Holy Katonah Martha!

Affluent residents of Katonah, New York seemed indifferent that Martha Stewart chose the 152 acre Cantitoe Corners in their tiny slice of Bedford Township to walk her ankle bracelet. When Martha turned from real property acquisition to intellectual property acquisition however, residents turned from indifferent to pettish.

In late 2005, Martha Stewart Omnimedia filed six federal trademark applications on the word Katonah. Two of those applications have since gone abandoned, apparently as Martha Stewart Omnimedia decided to offer fewer products under the trademark. The four remaining trademark applications overcame all of the United States Patent and Trademark Office (USPTO) hurdles and seemed ready to issue. When the USPTO got to the “speak now or forever hold your peace” portion of the ceremony, however, someone chimed in.

At the end of the federal trademark application process the USPTO “publishes” applications for 30 days to determine if anyone has an objection to the trademark registration. In Martha Stewart’s case, although no one filed an opposition, someone filed a request for an extension of time to file an opposition in all four live applications. Such requests are typically a prelude to a full opposition if the parties cannot work out their differences during the extension period.

Legend has it that Indian Chief Katonah died from grief after lightning struck and killed his wife Cantitoe. If either one of them has any pull in the afterlife, Martha might be well advised to avoid golfing in thunderstorm.

Brett Trout

Martha Stewart Katonah Trademark Omnimedia USPTO

Apple to Pay Bloggers $700K

Bloggers are journalists – at least according to a California appellate court. Last year its judges ruled that affording the writings of bloggers lesser protection than other types of journalism would undermine the very purpose of the First Amendment. Mac News Network reports that, earlier this month, a Santa Clara County Court ordered Apple to pay $700,000 in legal fees associated with the bloggers’ defense of Apple subpoenas. And they paid it!

Apple’s subpoenas demanded the names of the individuals responsible for leaking information to the bloggers relating to an Apple product named “Asteroid”. The award includes a 2.2 punitive multiplier, apparently to encourage Apple to lay off future bloggers. Even though last year’s ruling declined to use the word “blogger,” the decidedly “pro-blogger” opinion prompted Apple to promptly pay the award and dismiss the underlying lawsuit – albeit without prejudice. A timeline of the case can be found here.

Brett Trout

Apple PowerPage Apple Insider Free Speech First Amendment

eDiscovery 101

I have just finished my comprehensive series of blog posts on eDsicovery. Just click on the hyperlinks to review each topic.

1. What is electronically stored information (ESI)
2. By the time you get sued, it is already too late
3. Preparing your game plan
4. Clawback
5. ESI Subpoena power
6. Safe Harbor
7. Implementing an ESI management system

I am especially interested in any comments, suggestions or war stories you may have regarding eDiscovery. Also, please contact me if you have anything you would like me to add to the series. In the meantime, for some additional eDiscovery links, check out Rush Nigut's eDiscovery blog post. If that is not enough Rush for you (and seriously, can you ever have enough Rush?) listen to Rush interview me about eDiscovery on hisBlog Talk Radio podcast.

Remember, if anyone has any "best practices" suggestions they would like to share, I would love to hear them.

Brett Trout

electronic discovery ediscovery FRCP electronically stored information esi

Electronic Discovery Rules - Safe Harbor

The Federal Rules of Civil Procedure (FRCP) mandate that parties identify and produce all discoverable electronically stored information (ESI). The Rules also provide for harsh sanctions against companies destroying relevant ESI. Modern corporate computer systems destroy ESI every day. The simple act of turning on a computer, or turning off a cell phone, can destroy ESI. So then, if you cannot help but inadvertently destroy ESI, why make the effort to comply with the FRCP?

Luckily FRCP 37 provides a "safe harbor" for companies that inadvertently destroy relevant ESI. The safe harbor only applies, however, to ESI destruction associated with the routine, good-faith operation of an electronic information system. So what constitutes "good-faith" in the context of the FRCP?

In accessing whether your inadvertent destruction of ESI was in good-faith, and whether sanctions are in order, a court will look at several factors. Most importantly, a court will examine the steps you took to comply with any court order or agreement with the other side requiring the preservation of ESI. While the factors will obviously vary from case to case, one overarching theme is the existence of a corporate ESI management policy. Companies with an ESI management policy are more likely to be afforded safe harbor under the FRCP and those without such a policy are more likely to find themselves santioned by the court.

An appropriate ESI management policy includes items such as:
1) A document destruction policy
2) A litigation “hold” policy – including the tagging and preserving of relevant documents
3) ESI agreements with third party vendors - including litigation hold provisions
4) ESI destruction “sign-off” and deletion log
5) Process for removing “hold” after appeal period ends

Investing a little in an ESI management policy up is a good insurance policy against court sanctions down the road. The ESI safe harbor provisions of the FRCP are broad, but without an appropriate ESI management policy in place, it may be difficult to convince a judge that you merit its protections.

