Bits and Bytes by Dennis Crouch

Patent

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

Bits and Bytes by Dennis Crouch

Patent

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

Bits and Bytes by Dennis Crouch

Patent

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

Evaluating Supplemental Examination

Patent,
By Jason Rantanen
As seen in the recent Powell v. Home Depot case that Professor Crouch wrote about last week, the net effect of a weakened inequitable conduct doctrine post-Therasense is an increase in the ability of applicants to engage in troubling behavior during patent prosecution.  My colleague Lee Petherbridge and I expressed this concern shortly after Therasense issued, particularly warning about its consequences for patent prosecutors who are arguably worse-off post-Therasense, caught between clients who may be more interested in playing fast and loose with the rules and their own ethical and legal responsibilities.
Therasense was not the only significant development in the area of inequitable conduct this year, however.  The creation of a mechanism for supplemental examination in the Leahy-Smith America Invents Act further alters the landscape of inequitable conduct, and not necessarily in a positive way.  In a short essay recently published in Michigan Law Review First Impressions, Professor Petherbridge and I examine the supplemental examination mechanism created by the AIA and conclude that it may jeopardize American innovation, job creation, and economic competitiveness.
A copy of the piece is available via SSRN.

Patent Models

Patent

MousetrapBy Jason Rantanen

As every student of patent law knows, inventors were required to submit a working miniature model of their invention along with their patent application until the late nineteenth-century.  Famous models include those of such iconic inventions as the Whitney cotton gin, the Singer sewing machine, and the Morse telegraph register.  A substantial number of those models still exist, although virtually all are in private collections. 

The Smithsonian Institute recently opened a a two-year exhibition of patent models from the collection of Alan Rothchild, offering everyone an opportunity to view examples of these models.  Entitled "Inventing a Better Mousetrap: Patent Models from the Rothschild Collection," the curated exhibit runs until November 3, 2013.  If you are in Washington D.C., it may be worth your while to wander over to the American Art Museum to check it out. 

Bonus: the Rothchild Peterson Patent Model Museum website has a page explaining what the models are and linking to the patents themselves.  

Federal Circuit Divided on Federal Jurisdiction over Legal Malpractice Claims

Jurisdiction, Patent, Patent Cases 2011,

Stephen Byrne v. Wood, Herron & Evans (Fed. Cir. 2011)

Byrne’s malpractice claim alleges that his former patent attorneys at WHE failed to secure broad enough patent protection for his weed trimming device. See RE 34,815. In 2004, Byrne sued Black & Decker but lost on summary judgment. In that case, the district court ruled that B&D’s device could not infringe because of it did not include a “generally planar outboard flail stabilizing surface” as required by Byrne’s patent claims.

In the subsequent legal malpractice claim, WHE filed a summary judgment motion arguing that the prosecution history showed clearly that the “generally planar” limitation was necessary in order to distinguish Byrne’s invention from the cited prior art.  WHE also argued that Mr. Byrne’s claim should fail because he had so fully participated in the prosecution, including the addition of that limitation into the claim. In the responsive motion, Byrne filed an affidavit discussing the scope of the cited prior art and arguing that the limitation was not necessary for patentability.  Acting sua sponte, the district court rejected Byrne’s testimony — holding that he was not qualified to offer expert testimony as one of ordinary skill in the art.  Without any rebuttal evidence, the court then granted WHE’s motion for summary judgment of no malpractice.

Jurisdiction over Patent Prosecution Malpractice. In several recent cases, the Federal Circuit has expanded the scope of federal court and Federal Circuit jurisdiction over patent malpractice cases. Writing for a 2–1 majority, Judge O’Malley agreed that stare decisis compels federal jurisdiction in this case, but argued that the jurisdictional law should be revisited for cases like this where the cause of action is based upon state-law (malpractice) and the patent issue is only a question of a hypothetical patent claim.

Indeed, it is only the “special and small category” or “slim category” of cases in which a state law cause of action will trigger federal jurisdiction. . . .

[I]t is difficult to see teh federal interest in determining the validity of a hypothetical patent claim that is ancillary to a state law malpractice action. The outcome of such determinations invariably will rest on case-specific inquiries comparing prior art against patent claims that have not and will never issue. As such, these determinations, which involve only application and not interpretation of patent law, have little or no bearing on other cases. On the other hand, finding federal jurisdiction over malpractice cases involving questions of hypothetical patent claims opens the federal courthouse to an entire class of actions, thereby usurping state authority over this traditionally state law tort issue. . . .

Applying these federalism considerations, several courts either have outright disagreed with our analysis or have found a meaningful distinction when only hypothetical patent rights are at stake. . . . In many cases, the procedural posture prevents us from reviewing these decisions, thus allowing courts simply to ignore our law. We address the issues in this appeal, however, because our existing case law compels us to do so.

This is the type of issue that the Supreme Court tends to hear, and a high quality petition for certiorari would have a good chance of gaining the high court’s attention.  Aiding this theory are the growing number of state and federal court decisions that have criticized the Federal Circuit jurisdictional holdings and the general rarity non-patent-related cases of finding federal question “arising under” jurisdiction where no federal cause of action is alleged. 

On the merits, the Federal Circuit ruled that the lower court abused its discretion by refusing to let the inventor testify regarding the scope and content of the prior art and its relation to the invention. The particular problem with the lower court’s finding was that it made no finding of the qualifications of one of ordinary skill in the art and whether Byrne possessed that level of skill.  In several prior cases, the Federal Circuit has held that inventors typically possess at least ordinary skill in the relevant art and therefore “it is especially inappropriate for the district court to strike Byrne’s affidavit without going through the exercise of identifying the requisite level of skill.”  On remand, the district court will likely hear Byrne’s testimony and consequently reject WHE’s summary judgment motion.

