Patently-O Bits & Bytes by Lawrence Higgins

Are Companies Acting as Government Contractors Immune From Patent Infringement Suits?

  • The CAFC, in Zoltek Corp. v. United States, No. 2009-5135 (Fed. Cir. Mar. 14, 2012), Zoltek was the assignee of a patent for manufacturing carbon fiber sheets with controlled surface electrical resistivity. The carbon fiber at issue was used by Lockheed Martin to build the F-22 fighter jet, pursuant to a government contract. The manufacturing of the fibers started in Japan, and thereafter imported into the US, where the fibers were processed into sheets and used for F-22.

    The court held that when the US is subject to suit under 28 USC 1498(a) for alleged infringement of a patent by a contractor acting by and for the US, the contractor by law is rendered immune from individual liability for the alleged infringement. The court further held that, when a product of a patented process is… imported into the US by or for the US, there is direct infringement under a 1498 action. (In addition the US waives sovereign immunity) Opinion

    28 USC 1498

    • (a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.
    • (c)The provisions of this section shall not apply to any claim arising in a foreign country.

USPTO Will Admit 10 Additional Schools into its Patent Law Clinic Certification Pilot Program

  • The Pilot Program started began in 2008 with 6 schools and expanded in 2010 to 16 schools. Students in the patent program can expect to draft and file a patent application and respond to an office action. Each law school clinical program must meet and maintain the requirements for USPTO certification in order for student practitioners to practice before the USPTO. The program provides real-world experience to students interested in the field of IP. Submissions will be accepted through June 1, 2012. [Link]

Patent Jobs:

  • Hoffmann & Baron is seeking a patent attorney/agent with a minimum of 3-5 years of experience in the areas of computers and business methods to work in their Parsippany, NJ office. [Link]
  • Faegre Baker Daniel's is searching for a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • Larson Newman is looking for patent attorneys with an EE degree and 3-5 years of experience to work in their Austin office. [Link]
  • Akerman Senterfitt is seeking a chemical patent associate with 1-3 years of experience to work in their Denver office. [Link]
  • Gilead Sciences is searching for patent litigation counsel with a BS in life sciences and 5-8 years of experience to work at their Foster City, CA office. [Link]
  • Carlson, Gaskey & Olds is looking for a patent attorney with 4-8 years of patent litigation experience to work at their Birmingham, MI office. [Link]
  • Klarquist Sparkman is seeking a litigation associate with 1-2 years of experience to work in their Portland office. [Link]
  • Klarquist Sparkman is seeking a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work in their Portland office. [Link]
  • Cardinal Intellectual Property is looking for a patent search professional with a JD degree and a technical degree to work remotely. [Link]
  • Berkeley Lab is searching for a patent attorney with at least 5 years of experience as a patent attorney/agent. [Link]
  • Faegre Baker Daniels is seeking a trademark litigation associate with 2-3 years of trademark and copyright litigation experience to work in their Minneapolis office. [Link]
  • Cardinal Intellectual Property is looking for a patent search attorney to work at their Evanston, IL location. [Link]
  • Wellstat Management Company is searching for a patent attorney/agent with at least 5 years of experience and a background in biomedical or mechanical engineering to work at their Gaithersburg, MD location. [Link]
  • Stroock
  • Faegre Baker Daniels is looking for a junior patent litigation associate with 1-2 years of experience to work in their Denver or Boulder office. [Link]
  • Nixon & Vanderhye is searching for a patent attorney/agent with experience drafting and prosecuting patent applications to work in their Arlington, VA office. [Link]
  • The DuPont Company is seeking patent agents with experience in preparing and prosecuting patent applications under USPTO TC1600 to work at their Wilmington, DE location. [Link]
  • Covidien is looking for an IP attorney with 4-6 years of experience to work at their New Haven, CT location. [Link]
  • Hagens Berman is searching for a patent litigation attorney with 3+ years of experience to work at their Seattle office. [Link]
  • The USPTO is seeking patent examiners with an engineering degree to work at their Alexandria or Detroit locations. [Link]

Upcoming Events:

  • On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • The University of Colorado School of Law will hold a conference on April 24th. The conference, Patents on the Range or Wild Frontier, will discuss the future of patent policy. Guest speakers include: David Kappos, Don Rosenberg, John Thorne, Paul Ohm, Bernard Chao, and many others. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
  • On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
  • ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]

Contact with leads for future Bits and Bytes.

17 thoughts on “Patently-O Bits & Bytes by Lawrence Higgins

  1. 17

    Anon, one more point, you must admit that Bob is struggling with this argument because he fails even mention or explain the presence of “patented, describe a printed publication, on sale, or in public use” in the statute.

    I think what Bob is trying to do is get us back to the beginnings of patent law where prior art was limited to “known and used.”

  2. 16

    Anon, after US had a chance to read Bob’s article, report back and give me your impression. There’s a lot in it that I find very interesting because it represents a dramatic change the law across the board.

  3. 15

    Anon, no I don't have a link.  I believe you have to be an AIPLA member to get access to the journal.  If you are not in an AIPLA member, you might want to consider joining.


  4. 13

    Sorry, Ned.

    This has been explained to you. Long have I stressed the extensive nature of the changes to patent law in the AIA, including both the overarching otherwise avialable language as well as the reconstituted lumping together of “sale” so as to eliminate the mere personal bar aspect. You simply did not believe what I told you.

    Perhaps it is not altogether unwise not to believe anonymous posters on patent blogs, but what is galling is when you do not listen to reason and simply shut down others’ viewpoints (especially as I told you politely albeit firmly.

    Is there a link available?

  5. 12

    Mr. Armitage has published his explanation of the AIA in the AIPLA QJ. I paused my reading of it at page 38 of 133, to make this comment.

    He insists that the “otherwise available” language of 102(a)(1) is “overarching.” He fails to even concede that 102(a)(1) continues the language of former 102(b). He insists that the overall objective of patent reform will be frustrated useless this new definition of prior art that he advocates be given effect. This from page 23:

    “Thus, by far, the provisions of the AIA that are of the utmost importance to realizing the benefits contemplated by the reforms are premised on the successful implementation of the new statutory definition for “prior art.” Either this new definition will successfully translate into prior public disclosures, and earlier patent filings naming other inventors, as the sole means for disclosed subject matter to qualify as prior art, or it would be difficult to make sense of what Congress has done in the aggregate to the patent law, particularly the newly structured post-grant review procedures that Congress has dictated must be instituted, adjudicated and typically concluded in no more than one year.”

    Placed in context, where he claims personal credit for the entire reform effort (and I think he does deserve the credit), his views are worthy of note and discussion. They may prevail in the end, but the problem is the presence in the statute of “on sale,” which as never really been considered to be “prior art,” but rather is a personal bar that can include non public commercial activity. Construed in the manner advocated by Mr. Armitage, there is no meaningful distinction between “on sale” and “public use,” thereby rendering “on sale” surplusage. While I haven’t finished his work to see if he elsewhere has an explanation for this inconsistency with his theme, but I would be surprised if he did have an explanation for what appears to be a glaring inconsistency between his views and the statutory language.

  6. 10

    You people are delusional. The IP system restricts and inhibits innovation. Abolish the IP system.

  7. 9

    Paul, actually, it appears, the patent owner had sued in the government in the court of claims, but the government defended on the basis that it was not liable because not all the steps of the patented method were performed in the US, thus there was, the government contended, no liability under 271(a) and for this reason, no liability for the government. A prior panel agreed that there was no governmental liability under 1498(a) because there was no liability under 271(a). The instant en banc case arose out of a transfer order for the case to continue in a district court against the government contractor.

    The en banc Federal Circuit vacated the prior panel decision in this case concerning no direct infringement. It did not simply overrule it. Now that is worthy of a note by itself.

    But what is very important as a general matter is the the court’s analysis of the interface between 271(a) and 271(g). It appears to hold that there is direct infringement if a party completes the final method steps on an article where someone else performed the initial steps.