Brett Trout

electronic discovery ediscovery FRCP electronically stored information esi

No Company is Immune From eDiscovery Rules

So, you never plan on getting sued or suing anyone. Do you still need to worry about ediscovery and implementing an electronically stored information (ESI) management system? Yes. Federal Rule of Civil Procedure (FRCP) 45 now extends the reach of federal court subpoena power to include ESI. That means that you may have to find and produce ESI even if you are merely a customer, vendor or other tangential contact with one of the parties to a federal lawsuit.

FRCP 45(c)(1) does direct the party requesting ESI to take reasonable steps to avoid imposing any undue expense or burden on you. Claiming that you are an ESI rube, however, is going to do little to convince the court to take you out of the subpoena crosshairs. Having an ESI management system in place makes it simple to identify and produce responsive ESI with minimal cost and disruption. It will also assist you in any claim that certain responsive ESI is privileged and should not be produced.

On the other hand, feigning ESI ignorance will simply result in a lot of disruption and cost for your company. More importantly, failing to have your ESI ducks in a row when you receive the subpoena will increase the chances that you will inadvertently turn over privileged or confidential information. Also. if you do not have the capability to find ESI responsive to the subpoena, FRCP 45(a)(1)(B) allows the subpoenaing party to go poking around in your computers to try and find ESI you assert you cannot. While courts are reticent to allow parties to go poking around in subpoenaed party’s computers, failure to implement an ESI management system prior to receiving the subpoena often leaves courts little alternative.

Brett Trout

electronic discovery ediscovery FRCP electronically stored information esi

Clawing Back Privileged eDiscovery

The Federal Rules of Civil Procedure (FRCP) anticipate that the volume of electronically stored information (ESI) produced during the discovery phase of litigation will far exceed the volume of hard copy information. As the volume of information produced increases, so does the risk of inadvertent disclosure of privileged information and the time and cost associated with trying to prevent such inadvertent disclosure.

To prevent discovery from becoming bogged down with privilege issues, the FRCP incorporates a “clawback” provision into FRCP 26(b)(5)(B). FRCP 26(b)(5)(B) works in conjunction with FRCP 26(f) to require that the parties discuss the inadvertent disclosure of privileged ESI in preparing their discovery plan. Under FRCP 16(b), the court has the power to include in a court order any agreements the parties reach with regard to discovery and inadvertent disclosure. The court may then consider those orders when determining whether waiver has occurred.

So what is a company to do? As an initial matter, as discovery ESI is located, the company locating the information should mark it prominently with a “privileged” or “confidential” legend. If you are sued, it is critical to assign a corporate liaison to sign off, in writing, that all ESI has been reviewed for privileged information. Discuss privilege issues with your attorney, prepare a privilege log of all privileged ESI and get instructions from your attorney, in writing, as to how you have agreed to handle privileged ESI. Revisit the issue after your attorney has finalized a discovery plan with the opposing party and at regular intervals during litigation.

In the event you determine that you may have inadvertently disclosed privileged ESI, discuss the situation with your attorney immediately. If you and your attorney determine there is an issue, you must notify the other side in writing and request the court review the matter. During the time the court is reviewing the matter, the party receiving the privileged ESI must sequester, destroy or return the ESI at issue and try to retrieve it from third parties. It is absolutely critical that you make any “clawback” claim as soon as possible, as delay can be a determining factor in the court’s decision as to whether to allow the clawback or not.
Brett Trout

electronic discovery ediscovery FRCP electronically stored information esi

A Game Plan for Electronic Discovery

So, someone sues your company and your lawyer emails you a list of forty broad document requests the plaintiff is demanding you produce. According to the Federal Rules of Civil Procedure (FRCP) these requests apply to electronically stored information (ESI) as well as hard copies. You shudder in horror as you realize the requests encompass documents which are:

1) decades old;
2) confidential;
3) on computers in storage;
4) stored off-site
5) mixed with millions of non-indexed and unsearchable files;
6) only readable using outdated software;
7) on storage media used in connection with obsolete hardware;
8) being destroyed daily in accordance with your corporate document destruction policy.

What do you do? Do you give all the documents to the plaintiff? Do you make an executive decision what to produce and what not to produce? Do you start destroying old documents? Do you pay someone else to find all of the documents?

