Prosecution History Estoppel: Defining a Foreseeable Alternative

Patent

Duramed Parmaceuticals (Teva Women’s Health) v. Paddock Labs. (Fed. Cir. 2011)

By Dennis Crouch

Note: This case supports the already accepted notion that the presumptive bar to the doctrine of equivalents created by a narrowing amendment during patent prosecution is very difficult to overcome.

Teva is the largest worldwide manufacturer of generic drugs. In this case, however, the tables are turned. In 2008, Teva purchased Barr and its subsidiary Duramed. In 2009, the company sued Paddock – alleging that the defendant’s application with the FDA to distribute a generic estrogen-derived hormone replacement constituted patent infringement under 35 U.S.C. § 271 (e)(2)(A).

(2) It shall be an act of infringement to submit – (A) an application under section 505(j) of the Federal Food, Drug, and Cosmetic Act … for a drug claimed in a patent or the use of which is claimed in a patent.

The asserted patent – No. 5,908,638 – covers Duramed’s Cenestin ERT product and appears to be set to expire in 2015.

Narrowing Amendment: During prosecution of the patent, Duramed amended narrowed its claim 1 in response to an office action rejection. The amendment took a limitation from a dependent claim and added it to claim 1 so that the independent claim now required that the pharmaceutical composition be “coated with a moisture barrier coating comprising ethylcellulose.”

In its abbreviated new drug application (ANDA), Paddock indicated its plans to use a barrier made of polyvinyl alcohol rather than ethylcellulose. So, when it sued, Duramed alleged infringement under the doctrine of equivalents (DOE).

Festo and Prosecution History Estoppel: The district court rejected the DOE claim – holding that Duramed was barred from claiming equivalents over the ethylcellulose coating based upon the doctrine of prosecution history estoppels. (Citing Festo).

On appeal, the Federal Circuit affirmed – holding that the district court had properly ruled the patent not infringed.

A patent is literally infringed only when the accused action or device meets all of the elements of the invention as defined by the patent claims. Long ago, courts added some leeway to the infringement analysis through the Doctrine of Equivalents. Through application of the DOE, infringement can be found even when the accused device is outside of the literal scope of a patent claim – so long as there is “equivalence between the elements of the accused product or process and the claimed elements of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997).

DOE and PHE: The courts have limited the DOE in a number of ways. One of the most important limitations is that of prosecution history estoppel (PHE). In Festo and other cases, the courts held that it would be unfair to allow a patentee to use the DOE to recapture patent scope that had been voluntarily surrendered in order to acquire the patent.

The process for determining whether prosecution history estoppel applies first asks whether estoppels presumptively applies and then asks whether the patentee can overcome the presumption. Thus:

  • PHE is presumed when a patent claim is narrowed for reasons relating to patentability;
  • However, the presumption can be overcome by showing that the patentee did not intend to surrender the particular equivalent.

In Festo, the Supreme Court offered two specific arguments that could be used to overcome the presumption: (1) that the alleged equivalent would have been unforeseeable at the time the amendment was made; and (2) that the reason for the amendment only tangentially related to the equivalent in question. In addition, the Supreme Court noted that other explanations may also work to overcome the presumption.

Here, the Federal Circuit agreed that the presumption of PHE applied because Duramed had narrowed its claims in response to a prior art rejection. The court also agreed that Duramed had failed to overcome the presumption. In particular, the court held that the polyvinal alcohol alternative should have been foreseeable because it was already known to be used in other pharmaceutical compositions.

What is Foreseeable?: Courts will find an alternative “foreseeable” if it is known in the prior art pertinent to the claim scope before the amendment. This definition means that a foreseeable alternative is somewhat more broadly defined than is an obvious alternative. Here, Duramed argued that it was not foreseeable at the time of the amendment to use the polyvinal alcohol alternative in combination with the estrogen drug. On appeal, the Federal Circuit held that foreseeability for PHE analysis does not require such precision – rather, it was sufficient for the court that the alternative was known for use with other pharmaceutical compounds.

As we spelled out in Schwarz, when the language of both original and issued claims begins with the words “[a] pharmaceutical composition,” that language defines the field of the invention for purposes of determining foreseeability. Accordingly, PVA MBCs need only to have been known in the field of pharmaceutical compositions as of the time of Duramed’s narrowing amendment. . . . [F]oreseeability does not require such precise evidence of suitability. And even if the [prior art] disclosure indicates that PVA is less than ideal in some pharmaceutical uses as an MBC, it is still disclosed to be useful as such, and that renders it foreseeable for purposes of prosecution history estoppel. Foreseeability does not require flawless perfection to create an estoppel.

Because Duramed was unable to overcome the presumption, prosecution history estoppels applies to bar Duramed from asserting that the accused Polyvinal alcohol barrier is equivalent to the claimed ethylcellulose barrier.

The Frequency of Means-Plus-Function Claims

Patent

The chart above shows the continued decline in the use means-plus-function claim limitations in U.S. Patents. To create the chart, I identified a sample of patents for each year and then used an automated search query to count the percent of patents that use the phrase "means for" in the claim set. This chart is even more dramatic if you consider that the average number of claims-per-patent has dramatically increased during this same period.

Patents Citing More than 2,500 References

Patent

Over the past year-and-a-half, 52 utility patents have issued that each cite more than 2,500 references.  It turns out that the vast majority of those patents are owned by one company –  Personalized Media Communications. PMC's recently issued patents also have the dubious honor of each having been filed prior to the 1995 change in patent term. Thus, PMC's patents will remain in force 17 years from the date of issuance even though they were filed more than 16 years ago. 

The second major excessive citer is Pelikan Technologies. Pelikan's patents relate to diabetes diagnostic tools, including electronic lancing. The other companies with excessive citations of prior art include Abbott Diabetes, Aloft Media, Angiotech Pharma, and Bayer Healthcare.(I could not find any patents that issued from 2000 through 2009 that cited more than 2,500 references).

