July 2009

Innovation Alliance Video

The innovation alliance has a well engineered video focusing on various inventor-patentees explaining the “value of a strong patent system.”

A couple of the inventors (Richard Dean, Qualcomm & Rob Smithson, Fallbrook Tech) make the argument that strong US patents preferentially generates R&D in the US.  I don’t really understand that argument. US patents are available to inventors from around the world almost regardless of where the R&D took place. As a consequence, a strong US patent regime provides a global incentive to innovate products that will be valued in the US.

Four New Job Postings on Patently-O Jobs

A 30–day job listing costs $200. Contact the Job Board manager Ryan Swarts (jobs@patentlyo.com) for more information

Statement of David J. Kappos, Nominee for Under Secretary of Commerce for Intellectual Property

Statement of David J. Kappos
Nominee for Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office
Nomination Hearing before the Senate Judiciary Committee
July 29,2009

Chairman Leahy, Ranking Member Sessions and distinguished members of the Senate Judiciary Committee, thank you for the opportunity to appear before you today. I am grateful to President Obama and to Secretary Locke for the trust they have placed in me and to you for considering my nomination to serve as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

… It is exceptional and humbling under any circumstance to have the chance to serve one's country. But it is particularly so for me as the son and grandson of immigrants – my father came to this country from Greece and my mother's parents came to the US from Italy. So, the opportunity to be here today is particularly poignant for me, as it is for my family.

If recommended by this Committee and confirmed by the Senate, I look forward to joining Secretary Locke and his team at Commerce in their mission as stewards of American economic growth, job creation and innovation.

I have spent nearly my entire professional career in the field of intellectual property law, and indeed my entire career around technology and innovation. After receiving my education from the University of California system, first in electrical and computer engineering and subsequently in law, I went to work for IBM as an intellectual property law attorney.

During my career at IBM, I have held intellectual property law positions in nearly all of its business units. I have written and prosecuted patent applications in many technical areas and I have searched the prior art files of the USPTO alongside other patent professionals, including examiners themselves. I have handled many trademark matters in the US and globally. I managed IBM's IP law interests across the Asia-Pacific region, and lived in Japan during that period. Currently and for the past six years, I have served as Vice President and Assistant General Counsel for intellectual property law at IBM's corporate headquarters. In that role, I am responsible for the management of intellectual property interests – patents, trademarks, trade secrets and copyrights – on a worldwide basis. Additionally, I have served in leadership positions in the major professional associations that represent the intellectual property law community in this country and globally, including the Intellectual Property Owners Association and the American Intellectual Property Law Association.

I care passionately about this field and the role intellectual property plays in advancing American innovation. So, it is particularly exciting for me to be considered for the position of Director of the USPTO, an organization that traces its roots to the founding fathers and their understanding that promoting and rewarding innovation is critical to our country's success.

The PTO faces many challenges. Most immediate are those resulting from the current economic downturn, the need for a stable and sustainable funding model, the need to address pendency concerns while preserving and enhancing patent quality, and the imperative to attract and retain skilled personnel at a time of fiscal constraint. Secretary Locke has personally asked me to make it my number one priority to refashion the patent examination process to meet these challenges. In carrying forward this direction, I will focus substantial personal attention within the USPTO. Additional challenges flow from a rapidly globalizing trade environment , impacting trademark and patent interests, as well as respect for intellectual property and the consequences where IP is not respected.

Longer term, the USPTO must keep abreast of the astounding pace of technological change across a broad range of scientific disciplines. It needs to understand new modes of innovation and their effect on its mission. And it will need to constantly rethink how to maintain and enhance the constitutional imperative to promote innovation and scientific advancement for the public good – both in terms of the technology confronting the Office and in terms of leveraging and applying the law to that technology.

I welcome this challenge and pledge to you all of my energy, creativity and intellect should I be confirmed. As I consider this challenge, I am mindful of several things.

I am mindful that the USPTO serves the interests of ALL innovators in this country, small and large, corporate and independent, academic and applied, and – most importantly — the public interest. While I have spent my career to date at a large corporate enterprise, I am familiar with the concerns and issues of all USPTO constituents – including small and independent inventors, the venture and start-up community, public interest groups, the patent bar and many others – and will reach out to all of them.

I am mindful of the incredible dedication of the thousands of USPTO employees, and the essential role they play to the success of the US innovation system. I will work every day with the USPTO employees and the unions that represent them to establish strong, positive relationships grounded in professional treatment for these workers producing work product based on professional judgment.

I am acutely mindful that innovation today is global and that IP policy is of paramount importance, not only in our country, but also in the EU and Japan, in China, India, Brazil and many other developing countries. I will use my international experience and my understanding of global IP trends to help this Administration represent, advance, and protect the interests of American innovators in the global arena and to lead the world in developing strong, balanced, inclusive intellectual property systems that advance the well-being of all participants.

Finally, I am mindful that the office for which I am being considered, working as part of Secretary Locke's team and within the Administration's agenda, must be intensely focused on how to serve the American people at this time of economic uncertainty. I believe the USPTO can play a significant role in enhancing economic growth, creating jobs and advancing American innovation. I hope to play a part in this important mission.

Again, I am grateful for the opportunity to address you today. I am honored by the opportunity to serve and I look forward to joining this Administration and Secretary Locke's team should I be confirmed.

I am pleased to answer any questions.

David J. Kappos

Claim Construction

PatentLawPic745Wavetronix v. EIS Electronic Integrated Systems (Fed. Cir. 2009)

Wavetronix’s patent covers a big brother sensor to monitor vehicle trafic and to ensure that drivers are properly using the carpool (high-occupancy vehicle) lane. EIS was accused of infringement but convinced the Utah-based district court to grant summary judgment of non-infringement.

On appeal, the Federal Circuit has affirmed – largely based on claim construction of the claim term “probability density function estimate” or PDFE used to define the traffic lanes.

The excerpted claim reads as follows: 1. … a method for defining traffic lanes, comprising … b. generating a probability density function estimation … of said selectable plurality of vehicles; and c. defining said traffic lanes … from said probability density function estimation.

Writing for the court, Judge Patel (sitting by designation from the N.D. of Cal.) construed PDFE to as “a finite data set large enough to approximate a function of a continuous variable whose integral over a region gives the probability that a random variable falls within the region.”

[Updated] That definition – requiring an approximation of a continuous variable – helps EIS. The EIS system can also automatically define the traffic lanes based on traffic data, but the company claims that its device does not do so with “probability analysis” but rather uses large binary bins. Based on this distinction Judge Patel held that the EIS system data is “too coarse” to be a PDFE.

Even in a close case such as this, the court held that the DOE cannot rescue the patentee because of the tight requirements of element-by-element application of the DOE and the doctrine of vitiation.

Patently-O Bits and Bytes No. 121: #Kappos

  • The Kappos recently ended. Bryan Beel tweeted.
    • Some statements as recorded by Beel:
    • Need to refashion fee system to accurately assess relationship between fees and work being done
    • “Overhaul count system” means completely remake, on orders from Secretary Locke.
    • My job is to watch out for the U.S., not IBM.
    • Should do more [to accelerate examination], wants to do more. Will submit writing.
    • I hate fee diversion. Community happy to fund PTO, even higher fees, but diversion is bad.
  • Tafas v. Dudas case appear is be suspended until Kappos is confirmed.
  • Remember to check your PTA calculation [Link] (snooze you lose).

Requester Success Rates In Inter Partes Reexamination

by Matthew A. Smith. Smith regularly updates his treatise entitled Inter Partes Reexamination (available online for free).

Much attention has been paid in the past week to the recently released PTO statistics on inter partes reexamination. These statistics show a high success rate for third party Requesters. In particular, 60% of all cases surveyed resulted in all claims being canceled.

As has been recognized by a number of observers, however, the PTO statistics are based on a sample population (the 77 issued inter partes reexam certificates) that is systematically biased. This is demonstrated by the absence of any Federal Circuit decision on the merits in an appeal from an inter partes reexamination. As a matter of logical necessity, every single one of the 77 reexam certificates resulted from a proceeding where someone either missed a hard deadline or gave up.

This has obvious implications for the PTO’s overall pendency statistics. Barring a change in the way reexams are handled, the average and median pendencies should rise as more certificates issue. The effect on Requester success rates is not so clear, however. Ideally, a potential Requester would like to have data that predict the outcome of cases that are fully contested. Do the PTO’s statistics provide that?

At the end of 2008, the author studied Requester success rates while attempting to avoid the systematic bias introduced through the use of reexam certificates. The study was done in two different ways, both of which yielded similar results. First, Right of Appeal Notices were examined. Right of Appeal Notices, although they reflect a result that is alterable on appeal, are a potentially more accurate predictor of the outcome of fully contested reexaminations. This is because the PTO will not issue a Right of Appeal Notice where there is no right to an appeal,i.e., where someone missed a hard deadline or gave up at the Examiner level.

At the time of the study, 99 such notices had issued. The results are detailed in the attached excerpt. Briefly summarized, about 47% of the cases resulted in all claims being rejected, with about 70% of all cases resulting in cancelation or amendment of all independent claims. Of course, the effect of an amendment on the Requester’s overall position is not easy to judge. An amended claim may be a victory for a Requester, but can also be a disaster if past damages are unimportant, and the Patent Owner manages amend the claims to preserve infringement while excluding prior art.

The second approach attempted to capture some of these subtleties by examining the respective probabilities that the Patent Owner and Requester will be the primary appellant. The “primary” appellant is one that files a Notice of Appeal, as opposed to a Notice of Cross-Appeal, or no notice at all. The status as the primary appellant tends to indicate a party’s subjective dissatisfaction with the result before the Examiner. This study demonstrated that appeals were initiated three times more often by the Patent Owner than by the Requester. In a significant number of cases (35%), however, no appeal was filed by either party.

The results of these studies tend to support the effectiveness of inter partes reexamination as a tool for the Requester. Such statistics may also ultimately have an impact on whether events from reexamination are admissible in court. For example, the Federal Circuit’s decision in Hoechst Celanese Corp. v. BP Chemicals Ltd.,78 F.3d 1575 (Fed. Cir. 1996), affirming a district court’s exclusion from evidence of a PTO grant of ex parte reexamination, was based on 1994 ex parte reexam statistics. This decision is still being followed by district courts, but a significant uptick in requester success rates may change the way such cases are decided.


Also on Patently-O: Inter Partes Reexamination Statistics (2009); Ex Parte Reexamination Statistics (2008)

Published Applications as Prior Art

[edited to fix my pre-coffee typos where my eyes though provisional = published]

In 2001, the USPTO published its first patent application. Since then, almost two-million patent applications have published. During this same time period, about 1.3 million patents issued. There are a couple of ways that the prior art created by patent applications change the prosecution game. First, published applications increase the sheer volume of prior art. Most notably, around ten percent of the published applications will never issue and would not have been otherwise published. And, even if published elsewhere at a later date, applicants would be faced with the later 102(a) effective date rather than the 102(e) effective date associated with a published application. This ties in with the second importance of published patent applications — they bring innovations to light more quickly and in a manner that patent examiners can readily use. Along these lines, the early publication of published applications triggers the clock for the statutory bar of 102(b).

Looking at patents issued during the past four years, I calculated the average percent of cited references that are US published patent applications. As you might expect, that figure has been rising steadily – doubling from under 6% in 2006 to almost 12% for patents issued in the early part of 2009. The evidence shows that examiners are using the patent applications. On their own examiner’s locate 41% of all cited US patent application publications even while locating only 25% of other cited references. (The remaining references are submitted by the applicant).


Note, this post was prompted by an interesting series of comments on IPWatchdog questioning whether this newly available prior art has been a factor in the dropping allowance rate.

Question on dedication of material

I’m working on compiling the data from the recent survey on antedating prior art through the use of Rule 131 affidavits during patent prosecution. I have a question for practitioners on the current state of the dedication rule.

MPEP 715 reads as follows:

An affidavit or declaration under 37 CFR 1.131 is not appropriate . . . (F) Where the reference is the disclosure of a prior U.S. patent to the same party, not copending. The question is one of dedication to the public. Note however, In re Gibbs, 437 F.2d 486, 168 USPQ 578 (CCPA 1971) which substantially did away with the doctrine of dedication.

What is the current state of the law regarding later claiming material disclosed in earlier not-copending application?

Blackboard: Federal Circuit Again Find Software-Related Means-Plus-Function Claims Invalid for Failing to Disclose Sufficient Structure

Blackboard v. Desire2Learn (Fed. Cir. 2009) 08-1368.pdf

Blackboard’s patent covers an internet-based educational support system and method. (U.S. Pat. No. 6,988,138). On summary judgment, the district court (Judge Clark, E.D. Tex.) found claims 1-35 invalid as indefinite, but a jury found found that Desire2Learn liable for infringement of claims 36-38. On appeal, the Federal Circuit agreed that Claims 1-35 are indefinite, and – after altering the claim construction – held that the remaining claims were also invalid as anticipated. pic-54.jpg

Means-Plus-Function: Blackboard’s seemingly broadest claim (claim 1) includes several means-plus-function clauses, including a “means for assigning a level of access and control.” The specification briefly discusses an “access control manager” (ACM) with an “access control list.” On appeal, however, the court found that brief description to be an insufficient “disclosure of the structure that corresponds to the claimed function” and consequently indefinite under 35 U.S.C. §112 ¶2. See In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994)(en banc).

“[W]hat the patent calls the ‘access control manager’ is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed.”

Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.

The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users’ predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the “corresponding structure” to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.

Because claims 2-35 all depend upon claim 1, they are all invalid as indefinite

Claim construction: At the trial, Blackboard’s expert could only identify one difference between claims 36-38 and the prior art. Namely, that the Blackboard patent identified a “single login” feature that allowed one user to have various roles within the system. “For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student’s role in each.” However, on appeal, the Federal Circuit determined that the claims do not actually require that feature — leading them to hold the claims invalid based primarily on the admissions of Blackboard’s own expert.

[O]nce the claims are properly construed, the conclusion of anticipation is dictated by the testimony of Blackboard’s own witnesses and the documentary evidence that was presented to the jury. Based on that evidence, and in the absence of a “single login” requirement in claims 36-38, it is clear that the prior art contains every limitation of those claims.

Defendant Desire2Learn wins a complete victory (after a few million in attorney fees).

Priority Claims in Issued Patents

Patent families continue to grow. With the increasing popularity provisional patent applications, most issued patents now claim priority to at least one prior patent filing. I created a database of all priority claims for non-reissue utility patents issued February 14, 2006 – February 17, 2009 (Pat. Nos. 7,000,000 – 7,493662). In fact, only 31% of the patents have no listed priority claims. For the graph below, I looked at the earliest listed priority date (one for each patent) and then categorized those according to the type of priority claim. 40% of the earliest claims were to foreign patent filings, and 18% claimed earliest priority to a provisional patent application. The remaining 11% earliest priorities reached back via US continuations, divisionals, and continuations-in-part (CIPs).


Centocor v. Abbott (E.D.Tex.)

Centocor v. Abbott (E.D.Tex.)

Abbott has two chances to block the $1.67 billion jury verdict while the case is still in the hands of E.D. Texas Judge Ward.

Inequitable Conduct: Because inequitable conduct is an equitable doctrine, it is determined by a judge. In this case, Judge Ward bifurcated the trial and will hold a one-day bench trial on inequitable conduct on August 4, 2009. On the 4th, parties will each have three hours of witness time and 25 minutes for argument.

Judgment Notwithstanding the Verdict (JNOV): This is unlikely in Judge Ward’s courtroom – especially here since the Judge has already denied Abbott’s motions for summary judgment.

On appeal at the Federal Circuit look for a number of different disputes, including:

  • Priority dates and anticipation: Centocor’s patents claim priority to 1991 via a series of continuations-in-part, but the claims at issue were probably not enabled until a 1994 filing. In 1993, a foreign counterpart of the original application published – becoming prior art against the 1994 CIP filing. The appeal may focus on the symmetry (or lack therof) between enablement and anticipation.
  • Damages: The damage calculation here is somewhat complex and could lead to important Federal Circuit precedent on lost profits

Inventorship: Conception does not Require Scientific Certainty; Rather, “Proof that the Invention Works to a Scientific Certainty is Reduction to Practice”

University of Pittsburgh v. Marc Hendrick (Fed. Cir. 2009) 08-1468.pdf

The patent at issue (6,777,231) relates to a method of creating stem cells from liposuction residue. In an inventorship dispute amongst former Pitt scientists, the district court held that the Hendrick was not a co-inventor. On appeal, the Federal Circuit affirmed – based primarily on the corroborating evidence found in one of the listed inventor’s laboratory notebook.

Inventorship is a question of law, although a challenge to inventorship must be proven with clear and convincing evidence. In a joint invention situation, “each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.” However, there is no requirement that the inventors actually work together; that all asserted claims be jointly invented; or that all inventors realize that they invented something.

In this case, the timeline is important: The two listed inventors had written evidence (in lab notebooks and elsewhere) from before Hendrick arrived on campus that they believed their liposuction derived stem sells could transdifferentiate into various types of cells such as bone, cartilage, nerves, and muscles. At that time, however, they were not “scientifically certain” that nerve cells had been created. And, almost certainly, the two did not have enough evidence to patent their specific claim to adipose-derived stem cells that can differentiate into nerve cells. Hendrick and his REBAR team of researchers then came along and confirmed that the “highly speculative” suggestions of the original listed inventors was indeed correct.

On appeal, the Federal Circuit held that despite the lack of scientific certainty, the invention had been conceived before Hendrick joined the team.

[Hendrick's] is premised upon a misapprehension of what it means to “know” the limitations of the claims.

Knowledge in the context of a possessed, isolated biological construct does not mean proof to a scientific certainty that the construct is exactly what a scientist believes it is. Conception requires a definite and permanent idea of the operative invention, and “necessarily turns on the inventor’s ability to describe his invention.” Proof that the invention works to a scientific certainty is reduction to practice. Therefore, because the district court found evidence that Katz and Llull had formed a definite and permanent idea of the cells’ inventive qualities, and had in fact observed them, it is immaterial that their knowledge was not scientifically certain and that the REBAR researchers helped them gain such scientific certainty.

Here, the lab notebooks were important to to show that the listed inventors had “sufficiently described to those skilled in the art how to isolate the cells from adipose-tissue … [and] thus they had disclosed a ‘completed thought expressed in such clear terms as to enable those skilled in the art to make the invention.’” Citing Coleman.


Diverging Claim Constructions

Yesterdaypic-53.jpg raised a valuable discussion on claim construction with many excellent comments on the Cotropia-Bey article. The issue is obviously important since claim construction disputes arise in virtually every attempt to enforce a patent. One problem with claim construction in litigation is that the district court follows a completely different process of claim construction than do PTO examiners. The rules suggest that the two claim construction scopes should form concentric circles with the PTO’s broad construction and the Court’s narrower construction. The reality is that it is hard to form these concentric circles — especially with complex claims. And, it is virtually impossible to form concentric circles of construction using such distinct construction processes. Instead of nested constructions, in many cases the outcome of the district court tends to diverge from that suggested during prosecution.   

It seems odd that the patent prosecution process does not focus on determining the correct meaning of the claims. The better approach may well be to allow the original examination to determine the correct meaning of claims in a way that can be followed by courts down the line. I suspect that this approach would actually lead to more valid patents — especially if examiners applied a stronger hand on issues of indefiniteness.


  • Joel Miller’s 2006 JPTOS article in the Broadest Reasonable Interpretation standard is available here.
  • Mark Lemley and Dan Burke recently wrote a paper arguing that we should admit defeat and move to a central claiming system. Their analogy is that claims might be better used as sign-posts rather than fence-posts. [Link]
  • Lemley’s 2005 article on The Changing Meaning of Patent Claim Terms is also a good read. [Link]

The Unreasonableness of the Patent Office’s ‘Broadest Reasonable Interpretation’ Standard

Chris Cotropia (Richmond Law) and Dawn-Marie Bey (King & Spalding) have an interesting draft article out on the PTO’s “broadest reasonable interpretation” standard for interpreting claims during patent prosecution. The article notes that the increase in post-grant reviews (reexaminations) running concurrently with infringement litigation raises the stakes of the PTO’s standard.

From the abstract:

Although there has been much commentary on patent claim interpretation methodology in general, very little has been written about the unique interpretation approach the Patent Office employs. The courts, starting with the Court of Customs and Patent Appeals and continuing with the Federal Circuit, instruct the Patent Office to give every applied-for claim its ‘broadest reasonable interpretation’ (BRI) during patent examination. This Article explores this special standard and concludes that not only are the previously articulated rationales behind the BRI standard severely lacking, the standard is also contrary to both the patent statutes and the concept of a unitary patent system. The BRI standard additionally allows patent examiners to avoid difficult claim interpretation issues, leads to improper and uncorrectable denials of patent protection, and is incurably ambiguous.


USPTO Annual Fee for Patent Practitioners

PatentLawPic743Hal Wegner and Harry Moatz have provided me with additional information on the $118 annual patent practitioner registration fee for FY2009.

The Office has not issued a notice to pay the annual practitioner maintenance fee for FY2009. The Office has not required payment of the fee by September 30, 2009. No decision has been made to collect the fee in or for FY2009.

Information regarding fees will be “published and sent to practitioners in advance of the due date.” Since FY2009 ends in less than 80 days (September 30, 2009), it is unlikely that any fees will be due by that date. However, the office has not publicly ruled-out the possibility of a retroactive charge.


The Effectiveness of Examiner Interviews

Often, a face-to-face discussion can help two parties resolve a sticky dispute. In patent prosecution, the patent applicant can request to sit down interview with an examiner to discuss the examiner's rejections. See 37 CFR 1.133. The interview can be face-to-face or via telephone or even video conference. Law firms located across the street from the PTO tend to tout the value of examiner interviews while those outside of DC tend to downplay their significance.

I recently created a database of about 17,000 patent applications filed 2000–2005. For each of those applications, I also have a listing of the prosecution history that indicates the timing of any examiner interview. I used this data to consider the effectiveness of examiner interviews. Note two important caveats: I did not look at the underlying documents in the file wrapper, and my data does not distinguish between interviews in person and those done at a distance.

The results: Overall 18% of applications were associated with an examiner interview. I broke the data into two groups.

Early Interviews: In what I call the "early interview" group are applications where the examiner interview took place prior to the mailing of any final office action. Applications in the early interview group had the same grant rate as those that did not have an early interview (70% grant rate of terminated cases). However, those with an interview tended to stay pending longer, and be more likely to have an RCE in the file history.

Late Interviews: In what I call the "late interview" group are applications where an examiner interview took place after a final office action was mailed. Applications in the late interview group had a much higher grant rate than did applications where a final action was mailed but the case was not subsequently interviewed. Here, 74% of those in the late interview group were allowed as compared with only 60% other applications where a final action was mailed. (+/– 3% at 95% CI).

Interviews by Organization: The table below looks at the top twenty filing organizations (as listed in the application correspondence) in my dataset based on the number of applications filed 2000-2005. For each organization, the table lists the number of applications that were interviewed, number of issued patents, percent of cases interviewed, and the percent of cases patented. (Note, this percent of patented cases includes still pending cases in the calculation instead of only terminated cases and is consequently lower than the rates reported above). Although these are organizations who filed the most applications, readers should note that they represent less than 20% of all filed patent applications.


Number of Applications in Database

Applications with Interviews

Number of Issued Patents

Percent of Cases Interviewed

Percent of Cases Patented































Harness Dickey










































Blakely Sokoloff

















































When The Infringing Device only Temporarily Meets the Claim Limitations

PatentLawPic742Gemtron v. Saint-Gobain (Fed. Cir. 2009)

The Michigan-based district court found that Saint-Gobain’s refrigerator shelves infringe Gemtron’s patent No. 6,679,573 and awarded a permanent injunction against further infringement. The shelves were unique – primarily because the glass panel shelf securly snaps into its plastic frame rather than being held by adhesives. The claims required the plastic fram to be “relatively resiliant” so that the glass could snap into place.

The claim construction issue was interesting because it focused on timing. Saint-Gobain’s plastic frame was resiliant while still warm immediately after forming. However, it quickly hardened and became brittle afterward. The accused infringer argued that the limitation “‘relatively resilient’ should not mean ‘temporarily resilient immediately after cooking in an oven and before any opportunity to cool.’”

On appeal, the Federal Circuit affirmed – finding that the purpose of the resiliance (to install the glass panel) “suggests that the claimed resilience of the frame need only be exhibited during assembly.”

There is no discussion in the specification of any purpose for or value of the “relatively resilient” structural characteristic …, other than to facilitate assembly of the shelf. This indicates that the end edge portions of the frame have the claimed structural characteristic—“relatively resilient”—if they are able to deflect at the time the shelf is assembled, to “snap-secure” the glass panel within the frame.


  • Note: The permanent injunction was affirmed without comment.

Patent Backlog

Yesterday, I posted data about patent application pendency at the US Patent Office. The following comment came from an a longtime partner at a midsized IP botique in DC:

I suppose I’m something of a lone wolf in thinking that the backlog in applications we have now is not much worse (certainly not DRAMATICALLY) worse than the backlog we’ve had all along, or at least since I’ve been in patent law. Your chart shows that 50% of application were disposed of in about 3.5 years and about 90% in roughly 6 years. When I was an examiner, back in 1990 or thereabouts, there was a lot of verbiage given to getting average pendency to 3 years – so it must have been higher than that at the time. It would be interesting, I think, to see the same analysis done for application filed one and two decades earlier then those in these charts, plotting all the data normalized to the starting date. Maybe someone has done this in a meaningful way already; but, I haven’t seen it. If the curves are the curves are substantially the same, it would put the lie to oft heard cries about a burgeoning backlog that’s crushing competitiveness and the false impression given by quoting the raw number of applications now pending.

Patent Application Pendency: Percent of Applications Still Pending

The large backlog of cases at the PTO has added greatly to the problem of long patent application pendency. There are other contributors to the problem – such as applicants and examiners unwilling to reach a compromise solution (often based on the demands of superiors).

To provide some measure of pendency, I created a database of 20,000+ randomly selected patent applications and issued patents filed 2000 - 2007. For each of case, I tallied the final status as of mid-July 2009. (Status is either patented, abandoned, or pending). Using that data, I created a chart of the percent of utility applications still pending as of July 2009. This data can be helpful for someone considering whether their still-pending application is an anomaly. Over 84% of the applications filed in 2007 are still pending (+/– 2% at 95% CI) , while less than 1% of applications filed in 2000 are still pending (+/– 1% at 95% CI).


The second chart standardizes the same data according to the amount of time in prosecution.



  • This data only includes applications that were either (1) published or (2) patented. I do not know the percentage of cases unpublished cases that are still-pending versus those that are abandoned.
  • The data presented here does not distinguish between technology centers, continuations, etc. The still-pending rates varies considerably within those different categories.
  • The pendency rate for applications filed Q4 2004 appears unexpectedly high and the rate for Q1 2005 appears unexpectedly low.. That is at least partially explained by a data collection artifact. My data sample includes a relatively large number of applications filed in late December 2004 and early January 2005 rather than being more evenly distributed throughout the respective three months.

More False Marking: Forest Group v. Bon Tool

The Forest Group v. Bon Toolpic-49.jpg

A company that falsely marks or advertises a product as patented “for the purpose of deceiving the public” can be held liable to the government for “not more than $500″ for each offense. 35 USC 292. The statute gives standing to “any person” to sue and collect one-half of the award.

Forest Group originally sued Bon Tool for infringement of its patent on stilts used primarily in construction work such as hanging drywall.   Forest’s claims were dismissed on summary judgment for lack of infringement.

Based on the court’s claims construction, It turns out that Forest Group’s stilts are not covered by its own patent either. You see, the asserted patent requires “a resiliently lined yoke” but Forest Group’s products (marked as patented) do not include that element.

The court found a false marking elements were met, but refused to find false advertising under Section 43(a) of the Lanham Act because Bon Tool did not prove that the deceptive marking was “likely to influence the purchasing decision” of consumers.

On damages, the court awarded only $500 (with $250 going to the government) because Bon Tool could point to only one factory-order of marked products after Forest Group had “knowledge” that its stilts were not covered by the listed patent.

“That single decision constitutes a single offense for purposes of calculating damages under § 292. The Court assesses a penalty in the amount of $500.00 against Forest pursuant to § 292(b).”

The case is on appeal at the Federal Circuit. Patent Attorney Paul Hletko filed an amicus brief in that appeal arguing that damages should be applied on a per-article basis. Hletko’s company Heathcote Holdings sued Church & Dwight for false marking of its Mentadent products.