All posts by Jason Rantanen

About Jason Rantanen

Jason is a Law Professor at the University of Iowa College of Law.

Ultramercial v. Hulu: Computer Programs and Patentable Subject Matter

Patent,

By Jason Rantanen

Ultramercial, LLC v. Hulu, LLC (Fed. Cir. 2011)
Panel: Rader (author), Lourie, O'Malley

The line between patentable processes and unpatentable abstract ideas continues to trouble the Federal Circuit even as the Supreme Court prepares to address the issue for the second time in four years in Mayo v. Prometheus.  In Ultramercial, the court—led in this instance by Judge Rader, whose views on patentable subject matter are clear and well known—rejected a challenge based on lack of patentable subject matter in an opinion that draws the line between steps that can be performed in the human mind or by a human using pencil and paper (unpatentable) as opposed to those that require a computer (patentable).

Patent No. 7,346,545 claims a method for distributing copyrighted products over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement and the advertiser pays for the copyrighted content.  The district court granted the accused infringer's motion to dismiss on the ground that the '545 patent does not claim patentable subject matter.

Patentable application not an abstract idea
On appeal, the CAFC reversed. After noting the broadly permissive nature of Section 101, and placing the '545 invention in the "process" category, the court looked to the abstractness of the invention claimed by the '545 patent.  Eschewing the "machine or transformation test," the court focused instead on the programming complexity required to carry out the claimed elements.  The claimed invention, the court determined, constituted a patentable application rather than an unpatentable abstract idea. While "the mere idea that advertising can be used as a form of currency is abstract, just as the vague, unapplied concept of hedging proved patent-ineligible in Bilski,…the '545 patent does not simply claim the age-old idea that advertising can serve as a currency.  Instead, the '545 patent discloses a practical application of this idea."   Slip Op. at 10.  This statement is followed by identification of the specific steps for monetizing copyrighted products set out in the claims, many of which involve complex computer programming.  "Viewing the subject matter as a whole, the invention involves an extensive computer interface."  Slip Op. at 11.

Software is patentable
Layered on top of this finding is the court's rejection of the argument that software programming amounts to abstract subject matter.  "The digital computer may be considered by some the greatest invention of the twentieth century, and both this court and the Patent Office have long acknowledged that "improvements thereof" through interchangeble software or hardware enhancements deserve patent protection.  Far from abstract, advances in computer technology—both hardware and software—drive innovation in every area of scientific and technical endeavor."  Slip Op. at 12.

This holding is in tension with the Federal Circuit's recent opinion in Cyber Source Corp. v. Retail Decisions, Inc., No. 2009-1358 (Fed. Cir. Aug. 16, 2011), in which a panel consisting of Judges Bryson, Dyk and Prost concluded that a method of verifying a credit card transaction over the Internet constituted an unpatentable process.  While the panel in Ultramercial recognized this tension, it distinguished Cyber Source as an instance of "purely mental steps."  Ultramercial Slip Op. at 13 (emphasis in original).  The line, at least from the point of view of this panel, thus lies somewhere between logical steps that humans can perform without the aid of a computer versus those that require a computer to carry out.

Patently-O Bits & Bytes by Lawrence Higgins

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Will the number of Provisional Patent Applications Filed Increase?

  • The US patent system will soon become a first to file jurisdiction, switching over from the first to invent. With the switch, it would seem that the number of Provisional applications will increase significantly. Companies, Universities, and inventors will be fearful that they are not the first to file, and will want some kind of assurance that they are able to secure patent protection. The provisional application could be the assurance that applicants are looking for. Provisional applications serve several important functions, the most important being that the applicant can secure a filing date. The Provisional Application will give an applicant 12 months to further experiment, get finances in order, and decide whether or not to convert to a non-provisional application. Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent. It should be noted that, provisional applications that are abandoned or not converted are not publically disclosed and will not be considered as prior art. As a result of the change in the patent system, there will probably be a noticeable increase in the number of provisional applications filed. [Link]
    • Applicants should take caution because a Provisional application must disclose enough info that a person having ordinary skill in the art would recognize that the invention claimed in a later-filed non-provisional application is described in the provisional upon which it relies. If the provisional does not adequately describe everything that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.

Maybe the End of Times, for False Marking Suits

  • Under the America Invents Act, "Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases. [Link]

Good bye BPAI and hello Patent Trial and Appeal Board (PTAB)

  • Elimination of References to Interferences. — (1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board". Interference proceedings are out the window with the first-to-file patent system, being replaced by derivation proceedings. Derivation proceedings are essentially proceeding to determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later. Under the new law, derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the 1st publication of a claim to an invention that is the same or substantially the same…

Patent Jobs:

  • Cantor Colburn is looking for an associate patent attorney (chemistry) with at least 2 years of patent drafting experience. [Link]
  • ON Semiconductor is seeking a patent administration/IP attorney with 5-7 years of experience as a patent attorney. [Link]
  • Baker & Daniels is searching for an IP associate with up to 4 years of experience in prosecuting patents. [Link]
  • Amin Talati is seeking a patent attorney with a science background and 10+ years of experience to work in their Chicago office. [Link]

Upcoming Events:

  • The University of Dayton School of Law is holding a patent symposium entitled "Designing the Design Patent System" on September 15 in Dayton, Ohio. Professor Mark Janis will analyze the history of the U.S. patent system. The program will also include a panel of IP experts such as Tara Rosnell and Christopher V. Carani. [Link]
  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

The Effects of the America Invents Act on Technological Disclosure

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By Jason Rantanen

(Note: Given the almost certain passage of H.R. 1249 by the Senate, this analysis refers to that version of the pending patent legislation.  It is available here.).

The principal justification for the impending changes to patent law is that they will promote technological progress in the United States (and thus create jobs).  The questions relating to whether this intended result will be realized are numerous, and in this analysis I focus on just one important issue: the effects the America Invents Act may have on the disclosure of technological information.  I conclude that while the new patent laws have the potential to encourage at least one category of disclosures, they may also negatively impact other types of information disclosures.

At least three aspects of the Act are likely to impact the quantity and quality of disclosures: the changes to the novelty rules of 35. U.S.C. § 102, the creation of a prior user defense, and the effective elimination of the best mode requirement.  Changes to the effectiveness of the inequitable conduct doctrine are also likely to have an impact, perhaps good, perhaps bad, an issue I will discuss at a later time.  Below, I offer a preliminary analysis of the effects of these changes with respect to two categories of disclosures: (1) the mandatory disclosures in the patent document itself, and (2) peripheral disclosures, which I define as the dissemination of information that would not occur but for the existence of a patent system.

Changes to Novelty Rules: The shift to a first to file system is central to the America Invents Act.  Along with that change comes a revamped set of novelty rules – a complete rewrite of Section 102.  Gone is 102(a), and the concept that prior art must precede the date of invention.  Gone too is 102(b) and the one-year statutory bar.  Instead, we will soon (i.e.: in eighteen months) have a new 102(a) under which a variety of things (i.e.: patents, printed publications, public uses, invention being on sale, etc.) that predate the patent's effective filing date constitute prior art, a much more potent statutory bar than presently exists.

This new rule comes with a major exception, however: prior art does not include disclosures (which I interpret as referring to any of the categories of prior art discussed in the new 102(a)) made within one year of filing if "the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor." (proposed language of 102(b)(1)(B))  (The section also contains an exception for disclosures by the inventor or another who obtained the subject matter from the inventor). In other words, inventors will have the ability to negate any prior art from the one-year period prior to filing by engaging in public disclosure. 

This provision has the potential to encourage early disclosures of information by the inventor.  Although on the surface it seems to provide no more ability for inventors to engage in disclosures than the existing one-year statutory bar, under which an inventor was free to disclose whatever it wanted for the one-year period prior to filing, it perhaps may result in more disclosures than under the present structure.  A disclosure race may be encouraged.  If, as Gideon Parchomovsky has suggested, inventors involved in a patent race sometimes engage in strategic disclosures to stymie their competitors, the new 102(b)(1)(B) has the potential to fuel this behavior.  Through early disclosure, inventors who are racing to develop a new technology can not only block their rivals from obtaining a patent—because the disclosure would operate as prior art against the rival's patenting attempts—but can also negate any subsequent attempt by the rival to disclose patent-blocking information of equivalent content.  Rather than a race to invent, perhaps this will produce a race to engage in early public disclosures.  Unfortunately, any such effects are likely to be largely limited to inventors who desire to only file in the United States due to the lack of a self-disclosure exception in many countries. 

Creation of a Prior User Defense: Even as the changes to the novelty rules seem to encourage early peripheral disclosures of technological information, at least for US-only inventors, the creation of a prior user defense pushes towards less disclosure, albeit through different mechanisms.  I see the creation of a prior user defense in Section 5 of H.R. 1249 as impacting the disclosure of technological information in two ways: it may reduce the quantity of patent applications filed, and thus the number of mandatory disclosures that accompany those applications, and it has the potential to shift investment in invention away from self-disclosing inventions to those that can be protected through secrecy mechanisms.

The types of inventions that the prior user defense most applies to are those with the capability of being protected through secrecy.  A prior user defense is less important for inventions whose workings are readily understandable once they are placed on the market because these products already represent potentially invalidating prior art; thus, this type of defense has most relevance for non-self disclosing inventions, a category that includes many processes.  Under the current law, inventors who develop non-self disclosing inventions are faced with a difficult choice: maintain the process as a trade secret, and run the risk of being blocked later by an inventor who obtains a patent, or file for a patent and disclose the process to the public.  Both options have significant costs associated with their selection but the patent and disclose option is hardly foreclosed.

A prior user defense reweights this decision in favor of maintaining secrecy because it reduces the risk of being blocked by a later inventor.  The directional effect of this change is to reduce the number of patents that are filed on secret inventions, and thus reduce the number of mandatory disclosures that accompany those patents.

Of course, not everyone accepts that these mandatory disclosures provide useful technological information.  Consider, however, the effects on peripheral disclosures – specifically, the impact on investment in self-disclosing inventions.  The creation of a prior user defense re-calibrates the scale as between secret inventions and self-disclosing inventions.  By making secrecy a more valuable protection strategy for inventors to pursue, inventors are likely to focus their efforts towards the creation of such inventions as opposed to self-disclosing inventions, at least when the social utility that the inventor can monetize is otherwise equal.  But self-disclosing inventions are inherently valuable for the information that they provide to the public and future inventors – a spillover that inventors cannot fully capture.  The directional result may be the creation of fewer of these valuable inventions.

Elimination of Best Most Requirement: Section 15 of H.R. 1249 effectively eliminates the best mode requirement by amending the list of invalidity defense to exclude best mode  While the best mode requirement remains in 35. U.S.C. 112, and thus theoretically could be used by a patent examiner to reject an application, failure to disclose best mode may also not be a basis for holding a patent unenforceable – i.e.: no inequitable conduct on this ground. 

Although the best mode requirement has been subjected to substantial criticism on the grounds that it represents a trap for the unwary independent inventor while being wholly ineffective for disclosure purposes, the actual impact of the abolition of this requirement may be far broader than expected.  From a directional standpoint, the only effect of this change is to weaken the mandatory disclosure obligations imposed on the applicant, and thus a decrease in the quality of individual disclosures should be predicted.  How great a decrease, and whether the elimination of this requirement will result in more disclosure-providing applications being filed, will be an area to monitor.

 

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

U.S. IP Brokers: No Ethical Regulations and No Standards

  • In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]

Will Research In Motion (RIM) Sell Its Patents?

  • Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]

Paul Graham's Patent Pledge

  • Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:

    No first use of software patents against companies with less than 25 people.

    Is this a good idea and could it possibly work? [Link]

Patent Jobs:

  • Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
  • The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
  • The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
  • Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]

Upcoming Events:

  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]

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

Guest Post: Patent Troll Myths

Patent

(Professor Michael Risch of the Villanova University School of Law is a prolific scholar who is fascinated by patent trolls.  Given his interest in this subject, I invited him to write a short post on his current project examining conventional beliefs about patent trolls. – JAR) 

Guest Post by Michael Risch

Few players in the patent system (maybe none) are more hated than patent trolls. There is a lot of debate about what it means to be a patent troll, but the commonly accepted definition is a plaintiff that asserts patents (usually acquired ones) but makes no product. More accurate terms are non-practicing entities (NPEs) or patent assertion entities (PAEs), but I’ll keep using trolls here if only to be mainstream.

Commentators (including me) have intuitions about the types of patents that trolls assert; the media is filled with claims. The problem with these intuitions is that they are all anecdotal – we think we know what we know from the limited reporting we see about cases that hit the news. But trolls have been around for a long time (two of the entities I studied brought their first suit in 1986) and they file a lot of lawsuits.

I wanted more evidence to support my intuitions, so I set out to comprehensively study a group of trolls – namely the ten most litigious trolls. I don’t have space here to discuss why I chose this group, but the paper discusses my reasons as well as why I believe that the findings here apply to less litigious trolls. In all, I studied 10 trolls, about 1000 cases, and about 350 patents over a 23 year period. The full paper examines the type of patents, case outcomes, patent quality, venture funding, and other aspects of the cases and patents.

It turns out that most of what I thought about trolls – good or bad – was wrong.  But first, one area that fits conventional wisdom: the moniker “troll” is accurate to the extent that it means waiting before asserting a patent. The patents I studied were asserted for the first time on average more than seven years after issuance. That’s a lot of time for an industry to develop. That said, delay decreased as issue dates increased. In other words, older patents sat on the shelf much longer than new patents. Patents issuing in 2006 were asserted on average within 2 years. This could mean that trolls are acting more quickly, or it could be what we call a “selection effect” – only some recent patents were asserted early and there is a large group of patents yet to be asserted; 15 years from now, it may be that the average delay for patents issuing in 2006 is seven years, though I doubt it.

Perhaps the biggest surprise in the study was the provenance of patents. I thought most patents came from failed startups. While such patents were represented (about 14% of initial assignees were defunct), most came from companies still in business in 2010. Indeed, more than a third of the initial assignees were publicly traded, a subsidiary of a public company, or venture capital recipients. Only 21% were patent assertion entities at the time the patent issued, and many of those were inventor owned companies (like Katz) rather than acquisition entities (like Acacia). Further, about 26% of the patents were inventor owned, and a comparison with the percentage of individual inventors represented in litigation generally shows that trolls serve an important role in enforcing individual inventor patents. Of course, if you think individuals have no place in the patent system, this is not a good thing.

Another area of surprise was patent quality. While trolls almost never won their cases if they went to judgment (only three cases led to an infringement finding on the merits), the percentage of patents invalidated on the merits was lower than I expected. A total of 43 patents had validity adjudicated on the merits. Only 4 were found completely valid. Another 23 were held completely invalid, and the rest were partially valid. Thus, just over half were invalidated. This sounds high, and it is—but consider that most of these cases involve a group of related patents that stand or fall together. When viewed on a case by case basis, as most other studies do, 13 cases out of 46 cases that reached a final judgment (28%) fully invalidated a patent. Compare this with a study of all patent cases filed in 1995, 1997 and 2000, which found that 118 out of 584 summary judgment or trial rulings (20%) invalidated a patent. Viewed this way, the invalidation rate for patent troll cases is not that much higher than patent cases in general. The quality is worse, but not that much worse (and as discussed in the paper, methodology differences may mean that the difference is smaller than 8%). Of course, it is more costly to defend against multiple related patents, so litigation strategies still have a social cost.

These are just a few of the findings. A full draft of the paper, called Patent Troll Myths, is available on SSRN  and will be published next year in the Seton Hall Law Review. I am also planning a followup that looks more closely at outcomes and patent quality over time. Comments are appreciated.

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

Google's Executive Chairman Eric Schmidt Opinions about the Patent System

  • Schmidt suggested that the problem with the current patent system is that; in the early 90s and 2000s there were a lot of patents issued that were very broad, and that patent clerks are now spending a lot of time combing through and invalidating these older patents. Schmidt's suggest that the best way to address the problem is to take the patents as they're published and crowdsource them. Further Schmidt states that "the best way to potentially curb these patent wars, then, would be to publish the patents publicly and allow everyone to comment to see if there's any prior art." Schmidt is worried that "overbroad patents will somehow slow" the progress of the software industry down. [Link]

Applications to Law Schools Decline

  • Many students in the past couple of years came to the conclusion that law school was not for them. This year applications to law schools nationwide are down by almost 10 percent. It seems like potential students are being scared off by the recent legal job market for graduating law students. In 2010, only 87.4 percent of the graduating class had a job 9 months after graduation, which was a 15 year low. While many areas of the legal industry have suffered in the past several years, it seems that the patent law sector is still going strong. There has been an increase in patent lawsuits, as well as patent applications for many consecutive years. The patent industry is somewhat different from other practices of law; an individual that prosecutes patents must have a science, engineering, or computer background to be eligible to take the patent bar. While an individual does not need a technical background to practice the other areas in the patent field, (litigation or licensing) most practicing legal professionals have the technical background anyway. There will probably be no decline in law students who would like to practice patent law; there might even be an increase in future years. [Link]

A New Way to Win Patent Claim Construction

  • In a recent article I read by patent attorney David Orange, he discusses negative claim construction. David states that a classic example of negative claim construction is prosecution history estoppel, which requires the disavowal of claim scope "to be both clear and unmistakable." The article also discusses how to successfully defend against concerns of infringement. David states that, "we routinely look for definitional statements in patents and their prosecution histories… but finding positive definitions is hard because patent prosecutors are raised to never refer to "the invention" and speak only in nonlimiting examples." The article suggest that we should also look for negative statements, such as declaratory statements… [Link]

What Will Kodak Patents Sell for?

  • Kodak has announced that it is willing to sell 10% (1,100) of its patent portfolio, which could help raise a significant amount of money for the company. The sale will be handled by the investment bank Lazard. Lazard recently brokered 2 of the biggest patent deals ever, Google's purchase of the Motorola patents and the purchase of the Nortel patents. It has been reported that the Kodak patents will sell for at least 3 billion, which is a large amount for only 1,100 patents. Nortel sold over 6,000 patents for 4 billion dollars and Google purchased over 17,000 patents for around 12.5 billion. So, is 3 billion dollars for 1,100 of Kodak patents a reasonable or realistic amount, I would say probably no in this situation. Kodak has over 10,000 patents in its portfolio and they are selling 1,100 of them. This could mean the ones they are selling probably are not that important, since they have not decided to sell the total portfolio. Also, Kodak doesn't have that much room to negotiate, over the past several years Kodak has been struggling to stay above water and therefore, the potential purchasers would have more power in the negotiations. [Link] [Link]

Patent Jobs:

  • Thompson Hine is seeking an IP associate with 4-6 years of patent and trademark experience. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and an electrical engineering background. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a chemical background. [Link]
  • Maginot, Moore & Beck is looking for a patent attorney with 1-5 years of experience and an electrical engineering background. [Link]
  • Cooley is searching for a patent attorney with 2-3 years of experience. [Link]
  • Meyertons, Hood, Klivin & Goetzel is seeking patent attorneys/agents and software computer engineers. [Link]

Upcoming Events:

  • Mizzou will be hosting its annual Missouri Technology Expo on September 8th. The event is held as a way of uniting innovators with those who can advance, develop and commercialize technologies. The guest speakers include, Christopher "Kit" Bond, Gregg Scheller, Suzanne Magee and many others. Several investment groups will be on hand, such as The Incubation Factory, DFJ Mercury, Allied Minds and many others. This will be a great event for patent attorneys and many others to network and build business relationships. [Link]
  • The Intellectual Property Owners Association (IPO) will be holding its annual meeting in Los Angeles September 11-13th. Guest Speakers include CEO Chad Deaton (Baker Hughes) and Deputy Director James Pooley (WIPO). [Link]
  • IPO will be holding a conference in Los Angeles on September 14. The conference will discuss "Compulsory Licensing as an Emerging Global IP Issue". [Link]
  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Classen Immunotherapies v. Biogen: The Broad, Broad Scope of Statutory Subject Matter

Patent, , , , ,

By Jason Rantanen

Classen Immunotherapies, Inc. v. Biogen Idec (Fed. Cir. 2011) Download 06-1634-1649
Panel: Rader (offering "additional views"), Newman (author), Moore (dissent)

There is no doubt that the Federal Circuit continues to struggle mightily with Section 101.  If Myriad were not enough evidence of this, Classen Immunotherapies – and Judge Rader's additional views in particular – should remove all doubt.

Classen Immunotherapies holds three patents that it contends are infringed by virtually everyone: Patent Nos. 6,638,739; 6,420,139; and 5,723,283.  According to the patents, their inventor, Dr. Classen, has discovered that "the schedule of infant immunization for infectious diseases can affect the later occurrence of chronic immune-mediated disorders…and that immunization should be conducted on the schedule that presents the lowest risk with respect to such disorders."  Slip Op. at 5. Claim 1 of the '739 patent is illustrative of Classen's broad claim scope:

1. A method of immunizing a mammalian subject which comprises:

(I) screening a plurality of immunization schedules, by

(a) identifying a first group of mammals and at least a second group of mammals, said mammals being of the same species, the first group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a first screened immunization schedule, and the second group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a second screened im-munization schedule, each group of mammals having been immunized according to a different immunization schedule, and

(b) comparing the effectiveness of said first and second screened immunization schedules in pro-tecting against or inducing a chronic immune-mediated disorder in said first and second groups, as a result of which one of said screened immuni-zation schedules may be identified as a lower risk screened immunization schedule and the other of said screened schedules as a higher risk screened immunization schedule with regard to the risk of developing said chronic immune mediated disorder(s),

(II) immunizing said subject according to a subject immunization schedule, according to which at least one of said infectious disease-causing organism-associated immunogens of said lower risk schedule is administered in accordance with said lower risk screened immunization schedule, which administration is associated with a lower risk of development of said chronic immune-mediated disorder(s) than when said immunogen was administered according to said higher risk screened immunization schedule.

Classen asserts that the '139 and '739 patents are infringed "when a health care provider reads the relevant literature and selects and uses an immunization schedule that is of lower risk for development of a chronic immune-mediated disorder."  Slip Op. at 7.  According to Classen, this includes "the act of reviewing the published information, whether or not any change in the immunization schedule is made upon such review."  Id. The '283 patent is similar, except that it does not include the subsequent step of selecting an immunization schedule.  Classen asserts that the '283 patent is infringed "when a person reviews relevant information, whether the person is a producer of vaccines, a health care provider, or a concerned parent."  Slip Op. at 8.  The three patents list several hundred preexisting references relating to immunization schedules, the occurrence of immune-mediated disorders, and studies and reports from the field.

The district court granted summary judgment of invalidity of the asserted claims on the ground that they claimed an abstract idea.  On initial appeal, the CAFC affirmed, with Judge Moore penning an extremely short affirmance.  Following Bilski, the Supreme Court grant-vacate-remanded the case to the Federal Circuit, where it was assigned to the panel of Rader, Newman, and Moore.

 The Majority: Writing for herself and Judge Rader, Judge Newman concluded that while the '283 patent failed to satisfy Section 101, the '139 and '739 patent did.  Although the '139/'739 patents included a mental step, "precedent has recognized that the presence of a mental step is not of itself fatal to § 101 eligibility."  Slip Op. at 15.  Because the claims of these patents include the physical step of immunization, the majority held, they were directed to a "specific, tangible application."  Slip Op. at 18.  This was sufficient to assure the majority, which declined to offer any additional reasoning, of their subject matter patentablity.    On the other hand, the majority held, the '283 patent attempted to claim an abstract idea unfettered to any physical steps.  Thus, it was invalid under Section 101.

The Dissent: Judge Moore disagreed entirely.  "While I confess the precise line to be drawn between patentable subject matter and abstract idea is quite elusive, at least for me, this case is not even close."  Dissent at 6.  All three claims simply constitute abstract subject matter: "Having discovered a principle – that changing the timing of immunization may change the incidence of chronic immune mediated disorders – Classen now seeks to keep it for himself."  Dissent at 8.  While Judge Moore reserves her harshest criticism for the '283 patent, her views on the '139/'739 reach the same conclusion.  "The immunization step of the '739 patent, like updating the alarm limit in Parker v. Flook, 437 U.S. 584 (1978), is nothing more than post-solution activity."  Id. at 9.  That post-solution activity "does not transform the unpatentable principle – that a correlation exists between vacination schedules and incidence of chronic immune disease – into a patentable process.'  Id. at 10.

Judge Rader's Additional Views:  In an unusual move, Judge Rader, joined by Judge Newman, wrote separately to express frustration with the constant use of Section 101 challenges by accused infringers. 

In the last several years, this court has confronted a rising number of challenges under 35 U.S.C. § 101. The language of § 101 is very broad. Nevertheless, litigants continue to urge this court to impose limitations not present in the statute.

For a variety of policy reasons, Judge Rader urges, "[t]his court should decline to accept invitations to restrict subject matter eligibility."  Rader additional views at 2.  Chief among these is the problem that "eligibility restrictions usually engender a health dose of claim-drafting ingenuity," evasions that "add to the cost and complexity of the patent system and may cause technology research to shift to countries where protection is not so difficult or expensive."  Id. at 3.  

Comments: I am troubled by several aspects of the court's opinions.  Particularly concerning is the majority's apparent desire to abdicate the subject matter inquiry altogether, a desire expressed both implicitly, in the majority opinion's unwillingness to offer any substantive reasoning to support its ruling on the '139/'739 patents, and explicitly in Judge Rader's policy statement.  This approach seems problematic on its own, but becomes even more so when coupled with the numerous Supreme Court opinions relating to the issue of subject matter patentability – an area of traditional significance in the patent sphere.  While the Court may have repeatedly suggested that broad categorical rules may be inpermissible, it has nowhere suggested that subject matter arguments lack merit as a class, or that subject matter arguments must fail as a matter of course.  In particular, I find it difficult to see how the '139/'739 patents possibly survive scrutiny under Parker v. Flook, 437 U.S. 584 (1978).  The mental step itself is not a patentable subject, so how can combining it with an act (or the lack of an act) that has previously been done without the mental step make it patentable?   

Nor does Section 101 seem to present such a unique problem that the Federal Circuit should adopt a policy of declining to address arguments relating to it.  Even as Judge Rader criticizes the case law limiting subject matter patentablity because it encourages costly legal design-arounds, he joins with an opinion that does precisely that by drawing the line between the two sets of claims.  Mental step claims are now clearly out; mental step plus claims are now in.  And since every process is simply a link in a longer process, claim drafters need only look one step forward to avoid the effects of the majority's ruling.  Nor should the effects of Judge Rader's parade of horribles be limited to Section 101 – they strike me as equally applicable to Section 102, Section 103, and especially Section 112. 

 

 

 

 

Guest Post: An Empirical Exploration of First-to-Invent Versus First-to-File

Patent

Guest Post by Polk Wagner, Professor of Law, University of Pennsylvania Law School

One of the most-discussed and controversial provisions of the patent reform bill currently pending before Congress is the change to the United States' venerable first-to-invent patent priority rule.  Surprisingly, even as as we stand on the cusp of the broadest set of changes to the US Patent Law in two generations, virtually no empirical analysis has been conducted on the potential impact of this change, particularly on individual inventors.

In a new paper by my Penn colleague David Abrams and myself — Priority Rules:  An Empirical Exploration of First-to-Invent versus First-to-File — we seek to shed some light on this question by exploiting the same rule change in Canada as a natural experiment.  After collecting data on over a million patent grants in Canada and the US, we use a difference-in-difference empirical framework to estimate the impact of the priority rule change on small inventors.  Our main finding is a substantial drop in the fraction of patents granted to small inventors in Canada coincident with the implementation of first-to-file.  The overall policy implications depend on the relative value of inventions by small inventors, but the results do reveal that, contrary to the conventional wisdom, a change to first-to-file is not free — it is likely to result in reduced patenting behavior by individual inventors.

The complete paper is available on SSRN: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1919730

Genetics Institute v. Novartis Vaccines

Patent

By Jason Rantanen

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc. (Fed. Cir. 2011)
Panel: Lourie (author), Plager, Dyk (dissenting in part)

The Science: In the 1980's, scientists raced to develop a truncated version of Factor VIII, an essential blood-clotting protein.  Two companies, Genetics and Novartis, successfully developed and patented truncated versions of this 2,332 amino acid protein.  Genetics' patent, with a 1985 priority date, included claims directed at a version of the protein that removed between 581 and 949 amino acids in the region between amino acid 740 and 1690, while Novartis's patents, with a 1986 priority date, retained amino acids 1 to 740 and 1649 to 2332.  The retention of amino acids 1649 to 1689 later turned out to be significant because this range binds to von Willebrand factor ("vWF"), an association that is critical for the optimal regulation of the blood coagulation.

Procedural Background: In 2008, Genetics sued Novartis to determine priority of invention under 35 U.S.C. § 291.  Novartis argued that the district court lacked subject matter jurisdiction because the PTO's extension of the patent term from 2006 to 2010 under 35 U.S.C. § 156 applied to fewer than all of the patent claims, and that there was no interference-in-fact.  The district court rejected Novartis's jurisdictional challenge but agreed there was no interference.

Appellate jurisdiction: Seeking to terminate the appeal at the outset, Novartis contended that the CAFC itself lacked subject matter jurisdiction because the Genetics patent expired three days after the district court's entry of judgment.  None of the judges were persuaded.  Distinguishing an earlier case in which the court held that it lacked subject matter jurisdiction because of a claim disclaimer, the CAFC held that the expiration of Genetics' patent "following the district court's final decision does not strip our court of jurisdiction over the present appeal." 

Section 156 extension applies to the entire patent: The panel likewise affirmed the district court's finding of subject matter jurisdiction, rejecting Novartis's argument regarding the scope of the patent term extension.  Although Section 156(b) limits the effect of the extension, it does not limit the extension to specific claims.  "A patent as a whole is extended even though its effect may be limited to certain of its claims."  Slip Op. at 17 (emphasis added).

No prima facie case of obviousness: To determine whether an interference-in-fact exists, courts apply a two-way validity test, i.e.: whether the claims of one patent invalidate the claims of the other and vice-versa.  Both directions must be established.  In this case, the court focused on whether the claims of Genetics' patent rendered obvious the claims of Novartis's patents. 

Judge Lourie, joined by Judge Plager, concluded that they did not, as the lack of any reason to create a truncated protein that incorporated the 1649-1689 region supported the district court's finding of no prima facie case of obviousness.  Any motivation, they reasoned, would have been in the opposite direction – to create a shorter protein and eliminate more amino acids, not to create a longer protein.  Nor was the mere existence of a cleavage site (a natural point for cutting proteins) sufficient to provide the requisite reason to cut the protein at that point to make the claimed truncated protein.

Judge Dyk disagreed, pointing to cases holding that structural relationships may provide the requisite reason to modify compounds and can give rise to a case of prima facie obviousness.  "[T]he truncated Factor VIII proteins of the Novartis patents are not merely homologs, analogs, or isomers – they are all variants of the exact same protein, exhibiting the exact same procoagulant functions."  Dissent at 5 (emphasis in original). 

The use of post-invention "unexpected results": The majority further supported their conclusion by citing to the unexpected result of the 1649-1689 region binding to vWF.  The problem, however, lay in the lack of appreciation of this role until well after the priority date of Novartis's patents.  Undisuaded, the majority pressed on, holding that such evidence was nonetheless relevant to nonobviousness: "[E]very property of a claimed compound need not be fully recognized as of hte filing date of a patent application to be relevant to nonobviousness."  Slip Op. at 29.  In other words, "evidence of unexpected results may be used to rebut a case of prima facie obviousness even if that evidence was obtained after the patent's filing or issue date."  Id.

Again, Judge Dyk disagreed.  "The majority's finding of nonobviousness is based entirely on hindsight and happenstance, and not on what the inventors knew at the time the Novartis patents were filed.  See 35 U.S.C. § 103(a) (stating that an invention cannot be patented if 'the subject matter as a whole would have been obvious at the time the invention was made')."  Dissent at 10 (emphasis in quotation).  In Judge Dyk's view, the "unexpected properties must either be set forth in the specification or contemporaneously known to the inventors, rather than being discovered long after the fact."  Id. at 12.

Judge Dyk's citation of Section 103 notwithstanding, it seems reasonable to look to post-filing or issuance evidence with respect to at least some secondary indicia of nonobviousness.  Commercial success, for instance, would be difficult to establish if only pre-filing evidence were able to be considered.  But I think he's right on the question of unexpected results.  In my mind, a valid distinction can be drawn between discoveries of unexpected results – which really go to the fundamental question of obviousness – and commercial success, which must necessarily rely on the invention's post-filing success in the marketplace.

Practice note: Infringement defense attorneys writing discovery requests may want to take note of the majority's holding on unexpected results to press for either post-filing/issuance discovery on this point or a stipulation that such evidence will not be relied upon by the patent holder.

  

Patently-O Bits & Bytes by Lawrence Higgins

Patent

No Software Patent When it Merely Implement's Mental Steps

  • The Federal Circuit affirmed the District Court's grant of summary judgment of invalidity of software patent claims asserted in CyberSource v. Retail Decisions. In its Decision, the Federal Circuit explains that a method that can be performed purely mentally is unpatentable under 35 U.S.C. § 101, even if the claim is tied to computer hardware. [Link] This decision cited Bilski, stating that the "application of [only] human intelligence to the solution of practical problems is no more than a claim to a fundamental principle." [Decision]

Italy and Spain launches legal challenge against 25 EU member countries

  • Italy applied to the European Court of Justice (ECJ) asking it to rescind an EU decision taken in March that allowed the 25 countries to press ahead with proposals to create a single mechanism for gaining patent protection across Europe. Italy claims that the agreement is unlawful and will distort competition with the EU. [Link]

100 Best Legal Blogs

  • The ABA is working on their annual list of the 100 best legal blogs and they would like your advice on which blogs to include. If you would like to tell the ABA about your favorite blog or blogs they are accepting Friend-of-the-blawg briefs, which are due no later than 9/9/2011. [Link]

New Blog!

  • The "Bottom-Line Business Blog" deals with intellectual property business issues as they affect the intellectual property owner. The author of the "Bottom-Line Business Blog" is San Diego IP attorney Robert Cogan. [Link]

Patent Jobs:

  • The USPTO has openings for Administrative Patent Judges in several different specialties. [Link]
  • Sigma-Aldrich is seeking 2 patent attorneys, 1 with a background in material science/chemistry and the other with a background in molecular biology. [Link]
  • Squire, Sanders & Dempsey is seeking an experienced patent agent. [Link]
  • Proteostasis is searching for a patent attorney with 5+ years of experience and a chemical or biological background. [Link]
  • Pachira is looking for a principal technology advisor with at least 10 years of experience and an engineering background. [Link]
  • Edwards Angell Palmer & Dodge is seeking an IP associate with 3-4 years of experience and a mechanical engineering background. [Link]
  • Wenderoth, Lind & Ponack is searching for a patent attorney with at least 1 year of experience and a B.S. in chemistry. [Link]

Upcoming Events:

  • The D.C., Northern Virginia and Baltimore Sections of the Institute of Electrical and Electronics Engineers (IEEE) and National Small Business Association (NSBA) will be hosting the upcoming forum on "The Overhaul of U.S. Patent Law on August 29 in Washington D.C. The Forum will offer small-business owners, entrepreneurs, technical professionals and inventors the opportunity to hear from experienced entrepreneurs, investors and experts in the patent system including Paul Michel, Chief Judge (retired) of the U.S. Court of Appeals for the Federal Circuit, Dr. Pinchus Laufer from the U.S. Patent & Trademark Office and other high-level speakers. [Link]
  • Mizzou will be hosting its annual Missouri Technology Expo on September 8th. The event is held as a way of uniting innovators with those who can advance, develop and commercialize technologies. The guest speakers include, Christopher "Kit" Bond, Gregg Scheller, Suzanne Magee and many others. Several investment groups will be on hand, such as The Incubation Factory, DFJ Mercury, Allied Minds and many others. This will be a great event for patent attorneys and many others to network and build business relationships. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Riles, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Predicting Patent Litigation

Patent

Patent litigation is expensive.  As a result, many firms often engage in broad, costly searches in order to avoid suit.  Other firms apply the opposite strategy, ignoring patents entirely. 

In her new paper entitled Predicting Patent Litigation, Professor Colleen Chien addresses this systematic problem by examining the factors that lead patents to be litigated.  Professor Chien focuses not on patents' intrinsic characteristics, which have been previously studied, but rather on characteristics acquired after the patent is born, such as changes of ownership, continued investment in the patent, and citations to the patent. 

The results of her empirical assessment are striking: patents that end up in litigation possess markedly different acquired characteristics from patents that remain unlitigated.  Professor Chien uses these differences to offer a model for assessing which patents are more likely to end up in litigation based on the use of both intrinsic and acquired characteristics.

The complete paper is available here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1911579. 

Recent Scholarship: Do Patents Disclose Useful Information?

Patent

By Jason Rantanen

There is a significant body of recent scholarly literature questioning whether patents are effective at disclosing technological information about new inventions.  This debate is important because one of the principal justifications for the patent system – especially as viewed by the courts – is that it encourages inventors to disclose the technological underpinnings of their inventions through the incentive of a patent.  Criticisms of the disclosure function of patents generally fall into two categories: arguments that patents are not effective mechanisms for conveying technical information and arguments that follow-on inventors do not read patents for their technical content.

In her recent article Do Patents Disclose Useful Information?, Lisa Larrimore Ouellette tackles this issue head-on, offering empirical support for the position that patents do convey useful information.  Ouellette, herself a former nanotech scientist, provides the results of a survey conducted of nanotechnology researchers that suggests that, at least in that industry, researchers look to patents for their technical teachings, and that they believe that patents provide useful information that is not available elsewhere – with one notable exception, the problem of reproducibility.  Based on these findings, Ouellete argues that we do not grant patents because of disclosure; rather, we require disclosure because we grant patents.

The complete paper is available on ssrn: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1762793.   

Recent Scholarship: Did Phillips Change Anything?

Patent

By Jason Rantanen

In a recent post discussing Retractable Technologies v. Becton, Dickinson and Company, Dennis commented that the court continues to struggle with claim construction – a seemingly surprising observation given that the Federal Circuit "clarified" its claim construction jurisprudence just over six years ago in Phillips v. AWH Corp. 

A new study by R. Polk Wagner and Lee Petherbridge confirms what many suspected: that Phillips did not lead to a new world of simple, straightforward, and predictable claim construction.  In Did Phillips Change Anything?: Empirical Analysis of the Federal Circuit’s Claim Construction Jurisprudence, Wagner and Petherbridge report the results of an empirical study that indicates that the court has made little jurisprudential progress since Phillips.  More importantly, they suggest, the same split in judicial methodological approach to claim construction that forced the Phillips opinion survived the court’s decision and likely still persists.  These findings and others lead them to their normative conclusion: that "Phillips stands forth as an unfortunate example of poor decision-making by the court, and one that negatively impacts its overall role in the patent system." Wagner and Petherbridge, abstract.

The paper is forthcoming in Intellectual Property and the Common Law (Cambridge U. Press, 2012, S. Balganesh, ed.), and a copy of the draft is available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1909028.

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Is the color red functional for shoe outsoles?

  • Judge Victor Marrero recently decided the famous Louboutin red outsole trademark case and decided that the color red is functional for shoe soles. Lanham 2(e) (5) states that "no trademark…shall be refused registration…unless it– comprises any matter that, as a whole, is functional." This was a difficult case to decide, counsel for both sides made great arguments. I think the Judge had a difficult job, and basically looked at the impact the case would have on trademark law and the market. Judge Marrero stated "if Louboutin owns Chinese Red for the outsole of that another designer high fashion women's shoes, another designer can just as well stake out a claim for exclusive use of another shade of red or even Louboutin's color, for the insole…" Judge Marrero seems to think that the flood gates would open and individuals would want to trademark a color for all types and aspects of shoes. In theory Judge Marrero is 100% correct, however, I am not sure if I agree with Judge Marrero since the trademark was granted in 2008 and I have not seen any other shoe maker using colored outsoles. I am sure Louboutin will appeal the decision to cancel the red outsole trademark if the decision is finalized on August 17, 2011. [Opinion]

Mark Cuban—My Suggestion on Patent Law

  • Mark Cuban is the outspoken owner of the NBA champion Dallas Mavericks and he wanted to express his view of the patent system. Mark suggests that the solution to the patent system is to end all software patents and all process patents. He believes that software has enough protection because it is copyrightable and process patents have no purpose at all. Some benefits of eliminating process and software patents that Mark proposes are: reducing court room costs, improving the efficiency of the Patent Office, ending the current patent arms race, and creating jobs. [Link]

Will Gene Patents Impede Whole Genome Sequencing?

  • Professor Chris Holman of UMKC law school and Holman's Biotech IP Blog is in the process of finalizing an article entitled "Will Gene Patents Impede Whole Genome Sequencing?: Deconstructing the Myth That 20% of the Human Genome Is Patented". In the article Professor Holman points out that many people believe that over 20% of the genome is patented and that these patents preclude researchers from studying or even looking at the patented genes. However, Holman calls this a misperception and there is no reason to believe that 20% of human genes are off-limits. Holman states that a vast majority of human gene patents were drafted in a manner that would not encompass whole genome sequencing. [Link]

Patent Jobs:

  • Gifford, Krass, Anderson, Sprinkle & Citkowski is seeking a partner for its Ann Arbor, MI office. [Link]
  • Morris & Kamlay is seeking a patent attorney with a technology/science background to work in their Washington, D.C. office. [Link]
  • Rutan & Tucker is searching for 2 patent agents with 2-4 years of experience and a science background. [Link]
  • The American Intellectual Property Law Association (AIPLA) is seeking an individual to fill its Deputy Executive Director -International & Regulatory position. [Link]
  • Kraft Foods is searching for a patent attorney with a minimum 5 years of experience. [Link]
  • Los Alamos National Security is seeking a patent attorney with a minimum of 8 years of experience. [Link]

Upcoming Events:

  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Peripheral Disclosure

Patent,

By Jason Rantanen

This week I will be attending the Intellectual Property Scholars Conference, where I will be enjoying many other IP scholars' work, some of which I will discuss in subsequent posts, and presenting my own work in progress entitled Peripheral Disclosure.  In this Essay, I argue that that the disclosure function of patents has been greatly undervalued, not because patents succeed at forcing inventors to disclose useful information about their inventions in the patent document, but because patents free inventors to voluntarily share information about their inventions in forms other than the patent itself while retaining the ability to monetize their inventions.  

The abstract is below.  For those who are interested, a copy of the paper is available on SSRN here (it's currently a relatively short piece).  As this project is very much a work in progress, all comments are appreciated.

Peripheral Disclosure

The requirement that inventors disclose their inventions in return for a patent is one of the primary justifications for the patent system. Yet that justification has been subject to substantial criticism, and with good reason. Conventional disclosure scholarship focuses on inventor’s disclosure within the patent itself, a document that often fails to provide meaningful information to others. As a result, conventional disclosure theory has largely been relegated to the category of a straw man that scholars address perfunctorily when criticizing the patent system.

This Essay rejects the idea that patents serve little to no disclosure function, not by demonstrating that patents themselves convey useful information, but by pointing to other information exchanges that would not occur but for the existence of a patent system, a concept I call "peripheral disclosure." This information plays a critical role in encouraging prospective technological invention. In essence, I argue that the greatest benefit of patents is not in the information they contain, but rather in the numerous peripheral disclosures they permit, from scientific papers about new inventions to marketing materials containing technical content to the informational benefits of self-disclosing inventions. Without patents, none of these disclosures – all of which may provide crucial information to future inventors – would be possible.

Update: DePaul law student Daniel Rogna will be live-blogging IPSC at http://ebookisms.com/category/ipsc/. This is a terrific conference to follow, as it is frequently a forum where  significant new scholarship is revealed, such as last year's Lemley, Cotropia, Sampat piece on applicant submitted prior art.

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

Google and the smartphone war!

  • Google is upset with Microsoft, Oracle, and Apple in respect to the Nortel and Novell patent purchases. Google is claiming that the companies listed above and some other companies are trying to make it more expensive for phone manufactures to license Android phones. Google claims that these companies are seeking a $15 dollar licensing fee for every Android device. With more than 550,000 Android devices activated every day; these companies receive millions of dollars in licensing fees on a daily basis. Google states that these companies do not want to compete, by building new features, but instead fight through patent litigation. [Link]

The USPTO wants your input!

  • If the Leahy-Smith Act is enacted, the USPTO will need to undertake a series of rulemakings to implement the Act. Because several provisions of the Act require implementation within a period of one year from enactment, expeditious rulemaking proceedings will be required. Given this tight time frame, preliminary input from our stakeholders and the public on implementation of the key provisions would facilitate this process even before the legislation has been enacted. The USPTO has posted their views of the Act, and would like input on the following topic areas in the Act; Patents, BPAI, Fees and Budgetary Issues, Congressionally-Directed Studies and Reports, and Miscellaneous. [Link]

Is re-examination unfair?

  • Former Senator Birch Bayh recently wrote an article (and a letter to Kappos) discussing his concerns with the re-examination process. Senator Bayh co-authored the U.S. Patent and Trademark Laws Act (Bayh-Dole Act) that was enacted by congress in 1990. Senator Bayh is concerned about large companies using the re-examination process as an unfounded tactic to attack smaller companies. Senator Bayh stated that "when Senator Bob Dole and I joined to pass ground-breaking legislation on patents, the U.S. Patent and Trademark Laws Act, we never intended for it to allow malicious attacks on patents or to create an incredibly uneven playing field for small inventors." Senator Bayh concern is particularly directed to the Lockwood case, in which Lockwood sued a law firm because he felt like they requested a sham re-examination. The court ruled that, the federal patent law preempted any action in state courts. [Link]
    [Kappos Reply]
    [Case summary]

Patent Jobs:

  • Panduit is seeking a patent attorney with 2 years of experience and a background in electrical engineering. [Link]
  • Gibson & Dernier is seeking a patent associate to work at their Woodbridge, New Jersey office. [Link]
  • Choate, Hall & Stewart is looking for an attorney or patent agent with an engineering background and 2 years of experience. [Link]
  • Sandia National Laboratories is searching for a patent & licensing attorney with 3-7 years of experience. [Link]
  • Monsanto is seeking an assistant general counsel with 3 years of experience and a background in the life sciences. [Link]
  • Verenium is searching for a patent agent with a background in life sciences and at least 5 years of experience. [Link]
  • Amin Talati is seeking a patent attorney with 10+ years of experience and a background in the life sciences. [Link]
  • The Marbury Law Group is searching for a patent attorney with an electrical background and 2-8 years of experience. [Link]
  • Qualcomm is seeking a patent research librarian with a MLS and 3 years of experience. [Link]

Upcoming Events:

  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Scholarship Roundup: Crouch and Merges, Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making

Patent

By Jason Rantanen

Earlier this week I mentioned a recent article by Dennis Crouch and Robert P. Merges, entitled Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making, 25 Berkeley Tech. L.J. 1673 (2010), as proposing that patent litigation might be streamlined by deciding cheaper and easier issues early in the litigation process.

In the article, Professors Crouch and Merges suggest that the best way to proceed post-Bilski is not to attempt to cut through its complexity, but rather to avoid it.  They propose this be done by reordering litigation so that claim validity is first tested against one of the less controversial and complex requirements for patentability before reaching the complex issue of subject matter patentability – in essence, applying a "chain theory" of patentability, where PTO and courtroom analysis should start with the easiest and cheapest links to test and terminate once a patent is held invalid.

A full copy of the article can be obtained here:  Download Crouch and Merges – Post Bilski Ordering.

 

Eon-Net v. Flagstar Bancorp: Exceptional Case after Remand

Patent, , , ,

By Jason Rantanen

Eon-Net LP v. Flagstar Bancorp (Fed. Cir. 2011) Download 09-1308
Panel: Lourie (author), Mayer and O'Malley

This decision is an important opinion in the area of litigation sanctions entered against a patentee, and should be read in conjunction with two cases issued earlier this year, iLor v. Google, 631 F.3d 1372 (Fed. Cir. 2011), and Old Reliable v. Cornell, 635 F.3d 539 (Fed. Cir. 2011).  Patently-O commentary on those cases can be found here and here.

Background
Eon-Net is a patent holding company formed to enforce the three patents in suit, which it did with vigor.  While most of its lawsuits resulted in early settlements or dismissals, Eon-Net's suit against Flagstar took a different turn.  The district court initially entered summary judgment of non-infringement on the sua sponte ground "that the written description limited the claims to processing information originating from a hard copy document and Eon-Net's position that the claims covered the processing of information entered on a website was baseless," and awarded Rule 11 sanctions.  Slip Op. at 7.  However, that decision was vacated by the Federal Circuit because Eon-Net had not been given an opportunity to respond, and thus "it was impossible to determine if Eon-Net's claim construction and infringement positions were without merit."  Id. at 8.

On remand, the case was reassigned to a new judge and the parties engaged in the claim construction process, after which the court again limited the disputed elements to information originating from a hard copy document.  Eon-Net stipulated to non-infringement.  Upon motion by Flagstar, the district court found the case exceptional under 35 U.S.C. 285 and in violation of Rule 11 of the Federal Rules of Civil Procedure. On appeal, the CAFC first affirmed the district court's claim construction before turning to the exceptional case finding.

Many Varieties of Misconduct Can Support an Exceptional Case Finding
Before engaging in analysis of the specific bases for the district court's exceptional case finding, the CAFC first noted that many varieties of misconduct can support an exceptional case finding under 35 U.S.C. § 285: lodging frivolous filings, engaging in vexatious or unjustified litigation, and litigation misconduct and unprofessional behavior.  The court reiterated, however, that absent litigation misconduct or misconduct in securing the patent, "sanctions under § 285 may be imposed against the patentee only if both (1) the patentee brought the litigation in bad faith; and (2) the litigation is objectively baseless."  Slip Op. at 17.

Eon-Net Filed Objectively Baseless Litigation in Bad Faith
Affirming the district court's exceptional case finding, the Federal Circuit agreed that this lawsuit was objectively baseless, filed in bad faith and for an improper purpose.  After distinguishing iLor v. Google, in which the CAFC also addressed the issue of whether a claim construction was objectively baseless, the court turned to the question of whether Eon-Net had filed the lawsuit in bad faith and for an improper purpose, concluding that it had:

In particular, the district court found that Eon-Net’s case against Flagstar had “indicia of extortion” because it was part of Eon-Net’s history of filing nearly identical patent infringement complaints against a plethora of diverse defendants, where Eon-Net followed each filing with a demand for a quick settlement at a price far lower than the cost to defend the litigation.

Slip Op. at 22.  This strategy of exploiting the high cost to defend complex patent litigation in order to extract nuisance value settlements constituted bad faith.  The court pointed to Eon-Net's pattern of filing complaints, then demanding quick settlements at a price far lower than the cost of litigation.  Parties must either expend significant resources to defend against the suit – as Flagstar did in this case – or give in to the nuissance settlement demand.  FIling such a meritless lawsuit also is also a waste of judicial resources, as it "unnecessarily require[s] the district court to engage in excessive claim construction analysis before it is able to see the lack of merit of the patentee's infringement allegations."  Slip Op. at 23. 

Of course, patentees should be able to enforce their patent rights or offer licensing terms.  Nevertheless, "the appetite for licensing revenue cannot overpower a litigant’s and its counsel’s obligation to file cases reasonably based in law and fact and to litigate those cases in good faith."  Slip Op. at 24.

Comment: although the CAFC affirmed the district court's finding that Eon-Net had acted with an improper purpose, it did not suggest that that requirement should be grafted onto the "bad faith" element.

The CAFC also affirmed the district court's finding that Eon-Net and Zimmerman had engaged in litigation misconduct and its imposition of Rule 11 sanctions.

Joint Appendix Practice

Patent

By Jason Rantanen

ClearValue, Inc. v. Pearl River Polymers, Inc. (Fed. Cir. 2011) (nonprecedential order) Download 2011-1078.8-1-11.1

The preparation of joint appendices in connection with Federal Circuit appeals is an instance where rules and practices often collide.  Technically, parties may only include the specific record pages actually referenced in the parties' briefs.  See Federal Circuit Rule 30(a)(2)(B).  With few exceptions, no additional context pages are permitted by the rules.  For example, the joint appendix rules technically preclude the addition of the cover page of motions that contain pages being cited.  Prior art references may not be included in their entirety – only the specific pages that are referenced – unless they are a patent.  And it would be a violation of the rules to include the page before or after a cited page of a textbook or technical manual.  The main exception relates to "transcript pages," for which the rules encourage parties submit sufficient surrounding pages to provide context for a referenced excerpt.  In addition, the court's rules prohibit "indiscrininate referencing in briefs to blocks of record pages," so parties may not include large quantities of the record via broad citation.  FCR 30(a)(2)(C).

In reality, appellants and appelles sometimes disregard these strict rules, and instead make some attempt to provide enough context so that cited materials are meaningful to the court.  Parties risk incurring the court's wrath should they go too far, however, as illustrated by Judge Prost's order in ClearValue.  ClearValue did not simply attempt to provide a few context pages; rather it apparently indiscriminately cited to an entire 195-page training manual, an entire 344-page motion for summary judgment, and an entire 797-page transcript.

This practice violated Federal Circuit Rule 30, and the court ordered ClearValue to reimburse the appellant for its copying costs, to correct its briefs to cite only those pages of the documents that are relevant to the issues it raises, and to prepare a new joint appendix containing only those items cited by the parties in their briefs, along with a few pages before and after the relevant testimony paassages for context. 

While I agree with the court's response in this particular circumstance, given the quantity of likely unnecessary material that ClearValue required be included in the appendix, the court's opinion highlights the jumbled nature of the joint appendix rule.  For some materials (patents and testimony), context is allowable; for everything else, it is not.  Unless there is a good reason to draw this line, perhaps the rule should be revised to apply equally to all materials included in the appendix. 

Thanks to Hal Wegner for pointing out this nonprecedential order in his email newsletter.

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Patent Jobs:

  • Roberts Mlotkowski Safran & Cole is seeking a patent attorney with 2-4 years of experience and a degree in electrical engineering. [Link]
  • Skiermont Puckett is searching for one or more associate attorneys with 3 or more years of patent litigation experience. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for a patent attorney with 2-4 years of experience and a chemical background. [Link]
  • Wolf Greenfield is seeking a patent agent or technology specialist who has experience working as a patent examiner in the Biotechnology field. [Link]
  • Greenberg Traurig is searching for a patent agent with 1-3 years of experience. [Link]
  • Wilen Group is looking for an in-house patent attorney with an engineering background. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 2-5 years of experience. [Link]
  • Lee & Hayes is searching for patent attorneys with at least 3 years of experience. [Link]
  • Maginot, Moore & Beck is looking for a patent attorney with 1-5 years of experience and a background in electrical engineering. [Link]
  • The Webb Law Firm is seeking associates with a background in metallurgical engineering. [Link]
  • Thompson Hine is searching for a patent attorney with 2-3 years of experience. [Link]
  • King & Spalding is looking for a patent agent with 2-4 years of experience and a background in engineering. [Link]
  • Aspen Aerogels is seeking a patent agent/IP analyst with 5+ years of experience. [Link]
  • Myriad Genetics is seeking a patent attorney with 2-5 years of experience and a background in molecular biology. [Link]