March 2009

Bits and Bytes No. 101: Patent Bill & the Patent Lobby

  • Reform: Today, the Senate Judiciary Committee met shortly and announced that an agreement is “close” on all of the controversial issues and that the compromise will result in a major overhaul of S. 515. Gene Quinn has instant-comments. Potential changes include: (1) codifying the existing law of damages rather than changing it – except that a judicial check on jury-awarded damages would be added; (2) eliminate “best mode” as a ground for invalidating a patent; (3) lowering the standard for post grant review to an “interesting question” rather than a “substantial new question of patentability.” We should see some language this week.
  • Reform: A reader sent me the following points on the potential agreed-to compromise Bill in the Senate:
    • Damages. The amendment will strike the contentious calculation of reasonable royalty damages provision and will replace it with the gatekeeper language developed by Senators Feinstein and Specter, which will provide more of a role for the judge to identify the appropriate legal standards and relevant factual contentions for the jury.
    • Inter partes reexamination. The amendment will strike the controversial “in public use or on sale” additions on inter partes reexamination.
    • Best mode. The amendment will retain the requirement that a specification contain the best mode of carrying out the invention as part of the patent application, but not allow best mode to be used as means to invalidate a patent.
    • Interlocutory appeals. The amendment will tighten the interlocutory appeals provision. The bill as introduced would have given the district court complete discretion whether to approve an application for interlocutory appeal of a claims construction hearing. This amendment will provide district court with specific standards that it must certify have been met.
    • Willfulness. The amendment tightens the willfulness provision to ensure is in line with the Federal Circuit’s decision in Seagate.
    • Venue. The amendment will strike the current subsection on venue, and replace it with a codification of the Federal Circuit’s recent decision in TS Tech.
  • Lobby Lobby: The IPO reports that “by early afternoon yesterday, 16 paid ‘line sitters’ were already in line in the corridor outside the [committee] room, holding places for lobbyists to be admitted to the room this morning.”
  • Patent Jobs: The Patently-O Job board has picked-up some steam over the past week. Here are some recent job postings.

Innovation in the 21st Century: Harnessing the Power of Intellectual Property and Antitrust Law

This week, I am taking part in a “blog symposium” hosted by Prof. Josh Wright (U. Texas Law) on his blog (Truth on the Market).  The symposium focuses on a new book by Prof. Michael Carrier titled Innovation in the 21st Century: Harnessing the Power of Intellectual Property and Antitrust Law (Oxford 2009).  In the book, Carrier identifies a number of problems with the antitrust and IP laws – and then proposes solutions.  Carrier’s book moves in the same vein as other recent law professor books critiquing IP Policy such as the Meurer and Bessen book Patent Failure.  Here, however, Carrier spends less time proving that a problem exists and somewhat more time identifying solutions. 

Early posts include:

·         Reverse Payment Settlements: Carrier suggests that reverse payments patent settlements should be made presumptively illegal or even per se illegal.  These payments have become somewhat common where a patent holder will pay a generic to stay off the market and not further challenge the patent rights. Prof. Dan Crane (Cardozo) argues that rule does not make sense because there is no direct link between the direction of the settlement payment and the potential anticompetitive social harm of the settlement.  [LINK]

·         Patents Blocking Antitrust Action: Carrier suggests that the existence of IP rights should not grant a company a free-pass to take otherwise anticompetitive actions.  In his post, Prof. Phil Weiser (Colorado) agrees “IPRs should not displace antitrust oversight.”  Weiser argues that this is especially true in the area of software patents: “Given that software patents are controversial to begin with, awarding the recipient of a patent on an application programming interface or communications protocol a get-out-jail free card is hard to justify.” [LINK]

·         Mergers in the Innovation Market: Carrier suggests stronger antitrust regulation of mergers in the “innovation market” – as opposed to more traditional merger analysis that focuses only on product lines.  In his post, Geoff Manne (LECG) points to the biggest hole in Carrier’s book – that he chooses sides without enough evidence either way.  In this case, Manne notes that “we don’t know about the relationship between market structure and effect, and error costs are high.” From Manne’s perspective, innovation markets are so dynamic that Government antitrust intervention will necessarily arrive at the wrong answer too late and do harm. [LINK]

·         Standard Setting and Patent Holdups: Carrier identifies the “patent holdup” situation as having a particularly troublesome antitrust concern because it looks like attempted monopolization – especially where the patent holder pushes an SSO to adopt a standard that would infringe.  Wright argues that such antitrust liability would be quite problematic. [LINK]

 

No Stay of District Court Proceedings Pending Appeal of Preliminary Injunction

Fairchild Semiconductor v. Third Dimension (3D) Semiconductor 200903292047.jpg (Fed. Cir. 2009) (nonprecedential order)

Fairchild originally licensed 3D's US and Chinese patents – agreeing to a royalty for all Fairchild products "covered by" a 3D patent. However, after analyzing the patents, Fairchild decided that it need not pay any royalties and then sued for a declaratory judgment that it owed no royalties and that none of its products are covered by 3D's patents.

Restraining License Termination: In a preliminary ruling, the district court granted Fairchild's request for a preliminary injunction prohibiting 3D from terminating the license agreement. The ongoing license serves as a defense to charges of patent infringement by 3D. As the district court held, "termination of the agreement does create irreparable harm in depriving Fairchild of its primary defense to 3D patent infringement litigation.

The threat of such litigation is not speculative: 3D has already filed a complaint in the United States District Court for the Eastern District of Texas and has promised to file an infringement case in China based on the Chinese patents otherwise licensed by the Agreement. Without the Agreement as an affirmative defense to those suits, Fairchild could be forced to endure years of litigation in those other forums despite this Court eventually ruling that Fairchild did not breach the Agreement.

The preliminary injunction is now on appeal to the Federal Circuit. In a recent order, the appellate panel rejected 3D's motion to stay the district court proceedings pending outcome of the appeal. 3D argued that the appeal divested the district court with jurisdiction over the matter. That argument was regarded "without merit."

A preliminary injunction, i.e., an injunction pendente lite, is an injunction issued pending the ongoing litigation. Although a district court may not proceed with matters involved with the injunction itself, e.g., it may not amend the injunction, or make findings to support its injunction while the injunction is on appeal, the district court may proceed with the litigation and permit discovery, enter rulings on summary judgment, or hold a trial on the merits. (internal citations omitted)

Briefing in the appeal will begin in April.

