Search Results for: "sas institute"

Who is Suing for Patent Infringement?

Patent

Kyle Jensen and his group at PriorSMart maintain an incredible database of patent litigation. Last week Kyle provided me with some interesting data on patent filings over the past decade for one of my ongoing projects. I thought that I would present a snapshot based on PriorSMart’s information. The first table below looks at the top-25 filers of patent infringement lawsuits during the past ten years. The second table looks instead at the count of defendants who have been sued for that same time period. (At this point, the defendant-count has some duplication based on individual lawsuits that name both the parent and subsidiary companies as defendants).

 

Rank

Patent Plaintiff

Number of Cases Filed

1

Acacia

190

2

Laughlin Products

162

3

Pfizer

149

4

Monsanto Company

125

5

Ronald A Katz Technology Licensing

107

6

Patent Group (False Marking)

106

7

Novartis

104

8

Abbott Laboratories

103

9

Astrazeneca

80

10

Sanofi-Aventis

78

11

Oakley

77

12

Warner-Lambert Company

74

13

U.S. Philips

74

14

Mag Instrument

70

15

Merck

69

16

3M Innovative Properties Company

67

17

Cygnus Telecommunications Technology

64

18

Schering

64

19

Millennium

63

20

Eli Lilly And Company

61

21

Promote Innovation (False Marking)

60

22

Melvino Technologies

59

23

Teva Pharmaceuticals

58

24

AstraZeneca AB

54

25

Eon-Net

54

 

 

Rank

Patent Plaintiff

Number of Defendants

Non-Practicing Entity

1

Ronald A Katz Technology Licensing

1295

Yes

2

Acacia and Paul Ware

1100

Yes

3

Tillotson and Best Manufacturing Company

468

No

4

Laughlin Products

463

No

5

Geotag

454

Yes

6

U.S. Philips

406

No

7

Pfizer

399

No

8

Massachusetts Institute of Technology

297

Yes

9

Monsanto Company

295

No

10

Parallel Networks

274

Yes

11

Orion IP (Spangenberg)

269

Yes

12

Sanofi-Aventis

260

No

13

Electronics for Imaging (with MIT)

253

Yes

14

Abbott Laboratories

230

No

15

Melvino Technologies and ArrivalStar

226

Yes

16

Leon Stambler

218

Yes

17

Mag Instrument

212

No

18

Astrazeneca

203

No

19

PACid Group

194

Yes

20

Clear With Computers (Spangenberg)

193

Yes

21

Guardian Media Technologies

193

Yes

22

Warner-Lambert Company

187

No

23

Technology Patents

186

Yes

24

Honeywell International

183

No

25

Eli Lilly And Company

182

No

 

About 11% of all defendants sued for patent infringement during this time-period were sued by these 25 plaintiffs.

Patently-O Bits & Bytes by Lawrence Higgins

Patent

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

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

Briefing Microsoft v. i4i: Amicus Briefs Supporting Easier Invalidation of Patents in Court

Patent, ,

Microsoft v. i4i, Docket No. 10–290 (Supreme Court 2011)

Briefing has begun in earnest.  Microsoft recently filed its opening brief on the merits (File Attachment: microsoftopen.pdf (250 KB)) and now twenty-five self-proclaimed friends-of-the-court have added their respective two-cents.  The case focuses on the burden of proof required to invalidate an issued patent. Microsoft has challenged the Federal Circuit’s rule that clear-and-convincing evidence is necessary. Instead, the software giant argues that a preponderance of the evidence should be sufficient to invalidate a patent — especially when a court is considering evidence of invalidity that was not considered by the Patent Office during examination. 

In many ways, this case would only shift marginal cases — such as when an accused infringer is able to prove that a patent is probably invalid, but cannot provide clear and convincing evidence of that fact.  The specific marginal problem for Microsoft is that it presented only limited evidence of the existence of custom built prior-art software that would invalidate i4i’s patent. Unfortunately for Microsoft, that twenty-year-old software code is no longer available and the parties presented competing factual testimony as to the operation of the prior art software.

Of the twenty-five friend-of-the-court (FOTC) briefs filed thus far, twenty explicitly and officially support Microsoft’s position that the standard should be lowered.  Five briefs claim to support “neither party.” (Briefs supporting i4i will be filed in March, 2011).  The official claim of support often has limited meaning. I would roughly divide the briefs into four groups: (1) Seven briefs support Microsoft’s position that the clear-and-convincing standard should not apply when the evidence of invalidity was not considered by the USPTO. (2) thirteen briefs further argue that the standard should be lowered-across-the-board in [essentially] all cases.  (3) Two briefs take the opposite position — that the standard should remain clear and convincing. Although these two briefs officially support neither party, I expect many similar briefs to be filed in support of i4i next month. (4) Three briefs focus on interesting issues of whether we should have dual (or variable) standards that depend upon whether the PTO considered the evidence during prosecution. The following is a discussion of some of the more interesting aspects of the briefs that I noticed.

Lowering the Standard when the PTO has not Considered the Arguably Invalidating Evidence:

The well respected Supreme Court patent team at Fried Frank of Jim Dabney, Professor John Duffy, and Steve Rabinowitz filed a brief on behalf several corporations, including SAP, Symantec, Facebook, and Yahoo!. Their brief agrees with Microsoft that the standard for invalidating a patent should be lowered unless the file wrapper “shows that the PTO has engaged in reasoned decisionmaking with regard to a factual issue.”  The brief grounds its argument in  the Administrative Procedures Act (APA). As suggested above, the brief indicates that the APA “reasoned decisionmaking” analysis should occur on a fact-by-fact basis — with deference only given when evidence shows that the PTO made a reasoned decision regarding the fact in question.  File Attachment: sap.pdf (170 KB). Writing for a group of 37 Professors, Professor Mark Lemley adds that APA deference may be appropriate only in very limited circumstances — such as when a particular factual question was decided in the course of an adversarial inter partes reexamination proceeding. File Attachment: lemley.pdf (229 KB). In a complementary brief, WM Mitchell Law School’s IP Institute (led by Profs Moy and Erstling) reviews 150 years of Supreme Court case to reach its conclusion that the clear-and-convincing evidence rule “was extended to issues not before the USPTO only recently.” File Attachment: wmmitchell.pdf (178 KB). See also File Attachment: bsa.pdf (196 KB). 

