proRo class 12

cromley p. 294

you can't drop like a hot potato. 

"removing conflicts from a former firm" p. 301

class conversation

...

just as there is a parallel imputed rule of imputation for successive conflicts of interest,
so is there a rule of imputation for rule 1.11 conflicts, rule 1.11(b)

government service: "investigating landlords"
can the lawyer represent another landlord? can the lawyer represent a tenant?

confidential information about pan-am that can be used to libya's advantage, then there's a 1.11(c) issue...

is that technical analysis fair?

was it wrong to have represented libya in this matter?
if you do, is it because he was the former sec of state?


lawyers have to use other criteria to decide what pro bono work they will dedicate themselves to.
pick one that enhances your prestige and reputation, or that of your firm.
why not hold people to their choices?

pieces by j. rifkin and j. frankel p. 319

ADR class 5

biz org class 11

IPO: initial offering of a class of securities to the public.

there's primary and secondary market. basically when securities are traded, bought, sold, etc
is the secondary market. the primary market is when the company creates and publicly sells
shares.

talk about how badly GM has been managed. the accounting was shotty in a mindboggling way, accounting was outsourced, hope that the government will

problem 1. suppose you are member of the board of a truck company. when the trucks are driven through PA, they are subject to a penalty of $200 fine. the risk of being caught/fined is about 20%. your practice and your competitors practice is to ignore, the alternative is to comply with the PA law. the cost of doing the alternative makes it impossible to compete without losing money.

problem 2. suppose the facts are the same as in the preceding, but you also learn that it is often possible to avoid the fine by paying a bribe to state officals. what do you do?

should shareholders be liable for breaking the law when they're breaking the law to make money for shareholders?

problem 1 and 2 are about fraud.

would you serve on a board where you would give bribes?

duty of loyalty. almost always brought with duty of care.
pre-requistes to duty of care.
- adequate care
- non gross negligence
- two approaches to the biz judgment rule as applied to duty of care

any board engaging in a grossly negligent process is a violation of duty of care.

kamen v. american express
smith v. van gorkom

all of this needs to be attached to 102(b)(7) and to the abstention approach.

duty of loyalty.
bayer v. beran
conflict of interest - this lead the court to conclude that the hiring didn't deserve the business judgment rule and the court would examine both the process and the substance of the decision. there's no judicial deference because there's a conflict of interest. the court closely examined the decision, and examined the process and then the substance as far as the fairness to the corporation.


who bears the burden of showing fairness?
business judgment rule doesnt' apply at the stage of showing conflict.

most of the board were insiders, so they were invested in the hiring of the singer.

benihana v. benihana

preferred shareholders

why did the benihana board end up in court?
because aoki sits on both sides of the transaction as beneficiary.
what saved the board is that it met to discuss the cost, the sale...
did all the things that smith v. van gorkhom didn't do

benihana made a three-member committee. the deal to sell to BFC
was better than the otehr possibilities. the full board approved the sale.
but the preferred was issued in 2 servings, which reduced the holding
company's voting power. so the sale of the prefereed diluted
benihana of tokyo in the company.

see 144(a) - only works if there's full disclosure, and BOT made a bad
argument that there wasn't full disclosure.

commercial arbitration class 6

recap:

if the claim went beyond the arbitration clause to the rest of the contract, this was not a matter for the arbitrator.

conflict between the federal and state rule. but SCOTUS says that erie doesn't apply because the roots of FAA are in the commerce clause which authorizes the fed to regulate interstate commerce under the supremacy clause. federal principles govern whenever an arbitration is under interstate commerce.

this begins the idea that in a diversity case, if the federal law of arbitration and state law conflicted the FAA would control, and the state rule would not apply despite Erie.

this still leaves a more fundamental question: given that federal court juris over federal matters involving interstate commerce would only exist in situations wehere a federal stat claim was involved, the practicality is that the vast majority of arbitratble matters involving interstate commerce will wind up in state and not federal court --- what if the state had rules concerning arbitration that are different than the case law principles articulated by the FAA? what if those differences impacted on arbitrability with the state principle being more restrictive than the federal rule? how could the state law be in violation of the federal policy?

2. state law must be applicable to all contracts
because section 2 of the FAA says that the defense must be inapplicable to contracts in general, and not just one that singles out arbitration.
this suggests that if a state legislature provides in a statute that a certain statute and the claims under it would not be subject to arbitration, then this might not be something a state can do. under state case law, if there were restrictions as to arbitrability, this might be something that states can't do. and remember that the vehicle to get before SCOTUS is under 28 USC that would allow them to take a case from the highest court of the state if it believes the court would offend SCOTUS principles.

keating.
not arbitratble if the FAA says so, or if federal determined that the status would be undermined by arbitration. the issue is, should the states have the same latitude that congress would have? the only basis for a negative answer would be that
the state does not have this power -- the idea that there is such a strong federal pro arbitrability, the states can't limit under their statutes! this is almost mind-boggling!!

the argument is that the only reason the congress put interstate into the Act is because otherwise the federal court might not have jurisdiction. is this a good argument?

remember citizen's bank, where scalia/thomas wrote that the FAA application is wrong.

even if you do have preemption in the state courts, you don't have necessarily preemption of public policy and so if the fed can't say (.... ) why can't the states? weiskopf doesn't know either.

what if there's a federal statute that exempts certain franchises from arbitrations, but then a state has a similar law that comports with the federal but that both are opposed to the FAA?

what about the forum shopping concerns? under Erie, you would apply state law if outcome determinative. but in a

see s. 2 -- you can interpret if you're using an enforcement recognized? what about public policy???

doctor's associates --

the tougher it is to waive the right, the more pro arbitratable it is.

but also, the more you can waste court time, it can be a problem, no matter how pro arbitrable you are.

affirmatively pleading arbitrability - you can compel. which is wacky. but the theory is that a motion to dismiss doesn't go to the merits of the case. going for summary judgment is different.

arbitrability also has to do with how the arbitration clause is construed -- the state court uses the FAA proarbitrability to give strange basis for claims. plus, the interpretation of contract is a matter of state law. so the way this turnes out -- the state law principles of contract construction can be used unless you use a result that is anti arbitration.

where are states free to impose thier own rules on arbitrable process without running afowl of preemption?

in many states including NYS, the tendency is to resolve arbitration cases on paper.

as long as it an arbitratbility issue in court, then they're done. that's pretty pro-arbitration.
the federal system doesn't have that in the FAA. if you don't use the CPLR 5-03(c), you run the risk that you proceede and if the opponent is against it, a year after, a challenge to the award can raise the arbitrability issue. a baiss for throwing out the award is that the powers were exceeded.

the parties contractual choice gives way.

the bulk case

see the housing case in the notes
not so broad that the parties couldn't adopt them.

can't award punitive damages garry. the problem?
brokerage firms and employers would say in the contract that disputes were governed by new york law in the hop tht arbitrator could throw out of court. after a while, the

not only is the contract held to new york law, but the courts have held that it's a no-no for a party to attempt to withold the remedies that would be available in court under statutory claims.

proRo class 11

shouldn't certain issues of obligation and loyalty.

if lawyers really couldn't accept any matter that was adverse to any former client, the ability to accept new cases in certain cases, certain subjects, and

can a law firm representing client A "fire" A when B comes to firm for a law suit against client A?

the attorney gained confidences, the presumption is that it was ethically through learning everything you can about your client. this allows the plaintiff to avoid making confidences that would just

in the event the plaintiff doesn't consent, the firm is disqualified.

supporters of screening often contend that objections to screening show skeptism/ cynicism about lawyers' ethics. the major purpose of the old rule was to put some trust back into the system.

then the recession hit, and it was felt that some relaxation of the conflict rules was in order and it was necessary to make lawyer migration from firm to firm easier. that's how we get to rule 1.10(a)(2)

the new provisions apply when
a lawyer moves from firm A to firm B and the question is if firm B can rep a matter that's the same or substantially similar to the matters/clients of the lawyer before he moved from firm A to firm B, and where the interests of the former and current client are materially adverse? YES

the lawyer only needs to follow the screening procedures under 1.10(a)(2)

under the cassis case, there may be an exception

in order to get an idea about what kind of screening procedures are sufficient, see comments 7, 8, 9, 10 on rule 1.10 which are technical requirements that make screening procedures adequate.

rule 1.10(b)
the context in which this arises: 1.10(b) covers situations in which a lawyer leaves a firm and the concern is what the old firm can do after the lawyer has left -- when a lawyer moves from firm A to B taking his clients with him, what can firm A now do? the firm is NOT precluded from representing
a client of the lawyer who left with interests materially adverse to the interests of other clients, assuming/unless
1. the matter on which the client needing new representation wants representation that is the same/ similarly related to how the former lawyer related him
2. any lawyer remaining at firm A has information protected by rules 1.6 and 1.9(c) that is material to the matter

so even if the lawyer takes off, the firm can still represent the client.
almost all imputed conflicts are consentable. the sole exception is that if the conflict is non consentable
under 1.7, then it's non consentable for the firm under 1.10.

when is a situation non consentable?
1. when prohibited by law
2. 1.7(b)(1) conflict rule

substantial relationship test: does the lawyer have information that would be useful in the current case?

hypo. "you don't know anything"

lawyer moves from PRIM law (under 4 years, represented axy-martin 

on employment matters and age discrimination) to CCC law firm. 

at CCC, is asked to do a case against axy-martin. 

1. can the lawyer take this case?

this is the playbook problem -- axy can say that the facts of the 

discrimination cases are distinct from sex discrimination but that the 

lawyer has learned details about the axy-martin employment, labor, 

salaries, past misdeeds, settlement, and business positions with are useful to discovery. is this 

a basis for finding the age and sex cases are related?

the playbook problem of litigation strategy does expand the reach of the 
substanitally related test very far. however, details with respect to 
specific employment practices of the company are substantially related 
potentially.
2. can CCC take this case?

IP class 5

nonobviousness -- "did we really need you to tell us how to do this?"
graham v. john deere co.

hindsight bias: if i could come up with this, obviously a PHOSITA could

test that the graham court imposed:
- are all the elements of the invention already out there somewhere?

KSR v. teleflex


TSM test

biz org class 10

why did pritzker want the merger to happen in only a few days?
- because the public valuation per share of the acquired company
will go up a lot

huge negative reaction to smith v. gorkham, because they could have
done *exactly* the same thing if they had just had a sufficient record
of process

the board could have engaged in a hurried decision if there had been
sufficient fact-finding. but the transunion board didn't make a conscious
decision, and didn't seem to care whether they had enough information
to make a considered decision for shareholders.

the injury: the fact that VG didn't do any negotiating to maximize the
profits

merrill-lynch and BoA boards could have gotten more information
but they didn't, but that's ok cause the board is protected by the
business judgment rule.

the board was relying on legal advice that it might be sued if it did not
accept the pritzer proposal

the lawyer for transunion said you don't need a fairness opinion
(a letter from some professional expert saying that what the board
has done in its valuation is fair), which was unusual at that time
and unheard of nowadays.

questions after smith, 324-325 and 328

common law changes, and also state legislative changes as a
result of smith/VG.
DE: provision to limit the liability of directors to an extent

when can a company limit/eliminate liabilities of a director?
-- duty of care

francis v. united jersey bank
francis is different from kamen and smith v. VG - how so?
the funds were given to the creditors instead of the shareholders
and the

proRo class 10

rule 1.7(a)
comment 24

see "may we do both cases?" problem.

how to analyze this positional conflict, and what arguments to bring
to its un/ethicalness:
1. state court v. fed court -- different jurisdictions, and so there is no
binding authority
    however, if a powerful judge like posner writes the opinion, it may
    be very persuasive
** inconsistent positions is not ordinarily problematic (see comment 24),
   but if either case is appealed and goes to SCOTUS, then there is a
   possible problem.

fiandaca
the possibility of representing the women's prisoner class comes up. what do you do?
-- can you say, "another lawyer in another office is handling the other client. so there's
no problem?" NO, it's imputed rule 1.10
-- where do you start with determining if there's an ethical problem?
see rule 1.7
-- is it (a)(1) or (2)? (a)(2): there's a risk that representation of one class will be
materially limited by representation of the other class

is the fact that the state came up with this so late suspicious? see p.XX

you might run into rule 4.2 problems (no contact rule)

rule 1.10 imputations
exceptions 1.10(a)(1)
where managing partner at a small firm had a major investment in a company,
if the managing partner would be precluded from representing a client
with interests adverse to that company, it's possible that other attorneys at that
firm would too.

rule 1.9
is this person who's interests pose a possible conflict a present or a former client?
is the issue the same matter as the one on which you represented the former client?
if it isn't the same, is it "substantially related"?
are the present clients interests materially adverse to the former client?
if they are the same and materially adverse, has the lawyer sought and
obtained the former client's consent in writing?

hypo.
almond v. star
if we were discussing conflicts as to star, what rule would apply?
-- rule 1.7, materially limiting conflict

if you decide almond is a former client, is the matter the same or
substantially related?
-- rule 1.9 comment 3

rule 1.9(b)
rule 1.10
rule 1.9(a)

rule 1.9(a) is the key to unlocking the above rules, and inquiries related to it.

1. a lawyer who stays at firm A: can that lawyer represent a new client Z in
the same or sub related manner that the firm had represented client Y who
has materially adverse interests but is gone? this is a 1.9(a) inquiry

2. a lawyer moves from firm A to firm B: can that lawyer represent client X
in the same or sub rel matter in which the firm A had represented another
client Y whose interests are materially adverse to client X's interests and
about whom the lawyer had received confidential information before
leaving the firm? this is a 1.9(b) inquiry

ADR class 4

only commerical courts can mediate.

fact finding:
- immediately review the arbitration clause
- reduce costs
- reduce time
-

in arbitration and mediation, it's particularly important to gauge how
strong the case is as you proceed through discovery/ fact finding

liberal pretrial discovery. no perry mason moments. there's too much
distinction between discoverable and admissible information.

biz org class 9

recap.

courts will only look at the process and procedures in NYS.
courts looking at DE statutes will exercise its own independent assessment.
this didn't arise in oracle, because the sole point was INDEPENDENCE
and the SLC wasn't independent, so the court never got to the issue of
whether the SLC used its powers correctly.

commercial arbitration class 5

recap from last class:
9th circ is anti-arb, and still used to compel arb of employment cases
CA district courts weren't doing so and SCOTUS believes the claims
are arbitrable even without a square holding
the courts have taken a significant interest in trying to provide safeguards
that govern arbitration in these types of claims
part of that has been done under an unconscionability rubric, bc
arb is subject to state law to the extent all contract provisions are.
DP protocol - a joint effort of ABA and AAA, which has various safeguards
and very important is that in the protocol, there's a specific provision
that arbitrators are supposed to apply the statute:

the general AAA code, has stuff about fairness but nothing about
adhering to the law.
the cases are still very restrictive to overturning awards that find an
absence of discrimination, even where there's very strong evidence of
discrimination. there's two reasons for this:
1. the "manifest disregard" concept, which applies only to errors of
law and not errors of fact
2. manifest disregard is something taht arbitrators deliberately refuse
to follow

some ways, the most important issue is that not all forums are as
neutral as the AAA. when the forum is more structured for the
employer's purpose, then they're worthy of special scrutiny.

later we'll get to whether collective bargaining requires union members
to arbitrate certain kinds of claims.

thombly.

some employment cases lend themselves to arbitration and others really
don't.

establishing that the person was doing a good job, the other people
didn't have higher ratings, etc.
both cases are readily presentable in arbitration.
unlike court, the employee isn't inundated with lots of procedure,
and there's often "smoking guns" in the files, so it doesn't really
hurt that discovery is more limited and arbitration allows an
employee to go forward who might not have been able to afford
court procedings.
especially in race cases, there's an important issue of
"disparate impact" -- no overt impact, but sometimes more
incidious, what looks on its face to be neutral but is instead
in practice hugely disparate on members of a particular race, or
sometimes sex or age group. that type of case is on the claimant
to show, usually by stat analysis, what the impact of the practice is
and then the burden shifts to the employer to establish a business
necessity for the practice.
but if the plaintiff can show that there's a less discriminatory means
of getting to the objective, then there's a disparate impact case.
these are not good arbitration cases, because you
1. need more discovery
2.

how many employees can bring a class action to arbitration?
they're caput.

wright:
though SCOTUS said that these claims are arbitrable under a
general clause in shirk, etc.

2009: pent clausa decision, overturns precedent against the holding
without admitting it!
so the first thing that j.Thomas writes is that the 80s cases' issue is
"does arbitration bind a later court" where here the question is different....
as long as stat claims are held to, (hear recording...)

weiskoft thinks the different isn't distinguishable.

SCOTUS hasn't been content to extend arbitrability to fed stat claims
that would otherwise be heard in federal court.
basically, the pro-arb policy has been cramed down the states' throats.
see Federal Arb stat. s. 2, which discusses teh enforcability of arbitration
in the cases that involve interestate commerce. there's only two cases that
don't fall in the commerce clause: lopez and morrison.

right of actions. the fed must bring it's own cases for arbitration.
only other way is that it's a federal question or complete diversity.
do you only enforce this when a case happens to wind up in federal court?
or does it mean that for any case involving interstate commerce,
the state courts have to adhere to the federal arbitrability principles
ennunciated by SCOTUS? -- the federal laws of arbitration and
federal case law preempts the state law that is deemed to be anti-arbitrability:

for instance, a state - even under one of its own statutes - cannot effectively
provide in the statute that claims in the statute cannot be arbitrated, for
any issue involving interstate commerce.

for example, a state has other types of provisions which are seen
FAA s. 3/4: stay of the case
state courts have a lot of latitude, so long as they're not hostile to
arbitrability.
so to figure out if something is prempted, we have to go through the
substance procedure distinction under erie.
and then, we have the issue where the parties rights contractually
can create precedent even over the state's laws and that may conflict
with the FAA (because of choice of forum, etc)

if a state court doesn't apply FAA, what can the court do?
tehre's a provision that allows SCOTUS to give judgment
over a state's highest court in art. III s. 2.

prima paint:
weiskopf thinks the principle is right, but thinks it's interestng that the
state rule, even state rule with substance that are supposed to apply
under erie, are preempted because of FAA: so state court rules can't apply
even if it's something necessary!

how does the court explain? if the fed gov't under const analysis,
then the federal courts can make the rules over arbitration over the rules
of interstate commerce, and keep that regulatory power from the states.
this means that federal courts can make the rules as to how that power
may be exercised:
in a diversity case, the state rule doesn't apply and the claim of fraud
and inducement goes to the arbitrator. and the state court must apply
the same rule in an arbitration case.

preemption is coextensive with the FAA -- state courts deal with FAA
cases unless they involve a federal question or diversity.

1. illustrates hoe preemption works
2. SCOTUS says theres a distinction between affecting and involving commerce
3. parties had reason to contemplate interstate activity tho contract was intrastate

preemption doctrine isn't created by congress really.

what if SCOTUS wanted the s.2 construed broadly, then s.1 should construe
the employment clause narrowly as possible.
the court says that the impetus for arbitrability is the taft-hartley

for next class, we'll finish c.3:
argument is whether there should be preemption, and whether FAA
was ever intended to apply to state court. J.O'Connor was the leader
that it shouldn't apply, though Scalia and Thomas were the ones who
said it should, but now they think that it shouldn't.... very possible that
when this issue comes up again, the decision at state level will put out
preemption



mcdonald v. douglass

basic principles of preemption

severability

broad reach of preemptive effect
narrowness of employee exclusion s.1
federal preemption based on subject matter

proRo class 9

rule 1.8(a)

see comment 1

matter of neville, p.191
bly was not neville's client in regards to this matter. in the end,
neville is disciplined even though bly was sophisticated with
respect to the issues of the transaction and neville was essentially
just a scrivener.

the bachelor pad.

alice and bob, round after round of deal/no deal...

what's the issue with advice?
you are sacrificing a certain measure of success for one client.
you can't advise the other client to make a deal against the other
client because it would be an obvious betrayal/malpractice...

could you explain the implications of multiple representation
to both clients and continue to represent both with a strategy
of total non-cooperation (i.e. stonewall)?

1. don't allow joint representation of multiple defendants in
a situation where they're charged out of the same fact pattern...

it is highly likely that you will fail to give attention to a new set of
circumstances. you are more likely to disregard and give advice to
both clients notwithstanding the changed circumstances.

IP class 4

patentability.
- subject matter
- utility

35 USC 112:


PHOSITA (person having obvious skill in the art)

enablement:

incandescent lamp patent
"the object of this [written description] requirement is to apprise the
public of what the patentee claims as his own, the courts of what they
are called upon to construe, and competing manufacturers and dealers
of exactly what they are bound to avoid... if the description be so
vague and uncertain that no one can tell, except by independent
experiments, how to construct the patented device, the patent is void."

written description requirement

gentry gallery v. berkline

if it's not whether a PHOSITA can look at the claims and say,
"oh now i can look at this and make this sofa,"
then what is it?

the opinion says that he didn't even that there could be a possibility
of moving the console to another part of the sofa.

so then why if he had the fortuity of drafting claims that were
broader than possibly meant, then why should we limit it to
just what was in his head?

because someone else then invented the product.
why does this matter?
it just so happens that the claim happens to include claims that
the patentee hadn't considered,
including this better way of doing things. why should we care that the inventor is getting more than he had even realized?

gentry hadn't thought about the fact that these sofas could have the console placed anywhere.

but a general principle of patents is that we are giving a monopoly, and we don't want to give a larger one than deserved or than we have to.

so maybe this is the bar between us as the society and inventor as patentee.

enablement says to patentee "if you want this right, you're going have to give us something in exchange. you have to give up the goods. can't hide the ball, you have to give something up, and you have to tell us all how this is done so that when the limited period of monoploy is done, its in the public domain and we can see how it's done because the patent shows us.

written description looks at this phenomenon from the other side and says, "we're giving you an exclusive right for a period of time. we're going to be jealous of what we're giving up and we certainly don't need to give you a patent for something you didn't even realize you cold do. you didn't give up goods cause you were trying to keep them, you didn't give up goods because you werent' even in posession of them. if you didn'thave them, why should we reward you???"

the core difference between the requirements:
enablement -- has the inventor given us enough/ taught us how to practice to be able to patent the invention?
written description -- was the inventor in possession/ the creator of of the invention?


the ultimate test is this possession question: would a PHOSITA be able to say, "oh it's clear that you're in possession of this information, and i can recreate it from the patent?"

new and useful process
35 USC 102 deals with the "new" and 103 deals with the "XX"
s. 102 basically embodies the principle that ONLY TRULY NEW INVENTIONS DESERVE PATENTS

section 102 has to do with NOVELTY (in the positive, novelty is "new compared to the prior art"; in the negative, "what has been done previously by persons other than the patent applicant") and STATUTORY BARS (the ways the inventor for herself can remove the invention from patentability)

Novelty under § 102: things done by persons other than the inventor at times prior to the date of invention by the patentee

Sec. 102(a) – 

Sec. 102. - Conditions for patentability; 

novelty and loss of right to patent

A person shall be entitled to a patent unless -

(a) the invention was [publicly] known or [publicly] used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another before the invention thereof by the applicant for patent

(f) he did not himself invent the subject matter sought to be patented, or 

Statutory Bars

rather than invention date, look tot he filing date of the application. if any criteria fail on this, the patent should not be granted.
 
§102(b), (c), and (d) are statutory bars to patenting.

Sec. 102(b) – Inquiry is on the actions of the inventor and others more than one year prior to the date the application was filed

Sec. 102. - Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless -

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States.

ANTICIPATION.
a person shall be entitled unless the invention was known/used by others before the applicant invented them. at any point prior to the date of filing, has someone other than the inventor somewhere in the US known about or actually used the invention? this can be extremely broad...

“Used by Others”

Rosaire v. Baroid Sales Div., Nat'l Lead Co. (1955): they were given patents for a process of oil processing. but it turns out that they were not the first people to think of this idea, and it turns out that a technis had done some oil processing and had developed and used a similar method in the field prior to the invention of the method by rosaire. but tempis didn't publish, and there's no evidnece that anyone knew of what they were doing just because it hadn't been heard of or seen or really cared about.

does the practice of this method in the field, unknown to anyone but employed before the patent application, void Rosaire's patentability?

thinking back to trade secrets, we look at how many people other than the inventor know about the product or secret. if Rosaire was claiming a trade secret and only said that tempis knew about it, there would be no problem defending the trade secret. why is there a problem here? what is the effect of invalidating the patent?

patents are supposed to give something to society. so here, we have to draw the line between the private rights of patentees, and the public rights of society. we are very protective of the public domain's rights -- we want to be sure we're getting the benefit of the bargain, and we don't want to enrich someone who puts things into the public domain that we don't need. clearly, if Rosaire was taking a procedure that any Joe Plumber on the street knew, we would have no problem with saying "you don't deserve the rights of a patent." but if a niche of people using a method is small, perhaps even only one person, is this a different situation?

maybe it's that the contribution that deserves reward is the actual contribution, and not a dissemination of the information.

“An unsuccessful experiment that is later abandoned does not negative novelty in a new
and successful device. Nevertheless, the existence and operation of a machine, abandoned after its completion and sufficient use to demonstrate its practicability, is evidence that the same ideas
incorporated in a later development along the same line do not amount to invention.” 

  “Public” Equals Nonsecret: "if the public wanted this knowledge, it could have gotten it without paying you"

free riding the problem for which rights and incentives that flow from them are the cure, and the free rider here would be Rosaire. he found the method and published it. that's not behavior for which we think an economic incentive is necessary. we think that the incentive is needed for the hard work of coming up with the process, which won't happen without the economic incnetive. we don't want the money to go elsewhere because then the money is just wasted. we are jealous of the public domain right! 

“On Sale”

TEST:                        
1. Ready for patenting, no longer experimental
2. Commercial Offer for Sale

Egbert v. Lippmann (1881):
Barnes' girlfriend was complaining about her corset steels. hearing this complaint, he created steels that could slide against each other and be more secure and comfortable. he gave these to his girl in 1855, and then in 1858. in 1863, Barnes took the steels and showed them to Sturgess and explained how they work and then barnes applied for a patent in 1866 (having slept on his rights for 11 years)... of course by the time he files, other people have figured out how to make the steels and there's a whole change to the corset making industry. barnes thinks he can take what the industry is doing and get paid off of it by patenting, since he was the first to come up with the idea. barnes dies and his widow sues Lickman (a corset manufacturer) for the deceased husband's patent.

the patent was applied for in march 1866 and the statutory mark at the time was 2 years prior to date of application: must as whether the invention was in public use in US more than 2 years prior to 1866.

what evidence is there to show that the corsets were sold before march 1864? none.
what other evidence shows that they were in public use before march 1864? barnes clearly hadn't tried to keep this secret.

if you share with one person, not for experienmentation, but when it's complete and the benefits can be shared with everyone, then you won't get the benefits of patenting because you've waited to long and we don't want to incentivize withholding the invention from the public.

the whole purpose of the patent system is to encourage new technology. victorian women would have been better off if they had had stays in 1850s instead of 1860s.

"The public use of an invention for more than two years before application, even without his consent and allowance, renders the letters-patent therefor void. To constitute the public use of an invention it is not necessary that more than one of the patented articles should be publicly used. The use of a great number may tend to strengthen the proof, but one well-defined case of such use is just as effectual to annul the patent as many. If an inventor sells a machine of which his invention forms a part, and allows it to be used without restriction of any kind, the use is a public one."

when you have the invention and try to hold onto an exclusivity longer than patent would allow, the statutory bars will not allow this. you will be barred forever.

Pfaff v. Wells Elecs (1998): The on-sale bar to patentability applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. An inventor can both understand and control the timing of the first commercial marketing of his invention. There is no reason why unmanageable uncertainty should attend a rule that measures the application of the on-sale bar of 35 U.S.C.S. § 102(b) against the date when an invention that is ready for patenting is first marketed commercially. Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention. 

“Printed Publication”

In re Klopfenstein (2004): “The statutory phrase “printed publication” under 35 U.S.C.S. § 102(b) has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was published…The expertise of the intended audience can help determine how easily those who viewed it could retain the displayed material. A reference, however ephemeral its existence, may be a "printed publication" under 35 U.S.C.S. § 102(b) if it goes direct to those whose interests make them likely to observe and remember whatever it may contain that is new and useful…Whether a party has a reasonable expectation that the information it displays to the public will not be copied aids a 35 U.S.C.S. § 102(b) inquiry.”

see 102(a) - someone other than the applicant
see 102(b) - statutory bar is in spite of the applicant

In re Hall p.192: **notice the dates!** 
public accessibility is the touchstone in determining whether a reference constitutes a printed publication.
Nov. 1977 -- the printed graduate dissertation became available in a W. Germany university, but would not have been available in the US at this time
Feb 1979 -- the Hall patent application is filed in DC and Hall has never been exposed to the dissertation

does the dissertation bar the patent under 102(a)? NO.
does the dissertation bar the patent under 102(b)? YES. this is not Rosaire, this is two independent people coming up with the same idea. and the uncatalogued dissertation is going to bar the patent of an inventor in the US.

why do we do this?

because we're jealous of the public domain. even under strong moral and ethical arguments that are favorable aren't as strong as the reasoning that the incentive wasn't necessary if it is already in the public domain. there is something about the quality of the invention that lends itself to obviousness if a grad student across the world came up with this two years before you. there's no need to incentivize. 

the clock is ticking: if you want exclusive rights, you better come forward and give us what we want for those rights. but 102(a) works differently -- has anyone known about and used? 

in 102(b) we want to know if anyone has used or described the invention anywhere in the world

Experimental Use Exception

Factors – 1) Good faith effort to reduce to practice invention; 2) Invention cannot feasibly be tested in private; 3) due diligence; 4) under control of the inventor

City of Elizabeth v. Pavement Co. (1877) – Invention was publicly used for six years; the use of an invention by the inventor himself, or by another person under his direction, by way of experiment, and in order to bring the invention under his direction, is experimental use.

Campbell v. Spectrum Automation Co. (1975): Plaintiff brought action against defendant for infringement. Defendant counterclaimed, contending that the patent was invalid and therefore could not be infringed, as plaintiff was not the true inventor. Based on review of the record, the court found evidence sufficiently strong to satisfy the clear and convincing standard, and it held that the district court was correct in finding that defendant had carried that heavy burden.

when looking at 102(a) and (b), keep the dates in mind!!

Retention of control over the use is key.

§102(c )Abandonment

• we won't look to closely at this in Intro IP
  
• Express Abandonment: Express statement, openly disclaiming any intent to obtain a patent.
• Implied Abandonment: Abandonment through conduct by the inventor that indicates intent to forego a patent.

The Enablement Standard for Anticipation

A prior art reference cannot anticipate an invention unless the reference is enabling.

In re Hafner (1969): “A disclosure lacking a teaching of how to use a fully disclosed compound for a specific, substantial utility or of how to use for such purpose a compound produced by a fully disclosed process is, under the present state of the law, entirely adequate to anticipate a claim to either the product or the process and, at the same time, entirely inadequate to support the allowance of such a claim…§ 112 provides that the specification must enable one skilled in the art to "use" the invention whereas § 102 makes no such requirement as to an anticipatory disclosure.”

·      The disclosure of how to use must relate to a use of the kind considered by the Supreme Court in Brenner v. Manson to be a sufficient utility.

·      A reference that constitutes prior art merely need to be enabled with “adequate directions for the practice of the patent” in order to anticipate. In other words, an anticipatory reference must contain sufficient information to allow a person to “practice the invention.” (Seymour v. Osborne)

Titanium Metals Corp. v. Banner (1985): “Enablement in this case involves only being able to make the alloy, given the ingredients and their proportions without more. The evidence here, however, clearly answers that question in two ways. Appellee's own patent application does not undertake to tell anyone how to make the alloy it describes and seeks to patent. It assumes that those skilled in the art would know how. Secondly, appellee's expert, Dr. Williams, testified on cross examination that given the alloy information in the Russian article, he would know how to prepare the alloys "by at least three techniques." Enablement is not a problem in this case.”

·      Where the anticipatory reference is a public use, rather than a publication, some case law suggests that the enablement standard does not apply.  Such uses may be non-informing products as in Lockwood v. American Airlines (1997).

Rule 131: Establishing a Date of invention

The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained

Non-obviousness, 35 USC s. 103
you cannot get a patent, even if it's not exactly already referenced
as prior art reference (something already out in the world that teaches
you how to do in a certain field) that tells us exactly what your
invention is, if the the difference between your invention and prior
art is so minor that your invention would have been obvious at the
time made to any PHOSITA then you can't get a patent.

based on everything you need to know as an invention species, 
was the invention for which you seek a patent obvious?

well... what does obvious mean?

§103. Conditions for patentability; non-obvious subject matter

(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of this title,
if the differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person 
having ordinary skill in the art to which said subject matter pertains.

Patentability shall not be negatived by the manner in which the
invention was made.

• Must be analogous prior art – either 1) from the same field of endeavor or 2) reasonably related to the particular problem.

Graham v. John Deere Co. (1966) – graham had obtained the patent to a spring handle for plow machines which differed slightly from a prior patent that graham had obtained. the old patent and then the shent attaches to the spring assembly and sits on top of a cage thing. but with the new patent the shaft sits underneath -- very clever.

the question asked is whether the 789 patent is patentable as to reference to prior art? there's no prior art reference that discloses a clamp for the shank in precisely the manner that graham created. in that sense, it's not anticipatory. but we still have to ask, does this really deserve a patent?

the court gives a history of the obviousness doctrine (see p.215), going back to hotchkiss and the patent commissioners, establishing the idea of one with background skill in the calling, our PHOSITA

The determination of non-obviousness
is made after establishing the scope and content of prior art, the 
differences between the prior art and the claims at issue, and the level 
of ordinary skill in the pertinent art. The Court concluded that the patents
do not meet the test of the "nonobvious" nature of the "subject matter
sought to be patented" to a person having ordinary skill in the pertinent
art and were therefore invalid.

why would we do this? the clamp design is something that nobody has explicitly told us how to do before. but why don't we give the patent? because, as in Hall, if we wanted the information we could have easily found it -- a) by having ordinary skill in farm manufacturing and b) it's not worth the cost to us to incentivize this for you to show us!


35 USC 102 is saying that we already have exactly this information because someone else already figured it out!
35 USC 103 is saying that we don't need you to show us exactly how to do this, a PHOSITA can figure this out....

so where do we draw the line as to what is "obvious"?

Secondary Considerations: objective evidence required in
analysis of non-obviousness

1. Long-felt but unsolved need
2. Commercial Success
3. Failed Efforts of Others
4. Copying by Others
5. Praise for the Invention
6. Unexpected Results
7. Disbelief by Experts

Suggestion or Motivation to Combine: Either via the nature of
the problem to be solved, the teachings of the prior art, or the knowledge
of persons of ordinary skill in the art.

Ruiz v. Chance (2000): It is insufficient to establish obviousness that
the separate elements of the invention existed in the prior art, absent
some teaching or suggestion, in the prior art, to combine the elements.
The reason, suggestion, or motivation to combine may be found
explicitly or implicitly: (1) in the prior art references themselves;
(2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or (3) from the nature of the problem to be solved, leading inventors to look to references relating to possible solutions to that problem. While the references need not expressly teach that the disclosure contained therein should be combined with another, the showing of combinability must be clear and particular. Factors that may be considered in determining the ordinary level of skill in the art include: (1) the types of problems encountered in the art; (2) the prior art solutions to those problems; (3) the rapidity with which innovations are made; (4) the sophistication of the technology; and (5) the educational level of active workers in the field.  

Nonanalogous Art

In re Clay (1992): Although 35 U.S.C.S. § 103 does not, by its terms, define the art to which the subject matter sought to be patented pertains, this determination is frequently couched in terms of whether the art is analogous or not, whether the art is too remote to be treated as prior art. Two criteria determine whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

Inherency

In re Robertson (1999): “Anticipation under 35 U.S.C.S. § 102(e) requires that each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference…If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”

“That which would literally infringe if later in time anticipates if earlier than the date of invention.” Lewmar Marine v. Barient (1987).

Schering Corp. v. Geneva Pharms., Inc (2003): In the context of determining the validity of a patent, inherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure. Where the result is a necessary consequence of what was deliberately intended, it is of no import that the article's authors did not appreciate the results. Inherency, like anticipation itself, requires a determination of the meaning of the prior art. Thus, a court may consult artisans of ordinary skill to ascertain their understanding about subject matter disclosed by the prior art, including features inherent in the prior art. A court may resolve factual questions about the subject matter in the prior art by examining the reference through the eyes of a person of ordinary skill in the art, among other sources of evidence about the meaning of the prior art.

biz org class 8

derivative litigation - procedural prereq's
bond and demand
is demand required or excused
grimes/DE, marx/NYS
if demand is required, board will prob refuse demand.
plaintiff may try to argue wrongful refusal.
if demand
business judgment rule

hypo. problem #5
supposed a plaint in deriv seeks embez funds and alleges with
particularly the facts of embez and partic of company.
under grimes, is demand req or excused? should it be?
n.b. -- it's a difficult plead for the plaintiff, but we should assume
that the plaintiff has satisfied particularity

courts have said that if you're talking about less than a majority
of the board (and under grimes there's 3 factors)

the challenged transaction is the board's failure to go after
the party guilty of the embezzlement, and that is the issue to which
we apply the test under grimes.

this question is supposed to test both the rule and the policy, because
the business judgment rule allows the company some protection from
frivolous litigation when the derivative litigation allows shareholders
to bring suit even when they're not representative of the class. the
question could go either way depending on the facts presented.

what if the embezzler used the embezzled funds for another company
which the majority of the board has invested (thereby the maj of the
board has a material financial interest in the new company) then demand
would be excused

if the majority of the board is interested and demand is excused, the
corporation itself still has a way out because the corp could appoint
a special litigation committee

auerbach/NY; zapata  oracle/DE

SLC can take over the derivative litigation, can terminate, or can
settle the litigation.

inside directors. work for the board and as officers and make day
to day decisions.
outside directors probably work for other companies. can be
dependent or independent.

particular director has no relation with company except seat on the board.
that is an independent director.

disinterested directors.

plaintiff must also establish the complaint and cause of action with
particularity. simply saying that compensation is excessive isn't
enough - you must also look at similarly situated executives, etc
to establish particularity

analysis.
how do you suppose this case would have been decided in DE
under grimes? the result would be the same even tho the rules
look different and the facts aren't parallel
NYS and DE don't have universal demand. would this make it
difficult to litigate specific cases? irreparable injury still must
be litigated

question 4.
in marx (NYS rule) the ct determined demand should be excused
but plaintiff failed to raise COA. accordingly, plaintiff's complaint
was dismissed on the merits. what if the court had determined
demand was required but the complaint stated a COA?

demand would be excused because marx (NYS rule)

* the question would be "to whom has the harm occured?"

plaintiff who can hold the corp hostage hasn't been chosen as
an elective. either the board or a committee of the board should
be making those decisions.

see auerbach. the court presumed that demand was excused.
but there's a SLC that is composed of members after the
challenged transaction. the committee decided that suit wasn't
in the best interest of the corp. and the SLC gets to determine
those issues and the court will defer.

analysis question p.243
presumably the parties conclude the demand was excused. is this
correct?
did the case deserve the protection of the business judgment rule?

SLC is appointed when demand is excused, but it's not clear
whether marx applies in auerbach.

what is the court looking to to defer?
- independence
- appointment

how do you suppose the new SLC was appointed?
- CEO identifies and the board approves, non-independent
persons who are involved in the case!

DE v. NYS -- the DE court makes its own independent
inquiry after the SLC to decide what's in the best interest
of the corporation

the whole board is bad so the structural bias problem is excessive
but the court decides that it will make its own independent inquiry

shareholder makes demand in DE and the board refuses the shareholders'
demand. in DE once the shareholder has made demand in DE, s/he has
conceded that demand was required. the shareholder can elect a committee

oracle case.
the business decision about the case is that the board members were
accused of insider trading and the other directors were accused of
not monitoring.

see zapata -- 2nd step is the court's in

proRo class 8

conflict of interest tests. 

with conflicts the remedy is disconfrontation.

conflicts is part of the artisinal of strategic weapons because
they can increase the opponent's expenses and delays.

hypo. you are representing A and you represents B.
if you cross-examine B revealing privileged info about him,
you

concurrent/prospective conflicts - conflicts between two current
and ongoing obligations, such as between two clients or client and
prospective client, where analyzed from the POV of the current or
prospective it makes a difference.

or it can be a conflict around attorney's current/prospective obligs.

sometimes informed consent cannot cure concurrent conflicts.

successive conflicts: conflicts between obligs to current and former
clients. these conflicts can always be waived by informed consent.

imputed conflicts: conflicts between obligs to lawyer and client
and obligations of another lawyer who is affiliated with the first
lawyer. always waivable by informed consent, and there are even
screening procedures that can waive the obligation.

certain obligs on governmental lawyers, where the rules are different.

rule 1.7 - concurrent conflicts.

there are two general catergories
1. directly adverse: you're expected to not represent someone who's
interests are directly adverse to your current client. this can also happen
outside of litigation (for example, negotiating a sale of property).

see comment 6: "simultaneous representation in unrelated matters 

of clients whose interests are only economically adverse, such as 

representation of competing economic enterprises in unrelated 

litigation, does not ordinarily constitute a conflict of interest and thus 

may not require consent of the respective clients."

it's not enough just because you're representing competitor companies
to constitute a conflict of interest that requires waiver by informed
consent.

2. the materially limited concurrent conflict - rule 1.7(a)(2)
situations where there's a significant risk that a client will be
materially limited by the lawyer's responsibilities to another client
or another person or another interest. this sort of concurrent conflict
focuses on client harm implicating significant risk that the ability to
represent a client will be limited by some other obligation.

if you represent several people forming a business, you can't allow
the responsiblity to one of those clients to materially limit your
responsibilities to the other clients.

see comment 8, identifying material limitation: how much of a risk
is a significant risk? "the mere possibility of subsequent harm does 

not itself require disclosure and consent. The critical questions are 

the likelihood that a difference in interests will eventuate and, if it 

does, whether it will materially interfere with the lawyer's independent 

professional judgment in considering alternatives or foreclose courses 

of action that reasonably should be pursued on behalf of the client."

rule 1.7(b)
1. must decide if
2. must decide if the rule keeps you from taking some other
representation
3. can't ever represent one client against the other in the same
matter
4. must get it in writing
all four elements must be satisfied, and failure of any of these
elements means the conflict is not resolved!

rule 1.7 b(1) - when you can competently represent both clients
see comment 15 - the test of reasonableness
if the test is not met, then the context of this conflict is not
reasonable.
considerations of reasonability: 
1. are the conflicting representations un/related? if they're not
factually related then the conflict may be consentable.
2. does the problem involve joint representation of parties with
very diverse interests? if so, it may not be possible for them/you
to pursure those interests without harm to some party.
3. does the lawyer have a bond of loyalty to one of the clients?
if so, it seems less likely the lawyer can be impartial.
4. how sophisticated is the client? the greater the probability the
client will be able to give informed consent.

rule 1.7(b)(3) stops litigants at conflict in the same litigation.
you can't represent defendant and plaintiff, you can't represent
cross claimants, you can't represent 3d party interpleaders.

if it doesn't fall into 1.7(b)(1) to (3), then the concurrent
representation is representable.

you then must explain to your client the situation of going with/out
you as counsel.

see comment 18: *** and listen to recording***

to get informed consent, you may have to disclose confidential
info about the other client. if the other client refuses premission to
disclose, you can't and you can't get informed consent.

hypo.
client A wants to purchase a business from client B. both want
you as their attorney. you know that B is leaving that industry
to become an evangelical minister, and knows that A plans to
expand the business to include X-rated immoral materials. you
might have to disclose that information if you were both parties
representative, because it's material to the agreement. you will
have to share info obtained in confidence to client B. but if A
refuses to let you, you're screwed: you can't get B's consent
without disclosing about A.

see comment 19: "Under some circumstances it may be impossible
to make the disclosure necessary to obtain consent. For example,
when the lawyer represents different clients in related matters and
one of the clients refuses to consent to the disclosure necessary to
permit the other client to make an informed decision, the lawyer
cannot properly ask the latter to consent. In some cases the
alternative to common representation can be that each party may
have to obtain separate representation with the possibility of
incurring additional costs. These costs, along with the benefits of
securing separate representation, are factors that may be considered
by the affected client in determining whether common
representation is in the client's interests."

see comment 21: "A client who has given consent to a conflict may
revoke the consent and, like any other client, may terminate the
lawyer's representation at any time. Whether revoking consent to
the client's own representation precludes the lawyer from continuing
to represent other clients depends on the circumstances, including the
nature of the conflict, whether the client revoked consent because of
a material change in circumstances, the reasonable expectations of
the other client and whether material detriment to the other clients
or the lawyer would result."

other interesting insights on rule 1.7

rule 1.10
if you have a conflict of interest, you can't have any of your affiliates
involved either.

hypo.
you're a personal injury lawyer, and a driver and a cab company both
want you. one passenger just needs phys therapy. the other passenger
had serious injury: bone fracture and injury and 5 week hospitalization.
fee structure is contingent - 1/3 of recovery.
how to solve the problem:
1. turn to the rule, start with rule 1.7
 - is rule 1.7 (a) implicated?
   no there is no direct adversity because each party has an interest in
   proving the cab driver/company were reckless
 - is rule 1.7(a)(2) implicated?
   is there a significant risk of material limitation? if so, then
   you can't represent without going thru the 1.7(b) steps.
 - what do you need to know to answer 1.7(b)(1) questions?
   * extent of medical injuries
   * insurance implications
- at this stage, is it consentable?
   a reasonable lawyer at this point would probably conclude
   that if the conflicts were disclosed, that it's ok
- however a conflict could arise that could make a conflict situation
- do you have to get informed consent?
   yes, because there's a possibility that representation of one
   client could materially limit the representation of the other
- since you need informed consent, what do you need to disclose
   in order to get informed consent? comment 18

hypo.
you've concluded that you can represent both clients, and you sue
the cab company and are contacted to discuss settlement. the lawyer
says i'll settle the harder case for $350 if you take the lesser for $50.
have the circumstances changed?
- rule 1.4 duty of communication states you must communicate and
  convey the offers to both parties.
- if the more seriously injured client puts pressure on the less injured,
  have you now assisted opposing counsel?
- do you have to withdraw?
  you have to consult with the clients at this point, and it may not be
  absolutely vital to the clients that they get the most at this point.
  if they do want the max and don't know one another and have
  no sympathetic interests, then you haven't done as well as you can
  for the lesser injured client.

small law firm, A who represents bob in an IP matter against mogul
at firm B. firm B is a client of firm A for various malpractice claims.
none of the malpractice overlaps the IP claim. at the time, they're
not using firm A. are there any problems, and how are they analyzed?
if there's a conflict, turn to rule 1.7(a)(1).
- even though/if firm A is currently working for firm A, the case is not
  directly against firm B as a litigant, not in its representational capacity.
  by virtue of representing firm B, A doesn't owe a duty to oppose its
  other clients in a matter. just as firm B's lawyers representing mogul
  is not adverse to its other clients.
- what about 1.7 (a)(2): is there a materially limited aspect to either
  lawyer's work?
  * law firm A's interest in keeping firm B's malpractice work
  * firm B's interest in not antagonizing firm A
- what about 1.7(b)(1) "use the pissed off test"

ADR class 3

knowing how you want to practice

what do you do when you have no merit to the case.
1. if you can survive summary judgment,
2. you still may be sanctioned

what do you do when you have no merit and you want to help someone?
1. look for other factors, such as sympathy or equities
2. sometimes people will settle things even when they don't have to
because people want to seem decent and kind

international rules for arbitration in NYS for situations where
1. scope of discovery: arbitration has less discovery than
litigation, and still is more than typical discovery in many other
coutnries
2. arbitrators are bound to enforce contract and are not allowed to
use general factors such as sympathies and equities
3. don't make assumptions about rules of operation

corp lawyers usually draft contracts in large firms - they're non litigators.
and they draft provisions that are often cut-and-paste.
provisions are often not suited for the people involved.

the paper:
- just google ideas
- who do i interview? get ideas from the articles you read
- talk to mollen after you've done some work on the paper
- no puffery!!

benefits to publicity
generally talk about the lack of confidentiality as a negative,
but publicity can also help to bring discovery, dismissal of
charges, brought witness forward, etc. or publicity can bring
forth capital and support. or it can get the other party to
be more willing to negotiate. but once publicity is out there,
it's out there.

after ADR as the strictest approach, there's arbitration.
parties agree on a neutral, either in a contractual clause or
when a dispute arises. you have the freedom to direct
your needs at arbitration. since you have right to trial,
usually arbitration is not binding.

in addition to arbitration there's private tribunals,
i.e. "rent a judge" -- you agree to hire someone
privately (usually a retired judge) and have a trial before
this party. you can provide that this private judge award
can be appealed, etc. why would you want this when
the tax payers give you a court system?

why use a 20 year employee? they know the company
better than anybody else.

commercial arbitration class 4

no jurisdiction over interstate commerce for arbitration statute!
you only end up in federal court to compel arbitration if a dispute
includes either
1. federal question
2. diversity, where one party invokes right to fed court

so in a typical commercial case, anything with arbitration goes to
state court:
does state court apply the principals of arbitration by federal or
state court? FEDERAL COURT!

the breadth of the pro-arbitrability movement under SCOTUS is
enormous. arbitration was largely a creature of trade deals with
europe and involved specialized commercial matters that unless
that kind of arbitration was engaged in arbitrarily, this country
refused to enforce even those types of disputes. then, statutes that
follow instruct the courts that these are enforceable as any other
contract. and then starting with the itnernational cases of the 70s,
for the first time, SCOTUS decides that, within limitations, all
federal question cases are arbitrable as common law is.

what objections were overcome?
1. the fact that congress told the courts that they couldn't protect
their own jurisdictions in private business cases didn't mean
that they wouldn't fight for commercial arbitration. plus the thought
was that even if you got judges who weren't as clear on the law,
they would have more expertise about certain trades and usages of
an industry and that would leave them better equipped to handle
certain contractual issues.
2. statutory claims -- why does congress pass a securities statute?
in part to give individuals a right to sue and to protect certain interests.
but the statutes are also for the prtoection of society at large, and
have to do with administrative agencies with enforcement rights
to go into courts, conduct investigations, etc. more of an impetus
in making sure that these claims were decided correctly. if parties
wanted to kowingly leave a private dispute to arbitrators, fine. but
parites can take away from the power of the courts the right to
decide public interest statutory claims [without regulation]. these
statutes were also thought to require a specialized understanding of
the law.

trade is getting increasingly internationalized. SCOTUS ultimately
holds that sophisticated business entities are absolutely free to
designate which laws they want to control their disputes and are
free to designate which forum they want to have control the dispute --
even if the country has nothing to do with the dispute! there's an
increased realization that foreign entities will be very unwilling to
submit themselves to the jurisdiction of their adversary (very often
the foreign entity you're dealing with is governmental, too). since
the entities are free to litigate under the forum and law they want,
things are ridic. then in 1988, after wilko, the UN convention is
enacted. the statutes require companies to give up sovereignty
unless there's adherence to a "reciprocity provision". the only basis
to refuse a foreign award is public policy and some courts have
said that you can't not enforce an award for disregard.

so unless there's a treaty...
it's an issue of commity.
so they're elevated from an enforcement standard even more than
international court judgments.

but what do you give up?
1. for example: US company agrees with foreign company to arbitrate
in foreign country and in foreign law, what happens with statutory
rights in regards to foreign operation? sometimes it matters, and
sometimes it probably won't, and wouldn't you know that SCOTUS
picks cases that pose the fewest problems to create precedence.

shirk 417 US 506
it will be arbitrated in paris under the laws of IL.
the claims being asserted
the federal securities statutes involvement?
there was a sale of corporate stock which gave ownership of IP
but if you didn't have the protections you would have chaos
with the parties trying to find different jurisdictions to
review the matter!

what would work as examples of not enforcing per public policy?
it would have to be huge, for example, something like trafficing
human slaves.

mitsubishi v. soler
you still get anti-trust cases all over. there's one currently on
whether the NFL can get exclusive right to sell team uniforms
to fans.
a manu causes a distrib or retailor to not sell below a certain price.
this is vertical restraint. 
so now we see recommended retail price
rule of reason -- the court uses it for anti-competitive processes
which are not per se unreasonable

there's essentially nothing that he SCOTUS is going to do:
not a matter of SMJ or IPJ - the alleged acts are committed in US
this case is that there's an arbitration agreement and the UN convention
and there's precedent that arbitration extends, particularly in
international cases, to statutory claims. the dissent says that the
parties agreed to arbitrate what comes out of the contract.
but the statutory issues in this case didn't arise from the contract!

unlike in shirk, the us company here DID have a possible remedy
but for the arbitration clause.

chang v. mc ginn, smith.
if this had gone to court, would probalby not have been a
compromise. and the arbitrators seemed to have understood the
results better than a judge would have been able to. about half
of these claims win at arbitration, but for the cost of the loss,
taking into account the loss of the market. there's usually a
finding of shared fault.

adhesion contract, is not enough to invalidate.
the burden is on the claimant to show what's against public
policy -- that it is against the face of or legis history of a
statute, or there must be something inherently inconsistent with
the purpose of the statute and arbitration.

not looking at the facial neutrality of this. this is used more
in racial cases, and is harder because it needs a class action,
needs lots of discovery, needs a lot of expert testimony, etc.
and there's nothing new. unless the statute or the legislative
history says otherwise or there's something inherent in the
statute that makes arbitration improper. this is an industry
dispute, not a customer dispute. so there will be an industry
arbitrator and SEC forum, instead of federal court -- where
would you rather be? the public perception would be that
you want to be in court.

it so happens that in the past several years, the SEC has
changed the rules so you don't have to arbitrate. a lot of the
pressure to change was based on the perception, since many
cases are harrassment and are glass ceiling.

knocking out anti-discrimination.
SCOTUS has held that employees subject to mandatory
arbitration that doesn't stop the EEOC post judgment and doesn't
stop them from seeking relief. what it does is it stops them from
participating in later claims. so if you want EEOC protection, you
don't have to file. but you should if you want to leave them free to
work with you!

if age discrimination claims are arbitrable, then title 7 discrimination
laws are arbitrable. only the 9th circuit takes issue with, and relies on
some statutory language to take exception.

arbitrator must be trained in the law, must be written (but not necessarily
reasoned), neutrality, and a joint set of principals (due process protocol)
including provisions like
- can't be anything that limits remedy

proRo class 7

does it become unethical if that minimum can't be met honestly
without padding?

the ABA claims to take a hard line on this, and finds the practice to be
unethical. it is increasingly the subject of discipline.

double billing: you're giving up your availability to other clients.
this makes double billing unethical because you're not really
available.

contingency fees, rule 1.5
rule 1.5(c) there are more stringent requirements for contingent fees than
for flat fees. why are there so many more disclosure requirements for
contingency? the new york court rules supplement 1.5(b) to say that
there must be some consistency even for non-contingent cases?

the disadvantage of contingent fees is that poor people are not
protected, lawyers are likely to cherry pick cases, and undermines
the civil interests of our judicial system. there may be conflict of interest
for the criminal defense attorney that they may press for trial instead
of a plea. is that a real worry when pleas are at 90%?

lesser offense -- all would have to be spelled out in the contingency
agreement which would make it extremely complicated: there's an
efficiency issue as well.

there's no rule about how much a contingency percentage can be, it
only must be up to "reasonable" amount. tend to be between 30-40%
and there have been some cases where contingency fees above 50%
have been considered unreasonable.

pro bono. rule 6.1
substantial majority should go to efforts focused on helping
the minimum recommended in NYS is 20 hours.
see comment 9 -- the ABA recognizes that there may be years where
the lawyer may not be able to meet the limited hours, and in that time
you can pay your way out if needed.
see comment 12 -- the responsibility is not intended to be enforced
through disciplinary processes.

see problem on 168 - should we adopt mandatory pro bono?

IP class 3

recap.
elements of trade secret claim
- protectable subject matter
   - legal criteria: information that is secret and has value by virtue of its secrecy
   - evidentiary factors: fourtek, restatement of torts s. 757 cmt (b)

- reasonable effort to maintain secrecy
  - a stand alone element or merely circumstantial evidence?

- misappropriation
  - by improper means
    - economic v. moral theories of propriety (see posner)
    - defenses: proper means, eg reverse engineering
  - by breach of a confidential relationship
    - express in contract or implied by circustances
    - problem of employee mobility and right to earn a livelihood 

next series of classes - patents.

divided into four topics:
- patentability
- infringement/ rights of patentees
- defenses
- remedies

patentability.

five areas

1. subject matter (class 3)

2. enablement

3. utility

4. novelty (class 4)

5. nonobviousness (class 4)

Subject matter - 35 USC s. 101 inventions patentable

Whoever invents or discovers any new and useful process, machine, 
manufacture, or composition of matter, or any new and useful improvement 
 thereof, may obtain a patent therefor, subject to the conditions 
and requirements of this title.

there's a lot of criteria in this stat text for what a patent can cover, and we
can infer what is not patentable:
- things not new
- things not useful
- things not a process, machine, etc
- things not an improvement upon

process patents
product patents

what is not a process, machine, manufacture or composition of matter?

E = MC2 ... einstein couldn't patent the formula. why?
the laws of nature, physical phenomena, and abstract ideas are not
patentable. but this is not a simple distinction.

business methods? bilski v. kappos
machine or transformation test.
by definition, something that is new is something that we didn't know
before. we have the understanding that technology moves faster than
law and we need to craft our law broadly to encourage technological
growth.

hedging. a patent on the process would give an exclusive right, and
perhaps the court didn't allow this patent because "no one man should
have all that power"... and perhaps competition that exists in this
particular industry will incentive the industry innovators sufficiently
without patents.

living things?
- diamond v. chakrabarty: is the process that chakabarty developed
   patentable?
  even if we have the argument "life is different and we can't treat it
  like other processes", that's an argument that the courts aren't competent
  to decide. what are the implications of this?
  1. this is an important question that congress must weigh in on
  2.

- parke davis co v. HK mulford co
  is this process patentable?
  adrenaline itself exists in all mammals naturally, but it takes a lot of
  work to purify and isolate this and make it useful

in order to be patentable,

brenner v. manson: "a patent is not a hunting license"
- CCPA: "where a claimed process produces a known product it is not
  necessary to show utility for the product, so long as the product is
  not alleged to be detrimental to the public interest.

 Fortas: "until the process claim has been reduced to production
 of a product shown to be useful, the metes and bounds of that
 monopoly are not capable of precise delineation. it may engross
 a vast, unknown, and perhaps unknowable area. such a patent may
 confer power to block off whole areas of scientific development,
 without compensating benefits to the public."

- Harlan, dissenting: "the abstractly logical choice for researchers
  after the court's ruling seems to me to be to maintain secrecy until
  a product use can be discovered. as to discouraging the search by
  others for product uses, ... the price paid for any patent is that
  research on other uses or improvements may be hampered because
  the original patentee will reap much of the reward."

35 USC s. 112:

office action.

2. an overview of patent laws
a. requirements for patentability
1. subject matter
2. novelty
3. useful
4. nontrivial
5. description

novelty test: determines whether the claimed invention is unpatentable because it was made before, sold more than a year before a patent application was filed, or otherwise disqualified by prior use or knowledge.

utility is not much of an obstacle.