Wegner’s Top Ten for 2008

Hal Wegner has released his top ten upcoming cases for 2008:

  1. Quanta v. LG – Patent “Exhaustion”
  2. McFarling – Patent “Exhaustion”
  3. Kubin – Biotech Obviousness; Enzo Disclosure
  4. Classen v. Biogen – “Metabolite déjà vu”
  5. Convolve v. Seagate – Petition from In re Seagate
  6. Bilski – Patent-Eligibility under § 101
  7. Sanofi-Synthelabo – The Plavix Case
  8. Sang Su Lee II – Post-KSR Motivation
  9. Ferguson – Method of Marketing a Product
  10. Barnett – Internet-driven Method

 Hal Wegner’s list focuses on utility patent litigation. I would add three other cases from a slightly different vein:

  • Tafas v. Dudas – Challenging the PTO’s power to implement rules limiting continuations and claims. (summary judgment briefs filed).
  • Egyptian Goddess v. Swisa – Redefining the meaning of infringement and claim construction for design patents. (rehearing en banc pending).
  • Bender v. Dudas – Challenging the PTO’s ability to regulate patent attorney business relationships that go beyond ‘practice before the office.’ (on petition for certiorari).

38 thoughts on “Wegner’s Top Ten for 2008

  1. “Sang Su Lee aff’d w/out Fed. Cir. opinion”

    I guess the Federal Circuit has a different Top 10 List than Wegner.

  2. We are at the centerpoint for the struggle between democratic rule (the rule of law) versus coporate rule (modern feudalism). If we lose this fight, despite the challenges and the fear among Congress and the judiciary to advance democratic principles in light of the juggernaut we call corporatocracy, we are lost. I can think of no more important area of law in which to fight this fight than that area in which monopoly of a market is either granted or denied. The IP system, particularly the patent system is the most potent check on the power of corporatocracy.

  3. anonymous,

    It is a shame that reasons for denial are never given in view of the fact that McFarling raised two issues. The patent exhaustion argument, what I have always viewed as a disingenuous attempt to piggyback onto the LG case, was doubtless DOA given the upcoming arguments in LG v. Quanta. The calculation of damages issue was much more substantive in view of the damages provisions contained in Title 35. Its failure to strike a responsive chord with the Supreme Court appears to be more significant. Professor Lemley and the Petitioner are likely quite disappointed that even this issue fell by the wayside. Practitioners would benefit from reviewing the decisions below given how the District Court calculated and arrived at a damages figure. It is a bit out of the ordinary in that there were in may instances intervening parties in the commercial scheme positioned between the patentee and the ultimate end user.

    Clearly, LG is the case to watch, with oral agrument set for later this month. The eventual outcome should be of particular interest to those patent holders where inventions as claimed have the inherent ability to self-replicate (in this case second generation seed resulting from first generation seed sold on a “single use” basis.

    As a homeowner I can only dream of Monsanto developing Roundup (TM) resistant strains of grasses and landscape plants tolerant to over-the-top application using Roundup. I am tired of having to remove weeds in groundcover by hand because no company has as yet developed herbicide resistant strains of grasses and landscape plants.

  4. For those with Westlaw access, the Bender cert petition is at 2007 WL 4618425.

    From the petition and the Supreme Court’s docket site, Mr. Bender appears to be proceeding pro se.

    The 5 questions presented in the petition are each several sentences long, and not worth posting here. The introduction to the questions presented and the point headings might give curious readers a general idea of what his arguments are:

