Intellectual Property Law

IEEE Publishes Interesting Study on Solar Panel Patenting

Posted on December 04, 2008
IEEE reported on a a study from Semiconductor Insights analyzing U.S. patents in solar technology and trends in U.S. solar patents by company and technology. The study found that Canon, TSMC and Samsung are among the largest patent holders in solar photovoltaic panels, although they have no products in the field today...

S.D.N.Y.: Patentee Estopped From Asserting Patent After 4+ Year Delay

Posted on December 02, 2008
Aspex Eyewear, Inc. et al v. Clariti Eyewear, Inc. (1-07-cv-02373) SDNY, November 26, 2008After Clariti initiated a product release, they received a letter from Aspex on March 2003, identifying 4 patents, along with a demand, stating that the matter was "very urgent and serious...

Interesting Claim on Big-3 Patents

Posted on December 02, 2008
James E. Malackowski, president and CEO of Ocean Tomo LLC, writes an editorial in today's Detroit News:As Washington decides on aid to the ailing auto industry, top consideration should be given to the significant potential of these Big 3 technologies for stimulating economic and job growth and creating a greener and more fuel-efficient world ...

Are Inter-Partes Reexams Losing Their "Staying Power"?

Posted on November 25, 2008
ESN v. Cisco Systems, Inc., E.D. Tex., 5:08-CV-20, November 20, 2008ESN sued Cisco for patent infringment. A few months later, Cisco successfully petitioned for an inter-partes reexamination (IPR). Shortly thereafter, the PTO issues a First Office Action rejecting every claim in the patent...

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USPTO: It's OK To Start Filing Appeal Briefs Under New Format

Posted on November 24, 2008
As a reminder, the new USPTO Appeal Brief Rules will go into effect December 10, 2008. In the meantime, ambitious appellants have already filed Briefs under the new format, in anticipation of the change. Unfortunately, some of those briefs were flagged for being non-compliant...

Thursday Shorts

Posted on November 20, 2008
Federal Circuit Updates Internal Operating Procedures - After providing proposed changes to the public on Internal Operating Procedures (IOPs), the court recently voted to approve the changes. In addition to general changes to update the IOPs, the Federal Circuit also added two new sections in response to suggestions from the public...

Post-Bilski at the USPTO: Is the BPAI Looking to Create a "Software Per Se" Exception?

Posted on November 18, 2008
"The United States is a nation of laws: badly written and randomly enforced."- Frank Zappa (1940 - 1993)Ex Parte Godwin, Appeal 2008-0130, November 13, 2008This opinion issued from a Request for Rehearing that was filed before the Bilski decision, and the opinion followed after (side note: the original Notice of Appeal was filed June 6, 2006)...

USPTO Releases Fiscal Year-End Numbers

Posted on November 18, 2008
The USPTO FY2008 report is out, and, unsurprisingly, "the USPTO met and, in some cases, exceeded its patent pendency, production, and quality targets."According to the report,- Patents "maintained a high level of patent quality by achieving an allowance compliance rate of 96...

SBA Publishes Study Regarding Impact of Small Business Patenting

Posted on November 17, 2008
Anthony Breitzman and Diana Hicks have published a report for the Small Business Administration (SBA), titled "An Analysis of Small Business Patents by Industry and Firm Size." The study is the third in a series that examines small business patent activity...

Patent "Bounties" Attempting a Comeback

Posted on November 17, 2008
Borrowing from a page book of Peer-to-Patent and the long-defunct Bountyquest, the company Article One Partners, LLC has launched "a new global community to legitimize the validity of patents."Basically, the system works to recruit community members (also known as "Advisors") to search and report prior art against high profile patents...

Obama Transition Team Member Is No Fan of the U.S. Patent System

Posted on November 14, 2008
Yesterday, it was reported by Condé Nast Portfolio that President elect Barack Obama is setting up agency review teams for his transition to the White House. The teams will be responsible for reviewing all the major U.S. government departments, advise the Obama administration on policy prior to inauguration day, and keep the new administration's nominees prepped and informed as they make their way through the confirmation process in Congress...

D. Del.: "Sustainable, Reasonable" Defenses Enough to Negate Willfulness

Posted on November 14, 2008
Honeywell International Inc. v. Universal Avionics Systems Corp., No. 02-359-MPT, November 12, 2008Honeywell sued Universal over five patents dealing with aviation warning systems. After trial and appeal to the CAFC, the case was remanded. On remand, Universal filed a motion for summary judgment of no willful infringement...

Wegner: 10 Steps to Reform Inter Partes Reexamination

Posted on November 13, 2008
Currently, one of the most significant flaws of inter partes reexamination is that the PTO has failed to meet the "special dispatch" statutory mandate to conclude all reexaminations within 12-18 months from filing. Since the beginning of inter partes reexaminations, there has never been even one merits appeal to reach the Federal Circuit in an inter partes reexamination...

CAFC: "Graham Analysis" Not Always Required For Double-Patenting

Posted on November 13, 2008
In Re Basell Poliolefine Italia S.P.A., November 13, 2008, No. 2007-1450.Basell appealed two decisions of the BPAI resulting from a Director-ordered reexamination of Basell's patent. The Board affirmed the rejections of all the claims of the patent as unpatentable under 35 U...

Academic Podcast Discusses Bilski

Posted on November 12, 2008
A relatively new site called the Intellectual Property Colloquium is posting round table "NPR-like" discussions relating to IP. The most recent show, hosted by Doug Lichtman from the UCLA School of Law, discusses In Re Bilski, and includes guests John Duffy (GWU) and Rob Merges (UC Berkley)...

USPTO To Increase PCT Transmittal and Search Fees

Posted on November 12, 2008
From the PTO:The Office is adjusting the PCT transmittal and search fees to recover the estimated average cost to the Office of processing PCT international applications and preparing international search reports and written opinions for PCT international applications...

USITC Study Concludes Industrial Biotech Patents are "Facilitating and Not Stifling Innovation"

Posted on November 11, 2008
A new staff research study by the U.S. International Trade Commission's ( ITC ) Office of Industries looks at innovation with regard to industrial biotechnology in the U.S. The report, titled "Patenting Trends and Innovation in Industrial Biotechnology" uses patent data, survey results, and profiles of firms in two emerging sectors ( cellulosic ethanol and bio-based plastics ) to "paint a new picture of innovation" in industrial biotechnology...

In Re Bilski: Did Computer and Software "Machines" Get a Pass?

Posted on November 04, 2008
One certain takeaway from the Bilski opinion is that, if you expected any sort of closure whatsoever on 35 U.S.C. §101, you were sorely disappointed (see Rader dissent on that). While most practitioners have scoured Bilski to divine meaning from the opinion for computer software, it is becoming apparent that Bilski was not intended to resolve issues pertaining to computers, and especially ones considered "machines" for the purposes of section 101...

CAFC Decides Bilski, Rules In Favor Of the USPTO

Posted on October 30, 2008
Read all the opinions (9-3, 132 pages) hereHIGHLIGHTS:** Freeman-Walter-Abele "inadequate" and "should no longer be relied on"*** HOWEVER, "'useful, concrete and tangible result' inquiry is [also] inadequate." Noted the CAFC: "As a result, those portions of our opinions in State Street and AT&T relying solely on a 'useful, concrete and tangible result' analysis should no longer be relied on (emphasis added)...

Update From the 271 Patent Blog

Posted on October 28, 2008
Many readers have been wondering what happened to the blog, as I have not posted anything for the last month. The short answer is that the blog is alive and well and postings will resume shortly.So what happened? Well, the longer answer is a bit more complicated...

New Patent Reform Bill Introduced In Senate (Seriously!)

Posted on September 25, 2008
"And I beheld when he had opened the sixth seal, and, lo, there was a great earthquake; and the sun became black as sackcloth of hair, and the moon became as blood"-- Revelation 6:12As the Horsemen of the Apocalypse plod through the financial markets, Congress, suffices to say, has has a rough patch heading into the final days of the current Session of Congress...

Study Over Impacts of Erroneous Litigation Vs. Settling Published

Posted on September 24, 2008
Last month, the Journal of Empirical Legal Studies issued a press release over a study that suggested that a majority of plaintiffs making the wrong decision to go to trial ended up with a verdict that was less money than the settlement offer. You can read previous coverage by the 271 Blog on this topic here...

Happy Anti-Software Patent Day

Posted on September 24, 2008
A global coalition of more than 80 software companies, associations and developers has declared the 24th of September to be the "World Day Against Software Patents".According to Benjamin Henrion, initiator of the StopSoftwarePatents coalition effort,The aim behind StopSoftwarePatents is to gather a worldwide coalition of businesses and civil society in order to get laws which clearly exempt software from patentable subject matter...

CAFC: Improper Revival of Abandoned Application Is No Defense For Infringement

Posted on September 23, 2008
Aritocrat Technologies Australia PTY Lmtd. v. International Game Tech., September 22, 2008 (08-1016)Aristocrat accused IGT of patent infringment, where the patents-in-suit were revived in the USPTO after being abandoned for paying the national filing fee one day late...

First-To-File in the U.S., Small Entity Inventors, and Grace Periods

Posted on September 22, 2008
University of Virginia law professor Margo A. Bagley has published a draft paper titled "The Need for Speed (and Grace): Issues in a First-Inventor-to-File World" that looks at various issues and concerns over a first-to-file regime (FITF) proposed recently in the Patent Reform Act...

Wednesday Shorts: Myhrvold Stalks, EPO Strikes, Lehman Sinks

Posted on September 17, 2008
Nathan Myhrvold and Intellectual Ventures Set for Big Patent Play: over the last few years, Intellectual Ventures (IV) has amassed a whopping 20,000-plus patents and patent applications related to everything from lasers to computer chips. IV now ranks among the world's largest patent-holders -- and the company is ready to press tech giants to sign some of the costliest patent-licensing deals ever negotiated...

Most Litigious NPE's of All Time

Posted on September 16, 2008
Joff Wild over at the IAM Blog recently chatted with Dan McCurdy, chairman of PatentFreedom and CEO of Allied Security Trust, who is issuing a list of the most litigious non-practicing entities (aka "patent trolls") for the next issue of IAM Magazine...

USPTO Issues Dual Memos on 112 Rejections

Posted on September 15, 2008
Earlier in the year, the CAFC issued its opinion in Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008), where the court stated "[w]e note that the patent drafter is in tlle best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation...

EPO Publishes Helpful Presentations From September Program

Posted on September 14, 2008
The Organization for Economic Co-operation and Development and the European Patent Office recently held a conference on Sept. 3-4 in Vienna, titled "Patent Statistics for Decision Makers" that addressed issues such as patent valuation, patent strategies, business dynamics, and technology markets...

Forbes: Top Patent Revenue-Generating Universities

Posted on September 14, 2008
Continuing the recent media focus on universities and patents, Forbes has a great article on IP cash cows, and which universities are "bottling the most milk" from their patent portfolios:(1) New York University2006 Research Expenditures: $210 million2006 Research-Related Income: $157 millionYield: 75% (2) Wake Forest University2006 Research Expenditures: $146...

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