The Legal Intelligencer Blog

Fresh Ink: Inside Today's Legal

Welcome to your Wednesday morning round-up of stories in today’s edition of The Legal Intelligencer. All of the links below will take you directly to today’s stories, or you can head straight over to The Legal’s homepage. (Some stories may require registration or a paid subscription.)

Today’s top story is Saul Ewing opening a Pittsburgh office by bringing on four attorneys from Schnader Harrison Segal & Lewis. As reporter Gina Passarella writes, the office will fit into a market that has become sought after not just because of the Marcellus Shale and work relating to it, but because of all the shale play brings with it.

Also above the fold on Page 1, reporter Saranac Hale Spencer writes that U.S. Court of Appeals for the Third Circuit Chief Judge Theodore McKee said that a limit on lengthy briefs announced in January is working.

Below the fold on Page 1, reporter Zack Needles writes that a worked injured in a wall collapse has settled his lawsuit for $2.6 million with the general contractor, a subcontractor and the site owner.

Also below the fold on Page 1, Saranac Hale Spencer writes that the ACLU is seeking to block the state voter ID law.

In more Regional News on Page 3, reporter Amaris Elliott-Engel writes that as savings are stagnating, the First Judicial District has asked for more funding during a lengthy round of Philadelphia City Council budget hearings.

As always, our People in the News section is on Page 2, and the top stories from our sister publications across the country make up the Page 4 National News section.

In this week’s GC Mid-Atlantic column on Page 5, Gina Ameci writes about the challenging personalities to be encountered during employee performance reviews.

In an Intellectual Property column on Page 7, Anthony S. Volpe and Carey Kulp write about improving the likelihood that you own the IP rights to a property.

If you have questions or comments about any of today's stories, or our coverage as a whole, we invite you to email any of the reporters directly. We hope you'll enjoy today's Legal.

Supreme Court Invalidates Medical Treatment Claims as Unpatentable Subject Matter

By Douglas J. Bucklin
Special to the Legal

The U.S. Supreme Court’s March 20 decision in Mayo v. Prometheus invalidated patent claims when they invoke a law of nature but do not “confine their reach to particular applications of those laws.” The court discussed the following representative claim.

A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

“(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and (b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8x108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8x108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.”

The two “wherein” clauses state a newly discovered correlation. Drug levels below 230 pmol per 8x108 red blood cells are insufficient and the amount of drug administered should be increased. On the other hand, drug levels above 400 pmol per 8x108 red blood cells are too high and the amount of drug administered should be decreased. The court stated that steps (a) and (b) were “well-understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” Thus, the claim attempted to patent a law of nature itself, without any restriction on how it is applied, and was invalid.

A patent claim will be invalid as directed to unpatentable subject matter if it recites application of a law of nature by well-understood, routine, or conventional activity previously engaged in by those in the field. This rule will hold even if the law of nature is newly discovered, and the remaining steps are concrete, tangible and useful – but previously engaged in by those in the field.

Going forward, claims applying a law of nature should separately recite method steps that are novel and non-obvious in the absence the law of nature. This should be done to frame application of the law of nature as restricted to the particular “inventive concept” embodied in the separately recited method steps.

Douglas J. Bucklin is an intellectual property attorney at Volpe & Koenig and provides clients strategies to secure and protect their intellectual property. He also advises clients on strategies to avoid or defend themselves against third-party intellectual property. His experience ranges in technical areas from biotechnology to genetics, pharmaceuticals, chemicals, food technology and medical devices.

Did Penn Law Mean to Upset Louis Vuitton?

By Anthony S. Volpe
Special to the Legal

The recent dust-up between University of Pennsylvania Law School and Louis Vuitton raises the question of motivation. Is it a matter of seeking free publicity or lacking attention to detail in drafting the invitation? The current flap surrounds Penn Law’s invitation to an upcoming fashion law symposium (full disclosure, I plan to attend) that LV believes misused elements of its famous trademark.

There is no dispute that LV’s mark is famous and that it is considered to be the source of high-fashion items. So, if we concede the issue of fame and recognize that the mark can be subject to dilution, the question becomes: How can this symposium dilute the mark’s fame? The focus of the symposium is the protection of high fashion – haute couture, if you will – and that is the exact space where LV is famous. So, one would suspect that people in that market space would recognize LV as an entity that will benefit from heightened awareness of the desire to protect high fashion. It does not look like a dilution issue to me.

