Patently-O Bits & Bytes by Lawrence Higgins

Apple v. Samsung

  • Christopher Carani recently wrote an article about the Apple v. Samsung smartphone war. In the article, Carani provides the facts and background necessary to understand the current design patent dispute and offers insight into the merits along with potential outcomes. For example, Carani writes that Judge "Koh may find that Apple has not met its burden on validity at this stage of the case and deny the motion for preliminary injunction with respect to all patents." The article is a great source for information about the exciting smartphone battle between the top two smartphone makers in the world. [Link]

Spangenberg Family Foundation

  • The Spangenberg Family Foundation gave Case Western University School of Law a $2 million gift to endow the Spangenberg Family Foundation Chair in Law and the Arts. Eric Spangenberg is the founder and chairman of Dallas-based IP Navigation Group, a patent monetization company.

IP Hall of Fame

  • The process to find inductees into the IP Hall of Fame for 2012 is currently underway. The IP Hall of Fame enables the IP community to honor individuals from business, politics, the law, finance, academia and anywhere else, who have made a significant contribution to IP. Any member of the IP community can make a nomination, and all nominations will be considered by the IP Hall of Fame Academy. [Link]

Executive Director

  • The Engelberg Center on Innovation Law and Policy at New York University School of Law is seeking applicants for the full-time position of Executive Director. They seek an Executive Director with an entrepreneurial approach who would be an engaged participant in formulating and implementing an ongoing vision for the Center's programs in competition, innovation, and information law. Specific duties will be determined in consultation with the Center's faculty directors, but should be expected to include: developing a policy-oriented research agenda, preferably in a way that could involve students, fundraising for the Center from industry, foundation, or government sources, and planning conferences and other events (with the help of the center's administrator). More information about the Center and its activities is at [Link].

Applications should be emailed by December 10, 2011, to Nicole Arzt, nicole.arzt@nyu.edu, and should include: a cover letter, curriculum vitae, copies of any publications or other relevant writing, and the names and contact information of three references.

Patent Jobs:

  • Roberts Mlotkowski Safran & Cole is searching for an IP attorney with 2-4 years of patent prosecution experience and a degree in EE. [Link]
  • Roberts Mlotkowski Safran & Cole is seeking an IP attorney with 2-4 years of patent prosecution experience and a chemical or chemical engineering degree. [Link]
  • iRobot is looking for a patent agent with 5-8 years of experience. [Link]
  • Greenblum & Bernstein is seeking a patent associate with an EE or CE background and 2-3 years of experience. [Link]
  • Steptoe & Johnson is searching for IP associates with a minimum 4 years of experience in litigation and a technical background. [Link]
  • Fiala & Weaver is looking for a patent attorney/agent with 1 or more years of experience. [Link]
  • Myers Wolin is seeking a partner level attorney (patent or trademark) or small practice group. [Link]
  • Edell, Shapiro & Finnan is searching for associates with backgrounds in EE or mechanical engineering. [Link]
  • The IP group of Sutherland is seeking a patent agent with 1-3 years of experience and a chemical engineering degree. [Link]

Upcoming Events:

  • The ITC Trial Lawyers Association Annual Meeting will be held on November 9th in Washington D.C. Guest speakers includes Deanna Okun and former Chief Administrative Judge Luckern. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

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

6 thoughts on “Patently-O Bits & Bytes by Lawrence Higgins

  1. 6

    I am replying to a post in the patentale subject matter thread that appears to be broken. But the post I am respond to contends that the Rosetta Stone article describes the original modification of 112, that became what is now paragraph 6, came from Frederico. It did not. Here is my post (it is no longer readable in that thread) and is a valuable summary of the legislative history.

    From Rosetta Stone:

    “The Milwaukee Patent Law Association suggested to the drafting committee (Rich and Rose) …the following:

      Where the essence of the novelty of any claim is recited in terms of means or method for performing a specified function without recital structure acts in support thereof, the claim should not be invalid because of its functionality, shall be construed to cover the corresponding structure acts described the specification and equivalents thereof.

    Paraphrasing Rosetta Stone:

    The proposal was added to HR 9133 as follows:

      The essence of the novelty of any invention may be recited in a claim in terms of means or method for performing a specified function without recital structure acts in support thereof, and such claim should not be invalid by reason only of its functionality, but shall be construed to cover the corresponding structure acts described the specification and equivalents thereof.

    HR 9133 was heavily criticized and did not pass Congress. A new bill was introduced on 18-Apr-51 as HR 3760. This bill included the following:

      An element in a claim for a combination may be expressed as a means or step for performing a specified function without recital structure acts in support thereof, and such claim should not be invalid by reason only of its functionality, but shall be construed to cover the corresponding structure acts describe the specification and equivalents thereof.

    This form of the paragraph was introduced as HR 7794:

      An element in a claim for a combination may be expressed as a means or step for performing a specified function without recital structure acts in support thereof, and such claim should not be invalid by reason only of its functionality, but shall be construed to cover the corresponding structure acts describe the specification and equivalents thereof.

    .

    As passed by the Senate on July 4, 1952, the last paragraph read,

      An element in a claim for a combination may be expressed as a means or step for performing a specified function without recital structure, material or acts in support thereof, and such claim shall be construed to cover the corresponding structure acts describe the specification and equivalents thereof.

    .

    The revision notes simply noted that “a new paragraph relating to functional claims is added.”

    Back to my argument:

    The Rosetta Stone article does not describe the criticisms of the the drafting committee proposal which became HR 9133. But this draft would have authorized all inventions to be described using functional language at the point of novelty, e.g., single means claims. This would have overturned not only Halliburton (apparatus), but also GE v. Wabash (articles of manufacture) and Perkins Glue (compositions). One can instantly see that such a proposal might be controversial.

    Now consider this passage from Faulkner v. Gibbs:

      The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.

    Finally, note 222 summarizes the post-enactment statements of Frederico, Rich and Zinn. Zinn explained, “The final paragraph relating to functional claims as new. It recognized the validity of combination claims wherein novelty is expressed in functional terms. It offset the theory of the Halliburton case, but does not go so far as to permit the use of single means claims.”

    What emerges is that Congress rejected the Rich proposal because it would have authorized single means claims. Rather, it authorized functional claiming in combination claims. But, this has already been authorized by Faulkner v. Gibbs. If Congress had intended to overrule Faulkner v. Gibbs, it chose very strange language to do so.

  2. 2

    Lawrence–

    Comments on the “Federal Circuit Again Declines to Revisit Cybor” thread are not viewable.

    Can you help?

  3. 1

    Bloomstein v.Paramount Pictures 1999 U.S. App. Lexis 21391 (Fed cir. Sept 3, 1999
    Bloomstein v. Paramount Pictures Corp., 1998 Lexis 20839 (N.D. Cal. Mar. 10,1998.
    Oops it seems that Samuels is a very important fact that was put in late. And it also seems that Peacock flew the Coop.
    So we have Printed Matter applying to all 3.. and then that somewhere would make the First Trademark REALLY MATTER.

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