doesn’t matter to winning, or to preventing the other side from winning (to the extent the two concepts aren’t entirely co-extensive), than it is has no purpose in a case. Deposition practice, for instance, is a perfect example. Sure, there are instances in which a deposition is taken just to get background information and understand what actually occurred. For the most part, though, depositions involve witnesses who have a known role in the events at issue and in those instances, I almost never ask a question that doesn’t already fit my plan for one of three things: what I am going to prove to obtain summary judgment, what I am going to use to prevent the other side from obtaining summary judgment, or what I am going to prove at trial. When it comes to a deposition, if a lawyer cannot explain how a particular question or answer fits into one of those three rubrics, 90% of the time the question and its answer has no purpose in the case, and serves only to extend the length of depositions and the cost of discovery to clients.
You can carry Hermann’s concern across the entire length of a case, from beginning to end. And, as Hermann suggests and my article on patent infringement litigation focused on, you can use that concern to reduce legal costs and get better results, all at the same time.
A Personal Reflection on Iqbal
When it comes to the law, I am conservative by nature, in the “if it ain’t broke, don’t fix it” meaning of the word. I am not speaking here of substantive legal rules, or case outcomes, and how to view them, but instead of the bread and butter elements of a litigator’s life, evidentiary rules, rules of civil procedure, pleading requirements, burdens of proof, and the like. If something of that nature is working well enough in the real world, in places like the courtroom where the rubber meets the road when it comes to any high minded thinking about legal issues, I tend to be skeptical of proposed changes, whether that concerns new rules of expert disclosure or a doctrinal shift in a particular exception to the rule barring hearsay testimony.
What brings this to mind at this moment is the issue of Iqbal, and the requirement imposed by it that plaintiffs plead facts that could actually support a cause of action, with the accompanying instruction - or at least implication - to federal judges to look, in essence, critically at the facts as pled to determine whether there is a viable case that should be allowed to proceed. Even though such a rule adds to the arsenal of the lawyer representing a corporate defendant, of which I am one 80-something percent of the time, I had always felt the prior rules of initial pleading worked well enough, and that there was probably no need to mess around with it, although I always recognized that it made dismissal at the initial stages something that could almost never occur except in the instance of a plaintiff either truly erring in pleadings or pleading a cause of action that simply doesn’t exist.
But I have come to believe, as I have continued to read the plaintiffs’ bar’s criticism of Iqbal - see here for instance - and the academic analysis of it - see here - that the rule makes sense, and that Iqbal represents a change for the better. As in most things in the law, my take is based on my own experiences in the litigation of cases, which I think is the best laboratory for analyzing any particular rule of law - theory is all well and good, but what happens when you actually put something into practice, and how it affects the litigants and the administration of cases, is what matters. Years before Iqbal - and even Twombly, for that matter - I litigated a copyright infringement action in which I represented one of the defendants, and the court dismissed the action on a 12(b)(6) motion on the thesis that the complaint showed that the statute of limitations should bar the claim because the plaintiff had constructive notice of the infringement at a much earlier date than the actual date of discovery pled in the complaint. Although we did not have the language of Iqbal and Twombly to use at that time to describe such an investigation into the factual merits of a complaint at such an early stage, the court was in essence Iqbal-ling the complaint, and dismissing the action. This being pre-Iqbal, the action was eventually reinstated on appeal, on the ground that the then applicable rules for pleading a cause of action were satisfied and the grounds for a dismissal at that stage - which were very high prior to Iqbal - had not been met; in essence, the appeals court concluded that a determination on that issue would have to be made at a later date, and could not be done on a motion to dismiss under the pre-Iqbal rules. Remanded, then, to the district court, the case then proceeded through discovery, extensive motion practice, and a trial, after which the jury found the exact same thing that the court had concluded in reviewing the complaint: that the plaintiff should be found to have had constructive notice of the infringement at such an early date that the statute of limitations barred the claim. Thus, pre-Iqbal, you had one appeal and a trial to reach the exact same conclusion that the judge could see just from the face of the complaint, right at the beginning of the case.
Iqbal, now, prevents this scenario, and allows the court to make an early ruling of that nature, and it would have been the right way to handle that case. Who benefits from allowing such a case to go forward? My own view is no one, except maybe the lawyers billing on the case. The defendant has to litigate for years to get to the same conclusion that could have been reached at the beginning, and which Iqbal now allows the court to reach early on, while the plaintiff spends years chasing a claim that a court can rightly determine early on will never come to fruition. Iqbal, in the hands of careful jurists, protects both sides of the v. from such a Quixotic quest.
On the Patentability of Computer-Generated Inventions
So, so, so very far behind. Its even creeped onto the blog, and in particular into our serialization of The Genie In the Machine. Oh, well, better late than never. Here is the last and final installment of our semi-serialization of Robert Plotkin’s book on automated inventing, and its impact on patent law. Meanwhile, you can find the first three installments here, here and here.
Automated Inventing: Should Computer-Generated Inventions be Patentable?
In my previous entries I have discussed how "artificial invention technology" is being used to invent new products automatically. In this entry I will argue that such computer-generated inventions should be patentable, but that the legal requirements for patentability will need to be recalibrated in light of artificial invention technology.
For an invention to be patentable, it must (among other things) be "nonobvious." Imagine, for example, that you design a new pencil. Assume that all previous pencils have been constructed from pine wood and that your pencil is constructed from oak, but in all other respects is the same as an existing pencil. Should you be entitled to a patent on your pencil? It satisfies patent law's "novelty" requirement because it differs in some way from previously-existing pencils. Yet it most likely does not satisfy patent law's "nonobviousness" requirement. A product is considered "obvious," and therefore not patentable, if the product design would have been obvious to a "person having ordinary skill in the art" of the product at the time the product was designed.
