- Canadian IP Specialist Barry Sookman has written an analysis of the world’s “most popular intellectual property and technology law blogs” on his eponymous blog: http://www.barrysookman.com/.
- 23 Killer Business Lessons from Shark Tank: http://www.bradaronson.com/shark-tank/
- The FTC has released Google from its antitrust investigation with a “wrist slap.” More from Wired; WashingtonPost; and WSJ. Regarding its industry-standard patents (largely inhereted from Motorola), Google promised again to license those patents in a manner that complies with its FRAND promise of “fair, reasonable and non-discrimantory” terms. Google also promised to commit to binding arbitration of license rates.
Bits & Bytes
- Canadian IP Specialist Barry Sookman has written an analysis of the world’s “most popular intellectual property and technology law blogs” on his eponymous blog: http://www.barrysookman.com/.
- 23 Killer Business Lessons from Shark Tank: http://www.bradaronson.com/shark-tank/
- The FTC has released Google from its antitrust investigation with a “wrist slap.” More from Wired; WashingtonPost; and WSJ. Regarding its industry-standard patents (largely inhereted from Motorola), Google promised again to license those patents in a manner that complies with its FRAND promise of “fair, reasonable and non-discrimantory” terms. Google also promised to commit to binding arbitration of license rates.
Federal Circuit Judicial Nomination Watch
By Dennis Crouch
Failure to Confirm: We all still remember Paul Michel as Chief Judge of the Federal Circuit, but it wasn't yesterday that he stepped down. Rather, we are nearing the three anniversary of his 2010 retirement (as a Federal Judge). In 2010, President Obama nominated Edward DuMont to replace Judge Michel. However, DuMont's nomination floundered. In 2011, President Obama nominated Richard Taranto for the post. However, the Senate has now failed to confirm Taranto's nomination. I expect that President Obama will re-nominate Taranto this month – giving the Senate another two years to consider filling the slot. No Senator has voiced any opposition to Taranto's nomination.
Two additional Openings: President Obama has not yet nominated a replacement for Judge Richard Linn who took Senior Status on November 1, 2012 after thirteen years in office. In addition, Judge William Bryson is scheduled to take Senior Status on January 7, 2013.
Future Openings?: Judges Newman, Lourie, and Dyk are all eligible for senior status.
Over the past two years, Judges Newman, Bryson, Linn, & Dyk have shown the highest propensity for participating in a panel opinion that includes a dissent. Judge Newman continues to be the most frequent dissenting author, followed by Judges Dyk and O'Malley. These results are shown in the chart below that includes results from all Federal Circuit opinions coded in Westlaw (CTAF) for 2011-2012.
Patents per year
by Dennis Crouch
The chart above is titled USPTO Patent Grant Rate. For this post, the "grant rate" refers to how many patents are being granted rather than the percentage of applications that are patented. The chart itself shows an annualized grant rate calculated on a 20-week moving average. In addition, I color-coded the chart to identify the name of the USPTO Director at the helm for each date. Because of the backward-looking 20-week average, calculations in the early months of any Director's term will include some patents issued during the term of a prior director.
The chart generally has an upward trend that corresponds with an increase in the number of patent applications being filed and patents being issued. That information can also be found in charts that only show annual information. This chart is intended to move to a deeper level of granularity to identify trends within a given year. The chart shows a number of peaks and valleys that each have an interesting story.
Federal Circuit Statistics – FY 2012
By Jason Rantanen
Each year the Federal Circuit provides caseload statistics. The court recently released the statistics for FY 2012 (October 2011-September 2012). In terms of overall caseload, the number appeals filed with the court continued to rise, although it remains well below the numbers of appeals filed from 2002-2007.
Source: http://www.cafc.uscourts.gov/the-court/statistics.html
As with last year's increase, this increase largely appears to be due to an increase in the number of patent infringement appeals. The next charge shows that appeals from district courts rose while appeals from most other areas actually declined slightly. According to the court, 471 patent infringement appeals from the U.S. District Courts were filed in FY 2012, up from 426 in FY 2011.
