What Does it Take to Become a Patent Attorney?

Conference or CLE, Patent

The Practicing Law Institute is hosting a free audio webcast IP Career Series directed to young lawyers, law students, and people thinking about law school.  Their next audio briefing is titled “So You Want to Be a Patent Lawyer…," and will be held on April 18th from 1:00-2:00 p.m. EST.  John White (who helped me learn patent law) and Katharine Patterson will present topics that include:

  • What does it take to become a patent attorney?
  • What does it mean to say you’re a patent attorney?
  • What is life like as a patent attorney?

In answering the general questions, White & Patterson expect to delve into how to decide between a prosecution or a litigation career and other sub-topics such as: The distinction between patent agents and patent attorneys; Hot undergraduate technical degrees; Whether and when a PhD is important; Geographical areas; and how to find a firm that wants to hire you.

Registration info:

Antitrust: Court Should Not Consider Potential Patent Validity in Sherman Act Analysis

Patent

PatentlyOImage013In re Ciprofloxacin Hydrochloride Antitrust Litigation (E.D.N.Y. March 31, 2005)

Bayer produces Cipro® (ciprofloxacin hydrochloride) and is assignee of U.S. Patent No. 4,670,444, which claims the active ingredient and its generic equivalents.

Hoping to produce a generic version, Barr Labs filed an ANDA requesting permission to produce the drug before the expiration of the patent — arguing that the patent was invalid and unenforceable. (Paragraph IV certification). Bayer then sued Barr for infringement.  The two companies eventually settled.  Under the settlement agreement Bayer paid Barr $398 million and Barr agreed to amend its ANDA to a Paragraph III certification, which would permit it to market the drug only after the patent expires.  The settlement agreement included an “out” for Barr in the case that the patent was subsequently declared invalid or unenforceable.

In the wake of the settlement, a class of buyers sued Bayer and Barr for antitrust violations under the Sherman Act, arguing that the exclusion-payment scheme is a form of anti-competitive conduct falling under Section 1 of the Act using a rule of reason analysis.  The district court, however, sided with Bayer, finding that there was no impermissible anticompetitive effect because the agreement did not extend beyond the “zone of exclusion” of the patent. 

Here, plaintiffs have failed to demonstrate anticompetitive effects in the market for ciprofloxacin because, although the Agreements undoubtedly restrained competition, they did not do so beyond the scope of the claims of the ‘444 Patent. The ‘444 Patent allows a zone of exclusion within the bounds of its claims.

Further, the court held that the “potential invalidity of the claims” could not be used to diminish the protection that the patent offers against Sherman Act claims.

This result is compelled by the presumption of validity Congress accorded patents and the destabilizing effect on patent law that a contrary decision would work. Any readjustment of the competing interests affected by exclusion payments is a matter better addressed by Congress than the courts.

Because the plaintiffs were unable to prove the first element in the rule of reason analysis (anticompetitive effect), defendants cannot be liable for the alleged antitrust violations.

Calvert Crary, a litigation analyst who writes the highly informative LitigationNotes sees this decision as falling in line with the March 8, 2005 11th Circuit decision in Schering-Plough v. FTC, but predicts that these decisions may result in a complete undermining of Hatch-Waxman.

[T]hese decisions, if broadly adopted, will decimate the statutory mechanisms of the Hatch-Waxman Act that remove barriers to price competition arising from invalid or inapplicable drug patents. (From Crary’s report on Kos Pharma v. Barr Labs).

< ?xml:namespace prefix ="" o />Mark Lemley is a law professor at Stanford, but he has also been quite involved with a number of patent appeals over the past several years.  In an e-mail, Professor Lemley argues that the Cipro court is “entirely wrong-headed” in this case.  In his view, this decision essentially creates a rule that allows obvious cartels regardless of the strength of the patent.

[The court] cites the 6th Circuit and [Schering-Plough v. FTC] for the proposition that we don’t want to enquire into patent validity in an antitrust case.  That’s true enough.  But those courts found the exclusion payment illegal without having to inquire into patent validity.  By rejecting the per se approach, and also rejecting any inquiry into the merits, the court has essentially created a rule of per se legality for a pretty obvious cartel.  No matter how weak the patent claim is, or how obviously the payment is a means of artificially maintaining a monopoly, under the court’s reasoning it will be permissible.  This is an abdication of antitrust responsibility.

