July 2004

Patent Trivia

On this date in 1790, the very first U.S. patent was granted to Samuel Hopkins on a process for manufacturing potash. Potash can be any material containing potassium. However, potash is most commonly potassium carbonate derived from wood ashes. The term arises from the process of extracting lye from wood ashes in iron pots. Potash can be used in glass making:

Glass made with potash becomes rigid more quickly and becomes harder and more brilliant than soda glass.


What is a Trade Secret?

Historically, trade secrets arose under common law. Today, every state provides some form of trade secret protection – although the level of protection varies from state to state. The Uniform Trade Secrets Act (UTSA) has been ratified by many states and has helped to establish a more uniform body of law across the country.

A trade secret can take many forms, such as a device, method, or formula that provides some competitive advantage or has independent economic value. The holder of the trade secret must make reasonable efforts to ensure that the subject maintains its secrecy.

Battle over Pet Food: Mars v. Heinz & Del Monte

Mars v. Heinz & Del Monte (Fed. Cir. July 29, 2004).

Mars filed a patent infringement suit against Heinz, alleging infringement on its patented pet food. (U.S. Patent 6,312,746)(A dual texture animal food product with a soft inner component surrounded by a harder, more rigid shell). After a Markman hearing, the district court issued summary judgment of noninfringement to Heinze.

On appeal, the Federal Circuit breathed new life into Mars’ claims by issuing a new construction of claim terms and remanding.

We conclude that: (1) “ingredients” as used in the phrase “a mixture of lipid and solid ingredients” refers to the components of the inner core at any time after they have been mixed together, and (2) the phrase “containing a mixture” is open-ended. Thus, the claim language, “containing a mixture of lipid and solid ingredients,” does not exclude the presence of additional, unnamed ingredients in the inner core mixture that are neither lipids or solids. Since genuine issues remain as to infringement under this construction, we vacate the district court’s grant of summary judgment of non-infringement and non-infringement under the doctrine of equivalents and remand for further consideration.

Vacated and Remanded

Federal Circuit: Best Mode Not Intentionally Concealed

High Concrete Structures v. New Enterprise Stone and Lime (Fed. Cir. July 29, 2004).

On appeal from a district court’s summary judgment based on failure to comply with the best mode requirement, the Federal Circuit (Newman, Mayer, Clevenger) reversed and remanded.

High Concrete sued New Enterprise for infringement of its patent on “double-tees” for adjusting the orientation of bulky cargo. (U.S. Patent No. 5,947,665). On defendants’ motion, the district court held the patent invalid for “failing to disclose that the inventors’ preferred mode of practicing the invention was to use the crane to tilt the loaded frame at the time that the crane loaded the cargo onto the frame.”

The appellate panel reversed:

Deliberate concealment is not charged. The best mode requirement of §112 is not violated by unintentional omission of information that would be readily known to persons in the field of the invention … Known ways of performing a known operation cannot be deemed intentionally concealed absent evidence of intent to deliberately withhold that information.


SnippetsTM provides a review of timely developments in intellectual property law. Here is a table of contents of the most recent issue (July 2004):

1. Brian Harris, Caveat Sender: Unintentional Disclosure in Electronic Documents.
2. Thomas Fairhall and Paul Churilla, The Intersection of Trade Secrets and Patent Law: The Prior User Rights Statute, 35 U.S.C. 273.
3. Andrew Williams, Electronic Laboratory Notebooks: Improved Data Storage or Increased Burden.
4. Eric Moran, Festo Extended: Honeywell v. Hamilton Sundstrand.

Those interested can request a pdf version of the publication by emailing the editor.

Paper Based Patent Bar Exam

For those of you hoping to become patent attorneys, but fear the computerized exam format -- you may be in luck. The USPTO has indicated that it will continue to administer the registration examination once each fiscal year "at a single location in the Alexandria, Virginia area starting in fiscal year 2005." I spoke with an officer at the Office of Enrollment and Discipline (OED) who confirmed that the annual exam would be on paper rather than on computer.

Link: Patent Office OED.

Finding a Patent Attorney

The US Patent Office keeps track of all registered patent attorneys. (Patent Attorney Listing). Using this data, we compiled a rank based on the number of patent attorneys in various cities. Washington DC remains the patent attorney stronghold, although its number one rank may be fading as proximity to the PTO becomes less and less useful. New York and Chicago have their fair share of patent attorneys. LA, on the other hand, is at number nine in terms of the number of patent attorneys even though it has the second largest population of any city in the U.S.

1. Washington DC
2. New York NY
3. Chicago IL
4. Houston TX
5. Boston MA
6. Minneapolis MN
7. Palo Alto CA
8. San Diego CA
9. Los Angeles CA
10. Dallas TX
11. Philadelphia PA
12. San Francisco CA
13. Austin TX
14. Atlanta GA
15. Alexandria VA

Tim Uy of oncloud8 has developed a simple tool for finding a patent attorney in your area. (Patent Attorney Locator). Tim’s tool probably works best for those who want to hire a patent attorney that works right next to where you live.

Comments on hiring a patent attorney: Although there are some times when proximity is helpful, it may not be in your best interest to hire a patent attorney just because he or she is located in your zipcode. Modern technology (telephone, fax, e-mail, internet) allows for easy communication and transfer of documents. Just this past week, for example, I worked with inventors or companies located in India, California, Florida, Connecticut, Indiana, and Illinois!

Segway Inventor to speak at Inventors Conference

The USPTO has announced that

Dean Kamen, one of the world’s best known and most successful inventors, will be the keynote speaker at the opening session of the USPTO’s annual Independent Inventors Conference in Concord, N.H. on Friday, August 20.

Dean Kamen is Chairman of Segway LLC, an inventor and a physicist. “His inventions include a portable dialysis machine and the Segway™ Human Transporter.”

Registration is available online.

Patent Office Professionals Balk at Opposition Proposals

POPA: The past several months has seen a gradual buildup of support for stronger post-grant opposition proceedings. Bucking the trend, the Patent Office Professional Association (POPA) has taken the stance that patenting should be done right the first time, rather than relying on the second-chance actions.

If the USPTO were to reallocate its funds significantly to bolster post-grant opposition instead of increasing time for examination, it would be banking on getting patent quality right only the second time around. Absent changes to promote higher quality in the examination system–such as giving more examination time per case and granting credit to examiners for all actual work done, including second actions and final actions–the USPTO would have little motivation and insufficient resources to get the job done right the first time.

POPA’s June/July newsletter is online here.

ANDA Filing is not per se willful patent infringement

Glaxo v. Apotex (Fed. Cir. July 27, 2004)

Apotex appealed the district court judgment, which found that Apotex’s filing of an Abbreviated New Drug Application (ANDA) for a generic version of the antibiotic Ceftin® willfully infringed Glaxo and SmithKline Beecham’s patents. (U.S. Patents 4,562,181 and 4,820,833).

On appeal, the Federal Circuit (GAJARSA) affirmed the infringement holding, but refersed the the district court’s finding of willful infringement.

We hold that the mere filing of an ANDA cannot constitute an act of willful infringement compensable by attorney’s fees under the Drug Price Competition and Patent Term Restoration Act of 1984, also known as the Hatch-Waxman Act.

Because, the ANDA filing did not constitute an “exceptional case,” the willfulness holding was reversed

In dissent, DYK argued that the case was moot and thus should not be decided.

The questions of infringement and invalidity are moot since, as the parties conceded at oral argument, there are no past damages being sought for infringement, and the patents have expired. I dissent from the majority’s decision to address the issues of infringement and invalidity in the absence of a live case or controversy.

Toyota with an Attitude

Nipper: Toyota has recently patented an automobile control system that allows for easy expression of emotion. (U.S. Patent 6,757,593). The system can be configured to show irritation, anger, sadness, sleepiness, happiness, surpise, shame, and vigor.

Wasinger v. Levi Strauss: Non-infringement Vacated

(Unpublished Opinion) (Fed. Cir. July 8, 2004)

Wasinger sued Levi for infringement of his patented pre-fading technology. (U.S. Patent No. 5,366,510). At the district court level, the Judge granted Levi summary judgment of non-infringement after holding a Markman hearing to construe the claims. On Appeal, the Federal Circuit vacated, finding that the district court had incorrectly limited Wasinger’s claims to a “single-step process limitation” since such a limitation was “unsupported by the claim language and the written description.”

In dissent, DYK agreed with the district court’s holding “that there was a disclaimer in the prosecution history of multi-step processes involving subsequent oxidation steps.”

PTO Deposit Account No Longer Filled By Credit Card Payment

The USPTO has announced a final rule (effective August 23, 2004) that eliminates acceptance of credit cards as payment for replenishing deposit accounts.

Although credit cards are an efficient means for individuals to use in replenishing deposit accounts, they are an expensive option that is not cost-effective. It is much more cost-effective to process high dollar payments by EFT or by check for the Government. This is because the Government is charged a percent fee based on the total dollar amount of the charge.

The Office will continue to accept credit cards as payment for all other products and services for which fees are required.


Wheelchair Transfer Device


Harry and Kathleen Cerne of Pittburg Kansas have recently been awarded a patent for their wheelchair transfer device. The device is designed to be secured to the wheelchair at more than one location in order to minimize the risk of slippage during use. In addition, the transfer device is operable with many different types of wheelchairs and is fairly inexpensive to construct. (U.S. Patent 6,748,612)

Phillips v. AWH: Chief Judge Mayer’s Dissent

The Federal Circuit has created a stir in its recent decision to grant an en banc review of Phillips v. AWH.

Chief Judge Mayer dissented from the court’s decision to review. Mayer argued that the real question for review is whether Markman was correctly decided.

Until the court is willing to reconsider its holdings in Markman v. Westview Instruments … that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order.

My former boss, Patricia Thayer at Heller Ehrman commented in the Recorder that she thinks Mayer may get his wish.

“I’d love it if the federal district courts got together” to write an amicus brief on the issue, Thayer said. “It’s difficult for them that [they are accorded] no deference. I wouldn’t be surprised if that gets changed in the process.”

This is the fourth article in our coverage of the Phillips en banc appeal. Read Part I, Part II, and Part III.

Phillips v. AWH: Rader Concurring

This is Part III of our coverage of the Phillips – AWH en banc order. Read Part I and Part II.

… In concurrence, Judge Rader argued for en banc ruling on another issue. Rader’s concern is whether claim construction is even amenable to “strictly algorithmic rules.” As an example, Rader questions whether an approach of first looking at the specification, folowed by examining dictionary definitions would be workable. Alternatively, claim construction may be better achieved by chosing a methodology on a case by case basis — “thus entrusting trial courts to interpret claims as a contract or statute.”