April 2011

Crown Packaging v. Ball Metal Beverage Container: The Problem-Solution Approach to Written Description Issues

By Jason Rantanen

Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corporation (Fed. Cir. 2011) Download 10-1020
Panel: Newman, Dyk (dissent), Whyte (author)

For the past decade, the Federal Circuit has struggled to reconcile the the written description rules announced in its biotechnology-related opinions with the patentability requirements for patents in other technological fields.  Particularly challenging for the court are the implications of a strong written description doctrine for mechanical inventions, which historically were subject to little scrutiny under the broad approach to the written description requirement.

Crown Packaging presents the latest iteration of the court's thinking on this issue.  Penned by the highly regarded Judge Ronald M. Whyte of the Northern District of California, the opinion firmly lays to rest one possible argument for challenging mechanical patents on written description ground and confirms that the Problem-Solution approach to analyzing written description issues applied in Revolution Eyewear is alive and well post-Ariad.  Given the depth of its treatment of the issue, this is an opinion that should go into every attorney's toolbag for addressing non-biotech related written description issues.

The patents at issue in Crown disclose a beverage can end that reduces the amount of metal wasted during the process of seaming the can end to the can body.  (Picture a can of soda.  The can end is the top portion that one drinks from.  The can body is the part that contains the beverage.)  The patents (which share a specification) solve the problem of reducing metal waste in two ways: first, by changing the angle of the vertical portion of the inside wall from nearly perpendicular to significantly angled, and second, by reducing width of the reinforcing bead (the little channel that runs along the inside of the can lip that tends to fill up with soda).  Because simply reducing the width of the reinforcing bead can present structural challenges and result in unsightly scuffing, the patent also discloses a particular type of chuck (the portion of the seaming machinery that sits inside the top of the can against which the lip is rolled) that does not drive deeply into the reinforcing bead.

Figure 2 illustrates the prior art; Figure 5 is an embodiment of the invention.  In the prior art can end, the peripheral walls are nearly vertical and the chuck (element 17) fully enters the reinforcing bead (element 15); in the embodiment of the invention, the walls are closer to 45 degrees and the chuck (element 31) does not enter the reinforcing bead (element 25).

Crown Fig 2
Crown Fig 5
Crown's two patents, one for a product and the other a method of manufacturing, include claims covering just the use of an angled wall without mentioning the narrow bead or penetration of the chuck. During the district court proceedings, Ball argued that these claims lacked written description support because they covered embodiments both in which the chuck was driven inside the reinforcing channel as well as embodiments in which the chuck was driven outside the bead despite only describing embodiments showing the latter in the specification.  The district court agreed with Bell, granting summary judgment of invalidity.

Judge Whyte and Judge Newman disagreed with the district court.  After dismissing the species-genus approach to these types of situations, the majority framed the issue in problem-solution terms.  Relying on Revolution Eyeware, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed. Cir. 2009), the court agreed with Crown that "[i]nventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in the claim." Slip Op. at 13, quoting Revolution Eyewear at 1367.  Here, there were two separate, clearly described solutions to the problem of improving metal useage: modifying the slope of the wall or limiting the width of the reinforcing bead.  Nor does it matter that both solutions relate to the same problem: "we specifically held in Revolution Eyewear that it is a 'false premise that if the problems addressed by the invention are related, then a claim addressing only one of the problems is invalid for lack of sufficient written description."  Slip. Op. at 14, quoting Revolution Eyewear at 1367. And the majority distinguished the issue of enablement from that of written description, concluding that Ball's argument relating to whether one of ordinary skill in the art could not seam a can with an increased sloped chuck wall without also avoiding contact with the reinforcing bead presented an issue of enablement, not written description. 

One possible limitation on the majority's holding, however, is where the specification mandates that the prior art problems must always be solved together.  Here, the specification did not so require – rather, "the specification supports the asserted claims that achieve metal savings by varying the slope of the chuck wall alone."  Slip Op. at 15.  Yet this will likely be an argument raised by future parties.

The Dissent
Although agreeing with the majority on the reversal of the district court's grant of summary judgment of anticipation, Judge Dyk disagreed with its treatment of the written description issue.  Judge Dyk's dissent rested on a different reading of Revolution:

Relying on Revolution Eyewear, the majority holds that the claims are valid. However, Revolution Eyewear, in holding that a claim may address only one of the purposes disclosed in the specification, still requires explicit disclosure of the embodiments in the claims: “Inventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in that claim.” Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1367 (Fed. Cir. 2009) (emphasis added). Therefore, the claims, whether directed to solving a single problem or multiple problems, must still be grounded in the specification.

Thus in Judge Dyk's view, the claims lack written description:

There is no question that the specification does not teach combining the sloped can end wall together with the wider, prior art bead and driving the chuck into the bead instead of the sloped can end wall. That combination is a new and distinct invention, and our written description jurisprudence requires that it be described in the specification. The fact that the claims are broad enough to cover such an invention or imply that the claims cover such an invention is not sufficient when the invention itself is not described either in the claims or elsewhere in the specification. The failure of the specification to describe the invention requires invalidation of claims 50 and 52.

Commentary:
I find it difficult to agree with Judge Dyk's distinguishing of Revolution Eyewear, which was decided on strikingly similar facts, or his deeper view of what constitutes an invention.  In Revolution, the patent addressed two problems presented by prior-art magnetic sunglasses that attached to the frame of a pair of glasses: a frame strength problem, which the inventor solved by placing the magnets on protrusions extending from the primary and auxiliary frames, and a stability problem, which the inventor solved by having the protrusions extending from the auxiliary frame rest on top of protrusions extending from the primary frame.  The asserted claim covered only the former: placing the magnets on protrusions, and did not include any limitations directed to the stability problem.

In rejecting the written description defense, the Revolution court pointed specifically to Figure 3 of the original patent, reproduced below:

Revolution Eyeware Figs 3 and 4
This figure discloses only the combination embodiment: a primary frame with magnet-containing protrusions designed so that the auxiliary frame protrusions will rest on top (element 13/14 on the primary, 21/22 on the auxiliary).  The court's opinion did not rely on any embodiments showing only magnet-containing projections without the stability component.  Yet, under Judge Dyk's reasoning, such an embodiment could not provide the necessary written description support. 

Moving into the abstract, Judge Dyk's view of the nature of an invention also seems problematic to me.  Judge Dyk seems to be expressing the Louriean idea that "the invention" must be limited to the identical embodiments disclosed in the patent.  Any alteration of those embodiments, such as combining one particular inventive idea disclosed in the patent with the prior art, renders the claim invalid.  But this bright line rule ignores one of the underlying tensions in patent law, namely, that it is impossible to describe every single possible permutation of the invention.  Patents don't need to specify, for example, that a particular device may be painted every color of the rainbow to provide written description support for a claim that contains no limitations as to color.  Yet this seems to be the logical extension of the embodiment-only approach, and one that continues to be trouble me. 

Federal Budget Cuts = USPTO Budget Cuts?

For the most part, government accountants do not care that the USPTO is fee-funded rather than taxpayer-funded. Thus, $100 million cut from the USPTO budget counts as $100 million cut from the federal budget. In the current budget climate, you can imagine where this is going.