In a recent paper, Lemley, along with Professors Herbert Hovenkamp and Mark Janis argue that “exclusion payments that exceed litigation costs should be deemed illegal per se.”  According to their analysis, there is “no legitimate reason for such payments, and the most likely reason . . . is anticompetitive.”  The three professors book, entitled IP and Antitrust: An Analysis of Antitrust Principles Applied to Intellectual Property Law is available at Amazon.com.

 

 

Links:

Federal Circuit to Decide Patentability of Crustless Sandwich

Patent

PatentlyOImage012On April 6 at 2:00 pm, Judges Clevenger, Gajarsa & Prost will hear in re Kretchman (Case No. 04–1448) that involves peanut butter and jelly sandwich technology.  Smuckers has already received one patent on its highly profitable “Uncrustables,” and is now appealing a patent office rejection of a second, broader set of claims. Adam Jaffe was quoted in today’s Wall Street Journal poo-pooing the effort.

"People think it is amusing to talk about patents on a peanut butter and jelly sandwich, but it is a patent that never should have been issued," laments Adam Jaffe, professor of economics at Brandeis University in Waltham, Mass., and a co-author of a book on the U.S. patent system. "This is a technology — if you can call it that — that has been around in many forms for many years."

I have not examined the proposed claims or the prior art, but it seems that the comments by Jaffe & his co-author Josh Lerner appear to be directed toward whether food packaging should be patentable subject matter.

Link:

(Thanks to TechLawAdvisor for the tip.)

Teva’s Request for Rehearing of Declaratory Judgment Action is Denied

Patent, Patent Cases 2005,

Img285Teva Pharmaceuticals v. Pfizer (Fed. Cir. 2005) (On petition for rehearing).

In January 2005, the Court of Appeals for the Federal Circuit (CAFC) issued a controversial decision in the case of Teva Pharm. v. Pfizer.  Teva, a manufacturer of generic drugs had filed an Abbreviated New Drug Application (ANDA), seeking approval from the FDA to market a generic version of sertraline hydrochloride — a drug sold by Pfizer under the Zoloft® brand.  Under the provisions of the Hatch-Waxman Act, Pfizer had 45-days to sue Teva for patent infringement based on Teva’s ANDA filings.  However, Pfizer did not sue.  Teva then brought a declaratory judgment action against Pfizer, seeking a determination that its generic drug did not infringe Pfizer’s patent. 

The question on appeal was whether the Teva’s apprehension of suit was sufficient to create jurisdiction for its declaratory judgment action.  On appeal, the CAFC determined that Pfizer’s Orange Book listing along with Teva’s ANDA were insufficient to create an actual controversy

The listing of a patent in the Orange Book by an NDA filer is the result of a statutory requirement. Without more, Pfizer’s compliance with the Hatch-Waxman listing requirement should not be construed as a blanket threat to potential infringers as far as Pfizer’s patent enforcement intentions are concerned. . . . More is required for an actual controversy than the existence of an adversely held patent. . . . We are not prepared to hold that listing a patent in the Orange Book evinces an intent to sue any ANDA filer who submits a paragraph IV certification with respect to the patent.

As such, the CAFC affirmed the District Court’s dismissal of Teva’s action.  Now, Teva has requested an en-banc rehearing and amicus curiae briefs were field by the FTC, the Generic Pharmaceutical Association, Ivax Pharmaceuticals and Senators Edward Kennedy, John McCain, and Charles Schumer.  However, that request has been denied.

In a precedential order, the CAFC denied Teva’s petition for a rehearing — noting that “a poll was requested, taken, and failed.”

However Judges Dyk and Gajarsa both filed dissenting opinions explaining their reasons for hearing the case.

Gajarsa Dissent: Judge Gajarsa, who was a member of the original Teva panel, argues that the ANDA situation is quite different from other patent infringement situations and requires a separate form of analysis.

