Patent Law Blog (Patently-O)

Patently-O Bits and Bytes No. 316

• Searching: The Patent Librarian (Michael White) reports that esp@cenet now has new search functionality.
• Searching: I am enjoying a new blog by the patent searchers at Landon IP: The Intellogist.
• Job: The non-profit PIIPA (Public Interest Intellectual Property Advisors) is looking to hire a new executive director.
• Job: The USPTO appears to be hiring examiners again to fill “many vacancies.” [Link]  However, the jobs are not yet listed here.
• Jobs:
• Patent Counsel - Large Corporation - San Diego, Calif.
• Patent Attorney - Large Corporation - San Diego, Calif.
• Patent Counsel - Large Corporation - Multiple Locations
• Sr. Patent Agent - Large Corporation - San Diego or Foster City, Calif.
• Patent Attorney - Small Corporation - Bellevue, Wash.
• Patent Attorney/Agent - Law Firm - Rockville, Md.
• Section 292 (False marking): PATracer reports on a district court decision in favor of Target — holding that the retailer is not liable for false marking even if it knowinly sold products that were falsely marked. [LINK]
• Divided Infringement: PATracer also reports on an interesting non-infringement decision in favor of DirecTV based on the company’s outsourcing of customer support operations. “DirecTV can not be liable for direct infringement of an asserted claim if the evidence demonstrates that DirecTV neither performs by itself nor directs nor controls a third party's performance of any one element of the claim.” [LINK]

PTA Recalculation Submissions

Although I have some problems with the USPTO's claim of authority to act, prudent patentees will submit a PTA reconsideration form for patents issued since August 1, 2009 that might be owed additional patent term due to the Wyeth decision.

The recently distributed form (Titled a Request for Recalculation of Patent Term Adjustment in view of Wyeth) is exceedingly simple and requires only basic information regarding the patent and a signature. The applicant is not even required to indicate a belief that additional patent term is due. Forms are due on a rolling basis – always within 180-days of patent issuance. Thus, form should be immediately submitted for patents issued in early August, 2009.

Although PTA calculation is somewhat complex, the Wyeth change only impacts patents that meet the following criteria: (1) application actually filed on or after May 29, 2000 and (2) prosecution pendency of greater than three years. The vast majority of impacted cases will also include (3) a file history showing that the PTO delayed in examining the application during the first three years of pendency. The most likely PTO delay is that the Office waited more than 14-months before providing an initial examination response such as an office action rejection; restriction; or notice of allowance. Although only an educated guess, I suspect that the median additional term will be a bit under 1-year.

File Attachment: PTO Form SB-131 (Jan 2010).pdf (139 KB)

Interim Procedure for Requesting a (Free) Patent Term Adjustment (PTA) Recalculation from the PTO

In Wyeth v. Kappos, the Federal Circuit held that the USPTO has been miscalculating the Patent Term Adjustment (PTA) owed to patentees due to delays in patent prosecution. The USPTO has now announced an interim procedure for requesting recalculation of patent term.  According to the plan, the PTO will recalculate the patent term for free for any patent issued prior to March 2, 2010 so long as the request for reconsideration is submitted within 180 days of issue. (Patents Issued on August 4, 2009 will reach the 180 day mark on Sunday, January 31, 2010.)  The requested recalculation may only be for the purpose of correcting the overlap-calculation discussed in Wyeth. 

[T]he USPTO will be processing recalculation requests under an interim procedure that is available to a patentee whose patent issues prior to March 2, 2010, and who requests it no later than 180 days after the issue date. This procedure is available only for alleged errors in calculation that are specifically identified in Wyeth. A copy of the notice submitted to the Federal Register for publication and the form for patentees to use in requesting a recalculation of patent term is on the USPTO Web site at http://www.uspto.gov/patents/announce/pta_wyeth.pdf.

The USPTO created March 2, 2010 as a deadline because it expects to be correctly calculating PTA by that point. “The agency expects to complete by March 2, 2010, the software modification necessary to comply with the U.S. Court of Appeals for the Federal Circuit's recent decision in Wyeth v. Kappos regarding the overlapping delay provision of 35 USC 154(b)(2)(A).”  If my undertanding is correct, the PTO intends to continue to issue patents with the incorrect PTA calculation up until that point.

Although it would be wise to double-check the PTO’s calculations, the applicant is not required to make the calculation prior to requesting reconsideration. Rather, according to the PTO, “the request for reconsideration need only state that reconsideration is being requested in view of the Federal Circuit’s decision in Wyeth.”

Potential Statutory Violation: Although I applaud the USPTO’s patentee friendly approach I am not convinced that the PTO has the power to take this action. Notably, 35 USC 154(b)(3)(B)(ii) requires that the PTO “provide the applicant one opportunity to request reconsideration.”  The subsequent procedure identified by statute is a civil action that must be filed in court within 180 days of the grant of the patent.  For patents that have already issued, the PTO has already offered the one opportunity to request reconsideration (see 37 CFR 1.705) and this waiver of the rules is providing a second opportunity for reconsideration.  The court that limited the PTO’s power in Tafas v. Dudas could also limit the agency’s power in this situation.  Even if the PTO is acting unlawfully, a patent receiving additional patent term due to the unlawful behavior will still likely be valid and enforceable under Aristocrat.

Potential Loss of Right to a Civil Action: Applicants should also beware that the 180–day-from-issuance deadline for filing a civil action to correct the PTA has not been waived. This means that the applicant may have no recourse if the PTO’s recalculation decision arrives after that 180–day window.

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Inequitable Conduct Based on Contradictory Statements to the EPO (in a non-family member application)

Therasense, Inc. (Abbott) v. Becton, Dickinson and Co. (Fed. Cir. 2010) (Case No. 2009-1511)

This detailed 67–page opinion includes several important issues. This post focuses on inequtiable conduct. The Federal Circuit recently released a parallel decision involving the same parties (but different patent) here. 

After a bench trial, Northern District of California Judge Alsup held Abbott’s patent unenforceable due to inequitable conduct during prosecution. (Patent No. 5,820,551). On appeal, the Federal Circuit has affirmed that decision — holding that the prosecuting attorneys had violated their duty of disclosure by failing to dislcose statements made by Abbott to the European Patent Office during a proceeding involving the European counterpart of another patent family (the ‘382 patent’ family) also owned by Abbott.  Although the court affirmed the finding of inequitable conduct, it offered the fig leaf that such a finding should be “rare.”  (Note: Therasense originally filed both patent applications and also made the statements to the EPO. That company was subsequently purchased by Abbott.)

Patent applicants (and their attorneys/agents) are required to disclose to the US Patent Office any information that a reasonable examiner would likely consider important in deciding whether to issue a patent.  Failing to submit the required information can lead to a finding of inequitable conduct if the information was both (1) material to patentability and (2) witheld because of an intent to deceive the Patent Office.  Inequitable conduct usually results in a patent being rendered totally unenforceable. “The penalty for inequitable conduct is severe, as an entire patent is rendered unenforceable.”

During prosecution, the examiner rejected the application based on Abbott’s own ‘382 patent.  In response, Abbott’s Director of Research submitted an affidavit attesting that the one skilled in the art would not consider the ‘382 patent to teach the invention as claimed in the ‘551 patent. [The claimed invention was a glucose-memter electrode strip without an intervening membrane layer — with the absense of the membrane being the distinguishing feature.]  Based on that representation, the Examiner allowed the patent to issue. Meanwhile, in Europe, Abbott made the statement that the stated distinction was only a “safety measure” and was “preferred” but not necessary. [“It is submitted that this disclosure is unequivocally clear. The protective membrane is optional, however, it is preferred when used on live blood.”]

Based on these facts, the Federal Circuit found the statements material:

To deprive an examiner of the EPO statements—statements directly contrary to Abbott’s representations to the PTO—on the grounds that they were not material would be to eviscerate the duty of disclosure. Moreover, if this could be regarded as a close case, which it is not, we have repeatedly emphasized that the duty of disclosure requires that the material in question be submitted to the examiner rather than withheld by the applicant.

Lawyer Argument Regarding Prior Art: In several cases, the Federal Circuit has held that contradictory representations made during the prosecution of other patent applications should not be considered material to patentability if made in the form of lawyer-argument. See Innogenetics. Here, the appellate panel distinguished those cases because they all involved US applications rather than statements made to different institutions.

However, all of the cases Abbott cites involve patentees who simply made representations to the PTO about prior art in order to secure the allowance of their patents.  None of these cases involved a situation in which contradictory arguments made in another forum were withheld from the PTO. They do not speak to the applicant’s obligation to advise the PTO of contrary representations made in another forum. Before the EPO, Abbott made statements that contradicted the representations Abbott made to the PTO regarding the ’382 patent. An applicant’s earlier statements about prior art, especially one’s own prior art, are material to the PTO when those statements directly contradict the applicant’s position regarding that prior art in the PTO. See 37 C.F.R. § 1.56(b)(2). In any event, the representations to the PTO were not merely lawyer argument; they were factual assertions as to the views of those skilled in the art, provided in affidavit form.

Intent: The Federal Circuit agreed that the lower court’s finding of subjective intent was “amply supported.”

Holding:

Because the district court’s findings that the EPO submissions were highly material to the prosecution of the ’551 patent and that Pope and Dr. Sanghera intended to deceive the PTO by withholding those submissions were not clearly erroneous, the district court did not abuse its discretion in holding the ’551 patent unenforceable due to inequitable conduct.

Judge Linn filed a dissenting opinion: Judge Linn argues (1) that there is an explanation for the statements that does not lead to them being directly contradictory and (2) that the individuals involved “produced a good faith explanation as to why they withheld the EPO submissions.”  Such a good faith explanation should defeat charges of inequitable conduct if it is plausible.

The question, thus, is not whether it is plausible that the information is immaterial—a question asked under the objective materiality prong—but rather, whether it is plausible that the individuals subjectively believed that the reference was immaterial at the time they withheld it—a question presented under the subjective intent prong.

 

 

What Does a Patent Examiner Do with 900+ References?

Recently issued patent number 7,651,688 is not too remarkable. Its three claims cover an "antibody composition" with a particular arrangement of "sugar chains." The oddity is that the first 10-pages of the patent document are filled with a listing of over 900 references submitted by the applicant in a series of six information disclosure statements. (The examiner included an additional nine references based on her search of the art).

The most common type of reference submitted in this case were documents from the file-histories of other US patent applications owned by the same entity (Kyowa Hakko Kirin Pharma, Inc.). Many of the submitted references are actually from the file-histories of related-cases being examined by the same examiner. See table below:

881.    Non-Final OA issued Oct. 17, 2007 in U.S. Appl. No. 10/581,413. 882.    1.111 Amendment filed Apr. 17, 2008 in U.S. Appl. No. 10/581,413. 883.    Restriction Requirement issued Jul. 28, 2008 in U.S. Appl. No. 10/581,413. 884.    Final OA issued Dec. 11, 2008 in U.S. Appl. No. 10/581,413.

The result here is that the file history includes 13,689 pages of non-patent or foreign prior art. Most of those documents were submitted after the applicant had already received a notice of allowance.

Based on my cursory reading of the file history, I do not see that the prosecuting firm (Sughrue) did anything improper or wrong in this case. To the contrary, based on recent inequitable conduct cases, the patentee is clearly hoping to avoid charges of inequitable conduct based on 'hiding' references. Of course, the applicant did not indicate which (or which parts) of the 900+ references are most relevant and everyone is clear that the examiner is not going to read all of the references. As one practitioner wrote to me: "The balance is way off between useful information in an IDS and covering-our-asses in regards to inequitable conduct. Something needs to give."

