All posts by Jonathan Hummel

Patently-O Bits & Bytes by Lawrence Higgins

Jason Rantanen’s Patently-O post cited by District Court

  • In Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 2011 WL 703612 (M.D.Pa. Feb 18, 2011), the district court cited Jason Rantanen’s Patently-O post discussing the Federal Circuit opinion in that case. [Link]The citation was support for the argument that the Federal Circuit decision is controversial and has some likelihood of being re-heard en banc.  The district court favorably noted the “over 100” comments that had been added to the post.

Mary Wong named Franklin Pierce Center for Intellectual Property Director

  • The Franklin Pierce Center for IP was formed after the Franklin Pierce Law Center and the University of New Hampshire (UNH) decided to unite. Wong has been with UNH since 2005 and is currently a professor and the Chair of the Intellectual Property Graduate Programs. Wong’s research interest focuses mainly on the international intellectual property rights framework. [Link]

AT&T and Sony Ericsson sued over expired patent

  • Romek Figa is suing AT&T and Sony Ericcson over a patent issued to him in 1990 and that expired on May 12, 2008. The patent at issue is patent # 4,924,496, which essentially claims a caller-id device. Figa contends certain Sony Ericcson mobile phones that were sold through AT&T infringed patent 496. In the complaint Figa asserts that prior to the expiration of the patent at issue he notified Sony and AT&T that they were infringing patent 496. Thereafter, Figa and the parties were in negotiations about licensing the patent, but no agreement was ever reached. [Link]

Article One hired to help find prior art that will invalidate the patents in the Interval Licensing lawsuit

  • Article One Partners is a company that makes a profit by using crowdsourcing to try to find prior art to invalidate patents that are at issue in patent infringement lawsuits. Article One will pay researchers money, if they find prior art used to help invalidate a patent. According to Article One Partners CEO Cheryl Milone, multiple stakeholders are sponsoring a project to try to find prior art that would invalidate Interval Licensing’s patents. [Link]

New Patent Blog

  • is a blog about patent reexamination, reissue, opposition and related patent procedures. will include the interplay between ex parte prosecution, reexamination, litigation, and appeals.  It is intended to provide useful content for litigators, prosecutors, and anyone interested in patent law.  The blog is written by Timothy Bianchi a patent attorney with 17 years experience in patent law.

Patent Jobs:

  • Synaptics is searching for an IP Engineer for their Santa Clara location. [Link]
  • DuPont is looking for an experienced Patent Agent with 3-5 years experience for their Delaware location. [Link]
  • International IP Law Group is looking for a Patent Engineer/Agent with 2-3 years technical experience to work in their Houston Office. [Link]
  • Fiala & Weaver is searching for Patent Attorneys/Agents to work in their D.C Office or to work remotely. [Link]

Upcoming Events:

  • The Wake Forest Journal of Business and Intellectual Property Law will host its Spring Symposium on March 25th. The Symposium will discuss “Creative Capital: Intellectual Property Creation and Venture Capital.” The Keynote Speaker is Bob Young CEO and Founder of; other speakers include Michael Mireles, Therese Maynard, and Daniel Egger. [Link]
  • The Columbus School of Law will host the Dean William Callyhan Robinson Intellectual Property Lecture Series on March 29th. The lecture will be delivered by Jeffrey Lefstin, with an introduction by Judge Alvin Schall. [Link]
  • The University of Dayton, School of Law will host a Symposium Series on Current Issues in Intellectual Property Law on March 31st. The guest speaker will be Scott Kief of The George Washington University Law School. [Link]

Patently-O Bits & Bytes by Lawrence Higgins

HigginsFalse Marking Statute Found Unconstitutional

  • The Northern District of Ohio has found that the false marking statute (35 USC 292) is unconstitutional. [Link] Judge Polster applied the Morrison sufficient control analysis, and held the false marking statute invalid because the government lacks sufficient control to enable the President to "take Care that the Laws be faithfully executed. This case will surely be appealed to the CAFC and maybe even the Supreme Court. [Link] Already on appeal to the Federal Circuit is FLFMC, LLC v. Wham-O. In that case, Wham-O has argued that the statute is unconstitutional.

