A new working paper by Juan Alcacer and Michelle Gittelman (Both at NYU) examines prior art citations in patents. One interesting finding:
On a per patent basis, 2/3 of all cited art was discovered by Examiners rather than submitted by Inventors.
Alcacer, Juan and Gittelman, Michelle, “How do I Know what you Know? Patent Examiners and the Generation of Patent Citations“
A recent interview with Federal Circuit Judge Paul Michel is published here by Managing Intellectual Property. Excerpt:
Q: What makes a good appeal advocate?
A: The most important quality is selectivity – to select the right issues, the right facts, and the right authorities. The second is to appreciate the power of clarity. It’s startling given the intelligence, industry, knowledge and familiarity with the law of the lawyers that they’re so often unclear.
I would rather have a 10-page brief written by hand on a pad of paper by a really great lawyer than have a 50-page brief by somebody who is mainly throwing dicta at me, which is what the majority of briefs do. I’d rather have the sense that one good legal mind has wrestled the problems of the case until they are pinned to the mat rather than the sense that a committee of mostly younger lawyers have written an enormously long, enormously complicated and often somewhat unclear brief. Clarity and logic can’t be overdone and they are very often, in my opinion, underdone.
Bill Heinze provided the link.
Washington Times is reporting that the inventor of the portable stereobelt (Andreas Pavel) may sue Apple over its iPod technology. Mr. Pavel holds several patents including US Patent No. 5,201,003. The ‘003 patentissued in 1992, but claims priority to a 1978 application.
Reportedly, Sony recently paid Mr. Pavel several million dollars after a long dispute and settlement negotiation over Walkman technology.
Brian C. Coad has published his second Wally Mason book. This one titled "Notes of a Patent Attorney: The Wally Mason Stories." According to his Bio, Coad holds about twenty patents, and has published technical papers, poetry, and op-ed pieces for the local newspapers in addition to his fiction.
Honeywell International, Inc. (formerly known as AlliedSignal Inc.) v. Hamilton Sundstrand Corp. (formerly known as Sundstrand Corp.) (Fed. Cir. June 2, 2004) (en banc)
During prosecution, Honeywell had cancelled its broad independent claim and rewritten dependent claims in independent form. (U.S. Patent No. 4,380,893). The jury found that the patents in suit were valid and, although not literally infringed, infringed under the doctrine of equivalents. The district court entered judgment against Sundstrand.
On appeal, the Court extended Festo in holding “that the rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel.” The case was remanded for a determination as to whether the patentee can rebut the presumption of surrender under Festo.
In dissent, J. Newman argued that the holding will lead applicants to file more independent claims and fewer dependent claims — thus complicating the job of the patent office.
Hamilton Sundstrand is a United Technologies Corporation (UTC).
From the USPTO main site:
USPTO To Hold Live On-Line for Independent Inventors
Senior officials of the United States Patent and Trademark Office will be available live on line next Thursday, June 10 from 2 to 3 pm (EDT). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the on-line will be posted on the home page of the USPTO website at 10 am (EDT) next Thursday. Inventors can begin logging on for the on-line at 1:30 pm.The independent inventor on line is part of the USPTO’s continuing effort to promote and protect America ’s independent inventor community. This effort includes educating inventor-entrepreneurs about the risks of working with invention development companies.
Cordis Corp. v. Boston Scientific Corp. and SciMed Life Systems, Inc. (Fed. Cir. May 28, 2004) (Unpublished Opinion)
The appellate panel affirmed the lower court’s denial of Cordis’s motion for a preliminary injunction.
The most interesting aspect of the opinion involves the public interest component of the PI analysis. Historically, courts have found that the public interest “lies in upholding the the exclusive rights of a patentee.” See, Pfaff v. Wells, 525 U.S. 55. In this case, however, the Court held that the public interest swings the other direction:
for good reason, courts have refused to permanently enjoin activities that would injure the public health…. In this case, a strong public interest supports a broad choice of drug-eluting stents, even though no published study proves the superiority of either … stent.
Read more about the Cordis lawsuits here.
Xenia Kobylarz at the daily journal has written a new article discussing the failure of the inter partes system.
The inter partes procedure has been attempted only 42 times, according to the patent office. And the office has written the procedure out of its new 21st Century Plan – its five-year strategic blueprint – in favor of yet another experimental administrative proceeding based on a process used in European nations and Japan.
A couple of public interest organizations (e.g., EFF and the Public Patent Foundation) are stepping in as guinea pigs for the system.
The outcome of Public Patent Foundation’s highly public request for reexamination may determine the future use of the procedure.
A few years ago, the the Federal Judicial Center (FJC) created a video providing an introduction to patent law for judges and juries. The video is available here (Windows Media, Quick Time), and provides a very good (although general) introduction to patents and the patent office. I would recommend that anyone coming to work in a patent firm should watch this video as part of new employee orientation.
A sample patent used in the video is available here.
The video is used by some judges as a replacement for the testimony of a “patent law expert.”
The U.S., Costa Rica, El Salvador, Guatemala, Honduras and Nicaragua signed the U.S.-Central American Free Trade Agreement (“CAFTA”) last week. The agreement would extend patent rights for pharmaceuticals in the Central American countries.
Jacobs v. Nintendo of America, Inc. (Fed. Cir. May 28, 2004).
Jacobs owns a patent on a tilt sensitive controller. (U.S. Patent No. 5,059,958). In a prior suit over the same technology, Jacobs settled with Analog. Under the terms of the settlement agreement, Analog was given a full license to practice the patented technology.
In the present case, Jacobs sued Nintendo, asserting that Nintendo’s “Kirby Tilt ‘n Tumble” for Game Boy. Nintendo responded, and the lower court agreed, that Nintendo’s actions fell under the settlement agreement, since the accelerometers for the game were purchased from Analog.
On appeal, the Federal Circuit (J. Bryson) affirmed the lower court’s dismissal on summary judgment.
We agree with the district court that the clause granting Analog the right to sell its accelerometers for use in tilt-sensitive control boxes barred Jacobs from interfering with that right by prohibiting Analog’s customers from using the accelerometers for that authorized purpose by making, using, and selling control boxes incorporating Analog’s devices. That interpretation is in accordance with the basic contract law principle that a party may not assign a right, receive consideration for it, and then take steps that would render the right commercially worthless.
Additionally, the Appellate Panel held that the “noninfringing use” doctrine did not apply.
The “noninfringing use” doctrine applies when a patentee or its licensee sells an article and the question is whether the sale carries with it a license to engage in conduct that would infringe the patent owner’s rights. In that setting, absent an express agreement between the parties, determining whether the sale conveys with it the implied right to use the article in an infringing manner may depend on whether there is any noninfringing use for the article. If there is no noninfringing use, it may be reasonable to infer that there has been “a relinquishment of the patent monopoly with respect to the article sold.” United States v. Univis Lens Co., 316 U.S. 241, 249 (1942) … This case is quite different … because the [settlement] agreement must be understood to authorize Analog to sell its accelerometers for [otherwise infringing] uses.
What’s love but a coupling satisfaction predictor? Eharmony recently received a patent on its matchmaking methodology. (U.S. Patent No. 6,735,568).
Claim 1 of the patent deacribes a method with four steps:
(i) generating, from empirical data, a number of factors … relevant to relationship satisfaction;
(ii) approximating the satisfaction that a user … has in the relationships that the user forms with others;
(iii) identifying … candidates for a relationship with the user by [using] the approximated satisfaction and one or more of the factors; and
(iv) approximating the satisfaction that the user will have in a relationship with a particular candidate.
(Related AP Story by Rachel Konrad).
I think that everyone in the field is or will soon be feeling the pain of malpractice insurance rate hikes. Diedre Greg in Seattle has the story: Patent lawyers are slammed by insurance rates
Amity Insurance has developed their list of the top ten most common causes of attorney malpractice. Although the order may be somewhat different for patent attorneys, all of these are real issues.
1. Missing Deadlines
2. Lawyer Stress and Substance Abuse
3. Conflicts of Interest
4. Ineffective Client Screening
5. Inadequate Research and Investigation
6. Poor Client Relations
7. Overzealous Efforts to Collect a Fee
8. Poor or Inadequate Documentation
9. Inappropriate Involvement in Client’s Business
10. Unwillingness to Believe You Might Be Sued
Samuel Oddi (UAkron), has a working paper discussing the recent increase in malpractice claims and provides an analysis of the exposure of patent attorneys to malpractice claims.
In other insurance news, Universal Security has sued its insurer (the Hartford) for failing to cover patent litigation costs. (Article).
Professor Jessica Lichtman’s working paper and music sharing proposal is titled “Sharing and Stealing.”
My specific proposal is inspired by an impulse to see whether an architecture like the one that has permitted the Internet to flourish as an information space can define a thriving music space. The U.S. recording industry’s recent enforcement campaign seems to seek to move us in a very different direction.
This paper is a fun read.
Edward Felton, Martin Schwimmer, and others have already noted Professor Mark Lemley’s new paper that disparages the justification for ex-post IP incentives.
At the very least, Lemley misses the necessary ex-post first-publication incentives. Any coherent IP system gives an incentive to both create (ex-ante) and show your creation to the public (ex-post).
Pamela and Kevin Piston of Australia have patented this shape for a pastry. (U.S. Patent No. D467,404).
The AIPLA is reporting that confirmation of Jon Dudas as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office is expected soon after Congress returns from its Memorial Day recess.
See my prior post on this topic here.
June 1 is the deadline for entries to the Collegiate Inventors Competition sponsored by the National Inventors Hall of Fame. The top prize for 2004 is $50,000 plus $5,000 for an advisor.
Don’t worry if you are just hearing about the compitition now. Every year, some winners only hear of the competition the week before the deadline. Details, including a downloadable entry form, may be accessed here.
The patent system is often juxtaposed with a system of trade secrets. A major difference between the two systems is that patented technology is disclosed to the public while trade secrets may remain hidden forever.
It turns out that in many cases, the patent system also promotes secrecy and witholding of information. This is especially true in scientific fields where the publication of research is postponed to await patent filing dates.
In his most recent paper, Dr. Jeremy Grushcow uses statistical analysis of data retrieved from online abstract databases and from the USPTO to demonstrate that secrecy in academic institutions is on the rise.
This paper confirms that granting patent rights to scientists and their institutions succeeds in generating increased industry participation in publicly funded research and increased patenting and commercialization activity. However, the paper also shows that scientists who seek patents are more secretive, withholding publication or presentation of their data so as not to jeopardize patentability. Notably, this paper also observes that even those university scientists not seeking patents became more secretive in response to the 1980 changes. This unanticipated increase in secrecy increases the risk of wasteful duplication caused by the patent system.
Grushcow offers several potential solutions to restore a “norm of data sharing.”
[I]ncreasing the rewards for early data sharing while providing an experimental disclosure exception to reduce the risk that early data sharing will jeopardize patentability.
Another aspect of secrecy that Grushkow did not explore is the period between filing and publication. Shortening the 18-month publication delay would allow for public knowledge at an earlier time in many cases.
Journal of Legal Studies, vol. 33 (January 2004)
The United States Patent and Trademark Office (USPTO) and the National Inventors Hall of Fame will hold the annual Independent Inventors Conference at the Franklin Pierce Law Center in Concord, New Hampshire August 20-21.
According to news reports, Glaxo (GlaxoSmithKline) has agreed to pay a $75 million settlement in the Relafen Antitrust Lawsuit. The settlement has apparently been approved by a the District Court Judge.
Read my prior post discussing the holding that may have prompted the settlement.
