Preliminary Report on Track I: Prioritized Patent Examination Program

Patent

By Dennis Crouch

The USPTO’s new Commissioner for Patents is Peggy Focarino. In a recent post to Dir. Kappos Blog, Commissioner Focariono provided a report on the PTO’s “Track I Prioritized Patent Examination Program.” Under Track I, a patent applicant can complete a simple one page form and pay a $4,800 fee to have their patents processed quickly. The goal is that patents will be “processed to completion” within 12-months of an application entering the Track I program. Track I was authorized by the Leahy-Smith America Invents Act that was enacted on September 16, 2011. The program became effective on September 26, 2011.

As of January 3, 1,694 Track I petitions applications had been filed and the Office has granted 99% of the petitions it has decided. First office actions are being sent – on average – about one month after approval of the petition. So far, the longest delay has been 70 days from grant of the petition to mailing of the first office action.

* * * *

This morning I identified the first Track I patent issued thus far – U.S. Patent No. 8,094,942 owned by Google and directed to a method and system of character recognition for overlapping textual user input. The application was filed on September 30, 2011 along with a Track I request. The request was granted on November 1, 2011. The applicant then filed an IDS and a proactive terminal disclaimer associated with a parent case. The case was handled by a primary examiner who had handled the parent case and who allowed the claims with examiner-proposed amendments following an interview.

* * * *

Commissioner Focariono added the following note to her post: “For those applicants or practitioners concerned about whether Track I applications will be treated differently from others in terms of grant/denial rate, our examiners are being given exactly the same training, credits and incentives to accurately examine Track I cases as for all other cases, and no training, credits or incentives are being given to bias examiner decisions in any way. And as for the data, given the statistics provided above, so far there is no basis to believe there is any difference in result for Track I versus non-Track I processing, other than the significantly faster responsiveness.”

USPTO Notice and Comments

Patent, ,

The USPTO currently has nine published notices and proposed rule changes that are open for comment. Most of these involve changes to USPTO procedure that implement aspects of the Leahy-Smith America Invents Act (AIA). Under the AIA, the USPTO has been granted broader authority through this notice-and-comment period.

  • Proposed Rule: Eliciting More Complete Patent Assignment Information – Comments Due January 23, 2012. The USPTO is proposing a rule that would require the timely recordation of patent and application ownership and changes to ownership. [DDC: This appears to be a straw-man proposal and will likely be significantly changed or dropped based upon public input.]
  • Proposed Rule: Revision of Patent Term Adjustment Provisions Relating to Appellate Review – Comments Due January 27, 2012. [DDC: The new rule would largely lengthen PTA, but in some circumstances would reduce PTA depending upon the results of your appeal to the BPAI.]
  • Notice: Request for Comments on Additional USPTO Satellite Offices for the Nationwide Workforce Program – Comments Due January 30, 2012. The USPTO is planning to open additional satellite offices in 2012-2013 and is seeking input on the proper location.
  • Proposed Rule: Changes to Implement the Pre-issuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act – Comments Due March 5, 2012. Third party submissions will be allowed beginning in September 2012. The proposed rules sets up requirements that such a submission must include "a concise description of the asserted relevance of each document submitted." The proposed rule suggests that a fee of $180 for the submission of up to ten documents. In order to promote submissions, the Office has proposed a fee exemption for the first submission by each third-party for each application (with a limit of three documents in that submission). Under the new rules, submissions must be filed by the later of: (i) Six months after the date on which the application is first published by the Office or (ii) The date the first office action.
  • Proposed Rule: Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings – Comments Due March 5, 2012. The AIA sets a new statute of limitations for USPTO disciplinary proceedings at the earlier of (i) 10 years after the date on of the alleged misconduct; or (ii) one year from the date on which the misconduct was made known to an officer or employee of the USPTO. The rule proposed by the PTO would further define the one-year deadline as being triggered only once the USPTO has completed a preliminary review of the case and received a "complete, written response" from the accused practitioner. Depending upon the circumstances, the one-year deadline may otherwise be triggered by the OED's receipt of a certified copy of a record of censure from another Bar or conviction of a serious crime. [DDC: The USPTO's interpretation of the one-year deadline appears to be in tension to the text of the new statute, but the PTO may be fine because of the deference for OED matters under Lavacara v. Dudas.]
  • Proposed Rule: Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act – Comments Due March 5, 2012.
  • Proposed Rule: Changes to Implement the Inventors Oath or Declaration Provisions of the Leahy-Smith America Invents Act – Comments Due March 6, 2012.
  • Notice: Changing the USPTO's Collection of Information in Matters Related to National Medal of Technology and Innovation Nomination Application – Comments Due February 6, 2012.
  • Notice: Changing the USPTO's Collection of Information in Matters Related to Patent Appeals – Comments Due March 5, 2012.

Chief Judge Rader & Band DeNovo to “Rock” San Diego’s House of Blues

Patent

Guest Post by Ted Sichelman, Professor, University of San Diego School of Law

Aside from his international and national speaking tours, Chief Judge Rader recently embarked on a musical “tour” with his band, DeNovo. After playing a few IP-related events and a recent Federal Circuit holiday party, DeNovo—which also includes Professor Sean O’Connor of the University of Washington and Matthew Bryan of WIPO—is hitting the big time by playing at the House of Blues in downtown San Diego on Thursday, January 19. Bands from NuVasive and Qualcomm will open, and Dean for IP Studies at George Washington School of Law and former SG of the USPTO, John Whealan will MC. The bands are performing as part of University of San Diego’s Second Annual Patent Law Conference (click here for more info), taking place Friday, January 20. Chief Judge Rader will give the keynote address—other panelists include Judge Marilyn Huff, Judge Janis Sammartino, and Magistrate Judge Cathy Ann Bencivengo (Southern District of California), as well as Professors Colleen Chien, Mark Lemley, Robert Merges, Shine Tu, and John Whealan, and distinguished local attorneys.

Fed Cir HOB

Reviewing the New USPTO Post Grant Review System with Reference to EPO Oppositions

Articles and Publications, Patent, , , , ,

by Dennis Crouch

Time is flying and the newly revamped host of USPTO administrated post-grant patent procedures is on its way.  As we speak, the USPTO is continuing to develop its rules and internal operating procedures for handling the new options.  This post focuses on the new post-grant review (A.K.A. opposition proceeding), which is being created by splitting the current inter partes reexamination system into two parts: post-grant review and inter partes review.  Current reexamination practice focuses solely on questions of novelty and obviousness based upon prior art in the form of printed publications. The new post-grant review system broadens the bases for review to virtually any validity challenge.   However, post-grant reviews will only be available during a 9–month window following patent issuance. 

Full implementation of the post-grant review system will not be until 2013 & 2014 because the review is only available for patents with a priority date on or after March 16, 2013. The 2013 date is also the implementation date of the new Filing-Date-Priority rules. We will, however, get a preview of the PGR system once it becomes available to go against Business Method patents beginning September 16, 2012.

EPO Opposition Popularity: Europe has a popular opposition system and there is a natural comparison between our new post-grant review and their oppositions.  Around 5% to 7% of EPO-issued patents are opposed during the 9–month post-grant window.  This figures are an order-of-magnitude greater than the proportion of US patents that go through the inter partes reexamination system.

Obstacles to US Post-Grant Popularity: I do not expect that the US system will see the same level of utilization –  at least for some time.  The major legal impediment to filing a post-grant review is the tough new threshold that requires a showing “that there is a reasonable likelihood that the petitioner will prevail with respect to at least one claim challenged.”  If the threshold is not met, the petition for review will be rejected. This threshold is substantially greater than the USPTO’s historic standard requiring a “substantial new question of patentability.” The EPO does not have a similar threshold. Rather, so long as certain formalities are met, the opposition proceeds with a full review with opportunity for appeal, etc.  That said, the EPO opposition proceeding results in cancellation or at least amendment in about 75% of cases.

The other major roadblock to popularity for US post-grant review will be cost.  Current behind-the-scenes discussion peg the USPTO filing fees at over $40,000 for a post-grant review. The equivalent fee for an EPO opposition is under $1,000 (€705).  The availability of limited discovery suggest that the legal fees for post-grant oppositions will also be fairly high.

Patent Law Blogs and the ABA

Patent

I am pleased to announce that Patently-O was selected by the American Bar Association (ABA) Journal as their favorite IP Law blog for 2011. It is an honor that Patently-O has been chosen as one of the top-100 legal blogs by the ABA Journal each year for the past five years. This year, the list includes two patent law focused blogs: Patently-O along with Gene & Renee Quinn's IP Watchdog. Gene was running his popular site and working as a law professor even before I started law school. IP Watchdog was a great resource for me during law school both for Gene's straightforward explanation of the law as well as his practical guidance for those new to the profession.

Along with the listing of top-100 blogs, the ABA also conducts a public voting for the most popular blogs. In 2010, IP Watchdog was the winner, this year Patently-O won with a 49% to 41% final vote. Thanks to everyone who supported our cause! It is a great sign of the community and cooperative spirit associated with patent law professionals that both of our sites received more votes than 99% of the other law blogs. (I.e., only one site received more votes).

Of course, the Patent Law "blog-o-sphere" is not limited to our two sites. A few excellent sites that would have made my list include PatentDocs (Noonan, Zuhn, et al.), FOSSPatents (Mueller), IPKat & PatLit (Phillips, et al.), Biotech IP Blog (Holman), Inventive Step Blog (Osenga), PharmaPatents (Brinckerhoff), IP Spotlight (Singer), Just-a-Patent-Examiner, Patent Librarian (White), Green Patent Blog (Lane), All things Pros (Hazzah), TacticalIP (ZWM), Kappos Blog (Kappos), Gray on Claims (Gray), and Patent-Post-Grant, Chicago IP Litigation (Donoghue), SpicyIP, and ReexamAlert. (I apologize for missing a few good ones here). In my view, two holes are the absence of Joe Mullen's Prior Art blog and Frankel's Patent Troll Tracker. Although they don't have "blogs" per se, Hal Wegner and Greg Aharonian both deserve honorable mention here as the Deans and perhaps the Dons of patent blogs.  

2011 Patent Grants: A New Record

Patent

By Dennis Crouch

The USPTO issued more utility patents in calendar year 2011 than in any year in history. The 2011 total – just shy of 225,000 issued patents – is only a small increase over 2010, but towers above all other historic figures. The previous record was set in 2006 with about 173,000 issued utility patents. The dramatic rise in issuance rate is not tied directly to an increase in filings (although there has been a small increase in new application filings). Rather, the two-year increase appears to be the result of regime changes instituted by USPTO Director David Kappos who took office mid-year 2009 after being nominated by President Barack Obama.

Notes:

Loser Pays: Federal Circuit Affirms $4 Million Award of Attorney Fees and Costs

Patent

By Dennis Crouch

MarcTec LLC v. Johnson & Johnson and Cordis Corp. (Fed. Cir. 2012) (O’Malley, J.) on appeal from the Southern District of Illinois

In this decision, the appellate panel (Judges Newman, Prost, and O’Malley) focused on the question of whether the district court properly found the case “exceptional” leading to the award of attorney fees and expenses of over $4 million. Its answer –  Yes.

The patents in suit are directed to various surgical implants heat-bonded to antibiotic-containing polymer material. The district court construed the term “bonded” in a way that excluded the accused Cordis devices and thus resulted in a summary judgment of non-infringement. That decision was affirmed on appeal in 2010.

On remand, the district court determined that the case was “exceptional” because the patentee MarcTec’s attorneys had “engaged in litigation misconduct.” The particular misconduct was that MarcTec alleged theories of claim construction and infringement that were clearly incorrect.

MarcTec engaged in litigation misconduct when it: (1) misrepresented both the law of claim construction and the constructions ultimately adopted by the court; and (2) introduced and relied on expert testimony that failed to meet even minimal standards of reliability, thereby prolonging the litigation and the expenses attendant thereto.

Regarding its claim construction argument, the court found that MarcTec had improperly argued for a plain meaning interpretation of the term “bonded” despite clear language in the specification and prosecution history that contradicted the plain meaning being advanced. In the process, MarcTec misrepresented the law on claim construction and encouraged the court to ignore the specification unless it found an insoluble “ambiguity” in the claim language.  This mischaracterization of the law coupled with its unsupported allegations of infringement was sufficient to support the conclusion of litigation misconduct.

Patented or Described in a Printed Publication

Patent, ,

By Dennis Crouch

The newly revised 35 U.S.C. § 102 states that no patent shall issue if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…” 35 U.S.C. §102(a).

My question for the hour is whether (or not) the word “patented” in this fundamental provision is entirely superfluous. In other words, when is a claimed invention “patented” but not described in a printed publication? I should note at this point that the pre AIA Section 102 also includes the statement that an invention is not patentable if it was already “patented or described in a printed publication.”

Patented but not Published: It is largely safe to assume that patents are published and, therefore, any disclosure found in a patent should also be considered to be “described in a printed publication.” A narrow exception to this aforementioned assumption can be derived from regular SNAFUs that occur in patent offices around the world that allow for patents to issue without actually being published. Historically, some countries also granted patentee’s a period of post-grant secrecy. US courts have ruled that these foreign patents still count as patented under the statute so long as the secrecy is only temporary and the patent is eventually and meaningfully “laid open for public inspection.” See In re Kathawala, 9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993) and In re Carlson, 983 F.2d 1032 (Fed. Cir. 1992). The statute covers patents issued in any country and because the US has no direct control over how any particular country publishes its patents, the “patented” clause has the potential of potentially becoming meaningful if countries decide to again limit publication.

Patented but not Described?: There is also some potential that, even when a patent is published, a particular element in the prior art will covered by the patent claims but not sufficiently described to qualify under the “printed publication” leg of the clause. The enablement and written description requirements of 35 U.S.C. § 112 (as well as their worldwide equivalents) largely eliminate this possibility. However, the truth is that patents regularly issue that are directed to particular inventions but that are not fully enabled by the specification. In those cases it is quite possible that an invention be “patented” without being “described in a printed publication.” (Of course, this may be unlikely because US courts have placed such a low enablement requirement on prior art).

Thoughts?

2011 Recap: The Practically Important Elements of the America Invents Act of 2011

Patent, , , ,

As a new year begins, Paul Morgan reflects on the practical importance of the Leahy-Smith America Invents Act of 2011 – the major patent reform effort that was enacted in September 2011. Although admittedly oversimplified (like any short-list), Paul's list provides some food for thought for patent strategists. He looks forward to comments.

By Paul Morgan

1. Regarding the hyper-hyped "first inventor to file" replacing of "first to invent" — the number of situations in which two different parties file patent applications on the same or substantially the same invention, and the second to file obtains valid dominant patent claims, is miniscule (now less than 20 a year). Cases involving invention "derivation" are a small percentage of even that miniscule number. In other words, the removal of alleged prior "invention date" arguments is not a significant AIA change.

2. The most significant AIA changes, which will affect almost every patent applicant, are in the definitions of what counts as prior art. The AIA provides a considerable simplification (albeit with a few ambiguities). Also, most prior art will now become instant "bars-to-patentability." U.S. application foreign priority filing dates and foreign public disclosure dates both becoming U.S. prior art dates will provide a significant prior art increase. The ending of PTO Rule 131 alleged prior invention dates declarations "swearing behind" earlier prior art dates will have a limited effect on some patent grants, but little or no effect on successfully litigating patents. [Rule 131 declarations are ex parte, uncontested, and often inadequately examined, so they rarely survive litigation challenges and easily raise inequitable conduct issues.]

3. Delaying filing patent applications after publicly disclosing one's invention is foolishly dangerous now, and will remain so. It will also continue to destroy foreign patent rights. There is a [sole remaining] one year "grace period" for doing that, but that grace period is ambiguous as to its disclosure extent requirements and effect. Delaying the filing of at least provisional applications for new products still under development will become more dangerous even if kept secret, due to the above changes in prior art and its effective dates.

4. The AIA significant increases the value of trade secrecy protection (instead of or even in addition to patenting) for any inventions which can be kept secret while being commercially exploited. There is potential dual IP protection from the AIA elimination of "best mode" defenses. Even more so if disputed ambiguities in AIA 102(a)(1) are held to overrule the long-established Metalizing Engineering doctrine that "forfeits" patenting after having already commercially exploited an invention, which would allow tacking on full term patent protection after unlimited years of trade secrecy protection. A rather surprising impact of "patent" legislation.

5. The ability to eliminate any inequitable conduct defense before patent litigation is provided in the new "Supplemental Examination." [An ex parte reexamination solely for patent owners to request and participate in, and thus a potentially powerful new tool for patent enforceability, although its PTO rules and actual usage remain to be seen.]

6. Ending the "false marking suits" plague and the naming of numerous defendants in the same patent suit [to avoid venue transfers] is already accomplished. Also, there is a new "virtual" marking system that really ought to be used.

Finally, the practical effects of many other text-extensive AIA changes, such as the new or amended and Board-run inter partes reexaminations and 9 month only PGR opposition systems, are too soon to predict. Especially given their potentially dangerous estoppels, predictable higher costs, un-issued PTO rules, and the limited number of them that the PTO will accept each year.

Judge Newman Rejects Reexamination following Validity Verdict (in Dissent)

Patent, ,

by Dennis Crouch

There is a significant and growing overlap between patents in reexamination and patents in litigation.  These parallel processes raise practical issues priority and precedence between decisions by a court compared with actions by an executive agency.  In her recent dissent in the appellate decision of In re Construction Equipment Company (CEC), —- F.3d —-, 2011 WL 6224539 (Fed. Cir. 2011), Judge Newman argued that a reexamination proceeding requested by an accused infringer (PowerScreen) after a court had already finally rejected the accused infringer's obviousness defense should be considered an an unconstitutional violation of separation of powers and a violation of principles of res judicata and issue preclusion.  The majority (Judges Prost and O'Malley) affirmed the PTO determination on reexamination that CEC's claimed invention is obvious and therefore unpatentable.

The facts of the case are simple:

Litigation: In 1996, CEC sued PowerScreen for infringement. PowerScreen argued that the patent was invalid as both obvious and anticipate. However, the district court rejected those arguments and upheld the patent's validity and issued a permanent injunction. The Federal Circuit affirmed that decision in 2000. Powerscreen then unsuccessfully petitioned the Supreme Court for a writ of certiorari.

Reexamination: In 2007, PowerScreen decided to take another bite at the apple and filed a reexamination request - identifying the same prior art references rejected in the district court decision as well as a few others. See Reexam No. 90/008,447 (Fed. Cir. 2011).  The examiner rejected the claim, BPAI affirmed, and CEC appeal to the Federal Circuit. 

Back to Litigation: Based upon the reexamination results, PowerScreen would like for the district court to lift the permanent injunction.

Judgment:

The Majority rejected Judge Newman's contentions largely based upon the Federal Circuit's 2008 Swanson decision.  In that case, the court allowed a reexamination to proceed even though the requesting party had unsuccessfully asserted some of the same prior art in litigation of the same patent.  There, the court explained the general principle that issue preclusion does not apply to patent validity judgments (although it does apply to patent invalidity judgments).

Open door to estoppel: Although the majority agreed that the patent was properly invalidated during the reexamination, it refused to opine on whether the adjudged infringer “might or might not be entitled to seek abrogation of the injunction” based upon the reexamination results.

Invalidity affirmed.

Notes on the Case:

  • As an aside, at oral arguments, Judge O'Malley asked the patentee to explain the “points of novelty” of the invention.
  •  Scott A. McKeown writes that under this case “the infringer could attempt to 'undo' the effect of the earlier, final, court judgement by invalidating the patent via the EXP filing.”
  • Michael Barclay writes “Judge Newman sure likes patents.”
  • PHawk writes that the “ruling is merely exemplary of the present policy to eviscerate patent protection for all but large corporations.”

Guest Post: Supplemental Examinations and the Client-Practitioner Relationship

Patent

Guest Post by Professor Lisa A. Dolak

Pursuant to the America Invents Act, supplemental examination will be available as of September 16, 2012.  Patent owners will be able to ask the U.S. Patent and Trademark Office “to consider, reconsider or correct” information that was not considered (or was inadequately considered) during a prior prosecution.  And the courts will be barred from holding a patent unenforceable based on information that was considered during a supplemental examination (and any resulting USPTO-ordered reexamination).

The introduction of supplemental examination raises many questions, and our understanding of the implications of this new opportunity will develop as the USPTO rule-making unfolds and as patent owners, litigants and the courts gain experience with it.  But some potential implications concern the relationship between practitioners and their clients, and may prompt new thinking about that relationship on the part of each.

Inherent in the design of supplemental examinations is the opportunity for the patent owner to liberate the patent from any taint resulting from misconduct in its procurement.  The supplemental examination proceeding is designed, in fact, to divorce the patent owner’s property right from any actual or alleged past misconduct on the part of the patent owner or its representative.  In particular, as illustrated by the legislation’s “carve out” for USPTO-detected “material fraud”, the enforceability of a patent that has undergone supplemental examination is a separate issue from the obligations of registered practitioners, inventors, and others who participate substantively in patent prosecution to disclose (and refrain from misrepresenting) known material information to the USPTO.   It is this opportunity to detach the enforceability of the patent from any misconduct in its procurement, in particular, that has the potential to impact the client-practitioner relationship.

From the perspective of the patent owner, supplemental examination provides an opportunity to have the USPTO consider, reconsider or correct information relating to patentability, and to remove that information as a potential basis for a viable inequitable conduct challenge in the courts.  In some cases, at least, it can be expected that the patent owner’s primary or even sole consideration, then, will be the “cleansing” of the patent.

However, as noted above, the very legislation that creates this opportunity for patent owners requires the USPTO to refer suspected material fraud to the United States Attorney General.  And, as is expressly preserved by the AIA, the USPTO retains its authority to discipline registered practitioners.  Thus, where misconduct such as an intentional candor violation did occur or might reasonably be suspected to have occurred, supplemental examination could lead to disciplinary or even more serious consequences for practitioners.  Accordingly, the interests of patent owners and the practitioners who assisted in the procurement (or a prior examination) of the patent as they relate to the use of supplemental examination have the potential to diverge – significantly.

For those patent owners who are themselves not potentially subject to criminal or disciplinary investigation or sanction, this possibility should not present a problem.  Patent owners are free, of course, to hire different counsel for supplemental examination than they used to prosecute the patent in the first place.  And, given that deceptive intent is irrelevant to supplemental examination and that any consequences for misconduct unearthed in supplemental examination will effect only the person(s) suspected of being involved in that misconduct, a patent owner (it appears) need not be concerned about whether a supplemental examination request suggests such misconduct.  But practitioners may find such a situation disconcerting, as they may have concerns about being thrown under the proverbial bus, even where the patent owner did not so intend.

For one thing, by definition, a practitioner who is not asked file a supplemental examination request relating to a prior prosecution in which she was involved will not have the opportunity to participate in the development of such a request.  But a practitioner who is engaged to request supplemental examination regarding a patent he prosecuted may have an additional or different concern, namely, whether the circumstances create a conflict between his client’s interest in cleansing the patent and his personal interest in his reputation and good standing.

Much in this regard will depend on what information the USPTO requires or permits (or receives) in supplemental examination requests, and whether supplemental examinations ultimately lead to any conduct-related investigations or charges.  Although we’ll learn something about the former from the upcoming USPTO rule-making, the latter, at least, will take some time to develop.  In the meantime, the potential effects of supplemental examination relating to the relationship between clients and practitioners are among the questions raised by this proceeding.

Vote for Patently-O Today – Get Free Books! :)

Patent

(Click here to vote)

In the final two days of voting, Patently-O needs another 150 votes to win the American Bar Association's "Favorite" IP law blog. Gene & Renee Quinn's excellent IP Watchdog took the lead in the voting during the Holiday weekend with an offering of a free patent bar review course for votes in their favor. (Nobody reads Patently-O during the Holidays). 

What can I offer?: Free books!  I receive lots of interesting and excellent books in the mail. Two that I recently received from Oxford University Press (OUP) are the U.S. Patent Prosecutor's Desk Reference by Graham and Marlow and Patent Litigation in China by Douglas Clark. Each are listed at $225. 

To enter a drawing for the books, just vote for Patently-O in the IP Law Category and let me know via e-mail by Saturday (12/31) (dcrouch@patentlyo.com).

To vote, direct your browser to http://www.abajournal.com/blawg100, complete the 15-second registration form (anon registration OK); locate the IP Law Category; and Vote.  

(Click here to vote)

Pic-107  Pic-108

For Republicans, think of this as a warm-up for next week's primary season.  For everyone else, this may be your most meaningful vote until November. 

PS: Get a second entry into the drawing by letting me know that you have posted the following to your Facebook or Twitter account: "Vote for Patently-O http://www.abajournal.com/blawg100 and mail @patentlyo to win $450 in patent law books.  Requires 15-second anon registration."

Patents, Litigation and Reexaminations

Patent,

By Jason Rantanen

The number of patents involved in litigation
The number of patent suits filed each year is well known.  But what about the number of patents involved in those cases?  Mark Lemley and others have estimated that about 1-2% of all issued patents have ever been litigated.  To test this estimate, I searched the LEXIS utility patents database using the LIT-REEX field to identify all patents that were flagged as the subject of litigation filed in the year 2009.*  I ended up with 3404 patents, or approximately 2% of the average number of utility patents that the PTO issued annually over the previous decade. 

This result provides further confirmation of the conventional belief that the vast majority of patents are never litigated – especially since I suspect it overstates the percentage of patents involved in litigation, as it assumes that the litigation flag is limited to just infringement suits (as opposed to inventorship disputes, for example) and it does not take into consideration the fact that some patents are the subject of multiple suits filed in different years.  

How old are these patents?
The below chart shows the age of the patents involved in suits filed in 2009.  More than half (55%) of these patents were at least five years old as of the litigation filing date; 24% were over ten years old. 

Reexams and litigation

What about reexamination requests?
The above chart also shows the number of patents involved in suits filed in 2009 that have ever been the subject of a reexamination request.  Of the 3404 total patents, LEXIS reports that reexams were requested at some point for 578 (17%).  Many of these requests were filed in 2009 or later (likely as part of a litigation strategy): 398, or 11% of the total number of patents involved in suits filed in 2009 were the subject of a reexam request in 2009, 2010, or 2011.

*I used 2009 because the 2010 and 2011 results were affected by the numerous false marking suits filed in those years.  

CAFC & TTAB: No (Excess) Leeway for Pro Se

Patent

ImageAgentProxyBenedict v. Super Bakery (Fed. Cir. 2011)

by Dennis Crouch

Mr. Benedict from British Columbia holds the U.S. trademark registration for the mark G THE GOODYMAN – U.S. Trademark Registration No. 2,966,255, granted on July 12, 2005.

Super Bakery holds U.S. Trademark Registration No. 2,930,398, granted on March 8, 2005 for the word mark GOODY MAN.  Both marks are registered in International Class 30 with Benedict specifying, inter alia, “cookies, cakes, tarts, rice cakes, strudels, and donuts” and Super Bakery specifying “bakery products, namely cupcakes.”

In 2007, Super Baker filed a petition with the TTAB for cancellation of Benedict’s mark. During discovery, Super Bakery requested a number of documents and Benedict (acting pro se) failed to either object or provide the documents. Super Baker then filed a motion to compel discovery that went unopposed, followed by a motion for default judgment.  Based upon Benedict's failure to comply, the TTAB awarded Super Bakery a default judgment and cancelled Benedict's mark. 

On appeal, the Federal Circuit affirmed. Writing for the unanimous court, typically pro-applicant Judge Newman agreed that "The remedy of default judgment was within the Board’s discretion in view of Benedict's repeated failures to comply with established and reasonable procedures orders.” 

Although the Board did give some leeway to Mr. Benedict as a pro se applicant, Judge Newman agreed that the rules can only bend so far.  "The possession of a trademark registration places a routine obligation on the possessor [even a pro se trademark owner] to participate in reasonable procedures concerning rights or interests affected by that registration."  Here, default judgment and cancellation was appropriate based upon Benedict's "repeated failures to comply with established and reasonable procedures orders."

Notes: 

In Memory: Gideon F. “Frank” Rothwell, IV

Patent

A longtime leader of the patent bar, Gideon F. “Frank” Rothwell, IV, passed away on Christmas day near his home in Naples, FL. Frank was a graduate of the University of Missouri (1949) as well as GWU Law and is from a small town near Columbia, Missouri. One year out of law school, he co-founded what is now the Sughrue Mion firm. In 1981, he founded the Rothwell Figg. Frank was long a supporter of Patently-O, and we had a great conversation about Mizzou during a recent IPO meeting. His namesake (GFR I) was also a Mizzou graduate and a member of Congress.

Hal Wegner reports that GWU will host a memorial ceremony at the Law School in the Faculty Conference Center. A reception will follow.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

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

Injunctive Relief and the Public Interest at the ITC

Patent,

by Dennis Crouch

The U.S. International Trade Commission is a branch of the U.S. government designed to protect and serve U.S. interests.  The ITC handles a variety of international trade issues, including passing judgment on whether importation of accused products constitutes actionable patent infringement. These Section 337 disputes have become more important as more expensive and high-technology products are being imported rather than being manufactured in the US and because of legal changes that have made injunctive relief relatively more likely in an ITC proceeding as compared with federal court litigation.

Although both the patentee and accused infringers have standing to argue their respective cases, ITC proceedings are administrative in nature with a focus on whether a domestic industry deserves protection.  Thus, rather than being captioned Apple v. HTC, the recent dispute between the two parties has the title: In the Matter of CERTAIN PERSONAL DATA AND MOBILE COMMUNICATIONS DEVICES AND RELATED SOFTWARE, 337-TA-710.

In its decision on the case, the Commission concluded that HTC’s Android phones violated Apple’s Patent No. 5,946,647 (Claims 1 and 8) and that the HTC phones do not infringe the asserted claims of Apple’s Patent Nos. 5,481,721, 6,275,983, or 6,343,263.  Commentators have noted that HTC should have little trouble designing around the the ‘647 patent. This is especially true because the Commission gave HTC four–months to alter its product before injoining further importation. 

In federal court litigation, a court can only award injunctive relief after considering teh four equitable factors outlined in eBay v. MercExchange. The ITC is not bound by eBay, but is required to consider the impact that an injunction (or “exclusion order”) would have on competition and consumers.  Interestingly, the ITC order follows a recent NYTimes editorial, by Professors Mark Lemley and Colleen Chien who argued for delay in exclusion orders in order to serve the public interest.

If the ITC continues to give more weight to the public interest factor, the result is that ITC exclusion orders may begin to parallel the injunction that a court would have ordered under eBay. Although the ITC still does not directly consider the first three eBay factors, it does require a domestic industry being harmed by the alleged importation.  That harm is often the type of harm that would help a patentee prove its case under eBay.

Notes:

  • The ITC does not have power to award damages. This could suggest that the ITC decisions automatically satisfy the first-two eBay factors.
  • In the Apple v. HTC case, the full decision on the merits that discusses the public interest factors has apparently been held as classified (or at least under seal).  The US President has the statutory right to disapprove of the decision within the next 60 days.
  • Claim 1 of the infringed ‘647 patent is the broadest of the infringed claims and is directed to a system of detecting structures in data and then performing some action on the structures. The claim reads as follows: 1. A computer-based system for detecting structures in data and performing actions on detected structures, comprising: an input device for receiving data; an output device for presenting the data; a memory storing information including program routines including an analyzer server for detecting structures in the data, and for linking actions to the detected structures; a user interface enabling the selection of a detected structure and a linked action; and an action processor for performing the selected action linked to the selected structure; and a processing unit coupled to the input device, the output device, and the memory for controlling the execution of the program routines.
  • These patents were all filed in the mid-1990’s and no, Steve Jobs is not listed as an inventor of any of them.