February 2011

USPTO Hopeful for Budget Increases

President Obama released his proposed budget for 2012. The new Budget would allow the USPTO “full access to its fee collections” and for a “temporary” but major fee surcharge. The proposed budget would include a 1.4% increase in fees based on the Consumer Price Index (CPI) increase and a 15% surcharge on patent fees. The projected collections for FY2012 would jump to $2.71 billion ($2,700,000,000.00), a 16% increase of FY2011 and a 34% increase of FY2010 spending.

The 2010-2012 increase works out to a little over $100,000 extra per examiner. Examiners should not, however, expect raises.

The increased budget is intended to help cut “the average overall processing time of a patent application from 35 months to 20 months by 2015” by hiring 1,500 new patent examiners and to implement a “much-needed 21st century information technology (IT) system” for the USPTO. The proposed budget is far less than the $1 billion infusion suggested by former Chief Judge Paul Michel.

Open Invitation for February 25th Event in Columbia Missouri

Dear Colleagues –

I am writing to invite you to the Missouri Law Review’s upcoming symposium that will be held here in Columbia at the University of Missouri School of Law on Friday, February 25, 2011. The focus of the event will be on the Jurisprudence of the Court of Appeals for the Federal Circuit – with a special emphasis on the Court’s patent law jurisprudence. David Kappos (Director of the US Patent & Trademark Office) will deliver the Earl F. Nelson Lecture. We have a set of great speakers coming that include Mark Lemley (Stanford) and Peter Menell (Berkeley). Two Mizzou Law grads will be presenting – Jason Mudd (’05) who is now an attorney at Shook Hardy and Ryan Vacca (’04) who is now a law professor at Akron.

Speakers include Professors Lisa Dolak (Syracuse) and Elizabeth Winston (Catholic) who have both been closely involved with Federal Circuit activities for a number of years. Their articles tend to show the type of insight that only comes from that type of experience. Professor Lee Petherbridge (Loyola LA) is one of the new leaders in empirical analysis of the court system. Many Patently-O readers know Professor Chris Holman (UMKC) from his biotech patent law blog. After practicing law for a number of years, Holman moved to academia and has written extensively on the role of patents in the biotechnology industry. Professor Greg Vetter (Houston) concentrates more on software related law and the interrelation between open source software and patent rights.

We have been approved for CLE credit in Missouri and are working on approval for neighboring states. This is a free event, but we apparently need to know how many will be there for lunch & cocktails. If you are planning to attend, please register.

Let me know if you have questions. dcrouch@patentlyo.com.

Links:

Dissenting in Patent Cases

Over the past decade, the Federal Circuit has released thousands of patent case opinions.  For today’s study, I focused on patent opinions released since January 1, 2000. And, I limited my search only to those opinions with Westlaw Headnotes. Westlaw consistently provides Headnotes for published CAFC decisions and for a small number of unpublished opinions that Westlaw deems important. For each opinion, I looked to see whether a dissent was filed and, if so, who filed the dissent.  I also excluded en banc opinions from this particular study and instead focused on three-member panels.

Of the approximately 2000 panel decisions in my sample, 13.5% included a dissent.

For those who follow Federal Circuit decisionmaking, it will not be surprising that Judge Newman filed the most dissenting opinions. Of the 471 decisions in my sample associated with Judge Newman, she dissented in roughly 17%. What may be surprising is that Chief Judge Rader has been the least likely dissenter of the appellate judges.

As the charts below suggest, Chief Judge Rader’s low dissent count does not mean he builds unanimous coalitions. Rather, it appears that Chief Judge Rader is skilled at building majority coalitions. The first chart below shows the percent of panel opinions associated with a particular judge where a dissent was filed.  The final chart just considers opinions with a dissent and reports the percent of those opinions where a particular judge is in the majority.  As the final chart shows, in cases with a split decision, Judge Newman is rarely in the majority while Judge Rader is almost always in the majority. 

In the social dynamic of panel opinions, there are particular structures that tend to lead to dissent.  In Chief Judge Rader’s case, more than 85% of his dissents were filed when at least one of Judges Lourie, Prost, or Bryson was on the three-member panel.

