Section 292 (False marking): PATracer reports on a district court decision in favor of Target — holding that the retailer is not liable for false marking even if it knowinly sold products that were falsely marked. [LINK]
Divided Infringement: PATracer also reports on an interesting non-infringement decision in favor of DirecTV based on the company’s outsourcing of customer support operations. “DirecTV can not be liable for direct infringement of an asserted claim if the evidence demonstrates that DirecTV neither performs by itself nor directs nor controls a third party’s performance of any one element of the claim.” [LINK]
BTLJ Student Writing Competition. The Berkeley Technology Law Journal is hosting its own writing competition for law student (JD) papers focused on some topic near the intersection of law & technology. $2,000 prize and likely publication in the journal. Deadline is February 26, 2010. [Rules].
Morrison Foerster’s LA Office seeks an experienced patent litigator (3–4 years experience) with a preferred technical expertise in computer science or electrical engineering.
A Middletown Connecticut Firm is looking to hire a patent attorney with an engineering background and at least three years experience.
Ryan Swarts runs the job board. Please feel free to contact him with questions. (ryan.swarts@patentlyo.com).
Patent Damages Handbook: A committee of patent professionals and judges formed at the behest of Chief Judge Michel recently released their “Patent Damages Handbook.” The 34 page handbook is intended as a “resource for judges and lawyers” in understanding the damages phase of patent litigation “under current law.” Download it for free.
Quoted:President Obama to the Forum on Moderninzing Government:
“Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system. This is one of the reasons why the average processing time for a patent is roughly three years.”
The Milwaukee Journal Sentinal asks “is it time to privatize the Patent Office?” If not the whole PTO, the editorial asks why not “privatize most of the Patent Office functions?”
GWU’s IP Speaker Series Continues at 12:00 Noon this Spring:
January 20, Laura Heymann of William & Mary (Naming, Identity, and Trademark Law)
February 3, Michael Ryan of GWU, (Patent Incentives in Brazil)
February 10, Abraham Drassinower of Toronto Law (What’s Wrong with Copying)
February 24, Jonathan Zittrain of Harvard Law (Minds for Sale)
March 24, Mark Janis of Indiana Law (Daniel Webster’s Patent Cases)
Writing Competition: Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition. $4,000 cash will be given to a current US Law Student (including December 2009 graduates) who either attends school in Virginia or is a resident of Virginia. The prize will be awarded to author of the best IP focused law-review-style article. [Link]
Need some help from SPEs: Stanford Law Professor Mark Lemley is working on a project involving an extensive amount of patent prosecution data. He would like to clarify a few issues on patent office practice and could use the help of current or former SPEs. One particular question that he is asking involves the assignment of examination duties within an art unit. I.e., once an application is classified, what is the process of deciding which examiner will handle the case? You can contact him at mlemley@law.stanford.edu.
A University of Missouri student and entrepreneur was recently sued by the North Face for trademark infringement. The student’s company is called “the South Butt.” On the issue of confusion, the South Butt’s attorney indicated that the public knows the “difference between a face and a butt.” [AP] The complaint [Download NorthFaceComplaint] includes allegations of trademark infringement, dilution (which does not require proof of confusion), false designation of origin, contributory trademark infringement, common law trademark infringement, common law unfair competition, and violation of the Missouri anti-dilution statute. I think that SouthButt has a good chance of winning the straight trademark claims based simply on likelihood of confusion. The defense of parody often turns on the judge's sense of humor.
The judge assigned to the South Butt case (Judge Sippel) has presided over several trademark cases in his 12 years on the bench. His most recent case involves a solar panel manufacturer using the name PRG suing another company who had registered the domain name PRG.com and was selling other solar panels on that site. Patterson v. ABS Consulting. The most recent opinion in that case involved the denial of the defendant's motion to dismiss for failure to state a claim.
