August 2009

Top Patently-O Posts from the Past Year

The following is a list of the top Patently-O posts based on the number of web-visits in the past year. You'll notice that Bilski and patentable subject matter are the focus of over half of these posts.

  1. In re Bilski: Patentable Process Must Either (1) be Tied to a particular machine or (2) Transform a Particular Article, https://patentlyo.com/patent/2008/10/in-re-bilski.html.
  2. Bilski: Full CAFC to Reexamine the Scope of Subject Matter Patentability, https://patentlyo.com/patent/2008/02/bilski-full-caf.html.
  3. Bilski v. Doll: Reconsidering Patentable Subject Matter, https://patentlyo.com/patent/2009/06/bilski.html.
  4. Patent Reform Act of 2009, https://patentlyo.com/patent/2009/03/patent-reform-act-of-2009.html.
  5. The Death of Google's Patents? (By John Duffy), https://patentlyo.com/patent/2008/07/the-death-of-go.html.
  6. Bilski Briefs, https://patentlyo.com/patent/2009/08/briefs-in-bilski.html.
  7. Tafas v. Doll: Continuation Limits Invalid; Limits on Claims and RCEs are OK, https://patentlyo.com/patent/2009/03/tafas-v-doll-some-rules-valid-others-invalid.html.
  8. David Kappos: Next USPTO Director, https://patentlyo.com/patent/2009/06/david-kappos-next-uspto-director.html.
  9. Post-Bilski BPAI Approves of Beauregard Claims, https://patentlyo.com/patent/2008/11/post-bilski-bpa.html.
  10. Junk Patents, https://patentlyo.com/patent/2008/11/junk-patents.html.
  11. How should a future patent attorney choose a law school?, https://patentlyo.com/patent/2005/04/how_should_a_fu.html.
  12. No No Words: What Words do you Avoid in Patent Applications, https://patentlyo.com/patent/2009/02/no-no-words-what-words-do-you-avoid-in-patent-applications.html.
  13. BPAI Applies Bilski to Deny Patentability of Machine Claim, https://patentlyo.com/patent/2009/01/ex-parte-marius.html.
  14. Ex Parte Bilski: On the Briefs, https://patentlyo.com/patent/2008/04/ex-parte-bilski.html.
  15. Dear Patently-O: How Do You React to the Following Letter, https://patentlyo.com/patent/2009/03/dear-patently-o-how-do-you-react-to-the-following-letter.html.
  16. BPAI: "Programmed Computer Method" Not Patentable Subject Matter, https://patentlyo.com/patent/2008/11/ex-parte-hallig.html.

Fraud on the Patent Office: Federal Circuit Emphasizes Rule 9(b) Heightened Pleading Requirement for Defense of Inequitable Conduct

Exergen Corp. v. Wal-Mart Stores, CVS, and SAAT, ___ F.3d ___, 2009 U.S. App. LEXIS 17311 (Fed. Cir. 2009)

This case focuses only on procedure and does not alter the substantive law of inequitable conduct. However, it is likely to have an important impact on patent litigation by tightening the pleading requirements for anyone attempting to plead inequitable conduct.

Exergen's patents cover infrared thermometer technology. U.S. Patents Nos. 5,012,813, 6,047,205, and 6,292,685. A jury found SAAT liable for willful infringement and also awarded lost profits to Exergen. On appeal, the Federal Circuit Reversed-in-Part

Pleading Inequitable Conduct: At some point during the litigation – well after submitting its initial answer to the complaint – SAAT moved to add inequitable conduct as an affirmative defense and counterclaim. The District Court denied that request – properly holding that inequitable conduct is a form of fraud that must be pled "with particularity" under Fed. R. Civ. Pro. 9(b). On appeal, the Federal Circuit affirmed, but in the process provided guidance for how to properly plead inequitable conduct. Notably, "Rule 9(b) requires identification [in the pleading] of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO." (refrain)

  • The pleading must set forth "the particularized factual bases" that a court would rely upon to decide the substantive elements of inequitable conduct. Here, particularity should be equated with "'in detail . . . the who, what, when, where, and how' of the alleged fraud" Quoting DiLeo v. Ernst & Young, 901 F.2d 624 (7th Cir. 1990).
  • When the allegation is failure to disclose, the pleadings must "identify the specific prior art that was allegedly known to the applicant and not disclosed." See Cent. Admixture, 482 F.3d 1356.
  • When the allegation is intentional misleading of the PTO, the pleading must identify the particular misleading actions.
  • Although Rule 9(b) allows mal-intent to be "averred generally," the pleading must still "allege sufficient underlying facts from which a court may reasonably infer that a party acted with the requisite state of mind."

The court found four specific failings in SAAT's pleadings:

  • WHO: Failure to "name the specific [duty bound] individual … "who both knew of material information and deliberately withheld or misrepresented it."
  • WHAT and WHERE: Failure to "identify which claims, and which limitations in those claims, the withheld references are relevant to, and where in those references the material information is found."
  • WHY and HOW: Failure to provide evidence of materiality by, for instance, identifying the claim limitations absent from information of record.
  • SCIENTER: Failure to allege facts that "give rise to a reasonable inference of scienter, including both (1) knowledge of the withheld material information or of the falsity of the material misrepresentation, and (2) specific intent to deceive the PTO." Rather, the pleadings merely state that "Exergen was aware" of the prior art without explaining that a particular duty bound person was aware of the relevant portion of the reference.

SAAT based its inference of deceptive intent on the fact that the patentee had cited a particular prior art reference during prosecution of only one of the three patents. The court rejected that factual description – finding it insufficient even for the pleadings:

SAAT's purported basis for inferring deceptive intent is that Exergen had cited the '998 patent when prosecuting the '205 patent but then failed to cite it when prosecuting the '685 patent. The mere fact that an applicant disclosed a reference during prosecution of one application, but did not disclose it during prosecution of a related application, is insufficient to meet the threshold level of deceptive intent required to support an allegation of inequitable conduct. Indeed, SAAT's pleading does not contain specific factual allegations to show that the individual who had previously cited the '998 patent knew of the specific information that is alleged to be material to the '685 patent and then decided to deliberately withhold it from the relevant examiner.

The mere fact that an applicant disclosed a reference during prosecution of one application, but [*45] did not disclose it during prosecution of a related application, is insufficient to meet the threshold level of deceptive intent required to support an allegation of inequitable conduct. Indeed, SAAT's pleading does not contain specific factual allegations to show that the individual who had previously cited the '998 patent knew of the specific information that is alleged to be material to the '685 patent and then decided to deliberately withhold it from the relevant examiner.

Although the Federal Circuit affirmed the fraud-pleading holding, it also reversed the final judgment – finding one patent invalid and the other two not infringed.

Dependent Claim Improperly Held Obvious (When Independent is Nonobvious)

PatentLawPic746Callaway Golf v. Acushnet, 2009–1076 (Fed. Cir. 2009)

Inconsistent Verdict: The jury found eight of Callaway’s golf ball claims valid – all except for dependent claim 5. According to the jury, that claim was obvious even though the broader independent claim was nonobvious.

On appeal, the Federal Circut vacated – holding that the jury verdict was “based upon irreconcilably inconsistent jury verdicts.”

Although it is true that the jury found “without reservation” that eight claims were not invalid, it is equally true that the jury found claim 5 invalid without reservation. Moreover, the evidence at trial was such that the jury could have rationally reached either verdict with regard to the asserted claims; neither party was entitled to judgment as a matter of law.

Testing Evidence: The Federal Circuit also found fault with Judge Robinson’s exclusion of evidence regarding test balls that Acushnet created based on a prior art reference and used in its anticipation argument.  The problem was that the test ball design was not fully described within a single prior art reference. However, on appeal, the court found that the needed disclosures may have been properly incorporated-by-reference within the prior art.

Material not explicitly contained in the single, prior art document may still be considered for purposes of anticipation if that material is incorporated by reference into the document. (Quoting Advanced Displays, 212 F.3d 1272 (Fed. Cir. 2000).

For anticipation purposes the incorporation-by-reference must clearly identify the material being incorporated.  Here, the court found that the prior art had done so sufficiently by referring to “foamable compositions” to be found in the incorporated reference.

Making a Federal Circuit Case of That?

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Guest Post By Andrew J. Dhuey

Welcome to the first installment of Making a Federal Circuit Case of That? – an occasional peek at some unusually entertaining cases before the U.S. Court of Appeals for the Federal Circuit. 

Our first case is Cornish v. Doll, argued on August 3, 2009. If you clicked the preceding link, you already know the unhappy ending for Mr. Cornish: a Rule 36 affirmance without opinion. Still, Mr. Cornish had his morning in court, and what a 25-minute session it was (audio file).

Mr. Cornish is an attorney who lost his right to practice patent prosecution before the PTO in 1995. Before he took the podium, Judge Rader quietly – but not quietly enough – prepared his fellow jurists for a bumpy ride:

0:19      JUDGE RADER (whispering to another judge): Fasten your seltbelt. 

0:20      CHIEF JUDGE MICHEL: Yeah. Heh.

Safely buckled up, the judges heard Mr. Cornish explain what his case was about: free speech, religious freedom, Tafas v. Doll, continuing legal education, the patent bar exam, a name change in gratitude to God, and Olympic swimming. Mr. Cornish is an ardent opponent of the limits on continuation applications and claims at issue in Tafas.  His 39-claim amended complaint suggests that Mr. Cornish dislikes numerical limits, generally.

The opening minutes of oral argument revealed much confusion about what Mr. Cornish was appealing and what he sought in relief. He seemed at least as interested in discussing Tafas as he was his own loss of eligibility to prosecute patent applications:  

4:43      JUDGE LOURIE: How have you been damaged? This has nothing to do with Tafas.

4:50      MR. CORNISH: Well, if you would allow me to just mention the final rules, which is my concern.           

4:57      JUDGE RADER: Well they’re not the concern of the court in this case. We have that case before us in another sense. We’re interested in you, and what reason you think you have for damages, and you have no stake whatsoever in the Tafas case, so please tell us about something that’s relevant to this matter. 

5:18      MR. CORNISH:  Alright, the reason why I was interested in Tafas is because it… 

5:25      JUDGE RADER: I just said you have no interest in Tafas, tell us about this case.

With the focus back on Mr. Cornish’s personal grievance with the PTO, he explained that he changed his name around the time that the PTO removed him from its list of active patent attorneys:

6:52      MR. CORNISH: My name was Cornell D. Cornish. I went to the court…

6:58      JUDGE RADER: Yes, I know, you’re now Judge Cornish.

Some of the confusion in Mr. Cornish’s case concerned how he took and failed the patent bar exam three times after the PTO had declared him ineligible to prosecute patent applications. If, as Mr. Cornish contends, he was never properly removed from the PTO’s list of patent practitioners, then why did he sit for the patent bar exam three times?   

7:35      JUDGE RADER: Well now we come to 2005, they tell you if you’re to be readmitted, you must take the [patent] bar, and you agree with that because you take it three times.

7:44      MR. CORNISH: No, sir, I don’t.

7:46      JUDGE RADER: Well why did you take the test three times?

7:47      MR. CORNISH: Simply because of CLE. I’m required in < ?xml:namespace prefix ="" st1 ns ="" "urn:schemas-microsoft-com:office:smarttags" />New York state to show that I am actively seeking to keep my status up to date.

7:58      JUDGE RADER: You’re educated by taking the tests, is that it?

8:01      MR. CORNISH: Yes, indeed, absolutely. So, I’m like Mark Phelps, who lost a race after winning five gold medals. Just because I simply didn’t get a passing grade on the exam doesn’t mean that I’m not qualified or competent.

Okay, it’s really Michael Phelps and he won gold medals in all of his eight events in Beijing, but we get the point. Even when you’ve risen to the top of the patent prosecution world (e.g., design patent for condom ring), you don’t get every answer right.

As time ran scarce, there was really only one question left to resolve: why did Cornell D. Cornish become Cornell D.M. Judge Cornish? 

23:49    JUDGE LOURIE: Question – why did you change your name?

23:53    MR. CORNISH: Well, it’s actually a First Amendment religious case because I changed my name after heart surgery and my heart stopped for one hour. And the only explanation I can find for my survival for quite a few years since is divine intervention. So I took my new names out of the Bible in thanks to God for whatever mercy He had given me. It’s much, much more than I deserve. And my name was told – I told the Patent Office I’ve changed it and it was for religious reasons. It wasn’t as they point out that I was resigning to avoid the embarrassment of disbarment. 

And with that miraculous finish, the ride came to a complete stop. So did Mr. Cornish’s appeal, which, as mentioned, the court summarily rejected the following day.

Guest Post: The Applied/Abstract Distinction is the Key to §101 Patentability

Guest Post by Polk Wagner (Professor at the University of Pennsylvania School of Law)

Mark Lemley, Michael Risch, Ted Sichelman, and I have authored an amicus brief in the Bilski v. Doll case currently pending before the US Supreme Court. (Get the full brief here [pdf].) In that brief, we argue that the Court's precedents establish that the key to eligible subject matter is ascertaining whether an idea is claimed as applied–in which case it is eligible for patentability (assuming it is not a natural phenomenon or law of nature)–or merely in the abstract–in which case it is not.

We start with the proposition that while the range of subject matter available for patenting is very broad, it is not unlimited. But the restrictions imposed by the Supreme Court, we think, have not focused on the technology, form, or physicality of the claimed invention–the critical mistake made by the Federal Circuit in Bilski. Rather, the Court has uniformly recognized that the key to eligible subject matter is ascertaining whether an idea is claimed as applied, or claimed in the abstract.

