German plant breeder William Elsner filed for a plant patent on his new variety of geraniums. After receiving a 102(b) rejection from the Examiner that was affirmed by the BPAI, Elsner appealed to the Federal Circuit.
The Appellate Panel vacated and remanded.
We agree that the publication of the (international) applications coupled with foreign sales of the plants may constitute a §102(b) bar to patentability.However, because the record is silent on the extent to which the foreign sales were known to the public, and because the Board did not adequately address the degree to which availability of the plants through foreign sales enabled the preparation of the claimed plants, we vacate the Board’s decisions in both cases and remand for further proceedings.
Ex Parte Hu (Board of Patent Appeals and Interferences, 2004) (unpublished).
In this case, Hu appealed a final rejection by an Examiner of his application for a patent on a reversible socket wrench. Hu did not dispute that some of the appealed claims were “patentably indistinct” from claims in one of his prior patents. However, Hu agreed to “file a terminal disclaimer.”
The BPAI, however, refused to allow a terminal disclaimer.
Appellant does not cite any legal authority for the proposition that the mere offer to file a terminal disclaimer overcomes a rejection based on the judicially created doctrine of obviousness-type double patenting. We therefore uphold with the Examiner’s rejection.
This holding seems to be directly contrary to MPEP 1504.06.
Nonstatutory categories of double patenting rejections which are not the “same invention” type may be overcome by the submission of a terminal disclaimer.
Comment: One way to reconcile these two views is that Hu did not actually file a terminal disclaimer, but made a “mere offer to file” the disclaimer. Thus, if he had actually filed the terminal disclaimer then perhaps the Board would have ruled in his favor. Ultimately, this decision does not change any rules because it is “not written for publication and is not binding precedent of the Board.”
Aspex Eyewear v. Concepts in Optics (Fed. Cir. August 12, 2004) (not citable as precedent).
Aspex sued Concepts for infringement of its patented technology that covers a magnetically attachable auxillary lens for eyeglasses. (U.S. Patent No. RE 37,545 E). The district court granted summary judgment for the defendant based on a finding of invalidity under 35 USC 102 — finding that another person had invented the claimed eyeglasses before the critical date.
On appeal, the Appellate Panel reversed and remanded for two primary reasons:
1) drawings relied upon by the district court were not “printed publications” because there was no evidence of public availability; and 2) the testimony of prior public use (or “known … by others”) was not incontestable on summary judgment.
The importance and value of software patents continues to increase. There are several factors that weigh heavily in a company’s decision to go forward with patenting.
1) Patents provide a clear signal that the company has a unique product. 2) The current market for software is huge — proprietary positions excite investors. 3) Recently, very large damage awards have been seen in software patent cases. 4) Often companies with little or no patent portfolio are targeted for infringement suits. 5) Software patents are not only for “software companies” — software/firmware is an integral part of most new technologies. 6) The software industry is maturing — this means that patented technology may retain value for a longer time. 7) Small companies can obtain patents — and level the playing field.
I have it on good authority that Carl Oppedahl’sinstructions for electronic filing work. Currently only a small percent of patent applications are filed electronically. That is going to change radically in the next couple of years.
The International Trade Commission (ITC) has issued a general exclusion order prohibiting the unlicensed entry of plastic grocery and retail bags that infringe Superbag’s patented technology. (U.S. Patent No. 5,188,235). The Commission also determined that “public interest factors” do not preclude the issuance of the exclusion order.
Superbag had filed a complaint against four parties:
Thai Plastic Bags of Thailand; Hmong Industries of St. Paul, Minnesota; Spectrum Plastics of Cerritos, California; and Pan Pacific Plastics of Union City, California.
Should current plans to expand the USPTO extend further beyond the DC beltway? Why not open satellite offices in Chicago, Denver and San Diego? The electronic filing system would certainly ease the logistical issues involved…
In an appeal from a decision of the PTO Board, the Federal Circuit affirmed the rejection of claims directed to isolated DNA molecules encoding TNF binding protein II (TBP-II) under the written description requirement of 35 U.S.C. § 112.
Appellants had purified TBP-II from urine and determined (a) the amino acid sequence of an N-terminal portion of the protein, (b) the protein’s molecular weight, and (c) that the protein inhibited TNF activity. Appellants then pursued, in separate divisional applications, claims directed to proteins having the partial sequence, molecular weight, and inhibitory activity described and claims directed to isolated DNA molecules encoding such proteins. The DNA claims were rejected under § 112 as lacking an adequate written description in the specification. Appellants appealed to the Board, which affirmed.
Appellants asserted that because the PTO had effectively conceded that claims to the TBP-II protein were adequately described in the specification, the claims to isolated DNA molecules encoding the TBP-II protein were therefore adequately described in the specification. Specifically, Appellants argued that because the complete amino acid sequence of a protein is an inherent property of an isolated, fully characterized protein, and the determination of a protein’s complete amino acid sequence puts one in possession of all DNA sequences encoding that protein (as a result of the unequivocal correspondence between amino acids and DNA codons in the genetic code), Appellants’ full characterization of TBP-II (i.e., determination of its N-terminal amino acid sequence, molecular weight, and inhibitory activity) demonstrated possession of all DNA sequences encoding TBP-II. The PTO countered that because Appellants’ specification included neither the complete amino acid sequence of TBP-II nor any actual DNA sequence, and disclosed the sequence of only ten of the 185-192 amino acids that make up TBP-II, Appellants had not demonstrated possession of all DNA sequences encoding TBP-II.
The Court noted that while “the state of the art has developed such that the complete amino acid sequence of a protein may put one in possession of the genus of DNA sequences encoding it,” Appellants had not disclosed the complete amino acid sequence of TBP-II, but rather, had provided only a partial sequence of the protein. In addition, the Court concluded that Appellants’ possession of TBP-II “says nothing about whether they were in possession of the protein’s amino acid sequence [since] Appellants have not provided any evidence that the full amino acid sequence of a protein can be deduced from a partial sequence and the limited additional physical characteristics that they have identified.” With respect to the DNA claims at issue, the Court determined that absent a description of the complete TBP-II amino acid sequence or any evidence of a “known or disclosed correlation between the combination of a partial structure of a protein, the protein’s biological activity, and the protein’s molecular weight, on the one hand, and the structure of the DNA encoding the protein on the other,” the Board’s decision to affirm the rejection of Appellants’ DNA claims was proper.
NOTE: This is the first post by patent attorney Donald Zuhn, PhD. Don is a true expert in cutting edge biotech patent law and practices both prosecution and litigation at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. [Brief Biography].
A company called PhotoStamps now allows you to put a photo or company logo on the stamp. It appears that the cost per stamp is the regular 37 cents.
Note: Although not directly related to patent law, I thought this was really cool. At MBHB, we already have a big stamp machine and postage paid envelopes, but this might be most useful for small firms — a way to customize your envelopes at a low cost.
Update: The cost is actually quite a bit more than 37 cents per stamp. The actual cost is $16.99 for 20 PhotoStamps plus shipping. This results in a cost of about 85 cents per stamp.
INNOVA / Pure Water v. Safari Filtration Systems (Fed. Cir. 2004) (CLEVENGER, Rader, and Linn, JJ.)
Innova sued Safari for infringement its patented water filter assembly. (U.S. Patent No. 5,609,759). After construing the claims, the District Court (M.D. Florida) granted Safari’s motion for summary judgment of noninfringement.
Innova’s appeal with patent turns on the correct interpretation of the disputed claim term, “operatively connected.” In particular, Innova challenged that the District Court improperly imported a “tenacious physical engagement” limitation into claim language that does not require any such thing. The Appellate Panel agreed and vacated the decision in-part.
The district court erred. The asserted claims do not require that the filter tube and cap be affixed to one another in a manner that results in the two components forming a unitary structure. Neither party asserts that the term “operatively connected” is a technical term having a special meaning in the art of water filtration. Rather, it is a general descriptive term frequently used in patent drafting to reflect a functional relationship between claimed components. Generally speaking, and as used in the ‘759 patent, it means the claimed components must be connected in a way to perform a designated function. In the absence of modifiers, general descriptive terms are typically construed as having their full meaning.
In a recent article, Lara Kelley and Barbara McCurdy make the case for filing an interference proceeding in the Patent Office rather than filing a patent infringement suit in Federal Court.
Top Ten Reasons for Filing an Interference: 1. There is no presumption of priority or validity in an interference. 2. An interference can involve patentability issues in addition to priority issues. 3. The Board (BPAI) may understand the legal and technical issues better than a judge or jury. 4. An interference affords flexibility in patenting, such as amendments to claims. 5. Discovery is severely limited in an interference. 6. There is no live testimony or trial in an interference. 7. An interference is usually much cheaper. 8. An interference does not foreclose all opportunities for future trial litigation. 9. Provoking an interference may afford a party a stronger settlement position. 10. A successful interference outcome can result in a patent term extension.
The Patent Office has released a table of results of appeals to the Board of Patent Appeals and Interferences (BPAI) for FY 2004. As you can see, less than half of appeals that reach the BPAI are completely successful. However, this table misses a large number of cases that are appealed, but favorably resolved by the Examiner prior to disposition by the Board.
NeoMagic v. Trident Microsystems (Fed. Cir. 2004) (04-1046)(NONPRECEDENTIAL).
NeoMagic sued Trident for infringement of its patent covering a graphics engine/memory integrated circuit (U.S. Patent No. 5,703,806). After construing the claims in a Markman hearing, the Delaware District Court dismissed the suit on summary judgment based, holding that the claims were not infringed as a matter of law. In a first appeal, the Federal Circuit remanded based on improper claim construction.
After a second summary judgment dismissal for noniningringement, the case appeared before the Federal Circuit again. This time, the Appellate Panel affirmed the dismissal, holding that the dismissal was proper because Trident’s products did not have a “second power supply” as recited in the claims.
Google and Yahoo have apparently settled their ongoing lawsuit involving patented on-line advertising technology owned by Yahoo subsidiary Overture. (U.S. Patent 6,269,361). According to reports, Google will issue 2.7 million common shares to Yahoo in return for a license. Yahoo is already a major holder of Google stock.
LINK: Ilya Shapiro has written a review of the recent Intellectual Property Monograph by Landes and Posner. (Available free).
Landes and Posner do a workmanlike job in showing us how and why intellectual property law evolved to its present state without casting judgments as to the wisdom of the steps in that evolution. Getting it “right” in future will require the constant re-calibration of protections and enforcement mechanisms, as well as careful attention to social, technological, and economic developments that may outstrip previous IP paradigms.
Note: I attended both College and Law School with Ilya — Now, we are both writing about IP law. Truly a small world.
The U.S. Patent Office has almost seven million sequentially numbered patents electronically available through its online web interface. You might be surprised, however, that Patent Number 1 (Traction wheels for a locomotive) was not the first patent. The first 10,000 patents issued between 1790-1836 were not originally numbered and all records of them were lost in a fire at the patent office.
No copies of the patent descriptions and drawings were kept anywhere else, and only a copy of the official patent certificate was sent to the inventor. Patents were not numbered then; they were referred to only by name and issue date.
The patents that were recovered have been renumbered as x-patents. Thus, Samuel Hopkins’ 1790 patent for potash manufacturing is U.S. Patent No. X-1. In today’s NYTimes, Teresa Riordan has a nice article about the ongoing search for the lost patent documents.
Update: PHOSITA has a great post with more history on the Patent Office fire.
The NYTimes is reporting that Acacia has made moves to expand enforcement of its patents that reportedly cover streaming video technology. (See, for example, U.S. Patent 5,132,992).
Newport Beach, Calif.-based Acacia Media Technologies Corp. has sent letters to dozens of colleges in recent days claiming the schools’ use of streaming video in areas like distance learning and video lectures violates company patents. The message: pay up, or risk getting sued.
Acacia has already sued several cable and satellite providers for infringement of the same patents. In response the Electronic Frontier Foundation (EFF) has vowed to “bust” Acacia’s patents in its Patent Busting Project.
Engate, Inc. v. Esquire Deposition Services (N.D. Ill. 2004)
In a patent infringement suit over Engate’s patented real-time transcription service technology, the District Court dismissed the defendant’s unfair competition counterclaim and granted in part defendant’s summary judgment of invalidity. The court looked to instances of real-time transcription in some courtrooms as evidence of public use sufficient to invalidate some of the claims.
Via InventBlog: The USPTO has a Quick Reference Guide (QRG) available that provides “step-by-step instructions on accessing Public PAIR.” The QRG in combination with the CBT Video should help get everyone up-to-speed on the new system.
