USPTO Director Kappos on Increased USPTO Fees

Patent,

Oh his blog, USPTO Director Dave Kappos has written an important defense of proposed USPTO fee increases and his rejection of the normal Washington DC approach of including improbable efficiency gains as major budget elements. I have excerpted a portion of the Kappos post that he titles “Increased Fees v. Operational Efficiencies”:< ?xml:namespace prefix ="" o />

[S]ome stakeholders have taken the view—to caricature it slightly—that the USPTO does not need to increase fees; it needs to get more efficient.

We could not agree more on the importance of improving efficiency at the USPTO. . . . But attempting to draw a corollary between fee-setting and speculation about the possible impact of potential future efficiency gains is difficult without the benefit of hindsight. As we have outlined in our fee proposal, our fees must be set in a manner that enables us to continue investing in reducing the backlog and improving all other areas of our agency. Our experience also reminds us that implementing improvements frequently causes short term disruptions, and likely won’t immediately translate into efficiencies. Anyone who runs a business will tell you that productivity investments often take years to pay off.

Moreover, my judgment as the steward of this agency is that I cannot proceed with a funding model that assumes further efficiency gains, especially if we have not yet achieved them. It places our agency at risk, and is just not right for our employees or for our stakeholders.

The responsible approach is to rely on our experience and current cost model, factoring in the efficiency gains we have achieved to date, but not speculating about possible future gains. This approach of using current costs as a basis for setting prices is the common practice among businesses, and follows the sound advice of the accounting, finance, and economics professions.

Then the question becomes the one asked in our fee proposal: does the U.S. innovation community want us to continue investing to quickly reduce the backlog and fully capture the promise of the AIA, or does it want us to back off a bit and accept a longer trajectory to reducing the backlog, and a higher level of risk relative to future funding downturns? The answer will ultimately have consequences for the kinds of efficiencies the agency is able to realize in the future, and what level of services the USPTO can deliver in years to come.

Read the full post here.

 

Scholarship Cited by the Supreme Court in Mayo v. Prometheus

Patent,

Mayo v. Prometheus: Natural Process + Known Elements = Normally No Patent

Patent

by Dennis Crouch

Mayo Collaborative Services v. Prometheus Labs., Inc. (Supreme Court 2012)

A unanimous (9–0) Supreme Court has held that the personalized medicine dosing process invented by Prometheus is not eligible for patent protection because the process is effectively an unpatentable law of nature. This decision reverses the Court of Appeals for the Federal Circuit’s holding that the claims were patentable because they included substantial physical limitations.

The Prometheus invention identifies a “relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove [either] ineffective or cause harm. Claim 1, for example, states that if the levels of 6–TG in the blood (of a patient who has taken a dose of a thiopurine drug) exceed about 400 pmol per 8×10(8) red blood cells, then the administered dose is likely to produce toxic side effects.”  In addition to claiming the boundaries between over and under dosage of thiopurine based upon measuring 6–TG in the blood, some of the Prometheus claims include additional limitations such as (1) administering thiopurine to a patient and (2) determining the blood level of 6–TG.

Law of Nature: In its decision, the Supreme Court first identified the correlation between 6–TG blood levels and over/under thiopurine dosage as an unpatentable law of nature.

The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.

As is usual in these cases, the Court referenced the groundbreaking discoveries by Einstein and Newton and noted that neither “E=mc²” nor the “law of gravity” would have been subject matter eligible.  Taking that as a premise, the court jumped to the conclusion that, therefore, the discovery that the blood level of 6–TG in a human correlates with either an overdose or underdose of thiopurine is also subject matter ineligible.

Additional Elements: The Supreme Court then considered the additional limitations and held them insufficient to transform the identified natural law into a patentable process.  The opinion repeatedly and favorably cites Parker v. Flook, 437 U. S. 584 (1978) in finding that the physical and transformative elements of the invention were not “genuine applications of those laws[, but] rather .. drafting efforts designed to monopolize the correlations.”  As to the claimed application of the law of nature, court here found it relevant and important that the additional steps were already known in the art.

Because methods for making such determinations were well known in the art, this step simply tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists in the field. Such activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.

The conclusion here is that (1) a newly discovered law of nature is itself unpatentable and (2) the application of that newly discovered law is also normally unpatentable if the application merely relies upon elements already known in the art.  To be clear, the court still maintains the law of Diehr that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”  On the other hand, the “application” must be “significant,” not “too broadly preempt” use of the law, and include other elements that constitute an “inventive concept” that is significant and separate from the natural law itself.  Of note, it is likely important that in this decision the court unfavorably cites the limitation of Flook found in Diehr that eligibility under §  101 “must be” based on claims “considered as a whole.”

Process and Presumption: In addition to the legal elements, the decision can be read to create a process for determining patent eligibility for patent claims that include a law of nature.  The court wrote that the “additional features” that show an application of the law must “provide practical assurance that the [claimed] process is more than a drafting effort.”  This language suggests that the burden will be on the patentee to prove that its limitations are more than patent attorney tricks. 

Whither Myriad: Although no action has been taken yet, I presume that the Supreme Court will now vacate and remand the pending Myriad case with instructions to the Federal Circuit to reconsider its holding that isolated human DNA is patentable.  Following Mayo, the court could logically find that the information in the DNA represents a law of nature, that the DNA itself is a natural phenomenon,  that the isolation of the DNA simply employs an isolation process already well known and expected at the time of the invention, and ultimately that the isolated DNA is unpatentable because it effectively claims a law of nature or natural phenomenon.  One distinguishing point is that Prometheus claimed a process while Myriad claims a composition of matter.  As we have seen in recent cases, the Federal Circuit already largely rejects formalistic distinctions between process and composition claims. Here, that distinction is further minimized by the reality that the claimed DNA is functionally characterized by the already well known process of isolating human DNA.

Read the opinion by Justice Breyer here: LINK.

The following is the text of the now invalidated Claim 1 of the Prometheus U.S. Patent No. 6,355,623.

A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointesti­nal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointesti­nal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently admin­istered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently ad­ ministered to said subject.

AIA Changes The Role of the Eastern District of Texas

Patent

Jim Pistorino has updated his annual BNA report on patent lawsuit case filings. His biggest finding is that the new joinder provisions of the America Invents Act (AIA) appear to have had a major impact on the distribution of new lawsuit filings.

The new joinder rules became effective for all patent lawsuits filed on or after September 16, 2011 [updated to fix typo] and limit the ability of a plaintiff to join multiple unrelated defendants in a single action.  In addition to potential cost savings of a single-suit, the joining of geographically diverse defendants in a single suit is thought to make it more difficult for one of the defendants to force a transfer of venue. Thus, the idea behind limiting the joinder of unrelated defendants is that it may allow courts to more easily transfer venue and thus shift filing focus away from the Eastern District of Texas.

The punch line here from the preliminary data through December 2011 is that (1) post-AIA filings have dropped in the Eastern District of Texas and risen in other districts, namely Delaware; (2) more cases are now being filed in Delaware than any other district; (3) more defendants are being sued in Delaware than any other district. Prior to AIA, E.D. Texas was the clear leader in these categories; and (4) overall the number of defendants being sued has decreased.

Read the article: 2011 Trends in Patent Case Filings by James C. Pistorino and Susan Crane.

BPAI Ex Parte Results

Patent

by Dennis Crouch

Because of the availability of settlement, percentage win-rate is often given little policy consideration.  Ex parte appeals are no different.  Before reaching a BPAI decision, examiners can “settle” by withdrawing their pending rejection and then either allowing the patent to issue or else prepare a new and different rejection of the pending application.  Patent applicants can also settle cases by abandoning the case or else by filing an amendment and a request for continued examination (RCE). 

The chart above shows percentage win-rate for BPAI appeals in ex parte cases. In an earlier study, I showed that the vast majority of these decisions are on obviousness grounds. Note – I only considered appeals decided on the merits and excluded those remanded or dismissed on other grounds.

Old/Old Patent Applications

Patent

I received a note from a patent examiner regarding my estimate that there are now around 400 pre-URAA applications still pending at the USPTO.  According to the examiner, the actual number of still-pending applications is 216 (excluding applications being held under a secrecy order).  All of these applications have been pending since 1995 and, upon issue, will still have 17–years of patent term remaining.

This is now a miniscule number compared with the 1.2 million applications pending at the USPTO.  On the other hand, all of these applications are likely quite valuable.

See “New/Old Patents”

 

Total Patent Application Pendency

Patent

Most coherent discussions of patent statistics need to consider patent families rather than only individual patents. In an earlier posts, I wrote about the reality that most US patents claim priority to a previously filed patent document — e.g., a prior US patent application, a prior provisional patent application, a foreign patent application filing, or a PCT application filing. 

One way to consider these layers of filings is to look at the “total pendency” of an application. Here, I calculate total pendency as the time period beginning with the earliest priority date claimed and ending with issuance.  The histogram below shows the total pendency for patents issued in 2011 and through March 14, 2012.  The average and median total pendency is just under five years. I.e., the average recently issued patents is based upon a patent application filed about five years ago. If we look at application-by-application pendency without considering priority claims then the average is about 3.4 years. The USPTO reports an average pendency of 2.8 years by (1) ignoring priority claims and (2) counting the RCEs as new application filings.

An important caveat here is that a significant portion of the average five-year delay is due to delays by the patent applicant rather than the USPTO.  Applicants have a significant amount of control in determining where their particular patent falls within the histogram. 

 PatentlyO133

Prosecution Timing

Patent

After a number of years on the rise, the average pre-issuance patent application pendency began to drop in 2010. The PTO hopes that its renewed effort on hiring examiners and addressing prosecution bottlenecks can force this pendency even lower.

For the chart below, I built a database of all utility patents issued since January 2005 and calculated the average number of days in prosecution for each US patent, grouped by patent issue date.  Thus, the chart includes patents issuing from original applications and continuation filings as well as US national-stage filings based upon foreign and PCT priority.  For my calculations, I did not consider provisional application filings and I did not use the filing of an RCE to cut-short the application pendency.

Patent2011066

Some applicants like to see the odds that a patent will issue within a given timeline. The chart below groups patents by issue date and then reports the percent of patents that issued within a given period relative to the application date. In particular, the chart shows the percent of patents that issue within two years, three years, four years, and five years from application.

Looking at chart –  the lowest series shows the percent of the issued patents that issued within two years of the application. Back in 2005, about one-third issued within two years, that percentage dropped steadily until 2010 when the USPTO began increasing the speed of throughput.  In 2010, the two-year series began to drop again — likely because the USPTO began its initiative of Clearing the Oldest Patent Applications (COPA).

Federal Circuit Limits Intervening Rights to Cases involving Textual Claim Amendments

Patent, ,

By Dennis Crouch

Marine Polymer Tech. v. Hemcon (Fed. Cir. 2012) (en banc)

In a fractured en banc decision, the Federal Circuit has held that statutory the intervening rights defense only arises when the text of claims are amended or new claims added during a post grant proceeding. In this case, the claim scope had been arguably changed under Phillips v. AWH based upon arguments made during a reexamination, but the text of the claims had not been amended. Following this decision, the accused infringers cannot claim intervening rights in this situation.

[T]he plain directive of the governing statute before us does not permit HemCon to invoke intervening rights against claims that the PTO confirmed on reexamination to be patentable as originally issued. To be sure, patent applicants’ actions and arguments during prosecution, including prosecution in a reexamination proceeding, can affect the proper interpretation and effective scope of their claims. But in rejecting HemCon’s request for intervening rights, we are not here interpreting claims. Rather, we are interpreting a statute that provides for intervening rights following reexamination only as to “amended or new” claims. The asserted claims of the ‘245 patent are neither.

As part of its ruling, the court noted its perspective that the PTO on reexamination is unlikely to consider a patent claim to be narrowed simply based arguments made by the patentee:

If, in reexamination, an examiner determines that particular claims are invalid and need amendment to be allowable, one would expect an examiner to require amendment rather than accept argument alone.

The doctrine of intervening rights is derived from the Patent Act, which indicates that, following a reexamination, a patentee cannot claim damages for pre-reexamination infringement if the resulting claims were in “amended form” and not “substantially identical” to the original claims. 35 U.S.C. §§ 252 and 307(b).

The dissent argued that any change to the scope of a claim during prosecution should be interpreted as an amendment and that, therefore, arguments and statements by the patentee that would result in a modified claim construction

Split Decision: Only ten of the Federal Circuit judges participated in the decision. Thus, a majority needed at least six votes. As it turns out, only a portion of the majority opinion received six votes. The entire majority opinion was written by Judge Lourie and joined by four other judges: Chief Judge Rader and Judges Newman, Bryson, and Prost. The first half of the majority opinion discussed claim construction issues and the second part discussed the intervening rights defense. Judge Linn brought the final vote for the majority, but Judge Linn only agreed to the portion of the opinion focusing on intervening rights. Judge Dyk wrote in dissent and the entire opinion was joined by Judges Gajarsa, Reyna, and Wallach. In parallel fashion, the dissent first discussed claim construction and then discussed intervening rights. Judge Linn joined the claim construction portion of the dissent but not the intervening rights portion. Thus, in the final tally, claim construction was split 5-5 and intervening rights issues was divided 6-4.

Notes:

Kimberly-Clark v. Naty: Did Reexamination Clean the Diaper?

Patent

by Dennis Crouch

Kimberly-Clark v. Naty (E.D. Wisc. 2012)

Twenty years ago, Kimberly-Clark scientists had the idea of creating a diaper with an "elastomeric ear" having non-parallel edges. The patent (No. 5,496,298) issued in 1996 (sixteen years ago). In the side figure, I have circled this novel feature of the design. The curved edge and stretchiness make the diaper more comfortable. The patent itself does not claim comfort or curvedness. Rather, the claim simply spells out the physical elements of the diaper design.

In 2010, an ex parte reexamination was begun and KC cancelled all 30 issued claims but then added an additional four claims. I have reproduced the broadest claim below with the new limitations in italics. As you can see, the new limitation is related to the shape of the curved edge of the elastomeric ear – labeled as 40 in the circled portion of the diagram. The newly added limitations that were apparently novel in 1993 are that a portion of the curved edge is "generally parallel" to the top edge (labeled 38) and another portion of the curved edge is not parallel to the top edge.

The new claim:

31. A disposable absorbent article, said article defining a front portion, a rear portion, and a crotch portion connecting the front and rear portions; said article comprising:
    an outer cover;
    a liquid-pervious bodyside liner;
    an absorbent material located between said cover and said bodyside liner; a pair of elastomeric ears attached to said rear portion, said ears having a proximal edge, a distal edge, a first connecting edge, and a second connecting edge, said first and second connecting edges connecting said proximal and distal edges, said second connecting edge being non-parallel to said first connecting edge and said proximal edge being longer than said distal edge;
    a fastener joined to said elastomeric ears for attaching said elastomeric ears to said front portion in an overlapping relationship; wherein, when in use, said second connecting edge defines at least a portion of a leg opening,
    wherein the second connecting edge comprises a first segment and a second segment, the first segment extending outward from the proximal edge and being generally parallel to the first connecting edge, the second segment extending between the first segment and the distal edge and being non-parallel to said first connecting edge.

In a recent action, KC has sued Naty Babycare for infringement of the '298 patent. Naty is a Swedish company that claims to be making all natural and largely eco-friendly diapers. Unfortunately for Naty, the '298 patent still has one year on its term and the patent seemingly covers eco and non-eco products alike. The drawing below from Naty's website shows the diaper in cartoon form.

KC has asked for injunctive relief. Of course, the patent will be expired before trial. However, KC may also request preliminary injunctive relief. I wonder how the upcoming expiry date should impact the eBay inquiry.

New/Old Patents

Patent

So far this year, the USPTO has issued only nine patents with filing dates of before June 8, 1995. That date represents an important turning point in patent law. Patents filed before that date have a term of 17–years from the issuance date. Later filed patents have a term of 20–years from the filing date.

Of the seven recent patents based upon old applications.  Barring a terminal disclaimer or failure to pay a maintenance fee, all of these will be in force until 2029 and all are based on a filing date of 1995 or before. 

More info:

  • Secrecy Orders: Pat. Nos. 8,119,959 (Flight control of missiles); 8,132,494 (Ballistic resistant composite article having improved matrix system); 8,111,581 (Monitoring system for a ship’s radiated noise) and 8,111,584 (method of detecting a submerged vessel in or near the wake of a ship).
  • Delay in considering whether to institute an interference: Pat. Nos. 8,102,419 (film-to-digital scanning algorithm) and 8,099,154 (therapeutic acoustic pressure wave generator).
  • Prosecution suspended while re-examining a family member application: Pat. No. 8,112,782 (based upon Personalized Media Communications family of patents).
  • Abandonment + Revival and examination of several hundred claims through including multiple amendments: Pat. No. 8,097,405 (Enzo Biochem patent).
  • Eight rejections + claim amendments: Pat. No. 8,101,149 (Claim 1 in full: “Purified cage molecules consisting of carbon atoms.” Owned by Mitsubishi). 

Note – I updated this on 3/15/2012 to correct for an error in my database that was identified by a US Patent Examiner.

Apart from those held under secrecy order, I suspect that there are now around 400 pre-URAA applications still pending at the USPTO.

Importing Drugs from Canada for Personal Use?

Patent

Can someone point me to resources for determining whether and when a US resident can legally purchase prescription drugs over the internet from a Canadian distributor for personal use within the US? Does it matter whether the drug is patented in the US, but not patented in Canada? And, if illegal or a violation of patent rights, has there been any enforcement against US individuals or Canadian distributors? Finally, is there a list available of prescription drugs that are patented in the US, but available in generic form in Canada or other countries with well regulated* pharmaceutical industries?

Thanks, Dennis
dcrouch@gmail.com

Patent Infringement Litigation: Filings on the Rise

Patent,

031312_2012_PatentInfri1

Terry Ludlow of ChipWorks recently created a time-series chart showing the number of US patent lawsuits per quarter. I have reproduced the chart with permission. [LINK]

The headline here: More patent lawsuits are being filed now than ever – even more than in the heyday of the false-marking litigation. Just as a caution – the recent rise in the number of lawsuits does not actually mean that there is more patent litigation going one. Rather, a substantial portion of the increase in Q4 2011 is due to the new joinder rules that force a patent holder to file separate lawsuits against similar defendants rather than bundle them all into a single action.

Thus, as an example, last week the patent holding company NovelPoint Security filed 30+ separate patent infringement lawsuits in the Eastern District of Texas. In the past, NovelPoint might have instead pursued all of those actions within a single complaint.

* * * * *

The NovelPoint Security patents both include David C. Reardon of Springfield Illinois as the sole inventor. See U.S. Patents 6,212,635 and 5,434,562. Neither patent is listed as assigned within the USPTO assignment database. Reardon is an interesting character – he is an electrical engineer but is much better known as a pro-life / anti-abortion advocate. Reardon runs the Eliot Institute that he founded. The patents themselves focus on computer security systems using public/private key encryption and claim a 1997 priority date based upon a provisional patent application filed

BPAI: First Decide Indefiniteness, then Subject Matter Eligibility

Indefinite, Patent

Ex parte Adelman, Appeal 2010-011767 (BPAI 2012)

As part of what seems a sign of change, the BPAI in recently refused to decide a patent appeal on statutory subject matter grounds and instead found Adelman’s claims invalid under a new grounds of rejection — indefinite under 35 U.S.C. § 112, 2nd paragraph.  The Board noted that the indefiniteness of the claims meant that the subject matter eligibility question could not be “reasonably understood without resort to speculation.”

The patent application is owned by Go Daddy Group and claims a “system for designating membership in an online business community.”  Claim 1 includes two elements, both written in means-plus-function (MPF) language.  The first element is a “means for designating a plurality of Members…” and the second is a “means for providing … a membership designator.”  In reading the specification, the Board concluded that the claimed functions lacked any corresponding structures in the specificication.  “The Specification therefore fails to disclose an algorithm corresponding to the recited function at issue in independent claim 1, such that one of ordinary skill in the art could determine the scope of independent claim 1.”

In several cases, courts have designated subject matter eligibility as a “threshold” concern.  Here, however, the Board held that they were compelled to first consider indefiniteness — citing In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.) and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite.”).

RPX: Patent Aggregator and Alleged Antitrust Conspirator

Patent

Cascades Computer Innovation v. RPX, HTC, LG, Motorola, Dell, Samsung (N.D. Cal. 2012)

In a bold move, non-practicing patent holder CCI has sued a group of tech companies and the patent aggregator RPX for price fixing and conspiring to restrain trade in violation of the Clayton and Sherman Acts as well as under California state antitrust law. The allegation is that RPX and its members decided as a group to boycott negotiations with Cascades except through their aggregator RPX.

Defendants HTC, LG, Motorola, Samsung and Dell sell more than 95 percent of all mobile phones and tablets that use the Android operating systems in the United States and are an important part of the Android market, and related, relevant sub-markets (including products that require a license from Cascades under its patented technology). The manufacturing defendants constitute nearly the total demand for the licensing of Cascades’ patented technology and collectively enjoy substantial market power in that market and, together with others in the industry, have exercised their power to control the acceptance and terms and conditions of licenses from Cascades. The power is augmented by the willingness and agreement of the manufacturing defendants to infringe Cascades’ patents until such time as Cascades capitulates by either going out of business, declining to enforce the patents or offering defendants patent license terms below fair market value.”

The complaint is well written and worth a read. Nick McCain at Courthouse News has more: http://www.courthousenews.com/2012/03/09/44560.htm.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

Is There a Trend Towards IP Litigation Boutiques?

  • On February 29th of this year Renee Quinn of IPWatchdog wrote a post titled, Boutique Rising: A Conversation with Winthrop & Weinstine, in which she discusses the increase in IP litigation boutiques. [Link] I recently spoke with attorney Jason Mudd of the newly formed IP law firm Erise IP (www.eriseip.com) about the trend towards IP litigation boutiques. Jason recently left a large Kansas City law firm, along with partners Eric Buresh and Adam Seitz, to start Erise IP with a team of attorneys from their prior firm. Erise IP brought along several large clients, including Garmin, Sony, Ubisoft, Ford, and Mazda, to name a few. Jason believes their new firm is consistent with a trend of IP litigation groups departing large law firms to form boutique firms that are able to provide clients with greater flexibility demanded by the rapidly changing IP litigation landscape. While the numbers are not out yet, there could possibly be a recent trend towards IP litigation boutiques.

Copyright Infringement

  • Last week while I was in copyright class, Professor Crouch brought up the Lexis-Nexis and Westlaw class action copyright infringement case. The plaintiffs in the case claim that the defendants (Lexis and Westlaw) copied thousands of copyright-protected works created by, and owned by, the attorneys and law firms who authored them. So, this case got me thinking, do companies like Google Patents infringe patent lawyers and patent firms copyrights? Similar to Westlaw and Lexis, Google downloads thousands of patent applications to store in their database. While there is not a clear answer on whether patent applications are copyrightable or not, it seems that patent applications can have parts covered by copyright –drawings for example, even if the entire patent application is not copyrightable. In Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003), the 7th Circuit recognized the copyrightability of an inventor's patent drawings. Does, this case alone indicate that Google and others may be guilty of copyright infringement for downloading patent applications? [Link]
  • It should be noted that Google is distinguishable from Lexis and Westlaw because Google does not charge users directly, and this fact adds weight to their fair use argument.

Patent Searching Tool

  • ArchPatent, a free-to-use patent search resource which provides novel ways to search, sort, and view patent information, has launched a revamped website this week. The revamp drew its inspiration from beta feedback over the last five months from individuals within the IP industry. ArchPatent Founder Brad Chassee indicates that the objective with the revamp is to focus the site on providing the simplest, most intuitive USPTO search tool – one which experts enjoy using and one which those new to patent searching would actually be able to navigate. ArchPatent wants everyone to be able to "slice and dice" patent search results quickly and efficiently, which should drastically reduce search times and simplify complex search tasks. The site is now ad free with some additional functionality being developed as part of a soon-to-be-released premium offering. The site has a useful filtering tool and filter types include: classification, assignee, examiner, agent, applicant and most referenced. The site now provides access to searchable USPTO data back to 1920 and pdfs back to 1790. [Link]

Patent Jobs:

  • Buchanan Ingersoll & Rooney is seeking an Electrical patent agent with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • Stoel Rives is searching for a patent attorney with 3-5 years of experience drafting electrical-related patent applications to work in their Portland or Seattle office. [Link]
  • Buchanan Ingersoll & Rooney is seeking an Electrical patent associate with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • SAS is looking for a patent counsel with 3 years of patent prep and prosecution experience in the software field and a degree in EE or CS to work at their Cary, NC location. [Link]
  • Sterne, Kessler, Goldstein & Fox is seeking chemist patent attorneys with at least a master's degree in organic or medicinal chemistry to work in their DC office. [Link]
  • Sterne, Kessler, Goldstein & Fox is searching for a chemical or biochemical IP attorney with a degree in CE, BM, or ME and 1-3 years of experience to work in their DC office. [Link]
  • Millennium Inorganic Chemicals is looking for corporate counsel with a degree in chemistry or chemical engineering and 7+ years of experience to work at their Glen Burnie, MD location. [Link]
  • Rutan & Tucker is seeking a trademark clerk with a minimum of 1 year of IP docket & filing experience to work at their Costa Mesa, CA office. [Link]
  • Westerman, Hattori, Daniels & Adrian is searching for a chemical IP attorney/agent with a 3 years or less of experience to work at their DC office. [Link]
  • Cantor Colburn is looking for an associate patent attorney with a chemical engineering degree and 2-5 years of experience to work in one of their offices. [Link]
  • Roberts Mlotkowski Safran & Cole is seeking a patent attorney with 2-4 years of experience and a degree in EE to work in their McLean, VA office. [Link]

Upcoming Events:

  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • The New Jersey Intellectual Property Law Association will hold a half-day Patent Litigation Seminar on Wednesday, March 14, 2012 11:45 am to 5:45 pm. Guest speakers include: Paul Berghoff, Kara Stoll, William McElwain, Richard Bress, Barbara Fiacco, and Lewis Ho. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • The 14th Annual Richard C. Sughrue Symposium on IP Law and Policy will be held March 19th at The University of Akron Law School. The program will include a review of recent developments in patent, trademark, and copyright law, as well as a panel discussion on international IP. David Kappos will be the featured speaker and he will discuss the USPTO's implementation of the American Invents Act. Other guest speakers include: Timothy Holbrook, Mark Janis, former chief judge Paul Michel, Samuel Oddi, Ryan Vacca, Susan Pan, Harold Wegner, and many others.
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, "Provisional Patent Applications: Making Substance in a Land Without Form," on March 21, 2012 at 12 noon EST. The first-to-invent impact of the America Invents Act requires a serious reevaluation of the use and content of provisional patent applications. Stephen G. Parmelee will address approaches to leveraging the provisional patent application opportunity by encouraging the inclusion of substantive content while taking economic advantage of the stylistic freedom that provisional filings permit. [Link]
  • The University of Pittsburgh School of Law will have their annual Innovation Law Lecture on March 22, 2012, 4-5PM. This year's guest speaker will be Professor Rochelle Dreyfuss from NYU School of Law and her talk is entitled "Are Patents Good for Science?" The event is open to the general public and one (1) CLE credit has been requested for the lecture. [Link] [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • Managing Intellectual Property is holdings its US Patent Reform Forum conference March 27, 2012 in Washington D.C. The forum will bring together top officials, leading counsel at US corporations and their private practice advisers for a number of lively and informative sessions looking at the strategic implications of US Patent Reform. Speakers include: David Kappos, Judge Paul Michel, Gene Quinn, Robert Armitage, Phil Johnson, and many others. (Patently-O readers will receive a discount and in-house IP counsel from large corporations and research institutes attend free of charge.) [Link]
  • The ABA Section of IP Law will hold its 27th Annual IP Law Conference March 28-30 in Arlington, VA. The conference is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world. Speakers and moderators include: Sharon Marsh, Keisha Hylton-Rodic, Alexander Wilson, Steven Emmert, Teresa Rea, James Bikoff, David Kappos, and many others. The discounted early registration deadline is March 14. [Link] [Link]
  • AIPLA and The University of San Diego School of Law will host the 2012 Electronic & Computer Patent Law Summit on April 2nd. The summit will include in-house counsel from Qualcomm, Apple, SAP, Covidien, ViaSat, Google, and Cisco, among others, as well as a distinguished panel of US District Court judges. Topics will include the new First to File system, an update on divided infringement, how the patent portfolio use and acquisition landscape is changing, and a discussion of the patent pilot program. [Link]
  • On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

Is There a Trend Towards IP Litigation Boutiques?

  • On February 29th of this year Renee Quinn of IPWatchdog wrote a post titled, Boutique Rising: A Conversation with Winthrop & Weinstine, in which she discusses the increase in IP litigation boutiques. [Link] I recently spoke with attorney Jason Mudd of the newly formed IP law firm Erise IP (www.eriseip.com) about the trend towards IP litigation boutiques. Jason recently left a large Kansas City law firm, along with partners Eric Buresh and Adam Seitz, to start Erise IP with a team of attorneys from their prior firm. Erise IP brought along several large clients, including Garmin, Sony, Ubisoft, Ford, and Mazda, to name a few. Jason believes their new firm is consistent with a trend of IP litigation groups departing large law firms to form boutique firms that are able to provide clients with greater flexibility demanded by the rapidly changing IP litigation landscape. While the numbers are not out yet, there could possibly be a recent trend towards IP litigation boutiques.

Copyright Infringement

  • Last week while I was in copyright class, Professor Crouch brought up the Lexis-Nexis and Westlaw class action copyright infringement case. The plaintiffs in the case claim that the defendants (Lexis and Westlaw) copied thousands of copyright-protected works created by, and owned by, the attorneys and law firms who authored them. So, this case got me thinking, do companies like Google Patents infringe patent lawyers and patent firms copyrights? Similar to Westlaw and Lexis, Google downloads thousands of patent applications to store in their database. While there is not a clear answer on whether patent applications are copyrightable or not, it seems that patent applications can have parts covered by copyright –drawings for example, even if the entire patent application is not copyrightable. In Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003), the 7th Circuit recognized the copyrightability of an inventor's patent drawings. Does, this case alone indicate that Google and others may be guilty of copyright infringement for downloading patent applications? [Link]
  • It should be noted that Google is distinguishable from Lexis and Westlaw because Google does not charge users directly, and this fact adds weight to their fair use argument.

Patent Searching Tool

  • ArchPatent, a free-to-use patent search resource which provides novel ways to search, sort, and view patent information, has launched a revamped website this week. The revamp drew its inspiration from beta feedback over the last five months from individuals within the IP industry. ArchPatent Founder Brad Chassee indicates that the objective with the revamp is to focus the site on providing the simplest, most intuitive USPTO search tool – one which experts enjoy using and one which those new to patent searching would actually be able to navigate. ArchPatent wants everyone to be able to "slice and dice" patent search results quickly and efficiently, which should drastically reduce search times and simplify complex search tasks. The site is now ad free with some additional functionality being developed as part of a soon-to-be-released premium offering. The site has a useful filtering tool and filter types include: classification, assignee, examiner, agent, applicant and most referenced. The site now provides access to searchable USPTO data back to 1920 and pdfs back to 1790. [Link]

Patent Jobs:

  • Buchanan Ingersoll & Rooney is seeking an Electrical patent agent with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • Stoel Rives is searching for a patent attorney with 3-5 years of experience drafting electrical-related patent applications to work in their Portland or Seattle office. [Link]
  • Buchanan Ingersoll & Rooney is seeking an Electrical patent associate with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • SAS is looking for a patent counsel with 3 years of patent prep and prosecution experience in the software field and a degree in EE or CS to work at their Cary, NC location. [Link]
  • Sterne, Kessler, Goldstein & Fox is seeking chemist patent attorneys with at least a master's degree in organic or medicinal chemistry to work in their DC office. [Link]
  • Sterne, Kessler, Goldstein & Fox is searching for a chemical or biochemical IP attorney with a degree in CE, BM, or ME and 1-3 years of experience to work in their DC office. [Link]
  • Millennium Inorganic Chemicals is looking for corporate counsel with a degree in chemistry or chemical engineering and 7+ years of experience to work at their Glen Burnie, MD location. [Link]
  • Rutan & Tucker is seeking a trademark clerk with a minimum of 1 year of IP docket & filing experience to work at their Costa Mesa, CA office. [Link]
  • Westerman, Hattori, Daniels & Adrian is searching for a chemical IP attorney/agent with a 3 years or less of experience to work at their DC office. [Link]
  • Cantor Colburn is looking for an associate patent attorney with a chemical engineering degree and 2-5 years of experience to work in one of their offices. [Link]
  • Roberts Mlotkowski Safran & Cole is seeking a patent attorney with 2-4 years of experience and a degree in EE to work in their McLean, VA office. [Link]

Upcoming Events:

  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • The New Jersey Intellectual Property Law Association will hold a half-day Patent Litigation Seminar on Wednesday, March 14, 2012 11:45 am to 5:45 pm. Guest speakers include: Paul Berghoff, Kara Stoll, William McElwain, Richard Bress, Barbara Fiacco, and Lewis Ho. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • The 14th Annual Richard C. Sughrue Symposium on IP Law and Policy will be held March 19th at The University of Akron Law School. The program will include a review of recent developments in patent, trademark, and copyright law, as well as a panel discussion on international IP. David Kappos will be the featured speaker and he will discuss the USPTO's implementation of the American Invents Act. Other guest speakers include: Timothy Holbrook, Mark Janis, former chief judge Paul Michel, Samuel Oddi, Ryan Vacca, Susan Pan, Harold Wegner, and many others.
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, "Provisional Patent Applications: Making Substance in a Land Without Form," on March 21, 2012 at 12 noon EST. The first-to-invent impact of the America Invents Act requires a serious reevaluation of the use and content of provisional patent applications. Stephen G. Parmelee will address approaches to leveraging the provisional patent application opportunity by encouraging the inclusion of substantive content while taking economic advantage of the stylistic freedom that provisional filings permit. [Link]
  • The University of Pittsburgh School of Law will have their annual Innovation Law Lecture on March 22, 2012, 4-5PM. This year's guest speaker will be Professor Rochelle Dreyfuss from NYU School of Law and her talk is entitled "Are Patents Good for Science?" The event is open to the general public and one (1) CLE credit has been requested for the lecture. [Link] [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • Managing Intellectual Property is holdings its US Patent Reform Forum conference March 27, 2012 in Washington D.C. The forum will bring together top officials, leading counsel at US corporations and their private practice advisers for a number of lively and informative sessions looking at the strategic implications of US Patent Reform. Speakers include: David Kappos, Judge Paul Michel, Gene Quinn, Robert Armitage, Phil Johnson, and many others. (Patently-O readers will receive a discount and in-house IP counsel from large corporations and research institutes attend free of charge.) [Link]
  • The ABA Section of IP Law will hold its 27th Annual IP Law Conference March 28-30 in Arlington, VA. The conference is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world. Speakers and moderators include: Sharon Marsh, Keisha Hylton-Rodic, Alexander Wilson, Steven Emmert, Teresa Rea, James Bikoff, David Kappos, and many others. The discounted early registration deadline is March 14. [Link] [Link]
  • AIPLA and The University of San Diego School of Law will host the 2012 Electronic & Computer Patent Law Summit on April 2nd. The summit will include in-house counsel from Qualcomm, Apple, SAP, Covidien, ViaSat, Google, and Cisco, among others, as well as a distinguished panel of US District Court judges. Topics will include the new First to File system, an update on divided infringement, how the patent portfolio use and acquisition landscape is changing, and a discussion of the patent pilot program. [Link]
  • On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Disavowal of Claim Scope and Beauregard Method Claims

Patent

by Dennis Crouch

Digital-Vending Services International, LLC v. The University of Phoenix, Inc. (Fed. Cir. 2012)

In a split decision, the Federal Circuit has reversed the lower court's claim construction and vacated the summary judgment of non-infringement with respect to impacted claims. On remand, the district court will be required to reconsider whether whether Digital-Vending's patents covering aspects of internet-based content delivery are valid and infringed. Chief Judge Rader penned the opinion and was joined by Judge Linn and joined-in-part by Judge Moore. In her partial dissent, Judge Moore focused on the doctrine of disavowal of claim scope  – arguing that the "exacting" standard for disavowal of claim scope was met in this case and therefore takes precedence over other canons of construction in the analysis of claim scope. 

Method Claim Written as an Apparatus: Before getting to the heart of the claim construction debate, it is important to mention the court's recognition here that a Beauregard claim should properly be interpreted as a method claim rather than an apparatus or composition of matter claim. In some instances, patent law treats method claims differently than it treats apparatus claims. Because of this distinction, many patent attorneys choose to include both method and apparatus claims within the same patent whenever possible. In discussing the asserted claims, the Federal Circuit opines that claims 1-22 of asserted Patent No. 6,282,573 are all "method claims" despite the fact that claims 13-22 expressly claim "a computer storage medium" containing data and instructions for causing a computer to perform a particular method. Noting this potential discrepancy, the court wrote that these Beauregard claims are "functionally-defined claims" that "should be treated as method claims to avoid exalting form over substance." Quoting CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011). The court also noted that independent claim 23 – directed to a "computer architecture" with various interconnected servers should be treated as a system rather than a method. (Note – Judge Moore did not dissent from this portion of the opinion).

How Prosecution History Impacts Claim Scope: In many patent cases, the most hotly contested legal issue is claim construction and the resulting claim scope. Broadly construed claims cast a wider net over potential infringers, but are also more likely to be held invalid than those that are more narrowly construed. There a variety of thoughts on how the specification and prosecution history should impact claim construction. Strongly-held maxims include the notion that claims should be interpreted in light of the specification, but limitations found in the specification should not be automatically added as implicit limitations of claim scope. In Phillips, we learned that the specification should be given greater consideration. Phillips also gave credence to arguments associated with claim differentiation. Thus, in that case, the fact that a claim referred to "steel baffles … strongly implie[d] that the term 'baffles' does not inherently mean objects made of steel." (quoting Phillips).   An additional and important claim construction canon involves the limitation of claim scope that has been the subject of clear disavowal.  A problem with canons of construction is that they often conflict and the difficulty for courts comes in deciding which of the many canons to give precedence. Here, there is no question on the law that a clear disavowal of claim scope takes precedence over other canons of construction.  The dispute in the case is on whether a disavowal occurred.  

In this case, some of the patented claims refer to a "registration server being further characterized in that it is free of content managed by the architecture" and others refer to the "registration server," standing alone.  This difference between the claims provides a strong suggestion that athe bare "registration server" limitation does not require that the server be free of managed content.  In its analysis, the majority court noted that the patentee repeatedly referred to the registration server as being free of managed content, but also that the patent attorney had been "careful" to "avoid any hint [in the specification] that the inventors clearly disavowed claim scope with respect to the method claims."  Thus, the court allowed a broad interpretation of the "registration server" term.

The dissent disagreed with this analysis and instead argued that the majority opinion "allows the patent owner to reclaim surrendered claim scope, thus subverting the public notice function of patents."  Here, the dissent focused on the patentees "repeated statements in the specification" indicating that "each" of the registration servers are separated from any managed content and that such an architecture is a "requirement" not to be "violated."  For Judge Moore, those statements lead her to the conclusion that "[i]t is difficult to imagine a clearer case of disavowal."

On remand, the lower court will be asked to determine whether the defendants infringe the asserted claims under the broader claim interpretation put forth by the majority.