Generic pharmaceutical companies generally support Microsoft’s position that “bad” patents should be easier to invalidate. Shashank Upadhye (Apotex’s IP chief) generally presents interesting arguments. The gist of his brief is that courts would do better to err on the side of free competition (i.e., invalidity). File Attachment: apotex.pdf (181 KB). Teva argues that C&C standard encourages applicant to conceal prior art. The logic behind that argument is that applicants would prefer to sneak through the PTO and then rely on the C&C standard in litigation to win the case or force settlement. File Attachment: tevapharma.pdf (234 KB). The Bar Association of DC argues the other-side — that increasing the incentive to submit prior art references during prosecution will not lead to better patent quality. File Attachment: badc.pdf (104 KB).

Apple and Intel support Microsoft’s position. However, it is clear that the companies (likely Apple) strained to avoid saying that they support “Microsoft” or even the “petitioner.”  Overall, I would say that the brief does more harm to its cause than good.  The problem is that the brief offers no additional arguments except for a three page section regarding “practical” and “empirical” evidence that the C&C standard makes a difference to juries. Unfortunately for Apple, the evidence presented is glaringly weak. File Attachment: apple.pdf (109 KB).  However, evidence from other briefs, such as that filed by Prof Hollaar may provide a cumulative bulk sufficient to make this case.  File Attachment: hollaar.pdf (262 KB).

EFF and PubPat: As might be expected, the Electronic Frontier Foundation (EFF) and the Public Patent Foundation (PubPat) both argued that a preponderance of the evidence should be sufficient to invalidate a patent in all cases. EFF’s brief (penned primarily by Michael Barclay) focuses primarily on policy — arguing that the sheer number of issued-but-invalid patents makes this an important issue that needs resolution. File Attachment: eff.pdf (293 KB). Dan Ravicher at PubPat similarly writes that the “extremely poor quality” of US patents screams for a lowering of the standard. File Attachment: pubpat.pdf (92 KB). See also, File Attachment: ctia.pdf (200 KB), File Attachment: hercules.pdf (207 KB).  The brief by Google, et al., takes this a step further than the normal “lack of time” and “incompetence” statements –  arguing that the current law and practice “tilt the scales heavily in favor of granting patent applications based on incomplete analyses.” File Attachment: google.pdf (241 KB).

Cisco, Ebay, Netflix, Toyota, and others argue that the advent of third-party requested reexaminations changes the system in a way that impacts the proper standard used in district court litigation. The brief argues (in a way that I don’t yet fully understand) that the existence of reexaminations suggests that the litigation standard should be a preponderance of the evidence. File Attachment: cisco.pdf (187 KB).

Supporting a High Standard: As the largest US patent holder, it might be no surprise that IBM supports a high standard for invalidating a patent.  Of course, across the “v” sits Microsoft as another very large patent holder.  I would point to three primary differences between IBM and Microsoft: (1) IBM has a long and extensive pro-patent stance; (2) IBM has an extremely strong and lucrative patent monetization program; and (3) perhaps most importantly, IBM itself has only rarely been sued for patent infringement.  File Attachment: IBM.pdf (274 KB). The AIPLA –  the largest association of US patent lawyers – also supports the status quo. File Attachment: aipla.pdf (157 KB).

Professor Morris does not take a position regarding a high or low standard. Rather, her focus is on whether it makes sense to have two standards of proof that vary according to whether the particular fact in question was considered by the USPTO. File Attachment: Morris.pdf (494 KB).

Notes:

 

 

 

 

Patently-O Bits and Bytes*

Patent

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.

USPTO News

  • 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*

Patent

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.

USPTO News

  • 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

Global-Tech v. SEB: Respondent and Additional Amicus Briefs

Amicus Brief, Inducement, Infringement, Patent, Rantanen

By Jason Rantanen

In Global-Tech v. SEB, the Supreme Court is addressing the state of mind requirement for inducement of infringement.  The petitioner, along with several amicus briefs filed in support, argues that inducement should require that the accused intend to infringe the patent, and that the accused infringer must know of the patent being infringed.  Earlier Patently-O discussions of those briefs are available here and here.

Last week, the respondent (SEB) filed its briefs.  SEB argues that there is no basis for requiring evidence that the accused party possess actual knowledge of the patent; rather, inducement must require a lower state of mind standard than both 35 U.S.C. § 271(c) (contributory infringement) and willful infringement, a standard that is met by Pentalpha's conduct.  In the alternative, SEB argues that Pentalpha's conduct constituted willful blindness, which SEB contends is a form of constructive knowledge and thus is sufficient for inducement.  In addition, SEB argues that the Court should affirm because all the damages were attributable to Pentalpha's direct infringement and because, through it's finding of willful infringement, the jury necessarily found that Pentalpha had actual knowledge of the patent.

Several amicus curiae have also filed briefs in support of the respondent, all arguing that inducement should require only intent to cause the acts as opposed to some form of scienter with respect to whether those acts infringe a patent.  Among these is the brief of a group of law professors led by Professor Ted Sichelman, argues that inducement should require only specific intent to cause the infringing acts – not some form of scienter with respect to whether the acts infringed a patent.  The brief supports this argument by looking to tort and criminal law, pointing out that in those contexts it is not necessary for the accused to know that that the acts violate a legal duty – only that the accused intend to cause the acts themselves. It also argues that prior to the 1952 Patent Act, no court (with one exception as dicta), held that indirect infringement required knowledge of the patent.  Thus, the brief argues, while inducement of infringement should require specific intent to further the acts of direct infringement, it did not traditionally – and should not – require any form of knowledge of whether those acts infringe a patent. 

Oral Argument is set for Wednesday, February 23, 2011.