    Now, these are the same facts as appeared in Univis Lens, an exhaustion case, where the final lens finishing steps were performed by opticians on partially finished lens blanks sold by licensees. Not all the steps were performed by one party, yet there was direct infringement by the opticians and contributory infringement by the partial finishers.

    The Federal Circuit relied on Quanta in reaching a similar result here.

    So, what this case harbingers is the Federal Circuit may be leaning to a holding in the pending en banc case considering divided infringement, Adamai, that one who completes the steps of a patented process may be a direct infringer if he operates on the results/outputs of the prior steps.

  8. 8

    The last page of the flyer for the event has it as “Randy R. Rader”. What seems to be your boggle?

  9. 7

    I am not clear about the point(s) being raised in your last two sentences. Can you clarify because I do not want to read into them something you may not have intended?

  10. 6

    Thanks for the observations. I certainly agree that there haave been long term ambiguiites in things like the scope of and requirements for “Authorization and Consent” in the contract with the government.
    But as to your discussion of patents as property and Title 35, 35 U.S.C. 261 does say that: “Subject to the provisions of this title, patents shall have the attributes of personal property.” But 5th Amendment issues have always been limited by “sovereign immunity.”

  11. 5

    I neglected to mention that the 5th Amendment issue originally raised in Judge Damich’s COFC decision, and as to which cert was eventually denied, remains in legal limbo. Perhaps at some later time a series of facts may present themselves such that the constitutional issue may not be avoided, but until then there is no precedent of which I am aware holding that patents (and copyrights) are “property” under the 5th Amendment.

  12. 4

    Actually, Zoltek is not the panacea that so many contractors may now believe is the case. What the court has stated is that the USG is liable under 28 USC 1498 for direct infringment. While the court has spoken only with respect to 271(a) and 271(g), it does seem to be a reasonable assumption that other provisions in 271 that deal with direct infringement, if raised in the future, will likely benefit from the ruling.

    What did the court not decide? First, it gave no meaning to the term “Authorization and Consent” and whether or not the USG has the unfettered right to withhold it at will, and infringements that are not “direct”, i.e., contributory infringement and the like. Current caselaw absolves the USG of any liability under 1498 for anything other than direct infringement. The result? Contractors are still on the hook, and actions for those on the hook may be initiated in federal district courts. Second, 1498 is limited to issued patents. Provisional rights are not associated with same, thus leaving yet another hook applicable to private contractors.

    In sum, there remain gaps in the decision that can leave contractors with personal liability, and in some 1498 cases the government has ZERO liability and absolute freedom from suit under current law.

    As for attorneys wasting time and money, this comes as no surprise since in all related cases I have studied not once did I ever read even a hint that they had ever analyzed all of the rights conferred by Title 35, and then compared those rights to the ones waived under 1498. This issue has lay dormant since 1918, so this should give you some idea just how many times this issue has not been examined by patentee counsel.

    The point to be made? It helps to always first read Title 35 in detail before filing lawsuits in cases such as this. Had counsel done so, these gaps would have literally jumped off the page.

  13. 3

    These blog comments badly need filtering for relevance to patent law, as demonstrated above.
    Decisions like the cited Zoltek Corp. v. United States, No. 2009-5135 (Fed. Cir. Mar. 14, 2012) emphasise the long settled law of this old statute and numerous prior decisions that a patent owner must sue the government for patent infringement for government purchased products in the proper court, not sue an authorized government contractor in a district court. What is surprising is how many attorneys have wasted time and money doing the latter over the years.

  14. 1

    First I limp to the side like my leg was broken
    Shakin’ and twitchin’ kinda like I was smokin’
    Crazy wack funky
    People say ya look like M.C. Hammer on crack, Humpty
    That’s all right ’cause my body’s in motion
    It’s supposed to look like a fit or a convulsion
    Anyone can play this game
    This is my dance, y’all, Humpty Hump’s my name
    No two people will do it the same
    Ya got it down when ya appear to be in pain
    Humpin’, funkin’, jumpin’,
    jig around, shakin’ ya rump,
    and when the dude a chump pump points a finger like a stump
    tell him step off, I’m doin’ the Hump.

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