Like everyone else, patent attorneys like to clean their desks for the weekend and are less productive on Mondays. The chart to the right shows the percentage of patent of patent applications filed on each day of the week. (My data is from a sample of 1.4 million published patent applications filed 1999 to 2007). With the advent of electronic filing, patent attorneys are now able to file on Sunday. For published applications filed in 2007 about 1 out of every 250 was filed on a Sunday. (0.41%).
Patent Reform Act: Senator Kyl has introduced S.3600.
Hal Wegner Reports:
No pay raise for judges this year
PTO Budget: $2.1 billion
Six supreme court petitions may be decided within a week:
Nuijten (patentability of a signal)
Translogic (constitutionality of BPAI appointments)
Echostar (expert issues)
Monsanto (patentability of seeds)
IR v. IXYS (timing of appeals)
Samsung v. Rambus (sanctions)
Biomedical Patent Management Corp. v. California Dept. of Health Services (state immunity) is still awaiting the views of the Administration.
Can someone explain the various curves and bumps from the graph below?
After Aristocrat, is nonstatutory double patenting off the table as an invalidity defense in an infringement action? (Hat tip to Chico Gholz).
Vanderbilt Law School’s Journal of Entertainment & Technology Law (JETL) has a new blog focusing on timely legal issues: Jetlaw. [Read Jetlaw][Read JETL]
Ten great new jobs on the Patently-O job board. Tell them you found it on Patently-O:
QUERY: Can someone point me (and our readers) to a somewhat comprehensive breakdown which issues are issues of law versus issues of fact in patent cases?
The Federal Circuit: Earlier this week, the IPO sent out a flyer demanding more respect for the Court of Appeals for the Federal Circuit. In particular, the organization noted that the court should be referred to as the “Federal Circuit” not the CAFC. IPO pointed out that acronyms are for lower courts such as the BPAI, ITC, CIT, CCPA, etc. I agree with the push for respect. My problem with the “Federal Circuit,” however is that it is a poor trademark. It turns out that all appellate courts are “federal circuit courts.”
Hal Wegner at the Federal Circuit: Wegner is returning to the Federal Circuit on October 9 to argue against the PTO’s product-by-process double patenting rejection of a Takeda patent in reexamination. The identical claims were argued in the 1995 case In re Ochiai (PTO reversed). The patent (No. 5,583,216) claims priority back to an original 1975 application. The issue is the timing of judging product-by-processing double patenting. [Calendar]
Distance Collaboration: Patent No 7,343,719 is interesting to me because it list 30 different US inventors coming from nine different US states: Illinois, California, Tennessee, Connecticut, Texas, Massachusetts, New Hampshire, Wisconsin, and Florida. Have the tools of modern communication changed the nature of invention? The patent covers a machine that cooks and packages French fries.
The Internet: The chart below shows the percent of issued patents that refer to the “internet.”
SanDisk and Samsung are in merger talks. One of the driving ‘synergies’ is that Samsung lays out “several million dollars” annually for flash-memory patent licenses.
WSJ says Intellectual Ventures now holds over 20,000 patents. So far, IV had not filed any lawsuits.
Patents are not helping Lehman in its collapse. The company employed 20,000+ but only holds 10 issued patents. (It did hold several others as collateral). [After I wrote this I saw two other comments on the same topic ZuraBM]
Stents: After a new trial, Cordis again won its patent infringement suit against Boston Scientific and Medtronic. Now, Judge Robinson will reinstate the $600 million in damages plus interest from the original 2002 verdict.
No Subject Matter Jurisdiction: In ExcelStor v. Papst, the CAFC held that it does not have appellate subject matter jurisdiction over claims of patent licensee fraud or breach of contract.
Strike: EPO examiners are scheduled to go on strike tomorrow – but just for one day. They want better patent quality. “Constant decisions in favour of quantity damage the quality of the patents.”
Jones Day Hates The WWW? The Cleveland based mega-firm has sued the operator of BlockShopper.com for announcing that two Jones Day associates had purchased expensive homes. BlockShopper apparently crossed the line when it added a link to the firm’s website. [Hricik][Ambrogi][Randazza, who, by the way is a great writer][Levy].
Risperdal: Last week, the CAFC held that Apotex could not challenge Janssen’s patent if the purpose was simply to prevent the exclusive generic from potentially extending the start of its 180 days of exclusivity. In a parallel decision, the DC Circuit has held that TEVA has no right to be the exclusive generic. Although no written decision has issued, the court apparently decided that TEVA’s paragraph IV certification was not sufficient because it challenged a patent that had already been de-listed from the orange book by the patentee. Other generics should be on the market very shortly.
Chief Judge Michel is quoted: “One of the most important cases pending with the [Federal Circuit] today is In re Bilski…. ‘It’s a very interesting case and I thought all the judges worked very hard on it,’ says [Chief Judge] Michel. He adds: ‘I think it will be a very significant decision. It probably will have broader scope than either In re Comiskey or In re Nuijten”
FEES: I’m looking for the PTO fee schedule (filing fees, exra claim fees, extension fees, appeal fees, etc.) for the past decade.
PTO Allowance Rate – depends on whether the PTO counts an RCE as an abandoned application. (which it should not…). The chart below is from a presentation by the PTO’s General Counsel James Toupin. Greg A posted a link to the whole file: www.bustpatents.com/toupin.pdf.
BPAI Evidence: In a recent petition in Reexamination No. 90/006,707 (2008 Westlaw 2938366), the Commissioner of Patents barred an applicant from submitting a reply brief that contained new evidence. The proffered evidence was a citation to a dictionary definition. This should serve as a reminder to applicants that the evidence for a BPAI appeal should be laid prior to the appeal.
Classen v. Biogen: This case has been waiting an appellate decision since oral arguments one year ago. At least one patent is challenged under 35 U.S.C. 101 as it arguably covers the process of “thinking about” an immunization schedule and then immunizing.
I have now received a nonparty subpoena in EricAlbritton’s defamation case against Cisco and the Patent Troll Tracker. The requests are quite broad. Blog commentators may want to check Request Number 2 that could require disclosure of their information.
2. All DOCUMENTS REFERRING or RELATING to comments, emails, COMMUNICATIONS or responses to THE BLOGS regarding (1) the integrity, reputation or ability of ERIC M. ALBRITTON; (2) the filing of Civil Action No. 5:07-CV-00156, styled ESN, LLC v. Cisco Systems, Inc., in the United States District Court for the Eastern District of Texas; or (3) the October 16-17, 2007 postings on www.trolltracker.blogspot.com. [File Attachment: albrittonsubpoena.pdf (109 KB)]
In part, this request is seeking information about the identity of anonymous blog commentators and those who have sent me private emails regarding this case. As I have mentioned previously, my blogging service retains additional information regarding the identity of commentators (such as IP address, etc.), and a full response to the subpoena request could include that information. In a letter to Albritton’s attorney, I objected to the subpoena requests for several reasons including the following specific objection to Request Number 2:
Request Number 2 asks about comments on THE BLOGS. Comments are posted on Patently-O and are publicly available at no charge to you. Because these comments are already available online, this request is likewise unduly burdensome and overbroad. Furthermore, most commentators post anonymously with a strong expectation of privacy in their identity. Similarly, I often receive communications sent under the condition and/or expectation of privacy and anonymity. This happens with any reporter – but is especially common in law and politics where we often find negative retribution for speaking out. I strongly support this right of anonymity and do not plan to reveal particular information that could lead to the identity of those sources without a specific court order on the topic. As the Supreme Court recently held, “Anonymity is a shield from the tyranny of the majority. . . . It thus exemplifies the purpose behind the Bill of Rights, and of the First Amendment in particular: to protect unpopular individuals from retaliation . . . at the hand of an intolerant society.” McIntyre v. Ohio Elections Comm’n, 514 U.S. 334, 357 (1995). Eighth Circuit law supports this ideal – especially as regard to reporters and their sources. In Continental Cablevision, Inc. v. Storer Broadcasting Co., 583 F. Supp. 427, 435 (E.D. Mo. 1984), for instance, the district court held that “news reporters enjoy a qualified privilege, derived from the first amendment guarantee of a free press, to withhold from discovery in a civil case confidential or non-confidential sources, materials, or other information where such discovery would impinge on the ability of the media to gather and disseminate news. Said privilege may be defeated in a particular case where the party seeking discovery can demonstrate that the testimony, material or information sought is relevant enough, and otherwise unavailable, to outweigh the first amendment interest of the media. A balancing analysis is the benchmark.” You have provided no such balancing.
Time will tell whether a motion to quash will be necessary.
The AIPLA recently announced that Q. Todd Dickinson will become the new Executive Director of the organization. Dickinson is widely considered the most popular PTO director in recent history. Dickinson is also an Obama supporter and would be a likely return-appointee as PTO director if the democratic contender is elected. After leaving the PTO, Dickinson took the job of chief IP counsel for GE after working as a partner at Howry LLP. Dickinson is also known for his ability to bring parties together for compromise solutions – that may bode well for patent reform issues that have begun to divide both the AIPLA and the IPO. Michael Kirk, who has successfully led the AIPLA for more than a decade, is retiring.
Thomas Claburn in InformationWeek recently published an article about the defamation cases by Eastern District of Texas attorney Eric Albritton against Rick Frenkel in his role as the Patent Troll Tracker, Cisco, and others. [Patently-O Discussion of the Case]. According to the article, Albritton has now subpoenaed Google – requesting its help uncovering facts.
The subpoena demands, inter alia, that Google turn over ‘all documents referring or relating to communications to or from (1) Richard Frenkel a/k/a/ “The TrollTraker,” (2) Dennis Crouch, individually and sub.nom. “Patently O,” … (7) the blogs [defined as Patently-O and PatentTrollTracker blogs]” regarding Albritton, the filing of the ESN lawsuit, or related TrollTracker postings.’ The subpoena also requests related Google search records (“all documents referring or relating to user searches of the internet and/or the blogs regarding (1) Eric M. Albritton…”) and other records (“all documents referring or relating to the establishment, creation, maintenance, and financial support for the blogs”).
Judge Ward to BSC Counsel: “The court has never had counsel so recklessly disregard its orders before this trial” [Smith Discusses]
David Donoghue directs us to Victoria Pynchon’s article on ‘negotiating by e-mail.’ Bottom line: e-mail negotiations increase hostility. [Article][Donoghue]
I’m looking for a legal analysis of the potential pitfalls of outsourcing of patent proseuction. Anyone? dcrouch@patentlyo.com.
Paul Caron’s Law Prof Blog Ranking puts Patently-O tied for 5th in the nation based on web site visits in the past year.
Business Method Public Scrutiny: Peer-to-patent public review of pending applications is expanding to Business Method Patents. [PTO Press Release][ http://www.peertopatent.org/ ] .
CAFC Calendar: Check out this calendar before planning your next DC trip – Perhaps you can work-in a visit to the CAFC while it is in session. [CAFC Calendar].
Triway Pilot Program: The USPTO, EPO, and JPO are beginning a pilot program to share work. In this program, each office will conduct searches and the results will be shared. [LINK].
Public PAIR Access: Although file histories are an integral part of patent analysis and are often useful as prior art, the PTO offers no search tools for PAIR access. Furthermore, the PTO has thus far prevented companies from using automated engines to obtain bulk data in order to create an accessible database. Here is the PTO’s response so far: “There are no immediate plans to remove the CAPTCHA restriction. However, we are evaluating a solution that will ease the restriction and permit limited automated access. The USPTO is committed to providing access to public data, and recognizes the urgency in implementing support for both interactive and automated access to Public PAIR. The USPTO will keep you informed and involved as we continually work to improve access to public patent information contained in the PAIR system.”
Judy Jarecki-Black from Merial Limited has been named the “Best Chief IP Counsel” by 2008″ by Global Counsel Awards 2008. Glacéau was awarded the “Best IP Counsel Team.” [LINK]
Eastern District of Texas Settlement: SAP agrees to pay $83 million to i2 Technologies. [LINK] In what appears to be primarily a trade secret case, Oracle is seeking $1 billion in damages from SAP. (Oracle’s no-patent strategy may prove successful).
Shen Wei v. Ansell Health Care (N.D. Ill 2008) (Claim Construction Issue Preclusion): The patentee lost a claim construction argument in earlier litigation against another party. In this case, Judge Guzman held that the patentee could not re-argue the construction based on collateral estoppels / issue preclusion. [LINK]
BPAI Constitutionality Problem: Representative Berman has introduced H.R. 6362 to fix the BPAI judge appointment problem by returning the duty of appointment to the “Secretary of Commerce, in consultation with the Director of the United States Patent and Trademark Office.”
No Double Secret Expedited Reexamination: In Reexamination No. 95/008,972 the PTO recently refused to give any preferential or speedy treatment of the reexamination despite pending litigation. [LINK]
World Research Group (WRG) is a new media sponsor of the Patently-O Jobs site. July 29-30, WRG is hosting the “5th Annual Conference on Patents and the Financial Services Industry.” They have assembled the top speakers in the industry. [LINK]
Several years ago, Microsoft announced its new policy of obtaining patents. As the numbers below — the software company is being successful in this push.
For a long time, monetary prizes have been offered as an alternative to patent rights as a mechanism for driving innovation. In 1714, for instance, the British Parliament offered £20,000 for a solution to the “longitude problem” – to determine the current longitude of a ship at sea. John Harrison solved that problem by creating an accurate mechanical clock set to GMT. Longitude was calculated as the difference between the ship’s local time (as measured by the sun) and GMT. [LINK]
Republican nominee John McCain recently proposed the American version: $300,000,000 “for the development of a battery package that has the size, capacity, cost and power to leap frog the commercially available plug-in hybrids or electric cars” – but that cost 30% less. The prize would be open to any company worldwide – so long as they planned to sell in the US. Although unclear, I suspect that the winner would also be able to protect its innovation through patents. In Harrison’s case, he was required to “surrender the innovation for public use.”
Unlike obtaining a patent, prize systems typically require that the technology be proven through actual monitored testing. That means the winner is more likely to bring the product to market. When thinking about this type of system, I like to compare prizes to patents and also to direct government funding (subsidy/grants). Table 1 below tells most of the story.
Patent
Grants
Prize
Success Required for Payout
Yes
No
Yes
Government Chooses Technology
No
Yes
Yes
Government Outlay of Funds
No
Yes
Yes
Provides Seed Money for Venture
No
Yes
No
Payout is driven by Market
Yes
No
No
Table 1
Notes:
Now Pending S.2210 is the “Medical Innovation Prize Act of 2007.” The act would attempt to “de-couple” the reward for pharmaceutical product research from the market price of the product. Unlike more traditional prizes, this one would not pre-select the goal. [LINK] In the mid 1990’s Economist Michael Kremer proposed that the government should buy-up important pharmaceutical patents and then dedicate them to the public.
Mullin – operator of the Prior Art Blog – may agree with the outcome of the case, but faults W.D.Wisc. Judge Crabb for keeping nearly every filed document under seal. “For three months now [Judge] Crabb has operated a secret, closed court; I’ve read through hundreds of patent dockets and I’ve never seen anything like it.” [Updated June 20]
A recent study by Federal Judicial Center researcher Robert Reagan found that settlements of patent litigation are five-times more likely to be kept sealed than are settlements in other civil cases. Robert Reagan, The Hunt for Sealed Settlement Agreements, 81 Chi.-Kent L. Rev. 439 (2006).
Stanford v. Motorola (Fed. Cir. 2008)(Non-Precedential) (“we conclude that we cannot review the district court’s order without an explanation of the basis of the court’s decision.”).
Deferred Examination I: For the current state of PTO backlog, I am a strong believer in providing a mechanism to either (i) allowing the inventor pay to move to the front of the examination line if the patent needs to be obtained quickly or (ii) allowing the inventor to delay prosecution if it is unclear whether the invented technology will have any market value. There are some potential negative issues of allowing deferred prosecution — particularly the potential for submarining and shifting claim scope to encompass market changes. These problems would largely be limited through early publication of deferred applications as well as continued enforcement of the written description and enablement requirements. In addition, the patent term should continue to run during deferment.
Deferred Examination II: In its response to congressional queries, PTO Director Jon Dudas has come-out in favor of a system that allows for deferred examination. The PTO’s tentatively proposed implementation scheme would move along a three-step process:
Allow a 14–month extendible period for responding to a notice to file missing parts.
Use a tiered payment structure that allows for delayed payment of the examination fee.
Empower Provisional Applications: Allow applicant to claim priority to a provisional application for up to five years.
Deferred Examination III: For many, including the PTO, the hope with deferred examination is that “many inventions … would be recognized as obsolete [or otherwise worthless] before expiration of the five year period and therefore would not require examination resources.”
Rocket Docket Examination: In the past, the AIPLA and others have argued against having a rocket-docket examination based simply on the payment of a fee. Their argument is that it is somehow inequitable and un-American to line-jump based on the availability of funds. That argument is largely hog-wash. Many of the richest companies in the US maintain tight controls over patent prosecution costs. I suspect those companies would only rarely pay an additional $5,000 in PTO fees for rapid examination. (If a rocket docket for patent prosecution is created, the fee should be high enough to ensure that it does not simply create an additional bottleneck.)
Clear Channel Communications now owes $90 million to Grantley Patent Holdings. The Eastern District of Texas jury found the patent willfully infringed with damages of $66 million. Last week, the Judge awarded an additional $16 million in enhanced damages in addition to prejudgment interest and interim royalties due.
Two Hong Kong companies have been fighting over a coffee maker design patent. Simatelex (who manufacturers for Sunbeam) has signed a consent decree admitting contributory infringement. The patentee’s case against Sunbeam is still pending in the Southern District of New York. Wing Shing v. Simatelex.
Obviousness Essays: Lewis & Clark has published results from its Obviousness symposium. [LINK] Papers include Duffy’s thoughts that the timing of an invention helps determine its obviousness; Mandel’s argument that KSR stinks because it does not truly account for hindsight bias; Eisenberg’s predictive analysis of KSR’s impact on pharmaceutical patent protection; and Miller’s suggestion on how courts should determine PHOSITA’s skill level.
Prior Art blog discusses Little League Trademark Infringement. [LINK]
Tracking Appeals: There is an interesting new patent litigation blog: Patent Appeal Tracker run by Kyle Fleming and Josh Ryland. They are providing a review of various pre-decision appeals.
False Marking: Matthew Pequignot is again a plaintiff in a false marking action under 25 USC 292. He has now teamed with two plaintiffs firms and filed suit in the Eastern District of Texas against Gillette and its parent company P&G. The complaint specifies 683 counts of false marking and requests the maximum $500 per “offense.” The falsity of the marking appears to be generally summarized as either (1) marking products with expired patent numbers and (2) marking products with patents whose scope do not cover the products. On the second point, some of the counts allege that the defendants marked products with patents covering a method of manufacture when the product was not manufactured according to the patent. [LINK]
False Marking Comment: There are three primary reasons to mark products with the associated patent number. (1) Legally, marking provides evidence of constructive knowledge that can increase a patentee’s damages. (2) Apart from the damage issue, the patent can also serve as at least a low-level deterrent to chill would be competitors. It will at least cost several thousand dollars to hire a patent attorney to figure out if the patents are expired. (3) Finally, the patent provides additional market credibility to customers (and perhaps investors). Continued listing of an expired patent would continue to benefit the manufacturer in the last two points — and consequently help the manufacturer maintain its market position. The key point of contention will be whether the listings were made “for the purpose of deceiving the public” as required by the statute.
Moving Forward on False Marking: If this type of litigation continues to grow, in house counsel should consider creating a system for ensuring that expired and invalid patents are no longer marked on company products. A system — even if a bit leaky — will likely serve as a good defense against false marking charges because they provide evidence of a lack of intent to deceive the public.
Like everyone else, patent attorneys like to clean their desks for the weekend and are less productive on Mondays. The chart to the right shows the percentage of patent of patent applications filed on each day of the week. (My data is from a sample of 1.4 million published patent applications filed 1999 to 2007). With the advent of electronic filing, patent attorneys are now able to file on Sunday. For published applications filed in 2007 about 1 out of every 250 was filed on a Sunday. (0.41%). 
Like everyone else, patent attorneys like to clean their desks for the weekend and are less productive on Mondays. The chart to the right shows the percentage of patent of patent applications filed on each day of the week. (My data is from a sample of 1.4 million published patent applications filed 1999 to 2007). With the advent of electronic filing, patent attorneys are now able to file on Sunday. For published applications filed in 2007 about 1 out of every 250 was filed on a Sunday. (0.41%). 
After 
The Federal Circuit: Earlier this week, the IPO sent out a flyer demanding more respect for the Court of Appeals for the Federal Circuit. In particular, the organization noted that the court should be referred to as the “Federal Circuit” not the CAFC. IPO pointed out that acronyms are for lower courts such as the BPAI, ITC, CIT, CCPA, etc. I agree with the push for respect. My problem with the “Federal Circuit,” however is that it is a poor trademark. It turns out that all appellate courts are “federal circuit courts.” 
Thomas Claburn in InformationWeek 
Business Method Public Scrutiny: Peer-to-patent public review of pending applications is expanding to Business Method Patents. [
Judy Jarecki-Black from Merial Limited has been named the “Best Chief IP Counsel” by 2008″ by Global Counsel Awards 2008. Glacéau was awarded the “Best IP Counsel Team.” [
against another party. In this case, Judge Guzman held that the patentee could not re-argue the construction based on collateral estoppels / issue preclusion. [
For a long time, monetary prizes have been offered as an alternative to patent rights as a mechanism for driving innovation. In 1714, for instance, the British Parliament offered £20,000 for a solution to the “longitude problem” – to determine the current longitude of a ship at sea. John Harrison solved that problem by creating an accurate mechanical clock set to GMT. Longitude was calculated as the difference between the ship’s local time (as measured by the sun) and GMT. [
Deferred Examination I: For the current state of PTO backlog, I am a strong believer in providing a mechanism to either (i) allowing the inventor pay to move to the front of the examination line if the patent needs to be obtained quickly or (ii) allowing the inventor to delay prosecution if it is unclear whether the invented technology will have any market value. There are some potential negative issues of allowing deferred prosecution — particularly the potential for submarining and shifting claim scope to encompass market changes. These problems would largely be limited through early publication of deferred applications as well as continued enforcement of the written description and enablement requirements. In addition, the patent term should continue to run during deferment. 
Tracking Appeals: There is an interesting new patent litigation blog: 