There is no dispute that Penn Law is a top-notch school with some very brilliant faculty and students. So, if we concede that Penn Law’s students and faculty had the tools to draft a non-offending invitation, the question becomes: Why use a possibly offending invitation? Penn Law’s apparent purpose for holding a symposium on the protection of high fashion is to demonstrate its understanding of current copyright and trademark issues facing the fashion houses that provide the haute couture. It seems that easy solutions were available to avoid the problem. The invitation could have noted the actual ownership of trademarks and could have gone even a little further by noting that the trademark owners did not endorse the symposium. Because these actions, although possibly overkill, were available to Penn, one would conclude that it was an embarrassing mistake that should have never happened. Furthermore, I find it difficult to believe that part of LV’s brand expansion plan is to move into the space for legal seminars. This does not look like trading off LV’s famous mark.

This brings us back to LV’s motivation. I cannot see it as a need for publicity for what is an already famous mark. My guess is that it was a bit of an overreaction to make the complaint and it is now a bit of an embarrassment to LV.

To quote a famous, but unnamed musician, it is sometimes better to, “breathe in, breathe out and move on.”

Anthony S. Volpe, a shareholder at Volpe & Koenig, has corporate and private practice experience in securing, licensing and enforcing all aspects of intellectual property rights. His patent work includes appeals before the USPTO Board of Patent Appeals and interferences and international trade commission, prosecution of patent applications, rendering opinions regarding patentability and enforcement of patent rights.

Can the America Invents Act Deliver on Its Promise?

By Anthony S. Volpe
Special to the Legal

The initial driver for the America Invents Act was to create a stimulus for the American knowledge industry, create jobs and reaffirm American leadership in technology. The Judiciary Committee described the AIA purpose as follows:

Background on H.R. 1249, the America Invents Act: On September 16, President Obama signed into law the Leahy-Smith America Invents Act (H.R. 1249), a bipartisan, bicameral bill that updates our patent system to encourage innovation, job creation and economic growth. Both Houses of Congress overwhelmingly supported the proposal, which was sponsored by House Judiciary Committee Chairman Lamar Smith (R-Texas). The House of Representatives passed H.R. 1249 by a vote of 304-117 earlier this year. The Senate passed the bill by a vote of 89-9. Senator Patrick Leahy (D-Vermont) partnered with Chairman Smith on the legislation. Congressman Smith led the House efforts on patent reform for more than six years.

Much-needed reforms to our patent system are long overdue. The last major patent re-form was nearly 60 years ago. Since then, U.S. innovators have developed cell phones and launched the Internet. And yet the laws protecting the technologies of today are stuck in the past.

Our outdated patent system has been a barrier to innovation, unnecessarily delaying American inventors from marketing new products and creating jobs for American workers. It takes over three years to get a patent approved in the U.S. American innovators are forced to wait years before they can hire workers and market their inventions. Meanwhile, our competitors are busy developing new products that expand their businesses and grow their economies. This year, for the first time, China is expected to become the world’s number one patent publisher, surpassing the U.S. and Japan in the total and basic number of patents. We cannot expect America’s innovators and job creators to keep pace with the global marketplace with the patent system of the past. We need a system that ensures patent certainty, approves good patents quickly and weeds out bad patents effectively.

The Leahy-Smith America Invents Act is one of the most significant job creation bills enacted by Congress this year. The Act implements a first-inventor-to-file standard for patent approval, creates a post-grant review system to weed out bad patents, and helps the Patent and Trademark Office (PTO) address the backlog of patent applications. The enactment of H.R. 1249 is a victory for America’s innovators and job creators who rely on our patent system to develop new products and grow their businesses. The America Invents Act brings our patent system into the 21st century, reducing frivolous litigation while creating a more efficient process for the approval of patents. These reforms will help the innovators and job creators of today launch the products and businesses of tomorrow.

Congress acted on this legislation under the premise that our patent system was the cause of the lagging U.S economy. Now, the United States Patent and Trademark Office is dealing with the task of establishing regulations and practices to implement the new law. Considering the time it will take for the USPTO to establish them and the time for industry and the legal profession to sort them out and create a working environment, there remain real questions about whether the AIA can or will do anything to improve job creation or economic growth.

In the fight leading up to passage of the AIA, the warring sides were largely made up of multinational companies fighting over what provisions were best for them. There was little to truly address the domestic issues of job creation or economic growth.

Consider the following: The USPTO has an impressive display of many patents issued to Apple’s Steve Jobs – an impressive display that reflects brilliance, if not genius. However, the truth is Apple is not an engine of economic growth or the creator of jobs that are needed domestically. While Apple’s stock price tops $500 and it becomes the most valuable enterprise, its products are made in China and very few, if any, of the lower tech manufacturing jobs needed for domestic growth are available in this country.