Source: http://www.cafc.uscourts.gov/the-court/statistics.html
One question that people invariably ask about a pending appeal is "How long will it take for the court to issue its opinion?" While there's no answer that can be offered with certainty other than "it varies," the below chart offers some guidance. It also suggests one of two things: either the court's median time to disposition in patent-related appeals is inching upward slightly, or the court is using less Rule 36 summary affirmances in those appeals. For similar reasons, the below data should be read with some caution, as it (presumably) includes two distinct cohorts: appeals disposed of through Rule 36 affirmances (which issue shortly after the scheduled date for oral argument) and appeals for which the court writes a substantive opinion (which generally issue much later). Consequently, the median time to disposition for the cohort of summarily affirmed appeals is probably much less than the indicated median while the median for the remaining appeals is probably greater.
Based on data obtained from http://www.cafc.uscourts.gov/the-court/statistics.html
2012 Trends: New Life in the Doctrine of Equivalents
Guest post by Donald S. Chisum, Chisum Patent Academy
Looking back at the approximately 125 precedential decisions on patent law of the Federal Circuit in 2012, I asked myself: are there any new trends? One trend smiled back: an increase in the number of decisions on the doctrine of equivalents. There were eight, and, surprisingly, four of them showed judicial favor toward application of the doctrine.
Since 1997, the Federal Circuit, with the encouragement of the Supreme Court, has developed various restrictions and limitations on the doctrine. This has led some commentators to assert that the doctrine of equivalent is “dead.” See Allison & Lemley, The (Unnoticed) Demise of the Doctrine of Equivalents, 59 Stan. L. Rev. 955 (2006-2007). That obituary may have been premature. The Supreme Court created the doctrine in 1850 and twice rejected frontal assaults: in 1950 and 1997. The 2012 Federal Circuit decisions show that well supported assertions of equivalency cannot be dismissed.
In particular, Chief Judge Rader wrote two opinions, expanding beyond what was necessary to decide the cases before him. In one, he emphasized that “the Supreme Court declined to let numerous contentions bury the doctrine.” Deere & Co. v. Bush Hog (Dec. 4, 2012). In Deere, Judge Rader attempted to clarify “misperceptions” about the “vitiation” limitation on the doctrine of equivalents. For a comment on Judge Rader’s discussion of vitiation, see Dennis Crouch, Reviving the Doctrine of Equivalents, Patently-O at https://patentlyo.com/patent/2012/12/rader-reviving-the-doctrine-of-equivalents.html.
In the other case, Judge Rader stressed that the doctrine is particularly appropriate when an accused equivalent is made possible only by technological improvements after a patent’s effective filing date. Energy Transportation Group v. William Demand Holdings (Oct. 12, 2012). Judge Rader has long espoused the view that the doctrine should be available when equivalents are not foreseeable but not when the opposite was true. A competent draftsperson should write claims to cover literally equivalents that were foreseeable at the time the application for the patent was prosecuted.
Also significant were two opinions by other judges. In one, the court addressed the recurring issues of equivalency applied to numerical and range limitations and to qualifiers such as “substantially.” Pozen Inc. v. Par Pharmaceutical (Sept. 28, 2012). The majority, by the recently-appointed Federal Circuit Judge Wallach, held that a claim, which required that a drug tablet layer have “substantially all” of an ingredient, and which was construed to mean “at least 90%,” was properly found infringed by equivalency by an accused tablet that had only 85% of the ingredient in the layer.
In another case, the court, in an opinion by Judge Prost, held that a district court erred in applying the “disclosure-dedication” rule and thus erred in granting summary judgment of no infringement under the doctrine of equivalents. Sandisk Corp. v. Kingston Technology Co., Inc. (Oct. 9, 2012).
In the other four cases, the Federal Circuit concluded, essentially, that asserted equivalents were not sufficiently equivalent or involved completely missing claim limitations or failure to claim literally well-known interchangeable elements. Technology Patents LLC v. T-Mobile Ltd. (Oct. 17, 2012); Mirror Worlds, LLC v. Apple Inc. (Sept. 4, 2012); General Electric Co. v. U.S. Int’l Trade Comm’n (July 6, 2012); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC (June 22, 2012).
One may ask: why would there be renewed judicial interest in the doctrine of equivalents? One possibility: developments in other areas of patent law, such as the “abstract idea” restriction on Section 101 patent eligible subject matter, are creating pressures on patent applicants to formulate claims that are specific and narrow in literal scope. Courts may use a more robust doctrine of equivalents to provide a scope of protection that is determined to be appropriate in view of the patent’s disclosure, the prior art, and the development of the pertinent technology after a patent’s effective filing date.
H.R. 6621 as amended passed in the House late last night. It is expected that President Obama will sign the bill today before a new Congress begins on January 3, 2013.
More here: http://hdl.loc.gov/loc.uscongress/legislation.112hr6621
Abandoning Provisional Applications
By Dennis Crouch
This post is a follow-up on my November 2012 discussion of provisional rights entitled Provisional Patent Applications as a Flash in the Pan: Many are Filed and Many are Abandoned.
Provisional patent applications continue to be more popular than ever. In FY2012, more than 160,000 provisional patent applications were filed – a new record. Although the number of provisional applications continues to rise, applicants have also been abandoning more of these provisional applications without relying upon them for priority. The bar chart below helps to show this result. The red bars represent the number of provisional applications filed each fiscal year. The blue bars represent the number of provisional applications filed in a given fiscal year that are relied on as a priority document – either in a US non-provisional application or an international PCT application. The difference between the two charts is the number of provisional applications abandoned without being used as a priority document. (Note – reliance/abandonment information is not yet available for FY2012 because those applications have not all been pending for at least one year.)
The second chart (labeled Abandoning Provisional Applications) reformats the information from above to show the percentage of provisional applications that are abandoned without being relied upon as a priority document.
What is apparent from the chart below is a greater percentage of provisional applications are being abandoned without reliance each year. I should note here that my prior estimate of 50% being abandoned was close but still an over-estimate. Rather, 48% of provisional applications filed in FY2011 were abandoned without being relied upon as a priority document.
As I previously wrote, the significant and growing number of provisional that are abandoned-without-reliance is a sign that patent applicants are very much using the non-provisional/PCT application filing as a culling point. These are big numbers – for FY2011 we're talking about over 72,000 provisional applications that are lost in the wind.
Happy New Year!
Carnegie Mellon v. Marvell: Another $1b verdict.
By Dennis Crouch
Marvell's stock price plunged about 10% following news that a jury had awarded well over $1 billion patent infringement verdict to Carnegie Mellon University. Download MarvellVerdict. The verdict is based upon finding of direct literal infringement of claim 4 of Patent No. 6,201,839 and claim 2 of Patent No. 6,438,180. The CMU hometown Pittsburgh jury also found that Marvell induced infringement by encouraging customers to use its chips. Regarding validity, the jury held that the asserted claims were neither anticipated nor obvious. One of the key pieces of evidence in the trial was an old email from a Seagate engineer noting that the CMU invention went well beyond the current state of the art. (Of course, that email was focused on advances found in the disclosure rather than the broad claims asserted by CMU.) Seagate was apparently happy to provide that document to be used against its market competitor. It is that same Seagate engineer's prior patent application that served as the core of Marvell unsuccessful invalidity argument.
An interesting element of the verdict involved particular willfulness questions. The jury particularly held that (1) Marvell knew of the asserted patent before the lawsuit; (2) had no reasonable defense for its actions; and (3) knew or should have known that its actions were infringing. The verdict did not, however, ask whether the action was "willful." CMU will ask the court to rely upon those answers to treble the damage award. If the damage award is trebled (tripled) and interest added, the award will be roughly equivalent to Marvell's $3.8b market valuation. (The award is larger than CMU's current endowment.) In the initial complaint, CMU also requested attorney fees and a permanent injunction.
This is the second billion dollar judgment against a Quinn Emanuel client awarded in the past few months.
Marvell has announced that it will prevail on appeal. In a pretrial ruling, district court judge Nora Fischer denied Marvell's motion for summary judgment of anticipation, but noted that it was a "close call" based upon her construction of the asserted claims. Marvell did not exercise its authority to seek a reexamination of the patent at the USPTO. Over the next six months, both parties will file and respond to post-verdict motions. Judge Fischer announced her intention to make a final ruling in the case in May 2013. If the verdict is confirmed by Judge Fischer, Marvell will then have an opportunity to appeal after posting a "supersedeas bond." If the damage award is roughly equivalent
The asserted patent claims are basically signal processing logic algorithms for determining the value of items coming from a computer memory signal. This is necessary because the "0" and "1" that we normally talk about for binary digital signals is not actually accurate. In particular, the invention indicates that you should apply a "signal dependent" function to calculate the value as a way to overcome noise in the signal. Apparently a key distinguishing factor from the prior art is that the decoding functions used are "selected from a set of signal-dependent functions." The asserted claims do not identify the particular functions used, only that functions are used.
The two infringing claims are as follows:
Claim 4 of US Patent 6,201,839:
A method of determining branch metric values for branches of a trellis for a Viterbi-like detector, comprising:
selecting a branch metric function for each of the branches at a certain time index from a set of signal-dependent branch metric functions; and applying each of said selected functions to a plurality of signal samples to determine the metric value corresponding to the branch for which the applied branch metric function was selected, wherein each sample corresponds to a different sampling time instant.
Claim 2 of US Patent 6,438,180 (Claim 2 is dependent from Claim 1 and I combined the two together):
A method of determining branch metric values in a detector, comprising:
receiving a plurality of time variant signal samples, the signal samples having one of signal-dependent noise, correlated noise, and both signal dependent and correlated noise associated therewith; selecting a branch metric function at a certain time index; and applying the selected function to the signal samples to determine the metric values, wherein the branch metric function is selected from a set of signal-dependent branch metric functions.
Folks focused on subject matter eligibility issues will notice the obvious problems raised by the asserted claims.
Technical Amendment H.R. 6621
H.R. 6621 has passed in the Senate, but only after the Senate eliminated section (m) of the bill that would have brought to light information regarding the hundreds of "pre-GATT" patent applications that have been pending since 1995. According to Capitol Hill rumors, well known patentee Gil Hyatt was able to convince one Senator to put a hold on the bill that would have eliminated possibility of passage barring the amendment. Hyatt apparently has a number of applications pending that claim architecture and logic design of very basic integrated circuits. There are several hundred of these pre-GATT applications pending. The majority are apparently ones delayed because of Department of Defense secrecy orders. However, a substantial number would be properly classified as submarine patents whose existence is currently unknown but that potentially claim a broad scope of coverage that could potentially cover elements of an entire mature industry (such as integrated circuits). Because the Senate amended the bill, it must be passed again by the House and signed by the President before conclusion of the term.
EFF: Limit Software Patents
Guest Post by Julie Samuels. Samuels holds an endowed chair at EFF aptly named the Mark Cuban Chair to Elimiate Stupid Patents. EFF's brief in the CLS Bank case is available here: /media/docs/2012/12/eff–iso-cls.pdf.
Since the Supreme Court’s 2010 Bilski ruling, the Federal Circuit has been consistent on only one point in its § 101 jurisprudence—and that’s on being inconsistent. In the face of the Federal Circuit’s failure to provide a workable § 101 standard, the Supreme Court issued its unanimous ruling in Mayo v. Prometheus, essentially telling the Federal Circuit to take the patentable subject matter inquiry seriously. Yet the Federal Circuit paid no heed when it issued ruled in CLS Bank v. Alice, all but ignoring the Supreme Court (for many of us court watchers, the Federal Circuit’s failure to address Mayo was shocking; even Judge Prost, in her dissent, admonished the majority for “fail[ing] to follow the Supreme Court’s instructions—not just in its holding, but more importantly in its approach.”).
So it really was no surprise when the Federal Circuit agreed to take CLS en banc. We, along with many others, hope that this case would provide the Court an opportunity to head the Bilski Court’s warning that:
The Information Age empowers people with new capacities to perform statistical analyses and mathematical calculations with a speed and sophistication that enable the design of protocols for more efficient performance of a vast number of business tasks. If a high enough bar is not set when considering patent applications of this sort, patent examiners and courts could be flooded with claims that would put a chill on creative endeavor and dynamic change. (130 S. Ct. at 3229).
As currently interpreted, § 101 leaves parties unable to discern a patent’s metes and bounds or assess its validity, making inadvertent infringement an unfortunate cost of doing business. This has led to a dangerous and dramatic increase in patent litigation, particularly surrounding business method patents or those covering software. For better or worse (and I think worse), the major uptick in these cases involved non-practicing entities. Some data that we included in our amicus brief filed in CLS Bank:
- From 200-2002, NPE litigation accounting for only about five percent of patent litigation;[1] in 2007 that figure was 22 percent and in 2011 it was 40 percent.[2]
- Litigation surrounding software patents has also greatly increased:
![6a00d8341c588553ef017c34cf3367970b-pi[1]](https://cdn.patentlyo.com/media/images/2012/12/6a00d8341c588553ef017c34cf3b69970b-pi.jpg "6a00d8341c588553ef017c34cf3367970b-pi[1]")
- For the first time in 2011, spending by both Apple and Google on patents exceeded the firms’ spending on new product research and development.[4]
- NPEs now disproportionately target small companies; at least 55% of unique defendants sued by NPEs make under $10 million a year.[5]
These statistics are a direct result of the legal instability surrounding § 101. One way to stem this problem is to create incentives for those facing litigation (or litigation threats) to pursue their meritorious defenses of noninfringement and invalidity. Section 101 could play that role, in fact, the Mayo Court seemed to state as much: “to shift the patent-eligibility inquiry entirely to these late sections [§§102, 103, 112] risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do.” 132 S. Ct. at 1304.
Yet no version of recent § 101 jurisprudence offers much hope of settling the law. Instead, we recommended in our brief (filed along with Public Knowledge) that the Federal Circuit take another route and adopt a stricter construction of § 112(f), as recently proposed by Prof. Mark Lemley. Specifically, instead of attempting to figure out whether a broad, functional claim is abstract or not, a court may first use § 112(f) to narrow the claim to the structures and their equivalents recited in the patent and then, if questions remain, make a § 101 inquiry.
While § 112(f) has traditionally been applied to apparatus claims, it’s clear that Congress intended it to apply to method claims as well. Despite this, software patents often do not detail actual algorithms or explain how to actually carry out the methods they attempt to claim; as such they should be indefinite under cases like Aristocrat Techs. v. Int’l Game Tech. If the claims do specify the algorithms, then the § 101 inquiry will be limited to those algorithms and their equivalents. These questions—of whether §112(f) applies; if it does, how the claims should be limited; and then if § 101 permits that narrowed claim—could all be accomplished at early stages of litigation, before expensive discovery and motion practice.
[1] James Bessen, Jennifer Ford and Michael Meurer, The Private and Social Costs of Patent Trolls, Boston Univ. School of Law, Working Paper No. 11-45, 2011 (“Bessen 2011”), at 6.
[2] Sara Jeruss, Robin Feldman & Joshua Walker, The America Invents Act 500: Effects of Patent Monetization Entities on US Litigation (2012) at 5, 25.
[3] James Bessen, A Generation of Software Patents, Boston Univ. School of Law, Working Paper No. 11-31 (June 21, 2011), at 19
[4] Zak Islam, Smartphone Industry Spent $20 Billion on Patents in 2011, tom’s hardware (October 9, 2012), http://www.tomshardware.com/news/Patents-Smartphone-Apple-Google-Motorola,18231.html
[5] Colleen Chien, Startups and Patent Trolls, Santa Clara Univ. School of Law, Accepted Paper No. 09-12 (September 28, 2012)
Expediting Prosecution: Comparing Track 1 Prioritized Examination, Accelerated Examination, the Patent Prosecution Highway, and Petitions to Make Special Based on Age
Max Colice, Matthew A. Smith, and Andrew Cheslock, Foley & Lardner LLP[1]
The USPTO’s new Track 1 Prioritized Examination program allows an applicant to reach final disposition (allowance, final rejection, abandonment) within 12 months of filing. To qualify for this program, an applicant must file a simple, one-page petition and a $4800 petition fee ($2400 for small entities). According to the USPTO’s Track 1 website, the current pendency to final disposition is just over 5 months.[2] But how does Track 1 compare to the USPTO’s other programs for expediting examination?
Right now, the USPTO offers three other programs for expediting examination of utility applications: Accelerated Examination (AE), the Patent Prosecution Highway (PPH), and Petitions to Make Special based on an applicant’s age or health. Like Track 1, AE’s goal is to reach final disposition within 12 months of filing. Unlike Track 1, an applicant pays only a nominal petitions fee, but must conduct a search and submit an accelerated examination support document characterizing the search results. The PPH, in contrast, does not require a fee or a support document; rather, the applicant files a PPH request based on an allowance or favorable search report from a corresponding foreign or PCT application (if necessary, the U.S. claims must be amended to “sufficiently correspond” to the allowable foreign claims.) According to the USPTO, examination of a PPH case should begin about 2–3 months after the PPH request is granted.[3] And unlike the Track 1 and AE petitions, which must be filed with the application, a PPH request can be filed any time before examination begins. Petitions to Make Special based on an applicant’s age or health are free, but apply only to those applicants older than 65 or in very poor health.
Which of these programs is the best? To answer that question, we reviewed approximately 350 applications filed in these programs since 2006 (the Track 1 applications date only from that program’s institution on September 26, 2011.) We then determined the average and median times from effective filing date to date of allowance for the allowed applications in our sample, plus the standard deviation in these times:
Days from Effective Filing Date to Allowance
|
Program |
Mean |
Median |
Standard Deviation |
|
Track 1 Prioritized Examination |
184 |
207 |
101 |
|
Accelerated Exam (AE) |
317 |
248 |
292 |
|
Patent Prosecution Highway (PPH) |
565 |
543 |
215 |
|
Petition to Make Special Based on Age |
806 |
675 |
575 |
We found that the Track 1 applications were allowed on average 184 days after the application’s effective filing date, compared to 317 days for AE, 565 days for the PPH, and 806 days for applications made special based on an applicant’s age.[4] For reference, the average application pendency across non-expedited applications in 2011 was about 1240 days (1022 days when counting RCEs as new filings).[5] The data were clear: for the allowed applications in our sample, Track 1 was the fastest.
But that is not the whole story. Despite its relatively high up-front cost, Track 1 applications may also be the least expensive to prosecute, especially for small entities. To estimate prosecution costs, we tabulated the mean number of office actions for the allowed applications in our sample. Multiplying the mean number of office actions by an estimated cost to the applicant for preparing and filing a response and adding the extra petition costs, if any, yields an “expectation cost” for each program. We did not account for RCE costs because there were less than 3 office actions, on average, per application in each program.
We found that, on average, there were only 1.2 office actions to allowance for the Track 1 applications, 1.3 office actions for PPH applications, 1.7 office actions for AE applications, and 2.2 office actions for applications made special based on an applicant’s age. (For reference, the USPTO averages about 2.7 office actions per final disposal for other cases.[6]) If the cost of responding to an office action is about $2600 per recent AIPLA data,[7] then the expectation cost of filing and prosecuting a Track 1 application at large entity rates is $7920 (i.e., 1.2 × 2600 + 4800). In contrast, the expectation cost of filing and prosecuting an AE application is about $4420 plus the cost of conducting the pre-examination search and preparing the AE support document. If the cost of conducting the search and preparing the support document exceeds $3500, then filing and prosecuting a Track 1 application should, on average, cost less than filing and prosecuting an AE application.
In fact, the benefit of Track 1 for small entities may be even greater. At small entity rates, the expectation cost of filing and prosecuting a Track 1 application is only $5520. This means that Track 1 should be less expensive, on average, than AE if the cost of the search and the support documents (which does not change with entity size) is more than $1100 (the difference between the $5520 Track 1 expectation cost for small entities and the $4420 expectation cost for prosecuting an AE application). According to the AIPLA 2011 Economic Survey, a novelty search is about $2000, which suggests that Track 1 may be less expensive on average than AE for small entities.
For small entities, a Track 1 application has a good chance of being cheaper to prosecute than a regular application. Assuming 2.7 office actions on the normal track at a cost to the applicant of $2600 per office action, the expectation cost of prosecuting a normal application is $7020. Conversely, the expectation cost of prosecuting a Track 1 application for a small entity is only $5520—including the Track 1 petition fee. Of course, the applicant should expect to incur all of the costs for a Track 1 application within 12 months (or less) instead of over 2–3 years (or more) as would be the case with a normal application.
In sum, Track 1 examination appears to be significantly faster on average than the USPTO’s other programs for expediting examination. Surprisingly, prosecuting a Track 1 application may cost less than prosecuting an AE application even accounting for the large fee for participating in the Track 1 program.
[1] The authors are attorneys at Foley & Lardner LLP. This article reflects the views of the authors and not necessarily the views of Foley & Lardner LLP or its clients.
[2] http://www.uspto.gov/patents/init_events/Track_One.jsp
[3] http://www.uspto.gov/patents/init_events/pph/pphbrochure.pdf
[4] For comparison purposes, current Director Kappos recently quoted an average of 153 days to “final disposition” for Track 1 cases, with an allowance rate of about 50%. The term “final disposition”, of course, includes a variety of actions other than the allowances in our study.
[5] https://patentlyo.com/patent/2012/03/total-patent-application-pendency.html
[6] http://www.uspto.gov/ip/global/patents/PPH_slides_for_WS_RT_(2).ppt
[7] The AIPLA 2011 Economic Survey gives response costs, in 2010, of $3000 for relatively complex electrical, computer, biotech and chemical cases; $2500 for relatively complex mechanical cases; and $1850 for minimally complex cases.
Countdown to March 16, 2013
by Dennis Crouch
New patent applications filed three months from now will fall under the US new First-to-File regime created by the America Invents Act of 2011. Those applications will no longer be able to claim invention-date priority, will have much more limited pre-filing grace period, will be subject to prior user rights and broad post-grant review, and can be invalidated by public uses and sales of similar inventions in foreign countries. On the other hand, absent a derivation problem, secret prior invention or reduction to practice by a third party will no longer be relevant to patentability.
How are you preparing for this March 16, 2013 changeover?
Patents Issued Per Year
This includes final numbers for 2012
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Recent Design Patent Litigation
By Dennis Crouch
- D. 624,501 –a dual USB adapter owned by Ever Win International. Ever Win's product is available from Amazon for $20 and is allegedly being infringed by similar devices being sold at CVS and other locations.
-
Mr. BD Kidd has sued Home Depot and others for infringing his Patent No. D.646,537 covering a crimping tool that fits in your pocket.
- Nebo's No. D.659,869 covers these funky flashlights that are allegedly being infringed.
- Jugs Inc. owns No. D.451,566 that covers a five-position batting practice tee that is allegedly being infringed by Wilson's and others. Wilson's has asked for a declaratory judgment of invalidity alleging that it began using its version of the product (shown in yellow) in 1996, five years before the patent's 2001 priority date.
. 
- Oakley has again asserted its D. 397,350 that covers eyeglass fronts.
- Lulumon has asserted its Design Patent No. D.645,644 against Calvin Klein. Klein immediately caved.
Patent Law Treaties Implementation Act of 2012 becomes Law
By Dennis Crouch
President Barack Obama has now signed-into-law the Patent Law Treaties Implementation Act of 2012, Pub. Law 112-211 (December 19, 2012). The new law contains two titles that provide domestic law required to implement a treaty.
- TITLE I–HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS
- TITLE II–PATENT LAW TREATY (PLT) IMPLEMENTATION
In the grand scheme of patent law, neither treaty is especially substantive. However, the Hague Agreement will likely have a much more substantial impact on the practice of protecting design rights on a global scale. In particular, the Hague Agreement creates a direct connection between US design patent application filing and European (and other) design right registration application and allowing a combined international application. The Hague Agreement implementation has a (likely) one-year effective date and will apply to applications filed after the effective date.
A draft mark-up and commentary can be downloaded here: /media/docs/2012/12/PLT.pdf
BPAI Backlog and its Hopeful Trajectory
by Dennis Crouch
The PTAB continues to show signs of taking control of its ex parte appeals docket. The backlog of cases has remained fairly steady for the past nine months. The hope is that the trajectory will fit to a second-order polynomial with the backlog beginning to decrease substantially over the next two years. More than hope, the PTAB continues to hire more judges to work in Washington DC as well as in Detroit, Dallas, and San Jose. As these judges come online, the Board’s potential throughput will continue to increase. Of course hope can only sustain us for so long.
In re Rosuvastatin Calcium Patent Litigation
By Jason Rantanen
In re Rosuvastatin Calcium Patent Litigation (Fed. Cir. 2012) Download 10-1460
Panel: Newman (author), Plager (concurring), Mayer (dissenting)
This appeal arises in the context of the patent war over rosuvastatin, a multi-billion dollar pharmaceutical product sold by Astrazeneca under the name CRESTOR. At issue on appeal was the central component of Astrazeneca's protection for rosuvastatin: the composition patent (RE 37,314). The short version is that Astrazeneca has won for the time being: the Federal Circuit ruled in favor of Astrazeneca on all issues. However, the composition patent is set to expire in 2016, and Astrazeneca previously failed in its bid to enforce its later-expiring method-of-use patents against the generic manufacturers.
Reissue: The '314 patent is a reissue of Patent No. 5,260,440, whose specification describes rosuvastatin as the preferred embodiment. During the prosecution of the '440 patent, the prosecuting attorney became aware of two potentially relevant prior art references through an internal search report. The prosecuting attorney did not disclose the references to the PTO, however (no IDS was filed at all), and when the '440 patent issued the patent contained a broad genus claim that overlapped with one of the references.
Several years after the patent issued, it was discovered during licensing negotiations that no IDS had been filed during prosecution of the '440 application and that the examiner had not cited the two references. The patent holder initiated reissue proceedings, which ultimately resulted in the patent being limited to the specific compound rosuvastatin and its salts.
In addition to raising an inequitable conduct argument (which the court rejected on lack of intent grounds), the defendants argued that reissue was improper because there was no error and because there was deceptive intent. While the AIA removed the statutory requirement that the error providing the basis of the reissue occur "without any deceptive intention," this opinion is significant for its broad interpretation of what constitutes "error" in the context of a reissue, an issue that will have ongoing importance:
Precedent establishes that for reissue purposes “error is established where there is no evidence that the appellant intentionally omitted or abandoned the claimed subject matter.” Ball Corp. v. United States, 729 F.2d 1429, 1435–36 (Fed. Cir. 1984). Here, the district court found as fact that Shionogi erred by failing to file an IDS citing the Sandoz and Bayer references, and by omitting a specific claim to the preferred species. However, the court found no evidence of a deliberate choice to omit or abandon the rosuvastatin species, which was described in the specification as the most effective product.
Slip Op. at 21. The court further noted that past precedent supports the practice of narrowing claims through reissue.
On deceptive intent (which will still be relevant for any reissue proceedings initiated prior to September 16, 2012), the majority held that deceptive intent for reissue purposes applies the same standard as deceptive intent in the inequitable conduct context.
Judge Mayer, writing in dissent, disagreed that reissue was proper. "A patentee cannot establish correctible "error" under section 251 simply by demonstrating that his original patent contains a defect…Instead, reissue is warranted only where a patentee "supplies…facts indicating how…ignorance," accident, or mistake caused an error in his claims." Dissent at 6-7. He also expressed concern about the consequences of the majority's broad reading of "error":
The claims of a validly-issued patent serve an important notice function, alerting the public of the metes and bounds of an inventor’s discovery. [] This public notice function will be subverted if the “error” requirement is read out of the reissue statute and patentees are given free reign to rewrite their claims whenever they find it expedient to do so. []
Dissent at 13 (citations omitted).
ANDA Filing by a US Subsidiary "On Behalf Of": One of the generic manufacturers, Apotex, raised a creative theory of noninfringement. Apotex Corp. is a United States affiliate of the Canadian Company Apotex Inc. The Abbreviated New Drug Application that triggered the infringement suit was signed and filed by the US affiliate on behalf of the Canadian company. Given this arrangement, Apotex raised a number of arguments supporting the theory that the US affiliate did not "submit" the ANDA within the meaning of the infringement statute, 35 U.S.C. §271(e)(2)(A), and thus it could not infringe the patent. (The Canadian company was not a party to the suit).
Judge Newman, writing for the majority, affirmed the district court's rejection of this theory without substantial analysis. Slip Op. at 31. Judge Plager's concurrence, however, provides a detailed analysis of why Apotex's arguments fail to preclude liability for infringement. One key bit:
More directly, however, in this case Apotex U.S. clearly intends to engage in, and presumably submitted the ANDA for the purpose of, selling the approved drug in the United States. The statute speaks not only in terms of engaging in commercial manufacture, but, disjunctively, in terms of engaging in the drug’s “use or sale.” As an acknowledged sales agent for the primary applicant, Apotex U.S. can be treated as simply having “submit[ted]” an application for an ANDA for the purpose of “engag[ing] in the commercial . . . sale of [the] drug . . . claimed in a patent.”
Concurrence at 6.
Nonobviousness and No Inequitable Conduct: The Federal Circuit also affirmed the district court's ruling that the '314 patent was nonobvious and that it was not unenforceable due to inequitable conduct. On obviousness, the defendants used a "lead compound" theory, arguing that a prior art patent publication suggested that a particular compound ("Compound 1b") would be a good "lead compound" for further research and that there was a motivation to modify that compound to arrive at the claimed invention. The Federal Circuit affirmed the district court's conclusion that the defendants failed to demonstrate that there was a motivation for selecting Compound 1b as a lead compound or making the relevant modification. It further agreed that the idea that it might be "obvious to try" making and testing this compound was negated by evidence of skepticism in the field.
On inequitable conduct, the Federal Circuit affirmed the district court's finding of lack of deceptive intent. It declined to disturb the court's finding that the withheld references were material.