Patent Law Blog (Patently-O)

Xechem v. University of Texas

Xechem v. University of Texas (Fed. Cir. 2004) (03-1406).

Xechem brought several claims against the University of Texas that were dismissed after the University asserted Eleventh Amendment and state immunity from suit. The issue on appeal is whether the University is subject to suit in federal court to obtain correction of inventorship in the patents flowing from a collaboration between Xechem and the University. (US-5877205-A). The Federal Circuit affirmed the lower court's dismissal based on Supreme Court precedent.

Comment: In this case, the court (Newman, J.) seemed to almost go out of its way to emphasize the strong points of Xechem's argument -- giving an indication that it would, but for Supreme Court precedent, refuse to grant immunity to the university.  I would predict that this case will be granted a Writ of Certiorari.

-- Dennis Crouch

Federal Circuit: DMCA does not create a new property right for copyright owners

Chamberlain Group v. Skylink Technologies (Fed. Cir. 2004).

In a well reasoned opinion, the Federal Circuit (GAJARSA) affirmed a district court's dismissal of a suit arising under anti-trafficking provisions of the Digital Millennium Copyright Act (DMCA).

The DMCA does not create a new property right for copyright owners.  Nor, for that matter, does it divest the public of the property rights that the Copyright Act has long granted to the public.  The anticircumvention and anti-trafficking provisions of the DMCA create new grounds of liability.  A copyright owner seeking to impose liability on an accused circumventor must demonstrate a reasonable relationship between the circumvention at issue and a use relating to a property right for which the Copyright Act permits the copyright owner to withhold authorization-as well as notice that authorization was withheld.  A copyright owner seeking to impose liability on an accused trafficker must demonstrate that the trafficker's device enables either copyright infringement or a prohibited circumvention.  Here, the District Court correctly ruled that Chamberlain pled no connection between unauthorized use of its copyrighted software and Skylink's accused transmitter.  This connection is critical to sustaining a cause of action under the DMCA.  We therefore affirm the District Court's summary judgment in favor of Skylink.

This case involved electronic garage door technology with a "rolling code" to encrypt signals transmitted signals.  Skylink distributes a universal remote that can decode the encrypted rolling code.  In an attempt to control the aftermarket in remote control units, Chamberlain sued.

The court's basic premise is that an element of a DMCA cause of action is an underlying copyright violation -- without such a violation, there can be no remedy.

Updates: According to Ernest Miller, the court rescued the DMCA from "one of its most absurd aspects." He is still concerned, however, that the Act, even as narrowly interpreted, will continue "stifling creativity and innovation." More on the story from copyfight.

Federal Circuit: Disclosure of only a single embodiment does not result in disavowel of claim scope

Home Diagnostics v. LifeScan (Fed. Cir. 2004) (03-1370).

After construing the claims in this patent infringement lawsuit, the Northern District of California Court held that Home Diagnostics' (HDI) blood glucose meters do not infringe LifeScan's patent on the use of reflectance to determine blood glucose concentration.  (U.S. Patent No. 6,268,162).

On appeal, LifeScan argued that the lower court's claim construction should be overturned.  Specifically, LifeScan argued that the district court overlooked "the accepted contextual meaning" of the method of stopping a measurement period and unduly limited terms to those disclosed in a preferred embodiment.  HDI argued that any broader interpretation was disavowed by LifeScan when they disclosed only a single embodiment.

The Federal Circuit agreed with LifeScan, following their own precedent that disclosure of a single embodiment "does not mean that the patent clearly and unambiguously disavowed other embodiments." 

Reversed-in-part, Vacated-in-part, and Remanded

Paintball Patent Infringement: Smart Parts' Patent Lacks Proper Inventorship

Smart Parts v. WDP (D. Oregon 2004)

In a patent infringement suit over electropneumatic paintball guns, an inventorship controversy arose. Smart Parts contends it is the sole owner of U.S. Patent No. 6,474,326. Dr. Edward Hensel, a former investor, claims to be a co-inventor. Hensel, now acting on behalf of WDP, provided evidence that he designed various elements of the patented invention - namely the electrical timing circuit and bolt action control. In addition, Hensel created a working model in his home. The court agreed that Hensel should be at least a co-inventor and granted summary judgment to WDP on the issue of inventorship.

Links:
Opinion;
Dale Ford's Commentary

-- Dennis Crouch

Handcuff Patent: Nike and Marshall Gobuty

Marshall Gobuty (MGI) has reportedly sued Nike Inc. for infringing MGI's patented "handcuff" technology.  According to USPTO's office of assignment recordation, MGI owns three patents on this type of hand-covering apparel.  (e.g., U.S. Patent No. 6,035,441).  The patents claim priority to a 1995 application that is now abandoned.

Links:
Complaint;
WSJ article providing background.

Claim term "substantially" is approximate

Dana Corp. v. American Axle  (Fed. Cir. 2004) (not citable as precedent).

In a patent infringement suit, the district court granted summary judgment of non-infringement to the defendant, holding that no reasonable jury could find that the defendant's driveshaft technology infringed plaintiff's patents.

The Federal Circuit vacated, finding that the district court incorrectly ignored the claim phrase  "substantially uniform wall thickness."  According to the Appellate Panel, the term substantially allows for variation in wall thickness.

VACATED and REMANDED

PTO Board Places Enablement Burden on Examiner

Ex parte FALSAFI (BOARD OF PATENT APPEALS AND INTERFERENCES) (2004) (Unpublished)

During prosecution of their patent application for a new dental cement composition, the applicants added the term "about" to modify an upper concentration range. The Examiner rejected addition of "about," arguing that the broadened claims were not enabled.

The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. Extending the claimed range beyond the range described in the specification is not enabling and is new matter.

On appeal, the BPAI overturned the Examiner's rejection, holding that the Examiner had not "met the required burden of proof for a rejection based on lack of enablement."