I contacted Ken Burchfiel of Sughrue. He provided the following on-point commentary:

Burchfiel: I can't comment on U.S. Patent 7,651,688, except to commend its excellence, and instead offer more general observations on the infectious doctrine of inequitable conduct in a time of "absolute plague" 22 years after Kingsdown. In view of the Federal Circuit's decisions in Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir. 2003) and McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007), it is prudent to provide an examiner with citations to office actions in copending applications. Until the court or Congress acts to limit the ever-expanding scope of the meandering duty of disclosure, which now encompasses information that may be of marginal significance, reasonable practitioners have little choice but to follow the mandate of the Federal Circuit and identify Office Actions in other applications that could later be found to be material.  It may also be prudent to identify relevant foreign applications and office actions in an IDS, in view of Therasense, Inc. v. Becton, Dickinson & Co., No. 2008-1511 (Fed. Cir., Jan. 25, 2010). Although the prosecution history of a foreign application cannot be used to construe patent claims, it may now render them unenforceable. The extent of disclosure required in a given case is, of course, a judgment call that depends on many factors, including the indeterminate "reasonable examiner" standard applied by the Federal Circuit. The question is not whether information cited in an IDS is helpful to the actual examiner, but rather whether it may later be deemed material to a "reasonable" examiner by a court.  While an actual examiner is required to follow the rules of practice, including the 1992 amendments to Rule 56 limiting the scope of "material" information, a "reasonable" examiner is not similarly bound under Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309 (Fed. Cir. 2006).  It is not possible, as a practical matter, to determine the scope of information that may be later be deemed material to an unreasonable "reasonable" examiner (i.e., one who, unlike actual examiners, is not fettered by the rules of practice). As the Federal Circuit again emphasized in Therasense, "if this could be regarded as a close case, which it is not, we have repeatedly emphasized that the duty of disclosure requires that the material in question be submitted to the examiner rather than withheld by the applicant. See LNP Eng'g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1361 (Fed. Cir. 2001) ("[W]hen a question of materiality is close, a patent applicant should err on the side of disclosure."); LaBounty Mfg., Inc. v. U.S. Int'l Trade Comm'n, 958 F.2d 1066, 1076 (Fed. Cir. 1992) ("[A close case] makes it all the more necessary that the [reference] should [be] disclosed to the examiner. Close cases should be resolved by disclosure, not unilaterally by the applicant.")." Whether or not this be divinest sense, it is nonetheless Therasense. A patent solicitor's life has never been an easy one.

Notes:

• Claim 1 reads as follows: An antibody composition comprising antibody molecules, wherein 100% of the antibody molecules comprising a Fc region comprising complex N-glycoside-linked sugar chains bound to the Fc region through N-acetylglucosamines of the reducing terminal of the sugar chains do not contain sugar chains with a fucose bound to the N-acetylglucosamines, wherein said antibody molecules bind to CD52.

Jury Wrong on Anticipation; But Claims are Obvious as a Matter of Law

[Updated to correct an error]

Therasense, Inc. (Abbott) v. Becton, Dickinson and Co. (Fed. Cir. 2010) (Case No. 2009-1008)

The Abbott patent covers a glucose meter designed with an additional sensor that ensures that a sufficient blood sample is obtained prior to the measurement. (Patent No. 5,628,890). Abbott sued BD and Nova Biomed for infringement. At the close of trial, the jury returned a verdict that the patent was infringed but invalid. The jury indicated that the patent was invalid for “anticipation or obviousness” and also invalid for failing the written description requirement of Section 112.

Law of Anticipation: On appeal, the Federal Circuit first determined that the jury instructions on the law of anticipation were incorrect. Notably, the district court judge had told the jury that “for anticipation, it is sufficient if the single reference would have informed those skilled in the art that all of the claimed elements could have been arranged as in the claimed invention.”  (emphasis added). Of course, anticipation requires that the reference disclose the same elements in the same arrangement. 

The requirement that the prior art elements themselves be “arranged as in the claim” means that claims cannot be “treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.” Quoting Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984).

Harmless Error: Under Federal Circuit law, erroneous jury instructions will lead to vacatur unless the error “could not have changed the result.”  Here, the jury decided obviousness and anticipation together and the Federal Circuit found that the overwelming evidence of obviousness renders the error on anticipation “harmless.”

“[A]n erroneous instruction on the law of anticipation could not have changed the result in this case if claims 11 and 12 would have been obvious as a matter of law, such that no reasonable jury could have returned a verdict that the claims are not obvious.”

Obvious as a Matter of Law: The appellate panel held here that the asserted claims “would have been obvious over [the Nankai reference] as a matter of law.”  The court’s approach to his holding of obviousness will be important for future summary judgment motions.  In particular, Abbott’s downfall was its own broad claim language that encompassed the prior art.  One clear difference between the claims and the prior art was admitted by the patentee to be “insubstantial.”

Written Description: Because the claims were obvious, the court did not consider the written description appeal.

Cross Appeal: BD filed a cross-appeal in the case asking the court to overturn the holding of infringement. The Federal Circuit rejected that cross-appeal — holding that it lacked jurisdiction. Notably, a cross-appeal is only appropriate when “a party seeks to enlarge its won rights under the judgment or to lessen the rights of its adversary under the judgment.” Here, the cross-appeal was improper because a holding of non-infringement would not change the ultimate outcome of the case.

Note: The Federal Circuit has also decided the related case No. 2008-1511 (Therasense, Inc. v. Becton, Dickinson and Co.). That opinion focuses on obviousness and inequitable conduct.

Patently-O Bits and Bytes No. 315: Reexaminations

• Appealing Reexaminations: Rob Sterne has published a 25–page report on “Appeals from the Central Reexamination Unit.” For the 15 BPAI decisions in inter-partes reexaminations, Stern reports that only 15 inter partes reexaminations have reached a BPAI decision. Of those, the median case took 26.5 months to brief and an additional 6.2 months for the case to be decided. Sterne’s reexamination center provides regular updates on reexamination issues.
• Reexamination Gridlock: Hal Wegner reports: “Gridlock at all levels” of the inter partes reexamination process is “choking inter partes reexamination.”
• Stays of Litigation: David Donoghue reports on the N.D. Ill case of of Card Activation Techs. V. Bebe Stores, Inc., No. 09 C 406, Slip Op. (N.D. Ill. Nov. 20, 2009) (Gottschall, J.) (case stayed pending reexamination even though the asserted claims were not those being reexamined)
• Reexamining Design Patents: Scott Daniels writes on his reexamination blog about reexamination of design patents. [Link]  Of the 12 design patent reexaminations requests, two requests were denied based on no SNQ, two patents have been confirmed as properly issued, the other eight are still pending.  Eleven of the twelve requests were submitted by third parties.
• Webinar on Reexaminations: Managing IP is offering a free webinar on “Patent Reexamination as a Litigation Strategy” on Feb 24 at 1pm. The talk is led by Novak-Druce attorneys.
• Reexamination and Litigations: Joe Mullin reports on his Prior Art blog that 60+ photo-sharing defendants may be off-the-hook based on the cancelling of FotoMedia’s patent claims in reexamination. [Link] I looked up the reexamination (No. 90/010,143) and found that the PTO has issued a final rejection about half of the patented claims.
• Crouch on Reexaminations: I’ll be speaking on reexaminations at the IP Law Summit hosted by the marcus evans company at the Doral resort in Miami Florida March 25–27. See you there.

 

Obama: "There's nothing wrong with other people using our technologies. We just want to make sure that it's licensed and you're getting paid."

The following excerpt comes from President Obama’s recent townhall meeting in Ohio on Friday, January 22, 2010:

* * * * *

Q    I'm an inventor, and I hold U.S. patent number 7,397,731.

THE PRESIDENT:  Okay.

Q    And before I ask my question I'd like to make a sales pitch.  (Laughter.)  If you can use my patent in your next election, I think you can raise a ton of money worldwide.  You should take a look at it.

THE PRESIDENT:  All right, we'll take a look.  All right.

Q    If you can't use it, the government could use it, and I could build a multibillion-dollar business here in Ohio.  (Laughter.)

THE PRESIDENT:  All right, we'll take a look at your patent.  Go ahead, what's your question?

Q    Yes, okay, it has to do with international patent rights.  With all this free trade and trade barriers falling, it's really hard for an individual like me with a global-scope patent to file all over the world and get patent protection everywhere, and having to go overseas to fight infringement.  So if you're going to drop trade barriers, maybe you can extend my patent rights to the foreign countries.

THE PRESIDENT:  Well, this is a great question, and this is a huge problem.  (Applause.)  Look, our competitive advantage in the world is going to be people like this who are using their minds to create new products, new services.  But that only helps us and helps you build a multibillion-dollar company if somebody can't just steal that idea and suddenly start making it in Indonesia or Malaysia or Bangladesh with very cheap workers. 

And one of the problems that we have had is insufficient protection for intellectual property rights.  That's true in China; it's true for everything from bootleg DVDs to very sophisticated software.  And there's nothing wrong with other people using our technologies.  We just want to make sure that it's licensed and you're getting paid.

So I've given instructions to my trade offices -- and we actually highlight this at the highest levels of foreign policy  -- that these are issues that have to be addressed because that's part of the reciprocity of making our markets open.  And so when I met with President Hu of China, this is a topic that, at dinner, I directly brought up with him.  And -- but as you point out, it's got to be sustained, because a lot of times they'll say, yes, yes, yes, but then there's no enforcement on their end.

And one of the things that we're also doing is using our export arm of the U.S. government to help work with medium-sized businesses and small businesses, not just the big multinationals to protect their rights in some of these areas, because we need to boost exports. 

Can I just say, we just went through a decade where we were told that it didn't matter, we'll just -- you just keep on importing, buying stuff from other countries, you just take out a home equity loan and max out your credit card, and everything is going to be okay.  And it looked, for a lot of people, like, well, the economy seems to be growing -- but it was all built on a house of cards.  That's what we now know.  And that's why if we're going to have a successful manufacturing sector, we've got to have successful exports.

When I went and took this trip to China, and took this trip to Asia, a lot of people said, "Well, why is he going to Asia?  He's traveling overseas too much.  He needs to be coming back home and talking about jobs."  I'm there because that's where we're going to find those jobs, is by increasing our exports to those countries, the same way they've been doing in our country. If we increased our exports -- our share of exports by just 1 percent, that would mean hundreds of thousands of jobs here in the United States.  Five percent -- maybe a million jobs, well-paying jobs.  So we're going to have to pry those markets open.  Intellectual property is part of that process.

* * * * *

 The invention claimed by the 7,397,731 patent is pretty cool. It is a “perpetual day reminder calendar.” 

The patent was prosecuted by the inventors and it is not surprising that the claims are written in some sort of modified Jepson language. Claim 1 reads as follows:

1. A perpetual day reminder calendar for illustrating day, date and month information, including:

a) a set of day indicating plates with day indica; b) a set of month indicating plates with month indica; c) a set of date indicating cubes with date indica; d) a display stand with locating guides in one of three possible configurations, top holding, center holding or bottom holding;

the improvement wherein said day indicating plates and said month indicating plates identically shaped to fit around said date indicating cubes in a manner providing an interlocking of, said plates and cubes and the shielding of unneeded indica allowing only the needed day, date and month indica to be viewed and the interlocking pieces forming a calendar stack having a unique locating interaction feature with said display stand whereby the perpetual day reminder calendar can be easily manipulated for the sequential displaying of day, date and month indica.

Restriction Requirements and Double Patenting

Boehringer Ingelheim Int’l v. Barr Labs and Mylan Pharma (Fed. Cir. 2010)

This decision holds a terminal disclaimer cannot be effective if filed after the expiration date of the earlier patent. The decision expands scope of the safe-harbor created by 35 USC 121 against double patenting allegations. Here, the court held that a divisional-of-a-divisional still qualifies for the safe harbor so long as the later-filed applications do not violate the Examiner's original grouping suggestions.

(Opinion by Judge Linn and Joined by Judge Prost) Boehringer owns several patents listed in the FDA’s Orange Book as covering the drug Mirapex (pramipexole) used to treat symptoms of Parkinson’s disease. Boehringer filed this lawsuit after the defendant generic-drug manufacturers submitted abbreviated new drug applications (ANDAs) to the FDA as part of their efforts to begin making generic versions of the Mirapex.

