The following synopsis comes from noted patent attorney Charles Van Horn:
USPTO Commissioner for Patents John Doll announced today at a DC Bar meeting that the final rules on continuation and designated claims practices are at OMB (Office of Management and Budget) for approval. The final rules were logged in on April 10 and OMB is expected to complete its review in 90 days, but frequently grants itself an extension of time. The final IDS rules were said to be on the desk of Director Dudas for approval, and will follow the other two packages to OMB in due course. So at this point in time, July-August would be an approximation for publication of the final rules, with 30 days (based on previous PTO statements) to implementation. No details of the final rules were disclosed.
Context: The PTO has proposed dramatically limiting the number of allowed continuation applications (including continuations, continuations-in-part, and requests for continued examination) and the number of claims pursued in each patent. These proposals have drawn ire from the patent bar.
When I think of PATENTS.COM, I immediately think of Carl Oppedahl’s old law firm. Of course, this secondary meaning was not enough to overcome the Federal Circuit’s determination that the domain name’s trademark usage was merely descriptive. [Link]
PATENTS.COM is now up for sale! As of today, the high-bid is $10,000. I expect the bidding to go much higher for this trendsetting and well established domain.
As part of requests for either reexamination or accelerated examination, the submitter must include particular references to the relevant portions of cited prior art. The Peer-to-Patent project also plans to include a pin-cite approach to give the Examiner a genuine clue as to why particular references were cited. [A pin-cite is a law-school term for a citation to the location of the information within a document. In patent-lingo, this might be: Column 5, lines 12-55]
This leads to a question of whether pin-cite references are helpful to examiners, and whether they would lead to greater patent accuracy. Theoretically, a pin-cite should help ensure that the Examiner browses the most relevant portion of the cited art. In addition, the pin-cites may reduce the amount of time that the Examiner uses to pinpoint relevant portions — freeing up time for a more in-depth analysis or for a broader search strategy.
If these projects are successful, you can expect that the pin-cites will be required IDS practice within a few years.
Query:
Do (will) pin cites help the examiners and lead to a higher quality examination of patent applications?
Do any Examiners regularly request such information from the applicant? Under Star Fruits, an Examiner would certainly be within the law to require further information regarding the cited art. E.g., “For each pending claim, please identify relevant portions of each reference cited by the applicant.”
As an applicant, how would you respond to such a request?
Bass Pro owns a patent covering a vest with an attached seat. In April 2003, Bass Pro sued its arch-rival Cabela’s for patent infringement and the parties quickly settled with Cabela’s agreeing to stop infringing under a consent decree signed by the judge. A year later, Cabela’s introduced a new product — a backpack with an attached seat. Bass Pro brought a contempt proceeding.
Modified Product Contempt Rule: When an enjoined party produces a modified device, a contempt order can issue only after a showing that the modified device infringes the patent.
It appears that Cabela’s accused backpack exhibits every element in the body of Bass Pro’s claim 1. The only difference is the preamble — Bass Pro’s preamble is directed to a vest and seat combo — not a backpack.
The district court, seeing the evidence, decided that the vest preamble should not be limiting — thus finding that the ‘vest’ claim covers the backpack product.
Amended Preamble: Ordinarily, a preamble does not create a cause for limiting the claim scope. In this case, however, the prosecution history led-us out of the ordinary. During prosecution, Bass Pro had amended the preamble to add the vest term (replacing the original ‘garment’). In addition, throughout prosecution Bass Pro had discussed its “vest” in contrast to prior art backpack-chair combos.
It is clear that this patentee procured the patent based on the “unique combination of vest and pivotable seat member” stressed in the prosecution history, where the applicant placed these limitations in the claims. The district court erred in holding that the “vest” of claim 1 was not a material limitation to the claim.
On the correct claim construction the vest is a material element, and the claim cannot reasonably be found to be literally infringed.
Notes:
I’m a big Bass Pro fan. We make an annual late-December journey to the store in search of fabulous Christmas presents. Let me suggest one in particular: This stove-top popcorn popper works amazingly well.
Today is the three-year anniversary of the Patently-O Blog. It all started on April 6, 2004. We now have 1400+ posts covering every precedential patent appeal and Supreme Court decision during this time.
I’m amazed at the popularity of the site — especially considering that the site is primarily directed to the relatively small group of attorneys practicing patent law and patent litigation (about 30,000 persons). In all, there have been over 3 million visits. These visits come from virtually every technology-related Fortune 1000 company, every law firm with at least five patent attorneys on staff, and many many other sources. Recently a larger number of Patent Examiners have begun to read the site as well. The graph below falls-short because it does not include the 8,000+ attorneys and agents who have signed-up to receive Patently-O through an e-mail or an RSS-reader.
The CAFC has announced that next Tuesday the Court will hold a discussion regarding “Briefing and Oral Argument in Cases Involving the Government.”
The discussion will be held in Courtroom 201 at 2 p.m. on Tuesday, April 10 at the Howard T. Markey National Courts Building. After presentations by one or more judges, there will be an opportunity for those attending to ask questions. The session is expected to last no more than 90 minutes. No advanced registration is required and of course no cost is involved.
While a significant number of patent cases involve the government as a party, I expect that the focus of the briefing will involve cases rising from the US Merit Systems Protection Board (MSPB), Court of Federal Claims (CFC), Board of Contract Appeals (BCA), and the Department of Veteran Affairs (DVA). These cases are occasionally worth a substantial amount of money (especially CFC & BCA cases). However, the majority are small-potatoes as compared to most patent appeals. Consequently, attorneys involved prepare less. I suspect that the Court will primarily focus on that issue.
A couple of side-notes: one involving pro-bono and another involving the national stature of the Court of Appeals for the Federal Circuit.
Pro Bono: Some of these low-dollar cases create a perfect opportunity for a patent attorney interested in pro-bono activities. In handling a Veteran’s appeal, you will likely provide a valuable service and, at the same time, build your experience at the CAFC.
A National Court: Unlike the regional circuit courts of appeal, the CAFC is a national court that handles cases from all-around the country. To the extent possible, meetings such as this should provide an opportunity for all interested attorneys to participate or at-least access the information provided by the Court. A simple suggestion would be to provide telephonic access or an MP3 recording of the event. Of course, this is a minor suggestion — in fact, it is wonderful that the Court is interested in prompting a dialogue with the Bar.
Claim differentiation is based on a “common sense” presumption that different words used in the various claims indicate that the claims differ in focus and scope. Andersen holds a number of patents related to fiber materials and sued Fiber Composites for infringement. Fiber Composites used the material for deck railing. Several of the claims included terms such as pellets, linear extrudates, or composites.
Overcoming the Presumption of Claim Differentiation: Based on the concept of claim differentiation, Andersen argued that the composite limitation must not be limited to pellets and linear extrudates. In its decision, the CAFC agreed that – in the abstract – Andersen’s argument was sound. However, the appellate body found “powerful evidence” in both the specification and prosecution history that overcome the presumption of claim differentiation. In particular, the applicant lumped the three elements together when making arguments and discussed the pellet form as an ‘essential’ part of the invention.
Differentiation of Elements vs. Claims: It is also important to remember that the doctrine is that of claim differentiation rather than element differentiation. Claim differentiation is not necessary unless the claims as a whole are redundant.
“A further reason for not applying the doctrine of claim differentiation in this case is that the … claims are not otherwise identical but for the references to pellets, linear extrudates, and composite compositions, and thus the district court’s construction does not make the composite composition claims redundant. Instead, there are numerous other differences varying the scope of the claimed subject matter….
Even though the “composite composition” claims, as construed by the district court, cover substantially the same subject matter that is covered by the “pellet” and “linear extrudate” claims, overlapping patent claims are not unusual, and the overlap does not require us to construe the “composite composition” claims to cover subject matter that differs from the subject matter covered by the other two sets of claims. Under these circumstances, the doctrine of claim differentiation does not require rejection of the district court’s construction of the claims.
Consequently, the CAFC ruled that the composite elements were no broader than the claimed pellets or extrudates.
Notes:
This is a case from January 2007. I missed it because the Seagateen banc order was released the same day.
Korsinsky v. Dudas (Fed. Cir. 2007) (NONPRECEDENTIAL [but citable] OPINION).
Korsinsky, an individual inventor, allowed his patent to expire for failure to pay the maintenance fee. After the PTO refused to reinstate the patent, he brought this federal action.
The patent in question (4,736,447) is related to automatic data processing of a video feed reaches back to a 1983 filing date. The patent itself issued in 1988, but the patentee did not make the first maintenance fee payment at 3.5 years. Thus, the patent expired in 1992. Twelve years later (in 2004), Korsinsky filed a petition for reinstatement based on the patentee’s statement that “the notice of maintenance fee was not received.” After being denied reinstatement by the PTO, Kirsinsky first requested a refund and then attempted again to get reinstatement.
Cause of action:
Mr. Korsinsky’s main argument on appeal is that the PTO has designed a system with tricks and traps that duped him into disclosing his invention and paying substantial sums only to have his invention later confiscated. He argues that this system violates Article I, Section 8, clause 8 of the United States Constitution, which grants Congress the power “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
On appeal, the CAFC sided with the USPTO and district court — determining that the maintenance fee system is constitutional and has not been arbitrarily or capriciously enforced.
Notes:
John Whealan (pictured at right) handled the PTO’s brief. Mr. Whealan has been the USPTO Solicitor since 2001.
In an earlier post, I noted that there are some benefits of providing an initial claim with concrete structure and limitations so that someone reading the claim can instantly understand the invention and its benefits. This helps frame the invention in the minds of the reader and may be especially important when the USPTO Examiner flips to Claim 1 before reading anything else in the patent application.
There are, however, limitations to this approach. In particular, 37 C.F.R. 1.75(g) provides that “[t]he least restrictive claim should be presented as claim number 1.” That rule of practice was added in 1996 along with other changes for implementing the 18-month publication rules. The purpose of the change was “to facilitate the selection of a representative claim” to be published in the Gazette.
Although the rule is in place, it appears to be rarely — if ever — enforced. The Manual of Patent Examination Practice (MPEP) interprets the rule as a should rule rather than a must rule.
Claims should preferably be arranged in order of scope so that the first claim presented is the least restrictive. MPEP 608.01(m)
Further, a search of CAFC, District Court, and BPAI opinions along with law review articles reveals only two passing mentions of the rule. (Interestingly, the law review article appears to incorrectly interpret the rule).
Of course, the fact that the rule has not been enforced does not lead to the conclusion that the rule will not be enforced against your client. (I.e., down the line it might come up once again).
The right aproach: Of the usual three independent claims, it is often difficult to determine which is the least restrictive because each may approach the invention from a different perspective. If one is clearly the least restrictive then it should be listed as claim 1. If some ambiguity remains, choose the claim that is the most concrete, fleshed-out, and understandable and list it as claim 1.
Central Admixture Pharmacy v. Advanced Cardiac Solutions (Fed. Cir 2007).
Central Admixture (CAPS) owns a patent covering a glucose-protein solution used to help overcome ischemia during heart surgery. During prosecution, CAPS made a Freshman-Chem error — claiming the fluid concentration range in units of osmolarity (solute per liter of total solution) instead of osmolality (solute per kilogram of solvent). In this case, for instance, the unit change moves the claimed range by only a few percent. However, the defendant’s concentration was on the border-line — making the issue critical.
CAPS applied for and received a certificate of correction. The certificate, however, was not issued until after the litigation had already begun.
Certificate of Correction: A certificate of correction can be used to correct a minor mistake such as a “clerical or typographical” error or other minor error. In Superior Fireplace, the court held that a certificate of correction that broadens the claim is only permissible when it is clear from the specification and prosecution history how to correct the error.
Broadening: Here, the CAFC found that the correction broadened the claims because they now cover “less-concentrated solutions which would not be covered under the original claims.” [DDC: Of course, a range should not be considered broadened if you are merely shifting the range].
Clear Error Correction: CAPS error is not plain to a reader since solutions have both an osmolality and and osmolarity. The error can be seen when examining the units used in the specification (mOsmol/L, rather than mOsmol/kg), but the CAFC saw the difference between these units as “very slight.” (noting that the difference between miles and meters is much different).
Since the error corrected here was not clearly evident to one of skill in the art and the result of its correction was to broaden the claims, ACS should be granted summary judgment that the certificate of correction is not valid.
The relief for an improper certificate of correction is simply to cancel the certificate. Thus, in this case the patent “continues to read as it did prior to the issuance of the certificate.”
Voidable Title: The research that led to the patent was funded by an NIH grant. The NIH indicated that it would waive its rights to obtain patent protection, but the inventor (Dr. Buckberg of UCLA) failed to properly perfect the waiver. In Campbell Plastics, the CAFC held that a similar error would allow the Government to obtain title to the patent. However, in this case, the inventor retains title until the day that the NIH goes after it.
Notes:
The certificate of correction was issued in 2001. The CAFC did not mention that a reexamination certificate was issued in 2005 that made no-change to the corrected patent.
Factually, is an osmolarity of 400-500 mOsmol broader than an osmolality of 400-500 mOsmol?
Footnote 5: ‘The result might be different if the patentee’s choice of unit resulted in a clearly incorrect claim—“fifty miles” instead of “fifty meters,” for instance. Here, though, the difference between an osmolarity of 400 mOsmol/L and an osmolality of 400 mOsmol/kg is very slight.’
28 USC 1400(b) is the primary patent venue statute. Under the statute, a patent infringement lawsuit may be filed in a jurisdiction (a) where the defendant resides; or (b) where the infringement occurred — so long as the defendant has a “regular and established place of business” in that jurisdiction.
Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business. 28 USC 1400
1400(b) has been around for a long time and has (historically) been given narrow interpretation. Corporate residence was often limited to the location of the principal place of business or corporate headquarters and an established place of business did not include stores owned by others or sales-persons covering the locale. Numerous patent cases were dismissed or transferred because the defendant did not meet the requirements of the law. For instance, in the 1964 case of Sheldon v. Norbute, a Pennsylvania district court transferred the patentee’s case to New York even though the infringement occurred in Pennsylvania. According to the court, the defendant did not fit under the statute because it did not “maintain, control, or pay for an establishment in the district.”
In 1990, Congress took to the pen and broadened the definition of a defendant’s “residence” to include any jurisdiction where the court has personal jurisdiction.
For purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced. 28 USC 1391
In VE Holdings (1990), the Federal Circuit interpreted the amended statute — determining that the statute’s “language is clear and its meaning is unambiguous.” The appellate panel held that the new statute eviscerats the limitations of Section 1400(b) and allows for patent infringement suits in any jurisdiction where the defendant has sufficient contacts under the constitution.
This leads us to last week — where Orion IP filed suit against 63 defendants in the sparsely populated Eastern District of Texas. It appears that only a handful of these large corporate defendants have any connection to the jurisdiction beyond a mere ‘stream of commerce’ analysis. Is it time to return some teeth to Section 1400?
The Senate’s Patent Reform Bill of 2006 (S.3818) would have amended §1400 to, for the most part, eliminate the 1990 expansion. Under that proposal, the revised venue statute would read as follows:
(b) Any civil action arising under any Act of Congress relating to patents, other than an action for declaratory judgment … may be brought only — (1) in the judicial district where either party resides; or (2) in the judicial district where the defendant has committed acts of infringement and has a regular and established place of business.
(c) Notwithstanding section 1391(c) of this title, for purposes of venue under subsection (b), a corporation shall be deemed to reside in the judicial district in which the corporation has its principal place of business or in the State in which the corporation is incorporated.
The proposal still goes beyond the original scope of §1400 by allowing suits in jurisdictions based on the residence of either the plaintiff or defendant.
Full Disclosure: Several of MBHB’s are defendants in the Orion case. These comments are my own and not those of MBHB or its clients.
The PTO has been quietly expanding its patent quality review program using both pre and post-allowance approaches. The general perception is that the quality review is both over-inclusive and under-inclusive. It must certainly be true that the review is catching some patents. However, the following quote — reportedly from a Patent Examiner — suggests that the review program — at least the top-secret post-allowance review — may be somewhat misdirected in its approach.
“[I]f your claims are long and all the t’s and i’s are crossed and dotted, those cases will get a pass. If the claims are short and the subject matter is easily comprehensible, they will get reviewed. (A note to attorney out there — make those claims long, heh). Short claims will get many rejections no matter how novel or unobvious they are. They will make the applicant to put anything in for an allowance. First action allowance will get pulled (at least in my group).” (via G. Ahronian)
Many patent attorneys draft their initial claim in short-abstract form. I have heard of the two finger approach for the first claim which requires the text of claim one to fit under your index and middle fingers. My approach has long been to provide an initial claim that is long and detailed so that the examiner can understand the invention in concrete form. With later independent claims, I begin to draw-out the scope to cover a larger ranger of enabled scope. I wonder how this approach fares under the new quality review process. Of course, this approach must be used within the applicable rules — notably 37 CFR 1.75(g), which requires that the “least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.”
Notes:
Secrets at the PTO: The PTO has been stingy and secretive with all information regarding its Office of Patent Quality Assurance (OPQA). What we do know is that OPQA rejections (or their underlying reasoning) are not provided to patent applicants or placed into any publicly available record. Any further information regarding operation of the OPQA would be appreciated (either via email or comment). dcrouch@gmail.com.
Litigation Notes: Anyone litigating a recently issued patent may want to submit a FOIA request to the PTO to obtain OPQA information regarding the patent in question. A routing sheet may be available. Examiners — Is an internal record maintained regarding OPQA rejections?
Korsinsky v. Dudas (Fed. Cir. 2007) (NONPRECEDENTIAL [but citable] OPINION). 