Using a slightly different dataset, Professor Cotropia (Richmond) found that the Federal Circuit is more likely to dissent than are other circuits — especially in patent cases. Christopher A. Cotropia, “Determining Uniformity Within the Federal Circuit By Measuring Dissent and En Banc Review,” 43 LOY. L.A. L. REV. 801, 811 (2010).  Cotropia suggests that “A likely explanation [for the high level of dissent] is that the repeated exposure to the same subject matter results in more diverse viewpoints. The deeper one gets into a particular subject, the more likely they develop their own opinions and the further developed and more nuanced these opinions become.”

Patent Reform Act of 2011: An Overview

LeahyThe Patent Reform Act of 2011 (S. 23) was introduced on January 25, 2011 by Senator Leahy (D-VT) who was joined by eight co-sponsors (all from the Judiciary Committee) that include Senators Coons (D-DE), Franken (D-MN), Grassley (R-IA), Hatch (R-UT), Klobuchar (D-MN), Kyl (R-AZ), Lieberman (I-CT), and Sessions (R-AL). The bill was referred to the Senate Judiciary Committee which unanimously approved the bill. The House of Representatives will likely move more slowly. Although House Judiciary Committee chair Rep. Smith (R-TX) co-sponsored the similar Patent Reform Act of 2009, Rep. Issa (R-CA) is the “patent expert of Congress” and has only tentatively supported the reform bills in the past. [UPDATE –  Most Recent Version of S. 23 2/11/11]

PatentLawImage080First-Inventor-to-File: The reform measure would move the US further toward a first-to-file system. Each patent application would be given an “effective filing date,” and the patentability will be judged on whether any prior art was available prior to the filing date. One-year grace period would remain in effect, but only for the inventor’s own disclosures (and disclosures derived from the inventor). Obviousness will also be judged as of the effective filing date. Inventors will no longer be able to swear behind prior art nor will they be able to establish priority in an interference proceeding. A new creation in the bill is a “derivation proceeding” that would operate only in times where an original inventor alleges that a patent applicant derived the invention from the original inventor’s work.

PatentLawImage081Damages: Patent defendants have argued that courts often treat damages issues as afterthoughts with little procedural control. The proposed amendment would add specific procedures and checks on how a judge manages the damages portion of a case. The amended statute would require that a court “identify methodologies and factors that are relevant to the determination of damages” and that “only those methodologies and factors” be considered when determining the damage award. In addition, prior to the introduction of damages evidence, the court would be required to consider either party’s contentions that the others damage case lacks a legally sufficient evidentiary base. In addition, the statute would require a judge to bifurcate the damages portion of a trial if requested “absent good cause to reject the request, such as the absence of issues of significant damages or infringement and validity.” Oddly, the proposed statute seemingly bars a judge from amending the discovery schedule or any “other matters” based upon the trial sequencing.

PatentLawImage082Enhanced Damages: Although we often discuss enhanced damages for willful infringement, the current Patent Act is not explicitly limited to situations involving willful infringement. Rather, Section 284 simply states that “the court may increase the damages up to three times the amount found or assessed.” Over the years, Federal Circuit precedent has limited the statute to only situations where the infringer’s actions were at least objectively reckless. The amended statute would codify that holding with the words “Infringement is not willful unless the claimant proves by clear and convincing evidence that the accused infringer’s conduct with respect to the patent was objectively reckless. [I.e., that] the infringer was acting despite an objectively high likelihood that his actions constituted infringement of a valid patent, and this objectively-defined risk was either known or so obvious that it should have been known to the accused infringer.” The statute also makes clear that accusations of willful infringement must be pled with particularity (following FRCP 9(b)); that proof of knowledge of patent is insufficient to establish willful infringement; that a pre-lawsuit notice of infringement cannot itself establish willfulness unless the notification is fact specific in explaining the infringement; that the failure to obtain the advice of counsel (or to present that advice to the jury) “may not be used” to prove willull infringement or inducement of infringement; and that damages subject to trebling are only those accrued after the infringement became willful; and that in a “close case” there will be no willful infringement (here, the statute requires a judge to “explain its decision” and to make a decision prior to the issue being tried by the jury).

Third-Party Challenges to Patent Rights: The bill includes three expanded ways that a third party can use the USPTO to challenge a patent: Pre-Issuance Third-Party Submissions; Third-Party Requested Post-Grant Review; and Inter Partes Post Grant Review.

Pre-Issuance Third-Party Submissions: Under the amendment, third parties would be allowed to submit any printed publication along with a description of the relevance to the USPTO to be considered during the examination of a pending patent application.