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Business Plan Competition

  • The Licensing Executive Society Foundation 2012 International Graduate Student Business Plan Competition registration has started. Graduate students, including MS/MBA/MD/JD/PhD and postdoctoral scholars, from across the globe are invited to register (http://les2012.istart.org) to participate in the 2012 LES Foundation Graduate Student Business Plan Competition, which uniquely focuses on business plans that include an overview of IP assets and describe how those assets will be managed and commercialized to achieve business goals. Student teams will compete to win expenses-paid trips to the Final Round of Competition at the LES (USA & Canada) Spring Meeting in Boston, MA, May 15-17, where they will attend educational sessions, mingle with global IP leaders and compete for the $10,000 Grand Prize and valuable in-kind prizes or the $5,000 Global Award. Runner-up teams receive $1,000. Students receive comprehensive feedback throughout the process from IP business leaders who share valuable expertise earned in the trenches of businesses ranging from start-ups to Fortune 500 companies. [Link]

The American Growth, Recovery, Empowerment and Entrepreneurship (AGREE) Act

  • On November 15, Senators Chris Coons and Marco Rubio introduced a jobs bill, the AGREE Act. Title VI: Protecting American Businesses Against Illegal Counterfeiting, of the Act reads: "The Coons-Rubio bill helps to protect American IP from counterfeit or otherwise infringing commercial activity. Specifically, the bill clarifies the Trade Secrets Act, making it explicitly clear that it is not a crime for federal officials, in the performance of their duties, to share information about suspected infringing products with the right holder of a trademarked good." This language will supposedly allow custom and border patrol agents to determine if merchandise is legitimate by asking the owner of the trademark that appears on the product. Further, Title II: Encouraging Cutting Edge-Research and Innovation, discusses various tax credits for businesses and is supported by BIO and the Semiconductor Industry Association. [Link]

.xxx and Cybersquatting

  • It seems that many universities and companies are playing it safe and are acquiring .xxx domain names. Organizations can currently pre-register .xxx domain names for around $200 dollars. The University of Missouri recently pre-registered mizzou.xxx, missouri.xxx, and missouritigers.xxx, because they do not want people coming across their trademarks on porn sites. It would seem ideal for educational institutions to pre-register .xxx domain names. However, should every trademark owner be so cautious? Cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. Cybersquatters can cost organizations money and time in their pursuit to try to get rights to a domain name. Therefore, I would think that it would be better to play it safe in this situation, and pre-register .xxx domain names. However, in the near future, there may be some very interesting cases of cybersquatting if an organization fails to pre-register. [Link] [Link]

Patent Jobs:

  • Baker & Hostetler is seeking a patent attorney with 5-8 years of experience. [Link]
  • Hewlett-Packard Company is searching for a patent counsel with a degree in EE, CE, Physics, or CE and 0-6 years of experience. [Link]
  • Hiscock & Barclay is looking for a patent attorney/agent with 3-5 years of experience. [Link]
  • Pramudji Law Group is seeking a patent attorney/agent with at least 2 years of experience and a degree in EE or physics. [Link]
  • Thompson Hine is searching for an associate with 3-5 years of experience and a degree in engineering or physics. [Link]
  • Abel IP is looking for a patent attorney with 4+ years of experience and a background in chemical and/or ceramic materials. [Link]
  • Oblon Spivak is seeking associates with 3-7 years of experience and a background in electrical or mechanical arts. [Link]
  • Shumaker & Sieffert is searching for patent attorneys with 2-5 years of experience and a background in EE, CE, CS, or physics. [Link]
  • Patent GC is looking for a trademark attorney and a patent attorney with an EE or CS background and 10+ years of experience in each case. [Link]
  • Mannava & King is looking for an electrical engineering patent attorney/agent and at least 2 years of experience. [Link]
  • Kacvinsky is seeking lateral associates with 4+ years of patent preparation experience and a degree in EE, CE, or CS. [Link]

Upcoming Events:

  • Has Your ADR Neutral Met Their Disclosure Requirement? Webinar will be held on November 18. The webinar is sponsored by the ABA Section on IP Law and ABA-IPL Young Lawyers Action Group. The program will discuss different ethical conflicts that may arise during IP Mediation/Arbitration and the level of disclosure required by the mediator/arbitrator. The webinar will start at 1:00 PM eastern time and last about 90 minutes. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host 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 Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [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 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.

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Business Plan Competition

  • The Licensing Executive Society Foundation 2012 International Graduate Student Business Plan Competition registration has started. Graduate students, including MS/MBA/MD/JD/PhD and postdoctoral scholars, from across the globe are invited to register (http://les2012.istart.org) to participate in the 2012 LES Foundation Graduate Student Business Plan Competition, which uniquely focuses on business plans that include an overview of IP assets and describe how those assets will be managed and commercialized to achieve business goals. Student teams will compete to win expenses-paid trips to the Final Round of Competition at the LES (USA & Canada) Spring Meeting in Boston, MA, May 15-17, where they will attend educational sessions, mingle with global IP leaders and compete for the $10,000 Grand Prize and valuable in-kind prizes or the $5,000 Global Award. Runner-up teams receive $1,000. Students receive comprehensive feedback throughout the process from IP business leaders who share valuable expertise earned in the trenches of businesses ranging from start-ups to Fortune 500 companies. [Link]

The American Growth, Recovery, Empowerment and Entrepreneurship (AGREE) Act

  • On November 15, Senators Chris Coons and Marco Rubio introduced a jobs bill, the AGREE Act. Title VI: Protecting American Businesses Against Illegal Counterfeiting, of the Act reads: "The Coons-Rubio bill helps to protect American IP from counterfeit or otherwise infringing commercial activity. Specifically, the bill clarifies the Trade Secrets Act, making it explicitly clear that it is not a crime for federal officials, in the performance of their duties, to share information about suspected infringing products with the right holder of a trademarked good." This language will supposedly allow custom and border patrol agents to determine if merchandise is legitimate by asking the owner of the trademark that appears on the product. Further, Title II: Encouraging Cutting Edge-Research and Innovation, discusses various tax credits for businesses and is supported by BIO and the Semiconductor Industry Association. [Link]