Google has been ordered to stop scanning French books. The Google Book project has scanned upwards of 10,000,000 books. [NYTIMES]
I just agreed to speak at the Texas IP Symposium two months from now in Austin (Feb 19). [Info will be available soon]
Listen to Kevin Noonan (MBHB & PatentDocs) and Dan Ravicher (PubPat) debate Gene Patenting on NPR’s Science Friday. [Link]
Recent Presumption if Irreparable Harm Cases:
Multiquip Inc. v. Water Mgmt. Sys. LLC, 2009 U.S. Dist. LEXIS 117022 (D.Id December 16, 2009)(in breach of contract case, holding that plaintiffs are given no presumption of irreparable harm in the context of a preliminary injunction)
Apple Inc. v. Psystar Corp., 2009 U.S. Dist. LEXIS 116502 (N.D. Cal. December 15, 2009) (“Except for trademark infringement claims, there is no presumption of irreparable harm with respect to permanent injunctions.”)
BorgWarner, Inc. v. Dorman Prods., 2009 U.S. Dist. LEXIS 115871 (E.D.Mich. December 11, 2009) (in a patent case, finding that the presumption of irreparable harm had not been overcome in the context of a preliminary injunction)
Bushnell, Inc. v. Brunton Co., 2009 U.S. Dist. LEXIS 110612 (D. Kan November 25, 2009)(“The Court is persuaded by the reasoning of those courts which have found that the presumption does not apply to preliminary injunctions in patent cases.”)
See also (cites from Bushnell opinion),
Voile Mfg. Corp., 551 F. Supp.2d at 1306 (eBay eliminated presumption of irreparable harm in preliminary injunction context);
Tiber Labs., LLC v. Hawthorn Pharms., Inc., 527 F. Supp.2d 1373, 1380 (N.D. Ga. 2007) (eBay eliminates presumption of irreparable injury in patent cases, whether raised at preliminary or permanent injunction phase);
Sun Optics, Inc. v. FGX Int'l, Inc., No. 07-137-SLR, 2007 U.S. Dist. LEXIS 56351, 2007 WL 2228569, at *1-3 (D. Del. Aug. 2, 2007) (presumption of irreparable harm in preliminary injunction analysis did not survive eBay);
Torspo Hockey Int'l, Inc. v. Kor Hockey Ltd., 491 F.Supp.2d 871, 881 (D. Minn. 2007) (same);
Chamberlain Group v. Lear Corp., No. 05 C 3449, 2007 U.S. Dist. LEXIS 56351, 2007 WL 1017751, at *5 (N.D. Ill. March 30, 2007) vacated on other grounds, 516 F.3d 1331 (Fed. Cir. 2008) (same);
Canon Inc. v. GCC Int'l Ltd., 450 F.Supp.2d 243, 254 (S.D.N.Y. 2006) (consistent with equitable principles set out in eBay, preliminary injunction movant must demonstrate likelihood of irreparable injury in absence of requested injunction);
z4 Techs., Inc. v. Microsoft Corp., 434 F.Supp.2d 437, 440 (E.D. Tex. 2006) (eBay eliminated irreparable harm presumption in permanent injunction context)).
But see
Christiana Indus. v. Empire Elecs., Inc., 443 F.Supp.2d 870, 884 (E.D. Mich. 2006) (eBay did not eliminate presumption);
Idearc Media Corp. v. Nw Directories, Inc., 623 F. Supp. 2d 1223, 2008 WL 2185334, at *9 (D. Or. 2008) (copyright case).
Professor Lichtman and his students at UCLA reenact Bilski v. Kappos. [Download the MP3]
Jeremy Grushcow discusses “three need-to-know Canadian patent decisions that impact pharma, biotech and generic companies”: [LINK]
Lundbeck v. Ratiopharm (the Canadian Patent Act imposes a duty of candor).
Bayer v. Canada (the government will only list a formulation pharma patent in its patent register (i.e., Orange Book) if the patent claims include limits to “all of the approved medicinal ingredients” in the formulation).
Sanofi-Aventis v. Hospira (a disclaimer of scope may be filed after receipt of a notice of allegation).