SEB's Brief:

Amicus Briefs in Support of Respondent:

Note: I understand additional briefs may have been filed, including one on behalf of several companies and PhRMA, that do not appear on the ABA site.  This post will be updated when those briefs are available.

Ranking of Patent Law Programs for 2011: Perhaps Six Junk-Science Ratings Are Better Than One

Patent

US News & World Report has released its updated rankings of intellectual property (IP) programs for 2011. The ranking is created by polling a subset of law professors who teach at least one intellectual property law course. The professors then list up to fifteen programs with good IP programs. Those "votes" are then used to create a ranking. Of course, most IP professors are not patent law professors. 

Despite problems with the voting procedure, it is clear that every program on this list has an excellent IP program. And, although the list is not a "patent law program" list, all of the listed law schools employ at least one full-time faculty member whose primary teaching and research interest is patent law. Likewise, although you may quibble about individual rankings, there is no question that Berkeley's program deserves to be very highly ranked.  

The US News list:

Rank

Law School

1. 

University of California–Berkeley 

2. 

Stanford University

3. 

George Washington University 

4. 

Boston University

5.

New York University

6.

Columbia University

7.

University of Michigan

8.

University of Houston

9.

Duke University

Franklin Pierce Law Center
(Soon to be University of New Hampshire School of Law)

Three schools were dropped from this year's USNews top-ten: Santa Clara University; Yeshiva University (Cardozo), and Chicago-Kent (IIT).  These three schools all have strong patent law programs and have recently hired additional new patent-focused faculty members.  Other schools with hefty patent-focused programs did not make the list. These include schools like George Mason, John Marshall, Suffolk, William Mitchell, etc. (See curriculum ranking below).

Boston University, Michigan, and Duke were all added to the USNews list this year, although each had previously been on the list at some point during the past decade. 

Patently-O Rankings: I have redone my list of "the top thirty law school patent programs" based solely on the number of Patently-O visits received from the associated university in the past year. There are many problems with this "study." In fact, at first glance, I would tend to take this ranking as a complete joke except for the fact that it is probably at least as good as the US News IP Specialty ranking. Perhaps six junk-science ratings are better than one. Some of the problems with my ranking include: Many schools may not use their name in their IP address — making them lose their ranking. This appears to be true of Franklin Pierce Law Center (soon to be University of New Hampshire Law School). Larger schools naturally perform better because the scores are not corrected according to the number of students. Likewise, the measure that I used allows for a few intense users to change the result. Thus, I placed an asterisk beside the University of Missouri because my own visits to Patently-O likely altered the results. Schools where students (and professors) primarily study away from campus building may also rank relatively lower.  Finally, many of the visits to Patently-O may come from other departments – such as the Technology Transfer and corporate counsel – rather than the law schools.

Rank

School

Relative Score (Based on Visits from School Domain to Patently-O)

1 

George Washington University

100% 

2 

Columbia University, University of Missouri*

65%

4

Santa Clara University

60%

5 

Stanford University

55%

6

University of Texas, University of California Berkeley

45%

8

Duke University, Harvard University, University of Wisconsin-Madison

40%

11

New York University, University of Virginia, Boston University, George Mason University, University of San Diego, Georgetown University, Cornell University

35%

18

Ohio State University, Indiana University (Bloomington), Washington University

30%

21

University of Pittsburgh, John Marshall Law School, University of Minnesota, University of Washington

25%

25

University of Illinois, Northwestern University, Suffolk University, Fordham University, University of Maryland. University of Connecticut, Rutgers University, University of Arkansas

20%

 GWU tops this year's list as it did in my 2010 ranking. Overall, the schools in the top-ten have been relatively stable. Richmond fell off the list; Berkeley, Duke, and Wisconsin moved into the top-ten.     

To add an additional layer of ranking, remember that almost 20,000 individuals access Patently-O through the free daily e-mail service. The following list ranks law school's according to the number of Patently-O e-mail subscribers. In addition to the biases mentioned above, we may have an additional bias if subscribers from some schools tend to use personal e-mail account (such as gmail) instead of the university account.

Rank

School

Relative Score (Based on the Number of Patently-O E-Mail Subscribers from School Domain)

1.

Franklin Pierce Law Center (University of New Hampshire Law School)

100% 

2.

University of Michigan

60%

3.

Harvard University, Stanford University

45%

5. 

George Washington University, Columbia University, University of California Berkeley, Chicago Kent Law School

40%

9.

Case Western Reserve University, University of Utah, Washington University, Elon University, Michigan State University

35%

14.

New York Law School, University of Washington, New York University, St. Louis University, University of Chicago, University of Denver, Yale University

25%

Franklin Pierce again tops this list (as it did in 2009). Harvard moved dramatically upward in the ranking.

Reputation Ranking of Patent Law Faculty: Part of the "reputation" of an IP program is based on the scholarship of its faculty. To create a ranking of faculty-member patent-law reputation, I searched for the number of law review citations associated with each IP-professor using the Westlaw JLR database. To ensure that the citations focused on patent-law reputation, the search looked for articles that somehow related to patent law.  It takes some time for citations to begin to build-up, so it is not surprising that all of the professors on this list have been teaching for at least ten years. 

Citation Rank

Faculty Name

School

1

Mark

Lemley

Stanford University

2

Robert

Merges

University of California, Berkeley

3

Rebecca

Eisenberg

University of Michigan

4

Dan

Burk

University of California, Irvine

5

Edmund

Kitch

University of Virginia

6

Rochelle

Dreyfuss

New York University

7

Paul

Goldstein

Stanford University

8

Pamela

Samuelson

University of California, Berkeley

9

Richard

Posner

University of Chicago

10

John

Duffy

George Washington University

11

Janice

Mueller

University of Pittsburgh

12

Arti

Rai

Duke University

13

Martin

Adelman

George Washington University

14

Julie

Cohen

Georgetown University

15

Maureen

O'Rourke

Boston University

16

A.S.