    Intro:————-
    This case is an unprecedented attorney discipline proceeding brought by the United States Patent and Trademark Office (“PTO”) against Petitioner “to remove him from the rolls” under § 32 of the patent statute. The PTO issued a Final Order excluding Petitioner following an administrative proceeding under § 556 of the Administrative Procedures Act (“APA”). None of the alleged grounds of misconduct upon which the PTO’s Final Order is based constitutes conduct or practice, or relates to conduct or practice, “before the Office.” Rather the alleged infractions in this case relate to Petitioner’s communications with his clients, or with an invention marketing company and, if at all, are subject to disciplinary action exclusively by State Bar Authorities where Petitioner is admitted (i.e. New Jersey and the District of Columbia). The broadest specific power conferred by Congress upon the PTO is set forth in 35 U.S.C. § 2(b)(2)(A) and comprises “establishing regulations which shall govern the conduct of proceedings in the Office” (emphasis supplied). Similarly, the disciplinary regulations promulgated under the statute are limited to “ solely the practice of patent, trademark and other law before the Patent and Trademark Office” (37 CFR § 10.1) (emphasis supplied). The Court of Appeals for the Federal Circuit (“Federal Circuit”) upheld the PTO’s exclusion order against Petitioner’s challenge that the PTO’s action exceeds authorization by Congress, is unsupported by substantial evidence, and violates the U.S Constitution or otherwise is contrary to law.
    ————-

    Point headings———-

    I. The Federal Circuit Erroneously Ruled That The PTO’s Own Interpretation Of The Patent Statute With Respect To What Constitutes “Practice Before The Office” Was Entitled To Deference … 14

    II. The Federal Circuit’s Decision Directly Conflicts With The Fourth Circuit Court Of Appeals Ruling With Respect To The Inappropriate Use Of OED RFI’s By The PTO … 19

    III. The Federal Circuit’s Decision Ignores Petitioner’s Argument That The “Evasion” Charge Violates Procedural Due Process … 23

    IV. The PTO’s Final Decision Violates The “Separation Of Functions Clause” Of The Administrative Procedures Act … 25

    V. The Federal Circuit Shirked Its Review Responsibility Under The Administrative Procedures Act … 27

    —————–

  5. ironicslip,

    There is one point you raise that resonates all too clearly…politics govern what the “patent system” is all about, seemingly waxing and waning depending upon what special interest group happens to catch the ear of a member of the House or Senate.

    It is useful (no…make that imperative) for those engaged in its practice to periodically look up from their desks and take in the lay of the political landscape, and then actively promote that which they sincerely feel is in the best interests of those who really count…innovators and the public at large. It is a trite truism, but the fact is we exist to serve them, and not vice versa.

    BTW, my views are the same with respect to the several other areas that collectively go under the name of intellectual property.

  6. Mr. Slonecker:

    Not political philosophy, at all … realpolitik …

    indeed, I would be in favor of doing away with the Patent Bar and force a rationalization around patent prosecution that reforms both how the MPEP is applied and how examiners are trained. I know of few examiners who understand or even care about case law. And fewer still who properly apply it anyway. Why should they?

    It is quite obvious that the issues with the PTO are political. The Patent Bar appears to ignore this & has developed a sad unwillingness to reach out to a majority of the constiutients of the office (read “small entity” & “individual inventor”). I know of no other bar that lacks a concerted effort to encourage “legal aide” — pro bono or otherwise — so, not surprised by the unique issues in Bender. As to agencies that have similar requirements to the Patent Bar, we have JAG, as one example …

    I enjoy your legal entreaties. I also appreciate the examples you provide — the reality, however, is — If we knew in advance what would be commercially successful, we wouldn’t need to file patents —

  7. A poster above asked where a copy of Bender’s cert petition can be found. I too have the same question. Any place other than PACER?

  8. Bender proposes a solution in his Cert Petition … send “out of Office conduct” complaints to the State Bar where they have the experience to discipline fairly. This case is a political one … it attempts to regulate invention promoters (stamp them out) by denying them access to patent attorneys. And by the way, the federal circuit did hold in In re Daniels that Bender’s representation “inside the PTO” was stellar.

  9. Political philosophy discussions are all well and good, but:

    Try to keep in perspective that the representation in Bender was much less than stellar, and that somehow, or so it seems, there should/must be some mechanism in place to curb such conduct. If not the PTO (and, yes, I do understand the legal issues involved), then what? A state bar? Civil malpractice action? State action under deceptive trade practices? Other? I read posts concerning problems, but I do not see posts proposing solutions. The PTO is a unique beast in our legal system. I am aware of no other federal agency that requires a bar exam in order to practice before it. The Supreme Court long ago made it only too clear that such practice was beyond the reach of the states. If the PTO should not have enforcement powers in a manner somewhat akin to states for regulating professional conduct, then what should. and what powers should it hold?

    On a different matter, I am looking forward to what happens to the McFarling petition for cert. It should become known on 1/8 when the Justices meet. In my admittedly crude vernacular, I do have to wonder if a patent exhaustion doctrine as Lemley advocates would convert a patent on seed from a 20 year term to one embracing merely a single growing season? Were Lemley’s views to prevail I would be concerned if I was the holder of a patent on anything having the ability to self-replicate.

  10. “Even the Tafas v. Dudas case is one of libertarianism against old world liberal socialism. Tafas is basically saying that Regulatory Agencies cannot promote its own policy. Instead the same must be promoted by Congress. We libertarians established the U.S. and they didn’t want Congress to do to much so it was made slow, cumbersome, inefficient so it could not cause too much damage. Look at Wheelers comments about how the USPTO had to get policy moving, because Congress couldn’t get it done fast enough.
    It is quite clear that as time marches on libertarianism is win the day and Wheeler and other liberal socialists will go the way of Joseph Stalin.”

    more politics — write your senators!

    Tafas v Dudas is an assertion of individual rights. socialist? maybe … but in the sense that special interests *socialize* constantly for ear marks and limit transparency because the state “knows better” what to do with the “people’s government” — pushing rules that favor a specific set of companies … most of which did not exist 30 years ago … then again, what pto director said everything that could be invented already has been invented (circa 1900)? and who was it that said their job was to protect americans from bad patents?

    got a crystal ball you can sell me?

    what has congress fixed in the past seven years, btw? better yet what has it *fixed* for the incumbents?

    libertarians favor rights of the individual — you know constitutional rights *over* the majority and the “threat of special interests” (the greatest threat to any democracy) … “old world liberals” — what is that? the term liberal means progressive as in expanding rights … stalin was a murderer — you think that started because he was a liberal — did you just have a lyndon larouche moment concerning TRUTH …

    it is quite hard to successfully squeeze the very people who are inventive enough to realize when they are no longer welcome … nothing is free … including freedom and i for one commend tafas for taking on the man … he answers to himself and holds the office accountable — which is the way it should be … gee even our current admin approved continued foia provisions …

    so, by the actions of the past seven years what happened to shrinking government because it “is the problem”; avoiding “democratic” wars in foreign lands– you know somalia and serbia — thanks newt; rejecting “activist” judges — except when the ruling goes your way; letting the market work, when you already control the market; entitlements because the law applies to everyone else but you; pure politicization of the executive branch and the ear marking … the signing statements … retroactive amnesty for folks who clearly knew better …

    sounds great that ron paul is held up to be anything less than he is :: a politician who is willing to speak his mind on any number of issues … better than a bunch of dick morris-isms and frank lutz-isms …

    money — criminalize abortion? … you think the states are not well ahead of the game? (what 19 or more) have trigger provisions banning abortions based on successful outcomes from our non-activist SCOTUS …

  11. So, the answer to the world’s problems is: Be professional, be courteous, be prepared to kill. Well, it’s not only Americans who are striving to live up to that maxim, it’s just about everybody else “of faith” in g–forsaken Iraq. Hey, anon, is that the “better-off place” where you want to live?

    Meanwhile, maybe we can get back to patent law?

  12. Christ Anon, the only reason we are free is because at one time every REAL american packed a firearm, knew how to use it and wouldn’t hesitate to use it where appropriate. Evern Napolean wanted to invade the U.S. The British invaded twice, and when that didn’t work they whupped the South up into a frenzy to start the War of Northern Aggression.

    The Mexicans and Spanish have invaded. Now there are middle easterners.
    I like what I heard Marine who served in Iraq stated. During occupation Marines behave as everyone should behave. Be professional . . . be couteous and be prepared to kill. If every citizen in the U.S. lived my that mantra we would be a far better-off place to live.

  13. “an era where America itself is now vulnerable to attack by even small powers and terrorists armed with WMDs”

    Actually, that “era” is as old as the hills.

    The only difference now is that cable TV and radio has given fear-mongerers an additional tool to fire up rural and suburban bed-wetters and racists for whom the idea of “country” is meaningless without bogeymen, scapegoats, and other “enemies” to fear and hate.

  14. I fully recognize the isolationism that Ron Paul espouses is as old as the Republic. However, one of the major lessons of WWII was that our lack of involvement in European and world affairs contributed to the rise and expansion of aggressive regimes. We let matters fester until weakness and appeasement lead to the bloodiest conflict in the history of man. Our leaders post-war were resolved to stay involved in Europe and elsewhere, and to confront aggression rather than to appease it. This policy has largely worked and should not be lightly jettisoned in an era where America itself is now vulnerable to attack by even small powers and terrorists armed with WMDs.

  15. Tread carefully anon for it was Washington who stated that we should trade with all but be bound to none of the foreign powers. Mr. Paul only reiterates what the Father of the Country espouses. Those who are against Washington are cut from the same cloth as those against whom Washington warred. The teachings of our forefathers are just as relevant today as in the 18th Century. What is telling are the warnings of our forefathers-their wisdom becomes more salient with every passing law in furtherance of corporatocracy.

  16. The rise of libertarianism is shown by Ron Paul garnering the most money in the fourth quarter than ALL other candidates.”

    “That’s hilarious. Ron Paul, while modestly fascinating as a cult leader, is a rather silly conservative but hardly “libertarian.” What kind of libertarian goes around promoting the criminalization of abortion?

    In any event, this perceived “rise of libertarianism” is really a reflection of the Republican party having driven itself over a cliff. Ron Paul is the only candidate out there whose rhetoric excites the gun-loving types who worry about black helicopters and long for the good old days when you could smoke anywhere and the skyline wasn’t destroyed by those ridiculous wheelchair ramps.”

    Stereotypical pronouncements are the hallmark of a bigot, not so?

    The obvious problem with Ron Paul is that he is running for the Republican nomination while expressing views on foreign policy that are dramatically out of step with the views of its majority or even with a majority of Democrats. Very few Republicans and, indeed, very few Americans today support the extreme isolationism he expouses. That all ended with WWII.

  17. I read the USPTOs brief in support of their summary judgment and I note some angst over there having to defend against the alleged vagueness of the term “unduely mutiplied” This is exactly what has been talked about on this blog. The actions of the USPTO have been in a vacuum for the last 40 years and have completely failed to take into consideration the pervasive changes in constitutional law wrought during the 1950s-1970s. There are many other problems with both the statutes, the rules and the operation of the USPTO that give rise to constitutional infirmities. It matters not that the term “unduely multiplie” has been in use for decades by the USPTO. Somewhere during the timeline of the 1960s its definition became vague due to changes in constitutional law.

  18. “Sang Su Lee II – Post-KSR Motivation”

    Never heard of it. What is it? Is there a BPAI opinion on it somewhere? (Is Wegner counsel on it?)

  19. I think Mr. Bender did get the short end of the stick because I think he did try to warn his new clients in writing about what had happened. Sadly, that seems like a fact issue. If Mr. Bender had not written the letters he did, then it seems like the PTO’s disciplinary action would have been appropriate and within their jurisdiction. As it is, the PTO’s excercise of discretion here looks to the casual observer like retaliation for his pursuing In re Daniels. However, since the Fed. Cir. agrees with the PTO, to the extent that they would have held against Bender even if getting the case de novo. I am not sure where you can put this discretion such that it will be excercised responsibly.

    Like Larissey (sp?) this is one of those where you just have to admit to yourself that justice isn’t perfect.

  20. Like me, w t f are all those wheelchair ramps doing there anyway? In other news WHERE”S MA PIPE?

    MM, even the backwards folks are starting to come around now. Amazing I know, but it’s true. As a point of fact I know many of them quite well as they are my kin folk. None of them really like RP, they’re all going Rep. because even if they did like RP, they’re not so totally backward as to recognize they’ll just vote for someone who won’t get 1%.

    Who do you think is making Huck as big a name as he is if not them?

  21. “The rise of libertarianism is shown by Ron Paul garnering the most money in the fourth quarter than ALL other candidates.”

    That’s hilarious. Ron Paul, while modestly fascinating as a cult leader, is a rather silly conservative but hardly “libertarian.” What kind of libertarian goes around promoting the criminalization of abortion?

    In any event, this perceived “rise of libertarianism” is really a reflection of the Republican party having driven itself over a cliff. Ron Paul is the only candidate out there whose rhetoric excites the gun-loving types who worry about black helicopters and long for the good old days when you could smoke anywhere and the skyline wasn’t destroyed by those ridiculous wheelchair ramps.

  22. Michael, I have read most of the briefs in the case. The issue is fascinating from many angles.

    For most who have not read the Quanta briefs, it is important to note that what Intel sells are otherwise contributorily infringing components of LG patents. The only Supreme Court case that directly applies is “Univis Lens,” as all the other exhaustion cases seem to have involved sales of directly infringing machines or products. But Univis Lens is like the other cases in this: the patentee received his “entire” compensation from the first sale (of lens blanks), just as in the other exhaustion cases.

    When last the Supremes ventured into applying its exhaustion doctrine to “contributory infringement,” e.g., “Mercoid,” Congress had to overrule it by enacting 271(d)(1) and (2). I don’t think the Supremes will make the same mistake twice.

  23. Even the Tafas v. Dudas case is one of libertarianism against old world liberal socialism. Tafas is basically saying that Regulatory Agencies cannot promote its own policy. Instead the same must be promoted by Congress. We libertarians established the U.S. and they didn’t want Congress to do to much so it was made slow, cumbersome, inefficient so it could not cause too much damage. Look at Wheelers comments about how the USPTO had to get policy moving, because Congress couldn’t get it done fast enough.
    It is quite clear that as time marches on libertarianism is win the day and Wheeler and other liberal socialists will go the way of Joseph Stalin.

  24. Bender’s position is libertarian. The government cannot interfere with the attorney client contracts using eithical rules. There have actually been thousands of scholaraly articles on this subject and the restraint of trade presented by the integrated bar over the last 50 years. One can think of the ethical rules and integrated bar as the zenith of liberal socialism. Now the same is directly attacked by libertarianism. The rise of libertarianism is shown by Ron Paul garnering the most money in the fourth quarter than ALL other candidates.
    The fight against IOLTA was also another libertarian attack on the old world liberal socialism.
    Should Ron Paul enter the White House many, many old world liberal social programs will end. IOLTA and self regulated bars being two of them.

  25. Anon:

    The plethora of briefs in this case can be found at link to abanet.org.

    What gives LG an unfortunate “twist” is that LG does manufacture computers (primarily laptops) and gives me pause to consider if it would even entertain licensing of those companies manufacturing competing products. I can envision circumstances where it would, but I can also envision circumstances where it would not. My hope is that this “twist” does not unduly influence the Supreme Court. Then again, given what has been happening since eBay was decided, the equitable nature of injuctive relief may very well drive LG to the conclusion that licensing is a better alternative than trying to fight the “I want a permanent injunction” battle.

  26. “I think that SCOTUS should better be viewin Ron Paul’s progression into the spot light with respect to Bender. I do believe that the libertarian ideology will be gettin a lift and that is the gravaman of Bender’s complaint. By the way a Dutch Bank has already hypothesized that the United States will loose 25% of its economic value this year resulting in a catastrophic depression that will cause Ron Paul to be catapulted into the Presidency. All you statists beware.”

    The above causes me to think of the word “kook.”

  27. I think that SCOTUS should better be viewin Ron Paul’s progression into the spot light with respect to Bender. I do believe that the libertarian ideology will be gettin a lift and that is the gravaman of Bender’s complaint. By the way a Dutch Bank has already hypothesized that the United States will loose 25% of its economic value this year resulting in a catastrophic depression that will cause Ron Paul to be catapulted into the Presidency. All you statists beware.

  28. Dennis, you should probably note that Bender is petitioning pro se. Lots of pro se petitions are filed, and few are ever granted. I think listing Bender as a top 10 patent case is a bit of a stretch, given its nonexistent chances of a grant.

  29. Just a note: I posted the comment regarding Quanta attributed to Michael L. Slonecker. I am not Mr. Slonecker. Anon2

  30. “Top Ten patent cases of 2008″

    RE; Bender v.Dudas,

    I’m interested in the reading the Cert Petition filed by attorney Bender. Can Patently-O (or anybody) post it? Thanks for your help.

  31. Quanta is indeed the most (or one of the most) important case(s) from 2007 because it was taken up by the Supreme Court for decision. It addresses the interface between the exhaustion doctrine and contributory infringement. Section 271(d)(2) seems implicated and may provided the Supreme Court a basis for a holding. This section reads, in pertinent part, “No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief …by reason of his having …(2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent;”

    Read litereally, the statue does seem to permit one to license a (contributorily infringing) component seller and to separately sue the buyer who assembles the directly infringing combination. In other words, the statute seems to sanction LG’s licensing program. One does not even have to address the issue of implied license and the effect or not of Intel’s notices to its customers that they had no license under LG’s patents.

  32. Having read McFarling’s cert petition, I do not believe it is properly characterized as a “patent exhaustion” case, but rather one directed to the award of damages under Title 35. The patent exhaustion portion of the cert petition is but a miniscule part, and appears to be no more than a somewhat disingenuous attempt to piggyback on LG v. Quanta (scheduled for oral argument toward the end of this month). The McFarling petition is scheduled for consideration during the court’s conference on 1/8.

    Re LG v. Quanta, it was earlier noticed on this blog and I found it a bit disappointing that so few presented comments. It involves issues that can have significant ramifications on how licensing should be approached should the court deem a “bright line” test as the proper standard, much as the bright line test it drew in Bonito when it rejected Judge Rich’s rationale in a California case involving the use of plug molds for replicating boat hull designs and accepted the rationale employed by the Florida Supreme Court that federal patent law preempted state unfair competition law.

  33. The rules concerning IDS may be promulgated to spawn a new industry and agumnet copyright holders. I personally cited as much relevant prior art as I could so that an Examiner would not need to search the art. In fact, many of my cases did not have any art found by the examiner. This seemed to me the most efficient manner by which to use the resources of the USPTO. I wanted the Examiner to maximize the efforts of the USPTO on examination. I have always been suspect that the USPTO management charges less for examination than searching.
    Along those lines, I believe that the IDS rules are being promulgated so that Examiners will be forced to search prior art, i.e. use private contractors to that end. With the avaiability of vast amounts of information relative cheaply it is easy to see how traditional searching firms are losing money in this economy.
    Moreover, it is clearly fair use to take copyright material, copy the same without a royalty license, and provide it to an examiner for the purposes of patentability.
    With the present searching requirements that the USPTO is attempting to promulgate it is clear that the copyright holders will be generating a great deal of revenue from this system.
    With all that said it is incumbent upon the public to track the careers of those involved with the current rules and see what content provider and/or search firm they become intimate with. Could we be facing the RIAA of technical writing?

  34. Does anyone know how to subscribe to Hal Wegner’s newsletter? I’ve looked around several times and can’t figure it out, even though it’s probably right in front of me.

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