Motorola sues TiVo for patent infringement

  • Motorola contends that TiVo is infringing on patents that they acquired when they bought Imedia Corporation that are related to digital video recorders (DVR's). Motorola claims that the Imdeia Patents were filed in 1995 while; TiVo filed Patents were filed in 1998. The patents that Motorola obtained from Imedia are patent #'s 5,949,948, 6,304,714, and 6,356,708. Motorola asserts that the TiVo patent #'s 6,233,389 and 7,529,465 claim the same technology as their patents. [Link]

Is the patent backlog decreasing?

  • USPTO Commissioner for Patents Bob Stoll recently reported that the total backlog awaiting first office action by examiners decreased in February to 718,857 from 721,831 in January. Stoll also noted that there is a decline in the first action pendency time to an average of 24.2 months for January 2011 from 24.6 months in December 2010. Currently the USPTO has received over 11,000 more patents as compared to this time last year. [Link]

Sony Playstation 3 consoles seized after patent infringement suit

  • LG has won a preliminary injunction in Europe against Sony in a patent infringement suit. [Link]The injunction states that no shipments of the Playstation 3 can be shipped into Europe for at least 10 days. Also LG has filed a similar request with the US International Trade Commission, seeking to bar import of the Playstation 3. The complaint to the USITC alleges that Sony infringed at least one or more claims in US patent #'s 7,701,835, 7,577,080, 7,619,961 and 7,756,398 relating to the playback of Blue-ray Discs. [Link]

Patent Jobs:

  • Halcyon Molecular is seeking an IP strategist for their Silicon Valley location. [Link]
  • Life Technologies is looking for a Patent Attorney with 4-8 years experience and an EE or physics background. [Link]
  • McGinn IP Law Group is seeking a Patent Attorney with a BSEE. [Link]
  • ST-Ericsson is looking for an IP Attorney with more than 7 years experience to work at their Santa Clara location. [Link]

Upcoming Events:

  • Northwestern Journal of Technology and Intellectual Property will hold its 6th annual Symposium on Friday March 4th from 9am-5pm. The Symposium will discuss "The Economics of Intellectual Property and Technology," the keynote speaker will be Michael Fricklas. [Link] (Free Event, however CLE credit available for $200)
  • Berkeley Center for Law and Technology will hold an event on March 10th entitled, "Beyond Piracy: Managing Patent Risks in the New China." Presenters include Sharon Barner, Robert Merges, and Robert Barr to name a few. [Link]
  • The USPTO and USWCC will hold a Women's Entrepreneurship Symposium on March 11th. The event will be held at the USPTO headquarters in Alexandria, Va. The keynote speaker will be U.S. Senator Mary Landrieu will be the keynote speaker. [Link]
  • The George Washington University Law School will host an Intellectual Property Panel Symposium on March 18th. Guest panelists are Bruce Sewell, Mike Jacobson, John Whealan and Chief Judge Radar will be the keynote speaker. [Link]

Patently-O Bits & Bytes by Lawrence Higgins

Sharon Barner returns to the practice of law

  • Former Deputy Director of the USTPO has announced her return to the Foley & Lardner law firm in Chicago. Barner was chair of the Intellectual Property Department at Foley & Lardner before she left to work for the USPTO. While at the USPTO Barner was the driving force behind the 2010-2015 USPTO's Strategic Plan. [Link]

Carlson Marketing is suing MillerCoors

  • Carlson Marketing Worldwide is suing MillerCoors over its "Miller High Life Extras Loyalty Program." Carlson owns patent [6,039,244] which covers a "Method of building up a data bank containing customer data and/or for the organization of." At issue in the suit is the 1st claim of the patent which claims, "a method for motivating a customer to purchase a product or a service and for rewarding the customer for repeat purchases thereof, the method comprising the steps of…" [Link] If Carlson wins this suit they could potentially file suit against many more large companies for patent infringement.

Can Patent Attorneys and Agents use Groupon when seeking new clients?

