Intellectual Property News

Intellectual Property NewsPublished by the Ohio State Bar Association Intellectual Property Law Section

winter 2021

(3) by analogy to estoppel by deed in real estate; and (4) by analogy to a landlord-tenant relationship.” The basic idea behind assignor estoppel is laudable. It seems, at least a first blush, manifestly unfair to permit an assignor to benefit from assigning his/her rights only to turn around and assert that what they assigned is actually worthless. On the other hand,

The recent CAFC decision in Hologic, Inc. et. al. v. Minerva Surgical, Inc.2 highlights how powerful Inter Partes Review (IPR), and potentially other administrative USPTO challenges, can be. By now, practitioners are familiar with the availability of IPR under the America Invents Act (AIA). The key takeaway from the Hologic’s decision is that assignor estoppel may not be available to an assignee plaintiff at the district court where one or more claims of a patent have been previously invalidated in an IPR proceeding at the USPTO, even if such invalidation was achieved by the assignor. As such, savvy assignors may be able to step around potential assignor estoppel issues by launching their validity challenges at the USPTO (such as via IPR) instead of at the district court where their arguments might otherwise be barred by assignor estoppel.

Essentially, assignor estoppel prevents one who assigned their rights, as well as those in privity with the assignor, from later arguing that a patent resulting from those assigned rights is invalid. The Hologic's decision provides four justifications for this doctrine: “(1) to prevent unfairness and injustice; (2) to prevent one [from] benefiting from his own wrong;

INSIDE

Out of the Gutter and Into the Courtroom: Mango v. Buzzfeed ��3

Can a Bard Lend Light to Printed Matter? ��4

It’s Not Easy Like Sunday Morning to be a Former Commodore ��7

Facts in Myco Industries, Inc. v. Blephex, LLC ��9

OSBA IP Section Committee Meeting Minutes 09/10/2020 ��10

Message from the Chair ��12

Next Meeting ��12

Have Your Article Published Here �� 13

By Adam Smith1Patent attorney at Standley Law Group LLP

Stepping Around Assignor Estoppel Using Inter Partes Review

it also seems unfair to permit the public to labor under the artificial monopoly of a patent simply because the person who discovers the invalidating art happens to be the assignor. Presumably to help balance these considerations, the courts have carved out exceptions to this doctrine over the years. For example, assignor estoppel generally will not prevent the assignor from submitting prior art which affects claim interpretation, or from submitting prior art demonstrating that the allegedly infringing product was known before the earliest effective filing date of the allegedly infringed claim. Further, the Supreme Court previously abolished licensee estoppel in Lear, Inc. v. Adkins, 395 U.S. 653, 666 (1969). Lear distinguishes licensee estoppel from assignor estoppel on the notion that a licensee, if prevented from submitting invalidating prior art, would otherwise be required to unfairly continue making license payments on an otherwise invalid patent. An assignor, on the other hand, presumably negotiates (and thus receives appropriate compensation) on the belief that the assigned rights are valid.

Assuming that an underlying USPTO decision to invalidate one or more claims of an assigned patent at issue is affirmed, the Hologic’s decision essentially requires the district court to treat such claims as invalid ab initio such that assignor estoppel cannot be used to prevent the assignor from relying on the affirmed USPTO decision due to its issue preclusive effect. As Judge Stoll considers in her additional views section of the opinion, this leaves the precedent in a curious position where the judge-made equitable doctrine of assignor estoppel may be available as a defense to those assignors which launch their claims at the district court, but likely not where those same claims have been previously invalidated at the USPTO, such as via IPR. Judge Stoll appears to be open to, if not encouraging, an en banc reconsideration of the assignor estoppel doctrine in light of this curious precedent. It does seem that a number of the concerns behind the assignor estoppel doctrine might be adequately addressed by private agreement. For example, an assignor might agree to not challenge the validity of assigned rights, or might

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represent and warrant as to the existence of known prior art. At a minimum, it would seem that an assignor which concealed knowledge of invalidating prior art prior to assignment only to reveal it after securing compensation by way of an assignment agreement would be in violation of the implied covenant of good faith and fair dealing inherent in all contractual arrangements. Furthermore, in some situations it might be considered the assignee’s responsibility to undertake a proper investigation of what they are purchasing. Patent rights are not achieved easily (or usually inexpensively), and thus are not typically bought or sold with little forethought. Much like with any other expensive purchase, an appropriate level of due diligence by at least the buying party might be insisted upon before an assignment is finalized.

