Saturday, February 23, 2008

Citations of blogs by law reviews

IPBiz has been fascinated by the discussion on the frequency of citation by law review articles of blogs. See for example TheRaceToTheBottom and Orin Kerr/Volokh Conspiracy . One comment on racetothebottom was of interest: I agree with Geoff that it would be interesting to see break-out citations to substantive legal issues beyond blogging. IPBiz was interested to see "how" blogs were being cited in law review articles, and studied some cites to Patently-O. A short list follows.

1. Andrew Beckerman-Rodau, 89 J. Pat. & Trademark Off. Soc'y 631 (2007)

Text in which footnote appears: A jury found that Vonage infringed three of Verizon's patents.
Footnote 129: Verizon v. Vonage, Patently-O Blog, April 12, 2007, (last visited July 19, 2007).

2. Blake B. Greene, 22 Berkeley Tech. L.J. 155 (2007)
Text in which footnote appears: Additionally, and more importantly, the Federal Circuit structured its equivalence analysis to illustrate a new limiting principle on the doctrine of equivalents. [speaking of Bicon v. Straumann, 441 F.3d 995]
Footnote 209: Cf. Posting of Thomas Fairhall to Patently-O Patent Law Blog, Federal Circuit Further Limits Doctrine of Equivalents under "Specific Exclusion" Principle, (Apr. 2, 2006) ("The Court [sic] invoked a new exclusion principle essentially foreclosing coverage under the Doctrine [sic] [of Equivalents] in cases where a claim contains a detailed recitation of structure ... ."). The blog seems to focus more on the "specific exclusion principle" as a doctrine as opposed to the adoption of a "new exclusion principle" created where a claim contains a detailed recitation of structure.

3. Michael Saunders, 22 Berkeley Tech. L.J. 215 (2007)
Text in which footnote appears: some commentators claimed that it would "likely change the face of patent litigation." [speaking of Phillips v. AWH]
Footnote 2: De Novo Claim Construction, Posting of Dennis Crouch to Patently-O: Patent Law Blog, (Jul. 22, 2004).

4. Thomas F. Cotter, 22 Berkeley Tech. L.J. 855 (2007)

Text in which footnote appears: It therefore came as little surprise to many observers when in a recent administrative law decision, Ex parte Lundgren, n80 the USPTO's Board of Patent Appeals and Interferences put to rest the technological arts exception.
Footnote 81: See Patent Law Blog (Patently-O), BPAI "Informative' Opinion on Business Method Patents, (Feb. 16, 2007);

5. Virginia Zaunbrecher, 21 Berkeley Tech. L.J. 33 (2006)
Text in which footnote appears: Using this reasoning the court concluded that the golden masters encoding the software were "components" for the purposes of 271(f) and therefore, Microsoft was liable for the infringing devices [p. 44] made overseas from the golden masters.
Footnote 81: Microsoft's liability was contingent on the validity of the patent, which was litigated separately. On September 27, 2005, the PTO reissued the patent. See Eolas v. Microsoft: Patent Set to Reissue, Patently-O, microso.html (Sept. 28, 2005).

6. Jennifer Lane, 21 Berkeley Tech. L.J. 59 (2006)
Text in which footnote appears: The U.S. Patent and Trademark Office continues its re-examination of NTP's asserted patents. n83 Meanwhile, the Supreme Court denied RIM's petition for certiorari. n84
Footnotes 83 and 84:
N83. NTP v. RIM in Hands of District Court, Patently-O, uscore;in_ha.html (Oct. 23, 2005). The U.S. patent office has issued initial rejections in the re-examination proceedings of all NTP patents in question. These rejections have yet to be made final. The district court has refused to stay proceedings pending the final result of the Patent Office's re-examination. See BlackBerry Patent Settlement Found Unenforceable - Stay of Injunction Denied, Patently-O (Nov. 30, 2005),
n84. See Supreme Court Denies RIM's BlackBerry Appeal, Patently-O (Jan. 23, 2006), _d.html.

7. Brief republished in 21 Berkeley Tech. L.J. 999 (2006)

With the exception of changing the format to fit the Journal's format, this Brief has been reproduced as it was filed with the United States Court of Appeals for the Federal Circuit. Other eBay v. MercExchange amici briefs are available at Review: EBay v. MercExchange Amici Briefs, Patently-O, (Jan. 31, 2006).

8. Katherine J. Strandburg, Gabor Csardi, Jan Tobochnik, Peter Erdi & Laszlo Zalanyi, 21 Berkeley Tech. L.J. 1293(2006)

Footnote 85: See KSR Int'l Co. v. Teleflex, Inc., 126 S. Ct. 2965 (2006) (No. 04-1350); see also Dennis Crouch, Supreme Court: Current Test of Obviousness is "Gobbledygook", Patently-O, Nov. 29, 2006, and associated linked documents, including amicus briefs taking a variety of positions regarding the "suggestion test" issue.

9. MARGO A. BAGLEY, 47 B.C. L. Rev 217 (2006)
Text in which footnote appears: This focus on the specification suggests inventors and practitioners would do well to place more emphasis on drafting a good disclosure that includes claims, a practice that may not be the norm for most TTOs with numerous early-stage invention disclosures and a limited prosecution budget.
Footnote 144: See Posting of Dennis Crouch, Including Claims in Provisional Patent Applications?, to Patently-O: Patent Law Blog, (Sept. 16, 2005). Even if no claims are included in the application, the following advice from Dennis Crouch, a patent attorney and blogger, seems apt:
In the wake of Phillips v. AWH, it has become even more important to ensure that a patent's specification accurately describes the meaning of the associated claim terms. This task is all but impossible in the absence of any claim terms to describe. Thus, it is important to draft at least a few model claims with the provisional application.

[IPBiz notes that William B. Slate in 85 J. Pat. & Trademark Off. Soc'y 219 (2003) wrote: As will be discussed below, the lack of a claim requirement does not necessarily negate the reasons for applicants to include claims. (...) The presence of attorney-crafted claims may add the necessary objective generic terms, numerical ranges, etc. needed for meaningful claim coverage and not typically present in the client-provided materials. If the same claims are repeated in the nonprovisional application and ultimately issue in a patent, the entitlement of that patent to the effective filing date of the provisional application is all but unquestionable.
IPBiz also notes that IRVING N. FEIT AND LAUREN T. EMR wrote in Intellectual Property Today in December 2002: it is difficult to imagine being able to satisfy the written description and enablement requirements of ยง 112 without knowing precisely what one intends to claim up to twelve months later upon filing a non-provisional application. NOTE that BOTH of the above papers were cited by ODED HECHT, Extensive Use of Provisional Patent Applications in University Settings, IPT (June 2006), although NEITHER were cited in Bagley's 2006 article. See also LBE in IPT, p. 5 (Sept. 2002). ]

10. Samuel P. Jordan, 2007 B.Y.U.L. Rev. 55 (2007)
Text in which footnote appears: There is good reason to believe that Pfizer's action was in direct response to panel announcement.
Footnote 22: In Apotex, the issue related to whether the filing of an Abbreviated New Drug Application (ANDA) by itself creates a reasonable apprehension of suit. In an earlier case, Teva Pharmaceuticals USA v. Pfizer, Inc., the Federal Circuit had held that it does not. 395 F.3d 1324 (Fed. Cir. 2005). Judge Mayer, who dissented in Teva, was assigned to the Apotex panel, a sign that perhaps the Teva holding was insecure. The covenant not to sue was entered into after the panel was announced. Dennis Crouch, Appeals Court Dismisses Apotex Case Against Pfizer's Quinapril Patent, Patently-O, Apr. 11, 2005, court d.html; Dennis Crouch, CAFC Judge Mayer: "Maybe Posting Paneling Is a Very, Very Bad Thing," Patently-O, Mar. 14, 2005, judges que.html [hereinafter Crouch, CAFC Judge Mayer].

11. David Gulbransen, 20 CBA Record 36 (2006)
Firms are also in the blog game. Patently-O ( is an extremely popular patent law site authored by Dennis Crouch of McDonnell Doehnen Hubert & Berghoff LLP.

12. 20 CBA Record 41 (2006)

Patently-O: Patent Law Blog
Patent attorney Dennis Crouch with McDonnell Boehnen Hulbert & Berghoff LLP posts about developments in patent prosecution and litigation in one of the most popular patent blogs on the Web.

13. Scott A. Turk, 6 Chi.-Kent J. Intell. Prop. 43 (2006)

Text in which footnote appears: The United States Government, American Intellectual Property Law Association, IBM, and Intellectual Property Law Association of Chicago briefs all pushed to have dictionaries in a more subordinate role.
Footnote 161: See Dennis Crouch, Patently-O: Patent Law Blog -- Phillips v. AWH: The Amicus Briefs (September 23, 2004).

14. Amy L. Landers, 84 Denv. U.L. Rev. 199 (2006)
Text in which footnote appears: Although the term has been characterized as too vague, n10 overly broad, n11 and "used unfairly to deride" patentees, n12 the phrase patent troll is always used in the pejorative and contrary to how a healthy patent system should operate.
Footnote 11: See Dennis Crouch, What is a Patent Troll?, PATENTLY-O, May 12, 2006, (excluding from the definition of "patent troll" those entities who do research and development).

See also


Blogger Unknown said...

This is part of the reason why, when I was an associate in BigLaw, I always had to suddenly go to the restroom whenever some partner said "We should write a law review article / white paper on that." I also scrupulously avoided any kind of law review in law school.

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