The contextual differences between the second ANDA filer and the typical patent infringement case make the reasonable apprehension test inappropriate for this action. By guiding the patentee’s conduct in the typical case, the reasonable apprehension analysis allows the patentee to avoid litigation. Identifying a justiciable controversy in terms of a threat of infringement litigation, the doctrine establishes the circumstances in which the uncertainty of legal rights materially harm a potential infringer in the marketplace. The injury facing Teva in this case is different in kind, but no less actionable.

Gajarsa goes on to say that the panel decision’s Constitutional analysis (Article III limitations) “forestalls legislative correction” of the decision.

Dyk Dissent: Judge Dyke provides a full Article III analysis and concludes that the Teva panel was wrong in determining that a reasonable apprehension or imminent suit was required for declaratory judgment jurisdiction.

There are relatively few Supreme Court cases dealing with Article III and declaratory judgments, but the few cases that do exist provide no support for a reasonable apprehension of imminent suit requirement.

Teva and its cohort of supporters are expected to appeal petition for certiorari.

The Senators’ Brief: Senators Edward Kennedy, John McCain and Charles Schumer filed an amicus brief supporting the petition for rehearing. The brief made the point that there was a Congressional intent surrounding the passage of the Hatch-Waxman Act to expand subject matter jurisdiction over declaratory judgment actions by generic drug companies “to the constitutional limit” and that the panel opinion in Teva v. Pfizer frustrates the purposes of the amendments. (Thanks to Theodore Whitehouse at Willkie Farr for providing a copy of the Senators’ brief)

Links:

Patently-O Patent Prosecution TipCast No. 1

Patent, Patent Prosecution

PatentlyOImage010The first Patently-O Patent Prosecution TipCast has just been released.  The TipCast series is an audio lecture series that is intended to provide helpful hints and information to patent attorneys and agents.  TipCast No. 1 provides a tip relating to revival of abandoned applications.

Click to Download and Listen to TipCast No. 1. (2.9 MB, mp3 format, 3 minutes audio).

Show-notes:

Thanks goes to Evan Brown and the rethink(ip) group for their inspiration and encouragement.  For those interested in the creation of the TipCast — I used my laptop computer hooked to a Logitech USB microphone ($14) and a software package titled Media Wizard (CDH Productions, $50) to record my voice.  I also used Media Wizard to mix-in the music.  Although I have some radio experience from my days as an announcer at WPRB Princeton, this was my first digital recording.

A client who is also a Patently-O reader sent me a note this morning that the recording was very nicely done, but that it seems like a lot of work on my part — She asks, “why the audio form rather than visual?”

My Response: There is new technology coming along that is going to make the audio format very easy to use — although right now only the real techno-geeks and audiophiles are involved. I have to admit that I still know very little about this, but there is technology available to allow your hand-held device, such as your iPod or even your cell phone, to subscribe to an audio feed. Each time the feed is updated, the device would download the mp3 file and allow you to listen to the newest update. With a touch of a button, you could listen while on your morning commute or while working out at the gym.

 Thank you for all the comments and complements on the TipCast.  Even my wife was very nice this morning to mention that I certainly have the face for Podcasts. . .

Do not copy this article!

Patent

Today’s "blog-flog" in the world of intellectual property concerns the notion of copyright.  Writing for Between Lawyers, the newest Corante weblog, trademark attorney Marty Schwimmer discusses a recent spate of case-summary copying.  For the most part, I agree with Marty’s conclusions:

Forget about copyright. Think of it in terms of manners. Do not copy word for word without credit. Show respect for the small things of others.

You should note, that I just copied part of Marty’s post — However, I used proper copying etiquette by letting the reader know the origin of the quote.  Over at the TTABlog, John Welch talks about his recent experiences:

The TTABlog strives to provide well-written, readily understandable case summaries and commentary. It takes a considerable amount of work to produce that kind of writing, and it is quite upsetting to find someone else using that work product without permission, or even attribution. Just such an incident occurred today.

Kevin Heller, the Tech Law Advisor, gets into the fray as well, as does Bill Heinze, who comments that he provides links to all of his sources.

I have seen entire posts from Patently-O copied and posted in other blogs, on robot-built websites, in other languages, on newsgroups and in other locales as well.  I have even given a few people, such as the editors of IPFrontLine, the freedom to copy entire posts for their own use.  The copycat activity is often good publicity for me, the blog, and my firm (MBHB).  However, if there is no source identifier, then there is no publicity value. 

I have received nice notes from half a dozen law school professors and even a few high-school teachers who asked to copy portions of the blog for their courses.  In another instance, I talked with an attorney who wanted to use information from the blog in a bar association presentation.  Each time I have said yes.  The best part is that, on several occasions, this initial contact was the beginning of a growing friendship — just another example of how copyright is a public good. (I.e., this is an example of how copyright is good for the public.)

In one particularly bad case of copying, I saw a nicely written IP blog post reviewing a new case (not from Patently-O).  A few weeks later, I received a mailer from a major law firm reviewing the same case.  (No, the particularly bad element is not that it took the major firm several weeks to write a case review.)  The particularly bad element is that the major law firm’s case review was almost an exact copy of the the blog post. The greatest difference being that the name of the blogger as author had been replaced with the name of an attorney at the major firm.  We IP bloggers are too polite to name names, but the copycats should be on their toes.

An old friend e-mailed me about this post — his comments are valid:

Your note about blog plagiarism is about the same old stuff of simple plagiarism in any form. "Copying" is too neutral a word. . . . This is serious, serious stuff.

The truth is that if you are a professional and you plagairize, it will come back to haunt you one day.

Here is my copyright policy: Anyone should feel free to copy a short snippets from the blog, so long as you attribute the material source. Shoot me an e-mail if you want to copy an entire post or a series of posts.  You can print out individual posts and send them to a client — just don’t white-out my name or replace my name with your own. 

Kevin Heller e-mailed to ask why I don’t use the creative commons license?  The truth is that I love the CC licensing system — my problem is that I like to get an e-mail or telephone call from the person/organization that wants to use the material.

Welcome to April!

Inventors, Patent

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A Mr. G. Aharonian holds the patent on a holiday boardgame that includes the fine American holidays of April Fool’s Day, Tax Day and Arbor Day. (U.S. Patent No. 4,915,391).

Abstract: A board game whose gameboard design is composed of an endless path of purchasable blocks representing the major national American holidays. . .

I wonder if the inventor has any relation to the famous G. Aharonian?

In other April First news, the IPO, as expected, has called for “more patents and fewer courts.”  From the press release:

Today IPO announced its 2005 legislative program. Key objectives are to quadruple the number of U.S. patents granted each year and to automatically enforce all patents without costly litigation. To this end, IPO called for eliminating the jobs of the 5,000 patent examiners at the USPTO and abolishing all PatentlyOImage009federal courts that have offended IPO members by denying or refusing to enforce patents. Money saved by cutting these unnecessary government jobs can be used to create a federal program to subsidize businesses known at “patent trolls,” in order to increase patent licensing income and strengthen the U.S. economy.  (IPO April 1 Special Report).

Just to be clear — this press release is a joke.

Panel Prevents Piling-on of the Period of Patent Protection by Patenting Precursor Product

Patent, Patent Cases 2005

PatentlyOImage007In re Fujimura (Fed. Cir. 2005) (NONPRECEDENTIAL).

Fujimura’s earlier patent that covers a sintered permanent magnet had expired, but the applicant hoped to obtain a patent on a permanent magnet alloy, a precursor to the sintered permanent magnet.  During prosecution, the examiner rejected the claims of the application on the basis of obviousness-type double patenting.  This rejection was affirmed by the BPAI (Board). 

On appeal, the Court of Appeals for the Federal Circuit affirmed, finding that the applicant was impermissibly attempting to extend patent protection.

Reduced to its essentials, this is a case in which the patentees have attempted to extend the period of patent protection for their invention by claiming a composition that is a direct precursor of the product for which their patent protection has expired. In that setting, the examiner and the Board properly found that the appellants’ new claims are obvious in light of the expired ones, and we therefore affirm.

Affirmed.

CAFC: No Disclaimer of Claim Scope When Patentee Makes Contradictory Statements.

Patent, Patent Cases 2005

PatentlyOImage005Outlast Technologies v. Frisby Technologies (Fed. Cir. 2005)(Nonprecedential).

Most of you arrived at this post looking for information on patents on Frisbee discs and disc golf.  Unfortunately this is not a Frisbee case.  

However, it does involve temperature-resistant, phase changing materials that resist temperature change by changing between their solid and liquid state. (Remember latent heat from physics 101).

After claim construction, the district court awarded summary judgment of noninfringement to the defendant Frisby.  Specifically, the court found that the patentee had, during prosecution, clearly disclaimed certain ‘impregnated materials’ from the claim scope.  On Rule 54(b) certified appeal, Outlast argued for an alternative claim construction.

The Appellate Panel found that the district court had erred by finding disclaimer.  The rule, of course, is that a disclaimer must be unequivocal and unambiguous.  In this case, the patentee made one statement that is easily read as a disclaimer, but also made another statement that tends to contradict a disclaimer. 

The Panel found that such contradictory statements are ambiguous of the patentee’s desire to disclaim the subject matter, and thus cannot serve as such a disclaimer.

These seemingly contradictory statements do not unequivocally or unambiguously disclaim articles in which the microcapsules are impregnated within the interstices of the substrate. On the contrary, such contradictory statements are indicative of ambiguity.

The court remanded for a determination of infringement under its newly constructed claim construction using an ordinary meaning approach.

March 2005 Report on New Academic Research

Patent, , , ,

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Each month I post a note discussing new research from the academic side of patent law.  This March edition includes three great articles that relate to either legislative changes (prior use statute, post grant opposition) or upcoming court decisions (Phillips claim construction case).  Feel free to e-mail suggestions for April’s edition.

  1. Tom Fairhall and Paul Churilla, Prior Use of Trade Secrets and the Intersection with Patent Law, 14 Fed. Cir. Bar J. 455.  Fairhall and Churilla present a timely article on prior use rights that notes how the current prior use statute (35 USC 273) does not provide the scope necessary to truly protect a prior user’s expectations or investments.  The article is quite timely because FTC proposals to expand the statutory prior use rights is gaining some teeth in the patent community and on the Hill.
  2. Mark Lemley, The Changing Meaning of Patent Claim Terms, available at SSRN.  Professor Lemley’s article is also timely — he discusses at what particular point in time should the meaning of claim terms be fixed.  This is important because the ordinary meaning of terms in the English language change over time.  The major temporal candidates are (i) at the time of the invention (currently used for novelty and nonobviousness); (ii) at the time the application was filed (currently used for enablement or written description); (iii) a the time the patent issues (currently used for means-plus-function claim construction); and (iv) at the time of the infringement (at least some times used to determine infringement).  Lemley agrees that each candidate has a sound legal foundation.  However, he argues that the best approach moving forward is to fix the meaning at the time the patent application is first filed.
  3. Jay Kesan and Andres Gallo, Why ‘Bad’ Patents Survive in the Market, available at SSRN. The professors provide a game theory model to show how would-be invalid patents can survive and be valuable in the marketplace.  Essentially, the transaction costs make it difficult to mount an effective challenge to improperly granted patents.  Their work will serve as the theoretical basis any proposed post-grant opposition procedures.  Specifically, the authors “conclude that a low-cost, post-grant opposition process based primarily on written submissions within a limited estoppel effect . . . will serve as an effective instrument for improving the quality of patents that are issued and enforced.”

Metabolite Labs versus LabCorp — Request for Certiorari.

Patent, Patent Cases 2005,

The Metabolite Labs case is procedurally interesting because the Supreme Court appears to be focused in a question that is quite different from the one raised by Metabolite in its petition for certiorari.  From a practical standpoint, this case has the potential to once again shatter our current notion of patentable subject matter.

In February, the Court invited the Solicitor General to file a brief expressing the views of the United States on the question of whether a medical diagnosis method patent is invalid as non-patentable subject matter under Diamond v. Diehr, 450 U.S. 175, 185 (1981) (holding that one cannot patent laws of nature, natural phenomena, and abstract ideas).  The patent at issue claims a method of detecting a vitamin deficiency in a human body by using a device to determine whether there is an elevated amino acid level.

The court expressed its interest in the patentability question at a point that was too late for amicus to file briefs on the issue, however, some parties have been lobbying the office of the Solicitor General to submit a brief in their favor. The Public Patent Foundation, for instance, has issued a statement outlining its lobbying efforts asking the government to support the proposition that the method is unpatentable and invalid. Of course, to my knowledge, PubPat has never been publicly in favor of the validity of any patent. 

In the opinion below, the CAFC (Rader, J.) affirmed jury verdict of indirect infringement and breach of contract, and affirmed the district court’s award of over $8 million in damages to Metabolite (including damages for willfulness).  The dissent (Schall, J.) argued that claim interpretation had been mishandled. Metabolite Laboratories, Inc. v. Laboratory Corp. of America Holdings, dba as LabCorp., 370 F.3d 1354 (Fed. Cir. 2004) (read my summary).  The question that the High Court is now considering does not appear to have even been addressed by the CAFC decision.  The Court’s docket shows that the case has already been distributed for conference five times since January 1, 2005.  

The SG is expected to file a brief in the case.  However, even with SG support, the court is still unlikely to take this one up.

For general information, Professor Eileen Kane’s article on the patentability of Genes and DNA provides an excellent analysis of issues surrounding patentable subject matter. Kane argues that the genetic code should be characterized as a law of nature. Available at SSRN, 71 Tennessee Law Review 707.

 

Court Agrees that Sony PlayStation Infringes Immersion Patent

Patent

Immersion Picture

Brandon Rash at the EEJD blog provides info on the most recent win for Immersion technology.  Sony has been ordered by the Court to pay $90 million and halt to PlayStation sales in the United States for violating Immersion’s patents on “tactiley responsive” technology. Today’s ruling comes in the wake of last September’s jury verdict of infringement.  Microsoft was a named defendant, but settled prior to trial.

The permanent injunction is stayed pending appeal to the Federal Circuit. In her decision to issue the stay, Judge Claudia Wilken of the Northern District of California determined that four factors weighed in Sony’s favor: (i) the strength of Sony’s showing that it is likely to succeed on the merits of its appeal, (ii) whether Sony will be irreparably injured absent a stay, (iii) whether the stay will substantially injure Immersion, and (iv) where the public interest lies. Following Standard Havens Products, 897 F.2d 511, 512 (Fed. Cir. 1990).  “The Court finds that on balance, these factors weigh in favor of granting a stay.”

Here are the case documents:

CAFC: Indefiniteness Issues Overcome by Defining Terms According to Goal of the Invention

Patent, Patent Cases 2005

Artificial Hip

Howmedica Osteonics v. Tranquil Prospects (Fed. Cir. 2005).

by Dennis Crouch

In a dispute over a patented artificial hip prosthetic, a Federal Court in Indiana determined that Tranquil’s patent claims were invalid as indefinite under 35 U.S.C. Section 112, paragraph 2.  Specifically, the court found that the term “transverse sectional dimension” was indefinite to one skilled in the art. 

The second paragraph of Section 112 provides that the “specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”  This section has been read to create a invalidity defense based on a lack of definiteness of the patent claims.  Generally, a claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in the art could determine whether a particular [product or method] infringes or not.  Geneve Pharms, 349 F.3d 1373.

On appeal, the Court of Appeals for the Federal Circuit relied upon the purposes of the invention to determine that the one of ordinary skill would readily ascertain that the “transverse sectional dimension” is definite and calls for a two-dimensional measurement.

Transverse Hip Section

One of ordinary skill in this art would recognize that a one-dimensional linear measurement of the “transverse sectional dimensions” would defeat the purpose of the invention to provide a snug fit of the prosthesis in the medullary canal. A two-dimensional measurement, on the other hand, provides the snug fit that is the centerpiece of this invention.

The court went on to vacate the district court’s summary judgments on both indefiniteness and noninfringement. The case was remanded for further proceedings. 

Download Decision: Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd. (04-1302).pdf

Stage Set For Hearing on Experimental Use Safe Harbor Statute at Supreme Court

Patent

Party and amicus briefs have been filed and the stage is now set for the April 20 hearing of Merck KGaA v. Integra LifeSciences at the Supreme Court. 

Merck v. Integra is slated to determine the scope of 35 U.S.C. §271(e)(1), the safe harbor statute that permits a drug manufacturer to perform potentially infringing experiments needed to obtain FDA approval without incurring liability for patent infringement.  A major question will be how attenuated an experiment may be and still fall within the protection from infringement liability offered by the statute.

I have summarized the various party and amicus briefs here.  The following links provide PDF copies of the briefs.

In Support of Merck:

In Support of Integra:

In Support of Neither Party:

Federal Circuit Confirms that the Patent & Trademark Office is Not Bound to the Paris Convention

Patent, Patent Cases 2005

PatentlyO067

In re Dr. Matthias Rath (Fed. Cir. 2005).

In this trademark case, Dr. Rath appealed from a decision by the U.S. Patent & Trademark Office’s Trademark Trial and Appeal Board (TTAB) that refused to register the marks “DR. RATH” and “RATH.”

Dr. Rath is German and holds a German trademark registration for the marks.  However, the U.S. Examiner refused to register the marks after finding them to be “primarily merely surnames.”  Mere surnames are not registrable under the Lanham Act (Section 1052(e)(4)).

On appeal, Dr. Rath argued that the “primarily merely a surname” rule conflicts with the United States’ obligations under the Paris Convention.  The Federal Circuit dismissed his argument because, although the U.S. is a signatory to the Paris Convention, the Paris Convention is not ‘self executing’ and thus has no direct effect on U.S. law.

Further, the court held that the requirements under Section 44(e) of the Lanham Act cannot be read to require the U.S. to register marks with foreign priority if those marks fail to meet U.S. eligibility requirements.

In concurrence, Judge Bryson argued that there is no reason to decide whether the Lanham Act trumps the Paris Convention because in this case the two are in accord.

Link:

 

 

CAFC: Licensee must hold all substantial rights under a patent to bring an infringement suit.

Patent, Patent Cases 2005,

Aspex Eyewear v. E’lite Optik (Fed Cir. 2005) (04-1292)(NON PRECEDENTIAL).   PatentlyOImage001

by Joseph Herndon

In general, a licensee is not entitled to bring suit in its own name as a patentee, unless the licensee holds all substantial rights under the patent.

Aspex appealed the decision of the District Court stating that Aspex lacked standing to sue as an exclusive licensee for infringement of two patents (one naming Richard Chao as the sole inventor and the second being a CIP of the first with brothers David and Richard Chao as the named inventors). 

Aspex entered into a written license agreement with Chic that granted Aspex an exclusive license in the U.S. to any rights Chic had acquired from third parties relating to patents involving magnetic eyewear. Later, Richard Chao granted Chic an exclusive license for two patents.

In September 2000, Aspex sued E’Lite for infringement of the two patents. Chic was not named as a party to the suit. The district court concluded that Aspex lacked standing to sue because Chic did not convey any future-acquired patent rights to Aspex, and thus Aspex was not an exclusive licensee of the asserted patents.

On appeal, the Federal Circuit held that the plain language of the Chic-Aspex Agreement makes it clear that the agreement relates only to patents then-owned by Chic, not future-acquired ones. The court contended that if the parties had intended to include future-acquired patents, it more likely would have stated “is and/or will become the owner,” within the agreement. The court also looked to use of the past tense “LICENSED” in term “LICENSED PATENTS” to suggest which patents were at issue.

The court further iterated that even though the license covered patents “relating to magnetic eyewear for eyeglasses,” a provision which certainly covers the two patents at issue, the specific grant provisions control the scope of the license agreement—not the general subject matter of the license. Thus, the court held Chic did not grant an exclusive license to either of the patents to Aspex, and as such, Aspex lacks standing to sue.

Joseph Herndon is a law clerk and at MBHB and is a registered patent agent. Joe has a stellar background in electrical engineering and will graduate from law school this year. herndon@mbhb.com.

Patents, String Theory, Anti-Aging, and the Warp Drive

Inventors, Patent

PatentlyO065

I was discussing string theory with a buddy on the way to work this morning.  It turns out that the practical applications of string theory have not yet been fully realized — at least as far as patented technology is concerned.  Only eight issued patents and eight published applications refer to string theory in any way.  Of these, the two most interesting include Jerry Jacobson’s patented method for ameliorating the aging process by using electro-magnetic energy.  (U.S. Patent No. 6,004,257).

Although not yet issued, UK scientists Andrew Worsley and Peter Twist have applied for their patent on specifications for warp drive technology based on the theoretical underpinnings of both general relativity and string theory. (U.S. Pub. No. 2003–0114313). The Worsley-Twist warp drive does not depend upon traditional emissions of matter to create thrust.  Rather, the drive creates a change in the curvature of the space-time continuum — thus allowing travel by warping space-time.  Worsley & Twist recently responded to a rejection under Section 101 of the patent act.  The patent examiner raised concerns over the possibility of the claimed terms “graviton” and “warp drive.”  In their response, the applicants pointed out that the warp drive does not necessarily require superluminal (faster than light) travel.

PatentlyO066

 

Monsanto Asks The Federal Circuit To Examine The Utility Requirement for Patenting Biotech Inventions

Patent, Patent Cases 2005

Patentlyo064_1In re Fisher (Fed. Cir. 2005)(04–1465) (Oral Arguments Scheduled for May 3, 2005).

Fisher could have an even greater impact to the field biotechnology than the upcoming Supreme Court case of Merck KGaA v. Integra.  After being denied a patent by the USPTO’s Board of Patent Appeals & Interferences (BPAI), Monsanto has appealed to the Court of Appeals for the Federal Circuit (CAFC). 

Monsanto’s argument is that the USPTO, without any statutory authority, is applying a heightened standard of utility to biotechnology inventions — specifically their argument is directed to the standard of usefulness under 35 U.S.C. Section 101 applied to nucleotide sequences known as expressed sequence tags (EST’s).  [EST definition]. On appeal, Monsanto has asked the CAFC to consider whether the BPAI’s ruling that EST’s corresponding to genes of unknown function are incapable of satisfying the utility requirement, even though the EST’s are quite useful as research tools. 

Monsanto’s appeal is a blunt attack against USPTO patent prosecution procedures and will impact a large number of biotech applications, past, present and future.  Hal Wegner has noted Monsanto may even be hoping to lose the appeal and thereby firmly establish a standard of utility that would keep others from obtaining patents in the area.

The briefs have all been filed, and oral arguments are scheduled for May 3, 2005. 

I have uploaded the briefs filed in the case.

The BPAI Decision is Available here: File Attachment: Ex Parte Fisher.pdf (209 KB)

Thanks to Paula Davis at Eli Lilly and Stephan Walsh at the USPTO for providing the PDF versions.

University of Texas files patent infringement suit against cell phone manufacturers

Patent, Patent Cases 2005

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Regents of UT v. BenQ (N.D. Tex.) (05–CV-181).

The University of Texas has filed suit against fourteen electronics manufacturers for infringement of a patented method that allows text messaging through a standard telephone keypad.  The patent was issued to Professor George Kondraske in 1987 and covers a form of “predictive text.”  (U.S. Patent No. 4,674,112).  According to Katherine Mangan in the Chronicle of Higher Education, Kondraske teaches electrical and biomedical engineering at the system’s Arlington campus.

The lawsuit was filed this month in U.S. District Court in Austin, and charges Kyocera, the Sanyo North America, Sony Ericsson Mobile Communications, NEC USA, and others of infringement.  Judge Sam Sparks has been assigned the case.

According to the U.S. Patent Office, the University of Texas system received 101 patents in 2004 — ranking fourth behind the University of California, CIT, and MIT.

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