Tag Archives: Licenses

Guest Post: Checking the “Staats” – in Broadening Reissue Practice, We Are Stuck in the “Doll”-drums

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By David M. Longo, Ph.D. of Finnegan LLP1

This post addresses the Federal Circuit’s March 5, 2012, precedential opinion In re Staats, Appeal No. 2010-1443, in which Judge Dyk writes for the majority. In short, the Federal Circuit holds that it is bound by In re Doll, 419 F.2d 925 (CCPA 1970), and that both 35 U.S.C. § 251 and Doll permit the filing of a continuing reissue application to broaden patented claims beyond the statutory two-year period—even when the continuation claims are broadened—in a manner unrelated to any broadening aspect identified within the two-year period. For a more in-depth discussion of 140 years of reissue case law, legislative history, and statutory shaping pertaining to broadening reissue practice, including an analysis of the facts and oral arguments in Staats leading up to the opinion, please see the author’s publication Checking the Staats: How Long is Too Long to Give Adequate Public Notice in Broadening Reissue Patent Applications?, 2011 Duke L. & Tech. Rev. 009 available at http://www.law.duke.edu/journals/dltr/articles/2011dltr009.

One of the most straightforward ways patent owners can expand the limited monopoly of a patent is by seeking increased claim scope by one or more broadening reissue patent applications. While patent owners may narrow the scope of patent claims at any time during the life of the patent, they may only broaden claim scope for a limited period of time after issuance of the patent. See MPEP § 1412.03, discussing implementation of 35 U.S.C. § 251. Despite this relatively clear statutory provision in § 251, however, an expansive body of case law has construed the provision, dating back well over a century.

The Staats opinion had the potential to become the most definitive statement in broadening reissue practice in almost twenty years. Passing on such a wonderful opportunity, the CAFC instead blandly upheld Doll and bluntly invited the USPTO to seek en banc review. In fact, Judge Dyk’s majority opinion states, “If the PTO believes we should overrule Doll, that is a matter that must be presented to the en banc court.” Slip Op. at 11. Judge O’Malley’s concurring opinion, which concurs in the opinion’s judgment but not its reasoning, states, “To the extent the majority opinion is no more than a begrudging nod to Doll‘s precedential effect with an invitation to reconsider that decision, the majority opinion is wrong.” Slip Op. at 12 (concurrence at 1).

The Staats case presents a collision between two robust statutory interpretations and two equally weighty sets of policy considerations. On the one hand, the public-notice function cited by both the USPTO and the Board—and regarded as a hallmark of the protections in § 251—is crucial. The public has the right to know what is claimed and disclaimed in a patent, and one could argue that patentees should not be permitted to reshape their inventions throughout the life of the patent simply by lodging a “placeholder” broadening reissue application within two years of patent issuance, from which any number of potentially disparate continuing reissue applications could be filed. Allowing such activity without adequate safeguards could result in a scenario in which a competitor could potentially spend an obscene amount of money based on the perceived bounds of the limited monopoly granted by a particular patent, only to face an infringement action years later after the boundaries of the limited monopoly have shifted. Likewise, such activity may make it difficult for a competitor to assess whether it has freedom to operate in a particular technology—again because of shifting boundaries of the limited monopoly. Consistent with this perspective, the USPTO’s position in Staats held firm against effectively giving an applicant a license to unforeseeably shift from one invention to another through reissue well beyond the two-year statutory period. See Ex parte Staats, No. 2009-007162, 2010 WL 1725728, at *9 (BPAI Apr. 26, 2010).

On the other hand, as argued by Apple in the Staats appeal to the Board, the CCPA in Doll held that the intervening rights provided by 35 U.S.C. § 252 are potentially sufficient to counterbalance damage to public notice done by broadening reissues. Having initial public notice within two years of patent issuance should adequately balance the needs of patentees and the public. See Brief of Appellant-Petitioner, In re Staats, No. 2010-1443 (Fed. Cir. Dec. 16, 2010), 2010 U.S. Fed. Cir. Briefs LEXIS 1111, at *9–11. That is, there is a clear quid pro quo—in exchange for a reissued patent, the patentee must “surrender” the original patent. Furthermore, given the recent transparency in publication and prosecution practice for pending applications and reissue applications at the USPTO, applicants already surrender a great deal of secrecy before issuance of a patent or reissue patent. Any broadening reissue patent claims would, of course, require support by the patent specification or other claims, which could have effectively been part of public knowledge for years before the broadening. Therefore, one can argue that nothing would serve to hamper a competitor from developing a competing and noninfringing product with improvements in the years it would undoubtedly take for the USPTO to wade through applications, reissues, and continuations of those reissues.

Thus, a classic property-rights question looms large in the field of patent law: where do the rights of inventors end and the rights of the public begin? The rights of inventors to modify the scope of their claimed inventions, even after the patent issues, can directly conflict with the concepts of public notice and the public domain. The Patent Act currently permits broadening of claims so long as a reissue application showing intent to broaden is filed within two years of the original patent issue. Over the years, however, this relatively straightforward statutory provision has sparked a spate of disputes over its meaning and application.

Despite these disputes, the CAFC reaffirmed Doll, and Judge O’Malley’s concurrence expanded on its reasoning:

The MPEP and PTO Rule 175 are, moreover, consistent with all relevant case law interpreting § 251. As the majority notes, Doll concluded that § 251’s time limits are applicable only to the first broadening reissue application and do not, accordingly, bar further broadening changes thereafter. [In re Doll] 419 F.2d. at 928. This court has twice reaffirmed that reading of § 251, moreover. See In re Graff, 111 F.3d 874, 877 (Fed. Cir. 1997) (“The court in Doll simply held that the reissue applicant, in the course of prosecution of the reissue application, was not barred from making further broadening changes in the claims.”); In re Fotland, 779 F.2d 31, 34 (Fed. Cir. 1985) (“In Doll the Court of Customs and Patent Appeals held that when a broadening reissue application was on file within the two year period, the claims could be further broadened after the two year period.”). As the majority opinion makes clear, the PTO’s efforts to distinguish those cases so as to avoid the need to comply with their holdings stretch credulity. (Slip. Op. at 15, concurrence at 4.)

Even with the benefit of the last forty years of reissue case law—including Doll, In re Fotland (779 F.2d 31 (Fed. Cir. 1985)), Buell v. Beckestrom (22 USPQ2d 1128 (BPAI 1992)), In re Graff (111 F.3d 874 (Fed. Cir. 1997)), and now Staats—broadening reissue practice will likely remain a headache for patent attorneys. For the time being, though, we have a pill for that headache. Without any changes from a possible en banc review, broadening reissue patent practice permits a scenario where, as Apple argued, the possible or eventual scope of the initial broadening need not be fully laid out in the first reissue application filed within the two-year statutory window, as long as the initial intent to broaden appears within that window. See Ex parte Staats, No. 2009-007162, 2010 WL 1725728, at *2 (BPAI Apr. 26, 2010). Tipping the scales slightly away from robust public notice, Staats (vis-à-vis Doll) essentially tells us that “any intent” to broaden within two years of patent issuance permits any broadening in a later—and properly filed—continuation or divisional reissue application. Whether this is the best remedy for a fairly persistent headache remains to be seen.

1 This post represents the thoughts and opinions of the author alone and not those of Finnegan LLP. It is intended to convey general information only and should not be construed as a legal opinion or as legal advice.

Guest Post: The February of FRAND

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Guest Post by Professor Jorge L. Contreras. 

For those of us who have been following the telecom patent battles, something remarkable happened a couple of weeks ago.  On February 7, the Wall St. Journal reported that, back in November, Apple sent a letter[1] to the European Telecommunications Standards Institute (ETSI) setting forth Apple’s position regarding its commitment to license patents essential to ETSI standards.  In particular, Apple’s letter clarified its interpretation of the so-called “FRAND” (fair, reasonable and non-discriminatory) licensing terms that ETSI participants are required to use when licensing standards-essential patents.  As one might imagine, the actual scope and contours of FRAND licenses have puzzled lawyers, regulators and courts for years, and past efforts at clarification have never been very successful.  The next day, on February 8, Google released a letter[2] that it sent to the Institute for Electrical and Electronics Engineers (IEEE), ETSI and several other standards organizations.  Like Apple, Google sought to clarify its position on FRAND licensing.  And just hours after Google’s announcement, Microsoft posted a statement of “Support for Industry Standards”[3] on its web site, laying out its own gloss on FRAND licensing.  For those who were left wondering what instigated this flurry of corporate “clarification”, the answer arrived a few days later when, on February 13, the Antitrust Division of the U.S. Department of Justice (DOJ) released its decision[4] to close the investigation of three significant patent-based transactions:  the acquisition of Motorola Mobility by Google, the acquisition of a large patent portfolio formerly held by Nortel Networks by “Rockstar Bidco” (a group including Microsoft, Apple, RIM and others), and the acquisition by Apple of certain Linux-related patents formerly held by Novell.  In its decision, the DOJ noted with approval the public statements by Apple and Microsoft, while expressing some concern with Google’s FRAND approach.  The European Commission approved Google’s acquisition of Motorola Mobility on the same day.

To understand the significance of the Apple, Microsoft and Google FRAND statements, some background is in order.  The technical standards that enable our computers, mobile phones and home entertainment gear to communicate and interoperate are developed by corps of “volunteers” who get together in person and virtually under the auspices of standards-development organizations (SDOs).  These SDOs include large, international bodies such as ETSI and IEEE, as well as smaller consortia and interest groups.  The engineers who do the bulk of the work, however, are not employees of the SDOs (which are usually thinly-staffed non-profits), but of the companies who plan to sell products that implement the standards: the Apples, Googles, Motorolas and Microsofts of the world.  Should such a company obtain a patent covering the implementation of a standard, it would be able to exert significant leverage over the market for products that implemented the standard.  In particular, if a patent holder were to obtain, or even threaten to obtain, an injunction against manufacturers of competing standards-compliant products, either the standard would become far less useful, or the market would experience significant unanticipated costs.  This phenomenon is what commentators have come to call “patent hold-up”.  Due to the possibility of hold-up, most SDOs today require that participants in the standards-development process disclose their patents that are necessary to implement the standard and/or commit to license those patents on FRAND terms. 

On its face, it is easy to see why a FRAND commitment might reassure implementers of a standard.  If a patent is essential to the standard, the patent holder must license the patent on terms that are fair, reasonable and non-discriminatory.  Unfortunately, the devil has proven to be in the details of FRAND, and no two companies seem to have the same view of what constitutes fair, reasonable or non-discriminatory licensing terms.  This lack of agreement has troubled regulators for some time and has led to an increasing number of litigation claims alleging that one party or another to a standards effort has failed to comply with its FRAND obligations. 

The February FRAND statements by Apple, Microsoft and Google are thus informative and potentially of great importance.  To understand the statements, and why the DOJ viewed them differently, it is helpful to compare them side-by-side.  The following table summarizes what Apple, Microsoft and Google said FRAND means to them.

 

Apple (relating to cellular telephony standards)

Microsoft

Google (limited to Motorola Mobility patents)

1. Prior Commitments.

Will the patent holder honor FRAND obligations of prior patent owners?

A party acquiring patents from someone who made FRAND commitments must abide by those commitments

n/a

G will honor Motorola’s existing FRAND commitments

2.  Onward Transfer.

Will the patent holder require future owners of the patent to comply with its FRAND obligations?

n/a

M will require transferees to abide by its FRAND commitments

G will use “best efforts” to ensure that transferees abide by its FRAND commitments

3. Reciprocity.

Will the patent holder require that the licensee grant a license back to the licensor?

n/a

M will only require a grant-back of the licensee’s patents that are essential to the same standard

G will only require a grant-back of the licensee’s patents that are essential to the same standard

4.  Royalty Rate.

Will the patent holder commit to a maximum royalty rate?

Standards-essential patents should be licensed at an “appropriate” royalty rate reflective of the licensor’s share of the overall number of patents essential to the standard

n/a

Maximum per-unit royalty of 2.25% of product net selling price

5. Injunctive Relief.

Will the patent holder seek injunctive relief against unlicensed implementers of the standard?

A party making a FRAND commitment must not seek injunctive relief on patents subject to the commitment

M will not seek an injunction … on the basis of [standards-] essential patents

G will not seek an injunction on the basis of standards-essential patents, during a reasonable negotiation period and if the other party makes a similar commitment

 

Despite their differences, the three FRAND statements exhibit some important similarities.  All three, for example, support the notion that FRAND commitments should “travel with the patent”.  This is an important acknowledgement, as such commitments typically lack the necessary elements of a bilateral contractual arrangement, and have been questioned in both corporate acquisitions and bankruptcy proceedings (see In re Nortel Networks Inc., Order – Case No. 09-10138(KG) (Bankruptcy Ct. D.Del., Jul. 11, 2011)).

The three statements also address the question of injunctive relief.  Numerous commentators have questioned whether injunctive relief is an appropriate remedy for holders of standards-essential patents, particularly in view of the Supreme Court’s four-part analysis under eBay v. MercExchange LLC, 547 U.S. 388 (2006). In 2011, the Federal Trade Commission suggested that injunctive relief might not be justified in the standards context, writing that “[a] prior [F]RAND commitment can provide strong evidence that denial of the injunction and ongoing royalties will not irreparably harm the patentee.”  Federal Trade Comm’n, The Evolving IP Marketplace – Aligning Patent Notice and Remedies with Competition 235 (2011).  In their February FRAND statements, Apple and Microsoft each commit not to seek injunctions on the basis of their standards-essential patents.  Google makes a similar commitment, but qualifies it in typically lawyerly fashion (Google’s letter is more than 3 single-spaced pages in length, while Microsoft’s simple statement occupies about a quarter of a page).  In this case, Google’s careful qualifications (injunctive relief might be possible if the potential licensee does not itself agree to refrain from seeking an injunction, if licensing negotiations extended beyond a reasonable period, and the like) worked against it.  While the DOJ applauds Apple’s and Microsoft’s statements “that they will not seek to prevent or exclude rivals’ products form the market”, it views Google’s commitments as “less clear”.  The DOJ thus “continues to have concerns about the potential inappropriate use of [standards-essential patents] to disrupt competition”. 

It is not clear whether the DOJ’s criticism of Google’s stance on injunctive relief, or its endorsement of Apple’s and Microsoft’s positions, is warranted.  After all, none of the February FRAND statements was made directly to the DOJ, formed part of a consent order, or even rose to the level of a contractual commitment.  But whatever their actual legal effect, it is certainly preferable to have such statements than not, and perhaps this recent wave of “clarifications” will help courts to interpret the array of FRAND-based claims that will inevitably be brought over the next several years.

Mr. Contreras is a Visiting Associate Professor at American University – Washington College of Law and will join the faculty as an Associate Professor this summer.  His research focuses on the impact of intellectual property rules on scientific and technological development, including in the area of technical standard-setting.  He is the editor of the ABA's Standards Development Patent Policy Manual and has written numerous articles and book chapters relating to intellectual property and standards.

 

Guest Post: It’s Time for a Reliable System to Determine Who Owns a U.S. Patent

Patent,

by Susan G. L. Glovsky of Hamilton Brooks Smith Reynolds

Patents are far more valuable than they ever have been. Yet, unlike real property, it can be difficult to determine patent ownership or accurately identify encumbrances even though patent value can exceed the value of a home or even an office building. Rights in real property are determined by legislation in each state, which provides for recordation of written transfers and security interests in real property. Legislation related to real property recordation provides a level of certainty in determining the true owner, provides protection for bona fide purchasers, and permits recordation of liens to satisfy debts owed by real estate owners.

This is not the case with patents. Because of an inadequate system for recordation, prospective purchasers, licensees, lenders, and even defendants in a lawsuit may have to take it on faith that the seller, licensor, borrower, or plaintiff truly owns, and has not previously encumbered, these patent rights.

Unless assigned, patent applications are owned by the inventor or inventors named in the application. The inventor(s) can assign ownership to another person or to a company. Thereafter, the assignee can further assign the application or, once issued, the patent. Any assignment must be in writing, and the assignment can be recorded with the United States Patent and Trademark Office. Recordation is voluntary. In the event of conflicting transfers of title to the same patent or application, the Patent Act gives the first purchaser a three month window in which to record, which takes priority over a subsequent purchase during the three month period, even though there was no constructive (through recordation) or actual notice of the assignment at the time the subsequent purchase was made. As a result, potential transfers that might have occurred in the three month period preceding an assignment that could trump that assignment may be unavailable when conducting any title search, leaving a potential purchaser with uncertainty and unacceptable risk.

Security interests in patents are to be recorded where UCC filings are made, based on state law. Unlike real estate, it is not always easy to determine the state in which a security interest in a patent has to be recorded. Once the state is determined, it is necessary to determine, under that state's law, whether recordation is made at the state or local level in order to search for any security interest that may be recorded. Lack of certainty concerning security interests can discourage lenders from providing needed loans.

The time has come to enact national legislation that provides clear record title to patent applications and patents. The value of patents is too great to continue with the present system. Moreover, patents are a federal right and should be addressed at a federal level. A national system would harmonize U.S. law with those of other countries, which generally have a national system for recordation of patent rights. Recently, the Patent Office proposed rules that would require disclosure of any assignee of patent rights. But these rules simply do not go far enough. Legislation is necessary in order to provide a comprehensive internationally recognized system that assures the recordation of patent title, security interests, and other encumbrances through filings solely in the Patent Office.

Taking the best from state systems for recording interests in real estate, at a minimum any legislation needs to:

  • Provide for recordation in the United States Patent and Trademark Office of transfers, security interests, exclusive licenses, corporate mergers, and liens that relate to rights in patent applications and patents as the sole location for recording those interests
  • Provide that a transfer is only effective against a bona fide purchaser once it is recorded
  • Determine priority among holders of transfers and security interests that are not recorded, including whether notice of unrecorded transfers is considered in determining priority
  • Provide a mechanism in Federal Court to remove a cloud on title to patent assets
  • Provide a mechanism (such as a lis pendens) that prevents transfer of the patent asset while a court action to determine rights in the patent asset is pending
  • Allow for dismissal of any lawsuit filed to enforce a patent, unless the record owner or record exclusive licensee is a party

The new rules proposed by the Patent Office have succeeded in focusing attention on recordation of patent rights, but the proposed rules do not go far enough. In order to provide a comprehensive system that addresses all the issues, Congress needs to enact legislation that solves all the problems in the current system.

Notes:

Copyright: Lawfirms Sued for Submitting Prior Art to the USPTO

Patent,
  • John Wiley & Sons and American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff (MBHB) (N.D. Ill.) (Complaint)
  • American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg (D.Minn) (Complaint)

The Hoboken publishing company (John Wiley) and the non-profit American Institute of Physics have continued their quest to pursue copyright infringement charges against US patent attorneys who submit copies of journal articles to the US Patent Office during the patent application process. The submission of those documents is required by law and attorneys who fail to submit known and relevant prior art can be subject to ethics charges and the associated patents held unenforceable. Earlier this year, the US Patent Office issued a memo indicating its belief that copying and submitting copyrighted documents should be considered a non-actionable fair use.  Firms already pay for access to the articles and the USPTO also has its own access to most of the articles. The issue is whether the patent applicants must pay an additional fee for making a copy for the USPTO and an additional copy for the in-house file.

The first two law suits were filed yesterday. The first against my former law firm MBHB LLP in Chicago and the second against the Schwegman firm in Minnesota.  These two firms are known for the high level of scientific and technical expertise of their attorneys.  (Full Disclosure – MBHB is the primary advertiser on Patently-O)

The complaints allege two particular infringing acts:

14. In connection with researching, filing and prosecuting certain patent applications, McDonnell made and/or distributed to the United States Patent and Trademark Office (“PTO”), and perhaps others, unauthorized copies of copyrighted articles from plaintiffs’ journals … Such unauthorized copies were used for the commercial benefit of defendants and their clients.

15. Upon information and belief, defendants made (a) additional copies of the copyrighted works that defendants included or cited in their patent applications to the PTO, including those identified on Schedule A, and (b) copies of plaintiffs’ copyrighted works that defendants considered in connection with those applications, but did not ultimately cite or provide to the PTO. Plaintiffs cannot know the full extent of defendants’ copying without discovery. Apart from the copying of plaintiffs’ works accompanying the patent filings described above, this internal copying infringes plaintiffs’ copyrights.

In his article for PaidContent, Jeff Roberts sees these two as “a test-run. . . . If the firms fold their cards and settle, John Wiley and the physicists may be emboldened.” (See also Zach Winnick at Law360).

In the complaint, Wiley identifies two articles that MBHB allegedly submitted to the USPTO:

  • Raznikov, V., et al., “A new approach to data reduction and evaluation in highresolution time-of-flight mass spectrometry using a time-to-digital convertor datarecording system,” Rapid Communications in Mass Spectrometry, vol. 15, No. 8, pp. 570-578 (2001); and
  • Erchak, A., et al., “Enhanced coupling to vertical radiation using a twodimensional photonic crystal in a semiconductor light-emitting diode,” Applied Physics Letters, vol. 78, No. 5, pp. 563-565 (2001).

The complaint in the Schwegman case are based upon these two articles:

  • McDonald S., et al., “Photoconductivity from PbS- nanocrystal/ semiconducting polymer composites for solution-processible, quantum-size tunable infrared photodetectors,” Applied Physics Letters, vol. 85, No. 11, XP012062554, ISSN: 0003-6951, pp. 2089-2091, (Sep. 13, 2004); and
  • Greenwald, et al., “Polymer-Polymer Rectifying Heterojunction Based on Poly(3,4-dicyanothiophene) and MEH-PPV,” J. Polym. Sci. A: Polym. Chem., vol. 36:17, pp. 3115-3120, (1998).

I have contacted the authors of each of these articles, but have not yet received any response. MBHB’s managing partner Marcus Thymian released a statement referring to the USPTO’s position on fair use. “We note that the United States Patent and Trademark Office has released its position — that it is a fair use for a patent applicant to submit a copy of non-patent art to the patent office to fulfill the disclosure requirement imposed by the patent regulations.”  It will also be easy for the law firms to obtain an opinion that internal copying also qualifies as a fair use under Section 107 of the Copyright Act. 

In a statement to Law360, the plaintiffs attorney Bill Dunnegan appears ready to admit – despite language in the complaint – that submissions to the USPTO are not actionable.  He is quoted as saying “The crux of what our case deals with is the internal copying by the law firms after they have one copy in their hand. . . . Those copies are not licensed, and the patent office didn’t take a position on whether or not fair use would apply to those copies.”  The copy-for-file issue seems to fall in line with the Supreme Court’s analysis in Sony v. Universal (1984). In that case, the court held that it was a fair use for home consumers to record television broadcasts so the consumers could view the shows at a later time. 

Notes:

  • Submitting Citations: Several years ago, the USPTO realized that it already had copies of all issued US patents within its in house databases and asked patent practitioners to stop sending-in copies of patents. Rather, the patent attorneys were asked to simply submit a list of US patent documents that materially related to the patent being examined.  To the extent that the USPTO already has access to many of the publications in question here, a similar solution could work that allows patent practitioners to simply submit the citation to articles within the USPTO databases.
  • Open Access: Depending upon pricing structure, access to a journal such as the Journal of Applied Physics costs as much as $15k per year.  Academic authors generally receive no compensation for publication and there is a growing movement amongst academia toward open access journals.  Almost all law reviews make their works freely available online.  This enforcement project may push the sciences in that direction as well.

Intellectual Ventures Flexes Some Patent Muscle

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The following is a guest post by Patrick Anderson of Patent Calls. Patrick originally published this on his own blog, GametimeIP.

Intellectual Ventures made a name for itself by (originally) negotiating patent licenses outside of litigation.  However, when those prospects started to run dry, IV launched a warning shot–which later appeared a bit underwhelming for a mass aggregator holding tens of thousands of patents.  This opening blow was followed by a series of targeted rifle shots, like their ITC enforcement action against Hynix and Elpida.  What these lawsuits collectively lacked was shock-and-awe, like Jay Walker's bold protestation against widespread, uncompensated use of his company's IP.  Until now, that is.

Intellectual Ventures has now sued AT&T, T-Mobile, and Sprint Nextel in a single lawsuit over fifteen different patents.  Breaking the news on its IV Insights Blog, the patent owner provided a copy of a complaint and a relatively simple statement noting that the aggregator "previously attempted to discuss licensing options with each of these companies, but none were responsive." The technology appears to mainly deal with techniques for managing cross-carrier text and multi-media messages, hence the combination of carriers in a single suit despite patent reform's partial ban on the practice.  Perhaps even more interesting are the various original sources of patents used in IV's most recent attack.

This week's lawsuit, more than the others IV previously waged, demonstrates the obvious power of massive patent aggregation.  The fifteen patents identified in the suit come from at least 10 different sources, including major companies, research institutions, one university and some individual inventors.  Separately, any given patent could be vulnerable to non-infringement arguments, or susceptible to a momentum-killing reexamination.  Combined, however, the patents are inherently much stronger.  Assume, for example, that for each patent asserted, the wireless carriers believed they had a 90% chance of invalidating all relevant claims at trial.  To prevail, the carriers must prevail in fifteen independent events, which carries only about a 20% likelihood of success.  And there is good reason to treat invalidation and infringement of each patent as an independent event because, although the patents are all related in general subject matter, most come from different sources and thus describe distinct inventions.

In fact, only three patents come from the same original owner–Conexant–who provided 6,977,944, 7,343,011 and 7,136,392.  Remaining contributors to IV's pool of asserted patents are responsible for only one patent each, and include Verizon (the only major wireless carrier absent from the suit), Motorola, Nokia, Telecordia Technologies (formerly BellCore, the Baby Bell's version of Bell Labs), and Hong Kong University of Science and Technology.

Interestingly, while Verizon contributed patents to IV's collection, and managed to avoid this latest lawsuit, Motorola's deal with IV apparently did not come with rights, at least to some portfolios.  Motorola's contribution was part of a 344-asset sale to Torsal Technology Group back in 2008.  Torsal subsequently transferred the Motorola patent to Antozskij Research LLC, which merged with Intellectual Ventures I LLC earlier this month.  All three transactions used the same law firm to record the deal: Schwabe, Williamson & Wyatt in Portland.  Telecordia's contribution is part of a transaction involving 45 assets sold to TTI Inventions B LLC in 2010.  TTI Inventions merged with Intellectual Ventures II, LLC earlier this month as well.  Telecordia is currently owned by Ericsson, but the sale to IV's holding company occurred during the ownership tenure of two notable private equity firms: Providence Equity Partners and Warburg Pincus.

Listed as lead counsel for IV is Martin Black of Dechert LLP, marking the sixth different law firm used as lead counsel for the aggregator.  Several are large, well-known law firms (including Susman Godfrey Weil Gothshall, and Irell & Manella).  This is the first lawsuit filed in 2012 for IV, and the first in nearly four months (John Desmarais' firm sued Nikon over five different patents in late October).  While IV's next move remains to be seen, it's safe to say things just got a lot more interesting.

Political Candidates Sued for Patent Infringement

Patent

by Dennis Crouch

EveryMD v. Rick Santorum, Mitt Romney, and Newt Gingrich (C.D. California)

In a recent filing, Hollywood patent attorney and inventor Frank Weyer has sued Rick Santorum, Mitt Romney, Newt Gingrich, and an estimated 4 million FaceBook business account holders for infringing Weyer's U.S. Patent No. 7,644,122. The lawsuit was filed by Weyer's company EVERYMD. That company provides communications services to over 300,000 medical doctors.

The complaint alleges that FaceBook business account holders infringe the patent by creating individual home pages for members of a group of members that contain controls for sending messages to and for submitting comments about the members. Download Complaint. In 2011, the patentee offered an open license to FaceBook business account holders for $500 per account. The complaint states that that reduced price license program "has ended."

The patent itself is in the midst of an inter partes reexamination originally requested by FaceBook. ?See Reexam No. 95/001,411. In the reexamination, all of the claims are currently on appeal to the Patent Office's internal Board of Appeals (BPAI) following a final rejection of the claims by an examiner in the Central Reexamination Unit (CRU). At least two other continuations of the application are pending and claim priority to the original 1999 filing date.

022812_1403_PoliticalCa1 In 2005, I reported on Weyer's case against Ford for infringing his patent on user-selectable multi-color instrument panel illumination. In an earlier case Weyer sued Network Solutions and Register.com for violating his patent on the selection of an e-mail address based on a domain name. He has also sued Harley Davidson, Bosch, and MySpace. Those cases have all settled. Prior to law school, Weyer was a Peace Corps Volunteer in Lesotho and now works as a volunteer engineer in Antarctic expeditions. I should also mention that Weyer's book M.I.T. Can Be Murder is for sale on Amazon. His screenplay based upon the book has received multiple honors.

Political Candidates Sued for Patent Infringement

Patent

by Dennis Crouch

EveryMD v. Rick Santorum, Mitt Romney, and Newt Gingrich (C.D. California)

In a recent filing, Hollywood patent attorney and inventor Frank Weyer has sued Rick Santorum, Mitt Romney, Newt Gingrich, and an estimated 4 million FaceBook business account holders for infringing Weyer's U.S. Patent No. 7,644,122. The lawsuit was filed by Weyer's company EVERYMD. That company provides communications services to over 300,000 medical doctors.

The complaint alleges that FaceBook business account holders infringe the patent by creating individual home pages for members of a group of members that contain controls for sending messages to and for submitting comments about the members. Download Complaint. In 2011, the patentee offered an open license to FaceBook business account holders for $500 per account. The complaint states that that reduced price license program "has ended."

The patent itself is in the midst of an inter partes reexamination originally requested by FaceBook. See Reexam No. 95/001,411. In the reexamination, all of the claims are currently on appeal to the Patent Office's internal Board of Appeals (BPAI) following a final rejection of the claims by an examiner in the Central Reexamination Unit (CRU). At least two other continuations of the applicatoin are pending and claim priority to the original 1999 filing date.

022812_1403_PoliticalCa1 In 2005, I reported on Weyer's case against Fordfor infringing his patent on user-selectable multi-color instrument panel illumination. In an earlier case Weyer sued Network Solutions and Register.com for violating his patent on the selection of an e-mail address based on a domain name. He has also sued Harley Davidson, Bosch, and MySpace. Those cases have all settled. Prior to law school, Weyer was a Peace Corps Volunteer in Lesotho and now works as a volunteer engineer in Antarctic expeditions. I should also mention that Weyer's book M.I.T. Can Be Murder is for sale on Amazon. His screenplay based upon the book has received multiple honors.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

USPTO Hoteling Report

  • The US Department of Commerce recently performed an audit and evaluation of the USPTO's Hoteling program. The report shows that the average Patent Hoteling Program (PHP) examiner spends 66.3 more hours a year examining patents than does the average in-house examiner (which translates to reviewing about 3.5 more patent applications a year. However, the report shows that PHP participants are no more efficient at reviewing patent applications than individuals at the USPTO headquarters. At the end of the fiscal year 2011 over 2,600 patent examiners were Hoteling. To be able to participate in the PHP an examiner must be GS-12 or above, worked at least 2 years at the USPTO, passed the certification exam (essentially the Patent Bar), & currently not under any warnings. [Link]

U.S. House introduces bill to amend design patent law

  • The proposed House bill, known as the Promoting Automotive Repair, Trade, and Sales (PARTS) Act, would reduce the time period when auto manufacturers are able to enforce design patents on collision repair parts against alternative suppliers from 14 years to 30 months. The bill claims that it would save Americans money on car parts, by removing auto manufacturer monopolies from the equation. [Link]

Can University Tech Transfer save the Pharma Industry?

  • The pharmaceutical industry has been hit hard by the fall in revenue because of expiring patents. Pfizer's profit declined 50% because of Lipitor going into the public domain. Eli Lilly's profit dropped 27% because of Zyprexa going generic. AstraZeneca revenue declined and they plan to lay off 7,350 people, because Nexium fell out of patent protection in Europe. Also, later this year Plavix and Singulair will face competition, which will probably cause those companies' profits to drop. With all of these multi- billion dollar patents expiring, it seems that pharma companies need new compounds and drugs to increase profit. I think that Universities will be the key to the pharma industry. Universities have many patents waiting to be licensed by big companies that could be very profitable for both the University and the company. The problem that I see is that there is a lack of communication between companies and Universities. Most University Tech Transfer offices are limited in what they can do, and if they do not have an inside connection at a company, it is difficult to market an invention to a big company. This problem can be overcome in many ways; however it would seem that an intermediary may be needed. An intermediary would be of great value if they can connect pharma companies (or companies in general) with University Tech Transfer offices to help broker a deal. While this is not a new idea in the patent world, I do not think that many universities currently use individuals from the outside to help get technology licensed. [Link]

Patent Jobs:

  • Apple seeks to hire a Sr. IP Counsel with 6+ years of experience in patent disputes to work at their Cupertino location. [Link]
  • Sughrue Mion is searching for candidates for an associate or technical specialist positions with a BS in chemical fields and candidates with Ph.D. level education in Molecular/Cell biology to work in their D.C. office. [Link]
  • Brookstone is looking for IP Counsel with a minimum of 5 years of experience to work at their Merrimack, New Hampshire location. [Link]
  • Christopher & Weisberg is seeking a patent attorney with 1-5 years of experience and degree in EE to work in their Fort Lauderdale office. [Link]
  • Harness, Dickey & Pierce is searching for a patent prosecution associate with 3-4 years of experience and Bachelor's degree in Biotech or a Biotech-related degree to work in their Saint Louis office. [Link]
  • Faegre Baker Daniels is looking for an IP associate with degree in EE, ME, CE, physics, or chemistry and up to 5 years of patent prosecution experience to work in their Fort Wayne, Indiana office. [Link]
  • Bluestone Innovations is seeking to hire in house counsel with 5 years of patent litigation experience to work at their Reston, Virginia location. [Link]

Upcoming Events:

  • The New Jersey IP Association is sponsoring, The Inside Track to the Proposed Rules for Implementation of the America Invents Act on February 7 in Trenton, NJ. Featured speakers include: David Kappos, Philip Johnson, and Kenneth Nigon. [Link]
  • The Emory Law Journal will hold The 2012 Randolph W. Thrower Symposium, Innovation For the Modern Era: Law, Policy, and Legal Practice in a Changing World on February 9. The symposium is free and open to the public. [Link]
  • The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
  • IBC Legal's 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in 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]
  • Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

USPTO Hoteling Report

  • The US Department of Commerce recently performed an audit and evaluation of the USPTO's Hoteling program. The report shows that the average Patent Hoteling Program (PHP) examiner spends 66.3 more hours a year examining patents than does the average in-house examiner (which translates to reviewing about 3.5 more patent applications a year. However, the report shows that PHP participants are no more efficient at reviewing patent applications than individuals at the USPTO headquarters. At the end of the fiscal year 2011 over 2,600 patent examiners were Hoteling. To be able to participate in the PHP an examiner must be GS-12 or above, worked at least 2 years at the USPTO, passed the certification exam (essentially the Patent Bar), & currently not under any warnings. [Link]

U.S. House introduces bill to amend design patent law

  • The proposed House bill, known as the Promoting Automotive Repair, Trade, and Sales (PARTS) Act, would reduce the time period when auto manufacturers are able to enforce design patents on collision repair parts against alternative suppliers from 14 years to 30 months. The bill claims that it would save Americans money on car parts, by removing auto manufacturer monopolies from the equation. [Link]

Can University Tech Transfer save the Pharma Industry?

  • The pharmaceutical industry has been hit hard by the fall in revenue because of expiring patents. Pfizer's profit declined 50% because of Lipitor going into the public domain. Eli Lilly's profit dropped 27% because of Zyprexa going generic. AstraZeneca revenue declined and they plan to lay off 7,350 people, because Nexium fell out of patent protection in Europe. Also, later this year Plavix and Singulair will face competition, which will probably cause those companies' profits to drop. With all of these multi- billion dollar patents expiring, it seems that pharma companies need new compounds and drugs to increase profit. I think that Universities will be the key to the pharma industry. Universities have many patents waiting to be licensed by big companies that could be very profitable for both the University and the company. The problem that I see is that there is a lack of communication between companies and Universities. Most University Tech Transfer offices are limited in what they can do, and if they do not have an inside connection at a company, it is difficult to market an invention to a big company. This problem can be overcome in many ways; however it would seem that an intermediary may be needed. An intermediary would be of great value if they can connect pharma companies (or companies in general) with University Tech Transfer offices to help broker a deal. While this is not a new idea in the patent world, I do not think that many universities currently use individuals from the outside to help get technology licensed. [Link]

Patent Jobs:

  • Apple seeks to hire a Sr. IP Counsel with 6+ years of experience in patent disputes to work at their Cupertino location. [Link]
  • Sughrue Mion is searching for candidates for an associate or technical specialist positions with a BS in chemical fields and candidates with Ph.D. level education in Molecular/Cell biology to work in their D.C. office. [Link]
  • Brookstone is looking for IP Counsel with a minimum of 5 years of experience to work at their Merrimack, New Hampshire location. [Link]
  • Christopher & Weisberg is seeking a patent attorney with 1-5 years of experience and degree in EE to work in their Fort Lauderdale office. [Link]
  • Harness, Dickey & Pierce is searching for a patent prosecution associate with 3-4 years of experience and Bachelor's degree in Biotech or a Biotech-related degree to work in their Saint Louis office. [Link]
  • Faegre Baker Daniels is looking for an IP associate with degree in EE, ME, CE, physics, or chemistry and up to 5 years of patent prosecution experience to work in their Fort Wayne, Indiana office. [Link]
  • Bluestone Innovations is seeking to hire in house counsel with 5 years of patent litigation experience to work at their Reston, Virginia location. [Link]

Upcoming Events:

  • The New Jersey IP Association is sponsoring, The Inside Track to the Proposed Rules for Implementation of the America Invents Act on February 7 in Trenton, NJ. Featured speakers include: David Kappos, Philip Johnson, and Kenneth Nigon. [Link]
  • The Emory Law Journal will hold The 2012 Randolph W. Thrower Symposium, Innovation For the Modern Era: Law, Policy, and Legal Practice in a Changing World on February 9. The symposium is free and open to the public. [Link]
  • The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
  • IBC Legal's 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in 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]
  • Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]

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

Prior User Rights Defense

Patent, , ,

Later today I will be testifying in Congress at a hearing on Prior User Rights being held by the House of Representatives Subcommittee on Intellectual Property, Competition and the Internet chaired by Republican Representatives Bob Goodlatte of Virginia and Ben Quayle of Arizona along with Congressman Mel Watt as the ranking member of the Subcommittee. The hearing comes in the wake of the USPTO’s recent Report on Prior User Rights. The primary focus of my testimony is my estimation that prior user rights as circumscribed in the Leahy-Smith America Invents Act are unlikely to have any real or measurable impact on the market for US patents, demand for innovation, or process of patent litigation. I explain this as follows:

There are host of conditions that must be met before the prior user defense can be exerted. Most notably, an accused infringer must be able to show that it (or its predecessor in title based upon limited transfer rights) began to commercially use the invention at least one year before the patentee’s filing date (and even further in advance if the patentee publicly disclosed the invention before filing). In the new statute, the defense only applies if the prior user’s version of the invention was created independently and without derivation from the patentee’s version and the prior user acted in good faith. When formed together, these requirements look something like the eye of the needle and are difficult to pass through.

Further marginalizing the impact of prior user rights is the reality that the defense only adds actual value when the patent being asserted is valid. I.e., if the patent is invalid then there is no need for a prior user defense. The setup of a prior user situation suggests two likely scenarios that would lead to a decision of unpatentability. First, the existence of multiple independent creators of the same invention tends to suggest that the invention itself was obvious and therefore unpatentable. This is even more so in the prior use context because the later filed patent by definition will have a priority date of at least one year later than the user’s first date of commercial use. Using the language of the Supreme Court in its KSR decision: “market forces” likely prompted researchers to take the next step. In addition, the requirement that the prior user commercially used the invention is an indicator, albeit inconclusive, that anticipating prior art may be available to invalidate the patent. Conversely, if the prior user is successful in maintaining the secrecy of its commercial use for that time period, we’re left with the suggestion that the prior user may able to continue to operate in secrecy without being uncovered and thus without being charged with infringement.

My conclusion that prior user rights will have very little impact on innovation and access is also supported by comparative analysis of the impact of prior user rights in various trading partner nations and the already existing US prior user right for business method patents. The USPTO Report correctly indicates that these defenses have seen little to no successful assertion. In the US, prior user rights have been available since 1999 for the limited class of business method patents. During that time, there have been no reported cases where the defense was successfully asserted. During this time, the Court of Appeals for the Federal Circuit decided thousands of patent appeals on almost every imaginable patent doctrine – however the court did not address prior user rights. There was no need because the impact of that defense is so limited.

Two final concepts – lack of assurances and delay in patenting – push me to the same conclusion of little impact. First, I suggest that prior user rights will be given little ex ante consideration by would-be defendants because the defense does not offer any real assurances or any vested right until years after the first commercial use. As discussed in the previous paragraphs, prior user rights only come into play under a cone of secrecy. At that time, the prior user has no assurances that it made commercial use of the invention more than a year before someone else filed a patent application on the same subject matter. The expense of searching PTO records makes the task of discovering prior patent applications quite difficult. The delay in publication of applications and later-filing of applications based on foreign priority makes this task literally impossible to complete. And, the ability of patent applicants to radically amend claims during the patent prosecution process means that any assurances identified cannot not be considered vested.

The final point on this topic – based on delay in patenting – is that most qualifying prior uses may be irrelevant and out-of-use by the time that the USPTO issues the covering patent. Most recently issued US patents have an effective original filing date of more than four years ago. This provides a window of at least five years for most prior users to legally practice the invention without recourse even in the absence of the prior user defense. In many areas of technology, the original prior use will have become obsolete by the end of that five-year timeline – allowing the prior user to move to a new technology without ever needing to obtain a license or permission from the patent holder.

In the testimony, I then identify a number of particular ways that the defense could be expanded of Congress desired a more robust system of prior user right. My darling of the list is the establishment of a vested prior user right through a registration system. Although interesting, I do not at this point have real cause to call for this type of expansion.

My testimony also includes some consideration of the relative impact of prior user rights on US and non-US entities. The table below summarizes some of my thoughts.

Stakeholder

Help or Hurt by US Prior User Rights

US Universities 

Help: University derived inventions become relatively more valuable because their patents are excluded from the prior user defense.

US Manufacturers and Technology Companies 

Help and Hurt: US patents belonging to US manufacturers become less valuable because they are subject to prior user rights. However, US manufacturers have the potential of avoiding infringement charges based upon their own prior use.

US Non Practicing Entities (NPEs) 

Hurt: NPEs US patents become less valuable for NPEs because they are subject to prior user rights. By definition, NPEs do not practice the invention and therefore do not benefit from the prior user right defense.

Foreign Manufacturers and Technology Companies 

Hurt: Foreign entities US patents become less valuable because they are subject to prior user rights. Further, the foreign entities cannot assert prior user rights based upon activities in their home countries. However, foreign entities could benefit from the prior user rights if their prior commercial use of an invention was in the US.

 

Of course, my perception of the scope of prior user rights would change dramatically if the courts determine that (1) a prior user need only prove prior commercial use using a more-likely-than-not standard that (2) allowed oral testimony alone to prove the case and (3) ruled that neither secret sales nor secret uses constitute prior art under the new 35 U.S.C. § 102(a).

PTO Director Dave Kappos will also be testifying as well as Bob Armitage (Lilly), Dan Lang (Cisco), and John Vaughn (AAU).

 

 

 

Ford Krippelz

Patent, , ,

By Dennis Crouch

Krippelz v. Ford (Fed. Cir. 2012)

This case involves an interesting 20+ year history between Mr. Krippelz and Ford Motor Company, including 14 years of litigation over a mirror lamp. Ford has won what appears to be the final round.

* * * * *

Back in 1991, Mr. Krippelz sent Ford Motor Company a copy of his patent covering a downward-facing side-mirror light and a license inquiry. Ford was not interested in a license, but in 1997 began selling cars with downward-facing side-mirror lights. Krippelz sued in 1998. A paper battle continued over the next decade and even after Mr. Krippelz death in 2010. During that time, the USPTO confirmed the patentability of the asserted claims in a reexamination, the judge awarded summary judgment of infringement, the jury the patent valid and awarded $23 million in damages; and the judge boosted that figure to $56 million based upon pre-judgment interest and enhanced damages for willful infringement.

On appeal, the Federal Circuit has reversed – finding the patent invalid as anticipated by a 1951 French Patent invented by Charles DuBois of the former French West African colonial territories.

A court may find issued patent claim invalid as anticipated only when presented with clear and convincing evidence that a single prior art reference discloses each and every element of a claimed invention.

The focus here was on the Krippelz patent’s claimed “conical beam of light” and whether that beam was disclosed by DuBois. In construing the claim, the district court held that the conical limitation required that “the filament of the light bulb is at or near the focal point of an optical reflector.” DuBois included a statement that his system may also include “a bulb at the focus of the reflector.” In reviewing the difference, the appellate panel found that any reasonable jury would find the asserted claim invalid based upon DuBois and that the district court had abused its discretion in denying the motion for Judgment as a Matter of Law.

Most appellants in Ford’s position would have appealed claim construction because of the lower standard of review. Here, Ford may have lost that right by not previously objecting to the claim construction. That said, the motor company was able to roll a hard eight to overcome the strong presumption of validity and the deference given to the jury determination.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

2012 Student Writing Competition

  • The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia and relating to an intellectual property law issue or the practice of intellectual property law. The winner receives a cash prize of $4,000. The judge of the final round of the competitor is the Honorable Richard Linn, judge of the U.S. Court of Appeals for the Federal Circuit. The deadline for submissions is Friday, May 25, 2012 at 4:00 EDT. [Link]

New IP Message Board

  • IPtalk.pro is a new intellectual property law message board for the discussion of patents, trademarks, copyrights, trade secrets, and IP careers. It promises no spam, no downtime, and sensible moderation. [Link]

Intel buys IP for 120 million

  • Intel recently acquired about 190 patents, 170 patent applications, and video codec software from RealNetworks for 120 million dollars. Intel states that, the acquisition will enhance their ability to continue to offer richer experiences and innovative solutions to end users across a wide spectrum of devices, including through Ultrabook devices, smartphones and digital media. [Link]

Next Patent Office Location

  • Many cities would like to be the next location of USPTO's next satellite office, including Austin, Texas, Denver, Boston, Silicon Valley and now Las Vegas. It seems that the USPTO has set a deadline for groups and individuals to submit written pitches for why their cities should get a satellite office. The patent office, in soliciting proposals, listed five areas that would play a large role in the selection. Those areas included improved recruiting and retention of examiners that would hinge on factors such as cost of living and number of attorneys in the field, contributions toward speeding and improving the process, and access to innovators as judged by measures such as the number of patents already held by residents in the area. Senator Majority Leader Harry Reid and others will draft their letter to the USPTO, explaining the advantages of Las Vegas. [Link]

Patent Jobs:

  • Nelson Mullins is searching for 1 or more new or lateral associates with a background in CS or EE to work at their Boston office. [Link]
  • Verenium is looking for a patent agent with a BS in molecular biology or biochemistry and a minimum of 5 years of experience to work at their San Diego location. [Link]
  • Vista-IP-Law-Groups is seeking a patent attorney with a background in ME or EE and at least 2 years of experience to work at their San Jose office. [Link]
  • Sterne, Kessler, Goldstein & Fox is seeking electrical IP attorneys with 1-4 years of experience to work at their Washington, DC office. [Link]
  • International IP Law Group is searching for an associate, Of Counsel to prepare and prosecute patent applications at their Houston office. [Link]
  • International IP Law Group is looking for a patent engineer/agent with 2-3 years of technical experience to work at their Houston office. [Link]
  • Microsoft is seeking a patent attorney with a BS in CS or EE and at least 5 years of experience to work in their Redmond, Washington location. [Link]
  • Toler Law Group is searching for patent attorneys with a BS in EE or CS and 0-2 years of experience to work in their Austin, Texas office. [Link]
  • Kilyk & Bowersox is looking for a biochem/chem patent agent with at least 4 years of experience to work in their Warrenton, Virginia office. [Link]
  • The Webb Law Firm is seeking an associate with a BS in chemistry or chemical engineering and at least 3 years of experience as an IP attorney to work at their Pittsburgh office. [Link]
  • Klarquist Sparkman is searching for lateral litigation associates with 1-2 years of experience to work in their Portland office. [Link]
  • Klarquist Sparkman is seeking a patent attorney or patent agent with an advanced degree in organic chemistry and 3+ years of experience to work in 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]

Upcoming Events:

  • The Synopsis under IP/Patents Telecom Sourcing (SUITS) Conference will take place January 31-February 3 in Miami, Florida. The SUITS Conference was launched to advance the knowledge innovators of telecommunications including developers, implementers, licenses, licensors, end users, carriers and enterprise patents. Guest speakers include: Jeffery Dalton, Christopher Douglas, Loren Pearson, Keith Bergelt, Todd Juneau, Michael Rouleau and many others. [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]
  • AIPLA webinar, Selecting the Right Expert to Put on (or Poke Holes in) a Patentee's Case, will be held on February 1. The webinar will focus on the process of selecting a damage expert, recent cases that may influence the decision and some of the ways that a damage expert can assist with evaluating poking holes in the opposing expert's analysis. The webinar will be presented by Gillian Thackray and Philip Green. [Link]
  • The DC Bar's IP Section will host an event, Section 337 IP Investigations at the ITC: Lessons for District Court Practitioners, on February 2. The event will discuss what practitioners need to know before appearing at the ITC. Speakers include ITC Commissioner Shara Aranoff, ITC Judges Theodore Essex and Robert Rogers, Jr., Attorney Advisor to Commissioner Michael Diehl, Christine Lehman, Marcia Sundeen, Maureen Browne, and Jaime Underwood. [Link]
  • The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [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]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

2012 Student Writing Competition

  • The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia and relating to an intellectual property law issue or the practice of intellectual property law. The winner receives a cash prize of $4,000. The judge of the final round of the competitor is the Honorable Richard Linn, judge of the U.S. Court of Appeals for the Federal Circuit. The deadline for submissions is Friday, May 25, 2012 at 4:00 EDT. [Link]

New IP Message Board

  • IPtalk.pro is a new intellectual property law message board for the discussion of patents, trademarks, copyrights, trade secrets, and IP careers. It promises no spam, no downtime, and sensible moderation. [Link]

Intel buys IP for 120 million

  • Intel recently acquired about 190 patents, 170 patent applications, and video codec software from RealNetworks for 120 million dollars. Intel states that, the acquisition will enhance their ability to continue to offer richer experiences and innovative solutions to end users across a wide spectrum of devices, including through Ultrabook devices, smartphones and digital media. [Link]

Next Patent Office Location

  • Many cities would like to be the next location of USPTO's next satellite office, including Austin, Texas, Denver, Boston, Silicon Valley and now Las Vegas. It seems that the USPTO has set a deadline for groups and individuals to submit written pitches for why their cities should get a satellite office. The patent office, in soliciting proposals, listed five areas that would play a large role in the selection. Those areas included improved recruiting and retention of examiners that would hinge on factors such as cost of living and number of attorneys in the field, contributions toward speeding and improving the process, and access to innovators as judged by measures such as the number of patents already held by residents in the area. Senator Majority Leader Harry Reid and others will draft their letter to the USPTO, explaining the advantages of Las Vegas. [Link]

Patent Jobs:

  • Nelson Mullins is searching for 1 or more new or lateral associates with a background in CS or EE to work at their Boston office. [Link]
  • Verenium is looking for a patent agent with a BS in molecular biology or biochemistry and a minimum of 5 years of experience to work at their San Diego location. [Link]
  • Vista-IP-Law-Groups is seeking a patent attorney with a background in ME or EE and at least 2 years of experience to work at their San Jose office. [Link]
  • Sterne, Kessler, Goldstein & Fox is seeking electrical IP attorneys with 1-4 years of experience to work at their Washington, DC office. [Link]
  • International IP Law Group is searching for an associate, Of Counsel to prepare and prosecute patent applications at their Houston office. [Link]
  • International IP Law Group is looking for a patent engineer/agent with 2-3 years of technical experience to work at their Houston office. [Link]
  • Microsoft is seeking a patent attorney with a BS in CS or EE and at least 5 years of experience to work in their Redmond, Washington location. [Link]
  • Toler Law Group is searching for patent attorneys with a BS in EE or CS and 0-2 years of experience to work in their Austin, Texas office. [Link]
  • Kilyk & Bowersox is looking for a biochem/chem patent agent with at least 4 years of experience to work in their Warrenton, Virginia office. [Link]
  • The Webb Law Firm is seeking an associate with a BS in chemistry or chemical engineering and at least 3 years of experience as an IP attorney to work at their Pittsburgh office. [Link]
  • Klarquist Sparkman is searching for lateral litigation associates with 1-2 years of experience to work in their Portland office. [Link]
  • Klarquist Sparkman is seeking a patent attorney or patent agent with an advanced degree in organic chemistry and 3+ years of experience to work in 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]

Upcoming Events:

  • The Synopsis under IP/Patents Telecom Sourcing (SUITS) Conference will take place January 31-February 3 in Miami, Florida. The SUITS Conference was launched to advance the knowledge innovators of telecommunications including developers, implementers, licenses, licensors, end users, carriers and enterprise patents. Guest speakers include: Jeffery Dalton, Christopher Douglas, Loren Pearson, Keith Bergelt, Todd Juneau, Michael Rouleau and many others. [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]
  • AIPLA webinar, Selecting the Right Expert to Put on (or Poke Holes in) a Patentee's Case, will be held on February 1. The webinar will focus on the process of selecting a damage expert, recent cases that may influence the decision and some of the ways that a damage expert can assist with evaluating poking holes in the opposing expert's analysis. The webinar will be presented by Gillian Thackray and Philip Green. [Link]
  • The DC Bar's IP Section will host an event, Section 337 IP Investigations at the ITC: Lessons for District Court Practitioners, on February 2. The event will discuss what practitioners need to know before appearing at the ITC. Speakers include ITC Commissioner Shara Aranoff, ITC Judges Theodore Essex and Robert Rogers, Jr., Attorney Advisor to Commissioner Michael Diehl, Christine Lehman, Marcia Sundeen, Maureen Browne, and Jaime Underwood. [Link]
  • The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [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]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]

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

The New Choice: Inequitable Conduct or Copyright Infringement

Patent, , ,

CopyrightSymbolMany patent applicants enjoy the fact that the USPTO lists all cited and considered references on the face of each patent. That listing provides an apparent presumption that the newly patented invention is a step beyond anything found in those references. Economists have even shown that patents with more cited references tend to be relatively more valuable. Patent applicants are also under a duty to submit prior art references that are material to patentability. 37 C.F.R. §1.56.

A negative side of citation is now emerging. Recently, copyright owners have begun trolling non-patent prior art citations to see whether any of their works were copied and submitted to the USPTO. Of course, following standard law firm practice additional copies were likely generated for the file and for review by the inventors or attorneys. These copies may be hard copes or electronic versions, but as MegaUploads can now attest, that makes no difference in copyright law. Statutory damages for copyright infringement range from $750 to $150,000 per work. The exact figure is largely within the discretion of the judge and is based upon what the "the court considers just" and whether the infringement was willful.

A number of scientific journals have begun to threaten law firms and their clients for submitting copies of journal articles to the USPTO.  The typical cease & desist letter that I've seen says something like the following:  

"We've been trolling through USPTO records and found that you submitted a copy of one of our articles articles to the USPTO and we suspect that you maintained other copies in your files and distributed additional copies within your organization. These actions constitute copyright infringement and are not fair use.  We will sue you unless you come into compliance with our CCC licensing scheme."

To be clear, the focus in the letter is on copies being submitted to the USPTO as well as copies retained in the file and distributed internally.

I looked-into the CCC automated licensing system and found that they offered the right to make copies of a NATURE article (one of the journals taking action) for $32 per copy. 

USPTO Response: In a surprisingly bold statement, the USPTO's General Counsel Bernie Knight released a statement late last week indicating the USPTO's belief that submission of unlicensed copies of copyrighted materials to the USPTO for the purpose of complying with Rule 56 cannot create copyright liability because that action is fair use under 17 U.S.C. 107.  This issue previously arose when the USPTO was building the PAIR electronic record system.  It was because of potential copyright concerns that the USPTO decided not to make available non-patent prior art through the PAIR system. However, the USPTO has offered its position that it is fair use for the agency to charge a fee to make and distribute paper copies of the copyrighted works (as part of the file history).

The USPTO took no position on whether applicant's creation of file-copies and internal distribution of copies also qualify for the fair use defense. In addition, applicants who have obtained limited licenses to works may be under a contractual duty to avoid making further copies even if those copies would have been fair use.

How much money?: On an annual basis, I would estimate that at least five hundred thousand journal articles are submitted to the USPTO for consideration.  Each submission probably results two local copies for the file & review by the attorney, inventors, and others in addition to the submitted copy.  That takes the annual licensing market to around $50 million.  Not a tremendous amount for a nationalmarket, but that may be enough to save the struggling scientific journal industry.

Fair Use: An interesting aspect of fair use analysis is that the outcome can change based upon market conditions and general custom.  Here, for instance, if it is very easy to obtain a license by simply paying a fee online and a number of patent applicants begin paying that fee regularly, an action that was once considered fair use may again fall under the copyright infringement umbrella. 

How will your firm respond? Should your engagement letter be amended? 

Supreme Court Affirms Broad Congressional Authority to Offer Intellectual Property Rights for Public Domain Works

Patent, ,

By Dennis Crouch

Golan v. Holder (Supreme Court 2011)

As widely expected, the Supreme Court today affirmed a lower court ruling that the "Copyright Clause" of the U.S. Constitution does not prevent Congress from providing copyright protection to public domain works. As also expected, Justice Breyer (joined by Justice Alito) dissented from the 6-2 decision.

The case was filed after Congress restored the copyrights to a thousands of foreign-authored works that had fallen into the public domain based upon the authors' failures to observes pre-Berne Convention formalities such as registration and notice ©. Many of the restored works had been known to be in the public domain for decades before the 1994 passage of the statute – the Uruguay Round Agreements Act. (Picasso's 1937 Guernica painting reproduced without a license below is an example of a work whose copyright was restored by the statute). The Supreme Court opinion is written as a further extension of the 2003 Eldred decision that affirmed Congressional power to extend copyright by an additional 20-years as part of the Sonny Bono Copyright Term Extension Act (CTEA). I had suggested to my students last semester that the best conceivable outcome for petitioners would be that the Court would determine that heightened scrutiny should apply to adjudge the free speech impact of the expansion of copyright law. However, the court also rejected that path.

The Supreme Court opinion authored by Justice Ginsburg rejected the three primary arguments made by petitioners:

  1. The Court held that allowing works from the public domain to be later copyrighted does not result in the potential for perpetual copyright in violation of the "limited terms" language of the Constitution. In its opinion, the court rejected any notion that the public has a "vested" right in works from the public domain. "Once the term of protection ends, the works do not revest in any rightholder. Instead, the works simply lapse into the public domain."
  2. The purpose of copyright law – to "promote the Progress of Science" – should be broadly interpreted to include both promotion of the creation of new work as well as promotion of knowledge and learning more generally. And, inducing of the dissemination of existing works is a permissible means to promote science. In addition, providing for access to foreign markets by acceding to treaty obligations can also provide an incentive for creation of new works and therefore promote the progress.
  3. In Eldred, the free speech rights embodied by the First Amendment to the U.S. Constitution do not limit Congress from modifying copyright law within its "traditional contours." Petitioners argued that the removal of elements from the public domain was outside of these traditional contours and that, under Eldred, the Supreme Court should use a heightened level of scrutiny to determine whether the new law offends free speech concerns. The Court rejected that analysis based upon its conclusion that Congress has, on several occasions, removed elements from the public domain and that, therefore, this action is within the traditional contours of copyright policy. In addition, the Court held that the impact of the particular law at issue was simply to place the foreign works in the copyright position that they would have occupied if the current copyright regime had been in place at the time. From that perspective, the new law fits well within the traditional contours of copyright law.

Impact on Patent Law: Copyright and patent share the same constitutional underpinnings and each is purposed to "promote the Progress" of their respective fields. This leads me to the conclusion that the reasoning in Golan would be equally applicable to Congressional expansions of patent law. In its decision, the Court explicitly refers to historic patent restoration bills as "informing" the inquiry into the scope of the clause as it applies to copyright. The converse should also be true. Thus, perhaps Congress would have authority to extend patent terms based upon a patentee's provision of data additional testing data or its promise to manufacture the product in the US.

An interesting caveat comes from the Court's 1996 Graham decision. That opinion includes the line that "Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available." In distinguishing that line, the Court wrote that the passage does not speak "to the constitutional limits on Congress' copyright and patent authority" but instead it addresses "an invention's very eligibility for patent protection." (quoting Eldred). The seeming distinction here is that Congress has more latitude in determining patent (and copyright) term or duration and less latitude in determining subject matter eligibility.

In dissent, Justice Breyer wrote, inter alia, that the "newness" requirement has always been a necessary and fundamental element of intellectual property (copyright and patent) protection. This newness requirement is offended by allowing copyright protection to be offered for works created long ago and already known to be in the public domain.

The political setup of this case is somewhat interesting because the government's pro-property position could be conceived as the conservative approach while Golan's more liberal position is suggesting that anyone should be able to use these works without payment to the creator. At the same time, the liberal Golan's legal argument was based upon the traditionally conservative suggestion of strong Constitutional limits on the powers of the federal government.

Note:

  • At several points in this article I would have linked to Wikipedia, but the site is not generally available today because of its ongoing protest against an expansion of intellectual property law that would require services such as Wikipedia and Google to remove links to sources of pirated material.

Divided Patent Ownership, Equitable Title, and Failed Assignments

Patent,

by Dennis Crouch

Gellman v. Telular Corp. (Fed. Cir. 2011)

Issues of standing continue to arise in patent infringement litigation. Well established precedent requires that plaintiffs suing for infringement collectively hold "all substantial rights" in the patent being asserted. Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24 (1923). Thus, if two entities jointly own a patent, standing would only be proper if both entities jointly filed the infringement action. A lesser explored area of the law relevant to this case involves the requirements to prove ownership and the potential burden-shifting effect of assignment recordation.

Gellman's lawsuit involves U.S. Patent No. 6,075,451 which lists Mayer Lebowitz and Jim Seivert as co-inventors. (Seivert's name is misspelled as Sievert on the patent document). Both inventors are now dead. Lebowitz's rights to the patent are being held in trust and the trustee has argued that Seivert's rights to the patent were previously assigned to Lebowitz as well. Supporting that assertion is an assignment from Seivert to Lebowitz that was recorded in the USPTO assignment database in 1998. Unfortunately for the Lebowitz Trust, the assignment document filed with the PTO had a blank signature line and the Trust has been unable to produce any evidence that the assignment document was ever signed.

Three important consequences flow from a conclusion that Seivert never transferred his interest to Lebowitz. First, Seivert's heirs,  beneficiaries, or their assigns now share ownership in the patent. In this case, it appears that Seivert did not designate a beneficiary and therefore ownership is split amongst his heirs according to state intestate law. Second, the Lebowitz trust has no standing to sue because it does not hold substantially all interests in the patent. Third, absent prior agreement, each co-owner of a patent has the full right to offer a license to the defendants to practice the invention, normally without any accounting or compensation to the other patent owners. Here, in a filing with the district court the defendants have asserted that they have each obtained a patent license and release from the Seivert estate.

The Lebowitz Trust (Gellman) made two additional arguments in an attempt to prove that rights had been transferred: (1) the consulting contract and (2) the hired-to-invent doctrine.

The consulting agreement between Seivert and Lebowitz included a clause that any “ideas, discoveries, [or] inventions” by Seivert “shall be and remain the exclusive property” of Lebowitz. And, in addition, Seivert agreed “to execute any and all assignments” necessary.  The agreement had a major problem in that the only record available was unsigned.  In examining the contract, the Federal Circuit additionally found that the agreement was inadequate to prove that a transfer occurred even if it had been properly executed. In particular, the court indicated that the future promise to execute an assignment suggested that no transfer had previously occurred.  The court wrote (I would argue incorrectly) that “[o]therwise, the 'execute any and all assignments' language in the contract is surplusage without relevant meaning.”

In reading the promise to assign, the court agreed that it may create an equitable claim to title in favor of Lebowitz.  However, the law is clear that equitable title is insufficient to confer standing.

Of note, the court's interpretation of the contract appears to be based entirely upon Federal Circuit law rather than state law.

Hired to Invent: Normally patent rights are held by the inventors until those rights are assigned in a written agreement.  This is true even when the inventor is an employee and the invention was created within the scope of the employment. There are a few limited exceptions to this practice that transfer patent rights through operation of law rather than through written assignment. One historic exception is the “hired-to-invent” doctrine that some courts have used to transfer ownership of patent rights to an employer when the employee is hired to make a particular invention. See, e.g., Solomons v. United States, 137 U.S. 342, 346 (1890). This hired to invent doctrine cannot help the Lebowitz Trust here because the doctrine has been interpreted to create “creates only an obligation for the employee to assign to his employer.”

Affirmed. Case Dismissed for Lack of Standing.

Next Steps: If the Lebowitz Trust wants to pursue the lawsuit, it will need to first force transfer of rights from the Seivert estate and then refile the suit against the accused infringers.

Innovation and Competition Policy

Patent

By Dennis Crouch

Professor Herbert Hovenkamp (U. Iowa) is the most influential US antitrust scholar and author of the most cited legal treatise on antitrust law. He has written extensively on all areas of antitrust law, including the intersection between antitrust, innovation, and intellectual property.

Although the antitrust treatise sells for over $3,000, Professor Hovenkamp recently made new casebook on innovation and competition available for a free download (subject to an open source license agreement). The casebook is entitled INNOVATION AND COMPETITION POLICY: CASES AND MATERIALS. Professor Hovenkamp introduces the book as follows:

This book … differs from IP/antitrust casebooks in that it considers numerous sources of competition policy in addition to antitrust, including those that emanate from the intellectual property laws themselves, and also related issues such as the relationship between market structure and innovation, the competitive consequences of regulatory rules governing technology competition such as net neutrality and interconnection, misuse, the first sale doctrine, and the Digital Millennium Copyright Act (DMCA). The author uses this casebook for a three-unit class in Innovation and Competition Policy taught at the University of Iowa College of Law and available to first year law students as an elective.

Major topics include

  • Impact of patent scope on competition;
  • The law of tying;
  • Determining harm to innovation;
  • Competition policy in patent law;
  • Competition policy in copyright and under the DMCA;
  • Restraints on innovation;
  • Misuse of intellectual property;
  • Anticompetitive exclusion;
  • Innovation commons; and
  • Post-sale restraints that involve IP rights.

In the words of Prof. Solum, Download it while its hot!

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

New Patent Search Tool

  • ArchPatent is a brand new, free-to-use patent search resource that went live to the public on October 11th with US patents extending back to 1920. ArchPatent will be supported mainly by ad revenue. It was developed with the help of many PatenlyO readers, by aerospace engineers, and managers who specialize in data analysis and management. One of Arch PatentFounders, Brad Chassee indicated, "This tool was developed for those frustrated with the difficulty of using existing patent search tools. By providing simple yet powerful filtering tools, ArchPatent can drastically reduce search times, and our intuitive workspace functionality can greatly simplify larger, more complex search tasks." Many new features suggested by users are in the works for integration in future releases include: collaborative workspaces, matching of search terms within a single claim, filtering and advanced processing based on patents referenced and in-page PDF display. [Link]

Barnes & Noble Complains about Microsoft

  • Barnes & Noble wants the DOJ to go after Microsoft because of their licensing tactics. Barnes & Noble asked the DOJ to investigate Microsoft for using patents to keep new players out of the market. It seems that Microsoft may have asked Barnes & Noble, maker of the Android powered Nook, to enter into license agreement. Barnes & Noble said in a letter to the DOJ that "Microsoft is attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices." Microsoft is accusing Barnes & Noble of infringing 5 patents and Microsoft has filed a complaint with the ITC. Barnes & Noble claims that when they asked Microsoft for more detailed information related to these patents, Microsoft refused, claiming that the information was confidential and could not be shared, unless Barnes & Noble first executed a nondisclosure agreement. [Link] [Link]

Book Review

  • I recently received a free copy of "Patent Professional's Handbook: A Training Tool for Administrative Staff," it is a book geared toward administrative staff/non-attorneys to give them an overview of what steps are involved in patent prosecution. The book starts with an explanation of patent basics and moves on to explain how to do business electronically with the USPTO. There are sections on establishing user accounts and accessing the USPTO's patent information website. The book includes numerous screen images to help the reader understand how to navigate the PTO website. The book is very easily understandable and gives step-by-step instructions on what needs to be done when communicating with the USPTO. This is the first book on the market addressed directly to non-attorneys and does not give any legal advice. This would be a great beginner book for individuals that want to be involved in the patent world in an administrative role or individuals that are currently in an administrative role as a go to guide. The author of the book is Susan Stiles; she has been a Legal Assistant for more than 25 years, with 19 years experience in IP. [Link]

Patent Jobs:

  • Shuffle Master Inc. is looking for IP counsel with a minimum of 5 years of experience and an engineering background. [Link]
  • Myers Wolin is seeking a patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Toler Law Group is searching for patent attorneys with a degree in EE, CE, or CS. [Link]
  • Cesari and McKenna is looking for patent attorney with 2-4 years of experience and a degree in EE, CS, or related area of technology. [Link]
  • Sandia National Laboratories is searching for patent assistants with experience working with USPTO rules. [Link]
  • Baker & Daniels is seeking a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • The Storella Law Group is searching for a contract patent attorney or agent with a background in biotechnology. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6 or more years of experience in patent law. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP. [Link]
  • Harrity & Harrity is seeking a patent attorney with 2+ years of experience as a patent associate, agent, or examiner. [Link]
  • Baker & Daniels is searching for an IP associate with 2-4 years of experience and a degree in EE or CS to work in their Indianapolis office. [Link]
  • Skiermont Puckett is seeking 1 or more attorneys with 3 or more years of experience in a technical degree. [Link]
  • Guntin Meles & Gust is searching for patent attorneys with 2+ years of experience and a degree in EE or CE. [Link]

Upcoming Events:

  • 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]
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey Chelstrom on November 17th at 12:00 noon EST. The webinar will review and discuss many topics such as: the "effective filing date" of a patent application, changes to Section 102 and Section 103. New definitions to prior art, and many more topics. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host 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 Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [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]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [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]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

New Patent Search Tool

  • ArchPatent is a brand new, free-to-use patent search resource that went live to the public on October 11th with US patents extending back to 1920. ArchPatent will be supported mainly by ad revenue. It was developed with the help of many PatenlyO readers, by aerospace engineers, and managers who specialize in data analysis and management. One of Arch PatentFounders, Brad Chassee indicated, "This tool was developed for those frustrated with the difficulty of using existing patent search tools. By providing simple yet powerful filtering tools, ArchPatent can drastically reduce search times, and our intuitive workspace functionality can greatly simplify larger, more complex search tasks." Many new features suggested by users are in the works for integration in future releases include: collaborative workspaces, matching of search terms within a single claim, filtering and advanced processing based on patents referenced and in-page PDF display. [Link]

Barnes & Noble Complains about Microsoft

  • Barnes & Noble wants the DOJ to go after Microsoft because of their licensing tactics. Barnes & Noble asked the DOJ to investigate Microsoft for using patents to keep new players out of the market. It seems that Microsoft may have asked Barnes & Noble, maker of the Android powered Nook, to enter into license agreement. Barnes & Noble said in a letter to the DOJ that "Microsoft is attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices." Microsoft is accusing Barnes & Noble of infringing 5 patents and Microsoft has filed a complaint with the ITC. Barnes & Noble claims that when they asked Microsoft for more detailed information related to these patents, Microsoft refused, claiming that the information was confidential and could not be shared, unless Barnes & Noble first executed a nondisclosure agreement. [Link] [Link]

Book Review

  • I recently received a free copy of "Patent Professional's Handbook: A Training Tool for Administrative Staff," it is a book geared toward administrative staff/non-attorneys to give them an overview of what steps are involved in patent prosecution. The book starts with an explanation of patent basics and moves on to explain how to do business electronically with the USPTO. There are sections on establishing user accounts and accessing the USPTO's patent information website. The book includes numerous screen images to help the reader understand how to navigate the PTO website. The book is very easily understandable and gives step-by-step instructions on what needs to be done when communicating with the USPTO. This is the first book on the market addressed directly to non-attorneys and does not give any legal advice. This would be a great beginner book for individuals that want to be involved in the patent world in an administrative role or individuals that are currently in an administrative role as a go to guide. The author of the book is Susan Stiles; she has been a Legal Assistant for more than 25 years, with 19 years experience in IP. [Link]

Patent Jobs:

  • Shuffle Master Inc. is looking for IP counsel with a minimum of 5 years of experience and an engineering background. [Link]
  • Myers Wolin is seeking a patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Toler Law Group is searching for patent attorneys with a degree in EE, CE, or CS. [Link]
  • Cesari and McKenna is looking for patent attorney with 2-4 years of experience and a degree in EE, CS, or related area of technology. [Link]
  • Sandia National Laboratories is searching for patent assistants with experience working with USPTO rules. [Link]
  • Baker & Daniels is seeking a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • The Storella Law Group is searching for a contract patent attorney or agent with a background in biotechnology. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6 or more years of experience in patent law. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP. [Link]
  • Harrity & Harrity is seeking a patent attorney with 2+ years of experience as a patent associate, agent, or examiner. [Link]
  • Baker & Daniels is searching for an IP associate with 2-4 years of experience and a degree in EE or CS to work in their Indianapolis office. [Link]
  • Skiermont Puckett is seeking 1 or more attorneys with 3 or more years of experience in a technical degree. [Link]
  • Guntin Meles & Gust is searching for patent attorneys with 2+ years of experience and a degree in EE or CE. [Link]

Upcoming Events:

  • 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]
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey Chelstrom on November 17th at 12:00 noon EST. The webinar will review and discuss many topics such as: the "effective filing date" of a patent application, changes to Section 102 and Section 103. New definitions to prior art, and many more topics. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host 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 Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [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]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [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]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

New Patent Search Tool

  • ArchPatent is a brand new, free-to-use patent search resource that went live to the public on October 11th with US patents extending back to 1920. ArchPatent will be supported mainly by ad revenue. It was developed with the help of many PatenlyO readers, by aerospace engineers, and managers who specialize in data analysis and management. One of Arch PatentFounders, Brad Chassee indicated, "This tool was developed for those frustrated with the difficulty of using existing patent search tools. By providing simple yet powerful filtering tools, ArchPatent can drastically reduce search times, and our intuitive workspace functionality can greatly simplify larger, more complex search tasks." Many new features suggested by users are in the works for integration in future releases include: collaborative workspaces, matching of search terms within a single claim, filtering and advanced processing based on patents referenced and in-page PDF display. [Link]

Barnes & Noble Complains about Microsoft

  • Barnes & Noble wants the DOJ to go after Microsoft because of their licensing tactics. Barnes & Noble asked the DOJ to investigate Microsoft for using patents to keep new players out of the market. It seems that Microsoft may have asked Barnes & Noble, maker of the Android powered Nook, to enter into license agreement. Barnes & Noble said in a letter to the DOJ that "Microsoft is attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices." Microsoft is accusing Barnes & Noble of infringing 5 patents and Microsoft has filed a complaint with the ITC. Barnes & Noble claims that when they asked Microsoft for more detailed information related to these patents, Microsoft refused, claiming that the information was confidential and could not be shared, unless Barnes & Noble first executed a nondisclosure agreement. [Link] [Link]

Book Review

  • I recently received a free copy of "Patent Professional's Handbook: A Training Tool for Administrative Staff," it is a book geared toward administrative staff/non-attorneys to give them an overview of what steps are involved in patent prosecution. The book starts with an explanation of patent basics and moves on to explain how to do business electronically with the USPTO. There are sections on establishing user accounts and accessing the USPTO's patent information website. The book includes numerous screen images to help the reader understand how to navigate the PTO website. The book is very easily understandable and gives step-by-step instructions on what needs to be done when communicating with the USPTO. This is the first book on the market addressed directly to non-attorneys and does not give any legal advice. This would be a great beginner book for individuals that want to be involved in the patent world in an administrative role or individuals that are currently in an administrative role as a go to guide. The author of the book is Susan Stiles; she has been a Legal Assistant for more than 25 years, with 19 years experience in IP. [Link]

Patent Jobs:

  • Shuffle Master Inc. is looking for IP counsel with a minimum of 5 years of experience and an engineering background. [Link]
  • Myers Wolin is seeking a patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Toler Law Group is searching for patent attorneys with a degree in EE, CE, or CS. [Link]
  • Cesari and McKenna is looking for patent attorney with 2-4 years of experience and a degree in EE, CS, or related area of technology. [Link]
  • Sandia National Laboratories is searching for patent assistants with experience working with USPTO rules. [Link]
  • Baker & Daniels is seeking a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • The Storella Law Group is searching for a contract patent attorney or agent with a background in biotechnology. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6 or more years of experience in patent law. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP. [Link]
  • Harrity & Harrity is seeking a patent attorney with 2+ years of experience as a patent associate, agent, or examiner. [Link]
  • Baker & Daniels is searching for an IP associate with 2-4 years of experience and a degree in EE or CS to work in their Indianapolis office. [Link]
  • Skiermont Puckett is seeking 1 or more attorneys with 3 or more years of experience in a technical degree. [Link]
  • Guntin Meles & Gust is searching for patent attorneys with 2+ years of experience and a degree in EE or CE. [Link]

Upcoming Events:

  • 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]
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey Chelstrom on November 17th at 12:00 noon EST. The webinar will review and discuss many topics such as: the "effective filing date" of a patent application, changes to Section 102 and Section 103. New definitions to prior art, and many more topics. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host 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 Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [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]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [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]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

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