The average number of references cited per patent has continued to grow over the past decade and now almost reaches 50 per patent with no sign of slowing-down. When the reference-count was much lower, many examiners apparently assumed that applicant had already ensured that the cited references did not disclose the patented invention. However, today neither patent applicants nor their patent attorneys have time to read through and fully consider such a large number of references. Obviously, examiners also do not have time to read 50 references. In my view, technology could offer a nice solution that would easily allow examiners to conduct an internal textual search that is limited particularly to references that have been submitted in this case and perhaps those previously cited in similar cases. So far, that search capability does not appear to be available for the examiners – especially for non-patent prior art.
Now, I should mention here that the ‘averages’ are a problematic figure for references cited because the distribution is quite skewed. Namely, there are a fairly small number of cases that cite a very large number of references, and those cases have a major impact on the results. The chart below shows a more nuanced version of the distribution.
University of Utah and Myriad Genetics are back at the Federal Circuit after losing a motion for preliminary injunction against the genetic testing company Ambry Genetics. The case still focuses primarily on BRCA genetic testing, although the asserted claims are different from those in the Supreme Court decision.
For instance, Utah has asserted claim 7 of its Patent No. 5,753,441 listed below.
7. A method for screening germline of a human subject for an alteration of a BRCA1 gene which comprises
comparing germline sequence of a BRCA1 gene … from a tissue sample from said subject … with germline sequences of wild-type BRCA1 gene…
wherein a difference in the sequence of the BRCA1 gene … of the subject from wild-type indicates an alteration in the BRCA1 gene in said subject, [and]
wherein a germline nucleic acid sequence is compared by hybridizing a BRCA1 gene probe which specifically hybridizes to a BRCA1 allele to genomic DNA isolated from said sample and detecting the presence of a hybridization product wherein a presence of said product indicates the presence of said allele in the subject.
Because Claim 7 is a dependent claim, I have rewritten it to include the limitations of independent claim 1 and also eliminated some language written in the alternative. I have also eliminated some redundancy.
The advance embodied by the University of Utah’s BRCA patents all center around the researchers’ discovery of the genetic sequence and location of the naturally occurring BRCA1 and BRCA2 genes and that the mutations correlate with a high risk of cancer. That discovery itself is not patentable because it is a law of nature, or alternatively, an abstract idea or perhaps even a product of nature. The question then is whether the claim includes the necessary “something more” – an “inventive concept” that transforms the invention into one that is patent eligible in a way that ensures that fundamental building blocks of science and technology are not monopolized through the patent. A problem for Myriad on this front is that the tools of hybridized screening were already known and were not themselves inventive concepts at the time. However, clearly the invention as a whole is practical, transformative, and inventive.
On October 6, 2014, the Federal Circuit heard oral arguments on the case with a panel consisting of Chief Judge Prost, Judge Dyk, and Judge Clevenger. Oral arguments focused largely on the question of integration versus filtration. Namely, when applying the second step of the Alice/Mayo analysis, is it proper to consider the invention as a whole integrated invention or must the court first filter-out the excluded subject matter and then ask whether an inventive concept can be found in the remains. It will be interesting to see how the court resolves this important and tricky question.
Santa Clara’s High Tech Law Center is giving away a couple of limited-edition Annotated Bobbleheads of Judge Randall R. Rader. [Enter here]. (I should note that to enter you have to take some action such as liking them on The Facebook? Is that legal?). According to my sources, Judge Rader has blessed this use of his likeness.
The BCLT is at the core of Berkeley’s extensive law and technology program: it coordinates research funding and the many course offerings in this field at Berkeley Law, organizes terrific conferences and workshops, and serves as a hub for lawyers and scholars interested in IP, privacy, and other aspects of law and technology. The current Executive Director is Robert Barr, former Chief IP Counsel for Cisco and past Executive Dirctors have included Ray Ocampo, former General Counsel for Oracle (and Olympic luger).
The Berkeley Law Center for Law & Technology (BCLT) invites applications for the position of Executive Director. This is a 100% full-time appointment.
BCLT is a research center at the University of California, Berkeley, School of Law. For the past fourteen years, BCLT has been rated by US News & World Report as one of the top intellectual property programs in the country, in part because of the high quality, high impact research conducted by its faculty and students. BCLT’s research includes intellectual property, electronic commerce, telecommunications regulation, cyberlaw, privacy and other areas of law that are affected by new information technologies.