How about none of the above? The first thing you do, if you have not already done so, is to stop the destruction of all documents relevant to the case. Failure to do so may get your company fined or sanctioned and may get you fired. Next, you must find all of the types of ESI responsive the request(s). You then prepare and provide to your attorney an ESI Overview, summarizing the ESI by:

1) which request(s) they relate
2) physical location
3) software required to read document
4) Hardware required to read document
5) Whether the document contains any confidential or harmful information

Even if the other side is completely in the dark about ediscovery, under Rule 26(a)(1)(B) you still have to identify for them, by category and location, all ESI you may use to support your claims and/or defenses. Failure to do so may prompt the court to prevent you from using the ESI later in the case. As it might be difficult to determine up front what ESI you might need to rely upon later, it is best to be over inclusive in identifying ESI early. This also provides you leverage in attempting to prevent your adversary's use of non-identified ESI later on.

of the ESI you provide them If you have and ESI management system place, it is relatively easy to search for relevant ESI across different platforms, systems and departments. If do not have such a system, you must involve as many people as necessary to identify the relevant ESI before the judge decides to sanction your company. It is best to involve several people, each with particular expertise associated with a specific department or platform. email is likely the most relevant, so start on that first. Next is the old documents on legacy systems. As they will be the hardest to identify, get started on them quickly and allocate sufficient resources toward their identification. After you have found all of the relevant documents, sit down with your attorney and the ESI Overview and discuss which documents are:

1) Responsive to the request(s)
2) Privileged
3) Confidential
4) Potentially harmful to your case
5) Inaccessible – either through difficulty in locating them, software corruption or lack of access to legacy systems.

After you discuss these matters with your attorney, he or she will produce a privilege log identifying confidential and privileged information. Your attorney will also outline a proposed course of action with regard to the remaining points. While FRCP 26(b)(2)(B) does not require you to search or produce documents which are not "reasonably accessible because of undue burden or cost" your judge may have a very narrow view of what constitutes "reasonably accessible" or "undue burden". Your judge also has the option to shift the costs of the searching and production to the Plaintiff upon a finding of "undue burden". When determining whether to shift the burden of costs associated with production, your judge will examine:

1) The specificity of the request
2) Alternative sources of the information
3) The importance of the issue
4) The production cost vs. the damages at issue
5) The resources of parties
6) The incentive to reduce costs
7) The benefit to party receiving discovery

The key is to be prepared for electronic discovery. Since your unpreparedness costs everyone time and money, the judge may be inclined to have you pay BOTH the cost of procuring your “Inaccessible” documents as well as those of the plaintiff. Preparing an ESI Overview will streamline the process, reducing costs and disruptions for your company and reducing the likelihood of inadvertently producing confidential of privileged ESI. Most importantly, proper preparation puts the other side on their heels trying to scramble to comply with your document production requests and avoid sanctions from the court.

Brett Trout

electronic discovery ediscovery FRCP electronically stored information esi

Race Through the Forest - of Electronic Discovery

I hope you have enjoyed this series of articles on the changes to the Federal Rules of Civil Procedure (FRCP) relating to discovery of electronically stored information (ESI). I trust the articles clarify both the scope of the changes and dangers associated with ignoring them. I cannot state it any more succinctly: If you go into a federal lawsuit unprepared against an ESI management guru you stand a good chance of losing the case, and possibly your company, over discovery issues alone.

As more and more companies become ESI management gurus, the pressure is on to become one as well. Why then are some companies dragging their feet? The problem I have encountered is that many companies do not know where to begin. They simply ignore ESI management or take patchwork steps to address perceived issues. Proper ESI management, ESI management that will save your company, requires a project management professional.

Along with writing these articles on ediscovery, I have been reading Timothy Johnson’s new book, Race Through the Forest. Johnson is a project manager and author of the blog Carpe Factum. In Race Through the Forest, Johnson uses a modern day Aesop’s fable to explain the benefits of project management. The book follows Barry Tortisse and Biff Haire as they manage huge competing corporate projects. The tale highlights the benefits of proper project management and warns of the grave consequences of implementing projects without it . Johnson’s book is a quick, enlightening read, offering an excellent primer on the benefits of project management. For anyone interested in getting their ESI management project started, Race Through the Forest provides insight on why project management is critical to any such implementation.

Proper project management pares the daunting task of implementing an ESI management system into manageable components. The right tools and the right professionals, make implementing an ESI management system quicker, cheaper and much less disruptive than any patchwork or steamroller solution. While the litigation benefits of implementing an ESI management system are huge, these benefits spill over to all aspects of the business. One of the biggest spillover benefits is already being prepared for the slew of new state and federal legislation governing document management, destruction and production. This pending legislation promises to become a compliance nightmare for any company still dragging its feet on implementing an ESI management system solution.

Brett Trout

FRCP esi electronic discovery Timothy Johnson Race Through the Forest project management

Avoid exposing yourself in federal court

Q. Why should you care about the changes to the Federal Rules of Civil Procedure (FRCP) relating to electronically stored information (ESI)?

A. You do not want to get caught with your pants down.

In the event you are ever sued, proper ESI management immediately sets the tone for any federal lawsuit. FRCP 26(f)(3) mandates that the parties to a federal lawsuit meet "at least 21 days before any scheduling conference". Consider the in terrorem effect of the other side pushing eight well indexed DVDs and an electronic privilege log across the table and demanding the same from you.

Being unprepared for electronic discovery not only exposes your greatest vulnerability, but you still have to scramble months of activity into a matter of weeks just to play catch-up. Failure to have an ESI management system in place before you get sued will cost you dearly. Not only will you get carpal tunnel from writing checks, but your IT staff will be MIA for weeks or months tracking down and indexing information you should had had at your fingertips.

In addition to running the risk of overproducing confidential documents in the rush, there is an even greater risk of underproduction. Underproducing relevant documents often leads to additional costs, monetary sanctions, adverse rulings from the judge and, potentially, the loss of one or more of your lawsuit claims or defenses.

Within mere weeks of the lawsuit being filed, your own attorneys are going to demand from you a list of:
1) All of the ESI you have that may be relevant to the lawsuit;
2) The type of hardware storing the ESI;
3) The type of software needed to read the ESI;
4) What portions of the ESI are privileged or confidential; and
5) All ESI which may be inaccessible due retrieval issues.

On the upside, your attorneys will be available, at $300-$600/hr, to assist you at doing what your IT department and other staff could have done at $60-$100/hr. Even worse, your attorneys may become disgruntled at having to do the data processing you failed to do. Myself, I will mow lawns and shovel snow for $500/hr, but some attorneys do not see it that way. In addition to irritating your attorneys, poor ESI management will inevitably irritate the opposing party (raising your costs as a result of more hearings), the judge and, eventually, the jury. Poor ESI management leaves everyone thinking you are lazy, stupid or dishonest. As you might imagine, none are desirable points for your jury to deliberate.

From the moment you anticipate a lawsuit, the law requires that you place a “hold” on the destruction of all relevant ESI. A proper ESI management system, with a strict retention/destruction process may destroy "smoking guns" you otherwise would have to produce to the other side. Without a proper ESI management system, and the ability to place a "hold" on the destruction of relevant ESI, you may end up accidentally destroying potentially helpful ESI like metadata. Even worse, in the event you accidentally destroy helpful ESI, the court might very well instruct the jury that they are to assume the ESI destroyed was actually damaging to you.

Having a proper ESI management system in place not only assists you in a lawsuit, but streamlines your business as well. Moreover, having exculpatory ESI at your fingertips significantly increases the odds that you might head off a lawsuit altogether. Proper ESI management allows you to produce a wealth of information to the other side before they even sue. The depth, breadth, organization and content of properly managed ESI can go a long way in convincing another company they do not want to get into an ESI tangle with you.

Conversely, the inability to access ESI may convince the other side to sue you when they might otherwise have walked away. A potential plaintiff utilizing state of the art ESI management may see an adversary much more likely to settle on favorable terms once the adversary’s dark ages ESI management system implodes under the pressure of the new FRCP.

Brett Trout

ediscovery electronic discovery frcp esi

Lockergnome goes retro

Few people know that the greatest online personality in the known universe got his start in Des Moines, Iowa. I am proud to say I knew Chris Pirillo way back when, and actually wrote for one of Jake Ludington’s Lockergnome newsletters.

Gnomies and not-yet-Gnomies alike will be pleased to know Chris Pirillo is going retro with his new "Pirillo's Picks" email newsletter. Pirillo’s Picks is Chris’s daily list o' links discovered in his digital travels. For those of you old enough to remember, this is much like the Lockergnome newsletter of 1996 – easy to read and lots of useful/fun stuff.

If you try it and none of the links pique your interest within a week, you are most definitely on the far end of the personality spectrum (decide for yourself in which direction). My guess is that every day, at least one of the links, will surprise/entertain/help/teach you.

If you want to subscribe to the new newsletter, or if you just want to submit a fantastic link, email Chris at picks@lockergnome.com If you prefer a live feed, visit here. If you love it, be sure to let me know. If you hate it, be sure to let Rush know (just do not tell him I sent you the link to his email address).

Brett Trout

Pirillo Lockergnome Gnomedex Pirillo’s Picks

Keeping your head in the sand about (ESI) can create a billion dollar headache.

The recent revisions to the Federal Rules of Civil Procedure (FRCP) have made the discovery of electronically stored information (ESI) the second most important aspect of a lawsuit (next to the trial itself). But what does and, more importantly, what does not, qualify as ESI. The new rules do not specifically define ESI.

