Tag Archives: Claim Construction

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland 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]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Guest Post: Where do Processes of Nature End and Processes of Human Invention Begin?

Patent, , ,

The following excerpt comes from Professor Robin Feldman's forthcoming Harvard University Press book Rethinking Patent Law which will be released in 2012. The excerpt is reproduced with permission from Harvard and Professor Feldman.

Looking from the perspective of preemption can be helpful in developing an approach to many of the questions generated by the emerging field of personalized medicine. Personalized medicine is an area of applied research devoted to developing tests that operate on biological and clinical data from a patient (e.g., protein levels, genetic mutations, medical history) to provide diagnoses, prognoses, and treatment regimens specific to the patient. Cases arising in this field include LabCorp, which concerned correlating elevated homocysteine levels with certain deficiencies, and Prometheus, which concerned determining metabolite levels after administering a particular class of drugs for gastrointestinal disorders and adjusting the dosage of the drug based on the metabolite levels.

As discussed earlier, the Federal Circuit's decision in Prometheus seemed to suggest that most life science inventions would satisfy the requirements of patentable subject matter, while the PTO's application of Prometheus could lead to the rejection of numerous inventions in this arena. Neither extreme is necessary if one focuses on preemption of laws of nature and natural phenomena as the primary concern.

For example, LabCorp was a relatively simple application of personalized medicine. It involved one biomarker and a reasonably straightforward correlation for treatment. In contrast, most personalized-medicine diagnostics are developed using whole genome expression or sequencing arrays to identify hundreds or even thousands of biomarkers that can be used to diagnose a specific disease state. The machine learning algorithms used to identify these markers do not operate on statistical concepts as simple as linear correlation, which for some of us is complicated enough. Machine learning algorithms employ statistical models to identify different combinations or "patterns" of markers that correlate with a specific disease state. Usually these markers are selected and statistically modeled to compensate for human genetic and environmental variation.

Thus, most personalized-medicine programs are tremendously complex compared even to logistic regression and other simple forms of statistical analysis. They are not simply a reflection of a natural phenomenon; they are an interpretive model of nature. Nor are they analogous to or preemptive of human thought. It would be quite improbable for a physician to be able to sit down with a pen and paper and work out a diagnostic by applying a machine learning algorithm or logistic regression to hundreds of biomarker levels.i

Consider the first person who discovered that human chorionic gonadotropin (hCG) levels indicate pregnancy when they are elevated above a certain level, and assume that the inventor also created a home pregnancy test for measuring the hCG. One could think of this as a simplistic personalized diagnostic device in which a particular nongenetic marker is measured to identify a state of health. The inventor could certainly patent the kit, which would consist of the physical device with its particular components. The inventor should not, however, be allowed to patent the process of testing human urine for an elevated level of hCG and correlating that level with the state of pregnancy. The core of the invention, the fact that hCG above a particular level confirms pregnancy, is a simple reflection of nature rather than an interpretive model. To understand the difference, compare the process of measuring one marker by looking for a simple level to the average personalized invention. The modern personalized invention may utilize hundreds of biomarkers analyzed by means of statistical patterns. Even if the complex process involved in identifying the relevant biomarkers yields a limited number of biomarkers to consider for a relevant patient, that information does not relate directly to anything. For example, with a personalized medicine invention involving only a few biomarkers, each of those markers generally has confidence intervals assigned to indicate the likelihood that the presence or absence of a factor or the particular level of that marker will translate into a particular diagnosis or successful treatment. Once biomarkers are collected from a relevant patient, they must be processed by statistical modeling to determine how the various factors and confidence levels for this particular patient should be interpreted. The complexity and variability of individual humans ensures that a model like this can never be a simple reflection of nature. Rather, it is no more than an interpretation of nature, albeit one that is extremely important in the treatment of a specific disease.

In contrast, the inventor of the method of measuring hCG is looking at only one marker, and it is a marker that is elevated in the same range for pregnant women in general. Thus, it requires no complex modeling and is a direct reflection of a phenomenon of nature. As a result, it would not be patentable subject matter on the grounds that the core of the invention is no more than the discovery of a natural phenomenon.

The hCG invention should also fail on the grounds that performing the test is no more than a mental step. The method does not require complex computer analysis to interpret the data; it requires observing a particular level of a substance and reaching a conclusion from that level. Preventing human beings from looking at information and concluding something threatens to preempt simple thought.

Personalized medicine, with its marriage of biology and computer technology, provides a wonderful opportunity to understand and tease out some of the threads of patentable subject matter. These inventions demonstrate how early misconceptions about the nature of computer programs and the nature of mathematics are causing problems in modern case law.ii

Part of the difficulty can be traced to confusion between the content of something that is being expressed and the language in which it is expressed. For example, we know that laws of nature are not patentable. Some of these laws are familiar to us in the formulaic language in which we normally see them expressed. Most people, for example, would recognize one of Einstein's laws of physics expressed as E = MC2. One could express that same law in prose, however, rather than formulaic language by explaining the way in which matter and energy are interchangeable.

The choice of language is irrelevant.iii We disallow patenting of E = MC2 not because it is expressed in mathematical form but because it represents one of the building blocks of scientific exploration and endeavor. Patenting that law would preempt scientific exploration by occupying a basic concept.

In addition to laws of physics, other things can be expressed in formulaic language. Expressing something in formulaic language, however, does not mean that what is being expressed is a law of nature. Thus, the fact that computer programs are expressed in a formulaic language that looks somewhat like math to the layperson does not mean that the concepts underlying a particular program are analogous to math, let alone analogous to a law of nature. Two things expressed in the same language or the type of same language are not necessarily analogous. Comic books and the Constitution are both expressed in the English Language, but they are hardly analogous. Our focus should remain on the content of what is being expressed and on the preemptive effect that might result from patenting that type of content.

Some unfortunate language in the Supreme Court's Diehr opinion, which flows from this misperception, makes it more difficult to properly separate software claims that should be patentable from ones that should not. In searching for logic to explain why the rubber-molding invention at issue was patentable while other apparently similar inventions had failed, the Court made the following comment: "A mathematical formula as such is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment."iv

Other courts have jumped on the language to declare that so-called field of use restrictions cannot save software patents.v Even the recent Supreme Court opinion in Bilski wandered into the same territory when referencing its earlier decision in Flook:

Flook established that limiting an abstract idea to one field of use . . . did not make the concept patentable. That is exactly what the remaining claims in petitioners' application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter.vi

It is true, as a general matter, that if one were to claim a law of nature, the claim would not be rendered patentable by limiting use of that law of nature to a particular field. Thus, for example, an inventor could not save a claim to all uses of E = MC2 by limiting the claim to "all uses of E = MC2 in the construction field."

Sliding the analogy over to software, however, involves logical errors. The logic that appears to have been used is the following. Computer programs are mathematical formulas, and mathematical formulas are laws of nature. We know that laws of nature cannot be rendered patentable by limiting their application to a particular field of use. Computer programs, therefore, cannot be rendered patentable by limiting their application to a particular field of use.

This sequence contains a number of logical errors. Computer programs may be expressed in a language that looks like math, and some do involve calculations, but they are not necessarily analogous to mathematical formulas. Most important, they are not analogous to natural laws just because both are expressed in formulaic languages. One must look to the content of the computer program and its potentially preemptive effect to determine patentability.