Third-Party Requested Post Grant Review: A post grant review proceeding would be created (similar to our current reexamination proceeding) that could be initiated by any party. The review would allow a third party to present essentially any legal challenge to the validity of at least one clam. A major limitation on the post grant review is the request for review must be filed within nine-months of issuance.

Inter Partes Review Proceedings: Once the nine-month window for post grant review is expired, a party may then file for “inter partes review.” This new system would replace inter partes reexamination and would be limited to consideration of novelty & obviousness issues based on prior art patents and printed publications. (It appears that third-party requested ex parte reexamination would remain a viable option as well).

False Marking: A large number of false patent marking cases have been filed in the past year. The bill would eliminate those lawsuits except for ones filed by the US government or filed by a competitor who can prove competitive injury.

PatentLawImage083Oath: The bill would make it easier for a corporation to file a substitute inventor’s oath when the inventor is non-cooperative.

Best Mode: Although an inventor will still be required to “set forth” the best mode for accomplishing the invention, the statute would be amended to exclude failure of disclose a best mode from being used as a basis for invalidating an issued patent. The PTO will still have a duty to only issue patents where the best mode requirement has been satisfied.

Fee Setting Authority: The PTO would be given authority to adjust its fees, but only in a way that “in the aggregate” recover the estimated costs of PTO activities. Along this line, a new “micro” entity would be created that would have additional fee reductions.

Top Twelve Most Read Patently-O Posts over the Past Year

  1. PatentLawImage078Bilski v. Kappos
  2. Court: Essentially All Gene Patents Are Invalid
  3. Patent Reform Act of 2010: An Overview
  4. Therasense v. Becton Dickinson: Federal Cicuit Grants En Banc Request to Rethink the Law of Inequitable Conduct
  5. Dear Patent Attorney and Patent Agent: Consider Joining the PTO
  6. USPTO Guidelines for Determining Obviousness
  7. Patent Absurdity: The Movie
  8. Federal Circuit Confirms that Patents Must Meet Both the Written Description and Enablement Requirements of Section 112.
  9. PatentLawImage079Bilski, Kenny Rogers and Supreme Court Rule 46 (by Prof Ghosh)
  10. Top-Ten Pending Patent Cases (using Hal Wegner's List)
  11. Bilski Watch: Timing of Supreme Court Decisions (Using Prof Miller's Data)
  12. How should a future patent attorney choose a law school?

See the list from 2009.

Patently-O Bits & Bytes

By Lawrence Higgins

Upcoming Events:

  • The Churchill Club will hold their Great Debate on the topic, “Is Software Patentable? Should it be?” on February 16 in California. [Link]
  • The Texas Intellectual Property Law Journal is hosting its annual Intellectual Property Symposium entitled “Creating a Landscape of Innovation” on February 18. [Link]
  • Law Seminars International is holding its annual Conference entitled “Best Practices in Patent Monetization” February 21-22 in San Francisco. [Link]
  • The Missouri Law Review is hosting a Symposium on February 25th in Columbia Missouri about the patent jurisprudence of the Court of Appeals for the Federal Circuit. We’ll have a number of great speakers, including USPTO Director David Kappos. [Link] (Free event, but registration required).
  • Judge Timothy Dyk will give a lecture on the commercial impact of complexity and confusion in patent law at the Lewis and Clark law school on March 1. [Link]
  • Berkeley Center for Law and Technology is hosting an event entitled “Beyond Piracy in the New China” on March 10. [Link]
  • The University of Kansas School of Law is hosting the 2011 Patent Conference (aka “Pat Con”) on April 8. The idea behind the conference is that “patent scholars in law, economics, management science, and other disciplines can share their research.” If you would like to present, please submit an abstract to KU Professor Andrew Torrance (torrance@ku.edu) by February 15th, 2011. [Link]

Palin trademark application refused

  • Sarah and Bristol Palin attempted to register trademarks on their names for “motivational speaking services.” The applications have been initially rejected on a technicality. Since the marks are the names of living individuals, those individuals (the Palins) must file a written consent for the name to be registered as a trademark. [Link]

Was Reexamination the Answer in Tokai v. Easton?

  • Would the outcome of the CAFC’s 2-1 panel obviousness decision been different if the obviousness issue had been determined in reexamination rather in the courts? Scott Daniels argues that a reexamination request would have accomplished the same result at a much lower price. [Link]

Senate Committee approves patent reform

  • The US Senate Judiciary Committee approved the Patent Reform Act of 2011. [Link] Before doing so, however, the bill was amended to remove language making it more difficult to prove willful infringement. The bill will now move to the Senate floor to be voted on. This is the 3rd time since 2008 that that patent reform legislation has gone to the Senate floor. [Link]

Patent Jobs:

  • Fenwick & West is looking for an experienced patent attorney to work for its Silicon Valley office. [Link]
  • AT&T is seeking a patent attorney with 3-5 years experience to work in their Atlanta location. [Link]
  • Luce Forward is seeking an attorney with a minimum 7 years of experience in patent/trademark litigation or prosecution. [Link]
  • Stanford Law School is searching for a Director of its soon-to-be-launched IP and Innovation Clinic. [Link]

Al Tramposch Takes Charge of USPTO External Affairs

Anyone working in international intellectual property policy probably knows Al Tramposch.  For the past few years, Mr. Tramposch has been serving as a deputy executive director of the AIPLA focusing on international and regulatory issues.  Prior to that, he worked for many years as the director of Industrial Property Law (patents, trademarks, and design rights) at WIPO in Geneva and in private practice in DC.  He also clerked for Judge Newman at the Federal Circuit.  I’ve known Tramposch to be extremely skilled – both because of his deep knowledge of the law and because of his natural management talent.

USPTO Director David Kappos recently appointed Tramposch to take over the position as Administrator for Policy and External Affairs at the USPTO. That position was previously held by Duke Law professor Arti Rai.  Tramposch will immediately be placed in the inner sphere of USPTO management.  According to the USPTO, the position has five core management responsibilities over (1) administration and support for external affairs, which will include all domestic and international IP policy-related operations; (2) congressional and legislative engagement, as carried out by the Office of Governmental Affairs; (3) education and training, as carried out under the Global Intellectual Property Academy (GIPA); (4) global IP leadership through administration of the IP Attaché Program; and (5) economic analysis, as carried out by the Chief Economist.

Professor Rai commented to me that Tramposch is “particularly well-suited for the vital role that the Administrator plays in managing relationships with WIPO, other international organizations, and the intellectual property systems of other countries.”

The second major empty slot at the PTO is that of Deputy Director. Sharon Barner left the position in January.

Super Bowl and the NFL’s Trademark Offense

My local Super Market is advertising its assortment of “Big Game” supplies.  The store felt free to use “Big Game” to describe the Super Bowl since the USPTO rejected the NFL’s attempt to register a trademark on the that particular phrase. My local sports bar was bold enough to advertise their “Super Bowl” party in a local advert.  The bar must be a risk seeker.  The NFL is clear in its website terms of use that everyone is “expressly prohibited from using or misusing any [NFL] Trademarks.”  And, the NFL has aggressively protected its mark.  

In a recent post, attorney-blogger Ken Basin took aim at the NFL and explained his opinion that the NFL is over-reaching.  His argument is that the doctrine of nominative fair use is certainly broad enough to allow a company to use the words “Super Bowl” when advertising a product or service to be used in conjunction with the Super Bowl.

Courts recognize that it’s virtually impossible to refer to particular products or services without using protected trademarks — how can I review the new Apple iPad without using the words “Apple” or “iPad”? That’s why the law allows the public to freely use a protected trademark nominatively, i.e., to describe the product or service underlying the mark, often in the only way that makes any sense. We lawyers call this idea the “nominative fair use” doctrine. And it applies even where the speaker’s goal in using the mark is to describe and promote its own products or services.

Read Ken’s Post.

Mark McKenna — an avid sports fan and Notre Dame law professor has written several articles attacking the current breadth of trademark law.  One of his focal points has been the extension of trademark rights to cover merchandise such as t-shirts and jerseys. The recent paper by McKenna and Mark Lemley titled “Owning Mark(et)s” is on point.