The Mirapex patent family began with a 1985 patent application. That family has branched-out into more than fifty world-wide patents, including three US patents. Interestingly, the patent that issued from the original application (the “earlier patent”) is not listed in the Orange Book while a later issued patent is listed. By the time of this lawsuit, the Mirapex patents had passed their ordinary 17–year term of enforceability. However, the term of the later issued patent had been extended by over 4–years based on FDA delay under 35 USC 156.

Late-Filed Terminal Disclaimer : Despite their similarity, Boehringer had not filed a terminal disclaimer in the latest-filed US application. On the last day of trial, Boehringer decided to go ahead and file a terminal disclaimer. In spite of that action, the district court still held Boehringer’s asserted patent invalid under the judicially created doctrine of obviousness-type double patenting. In its opinion, the district court rejected the terminal disclaimer as inoperative because it was filed after the original patent had expired.

On appeal, the Federal Circuit agreed that a terminal disclaimer is not effective if filed after the expiration of the earlier patent.

By failing to terminally disclaim a later patent prior to the expiration of an earlier related patent, a patentee enjoys an unjustified advantage—a purported time extension of the right to exclude from the date of the expiration of the earlier patent. The patentee cannot undo this unjustified timewise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim.

Safe harbor of Section 121: Section 121 of the Patent Act provides a safe-harbor for family–member patents that issue after a restriction requirement:

A patent issuing on an application with respect to which a requirement for restriction … has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them…

On appeal, the Federal Circuit first held that Section 121 can apply to protect “a divisional of a divisional” as in this case. Here, the court agreed that the later application was filed “as a result of” a restriction requirement because the restriction requirement in the original application was the original cause of the multiple US patent filings. The court did indicate that this safe-harbor would have been lost if the later-filed application violated the claim groupings of the restriction requirement.

In a prior decision, the court held that Section 121 applies to protect patents against double patenting rejections. See Geneva Pharms, 349 F.3d 1373, 1378 (Fed. Cir. 2003) (“Section 121 intervenes to prevent a nonstatutory double patenting rejection”).

Thus, because of the protection of Section 121, Boehringer did not need to file a terminal disclaimer.

In dissent, Judge Dyk argued that Section 121 should not apply here because the applicant had not strictly following the groupings in the original restriction requirement. Notably, the original restriction requirement divided the claims into ten groups — each group representing a separate invention while the later application was filed with claims from four of the groups.

Calculating PTA: PTO to offer "guidance for expediting requests."

The USPTO has announced it will not seek further review of the Wyeth v. Kappos decision. In that case, the Federal Circuit held that the USPTO has been under-calculating the Patent Term Adjustment (PTA) owed to patentees based on USPTO prosecution delays. In its announcement, the USPTO indicated that is “preparing guidance for expediting requests for recalculation of patent term adjustments by the USPTO in light of the Wyeth decision.”

Although I have not completed the calculations, the patents perhaps most-likely to have some additional patent-term due to the Wyeth decision are those whose prosecution history include both (1) a pendency of more than three years from filing until either the patent issues or the applicant files an RCE and (2) a delay of more than 14–months from the application filing to the mailing of the first examination notification.* Prior to Wyeth, the PTO treated the beyond-three-year-issuance delay as overlapping with the the beyond-14–month-notification delay.

In a sample of 674 patents issued in the past year and filed after May 2000, I found that 479 (71%) both (1) had a pendency (smaller of filing-to-RCE and filing-to-Issuance) of greater than three years and also (2) had not received a qualifying notification with 14–months. Although I cannot say this with certainty yet, I believe that most of these newly issued patents deserve additional patent term under the Wyeth decision.

Note :*Notifications that qualify as first examination notifications include a Notice of Allowance, Final or Non-Final Rejection, Restriction Requirement, and an Ex Parte Quayle Action. Pre-examination notices such as a notice of omitted items or notice of incomplete application typically do not satisfy the PTO’s duty of meeting the 14–month deadline.

Patently-O Bits and Bytes No. 314: Defective Appeal Briefs

• PTO’s Guidance to Reduce Non-Compliant Briefs [LINK]
• PTO's Top Eight Reasons Appeal Briefs are Non-Compliant [PDF]
• PTO’s Checklist for Notice of Appeal Filed Under 37 CFR 41.31 [PDF]
• PTO’s Checklist for Appeal Brief Filed Under 37 CFR 41.37 [PDF]
• Patently-O’s list of Defective Appeal Briefs

InventHelp Sues Gene Quinn (IPWatchDog)

Invention Submission Corporation v. Gene Quinn & IP Watchdog (N.D.N.Y.)

Plaintiff, “InventHelp” is the most recent DBA name of the Invention Submission Corporation.  Defendant, Gene Quinn runs the IPWatchdog.com website and works with the same type of individual-inventor clients as InventHelp. The following two statements are taken directly from the InventHelp website:

From 2003 to 2005, we signed submission agreements with 6,592 clients. As a result of our services, 119 clients have received license agreements for their products, and 15 clients have received more money than they paid us for these services.

From 2006-2008, we signed Submission Agreements with 5,692 clients. As a result of our services, 94 clients have received license agreements for their products, and 21 clients have received more money than they paid us for these services.

During the 2003–2008 time period, fewer than 1 out of 300 InventHelp clients “received more money than they paid [to InventHelp] for these [invention promotion] services.”

For years, Gene Quinn has been writing about InventHelp and arguing that the company is “one of the most notorious of all invention scams.”  Now, the company has sued Quinn (and his wife) under the Lanham Act for providing a “misleading representation of fact … in commercial advertising or promotion…”; for defamation (apparently under NY Law?); for trade libel; and for interference with prospective clients.

• Complaint: File Attachment: isc_v_ipwatchdog_complaint.pdf (1277 KB)
• Quinn Writes about the Case
• Invention Submission Corporation versus Jon Dudas, USPTO Director

Defective Appeal Briefs

In an earlier post, I indicated that 40% of appeal briefs are initially rejected as "defective" for failing to comply with the rules of BPAI brief-drafting practice. I pulled-up the file histories for eleven applications whose appeal briefs were rejected in the calendar year 2009. [Table Below] The most common cause for defect in this group occurred when the applicant fails to list previously cancelled claims in the brief. Although that information is included in the appendix of claims, the briefing rules as interpreted by the appeal specialists require that withdrawn/cancelled claims also be identified in the proper section of the body of the brief.

Application Serial Number	Explanation of Defect
9/967,742	Brief did not contain a statement of the status of all claims (e.g., rejected allowed, withdrawn, objected to, cancelled) or does not identify the appealed claims. (The brief did state that "all of the claims have been finally rejected, and the rejections of claims 1-18 and 23-25 is appealed herein." However, the brief did not state that claims 18-22 were cancelled. Of course, that information was in the appendix of claims.)
10/159,079	Figures of prior art that were pasted into the brief were "unreadable." (The figures were identified and the prior art was already in the file).
9/983,493	The Brief did not present an argument under a separate heading for each ground of rejection on appeal. (It appears that the problem here is that the applicant underlined the heading for each argument, but did not put the argument in bold.)
10/223,904	The Brief did not contain a reference to a co-pending application also on appeal.
8/873,974	The Brief did not list the cancelled claims. (Of course, that information was in the appendix of claims.)
10/711,517	The Brief did not present an argument under a separate heading for each ground of rejection on appeal. (The argument section did not exactly parallel the grounds-for-rejection section.)
11/484,214	The Brief did not contain a concise statement of each ground of rejection presented for review. (The applicant was appealing one rejection and stated the ground of rejection being reviewed was "Whether the claims fail to comply with the written description requirement under U.S.C. § 112, first paragraph." The revised and accepted brief instead asked "Whether claims 1-13 fail to comply with the written description requirement under U.S.C. § 112, first paragraph." Of course, the original brief also stated that "Claims 1-13 are pending. Thus, claims 1-13 are being appealed.")
10/660,659	The Brief mis-cited the prior art at one point using the wrong patent number.
10/277,646	The Brief indicated that claim 23 was "cancelled," but the applicant had not actually filed an amendment to cancel the claim.
10/914,894	The Brief did not list all claims and their status, including those withdrawn. (The amended brief added the information that claims 24-42 had been previously cancelled. Of course, that information was also available in the claim appendix.)
10/804,237	The Brief did not list the cancelled claims although that information was available in the claim appendix.

BPAI: No New Arguments (or Nuances) in BPAI Reply Brief Without Good Cause

Ex parte Nakashima (BPAI 2010); Ex parte Borden (BPAI 2010)

Two recent expanded-panel BPAI decisions both consider the situation where a patent applicant presents arguments in a reply brief even though the arguments could have been raised by in the principal brief.  Interpreting the regulations of 37 CFR 41, both decisions hold that the Board is not required “to consider such belated arguments” unless the applicant presents “good cause” for the delay in presentation.

“[W]e take this opportunity to explain that the regulations governing Appeals to the Board require that any argument not timely presented in the principal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief.” Nakashima.

Rule 41 does not discuss the potential content of a reply brief other than to note that the reply brief “shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. 37 C.F.R. § 41.41(a)(2) (2007). Prior to 1998, Rule 41 required that reply brief content focus only on points newly raised in an examiner’s answer.  That limitation, however was eliminated in the 1998 rule modifications. Despite this change, the BPAI panels both held that the “scope of the reply brief was never expanded to include belated arguments or new arguments unaccompanied by a showing of good cause.”

No New Nuances: A no-new-arguments rule is a common rule in all types of court systems.  However, the rule as implemented in Nakashima appears that it could be better stated as no-new-nuances. Nakashima argued in its principal brief that the examiner’s obviousness rejection was incorrect. The “new” argument presented in the reply brief still focused on obviousness and the same two references, but provided a new justification for a non-obviousness conclusion. In particular, Nakashima’s opening brief argued (1) that the examiner’s suggested combination of prior art teachings would “destroy” the functionality of the claimed vacuum apparatus and (2) that the examiner was incorrect in his assertion that one of the references taught a “inner belt.”  The reply brief added the nuance that there is “no reason to combine” the two prior art references because the result would not have been desirable.  According to the Board, the “no reason to combine” argument was new and therefore, the Board refused to address that issue.

Writing in dissent in Nakashima, Administrative Patent Judge Terry Owens argued that the patent applicant had a right to include new arguments in its reply brief.  Owens quotes the PTO’s comments associated with the 1998 rule change found in 62 Fed. Reg. 53168: “The former practice of permitting reply briefs based solely on a finding of a new point of argument [in the examiner answer] is eliminated thereby preventing present controversies as to whether a new point of argument has been made by the primary examiner.”

Notes:

• On remand and after filing an RCE, Nakashima should be able to argue its new points to the examiner and perhaps reach the Board again in three-years.
• The Nakashima application is owned by Brother (Japan) and is being prosecuted by the Oliff & Berridge firm (DC).
• The Borden application is owned by Sharp (US) and is being prosecuted by the Chernoff firm (Oregon).

Editorial Article: The Role of Diversity in Selecting the Next Nominee for the Federal Circuit

In the newest Patently-O Patent Law Journal article published today, Gregory Landis and Loria Yeadon discuss the role of ethnic diversity in the process of choosing upcoming nominees for the Court of Appeals for the Federal Circuit. The authors suggest that diversity should play a role in the judicial selection and that diversity likely will play such a role. 

Read Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) here: [Nominee Diversity]

The Patently-O Patent Law Journal publishes short, timely essays on patent law focused topics. The published essays are typically fewer than 2000 words.  Feel free to submit essays to me: dcrouch@patentlyo.com. 

Director Kappos on the USPTO's (lack of) Funding

In a recent e-mail to PTO employees, Director Kappos explained a real problem associated with PTO funding for the next year — that 1.9 billion dollars will not be enough for FY2010.  Although that seems like a lot of money, the PTO’s technology infrastructure is in dire need of an overhaul and the agency needs to hire additional examiners to reduce the current backlog of over one million pending applications.  It appears likely that the PTO will collect over two billion dollars in user fees for FY2010, but the current funding rules would force the agency remit any amount over $1.887 billion to the US Treasury. 

