Question 1:
GooCo filed a patent application for goo-whiz in the UK patent office 14 months ago. (Goo-whiz is a material that is useful as both a leak-stopper and an ice-cream topping.) The UK application is still pending and has not published yet. GooCo began selling the patent-pending product 6 months ago.
GooCo now wants to file for a U.S. Patent. Can it do so? (email) The answer will post tomorrow.
Leatherman Tool Group has obtained nearly 100 U.S. patents. Most are on aspects of their multipurpose tools. Their latest patent (U.S. patent 6,718,585) is a continuation that claims priority back to a 1997 application.
Joseph Miller has a new article (pdf) discussing incentives in patent infringement litigation.
A patent challenger who succeeds in defeating a patent wins spoils that it must share with the world, including all its competitors. This forced sharing undercuts an alleged infringer’s incentive to stay in the fight to the finish – especially if the patent owner offers an attractive settlement. Too many settlements, and too few definitive patent challenges, are the result.
Miller suggests that a litigation bounty delivered to the defendant could offset for the free-riding problem. In a further paper, Miller plans to expand his proposal to include a “patent attack bloc” that could allow defendants to better pool resources and rewards.
Sierra Applied Sciences, Inc. v. Advanced Energy Ind. (AEI) (Fed. Cir. 2004)
Sierra designed and tested a power supply that arguably infringes AEI’s Patents. (E.g., U.S. Patent 6,001,224). Sierra filed a declaratory judgment action prior to putting its power supply on the market and conceded that it did not intend to sell the supply unless the Court determined invalidity or noninfringement in favor of Sierra. The court considered whether a sufficient case or controversy existed to support such a declaratory action.
AEI’s counsel, at oral arguments, represented that AEI would not sue Sierra for its current in-house use (for design or testing) of its power supply technology. The Court found that these representations created an estoppel against AEI in future suits and thus eliminated any case or controversy for the associated actions. In reference to a second power supply technology being developed by Sierra, the Court ruled that Sierra’s efforts at developing the device were not sufficiently far along “on the date of the complaint.” Reversed-in-part, vacated-in-part, affirmed-in-part, and remanded.
Geof has more on the case.
Commentary: Declaratory judgments actions require action by both the defendant (e.g., threaten suit) and the plaintiff (e.g., arguably infringing activity) in order to be appropriate. It is interesting that the Court examined the plaintiff’s actions up to the date of filing the complaint (Sierra being far from completing its new product as of filing) but examined the defendant’s actions that occurred much later (counsel conceding at oral arguments that AEI will not file suit for in-house uses).
When worn, Josh Maggert’s necktie appears identical to a conventional necktie. . . . Secretly, however, the necktie has a lint-brush backing. When Josh wants to remove lint from his shirt, he simply brushes the back of the tie over the offending debris. (U.S. Patent 6,170,085).
Read necktie history here.
David Johnson has written a history of the necktie. The Lemelson-MIT program provides resources for inventors. Thanks to Kevin Heller for his link to tiegate.
It is time for my weekly thank you for those who have helped with the weblog.
Israel Encinosa helped with editing; Chan Stroman provided a listing of UChicago weblogs; Paul Goyette provided a listing of Chicago weblogs; Adam Charnes, Matthew Dallett, Ronald Coleman, Erin Mulder, Jeremy Blachman, Bruce MacEwen and Adam Kessel provided useful links. Hopefully, Todd Flaming will be a content contributor in the future.
Representative Smith (R Texas) talks on the Congressional floor about three recent Bills that have passed the House and are awaiting action in the Senate. Rep. Smith recently gave a speech to the ABA IP Section discussing the bills and other IP matters.
One of the recently passed Bills is the “Cooperative Research and Technology Enhancement (CREATE).” Under the Bill’s proposed amendments, 35 U.S.C. 102(f) references will not be considered prior art or as evidence of obviousness under section 103. (Section 102(f) references show the subject matter to be patented was not invented by the one applying for the patent.)
In addition, section 103(c) would be amended so that subject matter developed by another person and prior art under 102(e) or (g) will not preclude patentability if the subject matter and the clamed invention were, “at the time of the earliest filing date for which benefit is sought . . . owned by the same person or subject to an obligation of assignment to the same person.” The new law would not be retroactively applied.
The parallel Senate Bill S.2192 was introduced by Senator Hatch (R Utah). You can read Senator Hatch’s introduction of the Bill. According to co-sponsor Senator Leahy, this Bill will circumvent the ruling in OddzOn Products, Inc. v. Just Toys, Inc. (Fed. Cir. 1997) (holding that non-public information may be used as prior art under certain circumstances), thus allowing more collaboration. Philip McGarrigle published an article in IDEA discussing the OddzOn Products. Brian Murphy disagreed with OddzOn Products in the Fordham IP Law Journal. Additionally, James Gambrell discusses the use of section 102(f)/103 prior art in the Federal Circuit Bar Journal.
Parallel Bills have been introduced in the House and Senate to limit income tax deductions for charitable contributions of patents and similar property by requiring a “qualified appraisal.” S2103 H3867
Michigan State University provides some details for giving a charitable contribution of intellectual property as does giftlaw.com. Janal Kalis provides a story on changes made at the IRS regarding patent donations. According to the story, the IRS is cracking down because corporations were claiming greater donations than they were entitled to. Nipper provides more information and a link to the Intellectual Property Owners (IPO) commentary. The IPO has sent an open letter to Senator Grassley opposing the Bills.
SnippetsTM provides a review of timely developments in intellectual property law. Here is a table of contents of the most recent issue (April 2004):
1. Anthoula Pomrening, Drafting the Technology Game Plan, Part 4: Effective Trademark Searching
2. Blair Hughes, The New Statutory Interference Bar: Should you Monitor Competitors’ Published Patents?
3. Alison Baldwin, Patent Validity Assessments: Your Guide to Avoiding the On-Sale Bar
4. Michael Greenfield and Jennifer Swartz, Claim Construction 101: Unlocking the Meaning of Preambles
5. Brian Harris, Caveat Sender: What Else is Attached to Your E-Mail?
Those interested can request a pdf version of the publication by emailing your contact info to the editor.
Monsanto Co. v. Homan McFarling
McFarling replanted some ROUNDUP READY(r) soybeans that he had saved from his prior year’s crop in violation of the Technology Agreement that he signed as a condition of his purchase of the seeds from Monsanto. (U.S. Patents 5,633,435 and 5,352,605). On appeal from a summary judgment, McFarling argued that the Technology Agreement involved an unlawful misuse of Monsanto’s patents by restricting use of “god-made” second-generation seeds. The Court disagreed. Because the first-generation seeds (sold by Monsanto) were nearly identical copies to the second-generation seeds, the court found that the patent scope includes both generations. Thus, the Court rejected McFarling’s appeal and held that the Technology Agreement did not impermissibly extend Monsanto’s rights.
The Court vacated and remanded the district court’s damages award under Missouri law as an “unenforceable and invalid penalty clause.”
Andrew Hagen provides some anti-GMO comments and links. Canola Farmers may also be violating Monsanto’s patents. Here is an older article on the Roundup Ready soybean controversy, and here is another. Andrew Raff provides further commentary.
Update: Farmers in Argentina are allowed to cull seeds for replanting new crops. Apparently there is also a large black-market for GM seeds. (Thanks to Carol Nottenburg for the link).
Inland Steel Co. v. LTV Steel Co. and USX Corp.
The Court found that USX was a “prevailing party” on a claim before the district court, even though USX prevailed on the issue of invalidity in a different forum (a PTO reexamination). (U.S. Patents 4,421,574 and 4,483,723). Thus, USX may have a right to attorney fees and costs under 35 U.S.C. 285 and Rule 54(d) of the Federal Rules of Civil Procedure. The major indication of the status of prevailing party cited by the Court is that the case would have res judicata effect as to any claims brought against USX in the future with respect to the patent claims that were at issue in the district court case.
Reversed and remanded to determine whether the case is “exceptional” or if the court should exercise its discretion to allow or deny costs to the prevailing party.
The Northern District of Illinois has implemented a “recent opinion search page.” Searches can be done according to judge, filing date, nature of suit, etc. Thus, it is easy to find recent patent opinions. The N.D. Ill. webmaster does not know of any other district court that has implemented a similar tool. The text of the opinions are delivered in pdf format are not yet searchable. Lawyers Weekly provides links to sites providing opinions from the other district courts.
Joseph J. Zimmermann Jr., who invented the telephone answering machine in 1948 and patented it a year later, has died at age 92.
Chicago Tribune has the story. About.com provides more on the history of the answering machine. The Occupational Adventure Blog provides advice about a career as an inventor.
Phillips v. AWH Corp. (Fed. Cir. 2004)
In a case involving modular wall panels for prisons (U.S. Patent 4,677,798), the Federal Circuit interpreted the term “baffles” to structures oriented at angles other than 90 degrees. Although the ordinary meaning of the term (“something for deflecting, checking, or otherwise regulating flow”) includes 90 degree orientations, the Court listed two reasons for abandoning the ordinary meaning. First, the only embodiment shows “baffles angled at other than 90 degrees.” Next, the Court found that baffles angled at other than 90 degrees better realize the invention’s purpose of providing impact or projectile resistance.
In dissent, Judge Dyk argued that 1) a patent describing only a single embodiment is limited to that embodiment, and 2) impact or projectile resistance was not the only objective listed in the patent and claims are not required to be capable of achieving all of the objectives of an invention.
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NOTE: This case is scheduled for a rehearing en banc and will likely create dramatic changes to patent litigation procedures, just as Markman has done. Read more here.
Dechart LLP has released its Annual Report on Trends in Trademarks for 2003. The report finds a slight increase in trademark filing — indicating a moderate economic recovery.
The article was also covered in the New York Times (entitled “Patents as Economic Indicators”).
Although Dechart uses trademark data, others have contemplated the use of patent data as an economic indicator or a proxy for innovative activity.
Sources:
1. Crouch, D.D. and Crouch, H.L. (2003), “Environmentally Conscious Patent Histories,” Proceedings of Environmentally Conscious Manufacturing III, SPIE Proceedings 5262, 165-73.
2. Porter, M.E. and van der Linde, C. (1995), “Green and Competitive: Ending the Stalemate,” Harvard Business Review, September-October, 120-135.
3. Jaffe, A.B. and Palmer, K. (1997), “Environmental Regulation and Innovation: A Panel Data Study,” Review of Economics and Statistics, 79(4), 610-619.
4. Griliches, Z. (1990), “Patent Statistics as Economic Indicators: A Survey,” Journal of Economic Literature 28, 1661-1707.
5. Kortum, Samuel (1993), “Equilibrium R&D and the Patent-R&D Ratio: U.S. Evidence,” American Economic Review, 83(2), 450-457.
Lawrence Solum’s Blog directed me to Petra Moser’s presentation of How Do Patent Laws Influence Innovation? Evidence from the Nineteenth-Century World Fairs.
Japanese firm Fujitsu has sued Samsung in a US federal court, accusing the South Korean group of infringing its plasma display panel (PDP) patents. BBC has the story.
Fujitsu apparently holds approximately 800 patents on various features of PDP technology.
U.S. Supreme Court Will Not Listen to Halliburton Appeal
By David Ivanovich, Houston Chronicle Knight Ridder/Tribune Business News
The Supreme Court refused to hear Halliburton’s appeal to a $101 million infringement judgment in favor of BJ services. The allegedly infringed patent covers technology for extracting oil and gas.
See the Federal Circuit’s opinion.
In the most interesting portion of the case, the Appellate Court found that the District Court erred in allowing the jury, while determining validity, to consider factual misstatements made by the patentee during prosecution. (Jury did not rule on inequitable conduct.) The Appellate Court did not overrule the verdict on that point, however, because no objection was made at trial.
The case was reversed and remanded on other grounds.
The Federal Judicial Center has recently revised the Manual for Complex Litigation. “This edition updates the treatment of electronic discovery and other aspects of pretrial management and describes major changes affecting case management in the substantive and procedural law in mass torts, class actions, intellectual property, employment discrimination, and other types of litigation. A new chapter deals with managing scientific evidence.”
This weblog is intended to provide limited information and commentary on current events in the area of patent law. This weblog is NOT LEGAL ADVICE. Please do not rely upon any information or commentary in this weblog because it may be in error or may be out of date. Please independently confirm any developments.
I encourage anyone with legal questions to consult an attorney.
The contents of this weblog are the personal views of the weblog creater and are not to be imputed to the creater’s law firm. The weblog creater does not intend to create an attorney-client relationship by providing this information to you.