Intellectual Property Law

Why Academia Takes Profits Over Wonder

Posted on September 11, 2008
"In academia?s continuing pursuit of profit, the wonder of simple serendipitous discovery has been left on the curb."- Janet Rae-Dupree, "When Academia Puts Profit Ahead of Wonder", New York Times, September 6, 2008 (link)Over the weekend, the NYT's hand wringing editorial over the "corporatization" of university research has sparked debate in the patent community (see Patently-O, Patent Docs, Patent Hawk, IPBiz)...

Beating NPE Patent Holders At Their Own Game

Posted on September 10, 2008
Electronics Design, Strategy, News (EDN) magazine published an article yesterday, titled "If You Can't Beat Patent Trolls, Join Them," which covers the latest in the manufacturers-vs.-NPE's battles:Stuck in apparent stalemate on the legislative side, large companies have formed two new organizations?Allied Security Trust (AST) and PatentFreedom LLC?that use market forces rather than laws to ward off trolls...

PTO General Counsel Toupin Continues to Promote AQS for IPO Annual Meeting

Posted on September 09, 2008
Hal Wegner distributed an interesting presentation this morning from PTO GC James Toupin which confirms that (1) despite a potential "changing of the guard" in the coming elections, the PTO continues to push for the same reform measures, and (2) despite mounting criticism, the PTO continues to see no problems with the tactics used for instituting reform...

CAFC: Prior Art Recycling Permitted For Reexamination

Posted on September 08, 2008
In Re Swanson, September 4, 2008 (07-1534)In 1997, the CAFC decided In re Portola Packaging, holding that ?prior art previously considered by the PTO in relation to the same or broader claims" would preclude reexamination requests on the same art.In 2002 Congress amended § 303(a) to include an additional sentence, explaining that the amendment ?overturns the holding of In re Portola Packaging" and that "[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office...

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Light Reading For Labor Day: 2007 Annual US Court Report

Posted on August 29, 2008
When you're not preoccupied wiping BBQ sauce from your hands (and children's faces) this weekend, the Statistics Division for the Administrative Office of U.S. Courts released its annual report (all 416 pages) on "Judicial Business of the United States Courts...

Patent Reform Touches DNC in Denver

Posted on August 27, 2008
From the "Tech Daily Dose" for Congressional Daily:Rep. Zoe Lofgren, D-Calif., told a crowd in Denver on Tuesday that it is crucial for Congress to pass legislation to update the U.S. patent system next year -- even if the measure is a scaled back version of the broad, controversial language that was in play during the 110th Congress...

USPTO Seeks Volunteers for "Continuing Education for Practitioners" Program

Posted on August 27, 2008
From a recent USPTO news release:The USPTO is developing a Continuing Education for Practitioners (?CEP?) system for on-line delivery of educational materials to patent practitioners, and is seeking help in piloting the on-line system. The CEP system is built on the recognition that a smoothly operating patent system requires well-qualified USPTO personnel working hand-in-hand with up-to-date patent practitioners...

Pending Study Suggests Plaintiffs Should Settle, Rather Than Litigate

Posted on August 26, 2008
While it isn't patent-specific, a somewhat controversial study will be published in the Journal of Empirical Legal Studies that looked at 2,054 cases that went to trial from 2002 to 2005 to see if parties are better off settling rather than going to trial...

CAFC: "Original" Applications Include Continuations For the Purposes Of Inter Partes Reexam

Posted on August 19, 2008
Cooper Technologies Co. v. Director U.S. Patent and Trademark Office, (08-1130), August 19, 2008Pursuant to section 4608 of the American Inventors Protection Act of 1999 (AIPA), the inter partes reexamination procedure is available for "any patent that issues from an original application filed in the United States on or after" November 29, 1999Cooper challenged the propriety of an inter-partes reexamination request on a continuation patent, filed after November 29, 1999, whose parent applications were filed before that date...

Gary Odom, a.k.a. Patent Hawk, Sues Microsoft for Patent Infringement

Posted on August 19, 2008
Gary announced yesterday on his patent blog site Patent Prospector, that he has filed a complaint in the Eastern District of Texas, accusing Microsoft of infringing U.S. Patent 7,363,592, titled "Tool Group Manipulations."Download a copy of the complaint here.

