All posts by Lawrence Higgins

Patently-O Bits & Bytes by Lawrence Higgins

Constitutional Challenge to False Marking Statute

  •  Oral arguments in the case of United States, ex rel. FLFMC, LLC v. Wham-O, Inc., will take place on July 7th. The Federal Circuit will be resolving the constitutional challenge to the false marking statute (35 U.S.C. § 292(b)). The merits panel agreed to allow the government and the U.S. Chamber of Commerce to participate in oral arguments. The court expanded the oral argument time to 20 minutes per side. This case could set the precedent to eliminate false marking lawsuits. Regardless of how the Federal Circuit rules in this case, it is likely to be appealed to the Supreme Court. [FMLC-Reply-Brief] [Order-Re-Wham-O-Oral-Arg] [Cato-Brief] [Brief-of-Amicus-Curiae-Chamber-of-Commerce] [USA-Brief-in-Wham-O] [Wham-O-Brief]

Article One launches 3 Patent Studies Focused on 4 Patents on by Lodsys

  •  In response to the lawsuit Lodsys filed against several Apple iPhone developers, [Link] Article One is offering a $5,000 reward per study for the best prior art reference that provides a path to invalidity. The patents at issue are 7,133,834, 5,999,908, [Link] 7,222,078, [Link] and 7,620,565. [Link]To date Lodsys has sued 27 companies for patent infringement, so there is no way of knowing exactly who is funding the study that Article One is overseeing. [Link]

Google Granted Patent for “Detecting and Rejecting Annoying Documents”

  •  On June 28th Google was granted patent # 7,971,137, for a system and method for evaluating documents for approval or rejection and/or rating. The method comprises comparing the document to one or more criteria determining whether the document contains an element that is substantially identical to one or more of a visual element, an audio element or a textual element that is determined to be displeasing.  

What Impact Will Patent Reform Have on the Patent Office?

  •  The Patent Reform legislation will allow the PTO to keep fees they receive from applicants in an account that Congress can’t touch. The PTO will likely start hiring more patent examiners in order to try to decrease the backlog of patent applications, which currently stands at around 685,000. The satellite office in Detroit more likely than not will open sometime in the near future, possibly followed by more satellite offices. Track one of the Three-Track program, which allows applicants to pay extra money to receive a first office action within a certain amount of time will go into effect. Patent Examiners will likely receive more training and be able to resume working overtime.

Patent Jobs:

  • Salix Pharmaceuticals is searching for an IP and Licensing Attorney with at least 3 years of experience in pharmaceutical patent prosecution. [Link]
  • BASF is seeking a Patent Counsel with 8 or more years of experience in IP transaction work and at least 5 years of experience in patent prosecution. [Link]
  • Sutherland LLP is looking for an Associate of Patent Agent with 1-4 years of experience in patent prosecution and a background in Electrical Engineering. [Link]

  • Baker Botts is searching for a Patent Agent with 1-3 years of experience. [Link]

Upcoming Events:

  • The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]
  • The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]
  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28thin New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [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]

 

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Patently-O Bits & Bytes by Lawrence Higgins

Should anyone really be allowed to request Reexamination?

  •  Since 1981, there has been over 11,000 ex parte reexam request submitted to the PTO. As you would guess the majority (66%) being filed by a 3rd party and 33% being filed by the actual patent owner. In 1982 there were only 187 reexam request compared to 780 in 2010, this is over a 300% increase in request. Also, reexam certificate results show that the actual claim changed 66% of the time. Out of the total request for reexam, only 8% of the requests were denied. This leads me back to my question; should the PTO allow anyone from the general public to request a reexam? I would argue no, essentially because a single individual or company could in theory request a reexam for any and every patent.  [USPTO Ex Parte Reexam Statistics]

Will Apple Sue?

  •  On June 21st Apple was granted patent # 7,966,578 for a “Portable multifunction device, method, and graphical user interface for translating displayed content” essentially a touchscreen device such as the IPad or IPhone. Apple could potentially use patent “578” to force their competitors to either, stop manufacturing infringing products or pay licensing fees. This patent is extremely broad and could cover a lot of items currently on the market such as smartphones, e-readers, and tablets to name several. One of Apple’s competitors will surely request a reexam on this patent and patent “578” is more than likely to end up in litigation. [Link]

USPTO Appoints New Deputy Commissioner for Trademark Operations

  •  Mary Boney Denison has been appointed the new Deputy Commissioner for Trademark Operations. Denison will oversee the examination and processing of applications in the trademark division of the USPTO. [Link]

Patent Jobs:

  • Baker & Daniels is looking for an IP associate with up to 5 years of experience prosecuting patents, to work at their Fort Wayne, Indiana office. [Link]
  • Amgen is looking for an individual with 4 or more years of experience in patent or IP law to join their company as Senior Counsel. [Link]
  • Monsanto is seeking a patent scientist with a MS degree or higher and 2+ year’s research experience. [Link]
  • The Marbury Law Group is seeking an IP associate with 2-8 years patent experience and a telecommunications background, to work at their Reston, Virginia office. [Link]

Upcoming Events:

  • The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]
  • The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]
  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28th in New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]

 

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Patently-O Bits & Bytes by Lawrence Higgins

Patent Trial Program Could be a Good Idea

  • California’s Northern District has seen a large increase in the number of patent lawsuits. As a result, this District was picked to participate in a 10-year pilot program that could route patent cases to judges who request them. This program is intended to send patent cases to judges who have an expertise in patent law. If a judge receives a patent law case and does not want it he or she may decline the case, and the case will be sent to the judge with the patent law expertise. Should this program be applied in all District Courts in order to get judges with patent law knowledge to hear patent law cases? [Link]

The House Appropriations Committee Doesn’t Think the USPTO Should Keep Fees

  • The House Appropriations Committee strongly opposes the USPTO to keep funds that it makes. The committee argues allowing the USPTO to keep all their fees would make it financially independent of the budget process and therefore essentially free from congressional oversight. This could possibly mean the language in the Patent Bill that gives the USPTO the right to keep their fees could be removed, in order to pass the remaining parts of the Bill. If this language is removed the USPTO’s budget could possibly get cut again or stay the same, which in both cases the USPTO would remain underfunded. Underfunding the USPTO will cause the USPTO not to be able to effectively decrease the number of patent applications that are backlogged. [Link]

Another Federal Judge Holds the False Marking Law Unconstitutional

  • The first case in which a judge held the false marking statute unconstitutional was Unique Product Solutions Ltd. v. Hy-Grade Valve Inc., which was decided in Ohio. Now a judge in Pennsylvania held in the case of Rogers v. Tristar Products Inc., that the law is unconstitutional. The reasoning this court used was that, the false marking statute has been held to be a criminal law, but that, under its qui tam provision, "the what, when, where, and how of the litigation remain subject to the whims of whomever sees fit to bring the suit." While this decision has practically no precedence, this could be a sign that the false marking law is on its way to the Supreme Court, in order to determine if it is in fact unconstitutional. [Link]

Patent Jobs:

  • Kaleidescape is looking for an in-house patent attorney or patent agent with 3 years of patent experience to work in their California location. (telecommuting is an option) [Link]
  • Meso Scale Diagnostics is seeking a patent attorney with an engineering background and 3-10 years of patent experience to work at their Maryland location. [Link] 
  • Aspen Aerogels is searching for a patent agent or an IP analyst with 5 years of experience to work at their Massachusetts location. [Link]
  • The Coca-Cola Company is seeking to fill 3 patent agent positions at their Atlanta location; individuals must have 2-4 years of patent experience. [Link]

Upcoming Events:

  • The fourth IP Business Congress (IPBC) will take place on June 19-21 in San Francisco. IPBC 2011 will bring together leaders from the worlds of IP business and finance to discuss issues that center on the creation and management of IP value. There will be over 50 highly regarded guest speakers such as; Judge Michel, Judge Rader, Teresa Rea, Tracey Thomas, Loria Yeadon, Benjamin Lee, and Peter Menell just to name few. [Link]
  • The Biotechnology Industry Organization (BIO) will hold its annual BIO International Convention on June 27-30 in Washington, DC. BIO brings together 15,000 – 17,000 industry experts from over 60 countries. The convention will hold several sessions strictly related to IP. [Link]
  • The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Apple iPhone Developers Sued

  • Lodsys has filed a patent infringement suit against several developers of applications for Apple. [Complaint] Lodsys claims that patent numbers 7,620,565 and 7,222,078 were used by the developers without their consent. The suit was filed after Apple sent a warning letter to Lodsys, telling Lodsys to leave the developers alone. Apple claims that the license that they received from Lodsys allows the developers to use the patented technology for making Apps for Apple products. The Apps that the complaint reference are Twitterrific, Labyrinth, and Quickoffice Connect just to name a few. [Link]

USPTO’s Patent Experience Externship Program (PEEP)

  • This year the USPTO will have its largest student program ever; over 200 students (including myself) have been accepted to work at the USPTO. The PEEP gives future patent attorneys and students a view into the day to day operations at the USPTO. Also the PEEP helps the USPTO identify and recruit future patent examiners. The PEEP integrates theories learned at universities with real-world practice and implementation of those theories. The PEEP officially started on June 1 and will run until the middle of August. [Link]

New Secretary of Commerce?

  • President Obama has nominated John Bryson as the next Secretary of Commerce. The current Secretary of Commerce Gary Locke will become the new Ambassador to China. John Bryson is the former CEO of Edison International and co-founder of the Natural Resources Defense Council. [Link]

New Patent Blog!