To recap, the PTO is (1) entirely funded by by user fees and (2) has significant financial needs to address shortfalls in serving its users. In this situation, the agency should at least be authorized to spend the fees that it collects.

== Kappos Letter ==

Dear Team:

I wanted to share my thoughts with you about a topic of great import to the USPTO and its mission. As you’ve read in the press, we have been engaged in ongoing discussions with members of Congress and their staff regarding our budget for the current fiscal year, which began on October 1, 2009. In addition, we have been providing technical assistance to Congress in connection with patent reform legislation, which is geared toward placing the USPTO on a sustainable funding model.

Innovation is the engine of our economy, and an efficient USPTO facilitates the timely delivery of innovative goods and services to market. What we do here at the USPTO is therefore of paramount importance to economic recovery and job creation.

As you know, the USPTO has been struggling in the last year to put itself on solid financial footing. Declines in fee revenue during the recession have adversely impacted our budget – and as a consequence forced us to make hard choices – including halting virtually all hiring, limiting overtime, and postponing critical repairs to our information technology infrastructure.

As part of the annual appropriations process, our financial team was asked to provide Congress with projected fee income for the 2010 fiscal year. This information was provided in September based on the data available at that time, when agency collections were at their low point. Congress used that projection of $1.887 billion in setting our budget for the 2010 fiscal year. That budget forces us to maintain operations on a bare-bones basis, but provides insufficient resources for us to replace employees who leave the agency, improve infrastructure or continue some of the improvements we have started to implement.

In addition, in the last two years, Congress had provided the USPTO a buffer of $100 million above our appropriation, which we were authorized to retain and spend to the extent fee income exceeded our appropriation (up to the $100 million buffer amount). That provision was removed from our fiscal year 2010 appropriation, due (we have been advised) to changes in Congressional Budget Office accounting which made it more difficult for our appropriators to provide the $100 million buffer this year.

The good news is that fee collections have begun to increase, and our current FY10 projections are more than $100 million above the $1.887 billion appropriations amount. We are actively working with Congress and the Administration to find ways to retain funds in excess of the $1.887 billion spending cap so that we can begin to backfill departing employees, improve our infrastructure, and continue to implement reforms.

But let me be clear about this: Hiring large numbers of people is not the silver-bullet solution to our problems, and we intend to hire conservatively and smartly. Most of you are aware that we have launched many reforms since I came on board last August, and we are now aggressively implementing them and looking for new ways to be more efficient on a constant basis. However, there is simply no way to get the backlog under control in a reasonable period of time without significant hiring given current attrition rates. You can run the numbers yourselves using the Patent Pendency Model and I would encourage you to do that.

Our infrastructure needs are also dire – so dire that President Obama referenced the USPTO’s antiquated IT systems in his remarks last week on modernizing government. We must improve those systems to become an efficient 21st century agency – and to be able to effectively serve the innovation community and the American economy.

It is therefore imperative that we work with Congress to develop long-term financial solutions that will establish a sustainable budget for USPTO over multiple years. Providing the USPTO with fee-setting authority as included in the pending patent reform legislation would be part of that plan. But, for the current year, we have immediate and urgent funding needs that require short-term assistance.

For your reference, I’ve attached a copy of the letter I sent to the relevant Congressional committee members on January 4, 2010.

Addressing our financial challenges so that the Agency can function effectively is my highest priority. I remain dedicated to working with our stakeholders, the Department of Commerce and members of Congress to ensure that we are able to perform our mission properly in the short-term – and to develop and adopt a sustainable funding model that will allow us to serve this country’s innovators in the future.

I want to thank you for your hard work and dedication during this challenging period for the agency. I very much look forward to hearing any thoughts you might have on this matter. Please share any comments via the Director’s Blog. I will be sure to keep you posted on any significant new developments with respect to our budget.

Regards,

David Kappos

Pendency of BPAI Appeals

The BPAI reports that their average pendency of ex parte appeals decided in the 1^st Quarter of FY2010 (Oct-Dec 2009) jumped to 9.9 months from 7.7 months for the prior three month period. [Link] BPAI Chief Judge Michael Fleming recently reported that the average pendency is likely to rise significantly in the coming year because of the large and growing backlog of cases on appeal.

The BPAI has done an increasingly good job of providing information directly to the public. However, this pendency data is highly misleading for a patent applicant considering the question of whether to appeal.  In particular, the BPAI figures are measured from the “appeal number assignment dates” which occur at some point after briefing is complete and therefore do not include time associated with briefing.

To provide a bit more details regarding pendency, I created a dataset of 2770 ex parte BPAI decisions decided in the past two-years (2008–2009) and their assocated file wrappers.  Using this dataset, I looked at appeal pendency as calculated from the filing of a notice appeal to the BPAI decision date. A summary of the results follow.

Results:

• Median appeal pendency: 23.9 months (Notice of Appeal to BPAI Decision Date).
• Median pendency of application at time of BPAI decision: 67 months (Application Filing Date to BPAI Decision Date).  I.e., the median case where an appeal has been decided had been pending for 5 1/2 years before the
• Median pendency of application family at time of BPAI decision: 79 months (Earliest Priority Date to BPAI Decision Date).
• Defective Briefs: 40% of the decided cases included at least one applicant brief that was rejected as defective.
• There are three charts below: The first shows the Cumulative Frequency of Ex Parte Appeal Pendency.  This first chart is useful in considering the odds that a particular appeal would take fewer than X-months. The second chart shows the median pendency grouped by technology center. The third chart shows the percent of decided appeals that include at least one notice of a defective appeal brief for each technology center. 
• Looking Forward: As implied by the first paragraph of this report, these figures likely understate the expected pendency for any recently filed appeal.

Notes:

• This report did not consider (1) remands without opinion; (2) decisions that were not published on the BPAI website; or (3) the fact that most notices of appeal filed by applicants do not actually result in a complete appeal process (because the examiner withdraws the rejection or the applicant decides to abandon the application or file an RCE).
• See also: http://www.patentlyo.com/patent/2007/09/how-long-does-a.html (2007).

 

Narrowing Claims in Reissue

In a prior post, I discussed the BPAI’s recent precedential decision of Ex parte Tanaka (BPAI 2009). In that case, Board held that a patentee’s failure to add an additional dependent claim (without cancelling the broader claims) was not the type of “error” that is correctable via reissue.  Tanaka had wanted to add the aditional claim as a hedge against the potential that the broader claims were found invalid.

Oblon’s Chico Gholz e-mailed me with a likely caveat to this decision based on his 2008 IP Today article. In that article he suggests that is should be proper in a reissue to merely add an additional narrower claim if the purpose is to provoke an interference. [Link] 

Patently-O Bits and Bytes

• BTLJ Student Writing Competition. The Berkeley Technology Law Journal is hosting its own writing competition for law student (JD) papers focused on some topic near the intersection of law & technology. $2,000 prize and likely publication in the journal.  Deadline is February 26, 2010. [Rules].
• Recent Jobs Posted to Patently-O Jobs:
• Baker & Hostetler LLP in Cincinnati Ohio is looking for Experienced Associates for Patent Prosecution and Patent Litigation.
• Pittsburgh Pennsylvania start-up is looking for a patent prosecution specialist for an in-house position.
• Gen-Probe in San Diego California seeks an experienced patent prosecutor.
• Morrison Foerster’s LA Office seeks an experienced patent litigator (3–4 years experience) with a preferred technical expertise in computer science or electrical engineering.
• Marsh Fischmann & Breyfogle LLP in Denver seeks a patent attorney/agent with an electrical engineering background and 2–5 years experience prosecuting patents.
• A Middletown Connecticut Firm is looking to hire a patent attorney with an engineering background and at least three years experience.
• Ryan Swarts runs the job board. Please feel free to contact him with questions. (ryan.swarts@patentlyo.com).
• Patent Damages Handbook: A committee of patent professionals and judges formed at the behest of Chief Judge Michel recently released their “Patent Damages Handbook.” The 34 page handbook is intended as a “resource for judges and lawyers” in understanding the damages phase of patent litigation “under current law.”  Download it for free.

Reissue Cannot Merely Add New Dependent Claims (Without Cancelling the Broader Claims)

Ex parte Tanaka (BPAI 2009) (Precedential)

The number of patents undergoing reissue is at an all-time high. [LINK] Often, patentees prefer the reissue route over reexamination. In a reissue, for instance, an applicant may file RCEs and divisional applications. Those common elements of patent prosecution are prohibited during reexaminations. Likewise, claims can be broadened in a reissue, but not during reexamination. Finally, the time-pressure of reissue prosecution on the patentee is small comparable to that of reexamination.

Under 35 U.S.C. § 251, the reissue process is to correct an “error” in a patent that would tend to make the patent “wholly or partly inoperative or invalid.” The statute lists specific types of errors, including “a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.”

In this case, the patent applicant (Seiko) started a reissue process claiming that its mistake was in failing to include an additional narrower dependent claim to “hedge against possible invalidity of the original claims.” The patentee did not cancel the broader claims because they were still potentially valid.

Issuing a precedential decision, the BPAI has interpreted Section 251 to bar reissue in this case.

[T]he Examiner found that because the reissue application contains all of the original patent claims and adds by reissue application only a single dependent claim 16, the reissue declaration cannot satisfy the error required under 35 U.S.C. § 251 because it cannot properly allege that the patent is wholly or partly inoperative or invalid by reason of the patentee claiming more or less than he had a right to claim in the patent.

We affirm.

This interpretation of Section 251 falls in-line with MPEP § 1402 and with the dicta of Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1565 (Fed. Cir. 1989).

Notes: Interestingly, Tanaka originally filed the reissue application and submitted a preliminary amendment that would broaden independent claim 1. (App No 10/201,948). After receiving a final rejection for the broadened claim, Tanaka changed its tactics; reinstated the original claim 1 and added a narrowed claim 16 that includes limitations not found in any other claim. At that time, Tanaka also submitted a substitute reissue declaration

Southern California Wins Trademark Battle with South Carolina

SC v. SC (Fed. Cir. 2009)

The University of South Carolina (Carolina) was founded in 1801 and is the flagship public university of the state. The University of Southern California (Southern Cal) was founded in 1880 and is a large private university located in Los Angeles. This case involves a trademark dispute between the two universities.

The case arose when Carolina attempted to register its SC-logo and Southern Cal opposed the trademark registration based on its own interlocking SC-logo. [See hats below] Carolina retaliated by moving to cancel Southern Cal's trademark registration of the initials "SC" based on the mark's suggestion of a false association between Southern Cal and the State of South Carolina.

The Trademark Appeal Board (TTAB) sided with Southern Cal in (1) refusing to register Carolina's SC-logo because it was confusingly similar to Southern Cal's logo; (2) holding that Carolina lacked standing to bring the cancellation counterclaim; and (3) finding that the initials "SC" are not unmistakably associated with the State of South Carolina. On appeal, the Federal Circuit affirmed.

Confusingly Similar: The appellate panel first agreed that the TTAB had appropriately held that the SC-logos were confusingly similar despite the lack of any actual evidence of customer confusion. (South Carolina did not appeal the Board’s findings that the marks were legally identical.)

Regarding Southern Cal's registration of the initials "SC," the appellate panel rejected the TTAB's finding that Carolina lacked standing, but affirmed the summary judgment because Carolina had not shown a genuine issue of material fact for trial.

Standing in a Cancellation Proceeding: A party damaged by a registered mark's "suggestion of a false association" has a right to file for cancellation of that mark. To have standing, the party must also show a "real interest" in the proceeding and a "reasonable basis" for the belief that the mark has (or will) cause false-association damage. The Federal Circuit found that Carolina had met this test of standing because it sold goods bearing the same mark.

Standard for Cancellation based on False Association: "To prevail on a Section 2(a) Lanham Act claim for cancellation based on false association, a party must show that the challenged mark is 'unmistakably associated' with another person or institution." Here, Carolina provided evidence that the public does associate the initials "SC" with South Carolina. However, that evidence is insufficient for a false association claim because "SC" also refers to "many entities aside from the state."