Being an equitable doctrine, the specific, factual circumstances of a case must be considered before determining whether the doctrine of assignor estoppel should be applied. Presumably, facts like bad faith on the part of the assignor, such as knowledge of undisclosed and potentially invalidating prior art, may encourage application of the equitable doctrine. Conversely, facts like innocence in discovery on the part of the assignor may presumably discourage application. Public harm, or lack thereof, should also be considered. Regardless, practitioners would be wise to consider administrative challenges available at the USPTO, such as IPR, where an assignor wishes to challenge the validity of an existing patent.

Endnotes1 Adam Smith is an associate and registered patent attorney at Standley Law Group LLP. The views expressed herein are his own and do not necessarily reflect those of the firm or his colleagues. This article is written for educational purposes and does not constitute legal advice. Always consult a licensed attorney.

2 957 F.3d 1256 (Fed. Cir. 2020). A Petition for a Writ of Certiorari to the Supreme Court of the United States was filed on November 5, 2020.

Intellectual Property News

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The axiom “give credit where credit is due” seems like a simple proposition, but it doesn’t always happen. In copyright law, the Digital Millennium Copyright Act (DMCA) was enacted in 1998 to “strengthen copyright protection in the digital age” and, among other things, prohibited the removal or alteration of copyright management information (CMI), which includes the name of, and other identifying information about, the author or copyright owner of a work.

Gregory Mango, a freelance photographer who regularly licenses his photographs, discovered that a photograph he had previously licensed to the New York Post for a January 2017 article covering a discrimination lawsuit was used by BuzzFeed a few months later without his permission. The New York Post had properly given credit to Mango below the photo, an attribution known in the industry as a “gutter credit.” BuzzFeed’s article included Mango’s photo, but it had not sought Mango’s permission and the gutter credit was removed, meaning Mango was not given credit for his photo. BuzzFeed instead listed the plaintiff ’s law firm in the discrimination lawsuit in the gutter credit.

Mango sued BuzzFeed alleging copyright infringement under the Copyright Act and removal or alteration of the CMI under the DMCA. BuzzFeed stipulated to the copyright infringement and, after a one-day bench trial, the district court found BuzzFeed liable on the DMCA claim and awarded Mango statutory damages for both claims. BuzzFeed then appealed alleging it did not know its conduct would lead to future, third-party copyright infringement.

BuzzFeed’s argument on appeal was based on the statutory language requiring “double scienter” - actual knowledge that that CMI was removed or altered, and constructive knowledge that such removal or alteration may induce,

enable, facilitate or conceal an act of infringement. First, the defendant must have actual knowledge that CMI “has been removed or altered without authority of the copyright owner or the law.”2 Second, the defendant must know or have reason to know that distributing the copyrighted material without CMI “will induce, enable, facilitate, or conceal an infringement.”3 BuzzFeed argued that even if it had actual knowledge that the CMI had been removed without Mango’s authority, it did not have (or any reason to have) knowledge that a third-party would commit infringement because of that removal.

The Second Circuit rejected BuzzFeed’s argument, holding that the statutory language did not require knowledge of third-party infringement to satisfy the second scienter element. The language of the DMCA does not require a third-party infringement, only knowledge that the conduct will conceal “an infringement.” In this instance, the Court determined BuzzFeed’s own infringement was sufficient to satisfy the requirement of the statute.

Distributing Mango’s photograph knowing that the gutter credit was removed and replaced with improper credit was enough for BuzzFeed to satisfy the first scienter element. The distribution with false attribution implied BuzzFeed had proper authorization to publish the photo, which effectively concealed its own infringement, satisfied the second scienter element. Therefore, the Second Circuit affirmed the district court’s award of statutory damages for both copyright infringement under the Copyright Act and removal or alteration of CMI under the DMCA.

Endnotes1 Mango v. Buzzfeed, Inc., 970 F.3d 167 (2d Cir. 2020)2 17 U.S.C. § 1202(b)3 Id.


