Vanderlande Industries v. ITC (Fed. Cir. 2004)

Patent, Patent Cases 2004

shoepatent
Vanderlande Industries v. International Trade Commission

The Appellate Court affirmed the ITC’s holding that Vanderlande unlawfully imported a sorting system. (U.S. Patent No. 5,127,510). Vanderlande was unable to show that the patent owners (Siemens/Rapistan) committed the first element of equitable estoppel:

(1) The patentee, who usually must have knowledge of the true facts, communicates something in a misleading way, wither by words, conduct or silance.

Thus, the court found no estoppel. Additionally, the ITC’s claim construction was affirmed.

Patent Pooling

Articles and Publications, Patent

Richard Gilbert has a new article in the Stanford Tech Law Review discussing patent pooling and antitrust.

There is no simple prescription to determine when a patent pooling arrangement is anticompetitive. . . . Antitrust evaluations should begin with a study of the competitive relationships of the patents involved in the pool. Unfortunately, this is not a simple task. . . . If the pool combines many patents, each of which can block the use of a technology, a challenge to the pool is not likely to affect prices unless all of the blocking patents are shown to be invalid or not infringed.

JuNelle Harris Co-EIC of STLR emailed that they are seeking contributions for their “Perspectives” section:

STLR Perspectives features concise, readable analyses of cutting-edge technology law and policy issues. High quality, law-focused work by scholars, students, practitioners, and advocates is welcomed. Submissions should be no more than 15 pages in length, double-spaced and including footnotes, and will be considered on a rolling basis.

Playwright Licensing and Antitrust

Patent, Patent Legislation

Senator Hatch recently inroduced the Playwrights Licensing Antitrust Initiative Act of 2004 in the Senate. (S. 2349). According to the Bill,

the antitrust laws shall not apply to any joint discussion, . . . or agreement for the express purpose of, and limited to the development of a standard form contracting minum terms of artistic production and levels of compensation for playwrights.

The Bill appears to essentially allow playwrights to collectively bargain against producers. Arthur Miller testified in favor of the legislation.

His testimony came 48 years after he was cited for contempt for not cooperating with the House Un-American Activities Committee. He was also blacklisted by Hollywood for refusing to identify fellow artists with possible links to the Communist Party.

(Article)

Patent Office Funding III: Filing Fees

Patent, Patent Legislation

The patent office funding bill (H.R. 1561) seems to become law. Here are some of the proposed changes:

 

Current Fees    

Fees in Bill

Filing Fee

$770

Filing: $300
Search: $500
Examination: $200
Total: $1000

Extra independent claims >3

$86

$100

Claims >20

$18

$50

 

 

 

Long disclosure

$0

$250 for ea. 50 sheets over 100

Electronic Filing

$0

$225 discount

 

 

 

Issue Fee

$1330

$1400

Small entities retain 50% cut.

More patent related legislation commentary is available here.

Patent Infringement Jury

Articles and Publications, Patent

Jennifer Miller has published an iBrief in the Duke Law & Technology Review discussing whether litigants have a right to a jury trial in patent infringement cases. (Article)(PDF) Ms. Miller presents an argument that the seventh amendment does not guarantee a jury trial in complex cases. In addition, she notes that the fifth amendment right to due process may bar a jury “trial where a jury would be unable to perform its job because of a failure to grasp the legal issues or the underlying facts of a case.”

Patent Office Funding II

Patent, Patent Legislation

Matthew Buchanan recently reported on the widespread support for the United States Patent and Trademark Fee Modernization Act of 2004.

It’s very interesting that this bill is enjoying such broad support, considering that it represents a large increase in patent fees. Apparently, the anti-fee diversion provisions and the promises that USPTO will initiate further reforms once diversion ends are so attractive that a significant fee increase has become secondary. (Commenting on the IP Coalition letter (PDF)).

Most patentees spend several thousand dollars on attorney fees but much less on patent office fees. If a modest increase in fees can either 1) increase patent office efficiency or 2) increase patent quality, then most of us will be happy. The patent office has been getting a bad rap lately, perhaps this funding will help turn the tide.

See Part I.

Structured Claim Drafting

Claim Drafting Tips, Patent

Stephen Becker has a useful technique for improving the quality of your claims. (Article).

1. List the elements sought to be protected and their interrelationships.
2. Analyze each element asking:

a) Is the element necessary for preserving functionality?
b) Is the element needed to distinguish over the prior art?
c) Can the element be generalized in a way that retains claim novelty?
d) Can elements be combined in a way that retains claim novelty?

3. Review the entire claim, discarding any words not absolutely necessary for functionality or novelty.

According to Stephen:

Sanitizing the wordage, generalizing terminology and combining claim elements will improve the likelihood of literal infringement, because a competitor will find it more difficult to argue persuasively that a claim element is missing, from its competitive product or service.

Independent IP Firms Alive and Well

Articles and Publications, Patent

IP Worldwide recently ran an article questioning whether independent IP firms are viable in today’s marketplace. (Discussing the fall of Lyon & Lyon). The APLF has offered a response to the article.

The fact remains that very few large general practice firms can offer the depth and breath of expertise, in litigation, prosecution or counseling service, that are the standard offerings of independent IP firms. If the large general firms have an advantage, it is their willingness and ability to devote large budgets to advertise and promote their services. Few independent IP firms have (or desire to spend) the resources that many large general firm devoted to advertising and promoting their IP departments. Of course, those large advertising budgets also give rise to higher billing rates, a separate phenomenon which clients are also coming to recognize.

SmithKline Beecham v. Apotex
(Part IV)

Patent, Patent Cases 2004

In an updated concurrence, J. Gajarsa adds firepower to his disagreement with the newly defined experimental use exception:

According to the majority, SKB’s testing of PHC’s performance as a human antidepressant was not necessary to reduce PHC to practice. The majority does not make clear, however, why testing a light pole’s performance at illumination under severe weather conditions was necessary to reduce the light pole to practice, Manville, why testing an all-weather activity mat’s performance in harsh weather was necessary to reduce the mat to practice, Seal-Flex, or why testing a floating dock’s performance in rough, choppy water was necessary to reduce the dock to practice, EZ-Dock.

In all four cases, the claims at issue were product claims that did not claim the tested features explicitly. In all four cases, the patentees possessed the claimed product in substantial enough form to test their products’ performance at their intended functions. The majority does not explain why only one of these four patentees had reduced its claimed invention to practice sufficiently to preclude the experimental use doctrine.

Read Part I, Part II, Part III, and part IV.

Patent Litigation: preventive measures

Claim Drafting Tips, Patent

The Douglas J. Kline has a nice article in the Technology Review that outlines a typical patent infringement suit. Kline also gives three tips for preparing for litigation well in advance:

1) Thoroughly and diligently prosecute your patents.
2) Learn about your competition and draft patents that cover competitor’s technology.
3) Identify competitor’s patents early in your product development and consider design-arounds.

See my earlier posts on claim drafting tips here and here.

SmithKline Beecham v. Apotex
(PART III)

Patent, Patent Cases 2004

SmithKline Beecham v. Apotex: The concurrence.

Judge Gajarsa filed a Concurrence in SKB based upon his sua sponte analysis of Section 101. SKB had argued that its claimed compound (PHC hemihydrate) had been seeded in the environment and, once seeded, will naturally contaminate any synthetically made PHC anhydrate.

J. Gajarsa agreed that the manufacture of PHC hemihydrate could be “a natural physical process” occurring “under normal climactic conditions and with no human intervention,” and thus found that it was an unpatentable process of nature.

In short, patent claims drawn broadly enough to encompass products that spread, appear, and “reproduce” through natural processes cover subject matter unpatentable under Section 101–and are therefore invalid.

Finally, the Concurrence derided the Majority’s approach, saying that it has created “unfortunate precedent that will complicate future considerations of the experimental use doctrine.”

Read Part I, Part II, Part III, and part IV.

Claim Drafting Tips – Patent Quality

Claim Drafting Tips, Patent


One reason that corporations continue to obtain patents is that a strong patent portfolio can alter Wall Street’s outlook on the portfolio holder. During any merger or large acquisition, the associated patent portfolios should be given some review. In some instances, however, the review may simply take the form a Patent Quality Rating. PatentRatings is one company that calculates and sells such ratings. (U.S. patent 6,556,992).

The quality ratings are purely objective and can be based on a number of factors. Here are some tips to increase your rating:
1) Increase the number of claims.
2) Decrease the length of each claim.
3) Increase the length of the specification.
4) File patent as a continuation or CIPs.
5) Vary the type of claims.
6) Cite more references in your IDS.
7) Cite non-patent references or foreign patents.
8) Limit patent prosecution history.

FYI: U.S. Patent 5,583,591 has been identified with an A+ rating.

Wood Panel Clamp Inventor

Inventors, Patent


Lawrence Devers from Pittsburg, Kansas (my hometown) has recently patented a new hand-operated wood panel clamping tool. (U.S. Patent No. 6,726,192).

Wood panels for cabinet doors are typically constructed from a number of boards that are glued together edge-to-edge to form the complete panel. The panel may then be sanded or planed flat and milled out or routered to produce a design on the front face of the panel. Small cabinet-making shops typically lack a good way of forcing the boards into flat alignment with one another and holding them in such alignment while the panel is being squeezed from the sides by pipe clamps or the like until adhesive between edges of the boards sets up. Typically, cabinetmakers may have to use mallets to pound the boards into place while they adjust and readjust the pipe clamps at various locations along the length of the boards. It can be a slow, tedious, inexact, and sometimes frustrating procedure.

Devers’ invention may work to solve this problem.