This applied/abstract distinction has a long history in Supreme Court caselaw. It can be most clearly seen in the O'Reilly v. Morse case from 1854, where the Court invalidated a claim to all communication by electrical signal as abstract, but allowed a claim to the application of the communications method to stand. 56 U.S. 62, 112-21 (1854). That is, where Morse claimed the idea of communication by electrical signal, the claim was disallowed. But the Court did uphold Morse's claim to a system (e.g., "Morse Code") that applied the communication-by-electricity idea in a practical, concrete way.

One can discern the applied/abstract thread throughout twentieth-century Supreme Court decisions involving §101 subject matter. In Mackay Radio, the Court upheld a claim to a mathematical principle (related to the reception of radio waves) as applied to an antenna, noting that "[w]hile a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be." 306 U.S. 86, 94 (1939). In Gottschalk v. Benson, the Court denied patentability to an "abstract and sweeping" claim: the mathematical conversion of binary coded decimals into pure binary format. 409 U.S. 63, 66-67 (1972). And finally, in Diamond v. Diehr, the applied/abstract approach drove the analysis–in upholding the claims, the Court noted that the subject matter was not "directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had arisen in the molding of rubber products." 450 U.S. 175, 181 (1981) (emphasis added). Indeed, in Diehr, the Court makes our argument for us:

It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. . . . Arrhenius' equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the least not barred at the threshold by §101.

Id. at 187-88 (emphasis in original).

We also argue that echoes of this applied/abstract distinction can be seen in the related-but-distinct caselaw considering the patentability of products of nature. Here, the Supreme Court has repeatedly emphasized in this context that the patent law is designed to protect applications of human ingenuity, not simply "natures' handiwork." Thus, while a man-made organism is eligible for patentability, see Diamond v. Chakrabarty, 447 U.S. 303, 310 (1980), a natural bacterium is not, see Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 131 (1948). The boundary here is neither the form of the invention nor its ability to transform nature; instead the analysis turns on whether the patent claims describe the application of human knowledge to a practical end. In this way, a claim to an abstract idea is like a claim to a product of nature: unmoored to real-world applications of human inventiveness, and thus ineligible for patenting.

Finally, we note that the applied/abstract analytic framework nicely harmonizes Section 101 with Section 112's enablement requirement. Much like Section 101, Section 112 safeguards the essential function of the patent system: the dissemination of real-world, practical human knowledge. Claims to abstract mathematical concepts (like claims to natural products or physical phenomena) violate this tenet, by failing to demonstrate that the inventor is adding to the storehouse of useful, practical human accomplishment. (Indeed, the subject matter and enablement requirements were formerly part of the same statutory section. Patent Act of 1836, Ch. 357, 5 Stat. 117, § 6 (July 4, 1836).)

In sum, we argue that the patent statutes were wisely drafted with an expansive vision of patentable subject matter. Efforts to graft judicially created limitations onto that expansive scope in the past have proven fruitless and indeed counterproductive. This Court should not impose a requirement that patentable inventions require a machine or the physical transformation of some material. It should instead maintain the rule that patents are available for anything under the sun made by man, including discoveries of ideas, laws of nature, or natural phenomena so long as they are implemented in a practical application. In short, the test should be as it has been: where an idea is claimed as applied, it is eligible for patentability, but if it is claimed merely in the abstract it is not.

Bits and Bytes No. 125: Comments on Comments

  • Gil Hyatt’s attorney contacted me this morning and asked that a few “offending” comments be removed from the post associated with his case. I agreed that they were potentially problematic and removed them. Two discuss LL’s role as an examiner of HYATT’s cases. Because Hyatt’s applications were filed before 1995, those files are likely still secret and thus should not be publicly discussed. I also removed the “sleazeball” comments. As a reminder to commenters – you may appear anonymous, but a well heeled plaintiff could probably track you down unless you take special precautions. I have thus-far successfully resisted providing any identifying information to interested parties. However, I would obey a court order.
  • For PTO Examiners who Comment Regularly. I enjoy your comments and they helpfully reveal aspects of PTO operations that would otherwise be hidden. You should, however, occasionally re-read MPEP 1701: “Public policy demands that every employee of the United States Patent and Trademark Office (USPTO) refuse to express to any person any opinion as to the validity or invalidity of, or the patentability or unpatentability of any claim in any U.S. patent, except to the extent necessary to carry out (A) an examination of a reissue application of the patent, (B) a reexamination proceeding to reexamine the patent, or (C) an interference involving the patent. “
  • Fraud not Inequitable Conduct: IPO executive director Herb Wamsley (writing as the IP LANGUAGE CURMUDGEON) argues that the term “Inequitable Conduct” is misleading. The doctrine does not follow a traditional balancing of the equities, but is seated in fraud. Thus, Wamsley “proposes scrapping the term ‘inequitable conduct’ in favor of ‘fraud,’ a term that is not very well defined in law either, but which better conveys the idea that patents should be unenforceable only if serious misconduct has been proven. If courts had to find ‘fraud’ before they could hold a patent unenforceable, perhaps they would apply the doctrine now called inequitable conduct only in cases of very clear intent and materiality” as the law requires. I think that Wamsley’s suggestion makes perfect sense.
  • IPO’s annual meeting is Sept 13-15 in Chicago: Link. Over 500 individuals (including yours truly) are already signed-up to attend this patent law powwow. This is probably the largest mixer of in-house patent counsel and patent attorneys in private practice. The only problem is the cost: IPO members pay $950; Non-Members pay $1,450; Inventors and academics pay $500.
  • Update on the Faculty Position at the University of Utah Law School200908142110.jpg : They are hiring, but may not have received your e-mail. “Due to a server switch, the email address facultyrecruitment@law.utah.edu was not functioning correctly for a few days in August. We sincerely apologize for this error. As of today, August 14th, the email address is once again fully functional. We encourage interested applicants to send their materials to us at that email address, particularly those who sent, or attempted to send, materials in the past two weeks, so that we can be sure that we received them.” [Read the Job Listing] [Klarquist Sparkman is also looking for an O-Chem Patent Attorney or Agent]

Federal Circuit Affirms High Standard for Attorney Fees under 35 U.S.C. 285

09-1045.jpgWedgeTail v. Huddleston Deluxe (Fed. Cir. 2009) 09-1045.pdf

After claim construction, WedgeTail – the patentee – filed a motion to dismiss its claims and granted Huddleston a covenant not to sue. Judge Folsom (E.D.Tex.) agreed and dismissed the case. Huddleston challenged the dismissal because it also wanted to collect attorney fees. Judge Folsom denied Huddleston’s request for a hearing on attorney fees without providing any reasoning.

