By Jason Rantanen
Today I'll be liveblogging from PatCon 3. For those who are interested, the substance will be after the break. I'm told that video recordings will be available for the plenary presentations.
A conversation with industry
Jim Trusell – Chief IP counsel at BP
Karen Nelson – attorney at AbbVie
Jon Wood – Chief IP Counsel at Bridgestone
Paul Rodriguez – Chief IP Counsel at RR Donnelly
Stephen Auten – Cozen O'Conner (moderator)
By Dennis Crouch
Bruce Saffran v. Johnson & Johnson (Fed. Cir. 2013)
Claim construction has become the most highly contentious issue in patent litigation. A difficulty with claim construction is that the question does not involve a yes/no answer. Rather there are a wide variety of possible constructions for any claim element. Thus, the likelihood of a court randomly picking the correct construction is quite low. And, as it turns out under the rules of de novo review, even when the lower court applies reason and evidence to the problem it it often arrives at the wrong answer. That wrong answer leads to a reversal of the claim construction on appeal. To be clear, claim construction falls in line with the normal plaintiff/defendant divide. Plaintiffs (patentees) tend to prefer no construction and just let the jury figure out whether the claims are infringed. Defendants (accused infringers) see claim construction as a mechanism for removing the case from the jury based on the technicality. Thus, most serious claim construction arguments are designed around the prospect that a favorable decision will lead to summary judgment for the defendant. Although we often hear of "overly broad" patent claims, the reality is that some defendants ask for a narrow construction in order to build their non-infringement argument while other defendants ask for a broad construction in order to build their invalidity argument. Of course, the high burden associated with proving invalidity tends to make the first approach a better strategy. In addition to the myriad potential constructions for each term, a typical patent claim has dozens of potentially disputed claims – making the combinatory possibilities quite large.
Background: This case involves Dr. Bruce Saffran's U.S. Patent No. 5,653,760 that claims the treatment of damaged living tissue by covering the tissue with a selectively permeable barrier that could be wholly introduced or applied as a spray. As designed, the device could then allow for the release of a treatment drug that would be able to pass through the membrane while larger molecules would be blocked. The specification explains that the selectively permeable membrane would be useful in the stent market in order to protect blood vessel cells as they regenerate. Saffran previously settled with Boston Scientific for $50 million. In this case he won a $500 million verdict (plus interest) against J&J for its infringing stents.
In a divided opinion, the Federal Circuit has flipped the verdict — finding that the lower court had erred in claim construction and that under the proper construction J&J's stents do not infringe.
The decision is interesting because it includes three opinions that all agree in the judgment reversal, but each disagrees as to the correct construction. In all, four judges have considered the claim construction and have come out with four different claim constructions. The basic dispute is over two claim terms:
The four judges outcome on these two questions is shown in the two-by-two table below.
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Claimed means limited to hydrolyzable bonds |
Claimed means includes chemical bonds and linkages |
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"Device" requires sheet |
Judge Lourie – No Infringement |
Judge Moore – No Infringement |
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"Device" does not require sheet |
Judge O'Malley – No Infringement |
Judge Ward – Infringement |
Whither Cybor: The Federal Circuit is currently reconsidering whether Cybor was correctly decided – i.e., whether deference should be given to the lower court claim construction ruling. If deference had been given, it may well be that Judge Ward's opinion would have carried the day – with the resulting conclusion that the $500m verdict should be upheld. As others have written, that result does not actually solve real problems — only masks them.
By Dennis Crouch
I have a policy that I don’t hire anyone who sues me. If you sued me, I would actually take that personally. So does Micron. In a letter to University of Illinois engineering professors, Micron’s hiring coordinator wrote the following:
Because Micron remains a defendant in a patent infringement lawsuit that UIUC filed against Micron in Federal court in Illinois on December 5, 2011, effective immediately, Micron will no longer recruit UIUC students for open positions at any of Micron’s world-wide facilities.
. . . . [T]he Micron Foundation has endowed chairs at the College of Engineering and has sponsored student scholarship and professor research. However, because UIUC’s suit imposes costs and risks on Micron that are inconsistent with collaborative relationships among Micron, UIUC, and its students, Micron must regrettably indefinitely suspend its recruitment of UIUC students and likewise suspend participation in other joint activities.
In the patent litigation, UIUC has alleged that Micron infringes three of its patents. U.S. Patent Nos. 5,872,387; 6,444,533; and 6,888,204 – all invented by Drs. Joseph W. Lyding and Karl Hess.
In a motion for temporary injunctive relief, the University has alleged that the email demand involved both “coercion” and “duress.”
Coercion” under Illinois law consists of overpowering another’s free will by imposition, oppression, or undue influence. In re Marriage of Flynn, 232 Ill. App. 3d 394, 401, 597 N.E.2d 709, 713, 173 Ill. Dec. 735 (1992). A demand constitutes duress when it is, inter alia, morally wrongful. Carlile v. Snap-on Tools, 271 Ill. App. 3d 833, 840, 648 N.E.2d 317, 322, 207 Ill. Dec. 861 (1995). Micron may, of course, choose not to hire the University’s students, and may choose to withhold funding from the University. However, Micron may not convey those choices to University personnel, who have nothing to do with this matter, in an obvious effort to pressure the University into dismissing the instant action.
. . . . Here, the harm in question, the pressure Micron has placed, and is likely to place, on the University, warrants redress. Such redress should take the form of an injunction that prohibits Micron from sending similarly coercive correspondence to the University.
In response to the motion, Judge Sara Darrow has denied the University’s motion for injunctive relief has a vague restraint on future speech. Citing Alexander v. United States, 509 U.S. 544 (1993) (“Temporary restraining orders and permanent injunctions—i.e., court orders that actually forbid speech activities—are classic examples of prior restraints.”). Further the University failed to show irreparable harm as required for injunctive relief under eBay.
Although the court denied the University’s motion, it did note that “Micron’s decision to shun the University’s students is without tact.”
Note here to Micron (and others), if you are ready to fund the University of Missouri Law School’s new innovation center, we are willing to work out a covenant not to sue.
= = = = =
The letter, with highlights from UIUC’s counsel.
By Jason Rantanen
Timothy Holbrook, Michael Meurer and Ted Sichelman, and Oscar Liivak, moderated by Atanu Das.
By Jason Rantanen
Chief Judge Holderman: Innovations to Improve Juror Understanding in Patent Jury Trials. (My notes from the first panel are too much of a mess to be worth posting).
Talking about how can we get rights enforced in a way that will work effectively for both the owner of the rights and the people who believe that there are other rights that the owners don't own.
By Jason Rantanen
Today I'll be liveblogging from the Loyola Law Journal Conference on Patents, Innovation & Freedom to Use Ideas. I'll be posting the full text of my entries below the break for those who are interested. Note that I don't necessarily agree with the views of all the speakers (some of whom are close to diametrically opposite). Also, keep in mind that this is very rough blogging. Don't expect elegant writing.
Keynote speaker: Dr. Richard Stallman. Speaking about patents and software.
by Dennis Crouch
Pollin Patent Licensing v. Commerce Bancshares (E.D.Mo 2013)
The following is a recent Court Order from Judge Audrey Fleissig.
IT IS HEREBY ORDERED that this matter shall be stayed pending the decision of the Federal Circuit in CLS Bank Intl v. Alice Corp., 685 F.3d 1341, 1356 (Fed. Cir. 2012), vacated, rehg granted, 2012 WL 4784336 (Fed. Cir. Oct. 9, 2012).
In the lawsuit, Pollin is asserting U.S. Patent No. 7,117,171. Although the company has asserted the patent in at least 17 different lawsuits, it does not appear that any of the accused infringers has filed a request for rexamination or inter partes review. Instead almost all of the cases have ended in settlement.
Pollin’s invention claims priority back to a 1992 application. That means that the patent is now expired. However, Pollin may still be able to collect substantial back damages – so long as the patent is not renedered invalid by CLS Bank. The 1992 invention focused being able to use a checking account to pay for a service without actually writing a check. The claims are broadly written to encompass the operation via the internet (without actually using those words).
Interestingly, it was Pollin who asked for the stay in this case.
= = = = =
Pollin’s Claim 1 is as follows:
1. A system for generating authorized payments from financial accounts belonging to a plurality of payers, in payment of debts to a payee, comprising:
input means for performing an electronic information input process wherein a system operator contemporaneously enters information sufficient to identify a new payer previously unknown to the system and information specifying a payment to be generated from an account of that payer,
said information including a financial institution identification number, payer account identifier, and an amount to be paid from said payer’s account to said payee;
an institutional database comprising financial institution identification information;
institution verification means associated with said input means for receiving said financial institution identification number and comparing said financial institution identification number to entries in said institutional database,
wherein when said financial institution is found in the institutional database, the institution verification means retrieves identifying information about the institution and verifies the accuracy of said financial institution identification number, and
wherein when said financial institution is not found in the institutional database, an error indication is generated; and
output means connected to said input means for receiving said information specifying a payment and generating in electronic information form instructions for said payment to said payee.
by Dennis Crouch
Sony of Japan v. Red Digital Cinema (C.D. Cal. 2013)
Jim Jannard founded RED Digital Camera a decade ago and the company sells professional digital video cameras for tens of thousands of dollars each. Jannard is also the founder of Oakley. As you might imagine, these cameras both work well and have style.
Sony also makes digital video cameras and has now sued Red for patent infringement. The complaint alleges infringement of seven different patents. U.S. Patent No. 5,442,718, 5,523,795, 5,999,213, 6,009,233, 6,423,993, 7,138,617, and 7,304,287. These patents all claim priority back to original applications filed in Japan.
Now, it turns out that Sony's complaint is retaliatory. In February, Red Digital served Sony with its papers alleging infringement of two patents. U.S. Patent Nos. 8,358,357 and 8,174,560. That case is ongoing in the Southern District of California. So far, neither party has filed a request for inter partes review.
In the past, Red sued Wooden Camera for infringing a design patent and trade-dress associated with knock-off accessories and 24P for a declaratory judgment of non-infringement of its Patent No. 5,334,013. Those cases both settled.
It appears that the Sony/Red litigation is currently focused in the US. However, Sony is in a position to push this dispute to a more global scale. For his part, Jannard is intimately familiar with the patent system through the hundreds of lawsuits filed by Oakley against knockoff competitors.
By Dennis Crouch
As per their usual, the folks at Brown & Michaels have provided a concise write-up to help inventors and small companies understand whether they qualify for Micro-Entity-Status and the resulting fee reduction. http://www.bpmlegal.com/howsmall.html
The basic questions are:
In addition to the Brown & Michaels site above, the next stop for further reading is the USPTO’s final rules published in the Federal Register at 77 Fed. Reg. 75019.
The big deal here is that micro-entities receive a 75% reduction in USPTO fees.
Two-Way Media v. AT&T, SA-09-c-476 (W.D. Tx. 2013)
Interesting jury verdict for Two-Way Media where a jury found that that AT&T infringes a total of seven claims coming from two different patents owned by the plaintiff and awarded $27 million in damages. U.S. Patent Nos. 5,778,187 and 5,983,005. The jury found no literal infringement but only infringement under the doctrine of equivalents.
The patents are part of a family of patents claiming a method of multicast-streaming. Infringed claim 1 is broadly written and listed below:
1. A method for transmitting message packets over a communications network comprising the steps of:
converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol,
for each stream, routing such stream to one or more users,
controlling the routing of the stream of packets in response to selection signals received from the users, and
monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.
The patent itself was subject to a third-party requested reexamination and the USPTO confirmed that all claims were patentable without amendment.
The patents themselves were originally owned by Netcast Communications. That company was founded by Jim Butterworth with the help of Antonio Monteiro. The pair received a number of patents covering various aspects of streaming technology. When Netcast closed operations, Butterworth founded Two-Way Media as the new patent holder and still runs the company. As streaming technology moved forward, these patents have become more valuable and the company has sued several others for infringement, including Akamai, Limelight, and AOL. Those cases all settled.
Among the motions in limine granted before trial, Judge Garcia ordered AT&T’s attorneys to (1) not mention the contingency fee arrangement between Two-Way and its attorneys at Susman Godfrey and (2) not use any language that would denigrate the patent system.
I suspect that we’ll have an appeal in this case that will focus on the doctrine of equivalents.
By Dennis Crouch
The number of design patent applications continues to rise. At least a portion of that rise is explained by an increase in the sophistication of design patent applicants. Rather than filing a single design patent that covers a new product release, the experts file a group of design patent applications that each claim a small portion of the overall design. Because a design patent claim is defined by the submitted drawings, each patent application will have slightly different figures. Often, the only change needed is to change portions of the drawing to either solid lines (claimed) or dashed-lines (unclaimed). This strategy has two beneficial results for the patentee: (1) competitors who copy only a portion of the product (suggestive free-riding) will still infringe; and (2) a patentees product design will still be covered by patent rights even after making small changes to the design. A second somewhat less common approach is to also file design patents on features that are closely-related but different from the patentee's actual product design. The intent is to create additional market distance for the patentee and is most effective in markets where direct knockoffs are common.
The images below come from six Gillette design patents all filed on the same day in 2012. The first drawing looks particularly at one of the designs – can see the solid lines that represent the claimed portion?
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D0674142 |
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D0674141 |
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D0674140 |
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D0674139 |
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D0674138 |
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D0673730 |
Guest Post by Tasha Francis, PhD. Tasha is a law student at the University of Michigan expecting to graduate with a J.D. later this spring.
One common way in which lawyers give back to their community is via pro bono work. In the pro bono world, a transactional lawyer typically has a general skillset allowing him or her to cover a variety of general corporate areas for a pro bono client even if the specific question at hand does not fall directly in the lawyer's field of practice. Similarly, litigators, who have experience in the courtroom, are equipped to handle a variety of cases brought by pro bono clients, such as small-claims court matters, housing, harassment, or immigration issues. However, patent prosecutors and in-house counsel who might specialize in interacting with the United States Patent and Trademark Office (USPTO), may not feel equipped to meet in the more common litigation or transactional needs of typical pro bono clients. Thus, it may not seem obvious to these attorneys how they can use their skill set to give back to the community. This article identifies a few ways in which intellectual property professionals can use their abilities to enhance their community.
Pro-bono opportunities
The Model Rules of the American Bar Association request lawyers to perform fifty hours of pro bono work per year. Lawyers can fulfill this responsibility by providing free legal services to persons of limited means or charitable, religious, civic, community, governmental and educational organizations.
One way in which intellectual property (IP) lawyers can fulfill their pro bono hours is by getting involved with local charities and helping them with their IP needs- for example, assisting them with the filing of a trademark for their organization. As patent prosecutors have familiarity with the USPTO, this would be an ideal way to help the community. Alternatively, IP lawyers can volunteer for organizations like Lawyers for the Creative Arts or Springboard for the Arts, which provide pro bono legal assistance to clients working in the areas of art, culture, media, and entertainment, including the visual, literary, and performing arts. Example projects include working with artists on copyright, trademark, or general contract issues.
For those IP lawyers interested in writing patents for under-resourced inventors and small businesses pro bono, the USPTO launched a pilot program in Minnesota last year to provide legal services to help such individuals and businesses obtain solid patent protection. Based on the success of the Minnesota program, the USPTO has instituted five new regional pro bono programs in Denver, California, Texas, Washington D.C. and New York City.
Other volunteer opportunities that qualify for pro-bono hours, include serving on bar association committees or on boards of pro-bono or legal services programs, taking part in Law Day activities, acting as a mediator or arbitrator, and engaging in legislative lobbying to improve the law. Additionally, pro-bono hours can be accrued by acting as a continuing legal education instructor. Now is an excellent time to teach your colleagues about the changes to the patent laws that recently occurred with the America Invents Act, for example.
Finally, there are a number of pro-bono intellectual property clinics emerging in law schools around the country, such as the Entrepreneurship Clinic at the University of Michigan Law School. Lawyers can serve as mentors to students participating in these programs and simultaneously fulfill their pro-bono goals.
Other ways to give back to the community
Aside from those pro-bono activities, there are other ways in which IP professionals can give back to members of the community.
For example, IP professionals interested in sharing their skills with children can team up with an elementary school class and help students gain exposure to intellectual property by helping the class enter the Intellectual Property Owner's Education Foundation video contest, which is a contest meant to teach children about the US patent system. Students submit video essays about why the patent system is important. Alternatively, the USPTO recently collaborated with the Girl Scouts to introduce a new intellectual property badge to educate Girl Scouts about inventorship and intellectual property. The USPTO and Girl Scouts are actively seeking intellectual property professionals to assist local troops in obtaining this badge.
IP professionals interested in working with older students can offer to speak with Ph.D. candidates in the science and engineering fields and explain the basics of patent law to them, so that if and when they invent something during their Ph.D. program they have an understanding of how the process works.
Furthermore, it is important to realize that knowledge about intellectual property is valuable outside of the classroom as well. For example, IP professionals could make themselves available to local inventors at forums in which they usually congregate. Examples include the local community wood and metal shop, or community meetings, such as The Ann Arbor New Tech Meetup, where entrepreneurs pitch their new business ideas. Forums such as these often contain many community members who would value basic information regarding intellectual property. (And you never know- one of those people sitting in the audience may eventually come to you with work in the future).
So even though it might not be obvious how your skills as an intellectual property professional are valuable to your local community, the above mentioned should serve as a spring board for ways in which you can give back to your community.
By Dennis Crouch
In re Hubbell (Fed. Cir. 2013)
Hubbell is the third element of a trio of recent decisions that remind-us that conception and inventorship will remain critically important even after the US patent system fully-shifts to the first-to-file regime. See Dawson v. Dawson and Rubin v. General Hospital Corp. In thinking about these cases, innovative companies may want to consider their employment agreements and their rights to patents associated with post-employment developments.
US Patent law has always recognized inventors as the original patent owners. Conception of the invention imbues the inventor with an inchoate patent right that can then be fully realized by successfully completing the patenting process. As Judge Reyna writes “Inventorship is perhaps the most fundamental question in patent law. The instant an inventor conceives her invention is the moment in which vests her right to a patent, thus perfecting her constitutional right to exclude.” (Judge Reyna in Dawson writing in dissent). Ownership of that inchoate right is usually transferred to the inventor’s employer as required by the individual employment contract. Without such a contract, the inventor retains ownership rights. Although the America Invents Act shifts some weight away from the primacy-of-invention, it does nothing to change this fundamental precept that rights are created at conception and held by the inventor until transferred.
As was the case in Dawson, Hubbell involves a situation where the inventor moved from one employer (Caltech) to another (ETH Zürich). His first-filed patent application (as a joint-inventor) is owned by Caltech and the second-filed application (as a joint-inventor with different joint inventors) is owned by ETH Zürich. It turns out that ETH Zürich did a better job of getting a patent and that patent issued in 2002. The Caltech patent application is still pending and is the subject of this appeal.
Of the two applications, the Caltech application was both the first invented and first filed. That means that the later ETH Zürich cannot serve as prior art. However, the PTO rejected the Caltech application under the doctrine of obviousness-type double patenting. The doctrine of obviousness-type double patenting is not statutory but instead a judicially created equitable doctrine Normally, this type of rejection is not fatal because the patentee can file a paper known as a terminal disclaimer that both (1) disclaims any term of enforcement that extends beyond the other patent and (2) agrees to that both patents will be co-owned throughout their lifespan. The problem here is that the patents are not co-owned and Caltech cannot make that promise.
Caltech argued that the double patenting rejection should not apply because the two applications have different owners and different inventors. As an alternative, the university argued that the equitable solution is to allow it to file the terminal disclaimer without the co-ownership promise.
On appeal, however, the Federal Circuit affirmed the PTO’s decision – holding that obviousness type double patenting applies and that Caltech cannot receive its patent without linking ownership. Writing for the 2-1 majority, Judge O’Malley highlighted multiple-suit harassment problem that served as the originating policy concerns for the limiting doctrine – writing that “the MPEP standard is consistent with the rationale we have used to support application of obviousness-type double patenting rejections.”
Judge Newman dissented – arguing that obviousness type double patenting is not available when a patent has different owners, different inventorship, and no joint development agreement. And here, Newman argues, that we have different inventorship because the lists of joint inventors are not identical.
The court today not only finds “double patenting” when there is neither common inventorship nor common ownership, but having so found withholds the standard remedy of the terminal disclaimer, and simply denies the application. This novel ruling is contrary to statute and precedent, with no policy justification for changing the law.
Under Judge Newman’s theory the patent should issue on its merits or perhaps be subject to an interference or derivation proceeding.
= = = = =
The panel notes that the reason Caltech’s application took so because the university was playing games with continuation practice and claims that are almost identical to those at issue now were allowed back in 2003. Instead of taking that patent, Caltech filed a continuation and abandoned that allowed application.
= = = = =
We do have a (slightly) open question moving forward as to whether obviousness type double patenting remains as a viable doctrine following the AIA.
By Dennis Crouch
Dawson v. Dawson (Fed. Cir. 2013)
It's a fairly rare case where you sue yourself – especially when that occurs after your death. Dr. Chandler Dawson, now deceased, was a leading eye specialist and is the named inventor of the patent applications at suit in this case. While an employee at UCSF, Dawson began working on a topical azithromycin treatment for trachoma – some of Dawson's notes from UCSF include a statement that 0.5% solution might help overcome low-solubility problems. During the process Dawson sought help from folks at InSite Vision to actually make and test the treatment. And, very quickly, Dawson left UCSF and joined InSite. Later, InSite filed two patent applications naming Dawson as a co-inventor for the use of 0.1 to 1% azythromicin to treat the eye. The InSite applications were filed in 1999 and issued in 2001 and 2003 respectively. In 2007, UCSF filed two applications in Dawson's name (without Dawson's cooperation) claiming priority back to the 1999 (InSite) application date. The PTO then declared two interferences. There is a fairly substantial amount of money at stake because the patents are listed in the Orange Book as covering ophthalmic drops known as AzaSite. An infringement lawsuit is pending between InSite and Sandoz. See InSite Vision Inc. v. Sandoz, Inc., Civil Action 17 3:11-cv-03080-MLC-LHG (Complaint filed: 26 May 2011).
So, this case is largely a battle over patent ownership and that ownership depends upon whether Dawson's conception of the invention occurred early (while an employee at UCSF) or later (while an employee at InSite). The doctrine of conception has remained fairly steady for the past 120+ years requires proof of the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986) (quoting Robinson on Patents (1890)).
UCSF as Junior Party: In interference cases (and in future derivation cases) the most important factor is often designation of the "senior" and "junior" parties. Normally, the Senior Party is the party with the earliest effective filing date and the interference (derivation) begins with a presumption that the senior party wins unless unseated by the junior party. Here, we have a filing-date tie because applicants claim priority to the 1999 application date. However, the PTO has a longstanding practice of breaking that tie by saying that the junior party is the one with the latest filing date for its involved application. The UCSF actual application was not filed until 2007 and is thus the junior party.
In the interference, the PTO Board concluded that UCSF had failed to prove Dawson's conception while at UCSF. In particular, the Board held that Dawson "did not fully appreciate how [his] idea was to be implemented in actual practice. . . . What emerges from the facts of this case is that [while at UCSF] inventor Dawson had a general idea for a future research plan to come up with a composition for topical azithromycin to be applied to the eye to treat infection."
On appeal, a divided Federal Circuit has affirmed – holding that substantial evidence supports the Board's conclusion that the invention claimed was not conceived by Dawson as of that early date. The court did suggest that Dawson's lack of testimony in favor of UCSF was a critical factor in its decision.
No Patent Rights to Pre-Conception Innovations: An important take-away from the decision is that the prior employer has no patent rights associated with ideas and innovations that fail to rise to the level of inventive conception. Although this could likely be cured through particular contract language regarding ownership of further developments stemming from work began at the prior employer. This case puts power in the hands of entrepreneurial employees who are not bound by strong contractual limitations on their post-employment activities or patenting.
Writing in dissent, Judge Reyna argued that Dawson's conception occurred while at UCSF. In particular, Reyna walked through the evidence showing that Dawson had conceived of the a process for applying an effective amount of azithromycin to an eye to treat infection in a way that fit the interference count.
Inventorship is perhaps the most fundamental question in patent law. The instant an inventor conceives her invention is the moment in which vests her right to a patent, thus perfecting her constitutional right to exclude. . . .
The majority discounts Dr. Dawson's work at UCSF as failing to achieve a fully developed idea of the invention. This conclusion reflects a misapplication of the law of conception to the facts of this case. To demonstrate conception, the law does not require that Dr. Dawson develop a working physical embodiment of his innovative idea. Indeed,
Invention is not the work of the hands, but of the brain. The man that first conceived the complete idea by representing it on paper, or by clear and undisputed oral explanation, is the first inventor, and to avail himself of the rights or priority the law only requires that he shall use due diligence in embodying his idea in a practical working machine. The sketch need not be a "working drawing." The conception may be complete, while further investigation, and perhaps experiment, may be necessary in order to embody the idea in a useful physical form.
Edison v. Foote, 1871 C.D. 80 (Comm'r Pat. 1871). While conception thus requires "the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention," Mergenthaler v. Scudder, 11 App. D.C. 264 (D.C. Cir. 1897), it does not require reduction to practice. The point of time at which an invention merits protection under the patent law is neither when the first thought occurs, nor when a practical working embodiment is completed. Rather, conception occurs
when the 'embryo' has taken some definite form in mind and seeks deliverance, and when this is evidenced by such description or illustration as to demonstrate its completeness. It may still need much patience and mechanical skill, and perhaps a long series of experiments, to give the conception birth in a useful, working form. The true date of invention is at the point where the work of the inventor ceases and the work of the mechanic begins.
Cameron & Everett v. Brick, 1871 C.D. 89 (Comm'r Pat. 1871). Here, Dr. Dawson's WHO presentation manifested an inventive embryo which thereafter sought deliverance. In his presentation, he provided a description sufficient to illustrate the completeness of his invention. All that was left was the work of the mechanic—that is, reduction to practice. This Dr. Dawson was not required to do.
Responding to the dissent, the majority suggested that the outcome turns on the standard of review since the Board's factual determinations are affirmed based upon the very low standard of substantial evidence. See In re Gartside, 203 F.3d 1305, 1311-15 (Fed. Cir. 2000). The appellate panel does not deal with the reality that conception is a question of law presumably reviewed de novo on appeal other than its fully unsatisfying statement that "UCSF failed to meet its burden of proof as to the legal issue of conception." I ask the court – What is the burden of proof for questions of law?
Guest Post by Martin Goetz
Imagine that the digital computer and the stored computer program (software) existed in the late 1800's. If so, there is a high probability that the Wright Brothers would have used a computer program to control the three-axis control system in their 1903 Flying Machine patent application. If they did, we would call the patent they received in 1906 a software patent. Further imagine that today's anti-patent zealots who preach that all software consists of abstract ideas, mental processes or mathematics were thrown back in time to the late 1800's. And finally imagine that they were successful in their stated goal to eliminate all software patents through an act of Congress. Had that really happened, the Wright Brothers would not have received a patent for what is recognized as one of the greatest inventions of the 20th century.
Think of all the great inventions in the 20th century. Many would have used a software program as they implemented and disclosed their inventions. Would we be better off today if there was no patent protection for those software inventions?
For the last 50 plus years, the nature of software and of software products has been significantly distorted by opponents of software patents. But their argument to eliminate all software patents makes no sense unless their goal is to eliminate the entire patent system.
Here's why it makes no sense….
Article 29 of the TRIPS guidelines covering "Disclosure Obligations" states "…An applicant for an invention shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention…." If the best mode includes software (a computer program), then that disclosure would describe the software through diagrams, flow charts, and descriptive text.
According to Wikipedia "there is no legal definition of a software patent". Let's look at two possible definitions.
Definition 1: If the definition of a software patent is that, if in the Disclosure of the invention, there is a description of a computer program (in whole, or in part) then the patent would be called "software patent". A "Software patent", under this definition, would be found in many industries, e.g., Software, Telecommunications, Manufacturing, Transportation, Appliances, Medical, Robotics—to name a few.
Said another way… In many industries inventions contain software programs as part of their disclosures. Take the Robotics/Medical Devices sector, where very sophisticated computer programs can control an artificial limb. How the artificial limbs are designed and constructed may be the invention. Or the invention may be how the computer program(s) interacts with the artificial limb. Or the invention may be a combination of both elements.
A more recent real life invention is the artificial retina, a robotics/medical device which offers partial vision for the blind. It's described as a camera, transmitter, and cable to video processor (software) connected to the brain.
So those that want to eliminate software patents, by design or by ignorance, would eliminate all robotic/medical device inventions where the disclosure includes a computer program.
Definition 2: Anti-Software patent zealots might argue that the definition of a "software patent" is when the disclosure of the invention only describes a computer program and a computer. And then their goal would be to have Congress change the Patent System to eliminate the issuance of "software only patents". But that would be catastrophic for the Software Industry, where many of their inventions are software only. This industry is made up of thousands of companies and is recognized as one of the top three manufacturing industries in the world .With annual worldwide revenues well over $ 300 Billion this industry needs (and wants) just as much patent protection as other industries.
Many software product companies can be thought of as high-technology manufacturing entities. Many of their products are state of the art, developed in a competitive, fast-moving environment that requires rapid response to meet user demand. Some of their products can be all software i.e., Google's search program or they could be a combination of software and hardware circuitry and/or devices i.e., Google's driverless car or the 3-D printer.
If the patent application contains a true invention it should be irrelevant whether or not the invention is disclosed as a "software only" implementation. The following are two examples of inventions from the Software Industry to illustrate my point of view
Back in November 2012 Microsoft stated in a press release "Microsoft researchers have demonstrated software that translates spoken English into spoken Chinese almost instantly, while preserving the unique cadence of the speaker's voice—a trick that could make conversation more effective and personal." Certainly the way Microsoft's researchers accomplished this complex translation is not obvious. And I have is little doubt that Microsoft will try to protect its research investment with a patent application. But its patent claims could not be that it invented "speech recognition" or "language translation", or even "voice to voice translations". Patents for Voice and Speech Recognition patents go back well over 30 years with IBM having over 200 speech recognition patents. And there have been language translation patents for many years But Microsoft could invent a new way to do voice recognition and language translations and at the same time retain the cadence of the speaker's voice. And, let's imagine, the invention would use a standard headphone and the headphone would not be part of the disclosure. Such a patent on that invention would be software only (and a computer) in its disclosure. But what if the invention needed a special set of headphones (a device), was integral to the invention, and was part of the disclosure? Is a speech recognition/translation/cadence and special headphone invention any more innovative than a "speech recognition/translation/cadence" software only invention?
In 2000, a renowned inventor, Ray Kurzweil received a patent named Reading System which Reads Aloud from an Image Representation of a Document. The patent disclosure shows a diagram of a monitor, scanner, speakers, and a PC computer composed of a processor, storage and a keyboard. The essence of the disclosure and the invention is a logic chart describing a machine system which interacts with a speech synchronizer and the various devices.
The first sentence of the abstract in the patent stated "a reading system includes a computer and a mass storage device including software comprising instructions for causing a computer to accept an image file generated from optically scanning an image of a document."
At that time, Ray Kurzweil's company, Kurzweil Educational Systems marketed a special purpose hardware/software system called the Kurzweil 3000 Reading Machine which was marketed to the blind and poor readers. They received a patent on this invention in 2000. Today the company sells a software only system called Kurzweil 3000 and continues to have the protection of the patent system through his original 2000 patent and with additional patents e.g., Reducing processing latency in optical character recognition for portable reading machine — another software only patent.
Few would argue that the Kurzweil 3000 Reading Machine was not an invention and not deserving of a patent.
What these zealots should be arguing is that many software patents issued by the US Patent Office, including most business-method patents, should never have been issued because of their obviousness. With that I heartily agree. To their credit, the Patent Office and the Courts are today grappling with how to recognize obviousness in a patent application. A very difficult challenge, to say the least.
But let's stop calling a true invention that includes a computer program in its disclosure a software patent. In fact, let's eliminate the phrase "a software patent" from our vocabulary.
END
Guest Post by Lisa Dolak, Angela S. Cooney Professor of Law at Syracuse University College of Law. Professor Dolak has written extensively on professional responsibility issues in the patent law context.
Effective May 3, 2013, the USPTO has adopted new professional conduct rules and has modified some existing rules governing the conduct of disciplinary investigations. The Final Rule is published in today's Federal Register. See Changes to Representation of Others Before The United States Patent and Trademark Office, 78 Fed. Reg. 20179 (April 3, 2013). As discussed in my previous post relating to the corresponding Notice of Proposed Rulemaking, the new professional conduct rules will replace the current ABA Model Code-based USPTO ethics rules with a version of the ABA Model Rules, versions of which have been adopted in 50 jurisdictions (49 states and the District of Columbia).
According to the USPTO, its goal is to "bring standards of ethical practice before the Office into closer conformity with the professional responsibility rules adopted by nearly all States and the District of Columbia, while addressing circumstances particular to practice before the Office." In addition to greater harmonization with state ethics rules, the USPTO indicates that practitioners will benefit from being able to reference interpretive sources applying the corresponding Model Rules, such as the Comments to the Model Rules and state bar opinions and disciplinary decisions (although it notes that "[s]uch decisions and opinions are not binding precedent relative to USPTO rules").
The USPTO reports that it received 19 responses commenting on the October 18, 2012 Notice of Proposed Rulemaking (some of which did not relate to the proposed changes), including "[m]any" that "supported the new rules and their alignment with State bar standards." Several comments related to new USPTO Rule 11.106(c), which expressly reinforces a practitioner's duty of disclosure, notwithstanding his or her confidentiality obligations ("A practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions."). In particular, according to the Final Rule, "the comments raised concerns about the balance between the practitioner's duty to disclose information to the Office and the duty to protect confidential information of third parties, including that of other clients."
In response, the USPTO noted that ABA Model Rule 1.6 cmt. 12 (2012) states that "If. . . other law supersedes this Rule and requires disclosure, [Rule 1.6](b)(6) permits the lawyer to make such disclosures as are necessary to comply with the law." (Note, though, that the Comment also acknowledges that "[w]hether such [other] law supersedes Rule 1.6 is a question of law beyond the scope of these Rules."). The implication is that the applicable "other law" here is the practitioner's duty of disclosure. By analogy, the USPTO also cites to a North Carolina Ethics Opinion (N.C. Ethics Op. 2005-9 (2006)) for the proposition that a "lawyer for [a] public company may reveal confidential information about corporate misconduct to [the] SEC under [a] permissive-disclosure regulation authorized by [the] Sarbanes-Oxley Act, even if disclosure would otherwise be prohibited by [a] state's ethics rules." The USPTO also emphasizes that the primacy of the practitioner's disclosure obligation is "not a new requirement" (citing current 37 C.F.R. § 10.23(c)(10) and Manual of Examining Procedure, 8th Ed., Rev. 9 (Aug. 2012) Ch. 2000), and states that the express inclusion in new Rule 11.106(c) of the practitioner's obligation to comply with his or her disclosure obligations notwithstanding the duty of confidentiality "may be helpful in responding to any allegation of an ethical violation before a State bar in a situation where the practitioner engaged in particular conduct to comply with this USPTO Rule."
Regarding the possibility that the potential conflict between the duties of confidentiality and disclosure could lead to a prohibited "direct adversity" client conflict, the USPTO cited the client conflicts rules, which, it noted, "would generally prevent a practitioner from accepting clients who may have potentially adverse interests." Finally, it pointed to withdrawal as the ultimate solution ("[i]n certain situations a practitioner may seek to withdraw from representation under § 11.116 to avoid a conflict of interest"). Notably, the Final Rule includes this additional statement on withdrawal as a solution to the potential disclosure-confidentiality conflict:
Solely for the purposes of enforcement under 37 C.F.R. Part 11 (Representation of Others Before The United States Patent and Trademark Office), if a practitioner has a conflict of interest in a given matter, arising from a different client, timely withdrawal by the practitioner from the given matter would generally result in OED not seeking discipline for conflicts of interest under Part 11.
In response to other comments, the USPTO:
Note that the numbering of the new USPTO rules generally tracks the numbering of the corresponding ABA Model Rules. For example, USPTO Rule 11.107 parallels Model Rule 1.7, USPTO Rule 11.201 parallels ABA Model Rule 2.1, etc. The Final Rule notes that the USPTO has (thus far) decided not to adopt the substantive changes made to the ABA Model Rules in the latest (August 2012) ABA revision, as "most States have not yet done so," but that it "will continue to evaluate the ABA Model Rule changes and adopt them as appropriate."
By Dennis Crouch
The chart below is a bit confusing, but I think that it presents some interesting data. The chart generally shows the timing of first actions on the merits (FAOMs). Most commonly a FAOM is either a non-final rejection or else a notice-of-allowance. The number of applications awaiting FAOM is typically referred to as the backlog of unexamined cases. The PTO has been focusing attention on reducing that backlog as well the timing from filing to FAOM. In addition to calculating the timing of FAOM, the PTO also offers a forward-looking prediction to applicants that estimates how long the wait will be. The chart shows both the average actual timing (red) and predicted timing (blue) of FAOMs. I can only report the predicted timing for recently filed applications (since we don't know how long it will actually take). By late 2015, we could see the backlog reduced to 12-months.
By Dennis Crouch
One of my patent law students (Marriam Lin) is working on a project that divides patent applications into two sets: (1) Those that are patented and (2) those that are abandoned without being patented. We’re looking to see whether we can identify objective factors found in the original application filing (or at least by the time of publication) correlate with the application being patented or not. This project falls in line with the papers on Valuable Patents and Worthless Patents, but focuses only on pre-issuance issues. We have a few simple measures such as the assignee, type of technology, number of inventors, size of application and claim set, and priority claims. Obviously, our result will have only a limited value since many important factors will elude our measurement. However, I have been surprised at the explanatory power of the model even in our limited approach. If you picked up a patent application, what factors would you think might help predict whether that application will eventually issue as a patent? Is there a way to objectively measure those factors?
Guest Post by Srividhya Ragavan (Professor of Law, University of Oklahoma College of Law)
The Indian Supreme Court’s verdict on the Novartis patent application has garnered a lot of attention as having set a stringent standard of nonobviousness for patents. In India, this litigation is pitched as a battle between big pharma and health aid groups.
This recent saga at the Supreme Court relates to a patent application that was originally filed in 1998 for a cancer drug named Gleevec (or Glivec, in Europe). Gleevec is the beta crystalline form of imatinib mesylate, which is the salt form of the free base and is used to treat chronic myeloid leukemia, a form of cancer. This application in India claimed priority from an earlier application filed in July 1997 in Switzerland. The application was opposed in India on the basis that imatinib mesylate was anticipated by the earlier Novartis US patent No. 5521184. As a side note, Novartis’s US application for the free base of Imatinib -which was the crystalline form —issued as a patent in the United States in 1996 owing to a 1993 filing date. When after losing the mail-box dispute, India opened its doors to a transitional mail-box application facility, Novartis filed a patent application in India in 1996. Overall, Novartis had over 35 patents over this polymorphic form of Gleevec in different countries. The application was reviewed in India in 2006 once India fully transitioned into a patent regime as required under the TRIPS agreement. Notably, even before the application was taken up by the patent office there were 5 pre-grant oppositions filed against the application!
In gist, the argument against Gleevec in India was that this application related to new form of a known substance. In pharmaceutical chemistry, a different crystalline form of the same chemical substance is called a polymorph, the patenting of which is specifically prohibited under § 3(d) in India unless it also results in enhanced efficacy. Now, § 3(d) of the Indian patent statute, the operative section reads as follows:
3. What are not inventions. – The following are not inventions within the meaning of this Act,
…
(d). the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;
In gist, India does not allow the patenting of new forms of known substances unless it also results in enhanced efficacy. The assertion in India was that the salt form for which the patent application was filed inherently existed in the original crystalline form. Considering the US patent as a prior art, the Patent Controller concluded that the application was obvious for covering a new form of a known substance under § 3(d) of the Patents (Amendment) Act of 2005.
Soon Novartis pursued an appeal to the High Court of Chennai on the grounds that § 3(d) was unconstitutional and in violation of India’s obligations under TRIPS. The Chennai High Court established that § 3(d) was indeed Constitutional and within the scope of the TRIPS agreement based on the fact that the section deals with all technologies and does not limit itself to pharmaceutical innovations. The explanation to the section becomes applicable to pharmacology inventions and works to strengthen the understanding of the overarching test. The test, the court explained cast a duty on the patent applicant to prove that the discovery had resulted “enhancement of a known efficacy of that substance.” The court added that the explanation creates a “deeming fiction that all derivatives of a known substance would be deemed to be the same substance unless it differs significantly in properties with regard to efficacy.” Thus, was born the higher standard of nonobviousness that India has embraced with such vigor. In its opinion, the Chennai High Court agreed with the patent office that Gleevec was an obvious improvement and that the applicant should prove enhanced efficacy by showing enhanced therapeutic efficacy in order to get a patent. Interestingly, Novartis filed another patent application for the alpha version of the same compound; that application was also denied.
It was during this time that the government of India issued a notification constituting the Intellectual Property Appellate Board (IPAB), which is a tribunal with judicial powers under which all patent appeals were transferred. It is important though to understand that, despite being a tribunal, the IPAB’s judicial pronouncements have gained in reputation and stature over the years. Eventually, the Novartis patent application, like the other patent appeals, landed in the hands of the newly constituted IPAB on transfer from the High Court. The IPAB alluded to the original 1993 Zimmerman Patent facilitated the formation of imatinib mesylate salt by reaction with “aliphatic sulfonic acids, such as methane -,ethane – or – 2-hydroxy ethane -sulfonic acid.” Interestingly, the IPAB clarified when nonobviousness is evaluated for a pharmaceutically active substance, in particular, the application material would finally have to be evaluated to determine whether the compositions fall within the category of “not an invention under § 3(d) of the Act.” This evaluation determined whether the new form/derivative of a known substance displayed significant enhancement in properties with regard to efficacy. Thus, the IPAB gave the impression that the § 3(d) analysis is tied to nonobviousness and not patent eligibility. In considering Gleevec, the IPAB held that the increased bioavailability of the salt of imatinib (application material) and the increased solubility did not result in increased efficacy.
Novartis preferred an appeal to the Supreme Court in 2009, the same year that the IPAB upheld the rejection of Gleevec by the Controller. The Supreme Court considered whether an invention that clears all of the requirements for an invention can be denied on the ground that § 3(d) puts it out of the category of “invention”? The manner of phrasing the question in itself suggests that § 3 is not a threshold question in India. That is, one gets the feeling that whether an application material falls within the category excluded under § 3 is determined only for inventions that cross the § 2 requirements of utility, novelty and nonobviousness. This view is further bolstered by the statement elsewhere by the Supreme Court that “in case of chemicals and especially pharmaceuticals … [of] a new form of a known substance with known efficacy, [] the subject product must pass, in addition to clauses (j) and (ja) of section 2(1), the test of enhanced efficacy as provided in section 3(d) read with its explanation.” That said, elsewhere the court, in denying that § 3 is not a provision ex majore cautela, adds that the vital distinction is between the concepts of invention and patentability. So, the conclusion perhaps is that § 3 is akin to patentability question although in practice in India, it is tagged with the nonobviousness question.
As for the specific constituents of the § 3(d) requirements, the Supreme Court clarified that the term efficacy relates to “therapeutic efficacy.” The court then went on to discuss the test or parameters for providing such efficacy noting that such proof shall be weighed on strict and narrow standards. In the case of pharmaceutical compounds, the Court noted external and internal factors should clearly demonstrate therapeutic efficacy and it should be specifically claimed and established by research data. Thus, “the mere change of form with properties inherent to that form would not qualify as “enhancement of efficacy” of a known substance.”
As for the patent itself, the court adopted a stance similar to the Controller of patents and the IPAB to hold that imatinib mesylate is represented entirely by the Zimmermann patent. It added that after the Zimmermann patent issued, Novartis applied for, and obtained patents on different forms of the substance. But, no application was made on imatinib mesylate on the non-crystalline form. The court concluded that it is because imatinib mesylate is fully a part of the Zimmermann patent and does not call for a separate patent and thus, denied the patent.
Notably, the interest and role of non-governmental organizations in India in access issues as far as intellectual property is concerned is remarkable and distinguished. Further, the country’s interest in hearing and dispensing intellectual property issues has also become notable. The Novartis litigation has showcased India’s interest and ability as far as pharmaceutical patents are concerned. This case reinforces the suspicions for the need of a higher bar to get a patent issued in India. It also proves that the power of lobby groups notwithstanding, businesses needs a dose of local reality especially in countries in India. It must take exceptionally bad market assessment to sell a drug for approximately $ 2400 for a month’s supply (against a cost of $ 160 for the same from a generic manufacturer) in a country where the per capita income is estimated at a low $ 1 to $ 10 per month for a vast majority of the population. To give a perspective, an Indian employee who earns $ 2400 per month would consider himself very well-employed. In fact, in the lower middle class (forming about 300 to 400 million people), one would be considered agreeably employed if they earned $ 2400 in a year. And, big pharma cannot hope to erase away this ground reality with its lobby power.
Thomson Reuters has a new patent – U.S. Patent No. 8,412,564 entitled System and method for identifying excellence within a profession. The patent was originally filed by the folks at Key Professional Media who later sold their “Super Lawyers” business to Thomson. The basic idea behind the patent is that – using a computer – you do a peer survey to identify a pool of candidates, then evaluate individuals within that pool based upon various objective factors (and store the information in a “data storage device”); next conduct another peer-evaluation of the select group; and finally ranking the professionals.
Claim 1 of the patent (prosecuted by) reads like a bear.
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1. A method on a processing device for identifying excellent performance of candidates within a profession group, the processing device comprising a processor, a user interface device, and a data storage device, the method comprising: creating a candidate pool by selecting individuals from a profession group, including: receiving and processing a survey of peer professionals working within the profession group, wherein the peer professionals nominate other individuals within the profession group, wherein a minimum set of qualifications exist for each of the peer professionals to provide nominations; performing independent research to identify individuals, the independent research comprising data mining to identify the individuals who satisfy predefined criteria for outstanding performance within the profession group, wherein the data mining includes querying electronic data sources containing relevant biographical information for the individuals within the profession group; and selecting candidates for the candidate pool based on a combination of the results produced by the survey of peer professionals and the independent research, wherein the combination is performed using a computer operation which removes duplicate candidates; wherein biographical information about individuals identified via the survey and the independent research is compiled for each individual within the candidate pool and stored in the data storage device; evaluating the candidates individuals within the candidate pool, including: performing, by the processor, independent research to evaluate performance of the candidates, the independent research comprising retrieval of performance information for the candidates relevant to objective criteria specific to the profession group, wherein the retrieval of performance information is performed independent of input from the individuals in the profession group and the peer professionals, and wherein the performance information is compiled for each candidate in the candidate pool and added to the information compiled for each candidate stored within the data storage device; for each candidate within the candidate pool, storing in the data storage device a score for each objective criterion based on the performance information of each candidate stored in the data storage device; for each candidate within the candidate pool, compiling with the processor a point total from the scores of each objective criterion; and identifying candidates with point totals in a first predetermined top percentage of candidates in the candidate pool; conducting peer evaluations of only the candidates with point totals in the first predetermined top percentage of candidates in the candidate pool, including: selecting peer evaluators from among the candidates having point totals in the first predetermined top percentage of candidates in the candidate pool; obtaining, from the user interface device, peer evaluation scores from the selected peer evaluators; and producing, with the processor, an averaged peer evaluation score for each candidate in the first predetermined top percentage; and identifying, with the processor, candidates in a second predetermined top percentage of candidates in the candidate pool based on a function of the point totals compiled from the scores of each objective criterion and the peer evaluation scores obtained from the selected peer evaluators. |
The patent includes several technology-focused limitations such as a processor, a user interface device, and a data storage device. Without those limitations, the method could be performed in a room of professionals with nothing other than pencil and paper. So the question is whether this patent is subject matter eligible. Does it matter that the originally filed claim was functionally the same but did not include the tech-specific limitations? Some of these questions will be answered by CLS Bank.
Via Bob Ambrogi