In a December 2011 order, the Delaware district court awarded preliminary injunctive relief to Sciele and Shionogi and forcing Lupin to stop selling generic versions of the patentee’s diabetes drug Fortamet (metformin). After an emergency motion, the district court refused to stay relief pending appeal. Based upon a separate emergency motion, the Court of Appeals for the Federal Circuit has now vacated the preliminary injunction and remanded the case for a new hearing.
Pre-hearing motions to the Federal Circuit are normally decided by a designated motions judge. Typically, the Federal Circuit judges rotate through that position on a monthly basis. Simple procedural motions are pushed-down to the clerk to handle. At times, more complex motions are pushed-up to the merits panel who will hear the substantive portion of the case. Motions for emergency stay of injunctive relief are typically in the latter category being pushed to the merits panel because judging the motion typically requires a substantive review of the merits of the appeal. In this case, Judges Lourie, Prost, and Moore decided the motion.
Under the Federal Rules of Civil Procedure, a losing party has a right to delay (stay) payment of monetary damages pending appeal of the decision. That right, however, does not extend to staying an order for injunctive relief. Thus, in those cases the losing party must file emergency motions for a stay pending appeal.
Along the lines of eBay, appellate courts apply a four factor test to determine whether to issue a stay of injunctive relief pending appeal. The party requesting the stay must show (1) a likelihood of success on the merits of the appeal; (2) that the requesting party will suffer irreparable injury absent a stay; (3) that the stay will not unduly harm other parties interested in the proceeding; and (4) that a stay serves the public interest. The Federal Circuit has held that either of the first two factors can be (and often are) dispositive. Namely, the court has held that the party can be awarded a stay based upon either (1) a strong likelihood of success on the merits of the appeal or (2) a substantial case on the merits coupled with harm factors that “militate in its favor.”
Here, the district court had rejected the defendant’s obviousness argument but did not make any proper finding of facts or conclusions of law regarding that argument. On appeal, the Federal Circuit held that the district court should have made “an independent assessment” of the obviousness defense and that failure prevents the Federal Circuit from “engaging in a meaningful review of the issue.” As such the court vacated and remanded “for a proper analysis.”
In the separate decision of Midtronics v. Aurora Performance (Fed. Cir. 2012), the Federal Circuit has also awarded an emergency stay of relief pending appeal. In the Midtronics case, Judge Shadur of the Northern District of Illinois ordered the adjudged infringer to issue a general recall of its battery testing devices and pay end users to return the infringing product. BPPower appealed and also requested an emergency stay of the order pending resolution of the appeal. Without substantive opinion, the same panel of Judges Lourie, Prost, and Moore issued a stay of relief pending the outcome of the appeal.
The US Department of Commerce recently performed an audit and evaluation of the USPTO's Hoteling program. The report shows that the average Patent Hoteling Program (PHP) examiner spends 66.3 more hours a year examining patents than does the average in-house examiner (which translates to reviewing about 3.5 more patent applications a year. However, the report shows that PHP participants are no more efficient at reviewing patent applications than individuals at the USPTO headquarters. At the end of the fiscal year 2011 over 2,600 patent examiners were Hoteling. To be able to participate in the PHP an examiner must be GS-12 or above, worked at least 2 years at the USPTO, passed the certification exam (essentially the Patent Bar), & currently not under any warnings. [Link]
U.S. House introduces bill to amend design patent law
The proposed House bill, known as the Promoting Automotive Repair, Trade, and Sales (PARTS) Act, would reduce the time period when auto manufacturers are able to enforce design patents on collision repair parts against alternative suppliers from 14 years to 30 months. The bill claims that it would save Americans money on car parts, by removing auto manufacturer monopolies from the equation. [Link]
Can University Tech Transfer save the Pharma Industry?
The pharmaceutical industry has been hit hard by the fall in revenue because of expiring patents. Pfizer's profit declined 50% because of Lipitor going into the public domain. Eli Lilly's profit dropped 27% because of Zyprexa going generic. AstraZeneca revenue declined and they plan to lay off 7,350 people, because Nexium fell out of patent protection in Europe. Also, later this year Plavix and Singulair will face competition, which will probably cause those companies' profits to drop. With all of these multi- billion dollar patents expiring, it seems that pharma companies need new compounds and drugs to increase profit. I think that Universities will be the key to the pharma industry. Universities have many patents waiting to be licensed by big companies that could be very profitable for both the University and the company. The problem that I see is that there is a lack of communication between companies and Universities. Most University Tech Transfer offices are limited in what they can do, and if they do not have an inside connection at a company, it is difficult to market an invention to a big company. This problem can be overcome in many ways; however it would seem that an intermediary may be needed. An intermediary would be of great value if they can connect pharma companies (or companies in general) with University Tech Transfer offices to help broker a deal. While this is not a new idea in the patent world, I do not think that many universities currently use individuals from the outside to help get technology licensed. [Link]
Patent Jobs:
Apple seeks to hire a Sr. IP Counsel with 6+ years of experience in patent disputes to work at their Cupertino location. [Link]
Sughrue Mion is searching for candidates for an associate or technical specialist positions with a BS in chemical fields and candidates with Ph.D. level education in Molecular/Cell biology to work in their D.C. office. [Link]
Brookstone is looking for IP Counsel with a minimum of 5 years of experience to work at their Merrimack, New Hampshire location. [Link]
Christopher & Weisberg is seeking a patent attorney with 1-5 years of experience and degree in EE to work in their Fort Lauderdale office. [Link]
Harness, Dickey & Pierce is searching for a patent prosecution associate with 3-4 years of experience and Bachelor's degree in Biotech or a Biotech-related degree to work in their Saint Louis office. [Link]
Faegre Baker Daniels is looking for an IP associate with degree in EE, ME, CE, physics, or chemistry and up to 5 years of patent prosecution experience to work in their Fort Wayne, Indiana office. [Link]
Bluestone Innovations is seeking to hire in house counsel with 5 years of patent litigation experience to work at their Reston, Virginia location. [Link]
Upcoming Events:
The New Jersey IP Association is sponsoring, The Inside Track to the Proposed Rules for Implementation of the America Invents Act on February 7 in Trenton, NJ. Featured speakers include: David Kappos, Philip Johnson, and Kenneth Nigon. [Link]
The Emory Law Journal will hold The 2012 Randolph W. Thrower Symposium, Innovation For the Modern Era: Law, Policy, and Legal Practice in a Changing World on February 9. The symposium is free and open to the public. [Link]
The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
IBC Legal's 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conferencebrings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of coreFDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
The US Department of Commerce recently performed an audit and evaluation of the USPTO's Hoteling program. The report shows that the average Patent Hoteling Program (PHP) examiner spends 66.3 more hours a year examining patents than does the average in-house examiner (which translates to reviewing about 3.5 more patent applications a year. However, the report shows that PHP participants are no more efficient at reviewing patent applications than individuals at the USPTO headquarters. At the end of the fiscal year 2011 over 2,600 patent examiners were Hoteling. To be able to participate in the PHP an examiner must be GS-12 or above, worked at least 2 years at the USPTO, passed the certification exam (essentially the Patent Bar), & currently not under any warnings. [Link]
U.S. House introduces bill to amend design patent law
The proposed House bill, known as the Promoting Automotive Repair, Trade, and Sales (PARTS) Act, would reduce the time period when auto manufacturers are able to enforce design patents on collision repair parts against alternative suppliers from 14 years to 30 months. The bill claims that it would save Americans money on car parts, by removing auto manufacturer monopolies from the equation. [Link]
Can University Tech Transfer save the Pharma Industry?
The pharmaceutical industry has been hit hard by the fall in revenue because of expiring patents. Pfizer's profit declined 50% because of Lipitor going into the public domain. Eli Lilly's profit dropped 27% because of Zyprexa going generic. AstraZeneca revenue declined and they plan to lay off 7,350 people, because Nexium fell out of patent protection in Europe. Also, later this year Plavix and Singulair will face competition, which will probably cause those companies' profits to drop. With all of these multi- billion dollar patents expiring, it seems that pharma companies need new compounds and drugs to increase profit. I think that Universities will be the key to the pharma industry. Universities have many patents waiting to be licensed by big companies that could be very profitable for both the University and the company. The problem that I see is that there is a lack of communication between companies and Universities. Most University Tech Transfer offices are limited in what they can do, and if they do not have an inside connection at a company, it is difficult to market an invention to a big company. This problem can be overcome in many ways; however it would seem that an intermediary may be needed. An intermediary would be of great value if they can connect pharma companies (or companies in general) with University Tech Transfer offices to help broker a deal. While this is not a new idea in the patent world, I do not think that many universities currently use individuals from the outside to help get technology licensed. [Link]
Patent Jobs:
Apple seeks to hire a Sr. IP Counsel with 6+ years of experience in patent disputes to work at their Cupertino location. [Link]
Sughrue Mion is searching for candidates for an associate or technical specialist positions with a BS in chemical fields and candidates with Ph.D. level education in Molecular/Cell biology to work in their D.C. office. [Link]
Brookstone is looking for IP Counsel with a minimum of 5 years of experience to work at their Merrimack, New Hampshire location. [Link]
Christopher & Weisberg is seeking a patent attorney with 1-5 years of experience and degree in EE to work in their Fort Lauderdale office. [Link]
Harness, Dickey & Pierce is searching for a patent prosecution associate with 3-4 years of experience and Bachelor's degree in Biotech or a Biotech-related degree to work in their Saint Louis office. [Link]
Faegre Baker Daniels is looking for an IP associate with degree in EE, ME, CE, physics, or chemistry and up to 5 years of patent prosecution experience to work in their Fort Wayne, Indiana office. [Link]
Bluestone Innovations is seeking to hire in house counsel with 5 years of patent litigation experience to work at their Reston, Virginia location. [Link]
Upcoming Events:
The New Jersey IP Association is sponsoring, The Inside Track to the Proposed Rules for Implementation of the America Invents Act on February 7 in Trenton, NJ. Featured speakers include: David Kappos, Philip Johnson, and Kenneth Nigon. [Link]
The Emory Law Journal will hold The 2012 Randolph W. Thrower Symposium, Innovation For the Modern Era: Law, Policy, and Legal Practice in a Changing World on February 9. The symposium is free and open to the public. [Link]
The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
IBC Legal's 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conferencebrings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of coreFDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
Dealertrack v. Huber (Fed. Cir. 2012) Download 09-1566 Panel: Linn (author), Plager (concurring in part and dissenting in part), and Dyk
The Federal Circuit's opinion in Dealertrack adds to the evolving law on subject matter patentablility of computer-related inventions. It should be read in connection with two other recent decisions in this area, Ultramercial v. Hulu, 657 F.3d 1323 (Fed. Cir. 2011) and CyberSource Corp. v. Retail Decisions, 654 F.3d 1366 (Fed. Cir. 2011).
At issue was the subject matter patentability of claims 1, 3, and 4 of Patent No. 7,181,427. Claim 1 is representative:
1. A computer aided method of managing a credit application, the method comprising the steps of: [A] receiving credit application data from a remote application entry and display device; [B] selectively forwarding the credit application data to remote funding source terminal devices; [C] forwarding funding decision data from at least one of the remote funding source terminal devices to the remote application entry and display device; [D] wherein the selectively forwarding the credit application data step further comprises: [D1] sending at least a portion of a credit application to more than one of said remote funding sources substantially at the same time; [D2] sending at least a portion of a credit application to more than one ofsaid remote funding sources sequen-tially until a finding [sic, funding] source returns a positive funding decision; [D3] sending at least a portion of a credit application to a first one of said remote funding sources, and then, after a predetermined time, sending to at least one other remote funding source, until one of the finding [sic, funding] sources returns a positive funding deci-sion or until all funding sources have been exhausted; or, [D4] sending the credit application from a first remote funding source to a second remote finding [sic, funding] source if the first funding source de-clines to approve the credit application.
On appeal, the CAFC agreed with the district court that these claims are "directed to an abstract idea preemptive of a fundamental concept or idea that would foreclose innovation in this area," and thus are invalid under 35 U.S.C. §101. In its simplest form, the court reasoned, the claimed process explains the basic concept of processing information through a clearinghouse. "Neither Dealertrack nor any other entity is entitled to wholly preempt the clearinghouse concept." Slip Op. at 35.
Nor was the link to a computer sufficient to limit the claims to an application of the idea. "The claims are silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method. The undefined phrase "computer aided" is no less abstract than the idea of a clearinghouse itself." Slip Op. at 35. "Simply adding a computer aided limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible." Id. at 36. In essence, the claimed process was akin to the unpatentable binary-coded decimal to pure binary conversion in Gottschalk v. Benson, 409 U.S. 63 (1972), and covered a clearinghouse process "using any existing or future-devised machinery."
This opinion completes a trio of recent opinions dealing with the patentability of computer-related inventions, the others being Ultramercial and CyberSource. In Ultramercial, authored by Chief Judge Rader and joined by Judges Lourie and O'Malley, the court concluded that a process for monetizing copyrighted products using a computer fell on the patentable side of the abstract ideas versus patentable application divide. Reaching the opposite result on the issue of abstractness, the CyberSource panel of Judges Bryson, Dyk (author) and Prost concluded that a method of verifying a credit card transatction over the Internet constituted an unpatentable process. In Dealertrack, the court drew upon the reasoning in CyberSource while distinguishing Ultramercial.
The court also addressed issues of claim construction and indefiniteness. Particularly noteworthy was the court's conclusion that "i.e.:" in the context of a patent-in-suit could not be read definitionally. Slip Op. 17-20.
Towards a more efficient judicial process: Writing in partial dissent, Judge Plager disagreed with the majority's decision to address subject matter patentability:
[A]s a matter of efficient judicial process I object to and dissent from that part of hte opinion regarding the '427 patent and its validity under §101, the section of the Patent Act that describes what is patentable subject matter. I believe that this court should exercise its inherent power to control the processes of litigation, Chamberes v. NASCO, Inc., 501 U.S. 32, 43 (1991), and insist that litigants, and trial courts, initially address patent invalidity issues in infringement suits in terms of the defenses provided in the statute: "conditions of patentability," specifically §§102 and 103, and in addition §§112 and 251, and not foray into the jurisprudential morass of §101 unless absolutely necessary.
Judge Plager appears to be thinking in the same direction as suggested by Professors Crouch and Merges in their recent article Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making, 25 Berkeley Tech. L.J. 1673 (2010), in which they proposed that "the § 101 issue of Bilski be considered only when doing so is absolutely necessary to determine the validity of a claim or claims in a patent. We believe any claim that can be invalidated under one of the less controversial and less complex requirements for patentability—§§ 102, 103, and 112, for instance—ought to be disposed of without considering subject matter patentability. In other words, the Bilski issue should be avoided wherever it is not strictly necessary."
Guest Post by Jon E. Wright and Joseph E. Mutschelknaus of Sterne Kessler Goldstein & Fox, PLLC1
On September 16, 2011, the America Invents Act (“AIA”) changed the threshold standard for initiating inter partes reexamination. The new standard requires a requester to demonstrate that:
[T]he information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request.
America Invents Act – Sec. 6(c)(3)(A)(i)-(ii). We refer to the new standard as the “RLP” standard. The RLP standard is significant because it matches the future standard for initiating inter partes review under the AIA.
This post addresses the new RLP standard. First, we review case law surrounding the “reasonable likelihood” standard as it exists in other contexts such as preliminary injunctions. Next, based on our analysis of every single post-AIA inter partes reexamination the PTO has acted upon, we analyze how the Office has been applying the new RLP standard in reexamination orders. Finally, we consider how inter partes reexamination requests (and future petitions for inter partes review) should be structured for the best chance at meeting the RLP threshold.
The “Reasonable Likelihood” Standard
Patent practitioners are familiar with the “reasonable likelihood” standard in the context of preliminary injunctions. For a court to grant a preliminary injunction, a patentee must demonstrate four factors, one of which is a “reasonable likelihood of success on the merits.” Ranbaxy Pharm., Inc. v. Apotex, Inc., 350 F.3d 1235,1239 (Fed. Cir. 2003). This standard may be instructive in learning how the Office will deal with the new RLP standard for current inter partes reexamination requests and inter partes review petitions later this year.
According to the Federal Circuit, the reasonable likelihood of success standard for preliminary injunctions must be made “in light of the presumptions and burdens that will inhere at trial on the merits….” Id. In the context of inter partes patentability proceedings at the Office, claims do not enjoy the presumption of validity that they do before a district court. Rather, the standard of proof before the Office is the “preponderance of evidence” standard. MPEP § 706.I. The same is true for the new inter partes review proceedings. See AIA § 316(e). Therefore, Requesters (or Petitioners) must demonstrate a “reasonable likelihood” that they can invalidate at least one claim of the patent for which reexamination is sought under the preponderance of the evidence standard.
But what does this really mean? In the context of preliminary injunction proceedings, the Federal Circuit has stressed that “[a]t this preliminary stage, the trial court does not resolve the validity question….” New England Braiding Co., Inc. v. A.W. Chesterton Co., 970 F.2d 878, 882-83 (Fed. Cir. 1992). Rather, the decision maker “must … make an assessment of the persuasiveness of the challenger’s evidence, recognizing that it is doing so without all evidence that may come out at trial.” Id. This is just as true in inter partes reexamination (or review) because both parties to the proceeding are permitted to submit additional evidence in support of their positions, at least during the first round of replies and comments.
Moreover, in addition to recognizing that it may not have all the facts, the decision maker must also assess the persuasiveness of the evidence. This may include making credibility determinations. As the Federal Circuit stated in New England Braiding, “[a] credibility determination is well within the court’s province when ruling on a preliminary injunction motion.” Id.
If the preliminary injunction standard for determining a reasonable likelihood of success on the merits is any guide, we can thus surmise the following with respect to requests for inter partes reexamination (or future petitions for inter partes review):
The request or petition must be based on “evidence,” which at the initial stage will likely be limited to prior art patents or printed publications;
The request or petition must reviewed by the Office under the “preponderance of evidence” standard, with the burden placed on the requester or petitioner;
The request or petition need not conclusively demonstrate unpatentability;
The Examiner (or Board) may properly make credibility determinations; and
The Examiner (or Board) must make an assessment of the persuasiveness of the evidence and accompanying argument set forth by the requester or petitioner, recognizing that it does not have all the evidence.
As shown next, the Office appears to be adhering to these standards.
The Office’s Application of the RLP Standard
As of the date of this post, the Office has acted on forty-two (42) requests for inter partes reexamination that were filed on or after September 16, 2011. The authors analyzed each one to determine how the Office is implementing the new RLP standard. Anecdotal evidence suggests that the Central Reexamination Unit is still struggling with the new standard. But nonetheless, several observations can be made from these orders.
First, despite the change, early data suggests that the Office continues to be granting reexaminations at about the same rate under the new RLP standard as it was under the old “substantial new question” or “SNQ” standard. In fiscal year 2011, for example, the Office granted 342 inter partes reexamination requests out of 366 total decisions. That accounts for a 93% grant rate under the old SNQ standard. Of the 42 orders issued under the new RLP standard, 38 have been granted (at least in part), putting the current grant rate under the RLP standard at about 90%. Thus, while the sample set is still limited, the Office appears to be granting reexamination requests at about the same rate under the RLP standard as it had been under the SNQ standard. This runs contrary to the general belief among practitioners that the RLP standard would be stricter than the SNQ standard.
Second, in finding an RLP, the Office appears to be focusing on the persuasiveness of the requester’s evidence on the merits. The Office is also correctly placing the burden of establishing the reasonable likelihood prevail on the requester. In cases where RLPs are denied, the Office frequently uses language like, “Requester has failed to show the claim step is taught by the reference.” (See, e.g., 95/001,809, p. 6.) At the same time, the Office is not shying away from addressing the underlying legal issues presented in the request, such as claim construction. For example, in several cases, the Office explicitly construed claim terms, and then made a finding that the cited references do not teach claims under that construction. (See, e.g., 95/001,785, 95/001,792.) Thus, in establishing whether there is an RLP, the Office is considering the merits of the cited prior art against the claims on both factual and legal bases.
Third, while the importance of the art’s strength against the claims may have increased with the RLP standard, the importance of the art’s “newness” may have decreased. Under the SNQ standard, the Office would almost always take into account the prosecution history and discuss whether the cited prior art was presented a new light. In contrast, of the forty-two (42) orders issued under the RLP standard, only three (3) make any discussion of the prosecution history or cumulativeness of the art. And in no case did this appear to be dispositive. This is consistent with the AIA, which made the newness requirement effectively discretionary on the Office. See AIA codified at 35 U.S.C. § 325 (“In determining whether to … order a proceeding under [the inter partes reexamination/review chapter], the Director may take into account whether, and reject the … request because, the same or substantially the same prior art or arguments were previously were presented to the Office.”) (emphasis added). In sum, the weight given to the art’s newness appears to be waning.
Practice Tips
Given the above observations, drafting a strong, persuasive request supported by quality prior art references remains paramount under the new RLP standard, just as it was under the old SNQ standard. But in view of the Office’s tendency to now focus more intently on the merits of the individual rejections under the new standard, requesters may want to provide and justify claim constructions in their initial requests. Also, requesters may want to consider including expert declarations with their request, especially if the art upon which the reexamination is based is complicated and would benefit from expert clarification or explanation. Keep in mind, though, that reexaminations must still be based on patents and prior-art publications, not expert declarations.
At the same time, requesters may need less discussion in their requests of how their art is noncumulative or new with respect to what the Office has already considered. This could result in structural change to reexamination requests. For example, prior inter partes reexamination requests usually included two separate questions, one developing and showing the SNQ and a second section with the proposed rejections—i.e., the manner and pertinency of applying the prior-art references. Now, with the increased focus on the substantive merits of the proposed rejections and the decreased focus on newness or cumulativeness of the art, the second section becomes the most important section. Indeed, a fully developed set of proposed rejections would seem to be sufficient in proving up the RLP standard.
In sum, the authors believe it was a good idea for Congress to immediately implement the RPL standard for inter partes reexaminations. It gives patent practitioners a taste of what is to come for inter partes review under the AIA, and the ability to prepare for that change. It also appears as if the Office is adopting evaluation standards similar to those used the context of preliminary injunctions. We hope this post provide some new insight into the RLP standard—a standard with which we will have to live for the foreseeable future.
1Jon Wright is a Director and Joe Mutschelknaus is an Associate at Sterne Kessler Goldstein & Fox, PLLC www.skgf.com. The views expressed herein are the authors’ alone and should not be attributed to the firm or its clients.
Edited on 2/2/2012 to reflect that it was Congress's decision to immediately implement the RPL standard.
Later today I will be testifying in Congress at a hearing on Prior User Rights being held by the House of Representatives Subcommittee on Intellectual Property, Competition and the Internet chaired by Republican Representatives Bob Goodlatte of Virginia and Ben Quayle of Arizona along with Congressman Mel Watt as the ranking member of the Subcommittee. The hearing comes in the wake of the USPTO’s recent Report on Prior User Rights. The primary focus of my testimony is my estimation that prior user rights as circumscribed in the Leahy-Smith America Invents Act are unlikely to have any real or measurable impact on the market for US patents, demand for innovation, or process of patent litigation. I explain this as follows:
There are host of conditions that must be met before the prior user defense can be exerted. Most notably, an accused infringer must be able to show that it (or its predecessor in title based upon limited transfer rights) began to commercially use the invention at least one year before the patentee’s filing date (and even further in advance if the patentee publicly disclosed the invention before filing). In the new statute, the defense only applies if the prior user’s version of the invention was created independently and without derivation from the patentee’s version and the prior user acted in good faith. When formed together, these requirements look something like the eye of the needle and are difficult to pass through.
Further marginalizing the impact of prior user rights is the reality that the defense only adds actual value when the patent being asserted is valid. I.e., if the patent is invalid then there is no need for a prior user defense. The setup of a prior user situation suggests two likely scenarios that would lead to a decision of unpatentability. First, the existence of multiple independent creators of the same invention tends to suggest that the invention itself was obvious and therefore unpatentable. This is even more so in the prior use context because the later filed patent by definition will have a priority date of at least one year later than the user’s first date of commercial use. Using the language of the Supreme Court in its KSR decision: “market forces” likely prompted researchers to take the next step. In addition, the requirement that the prior user commercially used the invention is an indicator, albeit inconclusive, that anticipating prior art may be available to invalidate the patent. Conversely, if the prior user is successful in maintaining the secrecy of its commercial use for that time period, we’re left with the suggestion that the prior user may able to continue to operate in secrecy without being uncovered and thus without being charged with infringement.
My conclusion that prior user rights will have very little impact on innovation and access is also supported by comparative analysis of the impact of prior user rights in various trading partner nations and the already existing US prior user right for business method patents. The USPTO Report correctly indicates that these defenses have seen little to no successful assertion. In the US, prior user rights have been available since 1999 for the limited class of business method patents. During that time, there have been no reported cases where the defense was successfully asserted. During this time, the Court of Appeals for the Federal Circuit decided thousands of patent appeals on almost every imaginable patent doctrine – however the court did not address prior user rights. There was no need because the impact of that defense is so limited.
Two final concepts – lack of assurances and delay in patenting – push me to the same conclusion of little impact. First, I suggest that prior user rights will be given little ex ante consideration by would-be defendants because the defense does not offer any real assurances or any vested right until years after the first commercial use. As discussed in the previous paragraphs, prior user rights only come into play under a cone of secrecy. At that time, the prior user has no assurances that it made commercial use of the invention more than a year before someone else filed a patent application on the same subject matter. The expense of searching PTO records makes the task of discovering prior patent applications quite difficult. The delay in publication of applications and later-filing of applications based on foreign priority makes this task literally impossible to complete. And, the ability of patent applicants to radically amend claims during the patent prosecution process means that any assurances identified cannot not be considered vested.
The final point on this topic – based on delay in patenting – is that most qualifying prior uses may be irrelevant and out-of-use by the time that the USPTO issues the covering patent. Most recently issued US patents have an effective original filing date of more than four years ago. This provides a window of at least five years for most prior users to legally practice the invention without recourse even in the absence of the prior user defense. In many areas of technology, the original prior use will have become obsolete by the end of that five-year timeline – allowing the prior user to move to a new technology without ever needing to obtain a license or permission from the patent holder.
In the testimony, I then identify a number of particular ways that the defense could be expanded of Congress desired a more robust system of prior user right. My darling of the list is the establishment of a vested prior user right through a registration system. Although interesting, I do not at this point have real cause to call for this type of expansion.
My testimony also includes some consideration of the relative impact of prior user rights on US and non-US entities. The table below summarizes some of my thoughts.
Stakeholder
Help or Hurt by US Prior User Rights
US Universities
Help: University derived inventions become relatively more valuable because their patents are excluded from the prior user defense.
US Manufacturers and Technology Companies
Help and Hurt: US patents belonging to US manufacturers become less valuable because they are subject to prior user rights. However, US manufacturers have the potential of avoiding infringement charges based upon their own prior use.
US Non Practicing Entities (NPEs)
Hurt: NPEs US patents become less valuable for NPEs because they are subject to prior user rights. By definition, NPEs do not practice the invention and therefore do not benefit from the prior user right defense.
Foreign Manufacturers and Technology Companies
Hurt: Foreign entities US patents become less valuable because they are subject to prior user rights. Further, the foreign entities cannot assert prior user rights based upon activities in their home countries. However, foreign entities could benefit from the prior user rights if their prior commercial use of an invention was in the US.
Of course, my perception of the scope of prior user rights would change dramatically if the courts determine that (1) a prior user need only prove prior commercial use using a more-likely-than-not standard that (2) allowed oral testimony alone to prove the case and (3) ruled that neither secret sales nor secret uses constitute prior art under the new 35 U.S.C. § 102(a).
PTO Director Dave Kappos will also be testifying as well as Bob Armitage (Lilly), Dan Lang (Cisco), and John Vaughn (AAU).
IPCom is the German version of a “patent troll.” Or, as Lord Justice Jacob wrote in Nokia v. IPCOM, EWCA Civ 6 (2011), “IPCom is a ‘non practising entity’, i.e. a patentee with no business of its own in products covered by the patents.” The company is run by Bernhard Frohwitter, one of the most successful German patent litigators and backed by New York private equity. As suggested by this introduction, IPCom is pursuing patent battles against telecommunications device manufacturers around the world. [Even though I used the word “troll” here, I certainly believe that non-practicing entities should generally have a right to enforce their patents.]
In 2011, IPCom sued the Taiwanese company HTC Corporation in the US for infringement of its Patent No. 6,879,830. The patent covers an apparatus for solving the wireless communications problem of handing-over a data-stream connection to another base station as the wireless device travels geographically. The patent was originally owned by the German company Bosch who transferred rights to IPCom as part of a major IP asset purchase.
IPXL: The district court held the asserted claims invalid on summary judgment as indefinite under 35 U.S.C. §112. Following IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), the district court rejected the claims as reciting an apparatus with method steps. On appeal, the Federal Circuit has reversed – holding that the lower court misconstrued the language of the claims.
I have reproduced a representative claim below, but the basic gist is that a mobile station apparatus is claimed that operates with a network. The network provides a number of functions regarding the handover process, including storing data, holding information in reserve, and then later deleting the information after the handover. The claim includes only one element for the mobile station – requiring that the mobile station comprises “an arrangement” for reversing the handover if it is unsuccessful.
Claim 1. A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by: storing link data for a link in a first base station, holding in reserve for the link resources of the first base station, and when the link is to be handed over to the second base station: initially maintaining a storage of the link data in the first base station, initially causing the resources of the first base station to remain held in reserve, and at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising: an arrangement for reactivating the link with the first base station if the handover is unsuccessful.
In IPXL, the court held a claim invalid that was structured as an apparatus claim that also required the performance of method steps. Here however, the Federal Circuit interpreted the claim language as having an apparatus defined by its capability to perform a set of defined tasks. The legal distinction here is in whether the apparatus must perform the step or merely be capable of performing the step. In addition, the language discussing the function of the network does not create any problem because the claim itself is actually claiming a mobile station. Thus, the “prohibition on hybrid claiming” identified in IPXL does not apply to this case.
In interpreting the claim, the court relied on its old rule of construction that claim terms “are generally given their ordinary and customary meaning.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Using ordinary meaning as a starting point ,the court also walked through the specification and prosecution history in reaching its conclusion that the seeming action-items were directed to the network rather than the mobile device itself.
Prosecution History: One basis of HTC’s argument came from the prosecution history where the applicant referred to the six action elements in the claim as a “process” and the examiner called them “steps.” The Federal Circuit held that HTC (and the lower court) placed too much emphasis on those statements – especially because “in most cases” the examiner was referring to parallel method claims not at issue here. In looking at the prosecution history, the court also sent the reminder that prosecution history is less important in interpretation than claim and specification language. “Although the district court was correct in considering the prosecution history, the claim language and specification in this case are better sources for the correct construction.”
Because the court identified the source of error claim construction rather than indefiniteness, the case was reviewed
Means-Plus-Function and Waiver: HTC also offered a separate invalidity challenge based on the claimed “arrangement for reactivating.” HTC argued that – as a means-plus-function limitation – the scope of the term is defined by the corresponding structure found in the specification. Further, HTC argued that the specification did not include any supporting structure and that the claim must therefore be held invalid as indefinite. The district court rejected that argument – holding that the disclosed processor and transceiver served as the corresponding structure. On appeal, the Federal Circuit identified that holding as in error because the claimed function must be tied to a more particular structure. Here that structure would ideally be an algorithm that defines in some terms how the arrangement would work. See Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).
After identifying the error, the appellate panel refused to reverse because HTC had failed to properly preserve an objection for the appeal. The problem: At the trial court, HTC had argued that more hardware disclosure was necessary beyond the “processor and transceiver,” while on appeal, HTC (and in the reply brief) shifted its argument to focus on the need for an algorithm. The appellate court held that this late-stage argument was too late.
To be clear, HTC had argued that the means-plus-function limitation was indefinite because it lacked sufficient corresponding structure in the specification. HTC’s error was that it identified the patent’s problem as lacking sufficient description of the hardware that would perform the claimed function while the Federal Circuit saw the patent’s problem deriving from lacking a sufficient description of the algorithm that would perform the claimed function. The Federal Circuit’s point was that no more hardware need be disclosed so long as the algorithm is there. This result is a bit odd for a few reasons. The practical reason for this failing is likely that these issues were litigated before the Federal Circuit’s 2008 decision on point. However, from a factual standpoint I suspect that HTC is absolutely correct – the lack of disclosed structure could-have been entirely solved by further disclosure of specific hardware designed to achieve the claimed function and without any further disclosure of the particular algorithm. Thus, the disclosure of a video graphics processor would likely serve as sufficient structure for a computer graphic processing function with a known solution even without disclosing the particular algorithm used for the processing. In the same way a nail could serve as the structure of a fastening claim even without a description of the particular process for hammering the nail into place. Likewise here, a particularly designed and disclosed circuitry could serve as the structure for achieving the claimed reactivating function even without disclosing its process flow per se. The fact that the Federal Circuit here chooses a different structure that should-have-been disclosed does not suggest that HTC waived its argument that the claimed function lacked sufficient structure. This leads me to a second and broader point about the accused infringer’s role in the invalidation process. It is not normally the accused infringer’s role to identify what the patentee should have invented or disclosed. Rather, invalidity is more simply based on a showing that the patentee did not do enough. In this sense, the accused infringer takes on a role parallel to a food critic who can identify poorly presented food even if she herself cannot cook. In my world, this is akin to my own low level spelling prowess. I usually know when a word is misspelled. However, I can only rarely posit the correct spelling formulation without assistance. Thus, the Court’s ruling here leaves a bad taste because it puts a new burden on accused infringers to take the additional step of identifying what the patentee should have said in the patent and then binds them to their suggested counterfactual.
Harmless Error on Remand: The Federal Circuit identified an error in the lower court’s judgment but, because of waiver, did not require the lower court to re-open this issue on remand. Odds are that the lower court will not stick to its original opinion that has now been adjudged legally incorrect. Instead the court will more likely assert its discretionary power to take a fresh look at the issue of indefiniteness. This is especially likely if the district court broadly considers Supreme Court precedent such as Leer v. Adkins and the associated policy that “bad patents” should be invalidated even if that means bending some of the norms of civil procedure.
Court of Appeals: For Judge O’Malley (the opinion’s author), the waiver portion of the opinion appears to be written as a reminder to patent litigators that the Federal Circuit is a Court of Appeals rather than a trier of fact or court of first instance. This legal reality continues to be lost on some of her colleagues on the appellate bench.
Means-Plus-Function in Combination: A final MPF issue that could also create trouble for IPCom involves the fact that the Federal Circuit’s new construction of the claim includes only one element and that element is a means-plus-function language. The basis for means-plus-function claiming is found in 35 U.S.C. § 112¶6. That paragraph includes an apparent limitation that MPF elements are available only in “a claim for a combination.” The result: single element claims may not use MPF language to define that lone element. In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983).
This case involves an interesting 20+ year history between Mr. Krippelz and Ford Motor Company, including 14 years of litigation over a mirror lamp. Ford has won what appears to be the final round.
* * * * *
Back in 1991, Mr. Krippelz sent Ford Motor Company a copy of his patent covering a downward-facing side-mirror light and a license inquiry. Ford was not interested in a license, but in 1997 began selling cars with downward-facing side-mirror lights. Krippelz sued in 1998. A paper battle continued over the next decade and even after Mr. Krippelz death in 2010. During that time, the USPTO confirmed the patentability of the asserted claims in a reexamination, the judge awarded summary judgment of infringement, the jury the patent valid and awarded $23 million in damages; and the judge boosted that figure to $56 million based upon pre-judgment interest and enhanced damages for willful infringement.
On appeal, the Federal Circuit has reversed – finding the patent invalid as anticipated by a 1951 French Patent invented by Charles DuBois of the former French West African colonial territories.
A court may find issued patent claim invalid as anticipated only when presented with clear and convincing evidence that a single prior art reference discloses each and every element of a claimed invention.
The focus here was on the Krippelz patent’s claimed “conical beam of light” and whether that beam was disclosed by DuBois. In construing the claim, the district court held that the conical limitation required that “the filament of the light bulb is at or near the focal point of an optical reflector.” DuBois included a statement that his system may also include “a bulb at the focus of the reflector.” In reviewing the difference, the appellate panel found that any reasonable jury would find the asserted claim invalid based upon DuBois and that the district court had abused its discretion in denying the motion for Judgment as a Matter of Law.
Most appellants in Ford’s position would have appealed claim construction because of the lower standard of review. Here, Ford may have lost that right by not previously objecting to the claim construction. That said, the motor company was able to roll a hard eight to overcome the strong presumption of validity and the deference given to the jury determination.
The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia and relating to an intellectual property law issue or the practice of intellectual property law. The winner receives a cash prize of $4,000. The judge of the final round of the competitor is the Honorable Richard Linn, judge of the U.S. Court of Appeals for the Federal Circuit. The deadline for submissions is Friday, May 25, 2012 at 4:00 EDT. [Link]
New IP Message Board
IPtalk.pro is a new intellectual property law message board for the discussion of patents, trademarks, copyrights, trade secrets, and IP careers. It promises no spam, no downtime, and sensible moderation. [Link]
Intel buys IP for 120 million
Intel recently acquired about 190 patents, 170 patent applications, and video codec software from RealNetworks for 120 million dollars. Intel states that, the acquisition will enhance their ability to continue to offer richer experiences and innovative solutions to end users across a wide spectrum of devices, including through Ultrabook devices, smartphones and digital media. [Link]
Next Patent Office Location
Many cities would like to be the next location of USPTO's next satellite office, including Austin, Texas, Denver, Boston, Silicon Valley and now Las Vegas. It seems that the USPTO has set a deadline for groups and individuals to submit written pitches for why their cities should get a satellite office. The patent office, in soliciting proposals, listed five areas that would play a large role in the selection. Those areas included improved recruiting and retention of examiners that would hinge on factors such as cost of living and number of attorneys in the field, contributions toward speeding and improving the process, and access to innovators as judged by measures such as the number of patents already held by residents in the area. Senator Majority Leader Harry Reid and others will draft their letter to the USPTO, explaining the advantages of Las Vegas. [Link]
Patent Jobs:
Nelson Mullins is searching for 1 or more new or lateral associates with a background in CS or EE to work at their Boston office. [Link]
Verenium is looking for a patent agent with a BS in molecular biology or biochemistry and a minimum of 5 years of experience to work at their San Diego location. [Link]
Vista-IP-Law-Groups is seeking a patent attorney with a background in ME or EE and at least 2 years of experience to work at their San Jose office. [Link]
Sterne, Kessler, Goldstein & Fox is seeking electrical IP attorneys with 1-4 years of experience to work at their Washington, DC office. [Link]
International IP Law Group is searching for an associate, Of Counsel to prepare and prosecute patent applications at their Houston office. [Link]
International IP Law Group is looking for a patent engineer/agent with 2-3 years of technical experience to work at their Houston office. [Link]
Microsoft is seeking a patent attorney with a BS in CS or EE and at least 5 years of experience to work in their Redmond, Washington location. [Link]
Toler Law Group is searching for patent attorneys with a BS in EE or CS and 0-2 years of experience to work in their Austin, Texas office. [Link]
Kilyk & Bowersox is looking for a biochem/chem patent agent with at least 4 years of experience to work in their Warrenton, Virginia office. [Link]
The Webb Law Firm is seeking an associate with a BS in chemistry or chemical engineering and at least 3 years of experience as an IP attorney to work at their Pittsburgh office. [Link]
Klarquist Sparkman is searching for lateral litigation associates with 1-2 years of experience to work in their Portland office. [Link]
Klarquist Sparkman is seeking a patent attorney or patent agent with an advanced degree in organic chemistry and 3+ years of experience to work in their Portland office. [Link]
Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
Upcoming Events:
The Synopsis under IP/Patents Telecom Sourcing (SUITS) Conference will take place January 31-February 3 in Miami, Florida. The SUITS Conference was launched to advance the knowledge innovators of telecommunications including developers, implementers, licenses, licensors, end users, carriers and enterprise patents. Guest speakers include: Jeffery Dalton, Christopher Douglas, Loren Pearson, Keith Bergelt, Todd Juneau, Michael Rouleau and many others. [Link]
The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
AIPLA webinar, Selecting the Right Expert to Put on (or Poke Holes in) a Patentee's Case, will be held on February 1. The webinar will focus on the process of selecting a damage expert, recent cases that may influence the decision and some of the ways that a damage expert can assist with evaluating poking holes in the opposing expert's analysis. The webinar will be presented by Gillian Thackray and Philip Green. [Link]
The DC Bar's IP Section will host an event, Section 337 IP Investigations at the ITC: Lessons for District Court Practitioners, on February 2. The event will discuss what practitioners need to know before appearing at the ITC. Speakers include ITC Commissioner Shara Aranoff, ITC Judges Theodore Essex and Robert Rogers, Jr., Attorney Advisor to Commissioner Michael Diehl, Christine Lehman, Marcia Sundeen, Maureen Browne, and Jaime Underwood. [Link]
The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conferencebrings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of coreFDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia and relating to an intellectual property law issue or the practice of intellectual property law. The winner receives a cash prize of $4,000. The judge of the final round of the competitor is the Honorable Richard Linn, judge of the U.S. Court of Appeals for the Federal Circuit. The deadline for submissions is Friday, May 25, 2012 at 4:00 EDT. [Link]
New IP Message Board
IPtalk.pro is a new intellectual property law message board for the discussion of patents, trademarks, copyrights, trade secrets, and IP careers. It promises no spam, no downtime, and sensible moderation. [Link]
Intel buys IP for 120 million
Intel recently acquired about 190 patents, 170 patent applications, and video codec software from RealNetworks for 120 million dollars. Intel states that, the acquisition will enhance their ability to continue to offer richer experiences and innovative solutions to end users across a wide spectrum of devices, including through Ultrabook devices, smartphones and digital media. [Link]
Next Patent Office Location
Many cities would like to be the next location of USPTO's next satellite office, including Austin, Texas, Denver, Boston, Silicon Valley and now Las Vegas. It seems that the USPTO has set a deadline for groups and individuals to submit written pitches for why their cities should get a satellite office. The patent office, in soliciting proposals, listed five areas that would play a large role in the selection. Those areas included improved recruiting and retention of examiners that would hinge on factors such as cost of living and number of attorneys in the field, contributions toward speeding and improving the process, and access to innovators as judged by measures such as the number of patents already held by residents in the area. Senator Majority Leader Harry Reid and others will draft their letter to the USPTO, explaining the advantages of Las Vegas. [Link]
Patent Jobs:
Nelson Mullins is searching for 1 or more new or lateral associates with a background in CS or EE to work at their Boston office. [Link]
Verenium is looking for a patent agent with a BS in molecular biology or biochemistry and a minimum of 5 years of experience to work at their San Diego location. [Link]
Vista-IP-Law-Groups is seeking a patent attorney with a background in ME or EE and at least 2 years of experience to work at their San Jose office. [Link]
Sterne, Kessler, Goldstein & Fox is seeking electrical IP attorneys with 1-4 years of experience to work at their Washington, DC office. [Link]
International IP Law Group is searching for an associate, Of Counsel to prepare and prosecute patent applications at their Houston office. [Link]
International IP Law Group is looking for a patent engineer/agent with 2-3 years of technical experience to work at their Houston office. [Link]
Microsoft is seeking a patent attorney with a BS in CS or EE and at least 5 years of experience to work in their Redmond, Washington location. [Link]
Toler Law Group is searching for patent attorneys with a BS in EE or CS and 0-2 years of experience to work in their Austin, Texas office. [Link]
Kilyk & Bowersox is looking for a biochem/chem patent agent with at least 4 years of experience to work in their Warrenton, Virginia office. [Link]
The Webb Law Firm is seeking an associate with a BS in chemistry or chemical engineering and at least 3 years of experience as an IP attorney to work at their Pittsburgh office. [Link]
Klarquist Sparkman is searching for lateral litigation associates with 1-2 years of experience to work in their Portland office. [Link]
Klarquist Sparkman is seeking a patent attorney or patent agent with an advanced degree in organic chemistry and 3+ years of experience to work in their Portland office. [Link]
Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
Upcoming Events:
The Synopsis under IP/Patents Telecom Sourcing (SUITS) Conference will take place January 31-February 3 in Miami, Florida. The SUITS Conference was launched to advance the knowledge innovators of telecommunications including developers, implementers, licenses, licensors, end users, carriers and enterprise patents. Guest speakers include: Jeffery Dalton, Christopher Douglas, Loren Pearson, Keith Bergelt, Todd Juneau, Michael Rouleau and many others. [Link]
The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
AIPLA webinar, Selecting the Right Expert to Put on (or Poke Holes in) a Patentee's Case, will be held on February 1. The webinar will focus on the process of selecting a damage expert, recent cases that may influence the decision and some of the ways that a damage expert can assist with evaluating poking holes in the opposing expert's analysis. The webinar will be presented by Gillian Thackray and Philip Green. [Link]
The DC Bar's IP Section will host an event, Section 337 IP Investigations at the ITC: Lessons for District Court Practitioners, on February 2. The event will discuss what practitioners need to know before appearing at the ITC. Speakers include ITC Commissioner Shara Aranoff, ITC Judges Theodore Essex and Robert Rogers, Jr., Attorney Advisor to Commissioner Michael Diehl, Christine Lehman, Marcia Sundeen, Maureen Browne, and Jaime Underwood. [Link]
The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conferencebrings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of coreFDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
The America Invents Act contains several provisions that require the PTO to (1) issue new rules and (2) report back to Congress on specific patent-related issues. In addition to the proposed Supplemental Examination rules I discussed yesterday, the PTO also recently published four other proposed sets of rules and completed two of its reports.
Proposed Rules Submissions to the PTO: Two related sets of rules address submissions to the PTO, one implementing the preissuance submissions by third parties provision of the AIA and the other addressing post-issuance submissions. Paul Morgan recently wrote a guest post discussing these proposed rules. The Federal Register sections are available here: /media/docs/2012/01/77fr448.pdf and /media/docs/2012/01/77fr442.pdf, and the rules are open for public comment until March 5, 2012.
OED: On January 5, the PTO also published its proposed rules to implement the statute of limitations provision for office disciplinary proceedings. Dennis's discussion of these rules is available here, and the full set of rules is available at /media/docs/2012/01/77fr457.pdf. The comment period for these rules runs until March 5, 2012.
Inventor's Oath: The following day, the PTO published its proposed changes to the rules relating to the inventor's oath or declaration. The public comment period for those proposed rules runs until March 6, 2012, and the rules are available at /media/docs/2012/01/77fr982.pdf
AIA-Mandated Studies International Patent Protections for Small Businesses: As required by the AIA, earlier this month the PTO submitted to Congress a report on international patent protections for small businesses. Based upon its study, the PTO declined to recommend a program of taxpayer-funded financial assistance to support small business foreign patenting at the present time. The report is available at /media/docs/2012/01/20120113-ippr_report.pdf.
Prior User Rights: The PTO also recently completed its report on prior user rights. The report essentially concludes that there is an insufficient basis to recommend a change to the prior user rights scheme chosen by Congress, and is available at /media/docs/2012/01/20120113-pur_report.pdf.
Genetic Testing: Earlier this week, the PTO published a Request for Comments and Notice of Public Hearings in connection with its study on genetic testing. Public hearings will be held on Febuary 16, 2012 in Alexandria, Virginia, and on March 9, 2012 in San Diego, California. Written comments will be accepted until March 26, 2012. The announcement is available at /media/docs/2012/01/2012-1481_genetic-testing-hearing-notice.pdf.
Yesterday, the United States Patent and Trademark Office announced the proposed rules for supplemental examinations and proposed revisions to ex parte reexamination fees. These proposals detail the supplemental examination process, including the information that requesters must submit, as well as the substantial fees that will be associated with post-grant review in the future. The PTO will accept comments on the proposed rules until March 26, 2012.
The request must be filed by the patent owner. Only the patent owner will be permitted to participate in the supplemental examination or any reexamination ordered as a result. (§ 1.601)
Each supplemental examination request may identify up to ten items of information to be considered, reconsidered, or corrected. Multiple supplemental examination requests may be filed at one time. (§ 1.605)
The cost for filing a supplemental examination request is steep: $5,180 for the initial request plus $16,120 for the ex parte re-examination fee. (§ 1.20(k)) Both must be paid at the time of initial request, and the $16,120 will be refunded if no re-examination is ordered in the supplemental examination certificate. (§ 1.26(c)) In addition, there are substantial fees associated with documents over 20 pages, as well as with petitions filed in connection with the proceeding.
The supplemental examination request must include ((§ 1.610(b)):
a cover sheet;
an identification of the patent for which supplemental examination is requested;
a list of each item of information and its publication date, if applicable;
a list identifying any other prior or concurrent post patent Office proceedings involving the patent to be examined;
an identification of each aspect of the patent to be examined;
an identification of each issue raised by each item of information;
a separate, detailed explanation for each identified issue;
an explanation of how each item of information is relevant to each aspect of the patent to be examined and of how each item of information raises each identified informaiton;
a copy of each item of information; and
summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length.
The full requirement for item 8 is:
(8) A separate, detailed explanation for each identified issue, discussing how each item of information is relevant to each aspect of the patent identified for examination, and how each item of information raises each issue identified for examination, including:
(i) Where an identified issue involves the application of 35 U.S.C. 101 (other than double patenting) or 35 U.S.C. 112, an explanation discussing the support in the specification for each limitation of each claim identified for examination with respect to this issue; and
(ii) Where an identified issue involves the application of 35 U.S.C. 102, 35 U.S.C. 103, or double patenting, an explanation of how each limitation of each claim identified for examination with respect to this issue is met, or is not met, by each item of information. The detailed explanation may also include an explanation of how the claims distinguish over the items of information.
(Proposed § 1.610(b)(8)). Note that if the PTO concludes that an examination request is not in compliance with the content requirements, it will not be entitled to the original filing date. Rather, the filing date will be the date the corrected request is received. (§ 1.610(d),(e)) This appears to mean that the PTO's three-month deadline for issuing a supplemental examination certificate will not begin until the corrected request is received and the safe-harbor provisions of 35 U.S.C. 257 may not be triggered even if a request is filed should the PTO conclude that requirement 8, for example, is not met.
The proposed cost to file an ex parte reexamination will increase from the current $2,520 to $17,750. Given both this increase and the substantial cost to file a supplemental examination request, I'm skeptical of the PTO's prediction that it will receive about 800 ex parte examination requests and 1,430 supplemental examination requests annually. The latter number, especially, seems to be based on some highly dubious assumptions.
Most operating businesses that rely on intellectual property (IP) rights do not focus on a single form of rights but instead take a layered approach that includes patent law along with trademark, copyright, contractual limitations, and design rights, for instance. Each form of IP has weak points and overlapping coverage provides a greater level of certainty that any underlying market value can be protected. Of course, overlapping rights create difficulties for users that rely upon the public domain and fair use. The bulk of governmental money spent on administering intellectual property rights goes through the US Patent & Trademark Office (PTO) — an executive agency housed within the Department of Commerce. Although the PTO only administrates patent and trademark issues, the Director of the USPTO also serves as the Undersecretary of Commerce in charge of Intellectual Property and has the role of advising the President and other federal agencies on all aspects of intellectual property – including copyright law. Of late, this role is shared somewhat with the White House Office of the U.S. Intellectual Property Enforcement Coordinator.
Whither the Copyright Office: There is a clear structural reason why the President and executive agencies cannot rely on the US Copyright Office for advice about copyright law. The Copyright Office is housed within the Library of Congress, which itself is managed by Congress rather than the President. Thus the US Copyright Office does not officially represent the Administration or shape Administration policy. This is an odd setup — especially with the rising and overlapping market role for intellectual property rights. From a theoretical standpoint, it is unclear whether the fractured administrative structure leads to rights that are either too strong or too weak. What we can tell is that the structure leads to a lack of coordination in administration of the various IP systems within the US.
In his 1995 Congressional testimony on the topic, Bill Patry identified the fractured structure as "an historical anomaly."
It is not the result of a judgment that the legislative branch is where the Copyright Office belongs. It occurred solely because there was a very clever, ambitious Librarian of Congress who figured out that rather than relying upon appropriated funds, which is not a great way for agencies to fund themselves, he would get free books. He got free books by convincing Congress to require publishers and authors to give the Library free books. That is how the Copyright Office got into the Library of Congress.
The answer: In 1995, the Senate proposed a solution – a United States Intellectual Property Organization (USIPO). (S. 1961). Although the Bill did not emerge from committee at the time, the newly proposed organization would fall in line with many of our trading partners, including the UK IPO, the Canadian IPO, and the World Intellectual Property Organization (WIPO).
Back in 1995, then Register of Copyrights Marybeth Peters commented that such a move may unduly politicize the Copyright Office. Peters was also concerned that the historic and humanist value of the copyright registry would be soiled if joined with the commerce-focused patent and trademark administrators.
Bill Patry testified before the Senate in support of the concept of the USIPO and argued that the Copyright Office functions are executive not legislative:
Well, the Office doesn't perform any legislative functions. Why should it remain in the legislative branch? The answer that you are given is essentially that is the way it has always been and we like it that way. But if you have go the two other forms of intellectual property … why should the third one be over here and on the other side of the Potomac? It is really a quaint sort of nostalgia for the past. It is an obstacle for the future.
Members of Congress also expressed reticence about giving up direct control of the office. At the time, the Intellectual Property Owners Association and AIPLA suggested "further study."
In the years since 1995, we have seen a great convergence in the marketplace role of the various intellectual property schemes. It seems to me that the time is ripe to consider the issue once again.
Falana v. Kent State University (Fed. Cir. 2012) Download 11-1198 Panel: Linn (author), Prost and Reyna
This case raises an important issue for developers of chemical compounds: when is an inventor's contribution to the method of making a claimed compound an inventive contribution?
The plaintiff in this Section 256 action, Dr. Olusegun Falana, was a post-doctoral researcher hired by Kent State and Kent Displays, Inc. to synthesize organic molecules in connection with a project to develop a temperature independent, high helical twisting power chiral additive for use in portable liquid crystal displays. During his employment, Dr. Falana developed a synthesis protocol for making a novel class of chemical compounds. Dr. Falana used this process to synthesize a compound within this genus designated "Compound 7." While Compound 7 possessed some of the desired characteristics, and represented "significant progress," it did not completely satisfy the project goals. Dr. Falana subsequently resigned from KDI and Kent State to take another position.
A few months after Dr. Falana's resignation, the Kent State professor who had selected Dr. Falana used Falana's synthesis protocol to synthesize another member of the novel class, "Compound 9." Compound 9 possessed the desired degree of temperature independence, and KDI and Kent State filed an application that led to Patent No. 6,830,789; the patent did not list Dr. Falana as in inventor.
Upon learning that he was not listed as an inventor, and after receiving an unsatisfactory response from the Chief Science Officer at KDI, Falana filed a Section 256 action to correct inventorship. The district court ruled in Falana's favor following a bench trial, further finding that the case was exceptional and awarding attorneys fees in an amount to be determined.
On appeal, the Federal Circuit concluded that Dr. Falana had contributed to the conception of the claimed invention. Drawing upon established law, the court first noted that "[c]onception of a chemical compound 'requires knowledge of both the specific chemical structure of the compound and an operative method of making it.'' Slip Op. at 12 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). Here, Dr. Falana contributed to the method of making the claimed compound in a way the required more than the exercise of ordinary skill. The court recognized an important limitation on its holding, however:
"[This] does not mean that such an inventor necessarily has a right to claim inventorship of all species within that genus which are discovered in the future. "Once the method of making the novel genus of compounds becomes public knowledge, it is then assimilated into the store-house of knowledge that comprises ordinary skill in the art." Id. at 15-16.
Comment: The court was also careful to limit its holding in another way. It could have concluded that Falana was inventor simply due to his contribution to the method used to make Compound 9. It did not. Instead, the panel held "that a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus." Id. at 15 (emphasis added). It was able to articulate the rule in this way because it agreed with the district court that the patent's independent claims do not include a temperature independence limitation – in other words, the claims as construed were not limited to Compound 9, but rather encompassed the genus of compounds produced using Falana's synthesis protocol. Falana thus contributed both to the method of making the genus as well as the structure of the genus itself. The opinion implies that the outcome could conceivably be different if the claims had been limited to Compound 9. See, e.g., Slip Op. at 17.
Finality of Judgment: Federal Circuit practitioners may want to pay particular attention to the section at the end of the court's opinion in which it concluded that the district court's exceptional case determination was not before it in this appeal. Although the court's ruling on the issue of inventorship represented a final judgment, the court concluded that absent a determination of the attorney fees, the exceptional case determination did not. Nor, the court concluded, was there a basis for it to exercise pendent appellate jurisdiction over the issue.
Microsoft and LG singed a patent agreement that provides coverage under Microsoft's patent portfolio for LG's tablets, mobile phones and other products that runs on the Android Platform. Microsoft claims that more than 70% of all Android smartphones sold in the US are now receiving coverage under Microsoft's patent portfolio. It has been estimated that more than 700,000 Android based devices are sold every day and analyst have predicted that the number will reach 2.5 million devices per day. [Link] Microsoft most likely receives anywhere from $5-$15 dollars per device sold, meaning Microsoft makes $2.45 million-$7.35 million every day from Android operated phones. [Link]
Wal-Mart and Entrepreneurs
Wal-Mart has launched a "Get on the Shelf" contest to find the next new thing to put on their shelves. The contest is limited to categories that Wal-Mart carries, which makes the contest open to all kind of entrepreneurs. There will be 3 winners picked and their items will be sold on Walmart.com, with the grand prize winner being featured on the site's home page and stocked n select Wal-Mart stores. The public will vote for their favorite products, similar to other contest such as American Idol. [Link]
National Medal of Technology and Innovation
The PTO is seeking nominations for the 2012 National Medal of Technology and Innovation. The medal is presented by the President and is the highest award for technological achievement in the US. The medal is awarded to individuals, teams of up to 4, or companies for their contribution to America's economic, environmental, and social well-being. [Link]
Patent Jobs:
Cardinal Intellectual Property is seeking a patent search attorney to work at their Evanston, Illinois location. [Link]
Roberts Mlotkowski Safran & Cole is looking for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
Cardinal Intellectual Property is searching for patent search professional to work remotely. [Link]
DIRECTV is seeking a senior patent analysis counsel with 6+ years of experience to work at their El Segundo, California location. [Link]
Dority & Manning is seeking patent attorneys with 1-4 years of experience and a BSEE or BSME to work at their Greenville, SC office. [Link]
The Sughrue Firm is searching for patent agents with 1-2 years of experience and backgrounds in computer science of software to work in their Silicon Valley office. [Link]
Whirlpool is seeking a patent agent with a minimum of 2 years of experience and a BS in engineering to work at their Saint Joseph, Michigan location. [Link]
Hiscock & Barclay is seeking patent agents/attorneys with a minimum of 3-5 years of experience to work at their New York offices. [Link]
Steptoe & Johnson is searching for IP associates with a minimum of 4 years of experience in patent litigation and a technical background to work in their DC or Chicago offices. [Link]
Edell, Shapiro & Finnan is looking for a patent attorney with 2+ years of experience and a degree in EE or physics to work at their Rockville, Maryland office. [Link]
Michael Best & Friedrich is seeking a biotech associate with 5+ years of experience and a Ph.D. to work at their Madison, Milwaukee or Chicago office. [Link]
Intellectual Ventures and Invention Law Group is looking for a Chief Policy Counsel with 15+ years of experience to work at their Bellevue, Washington location. [Link]
Telesign is seeking a IP analyst with 2+ years of experience to work at their Marina Del Rey, California location. [Link]
Upcoming Events:
The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
American University Washington College of Law Administrative Law Reviewwill be hosting an afternoon symposium on January 25 on the creation and administration of a new trial-like review procedure, more commonly known as post-grant patent opposition, at the U.S. Patent and Trademark Office, titled Regulating Innovation: How the Patent and Trademark Office Intends to Create Adjudication From Scratch. The symposium will explore the rulemaking that will be required of the agency, the implementation of the post-grant review process, and industry reaction to the proposed changes.
International IP- Is the IP World Flat? Santa Clara Computer & High Tech Law Journal is hosting its annual symposium January 27 on SCU Campus. The symposium will include the following 4 panels: (1) International Patent Harmonization; (2) Non Practicing Entities: Going Global; (3) The Rise of Chinese IP; and (4) Comparative e-Privacy Regimes. Speakers include: David Abrams, Colleen Chien, Nancy Kremers, Francois Gilbert and many others. Also, PatentlyO's Dennis Crouch will be a Speaker discussing International Patent Harmonization. [Link]
The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
AIPLA webinar, Selecting the Right Expert to Put on (or Poke Holes in) a Patentee's Case, will be held on February 1. The webinar will focus on the process of selecting a damage expert, recent cases that may influence the decision and some of the ways that a damage expert can assist with evaluating poking holes in the opposing expert's analysis. The webinar will be presented by Gillian Thackray and Philip Green. [Link]
The DC Bar's IP Section will host an event, Section 337 IP Investigations at the ITC: Lessons for District Court Practitioners, on February 2. The event will discuss what practitioners need to know before appearing at the ITC. Speakers include ITC Commissioner Shara Aranoff, ITC Judges Theodore Essex and Robert Rogers, Jr., Attorney Advisor to Commissioner Michael Diehl, Christine Lehman, Marcia Sundeen, Maureen Browne, and Jaime Underwood. [Link]
The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
Microsoft and LG singed a patent agreement that provides coverage under Microsoft's patent portfolio for LG's tablets, mobile phones and other products that runs on the Android Platform. Microsoft claims that more than 70% of all Android smartphones sold in the US are now receiving coverage under Microsoft's patent portfolio. It has been estimated that more than 700,000 Android based devices are sold every day and analyst have predicted that the number will reach 2.5 million devices per day. [Link] Microsoft most likely receives anywhere from $5-$15 dollars per device sold, meaning Microsoft makes $2.45 million-$7.35 million every day from Android operated phones. [Link]
Wal-Mart and Entrepreneurs
Wal-Mart has launched a "Get on the Shelf" contest to find the next new thing to put on their shelves. The contest is limited to categories that Wal-Mart carries, which makes the contest open to all kind of entrepreneurs. There will be 3 winners picked and their items will be sold on Walmart.com, with the grand prize winner being featured on the site's home page and stocked n select Wal-Mart stores. The public will vote for their favorite products, similar to other contest such as American Idol. [Link]
National Medal of Technology and Innovation
The PTO is seeking nominations for the 2012 National Medal of Technology and Innovation. The medal is presented by the President and is the highest award for technological achievement in the US. The medal is awarded to individuals, teams of up to 4, or companies for their contribution to America's economic, environmental, and social well-being. [Link]
Patent Jobs:
Cardinal Intellectual Property is seeking a patent search attorney to work at their Evanston, Illinois location. [Link]
Roberts Mlotkowski Safran & Cole is looking for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
Cardinal Intellectual Property is searching for patent search professional to work remotely. [Link]
DIRECTV is seeking a senior patent analysis counsel with 6+ years of experience to work at their El Segundo, California location. [Link]
Dority & Manning is seeking patent attorneys with 1-4 years of experience and a BSEE or BSME to work at their Greenville, SC office. [Link]
The Sughrue Firm is searching for patent agents with 1-2 years of experience and backgrounds in computer science of software to work in their Silicon Valley office. [Link]
Whirlpool is seeking a patent agent with a minimum of 2 years of experience and a BS in engineering to work at their Saint Joseph, Michigan location. [Link]
Hiscock & Barclay is seeking patent agents/attorneys with a minimum of 3-5 years of experience to work at their New York offices. [Link]
Steptoe & Johnson is searching for IP associates with a minimum of 4 years of experience in patent litigation and a technical background to work in their DC or Chicago offices. [Link]
Edell, Shapiro & Finnan is looking for a patent attorney with 2+ years of experience and a degree in EE or physics to work at their Rockville, Maryland office. [Link]
Michael Best & Friedrich is seeking a biotech associate with 5+ years of experience and a Ph.D. to work at their Madison, Milwaukee or Chicago office. [Link]
Intellectual Ventures and Invention Law Group is looking for a Chief Policy Counsel with 15+ years of experience to work at their Bellevue, Washington location. [Link]
Telesign is seeking a IP analyst with 2+ years of experience to work at their Marina Del Rey, California location. [Link]
Upcoming Events:
The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
American University Washington College of Law Administrative Law Reviewwill be hosting an afternoon symposium on January 25 on the creation and administration of a new trial-like review procedure, more commonly known as post-grant patent opposition, at the U.S. Patent and Trademark Office, titled Regulating Innovation: How the Patent and Trademark Office Intends to Create Adjudication From Scratch. The symposium will explore the rulemaking that will be required of the agency, the implementation of the post-grant review process, and industry reaction to the proposed changes.
International IP- Is the IP World Flat? Santa Clara Computer & High Tech Law Journal is hosting its annual symposium January 27 on SCU Campus. The symposium will include the following 4 panels: (1) International Patent Harmonization; (2) Non Practicing Entities: Going Global; (3) The Rise of Chinese IP; and (4) Comparative e-Privacy Regimes. Speakers include: David Abrams, Colleen Chien, Nancy Kremers, Francois Gilbert and many others. Also, PatentlyO's Dennis Crouch will be a Speaker discussing International Patent Harmonization. [Link]
The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
AIPLA webinar, Selecting the Right Expert to Put on (or Poke Holes in) a Patentee's Case, will be held on February 1. The webinar will focus on the process of selecting a damage expert, recent cases that may influence the decision and some of the ways that a damage expert can assist with evaluating poking holes in the opposing expert's analysis. The webinar will be presented by Gillian Thackray and Philip Green. [Link]
The DC Bar's IP Section will host an event, Section 337 IP Investigations at the ITC: Lessons for District Court Practitioners, on February 2. The event will discuss what practitioners need to know before appearing at the ITC. Speakers include ITC Commissioner Shara Aranoff, ITC Judges Theodore Essex and Robert Rogers, Jr., Attorney Advisor to Commissioner Michael Diehl, Christine Lehman, Marcia Sundeen, Maureen Browne, and Jaime Underwood. [Link]
The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
On Friday, January 27, I'll be speaking at the Santa Clara Computer & High Technology Law Journal's annual symposium at SCU's Locatelli Center. The event is focusing on global intellectual property issues. My morning panel will discuss the future of patent harmonization and cooperation amongst the world's patent systems. Professor Chien's panel will raise the prospect of the global reach non-practicing intellectual property owners. Ken Korea from Samsung is a great speaker and will keynote. Ken may answer the symposium's titular question: Is the IP World Flat? Afternoon panels will address IP in China and comparative electronic privacy regimes.
$95 for 5 hours of MCLE. $15 for registration without MCLE credit.
Many patent applicants enjoy the fact that the USPTO lists all cited and considered references on the face of each patent. That listing provides an apparent presumption that the newly patented invention is a step beyond anything found in those references. Economists have even shown that patents with more cited references tend to be relatively more valuable. Patent applicants are also under a duty to submit prior art references that are material to patentability. 37 C.F.R. §1.56.
A negative side of citation is now emerging. Recently, copyright owners have begun trolling non-patent prior art citations to see whether any of their works were copied and submitted to the USPTO. Of course, following standard law firm practice additional copies were likely generated for the file and for review by the inventors or attorneys. These copies may be hard copes or electronic versions, but as MegaUploads can now attest, that makes no difference in copyright law. Statutory damages for copyright infringement range from $750 to $150,000 per work. The exact figure is largely within the discretion of the judge and is based upon what the "the court considers just" and whether the infringement was willful.
A number of scientific journals have begun to threaten law firms and their clients for submitting copies of journal articles to the USPTO. The typical cease & desist letter that I've seen says something like the following:
"We've been trolling through USPTO records and found that you submitted a copy of one of our articles articles to the USPTO and we suspect that you maintained other copies in your files and distributed additional copies within your organization. These actions constitute copyright infringement and are not fair use. We will sue you unless you come into compliance with our CCC licensing scheme."
To be clear, the focus in the letter is on copies being submitted to the USPTO as well as copies retained in the file and distributed internally.
I looked-into the CCC automated licensing system and found that they offered the right to make copies of a NATURE article (one of the journals taking action) for $32 per copy.
USPTO Response: In a surprisingly bold statement, the USPTO's General Counsel Bernie Knight released a statement late last week indicating the USPTO's belief that submission of unlicensed copies of copyrighted materials to the USPTO for the purpose of complying with Rule 56 cannot create copyright liability because that action is fair use under 17 U.S.C. 107. This issue previously arose when the USPTO was building the PAIR electronic record system. It was because of potential copyright concerns that the USPTO decided not to make available non-patent prior art through the PAIR system. However, the USPTO has offered its position that it is fair use for the agency to charge a fee to make and distribute paper copies of the copyrighted works (as part of the file history).
The USPTO took no position on whether applicant's creation of file-copies and internal distribution of copies also qualify for the fair use defense. In addition, applicants who have obtained limited licenses to works may be under a contractual duty to avoid making further copies even if those copies would have been fair use.
How much money?: On an annual basis, I would estimate that at least five hundred thousand journal articles are submitted to the USPTO for consideration. Each submission probably results two local copies for the file & review by the attorney, inventors, and others in addition to the submitted copy. That takes the annual licensing market to around $50 million. Not a tremendous amount for a nationalmarket, but that may be enough to save the struggling scientific journal industry.
Fair Use: An interesting aspect of fair use analysis is that the outcome can change based upon market conditions and general custom. Here, for instance, if it is very easy to obtain a license by simply paying a fee online and a number of patent applicants begin paying that fee regularly, an action that was once considered fair use may again fall under the copyright infringement umbrella.
How will your firm respond? Should your engagement letter be amended?
Marine Polymer Tech. v. HemCon, Inc. (Fed. Cir. 2011)
The Court of Appeals for the Federal Circuit has announced that it will hold an en banc rehearing of the Marine Polymer Tech case. Straying from its recent practice, the Court has not suggested any particular questions that it will address nor did the Court offer to receive friend-of-the-court briefs filed without leave. Thus, under the Federal Circuit rules of practice, any amicus curiae may file a brief only with either (1) leave of court or (2) leave of all parties to the appeal. (Fed. Cir. R. 29).
The initial appellate decision focused on the potential for intervening rights created by patentee arguments made during reexamination. Here, the court held that that a narrowing claim construction argument made by the patentee in a reexamination gives rise to absolute intervening rights for an accused infringer’s products made or sold prior to the reexamination request. An important quirk of the case is that the narrow construction that the patentee suggested to the PTO was the same construction that had been ordered by a district court in this case. Thus, at the time, the argued-for construction was seen as the true construction rather than a narrowing construction. However, the argued-for construction became narrowing after-the-fact once the Federal Circuit rejected the lower court’s construction as unduly narrow.
The majority opinion was written by Judge Dyk and Joined by Senior Judge Gajarsa. Judge Lourie filed a dissent that looked to the patent statute for guidance on the legal scope of intervening rights. He argued that the statute does not create intervening rights based upon arguments but rather only apply to “amended or new claims.” See 35 U.S.C. §§ 307(b), 316(b), and 252.
The question suggested by the plaintiff-appellate Marine Polymer follows Judge Lourie’s dissent:
Whether arguments made regarding a patent claim during reexamination of a patent give rise to intervening rights under 35 U.S.C, §§ 307(b) and 252, where the patent claim in question is neither “amended” nor “new” in the reexamination.
Intellectual Ventures filed a brief supporting the en banc rehearing – noting its “concern[] with the panel’s redefining of the term ‘amended claim’ to include original claims that have not been textually altered.”
In response, HemCon argued that Marine Polymer’s formalistic argument does not make sense. In particular, HemCom noted that it would be odd “to adopt a rule under which intervening rights would apply when claims are substantively changed during reexamination by altering the actual language of the claims, [but] would not apply when claims are substantively changed through arguments made to the USPTO.”
There is some tension between this decision and that of Bettcher Industries v. Bunzl USA (Fed. Cir. 2011). In Bettcher Industries, the court held that the estoppel provisions of 35 U.S.C. § 315(c) only apply once all appeal rights have been exhausted. In addition, the case is directly in tension with Laitram Corp. v. NEC Corp., 163 F.3d 1342 (Fed. Cir 1998). In that decision (penned by Judge Lourie), the court followed a two step process to determine whether intervening rights applied. First, the court looked to determine whether the text of the patent claim had changed. Since the text had changed in that case, the court then looked to see whether the change was “substantial.”
My expectation is that this decision will be reversed by a strong majority on rehearing.
As widely expected, the Supreme Court today affirmed a lower court ruling that the "Copyright Clause" of the U.S. Constitution does not prevent Congress from providing copyright protection to public domain works. As also expected, Justice Breyer (joined by Justice Alito) dissented from the 6-2 decision.
The Supreme Court opinion authored by Justice Ginsburg rejected the three primary arguments made by petitioners:
The Court held that allowing works from the public domain to be later copyrighted does not result in the potential for perpetual copyright in violation of the "limited terms" language of the Constitution. In its opinion, the court rejected any notion that the public has a "vested" right in works from the public domain. "Once the term of protection ends, the works do not revest in any rightholder. Instead, the works simply lapse into the public domain."
The purpose of copyright law – to "promote the Progress of Science" – should be broadly interpreted to include both promotion of the creation of new work as well as promotion of knowledge and learning more generally. And, inducing of the dissemination of existing works is a permissible means to promote science. In addition, providing for access to foreign markets by acceding to treaty obligations can also provide an incentive for creation of new works and therefore promote the progress.
In Eldred, the free speech rights embodied by the First Amendment to the U.S. Constitution do not limit Congress from modifying copyright law within its "traditional contours." Petitioners argued that the removal of elements from the public domain was outside of these traditional contours and that, under Eldred, the Supreme Court should use a heightened level of scrutiny to determine whether the new law offends free speech concerns. The Court rejected that analysis based upon its conclusion that Congress has, on several occasions, removed elements from the public domain and that, therefore, this action is within the traditional contours of copyright policy. In addition, the Court held that the impact of the particular law at issue was simply to place the foreign works in the copyright position that they would have occupied if the current copyright regime had been in place at the time. From that perspective, the new law fits well within the traditional contours of copyright law.
Impact on Patent Law: Copyright and patent share the same constitutional underpinnings and each is purposed to "promote the Progress" of their respective fields. This leads me to the conclusion that the reasoning in Golan would be equally applicable to Congressional expansions of patent law. In its decision, the Court explicitly refers to historic patent restoration bills as "informing" the inquiry into the scope of the clause as it applies to copyright. The converse should also be true. Thus, perhaps Congress would have authority to extend patent terms based upon a patentee's provision of data additional testing data or its promise to manufacture the product in the US.
An interesting caveat comes from the Court's 1996 Graham decision. That opinion includes the line that "Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available." In distinguishing that line, the Court wrote that the passage does not speak "to the constitutional limits on Congress' copyright and patent authority" but instead it addresses "an invention's very eligibility for patent protection." (quoting Eldred). The seeming distinction here is that Congress has more latitude in determining patent (and copyright) term or duration and less latitude in determining subject matter eligibility.
In dissent, Justice Breyer wrote, inter alia, that the "newness" requirement has always been a necessary and fundamental element of intellectual property (copyright and patent) protection. This newness requirement is offended by allowing copyright protection to be offered for works created long ago and already known to be in the public domain.
The political setup of this case is somewhat interesting because the government's pro-property position could be conceived as the conservative approach while Golan's more liberal position is suggesting that anyone should be able to use these works without payment to the creator. At the same time, the liberal Golan's legal argument was based upon the traditionally conservative suggestion of strong Constitutional limits on the powers of the federal government.
Note:
At several points in this article I would have linked to Wikipedia, but the site is not generally available today because of its ongoing protest against an expansion of intellectual property law that would require services such as Wikipedia and Google to remove links to sources of pirated material.
I had suggested to my students last semester that the best conceivable outcome for petitioners would be that the Court would determine that heightened scrutiny should apply to adjudge the free speech impact of the expansion of copyright law. However, the court also rejected that path.