I just got my Gmail account from a friend at Google. It may really be an excellent tool. You can email me here.
April 2004
Horse Training Method Inventor
This one is for my dad who is training his Missouri mules.
Wayne Schwartz of Spivey Kansas has recently patented this new method of controlling a horse. (U.S. Patent 6,725,810). Note: it does not shock the horse, it just remotely tugs on the reins.
FTC Patent Policy
Federal Circuit recently ruled that economic policy should not be considered during claim construction. (SKB). However, the FTC is still pushing its economic view of patent policy. If you want to bone up on your economic theory, try David Chamberlain’s Idea Shop. (Maybe this will convince David to write a short piece about the economics of intellectual property).
Patent Office Funding
Michael Posner of Congress Daily has the early wire on patent office funding:
Without a whisper of dissent, the Senate Judiciary Committee endorsed Thursday a House bill that raises fees for the Patent and Trademark Office and lets the agency keep its own money.
Senate approval is expected.
Read more patent related legislative news.
Structured Claim Drafting
Stephen Becker has a useful technique for improving the quality of your claims. (Article).
1. List the elements sought to be protected and their interrelationships.
2. Analyze each element asking:a) Is the element necessary for preserving functionality?
b) Is the element needed to distinguish over the prior art?
c) Can the element be generalized in a way that retains claim novelty?
d) Can elements be combined in a way that retains claim novelty?3. Review the entire claim, discarding any words not absolutely necessary for functionality or novelty.
According to Stephen:
Sanitizing the wordage, generalizing terminology and combining claim elements will improve the likelihood of literal infringement, because a competitor will find it more difficult to argue persuasively that a claim element is missing, from its competitive product or service.
Independent IP Firms Alive and Well
IP Worldwide recently ran an article questioning whether independent IP firms are viable in today’s marketplace. (Discussing the fall of Lyon & Lyon). The APLF has offered a response to the article.
The fact remains that very few large general practice firms can offer the depth and breath of expertise, in litigation, prosecution or counseling service, that are the standard offerings of independent IP firms. If the large general firms have an advantage, it is their willingness and ability to devote large budgets to advertise and promote their services. Few independent IP firms have (or desire to spend) the resources that many large general firm devoted to advertising and promoting their IP departments. Of course, those large advertising budgets also give rise to higher billing rates, a separate phenomenon which clients are also coming to recognize.
SmithKline Beecham v. Apotex
(Part IV)
In an updated concurrence, J. Gajarsa adds firepower to his disagreement with the newly defined experimental use exception:
According to the majority, SKB’s testing of PHC’s performance as a human antidepressant was not necessary to reduce PHC to practice. The majority does not make clear, however, why testing a light pole’s performance at illumination under severe weather conditions was necessary to reduce the light pole to practice, Manville, why testing an all-weather activity mat’s performance in harsh weather was necessary to reduce the mat to practice, Seal-Flex, or why testing a floating dock’s performance in rough, choppy water was necessary to reduce the dock to practice, EZ-Dock.
In all four cases, the claims at issue were product claims that did not claim the tested features explicitly. In all four cases, the patentees possessed the claimed product in substantial enough form to test their products’ performance at their intended functions. The majority does not explain why only one of these four patentees had reduced its claimed invention to practice sufficiently to preclude the experimental use doctrine.
Patent Litigation: preventive measures
The Douglas J. Kline has a nice article in the Technology Review that outlines a typical patent infringement suit. Kline also gives three tips for preparing for litigation well in advance:
1) Thoroughly and diligently prosecute your patents.
2) Learn about your competition and draft patents that cover competitor’s technology.
3) Identify competitor’s patents early in your product development and consider design-arounds.
SmithKline Beecham v. Apotex
(PART III)
SmithKline Beecham v. Apotex: The concurrence.
Judge Gajarsa filed a Concurrence in SKB based upon his sua sponte analysis of Section 101. SKB had argued that its claimed compound (PHC hemihydrate) had been seeded in the environment and, once seeded, will naturally contaminate any synthetically made PHC anhydrate.
J. Gajarsa agreed that the manufacture of PHC hemihydrate could be “a natural physical process” occurring “under normal climactic conditions and with no human intervention,” and thus found that it was an unpatentable process of nature.
