Engate, Inc. v. Esquire Deposition Services (N.D. Ill. 2004)
In a patent infringement suit over Engate’s patented real-time transcription service technology, the District Court dismissed the defendant’s unfair competition counterclaim and granted in part defendant’s summary judgment of invalidity. The court looked to instances of real-time transcription in some courtrooms as evidence of public use sufficient to invalidate some of the claims.
Via InventBlog: The USPTO has a Quick Reference Guide (QRG) available that provides “step-by-step instructions on accessing Public PAIR.” The QRG in combination with the CBT Video should help get everyone up-to-speed on the new system.
The USPTO has released a computer based training video for their new Public PAIR system. The training materials are available here in .zip format.
IN RE CHATAM INTERNATIONAL INCORPORATED (Fed. Cir. 2004) (Trademark Case)
The Federal Circuit (RADER with CLEVENGER and SCHALL) affirmed the TTAB’s decision to refuse to register the mark JOSE GASPAR GOLD in connection with tequila because of a perceived likelihood of confusion with GASPAR’s ALE.
Although the two names had only GASPAR in common, the court found that the other terms could be disregarded from the analysis because 1) ALE is generic; 2) GOLD establishes premium quality rather than name recognition; and 3) JOSE simply reinforces GASPAR as a name.
The court also supported the Board’s finding of a close relationship between tequila and beer or ale.
In this case, as in Majestic Distilling, the Board correctly determined that tequila and beer or ale are inexpensive commodities that consumers would be unlikely to distinguish by manufacturer.
LINK: Liburdi Engineering of Ontario Canada has requested an inter partes reexamination of Sermatech’s patent covering diffusion bonding of gaps in alloys. (U.S. Patent No. 6,520,401).
Stephanie Kehrer provides this advice (perhaps she has learned from experience):
Please be advised that the U.S. Patent and Trademark Office does not accept double-sided documents.
Link: At least in the DVD market, Chinese companies are being forced to respect patent rights — and thus losing their competitive advantage.
According to Chen Xiang, secretary of the branch of the audio and video products of the [China Chamber of Commerce], the charge of patent fees, which weakened the products’ export competitiveness and eroded their profit margin, led to [a] decrease [in exports].
ELSTER ELECTRICITY v. SCHLUMBERGER (Fed. Cir. 2004) (NONPRECEDENTIAL)
In this appeal of a summary judgment of invalidity for lack of enablement, the Federal Circuit affirmed.
Elster’s patent relates to a power supply of an electric energy meter that uses a specialized transformer. (U.S. Patent 5,457,621). At the district court, the judge found that the patent lacked enablement because the specification only enabled a “controller that responds to the third winding,” while the claim required a response to the “second winding.” Elster appealed, but the Appellate Panel affirmed, holding that the “written description fails to teach a response between the second and third winding, the district court ccorrectly concluded that [the] claims … were not enabled.”
The past twenty years has seen increadible increases in the number of patents both applied for and issued. In her most recent paper (PDF), Berkeley professor and empirical whiz, Bronwyn Hall, examines patenting data and arrives at some interesting conclusions.
1) Although patenting has increased in most technological fields, the explosive growth is largely accounted for by electrical and computing fields.
2) The explosion is drivin, for the most part, by U.S. firms, with some contribution from Asia and Europe.
3) Patenting has become a critical signal of viability for new entrants in many industries.
Professor Hall’s data shows that in most industries, increases in patenting were drivin by new entrants. However, patenting increases in electrical and computing industries were accomplished by a shift in patenting by industry stalwarts.
The figures reveal the following interesting fact: although the jump in patent applications within the U.S. occurred in all technology classes, when we look by broad industry class, we find that it occurred only in firms that are in the electrical, computing and instruments industries. That is, the increase in chemicals, mechanical and other technologies appears to have been driven by increasing patenting activity by firms that were not traditionally in these industries. This result is consistent with the view that there has been a major strategic shift in patenting in the electrical/computing industries, but not in other industries.
UPDATE: Professor Hall provided a correction to my original interpretation of her results. She interprets her results as showing “that patents held by new entrants in the electrical and computing industries became more valuable post-1985 than those held by incumbents, whereas there was no change in the chemicals-based sectors.”
According to Hall, new entrants need patents to as a basic proof of concept or a show of viability. Incumbents, on the other hand, often use patents defensively to ward off litigation and for cross-licensing. Thus, for an incumbent, a large patent portfolio may be an indication that it fears being sued for infringement.
InventBlog: In an infringement case involving software for remotly downloading information (screen recognition and terminal emulation), a SDNY court recently quashed the defendant’s motion to depose the attorney who drafted and prosecuted the patent applications. In its decision, the court applied 2nd Circuit law disfavoring depositions of opposing counsel.
Lansa wanted to depose Mr. Kaplan on the prosecution of the patents, his communications with the Patent Office, prior art on the software and draft patent applications. It argued that the law of the Federal Circuit should apply.
Judge Sweet said that in “procedural issues not unique to patent law,” the Federal Circuit defers to the regional circuits.
The Second Circuit, he said, disfavors depositions of opposing counsel because they risk disrupting the attorney-client relationship and impeding litigation.
Comment: If this decision holds, it may push more patent litigation to botique firms that both prosecute and litigate patents.
On this date in 1790, the very first U.S. patent was granted to Samuel Hopkins on a process for manufacturing potash. Potash can be any material containing potassium. However, potash is most commonly potassium carbonate derived from wood ashes. The term arises from the process of extracting lye from wood ashes in iron pots. Potash can be used in glass making:
Glass made with potash becomes rigid more quickly and becomes harder and more brilliant than soda glass.
www.guadalupeglass.com/Glossary.html
Historically, trade secrets arose under common law. Today, every state provides some form of trade secret protection – although the level of protection varies from state to state. The Uniform Trade Secrets Act (UTSA) has been ratified by many states and has helped to establish a more uniform body of law across the country.
