Intellectual Property Law

BPAI Tightens Use of Declarations in Overcoming Obviousness Rejections

Posted on May 04, 2009
Ex Parte Jellá, Appeal No. 2008- 1619 (BPAI, November 3, 2008), Precedential OpinionThe Appellant's claimed invention relates to raised panel door sections for overhead garage doors. Claim 1, reproduced below, is representative of the subject matter on appeal...

Dunes CLE: Patent Drafting and Prosecution after KSR, McKesson and Bilski

Posted on April 30, 2009
I will be speaking at Dunes CLE on May 1 (Friday) in Las Vegas regarding "McKesson and the Future of Inequitable Conduct." I will be joined by Robert Ryan Morishita, founder of the Morishita Law Firm, Wesley L. Austin, a shareholder with Austin Rapp & Hardman, and Ryan A...

Limelight Uses Muniauction Decision to Escape Infringement of Internet Patent

Posted on April 28, 2009
Akamai Technologies, Inc. v. Limelight Networks, No. 06-11109 (D. Mass., April 24, 2009)A jury awarded Akamai and MIT $45.5M, finding that Limelight infringed a patent relating to a content delivery network ("CDN"), where page objects are replicated among a distributed set of content delivery service provider servers and end user requests for those objects are redirected to a particular content server...

Book Review: "Burning the Ships"

Posted on April 27, 2009
Marshal Phelps was best known for his 28-year career at IBM Corp., where he served as vice president for IP and licensing and built the now-legendary $2B a year licensing program. In 2003, Phelps was recruited to join Microsoft to help transform the company's IP into an "open innovation" platform...

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BusinessWeek: Cities Yielding the Most Valuable U.S. Patents

Posted on April 23, 2009
Ocean Tomo, which is in the business of valuing patents, was asked by Business Week to cross reference their patent valuation database with the addresses of the first-listed patent holders to determine "the world's most inventive cities." Here are the results:(1) San Francisco/Silicon Valley(2) Tokyo(3) Boston(4) Los Angeles(5) San Diego(6) Minneapolis/St...

Inter Partes Reexams Deflating in the E.D. Tex.

Posted on April 23, 2009
BarTex Research LLC v. Fedex Corp., 6:07-CV-385 (E.D. Tex., April 20, 2009)BarTex sued FedEx in August 2007 alleging infringement of a Scott Harris patent directed to a "bar code data entry device." While the suit was pending, pleadings were filed in an Illinois litigation stating that the Fish & Richardson law firm (Harris?s former employer) had asserted ownership over some of Harris?s patents, including the patent-in-suit...

Another District Court Gets Impatient With PTO Delays

Posted on April 22, 2009
Field Logic Archery, LLC v. G5 Outdoors, LLC, No. 06-1724 (D. Min., April 20, 2009)From Magistrate Judge Noel's report and recommendation:The above referenced case was filed on May 9, 2006. After it had been pending for over a year, the parties stipulated to a stay pending the resolution of a "Reissue Application," that had been filed with the United States Patent and Trademark Office (USPTO) in June of 2007...

Who Licenses Out Patents and Why - Business Survey From EU, Japan

Posted on April 20, 2009
Maria Pluvia Zuniga and Dominique Guellec from the Organization for Economic Co-Operation and Development (OECD) have published a working paper titled "Who Licenses Out Patents and Why? Lessons From a Business Survey", which looks at the results of a business survey carried out on the licensing-out of patents...

E.D. Tex. Losing Confidence in PTO's Inter Partes Reexamination Program

Posted on April 16, 2009
ROY-G-BIV Corp. v. FANUC Ltd. et al., No. 2:07-CV-418 (E.D. Tex., April 14, 2009)Plaintiff ("RGB") filed suit on September 19, 2007 alleging infringement of patents relating to motion control methods and systems that include software for communicating with and controlling different motion control devices...

Cornell Damage Apportionment Making Way Through Courts

Posted on April 15, 2009
The other week in Cornell University v. Hewlett-Packard, Judge Randall, sitting by designation in the Northern District of New York, chopped Cornell's damage award from $184M to $54M, stating that "Cornell simply stepped one rung down the Hewlett- Packard revenue ladder from servers and workstations to the next most expensive processor incorporating product without offering any evidence to show a connection between consumer demand for that product and the patented invention"(see more here)...