  • www.ipreglaw.com is a new patent blog started by Scott Bialecki. The blog's purpose is to offer practical advice and insight from a former Federal Trade Commission (FTC) staffer that became an IP litigator. Scott was with the FTC for over 5 years, and brings his regulatory knowledge to the Intellectual Property world to offer great advice on his blog.

Patent Jobs:

  • Toler Law Group is searching for patent attorneys to work in their Austin, TX office. Toler Law group is evaluating both lateral and newly graduated attorneys. [Link]
  • Solazyme is seeking an IP attorney with 4-5 years of experience to work at their San Francisco location. [Link]
  • Sterne, Kessler, Goldstein & Fox is looking for a biotechnology patent attorney with at least 3 years of experience to work in their Washington, DC office. [Link]
  • Choate, Hall & Stewart is searching for an attorney, patent agent or staff scientists with an EE background and 2 years of patent prosecution experience. [Link]

Upcoming Events:

  • The Biotechnology Industry Organization (BIO) will hold its annual BIO International Convention on June 27-30 in Washington, DC. BIO brings together 15,000 – 17,000 industry experts from over 60 countries. The convention will hold several sessions strictly related to IP. [Link]
  • The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]
  • American University Washington College of Law will host the first annual Global Congress on Public Interest Intellectual Property August 25-27 in Washington DC. The Global Congress on Public Interest Intellectual Property will serve as a site for the sharing of research, ideas and policy proposals for how international intellectual property law should be constructed to better protect the full range of global public interest concerns. [Link]

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

 

Patently-O Bits & Bytes by Lawrence Higgins

Pro Bono Patents!

  • Members of the Twin Cities legal community are launching a pilot program to provide pro bono legal services to low-income, independent inventors. One of the programs goals is to put a dent in the USPTO’s backlog of patent applications, by increasing the efficiency of the applications submitted by independent inventors. This Pro Bono program is encouraged by the USPTO and the program’s success may help spark innovation across the nation. [Link]

Should Disney be allowed to trademark "SEAL TEAM 6"?

  • The Navy is challenging Disney’s attempt to trademark the name of the elite squad that took out Bin Laden. On May 3rd Disney filed the mark "SEAL TEAM 6" for various goods and services. [Link] [Link] [Link] However, it looks like the Navy did not like Disney trying to profit off of their work, so the Navy filed for the mark "SEAL TEAM" on May 13th. [Link] It looks like the Navy is trying to create a likelihood of confusion with the mark "SEAL TEAM", so that the USPTO will not issue the mark to Disney under 15 USC 1052(d). [Link]

Groklaw new editor will be Mark Webbink

  • Pamela Jones (PJ) the editor of Groklaw announced in early April that she was not going to write any more articles for Groklaw. However, PJ was bombarded with messages asking to keep the website going, so she asked Mark Webbink to become the new editor. Mark Webbink accepted the proposal and is officially the new writer of Groklaw. Mark is a visiting professor at New York Law School where he runs the Center for Patent Innovations, oversees the Peer To Patent project, and is a senior lecturing fellow at Duke University School of Law where he teaches intellectual property courses. [Link]

Inventor of the Year Award

  • IPO Education Foundation is seeking nominations for its 38th National Inventor of the Year Award. The award presents an opportunity for nominators to obtain major recognition for a deserving employee, client, or colleague as one of America's most outstanding inventors. Nominators could get recognition for themselves and their firm. The deadline for nominations is June 1. [Link]

Patent Jobs:

  • O’Shea Getz is seeking a patent attorney with at least 4 years of experience to work in their Springfield, MA office. [Link]
  • Klarquist Sparkman is looking for an IP litigation associate with 1-2 years of experience to work in their Portland office. [Link]
  • Laird Technologies is searching for an IP manager with 3 years of patent prosecution experience to work at their Chesterfield, MO location. [Link]
  • Ballard Spahr is seeking an IP litigation associate with 3-5 years of experience to work in their Philadelphia office. [Link]

Upcoming Events:

  • The Berkeley Center for Law & Technology (BCLT) and the USPTO are co-hosting a conference on the interface between the PTO and the District Courts on June 7th in Berkeley, California. The keynote address will be delivered by Teresa Stanek Rae. Guest speakers include Robert Bahr, Elaine Gin, and Stuart Graham. [Link]
  • AIPLA’s Chemical Patent Practice Road Show: Prosecution and Litigation Strategies will be held in Chicago on June 23rd. This seminar will cover advanced issues relating to chemical patent prosecution and litigation. Guest Speakers include Sharon Barner, Bradley Crawford (from MBHB), Whitney Remily, Michael Tierney, and Alexander Wilson. [Link]
  • The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]

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