Indeed, South Carolina, in the context of another issue, submitted evidence showing that at least sixteen other universities and colleges represent themselves as "SC." In light of this evidence, South Carolina did not satisfy its burden on summary judgment. Even drawing all reasonable inferences in favor of South Carolina, evidence showing that the initials "SC" could refer to the State of South Carolina does not create a genuine issue on whether the initials uniquely point to the State.

Affirmed. 

As a native of South Carolina, I am regularly confused by uses of “SC” that refer to non-South-Carolina entities.

Patently-O Bits and Bytes No. 312

• Bruce Pokras recently made available his "Family-izer 2.4.1" web version. The free web-based software uses the EPO's INPADOC patent family database to group a list of patents into "families." This becomes quite helpful when looking at a portfolio of patents. Although the program runs on a web-browser, you will still need to download a small program to make it work. It took me about 3 minutes to get going.
• The USPTO FY2009 Annual Report provides the following numbers as of September 30, 2009:
• • Total Number of Pending Non-Provisional Utility Patent Applications: 1,139,344.
  • Percent that have Not Received a First Action from an Examiner: 53.4%

GRAPH UPDATED

Design Patent Rejections

Most utility patent applications are rejected at least once on either anticipation or obviousness.  Design patents are different.

As part of a larger project, I combed through 1049 file histories of design patents that issued in the past 12 months. Of those, 5 were rejected on novelty grounds and 8 on obviousness. This leads to a prior-art-based rejection rate of 1.2% (95% CI range of 0.7% – 2.1%).  The vast majority of the patents (81.6%) were never rejected during prosecution.  The most common rejections are under 35 USC 112 paragraphs 1 and 2.  Typically both paragraphs are asserted simultaneously.

According to the most recent USPTO annual report, design patents had an allowance rate of about 90% during the period FY2005–FY2009 as measured by the percentage of disposals that were allowances.  About half of design patents issued in 2009 were pending for less than one year.

These numbers suggest that the US design patent system is operating as a registration system rather than as one based on a true examination.  Along this vein, it is typically easier and cheaper to prosecute a design patent to issuance than to register a product design as trade dress.  To be clear, I support the idea of a design patent registration system. More on that in another post.

Patently-O Bits and Bytes No. 311

Quoted: President Obama to the Forum on Moderninzing Government:

“Believe it or not, in our patent office -- now, this is embarrassing -- this is an institution responsible for protecting and promoting innovation -- our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system. This is one of the reasons why the average processing time for a patent is roughly three years.”

The Milwaukee Journal Sentinal asks “is it time to privatize the Patent Office?”  If not the whole PTO, the editorial asks why not “privatize most of the Patent Office functions?”

GWU’s IP Speaker Series Continues at 12:00 Noon this Spring:

• January 20, Laura Heymann of William & Mary (Naming, Identity, and Trademark Law)
• February 3, Michael Ryan of GWU, (Patent Incentives in Brazil)
• February 10, Abraham Drassinower of Toronto Law (What’s Wrong with Copying)
• February 24, Jonathan Zittrain of Harvard Law (Minds for Sale)
• March 24, Mark Janis of Indiana Law (Daniel Webster's Patent Cases)
• RSVP to iplaw@law.gwu.edu

Writing Competition: Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition.  $4,000 cash will be given to a current US Law Student (including December 2009 graduates) who either attends school in Virginia or is a resident of Virginia. The prize will be awarded to author of the best IP focused law-review-style article. [Link]

 

Law School Summer Programs in Intellectual Property for 2010

When law students ask, I generally recommend pursuing practical experience rather than summer school. This year, however, summer jobs for law students are scarce -- making school a more likely alternative. Summer programs that focus on intellectual property (IP) law are especially interesting because they draw-together a critical mass of students and professors who are interested in patent and copyright issues.  In those settings, the intellectual property law discussions tend to spill-out from the class into lunch, dinner, and late-night pub conversations or debates.  In my experience, summer classes are often less rigorous than the ordinary law school classes. For that reason, I might avoid taking core-classes such as US Patent Law.

I created a simple spreadsheet guide [Download IPSummer2010] to help students locate intellectual property focused summer programs. To create the guide, I contacted all of the US patent law professors that I know and also sent an e-mail to the Deans of Academic Affairs of US Law School. There may be other programs out there -- notably, many law schools offer summer classes in IP law (although I wouldn't call those IP Programs).

Study Abroad: The list includes two programs in Munich, Germany (George Washington and Santa Clara); two programs in China (Franklin Pierce and John Marshall); and two programs on the isles (Loyola of LA in London and Franklin Pierce in Cork). Although not strictly an intellectual property program, UW/Marquette program in Giessen Germany will include an IP component.

In the US, Franklin Pierce's Intellectual Property Summer Institute (IPSI) has been a mainstay in Concord, NH. This year, they expect to offer 15 different courses focused on intellectual property (students are only allowed to earn up to 6 credits). I taught in Concord in the summer of '07 and had a fabulous time. Although the information is not yet fully available, American University is also planning a summer program in Washington DC as part of its Program on Information Justice and Intellectual Property (PIJIP). On the west coast, Santa Clara is again offering several IP classes through its Hi-Tech Summer School in Santa Clara (Silicon Valley). Folks at SUNY Buffalo (Buffalo, NY) and TM Cooley (Auburn Hills, MI) also wrote in to note that they will be offering IP classes within their summer offerings. I suspect that other schools will do the same.

All of the IP summer programs have limited enrollment.

Files: Download IPSummer2010.

Book Review: Patent Ethics: Volume I Prosecution

[This post is an old-one, I’ve moved it to the front because Amazon now has the books in stock.]

Patent Ethics: Prosecution

by David Hricik & Mercedes Meyer

ISBN: 0195338359

$225 from Amazon

Professor David Hricik is the country's leading expert on patent law ethics. Oxford University Press recently published his (and co-author Mercedes Meyer's) volume on patent prosecution ethics. This is a book that includes specific guidance for both patent attorneys and patent agents. It should be within the reach of every patent prosecutor. Topics include: guidance on client engagement and dis-engagement; the duty of loyalty to the client (perhaps as opposed to the inventor); avoiding conflicts of interest; specific areas of competency in patent prosecution; avoiding pitfalls created by the duty of candor; and issues arising from attorneys who practice both prosecution with litigation. The book also includes two very helpful appendices. The first appendix is an annotated version of the PTO ethics rules where the authors discuss nuances of each rule. The second is a set of sample forms; checklists; and client-memos -- a version of which should be used by every patent practitioner in handling client relations.

I suspect that this book will quickly become the leading authority on patent prosecution ethics. Although not at all foolproof, attorneys and agents who rely on the book for guidance will have some cover from charges of malpractice or inequitable conduct.

My only problem with the book is its price: $255! Once you add tax and shipping, the cost approaches $1 per page. Of course, that price would get you only about a 1/2 hour of Professor Hricik's time. This book is the first volume in a two-part series. The second volume will be published in 2010 and will focus on patent litigation ethics.

Patently-O Bits and Bytes No. 310: On TV

• New on NBC: “Kindreds,” created by Emmy Award winner David E. Kelley (“Boston Legal,” “The Practice,” “L.A. Law”), follows a curmudgeonly ex-patent lawyer and his group of misfit associates as their lives come together to form an unconventional kind of law practice. The series is from Warner Bros. Television and David E. Kelley Productions. Kelley is the writer and executive producer.
• New on Fox: Although it has nothing to do with patent law, Sons of Tucson was written by my college roommate.
• Last night on PBS: Copyright Criminals. I have the DVD version and will write a review once I watch it. [LINK]
• The Shark Tank: For those who have not seen it, the Shark Tank is pretty funny. The investors clearly see the importance of intellectually property rights but the nuances are almost always lost (perhaps in the editing process). [Link]
• Patent Juries: Joe Mullin has a great article at IPL&B on the jury verdict in the i4i v. Microsoft case. [Link]
• Dr. Noonan on Gene Patents and the L.A.Times: [I]n an editorial entitled "Genes and patents," the L.A. Times joined its East Coast cousin in taking an inaccurate and irrational position on an important question: patents on diagnostic methods involving genetic information. [Link]

PTA Errors: How Hard to Fight

Many recently issued patents should receive a further extension of their patent terms based on the USPTO’s miscalculations of PTA and the Federal Circuit’s decision in Wyeth v. Kappos. To receive that those additional months of protection, however, the patent holder may have to file a civil action against the PTO. The question for patentees will be whether the expected value of those additional months at the end of the patent term (years from now) are worth the up-front expense of filing suit.

I am confident that most applicants will find it not worthwhile to go about the effort of seeking the additional PTA extension. As I wrote in 2009, most patents expire before the end of their alloted patent term because applicants fail to pay the maintenance fees. [Link] That said, more than 45% of patents are maintained in-force through the patent term.

In the next few days, we may see a few firms ramping-up as PTA specialists in a way that could reduce the cost of suing.

Links:

• PTA Statistics
• Patent Maintenance Fee Payments
• USPTO Re-Calculating PTA
• Wyeth v. Kappos
• PTA for Fun and Profit (Kamholz)

As a side-note, Irving Kayton's company offers PTA Calculation for $200 per patent. (PatentTerm.Com).

Patent Term Adjustment Statistics

The Patent Term Adjustment (PTA) procedure operates to lengthen the patent term of a utility patent based on delays during patent prosecution. The current backlog of applications at the PTO suggests that most newly issued patents will have some positive adjustment.

I looked at the patent term adjustment (PTA) calculations for the 3187 utility patent issued on January 12, 2010. Eighty percent (80%) of these newly issued patents included some adjustment of the patent term based on the length of prosecution. For those with some adjustment, the average PTA is 14.5 months. The longest PTA adjustment in this group was for 74.5 months (six+ years). That patent (No. 7,647,402) took almost nine-years to issue. Under the Wyeth v. Kappos decision, I calculate that the PTA for the '402 patent would be extended by almost two additional years to 98 months (8+ years).

The chart below shows the cumulative frequency of PTA calculations for the January 12, 2010 patents using the pre-Wyeth calculations. It will be interesting to see if the PTO recalculates the PTA for these newly issued patents based on the Wyeth decision.

Appeals versus RCEs: The Wyeth PTA boost puts an additional thumb on the scale of appealing final rejections because filing of an RCE prevents any further accumulation of Part-B PTA. 35 U.S.C. 154(b)(1)(B)(i).

USPTO To Begin Re Calculating Patent Term

The USPTO has posted a notice acknowledging the Federal Circuit’s decision in Wyeth v. Kappos and indicating that the Justice Department will now determine whether to seek an en banc rehearing or petition for certiorari. In the meantime, the PTO will change its PTA calculations to “conform with the Federal Circuit’s decision.”

On January 7, 2010, the Federal Circuit issued a decision in Wyeth v. Kappos, No. 2009-1120, regarding the calculation of patent term adjustments under 35 U.S.C. 154(b). The Federal Circuit’s decision rejects the USPTO’s interpretation of the “overlap” limitation in Section 154(b)(2)(A). The Solicitor General will determine whether to seek further review of this decision. Pending that determination, the USPTO is in the process of changing the manner it will calculate patent term adjustments under Section 154(b) to conform with the Federal Circuit’s decision.

Applicants and Patent Owners dissatisfied with a patent term adjustment determination by the agency are reminded of the requirement to seek review of that determination within 180 days of patent issuance and the time periods set in the implementing regulations. See 35 USC 154(b)(4) and 37 CFR 1.705.

Although not 100% clear, the statute appears to put the duty of calculating the the patent term adjustment exclusively in the hands of the USPTO. Thus, anyone claiming additional patent term under 154(b) may only do so based on a PTA “determination made by the Director.” That theory is bolstered by the statutory limitation of 180–days for filing a civil action based on dissatisfaction with the PTA determination.