Assignee Name

Patents on List

References Cited (avg)

Patent Documents Cited (avg)

Non-Patent Literature Cited (avg)

Example Patent

Personalized Media Communications

38

2,810

1,284

1,526

7966640

Pelikan Technologies

9

3,239

3,239

0

7981056

Abbott Diabetes Care

3

2,866

2,303

563

7920907

Bayer Healthcare

1

2,510

1,005

1,505

7897623

Angiotech Pharmaceuticals

1

3,068

245

2,823

7820193

Aloft Media

1

3,255

3,006

249

7970722

Why do PMC's patents take so long to issue? First, lets talk about what did not happen: (1) PMC never needed to appeal an examiner rejection; (2) PMC never even received a final office action; and (3) the application was not held back because of a secrecy order. Rather, the problem seems to be that PMC filed too many applications in 1995. Since PMC was only a small company with a so many patent applications, the PTO decided that it should "coordinate" the examination of PMC's patents. The result appears to be simply that the PTO created excessive delay, including four PTO-initiated suspensions of prosecution and Office Actions penned by at least three different examiners.

In one case that I looked at, some of the key file-history entries include:

File Application with a preliminary amendment

1995

Second Claim Set Amendment

1996

Examination Suspended (At PTO's Request) to Consider the Plethora of PMC patents

1997

First Non-Final Office Action Rejection

1997

Third Claim Set Amendment

1997

Second Non-Final Office Action Rejection

1998

Fourth Claim Set Amendment

1998

Fifth Claim Set Amendment    

1999

Sixth Claim Set Amendment

2002

Third Non-Final Office Action Rejection (New Examiner)

2002

Seventh Claim Set Amendment

2002

Examination Suspended (At PTO's Request) to Consider the Plethora of PMC patents

2004

PMC Filed Petition to Cancel Suspension and Speed-Up the Examination

2005

Examination Suspended (At PTO's Request) to Consider the Plethora of PMC patent applications

2007

Examination Suspended (At PTO's Request) to Consider the Plethora of PMC patent applications

2008

Ex parte Quayle Action (With Proposed Amendment and New Examiner)

2009

Notice of Allowance

2010

Delay for additional Citation of References

2010

Issue

2011

Average Number of References Cited Per Patent

Patent

PatentLawImage148

What are the odds that the PTO’s new limited disclosure rules and the Federal Circuit’s Therasense and Excergen decisions will turn this trend around? How will patent prosecutors alter their disclosure protocol based upon these changes in law & procedure?

More information on the data: The chart above shows the average number of references cited by both Applicants and Examiners as shown on the face of issued patents.  The chart is based upon all original utility applications published during a given time period. For 2011, numbers are through 7/20/2011.  The chart is “stacked,” thus, the average 42 citations per patent in 2011 includes, on average, 7.5 citations by the examiner and 34.5 citations by the applicant.  In 2010 I created a similar chart that showed a potential downward trend for 2010.  This new data rejects that trend –  although it is somewhat different because I have now excluded design patents from the data set.

As the table shows below, the median number of cited references is also growing, but at a much more manageable level and pace. 

Year

Median Number of References Cited

2005

13

2006

14

2007

14

2008

14

2009

15

2010

16

2011

17

USPTO Proposes to Modify Applicants Duty to Disclose, Following Therasense in Limiting the Scope of Materiality

Patent, ,

In a four-page Federal Register notice of proposed rulemaking of proposed rulemaking, the US Patent Office has indicated its intent to revise its duty-to-disclose standards based upon the recent Federal Circuit en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., — F.3d — (Fed. Cir. 2011). 

In Therasense, the Federal Circuit held that, apart from potentially affirmative egregious misconduct, inequitable conduct in patent prosecution should not be found unless it is proven that the misconduct was a “but for” cause of the patent issuing. Focusing specifically on the failure to disclose prior art, the court wrote: “[w]hen an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.”  The office introduces its proposal as follows:

Specifically, the Office is proposing to revise the materiality standard for the duty to disclose to match the materiality standard, as defined in Therasense, for the inequitable conduct doctrine. While Therasense does not require the Office to harmonize the materiality standards underlying the duty of disclosure and the inequitable conduct doctrine, the Office believes that there are important reasons to do so. The materiality standard set forth in Therasense should reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, consequently reducing the incentive to submit information disclosure statements containing marginally relevant information and enabling applicants to be more forthcoming and helpful to the Office. At the same time, it should also continue to prevent fraud on the Office and other egregious forms of misconduct. Additionally, harmonization of the materiality standards is simpler for the patent system as a whole.

The newly proposed Rule 56(b) (37 C.F.R. 1.56(b)) would read as follows:

Sec.  1.56  Duty to disclose information material to patentability.

* * * * *

(b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., — F.3d — (Fed. Cir. 2011). Information is material to patentability under Therasense if:

(1) The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or

(2) The applicant engages in affirmative egregious misconduct before the Office as to the information.

* * * * *

Under the new rule, the mere failure to disclose information will never be considered material to patentability if the pending claim is allowable. A parallel change would be made to the disclosure rules governing reexaminations.

The current Rule 56(b) defines material information as non-cumulative information that either (1) “by itself or in combination with other information…compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard” or (2) is inconsistent with “a position the applicant takes” arguing that the claim is patentable.  The current rule implemented in 1992 and was itself an attempt by the USPTO to limit the scope of materiality. The pre-1992 rule required submission of information whenever there was a “substantial likelihood that a reasonable examiner would consider [the information] important in deciding whether to allow the application to issue a patent.” 

Thus far in 2011, the average issued patent cites 42 prior art references.  This number is highly skewed because of a minority of patents that cite to an excessively large number of prior  art references.  The median patent in 2011 cites 17 references. Only 8% of the 2011 patents cite more than 100 references, but those patents collectively cite more references than the other 92% combined.

The USPTO is also seeking comment on other actions that “may provide an incentive for applicants to assist the Office by explaining/clarifying the relationship of prior art to the claimed invention.”

Written comments regarding the proposed rule change should be submitted to AC58.comments@uspto.gov within the next 60 days (by September 19, 2011).

Who cares about Patent Term?: Biotechnology Patent Applicants

Patent,

For patent applications filed since 1995, the patent term is calculated by adding twenty years to the filing date. US applicants can add up to one year to the term by first filing a provisional application and then, after a one-year delay, filing a regular (non-provisional) application.  This is because the filing of the provisional application does not trigger the beginning of the twenty year term.  Provisional applications have the additional benefit of delaying some prosecution costs. However, the total application cost may well be greater because of the added fees and attorney oversight.

Shifted Term: Although the patent term with a provisional application can be up to twenty-one years from the provisional filing (not counting other term adjustments), the effective term (issue date to expiry date) is not really changed. Rather, because the USPTO does not examine (or even queue) provisional applications, the extra year on the end of the term is balanced by an extra year in prosecution. Thus, the trade-off is a question of whether the additional enforceable time is more valuable in three years from filing or in twenty years. 

Taking Advantage of Provisional Patent: The chart below shows the percent of US originated patents issued in 2010–2011 that claim priority to one or more provisional patent applications, grouped by USPTO technology center. Provisional applications have become popular across all technology areas. However, when compared with other areas of technology, the patents examined in Technology Center 1600 (Biotechnology and Organic Chemistry) are much more likely to claim priority to provisional applications and gain the year of delay.  In that area, research competition and a norm of academic publication requires that applications be filed early in the development process to avoid loss-of-rights. Yet, products are typically not ready or approved for market by the time of issuance. It is unclear at this point how many applicants will take advantage of the USPTO’s two-year delay program.

USPTO Technology Centers:

 1600 – Biotechnology and Organic Chemistry
 1700 – Chemical and Materials Engineering
 2100 – Computer Architecture, Software, and Information Security
 2400 – Computer Networks, Multiplex communication, Video Distribution, and Security
 2600 – Communications
 2800 – Semiconductors, Electrical and Optical Systems and Components
 2900 – Designs
 3600 – Transportation,Construction, Electronic Commerce, Agriculture, National Security and License & Review
 3700 – Mechanical Engineering, Manufacturing, Products

Over the past several years, the percent of patents that claim priority to a provisional application has continued to rise. I expect that trend to continue.

  

Tees & Radar: Patent Pendency 2011

Patent

I updated my patent database to include all patents issued thus far in 2011.  For 2011, the median original patent issued in 3.8 years (4.0 years average pendency).  For patents issued from continuation and divisional applications, the 2011 median pendency was 2.4 years (3.0 years average pendency).  The pendency for original applications is essentially unchanged from 2010. However, the pendency of the median continuation & divisional application has dropped by about 5 months from 2010.

 

Median Pendency (Years)

Year

2010

2011*

Patents Issued From Original Applications (Excluding Continuations & Divisional Applications)

3.8

3.8

Patents Issued From Continuation or Divisional Applications

2.8

2.4

Of all the patents issued thus far in 2011, Louis Brown’s Patent No. 7,959,525 issued most quickly — 125 days from the earliest priority date.

Brown’s patent is directed to a Dual Composition Golf Tee. The patent itself is occupies only six pages and with five claims (one independent). The patent cites several prior patents — most of those being Brown’s own prior patents that were also examined by the same USPTO primary examiner Steve Wong. In the background section, Brown explains how his claimed invention is an improvement upon his prior own inventions.  Brown’s case was “made special” after he filed a petition based upon his age (over 65 years).

The 2011 patent with the longest application pendency Patent No. 7,898,454 invented by Bertrand Starkey.  Starkey’s patent application was filed in 1966 by the Canadian Government and is licensed to the US Army.   The application received a notice of allowance in 1968, but was held from issuance under a secrecy order until 2006.  The Starkey patent is directed to a Radar Jamming method. The Canadian equivalent of Starkey’s patent was also held under a secrecy order and issued in 2007.  Starkey is also author of the intriguing book: Laplace Transforms for Electrical Engineers (1957).

Antitrust Concerns Over the $4.5B Apple-Microsoft-RIM Patent Purchase

Patent,

by Dennis Crouch

In most cases, patent enforcement actions and resulting license agreements (settlements) avoid antitrust scrutiny.  However, both exclusive licenses and patent assignments are treated just like any other asset acquisition and are more likely to trigger antitrust review by the Department of Justice (DOJ) or Federal Trade Commission (FTC).

Earlier this summer “Rockstar Bidco” won the largest patent auction to-date by offering $4.5 billion for 6,000 patents held by bankrupt Nortel.  Rockstar outbid Google, whose final offer was $100 million short.  Rockstar is a collaborative shell company led by Microsoft, Apple, and Research-in-Motion.  Its not surprising that the patents largely relate to high speed mobile networking. 

The Market: In the US, these four players (Microsoft, Apple, RIM, and Google) currently own the market for smartphone operating systems. However, the Rockstar members relative market shares continue to drop as Google’s Android system rapidly grows. As part of the background, these companies have been rapidly building their patent portfolios and exerting them as a mechanism to both earn royalties and shut down competitor activity.  For example, earlier this month the US International Trade Commission (USITC) ruled that HTC phones running Google Android software infringe a number of Apple’s patents. HTC already pays $5 to Microsoft for each of its Android phones.

Back to the Nortel Patent Purchase: The bankruptcy court has approved the sale after being told by Nortel that “there’s no antitrust risk to the deal.” However, according to the Washington Post, the Department of Justice is still considering whether the purchase would violate US antitrust laws. In April 2011, the DOJ intervened in a similar (but much smaller) purchase of 882 Novell patents by Microsoft, Oracle, and Apple to require open source licensing of the patent rights in certain situations. In that case, however, Novell had already made open source commitments. 

Google’s Own Antitrust Problems: I used three primary sources in writing this article: internet searching (i.e., Google search), e-mail correspondence (i.e., Google mail), and phone calls (i.e., Google Android phone).  (Here is my Google+ page).

Patently-O Bits & Bytes by Lawrence Higgins

Patent

BPAI's Backlog

  • Currently the BPAI receives about 1,200 new cases every month, but only decides around 600 cases per month. As shown in the graph below the BPAI's backlog has been increasing exponentially since 2005. In 2005, the BPAI had a backlog of only 882 cases; however, currently the backlog is well over 20,000 cases. The average time for a case to work its way through the system is over 30 months. There are many reasons that can be contributed to the BPAI's backlog, but the 3 most important reasons are:
    • The increase in the amount of cases filed per month. In 2005, the BPAI only received about 220 new cases per month; however, in 2011, this number was well over 1,000.
    • The increase in the amount of patent applications filed per year. In 2005, the PTO received 390,000 new utility patent applications; however in 2010 the PTO received 490,000 new applications. Numbers for 2011 are not available, but it can be presumed to be about 500,000 new applications.
    • The amount of money the PTO has to hire new judges. A BPAI judge salary is over $150,000 per year, and to effectively handle the caseload the BPAI would need to more than double the amount of judges that they currently have. To hire about 90 more judges, it would cost the PTO over 13.5 million dollars.

BPAI Statistics

Schmirler v. Kappos: This case seems to raise some interesting issues about joint inventors (liability and rights) and patent fees.

  • In Schmirler, full issue fee was paid by one of three inventors on his AMEX card. Power of attorney (POA) was transferred by all three inventors to a law firm to wrap up prosecution and POA by its terms was to cease when attorney received issued patent. There is some evidence that, after the POA was transferred, one of the inventors requested a refund from AMEX, not the USPTO. About 2 weeks after the patent issued, AMEX executed a chargeback to take the issue fee back from the PTO. The PTO did not discover the fee discrepancy until 3 years later, and when they did discover it they sent out a letter regarding the fee discrepancy. The PTO did not receive any response, so in January 2005 the patent was vacated. The case focuses on essentially one question; should Schmirler be allowed to proceed on his own to protect his patent rights that were vacated by the PTO? Complaint Schmirler-MSJ-Memo PTO-MSJ-Memo Schmirler-Response PTO-Response

The Smithsonian and USPTO collaborate on an exhibition

  • The exhibition The Great American Hall of Wonders examines the nineteenth-century American belief that the people of the United States shared a special genius for innovation. It explores this belief through works of art, mechanical inventions, and scientific discoveries, and captures the excitement of citizens who defined their nation as a "Great Experiment" sustained by the inventive energies of Americans in every walk of life. The exhibition opened on July 15, 2011 and will close on January 8, 2012. [Link]

Patent Jobs:

  • Snyder, Clark, Lesch & Chung is seeking a patent attorney with at least 2 years of experience to work in their Herndon, Virginia office. [Link]
  • BASF is seeking an IP Counsel to work at their Florham Park, New Jersey location. [Link]
  • Klarquist Sparkman is searching for patent associates or patent agents to work in their Portland office. [Link]
  • Ambature is seeking patent attorneys/patent agents. [Link]

Upcoming Events:

  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28th in New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

BPAI's Backlog

  • Currently the BPAI receives about 1,200 new cases every month, but only decides around 600 cases per month. As shown in the graph below the BPAI's backlog has been increasing exponentially since 2005. In 2005, the BPAI had a backlog of only 882 cases; however, currently the backlog is well over 20,000 cases. The average time for a case to work its way through the system is over 30 months. There are many reasons that can be contributed to the BPAI's backlog, but the 3 most important reasons are:
    • The increase in the amount of cases filed per month. In 2005, the BPAI only received about 220 new cases per month; however, in 2011, this number was well over 1,000.
    • The increase in the amount of patent applications filed per year. In 2005, the PTO received 390,000 new utility patent applications; however in 2010 the PTO received 490,000 new applications. Numbers for 2011 are not available, but it can be presumed to be about 500,000 new applications.
    • The amount of money the PTO has to hire new judges. A BPAI judge salary is over $150,000 per year, and to effectively handle the caseload the BPAI would need to more than double the amount of judges that they currently have. To hire about 90 more judges, it would cost the PTO over 13.5 million dollars.

BPAI Statistics

Schmirler v. Kappos: This case seems to raise some interesting issues about joint inventors (liability and rights) and patent fees.

  • In Schmirler, full issue fee was paid by one of three inventors on his AMEX card. Power of attorney (POA) was transferred by all three inventors to a law firm to wrap up prosecution and POA by its terms was to cease when attorney received issued patent. There is some evidence that, after the POA was transferred, one of the inventors requested a refund from AMEX, not the USPTO. About 2 weeks after the patent issued, AMEX executed a chargeback to take the issue fee back from the PTO. The PTO did not discover the fee discrepancy until 3 years later, and when they did discover it they sent out a letter regarding the fee discrepancy. The PTO did not receive any response, so in January 2005 the patent was vacated. The case focuses on essentially one question; should Schmirler be allowed to proceed on his own to protect his patent rights that were vacated by the PTO? Complaint Schmirler-MSJ-Memo PTO-MSJ-Memo Schmirler-Response PTO-Response

The Smithsonian and USPTO collaborate on an exhibition

  • The exhibition The Great American Hall of Wonders examines the nineteenth-century American belief that the people of the United States shared a special genius for innovation. It explores this belief through works of art, mechanical inventions, and scientific discoveries, and captures the excitement of citizens who defined their nation as a "Great Experiment" sustained by the inventive energies of Americans in every walk of life. The exhibition opened on July 15, 2011 and will close on January 8, 2012. [Link]

Patent Jobs:

  • Snyder, Clark, Lesch & Chung is seeking a patent attorney with at least 2 years of experience to work in their Herndon, Virginia office. [Link]
  • BASF is seeking an IP Counsel to work at their Florham Park, New Jersey location. [Link]
  • Klarquist Sparkman is searching for patent associates or patent agents to work in their Portland office. [Link]
  • Ambature is seeking patent attorneys/patent agents. [Link]

Upcoming Events:

  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28th in New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

BPAI's Backlog

  • Currently the BPAI receives about 1,200 new cases every month, but only decides around 600 cases per month. As shown in the graph below the BPAI's backlog has been increasing exponentially since 2005. In 2005, the BPAI had a backlog of only 882 cases; however, currently the backlog is well over 20,000 cases. The average time for a case to work its way through the system is over 30 months. There are many reasons that can be contributed to the BPAI's backlog, but the 3 most important reasons are:
    • The increase in the amount of cases filed per month. In 2005, the BPAI only received about 220 new cases per month; however, in 2011, this number was well over 1,000.
    • The increase in the amount of patent applications filed per year. In 2005, the PTO received 390,000 new utility patent applications; however in 2010 the PTO received 490,000 new applications. Numbers for 2011 are not available, but it can be presumed to be about 500,000 new applications.
    • The amount of money the PTO has to hire new judges. A BPAI judge salary is over $150,000 per year, and to effectively handle the caseload the BPAI would need to more than double the amount of judges that they currently have. To hire about 90 more judges, it would cost the PTO over 13.5 million dollars.

BPAI Statistics

Schmirler v. Kappos: This case seems to raise some interesting issues about joint inventors (liability and rights) and patent fees.

