Patently-O Bits and Bytes

Bits and Bytes, Patent
  • Thank you Sponsors:
  • Speaking of the Job-Board. There are several new listings:
    • Leviton Manufacturing (Long Island, New York) needs to hire a patent agent to manage both US and Foreign prosecution.
    • The International IP firm of Ladas and Parry seeks EE patent prosecutors in Los Angeles as well as IP attorneys with their own books of business.
    • Pfizer seeks an experienced patent attorney to join its small molecule therapeutics team in Groton, Connecticut.
    • In Washington, D.C., the firm of Smith, Grambrell & Russell, LLP is seeking an experienced patent attorney with a mechanical engineering background.
  • Speaking of MBHB.
    • I'm proud to announce that Team USA is champion the 2010 Patent Cup Regatta held this year off the island of Marstrand in Sweden. Team USA included three MBHB partners – Leif Sigmond (captain), Marcus Thymian, and Michael Gannon – along with Derek Minihane of Cochlear. The US team beat-out competing teams from Canada, Brazil, France, Germany, UK, and the EPO. [Link]
  • Patenting Methods of Paying for Patents
    • WhitServe LLC v. Benesch Friedlander Coplan & Aranoff LLP et al., 8-10-cv-01639 (D. Md. 2010). [Zura]

Patently-O Bits and Bytes

Bits and Bytes, Patent
  • Thank you Sponsors:
  • Speaking of the Job-Board. There are several new listings:
    • Leviton Manufacturing (Long Island, New York) needs to hire a patent agent to manage both US and Foreign prosecution.
    • The International IP firm of Ladas and Parry seeks EE patent prosecutors in Los Angeles as well as IP attorneys with their own books of business.
    • Pfizer seeks an experienced patent attorney to join its small molecule therapeutics team in Groton, Connecticut.
    • In Washington, D.C., the firm of Smith, Grambrell & Russell, LLP is seeking an experienced patent attorney with a mechanical engineering background.
  • Speaking of MBHB.
    • I'm proud to announce that Team USA is champion the 2010 Patent Cup Regatta held this year off the island of Marstrand in Sweden. Team USA included three MBHB partners – Leif Sigmond (captain), Marcus Thymian, and Michael Gannon – along with Derek Minihane of Cochlear. The US team beat-out competing teams from Canada, Brazil, France, Germany, UK, and the EPO. [Link]
  • Patenting Methods of Paying for Patents
    • WhitServe LLC v. Benesch Friedlander Coplan & Aranoff LLP et al., 8-10-cv-01639 (D. Md. 2010). [Zura]

Patently-O Bits and Bytes No. 138: New Job Openings

Bits and Bytes, Patent,

Centocor v. Abbott: In June 2009, Centocor won a $1.67 billion judgment against Abbott based on the jury's findings that Abbott's arthritis treatment Humira infringes Centocor's U.S. Patent No. 7,070,775. In a post-trial verdict, Judge Ward has rejected Abbott's defenses of inequitable conduct and laches. An appeal to the Federal Circuit will follow. [MCSmith][Patently-O Discussion of the Verdict].

Medela v. Kinetic Concepts: The Supreme Court has rejected Medela's petition for certiorari. The petition challenged the notion that a jury should decide the legal question of obviousness. [Supreme Court Docket]

Patently-O Bits and Bytes No. 137

Bits and Bytes
  • Pirates: The EU Parliament now has two members from the Swedish Pirate Party. The Pirates platform is based on weakening copyright laws and eliminating patents. The first line of the party website reads: “The Pirate Party wants to fundamentally reform copyright law, get rid of the patent system, and ensure that citizens’ rights to privacy are respected.” [LINK]
  • Billion Dollar Trade Secret Trial: The top semiconductor manufacturer in Taiwan (TSMC) sued the top mainland China semiconductor manufacturer (SMIC) for stealing its trade secrets (in state court in California). The jury sided with the plaintiff, although the damage calculation is still underway. [LINK]
  • JOAO Control & Monitoring v. Playboy & Penthouse: The JOAO patent holding company has sued a dozen online pornography providers alleging patent infringement. The asserted patent claims an apparatus for transmitting audio and video information from a vehicle to a website. The inventor Ray Joao is also a patent attorney and is represented by Andrew Spangler.
  • Who Owns Patents being Reexamined: The folks at Westerman Hattori have been writing about reexaminations. In a recent post, they list the top-ten patentees whose patents are undergoing reexaminations (based on reexaminations granted since January 2009). The top five include Rambus, LGE, Weatherford/Lamb, Mondis Tech, and ADC Tech. [LINK]

Patently-O Bits and Bytes No. 137

Bits and Bytes, Patent
  • Pirates: The EU Parliament now has two members from the Swedish Pirate Party. The Pirates platform is based on weakening copyright laws and eliminating patents. The first line of the party website reads: “The Pirate Party wants to fundamentally reform copyright law, get rid of the patent system, and ensure that citizens’ rights to privacy are respected.” [LINK]
  • Billion Dollar Trade Secret Trial: The top semiconductor manufacturer in Taiwan (TSMC) sued the top mainland China semiconductor manufacturer (SMIC) for stealing its trade secrets (in state court in California). The jury sided with the plaintiff, although the damage calculation is still underway. [LINK]
  • JOAO Control & Monitoring v. Playboy & Penthouse: The JOAO patent holding company has sued a dozen online pornography providers alleging patent infringement. The asserted patent claims an apparatus for transmitting audio and video information from a vehicle to a website. The inventor Ray Joao is also a patent attorney and is represented by Andrew Spangler.
  • Who Owns Patents being Reexamined: The folks at Westerman Hattori have been writing about reexaminations. In a recent post, they list the top-ten patentees whose patents are undergoing reexaminations (based on reexaminations granted since January 2009). The top five include Rambus, LGE, Weatherford/Lamb, Mondis Tech, and ADC Tech. [LINK]

Patently-O Bits and Bytes No. 137

Bits and Bytes, Patent
  • Pirates: The EU Parliament now has two members from the Swedish Pirate Party. The Pirates platform is based on weakening copyright laws and eliminating patents. The first line of the party website reads: “The Pirate Party wants to fundamentally reform copyright law, get rid of the patent system, and ensure that citizens’ rights to privacy are respected.” [LINK]
  • Billion Dollar Trade Secret Trial: The top semiconductor manufacturer in Taiwan (TSMC) sued the top mainland China semiconductor manufacturer (SMIC) for stealing its trade secrets (in state court in California). The jury sided with the plaintiff, although the damage calculation is still underway. [LINK]
  • JOAO Control & Monitoring v. Playboy & Penthouse: The JOAO patent holding company has sued a dozen online pornography providers alleging patent infringement. The asserted patent claims an apparatus for transmitting audio and video information from a vehicle to a website. The inventor Ray Joao is also a patent attorney and is represented by Andrew Spangler.
  • Who Owns Patents being Reexamined: The folks at Westerman Hattori have been writing about reexaminations. In a recent post, they list the top-ten patentees whose patents are undergoing reexaminations (based on reexaminations granted since January 2009). The top five include Rambus, LGE, Weatherford/Lamb, Mondis Tech, and ADC Tech. [LINK]

Bits and Bytes No. 136

Bits and Bytes, Patent, Reexamination
  • The new website Found Persuasive looks to be an excellent addition to the online patent discussion. The authors promise a practical discussion of “patent prosecution strategies and templates for the patent practitioner. Patent attorneys Michael Leonard, Jared Olson, and Sheetal Patel are the authors.
  • The ReexamCenter is full of practical information about Reexamination Issues. The new site is run by Robert Sterne’s team at Sterne Kessler.
  • Professor Ho at Loyola (Chicago) sent in information about an upcoming event: IP Day in Chicago on November 3.
  • The PTO Central Reexamination Unit (CRU) has a new website design and updated statistics.
  • USPTO Ombudsman: The PTO has invited public comment on its Ombudsman Pilot Program. The program is intended to create a direct-line of communication for applicants who believe that their applications are being improperly examined. e9-25798.pdf.

Bits and Bytes No. 134: Personnel – Past and Present

Bits and Bytes, Patent
  • Duke Law Professor Arti Rai has started work at the USPTO as the "Administrator for External Affairs." Although not a registered patent attorney, Rai had a focus on biochemistry at Harvard and attended one year of Harvard Medical School before heading to law school (again at Harvard). [cv] In addition to her extensive knowledge of the patent system, Rai is an expert on administrative law. In her writings, she typically argues that the PTO should be given more independence and power.
  • Professor Rai's new position will likely focus on PTO relations with other US governmental entities as well as with foreign governmental entities.
  • Professor Rai offered remarks at the Collegiate Inventors Competition in Chicago on Monday evening. Here are a few quotes:
  • "As I know from my research, and from my own sister’s experience with her biotech startup, inventors need this protection in order to attract research and development capital. The challenge we face at the USPTO is ensuring that inventors can always look to us for strong and speedy protection."
  • "Since taking office a little over two months ago, Director Kappos has moved aggressively to reform the office, expedite the way in which we examine patents, update our IT infrastructure, and reach out to stakeholders and members of Congress to provide a sustainable funding mechanism for the USPTO. We are committed to using all of the tools at our disposal to reduce the amount of time it takes for inventors to get the patents they need to bring products to the marketplace. You will be hearing more in the months to come, so stay tuned and keep believing in your ability to change the world with your inventions."
  • IP Hall of Fame Nominations: Nominations have opened for IAM Magazine's Annual Award to "honour those who have made an outstanding contribution to the development of IP law and practice." http://www.iphalloffame.com/
  • Call for Papers: Next Generation of Antitrust Scholarship Conference

Patently-O Bits and Bytes No. 129

Bits and Bytes, Patent
  • Law Student Scholarship: The Richard Linn American Inn of Court is sponsoring a newly established scholarship in honor of Mark T. Banner who died in 2008. Mark was a major force in the patent community and was very helpful to me early in my career. Although the Linn AIC is located in Chicago, the organization is taking applications nationally, now through October 10, 2009. The award is open to any student interested in pursuing a career in intellectual property. However, some preference may be given to students who are involved in a local Inn of Court. Intellectual property focused Inns are located in Chicago, DC, San Francisco Bay Area, Philadelphia, New Jersey, NYC, LA, and Boston. [Download The Richard Linn Inn Mark T. Banner Scholarship Materials][About American Inns of Court].
  • Job Board Sponsor: I'm happy to announce that Franklin Pierce Law Center has become a sponsor of the Patently-O job board. The law school continues its focus on patent law with a particular emphasis on practical training. I was teaching there in the summer of 2007 and very much enjoyed my stay in southern New Hampshire.  

Patently-O Bits and Bytes No. 129

Bits and Bytes, Patent
  • Law Student Scholarship: The Richard Linn American Inn of Court is sponsoring a newly established scholarship in honor of Mark T. Banner who died in 2008. Mark was a major force in the patent community and was very helpful to me early in my career. Although the Linn AIC is located in Chicago, the organization is taking applications nationally, now through October 10, 2009. The award is open to any student interested in pursuing a career in intellectual property. However, some preference may be given to students who are involved in a local Inn of Court. Intellectual property focused Inns are located in Chicago, DC, San Francisco Bay Area, Philadelphia, New Jersey, NYC, LA, and Boston. [Download The Richard Linn Inn Mark T. Banner Scholarship Materials][About American Inns of Court].
  • Job Board Sponsor: I'm happy to announce that Franklin Pierce Law Center has become a sponsor of the Patently-O job board. The law school continues its focus on patent law with a particular emphasis on practical training. I was teaching there in the summer of 2007 and very much enjoyed my stay in southern New Hampshire.  

Patently-O Bits and Bytes No. 129

Bits and Bytes
  • Law Student Scholarship: The Richard Linn American Inn of Court is sponsoring a newly established scholarship in honor of Mark T. Banner who died in 2008. Mark was a major force in the patent community and was very helpful to me early in my career. Although the Linn AIC is located in Chicago, the organization is taking applications nationally, now through October 10, 2009. The award is open to any student interested in pursuing a career in intellectual property. However, some preference may be given to students who are involved in a local Inn of Court. Intellectual property focused Inns are located in Chicago, DC, San Francisco Bay Area, Philadelphia, New Jersey, NYC, LA, and Boston. [Download The Richard Linn Inn Mark T. Banner Scholarship Materials][About American Inns of Court].
  • Job Board Sponsor: I'm happy to announce that Franklin Pierce Law Center has become a sponsor of the Patently-O job board. The law school continues its focus on patent law with a particular emphasis on practical training. I was teaching there in the summer of 2007 and very much enjoyed my stay in southern New Hampshire.  

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).

Bits and Bytes: Hot News

Bits and Bytes, Patent,

Today’s Posts that may have been lost in the shuffle:

Let’s meet up:

  • The MBHB law firm has been a longtime sponsor of Patently-O. (Thanks!) The firm is co-sponsoring a reception and dinner at the newly constructed wing of the Art Institute of Chicago on Monday, September 14, 2009 as part of the part of the Intellectual Property Owners Ass’n (IPO) annual meeting. I hope to see you there. [IPO]

Examining:    

Question on dedication of material

Bits and Bytes, Patent

I’m working on compiling the data from the recent survey on antedating prior art through the use of Rule 131 affidavits during patent prosecution. I have a question for practitioners on the current state of the dedication rule.

MPEP 715 reads as follows:

An affidavit or declaration under 37 CFR 1.131 is not appropriate . . . (F) Where the reference is the disclosure of a prior U.S. patent to the same party, not copending. The question is one of dedication to the public. Note however, In re Gibbs, 437 F.2d 486, 168 USPQ 578 (CCPA 1971) which substantially did away with the doctrine of dedication.

What is the current state of the law regarding later claiming material disclosed in earlier not-copending application?

Ranking of Patent Law Blogs

Bits and Bytes, Patent

Gene Quinn – author of IP Watchdog – spent a good amount of time cataloging and ranking the various patent law focused blogs from around the world. His rankings are based on website popularity and popular influence with three primary inputs: (1) voting by readers; (2) Technorati.com ratings (based on links to the site); and (3) Alexa.com ranking of website popularity. I’m happy that Patently-O received the top rank. However, I encourage you to check-out the other blogs on the list. I read about 15 of them on a regular basis. Thanks Gene.

Quinn’s 2009 Patent Blog Ranking:

  1. Patently-O
  2. IPWatchdog.com
  3. IP Kat
  4. Spicy IP
  5. Patent Baristas
  6. Intellectual Property Watch
  7. Patent Docs
  8. 271 Patent Blog
  9. BlawgIT
  10. Patent Prospector
  11. The Invent Blog
  12. IP Think Tank and The Prior Art
  13. –
  14. Orange Book Blog
  15. IPJUR and European Patent Caselaw
  16. –
  17. Promote the Progress
  18. IP NewsFlash
  19. Anticipate This!
  20. Patentably Defined
  21. India Patent
  22. Intellectual Asset Management
  23. Against Monopoly
  24. Patent Circle
  25. I/P Updates
  26. PHOSITA
  27. IP Spotlight
  28. Chicago IP Litigation
  29. The IP Factor
  30. Patent Arcade and File Wrapper
  31. –
  32. Securing Innovation
  33. Patents 101 and IP Estonia
  34. –
  35. PatLit
  36. Just An Examiner
  37. The Business of Patents
  38. Patentability
  39. Inventive Step
  40. Holman’s Biotech IP
  41. Washington State Patent Law
  42. California Biotech Law
  43. Patent Infringement Updates and Patent Assassins
  44. –
  45. Russian Patents
  46. Georgia Patent Law
  47. Patentnapsis
  48. Honoring the Inventor
  49. OC Patent Lawyer
  50. Nanomedicine & IP