  • According to the Rule 5.4(a) of the ABA's Model Rules of Professional Conduct, "a lawyer or law firm shall not share legal fees with a nonlawyer. Groupon makes money by keeping approximately half the money the person pays for the coupon. So maybe Rule 5.4(a) would rule out patent attorneys in some states, but what about patent agents? The state of Missouri does allow lawyers to use Groupon as a way of obtaining new clients. While other places like North Carolina does not allow lawyers to use Groupon [Link]. The question I pose is, "Would the USPTO allow agents and attorneys to use Groupon?"

European Parliament voted for a single patent law system

  • European member states will soon operate under a single patent law system rather than rely on their individual patent law systems. While the single patent law system is voluntary, most European states joined the system. There appear to be at least 2 holdouts as Italy and Spain have decided not to join at this time. [Link] The benefits of this system over the current state of affairs will not be understood until the legislation is developed.

Patent Jobs:

  • King & Spalding is seeking a patent attorney with 2 years experience and a engineering background to work in its Houston or Atlanta office. [Link]
  • Rothwell, Figg, Ernst & Manbeck is searching for a patent attorney with 3-6 years experience. To work in its DC office. [Link]
  • NXP is seeking an IP Monetization Specialist with an electrical engineering background to work in their San Jose location. [Link]
  • Sheldon Mark & Anderson is in search of a patent attorney with 2-5 years experience in IP litigation. [Link]
  • Klarquist Sparkman is seeking a patent associate or agent with 1-4 years experience. [Link]

Upcoming Events:

  • Northwestern Journal of Technology and Intellectual Property will hold its 6th Annual Symposium entitled "The Economics of Intellectual Property and Technology on March 4th in Chicago. The keynote speaker is Michael Fricklas, General Counsel of Viacom. [Link]
  • The Toledo Intellectual Property Law Association (TIPLA) will be hosting its 2011 Spring Seminar, entitled "A Comprehensive Approach to Protecting Designs: The Overlap of Patent Design, Trade Dress, and Copyright Protection", on March 9th at the University of Toledo College of Law. Guest speakers include: Theresa Orr, Katrina Quicker, Christopher Weston, and William Bryner. [Link]
  • The Columbus School of law will host its Dean William Robinson Intellectual Property Law Lecture Series on March 29. The series lecture will be presented by Professor Jeffrey Lefstin. [Link]
  • The University of Houston Law Center's Institute for Intellectual Property & Information Law will host a Symposium on June 4th in Sante Fe, New Mexico. The Symposium will focus on "Trademark: Today and Tomorrow". Presenters include:  Ann Bartow, Barton Beebe, Greg Lastowka, Mark McKenna, and Rebecca Tushnet. [Link]

Contact with leads for future Bits and Bytes.

Patently-O Bits and Bytes by Dennis Crouch

By Dennis Crouch

  • Prioritized Examination: Yesterday, I wrote about the PTO’s implementation of a prioritized examination program (Track 1). Although the notice published by the PTO indicated that the Office was proceeding “with immediate implementation,” the notice also refers to an “implementation date.” I contacted PTO officials for some clarification and can report that Track 1 is not yet available; that the implementation date has not been set; but that the expectation is that the program will be implemented in May or June of this year.
  • Story Suggestions: My student (and future patent attorney) Lawrence Higgins has been writing these bits and bytes posts lately. He’s planning to write about interesting cases, bits of patent law news, moves made by patent law thought leaders, upcoming events, jobs available, etc. If you have topic suggestions, e-mail him:
  • End Patents?: Eric Johnson, Professor of Law at UND has released a draft of his article: Intellectual Property’s Great Fallacy. In the article, Prof. Johnson attempts to explain why, except for some specific circumstances, patents and copyrights are completely unnecessary. “Using recent advances in behavioral economics, psychology, and business-management studies, it is now possible to show that there are natural and intrinsic motivations that will cause technology and the arts to flourish even in the absence of externally supplied rewards, such as copyrights and patents.”

