The past few years, several researchers have delved into patent statistics to try to determine how likely it is for a patent application to result in an issued patent. Figures have ranged from 62% (USPTO Statistics) to 97% (Quillen). A middle of the road statistic of 75% has also been proffered by Robert Clarke of the USPTO.
Today’s Chicago Tribune (subscription) has a nice article on the Eolas case by reporter Barbara Rose. Most interestingly, her reporting does not fall in line with the trendy headlines like “Microsoft Wins Again,” “Two Strikes for Eolas,” and “USPTO Close to Rejecting Plug-in Patent.” Rose correctly notes that the Examiner accepted Eolas arguments that prior art submitted by WC3 did not invalidate the patent at issue.
Doyle’s attorney, Martin Lueck, said Eolas and the University of California are “very pleased” that the examiner accepted their arguments.
The examiner wrote that Eolas’ rebuttal to his office’s previous rejection of the patent’s claims “has been fully considered and is deemed persuasive.”
Eolas is not out of the water — the Patent Examiner was able to discover three more references and argue that the combination of those references rendered the Eolas patent obvious. Eolas must now respond to this new rejection. I was quoted in the article as saying that Eolas is in a “fairly good position.”
7th Circuit Judge Richard Posner is writing Larry Lessig’s Blog for the rest of the week. In his latest post, Judge Posner outlined a proposal for expansion a fair-use exception for patent law. Specifically, he and Professor Bill Landes have promoted the concept of allowing unlicensed use of scientific research tools by researchers who have no plans to patent their results.
Landes and I advocate an expansion of the patent fair-use principle to allow scientists to use patented research tools (such as the oncomouse) without license–provided the scientists aren’t allowed to use the tools to produce their own patented products!
Their monograph (The Political Economy of Intellectual Property Law) is available as a free download. (Link)
Chicago Tribune Columnist Steve Chapman is hoping that presidential debate will quickly move from Vietnam to Patent Law:
From listening to both sides, you’d think Kerry and President Bush were running for trustee of VFW Post 836. Though the differing war stories may be endlessly fascinating to anyone who served in Vietnam, or anyone who strove heroically to avoid serving in Vietnam, the rest of us would rather hear the candidates recite from a volume on patent law. (Tribune — Free Subscription).
Acushnet, the maker of Cobra golf clubs and Titleist balls has requested an inter partes reexamination of Taylor Made Golf Company’s patent no. 6,623,378. In the proceedings, Acushnet will argue that Taylor Made’s golf club patent should be held invalid over prior art.
Starting Industrial has also requested an inter partes reexamination of Kioritz Corporation’s patented rope recoil starter for an internal combustion engine (U.S. Patent No. 6,588,390).
Bigio’s patent application claims a hair bursh with an “hourglass configuration for both the bristle substrate and the overall bristle array.” (Patent Application Serial No. 09/451,747). After receiving obviousness rejections from the Examiner and the BPAI, Bigio pursued his claims at the Federal Circuit. Some of the cited references were designed for use on animals rather than human hair, and Bigio argued that they should not apply because non-human hair brushes where excluded from the patent scope by language in the specification.
[T]he Board rejected Bigio’s interpretation of “hair brush” as limited to brushes only for scalp hair. Instead, the Board broadly construed “hair brush” to encompass “not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair).”
On appeal, the Appellate Panel (RADER, J.) affirmed, finding that the Board correctly declined to import limitations on terms from the specification. Next, the Panel found that a toothbrush was an analogous art — and thus could form a basis of an obviousness rejection.
[I]t is necessary to consider ‘the reality of the circumstances’ – in other words, common sense – in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) []. Accordingly, the examiner and the Board must consider the “circumstances” of the application – the full disclosure – and weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor. …
[T]he Board applied the test for analogous art in keeping with the counsel of this court’s predecessor: “The differences are mere change of size and substitution of material of the most obvious kind, on a par with the differences between a hairbrush and a toothbrush.” In re Wolfe, 251 F.2d 854, 856 (CCPA 1958). Thus, on this record, this court affirms the findings of the Board and upholds its traditional tests for determining the scope of prior art analogous to the claimed invention.
In Dissent, Judge Newman argued that the toothbrush should not be considered a 103(a) reference.
The toothbrush art is not analogous to the hair brush art. Bigio’s patent application is directed to a hair brush, and his claims are limited to a hair brush.
Newman concluded with the money quote: “A brush for hair has no more relation to a brush for teeth than does hair resemble teeth.”
For those who are interested in the Microsoft Case, here is a link to the Office Action rejecting all ten of Eolas’ claims under 103(a) for obviousness. The rejection is based primarily on references from Berners-Lee and Raggett. The Office Action appears well reasoned and nicely written. I suspect that the Patent Examiner (Andrew Caldwell) was given much more time to research and write this OA is than the norm.
Update: After a reader e-mailed, I looked into the case a little more. Although I am not completely familiar with the case, the headline of the OA could be “Eolas wins Round I of Highly Anticipated Re-Examination.” In the most recent OA, the Examiner accepted Eolas’ argument as to the initial ground for rejection — thus, according to the Examiner, the combination of references cited in the original application do not render the patent obvious. Now, in Round II, the Examiner has cited a new set of references. As you may know, this type of back-and-forth is common in patent prosecution.
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Koito Manufacturing v. Turn-Key-Tech (Fed. Cir. 2004) (PDF).
In February 2002, Koito brought a declaratory judgment action against Turn-Key, requesting that Turn-Key’s patent covering an injection molding technique be declared invalid, unenforceable, and not infringed. (< ?xml:namespace prefix ="" st1 />U.S. Patent 5,045,268). The Jury issued a special verdict finding the patent invalid for lack of enablement, written description, and the addition of new matter. Additionally, the Jury found that the patent was not infringed and that several claims were anticipated and obvious. After the verdict, however, the district court judge granted in-part Turn-Key’s JMOL. On appeal, the Federal Circuit affirmed-in-part and remanded.The Appellate Panel held that Koito had not met its burden of showing non-enablement, lack of written description, impermissible new matter, anticipation, or obviousness.
We affirm (1) the jury’s verdict that Koito did not infringe the ’268 patent and (2) the district court’s grant of a JMOL with respect to the jury’s finding that the ’268 patent was not enabled, did not meet the written description requirement, and impermissibly added new matter.However, we vacate the district court’s denial of Turn-Key’s JMOL with respect to anticipation and obviousness.On remand, the district court should evaluate the evidence proffered by Koito … to determine whether the jury’s verdict of anticipation and obviousness was adequately supported.
Affirmed-in-part, Vacated-in-part, and Remanded.
Update:
The unanimous decision, which was returned by a three-judge panel on Monday, August 23, upheld an April 2003 jury verdict in the same case. As in this case, the court found that the manufacturing process Koito used to mold plastic tail light lenses in no way infringed on a patent for another process that was held by Turn-Key-Tech. (LINK)
Alphapharm PTY v. Tommy G. Thompson (Secretary of HHS) (D.D.C. 2004) (CA 03-2269).
By Mark Chael
Recently, the District Court in Washington, D.C. agreed with the Federal Circuit, the Fourth Circuit, and a District Court in Maryland by determining that the listing of patents in the Orange Book by the Food and Drug Administration (FDA) is merely “a ministerial act” and that the Hatch-Waxman Act does not require the FDA “to police the listing process by analyzing whether the patents listed by NDA (New Drug Application) applicants actually claim the subject drugs or applicable methods of using those drugs.”
In a case captioned, Alphapharm PTY Limited v. Tommy G. Thompson, the court reasoned that substantive patent analysis is beyond the expertise of the FDA and is a function they are not mandated to perform.Rather, substantive patent analysis is better left with the U.S. Patent and Trademark Office. The function of the FDA, on the other hand, is to assure the safety and availability of useful pharmaceutical compounds.The laws and regulations that govern the FDA, in particular those laws and regulations that govern the listing of patents in the Orange Book, “commit the resolution of disputes between ANDA (Abbreviated New Drug Application) applicants and patent holders regarding the validity or correctness of the listed patent information to actions between ANDA applicants and patent holders, rather than to FDA action.”
Note: This is the first post by patent attorney Mark Chael, PhD. Mark’s prior research in biochemistry, molecular biology, and cellular biology make him well equipped to understand the intricacies involved in biotech and pharmaceutical patents. He is an associate at the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff in Chicago. [Brief Biography]
Brian Hastings recently received a patent for his real estate business method that would push the real-estate agent’s commission to the home buyer. (U.S. Patent No. 6,751,596). His story is covered in this NYTimes article.
In the Matter of Certain Sildenafil (International Trade Commission) (Inv. No. 337-TA-489).
Pfizer brought this complaint against 15 companies that were importing forms of Viagra (sildenafil citrate) that infringed its patent. (U.S. Patent No. 5,250,534). In its decision, the ITC issued a general exclusion of such importation. The Commission found that the general exclusion was necessary because of the difficulty in identifying the source of the infringing products and because of the ease that sellers can mask or change their identity by operating over the Internet.
Pfizer has demonstrated that suppliers of infringing products could readily mask their identity or be replaced by other suppliers. Further, Pfizer has shown that there is a pattern of violation of section 337 and that it is difficult to identify the source of infringing products. As Pfizer has noted, eleven defaulting respondents have been found to be in violation of section 337. Pfizer has also shown that it is difficult to identify the source of infringing products, many of whom deal directly with U.S. customers over the Internet and can readily mask or change their identity.
Further, the Commission considered it important that Pfizer has established a strong market for its product and that foreign manufacturers can easily copy the pharmaceutical.
Comment: A General Exclusion Order is a broad remedy issued by the ITC that is directed to any article that infringes the patents-in-suit, rather than just those of the named respondents. Therefore, the exclusion applies to parties that were not part of the ITC proceedings.
Seventh Circuit Judge and University of Chicago Law School Professor Richard Posner is slated to guest host Larry Lessig’s blog over the next week (Aug 23-27). Upon meeting Judge Posner, you would not immediately guess that he is one of the most prolific legal writers (even more than Grisham) as well as perhaps the most cited legal scholar ever.
(Shapiro, Fred R, 2000. “The Most-Cited Legal Scholars,” Journal of Legal Studies, University of Chicago Press, vol. 29(1), pp. 409-26).
Face-to-face, Posner is humble, polite, and sincere. In his books and opinions, he is often Darwinian. I’m sure his posts will be excellent. Check them out.
SRAM Corp. v. AD-II Engineering, Inc. (Fed. Cir. 2004) (not precedent).
In the Northern District of Illinois, SRAM sued AD-II for infringement of its patented rotatable grip technology. (U.S. Patent No. 5,662,000). The district court granted summary judgment of infringement holding that “there is simply no question that the notches on the AD-II device serve the same function (engaging the spring) in the same way (through rotation of the grip) to achieve the same result (releasing or pulling on a cable and shifting derailleur gears).”
On appeal, AD-II argued that SRAM had disclaimed coverage over “any gear shifter having a rotatable support member,” and thus SRAM’s claims should not cover AD-II’s products that contain such a member. Based on amendments made by SRAM during prosecution, the Appellate Panel (BRYSON) agreed. Reversed and remanded.
In dissent, Chief Judge Mayer argued that the amendments made during prosecution were to provide an antecedent basis for claim terms — not to overcome prior art or obviousness type objections. As such, no disclaimer should be found.
In an extremely well written opinion by Judge Thomas of the 9th Circuit, the appellate court found that Grokster is not liable for the peer-to-peer swapping of copyrighted songs that occurs through its file-sharing software.
In the context of this case, the software design is of great import. As we have discussed, the software at issue in Napster I and Napster II employed a centralized set of servers that maintained an index of available files. In contrast, under both StreamCast’s decentralized, Gnutella-type network and Grokster’s quasi-decentralized, supernode, KaZaa-type network, no central index is maintained. Indeed, at present, neither StreamCast nor Grokster maintains control over index files. As the district court observed, even if the Software Distributors “closed their doors and deactivated all computers within their control, users of their products could continue sharing files with little or no interruption.” Grokster I, 259 F. Supp. 2d at 1041. Therefore, we agree with the district court that the Software Distributors were entitled to partial summary judgment on the element of knowledge. [Because knowledge is a required element of contributory copyright infringement, Grokster could not be held liable.]
NOTE: This does not mean that individual users will not be held liable for copyright infringement using Grokster.
Utica Enterprises v. Federal Broach and Machine (Fed. Cir. Aug. 19, 2004) (nonpublished opinion).
Utica sued Federal Broach for infringement of its patented metal finishing process, known as “broaching.” (U.S. Patent No 6,256,857). After construing the claims in a Markman hearing, the Michigan district court entered summary judgment of non-infringement for Federal Broach.
Utica appealed the judgment, arguing incorrect claim construction. The Federal Circuit (LOURIE, J) held that the court unduly limited claim terms, and thus vacated and remanded. Mayer, CJ, dissented without opinion.
I think that the high rate of reversal at the Federal Circuit creates some special implications for patent law. Rather than going for the more extreme position on a contested issue, it may make sense for you as a litigator to propose a more reasonable approach that you think both the district and appellate courts may accept. This is especially true in areas with high reversal rates, such as claim construction. A converse of this theory may also be true — in areas that are rarely appealed, such as discovery, a more extreme position may be more beneficial to your cause.
An analysis of these issues could make an excellent law review note topic. You could, for instance, go into game theory as well as some of the current legal practices. An author who is creative with analogies will find that many of the issues have already been examined by Becker and followers. One beneficial aspect of this topic is that, although the focus is purportedly patent law, it really crosses into any field of litigation.
A couple of other ideas that I already gave out relate to a) the recent Honeywell v. Hamilton Sundstrand case that may be taken up by the Supreme Court and b) an analysis of when academic presentations do/should constitute 102(b) anticipation as printed publications based on this recent case. In part b, perhaps you would focus on the case of a power point presentation at a two day conference.
The American Intellectual Property Law Association (AIPLA) has opened registration for its annual meeting to be held October 14 – 16, 2004 in Washington, DC.
This year’s program promises to be an interesting one with sessions examining patent law in the Pacific Rim, the Doctrine of Equivalents, trademark dilution, Constitutional challenges to copyright, Federal Circuit decision making, prosecuting the difficult patent application, trademark fair use, licensing programs, and patent, copyright, and trademark litigation.
Jon Dudas, the … Director of the USPTO will speak during the Friday Lunch Program. David Nimmer will address the Thursday Lunch program with a discussion of the recent accomplishments of the US Copyright Office.In addition to the learning, AIPLA meetings always have their share of good times.
The U.S. Department of Commerce publishes a small book titled “Patents and How to Get One: A Practical Handbook.” I would recommend this book to anyone who is planing to apply for a patent. It will also give you a fairly solid foundation in the process so that you can spend time discussing real issues with your patent attorney rather than reviewing the legal background. The best part — the book is $4.95 and available from Amazon.com.
The ASME Communities of Practice (CoP) is a new web-based community group that is open to both ASME members and non-members. You do have to create an account before accessing the groups, but it is all free.
FYI: ASME = American Society of Mechanical Engineers
In a recent working paper, Professors Doug Lichtman and Eric Posner (both at University of Chicago) question the current legal policy that leaves Internet service providers “largely immune from liability for their role in the creation and propagation of worms, viruses, and other forms of malicious computer code.” According to Lichtman and Posner:
In our view, such immunity is difficult to defend on policy grounds, and sharply inconsistent with conventional tort law principles. Internet service providers control the gateway through which Internet pests enter and reenter the public computer system. They should therefore bear some responsibility for stopping these pests before they spread and for helping to identify individuals who originate malicious code in the first place.
At least three factors point toward the benefit of ISP liability:
1) Often true bad actors are beyond the reach of the law. 2) An ISP has some real control over what passes through its Chunk of the net. 3) End-user self-help mechanisms are often inadequate.