Rule 34 now states that requests for ESI include writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations from which information can be obtained. The Committee Note to revised Rule 34 state that the breadth of this definition is designed to anticipate future technological advancements which might fall outside a more narrow definition. Rule 34 also allows for inspection, copying, testing and sampling of ESI. ESI includes information stored not only on computers, but on external hard drives, back-up tapes, CDs, DVDs, jump drives, PDAs, cell phones, online databases as well as hundreds of other information storage devices,

So, ESI covers everything everywhere. Right? Well, although the FRCP define ESI broadly, parties need not produce all ESI responsive to one or more discovery requests. Rules 26(b) (discovery scope and limits), 26(c) (protective orders) and 34(b) (procedure) limit the scope of discovery of ESI, just as they do with hard copy documents. Even with these limitations, however, the resulting amount of ESI which a party must produce in a lawsuit will still be one thousand or more times the number of documents that would ordinarily be discoverable in hard copy form.

So what? What does this mean to the average business? Well, courts holding businesses accountable for finding and producing all of the discoverable ESI requested by the other party. What if a business cannot find the requested ESI? What if the company inadvertently deleted the ESI? Even before the most recent change to the FRCP, juries have been dealing out harsh damage awards and courts have been levying draconian fines against companies accused of deleting ESI.

In Zubulake v. UBS Warburg LLC, 217 F.R.D. 309, 312 (S.D.N.Y. 2003), a routine employment discrimination case turned into one of the largest damage awards ever handed down, when the plaintiff proved the defendant had not produced all of the emails requested in discovery. The defendant’s failure to find and produce the requested emails led the judge to order an adverse instruction to the jury, resulting in a $29.2 million damage award.

In U.S. v. Philip Morris USA Inc, (D.D.C. 2004) the court sanctioned Philip Morris to the tune of $2.75 million after Philip Morris continued to delete email which was the subject of outstanding discovery request.

In Coleman v. Morgan Stanley & Co., Inc., 2005 WL 674885 (Fla. Cir. Ct.) the defendant’s failure to disclose the existence of over 1,000 back-up tapes led to the court issuing an adverse instruction to the jury, resulting in a $1.45 billion award.

How do you avoid a billion dollar ESI headache? Implement a document retention/destruction/hold policy. An appropriately implemented policy allows a company to take advantage of the Safe Harbor provisions of the new rules. These Safe Harbor provisions insulate a company against sanctions for documents destroyed in good faith. They key is to contact your lawyer and implement a freeze on document destruction at the first hint a lawsuit is brewing against your company. Otherwise, it may not be YOUR company for long.

Brett Trout

ediscovery electronic discovery frcp esi

Everything You Ever Wanted to Know About Electronic Discovery

One of the hottest areas of information technology law is electronic, or “e” discovery. Why? The rules have changed.

If you are never going to be sued, sue anyone or even be tangentially related to a lawsuit, you may be safe in ignoring the new Federal Rules of Civil Procedure (FRCP) relating to ediscovery. For everyone else, however, ignoring the new rules is likely a painful and costly proposition. Unless you have a penchant for writing checks, losing your IT staff for months on end and non-stop tongue lashings from a federal judges, listen up.

Given the breadth and scope of the rule changes, I will devote one post to each general change in the FRCP relating to ediscovery. These changes include:

1. What is electronically stored information (ESI)
2. By the time you get sued, it is already too late
3. Preparing your game plan
4. Clawback
5. ESI Subpoena power
6. Safe Harbor
7. Implementing an ESI management system

These changes are still quite new. Companies are still working out bugs in implementing their best practices to address these changes. Our best practices, therefore, are not only untested in battle, but cannot address the nuances of every conceivable business. Take these best practices with at least three grains of salt. They will not work for everyone, and may not work for anyone. They may, however, provide a template upon which you can begin building an ediscovery policy for your own company; a policy which might just end up saving your job.

If you cannot wait for the posts on this blog, business lawyer Rush Nigut has a great post with links to lots of ediscovery information. Rush has also posted an interesting Blog Talk Radio interview we did highlighting the changes to the rules.

If anyone has any "best practices" suggestions they would like to share, I would encourage you to share your comments to these posts.

Brett Trout

electronic discovery ediscovery FRCP electronically stored information esi

Martin Luther King Day Blawg Review

Join Blawg Review in honoring the life and legacy of Dr. Martin Luther King. Public Defender Investigator Greg Worthen presents Blawg Review #91 with lawyer blog posts from around the country which celebrate this special day. Greg's post includes a link to a post authored by this humble patent lawyer covering African American inventors.

Check out Greg's post and watch for the April 30th Blawg review which I will be hosting here at Blawg IT.

Brett Trout

mlk martin luther king blawg review

MLK Day Post – African-American Inventors

In honor of Martin Luther King Day next Monday, I wanted to post a list of some famous African-American inventors and their patents. There obviously may be some disagreement as to who should, and who should not, make the list of famous African-American inventors. I have tried to include not only those who have contributed to mankind as a whole, but also those African-American inventors we know from other endeavors, or from the fun things they have brought to our lives. If you take issue with any of my selections, I have provided a small bucket of sand in the reception area of our offices which you are free to stop by and pound if you wish.