Apple cannot be faulted for following the business model that the market demands. However, it is but one example of why patents are not and are not likely to be the engines Congress hopes for. Moreover, the number of U.S. patents granted to foreign nationals is increasing quickly. An effort to reverse that trend will require long-term rather that short-term fixes and lofty goals in the Congressional Record. Ultimately, the task of creating jobs will fall to the educational systems that train the next generations and governmental policies that encourage domestic investment over short-term returns.

Anthony S. Volpe, a shareholder at Volpe & Koenig, has corporate and private practice experience in securing, licensing and enforcing all aspects of intellectual property rights. His patent work includes appeals before the USPTO Board of Patent Appeals and interferences and international trade commission, prosecution of patent applications, rendering opinions regarding patentability and enforcement of patent rights.

Should Graduating College Students Attend Law School?

By Anthony S. Volpe
Special to the Legal

The January/February 2012 issue of The Pennsylvania Lawyer has an interesting debate on the pros and cons of law school for college graduates. While both sides make interesting arguments, it is my humble opinion that both sides missed a critical point. During my 35+ years in the legal profession, I have often been asked to speak with prospective law school students or newly minted lawyers about the profession. My advice almost always starts by asking the same questions: What do you expect from the law and what are you personal views and ambitions?

Whether you focus on the job market and financial aspects of a legal education or on the potential fame and fortune that may be available on the horizon, the decision is always a personal one. I have spoken with students, in both college and law school, who have unrealistic expectations of what follows law school graduation and passing the bar exam. It has been my practice to revert back to the two basic questions asked at the start of the conversation. For the uncommitted individual, the failure to land the prized job upon graduation or to attain the desired fame from the practice may define a life of failure. Conversely, an individual committed to the law may find an interesting position at a lesser salary provides the personal satisfaction one seeks in a professional life. Doing a job the right way may not win public acclaim, but it can be very rewarding.

I do not mean to suggest that students should not dream of future success or even wealth. Rather, it is my point that a focus on either money or fame, regardless of whether it is seen as a pro or con, begins the conversation from the wrong point. Since the ultimate decision to attend or not attend law school is highly personal, there needs to be a realistic assessment of the individual’s expectations and ambitions in view of the pros and cons of the legal profession. It is always possible that an individual may be disappointed in the decision; however, it is better to be disappointed in your decision than to have been steered in either direction by someone that may not take into account your personal views and ambitions. In many ways, this is the same advice we give our children about decisions throughout their lives: Actions have consequences.

Anthony S. Volpe, a shareholder at Volpe & Koenig, has corporate and private practice experience in securing, licensing and enforcing all aspects of intellectual property rights. His patent work includes appeals before the USPTO Board of Patent Appeals and interferences and international trade commission, prosecution of patent applications, rendering opinions regarding patentability and enforcement of patent rights.

At Issue: State Governments Interfering With Law School Clinics

By Anthony S. Volpe
Special to the Legal

The recent news report that Maryland Governor Martin O’Malley threatened the budget of the University of Maryland Francis King Carey School of Law because it filed suit against Perdue Farms Inc. and a chicken farm that supplies Perdue is troubling on all levels. Putting aside all merit considerations regarding the suit, there are no positives in the governor’s actions.

Law schools are charged with educating advocates for all sides of an issue and the decision to use the clinic program to advocate for a particular position should not be influenced by the potential that it could result in a loss of funding for the school. The only lesson that can be learned from such meddling is negative – powerful people or companies can apply pressures to bend and twist events to their advantage regardless of the law.

In addition to the harmful lesson this teaches at the law school, it reinforces the public perception that the law is manipulated by the rich and powerful. There is already too much distrust of the process and a public intervention by the state’s top official in a litigated matter can have no good outcome. The governor’s argument that he intervened to save a family chicken farm is unavailing. While it is commendable that the governor is protecting the welfare of the chicken farmer, the families down stream of the alleged pollution and the many users of the Chesapeake Bay are entitled to the same protection. Since there is an obvious dispute over the accuracy of the pollution charges, the matter is best settled by the courts.

There is no good that can come from politicians mixing in judicial issues, regardless of how pure the heart of the mixer.

Anthony S. Volpe, a shareholder at Volpe & Koenig, has corporate and private practice experience in securing, licensing and enforcing all aspects of intellectual property rights. His patent work includes appeals before the USPTO Board of Patent Appeals and interferences and international trade commission, prosecution of patent applications, rendering opinions regarding patentability and enforcement of patent rights.

Has Philadelphia Finally Hit Political Bottom?

By Anthony S. Volpe
Special to the Legal

The recent election of Thomas Nocella as a judge in the Philadelphia Court of Common Pleas was not unique in many ways. He was the Democratic Party candidate and Philadelphia is a largely democratic city. Nocella alleges he had provided years of free legal work for the party and that got him the backing of the Democratic Party boss, U.S. Rep. Bob Brady, which is a huge boost in a democratic city. As expected, the electorate supported the party candidate and Nocella won a judgeship. To that extent, it was very much a standard matter of a party loyalist being rewarded with party support. Nocella's candidacy was vetted by the Philadelphia Bar Association and he received a "recommended" rating. Nothing untoward there … or so it would seem.

However, Nocella has been sanctioned for ethics violations, and apparently admits that he accepted a $60,000 payment for signing a sales document when he was neither an officer of the selling organization nor even a member of the organization. This type of information, which was apparently ignored by the Democratic Party and the Philadelphia Bar Association in advancing his candidacy and recommending his election, gives true meaning to him "winning" a judgeship. It says nothing about earning the right to serve as a judge.

Party politics and the rewarding of loyalist are not bad or corrupt practices. However, ignoring the obligation to advance candidates that meet the job qualifications in training and ethics is a bad or corrupt practice. Likewise, the vetting process of the Philadelphia Bar Association must be reviewed to find and correct the flaw that allowed the recommended rating. I have no reason to suspect that there was any deal between the Philadelphia Bar Association and the Democratic Party to promote Nocella's candidacy, but it has that "something is not right" appearance, especially when the candidate so brazenly admits that it was purely a payback. Philadelphia has many fine jurists who should not be tarred by the election of a judge whose sole basis for being elected is, "That's the way it is done in Pennsylvania."

Politics is not a dirty business until people make it dirty. Philadelphia's political leaders need to raise the bar. Philadelphia cannot be seen as "corrupt and content" if it hopes to attract increased business investment and increasingly affluent residents.

Anthony S. Volpe, a shareholder at Volpe & Koenig, has corporate and private practice experience in securing, licensing and enforcing all aspects of intellectual property rights. His patent work includes appeals before the USPTO Board of Patent Appeals and interferences and international trade commission, prosecution of patent applications, rendering opinions regarding patentability and enforcement of patent rights.

Law Schools – Did the Needle Fall Off the Ethical Compass?

By Anthony S. Volpe
Special to the Legal

The recent reports about law schools misreporting the LSAT scores of the incoming class and the job successes of new graduates raise a concern about their ethics and the obligation of those schools to provide ethical education. Despite requiring students to attend ethics classes and speaking frequently of the law being a higher profession and not just an occupation, law schools do not see themselves are being subject to the same rules. While there may be a current clamor to treat law as more of a business than a profession, treating it as a business does not change the ethical criteria that apply to law schools. It is truly an instance where they need to lead by example.

The problem does not appear to be getting better as students are resorting to using their education to sue the law schools. And, the law schools are resorting to fighting on the basis of administrative errors and the fact that enrollment was not a guarantee of career success. Their actions bring shame onto both of them.

Law schools cannot blunt the consequences of their false reports by blaming them on the “administrative” arm of the school. If a school is negligent in its administration, it is guilty of sins of commission and omission. The institution must operate as a law school and it does not exempt departments of any type from ethical obligations. This no more and no less is to be expected from medical, engineering, business or any other school. It is the foundation of any profession or trade. When the business world was racked by ethical violations, law schools did not announce that they were attributable to the accounting department’s reporting process rather than the corporate governance. It is a matter of the whole meeting the obligation.

Likewise, students who aspire to be the guardians of the law cannot excuse themselves by saying they had no idea the economy was stagnant or that the job market was poor. Students at that level need to be responsible for their own decisions. Furthermore, even casual students of economics know that almost all professions are subject to employment cycles. Even a minimum of due diligence would have alerted the students to the current marketplace conditions for law school graduates. Those conditions were being reported in publication of general circulation and in legal publications that were not controlled by the law schools.

Law schools cannot shirk their ethical responsibilities and students cannot shift the responsibility for their decisions onto the law schools regardless of any ethical violation. They both shamed the profession.

Anthony S. Volpe is a founding partner of Volpe and Koenig. He can be reached at TVolpe@volpe-koenig.com.



Fee Awards: Have Judges Separated Themselves From Practice Realities?

By Anthony S. Volpe
Special to the Legal

There have been a number of recent decisions in which judges have granted fee awards, but have been critical of the number of attorneys that contributed to the matter under consideration or the hours expended in the representation.

I wholly agree that judges need to stand as gatekeepers and every victory should not immediately translate into a fee award. I also wholly agree that every fee awards should not immediately translate into a granting of the entire petition. My concern is with the amount and type of criticism some judges level on winning counsel.

Today's litigation, especially in high stakes, bet-the-ranch cases, has produced a landscape where the attorneys are always second-guessed and, more frequently, a loss or a lower-than-expected outcome results in a malpractice suit. This has the double irony that boards of director that require corporate legal officials to the use "name counsel," so they have the cover of hiring the "best," get counsel that is compelled to staff the case with multiple attorneys to provide input on every possible contingency in an effort to avoid a disfavored result. This is followed by a result that may or may not meet the client's expectation and a judicial fee petition decision that takes counsel to task for too much effort.

As I see it, today's practice has more twist and turns than ever, and the potential for today's client to be tomorrow's plaintiff has never been greater. Everyone wants to control cost, but a general counsel who makes the decision to pick the best counsel option and makes the hard calls to pursue only the claims or defenses that are likely winners is at risk of second-guessing and Monday morning quarterbacking.

I know that most judges are hard working and overworked; however, they still need to take the time to consider the pressures on litigation counsel. Every client wants the brightest lawyers on the matter, and in today's world, they come with a price.

All of this reminds me of something my father would say. As an Italian immigrant, he often would comment that he could, when he first came to this country, buy bread for 10 cents a loaf. To this, I would remind him that he only made a dollar a day at the time. This is applicable to the judges' analysis, the curve moved to the right and that need to be recognized. Hourly rates and the effort needed to litigate matters today have changed. The greater analysis needs to focus on whether the award is justified and, given the decision to award fees, more deference may be due counsel.

Anthony S. Volpe is a founding partner of Volpe & Koenig. He can be reached at TVolpe@volpe-koenig.com.

Is the Constitution the Roadblock to Meaningful Patent Reform?

By Anthony S. Volpe
Special to the Legal

The issue of patent reform and the enforcement of the rights afforded by patents has been making headlines. The make-up of the forces lining up on opposite sides of the issue are not predictable. But, predictably, each side is attacking the other for its self-serving view of how the reform should proceed. With this fight in mind, is it possible that the Constitution has built into its genius the very root of the problem?

The Constitution is clear: Congress has the power under Article 1, Section 8  “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writing and Discoveries.” Since there is no further definition of how this is to be achieved, it is left to the legislative process to provide the statutory framework to accomplish this mandate.

If it stopped at that point, getting the statutory framework in place may not be a problem. However, there is the not-so-small matter of the first 10 amendments to the Constitution, commonly known as the "Bill of Rights," which was required to gain passage of the document. The First Amendment is a prohibition against government power that states, "Congress shall make no law … abridging the freedom of speech or the press, or the right of the people peaceably to assemble, and to petition the Government for a redress of grievances." So, as the nation goes forth, the people get to weigh in on how the Congress should do its job.

As expected, individuals, companies, PACs, lobbyists, trade organizations and the like have chosen sides and there is a virtual First Amendment war of words over the alleged reforms. Each side is sure the other side's view will spell the end of American innovation. Each plainly ignores the fact that more U.S. patents now issue to foreign inventors than U.S. inventors, and many patents with U.S. corporate inventors are assigned to foreign parent companies. 

Many will point to the fact that the U.S. Patent and Trademark Office recently issued Patent Number 8,000,000 as proof that the current system is working. While the system is working in the sense that the PTO is doing its job, that is only one element of the whole patent system. The validity and enforceability of the patent is as critical as the issuance. In the present environment, there is huge uncertainty over issues as basic as what is patentable and how patents will be construed in the courts. The need for certainty in the patent world is critical. Everyone is reluctant to invest in innovation when the rewards are uncertain and the rules shift with the political winds.

Since the recent debt ceiling debate confirmed that the members of Congress will line upon the side of the First Amendment money that funds their campaigns, I predict that we will not get patent reform in a reasoned fashion. Instead, we will get the usual First Amendment blend of compromises that does little to add to the needed certainty.

Anthony S. Volpe is a founding partner of Volpe & Koenig. He can be reached at TVolpe@volpe-koenig.com.