By Kristen M. Hoover, Esq.McCarthy, Lebit, Crystal & Liffman Co., LPA

Out of the Gutter and Into the Courtroom: Mango v. Buzzfeed1

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The “printed matter” doctrine can find some interesting places to arise, like on a medical device that is not perceptible with the eyes while it is in use. When raised during patent examination, printed matter is often confusing to the practitioner and the client.2 When raised by a defendant in infringement litigation, it can be confusing to the trial court. That is what recently brought the appeal C.R. Bard Inc. v. Angiodynamics, Inc.3 to the Federal Circuit.

The Federal Circuit had to untangle a JMOL given to Angiodynamics at the end of Bard’s case-in-chief. The trial court determined Bard’s patents4 to be: not patent eligible, not inventive, not infringed and not willfully infringed. When the motion was made, the judge asked the parties sua sponte if the issue of “patent eligibility and printed matter” was ripe for decision. The parties disagreed, but the court proceeded to rule on all issues anyway.

The Court reversed the judgment that the claims were not patent eligible. It vacated the other judgments regarding invalidity, non-infringement and no willful infringement, remanding on those issues.5

The reversal was based on a ruling regarding the “printed matter” doctrine and how it applies to subject matter eligibility (35 USC 101). The court noted that the Supreme Court, in deciding Alice Corp. Pty. Ltd. v. CLS Bank Int’l,6 did not address whether its two-prong test can be stopped once step one determines a claim is directed to printed matter, and the Federal Circuit has also not directly addressed the question either.

Because the “printed matter” issue was the only issue decided, we will limit the remainder of the article to that issue. In particular, we try to explain the printed matter doctrine, as it seems to be evolving rather quickly in the past ten years.


By Stephen L. Grant1

Sr. Attorney, Standley Law Group LLPDublin, Ohio

Can a Bard Lend Light to Printed Matter?

The Patents and Accused DevicesThe Bard patents, speaking generally, are directed to vascular access ports that are implanted subcutaneously in a patient. Many traditional access ports were used to inject material at low pressure and flow rates. However, some technologies, notably computed tomography (“CT”) imaging, require high pressure and flow rates (“power injection”). If this is attempted into a traditional vascular access port, the port may rupture and seriously injure the patient. In 2005, the FDA cautioned medical providers that a vascular access port should only be used if it is specifically and identifiably labeled for power injection.

The Bard patents cover both vascular access port assemblies and methods for using such assemblies to perform a power injection procedure. The devices are characterized by 1) a marking, perceivable after implantation of the device, identifying the device as suitable for flowing fluid at the high flow rate; 2) a marking, also perceivable after implantation, identifying the device as suitable for accommodating fluid at the high rate; and 3) an identifiable feature, separated from the device, that confirms that the device is suitable for both the high pressure and the high flow rate. At least one of the markings is required to be perceivable via x-ray. The claim is directed to an “assembly” due to the “separability” imposed by the third feature. Dependent claims require the radiographic marker to be in the form of radiographic letters, symbols, patterns or characters. The separated feature can be a key chain, a bracelet, a wrist band, a sticker on the patient’s chart, a patient ID card, or a label on the product packaging. Notably, there is no claimed requirement that the device on which these markings are made actually is able to meet the “high flow” and “high pressure” standard and it goes without saying that the markings are not related at all to the performance of the device.

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Without going into detail on the method claims, it is noted that one step requires radiographic imaging of the implanted device before use. This imaging step is considered routine and is referred to as a “scout scan.”

The device initially introduced by Angiodynamics after FDA approval did not have the first two “intrinsic” features but had the third “extrinsic” feature. After a time, Angiodynamics added a scalloped shape that was palpable through the skin and a radio graphic “CT” marking.7 The present litigation commenced.