And with that introduction - here is the list:

10) Michael Jackson

In 1993, singer and entertainer Michael Jackson received a patent on a novel shoe, The shoe includes a cut-out in the heel, which an entertainer slides on and off a nail head in the stage. The nail head grabs the heel and allows the entertainer to perform apparently gravity defying leans.

Representative Patent
Method and means for creating anti-gravity illusion
United States Letters Patent Number 5,255,452

9) Lonnie G. Johnson

President of Johnson Research & Development Co. Lonnie Johnson holds over 20 patents. His patented SuperSoaker squirt gun has generated over $100 million in sales.

Representative Patent
Pinch trigger pump water gun
United States Letters Patent Number 5,074,437

8) Lewis Latimer

Everyone knows Thomas Edison invented the light bulb, but few know that it took African American inventor Lewis Latimer to come up with the carbon filament that made it practical. Edison’s original draftsman, Latimer drafted the plans for Alexander Graham Bell’s telephone. Latimer worked late nights with Bell to file a patent on Bell’s telephone mere hours before the filing of a patent by a rival inventor.

Representative Patent
Electric Lamp
United States Letters Patent Number 247,097

7) Elijah McCoy

Elijah McCoy patented dozens of devices and methods for lubricating machinery. Especially useful were his inventions for lubricating machinery while it was running, including a novel oil dripping cup. While others tried to copy McCoy’s cup, nothing worked as well as the original. That is why, even today, we ask for “the real McCoy”

Representative Patent
Lubricator
United States Letters Patent Number 472,066

6) Dr. Joycelyn Simpson

As a research scientist for NASA’a Langley Research Center, Dr. Simpson invented a new type of high performance piezoelectric polymers. When pressure is applied to these polymers, the polymers generate electricity. Utilizing these polymers in conjunction with wind and water power may lead to an unlimited, low-cost, environmentally friendly source of power.

Representative Patent
Thermally stable piezoelectric polymeric substrates
United States Letters Patent Number 6,379,809

5) Dr. Patricia E. Bath

Born in Harlem, internationally acclaimed ophthalmologist and surgeon, Dr. Bath has dedicated her life to the prevention and treatment of blindness in African-Americans. Her laser-powered Laserphaco Probe vaporizes and fragments cataracts in minutes.

Representative Patent
Method of removing cataracts
United States Letters Patent Number 6,083,192

4) James Edward West

The research of James Edward West Ph.D. led to the development of the foil-electret transducers used in 90% of today’s microphones. James West holds over 40 patents on microphones and their components and is a 1999 inductee into the National Inventors Hall of Fame. In 1964, West patented the electret microphone while working at Bell Laboratories.

Representative Patent
Electroacoustic transducer
United States Letters Patent Number 3,118,022

3) Percy Julian

Awarded over 100 patents Percy Julian was most well known for his innovative synthesis of cortisone from soy beans. His inventions significantly reduced the cost of cortisone which is used to treat rheumatoid arthritis and inflammation. Julian is a 1990 inductee into the National Inventors Hall of Fame.

Representative Patent
Preparation of cortisone
United States Letters Patent Number 2,752,339

2) Mark Dean

Holder of more than 20 patents, Mark Dean, along with Dennis Moeller, created a computer bus system for controlling the use of computer peripherals like disk drives, video monitors, printers, speakers, and scanners. Dean holds three of the original nine IBM patents on the personal computer. IBM granted Dean an IBM Fellowship in 1996 and, a year later, Dean received the Black Engineer of the Year President’s Award. Dean is a 1997 inductee into the National Inventors Hall of Fame.

Representative Patent
Bus Controls system for computer peripherals
United States Letters Patent Number 4,528,626

1) George Washington Carver

Despite inventing hundreds of novel products and methods for improving agriculture, George Washington Carver, patented only a handful. Born a slave, Carver consistently shunned fortune, taking no money at all for the majority of his inventions, in pursuit of mankind’s greater good. Granted a scholarship in Kansas, the college refused Carver admission when they discovered he was African American. Carver enrolled at Simpson College in Indianola, Iowa before enrolling the following year in what is now Iowa State University. Carver Refused admission Carver is a 1988 inductee into the Iowa Inventor’s Hall of Fame and a 1997 inductee into the National Inventors Hall of Fame

Representative Patent
Process for Producing Paints and Stains
United States Letters Patent Number 1,632,365

As a patent lawyer, I truly appreciate the gifts some of these extraordinary inventors have bestowed upon us. I look forward, with great anticipation, to great inventions to come from those inventors able to stand on the shoulders of great African-American inventors that have gone before.