Deloitte Releases Study on Effects of Follow-on Biologics Legislation

Posted on April 14, 2009
Recently, Congress proposed legislation allowing the FDA to approve generic versions of biotechnology drugs after a shortened period of brand-name patent exclusivity. While legislators tout the obvious benefits of such a move, Jim Hollingshead from Deloitte digs deeper to find some unintended consequences:? Make Hay" effect: Once a drug is introduced to the market, an innovator has a short time to recoup its development costs -- upwards of $1 billion over 12 years -- before a competitor enters the market...

Financial Woes Continue to Deepen at the USPTO

Posted on April 14, 2009
Earlier, this blog and others picked up on comments from PTO officials indicating that decreased rates of patent filings and allowances, coupled with the current economic morass, is translating into a toxic mix for the financial health of the USPTO.Commerce Secretary Gary Locke is preparing to name the PTO Director in the coming days, and the odds-on favorites for the position are (1) Q...

CAFC: Subsequent Developments OK For Double-Patenting Distinction

Posted on April 13, 2009
Takeda Pharmaceutical Co., Ltd. v. Doll, 2008-1131, April 10, 2009 (link)Takeda originally filed a patent application disclosing certain cephem compounds and the process for making those compounds in Japan in 1974, and in the U.S. in 1975. Since that time, Takeda filed a series of continuation applications (filed under the "old", pre-June 1995 regime) in the PTO, many of which issued as patents...

The "Less Familiar" Voices on Patent Reform

Posted on April 13, 2009
Last month, the U.S. Business and Industry Council Educational Foundation sent a letter to Congress opposing patent reform. Signatories to the letter included organizations such as Capitol Hill Prayer Alert, Ethics and Religious Liberty Commission of the Southern Baptist Convention, Minuteman Civil Defense Corps...

Thursday Shorts

Posted on April 09, 2009
How Low is Too Low for Patent Prosecution? Last week Gene Quinn published a post titled "Open Source Race to Zero May Destroy Software Industry", where he asked the question "does anyone really think that paying $1,400 for an allegedly complete patent application is a wise business decision?" Needless to say, the post generated a flurry of controversy...

ND Illinois One Step Closer To Adopting Patent Rules

Posted on April 08, 2009
The judges of the Northern District of Illinois have issued for public comment proposed local rules to guide the pretrial procedures on patent cases. The proposed local patent rules were drafted by a committee of experienced lawyers, who are affiliated with the Intellectual Property Law Association of Chicago (IPLAC), and four district judges...

Study: Restricting Patent Challenges May Ease Royalty Inflation

Posted on April 07, 2009
Removing "bad" patents is considered a public good, so federal law provides broad challenge right that allow anyone from the public to challenge a patent's validity almost any time. But federal law goes further than just making patent challenges easy; it also makes them nearly impossible to contract away...

Patent Reform In Action: Judge Rader Provides Damage Apportionment Clinic In District Court Case

Posted on April 02, 2009
Cornell University v. Hewlett-Packard, 01-CV-1974 (N.D.N.Y., March 30, 2009)Sitting by designation, Judge Rader considered HP's motion for JMOL seeking to reduce a royalty base to include only the earnings attributed to the infringing technology.The jury found that HP infringed U...

Amendments to Patent Reform Bill To Be Submitted Tomorrow

Posted on April 01, 2009
After yesterday's announcement of "very significant" changes to the patent reform bill, copies of the proposed amendments have started to float about the blogosphere (courtesy of Hal Wegner).Well, here is a peek at the language in the amendments, starting with damages:§ 284...

Bilski Beatdown: Holders of Business Method Patents May Be Holding "Worthless Stock"

Posted on March 31, 2009
Cybersource Corp. v. Retail Decisions, Inc., N.D. Ca. (04-03268) March 26, 2009 (from Docket Navigator)Cybersource asserted U.S. Patent 6,029,154 directed to a system and method for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet...