Director Kappos discuses the “impact of KSR” on his blog: [LINK]
KSR has unquestionably refocused the obviousness inquiry by reinvigorating the fundamental questions of Graham. Because the Supreme Court clarified that teaching-suggestion-motivation was not the sole test of obviousness, the Graham analysis is not to be carried out in a rigid manner. As a result, some claims that may have been found to be non-obvious before KSR will now correctly be found to be obvious.
Inventors and practitioners will need to take these developments into account when preparing and prosecuting applications. For example, it may be necessary to review a broader cross-section of prior art than was previously necessary, or to consider filing evidence of unexpected results earlier rather than later in the course of prosecution. By being proactive, practitioners will expedite prosecution and avoid unnecessary fees and RCE filings.
New lawsuits against Kappos (in his role as PTO director)
Cephalon France v. Kappos (patent term adjustment recalculation).
Komipharm International v. Kappos (demanding that it be recognized as the assignee of its patent rights).
Tolerx v. Kappos (patent term adjustment).
Centre National De La Recherche Scientifique v. Kappos (patent term adjustment).
Texas Juries: Michael Smith reviews E.D. Texas patent trial verdicts for 2009 (thus far). Depending upon how you count, the score ranges “from 8-3-1 to 6-6-1 (depend[ing] on whether you count a post-jury selection grant of summary judgment or not).” [Link]
Judge Michel: A transcript of Chief Judge Paul Michel’s recent speech to the FCBA is now available through that organization’s website. [Link] In addition to announcing his retirement, Judge Michel argued strongly against a statutory right to appeal claim construction decisions. His discussion also touched on the fact that eight of the twelve Federal Circuit judging slots could open within the next 12-months. He suggests that the replacements should include (a) a district court judge and (b) a patent litigator who has extensive experience trying commercial cases in front of juries. Judge Michel suggested room for diversity on the court since all members are white and only 25% are women.
Appointing Judges: Regarding Federal Circuit appointments. The Obama administration is already focused on ensuring that minorities and women receive their share of appointments. In the words of Judge Michel, it is the Bar’s job to help “assure that the appointees to the Court are selected based on merit, on experience, on quality, on intellect, on intelligence, on energy, and not because they’re, you know, somebody’s cousin or whatever the other considerations might be.”
Concentration of Ownership: Hal Wegner and Justin Gray review the top 150 patent holders and reports on growing ownership concentration. [Link][See also Patent Prospector]
Written Description: Amicus Briefs in Ariad v. Lilly: Patent Docs Review the Briefs. [Link]
Presumption of Validity:Lucent v. Gateway: The Federal Circuit has denied Microsoft’s petition for rehearing. Microsoft is expected to file a petition to the Supreme Court focusing on the interpretation of Section 282’s “presumption of validity.” Microsoft questions whether that statute is properly construed to always require clear and convincing evidence of invalidity.
Presumption of Validity Redux: In a recent article, Scott Kieff and Henry Smith argue for a reduction in the presumption of validity. [Link]
Reexaminations: Reexamination Statistics: Of the 734 inter partes reexaminations that have been requested in the past decade, 498 (68%) are “known to be in litigation.” [Link]
Interviewing Director Kappos: Tony Mauro writes a comical story about one reporter’s quest to interview David Kappos:
[W]hen ABA Journal senior writer Terry Carter got nowhere in his recent effort to reach Patent and Trademark Office director David Kappos . . . he decided on a characteristically novel approach: on Tuesday he drafted and posted a humorous patent application for a “method to get an interview with USPTO Director David Kappos.” Edward Adams, editor and publisher of the ABA Journal, wrote in this story at the Journal Web site, “We figured the problem was that Carter was not speaking the agency’s language.” [Link][Read the Application]
Next Federal Circuit Judges and en banc petitions:
There is currently one open slot on the Federal Circuit. In the interim, it should be statistically slightly easier to get the court to agree to an en banc rehearing. Instead of convincing seven of twelve (58%), now a successful petitioner need only convince six of eleven (55%).