  • In Schmirler, full issue fee was paid by one of three inventors on his AMEX card. Power of attorney (POA) was transferred by all three inventors to a law firm to wrap up prosecution and POA by its terms was to cease when attorney received issued patent. There is some evidence that, after the POA was transferred, one of the inventors requested a refund from AMEX, not the USPTO. About 2 weeks after the patent issued, AMEX executed a chargeback to take the issue fee back from the PTO. The PTO did not discover the fee discrepancy until 3 years later, and when they did discover it they sent out a letter regarding the fee discrepancy. The PTO did not receive any response, so in January 2005 the patent was vacated. The case focuses on essentially one question; should Schmirler be allowed to proceed on his own to protect his patent rights that were vacated by the PTO? Complaint Schmirler-MSJ-Memo PTO-MSJ-Memo Schmirler-Response PTO-Response

The Smithsonian and USPTO collaborate on an exhibition

  • The exhibition The Great American Hall of Wonders examines the nineteenth-century American belief that the people of the United States shared a special genius for innovation. It explores this belief through works of art, mechanical inventions, and scientific discoveries, and captures the excitement of citizens who defined their nation as a "Great Experiment" sustained by the inventive energies of Americans in every walk of life. The exhibition opened on July 15, 2011 and will close on January 8, 2012. [Link]

Patent Jobs:

  • Snyder, Clark, Lesch & Chung is seeking a patent attorney with at least 2 years of experience to work in their Herndon, Virginia office. [Link]
  • BASF is seeking an IP Counsel to work at their Florham Park, New Jersey location. [Link]
  • Klarquist Sparkman is searching for patent associates or patent agents to work in their Portland office. [Link]
  • Ambature is seeking patent attorneys/patent agents. [Link]

Upcoming Events:

  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28th in New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Recent Patent Law Scholarship

Patent, , ,

By Jason Rantanen

Several interesting new articles are currently making the rounds.  Two particularly noteworthy ones are summarized below:

James Bessen, A Generation of Software Patents
Do patents benefit software firms? James Bessen examines this issue through both a survey of existing literature and a new empirical study.  Bessen finds that although the number of software-related patents has grown rapidly over the past decade, the share of those patents obtained by software firms has remained relatively small, and is largely accounted for by the activity of a small number of large software firms.  In other words, most software patents go to firms outside the software industry.  Bessen also provides data that brings into question the value of patents to startup software firms and examines changes in the probability that a software patent will be involved in litigation during the first four years of its patent life.

The complete article is available via ssrn here.

Mark Lemley, The Myth of the Sole Inventor
In his most recent major article, Mark Lemley challenges the canonical story of the lone genius inventor while proposing a novel justification for the patent system.  Professor Lemley first breaks down the idea that invention occurs independantly, created by a handful of extraordinary inventors, through a series of vignettes about famous inventions: the steam engine, steamboats, the cotten gin, and other classic examples of pioneering inventions.  Rather than lone inventors, Lemley argues, history is replete with examples of simultaneous invention, calling into question the traditional incentive justification for the patent system.  Nor do any of the other conventional justifications for the patent system work, Lemley suggests.  What is needed instead is a new theory, which he offers: patents encourage patent racing, which drives innovation to occur faster, and in a more diverse manner, than it otherwise would.

The complete article is available via ssrn here.  Written Description blog offers a more in-depth discussion of the article.

Recent Patent Law Scholarship

Patent, , ,

By Jason Rantanen

Several interesting new articles are currently making the rounds.  Two particularly noteworthy ones are summarized below:

James Bessen, A Generation of Software Patents
Do patents benefit software firms? James Bessen examines this issue through both a survey of existing literature and a new empirical study.  Bessen finds that although the number of software-related patents has grown rapidly over the past decade, the share of those patents obtained by software firms has remained relatively small, and is largely accounted for by the activity of a small number of large software firms.  In other words, most software patents go to firms outside the software industry.  Bessen also provides data that brings into question the value of patents to startup software firms and examines changes in the probability that a software patent will be involved in litigation during the first four years of its patent life.

The complete article is available via ssrn here.

Mark Lemley, The Myth of the Sole Inventor
In his most recent major article, Mark Lemley challenges the canonical story of the lone genius inventor while proposing a novel justification for the patent system.  Professor Lemley first breaks down the idea that invention occurs independantly, created by a handful of extraordinary inventors, through a series of vignettes about famous inventions: the steam engine, steamboats, the cotten gin, and other classic examples of pioneering inventions.  Rather than lone inventors, Lemley argues, history is replete with examples of simultaneous invention, calling into question the traditional incentive justification for the patent system.  Nor do any of the other conventional justifications for the patent system work, Lemley suggests.  What is needed instead is a new theory, which he offers: patents encourage patent racing, which drives innovation to occur faster, and in a more diverse manner, than it otherwise would.

The complete article is available via ssrn here.  Written Description blog offers a more in-depth discussion of the article.

Recent Patent Law Scholarship

Patent, , ,

By Jason Rantanen

Several interesting new articles are currently making the rounds.  Two particularly noteworthy ones are summarized below:

James Bessen, A Generation of Software Patents
Do patents benefit software firms? James Bessen examines this issue through both a survey of existing literature and a new empirical study.  Bessen finds that although the number of software-related patents has grown rapidly over the past decade, the share of those patents obtained by software firms has remained relatively small, and is largely accounted for by the activity of a small number of large software firms.  In other words, most software patents go to firms outside the software industry.  Bessen also provides data that brings into question the value of patents to startup software firms and examines changes in the probability that a software patent will be involved in litigation during the first four years of its patent life.

The complete article is available via ssrn here.

Mark Lemley, The Myth of the Sole Inventor
In his most recent major article, Mark Lemley challenges the canonical story of the lone genius inventor while proposing a novel justification for the patent system.  Professor Lemley first breaks down the idea that invention occurs independantly, created by a handful of extraordinary inventors, through a series of vignettes about famous inventions: the steam engine, steamboats, the cotten gin, and other classic examples of pioneering inventions.  Rather than lone inventors, Lemley argues, history is replete with examples of simultaneous invention, calling into question the traditional incentive justification for the patent system.  Nor do any of the other conventional justifications for the patent system work, Lemley suggests.  What is needed instead is a new theory, which he offers: patents encourage patent racing, which drives innovation to occur faster, and in a more diverse manner, than it otherwise would.

The complete article is available via ssrn here.  Written Description blog offers a more in-depth discussion of the article.

Patent Malpractice Litigation: State versus Federal Jurisdiction

Patent

Magnetek, Inc. v. Kirkland & Ellis, LLP, 2011 Ill. App. LEXIS 708 (Ill. App. 2011)

In 2005, Ole Nilssen and Magnetek settled Nilssen’s infringement lawsuit with an agreement to arbitrate the final award.  The arbitrator awarded $23 million in damages to Nilssen and the parties eventually agreed to an $18 million payment.  During that time, Magnetek was represented by the litigation powerhouse Kirkland & Ellis.  Magnetek later learned that Nilssen had (allegedly) obtained its patents through fraud. At that point, Magnetek obtained new counsel, however, the court refused to set aside the arbitration award — holding that Magnetek “could have discovered evidence of the alleged misconduct at the time of the arbitration, but failed to do so.” (In the background, Nilssen’s patents were eventually held unenforceable in a separate case involving a different defendant).

Magnetek’s malpractice suit against Kirkland & Ellis is based upon the alleged facts that the law firm advised Magnetek to enter into the settlement agreement to arbitrate the dispute and to forego further discovery (that would have likely uncovered problems with the patent). 

After a briefing and oral arguments, the state court dismissed the case – holding that the substantive overlapping patent law issues require that the case be heard in Federal Court. 

On appeal, the state appellate court reversed — finding that the case did not “arise under” federal patent law and therefore should be heard in state court.

Legal Background: In a 2005 dispute over a tax seizure & subsequent claim to quiet title, the U.S. Supreme Court ruled that federal-question jurisdiction over state law claims require both (1) the presence of a disputed and substantial federal issue; and (2) abidance with “congressional judgment about the sound division of labor between state and federal courts governing the application of [federal-question jurisdiction].” Grable & Sons Metal Products, Inc. v. Darue Engineering & Manufacturing, 545 U.S. 308 (2005). Appling Grable in the patent law situation, the court wrote that

[T]he jurisdictional question then becomes whether, based on the well-pleaded complaint, the state-law claim necessarily raises a stated federal patent law issue, actually disputed and substantial, which the federal courts may entertain without disturbing any congressionally approved balance of federal and state judicial responsibilities.”

In considering Magnetek’s complaint, the court recognized that Magnetek’s successful malpractice claim would require proof that – absent the alleged malpractice – it would have proved Nilssen’s patents unenforceable. However, because the patent has already been held unenforceable in a separate case, that issue is no longer “disputed” and therefore does not give rise to federal jurisdiction.

Consequently, as the Federal Circuit discussed in Laboratory Corp. of America Holdings, the issue of the unenforceability … “has been resolved and is no longer disputed.” While a finding of legal malpractice would depend on the unenforceability of the ‘409 patent, the circuit court would not have to conduct an independent analysis of unenforceability because the district court established, and the Federal Circuit affirmed, the merits of that claim and neither party contests those decisions. Therefore, there is no “disputed” federal patent issue raised by Magnetek’s legal malpractice complaint that would give rise to federal jurisdiction.

For these reasons, this case is distinguishable from Air Measurement, Immunocept, and Premier Networks, on which both parties rely to support their respective arguments. In each of those cases, the plaintiffs in the legal malpractice case were also the plaintiffs in the underlying lawsuits. In each of those underlying suits, whether for patent infringement or negligent claims drafting, the plaintiffs lost on the merits of their claims. To prove that they would have been successful in the underlying lawsuits, the plaintiffs would have to prove that their patents were infringed to satisfy the proximate cause element, which their former attorneys did not concede in the malpractice cases. Additionally, in Immunocept, the plaintiff would have to prove that its patent would have been issued with a broader claim scope before proving infringement. Thus, unlike the present case, those plaintiffs were asking a state court to retry the infringement case and evaluate the effect of the evidence they claim would have changed the outcomes, without the benefit of a separate and final determination on the merits of those claims.

The malpractice action is now remanded to the Cook County trial court.  

The Future of Expectancy Interests in Patent Rights

Patent

Justice Breyer’s dissent in Stanford v. Roche focused (in part) on what he suspected was an error in the Federal Circuit’s rule distinguishing a promise to transfer from an automatic future-transfer agreement.  Justice Breyer considers a pre-invention contract as creating equitable title in the invention and that, at least historically, courts did not automatically transfer of legal title to patent rights.  Breyer’s dissent has created a large amount of uncertainty in whether the Federal Circuit’s rule of enforcing automatic transfer agreements will remain in force.

The language of automatic future transfer agreements is certainly strained and requires some disconnect from reality.  Typically, when joining a company a new employee will “hereby assign” all rights to future inventions.  Of course, at that point the new employee has no future inventions and no rights to assign.  However, when the language is written correctly, the Federal Circuit rule operates so that rights to any future invention automatically transfers to the employer at the point of invention.  (Query later how to conceptualize the “point of invention).  In many other areas of property law, this type of futures contract would not result in an automatic transfer of property rights but instead only an equitable expectancy interest and contract damages if rights were not delivered.  Copyright has a special statutory provision for works-made-for-hire that handle this situation by automatically vesting rights in the employer.

In an interesting first-response to Stanford v. Roche, Professor Hagelin (Syracuse) argues that the language of the Patent Act requires that transfer of legal title in patent right can only take place after the patent application has been filed — and therefore that the Federal Circuit rule is wrong.

Hagelin writes:

Section 261 of the Patent Act prescribes how legal title to patents and patent application may be transferred. Section 261 states: “Applications for patents, patents, or any interest therein, shall be assignable in law by an instrument in writing.” Clearly, the Patent Act contemplates that a transfer of legal title to patents and patent applications can only be accomplished after the patent has issued or the patent application has been filed. The phrase “any interest therein” in Section 261 does not alter the Patent Act’s basic requirement that legal title to patents and patent applications can only be transferred after a patent has issued or a patent application has been filed. The phrase “any interest therein” refers directly to patent applications and issued patents and covers situations in which submitters may be joint inventors or multiple assignees.

. . . .

It would seem, therefore, that the Federal Circuit’s notion of an expectant interest transforming into a legal title by operation of law, without any further act on the part of the transferor, is a fiction which flies in the face of legal and practical realities. The only way legal title in an invention can be transferred from an inventor to another party is through a written document executed after a patent has issued, or after, or concurrently with, the filing of a patent application. It does not matter whether the employee-inventor has signed an employment agreement in which he or she has agreed to presently assign patent rights in future inventions. Legal title cannot pass to the employer until an assignment document is executed after a patent has issued or a patent application has been filed, and the assignment document is recorded with the PTO.

Hagelin’s notion that title cannot transfer without recording the transfer is wrong.   However, there is merit to the general point made by both Breyer and Hagelin — that the Federal Circuit automatic transfer rule has problems.

Court Continues to Struggle with Claim Construction

Patent, , , , ,

PatentLawImage139Retractable Technologies v. Becton, Dickinson and Company (BD) (Fed. Cir. 2011)

In 2010, Judge Folsom of the Eastern District of Texas confirmed the jury finding that BD was liable for infringing three of RTI’s retractable syringe patents and that BD’s invalidity arguments were not convincing. On appeal a two-member majority (Judges Lourie and Plager) reversed-in-part — finding that the district court had erred in its construing of the term “body” too broadly by not limiting the term to a “one piece body.” The majority opinion was written by Judge Lourie. Judge Plager filed a concurring opinion asking courts to focus on the “actual invention” when construing claims. Chief Judge Rader wrote in dissent that the majority’s construction improperly imported limitations from the specification into the claims.

I begin with Judge Plager’s minority view of focusing attention on the actual invention (rather than solely on the written claim language) that has been a recent topic for discussion in the legal academy. 

Plager writes:  

However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats, the claims cannot go beyond the actual invention that entitles the inventor to a patent. For that we look to the written description. I have written elsewhere about the curse of indefinite and ambiguous claims, divorced from the written description, that we regularly are asked to construe, and the need for more stringent rules to control the curse.

I understand how a perfectly competent trial judge can be persuaded by the siren song of litigation counsel to give the jury wide scope regarding what is claimed. But it is a song to which courts should turn a deaf ear if patents are to serve the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more.

Although the written description and enablement requirements are intended to ensure that the claim scope is commensurate with the disclosure, Plager’s approach has some merit as a mechanism for allowing courts to adjust patent scope based on disclosure problems rather than the binary valid/invalid choice available under Section 112 p1 defenses.

The Majority Claim Construction: The meaning of a patent claim is considered a question of law that is reviewed de novo on appeal.  That is, on appeal, no deference is to be given to the lower court’s opinion.  In the 2005 en banc decision of Phillips v. AWH, 415 F.3d 1303, the Federal Circuit wrote that claim meaning should be determined by looking at the words of the claims themselves; the patent specification; the prosecution history; and any relevant extrinsic evidence.  Phillips changed the law of claim construction by requiring that clams always be construed “in view of the written description.”

One-Piece Body: The claimed syringe includes a limitation to “a hollow syringe body comprising a barrel and having a front end portion and a back end portion, the back end portion further comprising at least one radially extending member providing finger grips for the syringe body.”  The district court looked primarily to the claim language in ruling that the claimed “body” is not limited to a one-piece structure (except for dependent claim 25 that did explicitly limit the body to “one piece”).

Claim Differentiation: On appeal, the Federal Circuit first addressed the claim differentiation argument and found a weak implication that a claimed “body” should be broader than a claimed “one piece body.”  

While the patents contain an independent claim that recites a “body,” with a dependent claim that limits the “body” to a “one-piece body,” none of the claims expressly recite a body that contains multiple pieces. Thus, while the claims can be read to imply that a “body” is not limited to a one-piece structure, that implication is not a strong one.

The decision suggests that the claim differentiation would have been a much stronger argument if a separate dependant claim had been limited to “a multiple-piece body” or “a non-one-piece body.”

Specification: In several decisions, the Federal Circuit has ruled that claim differentiation arguments will be outweighed by a contrary construction “dictated by the written description or prosecution history.”  Here, the court found that the specification’s background section discussing the prior dictated the a narrow construction. In particular, the background section of one of the asserted patents included the following line:

The prior art has not recognized that such a structure can be molded as a one piece outer body

And, the Summary of the Invention stated that the invented syringe “features a one piece hollow outer body.”  The specification discusses several embodiments of a one piece body and never discloses a body that consists of anything other than a one-piece body (except in disparaging the prior art).

In considering these competing arguments, the court noted that there is a very “fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims.”  Here, the court ruled the one piece body is necessary “to tether the claims to what the specifications indicate the inventor actually invented.”  

Chief Judge Rader’s dissent evokes the pre-Phillips notion that a patent claim can often be read in a vacuum unless scope is disclaimed during prosecution or terms specially defined in the specification.

He writes:

[Under Phillips] Claim language is to be given its ordinary and customary meaning, as understood by a person of ordinary skill in the art at the time of the invention. In this case, neither party contends that “body” has a special, technical meaning in the field of art, and thus claim construction requires “little more than the application of the widely accepted meaning of commonly understood words.” (quoting Phillips). The ordinary and customary meaning of “body” does not inherently contain a one-piece structural limitation. Moreover, neither the claim language nor the written description evinces intent by the patentee to limit the scope of “body” to one-piece bodies.

. . .

Certainly, the claims do not stand alone and must be read in light of the specifications. Nothing in the specifications, however, rebuts the strong presumption created by the claim language that “body” does not contain a one-piece structural limitation. The specifications do not reveal a special definition given by the inventor to the word “body.” Nor do the specifications contain an intentional disclaimer or disavowal of claim scope by the inventor.

This opinion serves as evidence that the court continues to struggle with claim construction and that there continues to be some amount of panel dependence in the results.

Patently-O Bits & Bytes by Lawrence Higgins

Patent

District Courts Selected for Patent Pilot Program

  • Fourteen federal district courts have been selected to participate in a 10-year pilot project designed to enhance expertise in patent cases. To be eligible to participate, courts had to be among the 15 district courts in which the largest number of patent and plant variety protections cases were filed in 2010. Some of the selected courts are the; Eastern District of Texas, Northern District of Texas, Southern District of California, and Southern District of California. Among the courts selected, the Eastern District of Texas has seen the most patent litigation in recent years. Will this patent program cause a shift in the amount of cases that the Eastern District of Texas (or any of the courts selected) receives or will they continue to receive a high number of patent cases? [Link]

Group of 6 Buys Over 6,000 Patents

  • The winning bid for the Nortel patents was a staggering $4.5 billion dollars, roughly equal to $750,000 dollars per patent. The 6 companies that came together to outbid Google and others were; Apple, EMC, Ericsson, Microsoft, RIM and Sony. John Amster the CEO of RPX, a company who participated in the auction, stated that “a number of… companies clearly wanted to both own the patents themselves and keep them away from Google.” While none of the winning companies have reported exactly why they wanted the patents and what they plan to do with the patents, presumptions can be made. For example, it can be presumed that Apple and RIM wanted the patents to try to keep Google out of the mobile communications market. Also, it can be presumed that the 6 companies wanted the patents for the same reason Google wanted the patents, which was for a means to stay out of patent infringement lawsuits. [Link]

IP Podcast and Suffolk Law!

  • Professor Andrew Beckerman-Rodau and Ian Menchini of Suffolk Law School produce a series of IP Law podcast. These podcast are available for free on ITunesU. The podcasts are downloaded approximately 1,000 times weekly and discuss many interesting IP topics. [Link] If anyone is interested in doing a podcast, they should contact Ian Menchini by email. (imenchin@suffolk.edu) Also, the Suffolk Law School has an IP Concentration for law students and a Patent law specialization for law students who may be interested in practicing IP law. [Link]

Patent Jobs:

  • Grimes & Battersby is seeking senior IP attorneys with experience in IP litigation, prosecution and licensing. [Link]
  • Edell, Shapiro & Finnan is searching for associates with backgrounds in electrical engineering and mechanical engineering, to work in their Rockville, Maryland office. [Link]
  • An Orange County based IP firm seeks to fill 2 positions. One is a part time litigator and the other is a full time litigator/prosecutor. [Link]
  • Fenwick & West is looking for a patent litigation associate with 2-4 years of patent litigation and a Ph.D. in a life science discipline. [Link]

Upcoming Events:

  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28th in New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]

  • American Conference Institute’s Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as “One of the few programs geared to experienced in-house IP Counsel”, the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

District Courts Selected for Patent Pilot Program

  • Fourteen federal district courts have been selected to participate in a 10-year pilot project designed to enhance expertise in patent cases. To be eligible to participate, courts had to be among the 15 district courts in which the largest number of patent and plant variety protections cases were filed in 2010. Some of the selected courts are the; Eastern District of Texas, Northern District of Texas, Southern District of California, and Southern District of California. Among the courts selected, the Eastern District of Texas has seen the most patent litigation in recent years. Will this patent program cause a shift in the amount of cases that the Eastern District of Texas (or any of the courts selected) receives or will they continue to receive a high number of patent cases? [Link]

Group of 6 Buys Over 6,000 Patents

  • The winning bid for the Nortel patents was a staggering $4.5 billion dollars, roughly equal to $750,000 dollars per patent. The 6 companies that came together to outbid Google and others were; Apple, EMC, Ericsson, Microsoft, RIM and Sony. John Amster the CEO of RPX, a company who participated in the auction, stated that “a number of… companies clearly wanted to both own the patents themselves and keep them away from Google.” While none of the winning companies have reported exactly why they wanted the patents and what they plan to do with the patents, presumptions can be made. For example, it can be presumed that Apple and RIM wanted the patents to try to keep Google out of the mobile communications market. Also, it can be presumed that the 6 companies wanted the patents for the same reason Google wanted the patents, which was for a means to stay out of patent infringement lawsuits. [Link]

IP Podcast and Suffolk Law!

  • Professor Andrew Beckerman-Rodau and Ian Menchini of Suffolk Law School produce a series of IP Law podcast. These podcast are available for free on ITunesU. The podcasts are downloaded approximately 1,000 times weekly and discuss many interesting IP topics. [Link] If anyone is interested in doing a podcast, they should contact Ian Menchini by email. (imenchin@suffolk.edu) Also, the Suffolk Law School has an IP Concentration for law students and a Patent law specialization for law students who may be interested in practicing IP law. [Link]

Patent Jobs:

  • Grimes & Battersby is seeking senior IP attorneys with experience in IP litigation, prosecution and licensing. [Link]
  • Edell, Shapiro & Finnan is searching for associates with backgrounds in electrical engineering and mechanical engineering, to work in their Rockville, Maryland office. [Link]
  • An Orange County based IP firm seeks to fill 2 positions. One is a part time litigator and the other is a full time litigator/prosecutor. [Link]
  • Fenwick & West is looking for a patent litigation associate with 2-4 years of patent litigation and a Ph.D. in a life science discipline. [Link]

Upcoming Events:

  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28th in New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]

  • American Conference Institute’s Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as “One of the few programs geared to experienced in-house IP Counsel”, the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

District Courts Selected for Patent Pilot Program

  • Fourteen federal district courts have been selected to participate in a 10-year pilot project designed to enhance expertise in patent cases. To be eligible to participate, courts had to be among the 15 district courts in which the largest number of patent and plant variety protections cases were filed in 2010. Some of the selected courts are the; Eastern District of Texas, Northern District of Texas, Southern District of California, and Southern District of California. Among the courts selected, the Eastern District of Texas has seen the most patent litigation in recent years. Will this patent program cause a shift in the amount of cases that the Eastern District of Texas (or any of the courts selected) receives or will they continue to receive a high number of patent cases? [Link]

Group of 6 Buys Over 6,000 Patents

  • The winning bid for the Nortel patents was a staggering $4.5 billion dollars, roughly equal to $750,000 dollars per patent. The 6 companies that came together to outbid Google and others were; Apple, EMC, Ericsson, Microsoft, RIM and Sony. John Amster the CEO of RPX, a company who participated in the auction, stated that “a number of… companies clearly wanted to both own the patents themselves and keep them away from Google.” While none of the winning companies have reported exactly why they wanted the patents and what they plan to do with the patents, presumptions can be made. For example, it can be presumed that Apple and RIM wanted the patents to try to keep Google out of the mobile communications market. Also, it can be presumed that the 6 companies wanted the patents for the same reason Google wanted the patents, which was for a means to stay out of patent infringement lawsuits. [Link]

IP Podcast and Suffolk Law!

  • Professor Andrew Beckerman-Rodau and Ian Menchini of Suffolk Law School produce a series of IP Law podcast. These podcast are available for free on ITunesU. The podcasts are downloaded approximately 1,000 times weekly and discuss many interesting IP topics. [Link] If anyone is interested in doing a podcast, they should contact Ian Menchini by email. (imenchin@suffolk.edu) Also, the Suffolk Law School has an IP Concentration for law students and a Patent law specialization for law students who may be interested in practicing IP law. [Link]

Patent Jobs:

  • Grimes & Battersby is seeking senior IP attorneys with experience in IP litigation, prosecution and licensing. [Link]
  • Edell, Shapiro & Finnan is searching for associates with backgrounds in electrical engineering and mechanical engineering, to work in their Rockville, Maryland office. [Link]
  • An Orange County based IP firm seeks to fill 2 positions. One is a part time litigator and the other is a full time litigator/prosecutor. [Link]
  • Fenwick & West is looking for a patent litigation associate with 2-4 years of patent litigation and a Ph.D. in a life science discipline. [Link]

Upcoming Events:

  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28th in New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]

  • American Conference Institute’s Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as “One of the few programs geared to experienced in-house IP Counsel”, the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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