Oddi

University of Akron

17

Gerald

Mossinghoff

George Washington University

18

Polk

Wagner

University of Pennsylvania

19

Michael

Meurer

Boston University

20

Louis

Kaplow

Harvard University

21

Mark

Janis

Indiana University

22

Lawrence

Lessig

Harvard University

23

William

Landes

University of Chicago

24

James

Bessen

Boston University

If I had included Federal Circuit Judges in this listing, Judges Moore would jump into the top-ten. Likewise, if Donald Chisum was still teaching, he would be the clear #1.  Four GWU faculty members are listed in the top-25 and BU have three ranked faculty members. Harvard, Stanford, Berkeley, and Chicago all had two.

IP Law Journal Ranking: Many law schools have created IP-focused law journals. Using data collected by the Washington & Lee Law Library, I created the following ranking of student-edited IP Law Journals. The ranking is based on how often articles published in each journal are cited in other journals or court cases.  I only included journals with titles that include the terms "Intellectual property", "patent", or "technology." Thus, the Columbia Journal of Law & the Arts is not included in this list.

Rank

School

Journal

Relative Rank

1

Harvard University

Harvard Journal of Law & Technology

100

2

University of California, Berkeley

Berkeley Technology Law Journal

69

3

University of Michigan

Michigan Telecommunications and Technology Law Review

54.6

4

Fordham University

Fordham Intellectual Property, Media & Entertainment Law Journal

39.5

5

Stanford University

Stanford Technology Law Review

37.7

6

Santa Clara University

Santa Clara Computer and High Technology Law Journal

37.4

7

Duke University

Duke Law & Technology Review

36.3

8

Albany Law School

Albany Law Journal of Science & Technology

36.1

9

Boston University

Boston University Journal of Science & Technology Law

35

10

Columbia University

Columbia Science and Technology Law Review

33.7

11

Marquette University

Marquette Intellectual Property Law Review

31.3

12

Franklin Pierce Law Center

IDEA: The Intellectual Property Law Review

30.5

13

University of North Carolina

North Carolina Journal of Law & Technology

29.4

14

University of Minnesota

Minnesota Journal of Law, Science & Technology

29.2

15

University of Virginia

Virginia Journal of Law & Technology

28.9

16

University of Texas

Texas Intellectual Property Law Journal

28.6

17

University of Colorado

Journal on Telecommunications & High Technology Law

26.8

18

Yale University

Yale Journal of Law & Technology

25.7

IP Curriculum: Finally, William Mitchell College of Law has compiled a "Report on Intellectual Property Curricula" at the various law schools and used that to create a ranking based on course offerings.  

Ranking

Law School

Total Points

1

Santa Clara University School of Law

19.5

2

Suffolk University Law School

19

3

Whittier Law School

18

4 (tie)

Franklin Pierce Law Center

17

  

Georgetown University Law Center

17

  

Seton Hall University School of Law

17

  

The George Washington University Law School

17

  

William Mitchell College of Law

17

9

The John Marshall Law School

16

10 (tie)

Chicago-Kent College of Law Illinois Institute of Technology

15

  

The University of Akron School of Law

15

12

DePaul University College of Law

14.5

13

Vanderbilt University Law School

14

14

Benjamin N. Cardozo School of Law-Yeshiva University

13.5

15 (tie)

Loyola University Chicago School of Law

13

  

Thomas Jefferson School of Law

13

17 (tie)

George Mason University School of Law

12

  

Michigan State University College of Law

12

  

New York Law School

12

  

University of Houston Law Center

12

  

University of Illinois College of Law

12

  

University of Pittsburgh School of Law

12

  

University of San Diego School of Law

12

24

University of Richmond School of Law

11.5

25 (tie)

Arizona State University-Sandra Day O'Connor College of Law

11

  

Golden Gate University School of Law

11

  

Pepperdine University School of Law

11

  

Seattle University School of Law

11

  

Stanford University Law School

11

  

University of California-Berkeley School of Law

11

  

University of California-Hastings College of the Law

11

  

University of San Francisco School of Law

11

  

Washington University School of Law

11

  

Patently-O Bits and Bytes

Patent
  • PTO General Counsel James Toupin is retiring this week. Raymond Chen is the Deputy GC and Solicitor.
  • Next Week’s Miami-Based IP Law Summit (March 25-27). Speakers include top IP counsel from Home Depot, Alcoa, Altera, Medtronic, Lenovo, Du Pont, Caterpillar, Coach, Tyco, NBA, Ralph Lauren, Burger King, Kodak, Southwire, Xerox, Darden, Bayer, Harley-Davidson, Boeing, and IBM. I am also speaking as are Robert Stoll (Commissioner of Patents) and Lynne Beresford (Commissioner of Trademarks). [Link]
  • Corporate IP Counsel Summit (April 27-28) in New York. Speakers include Patently-O contributors David Boundy (Cantor Fitz), Charles Macedo, Bruce Pokras (Pfizer), Tim Wilson (SAS), and myself. Others speakers are coming from the NFL, NBC, AT&T, Motorola, Kodak, Siemens, Raytheon, Go Daddy, ICANN, Purdue, IBM, Thomson Reuters, New Balance, etc. (Use code FCZ835 when registering for a $500 discount). [Link]
  • GWU is hosting excellent patent law symposium on May 11, 2010 with Chief Judge Michel, PTO Director Kappos and former Director Dickinson, Judges Fogel, Huff & Ericksen, Professors Duffy and Whealan, and top IP counsel from SAP, Motorola, Microsoft, Eli Lilly, Caterpillar, etc. [Link]
  • 2010 Midwest IP Institute on May 7, 2010 in Overland Park, Kansas with former PTO Director Bruce Lehman, Professor David Hricik, Steve Kunin and Ken Germain. Sponsored by the Kansas Bar Ass’n.
  • 110 Year Patent: Last week’s Amazon 1-Click post included a typo suggesting that the patent would expire in the year 2107 (instead of 2017). Several readers wrote-in with corrections including one who questioned: “Is this is a typo or is it Patent Reform?”
  • From its founding, the Franklin Pierce Law Center has focused on teaching patent law and training future patent attorneys. The law school today announced that it is merging with the University of New Hampshire and will become the University of New Hampshire School of Law. The school plans to maintain its well known Franklin Pierce brand-name in the IP market for some time. Franklin Pierce is a headline-advertiser on the Patently-O Job Board.
  • Darby & Darby is dissolving. Of the “big-five” New York IP Firms, only Kenyon is left.
  • Although Not Directly Patent Related, I have really enjoyed reading these working papers by my University of Missouri Law School colleagues:
  • And another non-patent post from my favorite local food writer Scott Rowson: “So the recipe for no-knead bread in last week’s Tribune doesn’t actually say ‘remove dough from towel before cooking,’ so it appears I may be responsible for a few dozen incinerated tea towels around town. Seriously, three people have emailed questions along those lines. So yes, remove the towel from the bread before BAKING IT FOR 45 MINUTES. Failure to do this will cause a fire. Also, shut the oven door after placing the pot inside – I left that out too.” [Link]

