2004

Googling by the Court

Articles and Publications, Patent

Judicial fact finding is back in vogue this time via Google.

In the United States and abroad, judges are turning to search engines such as Google to check facts, to look up information about companies embroiled in litigation, and to challenge statistics presented by attorneys in court. Dozens of judges have penned opinions describing Google as a valuable–and sometimes crucial–source of knowledge. (Declan McCullagh at CNet News)

Under the Federal Rules of Evidence (Rule 201), this type of judicial notice of facts is only allowed when the accuracy of outside sources “cannot reasonably be questioned.”

Related Book: The Lawyer’s Guide to Fact Finding on the Internet) by Carole Levitt and Mark Rosch has an updated edition with lots of examples.

Written especially for legal professionals, this … edition is a complete, hands-on guide … for conducting efficient research on the Web. Learn the differences between legal research and fact-finding. Discover the distinction between the “visible” and “invisible” Web and how to find information in each. Learn the nuances of search engines in order to formulate strategies for locating the information you need. And read real-world war stories of how Internet data has benefited other legal professionals. (ernietheattorney)

Other: Illustrated patent case law.
(Thanks to Lori Patel, Law.com for the Link)

In re American Academy of Science Tech Center

Patent, Patent Cases 2004,

In re American Academy of Science Tech Center (Fed. Cir. May 13, 2004)
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The Federal Circuit affirmed the Patent Board’s rejection of several claims during reexamination.

The patent claims a priority date back to 1982 and describes distributing processing functionality among several computers:

user applications are run on the user stations, while the database resides on a dedicated database computer. Several user stations are networked to the database computer so that a user application running on a user station can store data to and retrieve data from the database residing on the database computer. The patent describes using a “data base simulator” to “enable[ ] an application program . . . at the user station to call for storage or retrieval of data from the data center as though it were calling for data from a data base resident at the user station . . . .”

The Federal Circuit agreed that the broadest reasonable construction of the claim language allows prior art to read on the claims. Thus, the claims were properly held invalid.

Microchip Technology v. Philips

Patent, Patent Cases 2004

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Microchip Technology v. U.S. Philips and Philips Electronics N.A. (Fed. Cir. May 13, 2004)

Philips owns patents relating to a two-wire bus for communicating between integrated circuits (I2C). Microchip asserted that it did not infringe and that it was a licensee (by succession). The question before the Court was who determines whether there is an obligation to arbitrate.

Although the Federal Circuit generally follows local circuit law regarding non-patent issues, in this case the Court disagreed with prior 9th Circuit holdings. Instead, the Court held that under Supreme Court case law obligation to arbitrate is a threshold matter for the district court to determine. Thus, the Federal Circuit remanded for the District Court to determine whether Microchip was a successor party to the 1983 agreement before any issues may be referred to arbitration.

The appellate panel also found that the arbitration clause was not expired:

It is clear on the face of the 1983 agreement’s arbitration clause that the obligation to arbitrate survives expiration of the agreement’s other provisions. The arbitration clause specifically provides that “[a]ll disputes arising out of or in connection with the interpretation or execution of this Agreement during its life or thereafter” are subject to arbitration.

Appellate Jurisdiction: The Court also held that an order compelling arbitration is appealable:

An order compelling arbitration is in effect a mandatory injunction. Denial of a mandatory injunction is ordinarily appealable under section 1292(a)(1). (Citations omitted)

More info about the I2C technology is here:

Philips was the inventor of the Inter-IC or I²C-bus nearly 20 years ago, and it is now firmly established as the worldwide de-facto solution for embedded applications. It is used extensively in a variety of microcontroller-based professional, consumer and telecommunications applications as a control, diagnostic and power management bus. As a two-wire serial bus, its inherently simple operation was crucial to its emergence as the worldwide de-facto standard.

In re John Ngai and David Lin (RNA Amplification)

Patent, Patent Cases 2004

In re John Ngai and David Lin (Fed. Cir. May 13, 2004)
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Ngai invented a new method for amplifying and normalizing RNA and submitted a patent application for his invention.

The Patent Board rejected Claim 19, which was drawn to a kit with printed instructions for performing the method. The Federal Circuit affirmed the Patent Board’s rejection of the claim.

All that the printed matter does is teach a new use for an existing product. As the Gulack court pointed out, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Id. If we were to adopt Ngai’s position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product. This was not envisioned by Gulack. Ngai is entitled to patent his invention of a new RNA extraction method, and the claims covering that invention were properly allowed. He is not, however, entitled to patent a known product by simply attaching a set of instructions to that product.

Today’s Model: University Research => Money

Articles and Publications, Patent

An article in the USA Today presents a handful of anecdotes of universities reaping huge monetary rewards for their research.

The Stanford-Google ties spotlight a growing trend on campuses from California to Florida. More schools are trying to boost revenue by profiting from campus research — a once-taboo practice.

More than 300 universities are mining laboratories and classrooms for discoveries that could become the next Google or anti-cancer drug. That’s up from 25 in 1980.

“They pray that maybe they’ll get the big score,” says Eric G. Campbell, an assistant professor at Harvard Medical School who has studied the trend.

New Theory Supporting the Doctrine of Equivalents

Articles and Publications, Patent

The Doctrine of Equivalents (DOE) has traditionally been justified as a way to overcome language limitations, mistake, and unforeseeability. Ironically, these elements are missing from leading DOE case law.

Michael Meurer and Craig Nard have released a working paper that brings to light a new justification for the DOE. According to Meurer and Nard, a highly skilled and motivated patent attorney / inventor team would not need the doctrine of equivalents. Through thoughtful and clever claim drafting, the team could obtain patents that would directly cover any potential infringers. This thoughtfulness and cleverness, however, will have a large price tag (i.e., many hours for a highly paid patent attorney).

We develop a better explanation of why claim breadth falls short of the maximum breadth allowed by patent law. Our explanation replaces the passive patent attorney depicted in the friction theory with an active inventor and attorney who are capable of responding effectively to the frictions mentioned above. Whether an inventor obtains the broadest permissible claim breadth depends mostly on the talent and effort of the inventor and attorney in identifying what has been enabled. A good attorney predicts the embodiments that could be chosen by infringers and finds appropriate language to draft a suitably broad claim. We call this process claim refinement, and we develop a refinement theory of the doctrine of equivalents.

Because the pricetag associated with patent drafting is so large, Meurer and Nard argue that such a cost will not be socially optimal. The DOE serves to accomodate less-than-perfect claim drafting — thus allowing a better allocation of resources.

3M Reexaminations

Articles and Publications, Patent

Only a select few ex parte reexaminations are filed by patent owners. Often the technology at issue is of particular importance, and the owner hopes to ensure that the patent is valid before pursuing potential infringers.
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3M recently filed for reexamination for several patents covering field flattening lenses used in wide screen television (TV) technology. (Nipper). This may be a reaction to the recent patent tussle between Fujitsu and Samsung.

Medtronic Vascular v. Cordis

Patent, Patent Cases 2004

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Medtronic Vascular, Inc. v. CORDIS Corp. (3rd Cir. April 30, 2004)

Medtronic AVE alleged that Cordis infringed its coronary stent patents. In response, Cordis asserted that it held a license to the patents under a Settlement and License Agreement that it entered into with the parent corporation of Medtronic AVE to settle prior litigation.

Although the Agreement included an arbitration provision, the District Court held that the dispute was not arbitrable, and enjoined arbitration.

The 3rd Circuit panel vacated and remanded, finding that the the arbitration clause was applicable under New York law.

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,

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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,

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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.