Rates Technology and James Hicks v. Mediatrix Telecom (Fed. Cir. 2012)
James Hicks represented Rates Technologies (RTI) in the litigation against the accused infringers (including Mediatrix) in the Eastern District of New York. During discovery, the court found that RTI had failed to adequately answer several interrogatory answers and, as a litigation sanction, dismissed the case and fined RTI and Hicks $43k each. RTI did not appeal. However RTI’s attorney Hicks did appeal – arguing that he should not be personally sanctioned because the information needed to answer the interrogatory was not within his personal possession and because the discovery orders were not directed personally toward him. The Federal Circuit rejected those arguments.
The primary contention interrogatory at issue is perhaps the most basic for any patent infringement case. The question is:
Separately for each claim of the Patents-in-suit that [RTI] contends is infringed, state the basis for that contention, including … identification on an element-by-element basis of the component … of each accused Mediatrix product that allegedly satisfies each element.
RTI apparently never answered this question.
Pre-Filing Information Insufficient: Before filing a patent infringement lawsuit, the plaintiff’s attorneys are required to conduct some amount of reasonable inquiry to comply with Rule 11 of the Federal Rules of Civil Procedure. This typically includes an element-by-element analysis to ensure that the accused products actually infringe the asserted patent. Of course, before filing, the scope of a plaintiff’s knowledge is often limited. The patentee likely lacks technical information associated with the accused products (as well as full knowledge of the defendants’ product lines). Thus, a full infringement contention normally requires some amount of discovery from the accused infringer. Further complicating this cat-and-mouse game of discovery is the fact that plaintiffs prefer to delay fully explaining their infringement contentions in order to maintain flexibility in the litigation and to keep opposing counsel guessing.
One solution proposed by Peter Menell, et al., in their newly updated Patent Case Management Judicial Guide is to require infringement and invalidity contentions be exchanged early in the case – certainly before claim construction. Most local patent rules follow that process and judges then use the contentions in thinking about the claim construction and also to limit discovery. The problem with this approach is that the claim construction tends to significantly alter the case and may well require amendments to the contentions.
The America Invents Act (AIA) expands the opportunity for third-party pre-issuance submissions in patent cases. Beginning September 16 of this year (2012), anyone will be permitted to submit published documents ('printed publications') that are relevant to the examination of a pending application along with a concise explanation of the importance of the documents submitted.
In a recently issued set of final rules, the USPTO outlines the procedures that it has put in place to handle the new filings. Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 F.R. 42150 (2012).
Targeted preissuance submissions offer an extremely inexpensive mechanism for limiting competitor patent scope. The process has little downside (in most cases) but does require additional competitor monitoring. The effectiveness of the process has not been tested. Although the process has major limitations, I believe that it will serve as an effective tool in the hands of skilled practitioners. I have spoken with several attorneys who are already preparing their preissuance submissions to be filed in late September.
Key points:
Implementation: Although the pre-grant submissions cannot be filed before September 16, once that date passes, they may be filed in applications that were already on file with the USPTO. I know of some individuals who are already preparing materials for pre-grant submissions against competitor applications. Presumably they will file those sometime on or after September 16, 2012.
Deadlines: During the legislative process, the PTO supported these third-party submissions, but offered some concern that late-stage submissions could create problems for both patent applicants and for the USPTO examination process. Thus, for most cases the preissuance submission must be filed before the first office action rejection is mailed. In cases where there is no office action rejection or where the PTO works quickly, submissions will be allowed if within an alternative deadline of within six-months of publication. The PTO will not consider any submissions submitted after the notice of allowance.
Requirements: Submissions may be done anonymously and electronically, but must include (1) A list identifying the items being submitted; (2) a concise description of the relevance of each item listed; (3) a legible copy of each non-U.S. patent document listed; (4) an English language translation of any non-English language item listed; (5) a statement by the party making the submission that the submission complies with the statute and the rule; and (6) the required fee ($0 if fewer than three-documents submitted).
Results: The patent examiner is required to consider compliant third-party submissions in preparation for the next office action. The submitted documents will be listed on the face of the patent as considered.
How to make preissuance submissions more effective?: Some may have a more nuanced or longer-term strategy, but the usual realistic goal of a third-party submission is to limit the scope of a competitor's pending application. Barring retaliatory competitor action, the only downside is that a broad patent may still issue with a prosecution history reflecting that the examiner considered the submitted documents. No estoppel is created by the submissions. The identical argument will not be available during a later post grant review and may be more difficult to prove at trial than it would have been if never considered at the USPTO.
Quality Art: The best preissuance submissions will begin with on-point prior art. Examiners will not likely be tolerant of submissions that lack prima facie credibility.
Concise and Well Drafted: There is a large risk of examiners ignoring submissions that appear as a large stack of dense documents. The concise explanation should be designed to quickly lead examiners to a rejection based upon the submitted documents.
Explaining Known Art: Rather than submitting new prior art, applicants may re-submit art already in the file along with an explanation of how the art should be applied.
Reputation: Certain practitioners and entities will earn reputations as filing credible/incredible.
Protect Potential Space: Remember that the patent applicant is still likely to receive a patent. The pre-issuance submission is useful for limiting and defining patent scope. The record will reflect that the patent definitely does not cover X. With the normal unpredictability of claim construction, this defining role result can be quite helpful down the road if the patent is ever litigated. Practicing entities should use the process to clear a path for their own current and potential technology usage. As discussed below, a third party may be satisfied with the applicant adding a definition to a claim term rather than actually amending the claim.
Internal Prior Art: Remember that e-mails and other correspondence can potentially serve as printed publications under the patent laws. (See caselaw on 35 USC 102(a) & 102(b)).
Other Questions of Patentability: The statute calls for the submission of documents “of potential relevance to the examination” and is certainly not restricted to issues of novelty and nonobviousness. The rules do not allow an applicant to simply submit an argument without an underlying published document. For a definiteness issue, a dictionary definition may serve as the hook. For a new-matter question, the document could be the related parent application. For a patentable subject matter issue, the document might be Mayo v. Prometheus.
Arguments Serving as Published Evidence: A third-party challenging enablement might want to hire an expert to study the application; publish an expert report; and then submit the report (along with a concise explanation) following these new procedures. This approach appears to fit within the statute that allows the submission of “any … printed publication of potential relevance.” However, in its notice of final rules, the USPTO has indicated that it will not accept materials created and published merely for the purpose of challenging the pending application in question. The USPTO appears to understand that the statute is broadly written and thus does not directly prohibit the filing of such documents. The Office instead concludes that the submission would be rejected because the required concise explanation of such a document “would likely be deemed an improper attempt by the third party to impermissibly participate in the examination of the application because the relevance of the document being described is its discussion of the patentability of the application.” In this sense, the Office seems to be setting up a conflict between these new submission procedures found in 35 USC 122(e) and the prohibition on protests and pre-grant oppositions left unamended in 35 USC 122(c).
I believe that the USPTO is probably wrong on its analysis of the law here — in many (if not most) cases, this type of evidence should be allowed under the law. The statute does not provide a particular mechanism for challenging the PTO's refusal to consider these submissions, but the Office is unlikely be convinced on petition without resorting to the filing of a federal case. As an aside, the filing of a non-compliant submission will likely trigger the applicant's duty of disclosure. In that case, the applicant will likely re-file the submission as part of an information disclosure statement.
Note: Some of these ideas came from reading Hal Wegner's useful report on Third Party Submissions: The Final Rule.
Bard Peripheral v. W.L.Gore (Fed. Cir. 2012) (on rehearing)
In an important decision, the Federal Circuit has ruled that the “objective prong” of the test for willful patent infringement is a separate question of law. Moving forward, it will be the trial court’s duty to determine whether the defendant’s actions were objectively reckless. Further, the objective prong will now be subject to de novo review on appeal.
This new system somewhat parallels the judge-determined claim construction that must occur before a jury can determine infringement. As with claim construction, this new judge-focused sub-test will likely drive results in most cases. Because it will be prior-in-time, the judicial decision on objective recklessness will filter-out many willfulness allegations before they reach the jury. And the jury, once it is told that the judge has determined the behavior objectively reckless, is likely to find any infringed patent to be willfully infringed.
Right to Jury: The right to a jury decision on the issue of willfulness already stood on shaky foundation because, by statute, the judge decides the monetary award. The changes in the law brought about here in Bard coupled with those outlined in Seagate suggest that right may now be fully eroded. Further, the decision suggests that it may be proper to treat the entire issue of willfulness as a question of law.
+ + + + +
Treble Damages: The text of the Patent Act appears to provide courts with broad power to treble any damages awarded. The statute reads that “the court may increase the damages up to three times the amount found or assessed.” Although the text offers no limitation on that power, the Federal Circuit has limited the use of enhanced damages to only apply when the adjudged infringement is found to be willful. In Seagate, the Federal Circuit defined a two-prong test for willfulness that requires clear and convincing evidence (1) “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and (2) that the infringer had knowledge (or should have known) of this risk.
Willfulness is a question of fact that has been traditionally decided by a jury. However, as the statute suggests, it is the judge who determines the extent of any enhanced damages (with the limit of three-times the compensatory damage award). Here, the infringer argued that a court (rather than a jury) should first decide the sub-question of whether there existed (at the time of the infringement) an objectively high-likelihood that the infringer’s action’s constituted infringement. The appellate court agreed:
After reviewing the Supreme Court’s precedent in similar contexts, as well as our own, we conclude that simply stating that willfulness is a question of fact over-simplifies the issue. While the ultimate question of willfulness based on an assessment of the second prong of Seagate may be a question of fact, Seagate also requires a threshold determination of objective recklessness. That determination entails an objective assessment of potential defenses based on the risk presented by the patent. Those defenses may include questions of infringement but also can be expected in almost every case to entail questions of validity that are not necessarily dependent on the factual circumstances of the particular party accused of infringement.
In considering the standard applicable to the objective prong of Seagate, it can be appreciated that “the decision to label an issue a ‘question of law,’ a ‘question of fact,’ or a ‘mixed question of law and fact’ is sometimes as much a matter of allocation as it is of analysis.” Miller v. Fenton, 474 U.S. 104, 113-14 (1985). When an “issue falls some-where between a pristine legal standard and a simple historical fact, the fact/law distinction at times has turned on a determination that, as a matter of sound administration of justice, one judicial actor is better positioned than another to decide the issue in question.” Id. at 114; see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 388 (1996) (applying this test to determine that claim construction is best left to the judge). We believe that the court is in the best position for making the determination of reasonableness. This court therefore holds that the objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review.
On remand, the district court will be required to specifically consider the question of objective recklessness.
+ + + + +
Clear and Convincing Evidence Standard for a Question of Law?: Seagate requires that objective recklessness be proven with clear and convincing evidence. As the en banc court wrote in 2007 “to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Normally, clear-and-convincing evidence is a standard for proving facts. Here in Bard, however, the court now holds that the objective recklessness prong is a question of law. Since the panel here has no power to modify Seagate, the odd joining of these decisions is that the issue of law must still be proven by clear and convincing evidence. In a concurring opinion to the i4i decision, Supreme Court Justice Breyer wrote on this topic – noting that the clear and convincing evidence standard of proof “applies to questions of fact and not to questions of law.” The panel opinion here in Bard either did not recognize this problem or chose to ignore it. The tension here between Seagate and Bard is genuine.
