Tag Archives: Venue

Microsoft and Nokia sue Apple for Patent Infringement (via a Holding Company)

Patent,

by Dennis Crouch

Luxembourg based Core Wireless Licensing S.a.r.l. has sued Apple for patent infringement in the Eastern District of Texas. The recently filed complaint alleges that Apple’s communication devices such as iPads and iPhones infringe eight different Core Wireless patents.  The Core Wireless family of patents focus primarily on communication protocols and the patent owner claims that the patents are infringed by any device that communicates using 2G, 3G, or 4G standards.

Core Wireless obtained its portfolio of 2,000 patents and pending applications from Nokia and (apparently) Microsoft. In 2011, the patent licensing entity MOSAID purchased Core Wireless.  MOSAID itself is owned by the US private equity firm Sterling Partners.

The reported purchase price for Core Wireless (including its patents) was just under $20,000 — seemingly a very low price.  However, there is a kicker, the sale requires that the new owner enforce the patents and 2/3 of any licensing revenue must be sent to Microsoft and Nokia. Further, the patent ownership rights are subject to a condition subsequent — if Core Wireless fails to meet minimum performance thresholds then the patent rights revert to the grantors (Nokia and Microsoft). The following comes from a 2011 press release by MOSAID:

Core Wireless will retain approximately one-third of gross royalties from future licensing and enforcement of the patents and will bear all of the costs associated with their administration, licensing, enforcement and monetization. Core Wireless’ ongoing ownership of the portfolio is subject to minimum future royalty milestones. The remaining 2/3 of gross royalties will be paid to Nokia and Microsoft Corporation (NASDAQ: MSFT).

One way to look at this is that MOSAID is essentially working as on a property management contract. With patents, title must shift in order to facilitate the necessary lawsuits. The complaint lists the following patents as infringed: 6,792,277, 7,606,910, 6,697,347, 7,447,181, 6,788,959, 7,529,271, 6,266,321, 6,978,143.

This case is also interesting in the context of Professor Schwartz’s article on Contingent Fee Patent Litigation.  In a round-about way, Nokia and Microsoft have hired MOSAID on contingency fee to enforce their patent rights.  The complaint itself was filed by Henry Bunsow of Dewey Leboeuf in San Francisco with Johnny Ward Jr. serving as local counsel in E.D. Texas. True to its role as hopeful licensor, the plaintiff has only asked for money damages and not injunctive relief to stop ongoing infringement.

Google Buys More Patents: Last fall, MOSAID sold a set of 18 patents and patent applications to Google for a reported $11 million. Recently, the pair recorded a new transaction of about 200 patents and applications from MOSAID to Google.  Those patents were previously owned by the Italian tire manufacturer Pirelli and a spinoff company PGT-Photonics.  Google also recently purchased one eCommerce patent from the tiny firm Alpine-in-Motion.

Federal Circuit: COACH not a sufficiently famous brand and therefore cannot oppose a similar mark on a trademark dilution principle.

Patent

Coach Services v. Triumph Learning (Fed. Cir. 2011)

Coach is a famous American handbag maker.  Coach bags sell for $300 or more each and the company typically earns billions of dollars in revenue each year selling Coach branded products.  Triumph Learning makes test prep materials it also sells under the trade name "Coach."  Triumph's success has been driven by the no-child-left-behind testing requirements and the company sells most of its Coach-branded products to schools hoping to prepare their students for state mandated exams.

The dispute here arose when Coach Services opposed Triumph's trademark registration for use of the COACH mark. Triumph won at the Trademark Trial and Appeal Board (TTAB) and has now won on appeal.

Here, Coach Services had little success showing a likelihood of confusion because the two companies operate in such distinct market areas and offer products that are distinct from one another.  The most interesting aspect of the appeal for trademark law is the court's rejection of Coach Services' dilution claim under the Trademark Dilution Revision Act of 2006 ("TDRA"), 15 U.S.C. § 1125(c).  For patent attorneys considering practicing before the future Patent Trial and Appeal Board (PTAB) the most important aspects of the opinion focus on the odd but forceful rules of evidence applied by the Board and supported here by the Federal Circuit.

