April 2004

Shredded Patent Documents

Articles and Publications, Patent

From Leland Meitzler at the Genealogy Blog:

The U.S. Patent and Trademark Office has begun shredding about 35 million patent documents — some dating back to the agency’s creation on July 30, 1790 — as it moves toward full electronic processing.
…
But Brigid Quinn, spokeswoman for USPTO, countered: “Nothing valuable is being disposed of. There is nothing original. These are paper copies of copies of copies. Nothing is historical or archaeological, and we’ve been doing this for years.”
…
As for what happens to historical patents, Ms. Quinn said, “The original patent goes to the patent holder, and original copies are kept in our warehouse for 10 years. Then they go to the Federal Records Center, where they are kept for 40 years. They are then examined by the National Archives,” which decides if they should be preserved or destroyed.

GTE Mobilnet v. Cellexis

Patent, Patent Cases 2004

GTE Mobilnet v. Cellexis International (D. Mass, April 20, 2004)

In a 1996 settlement agreement, plaintiff had agreed not to sue GTE or its subsidiaries, joint ventures or affiliates over disputed patent rights. In March 2000, plaintiff sued Bell Atlantic Mobile for infringement. At the time of the suit, Bell Atlantic Mobile was not an affiliate of GTE. However, four months later, through a series of transactions and transformations, Bell Atlantic Mobile became “Cellco” and an affiliate of GTE. After a trial, the Jury decided that Bell Atlantic Mobile (now Cellco) was an affiliate under the settlement agreement. Thus, the plaintiffs case was dismissed.

Commentary: This case simply involved contract interpretation. Drafting the settlement agreement with more clarity up-front could have avoided this litigation and its associated costs.

Patent Piracy

Articles and Publications, Patent

Jon Dudas recently testified about IP piracy. Here is an exerpt from his prepared speech:

During a House International Relations Committee hearing in 2003, the Secretary General of Interpol identified a disturbing potential trend when he testified that IP crime “is becoming the preferred method of funding for a number of terrorist groups.” A customs expert with the European Commission recently stated that al-Qaeda and Hezbollah are among organizations believed to be using counterfeit goods to launder money and fund their activities. Mr. James Moody, former chief of the Federal Bureau of Investigation’s Organized Crime/Drug Operations Division, has stated that counterfeiting is likely to become “the crime of the 21st Century.”

Dudas reports that the IP crime and enforcement have become a top priority at the department of commerce. The people at GNU have their own philosophy on piracy:

Publishers often refer to prohibited copying as “piracy.” In this way, they imply that illegal copying is ethically equivalent to attacking ships on the high seas, kidnaping and murdering the people on them. If you don’t believe that illegal copying is just like kidnaping and murder, you might prefer not to use the word “piracy” to describe it. Neutral terms such as “prohibited copying” or “unauthorized copying” are available for use instead. Some of us might even prefer to use a positive term such as “sharing information with your neighbor.”

Many patent attorneys probably believed that, in their practice, they could avoid the moral dilemmas faced by criminal defense attorneys. As patent infringement becomes demonized as a crime, those dilemmas may become more frequent. Read the book.

MIT Technology Scorecard

Articles and Publications, Patent

MIT has released its 2004 “Technology Scorecard” (Excel) ranking U.S. patent portfolios of 150 technology companies in eight sectors. Ranks are based on the number of patents, patent citations, scientific paper citations, and technology cycle time. Pfizer and Delphi topped their respective sectors.

Adam Jaffe has done quite a bit of work in this area and has promoted the use of patent citation data as a proxy for patent quality and knowledge transfer.

Triple Protection Schemes

Articles and Publications, Patent

Intellectual property traditionally takes the form of either patent, copyright, trademark, or trade-secret protection. Often, a business may protect a single technology with multiple IP types. For example, a new electronic gadget may have patents on its core technology and implementations, copyrights on particular computer code used in the gadget, trademarks on the look and feel of the gadget, trade-secrets on the manufacturing process and other implementation particulars that may not be patentable, and integrated circuit topography protection for the IC layout.

Karl Lenz introduced some of these ideas in his arguments that patents on software should be banned. However, this protection overlay is a reality that inventors and businesses can use to their advantage.

Fieldturf v. Triexe Management Group

Patent, Patent Cases 2004

Fieldturf Int’l., Inc. v. Triexe Mgmt. Grp., Inc. (N.D. Ill. 2004)

An interesting case is brewing in the Northern District of Illinois between Fieldturf International and Triexe Management Group (Sportexe) over synthetic turf technology. (e.g., U.S. Patent 6,338,885). Fieldturf alleges that Triexe infringed its patents, intentionally interfered with its prospective economic advantage and committed common law conversion by selling or offering to sell synthetic turf to the U Wisc, UC Berkeley, the Baltimore Ravens, and a fourth project in Ireland. Triexe has denied the material allegations and has asserted counterclaims.

Prior litigation between the parties has involved domain name disputes stemming from Triexe’s registration of the domain name fieldturf.net. In his decision, the ICANN arbitrator found that Triexe’s registration was confusing and done in bad faith. In addition, Fieldturf recently lost an appeal in another patent infringement case for lack of standing. (Stephen Nipper).

Citation of Unpublished Opinions

Patent, Patent Legislation

Litigants in appellate courts may soon be citing unpublished opinions if the Federal Rules of Appellate Procedure are amended to conform to a recent advisory committee recommendation. (article). Federal Circuit Chief Judge Robert Mayer has a problem with citing unpublished opinions because they are generally “not written with the extra care and concern for language” evident in published opinions. Federal Circuit Judge William Bryson also indicated that he would write opinions differently if he knew they could be cited. The Federal Circuit Judges have unanimously voiced their opposition (pdf) to the proposed changes.

In the view of the judges of the Federal Circuit, the adoption of Rule 32.1, which will override our local rule, may adversely affect the administration of justice by skewing the allocation of judicial resources, delaying issuance of precedential opinions, increasing the issuance of judgments without an accompanying opinion, and harming litigants.

J. Craig Williams’ opinion is that “citing an unpublished opinion is something like citing part of the law. It just doesn’t work.”

Golden Blount v. Peterson

Patent, Patent Cases 2004

Golden Blount, Inc. v. Robert H. Peterson Co. (Fed. Cir. 2004).

In an infringement action over a patented fireplace burner assembly, the district court, after a bench trial, found for the plaintiff patent holder. (U.S. Patent 5,988,159). A Federal Circuit panel vacated the infringement holding:

Because the district court’s sparse opinion provides this court with only bald conclusions for review, we conclude that the district court’s judgment as to literal infringement, contributory infringement, induced infringement, and infringement under the doctrine of equivalents is insufficient under Rule 52(a).

Additionally, the appellate court upheld a finding of validity. (Apparently, bald conclusions of validity satisfy Rule 52(a) because of the accompanied presumption of validity). Finally, the court refused to hear an inequitable conduct charge that had not been raised below.

Patent safe-havens

Articles and Publications, Patent

From the Malta Independent Daily: Generic pharmaceutical companies are exploiting gaps in international patent rights to develop and stockpile drugs. For example, Malta and Iceland appear to be serving as safe-havens.

Asked by this newspaper why Pharmaco chose to locate its production base here, managing director Stenthor Palsson said that Malta, like Iceland, fell outside the patent jurisdiction of a number of pharmaceutical products.

(Thanks to PHOSITA for the link).

Update (April 20, 2004) As a followup on its story, the Independent is now reporting that “Malta to join the European Patent Office.”

More Reform Talk

Articles and Publications, Patent

eWeek’s op-ed page is calling for patent reform. Ironically, the editorial points to the settlement between Sun and Microsoft as another example of the problems of the patent system.

Like Cold War superpowers agreeing to reduce nuclear stockpiles, Sun and Microsoft have stepped back from their own form of mutual assured destruction.

Perhaps eWeek is a bit too cynical. Another point-of-view would see the settlement as an indication that patenting does not lead to a technology stalemate. Sun and Microsoft were able to work through their differences and arrive at a solution that will be beneficial for both parties. Collaboration may also be aided by potential amendments to §102(f)/103

Kerry’s Small Business Grant

Patent, Patent Legislation

Senators Kerry and Daschle have introduced a Bill in the Senate (S.1886) that includes a “Small Business Foreign Patent Protection Grant Fund.” The fund is intended provide funds to small businesses who are hoping to file foreign patent applications.

To help small manufacturers and small R&D firms, we need to reduce trade barriers, so that they are able to sell their products and technologies in other countries. Small-business owners commonly cited the expense required to secure foreign patent protection as a significant barrier to their ability to operate in international markets. Part of encouraging the spread of their innovations into other countries is decreasing their vulnerability to big foreign corporations that can take their ideas when they try to sell their products around the world. Our small businesses need patent protection. However, the costs associated with filing such patents are often prohibitively expensive.

(Link to Kerry’s speech discussing the Bill).

Golf Tee Inventor

Inventors, Patent


Patently Absurd discusses several of Arthur Pedrick’s inventions including the following:

UK Patent No. GB1251780. A practice golf tee. Photocells monitor the path of the club head. If they detect that the player is about to hook or slice the ball, a puff of compressed air passes along the conduit 1″ and up the middle of the tee. This blows the ball off the tee so that the player misses it, and does not have to search for a lost ball.

(Thanks to BoingBoing for the link)

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Update: Pedrick’s invention is an improvement on George Grant’s 1899 invention of the golf tee.

Orphan Drug Act

Articles and Publications, Patent

The Orphan Drug Act provides market incentives to develop new therapeutics for diseases affecting relatively small numbers of persons. (Providing a seven year period of market exclusivity.) The act applies specifically to therapies for treating diseases or conditions which affect less than 200,000 or affects more than 200,000 persons but for which there is no reasonable expectation that the costs of developing the drug will be recovered from U.S. sales of the drug.

