Morgan: Ambiguities in Defining Prior Art under the Leahy-Smith America Invents Act

Patent

In our newest Patently-O Patent Law Journal article, former Xerox patent counsel Paul Morgan highlights two important ambiguities in the new 35 U.S.C. § 102(a)(1) as defined by the Leahy-Smith America Invents Act. This provision replaces Sections 102(a) and 102(b) and, beginning in March 2013 will serve as the fundamental definition of prior art in the US patent system. Under the new statute, no patent can 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.” The language “otherwise available to the public” is new to the patent statute. Morgan makes the counterintuitive case that the catchall phrase actually serve the purpose of limiting limit the scope of prior art under the statute. In particular, the language suggests that the other types of art identified in the statute are also “available to the public.” If so, this statutory change could be seen to overrule doctrines that bar patent rights based upon secret commercialization by the patentee. See, for example, Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F. 2d 516, 520 (2nd Cir. 1946).

Read the article: Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29.  Download Morgan.2011.AIAAmbiguities

Forthcoming Article: Patentable Subject Matter for Diagnostic Methods after in re Bilski

Patent

Review by Dennis Crouch

Professor Eisenberg (Michigan) is one of the leading academics focusing on proprietary rights in biomedical research. She has been writing about biotech patents and other forms of protection since the 1980's. Most recently, Professor Eisenberg provided final version of her forthcoming article titled "Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski." The article will soon be published in the Case Western Reserve Journal of Law, Technology & the Internet, but I wanted to highlight the article today because it speaks directly to the pending case of Mayo v. Prometheus. Oral arguments are scheduled in Prometheus for Wednesday, December 7, 2011.

Prior to its 2010 decision in Bilski v. Kappos, the Supreme Court's leading precedent on patentable subject matter was the quartet of cases issued before the formation of the Court of Appeals for the Federal Circuit. See, Benson, Flook, Diehr, and Chakrabarty. In deciding the patentable subject matter question raised in Bilski, the Supreme Court simply pointed back to its old precedent as controlling. Eisenberg writes: "The Supreme Court reaffirmed the authority of these decisions without explanation in Bilski v. Kappos, thereby demanding formal adherence to stare decisis without following the discipline of common law reasoning."

In her article, Professor Eisenberg asks the Supreme Court to use this next opportunity in Mayo v. Prometheus to "not only to clarify the boundaries of patentable subject matter, but to explain what the doctrine of patentable subject matter is all about." She points to three possible uses of the doctrine: (1) PSM could serve as a threshold inquiry that economizes administrative costs by excluding some kinds of subject matter from the front door of the patent system without the need for a full examination. However, Eisenberg recognized that "patentable subject matter doctrine does not and cannot serve that role in its current form." (2) PSM could be useful in "limiting heterogeneity" of the system by narrowing the technological diversity of patentable inventions and excluding technologies for which "less protection is optimal." (3) PSM could serve as a backstop for when other patentability doctrines fail to protect the public domain, properly limit claim scope, or ensure that building blocks of innovation are available for future innovators.

Notes:

.

IP Hall of Fame Nominations

Patent

by Dennis Crouch In 2006, the publishers of the UK based Intellectual Asset Magazine (iam) founded the non-profit IP Hall of Fame to honor individuals who have made an outstanding contribution to the development of IP law and practice. The process begins with nominations from the public and then voting by members of the 45 members of the IP Hall of Fame Academy. The Academy includes previous inductees to the Hall of Fame and a handful of additional members. (I am a voting member of the Academy but not the IP Hall of Fame). The focus is global and includes all areas of intellectual property law and practice.

Call for Nominations: The nomination process closes on December 9, 2011. To nominate someone, simply fill in the nomination form and supply a paragraph of between 50 and 100 words to support your nomination. The award ceremony and gala dinner will be held at the Estoril Casino near Lisbon, Portugal during the IP Business Congress in June 2012.

Recent patentable subject matter decisions at the BPAI

Patent,

By Dennis Crouch

Here are several recent BPAI decisions on patentable subject matter eligibility.

New Rejection in Answer: Examiner’s Answer raised new a new Section 101 issue, but applicant failed to respond in the reply brief. BPAI Holding: “We therefore summarily sustain this rejection.” Ex Parte Maeng, 2011 WL 6012458 (BPAI November 30, 2011).

Delay in Adjudication: L’OREAL claims a “method for recommending a beauty product” that includes several steps, including applying a beauty product to a person and then seeing how the person looks under various simulated lighting environments. The examiner rejected the claim as unpatentable based upon its failure to satisfy the machine-or-transformation test. On appeal, the BPAI reversed the rejection, holding that “a full analysis as outlined in Bilski v. Kappos … should have resulted in a finding by the Examiner that the claimed subject matter either was or was not an abstract idea, and hence, respectively, that the claimed subject matter was not patent eligible or was patent eligible in this particular instance.” This case highlights a problem with the growing backlog at the BPAI. The Examiner’s final rejection was mailed in 2009 and she mailed the Examiner’s Answer in February 2010, a few months prior to the Supreme Court’s decision rejecting the machine-or-transformation test as a determinative test of patentable subject matter eligibility. Ex Parte Hessel, 2011 WL 6012477 (BPAI November 30, 2011)

CyberSource Rejections: Citing the Federal Circuit’s recent decision in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), the BPAI has affirmed a Section 101 rejection of an IBM application that claims a “computer-implemented method for partitioning a domain dataset.” Despite the “computer implemented preamble, the BPAI held that the claimed process was not patent eligible because it “could be performed by a human writing on a piece of paper.” The Board quoted CyberSource for the proposition that “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”

IBM had also include claims directed to a “system for partitioning” that included “nominal recitations of conventional hardware in the body of the claim (e.g., ‘a memory’ and ‘a processor’).” As instructed by CyberSource, the court considered the “underlying invention for patent-eligibility purposes” rather than particular nominal claim limitations. Here, the BPAI found that the true invention was the process and that the system claims were simply reformulated versions of the method and therefore, that the system claims should be interpreted as process claims.

In analyzing the underlying invention of independent “system” claims 26, 27, and 28 as a process, we again conclude that the scope of the recited functions (steps) covers functions that can be performed in the human mind, or by a human using a pen and paper (e.g., claim 26: “establish an evaluation function” and “partition said domain subset”). Therefore, we conclude that unpatentable mental processes fall within the subject matter of independent claims 26-28.

IBM also include “Beauregard claims” directed to an “article of manufacture” comprising “a computer readable medium.” The BPAI likewise found those claims unpatentable under 35 U.S.C. §101 as interpreted by CyberSource. Ex Parte Vilalta, 2011 WL 6012377 (BPAI November 29, 2011). On the flip side of this, the BPAI has also been holding that claim scope must be determined before Section 101 analysis can be complete. See Ex Parte Black, 2011 WL 6012476 (BPAI November 28, 2011).

Software Not Patentable: OPNET Tech’s patent application is directed toward a “network monitoring system” that includes a set of “collectors”, “analyzers”, and “reporters” as well as an “automated engine” configured to control the applications in achieving a target task. In the specification, the applicant wrote that each element of the system could be created in software and the Board concluded that “the invention can exist solely as software.” Citing the Federal Circuit’s 1994 Warmerdam decision, the Board held that a claim that covers a “purely software embodiment” cannot be patentable subject matter. Ex Parte Cohen, 2011 WL 6012432 (BPAI November 29, 2011). On the flip side, the BPAI held that a “web based system” is patent eligible because such a network based requires “more than software per se, because a web, upon which a web-based system is based, is physical, in addition to software, in that it requires computers and routers and telecommunications equipment to operate.” Ex Parte Vogel, 2011 WL 6012447 (BPAI November 21, 2011).

Providing, Receiving, and Manufacturing: Small paper manufacturer Grays Harbor has seemingly spent a small fortune prosecuting its patent application No. 09/849,504. The invention relates to their computerized system for processing paper and was filed back in 2001. One step of rejected method claim 11 was written as follow “receiving a promotions order from a third-party advertiser to place promotional material on an enclosure…” OK, nothing brilliant in this limitation (or another limitation involving “providing instructions”) with regard to inventiveness, but the Board’s rejection was odd – holding that that the claim’s “recitation of the steps of receiving and providing are merely abstract ideas because each step is recited in the future tense of ‘to place’, ‘to create’, ‘to deliver’, and hence is only contemplated, rather than executed.” Ex Parte Quigg, 2011 WL 6012448 (BPAI November 22, 2011)

Provisional Patent Application Filing Count

Patent

by Dennis Crouch

Provisional patent applications continue to remain popular, and the number of annual filings continue to rise at a moderate pace. In FY2011, more than 150,000 provisional applications were filed. That number is roughly the same as the number of original non-provisional applications filed by US entities during the same period. (Here, “original” means that the filing was not based on a prior non-provisional application or a foreign patent application).  Of recent US patents issued that do not claim international priority, more than 1/3 claim priority to a provisional application filing. (This excludes applications claiming foreign & PCT priority).

PatentlyO122

Federal Circuit Holds Defendant’s State of Incorporation (Delaware) Improper Venue

Patent, , ,

By Dennis Crouch

54727largeLogoIn re Link_A_Media Devices Corp. (LAMD) (Fed. Cir. 2011)    

Introduction: The Federal Circuit has again asserted mandamus power to order a patent case to be transferred to a more convenient forum under 28 U.S.C. § 1404(a) – holding that Judge Robinson's denial of transfer out of Delaware was an abused of discretion.

Three facts make the case somewhat interesting and novel. First, the transfer is not out of Texas, but rather from Delaware to the Northern District of California. Second, the defendant, LAMD, who requested the transfer is a Delaware Corporation (although its operations are in California). Finally, the plaintiff, Marvell Int'l., is a foreign entity based in Bermuda although its subsidiary, Marvell Semiconductors, and the named inventors are all based in California.

Legal Background: The due process clauses of the US Constitution have been read to place personal jurisdiction limitations on the power of courts to pass judgment on non-resident parties. In patent cases, personal jurisdiction is rarely an issue because most defendants are national-players that have sufficient minimum contacts in every local jurisdiction.

Even when a court has personal jurisdiction over a case, the laws of civil procedure allow a court to transfer a case to a different jurisdiction "[f]or the convenience of the parties and witnesses, in the interest of justice." 28 U.S.C. § 1404(a). This provision in the law is derived from the common law doctrine of forum non conveniens and there continues to be cross-talk between the two docrines.

Lower Court Decision: In her decision to keep the case in Delaware, Judge Robinson primarily gave weight to three factors: (1) the plaintiff's choice of forum; (2) the defendant's choice of Delaware as its state of incorporation; and (3) the international (rather than regional) nature of the defendant. In addition, the court found no "congestion" problems or identified problems "with discovery or witness availability."

On appeal, the Federal Circuit reversed – holding that the fact that a defendant is incorporated in the forum state is only one factor to be considered in the analysis.

The Federal Circuit particularly pointed to four errors in the district court's analysis.

Choice-of-Forum: First, the court indicated that "far too much weight" was given to the plaintiff's choice of forum. While some weight may be given to that choice, the plaintiff's choice is given less deference when the forum is not the home-forum of the plaintiff. (Note, this result has the potential of being discriminatory to foreign entities under TRIPs because the foreign entities have no "home forum" in the US.)

State of Incorporation: Second, the appellate court held that heavy reliance on state of incorporation is inappropriate.

Neither § 1404 nor Jumara [the leading 3rd Circuit 1404 case] list a party's state of incorporation as a factor for a venue inquiry. It is certainly not a dispositive fact in the venue transfer analysis, as the district court in this case seemed to believe.

Convenience of Records: Judge Robinson refused to give weight to the convenience of witnesses and location of books and records – holding that those traditional 1404 factors are "outdated" except where truly regional defendants are litigating. The Federal Circuit held that at least some consideration should have been given to these factors.

Public Interest: Finally, the court looked to the interest of the forum jurisdiction (Delaware) in deciding the case and found it had very little interest because the state had no connection to the dispute and no connection to the parties other than the fact that LAMD is incorporated there.

Holding: The District Court is ordered to direct transfer of the case to the United States District Court for the Northern District of California.

  • It is important to note here that the Federal Circuit based its mandamus decision on 3rd Circuit law rather than Federal Circuit law.
  • Pilar G. Kraman discussed the district court decision at the Delaware IP Law Blog.

Patently-O and the Top 100 Legal Blogs: Vote Here

Patent

The ABA Journal has again chosen Patently-O as one of the top-100 legal blogs along with Gene & Renee Quinn's IP Watchdog and Evan Brown's Internet Cases. This is the fifth year that the ABA Journal has published this list, and Patently-O has made the list each and every year. 

We've made a number of major improvements to Patently-O's coverage over the past year. Most notably, Professor Jason Rantanen is now a co-author, Lawrence Higgins is covering Bits and Bytes, and we have published a number of excellent guest posts both on the blog and in the associated short form Law Journal. Ryan Swarts is managing the Patently-O Job Board and he reports that we've had more job postings the past year than ever before (36 last month) and more readers as well (500,000 page views).

Some Stats: During the past year there have been more than 700,000 unique visitors to the Patently-O website and the vast majority of visits are return-visits. In addition, these days well over 20,000 patent law professionals receive Patently-O through a free daily e-mail service.

