Appellate Court Stays Injunction Against Microsoft Word

Patent

Microsoft v. i4i (Fed. Cir. 2009)

Without substantive opinion the Federal Circuit has stayed enforcement of an injunction against Microsoft that could have forced the software giant to stop selling its flagship product Word. Absent further rulings, the stay will be in force until Microsoft’s appeal is decided on the merits — likely extending into 2010. In August 2009, the lower court found Microsoft liable as a willful infringer of i4i’s patent relating to xml document processing – a function of Word ’03 and ’07. That court ordered Microsoft to stop infringing by October 10, 2009.

The Stay order indicates that:

“Without prejudicing the ultimate determination of this case by the merits panel, the court determines based upon the motion papers submitted that Microsoft has met its burden to obtain a stay of the injunction.”

Interestingly, the stay order indicates that it is a per curiam decision, but the order was signed by the Federal Circuit Clerk Jan Horbaly “for the court.” I see this as an indication that the judges assigned to the merits panel do not yet want to reveal their identities.

The unfortunate part of this decision is that it does not define what it takes to meet the “burden to obtain a stay of the injunction” – especially in the wake of eBay. How does the court go about deciding whether to stay relief? How important is the fact that briefing of the merits are being expedited? What role did the amicus briefs by HP and Dell play in the decision?

Google’s Patent on its GOOGLE.COM Home Page

Design Patent, Patent, ,

Earlier this week, the USPTO issued a design patent to Google that covers the “ornamental design for a graphical user interface [GUI] … as shown and described.” Pat. No. D. 599,372. Design patent coverage is essentially defined by the images include in the issued patent. Here, the image looks roughly the same as the company’s ubiquitous Google.com homepage. (See image below.)

To be clear, many patent professionals would argue that it is misleading to ever simply call this “a patent.” Rather, it is a design patent. Design patents have limited scope in that they only cover ornamental designs rather than technological advances. The USPTO has been granting design patent protection for screen shots and icons for many years. However, to my (limited) knowledge, none of those design patents have ever been enforced in court. As with most design patents, it appears that during prosecution, the PTO never issued a substantive rejection based on novelty or obviousness. [UPDATE – I updated this paragraph based on messages from two of the leading design patent experts Saidman and Carani who rightly indicated that in the past several years, few design patents have been found invalid]

Dashed or “ghost” lines in the drawing indicate features that are not claimed. Thus, patent would be infringed by someone using an identical layout even if they replaced the “Google” mark with their own mark. You can note at the bottom that the design patent drawing is marked with a circle-c ©. That indicates that Google is also claiming copyright protection for this layout. In addition, in the design patent, Google indicates that it is also claiming trademark protection for portions of the layout and – perhaps – for the layout as a whole.

Although there is some conflict in the precedent, modern courts have generally allowed companies to overlap design patent, copyright, and trademark protection in the same way that a prosecutor may charge someone with multiple crimes that all stem from the same bad act. This only becomes a problem when applicants also attempt to include utility patent protection in the mix. The problem arises because inventions protected by utility patents are required to be “functional” while design patent, copyright, and trademark laws only protect “non-functional” elements. [The non-functionality doctrine varies considerably between the regimes.]

I like to think of the three regimes (design patent, copyright, and trademark) as essentially creating different rules of evidence to prove the same thing. All of the regimes have some sort of distinctiveness doctrine. For design patents, the design must be a novel and nonobvious advance; for trademark, the mark must help distinguish goods or services in the minds of consumers; for copyright, the work must be original. Likewise the elements of infringement are similar, but different enough to provide added value to someone concerned with protecting an underlying valuable asset.

Allowing overlapping protection has problems. Most notably, the ‘piling on’ effect may make it too expensive to challenge Google’s rights even if their claim to rights appears overreaching. In the criminal justice system, this has the same effect of pushing folks to plea bargain.

Google operates in part on its reliance on the fair use doctrines of copyright and trademark laws and has been a strong advocate of open access of copyrighted works (think Google books and Google’s indexing) and limited trademark rights (so that others can bid for Google ads on a competitors trade name). By relying on design patents, Google positions itself in a way that it can protect its rights based on patent doctrines while still arguing for weaker rights in those other areas.

Design patents remain in force for 14-years from the date of issue. Thus, Google’s design patent is set to expire on Sept 1, 2023.

I have taken a screen shot of the Google.com website from Sept 3, 2009. It pretty clearly would not infringe because of the differences between layout in the patent and the layout on the site.

