Intellectual Property Law

Housecleaning: ED Tex. Declines Venue in 3 Patent Cases

Posted on February 02, 2009
Yesterday, Patently-O noted that the CAFC's TS Tech decision was beginning to have an impact on venue determinations in the ED Tex.This morning's Docket Navigator Docket Report discloses that on January 29 and 30, the ED Tex. issued 3 orders declining venue in patent cases:"Under the circumstances presented here, the convenience of witnesses and localized interests weigh in favor of transfer with the other factors neutral or weighing slightly in favor of transfer...

New Statistics on Inter Partes Reexamination

Posted on February 02, 2009
Matthew A. Smith, adjunct professor at the George Washington University Law School, and Foley & Lardner attorney, has published the treatise "Inter Partes Reexamination," which provides an in-depth analysis of Inter Partes Reexamination practice before the United States Patent & Trademark Office...

The First Domino? C.D. Ca. Invalidates Business Method Patent Under Bilski

Posted on January 29, 2009
Fort Properties, Inc. v. Master Lease LLC, (SACV07-365 AG) C.D. Ca., January 22, 2009Fort Properties filed suit against Master Lease, seeking a declaration from the court that Master Lease's patent on business methods for creating an investment instrument out of real property (US patent 6,292,788) was not infringed and/or invalid...

Study: Experienced Examiners Allow More, Cite Less

Posted on January 28, 2009
In what is sure to be an oft-cited paper in the "Great Patent Reform Debate", professors Mark Lemley and Bhaven Sampat have brandished their magnifying glasses on examiner processes at the USPTO to see if certain examiner characteristics had statistical effects on the examination process...

To access this complete feed in the blog feed reader login or register for free.

WIPO: Global Economic Slowdown Impacts 2008 International Patent Filings

Posted on January 27, 2009
WIPO issued a press release today on international filings, noting that the growth of PCT filings has dropped from 9.3% in 2007 to 2.4% in 2008.The most robust growth rates for PCT filings include the Republic of Korea (+12.0%), China (+11.9%) and Sweden (+12...

Monday Shorts: Jury Misconceptions, Patent Reform, and Peer-to-Patent

Posted on January 26, 2009
Are Juries Misinformed in Patent Cases ? - Joe Mullin has a great piece over at Law.com titled "How Juror Misconceptions Affect Patent Trials." Despite the fact that most jurors think that infringement means inventors claiming they've been copied, research done using Stanford Law School's new IP Litigation Clearing House demonstrates that formal allegations and findings of copying are actually quite rare in patent disputes...

EDNY Nixes Therapeutic Pharma Patent Using Bilski

Posted on January 23, 2009
King Pharmaceuticals, Inc et al v. EON Labs, Inc., E.D.N.Y (1-04-cv-05540), Jan. 20, 2009In a highly publicized case, King Pharmaceuticals brought an action against Eon Labs on patents relating to methods of informing patients about and administering the muscle relaxant metaxalone - marketed by King under the brand name "Skelaxin®" - with food...

N.D. Ca.: Quality, Not Quantity of Motions Is Most Relevant For Motion to Stay

Posted on January 21, 2009
Yodlee, Inc. v. Ablaise Ltd. et al (4-06-cv-07222) CAND, Jan. 16, 2009The litigation between the patentee and the accused parties began in 2006, while concurrent litigation was ongoing in a different district. For the following year, fact discovery was stayed in light of developments in the other litigation...

Obama Administration Orders Reconsideration/Suspension of New Rules

Posted on January 21, 2009
Yesterday, the new White House Chief of Staff Rahm Emanuel issued a memo to government agencies (e.g., the USPTO) that "no proposed or final regulation should be sent to the Officeof the Federal Register (the "OFR") for publication unless and until it has been reviewed and approved by a department or agency head appointed or designated by the President after noon on January 20, 2009...

Mammoth Paper on Patent Case Management To Be Published by the Federal Judicial Center

Posted on January 20, 2009
Professor Peter Menell from the University of California, Berkeley School of Law, and a host of patent litigators, judges and academics are preparing to publish a paper titled "Patent Case Management Judicial Guide" that strives to provide a "best practices" overview for judges and practitioners alike...

Patent Litigation Sinking for 2009

Posted on January 20, 2009
According to Stanford Law School's IP Litigation Clearinghouse, patent litigation dropped by 8% in 2008 (2,605 cases were filed). This is not unusual, considering that patent litigation has been dropping slightly each year since the 2004-05 peak. What is remarkable however, is that when you look at the last five months of 2008 (i...

Study: Apportioned Damages Would Decrease Patent Value Between $35-85B

Posted on January 15, 2009
Yesterday a group of U.S. manufacturers released research entitled ?The Likely Adverse Effects of an Apportionment-Centric System of Patent Damages.? The research was conducted by Scott Shane, Ph.D., Professor of Economics at Case Western Reserve University in Cleveland...

Top Patent Holders: IBM Tips the 4K Mark for 2008

Posted on January 14, 2009
While the PTO has eschewed publication of "top patent holders," independent patent research companies like IFI Patent Intelligence continue to track who is filing what in the PTO. In this year's "Top U.S.-Patent Recipients" list, IFI rounds out the top 20 this way: 1 INTERNATIONAL BUSINESS MACHINES CORP 4186 2 SAMSUNG ELECTRONICS CO LTD KR 3515 3 CANON K K JP 2114 4 MICROSOFT CORP 2030 5 INTEL CORP 1776 6 MATSUSHITA ELECTRIC INDUSTRIAL CO LTD JP (1) 1745 7 TOSHIBA CORP JP 1609 8 FUJITSU LTD JP 1494 9 SONY CORP JP 1485 10 HEWLETT-PACKARD DEVELOPMENT CO L P 1424 11 HITACHI LTD JP 1313 12 MICRON TECHNOLOGY INC 1250 13 SEIKO EPSON CORP JP 1229 14 GENERAL ELECTRIC CO 912 15 FUJIFILM CORP JP 869 16 RICOH CO LTD JP 857 17 INFINEON TECHNOLOGIES AG DE 814 18 LG ELECTRONICS INC KR 805 19 TEXAS INSTRUMENTS INC 757 20 HONDA MOTOR CO LTD JP 747To see the top-35 list, click here...

CAFC Walks Away From Comiskey During En Banc Review

Posted on January 13, 2009
In Re Comiskey, 06-1286, January 13, 2009In a controversial move, the CAFC decided today to reject en banc review of Comiskey, where claims directed to "a method for mandatory arbitration resolution regarding one or more unilateral documents" were held to be non-statutory subject matter under 35 U...

JPO Considers Making Software and Business Methods Patentable by 2011

Posted on January 09, 2009
Japanese newspaper Nikkei Shimbun is reporting that the JPO will begin a study in 2009 to "drastically revise" Japanese patent law. The main points of study include:Revising the definition of "invention" that is protected subject matter Making a system for promoting innovation by terminating the "right to seek an injunction" Revising "employee invention provisions" Studying ways to resolve disputes promptly and effectively Speeding up examination and responding to applicants' needs Making the text and provisions easy to understand The study is scheduled to begin at the end of January, and is expected to last one year...

C.D. Cal.: Discovery "Settlement Privilege" Does Not Exist

Posted on January 08, 2009
Real Estate Alliance Ltd. v. National Association of Realtors et al. (2-08-cv-01657) CACD (December 23, 2008)In a patent case, the plaintiff requested that defendant "produce all documents relating to its settlement with Mr. Freedman - including the settlement agreement itself, drafts thereof, all correspondence between REAL and Mr...

House Rule Change May Cloud Transparency on Patent Reform

Posted on January 06, 2009
Back in 1994, reforms to the House rules were made to tackle the issue of "secretive" legislative processes. The reforms included opening committee meetings to the public and media, term limits for committee chairmen, "truth in budgeting", elimination of the committee proxy vote, authorization of a House audit, specific requirements for blanket rules waivers, and guarantees to the minority party to offer amendments to pieces of legislation...

IEEE Releases Patent Portfolio Scorecard

Posted on January 06, 2009
IEEE Spectrum has released its annual patent scorecard that ranks the "pipeline power" of U.S. technology patent portfolios. The survey scores a company's "pipeline power" by considering a variety of factors, including the number of patents issued to the company in a given year, the growth of its patent portfolio and the variety of the technologies a company patents (for more on the methodology, see here)...

PTO Director Jon Dudas Announces Resignation

Posted on January 06, 2009
While a copy of the memo is not currently available, reliable sources (as well as Patently-O) are reporting that Jon Dudas has announced his resignation.See the post from Patently-O here.

Coalition Challenges Digital TV Patent License Fees

Posted on January 05, 2009
Recently, an ad hoc group called the Coalition United to Terminate Financial Abuses of the Television Transition ("CUT FATT") has petitioned the FCC to require patent holders who charge "high" fees to prove that their license fees are reasonable, and have the FCC create basic rules for licensing of patents to prevent "possible price gouging...

Specification and Claim Language Helps Patent Escape "Divided Infringement" on SJ

Posted on January 05, 2009
Level 3 Communications, LLC v. Limelight Networks, Inc., E.D. Va., 2:07cv589 (December 29, 2008)Level 3 sued Limelight over a number of patents related to a Content Delivery Network (CDN). The patent described a CDN as "a system that supports delivery of information, such as video, music, games, and software, to computer users or computers on behalf ofits subscribers (typically content providers)...

When Considering PTO Reform, Look to KIPO For Clues

Posted on December 23, 2008
Earlier in the month, The US Patent Policy Advisory Committee issued its 2008 report that explored ways to tackle various quality and pendency issues affecting the PTO. The report concluded that application backlog "reached truly unacceptable levels in 2008...

More on Article One Patent Project

Posted on December 17, 2008
Earlier the 271 Blog a href="http://271patent.blogspot.com/2008/11/patent-bounties-making-another-run.html"covered/a Article One's entry into the "patent bounty" space, where the company claimed to be something akin to a "Peer-to-Patent" project that compensated participants...

CAFC Provides Further Guidance on Means-Plus-Function

Posted on December 15, 2008
Welker Bearing Co. v. PHD, Inc. 08-1169, December 15, 2008Welker appealed the district court's summary judgment of noninfringement. As part of the appeal, Welker challenged the district court's interpretation of "mechanism for" as a means-plus-function term under §112 ¶ 6...

Friday Shorts: PTO Backlog, More Bilski, Linux Defenders, 2007 Defendant Spike

Posted on December 12, 2008
Former PTO Officials Testify Before Congress: former PTO leaders sharply criticized the PTO?s failure to address the 1.2 million case backlog, one former commissioner calling the problem "horrendous" (link)Bilski Starts to Pop Up in the District Courts: in the case of Every Penny Counts, Inc...

"Untenable" Claim Construction Leads to Plaintiff Rule 11 Sanctions

Posted on December 10, 2008
Triune Star Inc. v. The Walt Disney Co., Case No. 07-1256 (C.D. Ill., November 24, 2008)Triune sued defendants over a patent relating to a ?telecommunications locating system.? Defendants moved for summary judgment of noninfringement, claiming, among other things, that prosecution history estoppel unequivocally cleared them of any infringement whatsoever...

BPAI Appeal Brief Rules Delayed, According to Last-Minute PTO Notice

Posted on December 09, 2008
A FR notice will (officially) be published tomorrow, stating that the Appeal Brief Rules will be delayed, pending further OMB review.From the Notice:On October 8, 2008, the Office published a 30-Day Federal Register Notice stating that the proposal for the collection of information under the final rule was being submitted to OMB and requesting comments on the proposed information collection be submitted to OMB...

Claim Construction Estoppel Heads to the CAFC

Posted on December 09, 2008
Shire LLC v. Sandoz, 07-CV-00197-PAB, December 5, 2008 (D. Co.)The district court issued an Order and Memorandum construing the claims in the patents at issue. In the Order, the Court declined to apply the doctrine of issue preclusion to another district court?s claim construction with respect to the same patents...

Tafas v. Dudas Oral Arguments Completed at the CAFC

Posted on December 05, 2008
Today, a panel of the Court (Rader, Bryson, Prost) heard oral argument in Tafas v. Dudas before a jam-packed courthouse. Early reports indicate that the CAFC recognized, despite PTO assertions to the contrary, that the proposed continuation rules effectively set a ?hard limit? of two continuing applications, and are potentially in conflict with the statute...

Study: Patent Pools May Discourage Innovation

Posted on December 04, 2008
Stanford University's Ryan Lampe and Petra Moser saw that regulators favor patent pools as a means to encourage innovation in industries where overlapping patents and excessive litigation cause problems. While the theory appears sound in principle, does the aggregation of patent rights actually spur innovation? Lampe and Moser decided to look at this issue in their recently published paper titled "Do Patent Pools Encourage Innovation? Evidence from the 19th-Century Sewing Machine"As you can tell from the title, Lampe and Moser had to go quite a ways back to see how innovation was affected - after all, it takes decades, if not a century, to determine the effects of patent pooling on an entire industry...

Bloggers, promote your law blog by nominating your blog for inclusion in USLaw.com's Law Blog Directory and RSS Reader. Benefits described.