As described earlier, the term "algorithm" in computer science means a series of steps performed on input data by a computer. This process may or may not raise preemption concerns. Some computer "algorithms" are based on properties inherent in types of input and output data. Such broad, generic algorithms, which can be used on a variety of types of input data, may raise threats of preemption. In other words, if an inventor asks for a patent on a software program that works with whole sets of numbers or entire types of data, such a patent would not be patentable subject matter. Particularly in light of the bargaining potential that would come with such a grant, the patent would risk tying up entire types of data rather than constituting something applied.

This does not mean that all software is unpatentable. Claims to programs that are applied to a specific type of data in the pursuit of particular types of outputs do not present the same level of preemption threat. For example, a personalized medicine algorithm (i.e., series of steps) that employs a specific type of statistical model using a fixed set of markers to produce a very specific diagnosis would not threaten to preempt other methods of performing the same diagnosis that use different markers or novel types of statistical models. Such an invention should be patentable.

Computer programs may be many things, including methods of creating useful models of the world around us, methods of providing interpretations of information, and methods of sorting information. When methods of creating a particular type of model are described at a very general level, they may threaten to preempt the broad activity of exploration. However, when claimed at the level of a specific method of sorting a particular type of information for a particular pursuit, they should constitute an applied invention. Such specificity is the hallmark of what separates unpatentable abstractions from applications of those abstractions in the useful arts in a way that is worthy of patent protection.

* * * * *

i One scholar has suggested that even LabCorp could have survived as patentable subject matter if the claims drafter had chosen a narrower description. See Patricia Dyck, "Post-Bilski Personalized Medicine: At Home on the Range" (forthcoming) (manuscript on file with author) (presenting an empirical survey of the most frequently claimed biomarkers in personalized medicine and discussing problems in allowing claims for sets of biomarkers that are small and not limited to the diagnosis of a specific disease state or condition).

ii I have discussed some of the misconceptions described here in the context of patenting genes. See Feldman, "Whose Body Is It Anyway?" 1400–1402.

iii One could easily argue that all math is invented. It is a human-made method of imposing order and structure on the natural world. For an interesting and accessible discussion of Wittgenstein's view that all mathematics is a human invention and various responses to that argument, see Ludwig Wittgenstein, Wittgenstein's Philosophy of Mathematics §3.1, http://plato.stanford.edu/entries/wittgenstein-mathematics.

iv Diamond v. Diehr, p. 191 (citation omitted).

v See, e.g., In re Bilski, p. 957 (noting that mere field-of-use limitations are generally insufficient to render an otherwise ineligible process claim patent eligible).

vi Bilski v. Kappos, p. 3231.

Summary of Mayo v. Prometheus Oral Argument

Patent, , , , , ,

Guest Post by Jonas Anderson, Assistant Professor at American University Washington College of Law

Yesterday morning I attended the highly anticipated oral argument in Mayo v. Prometheus at the Supreme Court.  The case raises the question of whether a patent claim that covers correlations between blood tests and patient health is 'patentable' under 35 U.S.C. § 101. 

I assume most PatentlyO readers are familiar with this case, but will provide a very brief background before diving into today's argument.  Prometheus is the owner of a patent that covers a method of analyzing the effectiveness of thiopurine drugs for treating gastrointestinal disorders.  Claim 1 of the relevant patent reads as follows:

    (1) A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8×10^8 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8×10^8 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

Prometheus offers a blood test which analyzes metabolite levels in patients.  Mayo sought to offer a competing blood test at a lower price.  Prometheus promptly sued Mayo for infringement.

I have divided my review into 7 topics.  The topics are ranked based on my impression of the importance that the justices appeared to give to each topic.  Although I have tried to transcribe the key statements made by the justices and advocates as accurately as possible, all quotations are approximate.

1.  The preemption question

The justices and the parties focused much of their discussion on the issue of preemption.  One of Mayo's principal arguments in its brief and at oral argument is that Prometheus's patent preempts the use of a law of nature — namely, the relationship between metabolite levels and patient health. 

Justice Kennedy began the preemption questioning by asking whether a system of measurements that continually monitor drug retention would be patentable.  Mayo's counsel responded that it would depend on the breadth of the claims.  "Claim specificity is key."  According to Mayo, if Prometheus's patent had provided competitors room to develop different, more accurate metabolite levels it may have passed the 101 test.  But, in this case Prometheus's patent preempted any reduction in dosage if a patient's metabolite levels were above 400 pmol.  In Mayo's view, "incidental" steps added to a natural phenomenon were insufficient to avoid preemption.  Thus, any patent consisting only of a natural phenomenon and "incidental steps" would be preempted under Mayo's test.

Justice Breyer, the author of the famous LabCorp dissent, focused nearly all of his questions on the issue of differentiating between a patentable application of a law of nature and an unpatentable law of nature.  He pressed both parties to identify a process by which the court could discern the difference.  Mayo's counsel first suggested that a preemption test could be used to ferret out unpatentable laws of nature.  Later, he suggested that Bilski suggests that courts can determine if the non-novel elements of a claim are "incidental."  "You're getting warmer," Justice Breyer quipped.

Justice Scalia interrupted the exchange and scoffed "I'm not comfortable with that.  It depends on how broad it is?  Is up to 700 [pmol]? Is that OK?  550?  830?  How are we supposed to apply that kind of rule?  It just seems to me not a patent rule that we could apply."  It seems fair to say that Scalia was not convinced by either party that a 101 standard based on preemption could be reliably applied by courts.

Despite Scalia's concerns, preemption seemed to carry the day — with both sides.  Justice Breyer continued the preemption line of questioning with Prometheus's counsel.  "What has to be added to a law of nature to make it a patentable process?  If you put too little to the answer to that question, I believe I can take things like e=mc2 and make them patentable, and if you put too much in you'll wreck your case."  Prometheus's counsel also advocated a preemption test, but its test would be much more limited than Mayo's.  Whereas Mayo would consider any natural phenomenon with "incidental" transformational steps as preempted subject matter, Prometheus would only find preemption when no applicative steps were added.  Prometheus repeatedly cited to the Morse telegraph case as a classic example of preemption under 101.

Of course, Prometheus's suggested application of the preemption test has an obvious problem: Bilski.  The patented hedging method in Bilski was not a naked claim to an abstract idea; the claim was limited by both industry and analysis techniques.  Prometheus's counsel acknowledged this difficulty, but argued that Bilski's abstract idea was merely coupled with other abstract ideas.

2.  The 'creep' of novelty and obviousness

Many of the Justices, but primarily the Chief Justice, expressed concern about the blurred relationship between novelty, non-obviousness and the 101 inquiry.  Chief Justice Roberts wanted to know what efficiencies would be gained, if any, by relying on Section 101 instead of obviousness or novelty to reject invalid patents.  Mayo made the case that 101 is a much more manageable and predictable doctrine than 102 or 103.  Prometheus countered by reference to the very case before the court — clearly Section 101 had not led to a quick resolution of this long-running case.

The Chief Justice asked Prometheus's counsel whether he was advocating for the elimination of a Section 101 limitation on patentability.  In response, counsel conceded that he was urging that courts rely on other patent doctrines in most cases, but that there would be some instances, such as the Morse case, in which 101 would be the proper vehicle for rejecting or invalidating a patent.

3.  The impact (or lack thereof) of LabCorp

In my view, one of the most surprising statements of the day came about as a result of Mayo's suggestion—in response to a question from Justice Scalia—that Justice Breyer's dissent in LabCorp could guide some of the analysis in this case.  Justice Breyer quickly interrupted and seemed to distance himself from his dissent.  Although he was convinced that the patent claims in the LabCorp case were merely directed to an observation of a law of nature, the dissenting opinion, he said, "lacked an explanation of why [the claims in that case were not] an application of the law of nature."

