Directors Marc Brockhaus and Jordan Sigale were guest bloggers on IP Frontline, a web magazine about intellectual property.  Our post, “What would Alice and its progreny look like as word jumbles?” ran on June 29, 2015. 

Dunlap Codding is pleased to announce that Managing Intellectual Property magazine ranked the firm in its top tier—Highly Recommended—and named five firm attorneys to its IP Stars 2015 list:  Marc A. Brockhaus, Nicholas D. Rouse, Jordan A. Sigale (Illinois), Douglas J. Sorocco, and Joseph P. Titterington.  More Dunlap Codding lawyers were named to the list of IP Stars than from any other firm in Oklahoma. 

Marc Brockhaus leads the firm’s Electrical Engineering & Systems group.  He received his J.D., M.B.A., and B.S. in Electrical Engineering from the University of Oklahoma.  Nick Rouse is the firm’s Managing Director and the head of its Mechanical Engineering group.  He received his J.D. and his B.S. in Petroleum Engineering from the University of Oklahoma.  Doug Sorocco heads the firm’s Life Sciences practice and received his J.D. from the University of Dayton and his B.S. in Chemistry from Butler University. Jordan Sigale is a Co-Chair of the firm’s Litigation practice and offices in Chicago.  He received his J.D., magna cum laude, and B.S. in Electrical and Computer Engineering from the University of Illinois.  Joe Titterington is also a Co-Chair of the firm’s Litigation practice.  He received his J.D. from the University of Oklahoma and his B.S. in Psychology from Oklahoma State University. 

Managing Intellectual Property’s IP Handbook ranks leading intellectual property agencies and law firms worldwide, highlighting the country’s prominent intellectual property attorneys.  Results are based on a research process comprising more than 1,000 interviews of and surveys from peers and in-house counsel active in the United States. 

Jordan A. Sigale was quoted in Donna Young’s recent article in Scrip Intelligence, “Patent ‘superpowers’ time limits upheld:  Biopharma implications.”  Young wrote that Kimble v. Marvel  “may help patent holders and those that enter into licensing rights deals, including biopharmaceutical makers, better understand and be more aware of a nearly half-century old case law rule.”  

The U.S. Supreme Court, in a split decision, declined to overturn the 1964 standard set in Brulotte v. Thys, which ruled that patent holders cannot demand royalties for the use of their inventions after the patent terms have expired. 

Sigale said, “Big biopharmaceutical firms are well-represented in patent law and intellectual property matters, so they already know their way around the Brulotte rule….If anything, the Supreme Court’s ruling in the Marvel case makes it clearer the Brulotte rule is narrow and that there are ways to draft around it….But for those who are unsophisticated about Brulotte, the opinion is unfortunate….It would be much better to knock out this rule.  It doesn’t make economic sense…and any standard that gives the advantage to those who can afford the best legal representation is bad for society.”

 Ryan Davis, writing for Law360, on June 22, 2015, also quoted Sigale.  Davis wrote, “The Kimble case arose because neither party knew about the [Brulotte] rule when Marvel agreed to license Kimble’s patent for use in a Spider-Man Web Blaster toy in perpetuity.”  Sigale was quoted as saying, “The decision explains that the Brulotte rule really is as narrow as we thought it was….If you make it clear there are no royalties for the patent after it expires, you can do anything you want.”  

“Sigale said it was helpful that the court expressly gave its blessing to later payments of royalties accrued during the life of the patent,” said Davis.  Sigale said, “Before today, people were a little nervous that the court would say that’s just putting form over substance.”

Julie Langdon was quoted by Cara Salvatore in an article published by Law360 on June 1, 2015, entitled “6 Ways Associates Are Falling Short.”  The article noted the following ways associates are stumbling and offered steps to improve:

• They Aren’t Visible Enough
• They Don’t Take Ownership
• They’re Not Thorough
• They’re Not Friend Material
• They Don’t Know How to Talk on the Phone
• They Don’t Sow the Seeds for Business Development

Discussing ownership, Langdon noted that it was important to follow up relentlessly and to know what to do when mistakes occur.   When they do, as they inevitably will,  it’s important to own the problem quickly and take steps to correct it.  “Unfortunately, it happens:  A document that was supposed to be filed under seal that was, by mistake, filed publicly, and you’re calling the clerk at 8 a.m. the next morning…’take this off the docket.’”  She went on to note, “All things are fixable.”

“A belief that a patent is invalid isn’t a defense to a charge of induced infringement, the Supreme Court ruled 6-2 on May 26 (Commil USA, LLC v. Cisco Systems, Inc., 2015 BL 164427, U.S., No. 13-896, 5/25/15).”  Bloomberg writes that the Supreme Court reversed the Federal Circuit Court, holding that Cisco Systems Inc. couldn’t overturn a jury award based on its argument that Commil USA LLC’s Wi-Fi related patent claims were invalid.  A third trial is now likely in this case, according to Bloomberg, “The case returns to the Federal Circuit with only one part of its decision reversed.” 

Some commenters noted that the court’s comments on trolls were surprising, and opined that the decision likely increased the power of patent trolls.  Still others thought the ruling would bring an increase in patent litigation. 

Discussing the impact on litigation, Dunlap Codding Director Jordan A. Sigale, disappointed in the court’s decision, said, “There are some patents that are so overbroad and/or so ambiguous that it may be difficult to provide a reasonable opinion of non-infringement, whereas a reasonable (maybe even and clear and convincing) opinion of invalidity would be simple to write….Yet, this opinion would now be insufficient to avoid inducement liability under Commil.”