Brett Trout

African American inventors George Washington Carver patents

Thin slice your way to increased law firm productivity.

Tim Johnson of Carpe Factum has just challenged
Rush Nigut and me to reveal how we "thin-slice" cases and clients. Thin-slicing comes from Malcolm Gladwell's book, Blink. Thin-slicing is about training your mind to focus on only the most important facts. Gladwell’s position is that a well trained mind makes better decisions based upon a snap assessment of a few important facts than upon a tedious analysis of a myriad of facts.

Why thin slice clients? In my experience certain types of clients and cases generate 20% of the revenue, but cause 80% of the headaches. The remaining 80% of clients and cases generate only 20% of the headaches. Getting rid of these "headaches" not only makes the practice of law much more rewarding, but may also reduce your malpractice exposure. The trick is to thin slice these clients and cases out at your initial meeting. It is much easier to decline a representation than to fire a client.

How do I "thin-slice" cases and clients? Thin-slicing a case is different than thin-slicing a client. As Rush Nigut has done a fine job thin-slicing cases, I will limit my remarks to how I quickly size up a patent client in an initial meeting:

Are they truthful? – Truthfulness is of primary importance. I can tell the client is merely telling me what they think I want to hear. Rehabilitation of "white liars" is rare. I encourage such clients to find an patent lawyer more suited to their temperament.

Do they listen? – Patent clients come to patent lawyers for patent expertise. If I tell them "X" is wrong and "Y" is right, and they persist in believing "X," I foresee an unhappy patent attorney-patent client relationship for both parties.

Are they overly/underly concerned about the fees? – You do not want the nickel dime client, but you do not want the money-is-no-object client either. The money-is-no-object client likely: 1) has unrealistic expectations of what you can do for them; or 2) does not intend to pay anyway. The best clients are interest in getting accurate cost estimates and value for the fees they pay their patent lawyer.

Are they smart? – The best clients ask the smart questions and process the answers. I have worked with dumb PhDs and brilliant high school drop-outs. Even in a short initial meeting smart clients ask smart questions. They come across humble and unconcerned that you might confuse inquisitiveness with a lack of intelligence. These "smart" clients extract the most value from my hourly fee.

Are they (too) willing to trust me? –If a potential client approaches me preoccupied with how I might cheat them, the meeting ends rather quickly. If a client is too far in the other direction, however, saying things like "You do what you think is best, I trust you" I start to feel the hairs on the back of my neck tingle. Clients have to take ownership of big decisions. In the initial meeting I identify big decisions, give them options, the pros and cons associated therewith and my advice based upon what I know of their goals. If they shirk big decisions back to me, I take a good hard look at whether this is a client I can afford to have.

Judicious client selection, based upon thin-slicing clients in initial meetings, makes for happier patent clients and a more enjoyable patent law practice. In the last five years, thin-slicing has added more pure enjoyment to my practice than any other single factor.

Brett Trout

Malcolm Gladwell
Blink Thin Slice Patent Lawyer Tim Johnson Client Service

Brazillian Judge Lifts YouTube Ban

If you are a judge, before you go off issuing an injunction requiring all ISPs in your country to prevent your citizens from viewing the most popular video website on the Internet, you may just want to check and see how comfortably your foot fits in your mouth.

The Brazilian judge who forced his country's ISPs to block YouTube has just reversed his decision. Internet surfers around the world had universally decried the decision as overbroad and ill-conceived. Although the judge lifted the injunction, the judge admonished YouTube that he would reinstate the injunction if he did not feel YouTube was taking appropriate steps to prevent the video from being viewed in Brazil.

Some judges are known for making rulings on things they know little or nothing about. When faced with a legal issue relating to the Internet, however, such judges would be well-advised to suppress their deep-seated urges to make international spectacles of themselves. While Internet surfers spend much of their time arguing with each other, when given the chance, they enjoy nothing more than vindicating perceived transgressions against a common enemy. Another ruling like his first injunction and this Brazillian judge may want to investigate upgrading his firewall to the OMGBGentle9000.

Brett Trout

Internet law Daniela Cicarelli Renato Malzoni YouTube

Brazillians watching sexy video despite court order

Last week a Brazilian judge ordered Brazilian ISPs to block Brazilian access to YouTube. The judge ordered access shut down until YouTube could ensure a racy paparazzi video of supermodel Daniela Cicarelli and Brazilian banker Renato Malzoni having sex in the ocean was no longer accessible. I would have posted a link to one of the dozens of websites posting the "R" rated video, but the ads running on many of these websites are "XXX."

While Brazillian ISPs like Brasil Telecom SA and Spanish-owned Telefonica SA confirmed they were blocking YouTube access, as of yesterday, Brazillians in high Internet traffic cities like Sao Paulo and Rio de Janeiro Brazil's were still accessing YouTube through Empresa Brasileira de Telecomunicacoes SA.

Does this Brazilian judge actually believe that he can block access to Internet content? For every website the judge shuts down, one hundred more pop up. Would this Des Moines patent lawyer be talking about the case if the judge had not made a ruling that threatened world Internet community more than it could ever hope to help the supermodel? If the ruling were not so poorly executed, one would find it easier to believe the judge was either attempting to increase publicity around the case, or showcase Brazil as a worldwide Internet lawsuit forum-shopping haven.

As more and more Internet related cases enter the court system, it is imperative that judges pay particular attention to the worldwide ramifications of their actions. As in this case, Draconian Internet rulings from the bench have a very real potential of causing more harm than good. Any judge considering a ruling on matters affecting the Internet should consider hiring one or more special masters well-versed in the law of the Internet.

The small extra cost associated with hiring a special master will not only reduce the likelihood of getting egg on one’s judicial countenance, but it will also prevent rapid YouTubers hacking your email because they cannot watch the latest Tigger Attack.

Brett Trout

Internet law Daniela Cicarelli Renato Malzoni YouTube

Celebrity Patents

Ever wonder which of your favorite celebrities are actually closeted inventors? Ever wonder what inventions stars like Eddie Van Halen and Michael Jackson come up with in their free time? Well your wait is over. David Friedman has been poking around in Google Patent Search and has discovered several notable inventions by stars known for things other than their inventive acumen. Check out David's Blog at Ironic Sans

Brett Trout

patent Michael Jackson inventions celebrities

Iowa Blogga Nostra

I had great meeting with the Des Moines Family of the Iowa Blogga Nostra today at Panera in West Des Moines. The Des Moines "Family" includes:






* Brett Trout (Intellectual Property)
* Rush Nigut (Corporate Law)
* Sandy Renshaw (Blog Design/Build)
* Drew McLellan (Marketing)
* Andy Brudtkuhl (Web Design)
* Mike Wagner (Branding)
* Tim Johnson (Project Management)
* Mark True and Cory Garrison (Stories)
* Sherry Borzo (Small Business)
* Tom Vander Well (Customer Service)
* Michael Libbie (Advertising)
* Mike Sansone (Blog Coach)
* Mitch Matthews (Personal Development)
* Brett Rogers (Strategy)
* The Steens (Venture Capital)
* Matt Owen (Cowboy Blogger)


Whether you are a blogger, blog reader or just have an interest in meeting some great minds (and me) in the Des Moines area, be sure to check back here a few days prior to each meeting for updated time and place information.


Brett Trout

Iowa Blogga Nostra Des Moines

Sony's new segway skateboard

Perusing newly published patent applications, I ran across a new Sony invention. Sony's newly published patent application describes a new type of skateboard with the wheels on the sides and a Segway-type balancing system. Separate motors drive the two laterally positioned wheels. Looks like it could be loads of fun.

Having spent hundreds of hours perusing skateboard bone breaks on YouTube, I have forbidden my children from skateboarding. I fear, however, that if this new Sony device ever sees the light of day, my techno addiction may override my natural parental instincts; I may just end up buying one. Looks like we might end up with that half pipe in the driveway after all.


Brett Trout

sony segway patent skateboard surfing

The (Fed) Circus is in Town

Do you find yourself sitting up at nights dreaming of new ways to prevent your Wii controller from flying out of your sweaty palm and through your new plasma screen? Do you find yourself dreaming of having the muscle tone and physical coordination to actually throw a Wii controller through a plasma screen?

Well then, you may just be a patent geek like me. As a patent geek, you know there is nothing better than fresh information on patents delivered to your door. Enter J. Matthew Buchanan of Promote the Progress.

Mr. Buchanan has just unveiled his Fedcirc.us website. According to Mr. Buchanan, FedCirc.us is a website that allows patent professionals and other patent stakeholders to access, digest and manage patent caselaw information. This type of website is long overdue. I for one have subscribed via RSS to both the case law summaries and practice alerts.

If Mr. Buchanan does say so himself, the site "is built on a foundation of timely, accurate and considered reviews of patent decisions form the Supreme Court of the United States and the Court of Appeals for the Federal Circuit." I appreciate the fact that this website might put some dust on your Wii and further atrophy your withering physique. There is simply no substitute, however, for honing your patent acumen. Stop getting sand kicked in your face on patent law bulletin boards; visit fedcirc.us.

Although Fedcirc.us is rather impressive as it is, the real value will lie in reasoned comments left by patent attorneys and other legal scholars. I encourage everyone falling into either of those categories to comment liberally on Mr. Buchanan’s new website. Comment both favorably and unfavorably. Help him make this site what YOU want it to be. The more insightful comments you leave, the better the site will be for everyone.

Brett Trout

patent law patent attorney patent cases patent lawyer