Throughout the argument, he was clearly wrestling with how much "extra" is needed in order to patent a newly discovered natural law.  If, as many have predicted, Justice Breyer pens part of the Prometheus decision, I expect that he will attempt to give some guidance to this most difficult question.

4.  The innovation question.

A healthy amount of discussion centered around the impact on innovation that a decision in this case will have.  Justice Breyer, who had been extremely skeptical of diagnostic method patents in his dissent in LabCorp, noted that discovering laws of nature can be an incredibly expensive process.  His search for a line between phenomenon and application seemed to center around balancing the incentive to discover new laws of nature with a desire to allow access to those laws to follow-on innovators. 

Mayo repeatedly urged the court to overturn the patent at issue by arguing that Promtheus could limit others from developing new, improved, and cheaper alternatives to their blood test and was therefore preemptive.  Mayo argued that if the claims incorrectly correlated metabolite levels and outcomes, "the public is stuck with the erroneous information."  In response, Prometheus stated that there are ways that follow-on innovators can improve on Prometheus's patent; namely, by acquiring an improvement patent or by challenging Prometheus's patent under Section 101's utility requirement.

Finally, as any good appellate attorney would, Mayo's counsel attempted to limit the perceived impact of a reversal.  When asked by Justice Sotomayor how many patents would be impacted by a ruling favoring Mayo, counsel responded "only a couple."

5.  The scope of Prometheus's patent

The newest Justices, Sotomayor and Kagan, directed nearly all of their questions to the scope of the patent claims at issue.  Although claim construction was no longer at issue, the Justices probed the extent to which Prometheus's patent foreclosed competitors.  Justice Kagan wanted to know what, in Mayo's opinion, Prometheus's patent attorney could have done to make their invention patent-eligible.  Mayo's counsel responded by saying that a claim with a more narrow range of relevant metabolite levels and a specified treatment protocol would satisfy 101.  Justice Kagan followed-up by asking whether "the difference is the scope of the ranges, or the treatment protocol."  "Both," Mayo responded.

Justice Kagan followed up with Prometheus.  When asked why the patent drafter had failed to include a therapeutic step (which Mayo conceded would have made the claim patent-eligible), Prometheus's counsel responded that it was unnecessary.  He pointed to numerous patents that merely claimed a method of gathering information: patents on identifying ore deposits (but not requiring removal); patents on navigating boats in fog (but not requiring redirecting the ship); patent to find leak in a water main (but not requiring repair).

6.  Prior decisions: are they helpful?

Justice Scalia seemed genuinely dismissive of the Court's precedents that have held that laws of nature (or natural phenomenon) are not patentable.  "Tell me why you can't patent nature?" he asked Mayo's counsel early in the proceeding.  "Doesn't any medical patent rely on natural processes?  Even if you invent a new drug, what that new drug does is natural.  Whatís the difference [from this case]?"  When Mayo's counsel responded that the specificity would be the key test for preemption, Justice Kennedy responded "I thought your answer to Justice Scalia would be…that [the claims here cover] the measurement of a result.  That's how I would have answered the question.  But that's obviously not the right way to do it."

In a related vein, Justice Breyer openly questioned whether the holdings in Flook and Diehr can be reconciled.  "If you look at the Court's cases, they seem to say Flook, one thing, and Diehr another thing."

7.  The transformation question

Almost no time was devoted to discussing whether the claims at issue meet the machine or transformation test. In fact, I can't recall hearing the words "Machine or Transformation" escape from the Justices.  Perhaps the Court is going to distance itself from the MOT test — or at least give courts another "clue."

Conclusion

Predicting the outcome of Supreme Court rulings in patent cases is a treacherous hobby.  If anything, the argument today revealed a Court troubled by the fact that both sides have urged an application of Section 101 that centers on preemption, but with little guidance on how to apply such a test.  While I would expect a ruling to have some mention of preemption, none of the justices seemed comfortable with either side's suggested application of such a test, while Justice Scalia was dismissive of such an idea. 

Perhaps most surprising was that the Court's most vocal critic of diagnostic patents, Justice Breyer, appeared to distance himself from LabCorp.  I get the feeling that he is still troubled with the idea of granting patent rights covering natural phenomenon, he is genuinely concerned with the impact of the Court's decision in this case on the medical innovation community. 

Inherency and Functional Claim Language

Patent,

In re Conte (Fed. Cir. 2011)

Patent Attorney Francis Conte's patent application is directed to a fly-swatter in the shape of a pistol. When the trigger is pulled, an elastic lash provides a deadly whip.

The PTO rejected Conte's invention as obvious. On appeal, the Federal Circuit affirmed – holding the patent invalid in light of U.S. Patent No. 1,779,507 ("White") and U.S. Patent No. 2,642,057 ("Watkins"). These two references clearly taught all of the structural elements of the claims, and the court held that "it would have been obvious to one of ordinary skill in the art to combine the features of White and Watkins and arrive at the invention claimed in the '288 application."

All well and good, except for the limitations not discussed by the court.  The White and Watkins references were both directed to toy guns. White shot rubber bands. Watkins used a rubber band to shoot a pellet or pea. Neither was used to kill insects with a whip.   On the other hand, Conte's claimed invention is direted to an "insect swatter" with a distal end "for being aimed at an insect" and a lash for "whipping … against said insect."  Although the Federal Circuit did not address the insect limitations, the government brief noted that the cited prior art is all inherently "capable of being used to shoot insects" and that the claims only require that capability.  The government's interepretation here is the more traditional interpretation of functional limitations. However, that interpretation received some push-back in the Federal Circuit's recent Typhoon Touch decision.

Mr. Conte lost a similar Federal Circuit appeal in a predecessor case but was able to narrow his claims sufficiently to receive a patent. 

 

Therasense: Encouraging Intentional Deception?

Dissent, Inequitable Conduct, Patent, Patent Cases 2011, , ,

Patent2011053Powell v. Home Depot (Fed. Cir. 2011).

Michael Powell’s invention is fairly simple –  it covers a guard for a circular saw on an arm.  In 2004, Mr. Powell developed the guard and provided several prototypes to Home Depot for the company to use in its in-store saws for cutting raw lumber to customer specifications.  Rather than having Powell manufacture the guards, Home Depot turned to another company for its 2,000 stores.  Powell obtained a patent then sued Home Depot.  After a three-week trial, a Florida jury awarded Powell $15 million in damages.  The district court also awarded enhanced damages, attorney fees, and pre-judgment interest — bringing the total to $24 million.

On appeal, the Federal Circuit affirmed claim construction, infringement, willfulness, inequitable conduct, and damages. Dissenting-in-part, Judge Dyk argued only that the finding of willful infringement was incorrect because Powell did not prove that Home Depot’s non-infringement defense was objectively unreasonable as is required under the objective prong of the willfulness inquiry.

Inequitable Conduct: One interesting element of the appeal involved inequitable conduct.  During prosecution, Powell had filed a Petition to Make Special on grounds that he was obligated to manufacture and supply devices embodying the claims sought. MPEP 708.02.  That original petition was roughly correct based upon ongoing manufacturing negotiations with Home Depot. Although negotiations with Home Depot fell-through before the PTO granted the petition, Powell never informed the PTO that he no longer qualified for the Special designation under the prospective manufacture prong and actively encouraged the PTO to decide the petition.

In a pre-Therasense decision, the district court held that the failure to inform the  PTO was done with intent to deceive the PTO, but that the intentional omission was not material because (1) the timing was not related to patentability and (2) Powell could have instead filed a petition to make special based upon ongoing infringement of the applied-for claims.  Under Therasense, inequitable conduct will not normally be found based upon an applicant’s improper omission unless the omission is the but-for cause of the patent being issued.

On appeal, the Federal Circuit affirmed — holding that:

Where, as here, the patent applicant fails to update the record to inform the PTO that the circumstances which support a Petition to Make Special no longer exist—that conduct does not constitute inequitable conduct. That is so because Mr. Powell’s conduct obviously fails the but-for materiality standard [of Therasense] and is not the type of unequivocal act, “such as the filing of an unmistakably false affidavit,” that would rise to the level of “affirmative egregious misconduct. Id.

This case creates further difficulty for patent attorneys by giving a free-pass to patent applicants who intentionally deceive the PTO in order to benefit their case.  Although participating in such activity violates the rules of conduct for patent law professionals under 37 C.F.R. 10.22, patent owners apparently will not face consequences.  Adding to the incentive for bad behaviour is the PTO’s lax enforcement through the Office of Enrollment and Discipline; the new statute of limitations on attorney misconduct charges; and the new supplemental examination procedures that allows patentees to whitewash patents obtained through inequitable conduct.  For some this may not be intuitive, but the primary solution is not increased enforcement but instead for the PTO to avoid relying upon attorney statements.

Claim Construction in the Abstract

Claim Construction, Conference or CLE, Dissent, Patent, Patent Cases 2011, , ,

By Dennis Crouch

Typhoon Touch Tech. v. Dell, Lenovo, Toshiba, Fujitsu, Sand Dune Ventures, Panasonic, Apple, HTC, and Palm (Fed. Cir. 2011)

Touch screen technology has taken-off as an important element of consumer electronics. Typhoon’s US Patent Nos. 5,379,057 and 5,675,362 cover various embodiments of a “portable keyboardless computer system” with a “touch-sensitive screen.”

Typhoon appealed an E.D. Texas ruling that its patents were invalid and not infringed. The appeal focused on the claim construction that served as the basis for both invalidity and non-infringement. The appellate decision is notable for the detached process that the court used to consider claims elements at issue. The opinion never discussed the crux of the invention or its contribution to the art and instead simply looked to the disputed claim terms and the relation of those terms in the specification (as required by Phillips v. AWH).

This week, I participated in a roundtable discussion at Yale Law School sponsored by the Kauffman foundation and by Yale’s Information Society Project (ISP). A substantial amount of the discussion focused on problems stemming from our current claim construction process and our ongoing focus on claim language as opposed to invention or its contribution to the art.

For patent attorneys prosecuting patents, the claims are often seen as equivalent to the invention. The new patent act supports that definition by shifting focus away from the invention and instead onto the “claimed invention.” Thus, the new § 102(a)(1) asks whether “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The new statute’s sole focus on invention as claimed is largely just a codification of fairly well accepted Federal Circuit precedent without much thought of the consequences. Of course, broad subject matter eligibility described in State Street Bank and the TSM test for obviousness were, until quite recently, well accepted Federal Circuit precedents as well. In the past few years, the Supreme Court rolled-back the clock on those issues – returning focus to pre-1982 case law. For “invention” however, the new statute appears to lock-in the claimed-invention as the ongoing focus of patent law.

Judge Kimberly Moore highlighted this issue in her recent dissent from the court’s denial of en banc rehearing of Retractable Technologies, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011). In that opinion, Judge Moore noted that the approach of the panel decision in Retractable is evident of a major divide amongst Federal Circuit judges as to whether the inventor’s contribution to the art – “what the inventor actually invented” – should be considered in the claim construction process.

This week, my patent law students each argued a mock-Markman hearing – revisiting the facts of Nystrom v. Trex and arguing over whether Ron Nystrom’s claimed decking “board” should be limited to cover only to wood cut from a log. That litigation was interesting because it involved five different court decisions on the proper construction of the term. The final appellate decision narrowed the term’s meaning in a way that allowed Trex’s composite planking to avoid infringement.

Claim construction has become a fundamental aspect of every patent case – even to the extent that Section 101 patentable subject matter decisions turn on the meaning bestowed upon particular claim terms. For patent attorneys, all of this focus on claim meaning puts more pressure on the drafting of the claims and the specification. The sad thing about Nystrom’s patent is that he would have easily won the case if the patent attorney who drafted the application had thrown-in language indicating that a “board” could be made of various materials, not just wood cut from a log. This counterfactual conclusion is sad for Nystrom as the inventor, but it is also sad that such a major weight is placed on non-inventive boilerplate language. In my mind, the importance of claim construction should push the USPTO to do a better job of ensuring that the terms of issued patents are well defined.

###

The Typhoon decision is also notable in the way that the court narrowly interpreted functional claim limitations. As background, Typhoon’s claim was directed to a “computer” that included various elements including a “memory for storing [a] data collection application.” Typhoon argued its claimed invention only required that the memory be capable of storing the data collection application. However, the District Court Judge Davis and Federal Circuit agreed that the proper construction required that memory actually be used for storing the data collection application. In so holding, the courts looked to the specification and found that the described embodiments all had memories that actually included the application rather than just the capability.

###

Finally, the court looked at Typhoon’s “Means for cross-referencing” limitation. The district court held that limitation invalid as indefinite under 35 U.S.C. § 112 because the specification did not include an algorithm adequate to provide sufficient structure for the means-plus-function limitation, citing Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 521 F.3d 1328, 1334 (Fed Cir. 2008). On appeal, the Federal Circuit rejected that conclusion – finding that the specification did disclose a cross-referencing algorithm in plain language in the text of the specification. The court went on to write that “computer code is not required to be included in the patent specification.” Rather, what is required is disclosure so that one of ordinary skill in the art would recognize the structure as linked to the claimed function.

###

  • Judge Newman wrote the court opinion and was joined by Chief Judge Rader and Judge Prost;
  • The Appellant-Patentee is represented on appeal by Charles Wolfe (Blank Rome);
  • Ed Reines (Weil Gotshal) and Joe Re (Knobbe) were co-lead-counsel for all the appellee-defendants. Briefs were also signed by attorneys at K&L Gates, Baker Botts, Amster Rothstein, Perkins Coie, Covington & Burling, and Malloy & Malloy, as well as Eric Albritton from the Albritton firm.

Patentable Subject Matter: Relying on Benson; Construing Claims for Eligibility

Patent, Patent Cases 2011, Patentable Subject Matter, Software

By Dennis Crouch

FuzzySharp Tech. Inc. v. 3DLabs Inc. (Fed. Cir. 2011)

In a per curiam opinion marked nonprecedential, the Federal Circuit has vacated and remanded the subject matter invalidity finding of a N.D. California District Court and instead ordered the court to rework its decision in light of Bilski v. Kappos, 130 S. Ct. 3218 (2010) and subsequent Federal Circuit decisions on point. As discussed below, FuzzySharp’s invention relates to compression software for computer graphics. U.S. Patent Nos. 6,172,679 and 6,618,047. The main idea of the invention is to avoid calculations associated with always hidden surfaces. Although the specification explains that its implementation uses “fuzzy” math to calculate always hidden surfaces. However, “fuzzy” limitations are not found in the asserted patent claims. The application was filed in 1997, but claims priority to a 1991 Australian patent application.

FuzzySharp’s appeal was filed after the district court determined that the claimed method failed to pass the machine-or-transformation and therefore, under the prevailing law at the time, the method did not constitute patentable subject matter. In re Bilski, 545 F.3d 943 (2008). In its 2010 Bislki decision, the Supreme Court rejected the notion that the machine-or-transformation test could serve as the exclusive test of the patentable subject matter of a newly invented process. In the new rubric, the machine-or-transformation test offers only an important clue.

In its opinion, the Federal Circuit largely agreed with the lower court’s conclusion that the FuzzySharp claims fail the machine-or-transformation test, but, following the new Bilski rubric, remanded for a determination on the ultimate question of patentable subject matter.

Meaningful Limitations: FuzzySharp’s asserted claims involve two elements that are potentially linked to a machine – computation and computer storage. However, the appellate panel found those elements lacked “meaningful limits” on claim scope in the same way that the recitation of a general-purpose-computer is not a meaningful limitation of a software process that will only be performed on a computer. (Citing Gottshalk v. Benson, 409 U.S. 64 (1972)).

Claim Construction: An important and arising issue is the interplay between claim construction and patentable subject matter. Under Federal Circuit precedent, claim construction appears to be a necessary precursor. However, the Supreme Court has regularly ignored details of claim language in making its determinations – focusing instead on what it saw as the invention.

Here, the court held that some claim construction is necessary: “[W]e conclude that … the patent eligibility of at least one of the asserted claims turns on questions of claim construction that the district court did not have the opportunity to address.” It will be interesting to watch how the parties argue on remand for claim construction results that favor their hoped-for subject matter eligibility outcome.

Notes:

  • The per curiam panel included Judges Bryson, O’Malley, and Reyna.
  • The U.S. application was prosecuted by Carl Oppedahl’s Colorado-based firm.
  • The patentee is represented by Matthew McAndrews from the Niro firm on appeal; Jonathan Baker from Skadden Arps is handling the appellate defense.
  • Here is Claim 12 of the ‘047 patent that the Federal Circuit analyzed:

    12. A method of reducing a step of visibility computations in 3-D computer graphics from a perspective of a viewpoint, the method comprising:

    computing, before said step and from said perspective, the visibility of at least one entity selected from 3-D surfaces and sub-elements of said 3-D surfaces, wherein said computing step comprises:

    employing at least one projection plane for generating projections with said selected set of 3-D surfaces and said sub-elements with respect to said perspective;

    identifying regions on said at least one projection plane, wherein said regions are related to the projections associated with said selected 3-D surfaces, said sub-elements, or bounding volumes of said 3-D surfaces or said sub-elements;

    updating data related to said regions in computer storage; and

    deriving the visibility of at least one of said 3-D surfaces or said sub-elements from the stored data in said computer storage; and

    skipping, at said step of visibility computations, at least an occlusion relationship calculation for at least one entity that has been determined to be invisible in said computing step.

 

 

Federal Circuit Again Declines to Revisit Cybor

Claim Construction, Dissent, En Banc, Patent, Patent Cases 2011,

By Jason Rantanen

Retractable Technologies, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011) (CAFC en banc denial) Download 2010-1402 en banc order
Before Rader (dissenting), Newman, Plager, Lourie, Bryson, Linn, Dyk, Prost, Moore (dissenting), O'Malley (dissenting), and Reyna.

As in the past, the Federal Circuit has again expressly declined an invitation to revisit its 1998 en banc holding in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 that claim construction is reviewed de novo.  Once again, however, that decision was not without dissent.  Both Judge Moore, joined by Chief Judge Rader, and Judge O'Malley wrote to express their view that Cybor should be revisited. Professor Tun-Jeng Chiang expresses his views on this issue below.

In addition to recommending that the court reconsider the issue of deference, Judge Moore's dissent emphasizes the problematic nature of claim construction review by the Federal Circuit itself: on the one hand, "[c]laim construction is the single most important event in the course of a patent litigation"; on the other, "our rules are still ill-defined and inconsistently applied, even by us."  Moore dissent at 1.  This problem is especially acute in Retractable Technologies: "Retractable simply cannot be reconciled with our en banc decision in Phillips."  Id. at 4.  Here, Judge Moore asserts, the majority applied its own approach to claim construction, not that of Phillips, "[c]hanging the plain meaning of a claim term to tailor its scope to what the panel believes was the actual invention."  Id. at 6.  This is not an isolated instance, Judge Moore points out, but is a common practice that points to a fundamental split on the court about the nature of claim construction: a disagreement over whether claim scope should be limited to "what the inventor actually invented" or instead construed according to the plain meaning to one of skill in the art, a meaning that may be informed – but is not dictated – by the specification.

Note: In  support of her view that the Federal Circuit's own claim construction is ill-defined and inconsistently applied, Judge Moore cited the views of several commentators who "have observed that claim construction appeals often lead to frustrating and unpredictable results for both the litigants and trial courts," including Dennis's post on the panel decision and Hal Wegner's post on Arlington Industries v. Bridgeport Fittings on IP Frontline. 

Guest Post by Tun-Jen Chiang: Functionalism versus Faux Formalism at the Federal Circuit

Articles and Publications, Claim Construction, En Banc, Guest Post, Patent,

Guest Post by Tun-Jen Chiang, Assistant Professor of Law, George Mason University School of Law

One of the longstanding myths about the Federal Circuit is that it is formalist.  This is usually levied by academics as a criticism, but no one does more than the Federal Circuit itself to spread the myth.  For judges, being labeled as a jurisprudential machine is a badge of honor.  Thus, even where their true motivation is clearly policy-based, judges invariably couch their opinions in legalistic terms.

The recent dissents from en banc rehearing in Retractable Technologies, Inc. v. Becton, Dickinson & Co. provide perfect examples.  The issue in Retractable is an old one: should the Federal Circuit give deference to district judges on claim construction?  Judge Moore (joined by CJ Rader) and Judge O’Malley both argued the court should.  Their dissents each begin with the assertion that the Supreme Court in Markman held that claim construction is a “mongrel practice” with both legal and factual components, and this counsels for deference to trial judges.

Let me start by debunking this legalistic argument.  The Supreme Court in Markman did not hold that claim construction is a “mongrel practice.”  It started off by observing that claim construction is intrinsically a mongrel practice, and then held that the Court would adopt a legal fiction that claim construction was a pure question of law.

Why do I say this?  If it is correct that Markman held that claim construction has a factual component, then the result under traditional common law principles is not that trial judges get to decide the factual component.  Trial judges do not decide facts; juries do.  Some well-known exceptions are for suits in equity, for jurisdictional facts, and for procedural facts.  But nobody contends that these exceptions apply.  The claim-construction-is-factual line of reasoning is a legalistic and logical dead end.

Rather, the case for deference to district judges on claim construction must succeed, if at all, entirely based on policy-based concerns.  Trial judges have better access to evidence than appellate judges, and yet they are more experienced at dealing with legal documents like patents than juries.  This is a perfectly plausible policy-based argument, and is almost certainly the true reason for Judges Moore and O’Malley to seek deference for trial judges.  Too bad they feel the need to couch the argument in formalist terms.

