2004

Deciding whether to appeal a patent rejection

Claim Drafting Tips, Patent

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.

Disposition

% Decisions Fiscal Year to Date

AFFIRMED

36.0%

AFFIRMED-IN-PART

10.9%

REVERSED

38.0%

PANEL REMANDS

8.0%

ADMINISTRATIVE REMANDS

4.9%

DISMISSED

2.2%

TOTAL

100.0%

Federal Circuit: Neomagic v. Trident Microsystems

Patent, Patent Cases 2004

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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 Cir. 2004) (04-1046)(NONPRECEDENTIAL).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.

Full Case PDF.

Landes and Posner Discuss Intellectual Property

Articles and Publications, Patent

posner_landes_bookLINK: 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.

X-Patents

Inventors, Patent

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.

Streaming Video Lawsuits

Articles and Publications, Patent

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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.

Public Use: Engate v. Esquire Deposition

Patent, Patent Cases 2004

deposition_patent
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.

Trademark Case: Jose Gaspar Gold

Patent, Patent Cases 2004

IN RE CHATAM INTERNATIONAL INCORPORATED (Fed. Cir. 2004) (Trademark Case)

The Federal Circuit (RADER with CLEVENGER and SCHALL) affirmed the TTAB’s decision to refuse to register the mark JOSE GASPAR GOLD in connection with tequila because of a perceived likelihood of confusion with GASPAR’s ALE.

Although the two names had only GASPAR in common, the court found that the other terms could be disregarded from the analysis because 1) ALE is generic; 2) GOLD establishes premium quality rather than name recognition; and 3) JOSE simply reinforces GASPAR as a name.

The court also supported the Board’s finding of a close relationship between tequila and beer or ale.

In this case, as in Majestic Distilling, the Board correctly determined that tequila and beer or ale are inexpensive commodities that consumers would be unlikely to distinguish by manufacturer.

China’s Competitive Advantage

Patent

Link: At least in the DVD market, Chinese companies are being forced to respect patent rights — and thus losing their competitive advantage.

According to Chen Xiang, secretary of the branch of the audio and video products of the [China Chamber of Commerce], the charge of patent fees, which weakened the products’ export competitiveness and eroded their profit margin, led to [a] decrease [in exports].

Federal Circuit: Lack of Enablement Affirmed

Patent, Patent Cases 2004,

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ELSTER ELECTRICITY v. SCHLUMBERGER (Fed. Cir. 2004) (NONPRECEDENTIAL)

In this appeal of a summary judgment of invalidity for lack of enablement, the Federal Circuit affirmed.

Elster’s patent relates to a power supply of an electric energy meter that uses a specialized transformer. (U.S. Patent 5,457,621). At the district court, the judge found that the patent lacked enablement because the specification only enabled a “controller that responds to the third winding,” while the claim required a response to the “second winding.” Elster appealed, but the Appellate Panel affirmed, holding that the “written description fails to teach a response between the second and third winding, the district court ccorrectly concluded that [the] claims … were not enabled.”

Patent Explosion

Articles and Publications, Patent

The past twenty years has seen increadible increases in the number of patents both applied for and issued. In her most recent paper (PDF), Berkeley professor and empirical whiz, Bronwyn Hall, examines patenting data and arrives at some interesting conclusions.

1) Although patenting has increased in most technological fields, the explosive growth is largely accounted for by electrical and computing fields.
2) The explosion is drivin, for the most part, by U.S. firms, with some contribution from Asia and Europe.
3) Patenting has become a critical signal of viability for new entrants in many industries.

Professor Hall’s data shows that in most industries, increases in patenting were drivin by new entrants. However, patenting increases in electrical and computing industries were accomplished by a shift in patenting by industry stalwarts.

The figures reveal the following interesting fact: although the jump in patent applications within the U.S. occurred in all technology classes, when we look by broad industry class, we find that it occurred only in firms that are in the electrical, computing and instruments industries. That is, the increase in chemicals, mechanical and other technologies appears to have been driven by increasing patenting activity by firms that were not traditionally in these industries. This result is consistent with the view that there has been a major strategic shift in patenting in the electrical/computing industries, but not in other industries.

UPDATE: Professor Hall provided a correction to my original interpretation of her results. She interprets her results as showing “that patents held by new entrants in the electrical and computing industries became more valuable post-1985 than those held by incumbents, whereas there was no change in the chemicals-based sectors.”

According to Hall, new entrants need patents to as a basic proof of concept or a show of viability. Incumbents, on the other hand, often use patents defensively to ward off litigation and for cross-licensing. Thus, for an incumbent, a large patent portfolio may be an indication that it fears being sued for infringement.

ResQNet.com v. Lansa: Subpoena Quashed

Articles and Publications, Patent

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InventBlog: In an infringement case involving software for remotly downloading information (screen recognition and terminal emulation), a SDNY court recently quashed the defendant’s motion to depose the attorney who drafted and prosecuted the patent applications. In its decision, the court applied 2nd Circuit law disfavoring depositions of opposing counsel.

Lansa wanted to depose Mr. Kaplan on the prosecution of the patents, his communications with the Patent Office, prior art on the software and draft patent applications. It argued that the law of the Federal Circuit should apply.

Judge Sweet said that in “procedural issues not unique to patent law,” the Federal Circuit defers to the regional circuits.

The Second Circuit, he said, disfavors depositions of opposing counsel because they risk disrupting the attorney-client relationship and impeding litigation.

Comment: If this decision holds, it may push more patent litigation to botique firms that both prosecute and litigate patents.

Patent Trivia

Inventors, Patent

potash_patent
On this date in 1790, the very first U.S. patent was granted to Samuel Hopkins on a process for manufacturing potash. Potash can be any material containing potassium. However, potash is most commonly potassium carbonate derived from wood ashes. The term arises from the process of extracting lye from wood ashes in iron pots. Potash can be used in glass making:

Glass made with potash becomes rigid more quickly and becomes harder and more brilliant than soda glass.

www.guadalupeglass.com/Glossary.html

What is a Trade Secret?

Patent, Patent Q&A

Historically, trade secrets arose under common law. Today, every state provides some form of trade secret protection – although the level of protection varies from state to state. The Uniform Trade Secrets Act (UTSA) has been ratified by many states and has helped to establish a more uniform body of law across the country.

A trade secret can take many forms, such as a device, method, or formula that provides some competitive advantage or has independent economic value. The holder of the trade secret must make reasonable efforts to ensure that the subject maintains its secrecy.

Battle over Pet Food: Mars v. Heinz & Del Monte

Patent, Patent Cases 2004

pet_food_patent
Mars v. Heinz & Del Monte (Fed. Cir. July 29, 2004).

Mars filed a patent infringement suit against Heinz, alleging infringement on its patented pet food. (U.S. Patent 6,312,746)(A dual texture animal food product with a soft inner component surrounded by a harder, more rigid shell). After a Markman hearing, the district court issued summary judgment of noninfringement to Heinze.

On appeal, the Federal Circuit breathed new life into Mars’ claims by issuing a new construction of claim terms and remanding.

We conclude that: (1) “ingredients” as used in the phrase “a mixture of lipid and solid ingredients” refers to the components of the inner core at any time after they have been mixed together, and (2) the phrase “containing a mixture” is open-ended. Thus, the claim language, “containing a mixture of lipid and solid ingredients,” does not exclude the presence of additional, unnamed ingredients in the inner core mixture that are neither lipids or solids. Since genuine issues remain as to infringement under this construction, we vacate the district court’s grant of summary judgment of non-infringement and non-infringement under the doctrine of equivalents and remand for further consideration.

Vacated and Remanded