CAFC Finds Infringement Under Doctrine of Equivalents, but Limits Injunctive Relief

Posted on August 19, 2008
Voda v. Cordis Corp., 07-1297, August 18, 2008After a jury trial, the district court found that Cordis infringed Voda's patent related to cardiac guide catheters. On appeal, Cordin argued, among other things, that the district court erred in finding infringement under the doctrine of equivalents (DOE)...

Are We Heading for a "Subprime Patent Crisis"?

Posted on August 18, 2008
Alberto Barrionuevo, president of the anti-software-patent Foundation for a Free Information Infrastructure (FFII), seems to think so:In many countries, many regulations (financial controls) were removed and so the market was finally flooded by what any common person would denominate "fake money"...

BMC/Muniauction Decisions Sink Global Patent Holdings Joint Infringement Claim

Posted on August 15, 2008
Global Patent Holdings, LLC v. Panthers BRHC LLC, No. 9:08-cv-80013-KAM, August 12, 2008Global Patent Holdings (GPH) sued Panthers for infringing U.S. Patent Number 5,253,341, known as the ?Remote Query Communication System? patent (also known as the "JPEG patent")...

PTO Limits Scope of Patent Agent Representation

Posted on August 14, 2008
Today's Federal Register issued final rulemaking, effective September 15, 2008, that proscribes a patent agent from giving an opinion on infringement or validity, except for situations where an opinion of validity is "reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent...

BPAI Precedential Opinion: Examiners Must Provide "Reasoned, Fact-Based" Evidence For Prior Art Rejections

Posted on August 14, 2008
Ex Parte Whalen II, Appeal 2007-4423, July 23, 2008Whalen's application claimed a composition for embolizing an aneurism, which the Examiner rejected for anticipation, and obviousness.The primary issue in the rejections centered around a claim element reciting embolic compositions having a viscosity of at least 150cSt (centiStokes) at 40 degrees C...

Patent Reform Crawling Back In 2008? Lemley Proposal For Damages May Provide Answers

Posted on August 13, 2008
Friday's CongressDaily reported that Senate Minority Whip Kyl and his staff are in the process of drafting patent reform legislation, and they are expected to unveil their proposal in September. According to sources, the draft "is said to be much different from the version introduced by Senate Judiciary Chairman Patrick Leahy and Sen...

BPAI Appointments: Fixed

Posted on August 12, 2008
Statement by the Press SecretaryWASHINGTON--(BUSINESS WIRE)--On Tuesday, August 12, 2008, the President signed into law:S. 3295, which provides for the appointment of administrative patent judges and administrative trademark judges in the U.S. Patent and Trademark Office...

W.D. Wis.: All Instances of Materiality Should Be Argued for Inequitable Conduct

Posted on August 12, 2008
Silicon Graphics v. ATI Technologies, Inc., W.D. Wis., 06-cv-611-bbc (August 1, 2008)Silicon Graphics (SG) sued ATI for infringement of 3 patents. ATI counterclaimed that the patents were invalid and unenforceable. In pretrial rulings, Judge Crabb found no basis for infringement on 2 of the patents, and SG conceded at the final pretrial conference that the remaining patent was not infringed and agreed to dismiss the claims with prejudice...

USPTO Clarification: Continuation Rules Not Retroactive, Despite Appeal

Posted on August 07, 2008
The USPTO issued a clarification today, stating that practitioners should not try to overcompensate by taking "preparatory actions" for portfolios in light of the continuation rule appeal. Worry not: if the injunction is overturned at the CAFC (shudder), the PTO will not retroactively apply the rules:[T]he changes in 37 CFR 1...

Bill Fixing BPAI Appointments Ready For Bush's Signature

Posted on August 07, 2008
On August 5, S.3295 was cleared from the Senate and presented to the President for signature. The Senate bill was referred from the House Committee on the Judiciary as H.R.6362.The bill addresses the questioned consitutionality of the appointment of about 50 administrative patent and trademark appeals judges by amending title 35 section 6:(c) Authority of the Secretary- The Secretary of Commerce may, in his or her discretion, deem the appointment of an administrative patent judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative patent judge...

USPTO: Say Goodbye To Facsimile Submissions

Posted on August 06, 2008
The PTO is proposing to revise the rules of practice to limit the types of correspondence that may be submitted to the Office by facsimile. From the latest Federal Register:[T]he Office believes that given: (1) The costs and quality concerns regarding facsimile transmitted correspondence; and (2) the newly upgraded EFS?Web electronic filing system, which offers the same benefit of quick submission to the particular area of the Office that needs to act on the correspondence, it is now appropriate to terminate the use of facsimile transmissions as a method for filing most correspondence intended to become part of the file record of a patent application, patent or reexamination proceeding...

The Advantages of Inter Partes Reexamination

Posted on August 06, 2008
Conventional wisdom used to be that a recommendation to an accused infringer to seek inter partes reexamination bordered on legal malpractice. While inter partes reexamination requests are relatively rare, their popularity is increasing. A primary reason for the increased popularity is the advantages that inter partes reexamination requests provide: (1) no presumption of validity, (2) broadest reasonable claim construction, (3) no discovery into the accused product, (3) direct involvement with technically trained decision makers at the PTO, and (4) advantageous treatment for stays oif litigation...

CAFC: Nonregulated Equipment Exempt From Hatch-Waxman "Safe Harbor"

Posted on August 05, 2008
Proveris Scientific Corp. v. Innovasystems Inc., (07-1428), August 5, 2008Innova makes and sells a device known as the Optical Spray Analyzer ("OSA"), which measures the physical parameters of aerosol sprays used in nasal spray drug delivery devices. While the sprays are subject to FDA approval, the OSA is not...

WIPO Releases 2008 Worldwide Patent Report

Posted on August 04, 2008
The World Intellectual Property Organization (WIPO) has released "The World Patent Report: A Statistical Review," which is an annual publication, and the 2008 edition is the third edition in the series. The reports are part of a continuing effort at WIPO to "improve statistical information on patent activity covering as many countries as possible across the world and to develop and provide new indicators that are relevant to current policy issues...

Consumer Groups File CAFC Amicus Brief in Support of USPTO Rule Changes

Posted on July 29, 2008
A coalition of consumer advocacy and public interest groups recently filed an amicus brief at the CAFC, arguing that the PTO's "continuation rule changes" would curtail abusive behavior by patent applicants and improve patent quality.The brief continues the same themes raised in earlier amicus briefs at the district court, that endless continuations harm the public good and hinder innovation...

Peterlin Resigns from USPTO

Posted on July 29, 2008
From a USPTO press release:Margaret J.A. Peterlin, deputy under secretary of Commerce for IntellectualProperty and deputy director of the United States Patent and Trademark Office(USPTO), has announced that she will be leaving the USPTO in August with plansto pursue employment opportunities in the private sector...

Judge Plager: Regrets "Unintended Consequences" of State Street

Posted on July 29, 2008
Recently, CAFC Senior Judge Jay Plager spoke at a symposium at George Mason University, where he called for a "rethinking" of several aspects of patent law by returning to its origins in property law.According to BNA,[Plager] called for a renewed focus on setting recognizable patent ownership boundaries and on strengthening the notice function that patents are intended to serve...

Wednesday Shorts

Posted on July 23, 2008
USPTO Issues Warning on Patent Drafting Outsourcing: The PTO issued a "reminder" in today's Federal Register that foreign patent prosecution remains subject to 15 CFR 730-744, and that technology exports must be pre-approved approval by the Bureau of Industry and Security (BIS) at the Department of Commerce...

Patentee's Litigation Deemed "A Collosal Waste of Time"; Sanctions Granted

Posted on July 22, 2008
Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., S.D.N.Y. (98 Civ. 7766), July 17, 2008Adbanced Magnetic Closures (AMC) sued Rome Fastener ("Romag") in 1998 for infringing a patent on a magnetic snap fasteners commonly used in the fashion industry to secure the flaps on ladies? handbags...

USPTO Files CAFC Appeal Brief: Tafas v. Dudas

Posted on July 22, 2008
As expected, the USPTO continues its appeal after the district court ruled that the PTO lacked authority to limit the number of claims and continuations that applicants could file. OnJuly 18th, the PTO submitted a brief to the CAFC that presented the following 3 issues:1...

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