Ranking of Patent Law Programs for 2011: Perhaps Six Junk-Science Ratings Are Better Than One

April 15, 2010PatentDennis Crouch

US News & World Report has released its updated rankings of intellectual property (IP) programs for 2011. The ranking is created by polling a subset of law professors who teach at least one intellectual property law course. The professors then list up to fifteen programs with good IP programs. Those "votes" are then used to create a ranking. Of course, most IP professors are not patent law professors.

Despite problems with the voting procedure, it is clear that every program on this list has an excellent IP program. And, although the list is not a "patent law program" list, all of the listed law schools employ at least one full-time faculty member whose primary teaching and research interest is patent law. Likewise, although you may quibble about individual rankings, there is no question that Berkeley's program deserves to be very highly ranked.

The US News list:

Rank	Law School
1.	University of California–Berkeley
2.	Stanford University
3.	George Washington University
4.	Boston University
5.	New York University
6.	Columbia University
7.	University of Michigan
8.	University of Houston
9.	Duke University
	Franklin Pierce Law Center (Soon to be University of New Hampshire School of Law)

Three schools were dropped from this year's USNews top-ten: Santa Clara University; Yeshiva University (Cardozo), and Chicago-Kent (IIT). These three schools all have strong patent law programs and have recently hired additional new patent-focused faculty members. Other schools with hefty patent-focused programs did not make the list. These include schools like George Mason, John Marshall, Suffolk, William Mitchell, etc. (See curriculum ranking below).

Boston University, Michigan, and Duke were all added to the USNews list this year, although each had previously been on the list at some point during the past decade.

Patently-O Rankings: I have redone my list of "the top thirty law school patent programs" based solely on the number of Patently-O visits received from the associated university in the past year. There are many problems with this "study." In fact, at first glance, I would tend to take this ranking as a complete joke except for the fact that it is probably at least as good as the US News IP Specialty ranking. Perhaps six junk-science ratings are better than one. Some of the problems with my ranking include: Many schools may not use their name in their IP address — making them lose their ranking. This appears to be true of Franklin Pierce Law Center (soon to be University of New Hampshire Law School). Larger schools naturally perform better because the scores are not corrected according to the number of students. Likewise, the measure that I used allows for a few intense users to change the result. Thus, I placed an asterisk beside the University of Missouri because my own visits to Patently-O likely altered the results. Schools where students (and professors) primarily study away from campus building may also rank relatively lower. Finally, many of the visits to Patently-O may come from other departments – such as the Technology Transfer and corporate counsel – rather than the law schools.

Rank	School	Relative Score (Based on Visits from School Domain to Patently-O)
1	George Washington University	100%
2	Columbia University, University of Missouri*	65%
4	Santa Clara University	60%
5	Stanford University	55%
6	University of Texas, University of California Berkeley	45%
8	Duke University, Harvard University, University of Wisconsin-Madison	40%
11	New York University, University of Virginia, Boston University, George Mason University, University of San Diego, Georgetown University, Cornell University	35%
18	Ohio State University, Indiana University (Bloomington), Washington University	30%
21	University of Pittsburgh, John Marshall Law School, University of Minnesota, University of Washington	25%
25	University of Illinois, Northwestern University, Suffolk University, Fordham University, University of Maryland. University of Connecticut, Rutgers University, University of Arkansas	20%

GWU tops this year's list as it did in my 2010 ranking. Overall, the schools in the top-ten have been relatively stable. Richmond fell off the list; Berkeley, Duke, and Wisconsin moved into the top-ten.

To add an additional layer of ranking, remember that almost 20,000 individuals access Patently-O through the free daily e-mail service. The following list ranks law school's according to the number of Patently-O e-mail subscribers. In addition to the biases mentioned above, we may have an additional bias if subscribers from some schools tend to use personal e-mail account (such as gmail) instead of the university account.

Rank	School	Relative Score (Based on the Number of Patently-O E-Mail Subscribers from School Domain)
1.	Franklin Pierce Law Center (University of New Hampshire Law School)	100%
2.	University of Michigan	60%
3.	Harvard University, Stanford University	45%
5.	George Washington University, Columbia University, University of California Berkeley, Chicago Kent Law School	40%
9.	Case Western Reserve University, University of Utah, Washington University, Elon University, Michigan State University	35%
14.	New York Law School, University of Washington, New York University, St. Louis University, University of Chicago, University of Denver, Yale University	25%

Franklin Pierce again tops this list (as it did in 2009). Harvard moved dramatically upward in the ranking.

Reputation Ranking of Patent Law Faculty: Part of the "reputation" of an IP program is based on the scholarship of its faculty. To create a ranking of faculty-member patent-law reputation, I searched for the number of law review citations associated with each IP-professor using the Westlaw JLR database. To ensure that the citations focused on patent-law reputation, the search looked for articles that somehow related to patent law. It takes some time for citations to begin to build-up, so it is not surprising that all of the professors on this list have been teaching for at least ten years.

Citation Rank	Faculty Name		School
1	Mark	Lemley	Stanford University
2	Robert	Merges	University of California, Berkeley
3	Rebecca	Eisenberg	University of Michigan
4	Dan	Burk	University of California, Irvine
5	Edmund	Kitch	University of Virginia
6	Rochelle	Dreyfuss	New York University
7	Paul	Goldstein	Stanford University
8	Pamela	Samuelson	University of California, Berkeley
9	Richard	Posner	University of Chicago
10	John	Duffy	George Washington University
11	Janice	Mueller	University of Pittsburgh
12	Arti	Rai	Duke University
13	Martin	Adelman	George Washington University
14	Julie	Cohen	Georgetown University
15	Maureen	O'Rourke	Boston University
16	A.S.	Oddi	University of Akron
17	Gerald	Mossinghoff	George Washington University
18	Polk	Wagner	University of Pennsylvania
19	Michael	Meurer	Boston University
20	Louis	Kaplow	Harvard University
21	Mark	Janis	Indiana University
22	Lawrence	Lessig	Harvard University
23	William	Landes	University of Chicago
24	James	Bessen	Boston University

If I had included Federal Circuit Judges in this listing, Judges Moore would jump into the top-ten. Likewise, if Donald Chisum was still teaching, he would be the clear #1. Four GWU faculty members are listed in the top-25 and BU have three ranked faculty members. Harvard, Stanford, Berkeley, and Chicago all had two.

IP Law Journal Ranking: Many law schools have created IP-focused law journals. Using data collected by the Washington & Lee Law Library, I created the following ranking of student-edited IP Law Journals. The ranking is based on how often articles published in each journal are cited in other journals or court cases. I only included journals with titles that include the terms "Intellectual property", "patent", or "technology." Thus, the Columbia Journal of Law & the Arts is not included in this list.

Rank	School	Journal	Relative Rank
1	Harvard University	Harvard Journal of Law & Technology	100
2	University of California, Berkeley	Berkeley Technology Law Journal	69
3	University of Michigan	Michigan Telecommunications and Technology Law Review	54.6
4	Fordham University	Fordham Intellectual Property, Media & Entertainment Law Journal	39.5
5	Stanford University	Stanford Technology Law Review	37.7
6	Santa Clara University	Santa Clara Computer and High Technology Law Journal	37.4
7	Duke University	Duke Law & Technology Review	36.3
8	Albany Law School	Albany Law Journal of Science & Technology	36.1
9	Boston University	Boston University Journal of Science & Technology Law	35
10	Columbia University	Columbia Science and Technology Law Review	33.7
11	Marquette University	Marquette Intellectual Property Law Review	31.3
12	Franklin Pierce Law Center	IDEA: The Intellectual Property Law Review	30.5
13	University of North Carolina	North Carolina Journal of Law & Technology	29.4
14	University of Minnesota	Minnesota Journal of Law, Science & Technology	29.2
15	University of Virginia	Virginia Journal of Law & Technology	28.9
16	University of Texas	Texas Intellectual Property Law Journal	28.6
17	University of Colorado	Journal on Telecommunications & High Technology Law	26.8
18	Yale University	Yale Journal of Law & Technology	25.7

IP Curriculum: Finally, William Mitchell College of Law has compiled a "Report on Intellectual Property Curricula" at the various law schools and used that to create a ranking based on course offerings.

Ranking	Law School	Total Points
1	Santa Clara University School of Law	19.5
2	Suffolk University Law School	19
3	Whittier Law School	18
4 (tie)	Franklin Pierce Law Center	17
	Georgetown University Law Center	17
	Seton Hall University School of Law	17
	The George Washington University Law School	17
	William Mitchell College of Law	17
9	The John Marshall Law School	16
10 (tie)	Chicago-Kent College of Law Illinois Institute of Technology	15
	The University of Akron School of Law	15
12	DePaul University College of Law	14.5
13	Vanderbilt University Law School	14
14	Benjamin N. Cardozo School of Law-Yeshiva University	13.5
15 (tie)	Loyola University Chicago School of Law	13
	Thomas Jefferson School of Law	13
17 (tie)	George Mason University School of Law	12
	Michigan State University College of Law	12
	New York Law School	12
	University of Houston Law Center	12
	University of Illinois College of Law	12
	University of Pittsburgh School of Law	12
	University of San Diego School of Law	12
24	University of Richmond School of Law	11.5
25 (tie)	Arizona State University-Sandra Day O'Connor College of Law	11
	Golden Gate University School of Law	11
	Pepperdine University School of Law	11
	Seattle University School of Law	11
	Stanford University Law School	11
	University of California-Berkeley School of Law	11
	University of California-Hastings College of the Law	11
	University of San Francisco School of Law	11
	Washington University School of Law	11

Edward DuMont Nominated to the Court of Appeals for the Federal Circuit

April 14, 2010PatentFederal Circuit En Banc, VenueDennis Crouch

The White House has announced the nomination of Edward (Ed) DuMont to the Court of Appeals for the Federal Circuit to replace Chief Judge Paul Michel who will be retiring May 31, 2010. The Senate must confirm the nomination along with the still-pending nomination of Judge O’Malley.

DuMont is a partner at WilmerHale and is an appellate specialist. He previously spent close to ten years at the Department of Justice primarily in the office of the Solicitor General and also worked in corporate transactions at Sullivan & Cromwell.

DuMont clerked for Judge Richard Posner on the Seventh Circuit in Chicago in the mid-1980’s and also spent a year in working as a lawyer at a firm in Thailand. DuMont holds a BA (history) from Yale and a JD from Stanford. He is originally from Northern California, but has worked on the East Coast for the past twenty years.

DuMont has worked on several patent appeals, often alongside former US Solicitor General Seth Waxman. Recent patent appeals including Tivo v. Echostar, Princo v. ITC (pending en banc rehearing), Airgo IP v. ArvinMeritor, Agfa Corp. v. Creo Prods., Purdue v. Endo, US Philips v. ITC.

The Federal Circuit courthouse at 717 Madison Place is less than a half-mile walk from DuMont’s current office on Pennsylvania Avenue. Like President Obama, DuMont is just shy of 50-years-old.

Although filling Chief Judge Michel’s spot, Mr. DuMont would not automatically become the next Chief Judge. Rather, that position will move to Judge Rader who is the next most-senior active judge who has not yet reached the age of 65.

Policing Priority: Nintendo Escapes Liability Based on Patentee’s Failure to Satisfy the Written Description Requirement

April 14, 2010PatentEnablement, Written DescriptionDennis Crouch

Anascape v. Nintendo (Fed. Cir. 2010)

A jury found that the Nintendo Wii and GameCube infringe Anascape’s U.S. patent No. 6,906,700. The ‘700 patent claims priority to a parent application and, as it turns out, needed that priority to avoid intervening prior art. On appeal, the Federal Circuit found the asserted claims invalid — holding that parent application could not serve as a priority document because it did not describe the invention as claimed in the ‘700 patent.

In my recent article on antedating prior art, I suggest that the prevalent practice of quickly filing provisional and other patent applications has largely supplanted patentee’s need to prove a prior invention date. In order to claim priority to an earlier-filed patent document, that document “must meet the requirements of 35 U.S.C. 112 p1, as to that claimed subject matter.” These requirements include enablement, written description, and best mode.

Here, the focus was on whether the priority disclosure satisfied written description requirement for the newly added claims of the ‘700 patent. Anascape’s specific problem was that the priority document identified a single “input member” that could measure movement along six degrees of freedom while the ‘700 patent claims were directed toward a controller with multiple input members that each measured fewer than six degrees of freedom.

Written Description of the Invention: The ‘700 patent’s priority document discussed prior art game controllers that were operable with fewer than six-degrees of freedom. In its analysis, the Federal Circuit refused to consider that disclosure as applicable to the written description requirement because that disclosure “is not a description of the [claimed] invention; [rather,] it is a description of prior art joysticks as generally used in video games.”

Writing in Concurrence, Judge Gajarsa writes that this particular use of the written description requirement is “best” and preferred use of the doctrine. Namely, written description should primarily be primarily used to police priority and new matter issues and other questions of inadequate disclosure should be handled by enablement. In my recent study of the written description requirement, I found that the USPTO is largely following Judge Gajarsa’s guidance in asserting written description rejections primarily to police priority and new matter issues.

Notes:

This decision appears to eliminate what was likely a $100 million total payout for Anascape. The decision also eliminates the permanent injunction that had been stayed pending appeal.
Anascape appears to be primarily owned by the inventor of the ‘700 patent, Brad Armstrong. Armstrong prosecuted the applications himself. Armstrong has several continuations pending. In addition, Anascape appears to have a still-pending (but stayed) litigation against Nintendo based on several more patents that are currently undergoing reexamination.
Microsoft was originally a defendant in this case, but settled in a confidential agreement.

Recordation of Assignment Creates Rebuttable Presumption that Assignment is Valid, etc.

April 13, 2010Patentobviousness, Trade SecretsDennis Crouch

SIRF Technology v. ITC and Broadcom (Fed. Cir. 2010)

In a 2009 decision, the International Trade Commission (ITC) ruled that SIRF and four others were violating Section 337 of the US Tariff Act of 1930 by importing and selling products with GPS devices that infringe patents owned by Broadcom (via a 2007 acquisition of Global Locate). See U.S. Patent Nos. 6,417,801, 6,606,346, 6,651,000, 6,704,651, 6,937,187, and 7,158,080. The patents claim various forms of “assisted-GPS” that improve GPS signal reliability and location calculation speed.

Patent Ownership and Standing: One of the inventors conceived of the invention while an employee of Magellan (another GPS company) and while under an employee agreement that operated as an effective assignment of “all inventions . . . which are related to or useful in the business of the Employer . . . and which were . . . conceived . . . during the period of the Employee’s employment, whether or not in the course of the Employee’s employment.” Magellan was aware of the inventions, but never pursued ownership rights. Here, in an effort to disrupt Broadcom’s standing to sue, the defendants asserted that Magellan should be considered a co-owner of the patent rights.

Many patent assignment issues are determined under the appropriate state law. However, federal patent law is used to determine whether an assignment is an automatic assignment or only an agreement to later assign rights. Applying federal law, the Federal Circuit interpreted this agreement as an automatic assignment that effectively assigns rights to inventions automatically upon their invention.

Also as a matter of federal patent law, the court held that recordation of an assignment creates a rebuttable presumption that the assignment is valid. Here, the appellate panel agreed that the defendants had not provided sufficient evidence to rebut that presumption. In particular, the defendants had failed to prove that the prior-employer Magellan was the true owner.

“If Magellan and Abraham recognized that Global Locate was the owner of the trade secret rights to the invention, it logically follows that Magellan and Abraham did not think that Magellan was the owner of similar rights that eventually became the subject of the ’346 patent.”

Patentable Subject Matter: The asserted claims included several methods of calculating position. On appeal, the Federal Circuit confirmed that those methods fit within the machine-or-transformation test of Bilski and therefore are patentable. In Bilski, the court held that the a patentable method claim must be either (a) implemented using particular machine or (b) transform an article from one state to another. In addition, the machine-or-transformation must create a “meaningful limit on the scope of the claims.” Here, the court held that the methods as claimed “could not be performed without the use of a GPS receiver.” And that limits were meaningful because the GPS receiver is not simply “an obvious mechanism for permitting a solution to be achieved more quickly.”

We also think that the presence of the GPS receiver in the claims places a meaningful limit on the scope of the claims. In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. We are not dealing with a situation in which there is a method that can be performed without a machine. Contrary to appellants’ contention, there is no evidence here that the calculations here can be performed entirely in the human mind. Here, as described, the use of a GPS receiver is essential to the operation of the claimed methods.

Comment: I certainly believe that the patents are directed toward the type of subject matter that should be patentable. However, the Federal Circuit’s analysis here is not convincing. Rather, the fact that “a GPS receiver is essential to the operation of the claimed methods” indicates that inclusion of the “GPS receiver” limitation is not meaningful.

The question of whether the inventions were “related to or useful in the business” of Magellan was a matter of California state law.

Divided Infringement: An portion of the decision that will be interesting for patent prosecutors is directed toward joint infringement. Here, the court upheld the patentee’s efforts to direct claims toward certain particular actors and therefore avoid the Muniauction problem. Here, the steps of “communicating” and “transmitting” to a user-device were interpreted as steps that did not require end-user action even though the actual process involves end-user devices downloading the transmitted data. Thus, despite what your speech teachers taught, communication can be one-way.

Judge Rader on Judging (An Interview with Gene Quinn)

April 12, 2010PatentDennis Crouch

In six weeks or so, Judge Randall R. Rader will take-over as Chief Judge of the Court of Appeals for the Federal Circuit. Gene Quinn recently sat-down with Judge Rader to discuss the Federal Circuit and his new role as Chief Judge. Gene has published the entire interview here. The content of the interview is interesting as is the fact that Judge Rader was willing to sit-down to record an unscripted give and take with Gene (a blogger and avid critic).

I have posted a few excerpts below:

(more…)

Guest Essay: An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology

April 12, 2010PatentFederal Circuit En Banc, Written DescriptionDennis Crouch

Following on the heels of the Federal Circuit en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., Professor Kevin Collins asks "What next?"

Before Ariad, the uncertainty channeled much of the scholarly conversation about the written description doctrine into a binary debate, pitting those who it applied to original claims versus those who believed that it did not. After Ariad, the stage is now set for greater participation in more nuanced conversations about the role that the written description requirement does and should play in curtailing patent protection. Ariad may end one facet of the debate over written description, but it would be a lost opportunity if Ariad were interpreted to end the debate over written description more broadly and cut off these more nuanced conversations.

In this short essay, Professor Collins suggests that patent law scholarship should adopt a "trans-doctrinal approach" directed to the broader purposes and limitations of patent law rather than being confined to doctrinal silos. The essay indicates that this holistic approach may also be helpful in explaining a perception that patent law varies greatly according to the area of technology. [Download Collins.Ariad]

Read: Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24.

Are Appeals at the Federal Circuit a “Coin Flip”?

April 9, 2010Patentanticipation, Claim Construction, obviousness, USPTO DirectorDennis Crouch

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

A general patent counsel at a Fortune 500 company recently remarked, "[T]he Federal Circuit does a coin flip and reverses district court decisions left and right. You might as well just roll the dice."[1] When I was in legal practice, many patent litigators echoed this sentiment.

In a recent article, I collected data from the University of Houston's PatStats project, Professor David Schwartz's exhaustive study on claim construction appeals, internal studies by the Federal Circuit, and the Administrative Office of the Courts to test this seemingly widespread belief.

By and large, the belief is false. Reversal rates for patent cases at the Federal Circuit are not particularly high, and roughly the same as civil reversal rates in other circuits, especially those for complex civil cases. On an issue-by-issue level, although claim construction, § 102(a) anticipation, indefiniteness, and a few other issues have noticeably high reversal rates, for most patent law issues, the rates are about average when compared with rates for private civil appeals in other circuits.

Figure 1 below shows case-by-case reversal rates at the Federal Circuit from 2000-2009 for patent infringement cases appealed from district courts. (This data includes cases that were fully reversed or vacated, and appears to take into account summary affirmances.)

Figure 1. Reversal Rates at the Federal Circuit for District Court Patent Appeals (2000-2009).

In comparison to the 8-18% rates shown in Figure 1, the private civil litigation reversal rates across the regional circuit courts are roughly 7-18%. The reversal rate in 2009 for bankruptcy cases in the regional circuit courts was 15.1%. Although it is somewhat out-of-date, the most exhaustive study of securities and contract appeals in federal courts reports reversal rates of 29.4% and 22.8%, respectively, from 1988-1997. In sum, the case-by-case reversal rates at the Federal Circuit are roughly the same or lower than the reversal rates in the regional circuits for private civil actions, particularly complex ones, like bankruptcy, securities, and contracts cases.

Figure 2 below shows issue-by-issue reversal rates at the Federal Circuit from 2000-2007 for those issues appealed in at least 20 cases (for a more exhaustive set of reversal rates, see my article). According to the data sources I used to compile these figures, these rates derive from all appeals decided by the Federal Circuit, including summary affirmances. (However, I believe some of the summary affirmances from the early 2000s may be missing from one of the sources–if so, this would only lower the issue-by-issue reversal rates, strengthening my argument.)

As Figure 2 shows, the average reversal rate across all issues (other than claim construction) is 18% and 21% (including claim construction). Of course, a number of issues appear to have inordinately high reversal rates–with the oft-appealed issue of claim construction (at 33%) near the top of the list. But like the case-by-case reversal rates, the average reversal rate across all issues–that is, even taking into account the large number of claim construction reversals–is roughly the same as the overall civil reversal rate in other circuits, and roughly the same or lower than case-by-case reversal rates for complex civil cases.

Thus, the actual reversal rates–whether generated on a case-by-case or issue-by-issue basis–belie the assertion that appeals at the Federal Circuit are a "coin flip" or "dice roll." When compared with reversal rates for private and complex civil actions in other circuits, the Federal Circuit rate is no different, perhaps even lower. So why do so many attorneys believe otherwise?

I think two forces are at work here. First, nearly all of the widely publicized studies on the Federal Circuit have focused on claim construction and obviousness–both of which have high reversal rates. And some of these studies excluded summary affirmances, a practice which artificially inflates the reversal rates by roughly 30%. Second, my sense is that many attorneys who regularly appear before the Federal Circuit are subject to "memory bias." Specifically, as a number of psychologists have generally recognized, these attorneys very likely recall their unpredictable appeals and forget their predictable ones.

Hopefully, the data presented here and in my article will help dispel these widespread myths and diminish some of the undeserved criticism of the Federal Circuit regarding appeals.

Ted Sichelman is an Assistant Professor at the University of San Diego School of Law, where he teaches patent law and other intellectual property courses.

[1] Patent Troubles: Does The Patent System Need Fixing?, Corporate Legal Times, June 2005, at 61 (statements of Richard J. Rodrick, General Patent Counsel, S.C. Johnson & Son Inc.).

Joint Inventorship: Federal Circuit Denies Vanderbilt’s Claim to Cialis Patent Rights

April 8, 2010PatentinventorshipDennis Crouch

Vanderbilt Univ. v. ICOS Corp. (Fed. Cir. 2010)

Vanderbilt and ICOS have been locked in an inventorship dispute for several years over patent rights to tadalafil, the active ingredient in Cialis. The University argues that its scientists should be listed as inventors on the patents because they provided provided the building-blocks that Glaxo used in its discovery of tadalafil. (ICOS now holds the patent rights).

The district court ruled against Vanderbilt – holding that the Vanderbilt researchers could not be inventors because they did not have an independent understanding of the “complete compound claimed.” On appeal, the Federal Circuit rejected that misinterpretation of the law of joint inventorship, but affirmed the final holding based on its conclusion that Vanderbilt had not provided clear-and-convincing evidence that it contributed to the invention.

The Patent Act provides some foundation for the law of joint inventorship.

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. 35 U.S.C. § 116 (1988).

The statute does not spell-out the minimum threshold level of contribution that is required of an inventor, but the Federal Circuit has held that a joint inventor must have contributed “to the conception of the claimed invention.”

Although physical collaboration is not required, the Federal Circuit has also held that some level of collaboration is required. Collaboration can certainly be one-way. Thus, the Vanderbilt researchers might have some claim to inventorship rights if the Glaxo researchers had relied upon information provided by the Vanderbilt researchers. The Federal Circuit rejected that conclusion based on the lack of factual support – even though the Vanderbilt researchers did provide important material to Glaxo (in the UK), there was no evidence that the Glaxo researchers (operating in France) relied upon the material in their inventive process.

Writing in dissent, Judge Dyk argued that the proper course of action was to remand for a better decision. Judge Dyk picked up on confusion in the district court opinion that both accepted and rejected the notion that the Vanderbilt researchers contributed to the inventive process. Additionally, Judge Dyk argued that the district court’s factual conclusions were directed toward reaching a conclusion to the erroneous question of law (discussed above) and that those factual conclusions were tainted by the error in a way that requires remand.

Patently-O Bits and Bytes

April 8, 2010PatentDennis Crouch

A number of jobs have been recently posted to the Patently-O Job Board.

Allergan is looking for a Patent Agent with a strong chemistry background.
Oxane Materials is looking for a Patent Liaison with a strong background in material science or inorganic chemistry.
Bluestone Innovations is seeking an in-house patent attorney to support its new business of acquisition, licensing, and enforcement of patent rights.
Hodgson Russ is looking for an entry-level patent attorney to work in its Buffalo NY office with a focus on mechanical engineering prosecution. PTO registration and some prosecution experience preferred.
Celula is looking for a Patent Agent with a background in biochemistry or related fields.
McGlinchey Stafford is looking for an experienced chemical patent prosecutor to work in its Baton Rouge office.
A Chicago-based IP/FDA focused firm is looking for experienced patent prosecutors and portfolio managers (pharma, food, dietary supplement related). PhD’s and portable book of business preferred.
Intellectual Ventures is seeking a senior licensing attorney.
T-Mobile is seeking an experienced patent attorney to advise on patent prosecution and other intellectual property matters.
Marjama Muldoon is looking for an experienced patent attorney (4+ years) to join the Syracuse-based law firm.

Patent-Law Job Outlook?:

Note – I have no justification for the 2^nd order polynomial trendline that I used except that it satisfies my hope that we have hit some bottom and that things are moving up.

Patently-O Bits and Bytes

April 8, 2010PatentJonathan Hummel

A number of jobs have been recently posted to the Patently-O Job Board.

Allergan is looking for a Patent Agent with a strong chemistry background.
Oxane Materials is looking for a Patent Liaison with a strong background in material science or inorganic chemistry.
Bluestone Innovations is seeking an in-house patent attorney to support its new business of acquisition, licensing, and enforcement of patent rights.
Hodgson Russ is looking for an entry-level patent attorney to work in its Buffalo NY office with a focus on mechanical engineering prosecution. PTO registration and some prosecution experience preferred.
Celula is looking for a Patent Agent with a background in biochemistry or related fields.
McGlinchey Stafford is looking for an experienced chemical patent prosecutor to work in its Baton Rouge office.
A Chicago-based IP/FDA focused firm is looking for experienced patent prosecutors and portfolio managers (pharma, food, dietary supplement related). PhD’s and portable book of business preferred.
Intellectual Ventures is seeking a senior licensing attorney.
T-Mobile is seeking an experienced patent attorney to advise on patent prosecution and other intellectual property matters.
Marjama Muldoon is looking for an experienced patent attorney (4+ years) to join the Syracuse-based law firm.

Patent-Law Job Outlook?:

Note – I have no justification for the 2^nd order polynomial trendline that I used except that it satisfies my hope that we have hit some bottom and that things are moving up.

Patently-O Bits and Bytes: Queries from Readers

April 7, 2010PatentClaim ConstructionDennis Crouch

Query 1: A means-plus-function claim is limited to corresponding structures found in the specification as well as their equivalents. In litigation, is the process of identifying corresponding structures merely claim construction that is reviewed de novo on appeal?
Query 2: In the original application, applicant received a restriction requirement and withdrew the apparatus claims without filing divisional. Now, in the reissue application (filed within two years of issuance), the applicant wants to add new apparatus claims (that are different from the original claims), but the examiner argues that by failing to file a divisional, applicant surrendered rights to all potential apparatus claims. This appears to be an expansion of Orita, 550 F.2d 1277 (CCPA 1977), but is it proper? See MPEP 1412.01. Doyle, 293 F.3d 1355 (Fed. Cir. 2002) involved a similar situation where the patentee requested a reissue to add claims that were similar (but broader) than the original non-elected group. However the Doyle decision does not specifically decide this issue. Doyle does indicate that the “so-called Orita doctrine therefore precludes a reissue applicant from obtaining substantially identical claims to those of nonelected groups identified in an examiner’s restriction requirement.”

Means-Plus-Function Claims: Defining the Scope of the Corresponding Structure

April 7, 2010PatentClaim Construction, Inequitable ConductDennis Crouch

Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd. (Fed. Cir. 2010)

A five-judge Federal Circuit panel has narrowed the district court’s construction of the patentee’s means-plus-function claim limitations. This decision might be seen as the foil to the Federal Circuit’s recent broad interpretation of a means-plus-function element in Hearing Components v. Shure. Interestingly, Judges Lourie and Rader signed both opinions.

The Pressure Products patent covers a mechanism for inserting and removing catheters and pacemaker leads. The asserted claims include a “means for” facilitating the removal of both a hemostatic valve and a sheath from the disposed catheter. The parties agreed that this limitation should be interpreted as a means-plus-function limitation, but disagreed as to the proper scope of the limitation. Under 35 USC 112p6, a means-plus-function limitation is construed to “cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” The district court judge held that the corresponding structure described in the specification used a “score line” to allow the hemostatic valve to separate. During trial (after the close of the plaintiffs case) the Judge updated its definition to include a “linear perforation; slit; slot; tab; line; severing; weakening; or tear that can be partial or complete.” The jury found infringement and awarded $1.1 million in past damages.

On appeal, the Federal Circuit reversed.

Claim Construction During Trial: The Federal Circuit first looked at the lower court’s procedure and held that the timing of claim construction is in the discretion of the lower court so long as the court works to avoid “surprise and prejudice” that could accompany a late change to the construction.

While recognizing the potential for surprise and prejudice in a late adjustment to the meaning of claim terms, this court also acknowledges that the trial court is in the best position to prevent gamesmanship and unfair advantage during trial. Moreover, this court understands that a trial judge may learn more about the technology during the trial that necessitates some clarification of claim terms before the jury deliberates.

Scope of the Corresponding Structure: The “score line” structure was discussed in the specification and was clearly a “corresponding structure” to the means-for element. At dispute, however, was the scope of the structure disclosed. Namely, the patent specification included a “laundry list” of prior art references and the district court used the disclosures from those references to expand the definition of a “score line” beyond the structure that was literally described in the specification. On appeal, the Federal Circuit held that approach was wrong and that “the trial court impermissibly expanded the corresponding structure of claim 1 to include structures not described in the specification.”

Trial courts cannot look to the prior art, identified by nothing more than its title and citation in a patent, to provide corresponding structure for a means-plus-function limitation. . . . Although many of the disclosed alternatives may well be determined to be structural equivalents permitted by section 112, paragraph 6—a question of fact for the jury—these alternative methods . . . cannot be treated as the disclosed structures for the removal means. Simply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references.

“This court remands for further proceedings in light of the proper construction of the term ‘score lines.'”

Writing in Dissent, Judge Newman argued that the patentee should have been allowed to rely upon the disclosures discussed in the specification in order to identify the scope of the disclosed corresponding structure.

Inequitable Conduct: This case also includes an important procedural decision on inequitable conduct – affirming the district court’s refusal to allow the defendant to amend its answer to include an inequitable conduct defense.

Federal Circuit Enforces Agreed-To but Unsigned Settlement Terms

April 6, 2010PatentobviousnessDennis Crouch

MedPointe Healthcare v. Walter Kozachuk (Fed. Cir. 2010)(nonprecedential)

Kozachuk is a former employee of MedPointe’s predecessor company and as part of his employment agreement, Kozachuk had agreed to assign “any and all inventions, discoveries, or improvements made, discovered, or conceived by him during his employment.” About 18-months after leaving his job, Kozachuk began filing patent applications on clinical uses of the drug Felbamate for the treatment of neurological problems. In 2004, MedPointe sued – claiming ownership rights and breach of the employment agreement.

Settlement: In May 2008, the parties reached an agreement on the material terms of a settlement. The terms (including the transfer of patent rights to MedPoint and a small payment ($60k) to Kozachuk) were put “on the record” by the magistrate judge who was mediating the settlement negotiations. Kozachuk, however, refused to sign the final settlement agreement and instead argued that he had been inadequately represented in the negotiations. Despite the lack of a signed document, the district court agreed to enforce the settlement, ordered Kozachuk to sign the documents and hit Kozachuk with $30k in sanctions.

On appeal, the Federal Circuit affirmed. Applying New Jersey law, the court found that a settlement agreement “is a binding contract enforceable regardless whether it has been reduced to writing” and that a contract is created once the parties agree upon the “essential terms of the settlement.” The kicker here was that Kozachuk had agreed to the terms on the record.

Kozachuk’s complaints of inadequate assistance of counsel went nowhere: “In light of Kozachuk’s high level of education, his obvious familiarity with the litigation process, and his failure to express any lack of understanding except after the fact, the court did not clearly err in finding that a binding settlement agreement had been formed.”

Appellate Jurisdiction: One issue not addressed by this case is why the Federal Circuit is hearing the appeal of an employment dispute. I looked up the original complaint to find the answer: The complaint seeks to correct inventorship of the patents under 35 U.S.C. § 256. As such, the case arises under the US patent laws and therefore provides the Federal Circuit with appellate jurisdiction over the final judgment. Hunter Douglas, Inc. v. Harmonic Design, 153 F.3d 1318, 1330 (Fed. Cir. 1998).

Distinguishing MedImmune: Federal Circuit Denies Declaratory Judgment Jurisdiction

April 6, 2010PatentDennis Crouch

Innovative Therapies, Inc. (ITI) v. Kinetic Concepts, Inc. (KCI) (Fed. Cir. 2010)

ITI is an upstart company formed by former KCI employees. Before launching their negative-pressure wound product (that would compete directly with KCI), ITI filed a declaratory judgment action arguing that KCI's patents were invalid. As of the time of the lawsuit, no one at KCI had seen or evaluated ITI's new product.

The district court dismissed the case for lack of subject matter jurisdiction. On appeal, the Federal Circuit affirmed – holding that no "actual controversy" existed between the parties at the time the complaint was filed.

In MedImmune v. Genentech, 549 U.S. 118 (2007), the Supreme Court broadened the scope of declaratory judgment jurisdiction and rejected the Federal Circuit's somewhat formalist test that required a reasonable apprehension of suit in order to establish jurisdiction. Rather, the Supreme Court held that the totality of the circumstances should be examined to determine the existence of "a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant relief." (quoting Maryland Casualty, 312 U.S. 271 (1941)).

Here, the DJ Plaintiff (ITI) argued that the actual controversy was evident based on three factors: (1) that ITI had obtained pre-marketing approval from the FDA based on representations that its product had the "same technological characteristics" as KCI's already approved device and that KCI new of that representation; (2) that KCI employees had indicated over the telephone that the company would react "aggressively" to competitive entry into the marketplace; and (3) that KCI has a history of using litigation to enforce its patent rights.

The Federal Circuit held that these facts were insufficient to create declaratory judgment jurisdiction. In particular, the representations to the FDA were not tied directly to KCI's patent rights and therefore did not create any actual controversy over those rights. The telephone conversations (initiated by ITI) were lacking because they were initiated by ITI (rather than by the patentee) and were directed to individuals who were not in "decision-making positions" or informed about the sub rosa purpose behind the conversations. Finally, while the patentee's enforcement history can contribute to DJ jurisdiction, that fact alone is insufficient for such jurisdiction.

Comment: The practical fight in this case is not about whether litigation will continue, but rather whether the litigation should be sited in Delaware (the choice of the alleged infringer) or in North Carolina (the choice of the patentee). Soon after ITI filed its DJ action in Delaware, KCI (the patentee) filed an infringement complaint in North Carolina. The Delaware case is out for now because the court did not have DJ Jurisdiction over the case when it was originally filed. ITI had also asked the North Carolina court to transfer its case to Delaware – that motion was denied.

Although the subsequent events (KCI's filing of a lawsuit) indicated the existence of an actual case or controversy, post-filing events cannot create jurisdiction even if the complaint is amended to encompass those events.

Bilski Predictions: Justice Stevens

April 5, 2010PatentDennis Crouch

On the Concurring Opinions Blog, Professors Magliocca (Indiana) and Miller (Lewis & Clark) have been wondering when the Supreme Court will release its decision on patentable subject matter.

Professor Miller writes the following:

I … did a little digging on opinions issued from the Court’s first two sittings – the one starting Oct 5, and the one starting Nov 2. Bilski was in the second of these two sittings . . . If the past is any indication, one would expect each Justice to write about 3 majority opinions from this group. Perhaps Justice Sotomayor, as a newbie, would be assigned 2. . . .

The Court has issued opinions in 18 of the 26 cases from its first two sittings; thus [8] remain. Among those yet to issue, there are some that are likely to produce fireworks, such as (a) Stevens, the animal cruelty video/free speech case; (b) Buono, the religious symbol on gov’t land; (c) McGhee, the prosecutorial immunity case; and (d) Graham and Sullivan, both challenging Florida’s life-without-parole sentences for juveniles.

From those two sittings, the following Justices have written the stated number of majority opinions:

3 each for Justices Scalia, Breyer, and Ginsburg. (I don’t think any of them is likely to be the author of Bilski.)
2 each for Justices Roberts, Thomas, Alito, and Sotomayor. (Perhaps one of them is writing Bilski, but I doubt it.)
1 majority opinion from Justice Stevens. (I think he’ll author Bilski.)
0 majority opinions from Justice Kennedy. (He’ll be writing the majorities in the hot-button, sharply divided cases, because he’ll be in the majority in all of them.)

I don’t know when Bilski will issue. But I’m pretty confident Justice Stevens will author the majority opinion. He is, of course, the author of Parker v. Flook and the principal dissenter in Diamond v. Diehr.

Delayed Examination: USPTO Proposes 12-Month Optional Fee-Deferral (and Examination Delay)

April 5, 2010PatentDennis Crouch

The USPTO is seeking comments on a fee-deferral program that would allow patent applicants to delay patent application processing for 12-months before paying the full non-provisional application fee. This process could be coupled with provisional application filings – effectively providing a 24-month delay.

Provisional applications have become hugely popular with almost 150,000 being filed each year. The vast majority of provisional filers use the form to delay non-provisional filing for at least 11-months. Allowing these applicants to delay further will help relieve the immediate queue of applications pending examination. From the press release:

The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period. The proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which the applicants have decided not to pursue examination.

The mechanism of operation of this new option is somewhat clunky*: At the end of the 12-month provisional term, the applicant would then file a non-provisional application along with the basic filing fee (currently $330) and oath. The applicant would then receive a notice of missing parts with a 12-month-from-filing response period. To “complete” the application and put it in the examination queue, the applicant must then pay the additional filing fees ($760) along with a delay surcharge ($130?).

Comments are due by June 1 to extended_missing_parts@uspto.gov.
USPTO Press Release
Federal Register Notice
*Clunky: A more straightforward approach might be preferred, but that would require Congressional action.

Formalities Review of BPAI Briefs

April 3, 2010PatentUSPTO DirectorDennis Crouch

Director Kappos writes the following:

I thought I would let you know about a new streamlined procedure we have instituted for review of briefs filed in ex parte appeals in patent applications. Under the new procedure, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) will have the sole responsibility for determining whether appeal briefs comply with the formality requirements governing the content of these briefs. This new procedure eliminates two layers of review; previously the Patent Appeal Center and the examiner were required to review patent appeal briefs and evaluate their compliance with the formality requirements.

…

Under the streamlined procedure, only the Chief Judge and his staff will conduct a compliance review of appeal briefs, and will do so at the time the appeal brief is filed. If a brief is determined not to comply with the applicable regulations, the Chief Judge will promptly send the appellant a notice and provide a time period within which an appellant can file a corrected brief. The Chief Judge will also have the sole responsibility for determining whether corrected briefs comply with the applicable regulations and addressing any inquiries and petitions regarding notices of noncompliant briefs. Because this change affects only the internal process within the USPTO, applicants should continue to follow all procedures set forth in the regulations.

We expect this new procedure to reduce appeal pendency from the filing of a notice of appeal to the docketing of the appeal. We expect a further reduction in pendency because the streamlined procedure will increase the consistency of the review, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs.

…

Additional details about this new procedure are outlined in a Federal Register notice publishing presently. As always, comments are welcome. In fact, this entire change is the product of IP community comments. Thanks for keeping them coming!

BPAI Revised Procedure for Appeal Brief Review

April 2, 2010PatentDennis Crouch

As part of the PTO’s efforts to streamline appeal practice, the office has (internally) announced a new procedure for reviewing appeal brief formalities. Notably, the BPAI has been given the “sole responsibility” for determining whether appeal briefs are in compliance with the formalities required by 37 CFR 41.37. The USPTO has also indicated briefs will be accepted even if they contain “minor informalities” so long as those informalities do not affect the BPAI’s decisionmaking ability.

The BPAI will review each opening brief before forwarding the brief to the examiner for consideration. Once the brief is accepted by the BPAI, neither the examiner nor the Patent Appeal Center will have any power to later reject the brief as non-compliant. The non-compliance form paragraphs are also being removed from the examiner’s OACS computing system.

In a 2007 study of the prosecution files of 720 cases on appeal, I found that a full 25% had been rejected as ‘defective’ based on formalities. [Link]. A major purpose behind this power-shift is to reduce this paperwork churning and to create more uniformity in appeal processing. This shift also allows the BPAI to collect better data on the number and types of appeals being filed.

The announcement is signed by Bob Bahr, Associate Patent Commissioner (for patent examination policy).

File Attachment: bpai_revised_procedure_20100329.pdf (217 KB)

* * * *

The chart below shows the backlog of ex party BPAI appeals (excluding reexaminations). These only include cases where appellate briefing has been completed and jurisdiction transferred from the Examiner/TC to the BPAI.

The BPAI will be holding a roundtable on April 7.

Patently-O Bits and Bytes

April 2, 2010PatentUSPTO DirectorDennis Crouch

USPTO Design Day: April 6 at the USPTO. Speakers include Bob Stoll (Patent Commissioner), Jasemine Chambers (USPTO Tech Center Director), Clive Roux (ISDA), Perry Saidman (Saidman), Richard Stockton (Banner), Susan Farley (Heslen), Damon Neagle (Design IP), etc.
USPTO BPAI Conference: April 7 at the USPTO. Speakers include Director Kappos, Federal Circuit Chief Judge Michel and Judge Rader, BPAI Chief Judge Flemming, and Vice-Chief Judges Moore and MacDonald, Greg Morse of the USPTO Central Reexamination Unit, Todd Baker (Oblon), Gary Harkcom (Greenblum), Steve Kunin (Oblon), Michael Messinger (Sterne), Brad Pederson (Patterson), Theresa Rea (Crowell), and Charlie Van Horn (Finnegan).

Patently-O Bits and Bytes

April 2, 2010PatentUSPTO DirectorJonathan Hummel

USPTO Design Day: April 6 at the USPTO. Speakers include Bob Stoll (Patent Commissioner), Jasemine Chambers (USPTO Tech Center Director), Clive Roux (ISDA), Perry Saidman (Saidman), Richard Stockton (Banner), Susan Farley (Heslen), Damon Neagle (Design IP), etc.
USPTO BPAI Conference: April 7 at the USPTO. Speakers include Director Kappos, Federal Circuit Chief Judge Michel and Judge Rader, BPAI Chief Judge Flemming, and Vice-Chief Judges Moore and MacDonald, Greg Morse of the USPTO Central Reexamination Unit, Todd Baker (Oblon), Gary Harkcom (Greenblum), Steve Kunin (Oblon), Michael Messinger (Sterne), Brad Pederson (Patterson), Theresa Rea (Crowell), and Charlie Van Horn (Finnegan).