Briefing Microsoft v. i4i: Amicus Briefs Supporting Easier Invalidation of Patents in Court

Microsoft v. i4i, Docket No. 10–290 (Supreme Court 2011)

Briefing has begun in earnest.  Microsoft recently filed its opening brief on the merits (File Attachment: microsoftopen.pdf (250 KB)) and now twenty-five self-proclaimed friends-of-the-court have added their respective two-cents.  The case focuses on the burden of proof required to invalidate an issued patent. Microsoft has challenged the Federal Circuit’s rule that clear-and-convincing evidence is necessary. Instead, the software giant argues that a preponderance of the evidence should be sufficient to invalidate a patent — especially when a court is considering evidence of invalidity that was not considered by the Patent Office during examination. 

In many ways, this case would only shift marginal cases — such as when an accused infringer is able to prove that a patent is probably invalid, but cannot provide clear and convincing evidence of that fact.  The specific marginal problem for Microsoft is that it presented only limited evidence of the existence of custom built prior-art software that would invalidate i4i’s patent. Unfortunately for Microsoft, that twenty-year-old software code is no longer available and the parties presented competing factual testimony as to the operation of the prior art software.

Of the twenty-five friend-of-the-court (FOTC) briefs filed thus far, twenty explicitly and officially support Microsoft’s position that the standard should be lowered.  Five briefs claim to support “neither party.” (Briefs supporting i4i will be filed in March, 2011).  The official claim of support often has limited meaning. I would roughly divide the briefs into four groups: (1) Seven briefs support Microsoft’s position that the clear-and-convincing standard should not apply when the evidence of invalidity was not considered by the USPTO. (2) thirteen briefs further argue that the standard should be lowered-across-the-board in [essentially] all cases.  (3) Two briefs take the opposite position — that the standard should remain clear and convincing. Although these two briefs officially support neither party, I expect many similar briefs to be filed in support of i4i next month. (4) Three briefs focus on interesting issues of whether we should have dual (or variable) standards that depend upon whether the PTO considered the evidence during prosecution. The following is a discussion of some of the more interesting aspects of the briefs that I noticed.

Lowering the Standard when the PTO has not Considered the Arguably Invalidating Evidence:

The well respected Supreme Court patent team at Fried Frank of Jim Dabney, Professor John Duffy, and Steve Rabinowitz filed a brief on behalf several corporations, including SAP, Symantec, Facebook, and Yahoo!. Their brief agrees with Microsoft that the standard for invalidating a patent should be lowered unless the file wrapper “shows that the PTO has engaged in reasoned decisionmaking with regard to a factual issue.”  The brief grounds its argument in  the Administrative Procedures Act (APA). As suggested above, the brief indicates that the APA “reasoned decisionmaking” analysis should occur on a fact-by-fact basis — with deference only given when evidence shows that the PTO made a reasoned decision regarding the fact in question.  File Attachment: sap.pdf (170 KB). Writing for a group of 37 Professors, Professor Mark Lemley adds that APA deference may be appropriate only in very limited circumstances — such as when a particular factual question was decided in the course of an adversarial inter partes reexamination proceeding. File Attachment: lemley.pdf (229 KB). In a complementary brief, WM Mitchell Law School’s IP Institute (led by Profs Moy and Erstling) reviews 150 years of Supreme Court case to reach its conclusion that the clear-and-convincing evidence rule “was extended to issues not before the USPTO only recently.” File Attachment: wmmitchell.pdf (178 KB). See also File Attachment: bsa.pdf (196 KB)

Generic pharmaceutical companies generally support Microsoft’s position that “bad” patents should be easier to invalidate. Shashank Upadhye (Apotex’s IP chief) generally presents interesting arguments. The gist of his brief is that courts would do better to err on the side of free competition (i.e., invalidity). File Attachment: apotex.pdf (181 KB). Teva argues that C&C standard encourages applicant to conceal prior art. The logic behind that argument is that applicants would prefer to sneak through the PTO and then rely on the C&C standard in litigation to win the case or force settlement. File Attachment: tevapharma.pdf (234 KB). The Bar Association of DC argues the other-side — that increasing the incentive to submit prior art references during prosecution will not lead to better patent quality. File Attachment: badc.pdf (104 KB).

Apple and Intel support Microsoft’s position. However, it is clear that the companies (likely Apple) strained to avoid saying that they support “Microsoft” or even the “petitioner.”  Overall, I would say that the brief does more harm to its cause than good.  The problem is that the brief offers no additional arguments except for a three page section regarding “practical” and “empirical” evidence that the C&C standard makes a difference to juries. Unfortunately for Apple, the evidence presented is glaringly weak. File Attachment: apple.pdf (109 KB).  However, evidence from other briefs, such as that filed by Prof Hollaar may provide a cumulative bulk sufficient to make this case.  File Attachment: hollaar.pdf (262 KB).

EFF and PubPat: As might be expected, the Electronic Frontier Foundation (EFF) and the Public Patent Foundation (PubPat) both argued that a preponderance of the evidence should be sufficient to invalidate a patent in all cases. EFF’s brief (penned primarily by Michael Barclay) focuses primarily on policy — arguing that the sheer number of issued-but-invalid patents makes this an important issue that needs resolution. File Attachment: eff.pdf (293 KB). Dan Ravicher at PubPat similarly writes that the “extremely poor quality” of US patents screams for a lowering of the standard. File Attachment: pubpat.pdf (92 KB). See also, File Attachment: ctia.pdf (200 KB), File Attachment: hercules.pdf (207 KB).  The brief by Google, et al., takes this a step further than the normal “lack of time” and “incompetence” statements –  arguing that the current law and practice “tilt the scales heavily in favor of granting patent applications based on incomplete analyses.” File Attachment: google.pdf (241 KB).

Cisco, Ebay, Netflix, Toyota, and others argue that the advent of third-party requested reexaminations changes the system in a way that impacts the proper standard used in district court litigation. The brief argues (in a way that I don’t yet fully understand) that the existence of reexaminations suggests that the litigation standard should be a preponderance of the evidence. File Attachment: cisco.pdf (187 KB).

Supporting a High Standard: As the largest US patent holder, it might be no surprise that IBM supports a high standard for invalidating a patent.  Of course, across the “v” sits Microsoft as another very large patent holder.  I would point to three primary differences between IBM and Microsoft: (1) IBM has a long and extensive pro-patent stance; (2) IBM has an extremely strong and lucrative patent monetization program; and (3) perhaps most importantly, IBM itself has only rarely been sued for patent infringement.  File Attachment: IBM.pdf (274 KB). The AIPLA –  the largest association of US patent lawyers – also supports the status quo. File Attachment: aipla.pdf (157 KB).

Professor Morris does not take a position regarding a high or low standard. Rather, her focus is on whether it makes sense to have two standards of proof that vary according to whether the particular fact in question was considered by the USPTO. File Attachment: Morris.pdf (494 KB).

Notes:

 

 

 

 

The Teeth of KSR: Obviousness on Summary Judgment

Tokai Corp. v. Easton Enterprises (Fed. Cir. 2011)

Tokai’s patents relate to a safety switch the type of long-nozzle lighters that are often used to light barbecues and patron saint candles. Easton has allegedly sold more than 9-million infringing lighters in the US. The district court construed the claims broadly – leading Easton to admit infringement but successfully challenge the claims as obvious. The district court’s obviousness finding came on summary judgment after the court excluded Tokai’s expert testimony (since the plaintiff had not submitted written reports during discovery) – finding no “genuine issue of material fact as to the obviousness of the asserted claims.”

On appeal, the Federal Circuit affirmed – holding that the district court had properly excluded the expert testimony and that the obviousness determination was correct.

Lets focus on obviousness:

Conventional wisdom over the past twenty years has been that summary judgment is useful for resolving issues of infringement and novelty, but that obviousness challenges are rarely resolved on summary judgment. Although ultimately a question of law, judges often leave the obviousness question for a jury. That conventional wisdom may have changed in 2007 when the Supreme Court decided KSR v. Teleflex, 550 U.S. 398 (2007). In that case, the Supreme Court wrote what looked like a summary judgment decision finding the asserted patent invalid as obvious.

The question of obviousness is defined in 35 U.S.C. § 103(a). The statute considers the differences between the patented invention and the prior art and whether, in light of those differences, a person having ordinary skill in the art would have found the invention obvious at the time of the invention.

Clear and Convincing + Added Burden: A question raised on appeal relates directly to the Supreme Court’s upcoming decision in Microsoft v. i4i. Here, some, but not all, of the four prior art references had been considered by the USPTO during prosecution. The patentee argued that the court should have provided more deference to the PTO. On the other side, the defendant argued that much less deference should be given to PTO decisions because the PTO had not considered “key” elements of the obviousness argument. On appeal, the Federal Circuit affirmed that the current law-of-the-land requires clear and convincing evidence to invalidate a patent and that an “added burden” is not required when the obviousness question is based on at least some evidence not considered by the PTO.

Conclusion of Obviousness: In arriving at its conclusion that Tokai’s asserted claims were obvious, the appellate panel looked at the fact that the components of the claim are “simple mechanical parts that are well known in the art;” that “a need for safety utility lighters was recognized in the art;” that similar safety switches were already available for cigarette lighters (an admitted analogous art); and that the art is “predictable.” As in KSR, the appellate court here held that the “identified, predictable solution” to the “known problems” were within the grasp of a skilled artisan.

It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters, as disclosed in Floriot and/or Morris, to fit a utility lighter as disclosed by Shike, even if it required some variation in the selection or arrangement of particular components.

Invalidity affirmed.

In dissent, Judge Newman lauded the importance of the invention and explained her view that the patents were valid.

The Tokai lighter has an ingenious safety design, whereby the device is simple to operate by adults but not by children, unlike prior art utility lighters, and locks automatically after use, unlike prior art utility lighters. The Tokai safety structure does not result from direct combination of the prior art. Nonetheless the district court, and now this court, hold on summary judgment that the asserted claims of the Tokai patents are invalid for obviousness. I must, respectfully, dissent.

. . . .

The determination of obviousness is not whether a person could, with full knowledge of the patented device, reproduce it from prior art or known principles. The question is whether it would have been obvious, without knowledge of the patentee’s achievement, to produce the same thing that the patentee produced. This judgment must be made without the benefit of hindsight. It is improper to take concepts from other devices and change them in light of the now- known template of the patented device, without some direction in the prior art that would render it obvious to do so.

In a crowded and competitive field such as this is stated to be, a modification that achieves a valuable improvement is of significance in view of the many entrants seeking commercial advantage. As the Hummer court recognized, incremental but unobvious improvements serve the public interest, and are included in the purpose of the patent incentive.

  

Patently-O Bits & Bytes

 

By Lawrence Higgins

Upcoming Events:

  • Licensing Executives Society will hold its winter meeting in San Jose from February 10-11. Speakers include Damon Matteo, Nola Masterson, and Bruce Lehman. Patently-O readers get $200 of the registration rate by using code PO11. [Link]
  • Practising Law Institute (PLI) will hold its 5th annual Patent Law Institute in New York from February 17-18. Deputy Director Sharon R. Barner will deliver the USPTO keynote address. [Link]
  • The Texas Intellectual Property Law Journal will host its 12th annual Intellectual Property Symposium on February 18th in Austin. [Link]
  • The Missouri Law Review is hosting a Symposium on February 25th in Columbia Missouri about the patent jurisprudence of the Court of Appeals for the Federal Circuit. We’ll have a number of great speakers, including USPTO Director David Kappos. [Link] (Free event and free CLE).
  • 13th Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy will be held in Akron on March 21. Guest Speakers include Donald Chisum, Judge Paul Michel, and Marybeth Peters. [Link]

Johnson & Johnson loses patent infringement suit

  • A jury in Texas has ordered J&J to pay $482 million to inventor Bruce Saffran for infringing his patent. Saffran’s patent # 5,653,760 [Link]was for a cardiac stent, which is used after heart surgery. Saffran previously won a $50 million settlement from Boston Scientific for infringing the same patent. [Link]

Virginia State Bar IP Section Law Student Writing Competition

  • The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia relating to an intellectual property law issue or the practice of intellectual property law.  The winner receives a cash prize of $4,000. [Link]

Apple Patents Glove for Use with Electronic Devices

  • Apple has been issued a patent for what they call a “High tactility glove system”. Patent # 7,874,021 states that this glove may be used with an electronic device in cold weather, since regular gloves do work well when using devices like the iPod. [Link]

Sharp files patent infringement suit

  • Sharp filed a patent infringement suit against Au Optronics, in regards to crystal display (LCD) technology. The companies had a license agreement which expired on December 31st; Sharp wishes to block sales and imports of products that infringe the patent. [Link]

Patent Jobs:

  • Euro-Pro is seeking a patent agent with an engineering background and 3-5 years experience. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for an experienced patent attorney with a chemical/chemical engineering degree to work for its Virginia office. [Link]
  • Ice Miller is seeking a patent attorney with an engineering background and 2-4 years of experience. [Link]