It appears that the most recent federal budget compromise (H.R. 1473, the Full-Year Continuing Appropriations Act, 2011) would strip approximately $100 million from USPTO collected fees and divert that money to other federal programs. The proposed budget provision is written as follows:

Notwithstanding section 1101, the level for ”Department of Commerce, United States Patent and Trademark Office, Salaries and Expenses” shall be $2,090,000,000, to remain available until expended: Provided, That the sum herein appropriated from the general fund shall be reduced as offsetting collections assessed and collected pursuant to 15 U.S.C. 1113 and 35 U.S.C. 41 and 376 are received during fiscal year 2011, so as to result in a fiscal year 2011 appropriation from the general fund estimated at $0: Provided further, That during fiscal year 2011, should the total amount of offsetting fee collections be less than $2,090,000,000, this amount shall be reduced accordingly.

The USPTO currently expects to receive about $2.19 billion in fee collections for FY2011, but the bill would limit the Agency’s spending to $2.09 billion. That extra $100 million would then go to pay for other government expenditures. Although $100 million only about 5% of the USPTO’s annual budget, the cuts ask for $100 million from the next five months, which would represent a 10% cut in spending over that time period.

The AIPLA has continued to lobby congress to allow the USPTO to spend the fees that it collects. AIPLA executive director Todd Dickinson wrote “The ability of the Office to do an efficient and reliable job depends on these funds, none of which comes from Treasury or has any impact on reducing overall government spending.”

Fixing the “First Inventor to File” One-Year Grace-Period Provision of the Patent Reform Bills

Guest Post by Ted Sichelman, University of San Diego School of Law

As any avid reader of Patently-O knows, the pending patent reform bills all contain a shift from a primarily "first to invent" to a primarily "first to file" approach. Previous posts have described many of the differences between the present and proposed approaches (see, e.g., here and here). In this post, I focus on the treatment in the bills of an inventor's sale and use of a claimed invention in the one-year period just prior to filing. I argue that the bills' language does not effectuate Congress's intent to keep the inventor grace period intact, and I propose suitable language to do so at the end of the post.

Under the Patent Act now in effect, an inventor's disclosure of a claimed invention in a previously filed patent or application, or an inventor's use, sale, or offer for sale of the invention can only count as prior art or a bar to patenting (if at all) if those events occurred more than one year before the effective filing date of the application claiming the invention. This one year limitation on prior art is commonly referred to as the "grace period."

Apparently, the Senate meant to carry over the grace period for an inventor's disclosure, use, or sale of a claimed invention—as well as exclude potential prior art derived from the inventor—in the bill it recently passed. As Senator Patrick Leahy exclaimed in a colloquy with Senator Orrin Hatch, if the inventor's invention is "described in a printed publication, or in public use, on sale, or otherwise [made] available to the public" by the inventor (or one who derives from the inventor) less than one year before filing, then "there is absolutely no situation in which" this activity would bar patentability.

Unfortunately—as Dennis Crouch, Hal Wegner, and others have recognized—the plain language of the relevant provisions in the recently passed Senate bill, as well as the pending House bill, does not appear as broad as Senator Leahy believes. In particular, the relevant provisions only exclude from prior art "disclosures" by inventors (and derivers) made less than one year before filing ("A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention …") (emphasis added).

A plain language interpretation of "disclosure" would refer to printed material, such as patents and publications—as well as oral disclosures, such as at a trade show—but not necessarily uses, sales, or offers for sale of the invention. Moreover, an actual "disclosure" of the invention would presumably require that the disclosed material be "enabling" in the prior art sense—namely, that description, use, sale, etc., disclose to one of the ordinary skill in the art how to make (or perform the steps of) the invention (see, e.g., Perricone v. Medicis Pharm. Corp. (Fed. Cir. 2005) (holding that a "disclosure is prior art to the extent of its enabling disclosure"); In re Donohue (Fed. Cir. 1985) ("[E]ven if the claimed invention is disclosed in a printed publication, that disclosure will not suffice as prior art if it is not enabling.")).

Yet, the Federal Circuit has routinely held that "non-informing" uses or sales of the claimed invention made more than one year before filing—namely, ones which would not inform one of ordinary skill how to make the invention—may count as prior art under the current statute (see, e.g., See In re Epstein (Fed. Cir. 1994) ("Beyond this 'in public use or on sale' finding, there is no requirement for an enablement-type inquiry.").). Moreover, the Federal Circuit has held that secret use of a claimed method by an inventor to make a product that is sold to the public may count as prior art (see Gore v. Garlock (Fed. Cir. 1983)). Thus, a plain language reading of "disclosure" arguably would not—contrary to Senator Leahy's intention—exclude from prior art non-informing or secret uses and sales made within the grace period.

Senator Hatch asserts there is no problem with the "disclosure" language because "[i]f a disclosure resulting from the inventor's actions is not one that is enabled … then such a disclosure would not constitute patent-defeating prior art … in the first place." Yet, nothing in the Senate bill points towards such a reading. Specifically, the provision in the bill enumerating what counts as prior art states:

Sec. 102. Conditions for patentability; novelty

(a) Novelty; Prior Art-

A person shall be entitled to a patent unless–

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention ….

Granted, this provision appears to require that sale and use prior art be made "available to the public." Yet, under Federal Circuit doctrine, sale and use art need not be enabling in order to be available to the public. In particular—as I just mentioned—"non-informing" and "secret" uses and sales may count as prior art. Thus, a plain language reading of the pending bills would arguably include as prior art sales and uses that are clearly not "disclosures" in the ordinary sense of the term.

And because courts of late—particularly the Supreme Court (see, e.g., Bilski)—have used plain language interpretations of the Patent Act, it is not prudent drafting to hope courts will look to the legislative history to fix the situation. Moreover, as Hal Wegner has noted, the Leahy-Hatch statements actually post-date the passage of the Senate bill, potentially negating their value as probative legislative history—especially in view of some seemingly contrary statements in the pre-passage legislative history (see, e.g., 157 Cong. Rec. 1348, 1355-56 (Mar. 9, 2011) ("An inventor who publishes his invention retains an absolute right to priority if he files an application within one year of his disclosure.") (emphasis added)).

The policy problem with treating (at least many) sales and uses made during the one-year grace period as prior art is that it forces inventors to forgo a wide range of commercial activity prior to filing for a patent. This would impose a particularly heavy burden on independent inventors, as well as startup and early-stage companies, who simply cannot afford to file patent applications on every invention before getting a sense of the invention's commercial viability. (See here and here for data on startup patenting costs.)

In order to remedy the problem, the bills' proposed provision can be easily revised. Just this morning, a Manager's amendment (Download Managers_Amendment_to_HR1249) was introduced in the House that would remove "in public use, on sale, or otherwise available to the public" from the prior art provision of Section 102(a)(1) and replace it with "otherwise disclosed to the public." This change would presumably mandate that only sales and uses, whether made by the inventor or a third party, that are enabling would ever count as prior art—and not just for grace period purposes. This legislative change would effectively overrule many years of well-established judicial precedent that non-informing uses and sales by inventors and third parties, as well as a secret use of a claimed method by an inventor to manufacture products then sold to the public, count as bars to patenting.

Such a shift would be unwise, because it would allow inventors to commercially benefit from their inventions (without disclosing them) for an indefinite period of time before filing for a patent. As Judge Learned Hand explained in Metallizing Engineering (2d Cir. 1946) (emphasis added), "It is indeed true that an inventor may continue for more than a year to practice his invention for his private purposes of his own enjoyment and later patent it. But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly."

Instead, the provisions enumerating prior art should be left intact, and the exclusionary clause revised to make it absolutely clear that all inventor sales, uses, or other activities that make the invention available to the public less than one year before filing would be excluded as prior art (added material underlined):

SEC. 2. FIRST INVENTOR TO FILE.

* * *

`(b) Exceptions-

`(1) DISCLOSURES, USES, OR SALES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure, use, offer for sale, or sale made 1 year or less before the effective filing date of a claimed invention, or making the claimed invention available to the public 1 year or less before the effective filing date of the claimed invention, shall not be prior art to the claimed invention under subsection (a)(1) if–

`(A) the disclosure, use, offer for sale, or sale of the claimed invention, or the making of the claimed invention available to the public, was made by the inventor or joint inventor or by another who obtained the subject matter disclosed, used, offered for sale, sold, or made available to the public, directly or indirectly from the inventor or a joint inventor; or

`(B) the subject matter disclosed, used, offered for sale, sold, or made available to the public had, before such disclosure, use, offer for sale, or sale of the claimed invention, or the making available to the public of the claimed invention, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Ted Sichelman is an Assistant Professor at the University of San Diego School of Law, where he teaches patent law and other intellectual property courses. Charles Coover provided helpful research assistance for this post.

US Government Asks for Increased Deference When Patent Applicants Challenge BPAI Decisions in Court

Kappos v. Hyatt (On petition for writ of certiorari, 2011) (Download Hyatt.GovtBrief)

Although the US Patent & Trademark Office (USPTO) and the Department of Justice (DOJ) have been at odds on the issue of the patent eligibility of genetic material isolated from a living organism, the two agencies are speaking with one voice against the Federal Circuit's recent decision in Hyatt v. Kappos. In that en banc opinion, the court broadened a patent applicant's rights associated with the "remedy by civil action" provided by Section 145 of the Patent Act. Under § 145, an applicant can file a civil action in DC District Court whenever "[a]n applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences."

In a 6-2-1 decision, the Federal Circuit reversed its prior precedent and held that a patent applicant is allowed to introduce new evidence in a Section 145 civil action filed to challenge a USPTO refusal to grant patent rights and that the issues implicated by the new facts must be considered de novo.

Judge Moore wrote in the majority opinion that:

[W]e hold that the only limitations on the admissibility of evidence applicable to a § 145 proceeding are the limitations imposed by the Federal Rules of Evidence and Federal Rules of Civil Procedure. Therefore, we hold that the district court applied the wrong legal standard for the admissibility of evidence in a § 145 proceeding and abused its discretion when it excluded Mr. Hyatt's declaration. . . .

The particular significance of a § 145 civil action is that it affords an applicant the opportunity to introduce new evidence after the close of the administrative proceedings—and once an applicant introduces new evidence on an issue, the district court reviews that issue de novo.

However, the Court also held that an applicant may still be barred from presenting new "issues" in the civil action and that, when no new evidence is presented, that BPAI findings and rulings should be given deference under the Administrative Procedures Act.

Petition for Writ of Certiorari: In its petition to the Supreme Court, the US Government argues that the Federal Circuit decision is faulty because it "disregards fundamental principles of administrative law" and diverges from the traditional understanding of the statute.

Getting from the PTO to the Court: After losing at the Board, an applicant has two primary avenues for challenging the Board's decision: (1) Appeal to the Court of Appeals for the Federal Circuit under 35 U.S.C. § 141; or (2) File a civil action in district court under 35 U.S.C. § 145. In Dickinson v. Zurko, the Supreme Court held that Federal Circuit direct review of BPAI decisions under Section 141 must follow the deferential standards that govern judicial review of final agency action under the Administrative Procedure Act (APA). 527 U.S. 150 (1999).  In that decision, the Supreme Court distinguished between Section 145 and Section 141 actions – noting that Section 145 actions "permit the disappointed applicant to present to the court evidence that the applicant did not present to the PTO." However, the court did not address the particular circumstances in which new evidence may be permitted nor did it address how the new evidence should be treated.

Here, the government asks the Supreme Court to fill the gap in Zurko by holding that:

  1. The plaintiff in a Section 145 action may not introduce new evidence that could have been presented to the PTO in the first place; and
  2. When new evidence is introduced, the district court should still give deference to the prior decisions of the PTO.

Background: Gilbert Hyatt is a well-known inventor and successful patentee. Hyatt filed a civil action in 2003 after the BPAI sustained written description and enablement rejections for seventy-nine of Hyatt's claims. The examiner had issued "2546 separate rejections of Mr. Hyatt's 117 claims" based on the doctrines of inadequate "written description, lack of enablement, double patenting, anticipation, and obviousness." The Board reversed all of the examiner rejections except for the § 112 p1 arguments. Complicating this case is the fact that the application's claimed priority date is 1975. Hyatt has aggressively pushed the bounds of USPTO practice. This decision is one of more than a dozen Federal Circuit decisions focusing on Hyatt's patent rights. If the Supreme Court takes the case, it will be the second for Hyatt who won a 2002 case against California income tax collectors. In that case, California was pursuing Hyatt for tax revenue for his patent licenses. Hyatt took the case to the Supreme Court and eventually won a $388 million judgment against the state of California for invasion of privacy.

Challenging USPTO Decisions in the Courts

Last year the Board of Patent Appeals and Interferences decided over 7,000 ex parte cases. In about half of those decisions, the examiner rejections were entirely affirmed. After losing at the Board, an applicant has two primary avenues for challenging the Board’s decision: (1) Appeal to the Court of Appeals for the Federal Circuit under 35 U.S.C. § 141; or (2) File a civil action in district court under 35 U.S.C. § 145.

By the time that the BPAI appeal is complete, the average applicant will have spent over $25,000 on the application and prosecution process. That substantial figure is an indicator that the potential patent right is probably seen as valuable. It turns out, however, that that well under 1% of applicants who have a right to further action actually exert their right to appeal or to a civil action.

There are several likely reasons why the rate is so low:

  • BPAI Rehearing: The first reason for low appeals is likely that the BPAI has been fairly good at granting rehearing requests when there is a clear and easily identifiable mistake in their opinion.
  • Low Likelihood of Success: Under Zurko, the Federal Circuit is required to give deference to the USPTO’s findings of facts and only overturn those findings when “unsupported by substantial evidence.” This standard is difficult to overcome. In the district court, new evidence is reviewed de novo.
  • Money & Expertise: Both appeals to the Federal Circuit and civil actions in the district court can be quite expensive relative to ordinary prosecution costs. In addition, because most patent prosecutors have only limited federal court experience, a litigation or federal circuit specialist would likely need to be brought onboard the team.
  • Alternative Approach: The courts are typically asked to answer a yes/no question on claim validity. However, patent applicants recognize that a patent with slightly narrower scope (through amendment) may be almost just as valuable as the original broad claims. With that in mind, many applicants return to the original examiner with proposed claim amendments that lead quickly to allowance.