In short, patent claims drawn broadly enough to encompass products that spread, appear, and “reproduce” through natural processes cover subject matter unpatentable under Section 101–and are therefore invalid.
Finally, the Concurrence derided the Majority’s approach, saying that it has created “unfortunate precedent that will complicate future considerations of the experimental use doctrine.”
Claim Drafting Tips – Patent Quality
One reason that corporations continue to obtain patents is that a strong patent portfolio can alter Wall Street’s outlook on the portfolio holder. During any merger or large acquisition, the associated patent portfolios should be given some review. In some instances, however, the review may simply take the form a Patent Quality Rating. PatentRatings is one company that calculates and sells such ratings. (U.S. patent 6,556,992).
The quality ratings are purely objective and can be based on a number of factors. Here are some tips to increase your rating:
1) Increase the number of claims.
2) Decrease the length of each claim.
3) Increase the length of the specification.
4) File patent as a continuation or CIPs.
5) Vary the type of claims.
6) Cite more references in your IDS.
7) Cite non-patent references or foreign patents.
8) Limit patent prosecution history.
FYI: U.S. Patent 5,583,591 has been identified with an A+ rating.
Wood Panel Clamp Inventor
Lawrence Devers from Pittsburg, Kansas (my hometown) has recently patented a new hand-operated wood panel clamping tool. (U.S. Patent No. 6,726,192).
Wood panels for cabinet doors are typically constructed from a number of boards that are glued together edge-to-edge to form the complete panel. The panel may then be sanded or planed flat and milled out or routered to produce a design on the front face of the panel. Small cabinet-making shops typically lack a good way of forcing the boards into flat alignment with one another and holding them in such alignment while the panel is being squeezed from the sides by pipe clamps or the like until adhesive between edges of the boards sets up. Typically, cabinetmakers may have to use mallets to pound the boards into place while they adjust and readjust the pipe clamps at various locations along the length of the boards. It can be a slow, tedious, inexact, and sometimes frustrating procedure.
Devers’ invention may work to solve this problem.
Orphan Drug Act (Part II)
As I mentioned in a previous posting, anecdotally, the Orphan Drug Act has been quite successful in providing incentives to pursue drug research in areas that may have otherwise been overlooked. Here are several links that provide further information and analysis:
The Orphan Drug Act
Drug trial cost estimates
A criticism of the Orphan Drug Act
Background on the law
Poultry Researcher
Eldon John Strandine, 94, recently died. He held 17 patents for various aspects of the poultry industry and food safety. (Chicago Tribune)
Patent Office Backlog
From Judy Newman at the Wisconsin State Journal:
The United States could have a backlog of 1 million patent applications awaiting approval within five years if Congress doesn’t pass a bill that would boost funds for the nation’s patent office, deputy director Jon Dudas said Monday in Madison.
According to Dudas, USPTO has 470,000 patent applications waiting for action with an average processing time of 27 months. The funding bill has passed the House, but is awaiting action in the Senate. S. 1760 (PDF).
Meetings
The Federal Circuit Bar Association has announced its sixth annual “bench & bar” conference beginning June 26 in beautiful Colorado Springs. Program (pdf).
The Intellectual Property Law Association of Chicago (IPLAC) is hosting a federal judicial panel on April 29 (pdf). Judges Cudahy, Duff, Holderman, Moran, Ashman and Brown are all scheduled to attend.
Smithkline Beecham v. Apotex
[PART II]
This is a second installment the SKB v. Apotex case brief
Experimental use was a major issue in the case. According to the court, experimental use may only be used to negate a 102(b) public use if the purpose of the experimental use was to assist in designing or testing of a claimed feature. Thus, in SKB, the “clinical trials tested only the safety and efficacy of PHC hemihydrate as an antidepressant” and were not an experimental use of the chemical compound as claimed in claim 1.
One striking idea from the case is that experimental use is now analyzed on a claim-by-claim basis. Thus, the court found that the clinical trials “may serve to negate a public use bar with regard to the inventions claimed in the more specific claims of the ’723 patent.”
Rather than determining whether the invention was undergoing experimental use, courts must now determine whether an alleged experimental use negates a 102(b) public use for each claim individually.