The claims are directed to a dental composition and nothing in the specification indicates that minor differences in concentration render the composition unsuitable. The Examiner simply has provided no basis for the conclusion that one of ordinary skill in the art would not have been able to make the dental compositions at the slightly higher levels of the claims, if, indeed, the upper levels are outside the ranges discussed in the specification.

LaundraPak Success

In another solo-inventor success story, fellow tiger Jeremy Kestler has turned his invention into a successful business. The LaundraPak hangs over a door and can be carried on your back to the laundry room. (U.S. Patent No. 6,729,519). As students are returning to college and law school, I’m sure that sales will be booming. Jeremy has a 6-minute time-slot on QVC to get his message out. (Between 6:30 and 7:00 on Tuesday, August 31, CTD).

More on Rational Ignorance at the Patent Office

Professor Mark Lemley has promoted an idea of “rational ignorance” at the patent office. In his now famous article, Lemley argues that patent examiners should not attempt to completely search all prior art because such searches would be too expensive. Thus, according to Lemley, the patent office should issue patents even when there is a substantial likelihood that prior art could be found by mounting a more thorough search. Because the vast majority of patents are never litigated, Lemley argues that good cost saving measure is to perform a minimal search during patent prosecution and delay a more complete search until the time of litigation (if any).

In their recent article Professors Ghosh and Kesan take issue with Lemley’s results. Although they agree with proposition that the “USPTO cannot be omniscient,” Ghosh and Kesan question Lemley’s empirical bases.

But we question his basis for determining how much the USPTO should be expected to know and not know. This inquiry rests on an assessment of the social benefits of patents, not just on the private decision of the USPTO and its examiners. We would agree with Professor Lemley that simply devoting more time to patent review is not the solution. But Professor Lemley frames the debate as a choice between administrative restructuring and more extensive judicial review. He opts for the latter because so few patents are actually litigated, and therefore the benefits from reduced litigation are not justified by the increased costs in administrative review. We contend that such an argument ignores (in neither a rational nor an optimal way) the benefits of a patent system. It is far from clear that more extensive judicial review is more effective than some restructuring of the USPTO in terms of more careful scrutiny or more rigorous assessment and accumulation of the prior art. The judicial option is more dubious in light of the USPTO’s mandate of promoting progress and its practical purpose in resolving the revelation and appropriation problem. Professor Lemley provides an assessment of the private and social costs without proper attention to private and social benefits.

What Do Patents Purchase?: In Search of Optimal Ignorance in the Patent Office, with S. Ghosh, 40 HOUS. L. REV. 1219 (2004).

Conclusions: Improved prior art searching at the patent office can be accomplished through a combination of improved information systems and increased funding for Patent Examiners. There is certainly an optimal limit to searching by the patent office. However, we have been given no indication that the limit has been reached.

Update: LB Ebert has more criticism of Lemley here.

Federal Circuit: Lifestream Diagnostics v. Polymer Technologies

Lifestream Diagnostics v. Polymer Technologies (Fed. Cir. 2004) (unpublished opinion).

Lifestream sued Polymer Tech for alleged infringement of its patent on HDL cholesterol testing equipment.  (U.S. Patent No. 5,135,716).  After conducting a Markman hearing, the district court awarded a judgment of noninfringement to Polymer Tech.

On appeal, the Federal Circuit reversed in part.

We hold that reliance by the Patent Office upon arguments mae by the patentee during prosecution is not necessary to find argument-based estoppel.... Because we reverse some of the district court's claim construction, we vacate the court's judgment of noninfringement and remand.

New Patent Fees Announced for FY 2005

In a final rule published today, the U.S. Department of Commerce (USPTO) adjusted the patent fees for fiscal year 2005.  (69 F.R. 62604-06).  The new fees go into effect October 1, 2004.  According to the Patent Office, this increase simply reflects an inflationary increasing that is reflected in the Consumer Price Index (CPI).

As a note, legislation is still pending that would dramatically alter fee amounts and procedures (H.R. 1561 and S. 1760).  If the legislation is enacted into law, the Office would likely make a mid-year shift in in assessed fees.

FY 2005 Patent Fee Table	Fee*
Filing a non-provisional application. Extra independent claims	$790 $88
Issue fee	$1,370
Maintenance fees: Due at 3 1/2 years Due at 7 1/2 years Due at 11 1/2 years	$940 $2,150 $3,320
* Fees for small entities are 1/2 the listed fee.

EOLAS: W3C Submission Based On Prior Art Submitted by Microsoft?

An anonymous reader passed along some information regarding the Reexamination of the Eolas Patent. Apparently, the original reexamination plea by Tim Berners-Lee's plea did not contain any new prior art. Rather, the parties involved (Microsoft, et. al.) had provided the USPTO with the same prior art weeks before Berners-Lee's W3C submission. Download Microsoft's Original Submission (PDF). Download W3C Subsequent Submission (PDF).

NOTE: I obtained these documents from the USPTO, so they are authentic (but truncated). However, I have not yet compared them to determine the degree of similarity between the Microsoft submission and the W3C submission. -- DC

Read more about Eolas here and here.

Update: Slashdot article.

Update II: Another anonymous reader sent me this e-mail (edited) that discusses the references cited by the examiner and a possible response

Dear Mr. Crouch

I have read the Office Action issued in the Eolas reexamination proceeding. The rejection is based mainly on the following two references:

Reference 1: Ragget I and Ragget II teach embedding objects in a hypermedia documents. The objects are first processed by invoking an external application, and then displayed within the hypermedia browser. Just as in the Eolas Patent, Ragget teaches embedding foreign objects in a hypermedia document, which are processed by an external application. Also, just as in the Eolas Patent, the foreign objects are displayed within the browser window, as if being part of the hypermedia document. However unlike the Eolas Patent, in Ragget, once the objects are imported into the document, the user cannot interact with objects, or with the external application.

Reference 2:Toye teaches a browser (i. e. "notebook") which displays hypermedia documents. The hypermedia documents in Toye can reference external foreign "interactive objects", which are processed by external applications. A browser displays the foreign objects in "virtual windows". If a user wishes to modify and interact with an object, he selects the displayed object, which invokes an external application for processing the foreign object. As in the Eolas Patent, Toye discloses that a user can interact with the object that is displayed in a separate window. However in contrast to the Eolas Patent, in Toye, the external object is not displayed in the same window of the browser program.

