Patent Law Blog (Patently-O)

Patent Attorneys: Ethics of Representing Out-of-State Clients

The USPTO today released a proposed rewrite of how patent attorneys and agents may represent others before the PTO.

Role of a Patent Practitioner: The new rules broadly define the meaning of "practice before the Office" to include patent preparation & prosecution, providing advice regarding patents vs. other protections, and handling petitions & appeals within the PTO. Proposed 37 CFR 11.5.

Missing from the enumerated roles are activities incident to the preparation and prosecution of patent applications. The notes accompanying the proposal spell out that these incidental roles "are no longer included in the definition" of PTO practice. The primary incidental activity is the drafting of assignments and licenses.

According to the proposal, "a registered patent agent is not authorized by his or her registration to practice before the Office to draw up a contract or to select contract forms for a client relating to a patent, such as an assignment or a license." The PTO is unsure whether merely 'causing an assignment to be executed' might be appropriate and asks for comment.

Attorneys Implicated As Well: As Russ Krajec pointed-out earlier [link], this reading of the rules would potentially impact patent attorneys as well since many represent a large number of out-of-state clients.  (Are you practicing New York law when you advise your New York client about an assignment from its New York employee that will be interpreted under New York laws? Are you a licensed attorney in New York?) 

Role of Foreign Drafters: "Nothing in this section proscribes a practitioner from employing non-practitioner assistants under the supervision of the practitioner to assist the practitioner in preparation of said presentations." According to the notes, allowed activities include patent drafting.

What is Missing: The new rules leave out (1) any CLE suggestions as well as (2) any thought of an ethical duty to ensure access to legal representation (i.e., pro bono).  I'm not a fan of mandates, but the patent bar (both attorneys and agents) is lacking in both of these areas.  (You should note that the rules package is fairly comprehensive and covers many other details of practice in addition to those mentioned above.)

I would like to hear comments on (1) how attorneys and agents deal with state-representation issues; (2) has the idea of a nationwide practice became the de facto rule; (3) are bar associations too compliant with this activity; (4) are there examples of attorneys being disciplined for out-of-court activities in states where they have no clients?

Notes & Docs:

• Any comments are due by May 29, 2007 and should be e-mailed to Harry Moatz: ethicsrules.comments@uspto.gov. (Mr. Moatz is the director of the OED). The PTO wants to find a good solution here.
• For those of you with a memory, these proposed changes are a revision of the December 2003 proposal based on the 100+ comments received from the public.
• If you leave an anonymous comment, please use a fake email address -- otherwise we can see who you are. . .
• Comparison of Proposed Rules to Current Rules
• Read the New Rules (204 KB)

Plaintiffs: Get Expert Testimony Before Summary Judgment

AquaTex Indus. v. Techniche Solutions (Fed. Cir. 2007).

AquaTex owns a patented multi-layered, liquid-retaining material used in evaporative cooling garments. Techniche is accused of infringement.

In an earlier decision, the CAFC asked the lower court to examine whether Techniche's products infringed under the doctrine of equivalents (DOE).  And again, the district court found that the DOE could not extend the AquaTex patent to cover Techniche's activities -- holding that (1) a narrowing amendment during prosecution estopps AquaTex from asserting the DOE and (2) AquaTex failed to prove that the asserted equivalent (filler layer) performs "substantially the same function in substantially the same way" as the patented method.

Prosecution History Estoppel: "The surrender of subject matter during prosecution creates a presumption that the patentee is precluded form recapturing that subject matter through the doctrine of equivalents; this presumption can be rebutted by . . . a showing that the amendment was unrelated to patentability." 

DOE is executed on an element-by-element bases, and, taking a step back, CAFC noted (for the second time in this case) that estoppel only applies if the narrowing amendment bears a direct relation to the alleged equivalent element. Here, there was no direct relationship because the amendment "was directed to a completely different claim limitation."

Thus, the district court erred in applying prosecution history estoppel

Function-Way-Result: The standard test for infringement under the doctrine of equivalents requires that each element of the asserted claim either be infringed literally or under the DOE. An element infringes under the DOE if claimed element differes insubstantially from the accused product or if the asserted element performs the substantially same function in substantially the same way with substantially the same result.

The meaning of "substantially the same" is informed both by the claim language and the specification itself. However, the inquiry "leaves no room for consideration of the patentee’s product." Here, the lower court used the patentee's description of the product on its website to determine that the function of the claimed filler layer element included hydrophobic activity.  That was an error because it shifted the focus from the patent to the product.

Evidence: Finally, for a patentee to win on DOE, it must present "particularized testimony and linking argument on a limitation-by-limitation basis" showing equivalence. The gold-standard for this evidence is the testimony of a qualified PHOSITA -- "typically a qualified expert, who (on a limitation-by-limitation basis) describes the claim limitations and establishes that those skilled in the art would recognize the equivalents."

Here AquaTex had only provided lawyer argument and generalized testimony about the accused product. The CAFC found the evidence lacking and thus that the defendant should be awarded summary judgment of non-infringement.

Notes:

• Does anyone know if expert reports had been submitted yet in this case?
• Read the case

Community Review: Volunteers?

Some of you may know that the PTO is implementing a new 'community patent review' pilot project later this spring.  Applications will be published on a website and the general public will have a chance to identify prior art and vote on its relevance to the pending application.  The public input will then be given to the Examiner to use. (The Examiner will do his own search and will not be required to use the community-identified art).

The initial pilot will be restricted to 250 volunteer applications related to software and technology inventions (TC 2100). Several companies have already volunteered their applications, including GE, HP, IBM, INTEL, M$, Oracle, and others. Some of these same companies have also volunteered employee time to help 'examine' the applications.

Volunteer applications will be quickly published (free early publication) and the public will be invited to submit prior art and commentary for four months. After that, the application will be taken out of turn and examined first. There will be a public meeting at the PTO on March 12 to discuss the pilot program.

Let me know if: (1) your client is interested in participating; or (2) you have comments on the program.  (dcrouch@gmail.com)

I see a few reasons why companies may fear participating in the program: (1) funny or erroneous patent applications may be seen as jokes; (2) the publicity may focus the public on the company's weak and potentially vulnerable patent portfolio -- something that may reflect on the quality of R&D; (3) a perception that even if the patent eventually issues, public comments such as "this patent is clearly obvious. . ." could potentially hurt a patentee later-on during litigation; (4) a patent that may otherwise pass through the PTO may be blocked because of prior art found during the community review; and (5) this deviation from the norm could lead to more expense during prosecution.

Some of these same reasons may lead other more aggressive companies or individuals to give the community review process a try: (1) the patents will receive some publicity that may improve the public's perception of the company's patent portfolio; (2) a patent that issues should be 'stronger' and more likely to be upheld in litigation -- much like a patent that has been successfully reexamined; (3) speed.

Leave your comments below regarding reasons for/against participating in the program.

Monday fun: One More for the Hopper

Quite amazing technology.  Mr. Roller's abstract reads:

Chris Roller wants exclusive right to the ethical use and financial gain in the use of godly powers on planet Earth. The design of godly-products have no constraints, just like any other invention, but the ethnic consideration of it's use will likely be based on a majority vote of a group, similar to law creation. The commission I require could range from 0-100% of product price, depending on the product's value and use.

Claim 1.

Godly powers are being used on planet Earth. For example, technology (i.e. Electronic and Medical) is being assisted by godly powers throughout the planet. Godly powers could be used prior, during, and after godly product/procedure. For example; Before--in the making of a device, like a micro-processor chip. During--in the operation of a device, like an inkjet printer cartridge. Afterwards--like gradual scar removal from breast implant surgery. A magician might perform magic before, during, and after, for any given trick ("illusion").

My question, of course, is why the PTO classified this application as an optical amplifier in Class 359? 

Credit: Patently-O reader Helen Samson (Nufern) ran across this application while scrolling through new optical patent applications.

Background Reading:

• View the Patents Application
• Roller's employment suit against David Copperfield for unlawful use if his Godly Powers
• YouTube Discusses the Lawsuit
• Podcast with Mr. Roller
• Roller's Website

Monday Fun: Warp-Drive and Branding-Energy

In Feb-06, we discussed the Worsley-Twist warp drive patent application. The Worsley-Twist warp drive does not depend upon traditional emissions of matter to create thrust.  Rather, the warp-drive creates a change in the curvature of the space-time continuum — thus allowing travel by warping space-time.  At that time, we noted that the Worsley & Twist patent application recently suffered a major setback -- with the Examiner requesting a model of the invention. Although rarely implemented, 35 U.S.C. 114 allows the PTO to "require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention." Among other rejections, the Examiner has asserted a rejection under 35 U.S.C. 101 for lack of utility — finding that the invention is inoperable.  In this case, it looks like the cost of building the model and proving utility were too much as the application appears to have been abandoned.

Volkswagen Branding-Energy

Since we have been focusing on pendency, I also looked back to the still-pending Branding-Energy patent application to see whether any action has been taken on this application that was filed in August 2003 -- still no substantive action.  Since this application has been classified in TC 705, an initial office action is expected within the next nine months.

The abstract reads:

A branding-energy amplifier for amplifying the branding-energy of the Volkswagen Beetle. Branding-Energy Amplifier established upon the principle of Node Plurality.