+ + + + +
The majority opinion was written Judge Gajarsa (Senior Judge) and joined by Judge Linn. Judge Newman wrote in dissent and argued that there was no need for a remand because the jury willfulness determination was clearly wrong.
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This case has been brewing for 38 years! Initially it was an inventorship dispute that took 28 years to settle at the PTO, followed by a litigation battle for the past 8 years. The patent covers a prosthetic vascular graft used in bypass surgeries and was originally filed as an application in 1974. U.S. Patent No. 6,436,135.
Dissenting opinions are generally considered to be good predictors of en banc review. On one level, this is largely indisputable: most appeals that the Federal Circuit takes en banc involve a divided panel decision, and appellate practitioners are well aware that the chances of getting en banc review of an opinion that contains a dissent are much better than persuading the full court to review a unanimous opinion. Of course, knowing that dissenting opinions are the more likely candidates for en banc review isn't particularly helpful by itself, since Federal Circuit judges pen more than thirty patent-related dissents each year.
There's an extension of this theory, however, based on the idea that a high number of dissents on a particular patent law issue is a signal that the court may take that issue en banc in the near future. There are several reasons why this extended theory is plausible: dissents may indicate that the court is cognizant of the importance of a particular legal issue; they may demonstrate awareness by the court of an intra-circuit split that it needs to resolve; they may also represent a pre-en banc dialogue between the judges. Dissents are not costless, after all – sometimes they can be as much work or more as writing the majority opinion, and most judges do not write them as a matter of course.
Empirical observations support this theory, at least for some grants of en banc review. In the two years prior to the Federal Circuit's grant of en banc review of inequitable conduct in Therasense v. Becton Dickinson, for example, there were four dissents on the issue of inequitable conduct. On the other hand, in the two years prior to the grant of en banc review in In re Seagate there were no dissenting opinions on the issue of willful infringement. Thus while there may be value in keeping an eye on areas where dissents are common, it's by no means a perfect predictor.
With that caveat, I read through the patent-related dissents for the past two years to assemble a picture of recent Federal Circuit dissents. All together, there were 64 of these dissents in panel opinions. The following chart depicts the authors of those dissents.
The next chart depicts the issues addressed by those dissents that arose with a frequency of greater than 1. Note that there were four dissents that involved two issues. In order to prepare the chart below based on dissenting opinions, I included only the first issue, but the second issue would also be relevant. Those second issues were joint infringement(1), infringement(3), inequitable conduct(2), and doctrine of equivalents(2) (totals dissents addressing this issue in parentheses).
One nuance that is not conveyed by this chart is the degree to which the judges dissent on specific issues. Two are noteworthy: Judge Dyk wrote four of the dissents on claim construction, while four separate judges (Bryson, Moore, Plager and Mayer) wrote the dissents on the issue of subject matter patentability. Judge Newman wrote on a variety of issues.
The final chart depicts the issues that the Federal Circuit declined to consider en banc with at least one judge dissenting from that decision. Note that for several of the issues included in the previous chart (state law malpractice claims, assignment, claim construction, and preliminary injunctions), the court has also declined to consider those issues en banc over the views of at least one judge.
These statistics hardly tell the whole story, of course. Both litigation and appeals – let alone en banc review – are rare events, and thus attempting to divine highly predictive information is difficult. Furthermore, two judges (Judges Newman and Dyk) together wrote almost half of the dissents. Nevertheless, when combined with other insights, the above data may be helpful. Claim construction and obviousness are hot topics (although last fall the CAFC declined to take claim construction en banc). There is also significant disagreement among the judges on subject matter patentability, although they may not be willing address that issue through an en banc court given the Supreme Court's substantial interest in the topic. In addition, my own sense is that there is more disagreement among the judges on the issue of the standard for preliminary injunctions than is apparent from the statistics alone. It would not surprise me if the court were to grant en banc review on this issue – although admittedly it declined to do so recently.
What are your views on the next issue that the Federal Circuit reviews en banc?
For more on predicting en banc review generally, see Tracey E. George, The Dynamics and Determinants of the Decision to Grant En Banc Review, 74 Wash. L. Rev. 213 (1999). For a discussion of Federal Circuit en banc practice, see Christopher A. Cotropia, Determining Uniformity within the Federal Circuit by Measuring Dissent and En Banc Review, 73 Loyola Los Angeles L. Rev. 801 (2010) (available at http://digitalcommons.lmu.edu/cgi/viewcontent.cgi?article=2720&context=llr).
Toshiba Corporation v. Imation Corp. (Fed. Cir. 2012) Download 11-1204 Panel: Moore (author), Schall, and Dyk (concurring-in-part and dissenting-in-part)
Dissents in Federal Circuit opinions dealing with claim construction often reflect disagreements over the correct methodology or execution. Judge Dyk's dissent in Toshiba goes a step further, proposing a claim construction different from those advanced by either side.
The technology in Toshiba involves DVDs. Toshiba's patent No. 5,831,966 claims a recording medium containing a "management region" that contains information about the structure of the medium – specifically, "number-of-recording planes identifying information that represents the number of recording planes of the recording medium." The district court construed this as "information whose purpose is to identify the number of recording planes on the recording medium." Slip Op. at 15 (emphasis in CAFC opinion). This "purpose" construction mattered because the patent holder accused single-sided DVDs of infringing the '966 patent. These single-sided DVDs contain information that identifies the number of planes on that side – effectively providing information on the disc as a whole. Because the purpose of the information on the single-sided DVDs is only to identify the planes on one side of the disc, however, the district court concluded that the accused discs do not infringe.
On appeal the majority disagreed with the district court's construction, agreeing with Toshiba that the limitation should be given its plain and ordinary meaning as recited in the claim itself. "The language of the claim only requires that the information "represents" the number of recording planes." Slip op. at 17. The majority declined to read the embodiments of the specification into the claims. "Absent disclaimer or lexicography, the plain meaning of the claim controls." Slip Op. at 19.
Judge Dyk, writing in dissent, saw the issue differently. In his view, the "number of recording planes" limitation requires the identification of both the number of disc sides and the number of layers per side, a construction neither party advanced. To support this construction, he took a stronger view of the effect of the specification and the prosecution history than the majority. In his opinion, "the specification and the prosecution history of the ’966 patent make clear that the central objective of the patent was to identify whether an optical disc was a one-sided disc or a two-sided disc." Slip Op. at 27. Given this construction, he would have affirmed the district court's grant of summary judgment of non-infringement.
Indirect Infringement: The district court granted summary judgment of no indirect infringement of a second patent, No. 5,892,751, based on the conclusion that recording a DVD without finalizing it (the step necessary to allow the DVD to be played on drives other than it was recorded) was a substantial noninfringing use. On appeal, the Federal Circuit affirmed in the context of contributory infringement but reversed for inducement of infringement. Here, Toshiba failed to present any evidence that the recording and playing of unfinalized DVDs – which does not infringe the '751 patent – is "unusual, far-etched, illusory, impractical, occasional, aberrant, or experimental." Slip Op. at 8 (quoting Vita-Mix, 581 F.3d 1317, 1327 (Fed. Cir. 2009). Furthermore, merely recommending an infringing use (finalizing the DVD) is not evidence that a non-infringing use is not a substantial use. The substantial noninfringing use thus supported the grant of summary judgment of no contributory infringement. However, the district court erred in holding that the existence of a such a use precludes a finding of inducement of infringement. Nor could summary judgment of no inducement be affirmed on the ground that the patentee did not provide evidence of specific acts of infringement: circumstantial evidence can suffice. Here, the circumstantial evidence was stronger than the "capable of infringing" evidence involved in Fujitsu v. Netgear, 620 F.3d 1321 (Fed. Cir. 2010) and ACCO Brands v. ABA Locks, 501 F.3d 1307 (Fed. Cir. 2007).
In an earlier post, I mentioned recently issued U.S. Patent No. 8,196,213. During prosecution, the examiner rejected the pending claims as improperly claiming unpatentable subject matter under 35 U.S.C. 101. In particular, the PTO submitted that the claimed “computer readable storage medium” could encompass transitory signals, which are themselves unpatentable. In response, the applicant (Microsoft) amended the claims by adding an express limitation excluding “signals” from the claim scope. The amended claim begins: “1. A computer readable storage medium excluding signals . . . ” This change satisfied the PTO and the patent quickly issued. The original patent application document did not discuss signals or directly define computer readable media other than having the functional qualities of being able to “store data that is accessible by a computer.” However, the application did list several examples of computer readable media, including “magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like.”
In a one-question survey, I asked Patently-O readers “does this patent claim violate the written description requirement?” As discussed below, most readers (~75%) agreed that amendment did not invalidate the claim.
Of the 850 responses, almost half (46%) suggested that the claim is valid because the amendment does not go beyond what was originally described in the specification. In its 2012 memo to examiners, the USPTO argued as much:
A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. 101 by adding the limitation “non-transitory” to the claim. . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.
See 1351 Off. Gaz. Pat. Office 212 (Feb 23, 2012). I have some amount of difficulty understanding the explanation given by the PTO — that no new matter problem is created by the amendment “because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.” While the USPTO’s interpretation of the law is important during the prosecution process, no deference is given to this type of analysis when a court later considers a patent’s validity.
Another 22% also suggested that the claim is valid because “negative limitations such as this need not be disclosed in the original application.” And 4% argued that the limitation should be ignored because it is found in the claim preamble.
Only one option in the survey led directly to an invalidity conclusion. 26% of responses suggested that the claim limitation excluding signals from the scope was improper because that limitation was not disclosed in the original application and that the claim is therefore invalid under the written description requirement.
In my mind, this entire discussion is ridiculous. The invention in this case (as in several hundred thousand other cases) is a bit of software. Yet, because of these odd rules setup by the U.S. Supreme Court (and their interpretation by the PTO) applicants feel they cannot be straightforward enough to simply obtain a patent on the software.
*****
In the above discussion, I jump quickly between “new matter” and “written description” doctrines. During patent prosecution, the two doctrines are relatively inseparable. The PTO tends to issue new matter rejections under 35 U.S.C. 132. Once a patent issues, the facts that would have created a new matter rejection at the PTO lead courts to invalidate claims for failing the written description requirement of 35 U.S.C. 112.
The New Jersey Intellectual Property Law Association (NJIPLA) will award the 2012 Jefferson Medal to the Honorable Garrett E. Brown, Jr. (Ret.), Chief Judge, United States District Judge for the District of New Jersey. Following a 60 year tradition, the NJIPLA presents the Jefferson Medal annually to someone who has made exceptional contributions to the field of intellectual property law. Former Medalists include judges, members of Congress, Patent and Trademark Office officials and leaders of the intellectual property bar. Chief Judge Brown will be presented with the Jefferson Medal on June 8, 2012 at the annual Jefferson Medal Dinner at The Hilton at Short Hills, Short Hills, NJ.
