Patently-O Bits and Bytes No. 66

• After Aristocrat, is nonstatutory double patenting off the table as an invalidity defense in an infringement action? (Hat tip to Chico Gholz).
• Vanderbilt Law School's Journal of Entertainment & Technology Law (JETL) has a new blog focusing on timely legal issues: Jetlaw. [Read Jetlaw][Read JETL]
• Ten great new jobs on the Patently-O job board. Tell them you found it on Patently-O:
  • Professor of Law - Franklin Pierce Law - Concord, N.H.
  • Professor of Law - Franklin Pierce Law - Concord, N.H.
  • Patent Attorney - Small Corporation - Bellevue, Wash.
  • Patent Agent - Law Firm - Irvine, Calif.
  • Patent Attorney - Small Corporation - San Francisco, Calif.
  • Patent Attorney - Law Firm - Syracuse, N.Y.
  • Patent Agent - Law Firm - Kansas City / St. Louis, Mo.
  • Electrical Engineering Attorney - Law Firm - Alexandria, Va.
  • IP Litigation Associate - Law Firm - Palo Alto, Calif.
  • Patent Attorney/Agent - Law Firm - Provo, Utah
• QUERY: Can someone point me (and our readers) to a somewhat comprehensive breakdown which issues are issues of law versus issues of fact in patent cases?

Comments

[Elfin Magic]

Nonstatutory double patenting should still be a legitimate defense, falling under the "conditions for patentability" as the court held. It's a substantive requirement, extending 'eligibility' under 101. Importantly, it's a _judicially created_ doctrine (unlike 371, which explicitly gives power to the Director), so by its very nature it should remain fair game for a court to invoke.

And there shouldn't be any question that statutory double patenting remains available as a defense, as well. Neither of these would be considered "procedural lapses" by the PTO.

[ODP guy]

Agree with Elfin. Chico is reading too much into what is classic dicta.

[Elfin Magic]

I suppose a better question is if Aristocrat should have any effect on the Certificate of Correction line of cases (i.e., the PTO 'improperly' grants of C of C, as in Central Admixture, Superior Fireplace, etc.) Probably distinguishable, but it's a tougher case to make...

[$700 billion]

$700 billion??? I guess that the federal government is going to have to raise the PTO fees and cut back on examiner training and retention and the overall quality of examination.

[Chief Judge Michel's Talk at Harvard on IP]

http://www.cafc.uscourts.gov/CJM_Speech_Harv_LS_Conf_9-08.pdf

[Obama/McCain]

Compare Obama and McCain's thoughts on science and technology

http://www.msnbc.msn.com/id/26840980/

[Defenderoftruth]

Dennis has anyone sent a link on your query for issues of law v issues of fact in patent cases? In the middle of writing stat. of facts and conclus. of law for a design and copyright case. Let me know!

[MaxDrei]

Dennis, me too. England asserts that obviousness is a "type of Jury question", but it's trite to assert that the ultimate question of validity of a patent is a question of law, yet dependent on the specific question of fact, whether act X was, for the PHOSITA, obvious or not. But, then again, till Westview, I had never dreamed that claim construction could be anything else but a question of law.

[Jerry Cohen]

Dennis - Re your query the handbook for federal judges on Patent Law s by Herb Schwartz (BNA Books) has a succinct tabulation if fact/law-judge/jury issues./Jerry

[anExaminer]

FYI, September 24th is the World Day Against Software Patents

http://stopsoftwarepatents.org

for what that's worth.......

[AllSeeingEye]

Judge Michel's speech is simply excellent - particularly with how he describes the current state of affairs. Worth reading. The highlights IMO included that the Supreme Court generalists are ill-equipped to deal with patent issues, and if asked, the Federal Circuit could have easily clarified the TSM test - but no one asked for an en banc hearing. I do take issue at the way the Supremes handled KSR as if chastizing the Federal Circuit ~ gobbledygook indeed. Also, he basically said that briefs are pathetic and that patent litigators need to plumb the depths of Supreme Court precedent and get away from glib "cite bites," e.g. selective quotes from cases that attempt to carry the entire burden of persuasion. Also he would prefer to see more well rounded discussion including public policy.

[P Tission]

Not a comment, but can I ask a question of your learned readership?
In the PTO, is there a means to challenge what one believes to be an improperly denied petition? According to the PTO (who weren't too helpful) I should file yet another petition, this time under 37 CFR 1.182, which is the catch-all petition for everything not covered elsewhere.
No, I don't want to file another petition for another $400, I want my first petition properly considered because I believe it should be allowed.

[Publius]

"In the PTO, is there a means to challenge what one believes to be an improperly denied petition?"

Try a petition for supervisory review under 37 CFR 1.181(a)(3). Good luck. In my experience, the petitions office is remarkably willing to torture logic and twist facts to justify a desired outcome.

[Just an ordinary inventor(TM)]

Senator Biden is a bit confused on:

http://www.youtube.com/watch?v=6AwjNvA-vUw&NR=1

Can you spot the gafs?

[Just an ordinary inventor(TM)]

Or do you think it was a “splice” job because Senator Biden couldn’t be that history-challenged?

[AllSeeingEye]

Adverse decisions on petitions may be reviewable in federal district court by a "Complaint for Review of Agency Action" depending on whether the underlying matter arises under the patent laws. The presumption of administrative correctness must be overcome, which is difficult and therefore federal court reversals of decisions on petitions are rare.