As explained in the specification:

If you were to see a singular Marilyn Monroe walking down the street, you probably would notice.  If, however, you were to see 88 Identical Marilyn Monroes's single filing fashionably in parade-dress parade, you would likely stop whatever you were doing and stare in exasperated amazement wondering all the while what in the world was going on. . . . By extension then, a Volkswagen beetle limousine with 88 humps, does not look the same, does not function the same, and is, in fact, not the same, as a Volkswagen beetle with 1 hump because they do not share identical Automotive DNA.

View the Volkswagen Beetle Branding Energy patent at Pat2PDF.  

Recapture: Disclaimer in Parent Must be Rescinded in Continuation

Hakin v. Canon-Avent (Fed. Cir. 2007).

Hakim sued Avent for infringing his leak-resistant drinking cup patent. After claim construction, the district court found no infringement.

The asserted patent was filed as a continuation. In the original application, Hakim argued over prior art by stating that the flexible-member opening was a "slit." When Hakim filed his continuation, he notified the examiner that the new claims were broader than those previously allowed. The Examiner then allowed the new claims without rejection.

Disclaimer in Parent: The usual rule is that "an applicant cannot recapture claim scope that was surrendered or disclaimed" even when a continuation is filed. However, "a disclaimer made during prosecution can be rescinded, permitting recapture of the disclaimed scope." In order to rescind a disclaimer, "the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited."

Applying this rule to Hakin's prosecution history, the court found that simply informing the examiner of the new broader claims was insufficient to rescind the prior disclaimer of scope.

Notes:

• Case Title: Hakim v. Cannon Avent Group, PLC, et al. (05-1398)

Prosecution Data: Continuations

In 2006, PTO relations with the patent bar were near nadir because of a proposed set of rules that would radically change the practice of filing continuation applications. Although patent attorneys generally avoid public comment, the continuation proposal led to several hundred public submissions.(n1) 

Many of the comments argued that continuations only play a minimal role in increasing pendency. Using a sample of 10,000 recently issued patents, I wanted to see whether the technology areas with the largest pendency are flooded with continuation applications. A strong correlation would indicate that the PTO was correct in its assessment that continuations are a major cause of the 'pendency crisis.'

For each technology classification, I calculated two primary statistics: (1) the average pendency of the issued patents (months from filing the application until issuance) and (2) the prevalence of continuations (as measured by the percentage of issued patents that had either one or more non-provisional parent or multiple provisional parents).

As it turns out, there does not appear to be much correlation at all.(n2) The lack of correlation is exemplified when looking at the technology areas on the extremes. For instance, there is no overlap between the top-ten-percent of classes with the highest pendency and the top-ten-percent of classes with the highest prevalence of continuations.

As can be seen in the linked Google Spreadsheet, technology areas of chemistry and drugs have the highest rates of patenting continuations. For those areas, over half of the issued patents are continuations.

 

Notes:

• Spreadsheet of Results
• Cite as Dennis Crouch, "Prosecution Data: Continuations," Patently-O, February 23, 2007.
• n1: At this point, the rules have neither been implemented nor discarded.
• n2: I suspect that with a larger sample size, a small but statistically positive correlation would be identified.

Why Does Microsoft Want Weaker Patents?

Yesterday, a reporter asked me why Microsoft, a major patent holder, is continually arguing that patents are too strong.

Exhibit A: $1.5 billion verdict for Alcatel.

According to reports, about half of the damage award is based on foreign sales under 271(f).

Microsoft v. AT&T Oral Arguments:

AT&T sued Microsoft for patent infringement and wants to collect damages for foreign sales under Section 271(f) of the patent act. That section calls for infringement of a US patent if "components" of a patented invention are supplied abroad to be combined as in a would-be infringing manner. Microsoft ships software code abroad that is then copied before being installed in an infringing manner. Microsoft argues that its actions do not satisfy 271(f) because (1) software code itself (separated from a physical disk) cannot be a component because it is not physical and (2) only copies of the code are installed. Notes from the transcript:

Patentable Subject Matter:

MR. OLSON [For Microsoft]: The '580 patent is a program, as I understand it, that's married to a computer, has to be married to a computer in order to be patented.
JUSTICE SCALIA: You can't patent, you know, on-off, on-off code in the abstract, can you?
MR. OLSON: That's correct, Justice Scalia.
JUSTICE SCALIA: There needs to be a device.
MR. OLSON: An idea or a principle, two plus two equals four can't be patented. It has to be put together with a machine and made into a usable device.

...

JUSTICE BREYER: I take it that we are operating under the assumption that software is patentable? We have never held that in this Court, have we?
MR. JOSEFFER: No, but . . . that's not relevant here . . .

...

JUSTICE STEVENS: Your time is up, but I want to ask you one yes or no question. In your view is software patentable?
MR. JOSEFFER: Standing alone in and of itself, no.

. . .

MR. WAXMAN [For AT&T]: The code is not patentable.

What is a Component:

MR. JOSEFFER [For the Government]: I think the most important point here is that the components of patented inventions do not have to be patentable. Many patented inventions are comprised of a bunch of parts where the parts themselves would not be patentable because say they were standard off the shelf parts.

MR. OLSON: Physical things must be components under 271(f) because they must be supplied from somewhere. Ideas have no physical from. They're in the air. The words used, "supplied from" tells us that it must be a physical thing combined with. Ideas don't combine with physical things to make a patented invention. Physical things do.

Scalia's Jokes:

JUSTICE SCALIA: I hope we can continue calling it the golden disk. It has a certain Scheherazade quality that really adds a lot of interest to this case.

Scared that AT&T will Control our Thoughts:

JUSTICE BREYER: But I then would be quite frightened of deciding for you and discovering that all over the world there are vast numbers of inventions that really can be thought of in the same way that you're thinking of this one, and suddenly all kinds of transmissions of information themselves and alone become components. So I'm asking you, is there any outside the computer field analogous instance where the transmission of information has itself been viewed as the transmission of a component?

Notes:

• The major trouble with Mr. Waxman's argument is that he failed to give a clear enough response that delineates software code from blueprints. I.e., why software code is a "component" of an invention while the blueprints are merely plans for how to make the invention.
• Read the Transcript Here: http://www.supremecourtus.gov/oral_arguments/argument_transcripts/05-1056.pdf

Recent Business Method Patentable Subject Matter Rejections

In a somewhat random fashion, I pulled up a few file histories for patent applications classified in Class 705 (Business Methods) to see the extent that the PTO is asserting unpatentable based on the statutory subject matter requirements of 35 USC 101. I have attached a few of the exemplary statements from PTO Rejections:

Post Lundgren:

Lundgren Contemporary:

Pre-Lundgren:

Notes:

• E.g., 20040138927, 20020095346.

Are Patents Property: Zoltek v. US

The Takings Clause of the Fifth Amendment to the US Constitution provides that the Government shall not take private property “for public use, without just compensation.”  The question now before the Supreme Court in Zoltek is whether patent rights constitute private property protectable under the Fifth Amendment.

Zoltek’s Fifth Amendment claim was denied by the CAFC and Zoltek has now petitioned the Supreme Court to hear its case. According to petitioner’s counsel, amicus briefs will be due by March 22, 2007 unless the Government requests an extension of time to file its response (something that is likely).

For many Patently-O readers, this case is a no-brainer -- just like you thought that patents came with a right to exclude . . .

[More to come in a later post] 

Notes:

• Zoltek Petition For Certiorari [PDF]
• Zoltek Petition Appendix [PDF]
• Patently-O Discussion of the CAFC Opinion
• Patently-O Discussion of the Rehearing Denial
• This case, of course, is great because it involves F22’s.

Government Contract Infringement Must Be Pursued in Federal Claims Court

Sevenson Environmental v. Shaw Environmental (Fed. Cir. 2007)

Colonie NY has a lead-contamination problem. The site is owned by the US Government, and Shaw was hired to help with the remediation. Sevenson holds several patents on methos for cleaning up waste by applying phosphoric acid. Sevenson sued Shaw for infringement, but the district court dismissed the case -- finding that the US Gov't is the proper defendant.

Shaw's contract with the US Gov't authorize shaw to "all use and manufacture" of any patented invention whose use is necessary to comply with the contract. The contract dovetails with 28 USC 1498, which provides that a patent holder's claims arising out of a a contractor's infringement accure against the US and must be brought in US Court of Federal Claims. (So long as the contractor's infringement was "for the United States" was authorized by the US).

Government Authorization: Although Gov't authorization is generally narrowly construed, the appellate panel agree that the Government had authorized use of Sevenson's patented method because Shaw's written specifications called for use of those methods and those specs formed part of Shaw's binding contract.

Holding: The lower court properly dismissed Sevenson's claims. If Sevenson wants an award, it must pursue the US Gov't in the Court of Federal Claims.

CAFC Denies Challenge to Patent Ownership

MyMail v. AOL (Fed. Cir. 2007).

Although patents assignments are registered at the USPTO, state law "governs the question of who has legal title." Despite an earlier Texas court judgment on this issue, AOL challenged MyMail's ownership of its patent -- alleging fraud.  On appeal, the CAFC sided with the patentee, finding that the earlier Texas judgment settled the matter.  This decision should be seen as contrasting challenges to patent ownership (where prior decisions hold weight) with challenges to patent validity (which can be repeatedly challenged despite prior judgments affirming validity).

Based on a claim construction of the coined term NSP, the appellate panel also affirmed the lower court's summary judgment of noninfringement.

Notes:

• MyMail Website
• Patent No. 6,571,290.

Enhanced Damages: No 'Prevailing Party' after Rule 41(a) Voluntary Dismissal

RFR Industries v. Century Steps (Fed. Cir. 2007).

RFR holds patents covering a rubberized filler used on train-tracks that run over streets. The parties had a settlement agreement in place, but Century decided to stop payment -- apparently believing that RFR's claims were "barred by the doctrines of patent exhaustion and implied license."

RFR sued.  Century answered the complaint and faxed a copy to RFR, but did not post a copy to the plaintiff.

RFR then got cold-feet and asked the court to dismiss the complaint without prejudice. Under the Federal Rules of Civil Procedure (R. 41(a)(1)), the plaintiff has a right to dismiss an action before the other side serves its answer or a motion for summary judgment.

In any event, the lower court didn't allow RFR to dismiss the case -- instead it granted Century's 12(c) motion on the pleadings (with prejudice) and awarded attorney fees.

On appeal, the CAFC reversed, finding that Rule 41 "means what it says." (applying 5th Circuit law). Because RFR had not been "served with the answer" it still had a right to dismiss its case.

So long as a plaintiff has not been served with an answer or a motion for summary judgment, the plaintiff need do no more than file a notice of dismissal to dismiss the case.

The CAFC also reversed the award of attorney fees, holding that a voluntary dismissal under R.41(a) does not result in a "prevailing party" as required by the enhanced damages statute (35 USC 285).

Microsoft v. AT&T: Unlicensed Export of Patented Software

With Microsoft's reply brief filed late last week, briefing is likely over in the battle over interpretation of 35 USC 271(f). Oral arguments will be held this Wednesday (February 21, 2007). The case boils down the following statement:

Whether, by exporting the golden masters containing machine-readable object code from which foreign replicated copies were made in foreign countries, installed overseas in foreign-made computers, and sold to foreign end users, Microsoft “supplie[d] . . . from the United States” the “components of a patented invention” in a manner that induced “the combination of such components outside of the United States.”

What is the component? Why Microsoft believes it should win on either theory of component:

1. If the component is the golden master itself, then it cannot be infringing because the golden master itself was not combined in an infringing manner as required by the statute.
2. If the component is the object code . . .  well, object code cannot be a component because it is "an idea."

As Hal Wegner recently noted in his widely-read newsletter, "It's Hardball!" At oral arguments, two former Solicitors General will face-off Theodore Olson for Microsoft and Seth Waxman for AT&T.  [Updated] Anything involving patent law at the Department of Justice goes through Daryl Joseffer and his boss Thomas Hungar. Joseffer will be given time at the arguments.

Note:

• Microsoft presumptively argues that these two suggestions for the 'component' are mutually exclusive. The do not, however, explain why both the golden master and the object code could be simultaneous components.
• I agree with Microsoft that AT&T's Moby Dick analogy doesn't sit well. . .
• All the briefs are available here.

Patent Reform: Tax Shelter Patents

On Friday, Senator Barack Obama (and former University of Chicago Law Professor) along with Senators Levin (D-Mich) and Coleman (R-Minn) filed a new bill to “stop tax haven abuse.” Included in the bill is a provision that would prohibit the USPTO from issuing patents for:

inventions designed to minimize, avoid, defer, or otherwise affect liability for Federal, State, local, or foreign tax.

The main focus of the Bill would be to “impose tougher requirements on U.S. taxpayers using offshore secrecy jurisdictions, give the U.S. Treasury the authority to take action against foreign jurisdictions that impede tax enforcement, stiffen penalties against abusers and close offshore trust loopholes.”

Please: No comments that are not about patents.

Notes:

• Press Release
• Washington Post Coverage
• Paul Caron Introduces the Bill

How Long Do I Wait for a First Office Action

Based on the USPTO’s most recent numbers on examination, I created an updated table of the average delay until a first office action is mailed from the PTO. These numbers reflect an average for each technology center as it operates today.  The 3.8 year delay in Electronic Commerce (TC 3620) means that the applications receiving first office actions during the past three months were filed 3.8 years ago on average — taking us back to early 2003.  The numbers do not necessarily reflect how long it would take for an application filed today to make it through. (Although it is perhaps one of the better estimates that we have on hand.).

Average Time After Filing Before First Office Action
Tech Center	Description	Mths		Yrs
3620	Electronic Commerce	45.4		3.8
2140	Computer networks	40.0		3.3
2130	Cryptography security	36.4		3.0
2190	Interprocess communications	35.9		3.0
2160	Database and file management/	35.0		2.9
2620	Television and TV Recording	33.5		2.8
2610	Digital Communications General	32.7		2.7
1740	Metallurgy	30.2		2.5
1610	Pharmaceutical formulations	29.9		2.5
1760	Food technology	28.9		2.4
2120	Miscellaneous computer	28.5		2.4
3730	Medical instruments	28.5		2.4
1640	Immunology receptor/ligands	27.5		2.3
2180	Computer architecture	26.9		2.2
2110	Computer architecture	26.6		2.2
1630	Molecular biology	25.9		2.2
3760	Body treatment	24.8		2.1
1620	Organic chemistry	24.1		2.0
3680	Machine elements	24.0		2.0
1710	Synthetic resins	23.5		2.0
3710	Amusement and	23.5		2.0
1750	Chemical products and	23.1		1.9
3630	Static structures	22.8		1.9
1650	Fermentation microbiology	22.8		1.9
1770	Stock materials and	22.2		1.8
3650	Material handling and	22.2		1.8
3750	Fluid handling and	22.0		1.8
1720	Fluid separation and	21.9		1.8
2890	Semiconductor Electrical	20.4		1.7
3660	Computerized vehicle	20.4		1.7
3720	Manufacturing devices	20.0		1.7
3610	Surface transportation	19.9		1.7
2820	Semiconductors and	19.7		1.6
3740	Thermal and	19.6		1.6
2830	Power generation and	19.4		1.6
2810	Semiconductors and	19.2		1.6
3670	Wells earth boring/	19.2		1.6
2870	Liquid crystals	19.1		1.6
2950	Photocopying	18.8		1.6
3640	Aeronautics	17.8		1.5
1660	Plants	16.8		1.4
1730	Glass and paper making	16.0		1.3
2900	Designs	15.0		1.2

Prosecution Data: US Priority Date to Issuance

Last week's pendency data used the application filing-date as its starting-point measuring pendency.  As a follow-on, I took the same set of 10,000 recently issued patents and obtained the earliest associated US priority filing.  As before, the average pendency for patents based on original applications was 40.4 months.  Patents that were based on a single provisional filing took about 10-months longer or 50.4 months. The 10-month difference for provisionals makes since since that is about the amount of time you would ordinarily wait to file the non-provisional.(n1) The time-in-process for continuations, CIP's, divisionals, and patents based on multiple provisionals was much large -- coming-in at 70.7 months.  Averaging these together, the average time from the earliest US priority date until issuance is just over four years (49.2 months). Medians are slightly lower than means because of the skewed nature of the data. (n2).

• n1: The average delay from provisional filing to non-provisional was 11 months (334 days).  
• n2: Skew can be seen in the histogram.

BPAI 'Informative' Opinion on Business Method Patents

I commented earlier on the continued transformation of the Board of Patent Appeals & Interferences (BPAI) from a somewhat secret organization to one that is engaging with and accountable to the public.

With the advent of publication of applications, the BPAI has become a more public body and continues to move toward the goal of providing sound decisions that both adjudicate the particular issues in question and provide further guidance to other applicants and examiners. [LINK].

Now, the Board has begun a new initiative publishing "informative opinions." While not precedential, these opinions are selected because they are thought to provide useful guidance to both Patent Examiners and Practitioners. BPAI Informative Opinions;

Ex Parte Bilski (BPAI 2006).

The only 2006 opinion on the informative opinion list is Ex Parte Bilski. Bilski is a business method patentable subject matter decision that again flips Ex Parte Lundgren. 

The Board held in Lundgren that the "technical arts" test is not a separate and distinct test for statutory subject matter. Although commentators have read this as eliminating a "technology" requirement for patents, this is not what was stated or intended.

Bilski's patent is directed at a method of managing risk at a reduced cost. The claims at issue are not tied to any physical structure; do not recite a physical transformation or any electrical, chemical, or mechanical act; and could be performed entirely by human beings without any outside aid. In its 71 page opinion, the board determined that the method was not statutory subject matter under Section 101, and prepared for a CAFC hearing:

In questionable cases, we feel that the public interest is best served by making a rejection. The Federal Circuit cannot address rejections that it does not see. . . . It would be helpful if the Federal Circuit would address this question directly.

(1) Mental Steps and Transformation: According to the Board, not every series of steps fit within the process requirement of section 101.  A section 101 process necessarily transforms some physical subject matter to a different state or thing.  A claim which can be entirely performed by a human can "be statutory subject matter if there is a transformation of physical subject matter from one state to another." The claims here did not, however, provide any transformation of matter. Since the claim does not require a computer, there is not even an "implicit transformation of electrical signals from one state to another."  The claims do recite a transformation "risk position" -- but a non-physical transformation does not count.

(2) Abstract Idea: The Board considers the 'abstract idea test' to be a 'backup' to the transformation test -- noting that "[t]here may be times where it is easier to analyze the subject matter as an abstract idea"  In this case, Bilski's claims are both non-transformative and abstract.

Claim 1 describes a plan or scheme for managing consumption risk cost in terms of a method. It is nothing but an disembodied "abstract idea" until it is instantiated in some physical way so as to become a practical application of the idea.

