New PatentlyO Patent Law Journal article by Thomas F. Cotter, Taft Stettinius & Hollister Professor of Law, University of Minnesota Law School, and Innovators Network Foundation Intellectual Property Fellow.  Professor Cotter is also the author of the Comparative Patent Remedies blog. 

Abstract:  It has often been observed that, while patent rights are territorial in scope, commerce is global and, increasingly, interconnected.  Indeed, with the advent of 5G and the Internet of Things (IoT), technical standards soon will enable not only devices such as smartphones and tablets, but also automobiles, medical devices, and even home appliances to receive and transmit data within and across national borders.  To achieve these ends, firms participate in standard-setting organizations (SSOs) to hammer out the technical standards that enable communication and interoperability among devices.  Moreover, because the implementation of these standards requires the use of many different, typically proprietary, technologies, SSOs generally encourage or require their members both to declare their ownership of patents that may be essential to the practice of the relevant standard, and to commit to licensing these standard-essential patents (SEPs) on fair, reasonable and nondiscriminatory (FRAND) terms.  The FRAND commitments themselves, in turn, often are interpreted as binding contracts for the benefit of third parties (that is, for the benefit of implementers).  In principle, these requirements work to ensure both that implementers are able to access essential technologies, and that owners are fairly compensated for their inventive contributions. 

Two problems nevertheless can impede the smooth working of such a system.  The first is that SSO rules typically do not define the term “FRAND,” for a variety of reasons.  Disputes over the meaning of FRAND therefore are inevitable.  The second is that, because patents are territorial, courts often have been reluctant to adjudicate foreign patent rights.  This understanding of patent rights, however, might appear, to some observers at least, to collide with commercial realities, when parties are unable to reach agreement and opt for adjudication by national courts.  Current responses to these problems are likely to prove unsatisfactory for both owners and implementers; a comprehensive solution nonetheless remains, for now, elusive.

Read: Thomas F. Cotter, Is Global FRAND Litigation Spinning Out of Control, 2021 PatentlyO Law Journal 1 (2021) (Cotter.2021.GlobalFRANDLitigation)

Prior Patently-O Patent L.J. Articles:

