December 2005

CAFC: When is trash “in” a trashcan?

BreastPumpPatentCannon Rubber v. The First Years (Fed. Cir. 2005, NONPRECEDENTIAL).

In a claim construction dispute over the term “in,” the CAFC used its trashcan analogy:

As an initial matter, we note that the term “in” is a simple, non-technical term, and that under its ordinary meaning, a “diaphragm disposed in the body” includes diaphragms contained entirely and partially in the body. For example, a trash bag is “in” a trashcan even though a portion of it is hanging outside of the trashcan.

NOTE: It is good that this decision is nonprecedential because it does not follow Phillips v. AWH. Rather, the case merely cites Phillips for the proposition that the construction may depart from the plain meaning of a claim term “when the patentee has acted as a lexicographer or when the patentee has clearly limited the scope of the invention through a disclaimer in the specification or prosecution history.” . . .  

RIM Appeals to the Supreme Court

PatentlyOImage009 Research-In-Motion v. NTP (Supreme Court). [Updated 12/19/05]

The BlackBerry patent battle continues.  In a well written petition, RIM has requested that the Supreme Court hear its appeal from the Federal Circuit’s decision that that was decided in NTP’s favor in August, 2005.

The appeal involves the question of territoriality of the patent laws.  Specifically, RIM poses the following question to the Court:

Under § 271(a) of the Patent Act, “use” infringement is expressly limited to use of a patented invention “within the United States.” The question presented is: Whether an Internet-based global telecommunications system, such as the BlackBerry wireless email system, is used “within the United States,” where components crucial to the system’s operation are located outside the United States.

RIM, a Canadian company, maintains its routers in Canada and has argued that because a portion of its allegedly infringing system was outside of the US that it could not infringe a US patent.  NTP argued the other side — that the mere fact that some servers were located abroad (while many others were within the US) cannot let RIM escape judgment.  For its part, the Court of Appeals for the Federal Circuit split-the-baby and differentiated between system claims and method claims. 

  • For infringement of method claims, each and every step must be performed in the US.
  • For infringement of system claims, the US must be the place where control of the system is exercised adn beneficial use of the system obtained..

In the past two years, the Court has turned down at least two cases involving extraterritorial application of the patent laws.*  Perhaps setting the stage for certiorari here. (odds are still low).

More Info:

  • Download RIM’s Petition for Cert (PDF).
  • According to news reports, all five of NTP’s patents have received office action rejections at least once in the reexamination proceedings, and three of them have received two non-final rejections. [Link]
  • Crouch, BlackBerry Settlement Found Unenforceable, Patently-O: Patent Law Blog (November 30, 2005).
  • Crouch & Kafadar, Pushing The Boundaries, 176 Patent World 10 (October 2005) [Link]
  • * Pellegrini v. Analog Devices and Microsoft v. Eolas.

Patently-O Tidbits

Patent Reform Scholarship

  • [Link] Professor Daniel Cahoy (Penn State) argues that patent reform is best accomplished through an incremental approach rather than through comprehensive changes. An Incrementalist Approach to Patent Reform.
  • [Link] James McEwen (Stein McEwen & Bui) has also published his article on Patent Reform — Is the Cure Worse Than the Disease? An Overview of the Patent Reform in John Marshall’s RIPL.  Although appears dead for 2005, the same issues will rise again next year.

Patentable Subject Matter:

  • IPO filed its amicus brief in LabCorp v. Metabolite. [Read the Brief].  The brief supports neither party, but argues that the limits of patentable subject matter under 35 USC section 101 are already properly defined.  The brief was approved by the IPO Board of Directors and written by Paul Berghoff, Joshua Rich, and Dennis Crouch. 


WTO permanently implements expanded compulsory licensing scheme for pharmaceuticals

ScreenShot010by Richard Carden

Following on the heels of its decision to extend the transition period for least-developed countries (“LDC’s”) to implement intellectual property laws consistent with the TRIPS (Trade Related Aspects of Intellectual Property) agreement, the WTO General Council has agreed to permanently implement a 2003 waiver of Article 31(f) of the TRIPS agreement. This decision expands access to generic pharamaceuticals by eliminating the restriction contained in Article 31(f) that use of compulsory licenses on pharmaceutical patents must be “predominantly for the supply of the domestic market of the Member authorizing such use.” The revision still requires ratification by WTO Member States, however, upon ratification, the revision will essentially allow any WTO member state to grant compulsory licenses on pharmaceutical patents in order to produce pharmaceuticals for other nations, specifically for export to LDC’s.