Notes & Docs:

Supreme Court Asked to Expand Defenses to Patent Infringement

IGT v. Aristocrat Tech of Australia (on petition for certiorari)

Every year, the PTO revives hundreds of unintentionally abandoned patent applications, and about half of those eventually issue as patents (not counting continuations and other descendants).

In the IGT case, the gaming-manufacturer was sued for allegedly infringing two of Aristrocrat's slot-machine patents. The first patent stemmed from an Australian provisional application that was followed by an international PCT filing. At the national stage in the US, the applicant missed the filing deadline but was able to convince the PTO to revive the application as unintentionally abandoned. The second patent is a continuation from the first.

In court, IGT has argued the revival was improper and thus, that the patents are invalid. IGT reasoned (and the district court agreed) that the revival was improper because the PTO lacked authority to revive national stage applications that were unintentionally filed late. Rather, the statute arguably only allows revival of applications upon proof that the tardiness was unavoidable.

Without determining the proper scope of the PTO's revival authority, the Federal Circuit rejected IGT's argument - holding that improper revival is not a "cognizable defense" to patent infringement and reminding defendants that a patent is not invalid simply because the PTO erred in issuing the patent.

Enumerated Defenses in Litigation: Section 282 of the Patent Act defines the defenses available against charges of patent infringement. These enumerated defenses include:

  1. Noninfringement …,
  2. Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,
  3. Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title.
  4. Any other fact or act made a defense by this title.

In its analysis, the Federal Circuit found that improper revival did not fall within any of the four categories of defenses - and thus cannot be raised as a litigation defense. The case implicitly calls into question other traditional defenses such as nonstatutory double patenting, improper inventorship. IGT argues that the decision also implies that a defendant could not challenge a patent based on its expiration due to failure to pay maintenance fees. Of course, a defendant should have some mechanism for challenging an improperly revived patent - either through the courts or a post-grant procedure at the PTO. Under the Federal Circuit's rule, however, a typical defendant would have no recourse. (Two potential avenues could be (1) inequitable conduct in the revival and (2) trigger an interference.)

Leaving the PTO's revival grant's unchallengeable is particularly troublesome because of the serious lack of transparency in the petitions office. Pre-grant revivals are tucked away in individual prosecution file wrappers and cannot be searched in any public database. Thus, the public is left without any check on the system at either the micro or macro level.

Petition for Certiorari: IGT has petitioned the Supreme Court for a writ of certiorari and has garnered the support of the group of usual defendants (Cisco, Dell, Google, Microsoft, etc.) with the simple question:

Whether a patent infringement defendant may assert as a defense the fact that the patent resulted from an abandoned application that was not revived according to the requirements prescribed by Congress.

In several ways, this cases parallels the other recent Supreme Court patent cases such as KSR, eBay, and MedImmune. At least as history tells the story, each of those cases began with a rigid rule created by the Federal Circuit to favor patent holders. In each case, the Supreme Court softened the rule to add flexibility in a way that favors the defendants. In KSR, the rigid TSM test for applying multiple references during obviousness analysis was relaxed. In eBay, the rule strongly favoring injunctive relief was relaxed. And, in MedImmune, the rule setting a reasonable apprehension of a lawsuit as a condition precedent to a declaratory judgment action was also relaxed. In the IGT case at hand, the Supreme Court has the opportunity to tear down another rigid application of the law and open a new avenue for defendants to challenge a patent holder's rights.

Invalidity of the patent or any claim: Although slightly off-topic, I am intrigued by the wording of Section 282, which creates the defense of "invalidity of the patent or any claim." (Emphasis added). Ordinary validity issues focus on individual claims. Is the claim anticipated or obvious? Is the claim definite, fully described, and enabled, and does it properly claim patentable subject matter? The general focus on the validity of claims begs the question of what we mean by "invalidity of the patent." IGT's theory of invalidity based on improper revival is bolstered here because it would breathe meaning into the statutory invalid "patent."

Aristocrat's opposition and any amici in opposition are due April 22.

Briefs:

Related Posts:

Tuesdays with Aaron

12:01 am on Tuesday morning is a special time for patent attorneys. That is when the USPTO releases the newest batch of issued patents. Usually, over 3,000 issue each week.

Patent Attorney Aaron Feigelson (Leydig Voit firm) has started a great new blog: 1201tuesday.com covering PTO events. Aaron writes with an eye toward patent prosecution and does a good job of finding examples from recently issued patents that raise important practice issues. He has also been closely following the aftermath of Bilski. Aaron describes his project as follows:

I started regular weekly monitoring of issued patents a few years ago for some particular client-related matters, but my intrigue grew after stumbling upon certain patents, unrelated to client matters, with stories that were too interesting to keep to myself. Like U.S. Patent No. 6,097,812 and its 67-year prosecution history (thanks to a very long lasting secrecy order). Or U.S. Patent No. 7,472,070 for a seemingly innocuous grain aeration system — but granted to Microsoft, that well-known player in agricultural technology. Or trends, like the trickling-off of issuances to applications filed the first week of June 1995 (when there was a pre-GATT filing surge). Or Jerome Lemelson being granted U.S. Patent No. 7,343,660 more than a decade after his death, with priority going back over fifty years to 1954.

Lately, my attention has turned to the fallout from the Federal Circuit’s recent decision of In re Bilski and its effect on patentable subject matter under Section 101. In particular, I was curious (to aid my own practice) to see what sorts of claims had been allowed pre- and post-Bilski, and what techniques applicants had used to address or circumvent the machine-or-transformation test. I began sending my weekly findings internally to a few attorneys in my firm. Then to a few more. Then to a few more..

After a few months of these “Bilski Watch” emails, this blog was created.

I enjoyed Aaron’s recent post regarding patents issuing from applications filed in early June 1995 – just before the patent term reference was switched from the issue date to the filing date.

Notes

  • For those of you who don’t know, the IP blogging community is rather inter-connected. For instance, Aaron Feigelson was a 2L at UChicago Law when I started there as a 1L. He was also a summer clerk at the MBHB firm. I started at MBHB soon after Aaron left and actually took over his desk and sat next door to his classmate Aaron Barkoff of the Orange Book Blog. Also at the MBHB firm are the PhD’s who blog at Patent Docs (both Aarons hold PhD’s as well). I interviewed at Matt Buchanan’s (Promote The Progress) former Chicago firm, which is just across the Chicago River from Feigelson’s office. Matt has participated in several business ventures with Steve Nipper (Invent Blog) and Doug Sorocco (PHOSITA). Matt and I are also working on a project for this fall. My old firm also paid for my patent bar review course with PLI partially taught by Gene Quinn (IPWatchdog). I could continue…

Best Practices for Trade Secret Protection

I recently attended a conference of senior corporate patent counsel. Much of the discussion focused on cost savings in a tight economy. In patent prosecution, this process has been going on for years by limiting prosecution fees and filing abroad only on important cases. Part of the discussion focused on short-term mechanisms to push off cost – such as using provisional and timing PCT applications.