One problem for the FDA has been determining whether the market exclusivity should apply for new entrants who produce a slightly different drug or who treat a slightly different condition.

Robert Bohrer argues (txt)(pdf) that, in the case of monoclonal antibody drugs, the approach to orphan drug exclusivity should be for the FDA to presume antibodies to the same antigen, of the same immunoglobin class and with the same mechanism of action to be the same drug unless the second antibody is shown to be clinically superior to the first.

David Rohde agrees (pdf) that the Act has had a great impact on the development of drugs for treating rare diseases. According to David, “ten times the number of orphan products were approved in the decade following the Act than in the decade preceding Act.”

Weekly Thank You

Patent

It is time for my weekly thank you for those who have helped with the weblog.

Matthew Homan almost went overboard with his glowing review of Patently-O. Matthew runs a great site, and it is easy to pick up practice tips from his writings. BoleyBlogs also found a couple of selling points for Patently-O. Nipper provided a link to my 102(f)/103 legislative coverage. Phil McGarrigle provided some insight into the new legislation. Professor Joseph Miller provided an update on his future patent research. Howard Bashman and Martin Schwimmer enjoyed the images of Patently-O. BTW, all the images are cut from patent documents. Kevin Heller also linked in.

Patent Reform

Articles and Publications, Patent

According to Susan Kuchinskas at internetnews.com, business leaders have begun meeting to solve “problems at the USPTO.” IT companies feel that patent quality has dropped as the number of applications has increased. Cisco, Intel, eBay, Symantec, Chiron, Microsoft, and Genentech said they will work with regulators and legislators on patent reform. Susan’s reports come from yesterday and today’s patent reform conference. Elizabeth Miles at Berkeley IPlog has a nice review of the conference. Elizabeth may have more on the conference tomorrow.

Update: Brian Carver presents an insightful look at day two of the conference.

Patent Law Hypothetical: Answer 1

Patent

Answer to Question 1:

Generally, 35 U.S.C. §102 is the starting point for determining whether an invention is patentable. In this case, however, nothing in §102 bars patentability: §102(a) cannot block the patent because the goo-whiz was not known before GooCo came up with it. Goo-whiz came on the market less than one year ago, so no §102(b) bar. Goo-whiz was not abandoned under §102(c). The invention was not patented prior to filing a US application under §102(d). §102(e) only applies to prior U.S. applications or “international” applications, not to a nationally filed UK patent. Goo-whiz is not a derivative work under §102(f). And, there is no race to the patent office under §102(g).

The major loss of rights for GooCo is that it will no longer be able to claim a right of priority to the earlier UK application under 35 U.S.C. §119.

Disclaimer.

Claim Drafting Tips

Articles and Publications, Claim Drafting Tips, Patent

George Wheeler has published an article (pdf) that should be read by anyone and everyone doing prosecution work. Unlike most law review articles, the prose is easy to read and the advice is practical.

Here are some of George’s tips:

1. Write claims that will be literally infringed.
2. Do not rely on means-plus-function claims.
3. Write the specification expansively.
4. Claim in a circle, not a chain.
5. The Examiner is never wrong.
6. Cite the MPEP, not case law.
7. Do not add unnecessary claim limitations.
8. Do not write your opponents’ trial exhibits.
9. Do not just obtain a patent, build a patent position.

Update (April 19, 2004) Read Judge Paul Michel’s claim drafting tips or tips on drafting claims from About.com.

USPTO: Behind the Scenes

Articles and Publications, Patent

Scott Wolinsky has written an enlightening (if cynical) article about the patenting process. According to Scott, successfull prosecution of a patent application requires a novel invention, adequate prosecution skills, and also a bit of luck. Primarily Wolinski finds that the luck is getting the right examiner. (Thanks to Slashdot for the link.)

Professor Lichtman (UChicago) has a nice article (pdf) about this topic and its consequences for prosecution history estoppel. If the patent prosecution process truly has such a significant luck component, then the quality of the examination might need to become an issue when determining validity during litigation. Karl Lenz and Axel Horns discuss the purpose of the patent system (focusing mainly on software patenting).

Ice Cream Cone Inventors

Inventors, Patent


The waffle ice-cream cone is approaching its 100th birthday. (Chicago Tribune). Popular legend is that the first waffle cone was developed at the 1904 World’s Fair in St. Louis. A New York vendor, however, obtained a patent in 1903 on an apparatus for making waffle ice-cream cups. (U.S. Patent 746,971). More Recently, Heinrich Herting patented an ice-cream cone with an edible logo (U.S. Patent 4,859,476). Because of a spike in the prices of butter, chocolate, and vanilla, ice-cream is expected to be expensive this summer. (The Slate)