Notes:

  • Read the computer programmer response on Slashdot.
  • File Attachment: patd599372.pdf (72 KB). Also, see Google’s patent on Google Patents.
  • It is pretty amazing that the patent lists ten inventors for that simple thing. Did each of those individuals contribute inventive material?
  • Inequitable Conduct?: According to the face of the patent, Google did not submit any prior art. The examiner found 13 largely irrelevant pieces of prior art. Google should have at least submitted a copy of its home-page from 1 year before its March 2004 application date. The screen-shot below is the Google page from one-year before its patent priority date. (via Internet Archive). The Screen Shot serves as 102(b) prior art and also serves as a non-infringing alternative for competitors.

PatentLawPic778

  • Gawker’s ValleyWag has more background in a post titled “Google Patents World’s Simplest Home Page.”
  • Continuations: This patent is part of a family of at least seven design patents. Six of them are still pending, but one issued as a patent in 2006 (D533,561) covering the layout of search results. The recently issued ‘372 patent was filed in 2006, but claims priority to the 2004 filing date of the ‘561 patent.

Federal Circuit Expanded Panel

Patent, ,

Martek Biosciences Corp. v. Nutrinova, Inc. (Fed. Cir. 2009) (expanded panel)

Sitting in as an expanded five-member panel, the Court of Appeals for the Federal Circuit has largely affirmed a jury verdict finding Martek’s patents valid and infringed. The case involves issues of written description, enablement, sufficiency of infringement evidence, corroboration of prior inventorship arguments, and claim construction of the word “animal.”  The five members agreed as to all issues except for claim construction. On that issue, the majority opinion of Judges Newman, Gajarsa, and Moore held that a human is an animal.  Judges Lourie and Rader argued in dissent that the patentee’s use of animal suggested that it did not include humans.

I’ll write more about the case in a separate post, but here I want to focus on the procedure of an expanded panel.

Expanded Panel: It appears that the expanded panel was prompted in-part as a show dignitaries who were visiting the court.  The court claimed authority under 28 U.S.C. 46(b) which indicates that the “Federal Circuit . . . may determine by rule the number of judges, not less than three who constitue a panel.”  There is a problem with this authority. The statute calls for the court to create a “rule” for determining the number of judges. Rather than following a rule, however, the expanded panel here appears to be an ad-hoc creation. 

Notes:

  • Parallel Reexamination: As with most litigation, the patents are also under reexamination at the PTO.  As usual – and perhaps as required by the law – the Federal Circuit entirely ignored that proceeding.

Patent Attorney Work Week

Patent

I built a dataset of all original patent applications that have been published January – August 2009. Using that dataset, I created the chart below showing the patent applications grouped by the day of the week that the application was filed (based on filing date listed in publication). As is apparent, Friday filings are the most prevalent while only 2% of applications were filed on the weekends. As shown in the second and third charts, the Friday filed applications on average (1) include more claims and (2) include more words in the detailed description as compared to applications filed on other days of the week. Applications filed on the weekend are significantly shorter – a phenomenon likely explained by the larger proportion of independent inventor filings on the weekend.

Rethinking the USPTO Examiner Count System

Patent

The USPTO uses a count system as one way to measure patent examiner productivity. Examiners receive one count for sending out an initial office action and a second count when the case is “disposed.” As you might guess, a case is disposed of when it either issues as a patent or is abandoned by the applicant. However, many folks are surprised that the applicant’s filing of a request for continued examination (RCE) also counts as a disposal. As the chart shows below, this count incentive may well be driving a flood of RCE filings. The system also provides some incentive for aggressive restriction practice that forces the applicant to divide a single application into multiple applications. Notably, (1) the examiner does not receive any extra credit for examining a larger or more complex application and (2) the eventual divisional application is ordinarily routed to the original examiner who can do the search more quickly and still get the same counts.

One of the initial missions of new PTO director David Kappos is to rethink the count system and to figure out a way to ensure that examiners have “the time they need to do their job properly” and which also “incentivizes compact prosecution.” Giving a hint at the final solution, Director Kappos also suggests that the count system should encourage “the use of interviews.” The eight member task force includes four examiner union (POPA) representatives and four PTO managers – perhaps ensuring that the solution will not be a dramatic shift. [Quotes come from an internal PTO communication.]

Add your proposal below:

Fraud in Trademark Prosecution: Should Have Known Standard is Insufficient

Patent

In re Bose Corp. (Fed. Cir. 2009)

When renewing its trademark registration for the word-mark WAVE, Bose stated that the mark was still be used in commerce on various goods “including audio tape recorders and players.” By that time (2001), Bose had stopped making and selling audio tape recorders and players. The discrepancy was not picked-up until a few years later when Bose attempted to oppose registration of the HEXAWAVE mark filed by Hexawave, Inc., and Hexawave filed a counterclaim asking the PTO to cancel the registration for WAVE.