Action Item: Anyone whose patent is about to issue or whose patent has issued in the last 180–days should quickly determine whether additional patent term is due. It is unlikely that the PTO will go-back and recalculate PTA for those cases. The PTO may also be willing to re-calculate the PTA for patents issued more than 180 days ago. There is also the potential that a court would disregard the 180–day limitation in this instance based on a doctrine such as equitable tollling.

Statistics: In a prior study, I found that over 75% of recently issued patents were awarded some patent term adjustment due to delays during the patent prosecution process. The Wyeth decision should not change the number of PTA eligible patents, but instead will tend to increase the PTA calculation value. For the period June-2008 to June-2009, I found that the average PTA calculation ranged from 9 to 12 months depending on whether the patent was examined by a primary examiner or assistant examiner respectively. [Link]

See also: PTA Strategies Presentation by Polk, Brinkerhoff, & Wegner; Don Zuhn at Patent Docs; Eric Guttag’s post on IPWatchdog; Sheri Qualters at NLJ;

Reconsidering Divided Infringement

Centillion Data Systems, LLC v. Quest Corp., Appeal No. 2010-1110 (Fed. Cir. 2010)(now on appeal).

Centillon's patent No. 5,287,270 covers a system used to present user-specified pre-processed summary reports of billing information. In 2004, Centillon sued Qwest for infringement – arguing that the communications company offered this type of functionality to its customers. (LOGIC, eBill Companion, and Insite). The major problem with Centillon's claims is that they require activity on both a system computer and a customer's personal computer. This is a situation often termed divided-infringement.

Section 271 of the Patent Act creates a cause of action for unauthorized "use" of a patented invention. Centillon argued that Qwest used its invention by offering the service to its customers. However, in a 2009 ruling, the district court held that Qwest could not be liable because the company did not use each and every element of the asserted claims. Rather, some of the elements of the system were used only by Qwest customers.

In NTP v. RIM, 418 F.3d 1282 (Fed. Cir. 2005), the Federal Circuit broadly defined "use" of a patented system to focus on control and beneficial use of the system as a whole. Although that case defined use within the context of determining whether a system was used "within the United States" the district court found that a similar definition applies when determining whether a single entity used the invention. However, instead of looking at use of the system as a whole, the district court felt bound to consider "use" on an element-by-element basis. Thus:

[A] party is liable for direct infringement for the "use" of a system claim under § 271(a) if it, by itself or in combination with a third party directed by it, put each and every element of the system claim into service, i.e. exercised control over, and benefited from, the application of each and every element of the system claim.

A real trick in divided-infringement situations is that an accused infringer's actions of intentionally inducing another party to use some of the elements will not create a cause of action for infringement unless the accused infringer is shown to have control over the use of each element.

Centillion submits that the accused systems satisfy the '270 patent's limitation "said personal computer data processing means being adapted to perform additional processing" because the e-Bill client application, for example, is designed to adapt the customers' personal computers, the customers download the application following Qwest's instructions and user guide, and the customers "further manipulate" the billing data they receive from Qwest. However, as the Court noted earlier, as a general rule, to hold Qwest liable for direct infringement Centillion must demonstrate that Qwest, by itself, practiced each and every limitation of the system claim. Here, however, Qwest relies on its customers to satisfy this limitation. Although the eBill client application may have been designed to adapt the customer's personal computer, the designated evidence demonstrates that it does not actually adapt the customers computer until the customer executes the application. Moreover, Qwest does not control whether its customers load the Logic or eBill Companion client applications on their personal computers. . . . Centillion admits Qwest's customers are not obligated or contractually bound to perform additional processing on individual transaction records provided by Qwest. Rather, Qwest's customers independently determine whether or not to perform additional processing on individual transaction records by Qwest. Moreover, Qwest does not control whether its customers load the Logic or eBill Companion client applications on their personal computers. Therefore, the Court concludes that Centillion has failed to raise genuine issues of material fact regarding whether Qwest directly infringed independent claims 1 and 8, and dependent claims 10 and 46.

From a practical standpoint, the baseline solution to this problem is to properly draft patent claims to ensure that the claims focus on the operations of a single entity. Here, however, the crux of the invention was way that data from the server was communicated to the PC. The most natural way to describe the invention is to include both of those elements in the claim.

The appeal is now pending although no briefs have been filed yet. On appeal, the Federal Circuit should hold that the district court too narrowly focused its agency doctrine analysis. The courts have never held that strict control over a third-party's actions is necessary. This case is similar to ones where the actions of doctors & patients have been conflated and the court then determined whether the combined actions constituted infringement. See, for example, Eli Lilly and Co. v. Actavis Elizabeth LLC, --- F.Supp.2d ----, 2009 WL 5159650 (D.N.J. 2009)("The actions of the doctors and patients will be treated together, and will be considered a directly infringing act."); AstraZeneca LP v. Apotex, Inc., 623 F.Supp.2d 579, 598-600 (D.N.J.2009); Alza Corp. v. Andrx Pharms., LLC, 607 F.Supp.2d 614, 623 (D.Del.2009)

Notes:

• Read more about this case at PaTracer (where I originally learned of the case).
• File Attachment: CentillionSJOrder.pdf (117 KB)
• File Attachment: 5287270_Billing_system.pdf (1189 KB)
• A reexamination of the asserted patent was requested by Quest and granted by the PTO. However, after a full reexamination, the PTO confirmed the patentability of all 85 claims in the patent. (Ex. Parte Reexamination Certificate No. 7267).

Trade Dress Registration Rejected Out of Habit

The Foundation for a Christian Civilization, Inc. v. Mary Queen of the Third Millennium, Inc. (Fed. Cir. 2010)

If nothing else, the caption of this case is interesting. In 2009, the Trademark Trial and Appeal Board (TTAB) agreed with Mary Queen of the Third Millennium that the Foundation for a Christian Civilization’s “habit” could not be registered as a trademark because (1) the habit was not inherently distinctive and (2) the habit had not acquired distinctiveness. On appeal the Federal Circuit affirmed without opinion.

According to my source (Wikipedia), the Foundation is an alternate name for the American Society for the Defense of Tradition, Family and Property — “an organization of Roman Catholic Inspiration” that “opposes liberal and egalitarian ideas, policies, and trends.” The Foundation traditionally funded a Catholic counterrevolution against communism. Mary Queen of the Third Millennium is part of the a Vatical recognized “private association of Christ’s faithful.”

Members of both organizations wear the habit with its identifying markings. 

TTABVUE

 

Helping Independent Inventors Find a Patent Attorney or Patent Agent

I occasionally receive requests from independent inventors and very small companies (or their non-patent attorney representatives) looking for patent prosecution representation from someone qualified, inexpensive, and open to a fixed-budget who will honest, quality work.  Is there a reputable service that helps match prosepective patent attorneys/agents with prosepctive clients? Here are some initial thoughts:

NAPP: The best national resource that I know of for individuals and very small companies is the National Association of Patent Practitioners (NAPP).  In my experience, most NAPP members are associated with small law firms and tend to do a better job of working with individuals.  The NAPP website has a directory of members that is divided according to location and areas of technology.  Of course, the NAPP site does not include any “ratings.” Many local IP Bar Associations also include a referral service. Again, those do not include any attorney ratings.

Getting a Personal Recommendation: An inventor may not know anyone in the industry or even any other local inventors.  One easy way to find this type of information is through patent records that are all available online at the USPTO. Using the USPTO search, an inventor can locate other local inventors and then contact them to ask for a recommendation for a patent attorney or patent agent.  This is an easy way to network and find a referral. Of course, anyone trying this should be cautious about pre-filing disclosure of the invention.

Self-Help: Read Patent-It-Yourself, but still hire a patent law professional.  The best patents that I have seen are drafted with substantial participation from both inventors and patent law professionals. I have seen high quality patents that were entirely drafted and prosecuted by the non-attorney, non-agent inventor.  However, in those instances, the inventor had been through the patenting process dozens of times already—learning lessons through experience.  Hospitals are full of well trained and well-meaning professionals. However, any hospitalized patient still needs an advocate in order to make sure the patient is receiving the best care that is most in-line with the needs of the patient.  Patent prosecution is the same way, do not expect that you can simply drop-off the invention with the professional and expect that you will receive the type of patent that fills your needs.

Caveat: Since many non-attorneys are likely to read this, I’ll restate the obvious: this is not legal advice.

Other thoughts?

Design Patent Application Pendency

The USPTO continues to process design patent applications without delay. The first chart below shows the average pendency of design patent applications grouped by their month of issuance.  (Because design patent applications are not published, I can only work with issued patents.)

The secons chart provides some range for the pendency.  For the most recently issued design patents, about 50% issued within 12–months of the application filing date. Throughout the 1990’s, less than 25% of the design patents issued within 24–months.

See also: Sailing Through the PTO.

Design Patents: Symmetry Requires Elimination of Points-of-Novelty Test for Anticipation

International Seaway Trading Corp v. Walgreens Corp (Fed. Cir. 2009)

The laws of anticipation and infringement are often considered as a symmetric pair. In its classic statement on point, the Supreme Court proclaimed "[t]hat which infringes, if later, would anticipate, if earlier." Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)

Design Patent Infringement: In the 2008 en banc Egyptian Goddess decision, the Federal Circuit eliminated the 'points-of-novelty' test from the infringement analysis. Infringement of a design patent is now proven by showing that an "an ordinary observer, giving such attention as a purchaser usually gives" would find the accused design "substantially the same" as the patented design. Egyptian Goddess, 543 F.3d 665, 670 (Fed. Cir. 2008)(en banc). Egyptian Goddess has been seen as boon for design patent because infringement is now easier to prove.

Design Patent Anticipation: If the Egyptian Goddess decision made it easier to prove infringement of a design patent, the rubric of symmetry indicates that the law of anticipation should also change to make it easier to invalidate a design patent. In particular, in this case Walgreens successfully argued that the points-of-novelty test for novelty should be eliminated.

Prior to the present decision, a design patent would be considered invalid as anticipated if it failed both the points-of-novelty and the ordinary observer tests of novelty. Under the points-of-novelty test, the declared "points-of-novelty" of a patented design are compared with the closest prior art reference to determine whether those same design elements are found in the prior art. Under the ordinary observer test the patented design was compared with the alleged anticipatory reference to determine whether an ordinary observer would find the two "substantially the same."

Based on the en banc elimination of the points-of-novelty test for infringement analyses, the Federal Circuit here also eliminated the points-of-novelty test from the anticipation analysis.

Writing in Dissent, Judge Clevenger agreed with the elimination of the points-of-novelty test, but disagreed with details of the majority opinion. Namely, Judge Clevenger warned against conducting the ordinary observer test by "dissection of a design as a whole into its component pieces."

As recognized by the majority, the ordinary observer test requires assessment of the designs as a whole. . . . I agree that the differences in the inner sole designs are to be assessed as part of the anticipation inquiry. But the differences in the inner sole designs must be appreciated in conjunction with all of the design differences. This is so especially with regard to the differing number and arrangement of the circular openings on the upper of the clogs. . . . The effect of the summation of all the design differences is what counts, not the comparison of differences one by one, isolated from each other. Such an approach invites the problems we sought to eliminate by rejecting the "point of novelty" test. . . . Partial judgments of anticipation on segments of a design prohibit assessment of designs as a whole, in violation of long-standing law, starting with Gorham.

Where is the Next Federal Circuit Judge?

[Updated at 2:34pm on 1/8/10] Federal Circuit Judge Alvin Schall moved to senior status in early October 2009. Judge Schall gave notice of his intent to take senior status in August 2009, and insiders knew much earlier. This delay leads me to question: Where is the next nominee? Chief Judge Michell has announced his intention to retire in the coming months and at least one additional slot will probably open in 2010. At some-point soon this backlog may begin to resemble the PTO.