A trade secret can take many forms, such as a device, method, or formula that provides some competitive advantage or has independent economic value. The holder of the trade secret must make reasonable efforts to ensure that the subject maintains its secrecy.
Mars v. Heinz & Del Monte (Fed. Cir. July 29, 2004).
Mars filed a patent infringement suit against Heinz, alleging infringement on its patented pet food. (U.S. Patent 6,312,746)(A dual texture animal food product with a soft inner component surrounded by a harder, more rigid shell). After a Markman hearing, the district court issued summary judgment of noninfringement to Heinze.
On appeal, the Federal Circuit breathed new life into Mars’ claims by issuing a new construction of claim terms and remanding.
We conclude that: (1) “ingredients” as used in the phrase “a mixture of lipid and solid ingredients” refers to the components of the inner core at any time after they have been mixed together, and (2) the phrase “containing a mixture” is open-ended. Thus, the claim language, “containing a mixture of lipid and solid ingredients,” does not exclude the presence of additional, unnamed ingredients in the inner core mixture that are neither lipids or solids. Since genuine issues remain as to infringement under this construction, we vacate the district court’s grant of summary judgment of non-infringement and non-infringement under the doctrine of equivalents and remand for further consideration.
Vacated and Remanded
High Concrete Structures v. New Enterprise Stone and Lime (Fed. Cir. July 29, 2004).
On appeal from a district court’s summary judgment based on failure to comply with the best mode requirement, the Federal Circuit (Newman, Mayer, Clevenger) reversed and remanded.
High Concrete sued New Enterprise for infringement of its patent on “double-tees” for adjusting the orientation of bulky cargo. (U.S. Patent No. 5,947,665). On defendants’ motion, the district court held the patent invalid for “failing to disclose that the inventors’ preferred mode of practicing the invention was to use the crane to tilt the loaded frame at the time that the crane loaded the cargo onto the frame.”
The appellate panel reversed:
Deliberate concealment is not charged. The best mode requirement of §112 is not violated by unintentional omission of information that would be readily known to persons in the field of the invention … Known ways of performing a known operation cannot be deemed intentionally concealed absent evidence of intent to deliberately withhold that information.
Bill Gates announced today his plans to move Microsoft to the “front of the pack” in terms of patent filings.
Microsoft plans to file more than 3,000 patents in fiscal 2005 compared with “something over” 2,000 patent filings the previous year, Gates said.
According to Patent Office Registration Statistics, Microsoft currently employs 29 patent attorneys and 2 patent agents.
Stephen Nipper’s excellent intellectual property blog is getting a makover and a new name. Its new home is www.inventblog.com. Nice work Stephen!
SnippetsTM provides a review of timely developments in intellectual property law. Here is a table of contents of the most recent issue (July 2004):
1. Brian Harris, Caveat Sender: Unintentional Disclosure in Electronic Documents.
2. Thomas Fairhall and Paul Churilla, The Intersection of Trade Secrets and Patent Law: The Prior User Rights Statute, 35 U.S.C. 273.
3. Andrew Williams, Electronic Laboratory Notebooks: Improved Data Storage or Increased Burden.
4. Eric Moran, Festo Extended: Honeywell v. Hamilton Sundstrand.
Those interested can request a pdf version of the publication by emailing the editor.
The US Patent Office keeps track of all registered patent attorneys. (Patent Attorney Listing). Using this data, we compiled a rank based on the number of patent attorneys in various cities. Washington DC remains the patent attorney stronghold, although its number one rank may be fading as proximity to the PTO becomes less and less useful. New York and Chicago have their fair share of patent attorneys. LA, on the other hand, is at number nine in terms of the number of patent attorneys even though it has the second largest population of any city in the U.S.
Rank/City
1. Washington DC
2. New York NY
3. Chicago IL
4. Houston TX
5. Boston MA
6. Minneapolis MN
7. Palo Alto CA
8. San Diego CA
9. Los Angeles CA
10. Dallas TX
11. Philadelphia PA
12. San Francisco CA
13. Austin TX
14. Atlanta GA
15. Alexandria VA
Tim Uy of oncloud8 has developed a simple tool for finding a patent attorney in your area. (Patent Attorney Locator). Tim’s tool probably works best for those who want to hire a patent attorney that works right next to where you live.
Comments on hiring a patent attorney: Although there are some times when proximity is helpful, it may not be in your best interest to hire a patent attorney just because he or she is located in your zipcode. Modern technology (telephone, fax, e-mail, internet) allows for easy communication and transfer of documents. Just this past week, for example, I worked with inventors or companies located in India, California, Florida, Connecticut, Indiana, and Illinois!
Another Ronald A. Katz patent is up for reexam. An ex-parte reexamination has been requested for U.S. Patent No. 5,561,707 (Telephonic-Interface Analysis System). Interestingly, this same patent is undergoing a director ordered reexamination.
More info here.
Does anyone know what is happening in this case?
The USPTO has announced that
Dean Kamen, one of the world’s best known and most successful inventors, will be the keynote speaker at the opening session of the USPTO’s annual Independent Inventors Conference in Concord, N.H. on Friday, August 20.
Dean Kamen is Chairman of Segway LLC, an inventor and a physicist. “His inventions include a portable dialysis machine and the Segway™ Human Transporter.”
Registration is available online.