New Focus on Trade Secrets: One alternative suggested is increased reliance on trade secret. Trade secrets are relatively much cheaper than patents. Trade secret protection is automatic so long as sufficient steps are taken to keep the secret and the secret is economically valuable. Patent filings are dropping and many companies are taking a harder look at trade secret law as a mechanism to at least temporarily protect rights.

The public benefit of public disclosure is often touted when comparing patents with trade secrets. Patents require public disclosure with the aim of promoting the flow of ideas and information. Trade secret laws prohibit disclosure.

The private benefit of private disclosure: Anyone who has practiced trade secret law intuitively knows that patents naturally create additional information benefits that I call “private disclosure.” I note two of these benefits below: The benefit of defining rights

Value of Defining Rights: Despite serious problems with claim scope unpredictability, patents do a good job of explicitly stating the rights being claimed. Defined rights can be sold, traded, and accounted-for both externally and within the company. And, patent law facilitates a process for looking at by-product innovations to consider whether they should be pursued. These benefits flow from Coase’s work on property rights. Although trade secrets can also be well defined, trade secret law does not require explicit pre-identification nor does it provide such a mechanism. Rather, in most cases, a company’s knowledge about its own trade secret information is left nebulous and largely undefined.

Employee Relations: The patent system also creates a nice mechanism for managing employee relations. Inventors typically have a duty to assign all their work-related inventions to their employer. However, that duty is crystalized when the inventor files an oath and an assignment of rights. Often, the inventor gets a cash bonus at that point as well. Although the inventor already had a duty to assign, the actual assignment is important psychologically – to ensure that all the parties agree who owns what. Typical trade secret practice does not involve any explicit acknowledgment of the trade secret nature of particular innovations and information. Some companies attempt an end-of-employment statement that This is important because most trade-secret practice involves former employees using inside knowledge to benefit a competitor.

Best Practices for Trade Secret Law: Most companies have invention disclosure programs, but few of them link those disclosures to trade secret practice. Notably, when a company decides not to pursue patent protection, a process of assignment (and possible small bonus) should still be followed to ensure that the creator understands that the innovation belongs to the company and is not being given to the public. Likewise, companies may consider implementing broader innovation identification programs that encompass both patentable inventions and trade secret information.

Notes:

  • One query: In the US, trade secret law is state specific – although most jurisdictions follow the Uniform Trade Secret Act. Do any jurisdictions have a “working” requirement for trade secret? Take the situation where a company employee creates a new product, but the company decides not to pursue the product and it just sits in the file cabinet?
  • China: In the US, the commercialization of trade secrets will block the user from later obtaining a patent on the otherwise secret information. A Foley & Lardner report by Sharon Barner and Hal Wegner indicates that under Chinese law, there commercialized trade secrets may still be patented. Is this true in other FTF countries?

Patently-O Bits and Bytes No. 100

  • PTO Director: Commerce Secretary Locke has been confirmed as Commerce Secretary. Congratulations. With patent attorney blinders - the next step is to solidify the PTO leadership positions. Leading candidates include Todd Dickinson and David Kappos (IBM). Dickinson is an old-guard Clinton supporter. Kappos was an Obama donor.
  • Drop in Filing?: I recently relayed an apparent quote from the PTO General Counsel James Toupin reporting a 16% decrease in new patent filings. Toupin and the PTO have since rejected that number as a large overstatement and have indicated that they will provide better numbers shortly. The bottom line is still true - the PTO is experiencing a cash-shortfall and is cutting its own budget wherever it can.
  • Fee Increases: Dramatically shifting its position, the IPO has announced that it opposes "any significant increase in USPTO patent fees in the near term."
  • IP Primer: The Dickstein Shapiro firm has released a new version of its IP Primer (free, but you have to give a name).
  • Patent Reform 2009: The Senate Judiciary Committee holds the ball on patent reform and is set to meet again to discuss mark-ups on March 31, 2009. Lobbying will be heavy during the next week to define the center "consensus" ground. Quinn; IPWatch.

Independent Inventors: Five Ways to Reduce the Cost of Patenting and Get a Better Patent Application

Patent Attorney Mark Bergner provided the following five points that may help independent inventors control the cost of their patent application.   

Many small inventors contact me for preparing a patent application and asking that costs be kept to an absolute minimum. Recognizing that most such inventors do not have a great deal of money, I usually offer the following advice:

1) Provide me with the best write-up that you can up front with some illustrative (even hand-sketched) diagrams, along with any design documents you may have.

Often, inventors will provide a one-page summary or a sales brochure of their invention that leaves out a significant amount of detail. It is going to drive up costs if I have to drag each and every relevant aspect of the invention out. Additionally, there may be ample design documents that are provided to me after a significant amount of work has already been done. It will take much more effort for me to integrate this newly added information with a nearly complete draft specification than it would have taken if all information had been provided up front.

2) Try to do as much of the work as you can yourself.

I tell clients that I am knowledgeable in patent prosecution, but generally not knowledgeable about the subject matter of the invention. It will cost considerably more if I am required to do extensive research in the field of the invention in order to fill in a sparse invention disclosure. I will often point inventors to a patent in their general field and suggest that the detailed description and figures shown in the patent provide roughly the level of detail needed for their patent application. While I am not expecting draftsman-quality drawings and use of the words “wherein” and “said” in their description, I am expecting something more than a 3-block single figure illustrating a complex client-server architecture.

Also, there are many inventors who are wonderful technical people, but simply cannot communicate well in writing (that’s why they majored in physics and not journalism). It might be a good idea for such an inventor to work with someone (under a confidentiality agreement) who can write well to prepare an initial description. I had an inventor who enlisted the support of a graduate student at a significantly lower hourly rate than I charge. Although I can get all of the relevant information by talking with the inventor in person and over the telephone, if that is the sole means that I have of obtaining descriptive information, it is going to cost more. If the inventor has difficulty in communicating ideas and concepts both in writing and orally, it is going to be a very expensive patent application–no two ways about it.

3) Provide me with a nearly completed concept of the invention.

Nothing drives up costs more than to have the inventor continue to invent as the application is being drafted. One common issue: if a patent attorney does a good job with the subject matter, the draft of the patent application may be the first time the inventor has ever seen his idea expressed in such a clear and organized manner. This may spawn the inventor to come up with alternate embodiments or to provide other features that might prevent a design-around. While I generally expect some minor refinement of an inventive concept during the course of preparing the application, the addition of completely new or different embodiments will substantially increase costs.

4) Answer any questions provided in a draft clearly and completely.

Often I will prepare a draft application with a number of questions or comments, requesting clarification or additional detail. Some questions are intended to solicit lengthy responses, but only a bare minimum is provided or, worse, the information provided is completely non-responsive. Example: “You indicated that a series of messages flow between the client and server in order to implement the invention, but you have not provided any description as to what these messages are or what they contain. Can you please provide me with a detailed description of these, possibly with a table or diagram?” The entire reply received back: “The messages contain information that allows the server to act on client requests.” Very often I have an inventor who promises to do most of the work themselves, only to put forth a minimal effort when asked to provide additional information.

5) The costs of obtaining a patent, even a relatively complex one, pale in comparison to the costs you will encounter in trying to commercialize your product.

I know I’m in trouble with an inventor if I throw out a fair cost estimate for preparing an application and the inventor breaks out in a cold sweat and starts suggesting a cost that is 50% of the estimate. It’s one thing for an experienced business professional to haggle for lower costs, but in most situations involving the individual inventor, there is a significant lack of appreciation for what it will cost to do prototyping or pilot production runs, legal costs associated with non-disclosure agreements, trademarks, production and supply agreements, Underwriters Laboratories certification, FDA approval, etc. In the vast majority of cases, it is very expensive to bring an inventive idea to the marketplace, and the patent costs are typically a minimal part of those costs. If the inventor is not prepared for the entire undertaking, he is probably not going to willingly and cheerfully pay the bills, regardless of the quality and efficiency of the work done.

Dear Patently-O: How Do You React to the Following Letter

Dear Mr. Crouch:

I am a solo physician and inventor. I am wondering if you can point me in the generally right direction to resolve this issue.

I went to a large, well-respected, nationally-known firm to file a patent application for an invention. The invention is not that complicated. It’s mechanical rather than electrical or chemical; in fact, I can make prototypes in my kitchen fairly quickly. The invention mostly relies on a new combination of existing devices/technology.

My attorney knew from the start that I am a solo inventor and under a tight budget. The final fees were astronomical. I paid them at the time because the lawyer had obviously worked hard and I had agreed to pay the hourly rate she had quoted. However, I recently discovered that the application is much, much longer than patents of similar complexity, and the fees I paid are much higher than for similar patents.

To give you a comparison, based on a word count, my patent application was literally twice as long as Dean Kamen’s patent for an early Segway device in 1994. My fees were three times as high as another firm (Cooley Godward) says to expect for fees for most routine patents (other than for complex patents such as biologics, pharmaceuticals, etc.).

My current plan is to go back to this attorney and have a frank discussion with her, and to ask for a partial refund. If she refuses, I plan to go to the state bar and file a complaint.

Is this the right way to go about this? Are there any precedents for recovering fees in this sort of situation in a way that won’t tie me up in further legal fees?

Many thanks,

____ ____ M.D. (anonymized at the author’s request)

Book Review: Patent Interferences as High Drama!

By Charles L. Gholz

Patent interferences are intellectually stimulating and often a lot of fun–at least for the attorneys involved. However, I've seldom thought of them as "capable of producing a hell of a good story," which is the author's assessment of the story he tells in Taylor, LASER: The Inventor, The Nobel Laureate, and The Thirty-Year Patent War. Of course, the laser was unquestionably one of the great inventions of the Twentieth Century, and the fact that the issue of who invented it (Prof. Charles Townes or his grad student, Gordon Gould) provided gainful employment for patent attorneys for thirty years certainly commends this book to the readership of this publication.

Actually, "gainful employment for patent attorneys" better describes the situation of those who supported Prof. Townes's claims than the situation of those who supported Mr. Gould's claims. (Tellingly, Gordon Gould never did get his doctorate.) However, the fact that those who worked for Mr. Gould "on the cuff" for many years were ultimately amply rewarded makes it a heart-warming story for most of us.

Moreover, the professor/grad student controversy is a familiar one–and one that is usually difficult for even the best intentioned objective observers (including members of the interference bar) to sort out. Just as "mistakes were made" during the Reagan administration, an "invention was made" while Gordon Gould was working for Prof. Townes. But who made it? According to this book (and according to the final judicial determination), Gordon Gould made at least part of the overall invention of the laser—a part which was essential to the commercialization of lasers. However, I've been involved in enough of these disputes to suspect both that the final judicial determination could have gone the other way and that, if that had happened, an equally plausible (and interesting) book could have been written about Prof. Townes.

What made this book particularly entertaining for me was the fact that many of the principal players in the drama (judges, Patent Office officials, and lawyers) are still alive or have been within recent memory. It's always fun to read about folks you know and to realize that they were involved in a truly historic controversy.

In addition, the parts of the story concerning Gordon Gould as a prickly, overly suspicious "basement inventor" rang true for me. Most of us have dealt with some of those in our time at the bar, and it's never easy.

On the negative side, however, I should warn prospective readers that the manuscript was apparently not read by a patent lawyer—let alone by an interference specialist. It is replete with legal howlers! However, if one reads it with the proper attitude, noting those howlers is part of the fun.

Patently-O Bits and Bytes No. 98: Economic Downturn and the PTO

Marketers see an economic downturn as a time to emerge with a new business paradigm. Better start working.

  • Hearsay: A Patently-O reader paraphrased the PTO's James Toupin who spoke at a recent USC conference: "New patent filings are down 16% so far in 2009." Patents were previously thought to be rather inelastic to price. There is a confluence of issues: (1) downturn in the US economy reducing cash-on-hand and a strong dollar discouraging foreign investment; (2) Increased PTO bureaucracy making it more difficult to obtain a patent with a valuable scope; (3) increased in patentability standards making it more difficult to obtain patent protection; and (4) decreased potential returns in litigation.
  • PTO Budget: The falling numbers has the PTO worried about its budget. I would say that the falling numbers are signs of much larger worries than just the PTO budget.
  • PTO Cuts: PTO Director Doll was previously reported as saying that the PTO has stopped hiring.
  • PTO Cuts: Now, the PTO has announced that all legal and technical studies programs have been suspended because of "budget constraints." One PTO reader noted that the Examiner's Union (POPA) knew about the cuts to this cherished development program for the past week, but remained silent.
  • Superduperextraordinary: CCIA calls for further tightening the standard for patentability. (Via Greg Aharonian)

Federal Circuit Awards Sanctions for Frivolous Appeal

E-Pass v. 3Com, Palm, Visa, et al. (Fed. Cir. 2009)

This litigation began in 2000 when E-Pass sued for infringement of its electronic credit card patent. Patent No. 5,276,311. The district court granted summary judgment of non-infringement, which was affirmed on appeal. The district court then found the case exceptional under 35 U.S.C. § 285 and awarded attorneys’ fees to the defendants. E-Pass appealed that judgment. In a counter-motion, PalmSource also asked for attorneys fees for the appeal – arguing that the appeal was frivolous as well. The Federal Circuit affirmed the trial court without opinion, but wrote an extensive opinion finding a frivolous appeal.

Frivolous Appeal: An appeal is frivolous if the appellant fails “to present cogent or clear arguments for reversal.” In addition, the court may award sanctions based on misconduct or misrepresentations to the appellate court.

Here, the court found that E-Pass did not present any specific argument relating to the attorney fees for one of the defendants – PalmSource. Instead, the plaintiff-appellant focused on its case against the other defendants. E-Pass did not “challenge any finding of the district court relating to litigation misconduct in the case against PalmSource.” Furthermore, E-Pass did not change its strategy even after being notified of PalmSource’s frivolous appeal argument. Adding to E-Pass’s problems are “multiple misrepresentations” to the Federal Circuit – primarily in referring to the defendants collectively when each stood in different situations. Perhaps the straw-that-broke-the-camel’s-back was E-Pass’s use of the quote that “a trial court may only sanction the patentee if both the litigation is brought in subjective bad faith and the litigation is objectively baseless.” With the help of PalmSource and the CAFC clerks, the court easily found that a critical exception to the sanctions rule had been left off. Notably, the full quote reads: “Absent misconduct in the litigation or in securing the patent, a trial court may only sanction the patentee if both the litigation is brought in subjective bad faith and the litigation is objectively baseless.”

Sanctions and attorney fees granted against E-Past and its counsel, jointly and severally.

In dissent, Judge Bryson saw serious misconduct, but would not have imposed sanctions.

Accepting that in those regards E-Pass’s briefs on appeal fell short of the standards we expect of counsel in this court, I nonetheless conclude that the shortfall is not so egregious as to call for the imposition of sanctions.

Inequitable Conduct Based on Failure to Submit Rejection in Co-Pending Case

Larson Mfg. Co. v. Aluminart Products Ltd. (Fed. Cir. 2009)pic-15.jpg

In an earlier post, I discussed the concurring opinion in this case where Judge Linn argued for a restatement of the law of inequitable conduct that makes it more difficult to allege inequitable conduct absent evidence of fraud. This post covers the majority opinion.

Larson sued Aluminart for infringement of two claims of its patent covering a storm door with a moving glass panel. Without reaching the merits of the infringement argument, the district court found the patent unenforceable due to inequitable conduct during prosecution. The district court found that the patentee had improperly withheld documents from the examiners during reexamination of the patent. (The reexamination had been requested by Aluminart). The Federal Circuit provided the following description of the lower court holding:

The [district] court found that Larson failed to disclose to the Reexamination Panel three items of prior art and two office actions issued in the prosecution of a continuation application that grew out of the application that resulted in the ’998 patent [the patent being reexamined]. The court rejected Larson’s argument that the three items of prior art were cumulative of prior art which already was before the Reexamination Panel and therefore were not material, as well as its argument that the office actions were not material because all of the critical references noted in them already had been disclosed to the Reexamination Panel. After finding that Larson intended to deceive the Reexamination Panel, the court balanced its findings of materiality and intent and found inequitable conduct.

On appeal, the Federal Circuit vacated the holding and remanded for a potential new trial on inequitable conduct.

The inequitable conduct charges stem from the PTO's parallel examination of both the reexam of the patent in suit and a continuation application. During the reexam, Larson's patent attorney submitted hundreds of references, district court proceedings, and disclosed the co-pending continuation. However, the patent attorney did not cross-cite two office action rejections from the continuation or one of the prior art references from the continuation (although every other reference from the continuation was cited). In addition, the attorney did not cite two marketing configuration sheets that were later uncovered during discovery.

Law of Inequitable Conduct: Inequitable Conduct requires clear and convincing evidence of at least a threshold level of evidence that the applicant both (1) "made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information" and (2) by that act "intended to deceive the PTO." The materiality of the action is determined based on a reasonable examiner standard – what would a reasonable examiner "consider important in deciding whether to allow the application to issue as a patent?" If an unsubmitted reference is cumulative to information already on hand, then it will not be seen as material. Proof of intent to withhold a reference is not sufficient. Rather, the evidence must show intent to deceive the PTO. That said, intent may be proven by circumstantial evidence. After finding both threshold materiality and intent, the court must determine if the proof is sufficient to find inequitable conduct and consequently hold the patent unenforceable.

What is Cumulative?: After reviewing the submitted and unsubmitted prior art references in detail, the Federal Circuit found that the lower court had clearly erred in finding the art non-cumulative. Notably, the only features found in the non-submitted art that were not in the submitted art were "irrelevant to the claim limitations at issue and therefore could not support a finding of materiality and non-cumulativeness." Although the unsubmitted prior art included a different embodiment than the submitted reference, that difference was not important because the claims were broadly drafted in a way that cover both embodiments.

Disclosure of Office Actions in Related Cases: The examiner of the co-pending continuation filed four office action rejections. The first was used as the basis for the reexamination request. The second was used as a basis for an initial rejection in the reexamination. However, the patentee did not submit the third or fourth office action for consideration. The Federal Circuit agreed with the lower court that the office actions should have been submitted because the rejections contained "adverse decisions about substantially similar claims" that were "not cumulative" to materials already submitted to the examiner.

Because the Third and Fourth Office Actions contained another examiner’s adverse decisions about substantially similar claims, and because the Third and Fourth Office Actions are not cumulative to the First and Second Office Actions, the district court correctly found the withheld Office Actions material.

In its analysis, the Federal Circuit reviewed Dayco Products where it found the patentee had wrongly withheld rejections from co-pending applications.

In Dayco Products, the patentee failed to disclose rejections in a copending application of claims “that were substantially similar in content and scope to claims pending in the applications that issued as the patents-in-suit.” 329 F.3d at 1367. We held “that a contrary decision of another examiner reviewing a substantially similar claim” was material. Id. at 1368. We further explained that, because a “rejection of a substantially similar claim refutes, or is inconsistent with the position that those claims are patentable, [the] adverse decision by another examiner . . . meets the materiality standard.” Id.   

Thus, on remand, the district court must determine whether the patentee failure to submit the two office actions was done with sufficient intent to deceive the PTO. Although seemingly dicta, the Federal Circuit provided four points of explicit guidance to the lower court. First, the district court need not accept any additional evidence; Second, the court should remember that "material does not presume intent, and nondisclosure, by itself, cannot satisfy the deceptive intent element." Rather, if intent is inferred, it must be "the single most reasonable inference able to be drawn from the evidence." Further, intent cannot be inferred based on a decision to withhold if the patentee has plausible legitimate reasons for withholding. Third, good faith on behalf of the applicant must be considered as it "militates against a finding of deceptive intent." One element of good faith here, may be that the patentee notified the examiners of the co-pending application. Finally, although the Federal Circuit agreed that the office actions were material, the court did not opine on how material. Thus, if the lower court does find clear and convincing evidence of a threshold intent to deceive, the court must again determine whether the combined intent and materiality are sufficient to warrant a holding of inequitable conduct.

Notes:

  • This case is rather silly because the defendant Aluminart was closely following the reexamination. I can almost guarantee that Aluminart realized that the documents had not been submitted even before the reexamination certificate was issued. Certainly, the company could have brought the omission Larson's attention if it truly was material.

Gholz: Linking Post-Grant Review with Interference Procedure

Guest Post by Charles ("Chico") Gholz. Gholz is the head of the Interference Section at Oblon Spivak, a former chair of the Interference Committee of the AIPLA, and a frequent author on interference law and practice. I asked him to provide some thoughts on the proposed post-grant review proposals in the Patent Reform Act of 2009, telling him that I was especially interested in whether we should try to use the interference procedural structure for the new post-grant challenges.

It is my understanding that "the PTO" (actually, the PTO officials directly involved in administering interference matters—by which I mean Chief Administrative Patent Judge Fleming, Vice-Chief Administrative Patent Judge Moore, and Senior Administrative Patent Judge McKelvey) have expected the cancellation proceedings to be a species of the genus contested case and that, accordingly, they would be governed by Part 41, "Practice Before the Board of Patent Appeals and Interferences," Subpart D, "Contested Cases," of 37 CFR. To those of us in the interference bar, that makes perfect sense, since the cancellation proceedings will be very, very similar to the first phase (formerly known as the "preliminary motions phase") of patent interferences—except that only one party will be filing substantive motions.

However, proposed 35 USC 326 in both bills provides that "The Director shall prescribe regulations…" governing the post-grant review proceedings (what I'm referring to herein as "cancellation proceedings"). Apparently the drafters of the bills (who I suspect are not members of the patent bar, let alone members of the interference bar!) either were unaware of 37 CFR 41 Subpart D or felt that either additional or different rules would be required for the cancellation proceedings.

Whether the cancellation proceedings are to be governed by Subpart D or by a different set of rules is not an insignificant point. Proposed 35 USC 326(a)(3) in both bills would require the Director to prescribe regulations "setting forth procedures for discovery of relevant evidence, including that such discovery shall be limited to evidence directly related to factual assertions advanced by either party in the proceedings, and [that] the procedures for obtaining such evidence shall be consistent with the purpose and nature of the proceeding." However, while that language could be read as mandating real discovery (i.e., discovery similar to the discovery available in district courts), the bills then go on to mandate that, "In carrying out paragraph (3) [i.e., in providing the rules for discovery], the Director shall bear in mind that discovery must be in the interests of justice," which might be read a giving the PTO room to provide for only the extremely limited kind of discovery that is currently available in interferences. See Gholz, Patent Interferences – Big Ticket Litigation With No Effective Discovery, 4 Intellectual Property Today No. 9 at page 10 (1997).

Similarly, proposed 35 USC 326(b) in both bills would provide that "Regulations under subsection (a)(1) [including the regulations governing discovery]…shall provide for discovery upon order of the Director [actually, it would presumably be upon order of the APJ handling the proceedings]," indicating that, in contrast to district court procedure, the burden of showing entitlement to discovery would be on the party seeking discovery, rather than imposing on that party's adversary the burden of showing why discovery should not be obtained.

Proposed 35 USC 326(b) in both bills would also require the Director to issue regulations providing "for filing under seal exempt from publication requirements" and providing for "protective orders governing the exchange and submission of confidential information"—both of which would be sharp departures from current interference practice. See Gholz, Compelled Testimony, Testimony Abroad, and Protective Orders in Interference Proceedings Under the New Rules, 67 JPTOS 239 (1985). However, 35 USC 326(b) then goes on to say that the Director's regulations "shall ensure that any information submitted by the patent owner in support of any amendment entered under section 329 is made available to the public as part of the prosecution history of the patent." Since the "confidential information" is more likely to be submitted by the patent owner than by its adversary, I wonder how often a protective order will actually issue. Or is the point that the protective order will automatically expire upon conclusion of the cancellation proceeding?

Both the House version and the Senate version of proposed 35 USC 334 govern the effect on cancellation proceedings of decisions in other proceedings (only an infringement action in the Senate version, but either an infringement action or an ITC action in the House version). Surprisingly, both versions seem to assume that the decisions of the courts (or the courts and the ITC), on the one hand, and the decisions of the Board, on the other hand, are of identical issues—despite that fact that the party attacking a patent has a lower burden of proof before the Board and therefore might win before the Board even though it would lose before a court or the ITC on identical evidence.

In sum, I'd like to express my hope that the drafters of the two bills will consult with experts on interference law and practice, both in the PTO and in the private bar, before passing either version of the bill.

Patently-O Bits and Bytes No. 97

  • Patent Reform: Senator Kyl Introduces the alternative Patent Reform Act of 2009; This bill is more patent-holder friendly than the Leahy bill. The Leahy bill may see some action in Committee on March 26, 2009.
  • Patent Reform: Inequitable Conduct: Although a co-sponsor of the Leahy Act, Senator Hatch has suggested that the reforms should include reforms of inequitable conduct proceedings.
  • ITC: The res judicata effect of ITC Section 337 Decisions: Nil.
  • ITC Theory: John Marshall's IP Law Journal has a nice set of articles focused on ITC patent Litigation
  • Personnel: Gov. Gary Locke is President Obama's nominee for Secretary of Commerce. Barring some unknown tax snafu or AIG relationship, is expected to be confirmed quickly. In his Senate testimony he mentioned the politically correct goal of reducing the PTO backlog along with creating a foundation for long-term economic growth; improving weather forecasting, and managing our fishing industry.
  • Personnel: The PTO needs three new members of its Patent Public Advisory Committee (PPAC). Current members include Kevin Rivette (Rembrandts in the Attic), Louis Foreman (CEO / Inventor), Scott Kieff (Conservative Law Professor), Damon Matteo (PARC innovation & licensing chief), Doug Patton (inventor & industrial designer at PattonDesign); David Westergard (IP guy at Micron – Looking to water-down patent rights), Marc Adler (former Chief of IP at Rohm & Haas), Steve Pinkos (former Deputy to Jon Dudas), and Maureen Toohey (Solo practitioner; former GC of a Dean Kamen's DEKA company). I believe that Rivette, Patton, and Westergard will have reached the end of their terms this year and will be replaced.
  • The Economic Downturn: Diane Bartz has taken over writing all about patent law for Reuters. In a recent interview with John Doll, she uncovers that the PTO is projecting a 2% drop in applications in 2009. Others expect a 10% decline. The problem for the PTO is that their funding is entirely fee driven, and the agency had budgeted for a 5% increase. Along with most law firms, according to Doll, the PTO has "stopped hiring at this time."

Patently-O Bits and Bytes No. 97

  • Patent Reform: Senator Kyl Introduces the alternative Patent Reform Act of 2009; This bill is more patent-holder friendly than the Leahy bill. The Leahy bill may see some action in Committee on March 26, 2009.
  • Patent Reform: Inequitable Conduct: Although a co-sponsor of the Leahy Act, Senator Hatch has suggested that the reforms should include reforms of inequitable conduct proceedings.
  • ITC: The res judicata effect of ITC Section 337 Decisions: Nil.
  • ITC Theory: John Marshall's IP Law Journal has a nice set of articles focused on ITC patent Litigation
  • Personnel: Gov. Gary Locke is President Obama's nominee for Secretary of Commerce. Barring some unknown tax snafu or AIG relationship, is expected to be confirmed quickly. In his Senate testimony he mentioned the politically correct goal of reducing the PTO backlog along with creating a foundation for long-term economic growth; improving weather forecasting, and managing our fishing industry.
  • Personnel: The PTO needs three new members of its Patent Public Advisory Committee (PPAC). Current members include Kevin Rivette (Rembrandts in the Attic), Louis Foreman (CEO / Inventor), Scott Kieff (Conservative Law Professor), Damon Matteo (PARC innovation & licensing chief), Doug Patton (inventor & industrial designer at PattonDesign); David Westergard (IP guy at Micron – Looking to water-down patent rights), Marc Adler (former Chief of IP at Rohm & Haas), Steve Pinkos (former Deputy to Jon Dudas), and Maureen Toohey (Solo practitioner; former GC of a Dean Kamen's DEKA company). I believe that Rivette, Patton, and Westergard will have reached the end of their terms this year and will be replaced.
  • The Economic Downturn: Diane Bartz has taken over writing all about patent law for Reuters. In a recent interview with John Doll, she uncovers that the PTO is projecting a 2% drop in applications in 2009. Others expect a 10% decline. The problem for the PTO is that their funding is entirely fee driven, and the agency had budgeted for a 5% increase. Along with most law firms, according to Doll, the PTO has "stopped hiring at this time."

Patently-O Bits and Bytes No. 97

  • Patent Reform: Senator Kyl Introduces the alternative Patent Reform Act of 2009; This bill is more patent-holder friendly than the Leahy bill. The Leahy bill may see some action in Committee on March 26, 2009.
  • Patent Reform: Inequitable Conduct: Although a co-sponsor of the Leahy Act, Senator Hatch has suggested that the reforms should include reforms of inequitable conduct proceedings.
  • ITC: The res judicata effect of ITC Section 337 Decisions: Nil.
  • ITC Theory: John Marshall’s IP Law Journal has a nice set of articles focused on ITC patent Litigation
  • Personnel: Gov. Gary Locke is President Obama’s nominee for Secretary of Commerce. Barring some unknown tax snafu or AIG relationship, is expected to be confirmed quickly. In his Senate testimony he mentioned the politically correct goal of reducing the PTO backlog along with creating a foundation for long-term economic growth; improving weather forecasting, and managing our fishing industry.
  • Personnel: The PTO needs three new members of its Patent Public Advisory Committee (PPAC). Current members include Kevin Rivette (Rembrandts in the Attic), Louis Foreman (CEO / Inventor), Scott Kieff (Conservative Law Professor), Damon Matteo (PARC innovation & licensing chief), Doug Patton (inventor & industrial designer at PattonDesign); David Westergard (IP guy at Micron – Looking to water-down patent rights), Marc Adler (former Chief of IP at Rohm & Haas), Steve Pinkos (former Deputy to Jon Dudas), and Maureen Toohey (Solo practitioner; former GC of a Dean Kamen’s DEKA company). I believe that Rivette, Patton, and Westergard will have reached the end of their terms this year and will be replaced.
  • The Economic Downturn: Diane Bartz has taken over writing all about patent law for Reuters. In a recent interview with John Doll, she uncovers that the PTO is projecting a 2% drop in applications in 2009. Others expect a 10% decline. The problem for the PTO is that their funding is entirely fee driven, and the agency had budgeted for a 5% increase. Along with most law firms, according to Doll, the PTO has “stopped hiring at this time.”

Tafas v. Doll: Continuation Limits Invalid; Limits on Claims and RCEs are OK

Tafas v. Doll (Fed. Cir. 2009)

The PTO has attempted to implement new rules that limit both the number of continuation applications that may be filed and the number of claims that may be included within each application. The district court issued a summary judgment ruling that blocked implementation of the rules. On appeal, the Federal Circuit has vacated-in-part – finding that some of the limitations on continuations improperly conflict with 35 U.S.C. § 120, but that the remaining limits are "within the scope of the USPTO's rulemaking authority." The case is not finally decided. Rather, the lower court must now decided whether any of the rules are "arbitrary and capricious;" conflict with the Patent Act in ways not already addressed; violated proper rulemaking procedure; are impermissibly vague; or impermissibly retroactive.

Final Rule 78 (Continuations): The PTO's Final Rule 78 would have required that any applicant wanting to pursue more than two continuation applications file a petition "showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application." According to the court, that rule is in conflict with Section 120 of the Patent Act, which entitles the application to the filing date of a prior-filed application. In a concurring opinion, Judge Bryson noted that the conflict arises only because the limit is on the "number of continuations co-pending with the first-filed application."

Final Rule 114 (RCEs): The PTO's Final Rule 114 operated in the same way as Rule 78 except that it applied to Requests for Continued Examination (RCEs) rather than continuation applications. Because RCEs are not implicated by Section 120, the Federal Circuit found no conflict there.

Final Rules 75 and 265 (Claims): These rules would require an examination support document (ESD) for any application that includes more than five independent claims or twenty-five total claims. The ESD includes a preexamination prior art search, a list of the most relevant references and limitations disclosed by each reference, an explanation of how each independent claim is patentable over the submitted references, and an analysis of how each limitation of the claims is disclosed and enabled by the specification. The Federal Circuit found that the lower court was wrong in finding that the PTO exceeded its authority in implementing these rules.

Rulemaking Authority: The initial focus of the court's analysis is on the Rulemaking Authority of the USPTO. 35 U.S.C. § 2(b) gives the PTO authority to "establish regulations, not inconsistent with the law, which . . . (A) shall govern the conduct of proceedings in the office; . . . (C) shall facilitate and expedite the processing of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically . . . (D) may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office . . . ." The PTO is also required – under Section 132(b) – to "prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant." Although, these rules do not provide any "general substantive rulemaking power" to the PTO, the court will still grant Chevron deference to the PTO's interpretation of "statutory provisions that relate to the exercise of delegated authority."

Substantive v. Procedural: Without substantive rulemaking authority, the case turns on whether the limits are procedural or substantive. This is a difficult question to answer, and the Federal Circuit chose to follow the 1994 JEM case decided by the DC Circuit. In that case, the court found new rules procedural because they did not "foreclose effective opportunity to make one's case on the merits." With that rule as the framework, the conclusion is somewhat easy. The new rules do not "foreclose effective opportunity" – they only require justification for additional continuations and an ESD filing for additional claims.

"[A]pplicants who diligently present all of their amendments, arguments, and evidence as soon as possible during prosecution will be granted as many RCEs as they require. Thus, applications that are submitted in compliance with these timing requirements will be fully examined and given all of the benefits provided by the Patent Act. We do not believe that requiring applicants to raise all then-available amendments, arguments, and evidence by the second continuation application or the first RCE is so significant a burden that applicants will be effectively foreclosed from obtaining the patent rights to which they are entitled."

The Federal Circuit admits that the rules puts a large amount of authority in the hands of the PTO – to grant or reject petitions. However, the court took a wait and see approach: "[The courts] will be free to entertain challenges to the USPTO's application of the Final Rules." Oddly, the Court refused to hold the PTO to any of its official or unofficial public statements regarding how it will interpret the rules. "[T]hese comments do not bind the USPTO."

No Inequitable Conduct Problem: Relying on Kingsdown, the Federal Circuit noted that the ESD requirement is unlikely to cause any inequitable conduct problem for applicants. "[D]oubt about the judiciary's ability to apply its own doctrine in a way that yields fair results and discourages frivolous allegations should not preclude the USPTO from promulgating rules that are within its statutory authority."

Dissent by Rader: Judge Rader would have affirmed "[b]ecause the Final Rules drastically change the existing law and alter an inventor's rights and obligations under the Patent Act, they are substantive and the PTO exceeded its statutory rulemaking authority under 35 U.S.C. § 2(b)(2)."

Notes:

  • This case was formerly captioned Tafas v. Dudas.
  • In response to the decision, the PTO released the following statement: "The United States Patent and Trademark Office is pleased that the United States Court of Appeals for the Federal Circuit confirmed that the Final Rules are within the agency's rulemaking authority and that the rules regarding requests for continued examination, claims, and examination support documents are consistent with the law. We are further considering other aspects of the opinion, including the Federal Circuit's conclusion that the rule regarding continuations conflicts with the Patent Act."

  

Patently-O Bits and Bytes No. 96

  • Upcoming Event: ACI's 3rd Annual Paragraph IV Disputes on April 27-28, 2009 in New York City (Downtown Marriott). http://www.americanconference.com/ParagraphIV.htm . This is a good event because it is well attended by both the innovators (brands) and the generics. On the wednesday following the class, several speakers will walk through a brand-generic settlement agreement and work on mechanisms to avoid FTC & antitrust problems.  
  • PCT Search Offices: The PTO is warning PCT applicants to make sure that the selected International Search Authority (ISA) is certified for your particular type of claims. One problem, the EPO is not ready to handle business method claims. [Notice]
  • Court Report: 2,875 patent lawsuits were terminated in the year ending Sept 30, 2008. Of those, only 3.8% (109) reached trial. Although 3.8% appears low, patent cases reach trial more often than many other claims brought in Federal Court. The same statistic for Copyright and Trademark cases shows 1.3% and 1.7% reaching trial respectively. During the past year, only six patent cases were filed in the Court of Federal Claims alleging infringement by the US Government. Read the Report.

Patently-O Bits and Bytes No. 96

  • Upcoming Event: ACI’s 3rd Annual Paragraph IV Disputes on April 27-28, 2009 in New York City (Downtown Marriott). http://www.americanconference.com/ParagraphIV.htm . This is a good event because it is well attended by both the innovators (brands) and the generics. On the wednesday following the class, several speakers will walk through a brand-generic settlement agreement and work on mechanisms to avoid FTC & antitrust problems.  
  • PCT Search Offices: The PTO is warning PCT applicants to make sure that the selected International Search Authority (ISA) is certified for your particular type of claims. One problem, the EPO is not ready to handle business method claims. [Notice]
  • Court Report: 2,875 patent lawsuits were terminated in the year ending Sept 30, 2008. Of those, only 3.8% (109) reached trial. Although 3.8% appears low, patent cases reach trial more often than many other claims brought in Federal Court. The same statistic for Copyright and Trademark cases shows 1.3% and 1.7% reaching trial respectively. During the past year, only six patent cases were filed in the Court of Federal Claims alleging infringement by the US Government. Read the Report.