Patently-O Bits and Bytes*

Upcoming Events:

  • 2011 AIPLA Mid-Winter Institute will be held in Orlando from February 2-5. [Link]
  • Duke University School of Law will hold its Annual Hot Topics in Intellectual Property Symposium on February 11th. Speakers include Margo Bagley, Hans Sauer (BIO), and John Conley. [Link]
  • The Missouri Law Review is hosting a Symposium on February 25th in Columbia Missouri about the patent jurisprudence of the Court of Appeals for the Federal Circuit. We’ll have a number of great speakers, including USPTO Director David Kappos. [Link] (Free event and free CLE).
  • Northwestern Journal of Technology and Intellectual Property will hold its annual Symposium on Friday March 4th from 9:00am-4:30pm. [Link] (Free Event, however CLE credit available for $200)
  • IBC Legal Conferences is holding its annual Biotech & Pharmaceutical Patenting Conference February 16-17 in Munich, Germany. Patently-O readers get a discount of 10% by using this code: KW8113PTLL. [Link]

Congressional Action on Patent Reform

  • Senator Leahy has posted a statement on his website discussing the reintroduction of the Patent Reform Act of 2011 [Link]. The Act focuses on 3 main issues:
    • Implementing a first-to-file system.
    • Constraints on infringement damage awards.
    • Rules intended to speed the application process for inventors.


  • On January 25th the PTO’s Director David Kappos, addressed a House subcommittee and urged Congress to pass the President’s FY 2011 Budget Request, which would allow PTO to spend all the fees they collect and also impose a 15% surcharge on patent fees.

Kodak shares tumble

  • Kodak filed complaints with the US International Trade Commission claiming Apple and Rim smartphone’s infringed on their patent. The International Trade Commission Judge held that the patent wasn’t infringed and held the suit invalid. As a result Kodak shares slumped over 25%.  Kodak has lost most of its business share over the years and its patent rights have saved its business model — up to now. The final decision is expected sometime in May.

Twitter sued for Patent Infringement

  • Twitter has been accused of violating patent # 6,408,309, which claims a method of creating an interactive virtual community of famous people.

Patent Jobs:

  • Allergan, a multi-specialty health care company, is seeking an experienced patent agent. [Link]
  • Lee & Hayes, a nationally known intellectual property (IP) law firm, is seeking a lateral experienced patent attorney. [Link]
  • Morgan Lewis, an international law firm, is seeking a Junior/Mid-Level associate for its Philadelphia office. [Link]
  • Ice Miller is seeking a patent attorney with an engineering background and 2-4 years of experience. [Link]

* Lawrence Higgins, a 2L here at Mizzou and future patent attorney will be writing these bits and bytes for the next couple of month. — DC

Patently-O Bits and Bytes

Patently-O Bits and Bytes

Patently-O Bits and Bytes

  • USPTO Technical Training for Examiners: The USPTO is looking for folks to provide free scientific & technical training to examiners. The program does not allow guest lecturers to discuss their own pending applications or provide advice on the patentability of any particular claims. [Participate Here]
  • Top-25: IP Reporter Joe Mullin and his crew have created a list of "The 25 Most Influential People in IP." The list includes Professors Lemley & Duffy; PTO Director Kappos; Judges Rader, Michel, & Ward; Justice Kennedy, Senator Leahy; Bob Armitage (Lilly); John Amster (RPX, son of Mort Amster); and Chip Lutton (Apple).
  • London Conference: International Patent Litigation 2010 — IBC Legal is holding a conference on International Patent Litigation 2010 in London on December 6th-7th. Use code KW8093PO to get a 10% discount.
  • Reexaminations: In 1998, an anonymous requester filed a request for ex parte reexamination of U.S. Patent No. 5,583,216 owned by Takeda Pharmaceuticals. Earlier this week (and after 12-years in-process) the USPTO issued a reexamination certificate confirming that the original claims are patentable. Hal Wegner handled the reexamination for Takeda, including multiple appeals to Federal Court. The average reexamination certificate in FY10 was issued about 2.5 years after the reexamination request was filed.

