updates for Friday, May 26, 2006
Free Teleseminar on the UTBMS I/P Billing Codes
Time: 12:30 PM Eastern
Duration: 1 hour
Phone in #: Please RSVP to email@example.com in order to obtain toll free dial in number
Fee: No charge to participate
UTBMS Intellectual Property Billing Codes
Until the last decade, law firm billing was relatively straightforward. Firms billed their clients in greater or lesser detail, typically providing in-depth narrative descriptions of the tasks and processes underlying their hourly charges. In recent years, however, clients have more specific about the types and formats of the billing information that they require, and many consumers have moved toward "task-based billing" systems where standardized codes are used to identify common tasks and activities performed by different service providers. This new approach led to a confusing proliferation of different task and activity descriptions, until, in 1995, a consortium of legal service providers and consumers created the Uniform Task-Based Management System ("UTBMS") with standard code sets for four areas of law: litigation, counseling, bankruptcy, and projects. Those codes have now been supplemented with draft patent and draft trademark billing code sets which are available for public comment through August 26, 2006.
Join us for an introduction to intellectual property task-based billing and a discussion of how the UTBMS Intellectual Property Billing Codes will enhance your practice. You will have the opportunity to ask questions during the presentation.
William F. "Bill" Heinze (BillHeinze@tkhr.com) of Thomas, Kayden, Horstemeyer & Risley, L.L.P. in Atlanta, Georgia USA.
Presentation Support Materials:
- UTBMS Patent Billing Codes
- UTBMS Trademark Billing Codes, and
- "An Introduction to Intellectual Property Task-Based Billing"
Please RSVP early to firstname.lastname@example.org in order to obtain toll free dial in number. A fixed number of lines is available.
updates for Thursday, May 25, 2006
An Introduction to Intellectual Property Task-Based Billing
In recent years, however, clients have become more focused on requesting additional billing information from their outside law firms, or asking that billing data be presented in specific formats. In some instances companies have wanted to analyze their costs along various dimensions to provide benchmarks for the more systematic evaluation of legal costs. In others, there has been a desire to develop a database of costs on discrete legal activities. Along with these trends, the rise of electronic legal billing and data exchange has created a flood of new information.
In order to address these and other challenges, many consumers of legal services have began to move toward "task-based billing" systems where standardized codes are used to identify common tasks and activities performed by different service providers. These types of management information systems are well-known in project accounting circles where costs and revenues are allocated according work breakdown structures of deliverables and tasks that need to be performed in order to complete a project. Perhaps the most well-known of these task-based billing systems outside the legal serves profession is the Health Care Procedure Coding System established by the U.S. Health Care Financing Administration (HCFA) in 1978 for the billing of health care services under Medicare and Medicaid. By similarly requiring legal bills to be categorized according to a standard set of tasks and activities, rather than by matter and day of month, it was hoped that service providers and consumers could get a better handle on where those dollars were going.
The Uniform Task-Based Management System
This new approach led to a confusing proliferation of different task and activity descriptions, until, in 1995, a consortium of legal service providers and consumers created the Uniform Task-Based Management System ("UTBMS") with standard code sets for four areas of law: litigation, counseling, bankruptcy, and projects. Each of these four UTBMS "codes sets" includes a hierarchical list of alphanumeric codes and corresponding terms and definitions that describe the universe of legal work in a discrete area of legal practice or specialization. The first element in each code is a letter identifying the corresponding area of law - "L" for litigation, "C" for counseling, "B" for bankruptcy, and "P" for projects - or a general cost type - A for activity or E for expense - as discussed in more detail below.
At the highest level of the hierarchy are "phases" that occur largely in sequential order during the course of a case or matter. For example, in the UTBMS "L" litigation billing code set, includes the following the phases at the top of the hierarchy:
L100 Case Assessment, Development, and Administration
L200 Pre-Trial Pleadings and Motions
L400 Trial Preparation and Trial
Each phase consists of a number of "tasks" providing further detail under the phase level in the coding hierarchy. Tasks are intended to capture tangible work product produced or business results achieved so that, for each billing period, the time charges by attorney or other professional are recorded by task. The intent is to provide a true picture of the labor cost of each task.. For example, here are the task codes under the L300 discovery phase code above:
L310 Written Discovery
L320 Document Production
L340 Expert Discovery
L350 Discovery Motions
L360 Other Discovery
Each of the phase headings and tasks also includes short descriptions such as
L300 Discovery. Includes all work pertaining to discovery according to court or agency rules.
L310 Written Discovery. Developing, responding to, objecting to, and
negotiating interrogatories and requests to admit. Includes mandatory
meet-and-confer sessions. Also covers mandatory written disclosures as under Rule 26(a).
Also provided with the legacy UTBMS code sets are optional "activity" codes that are intended for use with all of the legal areas in order to describe how work is accomplished within a given task code. Activities codes represent the second field to be (optionally) recorded by timekeepers after a task code:
A101 Plan and prepare for
A105 Communicate (in firm)
A106 Communicate (with client)
A107 Communicate (other outside counsel)
A108 Communicate (other external)
A109 Appear for/attend
A110 Manage data/files
However, instead of (or in addition to) activity codes, many consumers of legal services allow there providers to provide the typical detailed descriptions services. In addition to phase, task, and (optional) activity codes, expense codes are also provided for recording out of pocket costs, sometimes referred to as "disbursements," such as witness fees and transcripts:
E102 Outside printing
E103 Word processing
E106 Online research
E107 Delivery services/messengers
E109 Local travel
E110 Out-of-town travel
E112 Court fees
E113 Subpoena fees
E114 Witness fees
E115 Deposition transcripts
E116 Trial transcripts
E117 Trial exhibits
E118 Litigation support vendors
E120 Private investigators
E122 Local counsel
E123 Other professionals
According to an article in the February 2, 2004 issue of "Legal Times," a joint study by the Association of Corporate Counsel and Serengeti Law found that a mere 4.4 percent of the 266 companies that were surveyed required the use of uniform task-based codes in 2002. And, perhaps more troubling, about one-fourth of those companies admitted that they don't use the coded data at all.
So, what's stopping task-based billing for legal services? The April 2004 issue of "Corporate Counsel," describes the UTBMS code sets are so unwieldy that the resulting mass of information often becomes overwhelming. According to a July 2003 article in Lawnet, law firms have also found it unrealistic to expect lawyers to code each and every time entry with two codes. "Lawyers look at the codification of legal services, and they're appalled by it," said David Briscoe, of Altman Weil. "They say, 'There's no way I'm going to take the time to learn this, and, besides, what I do does not fit into the list of codes.'" Electronic legal billing software providers have also been overwhelmed with the sheer number and variety of billing code sets.
The Canadian UTBMS Initiative
In November 1986, a Canadian UTBMS project was instigated at the suggestion of the Insurance Corporation of British Columbia (ICBC). Their legal department saw the value of the UTBMS system that had been developed in the United States. However, the uniform codes developed for the U.S. are not directly applicable to the Canadian legal system due to minor differences in process and terminology. Recognizing the value of a uniform code set for the Canadian legal community, ICBC requested the assistance of The Conference Board of Canada in bringing together a broad coalition of law firms and corporate legal departments from across Canada to address this issue.
An intellectual property code set was developed by the Canadian consortium. However, the code set is quite detailed and uses a variety of terminology that is unique to the Canadian legal system that would be difficult to apply to large multinational legal service consumers.
The UTBMS Update Initiative
The UTBMS Update Initiative (at http://www.utbms.com) was formed in the Spring of 2005 in order to address these and other issues by updating and enhancing the current code sets. The Initiative adopted a three-prong approach focussing on: 1) code updates, 2) international and 3) intellectual property. Shortly after its formation, the Initiative's intellectual property committee collected proprietary billing code sets from various intellectual property legal services consumers and began the difficult process of distilling those materials into a generally-acceptable standard.
In April 2006, the Initiative's intellectual property committee completed its draft patent billing code set and draft trademark billing code set, and voted to join the LEDESTM (Legal Electronic Data Exchange Standard) Oversight Committee. The Intellectual Property Task-Based Billing Codes Sets have now been laid-open for three months of public comments on May 26, 2006. Once all of the comments are in, the IP committee members hope to be able to publish final code set versions by January 2007.
The UTBMS Intellectual Property Code Sets
Due to the transactional nature of most copyright-oriented projects, the UTMBS IP committee members decided to focus on just patent and trademark billing codes for the time-being. Their proposed UTBMS Intellectual Property Code Sets are arranged in a manner similar to the existing code sets, with phase and task hierarchies. Both IP code sets also use the same (optional) Activity and (required) Expense codes, along with some additional expense codes that are unique to intellectual property. Since the "P" prefix was already in use for the existing Project codes, the proposed Patent codes have been tentatively designated with "M," while the proposed Trademark codes have been designated with "T." However, it has been suggested that the project codes set receives such little use that the "P" designator should be transferred to patents. It has also been suggested that the single-character alpha designators be replaced with multiple-character designators (such as "PAT" and "TM") if this change can be accommodated by existing electronic billing systems.
Here are the phase headings for each of the IP code sets:
Intellectual Property Task-Based Billing Phases
M100 - Assessment, Development, and Administration
T100 - Assessment, Development, and Administration
M200 - Patent Investigation and Analysis
T200 - Trademark Investigation and Analysis
M300 - Domestic Patent Preparation
T300 - Domestic Trademark Preparation
M400 - Domestic Patent Prosecution
T400 - Domestic Trademark Prosecution and Renewal
M500 - Foreign Patent Preparation
T500 - Foreign Trademark Preparation,
M600 - Foreign Patent Prosecution
T600 - Foreign Trademark Prosecution and Renewal
M700 - Other Patent-Related Tasks
T700 - Other Trademark-Related Tasks
The M100 and T100 phase headings for patents and trademarks correspond to the L100 headings for litigation. However, the "Experts/Consultants" and "Settlement/Non-Binding ADR" were removed because it was felt by the committee that these items would be unlikely to occur during the assessment phase of an intellectual property matter.
Most client representatives on the committee also expressed a strong need to be able to easily separate their foreign domestic intellectual property costs. However, it was also agreed that the phase headings also needed to be internationalized in order to prevent the code sets from becoming country or region specific, like the Canadian intellectual property code sets mentioned above. The proposed scheme therefore distinguishes "domestic" and "foreign" phases.
It is expected that a client will identify for its intellectual property legal service providers which is the "domestic" jurisdiction. All matters outside that jurisdiction will then fall into the "foreign" phase headings. This arrangement allows cost centers in different countries of multinational consumers of legal services to separately identify how to differentiate among its domestic and foreign legal services billings.
For example, a German corporation with legal departments in the U.S. and Germany might choose to designate Germany as the domestic jurisdiction for legal service providers in all countries. This arrangement would allow the German corporation to easily compare matters where U.S. law firms that were managing foreign counsel in Germany against matters that were being handled directly by German firms. Alternatively, the same corporation might choose to identify the U.S. as the domestic jurisdiction for legal service providers in the U.S. which are managed by the legal department of its U.S. subsidiary, while Germany is identified as the domestic jurisdiction for all other legal service providers. For example, this latter arrangement might be chosen if the legal departments in the U.S. and Germany are essentially autonomous cost centers.
It was also generally agreed among the committee members that application preparation costs were significant enough to need to be separated from application prosecution costs.
Here are sample patent and trademark task identifiers for M300 and T300 involving patent and trademark "Domestic Application Preparation," respectively:
Intellectual Property Task-Based Billing Phase and Task Samples
M300 - Domestic Patent Preparation
M310 - Provisional Patent Application Preparation - Domestic
All actions associated with completing a provisional patent application that is to be filed in the ("domestic") home country or region of the applicant, including review of invention disclosure materials and prior art, interviews with the inventors, drafting and revision of application, preparation and execution of formal documentation (such as assignments, transmittals, and biological deposits), filing of application, and reporting to the client. Note that government fees and external expenses (or "disbursements" in the U.S.) are included under E100.
T300 - Domestic Application Preparation
T310 - Provisional Application Preparation and Filing - Domestic
All actions associated with completing a trademark or service mark application that is to be filed in the ("domestic") home country or region of the applicant, including obtaining the specimen of use from the client, scanning the specimen for electronic filing, discussion with the client to ascertain the dates of first use and first use in commerce, drafting and revision of the application, preparation and filing of the application by electronic or paper formats, and reporting the results to the client. This section includes all domestic trademark and service mark applications filed on the Principal or Supplemental Register. Note that government fees and external expenses (or "disbursements" in the U.S.) are included under E100.
It will be apparent from these examples that "reporting" letters to clients (such as for receipt of an Office Action or other official communication from a patent Office) have not been broken out separately from the tasks that are likely to be authorized by the client as a result receiving the reporting letter. Although service providers put varying degrees of effort into such initial tasks, the need for simplicity in the code sets was believed to overweigh the value of such minute breakdowns of billing information for clients. In fact, the task codes are numbered in groups of ten so as to allow clients to add additional codes for any such further breakdowns, and also allow additional codes to be added by the LEDES in the future to reflect significant changes in intellectual property procedures. In addition, each phase is also provided with an "X99" task code (where "X" is the phase series) that service providers can use for tasks not captured in the in the existing codes for the particular phase, and/or that clients can designate for any special task information that they would like to collect.
Several new expense codes have also been added to capture out-of-pocket expenses that are unique to the intellectual property fields. Those include
E127 File History Copies
E128 Official Fees, excluding post-issuance fees in E129
E129 Official Fees paid after issuance
E130 Searching and Monitoring
Note that when searches, monitoring, drawing preparation, or other activities are completed by the law firm, rather than a third-party vendor, those activities are recorded under a task code, rather than an expense code.
The Intellectual Property subcommittee of the LEDES Oversight Committee is looking forward to receiving your comments on the proposed Intellectual Property Task-Based Billing codes. Please send your comments to Bill Heinze at BillHeinze@tkhr.com.
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948 (USA)
Fax: (770) 951-0933
Mobile: (404) 729-0729
E-Mail: BillHeinze@tkhr.com (business)
E-Mail: BillHeinze@yahoo.com (personal)
*Admitted to practice in the Commonwealth of Virginia. Not admitted in Georgia.
updates for Wednesday, May 24, 2006
US-JP Patent Examination Reciprocity Program Begins July 3
However, in order to be eligible to participate in the PPH pilot program in the USPTO, among other things
- The application must claim priority under the Paris Convention to one or more applications filed in the JPO;
- Examination of the U.S. application must not have begun;
- A copy of the claims that the JPO has determined to be allowable/patentable must be submitted, along with a correspondence table in English showing how all the claims in the U.S. application sufficiently correspond to the allowable/patentable claims from the JPO application;
- Office actions and cited references from the JPO must also be submitted; and
- A Petition to Make Special must be faxed with the petition fee.
Once the request for participation in the PPH pilot program and special status have been granted to the U.S. application, it will be taken up for examination by the U.S. examiner before all other categories of applications, except those clearly in condition for allowance, those with set time limits, such as examiner's answers, and those that have been granted special status for "accelerated examination."
Full requirements for participation in the trial program at the USPTO can be found at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_pp.pdf.
The procedures and requirements for filing a request to the JPO for participation in the PPH pilot program are available from the JPO web site at:www.jpo.go.jp/index.htm.
updates for Tuesday, May 23, 2006
USPTO Collecting Patent Practitioner E-mail Addresses
The Office is in the process of implementing 37 CFR § 11.11, under which each "registered practitioner must notify the OED Director of up to three e-mail addresses where he or she receives e-mail." By this notice, practitioners are being requested to provide up to three e-mail addresses where they can receive communications from the Office. The collection of e-mail addresses is being implemented using a two-step process discussed here.
updates for Sunday, May 21, 2006
I/P Updates Readership Surveys
About "I/P Updates"
The "I/P Updates" news service is written and published by William F. ("Bill") Heinze (e-mail, v-card, resumé), an intellectual property attorney in Atlanta, Georgia USA with over fifteen years of experience.
If you have not heard already, the "I/P Updates" news service offers daily and weekly e-mail subscriptions here. You can also get the latest news and information for intellectual property practitioners via our RSS feed, our Atom feed, or simply by visiting our website at http://rs6.net/tn.jsp?t=sisywsbab.0.ippomkbab.p9qiiibab.20912&p=http%3A%2F%2Fip-updates.blogspot.com%2F. You can even search the "I/P Updates" archives here.
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updates for Friday, May 19, 2006
TGIF for No Place But Texas
Professor Kimberly Moore Nominated to Federal Circuit
On May 18, 2006. President Bush sent his nomination to the Senate for Kimberly Ann Moore, Professor of Law at Virginia's George Mason University School of Law, to be United States Circuit Judge for the Federal Circuit, replacing Raymond C. Clevenger, III, who is retiring.
Professor Moore has a Bachelor of Science in Electrical Engineering and a Master of Science both from Massachusetts Institute of Technology. Prior to law school, Professor Moore was a cooperative electrical engineering student at the Naval Surface Warfare Center. She followed here engineering education with a juris doctorate from Georgetown University Law Center. After law school, Professor Moore worked on intellectual property litigation at the law firm of Kirkland & Ellis for one year and as a law clerk to the Honorable Glenn L. Archer Jr. for two years.She went on to grace the halls of Chicago-Kent College of Law (1997-1999), University of Maryland School of Law (1999-2000), and George Mason University School of Law (2000-present).
Professor Moore co-authors a textbook entitled "Patent Litigation & Strategy" with the Honorable Paul Michel and Ray Lupo (WEST 1999). She has also authored numerous articles on intellectual property topics and has served as an expert involved with several patent litigations. Along with her teaching duties at George Mason, Professor Moore is currently the Editor-in-Chief of the Federal Circuit Bar Journal and an instructor in the Bar/Bri patent bar review course.
Professors Hal Wegner and Dennis Crouch applaud the nomination of the Federal Circuit's first patent academic. "The academic community has long been treated with silence by the Federal Circuit insofar as its opinions are concerned," notes the Good Professor. "She is extremely intelligent, and has a complete understanding of the legal issues faced by the CAFC," adds the Newest Professor. Of course, when it comes to laying down the law at the Federal Circuit, one always has to wonder whether the need for doctrinal practicality in the patent community is not best served by career patent practioners along the lines of Circuit Judges Richard Linn or Pauline Newman, and perhaps even a few others from outside the Capital Beltway.
Congratulations and Good Opinions to the (soon-to-be) Honorable Professor!
updates for Thursday, May 18, 2006
USPTO Requests Comments on Search Templates
These search templates define the field of search, search tools, and search methodologies that should be considered each time a patent application is examined in a particular classification.
The USPTO has published templates’ for each of the classes found in the USPTO’s Manual of Classification.
A search template will define the search field and resource areas of general subject matter, classes/ subclasses, patent documents (both domestic and foreign) and Non-Patent Literature that an examiner should consider each time a patent application is examined in a particular classification. Additionally, the search template will indicate what search tools or methodologies should be considered when performing the search. These search templates are based upon input from patent examiners and other searchers at the USPTO and represent an attempt to capture their institutional knowledge of what are the most relevant prior art searches for determining the patentability of subject matter in the area of technology.
In an effort to ensure that each classification has an appropriately structured field of search and search strategy, the USPTO has published the search templates on the USPTO’s Internet Web site at http://www.uspto.gov/web/patents/searchtemplates/. The USPTO is publishing this request for comments to gather public feedback on the adequacy and completeness of the search templates.
Inventive Step (and Level of Invention) Explained
the steps associated with the "problem and solution approach" derived from Rule 27 EPC which is (not obligatory under T 465/92, OJ 1996, 32 but) almost always applied by the Appeal Boards:
(i) determining the "closest prior art",
(ii) establishing the "objective technical problem" to be solved, and
(iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
According to Dr. Maiwald, since using the invention as the search criterion for finding the "starting point" invariably favours a hindsight analysis, the analysis normally starts from the problem (left to be overcome in the prior art) both as described or implied (e.g. by the discussion of disadvantages of the prior art) in the specification.
In order to formulate the technical problem, one studies the application (or the patent), the closest prior art and the difference (also called "the distinguishing feature(s)" of the invention) in terms of features (either structural or functional) between the invention and the closest prior art and then formulates the technical problem. The "objective technical problem" means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art.
The objective technical problem derived in this way may not be what the applicant presented as "the problem" in his application. The latter may require reformulation, since the objective technical problem is based on objectively established facts, in particular appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. In particular, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only.
In the third stage, the question to be answered is whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves. According to Dr. Maiwald,
Where no evidence is available which supports an improvement over the closest
art, the EPO will often assume that the technical problem was merely to provide
an alternative without improvement – this may be considered as obvious, where an
improvement would have been unobvious. Where the specification reflects embodiment examples which perform worse than the prior art comparisons, the EPO will often conclude that the claimed invention does not solve the problem over the breadth of the claim, and the claim is therefore at least partly not based on an inventive step. On the other hand, The absence of any reference in the prior art which expressly addresses the technical problem solved by the claimed invention, is generally a strong indicator of inventive step.
Thus, solutions to new problems, or better solutions to known problems, are most-likely to be patentable. However, where a feature combination was obvious to achieve some advantage, the occurrence of an unexpected further "bonus effects" advantage does not generally constitute inventive step. (e.g. T 21/81, OJ 1983, 15; T 231/97).
"Level of Invention," on the other hand, is a relative degree of change to a previous system (or solution) as a result of the solution of an inventive problem (one containing a contradiction). This term was introduced by author G. S. Altshuller in "TRIZ," (a Russian acronym for "Teoriya Resheniya Izobretatelskikh Zadatch," a theory of solving inventive problems sometimes referred to as Theory of Inventive Problems Solving), developed by Altshuller and his colleagues in 1946. Altshuller categorized patents by different degrees of inventiveness which he gave one of five levels:
- Level 1 - Routine design problems solved by methods well known within the specialty. Usually no invention needed. example: use of coal for writing
- Level 2 - Minor improvements to an existing system using methods known within the industry. example: graphite pencil (wrapped coal stick)
- Level 3 - Fundamental improvement to an existing system using methods known outside the industry. example: ink pen (ink instead of coal)
- Level 4 - A new generation of a system that entails a new principle for performing the system's primary functions. Solutions are found more often in science than technology. example: printer (another whole system for writing)
- Level 5 - A rare scientific discovery or pioneering invention of an essentially a new system. example: electronic pen & paper (see Anoto)
updates for Wednesday, May 17, 2006
EFS-Web Training, Q&A, and E-Mail Updates from the USPTO
The United States Patent and Trademark Office reports that nearly 42,000 patent applications and follow-on documents have been filed using EFS-Web. In response to demand for additional online training for EFS-Web, the USPTO will be offering free online training sessions twice monthly starting in June. It will also provide a 1 ½ hour on-line training session via WebEx on May 23rd at 1:00pm Eastern time. Participation is limited to the first 200 individual registrants; so, if you are interested in attending this May session, please click on http://websurveyorevents.webex.com/websurveyorevents/onstage/g.php?d=481983658&t=a. To register for future EFS-Web training, click on http://websurveyorevents.webex.com
On May 24th at 1:00pm Eastern time, USPTO’s eCommerce team will be hosting a live, on-line, one-hour Q&A on EFS-Web. Participation is limited to the first 200 registrants and is free of cost. To register click on http://websurveyorevents.webex.com/websurveyorevents/onstage/g.php?d=481355692&t=a To register for future Q&A sessions on EFS-Web, click here: http://websurveyorevents.webex.com.
If you would like to receive regular updates from USPTO on EFS-Web and related eCommerce initiatives, please register by clicking on http://websurveyor.net/wsb.dll/39376/EFS-Update_Subscribe.htm.
For assistance in filing online, please contact the EBC Customer Service Center at 866 217-9197 (toll-free) or 571-272-4100 or send e-mail to email@example.com
Structural Equivalence 'Way' Must Not Add Functional Requirements
"means disposed circumferentially outwardly of the valve portions for supporting the valve portions within the seal housing, the supporting means being movable relative to the housing to permit the valve portions to float relative to the axis of the cannula."
The corresponding structure from the patent was the so-called "ring-levers-teeth" embodiment shown to the left. In this embodiment, the valve 36 is supported by levers 54 which separate the valve into inner portions and outer portions. The levers (i.e., the "supporting means") grip the valve at the junction between the inner and outer portions. When an instrument moves off-axis (i.e., "floats"), the inner portion of the valve remains undeformed while the outer portion deforms.
In contrast, the accused device (below) grips the valve at its outer perimeter, and achieves off-axis movement without deformation The gimbal responds to off-axis forces from an instrument by rotating as a ball-in-socket joint.
In describing the way in which the ring-levers-teeth structure performs the supporting function, the district court stated:
The district court then found that the accused structure performs the supporting function in a substantially different way because "the entire valve in [the accused structure] is supported . . . by a gimbal which holds the entire valve at its outer perimeter."
Applied’s ring-levers-teeth structure supports the inner "valve portions" of a
two-portion septum valve by levers that are attached to a ring that moves from
side to side. The tooth members of the levers surround the inner valve portions,
holding them in the desired circular configuration and isolating them from the
outer portions that are intended to deform.
Since the appeal was from summary judgement, the Federal Circuit declined to independently construe the claim terms in the first instance. Instead, it merely adopted the two functions identified by the lower court as
- holding the portions of the valve defining an orifice within the seal housing and
- to permit the portions of the valve defining an orifice to move freely to and from the axis of the cannula.
The Federal Circuit then concluded that the district court improperly determined the way in which the disclosed ring-levers-teeth structure performed the supporting function:
In his dissent, Judge Dyk concluded that district court did not improperly redefine the function. Rather it simply concluded that the two devices did not perform the agreed function in the same way:
In this step, the inquiry should be restricted to the way in which the structure
performs the properly-defined function and should not be influenced by the
manner in which the structure performs other, extraneous functions. . . .
In its description of the way in which the ring-levers-teeth structure performs
the "supporting" function, under its adopted construction of that function, the
district court improperly included the way in which the structure performed
Nothing in the court’s adopted construction of the supporting function, requires "holding [the valve portions] in the desired circular configuration," or "isolating them from outer portions that are intended to deform." Rather, the defined function only requires holding the valve portions defining the orifice within the housing. Therefore, the district court improperly imported unclaimed functions when analyzing the way in which the disclosed embodiment performed the claimed function.
The analysis of the "way" a function is performed necessarily requires the
use of descriptive language that is not contained in the claim itself. Our
precedent reflects this reality. See, e.g., Kemco Sales, 208 F.3d 1352; Ishida,
221 F.3d at 1316-17. In Kemco We simply described the way in which the patented structure closes.3 The same is true here. Sales, for example, the disputed claim recited "a plastic envelope closing means." Id. at 1355. We construed the function "closing" to simply mean "sealing, such that entry or exit is prevented." 208 F.3d at 1361. We found that "both the accused and disclosed structures perform the identical function, which is to close the envelope." Id. at 1365. However, we held that the accused structure performed the function in a different way because, "unlike the disclosed flap, which closes by folding over the envelope, the dual-lip structure closes the accused envelope in a different way by meeting together and binding via the internal adhesive." We therefore affirmed the district court’s conclusion that no reasonable jury could have found that the accused structure infringed. Id. We did not impermissibly import an unclaimed function of "folding" into the closing function when we stated that the patented structure closes "by folding over the envelope." Id. We simply described the way in which the patented structure closes. The same is true here.
Professor Wegner describes the decision as just another example of our disastrous experiment in means claiming. "That no other country from amongst the more than one hundred Paris Convention member states has seen fit to emulate this odd and arcane practice should speak for itself'" he writes. "The time has come for the United States patent reformers to include the simple abolition of 35 USC § 112, ¶ 6, from the United States Code."
A less radical view of the decision might be that the lower court erred simply by using gerund terminology ("holding" and "isolating") terminology to describe structural aspects of the "supporting means." From that point of view, the last sentence in the dictrict court's "way" analysis could have just as easily been written in terms of structural elements and linkages as "The tooth members of the levers surround the inner valve portions, in the desired circular configuration," without referring to the problematic isolating effect.
Of course, whether the "way" analysis should consider structure alone, or some combination of structure and function (as suggested by the dissent), merely sidesteps the real problem of drawing a bright line bewteen structural and functional language. Perhaps a better way would be to eliminate the function-way-result equivalence test from means-plus-function interpretation and simply rely on the prior art to prevent overbroad functional claim language. The could be accomplished relatively easily by redefining the Section 112 "equivalents" of the corresponding structure, material, or acts described in the specification as "any structure, material, or acts for effecting the function described in the specification." Among other things, this approach would allow claiming a structure in purely functional terms and minimize the need to come up with crazy new structural names in order to broadly identify the function(s) associated with complex stuctures.
Here's an example of what I mean using "the spectrum of patent claiming" from structural to functional format for an application that discloses a switch arranged in series with a battery and a lamp:
- A switch connected to a lamp for signalling. (Pure Structure: flashing is just one inherent effect, allows any signalling function)
- A switch for flashing a lamp. (Structure Plus Function: broader structure, but must effect flashing function as signal)
- A signal lamp (Switch/connection structure is inherent to signal function: terms of art often use this format, neither switch, connection nor flash is required to infringe)
- A flasher (Signalling function is inherent to switch/lamp structure: is this a structural or a functional recitation? arguably a genus for signal lamp species, but when not a term of art, such "lexicography" may be confusing as to what structure is required; but avoids M-P-F structural equivalence limits at cost of clarity)
- Means for flashing (Means-Plus-Function: why should it be limited to "equivalent structure" disclosed in specification, should this be narrower than "a flasher?," no need to consider structure - all flashing structures should infringe)
- Flashing a lamp (Pure Function, but must be done with lamp)
- Step for flashing (Step-Plus-Function, no lamp structure required)
More examples of this "spectrum of patent claiming" for other "elements, linkages, and effects" in a variety of technological fields is available on page 7 of http://media.aplf.org/rm/20031120-public/rt2003-11-20.pps.
New U.S. Exam Guide for Wine and Spirit Trademarks
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), prohibits the registration of a designation that includes "a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods.” This provision was added by the Uruguay Round Agreements Act, implementing the Trade Related Intellectual Property ("TRIPs") portions of the General Agreement on Tariffs and Trade ("GATT") . Article 23 of the “TRIPS Agreement” prohibits the registration of geographic al indications for wines or spirits that identify a place that is not the origin of the goods.
Neither the Trademark Act nor the TRIP S Agreement define the term “spirits.” However, according to the Exam Guide, the term “spirits” refers to any distilled alcoholic beverage ( e.g., gin, rum, vodka, whiskey, brandy).
The procedures set forth in the exam guide apply if the applicant's identification of goods 1) specifically includes wines or spirits, or 2) describes the goods using broad terms that could include wines or spirits ( e.g., alcoholic beverages). The provisions do not apply to geographical indications that the applicant first used on or in connection with wines or spirits prior to January 1, 1996, and does not apply to designations used on or in connection with beer. The provisions also do not apply to goods that are not wines or spirits, but are partially composed of wines or spirits ( e.g., wine vinegar; wine sauces; wine jelly; rum balls; bourbon chicken).
The following chart highlights the differences between the refusals that may apply when a
geographical indication used on or in connection with wines and spirits identifies a place other
than the true origin of the goods:
New Unfair Import Complaints for Lighters, Networks, and Portable Media Players
Docket No. 2485 was filed on 05/15/2006 by Telcordia Technologies, Inc. for "Telecommunications or Data Communications Networks" naming as proposed respondent(s) are Cisco Systems, Inc., San Jose, CA, Lucent Technologies, Inc., Murray Hill, NJ, Alcatel S.A., Paris, France and Alcatel USA, Inc., Plano, TX.
Docket No. 2484 was filed on 05/15/2006 by Creative Labs, Inc. for "Portable Digital Media Players" naming as proposed respondent Apple Computers, Inc.
The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.
Click here for more information on the importance of monitoring these ITC investigations and click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."For the latest details on a particular Section 337 investigation, contact Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.
updates for Tuesday, May 16, 2006
Student Licensors Win $10,000
The annual Licensing Competition is sponsored by the Licensing Foundation, Inc., a non-profit subsidiary of the Licensing Executives Society (USA & Canada) Inc., (LES), a professional organization with members who specialize in the commercialization of intellectual properties (IP). Each of the participating teams was required to submit a business plan with a core IP licensing component.
UIC was one of four teams, out of a total of 12 entries, chosen to present their business plan at the LES Spring Meeting here this week. Entries were judged based on a variety of factors including attractiveness of the venture, quality of the product/service offered, market opportunity and investment potential.
The runner up teams each received $1,000 prizes for their impressive submissions, which included a plan on alternative biofuels presented by Duke, a plan for the development of a smaller battery with more longevity for implantable medical devices from Stanford and a plan to develop a device that would help people who suffer from chronic ear ringing from Wake Forest.
Entries are now being accepted for the 2007 Graduate Student Licensing Competition. The competition will be held at the LES Spring Meeting in Atlanta, Georgia. For more information visit www.licensingfoundation.org.
Supreme Court Overturns Predilection for Patent Infringement Injunctions
According to the U.S. Supreme Court in the EBay v. MercExchange, No. 05-130, (May 15, 2006) in order to obtain an injunction in a patent case, the patent owner must demontsrate, "according to well-established principles of equity,"
- that it has suffered an irreparable injury;
- that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
- that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
- that the public interest would not be disserved by a permanent injunction.
"These familiar principles apply with equal force to disputes arising under the Patent Act," wrote Justice Thomas in an unusually concise opinion vacating the judgment of the Federal Circuit:
However, while the methodology of the Federal Circuit may have changed, the availability of injunctive relief is arguably not much different than it was before the decision. In a concurring opinion by Chief Justice Roberts, with whom Justices Scalia and Ginsburg joined, it was noted that even though historical practice does not justify a general rule that patent injunctions should issue, "there is a difference between exercising equitable discretion pursuant to the established four-factor test and writing on an entirely clean slate." When it comes to discerning and applying those standards, in this area as others, "a page of history is worth a volume of logic."
Neither the District Court nor the Court of Appeals below fairly applied these traditional equitable principles in deciding respondent's motion for a permanent injunction. Although the District Court recited the traditional four-factor test, 275 F. Supp. 2d, at 711, it appeared to adopt certain expansive principles suggesting that
injunctive relief could not issue in a broad swath of cases. Most notably, it concluded that a "plaintiff's willingness to license its patents" and "its lack of commercial activity in practicing the patents" would be sufficient to establish that the patent holder would not suffer irreparable harm if an injunction did not issue. Id., at 712. But traditional equitable principles do not permit such broad classifications.
For example, some patent holders, such as university researchers or self-made inventors, might reasonably prefer to license their patents, rather than undertake
efforts to secure the financing necessary to bring their works to market themselves.
Such patent holders may be able to satisfy the traditional four-factor test, and we see no basis for categorically denying them the opportunity to do so. To the extent that the District Court adopted such a categorical rule, then, its analysis cannot be squared with the principles of equity adopted by Congress. The court's categorical rule is also in tension with Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 422, 430 (1908), which rejected the contention that a court of equity has
no jurisdiction to grant injunctive relief to a patent holder who has unreasonably declined to use the patent.
In reversing the District Court, the Court of Appeals departed in the opposite direction from the four-factor test. The court articulated a "general rule," unique to
patent disputes, "that a permanent injunction will issue once infringement and validity have been adjudged." 401 F. 3d, at 1338. The court further indicated
that injunctions should be denied only in the "unusual" case, under "exceptional circumstances" and "in rare instances . . . to protect the public interest." Id., at 1338, 1339. Just as the District Court erred in its categorical denial of injunctive
relief, the Court of Appeals erred in its categorical grant of such relief. Cf. Roche Products v. Bolar Pharmaceutical Co., 733 F. 2d 858, 865 (CAFed 1984) (recognizing
the "considerable discretion" district courts have "in determining whether the
facts of a situation require it to issue an injunction").
Because we conclude that neither court below correctly applied the traditional four-factor framework that governs the award of injunctive relief, we vacate the judgment of the Court of Appeals, so that the District Court may apply that framework in the first instance. In doing so, we take no position on whether permanent injunctive relief should or should not issue in this particular case, or indeed in any number of other disputes arising under the Patent Act. We hold only that the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such
On the other hand, a separate concurring opinion by Justice Kennedy, with whom Justices Stevens, Breyer, and Souter joined, warns district courts to "determine whether past practice fits the circumstances of the cases before them," especially with regard to so-called "patent trolls" and "business method patents:"
An industry has developed in which firms use patents not as a basis for
producing and selling goods but, instead, primarily for obtaining licensing
fees. . . . When the patented invention is but a small component of
the product the companies seek to produce and the threat of an injunction is
employed simply for undue leverage in negotiations, legal damages may well be
sufficient to compensate for the infringement and an injunction may not serve
the public interest. In addition injunctive relief may have different
consequences for the burgeoning number of patents over business methods, which
were not of much economic and legal significance in earlier times. The potential
vagueness and suspect validity of some of these patents may affect the calculus
under the four-factor test.
To the extent earlier cases establish a pattern of granting an injunction
against patent infringers almost as a matter of course, this pattern simply
illustrates the result of the four-factor test in the contexts then prevalent.
The lesson of the historical practice, therefore, is most helpful and
instructive when the circumstances of a case bear substantial parallels to
litigation the courts have confronted before.
updates for Monday, May 15, 2006
BPAI Opens Electronic Reading Room
If you do not have a proceeding number but you know the caption of the case you
are looking for, for example ABC Co. v. University of Illinois, or you know a
text string found in the case you can search the collection by using the search
features of your favorite commercial database engine. For this you would go to
the website of your favorite commercial search engine and type the text string
on the search field.
Click here to display all final decisions from 07/01/1997 to 05/14/2006.
Ocean Tomo Announces Patent Auction Results
An additional five lots have reached terms off the bidding floor, with an additional value of $5,420,000, bringing the total cumulative auction transactions to 31 lots and $8,446,100. The next Ocean Tomo Auction, set for October 25 and 26, 2006, will include an expanded lineup of IP asset classes -- including trademarks and domain names, as well as a variety of cutting-edge workshops hosted by leading industry professionals.
updates for Friday, May 12, 2006
An Introduction to Corporate I/P Organizations
For example, with regard to hourly billing rates, the authors conclude that
While the concept of hourly billing rates seems logical and appropriate as a wayStill, when considered from the point of view that such a law firm might have when looking for new clients, the report does provide some interesting perspectives. For example, the section on "Creating a Corporate IP Protection Plan That Makes Sense from Both Legal and Business Perspectives" contains this little gem on comparative organizational behavior in the legal environment:
of valuing legal services, in reality corporate clients often suspect that the use of this
method of billing can lead to excessive charges as a result of the firmÂ?s use of billable hours as a basis for evaluating attorney performance. On the other hand, law firms that view themselves primarily as members of a profession whose primary obligation is to serve the legitimate interests of their clients, and who conduct themselves accordingly, are usually not subject to this criticism. This would be in keeping with Abraham Lincoln's observation that "a lawyer's time and advice are his stock in trade."
Unlike a law firm, where there are no rigid limitations on the number of partners and an individualÂ?s potential for increased financial and professional reward is primarily limited only by his capabilities, the corporate pyramid restricts upward mobility within a company. Hence, the corporate professional must look in greater measure to the promise of more challenging work and increased independence as a reward. Inescapably, for most corporate professionals, responsibility for litigation, licensing, and other major work is seen as reward, and the lack of it as a penalty. Guidelines for allocation of this type of work should be clear, and departures from them explained. Failure to do so is detrimental to morale. This does not materially limit managementÂ?s ability to distribute work as they see fit, but it merely places upon them the burden of explanation.In-house practitioners might not agree with how these particular private practitioners expect them to run their business. But, in the end, everyone will acknowledge that it's a good place to start when thinking about how to organize a corporate I/P department.
EPO Examiner Strike
According to Alison Abbott writing for Nature.com on May 9, 2006, the strike was called because
The EPO is planning to introduce a new system of assessing their work next
year. . . . Rather than simply accumulating 'points' for each file
completed, examiners will be graded against objectives, agreed with their
line-manager, that take into account more aspects of the examining
process. . . . Further actions may be planned.
TGIF for SMILEY (and Design)
updates for Thursday, May 11, 2006
Sinful Expert Detachment
Detachment can result in a weak expert report, strained relations and excessive costs. Avoid this by meeting with and reviewing the expert's work early and often. Establish a schedule well in advance of deadlines to work with the expert on outlines and drafts. Help the expert find the right tone for the report and define its breadth and depth.A related problem comes from a lawyer's fear of confronting an expert if problems do arise. Knowing the expert will soon be testifying and not wanting to create friction, the attorney may choose to say nothing. This only perpetuates and exacerbates the problem. Talk through problems as soon as they arise. Be frank and address your concerns. Use good management skills and good communication skills.
updates for Wednesday, May 10, 2006
Allegations of Improper Communications with USPTO Officials in Blackberry Reexam
. . . On Saturday, January 1, 2005, Theodore W. Kassinger, the Deputy Secretary
of the Department of Commerce, sent an email to Mr. Dudas to arrange a meeting
with RIM officials. The substance of Mr. Kassinger's email to Mr. Dudas has been redacted without the assertion of any claim of privilege or exemption under FOIA. Redaction of the email without an assertion of a privilege or exemption is improper. Further, to the extent that Mr. Kassinger's email reflects the substance of any discussion with RIM or its representatives, that information should have bee noted in the record of decision.
Mr. Dudas responded on January 2 thanking Mr. Kassinger for arranging the meeting. He indicated he would be in his office on Tuesday, January 4, and that Jennifer Lo, the Under Secretary of Commerce for Intellectual Property, could work with Jane Dana, the Acting General Counsel of the Department of Commerce, to "set up a convenient time to meet with Mr. Cameron", a lawyer for RIM. A copy of this
email is attached to the Anderson Declaration as Exhibit 5 p. 1.
Copied on Mr. Dudas' January 2 email, in addition to Ms. Lo, were Steve Pinkos, Deputy Under Secretary of Commerce and Deputy Director of the PTO, and Eleanor
K. Meltzer, an attorney-advisor in the office of Legislative and International Affairs of the PTO. Ms. Meltzer forwarded the emails between Mr. Kassinger and Mr. Dudas to James Toupin, General Counsel of the PTO, and John Whealan, Deputy General Counsel and Solicitor for the PTO. NTP infers from these facts and circumstances that Messrs. Toupin and Whealan joined Mr. Dudas and other Commerce Department and PTO officials to meet with Jim Balsille, President and Co-CEO of RIM, and Don Cameron, RIM's Canadian counsel, on January 4, 2005. See Anderson Declaration Exhibit 5, p. 45.
To prepare for the meeting with Mr. Balsille, Mr. Dudas requested that the PTO prepare briefing materials for him on, among other things, the status of the reexaminations of Patent Owner's patents and the lnfrngement Action. Ms. Meltzer sent a "High" Importance email at 9:36 A.M. on January 3 requiring, by 3:00 P.M. that day, the PTO to provide the following briefing materials for Mr. Dudas:
- Identification of the various outstanding patents (by number and owner), and whether they are inter partes reexams (IPRs) or director-ordered re-exams (DORs);
- current status of each;
- Procedural history of each IPR and DOR;
- Information-for each-on the volume of new materials being reviewed and the number of USPTO employees reviewing materials;
- summary of the litigation history; and
- Outstanding issues before the USPTO.
A copy of this email is attached to the Anderson Declaration as Exhibit 2, p. 87.
Ms. Meltzer's email indicated the briefing materials were for a meeting on January 4, at 4:00 P.M., where "Mr. Dudas, other Commerce Department representatives, and possibly representatives from the Department of Justice will meet to discuss the 'RIM' case." Prior to the meeting with RIM, an internal PTO meeting was scheduled for 11 :30 AM on January 4 with the subject "briefing RE: RIM". The email indicates "Required Attendees" were Mr. Dudas, Mr. Pinos, Nicholas Godici, Robert Bah, Elizabeth Doughery, Mr. Toupin, Mr. Whealan, Lois Boland, John Doll and Ms. Meltzer. A copy of this email is attached to the Anderson Declaration as Exhibit 3, p. 99.
It appears from the FOIA documents that the briefing materials Mr. Dudas requested for these meetings pertained directly to the reexaminations of Patent Owner's patents. NTP infers from these, the briefing materials contained non-public information related to the merits of the reexaminations, and the reexaminations where discussed in the meeting with RIM.
Further evidence that a meeting was scheduled between RIM and PTO officials involving the "RTP reexaminations" is contained in an email from Elizabeth Doughert in the Office of Patent Legal Administration. On March 31, 2005, Ms. Dougherty wrote to newly appointed PTO Commissioner John Doll to inquire about the propriety of "industry leaders" seeking an "audience with the Director." Ms. Dougherty states that although she does not know whether the meeting actually occurred, ''The present question reminds me somewhat of the situation in the
RIM/NTP reexaminations where RIM wished to meet with officials at the Department of Commerce and Jim Toupin and John Whealan were to attend the meeting." See Anderson Declaration Exhibit 4, p. 5.
Patent Owner believes there are numerous communications with the third-party requester related to the January 4, 2005 meeting that have not been produced in response to the FOIA request, and which have not been included in the record of decision as required by regulation. . . .
Free Teleconference on Inventive Step at the EPO
Date: May 17, 2006
Time: 12:30 PM Eastern
Duration: 1 hour
Phone in #: Please RSVP to firstname.lastname@example.org in order to obtain toll free dial in number
Fee: No charge to participate
Hear Walter Maiwald [Maiwald@maiwald.de] of Maiwald Patentanwalts GmbH, Munich, Germany speak on "Inventive Step in Current EPO Practise." The presentation will cover
- Methods of determining Inventive Step
- What is the "Problem-and-Solution" approach?
- Is it obligatory?
- Does the EPO use "Obvious-to-try"?
updates for Tuesday, May 09, 2006
Novo Nordisk Files Unfair Import Complaint Against Sanofi Aventis
Such complaints typically include an allegation of intellectual property infringement and a request that the infringing godds be excluded from entry into the United States. The Commission now has 30-35 days from the filing date of the complaints in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.
Click here for more information on the importance of monitoring these ITC investigations, and click here for an audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."
Uncommunicated Law Firm Work Product Protected When In-House Privilige is Waived
The district court held that by relying on advice of in-house counsel EchoStar
waived its attorney-client privilege and attorney work-product immunity relating
to advice of any counsel regarding infringement, including Merchant & Gould.
The district court indicated that the scope of the waiver included
communications made either before or after the filing of the complaint and any
work product, whether or not the product was communicated to EchoStar. The
district court also held that EchoStar could redact information related only to
trial preparation or information unrelated to infringement.
Circuit Judge Gajarsa agreed that "when EchoStar chose to rely on the advice of in-house counsel, it waived the attorney-client privilege with regard to any attorney-client communications relating to the same subject matter, including communications with counsel other than in-house counsel, which would include communications with Merchant & Gould." However, "Merchant & Gould work product that was not communicated to EchoStar or does not reflect a communication is not within the scope of EchoStar’s waiver because it obviously played no part in EchoStar’s belief as to infringement."
Here, Merchant & Gould work product that was not communicated to EchoStar or does not reflect a communication is not within the scope of EchoStar’s waiver because it obviously played no part in EchoStar’s belief as to infringement of the ’389 patent. See Steelcase, 954 F. Supp. at 1198-99. It may very well be true, as TiVo suggests, that at times some parties would communicate draft opinion letters or the contents thereof to the client confidentially in order to avoid disclosing that communication during potential discovery if and when the attorney-client privilege is waived, but we cannot eviscerate the legitimate policies of the work-product doctrine and chill the principles of our adversary system as a whole on account of the possibility that, from time to time, there may be occurrences of ethical ransgressions.
In sum, the advice-of-counsel defense to willfulness requires the court to decide, inter alia, whether counsel’s opinion was thorough enough to "instill a belief in the infringer that a court might reasonably hold the patent is invalid, not infringed, or unenforceable." Ortho Pharm., 959 F.2d at 944. If a Merchant & Gould document was not communicated to EchoStar or if a Merchant & Gould document does not reference a communication between Merchant & Gould and EchoStar, its relevant value is outweighed by the policies of the work-product doctrine. Thus, it was an abuse of discretion for the district court to determine that the scope of the waiver of privilege extended to such documents.