Furthermore, the claim is also abstract because it covers "any and every possible manner of performing the [conceptual] steps. Thus, it can also be said that the claims 'preempts' the concept in the claimed methods."

(3) Result that is Useful and Concrete and Tangible: If a method is abstract, it cannot have a concrete and tangible result because they are opposites. Concrete and tangible require "some sort of physical instantiation" that is not found here.  Likewise, although the claimed method may be useful in the business sense, "a method that has not been implemented in some specific way is not considered practically useful in a patentability sense."

Concurrence by McQuade:

The quest for a bright line test for determining whether a claimed invention embodies statutory subject matter under 35 U.S.C. § 101 is an exercise in futility. . . . Per se rules or tests, while arguably easy to apply, simply do not afford the flexibility needed to keep pace with new developments in technology and the law.

Considered collectively, these are powerfully persuasive factual indicators (not tests) that the method recited in claim 1 is, at its core, a disembodied business concept representing nothing more than a non-statutory abstract idea. That the "initiating" and "identifying steps recited in the claim are drafted as acts required to be performed is of no moment. Given the full context of the claim, these acts are nominal in nature and merely serve to superficially couch the appellants' abstract
idea in a method or process format.

Rejection affirmed.

Notes:

• Read: Ex Parte Bilski
• The case has been appealed to the CAFC and is in briefing.
• Thanks to StepBack for the tip.

Patent Reform is in the Air

On February 15, the House IP Subcommittee held a hearing on "The Case for Patent Reform." All four seats at the table called for change:

• Adam B. Jaffe, Professor and Dean, Brandeis University
• Suzanne Michel, Chief Intellectual Property Counsel, FTC
• Mark Myers, National Academy of Science (Former Xerox Exec)
• Daniel B. Ravicher, Activist, PubPat

Jaffe:

The key to more efficient patent examination is to go beyond thinking about what patent examiners do, to consider how the nature of the examination process affects the behavior of inventors and firms. To put it crudely, if the patent office allows bad patents to issue, this encourages people with bad applications to show up. While the increase in the rate of patent applications over the last two decades is driven by many factors, one important factor is the simple fact that it has gotten so much easier to get a patent, so applications that never would have been submitted before now look like they are worth a try. Conversely, if the PTO pretty consistently rejected applications for bad patents, people would understand that bad applications are a waste of time and money.

Ravicher:

Unlike tangible forms of property, such as real estate, patent boundaries are almost always poorly defined. Many patents are written in vague or obscure language, claim construction procedures are uncertain and vary from judge to judge, existing claims are hidden in the pipeline at the Patent Office, and the use of abstract terms allows patents to cover far more technology than what was actually invented. One sign of how difficult it is for people to determine exactly what a patent does and does not cover is the fact that more than a third of all district court judges, after performing a thorough analysis of a patent's claims, have their construction of those claims reversed by the CAFC.

If Federal Judges can't agree on what claim terms mean, how can we expect the average American business person or individual inventor to do so. . . . .

[I]n order to address the problem of fuzzy patent boundaries, a patent's validity should always be analyzed according to the broadest reasonable interpretation of its claims, because that is the construction of the patent that the public will generally abide by until the patent is reviewed by a court, and the currently dormant statutory prohibition against indefinite claim language should be awakened and strengthened.

Myers:

High rates of technological innovation, especially in the 1990s but continuing to this day, suggest that the patent system is not broken and does not require fundamental changes. Nevertheless [we should address] . . . consistent patent quality . . . harmonization . . . publication [of all filed applications] . . . [reducing] litigation costs . . . [and] patent thickets.

Michel [1][2]:

The [FTC] Report recommended creation of a new administrative procedure for post-grant review and opposition that allows for meaningful challenges to patent validity short of federal court litigation. Existing means for challenging questionable patents are inadequate. Patent prosecution is ex parte, involving only the PTO and the patent applicant, even though third parties in the same field as a patent applicant may have the best information and expertise with which to assist in the evaluation of a patent application.

Notes:

• I'm ignoring the HR977 that would end gene patenting because it is going nowhere. It would add the following language: `Notwithstanding any other provision of law, no patent may be obtained for a nucleotide sequence, or its functions or correlations, or the naturally occurring products it specifies.'.
• S. 316, on the other hand, may get some legs. That bill would eliminate generic reverse payments. Leahy

Prosecution Data

This morning, I pulled up 10,000 of the most recent patents to see what's going on with pendency and other issues.

Pendency: About 65% of the patents were original applications (i.e., not based on a prior US filing).  The original applications issued after an average of 40.4 months delay (3 years, 4 months).*  The remaining 35% represented continuations, CIP's, and applications based on prior provisional filings.  Those non-original applications had a pendency of just under 3 years (35.3 months).** The shortest original application pendency was 4 months (No. 7,172,439) and the longest stretched for over 13 years (No. 7,169,572).***  Chart I below shows the histogram of pendency for the whole group in 6-month buckets.

Examiner: About 63% of the applications were examined by an Assistant Examiner.  On average, the patented cases for assistant examiners took about four-months longer than examined only by a Primary Examiner.****

Foreign Priority: Unlike US Priority, a patent that claimed foreign priority did not seem to alter the expected time to issuance. About 41% of applications claim priority to a foreign patent document.  The biggest foreign locale was Japan.

Citations to Prior Art: As the PTO has reported, most patents cite fewer than 20 references. In our sample of 10,000 patents, the median number of citations was 13-14. The average number citations, however, was over 25.  That skewed average comes from a small number of patents that include a very large number of citations. Six patents issued to Shell (or a Shell shell) each cited over 1000 references and may have presented the entire history of oil drilling dating back to the 19th century. (See, No. 7,172,019). 15% of applications included 40 or more citations while 20% included 6 or fewer. The majority (64%) of the cited references were to US Patent Documents and over half of the patents cited no non-patent prior art.

Claimset Length: I also wanted to see whether longer claimsets increased the length of prosecution -- they do.  Chart II below shows pendency as a function of claimset size percentile.***** This statistic is a bit odd because it is based on the number of characters in a claimset, but the character count appears to be a fairly-good single-variable proxy for the length and complexity of a claimset.

Technology Class: The greatest predictor of pendency is likely the technology classification. There are likely two primary factors driving the measured difference between technology areas: (1) Backlog; and (2) Heightened Scrutiny. Some art units have large backlogs of patent applications waiting to be examined while others have much smaller dockets.  Since patents are examined roughly in order, a longer backlog results in longer pendency. In addition, some of those same units with large backlogs are also the ones who have instituted the second-pair-of-eyes review to ensure that the patents that issue should be issuing. This heightened scrutiny is expected to increase pendency as well. Table I shows a handful of classes and their average pendencies.

Recently issued Business Method patents (Class 705) took over five years to issue, and DNA-type patents (Class 435) were over four years.

Inventorship: Most patents list only one or two inventors. This is reflected in Chart III below. The number of inventors did not prove to have a significant impact on pendency.  One patent did list 25 separate inventors. (No. 7,169,760). That patent was, however, quite far from the mean number of inventors calculated at 2.5.

 

Notes.

• Cite as Dennis Crouch, Prosecution Data, Patently-O (February 15, 2007), http://www.patentlyo.com.
• * 95% CI 49.96 - 40.83 months.
• ** 95% CI 34.7 - 35.9 months. T-test shows difference between two sample averages at p<0.001. As can be seen from Chart I, the data is not exactly normal, but it is somewhat close. A more particular test would also factor in the skewed nature of the data.
• *** I excluded No. 7,177,516, which was filed over 19 years ago because it was held under a secrecy order.
• **** Average pendency for cases with assistant examiner was 41.4 months while the average pendency for cases signed only by a primary was 37.0 months. The difference between these averages is significant at p<0.001 using a t-test.
• ***** Error bars are shown at the 95% CI.

Cargill v. Canbra: Extensive Prosecution Increases Likelihood of Inequitable Conduct

Cargill v. Canbra Foods (Fed. Cir. 2007).

Cargill owns several patents related to more-stable fry-grease made from canola oil and sued Canbra (and others) for infringement.  The trial court found that two of the patents were invalid as on-sale before the priority date and that the other two were unenforceable due to inequitable conduct.  Cargill appealed.

A. Inequitable Conduct: A holding of unenforceability due to inequitable conduct requires two findings: That the patentee "(1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the U.S. Patent and Trademark Office."

Information is material if either (1) "there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent” or (2) the information falls within the scope of the current Rule 56. (Reprinted below). Intent is often inferred from the facts and circumstances surrounding the "bad" conduct.

A district court's determination of materiality and intent are reviewed only for clear error.

Materiality: Here the applicant failed to disclose two sets of test data that suggested a similarity between the invention and a prior art formulation. The district court found them to be "unquestionably" material and the CAFC panel agreed. In particular, the panel refuted the Cargill's good faith assertions about materiality -- reaffirming that “materiality is determined from the viewpoint of a reasonable patent examiner, and not the subjective beliefs of the patentee.”

Intent: The court indicated that there were several instances when the applicant should have brought-forth the prior art -- such as when the patentee argued on five occasions that the invention was a nonobvious change from the prior art (even though the test data showed that they were similar).

An applicant should know information is material when the examiner repeatedly raises an issue to which the information relates. . . . The repeated nature of that rejection demonstrates that the applicant should have been aware of the materiality of the omitted test data, and, therefore, the district court properly considered it as significant circumstantial evidence of an intent to deceive the PTO about the evidence relevant to the application.