Patently-O Bits and Bytes

Upcoming Events:

  • Professor Mark Janis of Indiana has put together a really interesting conference titled “Patent Scope Revisited: Merges & Nelson's ‘On the Complex Economics of Patent Scope,’ 20 Years After.”  Sept 23–24 in Bloomington. Speakers include Rob Merges, Don Chisum, Ed Kitch, John Duffy, Jay Kesan, Rochelle Dreyfuss, Kevin Collins, Chris Cotropia, etc. (I will also be speaking at the event and hope to see you there.) [LINK]. (FREE)
  • Catholic University (Columbus School of Law) is presenting a discussion of the “Ethical Ramifications of Therasense” on Sept 27 from 5pm – 6:30pm at the National Press Club.  Speakers include Professors Beth Winston and Megan La Belle from Catholic University along with ITC Chief Judge Paul Lukern, Professor Lisa Dolak (Syracuse), Jim Kulbaski (Oblon) and Ed Polk (Foley) [LINK]. (FREE).
  • Former Chief Judge Michel along with a host of professors and in-house counsel will discuss “Patentable Subject Matter” on Sept 20 9:30am – 12:45pm at GWU in DC. [LINK].
  • San Diego IP Law Association is holding a Discussion of Therasense on Sept 23 from 6pm – 10pm. Speakers include Chris Mammen, Hans Sauer (BIO), Larry Repress, and Fred Hadidi. [Link] ($70–$90).
  • 2010 APLF Annual Meeting is September 29 – October 1 in Chicago. [LINK].
  • IBC Legal has an interesting looking conference in London discussing IP Rights in China on the November 22–23. Patently-O readers should use code KW8070PO for a 10% discount. [Link
  • WAY OUT IN THE FUTURE: On Feb 25, 2011, The Missouri Law Review is hosting a conference that looks at the patent jurisprudence of the Court of Appeals for the Federal Circuit with a special focus on the impact of Chief Judge Michel. It will held right here in Columbia Missouri.

Patent Jobs:

  • Marjama Muldoon Blasiak & Sullivan LLP, a Central New York intellectual property law firm, has immediate openings for a Patent Attorney. [Link]
  • Lee & Hayes, a nationally known intellectual property (IP) law firm, is seeking a lateral experienced patent attorney. [Link]
  • International IP Law Group is seeking an Associate, Of Counsel to prepare and prosecute patent applications relating to complex electrical technology and software. [Link]
  • ResMed (Sydney) is seeking a Qualified US, European or Australian patent attorney with a number of years post registration experience. Experience within biomedical engineering and in-house will be looked upon favourably. [Link]
  • HP seeks a patent attorney. [Link]

New Hampshire Law School:

Franklin Pierce Law Center was founded by patent attorneys back in 1973.  For a time the law school was the clear national leader in the training of future patent attorneys. In the past 15–years, many law schools have added patent-focused faculty, but Franklin Pierce is still one of only a handful of schools that focuses on IP law training rather than legal theory. This week, the law school announced that it has formally merged with the University of New Hampshire and has become the University of New Hampshire School of Law. At the same time, the school created Franklin Pierce Center for Intellectual Property. Congratulations to my friends at UNH! [Link]

Patently-O Bits and Bytes

If you are a law professor teaching a general course on intellectual property, you might consider a cheap text-book alternative:

  • Franklin Pierce Professor Tom Field freely gives-away PDF versions of his 470 page book titled Fundamentals of Intellectual Property.
  • Lewis & Clark Professors Joe Miller and Lydia Loren have started their own publishing company and offer their book titled Intellectual Property Cases and Materials for a suggested fee of $30.
  • Students who want a bound-book can take the document to Kinkos with a $20 bill.
  • [This semester, I am teaching Patent Law and have assigned the casebook by Merges & Duffy. Although not cheap, that book has the lowest cost per pound of any on the market.]

Recent Patent Law Jobs:

Some Recent Patent Lawsuits:

  • Allure Home Creation Co. Inc. v. Maytex Mills Inc. (D.Del.) — Patent covers a shower-curtain hook.
  • Simonian v. Mitchell-Vance Labs (E.D.Ill.) — False marking action against maker of “ScarAway” whose product packaging lists an expired patent.
  • AGA Medical Corp. v. W.L. Gore & Associates (D.Minn) – Patent covers a device that can be inserted via a catheter for blocking leakage of an internal body organ.
  • De Beers UK Limited v. Kohls & Adwar Casting (W.D.Mo.) – Design patents cover jewelry.