• Colleen V. Chien, Nicholas Halkowski, Maria He, and Rodney Swartz, Parsing the Impact of Alice and the PEG, 2020 Patently-O Law Journal 20 (2020) (Chien.2020.ImpactOfAlice)
• Paul R. Michel and John T. Battaglia, eBay, the Right to Exclude, and the Two Classes of Patent Owners, 2020 Patently-O Law Journal 11 (2020) (Michel.2020.RightToExclude)
• Thomas F. Cotter, Two Errors in the Ninth Circuit’s Qualcomm Opinion, 2020 Patently-O Patent Law Journal 1 (2020). (Cotter.2020.TwoErrors.pdf)
• Jasper L. Tran & J. Sean Benevento, Alice at Five, 2019 PatentlyO L.J. 25 (2019) (Tran.2019.AliceatFive.pdf)
• Bernard Chao, Implementing Apportionment, 2019 PatentlyO L.J. 20 (Chao.2019.ImplementingApportionment)
• Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)
• Colleen V. Chien, Piloting Applicant-Initiated 101 Deferral Through A Randomized Controlled Trial, 2019 Patently-O Patent Law Journal 1. (2019.Chien.DeferringPSM)
• David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
• Colleen Chien and Jiun-Ying Wu, Decoding Patentable Subject Matter, 2018 PatentlyO Patent Law Journal 1.
• Paul M. Janicke, Patent Venue: Half Christmas Pie, And Half Crow, 2017 Patently-O Patent Law Journal 13. (Janicke.2017.ChristmasPie.pdf)
• Paul M. Janicke, The Imminent Outpouring from the Eastern District of Texas, 2017 Patently-O Patent Law Journal 1 (2017) (Janicke.2017.Venue)
• Mark A. Lemley, Erik Oliver, Kent Richardson, James Yoon, & Michael Costa, Patent Purchases and Litigation Outcomes, 2016 Patently-O Patent Law Journal 15 (Lemley.2016.PatentMarket)
• Bernard Chao and Amy Mapes, An Early Look at Mayo’s Impact on Personalized Medicine, 2016 Patently-O Patent Law Journal 10 (Chao.2016.PersonalizedMedicine)
• James E. Daily, An Empirical Analysis of Some Proponents and Opponents of Patent Reform, 2016 Patently-O Patent Law Journal 1. (Daily.2016.Professors)
• Tristan Gray–Le Coz and Charles Duan, Apply It to the USPTO: Review of the Implementation of Alice v. CLS Bank in Patent Examination, 2014 Patently-O Patent Law Journal 1. (GrayLeCozDuan)
• Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Journal 1 (Stoll.2012.estoppel.pdf)
• Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29.  (Morgan.2011.AIAAmbiguities)
• Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Journal 12 (sarnoff.2011.derivation.pdf)
• Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent Patent Law Journal 6 (chao.sealedrecords.pdf)
• Benjamin Levi and Rodney R. Sweetland, The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC):  Unsound, Unmeasured, and Unauthoritative, 2011 Patently-O Patent Law Journal 1 (levi.ftcunsound.pdf)
• Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent Law Journal 111 (Collins.KingPharma.pdf)
• Robert A. Matthews, Jr., When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking, 2010 Patently-O Patent Law Journal 95 (matthews.falsemarking.pdf)
• Kristen Osenga, The Patent Office’s Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89 (Osenga.pdf)
• Peter S. Menell,  The International Trade Commission’s Section 337 Authority, 2010 Patently-O Patent L.J. 79
• Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently‐O Patent L.J. 72
• Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24
• Etan Chatlynne, Investigating Patent Law’s Presumption of Validity—An Empirical Analysis, 2010 Patently-O Patent L.J. 37
• Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24 (Kasdan.Casino.Damages)
• Dennis Crouch, Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases, 2010 Patently-O Patent L.J. 19 (2010)
• Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently‐O Patent L.J. 7  (2010) (Reines.2010)
• Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) (Nominee Diversity)
• Paul Cole, Patentability of Computer Software As Such, 2008 Patently-O Patent L.J. 1. (Cole.pdf)
• John F. Duffy, The Death of Google’s Patents, 2008 Patently O-Pat. L.J. ___ (googlepatents101.pdf)
• Mark R. Patterson, Reestablishing the Doctrine of Patent Exhaustion, 2007 Patently-O Patent L.J. 38
• Arti K. Rai, The GSK Case: An Administrative Perspective, 2007 Patently-O Patent L.J. 36
• Joshua D. Sarnoff, BIO v. DC and the New Need to Eliminate Federal Patent Law Preemption of State and Local Price and Product Regulation, 2007 Patently-O Patent L.J. 30 (Download Sarnoff.BIO.pdf)
• John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. (Duffy.BPAI.pdf)
• Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1 (Casino-Seagate)

By Jason Rantanen

Solutran, Inc. v. Evalon, Inc., U.S. Bancorp (Fed. Cir. 2019) 19-1345.Opinion.7-30-2019

Panel: Chen (author), Hughes and Stoll

This opinion involves review of a district court opinion denying summary judgment that claims 1-5 of U.S. Patent NO. 8,311,945 are invalid for failure to recite patent-eligible subject matter.  (The district court also granted summary judgment that the claims were infringed.)

Claim 1 is below.  Without knowing more, can you predict how the court resolved the appeal?

1. A method for processing paper checks, comprising:

a) electronically receiving a data file containing data captured at a merchant’s point of purchase, said data including an amount of a transaction as-sociated with MICR information for each paper check, and said data file not including images of said checks;
b) after step a), crediting an account for the mer-chant;
c) after step b), receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and, for each said check, associating said digital image with said check’s MICR information; and
d) comparing by a computer said digital images, with said data in the data file to find matches.

The answer is after the jump.

(more…)

by Dennis Crouch

Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117 (Fed. Cir. 2018) offers an example of a claim on the cusp of eligibility.  In a 2-1 decision, Vanda’s schizophrenia treatment claim was found eligible with Judge Lourie penning the majority and Chief Judge Prost in dissent. Judge Hughes was the swing vote here.

I have several thoughts on the patents at issue here, but they boil down to the following (1) Vanda’s claims should be patent eligible; (2) but the claims are not patent eligible under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

Now, West-Ward has filed its petition for rehearing en banc on the following question*:

1. Whether adjusting a dose of an old drug based on a patient’s genetic risk of poorly metabolizing it is eligible for patenting under 35 U.S.C. § 101.

A brief in support has been filed by Inventia and Mylan.

I previously wrote that “the majority’s approach appears to latch onto simple patent drafting tricks as the basis for distinguishing Mayo — an approach directly rejected by the Supreme Court in Mayo.”

The claim in Vanda is directed toward a method of treating a patient suffering from schizophrenia with the drug iloperidone. The drug was already known as a schizophrenia treatment prior to the invention here, but some individuals did not tolerate the drug well (risk of “QTc prolongation”). The major discovery of the inventors here was that a genetic difference (the “CYP2D6 genotype”) led to those folks likely being poor metabolizers of iloperiodon.  The patent then has two basic steps:

1. Determining whether the patient is genetically a poor metabolizer of the drug (i.e., has the CYP2D6 genotype)
2. Administering iloperidone to the patient (<12 mg per day if express CYP2D6 genotype; otherwise 12-24 mg per day) in order to reduce the risk of “QTc prolongation” for poor metabolizers.

The basics here is that the inventors discovered the relationship between the genetic expression, a potential risk, and a safe drug level. That discovery itself is clearly not patentable and so the patentee added

The Supreme Court’s Mayo decision also involved a personalized treatment approach  (this time for IBD) based upon metabolization rate with the following two steps:

1. Administering the drug (6-thioguanine) to treat the GI disorder; and
2. Measure (“determine”) the level of the drug (6-thioguanine) in the blood — with low levels (<230 pmol per 8×10⁸ red blood cells) indicating a need to increase the next drug dosage and high levels (>400 pmol per 8×10⁸ red blood cells) indicating a need to decrease the next drug dosage.

In distinguishing these claims the majority explained that

Mayo was a diagnostic method while Vanda is a treatment method.  The reality is though that both are diagnostic and treatment oriented.  What the majority suggests, but does not say, is that Mayo’s claims would be patent eligible if they added one more step of injecting the new dosage. To me added injection sounds like the type of non-inventive post-solution activity that cannot transform an ineligible law of nature into a patent eligible invention.

Stepping back a little bit — One way to think about this case is as the flip side of Sequenom. In that case, the Federal Circuit followed Mayo, but expressly called for the Supreme Court to revisit its eligibility doctrine.  In his en banc denial concurring opinion, Judge Lourie wrote: “I find no principled basis to distinguish this case from Mayo, by which we are bound.”  However, the Supreme Court did not grant certiorari in Sequenom.  Rather than following that same approach — asking for help from the Supreme Court — The court in Vanda decided to make it happen themselves.  In my view, an en banc denial here will be a high flaunting of Supreme Court precedent — the question then will be what – if anything – will the Supreme Court do about it?

• Vanda Petition
• Vanda Amicus
• Vanda Decision
• Vanda Patent

Eligibility: Preamble Does the Trick for Federal Circuit

by Dennis Crouch

Maxon v. Funai (Fed. Cir. 2018) (nonprecedential opinion)

In a sweeping judgment,the N.D. Ill. district court dismissed Maxon’s infringement case — finding the claims of the plaintiff’s four asserted patents to be invalid for claiming ineligible subject matter under 35 U.S.C. 101.   On appeal, the Federal Circuit has affirmed.

The patents here are all part of the same family — all directed to a seeming business method of providing an “electronic means of increasing user control over subscription entertainment content.”  U.S. Patent Nos. 8,989,160; 7,489,671; 7,486,649; and 7,171,194.  Although the bulk of the patents were issued pre-Alice (2014), the ‘160 was issued later in 2015.  During prosecution, the examiner did reject the claims originally under Section 101 — that was overcome however by amending the specification to limit “computer-readable medium” to only non-transitory storage.  Of course, that strict line-drawing does not work for the flexible eligibility analysis applied in court.

Claim 8 of the ‘160 patent is listed down below and is treated as representative.  The claim is directed to a device capable of sharing services with other devices.  In walking through the two-step Alice framework, the Federal Circuit first noted the patentee admitted that the patents were directed to an abstract idea — that of “decentralized delivery controlled by the owner of a plurality of devices.” Yes indeed, the opening brief begins with the following statement: “Maxon’s claims are indeed directed to an abstract idea: decentralized service delivery controlled by the owner of a plurality of devices.”  This is a strategy that I probably would have avoided — especially recognizing the strong correlation between the two Alice steps.

While is true that a claim directed to an abstract idea can still be patent eligible if they offer application of an inventive concept beyond the abstract idea itself, that did not work here for Maxon.  Rather, both the district and appellate courts found “the claims merely recite generic computer elements for their basic functions and thus do not transform the claimed abstract idea into eligible subject matter under Alice.”  Maxon had argued that the “ordered combination of the claimed elements” constituted an inventive step. The courts disagreed with that argument — holding that “[t]he only method of reaching the result the patent teaches is, in essence, use of generic computer components for their standard purposes to achieve the result.”

Invalidity Affirmed.

= = = = =

Representative Claim 8:

An audio-video device capable of sharing services with a plurality of other devices within a personal network, the audio-video device comprising:

a computer-readable medium having storage for a first address corresponding to the audio-video device, a second address corresponding to the personal network, and a third address corresponding to a service provider network;

input/output logic configured to receive from a user a desired change to a service capable of being provisioned to the audio-video device from at least one service available generally to the personal network;

a processor in communication with the computer-readable medium and the input/output logic, the processor programmed to prepare an inbound signaling word comprising at least the first address and payload data representing the desired change to the service capable of being provisioned to the audio-video device from the personal network;

and a transceiver providing the inbound signaling word to the service provider network where the service provider network comprises logic to process the inbound signaling word including modifying stored information in a subscriber database to effect the desired change to the service capable of being provisioned to the audio-video device from the personal network,

the transceiver further receiving an outbound signaling word comprising the first address corresponding to the audio-video device and data indicating the desired change to the personal network, the outbound signaling word responsive to the desired change to the service capable of being provisioned to the audiovideo device from the personal network.

by Dennis Crouch

The Federal Circuit’s decision in Two-Way Media is in some amount of tension with the court’s 2016 decision in Amdocs v. Openet Telecom.   In Amdocs, the court noted that the claims appeared problematic under Section 101 (abstract ideas), but that the architecture – as specifically described in the specification but more generically claimed – showed that the invention was actually a technological improvement.  In Two-Way Media, the court faced the same dilemma but arrived at the opposite conclusion — holding that although the specification described a technological improvement, the claims were written at too abstract a level to be patent eligible.

Note here that Judge Reyna dissented in Amdocs.  However, rather than accepting the Amdocs precedent, Reyna is now the author of Two-Way Media – a decision that does not cite Amdocs.  Wow.

Other cases in this intra-circuit-split include Smart Sys. Innovations, LLC v. Chicago Transit Auth.,(Fed. Cir. Oct. 18, 2017); Synopsys Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016); and Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017).   The chart below shows these results with the invalidity opinion in blue, and validity opinion in orange.

Now pending before the U.S. Supreme Court is Openet’s petition for writ of certiorari asking the following question:

To be patent eligible, a patent must claim “the means or method of producing a certain result, or effect, and not [the] result or effect produced.” Corning v. Burden, 56 U.S. 252, 267-68 (1854). This principle has driven this Court’s patentable subject matter jurisprudence for over 150 years, including most recently the “search for an inventive concept” described in the second step of the Alice/Mayo framework. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (quoting Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 72 (2012)). Because a patent’s claims define the scope of the invention, this Court stated in both Alice and Mayo that this second step of the eligibility analysis turns on what is “in the claims.” The question presented is:

Whether the Federal Circuit erred by looking beyond the claims to the patent specification to assess patent eligibility

In the pending case, petition-stage briefs are in and the court is scheduled for conference later this month.

• 17-136-petition
• 17-136-BIO
• 17-136-Reply

I should note here that the patentee Amdocs disagrees with Openet’s characterization of what happened.  Rather, the patentee argues that “The Federal Circuit’s decision on patent eligibility thus rested not on material drawn willy-nilly from the specifications, but on the scope of the claims as construed in Amdocs I at Openet’s urging.”

Will the Supreme Court react to a Business Method Patent Held Valid?

In its first action for the October 2017 term, the Supreme Court has (inter alia) denied Certiorari in three pending Patent Cases:

• 16-1288 SYNOPSYS, INC. V. MENTOR GRAPHICS CORPORATION
• 16-1442 ARUNACHALAM V. SAP AMERICA, INC.
• 16-1427 OLEKSY V. GENERAL ELECTRIC CO.

Of these, only Synposis was truly interesting.  That case asked for a review of the law and procedure of the Abstract Idea inquiry under Section 101:

In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Court reaffirmed the two-part test for determining whether an invention is patent-eligible under 35 U.S.C. § 101: (1) whether the patent claims are directed to a patent ineligible concept, such as laws of nature, natural phenomena, or abstract ideas, and (2), if so, whether the elements of the claim contain an “inventive concept” that transforms the ineligible concept into an invention that is patent-eligible. Here, a panel of the Federal Circuit held that in determining whether a patent is directed to an abstract idea, a court must ignore the specification and evaluate only the express limitations in the claims. The panel further held that the accused patents failed the second step of Alice because the claims do not explicitly call for involvement of a computer and therefore could not be characterized as an improvement to computers. The questions presented are:

1. Whether the § 101 inquiry requires courts to ignore the specification, as the Federal Circuit held, or whether courts should ascertain the true scope of the claims in light of the specification and intrinsic record in determining whether they are drawn to a patent-ineligible concept.

2. Whether an otherwise revolutionary technological breakthrough is not an “inventive concept” under the second step of Alice merely because the court believed the breakthrough could theoretically be implemented without a computer.

Mentor Graphics v. Synopsys: Covering All the Bases

In his case, Oleksy faced an uphill battle against an affirmance-without-opinion.

John Martin and his team at Innography have released their bi-annual update on the patent market. LINK. Their primary finding: Alice v. CLS Bank “hasn’t affected the volume of US patent sales, which continues its roughly 10% per year increase over the last several years.”  The short report hits a number of highlights, including recent deals by Porsche, Google, LinkedIn, and others. Although the report does delve into particularly technological issues, its tracking remains in terms of quantities rather than valuation.

Article on the TT brief for Alice Corp: http://washingtonexaminer.com/pro-patent-firms-team-up-in-brief-to-u.s.-sc-in-case-over-patent-eligibility/article/feed/2124672

Read the brief: http://sblog.s3.amazonaws.com/wp-content/uploads/2014/02/TT-Alice-v-CLS-merits-stage-vF.pdf

Guest Post by Martin Goetz

In the Alice vs. CLS Bank case that is before the Supreme Court the question by Alice is "Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter…". That's the wrong question to ask.

Equally wrong is to boil down that question to "Is software patentable"which both IP lawyers and the media are quick to do (see Crouch'sblog "Is Software Patentable?: Supreme Court to Decide"and Forbes articleSupreme Court Takes Up Case Challenging Software Patents).

The correct question, which the Supreme Court has answered indirectly and affirmatively in the past, but never in the way I have re-phrased the question is, "Is a 'true invention' that contain as part of (or all of) its disclosure (in its patent application) a digital computer (and a computer program), entitled to US patent protection."

I deliberately put in quotes true invention for that's not part of the debate. In previous patently-O articles I give just a few examples of true inventions which used a digital computer and software as part of their implementation of the invention e.g., artificial retina, voice translation, driverless car, Reading machine for the Blind and 3-D printer. Few, I believe, would debate whether those examples deserve the protection of the US patent System.

For a more in-depth discussion on my arguments of why "Is software patentable?" is the wrong question to ask, see my four patently-O blogs Do the Wright Brothers Deserve a Patent for their Flying Machine?: Why Eliminating Software Inventions from the Patent System Makes No Sense. , "No" to Software Patents Per Se: Software is Only a Means to an End. , In Defense of Software Patents and In Defense of Software Patents – Part 2.

Today, there are hundreds if not thousands of true, and undebatable, inventions that contain a digital computer and computer programs as part of their disclosure in virtually all world-wide industries, including the software industry.

For those that believe that the US patent system has spurred innovation and the growth of the United States since the patent system became law in 1790, eliminating true inventions that contain software as part of their disclosure, would be a catastrophe for the growth and health of the US economy.

In re Deutsche Bank Trust (Fed. Cir. 2009) (on motion for stay of order)

Island IP and its corporate parent Double Rock sued Deutsche Bank and others for infringement of their patent covering a bank account management technique to improve “deposit sweep” services. Pat. No. 7,509,286. Charles Macedo is the lead counsel for the patentee. Macedo also handles patent prosecution prosecution for the patentee.

During the litigation, the defendants requested a “patent prosecution bar” be placed against Macedo that would exclude him from continued involvement in prosecution of Double Rock’s patents. The defendants argue that Macedo’s access to the defendants' confidential information in the litigation will be used for competitive decisionmaking during prosecution.

The district court (adopting the magistrate decision) rejected the defendants’ argument – finding that a party’s right to choose its own counsel prevails over the potential risk of disclosure. This decision would lift an interim protective order that had prevented Macedo from prosecuting patents.

The Federal Circuit has now granted a stay of the order pending its decision on whether to grant a writ of mandamus. [Link] In its argument, Deutsche Bank cited a half dozen similar cases where district courts limited the litigating attorney from prosecuting the patents at the same time.

"The majority of district courts, including the courts in the Second Circuit, have found that an attorney who has obtained access to an adversary’s confidential information during the course of litigation should not be permitted to make use of that information in prosecuting his own client’s patent applications." (Quote form DB brief)

Notes:

• File Attachment: DB Brief.pdf (47 KB)
• Macedo has been a past contributor to Patently-O and recently published a book “The Corporate Insider’s Guide to US Patent Practice.
• The patentee recently submitted a brief in the Bilski case arguing for broad patent subject matter. [Link]. The patent claims asserted here will pretty clearly face an uphill battle under the Federal Circuit's Bilski analysis. Claim 1 is reproduced below:

1. A method for managing funds of a plurality of respective client accounts associated with a plurality of respective clients participating in a program, comprising:

maintaining a plurality of FDIC-insured and interest-bearing aggregated deposit accounts, each of the aggregated deposit accounts being interest-bearing, with one or more of the aggregated deposit accounts held in each different one of a plurality of financial institutions in the program;

maintaining funds of a plurality of the clients in the plurality of aggregated deposit accounts so that each aggregated deposit account holds funds of a plurality of the clients, with each client account in a subset of the plurality of client accounts having funds in their respective client account over a predetermined amount, with each of the respective client accounts in the subset having funds deposited in a plurality of the aggregated deposit accounts;

maintaining or having maintained or accessing by computer an electronic database, on one or more computer-readable media, comprising a respective balance of funds for each of a plurality of the respective client accounts in the subset and information on funds held by each of the plurality of clients of the subset in the plurality of aggregated deposit accounts;

receiving electronic client transaction data describing debit and/or credit transactions made by a plurality of clients against their respective client accounts;

updating the respective balance of funds in the database associated with each of the respective client accounts in the subset based on one or more debit and/or credit transactions made by the respective client;

determining electronically for each of the plurality of the client accounts in the subset of client accounts a respective interest rate from among a plurality of interest rates in an interest-allocation procedure based at least in part on the updated balance of funds associated with the respective client account in the subset;

calculating electronically a respective interest for a period to be posted to each of a plurality of respective client accounts in the subset, with the respective interest to be posted to a respective client account determined based on the respective interest rate determined for that respective client account in the subset, with the calculating being independent from the respective client account pro rata share in earnings posted to the plurality of the aggregated deposit accounts holding funds of the respective client account;

determining interest earned during the period by each of the plurality of aggregated deposit accounts in the program; and

posting electronically the respective interest calculated for each of the plurality of respective client accounts based on the respective interest rate determined for the respective client account.