The implication here: A large prosecution history increases the likelihood of an inequitable conduct finding. Finding of inequitable conduct affirmed.

Notes

• This decision was written by Judge Kent Jordan of the Third Circuit sitting by designation.
• 37 CFR 1.56 (Rule 56) reads as follows:

[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim, or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.

A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

Love Means Business at the PTO

As an avid tennis player, love means nothing to me. However, this Valentine’s Day appears to be the perfect opportunity to profile the USPTO’s newly appointed Chief of Patent Examination Policy, Deputy Commissioner John J. Love.  Commissioner Love has always been quite responsive to requests for information and explanation.  Unfortunately, this reporter failed to contact Love for this report. . .

Rumors are that the Deputy Commissioner is difficult to sway, but that you will at least know where you stand.  Previously, as the head of the business method technology center, Love was a leader who helped institute the ‘second pair of eyes’ review and other quality initiatives.  As we have seen, those quality initiatives are thought to have increased patent quality while decreasing the allowance rate.

As the Deputy Commissioner for Policy, Love is part of the high-level PTO management that includes PTO Director Jon Dudas, Deputy Director Pinkos, Commissioner John Doll, and Deputy Commissioner for Operations Peggy Focarino [LINK].

• Love’s Executive Biography
• USPTO Celebrates Valentine’s Day
• Valentine’s day 2006 saw the issuance of US Patent No. 7,000,000, a “Polysaccharide Fiber”. On Febuary 13, 2007, the number was up to 7,178,112. The ‘112 patent belongs to MathWorks and involves software for managing block diagrams.  

District Court Patent Pilot moves Forward

Darrell Issa is a retired Army captain, patentee, and a former business owner (Remember the “viper” car alarm). Mr. Issa is also a member of the House of Representatives (R-Orange County).

On January 12, the House passed Issa’s patent court pilot program:

 H. R. 34: To establish a pilot program in certain United States district courts to encourage enhancement of expertise in patent cases among district judges.

Gene Patenting; or Patenting Life

Its Patenting 101 — Patents are available for newly isolated DNA when the isolated gene is new and useful.  DNA fits well within the statutory categories of both a manufacture and a composition of matter.  And, although most genetic structures are derived from those found in nature, the isolated form is certainly ‘made by man.’

Michael Crichton agrees that genes are being patented, but argues that such patents are really really bad. Read here from today’s NYTimes Op-Ed.

YOU, or someone you love, may die because of a gene patent that should never have been granted in the first place. Sound far-fetched? Unfortunately, it’s only too real. . . .

Fortunately, two congressmen want to make the full benefit of the decoded genome available to us all. Last Friday, Xavier Becerra, a Democrat of California, and Dave Weldon, a Republican of Florida, sponsored the Genomic Research and Accessibility Act, to ban the practice of patenting genes found in nature. Mr. Becerra has been careful to say the bill does not hamper invention, but rather promotes it. He’s right. This bill will fuel innovation, and return our common genetic heritage to us. It deserves our support.

As the debate heats-up, Kevin Noonan is emerging as the backstop:

Writers like Dr. Crichton (particularly academics, who should know better) have created a "new vitalism;" in this philosophy DNA is "different" and patenting DNA should be prohibited.  One problem with their position is its intellectual dishonesty: as Dr. Crichton does here, they accuse gene patentees of having ownership rights to "your" DNA (the DNA in the cells of a person's body).  This is nonsense, since anyone familiar with this space or any other truthful description of DNA patenting knows that patented DNA must be "isolated" or "isolated and purified."  In short, no one has ownership rights over "your" DNA (or mine, or Dr. Crichton's).

Read Noonan’s dissection of Crichton’s piece at PatentDocs.

Shield vs. Sword: CAFC Finds Inequitable Conduct But Not Antitrust Fraud

Dippin’ Dots v. Mosey and Dots of Fun (Fed. Cir. 2007).

[Note: This is the second post discussing Dippin’ Dots. Read Part I on claim construction] 

Inequitable Conduct: DD had used used part of its claimed method to make and sell Dippin’ Dots at a local fair more than one year before filing its application.  DD did not disclose that information to the PTO but did disclose information about the product’s market success that occurred after filing.

The CAFC affirmed that those facts properly led to a finding of inequitable conduct — showing both materiality and intent.

The prior sales were clearly were highly material as they served as the basis for invalidating the patent.  Intent to deceive was shown (even without a ‘smoking gun’) since DD touted some sales while concealing others.

Walker Process Antitrust Claims: A finding of inequitable conduct does not, by itself, support a finding of ‘common law fraud’ as required by Walker Process. Rather, a showing of fraud requires “a higher threshold showing of both materiality and intent.” Likewise, in these antitrust claims, both materiality and intent must survive on their own merits — without the balancing used in inequitable conduct determinations.

Where the fraud is based on an omission, the appellate panel held that intent must be shown with evidence that is “separable from the simple fact of omission.”

For instance, evidence may establish that a patent applicant knew one fact and presented another, thus allowing the factfinder to conclude that the applicant intended by the misrepresentation to deceive the examiner. That is not the case with an omission, which could happen for any number of nonfraudulent reasons—the applicant could have had a good-faith belief that disclosure was not necessary, or simply have forgotten to make the required disclosure.

Here, there was no additional evidence showing intent — giving the DD the win (on this minor point).

The Difference in proof for inequitable conduct and antitrust claims is discussed as the difference between a shield and a sword.

Weighing intent and materiality together is appropriate when assessing whether the patentee’s prosecution conduct was inequitable. Molins. However, when Walker Process claimants wield that conduct as a "sword" to obtain antitrust damages rather than as a mere "shield" against enforcement of the patent, they must prove deceptive intent independently. The defendants have not done so here to the extent necessary for a reasonable jury to find Walker Process fraud.

USPTO Allowance Rate:

In case you have not seen this graph:

Claim Transitions: "Comprising The Steps Of"

Dippin’ Dots v. Mosey and Dots of Fun (Fed. Cir. 2007). [CORRECTED VERSION]

Everyone should remember their first experience with Dippin’ Dots. I was in Branson at Silver Dollar City. DD owns a patent covering its method of freezing, storing, and serving beads of delicious ice cream. 

Several of DD’s distributors decided to go a cheaper route.  They cancelled their orders with DD and found an alternative source. DD sued for patent infringement. The defendants counterclaimed with Walker Process antitrust claims based on DD’s enforcement of a “fraudulently acquired patent.”  The antitrust claim was based on the inventor’s pre-filing use of the invention that had not been disclosed to the PTO.

The patent was found obvious and DD, the patentee, was held liable for antitrust violations.

Comprising the steps of: The accused products included a diversity of shapes of ice cream pellets — some spherical and others irregular. DD made two infringement arguments based on its claim language of “comprising the steps of . . . beads . . .” DD’s first argument, that all the pellets, regardless of shape, are beads was shot-down by the appellate panel who decided beads must be “spherical” based on limitations explicitly written in the specification. (In this case, the addition of silly wiggle language would have likely saved the day — especially since the drawing being described did not show spherical beads.) 

DD’s second argument, that the “comprising” transition allows for infringement based on the accused spherical beads regardless of the existence of irregular pellets was also shot-down.  

“As to DDI’s second argument, we acknowledge that the term "comprising" raises a presumption that the list of elements is nonexclusive. See Genentech (Fed. Cir. 1997). However, "‘[c]omprising’ is not a weasel word with which to abrogate claim limitations." Spectrum (Fed. Cir. 1998). "Comprising" appears at the beginning of the claim—"comprising the steps of"—and indicates here that an infringing process could practice other steps in addition to the ones mentioned. Those six enumerated steps must, however, all be practiced as recited in the claim for a process to infringe. The presumption raised by the term "comprising" does not reach into each of the six steps to render every word and phrase therein open-ended—especially where, as here, the patentee has narrowly defined the claim term it now seeks to have broadened.”

Thus, the claimed step of [(3)] freezing said dripping alimentary composition into beads, could not be interepted to as "freezing the alimentary composition into both beads and irregular pellets."

At first glance, this case seems odd, but the underlying decision rests on a common sense approach to the claim language.  The court essentially found that "freezing said dripping alimentary composition into beads" meant that all of the dripping alimentary composition was frozen into beads. If the step was performed properly there would not be any 'dripping alimentary compisition' remaining to form the irregular pellets.

Signals Per Se; Nuijten; Textualism; and Floodgates

Continuing the debate on patenting of signals per se and the Nuijten case.

• Professor Hricik continues our debate on whether the statute should be interpreted with back-looking textualism here.  His thought experiment is as follows:

What if we shortly conclude that there's really no such thing as "matter" at all but it's just vibrations of strings, and the 'reality' we perceive is only a manifestation of these vibrations that we cannot themselves perceive.   Does the conclusion that there is no "matter" as Jefferson understood the term mean nothing has patentable subject matter, since none of it is "matter" as that phrase was used back in Jefferson's day?