We have several projects that we hope to implement over course of the next few months. Most importantly, we'll be rolling-out a complete of the site on a new blogging platform that allows for better control of comments through moderation and comment-ranking as well as easier navigation through the site archives and a high quality mobile version of the site. We're also talking with several potential regular contributors who could provide additional case studies on patent prosecution, litigation, examination and licensing. As always, please let me know if you have concerns or ideas for the site. dcrouch@patentlyo.com.

How can you help: In addition to the top-100 list, the ABA is also holding a popularity contest. I would appreciate your vote in the IP Law Category. To vote, you have to register but you don't have to provide the ABA with actual identifying information. VOTE HERE.

2011Blawg100_VoteBlueRec

Thanks again!

Dennis

Teva v. Astrazeneca: Invalidating a patent with secret prior art

Patent

By Jason Rantanen

Teva Pharmaceutical Industries Ltd. v. Astrazeneca Pharamceuticals LP (Fed. Cir. 2011) Download 11-1091
Panel: Rader, Linn (author), Dyk

"Secret" prior art is prior art that is not available to the public as of the date of invention for the relevant patent.  The most well-known category of secret prior art is that of pre-publication patent applications. 35 U.S.C. 102(e).  Less commonly asserted is prior invention by another under 102(g)(2).  This case illustrates the strength of such prior art under the current novelty framework.

Teva, the owner of Patent No. RE39,502, sued AstraZeneca, asserting that an AstraZeneca drug (CRESTOR) infringed several claims of the '502 patent covering a pharmaceutical formulation stabilized exclusively by an amido-group containing polymeric compound ("AGCP compound").  The problem Teva faced was that AstraZeneca had made the first batches of its drug in the summer of 1999, prior to Teva's asserted invention date of December 1999. Given this prior invention by AstraZeneca, the district court granted summary judgment of anticipation under 102(g)(2). Teva appealed.

Teva's principal argument on appeal was that because AstraZeneca had failed to appreciate the stabilizing role the AGCP compound played in its drug product in 1999, it had not conceived of – and therefore not made – the invention as required by 102(g)(2).  This argument rested on the undisputed fact that although AstraZeneca's drug contained an AGCP compound, it was designed to use a non-AGCP compound as the stabilizer; the AGCP compound was believed to be a disintegrant.

Note: Because both the product that Teva accused of infringing and the 1999 batches were the same formulation, AstraZeneca conceded infringement for purposes of its motion for summary judgment of invalidity.  In other words, it was undisputed that the AGCP compound was acting as the exclusive stabilizer even if AstraZeneca was unaware of that fact in 1999.

Conception requires an appreciation of what is made, not why it works: Rejecting Teva's argument, the panel concluded that AstraZeneca had met the requirement for conception of its prior invention by appreciating "that the compound it created was stable and what the components of the formulation were."  Slip Op. at 12.  AstraZeneca did not need to appreciate which component was responsible for the stabilization or why the invention worked.

The "invention" as distinct from the claims for purposes of 102(g): In arriving at its ultimate conclusion of anticipation, the court drew a distinction between the "invention" and the claims, at least for purposes of 102(g).  Traditionally, an anticipation analysis involves first establishing that something is prior art and then demonstrating that this prior art contains all the elements of the claimed invention either expressly or inherently.  Under a conventional approach to anticipation, then, Teva's claims would be invalid once the prior art status of AstraZeneca's 1999 batches was established since there was no dispute that the batches met all the limitations of Teva's claims.

Section 102(g) operates somewhat differently, however, due to its origins in the interference context. It requires that another inventor have made "the invention" that is at issue.  To address this issue, the court in Teva invoked a broad view of what constitutes the "invention" that allowed it to conclude that AstraZeneca had conceived of the same invention as Teva despite AstraZeneca's failure to think of it in the claimed terms.  Quoting from Dow Chemical Co. v. Astrao-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001), the court applied a concept of the "invention" as distinct from the claims.  "The invention is not the language of the [claim] but the subject matter thereby defined."  Slip Op. at 12, quoting Dow (quoting Silvestri v. Grant, 496 F.2d 593, 597, 599 (CCPA 1974)).  “The language of the count is but one way to define the new form and certainly not a unique definition [. . . and a]ny claim they might have written, based on this or other information specific to [the new form] would still define the same subject matter as the count even though in different terms.” Slip Op. at 9, quoting Silvestri at 601 (CCPA 1974)).  “[T]hat which we call a rose [b]y any other name would smell as sweet.”  Slip Op. at 9, quoting William Shakespeare, Romeo and Juliette act 2, sc. 2.  Based on this view of the "invention" as a metaphysical entity existing independent of any defining claim language, the court held that AstraZeneca had conceived of Teva's invention, despite doing so in different terms than Teva chose to use in the patent claims. 

The Impact of the AIA: With the change to a first-to-file-or-first-to-disclose system, the America Invents Act eliminates 102(g)(2) prior art.  The impact of this change is significant in cases such as this one: under the future 102, AstraZeneca would not have been able to bring this validity challenge.  Nor is it probable that AstraZeneca could seek protection under the framework of prior user rights: even if its batches met the requirement of being a composition of matter used in a commercial process (there's a strong argument they would not), AstraZeneca's manufacture began less than one year before the filing date of Teva's provisional patent application.

Correction: The first sentence of the original version of this post referred to secret art as art that is unavailable to the public as of the patent's priority date.  That is incorrect.  Secret prior art is prior art that is unavailable to the public as of the invention date for the patent (the relevant date for purposes of 102(e), (f), and (g)). 

Addendum: Several of the comments have pointed to the sentence in the court's opinion that says "By late summer 1999, AstraZeneca had disclosed the ingredients and quantities for its rosuvastatin formulation matching those of all commercial drug dosage strengths," and pointed out that this implies that AstraZeneca's formulation was publicly disclosed prior to Teva's invention date.  The court's use of "disclosure," however, appears to just be an unfortunate word choice.  According to AstraZeneca's brief, the only relevant events that took place during that time period were the manufacture of the batches and an internal company presentation on the finalized sales formulation of the tablets.  Any form of public disclosure took place much later, such as through its patents and applications, the first of which was filed in Great Britain on January 26, 2000.

Divided Patent Ownership, Equitable Title, and Failed Assignments

Patent,

by Dennis Crouch

Gellman v. Telular Corp. (Fed. Cir. 2011)

Issues of standing continue to arise in patent infringement litigation. Well established precedent requires that plaintiffs suing for infringement collectively hold "all substantial rights" in the patent being asserted. Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24 (1923). Thus, if two entities jointly own a patent, standing would only be proper if both entities jointly filed the infringement action. A lesser explored area of the law relevant to this case involves the requirements to prove ownership and the potential burden-shifting effect of assignment recordation.

Gellman's lawsuit involves U.S. Patent No. 6,075,451 which lists Mayer Lebowitz and Jim Seivert as co-inventors. (Seivert's name is misspelled as Sievert on the patent document). Both inventors are now dead. Lebowitz's rights to the patent are being held in trust and the trustee has argued that Seivert's rights to the patent were previously assigned to Lebowitz as well. Supporting that assertion is an assignment from Seivert to Lebowitz that was recorded in the USPTO assignment database in 1998. Unfortunately for the Lebowitz Trust, the assignment document filed with the PTO had a blank signature line and the Trust has been unable to produce any evidence that the assignment document was ever signed.

Three important consequences flow from a conclusion that Seivert never transferred his interest to Lebowitz. First, Seivert's heirs,  beneficiaries, or their assigns now share ownership in the patent. In this case, it appears that Seivert did not designate a beneficiary and therefore ownership is split amongst his heirs according to state intestate law. Second, the Lebowitz trust has no standing to sue because it does not hold substantially all interests in the patent. Third, absent prior agreement, each co-owner of a patent has the full right to offer a license to the defendants to practice the invention, normally without any accounting or compensation to the other patent owners. Here, in a filing with the district court the defendants have asserted that they have each obtained a patent license and release from the Seivert estate.

The Lebowitz Trust (Gellman) made two additional arguments in an attempt to prove that rights had been transferred: (1) the consulting contract and (2) the hired-to-invent doctrine.

The consulting agreement between Seivert and Lebowitz included a clause that any “ideas, discoveries, [or] inventions” by Seivert “shall be and remain the exclusive property” of Lebowitz. And, in addition, Seivert agreed “to execute any and all assignments” necessary.  The agreement had a major problem in that the only record available was unsigned.  In examining the contract, the Federal Circuit additionally found that the agreement was inadequate to prove that a transfer occurred even if it had been properly executed. In particular, the court indicated that the future promise to execute an assignment suggested that no transfer had previously occurred.  The court wrote (I would argue incorrectly) that “[o]therwise, the 'execute any and all assignments' language in the contract is surplusage without relevant meaning.”

In reading the promise to assign, the court agreed that it may create an equitable claim to title in favor of Lebowitz.  However, the law is clear that equitable title is insufficient to confer standing.

Of note, the court's interpretation of the contract appears to be based entirely upon Federal Circuit law rather than state law.

Hired to Invent: Normally patent rights are held by the inventors until those rights are assigned in a written agreement.  This is true even when the inventor is an employee and the invention was created within the scope of the employment. There are a few limited exceptions to this practice that transfer patent rights through operation of law rather than through written assignment. One historic exception is the “hired-to-invent” doctrine that some courts have used to transfer ownership of patent rights to an employer when the employee is hired to make a particular invention. See, e.g., Solomons v. United States, 137 U.S. 342, 346 (1890). This hired to invent doctrine cannot help the Lebowitz Trust here because the doctrine has been interpreted to create “creates only an obligation for the employee to assign to his employer.”

Affirmed. Case Dismissed for Lack of Standing.

Next Steps: If the Lebowitz Trust wants to pursue the lawsuit, it will need to first force transfer of rights from the Seivert estate and then refile the suit against the accused infringers.

Patently-O Bits & Bytes by Lawrence Higgins

Patent
USPTO's Steve Jobs Exhibit
  • On November 16th the USPTO unveiled the Steve Jobs exhibit, highlighting the Patents and Trademarks of Steve Jobs. "This exhibit commemorates the far-reaching impact of Steve Jobs' entrepreneurship and innovation on our daily lives," said David Kappos. "His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace." The exhibit features more than 300 of the patents that Steve bear Steve Jobs name. The exhibit will run through January 15, 2012 and is free and open to the public. [Link] [Link]
Kauffman Foundation

   
  • The Ewing Marion Kauffman Foundation is pleased to announce that the nomination period is now open for the Kauffman Junior Faculty Fellowship in Entrepreneurship Research (KJFF). The Kauffman Foundation will award up to seven Junior Faculty Fellowship grants to junior faculty members in the United States whose research has the potential to make significant contributions to the body of literature in entrepreneurship. Each Fellow's university will receive a grant of $40,000 over two years to support the research activities of the Fellow. Nominees must be tenured or tenure-track junior faculty members at accredited U.S. institutions of higher education who received a Ph.D. or equivalent doctoral degree between January 1, 2007 and December 31, 2010. [Link]
Northern District of California
  • The Court is considering adopting a new Civil Local Rule 5-4 that will address the requirements for electronic filing and abrogating General Order 45. The new rule reflects the evolution of the e-filing program and more accurately captures the current requirements than does the general order which was written in 2003 shortly after the inception of the e-filing program. Comments may be submitted by sending an e-mail to evidence@cand.uscourts.gov before 5:00 p.m. (PST) on December 14, 2011. View the notice and the draft rule: [Link].
  • On November 10, 2011, the District and Magistrate Judges of the Northern District of California adopted General Order 67, promulgating new procedures for the assignment of patent cases. In order to allow necessary changes to be made to the District's computer-based case assignment system, the new procedures will become effective on January 1, 2012. Earlier in 2011, the Northern District successfully applied to the Administrative Office of the United States Courts for designation as a participating district in the Patent Pilot Program. District Judges participating in the program are: Chief District Judge James Ware, Senior District Judge Ronald Whyte, District Judge Jeffrey S. White, District Judge Lucy Koh and District Judge Edward Davila.
  • Although the implementing patent pilot statute refers to District Judges as pilot judges, the Northern District has taken the position that the patent pilot statute does not supersede statutes that allow Magistrate Judges to handle any case pursuant to consent by the parties. Therefore, as the following Magistrate Judges have a particular interest in presiding over patent cases and subject to consent of the parties, the Court will strive to increase the number of patent cases assigned to these judges: Magistrate Judge Elizabeth Laporte, Magistrate Judge Joseph C. Spero, Magistrate Judge Laurel Beeler, Magistrate Judge Donna M. Ryu, Magistrate Judge Paul Grewal, Magistrate Judge Jacqueline Scott Corley and Magistrate Judge Nathanael Cousins. In the remaining weeks of 2011, members of Judge Koh's committee will hold a series of meetings with local bar associations to discuss the new procedures. View the notice and the text of General Order 67: [Link].
Patent Jobs:
  • Young Basile is searching for a patent attorney with 1-4 years of experience and a degree in EE or CS. [Link]
  • Singleton Law Firm is looking for a patent attorney/agent to work in the electrical area. [Link]
  • Coats & Bennett is seeking a patent attorney with a degree in EE and at least 2 years of patent prep and prosecution experience. [Link]
  • Sheppard Mullin is seeking 2 attorneys (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • McDermott Will & Emery is searching for an associate with 2-5 years of patent litigation experience. [Link]
  • Howard & Howard is seeking a patent attorney with 3-9 years of experience in patent prep and prosecution and a chemical background. [Link]
  • Patterson Thuente IP is looking for a patent attorney with a minimum of 2 years experience in patent prosecution for high tech clients. [Link]
  • Michaud-Kinney Group is searching for an IP associate with an electrical or mechanical background and at least 3 years of experience in patent prep and prosecution. [Link]
  • O'Brien Jones is looking for patent attorneys/agents with 2-5 years of experience. [Link]
  • Buether Joe & Carpenter is seeking 1 or more attorneys with patent infringement litigation experience. (5 or more years of patent litigation experience preferred) [Link]
  • Cantor Colburn is searching for a patent attorney with an advanced degree in organic chemistry and at least 2 years of patent drafting experience. [Link]
Upcoming Events:
  • On December 1, 2011, the Institute for Intellectual Property and Social Justice (IIPSJ) will co-present with the United States Patent and Trademark Office (USPTO) the Second National IP Empowerment Summit. The IIPSJ/USPTO IP Empowerment Summit will serve the general public and intellectual property professional and activist community in educating and empowering minority and marginalized artists, inventors, entrepreneurs, and other IP stakeholders in underserved communities. The Summit will provide practical information and presentations for creators and inventors regarding the development, protection, and exploitation of their own innovative and creative works as well as works and inventions in the public domain. [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The Lawyers Association of Kansas City will be presenting a 4 hour CLE on changes to US patent law under the America Invents Act at the offices of Lathrop & Gage in Kansas City, MO on Thursday, Dec. 8, 2011 from 1pm to 5pm. Presenters include: Kent Erickson, Bryan Stanley, and John Garretson. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "Collection, Review, and Production of Your Client's Electronic Information," presented by Shane Delsman on December 14, 2011 at 12:00 noon EST. The webinar will cover topics including collecting electronically stored information (ESI) for further use in the e-discovery process; processing collected ESI; reviewing ESI for relevance and privilege; producing ESI in appropriate forms and storage media; and how the Federal Rules affect the above procedures. [Link]
  • On December 16, the University of San Diego School of Law will host "A Review of the America Invents Act and its impact on the USPTO," with David Kappos. Kappos will discuss the USPTO's efforts to start implementing the law and also give a broad perspective of the various changes the agency is undertaking to facilitate the public's understanding of regulatory revisions. Also, Leonard Svensson will provide a brief overview of the major changes included in the America Invents Act and what the changes means for the San Diego innovation economy. [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Patent
USPTO's Steve Jobs Exhibit
  • On November 16th the USPTO unveiled the Steve Jobs exhibit, highlighting the Patents and Trademarks of Steve Jobs. "This exhibit commemorates the far-reaching impact of Steve Jobs' entrepreneurship and innovation on our daily lives," said David Kappos. "His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace." The exhibit features more than 300 of the patents that Steve bear Steve Jobs name. The exhibit will run through January 15, 2012 and is free and open to the public. [Link] [Link]
Kauffman Foundation

   
  • The Ewing Marion Kauffman Foundation is pleased to announce that the nomination period is now open for the Kauffman Junior Faculty Fellowship in Entrepreneurship Research (KJFF). The Kauffman Foundation will award up to seven Junior Faculty Fellowship grants to junior faculty members in the United States whose research has the potential to make significant contributions to the body of literature in entrepreneurship. Each Fellow's university will receive a grant of $40,000 over two years to support the research activities of the Fellow. Nominees must be tenured or tenure-track junior faculty members at accredited U.S. institutions of higher education who received a Ph.D. or equivalent doctoral degree between January 1, 2007 and December 31, 2010. [Link]
Northern District of California
  • The Court is considering adopting a new Civil Local Rule 5-4 that will address the requirements for electronic filing and abrogating General Order 45. The new rule reflects the evolution of the e-filing program and more accurately captures the current requirements than does the general order which was written in 2003 shortly after the inception of the e-filing program. Comments may be submitted by sending an e-mail to evidence@cand.uscourts.gov before 5:00 p.m. (PST) on December 14, 2011. View the notice and the draft rule: [Link].
  • On November 10, 2011, the District and Magistrate Judges of the Northern District of California adopted General Order 67, promulgating new procedures for the assignment of patent cases. In order to allow necessary changes to be made to the District's computer-based case assignment system, the new procedures will become effective on January 1, 2012. Earlier in 2011, the Northern District successfully applied to the Administrative Office of the United States Courts for designation as a participating district in the Patent Pilot Program. District Judges participating in the program are: Chief District Judge James Ware, Senior District Judge Ronald Whyte, District Judge Jeffrey S. White, District Judge Lucy Koh and District Judge Edward Davila.
  • Although the implementing patent pilot statute refers to District Judges as pilot judges, the Northern District has taken the position that the patent pilot statute does not supersede statutes that allow Magistrate Judges to handle any case pursuant to consent by the parties. Therefore, as the following Magistrate Judges have a particular interest in presiding over patent cases and subject to consent of the parties, the Court will strive to increase the number of patent cases assigned to these judges: Magistrate Judge Elizabeth Laporte, Magistrate Judge Joseph C. Spero, Magistrate Judge Laurel Beeler, Magistrate Judge Donna M. Ryu, Magistrate Judge Paul Grewal, Magistrate Judge Jacqueline Scott Corley and Magistrate Judge Nathanael Cousins. In the remaining weeks of 2011, members of Judge Koh's committee will hold a series of meetings with local bar associations to discuss the new procedures. View the notice and the text of General Order 67: [Link].
Patent Jobs:
  • Young Basile is searching for a patent attorney with 1-4 years of experience and a degree in EE or CS. [Link]
  • Singleton Law Firm is looking for a patent attorney/agent to work in the electrical area. [Link]
  • Coats & Bennett is seeking a patent attorney with a degree in EE and at least 2 years of patent prep and prosecution experience. [Link]
  • Sheppard Mullin is seeking 2 attorneys (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • McDermott Will & Emery is searching for an associate with 2-5 years of patent litigation experience. [Link]
  • Howard & Howard is seeking a patent attorney with 3-9 years of experience in patent prep and prosecution and a chemical background. [Link]
  • Patterson Thuente IP is looking for a patent attorney with a minimum of 2 years experience in patent prosecution for high tech clients. [Link]
  • Michaud-Kinney Group is searching for an IP associate with an electrical or mechanical background and at least 3 years of experience in patent prep and prosecution. [Link]
  • O'Brien Jones is looking for patent attorneys/agents with 2-5 years of experience. [Link]
  • Buether Joe & Carpenter is seeking 1 or more attorneys with patent infringement litigation experience. (5 or more years of patent litigation experience preferred) [Link]
  • Cantor Colburn is searching for a patent attorney with an advanced degree in organic chemistry and at least 2 years of patent drafting experience. [Link]
Upcoming Events:
  • On December 1, 2011, the Institute for Intellectual Property and Social Justice (IIPSJ) will co-present with the United States Patent and Trademark Office (USPTO) the Second National IP Empowerment Summit. The IIPSJ/USPTO IP Empowerment Summit will serve the general public and intellectual property professional and activist community in educating and empowering minority and marginalized artists, inventors, entrepreneurs, and other IP stakeholders in underserved communities. The Summit will provide practical information and presentations for creators and inventors regarding the development, protection, and exploitation of their own innovative and creative works as well as works and inventions in the public domain. [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The Lawyers Association of Kansas City will be presenting a 4 hour CLE on changes to US patent law under the America Invents Act at the offices of Lathrop & Gage in Kansas City, MO on Thursday, Dec. 8, 2011 from 1pm to 5pm. Presenters include: Kent Erickson, Bryan Stanley, and John Garretson. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "Collection, Review, and Production of Your Client's Electronic Information," presented by Shane Delsman on December 14, 2011 at 12:00 noon EST. The webinar will cover topics including collecting electronically stored information (ESI) for further use in the e-discovery process; processing collected ESI; reviewing ESI for relevance and privilege; producing ESI in appropriate forms and storage media; and how the Federal Rules affect the above procedures. [Link]
  • On December 16, the University of San Diego School of Law will host "A Review of the America Invents Act and its impact on the USPTO," with David Kappos. Kappos will discuss the USPTO's efforts to start implementing the law and also give a broad perspective of the various changes the agency is undertaking to facilitate the public's understanding of regulatory revisions. Also, Leonard Svensson will provide a brief overview of the major changes included in the America Invents Act and what the changes means for the San Diego innovation economy. [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Patent
USPTO's Steve Jobs Exhibit
  • On November 16th the USPTO unveiled the Steve Jobs exhibit, highlighting the Patents and Trademarks of Steve Jobs. "This exhibit commemorates the far-reaching impact of Steve Jobs' entrepreneurship and innovation on our daily lives," said David Kappos. "His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace." The exhibit features more than 300 of the patents that Steve bear Steve Jobs name. The exhibit will run through January 15, 2012 and is free and open to the public. [Link] [Link]
Kauffman Foundation

   
  • The Ewing Marion Kauffman Foundation is pleased to announce that the nomination period is now open for the Kauffman Junior Faculty Fellowship in Entrepreneurship Research (KJFF). The Kauffman Foundation will award up to seven Junior Faculty Fellowship grants to junior faculty members in the United States whose research has the potential to make significant contributions to the body of literature in entrepreneurship. Each Fellow's university will receive a grant of $40,000 over two years to support the research activities of the Fellow. Nominees must be tenured or tenure-track junior faculty members at accredited U.S. institutions of higher education who received a Ph.D. or equivalent doctoral degree between January 1, 2007 and December 31, 2010. [Link]
Northern District of California
  • The Court is considering adopting a new Civil Local Rule 5-4 that will address the requirements for electronic filing and abrogating General Order 45. The new rule reflects the evolution of the e-filing program and more accurately captures the current requirements than does the general order which was written in 2003 shortly after the inception of the e-filing program. Comments may be submitted by sending an e-mail to evidence@cand.uscourts.gov before 5:00 p.m. (PST) on December 14, 2011. View the notice and the draft rule: [Link].
  • On November 10, 2011, the District and Magistrate Judges of the Northern District of California adopted General Order 67, promulgating new procedures for the assignment of patent cases. In order to allow necessary changes to be made to the District's computer-based case assignment system, the new procedures will become effective on January 1, 2012. Earlier in 2011, the Northern District successfully applied to the Administrative Office of the United States Courts for designation as a participating district in the Patent Pilot Program. District Judges participating in the program are: Chief District Judge James Ware, Senior District Judge Ronald Whyte, District Judge Jeffrey S. White, District Judge Lucy Koh and District Judge Edward Davila.
  • Although the implementing patent pilot statute refers to District Judges as pilot judges, the Northern District has taken the position that the patent pilot statute does not supersede statutes that allow Magistrate Judges to handle any case pursuant to consent by the parties. Therefore, as the following Magistrate Judges have a particular interest in presiding over patent cases and subject to consent of the parties, the Court will strive to increase the number of patent cases assigned to these judges: Magistrate Judge Elizabeth Laporte, Magistrate Judge Joseph C. Spero, Magistrate Judge Laurel Beeler, Magistrate Judge Donna M. Ryu, Magistrate Judge Paul Grewal, Magistrate Judge Jacqueline Scott Corley and Magistrate Judge Nathanael Cousins. In the remaining weeks of 2011, members of Judge Koh's committee will hold a series of meetings with local bar associations to discuss the new procedures. View the notice and the text of General Order 67: [Link].
Patent Jobs:
  • Young Basile is searching for a patent attorney with 1-4 years of experience and a degree in EE or CS. [Link]
  • Singleton Law Firm is looking for a patent attorney/agent to work in the electrical area. [Link]
  • Coats & Bennett is seeking a patent attorney with a degree in EE and at least 2 years of patent prep and prosecution experience. [Link]
  • Sheppard Mullin is seeking 2 attorneys (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • McDermott Will & Emery is searching for an associate with 2-5 years of patent litigation experience. [Link]
  • Howard & Howard is seeking a patent attorney with 3-9 years of experience in patent prep and prosecution and a chemical background. [Link]
  • Patterson Thuente IP is looking for a patent attorney with a minimum of 2 years experience in patent prosecution for high tech clients. [Link]
  • Michaud-Kinney Group is searching for an IP associate with an electrical or mechanical background and at least 3 years of experience in patent prep and prosecution. [Link]
  • O'Brien Jones is looking for patent attorneys/agents with 2-5 years of experience. [Link]
  • Buether Joe & Carpenter is seeking 1 or more attorneys with patent infringement litigation experience. (5 or more years of patent litigation experience preferred) [Link]
  • Cantor Colburn is searching for a patent attorney with an advanced degree in organic chemistry and at least 2 years of patent drafting experience. [Link]
Upcoming Events:
  • On December 1, 2011, the Institute for Intellectual Property and Social Justice (IIPSJ) will co-present with the United States Patent and Trademark Office (USPTO) the Second National IP Empowerment Summit. The IIPSJ/USPTO IP Empowerment Summit will serve the general public and intellectual property professional and activist community in educating and empowering minority and marginalized artists, inventors, entrepreneurs, and other IP stakeholders in underserved communities. The Summit will provide practical information and presentations for creators and inventors regarding the development, protection, and exploitation of their own innovative and creative works as well as works and inventions in the public domain. [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The Lawyers Association of Kansas City will be presenting a 4 hour CLE on changes to US patent law under the America Invents Act at the offices of Lathrop & Gage in Kansas City, MO on Thursday, Dec. 8, 2011 from 1pm to 5pm. Presenters include: Kent Erickson, Bryan Stanley, and John Garretson. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "Collection, Review, and Production of Your Client's Electronic Information," presented by Shane Delsman on December 14, 2011 at 12:00 noon EST. The webinar will cover topics including collecting electronically stored information (ESI) for further use in the e-discovery process; processing collected ESI; reviewing ESI for relevance and privilege; producing ESI in appropriate forms and storage media; and how the Federal Rules affect the above procedures. [Link]
  • On December 16, the University of San Diego School of Law will host "A Review of the America Invents Act and its impact on the USPTO," with David Kappos. Kappos will discuss the USPTO's efforts to start implementing the law and also give a broad perspective of the various changes the agency is undertaking to facilitate the public's understanding of regulatory revisions. Also, Leonard Svensson will provide a brief overview of the major changes included in the America Invents Act and what the changes means for the San Diego innovation economy. [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Are Patent Filings Increasing or Decreasing?

Patent

by Dennis Crouch

The USPTO recently reported that in FY2011 and for the first time in history, more than 500,000 patent applications were filed during the fiscal year. 500,000 is a large number, but it turns out that the report of increased patent filings should not be seen as suggesting an increase in innovative activity. Rather, as the charts below demonstrate, the number of new patent filings has actually decreased over the past five years.

112211_1847_DecreasingP1

The dramatic increase in reported application filings shown by the chart above is entirely explained by the USPTO's odd accounting practice that counts the procedural "request for continued examination" (RCE) as a utility application filing. Under US patent procedures, a patent applicant faces a decision point after receiving a final rejection from the patent examiner. Generally, the applicant can (1) appeal the rejection to the administrative board, (2) abandon the application, or (3) file an RCE along with new material regarding patentability of the invention. Once an RCE is filed (along with the required fee), the same patent examiner is ordinarily required to again review the application and give it full consideration as to the patentability of the claimed invention.

As the chart below demonstrates, the number of RCEs filed annually has increased dramatically – almost doubling over the past five years. At the same time, original utility patent application filings have dropped slightly. I.e., patent filings are down. (To be clear, "original" applications as used here also include utility applications that claim priority to US provisional applications, international patent applications (PCTs), and foreign patent applications.)

112211_1847_DecreasingP2

What's the point: A rise in filings is helpful for the USPTO because it allows the agency to justify increased funding requests; to show its stature amongst world patent offices; and to demonstrate that the agency truly serves as a gatekeeper. Unfortunately, the report is not accurate. The positive side of these numbers is that the steady filing numbers should give the PTO breathing room to address the backlog of 1.2 million pending utility patent applications. 

Innovation and Competition Policy

Patent

By Dennis Crouch

Professor Herbert Hovenkamp (U. Iowa) is the most influential US antitrust scholar and author of the most cited legal treatise on antitrust law. He has written extensively on all areas of antitrust law, including the intersection between antitrust, innovation, and intellectual property.

Although the antitrust treatise sells for over $3,000, Professor Hovenkamp recently made new casebook on innovation and competition available for a free download (subject to an open source license agreement). The casebook is entitled INNOVATION AND COMPETITION POLICY: CASES AND MATERIALS. Professor Hovenkamp introduces the book as follows:

This book … differs from IP/antitrust casebooks in that it considers numerous sources of competition policy in addition to antitrust, including those that emanate from the intellectual property laws themselves, and also related issues such as the relationship between market structure and innovation, the competitive consequences of regulatory rules governing technology competition such as net neutrality and interconnection, misuse, the first sale doctrine, and the Digital Millennium Copyright Act (DMCA). The author uses this casebook for a three-unit class in Innovation and Competition Policy taught at the University of Iowa College of Law and available to first year law students as an elective.

Major topics include

  • Impact of patent scope on competition;
  • The law of tying;
  • Determining harm to innovation;
  • Competition policy in patent law;
  • Competition policy in copyright and under the DMCA;
  • Restraints on innovation;
  • Misuse of intellectual property;
  • Anticompetitive exclusion;
  • Innovation commons; and
  • Post-sale restraints that involve IP rights.

In the words of Prof. Solum, Download it while its hot!

USPTO Patent Grants

Patent

The USPTO appears headed toward another record breaking year in 2011 — issuing more utility patents in 2011 than in any prior year. I project that the PTO will issue about 225,000 utility patents by the end of the year, slightly more than last year’s record number of just under 220,000.  The vast majority of patents issued this year claim priority to at least one earlier patent document such as an international patent application (PCT), US provisional application, or prior US utility application.

PatentlyO121

Data is here.

USPTO Patent Grants

Patent

The USPTO appears headed toward another record breaking year in 2011 — issuing more utility patents in 2011 than in any prior year. I project that the PTO will issue about 225,000 utility patents by the end of the year, slightly more than last year’s record number of just under 220,000.  The vast majority of patents issued this year claim priority to at least one earlier patent document such as an international patent application (PCT), US provisional application, or prior US utility application.

PatentlyO121

Data is here.

USPTO Patent Grants

Patent

The USPTO appears headed toward another record breaking year in 2011 — issuing more utility patents in 2011 than in any prior year. I project that the PTO will issue about 225,000 utility patents by the end of the year, slightly more than last year’s record number of just under 220,000.  The vast majority of patents issued this year claim priority to at least one earlier patent document such as an international patent application (PCT), US provisional application, or prior US utility application.

PatentlyO121

Data is here.

In re Ricoh Patent Litigation: Costs May Be Awarded For Document Production Databases

Patent

By Jason Rantanen

In re Ricoh Company, Ltd. Patent Litigation (Fed. Cir. 2011) Download 11-1199
Panel: Lourie, Bryson, Dyk (author)

After seven years of litigation between Ricoh Co., the patent holder, and Synopsys, Inc., the latter party prevailed via summary judgment of noninfringement, a decision affirmed by the Federal Circuit earlier this year.  After Synopsys's victory on the merits, the district court awarded costs totalling $938,957.72.  Ricoh appealed, challenging three categories of costs as not allowed by 28 U.S.C. § 1920, the relevant authorizing statute.  In ruling on Ricoh's challenges, the Federal Circuit applied the law of the regional circuit (in this case that of the Ninth). 

Costs for Document Production Database: A significant expense of patent litigation is that of document discovery and this case was no exception.  During discovery Ricoh sought production of emails and other documents.  Initially the parties were unable to agree on the form of production, but ultimately agreed that Synopsys would produce documents using Stratify, an e-discovery company that provides document processing, review, production and hosting services.  The district court awarded the full cost of using Stratify as "fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case" under § 1920(4).

On appeal the CAFC agreed with the court's characterization of the costs.  "The act of producing documents is not so narrowly construed as to cover only printing and Bates-labeling a document."  Slip Op. at 6.  "Thus, the costs of producing a document electronically can be recoverable under section 1920(4)."  Id. at 7.  In this case, however, Ricoh and Synopsys had agreed during the litigation to share the costs of using Stratify.  The CAFC held that the agreement was controlling, leading it to reverse the district court's award for Synopsys's share of the database.

Note: Although not explicitly addressed by the panel, the parties' briefs suggest that Synopsys used Stratify as a mechanism for both review and production.  The CAFC's opinion is unclear on whether this should make any difference – it both implies that this dual use does not matter ("We do not consider any of the Stratify database costs to fall into the unrecoverable category of 'intellectual efforts,'" Slip Op. at 7), while at the same time leaving open the future possibility of disallowing certain costs tangential to the production itself. ("In light of our decision, we need not decide if the additional challenged items related to the database were improperly allowed.")

 Copying Costs Must Be Specific: The CAFC also declined to affirm the district court's award of copying costs, citing a lack of specificity in the supporting documentation:

When the prevailing party seeks to recover copying costs related to its own document production, to meet the documentation requirements, the prevailing party must establish, in connection with its proposed Bill of Costs, that the reproduced documents were produced by it pursuant to Rule 26 or other discovery rules; that they were copied at the prevailing party’s expense and at the request of the opposing party; and that the copies were tendered to the opposing party.

Depositions and Translation Costs Allowable: Ricoh also challenged the award of costs associated with depositions that were related to issues other than noninfringement.  The CAFC concluded that allowing costs for these depositions was within the discretion of the district court as it was reasonable to expect they would be used in trial.  It further held that the district court appropriately taxed costs for both  videotaping and preparation of written transcripts, rejecting Ricoh's argument that it was limited to one or the other.  

Holiday Gift List for Patent Attorneys and the Like

Patent

Happy Thanksgiving!

It is early in the holiday season, but not for mail-order… I'm also posting this list now to give you ample time to forward the list to potential gift-givers. Here are a dozen holiday gifts for patent law professionals.

  1. Knives? Yes patent attorneys can be excellent cooks if given the right tools and the right cook books. In my home, I use the very best unpretentious inexpensive knives on the market: Swiss Made Victorinox with Fibrox handles. A solid 8-inch chef knife sells for $26 at Amazon. The best cookbook is by Cooks Illustrated.Capture 103111_1657_HolidayGift1
  2. I have not tried this one — The Celluon Magic Cube Laser Projection Keyboard and Touchpad.  This futuristic device works according to independent reviews that I read.  The idea is that a little device wirelessly connects to your computer, phone, or tablet and then uses a laser to project a workable keyboard onto a flat surface! My photo here shows it in use with an iPad, but it works well with non-Apple equipment. $170. Watch it on YouTube.
  3. Making Your Case: The Art of Persuading Judges, by Justice Antonin Scalia and Bryan Garner.  
  4. Kindle is still a good bet. I'd go with either the Kindle Touch 3G (without special offers) or else the new Kindle Fire. 
  5. Digital Microscope with USB port to plug directly into the computer: Nature + Technology for $99.
  6. Utilikey 6-in-1 tool. 
  7. A Blue Laser Pointer.
  8. Really strong fridge magnets made of the rare earth metal neodymium. ($8 for 10).
  9. For those long nights at trial: http://www.iamastuffedanimal.com/
  10. Mini-Tripod ($3). MiniTripod
  11. BBQ Skewers: Link ($10)

(Special thanks to Erik Flom of Husch Blackwell for his help in compiling this list.)

 

 

New BPAI Final Rules

Patent

by Dennis Crouch

There are now 25,000 ex parte cases pending resolution before the Board of Patent Appeals and Interferences. For the most part, cases being decided today are appeals from final rejections mailed back in 2008 – at a time when the backlog was 80% less than today. And, as the chart below demonstrates, the backlog continues to grow at an alarming pace. Today, the USPTO published a new set of final rules of practice regarding ex parte patent appeals before the Board. The new rules do not directly address the backlog, but do refer to "streamlining" as an important purpose of the rules. As an aside, the recently published FY2011 USPTO Performance Report also fails to mention the BPAI backlog.

112111_2204_BPAIFinalRu1

New Rules: The newly published rules are designed to "streamline" practice before the Board of Patent Appeals and Interferences (BPAI) and only apply to ex parte patent appeals. As published, the rules will become effective in on January 21, 2011. The PTO had previously published a similar final that never went into effect and that is now formally withdrawn.

Changes include:

  • Jurisdiction: The Board will take jurisdiction over appeals automatically upon either the filing of the reply brief or expiration of the reply briefing filing deadline. Examiners will no longer be required to acknowledge the filing of a reply brief before the Board claims jurisdiction. (Historically, awaiting examiner acknowledgement took an average of 55 days).
  • Petitions During Appeal: Under the new rule, any petition (or information disclosure statement) filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board's jurisdiction ends and will not be considered "of record" in the appeal. The primary exception to this is with regard to a petition seeking review of an examiner's failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief. In that case, the applicant can await the petition decision and thereby avoid having to file a request for extension of time in which to file the reply brief.
  • New Grounds of Rejection: The rules clarify that an argument in the examiner's answer that uses evidence that was not relied upon in the office action will be considered a new ground of rejection. In addition, a rejection will be considered a "new grounds" when the "basic thrust" of the rejection as presented in the examiner's answer or the Board's decision is different than that presented in the office action. However, an examiner or Board's use of certain extrinsic evidence such as dictionaries will not, according to the new rules, automatically result in a new ground of rejection. The rules also include a loosening of the requirements on requests for re-hearing so that an applicant can present new arguments in a request for rehearing that respond to the merits of a new ground of rejection and allows the applicant to request rehearing for the purposes of arguing that the Board's decision contains an undesignated new ground of rejection.
  • Removal of Briefing Requirements: Removal of several briefing requirements, including statements of the status of claims, the status of amendments, and the grounds of rejection to be reviewed on appeal as well as an evidence appendix or a related proceedings appendix.
  • Claims Being Appealed: The new rule will require the Board to presume that the applicant is appealing all rejected claims.