The decision results in the addition of Article 31bis to the TRIPS agreement. Article 31bis provides a compulsory licensing scheme where a Member country notifies the WTO if its intention to avail itself of the provisions of Articles 31 and 31bis (both exporting and importing Members must provide notification). The revision further includes an Annex to the TRIPS agreement which (1) defines many of the terms used in Article 31bis, (2) provides specifics regarding the content of the notifications, and (3) provides a method for assessing manufacturing capacity in an LDC. While Article 31bis and the Annex purport to require the importing Member to provide safeguards against re-exportation and to provide access for patent holders to legal process, the provisions are sufficiently vague that they will be difficult to police in any significant way. Further ambiguity results from the failure of the WTO to explicitly define the conditions under which compulsory licenses are appropriate. Instead, the WTO relies on “good faith” implementation by Member states.

A number of WTO members had indicated after the 2001 Doha Ministerial Conference (which resulted in the Doha Declaration, paragraph 6 of which provided for a parallel compulsory licensing scheme covering both exporting and importing Member States) and the subsequent August 2003 waiver of Article 31(f) that they would not take advantage of these provisions as importers under any circumstances. Several other members indicated that they would only avail themselves of the compulsory licensing scheme to import in “emergencies or extremely urgent situations.”

The General Council decision comes shortly after the WTO TRIPS Council decided to extend the time LDC’s have to implement IP laws in accordance with WTO standards from 2006 to 2013. LDC’s presently also have until 2016 to implement patent protection for pharmaceuticals.

Richard Carden is an intellectual property litigator at MBHB with litigation experience in cases involving diverse technologies, including medical devices, diagnostic equipment, pharmaceuticals, injection-molding systems, and automotive refrigerants.  His background includes a BSE in chemical engineering from Tulane University, an MS in chemical engineering from the University of Pennsylvania, and JD from Washington University in St. Louis.

Patent Reform

Of course, Patent reform will continue in 2006.  In a recent four-page magazine style article, Professors Lemley (Stanford), Lichtman (Chicago), and Sampat (Columbia) present their proposal for patent reform.  The professors argue that we should not waste money worrying about the patent office doing poor examinations on unimportant patents.  Rather, they argue, we should focus on the inventions that are economically important.  Their proposals allow market participants to identify the important issues:

  • For standard examination, courts should have weakened or no presumption of validity;
  • Applicant can pay for “gold plated” examination which would then be given presumption of validity; and
  • Allow post-grant opposition for newly issued patents — opposer would fund a new examination.

Read the proposal here: What To Do About Bad Patents?

Patent Compulsory Licensing System II

eBay v. MercExchange

The upcoming MercExchange case is important, but it will not lead directory to a compulsory patent licenses on any large scale.  In this case, patentee MercExchange won its infringement suit against eBay, but was denied a permanent injunction. The district court gave four reasons for denying the injunction.

  1. General concern over the viability of business method patents;
  2. A strong likelihood of continuing disputes based on eBay workarounds;
  3. MercExchange’s willingness to license; and
  4. MercExchange’s failure to request a preliminary injunction.

Reviewing them in turn, the Federal Circuit panel dismissed each of these reasons — finding each unpersuasive.  Ultimately, finding that the defendant had shown “no reason to depart from the general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.”

Now, this case has arrived at the Supreme Court to question this “general rule.” In the backdrop, the statute in question — 35 U.S.C § 283 — is written with the standard equitable language seemingly implying that injunctions are discretionary:

The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

It is unclear at this point what a damages calculation would be in a case where a permanent injunction is denied — probably most importantly is whether a patentee will be allowed treble damages for the ongoing infringement.

Patent Compulsory Licensing System

For years, injunctions have been a mainstay in US patent laws.  That notion will be questioned in the upcoming Supreme Court case of eBay v. MercExchange.  As it turns out, other countries require compulsory patent licenses much more freely than does the US.

Robin Le Goff of Laurent & Charras in France provides the following summary:


In accordance with the Paris Convention (see below), the French Patent Law (Code de la Propriété Intellectuelle) provides five reasons for compulsory licensing:

1- Non working of invention during four years from filing,
2- Cross-licensing to and from a third party who patents an improvement depending from the initial invention,
3- Public health,
4- Insufficient production to meet market requirements,
5- National defense needs.

The German Patent Law provides the same schemes as the French one: see Sections 13, 24 and 81 here.

As noted above, the Paris Convention allows for compulsory licenses:

(2) Each country of the Union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work.

(4) A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last; it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a compulsory license shall be non–exclusive and shall not be transferable, even in the form of the grant of a sub–license, except with that part of the enterprise or goodwill which exploits such license.

Polish Your Resume: USPTO Seeks New Deputy Commissioner

RollaThe USPTO is seeking applicants for the job of Deputy Patent Commissioner for Patent Examination Policy.  Stephen Kunin, who is now in private practice, held the job for about ten years.  Currently, Joe Rolla holds the position but is reportedly retiring. This is an extremely important role for the ongoing health of the US patent system. 

STEPHEN.KUNINIPO has posted the job announcement here: LINK.

Patent Reform 2005 — It is Over

The Patent Reform Act of 2005 will not be enacted this year.  There is still a possibility of a back-door push to include some provisions in an omnibus appropriations bill, but at this point it is unclear what those provisions would be and whether they would be successful.

The failure of reforms this year has several sources:

  1. Lack of time: In the Senate, the committee handling intellectual property law is the same as the judiciary committee.  This term has been filled with long debates on judicial appointments that left little time for patent reform.
  2. Patents are not yet hot: It is still difficult to get Washington excited about patent law.  Historically, reform measures have taken years to build up enough inertia to get through both the House and Senate.
  3. Overreaching: The proposed reforms ended up being overreaching in a way that pitted major lobbying groups against one another.  This impasse eventually killed the possibility of moving forward with substantive changes this year.

One of the proposed measures would have eliminated the best mode requirement.  Dale Carlson of Wiggin & Dana has written a short article explaining his reasons for keeping best mode. [Article].

Court Finds Standing for Consumers to Bring Antitrust Claim of Asserting an Invalid Patent.

TAQMolecular Diagnostics Lab v Hoffman La Roche (D.D.C. 2005)

By S. Richard Carden

MDL, a purchaser of Thermus aquaticus DNA polymerase or “Taq” (a component used in performing polymerase chain reaction), brought suit against Roche, Applera and others for violations of the Sherman Act, allegedly arising from Roche’s enforcement of U.S. Patent No. 4,889,818 (“the ‘818 patent”) knowing that it had been procured through inequitable conduct.  The ‘818 patent claims a thermostable DNA polymerase isolated from the Thermus aquaticus bacteria.  Defendants moved to dismiss the complaint on several bases including (1) lack of standing, (2) tolling of the statute of limitations, (3) failure to sufficiently allege a conspiracy, and (4) failure to comply with the pleading requirements of Rule 9.  The D.C. District Court denied Defendants’ motion in its entirety, with a minor exception that precluded MDL from seeking damages for the period prior to the four year statute of limitations period prior to its filing of the suit.


Claim Construction: “A sodium phosphate” limited to one type of sodium phosphate.

Norian v. Stryker (Fed. Cir. 2005).

In the second claims construction appeal, the CAFC found that the term “a sodium phosphate” was limited to a single type of sodium phosphate.  In its decision, the Court found that if the patentee had intended to cover multiple types of sodium phosphate then it should have used “at least one” language.  This decision was supported by two factors: (1) the claim was amended to use the transition “consisting of” rather than the open ended “comprising” and (2) none of the listed examples in the specification used multiple types of sodium phosphate. 

Judgment of noninfringement affirmed.


First-to-Invent vs The Constitution [Updated]

According to Dave Simon, The First-to-File Provisions of the Patent Reform Act of 2005 Violate the Constitution’s Intellectual Property Clause.

The Patent Reform Act of 2005 proposes provisions that would change the granting of patents from the so-called first-to-invent system to a first-to-file system. The Intellectual Property Clause limits Congress to granting patents only to “Inventors”. A system enacted by Congress for granting patents to anyone other than a good faith inventor operates outside of the constraints enumerated in the Clause, and therefore is facially impermissible. The first-to-file provisions of the Act are violative of Article I, Section 8, Clause 8 of the United States Constitution.

Dave’s paper is premised on the assertion that an invention is only made once, and later independent inventions should not actually be considered inventions.  Dave is not the first to make this argument — his paper, however, is easily accessible online. Download Dave’s paper.  Ed Suominen, patent attorney in Scotsdale made the same argument back in 2001 in a paper published by the JPTOS. Download Ed’s Paper.  

Of course, it is highly unlikely that any court would agree that a first-to-file system is unconstitutional. Ed agrees — “Eldred proved that Congress can pretty much do whatever it wants about IP as far as this Supreme Court is concerned.”  Professor Mark Lemley gave his remarks in an e-mail:

I have to disagree with the claim that first-inventor-to-file is unconstitutional. Dave Simon’s reasoning is based on the idea that “inventor” means whoever thought of it first, not simply a person who thinks of it independently. But if that were true, (1) current US patent law would be unconstitutional in the circumstances in which it discounts invention in non-WTO member countries, and the system would have been unconstitutional throughout its history when it was limited to inventive activity in the US; and (2) copyright law would be unconstitutional because it treats any independent creator as an author. Both results seem unlikely to me.

If you are against a switch to first-to-file, I would not hang my hat on the constitutionality argument.

What are the parts of a patent application?

Under 37 CFR 1.77 the specification should include the following sections, in order:

  1. Title of the invention.
  2. Cross-reference to related applications.
  3. Statement regarding federally sponsored research or development. 
  4. The names of the parties to a joint research agreement.
  5. Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference.
  6. Background of the invention.
  7. Brief summary of the invention.
  8. Brief description of the several views of the drawing.
  9. Detailed description of the invention.
  10. A claim or claims.
  11. Abstract of the disclosure.
  12. “Sequence Listing,” if on paper (see §§ 1.821 through 1.825).

These sections may be identified in the application by section headings in uppercase but without underlining or bold type. 

As you develop your style of patent drafting, it is useful to occasionally look back to the rules of practice to ensure that you are still following them.


Do you have comments on the recent trend to eliminate various sections — such as the summary of the invention.

Patently-O TidBits

  • BlackBerry Setback — Listen to Marketplace.
  • TechnoLawyer, the group that voted Patently-O as the Best Practice Area Legal Blog of 2005, has just published a new book, “BlawgWorld 2006.”  The book “takes you on a journey through 51 of the most influential blawgs.”  I’m happy to report that Patently-O is included.  The book is is available free online (registration required).
  • EBay at the Supreme Court: Hal Wegner provided the following directions for following the MercExchange v. EBay case at the Supreme Court
    • To follow the Supreme Court docket sheet with up to date information on the exact status, the Supreme Court website should be accessed, ;
    • Click on “DOCKET;”
    • Then type in the blank at the bottom “MercExchange”, which will link you to the docket sheet of the Court.

How to Electronically File Patent Assignments

A good way to transmit assignments is over the internet – no faxing necessary.  This is especially useful where the assignment is for a single patent or application. Assignments of multiple patents or application would have to be sent individually so faxing might be better for assignments of multiple items.
For electronic assignment recordation:
  1. Scan the Assignment.
  2. Go to the Assignment Web site and complete the Assignment Recordation Form –
  3. Have the attorney or agent sending the assignment sign the electronic form by typing in their name.
  4. Hit the send button.
You will receive an immediate email receipt confirmation.
You will receive a fax assignment recordation notice within about 24 hours.
NOTE: This post comes from the files of Blair Hughes.  Blair is a partner at MBHB LLP and has extensive experience in protecting patent rights, in both the U.S. and abroad.