May 2004

Submarine patent

Articles and Publications, Patent

George Graff and Adam Kraidin have written a concise article for the Washington Legal Foundation that neatly summarizes current law on submarine patents. Submarine patents use successive continuation applications to claim previously disclosed but unclaimed features of an invention many years after the filing of the original application. Ricoh v. Nashua (Fed. Cir. 1999).

Most recently, the Nevada District Court in Symbol Technologies v. Lemelson used a 7-factor test in finding Lemelson’s patents unenforceable.

1. The overall delay between the filing of the application and the issuance of the claims;
2. The initial delay in presenting the claims to the patent office for the first time;
3. Lemelson’s original disclosures were made public in the 1960s, and the original patents based on those disclosures had expired by the early 1980s;
4. Before the asserted claims were filed, numerous articles and patents describing machine vision and bar code scanning had been published, and commercial products had been developed and marketed;
5. Lemelson was aware of the developments in the machine vision and bar code fields, but still delayed the issuance of patents asserting his claims;
6. Lemelson systematically extended the pendency of his applications by sitting on his rights, and sequentially filing one application at a time, so that he could maintain their pendency while waiting for viable commercial systems to be designed and marketed; and
7. Finally, after others had successfully developed and commercially exploited the technology, Lemelson drafted and prosecuted hundreds of new claims in the late 1980s and 1990s specifically worded to cover those commercial systems.

In addition, the Symbol court noted that widespread use of Lemelson’s technology prior to the suit “created adverse intervening private and public rights.”

Richard Epstein and Hatch-Waxman

Articles and Publications, Patent

My former professor, Richard Epstein, has a new working paper with co-author Bruce Kuhlik arguing that the Hatch-Waxman Act represents a “sound compromise” that should not be undercut by pro-generic legislative efforts.

Strong property right protection — as opposed to the compulsory licensing schemes advocated by others . . . should remain the dominant approach in patent law.

We think that Heller and Eisenberg have overstated the case against patent protection at both the theoretical and empirical level. . . . We see no reason to believe that the sole or dominant purpose for [obtaining a patent] is to block innovations by others. Patents themselves are expensive to acquire. The inventor only makes income to the extent that it can assign, license or sell the patent in question.

Epstein & Kuhlik specifically address S.812 (Greater Access to Affordable Pharmaceuticals Act) passed by the Senate in 2002. (Reintroduced here). They argue that the Act’s anti-price-discrimination terms would push the price of patented drugs down to a generic pricing level — effectively repealing the patent.

And, without ample patent protection, no combination of first mover advantages or altruism will generate the capital sums needed [to fund the high cost of pharmaceutical research].

(Thanks to Professor Sampat for the link).

Although not a direct rebuttal, Colman Ragan argues in the most recent Federal Circuit Bar Journal that procedural amendments to Hatch-Waxman will help lower drug prices.

Intirtool v. Texar (Fed. Cir. 2004)

Patent, Patent Cases 2004,

img003
Intirtool, Ltd. (MASS-TEX) v. Texar Corp. (ToolPro) (Fed. Cir. May 10, 2004).

In this patent infringement case, the district court found that Intirtool’s patent was invalid for failure to satisfy the written description requirement. (U.S. Patent 5,022,253) Additionally, the district court concluded that damages accrued prior filing the lawsuit were barred by laches. The Federal Circuit reversed these rulings for either clear error or abuse of discretion.

The first dispute revolved around whether the preamble:

hand-held punch pliers for simultaneously punching and connecting overlapping sheet metal

restricted the claims to pliers that have a connecting functionality.

The Federal Circuit held that the preamble was not limiting in this case because the body of the claim was described in such exacting structural detail that deletion of the preamble would not affect the claim. (NOTE: The body of claim 1 is quite large for this type of technology, listing 60+ lines in the patent).

In terms of inequitable conduct and laches,

the district court based its conclusion that Intirtool had engaged in inequitable conduct on its view that Intirtool had, during the prosecution of the ’253 patent, “repeatedly stated, and indeed stressed, that the described tool simultaneously punched holes and connected ceiling grids, knowing that this assertion was false.”

The Federal Circuit again disagreed with the district court – finding that the “connecting” references made by the patentee were “merely preamble features of the invention.”

Housey v. Astrazeneca (Fed. Cir. 2004)

Patent, Patent Cases 2004,

ScreenShot006
Housey Pharmaceuticals, Inc. v. Astrazeneca UK Ltd. & Bristol-Myers Squibb & Merck, et al.(Fed. Cir. May 7, 2004).

In an infringement suit concerning Housey’s assay method patent, the Federal Circuit held that the definition of an “inhibitor or activator” included substances that both directly and indirectly affect a protein of interest. (U.S. Patent 5,688,655, et al.) The Court arrived at its decision based on the plain meaning of the terms (from dictionaries) and because the patent did not “clearly disavow this broad plain meaning.” Invalidity affirmed.

In dissent, Judge Newman argued that

My colleagues’ approach to construction is based on confusing recent pronouncements of panels of this court, contravening earlier statements of precedent, thus adding to the confusion. . . . It is curious indeed to announce a “heavy presumption” that the meaning of a term in a patent claim is unencumbered by the specification, and to place a “heavy burden” on overcoming that presumption. . . . The written description is not an also-ran in claim construction, as the panel states; it is the primary resource in understanding the claims.

Advice for Future Patent Attorneys

Articles and Publications, Patent

Michael Madison, a professor at Pittsburgh, has provided some good advice for any scientist or engineer hoping to move into the field of patent law:

I have two standard responses: One is: run, don’t walk, away from “law school prep courses.” (How to read cases, outline courses, take exams.) They’re worse than useless. They’re useless and expensive. Two is: Read Shakespeare. Or if not Shakespeare, then read Melville. Dickinson. Ellison. Baldwin. Morrison. Borges. Milosz. Pick a major literary figure–any gender, any genre, any era–and read that person’s works. Be literate, in every sense of that word.

Dr. Quentin Young

Articles and Publications, Patent

My neighbor, Dr. Quentin Young has a letter in today’s Chicago Tribune concerning medicine prices:

We need to negotiate with pharmaceutical firms, demanding that they provide much greater value for their products. Much of their research is wasted on products that are designed to restart the patent clock.

And then they waste funds on intensive marketing to convince physicians and the public that these more expensive products should be purchased when they are often no better than existing, but less profitable, generic products.

Quentin has been an activist for a national health care system and is now the National coordinator of Physicians for a National Health Program

Downloading patents – Cheaper than music.

Articles and Publications, Patent

Tim Uy at Stanford emailed about his newest venture — onCloud8. You can download patents and applications for 88 cents a pop.

I don’t know how Tim obtains the raw patents data. Those who are planning to download from the USPTO in quantity should beware. I have a friend who set up a perl script to download about 300,000 patents — the USPTO eventually blocked his IP addresses. They have a policy against excessive downloading.

These databases are intended for use by the general public. Due to limitations of equipment and bandwidth, they are not intended to be a source for bulk downloads of USPTO data. Bulk data may be purchased from USPTO at cost (see the USPTO Products and Services Catalog). Individuals, companies, IP addresses, or blocks of IP addresses who, in effect, deny service to the general public by generating unusually high numbers (1000 or more) of daily database accesses (searches, pages, or hits), whether generated manually or in an automated fashion, may be denied access to these servers without notice.

“At cost” may be a bit shocking. For example, 2004 patent application data for 2004 has a cost of $37,800. (Pricelist)

Update: Tim is a graduate student in applied physics, and his data is not coming from the USPTO site. If you have specific requests, he may be able to work with you. email Tim.

Technology Transfer and Assignment via eBay

Articles and Publications, Patent,

Here is your chance to purchase all rights to the Pollution-Free Alternative Fuel Moter Conversion Kit invented by Ron Meritt.

Meritt has designed the conversion kit to allow motors to run on either flamable or non-flammable fuels, meaning that a properly converted motor using this technology may run on just about any gas or liquid, including water.

According to Meritt’s website an eBay auction will begin May 10 and run for 10 days with no reserve. The purchaser will receive

pending patents, trade secrets, a fully functioning prototype engine, and all documentation associated with this invention.

I did not find any patents or published patent applications for the alternative fuel technology (either invented by or assigned to Meritt). This likely means that applications were filed within the last 18 months or that the patents were not filed worldwide.

ScreenShot005
According to Jim Mateja at the Tribune, Meritt is the

same man who brought us the portable video players for cars, the one in a backpack that can be lung on the front seat so kids can watch their favorite movies.

Good luck bidding!

Update 5/10/04: Some additional information has been provided at the Meritt website noting that “documents” have been submitted to the USPTO.

It should be noted that the minimum legal documents were submitted to protect the secrecy of this design. The buyer is strongly advised to retain a licensed patent attorney to submit additional legal documents to insure maximum protection for this technology. The buyer understands that from the date of purchase, all future funding for engineering, technology development, legal protection or representation, and any other resource supporting this technology, prototype motor, and/or project is the responsibility of the buyer.

Here is a bio of Ron Meritt.

If you are interested in more environmental law news, Stephen Filler has a nice environmental blog known as Green Counsel.

Reach Through Claims

Articles and Publications, Patent

Basic scientific researchers often file patents with “reach through” claims that attempt to cover treatment of a patent using a drug developed from the researcher’s assay. The University of Rochester’s patent covering Celebrex(r) was found invalid in 2003 after the Federal Circuit held that the written description did not adequately cover the reach through claims. (Case).

In a recent article, BSK offers some advice for capturing the value of basic research. (HTML PDF). Their advice relies on resourceful patent drafting in order to ensure that the written description requirement is satisfied. Alternatively, creative licensing may allow a research institution to link royalties for their new discoveries and assays to successful product development or FDA approval by licensing pharmaceutical companies.

Merrill Goozner has a great post discussing the conflict of interests problems at basic research insitutions (like the NIH) that stem from outside consulting and patenting.

Intellectual Property Task Force

Articles and Publications, Patent

One of my old professors, Jack Goldsmith, has joined the Justice Department’s new Intellectual Property Task Force headed by David Israelite. The task force will reexamine how the DOJ handles IP issues and develop a set of recommendations.

According to Mr. Israelite,

The Attorney General is committed to vigorous enforcement of the law and the protection of intellectual property rights, and those priorities will guide the task force as it seeks to strengthen and improve the Justice Department’s efforts in the intellectual property arena.

Elan v. Andrx Pharmaceuticals (Fed. Cir. 2004)

Patent, Patent Cases 2004

Andrx

Elan Corp. v. Andrx Pharmaceuticals, Inc. (Fed. Cir. May 5, 2004)

In this case, the Federal Circuit determined that there was no on-sale-bar, thus reversing the district court’s finding of invalidity.

More than one year before filing for a patent, Elan made several offers to enter into a license under a patent for future sales of their invention “when and if it had been developed.”

The court found that this was not an offer to sell but rather a permissible offer to license because the communication was not a definite offer including material terms.

The letter . . . lacked any mention of quantities, time of delivery, place of delivery, or product specifications beyond the general statement that the potential product would be a 500 mg once-daily tablet containing naproxen. Moreover, the dollar amounts recited . . . are clearly not price terms for the sale of tablets, but rather the amount that Elan was requesting to form and continue a partnership with Lederle. Indeed, the letter explicitly refers to the total as a “licensing fee.”

Stevens v. Tamai (Fed. Cir. 2004)

Patent, Patent Cases 2004

tape
Stevens v. Tamai (May 4, 2004) (Correction Tape Dispenser)

In an interference proceeding, The Federal Circuit reversed the Patent Board’s holding.

Tamai’s application was a continuation (A3) of a continuation (A2) of an original (A1). Unfortunately (for Tamai), he failed to properly submit a translation of A2 to the Board to prove the lineage. The Court found for Stevens because Tamai’s priority claim failed. The real lesson in this case is to follow the rules of the Patent Board. A timely authenticated translation may have won the case for Tamai.

Defensive Patenting

Patent

Chris Pratley gives a glimpse into Microsoft’s patenting story:

At Microsoft, we used to pay little attention to patents – we would just make new things, and that would be it. Then we started getting worried – other big competitors (much bigger than we were at the time) had been patenting their inventions for some years, and it made us vulnerable. One of these big companies could dig through their patent portfolio, find something close to what we had done, then sue us, and we would have to go through an elaborate defense and possibly lose. So Microsoft did what most big companies do, which is start to build what is called a “defensive” patent portfolio. So if a big company tried to sue us, we could find something in our portfolio they were afoul of, and counter-sue. In the cold war days, this strategy was called “mutual assured destruction”, and since it was intolerable for all parties to engage, it resulted in a state called “détente”, or “standoff”. This is what you see today for the most part in lots of industries.

Vanderlande Industries v. ITC (Fed. Cir. 2004)

Patent, Patent Cases 2004

shoepatent
Vanderlande Industries v. International Trade Commission

The Appellate Court affirmed the ITC’s holding that Vanderlande unlawfully imported a sorting system. (U.S. Patent No. 5,127,510). Vanderlande was unable to show that the patent owners (Siemens/Rapistan) committed the first element of equitable estoppel:

(1) The patentee, who usually must have knowledge of the true facts, communicates something in a misleading way, wither by words, conduct or silance.

Thus, the court found no estoppel. Additionally, the ITC’s claim construction was affirmed.

Patent Pooling

Articles and Publications, Patent

Richard Gilbert has a new article in the Stanford Tech Law Review discussing patent pooling and antitrust.

There is no simple prescription to determine when a patent pooling arrangement is anticompetitive. . . . Antitrust evaluations should begin with a study of the competitive relationships of the patents involved in the pool. Unfortunately, this is not a simple task. . . . If the pool combines many patents, each of which can block the use of a technology, a challenge to the pool is not likely to affect prices unless all of the blocking patents are shown to be invalid or not infringed.

JuNelle Harris Co-EIC of STLR emailed that they are seeking contributions for their “Perspectives” section:

STLR Perspectives features concise, readable analyses of cutting-edge technology law and policy issues. High quality, law-focused work by scholars, students, practitioners, and advocates is welcomed. Submissions should be no more than 15 pages in length, double-spaced and including footnotes, and will be considered on a rolling basis.