Patent law's "person having ordinary skill in the art" (PHOSITA), like tort law's "reasonable person," is a legal fiction, intended to represent the current level of skill of people currently practicing in a particular technological field (art). If a court were to determine whether your oak pencil is obvious, it would first ask, "what was the ordinary level of skill of pencil designers at the time you designed your pencil"? The court would answer this question by looking at factors such as the educational degrees typically held by pencil designers and the number of years of experience they have. A typical statement by a court is that "pencil designers of ordinary skill as of January 1, 2009 had a Bachelor's Degree in Mechanical Engineering and 6 years of work experience designing pencils." Based on this finding, the court attempts to determine whether such a hypothetical person would have found it obvious, on January 1, 2009, to construct pencils out of oak rather than pine.
If all pencil designers were to go back to school and obtain Ph.D.'s in Mechanical Engineering tomorrow, courts would recognize the resulting increased skill of the "person having ordinary skill in the art" in subsequent patent cases. The basic effect would be to raise the bar for nonobviousness, thereby making it more difficult for people to obtain patents on pencils.
Creation and adoption of artificial invention technology by pencil designers could have a similar real-world effect on the ability of pencil designers to create new pencils. One person who I interviewed for The Genie in the Machine said that he considers an engineer with a Bachelor's Degree, but equipped with artificial invention technology, to be as effective at solving problems as an unaided engineer with a Ph.D. If pencil designers worldwide were to adopt, and become skilled at using, artificial invention technology, the law of nonobviousness should take this increase in "effective inventive skill" into account. As a result, it should generally become more difficult to obtain patents on new pencils. Intuitively, someone should not be able to obtain a patent on a pencil that could have been created by any pencil designer merely by applying ordinary skill to widely-available invention automation technology.
Yet it is at best unclear whether this is how the nonobviousness standard will adapt to artificial invention technology. The caselaw on nonobviousness pays very little attention to the technologies that inventors use to assist them in the inventive process, focusing instead primarily on inventors' education and training. Even the U.S. Supreme Court's most recent pronouncement on obviousness in KSR v. Teleflex, 550 U.S. 398 (2007), declined to address this issue as directly as it could have. As a result, we are left with incomplete guidance regarding whether the level of skill of those having ordinary skill in an art in a particular patent case will be interpreted in light of the skill that those in the art have at using extant invention automation technology to solve problems. If invention automation technology is not taken into account when calibrating the level of skill of PHOSITA in particular cases, we run the risk of allowing inventions which could be produced using only ordinary skill to be patented. This would run counter to the very purpose of the nonobviousness requirement and of patent law itself.
As with the other topics addressed in my previous blog entry, I discuss the relationship between nonobviousness and invention automation technology in much more detail in The Genie in the Machine. I hope you have enjoyed this overview of the promise of invention automation technology, and of the challenges that such technology rises for patent law. I look forward to your comments and questions and to an ongoing dialogue.
If Wishes Were Horses - Or Patents - Or Something Like That
Oops. I was so busy Friday litigating two different ERISA cases that I plum forgot to post the latest episode of our semi-serialization of Robert Plotkin’s book on automated inventing and its impact on patent law, The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business. Anyway, better late than never, so here is the next installment.
Automated Inventing: Should Wishes be Patentable?
In my previous entry, I explained that you could view a human engineer who uses "artificial invention" technology to create a design for a new product as being analogous to an Aladdin who creates a new product by making a wish to a genie, as follows:
Human Inventor --> Wish --> Artificial Invention Technology --> Wish Come True (Product Design)
Based on the history of the patent system, we should expect that people will start filing patent applications for everything in this diagram that comes after the human inventor, namely the wish, the artificial invention technology, and the resulting product design. (In The Genie in the Machine I provide examples of patent applications which have already been filed -- and granted -- on the latter two of these three.) If we want patent law to grant such patents only when doing so will promote innovation, we need to make sure that the legal rules for patentability produce the right outcomes when applied to such patent applications.
First, consider wishes. What exactly do I mean by a "wish"? It is any description of a problem, written in a language that artificial invention software can understand, that the software can use to create a design for a product that solves the problem. For example, if you want to design a frame for an automobile that is as aerodynamic as an existing frame, but weighs 10% less, your wish might describe the aerodynamic requirements of the frame and its maximum weight. Some kinds of artificial invention software can use such a description to generate potential new car frame designs and -- using a simulator -- evaluate how well they match up to the requirements specified in your wish. The software then eliminates designs which fared poorly and modifies designs which performed well, in an attempt to produce even better designs. It then evaluates the new designs based on the criteria specified by your wish. It might repeat this process hundreds of times in an attempt to produce a product design -- what I have been calling the "wish come true" -- which satisfies your wish as closely as possible.
It may seem strange even to ask whether wishes should be patentable. Yet the kinds of wishes I am talking about are similar in some ways to traditional computer programs. Artificial wishes are a combination of instructions and data, written and stored in a physical form that can be processed automatically by a computer to perform a useful function. Therefore many, if not all, of the reasons that traditional software has been subject to patent protection also apply to artificial wishes.
Yet patent protection for software has remained highly controversial for almost 50 years. One reason is that computer programs are more "abstract" in some sense than cotton gins and other traditional nuts-and-bolts machines. Artificial wishes can be even more abstract than traditional programs. Therefore, to the extent that granting overly abstract patent claims can impede innovation, we need to be even more concerned about granting patents for artificial wishes.
We shouldn't, however, throw the baby out with the bathwater. Just as significant advances in software should be entitled to patent protection, even if the patents covering such software are relatively abstract, so too should new and useful artificial wishes be entitled to patent protection, so long as the legal requirements for patentability are applied with particular care to such patents. We should only grant a patent on an artificial wish if such a wish is truly new, useful, and nonobvious (the three fundamental requirements for patentability), if the specification of the patent describes how to use the wish in combination with artificial invention technology to produce new products, and if the patent's claims are written clearly.
I explain why this is the right solution in much more detail in The Genie in the Machine, where I also explain why artificial invention technology itself should be patentable. In my next, and final, blog entry I will explain why computer-generated inventions -- what I have been calling the "wish come true" -- should be patentable, and why it will be particularly tricky to apply patent law's "nonobviousness" standard to such inventions.
The Impact of Automated Inventing on Patent Law - Round 2
Last week, we commenced our (quasi-) serialization of Robert Plotkin's book, The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business. Here, as promised, is part 2 in the series.
Automated Inventing: The Challenge for Patent Law
As I explained in my previous entry, increasingly powerful computer software is being used to automate the process of inventing. Since such software takes a wide variety of forms, I use the term "artificial invention technology" to refer to all of it. Patent law was originally developed in a time when all inventing was performed manually. Now, however, patent law must be ready to deal with attempts to patent artificial invention technology and the inventions it produces.
In my book, The Genie in the Machine, I explain how patent law can be updated to face this challenge. To give a flavor of how patent law needs to be reformed, let me start by explaining the meaning of the book's title. You can view a computer that is equipped with artificial invention software as a kind of artificial genie. A human inventor can provide such a computer with an abstract description of a problem that he or she wants to solve -- such as creating a toothbrush that can whiten teeth more efficiently than previous toothbrushes. This description, which must be written in a language that the artificial genie can understand, is like a wish for a better toothbrush. The artificial invention software (i.e., the genie) uses this artificial wish to create a computer model of an improved toothbrush -- the wish come true. In some cases, the product itself can be manufactured automatically based on the digital design.
In short, the basic pattern described above can be represented by the following simple diagram:
Human Inventor --> Wish --> Artificial Invention Technology --> Wish Come True (Product Design)
This exposes very clearly the questions that patent law must be prepared to answer, namely whether -- and under which circumstances -- each of the following should be patentable:
- Artificial "wishes" (the input that a human inventor provides to artificial invention technology to create a new product design)
- Artificial invention technology (the computer hardware and software that can create new product designs automatically)
- Wishes come true (product designs created using artificial invention technology)
In my next blog entry I will give a flavor for how patent law can be updated to answer these questions.
What Patry Has to Do With ERISA
Permalink | Geez, I hope it isn’t something I said. Some of you may remember that a little while back, in a post discussing why I blog predominately on ERISA and insurance issues but only occasionally on intellectual property issues, I mentioned that there were a lot of terrific intellectual property blogs already out there, mentioning in particular William Patry’s copyright blog. Mr. Patry responded by quitting blogging.
I don’t really think I had anything to do with that, because he gave his primary reason for stopping, and it is one that is telling. He explained that:
my final reason for closing the blog [is] my fear that the blog was becoming too negative in tone. I regard myself as a centrist. I believe very much that in proper doses copyright is essential for certain classes of works, especially commercial movies, commercial sound recordings, and commercial books, the core copyright industries. I accept that the level of proper doses will vary from person to person and that my recommended dose may be lower (or higher) than others. But in my view, and that of my cherished brother Sir Hugh Laddie, we are well past the healthy dose stage and into the serious illness stage. Much like the U.S. economy, things are getting worse, not better. Copyright law has abandoned its reason for being: to encourage learning and the creation of new works. Instead, its principal functions now are to preserve existing failed business models, to suppress new business models and technologies, and to obtain, if possible, enormous windfall profits from activity that not only causes no harm, but which is beneficial to copyright owners.
What is interesting about this is I think that anyone who works on copyright or other intellectual property cases and who looks at things with clear eyes -rather than on the old mantra of where you stand depends on where you sit - knows there is some deep truth to what he is saying, and it is interesting in and of itself for that reason. But it becomes even more interesting when you tie it back in to this blog, and my prior discussions of my skepticism about the patenting of ERISA strategies, which, much like Patry’s comments about copyright, seems to me -as I discussed here- to serve only to lock down for one party the opportunity to pursue a specific business/ERISA related strategy, without any accompanying benefits to the public as a whole, such as encouraging innovation in the field, etc. Maybe I am just ERISA-centric, and I see everything as circling back to that topic, but that’s what I thought of when I read Patry’s post resigning from the blogosphere.
Insurance and the World at Large
Permalink | I am asked on occasion about the topics of this blog and their connection to my practice, more particularly how I ended up focusing the blog on its two primary subjects. For years, my litigation practice has focused primarily on three areas: intellectual property, ERISA and insurance coverage, in no particular order. A joke which I have long used and which always fails to elicit anything more than a pained half-smile is that 50% of my practice is insurance coverage, 50% of my practice is ERISA litigation, and 50% of my practice is intellectual property litigation.
Why did the blog end up focusing on two of those topics - ERISA and insurance coverage - and not the third, intellectual property? Well, one reason is that my experience is that intellectual property cases are heavily fact driven more than they are a product of interesting evolution in case law, limiting the appeal of blogging on them, and another is that, as a very knowledgeable legal blogging guru told me when I started the blog, there were already a lot of - mostly very good - intellectual property focused blogs; all you have to do is take one quick look at William Patry’s copyright blog to see how well tilled that soil already is.
But beyond that, and in contrast, I have found that my other two primary areas of practice, which are the central focuses of this blog (although as the digression section over on the blog topic list on the left hand side of your screen reflects, I do on occasion venture here into intellectual property issues of interest to me), provide a rich vein of endlessly interesting topics and legal developments. ERISA litigation, for instance, is a remarkably and endlessly evolving area of the law, as the courts develop what is in essence a federal common law covering the field, and as the courts deal with new types of retirement plans, plan investments, and increased litigation over both. And the intersection of insurance and the business world is a truly fascinating place to be, as the two come together at every major point in the economy and at every major issue in it as well. Here’s a good story, about the general counsel at Lloyd's of London, that makes that point.
Controlling Costs in Patent Infringement Litigation
Permalink | I tried a patent infringement case to a jury last spring, and while I was quite pleased with the outcome, I left the experience very concerned about the tremendous cost of litigating patent infringement cases. Thinking back over the course of the litigation, I was able to identify some central principles for reigning in the costs of such suits, and I now regularly use those ideas in guiding my own recommendations to clients and approaches to litigation in intellectual property cases. New England In-House magazine has now published my article on this topic, titled “Patent Litigation Doesn’t Have to be Prohibitively Expensive,” which details my ideas on controlling the expense of litigating these types of cases. You can find the article right here.
Where Patent Law Stands Today
Permalink | On Friday I feel free to deviate from the usual topics of this blog into the topics covered under the digressions category over on the left hand side of the blog. Today being Friday, that’s what I’m going to do, this time returning to an issue I have discussed before, the Supreme Court’s targeting last term of the law governing patent litigation and whether patent reform remains necessary - if it ever was - after the Court’s decisions. SCOTUSBlog has this post about the Michigan Law Review’s on-line companion and its collection of shorter pieces addressing exactly those questions. I have read most of the pieces, and in particular recommend Robert Armitage’s piece on the judiciary’s ability to respond to problems in this field of law without legislative reforms and Professor John Duffy’s piece on the impact of the Court’s treatment of the obviousness standard.
It’s a terrific collection, done just the way legal scholarship should be done to have relevance to the practicing bar and not just to other academics. Short, readable, accessible, and thought provoking. Exactly what I have argued before law reviews and law faculty must provide if they are to influence the development of the law, rather than just the heft of law reviews.
Is This The End For Patenting ERISA Strategies?
Permalink | I have talked before - probably too much - on this blog about patents, patent reform, and the fact that the courts are in the process, as far as I am concerned, of reigning in what some see as abuse in the patent system and in patent infringement litigation against large technology and other companies. Of particular note, I have written before about the particular question of whether ERISA strategies should be subject to patent, and, as I discussed in a BNA article on the subject, I don’t run with those who think business method patents should be pushed that far. The Wall Street Journal law blog has an interesting post today that touches on all of this, in particular on a new appellate decision concerning business method patents that may well drive the final nail in the coffin on the idea of patenting ERISA strategies. As that blog puts it: “Legal experts say the court’s ruling . . .may make it more difficult to obtain and enforce business-method patents, which are granted for abstract processes rather than specific devices. . . .The decision suggests that business-method patents will now be considered invalid unless the invention has a practical application and can be linked to a particular technology, such as a computer. The court said that ‘mental processes—or processes of human thinking—standing alone aren’t patentable even if they have practical application.’" Seems to me that ERISA strategies fall exactly within that category of unpatentable mental processes. In fact, frankly, if you read the opinion itself, it is pretty doggone clear that ERISA strategy patents, as distinct from patents involving computer processes for managing ERISA claims for example, should never have been granted, and won’t be in the future.
But I Digress: Robert Plotkin on Patent Applications and Changes at the PTO
Ever mystified by what goes on inside that black box with the colorful flat screen on top that sits on your desk at work? Me too, and when I am I check in with my colleague Robert Plotkin, a patent prosecutor who specializes in computer patents. Robert is a fine source of expertise on patent law and computer technology, and I thought I would pass along this link to his patent tip for August 07, which discusses changes at the Patent and Trademark Office concerning continuation applications. As Robert points out in his publication, the rule change will alter patent applications in a manner that may increase their expense, but do not go into effect until November, creating a short window that patent applicants should try to exploit before the effective date of these changes. And as Robert doesn’t point out in his note on the subject, but did mention to me - given that I litigate patent infringement actions but don’t prosecute patents - the shakeout from the rule change is likely to affect litigation over patents as well, as we move down the road and past the implementation date of these changes.
And aside from my professional interest in patent litigation, how does this relate back to the primary subject matters of this blog? Well, we might point out that business strategy patenting has caused ERISA law to crash head long into patent law, as discussed in this BNA article that I am quoted in.
Patent Infringement Cases Never Go To Trial, Yet Somehow Cost Billions of Dollars
Permalink | Having recently tried a patent infringement case to a jury, I was amused by this article in IP Law & Business pointing out that patent cases are almost never tried and few patent lawyers have actually tried a case to a jury. The key statistic is here, in this line in the article: “there were only 102 jury trials about patent disputes in 2006, out of 2,830 such cases filed, according to the Administrative Office of the U.S. Courts.” I had a lot of fun trying the case, and am circulating an article for publication based on lessons learned from it, but given these numbers, I can only wonder how soon it will be before I get another one past the hurdles of settlement and summary judgment, and into trial.
On a more substantive note, this article here recounts the research of James Bessen, a lecturer at Boston University Law School, who has found that the costs of patent infringement litigation actually exceed the economic value across all industries of patenting inventions. That’s a lot of legal fees, for a field of litigation that almost never gives rise to a trial. More interestingly, Bessen has gathered statistics suggesting that for many industries and many business people, pursuing patents may not be a profitable, or even useful, business strategy. His data points towards something we already know, which is that for those industries, such as the pharmaceutical industry, where holding exclusive rights on a product is crucial, the patent system drives both innovation and large profits, but that for decision makers in other industries, seeking a patent may not always be the best way to proceed with regard to a given product. Certainly though, for the individual inventor, it is probably the necessary first step to ever being able to successfully maintain marketplace control and exploitation of an invention, no matter if, across the economic universe as a whole, businesses may spend more money litigating patent disputes than they earn off of patents.
The Case for More Patent Infringement Litigation
Permalink | Well, not really. More like an argument for a little healthy skepticism when it comes to the subject of patent reform, which as pitched on blogs, in the popular media and elsewhere, really consists of proposals directed at two themes: reducing or at least discouraging the filing of patent infringement lawsuits, and restricting the ability to patent things that are not really advances at all. Now I am all for efforts to tighten the standards for patenting supposedly new discoveries, to more effectively limit patents to developments that are really innovative and not obvious, and anyone who has read my comments in this BNA article here knows I am a bit of a skeptic when it comes to the idea of broadly allowing patenting of business methods or other supposed advances that, frankly, just may not be all that unique or imaginative. And to some extent, we are already seeing a judicial response to this problem, as we see in the Supreme Court’s KSR ruling that makes it harder to maintain patents that do not reflect real innovation and advances in a particular art.
And I don’t necessarily even have a problem with pitches being made by the wealthier part of the tech industries that the patent laws be shifted to protect them against suits by inventors, or licensees, who do not manufacture but are instead simply holders of patents allegedly infringed upon by the manufacturers, such as argued for in this post here by the general counsel of Sun, although I think there should be a high bar for triggering such protections, namely proof, first, of real diligence by the alleged infringer in determining prior to manufacture whether there may be patents out there covering some aspect of the manufactured product and, second, of legitimate efforts by the manufacturer to license any such patents at fair market value.
But what we should be skeptical about is allowing some legitimate ideas for improving the patent system to be used as cover, almost as a Trojan horse, for what may well be a less legitimate goal of simply protecting large companies from smaller companies and even from lone inventors, which is what many people fear they are really hearing when someone with a vested interest in reducing patent infringement claims uses the term patent reform, and we should be very cautious when it comes to changes that reduce the incentives for the little guy or woman, even the lone tinkerer in a garage, to invent something. And the reason for this is right here, in this article about amateur inventors coming close to or bettering the best work of NASA and the large industrial companies that supply it.
Worried about jobs going overseas, about engineering and drug manufacturing going to India, about products being manufactured in China? The best defense against those events impoverishing the American economy is the kind of invention and developments of new products and ideas that the patent system encourages, and of the kind that is reflected in this article.
At the Crossroads of Trade Dress Infringement, Restaurants and Insurance Coverage
Permalink | There is a very interesting and entertaining article - if you like law, food, restaurants, intellectual property, or any combination of them - in the New York Times this morning, about a seafood restaurant suing a newer, competing restaurant for, basically, replicating - allegedly, as the two restaurants don’t look all that much alike to me in the limited pictures that ran with the article - the older restaurant’s menu and look.
Although the article pitches the issue and the lawsuit as new, I actually participated in litigation of the exact same case, for all intents and purposes, some fifteen or so years ago, involving two Boston area seafood restaurants, and whether the newer one had committed trade dress infringement. The end result? The newer one was really, right down to the style of its menu and pretty much everything else you can think of, cloning the older restaurant, and I know from personal experience that the public was actually confused about whether the new restaurant was affiliated with the older one, because prior to the lawsuit I had always assumed they were affiliated. The newer restaurant settled by agreeing to a number of changes that would clearly differentiate the two restaurants, and both restaurants remain thriving, expanding businesses almost two decades later, an amazing thing given the short shelf life of most restaurants.
And beyond the curiosity factor of the case described in the article, we can actually bring this story back around to the title subjects of this blog, by noting that, in that case years ago, the newer restaurant later litigated with its insurer whether there was insurance coverage for that lawsuit and its costs of retrofitting the restaurant to distinguish it from the other restaurant as part of the settlement. The restaurant lost the suit, not because the policy did not cover it, but because the restaurant defended and settled the case brought against it by the older restaurant before even notifying its insurer about the loss. Under the state of the law in this jurisdiction at that time, the restaurant was found to have forfeited coverage under its policy because its actions breached the notice and no voluntary payments clauses of the policy to the prejudice of the insurer (the outcome of that coverage litigation might arguably be different today under current law in Massachusetts, or at a minimum, the restaurant would have stronger arguments for coverage today despite these facts then it did then). And why did the restaurant delay? Because it didn’t know there might be coverage under its policy for the claim, or just assumed there would not be, illustrating the first rule of being a policyholder: always, always notify your insurer whenever a claim arises, and let the insurer figure out whether or not there is coverage for the claim rather than making your own guess.
Patenting Tax and ERISA Strategies
Permalink | There’s a hot topic of discussion out there all of a sudden - I think originally triggered by this post a few weeks back by Suzanne Wynn - concerning whether ERISA strategies should be able to be patented. The discussion, thanks to a detailed look at the issue in this week’s issue of the BNA Pension and Benefits Reporter, has finally reached the point where there is now more light than heat on the subject. I am quoted extensively in the BNA article, which is A WARNING TO ERISA PRACTITIONERS: YOUR BENEFIT PLAN STRATEGIES MAY BE PATENTED, 34 Pens. & Benefits Rep. (BNA) 1329. As per my usual practice of deeming it fair use for purposes of the copyright laws to quote verbatim sections of articles that quote me, here is what I had to say on the question of whether these types of strategies should be covered by the patent regime:
Stephen Rosenberg, a partner with The McCormack Firm LLC, Boston, told BNA in an e-mail May 20 that he is "not a big fan" of business method and similar patents, such as for tax strategies, because these patents "aren't really advancing technology and the like in the scientific or mechanical arts." Rosenberg is a commercial litigator who specializes in litigating ERISA and intellectual property cases.
"With regard to patenting ERISA ideas and methods in particular, I believe you are moving out of patenting innovation and really simply into the realm of what is, in essence, simply the professional knowledge and expertise of the practitioner," Rosenberg told BNA. He added that he did not believe that the counseling of a lawyer or other professional service provider, who is simply applying his or her learned expertise in a particular field of training, should fall within the patent regime. Rosenberg said he believes that advances in professional knowledge of ERISA "should belong to the profession as a whole, as part of the advancement of knowledge in that field."
Rosenberg said that the real purpose of a patent is to provide protection to those who have invested resources into inventing something and who, without patent protection to allow them to exploit the invention, would not profit from it sufficiently to warrant the investment. "I am hard pressed to believe that a professional in the ERISA community who comes up with a new idea for how to attack an ERISA strategy problem won't go forward without [the protection of a patent]; instead, they will sell it to the client, with the expectation the client will be impressed enough to keep returning for more professional services and will recommend that provider to others," Rosenberg said in the e-mail.
In addition, Rosenberg said he believes that patents should not be granted to advances that would be obvious to others who are skilled in the particular field. "I am highly skeptical that a new ERISA strategy is likely to be so beyond what other practitioners, presented with the same problem by clients, would have come up with that it would justify placing exclusivity in the hands of the first to seek a patent for it," Rosenberg added.
I guess you can tell from my comments that I think it is pushing business method patenting a little too far, and in a direction that is simply not beneficial to clients, the profession or the public.
This whole question of how far patent protection should be allowed to extend echoes as well in what the WSJ Law Blog is calling the Patent Reform Battle Royale among the real big spenders, Cisco and Goldman Sachs and big pharma, and in the alleged patent troll problem complained about by Sun’s general counsel on his blog. Weighing in on what they have to say and how it fits in with the questions posed in the BNA article would take a lot more words than I have time to type today, but their posts on the issue are worth taking the time to read; you can then draw your own conclusions as to whether their complaints about the patent system likewise support precluding the patenting of ERISA strategies. If you would like a little more substance on the patent reforms at issue, you can find it here and here.
KSR, Patent Infringement and Obviousness
Permalink | I don’t know how many people with an interest in ERISA litigation share my interest as well in patent and other intellectual property litigation, although I know from experience that I am not the only lawyer who practices in both areas. Either way, for anyone who has been following the issue of the Supreme Court’s recent decision in KSR on the standards for proving that an invention was too obvious to be patented, this article here is as good an overview of the topic as I have come across. Its everything you need to know in a readable nutshell, which is not an easy trick when you are starting out with a complex subject that is founded on decades of jurisprudence on a particular issue.
And to tie the discussion back in more closely to the ostensible subject matter of this blog, here is Suzanne Wynn’s recent post pointing out the possibility of patenting particular approaches to solving ERISA problems; for those of you, who like me, might find the possibility of this occurring troubling, the new rules on proving obviousness might go far to precluding the patenting of such solutions to common problems in the ERISA field.
Patent Infringement Trial
Permalink | Today’s post is sort of a place holder, in a way. My associate Eric Brodie, who is my crack science guy, and I are starting a patent infringement trial this morning in federal court that is expected to last two or three weeks. As a result, I don’t know how much I will be posting for the next couple weeks, although I will try to post here and there, when I have a chance, and will certainly make a point to at least put up short posts drawing attention to new decisions that are handed down while I am on trial or to particularly interesting blog posts or articles published during that time; the posts will undoubtedly lack much discussion by me about those decisions and publications, although, if they merit it, I will return to them to provide comments in a couple of weeks, when I have more time.
Blog vendor Kevin O’Keefe at LexBlog likes to suggest that lawyers blog during the downtime in trials, and comment on what is going on at court, in the interest of showing - in his words - that you not only talk the talk, but also walk the walk. I don’t know whether I will do that during this trial, partly because I am not all that comfortable with blogging about an ongoing court proceeding in which I am involved; I am not sure I feel that it fits my obligations to either the client or to the court, but, if there is something interesting to comment on involving something other than the case I am actually trying, I might put something up from court, maybe over the midmorning break. We’ll have to see on that.
Architects and Copyrights - Who Holds the Rights in the Design of a Building?
Permalink | I have a confession to make: I like houses. I remember an old Arlo and Janis cartoon, in which they respond to a bad day by pulling out the plans for their dream home, which they know they will never build, and add another elaborate room to it: that’s me. And so I greatly enjoy this blog about a couple’s attempts to build their dream home. Now normally, this would not be grist for this blog, for obvious reasons, but for one thing - in a post yesterday, they mirrored reality for me, touching on issues in a case I greatly enjoyed litigating recently, which was a dispute over the right to use plans drawn up by an architect who was subsequently terminated from the project. Given my interest in architecture and copyright law, this case was an absolute ball from where I sit. And in this blog post, the authors are astounded when they learn that the contract forwarded to them by their architect was, first, one sided in that it protected the architect but not the party retaining the architect, and, two, made the plans the property of the architect, even though the authors were paying for them. Their shock falls right in line with what I have always thought of as the three take aways from that recent case I handled. First, that the standard architecture contract, drafted by the architects’ trade group, is completely one sided, was drafted that way intentionally, and should never simply be signed off on, without changes, by anyone retaining an architect to design property for them. Two, that the most egregious part of that standard contract is that it gives all rights in the design of the building to the party designing it, the architect, rather than the person who should hold it, the one paying for that design. And three, that the consumers of the services, unless represented by counsel, don’t know any of this, would be shocked if they did, normally just sign on the bottom line to get the project started, and never learn this unless and until something goes wrong with the project. That standard contract should never be signed off on as is, without changes made to some of these more one sided terms. And at the end of the day, for purposes of this post, it is simply fun to find these truths documented by this couple’s experience, discussed in their blog.
Animators at Law and Sophisticated Trial Graphics
I recently had a fun virtual meeting, by conference call and downloads, with Animators at Law, who produce 2D and 3D trial graphics, and in particular with Christine McCarey, a former in-house counsel and now the company’s national director of business development. I have been at this long enough to remember when trial graphics were big glorified poster boards or, worse yet, were projected by what appeared to be simply updated versions of the overhead projectors that jurors, typically recoiling in fright, remembered with horror from junior high school.
Well, that was then and this is now. Christine, tracking my professional interests, showed off some great pieces of work from a range of intellectual property and insurance coverage cases that were both imaginative and informative; in this visual age, they are the kind of things that a jury will actually note and remember. I particularly liked two examples, the first a graphic from a trade dress infringement trial that showed the defendant’s product literally morphing over time from its original design into a design that perfectly mimicked the plaintiff’s product (for those of you who don’t do this kind of work and wouldn’t know trade dress infringement from a cocktail dress, that kind of a match puts the defendant in the position of having to rely on technical legal defenses, while letting the plaintiff reinforce in the jury’s mind that, hey, the competing products look too much the same for this to be legal).
The second example that I really liked was a series of exhibits from an environmental insurance coverage case. What I liked best about them was that they took what is in essence a dry textual issue - what does insurance contract language mean and how does it apply to these facts - and transformed it into something visual and catchy. That’s no mean feet, and it’s a long way from those bar graphs showing layers of excess policies that passed for exhibits in insurance coverage cases lo these many years ago.
Fun stuff, and if you have an interest in state of the art trial graphics, you could certainly do worse than talk with Christine.
Law Reviews Are Dead, They Just Don't Know It Yet
Permalink | Kevin O’Keefe, the trial lawyer turned legal blogging evangelist who runs LexBlog, the company that provides the technical support - but not any of the copy - for this blog and for the many other blogs listed on the lower left hand corner of this page, has been running a series of posts on the question of the impact of legal blogs on law reviews. I have my own thoughts, based on years of practice and my own stint on a review’s editorial board, on the question of what the growth of legal blogging means for the future of these august but hide bound publications. Now I try to stay away from blogging about blogging - in fact I think I have managed to blog for many months now without ever discussing the subject in a post - because I think it’s essentially navel gazing and it has nothing to do with the reason why people come to this blog, which - I hope not naively - I assume to be to learn about ERISA, intellectual property litigation and the law of insurance coverage. But I couldn’t let the subject raised by Kevin (who, by the way, has no compulsion against blogging about the topic of blogging because, well, that is what his blog is about - blogging) pass without commenting on it from the standpoint of a practicing litigator who focuses on the areas discussed in this blog.
When I came across Kevin’s posts on this topic, the old song lyric that video killed the radio star immediately started sounding in my ears, and no, I wasn’t listening to my ipod at the time. Law blogging is in the early stages of making detailed legal analysis on specific subject areas available to the entire legal community in ways that are both searchable and far more practical and useful than anything that law reviews generally provide. There is little doubt in my mind that practicing lawyers can find far more useful information about specific issues in insurance coverage, for instance, from David Rossmiller’s blog, or on the law of ERISA from Roy Harmon’s blog, or on intellectual property issues from Patently O, and so on and on, then they will ever locate in the published law reviews.
And why is this? There are multiple reasons. First, at the risk of being too negative, law reviews have, over the years, essentially become echo chambers for law faculty to talk to one another or, worse yet, have simply become a place for law professors to publish esoteric work that is absent significance to practicing lawyers or the courts simply because they feel they need to do so if they are to pursue tenure. This is hardly a novel criticism, as I can remember a federal judge - I forget who it was, but he was out of the industrial mid-west - pointing out years ago that published legal scholarship had no merit or relevance to what he did every day. Law blogs are obviously different; the point is to publish useful legal information at a level of legal sophistication sufficient to be relevant to the practicing community, the courts and clients. That is an entirely different audience than the one that law reviews are targeted at, and an entirely different type of information that is intended to be transmitted.
In fact, when I was in law school, a particular near octogenarian law professor, rumored to have been during his earlier days at Harvard the model for Professor Kingsfield in the book and movie The Paper Chase, spoke once about how, many years ago, the writing of treatises that were of practical use to the profession was considered a worthy output for a law professor, but how that was no longer the case. Instead, esoteric topics, the more so the better, were what advanced a career in legal scholarship.
Second, blogs are searchable in a matter of moments. Run a search for ERISA, for instance, over at Google Blog Search, and see how quickly you can find information about the differing approaches to the standard of review in ERISA cases when the administrator is operating under a conflict of interest, a favorite topic of this blog. Then compare that to how quickly you can actually find law review articles on this subject, with the exception of those pieces commented on and linked to in blog posts. I know that those articles are out there, because I have read many of them, but you won’t find them quickly, or without doing traditional types of legal research to locate them.
Third, law reviews have divorced themselves from the practicing lawyer, in multiple ways, only one of which I will comment on here, so as to avoid turning this blog post into, well, the length of a law review article. They make publication too time consuming for many successful lawyers to consider pursuing, thereby limiting the pool of potential author/experts - perhaps intentionally? - to law faculty. I have on my own hard drive, for instance, a nearly finished law review article covering the law of trade dress infringement in the First Circuit that grew out of a summary judgment memorandum in a trade dress infringement case I was litigating. The substance is all there, but finding the time to fix the cites, and dress up some of the transitions, and dot each I and cross each T? Almost impossible, unless I am going to assign it to an associate, which somehow strikes me as cheating. But what I may well do is finish it up to a nearly finished draft status, and put it up on this blog, and just plain bypass the time consuming law review publication system, while still putting the information easily in the hands of those who may have use for it. Blogs make all of this type of information far more readily available to the community than law reviews do or, frankly ever will, unless and until they not only add accompanying blogs but also make all of their text freely available for on-line searching.
So yes, whether you practice in ERISA, insurance coverage, intellectual property, or any of an endless variety of other practice areas, legal blogs are far and away the best source of information, and they are turning law reviews into dinosaurs. The whole subject reminds me of some discussions in Seth Godin’s book small is the new big that can essentially be summed up as, in the age of the internet, businesses can either change or die. As far as I am concerned, that is where law reviews find themselves right now: they can either figure out how to transform themselves into an easily accessible on-line repository of valued information, or they can continue to be marginalized, only at ever increasing speed, into a place where law professors simply go to impress one another.
Intellectual Property, Advertising Injury Coverages, and Licensing
Permalink | At the risk of turning this into blog reader month, I thought today I would pass along this article on the use of intellectual property in growing a business that was passed along to me by blog reader Mike Kraft of Customer Standpoint, who specialize in the analysis of the customer experience. It may not be entirely on point for this blog, but for those of you who may come here looking for information on advertising injury coverages, which, as I have discussed before, can cover some intellectual property claims against insureds, it is a good overview of how any business, including insured companies, put intellectual property assets to use.
Moreover, you can see in the article the range of activities - beyond just inventing technology, which is the popular image of intellectual property development - that businesses engage in involving their intellectual property assets and, if you think about it, you can spot all the different possible points of liability exposure in those actions. Advertising injury coverage can insulate a company against liability on at least some of those fronts, and the question for lawyers and brokers who represent insureds who engage in these types of activities is how to structure an insurance program that protects against all the other liabilities as well.
Insurance Coverage Trial Exhibits
I added a new category today, Insurance Coverage Trials, as a place to collect useful tips, ideas and articles on trying insurance coverage cases that might be useful to readers of this blog who either try such cases or hire (and thereafter manage) lawyers who try such cases. What prompted this idea was a long and very comprehensive pretrial conference in a patent infringement action I am litigating, during which I got to thinking about trial graphics and other fancy doodads and geegaws to submit to the jury; this in turn reminded me of Marc Mayerson's terrific, near scholarly recent piece about designing and admitting into evidence trial graphics in insurance coverage litigation. Marc talks in detail about best practices in designing these types of trial aids, and about the rules for getting them before the jury. What I like best though, I think, is that his post is really focused on design issues, and about what types of graphics best communicate information to a jury.
Readers of other posts of mine, like this one here, know I have a layperson's interest in design (the very thing which got me interested in intellectual property litigation and rights in the first place), so it is fun for me to see a lawyer address from a somewhat different direction, namely that of graphic design, a subject - trial graphics and exhibits - that litigators normally don't consider from that perspective.
Patent Infringement, Copyright Infringement, and the Costs of Doing Business
In addition to litigating ERISA and insurance coverage cases, I have maintained a pretty active intellectual property litigation practice for a number of years. Routinely, when I meet with business people to discuss intellectual property problems, the subject of the expense of protecting intellectual property rights and how to control legal costs in doing so comes up. This is especially the case when I talk with entrepreneurs and people at small start ups who feel that the intellectual property at the heart of their business plans has been misappropriated by someone else - often a more established competitor - but don't think they can afford to do anything about it given the high hourly rates often charged by lawyers.
Now I have written before about better ways to fund insurance coverage litigation than simply paying counsel by the hour, and when it comes to protecting intellectual property, I tell these people the same thing, that they should not let the billable hour model frighten them off from protecting their intellectual property and vindicating their rights. There are, or should be if the lawyers they are talking to are willing to put a little skin of their own in the game, other ways to pay counsel, that are more economically feasible for businesses that don't already have the deepest pockets in the world, but hope to some day, than paying lawyers by the hour to prosecute a patent or copyright infringement action.
And this article here presents those options quite nicely, although in more words than I use when I discuss the same topics with business folk.
Coverage for Copyright Infringement and Why You Should Buy It
In a recent posting I discussed the value to insureds of purchasing an endorsement adding advertising injury coverage to their commercial liability policies when they acquire or renew them because it can grant coverage of at least defense costs in some intellectual property cases, at a minimum copyright infringement claims; this is discussed at http://www.bostonerisalaw.com/archives/cat-advertising-injury.html.
It is most valuable to smaller businesses who cannot carry the tens and hundreds of thousands of dollars that it can take to litigate even the most reasonably sized copyright infringement dispute. Bruce MacEwan, on his blog Adam Smith, Esq, http://www.adamsmithesq.com/blog/, wrote a series of postings recently concerning copyright infringement claims being threatened against him by a major media company for information posted on his website. Of interest to me is one in which he describes being advised that
One motivation for doing this is the remark of an IP practitioner and friend who, unsolicited, volunteered the opinion that "There are entire in-house law departments devoted to sending out legally unjustified cease and desist letters." And the truly bad news is not that dismaying commentary on the paucity of ethics, but his additional observation that far more than half the time, threats work.http://www.bmacewen.com/blog/archives/2006/05/copyright_law_fair_use_an_1.html#more
We can presume that most of the times that this threat works it is because the recipient cannot afford to defend itself against a copyright infringement lawsuit, or at least the calculus is that the profits from the allegedly - but possibly not - infringing activity is less than the cost of defending against that claim. Being insured against such a claim, and knowing that at a minimum the insurer will provide a defense against the copyright infringement lawsuit that will be filed if the cease and desist letter is not complied with, changes the calculus immeasurably. Suddenly, the only real issue for the recipient is whether it is, in fact, infringing on someone else's copyright, not whether it is too expensive to litigate the question and find out.
Once again, insurance to the rescue. More importantly, once again, companies and their counsel simply should not overlook the value of paying a little more for add ons, such as advertising injury coverage, that are typically available.
Insuring and Litigating Design Disputes
What does design, and more particularly the rise of design in modern industrial China, have to do with ERISA and insurance? Little, something and nothing.
A little, because business liability policies often contain advertising injury coverage, which can provide coverage for copyright infringement claims in certain circumstances. You can read my very out of date article on advertising injury coverage - from 1992 - here: Download file. Of note for present purposes, reflecting my lawyerly obsession with footnotes, is footnote one, which details the causes of action covered under advertising injury coverage endorsements.
Something, because one of the areas in which I practice extensively is defending insureds against intellectual property lawsuits in cases where the advertising injury coverage is triggered and the insurer will cover the claim. It is worth noting that this coverage can lead to insurers at least paying for the defense of many types of intellectual property claims, not just copyright infringement actions. I have handled cases in which everything from patent infringement to trade dress infringement actions have been defended by insurers. This comes about because the lawsuits also include a claim for copyright infringement, and the copyright infringement claim triggers the advertising injury coverage, resulting in the insurer having an obligation to defend the insured against the lawsuit. In most jurisdictions an insurer, if it must provide a defense against one count in a lawsuit must also provide a defense against the other counts in the lawsuit (with variations and exceptions not relevant to this discussion, but which can be very important to the particular insured defendant in a particular case). As a result, the other claims made in a copyright infringement lawsuit, such as claims for patent infringement or trademark infringement that are often "bundled" in a lawsuit with a copyright infringement claim, also end up being defended by the insurer. See the following link, which includes an example of a "bundled" case of this nature in which I defended a party charged with patent infringement, trade dress infringement and copyright infringement: http://www.mccormackfirm.com/new.html.
And finally nothing, because the relationship has as much as anything to do with my personal and professional interest in design, and how you protect it. I cannot read an article on architecture, industrial or other design in any setting without immediately thinking about how ownership of it can be protected. There is a fascinating article in today's New York Times on the rise of, for lack of a better term, a commercial design economy in China, that highlights several designers and architects, and their recent work. The article highlights the interplay between traditional Chinese forms and materials, and the country's newest designs and designers. http://www.nytimes.com/2006/04/20/garden/20china.html?_r=1&oref=slogin. In reading it, I immediately jump to the questions of what parts of it can be protected, which owners/designers can limit the rights of others to replicate it, and how that can be done. Issues ranging from claiming trade dress protection in the products, to an architect's copyright in a building design come immediately into play. It fit with a case I am handling, in which the question of the extent of an architect's ownership of and copyright in his design of a building was at issue. You can find a one paragraph discussion about that case here: http://www.mccormackfirm.com/new.html.