Willful Fraud in trademark prosecution is found when an applicant “knowingly makes false, material representations of fact in connection with his application.” The elements of fraud must be proven with clear and convincing evidence. Notably, the “knowingly” requirement excuses false representations if “occasioned by a misunderstanding, an inadvertence, a mere negligent omission, or the like.” Here, the court goes on to hold that it is insufficient to show that an applicant “should have known” that its statements were false.

The TTAB improperly applied a should-have-known-better standard in this case.

By equating “should have known” of the falsity with a subjective intent, the Board erroneously lowered the fraud standard to a simple negligence standard.

Because there was no subjective evidence of willful intent, the Federal Circuit found that the fraud charges could not stick. However, the court authorized the TTAB to limit the coverage the mark based on the fact that it is no longer in use on audio tape recorders and players. “[T]he registration needs to be restricted to reflect commercial reality.”

Bits and Bytes No. 128: BRCA Gene Patents

Patent,
  • Patentable Subject Matter During Prosecution: The PTO has asked for public comments on its interim examination instructions for evaluating patent subject matter eligibility. [PTO Request][Patently-O Discussion]
  • Breast Cancer Gene Patent Challenge:
    • The ACLU, PUBPAT, and others continue their fight against patents covering the breast cancer genes BRCA1 and BRCA2 held by Myriad and the University of Utah. The federal lawsuit argues (1) that the genes should not be patentable as “products of nature” and (2) that the patentee’s use of patent rights to limit scientific research on the genes violates constitutional First Amendment protections.
    • A key to ACLU’s argument is to look at what the patent prevents – i.e., making or using the isolated gene. The organization argues that “human genetic sequences and the scientific inquiry of looking at a gene or comparing two human genes constitute natural phenomena, laws of nature, and abstract ideas and thus are not patentable subject matter under 35 U.S.C. § 101.
    • The First Amendment argument has some merit because of the Supreme Court’s penchant for sharing principles between patent and copyright law. In copyright law, the idea-expression dichotomy is often used to ensure that First Amendment rights are protected. See Harper & Row v. Nation, 471 U.S. 539, 555-560 (1985). In patent law, the ACLU argues that “there can be little doubt that patenting of abstract ideas or thought or an entire body of knowledge would violate the First Amendment” protections of freedom of thought and speech. There are many interesting issues here – one in particular is a question of whether the bare patent could create a first-amendment violation, or does it also require aggressive enforcement.
    • Downside of eBay: Unfortunately, the cancer cells continue to ignore Myriad’s repeated warnings to stop making and using the gene. [joke]
    • Links: [ACLU Discussion][ACLU Summary Judgment Motion][Sarnoff’s Discussion][Holman’s Discussion]

Microsoft v. i4i: Briefing the Appeal

Patent,

Microsoft v. i4i (On appeal at the Federal Circuit)

In the past several years, courts have somewhat weakened patent rights. Three cases have been particularly important: (1) KSR v. Teleflex (making it easier to find an invention unpatentably obvious); (2) In re Seagate (making it more difficult to obtain enhanced damages for willful infringement); and (3) eBay v. MercExchange (making it more difficult to obtain permanent injunctive relief to stop ongoing adjudged infringement). In its appellate brief, Microsoft pushes hard on these buttons – explaining their view that the district court misapplied the law.

This post discusses Microsoft’s appellant’s brief on the merits as well as the amicus briefs filed by Dell and HP. In a prior post, I discussed Microsoft’s separate motion for an emergency stay of permanent relief. The court has granted an expedited schedule and will hear oral arguments on September 23, 2009.

Microsoft’s frustrations with the court in the Eastern District of Texas are clear based on the company’s preliminary statements in its brief:

In patent cases, even more than most, the trial judge’s role as a gatekeeper is crucial. As gatekeeper, the judge must define the metes and bounds of a patent through claim construction and then ensure that the evidence presented by the parties’ numerous experts is both reliable and rooted in the facts of the case at hand. And after the jury has rendered its verdict, it is the judge who, before allowing that verdict to become an enforceable judgment, must ensure that the verdict is adequately supported by the evidence and supportable under the law. This gatekeeping function is especially important in patent cases because of the delicate balance struck by patent law to achieve its objective of promoting, rather than stifling, innovation. That balance can be lost if the district court does not protect the process, and patent litigation then becomes a tax on innovation rather than its guardian.

This case stands as a stark example of what can happen in a patent case when a judge abdicates those gatekeeping functions.

Microsoft’s best argument on appeal deals with claim construction. i4i’s asserted claim (see claim 14) covers a method of producing a map of metacodes where mapped content is stored in “distinct map storage means.” Microsoft argues that the “distinct” language requires that the mapped content be stored “separately and distinctly.” The district court rejected that argument and instead that the “distinct” limitation only required distinct addresses in memory. Because Microsoft Word stores the map and the metacodes in the same file, the company argues that it cannot infringe under a proper construction.

Moving from there, Microsoft argues that (1) the claims are invalid under KSR; (2) the injunction cannot be sustained under eBay; and (3) that the enhanced damage award conflicts with Seagate.

Amicus briefs by HP and Dell focus on the permanent injunction. Those two companies argue that the injunction against Microsoft would severely interrupt their business and harm consumers.

Documents:

Notes: Asserted Claim 14 reads as follows: A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising: providing the mapped content to mapped content storage means; providing a menu of metacodes; compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and providing the document as the content of the document and the metacode map of the document.

Law Review Student Note Topics for 2009

Patent, ,

Dear Law Review Editors: Please send me a note (dcrouch@patentlyo.com) to let me know about patent law focused articles that you publish in your journal so that I can highlight them on Patently-O.

Student Note Topics: Here are some suggestions for patent law focused law review topics for 2009-10 that I would like to see for my own edification. Please send me a note if you choose one of these.

  • Injunctive Relief Pending Appeal: Proposing a clear jurisprudence for allowing stays of injunctive relief pending appeal in patent cases. See Microsoft v. i4i. Examine problems associated with the proposed stay-as-a-right found in earlier proposed patent legislation.
  • Using Patents Applications (and Invention Rights) as Collateral: Following Sky Technologies v. SAP AG, does a patent application work as a security interest? (can a security interest be perfected and foreclosed upon for rights to inventions that are not yet the subject of a patent application). [See final paragraph of my Sky Tech discussion]
  • Federal Circuit Timing: A statistical analysis of the timing of CAFC decisions (Including a comparison of the various judges and a discussion of how the various circuits reign-in slow judges).
  • Patent Term Extensions: A statistical analysis of patent term extensions granted by the PTO. (https://patentlyo.com/patent/2008/07/patently-o-bi-5.html).
  • International Patents: Cardiac Pacemaker (en Banc): Understanding the meaning of “component;” Here, I think that there should be special consideration for whether there is a need for a treaty arrangement to accommodate protection of inventions that easily operate cross-border.
  • Inequitable Conduct: The impact of Exergen Corp. v. Wal-Mart Stores, CVS, and SAAT, ___ F.3d ___, 2009 U.S. App. LEXIS 17311 (Fed. Cir. 2009). This paper would include a discussion of how procedural changes may often have more impact than do changes in the underlying substantive law. It may also discuss the tradition of appellate courts in dictating procedure apart from substance.
  • Inequitable Conduct allegations based on examiner interviews. See https://patentlyo.com/patent/2009/07/the-effectiveness-of-examiner-interviews.html.
  • Tell the story of the Pod-Ners case: https://patentlyo.com/patent/2009/07/mexican-yellow-bean-patent-finally-cooked.html.
  • Explaining the dying breed of Jepson claims: https://patentlyo.com/patent/2009/06/bits-and-bytes.html.
  • Obviousness as a Matter of Law: A recent petition to the Supreme Court challenged the procedure of allowing a lay jury (as opposed to a judge) to judge the ultimate question of whether a patent is obvious. See Medela AG v. Kinetic Concepts, Inc. (on petition for a writ of certiorari 2009). Several important papers could stem from this issue. Notably, there is a need for a more academic analysis of the historic circuit split (rather than the advocacy seen in the brief). One paper could work to resolve the conflict with the pre-federal circuit decisions. Another paper could focus on the best procedure for resolving mixed questions of fact and law.
  • Declaratory Judgment Jurisdiction: In 2007, the Supreme Court decided the Medimmune case in a way that makes it easier for potential patent infringers to file declaratory judgment lawsuits of non-infringement or invalidity. It would be interesting to see whether this has had an impact on patent filings.

Federal Circuit Vacates Ultracet Obviousness Decision

Patent

Ortho-McNeil Pharmaceutical, Inc. v. Teva Pharmaceuticals (Fed. Cir. 2009)(nonprecedential)

Ultracet is the brand name for Ortho's combination pill of the popular drug acetaminophen with light opioid tramadol. The current patent rights are found in Ortho's reissued patent RE 39,221. A prior Federal Circuit decision found that certain generic versions of the drug combination do not infringe the narrowed reissue patent. Link. In the present case involving Teva, the district court issued a summary judgment invalidating the asserted claims as obvious. On appeal, the Federal Circuit vacated and reversed holding that, although the elements of the claim are all "familiar" and were combined "according to known methods," the resulting combination "yield[s more than] predictable results."

A single tablet containing only tramadol and acetaminophen in a fixed dose ratio within the claimed range is not disclosed in the cited prior art. . . . The expert testified that [the Prior Art] Flick's broad statement that tramadol "often" displays synergistic affects when combined with other analgesics would not be enough give one of ordinary skill any expectations whether tramadol combined only with acetaminophen in a 1:5 to 1:19 ratio [as claimed] would exhibit the synergistic effects discovered by Ortho. . . . Ortho's proffered reading of Flick and the German references, as well as expert testimony regarding the understanding of one skilled in the art, raises material questions of fact as to whether a skilled artisan would have found the claimed combination of tramadol and acetaminophen to be obvious.

The majority opinion distinguished Claim 6, and agreed with the lower court that it was obvious. [Claims 1-5 were cancelled in the reissue, so claim 6 is the broadest independent claim.] The prior art taught a 1:10 ratio of tramadol to acetaminophen while the claim 6 required an about 1:5 ratio. In a prior decision, the Federal Circuit interpreted "about" to create a range "from 1:3.6 to 1:7.1." In its obviousness analysis, the court agreed that "the difference between 1:7.1 and 1:10 is so slight" and that the patentee provided no evidence of a "perceptible difference in synergy" between the different ratios. Therefore, that claim remains invalid.

Dissent: Judge Mayer wrote an eloquent dissent, which is partially reproduced below:

The claimed invention does nothing more than combine two well-known pain relievers—acetaminophen and tramadol—in a single tablet. Since the prior art clearly and unequivocally taught that these two analgesics could be combined for effective pain relief, the claimed invention is the epitome of obviousness. I therefore respectfully dissent.

Ortho-McNeil Pharmaceutical, Inc. ("Ortho") did not invent acetaminophen and it did not invent tramadol. Long before the critical date for U.S. Patent No. RE39,221 (the "RE221 patent"), acetaminophen had been combined with other pain relievers, including opioid pain medications such as tramadol. Such compositions include Tylenol® with Codeine, Tylox® (acetaminophen with oxycodone), and Vicodin® (acetaminophen with hydrocone bitartrate). Prior to the effective date of the RE221 patent, it was widely recognized that the combination of a peripherally-acting non-opioid analgesic, such as acetaminophen, and a centrally-acting opioid analgesic, such as tramadol, was an effective way to treat pain that did not respond to the use of non-opioid pain relievers alone.

In fact, a patent issued in 1972 specifically discloses the use of tramadol in combination drugs including phenacetin—which metabolizes into acetaminophen in the human body—to achieve synergistic effects. U.S. Patent No. 3,652,589 (the "Flick patent") teaches that acetaminophen can be combined with other analgesics including phenacetin, and instructs that such combinations are "proven to be of considerable therapeutic value." Example 23 of the Flick patent discloses a combination of phenacetin and acetaminophen in a ratio that falls squarely within that claimed in the RE221 patent. The only alleged difference between the tablet disclosed in the asserted claims of the RE221 patent and the tablet disclosed in example 23 is that the latter also contains two additional ingredients, pentobarbital sodium and ethoxy benzamide. Given that ethoxy benzamide was a known carcinogen and pentobarbital sodium was known to have antagonistic interactions with analgesics, it would have been obvious to remove these two drugs from Flick's formulation.

Indeed, Flick teaches that its four-agent tablet was merely an example of a possible combination tablet, stating that example 23 "illustrates the composition" of a combination tablet "without, however, limiting the same thereto." Flick also teaches that ingredients can be varied as desired. The patent states: "Of course, by variation and calculation of the ingredients tablets and other compositions are prepared containing lower or higher amounts of the essential active agents as desired." Nowhere does Flick state that pentobarbital sodium and ethoxy benzamide are required components in a tramadol/acetaminophen tablet. "If a person of ordinary skill can implement a predictable variation [of the prior art], § 103 likely bars its patentability." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, the removal of pentobarbital sodium and ethoxy benzamide was a predictable and simple variation on the Flick formulation….

In addition to the Flick patent, several other prior art references (the "German references") explicitly teach that tramadol can be combined with acetaminophen to provide effective pain relief. Most of these references discuss combining tramadol and acetaminophen without any additional ingredients. Although the German references involve the administration of two separate tablets and adhere to an individualized, rather than fixed, dosing regimen, these differences are insufficient to preclude a finding of obviousness….

Combining acetaminophen with tramadol was such an expected and logical step that one of Ortho's own research fellows, Fred Minn, M.D., Ph.D., testified that acetaminophen was the "obvious" drug to combine with tramadol and that he could not "think of anybody who didn't think of it." Minn further explained that it was a "natural phenomenon" for Ortho to combine tramadol with acetaminophen since Ortho had a long history "of combining [acetaminophen] with everything in the world."

The situation presented here parallels that presented in Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1480 (Fed. Cir. 1997). There we held that it would have been obvious to combine two drugs, the analgesic ibuprofen and the decongestant pseudoephedrine, in a single tablet since the drugs had been co-administered in the past. There, as here, it was manifestly obvious to combine two well-known drugs—which had previously been administered together—in a single tablet. See In re Diamond, 360 F.2d 214, 217-18 (C.C.P.A. 1966) (concluding that a combination of two therapeutic agents for inflammatory disease was obvious).

…

Simply put, there is nothing even arguably new about what Ortho claims to have invented. I would affirm.

Microsoft v. i4i: Relevance of the Pending Reexamination

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[This post continues the discussion of emergency stays pending appeal that was begun here]

i4i Ltd. v. Microsoft Corp. (Fed. Cir. 2009)

Pending Reexamination: Microsoft has submitted its motion for a stay of injunctive relief pending the outcome of its appeal to the Federal Circuit.  Oddly, the first sentence of Microsoft's introduction begins with a statement that the PTO "already had provisionally rejected upon reexamination as anticipated and obvious." By 'provisionally rejected' Microsoft means that a non-final office action has been mailed out in the ex parte reexamination that it requested in November 2008 (the litigation was filed in March 2007).

The opening is odd because of its irrelevance. The vast majority of third party requests for ex parte reexaminations are granted (over 95%) and then 'provisionally' rejected (83% of those). That usual course is simply the beginning of a typically long reexamination process. Even amongst reexaminations that received a non-final rejection – most resulted in a reexamination certificate that confirmed the patentability of at least one original claim. Of course, the final resolution of the reexamination is likely years away. (The figures are based on my own study of 5,000 ex parte reexamination file histories).

The opening is also odd because, to my knowledge, the Federal Circuit has never placed any weight on the fact that a co-pending reexamination has been provisionally rejected.

Finally, the opening is odd because it does not relate to Microsoft's arguments for a stay. In particular, the company does not argue for a stay pending outcome of the reexamination. Microsoft does argue anticipation and obviousness, but those arguments are based on the district court claim construction. As discussed on Patently-O extensively last month, claim construction in court has no direct legal link with the claim construction used at the patent office during reexamination. [Link]

The reexamination request by Microsoft focuses on two prior art references: U.S. Patent No. 6,101,512 ("DeRose") is apparently 102(e) prior art because it was filed prior to i4i's application, and i4i is unable to antedate the reference and a published description of the "Rita" SGML editor. Both of these references were considered by the jury in its analysis. In addition, Judge Davis reviewed the jury determination and found no cause for a JNOV. Interestingly, Microsoft never moved for summary judgment on any of its invalidity arguments based on these references.

To be clear, Microsoft's brief is still well written and presents compelling arguments. The only problem is that its first argument may lead the court astray. A ruling is expected prior to the October 10. 

Documents:

  • Microsoft Motion for Emergency Stay: Download 2009-1504 [Note – A complete brief was due August 25, for that brief, Microsoft was granted permission to file an 18,000 word brief instead of the normal 14,000 word brief]
  • Judge Davis Memorandum: Download 20090817i4imemo 
  • Documents from the Reexamination Download 90010347 

Notes:

  • An important aspect of this case from a policy perspective is that it the patent covers XML software whose function is to facilitate interoperability.  The patent enforcement is looking largely block (or at least control) that function.
  • As the role of reexaminations continue to rise as a litigation strategy, understanding the interplay and conflict between Federal Court decisions and USPTO decisions will become critical.  Important questions involve: waiver; preclusion; and deference.

Bits and Bytes No. 127: Patentability shall not be negatived by the manner in which the invention was made.

Bits and Bytes, Conference or CLE, En Banc, Obviousness, Patent, ,

Upcoming Conferences:

  • World Research Group, a Patently-O job board sponsor, will be holding a TechNet Patents Forum in New York on November 5-6. Patently-O readers will receive a $300 discount by using the promo code EAG476.

Federal Circuit En Banc:

  • On September 18, the Court of Appeals for the Federal Circuit will sit en banc to hear two non-patent cases.
  • Nebraska Public Power v. US:
    • The Nebraska case is one of several dozen Federal Claims actions against the US Government for breach of contract and takings for the Government’s failure to begin removing spent nuclear fuel.
    • Question: Does the mandamus order issued by the United States Court of Appeals for the District of Columbia Circuit in Northern States Power Co. v. United States Dep’t of Energy, 128 F.3d 754 (D.C. Cir. 1997) preclude the United States from pleading the “unavoidable delay” defense to the breach of contract claim pending in the United States Court of Federal Claims, and if so, does the order exceed the jurisdiction of the District of Columbia Circuit?
  • Henderson v. Dep’t of Veteran Affairs:
    • Equitable tolling of claims for veteran’s benefits
    • Question: Does the Supreme Court’s decision in Bowles v. Russell, 127 S. Ct. 2360 (2007), require or suggest that this court should overrule its decisions in Bailey v. West, 160 F.3d 1360 (Fed. Cir. 1998) (en banc), and Jaquay v. Principi, 304 F.3d 1276 (Fed. Cir. 2002) (en banc), holding that 38 U.S.C. § 7266 is subject to equitable tolling?.

Relevance of the “manner in which the invention was made:”

  • 35 U.S.C. 103(a) makes clear that “[p]atentability shall not be negatived by the manner in which the invention was made.” That final sentence of the paragraph was apparently intended to contrast the 1952 law from the Supreme Court’s loose statement in Cuno that a patentable invention must “reveal the flash of creative genius.” 314 U.S. 84 (1941).
  • Should this statement be interpreted to mean that the inventor’s actual process has no relevance to the questions of novelty and nonobviousness? Or, is there still room for a jury to consider the actual creativity and genius of the inventor and the process used. (This question was suggested by a comment on the blog).

Bits and Bytes No. 127: Patentability shall not be negatived by the manner in which the invention was made.

Bits and Bytes, Conference or CLE, En Banc, Obviousness, Patent, ,

Upcoming Conferences:

  • World Research Group, a Patently-O job board sponsor, will be holding a TechNet Patents Forum in New York on November 5-6. Patently-O readers will receive a $300 discount by using the promo code EAG476.

Federal Circuit En Banc:

  • On September 18, the Court of Appeals for the Federal Circuit will sit en banc to hear two non-patent cases.
  • Nebraska Public Power v. US:
    • The Nebraska case is one of several dozen Federal Claims actions against the US Government for breach of contract and takings for the Government’s failure to begin removing spent nuclear fuel.
    • Question: Does the mandamus order issued by the United States Court of Appeals for the District of Columbia Circuit in Northern States Power Co. v. United States Dep’t of Energy, 128 F.3d 754 (D.C. Cir. 1997) preclude the United States from pleading the “unavoidable delay” defense to the breach of contract claim pending in the United States Court of Federal Claims, and if so, does the order exceed the jurisdiction of the District of Columbia Circuit?
  • Henderson v. Dep’t of Veteran Affairs:
    • Equitable tolling of claims for veteran’s benefits
    • Question: Does the Supreme Court’s decision in Bowles v. Russell, 127 S. Ct. 2360 (2007), require or suggest that this court should overrule its decisions in Bailey v. West, 160 F.3d 1360 (Fed. Cir. 1998) (en banc), and Jaquay v. Principi, 304 F.3d 1276 (Fed. Cir. 2002) (en banc), holding that 38 U.S.C. § 7266 is subject to equitable tolling?.

Relevance of the “manner in which the invention was made:”

  • 35 U.S.C. 103(a) makes clear that “[p]atentability shall not be negatived by the manner in which the invention was made.” That final sentence of the paragraph was apparently intended to contrast the 1952 law from the Supreme Court’s loose statement in Cuno that a patentable invention must “reveal the flash of creative genius.” 314 U.S. 84 (1941).
  • Should this statement be interpreted to mean that the inventor’s actual process has no relevance to the questions of novelty and nonobviousness? Or, is there still room for a jury to consider the actual creativity and genius of the inventor and the process used. (This question was suggested by a comment on the blog).

Bits and Bytes No. 127: Patentability shall not be negatived by the manner in which the invention was made.

Bits and Bytes, Conference or CLE, En Banc, Obviousness, ,

Upcoming Conferences:

  • World Research Group, a Patently-O job board sponsor, will be holding a TechNet Patents Forum in New York on November 5-6. Patently-O readers will receive a $300 discount by using the promo code EAG476.