Chief Judge Brown recently joined the JAMS panel after a distinguished judicial and legal career. He served twenty-six years as United States District Judge for the District of New Jersey, the last six as Chief Judge, where he led the court-wide effort to provide prompt, efficient justice to civil litigants, and to implement new local patent rules. Prior to appointment to the federal judiciary, he served two years as Chief Counsel to the U.S. Maritime Administration. While in private practice, he concentrated on federal commercial litigation, including antitrust, employment, construction, environmental, banking, intellectual property, and securities matters. [Link]
Will Singapore Become a Patent Hotspot?
Singapore wants foreign IP attorneys and professionals to relocate there. A Patents Bill was introduced to the parliament, which will allow foreign patent professionals to practice in Singapore without going through the long process of passing exams and doing an internship with a local law firm, which is currently required. However, foreign attorneys will only be allowed to engage in work from other countries. The intention behind the proposed changes is that highly skilled IP professionals from across Asia and beyond will relocate to Singapore, where they will be ideally located to handle patent work for the whole Asia region. [Link]Patent Act
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Weaver Austin Villeneuve & Sampson is searching for a patent attorney/agent with a EE and/or CS background and 3-5 years of experience to work in their Oakland office. [Link]
Upcoming Events:
The Los Angeles Intellectual Property Law Association invites you to join us for the 2012 LAIPLA Spring Seminar at the beautiful Lodge at Torrey Pines in La Jolla, California, on June 8-10, 2012. The Spring Seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities at the cocktail receptions and dinners, and allows sufficient time for relaxation and enjoyable outdoor activities, including a golf tournament at the Torrey Pines Golf Course, home of the 2008 U.S. Open. Speakers and panelists include federal judges, practitioners (including in-house attorneys), and academics. [Link]
The Louisville Bar Association, IP Section, is hosting a half-day CLE program covering various topics in patent law, including patent-eligible subject matter in light of Mayo, patent claim interpretation, joint and distributed infringement, and inequitable conduct. The CLE will be held on June 12 from 9 AM until 12 PM at the LBA office in downtown Louisville, Kentucky. Speakers include Donald S. Chisum, author of Chisum on Patents, and Janice M. Mueller, author of Patent Law, Third Edition. [Link]
A free webinar on Improving Decision-Making with Patent Claims Analytics hosted by IPVision will take place June 12, 2012 at 1 pm EST/10 am PST. Those who attend will receive a free claims analysis. Sign up here: [Link]
The C5's 11th Annual International Conference on Maximising Pharma Patent Lifecycles conference will be held June 20-21 in London. Patent lifecycle management is becoming more crucial for pharmaceutical companies with the cost of research and drugs continually rising and companies constantly trying to obtain the maximum financial benefit from existing patent terms. In addition to protecting existing IP rights and seeking methods to extend current patent lifecycles, pharmaceutical companies are faced with the challenge of inventing new drugs and diversifying portfolios to replace sales on older and generic drugs. [Link]
AIPLA's 4th Annual Trademark Bootcamp will be held in Alexandria, VA on June 22. Learn the trademark basics from top trademark practitioners. This day-long course provides a complete overview of the trademark prosecution process from start to finish, with sessions including: pre-filing considerations, the application process, the examination process, and many more. [Link]
The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]
IP Dispute Resolution 2012 will take place June 28-29 in London. Hear experiences from Kraft Foods, Nokia, Ericsson, Proctor & Gamble, RIM, Google, Unilever…Discuss current litigation issues, procedures & remedies in all relevant jurisdictions. Guest speakers include: Mialeeka Williams, Ignacio de Castro, Michael Bishop, Richard Vary, Kevin Cranman, and many others. [Link] (PatentlyO readers receive a 10% discount)
The AUTM annual meeting will take place July 23-25 in Oklahoma City. There will be many intriguing sessions and lectures to attend. Guest speakers include: Dennis Crouch, Kevin Noonan, Todd Sherer, and many more. [Link]
ACI's Freedom to Operate conference is scheduled for July 30-31, 2012 in Philadelphia, PA. Freedom to operate searching and analysis, always a critical component of any patent counsel's profession, is undergoing its biggest shake-up in a generation. Expansion of the obviousness standard, the America Invents Act provisions now requiring a truly global search, and other developments have left patent attorneys and business development professionals perplexed as they try to protect valuable IP in an increasingly competitive global environment. [Link] Register for with PO 200 for a discount.
Earn Advanced Patent Law CLE in Spectacular Seattle This Summer: The Chisum Patent Academy is now accepting registrations for its 4th annual summer seminar in Seattle, July 30 – August 1, 2012. Their uniquely insightful, interactive seminars are limited to 10 participants. All sessions are taught by Donald Chisum and Janice Mueller. For further details on seminar coverage and registration information, see http://www.chisumpatentacademy.comor e-mail mailto:info@chisum.com
IP Law Summer School will be held August 13-17 in Cambridge, UK. The only residential conference for Intellectual Property lawyers who want to get ahead… an unrivalled resource for the consolidation of, or initiation into all of the central concepts in IP, presented in the context of the latest developments in the industry. [Link] (PatentlyO readers receive a 10% discount)
The New Jersey Intellectual Property Law Association (NJIPLA) will award the 2012 Jefferson Medal to the Honorable Garrett E. Brown, Jr. (Ret.), Chief Judge, United States District Judge for the District of New Jersey. Following a 60 year tradition, the NJIPLA presents the Jefferson Medal annually to someone who has made exceptional contributions to the field of intellectual property law. Former Medalists include judges, members of Congress, Patent and Trademark Office officials and leaders of the intellectual property bar. Chief Judge Brown will be presented with the Jefferson Medal on June 8, 2012 at the annual Jefferson Medal Dinner at The Hilton at Short Hills, Short Hills, NJ.
Chief Judge Brown recently joined the JAMS panel after a distinguished judicial and legal career. He served twenty-six years as United States District Judge for the District of New Jersey, the last six as Chief Judge, where he led the court-wide effort to provide prompt, efficient justice to civil litigants, and to implement new local patent rules. Prior to appointment to the federal judiciary, he served two years as Chief Counsel to the U.S. Maritime Administration. While in private practice, he concentrated on federal commercial litigation, including antitrust, employment, construction, environmental, banking, intellectual property, and securities matters. [Link]
Will Singapore Become a Patent Hotspot?
Singapore wants foreign IP attorneys and professionals to relocate there. A Patents Bill was introduced to the parliament, which will allow foreign patent professionals to practice in Singapore without going through the long process of passing exams and doing an internship with a local law firm, which is currently required. However, foreign attorneys will only be allowed to engage in work from other countries. The intention behind the proposed changes is that highly skilled IP professionals from across Asia and beyond will relocate to Singapore, where they will be ideally located to handle patent work for the whole Asia region. [Link]Patent Act
Patent Jobs:
Faegre Baker Daniels is seeking a patent associate with 2-6 years of experience and a degree in EE, ME, or ChemE to work at their Minneapolis office. [Link]
Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
Klarquist Sparkman is searching for a patent attorney with 1-4 years of experience and an EE, CS, or physics degree to work at their Portland office. [Link]
Bacon & Thomas is seeking a patent attorney with 1-3 years of experience and a background in ME, EE, or similar to work at their Alexandria, VA office. [Link]
Klein, O'Neill & Singh is looking for a patent attorney/agent with 2-5 years of experience and a degree in EE, CS, or physics to work at their Irvine, CA office. [Link]
Buchanan Ingersoll & Rooney is searching for a trademark associate with 2-4 years of experience to work at their Alexandria, VA office. [Link]
TransTech Pharma is seeking an IP Counsel with 5+ years of experience and a science degree to work at their High Point, NC location. [Link]
Baker & Hostetler is looking for patent attorneys with 2+ years of experience with a degree in ME, EE, or materials to work at their Cincinnati office. [Link]
Solazyme is searching for a patent agent with 3-5 years of experience and a degree in bio sciences to work at their San Francisco location. [Link]
Trop, Pruner & Hu is seeking associates with an EE or CS backgrounds and a minimum of 2 years of experience to work at their Houston or Austin office. [Link]
A law firm in Cupertino has multiple openings for patent attorneys/agents with an Electrical or mechanical background. [Link]
NSIP LAW is looking for associates with a minimum of 4 years of experience in patent prosecution and an EE, CE, or CS degree to work at their Washington, DC office. [Link]
Myers Wolin is seeking a partner level patent or trademark attorney or small practice group with portables to join their firm located in Morristown, NJ. [Link]
Kilpatrick Townsend is searching for a student associate or patent agent with a degree in EE, CS, or physics to work at their Washington, DC office. [Link]
Los Alamos National Lab is looking for an experienced patent attorney with 8 years of experience and a technical background to work at their Los Alamos, New Mexico location. [Link]
Nagoya International Patent Firm is seeking a US patent attorney with 2-5 years of experience to work in Japan. [Link]
Banner & Witcoff is searching for lateral associates with EE or CS backgrounds to work at either their Washington, DC or Chicago office. [Link]
The Webb Law Firm is looking for a senior litigation attorney with a minimum of 7 years of experience to work at their Pittsburgh location. [Link]
The Webb Law Firm is seeking a patent litigation associate with a minimum of 3 years of experience to work at their Pittsburgh location. [Link]
The Webb Law Firm is searching for associates with a degree in CS, CE, or EE and a minimum of 3 years of experience to work at their Pittsburgh location. [Link]
Perkins Coie is looking for a patent associate with a minimum of 3 years of experience and a degree in EE, physics, or CS to work at their Seattle office. [Link]
Fiala & Weaver is seeking patent attorneys/agents with 1+ years of experience and a degree in EE, CS, or physics. [Link]
FLSmidth is searching for a patent attorney with at least 5 years of experience to work in Salt Lake City. [Link]
Hamilton, Brook, Smith & Reynolds is looking for electrical associates with 3-5 years of patent pro or IP litigation experience to work at their Concord, Massachusetts office. [Link]
Sandia National Labs is seeking a patent attorney with 4-8 years of experience and a degree in physics, EE, ChemE or relevant field to work at their Albuquerque location. [Link]
Solazyme is searching for an IP paralegal with 2-5 years of experience to work at their San Francisco location. [Link]
Senniger Powers is looking for an associate attorney with a minimum of 2 years of experience and a degree in EE, CE, or CS to work at their St. Louis office. [Link]
Harness, Dickey & Pierce is seeking an IP litigation associate with 2-4 years of experience to work at their St. Louis location. [Link]
Hoxie & Associates is searching for an experienced patent prosecution paralegal to work at their Millburn, NJ office. [Link]
Faegre Baker Daniels is looking for a Biotech/Biochem/Chemical patent agent with at least 2 years of experience and a Ph.D. to work at their Denver office. [Link]
Schwegman, Lundberg & Woessner is seeking attorneys with 1+ years of experience and a degree in software/Electrical engineering, organic chemistry (Ph.D.), chemical/polymer engineering, and ME. [Link]
Telesign is seeking an IP analyst with at least a bachelor's degree to work at their Marina Del Rey, CA location. [Link]
The Michaud-Kinney Group is seeking 2 IP attorneys with at least 3 years of experience: 1 with a background in chemistry or biology and the other with a background in mechanical or electrical technologies. [Link]
