Patentable Subject Matter in Boston:

• On March 16, 2007, I’ll be speaking at Harvard Law School as part of the Journal of Law & Technology’s 20th Anniversary Symposium titled: “Progress of Science and Useful Arts” My panel will be discussing “The Outer Limits of Patentable Subject Matter.” Registration is FREE.

LexisNexis and Amazon

• If you are not satisfied reading this free version of Patently-O, you can now get the same content through LexisNexis for a fee. Lexis has begun archiving content from a select group of “web blogs” including Patently-O.  Unfortunately, they will not be including some of our best content — reader comments.
• On the other hand, if you are satisfied with this free version of Patently-O, you should think about using the site as a portal for purchasing your books and other junk from Amazon. If you click on an Amazon link from my site, I get about 6% for any item that add to your cart during that session.  (I only need about $2.6 million in sales to reach to the income level of a first-year associate).  
• In response to a comment, I’ll mention that the books linked through Amazon are all books that I have read or at least browsed through and found redeeming value. In some cases, like Alan Durham’s book and Patent-it-Yourself, I have the earlier edition.  I have given Patent-it-Yourself to a number of clients, including corporate counsel and inventors.  For the most part, they followed some of the advice in the book, but none of them decided to ‘patent it themselves.’

In re Princo (Fed. Cir. 2007).

28 U.S.C. § 1659 is designed to prevent separate proceedings on the same issues occurring at the same time in both Federal District court and before the International Trade Commission.

In this case, the district court had stayed its proceedings pursuant to Section 1659, but then reopened the litigation after ITC issued a general exclusion order prohibiting importation of infringing R/RW compact discs.

On writ of mandamus, the CAFC found that the stay should not be lifted until the ITC order is final and all appeals exhausted.  In making its decision, the CAFC also provides an extensive analysis of when it will (and will not) hear appeal prior to a final judgment.

Notes:

• Read the decision
• Prior Princo Decision
• Prior Princo / Philips decision

Rumors: A usually reliable (but anonymous) source recently spoke to one of his reliable sources who is close to several high-level PTO officials.  According to the chain of gossip, implementation of the much-discussed continuation and claim restrictions (in modified form) is now “highly likely.”  Apparently, the exact rules are to-be kept under lock-and-key until published this summer. Once published, there will be no opportunity to get continuations-in under the old rules. I have been assured by the PTO that that there will be at least 30-60 days advance notice to the public.

This new rumor flies in the face of another rumor that comes through Hal Wegner. According to Professor Wegner: “A highly reliable source has just reported that Under Secretary Jon W. Dudas during a Silicon Valley swing this past week has assured industry leaders that the continuation rules are – in the words of one observer – “dead as a doornail”.” It appears now that the more likely rumor is “alive and well.”

I guess we’ll just wait and see. . .

AquaTex Indus. v. Techniche Solutions (Fed. Cir. 2007).

AquaTex owns a patented multi-layered, liquid-retaining material used in evaporative cooling garments. Techniche is accused of infringement.

In an earlier decision, the CAFC asked the lower court to examine whether Techniche’s products infringed under the doctrine of equivalents (DOE).  And again, the district court found that the DOE could not extend the AquaTex patent to cover Techniche’s activities — holding that (1) a narrowing amendment during prosecution estopps AquaTex from asserting the DOE and (2) AquaTex failed to prove that the asserted equivalent (filler layer) performs “substantially the same function in substantially the same way” as the patented method.

Prosecution History Estoppel: “The surrender of subject matter during prosecution creates a presumption that the patentee is precluded form recapturing that subject matter through the doctrine of equivalents; this presumption can be rebutted by . . . a showing that the amendment was unrelated to patentability.” 

DOE is executed on an element-by-element bases, and, taking a step back, CAFC noted (for the second time in this case) that estoppel only applies if the narrowing amendment bears a direct relation to the alleged equivalent element. Here, there was no direct relationship because the amendment “was directed to a completely different claim limitation.”

Thus, the district court erred in applying prosecution history estoppel

Function-Way-Result: The standard test for infringement under the doctrine of equivalents requires that each element of the asserted claim either be infringed literally or under the DOE. An element infringes under the DOE if claimed element differes insubstantially from the accused product or if the asserted element performs the substantially same function in substantially the same way with substantially the same result.

The meaning of “substantially the same” is informed both by the claim language and the specification itself. However, the inquiry “leaves no room for consideration of the patentee’s product.” Here, the lower court used the patentee’s description of the product on its website to determine that the function of the claimed filler layer element included hydrophobic activity.  That was an error because it shifted the focus from the patent to the product.

Evidence: Finally, for a patentee to win on DOE, it must present “particularized testimony and linking argument on a limitation-by-limitation basis” showing equivalence. The gold-standard for this evidence is the testimony of a qualified PHOSITA — “typically a qualified expert, who (on a limitation-by-limitation basis) describes the claim limitations and establishes that those skilled in the art would recognize the equivalents.”

Here AquaTex had only provided lawyer argument and generalized testimony about the accused product. The CAFC found the evidence lacking and thus that the defendant should be awarded summary judgment of non-infringement.

Notes:

• Does anyone know if expert reports had been submitted yet in this case?
• Read the case

Quite amazing technology.  Mr. Roller’s abstract reads:

Chris Roller wants exclusive right to the ethical use and financial gain in the use of godly powers on planet Earth. The design of godly-products have no constraints, just like any other invention, but the ethnic consideration of it’s use will likely be based on a majority vote of a group, similar to law creation. The commission I require could range from 0-100% of product price, depending on the product’s value and use.

Claim 1.

Godly powers are being used on planet Earth. For example, technology (i.e. Electronic and Medical) is being assisted by godly powers throughout the planet. Godly powers could be used prior, during, and after godly product/procedure. For example; Before–in the making of a device, like a micro-processor chip. During–in the operation of a device, like an inkjet printer cartridge. Afterwards–like gradual scar removal from breast implant surgery. A magician might perform magic before, during, and after, for any given trick (“illusion”).

My question, of course, is why the PTO classified this application as an optical amplifier in Class 359? 

Credit: Patently-O reader Helen Samson (Nufern) ran across this application while scrolling through new optical patent applications.

Background Reading:

• View the Patents Application
• Roller’s employment suit against David Copperfield for unlawful use if his Godly Powers
• YouTube Discusses the Lawsuit
• Podcast with Mr. Roller
• Roller’s Website

In Feb-06, we discussed the Worsley-Twist warp drive patent application. The Worsley-Twist warp drive does not depend upon traditional emissions of matter to create thrust.  Rather, the warp-drive creates a change in the curvature of the space-time continuum — thus allowing travel by warping space-time.  At that time, we noted that the Worsley & Twist patent application recently suffered a major setback — with the Examiner requesting a model of the invention. Although rarely implemented, 35 U.S.C. 114 allows the PTO to “require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention.” Among other rejections, the Examiner has asserted a rejection under 35 U.S.C. 101 for lack of utility — finding that the invention is inoperable.  In this case, it looks like the cost of building the model and proving utility were too much as the application appears to have been abandoned.

Volkswagen Branding-Energy

Since we have been focusing on pendency, I also looked back to the still-pending Branding-Energy patent application to see whether any action has been taken on this application that was filed in August 2003 — still no substantive action.  Since this application has been classified in TC 705, an initial office action is expected within the next nine months.

The abstract reads:

A branding-energy amplifier for amplifying the branding-energy of the Volkswagen Beetle. Branding-Energy Amplifier established upon the principle of Node Plurality.

As explained in the specification:

If you were to see a singular Marilyn Monroe walking down the street, you probably would notice.  If, however, you were to see 88 Identical Marilyn Monroes’s single filing fashionably in parade-dress parade, you would likely stop whatever you were doing and stare in exasperated amazement wondering all the while what in the world was going on. . . . By extension then, a Volkswagen beetle limousine with 88 humps, does not look the same, does not function the same, and is, in fact, not the same, as a Volkswagen beetle with 1 hump because they do not share identical Automotive DNA.

View the Volkswagen Beetle Branding Energy patent at Pat2PDF.  

In 2006, PTO relations with the patent bar were near nadir because of a proposed set of rules that would radically change the practice of filing continuation applications. Although patent attorneys generally avoid public comment, the continuation proposal led to several hundred public submissions.(n1) 

Many of the comments argued that continuations only play a minimal role in increasing pendency. Using a sample of 10,000 recently issued patents, I wanted to see whether the technology areas with the largest pendency are flooded with continuation applications. A strong correlation would indicate that the PTO was correct in its assessment that continuations are a major cause of the ‘pendency crisis.’

For each technology classification, I calculated two primary statistics: (1) the average pendency of the issued patents (months from filing the application until issuance) and (2) the prevalence of continuations (as measured by the percentage of issued patents that had either one or more non-provisional parent or multiple provisional parents).

As it turns out, there does not appear to be much correlation at all.(n2) The lack of correlation is exemplified when looking at the technology areas on the extremes. For instance, there is no overlap between the top-ten-percent of classes with the highest pendency and the top-ten-percent of classes with the highest prevalence of continuations.

As can be seen in the linked Google Spreadsheet, technology areas of chemistry and drugs have the highest rates of patenting continuations. For those areas, over half of the issued patents are continuations.

Notes:

• Spreadsheet of Results
• Cite as Dennis Crouch, “Prosecution Data: Continuations,” Patently-O, February 23, 2007.
• n1: At this point, the rules have neither been implemented nor discarded.
• n2: I suspect that with a larger sample size, a small but statistically positive correlation would be identified.

Yesterday, a reporter asked me why Microsoft, a major patent holder, is continually arguing that patents are too strong.

Exhibit A: $1.5 billion verdict for Alcatel.

According to reports, about half of the damage award is based on foreign sales under 271(f).

In a somewhat random fashion, I pulled up a few file histories for patent applications classified in Class 705 (Business Methods) to see the extent that the PTO is asserting unpatentable based on the statutory subject matter requirements of 35 USC 101. I have attached a few of the exemplary statements from PTO Rejections:

Post Lundgren:

Lundgren Contemporary:

Pre-Lundgren:

Notes:

• E.g., 20040138927, 20020095346.

The Takings Clause of the Fifth Amendment to the US Constitution provides that the Government shall not take private property “for public use, without just compensation.”  The question now before the Supreme Court in Zoltek is whether patent rights constitute private property protectable under the Fifth Amendment.

Zoltek’s Fifth Amendment claim was denied by the CAFC and Zoltek has now petitioned the Supreme Court to hear its case. According to petitioner’s counsel, amicus briefs will be due by March 22, 2007 unless the Government requests an extension of time to file its response (something that is likely).

For many Patently-O readers, this case is a no-brainer — just like you thought that patents came with a right to exclude . . .

[More to come in a later post] 

Notes:

• Zoltek Petition For Certiorari [PDF]
• Zoltek Petition Appendix [PDF]
• Patently-O Discussion of the CAFC Opinion
• Patently-O Discussion of the Rehearing Denial
• This case, of course, is great because it involves F22’s.

Sevenson Environmental v. Shaw Environmental (Fed. Cir. 2007)

Colonie NY has a lead-contamination problem. The site is owned by the US Government, and Shaw was hired to help with the remediation. Sevenson holds several patents on methos for cleaning up waste by applying phosphoric acid. Sevenson sued Shaw for infringement, but the district court dismissed the case — finding that the US Gov’t is the proper defendant.

Shaw’s contract with the US Gov’t authorize shaw to “all use and manufacture” of any patented invention whose use is necessary to comply with the contract. The contract dovetails with 28 USC 1498, which provides that a patent holder’s claims arising out of a a contractor’s infringement accure against the US and must be brought in US Court of Federal Claims. (So long as the contractor’s infringement was “for the United States” was authorized by the US).

Government Authorization: Although Gov’t authorization is generally narrowly construed, the appellate panel agree that the Government had authorized use of Sevenson’s patented method because Shaw’s written specifications called for use of those methods and those specs formed part of Shaw’s binding contract.

Holding: The lower court properly dismissed Sevenson’s claims. If Sevenson wants an award, it must pursue the US Gov’t in the Court of Federal Claims.

On Friday, Senator Barack Obama (and former University of Chicago Law Professor) along with Senators Levin (D-Mich) and Coleman (R-Minn) filed a new bill to “stop tax haven abuse.” Included in the bill is a provision that would prohibit the USPTO from issuing patents for:

inventions designed to minimize, avoid, defer, or otherwise affect liability for Federal, State, local, or foreign tax.

The main focus of the Bill would be to “impose tougher requirements on U.S. taxpayers using offshore secrecy jurisdictions, give the U.S. Treasury the authority to take action against foreign jurisdictions that impede tax enforcement, stiffen penalties against abusers and close offshore trust loopholes.”

Please: No comments that are not about patents.

Notes:

• Press Release
• Washington Post Coverage
• Paul Caron Introduces the Bill

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 3.8 year delay in Electronic Commerce (TC 3620) means that the applications receiving first office actions during the past three months were filed 3.8 years ago on average — taking us back to early 2003.  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.).