Intellectual Property Law

Trouble Ahead for the USPTO's Appeal Brief Rules?

Posted on July 21, 2008
If anyone thought that the manner in which the USPTO Appeal Brief Rules were implemented was, well, a bit "askew", there appears to be evidence that your instincts were correct. Last Friday, David Boundy circulated a Federal Register Notice that apparently was not publicized on any of the PTO's list of Federal Register Notices...

"Blockbuster" Academic Studies on KSR, Obviousness

Posted on July 21, 2008
Professor Joseph Scott Miller of the Lewis & Clark Law School ( and author of the Fire of Genius Blog) has put together a special issue of the law journal that focuses upon the many aspects of the KSR Supreme Court obviousness ruling. Thus publications include:? Gregory N...

Rethinking the Role of the ITC In Patent Cases

Posted on July 16, 2008
When Section 337 of the 1930 Trade Act was enacted, its original purpose was to protect US businesses against unfair foreign competition. Coupled with government subsidies, tariffs and seizures, US businesses were provided with potentially potent weapons for stifling foreign encroachment on US business interests...

USPTO Patent Quality - It's Not As Bad As You Think

Posted on July 15, 2008
Over the past five years, there has been an obsession within the patent community to find ways to increase "patent quality." No matter how you define it, most people agree that there have been periods where the PTO appeared dodgy in its role as a gatekeeper for "high quality patents...

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CAFC: Web-Based Implementation Deemed Obvious; Joint Infringement Nixed

Posted on July 14, 2008
Muniauction, Inc. v. Thomson Corp., July 14, 2008 (2007-1485)After a jury trial, the district court ruled that Thomson wilfully infringed Muniauction's patent related to conducting original issuer auctions of financial instruments. The district court awarded enhanced damages, and entered a permanent injunction against Thomson...

Are Royalties Too High in High-Tech? Recent Study Says "No"

Posted on July 10, 2008
Over the past few years, a lot of attention has been paid to the level of royalties that are charged by holders of IP rights, especially when patents are essential to an industry standard. The FTC and the DoJ have been especially active trying to control IP costs among various standardized industries...

C.D. Cal.: Patentee Must Make Affirmative Act For DJ Jurisdiction

Posted on July 09, 2008
Panavise Products, Inc. v. National Products, Inc., CV 08-1300 ABC (May 30, 2008)Panavise was releasing a product that they feared could infringe National Products (NP) patent. Viewing the litigation history of the patent, Panavise saw that they had sued other unrelated parties in the past (6 suits involving 12 entities), and made public statements declaring that the patent was "essential" to the technological area...

BPAI Weighs In Again On Computer-Implemented Inventions and Section 101

Posted on July 08, 2008
Ex Parte Wasynczuk, No. 2008-1496, June 2, 2008 (Informative Opinion)In a rather interesting appeal, the PTO applicant appealed a section 101 rejection on two sets of claims, where a system claim (claim 1) recited a "computer-implemented system" and a method claim (claim 9) recited a "computer-implemented method for simulating operation of a physical system...

USPTO: Reexaminations May Not Be "Specially Expedited"

Posted on July 07, 2008
Reexamination Control No. 95/008,972: After a Reexamination Request was granted on US Patent 5,253,341, the patentee filed a petition to suspend the rules under 37 C.F.R. 1.183 so that the reexamination proceedings would be handled on a "specially expedited basis" in light of concurrent litigation, and in light of the fact that an earlier reexamination on the same patent took seven years...

Congress Prepares Fix for BPAI Appointments

Posted on July 07, 2008
Recently, House IP subcommittee chairman Howard Berman introduced H.R. 6362, which would amend title 35 to "provide that the Secretary of Commerce, in consultation with the Director of the United States Patent and Trademark Office, shall appoint administrative patent judges and administrative trademark judges, and for other purposes...

A Different Kind of Battle At the USPTO Over 35 U.S.C. 101

Posted on June 27, 2008
Back in 2005 (just prior to today's "great patentable subject matter debate"), a certain buzz was created when Andrew Knight began promoting the idea of "storyline patents" and followed up by filing applications (e.g., 10/722,463) in pursuit of his goal of establishing a new form of intellectual property...

Disclaimer From Familial Patent Nullifies Infringement

Posted on June 25, 2008
Heuft Systemtechnik GMBH v. Industrial Dynamics Co. (07-1417) June 25, 2008 (noprecedential)Industrial Dynamics Co. (IDC) appealed a district court claim construction which led to a finding of infringment. The patent-in-suit was a divisional application directed to a "method and apparatus for inspecting rotating container," having a thin prosecution history...

Company Files Defamation Action Against Patent Holding Company

Posted on June 23, 2008
Cognex Corporation v. VCode Holdings, Inc. (a.k.a. Acacia), No. 06-cv-01040, (D. Minn.)Cognex has established a reputation for aggressively defending itself against patent infringement from holding companies. Back in 2005, the company successfully defended itself against Lemelson and invalidated 14 patents asserted in the action...

CAFC: Misrepresentation Does NOT Have to Bear on Patentability For Inequitable Conduct

Posted on June 20, 2008
Scanner Tech. Corp. v. ICOS Vision Systems Corp. N.V. , (2008-1081), June 19, 2008During prosecution, Scanner became convinced that a new product launched by ICOS was infringing on the claims of a patent application. Accordingly, Scanner filed a Petition To Make Special, pursuant to MPEP 708...

Thursday Shorts: Asia Patent White Papers, EPO Pendency Continues To Grow

Posted on June 19, 2008
Chinese Patent Statistics - research and analytics company Evaluserve released a white paper titled "Patenting Landscape in China - History, Growth and Utility Model", which discusses various statistics on Chinese patent practice, as well as strategies utilized by patent filers:Some Chinese companies have adopted a strategy that involves filing 10-year patent applications and 20-year patent applications for the same invention on the same day, thereby ensuring the same priority date with the SIPO...

USPTO: PCT Fees Going Up

Posted on June 18, 2008
From the latest Federal Register:Title 37 of the Code of Federal Regulations, part 1, is proposed to be amended as follows:Section 1.445: Section 1.445(a)(1) is proposed to be amended to change the transmittal fee from $300.00 to $415.00. Section 1.445(a)(2) is proposed to be amended to change the search fee from $1,800...

Obama On the USPTO: Reading from the CPF Playbook?

Posted on June 17, 2008
Excerpt from interview with Senator Obama from the WSJ:As I mentioned during the speech, there may be programs that no longer work. There's certainly all kinds of previsions [sic] in our tax code that are antiquated and are not spurring economic growth...

Study: 53% of Pharma Patents Approach Expiration Before Litigation Strategies are Implemented

Posted on June 17, 2008
A new study developed by market intelligence firm Cutting Edge Information reveals that the majority of pharmaceutical companies are waiting until their patents on drugs are nearly run out before they start to work on patent litigation strategies.According to the study:? 66% do not begin counter-generics planning until at least two years after product launch...

Danforth: FTC Patent Reform Is Needed

Posted on June 16, 2008
Last month, John Danforth, former general counsel of Rambus and legal adviser published an article in the Legal Times that was highly critical of the FTC's "much ballyhooed but misguided antitrust case against Rambus Inc." that was recently overturned by the DC Circuit (see earlier 271 coverage here)...

Dudas Issues Letter to Congress In Response to Berman's Questions

Posted on June 12, 2008
On April 29, Howard Berman, Chairman, Subcommittee on Courts, the Internet, and Intellectual Property sent a letter to USPTO Director Jon Dudas, asking very direct questions on USPTO management and practice (see earlier 271 coverage here).Dudas has now responded, and his response and supporting documentation have been posted on Greg Aharonian's website (link - ...

Wednesday Shorts: Patent Tools, Enforcement Company Updates, and More

Posted on June 11, 2008
More Patent Tools (Part 1): Rolf Claessen, who is a partner at the German firm von Kreisler Selting Werner, and proprietor of the wonderful IPNewsflash website, has added a patent PDF download tool covering numerous countries. To try it out, click here...

USPTO Issues Controversial New Rules For Patent Appeals

Posted on June 10, 2008
"Smithers had thwarted my earlier attempt to take candy from a baby, but with him out of the picture, I was free to wallow in my own crapulence."- Mr. Burns, episode #2F20, "Who Shot Mr. Burns? (Part 2)"Like it or not, they're here - the new BPAI procedures for ex parte appeals...

Supreme Court Reverses CAFC in Quanta: Method Patents Exhaustible

Posted on June 09, 2008
Quanta Computer, Inc. v. LG Electronics, Inc., No. 06-937, June 9, 2008.LGE holds a number of patents related to computer technology. LGE licensed the patents to Intel, authorizing them to manufacture and sell microprocessors and chipsets using the LGE Patents...

CAFC: Extrinsic Evidence OK When Patentee Chooses Inconsistent Claim Language

Posted on June 05, 2008
Helmsderfer v. Bobrick Washroom Equipment, Inc. (2008-1027), June 4, 2008The patentee appealed the claim construction for the term "partially hidden from view" on a patent related to baby diaper changing stations. The district court construed the term to mean "hidden from view to some extent but not totally hidden from view...

(Another) Challenge to the Constitutionality of BPAI Appointments

Posted on June 04, 2008
Aldor Solutions Corp. v. Dudas, (1:08cv897), U.S. District Court for the District of ColumbiaPlaintiffs are the co-owners of patent application Serial No. 09/694,095, ("the '095 application") titled "On-line System For Memorial, Legacy, Funeral and Remembrance Arrangements, Services and Transactions...

Patent Enforcement Companies Keep Trying to Skirt eBay v. MercExchange

Posted on June 04, 2008
Say what you will about patent enforcement companies (i.e., "patent trolls", "non-practicing entities", etc.), but they certainly aren't short on creative ideas when it comes to getting new angles on patent litigation strategy. Since the Supreme Court's decision in eBay v...

USPTO Looks to Revise Fees for FY 2008

Posted on June 03, 2008
SUMMARY: The United States Patent and Trademark Office (Office) is proposing to adjust certain patent fee amounts for fiscal year 2009 to reflect fluctuations in the Consumer Price Index (CPI). The patent statute provides for the annual CPI adjustment of patent fees set by statute to recover the higher costs associated with doing business...

FTC Looking to Break Down "Patent Walls" For Standardized Technologies

Posted on June 03, 2008
Federal Trade Commission (FTC) Commissioner J. Thomas Rosch presented a speech before the Newport Summit on Antitrust and Economics on May 31, where he discussed the effect of "patent trolls", standardized technologies, and potentially anticompetitive "patent walls", where[A] firm independently develops and manufactures a product that competes in what constitutes a relevant market for antitrust purposes, and then files multiple patent applications covering certain features of the product and the patents issue...

CAFC: DJ Plaintiff Must Take "Significat, Concrete Steps To Conduct Infringing Activity" To Satisfy MedImmune Test

Posted on May 29, 2008
Cat Tech LLC v. TubeMaster, Inc. (2007-1443), May 28, 2008TubeMaster developed a method of putting catalyst into reactor tubes using loading devices. Tube Master designed four different configurations for its devices, and has generated detailed computer drawings drawings for each of its configurations...

CAFC: Notice Must Be Provided For JMOL When Factual Disputes Exist

Posted on May 28, 2008
Southwestern Bell Telephone Co. v. Arthus A. Collins, Inc. (2007-1577), May 27, 2008 (nonprecedential)After a pretrial hearing, both parties briefed the district court on issues of prosecution history estoppel. The next day, in a telephone conference, the district court granted Southwestern Bell's motion in limine on prosecution history estoppel and also granted JMOL that one of the claim limitations ("randomly receive") was not literally present in the accused device...

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