• Professor Duffy provides his new and fresh commentary on the oral arguments in PDF Form. (Duffy’s title is “Ten Points on the Oral Arguments in Nuijten”). Part of the debate explored by the judges is whether our 20th century knowledge of the relationship between energy and matter means implies that all energy forms should be patentable.
• Expanding patentable subject matter always creates the potential for a flood of incoming patent applications.  We saw this type of flood with business-method and software-related applications in the past. The PTO continues to be severely criticized for allowing a number of 'bad patents' to issue in both of those areas during the earlier years. The general consensus is that the PTO is now doing a much better job (and is perhaps overzealous) at ensuring that business method patents meet the statutory requirements of novelty and nonobviousness. In my view, the examination problems began with the PTO’s prior art searching system — a system that, for the most part, assumes that all prior art is contained within prior US patents. As we know, the history of software and business method technologies is not primarily found in patents. For those areas, the PTO has been forced to rethink how it finds and examines non-patent prior art. In addition, these arts tend to have high cross-market uses — causing the issued patents to be potentially broader than they might have seemed in the context of the original application. Training and hiring issues also play a large role.  In the areas of software and business methods there is also a proportionally greater diversity of patent applicants because of the lower barriers to entry into those development arenas. The resulting greater amount of inexperience with the patenting process of those applications may have also resulted in a larger number of lower-quality patent applications.  That last point, however, is highly suspect considering the quality of applications being filed by many of the major players in the software arena.  In any event the PTO should be both cautious and ready to act.
• In his paper, Professor Duffy notes that this particular case is unlikely to open any large floodgates.  Signals that are tied to some physical form (such as electronic memory) are already being patented.  As our regular commentator ‘Stepback’ and others have pointed out, Professor Noveck even has a patent covering a “computer data signal encoded in a carrier wave comprising . . .” (Claim 23 of US Pat. No. 6,823,363).

Links:

Professor Duffy’s Textualism Article

Professor Hricik’s Response

My Discussion of Hricik’s Response

Professor Osenga’s New Article: Ants, Elephant Guns, and Statutory Subject Matter.

Deposition Do’s and Don’ts: The Patent Interference Bar Is Warned

by Judge Bruce Stoner and Jill Browning

Senior Administrative Patent Judge McKelvey authored an opinion on January 12, 2007, joined by Chief Administrative Patent Judge Fleming and Administrative Patent Judges Schafer, Hanlon, Lane and Tierney.  The expanded panel addressed part of a Motion to Exclude Evidence filed by senior party Lan in Pevarello v. Lan, Patent Interference No. 105,394 (January 12, 2007), wherein party Lan sought the exclusion of evidence based on alleged violations of the Cross Examination Guidelines during a deposition.  The panel did not rule on the admissibility issues, but took the “opportunity to address practice under the Guidelines” as well as address permissible deposition testimony relating to the creation and execution of direct testimony affidavits.  Pevarello, at p. 2.   

In interference proceedings, depositions are largely limited to the “cross-examination” of a witness who has given written affidavit evidence in support of a motion.  The Trial Section adopted Guidelines to govern the cross-examination of witnesses, included as an appendix to the Standing Order of January 3, 2006. See Appendix: Cross Examination Guidelines. The Guidelines were modeled after Hall v. Clifton Precision, 150 F.R.D. 525 (E.D. Pa. 1993), and the Board invited the bar to review that decision to answer questions that may arise with respect to deposition practice in interference proceedings.  

It is not likely that the attorneys here were the only ones to have ever violated the Guidelines; if that were the case, the Board would not have felt the need for such an expanded discussion.  Presumably, the Trial Procedures Section of the Trial Division of the Board wanted to make clear that it was dead serious about the Cross Examination Guidelines and saw this case as a textbook example of the sort of behavior it would like to discourage.  Expanding the merits panel by the addition of Judges McKelvey and Schaffer, judges of long experience in inter partes matters, and the addition of Chief Judge Fleming, was clearly designed to send a message that the Guidelines are Board policy in interference proceedings before the Trial Procedures Section of the Trial Division of the Board. Applying the Guidelines to the case at hand, the Board emphasized the following practice points, with the aim toward re-establishing more decorum and control during a deposition.   

Practice Points:

1. Blanket objections waive the objection: An attorney lodging an objection during a deposition must state the legal basis for the objection.  “Motions to exclude based on blanket objections [a naked objection] will not be considered because blanket objections during a deposition fail to comply with Guideline [3].”  Pevarello, at p. 7. The legal basis for an objection, moreover, “must be found in the rules governing admissibility of evidence for contested patent cases, including the Federal Rules of Evidence.”  Id. at p. 6.  
   The Board determined that the parties’ stipulation to the contrary (the parties agreed that failing to state the basis for an objection would not waive the objection) abrogated Guideline 3 and was, thus, not proper. 
2. Failing to object waives objection; objection as to the “form” of question is improper:  The parties also stipulated that “all objections are reserved until the time of trial, except those objections that are directed to the form of the question.” The Board made clear that failing to object during a deposition acted as a waiver of the objection, noting that in interference proceedings, there is no subsequent “trial.”  Pevarello at p. 18.   The Board further concluded that, in patent interference cases, counsel may not object to a question based on the “form” of such question.  The Board concluded that “form” objections are not sanctioned by the Federal Rules of Evidence and, thus, are improper in patent interference proceedings. Id. at p. 18. 
3. Limit exchanges between counsel – call the Board instead:  Throughout the opinion, the Board cited many examples of, and admonished both attorneys for, debating the merits of an objection on the record.  The Board stressed that the objection and its legal basis must be stated in a “non-argumentative and non-suggestive manner”.  Pevarello, p. 5.  Should counsel continue to disagree regarding objections, particularly with respect to whether a certain line of questioning is proper, the Board invited counsel to call the administrative patent judge to resolve the dispute in real time.  Id. at p. 19.
4. Defending attorneys should not ask for clarification of a question or an answer:  The Board criticized defending counsel for seeking clarification, on behalf of the witness, of a question, stating that this practice contravenes Guideline 1 (“At the beginning of a cross-examination, the party conducting the cross-examination may instruct the witness on the record to ask deposing counsel … for clarifications… See ¶ Guideline [1], Appendix to Standing Order, p. 71). The Board placed the burden of seeking clarification of a question squarely on the testifying witness, indicating that the Board found no legal basis for objecting to a question as “ambiguous, not clear or vague.”  Id. at p. 10.
   The Board further admonished defending counsel not to attempt to “clarify” the witnesses’ testimony, as that amounts to the “lawyer [taking] over control of the case from the Board.”  Id. at p. 14.  Thus, the defending attorney should not restate or question the witnesses’ testimony under the guise of an objection or correcting the record. 
5. Prepare your witness before the deposition -- not during the deposition: The Board strongly discouraged comments made by the defending attorney that could be perceived as “coaching” the witness to give (or stop giving) certain testimony.  This not only violates Guideline 3 (“Counsel must not make objections or statements that even remotely suggest an answer to a witness.”  See ¶ Guideline [3], Appendix to Standing Order, p. 72), but also the “decorum rule” of 37 CFR §41.1(c) (2006) (“Decorum. Each party must act with courtesy and decorum all proceedings before the Board, including interactions with other parties.”)
   The Board demonstrated a lack of tolerance for these antics, determining that the following remark made by counsel during the Witnesses’ answer: “‘I’m going to object because there’s no question pending’ translated into plain English means ‘Do not say anything more.’”  Id. at p. 15.  The Board also criticized counsel for coaching the witness when he objected to a question based on misstating the witnesses’ prior testimony.  The Board placed the burden of pointing out misstatements on the witness and indicated that the proper time for the defending attorney to clarify the witnesses’ testimony is on re-direct.  Id. at p. 17.  
6. Avoid questions regarding the preparation of declarations:  The Board then turned to a separate, but related, topic regarding appropriate/inappropriate lines of questioning regarding the preparation of an affidavit or declaration.  According to the Board, attorneys should not question the witness regarding the mechanics of preparing the declaration, absent some compelling reason.  Id. at p. 23.  Thus, attorneys should refrain from asking who drafted the declaration (whether it was counsel or the witness), whether there were prior inconsistent drafts or whether there were discussions between counsel and the witness.  The Board, recognizing that its position conflicts with the majority interpretation of Rule 26(a)(2) of the Federal Rules of Civil Procedure, supported its decision with reasons given in the August 2006 American Bar Association report that advocates amending Rule 26 to limit expert discovery.  The Board also noted that the Federal Rules of Civil Procedure do not apply in interference cases before the Board.  The deposition of a witness should focus on the merits of the declaration, including: (i) The witnesses’ credentials; (ii) The invention; (iii) Relevant prior art; (iv) The basis for facts and opinions; and (v) Facts/issues relating to conception, diligence and reduction to practice.  Id. at p. 22.

The panel hearing the interference (Administrative Patent Judges Hanlon, Lane and Tierney) will now, in view of the opinion, rule on Lan’s Motion to Exclude the Evidence. Failing to follow the Cross Examination Guidelines risks the imposition of sanctions under 37 CFR § 41.158, as noted in the Standing Order, ¶ 128.  The potential sanctions under § 41.158 can be serious, and include entry of: (1) An order holding certain facts to have been established in the proceeding; (2) An order expunging, or precluding a party from filing, a paper; (3) An order precluding a party from presenting or contesting a particular issue; (4) An order precluding a party from requesting, obtaining, or opposing discovery; (5) An order excluding evidence; (6) An order awarding compensatory expenses, including attorney fees; (7) An order requiring terminal disclaimer of patent term; or (8) Judgment in the contested case.

Note: Judge Bruce Stoner spent seventeen years hearing patent appeals, including eight years as Chief Judge of the BPAI. In 2003 he joined the Greenblum & Bernstein firm. Jill Browning is a partner at the same firm and a director of the APLF.

Peer-to-Patent Expected To Launch in April 2007

Beth Noveck recently published her most recent paper on Peer-to-Patent in the Harvard Journal of Law & Technology. As some of you know, Professor Noveck is on a mission to create a community-based open review system to assist patent examiners in determining whether an invention is patentable.

We know from several studies as well as anecdotal evidence that plenty patents are issued covering obvious ideas.  It is hard work to find and sift-through prior art — not to mention the difficult task of comparing it to a patentee’s claimed invention.  Obvious patents make the patent system look bad and drag-down the system.

One oft proposed quality promotion solution is to increase fees at the PTO and use the money to give Examiners more time to spend examining. This is a defensible answer, but it could end-up significantly increasing the cost of patenting. 

Professor Noveck’s approach is to step outside the regulatory box and allow people in the community to review pending patent applications and provide relevant prior art.  Prior art can be ranked and discussed through an electronic exchange entirely outside of the PTO.  The results can then be submitted to the Examiner for review.  At best, an Examiner may receive a ranked list of ten references with indications of how relevant portion of the reference read upon various claims. 

Receiving a packet of relevant info from the Peer-to-Patent group is intended to make the Examiner’s job of weeding easier, but it will only work if there is a real community of techno-experts willing to put in time to prevent patent applications from issuing.  Here, we can rely at least partially upon a competitive spirit — no one wants a competitor’s patent to issue, and the Peer-to-Patent approach provides a straightforward method to ensure that your path is not blocked. Several companies, including IBM and Microsoft have agreed to donate corporate time to assisting with the system.

I’m intrigued with the approach. I think it is a fresh idea with some real potential—and have agreed to serve on the board of directors. One way or the other, the proof will come this Spring when the pilot is expected to begin.

• Peer-to-Patent Project
• Noveck Article
• Peter Zura gives his take

Patentable Subject Matter: Professor Hricik Discusses Duffy's Textualism

Earlier this week, Professor John Duffy published his critique of the Patent Office approach to patentable subject matter. In particular, Duffy used textual analysis to examine the meaning of patentable subject matter under the Patent Act (Section 101) and under the laws as they existed prior to 1952. Duffy’s analysis shows that the four statutory classes (process, machine, manufacture, or composition of matter) should be seen as extremely broad.  This is especially true of the terms “composition of matter” and “manufacture.” Those subject matter terms have remained unchanged drafted by Thomas Jefferson in 1793. At that time, Duffy explains, these words certainly would have encompassed signals, and perhaps much more.

In response, Professor David Hricik, a statutory construction scholar and a former patent litigator, has taken issue with this old-style textualism. According to Hricik, the Patent Act is different than many other statutes because it is contemplates a framework for future innovation. 

I think we end at the same place, but I don't think that we ought to limit the terms of 101 to what the terms meant in 1793, 1866, or even 1950.

Underlying Hricik’s argument is the implicit sense that the government is not in a position to know what types of inventions we should be working-on. Rather, the scope of inventiveness should be controlled only by the creativity of inventors and their marketplace for funding. This is the same approach that we took in drafting the IPO brief in last-year’s Metabolite case.

Hricik’s argument may actually go to far by implying that innovation related legislation should be interpreted differently than any other legislation.  All legislation looks to the future with the understanding that society is in a constant state of flux. And all legislation operates in the backdrop of technological change. If textualism is the wrong approach to interpreting patent legislation then it is the wrong approach across the board.

• Read Professor Duffy’s Textualism Article
• Read Professor Hricik’s Response
• Buy Professor Hricik’s book on Amazon

Microsoft v. AT&T: Transnational patent Law

Microsoft v. AT&T (Supreme Court 2007).

Section 271(f) of the Patent Act expands the territorial scope of US patent protection by creating liability for exporting one or more “components” of a patented invention so that the whole invention may be practiced abroad. The statute is divided into parts one and two dealing with inducement and contributory activity respectively.

The case at hand involves Microsoft’s infringement of AT&T’s speech coding technology patent. Microsoft has conceded that its software (once installed on a computer) infringes the patent in the US. However, Microsoft has fought against paying patent royalties for sale of the same software abroad.  Microsoft’s argument, spelled out in its brief, is two-fold: (1) Software cannot be a ‘component’ as required by the statute because software code is intangible; and (2) Software copies made abroad cannot be considered ‘supplied’ from the US as required by the statute because no physical particle that Microsoft exported actually became part of the finished product.  I have previously labeled these arguments as the tangibility requirement and the molecular conservation requirement. [Link]

Now, AT&T and its supporters has filed their briefs that explain why 271(f) should encompass foreign copies of software shipped from the US. [Petitioner and Gov’t briefs are discussed here]

AT&T’s Brief on the Merits:

Tangibility: AT&T attacks the tangibility requirement head-on, arguing that there is no such requirement.

[The software] is plainly a component of [the patented] device, just as a unique collection of intangible words is a component of any book bearing the title Moby-Dick, even though those words, too, must be combined with ink and paper before the book can be read.

Of course AT&T is correct — the statute does not spell-out any tangibility requirement, and Microsoft’s statutory argument is, at best implicit. AT&T’s arguments are supported by business practice as well. Software and hardware are developed and sold separately, and each side can easily be though of as providing components of the whole.

Molecular Conservation Requirement: AT&T takes a different view of the statutory requirement that the components be “supplied” from the US. In AT&T’s story, “supplied” means satisfying a need or furnishing.  Using a but-for analysis, AT&T makes clear that without Microsoft’s shipment of the code abroad, it would not have ended-up in the foreign computers.

Here, the Windows object code is present in the foreign made computers only because Microsoft “provided” or “furnished”—in a word, supplied—it from the United States, via golden master disk or electronic transmission.

As it stands, the AT&T brief is well written and convincing on its own — the major problem being that it leads with a petty argument for dismissal.

Philips Corporation also filed a brief in support of AT&T.  Philips makes several arguments, two of which I discuss here:

1. In today’s market, software and hardware companies do compete head-to-head.  A finding that software export is noninfringing would be at the expense of electronics companies because hardware exports would continue to be considered infringing.  Thus, awarding the win to Microsoft here may free the software industry, but will even further damage the hardware export industry.
2. In many ways, this case is about the size of damages. Microsoft hopes that copies made abroad will not be seen as infringing because those copies were not literally shipped from the US.  Philips points out under the rules of consequential damage calculations, Microsoft would owe damages for sales of all copies even if 271(f) only covered the initial master disk shipment.

WARF, California, and RCTech filed a joint brief in support of AT&T. These holders of strong bio-related patents see the potential that this case could narrow the scope of their protection. WARF points-out how Microsoft comes to the table with unclean hands:

When it suits its interests, even Microsoft acknowledges that the number of units it supplies is not limited by the number of golden masters it sends abroad. In Microsoft Corp. v. Comm’r of Internal Revenue, Microsoft argued that it was entitled to tax deductions . . . for all foreign sales of software replicated from Microsoft’s golden master abroad, claiming that such copies were "export property" under the statute. The Ninth Circuit . . . agreed with Microsoft that all copies created from the golden master were export property, thereby providing Microsoft with another $31 million in claimed deductions for 1990 and 1991.

BAYHDOLE25.inc is an educational NGO that supports, as you might guess, the Bayh Dole act (at its 25th anniversary).  In a brief supporting AT&T, BD25 argues for the protection of intangible assets — especially assets that are replicable and intended to be replicated.  These include software code, cell lines, patented seeds, DNA, etc. Replicable assets are important and should be protectable.

Documents:

• On the Merits
• In Support of Microsoft
• Petitioner: Microsoft Brief;
• Amicus: US Government;
• Amicus: Law Professors (Lemley & Duffy);
• Amicus: Amazon;
• Amicus: SIIA (Industry Org.);
• Amicus: SFLC (Moglen & Ravicher);
• Amicus: Shell Oil (Method Claims);
• Amicus: Intel;
• Amicus: AIPLA;
• Amicus: Eli Lilly;
• Amicus FICPI;
• Amicus Autodesk
• Amicus BSA (Industry will be destroyed if AT&T wins);
• Amicus Yahoo!.
• In Support of AT&T
• Respondent: AT&T;
• Amicus: BayhDole25.inc;
• Amicus: US Philips;
• Amicus: UC WARF RCTech.
• In Support of Neither Party
• Amicus: Professor Edward Lee.
• Reply Brief:
• Petitioner: Microsoft Reply Brief.
• On Petition for Certiorari
  • Petitioner: Microsoft Petition
  • Petitioner: Microsoft Petition Appendix
  • Respondent: AT&T Opposition
  • Petitioner: Microsoft Reply in Support
  • Respondent: AT&T Supplemental Brief
  • Petitioner: Microsoft Supplemental Brief
  • Amicus: Software and Information Industry Association in Support of Microsoft
  • Amicus: Government in Support of Microsoft

Important recent 271(f) cases:

• NTP v. Research in Motion, (271(f) “component” would rarely if ever apply to method claims).
• AT&T v. Microsoft, 414 F.3d 1366 (Fed. Cir. 2005) (271(f) “component” applies to method claims and software being sold abroad);
• Union Carbide v. Shell Oil (Fed. Cir. 2005) (271(f) “component” applies to method claims).
• Eolas v. Microsoft, 399 F.3d 1325 (Fed. Cir. 2005) (271(f) “component” applies to method claims and software);
• Pellegrini v. Analog Devices, 375 F.3d 1113 (Fed. Cir. 2004) (271(f) “component” does not cover export of plans/instructions of patented item to be manufactured abroad);
• Bayer v. Housey Pharms, 340 F.3d 1367 (Fed. Cir. 2003) (271(g) “component” does not apply to importation of ‘intangible information’).

Earlier Discussion of this case

• http://www.patentlyo.com/patent/2006/12/microsoft_v_att.html
• I will be discussing this and other extraterritorial issues at Duke University Law School on February 23, 2007. Link.

Text of 35 USC 271(f)

(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

Divided Congress Finds Common Ground in Patent Reform

This headline is merely a predictor of things to come over the next year. New patent reform legislation will likely be introduced this week.

In re Nuijten: Patentable Subject Matter, Textualism and the Supreme Court

By Professor John F. Duffy, George Washington University

[PDF Version of this Post] In re Nuijten, which is being argued to the Federal Circuit today, presents the important issue of whether a new type of artificially constructed signal may be patented.  The Patent and Trademark Office opposes patentability on the grounds that, as a matter of textual interpretation, signals do not fall within any one of the four categories of patentable subject matter - "process, machine, manufacture, or composition of matter" - identified in section 101 of the Patent Act.  PTO Br. at 12 (quoting 35 U.S.C. § 101).  Though Nuijten raises important issues concerning the scope of patentable subject matter under U.S. law (and that's reason enough for most patent practitioners and scholars to care about its outcome), the case is also about much more.  It is about the fundamental approach to interpreting the Patent Act and the effect of the Supreme Court's recent interest in patent cases.  To appreciate those larger issues, we must begin with a basic understanding of the facts at issue.

Modern signals (e.g., for carrying audio, video or data) may be constructed to contain embedded "supplemental data" or "watermarks," which typically contain information such as the source or copyright status of the underlying information being transmitted.  The addition of such watermarks, which is old in the art, can distort the underlying signal.  Nuijten invented a new way to add watermarks that results in less distortion.  Nuijten filed a patent application with claims directed to (1) the new process for adding watermarks, (2) storage media containing signals encoded by the new process, and (3) the signals themselves.  The PTO has allowed claims for the process and for the storage media containing the signals, but not for the signals themselves.  The PTO does not disputed that the signals sought to be patented are demonstrably new and nonobvious.  The agency's sole objection rest on section 101 of the Patent Act. 

PTO: Electronic Filing Update

Midnight Filing: The USPTO continues to changes its rules and regulations to favor electronic filing. Now, users of the electronic filing system (EFS) get a last minute bonus: Correspondence submitted via EFS-WEB will now be considered timely if submitted on the due date. (The old rule required it to be received at the PTO on the due date).

You should be cautious and retain  your USPTO E-filing acknowledgment. Filings should be immediately available for review on Private PAIR.

Finally if EFS-WEB is not working, the practitioner should be ready with an alternative method of filing such as fax or snail mail.

National Stage Evidence: The PTO has also given notice that the EFS-WEB acknowledgment receipt will be sufficient to show that correspondence submitted in a national stage application was actually received by the Office.

Link: Read the USPTO Notice

One for Slashdot

Published patent application No. 20020029208 is described as a “data gathering and distribution apparatus and method.”  A reader e-mailed the following claim, which comes from the application:

58. A data-gathering method, comprising: identifying source data to be gathered; automatically gathering at least a portion of the source data; and automatically distributing the gathered data to at least one selectable destination.

Even when the provisional was filed in 2000, it is clear that this would not have passed the blush test.  Fortunately, the application appears to have been abandoned.

• Patent Application
• USPTO PAIR Database

Voda v. Cordis: Plaintiff May Not Assert Foreign Patents in US Courts

Voda v. Cordis (Fed. Cir. 2007).

Jan Voda, an Oklahoma medical doctor sued Cordis for infringement of his patent on an interventional cardiology catheter. Voda had obtained patents both in the US and abroad. Not wanting to waste time and money on multiple suits, Voda asked the US court to also determine his claims of foreign infringement based on his patents in the UK, Canada, France, and Germany.  The US court agreed, but Cordis appealed — arguing that the district court improperly extended its jurisdiction.

In a 2–1 decision, the Federal Circuit (Gajarsa) has held that the district court cannot exercise supplemental jurisdiction over Voda’s foreign patent claims.  Judge Newman dissents.

Supplemental Jurisdiction: Federal courts are designed to hear federal law. But, every day they exercise their power to decide issues that arise under the law of other jurisdictions. Usually the other jurisdictions are US states and municipalities. But, the courts are also regular interpreters of non-US law as well.  Non-Federal questions arise based on either “diversity jurisdiction” or “supplemental jurisdiction.”  Supplemental jurisdiction is spelled-out in 28 USC 1367:

[after establishing] original jurisdiction, the district courts shall have supplemental jurisdiction over all other claims that are so related to claims in the action within such original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution.

In many cases, supplemental jurisdiction has been found to extend to include foreign law claims. However, the “so related” portion of the statute has been interpreted to require that the supplemental claims arise from a “common nucleus of operative fact” and that the claims would “ordinarily be expected to [all be tried] in one judicial proceeding.”  Here, the CAFC did not determine whether supplemental jurisdiction exists because it found that the district court had abused its discretion (see below).

Discretion and Comity: Even if jurisdiction exists, its exercise is “within the discretion of the district court.”  The CAFC found that the district court abused its discretion by ignoring the Paris Convention, TRIPS and concepts of comity.

 Like the Paris Convention, nothing in the PCT or the Agreement on TRIPS contemplates or allows one jurisdiction to adjudicate patents of another. . . . Based on the international treaties that the United States has joined and ratified as the "supreme law of the land," a district court’s exercise of supplemental jurisdiction could undermine the obligations of the United States under such treaties, which therefore constitute an exceptional circumstance to decline jurisdiction under § 1367(c)(4). Accordingly, we must scrutinize such an exercise with caution. . . .

The territorial limits of the rights granted by patents are similar to those conferred by land grants. A patent right is limited by the metes and bounds of the jurisdictional territory that granted the right to exclude. Therefore, a patent right to exclude only arises from the legal right granted and recognized by the sovereign within whose territory the right is located. It would be incongruent to allow the sovereign power of one to be infringed or limited by another sovereign’s extension of its jurisdiction. Therefore, while our Patent Act declares that "patents shall have the attributes of personal property," 35 U.S.C. § 261, and not real property, the local action doctrine constitutes an informative doctrine counseling us that exercising supplemental jurisdiction over Voda’s foreign patent claims could prejudice the rights of the foreign governments.

. . . Because the purpose underlying comity is not furthered and potentially hindered in this case, adjudication of Voda’s foreign patent infringement claims should be left to the sovereigns that create the property rights in the first instance.

Judicial Economy: While the CAFC agreed with voda that “consolidated multinational patent adjudication could be more efficient,” the court worried that it would also cause additional problems of confusion and difficulty understanding and enforcing foreign actions.

Changing Circumstances: Finally, the court left the door open if “circumstances change.”

In addition, we emphasize that because the exercise of supplemental jurisdiction under § 1367(c) is an area of discretion, the district courts should examine these reasons along with others that are relevant in every case, especially if circumstances change, such as if the United States were to enter into a new international patent treaty or if events during litigation alter a district court’s conclusions regarding comity, judicial economy, convenience, or fairness.

Vacated and Remanded

Patent Law Tidbits

Comments: Thousands of patent attorneys read Patently-O every day. (This week, we’ll reach 3,000,000 visits).  In addition to ‘passive’ readers, Patently-O has also been recognized as fostering an open discourse on patent law and its application to particular cases. These discussions — usually through comments — are written at a fairly high-level and continue to help me develop an understanding of the changing law. Thanks to all of you who have left comments or otherwise contacted me about our recent patent law debates. Two things to put people on notice:

• I allow anonymous and unfiltered comments because many patent attorneys don’t want to go ‘on record’ about much of anything. You should be aware that the Typepad software does record your network’s IP address. Thus, I can tell if you are writing from the FAA, US Courts, Quinn Emanuel, etc.  Although I don’t know, I suspect that a networking expert could potential drill-down for more specific information.  I won’t give this information out to anyone without a subpoena  — but Typepad does keep it on record. 
• There should be no need to mention this, but perceived anonymity sometimes blinds people — comments sometimes get out of line. My tendency not to censor comments, but instead to simply block offending commenters from ever posting.

Around the horn:

• RTIP has announce The Resolution, a new quarterly magazine covering based on their site FedCirc.us. First issue is free, subscriptions are $249.  RTIP will be competing directly with BNA’s Weekly Journal of the Patent Trademark & Copyright office, which sells for $2096.  
• Kevin Noonan takes-on the NYT and its anti-patent rhetoric.
• Barkoff continues to maintain his Hatch-Waxman tracker at the Orange Book Blog.
• Second Life and First Life.
• Duke’s iBlawg discusses the aftermath of eBay.
• Just-a-patent-examiner is still going strong [LINK].
• Professor Abramowicz further develops his patent prize paper here.

Quote of the week comes from Dan Ravicher discussing Patriot Scientific’s troll-like behavior:

"While one can't blame them for doing what is in their self interest - much like one can't blame cockroaches for appearing when it is you who left crumbs on the counter - it is past time for our policy makers to ask themselves whether such activity is beneficial for the public, or is instead a siphoning of resources that could be better spent on doing technological research or passed on to consumers in lower prices for goods."