The Rejection: The examiner rejected the Eolas claims by arguing that one skilled in the art would have modified Ragget to include embedding in the browser window the interactive objects of Toye.

Possible Response: A very simple refute of the rejection would be as follows. In the Eolas Patent, the interaction with the external program is "via interprocess communications between the browser and the application". (I.e., in Eolas, communications are routed via the browser).  Toye does not teach this type of routing. Rather, in Toye if a user wants to interact the object, he would need to click on the object, which would "restart" the external application and allow the user to modify the object. Toye provides the analogy: "The functionality is similar to opening a file using the Macintosh Finder and automatically invoking the appropriate application for processing the file". Thus in Toye the user's interaction with the application is only by "restarting" and launching the external application, and then interacting directly with the external application. In contrast, in the Eolas Patent, the interaction with the embedded object does not require the launching of the external application, rather it’s achieved via "interprocess communications between the browser and the application".

ps. Thanks, for a very interesting and informative Blog.

Anonymous Emailer

Research Reveals Patent Grant Rate of 75%

The past few years, several researchers have delved into patent statistics to try to determine how likely it is for a patent application to result in an issued patent.  Figures have ranged from 62% (USPTO Statistics) to 97% (Quillen).  A middle of the road statistic of 75% has also been proffered by Robert Clarke of the USPTO. 

In a recent article (Chicago-Kent Journal of Intellectual Property), Lawrence Ebert discusses the various results and concludes that Clarke's 75% estimate is the most reliable because it avoids a double-counting flaw associated with Quillen.

Conclusion: Given no knowledge about the particular invention, a patent application has a 75% chance of resulting in a patent on the invention.

Eolas browser patent fight goes into new phase (Tribune)

Today's Chicago Tribune (subscription) has a nice article on the Eolas case by reporter Barbara Rose.  Most interestingly, her reporting does not fall in line with the trendy headlines like "Microsoft Wins Again," "Two Strikes for Eolas," and "USPTO Close to Rejecting Plug-in Patent."  Rose correctly notes that the Examiner accepted Eolas arguments that prior art submitted by WC3 did not invalidate the patent at issue. 

Doyle's attorney, Martin Lueck, said Eolas and the University of California are "very pleased" that the examiner accepted their arguments.

The examiner wrote that Eolas' rebuttal to his office's previous rejection of the patent's claims "has been fully considered and is deemed persuasive."

Eolas is not out of the water -- the Patent Examiner was able to discover three more references and argue that the combination of those references rendered the Eolas patent obvious.  Eolas must now respond to this new rejection. I was quoted in the article as saying that Eolas is in a "fairly good position." 

-- Dennis Crouch

Fair-Use: Scientific Research Exception?

7th Circuit Judge Richard Posner is writing Larry Lessig's Blog for the rest of the week. In his latest post, Judge Posner outlined a proposal for expansion a fair-use exception for patent law. Specifically, he and Professor Bill Landes have promoted the concept of allowing unlicensed use of scientific research tools by researchers who have no plans to patent their results.

Landes and I advocate an expansion of the patent fair-use principle to allow scientists to use patented research tools (such as the oncomouse) without license--provided the scientists aren’t allowed to use the tools to produce their own patented products!

Their monograph (The Political Economy of Intellectual Property Law) is available as a free download. (Link)

Tribune Calls For a Sober Discussion of Patent Law

Chicago Tribune Columnist Steve Chapman is hoping that presidential debate will quickly move from Vietnam to Patent Law:

From listening to both sides, you'd think Kerry and President Bush were running for trustee of VFW Post 836. Though the differing war stories may be endlessly fascinating to anyone who served in Vietnam, or anyone who strove heroically to avoid serving in Vietnam, the rest of us would rather hear the candidates recite from a volume on patent law. (Tribune -- Free Subscription).

Read the Onion.

Patent Office to Disconnect Voice Response System

The USPTO has announced its plans to disconnect the voice response system (VRS) that provides automated deposit account information.  The PTO Office of Finance website was recently upgraded and now provides detailed patent maintenance fee information that was only available on the VRS (e.g., maintenance fee payment history information, current entity status, payment due dates, etc.).

The existing VRS hardware and software have become increasingly obsolete and subject to downtime. As the same information provided on the VRS can now be obtained at the Office of Finance website, the USPTO will be disconnecting the VRS phone numbers (703-306-4227 and 4228, 703-308-5036 and 5037, 703-308-5392 and 5393) effective September 24, 2004.

Link.

USPTO Releases PatentIn 3.3

The USPTO has released a new version of its PatentIn program for sequence listings (Version 3.3). According to the patent office announcement, the new version offers easier sequence skipping, sequence type conversion, better database access, and better data validations.

USPTO Announcement.
Software Download (free).

PatentIn is a computer program designed to expedite the preparation of United States Patent and Trademark Office (USPTO) patent applications containing nucleic acid and polypeptide sequences.  The program is designed to facilitate the creation of sequence listings for inclusion in patent applications sequences. It accepts data about the sequences, validates the data, creates a sequence listing file and a mechanism for printing out and saving to removable medium for submission.

(Mark Chael provided the link).

USPTO: Inter Partes Reexaminations

Acushnet, the maker of Cobra golf clubs and Titleist balls has requested an inter partes reexamination of Taylor Made Golf Company's patent no. 6,623,378.  In the proceedings, Acushnet will argue that Taylor Made's golf club patent should be held invalid over prior art.

Starting Industrial has also requested an inter partes reexamination of Kioritz Corporation's patented rope recoil starter for an internal combustion engine (U.S. Patent No. 6,588,390).

Link.

