Article One Partners Pays First Patent Slayer Prize of $50,000

Bits and Bytes, Patent

PatentLawPic665I spoke with Ricky Roberson today. Roberson is an Alabama based aerospace engineer who read about Article One on slashdot and was interested in their offer of $50,000 for invalidating prior art.

Roberson focused on Pat. No. 6,784,873 which covers a touch screen personal navigation device — a patent that he called “low hanging fruit” compared with other Article One subjects such as the multiple Rambus patents being litigated or a pharmacuetical formulation such as rosuvastatin calcium (Crestor).

The ‘843 case is important because the patentee (SPT) has accused Garmin of infringement. Roberson primarily used Google Scholar & Google Patents to search for prior art patents. He had never worked with patents before, but also found the WIPO, EPO, & JPO search engines useful.

In the end, the folks at Article One awarded two winners: Roberson’s submission (WO 91/12578 A1) and an anonymous contribution of a 1998 Microsoft CE programming guide. Roberson will receive $35,000 and the anonymous contributor will receive $15,000.

Article One indicated its belief that the two references would invalidate the ‘843 patent, however, they company is quick to note that “only a U.S. federal court or the U.S. Patent Office can invalidate a U.S. patent.”

Notes:

Patently-O Bits and Bytes No. 91

Academic Studies, Bits and Bytes, USPTO News
  • PatentLawPic666Statistics on the Use of Means Plus Function Language: Thus far in 2009 (1/1/2009 – 2/8/2009) the PTO has issued 17,206 patents. Of those, only 12% (2060) have a “means for” clause in the claim language.  Looking back one decade, 24% of patents issued in January 1999 included a “means for” clause in the claim language. Looking back two decades, 34% of patents issued in January 1989 included a “means for” clause in the claim language. Looking back three decades, 40% of patents issued in January 1979 included a “means for” clause in the claim language.
  • New Funny Blog: http://courtoons.wordpress.com/ by appellate attorney David Mills
  • Watch The Symposium: The hardworking folks at Santa Clara’s Computer & High Technology Law Journal (CHTLJ) have posted materials and video from their conference two weeks ago. Those of you who have practiced before Judges Whyte or Ware will certainly enjoy the tribute video. [LINK] [The best portion begins at 11:20 in the Whyte video].
  • PTO Transparancy: Readers submitted two additional suggestions for PTO Transparancy
    • The PTO should calculate and publish the expiration date of each patent.
    • The PTO should publish reexamination certificates so that they are searchable. [Via NIPPER]

Patently-O Bits and Bytes No. 90

Bits and Bytes, Patent, Patent Legislation,
  • Patent Reform I: In a recent article, DC insider Hal Wegner noted that there is “reason for optimism that patents will not be put on the back burner by the new President.” Wegner pointed to the President’s pro-reform start and to the President’s Technology Agendy that calls for: (1) ensuring that American IP is protected abroad and (2) reforming the patent and copyright systems “while ensuring that intellectual property owners are fairly treated.” The agenda speaks specifically to patent reform: “Reform the Patent System: Ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration. Give the Patent and Trademark Office (PTO) the resources to improve patent quality and open up the patent process to citizen review to help foster an environment that encourages innovation. Reduce uncertainty and wasteful litigation that is currently a significant drag on innovation.” [Read the Technology Agenda]
  • Patent Reform II: Although Wegner noted “optimism,” many patent industry insiders may be pessimistic that there is a high likelihood of patent reform. In particular, the technology agenda statements, coupled with Professors Sprigman and Rai as advisors, further coupled with the rumored appointment of John Thompson as Secretary of Commerce point toward legislative patent reforms being along the same lines as eBay (weakening injunctions), KSR (making it easier to find patents obvious); VW (weakening plaintiff’s choice of forum); Bilski (limiting patentable subject matter); and Seagate (limiting damage awards).
  • Patent Reform III: On the other hand, Professors Rai and Sunstein are both major administrative reformers. There is hope that their style of internal PTO reforms – made through rule changes and standard operating procedures – could dramatically change the PTO for the better.
  • Role of the Secretary of Commerce: 35 USC 1(a) establishes the Patent Office (PTO) within the Department of Commerce. However, the statute is clear that the PTO has some power independent of the larger department: “The [PTO] is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the [PTO] shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law.”

Bits and Bytes No. 89

Bits and Bytes, Patent
  • Patent Case Management: Professor Peter Menell (Berkeley) has been working with several top patent litigators to develop a “comprehensive patent case management guide” for federal judges. The almost-final draft is available online. The manuscript will very likely become a desk reference for district court judges and their clerks once it is published by the Federal Judicial Center in the next couple of months. In some ways, the 500+ page manuscript is a patent doctrine encyclopedia as well as a judicial form book.
  • [UPDATE] Secretary of Commerce: In a prior post, I wrote about the potential John Thompson, CEO of Symantec may be appointed as the next Secretary of Commerce. As noted in the comments, I failed to mention the fact that Symantec is a leading member of the “Coalition for Patent Fairness.” The Coalition is a lobbying group pushing for reduced patent damages awards, reduced ability to forum shop, and an invigorated system for post-grant challenges to asserted patents. [LINK] Previously, the Coalition also supported eBay and reduced willfulness findings. Each of these changes reduce the potential power individual patents.
  • Query: Assume you have a popular product covered by a pending patent. Is there a way to mark the patent pending good in a way so that an infringer will be considered on notice of the patent as soon as the patent issues (so that you can collect past damages).

Bits and Bytes No. 89

Bits and Bytes
  • Patent Case Management: Professor Peter Menell (Berkeley) has been working with several top patent litigators to develop a “comprehensive patent case management guide” for federal judges. The almost-final draft is available online. The manuscript will very likely become a desk reference for district court judges and their clerks once it is published by the Federal Judicial Center in the next couple of months. In some ways, the 500+ page manuscript is a patent doctrine encyclopedia as well as a judicial form book.
  • [UPDATE] Secretary of Commerce: In a prior post, I wrote about the potential John Thompson, CEO of Symantec may be appointed as the next Secretary of Commerce. As noted in the comments, I failed to mention the fact that Symantec is a leading member of the “Coalition for Patent Fairness.” The Coalition is a lobbying group pushing for reduced patent damages awards, reduced ability to forum shop, and an invigorated system for post-grant challenges to asserted patents. [LINK] Previously, the Coalition also supported eBay and reduced willfulness findings. Each of these changes reduce the potential power individual patents.
  • Query: Assume you have a popular product covered by a pending patent. Is there a way to mark the patent pending good in a way so that an infringer will be considered on notice of the patent as soon as the patent issues (so that you can collect past damages).

Patently-O Bits and Bytes No. 87

Bits and Bytes, Patent
  • For the first time in history, fewer than 50% of US patents issued in the past year originated from US applicants. [Zura] IBM received 4,000+ patents in 2008.
  • In 2007, I asked the question: How will the US patent lobbying change when most new patents are held by foreign companies?
  • Brian Moriarty and Deirdre Sanders (Massachusetts patent litigators) discuss the combination of the Texas Venue problems (TS Tech, VW) and new D.Ma. local patent rules. Their conclusion: “Patent Suits – Massachusetts In, Texas Out.” [LINK]
  • More Patent Jobs:

    • Godfrey & Kahn (Milwaukee) needs an “IP Generalist” with “excellent academic credentials” to help with litigation, trademarks, patent prosecution, and transactions. [Link]
  • Baker & Daniels (Indy) needs a MechE (or mechanically inclined equivalent) associate to handle patent prosecution. [Link]

Patently-O Bits and Bytes No. 86

Bits and Bytes, Patent
  • Supreme Court Petitions Pending:

    • FTC v. Rambus: Duties of a patent holder in standard setting negotiations. (To be discussed in more detail this week.)
  • Apotex Corp. v. AstraZeneca AB: This case involves a burden of proof. Should an accused product be found non-infringing if the accused demonstrates that it merely practiced the prior art. Non-infringement is proven by a preponderance of the evidence rather than clear and convincing evidence.
  • MuniAuction v. Thomson Corp.: Challenges the Federal Circuit’s single actor requirement for patent infringement.
  • Forest Labs. v. Caraco Pharmaceutical: Whether DJ jurisdiction can exist after the patentee has granted an ANDA applicant a covenant not to sue.
  • Burandt v. Dudas: When is a failure to pay “unavoidable”
  • Apotex v. Roche: Is there any meat in the reverse doctrine of equivalents.
  • Energizer v. ITC: How should a court conduct claim construction?
  • 800 Adept, Inc. v. Murex Securities: De novo review of claim construction.

  • New Patent Law Jobs:

  • Oblon Spivak next door to the PTO
  • US Patent Attorney in Japan
  • Dolby Labs in San Francisco
  • Warner Norcross firm in Grand Rapids
  • Leonard Hope is giving up blogging and is looking for a buyer for his domain patentprosecutionblog.com. Let me know if you restart the site.

    • Patently-O Bits and Bytes No. 85

    Bits and Bytes, Patent, Pharma
    • BPAI Plummeting Reversal Rate. [LINK]
    • Accessing Patently-O: I have set up several ways to access Patently-O depending upon your preferences:
    • Obama‘s original selection for Secretary of Commerce – Bill Richardson – will not pan out. Richardson has decided to withdraw his nomination. Although we rarely see the Secretary of Commerce directly shaping USPTO policy, the Office is still part of the Department of Commerce and the USPTO Director reports directly to the Secretary of Commerce. The greatest impact of the Secretary of Commerce may be on the selection of high-level PTO officials (including the Director).
    • The Patent Troll Tracker debacle made the ABA Journal’s list of the top ten legal stories of 2008. (The only IP related issue to make the list). [Link]
    • Patently-O Jobs:
      • Microsoft (Redmond, WA) needs a patent portfolio manager (at least 5 years exp.) [LINK]
      • Google (Mountain View, CA) needs an IP litigation counsel (at least 3 years exp.) [LINK]
      • Amin Hallihan (Chicago) focuses on IP & FDA issues. The firm is looking one or more experienced patent attorneys to join their ranks. [LINK]
    • Phama Law: Pozen’s migraine drug (Treximet) is special because it combines two types of migraine treatments into one pill: naproxen sodium (Aleve) and sumatriptan (Imitrex). Alphapharm (Mylan) filed an abbreviated new drug application (ANDA) to begin marketing a generic version of the drug – arguing that the patent is invalid. On January 2, Pozen sued Alphapharm for infringement in the Eastern District of Texas. Claim 1 of the asserted patent reads as follows:
      • 1. In a method for treating a migraine patient by administering a 5-HT agonist [Imitrex], the improvement which comprises: concomitantly administering to said patient a long-acting, non-steroidal, anti-inflammatory drug (LA-NSAID) [Aleve] in an amount that, together with said 5-HT agonist, is effective to reduce migraine relapse or produce longer lasting efficacy compared to the administration of said 5-HT agonist in the absence of said LA-NSAID.

    Patently-O Bits and Bytes No. 85

    Bits and Bytes, Pharma
    • BPAI Plummeting Reversal Rate. [LINK]
    • Accessing Patently-O: I have set up several ways to access Patently-O depending upon your preferences:
    • Obama‘s original selection for Secretary of Commerce – Bill Richardson – will not pan out. Richardson has decided to withdraw his nomination. Although we rarely see the Secretary of Commerce directly shaping USPTO policy, the Office is still part of the Department of Commerce and the USPTO Director reports directly to the Secretary of Commerce. The greatest impact of the Secretary of Commerce may be on the selection of high-level PTO officials (including the Director).
    • The Patent Troll Tracker debacle made the ABA Journal’s list of the top ten legal stories of 2008. (The only IP related issue to make the list). [Link]
    • Patently-O Jobs:
      • Microsoft (Redmond, WA) needs a patent portfolio manager (at least 5 years exp.) [LINK]
      • Google (Mountain View, CA) needs an IP litigation counsel (at least 3 years exp.) [LINK]
      • Amin Hallihan (Chicago) focuses on IP & FDA issues. The firm is looking one or more experienced patent attorneys to join their ranks. [LINK]
    • Phama Law: Pozen’s migraine drug (Treximet) is special because it combines two types of migraine treatments into one pill: naproxen sodium (Aleve) and sumatriptan (Imitrex). Alphapharm (Mylan) filed an abbreviated new drug application (ANDA) to begin marketing a generic version of the drug – arguing that the patent is invalid. On January 2, Pozen sued Alphapharm for infringement in the Eastern District of Texas. Claim 1 of the asserted patent reads as follows:
      • 1. In a method for treating a migraine patient by administering a 5-HT agonist [Imitrex], the improvement which comprises: concomitantly administering to said patient a long-acting, non-steroidal, anti-inflammatory drug (LA-NSAID) [Aleve] in an amount that, together with said 5-HT agonist, is effective to reduce migraine relapse or produce longer lasting efficacy compared to the administration of said 5-HT agonist in the absence of said LA-NSAID.

    Patently-O Bits and Bytes No. 84

    Bits and Bytes, Patent
    • USPTO News: Although the move has been in the works for some time, Raymond Chen is now Solicitor of the USPTO and Deputy General Counsel for Intellectual Property Law. Chen’s JD is from NYU. He also has a BS in electrical engineering from the UCLA. Prior to joining the solicitor’s office, Chen was a technical assistant at the United States Court of Appeals for the Federal Circuit. Chen’s parents were both engineers as well.
    • Voting: Patently-O is in second place in the ABA Blog championship. Vote for Patently-O here.
    • Suing the Software Giants: In 1998 three central-Indiana inventors filed for patent protection iconic software. The claims – finally issued in 2008 – cover a method of using icons that look like the content of the files they represent. The first named inventor – Greg Swartz – moved to Arizona and has recently filed an infringement complaint in that state. Defendants include Google (Chrome Browser), Microsoft (Vista), and Apple (iPhone). (U.S. Patent No. 7,346,850; ArsTechnica). The Niro firm is representing the patent holder – Cygnus Systems. An additional continuation is pending. The complaint can be found through Stanford’s LexMachina Database.

    Patently-O Bits and Bytes No. 84

    Bits and Bytes
    • USPTO News: Although the move has been in the works for some time, Raymond Chen is now Solicitor of the USPTO and Deputy General Counsel for Intellectual Property Law. Chen’s JD is from NYU. He also has a BS in electrical engineering from the UCLA. Prior to joining the solicitor’s office, Chen was a technical assistant at the United States Court of Appeals for the Federal Circuit. Chen’s parents were both engineers as well.
    • Voting: Patently-O is in second place in the ABA Blog championship. Vote for Patently-O here.
    • Suing the Software Giants: In 1998 three central-Indiana inventors filed for patent protection iconic software. The claims – finally issued in 2008 – cover a method of using icons that look like the content of the files they represent. The first named inventor – Greg Swartz – moved to Arizona and has recently filed an infringement complaint in that state. Defendants include Google (Chrome Browser), Microsoft (Vista), and Apple (iPhone). (U.S. Patent No. 7,346,850; ArsTechnica). The Niro firm is representing the patent holder – Cygnus Systems. An additional continuation is pending. The complaint can be found through Stanford’s LexMachina Database.

    Patently-O Bits and Bytes No. 77

    Bits and Bytes, Patent

    Patently-O Bits and Bytes

    Bits and Bytes, Patent

    Patently-O Bits and Bytes No. 74

    Bits and Bytes, Patent
    • Our thoughts and prayers go out to Peter Zura of the great 271 Patent Blog. Peter is now officially cancer free.
    • Professor Doug Lichtman is offering free CLE Credit. Listen online: www.ipcolloquium.com
    • DMCA is 10 years old. [EFF] [News]
    • The US Government has Seized the Mongol’s trademark and is now “seiz[ing] all products, clothing, vehicles, motorcycles … or other materials bearing the Mongols trademark” [Randazza] I don’t know what they will do with this guy’s head…

    Via Kelly Talcott: $125 Million is a Lot to Pay for Fair Use

    The Health Impact Fund

    Articles and Publications, Bits and Bytes, Patent

    Last week I spoke with Yale Professor Thomas Pogge about his proposal for a “Health Impact Fund.” The mission is to provide incentives to develop and distribute drugs that will achieve major global health impacts. Pogge sees the current patent system as valuable, but lacking. The problem is that the most innovative pharmaceutical companies find it very difficult to make money from treatments that are focused on the problems of the developing world. Although helpful, charity donations of drugs are typically insufficient and lead to the problem of parallel imports.

    The solution proposed by Pogge is to form a global fund and pay innovator companies based on the global health impact of their new treatment. The more “quality adjusted life years” (QALYs) saved, the more money a company gets. The intent of this reward scheme is to focus the innovators on developing and distributing treatments that will have the greatest worldwide health impact.

    The system is intended simply as an additional incentive layer. A drug developer may obtain patents as usual. However, in order to qualify for the program, the patentee would agree to sell its drugs at cost and guarantee access.

    Pogge’s models suggest that the fund would have a major impact if funded with $6 billion annually.

    Notes:

    • HIF Book is online
    • I like the idea of aligning economic interests of the innovators with a health impact. If structured correctly, innovators will like this program because it does not take away the option of simply using the traditional patent system. The problems are primarily logistical: who pays the $6b?; how do you measure health impact?; how do you prevent gaming the system (by, for example, only using the program when the patents are likely to be challenged)?; etc.
    • President Bush’s “Emergency Plan for AIDS Relief” is set to spend about $6 billion on global AIDS treatment this year. [Link]

    Patently-O Bits and Bytes

    Bits and Bytes, Patent

    Researchers at the IP Research Institute of Australia (IPRIA) have a recent paper on pendency at the various patent offices. Professors Jensen, Palangkaraya and Webster looked at almost 10,000 international patent application families filed in the early 1990’s and studied how they fared in the USPTO, EPO, JPO and APO. When examining the same applications, the USPTO had the shortest pendency. The study also shows that many applicants would take advantage of deferred examination if allowed in the US. [Read the Paper]

        

    Top 25 referrals to Patently-O in the past month (excluding search-engines). Thanks for the links!

    ABC is Looking for a “Superstar Family of Inventors”

    Bits and Bytes, Patent

    The casting producer at “Wife Swap” thought some of our readers may know some great inventors:

    WIFE SWAP, ABC’S HIT PRIMETIME SHOW, SEEKS A SUPERSTAR FAMILY OF INVENTORS!

    The premise of Wife Swap is that one parent from each household swaps places for a week to experience how another family lives. It is an incredible family experience and opportunity to both learn and teach different family values.

    Wife Swap is a fascinating story of what happens when two couples see themselves and their partners in a whole new light. The New York Post says, “It should be called ‘Life Swap’ because it’s not just the wives who learn something here. It’s the families.”

    Potential families can live anywhere in the United States, but we ask that families applying for the show consist of two parents and have at least one child, age 7 or older, living at home. Specifically, I’m looking for families who are always looking for the next big invention! To submit for the show please email a family photo and description to: gaby.wifeswap@gmail.com.

    Families featured on the show will receive a $20,000 honorarium. If you refer a family that is selected you receive $1,000.

    If you are a family unit (two parents and children between the ages of 7 and 17) who love an adventure, I would love to hear from you today! Also, please feel free to send this casting along to any families you feel would be appropriate!

    More information is available at: http://abc.go.com/primetime/wifeswap.
    Tags:

    Patently-O Bits and Bytes: Judge Lourie on the Federal Circuit

    Bits and Bytes, Patent
    • Federal Circuit Judge Lourie recently discussed the state of the court. Here are some points [LINK]:
      • 11.3 Months: Time from docketing to disposition of district court [patent] appeals in the past year.
      • 2.1 Months: Time from calendaring to disposition of the same cases.
        • Note: It is unclear from Judge Lourie’s speech if the times are averages or medians. The court has made great strides in keeping the average and median pendency quite low. There are however, a group of outliers with much longer pendency. The outliers are, for the most part, associated with a couple of particular Federal Circuit judges.
      • 50-mile rule: “On this issue of district court judges sitting with us, some recent patent bills have proposed to eliminate the current statutory requirement that judges on our court live within a 50-mile radius of the district. In my view, no persuasive reason has been given for that change. I believe it would be contrary to the best interest of the court and its functioning, and hence the law”
      • PTO Discussion: “No doubt an overcrowded examination system that places quotas on examiners plays a role in our less-than-perfect examination system.”
      • Pro Patent Court: “Since I have been on the court, over 18 years, not once have we [as a court] had a discussion as to what direction the law should take, whether we should be pro-patent or not. That is because we are not a policy-making body. We have just applied the law and precedent as best we could determine it to the cases that have come before us. In fact, we have been criticized for, in the view of some people, narrowing the doctrine of equivalents, emphasizing the need for a written description commensurate with the claims, and affirming summary judgments of non-infringement that in effect preclude juries from deciding these cases.”
      • Appellate Advice:
        • Make sure your case is final before filing the appeal
        • Cross appeals are only for the purpose of challenging the decision (not for arguing that the decision is correct)
        • Don’t allege that “every business fact is super-confidential. It makes it difficult for us to ask questions from the bench and write an opinion.”
      • Limit the issues: “Having more than three issues in a brief suggests to us that you don’t have a strong appeal.”

    Patently-O Bits and Bytes No. 68: People in the News

    Bits and Bytes, Conference or CLE, Patent

    IP Law Hall of Fame New Inductees (Sponsored by IAM) [LINK]:

    • Jane Ginsburg – Columbia Law Professor; written extensively on the intereconnection between copyright and trademark law.
    • Francis Gurry – New Director-General of the World Intellectual Property Organisation (WIPO)
    • Dolores Hanna – Retired partner from Bell Boyd & Lloyd. Former head of INTA, IPLAC, WBA of Illinois, etc.
    • Michael Kirk — Recently retired Executive Director of the American Intellectual Property Association.
    • Niels Reimers – Former director of Stanford University’s Office of Technology Licensing. Founder of AUTM.

    New IPO Board Members:

    • Wayne Sobon (Accenture)
    • Roger Gobrogge (Dow Corning)
    • Michelle Lee (Google)
    • George Johnston (Hoffman-La Roche)

    Washington University:

    • Tonight WashU will host the VP debate
    • On Friday, October 10, I will be speaking at WashU law school to a much smaller crowd. (3:00 – 4:00pm) The topic trademak law and the protection of designs. I believe that CLE credit is being arranged for the free event. [LINK]