Intellectual Property Law

Singapore "Image Linking" Patent Causing Waves In The Web Community

Posted on May 27, 2008
Over the weekend, the IT blogosphere exploded (along with my inbox) over news of Singapore-based Vuestar Technologies' claim that they hold "significant Technology Patents focusing on Internet searching via visual images, identity security and copyright assets...

Another Critical Study on Inter Partes Reexamination

Posted on May 21, 2008
Heralded as an "alternative to litigation," recent research strongly suggests that Inter Partes Reexamination has become "an augmentation of litigation strategy rather than an alternative" (more than half (52%) of patents in inter partes re-exams are known to be in litigation during that time)...

Protective Orders and Reexamination Requests (W.D. Wis.)

Posted on May 20, 2008
In an interesting order from Silicon Graphics v. ATI Technologies, Inc., No. 06-cv-611-bbc (W.D. Wis., April 22, 2008), a situation arose where the defendants and the plaintiff expressly agreed to a protective order to limit the use of confidential information related to the patents-in-suit...

Weekend Shorts - CAFC Statistics, China, Patent Reform, and New IAM Publications

Posted on May 18, 2008
State of the Federal Circuit: On May 15, 2008,Chief Judge Michel addressed the Federal Circuit Judicial Conference and gave a "State of the Court" speech on the CAFC. The transcript, along with some statistical charts, may be downloaded here (link). Some of the interesting factoids include:? Despite over 100 Petitions for Rehearing En Banc each year (slide), the CAFC grants approximately zero to one each year...

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CAFC: Lack of Diligence Does Not Convert PTO Error Into An Applicant Error

Posted on May 14, 2008
E.I. DuPont v. MacDermid Printing Solutions (2007-1568), May 14, 2008When DuPont asserted its patent and sought a preliminary injunction, MacDermid countered that the patent was invalid for public use prior to the 102(b) critical date. While DuPont initially conceded the critical date, a closer examination discovered that the patent stemmed from a provisional application that was listed in the application, but priority was not properly claimed due to a PTO oversight...

Congress Requests Answers From The USPTO; Rough Times Ahead?

Posted on May 13, 2008
"The ancient Romans had a tradition: whenever on of their engineers constructed an arch, as the capstone was hoisted into place, the engineer assumed accountability for his work in the most profound way possible: he stood under the arch."-- Michael ArmstrongOn April 29, Howard Berman, Chairman, Subcommittee on Courts, the Internet, and Intellectual Property shot off a letter to USPTO Director Jon Dudas, asking some rather pointed questions on USPTO management and practice...

Updates on Congressional IP/Legal Legislation

Posted on May 12, 2008
House Passes H.R. 4279 - Last Thursday, the House passed H.R. 4279, titled "Prioritizing Resources and Organization for Intellectual Property Act of 2008" (PRO-IP). While patent reform continues to stumble, copyright protection is getting stronger than ever...

Friday Shorts: Bilski, Troll Tracker, Patent Reform

Posted on May 09, 2008
Bilski Oral Arguments Aweigh! Yesterday, the CAFC heard oral arguments for In re Bilski, No. 2007-1130 to consider what, and what is not, patentable subject matter. To listen to an MP3 of the oral arguments, click here.Eyewitness accounts are rolling in - over at the PLI Blog, Gene Quinn has a good play-by-play of the oral arguments (link)...

D.C. District Court Unleashes On Patent Holding Company

Posted on May 08, 2008
In Re Pabst Licensing GMBH & Co. KG Litigation, District Court For the District of Columbia, May 6, 2008, Misc. Action No. 07-493 (RMC)A spat broke out between the parties during discovery that resulted in an order levying multiple sanctions against the patent holder, Pabst...

Thomson Reuters Publishes New Study on Patents and Innovation

Posted on May 07, 2008
Thomson Reuters recently published two issues of World IPToday, analyzing global patent activity and technology innovations for2007. The first report, "World IP Today: A Thomson Reuters Report On Global Patent Activity in2007" highlights patent output from the G8 countries (Canada, France, Germany,Italy, Japan, Russia, the United Kingdom and the United States) plus Chinaand South Korea...