Trademark Dilution: The holder of a famous mark has trademark rights that go beyond the normal likelihood of confusion test found in the Lanham Act. In a dilution claim a famous mark holder can also stop uses that are likely to blur or tarnish the mark even in the absence of potential customer confusion.  Here, Coach Services argued that Triumph's use of COACH for its services blurred the power of the mark by using it for non-related, non-luxury goods.

Not Famous: In a dilution claim, the law requires that the mark holder prove that its mark is widely recognized by the general public. When the mark is also a common word – such as COACH – the mark holder must also demonstrate that those ordinary "uses of the mark are now eclipsed by the owner's use of the mark . . .  in almost any context" and that the mark has become "a household name."  Coach services failed to convince the judges that its mark was sufficiently famous to qualify.

For its case, Coach presented a set of facts to prove that its mark was sufficiently famous. These included: (1) sales and advertising figures for years 2000-2008; (2) its sixteen federal trademark registrations on the mark; (3) extensive unsolicited media attention referring to the mark; (4) joint marketing efforts for the mark; (5) two Second Circuit decisions finding the Coach hang-tag, which features the COACH mark, to be famous; and (6) Coach Services' internal brand awareness survey showing extensive awareness among 18-24 year old consumers.

None of these factual arguments persuaded the judges that the COACH mark was famous. In particular, the court rejected the company's sales and advertising figures because they had not been properly authenticated and admitted as evidence before the TTAB. Further, none of the facts presented by Coach Services actually lead to the conclusion that the word mark COACH is a household name that overwhelms the ordinary use of the word coach.

Notes:

  • In some of my courses, I have historically used an image of a Coach brand bag to think through some trademark and trade dress principles. This year, I had to go through three students before someone recognized the brand.

USPTO Maintenance Fees

Academic Studies, Articles and Publications, Patent

by Dennis Crouch

[This is an update of my 2009 post on the topic]

Over half of the USPTO operational budget is derived from maintenance (or renewal) fees paid by patentees. Fees are due at 3½, 7½, and 11½ years after issuance and each subsequent fee is substantially higher. Thus, under the current schedule, the first fee is $1,130, the second fee is $2,850, and the third fee is $4,730.  For the USPTO, this comes without any costs — all the work of examining is already complete.  The funds are used to subsidize ongoing examination. The USPTO has proposed to increase the maintenance fees substantially in near future as a mechanism of raising further funds for patent operations. 

The chart below shows the percentage of patents where maintenance fee payments are made for patents grouped by year of patent issuance.  The vast majority of patentees pay the first fee, but only about 50% pay all three. The 12–year delay in paying fees makes the chart appear to be missing data on the right side.

USPTO revenue from maintenance fees has been growing over time — lead primarily by an increase in the number of patents issued; an increase in the percentage of fees paid; an increase in the fees charged; and a decrease in the percentage of small entities who pay only ½ fare.

PatentlyO129

All USPTO fees are subject to market whims and macro-economic effects.  Maintenance fees are a particular problem because a decrease in maintenance fee payments does not lead to any decrease in workload for the Office. In 2009, the USPTO was suffering under a budget shortfall and I noted that the greatest cause of that shortfall was the dropping rate of renewal.

As an aside – it is interesting to note that, even though small entities receive a 50% discount on maintenance fee payments, they are much more likely to abandon their patents and not pay the mantenance fees. [Link]

Tags: , ,

Predicting Patent Litigation – A Response by Professor Chien

Patent

In the preceding post, I highlighted two recent critiques of Professor Colleen Chien's recent article on predicting patent litigation.  Below, Professor Chien responds to these critiques. – Jason

By Colleen V. Chien, Assistant Professor of Law, University of Santa Clara School of Law

In my article Predicting Patent Litigation, I describe the relationship between a number of intrinsic and previously unexplored acquired patent variables and the likelihood of the patent being litigated.  In the article, I state that “from the starting point presented here, there are a number of directions that follow-up research could take to improve the resolution of the ranking approach described here that, while promising, does not provide a ‘commercial grade’ solution to outstanding patent-clearance problems.” Along this vein, Petherbridge and Kesan et al provide thoughtful suggestions and questions about how the analysis could be verified, refined, and extended.  Their input is timely as efforts to do so are just getting underway, as part of adapting this exploratory project to commercial settings. Looking at more, and more recent patents, replicating the analysis, and adding additional variables, where it makes sense, will necessarily be part of this effort.

Since my paper was published I have been approached by a dozen or so parties interested in testing and applying the paper’s insights. The diversity of these interests addresses the two questions raised by the commentators. First, how precise must the model be? Though Petherbridge’s answer is “much more so,” the answer necessarily depends on the context of the application. On one hand, no level of precision in the algorithm can best a patent lawyer’s expert analysis of the claims and in very few cases would it make sense to proceed solely based on a mere calculation. On the other hand, if an insurance company is trying to use this as one of a variety of variables for calculating defense insurance rates, or for related applications where this filter is applied with others, this kind of algorithm can be useful. Likewise, the question, what variables should be considered? cannot be answered in a vacuum. Kesan et al suggest variables such as whether the particular patent is embodied in a product and the historical revenue of the patent owner. But even assuming these are better than other variables, the difficulty of getting them may make them impractical in many cases.

My article flags the difficulties with tracing what happens to a patent after issue as a potential problem but was not intended to definitively recommend that recordation rules be changed. Indeed, as I have explained in my recent comment “The Who Owns What Problem in Patent Law,” there are many reasons, the majority of which are economic and inadvertent rather than strategic, that it’s hard to determine who owns what patents. As part of the Kappos administration’s helpful efforts to improve access to patent data (examples here and here), the PTO has recently solicited input on this very question. While greater applicant disclosure is worth considering, I believe that the PTO could do much more with the information it already has. Currently, you cannot search among only in-force patents, or easily tell who the owner of record of patent is, how many times it has been cited, how much longer it may be in force, whether it has been reexamined, who requested the reexamination, or whether or not the current owner is a large or small entity. Yet making this information, which already exists, more accessible and supportive of business decision-making, could go a long way to enhancing the public’s ability to assess patent risks and opportunities.

 

 

USPTO Proposed Budget Just Shy of $3B

Patent,

President Obama has released his proposed FY2013 budget that would begin October 1, 2012. The budget proposes to provide the USPTO with full access to its fee collections at an estimated $2.95 billion ($250 million over FY2012 and more than $1 billion over 2009.  The revenue gives Director Dave Kappos the funds he has needed to hire examiners and BPAI judges and to revamp the USPTO’s defunct IT system.  Lets see how it rolls.

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.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , , ,

Microsoft and LG Sign Patent Agreement

  • Microsoft and LG singed a patent agreement that provides coverage under Microsoft's patent portfolio for LG's tablets, mobile phones and other products that runs on the Android Platform. Microsoft claims that more than 70% of all Android smartphones sold in the US are now receiving coverage under Microsoft's patent portfolio. It has been estimated that more than 700,000 Android based devices are sold every day and analyst have predicted that the number will reach 2.5 million devices per day. [Link] Microsoft most likely receives anywhere from $5-$15 dollars per device sold, meaning Microsoft makes $2.45 million-$7.35 million every day from Android operated phones. [Link]

Wal-Mart and Entrepreneurs

  • Wal-Mart has launched a "Get on the Shelf" contest to find the next new thing to put on their shelves. The contest is limited to categories that Wal-Mart carries, which makes the contest open to all kind of entrepreneurs. There will be 3 winners picked and their items will be sold on Walmart.com, with the grand prize winner being featured on the site's home page and stocked n select Wal-Mart stores. The public will vote for their favorite products, similar to other contest such as American Idol. [Link]

National Medal of Technology and Innovation

  • The PTO is seeking nominations for the 2012 National Medal of Technology and Innovation. The medal is presented by the President and is the highest award for technological achievement in the US. The medal is awarded to individuals, teams of up to 4, or companies for their contribution to America's economic, environmental, and social well-being. [Link]

Patent Jobs:

  • Cardinal Intellectual Property is seeking a patent search attorney to work at their Evanston, Illinois location. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Cardinal Intellectual Property is searching for patent search professional to work remotely. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6+ years of experience to work at their El Segundo, California location. [Link]
  • Dority & Manning is seeking patent attorneys with 1-4 years of experience and a BSEE or BSME to work at their Greenville, SC office. [Link]
  • The Sughrue Firm is searching for patent agents with 1-2 years of experience and backgrounds in computer science of software to work in their Silicon Valley office. [Link]
  • Whirlpool is seeking a patent agent with a minimum of 2 years of experience and a BS in engineering to work at their Saint Joseph, Michigan location. [Link]
  • Hiscock & Barclay is seeking patent agents/attorneys with a minimum of 3-5 years of experience to work at their New York offices. [Link]
  • Steptoe & Johnson is searching for IP associates with a minimum of 4 years of experience in patent litigation and a technical background to work in their DC or Chicago offices. [Link]
  • Edell, Shapiro & Finnan is looking for a patent attorney with 2+ years of experience and a degree in EE or physics to work at their Rockville, Maryland office. [Link]
  • Michael Best & Friedrich is seeking a biotech associate with 5+ years of experience and a Ph.D. to work at their Madison, Milwaukee or Chicago office. [Link]
  • Intellectual Ventures and Invention Law Group is looking for a Chief Policy Counsel with 15+ years of experience to work at their Bellevue, Washington location. [Link]
  • Telesign is seeking a IP analyst with 2+ years of experience to work at their Marina Del Rey, California location. [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • American University Washington College of Law Administrative Law Review will be hosting an afternoon symposium on January 25 on the creation and administration of a new trial-like review procedure, more commonly known as post-grant patent opposition, at the U.S. Patent and Trademark Office, titled Regulating Innovation: How the Patent and Trademark Office Intends to Create Adjudication From Scratch. The symposium will explore the rulemaking that will be required of the agency, the implementation of the post-grant review process, and industry reaction to the proposed changes.
  • International IP- Is the IP World Flat? Santa Clara Computer & High Tech Law Journal is hosting its annual symposium January 27 on SCU Campus. The symposium will include the following 4 panels: (1) International Patent Harmonization; (2) Non Practicing Entities: Going Global; (3) The Rise of Chinese IP; and (4) Comparative e-Privacy Regimes. Speakers include: David Abrams, Colleen Chien, Nancy Kremers, Francois Gilbert and many others. Also, PatentlyO's Dennis Crouch will be a Speaker discussing International Patent Harmonization. [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]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , , ,

Microsoft and LG Sign Patent Agreement

  • Microsoft and LG singed a patent agreement that provides coverage under Microsoft's patent portfolio for LG's tablets, mobile phones and other products that runs on the Android Platform. Microsoft claims that more than 70% of all Android smartphones sold in the US are now receiving coverage under Microsoft's patent portfolio. It has been estimated that more than 700,000 Android based devices are sold every day and analyst have predicted that the number will reach 2.5 million devices per day. [Link] Microsoft most likely receives anywhere from $5-$15 dollars per device sold, meaning Microsoft makes $2.45 million-$7.35 million every day from Android operated phones. [Link]

Wal-Mart and Entrepreneurs

  • Wal-Mart has launched a "Get on the Shelf" contest to find the next new thing to put on their shelves. The contest is limited to categories that Wal-Mart carries, which makes the contest open to all kind of entrepreneurs. There will be 3 winners picked and their items will be sold on Walmart.com, with the grand prize winner being featured on the site's home page and stocked n select Wal-Mart stores. The public will vote for their favorite products, similar to other contest such as American Idol. [Link]

National Medal of Technology and Innovation

  • The PTO is seeking nominations for the 2012 National Medal of Technology and Innovation. The medal is presented by the President and is the highest award for technological achievement in the US. The medal is awarded to individuals, teams of up to 4, or companies for their contribution to America's economic, environmental, and social well-being. [Link]

Patent Jobs:

  • Cardinal Intellectual Property is seeking a patent search attorney to work at their Evanston, Illinois location. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Cardinal Intellectual Property is searching for patent search professional to work remotely. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6+ years of experience to work at their El Segundo, California location. [Link]
  • Dority & Manning is seeking patent attorneys with 1-4 years of experience and a BSEE or BSME to work at their Greenville, SC office. [Link]
  • The Sughrue Firm is searching for patent agents with 1-2 years of experience and backgrounds in computer science of software to work in their Silicon Valley office. [Link]
  • Whirlpool is seeking a patent agent with a minimum of 2 years of experience and a BS in engineering to work at their Saint Joseph, Michigan location. [Link]
  • Hiscock & Barclay is seeking patent agents/attorneys with a minimum of 3-5 years of experience to work at their New York offices. [Link]
  • Steptoe & Johnson is searching for IP associates with a minimum of 4 years of experience in patent litigation and a technical background to work in their DC or Chicago offices. [Link]
  • Edell, Shapiro & Finnan is looking for a patent attorney with 2+ years of experience and a degree in EE or physics to work at their Rockville, Maryland office. [Link]
  • Michael Best & Friedrich is seeking a biotech associate with 5+ years of experience and a Ph.D. to work at their Madison, Milwaukee or Chicago office. [Link]
  • Intellectual Ventures and Invention Law Group is looking for a Chief Policy Counsel with 15+ years of experience to work at their Bellevue, Washington location. [Link]
  • Telesign is seeking a IP analyst with 2+ years of experience to work at their Marina Del Rey, California location. [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • American University Washington College of Law Administrative Law Review will be hosting an afternoon symposium on January 25 on the creation and administration of a new trial-like review procedure, more commonly known as post-grant patent opposition, at the U.S. Patent and Trademark Office, titled Regulating Innovation: How the Patent and Trademark Office Intends to Create Adjudication From Scratch. The symposium will explore the rulemaking that will be required of the agency, the implementation of the post-grant review process, and industry reaction to the proposed changes.
  • International IP- Is the IP World Flat? Santa Clara Computer & High Tech Law Journal is hosting its annual symposium January 27 on SCU Campus. The symposium will include the following 4 panels: (1) International Patent Harmonization; (2) Non Practicing Entities: Going Global; (3) The Rise of Chinese IP; and (4) Comparative e-Privacy Regimes. Speakers include: David Abrams, Colleen Chien, Nancy Kremers, Francois Gilbert and many others. Also, PatentlyO's Dennis Crouch will be a Speaker discussing International Patent Harmonization. [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]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

Kodak accuses HTC and Apple of patent infringement

  • Kodak is trying to prohibit Apple's iPhones, iPads, and iPods and HTC's smartphones and tablets, from entering the US because they claim that the products infringe their patents on its digital imaging technology. Kodak has filed suit at the ITC and in the Western district of New York against Apple and HTC. [Apple Complaint][HTC Complaint] 
  • Kodak has been in the news lately with the threat of bankruptcy. However, Kodak has a very large number of patents in their portfolio and from the looks of the pending patent infringement suits; they plan to enforce their patents. This could be the start of a busy year for Kodak and their patent attorneys, if they plan on going after all potential infringers. Could Kodak's patent portfolio potentially save the company from bankruptcy? Only time will tell.

USPTO will host educational roadshows

  • USTPO officials will travel to seven educational roadshows regarding the America Invents Act, allowing the public to speak with the USPTO officials about the implementation of the Act. Discussions will mainly focus on the USPTO's recently proposed rules regarding provisions of the Act. The locations that USPTO officials will hold the roadshows are Alexandria, VA, Sunnyvale, CA, Salt Lake City, Dallas, Ft. Lauderdale, Boston, and Chicago. [Link]

The Nuts and Bolts of Federal Circuit Practice

  • On January 19, at 3p.m. eastern time, the Federal Circuit Bar Association will hold the Nuts and Bolts of Federal Circuit Practice. The webcast will provide a practical "How To" discussion of the rules and issues that practitioners and companies must face when appealing to the Federal Circuit. Many questions will be answered such as: How does the Court handle the many highly technical issues that come before it? What are the time limits for filing a notice of appeal and briefs? The panelists for the event are Pamela Twiford, Jan Horbaly, and James Benjamin. [Link]

Patent Jobs:

  • A patent firm is seeking a contract patent attorney/agent with at least 4 years of experience and a background in CS. (telecommuting option) [Link]
  • Stoel Rives is seeking a patent attorney with 3-5 years of experience to work in their Portland or Seattle office. [Link]
  • NSIP Law is searching for a patent attorney with at least 3 years of experience to work at their Washington DC office. [Link]
  • Hiroe & Associates is seeking a patent attorney with 2-5 years of experience to work in Japan. [Link]
  • Alston & Bird is seeking a patent prosecution associate with 2-3 years of experience and a background in electrical engineering to work at their Charlotte office. [Link]
  • Google is searching for a patent litigation counsel with 3 years of litigation experience to work at their New York office. [Link]
  • The USPTO is seeking patent examiners with engineering backgrounds and experience in the patent field. [Link]
  • Ice Miller is looking for a patent attorney with 2+ years of experience to work at their Indianapolis office. [Link]
  • Ice Miller is seeking a 2012 law school graduate eligible to sit for the patent bar. [Link]

Upcoming Events:

  • What You Need to Know About… The New ND Cal Patent Pilot Program, session will be hosted by Stanford Law School on January 18. Guest include Chief Judge Randall Rader, Jeff Fehervari, Laura Storto, Judge Nathanael Cousins, Judge Elizabeth Laporte, Judge Lucy Kohand many others.
  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • 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]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

Kodak accuses HTC and Apple of patent infringement

  • Kodak is trying to prohibit Apple's iPhones, iPads, and iPods and HTC's smartphones and tablets, from entering the US because they claim that the products infringe their patents on its digital imaging technology. Kodak has filed suit at the ITC and in the Western district of New York against Apple and HTC. [Apple Complaint][HTC Complaint] 
  • Kodak has been in the news lately with the threat of bankruptcy. However, Kodak has a very large number of patents in their portfolio and from the looks of the pending patent infringement suits; they plan to enforce their patents. This could be the start of a busy year for Kodak and their patent attorneys, if they plan on going after all potential infringers. Could Kodak's patent portfolio potentially save the company from bankruptcy? Only time will tell.

USPTO will host educational roadshows

  • USTPO officials will travel to seven educational roadshows regarding the America Invents Act, allowing the public to speak with the USPTO officials about the implementation of the Act. Discussions will mainly focus on the USPTO's recently proposed rules regarding provisions of the Act. The locations that USPTO officials will hold the roadshows are Alexandria, VA, Sunnyvale, CA, Salt Lake City, Dallas, Ft. Lauderdale, Boston, and Chicago. [Link]

The Nuts and Bolts of Federal Circuit Practice

  • On January 19, at 3p.m. eastern time, the Federal Circuit Bar Association will hold the Nuts and Bolts of Federal Circuit Practice. The webcast will provide a practical "How To" discussion of the rules and issues that practitioners and companies must face when appealing to the Federal Circuit. Many questions will be answered such as: How does the Court handle the many highly technical issues that come before it? What are the time limits for filing a notice of appeal and briefs? The panelists for the event are Pamela Twiford, Jan Horbaly, and James Benjamin. [Link]

Patent Jobs:

  • A patent firm is seeking a contract patent attorney/agent with at least 4 years of experience and a background in CS. (telecommuting option) [Link]
  • Stoel Rives is seeking a patent attorney with 3-5 years of experience to work in their Portland or Seattle office. [Link]
  • NSIP Law is searching for a patent attorney with at least 3 years of experience to work at their Washington DC office. [Link]
  • Hiroe & Associates is seeking a patent attorney with 2-5 years of experience to work in Japan. [Link]
  • Alston & Bird is seeking a patent prosecution associate with 2-3 years of experience and a background in electrical engineering to work at their Charlotte office. [Link]
  • Google is searching for a patent litigation counsel with 3 years of litigation experience to work at their New York office. [Link]
  • The USPTO is seeking patent examiners with engineering backgrounds and experience in the patent field. [Link]
  • Ice Miller is looking for a patent attorney with 2+ years of experience to work at their Indianapolis office. [Link]
  • Ice Miller is seeking a 2012 law school graduate eligible to sit for the patent bar. [Link]

Upcoming Events:

  • What You Need to Know About… The New ND Cal Patent Pilot Program, session will be hosted by Stanford Law School on January 18. Guest include Chief Judge Randall Rader, Jeff Fehervari, Laura Storto, Judge Nathanael Cousins, Judge Elizabeth Laporte, Judge Lucy Kohand many others.
  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • 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]

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

2011 Recap: The Practically Important Elements of the America Invents Act of 2011

Patent, , , ,

As a new year begins, Paul Morgan reflects on the practical importance of the Leahy-Smith America Invents Act of 2011 – the major patent reform effort that was enacted in September 2011. Although admittedly oversimplified (like any short-list), Paul's list provides some food for thought for patent strategists. He looks forward to comments.

By Paul Morgan

1. Regarding the hyper-hyped "first inventor to file" replacing of "first to invent" — the number of situations in which two different parties file patent applications on the same or substantially the same invention, and the second to file obtains valid dominant patent claims, is miniscule (now less than 20 a year). Cases involving invention "derivation" are a small percentage of even that miniscule number. In other words, the removal of alleged prior "invention date" arguments is not a significant AIA change.

2. The most significant AIA changes, which will affect almost every patent applicant, are in the definitions of what counts as prior art. The AIA provides a considerable simplification (albeit with a few ambiguities). Also, most prior art will now become instant "bars-to-patentability." U.S. application foreign priority filing dates and foreign public disclosure dates both becoming U.S. prior art dates will provide a significant prior art increase. The ending of PTO Rule 131 alleged prior invention dates declarations "swearing behind" earlier prior art dates will have a limited effect on some patent grants, but little or no effect on successfully litigating patents. [Rule 131 declarations are ex parte, uncontested, and often inadequately examined, so they rarely survive litigation challenges and easily raise inequitable conduct issues.]

3. Delaying filing patent applications after publicly disclosing one's invention is foolishly dangerous now, and will remain so. It will also continue to destroy foreign patent rights. There is a [sole remaining] one year "grace period" for doing that, but that grace period is ambiguous as to its disclosure extent requirements and effect. Delaying the filing of at least provisional applications for new products still under development will become more dangerous even if kept secret, due to the above changes in prior art and its effective dates.

4. The AIA significant increases the value of trade secrecy protection (instead of or even in addition to patenting) for any inventions which can be kept secret while being commercially exploited. There is potential dual IP protection from the AIA elimination of "best mode" defenses. Even more so if disputed ambiguities in AIA 102(a)(1) are held to overrule the long-established Metalizing Engineering doctrine that "forfeits" patenting after having already commercially exploited an invention, which would allow tacking on full term patent protection after unlimited years of trade secrecy protection. A rather surprising impact of "patent" legislation.

5. The ability to eliminate any inequitable conduct defense before patent litigation is provided in the new "Supplemental Examination." [An ex parte reexamination solely for patent owners to request and participate in, and thus a potentially powerful new tool for patent enforceability, although its PTO rules and actual usage remain to be seen.]

6. Ending the "false marking suits" plague and the naming of numerous defendants in the same patent suit [to avoid venue transfers] is already accomplished. Also, there is a new "virtual" marking system that really ought to be used.

Finally, the practical effects of many other text-extensive AIA changes, such as the new or amended and Board-run inter partes reexaminations and 9 month only PGR opposition systems, are too soon to predict. Especially given their potentially dangerous estoppels, predictable higher costs, un-issued PTO rules, and the limited number of them that the PTO will accept each year.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

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

Chisum Patent Academy

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

Student Writing Competition

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

Evil Twin Debate

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

Patent Jobs:

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

Upcoming Events:

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

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

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

Chisum Patent Academy

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

Student Writing Competition

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

Evil Twin Debate

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

Patent Jobs:

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

Upcoming Events:

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

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

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

Chisum Patent Academy

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

Student Writing Competition

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

Evil Twin Debate

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

Patent Jobs:

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

Upcoming Events:

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

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

Federal Circuit Holds Defendant’s State of Incorporation (Delaware) Improper Venue

Patent, , ,

By Dennis Crouch

54727largeLogoIn re Link_A_Media Devices Corp. (LAMD) (Fed. Cir. 2011)    

Introduction: The Federal Circuit has again asserted mandamus power to order a patent case to be transferred to a more convenient forum under 28 U.S.C. § 1404(a) – holding that Judge Robinson's denial of transfer out of Delaware was an abused of discretion.

Three facts make the case somewhat interesting and novel. First, the transfer is not out of Texas, but rather from Delaware to the Northern District of California. Second, the defendant, LAMD, who requested the transfer is a Delaware Corporation (although its operations are in California). Finally, the plaintiff, Marvell Int'l., is a foreign entity based in Bermuda although its subsidiary, Marvell Semiconductors, and the named inventors are all based in California.

Legal Background: The due process clauses of the US Constitution have been read to place personal jurisdiction limitations on the power of courts to pass judgment on non-resident parties. In patent cases, personal jurisdiction is rarely an issue because most defendants are national-players that have sufficient minimum contacts in every local jurisdiction.

Even when a court has personal jurisdiction over a case, the laws of civil procedure allow a court to transfer a case to a different jurisdiction "[f]or the convenience of the parties and witnesses, in the interest of justice." 28 U.S.C. § 1404(a). This provision in the law is derived from the common law doctrine of forum non conveniens and there continues to be cross-talk between the two docrines.

Lower Court Decision: In her decision to keep the case in Delaware, Judge Robinson primarily gave weight to three factors: (1) the plaintiff's choice of forum; (2) the defendant's choice of Delaware as its state of incorporation; and (3) the international (rather than regional) nature of the defendant. In addition, the court found no "congestion" problems or identified problems "with discovery or witness availability."

On appeal, the Federal Circuit reversed – holding that the fact that a defendant is incorporated in the forum state is only one factor to be considered in the analysis.

The Federal Circuit particularly pointed to four errors in the district court's analysis.

Choice-of-Forum: First, the court indicated that "far too much weight" was given to the plaintiff's choice of forum. While some weight may be given to that choice, the plaintiff's choice is given less deference when the forum is not the home-forum of the plaintiff. (Note, this result has the potential of being discriminatory to foreign entities under TRIPs because the foreign entities have no "home forum" in the US.)

State of Incorporation: Second, the appellate court held that heavy reliance on state of incorporation is inappropriate.

Neither § 1404 nor Jumara [the leading 3rd Circuit 1404 case] list a party's state of incorporation as a factor for a venue inquiry. It is certainly not a dispositive fact in the venue transfer analysis, as the district court in this case seemed to believe.

Convenience of Records: Judge Robinson refused to give weight to the convenience of witnesses and location of books and records – holding that those traditional 1404 factors are "outdated" except where truly regional defendants are litigating. The Federal Circuit held that at least some consideration should have been given to these factors.

Public Interest: Finally, the court looked to the interest of the forum jurisdiction (Delaware) in deciding the case and found it had very little interest because the state had no connection to the dispute and no connection to the parties other than the fact that LAMD is incorporated there.

Holding: The District Court is ordered to direct transfer of the case to the United States District Court for the Northern District of California.

  • It is important to note here that the Federal Circuit based its mandamus decision on 3rd Circuit law rather than Federal Circuit law.
  • Pilar G. Kraman discussed the district court decision at the Delaware IP Law Blog.

Bits and Bytes by Dennis Crouch

Patent

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

Bits and Bytes by Dennis Crouch

Patent

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

Bits and Bytes by Dennis Crouch

Patent

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

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.