Patent Litigation Forum Shopping

Patent

Professor Mark Lemley has released a draft of his new study on patent forum shopping titled “Where to File Your Patent Case.” Professor Lemley suggests three primary factors that influence a patentees choice of forum: (1) likelihood of winning; (2) likelihood of getting to trial; and (3) speed of getting to trial. Professor Lemley used the Stanford IP Litigation Clearinghouse database to classify these factors for 25 most-active district courts. (http://ssrn.com/abstract=1597919).

Win Rate: “The variation in win rates ranges from a high of 55% in the Northern District of Texas to a low of 11.5% in the Northern District of Georgia.” Interestingly, Lemley finds that “the Eastern District of Texas, while it has a higher than average plaintiff win rate, is not in the top five districts. And the districts that are in the top five (the Northern District of Texas, the Middle District of Florida, the District of Nevada, the District of Delaware, and the District of Oregon) are not normally thought of as plaintiff patent jurisdictions of choice. Indeed, accused infringers often choose the District of Delaware, filing declaratory judgment actions there. Conversely, patent plaintiffs often file suit in districts like the District of New Jersey that have a surprisingly low win rate.”

Best Venues: When you add-in speed and likelihood of trial, Lemley argues that the best districts include the Middle District of Florida, District of Delaware, Eastern District of Virginia, and the Western District of Wisconsin. The best districts for accused infringers include Eastern District of Wisconsin, the Southern District of Ohio, or the District of Columbia because patent cases in those districts move slowly and more-frequently end with summary judgment in favor of the accused infringer.

Caveats: Prof Lemley hints at a few caveats to his study. Namely, the win-rate in the Eastern District of Texas might be lower than Delaware because of the cases filed there. I.e., patentees with low-quality patents might be more likely to flock to Texas rather than Delaware. 

Read the Paper: http://ssrn.com/abstract=1597919

Note: The data provided here by Prof Lemley is similar to that used by patentees when deciding where to file and in arguing change-of-venue motions.  It is unlikely that the parties are making ignorant choices.  Rather, patentees are deliberately filing cases in the Eastern District of Texas despite these statistics.  The next step in this analysis is to query why?

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The heat-map above shows patent litigation filings for the past year and was provided by the Stanford IP Litigation Clearinghouse.

Patent Pendency: Reconsidering Expedited Examination

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On September 19, 2009, Oleg Zaitsev filed his patent application directed to a computer-hardware implemented anti-virus system.  Zaitsev included a petition for accelerated examination along with pre-examination search results and an examination support document explaining the validity of the drafted claims.

In a December 10, 2009 telephonic interview, the applicant (through his attorney) agreed to add an additional limitation into the independent claims via examiner amendment. On December 17, 2009, the examiner from Art Unit 3685 issued a notice of allowance. The patent then issued February 2, 2010.

The less-than-three-month notice of allowance is especially important since patent applications from AU 3685 have an average pre-issuance pendency of over 5.5 years.

See Patent No. 7,657,941.

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The 2010 patent with the earliest application date is No. 7,673,565.  That application was filed in 1977 and is directed toward infra-red proximity fuzes for missiles. The US Department of Defense had stalled the processing of the application through a secrecy order.

===

The 66,000 patents issued Jan 10, 2010 – April 27, 2010 had an average prosecution pendency of 3.8 years from filing or 4.8 years from the earliest US priority date. For applications with at least one non-provisional US parent application, the average pendency was 7.0 yeasr from the earliest US priority date.

How Long Do I Wait for a First Office Action

Patent

Based on the USPTO’s most recent numbers on examination, I created an updated table of the average delay until a first office action is mailed from the PTO. These numbers reflect an average for each technology center as it operates today. The 3.25 year delay in Electronic Commerce (TC 3620) means that the applications receiving first office actions during the past three months had been pending for 3.25 years ago on average — taking us back to applications filed around new-years 2007. One-year-ago, the delay for TC 3620 was 3.9 years from filing to FAOM. The numbers do not necessarily reflect how long it would take for an application filed today to make it through. (Although it is perhaps one of the better estimates that we have on hand.).

Tech Center

Area of Technology

Average Years Delay Before First Action on the Merits

2900

Designs

1.13

1660

Plants

1.40

1640

Immunology receptor ligands

1.95

3670

Wells earth boring

1.96

3610

Surface transportation

2.12

1620

Organic chemistry

2.17

3640

Aeronautics

2.19

1650

Fermentation microbiology

2.21

1630

Molecular biology

2.25

3630

Static structures

2.25

3720

Manufacturing devices

2.25

3760

Body treatment

2.41

3650

Material handling and

2.43

2180

Computer architecture

2.49

3660

Computerized vehicle

2.49

2160

Database and file management

2.55

2110

Computer architecture

2.56

3710

Amusement and

2.60

3740

Thermal and combustion

2.65

3750

Fluid handling and

2.68

1610

Pharmaceutical formulations

2.72

2120

Miscellaneous computer

2.76

3730

Bio and Organic

2.79

3780

Bio and Organic

2.79

3770

Respirators Therapeutic

2.83

2610

Digital Communications General

3.06

2620

Television and TV Recording

3.12

3620

Electronic Commerce

3.25

2190

Interprocess communications

3.98

USPTO News: Patent Grants up 35% over 2009

Patent

In 2009, the United States Patent & Trademark Office (USPTO) issued 167,349 utility patents at an average rate of 3,218 per week. Since then, the PTO has significantly picked-up-the-pace.  The chart below shows the average number of patents issued per week for January-April 2010.  In April 2010, the USPTO issued an average of 4385 patents per week. The April figure represents a more-than 35% increase from the 2009 weekly average. If the April 2010 figures hold for the rest of 2010, we should expect about 220,000 issued utility patents for the year. That 50,000 year-to-year increase in patent grants for 2010 would represent the largest single-year jump in history.

PatentlyO044

Update on Patent Pendency

Patent

The following table looks at the number of years-in-prosecution for utility patents issued on April 27, 2010. I divided the issued patents into four groups depending whether the patent claims priority to either a foreign application or a US non-provisional. The table reports the average pendency for each group as well as the relative number of patents in the group.   

Average Pendency of Utility Patents Issued April 27, 2010 (Filing Date to Issue Date, Not Including Priority Claims)

Claim Priority to Foreign Application

Yes

No

Claim Priority to US Non-Provisional Application

Yes

2.8 years (6% of Patents)

3.2 years (15% of Patents)

No

4.1 years (33% of Patents)

4.1 years (45% of Patents)

I used the same patent application pendency data to create the cumulative frequency chart below. As can be seen, the median pendency is a bit under four years. 90% of patents issue within six years. pic-95.jpg

False Marking Fine Set at Point Above Gross Revenue

Patent,

Forest Group v. Bon Tool (S.D. Tex 2010)

In a 2009 decision, the Federal Circuit remanded the Bon Tool case with instructions to the district court to recalculate the false marking fine owed to the defendant-counter-claimant.  In particular, the Federal Circuit held that each falsely marked article represented a separate and distinct act of false marking, each subject to a fine of up to $500.

On remand, Judge Atlas of the Southern District of Texas determined that the false-marking fine should at least recapture all of the revenue generated from the sale Forest’s falsely-marked products.  Here, Forest had sold falsely marked stilts “at prices between $103.00 and $180.00.”  The court then set the false-marking fine at the highest price-point of $180 per article.  Because only 38 pair of falsely marked stilts were sold, the total fine was relatively small — less than $7,000. Half of the fine will be given to the US Government and half collected by Bon Tool.

The Court finds that the appropriate fine in this case is $180.00 per article, the highest point of the price range. This will deprive Forest of more than it received for the falsely-marked stilts, fulfilling the deterrent goal of § 292’s fine provision. Based on the $180.00 per article fine for the 38 falsely-marked stilts of which there was evidence at trial, the Court imposes against Forest a fine of $6,840.00 pursuant to § 292.

Judge Atlas based her decision on the Federal Circuit’s three stated policy goals of: discouraging mis-marking; encouraging enforcement; and avoiding “disproportionately large penalties.”  Bon Tool had asked for the maximum $500 per offense.  Forest argued that the fine should be limited to its profits on the falsely-marked products of $2,400.

The Impact of Wyeth on Patent Terms

Patent

In January 2010, the Federal Circuit held that the Patent Office had been undercalculating the patent term adjustments (PTA) owed to patentees because of USPTO delays during prosecution. About 80% of issued patents receive some term adjustment. The Wyeth case did not directly impact the calculation of which cases receive an adjustment, rather the decision operates to lengthen the adjustment for those already eligible.

In order to measure the impact of the change in calculation, I compared the calculated patent term adjustment for two sets of recently issued utility patents. The first set comes from January 5, 2010 (before the Wyeth decision) and the second set comes from April 27, 2010 (after the Wyeth decision). For each set, I used all utility patents issued on the given date.

The chart below shows that the change has been substantial. The average PTA grant has increased by six-months — jumping from 14–months to 20–months. (Note — these averages only include patents with an adjustment). One patent in the April 2010 group was adjusted more than eight years and over 500 patents had term-adjustments of more than three years.

These days, any discussion of the US 20–year patent term must consider real impact of these adjustments.

PatentLawPic982

Therasense v. Becton Dickinson: Federal Cicuit Grants En Banc Request to Rethink the Law of Inequitable Conduct

Patent,

Therasense Inc. (now Abbott) v. Becton, Dickinson and Co. (Fed. Cir. 2010)

The Federal Circuit has granted Abbott’s request for an en banc rehearing on the issue of inequitable conduct.

The rehearing will focus on six questions of law:

  1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?
  2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?
  3. What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?
  4. Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).
  5. Should the balancing inquiry (balancing materiality and intent) be abandoned?
  6. Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.

Abbott’s en banc brief is due in 45 days from today. The response is due within 30 days of service of Abbot’s brief.  Briefs of amici curiae will be entertained and may be filed without leave of court. Under Fed. R. App. Proc. 29, the amicus curiae brief must be filed within 7–days of the filing of the principle brief of the party being supported. If the amicus curiae does not support either party then the brief must be field within 7–days of the petitioner’s principal brief.

En Banc Order

Comment: The correct answers to these questions depend upon the purposes of the inequitable conduct doctrine. Namely, is the doctrine intended to the behavior of patent prosecutors is is it intended to catch perpetrators. The major empirical issue is that the doctrine pushes patent prosecutors to over-compensate in ways that potentially harm the system and certainly raise the costs of patent protection.

Design Patents: Eliminating the Ornamental/Functional Dichotomy

Patent, ,

PatentlyO042Richardson v. Stanley Works, Inc. (on petition for en banc rehearing at the Federal Circuit, 2010)

In its March 9, 2010 decision, the Federal Circuit held that design patent infringement should focus only on ornamental aspects of the patented design. Richardson’s Design Patent No. D. 507167 covers a multi-function carpentry tool (a FUBAR). On appeal, the Federal Circuit affirmed that Arizona district court properly “factored out” functional elements during the claim construction process and that the ornamental features of the patented design (upper right) were not similar-enough to the ornamental features of the Stanley Works FUBAR (lower right). 

PatentlyO043Now, Richardson has petitioned the Federal Circuit for an en banc rehearing based on the argument that the focus on ornamental features creates a “points-of-ornamentation” test that is contrary to Gorham v. White.  The AIPLA and Apple Computers have both filed briefs in support of the rehearing.

In a comical (but serious) diagram, AIPLA shows the results of “factoring out” functional elements of the Richardson design. The AIPLA concludes that the “panel’s approach (which seeks to separate out ornamental and functional elements) conflicts with the tenet that a design patent protects the overall appearance of the claimed design, and is fraught with logistical problems.”

PatentlyO041

Apple argues that the functionality of an individual portion of the design should have “no direct bearing on design patent infringement or validity.”  Rather, the whole focus of design patents is to cover articles of manufacture that are inherently functional.  There is a functionality limitation for design patents, but the Supreme Court has applied that only to the design as a whole and only when the design is “dictated by function alone.”

Notes:

Difficulties Collecting Royalties

Patent

In the recent case of ClearPlay v. Max Abecassis and Nissim Corp (Fed. Cir. 2010), the patent holder (Nissim) struggled to collect its royalty payments even after the parties signed an agreement that settled their patent infringement dispute.

Nissim’s situation is not unusual. A recent report by the Invotex found that 86% of licensees underpay royalties. Most of the under-payment comes from (1) questionable license interpretations and (2) unreported sales of covered goods & services.

Although the report may be somewhat biased (Invotex makes its money by finding non-compliance) it does make clear patentees should plan to work as hard collecting royalties as they did winning the infringement lawsuit. This type of study may also be helpful for patentees seeking injunctive relief — especially if they can show that the defendant-in-question has underpaid royalties in the past.

Read the Report

Intangible Economy Blog

Patently-O Bits and Bytes

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Patently-O Bits and Bytes

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Department of Commerce Reports that PTO Fee-Setting-Authority and Improved Post-Grant Patent Challenge Lead to Economic Growth

Patent, ,

Doc-largeThe Department of Commerce has released a white-paper discussing the economic value of innovation and coupling that value to the need for reform of the US Patent Laws.  The report focuses on (1) the need for “timely patents” in order to successfully obtain venture capital financing; (2) the need for “high-quality” patents in the area of pharmaceuticals; and (3) the negative effects of poor quality patents and uncertainty in enforcement.  These background points are fairly well accepted. 

The more controversial aspect of the report are the Department’s policy conclusions. Namely, the Department of Commerce argues that (1) USPTO Fee setting authority (and what the Office does with that authority) will help to reduce the backlog; and (2) more broadly available and efficient post grant opposition proceedings will help reduce the cost of litigation. Finally, the report notes that the US patent office is “tax-free” in the sense that taxpayer money is not used to administer the office. The ability to avoid appropriations makes PTO reform a politically attractive policy lever.

USPTO fee-setting authority adds flexibility, allows the Office to more quickly raise needed funds, and also allows for the potential of aligning align fees with actual costs.  As an example, the white paper notes that “abandoned” applications pay only about one-third of the total examination costs.  That front-end cost is “subsidized by back-end patent issuance and maintenance fees that are assessed on successful applicants.”  The report states flatly that “With fee-setting authority, the USPTO could deliver on its aggressive goal of reducing to 20 months total average pendency. This anticipated 40% reduction in average pendency would offer greater certainty to innovators of all stripes, allowing for more timely and accurate R&D investments, and thus, substantially improve prospects for improvement in the Nation’s innovative performance and overall economic growth.”

A more efficient post grant review system would benefit the patent system offering a low-cost and quick mechanism to challenge weak patents. “These patents will then be taken out of the system, saving both potential litigation costs and costs to consumers from the exercise of unwarranted market power. . . . Indeed, almost every academic economist who has ever examined whether an enhanced system of post-grant review should be adopted has favored such adoption. . . . [E]nhanced post-grant review also offers advantages to those seeking to assert valid patents. Litigation-related delay in the resolution of validity contributes to uncertainty for technology investors, increasing the likelihood of underinvestment and mistaken investment, and adding transaction costs to technology commercialization.”

The report is titled “Patent Reform: Unleashing Innovation, Promoting Economic Growth & Producing High-Paying Jobs” and is signed by Professors Arti Rai (Chief Administrator of the USPTO’s office of External Affairs), Stuart Graham (Chief Economist of the USPTO), and Mark Doms (Chief Economist of the Department of Commerce).

PatentLawPic977

Patently-O Bits and Bytes

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  • PatentLawPic974In March 2010, I reported on the Myriad case where the district court essentially held that all gene patents are invalid.  Since then the popular press has been pushing-hard on gene patenting stories.  My former boss Kevin Noonan (MBHB) has been the go-to-man for reporters looking for a supporter of genetic patents. Noonan is articulate, opinionated, reasonable, and he looks good on camera.  In its article, the Washington Post spends most of its text discussing the fact that Noonan is the former high-school-sweetheart and ex-husband of Supreme Court Justice Sonia Sotomayor.
  • Watch Kevin Noonan on 60–Minutes
  • Watch Kevin Noonan on the Colbert Report

Patently-O Bits and Bytes

Patent
  • PatentLawPic974In March 2010, I reported on the Myriad case where the district court essentially held that all gene patents are invalid.  Since then the popular press has been pushing-hard on gene patenting stories.  My former boss Kevin Noonan (MBHB) has been the go-to-man for reporters looking for a supporter of genetic patents. Noonan is articulate, opinionated, reasonable, and he looks good on camera.  In its article, the Washington Post spends most of its text discussing the fact that Noonan is the former high-school-sweetheart and ex-husband of Supreme Court Justice Sonia Sotomayor.
  • Watch Kevin Noonan on 60–Minutes
  • Watch Kevin Noonan on the Colbert Report

Supreme Court to Decide Case of International Copyright Exhaustion

Patent,

PatentLawPic972Costco Wholesale Corp. v. Omega, S.A., Docket No. 08-1423 (Supreme Court 2010)

The Supreme Court announced today that it would decide the international copyright exhaustion case of Costco v. Omega. Costco purchased Omega watches from a third-party importer and sold the watch for $1,300 instead of the $2,000 suggested retail price. Omega (a division of Swatch) then sued Costco for copyright infringement – alleging that the sale violated the Swiss Company’s US Copyright covering the “Omega globe design” on the back of the watch. In a 2008 decision, the Ninth Circuit agreed with Omega, holding that the US Copyright was not exhausted because Omega had originally sold the watches to distributors in Egypt and Paraguay. This arbitrage was available because Omega sells its watches for a higher price in the US than it does elsewhere.

The question on appeal is whether Omega’s authorized foreign sale exhausted its US copyright.

Under the Copyright Act’s first-sale doctrine, 17 U.S.C. § 109(a), the owner of any particular copy “lawfully made under this title” may resell that good without the authority of the copyright holder. The closest Supreme Court precedent is Quality King Distribs., Inc. v. L’Anza Research Int’l, Inc., 523 U.S. 135, 138 (1998). In that case, the unanimous court held that the copyright was exhausted and therefore that the copyright holder could not block imports of shampoo bottles with copyrighted labels. The Ninth Circuit distinguished Quality King based on the fact that the labels were originally made in the US then shipped abroad before being re-imported. According to the Ninth Circuit, the Omega watches are not subject to the first sale doctrine because they were not “lawfully made under” the US Copyright Act.

The US Patent Laws are also subject to an exhaustion doctrine – although patent exhaustion is entirely judge-made and not subject to statutory interpretation. In Fuji Photo Film Co. v. ITC, 474 F.3d 1281 (Fed. Cir. 2007), the Federal Circuit held that US patent rights are only exhausted through a first sale “in the United States.” In that case, the Federal Circuit recognized that “a different rule applies in copyright cases.” Of course, the Supreme Court’s copyright decisions often interplay its discussion of the two intellectual property forms.

Patent holders that rely upon the current law to block parallel imports will likely want to file an amicus brief to justify a difference between the two regimes.

Thriving Resale Market: EBay argues that the Omega ruling “could have a detrimental effect on the ability of buyers and sellers of secondary-market goods to engage in commerce in the United States.”

Copyright?: Of course, Omega would be hard-pressed to claim copyright in the watch itself. Rather, the copyright claim is in the arrangement of the 8 mm OMEGA symbol and name.  Although not strictly at issue here, the Supreme Court is not likely to overlook the fact that the copyright claim is an artificial construct that Omega is asserting to control downstream uses of its non-copyrighted watch that it otherwise could not control.

Notes:

Federal Circuit Appellate Jurisdiction over Antitrust Claims

Patent

Ferring B.V. v. Meijer, Inc., on petition for a writ of certiorari to the Supreme Court (2010)

In a controversial decision, the Court of Appeals for the Second Circuit held that a customer (rather than a competitor) has standing to bring a Walker Process monopolization claim based on the enforcement of patent that had been procured through fraud on the USPTO. In re DDAVP Direct Purchaser Antitrust Litigation, 585 F.3d 677 (2nd Cir. 2009). Although the Court of Appeals for the Federal Circuit holds exclusive jurisdiction over all appeals of final judgments in cases that are based “in whole or in part” on US patent law issues, the Second Circuit held that it had jurisdiction in this case because the antitrust claim stated in the complaint could have potentially been sustained without determining a question of patent law (even though the patent fraud issue was clearly the most important claim). The jurisdiction issue seemingly turned on the fact that the plaintiff’s complaint included only one “count” of monopolization that could be proven by several different theories.

Ferring has now filed a petition for Supreme Court review focusing on the issue of appellate jurisdiction.

The question presented is whether the Second Circuit’s new jurisdictional standard conflicts with this Court’s decision in Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988), and with decisions of the Federal Circuit and Seventh Circuit, holding that the Federal Circuit has exclusive jurisdiction in any patent-based case in which patent issues must be resolved in order for plaintiffs to achieve the overall success of their claim and obtain all the damages (or other relief) they seek.

In Christianson, the Supreme Court held that the Federal Circuit holds exclusive jurisdiction over patent cases when the “well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.”

Comment: This case has a strong chance of being granted certiorari. Of course, patentees would generally prefer to have their cases heard by the Federal Circuit. Several trade organizations, including IPO, BIO, and PhRMA, are expected to file briefs in support of the petition.

Documents:

BPAI Remanding Cases Involving Computer-Oriented Means-Plus-Function Claims

Patent

In Ex party Rodriguez, the BPAI rejected a patent applicant’s means-plus-function (MPF) claims as indefinite for failing to provide any corresponding structures in the specification beyond a general purpose computer. That decision followed the Federal Circuit’s Aristocrat holding that “simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to ‘the corresponding structure, material, or acts’ that perform the function, as required by section 112 paragraph 6.”

A patent examiner recently wrote-in to identify the fact that the BPAI has recently remanded dozens of pending appeals in light of Rodriguez. The remands use the following form language:

Claims ___ of the instant application contain functional language that may be indefinite under 35 U.S.C. § 112, second paragraph. See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed Cir. 2008); Ex parte Rodriquez, 92 USPQ2d 1395 (BPAI 2009). On September 2, 2008, the Deputy Commissioner for Patent Examination Policy, John J. Love, issued a memorandum entitled “Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph” . . . Thus, there is a question as to whether claims ___, and the claims which depend upon these claims, meet the requirements of being definite under 35 U.S.C. § 112, second paragraph. . . . Accordingly, it is ORDERED that the application is remanded to the Examiner to determine if claims ___, and the claims which depend upon these claims, meet the requirements of 35 U.S.C. § 112.

See, Ex Parte Chefalas et al, Appeal No. 2009012658, Ex Parte Yamanaka et al, Appeal No. 2009010948, Ex Parte Gassen et al, Appeal No. 2009008147, Ex Parte McCabe, Appeal No. 2009013024, Ex Parte Selep et al, Appeal No. 2009008213, Ex Parte Martin et al, Appeal No. 2009011586, Ex Parte Tosey, Appeal No. 2009007299, Ex Parte Van Doorn, Appeal No. 2009011085, Ex Parte Sohraby et al, Appeal No. 2009012154, Ex Parte Breese et al, Appeal No. 2009008013, Ex Parte Choe et al, Appeal No. 2009010957, Ex Parte Swart et al, Appeal No. 2009011542, Ex Parte Kakinuma et al, Appeal No. 2009007905, Ex Parte Zriny et al, Appeal No. 2010001851, Ex Parte Park, Appeal No. 2010002356, Ex Parte Cherkasova et al, Appeal No. 2010000365, Ex Parte Messick, Appeal No. 2009014361, Ex Parte Levy et al, Appeal No. 2010000512, Ex Parte Gusler et al, Appeal No. 2010000556, Ex Parte Betge-Brezetz et al, Appeal No. 2010001913.

In the Chefalas case, the independent claim in question reads as follows:

48. A data processing system for handling a virus, the data processing system comprising:

receiving means for receiving a notification of a presence of a virus on a client data processing system through a communications link;

severing means for severing communication with the client data processing system through the communications link in response to receiving the notification; and

executing means for executing virus removal processes on the server data processing system.

Interpreting Claims in an Interference: USPTO Rules Now Follow the Law

Patent,

The USPTO has cancelled 37 C.F.R. § 41.200(b). That rule required the BPAI to give claims their “broadest reasonable construction in light of the specification of the patent or application in which it appears” but applied only to interference proceedings.

In interferences, one party typically copies claims from the opposition’s application/patent in order to provoke an interference. The copy is then interpreted to have the same claim scope as the original. In Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009), the Federal Circuit held that Rule 41.200(b) was contrary to this rule of interpretation – thus, the rule was already dead from a legal standpoint.

75 FR 19558