Post Microsoft v. AT&T: 271(f) ExtraTerritorial Infringement Still Applies to Process Claims

Patent

Cardiac Pacemakers v. St. Jude Medical (Fed. Cir. 2008) (non-precedential)

35 U.S.C. § 271(f) defines a special cause of action for supplying components of a patented invention to be assembled abroad. 

In the 2005 Union Carbide case, the Federal Circuit seemingly expanded 271(f) to cover components used in a claimed method. Then, in the 2007 Microsoft v. AT&T decision, the Supreme Court found that 271(f) does not extend to cover foreign duplicated software.  Part of the Supreme Court’s justification for its narrow interpretation of 271(f) was based on the traditional presumption against extraterritorial application of US laws.

In this case, the asserted claims are method claims, and the accused infringer (St. Jude) argued that Union Carbide v. Shell Oil is so “flatly inconsistent” with the reasoning of Microsoft, that it too should be overturned

“The three decisions that the district court felt constrained to follow – Eolas, AT&T, and Shell Oil – have been overturned or disapproved by the Supreme Court.”

On appeal, however, the Federal Circuit simply found that “the Supreme Court’s decision does not alter [the] holding” that “271(f) applies to components used in the performance of patented methods and processes.”

As a panel, we cannot reverse the holding of another panel of this court. We thus affirm the district court’s decisions relating to damages.

BPAI: PTO Should Apply Broadest Reasonable Claim Interpretation to Section 101 Analysis

Patent, , ,

Ex parte Koo (BPAI 2008)

Acting sua sponte, a BPAI panel recently entered a new ground for rejection against an IBM patent application: That the claimed process is unpatentable subject matter based on the Federal Circuit’s recent en banc decision in Bilski. The claim is directed to a method of optimizing relational database queries and appears to be specifically directed to speeding up queries where a table is joined to itself. Although the preamble does focus on a “relational database management system,” the body of the claim does not refer to any specific machinery beyond queries, sub-expressions, rows, and sets.

The legal point to consider from this case is that the PTO will apply its “broadest reasonable” claim interpretation during its §101 analysis. Here, the BPAI panel found that the broadest reasonable interpretation of IBM’s claim does not necessarily “require computer or machine implementation” and thus that the claim fails the “tied to a particular machine” prong of Bilski machine-transformation test.

“Claim 1 does not recite any steps that necessarily involve machine implementation. While the preamble of claim 1 recites a “system,” the “system” of claim 1 is not recited in terms of hardware or tangible structural elements. Rather, the “system” could be a software system, where the elements of claim 1 are implemented solely in software or algorithms. Thus, the nominal recitation of a “system” in the preamble does not transform claim 1 into patentable subject matter under § 101.”

The BPAI also found that the claim “does not call for any transformation of an article to a different state or thing, nor does it require any transformation of data or signals.” Based on the claimed step of “reforming the query,” I would argue that the claim does require a transformation, but that transformation does not satisfy Bilski because the thing transformed (the query) is not “representative of physical objects or substances.”

Notes & Comment

  • In the appeal, the BPAI overturned the examiner’s obviousness rejection based on the absence of a “self join” in the cited prior art.
  • The disputed claim:

1. A method for optimizing a query in a relational database management system, the method comprising:

  • evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
  • determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
  • reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.

CAFC Affirms PTO’s right to fire quality assurance specialist for 35%+ error rate.

Patent

Asokkumar Pal v. Department of Commerce (Fed. Cir. 2008)(nonprecedential)

Pal was a quality assurance specialist at the USPTO. His job was to review patent examiner decisions and determine whether the examiner made any ‘errors’ in either rejecting or allowing claims. In 2005 and 2006, the PTO reviewed 16 randomly selected cases from Pal’s file to determine whether he was properly reviewing examiner decisions. They found he was not making the correct decisions – that he erred more than 35% of the time. (A 25% error rate would have been acceptable). Acting on the advice of Pal’s supervisor and another SPE, Peggy Focarino decided to fire Pal. Focarino’s decision was upheld by the Merit Systems Protection Board (MSPB). Pal then appealed to the Federal Circuit.

Standard of Review: The Federal Circuit has jurisdiction over MSPB appeals. Most MSPB appeals to the Federal Circuit are affirmed. This result can be explained by the “highly deferential standard of review” given to the board. The Federal Circuit will only overturn an MBPB decision that is “arbitrary, capricious, an abuse of discretion or otherwise not in accordance with law.” Factual determinations are only reviewed for “substantial evidence.” Thus, “if the Board rests its decision on evidence that could lead a reasonable mind to reach the conclusion reached by the Board, we must accept the Board’s decision.

On appeal, Pal argued that the PTO’s judgment was faulty because it only looked at 16 cases in determining his error rate rather than his entire body of work (or his work spanning his probationary period). The Federal Circuit rejected that argument finding “no requirement that the agency must use any particular method for picking which work performed … will be subject to test.” In addition, Focarino did not err in discussing the case with a SPE who was familiar with the technology.

Mr. Pal had been with the Patent Office for 25 years and had received 22 “outstanding” performance evaluations and two “commendable” performance evaluations. His performance evaluation of “unacceptable” was his last and led to this cause of action. During his years, Mr. Pal trained junior examiners, taught the MPEP, and is a registered patent agent. The MSPB had noted that “it is extremely unfortunate that the agency could not have found another position for the Appellant, who seems to have many talents and has been a successful Federal employee for most of his lengthy career.” However, the decision to fire an employee versus demote an employee is within the discretion of the PTO.

In his brief, Mr. Pal argued that other similarly situated employees had mistake rates “as high as 45-50 percent” that “were never rated unacceptable.” That argument was not addressed by the Federal Circuit.

Court Lacks Personal Jurisdiction over Foreign Patentee in Declaratory Judgment Action

Patent,

Avocent Huntsville Corp. v. Aten Int’l (Fed. Cir. 2008)

Avocent (of Huntsville, Alabama) sued Aten (of Taiwan) for a declaratory judgment of non-infringement and invalidity. In a split appellate decision, the majority (Judges Schall and Linn) found that the district court lacked personal jurisdiction over Aten. The dissent (Judge Newman) would have allowed the Northern District of Alabama court to proceed with the declaratory judgment action.

Patent litigation follows the Supreme Court’s well trod standards for determining whether a court has personal jurisdiction over the parties. Courts speak in the language of minimum contacts, purposeful availment, and traditional notions of fair play. At base, the facts of each case is individually assessed to determine whether those notions have been satisfied. For specific jurisdiction in the declaratory judgment setting, the courts must also determine whether the DJ claim “arises out of or relates to” the DJ defendant’s contacts with the state.

The contacts here include (1) an infringement threat letter from Aten to Avocent mailed to Alabama and to Amazon.com; (2) distribution and sale of Aten products in Alabama through a subsidiary corporation; (3) Aten’s previous patent enforcement litigation in Texas and the ITC.

The Federal Circuit has repeatedly held that a threat letter alone is insufficient to create personal jurisdiction. Rather, for specific personal jurisdiction, the threat letter must accompany other activities related to the DJ action. In that vein, the majority also held that Aten’s “mere acts” of importing and selling products in the Alabama forum do not count as other activities because those sales do not “relate in any material way to the patent right that is at the center of any declaratory judgment claim.” Finally, personal jurisdiction is examined on a state-by-state bases. Thus, the Aten’s prior lawsuits in Texas and the ITC do not impact the issue of personal jurisdiction in Alabama. Open and shut.

In dissent, Judge Newman noted, inter alia, the lack of an alternative forum for the complaint and the existence of Alabama state law claims.

 

    

 

Means-Plus-Function Fools Gold

Patent

Welker Bearing v. PhD, Inc. (Fed. Cir. 2008)

Mechanism For: Welker’s patent claims a clamping mechanism for holding parts in place when welding. The appeal focuses on construction of a “mechanism for moving said finger.” Affirming a prior similar ruling, the Federal Circuit found that the claim structure “mechanism for [performing a function]” is presumptively interpreted as a means-plus-function claim element.

“The term ‘mechanism’ standing alone connotes no more structure than the term ‘means.'” Quoting MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006).

Instead of claiming a “mechanism for moving said finger,” the patentee could have claimed a “finger displacement mechanism.” Opining on that counterfactual, the Federal Circuit noted that it would not have presumed a means-plus-function construction.

“If claim 1 … had recited, e.g., a “finger displacement mechanism,” a “lateral projection/retraction mechanism,” or even a “clamping finger actuator,” this court could have inquired beyond the vague term “mechanism” to discern the understanding of one of skill in the art. If that artisan would have understood such language to include a structural component, this court’s analysis may well have turned out differently. Instead the applicant chose to express this claim element as “a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.””

A reminder here: means-plus-function language is akin to fools gold. Welker’s “mechanism” claim appears broadly written until means claim interpretation doctrine limited to the particular structures disclosed in the specification that perform the claim function and structures that are only insubstantially different. Here, Welker described a linear finger movement which was considered substantially different from a rotational movement.

Means-Plus-Function Equivalents versus Doctrine of Equivalents: Means-plus-function claims are interpreted to cover only structures disclosed in the specification that perform the claimed function and, in addition, any equivalents of those disclosed structures.  On its face, this appears duplicative of the traditional doctrine of equivalents (DOE). In this case, the Federal Circuit spells out some differences between the two. Most notably, “an equivalent structure [for means-plus-function analysis] under § 112 ¶ 6 must have been available at the time of the issuance of the claim, whereas the doctrine of equivalents can capture after-arising technology developed after the issuance of the patent.”  This statement by the court does not, however, precisely explain the distinction.  For means-plus-function claims, court precedent allows the doctrine of equivalents to only capture after-arising technology.  [Link] “Indeed this case does not present a case for equivalents under the doctrine of equivalents at all. This case presents only the question of structural equivalents under §112 ¶ 6.”

Federal Circuit Affirms Nonobviousness of Plavix Isomer Patent

Patent

Sanofi Synthelabo v. Apotex (Fed. Cir. 2008)

In an opinion by Judge Newman, the Federal Circuit affirmed the validity of Sanofi’s patent covering the blockbuster drug Plavix. The Plavix patent covers a dextrorotatory isomer. The validity question rises from the fact that the racemate of the compound was known and described in earlier Sanofi patents. For its obviousness argument, Apotex noted that separation of enantiomers is routine and that there are many examples of compounds that exhibit stereoselectivity. Thus – Apotex argued – there was both motivation and means for creating the Plavix compound from the known racemate that Sanofi had previously admitted was an important compound.

The Federal Circuit disagreed with Apotex – finding “no error in the district court’s findings that, on the state of the prior art, a person of ordinary skill would not have had the expectation that separating the enantiomers would be likely to produce an isomer having absolute stereoselectivity as to both the favorable antiplatelet activity and the unfavorable neurotoxicity.”

Notes

  • This case falls in line with the Federal Circuit’s 2006 decision on preliminary injunction in this case. [Link]
  • In November 2008, the Canadian Supreme Court affirmed patentability of the Canadian patent on Plavix. [Link]

Federal Circuit Affirms Nonobviousness of Plavix Isomer Patent

Patent

Sanofi Synthelabo v. Apotex (Fed. Cir. 2008)

In an opinion by Judge Newman, the Federal Circuit affirmed the validity of Sanofi’s patent covering the blockbuster drug Plavix. The Plavix patent covers a dextrorotatory isomer. The validity question rises from the fact that the racemate of the compound was known and described in earlier Sanofi patents. For its obviousness argument, Apotex noted that separation of enantiomers is routine and that there are many examples of compounds that exhibit stereoselectivity. Thus – Apotex argued – there was both motivation and means for creating the Plavix compound from the known racemate that Sanofi had previously admitted was an important compound.

The Federal Circuit disagreed with Apotex – finding “no error in the district court’s findings that, on the state of the prior art, a person of ordinary skill would not have had the expectation that separating the enantiomers would be likely to produce an isomer having absolute stereoselectivity as to both the favorable antiplatelet activity and the unfavorable neurotoxicity.”

Notes

  • This case falls in line with the Federal Circuit’s 2006 decision on preliminary injunction in this case. [Link]
  • In November 2008, the Canadian Supreme Court affirmed patentability of the Canadian patent on Plavix. [Link]

Enforcing Foreign Patents in the US: Distinguishing Voda

Patent

Fairchild Semiconductor v. Third Dimension (3D) (D.Maine 2008)

The dispute between Fairchild and 3D turns — in-part — on whether Fairchild’s devices that it manufactures abroad are covered by 3D’s Chinese patents. In a well written opinion, a Maine district court (J. Hornby) rejected 3D’s motion to dismiss – finding that it has power to adjudge the conflict even though the analysis will almost certainly require determination of the scope of the Chinese patents.

Fairchild and 3D have an ongoing “worldwide” license agreement that allows Fairchild to use 3D’s patented technology. The license specifically includes both the Chinese and US patents. For consideration, 3D receives a royalty payment for any Fairchild products “covered by” on or more claims of 3D’s licensed patents. After analyzing 3D’s patents, Fairchild stopped paying the royalty and also sued for a declaratory judgment that it owes no royalties and that its products are not covered by 3D’s patents. The agreement also had a choice of forum (Maine or Texas courts) and choice of law (Maine or Texas law) that applied to the entire agreement. The case is in Federal Court based on diversity jurisdiction.

Courts normally enforce choice of forum & choice of law contractual provisions – especially when negotiated by two sophisticated parties. The catch for cases involving foreign patent rights is the Federal Circuit’s strong aversion to allowing US courts to adjudge foreign patent rights. In the 2007 Voda case, for instance, the appellate court would almost always abuse its discretion by using its supplemental jurisdiction power to adjudge claims of foreign infringement.

Here, the district court distinguished Voda on a few grounds: First, this case reaches the court based on diversity jurisdiction rather than supplemental jurisdiction. Although diversity cases can be booted on convenience factors, diversity jurisdiction is not otherwise discretionary. Here, convenience factors favor Maine as a jurisdiction over China – in particular, both parties are in the US, one has its HQ in Maine, and both previously agreed to litigate in Maine. Second, this case is not a patent infringement case. Rather, it is a contract dispute that – as part of the dispute – questions the scope of a Chinese patent. Third, problems of international relations and comity are lessened because the Chinese patent issue only involves the scope of the Chinese patent and not its validity.

It is unclear whether the Federal Circuit will have jurisdiction over any subsequent appeal since the justification for federal jurisdiction is the diversity of parties rather than patent “arising under” jurisdiction.

 

Court: Parties Must Justify Need for Claim Construction

Patent

IP Cleaning v. Annovi Research (W.D. Wisc. 2008)

IPC has accused Annovi of infringing its patent covering a high-pressure washer. Although only a single claim is in dispute, both parties requested that the court construe several claim terms. In a recent order, however, the court denied both motions for claim construction because neither party had “persuade[d] the court that construction of each specified term is necessary to resolve a disputed issue concerning infringement or invalidity” beyond the generic statement of resolving issues of infringement and validity. According to the court, it will only resolve claim construction disputes where the parties have a “concrete dispute” that will impact the outcome.

“The reason for the order is not to require parties to parrot its language before the court construes claim terms; it is to avoid the devoting judicial resources to the issuance of advisory opinions on the construction of claim terms about which the parties have no concrete dispute. As much as the parties may hate to show their hands at this early stage, they must do so, if they hope to seek the benefit of claim construction before filing motions for summary judgment. Because the parties have disregarded the order and failed to demonstrate the basis for requesting construction of the terms they dispute, their motions requesting claim construction will be denied.”

This decision is in tension with O2 Micro v. Beyond Innovation (Fed. Cir. 2008). In that case, the Federal Circuit found that the lower court had improperly refused to construe certain disputed terms. “When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute. . . . When the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” O2 Micro. The two cases may be distinguished on the ground that in IP Cleaning, the parties have not yet shown an “actual dispute regarding the proper scope” of the claims.

Federal Circuit Affirms Narrow Construction of “Internet Billing Method”

Patent,

Netcraft Corp v. eBay and PayPal (Fed. Cir. 2008)

Netcraft sued eBay and PayPal for infringement of its patents that cover an “internet billing method.” During claim construction, the Western District of Wisconsin found that the limitation of “providing a communications link through equipment of the third party” requires that an infringer “provid[e] customers with internet access.” Of course, eBay and PayPal do not provide internet access.

On appeal, the Federal Circuit affirmed the claim construction and summary judgment of non-infringement.

Three reasons why the claim was narrowly construed:

  1. In many cases, claim construction issues are won or lost in the process of defining which “term” is going to be construed. The patentee argued that the term “communications link” was broadly written and amenable to broad construction. The defendants argued that the element in question was actually the entire process of “providing a communications link through the equipment of the third party.” That entire process is more amenable to a narrow interpretation.”
  2. The patentee did not help its cause by adding the “communications link” to the claims during prosecution. The term is not used anywhere in the specification – consequently, the patentee had little ammunition for arguing for a broad interpretation.
  3. The specification declares several “objects of the present invention,” including providing internet access. Also, the abstract includes a statement regarding an “agreement between an Internet access provider and a customer.” And, there is no specific language indicating that these statements are directed at “alternative embodiments.” [Note here, a distinction between alternative embodiments and optional functions.]

Affirmed.

Federal Circuit Affirms Narrow Construction of “Internet Billing Method”

Patent,

Netcraft Corp v. eBay and PayPal (Fed. Cir. 2008)

Netcraft sued eBay and PayPal for infringement of its patents that cover an “internet billing method.” During claim construction, the Western District of Wisconsin found that the limitation of “providing a communications link through equipment of the third party” requires that an infringer “provid[e] customers with internet access.” Of course, eBay and PayPal do not provide internet access.

On appeal, the Federal Circuit affirmed the claim construction and summary judgment of non-infringement.

Three reasons why the claim was narrowly construed:

  1. In many cases, claim construction issues are won or lost in the process of defining which “term” is going to be construed. The patentee argued that the term “communications link” was broadly written and amenable to broad construction. The defendants argued that the element in question was actually the entire process of “providing a communications link through the equipment of the third party.” That entire process is more amenable to a narrow interpretation.”
  2. The patentee did not help its cause by adding the “communications link” to the claims during prosecution. The term is not used anywhere in the specification – consequently, the patentee had little ammunition for arguing for a broad interpretation.
  3. The specification declares several “objects of the present invention,” including providing internet access. Also, the abstract includes a statement regarding an “agreement between an Internet access provider and a customer.” And, there is no specific language indicating that these statements are directed at “alternative embodiments.” [Note here, a distinction between alternative embodiments and optional functions.]

Affirmed.

Patently-O Bits and Bytes

Patent,
  • Model Jury Instructions: More on this in an upcoming post. At Judge Michel’s request an all star cast of patent law experts have hammered out a set of model jury instructions for patent infringement actions. [Link][Comments welcome to PatentJuryInstructions@gmail.com]
  • BPAI Appeal rules have been stayed – Most likely until after January 20.
  • Two keen jobs:
    • Fellow at Berkeley Law School (Sponsored by Microsoft). Apply by February 1, 2009 [Link]
    • Appellate Litigator for the USPTO Solicitor’s Office. Apply by January 9, 2009 [Link]
  • Does stare decisis apply to a previous court’s unappealed claim construction decision? See Shire v. Sandoz
  • Donoghue: “Breach of Patent Settlement Does Not Create Federal Jurisdiction” [Link]
  • Barkoff: “Federal Circuit Affirms $16.8 Million Award of Fees to Takeda in Pioglitazone Case” [Link]
  • In house counsel Brian Schar writes the American Intellectual Property Abstract (American IPA)
  • Mullin provides an update on the Troll Tracker defamation suit.
  • The Trading Secrets blog has some useful information on protecting rights via employee agreements. [Link]

Patently-O Bits and Bytes

Patent,
  • Model Jury Instructions: More on this in an upcoming post. At Judge Michel’s request an all star cast of patent law experts have hammered out a set of model jury instructions for patent infringement actions. [Link][Comments welcome to PatentJuryInstructions@gmail.com]
  • BPAI Appeal rules have been stayed – Most likely until after January 20.
  • Two keen jobs:
    • Fellow at Berkeley Law School (Sponsored by Microsoft). Apply by February 1, 2009 [Link]
    • Appellate Litigator for the USPTO Solicitor’s Office. Apply by January 9, 2009 [Link]
  • Does stare decisis apply to a previous court’s unappealed claim construction decision? See Shire v. Sandoz
  • Donoghue: “Breach of Patent Settlement Does Not Create Federal Jurisdiction” [Link]
  • Barkoff: “Federal Circuit Affirms $16.8 Million Award of Fees to Takeda in Pioglitazone Case” [Link]
  • In house counsel Brian Schar writes the American Intellectual Property Abstract (American IPA)
  • Mullin provides an update on the Troll Tracker defamation suit.
  • The Trading Secrets blog has some useful information on protecting rights via employee agreements. [Link]

New Patent Appeals Rules: Delayed by Whitehouse OMB

Patent

Patent applicants appealing examiner decisions do not need to comply with the USPTO’s new appeal brief rules that were set to become effective on December 10, 2008. According to the notice to be published tomorrow: The PTO “will notify the public when the revised effective and applicability dates are set. In the subsequent notification, the Office will provide at least a 30-day time period before the BPAI final rule 2008 becomes effective.”

http://www.federalregister.gov/OFRUpload/OFRData/2008-29297_PI.pdf

As noted previously on Patently-O. David Boundy of CantorFitz has led the charge against implementation of these new rules. Boundy notes the fact that Jon Dudas signed the FR notice on December 5, but as of this writing (Dec 9 at 5:23pm), there is still no notice on the USPTO website.

Post-Reexamination Litigation Estoppel

Patent,

Acco Brands, Inc. v. PC Guardian Anti-Theft Products, Inc., 3-04-cv-03526 (N.D.Cal., December 4, 2008).  

Infringers have long been reticent about filing for inter partes reexamination. One problem is the estoppel provision – 35 U.S.C. § 315(c) – that limits the claims that the third-party requester can later make in court. In particular, Section 315(c) is written to estop the third party requester from later asserting an invalidity defense in litigation if the third-party requester “raised or could have raised” the ground during the reexamination. (The estoppel provision only applies once the PTO determines that the challenged claim is valid).

35 U.S.C. §315(c): A third-party [inter partes] requester … is estopped from asserting at a later time, in any civil action … the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.

In this case, the PC Guardian had requested an inter partes reexamination based on several prior art references. However, upon consideration, the PTO confirmed that the claims were patentable.

In the ensuing infringement litigation, PC Guardian made an end-run around the estoppel argument. For its non-infringement contention, PC Guardian presented three 1980’s Macintosh portable computers as prior art. According to the defendant’s argument, the physical computers when seen in combination with the references considered by the PTO rendered ACCO’s patent obvious.

Because reexaminations are restricted to considering only patents and printed publications, the district court agreed that Section 315 does not estop PC Guardian from asserting the combinations during litigation.

File Attachment: PCGuardian.pdf (84 KB)

During prosecution, claims are indefinite when amenable to multiple plausible constructions

Indefinite, Patent,

Ex parte Miyazaki (BPAI Precedential 2008)

In a rare precedential opinion, the Board of Patent Appeals and Interferences (BPAI) has re-defined the standard for a §112 indefiniteness rejection during patent prosecution. The BPAI’s definition for pre-issuance indefiniteness focuses on ‘plausible’ indefiniteness and varies dramatically from the Federal Circuit’s standard of ‘insolubly ambiguous.’ The BPAI argues that a lower threshold of ambiguity is justified pre-issuance because it gives the PTO power to ensure that claims are “precise, clear, correct, and unambiguous.”

As such, we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.

The expanded indefiniteness examination runs parallel to the PTO’s approach of broadly construing claims during prosecution. Both tactics are intended to better ensure that issued patents can be counted-on as being valid patents.

The Federal Circuit’s insolubly ambiguous standard is premised on the strong presumption of validity associated with an issued patent. The BPAI grounds its lower threshold in the notion that patent applications have no presumption of validity.

Read the BPAI Miyazaki Opinion: /media/docs/2008/12/fd073300.pdf

Patently-O Bits and Bytes

Patent
  • Law School Hiring: This year has been dismal for law student hiring. There are many 2Ls and 3Ls who are hopeful patent attorneys, but do not have jobs lined up yet or even serious prospects. In past years, those students would have been already snapped up by the big players. Contact me (dcrouch@patentlyo.com) if you are interested in looking at some Mizzou law resumes.
  • Crocs: Helping keep the streets free of ugly shoes (as well as microscopic fungi), Sketchers has agreed to stop selling its molded footwear. Crocs had sued for design patent and trade dress infringement. Crocs, Inc. v. Skechers U.S.A., Inc., Case No: 1:08-cv-01450-RPM (D. Co 2008).
  • Wall Street Journal Patent News:
    • Medicis Pharmaceuticals (NYSE) climbed 2.26, or 20%, to 13.38, as the Scottsdale, Ariz., skin-products maker agreed to settle a yearlong patent dispute with Impax Laboratories over a generic version of Medicis’ acne drug Solodyn.
    • Falling 7.67, or 46%, to 8.95, Tessera Technologies, a San Jose, Calif., company specializing in semiconductor packaging, was handed a setback when an International Trade Commission judge said six big chip makers didn’t infringe its patents.
  • Future of the PTO: On December 11, 2008 in DC, Chris Katopis will moderate an historic panel of former PTO Leaders: Dickinson, Lehman, Mossinghoff, and Godici. Free Live or via Telephone. Details, RSVP, and call-in info from TLiszka@comptia.org.
  • Santa Clara Computer and High Technology Law Journal’s 25th Annual Symposium: January 30, 2009 in San Jose. I will be presenting some ideas on attorney ethics and inequitable conduct. Other topics include developments in non-practicing entity patent litigation and litigation before the ITC.

Patently-O Bits and Bytes

Patent
  • Law School Hiring: This year has been dismal for law student hiring. There are many 2Ls and 3Ls who are hopeful patent attorneys, but do not have jobs lined up yet or even serious prospects. In past years, those students would have been already snapped up by the big players. Contact me (dcrouch@patentlyo.com) if you are interested in looking at some Mizzou law resumes.
  • Crocs: Helping keep the streets free of ugly shoes (as well as microscopic fungi), Sketchers has agreed to stop selling its molded footwear. Crocs had sued for design patent and trade dress infringement. Crocs, Inc. v. Skechers U.S.A., Inc., Case No: 1:08-cv-01450-RPM (D. Co 2008).
  • Wall Street Journal Patent News:
    • Medicis Pharmaceuticals (NYSE) climbed 2.26, or 20%, to 13.38, as the Scottsdale, Ariz., skin-products maker agreed to settle a yearlong patent dispute with Impax Laboratories over a generic version of Medicis’ acne drug Solodyn.
    • Falling 7.67, or 46%, to 8.95, Tessera Technologies, a San Jose, Calif., company specializing in semiconductor packaging, was handed a setback when an International Trade Commission judge said six big chip makers didn’t infringe its patents.
  • Future of the PTO: On December 11, 2008 in DC, Chris Katopis will moderate an historic panel of former PTO Leaders: Dickinson, Lehman, Mossinghoff, and Godici. Free Live or via Telephone. Details, RSVP, and call-in info from TLiszka@comptia.org.
  • Santa Clara Computer and High Technology Law Journal’s 25th Annual Symposium: January 30, 2009 in San Jose. I will be presenting some ideas on attorney ethics and inequitable conduct. Other topics include developments in non-practicing entity patent litigation and litigation before the ITC.