The Printed Matter DoctrineIf you look at the patent statutes, from 1790 to the present, I believe you will see that they are very friendly to invention. This is what the Constitutional provision authorizing these statutes intended. As patent infringement cases arrived in the courts, especially after an “examination” system was reestablished in the 1830s,8 a body of judicial “rules of patentability” developed.9 The “printed matter” doctrine has somewhat unclear origins in the 1800s, but it is generally believed to be part of the “abstract ideas” doctrine. Judge Pauline Newman has indicated10 that the doctrine is a necessary part of the distinction between copyrights and patents, with reference to Baker v. Selden.11 Her position is that since a book may qualify as a “manufacture” under the types of eligible subject matter in 35 USC 101, then much information that is clearly intended for copyright protection would also qualify for patent protection if the printed matter in the book is not excluded when assessing patentability of the book.12

Judge Newman’s objection in Praxair is that the Federal Circuit has extended the “printed matter” doctrine to cover unwritten matter, such as “information” and “mental steps.” In fact, the majority in Praxair says exactly that: “we have held that a claim limitation is directed to printed matter ‘if it claims the content of information.’ ”13 The consequence of the holding is that if the claim limitation directed to the content of information is not “functionally related” to the substrate on which the printed matter is applied, then the printed matter is also not patentable subject matter, based on 35 USC 101. But, to quote Judge Newman, “’printed matter’ is not a ‘mental step,’ whatever its content.”14

Judge Newman believes that the patent statute requires assessing patentability of a claim on the claimed subject matter as a whole and not on a claim where printed matter, deemed to be of “no patentable weight” is excluded from the claim before reviewing the claim as to novelty and obviousness. The law of the early years of the Federal Circuit, set out in In re Gulack,15 is that printed matter in an article of manufacture claim, can be given “patentable weight.” I find this particularly interesting, as most examiners who cite Gulack in patent prosecution use it for precisely the opposite position. Gulack cites16 In re Miller17 for the proposition that a new and non-obvious functional relationship between the printed matter and the claimed subject matter can be patentable.

And this is where we can draw the law of printed matter back to its source. In re Miller is an opinion penned by (then) acting Chief Judge Giles Rich, the primary author of the 1952 Patent Act, which was itself enacted to relieve the patent bar and the courts of some of those “rules of


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patentability,” especially two of which were created in the 1940s, namely, the requirements for “synergy” and “flash of genius” for an invention to be non-obvious. A quick read of Miller will allow you to understand that Judge Rich was “present at the Creation” - he sees no reason to cite any precedent opinions in reversing a decision of the Patent Office Board of Appeals. He speaks with the ultimate authority.

Endnotes1 This article expresses the personal view of the author and does

not reflect the views or positions of Standley Law Group LLP or its clients.

2 The “printed matter” doctrine is mentioned in the United States Patent Office’s Manual of Patent Examining Procedure (“MPEP”) at §§ 2103, 2111.05 and 2112, but the most detailed discussion is at § 2111.05.

3 Consolidated cases 2019-1756, 2019-1934, decided 10 November 2020. The panel was Judges Reyna, Schall and Stoll, with Reyna writing the opinion.

4 US Pats. 8,475,417, 8,545,460 and 8,805,478, which are all related and have substantially similar written descriptions.

5 In my view, there are some very sticky issues on this case when it goes back for the trial that was short-circuited by the JMOL. Don’t be surprised to see this case back at the Federal Circuit.

6 573 U.S. 208 (2014). 7 The Bard devices sold in commerce have a triangular shape and

small bumps that are palpable through the skin and a titanium foil with the letters “CT” etched in it, but it is the patentee’s claims and not the patentee’s device that are relevant in infringement litigation.

8 The 1790 Patent Act had an examination process, but this was abandoned in 1792 and not restarted under the Patent Act of 1836.

9 One compiler of these “rules” was the treatise “Walker on Patents.”10 Judge Newman’s comments are drawn from her concurrence in

Praxair Distribution, Inc. v Mallinckrodt Hospital Products IP Ltd, 890 F.3d 1024, 1037 (Fed. Cir. 2018). She was joined on that panel by Chief Judge Prost and Judge Lourie.

11 101 U.S. 99 (1879).12 In Baker, the plaintiff had developed a bookkeeping system that

used forms presented in a copyrighted book. Even though the defendant had copied some of the blank forms, no copyright infringement was found in the blank forms, as it would have given an exclusive right to the underlying idea, which is expressly not allowed by the copyright statutes.

13 890 F.3d at 1032, citing In re Dustefano, 808 F.3d 845 (Fed. Cir. 2015).

14 890 F.3d at 1039.15 703 F.2d 1381 (Fed. Cir. 1983). While not on the panel in Gulack,

Judge Newman was on the Court.16 703 F.2d at 1385.17 418 F.2d 392 (CCPA 1969).

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By Lauryn B. DurhamLaw Student, Case Western Reserve University School of Law

Many of the iconic music groups have had member changes: the Jackson 5’s inclusion of Randy Jackson1, Diana Ross leaving the Supremes2, Guns N Roses’ whopping 23 member changes,3 and many more. The former members often go on to pursue solo careers or form new groups. These legendary groups worked hard for their notoriety and following, and often trademark their names because of it.

Past group members often still feel a sense of attachment to their former group, especially original Commodore Thomas McClary. McClary wanted to still gain from his 1984 Commodore glory, by creating a new group performing as “The 2014 Commodores” and “The Commodores featuring Thomas McClary,” which included none of the official “Commodores.”4 This action was problematic in the eyes of the current Commodores - the owners of all the intellectual property of “The Commodores,” - and the 11th Circuit Court of Appeals agreed that the former member’s actions were not appropriate.


It’s Not Easy Like Sunday Morning to be a Former Commodore 11th Circuit rules in favor of the Commodores Entertainment Corporation in years-long dispute over the ownership of the trademark “The Commodores” against original member

In 2014, Commodores Entertainment Corporation (CEC) sued McClary claiming trademark infringement and many other intellectual property related claims.5 The district court granted CEC’s preliminary injunction motion, but McClary still did not learn his lesson. Soon after, CEC learned that McClary and his band were continuing to market upcoming performances in Europe under the same name McClary was just enjoined from using. CEC quickly submitted a motion for clarification of the previous injunction to decide whether it applied to the European performances. Although the marketing was done outside the United States and after the initial complaint was filed, the district court held that the injunction had extraterritorial application because the use of the mark overseas would have a substantial and negative impact on CEC. Six years later, the 11th Circuit affirmed this reasoning and upheld the preliminary injunction. Although McClary argued that the scope of the injunction was too broad, the 11th Circuit held that this was not true.

The 11th Circuit did not buy into McClary’s argument that the district court erred in including in its grant of summary judgment on CEC's trademark infringement claim both his previous performances and the more recent European performances. The Court reasoned that there

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was no genuine issue of material fact as to whether CEC’s trademarks were “used in commerce by the defendant without the [plaintiff 's] consent” and “the unauthorized use was likely to cause confusion, or to cause mistake or to deceive.”6

The 11th Circuit agreed that CEC was entitled to damages incurred by McClary’s continued trademark infringement, including for the European performances. The court concluded that the injunction included any performance now or in the future using the trademark.7 Overall, this case shows that when you leave the band over 20 years ago, you should probably leave the trademarks alone also. By stepping away from the group, McClary also stepped away from opportunities to profit on his own from using the name “The Commodores.” McClary has talent in his own right as a very talented song writer and guitarist.8 He should continue to promote his future performances with his name only, not attaching “The Commodores” to it unless CEC in fact approves the use, or face further liabilities.

Endnotes1Randy Jackson, JACKSONS, https://www.thejacksons.com/randy-jackson/ (last visited Nov. 29, 2020). 2Paul Sexton, ‘Farewell’ Album: Diana Ross Says Goodbye to the Supremes, U DISCOVER MUSIC, https://www.udiscovermusic.com/stories/diana-ross-supremes-farewell-album/ (Jan. 14, 2020).3 Guns N' Roses Lineup Changes: A Complete Guide (We Think), ULTIMATE CLASSIC ROCK, https://ultimateclassicrock.com/guns-n-roses-lineup-changes/ (April 2, 2016).4 Commodores Entm't Corp. v. McClary, 822 F. App'x 904, 907 (11th Cir. 2020) 5Id. 6 Id. at 908. 7 Id.8 Thomas McClary Story of a Legend, THE FIRST COMMODORE THOMAS MCCLARY, https://www.thomasmcclary.com/about/ (last visited Nov. 29, 2020).


Here, at a minimum, are the relevant facts extracted from Judge O'Malley's opinion that the Federal Circuit took this case, Myco v BlephEx 19-23741 because it arises out of allegations of patent infringement even though it is really a case about free speech and the district court's authority to place prior restraints on that speech. In July 2012 Rynerson filed an application for claims, to a 'Method and Device for Treating Ocular Disorder', which ultimately issued as U.S. Patent 9,039,718 on May 26, 2015.

In August 2012 Rynerson entered into a partnership (BlephEx LLC) with Choate to help develop a commercial product based on a device disclosed in the '718 patent. In January 2014 Choate ended his relationship with Rynerson and later became chair of Myco Industries.

In 2019 Myco began marketing the AB Max for treatment of ocular disorders. Rynerson and Choate hosted separate booths at an optometry congress trade show in New Orleans. Rynerson went to Myco's booth and made loud accusations about Myco's infringement of his '718 patent, which were overheard by one of Myco's potential customers.

In March 2019 Myco filed a lawsuit against BlephEx in the Eastern Michigan Federal District Court asking for declarations of non-infringement and that the '718 patent was invalid. Myco requested and received a preliminary injunction which enjoined BlephEx, it's officers, agents and those in active concert with BlephEx "from making allegations of patent infringement and from threatening litigation against [Myco's] Plaintiff's potential customers."2

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BlephEx appealed to the Federal Circuit which exercised its authority to review the district court record (28 USC 1292(a)(1)) and reverse its injunction. Judge O'Malley wrote in the opinion

when a preliminary injunction prevents a patentee from communicating its patent rights, a court applies "federal patent law and precedent relating to the giving of notice of patent rights. GP Indus., Inc. v. Eran Indus., Inc., 500 F.3d 1369, 1373 (Fed. Cir. 2007)".

As further stated in GP Industry, injunctions are reviewed "in the context of whether, under applicable federal law, the notice of patent rights was properly given."3 We have further held that "federal law requires a showing of bad faith" before a patentee can be enjoined from communicating his patent rights.4

In this case, the district court neither made a finding of bad faith nor even adverted to the requirement. To the extent the court made any factual findings relevant to bad faith, moreover, the court expressly declined to find that any of BlephEx's statements were either false or misleading.

Speech is not to be enjoined lightly. Here, there is not even a finding supported by evidence and a correct view of the law that the speech restrained was either false or misleading.

If you want to know what happens, read this case at Myco Indus. v. BlephEx, LLC, 955 F.3d 1 (Fed. Cir. 2020).

Endnotes1Myco Indus. v. BlephEx, LLC, 955 F.3d 1 (Fed. Cir. 2020)2Id. at 11.3Id. at 15.4Id.


By Bruce WilsonPatent Attorney in Dublin, Ohio

Facts in Myco Industries, Inc. v. Blephex, LLC

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ATTENDEES (by phone): Adam Mathews (Chair), Drew Stevens (Vice Chair); Adam Smith (Treasurer), Colin Cochran (Secretary), Steve Grant, Ralph Jocke, Bruce Wilson, Pat Walker, Casey Orcutt (OSBA), AJ Wenn, Bill Richards, Lidia Mowab (Learning Liaison)

DISCUSSION:I. Scott Lundregan provided legislative update:

• Asked for feedback from the IP Section• Discussed legislative bill relating to COVID-19 and

lawsuits arising from infections o Discussed recklessness standard o Discussed class action lawsuits under the bill

• Discussed situation regarding recent Ohio House Speaker Householder

• Discussed statute of repose bill regarding legal malpractice o Bill Richards asked what effect the statute of repose

would have on tail malpractice insurance o Mr. Richards discussed the reluctance of the OSBA

to be involved in this issue in the past• Mr. Richards asked whether the text of the statute states

when the statute of repose would enter into effect, in different situations o Mr. Lundregan answered that it would begin

upon completion of the legal work, and potentially depend on circumstances

o Mr. Richards put forth an example that could be problematic for attorneys

o Mr. Lundregan corrected himself and read the actual text of the proposed repose statute

• Patricia Walker asked why the Legislature feels the statute of limitations needs to be continually reduced o Mr. Lundregan discussed similar actions in various

other states as a potential reason for the reduction o Mr. Lundregan conveyed that the OSBA is neither

for or against the reduction

II. Adam Mathews took over the meetingIII. Mr. Mathews discussed the minutes from the previous 2020 meeting

• A motion was made, seconded, and approved unanimously to approve the prior meeting minutes

IV. Adam Smith and Mr. Mathews discussed the budget • Membership was discussed• The current account balance was discussed• Mr. Smith conveyed that no changes have taken place in

the budget since the previous meeting• Mr. Mathews stated that he would like the budget to

remain the same as last year o Mr. Mathews stated that he would like the

members to know that we have money available for networking and reaching out to other interested parties in the IP legal industry

o Discussed partnering with AOAIOIP to support networking events

• Mr. Mathews asked whether there are any other budget goals o Ms. Walker suggested that we could budget $1000

for networking events at law schools and to leave the rest open for anything necessary

o A motion was made, seconded, and approved unanimously to approve Ms. Walker’s suggestion that the budget include $1000 for networking events at law schools and to leave the rest open for anything necessary

V. The OSBA Announcement was made by Emily Chapman• Ms. Chapman discussed that the GreenBook is being

moved completely online o GreenBook per user is customizable o Asked for feedback

• Discussed the OSBA’s new partnership with LegalShield o Can learn more on the OSBA website

• OSBA has COVID-19 resource center on website

OSBA IP Section Minutes from Fall Meeting – September 10, 2020



VI. CLE Discussion• AOAIOIP all virtual this year• Currently, there are no IP Section members leading

CLEs in the near futureVII. Council Membership

• Recruitment efforts to date were discussed• Mr. Mathews provided some good resources for

recruitment guidelinesVIII. Budget (cont’d)

• The deadline for submitting the budget was discussedIX. Organizational Issues and Committee Assignments

• All roles currently filled• Geographical sub-committee leaders were discussed• Young lawyer recruitment was discussed

o Mr. Mathews discussed sending a postcard (or similar) to students at Ohio law schools

• Bruce Wilson discussed an event with Akron Law Career Services

X. Newsletter• Ms. Walker thanked the newsletter authors and noted

the opportunity remains to write for future editions of the newsletter o You may choose to write about a case included on

the grid, or any other case you desire, first come first serve basis

XI. Ms. Chapman discussed the opportunity to write articles for the OSBA public newsletterXII. Old And New Business And Open Discussion

• Questions regarding how COVID-19 has affected the legal practice for both attorneys and clients o Mr. Richards stated that he has not witnessed any

changes to the overall practice, aside from missing the face-to-face contact

o Mr. Richards stated that some small business clients have had to close, permanently or temporarily

o Mr. Richards stated that several of his clients have had to place their employees on a work from home status

o Mr. Richards stated that the IP industry has not seen much change from COVID-19, nor has the USPTO seen much change as examiners have had the ability to work from home for a long time, prior to the pandemic

o Mr. Mathews stated that he believes COVID-19 is accelerating trends including a decrease in PCT applications

XIII. Move to Adjourn (Ralph Jocke)• Meeting adjourned

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Happy New Year to the IP Section! As 2020 becomes hindsight, I am excited for us to act with a focus on supporting our practitioners and building our network across Ohio. I look forward to having in person events as soon as possible, and cannot wait to see you all soon.

-Adam Mathews

Chair of the OSBA Intellectual Property Law Section

Message from the ChairEvery Section member is welcome to participate in the next meeting of the OSBA Intellectual Property Law Section, which will be Friday, April 23, 2021 at 2:00 pm.

Registration is required to participate in the event. Visit the OSBA Intellectual Property Law Section website for details. Please join us on April 23, 2021.

The Next Meeting

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Have Your Article Published HereIf you would like to contribute a case review or an article to the newsletter, contact Patricia Walker or Ralph Jocke at Walker & Jocke Co., LPA, 231 South Broadway, Medina, Ohio 44256, by e-mail at [email protected], or by phone at (330) 721-0000. Check out past newsletters on the OSBA website for a guideline.

It will be great to see your contribution published in the next newsletter.

Patricia A. WalkerRalph JockeCo-Editors, OSBA IP Section Newsletter

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