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2017 Ⓒ Boston Patent Law Association
President's Message
Each year, we gather to honor the judges who make our intellectual property system work. And as I mentioned during our Judges Dinner in May, more so than ever before, many of us have taken solace in the fact (not an alternative one!) that the Constitution’s framers built a system in which the judiciary, as one of the three independent branches of government, can and has successfully used a series of checks and balances to limit the exercise of certain power. It is their precise and highly informed use of checks and balances that has contributed to the development of our Intellectual Property jurisprudence that we marked at our Judges Dinner.
As I climbed up on the podium on May 12th, 2017 on the second floor of the Moakley Courthouse and looked around at our impressive gathering of 279 people who came to celebrate and honor the career of retired Federal Circuit Judge Arthur Gajarsa at the BPLA’s Annual Dinner in honor of the Federal Judiciary, Lee Bromberg, the BPLA’s Past President (2006-2007) walked by, quietly noting the grand event in a whisper. I was grateful that he did and I think it is fitting for me to chronicle my recent conversation with Lee since he started the BPLA’s tradition of honoring a Judge at our Annual Judges Dinner in 2007!
Having attended the NYIPLA Patent Prom (Judges dinner) in early February of 2007, Lee promoted the idea at Board of Governors meetings to honor a judge at our BPLA Judges Dinner. This led to Lee honoring Judge Young to receive BPLA’s first Distinguished Public Service Award. This fitting stroke of genius to honor a Federal Judge by the then-President Bromberg has been followed since then.
Lee has always thought it was important to participate in Bar Associations, whether at the local level, regional level, such as the Boston Bar Association, or the Massachusetts Bar Association, or at the national level, such as the American Bar Association or the AIPLA. He recalls fondly enjoying his involvement in the BPLA once he became a member. He has met many interesting folks dealing with interesting issues. He marvels at the high level of participation in the BPLA, he recalls having many lawyers turnout to the Committee meetings and events. He also appreciates the public service dimension associated with Bar associations as one gets involved in mentoring for both peers as well as younger lawyers. Lee noted that being involved in the larger bar community provides for a rewarding experience in the sense that one expands one’s professional world and does not get buried in one’s professional microcosm. It is good to meet people outside of one’s firm, to tackle issues beyond one’s cases – as it provides a sense that you are part of something bigger.
The BPLA, as Lee noted, also provides terrific networking opportunities which are good for marketing one’s services as well as building a community to refer cases to help represent clients in this domain. All in all, the BPLA is a great place to spend time to devote to bar association activities. Lee also enjoyed getting involved in the Board of Governors, where one learns to campaign for the vote for president for 8-plus years and deal with issues of organization.
What stands out historically for Lee as he reflects about his tenure on the Board of Governors of the BPLA was an annual meeting he recalls where there was a proposal to change the name of the BPLA to Boston Intellectual Property Law Association (BIPLA). Lee favored keeping it as the Boston Patent Law Association. He remembers, Martin O’Donnell, an MIT Engineer, who was very much into literature, and a great rhetorician, giving an impassioned speech in favor of keeping the name BPLA based on the importance of maintaining tradition, replete with references to “Old Ironsides,” visible through the windows of Anthony’s Pier Four, which helped carry the day to preserving our moniker as the BPLA.
When Lee was president, he furthered IP litigation as his theme, given his practice specialty. He persuaded the then-Chief Judge of the District of Massachusetts, Judge Mark Wolf to provide the keynote address at the Annual Meeting starting the 2007 year.
Lee was also instrumental in getting me involved at the Board level when he was President. He wanted to get firms other than IP Boutiques involved in the BPLA to increase participation from larger firms and those that had an IP litigation practice.
So how did Mr. Bromberg, who has an English literature background, become a renowned IP litigator? He tells us that after law school he started practice of law in NY and got involved in Trademark & Copyright Law as he represented CBS, Columbia Records and Columbia Artists Management. He moved up to Boston and became a Clinical Professor at Boston University and then moved to State Government where he worked as Chief Counsel for the prison system for four years.
In 1979, Lee decided that it was time to get back to private practice and he started Bromberg & Sunstein with Bruce Sunstein who is a patent attorney. Lee recalls fondly his early days at Bromberg & Sunstein where IP litigation soon dominated their law practice.
Lee noted that his English literature background has been very useful for these 40+ years of practice given that every patent is written in English! His wife is an English Professor at Simmons College, and has helped with claim construction exercises as they have debated what the words in many a claim means, thereby providing for robust constructions.
As far as mentors during his career, Lee noted that Bruce Sunstein, with his expansive patent law knowledge, complemented his practice. Together they made for a great team that wrestled with developing the strategic analysis for IP litigation as well as matters related to patent portfolios. Lee considers himself “self-taught” in the early days of IP Litigation but does recall Nick Flannery, a Litigation partner at Foley, Hoag & Eliot,, who was a gifted trial adversary, as informing Lee’s practice. He was fortunate to have many cases against and with prominent lawyers in IP/IT Litigation matters who learned from each other as well. Mr. Bromberg had a big case opposite Bill Lee and in that era of practice, one would benefit from a liberal education from adversaries!
Lee noted that IP litigation practice has changed and evolved for all of us in that the current cases are bigger, including many “bet the company” cases which now involve different budgets constraints. Over time, his practice has moved from retaining one technical expert and one damages expert to many technical and damages experts to cover various technology aspects. Additionally, Alice cases as he called them and the continuing struggle to deal with the strange beast called software, which is neither fish nor fowl, have kept him busy.
Lee also noted the difference in our patent practice in the U.S. which generally likes to claim broadly versus the practice in Japan or Germany where patentees file narrower claims. He has observed with interest how the courts have dealt and wrestled with the disparity of patent cases in different jurisdictions. Lee is concerned with the unpredictability of Intellectual Property given that the energetically developed decisions with bright line rules of the Federal Circuit are reversed by the Supreme Court and remanded back to the discretion of the district court judges. He views the AIA/PTAB procedures as an attempt to have the technically trained judges deal with enforceability. However, he notes that this forum is theoretically a litigation forum, but is constrained by patent office practice and administrative processes. Thus, we continue to struggle with the problem of cases with technical subject matter with added complexity, as the judges and jury who are not technically trained are making calls on technical factual issues. Lee reminisced about the time before the Federal Circuit came to be, which was founded around the time when Bromberg & Sunstein was formed -- a time when patent litigators favored bench trials and did not ask for jury trials. He recalls limited issues being raised in the cases in the 70’s and 80’s as compared to now. Lee recalled attending IP conferences organized by Pricewaterhousecoopers (PWC) where prominent litigators, judges and patent counsel gathered periodically. He shared that in one of these PWC conferences, he recalls Sir Robin Jacob, a prominent UK Judge (later Lord Justice Jacob) stated that he learned two important things about patent cases at this conference: “Firstly, in the UK, we don’t have juries (and we got that right)!, and secondly, we have specialized courts and we got that right too!”
When asked to share a favorite case, Lee spoke about a case involving DC brushless motors and magnetization patents. Lee represented a small company who asserted claims against three large Japanese companies and this was akin to a “scorched earth” litigation. They ultimately won one case in New Jersey and in the Federal Circuit, settled one, and went to trial on the third in Hartford, Connecticut. There was a long trial that lasted over three weeks. He recalls that the impaneled jury of about 9 men and women included three engineers. The fight came down to the battle of the two experts – an MIT Professor and an ex-MIT Professor-expert who had set up his own consulting company! The jury deliberated for 3 days and Lee still obviously relishes the finding of infringement on the basis of a couple of claims. They had willingly bifurcated the case and the damages were determined in a mediation with a Federal Magistrate.
Lee’s advice and encouragement to younger lawyers is to make sure that they reflect on the privilege that is associated with entering into and practicing in the IP space which is rich with much technology and legal subject matter that is enjoyable!
Now, going back to the Judges Dinner of May 12th, 2017 when we all gathered to honor and present the Boston Patent Law Association's (BPLA) Distinguished Public Service Award to retired Federal Circuit Judge Arthur Gajarsa. With this award, we honored Judge Gajarsa for his contribution to the body of law generally and to intellectual property law specifically and as we all learned the lasting impressions he has left on the lives and careers of those who were lucky enough to get to know and work with him – his clerks, his family and even his adversaries!
I am grateful that my partner Bill Lee kicked off the celebration of Judge Gajarsa’s career noting that he met Judge Gajarsa decades back as an adversary in a case involving the rights of Native Americans – a case that Judge Gajarsa won but so did Bill in that they struck a chord of friendship as they departed that evening from the same airport. Chief Judge Prost, spoke on behalf of the judges who worked with Judge Gajarsa at the Court of Appeals of the Federal Circuit. She described some of her tenure on the Court with Judge Gajarsa and his collegiality and friendship with all his colleages. Judge Gajarsa’s clerks then proceeded to steal the show as they regaled us with vignettes and stories of their time in and out of Judge Gajarsa’s chambers. Joseph (Joe) Cianfrani, one of Judge Gajarsa’s very first clerk in the first year he served on the Bench, started sharing stories of Judge Gajarsa and the memorable relationships he formed with his clerks. Gregory Corbett, a BPLA member from Wolf Greenfield Sacks, who was instrumental in organizing the participation of Judge Gajarsa’s clerks for our dinner and to whom I owe many a thank you, followed Joe. WilmerHale Counsel Arthur Coviello, like Joe, flew in from CA to honor Judge Gajarsa. Judge Gajarsa's former clerks, David Ruschke, the Chief Judge of the Patent Trial and Appeal Board; and Paul Grewal, a former judge and current vice president and deputy general counsel at Facebook, also shared stories of Judge Gajarsa’s personal and judicial temperament and left all of us wanting a clerkship with Judge Gajarsa. Each of his clerks spoke fondly of becoming a part of the Gajarsa family.
The success of his clerks is a testament to the impact Judge Gajarsa has made throughout his career. It was a pleasure to present this award to him in the presence of so many people who have learned from his legal and technical expertise.
It was important, especially given the state of our politics, to note Judge Gajarsa's commitment to representing the interests of Native American tribes throughout his career in private practice. He appeared in court several times to argue for righting decades-old wrongs involving water and land rights.
Judge Gajarsa and I share a connection beyond IP law - Rensselaer Polytechnic Institute (RPI), where we both earned engineering degrees and where my son is currently a student. Thus, it was no coincidence that Dr. Shirley Ann Jackson, the president of RPI, also attended and spoke at the dinner.
"I was pleased to have a number of current and former colleagues in attendance," commented Judge Gajarsa. "It was an honor to share this evening with so many who have helped shape my career."
It bears repeating, my Partner Emily Whelan, who chairs the Activities and Public Relations Committee, played a key role in planning this year's Dinner in Honor of the Federal Judiciary.
Volume 48, Issue 3
Monica Grewal, BPLA president, presents the organization's Distinguished Public Service Award to Judge Arthur Gajarsa.
In closing, I want to highlight an opportunity for BPLA members that was shared by Ashlyn J. Lembree, Clinical Professor at Law and Director, Intellectual Property and Transaction Clinic at University of New Hampshire School of Law during the Judges Dinner. In light of Judge Gajarsa’s public service and guidance to us all in IP law, he inspired the 2012 founding of the Arthur J. Gajarsa American Inn of Court. This IP specialty Inn is based out of the University of New Hampshire School of Law, and Judge Gajarsa and many Inn members invite the BPLA members to share some quality IP programming and Fellowship with them. For those interested, please contact Ashlyn Lembree at tel: 603.225.3350, or ashlyn.lembree@law.unh.edu. She serves as one of the primary steering committee members for the Arthur J. Gajarsa American Inn of Court.
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Table of Contents
Message from the President Monica Grewal
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Harvesting Innovation: 3 Tips for IP Managers
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< Back
Save the Date: BPLA Annual PCT Seminar and Madrid Protocol Seminar
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The Annual Dinner to Honor the Federal Judiciary, May 12, 2017
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