Options:

Professors: Several leading IP law professors played important roles in the Obama campaign and transition. These include Mark Lemley (Stanford); Arti Rai (Duke); Beth Noveck (now at the White House); and Chris Sprigman (UVA). Other potential professorial candidates include Margo Bagley (UVA); Jay Thomas (Georgetown); Clarisa Long (Columbia); Peter Menell (Berkeley); Pamela Samuelson (Berkeley), etc. Although practitioners would likely find some problem any law professor candidate, a more-left choice would be Josh Sarnoff (American). Other potential nominees include Sharon Barner (PTO Deputy Director) and Susan Davies (associate White House counsel). Barner is particularly interesting as a long-time patent litigator and now PTO-insider. District Court Judges: One difficulty in appointing a district court judge is that Federal Circuit judges are legally required to live close to DC. In addition, district court judges who were appointed by Clinton are for the most part now aged 60+. Finally, many district court judges are not interested in the limited subject matter of the Federal Circuit. Some potentials include Judges Kathleen O'Malley (N.D.Ohio); Patti Saris (D.Mass); John Ward (E.D.Tx.); and Leonard Davis (E.D.Tx – Bush Appointee).  District Court Judges Redux: A recent article in the Recorder notes that many California Patent Attorneys (i.e., the indefatigable Ed Reines & Co.) are pushing for N.D. Cal. Judge Jeremy Fogel to be Nominated. Judge Fogel is clearly an expert on the patent laws and patent litigation. He did not deny (or confirm) his interest in the spot. The article also mentions Judge Sleet (D.Del.), Judge O’Malley (N.D. Ohio), Judge Saris (D.Mass), Professor Lemley, and Chip Lutton (Apple). Other Redux: The largest pool of candidates comes from practice. More than half of the current Federal Circuit judges worked as intellectual property attorneys at law firms or in-house—including Judges Newman, Lourie, Gajarsa, Linn, Dyk, and Moore.

 To be clear, this list is not intended to be a short list by any means. The patent law community is ripe with attorneys who are smart, clear thinking, and experienced. My point is that the administration should move forward soon with a nomination.

Wikipedia Citations in Patents Up 59 Percent

Patent Librarian Michael White recently posted an interesting graph on the number of U.S. patents referencing Wikipedia articles:

The number of U.S. patents issued last year that contain one or more references to Wikipedia articles totaled 809, a 59 percent jump from 2008. Several years ago the USPTO banned patent examiners from using Wikipedia as a source of information for determining patentability of inventions. However, examiners and applicants continue to cite it.

White's graph is shown below.

Of course, I would also offer my own graph (below) that shows the percentage of patents citing Wikipedia grouped by issue year.

Wyeth v. Kappos: Appellate Panel Confirms that PTO Is Miscalculating (Undercalculating) Delays in Prosecution and the Corresponding Patent Term Adjustment

Wyeth and Elan Pharma v. Kappos (as USPTO Director) (Fed. Cir. 2009)

The Federal Circuit has decided an important case involving the length patent term adjustments (PTAs) that are granted due to PTO delays in patent prosecution.  Many if not most newly issued patents will be positively impacted by the decision. Those patents will be enforceable for an additional period of protection tacked to the end of the standard 20–year term that is in addition to the previously calculated PTA.

Prior to 1995, US patents were enforceable for 17–years from the date of issuance. The new rule changed the patent term to 20–years from the filing date.  In order ensure that the change did not adversely impact patentees, Congress created several patent term guarantees that are codified in 35 U.S.C. 154(b)(1)(A)-(C).

• Part A guarantees “prompt” PTO responses.  The section identifies specific types of PTO delays and the patent term is adjusted one-day for each day of PTO delay.
• Part B guarantees “no more than 3–year application pendency.” The section indicates that the patent term should be adjusted one-day for each day from the end of the three-year pendency until the patent issues.
• Part C guarantees that the patent term not be reduced based on interferences, secrecy orders, or appeals.

Several provisions limit these adjustment by reducing the patent term based on patent applicant actions (or delays) that unjustifiably lengthen prosecution. 

Overlap Limitation: Parts (1)(A) and (B) are also subject to an overlap limitation: “To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.”

The fight in this case centered around the calculation of when “periods of delay . . . overlap.” USPTO’s interpretation of the statute is that the overlap is property avoided when the term is adjusted only by the greater of guarantee (A) or (B).  Wyeth, on the other hand, argues that the guarantees only overlap when the PTO-delays identified in (A) occur after the first-three-years of prosecution have passed.

Both the DC District Court and the Federal Circuit have agreed with Wyeth’s statutory interpretation:

This court detects no ambiguity in the terms “periods of delay” and “overlap.” Each term has an evident meaning within the context of section 154(b). The limitation in section 154(b) only arises when “periods of delay” resulting from violations of the three guarantees “overlap.” 35 U.S.C. § 154(b)(2)(A). Significantly, the A and B guarantees expressly designate when and for what period they each respectively apply. Thus, this court can easily detect any overlap by examining the delay periods covered by the A and B guarantees.

At oral arguments, Judge Moore was sympathetic to the PTO’s policy position and the opinion reflects that same concern.  However, the panel held that the language of the statute should prevail.

Regardless of the potential of the statute to produce slightly different consequences for applicants in similar situations, this court does not take upon itself the role of correcting all statutory inequities, even if it could. In the end, the law has put a policy in effect that this court must enforce, not criticize or correct.

Deference: The Federal Circuit gave no deference to the PTO’s interpretation of the statute — holding that “[b]ecause the language of the statute itself controls this case and sets an unambiguous rule for overlapping extensions, this court detects no reason to afford special deference to the PTO’s interpretation.”

Affirmed. The PTO must now revise its PTA calculations.  Patentees should consider whether they are eligible for a recalculation of their PTA adjustment.

Note: Dozens of parallel cases are pending in DC & VA district courts. Many of these have been stayed pending outcome of this appeal.

Example: I pulled up recently issued patent number 7,640,000.  The application was filed on November 28, 2006 and was issued December 9, 2009.  It turns out that patent was issued on a first-office-action-allowance. That NOA was mailed October 6, 2009.  Under Part (A), the PTO was required to issue a Rejection or NOA within 14–months.  The 617 days beyond those 14–months formed the Part (A) adjustment.  Under Part (B), we look at how many days beyond three-years it took the patent to issue. Here, that calculation is 11 days.  Under the old calculation, the PTA would be 617 days because that is greater than 11 days. Under the new calculation, the PTA would be 617 + 11 = 628 days (since the Part (A) delay did not overlap with the Part (B) delay).

Dropping: Average Number of Claims Per Patent

In addition to a reduction in the number of patent applications  being filed, we are also seeing a reduction in the number of claims in each issued patent.  All things being equal, patents with more claims are typically deemed more valuable.  The reduction in claims is likely associated with cost-cutting measures taken by patent applicants. 

The Chart below is based on a random sample of 22,000 issued patents.

Means-Plus-Function Claims

In December 2009, the USPTO issued 16,000+ utility patents.  I used a software program to tally those patents that include claims with means-plus-function (MPF) claim language by looking for the terms “means for” or “means of” in the claims.

Only about 15% of the issued patent included at least one claim having an MPF limitation. Of patents that include an MPF limitation, half recite fewer than five such limitations. It appears that attorneys are using MPF claim language primarily as a back-up.  Longer claim-sets are more likely to include means-plus function language.  Thus 21% of patents with above-average-sized claimsets (by character count) include a means-plus-function limitation while only 11% of patents with below-average-sized claimsets include an MPF limitation. 

Looking claim-by-claim, I found that only 3% of the patents in my sample included means-plus-function limitations in every independent claim.

Means-plus-function terms are also also associated with non-assigned patents (usually individual inventors).  23% of non-assigned patents included an MPF limitation compared with 14% of assigned patents.

Patents arising from certain countries are much more likely to include MPF limitations. The chart below looks at the most common foreign filing jurisdiction for priority claims and reports the percentage of US patents arising from those foreign filings that include MPF limitations. 

Means-plus-function claiming is primarily focused outside of the chemical and biotech art units. Thus, only 2% of patents examined in TC1600 (Biotech & Organic Chemistry) and 7% of patents examined in TC1700 (Chemical & Materials Engineering) include MPF limitations. The remaining technology centers averaged over 18% of patents including MPF limitations.

The chart below shows means-plus function claim prevalence of the top-20 patent owners (based on the number of patents owned in the sample). These companies are all primarily focused on electronics and are all headquartered in either the US or East Asia.

The final chart shows the change in patent prosecution practice over time. Clearly, the use of means-plus-function claims has dropped over time. This is true even in the face of rising claim counts. The chart below is based on a sample of 22,000 randomly selected patents that issued 1976–2009.  I grouped the patents according to their decade of issuance and calculated the percentage that included at least one means-plus-function limitation.  *The chart also includes the December-2009 data mentioned above.

Notes: My search is likely both over and under inclusive.  Although a claimed element that uses the terms “means for” is usually interpreted as an MPF claim, it is not always so interpreted. Likewise claim terms written in functional language without any structure in the claims can be interpreted as means plus function even if the absence of the “means for” language. Also, “step for” language is typically when a method step is functionally claimed.

No Surprise: Broadly Written Means-Plus-Function Terms Limited to Structure Described in Specification

Restaurant Technologies Inc. v. Jersey Shore Chicken and Klee’s Bar & Grill (Fed. Cir. 2009)

RTI sued two restaurants for infringement of its chicken fryer patent.  The maker of the accused fryer (Oilmatic) then filed a declaratory judgment action. Those actions were consolidated and are all appealed here. The claims at issue here involve a mechanism for filtering and then disposing of waste cooking oil. After construing the claims, the district court issued a summary judgment of noninfringement. RTI appeals.

The primary disputed claim term was the “means for metering oil.” As a means-plus-function term, the element is construed to cover the structures found in the specificatoin that corresponding to the claimed function as well as their equivalents. Here, the specification discloses a squeezable trigger valve for metering out oil.  To be clear, the seemingly broadly written claim term “means for metering oil” is here interpreted to mean “a squeezable trigger valve with a nozzle and its equivalents.”  The accused device uses a dipstick assembly with a rotating positive displacement gear pump.  The appellate court agreed that “no reasonable fact finder could conclude that the accused structure is idenetical or equivalent to the relevant disclosed structure.”

[A]lthough the dipstick assembly, in conjunction with the pump [of the accused device], may perform the identical function as the [claimed] squeezable trigger valve, the differences between the dipstick assembly plus a pump on the one hand, and a squeezable trigger valve with a nozzle, on the other, are not insubstantial. For example, the dipstick assembly and pump are activated with a push button on the dipstick assembly that energizes the pump; fluid pressure in the line then overcomes a spring-loaded check valve to pour into the fryer. The accused system thus uses a pump and fluid pressure to overcome a check valve, whereas the patent claims a valve that is squeezed.

Hal Wegner writes: Restaurant Technologies represents yet another teaching example to remind the patent drafting community to either stop using “means” claiming or to recognize the severe limitations of this claim form and to comply with the requirements set forth in 35 USC § 112, ¶ 6.

Non-Infringement Affirmed

Patently-O Bits and Bytes

• Need some help from SPEs: Stanford Law Professor Mark Lemley is working on a project involving an extensive amount of patent prosecution data. He would like to clarify a few issues on patent office practice and could use the help of current or former SPEs.  One particular question that he is asking involves the assignment of examination duties within an art unit. I.e., once an application is classified, what is the process of deciding which examiner will handle the case?  You can contact him at mlemley@law.stanford.edu.
  

Enforcing Contracts between Joint Owners: WARF v. Xenon

Wisconsin Alumni Research Foundation (WARF) v. Xenon Pharma, Appeal No. 08-1351 (7th Cir. 2010).

WARF and Xenon jointly filed for patent protection for a cholesterol lowering enzyme known as Stearoyl CoA Desaturase (SCD). Warf also granted Xenon rights as an exclusive licensee and Xenon agreed to pay royalties for sales or sublicense fees. Xenon then sublicensed its rights to Novartis but did not pay royalties to WARF. Xenon's argument is based on the law of concurrent patent ownership. Generally, a patent co-owner is not required to share licensing revenue with other co-owners. The district court rejected that argument here -- finding that the contract between WARF and Xenon is controlling over the patent law default rule. At trial, a jury awarded WARF one-million-dollars in royalties. That award was reduced then by the judge to $300,000.

The Seventh Circuit has now affirmed the lower court ruling that Xenon breached its license agreement by granting a sublicense without paying WARF its share.

35 U.S.C. 262 makes clear that each Joint owner of a patent right may make use of the rights "without the consent of and without accounting to the other owners." However, §262 has a major caveat in that it only applies "in the absence of any agreement to the contrary." Picking up on that caveat, the Seventh Circuit made clear that the "statutory default rule therefore controls unless there is an agreement to the contrary." The appellate panel went on to confirm that the WARF/Xenon agreement is certainly an "agreement to the contrary" despite the fact that it does not include a specific and explicit revocation of § 262 rights.

The bargained-for exchange between the parties provided that the Foundation would forego its right to separately license the patent in exchange for receiving a share of the profits from Xenon's commercialization of the technology—either directly or via a sublicense to a third party. Xenon received a significant benefit from the agreement—the exclusive right to exploit the technology protected by the joint patent application. Xenon cannot avoid paying royalties or sublicense fees to the Foundation simply by labeling the Novartis transaction a "license" rather than a "sublicense."

Quiet Title: Xenon also filed for its own patents on PPA compounds used to suppress SCD levels. WARF claimed ownership rights in the PPA because one of its scientists had contributed to the project and sued here to quiet title and also sued for conversion. On appeal, the court sided with WARF -- finding that the WARF scientist's assignment of rights to Xenon was void because the scientist has already assigned all interest in future inventions to WARF.

Seventh Circuit: WARF originally appealed its case to the Federal Circuit. However, the Federal Circuit transferred the case to the Seventh Circuit based on a lack of subject matter jurisdiction. In a non-precedential opinion, the court held that the dispute did not "arise under the patent laws." [Link] An interesting aspect of that decision was that the court's statement that the Bayh-Dole Act (35 U.S.C. §§ 200-212) is not "patent law" when considering the question of appellate jurisdiction. The Federal Circuit refused to take the jurisdiction issue en banc. Judge Rader penned the following dissent from the en banc denial:

In an extremely short per curiam opinion with far too little explanation, the panel left the impression that it was giving away this court's jurisdiction over a broad swath of claims potentially arising from the Bayh-Dole Act, 35 U.S.C. §§ 200-212. While non-precedential, the panel's opinion nonetheless unnecessarily suggests that this court's jurisdiction to review these cases is limited. I respectfully dissent from this court's denial of rehearing en banc. The panel concluded, albeit without much analysis, that WARF's complaint did not allege that the Bayh-Dole Act creates a cause of action. Thus it was entirely unnecessary for the panel to opine as to whether the Bayh-Dole Act is a "patent law" or not. And indeed, the Bayh-Dole Act, in my view, is most certainly a patent law. While the panel dismissed the notion that the Bayh-Dole Act's "mere inclusion" in Title 35 does not make it a "patent law," it seems to me that this is actually a pretty good indicator. After all, Title 35 is itself entitled "Patents," and Chapter 18, which encompasses only §§ 200-212, is called "Patent Rights in Inventions Made with Federal Assistance." Also, the language within some of the sections of the Bayh-Dole Act suggests its provenance as a patent law. For example, 35 U.S.C. § 201(d) defines "invention" as "any invention or discovery which is or may be patentable...." Section 201(e) explains that a "subject invention" is an invention conceived of or first reduced to practice by a contractor. "Conception" and "reduction to practice" are familiar patent law terms of art. Also, § 200 states that the Act intends "to use the patent system to promote the utilization of inventions arising from federally supported research or development...." The Bayh-Dole Act is, "at its heart," a patent law, albeit a patent law that employs some government contract rules to facilitate its patent-related policy objectives. Although this court's panel opinion did not mention it, the reason that the "improvements" clause in this case does not require an infringement analysis is that the WARF/Xenon agreement features no issued patents, just patent applications. Thus, no court need perform a true infringement analysis. See GAF Building Materials Corp. v. Elk Corp., 90 F.3d 479, 483 (Fed.Cir.1996) (no declaratory judgment jurisdiction for infringement/invalidity of a design patent that had not issued when suit was filed; without an issued patent, there can be no infringement and thus no Article III controversy). Unlike GAF, however, this case features an undeniable controversy between the parties. To resolve this dispute, some court will have to compare the claims of the pending patent applications of the WARF/Xenon agreement with the alleged "improvements," and the contract's use of patent infringement parlance to define this term will necessitate some sort of patent analysis, starting with construction of the pending claims. Thus, this is a patent dispute for still another reason.

Refusing to Stay Preliminary Relief Pending Appeal

Bushnell v. Brunton (Fed. Cir. 2009)

Preliminary injunctions are often incredibly important in patent cases. The civil procedure is also fascinating.  The appeal of a preliminary injunction often involves three steps. First, an emergency request for a temporary stay of relief is filed.  If granted, the temporary stay typically lasts only until the parties can brief the question of whether relief should be stayed throughout the appeal.  The third step finally gets to the merits of the appeal. Remember though that the merits of these appeals are whether an injunction should stay in place throughout the rest of the litigation.  Thus, each step asks essentially the same questions about likelihood of success and the harms of action and inaction. 

Bushnell’s patents cover various aspects of a laser range finder. The company sued Brunton and Lanshoo in Kansas for infringement and also filed a motion for a preliminary injunction to stop the ongoing infringement.  On November 25, 2009, Judge Vratil issued the preliminary injunction and Brunton immediately requested a temporary stay from the Federal Circuit. The rotating motions judge (Judge Linn) granted a temporary stay of relief that same day (November 25, 2009). [Link] However that temporary stay was intended only to last until the court could decide whether relief should be stayed for the remainder of the PI appeal.  The decision on that question moved to a merits panel of Chief Judge Michel and Judges Schall and Linn. 

Under the Supreme Court precedent of Hilton v. Braunskill, 481 U.S. 770 (1987), an appellate court may stay relief pending appeal when the moving party establishes a strong likelihood of succeeding on the merits of the appeal or “failing that” when the party has a “substantial case on the merits and the harms factors militate in its favor.”  In this case, the Federal Circuit ruled that “Brunton has not met its burden” and immediately lifted the stay (December 30, 2009 opinion). [Link]  The only problem is that the decision is too late for the Christmas season.

False Marking: Calculating Damages Part I

The Forest Group, Inc. v. Bon Tool Co. (Fed. Cir. 2009).

The false marking statute provides for a fine of "not more than $500 for every … offense." 35 U.S.C. 292. Past cases have severely limited the false-marking damage award by holding that the sale of thousands of falsely marked items constituted a single "offense" under the statute. The Federal Circuit has rejected those cases – holding here that a qui tam plaintiff may collect up to $500 for each falsely-marked product distributed. This decision is important because it opens the door to potentially large monetary judgments in false-marking cases. Anyone who marks their products as patented or patent pending should take this opportunity to review those markings to ensure that the product being marked falls within the scope of the listed patent and that the patent continues to be valid and enforceable.

At one time Bon Tool bought & sold construction stilts that were manufactured by Forest. However, Bon Tool eventually dropped Forest as a supplier and began importing a duplicate knock-off version from China even though Forest's stilts were marked with its Patent No. 5,645,515. Forest sued for infringement. During litigation, the district court construed the claims in a way that made clear that neither the original Forest stilts nor the knockoff stilts infringed the patent. At that point (in 2007), Forest's claims were dismissed on summary judgment. For the next two years, however, the parties argued Bon Tool's counter claims – including false-marking. In 2009, the district court held that Forest was liable for false-marking because it continued to mark its products as patented even after the 2007 summary judgment decision. However, the court awarded only $500 in damages.

Parties have a reason to mark their products as patented because such marking serves as constructive notice to potential infringers—allowing a patentee to collect damages for past infringement. Under Section 287 of the Patent Act, "[i]n the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice." In theory, marking a product as patented will deter others from attempting to compete by creating a similar version of the product. In addition, manufacturers may garner some reputational benefit by indicated that their product is patented or that a patent is pending.

The false-marking statute is intended to promote competition as a counterbalance against scams and potentially overreaching claims. A successful false-marking claimant must prove two elements: first, that an unpatented article has been marked as patented; and second that the marking was done with intent to deceive the public. See Clontech Labs. Inc. v. Invitrogen Corp., 406 F.3d 1347, 1352 (Fed. Cir. 2005). Here, the Federal Circuit reviewed the district court bench-trial finding of false-marking for clear error. It found no clear error. The appellate panel did, however, hold that the district court had improperly limited the damage award to $500.

Under Section 292 of the Patent Act anyone who marks an "unpatented article with the word 'patent' … for the purpose of deceiving the public … shall be fined not more than $500 for every such offense." Although the false-marking statute has been part of the patent law for more than 150 years, it was amended in 1952. That amendment changed the damage calculation from "not less than one hundred dollars" to "not more than $500." The leading case interpreting the pre-1952 statute is the one hundred year old decision of London v. Everett H. Dunbar Corp., 179 F. 506 (1st Cir. 1910). In London, the court interpreted the statute to impose "a single fine for continuous false marking"—reasoning that a minimum penalty of $100 per falsely marked article would be out of proportion and inequitable.

[I]f we construe the statute to make each distinct article the unit for imposing the penalty, the result may follow that the false marking of small or cheap articles in great quantities will result in the accumulation of an enormous sum of penalties, entirely out of proportion to the value of the articles. . .

Despite the statutory change, recent courts have followed the London precedent – including the Bon Tool district court. On appeal, the Federal Circuit rejected that precedent – holding instead that the statute requires that each falsely marked article can serve as the basis of a separate offense. The appellate court made clear that the reasoning of London no longer applies because the statute now sets a maximum per-offense award rather than a minimum.

This does not mean that a court must fine those guilty of false marking $500 per article marked. The statute provides a fine of "not more than $500 for every such offense." By allowing a range of penalties, the statute provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities. In the case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty.

Vacated. On remand, the district court must "determine the number of articles falsely marked by Forest after November 15, 2007 [and] the amount of penalty to be assessed per article."

Links

• Discussion of the District Court Decision; Professor Tushnet; Professor Winston's Article; Pequignot v. Solo Cup; Constitutionality of the Marking Statute; Justin Gray; Patent Hawk; Richard Cauley; Shawn Gordon; Barry Barnett; Paul Ackerman; More.

Supervisory Patent Examiners: Rethinking their Role

In his most recent blog post, USPTO Director David Kappos addresses problems and potentials of the USPTO's SPE system. A SPE or Supervisory Patent Examiner serves as the direct manager and trainer for around 13-20 patent examiners. SPE's obviously play an important role in the examination process. Kappos writes:

Our first-line managers play a critical role in the achievement of USPTO goals. In fact, my management experience has taught me that first-line managers have *far* more impact on the employees they manage than anyone else in the enterprise – more ability to develop employee skills and careers, more ability to produce outcomes that are successful for both employee and the enterprise. Their day-to-day work as coaches, guides, trainers, and mentors for employees is essential to creating a supportive, effective workplace.

On Patently-O and elsewhere, patent examiners have discussed qualities of good SPEs and bad SPEs. Partially in consideration of those remarks, Director Kappos is focusing on revamping the performance review system for SPEs (AKA the performance appraisal plan or PAP). The idea is to focus SPE attention and energy in the right areas. The performance rating will be based on (1) a measure of the quality of examiner work (25%); (2) a measure of workflow productivity toward the goal of pendency reduction (25%); (3) a measure of how responsive the SPE is to Art Unit examiners as well as to inquiries from applicants (20%); (4) a measure of the SPEs service as a coach and mentor to Art Unit examiners (15%); and (5) a measure of leadership activities of the SPE (15%).

Comments on the new SPE PAP can be sent to spepapawardtaskforce@uspto.gov. (Can someone send me further details on the plan?)

Read Kappos Comments