AdvantEdge Law Group is looking for patent attorneys/agents with a degree in EE, CE, or CS and 2-5 years of experience to work at their South Jordan, Utah location. [Link]
Schwabe, Williamson & Wyatt is searching for a patent associate with a background in CS and/ or EE and 4 years of experience to work in either their Seattle or Portland office. [Link]
NXP is seeking a Sr. patent attorney, IP and licensing with 10-15+ years of experience to work at their San Jose location. [Link]
Steptoe & Johnson is searching for IP associates with a minimum of 2 years of experience in patent litigation and a background in EE to work at in their DC office. [Link]
Harrity & Harrity is looking for patent attorneys/agents with a minimum of 2 years of experience and a background in EE, CS, or physics to work in their Fairfax, VA office. [Link]
Turner, Padget, Graham, and Laney is seeking a patent attorney 3-5 years of experience in drafting and litigating patents to work in their Greenville, SC office. [Link]
Weaver Austin Villeneuve & Sampson is searching for a patent attorney/agent with a EE and/or CS background and 3-5 years of experience to work in their Oakland office. [Link]
Upcoming Events:
The Los Angeles Intellectual Property Law Association invites you to join us for the 2012 LAIPLA Spring Seminar at the beautiful Lodge at Torrey Pines in La Jolla, California, on June 8-10, 2012. The Spring Seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities at the cocktail receptions and dinners, and allows sufficient time for relaxation and enjoyable outdoor activities, including a golf tournament at the Torrey Pines Golf Course, home of the 2008 U.S. Open. Speakers and panelists include federal judges, practitioners (including in-house attorneys), and academics. [Link]
The Louisville Bar Association, IP Section, is hosting a half-day CLE program covering various topics in patent law, including patent-eligible subject matter in light of Mayo, patent claim interpretation, joint and distributed infringement, and inequitable conduct. The CLE will be held on June 12 from 9 AM until 12 PM at the LBA office in downtown Louisville, Kentucky. Speakers include Donald S. Chisum, author of Chisum on Patents, and Janice M. Mueller, author of Patent Law, Third Edition. [Link]
A free webinar on Improving Decision-Making with Patent Claims Analytics hosted by IPVision will take place June 12, 2012 at 1 pm EST/10 am PST. Those who attend will receive a free claims analysis. Sign up here: [Link]
The C5's 11th Annual International Conference on Maximising Pharma Patent Lifecycles conference will be held June 20-21 in London. Patent lifecycle management is becoming more crucial for pharmaceutical companies with the cost of research and drugs continually rising and companies constantly trying to obtain the maximum financial benefit from existing patent terms. In addition to protecting existing IP rights and seeking methods to extend current patent lifecycles, pharmaceutical companies are faced with the challenge of inventing new drugs and diversifying portfolios to replace sales on older and generic drugs. [Link]
AIPLA's 4th Annual Trademark Bootcamp will be held in Alexandria, VA on June 22. Learn the trademark basics from top trademark practitioners. This day-long course provides a complete overview of the trademark prosecution process from start to finish, with sessions including: pre-filing considerations, the application process, the examination process, and many more. [Link]
The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]
IP Dispute Resolution 2012 will take place June 28-29 in London. Hear experiences from Kraft Foods, Nokia, Ericsson, Proctor & Gamble, RIM, Google, Unilever…Discuss current litigation issues, procedures & remedies in all relevant jurisdictions. Guest speakers include: Mialeeka Williams, Ignacio de Castro, Michael Bishop, Richard Vary, Kevin Cranman, and many others. [Link] (PatentlyO readers receive a 10% discount)
The AUTM annual meeting will take place July 23-25 in Oklahoma City. There will be many intriguing sessions and lectures to attend. Guest speakers include: Dennis Crouch, Kevin Noonan, Todd Sherer, and many more. [Link]
ACI's Freedom to Operate conference is scheduled for July 30-31, 2012 in Philadelphia, PA. Freedom to operate searching and analysis, always a critical component of any patent counsel's profession, is undergoing its biggest shake-up in a generation. Expansion of the obviousness standard, the America Invents Act provisions now requiring a truly global search, and other developments have left patent attorneys and business development professionals perplexed as they try to protect valuable IP in an increasingly competitive global environment. [Link] Register for with PO 200 for a discount.
Earn Advanced Patent Law CLE in Spectacular Seattle This Summer: The Chisum Patent Academy is now accepting registrations for its 4th annual summer seminar in Seattle, July 30 – August 1, 2012. Their uniquely insightful, interactive seminars are limited to 10 participants. All sessions are taught by Donald Chisum and Janice Mueller. For further details on seminar coverage and registration information, see http://www.chisumpatentacademy.comor e-mail mailto:info@chisum.com
IP Law Summer School will be held August 13-17 in Cambridge, UK. The only residential conference for Intellectual Property lawyers who want to get ahead… an unrivalled resource for the consolidation of, or initiation into all of the central concepts in IP, presented in the context of the latest developments in the industry. [Link] (PatentlyO readers receive a 10% discount)
Chicago Board Options Exchange, Inc. v. International Securities Exchange, LLC (Fed. Cir. 2012) Download 11-1267-1298 Panel: Rader, Wallach (author) and Fogel
If my own conversations are any indicator, many people who follow the Federal Circuit's claim construction jurisprudence have developed strong opinions about the longstanding members of the court. More of an unsolved puzzle are the more recent appointees. In Chicago Board Options Exchange, we get a glimpse into the newest member of the court's thoughts on claim construction in his debut patent law opinion. That opinion suggests an approach closely tied to the patent itself, analyzing the text of the document without reference to extrinsic sources.
Means plus function: One of the claim terms at issue in this appeal was "system memory means for storing allocating parameters for allocating trades between the incoming order or quotation and the previously received orders and quotations." Although the court noted that the parties expressly agreed during claim construction that this was a means-plus-function limitation, the court nonetheless dropped a footnote indicating that even had the argument not been waived, the presumption arising from the use of the word "means" was not overcome because the limitation "system memory means" articulates a function and nowhere includes a "specific and definite structure." Given this statement, it is possible that Judge Wallach may take a broad approach to 112(f), interpreting a wide array of terms to fall within its scope. Or I may be overreading the footnote, given that the claim element did include "means" after all.
In the end, however, the distinction did not matter, as the CAFC interpreted the corresponding structure of "system memory means" to be "system memory." After examining the specification to determine which structure was linked to the means-plus-function element's function, and applying the canon of claim construction that different terms convey different meanings, the court concluded that the "[t]he clearly linked structure associated with this function is “system memory.” Slip Op. at 13-14. It did not include the additional elements identified by the district court.
Looking at the Claims, then the Specification: The CAFC also construed several non-means-plus-function terms, taking a similar approach to each. For each term, the court first looked to the claim language itself to divine any meaning the claims might offer, then turned to the specification to examine whether it provided further support or rebutted the meaning as indicated by the claim. As in the preceding section, the court relied heavily on the different terms/different meanings canon of claim construction.
Specification disavowal: Although for most terms the court found that the specification either supported or did not rebut the meaning of the terms as established by the claims, the court found clear disavowal of claim scope for one term: "automated exchange." "The specification goes well beyond expressing the patentee’s preference for a fully automated exchange over a manual or a partially automated one, and its repeated derogatory statements about the latter reasonably may be viewed as a disavowal of that subject matter from the scope of the Patent’s claims." Slip Op. at 21. Thus, the district court correctly interpreted this term to mean "fully computerized, such that it does not include matching or allocating through use of open out-cry." Id.
Guest Post by Jennifer Furey of Cooley Manion Jones LLP and Anthony Miele of Miele Law Group PC. Furey and Miele represent Bear Creek in the JPML proceeding and in the associated actions discussed below.
Suppose a patentee determines that in order to enforce its patent rights, it must sue multiple, but unrelated, parties. An obstacle then presents itself. The patentee plaintiff may very well be forced to file separate actions in disparate jurisdictions, and now risks being overwhelmed by conflicting case schedules, duplicative discovery disputes, and especially, conflicting Markman claim construction rulings. SeeScott W. Burt et al., Intellectual Property Owners Associations Committee White Paper, Impact of the Misjoinder Provision of the America Invents Act 16 (2012). One mechanism for efficiently litigating the pre-trial phase of patent infringement lawsuits pending in different districts is multidistrict litigation ("MDL") under 28 U.S.C. § 1407 ("Section 1407"). In a recent opinion in In re Bear Creek Technologies, Inc., the Judicial Panel on Multidistrict Litigation ("JPML") unequivocally held that MDL remains a viable option for parties to transfer separate patent infringement actions pending in different districts for centralized pre-trial proceedings, and that the recently enacted Leahy-Smith America Invents Act ("AIA") "does not affect [the JPML's] authority" to transfer and centralize patent litigation under Section 1407. MDL No. 2344, at 3 (J.P.M.L. May 2, 2012). After Bear Creek, plaintiffs enforcing their patent rights across multiple jurisdictions may still consider MDL as a possible option to keep infringing defendants before one court up until trial. [Download JMPL Decision Bear Creek]
Enacted on September 16, 2011, the AIA's joinder provision states that accused infringers may not, "based solely on allegations that they each have infringed" the same patent(s):
be joined in one action as defendants or counterclaim defendants, or
have their actions consolidated for trial.
35 U.S.C. § 299. In contrast, centralization in MDL under Section 1407 requires that:
actions are pending in different districts;
the actions involve "one or more common questions of fact;" and
transfer and consolidation of pretrial proceedings is convenient for the parties and witnesses, and promotes "the just and efficient conduct of such actions."
28 U.S.C. § 1407.
After the enactment of the AIA, Vonage in Bear Creek argued that the AIA's joinder restriction applied to Section 1407, to no avail. The JPML found the AIA "does not alter [its] authority to order pretrial centralization." MDL No. 2344 at 2. The JPML reasoned that there was "no overlap" between the AIA and Section 1407, emphasizing the different standards of the two statutes, and contrasting the AIA's focus on joinder and consolidation at trial with "Section 1407's express focus on transfer for pretrial proceedings." Id. at 2-3. Finding that both the plain language and legislative history of the AIA were "silent as to the conduct of pretrial proceedings" and did not "mention Section 1407," the JPML noted that if Congress intended the AIA to limit the JPML's authority under Section 1407, it would have "done so explicitly." Id.
After holding that the AIA did not apply, the JPML then concluded that transfer and centralization was appropriate in Bear Creek because the separate actions shared "substantial background questions of fact" concerning the "validity and enforceability" of the patent-in-suit, as well as "claim construction." Id. at 4. The JPML emphasized that "centralization offers substantial savings in terms of judicial economy by having a single judge become acquainted with the complex patented technology and construing the patent in a consistent fashion (as opposed to having six judges separately decide such issues)."
In light of the AIA's enactment, MDL can be an invaluable tool for patentee-plaintiffs to efficiently litigate their patent rights against multiple infringers with actions pending in different courts through Markman and summary judgment. Under Bear Creek, the AIA is not a magic bullet allowing patent defendants to escape multi-party litigation—they may be brought before one court up until trial in MDL under Section 1407.
Advanced Fiber Technologies (AFT) Trust v. J&L Fiber Services, Inc. (Fed. Cir. 2012) Download 11-1243 Panel: Lourie (author), Dyk (dissenting in part), Prost
This opinion provides guidance on the process of construing claim constructions and illustrates the continuing disagreement among the Federal Circuit judges about claim interpretation.
The technology at issue in this case involves screening devices used in the pulp and paper industry. Advanced Fiber Technologies (AFT) patented a screening device that purports to offer substantially increased efficiency and flow capacity. Two of the asserted independent claims include the term "screening medium"; the third contains the synonym "screening plate." The district court construed "screening medium" as "a perforated barrier through which stock is passed to remove oversized, troublesome, and unwanted particles from good fiber." Slip Op. at 8. It further interpreted a term from its construction, "perforated," as meaning "pierced or punctured with holes." Id. Based on this meaning of "perforated," the district court granted summary judgment of noninfringement as against the accused device, which used a "wedgewire" screen (a screen made by assembling closely spaced parallel wires). AFT appealed, challenging not the district court's construction of the term "perforated" but its construction of "screening medium."
Although not explicitly discussed by the opinion, construing claim constructions (which the majority refers to as "derivative construction" on page 14) raises some difficult issues above and beyond the challenges that come with construing the claim terms themselves – specifically, the degree of relationship between the claim term and the interpretation of the claim term's construction.
The majority opinion in Advanced Fiber provides some guidance in this area. First, the derivative construction "must follow the guiding principles set forth in Phillips." Slip Op. at 14. Second, whether "construing a claim term or a disputed term within a claim construction, our ultimate goal is determining the meaning and scope of the patent claims asserted to be infringed.'" Id., quoting Markman, 52 F.3d at 976.
Applying these two points, the majority agreed with AFT, concluding that the district court improperly relied on extrinsic evidence that contradicted the intrinsic evidence and that its own interpretation of "perforated" as simply "having holes or openings" was "fully consistent with the language of claim 1, "a screening medium having a plurality of openings therethrough," and claim 10. Slip Op. at 17.
Comment: The majority's approach to derivative constructions looks to be fairly useful, in that it suggests that derivative constructions should relate back to the meaning of the claim itself rather than going down the rabbit hole of attempting to independantly interpret interpretations. This approach thus adds to the methodology for construing constructions developed in Cordis Corporation v. Boston Scientific Corporation, 658 F.3d 1347 (Fed. Cir. 2011), another recent case dealing with an issue of derivative construction.
Writing in dissent, Judge Dyk would have affirmed the district court's construction. In Judge Dyk's view, the court should have read more into arguments the applicant made during prosecution and found that the applicant explicitly adopted the definition of "perforated plate" from a technical manual, the Handbook of Pulp & Paper Terminology, that the applicant cited during prosecution for the definition of "screen plate."
Note: Based on my reading of the opinion and the appellee's brief, neither the district court nor J&L appear to have relied on the Handbook's definition of "perforated plate."
A recent USPTO whitepaper reports that IP industries contribute $5 trillion and 40 million jobs to the US economy. Some of the report major findings are:
The entire US economy relies on some form of IP, because virtually every industry either produces or uses it.
IP-intensive industries directly accounted for 27.1 million American jobs, or 18.8% of all employment in the economy, in 2010.
Jobs in IP-intensive industries pay well compared to other jobs. Average weekly wages for IP-intensive industries were 42% higher than the average weekly wages in non IP-intensive industries.
Growth in copyright-intensive industries (2.4%), patent-intensive industries (2.3%), and trademark-intensive industries (1.1%) all outpaced gains in non-IP intensive industries.
At Coachella 2012 Tupac Shakur appeared on stage and as if he was actually alive and performing. What rights does the family of Tupac or other deceased entertainers have when it comes to situations like this?
California Civil code Section 3344.1 (a)(1) reads in part:
Any person who uses a deceased personality's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent from the person or persons specified… shall be liable for any damages…
Section (a) (2) reads:
For purposes of this subdivision, a play, book, magazine, newspaper, musical composition, audiovisual work, radio or television program, single and original work of art… shall not be considered a product, article of merchandise, good, or service if it is fictional or nonfictional entertainment, or a dramatic, literary, or musical work.
Having a dead celebrity performing electronically on stage seems like it falls into the audiovisual work exception under section (a) (2). I have yet to see anyone attempt to file a business-method patent on the dead touring, but I assume that someone may attempt to monopolize the business. [Link]
Patent Jobs:
Edell, Shapiro & Finnan is seeking an experienced EE patent attorney with an advanced degree in EE or physics. The firm is also seeking an associate/agent/tech writer with an EE or computer science degree to work at their Rockville, MD office. [Link]
Amgen is searching for Sr. Counsel with 4 years of patent or IP practice to work at their California location. [Link]
North Star IP is looking for a patent associate with 3 to 4+ years of prosecution experience and a background in EE, computer engineering, or computer science to work at their DC office. [Link]
Sterne, Kessler, Goldstein & Fox is seeking experienced electrical IP attorneys with a degree in EE or computer engineering to work at their DC office. [Link]
Cantor Colburn is searching for an associate ME/EE patent attorney with 3-5 years of experience. [Link]
Cantor Colburn is looking for IP litigation associates with 2-4 years of litigation experience. [Link]
The Kohler Company is seeking an IP attorney with 2+ years of experience to work at their Kohler, Wisconsin location. [Link]
Rutan & Tucker is searching for a patent associate/agent with 3-4 years of experience to work at their California office. [Link]
Rathe Lindenbaum is looking for a patent attorney/agent with experience in mechanical, electromechanical or chemical engineering and 3+ years of experience to work at their Milwaukee office. [Link]
NONY is looking for a US patent attorney/agent or UK patent attorney to work at their Paris, France office. [Link]
Upcoming Events:
The University of Colorado School of Law will hold a conference on April 24th. The conference, Patents on the Range or Wild Frontier, will discuss the future of patent policy. Guest speakers include: David Kappos, Don Rosenberg, John Thorne, Paul Ohm, Bernard Chao, and many others. [Link]
ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
The DC Bar IP Law Section 2012 Annual Spring Reception will be held April 25th. The D.C. Bar Intellectual Property Law Section awards the 2012 "Champion of Intellectual Property" Award to the late Paul J. Luckern, Chief Judge of the International Trade Commission. Guest include Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit, Judge Theodore R. Essex of the ITC, and Lynn I. Levine, Director of the ITC's Office of Unfair Import Investigations. [Link]
Fitch, Even, Tabin & Flannery, LLP will present a free one-hour CLE webinar, "Trademark Protection Strategies in Social Media," on April 25, 2012 at 12 noon EST. The proliferation of social media outlets frequented by millions of users have created untold opportunities for trademark exposure and potential infringement. Joseph T. Nabor will discuss strategies to protect trademarks in the social media arena, including monitoring and enforcement against infringement, creating social media policies, related ethics issues, and using social media in litigation support. [Link]
LES 2012 Spring Meeting – "Licensing to Solve the Innovation Gap" will be held May 15-17, Boston, MA. Speakers from GE Healthcare, Harvard, Hoffmann-LaRoche, Intel, Johnson & Johnson, Merck, MIT, Pfizer, Stanford and more will share their expertise on licensing to solve the innovation gap. (Patently-O readers save $100 by using promo code PO12 when registering) [Link]
The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randall R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]
The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]
A recent USPTO whitepaper reports that IP industries contribute $5 trillion and 40 million jobs to the US economy. Some of the report major findings are:
The entire US economy relies on some form of IP, because virtually every industry either produces or uses it.
IP-intensive industries directly accounted for 27.1 million American jobs, or 18.8% of all employment in the economy, in 2010.
Jobs in IP-intensive industries pay well compared to other jobs. Average weekly wages for IP-intensive industries were 42% higher than the average weekly wages in non IP-intensive industries.
Growth in copyright-intensive industries (2.4%), patent-intensive industries (2.3%), and trademark-intensive industries (1.1%) all outpaced gains in non-IP intensive industries.
At Coachella 2012 Tupac Shakur appeared on stage and as if he was actually alive and performing. What rights does the family of Tupac or other deceased entertainers have when it comes to situations like this?
California Civil code Section 3344.1 (a)(1) reads in part:
Any person who uses a deceased personality's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent from the person or persons specified… shall be liable for any damages…
Section (a) (2) reads:
For purposes of this subdivision, a play, book, magazine, newspaper, musical composition, audiovisual work, radio or television program, single and original work of art… shall not be considered a product, article of merchandise, good, or service if it is fictional or nonfictional entertainment, or a dramatic, literary, or musical work.
Having a dead celebrity performing electronically on stage seems like it falls into the audiovisual work exception under section (a) (2). I have yet to see anyone attempt to file a business-method patent on the dead touring, but I assume that someone may attempt to monopolize the business. [Link]
Patent Jobs:
Edell, Shapiro & Finnan is seeking an experienced EE patent attorney with an advanced degree in EE or physics. The firm is also seeking an associate/agent/tech writer with an EE or computer science degree to work at their Rockville, MD office. [Link]
Amgen is searching for Sr. Counsel with 4 years of patent or IP practice to work at their California location. [Link]
North Star IP is looking for a patent associate with 3 to 4+ years of prosecution experience and a background in EE, computer engineering, or computer science to work at their DC office. [Link]
Sterne, Kessler, Goldstein & Fox is seeking experienced electrical IP attorneys with a degree in EE or computer engineering to work at their DC office. [Link]
Cantor Colburn is searching for an associate ME/EE patent attorney with 3-5 years of experience. [Link]
Cantor Colburn is looking for IP litigation associates with 2-4 years of litigation experience. [Link]
The Kohler Company is seeking an IP attorney with 2+ years of experience to work at their Kohler, Wisconsin location. [Link]
Rutan & Tucker is searching for a patent associate/agent with 3-4 years of experience to work at their California office. [Link]
Rathe Lindenbaum is looking for a patent attorney/agent with experience in mechanical, electromechanical or chemical engineering and 3+ years of experience to work at their Milwaukee office. [Link]
NONY is looking for a US patent attorney/agent or UK patent attorney to work at their Paris, France office. [Link]
Upcoming Events:
The University of Colorado School of Law will hold a conference on April 24th. The conference, Patents on the Range or Wild Frontier, will discuss the future of patent policy. Guest speakers include: David Kappos, Don Rosenberg, John Thorne, Paul Ohm, Bernard Chao, and many others. [Link]
ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
The DC Bar IP Law Section 2012 Annual Spring Reception will be held April 25th. The D.C. Bar Intellectual Property Law Section awards the 2012 "Champion of Intellectual Property" Award to the late Paul J. Luckern, Chief Judge of the International Trade Commission. Guest include Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit, Judge Theodore R. Essex of the ITC, and Lynn I. Levine, Director of the ITC's Office of Unfair Import Investigations. [Link]
Fitch, Even, Tabin & Flannery, LLP will present a free one-hour CLE webinar, "Trademark Protection Strategies in Social Media," on April 25, 2012 at 12 noon EST. The proliferation of social media outlets frequented by millions of users have created untold opportunities for trademark exposure and potential infringement. Joseph T. Nabor will discuss strategies to protect trademarks in the social media arena, including monitoring and enforcement against infringement, creating social media policies, related ethics issues, and using social media in litigation support. [Link]
LES 2012 Spring Meeting – "Licensing to Solve the Innovation Gap" will be held May 15-17, Boston, MA. Speakers from GE Healthcare, Harvard, Hoffmann-LaRoche, Intel, Johnson & Johnson, Merck, MIT, Pfizer, Stanford and more will share their expertise on licensing to solve the innovation gap. (Patently-O readers save $100 by using promo code PO12 when registering) [Link]
The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randall R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]
The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]
Are Companies Acting as Government Contractors Immune From Patent Infringement Suits?
The CAFC, in Zoltek Corp. v. United States, No. 2009-5135 (Fed. Cir. Mar. 14, 2012), Zoltek was the assignee of a patent for manufacturing carbon fiber sheets with controlled surface electrical resistivity. The carbon fiber at issue was used by Lockheed Martin to build the F-22 fighter jet, pursuant to a government contract. The manufacturing of the fibers started in Japan, and thereafter imported into the US, where the fibers were processed into sheets and used for F-22.
The court held that when the US is subject to suit under 28 USC 1498(a) for alleged infringement of a patent by a contractor acting by and for the US, the contractor by law is rendered immune from individual liability for the alleged infringement. The court further held that, when a product of a patented process is… imported into the US by or for the US, there is direct infringement under a 1498 action. (In addition the US waives sovereign immunity) Opinion
28 USC 1498
(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.
(c)The provisions of this section shall not apply to any claim arising in a foreign country.
USPTO Will Admit 10 Additional Schools into its Patent Law Clinic Certification Pilot Program
The Pilot Program started began in 2008 with 6 schools and expanded in 2010 to 16 schools. Students in the patent program can expect to draft and file a patent application and respond to an office action. Each law school clinical program must meet and maintain the requirements for USPTO certification in order for student practitioners to practice before the USPTO. The program provides real-world experience to students interested in the field of IP. Submissions will be accepted through June 1, 2012. [Link]
Patent Jobs:
Hoffmann & Baron is seeking a patent attorney/agent with a minimum of 3-5 years of experience in the areas of computers and business methods to work in their Parsippany, NJ office. [Link]
Faegre Baker Daniel's is searching for a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
Larson Newman is looking for patent attorneys with an EE degree and 3-5 years of experience to work in their Austin office. [Link]
Akerman Senterfitt is seeking a chemical patent associate with 1-3 years of experience to work in their Denver office. [Link]
Gilead Sciences is searching for patent litigation counsel with a BS in life sciences and 5-8 years of experience to work at their Foster City, CA office. [Link]
Carlson, Gaskey & Olds is looking for a patent attorney with 4-8 years of patent litigation experience to work at their Birmingham, MI office. [Link]
Klarquist Sparkman is seeking a litigation associate with 1-2 years of experience to work in their Portland office. [Link]
Klarquist Sparkman is seeking a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work in their Portland office. [Link]
Cardinal Intellectual Property is looking for a patent search professional with a JD degree and a technical degree to work remotely. [Link]
Berkeley Lab is searching for a patent attorney with at least 5 years of experience as a patent attorney/agent. [Link]
Faegre Baker Daniels is seeking a trademark litigation associate with 2-3 years of trademark and copyright litigation experience to work in their Minneapolis office. [Link]
Cardinal Intellectual Property is looking for a patent search attorney to work at their Evanston, IL location. [Link]
Wellstat Management Company is searching for a patent attorney/agent with at least 5 years of experience and a background in biomedical or mechanical engineering to work at their Gaithersburg, MD location. [Link]
Stroock
Faegre Baker Daniels is looking for a junior patent litigation associate with 1-2 years of experience to work in their Denver or Boulder office. [Link]
Nixon & Vanderhye is searching for a patent attorney/agent with experience drafting and prosecuting patent applications to work in their Arlington, VA office. [Link]
The DuPont Company is seeking patent agents with experience in preparing and prosecuting patent applications under USPTO TC1600 to work at their Wilmington, DE location. [Link]
Covidien is looking for an IP attorney with 4-6 years of experience to work at their New Haven, CT location. [Link]
Hagens Berman is searching for a patent litigation attorney with 3+ years of experience to work at their Seattle office. [Link]
The USPTO is seeking patent examiners with an engineering degree to work at their Alexandria or Detroit locations. [Link]
Upcoming Events:
On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
The University of Colorado School of Law will hold a conference on April 24th. The conference, Patents on the Range or Wild Frontier, will discuss the future of patent policy. Guest speakers include: David Kappos, Don Rosenberg, John Thorne, Paul Ohm, Bernard Chao, and many others. [Link]
ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]
Are Companies Acting as Government Contractors Immune From Patent Infringement Suits?
The CAFC, in Zoltek Corp. v. United States, No. 2009-5135 (Fed. Cir. Mar. 14, 2012), Zoltek was the assignee of a patent for manufacturing carbon fiber sheets with controlled surface electrical resistivity. The carbon fiber at issue was used by Lockheed Martin to build the F-22 fighter jet, pursuant to a government contract. The manufacturing of the fibers started in Japan, and thereafter imported into the US, where the fibers were processed into sheets and used for F-22.
The court held that when the US is subject to suit under 28 USC 1498(a) for alleged infringement of a patent by a contractor acting by and for the US, the contractor by law is rendered immune from individual liability for the alleged infringement. The court further held that, when a product of a patented process is… imported into the US by or for the US, there is direct infringement under a 1498 action. (In addition the US waives sovereign immunity) Opinion
28 USC 1498
(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.
(c)The provisions of this section shall not apply to any claim arising in a foreign country.
USPTO Will Admit 10 Additional Schools into its Patent Law Clinic Certification Pilot Program
The Pilot Program started began in 2008 with 6 schools and expanded in 2010 to 16 schools. Students in the patent program can expect to draft and file a patent application and respond to an office action. Each law school clinical program must meet and maintain the requirements for USPTO certification in order for student practitioners to practice before the USPTO. The program provides real-world experience to students interested in the field of IP. Submissions will be accepted through June 1, 2012. [Link]
Patent Jobs:
Hoffmann & Baron is seeking a patent attorney/agent with a minimum of 3-5 years of experience in the areas of computers and business methods to work in their Parsippany, NJ office. [Link]
Faegre Baker Daniel's is searching for a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
Larson Newman is looking for patent attorneys with an EE degree and 3-5 years of experience to work in their Austin office. [Link]
Akerman Senterfitt is seeking a chemical patent associate with 1-3 years of experience to work in their Denver office. [Link]
Gilead Sciences is searching for patent litigation counsel with a BS in life sciences and 5-8 years of experience to work at their Foster City, CA office. [Link]
Carlson, Gaskey & Olds is looking for a patent attorney with 4-8 years of patent litigation experience to work at their Birmingham, MI office. [Link]
Klarquist Sparkman is seeking a litigation associate with 1-2 years of experience to work in their Portland office. [Link]
Klarquist Sparkman is seeking a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work in their Portland office. [Link]
Cardinal Intellectual Property is looking for a patent search professional with a JD degree and a technical degree to work remotely. [Link]
Berkeley Lab is searching for a patent attorney with at least 5 years of experience as a patent attorney/agent. [Link]
Faegre Baker Daniels is seeking a trademark litigation associate with 2-3 years of trademark and copyright litigation experience to work in their Minneapolis office. [Link]
Cardinal Intellectual Property is looking for a patent search attorney to work at their Evanston, IL location. [Link]
Wellstat Management Company is searching for a patent attorney/agent with at least 5 years of experience and a background in biomedical or mechanical engineering to work at their Gaithersburg, MD location. [Link]
Stroock
Faegre Baker Daniels is looking for a junior patent litigation associate with 1-2 years of experience to work in their Denver or Boulder office. [Link]
Nixon & Vanderhye is searching for a patent attorney/agent with experience drafting and prosecuting patent applications to work in their Arlington, VA office. [Link]
The DuPont Company is seeking patent agents with experience in preparing and prosecuting patent applications under USPTO TC1600 to work at their Wilmington, DE location. [Link]
Covidien is looking for an IP attorney with 4-6 years of experience to work at their New Haven, CT location. [Link]
Hagens Berman is searching for a patent litigation attorney with 3+ years of experience to work at their Seattle office. [Link]
The USPTO is seeking patent examiners with an engineering degree to work at their Alexandria or Detroit locations. [Link]
Upcoming Events:
On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
The University of Colorado School of Law will hold a conference on April 24th. The conference, Patents on the Range or Wild Frontier, will discuss the future of patent policy. Guest speakers include: David Kappos, Don Rosenberg, John Thorne, Paul Ohm, Bernard Chao, and many others. [Link]
ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]
Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I
Yes, I said that: the Court does not understand the nature of patent law—more precisely, it does not understand what claims do. Reading the Court’s treatment of Prometheus’ claim, one would think that claims are some type of qualitative instruction manual, a recipe that speaks to “audiences” such as doctors, about which things are “relevant to their decision making.” Claims are no such thing: they are definitions that articulate a specific combination of steps or structures. They are objective in form and design, not subjective or advisory. The notion that the claims here “trust” doctors to “use those laws” is at best silly, and at worst badly misguided. Reducing the claim to this “instruction manual” allows the Court to analogize the claim to Einstein “telling linear accelerator operators about his basic law”—a low point in modern legal reasoning.
In this decision, as well as in Bilski, Benson, and Flook, the Court simply does not “get” what claims are about. The entire preemption analysis, born of a conflation of “algorithms” with “scientific truths” in Benson, is based on this misunderstanding. By definition claims preempt, that is what they are designed to do: to preclude one from making, using, selling, etc., the invention. A broadly drafted claim preempts broadly. And it is this further confusion—between “breadth” or “abstraction” and “abstract ideas”—that is the second damaging mistake the Court made (and continues to make).
Retractable Techs., Inc. v. Becton, Dickinson & Co. (on petition for certiorari 2012)
As its company name suggests, Retractable Technologies makes safety syringes that retract after completing a drug injection. Retractable sued BD for patent infringement and won $5 million in damages and permanent injunctive relief. This was the second time that Retractable had filed a lawsuit to enforce its patent. In both cases, the district court interpreted the claim term syringe "body" as encompassing a body "composed of one or multiple pieces." (In the first case, the accused infringer agreed to stop making its product and to pay a $1 million settlement).
On appeal here, BD was able to convince a two-member majority of its Federal Circuit panel to modify the claim construction in a way that limits the "body" element to a "one-piece body." (Majority opinion by Judges Lourie and Plager). The appellate panel narrowly construed the term based upon its reading of the patent specification and the notion that the claims should be limited to what "the inventor actually invented." In dissent, Chief Judge Rader argued that the majority had improperly confined claim scope to the specific embodiments of the invention." Chief Judge Rader also argued in favor of giving more weight to the doctrine of claim differentiation. Here, some of the non-asserted claims in the patent included an explicit "one-piece body" limitation – suggesting that the asserted claim without the "one-piece" limitation must be broader.
After losing the appeal, Retractable filed a petition for rehearing and rehearing en banc. The petition was denied, but Judges Moore and O'Malley each filed dissents.
Supreme Court Petition: Retractable has now filed a petition for writ of certiorari to the United States Supreme Court. The petition raises two questions:
1. Whether a court may depart from the plain and ordinary meaning of a term in a patent claim based on language in the patent specification, where the patentee has neither expressly disavowed the plain meaning of the claim term nor expressly defined the term in a way that differs from its plain meaning.
2. Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question subject to de novo review on appeal.
First Question Goes Nowhere: In my view, the first question presented is not well stated. Of course a court can use context to provide meaning to claim language. A formalistic and restrictive view of patent doctrine was rejected by the Supreme Court in virtually every recent decision, including Mayo, Bilski, KSR, eBay, and MedImmune. Further, many members of the Supreme Court have identified a problem with vague and over-broad claim limitations, and the majority opinion here provides a simple tool for limiting scope: interpret the claims within the context of what was demonstrably understood by the inventor and the examiner and by what would have been known by a reasonably skilled artisan.
Use Specification to Narrow (or Broaden): There are times when the context of the specification is used to broaden the scope of a claim term beyond its ordinary meaning. However, the Federal Circuit judges appear to believe that greater reliance on the specification will usually result in a narrowing of claim scope. Thus, the debate on the role of the specification in claim construction is at least partially a proxy for the debate on whether patents should be given a broad scope or narrow scope. I would again criticize the petition – this time for wholly agreeing that reliance on the specification results in a narrowed scope. Retractable frames the debate on trying to understand "the circumstances in which the language of the specification should narrow the plain meaning of a claim term."
The Second Question is more well framed, although I would have tweaked it slightly to ask: "Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question [that is therefore] subject to de novo review on appeal." The tweak here is important because Retractable is not challenging the Supreme Court's Markman decision but rather challenging the Federal Circuit's Cybor decision. In Markman, the Supreme Court recognized the reality that claim construction includes a number of factual determinations – calling the process a "mongrel" of fact and law. However, the court ruled that claim construction should be treated as an issue of law to be decided by a judge. In Cybor, the Federal Circuit applied its usual formalistic if-then approach to rule that appellate review must be de novo because claim construction is an issue of law. From the petition:
In Markman, this Court held that, for purposes of the Seventh Amendment, the task of construing patent claims falls to trial judges rather than juries. Markman did not decide the standard of review that an appellate court should apply to a district court's claim construction. The Court noted, however, that the process of construing a claim is a "mongrel practice," that "falls somewhere between a pristine legal standard and a simple historical fact." In holding that trial judges are "better suited" for this task than juries, the Court recognized that claim construction requires trial judges to exercise a "trained ability to evaluate the testimony in relation to the overall structure of the patent." Accordingly, the Court held that "there is sufficient reason to treat construction of terms of art like many other responsibilities that we cede to a judge in the normal course of trial, notwithstanding its evidentiary underpinnings." Thus, Markman recognized that claim construction involves underlying factual questions, and said nothing to indicate that the Federal Circuit should displace the district court's resolution of those questions.
There are lots of doctrines that receive de novo review that do not have a reversal rate anywhere near that of claim construction. I think that everyone agrees that claim construction is inherently difficult. Claim construction rulings do not provide a yes-no answer like you might find in an obviousness judgment. Rather, a judge is required to identify the best interpretation of all possible interpretations of each contested claim term. And, unlike statutory interpretation, we do not have the benefit of the scope being developed over time through a series of cases. Rather, in most instances, a court's construction is in the first instance. In addition to the inherent difficulty, claim construction is made more difficult because of the open panel dependence of claim construction decisions. For many years the Federal Circuit refused to admit any panel dependence in its decision making, that has changed.
Where to Focus Assurances?: District court judges complain about claim construction because of the high likelihood that their decisions will be reversed on appeal. Giving deference to district court judgments would likely mean fewer reversals. This approach gives us certainty earlier in the process, but only once the district court issues a final claim construction. That date still seems very late. The scope of patent claims is of critical importance to almost all patent monetization transactions. However, very few of those transactions take place in conjunction with a district court claim construction decision. We need a process for substantially understanding claim scope at a much earlier stage and without relying on a federal court.
One answer for an early understanding of claim scope: Define terms during prosecution. If applicants fail to define terms, examiners should provide their own definitions as part of the office action. In the short-term, the focus should be on terms that are (1) frequently debated in court (such as "server" or "coupled to"; (2) used in the specification in a way that is in tension with the ordinary meaning of a term; or (3) inherently imprecise (such as "about").
Marine Polymer Tech. v. Hemcon (Fed. Cir. 2012) (en banc)
In a fractured en banc decision, the Federal Circuit has held that statutory the intervening rights defense only arises when the text of claims are amended or new claims added during a post grant proceeding. In this case, the claim scope had been arguably changed under Phillips v. AWH based upon arguments made during a reexamination, but the text of the claims had not been amended. Following this decision, the accused infringers cannot claim intervening rights in this situation.
[T]he plain directive of the governing statute before us does not permit HemCon to invoke intervening rights against claims that the PTO confirmed on reexamination to be patentable as originally issued. To be sure, patent applicants’ actions and arguments during prosecution, including prosecution in a reexamination proceeding, can affect the proper interpretation and effective scope of their claims. But in rejecting HemCon’s request for intervening rights, we are not here interpreting claims. Rather, we are interpreting a statute that provides for intervening rights following reexamination only as to “amended or new” claims. The asserted claims of the ‘245 patent are neither.
As part of its ruling, the court noted its perspective that the PTO on reexamination is unlikely to consider a patent claim to be narrowed simply based arguments made by the patentee:
If, in reexamination, an examiner determines that particular claims are invalid and need amendment to be allowable, one would expect an examiner to require amendment rather than accept argument alone.
The doctrine of intervening rights is derived from the Patent Act, which indicates that, following a reexamination, a patentee cannot claim damages for pre-reexamination infringement if the resulting claims were in “amended form” and not “substantially identical” to the original claims. 35 U.S.C. §§ 252 and 307(b).
The dissent argued that any change to the scope of a claim during prosecution should be interpreted as an amendment and that, therefore, arguments and statements by the patentee that would result in a modified claim construction
Split Decision: Only ten of the Federal Circuit judges participated in the decision. Thus, a majority needed at least six votes. As it turns out, only a portion of the majority opinion received six votes. The entire majority opinion was written by Judge Lourie and joined by four other judges: Chief Judge Rader and Judges Newman, Bryson, and Prost. The first half of the majority opinion discussed claim construction issues and the second part discussed the intervening rights defense. Judge Linn brought the final vote for the majority, but Judge Linn only agreed to the portion of the opinion focusing on intervening rights. Judge Dyk wrote in dissent and the entire opinion was joined by Judges Gajarsa, Reyna, and Wallach. In parallel fashion, the dissent first discussed claim construction and then discussed intervening rights. Judge Linn joined the claim construction portion of the dissent but not the intervening rights portion. Thus, in the final tally, claim construction was split 5-5 and intervening rights issues was divided 6-4.
On February 29th of this year Renee Quinn of IPWatchdog wrote a post titled, Boutique Rising: A Conversation with Winthrop & Weinstine, in which she discusses the increase in IP litigation boutiques. [Link] I recently spoke with attorney Jason Mudd of the newly formed IP law firm Erise IP (www.eriseip.com) about the trend towards IP litigation boutiques. Jason recently left a large Kansas City law firm, along with partners Eric Buresh and Adam Seitz, to start Erise IP with a team of attorneys from their prior firm. Erise IP brought along several large clients, including Garmin, Sony, Ubisoft, Ford, and Mazda, to name a few. Jason believes their new firm is consistent with a trend of IP litigation groups departing large law firms to form boutique firms that are able to provide clients with greater flexibility demanded by the rapidly changing IP litigation landscape. While the numbers are not out yet, there could possibly be a recent trend towards IP litigation boutiques.
Copyright Infringement
Last week while I was in copyright class, Professor Crouch brought up the Lexis-Nexis and Westlaw class action copyright infringement case. The plaintiffs in the case claim that the defendants (Lexis and Westlaw) copied thousands of copyright-protected works created by, and owned by, the attorneys and law firms who authored them. So, this case got me thinking, do companies like Google Patents infringe patent lawyers and patent firms copyrights? Similar to Westlaw and Lexis, Google downloads thousands of patent applications to store in their database. While there is not a clear answer on whether patent applications are copyrightable or not, it seems that patent applications can have parts covered by copyright –drawings for example, even if the entire patent application is not copyrightable. In Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003), the 7th Circuit recognized the copyrightability of an inventor's patent drawings. Does, this case alone indicate that Google and others may be guilty of copyright infringement for downloading patent applications? [Link]
It should be noted that Google is distinguishable from Lexis and Westlaw because Google does not charge users directly, and this fact adds weight to their fair use argument.
Patent Searching Tool
ArchPatent, a free-to-use patent search resource which provides novel ways to search, sort, and view patent information, has launched a revamped website this week. The revamp drew its inspiration from beta feedback over the last five months from individuals within the IP industry. ArchPatent Founder Brad Chassee indicates that the objective with the revamp is to focus the site on providing the simplest, most intuitive USPTO search tool – one which experts enjoy using and one which those new to patent searching would actually be able to navigate. ArchPatent wants everyone to be able to "slice and dice" patent search results quickly and efficiently, which should drastically reduce search times and simplify complex search tasks. The site is now ad free with some additional functionality being developed as part of a soon-to-be-released premium offering. The site has a useful filtering tool and filter types include: classification, assignee, examiner, agent, applicant and most referenced. The site now provides access to searchable USPTO data back to 1920 and pdfs back to 1790. [Link]
Patent Jobs:
Buchanan Ingersoll & Rooney is seeking an Electrical patent agent with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
Stoel Rives is searching for a patent attorney with 3-5 years of experience drafting electrical-related patent applications to work in their Portland or Seattle office. [Link]
Buchanan Ingersoll & Rooney is seeking an Electrical patent associate with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
SAS is looking for a patent counsel with 3 years of patent prep and prosecution experience in the software field and a degree in EE or CS to work at their Cary, NC location. [Link]
Sterne, Kessler, Goldstein & Fox is seeking chemist patent attorneys with at least a master's degree in organic or medicinal chemistry to work in their DC office. [Link]
Sterne, Kessler, Goldstein & Fox is searching for a chemical or biochemical IP attorney with a degree in CE, BM, or ME and 1-3 years of experience to work in their DC office. [Link]
Millennium Inorganic Chemicals is looking for corporate counsel with a degree in chemistry or chemical engineering and 7+ years of experience to work at their Glen Burnie, MD location. [Link]
Rutan & Tucker is seeking a trademark clerk with a minimum of 1 year of IP docket & filing experience to work at their Costa Mesa, CA office. [Link]
Westerman, Hattori, Daniels & Adrian is searching for a chemical IP attorney/agent with a 3 years or less of experience to work at their DC office. [Link]
Cantor Colburn is looking for an associate patent attorney with a chemical engineering degree and 2-5 years of experience to work in one of their offices. [Link]
Roberts Mlotkowski Safran & Cole is seeking a patent attorney with 2-4 years of experience and a degree in EE to work in their McLean, VA office. [Link]
Upcoming Events:
LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
The New Jersey Intellectual Property Law Association will hold a half-day Patent Litigation Seminar on Wednesday, March 14, 2012 11:45 am to 5:45 pm. Guest speakers include: Paul Berghoff, Kara Stoll, William McElwain, Richard Bress, Barbara Fiacco, and Lewis Ho. [Link]
C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conferencebrings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
The 14th Annual Richard C. Sughrue Symposium on IP Law and Policy will be held March 19th at The University of Akron Law School. The program will include a review of recent developments in patent, trademark, and copyright law, as well as a panel discussion on international IP. David Kappos will be the featured speaker and he will discuss the USPTO's implementation of the American Invents Act. Other guest speakers include: Timothy Holbrook, Mark Janis, former chief judge Paul Michel, Samuel Oddi, Ryan Vacca, Susan Pan, Harold Wegner, and many others.
American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of coreFDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, "Provisional Patent Applications: Making Substance in a Land Without Form," on March 21, 2012 at 12 noon EST. The first-to-invent impact of the America Invents Act requires a serious reevaluation of the use and content of provisional patent applications. Stephen G. Parmelee will address approaches to leveraging the provisional patent application opportunity by encouraging the inclusion of substantive content while taking economic advantage of the stylistic freedom that provisional filings permit. [Link]
The University of Pittsburgh School of Law will have their annual Innovation Law Lecture on March 22, 2012, 4-5PM. This year's guest speaker will be Professor Rochelle Dreyfuss from NYU School of Law and her talk is entitled "Are Patents Good for Science?" The event is open to the general public and one (1) CLE credit has been requested for the lecture. [Link][Link]
American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
Managing Intellectual Property is holdings its US Patent Reform Forum conference March 27, 2012 in Washington D.C. The forum will bring together top officials, leading counsel at US corporations and their private practice advisers for a number of lively and informative sessions looking at the strategic implications of US Patent Reform. Speakers include: David Kappos, Judge Paul Michel, Gene Quinn, Robert Armitage, Phil Johnson, and many others. (Patently-O readers will receive a discount and in-house IP counsel from large corporations and research institutes attend free of charge.) [Link]
The ABA Section of IP Law will hold its 27th Annual IP Law Conference March 28-30 in Arlington, VA. The conference is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world. Speakers and moderators include: Sharon Marsh, Keisha Hylton-Rodic, Alexander Wilson, Steven Emmert, Teresa Rea, James Bikoff, David Kappos, and many others. The discounted early registration deadline is March 14. [Link][Link]
AIPLA and The University of San Diego School of Law will host the 2012 Electronic & Computer Patent Law Summit on April 2nd. The summit will include in-house counsel from Qualcomm, Apple, SAP, Covidien, ViaSat, Google, and Cisco, among others, as well as a distinguished panel of US District Court judges. Topics will include the new First to File system, an update on divided infringement, how the patent portfolio use and acquisition landscape is changing, and a discussion of the patent pilot program. [Link]
On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
On February 29th of this year Renee Quinn of IPWatchdog wrote a post titled, Boutique Rising: A Conversation with Winthrop & Weinstine, in which she discusses the increase in IP litigation boutiques. [Link] I recently spoke with attorney Jason Mudd of the newly formed IP law firm Erise IP (www.eriseip.com) about the trend towards IP litigation boutiques. Jason recently left a large Kansas City law firm, along with partners Eric Buresh and Adam Seitz, to start Erise IP with a team of attorneys from their prior firm. Erise IP brought along several large clients, including Garmin, Sony, Ubisoft, Ford, and Mazda, to name a few. Jason believes their new firm is consistent with a trend of IP litigation groups departing large law firms to form boutique firms that are able to provide clients with greater flexibility demanded by the rapidly changing IP litigation landscape. While the numbers are not out yet, there could possibly be a recent trend towards IP litigation boutiques.
Copyright Infringement
Last week while I was in copyright class, Professor Crouch brought up the Lexis-Nexis and Westlaw class action copyright infringement case. The plaintiffs in the case claim that the defendants (Lexis and Westlaw) copied thousands of copyright-protected works created by, and owned by, the attorneys and law firms who authored them. So, this case got me thinking, do companies like Google Patents infringe patent lawyers and patent firms copyrights? Similar to Westlaw and Lexis, Google downloads thousands of patent applications to store in their database. While there is not a clear answer on whether patent applications are copyrightable or not, it seems that patent applications can have parts covered by copyright –drawings for example, even if the entire patent application is not copyrightable. In Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003), the 7th Circuit recognized the copyrightability of an inventor's patent drawings. Does, this case alone indicate that Google and others may be guilty of copyright infringement for downloading patent applications? [Link]
It should be noted that Google is distinguishable from Lexis and Westlaw because Google does not charge users directly, and this fact adds weight to their fair use argument.
Patent Searching Tool
ArchPatent, a free-to-use patent search resource which provides novel ways to search, sort, and view patent information, has launched a revamped website this week. The revamp drew its inspiration from beta feedback over the last five months from individuals within the IP industry. ArchPatent Founder Brad Chassee indicates that the objective with the revamp is to focus the site on providing the simplest, most intuitive USPTO search tool – one which experts enjoy using and one which those new to patent searching would actually be able to navigate. ArchPatent wants everyone to be able to "slice and dice" patent search results quickly and efficiently, which should drastically reduce search times and simplify complex search tasks. The site is now ad free with some additional functionality being developed as part of a soon-to-be-released premium offering. The site has a useful filtering tool and filter types include: classification, assignee, examiner, agent, applicant and most referenced. The site now provides access to searchable USPTO data back to 1920 and pdfs back to 1790. [Link]
Patent Jobs:
Buchanan Ingersoll & Rooney is seeking an Electrical patent agent with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
Stoel Rives is searching for a patent attorney with 3-5 years of experience drafting electrical-related patent applications to work in their Portland or Seattle office. [Link]
Buchanan Ingersoll & Rooney is seeking an Electrical patent associate with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
SAS is looking for a patent counsel with 3 years of patent prep and prosecution experience in the software field and a degree in EE or CS to work at their Cary, NC location. [Link]
Sterne, Kessler, Goldstein & Fox is seeking chemist patent attorneys with at least a master's degree in organic or medicinal chemistry to work in their DC office. [Link]
Sterne, Kessler, Goldstein & Fox is searching for a chemical or biochemical IP attorney with a degree in CE, BM, or ME and 1-3 years of experience to work in their DC office. [Link]
Millennium Inorganic Chemicals is looking for corporate counsel with a degree in chemistry or chemical engineering and 7+ years of experience to work at their Glen Burnie, MD location. [Link]
Rutan & Tucker is seeking a trademark clerk with a minimum of 1 year of IP docket & filing experience to work at their Costa Mesa, CA office. [Link]
Westerman, Hattori, Daniels & Adrian is searching for a chemical IP attorney/agent with a 3 years or less of experience to work at their DC office. [Link]
Cantor Colburn is looking for an associate patent attorney with a chemical engineering degree and 2-5 years of experience to work in one of their offices. [Link]
Roberts Mlotkowski Safran & Cole is seeking a patent attorney with 2-4 years of experience and a degree in EE to work in their McLean, VA office. [Link]
Upcoming Events:
LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
The New Jersey Intellectual Property Law Association will hold a half-day Patent Litigation Seminar on Wednesday, March 14, 2012 11:45 am to 5:45 pm. Guest speakers include: Paul Berghoff, Kara Stoll, William McElwain, Richard Bress, Barbara Fiacco, and Lewis Ho. [Link]
C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conferencebrings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
The 14th Annual Richard C. Sughrue Symposium on IP Law and Policy will be held March 19th at The University of Akron Law School. The program will include a review of recent developments in patent, trademark, and copyright law, as well as a panel discussion on international IP. David Kappos will be the featured speaker and he will discuss the USPTO's implementation of the American Invents Act. Other guest speakers include: Timothy Holbrook, Mark Janis, former chief judge Paul Michel, Samuel Oddi, Ryan Vacca, Susan Pan, Harold Wegner, and many others.
American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of coreFDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, "Provisional Patent Applications: Making Substance in a Land Without Form," on March 21, 2012 at 12 noon EST. The first-to-invent impact of the America Invents Act requires a serious reevaluation of the use and content of provisional patent applications. Stephen G. Parmelee will address approaches to leveraging the provisional patent application opportunity by encouraging the inclusion of substantive content while taking economic advantage of the stylistic freedom that provisional filings permit. [Link]
The University of Pittsburgh School of Law will have their annual Innovation Law Lecture on March 22, 2012, 4-5PM. This year's guest speaker will be Professor Rochelle Dreyfuss from NYU School of Law and her talk is entitled "Are Patents Good for Science?" The event is open to the general public and one (1) CLE credit has been requested for the lecture. [Link][Link]
American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
Managing Intellectual Property is holdings its US Patent Reform Forum conference March 27, 2012 in Washington D.C. The forum will bring together top officials, leading counsel at US corporations and their private practice advisers for a number of lively and informative sessions looking at the strategic implications of US Patent Reform. Speakers include: David Kappos, Judge Paul Michel, Gene Quinn, Robert Armitage, Phil Johnson, and many others. (Patently-O readers will receive a discount and in-house IP counsel from large corporations and research institutes attend free of charge.) [Link]
The ABA Section of IP Law will hold its 27th Annual IP Law Conference March 28-30 in Arlington, VA. The conference is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world. Speakers and moderators include: Sharon Marsh, Keisha Hylton-Rodic, Alexander Wilson, Steven Emmert, Teresa Rea, James Bikoff, David Kappos, and many others. The discounted early registration deadline is March 14. [Link][Link]
AIPLA and The University of San Diego School of Law will host the 2012 Electronic & Computer Patent Law Summit on April 2nd. The summit will include in-house counsel from Qualcomm, Apple, SAP, Covidien, ViaSat, Google, and Cisco, among others, as well as a distinguished panel of US District Court judges. Topics will include the new First to File system, an update on divided infringement, how the patent portfolio use and acquisition landscape is changing, and a discussion of the patent pilot program. [Link]
On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