The Patent Act provides for recovery of “reasonable attorney fees,” but only in “exceptional cases.” Ordinarily, such exceptional cases are only found in situations involving “inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and otherwise bad faith litigation; a frivolous suit or willful infringement.”

District courts are also given a “high level of deference” on this issue — especially when a request for fees is denied.

On appeal, the Federal Circuit affirmed – holding that the district court was not required to explain its denial (and that Huddleston had not shown sufficient evidence of an exceptional case).

Simply put, Huddleston has failed to demonstrate either that the district court clearly erred in failing to find this case exceptional or that Huddleston was harmed by the district court’s failure to entertain a motion for attorney fees. A remand is, therefore, unwarranted. . . .

Though findings on ‘exceptional case’ and reasons underlying the discretionary action on fees are helpful to an appellate court, remand should not be a matter of rote in every case in which findings and reason are not expressly set forth. (quoting Consol. Aluminum v. Foseco, 910 F.2d 804 (Fed. Cir. 1990)).

Affirmed

Notes: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. 285.

Federal Circuit Affirms High Standard for Attorney Fees under 35 U.S.C. 285

09-1045.jpgWedgeTail v. Huddleston Deluxe (Fed. Cir. 2009) 09-1045.pdf

After claim construction, WedgeTail – the patentee – filed a motion to dismiss its claims and granted Huddleston a covenant not to sue. Judge Folsom (E.D.Tex.) agreed and dismissed the case. Huddleston challenged the dismissal because it also wanted to collect attorney fees. Judge Folsom denied Huddleston’s request for a hearing on attorney fees without providing any reasoning.

The Patent Act provides for recovery of “reasonable attorney fees,” but only in “exceptional cases.” Ordinarily, such exceptional cases are only found in situations involving “inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and otherwise bad faith litigation; a frivolous suit or willful infringement.”

District courts are also given a “high level of deference” on this issue — especially when a request for fees is denied.

On appeal, the Federal Circuit affirmed – holding that the district court was not required to explain its denial (and that Huddleston had not shown sufficient evidence of an exceptional case).

Simply put, Huddleston has failed to demonstrate either that the district court clearly erred in failing to find this case exceptional or that Huddleston was harmed by the district court’s failure to entertain a motion for attorney fees. A remand is, therefore, unwarranted. . . .

Though findings on ‘exceptional case’ and reasons underlying the discretionary action on fees are helpful to an appellate court, remand should not be a matter of rote in every case in which findings and reason are not expressly set forth. (quoting Consol. Aluminum v. Foseco, 910 F.2d 804 (Fed. Cir. 1990)).

Affirmed

Notes: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. 285.

Federal Circuit Affirms High Standard for Attorney Fees under 35 U.S.C. 285

09-1045.jpgWedgeTail v. Huddleston Deluxe (Fed. Cir. 2009) 09-1045.pdf

After claim construction, WedgeTail – the patentee – filed a motion to dismiss its claims and granted Huddleston a covenant not to sue. Judge Folsom (E.D.Tex.) agreed and dismissed the case. Huddleston challenged the dismissal because it also wanted to collect attorney fees. Judge Folsom denied Huddleston’s request for a hearing on attorney fees without providing any reasoning.

The Patent Act provides for recovery of “reasonable attorney fees,” but only in “exceptional cases.” Ordinarily, such exceptional cases are only found in situations involving “inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and otherwise bad faith litigation; a frivolous suit or willful infringement.”

District courts are also given a “high level of deference” on this issue — especially when a request for fees is denied.

On appeal, the Federal Circuit affirmed – holding that the district court was not required to explain its denial (and that Huddleston had not shown sufficient evidence of an exceptional case).

Simply put, Huddleston has failed to demonstrate either that the district court clearly erred in failing to find this case exceptional or that Huddleston was harmed by the district court’s failure to entertain a motion for attorney fees. A remand is, therefore, unwarranted. . . .

Though findings on ‘exceptional case’ and reasons underlying the discretionary action on fees are helpful to an appellate court, remand should not be a matter of rote in every case in which findings and reason are not expressly set forth. (quoting Consol. Aluminum v. Foseco, 910 F.2d 804 (Fed. Cir. 1990)).

Affirmed

Notes: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. 285.

Kappos Sworn in as Director

200908140755.jpg David Kappos was sworn in on August 13, 2009 as Director of the USPTO. His address was directed primarily to USPTO employees who attended the ceremony.

My pledge to you is that I will listen, and I will work with every single USPTO employee as part of your team to understand these issues and address them so that you can reach your maximum effectiveness and achieve everything you want in your careers.

For example, I know many of you have concerns about the count system. We’re going to address the count system.

I know many of you who telework or want to telework have concerns about travel requirements We’re going to address that issue. This is a Trademarks issue; it is a Patents issue; it’s an agency issue.

I know many of you are concerned about the time your managers are able to spend helping you learn the refinements of the patent laws and guiding you in applying 35USC, 37CFR and the MPEP in your work. We’re going to address those issues too.

… The list goes on and on, as you all know better than I do. I’m here to address the whole list.

Broadly, Kappos indicated that he will focus on “reducing the backlog of unexamined patent applications, cutting pendency dramatically, working off the mounting appeals backlog[,] improving re-exam processing”, and “moving the USPTO to more sustainable [financial] footing.” Referring to the recent authorization to use trademark funds to pay for patent operations, Kappos indicated that he does not want to “actually USE that authority if there is a way to avoid it.”

Kappos also indicated that his focus will be on the “U.S. innovation community”; limiting his own overseas travel in order to serve “the best interests of our country.”

Challenging PTO Decisions in District Court: Federal Circuit Affirms Exclusion of Enablement Evidence that “Should Have” Been Raised During Prosecution

Hyatt v. Doll (Fed. Cir. 2009) 07-1066.pdf

Gil Hyatt is a prolific inventor who has spent much of his time over the past thirty years challenging the bounds of USPTO practice. This August 11, 2009 opinion marks the seventeenth Federal Circuit decision focusing on Hyatt’s patent rights in addition to the 2003 Supreme Court decision Franchise Tax Bd. of California v. Hyatt.

This Case: During prosecution, the examiner rejected each of Hyatt’s 117 computer memory architecture claims based on anticipation, obviousness, enablement, double patenting, and written description. Hyatt appealed (pro se) to the BPAI who reversed the bulk of the rejections, but affirming only the written description and enablement rejections associated with 79 claims. Hyatt then took his case to Federal Court by filing a civil action in DC District Court grounded in 35 U.S.C. 145.

At the district court, Hyatt submitted a new declaration offering additional evidence of enablement and written description. However, the district court excluded that inventor-declaration from evidence based on Hyatt’s “negligence” in failing to previously submit the information to the PTO.

On appeal, the Federal Circuit affirmed the exclusion of evidence – holding that the district court may properly exclude evidence that Hyatt should have produced to the PTO. (Chief Judge Michel as author joined by Judge Dyk)

Hyatt was obligated to respond to the examiner’s written description rejection by In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996), by explaining where in the specification support for each of these limitations could be found. . . . The Board noted, “It is far easier for appellant to describe where the limitation he wrote is disclosed than for the Office to prove that the limitation is not disclosed.” . . . Hyatt, however, refused to cooperate, even though he necessarily possessed the information the examiner sought by the time he filed his application.   

On these facts, the district court’s exclusion of Hyatt’s new evidence must be affirmed. . . . [I]t is clear from the record that Hyatt willfully refused to provide evidence in his possession in response to a valid action by the examiner. Such a refusal to provide evidence which one possessed was grounds in Barrett to exclude the withheld evidence. Similarly, we hold that in light of Hyatt’s willful non-cooperation here, the district court did not abuse its discretion by excluding the Hyatt declaration.

Judge Moore penned a vigorous dissent in support of the patent applicant’s right to a full civil action including the right to submit additional evidence when challenging a PTO decision.

The majority takes away this patent applicant’s fundamental right to a “civil action to obtain [a] patent” as granted by Congress in 35 U.S.C. § 145. Today the majority decides that a patent applicant may not introduce the inventor’s declaration in a § 145 proceeding before the district court because the inventor had an “affirmative duty” or “obligation” to disclose this evidence to the PTO. His failure to fulfill his affirmative duty, by not disclosing evidence he could have disclosed to the PTO, results in such evidence being excluded from the district court § 145 proceeding. The district court made no fact findings indicating willful withholding or intentional suppression; in fact, the district court did not even conclude that Mr. Hyatt’s conduct amounted to gross negligence, but rather excluded the evidence under a negligence “could have” standard. Nor did the PTO even argue, at any stage of these proceedings, that Mr. Hyatt’s conduct in this case was willful or intentional. Nonetheless, the majority concludes that the applicant “owed,” the PTO all evidence he possesses that is responsive to a rejection and that failure to fulfill this newly created “affirmative duty” amounts to willful withholding as a matter of law. There are only two possible ways to interpret the majority’s willful withholding determination. Either the majority is engaging in appellate fact finding or it is determining that breach of its newly created affirmative duty is willful withholding as a matter of law.

. . .

Congress granted patent applicants the right to a civil action in the district court distinct from their right of appeal. It is our obligation to protect the distinction Congress codified in § 145, not to reweigh the virtues of that decision. The § 145 proceeding is a civil action and ought to be governed by the same Federal Rules of Evidence that govern other civil actions. Patent cases do not need, nor should they have, special rules of evidence.

. . .

The statute itself distinguishes the appeal that may be brought pursuant to 35 U.S.C. § 141 because a § 145 action is not an appeal; it is a “civil action.” The statute obligates the district court to adjudicate the facts in this civil action. Because the statute affords no limitations on the type of evidence that ought to be admissible in a civil action brought under § 145, the standard Federal Rules of Evidence that govern all civil actions ought to govern. The legislative histories of § 145 and its predecessor statute, section 4915 of the Revised Statutes, repeatedly and without contradiction indicate that the intent of Congress was to permit a patent applicant to bring a new suit built upon a new record. . . . Congress intended that the district court in a § 145 action have everything that a court would have in an infringement suit. Under this standard, Congress certainly intended for an inventor, such as Mr. Hyatt, to be permitted to introduce his own declaration in a § 145 action.

. . .

The majority holds that by failing to offer his testimony to the PTO, Hyatt has failed to satisfy “an affirmative and specific duty.” Maj. Op. at 2. In this way, this new affirmative duty for prosecution seems to resemble inequitable conduct, though here the applicant is penalized regardless of their intent. . . . With all due respect to the majority, I do not believe a new “affirmative duty” to disclose is warranted, nor do I believe Hyatt was “required by law” or “obligated” to provide his declaration to the PTO. While Mr. Hyatt may have failed to overcome the rejections or to convince the Board based upon his submissions to the PTO, he did not fail to fulfill an “obligation” or “affirmative duty” as the majority alleges.   

. . .

In this case, the district court found that Mr. Hyatt’s failure to proffer his

declaration to the PTO was merely negligent. . . . I find troubling the majority’s characterizations of Mr. Hyatt. See, e.g., Maj. Op. at 51 (Mr. “Hyatt purposefully kept [the Board] in the dark”); id. (his “blatant non-cooperation”); id. at 50 (Mr. “Hyatt willfully refused to provide evidence in his possession”); id. (Hyatt “refused to cooperate”); id. (“Hyatt’s willful non-cooperation”); id. at 55 (“Hyatt willfully refused”); id. at 49 (providing his declaration “should have been simple for him”); id. at 55 (that Hyatt’s failure “to perform a simple task that it was his burden to perform is inexcusable”); id. at 54 (“Hyatt’s perverse unhelpfulness”). None of this appears in the district court proceedings, the PTO proceedings, or the record— these fact findings ought to be left to the district court which is in the best position to weigh the contradictory evidence.

. . .

Contrary to the appellate finding of willful withholding, the record contains ample evidence of a lack of willful withholding. Here, the examiner rejected all of Mr. Hyatt’s 117 claims for lack of written description, failure to enable, obviousness-type double patenting (over 8 separate references), and Schneller-type double patenting (over the same 8 references). The examiner also rejected 9 claims as anticipated (Hill reference) and 7 as obvious (over a combination of three references). Technically, Mr. Hyatt was appealing 45 separate issues totaling 2546 separate rejections of his 117 claims to the Board. He wrote a 129-page appeal brief addressing all of these different rejections. And, to be clear, the Board reversed all the examiner’s rejections for obviousness, anticipation, obviousness-type double patenting, Schneller-type double patenting, and many of the written description and enablement rejections. With regard to the written description rejections in particular, the Board reversed the rejections of 38 claims and sustained the rejections of 79 claims. Mr. Hyatt prevailed on 92% of all the examiner’s rejections at the Board level. Despite Mr. Hyatt’s success, the majority declares Mr. Hyatt’s response to be “completely and wholly inadequate” and Mr. Hyatt to have been perversely unhelpful. Maj. Op. at 55, 56.

. . .

Although Mr. Hyatt may have failed to overcome all of the written description rejections based upon his submissions to the PTO, he did not fail to fulfill an “obligation” or “affirmative duty,” and he certainly was not “perversely unhelpful” as the majority alleges. . . I believe the court is wrong to hold that breach of the newly created affirmative duty, i.e., not producing evidence to the PTO, is willful withholding as a matter of law.

. . .

In hindsight, perhaps Mr. Hyatt should have submitted his declaration or that of any other expert earlier in the prosecution process. But hindsight is misleadingly acute. Declarations and expert reports are time consuming and expensive to prepare. It is hardly reasonable or even desirable to require patent applicants to put massive declarations into the record at an early stage of prosecution, weighing the cost to both the applicant and the PTO. See generally Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U.L. Rev. 1495 (2003) (arguing that it would be inefficient for the PTO to overinvest in examination because so few patents are enforced). In this case, for example, the examiner rejected the claims on many different bases (double patenting on 8 different references, obviousness, anticipation, enablement, written description, etc.), totaling 2546 separate rejections. The Board overturned nearly all of them. It is easy with the benefit of hindsight to say Mr. Hyatt should have introduced more evidence on written description to the Board. But Mr. Hyatt was not facing merely a written description rejection, he was facing 2546 separate rejections on many, many different bases. The majority implausibly asserts that 2546 separate rejections is “proportional to Hyatt’s prosecution of an application containing 117 pending claims spanning 79 pages.” Maj. Op. at 56 n.35. An average of 21 rejections per claim is hardly proportional. Mr. Hyatt was forced to appeal 45 independent issues to the Board when the average is two. Dennis D. Crouch, Understanding the Role of the Board of Patent Appeals in Ex Parte Appeals, 4, available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1423922. Despite this challenge, Mr. Hyatt was largely successful on appeal. Further, the length of Mr. Hyatt’s application suggests that his efforts to pinpoint pages containing certain terms was helpful and in good faith. Mr. Hyatt’s response may have been especially valuable in the time before searchable electronic applications.

To say that Mr. Hyatt had an affirmative duty to introduce all evidence to the Board or that he “owed” (Maj. Op. at 56) all the evidence he possessed is to put an enormous and undesirable burden on the patentee, one that will foreclose patent protection for many small inventors. Congress foresaw exactly this problem and ameliorated it with § 145 by providing applicants a way to initiate a civil action and introduce new evidence after Board proceedings when the issues are much more succinct and consolidated. This is illustrated perfectly here, where the applicant was contending with 2546 rejections on many different bases before the Board. After the Board overturned nearly all of them, only a small number of rejections—based on written description/enablement—were maintained. Hence at the district court the applicant could proffer much more extensive evidence because the universe of issues was greatly narrowed. This is the sensible approach Congress enacted. The statute even places the cost of the proceeding on the party better positioned to know the value of the application—the applicant. The majority’s new exclusionary rule based upon its new affirmative duty upsets this balance.

Notes: I expect that Hyatt will ask for reconsideration and will then push for Supreme Court review.

Bits and Bytes No. 124

Recent Job Postings:

Bits and Bytes No. 124

Recent Job Postings:

Bits and Bytes No. 124

Recent Job Postings:

Microsoft Ordered to Stop Selling MS Word

i4i Ltd. v. Microsoft Corp. (E.D. Tex. 2009)

Texas style, the order from Judge Davis gets right to the point:

In accordance with the Court’s contemporaneously issued memorandum opinion and order in this case, Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

  1. selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;
  2. using any Infringing and Future Word Products to open an XML file containing custom XML;
  3. instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;
  4. providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML; and
  5. testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.

This injunction does not apply to any of the above actions wherein the Infringing and Future Word Products open an XML file as plain text.

This injunction also does not apply to any of the above actions wherein any of the Infringing and Future Word Products, upon opening an XML file, applies a custom tranform that removes all custom XML elements.

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

This injunction becomes effective 60 days from the date of this order.

In addition to the injunction, i4i was awarded $200 million in compensatory and $40 million punitive damages based on Microsoft's adjudged willful infringement. 

Notes:

  • Read the Injunction Order: File Attachment: 20090811i4iinjunction.pdf (252 KB)
  • Read the Final Judgment: File Attachment: 20090811i4ijudgment.pdf (257 KB)
  • Doug Cawley and Mike McKool (McKool Smith) lead the i4i team; Matthew Powers (Weil) is lead counsel for Microsoft.
  • Microsoft can presumably fix its patent problem by eliminating the .docx format. According to court records, “i4i has presented evidence that it is possible to design a software patch that can remove a user’s ability to operate the infringing functionality.” Alternatively, Microsoft could buy the patent – although the price will now be substantially higher than it was in 2007.
  • Stays pending appeal: Under ther Federal Rules of Civil Procedure, Microsoft has a right obtain a stay of relief pending appeal after it posts an appropriate bond. However, that right only applies to monetary damages. There is no right to stay injunctive relief pending appeal. On occasions, both District Courts and the Federal Circuit will stay injunctive relief pending the outcome of an appeal.
  • Stays pending appeal: The district court has already denied Microsoft’s motion to stay injunctive relief. “The fact of Microsoft’s infringement causes i4i to suffer irreparable harm for every new XML customer that purchases an infringing Microsoft product. To stay any injunction would only prolong that harm without providing any remedy.”
  • Facing OpenOffice: OpenOffice may well be liable as well. If it comes to pass, i4i’s suits against those users may focus on users because no central entity controls its development and distribution (although Sun is a potential target).
  • Bilski?: i4i’s claim 14 may well fail the Federal Circuit’s Bilski machine-or-transformation test. The claim reads as follows:

A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising:

  • providing the mapped content to mapped content storage means;
  • providing a menu of metacodes;
  • compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and
  • providing the document as the content of the document and the metacode map of the document.

Bilski’s Patent Application

The Supreme Court is reviewing Bernard Bilski’s patent application to consider whether the application appropriately claims “patentable subject matter” under 35 U.S.C. 101 as interpreted by the Supreme Court. Much of the focus in the case is on the Federal Circuit’s exclusive “machine or transformation” test. However, I thought it would also be important to look at the underlying Bilski patent application because of how it may drive the debate at the Court.

Bilski’s application is not published. However, a copy of the 14-page application was included in a joint appendix submitted to the Federal Circuit during the en banc appeal. The application includes one independent claim; eight subsequent dependent claims; no drawings; and a priority claim to a 1996 provisional application. It appears that Buchanan Ingersoll (Pittsburgh) led the prosecution. The BPAI opinion rejected eleven claims – indicating that some amendments occurred during prosecution. (A docket sheet also indicates that drawings were later added.) Amazingly, Bilski’s case is based on an appeal from a March 2000 final rejection.

The Invention focuses on a method of managing consumption risk by commodity trading something that – in 1996 was “not currently managed in energy markets.” According to Bilski there was a “need for a fixed bill product to manage total energy costs including the consumption of risk.” The general idea of using commodity trading as a hedge against risk has been well known for years. However, Bilski proposes that consumers purchase commodities “at a fixed rate based on historical averages.” In a dependent claims, Bilski indicates that the risk to be avoided is a “weather-related price risk.” Later, that risk is drilled-down to focus on temperature shifts (heating and cooling degree days). Another dependent claim spells-out the equation for calculating the fixed cost based on prior fixed and variable costs, transportation costs, local delivery costs, and a location specific weather indicator. Additional dependent claims require specific Monte Carlo simulations and statistical tests to better calculate the fixed rate. In some claims, the commodity being traded is identified as “energy” and the market participants as “transmission distributors.”

The Claims do not focus on any particular machine or software implementation. Rather, they are organized as “methods” followed by a series of steps such as “initiating a series of transactions . . . “; “performing a Monte Carlo simulation . . .”; and “continuing to re-price the margin in the transaction until the expected portfolio margin and likelihood of portfolio loss is acceptable.”

No Machine: Even an amateur implementation of these methods would make extensive use of software and computer hardware. However, those elements are not present in the claims. Why did Bilski not include software and computer hardware in his application? My speculation: First, it does not appear – at least from the patent application – that he invented any software application of his hedging theory. Second, perhaps Bilski believed that a computer implementation element would unduly limit the scope of his invention.

Obvious and Not Enabled: The claims are likely obvious based on extensive prior art in the industry. In addition, the claims may well fail the tests of enablement and/or written description (if it survives Ariad v. Eli Lilly). However, the PTO worked-hard to properly couch this case as a test of patentable subject matter.

The abstract reads as follows:

A method is provided for managing the risk-associated costs of a commodity sold by a commodity provider at a fixed price. Such risk-associated costs include the weather-related costs of a fixed price-energy bill. The commodity provider initiates a series of transactions with consumers of the commodity wherein the consumers purchase the commodity at a fixed rate based upon historical averages. The fixed rate corresponds to a risk position of the consumers. The commodity provider then identifies market participants for the commodity who have a counter-risk position to that of the consumers. The commodity provider then initiates a series of transactions with the market participants at a second fixed rate such that the series of market participant transactions balances the risk position of the series of consumer transactions.

Read the application here: BilskiApplication.pdf

Bits and Bytes No. 123: Judge Schall

IPO Reports that Judge Alvin Schall intends to take Senior Status in October 2009 — opening a vacancy on the Federal Circuit to be filled by the Obama Administration. Three patent law professors have played important roles in the Obama campaign and transition: Mark Lemley (Stanford); Arti Rai (Duke); and Beth Noveck (NYLS; now Whitehouse). At least some patent litigators will push for Obama to nominate an experienced district court judge.

Judge Schall was appointed by the first President Bush in 1992. He spent many years as a prosecutor and DOJ trial attorney after graduating from Princeton (go Tigers) and Tulane Law.

Article: Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009

By Ed Reines and Nathan Greenblatt*

The Patent Reform Act of 2009 includes a provision allowing interlocutory appeals of claim construction orders.[1] As drafted, the provision gives the authority for approval of such an appeal to the district courts, without giving the Federal Circuit discretion to decline the appeal.[2] This approach is misguided. Failure to give the court of appeals a voice in the interlocutory appeals process flouts cautions inherent in the final judgment rule since its enactment in 1789, ignores the different institutional concerns of district and appellate courts, and will create problems of piecemeal appeals, undue delay, and crowded dockets that will impair the effectiveness of the Federal Circuit and contravene the purpose for enacting the provision in the first place.

In addition, the perceived problem of excess reversals of claim construction rulings that has motivated the current provision is a function, if anything, of the de novo review standard applicable to claim construction, not the final judgment rule.[3] Thus the proposed solution does not address the true issue in any event – it masks it.

Continue reading the article Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009.pdf


* The views expressed in this article are those of the authors and do not necessarily reflect the views of Weil, Gotshal & Manges LLP or any of its clients.

[1] See S. 515 sec. 8(b).

[2] Id. (amending 28 U.S.C. § 1292(c)(2) by giving the Federal Circuit exclusive jurisdiction):

(3) of an appeal from an interlocutory order or decree determining construction of claims in a civil action for patent infringement under section 271 of title 35. Application for an appeal under paragraph (3) shall be made to the court within 10 days after entry of the order or decree. The district court shall have discretion whether to approve the application and, if so, whether to stay proceedings in the district court during the pendency of such appeal.

[3] See, e.g., 6/6/2007 Testimony of Mary E. Doyle before the Senate Committee on the Judiciary regarding “Patent Reform: The Future of American Innovation” at 9-10 (arguing that interlocutory appeal is needed because “claim construction rulings are so frequently reversed by the Federal Circuit”).  

Bilski Briefs [Updated with 44 Briefs]

The question of patentable subject matter has returned to the Supreme Court — this time with a focus on business methods. In January 2009, an en banc Federal Circuit implemented the “machine or transformation test” as the exclusive test for determining whether a claimed process qualifies as patentable subject matter under 35 U.S.C. 101. Now, the case is pending before the Supreme Court with two focused questions:

QUESTIONS PRESENTED

1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

In this post, I have attached recently filed briefs which either (1) support Bilski or (2) support neither party. The government brief in opposition is due Sept 25 and friendly brief in opposition due within seven days of that filing.

  • Yahoo (Bilski – Yahoo! Amicus Brief (S.Ct) (as filed) (8-6-09).pdf) The focus on physicality does not make sense in today’s technology.
  • IBM (08-964 IBM.pdf) The proper test looks for a “technological contribution.”
  • Regulatory Data Corp ( 08-964 Regulatory Datacorp et al..pdf) Brief by John Duffy focuses directly on the historical importance of the statutory test. “The government is now asking this Court to impose a formalistic restriction on definition of “process” that would create an unprecedented and uncertain judicial limitation on patentable subject matter. This Court should reject that invitation just as it did more than a third of a century ago, when the government unsuccessfully advanced the very same argument. See Gottschalk v. Benson, 409 U.S. 63, 71 (1972).”
  • Accenture (08-964 tsac Accenture and Pitney Bowes, Inc.pdf) Machine or transformation test is not a reliable indicator of anything relevant. The standard for patentability should “usefulness” as set forth in the Constitution, in the patent statute, and by the Court.
  • Austin IP Law Ass’n ( 08-964 Austin Intellectual Property Law Association.pdf) The patent statute explicitly defines process quite broadly in Section 100(b). The Federal Circuit’s version of “process” in 35 U.S.C. § 101 is far narrower than the broad definition of “process” in 35 U.S.C. § 100(b) (2008).   
  • Double Rock and other IP entities (08-964tsacdoublerockcorporation.pdf) The Federal Circuit test conflicts with Supreme Court precedent and Congressional intent.
  • Law Professors [Lemley et al.] (08-964ac20lawandbusinessprofessors.pdf) The distinction on patentable subject matter should be based on the distinction between applied and abstract inventions. Bilski’s claims fail this test.
  • Chakrabarty (08-964 Chakrabarty.pdf) Brief by Scott Kieff and Richard Epstein argue that patent rights operate “like a beacon in the dark” to start conversations between innovative entities and potential users.
  • Franklin Pierce Law Center (Bilski.pdf) Court should adopt the “useful, concrete, and tangible result” test.
  • TeleCommunication Systems (08-964nsactelecommunicationsystemsinc.pdf) Subject matter eligibility should be predictably broad.
  • BIO, AdvaMed, WARF and U of Calif (08-964 tsac Biotechnology Industry Organization et al..pdf) Any decision should be clear that biotechnology is patentable.
  • Conejo Valley Bar Ass’n (08-964.ac.Conejo Valley Bar Association.pdf) The substantive elements of the patent act (102, 103, and 112) do all the necessary work.
  • Novartis (08-964tsacNovartisCorporation.pdf) A process of diagnosis should be patentable.
  • Dr. McDonough (08-964_PetitionerAmCuTMcDounough.pdf) “American innovation is not confined to Industrial Age mousetraps and other cleverly contrived gadgets. The modern economic agent is more likely to encounter innovation today in the services they consume than in the contraptions they use. The present amicus curiae suggests that the decision of the Federal Circuit in this case is an attempt to apply an Industrial Age standard to address a perceived Services Age problem, a problem that the present amicus curiae suggests does not exist.”
  • State of Oregon (08-964_NeutralAmCuOregon.pdf) (The Patent Hawk filed this brief on behalf of all Oregonians – although apparently without any official state approval) The brief makes an important point: Although Section 101 comes first in the statute, it does not make sense to use it as a screening tool at the PTO. Rather, the PTO’s skills are in comparisons of prior art and ensuring that the elements of Section 112 have been satisfied.
  • Chicago IP Law Ass’n (08-964 ac Intellectual Property Association of Chicago.pdf) There are strong parallels here with KSR; CAFC rule is too rigid.
  • Borland (Amicus Curiae Brief (Borland Software Corporation).pdf) The CAFC test does not properly follow Supreme Court precedent.
  • Time Systems (08-964 ac On Time Systems.pdf) Some abstract ideas should be patentable.
  • Monogram BioSciences and Genomic Health (08-964 ac Monogram Biosciences Inc.pdf) Patentable processes can be non-physical.
  • Sachs and Brownstone (08-964 ac Robert R. Sachs.pdf) The CAFC test is limits the patenting of software, and a bad result.
  • Boston Patent Law Association (08-964tsacbostonpatentlaw.pdf) A broad scope of patentable subject matter better preserves the health of an innovative culture; many landmark inventions fail the Federal Circuit’s Bilski test.
  • Georgia Biomedical Partnership, Inc. (08-964 Georgia Biomedical Partnership Inc.pdf) The Supreme Court has consistently refused to offer a “rigid” test.
  • Dolby Labs (08-964 Dolby Laboratories et al..pdf) The important thing is to settle expectations.
  • Teles AG ( 08-964 Teles AG.pdf) Subject matter eligibility should be “dynamic.” “Further, the global nature of today’s economy strongly recommends that the United States patent system be harmonized with robust patent systems of other nations wherever possible.”
  • Medtronic (08-964 Medtronic.pdf) Provides specific examples of medical innovations that may be unpatentable under the Federal Circuit test
  • Intellectual Property Owners (08-964acintellectualproperty.pdf) Machine or transformation test is not the only test; In its transformation test for signals, the CAFC “unduly focuses on the contents of the data . . . rather than the manner in which those signals are generated;” a general purpose computer should be considered a “particular machine.”
  • AIPLA ( 08-964 American Intellectual Property Law Association.pdf) A new exclusionary test is not needed.
  • Houston IPLA (08-964 Houston IP Law Assoc..pdf) The test negatively impacts Dell’s “build-to-order” patent (5,963,743) ; AT&T’s linear programming patent (4,744,028); and Sperry Corporation’s LZW compression patent (4,558,302).
  • Armanta, Asentinel, Cybersource, and Hooked Wireless (08-964 Entrepreneurial Software Companies.pdf) Questions of patentability are causing software companies to lose value.
  • Mr. Meiers ( 08-964 Raymond C. Meiers.pdf) A patentable invention “applies manifestations of nature and achieves a useful result.” This is the tripartite system.
  • Univ. South Florida ( 08-964 University of South Florida.pdf)
  • Awaken IP ( 08-964 AwakenIP.pdf) The CAFC test is unworkable and is as bad as the vague idea/expression dichotomy of copyright.
  • BSA ( 08-964 Business Software Alliance.pdf) Section 101 has been consistently and correctly interpreted to cover software innovations.
  • PhRMA, etc. ( 08-964 PhRMA et al..pdf) Medical processes should be patentable.”
  • Caris Diagnostics ( 08-964 Caris Diagnostics, Inc.pdf) Diagnostic method patents are important and have been called into question by Bilski.
  • AIPPI (AIPPI SupremeCourt_3455697.pdf) A flexible test is better, and TRIPS requires a flexible standard.
  • FICPI ( 08-964 FICPI.pdf) “The § 101 analysis should focus on the section’s substantive utilitarian requirement, rather than retrospectively attempting to rigidly define the categories of patentable subject matter without the foresight of the particular form technological innovations may take in the future.

Update: More Briefs

  • Professor Collins (08-964 Prof. Kevin Emerson Collins.pdf) Professor Collins has written a number of very interesting PSM articles. In his brief, he argues that the test should focus on whether “the claim impermissibly seeks a patent on a fundamental principle or an abstract idea.” One concern of the CAFC test is that it takes us off the path toward international harmonization.
  • Legal Onramp (08-964 Legal OnRamp.pdf) “Pure” business methods should not be patentable. “Unlike traditional patents on technological advances, the patenting of pure business methods is a serious obstacle to innovation because it unduly impedes competition.”
  • Eagle Forum (08-964 Eagle Forum Education & Legal Defense.pdf) Reminds us of the important constitutional role of the patent clause. “The decision below usurps the legislative role and adds complexities to patent law that are neither welcome nor justified in the 21st century.”
  • Fed Cir Bar Ass’n (08-964 Federal Circuit Bar Association.pdf) The CAFC test does not follow Supreme Court precedent.
  • Washington State Patent Law Association (08-964 tsac WSPLA.pdf) The Court should focus on Chakrabarty and Diamond v. Diehr: “any,” “new,” and “useful” “process.”
  • San Diego IP Law Ass’n (08-964 ac San Diego Intellectual Property Law Assoc.pdf)

Bits and Bytes No. 122: Nominees

According to reports, David J. Kappos has now been confirmed by the US Senate as the Under Secretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office. Director Kappos was nominated in June and has received praise from many quarters because of his career-long experience in working with patents. Congratulations, now get to work!

It is likely in the first few weeks, DIrector Kappos will review the proposed rules being challenged in Tafas v. Dudas and somewhat alter the PTO’s course.

John Doll (Acting Director) and Peggy Focarino (Acting Commissioner of Patents) should both be commended for their proactive leadership over the past eight months during a difficult financial situation.