Patently-O Bits and Bytes

  • Rational Ignorance at the PTO: I received many interesting comments on The Lemley-Cotropia-Sampat article yesterday.  Many of the comments pushed-back against the authors’ conclusions with reasons why applicant-cited art is more-rarely asserted in prior art rejections. Query: Do you have suggestions for going about proving/disproving their conclusion that USPTO patent examiners “effectively ignore” applicant-submitted prior art.
  • Patent Law in Print:
    • Joe Mullin at Corporate Counsel (an ALM Magazine) reports on Patent Attorney Wes Whitmeyer’s patent infringement lawsuits against Brinks Hofer, Dinsmore & Shohl; Benesch Friedlander; Edwards Angell; and WilmerHale. [Link]
    • Susan Pan and Natalya Dvorson have a useful article in IPToday on how to obtain refunds from the USPTO. [Link]
    • Abigail Rubenstein of Law360 has a brief article about the en banc request in Telcordia Tech v. Cisco. In that case, Cisco is asking the Federal Circuit hold that Judges (rather than Juries) should decide whether patent claims are invalid as indefinite.  Microsoft and GM filed a joint brief in support of the petition. [Link]
    • Sharon Oriel has published a short article in Intellectual Asset Managament (IAM) magazine describing “a three-step process to persuade a company that it can prosper and grow through investing in intellectual asset management.” [Link]
  • Recent Patent Law Jobs:
    • Amazon is looking for business-minded corporate counsel with at least 5–years of patent prosecution experience and combination of in-house and law firm experience. [Link]
    • Miller Nash law firm is looking for a patent attorney (or attorneys) with 4+ years experience and a focus on medical devices and life-science related software. [Link]

Patently-O Bits and Bytes

e-Office Action:

  • Thirty Percent (30%) of all USPTO patent correspondence is now communicated electronically. Up to three e-mail addresses can be identified for each pending application. Rather than sending paper, applicants receive an e-mail notification of an office communication that can then be accessed via Private PAIR.
  • The e-Office Action system can help streamline docketing. In addition, attorneys receive the communication a few days earlier and in a form that can be easily communicated to their clients.
  • More Info

Blogs to Check-Out:

Recent Patently-O Job Posting:

  • In Seattle, the Miller Nash firm is seeking a medical devices patent attorney with at least four years of IP practice experience. [Link]
  • The DC Area firm McGinn IP (located in Tysons Corner, Virginia) seeks an experienced patent attorney with an electrical engineering background. [Link]
  • The Denver based firm Holland & Hart is seeking a licensing and technology transactional attorneys. Potential to join any of the H&H offices (Denver, Boulder, Salt Lake, Boise). [10+ years Experience][5+ years Experience]
  • Holland & Hart is also seeking an associate for their trademark enforcement practice. Must have outstanding academic record, superior writing and communication skills. [Link]
  • Pfizer is seeking an Assistant General Counsel for Patents to support its Vaccines Research Unit and Center for Integrative Biology and Biotheraputics. [Ph.D. J.D. and 10+ years Experience]
  • The bio/pharma company Gilead Sciences seeks a patent attorney to work with it respiratory therapeutics area in Seattle, Washington. 8+ years IP experience including in-house experience. [Link]
  • Kroger is looking to hire a patent counsel to help develop a corporate patent strategy, oversee Kroger’s patent portfolio and manage liability. [Link]

Patently-O Bits and Bytes

  • Congratulations: The Administration (and its supporters) have successfully lobbied the House of Representatives to allow the PTO to keep $129 million of its funds collected over-budget. Because the CBO had already accounted for that money as general income, the return of the money required a debit from some other expenditure. The source ended up being money that had been over-budgeted for the Census.  See H.r. 5874.  To become law, the bill would also need to pass the Senate. However, at this time, no equivalent bill has been introduced into the Senate.
  • Fee shifting: In the pending case of Netflix v. Media Queue, Netflix has asked the Federal Circuit to revisit the law of 35 USC 285 in terms of when the prevailing party should be awarded attorney’s fees. Netflix argues that the current rule makes it too difficult for defendants to collect Attorney’s fees after prevailing against charges of infringement.  Those interested in the case may want to look at data collected by Professors Michael Meurer and James Bessen in preparation for their 2008 book Patent Failure. [Data available here].
  • Interim Guidelines on Patentable Subject Matter: The USPTO has released a new set of interim guidelines for examination of the Section 101 eligibility of process claims.
  • Revisiting RCE Statistics

Patently-O Bits and Bytes

  • PatentlyO068Todays Posts:
  • New Contributing Author: Jason Rantanen
    • My friend Jason Rantanen has agreed to become a contributing author on Patently-O for the next few months. He’ll be posting case reviews and other notes about once each week.  Jason and I were classmates at the University of Chicago School of Law. Before law school, Jason earned degrees in both Biology (Brown) and History (Brown, Chicago).  He clerked for Judge Bryson on the Federal Circuit and litigated IP disputes at the Munger Tolles firm in San Francisco.  This summer, Jason started on an academic path as a Visiting Scholar at UC Hastings School of Law. He may not want this shared, but Jason is also married to a patent attorney.
    • Posts written by Jason will bear his name.
  • Media Queue v. Netflix:
    • I recently posted on the push by Netflix for a legal shift that would allow successful defendants greater access to recover attorney fees. [Link] Nick Gross, the inventor and patent attorney at the heart of the lawsuit has now posted an article on his blog where he addreses “certain false statements and mischaracterizations raised by Netflix.” [Link] Nick Gross’s post provides an interesting history — especially regarding pre-litigation activities between the companies.

Patently-O Bits and Bytes

I worked with my former firm MBHB on a special Bilksi edition of their newsletter.

  • Snippets can be downloaded here:
  • Topics include:
    • Viewpoints on Life After Bilski v. Kappos 
    • With Bilski Having Come and Gone, It's Time to Get Back to Work 
    • Avoiding Abstract Claims by Broadly Defining the Problem 
    • A Critique of Bilski's Textual Analysis 
    • Questions Surrounding a Shift to an "Abstract Idea" Test
    • Bilski v. Kappos: Effects on Biotechnology Patents

Some New IP Blogs:

Old Stand-by IP Blog:

Patent Law Pro Bono and the Federal Circuit Bar Association

  • The Court of Appeals for the Federal Circuit handles several distinct types of cases.  The largest dollar-value cases typically involve patents.  The veteran and government personnel appeals are usually worth much less.  Many patent litigators have begun handling these lower-value appeals on a pro bono basis.  Professional representation in these cases helps insure that justice is served. In a recent ceremony, Federal Circuit Chief Judge Rader and CAVC Chief Judge Greene honored the volunteers for their service.  Four particular attorneys deserve special praise for their efforts: Ron Smith, Blair Taylor, Dion Messer, and Paul Eaglin (as well as Jim Brookshire of the FCBA).  Others who were recognized at the ceremony include: Mark Abate, Alan Anderson, Michelle Armond, Reynaldo Barcelo, Alyson Barker, Dawn Marie Bey, Elizabeth Brenner-Leifer, Carl Bretscher, William H. Burgess, John Bustamante, Kurt Calia, Mary Calkins, Steve Carlson, Virginia Carron, Yar R.Chaikovsky, Connor Civins, Bradley Coburn, David Cohen, Kristin M. Cooklin, Donald Curry, Steve Daniels, Lauren A. Degnan, Kirk Dorius, John Dragseth, Helen Dutton, Paul Eaglin, Geoffrey Eaton, Brian Edmunds, Sam Ernst, James Erwin, Cecilia Fex, Bob Fuhrer, Anthony Garza, Shane Glynn, Daniel Graham, Joshua Graham, Maximilian Grant, Frederick Hadidi, Thomas Halkowski, Jason Harp, Cathy Harris, Edmund Haughey, Nathan Henderson, Dan Herzfeld, Todd Hettenbach, Christopher Hower, Richard Hung, Christopher Ryan Johnson, Harold Johnson, Lawrence Kass, Lisa Kattan, Rudy Kim, Brian Kramer, Kevin T. Kramer, Deanna Kwong, Brad Lane, Steve Lauff, Lewis E. Leibowitz, Greg Lipper, Christopher Liro, John Livingstone, Christopher Longman, Doug Lumish, Chris Martiniak, Duane Mathiowetz, Aaron Maurer, Scott P. McBride, Scott McCaleb, Michael McCaleb, Ryan McCarthy, Richard McLaren, Dion Messer, John Molenda, Brian Pandya, Chad Pannell, Lee Perla, Matthew Phillips, Janet Phipps Burkhead, Thomas Puppa, George Quillin, Courtland Reichman, Edward Reines, Elizabeth Roesel, Elizabeth Rogers Brannen, Joshua Rothman, Adam Samansky, Jeff Schwartz, Beth Shaw, Chad Shear, William J. Simmons, Michael Sink, John Skenyon, Ronald Smith, Eric Sophir, Robert Stanley, Henry Su, Blair Taylor, Bryan Vogel, Keith Vogt, Daniel Volchok, Steven Warner, Scott C. Weidenfeller, Andrew Woodmansee, Jennifer Wu, and Hunter Yancey.
  • If you are interested in pro bono service, contact Nece Jordan at 


Patently-O Bits and Bytes


Patently-O Bits and Bytes

  • Thank you Sponsors:
  • Speaking of the Job-Board. There are several new listings:
    • Leviton Manufacturing (Long Island, New York) needs to hire a patent agent to manage both US and Foreign prosecution.
    • The International IP firm of Ladas and Parry seeks EE patent prosecutors in Los Angeles as well as IP attorneys with their own books of business.
    • Pfizer seeks an experienced patent attorney to join its small molecule therapeutics team in Groton, Connecticut.
    • In Washington, D.C., the firm of Smith, Grambrell & Russell, LLP is seeking an experienced patent attorney with a mechanical engineering background.
  • Speaking of MBHB.
    • I'm proud to announce that Team USA is champion the 2010 Patent Cup Regatta held this year off the island of Marstrand in Sweden. Team USA included three MBHB partners – Leif Sigmond (captain), Marcus Thymian, and Michael Gannon – along with Derek Minihane of Cochlear. The US team beat-out competing teams from Canada, Brazil, France, Germany, UK, and the EPO. [Link]
  • Patenting Methods of Paying for Patents
    • WhitServe LLC v. Benesch Friedlander Coplan & Aranoff LLP et al., 8-10-cv-01639 (D. Md. 2010). [Zura]

When Can a Digital File be a “Product” under Section 271(g)?

Yangaroo v. Destiny Media Techmap_can_usa.jpg (E.D. Wisc. 2010)

In an interesting trans-national infringement case, Judge Griesbach awarded summary judgment of non-infringement in favor of the accused infringer. The court held that the Canadian-based defendant’s actions did not qualify as infringement under Section 271(g)’s proscription against importation-of-a-product-made-by-a-patented-process.

35 USC 271(g): Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer. . .

The asserted patent claims a particular method of distributing a content file over a network. After a series of steps, recipient terminals are provided with access to the content file. The accused infringer (Destiny) distributes encrypted music files using a method that (arguably) would infringe the patent under 271(a) if it had been performed within the US. The focal-point of the 271(g) dispute here was on whether the digital music files could be considered “products” within the meaning of 271(g).

Some prior cases:

  • Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1371-72 (Fed. Cir. 2003) (271(g) applies only to “physical products” and does not extend to “information” produced by a patented process.).
  • NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (citing Bayer and holding that email packets sent from Canada were not “products . . . [b]ecause the ‘transmission of information,’ like the ‘production of information,’ does not entail the manufacturing of a physical product . . . .”).
  • CNET Networks, Inc. v. Etilize, Inc., 528 F. Supp. 2d 985 (N.D. Cal. 2007) (transmission of electronic catalog of product information could be a “product” within the meaning of 271(g); distinguishing NTP and Bayer as involving “services” and “information” rather than “products” and stored data).
  • Ormco Corp. v. Align Technology, Inc., 609 F. Supp. 2d 1057 (C.D. Cal. 2009) (a three dimensional digital representation of teeth transmitted to recipients in the United States was a product).

Present Decision: In Yangaroo, the court distinguished CNet and Ormco by holding that the distributed music file was not a “product” of the method because the music file was not created by the claimed process.


  • The Defendant (Destiny) did modify the music files during its distribution process by encrypting them. The district court held that the newly encrypted files could not be considered 271(g) products because the asserted patent did not claim encryption.
  • Ted Sabety handled the defense.