What other reasons explain the low rate of using the courts to challenge USPTO decisions.

US Patent Office and the Government Shutdown

Many patent applicants have expressed some concern regarding the potential federal government shutdown after Friday, April 8th. The basic problem is that a federal agency is not supposed to spend any money without congressional authority to spend the money. This limit comes directly from the US Constitution, which says “No Money shall be drawn from the Treasury, but in Consequence of Appropriations made by Law.” Article I, Section 9. That said, it is generally thought that essential federal employees can continue to work. For the most part, however, USPTO employees would not qualify as “essential.”

Although the USPTO is fully user-fee funded, the agency still sends its revenue the Treasury and then draws money from the Treasury when needed. Thus, the USPTO will clearly be affected by the shutdown.

I contacted USPTO leaders regarding their contingency plain. The Office has crafted a short-term solution based on the fact that a portion of their monies-in-hand are not linked to the current fiscal year budget. Therefore, the lack of appropriations for the rest of FY2011 does not limit the USPTO’s right and ability to spend that money. The Office’s projection is that this funding source can take the agency through six business days. If the shutdown occurs at COB Friday, then the office would have funds through Monday, April 18. After that, the Office intends to continue to accept new application electronically.

The Office does not intend to offer any grace period for applicant deadlines missed during the shutdown.

Update: Press Release

Confidentiality Designations in Federal Circuit Appeals

By Jason Rantanen

In re violation of Rule 28(D) (Fed. Cir. 2011) (precedential order) Download 11-m976 order
Panel: Dyk (author), Prost, and Moore

Patent litigations, by their nature, often invove commercially sensitive information.  Unsurprisingly, parties are frequently reluctant to reveal the innermost workings of their manufacturing processes or valuable financial data.  To preserve the confidentiality of this information, parties enter into agreed-upon protective orders that help ensure that their proprietary information is not disclosed outside the confines of the litigation.

The difficulty arises when it comes time for judicial resolution of the dispute.  Although parties can readily agree to keep materials they exchange among themselves confidential, once that information must be presented in court or placed into a judicial opinion, it is much more difficult to prevent public access.  In part this is due to practical realities (for example, although it is a possible approach, clearing a courtroom during a trial or hearing is a cumbersome process), but it is also due to the public's right of access to court proceedings, as recognized in Nixon v. Warner Commc'ns, Inc., 435 U.S. 589, 597-99 (1978).

The difficulty of maintaining the confidentiality of particular information becomes even greater when the lawsuit is on appeal.  Federal Circuit Rule 28(d) does permit the use of confidentiality markings in briefs, but in general the Federal Circuit has demonstrated a dislike for the overuse of confidentiality designations, especially when it would interfere with the preparation and dissemination of its opinions.

The Federal Circuit's view on confidentiality designations is particular apparent in a recent precedential order imposing a monetary sanction on Sun Pharmaceutical Industries, Ltd. and Caraco Pharmaceutical Laboratires, Ltd. (collectively "Sun") for the extensive use of improper confidentiality markings.  Sun  was apparently so concerned about revealing the contents of a confidential license agreement and proposed consent judgment that it marked vast swaths of its brief as confidential, including essentially all of its legal argument. 

Following oral argument, the CAFC issued an order instructing Sun to show cause why it should not be sanctioned for the violation of Rule 28(d).  In response, Sun attempted to justify its use of extensive confidentiality designations, an approach that did not sway the court.  Even leaving aside the question of whether the the agreements were properly designated, Sun's designations nevertheless fell far on the side of error.

Particular concerning to the court was Sun's designation of its legal arguments.  This type of material is generally afforded little, if any, protection:

The marking as confidential of legal argument concerning the propriety of a decision by the court is generally inappropriate given the strong presumption of public access to court proceedings and records. Rule 26(c)(1)(G) is limited to commercial information that has competitive significance. The marking of legal argument as confidential under Rule 26(c)(1)(G) cannot be justified unless the argument discloses facts or figures of genuine competitive or commercial significance. That is certainly not the case here, and there is no claim that it is.

Further, much of the material marked as confidential does not even disclose the nature of the triggering event. For example, legal argument regarding the preclusive effect of consent judgments was marked as confidential in the briefs submitted by Sun. See Addendum at i–ii. One of the most blatant examples of improper confidentiality markings involves case citations and parentheticals describing the cited cases which are used to support the proposition that “parol evidence should have been examined to resolve the ambiguity and determine the intent of the parties.” See id. at iii–iv.

Slip Op. at 14.  Due to the severity of the improper confidentiality designations, the CAFC imposed a sanction of $1,000 on counsel for Sun.  Although perhaps a relatively small monetary sanction, the CAFC rarely imposes such a penalty, suggesting that the conduct in this case was particularly troubling to the court.  For those interested in examples of improper confidentiality markings in Sun's brief, the court included an addendum containing relevant quotations.

Patently-O Bits & Bytes by Lawrence Higgins

Google Places a bid on Nortel Patents

  • Google has placed a $900 million cash offer bid for the rights to Nortel patents. Google’s bid is just the starting point, against which others bid prior to the auction that will take place in June. Nortel has about 6,000 patents and patent applications, which cover many areas of technologies including wireless, internet search, computer science, and online social networking. Nortel was once a telecom powerhouse, but filed for bankruptcy in 2009. As part of the bankruptcy, Nortel must auction off all patents that they hold. It has been reported that Google wants to purchase the Nortel patents as a defensive tactic, to decrease the amount of lawsuits filed against them. [link]

New Patent Blog!

  • Written Description is a blog that reviews recent scholarship on patent law, IP theory, and innovation. The blog is intended to provide useful content for law professors, law students, practitioners, and anyone else interested in patent law. The blog is written by Lisa Larrimore Ouellette, who has a Physics Ph.D. from Cornell and is a current 3L at Yale Law School.

Apple Doesn’t Have to Pay $625.5 Million in Patent Case

  • Apple was sued in 2008 by Mirror Worlds LLC; Mirror Worlds was founded by Yale University Professor David Gelernter. [Complaint] Mirror Worlds claimed that Apple’s Mac computers infringed its patents relating to the way documents are displayed on a computer. The main focus of the trial was Apple’s Spotlight and Time Machine technology. The case was decided in Mirror Worlds favor in October, and the jury award $625.5 million in damages. However, Apple appealed and a federal judge in Texas agreed with Apple and stated that, Apple did not infringe any patent owned by Mirror Worlds LLC and closed the case. [Link]

John Duffy to Join Virginia Law School

  • IP scholar John Duffy will be at the University of Virginia next fall, currently Duffy is a Professor at George Washington School of Law. Duffy has been named as one of the 25 most influential people in the field of IP by the American Lawyer. Duffy was co-counsel in the important Supreme Court case KSR v. Teleflex, which was the first Supreme Court Case in decades on the standard of nonobviousness. [Link]

Patent Jobs:

  • Muir Patent Consulting is seeking to hire a patent attorney with a degree in electrical engineering and 2-5 years experience. [Link]
  • Mannava & Kang is searching for a patent attorney or patent agent with a degree in electrical engineering and at least 3 years in preparing and prosecuting patent applications. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for a patent attorney with 2-4 years experience and a chemical degree. [Link]
  • Baker Donelson Bearman Caldwell and Berkowitz is searching for a patent attorney or patent agent with a PhD and 1-4 years patent experience. [Link]

Upcoming Events:

  • The 2nd Annual John Marshall Review of Intellectual Property Law Symposium will be held on April 15th. The symposium will discuss biotechnology and health-related issues in IP law. Guest speakers include Peter Yu, Lawrence Pope, and the keynote speaker Ananda Chakrabarty. [Link]
  • AIPLA Spring Meeting will be held May 12-14 in San Francisco. [Link]
  • San Francisco Intellectual Property Law Association (SFIPLA) will be hosting its spring seminar June 3-5 in Yountville, California. This event will discuss various topics, such as Copyright and the Cloud, Patent Year in Review, and Patent Litigation to name a few. Guest speakers include Peter Menell, Marc Greenberg, Madhavi Sunder, and David Franklyn. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Google Places a bid on Nortel Patents

  • Google has placed a $900 million cash offer bid for the rights to Nortel patents. Google’s bid is just the starting point, against which others bid prior to the auction that will take place in June. Nortel has about 6,000 patents and patent applications, which cover many areas of technologies including wireless, internet search, computer science, and online social networking. Nortel was once a telecom powerhouse, but filed for bankruptcy in 2009. As part of the bankruptcy, Nortel must auction off all patents that they hold. It has been reported that Google wants to purchase the Nortel patents as a defensive tactic, to decrease the amount of lawsuits filed against them. [link]

New Patent Blog!

  • Written Description is a blog that reviews recent scholarship on patent law, IP theory, and innovation. The blog is intended to provide useful content for law professors, law students, practitioners, and anyone else interested in patent law. The blog is written by Lisa Larrimore Ouellette, who has a Physics Ph.D. from Cornell and is a current 3L at Yale Law School.

Apple Doesn’t Have to Pay $625.5 Million in Patent Case

  • Apple was sued in 2008 by Mirror Worlds LLC; Mirror Worlds was founded by Yale University Professor David Gelernter. [Complaint] Mirror Worlds claimed that Apple’s Mac computers infringed its patents relating to the way documents are displayed on a computer. The main focus of the trial was Apple’s Spotlight and Time Machine technology. The case was decided in Mirror Worlds favor in October, and the jury award $625.5 million in damages. However, Apple appealed and a federal judge in Texas agreed with Apple and stated that, Apple did not infringe any patent owned by Mirror Worlds LLC and closed the case. [Link]

John Duffy to Join Virginia Law School

  • IP scholar John Duffy will be at the University of Virginia next fall, currently Duffy is a Professor at George Washington School of Law. Duffy has been named as one of the 25 most influential people in the field of IP by the American Lawyer. Duffy was co-counsel in the important Supreme Court case KSR v. Teleflex, which was the first Supreme Court Case in decades on the standard of nonobviousness. [Link]

Patent Jobs:

  • Muir Patent Consulting is seeking to hire a patent attorney with a degree in electrical engineering and 2-5 years experience. [Link]
  • Mannava & Kang is searching for a patent attorney or patent agent with a degree in electrical engineering and at least 3 years in preparing and prosecuting patent applications. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for a patent attorney with 2-4 years experience and a chemical degree. [Link]
  • Baker Donelson Bearman Caldwell and Berkowitz is searching for a patent attorney or patent agent with a PhD and 1-4 years patent experience. [Link]

Upcoming Events:

  • The 2nd Annual John Marshall Review of Intellectual Property Law Symposium will be held on April 15th. The symposium will discuss biotechnology and health-related issues in IP law. Guest speakers include Peter Yu, Lawrence Pope, and the keynote speaker Ananda Chakrabarty. [Link]
  • AIPLA Spring Meeting will be held May 12-14 in San Francisco. [Link]
  • San Francisco Intellectual Property Law Association (SFIPLA) will be hosting its spring seminar June 3-5 in Yountville, California. This event will discuss various topics, such as Copyright and the Cloud, Patent Year in Review, and Patent Litigation to name a few. Guest speakers include Peter Menell, Marc Greenberg, Madhavi Sunder, and David Franklyn. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Google Places a bid on Nortel Patents

  • Google has placed a $900 million cash offer bid for the rights to Nortel patents. Google’s bid is just the starting point, against which others bid prior to the auction that will take place in June. Nortel has about 6,000 patents and patent applications, which cover many areas of technologies including wireless, internet search, computer science, and online social networking. Nortel was once a telecom powerhouse, but filed for bankruptcy in 2009. As part of the bankruptcy, Nortel must auction off all patents that they hold. It has been reported that Google wants to purchase the Nortel patents as a defensive tactic, to decrease the amount of lawsuits filed against them. [link]

New Patent Blog!

  • Written Description is a blog that reviews recent scholarship on patent law, IP theory, and innovation. The blog is intended to provide useful content for law professors, law students, practitioners, and anyone else interested in patent law. The blog is written by Lisa Larrimore Ouellette, who has a Physics Ph.D. from Cornell and is a current 3L at Yale Law School.

Apple Doesn’t Have to Pay $625.5 Million in Patent Case

  • Apple was sued in 2008 by Mirror Worlds LLC; Mirror Worlds was founded by Yale University Professor David Gelernter. [Complaint] Mirror Worlds claimed that Apple’s Mac computers infringed its patents relating to the way documents are displayed on a computer. The main focus of the trial was Apple’s Spotlight and Time Machine technology. The case was decided in Mirror Worlds favor in October, and the jury award $625.5 million in damages. However, Apple appealed and a federal judge in Texas agreed with Apple and stated that, Apple did not infringe any patent owned by Mirror Worlds LLC and closed the case. [Link]

John Duffy to Join Virginia Law School

  • IP scholar John Duffy will be at the University of Virginia next fall, currently Duffy is a Professor at George Washington School of Law. Duffy has been named as one of the 25 most influential people in the field of IP by the American Lawyer. Duffy was co-counsel in the important Supreme Court case KSR v. Teleflex, which was the first Supreme Court Case in decades on the standard of nonobviousness. [Link]

Patent Jobs:

  • Muir Patent Consulting is seeking to hire a patent attorney with a degree in electrical engineering and 2-5 years experience. [Link]
  • Mannava & Kang is searching for a patent attorney or patent agent with a degree in electrical engineering and at least 3 years in preparing and prosecuting patent applications. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for a patent attorney with 2-4 years experience and a chemical degree. [Link]
  • Baker Donelson Bearman Caldwell and Berkowitz is searching for a patent attorney or patent agent with a PhD and 1-4 years patent experience. [Link]

Upcoming Events:

  • The 2nd Annual John Marshall Review of Intellectual Property Law Symposium will be held on April 15th. The symposium will discuss biotechnology and health-related issues in IP law. Guest speakers include Peter Yu, Lawrence Pope, and the keynote speaker Ananda Chakrabarty. [Link]
  • AIPLA Spring Meeting will be held May 12-14 in San Francisco. [Link]
  • San Francisco Intellectual Property Law Association (SFIPLA) will be hosting its spring seminar June 3-5 in Yountville, California. This event will discuss various topics, such as Copyright and the Cloud, Patent Year in Review, and Patent Litigation to name a few. Guest speakers include Peter Menell, Marc Greenberg, Madhavi Sunder, and David Franklyn. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

A Few More Patent Law Students at the University of Missouri

MUEvery year I have a great group of about ten patent law focused students.  It is a bit crazy, but our quite small regular law school faculty includes three patent attorneys and several adjunct professors. We offer a wide variety of intellectual property courses – including patent law, patent prosecution, patent licensing, and a number of soft-IP and technology law courses.  I'm excited that starting this fall, our introduction to intellectual property course will be taught by Federal Judge Nanette Laughrey who has presided over dozens of patent lawsuits.

A good number of my patent law students end up working with me on various independent study projects. And one (Lawrence Higgins, 2L) now writes for Patently-O.

Bottom Line: I would really enjoy having four or five more patent law students.  For what its worth, current tuition at Mizzou is about $17,000 and out-of-state tuition is typically waived for 2L and 3L students and for 1Ls with a fairly high LSAT score. 

Now, in the current market, I don't want to be seen as encouraging folks to attend law school who would have otherwise continued working as an engineer or scientist.  However, if you are planning on law school, then please take a look at Missouri.

 

Senate Confirms Jimmie V. Reyna to the CAFC

 By Jason Rantanen

6a00d8341c588553ef013487e5c5ec970c On Monday, the Senate confirmed the nomination of Jimmie V. Reyna to the U.S. Court of Appeals for the Federal Circuit.  Reyna's expertise in international trade will serve the Federal Circuit well, as the court's jurisdiction includes appeals from the Court of International Trade (CIT) and International Trade Commission (ITC).  In addition to heading the international trade practice area at the Williams Mullen firm, Reyna has also published a slew of articles and two books on the subject.  Reyna is an active member of the Hispanic legal community and will be the first Hispanic judge on the Federal Circuit.

Fast Track 12-Month Examination Begins May 4, 2011 – $4,000 fee

The new prioritized examination system known as “Track One” will begin on May 4, 2011. For a $4,000 fee, the USPTO will prioritize the handling of your patent application with a goal of reaching a final disposition within twelve months. A prioritized application is “accorded special status and placed on the examiner’s special docket throughout its entire course of prosecution before the examiner until a final disposition is reached.” Here, of course, “final disposition” means that the application is either allowed, abandoned, or is subject to a “final rejection” (which can then be appealed).

Qualification criteria:

  • Application must be filed on or after May 4, 2011 using the the USPTO’s electronic filing system;
  • Application must be “complete;”
  • The request for prioritized application must be filed with the application itself;
  • Application may contain no more than four independent and thirty total claims; and
  • The $4,000 fee must be paid in addition to the normal filing fees. Without congressional legislation, the USPTO asserts that it cannot offer a small-entity discount.

Due to resource constraints, the PTO is limiting the track one initiative to 10,000 applications for the May-Sept 2011 period (the remainder of FY 2011).

The $4,000 fee was set after the USPTO estimated the average cost to the Office of performing the service. Of course, we live in a market economy where higher prices tend to lower demand. In thinking about the potential demand for expedited examination, I surveyed Patently-O readers who handled some aspects of patent prosecution and filing decisions and asked them what percent of their applications they would expedite based upon a $4,000 fee. (That time, I used software to largely eliminate the potential for multiple-voting.) The following histogram shows that the bulk of responses would expedite fewer than 5% of their cases. More than half indicated they would expedite less than 2% of their cases.

PatentLawImage120

The EPC offers the PACE program that allows applicants a cost-free acceleration of processing. In that system, fewer than 5% of applicants request accelerated examination. As one response indicated, many applicants are “generally happy to wait for a patent to issue. ‘Patent Pending’ status is good for marketing, implies new product development. The market we are in is not one where patent speed is important.”

Documents:

The Thesaurus of Claim Construction

Several years ago, Stuart Soffer told me about his claim construction thesaurus project. At the time, I thought that the result would be amazing, but that the project was clearly too ambitious. I was both surprised and happy when Oxford Press sent me the completed 1,000 page volume. The book, co-authored by Robert Kahrl (author of Patent Claim Construction), includes over 7,000 claim terms that have been construed by courts over the past decade. Following the introductory chapters explaining the source of definitions from the book and the process of claim construction, the book quickly jumps into the definitions. Here is an example:

Downloader: A computer that retrieves web pages and embedded objects from the internet. 6,864,904 (715/760) Filed: 2000. Girafa.com Inc. v. Amazon Web Service LLC et al. 07-00787 (D. De. September 15, 2009) Stage: Claim Construction.

I am quoted on the book cover as follows:

Claim language and claim construction are probably the most frequently debated legal issues in patent prosecution and patent litigation respectively. This book offers an invaluable resource and desk reference for parties to those debates.

Soffer maintains a database of the claim terms which he uses for his work as a technical expert.

Oxford Press has compiled an impressive group of practical patent law books. My problem with the series the cost Oxford lists the book at $295. Amazon sells them for $270

 

Federal Circuit Hears Myriad Gene Patent Case

At 10 am this morning, the Court of Appeals for the Federal Circuit will hear oral arguments in high profile gene-patent case of Association for Molecular Pathology, et al. v. USPTO.  In a sweeping opinion, Southern District of New York Judge Robert Sweet held the Myriad Genetics gene patent claims invalid as merely claiming products of nature.  

The patents cover the BRCA1 and BRCA2 gene mutations that, when present, indicate a high likelihood of developing breast cancer.  In addition to claims to the isolated genes themselves, challenged claims are also directed toward methods of isolating  the genes in order to test for whether the mutation is present. These patents have led to more than a billion dollars in revenue for Myriad Genetics and the University of Utah.

The court rejected the patentee’s claims to have invented the isolated BRCA1/2 gene as a product of nature — holding that the “isolated” form does not alter the fundamental quality of DNA as it exists in the body nor the information that it encodes.  In addition, the court found the methods of comparison invalid under the Federal Circuit’s now defunct machine or transformation test.

In an e-mail, Hal Wegner correctly suggested that the key threshold question for this case will be whether Federal Circuit will reject the case on jurisdictional grounds.  The ragtag group of declaratory judgment plaintiffs is led by the ACLU and the Public Patent Foundation.

More than two-dozen friend-of-the-court briefs were filed.  Most notably, the U.S. Government in its brief argues that isolated but otherwise unmodified genomic DNA is not patentable.

Patent Reform Survey Results on the “Pulse of the Patent Bar”

Survey and Disclaimer: I thought that I had solved this, but the survey software that I used for last week's survey failed by allowing individuals to post multiple times and without recording their IP addresses. However, based on the diversity of responses, there are reason to believe that the survey results were not overwhelmed by multiple-voting. In addition, the divide between those for and against a first-to-file system mimics prior survey results. The survey was open for about 20 hours and received 500 during that time.

Results: The first chart below shows the almost even-split between those who support a first-to-file regime as compared with those who do not. Interestingly, most respondents had a strong opinion – with 70% expressing either strongly negative (voting "1") or strongly positive (voting "5"). Self identified patent prosecutors tended to show less support to first-to-file than self-identified patent examiners and patent litigators. Regardless of the level of support for the first-to-file regime, the vast majority of responses indicated support for retaining a filing grace period for an inventor's own pre-filing activities.

Most responses also indicated support for allowing third parties to submit prior art and commentary during prosecution and to limit false marking litigation. There was little support for special rules that would govern the litigation business method patents (such as limiting venue and providing for interlocutory appeals).

Perhaps most interesting, very few of the responses supported the use of "secret" prior art in analyzing the question of obviousness. As I have previously discussed, most countries around the world only use publicly available prior art to judge the question of obviousness or inventive step. Rather, around the world, prior art that was not publicly available at the time of filing is used only for novelty and priority issues. In the US, secret prior art is regularly used for obviousness analysis. The primary source of the secret prior art is currently defined under Section 102(e) of the Patent Act and covers patent applications that were pending, but not yet publicly available. Any true effort at international harmonization would deal with this issue as well. Several responses explicitly indicated that, if adopted, the US first-to-file regime to attempt to be uniform with Europe. "The hybrid approach will only complicate and cost more in lawyer fees"; "The SECRET PRIOR ART would be a total disaster !!! and make the US one of the least patent friendly jurisdictions on the planet."

040111_1723_PatentRefor2

Few responses offered support for giving the USPTO substantive rulemaking authority. However, there was strong support for greater fee setting authority. Examiners were most in-favor of heightened USPTO authority while patent prosecutors were the most wary.

Finally, as many know, the current reexamination system has been criticized because it only allows reexaminations based on patents and published documents. Responses showed a lukewarm support for broad post-grant review system that could reach "any patentability question."

FTC Report Gives NPEs a new name (PAE), Recommends That Courts and the PTO improve Patent Notice and Damages

This is a guest post by Professor Colleen Chien of Santa Clara University School of Law. The FTC relied heavily on Professor Chien’s empirical work for several aspects of its report.

While most of the focus right now is on Congress, the Federal Trade Commission (FTC) has recently weighed in on the patent system through its publication of The Evolving IP Marketplace. Though readers of the entire 302-page report may be limited in number, if the past is any indication of the future, they are likely to be well-placed. The report’s 2003 prequel, “To Promote Innovation” has been cited by the Supreme Court (in Ebay), the Solicitor General (in the US brief in KSR), and in Congress, and by lower courts, amicus briefs, and observers of the patent system. That report was a landmark, underscoring the need to strike a balance between competition and innovation, and drawing attention to the problem of “questionable patents.” A number of its recommendations, in some form, have been adopted (elevation of the wilfulness standard, changing the obviousness standard) or are under consideration (post-grant opposition, modifying the presumption of validity). As with the 2003 report, this report bases its findings on hours of public testimony, provided over nine days of hearings and a workshop, by many members of the patent community.

The impetus for the current report has been changes in the patent marketplace, through which inventions may be transferred prior to the invention’s commercialization, ex ante, or licensed after the technology has been put into practice, ex post. The report notes that of these, ex ante transfers are increasingly important as more and more innovation comes from small and younger firms. In 1981, 70% of US R&D came from large companies (25K+ employees), and only 4.4% from companies with less than 1,000 employees; in 2005, the proportions were 37.6% and 24.1%, respectively. (p.36-7). The report is less sanguine about ex post transactions, which it criticizes for distorting competition in high-tech industries and deterring certain kinds of innovation. In noting that such transactions are increasing, the report gives certain kinds of NPEs – those focused on buying and asserting patents, rather than developing and transferring them – a new name: patent assertion entity (or “PAE”). (Side note: I have used this term in my own work, and agree with others that the relationship between PAEs and practicing entities is complex: as I describe, like PAEs, practicing entities also buy and sell into the marketplace, sue in areas in which they don’t operate, and in some cases, may stealthily partner with PAEs in their activities).

To improve the efficiency of the patent system vis a vis both ex ante and ex post transactions, the report says, patent notice and patent remedies both need to be addressed. What’s notable is not only what the report recommends, but, as described below, who the report says should implement its recommendations.

Multi-Dimensional Patent Notice Problem. The report describes the problem of a lack of patent notice, particularly in high-tech industries, with reference to many aspects of the patent system. Companies can’t clear their rights at the product planning stage because they can’t sift through a multitude of patents. Even when particular patents are identified, their boundaries are unclear, and can also change a lot between publication and issue. You can’t necessarily tell who owns a patent because patentees don’t have to record their transfers. To cure these problems, the report recommends, for example, bolstering enforcement of 112 para. 1 and requiring recording of transactions as well as identification of the real parties in interest to a transaction.

Replicating the Market Reward. The FTC adds its voice to the chorus of those who believe that remedies law, in particular damages law, needs repair, but also articulates the principles and theory it believes should guide change. Patent remedies should reflect the economic value of inventions, and replicate the reward provided by the marketplace. The report provides a point by point analysis of the factors that district courts and the ITC consider in awarding remedies, setting forth “an economically-grounded approach” to remedies.

Post-Ebay Injunctions: In a side analysis, the report addresses the sense that, post-Ebay, it’s much more difficult for non-practicing entities to get permanent injunctions. The report indicates that that’s not necessarily true: through March 2010, district courts granted about half of the requests for injunction they received from non-practicing entities (seven of thirteen, or a rate of 54%, as compared to a general grant rate at 72-77%) (p.217). The successful requests tended to come from universities and research and development organizations (p.262-4), however, who arguably don’t fit the definition of “PAE.”

Recommendations – Differentiated Roles for the PTO, courts, Congress, and the Public: What the FTC recommends, and who it says should implement its recommendations are both worth noting. Congress’ list of to-do’s, for example (shoring up PTO funding and requiring recordation of assignments – neither of which are in the current bills), is notably short. The bulk of the work has instead been assigned to courts, which, as Dennis detailed before Congress have taken the laboring oar in reforming patent law. The FTC tasks district courts and the Federal Circuit with fixing damages law, carefully considering injunctions, and enforcing 35 USC 112 para. 1. Many suggestions are also aimed at the PTO, who the report says should work alone or together with the public to, for example, foster uniformity in software inventions, put examiner interviews on the record, and press applicants for improved disclosure. As the Federal Circuit’s Uniloc decision, and the PTO’s recently introduced supplementary 112 guidelines show, their work is well underway.

Colleen Chien, Assistant Professor at Santa Clara University Law School

Patently-O Bits & Bytes by Lawrence Higgins

Google signs deal to Translate European Patents

  • The European Patent Office (EPO) and Google signed an agreement, in which the EPO will use Google's Translate technology to offer translation of patents on its website. The EPO will translate patents on its website into 28 European languages, as well as into Chinese, Japanese, Korean, and Russian. The partnership between the EPO and Google will enable free, real-time translation of millions of patents granted in European countries, China, Japan, Korea and Russia. [Link]

Monsanto sued over transgenic seeds

  • Farmers, agricultural organizations, seed businesses, and others filed suit against Monsanto over Monsanto's transgenic seed patents. The plaintiffs, led by the Public Patent Foundation, state that they brought suit to protect themselves from ever being accused of infringing patents on transgenic seeds, because contamination is bound to happen. [Link] Plaintiffs contend that since they have no intention to infringe they should not be sued for patent infringement if such contamination occurs. The plaintiffs claim that Monsanto's transgenic seed patents are not valid for several reasons. One reason being that Monsanto's transgenic seeds are injurious to the well being, good policy, and threatens to poison people. (Quoting Justice Story's 1817 Lowell decision). [Complaint]

U.S. International Trade Commission (ITC) decides more patent cases

  • The ITC job is to settle disputes over imported products and in recent years the ITC has seen an increase in patent cases, particurly in mobile technology. Plaintiffs can file these suits even before the alleged infringement has occurred in the U.S., which can be a big incentive to keep the alleged infringing products out of the market. The increase can be seen as a consequence of the decision in eBay v. MercExchange, in which the court stated that an injunction should not automatically issue based on a finding of patent infringement, but a court must use the four factor analysis. This eBay decision does not have to be followed in ITC cases and therefore the ITC can grant an injunction based solely on the finding of patent infringement. [Link]

Patent Jobs:

  • Shay Gleen is searching for patent attorneys with either 1-2 years or 4-5 years patent prosecution experience. [Link]
  • Washida & Associates is looking for an electrical U.S. patent attorney for their Tokyo office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a patent agent with 2-4 years experience to work in their electrical arts group. [Link]
  • Kramer Levin Naftalis & Frankel is seeking a patent agent with a mechanical engineering background. [Link]

Upcoming Events:

  • The Florida Bar will hold its 2nd Annual Intellectual Property Symposium in Fort Lauderdale on April 14th & 15th. The symposium will take a look at the story behind the $21 Million Verdict in Powell vs. Home Depot, the Gene Patent Controversy, Licensing and Endorsements in Sports (and Entertainment), Intellectual Property Protection vs. The First Amendment and Bankruptcy. Guest speakers include Lori Andrews, Felix Wu, Ury Fischer, Chris Holman, and Robert Stoll. [Link]
  • American University Washington College of Law will host the first annual Global Congress on Public Interest Intellectual Property August 25-27 in Washington DC. The Global Congress on Public Interest Intellectual Property will serve as a site for the sharing of research, ideas and policy proposals for how international intellectual property law should be constructed to better protect the full range of global public interest concerns. [Link]
  • The 3rd Annual Corporate IP Counsel Forum will be held May 24-25 in New York. The Corporate IP Counsel Summit is the premier forum to hear about solutions to maximize IP assets, avoid costly litigation, create and maintain efficient infrastructure, fully integrate IP strategies into business plans, prepare for anticipated patent law changes, and much more. Guest speakers include Michael Bishop, Mony Ghose, Mark Costello, Michael Springs, Charles Kwalwasser, and Timothy Wilson. Patently-O readers will receive a $100 discount by using promo code FZA884. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Google signs deal to Translate European Patents

  • The European Patent Office (EPO) and Google signed an agreement, in which the EPO will use Google's Translate technology to offer translation of patents on its website. The EPO will translate patents on its website into 28 European languages, as well as into Chinese, Japanese, Korean, and Russian. The partnership between the EPO and Google will enable free, real-time translation of millions of patents granted in European countries, China, Japan, Korea and Russia. [Link]

Monsanto sued over transgenic seeds

  • Farmers, agricultural organizations, seed businesses, and others filed suit against Monsanto over Monsanto's transgenic seed patents. The plaintiffs, led by the Public Patent Foundation, state that they brought suit to protect themselves from ever being accused of infringing patents on transgenic seeds, because contamination is bound to happen. [Link] Plaintiffs contend that since they have no intention to infringe they should not be sued for patent infringement if such contamination occurs. The plaintiffs claim that Monsanto's transgenic seed patents are not valid for several reasons. One reason being that Monsanto's transgenic seeds are injurious to the well being, good policy, and threatens to poison people. (Quoting Justice Story's 1817 Lowell decision). [Complaint]

U.S. International Trade Commission (ITC) decides more patent cases

  • The ITC job is to settle disputes over imported products and in recent years the ITC has seen an increase in patent cases, particurly in mobile technology. Plaintiffs can file these suits even before the alleged infringement has occurred in the U.S., which can be a big incentive to keep the alleged infringing products out of the market. The increase can be seen as a consequence of the decision in eBay v. MercExchange, in which the court stated that an injunction should not automatically issue based on a finding of patent infringement, but a court must use the four factor analysis. This eBay decision does not have to be followed in ITC cases and therefore the ITC can grant an injunction based solely on the finding of patent infringement. [Link]

Patent Jobs:

  • Shay Gleen is searching for patent attorneys with either 1-2 years or 4-5 years patent prosecution experience. [Link]
  • Washida & Associates is looking for an electrical U.S. patent attorney for their Tokyo office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a patent agent with 2-4 years experience to work in their electrical arts group. [Link]
  • Kramer Levin Naftalis & Frankel is seeking a patent agent with a mechanical engineering background. [Link]

Upcoming Events:

  • The Florida Bar will hold its 2nd Annual Intellectual Property Symposium in Fort Lauderdale on April 14th & 15th. The symposium will take a look at the story behind the $21 Million Verdict in Powell vs. Home Depot, the Gene Patent Controversy, Licensing and Endorsements in Sports (and Entertainment), Intellectual Property Protection vs. The First Amendment and Bankruptcy. Guest speakers include Lori Andrews, Felix Wu, Ury Fischer, Chris Holman, and Robert Stoll. [Link]
  • American University Washington College of Law will host the first annual Global Congress on Public Interest Intellectual Property August 25-27 in Washington DC. The Global Congress on Public Interest Intellectual Property will serve as a site for the sharing of research, ideas and policy proposals for how international intellectual property law should be constructed to better protect the full range of global public interest concerns. [Link]
  • The 3rd Annual Corporate IP Counsel Forum will be held May 24-25 in New York. The Corporate IP Counsel Summit is the premier forum to hear about solutions to maximize IP assets, avoid costly litigation, create and maintain efficient infrastructure, fully integrate IP strategies into business plans, prepare for anticipated patent law changes, and much more. Guest speakers include Michael Bishop, Mony Ghose, Mark Costello, Michael Springs, Charles Kwalwasser, and Timothy Wilson. Patently-O readers will receive a $100 discount by using promo code FZA884. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.