.xxx and Cybersquatting

  • It seems that many universities and companies are playing it safe and are acquiring .xxx domain names. Organizations can currently pre-register .xxx domain names for around $200 dollars. The University of Missouri recently pre-registered mizzou.xxx, missouri.xxx, and missouritigers.xxx, because they do not want people coming across their trademarks on porn sites. It would seem ideal for educational institutions to pre-register .xxx domain names. However, should every trademark owner be so cautious? Cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. Cybersquatters can cost organizations money and time in their pursuit to try to get rights to a domain name. Therefore, I would think that it would be better to play it safe in this situation, and pre-register .xxx domain names. However, in the near future, there may be some very interesting cases of cybersquatting if an organization fails to pre-register. [Link] [Link]

Patent Jobs:

  • Baker & Hostetler is seeking a patent attorney with 5-8 years of experience. [Link]
  • Hewlett-Packard Company is searching for a patent counsel with a degree in EE, CE, Physics, or CE and 0-6 years of experience. [Link]
  • Hiscock & Barclay is looking for a patent attorney/agent with 3-5 years of experience. [Link]
  • Pramudji Law Group is seeking a patent attorney/agent with at least 2 years of experience and a degree in EE or physics. [Link]
  • Thompson Hine is searching for an associate with 3-5 years of experience and a degree in engineering or physics. [Link]
  • Abel IP is looking for a patent attorney with 4+ years of experience and a background in chemical and/or ceramic materials. [Link]
  • Oblon Spivak is seeking associates with 3-7 years of experience and a background in electrical or mechanical arts. [Link]
  • Shumaker & Sieffert is searching for patent attorneys with 2-5 years of experience and a background in EE, CE, CS, or physics. [Link]
  • Patent GC is looking for a trademark attorney and a patent attorney with an EE or CS background and 10+ years of experience in each case. [Link]
  • Mannava & King is looking for an electrical engineering patent attorney/agent and at least 2 years of experience. [Link]
  • Kacvinsky is seeking lateral associates with 4+ years of patent preparation experience and a degree in EE, CE, or CS. [Link]

Upcoming Events:

  • Has Your ADR Neutral Met Their Disclosure Requirement? Webinar will be held on November 18. The webinar is sponsored by the ABA Section on IP Law and ABA-IPL Young Lawyers Action Group. The program will discuss different ethical conflicts that may arise during IP Mediation/Arbitration and the level of disclosure required by the mediator/arbitrator. The webinar will start at 1:00 PM eastern time and last about 90 minutes. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host 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 Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [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 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.

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Business Plan Competition

  • The Licensing Executive Society Foundation 2012 International Graduate Student Business Plan Competition registration has started. Graduate students, including MS/MBA/MD/JD/PhD and postdoctoral scholars, from across the globe are invited to register (http://les2012.istart.org) to participate in the 2012 LES Foundation Graduate Student Business Plan Competition, which uniquely focuses on business plans that include an overview of IP assets and describe how those assets will be managed and commercialized to achieve business goals. Student teams will compete to win expenses-paid trips to the Final Round of Competition at the LES (USA & Canada) Spring Meeting in Boston, MA, May 15-17, where they will attend educational sessions, mingle with global IP leaders and compete for the $10,000 Grand Prize and valuable in-kind prizes or the $5,000 Global Award. Runner-up teams receive $1,000. Students receive comprehensive feedback throughout the process from IP business leaders who share valuable expertise earned in the trenches of businesses ranging from start-ups to Fortune 500 companies. [Link]

The American Growth, Recovery, Empowerment and Entrepreneurship (AGREE) Act

  • On November 15, Senators Chris Coons and Marco Rubio introduced a jobs bill, the AGREE Act. Title VI: Protecting American Businesses Against Illegal Counterfeiting, of the Act reads: "The Coons-Rubio bill helps to protect American IP from counterfeit or otherwise infringing commercial activity. Specifically, the bill clarifies the Trade Secrets Act, making it explicitly clear that it is not a crime for federal officials, in the performance of their duties, to share information about suspected infringing products with the right holder of a trademarked good." This language will supposedly allow custom and border patrol agents to determine if merchandise is legitimate by asking the owner of the trademark that appears on the product. Further, Title II: Encouraging Cutting Edge-Research and Innovation, discusses various tax credits for businesses and is supported by BIO and the Semiconductor Industry Association. [Link]

.xxx and Cybersquatting

  • It seems that many universities and companies are playing it safe and are acquiring .xxx domain names. Organizations can currently pre-register .xxx domain names for around $200 dollars. The University of Missouri recently pre-registered mizzou.xxx, missouri.xxx, and missouritigers.xxx, because they do not want people coming across their trademarks on porn sites. It would seem ideal for educational institutions to pre-register .xxx domain names. However, should every trademark owner be so cautious? Cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. Cybersquatters can cost organizations money and time in their pursuit to try to get rights to a domain name. Therefore, I would think that it would be better to play it safe in this situation, and pre-register .xxx domain names. However, in the near future, there may be some very interesting cases of cybersquatting if an organization fails to pre-register. [Link] [Link]

Patent Jobs:

  • Baker & Hostetler is seeking a patent attorney with 5-8 years of experience. [Link]
  • Hewlett-Packard Company is searching for a patent counsel with a degree in EE, CE, Physics, or CE and 0-6 years of experience. [Link]
  • Hiscock & Barclay is looking for a patent attorney/agent with 3-5 years of experience. [Link]
  • Pramudji Law Group is seeking a patent attorney/agent with at least 2 years of experience and a degree in EE or physics. [Link]
  • Thompson Hine is searching for an associate with 3-5 years of experience and a degree in engineering or physics. [Link]
  • Abel IP is looking for a patent attorney with 4+ years of experience and a background in chemical and/or ceramic materials. [Link]
  • Oblon Spivak is seeking associates with 3-7 years of experience and a background in electrical or mechanical arts. [Link]
  • Shumaker & Sieffert is searching for patent attorneys with 2-5 years of experience and a background in EE, CE, CS, or physics. [Link]
  • Patent GC is looking for a trademark attorney and a patent attorney with an EE or CS background and 10+ years of experience in each case. [Link]
  • Mannava & King is looking for an electrical engineering patent attorney/agent and at least 2 years of experience. [Link]
  • Kacvinsky is seeking lateral associates with 4+ years of patent preparation experience and a degree in EE, CE, or CS. [Link]

Upcoming Events:

  • Has Your ADR Neutral Met Their Disclosure Requirement? Webinar will be held on November 18. The webinar is sponsored by the ABA Section on IP Law and ABA-IPL Young Lawyers Action Group. The program will discuss different ethical conflicts that may arise during IP Mediation/Arbitration and the level of disclosure required by the mediator/arbitrator. The webinar will start at 1:00 PM eastern time and last about 90 minutes. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host 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 Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [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 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.

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

Inherency and Functional Claim Language

Patent,

In re Conte (Fed. Cir. 2011)

Patent Attorney Francis Conte's patent application is directed to a fly-swatter in the shape of a pistol. When the trigger is pulled, an elastic lash provides a deadly whip.

The PTO rejected Conte's invention as obvious. On appeal, the Federal Circuit affirmed – holding the patent invalid in light of U.S. Patent No. 1,779,507 ("White") and U.S. Patent No. 2,642,057 ("Watkins"). These two references clearly taught all of the structural elements of the claims, and the court held that "it would have been obvious to one of ordinary skill in the art to combine the features of White and Watkins and arrive at the invention claimed in the '288 application."

All well and good, except for the limitations not discussed by the court.  The White and Watkins references were both directed to toy guns. White shot rubber bands. Watkins used a rubber band to shoot a pellet or pea. Neither was used to kill insects with a whip.   On the other hand, Conte's claimed invention is direted to an "insect swatter" with a distal end "for being aimed at an insect" and a lash for "whipping … against said insect."  Although the Federal Circuit did not address the insect limitations, the government brief noted that the cited prior art is all inherently "capable of being used to shoot insects" and that the claims only require that capability.  The government's interepretation here is the more traditional interpretation of functional limitations. However, that interpretation received some push-back in the Federal Circuit's recent Typhoon Touch decision.

Mr. Conte lost a similar Federal Circuit appeal in a predecessor case but was able to narrow his claims sufficiently to receive a patent. 

 

KISS my Patent

Patent

As this photo by Johnathan E. Mansfield shows, the allure of patent law continues to grow.  Professor Holbrook, co-author of the Patent Litigation and Strategy casebook writes that he is "Glad to see our Patent Litigation casebook has such wide appeal."  Judges Kimberly Moore and Paul Michel (retired) are co-authors.

 Of course, there may also be a trademark problem. See U.S. Trademark Serial Nos. 85/239,324, 85/239,312, 85/239,299, and 85/239,285, whose images are shown below.

The following statement is from the bat-wing-face registration: "The mark consists of a make-up design placed over the entire face and featuring bat wings around the eyes and make-up around the lips. The eyeballs, nose, teeth and tongue are not claimed as features of the mark." Although first used in commerce in 1974, the make-up designs were only registered as trademarks in August 2011.

Law School Question: How does the trademark registration impact the band's ability to also claim copyright protection for the design?

Federal Circuit Ducks Question of Federal Mediation Privilege

Patent,

By Dennis Crouch

Kimberly-Clark Worldwide v. First-Quality Baby Products (Fed. Cir. 2011)

Diapers have been the subject of numerous patents and patent infringement lawsuits. In this case, K-C is suing its competitor, First Quality, for infringing more than a dozen diaper related patents.

The issue on appeal, however, focuses on a procedural matter: Whether K-C can be compelled to disclose information relating to prior alternative dispute resolution (ADR) proceedings between K-C and a different competitor, Proctor & Gamble. K-C argues that those ADR proceedings are privileged and therefore not discoverable.

The prior-ADR agreement between K-C and P&G were termed the ADR process a “non-binding arbitration.” In that process, both parties presented evidence to an agreed-upon neutral arbitrator who made a determination on the case. The loser of the arbitration was required to pay for cost of the arbitration. However, either party could reject the arbitrator’s decision and, if desired, file a district court lawsuit to resolve the dispute de novo. The agreement also included a provision that, if infringement was found, the losing party could avoid any damages at all by stopping the problematic activity within six months.

The Federal Rules of Evidence do not explicitly protect ADR proceedings except that Rule 408 prohibits a party from using certain compromises or “statements made in compromise negotiations” for the purposes of proving liability, invalidity of a claim, damages, or for impeachment of a witness. FRE 408. In addition, Rule 501 permits courts to apply “principles of the common law . . . in the light of reason and experience” in determining what additional information may be considered privileged.

Federal Mediation Privilege: Under the permission of Rule 501, the Pennsylvania District Court in this case followed other federal courts in adopting a “federal mediation privilege” that would privilege information and conduct associated with a mediated settlement process. Up to now, no federal court of appeals have recognized the privilege and, on appeal, the Federal Circuit refused to decide this issue. The appellate court wrote “we decline to determine if, in light of reason and experience, we should recognize a mediation privilege.”

What is a Mediation?: After agreeing that there is indeed a federal mediation privilege, the district court determined that the out-of-court resolution proceeding here did not count as a mediation but was rather an arbitration. As an arbitration, the prior proceedings did not qualify for the privilege. On appeal, the Federal Circuit affirmed – finding that the district court did not abuse its discretion in determining that the non-binding arbitration is not a mediation.

Privileging settlement discussions and mediations has two primary goals: (1) to encourage parties to settle disputes outside of court; and (2) to encourage a frank and candid discussion of the case in the settlement process. If statements from the mediation could later be used in court, parties would be likely to either refuse to participate or merely use the process to puff-up their position. In this case the neutral was charged with making a decision on the merits – i.e., the arbitration setup did not encourage a frank and candid discussion of the case. It is this difference that leads courts away from extending the mediation privilege to the arbitration context.

Affirmed

Notes:

  • I thought that the oral arguments by Connie Trela (Sidley) and Michael Underhill (Boies Schiller) were particularly good. It may have been because oral arguments were held while the court was in Oregon sitting before a packed-house of IP attorneys.
  • Although information regarding the prior arbitration is now discoverable, it will likely be disclosed only under seal – keeping it from the public purview.
  • In a separate case between these same parties, Kimberly-Clark has filed a petition for a writ of certiorari to the Supreme Court asking the court to review the Federal Circuit’s “patent specific standard” for determining whether to grant preliminary injunction. The Federal Circuit recently denied en banc rehearing of the issue over dissents from judges Newman, O’Malley and Reyna. [En Banc Denial][Supreme Court Petition]

Recent Patent Law Scholarship Roundup

Patent

By Jason Rantanen

Paul J. Heald and Susannah Chapman, Veggie Tales: Pernicious Myths About Patents, Innovation and Crop Diversity in the Twentieth Century:
Who is correct: the ethnobotanists, with their belief that patents destroyed plant diversity in the twentieth century, or the economists, with their belief that patent law is essential to increasing plant diversity through innovation?  Based on a novel empirical analysis of vegetable crops and apples, Paul Heald and Susanna Chapman conclude that both are wrong: crop diversity has not declined since 1900; it has held steady or even increased.  And patents have played at most a minor role in innovation of new varieties of vegetables and apples.  While the authors' conclusions are not unassailable, they are surprising and thought provoking, and the paper is worth reading by anyone interested in patent policy, crop diversity, or even just the subject of where our food comes from.

One area in which I disagree with the paper's conclusions is in the interpretation of the data about the role patents play in the development of new varieties.  In support of their conclusion that patents played an insignificant role role in incentivizing the creation of new types of apples, the authors point to data suggesting that patented varieties comprised only 10% of the varieties of apple stock available in 2004 but not in 1900 (i.e.: "new" varieties).  Yet, 10% may be a significant figure in terms of marginal incentives, especially in an area where non-patent mechanisms are also likely operating to  encourage invention and where the cost of engaging in inventive activity may be relatively low.  Hobby gardeners, for example, may be producing a significant amount of new diversity in this area.  In addition, the 10% figure is based a whole that includes imported varities and newly identified historic varieties; when limited to new varieties due to innovation alone, the figure would be closer to 22% based on the reported data.

The complete article is available via ssrn here.

Sarah Tran, Patent Powers
Much has been said about the Leahy-Smith America Invents Act, but little intensive scholarly analysis has yet appeared.  Professor Tran engages in such an analysis with respect to a specific aspect of the AIA: the way in which it transforms the Patent and Trademark Office's rulemaking authority and how those changes affect the traditional power dynamic between courts and the PTO.  The PTO's new powers, Professor Tran concludes, "conflict irreconcilably with the Federal Circuit’s traditional view of PTO authority," and "require[] that the Agency engage in complex, policy-based decisions that may carry profound implications for inventors, patent law practitioners, and society at large."  Draft at 6.  To resolve this conflict, she proposes an analytical framework to delineate the proper extent of the PTO's authority under the AIA, one that shifts greater substantive rulemaking authority to the patent office. 

Professor Tran's current draft is available via ssrn here.  The article includes an extensive chart setting out each of the PTO's new rulemaking powers under the AIA. 

 

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

New Patent Search Tool

  • ArchPatent is a brand new, free-to-use patent search resource that went live to the public on October 11th with US patents extending back to 1920. ArchPatent will be supported mainly by ad revenue. It was developed with the help of many PatenlyO readers, by aerospace engineers, and managers who specialize in data analysis and management. One of Arch PatentFounders, Brad Chassee indicated, "This tool was developed for those frustrated with the difficulty of using existing patent search tools. By providing simple yet powerful filtering tools, ArchPatent can drastically reduce search times, and our intuitive workspace functionality can greatly simplify larger, more complex search tasks." Many new features suggested by users are in the works for integration in future releases include: collaborative workspaces, matching of search terms within a single claim, filtering and advanced processing based on patents referenced and in-page PDF display. [Link]

Barnes & Noble Complains about Microsoft

  • Barnes & Noble wants the DOJ to go after Microsoft because of their licensing tactics. Barnes & Noble asked the DOJ to investigate Microsoft for using patents to keep new players out of the market. It seems that Microsoft may have asked Barnes & Noble, maker of the Android powered Nook, to enter into license agreement. Barnes & Noble said in a letter to the DOJ that "Microsoft is attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices." Microsoft is accusing Barnes & Noble of infringing 5 patents and Microsoft has filed a complaint with the ITC. Barnes & Noble claims that when they asked Microsoft for more detailed information related to these patents, Microsoft refused, claiming that the information was confidential and could not be shared, unless Barnes & Noble first executed a nondisclosure agreement. [Link] [Link]

Book Review

  • I recently received a free copy of "Patent Professional's Handbook: A Training Tool for Administrative Staff," it is a book geared toward administrative staff/non-attorneys to give them an overview of what steps are involved in patent prosecution. The book starts with an explanation of patent basics and moves on to explain how to do business electronically with the USPTO. There are sections on establishing user accounts and accessing the USPTO's patent information website. The book includes numerous screen images to help the reader understand how to navigate the PTO website. The book is very easily understandable and gives step-by-step instructions on what needs to be done when communicating with the USPTO. This is the first book on the market addressed directly to non-attorneys and does not give any legal advice. This would be a great beginner book for individuals that want to be involved in the patent world in an administrative role or individuals that are currently in an administrative role as a go to guide. The author of the book is Susan Stiles; she has been a Legal Assistant for more than 25 years, with 19 years experience in IP. [Link]

Patent Jobs:

  • Shuffle Master Inc. is looking for IP counsel with a minimum of 5 years of experience and an engineering background. [Link]
  • Myers Wolin is seeking a patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Toler Law Group is searching for patent attorneys with a degree in EE, CE, or CS. [Link]
  • Cesari and McKenna is looking for patent attorney with 2-4 years of experience and a degree in EE, CS, or related area of technology. [Link]
  • Sandia National Laboratories is searching for patent assistants with experience working with USPTO rules. [Link]
  • Baker & Daniels is seeking a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • The Storella Law Group is searching for a contract patent attorney or agent with a background in biotechnology. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6 or more years of experience in patent law. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP. [Link]
  • Harrity & Harrity is seeking a patent attorney with 2+ years of experience as a patent associate, agent, or examiner. [Link]
  • Baker & Daniels is searching for an IP associate with 2-4 years of experience and a degree in EE or CS to work in their Indianapolis office. [Link]
  • Skiermont Puckett is seeking 1 or more attorneys with 3 or more years of experience in a technical degree. [Link]
  • Guntin Meles & Gust is searching for patent attorneys with 2+ years of experience and a degree in EE or CE. [Link]

Upcoming Events:

  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey Chelstrom on November 17th at 12:00 noon EST. The webinar will review and discuss many topics such as: the "effective filing date" of a patent application, changes to Section 102 and Section 103. New definitions to prior art, and many more topics. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host 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 Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [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 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.

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

New Patent Search Tool

  • ArchPatent is a brand new, free-to-use patent search resource that went live to the public on October 11th with US patents extending back to 1920. ArchPatent will be supported mainly by ad revenue. It was developed with the help of many PatenlyO readers, by aerospace engineers, and managers who specialize in data analysis and management. One of Arch PatentFounders, Brad Chassee indicated, "This tool was developed for those frustrated with the difficulty of using existing patent search tools. By providing simple yet powerful filtering tools, ArchPatent can drastically reduce search times, and our intuitive workspace functionality can greatly simplify larger, more complex search tasks." Many new features suggested by users are in the works for integration in future releases include: collaborative workspaces, matching of search terms within a single claim, filtering and advanced processing based on patents referenced and in-page PDF display. [Link]

Barnes & Noble Complains about Microsoft

  • Barnes & Noble wants the DOJ to go after Microsoft because of their licensing tactics. Barnes & Noble asked the DOJ to investigate Microsoft for using patents to keep new players out of the market. It seems that Microsoft may have asked Barnes & Noble, maker of the Android powered Nook, to enter into license agreement. Barnes & Noble said in a letter to the DOJ that "Microsoft is attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices." Microsoft is accusing Barnes & Noble of infringing 5 patents and Microsoft has filed a complaint with the ITC. Barnes & Noble claims that when they asked Microsoft for more detailed information related to these patents, Microsoft refused, claiming that the information was confidential and could not be shared, unless Barnes & Noble first executed a nondisclosure agreement. [Link] [Link]

Book Review

  • I recently received a free copy of "Patent Professional's Handbook: A Training Tool for Administrative Staff," it is a book geared toward administrative staff/non-attorneys to give them an overview of what steps are involved in patent prosecution. The book starts with an explanation of patent basics and moves on to explain how to do business electronically with the USPTO. There are sections on establishing user accounts and accessing the USPTO's patent information website. The book includes numerous screen images to help the reader understand how to navigate the PTO website. The book is very easily understandable and gives step-by-step instructions on what needs to be done when communicating with the USPTO. This is the first book on the market addressed directly to non-attorneys and does not give any legal advice. This would be a great beginner book for individuals that want to be involved in the patent world in an administrative role or individuals that are currently in an administrative role as a go to guide. The author of the book is Susan Stiles; she has been a Legal Assistant for more than 25 years, with 19 years experience in IP. [Link]

Patent Jobs:

  • Shuffle Master Inc. is looking for IP counsel with a minimum of 5 years of experience and an engineering background. [Link]
  • Myers Wolin is seeking a patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Toler Law Group is searching for patent attorneys with a degree in EE, CE, or CS. [Link]
  • Cesari and McKenna is looking for patent attorney with 2-4 years of experience and a degree in EE, CS, or related area of technology. [Link]
  • Sandia National Laboratories is searching for patent assistants with experience working with USPTO rules. [Link]
  • Baker & Daniels is seeking a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • The Storella Law Group is searching for a contract patent attorney or agent with a background in biotechnology. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6 or more years of experience in patent law. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP. [Link]
  • Harrity & Harrity is seeking a patent attorney with 2+ years of experience as a patent associate, agent, or examiner. [Link]
  • Baker & Daniels is searching for an IP associate with 2-4 years of experience and a degree in EE or CS to work in their Indianapolis office. [Link]
  • Skiermont Puckett is seeking 1 or more attorneys with 3 or more years of experience in a technical degree. [Link]
  • Guntin Meles & Gust is searching for patent attorneys with 2+ years of experience and a degree in EE or CE. [Link]

Upcoming Events:

  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey Chelstrom on November 17th at 12:00 noon EST. The webinar will review and discuss many topics such as: the "effective filing date" of a patent application, changes to Section 102 and Section 103. New definitions to prior art, and many more topics. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host 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 Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [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 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.

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

New Patent Search Tool

  • ArchPatent is a brand new, free-to-use patent search resource that went live to the public on October 11th with US patents extending back to 1920. ArchPatent will be supported mainly by ad revenue. It was developed with the help of many PatenlyO readers, by aerospace engineers, and managers who specialize in data analysis and management. One of Arch PatentFounders, Brad Chassee indicated, "This tool was developed for those frustrated with the difficulty of using existing patent search tools. By providing simple yet powerful filtering tools, ArchPatent can drastically reduce search times, and our intuitive workspace functionality can greatly simplify larger, more complex search tasks." Many new features suggested by users are in the works for integration in future releases include: collaborative workspaces, matching of search terms within a single claim, filtering and advanced processing based on patents referenced and in-page PDF display. [Link]

Barnes & Noble Complains about Microsoft

  • Barnes & Noble wants the DOJ to go after Microsoft because of their licensing tactics. Barnes & Noble asked the DOJ to investigate Microsoft for using patents to keep new players out of the market. It seems that Microsoft may have asked Barnes & Noble, maker of the Android powered Nook, to enter into license agreement. Barnes & Noble said in a letter to the DOJ that "Microsoft is attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices." Microsoft is accusing Barnes & Noble of infringing 5 patents and Microsoft has filed a complaint with the ITC. Barnes & Noble claims that when they asked Microsoft for more detailed information related to these patents, Microsoft refused, claiming that the information was confidential and could not be shared, unless Barnes & Noble first executed a nondisclosure agreement. [Link] [Link]

Book Review

  • I recently received a free copy of "Patent Professional's Handbook: A Training Tool for Administrative Staff," it is a book geared toward administrative staff/non-attorneys to give them an overview of what steps are involved in patent prosecution. The book starts with an explanation of patent basics and moves on to explain how to do business electronically with the USPTO. There are sections on establishing user accounts and accessing the USPTO's patent information website. The book includes numerous screen images to help the reader understand how to navigate the PTO website. The book is very easily understandable and gives step-by-step instructions on what needs to be done when communicating with the USPTO. This is the first book on the market addressed directly to non-attorneys and does not give any legal advice. This would be a great beginner book for individuals that want to be involved in the patent world in an administrative role or individuals that are currently in an administrative role as a go to guide. The author of the book is Susan Stiles; she has been a Legal Assistant for more than 25 years, with 19 years experience in IP. [Link]

Patent Jobs:

  • Shuffle Master Inc. is looking for IP counsel with a minimum of 5 years of experience and an engineering background. [Link]
  • Myers Wolin is seeking a patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Toler Law Group is searching for patent attorneys with a degree in EE, CE, or CS. [Link]
  • Cesari and McKenna is looking for patent attorney with 2-4 years of experience and a degree in EE, CS, or related area of technology. [Link]
  • Sandia National Laboratories is searching for patent assistants with experience working with USPTO rules. [Link]
  • Baker & Daniels is seeking a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • The Storella Law Group is searching for a contract patent attorney or agent with a background in biotechnology. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6 or more years of experience in patent law. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP. [Link]
  • Harrity & Harrity is seeking a patent attorney with 2+ years of experience as a patent associate, agent, or examiner. [Link]
  • Baker & Daniels is searching for an IP associate with 2-4 years of experience and a degree in EE or CS to work in their Indianapolis office. [Link]
  • Skiermont Puckett is seeking 1 or more attorneys with 3 or more years of experience in a technical degree. [Link]
  • Guntin Meles & Gust is searching for patent attorneys with 2+ years of experience and a degree in EE or CE. [Link]

Upcoming Events:

  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey Chelstrom on November 17th at 12:00 noon EST. The webinar will review and discuss many topics such as: the "effective filing date" of a patent application, changes to Section 102 and Section 103. New definitions to prior art, and many more topics. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host 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 Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [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 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.

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

Therasense: Encouraging Intentional Deception?

Dissent, Inequitable Conduct, Patent, Patent Cases 2011, , ,

Patent2011053Powell v. Home Depot (Fed. Cir. 2011).

Michael Powell’s invention is fairly simple –  it covers a guard for a circular saw on an arm.  In 2004, Mr. Powell developed the guard and provided several prototypes to Home Depot for the company to use in its in-store saws for cutting raw lumber to customer specifications.  Rather than having Powell manufacture the guards, Home Depot turned to another company for its 2,000 stores.  Powell obtained a patent then sued Home Depot.  After a three-week trial, a Florida jury awarded Powell $15 million in damages.  The district court also awarded enhanced damages, attorney fees, and pre-judgment interest — bringing the total to $24 million.

On appeal, the Federal Circuit affirmed claim construction, infringement, willfulness, inequitable conduct, and damages. Dissenting-in-part, Judge Dyk argued only that the finding of willful infringement was incorrect because Powell did not prove that Home Depot’s non-infringement defense was objectively unreasonable as is required under the objective prong of the willfulness inquiry.

Inequitable Conduct: One interesting element of the appeal involved inequitable conduct.  During prosecution, Powell had filed a Petition to Make Special on grounds that he was obligated to manufacture and supply devices embodying the claims sought. MPEP 708.02.  That original petition was roughly correct based upon ongoing manufacturing negotiations with Home Depot. Although negotiations with Home Depot fell-through before the PTO granted the petition, Powell never informed the PTO that he no longer qualified for the Special designation under the prospective manufacture prong and actively encouraged the PTO to decide the petition.

In a pre-Therasense decision, the district court held that the failure to inform the  PTO was done with intent to deceive the PTO, but that the intentional omission was not material because (1) the timing was not related to patentability and (2) Powell could have instead filed a petition to make special based upon ongoing infringement of the applied-for claims.  Under Therasense, inequitable conduct will not normally be found based upon an applicant’s improper omission unless the omission is the but-for cause of the patent being issued.

On appeal, the Federal Circuit affirmed — holding that:

Where, as here, the patent applicant fails to update the record to inform the PTO that the circumstances which support a Petition to Make Special no longer exist—that conduct does not constitute inequitable conduct. That is so because Mr. Powell’s conduct obviously fails the but-for materiality standard [of Therasense] and is not the type of unequivocal act, “such as the filing of an unmistakably false affidavit,” that would rise to the level of “affirmative egregious misconduct. Id.

This case creates further difficulty for patent attorneys by giving a free-pass to patent applicants who intentionally deceive the PTO in order to benefit their case.  Although participating in such activity violates the rules of conduct for patent law professionals under 37 C.F.R. 10.22, patent owners apparently will not face consequences.  Adding to the incentive for bad behaviour is the PTO’s lax enforcement through the Office of Enrollment and Discipline; the new statute of limitations on attorney misconduct charges; and the new supplemental examination procedures that allows patentees to whitewash patents obtained through inequitable conduct.  For some this may not be intuitive, but the primary solution is not increased enforcement but instead for the PTO to avoid relying upon attorney statements.

Fighting the Retroactive Elimination of False Marking Claims

False Marking, Patent, Patent Cases 2011, Patent Legislation

The Public Patent Foundation (PubPat) has continued its push against "the negative effects that over-patenting, unmerited patenting and excessive patent rights can have on society." The organization, founded by patent attorney Dan Ravicher, typically focuses on what it sees as bad patents being over-exerted. In the false marking heyday, PubPat also filed false marking suits against Cumberland (Sweet'N Low), Iovate (Xenadrine), and McNeil (Tylenol). Unlike ordinary usual public-interest lawsuits, the false marking claims had the potential earning PubPat substantial monetary returns. Under the false marking statute, 35 U.S.C. § 292, PubPat was eligible to receive half of the eventual fine paid by any adjudged false markers.

However, when Congress passed the Leahy-Smith AIA it included a provision that denies standing for any false marking complainant who cannot prove a competitive injury.  The standing provision is retroactive and many of the false marking claims have already been dismissed. 

In a new filing, PubPat has argued that the retroactive denial of standing violates the organizations Fifth Amendment due process rights.

While the claim underlying the cause of action in qui tam cases originally belongs to the United States, qui tam statutes perform a partial assignment of that claim to the qui tam plaintiff and the resulting cause of action is therefore partially the property of the qui tam plaintiff. . . . Retroactive congressional action that deprives a private party of its property violates the Due Process Clause of the Fifth Amendment if it is not “supported by a legitimate legislative purpose.” United States v. Carlton, 512 U.S. 26, 30-31 (1994). Further, the retroactive effect of legislation must separately have a legitimate legislative purpose apart from the prospective substantive changes. Id. . . . The America Invents Act . . . is completely silent as to why the substantive changes are to be applied retroactively. . . . Without being overly cynical, the only honest explanation for the America Invents Act's retroactive elimination of qui tam false marking suits is that it was the result of lobbying efforts by corporations like McNeil who wished to deliberately eliminate the rights of private parties like PUBPAT to continue to pursue pending qui tam cases for false patent marking. This targeting of those who were deliberately induced to file false marking suits is an expressly improper purpose under Carlton and any potential “public good” argument that McNeil or the United States might proffer for the retroactivity would surely be pretextual, further indicating its impropriety. . . . PUBPAT agrees, for example, that “retroactive laws are not [categorically] prohibited by the Constitution.” . . . All PUBPAT suggests is that retroactive statutes can violate the Due Process Clause and that the America Invents Act's retroactive application of substantive changes to the false marking statute in a way that does nothing but deprive PUBPAT of its property interest in order to bestow a private benefit on McNeil is an example of precisely such a violation.

File Attachment: PubPatOpp.pdf (102 KB).

 

Next Federal Circuit Judge Nominee: Richard G. Taranto

Patent

The White House has announced the nomination of Richard G. Taranto to fill the final remaining open circuit judge position on the Court of Appeals for the Federal Circuit.  Mr. Taranto is an appellate and Supreme Court litigator at the small but well established DC firm of Farr & Taranto. He has participated in dozens of Federal Circuit patent appeals, including several Rambus cases, Verizon v. Cox, Lucent v. Gateway, Syngenta v. Monsanto, and others. Mr. Taranto has argued three IP cases before the U.S. Supreme Court: MGM v. Grokster (contributory copyright infringement), Warner Jenkinson v. Hilton Davis (patent law doctrine of equivalents), and Two Pesos v. Taco Cabana (trade dress infringement). Westlaw lists Mr. Taranto as counsel in over 90 reported court decisions. He has taught a variety of classes as an adjunct professor, including patent law at Harvard in 2002.

Taranto graduated from Yale Law School in 1981. He clerked for Judge Abraham Sofaer on the Southern District of New York; Judge Robert Bork on the D.C. Circuit; and Justice Sandra Day O’Connor on the Supreme Court. 

 

USPTO Management Shake-Up Continues

Patent

USPTO Director David Kappos circulated an internal e-mail today announcing that Peter Pappas has become the USPTO Chief of Staff. Since 2010, Drew Hirshfeld has been Dir. Kappos’ chief of staff. Hirshfeld is staying with the PTO and will return to his post as Associate Commissioner for Patent Examination Policy. Bob Bahr has been the acting Associate Commissioner for Patent Examination Policy during this time. (Note, this is not Robert Bahr of Berkeley and Cisco).

Peter Pappas joined the USPTO as Chief Communications Officer and latter added the official title of “Senior Advisor to the Undersecretary.” Secretary Kappos wrote about Mr. Pappas’ new role:

In his new role as Chief of Staff, Peter will serve as my principal political advisor, oversee all public engagement functions and manage the interagency coordination process. He will serve as the USPTO’s chief liaison to the White House and Department of Commerce and continue to supervise the strategic communications function of the Office. He will also continue to serve as a member of the USPTO’s Executive Committee.

Congratulations to Drew on a job well done and congratulations to Peter on your new and expanded role. In a separate shake-up of senior USPTO management, last week, the USPTO announced the retirement of Patent Commissioner Bob Stoll. This is a natural time for a leadership change at the USPTO. The office has been pushing through legislative patent reform measures for the past several years. Now, it is time for implementation. Drew Hirshfeld’s new role as head of examination policy will be especially difficult because of the oncoming rash of new law and administrative procedures.