April 2010

Update on Patent Pendency

The following table looks at the number of years-in-prosecution for utility patents issued on April 27, 2010. I divided the issued patents into four groups depending whether the patent claims priority to either a foreign application or a US non-provisional. The table reports the average pendency for each group as well as the relative number of patents in the group.   

Average Pendency of Utility Patents Issued April 27, 2010 (Filing Date to Issue Date, Not Including Priority Claims)

Claim Priority to Foreign Application

Yes

No

Claim Priority to US Non-Provisional Application

Yes

2.8 years (6% of Patents)

3.2 years (15% of Patents)

No

4.1 years (33% of Patents)

4.1 years (45% of Patents)

I used the same patent application pendency data to create the cumulative frequency chart below. As can be seen, the median pendency is a bit under four years. 90% of patents issue within six years. pic-95.jpg

False Marking Fine Set at Point Above Gross Revenue

Forest Group v. Bon Tool (S.D. Tex 2010)

In a 2009 decision, the Federal Circuit remanded the Bon Tool case with instructions to the district court to recalculate the false marking fine owed to the defendant-counter-claimant.  In particular, the Federal Circuit held that each falsely marked article represented a separate and distinct act of false marking, each subject to a fine of up to $500.

On remand, Judge Atlas of the Southern District of Texas determined that the false-marking fine should at least recapture all of the revenue generated from the sale Forest’s falsely-marked products.  Here, Forest had sold falsely marked stilts “at prices between $103.00 and $180.00.”  The court then set the false-marking fine at the highest price-point of $180 per article.  Because only 38 pair of falsely marked stilts were sold, the total fine was relatively small — less than $7,000. Half of the fine will be given to the US Government and half collected by Bon Tool.

The Court finds that the appropriate fine in this case is $180.00 per article, the highest point of the price range. This will deprive Forest of more than it received for the falsely-marked stilts, fulfilling the deterrent goal of § 292’s fine provision. Based on the $180.00 per article fine for the 38 falsely-marked stilts of which there was evidence at trial, the Court imposes against Forest a fine of $6,840.00 pursuant to § 292.

Judge Atlas based her decision on the Federal Circuit’s three stated policy goals of: discouraging mis-marking; encouraging enforcement; and avoiding “disproportionately large penalties.”  Bon Tool had asked for the maximum $500 per offense.  Forest argued that the fine should be limited to its profits on the falsely-marked products of $2,400.

The Impact of Wyeth on Patent Terms

In January 2010, the Federal Circuit held that the Patent Office had been undercalculating the patent term adjustments (PTA) owed to patentees because of USPTO delays during prosecution. About 80% of issued patents receive some term adjustment. The Wyeth case did not directly impact the calculation of which cases receive an adjustment, rather the decision operates to lengthen the adjustment for those already eligible.

In order to measure the impact of the change in calculation, I compared the calculated patent term adjustment for two sets of recently issued utility patents. The first set comes from January 5, 2010 (before the Wyeth decision) and the second set comes from April 27, 2010 (after the Wyeth decision). For each set, I used all utility patents issued on the given date.

The chart below shows that the change has been substantial. The average PTA grant has increased by six-months — jumping from 14–months to 20–months. (Note — these averages only include patents with an adjustment). One patent in the April 2010 group was adjusted more than eight years and over 500 patents had term-adjustments of more than three years.

These days, any discussion of the US 20–year patent term must consider real impact of these adjustments.

PatentLawPic982

Therasense v. Becton Dickinson: Federal Cicuit Grants En Banc Request to Rethink the Law of Inequitable Conduct

Therasense Inc. (now Abbott) v. Becton, Dickinson and Co. (Fed. Cir. 2010)

The Federal Circuit has granted Abbott’s request for an en banc rehearing on the issue of inequitable conduct.

The rehearing will focus on six questions of law:

  1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?
  2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?
  3. What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?
  4. Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).
  5. Should the balancing inquiry (balancing materiality and intent) be abandoned?
  6. Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.

Abbott’s en banc brief is due in 45 days from today. The response is due within 30 days of service of Abbot’s brief.  Briefs of amici curiae will be entertained and may be filed without leave of court. Under Fed. R. App. Proc. 29, the amicus curiae brief must be filed within 7–days of the filing of the principle brief of the party being supported. If the amicus curiae does not support either party then the brief must be field within 7–days of the petitioner’s principal brief.

En Banc Order

Comment: The correct answers to these questions depend upon the purposes of the inequitable conduct doctrine. Namely, is the doctrine intended to the behavior of patent prosecutors is is it intended to catch perpetrators. The major empirical issue is that the doctrine pushes patent prosecutors to over-compensate in ways that potentially harm the system and certainly raise the costs of patent protection.

Design Patents: Eliminating the Ornamental/Functional Dichotomy

PatentlyO042Richardson v. Stanley Works, Inc. (on petition for en banc rehearing at the Federal Circuit, 2010)

In its March 9, 2010 decision, the Federal Circuit held that design patent infringement should focus only on ornamental aspects of the patented design. Richardson’s Design Patent No. D. 507167 covers a multi-function carpentry tool (a FUBAR). On appeal, the Federal Circuit affirmed that Arizona district court properly “factored out” functional elements during the claim construction process and that the ornamental features of the patented design (upper right) were not similar-enough to the ornamental features of the Stanley Works FUBAR (lower right). 

PatentlyO043Now, Richardson has petitioned the Federal Circuit for an en banc rehearing based on the argument that the focus on ornamental features creates a “points-of-ornamentation” test that is contrary to Gorham v. White.  The AIPLA and Apple Computers have both filed briefs in support of the rehearing.

In a comical (but serious) diagram, AIPLA shows the results of “factoring out” functional elements of the Richardson design. The AIPLA concludes that the “panel’s approach (which seeks to separate out ornamental and functional elements) conflicts with the tenet that a design patent protects the overall appearance of the claimed design, and is fraught with logistical problems.”

PatentlyO041

Apple argues that the functionality of an individual portion of the design should have “no direct bearing on design patent infringement or validity.”  Rather, the whole focus of design patents is to cover articles of manufacture that are inherently functional.  There is a functionality limitation for design patents, but the Supreme Court has applied that only to the design as a whole and only when the design is “dictated by function alone.”

Notes:

Difficulties Collecting Royalties

In the recent case of ClearPlay v. Max Abecassis and Nissim Corp (Fed. Cir. 2010), the patent holder (Nissim) struggled to collect its royalty payments even after the parties signed an agreement that settled their patent infringement dispute.

Nissim’s situation is not unusual. A recent report by the Invotex found that 86% of licensees underpay royalties. Most of the under-payment comes from (1) questionable license interpretations and (2) unreported sales of covered goods & services.

Although the report may be somewhat biased (Invotex makes its money by finding non-compliance) it does make clear patentees should plan to work as hard collecting royalties as they did winning the infringement lawsuit. This type of study may also be helpful for patentees seeking injunctive relief — especially if they can show that the defendant-in-question has underpaid royalties in the past.

Read the Report

Intangible Economy Blog

Patently-O Bits and Bytes

Patently-O Bits and Bytes

Department of Commerce Reports that PTO Fee-Setting-Authority and Improved Post-Grant Patent Challenge Lead to Economic Growth

Doc-largeThe Department of Commerce has released a white-paper discussing the economic value of innovation and coupling that value to the need for reform of the US Patent Laws.  The report focuses on (1) the need for “timely patents” in order to successfully obtain venture capital financing; (2) the need for “high-quality” patents in the area of pharmaceuticals; and (3) the negative effects of poor quality patents and uncertainty in enforcement.  These background points are fairly well accepted. 

The more controversial aspect of the report are the Department’s policy conclusions. Namely, the Department of Commerce argues that (1) USPTO Fee setting authority (and what the Office does with that authority) will help to reduce the backlog; and (2) more broadly available and efficient post grant opposition proceedings will help reduce the cost of litigation. Finally, the report notes that the US patent office is “tax-free” in the sense that taxpayer money is not used to administer the office. The ability to avoid appropriations makes PTO reform a politically attractive policy lever.

USPTO fee-setting authority adds flexibility, allows the Office to more quickly raise needed funds, and also allows for the potential of aligning align fees with actual costs.  As an example, the white paper notes that “abandoned” applications pay only about one-third of the total examination costs.  That front-end cost is “subsidized by back-end patent issuance and maintenance fees that are assessed on successful applicants.”  The report states flatly that “With fee-setting authority, the USPTO could deliver on its aggressive goal of reducing to 20 months total average pendency. This anticipated 40% reduction in average pendency would offer greater certainty to innovators of all stripes, allowing for more timely and accurate R&D investments, and thus, substantially improve prospects for improvement in the Nation’s innovative performance and overall economic growth.”

A more efficient post grant review system would benefit the patent system offering a low-cost and quick mechanism to challenge weak patents. “These patents will then be taken out of the system, saving both potential litigation costs and costs to consumers from the exercise of unwarranted market power. . . . Indeed, almost every academic economist who has ever examined whether an enhanced system of post-grant review should be adopted has favored such adoption. . . . [E]nhanced post-grant review also offers advantages to those seeking to assert valid patents. Litigation-related delay in the resolution of validity contributes to uncertainty for technology investors, increasing the likelihood of underinvestment and mistaken investment, and adding transaction costs to technology commercialization.”

The report is titled “Patent Reform: Unleashing Innovation, Promoting Economic Growth & Producing High-Paying Jobs” and is signed by Professors Arti Rai (Chief Administrator of the USPTO’s office of External Affairs), Stuart Graham (Chief Economist of the USPTO), and Mark Doms (Chief Economist of the Department of Commerce).

PatentLawPic977

Patently-O Bits and Bytes

  • PatentLawPic974In March 2010, I reported on the Myriad case where the district court essentially held that all gene patents are invalid.  Since then the popular press has been pushing-hard on gene patenting stories.  My former boss Kevin Noonan (MBHB) has been the go-to-man for reporters looking for a supporter of genetic patents. Noonan is articulate, opinionated, reasonable, and he looks good on camera.  In its article, the Washington Post spends most of its text discussing the fact that Noonan is the former high-school-sweetheart and ex-husband of Supreme Court Justice Sonia Sotomayor.
  • Watch Kevin Noonan on 60–Minutes
  • Watch Kevin Noonan on the Colbert Report

Patently-O Bits and Bytes

  • PatentLawPic974In March 2010, I reported on the Myriad case where the district court essentially held that all gene patents are invalid.  Since then the popular press has been pushing-hard on gene patenting stories.  My former boss Kevin Noonan (MBHB) has been the go-to-man for reporters looking for a supporter of genetic patents. Noonan is articulate, opinionated, reasonable, and he looks good on camera.  In its article, the Washington Post spends most of its text discussing the fact that Noonan is the former high-school-sweetheart and ex-husband of Supreme Court Justice Sonia Sotomayor.
  • Watch Kevin Noonan on 60–Minutes
  • Watch Kevin Noonan on the Colbert Report

Supreme Court to Decide Case of International Copyright Exhaustion

PatentLawPic972Costco Wholesale Corp. v. Omega, S.A., Docket No. 08-1423 (Supreme Court 2010)

The Supreme Court announced today that it would decide the international copyright exhaustion case of Costco v. Omega. Costco purchased Omega watches from a third-party importer and sold the watch for $1,300 instead of the $2,000 suggested retail price. Omega (a division of Swatch) then sued Costco for copyright infringement – alleging that the sale violated the Swiss Company’s US Copyright covering the “Omega globe design” on the back of the watch. In a 2008 decision, the Ninth Circuit agreed with Omega, holding that the US Copyright was not exhausted because Omega had originally sold the watches to distributors in Egypt and Paraguay. This arbitrage was available because Omega sells its watches for a higher price in the US than it does elsewhere.

The question on appeal is whether Omega’s authorized foreign sale exhausted its US copyright.

Under the Copyright Act’s first-sale doctrine, 17 U.S.C. § 109(a), the owner of any particular copy “lawfully made under this title” may resell that good without the authority of the copyright holder. The closest Supreme Court precedent is Quality King Distribs., Inc. v. L’Anza Research Int’l, Inc., 523 U.S. 135, 138 (1998). In that case, the unanimous court held that the copyright was exhausted and therefore that the copyright holder could not block imports of shampoo bottles with copyrighted labels. The Ninth Circuit distinguished Quality King based on the fact that the labels were originally made in the US then shipped abroad before being re-imported. According to the Ninth Circuit, the Omega watches are not subject to the first sale doctrine because they were not “lawfully made under” the US Copyright Act.

The US Patent Laws are also subject to an exhaustion doctrine – although patent exhaustion is entirely judge-made and not subject to statutory interpretation. In Fuji Photo Film Co. v. ITC, 474 F.3d 1281 (Fed. Cir. 2007), the Federal Circuit held that US patent rights are only exhausted through a first sale “in the United States.” In that case, the Federal Circuit recognized that “a different rule applies in copyright cases.” Of course, the Supreme Court’s copyright decisions often interplay its discussion of the two intellectual property forms.

Patent holders that rely upon the current law to block parallel imports will likely want to file an amicus brief to justify a difference between the two regimes.

Thriving Resale Market: EBay argues that the Omega ruling “could have a detrimental effect on the ability of buyers and sellers of secondary-market goods to engage in commerce in the United States.”

Copyright?: Of course, Omega would be hard-pressed to claim copyright in the watch itself. Rather, the copyright claim is in the arrangement of the 8 mm OMEGA symbol and name.  Although not strictly at issue here, the Supreme Court is not likely to overlook the fact that the copyright claim is an artificial construct that Omega is asserting to control downstream uses of its non-copyrighted watch that it otherwise could not control.

Notes:

Federal Circuit Appellate Jurisdiction over Antitrust Claims

Ferring B.V. v. Meijer, Inc., on petition for a writ of certiorari to the Supreme Court (2010)

In a controversial decision, the Court of Appeals for the Second Circuit held that a customer (rather than a competitor) has standing to bring a Walker Process monopolization claim based on the enforcement of patent that had been procured through fraud on the USPTO. In re DDAVP Direct Purchaser Antitrust Litigation, 585 F.3d 677 (2nd Cir. 2009). Although the Court of Appeals for the Federal Circuit holds exclusive jurisdiction over all appeals of final judgments in cases that are based “in whole or in part” on US patent law issues, the Second Circuit held that it had jurisdiction in this case because the antitrust claim stated in the complaint could have potentially been sustained without determining a question of patent law (even though the patent fraud issue was clearly the most important claim). The jurisdiction issue seemingly turned on the fact that the plaintiff’s complaint included only one “count” of monopolization that could be proven by several different theories.

Ferring has now filed a petition for Supreme Court review focusing on the issue of appellate jurisdiction.

The question presented is whether the Second Circuit’s new jurisdictional standard conflicts with this Court’s decision in Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988), and with decisions of the Federal Circuit and Seventh Circuit, holding that the Federal Circuit has exclusive jurisdiction in any patent-based case in which patent issues must be resolved in order for plaintiffs to achieve the overall success of their claim and obtain all the damages (or other relief) they seek.

In Christianson, the Supreme Court held that the Federal Circuit holds exclusive jurisdiction over patent cases when the “well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.”

Comment: This case has a strong chance of being granted certiorari. Of course, patentees would generally prefer to have their cases heard by the Federal Circuit. Several trade organizations, including IPO, BIO, and PhRMA, are expected to file briefs in support of the petition.

Documents:

BPAI Remanding Cases Involving Computer-Oriented Means-Plus-Function Claims

In Ex party Rodriguez, the BPAI rejected a patent applicant’s means-plus-function (MPF) claims as indefinite for failing to provide any corresponding structures in the specification beyond a general purpose computer. That decision followed the Federal Circuit’s Aristocrat holding that “simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to ‘the corresponding structure, material, or acts’ that perform the function, as required by section 112 paragraph 6.”

A patent examiner recently wrote-in to identify the fact that the BPAI has recently remanded dozens of pending appeals in light of Rodriguez. The remands use the following form language:

Claims ___ of the instant application contain functional language that may be indefinite under 35 U.S.C. § 112, second paragraph. See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed Cir. 2008); Ex parte Rodriquez, 92 USPQ2d 1395 (BPAI 2009). On September 2, 2008, the Deputy Commissioner for Patent Examination Policy, John J. Love, issued a memorandum entitled “Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph” . . . Thus, there is a question as to whether claims ___, and the claims which depend upon these claims, meet the requirements of being definite under 35 U.S.C. § 112, second paragraph. . . . Accordingly, it is ORDERED that the application is remanded to the Examiner to determine if claims ___, and the claims which depend upon these claims, meet the requirements of 35 U.S.C. § 112.

See, Ex Parte Chefalas et al, Appeal No. 2009012658, Ex Parte Yamanaka et al, Appeal No. 2009010948, Ex Parte Gassen et al, Appeal No. 2009008147, Ex Parte McCabe, Appeal No. 2009013024, Ex Parte Selep et al, Appeal No. 2009008213, Ex Parte Martin et al, Appeal No. 2009011586, Ex Parte Tosey, Appeal No. 2009007299, Ex Parte Van Doorn, Appeal No. 2009011085, Ex Parte Sohraby et al, Appeal No. 2009012154, Ex Parte Breese et al, Appeal No. 2009008013, Ex Parte Choe et al, Appeal No. 2009010957, Ex Parte Swart et al, Appeal No. 2009011542, Ex Parte Kakinuma et al, Appeal No. 2009007905, Ex Parte Zriny et al, Appeal No. 2010001851, Ex Parte Park, Appeal No. 2010002356, Ex Parte Cherkasova et al, Appeal No. 2010000365, Ex Parte Messick, Appeal No. 2009014361, Ex Parte Levy et al, Appeal No. 2010000512, Ex Parte Gusler et al, Appeal No. 2010000556, Ex Parte Betge-Brezetz et al, Appeal No. 2010001913.

In the Chefalas case, the independent claim in question reads as follows:

48. A data processing system for handling a virus, the data processing system comprising:

receiving means for receiving a notification of a presence of a virus on a client data processing system through a communications link;

severing means for severing communication with the client data processing system through the communications link in response to receiving the notification; and

executing means for executing virus removal processes on the server data processing system.

Interpreting Claims in an Interference: USPTO Rules Now Follow the Law

The USPTO has cancelled 37 C.F.R. § 41.200(b). That rule required the BPAI to give claims their “broadest reasonable construction in light of the specification of the patent or application in which it appears” but applied only to interference proceedings.

In interferences, one party typically copies claims from the opposition’s application/patent in order to provoke an interference. The copy is then interpreted to have the same claim scope as the original. In Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009), the Federal Circuit held that Rule 41.200(b) was contrary to this rule of interpretation – thus, the rule was already dead from a legal standpoint.

75 FR 19558

Ranking of Patent Law Programs for 2011: Perhaps Six Junk-Science Ratings Are Better Than One

US News & World Report has released its updated rankings of intellectual property (IP) programs for 2011. The ranking is created by polling a subset of law professors who teach at least one intellectual property law course. The professors then list up to fifteen programs with good IP programs. Those "votes" are then used to create a ranking. Of course, most IP professors are not patent law professors. 

Despite problems with the voting procedure, it is clear that every program on this list has an excellent IP program. And, although the list is not a "patent law program" list, all of the listed law schools employ at least one full-time faculty member whose primary teaching and research interest is patent law. Likewise, although you may quibble about individual rankings, there is no question that Berkeley's program deserves to be very highly ranked.  

The US News list:

Rank

Law School

1. 

University of California–Berkeley 

2. 

Stanford University

3. 

George Washington University 

4. 

Boston University

5.

New York University

6.

Columbia University

7.

University of Michigan

8.

University of Houston

9.

Duke University

Franklin Pierce Law Center
(Soon to be University of New Hampshire School of Law)

Three schools were dropped from this year's USNews top-ten: Santa Clara University; Yeshiva University (Cardozo), and Chicago-Kent (IIT).  These three schools all have strong patent law programs and have recently hired additional new patent-focused faculty members.  Other schools with hefty patent-focused programs did not make the list. These include schools like George Mason, John Marshall, Suffolk, William Mitchell, etc. (See curriculum ranking below).

Boston University, Michigan, and Duke were all added to the USNews list this year, although each had previously been on the list at some point during the past decade. 

Patently-O Rankings: I have redone my list of "the top thirty law school patent programs" based solely on the number of Patently-O visits received from the associated university in the past year. There are many problems with this "study." In fact, at first glance, I would tend to take this ranking as a complete joke except for the fact that it is probably at least as good as the US News IP Specialty ranking. Perhaps six junk-science ratings are better than one. Some of the problems with my ranking include: Many schools may not use their name in their IP address — making them lose their ranking. This appears to be true of Franklin Pierce Law Center (soon to be University of New Hampshire Law School). Larger schools naturally perform better because the scores are not corrected according to the number of students. Likewise, the measure that I used allows for a few intense users to change the result. Thus, I placed an asterisk beside the University of Missouri because my own visits to Patently-O likely altered the results. Schools where students (and professors) primarily study away from campus building may also rank relatively lower.  Finally, many of the visits to Patently-O may come from other departments – such as the Technology Transfer and corporate counsel – rather than the law schools.

Rank

School

Relative Score (Based on Visits from School Domain to Patently-O)

George Washington University

100% 

Columbia University, University of Missouri*

65%

4

Santa Clara University

60%

Stanford University

55%

6

University of Texas, University of California Berkeley

45%

8

Duke University, Harvard University, University of Wisconsin-Madison

40%

11

New York University, University of Virginia, Boston University, George Mason University, University of San Diego, Georgetown University, Cornell University

35%

18

Ohio State University, Indiana University (Bloomington), Washington University

30%

21

University of Pittsburgh, John Marshall Law School, University of Minnesota, University of Washington

25%

25

University of Illinois, Northwestern University, Suffolk University, Fordham University, University of Maryland. University of Connecticut, Rutgers University, University of Arkansas

20%

 GWU tops this year's list as it did in my 2010 ranking. Overall, the schools in the top-ten have been relatively stable. Richmond fell off the list; Berkeley, Duke, and Wisconsin moved into the top-ten.     

To add an additional layer of ranking, remember that almost 20,000 individuals access Patently-O through the free daily e-mail service. The following list ranks law school's according to the number of Patently-O e-mail subscribers. In addition to the biases mentioned above, we may have an additional bias if subscribers from some schools tend to use personal e-mail account (such as gmail) instead of the university account.

Rank

School

Relative Score (Based on the Number of Patently-O E-Mail Subscribers from School Domain)

1.

Franklin Pierce Law Center (University of New Hampshire Law School)

100% 

2.

University of Michigan

60%

3.

Harvard University, Stanford University

45%

5. 

George Washington University, Columbia University, University of California Berkeley, Chicago Kent Law School

40%

9.

Case Western Reserve University, University of Utah, Washington University, Elon University, Michigan State University

35%

14.

New York Law School, University of Washington, New York University, St. Louis University, University of Chicago, University of Denver, Yale University

25%

Franklin Pierce again tops this list (as it did in 2009). Harvard moved dramatically upward in the ranking.

Reputation Ranking of Patent Law Faculty: Part of the "reputation" of an IP program is based on the scholarship of its faculty. To create a ranking of faculty-member patent-law reputation, I searched for the number of law review citations associated with each IP-professor using the Westlaw JLR database. To ensure that the citations focused on patent-law reputation, the search looked for articles that somehow related to patent law.  It takes some time for citations to begin to build-up, so it is not surprising that all of the professors on this list have been teaching for at least ten years. 

Citation Rank

Faculty Name

School

1

Mark

Lemley

Stanford University

2

Robert

Merges

University of California, Berkeley

3

Rebecca

Eisenberg

University of Michigan

4

Dan

Burk

University of California, Irvine

5

Edmund

Kitch

University of Virginia

6

Rochelle

Dreyfuss

New York University

7

Paul

Goldstein

Stanford University

8

Pamela

Samuelson

University of California, Berkeley

9

Richard

Posner

University of Chicago

10

John

Duffy

George Washington University

11

Janice

Mueller

University of Pittsburgh

12

Arti

Rai

Duke University

13

Martin

Adelman

George Washington University

14

Julie

Cohen

Georgetown University

15

Maureen

O'Rourke

Boston University

16

A.S.

Oddi

University of Akron

17

Gerald

Mossinghoff

George Washington University

18

Polk

Wagner

University of Pennsylvania

19

Michael

Meurer

Boston University

20

Louis

Kaplow

Harvard University

21

Mark

Janis

Indiana University

22

Lawrence

Lessig

Harvard University

23

William

Landes

University of Chicago

24

James

Bessen

Boston University

If I had included Federal Circuit Judges in this listing, Judges Moore would jump into the top-ten. Likewise, if Donald Chisum was still teaching, he would be the clear #1.  Four GWU faculty members are listed in the top-25 and BU have three ranked faculty members. Harvard, Stanford, Berkeley, and Chicago all had two.

IP Law Journal Ranking: Many law schools have created IP-focused law journals. Using data collected by the Washington & Lee Law Library, I created the following ranking of student-edited IP Law Journals. The ranking is based on how often articles published in each journal are cited in other journals or court cases.  I only included journals with titles that include the terms "Intellectual property", "patent", or "technology." Thus, the Columbia Journal of Law & the Arts is not included in this list.

Rank

School

Journal

Relative Rank

1

Harvard University

Harvard Journal of Law & Technology

100

2

University of California, Berkeley

Berkeley Technology Law Journal

69

3

University of Michigan

Michigan Telecommunications and Technology Law Review

54.6

4

Fordham University

Fordham Intellectual Property, Media & Entertainment Law Journal

39.5

5

Stanford University

Stanford Technology Law Review

37.7

6

Santa Clara University

Santa Clara Computer and High Technology Law Journal

37.4

7

Duke University

Duke Law & Technology Review

36.3

8

Albany Law School

Albany Law Journal of Science & Technology

36.1

9

Boston University

Boston University Journal of Science & Technology Law

35

10

Columbia University

Columbia Science and Technology Law Review

33.7

11

Marquette University

Marquette Intellectual Property Law Review

31.3

12

Franklin Pierce Law Center

IDEA: The Intellectual Property Law Review

30.5

13

University of North Carolina

North Carolina Journal of Law & Technology

29.4

14

University of Minnesota

Minnesota Journal of Law, Science & Technology

29.2

15

University of Virginia

Virginia Journal of Law & Technology

28.9

16

University of Texas

Texas Intellectual Property Law Journal

28.6

17

University of Colorado

Journal on Telecommunications & High Technology Law

26.8

18

Yale University

Yale Journal of Law & Technology

25.7

IP Curriculum: Finally, William Mitchell College of Law has compiled a "Report on Intellectual Property Curricula" at the various law schools and used that to create a ranking based on course offerings.  

Ranking

Law School

Total Points

1

Santa Clara University School of Law

19.5

2

Suffolk University Law School

19

3

Whittier Law School

18

4 (tie)

Franklin Pierce Law Center

17

  

Georgetown University Law Center

17

  

Seton Hall University School of Law

17

  

The George Washington University Law School

17

  

William Mitchell College of Law

17

9

The John Marshall Law School

16

10 (tie)

Chicago-Kent College of Law Illinois Institute of Technology

15

  

The University of Akron School of Law

15

12

DePaul University College of Law

14.5

13

Vanderbilt University Law School

14

14

Benjamin N. Cardozo School of Law-Yeshiva University

13.5

15 (tie)

Loyola University Chicago School of Law

13

  

Thomas Jefferson School of Law

13

17 (tie)

George Mason University School of Law

12

  

Michigan State University College of Law

12

  

New York Law School

12

  

University of Houston Law Center

12

  

University of Illinois College of Law

12

  

University of Pittsburgh School of Law

12

  

University of San Diego School of Law

12

24

University of Richmond School of Law

11.5

25 (tie)

Arizona State University-Sandra Day O'Connor College of Law

11

  

Golden Gate University School of Law

11

  

Pepperdine University School of Law

11

  

Seattle University School of Law

11

  

Stanford University Law School

11

  

University of California-Berkeley School of Law

11

  

University of California-Hastings College of the Law

11

  

University of San Francisco School of Law

11

  

Washington University School of Law

11

  

Edward DuMont Nominated to the Court of Appeals for the Federal Circuit

The White House has announced the nomination of Edward (Ed) DuMont to the Court of Appeals for the Federal Circuit to replace Chief Judge Paul Michel who will be retiring May 31, 2010. The Senate must confirm the nomination along with the still-pending nomination of Judge O’Malley.

DuMont is a partner at WilmerHale and is an appellate specialist. He previously spent close to ten years at the Department of Justice primarily in the office of the Solicitor General and also worked in corporate transactions at Sullivan & Cromwell.

DuMont clerked for Judge Richard Posner on the Seventh Circuit in Chicago in the mid-1980′s and also spent a year in working as a lawyer at a firm in Thailand. DuMont holds a BA (history) from Yale and a JD from Stanford. He is originally from Northern California, but has worked on the East Coast for the past twenty years.

DuMont has worked on several patent appeals, often alongside former US Solicitor General Seth Waxman. Recent patent appeals including Tivo v. Echostar, Princo v. ITC (pending en banc rehearing), Airgo IP v. ArvinMeritor, Agfa Corp. v. Creo Prods., Purdue v. Endo, US Philips v. ITC.

The Federal Circuit courthouse at 717 Madison Place is less than a half-mile walk from DuMont’s current office on Pennsylvania Avenue. Like President Obama, DuMont is just shy of 50-years-old.

Although filling Chief Judge Michel’s spot, Mr. DuMont would not automatically become the next Chief Judge. Rather, that position will move to Judge Rader who is the next most-senior active judge who has not yet reached the age of 65.

Policing Priority: Nintendo Escapes Liability Based on Patentee’s Failure to Satisfy the Written Description Requirement

PatentLawPic968Anascape v. Nintendo (Fed. Cir. 2010)

A jury found that the Nintendo Wii and GameCube infringe Anascape’s U.S. patent No. 6,906,700.  The ‘700 patent claims priority to a parent application and, as it turns out, needed that priority to avoid intervening prior art.  On appeal, the Federal Circuit found the asserted claims invalid — holding that parent application could not serve as a priority document because it did not describe the invention as claimed in the ‘700 patent.

In my recent article on antedating prior art, I suggest that the prevalent practice of quickly filing provisional and other patent applications has largely supplanted patentee’s need to prove a prior invention date.  In order to claim priority to an earlier-filed patent document, that document “must meet the requirements of 35 U.S.C. 112 p1, as to that claimed subject matter.”  These requirements include enablement, written description, and best mode.

Here, the focus was on whether the priority disclosure satisfied written description requirement for the newly added claims of the ‘700 patent. Anascape’s specific problem was that the priority document identified a single “input member” that could measure movement along six degrees of freedom while the ‘700 patent claims were directed toward a controller with multiple input members that each measured fewer than six degrees of freedom.

Written Description of the Invention: The ‘700 patent’s priority document discussed prior art game controllers that were operable with fewer than six-degrees of freedom.  In its analysis, the Federal Circuit refused to consider that disclosure as applicable to the written description requirement because that disclosure “is not a description of the [claimed] invention; [rather,] it is a description of prior art joysticks as generally used in video games.”

Writing in Concurrence, Judge Gajarsa writes that this particular use of the written description requirement is “best” and preferred use of the doctrine. Namely, written description should primarily be primarily used to police priority and new matter issues and other questions of inadequate disclosure should be handled by enablement.  In my recent study of the written description requirement, I found that the USPTO is largely following Judge Gajarsa’s guidance in asserting written description rejections primarily to police priority and new matter issues.

Notes:

  • This decision appears to eliminate what was likely a $100 million total payout for Anascape.  The decision also eliminates the permanent injunction that had been stayed pending appeal.
  • Anascape appears to be primarily owned by the inventor of the ‘700 patent, Brad Armstrong. Armstrong prosecuted the applications himself. Armstrong has several continuations pending. In addition, Anascape appears to have a still-pending (but stayed) litigation against Nintendo based on several more patents that are currently undergoing reexamination.
  • Microsoft was originally a defendant in this case, but settled in a confidential agreement.

Recordation of Assignment Creates Rebuttable Presumption that Assignment is Valid, etc.

PatentLawPic967

SIRF Technology v. ITC and Broadcom (Fed. Cir. 2010)

In a 2009 decision, the International Trade Commission (ITC) ruled that SIRF and four others were violating Section 337 of the US Tariff Act of 1930 by importing and selling products with GPS devices that infringe patents owned by Broadcom (via a 2007 acquisition of Global Locate). See U.S. Patent Nos. 6,417,801, 6,606,346, 6,651,000, 6,704,651, 6,937,187, and 7,158,080.  The patents claim various forms of “assisted-GPS” that improve GPS signal reliability and location calculation speed.

Patent Ownership and Standing: One of the inventors conceived of the invention while an employee of Magellan (another GPS company) and while under an employee agreement that operated as an effective assignment of “all inventions . . . which are related to or useful in the business of the Employer . . . and which were . . . conceived . . . during the period of the Employee’s employment, whether or not in the course of the Employee’s employment.”  Magellan was aware of the inventions, but never pursued ownership rights.  Here, in an effort to disrupt Broadcom’s standing to sue, the defendants asserted that Magellan should be considered a co-owner of the patent rights.

Many patent assignment issues are determined under the appropriate state law. However, federal patent law is used to determine whether an assignment is an automatic assignment or only an agreement to later assign rights.  Applying federal law, the Federal Circuit interpreted this agreement as an automatic assignment that effectively assigns rights to inventions automatically upon their invention. 

Also as a matter of federal patent law, the court held that recordation of an assignment creates a rebuttable presumption that the assignment is valid.  Here, the appellate panel agreed that the defendants had not provided sufficient evidence to rebut that presumption.  In particular, the defendants had failed to prove that the prior-employer Magellan was the true owner. 

“If Magellan and Abraham recognized that Global Locate was the owner of the trade secret rights to the invention, it logically follows that Magellan and Abraham did not think that Magellan was the owner of similar rights that eventually became the subject of the ’346 patent.”

Patentable Subject Matter: The asserted claims included several methods of calculating position. On appeal, the Federal Circuit confirmed that those methods fit within the machine-or-transformation test of Bilski and therefore are patentable. In Bilski, the court held that the a patentable method claim must be either (a) implemented using particular machine or (b) transform an article from one state to another.  In addition, the machine-or-transformation must create a “meaningful limit on the scope of the claims.”  Here, the court held that the methods as claimed “could not be performed without the use of a GPS receiver.”  And that limits were meaningful because the GPS receiver is not simply “an obvious mechanism for permitting a solution to be achieved more quickly.” 

We also think that the presence of the GPS receiver in the claims places a meaningful limit on the scope of the claims. In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. We are not dealing with a situation in which there is a method that can be performed without a machine. Contrary to appellants’ contention, there is no evidence here that the calculations here can be performed entirely in the human mind. Here, as described, the use of a GPS receiver is essential to the operation of the claimed methods.

Comment: I certainly believe that the patents are directed toward the type of subject matter that should be patentable. However, the Federal Circuit’s analysis here is not convincing. Rather, the fact that “a GPS receiver is essential to the operation of the claimed methods” indicates that inclusion of the “GPS receiver” limitation is not meaningful. 

The question of whether the inventions were “related to or useful in the business” of Magellan was a matter of California state law.

Divided Infringement: An portion of the decision that will be interesting for patent prosecutors is directed toward joint infringement. Here, the court upheld the patentee’s efforts to direct claims toward certain particular actors and therefore avoid the Muniauction problem. Here, the steps of “communicating” and “transmitting” to a user-device were interpreted as steps that did not require end-user action even though the actual process involves end-user devices downloading the transmitted data.  Thus, despite what your speech teachers taught, communication can be one-way.