Federal Circuit En Banc:

  • On September 18, the Court of Appeals for the Federal Circuit will sit en banc to hear two non-patent cases.
  • Nebraska Public Power v. US:

    • The Nebraska case is one of several dozen Federal Claims actions against the US Government for breach of contract and takings for the Government’s failure to begin removing spent nuclear fuel.
    • Question: Does the mandamus order issued by the United States Court of Appeals for the District of Columbia Circuit in Northern States Power Co. v. United States Dep’t of Energy, 128 F.3d 754 (D.C. Cir. 1997) preclude the United States from pleading the “unavoidable delay” defense to the breach of contract claim pending in the United States Court of Federal Claims, and if so, does the order exceed the jurisdiction of the District of Columbia Circuit?
  • Henderson v. Dep’t of Veteran Affairs:

    • Equitable tolling of claims for veteran’s benefits
    • Question: Does the Supreme Court’s decision in Bowles v. Russell, 127 S. Ct. 2360 (2007), require or suggest that this court should overrule its decisions in Bailey v. West, 160 F.3d 1360 (Fed. Cir. 1998) (en banc), and Jaquay v. Principi, 304 F.3d 1276 (Fed. Cir. 2002) (en banc), holding that 38 U.S.C. § 7266 is subject to equitable tolling?.

Relevance of the “manner in which the invention was made:”

  • 35 U.S.C. 103(a) makes clear that “[p]atentability shall not be negatived by the manner in which the invention was made.” That final sentence of the paragraph was apparently intended to contrast the 1952 law from the Supreme Court’s loose statement in Cuno that a patentable invention must “reveal the flash of creative genius.” 314 U.S. 84 (1941).
  • Should this statement be interpreted to mean that the inventor’s actual process has no relevance to the questions of novelty and nonobviousness? Or, is there still room for a jury to consider the actual creativity and genius of the inventor and the process used. (This question was suggested by a comment on the blog).

Reissue Applications over Time

Academic Studies, Articles and Publications, Patent, Reissue

In 2008, the patent office reissued over 640 patents – breaking the prior record of 630 set in 1875. The historic numbers of reissued patents are shown in the first chart below grouped according to year of reissuance.

Although today's absolute numbers rival historic highs of the 19th century, today's relative number of reissued patents is close to the all-time low. The next chart shows the relative percentage of reissues as compared to utility patents granted (denominator based on a moving average of patents issued over of the prior ten years).

The final chart shows a time series of the average reissue pendency as measured from the reissue application filing date to the reissuance date. As is apparent, the pendency has been growing dramatically since 1997. 2009 looks to mark a second record – the first time that average prosecution pendency of reissues applications will be greater than five years.

Background: The reissue process is designed to allow a patent holder to correct a defective patent and is nestled between certificates of correction (minor errors) and reexamination. 35 U.S.C. §251 spells out particular defects that may be corrected in the process: Defect in the specification; Defect in the drawing; Error in claiming too much; or Error in claiming too little. In Medrad, the Federal Circuit broadly read these final two defects to "encompass any error that causes a patentee to claim more or less than he had a right to claim." Medrad, Inc. v. Tyco Healthcare Group LP, 466 F.3d 1047 (Fed. Cir. 2006). A major limit on the reissue process is that "[n]o reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent." Section 251, final paragraph. The limit on improper broadening of reissues is strict and applies when claims are "broader in any respect." Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298 (Fed. Cir. 2008).

Ariad v. Lilly: Federal Circuit Grants En Banc Request to Challenge Written Description Requirement

En Banc, Enablement, Patent, Patent Cases 2009, , ,

Ariad Pharmaceuticals, MIT, and Harvard v. Eli Lilly (Fed. Cir. 2009) (en banc)

The Federal Circuit has granted Ariad's motion for an en banc rehearing of its case. The motion boldly asks whether the written description requirement should be eliminated as a doctrine that is separate and distinct from enablement. The questions:

a. Whether 35 U.S.C. ? 112, paragraph 1, contains a written description requirement separate from an enablement requirement? and

b. If a separate written description requirement is set forth in the statute, what is the scope and purpose of the requirement?

Ariad's brief is due within 45 days, and Lilly's brief is then due within thirty days of that.

Briefs of amici curiae will be entertained, and any such amicus briefs may be filed without leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29. The United States is invited to submit an amicus brief.

Value of Amicus Briefs: In its recent Cardiac Pacemaker decision, the Federal Circuit expressly indicated that it was "appreciative of these [amicus] contributions." To make one particular point in the decision, the court emphasized that Cardiac's extreme position was "not even supported by the lone amicus brief we have received in favor of including method patents within Section 271(f)'s reach."

Although the written description requirement is primarily raised in pharmaceutical and biotechnology cases, it is an increasing aspect of software patent litigation. This decision could have a significant impact both on how patents are litigated and on how they are prosecuted. The inventors here discovered an important biochemical pathway and broadly claimed uses of that pathway.

Notes: