Patently-O Bits and Bytes No. 109

Bits and Bytes, Patent
  • Quote of the week: “Am I starting to grow nostalgic for Jon Dudas? At least he hated all applicants, big and small. Jon, Jon, Jon – should I have not doubted your wisdom?” Greg Aharonian, on contemplating the potential that Dave Kappos (IBM) will be the next PTO director.
  • My Discussion of Kappos: Here.
  • Section 2 of the Sherman Act: The Truth on the Market Blog is hosting a series of interesting articles on reforms of Section 2 (unilateral monopolization). Expect a post from IP/Antitrust leader Hovenkamp on Tuesday or Wednesday. [Link].

Patently-O Bits and Bytes No. 109

Bits and Bytes
  • Quote of the week: “Am I starting to grow nostalgic for Jon Dudas? At least he hated all applicants, big and small. Jon, Jon, Jon – should I have not doubted your wisdom?” Greg Aharonian, on contemplating the potential that Dave Kappos (IBM) will be the next PTO director.
  • My Discussion of Kappos: Here.
  • Section 2 of the Sherman Act: The Truth on the Market Blog is hosting a series of interesting articles on reforms of Section 2 (unilateral monopolization). Expect a post from IP/Antitrust leader Hovenkamp on Tuesday or Wednesday. [Link].

Bits and Bytes No. 108

Bits and Bytes, Patent

Bits and Bytes No. 108

Bits and Bytes, Patent

Bits and Bytes No. 108

Bits and Bytes

Bits and Bytes No. 106: Patent Reform

Bits and Bytes, Patent, Patent Legislation, , , ,
  • [UPDATED] Hal Wegner Reports the Following:
    • Phil Kiko of Foley Public Affairs reports that Secretary of Commerce Gary Locke has announced that he has chosen the next Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. The chosen candidate, who is being vetted, was not named.
  • Congress is Moving Forward with Patent Reform:
    • April 30, 2009 hearing of the House Judiciary Committee.
    • Here are some comments on the testimony:
      • Jack Lasersohn (venture capitalist): Venture capital requires strong and certain patents. The damage reforms create potential problems because sometimes a relatively minor product innovation will dramatically change the market position. “A new coating on a solar cell , that increases it’s conversion efficiency just a little bit, can dramatically shift the market for entire multi-billion dollar solar energy plants. A better drug on a drug eluting stent can shift the entire stent market. In either case, the question is ‘who is entitled to the profits arising from the use of the invention, the inventor or the infringer’?”
      • Dean Kamen (Inventor & Businessman): patents should be strong and policy should be directed to support small innovative organizations.
      • David Simon (Intel): patents are meant to allow manufacturing companies to fight each other – not for non-manufacturing inventors or their assigns to slow-down manufacturers. [This is a very rough paraphrase of Simon’s 13 page rant against non-practising entities.]
      • Philip Johnson (J&J) on behalf of the 21st Century Patent Reformers wants money for the PTO, international harmonization (first-to-file), expanded post-grant review (12–month window), no change to the current damages system, only a codification of Seagate, no changes to venue law.
      • Jay Thomas (Georgetown) argues that patent infringement damages are too unpredictable and that additional rules of evidence and practice can help solve the problem.
      • Mark Chandler (Cisco) supports the reforms to halt the problem of non-practising entities who demand licenses.
      • Bernard Cassidy (Tessera): Please do not change the patent law in ways that hurt small companies. The courts have already done enough through eBay, KSR, Medimmune, Microsoft v. AT&T, Seagate, Bilski, and TS Tech.
      • [WRITTEN TESTIMONY.zip (3794 KB)]
  • Absent from this testimony: Any representative from the Patent Office. At least three candidates are rumored to have been interviewed for the post of PTO Director – including former PTO Director Todd Dickinson and IP Hall of Fame member Mike Kirk. [See updated news above]

Bits and Bytes No. 104: Past and Future Events

Bits and Bytes, Conference or CLE, Patent

In March, GW and the FCBA hosted a symposium on the Federal Circuit Court of Appeals. Video of the symposium can be seen on cSPAN:

  • “The Court – Giving Texture to the Institution of the Court” Watch on C-SPAN
  • “The Complexity – Views on the Circuit’s Complex Subject Matter from the Solicitors General” Watch on C-SPAN

Upcoming Events:

Top Patently-O Content for the past 12 months:

  1. https://patentlyo.com/patent/2008/07/the-death-of-go.html
  2. https://patentlyo.com/patent/2008/10/in-re-bilski.html
  3. https://patentlyo.com/patent/2008/02/bilski-full-caf.html
  4. https://patentlyo.com/patent/2008/06/supreme-court-d.html
  5. https://patentlyo.com/patent/2008/04/ex-parte-bilski.html
  6. https://patentlyo.com/patent/2005/04/how_should_a_fu.html
  7. https://patentlyo.com/patent/2009/03/tafas-v-doll-some-rules-valid-others-invalid.html
  8. https://patentlyo.com/patent/2008/07/outsourcing-of.html
  9. https://patentlyo.com/patent/2009/03/patent-reform-act-of-2009.html
  10. https://patentlyo.com/patent/2008/11/junk-patents.html
  11. https://patentlyo.com/patent/2009/02/no-no-words-what-words-do-you-avoid-in-patent-applications.html
  12. https://patentlyo.com/patent/2008/11/post-bilski-bpa.html
  13. https://patentlyo.com/patent/2009/03/dear-patently-o-how-do-you-react-to-the-following-letter.html
  14. https://patentlyo.com/patent/2009/01/ex-parte-marius.html
  15. https://patentlyo.com/patent/2008/11/ex-parte-hallig.html
  16. https://patentlyo.com/patent/2008/05/cafc-hears-en-b.html
  17. https://patentlyo.com/patent/2008/12/cafc-affirms-pt.html

Patently-O Bits and Bytes No. 103: Events and Jobs

Bits and Bytes, Patent

Upcoming Events:200904151129.jpg

New Source of Upcoming Events: The Patently-O Events Calendar (BETA VERSION). HTTP://www.patentyo.com/calendar. We’re still working on the formatting & integration. The best way to post an event is to use create the event in your calendar (such as Outlook, Google Calendar, or iCal), and then invite patentevents@gmail.com. Be sure to include a URL in the description.

Job Postings from April 2009:

Query:

  • I should know this, but I don’t recall the answer: Suppose a recently issued patent was filed in 2004 and claims to be a continuation-in-part of another application filed in 2000. In the new patent, some of the claims were fully described and enabled in the 2000 application while other claims in the new patent include matter only found in the 2000 application. Will the enforceable patent term differ between the two sets of claims? If so, does the PTO require a terminal disclaimer if the claims are not patentably distinct?

Tuesdays with Aaron

Bits and Bytes, Blogroll, Patent, Patent Prosecution

12:01 am on Tuesday morning is a special time for patent attorneys. That is when the USPTO releases the newest batch of issued patents. Usually, over 3,000 issue each week.

Patent Attorney Aaron Feigelson (Leydig Voit firm) has started a great new blog: 1201tuesday.com covering PTO events. Aaron writes with an eye toward patent prosecution and does a good job of finding examples from recently issued patents that raise important practice issues. He has also been closely following the aftermath of Bilski. Aaron describes his project as follows:

I started regular weekly monitoring of issued patents a few years ago for some particular client-related matters, but my intrigue grew after stumbling upon certain patents, unrelated to client matters, with stories that were too interesting to keep to myself. Like U.S. Patent No. 6,097,812 and its 67-year prosecution history (thanks to a very long lasting secrecy order). Or U.S. Patent No. 7,472,070 for a seemingly innocuous grain aeration system — but granted to Microsoft, that well-known player in agricultural technology. Or trends, like the trickling-off of issuances to applications filed the first week of June 1995 (when there was a pre-GATT filing surge). Or Jerome Lemelson being granted U.S. Patent No. 7,343,660 more than a decade after his death, with priority going back over fifty years to 1954.

Lately, my attention has turned to the fallout from the Federal Circuit’s recent decision of In re Bilski and its effect on patentable subject matter under Section 101. In particular, I was curious (to aid my own practice) to see what sorts of claims had been allowed pre- and post-Bilski, and what techniques applicants had used to address or circumvent the machine-or-transformation test. I began sending my weekly findings internally to a few attorneys in my firm. Then to a few more. Then to a few more..

After a few months of these “Bilski Watch” emails, this blog was created.

I enjoyed Aaron’s recent post regarding patents issuing from applications filed in early June 1995 – just before the patent term reference was switched from the issue date to the filing date.

Notes

  • For those of you who don’t know, the IP blogging community is rather inter-connected. For instance, Aaron Feigelson was a 2L at UChicago Law when I started there as a 1L. He was also a summer clerk at the MBHB firm. I started at MBHB soon after Aaron left and actually took over his desk and sat next door to his classmate Aaron Barkoff of the Orange Book Blog. Also at the MBHB firm are the PhD’s who blog at Patent Docs (both Aarons hold PhD’s as well). I interviewed at Matt Buchanan’s (Promote The Progress) former Chicago firm, which is just across the Chicago River from Feigelson’s office. Matt has participated in several business ventures with Steve Nipper (Invent Blog) and Doug Sorocco (PHOSITA). Matt and I are also working on a project for this fall. My old firm also paid for my patent bar review course with PLI partially taught by Gene Quinn (IPWatchdog). I could continue…

Dear Patently-O: How Do You React to the Following Letter

Bits and Bytes, Inventors, Law Firm Practice, Patent

Dear Mr. Crouch:

I am a solo physician and inventor. I am wondering if you can point me in the generally right direction to resolve this issue.

I went to a large, well-respected, nationally-known firm to file a patent application for an invention. The invention is not that complicated. It’s mechanical rather than electrical or chemical; in fact, I can make prototypes in my kitchen fairly quickly. The invention mostly relies on a new combination of existing devices/technology.

My attorney knew from the start that I am a solo inventor and under a tight budget. The final fees were astronomical. I paid them at the time because the lawyer had obviously worked hard and I had agreed to pay the hourly rate she had quoted. However, I recently discovered that the application is much, much longer than patents of similar complexity, and the fees I paid are much higher than for similar patents.

To give you a comparison, based on a word count, my patent application was literally twice as long as Dean Kamen’s patent for an early Segway device in 1994. My fees were three times as high as another firm (Cooley Godward) says to expect for fees for most routine patents (other than for complex patents such as biologics, pharmaceuticals, etc.).

My current plan is to go back to this attorney and have a frank discussion with her, and to ask for a partial refund. If she refuses, I plan to go to the state bar and file a complaint.

Is this the right way to go about this? Are there any precedents for recovering fees in this sort of situation in a way that won’t tie me up in further legal fees?

Many thanks,

____ ____ M.D. (anonymized at the author’s request)

Patently-O Bits and Bytes No. 97

Bits and Bytes, ITC, Patent Legislation, USPTO News
  • Patent Reform: Senator Kyl Introduces the alternative Patent Reform Act of 2009; This bill is more patent-holder friendly than the Leahy bill. The Leahy bill may see some action in Committee on March 26, 2009.
  • Patent Reform: Inequitable Conduct: Although a co-sponsor of the Leahy Act, Senator Hatch has suggested that the reforms should include reforms of inequitable conduct proceedings.
  • ITC: The res judicata effect of ITC Section 337 Decisions: Nil.
  • ITC Theory: John Marshall’s IP Law Journal has a nice set of articles focused on ITC patent Litigation
  • Personnel: Gov. Gary Locke is President Obama’s nominee for Secretary of Commerce. Barring some unknown tax snafu or AIG relationship, is expected to be confirmed quickly. In his Senate testimony he mentioned the politically correct goal of reducing the PTO backlog along with creating a foundation for long-term economic growth; improving weather forecasting, and managing our fishing industry.
  • Personnel: The PTO needs three new members of its Patent Public Advisory Committee (PPAC). Current members include Kevin Rivette (Rembrandts in the Attic), Louis Foreman (CEO / Inventor), Scott Kieff (Conservative Law Professor), Damon Matteo (PARC innovation & licensing chief), Doug Patton (inventor & industrial designer at PattonDesign); David Westergard (IP guy at Micron – Looking to water-down patent rights), Marc Adler (former Chief of IP at Rohm & Haas), Steve Pinkos (former Deputy to Jon Dudas), and Maureen Toohey (Solo practitioner; former GC of a Dean Kamen’s DEKA company). I believe that Rivette, Patton, and Westergard will have reached the end of their terms this year and will be replaced.
  • The Economic Downturn: Diane Bartz has taken over writing all about patent law for Reuters. In a recent interview with John Doll, she uncovers that the PTO is projecting a 2% drop in applications in 2009. Others expect a 10% decline. The problem for the PTO is that their funding is entirely fee driven, and the agency had budgeted for a 5% increase. Along with most law firms, according to Doll, the PTO has “stopped hiring at this time.”

Patently-O Bits and Bytes No. 96

Bits and Bytes, USPTO News
  • Upcoming Event: ACI’s 3rd Annual Paragraph IV Disputes on April 27-28, 2009 in New York City (Downtown Marriott). http://www.americanconference.com/ParagraphIV.htm . This is a good event because it is well attended by both the innovators (brands) and the generics. On the wednesday following the class, several speakers will walk through a brand-generic settlement agreement and work on mechanisms to avoid FTC & antitrust problems.  
  • PCT Search Offices: The PTO is warning PCT applicants to make sure that the selected International Search Authority (ISA) is certified for your particular type of claims. One problem, the EPO is not ready to handle business method claims. [Notice]
  • Court Report: 2,875 patent lawsuits were terminated in the year ending Sept 30, 2008. Of those, only 3.8% (109) reached trial. Although 3.8% appears low, patent cases reach trial more often than many other claims brought in Federal Court. The same statistic for Copyright and Trademark cases shows 1.3% and 1.7% reaching trial respectively. During the past year, only six patent cases were filed in the Court of Federal Claims alleging infringement by the US Government. Read the Report.

Query on Elements and Limitations

Bits and Bytes, Patent

A Patently-O commenter recently made a distinction between claim elements, claim steps, and claim limitations.

“[B]asically, the distinction can be discerned grammatically. Elements are nouns. Steps are verbs or gerunds. Limitations are almost always adjectives, adverbs or modifying phrases, usually beginning with “wherein”.”

Is this distinction correct? Is there any legal basis for these distinctions?

Patent Law Professors on the Move

Academic Studies, Bits and Bytes, Patent

The lateral market for patent law professors is alive and steaming ahead.

  • Scott Kieff has accepted a position at GW law school in DC and will be moving from Washington University in St. Louis. GW may well have the best patent focused program in the country. At any opportunity, Kieff promotes the notion that strong property rights almost always lead to the best outcome.
  • Tim Holbrook is off a recent stint at Stanford Law school and is taking a position at Emory in Atlanta. Emory's patent space has been vacant since Margo Bagley left for UVA several years ago. Holbrook is leaving his fulltime position at Chicago-Kent.
  • Also leaving Chicago is Katherine Strandburg (from Depaul). Strandburg is taking a position at NYU where she will join Richard Epstein and my undergraduate classmate Troy McKenzie. McKenzie is a chemical engineer, but does not do patent law. Instead he focuses on bankruptcy.
  • In a coup, Mark Janis is headed home to Indiana (Bloomington) – leaving his longtime post at Iowa. Janis largely focuses on the interplay between trademark and patent rights.
  • Dave Schwartz is moving from John Marshall to fill Holbrook's position at Kent. Before moving into academia, Dave was a partner at a firm handling patent litigation and prosecution.

Each of these individuals have been helpful to me at some point during the past few years. Thank you, and good luck in your new positions!

Patently-O Bits and Bytes No. 95

Bits and Bytes, Injunctions, USPTO News,
  • Injunctive Relief: I re-read Michelle Lee’s (Google) statement about the need for patent reform. One issue that jumped-out this time: No mention of injunctions. Money is still at stake, but Google appears confident that it won’t face a shut-down even if it loses a patent case. In that sense, Google is lucky that it is being sued by non-practicing entities who as a de facto rule don’t get injunctive relief against infringers who have a major market share.
  • Benefit of Trade Secrets: Avoid Charges of Infringement. In some senses, google is very public. Yet, its actual operation is quite secretive. One benefit of that type of operation is that it helps avoid charges of patent infringement. If patentee’s can’t tell how you operate, it makes it much more difficult to assert charges of infringement.
  • Warranties and Copyright: My colleague Marc Roark has an interesting new paper: Limitation of Sales Warranties as an Alternative to Intellectual Property Rights: An Empirical Analysis of Iphone Warranties’ Deterrent Impact on Consumers.
  • The BPAI Watchdog: http://bpaiwatchdog.blogspot.com/. So far, Leigh Martinson is focusing on the BPAI’s application of Bilski.
  • European Bilski: The Enlarged Board of Appeal of the EPO is looking for third-party input on four issues:
    1. Is it only proper to exclude patents covering computer programs as such when explicitly claimed as a “computer program”?
    2. Does a claim avoid the computer program as such exclusion by mentioning a computer or data storage medium? (If not, what technical effect is needed?)
    3. Can a technical effect be non-physical? Is it sufficient if the physical entity is an unspecified computer?
    4. Does the activity of programming a computer necessarily involve technical considerations?
  • Input on the European questions are due by the end of April. http://www.epo.org/topics/news/2009/20090219.html.
  • Application for the job of PTO Director (by Prof Morris) http://www.stanford.edu/~rjmorris/pto.htm. I maintain that it is possible to find an excellent nominee who is not a patent attorney. However, any nominee who does not have extensive experience with the patent prosecution process will face an uphill credibility battle from day one.

Bits and Bytes No. 94

Bits and Bytes, Conference or CLE, Inventorship, Patent

Inventors

  • I used a software algorithm to count the number of inventors in each utility patent application published June 2007- February 2009. The histogram below shows the result. The median application has two inventors. One German application lists 100 inventors (I’ll post the patent number when I get back to my office).

Revisiting Upcoming Conferences

  • Northwestern Law School’s Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday).
  • Howard University’s Institute of Intellectual Property and Social Justice IP Symposium – March 5-6. Day two will focus in patent issues and will include a year in review by Irving Kayton, a discussion of design patent issues by Jon Wood (Bridgestone); and panels that include Chief Judge Michel and Judge Linn as speakers.
  • Federal Circuit Year in Review (St. Louis) – March 13 – I’ll be presenting this one hour session sponsored by the Bar Assn. of Metropolitan St. Louis.
  • The IP Law Summit – March 17-19 – hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).
  • The Federal Circuit Symposium – March 18. Sponsored by the FCBA and GWU Law School. Speakers include Chief Judge Michel, and Judges Friedman, Newman, and Rader; Senator Specter (invited); a heavy Supreme Court perspective with the five former solicitors general; academics speaking include John Duffy, Arti Rai, John Golden, and Rochelle Dreyfuss may largely focus on the role of the Federal Circuit.
  • Fordham IP Conference (NYC) – April 15-16. This conference has strong cross-Atlantic ties and will include judges and scholars from both continents.
  • IAM’s IP Business Congress in Chicago – June 21-23 – As the name suggest, this annual event focuses on how IP can be used in business. Sessions include “brand IP, strategic IP and business alignment, and IP value creation, as well as a range of breakouts examining legal, financial, strategic and business-related topics.”

Patently-O Bits and Bytes No. 93

Bits and Bytes, Conference or CLE, Reexamination

Upcoming Events

  • Northwestern Law School’s Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday). Bob Irvine will be debating Bilski with Lauren Katznellenbogen. Irvine is a partner at my former firm, MBHB – He is amazingly smart and was my resource whenever I had difficulty understanding some complex technology. The debate is moderated by blogger R. David Donoghue. (The notice includes a disclaimer that the positions “are for advocacy purposes” and might not reflect the positions of the parties or their firms. Other speakers include Judge Holderman, Dr. Chris Singer (of Patent Docs and MBHB), Profs Seymore and Sag, and Mike Baniak (also of MBHB). [Symposium Website]
  • The IP Law Summit – March 17-19 – hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).

Stays pending reexamination:

  • I continue to be surprised that courts grant stays of litigation pending re-examination – especially inter partes reexaminations which tend to be incredibly slow. In Wall Corp. v. BondDesk Group, LLC (D.Del. Feb. 24, 2009), district judge Gregory Sleet granted the defendant’s motion to stay the litigation pending inter partes reexaminations. The fact that the reexamination was inter partes was especially important to the court since the potential “estoppel will resolve many of the invalidity issues and streamline the litigation.” In a decision last week in Affinity Labs v. Dice Electronics, LLC, (E.D.Tex. February 20, 2009), the Texas-based Federal Court denied a stay pending ex parte reexam noting that the ex parte approach allows the “Defendant to lay behind the log, hoping for favorable developments with the passage of time. Instead of streamlining the process, Defendants’ choice guarantees the imposition of additional costs … and indicates a lack of desire to resolve the issues in the case in a timely manner.”

Late Patents:

Patently-O Bits and Bytes No. 93

Bits and Bytes, Conference or CLE, Patent, Reexamination

Upcoming Events

  • Northwestern Law School’s Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday). Bob Irvine will be debating Bilski with Lauren Katznellenbogen. Irvine is a partner at my former firm, MBHB – He is amazingly smart and was my resource whenever I had difficulty understanding some complex technology. The debate is moderated by blogger R. David Donoghue. (The notice includes a disclaimer that the positions “are for advocacy purposes” and might not reflect the positions of the parties or their firms. Other speakers include Judge Holderman, Dr. Chris Singer (of Patent Docs and MBHB), Profs Seymore and Sag, and Mike Baniak (also of MBHB). [Symposium Website]
  • The IP Law Summit – March 17-19 – hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).

Stays pending reexamination:

  • I continue to be surprised that courts grant stays of litigation pending re-examination – especially inter partes reexaminations which tend to be incredibly slow. In Wall Corp. v. BondDesk Group, LLC (D.Del. Feb. 24, 2009), district judge Gregory Sleet granted the defendant’s motion to stay the litigation pending inter partes reexaminations. The fact that the reexamination was inter partes was especially important to the court since the potential “estoppel will resolve many of the invalidity issues and streamline the litigation.” In a decision last week in Affinity Labs v. Dice Electronics, LLC, (E.D.Tex. February 20, 2009), the Texas-based Federal Court denied a stay pending ex parte reexam noting that the ex parte approach allows the “Defendant to lay behind the log, hoping for favorable developments with the passage of time. Instead of streamlining the process, Defendants’ choice guarantees the imposition of additional costs … and indicates a lack of desire to resolve the issues in the case in a timely manner.”

Late Patents:

Patently-O Bits and Bytes No. 93

Bits and Bytes, Conference or CLE, Patent, Reexamination

Upcoming Events

  • Northwestern Law School’s Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday). Bob Irvine will be debating Bilski with Lauren Katznellenbogen. Irvine is a partner at my former firm, MBHB – He is amazingly smart and was my resource whenever I had difficulty understanding some complex technology. The debate is moderated by blogger R. David Donoghue. (The notice includes a disclaimer that the positions “are for advocacy purposes” and might not reflect the positions of the parties or their firms. Other speakers include Judge Holderman, Dr. Chris Singer (of Patent Docs and MBHB), Profs Seymore and Sag, and Mike Baniak (also of MBHB). [Symposium Website]
  • The IP Law Summit – March 17-19 – hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).

Stays pending reexamination:

  • I continue to be surprised that courts grant stays of litigation pending re-examination – especially inter partes reexaminations which tend to be incredibly slow. In Wall Corp. v. BondDesk Group, LLC (D.Del. Feb. 24, 2009), district judge Gregory Sleet granted the defendant’s motion to stay the litigation pending inter partes reexaminations. The fact that the reexamination was inter partes was especially important to the court since the potential “estoppel will resolve many of the invalidity issues and streamline the litigation.” In a decision last week in Affinity Labs v. Dice Electronics, LLC, (E.D.Tex. February 20, 2009), the Texas-based Federal Court denied a stay pending ex parte reexam noting that the ex parte approach allows the “Defendant to lay behind the log, hoping for favorable developments with the passage of time. Instead of streamlining the process, Defendants’ choice guarantees the imposition of additional costs … and indicates a lack of desire to resolve the issues in the case in a timely manner.”

Late Patents:

Brief post on the stimulus [updated]

Bits and Bytes, Patent

pic-9.jpgTo put $800 billion in perspective, I like to think in terms of households. In the US, there are around 115 million households with a little under three persons per household. Simple division gives us $7,000 per household. The median household income of Patently-O readers is at least two to three times greater than the national median of $50,000. The income-correlated cost will be at least proportional — pushing $20,000 for Patently-O households.

A weak economy has little demand for patent attorneys. Patent attorneys make less money, clients disappear, and law firms close. Although patents can be countercyclic, on average they are not – especially in a sustained downturn.

In the 1990’s, I taught high-school level math and physics as a Peace Corps volunteer in Ghana, West Africa. Many of my students were smarter and certainly harder working than their American counterparts. Yet, the Ghanaians have an expected per capita income of just under $1,000 per year. Those kids are a victim of circumstance. In the US, we reap the windfall of circumstance. Our individual income levels are within our control only to a certain extent.

The bottom line here is that this additional $20,000 cost is worth while … if it works. I guess that we’ll find out.