* The numbers above are based upon the inventor country as listed for the first-named inventor on the face of each U.S. utility patent. Although there are an increasing number of cross-country patents (with inventors listing different countries), those numbers are negligible in a population analysis such as this. The results for assignee-country are virtually parallel with the exception that about 6% of U.S. patents are issued without a listed assignee.
The creativity of American lawyers never ceases to amaze. I’ve heard of variations on this theme: using an IPR to coerce payment, a license, or something from the patentee. Variation on the theme:
A third party sees that a patentee has won a big judgment, defending its patent against a charge of invalidity. The third party then cobbles together an IPR petition based upon the arguments that failed in the district court, relying upon the lower burden of proof and broader claim construction that will apply in IPR, and sends it to the patentee with a note: “pay us or we’ll file this.” This was discussed a few months back here.
A third party uses IPR as a tool to manipulate stock price: sell the stock short and then file the IPR. Or, it sees the patentee is in litigation and says, “give us a license (which we’ll turn around and use to license the defendants) or we’ll file an IPR.” A story about that allegedly happening is here.
Gotta love America.
The ethics of this are fascinating: it may be that the OED could be brought in to show that the IPR was filed for an improper purpose and nip it in the bud. But that’s probably a long shot, given the right to petition and what-not. Perhaps Congress limiting standing in IPRs to competitors? It’s too early for me to think in depth about a creative solution to this creative problem.
In a split opinion, the Federal Circuit has affirmed the district court’s determination that Calcar’s three asserted patents are unenforceable due to inequitable conduct during prosecution. The case teaches about “but-for materiality” and holds that the withholding of information can be the but-for cause of a patent issuance even if that information is insufficient to render any of the patent claims invalid in court. See also Therasense. The court winds this tale by noting the evidentiary difference: PTO only requires a preponderance of evidence of nonpatentability while invalidation in court requires clear and convincing evidence.
Duty of Disclosure, Candor, and Good Faith Dealing: Although lawyers always bear certain good faith obligations, those practicing before the before the PTO bear a more significant duty of disclosure, candor, and good faith dealing. Failure to meet this high standard has a number of potential repercussions — for patent owners, the greatest issue is the potential that resulting patents may be held undenforceable due to inequitable conduct in proceedings before the USPTO. Importantly, for any particular patent case, the duty of disclosure extends to all “individuals associated with the filing or prosecution.” 37 C.F.R. 1.56. This certainly includes named inventors as well as “every other person who is substantively involved” with the application. Id.
Therasense En Banc: In Therasense (Fed. Cir. 2011) (en banc), the court made it a bit more difficult to render a patent unenforceable by requiring (a) proof of a ‘bad’ act that is a but-for cause of the patent issuing as well as (2) particular intent that the act was intended to deceive the PTO. Conventional wisdom is that Therasense (as well as Excergen) has dampened many claims of unenforceability — especially those where the allegation is merely a failure to fully disclose to the USPTO all information related to patentability of the case in question.
Failure to Disclose Photos Taken of Prior Art: This case involves a family of three patents directed to a multimedia system used to access vehicle information and control vehicle functions. The district court found that Calcar’s founder and named inventor Michael Obradovich had particular information about a prior Acura 96RL navigation system that he failed to submit to the PTO. In particular, prior to starting work on his invention, Obradovich had driven the Acura, operated its navigation system, and taken photographs as well written a “QuickTips” guide. Although the application identified the 96RL system as prior art, Obradovich did not write a summary of his experiences or submit the photographs or the owner’s manual. The district court found this failure to be material to patentability and also that the “only reasonable inference from the evidence” was that Obradovich withheld the information with “specific intent to deceive the PTO.” On appeal, the Federal Circuit affirms.
But For Materiality: An interesting aspect of this case comes from the fact that the jury considered the non-submitted prior art but found that it failed to render any of the patent claims invalid. Yet, the courts here hold that the non-submitted prior art can still be considered a but-for cause of the patent issuing in the first place. The reasoning for this discrepancy is that that the PTO’s evidentiary standard for refusing to issue a patent is only a preponderance of evidence – a much lower standard that the clear and convincing evidence required to invalidate an issued patent. Here, the finding is that the USPTO would have found at least one of the claims obvious if it had seen the non-submitted prior art.
But Obviousness is a Question of Law: Under Graham and KSR, obviousness is a question of law that relies upon an underpinning of factual determinations. Although the court ignores the Graham inquiry in its analysis here, it appears that the only disputed issue is the ultimate legal question of obviousness and not the factual underpinning. The fact that we’re talking about a question of law is important because questions of law are not governed by evidentiary standards but rather both the PTO and Courts must approach that ultimate question with the same framework of simply correctly determining the law based upon the evidence presented.
The majority opinion was written by Chief Judge Prost and joined by Judge Wallach. Judge Newman wrote in dissent.
Judge Newman focuses on an interesting issue. She argues that, rather than speculating about what the PTO might do, lets look at what it actually did when it saw the references. Namely, the ‘497 patent (invalidated by the jury and not at issue here) was reexamined by the PTO during the course of the litigation and the examiners reviewed the previously non-submitted prior art and then confirmed all of the claims as patentable. However, Judge Newman’s arguments appear more appropriately addressed to the earlier court opinion in this case.
Nonetheless, my colleagues rule that the patents are unenforceable based on the initial failure to send the Owner’s Manual and photographs to the PTO. The inequitable conduct with which Mr. Obradovich is charged is that he “did not tell Mr. Yip [his patent attorney] about his experience with the 96RL, nor did he provide Mr. Yip with the Owner’s Manual or the photos of the navigation system display screens.” Dist. Ct. Op. at 11. However, the PTO established, on reexamination of the ’497 patent, that the purportedly withheld information was not material to patentability. In accordance with Therasense this ended the inequitable conduct inquiry, for the PTO sustained patentability in view of this information.
In addition, there was no evidence of intent to deceive the PTO. The panel majority impugns Mr. Obradovich’s credibility, although they do not say what is disbelieved. The jury heard and saw Mr. Obradovich, on examination and cross-examination, and did not find deceptive intent. My colleagues “infer” clear and convincing evidence of deceptive intent from Mr. Obradovich’s initial failure to send his patent attorney the Owner’s Manual and the photographs of the Acura display. They postulate that a savvy inventor and businessman such as Mr. Obradovich
would have known the information was material to patentability and would therefore withhold it in order to deceive the PTO. However, a more likely inference is that a savvy inventor and businessman would know that a patent obtained through concealment of a material reference is not a reliable commercial asset.
There’s a fee dispute in the Eastern District of Texas over, it’s alleged, $25m owed to Mount Spelman & Fingerman, P.C. by its former client, Geotag, Inc. I’ve uploaded a copy of the judge’s decision from October 2, 2014, here: show_temp
Boiled down, the client retained the firm to sue 350 or so defendants but after just over a year, fired the lawyer. The fee agreement purportedly gave the firm the right for any reason on termination to get either its full hourly fees or a contingent fee, whichever was greater. (Which is insane, but I digress.) But that issue was not what the court addressed.
Instead, the firm moved for a preliminary injunction, asserting that it had a lien over the money and that the patentee was going to send the money out of the country. The court first held that a contractual lien was not prohibited by Texas’ ethical rules, even though there were two opinions which the court viewed as irreconcilable on that point. So, firm wins that round.
But, the court reasoned that the fee agreement was not clear as to which cases it applied to, and under what circumstances. Because of the lack of clarity, it ultimately concluded that the lawyer had a lien only as to cases fully settled/adjudicated prior to termination, and even those it put limitations on. So, firm loses that round.
This is the second Texas case in just the last few months to raise up these “I get paid even if you fire me no matter what” clauses, the other invoking Parallel Networks and Jenner & Block, which you can read about here. I’ve written an article about these purportedly ethical provisions, and if you email me I’ll shoot it to you. Ask for “Dear Lawyer.”
If you have and can forward a copy of this fee agreement to me, I’d love to see it. It did not seem to be on Pacer and may, of course, be under a protective order. Please don’t send it if it is! 🙂
I’m in the midst of preparing a paper on ethical issues arising from biologics practice, and figured I’d ask: you have any issues that arise? I’ve thought of some regarding prosecution bars/competitive decision-making type issues, but would love your input, particular as to in-house counsel issues.
The story here explains that the bill got a hearing and that, if passed, Ohio would join ten other states with these bills. The story states: “HB 573 outlines information in patent infringement claim letters that can be used against senders in legal proceedings and enables targets of such letters to file civil suits if claims have no merit.”
I’ve got an article coming out showing how 285 can be used against lawyers of patentees…
Jury verdicts are fascinating with their simple power. The jury is not asked to provide a long winded studied response to the case but rather to provide very simple responses to very difficult and complicated questions. A lawyerly answer would be ‘its complicated,’ but that option is not allowed on the verdict form.
Masimo v. Philips involved a two week jury trial — two weeks of testimony where the two companies cross-asserted blood-oxygen monitor patents with competing experts at every front. Following that, the jury was given a simple form and it sided with Masimo to the tune of $466 million dollars for past infringement.
The story, hopefully not behind a paywall is here. It’s not quite clear from the story, but it seems that the patentee had several lengthy meetings with one set of K&L Gates lawyers about some of its patents, but, for whatever reason, did not retain the firm. The, after the patentee filed suit, K&L Gates showed up representing the defendant. After the firm filed a response to the motion to disqualify, it announced it would withdrawn to avoid the cost and delay of the motion on its client.
This implicates (in many federal courts) Model Rule 1.18, or its state analogs, a rule that is not on a lot of lawyers’ radar. Essentially, it provides that a law firm owes duties to a client who in good faith seeks to retain the law firm. The firm can obtain consent, set up screens, and take other steps to avoid a conflict under the rule, and it may be that’s what K&L Gates did here.
If you do “beauty pageants” or “dog and pony shows,” read Model Rule 1.18 and take advantage of some of its safe harbors, to protect yourself, your prospective client, and later potential clients.
This is a bit of an in-the-weeds question, even for Patently-O.
Because firms tend to operate within a certain market area and use a particular technological approach, it makes sense that a patentee may well create prior art that blocks future innovations. One solution offered by the law is the “common owner ship excption.” In particular, the statutory definitions of prior art include the ‘common owner exception’ that excludes a right-owner’s prior-filed patent applications from the scope of prior art for later-filed applications so long as those prior applications were not published by the filing date of the later applications.
AIA Expansion of Exception: This is one area where the AIA reduced the scope of prior art. Namely, before the AIA the common owner exception excluded the prior applications only with regard to obviousness consideration (assuming different inventors). The AIA expands the exception to also exclude these prior-applications from anticipation consideration. With this expansion, we might expect some increase in double patenting problems.
Double Patenting Common Assignee but No Common Inventors: My question relates to the statements in MPEP 804 that examiners should issue double-patenting rejections when two commonly-owned inventions claim the same subject matter even when there is no overlapping inventorship:
Claims in commonly owned applications of different inventive entities may be rejected on the ground of double patenting. This is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) (the doctrine is well established that claims in different applications need be more than merely different in form or content and that patentable distinction must exist to entitle applicants to a second patent) and In re Christensen, 330 F.2d 652 (CCPA 1964). . . .
[A rejection is proper even when] the reference … and the pending application are … by a different inventive entity and are commonly assigned even though there is no common inventor.
The problem with the MPEP here is that the cases cited are not on-point – i.e., they do not say anything about whether a double patenting rejection may persist when there are no inventors in common. We know that statutory-double patenting is said to stem from 35 U.S.C. 101 and, likewise, we learned in AbbVie v. Kennedy Institute that obviousness-type-double-patenting also finds its roots in Section 101. The problem with that approach is that Section 101 remains old-school and still focuses on “inventors” rather than applicants or owners.
My Question: What is the legal source of the MPEP’s declaration that a double patenting rejection is proper based upon common-ownership even when the two documents have no common inventor? I suspect that there is a case on this, but I don’t know.
[April 30, 2024 update: Cloem appears to be defunct, but there are many others]
by Dennis Crouch
Although you might be the first-to-file a patent application covering a particular new innovation, certain market areas are so competitive that you should expect follow-on patents from competitors that take the original idea and push it in other similar-but-different directions. Those follow-on patents won’t block you from practicing your core invention, but they may well block you from implementing practical and important elements of a market-ready solution.
One potential partial solution to this problem is being offered by a new company out of Canes, France. The company, known as Cloem, has an interesting business model of creating tens-of-thousands of what they call “cloems” based upon a client’s submitted claim set. A cloem is a computer-generated claim (or statement of an invention) that is created by the various permutations possible as well as by considering alternative definitions for terms as well as “synonyms, hyponyms, hyperonyms, meronyms, holonyms, and antonyms.” The owner’s idea is that the cloems will be immediately published and then serve as prior art to prevent competitors from claiming rights to the whitespace surrounding the original patent. Customers might also want to cloem a competitor’s patent application to prevent them expanding that subject matter.
www.cloem.com
Cloem admits that a substantial number of its results are nonsense, but a substantial number are also on-the-money and, with 50,000 cloems per patent, they can afford to waste a few.
Questions remain: (1) whether these smart-but-random computer-generated cloems should count as prior art; (2) when one of the cloems represents a seemingly patentable invention, who is the inventor and is it patentable? Robert Plotkin wrote a book that considers some of this: The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business
The newspaper story is here. It seems that Hunter Douglas alleges that its (now former) in-house IP lawyer created an entity and then hired it to do work, at exorbitant rates, that was never done. The entity then billed the company for $5 million over a few years.
If true, just to be clear, that probably violates a few rules!
I’m looking forward to a few upcoming events for patent law professionals:
HOUSTON: On the evening of November 5, 2014, I will be delivering the University of Houston’s IP IL Annual Fall Lecture at the Four Seasons Hotel in Houston (Sponsored by the Katz Foundation). My talk will be on incentives (current and future) for patent clarity. [LINK]. Thank you to the University of Houston Law Center for hosting this event.
AUSTIN: November 6-7, 2014, I will be down in Austin Texas participating in the annual Advanced Patent Law Institute with a talk titled Evidence Based Patent Law: Trends and Statistics, and What they Mean for Your Practice and your Patent Portfolio. [LINK]. Other speakers include Professors Golden (UT Austin), Lemley (Stanford), Wegner (formerly with GWU), and Hricik (Mercer); the Hon. Terry Rea and Randy Rader; Rob Sterne, et al.
WASHINGTON DC: Unfortunately, a great conference is also scheduled in DC for November 6-7, 2014 in Washington DC. The Patents in Telecom conference, co-sponsored by University College of London (UCL) faculty of laws and GWU. Excellent and varied set of international speakers including Qualcomm president Derek Aberly, AT&T Chief IP counsel Glenn Blumstein, and Sir Christopher Floyd, Lord Justice at the Court of Appeal of England and Wales. Patently-O readers get a 10% discount with code: patently-o-2014
WASHINGTON DC: On December 9, 2014, the IPO Education Foundation will be awarding its Distinguished IP Professional Award to Judge Richard Linn. Excellent choice and well deserved honor. The IPO has more information on the award dinner and their reasons for choosing Judge Linn. Hugh Herr will also be named inventor of the year for his work on prosthetics.
VAIL: January 7-11, 2015, I will be in Vail, Colorado talking about patent law as part of the 32nd National CLE Confrence where they also happen to have “amazing skiing.” Conference co-chairs are Scott Alter (Baker Daniels) and David Bernstein (Debevoise & Plimpton ). [LINK]
NAPLES: February 7-10, 2015: Hal Wegner’s annual Patent Experts Conference in Naples (FL) at the Naples Beach Hotel.
USPTO: The USPTO’s AIA Roadshow continues with stops in Denver (Oct 2), Cupertino (Oct 7), and Atlanta (Oct 9). [LINK]
COPENHAGEN: A late entry to this list is the October 21 event at Aarhus University in Denmark focusing on the upcoming UNIFIED PATENT COURT in Europe. Judge Rader will deliver the keynote. I would be most interested in hearing the discussion of how the UPC may impact patent licensing, competition and enforcement. [Link]
We also have a set of new job postings on the Patently-O Job Board.
For years now, my colleague Karen Sneddon and I have written a column, “Writing Matters,” for the Georgia Bar Journal. We try to make it meaningful to lawyers and think we’ve accomplished that goal. What I’d like to know is what bugs you? I don’t want to even suggest ideas so fire away. We’re going to put together future columns that address those that we haven’t, yet, covered.