Pirates: The EU Parliament now has two members from the Swedish Pirate Party. The Pirates platform is based on weakening copyright laws and eliminating patents. The first line of the party website reads: “The Pirate Party wants to fundamentally reform copyright law, get rid of the patent system, and ensure that citizens’ rights to privacy are respected.” [LINK]
Billion Dollar Trade Secret Trial: The top semiconductor manufacturer in Taiwan (TSMC) sued the top mainland China semiconductor manufacturer (SMIC) for stealing its trade secrets (in state court in California). The jury sided with the plaintiff, although the damage calculation is still underway. [LINK]
JOAO Control & Monitoring v. Playboy & Penthouse: The JOAO patent holding company has sued a dozen online pornography providers alleging patent infringement. The asserted patent claims an apparatus for transmitting audio and video information from a vehicle to a website. The inventor Ray Joao is also a patent attorney and is represented by Andrew Spangler.
Who Owns Patents being Reexamined: The folks at Westerman Hattori have been writing about reexaminations. In a recent post, they list the top-ten patentees whose patents are undergoing reexaminations (based on reexaminations granted since January 2009). The top five include Rambus, LGE, Weatherford/Lamb, Mondis Tech, and ADC Tech. [LINK]
Ariad v. Eli Lilly (Written Description): Ariad has filed its opening brief in the en banc Federal Circuit challenge to the statutory basis for a written description requirement that is separate and distinct from enablement requirement. The patentee’s strongest arguments are textual and historic. Although done with tact and persuasive skill, the brief asks the court to read the statute: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” [File Attachment: Ariad v. Lilly Plaintiffs-Appellees Principal Brief.pdf (509 KB)]
Forest Group v. Bon Tool False Marking Case: The question on appeal is whether mass production of a falsely marked product constitutes a single instance of false marking. If the Federal Circuit agrees, the false marking statute will continue to have no impact because damages are limited by statute to $500 or less per offense. Judges Rader, Plager, and Moore will likely issue a decision in January. In oral arguments, the court struggled with the potential problem of “marking trolls” — suggesting that an amicus in this case is “pretty close to that.”
Patent Reform: Senator Leahy has suggested a Senate debate on patent reform “before the end of the year.”
Board of Patent Appeals: Numbers are in for FY2009 (ending September 30, 2009). 15,349 appeals docketed; 6,757 appeals completed; 12,489 appeals pending at the end of the FY. The Board took heroic efforts to increase its throughput by over 35% in FY2009. However, the Board was already operating in a deficit and the number of cases received in FY2009 is more than double that of FY2008.
Board of Patent Appeals II: Despite the backlog, the Board reports an average pendency of only 7.7 months (calculated from assignment of appeal number to decision date).
IP Czar: George Mason visiting professor Victoria Espinel has been selected as the IP Enforcement Coordinator for the Administration – known as the IP Czar. The role will likely be more focused on international trademark and copyright issues rather than patent law issues. Her nomination must be confirmed by the senate. [LINK]
DC in DC: Next Thursday (1:30 p.m., October 1), I’ll be the opening speaker in GWU’s IP Speaker Series. My presentation considers the proposed first-to-file legislation and includes a new set of data the (low) frequency that applicant’s attempt to rely on their invention date during prosecution. The talk is open to GWU students, alumni as well as “friends.” Other speakers include Edward Walterscheid (Oct. 27); Zahr Stauffer (Oct. 29); Joseph Miller (Nov. 5); and Chris Cotropia (Nov. 19). [LINK]
Sept 25 at Santa Clara Law School – Sources of Uncertainty in Patent Litigation. This looks to be an awesome half-day event at a low price: $150 for law firm folks; $75 for in-house counsel.
Law Student Scholarship: The Richard Linn American Inn of Court is sponsoring a newly established scholarship in honor of Mark T. Banner who died in 2008. Mark was a major force in the patent community and was very helpful to me early in my career. Although the Linn AIC is located in Chicago, the organization is taking applications nationally, now through October 10, 2009. The award is open to any student interested in pursuing a career in intellectual property. However, some preference may be given to students who are involved in a local Inn of Court. Intellectual property focused Inns are located in Chicago, DC, San Francisco Bay Area, Philadelphia, New Jersey, NYC, LA, and Boston. [Download The Richard Linn Inn Mark T. Banner Scholarship Materials][About American Inns of Court].
Job Board Sponsor: I'm happy to announce that Franklin Pierce Law Center has become a sponsor of the Patently-O job board. The law school continues its focus on patent law with a particular emphasis on practical training. I was teaching there in the summer of 2007 and very much enjoyed my stay in southern New Hampshire.
World Research Group, a Patently-O job board sponsor, will be holding a TechNet Patents Forum in New York on November 5-6. Patently-O readers will receive a $300 discount by using the promo code EAG476.
Federal Circuit En Banc:
On September 18, the Court of Appeals for the Federal Circuit will sit en banc to hear two non-patent cases.
Nebraska Public Power v. US:
The Nebraska case is one of several dozen Federal Claims actions against the US Government for breach of contract and takings for the Government’s failure to begin removing spent nuclear fuel.
Question: Does the mandamus order issued by the United States Court of Appeals for the District of Columbia Circuit in Northern States Power Co. v. United States Dep’t of Energy, 128 F.3d 754 (D.C. Cir. 1997) preclude the United States from pleading the “unavoidable delay” defense to the breach of contract claim pending in the United States Court of Federal Claims, and if so, does the order exceed the jurisdiction of the District of Columbia Circuit?
Henderson v. Dep’t of Veteran Affairs:
Equitable tolling of claims for veteran’s benefits
Question: Does the Supreme Court’s decision in Bowles v. Russell, 127 S. Ct. 2360 (2007), require or suggest that this court should overrule its decisions in Bailey v. West, 160 F.3d 1360 (Fed. Cir. 1998) (en banc), and Jaquay v. Principi, 304 F.3d 1276 (Fed. Cir. 2002) (en banc), holding that 38 U.S.C. § 7266 is subject to equitable tolling?.
Relevance of the “manner in which the invention was made:”
35 U.S.C. 103(a) makes clear that “[p]atentability shall not be negatived by the manner in which the invention was made.” That final sentence of the paragraph was apparently intended to contrast the 1952 law from the Supreme Court’s loose statement in Cuno that a patentable invention must “reveal the flash of creative genius.” 314 U.S. 84 (1941).
Should this statement be interpreted to mean that the inventor’s actual process has no relevance to the questions of novelty and nonobviousness? Or, is there still room for a jury to consider the actual creativity and genius of the inventor and the process used. (This question was suggested by a comment on the blog).
Oral arguments for the Bilski case have been set for November 9, 2009. (via Vobach)
Ryan Durham of Novak Druce has created a Google Maps application (mash-up) to locate registered patent attorneys and patent agents. The software is still in Beta, but is pretty cool. [link]
WedgeTail v. Huddleston Deluxe (Fed. Cir. 2009) 09-1045.pdf
After claim construction, WedgeTail – the patentee – filed a motion to dismiss its claims and granted Huddleston a covenant not to sue. Judge Folsom (E.D.Tex.) agreed and dismissed the case. Huddleston challenged the dismissal because it also wanted to collect attorney fees. Judge Folsom denied Huddleston’s request for a hearing on attorney fees without providing any reasoning.
The Patent Act provides for recovery of “reasonable attorney fees,” but only in “exceptional cases.” Ordinarily, such exceptional cases are only found in situations involving “inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and otherwise bad faith litigation; a frivolous suit or willful infringement.”
District courts are also given a “high level of deference” on this issue — especially when a request for fees is denied.
On appeal, the Federal Circuit affirmed – holding that the district court was not required to explain its denial (and that Huddleston had not shown sufficient evidence of an exceptional case).
Simply put, Huddleston has failed to demonstrate either that the district court clearly erred in failing to find this case exceptional or that Huddleston was harmed by the district court’s failure to entertain a motion for attorney fees. A remand is, therefore, unwarranted. . . .
Though findings on ‘exceptional case’ and reasons underlying the discretionary action on fees are helpful to an appellate court, remand should not be a matter of rote in every case in which findings and reason are not expressly set forth. (quoting Consol. Aluminum v. Foseco, 910 F.2d 804 (Fed. Cir. 1990)).
Affirmed
Notes: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. 285.
This morning I created a dataset of prosecution information for 462 randomly selected utility patent applications filed in December 2004 and January 2005 to get a sense of where those applications stand after 4 ½ years of prosecution. Overall, 48% of the applications have issued as patents; 26% have been abandoned; and 26% are still pending. (Note – I excluded the 12% of cases from my sample that were never published as applications because data is not available for most of them).
Table 1 below shows the detailed status for each case as provided by the USPTO’s PAIR system. All but two of the pending cases have received at least an initial examination. The two still-unexamined cases are both software-related applications.
High-Level Status
Status
Percent of Cases
Patented
Patented Case
47.8%
Abandoned
Abandoned — Failure to Respond to an Office Action
25.2%
Abandoned
Abandoned — Failure to Pay Issue Fee
0.7%
Abandoned
Expressly Abandoned — During Examination
0.2%
Pending
Non Final Action Mailed
8.9%
Pending
Final Rejection Mailed
6.4%
Pending
Response to Non-Final Office Action Entered and Forwarded to Examiner
5.0%
Pending
On Appeal — Awaiting Decision by the Board of Appeals
1.0%
Pending
Notice of Allowance Mailed — Application Received in Office of Publications
1.0%
Pending
Notice of Appeal Filed
0.7%
Pending
Publications — Issue Fee Payment Verified
0.5%
Pending
Examiner’s Answer to Appeal Brief Mailed
0.5%
Pending
Docketed New Case – Ready for Examination
0.5%
Pending
Appeal Awaiting BPAI Docketing
0.5%
Pending
Withdrawn Abandonment awaiting examiner action
0.2%
Pending
Response after Final Action Forwarded to Examiner
0.2%
Pending
Appeal Brief (or Supplemental Brief) Entered and Forwarded to Examiner
0.2%
Pending
Advisory Action Mailed
0.2%
Table 1
An often frustrating aspect of application pendency is that abandoned cases can be kept alive by filing a continuation application. Of those cases that have been either patented or abandoned, 25% have one or more descendents in the form continuation or CIP applications. (I have not determined whether those continuations are themselves still pending.)
Of the cases already completed (no longer pending), the median patent took 2.6 years to issue while the median abandonment did not occur until 3.1 years into prosecution. Along this line, the longer a case was pending, the greater the likelihood that the case was abandoned. Thus, 71% of cases that were pending for fewer than three years were allowed while only 29% of cases that were pending for three to four and a half years were allowed.
The chart below shows the percentage of applications pending as a function of the number of years in prosecution. Although the average time in prosecution for this cohort cannot be calculated yet (because so many cases are still pending), the median time in prosecution – as seen in the chart – is 3.3 years.
The patent office examination corps is divided into various technology centers. In my sample, TC 2800 (Semiconductors, Electrical and Optical Systems and Components) had allowed the highest percentage of cases (70%) and had the lowest rate of applications still-pending after 4 ½ years (3%). TC 1600 (Biotechnology and Organic Chemistry) has the highest abandonment rate (36%) while TC 2600 has the highest percentage of cases still pending (48%).
Section 292 (False marking): PATracer reports on a district court decision in favor of Target — holding that the retailer is not liable for false marking even if it knowinly sold products that were falsely marked. [LINK]
Section 292 (False marking): PATracer reports on a district court decision in favor of Target — holding that the retailer is not liable for false marking even if it knowinly sold products that were falsely marked. [
Quoted: President Obama to the Forum on Moderninzing Government: 
A University of Missouri student and entrepreneur was recently sued by the North Face for trademark infringement. The student’s company is called “
I'm happy to announce that 