AIPLA Response to FTC’s Patent Report
The AIPLA has issued a response (pdf) to the FTC’s October 2003 patent law report (pdf). Here are some highlights of the report:
The AIPLA
1) Agrees that a post-grant review process may help enhance patent quality;
2) Opposes reducing the presumption of validity associated with an issued patent;
3) Sees no need for any legislative change regarding the suggestion for combining prior art references;
4) Supports additional USPTO funding;
5) Strongly opposes increased use of PTO Rule 105 information requests;
6) Skip for now;
7) Agrees with an 18-month publication rule for all pending patent applications;
8) Supports prior user rights in use before the effective filing date.
9) Strongly supports requiring written notice of infringement or deliberate copying of the patentee’s invention, knowing it to be patented, as a predicate for liability for willful infringement; and
10) Questions whether economic analysis should be applied in patent law decisionmaking.
(Thanks for Dennis Gregory for the update.)
Berkeley’s IPblog has been covering patent reform issues. The NRC is also urging patent reform.
Smithkline Beecham v. Apotex (Paxil)
Smithkline Beecham Corp. (SKB) v. Apotex Corp. (Fed. Cir. 2004)
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(Figure shows IR spectrum for Paxil) |
Always controversial Judge Richard A. Posner of the 7th Circuit sat as the district judge in this case. His outcome was preserved on appeal, but only after two of his holdings were reversed. This is a very well written, interesting opinion by Judge Rader. If you only read one every three-months, this should be it.
Simplification: The case involved PHC anhydrates (without water) and PHC hemihydrates (some water). In the 70’s PHC anhydrates were invented in the UK. In 1984, SKB invented PHC hemihydrates and eventually patented a PHC hemihydrate compound. (U.S. Patent No. 4,721,723) In 1998, Apotex filed an ANDA to market a prior art PHC anhydrate.
The holding is simple: 1) SKB’s clinical trials that occurred more than one year prior to filing are a public use under §102(b). The clinical trials were not a form of experimental use because the trials were experiments of the medical usefulness of the claimed compound (a PHC hemihydrate) and did not reflect upon the structure or ability to enable the claimed compound. 2) There is no room for a policy-driven inquiry during claim construction. Posner erred in adding a “commercially significant” limitation into the compound claim.
The most interesting aspect of Posner’s opinion was left for another day as moot. In his opinion, Posner created a new equitable defense to infringement that would bar enforcement of a patent when the patentee’s own conduct significantly inhibits non-infringing practice of the prior art. In this case, Apotex’s ANDA request involved making a prior-art PHC anhydrate. SKB argued that after 1984, the environment became seeded with hemihydrate crystals, and that it was no longer possible for Apotex to make PHC anhydrate that would be free of infringing hemihydrate. Under Posner’s new defense SKB would be estopped from enforcing its patent because its conduct (manufacturing hemihydrates and seeding the environment) had effectively eliminated Apotex’s ability to practice the prior art.
There is much more to this opinion including a thought provoking concurrence by Judge Gajarsa.
Read Part II, Part III, and part IV.
Here is a link to Judge Posner’s Opinion. (Thanks Howard Bashman)
Scanner v. ICOS Vision Systems
Scanner Technologies Corp. v. ICOS Vision Systems Corp. (Fed. Cir. 2004)
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(Figure shows lens, mirrors, camera, ect.) |
In a standard claim construction case, the Federal Circuit vacated a grant of summary judgment in an infringement case involving technology for inspecting electronic components. (U.S. Patent No. 6,064,756 and 57). The lower court found that “comprising . . . an illuminating apparatus” was limited to a single apparatus, while the appellate court held that the phrase would include one or more.
Update: April 29, 2004. Although ICOS Vision Systems lost the appeal, their press release indicates that they may still have a good case.
Anton DeProft, president and chief executive officer of ICOS Vision Systems, commented, “We are disappointed with this decision, but note that the ruling was on a very narrow issue of claim construction, and involved a relatively limited number of systems we sold. We continue to believe that we do not infringe any valid patents of Scanner Technologies and intend to continue to vigorously defend our rights.”
Patent Related Legislation
Congressional bills and floor proceedings are captured in the Library of Congress – Thomas service (“in the spirit of Thomas Jefferson”). Click here to search for recent legislation involving patents.