CAFC: Unasserted/Cancelled Claims are "Probative Evidence" of Embodiments Covered

Posted on May 06, 2008
PSN Illinois, LLC v. Ivoclar Vivadent, Inc. (2007-1512)After reexamination, PSN was left with a single claim in a patent covering a method of fabricating porcelain veneers for teeth. The method recited the step of eroding away a "statute" of a tooth from a porcelain veneer restoration "leaving said restoration ready for mounting on said tooth...

USPTO / EPO / JPO Progress on "Common Application Format" For Expedited Examination

Posted on May 05, 2008
The USPTO, EPO and JPO have been meeting for a while to establish an application format for expediated examination among the offices. Recently, the offices signed a "memorandum of understanding" that allowed a framework for applicants to prepare a single application in a common application format for acceptance in each of the three offices...

New Precedential KSR Decision From the BPAI

Posted on May 05, 2008
Ex Parte Fu (Appeal 2008-0601), March 31, 2008In a somewhat unremarkable, yet meaningful decision, the BPAI upheld a 103 rejection on an application related to an electrostatographic imaging member having a charge transport layer containing a specified surfactant that reduces crystallization of the charge transport layer material...

NYT: Patent Reform "Boon To Lobbyists", Dudas Claims Applications Are Getting "Worse and Worse"

Posted on April 29, 2008
In a new article, the New York Times discusses some divergent perspectives on the patent reform act, noting that over the last 15 months, In 15 months, the Coalition for Patent Fairness and the Coalition for 21st Century Patent Reform collectively spent $4...

CAFC Scolds PTO On Taking 3 Years To Deal With Appeal

Posted on April 29, 2008
In Re Reuning (2007-1535), April 25, 2008 (nonprecedential)The applicants filed an application in 2001 under a petition to make special in order to accelerate examination. Two years later, the BPAI issued a first decision reversing the rejections on 2 claims, but sustaining the rejection to the other 64 claims, noting that "the appellants have not presented any patentability arguments for these claims...

New Study On Claim Construction Reversal Rates

Posted on April 29, 2008
"Learn from the mistakes of others - you can never live long enough to make them all yourself"- John Luther With all the talk of claim construction and CAFC reversal rates, Professor David Schwartz from the John Marshall Law School set out to see if there was any empirical data that could signal a possible solution to the courts and the claim construction conundrum (the "Safire-esque" sound to this phrase is purely coincidental)...

N.D. Ill. Stays Global Patent Holdings Infringement Claim

Posted on April 28, 2008
Global Patent Holdings LLC v. Green Bay Packers (00-C-4623), April 23, 2008Back in July of 2000, Global Patent Holdings (GPH) (formerly Techsearch LLC) filed suit against numerous defendants alleging infringement of U.S. patent No. 5,253,341, which claimed an improved method and apparatus for downloading compressed audio and visual data as well as other graphical information from a remote server to an end user station for the purpose of decompressing and displaying the data...

Appeals Court Throws Out FTC Ruling Against Rambus

Posted on April 22, 2008
Earlier, the Federal Trade Commission determined that Rambus, while participating in a standard-setting process on DRAM memory, deceptively failed to disclose to the standard setting organization (JEDEC) the patent interests it held in four technologies that were standardized...

Any Idea What This May Be?

Posted on April 22, 2008
I just noticed this from the OMB:AGENCY: DOC-PTO RIN: 0651-AC19 TITLE: Changes to Implement Electronic Patent Publication STAGE: Proposed Rule ECONOMICALLY SIGNIFICANT: No RECEIVED DATE: 03/06/2008 LEGAL DEADLINE: None I originally thought I was out of the loop on this one, and then I couldn't find any notices from the PTO, and no chatter from the blogosphere...

CAFC Reverses Key Parts of Judgment in Finisar v. DirecTV

Posted on April 21, 2008
Finisar Corp. v. The DirecTV Group (2007-1023) April 18, 2008 (link)By a jury verdict, the E.D Texas found that DirecTV willfully infringed Finisar's U.S. Patent No. 5,404,505 (the ?505 patent), and the jury awarded $78.9 million in reasonable royalty damages, and $25 million in enhanced damages...

Patent Reform on Wobbly Legs in Senate

Posted on April 20, 2008
On Friday, the Wall Street Journal ran an article claiming that S. 1145 has hit an "impasse" at the Senate, and quoted Pennsylvania's Sen. Arlen Specter as saying "I think we need more time to get it right." More telling however, was a quote from Senate Judiciary Chairman Patrick Leahy, who spoke of the bill in past tense, saying that the bill "was a missed opportunity," adding that the dispute over S...

More on Patent Revenue and Distribution

Posted on April 20, 2008
Last week, Peter Detkin, founder and Vice-Chairman of Intellectual Ventures (IV) was quoted as saying that small inventors only received the "crumbs" when it came to patent licensing revenue. Apparently, this statistic was generated by IV, but has been picked up from the likes of Acacia Research, which claims in this presentation from March 2008 that only 1% of patent revenue and distribution is received by small companies, individual inventors, universities and research labs...

Interesting Statistic Cited By Peter Detkin

Posted on April 15, 2008
The Embedded Systems Conference is taking place today and tomorrow at the Fairmont Hotel in downtown San Jose, California. Today's IP Symposium included Peter Detkin, founder and Vice-Chairman of Intellectual Ventures, as a keynote speaker. EDA DesignLine reported on the symposium and attributed the following to Detkin (link):He [Detkin] said that the mission of the patent system is to encourage and reward inventions and disclosures...

New Pre-First Action Pilot Program Announced at the USPTO

Posted on April 14, 2008
From the PTO:The United States Patent and Trademark Office (USPTO) is initiating a pilot program in which, in certain art areas, applicants who comply with the requirements set forth in this notice will receive the results of a prior art search conducted by the examiner, via a condensed Pre-Interview Communication, and then be permitted to conduct an interview with the examiner to discuss the cited prior art references, before the examiner issues an Office action on the merits that sets forth the rejections...

CAFC: Patentee Has Burden To Establish Priority of CIP

Posted on April 14, 2008
PowerOasis Inc. v. T-Mobile USA, Inc., (2007-1265), April 11, 2008 (link)A CIP patent asserted by PowerOasis was challenged in the district court over prior art that became available before the CIP, but after the filing date of the parent patent. After finding that the parent application did not provide support for the subject matter claimed in the CIP (i...

Update on Precedential Opinions from the BPAI

Posted on April 10, 2008
Since the beginning of the year, the PTO has released two new precedential decisions:Ex Parte Letts, Appeal 2007-1392, January 31, 2008 (link)Instead of separately arguing each claim under a subheading as required by 37 C.F.R. § 41.37(c)(1)(vii), the Appellant in this case generally argued features without making specific references to the claims...

Cracks Forming in the Passage of Patent Reform Act

Posted on April 09, 2008
Today the Congressional Quarterly (CQ) is reporting that Senator Arlen Specter (R-PA) is pulling his support for S.1145, stating that he "cannot join" his colleagues "on some parts of the bill, citing apportionment of damages as a "principle sticking point...

Who at the USPTO Will Fix Inter Partes Reexaminations?

Posted on April 09, 2008
The American Inventors Protection Act, signed into law on November 29, 1999, made a number of landmark patent reforms, including the establishment of an inter partes reexamination procedure.Initially shunned by 3rd parties, inter partes reexamination practice has grown considerably in the last few years: in 2003, only 23 requests were filed in the USPTO; in 2007, 126 requests were filed (see PTO statistics here)...

AIPLA Releases Latest Model Patent Jury Instructions

Posted on April 08, 2008
In light of changes to patent law since the last revision (2005), the AIPLA recently published its Model Patent Jury Instructions. The current revision includes case law throughDecember 31, 2007.Download a PDF copy here (link)Download Word copy here (link)Hat Tip: I/P Updates

Reports Are In on Ocean Tomo's Record-Breaking Patent Auction

Posted on April 07, 2008
Ocean Tomo recently announced that the Spring 2008 Live Intellectual Property Auction, held on April 2nd at The Ritz-Carlton San Francisco, had cumulative sales totaling $19,629,500, with an average sale price per lot of $370,368. From Ocean Tomo's press release:In a historic moment, Lot 25, a notable IP portfolio owned by the subsidiary of a world-renowned multi-national corporation, sold for $6,600,000, setting a new world record for the highest selling price for a patent lot at a multi-lot live IP auction...

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