Patently-O Bits and Bytes

Patent
  • PTO General Counsel James Toupin is retiring this week. Raymond Chen is the Deputy GC and Solicitor.
  • Next Week’s Miami-Based IP Law Summit (March 25-27). Speakers include top IP counsel from Home Depot, Alcoa, Altera, Medtronic, Lenovo, Du Pont, Caterpillar, Coach, Tyco, NBA, Ralph Lauren, Burger King, Kodak, Southwire, Xerox, Darden, Bayer, Harley-Davidson, Boeing, and IBM. I am also speaking as are Robert Stoll (Commissioner of Patents) and Lynne Beresford (Commissioner of Trademarks). [Link]
  • Corporate IP Counsel Summit (April 27-28) in New York. Speakers include Patently-O contributors David Boundy (Cantor Fitz), Charles Macedo, Bruce Pokras (Pfizer), Tim Wilson (SAS), and myself. Others speakers are coming from the NFL, NBC, AT&T, Motorola, Kodak, Siemens, Raytheon, Go Daddy, ICANN, Purdue, IBM, Thomson Reuters, New Balance, etc. (Use code FCZ835 when registering for a $500 discount). [Link]
  • GWU is hosting excellent patent law symposium on May 11, 2010 with Chief Judge Michel, PTO Director Kappos and former Director Dickinson, Judges Fogel, Huff & Ericksen, Professors Duffy and Whealan, and top IP counsel from SAP, Motorola, Microsoft, Eli Lilly, Caterpillar, etc. [Link]
  • 2010 Midwest IP Institute on May 7, 2010 in Overland Park, Kansas with former PTO Director Bruce Lehman, Professor David Hricik, Steve Kunin and Ken Germain. Sponsored by the Kansas Bar Ass’n.
  • 110 Year Patent: Last week’s Amazon 1-Click post included a typo suggesting that the patent would expire in the year 2107 (instead of 2017). Several readers wrote-in with corrections including one who questioned: “Is this is a typo or is it Patent Reform?”
  • From its founding, the Franklin Pierce Law Center has focused on teaching patent law and training future patent attorneys. The law school today announced that it is merging with the University of New Hampshire and will become the University of New Hampshire School of Law. The school plans to maintain its well known Franklin Pierce brand-name in the IP market for some time. Franklin Pierce is a headline-advertiser on the Patently-O Job Board.
  • Darby & Darby is dissolving. Of the “big-five” New York IP Firms, only Kenyon is left.
  • Although Not Directly Patent Related, I have really enjoyed reading these working papers by my University of Missouri Law School colleagues:
  • And another non-patent post from my favorite local food writer Scott Rowson: “So the recipe for no-knead bread in last week’s Tribune doesn’t actually say ‘remove dough from towel before cooking,’ so it appears I may be responsible for a few dozen incinerated tea towels around town. Seriously, three people have emailed questions along those lines. So yes, remove the towel from the bread before BAKING IT FOR 45 MINUTES. Failure to do this will cause a fire. Also, shut the oven door after placing the pot inside – I left that out too.” [Link]

Law School Summer Programs in Intellectual Property for 2010

Patent

When law students ask, I generally recommend pursuing practical experience rather than summer school. This year, however, summer jobs for law students are scarce — making school a more likely alternative. Summer programs that focus on intellectual property (IP) law are especially interesting because they draw-together a critical mass of students and professors who are interested in patent and copyright issues.  In those settings, the intellectual property law discussions tend to spill-out from the class into lunch, dinner, and late-night pub conversations or debates.  In my experience, summer classes are often less rigorous than the ordinary law school classes. For that reason, I might avoid taking core-classes such as US Patent Law.

I created a simple spreadsheet guide [Download IPSummer2010] to help students locate intellectual property focused summer programs. To create the guide, I contacted all of the US patent law professors that I know and also sent an e-mail to the Deans of Academic Affairs of US Law School. There may be other programs out there — notably, many law schools offer summer classes in IP law (although I wouldn't call those IP Programs).

Study Abroad: The list includes two programs in Munich, Germany (George Washington and Santa Clara); two programs in China (Franklin Pierce and John Marshall); and two programs on the isles (Loyola of LA in London and Franklin Pierce in Cork). Although not strictly an intellectual property program, UW/Marquette program in Giessen Germany will include an IP component.

In the US, Franklin Pierce's Intellectual Property Summer Institute (IPSI) has been a mainstay in Concord, NH. This year, they expect to offer 15 different courses focused on intellectual property (students are only allowed to earn up to 6 credits). I taught in Concord in the summer of '07 and had a fabulous time. Although the information is not yet fully available, American University is also planning a summer program in Washington DC as part of its Program on Information Justice and Intellectual Property (PIJIP). On the west coast, Santa Clara is again offering several IP classes through its Hi-Tech Summer School in Santa Clara (Silicon Valley). Folks at SUNY Buffalo (Buffalo, NY) and TM Cooley (Auburn Hills, MI) also wrote in to note that they will be offering IP classes within their summer offerings. I suspect that other schools will do the same.

All of the IP summer programs have limited enrollment.

Files: Download IPSummer2010.

Bits and Bytes: Hot News

Bits and Bytes, Patent,

Today’s Posts that may have been lost in the shuffle:

Let’s meet up:

  • The MBHB law firm has been a longtime sponsor of Patently-O. (Thanks!) The firm is co-sponsoring a reception and dinner at the newly constructed wing of the Art Institute of Chicago on Monday, September 14, 2009 as part of the part of the Intellectual Property Owners Ass’n (IPO) annual meeting. I hope to see you there. [IPO]

Examining:    

Holman: A Contrarian Law Professor’s Two Cents on the Arkansas Carpenter’s (Ciprofloxacin) Petition for Certiorari

Academic Studies, Articles and Publications, Patent,

By Christopher M. Holman, Ph.D., J.D., Associate Professor at UMKC Law School

Professor Mark Lemley recently filed an amici curiae brief on behalf of himself and a cohort of prominent professors of law, economics, and business in support of a petition for certiorari in Arkansas Carpenter's Health and Welfare Fund v. Bayer (the "Professors’ Brief").[1] Joining the professors as amici on the brief are the American Antitrust Institute, the Public Patent Foundation, and AARP. These professors and organizations are asking the Supreme Court to review and reverse the Federal Circuit's decision in In re Ciprofloxacin Hydrochloride Antitrust Litigation.[2] Arkansas Carpenter's is the latest in a string of certiorari petitions that have been filed in cases involving an unsuccessful antitrust challenge to a so-called “reverse payments settlement” between a drug patent owner and a potential generic competitor. So far the Supreme Court has denied all of the petitions.

The defining characteristic of a reverse payments settlement is the transfer of some form of consideration, often but not always cash, from the patent owner to the alleged infringer. In most settlements of patent infringement suits any payment typically flows from the alleged infringer to the patent owner, i.e., in the "forward" direction. Reverse payment settlements of challenges brought against prescription drug patents under the Hatch-Waxman Act have been controversial for years. The FTC and others charge that these agreements are anti-competitive and result in substantially higher prescription drug prices for consumers (and ultimately third-party payers such as the government). The atypical direction of the payment is considered suspect by many who view it as evidence that the merits of the patent case must be weak, and argue that the branded drug company is in effect paying the generic company to stay off the market and using the patent as a mere pretense to skirt antitrust liability. Clearly, absent the patent a naked agreement by a generic drug company to stay off the market in exchange for cash would constitute an antitrust violation.

Nonetheless, courts who have considered the legality of reverse payment settlements have repeatedly concluded that, in view of the incentives and dynamics created by the unique structure of a patent infringement suits brought under the Hatch-Waxman Act, it is neither surprising nor particularly suspicious to find payments flowing from the patent owner to the alleged infringer in the settlement of these suits. In fact, even the FTC has acknowledged that at least some reverse payment settlements are legitimate and even pro-competitive. In most patent infringement litigations, the alleged infringer faces the prospect of potentially large money damages based on its past infringement, so there is often an incentive to pay the patent owner to settle the lawsuit and avoid this risk. In contrast, Hatch-Waxman litigation generally occurs before the potentially infringing generic drug goes on the market. The generic drug company typically faces no risk of money damages for past infringement. At the same time, the drug patent owner faces huge potential financial losses if even one court finds its patent invalid or not infringed, and given the uncertainty patent litigation, particularly at the district court level, it is not surprising that some patent owners would be willing to pay to settle the lawsuit and resolve the uncertainty.

The Professor's Brief is essentially an updated version of a brief Professor Lemley filed in 2006 in support of a petition for certiorari in In re Tamoxifen, a reverse payment settlement antitrust challenge arising out of the Second Circuit. In 2006, I seriously considered signing on to his Tamoxifen amici brief; without having delved into the issue, the notion of reverse payments settlements as characterized by Professor Lemley and others struck me as suspicious and anti-competitive . After all, why would a patent owner pay an alleged infringer to settle a lawsuit unless the merits of the patent case were weak? Under these circumstances, is it not logical to infer that the parties are using the patent lawsuit as a mere pretense to provide cover for what is in actuality an agreement between potential competitors not to compete? However, before I signed on to the brief I decided to read the Second Circuit'sTamoxifen decision, as well as the reverse payments settlement decisions that had already been issued by the Sixth and Eleventh circuits. In his brief, Professor Lemley argued that the decisions from these other circuits were in conflict with the Second Circuit's decision in Tamoxifen. After reading the cases, I found that I disagreed with Professor Lemley's interpretation of the decisions, and concluded that in fact there is no split between the circuits. In fact, the decisions by the Second, Sixth and Eleventh circuits (and now the Federal Circuit) are all quite consistent, taking into account that each case involves its own unique settlement agreements and other surrounding facts, and that the decisions necessarily reflect the facts of the individual case being decided.

Reading these decisions sparked my curiosity, particularly since my interpretation of the case law diverged substantially from that of Lemley and many other academic commentators. I decided to research the topic, and in 2007 I published an article entitled “Do Reverse Payments Settlements Violate the Antitrust Laws?”[3] In the article, I survey the diverse array of patent settlements that have been lumped together under the imprecise label "reverse payment settlement,” and explain the factors that motivate the structure of these settlements. After reviewing the facts surrounding specific settlement agreements, and considering the well reasoned explanations of various judges who have rejected the notion that the mere presence of a reverse payment can render an otherwise legitimate patent settlement illegal, I came to disagree with the position propagated by the FTC and academics such as Professor Lemley, i.e., that the mere inclusion of a reverse payment in an otherwise legal patent litigation settlement renders the agreement per se or presumptively in violation of the antitrust laws. Moreover, my view is aligned with that of the vast majority of courts that have addressed the issue. After a close reading of the decisions, it is clear to me that the purported split between the circuits has so far failed to materialize, although the situation could change if and when other circuits weigh in on the issue.

In this short article penned for Patently-O, I will challenge some of the specific assertions made in the Professors’ Brief. For simplicity, many of the citations in this article are to my law review article. Those interested in a more expansive treatment of the subject are encouraged to consult the law review article, which includes primary cites to the cases and other authorities.

(more…)

Patently-O Bits and Bytes No. 103: Events and Jobs

Bits and Bytes, Patent

Upcoming Events:200904151129.jpg

New Source of Upcoming Events: The Patently-O Events Calendar (BETA VERSION). HTTP://www.patentyo.com/calendar. We’re still working on the formatting & integration. The best way to post an event is to use create the event in your calendar (such as Outlook, Google Calendar, or iCal), and then invite patentevents@gmail.com. Be sure to include a URL in the description.

Job Postings from April 2009:

Query:

  • I should know this, but I don’t recall the answer: Suppose a recently issued patent was filed in 2004 and claims to be a continuation-in-part of another application filed in 2000. In the new patent, some of the claims were fully described and enabled in the 2000 application while other claims in the new patent include matter only found in the 2000 application. Will the enforceable patent term differ between the two sets of claims? If so, does the PTO require a terminal disclaimer if the claims are not patentably distinct?

Written Description: Pioneering Claims Require More Expansive Written Description

Patent, , , ,

Ariad v. Eli Lilly (08-1248.pdf, Fed. Cir. 2009) (Judge Moore; Concurring opinion by Judge Linn)

Ariad sued Lilly for infringing its patent that claims a method of reducing NF-κB (“en eff kappa be”) activity. The listed inventors of the patent include, inter alia, two Nobel Laureates, and the original assignees include Harvard, MIT, and the Whitehead Institute. A jury found that both Evista and Xigris infringe, and the judge denied Lilly’s JMOL motion on invalidity. The resulting judgment was for $65 million in past damages and an ongoing royalty of 2.3% of sales.

On appeal, the Federal Circuit reversed the lower court’s decision – finding the asserted claims invalid for lack of written description. The written description requirement is intended to ensure that the inventors “disclose the technologic knowledge upon which the patent is based [and] demonstrate that the patentee was in possession of the invention that is claimed.” (Quoting Capon). Consequently, the disclosure in the patent document “must clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed” and was in “possession” of the invention at the time of filing including “all elements and limitations.” In other words, Ariad “must describe some way of performing the claimed methods.”  The actual level of disclosure depends upon several factors such as the extent of prior art, maturity of the science, and the “predictability of the aspects at issue.”

Here, it was clear that the invention was “extraordinarily creative” in a highly unpredictable field with little prior art available. Ariad’s expert even testified that the invention necessitated the development of a new vocabulary. All these factors indicate that the written description bar will be set high.

Here, Ariad’s description was scant on real examples

The ’516 patent discloses no working or even prophetic examples of methods that reduce NF-κB activity, and no completed syntheses of any of the molecules prophesized to be capable of reducing NF-κB activity.

Without specific examples, Ariad attempted to show that its description was sufficient by bolstering the skill of a PHOSITA. Unfortunately for the Patentee, the Jury found an early effective filing date and much of Ariad’s evidence showed skill in the art after that 1989 date.

Because written description is determined as of the filing date—April 21, 1989 in this case—evidence of what one of ordinary skill in the art knew in 1990 or 1991 cannot provide substantial evidence to the jury that the asserted claims were supported by adequate written description.  

Although important, these small date issues probably made no difference because the description was so lacking and the prior art so sparse.

The state of the art at the time of filing was primitive and uncertain, leaving Ariad with an insufficient supply of prior art knowledge with which to fill the gaping holes in its disclosure.

“We therefore conclude that the jury lacked substantial evidence for its verdict that the asserted claims were supported by adequate written description, and thus hold the asserted claims invalid.”

Caveat Vindicor: In its conclusion, the court noted that this result likely turned on clam construction. If Ariad had agreed to a narrower construction in litigation or narrower claim language during prosecution, then the written description requirement might have been satisfied. Of course, if it had pursued that strategy, infringement would have likely been lost.

Although Judge Linn concurred in the opinion, he wrote separately to remind readers of his belief that the written description requirement should be eliminated and enablement be allowed to do its job.

Notes:

  • Pioneering inventions are less likely to be found obvious or anticipated. However, one problematic result highlighted by this decision is that those pioneer patents are more likely to be trapped by the formalities of the patent system.

Bits and Bytes No. 94

Bits and Bytes, Conference or CLE, Inventorship, Patent

Inventors

  • I used a software algorithm to count the number of inventors in each utility patent application published June 2007- February 2009. The histogram below shows the result. The median application has two inventors. One German application lists 100 inventors (I’ll post the patent number when I get back to my office).

Revisiting Upcoming Conferences

  • Northwestern Law School’s Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday).
  • Howard University’s Institute of Intellectual Property and Social Justice IP Symposium – March 5-6. Day two will focus in patent issues and will include a year in review by Irving Kayton, a discussion of design patent issues by Jon Wood (Bridgestone); and panels that include Chief Judge Michel and Judge Linn as speakers.
  • Federal Circuit Year in Review (St. Louis) – March 13 – I’ll be presenting this one hour session sponsored by the Bar Assn. of Metropolitan St. Louis.
  • The IP Law Summit – March 17-19 – hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).
  • The Federal Circuit Symposium – March 18. Sponsored by the FCBA and GWU Law School. Speakers include Chief Judge Michel, and Judges Friedman, Newman, and Rader; Senator Specter (invited); a heavy Supreme Court perspective with the five former solicitors general; academics speaking include John Duffy, Arti Rai, John Golden, and Rochelle Dreyfuss may largely focus on the role of the Federal Circuit.
  • Fordham IP Conference (NYC) – April 15-16. This conference has strong cross-Atlantic ties and will include judges and scholars from both continents.
  • IAM’s IP Business Congress in Chicago – June 21-23 – As the name suggest, this annual event focuses on how IP can be used in business. Sessions include “brand IP, strategic IP and business alignment, and IP value creation, as well as a range of breakouts examining legal, financial, strategic and business-related topics.”

Patently-O Bits and Bytes No. 90

Bits and Bytes, Patent, Patent Legislation,
  • Patent Reform I: In a recent article, DC insider Hal Wegner noted that there is “reason for optimism that patents will not be put on the back burner by the new President.” Wegner pointed to the President’s pro-reform start and to the President’s Technology Agendy that calls for: (1) ensuring that American IP is protected abroad and (2) reforming the patent and copyright systems “while ensuring that intellectual property owners are fairly treated.” The agenda speaks specifically to patent reform: “Reform the Patent System: Ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration. Give the Patent and Trademark Office (PTO) the resources to improve patent quality and open up the patent process to citizen review to help foster an environment that encourages innovation. Reduce uncertainty and wasteful litigation that is currently a significant drag on innovation.” [Read the Technology Agenda]
  • Patent Reform II: Although Wegner noted “optimism,” many patent industry insiders may be pessimistic that there is a high likelihood of patent reform. In particular, the technology agenda statements, coupled with Professors Sprigman and Rai as advisors, further coupled with the rumored appointment of John Thompson as Secretary of Commerce point toward legislative patent reforms being along the same lines as eBay (weakening injunctions), KSR (making it easier to find patents obvious); VW (weakening plaintiff’s choice of forum); Bilski (limiting patentable subject matter); and Seagate (limiting damage awards).
  • Patent Reform III: On the other hand, Professors Rai and Sunstein are both major administrative reformers. There is hope that their style of internal PTO reforms – made through rule changes and standard operating procedures – could dramatically change the PTO for the better.
  • Role of the Secretary of Commerce: 35 USC 1(a) establishes the Patent Office (PTO) within the Department of Commerce. However, the statute is clear that the PTO has some power independent of the larger department: “The [PTO] is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the [PTO] shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law.”

CAFC Affirms PTO’s right to fire quality assurance specialist for 35%+ error rate.

Patent

Asokkumar Pal v. Department of Commerce (Fed. Cir. 2008)(nonprecedential)

Pal was a quality assurance specialist at the USPTO. His job was to review patent examiner decisions and determine whether the examiner made any ‘errors’ in either rejecting or allowing claims. In 2005 and 2006, the PTO reviewed 16 randomly selected cases from Pal’s file to determine whether he was properly reviewing examiner decisions. They found he was not making the correct decisions – that he erred more than 35% of the time. (A 25% error rate would have been acceptable). Acting on the advice of Pal’s supervisor and another SPE, Peggy Focarino decided to fire Pal. Focarino’s decision was upheld by the Merit Systems Protection Board (MSPB). Pal then appealed to the Federal Circuit.

Standard of Review: The Federal Circuit has jurisdiction over MSPB appeals. Most MSPB appeals to the Federal Circuit are affirmed. This result can be explained by the “highly deferential standard of review” given to the board. The Federal Circuit will only overturn an MBPB decision that is “arbitrary, capricious, an abuse of discretion or otherwise not in accordance with law.” Factual determinations are only reviewed for “substantial evidence.” Thus, “if the Board rests its decision on evidence that could lead a reasonable mind to reach the conclusion reached by the Board, we must accept the Board’s decision.

On appeal, Pal argued that the PTO’s judgment was faulty because it only looked at 16 cases in determining his error rate rather than his entire body of work (or his work spanning his probationary period). The Federal Circuit rejected that argument finding “no requirement that the agency must use any particular method for picking which work performed … will be subject to test.” In addition, Focarino did not err in discussing the case with a SPE who was familiar with the technology.

Mr. Pal had been with the Patent Office for 25 years and had received 22 “outstanding” performance evaluations and two “commendable” performance evaluations. His performance evaluation of “unacceptable” was his last and led to this cause of action. During his years, Mr. Pal trained junior examiners, taught the MPEP, and is a registered patent agent. The MSPB had noted that “it is extremely unfortunate that the agency could not have found another position for the Appellant, who seems to have many talents and has been a successful Federal employee for most of his lengthy career.” However, the decision to fire an employee versus demote an employee is within the discretion of the PTO.

In his brief, Mr. Pal argued that other similarly situated employees had mistake rates “as high as 45-50 percent” that “were never rated unacceptable.” That argument was not addressed by the Federal Circuit.

Patent Practitioner Ethics Update

Patent,

In a recent presentation, PTO Discipline Director Harry Moatz repeated his statements regarding a practitioner’s duty to make reasonably inquiry prior to submitting any papers to the USPTO. “Practitioners submitting papers must read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety … regardless of the source of the paper.” The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. § 11.18(b). That section requires that submitted papers be submitted only for proper purposes and that any claims made be legally warranted. Section (b)(1) requires that all statement made be believed to be true and that no statement “covers up by any trick, scheme or device a material fact.” Section (b)(2) goes on to require that the person filing the paper actually make “an inquiry reasonable under the circumstances” to ensure that the paper is not being presented for any improper purpose and that the contentions are “warranted by existing law or by a nonfrivolous argument [to change] existing law.”

Mr. Moatz provides several examples that could be seen as failure to make a reasonable inquiry: (1) Filing an application with claims that are anticipated by at least one publication authored by one of the inventors. (2) Burying a reference material to patentability among a large number of cumulative references. (3) Filing an application with one or more claims unpatentable over a combination of prior art references cited by applicant in the specification.

37 CFR § 11.18 (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and

(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,

(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;

(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;

(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

In his presentation, Mr. Moatz listed the primary complaints that he receives against patent practitioners. They include:

  • Neglect.
  • Lack of candor (Either to client or the PTO).
  • Failure to make reasonably inquiry.
  • Failure or delay in filing application
  • Failure to respond to OA (even when client has not paid)
  • Misuse of the certificate of mailing
  • Insufficient funds
  • Failure to pay issue fee
  • Failure to revive
  • Failure to turn over files to new attorney
  • Failure to communicate with client

Additional reasons for ethical sanction include DUIs; unauthorized taking of prescription meds; and disbarment.  Under the new ethics rules (Aug 2008), a practitioner must notify the OED Director within 30 days of being convicted of “any” crime. The PTO will then determine whether the conviction is serious enough to merit interim suspension. Practitioner must also give notice of disbarment within 30 days.  The new rules also provide for “disability inactive status” when a practitioner is judged legally incompetent.

Notes: