Last year over 100 of your colleagues attended the Symposium, making it one of the best attended IP programs in Chicago. You can access here the program for the Patent Law Symposium, to be held at the Union League Club, and the registration form.  Registration includes a continental breakfast, luncheon buffet, and cocktail reception.

October 1, 2010 – Chicago, IL
Annual Dinner in Honor of Federal Judiciary
Immediately following the Patent Law Symposium, both symposium attendees and other IPLAC members and guests can attend the 116th Annual Dinner in Honor of the Federal Judiciary at the Union League Club. IPLAC is privileged to have as this year’s keynote speaker the Honorable Randall R. Rader, Chief Judge of the Federal Circuit. The evening’s festivities will also include some special entertainment and, of course, a wonderful dinner. Watch your email for more details and registration information.

June 15, 2010 – Glenview, IL
IPLAC Annual Field Day
More than 150 IPLAC members and guests enjoyed this year’s IPLAC Annual Field Day at The Glen Club in Glenview, Illinois. The 115 golfers – low-handicappers and duffers alike – especially enjoyed the club’s highly ranked golf course (despite the late-day rain), while four avid tennis players got a workout on the courts. The rest of the crowd arrived to relax and socialize with the day’s athletes during a cocktail reception and delicious BBQ dinner, when some great prizes were awarded:

Tennis winner: Joe Fox
Golf 1st place team (men): Jeff Dean, Mike Haberkorn, David Morris, Kurt Wittek
Golf 1st place team (co-ed): Paige Kitzinger, Timothy McCarthy, James O’Malley, Linda Palomar
Closest to the pin: men – David Morris; women – Louise Walsh
Long putt: men – Jeff Baravetto; women – Louise Walsh
Long drive: men – David Morris; women – Louise Walsh

To add to the fun and spirit of the day, two additional prizes were awarded this year. Jeff Salmon, Joe Cwik, Scott Alexander, and Dave Kreitzler took home the award for best team uniform. Another team refused to let the rain deter them from finishing all 18 holes and won the prize for wettest (and disintegrating) score card: Gary McFarron, Andy Kolomayets, Mike Mayo, and Brad Price. Congratulations to all!

Many thanks to Serena Pruitt and Eileen Flynn, of Kirkland & Ellis, and Betsy Derwinski, of Cook Alex, for organizing this phenomenal event. IPLAC would also like to thank McAndrews Held & Malloy Ltd. for donating golf balls and the many law firms that made monetary donations for the event: Cook Alex; Fitch Even Tabin & Flannery; Greer, Burns & Crain, Ltd.; Husch Blackwell Sanders LLP Welsh & Katz; Kirkland & Ellis LLP; Lempia Braidwood LLC; Marshall, Gerstein & Borun LLP; and Nixon & Peabody LLP.

July 20, 2010 | Chicago, IL
Sixth Annual Federal Judicial Panel



IPLAC’s Women in IP Committee hosted its Sixth Annual Federal Judicial Panel, entitled "From the Bench to the Bar: Advice for IP Litigators," on July 20, 2010. This year’s esteemed panel featured Judge Richard D. Cudahy and Judge Diane P. Wood of the Seventh Circuit Court of Appeals, as well as Chief Judge James F. Holderman and Judge Rebecca R. Pallmeyer of the Northern District of Illinois. Meredith Martin Addy, of Brinks Hofer Gilson & Lione moderated the discussion. The event was a great success, with over 75 people in attendance to enjoy the lively panel discussion on a series of interesting topics, ranging from patentable subject matter after the Supreme Court’s decision in Bilski v. Kappos to the interplay between copyright laws and first amendment freedoms as related to internet anonymity. IPLAC thanks the Women in IP Committee, especially Chair Nicole Chaudhari of DLA Piper and Vice-Chair Julie Katz of Husch Blackwell Sanders Welsh & Katz, for organizing yet another successful Judicial Panel.

On June 28, 2010, the last day of its 2010 term, the U.S. Supreme Court, through Justice Kennedy, issued its long-awaited but fractious opinions in Bilski v. Kappos, __ US __, 2010 WL 2555192 (2010). IPLAC submitted an amicus brief, written by Edward Manzo, Don Rupert, and John Crossan, arguing that "usefulness" alone should be the key to patentability of claimed processes. Several factual and policy points made in IPLAC’s brief were picked up by several of the published opinions.

The Supreme Court affirmed the judgment below that claims to Bilski’s method – hedging prices of commodities as against weather risks – are not patentable subject matter, the Court finding the invention as claimed to be merely an "abstract idea." The Court, however, went on and rejected the sole test announced below by the Federal Circuit Court for 35 USC §101 subject matter for process patent claims. The Court agreed with IPLAC and other amici that the "machine or transformation" ("MoT") test applied by the Federal Circuit for subject matter eligibility was both too narrow and non-statutory, although a 5-4 majority held that it certainly could be "a useful clue" for deciding whether an invention is patentable subject matter. The Court cautioned against endorsing the "useful, concrete, and tangible" test of the 1998 State Street Bank case and the 1999 AT&T case, as likely too broad. The Court reaffirmed that a process which claims a law of nature, a physical phenomenon, or an abstract idea does not qualify as patentable subject matter. Justice Stevens, now retired from the Court, with three other Justices opined at length that no "business method" should be patentable at all.

Affirming the ineligibility of Bilski’s hedging method as claimed, the Court has left to the Federal Circuit the job of formulating a new test conforming to the statute and the Court’s prior pronouncements in the Benson – Flook – Diehr line of cases. Unfortunately, the Court provided no guidance on how to assess whether an invention is just an "abstract idea" or not. The scope of patentable business methods, however, may be addressed within this year by the Federal Circuit. Indeed, two life sciences cases that were pending Supreme Court review on petitions for certiorari had been granted review, but then the decisions below were immediately vacated and the cases remanded for reconsideration in view of Bilski. A third life sciences case, Myriad, holding purified genes unpatentable as articles of nature, has been appealed to the Federal Circuit and will be considered in due course. Presumably, the Federal Circuit will use any of these three cases to provide clear and helpful guidance on §101 issues. On June 29, the U.S. Patent Office advised that the MoT test should continue to guide examiners of business method claims.

While seasoned patent attorneys knew until 1998 that "pure" business methods – processes done in one’s head, with paper and pencil, or around a conference table – were not patentable subject matter, the "Information Age" indeed has opened new fields of invention that seem to come well within the scope of "the useful arts." Financial, trading, insurance, agriculture, and other fields of business may yet find at least some "pure" business method patents to be valuable parts of their competitive arsenal. Tax savings patents may or may not survive Congressional action. Stay tuned!

IPLAC kicked off the summer with a superb Annual Field Day at a new location this year – The Glen Club in Glenview. I heard many excellent reviews of the golf course, the dinner, and the overall event, for which we owe sincere thanks to Serena Pruitt, of Kirkland & Ellis, and Betsy Derwinski, of Cook Alex. You can read more about the event at the top of this newsletter. If you could not make this year’s Field Day, be sure to clear your calendar for the event next year. We should have a date to announce in early 2011.

The IPLAC Women in IP Committee, led by Nicole Chaudhari, of DLA Piper, and Julie Katz, of Husch Blackwell Sanders Welsh & Katz, put on a very informative Sixth Annual Federal Judicial Panel, entitled "From the Bench to the Bar: Advice for IP Litigators." It was great to see such a strong turnout for the discussion on current, controversial IP topics.

While the IPLAC event calendar takes a breather during the summer, IPLAC committees are at work planning upcoming programs. Mark Feldman, of DLA Piper, and Jim Sobieraj, of Brinks Hofer Gilson & Lione, have a impressive schedule set for the October 1st IPLAC Patent Law Symposium, which is always one of the best attended IP law programs in Chicago. Check out the links in the Upcoming Events section of the newsletter for more programs details and a registration form. You also will not want to miss the 116th Annual Dinner in Honor of the Federal Judiciary, held right after the Symposium and organized by IPLAC’s Dinner Committee led by Janet Pioli, of Brinks Hofer Gilson & Lione (and IPLAC’s Vice-President), and Gavin O’Keefe, of Greer, Burns & Crain.

Many other programs are in the works. I encourage you to get more involved in IPLAC by joining a committee. Check out the Committee Sign-up Form, and let us know where you would like to share your talents.

I look forward to seeing you on October 1.

Sincerely,
Edward Manzo, President
Husch Blackwell Sanders Welsh & Katz

One More Benefit of IPLAC Membership
Did you know that your membership in IPLAC entitles you to a copy of the 2010 edition of Patent Claim Construction in the Federal Circuit for just $25? That’s a discount of $124 off the publisher’s price of $149. For more information or to order, click here.