 

 

Federal Circuit: A hairbrush has no more relation to a toothbrush than does hair resemble teeth

 

In re Alberto Lee Bigio (Fed. Cir. 2004)

Bigio's patent application claims a hair bursh with an "hourglass configuration for both the bristle substrate and the overall bristle array."  (Patent Application Serial No. 09/451,747).  After receiving obviousness rejections from the Examiner and the BPAI, Bigio pursued his claims at the Federal Circuit. Some of the cited references were designed for use on animals rather than human hair, and Bigio argued that they should not apply because non-human hair brushes where excluded from the patent scope by language in the specification.

[T]he Board rejected Bigio's interpretation of "hair brush" as limited to brushes only for scalp hair.  Instead, the Board broadly construed "hair brush" to encompass "not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair)." 

On appeal, the Appellate Panel (RADER, J.) affirmed, finding that the Board correctly declined to import limitations on terms from the specification.  Next, the Panel found that a toothbrush was an analogous art -- and thus could form a basis of an obviousness rejection.

[I]t is necessary to consider ‘the reality of the circumstances’ – in other words, common sense – in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.”  In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) [].  Accordingly, the examiner and the Board must consider the “circumstances” of the application – the full disclosure – and weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor. ...

[T]he Board applied the test for analogous art in keeping with the counsel of this court's predecessor:  "The differences are mere change of size and substitution of material of the most obvious kind, on a par with the differences between a hairbrush and a toothbrush."  In re Wolfe, 251 F.2d 854, 856 (CCPA 1958). Thus, on this record, this court affirms the findings of the Board and upholds its traditional tests for determining the scope of prior art analogous to the claimed invention.  

In Dissent, Judge Newman argued that the toothbrush should not be considered a 103(a) reference.

The toothbrush art is not analogous to the hair brush art.  Bigio's patent application is directed to a hair brush, and his claims are limited to a hair brush. 

Newman concluded with the money quote: "A brush for hair has no more relation to a brush for teeth than does hair resemble teeth."

 

 

EOLAS Reexam Office Action

For those who are interested in the Microsoft Case, here is a link to the Office Action rejecting all ten of Eolas' claims under 103(a) for obviousness.  The rejection is based primarily on references from Berners-Lee and Raggett.  The Office Action appears well reasoned and nicely written.  I suspect that the Patent Examiner (Andrew Caldwell) was given much more time to research and write this OA is than the norm.

Links:
U.S. Patent No. 5,838,906
ZDNet Article by Paul Festa

Download eolas_office_action.pdf

Update: After a reader e-mailed, I looked into the case a little more. Although I am not completely familiar with the case, the headline of the OA could be "Eolas wins Round I of Highly Anticipated Re-Examination." In the most recent OA, the Examiner accepted Eolas' argument as to the initial ground for rejection -- thus, according to the Examiner, the combination of references cited in the original application do not render the patent obvious. Now, in Round II, the Examiner has cited a new set of references. As you may know, this type of back-and-forth is common in patent prosecution.

Federal Circuit: Koito Manufacturing v. Turn-Key-Tech (Patent Case)

 

Koito Manufacturing v. Turn-Key-Tech (Fed. Cir. 2004) (PDF).

 

In February 2002, Koito brought a declaratory judgment action against Turn-Key, requesting that Turn-Key's patent covering an injection molding technique be declared invalid, unenforceable, and not infringed. (U.S. Patent 5,045,268). The Jury issued a special verdict finding the patent invalid for lack of enablement, written description, and the addition of new matter. Additionally, the Jury found that the patent was not infringed and that several claims were anticipated and obvious. After the verdict, however, the district court judge granted in-part Turn-Key's JMOL.  On appeal, the Federal Circuit affirmed-in-part and remanded.  The Appellate Panel held that Koito had not met its burden of showing non-enablement, lack of written description, impermissible new matter, anticipation, or obviousness.

 We affirm (1) the jury’s verdict that Koito did not infringe the ’268 patent and (2) the district court’s grant of a JMOL with respect to the jury’s finding that the ’268 patent was not enabled, did not meet the written description requirement, and impermissibly added new matter.  However, we vacate the district court’s denial of Turn-Key’s JMOL with respect to anticipation and obviousness.  On remand, the district court should evaluate the evidence proffered by Koito ... to determine whether the jury’s verdict of anticipation and obviousness was adequately supported.

Affirmed-in-part, Vacated-in-part, and Remanded.

 

Update:

The unanimous decision, which was returned by a three-judge panel on Monday, August 23, upheld an April 2003 jury verdict in the same case.  As in this case, the court found that the manufacturing process Koito used to mold plastic tail light lenses in no way infringed on a patent for another process that was held by Turn-Key-Tech. (LINK)

Court: FDA's Role is Not to Analyze Patent Claims

Alphapharm PTY v. Tommy G. Thompson (Secretary of HHS) (D.D.C. 2004) (CA 03-2269).

 

By Mark Chael

Recently, the District Court in Washington, D.C. agreed with the Federal Circuit, the Fourth Circuit, and a District Court in Maryland by determining that the listing of patents in the Orange Book by the Food and Drug Administration (FDA) is merely “a ministerial act” and that the Hatch-Waxman Act does not require the FDA “to police the listing process by analyzing whether the patents listed by NDA (New Drug Application) applicants actually claim the subject drugs or applicable methods of using those drugs.”

 

In a case captioned, Alphapharm PTY Limited v. Tommy G. Thompson, the court reasoned that substantive patent analysis is beyond the expertise of the FDA and is a function they are not mandated to perform.  Rather, substantive patent analysis is better left with the U.S. Patent and Trademark Office. The function of the FDA, on the other hand, is to assure the safety and availability of useful pharmaceutical compounds.  The laws and regulations that govern the FDA, in particular those laws and regulations that govern the listing of patents in the Orange Book, “commit the resolution of disputes between ANDA (Abbreviated New Drug Application) applicants and patent holders regarding the validity or correctness of the listed patent information to actions between ANDA applicants and patent holders, rather than to FDA action.”

Note: This is the first post by patent attorney Mark Chael, PhD.  Mark's prior research in biochemistry, molecular biology, and cellular biology make him well equipped to understand the intricacies involved in biotech and pharmaceutical patents. He is an associate at the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff in Chicago. [Brief Biography]

Method of Buying a House

Brian Hastings recently received a patent for his real estate business method that would push the real-estate agent's commission to the home buyer. (U.S. Patent No. 6,751,596). His story is covered in this NYTimes article.

ITC Issues Order to Stop Importation of Unlicesed Viagra Imitations

In the Matter of Certain Sildenafil (International Trade Commission) (Inv. No. 337-TA-489).

Pfizer brought this complaint against 15 companies that were importing forms of Viagra (sildenafil citrate) that infringed its patent.  (U.S. Patent No. 5,250,534).  In its decision, the ITC issued a general exclusion of such importation.  The Commission found that the general exclusion was necessary because of the difficulty in identifying the source of the infringing products and because of the ease that sellers can mask or change their identity by operating over the Internet.

Pfizer has demonstrated that suppliers of infringing products could readily mask their identity or be replaced by other suppliers. Further, Pfizer has shown that there is a pattern of violation of section 337 and that it is difficult to identify the source of infringing products. As Pfizer has noted, eleven defaulting respondents have been found to be in violation of section 337. Pfizer has also shown that it is difficult to identify the source of infringing products, many of whom deal directly with U.S. customers over the Internet and can readily mask or change their identity.

Further, the Commission considered it important that Pfizer has established a strong market for its product and that foreign manufacturers can easily copy the pharmaceutical.

Comment: A General Exclusion Order is a broad remedy issued by the ITC that is directed to any article that infringes the patents-in-suit, rather than just those of the named respondents. Therefore, the exclusion applies to parties that were not part of the ITC proceedings. 

Download PDF of Decision.

Lessig Guest Blogger: Judge Richard Posner

Seventh Circuit Judge and University of Chicago Law School Professor Richard Posner is slated to guest host Larry Lessig's blog over the next week (Aug 23-27). Upon meeting Judge Posner, you would not immediately guess that he is one of the most prolific legal writers (even more than Grisham) as well as perhaps the most cited legal scholar ever.

(Shapiro, Fred R, 2000. "The Most-Cited Legal Scholars," Journal of Legal Studies, University of Chicago Press, vol. 29(1), pp. 409-26).

Face-to-face, Posner is humble, polite, and sincere. In his books and opinions, he is often Darwinian. I'm sure his posts will be excellent. Check them out.

SRAM loses patent appeal

SRAM Corp. v. AD-II Engineering, Inc. (Fed. Cir. 2004) (not precedent).

In the Northern District of Illinois, SRAM sued AD-II for infringement of its patented rotatable grip technology. (U.S. Patent No. 5,662,000).  The district court granted summary judgment of infringement holding that "there is simply no question that the notches on the AD-II device serve the same function (engaging the spring) in the same way (through rotation of the grip) to achieve the same result (releasing or pulling on a cable and shifting derailleur gears)." 

On appeal, AD-II argued that SRAM had disclaimed coverage over "any gear shifter having a rotatable support member," and thus SRAM's claims should not cover AD-II's products that contain such a member.  Based on amendments made by SRAM during prosecution, the Appellate Panel (BRYSON) agreed.  Reversed and remanded.

In dissent, Chief Judge Mayer argued that the amendments made during prosecution were to provide an antecedent basis for claim terms -- not to overcome prior art or obviousness type objections.  As such, no disclaimer should be found.

Grokster not liable

In an extremely well written opinion by Judge Thomas of the 9th Circuit, the appellate court found that Grokster is not liable for the peer-to-peer swapping of copyrighted songs that occurs through its file-sharing software. 

In the context of this case, the software design is of great import. As we have discussed, the software at issue in Napster I and Napster II employed a centralized set of servers that maintained an index of available files. In contrast, under both StreamCast’s decentralized, Gnutella-type network and Grokster’s quasi-decentralized, supernode, KaZaa-type network, no central index is maintained. Indeed, at present, neither StreamCast nor Grokster maintains control over index files. As the district court observed, even if the Software Distributors “closed their doors and deactivated all computers within their control, users of their products could continue sharing files with little or no interruption.” Grokster I, 259 F. Supp. 2d at 1041. Therefore, we agree with the district court that the Software Distributors were entitled to partial summary judgment on the element of knowledge. [Because knowledge is a required element of contributory copyright infringement, Grokster could not be held liable.]

NOTE: This does not mean that individual users will not be held liable for copyright infringement using Grokster.

The opinion is rather short and easy to read: Opinion in PDF format.  Give it a go. Update: More information from the INDUCE Act Blog.

Pear-to-Pear communication:

Federal Circuit: Utica Enterprises v. Federal Broach and Machine

Utica Enterprises v. Federal Broach and Machine (Fed. Cir. Aug. 19, 2004) (nonpublished opinion).

Utica sued Federal Broach for infringement of its patented metal finishing process, known as "broaching." (U.S. Patent No 6,256,857).  After construing the claims in a Markman hearing, the Michigan district court entered summary judgment of non-infringement for Federal Broach.

Utica appealed the judgment, arguing incorrect claim construction. The Federal Circuit (LOURIE, J) held that the court unduly limited claim terms, and thus vacated and remanded.  Mayer, CJ, dissented without opinion.

Law review topic

I think that the high rate of reversal at the Federal Circuit creates some special implications for patent law. Rather than going for the more extreme position on a contested issue, it may make sense for you as a litigator to propose a more reasonable approach that you think both the district and appellate courts may accept. This is especially true in areas with high reversal rates, such as claim construction. A converse of this theory may also be true -- in areas that are rarely appealed, such as discovery, a more extreme position may be more beneficial to your cause.

An analysis of these issues could make an excellent law review note topic. You could, for instance, go into game theory as well as some of the current legal practices. An author who is creative with analogies will find that many of the issues have already been examined by Becker and followers. One beneficial aspect of this topic is that, although the focus is purportedly patent law, it really crosses into any field of litigation.

A couple of other ideas that I already gave out relate to a) the recent Honeywell v. Hamilton Sundstrand case that may be taken up by the Supreme Court and b) an analysis of when academic presentations do/should constitute 102(b) anticipation as printed publications based on this recent case. In part b, perhaps you would focus on the case of a power point presentation at a two day conference.

Let me know what you find.

AIPLA Annual Meeting

The American Intellectual Property Law Association (AIPLA) has opened registration for its annual meeting to be held October 14 – 16, 2004 in Washington, DC.

This year's program promises to be an interesting one with sessions examining patent law in the Pacific Rim, the Doctrine of Equivalents, trademark dilution, Constitutional challenges to copyright, Federal Circuit decision making, prosecuting the difficult patent application, trademark fair use, licensing programs, and patent, copyright, and trademark litigation.

Jon Dudas, the ... Director of the USPTO will speak during the Friday Lunch Program. David Nimmer will address the Thursday Lunch program with a discussion of the recent accomplishments of the US Copyright Office.

In addition to the learning, AIPLA meetings always have their share of good times.

Book: Patents and How to Get One

I wrote this for the ASME Intellectual Property Community that I help facilitate.

The U.S. Department of Commerce publishes a small book titled "Patents and How to Get One: A Practical Handbook." I would recommend this book to anyone who is planing to apply for a patent. It will also give you a fairly solid foundation in the process so that you can spend time discussing real issues with your patent attorney rather than reviewing the legal background. The best part -- the book is $4.95 and available from Amazon.com.

The ASME Communities of Practice (CoP) is a new web-based community group that is open to both ASME members and non-members. You do have to create an account before accessing the groups, but it is all free.

FYI: ASME = American Society of Mechanical Engineers

Lichtman & Posner: ISP Immunity is too great

In a recent working paper, Professors Doug Lichtman and Eric Posner (both at University of Chicago) question the current legal policy that leaves Internet service providers "largely immune from liability for their role in the creation and propagation of worms, viruses, and other forms of malicious computer code." According to Lichtman and Posner:

In our view, such immunity is difficult to defend on policy grounds, and sharply inconsistent with conventional tort law principles. Internet service providers control the gateway through which Internet pests enter and reenter the public computer system. They should therefore bear some responsibility for stopping these pests before they spread and for helping to identify individuals who originate malicious code in the first place.

At least three factors point toward the benefit of ISP liability:

1) Often true bad actors are beyond the reach of the law.
2) An ISP has some real control over what passes through its Chunk of the net.
3) End-user self-help mechanisms are often inadequate.

Read a lengthy abstract, or request the full paper from Marjorie Holme at the Law School.

Update: Tim Wu guest at Lessig's Blog provides more comments on Doug's stand.

What we love about the Patent Office

Matthew Buchanan has a great post at his "promotetheprogress" site: 5 technology features I love about USPTO, and 4 ideas for improvement. 

Poster Presentation at Conferences Constitutes 102(b) Printed Publication

In re Klopfenstein and Brent (Fed. Cir. 2004) (three day poster presentation at academic conference without any paper distribution or indexing was a printed publication under 102(b)).

More than one year prior to filing their application, the inventors of a new method of peparing foods using extruded soy fiber presented a poster presentation at two academic conferences (for a total of less than 3 days).  No copies of the presentation were distributed.  The Patent Examine rejected the claims as anticipated by the prior publication.  The applicants did not dispute that the presentation fully disclosed the invention.  Rather applicants argued that the presentation was not a prior art publication under 35 USC 102(b).

The only question in this appeal is whether the Liu reference constitutes a "printed publication" for the purposes of 35 U.S.C. § 102(b).  As there are no factual disputes between the parties in this appeal, the legal issue of whether the Liu reference is a "printed publication" will be reviewed de novo.

The Appellate Panel affirmed the rejection holding that  distribution or indexing is not required of printed publications. 

The reference itself was shown ... to members of the public having ordinary skill ... Those members of the public were not precluded from taking notes or even photographs of the reference.  And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed-particularly given the amount of time they had to copy the information and the lack of any restrictions on their copying of the information.  For these reasons, we conclude that the Liu reference was made sufficiently publicly accessible to count as a "printed publication" under § 102(b).

New Electronic Filing and Authoring Software

The USPTO has announced improvements to its Patent Electronic Filing System (EFS).  Beginning Sunday, August 22, 2004 the Office will make available EFS-ABX version 1.1 and ePAVE version 5.1d. 

EFS-ABX is the new authoring tool used to create patent application specifications. EFS-ABX allows users to develop a patent application completely in Microsoft® Word which greatly improves the workflow of creating a patent specification over current authoring tools.

Electronic Filing Software can be Downloaded here :  <http://www.uspto.gov/ebc/efs/index.html>.

Federal Circuit: Fisher-Price v. Safety 1st

Fisher-Price v. Safety 1st (Fed. Cir. 2004) (not citable as precedent)

Fisher-Price is the assignee of several patents on baby items, such as carriers, strollers and bassinets.  (e.g., U.S. Patent No. 6,274,755).  Fisher-Price sued Safety 1st for infringement and won a jury trial.  The district court denied Safety 1st's JMOL motion on validity, infringement, and the period of damage recovery.  Safety 1st appealed.

The Federal Circuit affirmed, finding that the patents were valid and infringed.  Ironically, the only modification to the district court's order was to expand the scope of damages in Fisher-Price's favor.

Frivolous arguments over FJC patent video

Just a snippet of this case out of Iowa: Engineered Products v. Donaldson Co. (N.D. Iowa 2004)

Donaldson was found liable for infringement of Engineered Product's patent on a mechanical air filter. (U.S. Patent No. 4,445,456).  In a post trial argument, Donaldson's attorneys argued that the patent law videotape prepared by the Federal Judicial Center, which was intended to provide potential jurors with an introduction to patent law should not have been shown during jury selection.  The judge was not happy with this argument:

While the undersigned has been restrained in his ten years as a federal district court judge about characterizing any party’s argument as “frivolous,” Donaldson’s argument concerning use of the videotape is one of the rare ones for which the undersigned can find no other characterization. Zealous representation at times requires judicious determination of which arguments are worth advancing or preserving, and which are not, or the credibility of even meritorious arguments may be called into question by the assertion of meritless ones.

Donaldson announced that it intends to "vigorously challenge the judgment and will appeal the decision to the Federal Circuit Court of Appeals."  The appeal will likely be on other grounds.  The patent expired in 2001, but EPC was suing for past damages.

Invention Document Disclosure Program

The USPTO is requesting comments on its proposed Disclosure Document Program.  According to the program, disclosed documents will be preserved by the USPTO for two years after their receipt, and then destroyed unless referred to in a separate letter in a related patent application filed within the two year period. The disclosure document is not a patent application, and the date of its receipt in the USPTO will not become the effective filing date of any patent application subsequently filed.

Comments are invited on: (a) Whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) the accuracy of the agency’s estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, including through the use of automated collection techniques or other forms of information technology.

The comments must be submitted by October 18, 2004 to Susan.Brown@USPTO.gov (include "0651-0030 comment" in the subject line).

Source:

Glaxo Disclaims Allergy Patent

According to the USPTO Official Gazette, Glaxo Group has filed a disclaimer that dedicates its Patent No. 5,290,815 to the public.  The '815 patent involves a method of treating a late asthmatic reaction and reportedly covered the use of Advair Diskus and Serevent.  The patent was apparently de-listed from the Orange Book in 2003.

MPEP 1.321 provides for statutory disclaimers:

A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns.

Federal Circuit: Linear Technology v. Impala Linear and Maxim Integrated

Linear Technology v. Impala Linear and Maxim Integrated (Fed. Cir. 2004)

After losing an appeal last month, Maxim filed a request for an en banc rehearing.  Although the court denied the petition to rehear, it did issue a substitute opinion in the case.

Summary:

Because genuine issues of material fact have been raised concerning Maxim’s contributory infringement or inducement, we vacate the district court’s summary judgment of no contributory infringement or inducement of the current reversal method claims of the ’178 patent.  Because Maxim failed to raise a genuine issue of material fact, the matter of inventorship was amenable to determination on summary judgment on the undisputed factual premises.  On these premises, the district court correctly held that Vinsant was not a joint inventor of the ’178 patent.

As in the prior opinion,the court found error in the district court's claim construction.  Vacated-in-part, affirmed-in-part, and remanded.

Read the original federal circuit opinion.

Online Inventor's Forum

The USPTO has released a transcript from its on-line chat.  Here are some Excerpts:

Inventor 
Can I use an invention promotion company to help me with my invention

USPTO Expert
Yes, however you should do a thorough search of what they offer including their costs and their success rate. Be sure and get references to ensure you are working with a reputable business. Also, registered patent practitioners are available to help you. For a list of questions to ask an invention promotion company go to our independent inventor link at our website.  http://www.uspto.gov/web/offices/com/iip/data.htm

Inventor
can drawings be revised after the original non-provisional application?

USPTO Expert
Drawings can be revised as long as no new matter (additional information supported by the original specification) is added by the revision. Revision of drawings is accomplished by filing replacement drawings.

Inventor
Is there a difference in preference/priority between individual patent applicants verses corporation applicants?

USPTO Expert
Although there are reduced fees for independent inventors and small businesses, the USPTO treats all applications in the same manner regardless of the fee paid.

Inventor
Can I market my provisional patent, after I mailed the application? If not, when?

USPTO Expert
Yes, you may market your invention at any time after your file the provisional. But you could lose your patent rights if you sell or offer to sell your invention more than one year before the effective filing date of your invention. The filing date of the provisional will be the effective filing date of a subsequent non-provisional as long as the disclosure of the provisional provides sufficient disclosure for the claims of the non-provisional, but you must file a non-provisional application in order to obtain a patent.

Inventor
What should I do if the (patent) examiner misunderstands the descriptions and benefits of the invention and compares it to prior art that has nothing to do with it?

USPTO Expert
In response to feedback from previous chat sessions, this month we have decided to answer more technical questions off-line in the written transcript of this chat which will be available in about a week on our website.  You can request an interview with the examiner. This interview can be in person or over the telephone. Give the examiner some advance notice of your request so that you both can agree on a convenient time. The interview could assist you in preparing your written response to the office action. An examiner has a burden to establish a basis for a conclusion of non-patentability. Section 2100 of the Manual of Patent Examining Procedure (MPEP) offers requirements to the examiner on developing a rejection. Probably MPEP 2111+ would be appropriate to your situation. From the MPEP sections, determine what rationale the examiner was required to use when drafting the rejection. If you can develop sound arguments why the examiner’s rejection failed to follow the MPEP guidance, then you may be successful in convincing the examiner to withdraw the rejection. http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r2_2100_508.pdf

Inventor
I just want to say that the PTO is providing an excellent service to the public.

 

Federal Circuit: Power Mosfet v Siemens and Infineon

Power Mosfet Technologies (PMT) v. Siemens AG (Fed. Cir. 2004)

PMT sued Siemens for infringement of its patented technology covering a voltage sustaining layer for a MOSFET.  (U.S. Patent No. 5,216,275).  Following a bench trial, the district court found that the accused products did not infringe the '257 patent. The Appellate Panel agreed with the district court and affirmed.

Because we affirm the district court's claim construction, we must also agree with its conclusion that neither Infineon's nor ST's accused devices infringe the '275 patent.  We also find that, because a full construction of the claims was never completed prior to the district court's final judgment, the district court could not have changed the claim construction and therefore did not abuse its discretion in denying PMT's new trial motion.  Regarding Infineon's cross-appeal, we conclude that the district court did not abuse its discretion in denying Infineon's costs under either Rule 11 or 35 U.S.C. § 285.  Finally, we find that, in light of IR's representations to the district court, the district court did not abuse its discretion in denying IR's motion for costs under Rule 54(d).  Accordingly, the district court's judgment of noninfringement, its denial of PMT's motion for a new trial, and its denial of Infineon's requests for fees and IR's request for costs are all

 

Which Dictionaries are Used for Claim Construction?

Professor Joseph Miller along with James Hilsenteger have pulled together an interesting working paper discussing the Federal Circuit's use of dictionaries in claim construction. (Abstract and Article Download). They looked at all Federal Circuit cases since 1995 and tallied the use of dictionaries. Findings:

1) General purpose dictionaries are much more popular than technical dictionaries (more than a 2:1 ratio).
2) Webster's Third International is the most popular dictionary (25% of total).
3) Use of dictionaries appears to vary widely according to the members of each Appellate Panel (Miller provides a nice table in the appendix).

Finally, the authors propose a rule change that would "require that every patent applicant put her dictionary selections (general purpose and technical) on the record during examination, and that any resulting issued patent state the applicant's dictionary selections on its face."  According to the paper, this requirement would help to strengthen the public notice function of patents.

Comment: Interestingly, I was discussing a similar proposal with another attorney last week. We were thinking of scenarios where it would be in the Applicant's best interest preset the dictionary to be used. For instance, linking your terms to a dictionary will result in well defined terms that are cheaper to litigate. However, many patent attorneys are reluctant to completely define their terms for fear of losing some undefined scope. This complex issue may be resolved quite soon by the Federal Circuit in Phillips v. AWH.

Federal Circuit: In re WILHELM ELSNER

In re WILHELM ELSNER (Fed. Cir. 2004)

German plant breeder William Elsner filed for a plant patent on his new variety of geraniums.  After receiving a 102(b) rejection from the Examiner that was affirmed by the BPAI, Elsner appealed to the Federal Circuit.

The Appellate Panel vacated and remanded.

We agree that the publication of the (international) applications coupled with foreign sales of the plants may constitute a §102(b) bar to patentability.  However, because the record is silent on the extent to which the foreign sales were known to the public, and because the Board did not adequately address the degree to which availability of the plants through foreign sales enabled the preparation of the claimed plants, we vacate the Board’s decisions in both cases and remand for further proceedings.

Double Patenting: The End of the Terminal Disclaimer?

Ex Parte Hu (Board of Patent Appeals and Interferences, 2004) (unpublished).

In this case, Hu appealed a final rejection by an Examiner of his application for a patent on a reversible socket wrench.  Hu did not dispute that some of the appealed claims were "patentably indistinct" from claims in one of his prior patents.  However, Hu agreed to "file a terminal disclaimer."

The BPAI, however, refused to allow a terminal disclaimer.

Appellant does not cite any legal authority for the proposition that the mere offer to file a terminal disclaimer overcomes a rejection based on the judicially created doctrine of obviousness-type double patenting. We therefore uphold with the Examiner’s rejection.

This holding seems to be directly contrary to MPEP 1504.06.

Nonstatutory categories of double patenting rejections which are not the "same invention" type may be overcome by the submission of a terminal disclaimer.

Comment: One way to reconcile these two views is that Hu did not actually file a terminal disclaimer, but made a "mere offer to file" the disclaimer.  Thus, if he had actually filed the terminal disclaimer then perhaps the Board would have ruled in his favor.  Ultimately, this decision does not change any rules because it is "not written for publication and is not binding precedent of the Board."

Data capture contract

Link: According to reports, the USPTO has awarded an $876 million contract to Reed Technology and Information Services (RTIS) Inc. for "Patent Data Capture."

Under the new contract, the company will convert scientific and technical information into searchable Extensible Markup Language and image databases.... RTIS will scan and index more than 75 million pages of information in 2005 alone, company officials said. The contract supports USPTO's 21st Century Strategic Plan, which is intended to bring new technologies to bear on the agency's operations.

RTIS is a unit of LexisNexis, which is a unit of Reed Elsevier.

Public Use Evidence Required: Aspex Eyewear v. Concepts in Optics

Aspex Eyewear v. Concepts in Optics (Fed. Cir. August 12, 2004) (not citable as precedent).

Aspex sued Concepts for infringement of its patented technology that covers a magnetically attachable auxillary lens for eyeglasses. (U.S. Patent No. RE 37,545 E). The district court granted summary judgment for the defendant based on a finding of invalidity under 35 USC 102 -- finding that another person had invented the claimed eyeglasses before the critical date.

On appeal, the Appellate Panel reversed and remanded for two primary reasons:

1) drawings relied upon by the district court were not "printed publications" because there was no evidence of public availability; and
2) the testimony of prior public use (or "known ... by others") was not incontestable on summary judgment.

Software Patent Protection: A Growing Need

The importance and value of software patents continues to increase. There are several factors that weigh heavily in a company's decision to go forward with patenting.

1) Patents provide a clear signal that the company has a unique product.
2) The current market for software is huge -- proprietary positions excite investors.
3) Recently, very large damage awards have been seen in software patent cases.
4) Often companies with little or no patent portfolio are targeted for infringement suits.
5) Software patents are not only for "software companies" -- software/firmware is an integral part of most new technologies.
6) The software industry is maturing -- this means that patented technology may retain value for a longer time.
7) Small companies can obtain patents -- and level the playing field.

Link to related article.
Find a patent attorney.

Overhaul of Patent Appeal Process

The USPTO has announced a major overhaul of BPAI Patent Appeals. The look and feel of the appeal brief will be changed (e.g., it will no longer include a grouping of claims). Also, the Examiner is given more freedom in his response (e.g., she can include a new ground of rejection). The new rules will be consolidated in 37 CFR 41 and will go into effect September 13, 2004.

Link to the 62 page final order.

Update: A reader pointed out that that the the final order has some discrepencies and deserves "very close reading." For example, the description of the new Section 41.37 does not match up with the language of the new Section 41.37.

Description of the Text (p. 49963, middle column): "Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable."

Actual Text (p. 50006, right column): "A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."

Although these two statements are similar -- they have key differences. The description of the rule seems to expand much further than the rule itself.