Mayo v. Prometheus: the Patentee’s Section 101 Argument

Patent, Patent Cases 2011, Patentable Subject Matter, , ,

Mayo Collaborative Services v. Prometheus Labs., Inc. (Supreme Court 2011)

The briefing continues in this patentable subject matter case pending before the US Supreme Court. (Read Professor Golden's discussion of the first round of merits briefs).  In its newly filed merits brief, Prometheus attempts to refocus attention on the "concreteness" of its patented method of personalizing the dosage of a particular drug treatment. The refocus begins with the statement of the question presented.  Download 2011-10-31_Prometheus Merits Brief. 

Mayo, the petitioner challenging the patent, opened briefing with a question of whether a patent that "covers observed correlations between blood test results and patient health, so that the patent effectively preempts use of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve "transformations" of body chemistry."  This language of Mayo's question is directly suggestive of the decisions of Benson and Flook — both of which held claimed methods to be unpatentable.

In its brief, Prometheus restates the question in a way that instead highlights the concrete and practical application language found in Diehr and Brenner v. Manson. Prometheus asks: "Whether the Federal Circuit correctly held that concrete methods for improving the treatment of patients suffering from autoimmune diseases by using individualized metabolite measurements to inform the calibration of the patient's dosages of synthetic thiopurines are patentable processes under 35 U.S.C. §101."

Prometheus describes its challenged invention as follows:

First, most of the claims begin with the administration of a thiopurine compound to a patient with an autoimmune disorder. As noted, the thiopurine converts within the body into metabolites that do not otherwise exist in nature.

Second, the patient's metabolite levels are determined. Because "metabolite levels are not detectable in raw human tissue," all methods for measuring their concentration require "significant chemical and physical alteration of blood or human tissue" and sophisticated laboratory equipment and machines. Some of the dependant claims, for example, specify the use of high pressure liquid chromatography (HPLC), which entails an intricate series of operations on the blood (including heating, centrifuging, separating, and adding various reagents), running the resulting solution through a computer-controlled chromatography instrument, calculating the peak height or peak area, and feeding those figures into an equation, which finally outputs the metabolite levels.

Third, the metabolite measurements are compared to the patents' reference levels, "warning" the physician about the potential efficacy or toxicity of the patient's dosage.

Several important points are hidden by the patentee's statement of its invention: First, although most of the patented claims do require administration of thiopurine some claims do not include that particular step.  Second, although current technological methods of measuring metabolite levels apparently require the extraction of human tissue and the use of "sophisticated laboratory equipment," the broadest claims only require "determining" of the metabolite levels.  Finally, it is likely important to recognize that the claimed method is about tweaking the dosage of thiopurine and at the time of the invention most of the individual elements of the claim were already well known: It was well known that thiopurine could be used to treat IBD; it was well known that that the body converted thiopurine to the claimed metabolite; it was known that individuals had varying responses to thiopurine; and it was known that dosage should be adjusted so that it would be both effective and nontoxic.

Summary of the Prometheus argument:

First, to be patent-eligible, a process must really be a process—a series of steps that involve physical action in the real world, as opposed to merely an idea or principle stated in the abstract. Second, that process must be described at a narrow and specific enough level of generality that it does not preempt abstract ideas or basic building blocks of science that go far beyond what the patentee actually invented: A process for using a telegraph is patentable; the basic idea that information might be transmitted at a distance by exploiting laws of electromagnetism is not.

A. Prometheus's patented methods describe concrete methods for improving treatment of seriously ill patients with specific synthetic drugs. These patents do not claim the "correlations" they employ in the abstract, but as part of specific physical processes employing drugs and machines. . . . As the Federal Circuit recognized, the patents-in-suit pass [the machine-or-transformation] test with flying colors and easily satisfy the requirements of §101. Mayo attempts to avoid that conclusion in three ways, none of which has merit. First, Mayo invites this Court to discard the two initial steps (administering the thiopurines and determining the resulting metabolite levels) because they were "well known" in the art. But this Court rejected that "point-of-novelty" approach over 30 years ago in Diehr and again recently in Bilski. Second, Mayo argues that those same two initial steps should be disregarded because, according to Mayo, they are not "central" to the patents' purpose. Mayo does this only by ignoring the Federal Circuit's settled construction that the claims are limited to patient treatment (a question not presented here) and that those two steps are essential to that purpose. Third, Mayo invites this Court to invent, out of whole cloth, a categorical rule that processes ending with the provision of useful information cannot be patentable—even if preceding steps involve machines and physical transformations. That argument also is inconsistent with Bilski, and it would impose an arbitrary and (in the information age) absurd limitation on patentability.

B. The patents-in-suit do not preempt natural phenomena in any relevant sense. Their "correlations" concern certain properties attending certain uses of non-natural thiopurine compounds, which would not exist but for the handiwork of man. A patent system that recognizes thiopurine compounds themselves as potentially patentable subject matter, allowing preemption of all uses of these compounds, cannot be concerned that a process patent may preempt some of their uses. . . .

C. Prometheus agrees with the United States that the Patent Act's express statutory criteria for patentability—under 35 U.S.C. §§102, 103, and 112—make expansive judicial lawmaking under §101, of the sort invited by Mayo's arguments, unnecessary. But the application of those provisions is not before the Court in this case, and presents difficult and fact-bound questions that the lower courts should address in the first instance on remand.

II. Mayo proposes to transform §101 into an invitation for ad hoc, case-by-case evaluation of whether granting a particular patent will promote or retard the progress of the useful arts. That would create an unadministrable morass for courts and patent examiners, doom any hope for consistent administration of the patent laws, and usurp Congress's authority to determine the appropriate scope of the patent laws.

III. Any change in the Court's §101 jurisprudence that permitted a ruling in Mayo's favor, on whatever grounds, would have drastic and unfortunate consequences. It would upend settled expectations by invalidating thousands of diagnostic and personalized treatment patents. And it would stifle investment and innovation in the nascent field of personalized medicine. Contrary to Mayo's understanding, government funding does not translate pure academic research into practical products that benefit patients, and doctors themselves cannot bring to bear the resources necessary to fuel innovation and commercialize inventions on a large scale. Mayo's contention that patents like these hinder medical care is also unpersuasive. The United States is the world leader in biotechnology and personalized medicine, in part because investors have committed billions of dollars in capital in reliance on the prospect of patents like these. Thousands have been issued, including many to Mayo itself. Mayo's short-sighted view would exchange long-term innovation (including cost reductions) for ephemeral savings. In any event, Congress already considered Mayo's invitation to broadly restrict patent protection for medical diagnostic and treatment methods—and chose to adopt a limited personal immunity for doctors instead.

VS Tech v. Twitter: Patentable Subject Matter

Patent, Patent Cases 2011, Patentable Subject Matter, , ,

VS Tech v. Twitter, 11–cv-0043 (E.D. Virginia 2011)

Trial is set for this week in the patent infringement lawsuit between VS Tech and Twitter.  VS’s asserted U.S. Patent No. 6,408,309 claims a “method of creating an interactive virtual community of people in a field of endeavor” and has a February 2000 filing date.  The inventor is Dinesh Agarwal who has also been a patent attorney since 1985.  VS Tech was formed to pursue the lawsuit and is headquartered in Mr. Agarwal’s law office address. The first two claims of the patent are reproduced below:

What is claimed is:

1. A method of creating an interactive virtual community of people in a field of endeavor, comprising the steps of:
a) selecting a field of endeavor;
b) compiling a list of members in the selected field;
c) selecting a member from the compiled list of members based on a preselected factor;
d) obtaining biographical information about the selected member;
e) processing the biographical information in a preselected format to create a personal profile of the selected member;
f) publishing the profile of the selected member on a machine readable media; and
g) allowing the selected member to interact with the profile.

2. The method of claim 1, wherein the step (f) comprises publishing the profile of the selected member on a network of computers.

In his most recent judgment in the case, Judge Morgan denied Twitter’s motion for summary judgment of invalidity under 35 U.S.C. 101, 102 & 103 and non-infringement.

The section 101 decision is interesting in that the judge treated the machine-or-transformation test as a question of fact to be determined by the jury.  “In light of all of the foregoing considerations, the Court finds that the evidence is sufficient for a reasonable juror to conclude that the ‘309 patent is linked to a particular machine or apparatus.”  Like claim construction and obviousness, patentable subject matter is treated by the courts as a question of law. However, unlike claim construction, the appellate courts have never held that it must be the judge who decides section 101 issues.

When the case was filed in January, Patent Law reporter Joe Mullin wrote “The central role of patent lawyers in suits like this raises questions about the health of the U.S. patent system. Patent lawyers are insiders in this system, and an increasing number of them aren’t satisfied just with being very-expensive service providers to patent owners. They’re seeing the millions made by so-called patent trolls and are eager to get into the game themselves. The patent office simply isn’t set up to say no to a persistent applicant, and the patent lawyers know that as well as anybody.  Mike Masnick filed his story under the “bang-head-slowly dept.”

The following is the text of Twitter’s proposed jury instructions on what it terms “unpatentable subject matter”:

Even if an invention is both new and not obvious, a patent claim may be invalid if its subject matter is not patentable. The law establishes three categories that are not eligible for patents: laws of nature, physical phenomena, and abstract ideas.

Twitter contends that the asserted claims of the ‘309 patent claim an unpatentable abstract idea. Methods which can be performed mentally, or which are the equivalent of human mental work, are abstract ideas which cannot be patented. An abstract idea is unpatentable even if the patent claim limits the idea’s use to a particular technological environment, or adds insignificant post-solution activity. Systems that depend for their operation on human intelligence alone cannot be patented.

A useful and important clue for determining whether a patent claims unpatentable subject matter is whether the claim is tied to a particular machine or apparatus, or transforms a particular article into a different state or thing. This is called the “machine or transformation test.” To satisfy the machine prong of this test, the use of the machine must also impose meaningful limits on the claim’s scope. If the claim does not satisfy the machine-or-transformation test, this indicates that the claim may be invalid because it claims unpatentable subject matter.

 

 

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , ,

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , ,

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, , ,

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, USPTO News,

Where Will the Patent Satellite Offices Open!

  • There currently is a lot of lobbying going on by politicians to bring the USPTO to their state. Lawmakers from Silicon Valley, Colorado and Texas are trying to win one of the two satellite offices, since Detroit already is entitled to an office under Leahy-Smith. Colorado Sens. Michael Bennet and Mark Udall, sent a letter to David Kappos trying to sell him on the Rocky Mountain State. Also California lawmakers Anna Eshoo and nine other from sent a letter to Obama making their pitch for Silicon Valley. [Link]

Beacon Navigation Files Suit Against Car Makers

  • On October 11th Beacon Navigation filed patent infringement suits against all the big name automobile manufactures. Beacon claims that automobile manufactures infringed either all or some of their patents including 5,819,201, 6,163,269, & 5,878,368. Beacon claims that because the GPS navigation systems in their products are specially adapted for an infringing use of each patent, and embody a material part of the inventions claimed in each patent. As noted by PriorSmart, Beacon is the first plaintiff to file a high volume of individual cases since the new joinder restrictions were enacted. [Complaint]

Mark T. Banner Scholarship

  • The Richard Linn American Inn of Court is proud to offer the Mark T. Banner Scholarship for law students. This scholarship is part of The Richard Linn American Inn of Court's commitment to fostering the development of intellectual property lawyers of high ethics, civility and professionalism, and especially those from diverse backgrounds. [Link]

Patent Jobs:

  • Harman International is seeking a patent attorney with at least 8 years of experience. [Link]
  • Klarquist Sparkman is searching for lateral patent associates or patent agents with at least 1-4 years of experience. [Link]
  • Klarquist Sparkman is searching for a patent attorney or patent agent with 3+ years of experience. [Link]
  • Lee & Hayes is looking for patent attorneys with at least 3 years of experience. [Link]
  • Withrow & Terranova is seeking patent attorneys or patent agents with at least one year of experience. [Link]
  • Trading Technologies is searching for a patent agent with 3-5 years of experience. [Link]
  • Trading Technologies is seeking a patent attorney with 3-5 years of experience. [Link]
  • Volpe and Koenig is looking for a Japanese patent paralegal with prior experience as a patent paralegal. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Stay Pending Reissue: Timing and Blog Reliability

Patent, Patent Cases 2011, Reexamination, Reissue,

Tyco Fire Products LP v. Victaulic Co., 10-cv-4645 (E.D. Pa. October 4, 2011)

by Dennis Crouch

In September 2010, Tyco Fire filed suit against Victaulic alleging infringement of two fire sprinkler system patents. U.S. Patent Nos. 7,793,736 and 7,819,201. Almost one-year into the lawsuit, Tyco Fire filed a pair of reissue application with the PTO – admitting that that both patents have defects that need correcting. The reissue applications request that the PTO narrow the subject matter being claimed with the apparent hope of avoiding an adverse invalidity decision in court.

Patentlyo087_small[1] After filing the reissue applications, the patentee requested that the district court stay the litigation pending the outcome of the reissue. In response, Victaulic cited my post from January 2011 identifying the average five-year pendency for reissued patents. In a brief filed under seal, Tyco's attorneys from Morgan Lewis called my post "unreliable" and "unsubstantiated" because it was found in a blog.

In deciding the issue, the judge correctly found that the reissue will certainly take some time even if my post regarding the average delay does not exactly predict the path for Tyco's applications. A potential important difference is that my data reflects the average for all reissue prosecutions but does not separate-out cases going through expedited reissue. See MPEP § 1442.

In the end, the judge refused to stay the litigation based upon the potential delay and the fact that the reissue does not appear to be likely to narrow the issues in the litigation. In addition, the court found that the reissue was motivated by claim construction questions posed by the defendant in the litigation. This timing issue (first seeing the claim construction arguments, then filing for reissue) raised "alarm bells" with the judge who identified the move as a potential "litigation gambit" intended to give the plaintiff a tactical advantage.

Stay denied.

Note: I contacted the Morgan Lewis attorneys who submitted the brief for a comment on what was particularly unreliable or unsubstantiated regarding my post. They have not responded.

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent,

Is it really a First-to-File Patent System?

  • With the passage of the America Invents Act (AIA), the US was going to become a First-to-File, instead of a First-to-Invent patent jurisdiction. However, was this really accomplished with the AIA, or was something else achieved? When most people think of a First-to-File patent system, they would probably think it means exactly what it says (the first person to file the patent application has priority). However, the 1-year grace period exceptions in 35 U.S.C. 102(b) seems to create a quasi or pseudo First-to-File system.

    102(b) (1) reads:

    • DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. – A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if –
  1. The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

The language of 102(b)(1) could cause lots of controversy. Essentially if an inventor puts his invention or disclosure on the internet or discloses it any public way, he/she has one year from that date to file a patent application, and the disclosure would not count as prior art against the inventor. However, the disclosure would count as prior art for a later inventor, which seems to suggest a First-to-Invent system. This creates an incentive for inventors to disclose inventions immediately so as to bar other inventors and receive an early priority date. I expect litigation about this topic and the many situations that could arise.

Judge T. John Ward, Sr. Steps Down

  • Judge Ward, who is credited with turning Marshall, Texas into an unlikely hotspot for patent litigation, will return to the practice of law at Ward & Smith. Judge Ward will practice law alongside his son T. John ("Johnny") Ward, Jr. During Ward's tenure, the Eastern District also developed a reputation as being a haven for patent holders, particularly nonpracticing entities, or "patent trolls." Could the departure of Judge Ward potentially lead to a decrease in the amount of cases filed in the Eastern District of Texas? [Link]

WIPO's Statistical Country Profiles Tool

  • Statistical country profiles provide information on patents, utility models, trademarks and industrial designs. They cover different dimensions of IP activity, including incoming and outgoing filings, the share of filings in different technological fields, total patents in force, and the use of international IP systems by applicants. The filings and grants are divided into the following categories: "resident" – domestic filings; "non-resident" – filings coming in from other countries; "abroad" – filings going out to other countries. The statistics also associate IP activity relative to countries' economic performance. For example, users can compare the trend of a country's total IP filings – defined as the sum of resident and abroad filings – with that of the country's GDP. Furthermore, they indicate the country's global rank for each indicator. [Link]

Upcoming Events:

  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes,

Is it really a First-to-File Patent System?

  • With the passage of the America Invents Act (AIA), the US was going to become a First-to-File, instead of a First-to-Invent patent jurisdiction. However, was this really accomplished with the AIA, or was something else achieved? When most people think of a First-to-File patent system, they would probably think it means exactly what it says (the first person to file the patent application has priority). However, the 1-year grace period exceptions in 35 U.S.C. 102(b) seems to create a quasi or pseudo First-to-File system.

    102(b) (1) reads:

    • DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. – A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if –
  1. The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

The language of 102(b)(1) could cause lots of controversy. Essentially if an inventor puts his invention or disclosure on the internet or discloses it any public way, he/she has one year from that date to file a patent application, and the disclosure would not count as prior art against the inventor. However, the disclosure would count as prior art for a later inventor, which seems to suggest a First-to-Invent system. This creates an incentive for inventors to disclose inventions immediately so as to bar other inventors and receive an early priority date. I expect litigation about this topic and the many situations that could arise.

Judge T. John Ward, Sr. Steps Down

  • Judge Ward, who is credited with turning Marshall, Texas into an unlikely hotspot for patent litigation, will return to the practice of law at Ward & Smith. Judge Ward will practice law alongside his son T. John ("Johnny") Ward, Jr. During Ward's tenure, the Eastern District also developed a reputation as being a haven for patent holders, particularly nonpracticing entities, or "patent trolls." Could the departure of Judge Ward potentially lead to a decrease in the amount of cases filed in the Eastern District of Texas? [Link]

WIPO's Statistical Country Profiles Tool

  • Statistical country profiles provide information on patents, utility models, trademarks and industrial designs. They cover different dimensions of IP activity, including incoming and outgoing filings, the share of filings in different technological fields, total patents in force, and the use of international IP systems by applicants. The filings and grants are divided into the following categories: "resident" – domestic filings; "non-resident" – filings coming in from other countries; "abroad" – filings going out to other countries. The statistics also associate IP activity relative to countries' economic performance. For example, users can compare the trend of a country's total IP filings – defined as the sum of resident and abroad filings – with that of the country's GDP. Furthermore, they indicate the country's global rank for each indicator. [Link]

Upcoming Events:

  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent,

Is it really a First-to-File Patent System?

  • With the passage of the America Invents Act (AIA), the US was going to become a First-to-File, instead of a First-to-Invent patent jurisdiction. However, was this really accomplished with the AIA, or was something else achieved? When most people think of a First-to-File patent system, they would probably think it means exactly what it says (the first person to file the patent application has priority). However, the 1-year grace period exceptions in 35 U.S.C. 102(b) seems to create a quasi or pseudo First-to-File system.

    102(b) (1) reads:

    • DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. – A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if –
  1. The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

The language of 102(b)(1) could cause lots of controversy. Essentially if an inventor puts his invention or disclosure on the internet or discloses it any public way, he/she has one year from that date to file a patent application, and the disclosure would not count as prior art against the inventor. However, the disclosure would count as prior art for a later inventor, which seems to suggest a First-to-Invent system. This creates an incentive for inventors to disclose inventions immediately so as to bar other inventors and receive an early priority date. I expect litigation about this topic and the many situations that could arise.

Judge T. John Ward, Sr. Steps Down

  • Judge Ward, who is credited with turning Marshall, Texas into an unlikely hotspot for patent litigation, will return to the practice of law at Ward & Smith. Judge Ward will practice law alongside his son T. John ("Johnny") Ward, Jr. During Ward's tenure, the Eastern District also developed a reputation as being a haven for patent holders, particularly nonpracticing entities, or "patent trolls." Could the departure of Judge Ward potentially lead to a decrease in the amount of cases filed in the Eastern District of Texas? [Link]

WIPO's Statistical Country Profiles Tool

  • Statistical country profiles provide information on patents, utility models, trademarks and industrial designs. They cover different dimensions of IP activity, including incoming and outgoing filings, the share of filings in different technological fields, total patents in force, and the use of international IP systems by applicants. The filings and grants are divided into the following categories: "resident" – domestic filings; "non-resident" – filings coming in from other countries; "abroad" – filings going out to other countries. The statistics also associate IP activity relative to countries' economic performance. For example, users can compare the trend of a country's total IP filings – defined as the sum of resident and abroad filings – with that of the country's GDP. Furthermore, they indicate the country's global rank for each indicator. [Link]

Upcoming Events:

  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Sarnoff: Derivation and Prior Art Problems with the New Patent Act

Academic Studies, Articles and Publications, Guest Post, Patent, Patent Legislation, , ,

In a new Patently-O Patent Law Journal essay, Professor Joshua Sarnoff (DePaul) highlights a set of important problems in the Leahy-Smith America Invents Act. The essay, titled Derivation and Prior Art Problems with the New Patent Act focuses primarily on the elimination of 35 U.S.C. § 102(f) and its implications regarding the patentability of material that was either wholly or partially derived from another source.

Professor Sarnoff writes: 

Legislation sometimes is enacted that obviously requires either immediate revision or creative administrative and judicial interpretation. The new Leahy-Smith America Invents Act's derivation and prior art provisions fall in that category. Whether or not the move from a first-to-invent to a first-inventor-to-file system is viewed as good policy and as authorized by the Constitution, the particular changes made to the prior art provisions may not prevent or invalidate patents on inventions derived from others, i.e., when the applicant has obtained knowledge of an invention from another, original inventor and then files for a patent on the same or a similar invention. In particular, obvious inventions made with unauthorized derived knowledge will now be patentable, given the elimination of prior art section § 102(f). Absent creative interpretations by the U.S. Patent and Trademark Office (PTO) and the courts, the new derivation proceedings will not prevent a first filer from obtaining a patent even if the first filer's invention is merely an obvious extension of information derived from another. Further, the new act adds a narrow and poorly understood category of prior art that may generate years of needless litigation to re-settle the currently well-understood boundaries of the public domain. I discuss these problems in detail below.

There is some hope that Congress and the Administration will take Professor Sarnoff's concerns to heart.

Read the article: Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Review 12 at /media/docs/2012/10/sarnoff.2011.derivation.pdf.

Prior Patently-O Patent Law Journal Articles include: