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December 2019

Thank you so much for the opportunity! But I have to respectfully decline….

Balance

A sense of setting ourselves apart from our peers is instilled in law school. Make good grades. Join a legal society. Win book awards. Intern at prestigious firm or high court. Work as a summer associate. Get a scholarship. Become editor-in-chief of law review.  And, in doing so, we often compete against our classmates and other applicants. We train ourselves to be the best we can professionally be so that we stand out and obtain the privilege of opportunities we otherwise would not have.

Don’t believe me? Take a look at any law firm’s listing of attorneys. Chances are accolades are listed by the bio of an attorney highlighting his or her accomplishments. Additionally, a sense of honor or prestige can be associated with those highlighted opportunities. The attorney stands out in a positive way.  And, as newer/younger attorneys, we are often expected to seize these moments as they are privileges in our profession and may be few and far between. 

That being said, a sense of being “too involved” can be counterproductive. What do I mean by “too involved”? Put simply, being too involved is when professional obligations can overrun your life leaving you with no personal life and the feeling of being stressed all the time. Some of us experience this already even with no extra-curricular involvement as our jobs become all consuming. 

More recently, perhaps more than ever, work-life balance is discussed and analyzed in the legal profession. Some of the information is aspirational, while other components are completely attainable. We decide individually what it means to us. However, one aspect that is not often addressed is our own self-inducing stress and how to be okay with scaling back. 

As attorneys, we often overextend ourselves for the practice, our clients, and seemingly impossible deadlines. Toss family commitments, other professional obligations, and self-care into the mix, and we can understand how self-care is low in priorities for us. So as new or young attorneys, how can we seek more balance in our lives from the outset of our careers?

In addition to the many helpful practices and tips from eating healthy, exercising, and “unplugging” from technology, let’s start practicing saying no. Some of us have absolutely no qualms with turning down opportunities and utilizing the two-letter word. Others struggle with it. Regardless of where we individually gauge our comfort level with this concept, we all face trade-offs in our busy field.

Therefore, I believe we can all stand to examine ourselves with respect to the commitments we take on. How do we spend our time? Do we consider it time well spent or wisely spent? Are we often overwhelmed or feel (more often than not) we do not have time for everything? What is the professional time commitment versus personal life ratio? The questions can continue.

One of the ways we can work toward better balance is making sure our priorities and commitments make sense. Rather than accepting every positive opportunity or feel the need to always stand out above the crowd, maybe we can take the time to check in with the individuals we were and still are prior to joining the profession. Let’s make sure we don’t forget our friends from our “past lives,” hobbies we enjoyed, and our families that worked hard to support us achieving our dreams. Most importantly, let’s not forget about staying true to ourselves.

And, of course, these concepts may sound more aspirational (or dare I say cheesy?) rather than pragmatic. However, by giving our commitments thought and by being comfortable with saying no from time to time to some of the opportunities that come our way, we can possibly reduce some self-induced stress and create more time for our entire self and not just who we are in the legal community.


Pets: Causing Chaos or Maintaining Your Sanity?

Yogi

As young lawyers, sometimes it is hard to recognize when we are stretched too thin. In our profession, we often feel the need to commit ourselves to unrealistic expectations. We often talk about work-life balance; however, that typically means we have to give up something we would much rather do for something we need to do at work. With that in mind, we often rationalize not being able to take something on in our personal life because of this work-life wall we put up instead. 

Ever since I was in kindergarten, I dreamt of having a pet; unfortunately, I came from a household that did not allow dogs. Needless to say - this made me want a dog only more. When I moved out on my own at age 18, I kept on saying to myself, “I want a dog.” This went on through undergrad, grad school, and law school; however, I never let that dream become a reality. I had always rationalized this by saying there was no time for a pet. Fast forward three years, I was still saying the same thing, but I knew if, at some point, if I didn’t actualize my dream, I would always push off having a dog. Well, Super Bowl Sunday 2019 came around, and that means the Puppy Bowl was on Animal Planet. This led me down the path of going on Petfinder - and it was that day where I found my first dog, Yogi, a 5-year-old Chihuahua with a lot of personality. 

My work requirements didn’t lessen, in fact, they have expanded since adopting Yogi, but I learned that co-workers will understand when you say you need to go home to feed him or spend time with him. Sure, I will still work a bit more when I am home; however, it is with a lovable pup sprawled across my lap. Balance looks different for everyone, and, for me, adopting Yogi was a positive step in realizing how to achieve that balance.


Getting to know the U.S. Patent Trial and Appeal Board

Patent

As of early 2019, there is a new sheriff in town and his name is Chief Judge Scott Boalick. The Deputy Chief Judge is Jackie Bonilla. After a hearing or trial they have the power to invalidate your patent.  Enter the Patent Trial and Appeal Board, acomponent of the U.S. Patent and Trademark Office based in Alexandria, Virginia.1The new chief prior to joining the USPTO in 2007 was a Patent Attorney with the U. S. Navy. Boalic holds a law degree from Georgetown Univ. Law Center and both Engineering Degrees, B.S.E & M.S.E from Univ. of Pennsylvania. Deputy Chief Judge Bonilla graduated from the Univ. of Virginia School of Law and holds a Ph D in pharmacology from the Univ. of Virginia and a B.A in biochemistry from Univ. of California at Berkeley.

The Patent Trial & Appeal Board is the newest “Rocket Docket” for intellectual property disputes.  The America Invents Act of 2011 created the board and it opened its doors on September 16, 2012. The board rivals the District of Delaware and U.S. District Court for the Eastern District of Texas in patent filings.  The board’s mandate is only to decide if patents are valid and not whether they have been infringed. It must resolve cases within a year and under extraordinary circumstances 18 months.

The first satellite office of the USPTO is in Detroit, Michigan named after Elijah J.McCoy.2He is an African-American inventor born in 1844 and died in Detroit in 1929. McCoy has 57 U.S. patents dealing with the lubrication of steam engines.  His automatic lubricator was patented in 1872.

The USPTO in Detroit is located at 300 River Place South, Ste. 2900, Detroit, Michigan 48207. It serves the Midwest Regionthat includes Ohio, Michigan,Illinois, Indiana, Iowa, Kentucky, Wisconsin and Minnesota. The Director is Damian Porcari previously Director of Licensing and Enforcement for Ford Global Technologies LLC in Dearborn, Michigan. The Midwest Regional Office hosts a variety of events such as workshops, training, interview rooms and a bevy of other helpful and informative information.3

The Detroit Public Library is a Patent & Trademark Resource Center. The library offers beginner orientation sessions on searching for patents and trademarks.

DUTIES

The duties of the board are as follows:

  1. On written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a);
  2. Review appeals of reexaminations pursuant to section 134(b);
  3. Conduct derivation proceedings pursuant to section 135; and
  4. Conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32.4

The three types of post grant challenges (PGCs) available at PTAB are Inter Partes Review (IPR), Covered Business Method review (CBM) and Post – Grant Review (PGR).  PGR can only be petitioned for in the first 9 months after a patent has been issued. IPR has to be filed within the first 12 months. CBM does not have a time limit.

The grounds for challenging a patent under inter parties review are limited to 35 U.S.C. 102 and 103 based on patents and printed publications.

THE BOARD

The Chief Administrative Patent Judge is Scott Boalick who took office on March, 14, 2019.  There are approximately 200 judges hearing cases, all of whom are lawyers with a science or engineering degree. Each case is heard by a panel of three who are dressed in business suits and not robes. The dialogue with the lawyers is polite yet the questions asked by the judges go right to the heart of the dispute. The board does not automatically agree to hear every case filed.  The petitioner in the initial filing must show that it is more likely than not, to prevail. The three Administrative Law Judges issue a decision on whether they will be taking the case and on what grounds of invalidity will be addressed in the proceeding. Trial will only be granted on key substantive issues that are likely to control the written decision. Redundancy in the prior art will not be considered.  If you are not specific in stating why reliance in part is better and why reliance in whole is better in other instances you risk the ground of being dismissed for redundancy. Success is preparation, deep knowledge of the prior art and adherence to the rules.  For example, 35 U.S.C. § 315 (b) (1) provides that an IPR may not be instituted if the petition is filed more than one year after the date on which the petitioner was served with a complaint alleging infringement of the patent.

The key for petitioners is whether district court judges will agree to stay pending parallel litigation while the board reviews the patent’s validity. Defendants in patent litigation are now able to stay district court litigation and go back to USPTO before the Patent Trial & Appeal Board to challenge the validity of a patent.  A district court stay is a big money saver for a client who has been sued for patent infringement because of the significant money expenses involved in both disputes. Therein lies the importance of the critical one year deadline.

The estoppel provisions of the USPTO post grant proceedings are broad. They preclude a petitioner, its real party in interest or privy from challenging the same patent claim in the USPTO or in civil litigation on the grounds that the petitioner raised or reasonably could have raised during the post grant review.5

Amendment of the patent and its claims during a post grant review are rarely granted by the Patent Trial and Appeal Board.  A patent owner may file one motion to amend the patent by canceling any challenged claim or by proposing a reasonable number of substitute claims for each challenged claim.  However, the amendment cannot broaden the scope of the claim challenged or introduce new matter.6  In 2018 the PTO announced its intent to propose new rules aimed at making it easier to amend patents in review proceedings.

Lead counsel must be a registered patent attorney or on motion pro hac vice demonstrating that counsel is an experienced litigating attorney and has established familiarity with the subject matter at issue in the proceeding.

In a game changing development, on May 22, 2017, in TC Heartland LLC v Kraft Foods Group Brands LLC, the U. S. Supreme Court reversed the Federal Circuit.  It held that the word “resides” in the patent statute, 28 U.S.C. §1400(b), refers only to the State of Incorporation of thealleged infringer.  For example, a domestic corporation not organized under Texas law and without a regular and established place of business in the Eastern District is no longer amenable to suit there. The ruling will bar many patent owners from filing cases in the Eastern District of Texas, a patent friendly jurisdiction where in 2018 only 15% of patent suits are now filed.  The so-called non-practicing entities (NPEs) also known as patent trolls should be particularly impacted by this decision.

CONCLUSION

The Patent Trial and Appeal Board conducts inter partes review (IPR) and post-grant review (PGR) of U.S. Patents.  The membership includes the Director, Deputy Director, and Commissioner for Patents, Commissioner for Trademarks and the Administrative Patent Judges.  Each appeal, derivation proceeding, post-grant review including covered business method patent review and inter partes review must be heard by at least 3 members of the board, who shall be designated by the Director.       

The advantages of PGCs is speed because the statute requires the proceeding must be completed in 12 months after institution, subject to a good cause extension to 18 months. The claim construction standard has been changed from the “broadest reasonable interpretation” to thePhillipsstandard.  Another benefit is that the PTAB judges better understand patent issues.

In short, the Patent and Appeals Board corrects errors – patents that should not have been issued in the first place.  There is no money if you win at the patent board.  You simply get confirmation that your patent is valid.  If you lose at the patent board it is likely to hurt or destroy any parallel infringement case in district court.  But, if the board upholds the patent, the inventor is in a much stronger position to prevail in winning money damages in district court.

About the Author

James A. Johnsonis a Trial Lawyer ranging from Insurance Coverage under the CGL Policy to Civil & Criminal RICO. He is an active member of the Michigan, Massachusetts, Texas and Federal Court Bars. Jim can be reached at www.JamesAJohnsonEsq.com 

ENDNOTES

  1. 35 U.S.C. § 6(a)       
  2. PL 112-29 §24
  3. http://www.uspto.gov/about-us/uspto-locations/detroit-michigan
  4. 35 U.S.C. § 6(b)
  5. 37 CFR 42.73
  6. 37 CFR 42.121
  7. 37 CFR 42.10(c)

Legal Technology: Past & Present

Technology

I recently attended the plenary session for the ABA-YLD Conference. Technology was the theme for the entire conference and this program was entitled “What’s your AI.” The program detailed the development of Artificial Intelligence. As a lawyer, the majority of the profession has witnessed the integration of technology into the practice of law in systems such as LexisNexis and WestLaw. As a result, I started to think about whether the lawyers of today have an advantage against the lawyers of yesterday.

After law students completed research and writing, the number of individuals using actual books in the library started to decrease. Outside of the cliché picture of a lawyer or a law student holding a book between the bookshelves in the library, millennial attorneys have put down the books and picked up a search engine. I, myself, have been guilty of walking pass the books in my office straight to ICLE or Westlaw to find what I need. However, I’ve always wonder if the case law or statute I just read is sinking in the way it did when I was getting the information from a book.

Technology definitely provides an advantage when it comes to speed and efficiency but reading a case from the screen of the computer may sometimes fail to belabor the emphasis of a holding or reasoning. Beyond searching for cases, artificial intelligence has also aided in combing through discovery and massive contracts which tends to make life a bit easier. However, searching for key words and phrases in a document may cause someone to overlook material items.

Taken the aforementioned into consideration, I am definitely a proponent for the way artificial intelligence and technology has added to the practice of law. Moreover, it has caused for excellent and efficiency and turn around on work. However, as life tends to remind us, referring to the way things were done in the past is never a bad place to start.

Colemon Potts

Detroit Legal Group, PLLC
Detroit, MI

http://detroitlegalgroup.com/


Building Blocks: Laying the Foundation for Our Legacy

Legacy

 “Let me tell you what I wish I'd known
When I was young and dreamed of glory
You have no control
Who lives, who dies, who tells your story?”

Hamilton by Lin-Manuel Miranda

 The idea of legacy is sometimes contemplated in our more senior years. It certainly may not rank high on your list of priorities as a young lawyer. You may be thinking, “Legacy? Dude, I’m just trying to keep my head above water with billables!” So before waxing too many poetic thoughts about who we are and what we wish to become, thoughts on the topic will be kept somewhat brief. After all, it is never too early to start planning for who we are and who we want to become. 

            What we do

            Often people can be defined by what they do. Have you ever experienced a certain reaction from someone simply by virtue of the fact you say you are an attorney? Some may be impressed. Some may expect you to be wealthy. Conversely, others may be completely disgusted as a negative image of the role attorneys play may be the only example some may carry with them. Regardless of what others may think of the work we do, we can only control our own actions. 

            Being an attorney is so much more than a certain image or a specific role. Inherently engaged in serving others, the myriad of opportunities one has within this profession is vast. As new or young attorneys, we face unique pressures, different from our more seasoned counterparts. Often given assignments no one else wants or has to complete, seemingly insurmountable billable hours, carrying the least amount of clout, survival may be the main focus. However, it should not necessarily be the onlyfocus. The work we do – right now – is important. The people we serve matters – right now. And, the way we lead by example starts right now. 

            Who we are

            Perhaps more importantly, who we are will be more defining than any amount of work we ever do. How do we interact with our opposing counsel? Are we honest in our dealings, both professionally and personally? Do we treat others well? 

            In the legal field, being assertive, aggressive, demanding, and a host of other “strong” attributes are coveted. And, to an extent, they are very much warranted. Our work, my friends, is not for the faint of heart. We need to be strong to stand up for justice, our clients, and for those who need us in their hour of need. Yet, our strong characteristics may need to be tempered with humility, generosity, and displaying graciousness toward others. 

            I want to avoid using the term “good.” Of course, a lot of us want to be “good” people. But what does it mean specifically? More importantly, what does it mean to us individually? Survey ten people and you may receive ten different answers. Rather than provide an opinion of what I think this means to me, I encourage all of us to live our best lives. And, overall, it can be a combination of the qualities discussed above. 

            Don’t take it from me, just another young lawyer. Rather, I challenge us to think about the answer to the quote above. Who will tell your story? And what type of story do you want to leave behind when you’re gone? The foundation to our legacy starts right now. 

Kristina Bilowus

Kizy Law

Southfield, MI

www.kizylaw.com