Economic Slowdown Hitting Patent Brokers Hard: Post Mortem From Ocean Tomo's Spring Auction

Posted on March 30, 2009
Last Friday, Ocean Tomo conducted one of their high-profile intellectual property auctions at the Ritz-Carlton in San Francisco. Normally, bidding activity is relatively brisk, but this year expectations were set lower in light of the current economic conditions (as much as a 50% drop was anticipated)...

Failure To Correct Significance of Submitted Prior Art Leads to Inequitable Conduct

Posted on March 25, 2009
Golden Hour Data Systems, Inc. v. emsCharts, E.D. Tex. (2:06 CV 381), March 23, 2009It has now officially become "inequitable conduct week" at the 271 Blog. Here, a patent application, being handled by a patent agent/law student under the supervision of a partner, discussed a prior art system ("AeroMed") in the "background of the invention" section...

A-Cold Wind Blowing: Inequitable Conduct Part 1

Posted on March 23, 2009
. . . mistakes and omissions will inevitably occur, and that the courts will be asked to determine if there was inequitable conduct.- Judge Prost, Tafas v. Doll (2008-1352)Larson Manufacturing Co. v. Aluminart Products Ltd. (2008-1096) March 18, 2009Larson filed a continuation application just prior to the grant of its patent...

A-Cold Wind Blowing: Inequitable Conduct Part 2

Posted on March 23, 2009
Synovis Life Technologies Inc. v. W.L. Gore & Associates, Inc., D. Mn. (07-CV-1396) (order March 19, 2009)During litigation, Defendant asserted that Plaintiff made affirmative misrepresentations to the PTO in the application leading up to the patent-in-suit...

CAFC Throws a Bone to the PTO in Tafas Case: Now What?

Posted on March 22, 2009
By now, most everyone has heard that the CAFC issued its opinion in Tafas v. Doll and upheld the PTO's authority to promulgate many (but not all) of the rules. After much hand-waving over what PTO rules are to be considered "procedural" versus "substantive", the CAFC essentially treated the rules as a substantive due process issue over a non-fundamental right...

USPTO Seeks Nominations for Public Advisory Committees

Posted on March 19, 2009
Under the Patent and Trademark Office Efficiency Act (106?113), two Public Advisory Committees were established (one for Patents, one for Trademarks) to review the policies, goals, performance, budget and user fees of the USPTO, and to advise the Director on these mattersDue to the expiration of current members? terms, the USPTO is requesting nominations for three members to the Patent Public Advisory Committee (PPAC) and two members to the Trademark Public Advisory Committee (TPAC) for terms of three years that begin from date ofappointment...

U.S. Court Report Shows Patent Litigation Continues to Be Flat

Posted on March 19, 2009
The Judicial Business of the U.S. Courts released its annual report this week on the business of the Federal Judiciary for the fiscal year ending September 30, 2008. Overall, the report provides statistical data on the work of the Federal Judiciary, compares data for the current year to that for previous fiscal years, and, wherever possible, explains why increases or decreases occurred in judicial caseload...

It's Official: More than 1/2 of Examined Patent Applications Rejected at Top 3 Patent Offices

Posted on March 18, 2009
THe EPO issued a press release yesterday, announcing that filings for 2008 dropped by 3.6%. More importantly, the EPO went on to point out that the grant rate for European patents dropped for the first time to less than 50%. More specifically, the grant rate for 2008 was 49...

Doll Confirms that Budget Crisis Is Affecting USPTO

Posted on March 17, 2009
Being a fee-funded government entity, it should be no surprise that the PTO would be affected by the recent economic meltdown. But by how much? In a recent interview, acting USPTO Director John Doll stated that the PTO's current projections show that patent filings should drop by a mere 2% in 2009...

USPTO Warns Applicants Not to File PCT's With Search Authorities of Limited Competence

Posted on March 16, 2009
When international applications are filed, they are forwarded by the Receiving Office (RO) to the International Search Authority (ISA) selected by applicant.On occasion, specific ISA's have limited their competencies for specific applications. For instance, the EPO will not act as an ISA for applications with one or more claims directed to a business method...

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