February 2006

Blogging Law and Blogging for Lawyers

I would like to invite you to the upcoming conference on Blog Law and Blogging for Lawyers to be held April 20–21 in San Francisco. LINK.

I am very excited to be the co-chair of the conference, which is the first comprehensive CLE to look at blogging both as a marketing tool for attorneys and as a legal area.  My co-chair Cathy Kirkman of Wilson Sonsini is a great attorney and full of ideas in this area.

Sample Topics:

  • Legal gray areas arising from the proliferation of Web logs
  • The future of blogging — a passing fad or here to stay?
  • The extent to which bloggers qualify for the First Amendment protections afforded to journalists
  • Content ownership and syndication issues
  • Employment issues arising from blogging within corporations
  • The latest in blogging technology, including audio and video feeds
  • How to set up a blog for your law firm or make your current blog more effective
  • How blogs differ from regular Web sites in generating traffic — and business — for your firm
  • Ethics questions surrounding the blog as a law firm marketing tool
  • PLUS an on-the-ground report from several law firm bloggers

We have been lucky with the help of Law Seminars International (LSI) to put together an amazing faculty and the peer group of bloggers and attending attorneys will make this a very special event. 

Feel free to contact me with any questions.
Dennis Crouch

Conference Links:

Other Links:

  • Link: Kevin O’Keefe discusses the conference
  • Link: Kevin Heller focuses on the conference is a clear sign that the “Big Law” players have arrived in the world of legal blogging.
  • Link: Denise Howell blinks.

CAFC Explains Materiality Standard for Inequitable Conduct


Digital Control (DCI) v. Charles Machine Works (aka DitchWitch) (Fed. Cir. 2006).

By Mark Chael,

DCI appealed the lower courts’ decision that its patents were unenforceable for inequitable conduct. DCI’s three asserted patents involve Horizontal Directional Drilling, which enables the creation of horizontal holes in the ground through with utility lines can be placed by allowing a worker to locate and/or orient the boring tool as it moves through the ground.

The district court previously awarded partial summary judgment to DitchWitch finding that there was no genuine issue of material fact that misstatements and omissions made by the inventor during prosecution of the patents were material. After a bench trial, the lower court held that the misstatements and omissions were made with intent to deceive and the level of materiality and inference of intent were both high. Thus, the lower court held that the patents were unenforceable.

The CAFC, however, held there were genuine issue of material fact regarding the materiality of the inventor’s failure to disclose prior art. The CAFC thus vacated the district court’s ruling that the patents were unenforceable and remanded for further proceedings regarding the materiality of the failure to disclose prior art.

Before reviewing the lower court’s determination that DitchWitch was entitled to summary judgment on the issue of materiality, the CAFC addressed the proper standard for determining whether a misstatement by omission is material. What follows in the text of the opinion is a comprehensive, yet succinct, summary of the development and current standing of the law of inequitable conduct and material misrepresentation, in view of the Patent Office’s amendment of Rule 56 (duty of candor and good faith / duty of disclosure). This panel followed the “reasonable examiner” materiality standard of old Rule 56, which “new Rule 56 was not intended to replace or supplant.”

Dr. Mark Chael’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.


Read the opinion.

Patently-O TidBits

1) Continuation Practice: Matt Buchanan at Promote-The-Progress has posted slides from the PTO’s town-hall meeting.

2) APLF: Patent Judges Panel in Des Moines: The Association of Patent Law Firms (APLF) is pleased to present a discussion of patent litigation featuring a distinguished panel of judges.  Titled “Impressions and Observations of Patent Trial and Markman Hearings,” the event will be held March 9 from 12-1:30 p.m. at Drake University Law School in Des Moines.  For reservations and information on payment options, please visit http://media.aplf.org/conferences/drakeroundtable.php.

3) Chicago Bar Assn: On March 1st, 2006, I will be at a CBA Young Lawyers luncheon talking about blogging and blog-law with fellow weblog author Evan Brown.

4) Patent Law Symposium: Northwestern’s Journal of Technology will hold its first symposium: “Patent Litigation in the 21st Century” on February 24, 2006 at its downtown campus. Featured Speakers include Professor Matthew Sag, Peter Zura, Ken Withers, and Hal Wegner. Link.

(via www.thehughpage.com).

Neither Poetry nor Bankruptcy Avoids Patent Infringement Damages

AIPLATalk055Hazelquist v. Guchi Moochie and Mr. Yamaguchi. (Fed. Cir. 2006).

It is now my dream to cite this case in open court:

DDC: “Your Honor, I would refer you to Guchi Moochi and Mr. Yamaguchi for controlling precedent.”
Court: “Quite compelling argument you have Counselor.”
Opposing Counsel: “Foiled again!”

To cite Guchi Moochi, you need a bankruptcy situation, and to be asking the court to collect post-bankruptcy damages:

DDC: “Under Guchi Moochi and Mr. Yamaguchi, although a discharge in bankruptcy operates as an injunction against a plaintiff asserting a claim for a cause of action that arose before the date of bankruptcy discharge, it does not act as an injunction against a plaintiff asserting a claim for a cause of action that arose after the date of bankruptcy discharge.”


  • Read the case: Link
  • cite as Dennis Crouch, Neither Poetry nor Bankruptcy Avoids Patent Infringement Damages, Patently-O, February 9, 2006, at https://patentlyo.com.

Non-Resident Alien Patent Attorneys and Agents are Entitled to Limited Recognition but not Full Registration

Catherine Lacavera v. Jon W. Dudas (Fed. Cir. 2006).

By Baltazar Gomez, Ph.D.

The Court of Appeals for the Federal Circuit affirmed the judgment of the District Court for the District of Columbia that the USPTO’s decision to grant Catherine Lacavera only limited recognition was consistent with the PTO’s regulations, did not exceed the statutory authority, and did not deny Lacavera equal protection.


Lacavera, a Canadian citizen and nonimmigrant alien, was authorized to work in the United States as an attorney to prepare and prosecute patent applications. Upon passing the patent examination, Lacavera was granted limited recognition because of the legal restrictions imposed by her immigration visa. After failing to convince the PTO to grant her full registration, Lacavera filed suit in the district court under the Administrative Procedure Act (5 U.S.C. §§702-706). The trial court denied Lacavera’s motion for summary judgment and granted summary judgment in favor of the PTO.


The PTO has statutory authority to regulate attorney practice under 35 U.S.C. § 2(b)(2)(D). From this general authority, the PTO formulated rules to govern the recognition of attorneys under 37 C.F.R. §§10.6, 10.7 and 10.9. (now 37 C.F.R. §§11.6, 11.7 and 11.9).  Regarding an alien, the rules state that an alien “may be registered” provided that registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States.  For nonimmigrant aliens, the PTO has interpreted the rules to dictate that nonimmigrant aliens are not registered upon passing the patent examination, but rather are entitled to “limited recognition” status that allows an alien to practice before the PTO, but confines their activities to those authorized by the United States Bureau of Citizenship and Immigration Services.


In her appeal, Lacavera contended that the PTO’s decision to deny her full registration was an abuse of discretion because it was improper to find that full registration was inconsistent with the legal restrictions of her visa. The CAFC disagreed, reasoning that the PTO’s decision to grant limited recognition is a reasonable interpretation of the rules in view of Lacavera’s visa restrictions that would be inconsistent with full registration. Lacavera also argued that the PTO exceeded the authority granted by statute by taking into account visa restrictions when determining whether or not to grant full registration. The CAFC noted that the PTO has broad statutory authority to govern the recognition and conduct of attorneys.  The CAFC further noted that although the statute is silent as to whether the PTO may consider visa restrictions, the statute states that the PTO may require applicants to show that they have the necessary qualifications. Thus, the CAFC concluded that it was reasonable for the PTO to enact rules that limit an alien’s ability to practice to those activities in which the alien may lawfully engage as being necessary qualification. As to whether Lacavera was denied equal protection, the CAFC concluded that she suffered no individual equal protection violation because Lacavera offered no evidence that she was treated unequally as compared to other aliens with visa restrictions.


Note: Dr. Baltazar Gomez is a scientific advisor at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University.

Non-Inventors Sloppy Lab Notebook Cannot Corroborate Reduction to Practice

Medichem v. Rolabo (Fed. Cir. 2006).

The parties here are sparing over rights to a novel process for making loratadine, the active ingredient of Claratin®. Rolabo filed its patent application first, but Medichem reduced to practice prior to that filing. 

Interference-in-fact: In order to proceed with an interference, the case must satisfy a two-way test — i.e., each disclosure, when considered as prior art, must at least render the other’s claims obvious.  Here some prior art taught away from adding a particular compound, while others suggested the addition.  The CAFC determined that in such a case, obviousness could be found because “the prior art, viewed as a whole, [teaches] that the addition of a tertiary amine sometimes works to improve the yield.” 

Priority: The later-filed case has the burden of establishing priority by a preponderance of the evidence. Here, the late-filer, Medichem, asserted an actual reduction to practice that occurred prior to Rolabo’s patent filing.  Proof of reduction to practice requires (1) an actual embodiment meeting all the claimed limitations; (2) showing that the invention would work; and (3) corroboration evidence to show (1) and (2).

On appeal, the CAFC found that Medichem failed to provide the necessary corroboration evidence under part (3) above — reversing the lower court’s decision. In its decision, the appellate panel found, as a matter of law, that a non-inventor’s lab notebook was insufficient corroboration evidence where the non-inventor did not testify at trial or otherwise attest to the notebook’s authenticity and where the notebook had not been signed and dated in accordance with good lab practices.

Given the facts of this case, [the noninventor’s] notebook should therefore not be accorded much corroborative value. In view of the minimal corroborative value of the inventors’ notebooks and the limited value of the NMR spectrum, we conclude that the evidence, evaluated as a whole under the rule of reason, is insufficient as a matter of law to corroborate Medichem’s reduction to practice.


  • Interestingly, a parallel interference was also conducted by the BPAI — resolving the issue in favor of Rolabo. Stampa v. Jackson, 65 U.S.P.Q.2d 1942 (B.P.A.I. 2002).




CAFC: Diligence Easier to Prove than Conception

Brown v. Barbacid (Fed. Cir. 2006).

Both Brown and Barbacid claim to have invented a method for inhibiting cell growth control factors (farnesyl transferase). The effective filing dates at the PTO were April 18, 1990 and May 8, 1990 respectively.

In an interference proceeding, the PTO’s BPAI found that Brown had the earlier conception date, but that the early date was moot because Brown had “failed to provide corroborated evidence of diligence” in reducing the invention to practice.

Under 35 USC 102(g), the party that is the first to conceive of an invention is entitled to a patent over a later inventor — so long as the early inventor “exercised reasonable diligence from a time before the other party’s conception date to his own reduction to practice date.”

The CAFC found the time-line in this case as follows:

November 15, 1989 — Brown conception
March 6, 1990 — Barbacid conception and reduction to practice
April 18, 1990 — Brown constructive reduction to practice
May 8, 1990 — Barbacid constructive reduction to practice

Thus, in order to ensure priority over Barbacid, Brown must show continual diligence from before March 6 to April 18.  Furthermore, evidence is required to corroborate claims of diligence. However, such evidence can come from a variety of sources and is generally less rigorous to prove than conception.

The basic inquiry is whether, on all of the evidence, there was reasonably continuing activity to reduce the invention to practice. There is no rule requiring a specific kind of activity in determining whether the applicant was reasonably diligent in proceeding toward an actual or constructive reduction to practice.

Here, the BPAI refused to find diligence, and specifically found that the researcher’s laboratory notebook to be too cryptic to provide useful evidence. The appellate panel disagreed, finding that the evidence should be considered as viewed by persons skilled in the art. Specifically, there is no need to “reproduce on each page a statement of the larger research purpose” of the experiment because “this purpose may reasonably be shown in the various declarations.”



Beware of Overshooting the Mark Set by Phillips v. AWH

AIPLATalk052Varco v. Pason Systems (Fed. Cir. 2006).

In a case involving oil and gas drilling equipment, the district court refused to grant the patentee a preliminary injunction.  Varco appealed claim construction.

Specifically, because the specification states that selected regulators 200-203 must be manually calibrated before use, the district court concluded the “selecting” step recited in the asserted claim requires manual calibration.

On appeal, the CAFC determined that the court’s construction was too narrow — and that it had impermissibly imported limitations into the claims.  In its decision, the appellate panel pointed to the preamble of the claim that indicated that it was a method for “automatically” regulating the drilling equipment.  Based on this and other tidbits pulled from the prosecution history, the court found that manual calibration was not required.


Note: This case brings home a point I made in my talk at the AIPLA winter meeting last week.  Specifically, courts should be wary of overshooting the instructions of Phillips. Notably, even though claims are interpreted in light of the specification, special care should be taken to avoid importing limitations from the claims.

Misleading prophetic examples only marginally relevant to materiality in inequitable conduct review

Purdue Pharma L.P. v. Endo Pharms. Inc. (Fed. Cir. 2006).

In a dramatic reversal of fortune, the Federal Circuit has reversed itself and the district court findings that Purdue’s Oxycontin patents-in-suit were unenforceable due to inequitable conduct that occurred during prosecution of the patents.

The district court found that Purdue repeatedly referred to its “surprising discovery” during prosecution, but did not inform the PTO that the “discovery” was based on “insight” without “scientific proof.”  In its initial decision, the Federal Circuit determined that the district court did not error in finding the two elements of inequitable conduct: materiality and intent.

On rehearing, the same three-member panel of Judges Gajarsa, Plager, and Linn came to a new conclusion — vacating the holding of inequitable conduct. 

The panel began by reviewing the law of inequitable conduct:

Applicants for patents have a duty to prosecute patents in the PTO with candor and good faith, including a duty to disclose information known to the applicants to be material to patentability. A breach of this duty may constitute inequitable conduct, which can arise from an affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive or mislead the PTO.  A party asserting that a patent is unenforceable due to inequitable conduct must prove materiality and intent by clear and convincing evidence. Once threshold findings of materiality and intent are established, the trial court must weigh them to determine whether the equities warrant a conclusion that inequitable conduct occurred.

The court applies a “careful balance:”

[W]hen the misrepresentation or withheld information is highly material, a lesser quantum of proof is needed to establish the requisite intent. In contrast, the less material the information, the greater the proof must be.

Regarding materiality, the CAFC agreed with the district court that “Purdue’s actions met a threshold level of materiality.” However, the panel found that the “level of materiality [was] not especially high” — thus requiring solid proof to establish intent. The trial court, however failed to “properly consider the [low] level of materiality.” 

Based on the lack of evidence intent presented in the trial court’s opinion, the CAFC vacated with instructions to reconsider the evidence of intent based on a low level of materiality.



Hamlet, on filing a response with the USPTO

Angela Horne is a patent agent at Quine IP Law Group.  As can be seen from her prose below, she is also a talented Shakespearean.  In this Scene, young Hamlet is debating his next course of action:

To file, or not to file (today): that is the question
Whether ’tis easier on the budget to file
The current draft without further extension;
Or instead, to take more time to review,
And by reviewing, further revise the arguments…
To file, to wait for the Examiner to review
At last; and by calling before two months is up, forestall
The heart-ache and the thousand muttered curses
That a Final Office Action is heir to. ‘Tis a consummation
Devoutly to be wish’d.
To file the response, to follow up with a call;
To call, perchance to get the case allowed: aye, there’s the rub;
For in that Notice of Allowance, what claims to next pursue
When we have the current claim set allowed, 
Must give us pause…

Ms. Horne’s prose also reminds me of the Roach Trap patent application that was filed in the mid 1800’s by D. Breed of Washington DC.

To all those whom it may concern:
By this description, you may learn
That I, D. Breed, a District man,
Have made invention of a plan,
Both new and useful, of a trap
For catching roaches while you nap.

In setting forth my new invention,
Of first importance I would mention
My trap’s a novel earthen cup
Outside of which the roach creeps up
And, jumping in to eat molasses,
The well glazed mouth he ne’er repasses.

In drawings, figures one and two
Show simple forms, yet something new;
The first has rough outside or way;
The next, an inclined path at A.
The central stem (in dots you see),
Is crowned with bowl like half a pea,

To hold molasses, say a drop,
And smoothly glazed from base to top.
But this is no essential thing:
Without it, the roaches spring.
If in the bottom of the cup
You place the sweet whereon they sup.

The figure three shows a form unique
Of which in highest praise I speak;
‘Tis glaze on in and outer sides,
Except between the handle strides
Where creep the roachies up a track
Without fear of sliding back.

In figure four, at B, a spout
Is made, to wash dead roaches out;
This form is glazed entire within,
also the mouth up to the brim
but on the outer side, all round,
No trace of glazing can be found.

In five and six, a septum, C,
Cuts full two thirds the cup from three,
The smaller part has open door
At letter D, close to the floor,
And inclined way to top of cup
Where Mr. Roach with cane walked up;

Nor needs his wife or child his hand
To reach the highest brink and stand,
A little trip is balance hung
May o’er the mouth of cup be swung;
But that, an almost useless thing,
To save expense, away I fling.

Of varied traps, with spiral walk
And sundry forms, I yet might talk —
Of clay or other mortar made
To suit the fancy or the trade:
Forms now conceived, yet not revealed,
That sleeping lie to fancy’s field.

From this description,you may make
Whatever form you choose to take,
From figure one to six, made part
Of this to aid the potter’s art,
I recommend said figure three
Of porcelain, like cup for tea.


As manufacture new, I claim
Said pottery trap, or porcelain.