Patent Law Blog (Patently-O)

Update on Patent Pendency

The following table looks at the number of years-in-prosecution for utility patents issued on April 27, 2010. I divided the issued patents into four groups depending whether the patent claims priority to either a foreign application or a US non-provisional. The table reports the average pendency for each group as well as the relative number of patents in the group.   

Average Pendency of Utility Patents Issued April 27, 2010 (Filing Date to Issue Date, Not Including Priority Claims)		Claim Priority to Foreign Application
		Yes	No
Claim Priority to US Non-Provisional Application	Yes	2.8 years (6% of Patents)	3.2 years (15% of Patents)
	No	4.1 years (33% of Patents)	4.1 years (45% of Patents)

I used the same patent application pendency data to create the cumulative frequency chart below. As can be seen, the median pendency is a bit under four years. 90% of patents issue within six years.

False Marking Fine Set at Point Above Gross Revenue

Forest Group v. Bon Tool (S.D. Tex 2010)

In a 2009 decision, the Federal Circuit remanded the Bon Tool case with instructions to the district court to recalculate the false marking fine owed to the defendant-counter-claimant.  In particular, the Federal Circuit held that each falsely marked article represented a separate and distinct act of false marking, each subject to a fine of up to $500.

On remand, Judge Atlas of the Southern District of Texas determined that the false-marking fine should at least recapture all of the revenue generated from the sale Forest’s falsely-marked products.  Here, Forest had sold falsely marked stilts “at prices between $103.00 and $180.00.”  The court then set the false-marking fine at the highest price-point of $180 per article.  Because only 38 pair of falsely marked stilts were sold, the total fine was relatively small — less than $7,000. Half of the fine will be given to the US Government and half collected by Bon Tool.

The Court finds that the appropriate fine in this case is $180.00 per article, the highest point of the price range. This will deprive Forest of more than it received for the falsely-marked stilts, fulfilling the deterrent goal of § 292’s fine provision. Based on the $180.00 per article fine for the 38 falsely-marked stilts of which there was evidence at trial, the Court imposes against Forest a fine of $6,840.00 pursuant to § 292.

Judge Atlas based her decision on the Federal Circuit’s three stated policy goals of: discouraging mis-marking; encouraging enforcement; and avoiding “disproportionately large penalties.”  Bon Tool had asked for the maximum $500 per offense.  Forest argued that the fine should be limited to its profits on the falsely-marked products of $2,400.

The Impact of Wyeth on Patent Terms

In January 2010, the Federal Circuit held that the Patent Office had been undercalculating the patent term adjustments (PTA) owed to patentees because of USPTO delays during prosecution. About 80% of issued patents receive some term adjustment. The Wyeth case did not directly impact the calculation of which cases receive an adjustment, rather the decision operates to lengthen the adjustment for those already eligible.

In order to measure the impact of the change in calculation, I compared the calculated patent term adjustment for two sets of recently issued utility patents. The first set comes from January 5, 2010 (before the Wyeth decision) and the second set comes from April 27, 2010 (after the Wyeth decision). For each set, I used all utility patents issued on the given date.

The chart below shows that the change has been substantial. The average PTA grant has increased by six-months — jumping from 14–months to 20–months. (Note — these averages only include patents with an adjustment). One patent in the April 2010 group was adjusted more than eight years and over 500 patents had term-adjustments of more than three years.

These days, any discussion of the US 20–year patent term must consider real impact of these adjustments.

Therasense v. Becton Dickinson: Federal Cicuit Grants En Banc Request to Rethink the Law of Inequitable Conduct

Therasense Inc. (now Abbott) v. Becton, Dickinson and Co. (Fed. Cir. 2010)

The Federal Circuit has granted Abbott’s request for an en banc rehearing on the issue of inequitable conduct.

The rehearing will focus on six questions of law:

1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?
2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?
3. What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?
4. Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).
5. Should the balancing inquiry (balancing materiality and intent) be abandoned?
6. Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.

Abbott’s en banc brief is due in 45 days from today. The response is due within 30 days of service of Abbot’s brief.  Briefs of amici curiae will be entertained and may be filed without leave of court. Under Fed. R. App. Proc. 29, the amicus curiae brief must be filed within 7–days of the filing of the principle brief of the party being supported. If the amicus curiae does not support either party then the brief must be field within 7–days of the petitioner’s principal brief.

En Banc Order

Comment: The correct answers to these questions depend upon the purposes of the inequitable conduct doctrine. Namely, is the doctrine intended to the behavior of patent prosecutors is is it intended to catch perpetrators. The major empirical issue is that the doctrine pushes patent prosecutors to over-compensate in ways that potentially harm the system and certainly raise the costs of patent protection.

Design Patents: Eliminating the Ornamental/Functional Dichotomy

Richardson v. Stanley Works, Inc. (on petition for en banc rehearing at the Federal Circuit, 2010)

In its March 9, 2010 decision, the Federal Circuit held that design patent infringement should focus only on ornamental aspects of the patented design. Richardson’s Design Patent No. D. 507167 covers a multi-function carpentry tool (a FUBAR). On appeal, the Federal Circuit affirmed that Arizona district court properly “factored out” functional elements during the claim construction process and that the ornamental features of the patented design (upper right) were not similar-enough to the ornamental features of the Stanley Works FUBAR (lower right). 

Now, Richardson has petitioned the Federal Circuit for an en banc rehearing based on the argument that the focus on ornamental features creates a “points-of-ornamentation” test that is contrary to Gorham v. White.  The AIPLA and Apple Computers have both filed briefs in support of the rehearing.

In a comical (but serious) diagram, AIPLA shows the results of “factoring out” functional elements of the Richardson design. The AIPLA concludes that the “panel’s approach (which seeks to separate out ornamental and functional elements) conflicts with the tenet that a design patent protects the overall appearance of the claimed design, and is fraught with logistical problems.”

Apple argues that the functionality of an individual portion of the design should have “no direct bearing on design patent infringement or validity.”  Rather, the whole focus of design patents is to cover articles of manufacture that are inherently functional.  There is a functionality limitation for design patents, but the Supreme Court has applied that only to the design as a whole and only when the design is “dictated by function alone.”

Notes:

• File Attachment: Petition for Rehearing En Banc (00029089).PDF (989 KB)
• File Attachment: AIPLA Amicus Brief In Support of Petition (Richardson v Stanley Works) (Carani).pdf (787 KB)
• File Attachment: Richardson Brief AS FILED (APPLE). 042210.pdf (1432 KB)
• File Attachment: Federal Circuit Panel Decision 09-1354.pdf (162 KB). The original panel consisted of Judges Lourie, Dyk, and Kendall. Judge Lourie wrote the opinion. Judge Kendall is a district court judge in the Northern District of Illinois and was sitting by designation.  It is unclear to me whether Judge Kendall would be eligible to sit on the en banc panel.  She is neither an active judge nor a senior judge of the circuit who sat on the original panel as required by 28 USC 46(c).  However, 28 USC 296 indicates that a judge who sat by designation “may . . . decide or join in the decision and final disposition of all matters submitted to him during such period and in the consideration and disposition of applications for rehearing or further proceedings in such matters.” (Thanks to Matt Dowd for reference to Section 296)
• File Attachment: D507167_Multi_function_stud_climbing_and.pdf (35 KB)

Difficulties Collecting Royalties

In the recent case of ClearPlay v. Max Abecassis and Nissim Corp (Fed. Cir. 2010), the patent holder (Nissim) struggled to collect its royalty payments even after the parties signed an agreement that settled their patent infringement dispute.

Nissim's situation is not unusual. A recent report by the Invotex found that 86% of licensees underpay royalties. Most of the under-payment comes from (1) questionable license interpretations and (2) unreported sales of covered goods & services.

Although the report may be somewhat biased (Invotex makes its money by finding non-compliance) it does make clear patentees should plan to work as hard collecting royalties as they did winning the infringement lawsuit. This type of study may also be helpful for patentees seeking injunctive relief -- especially if they can show that the defendant-in-question has underpaid royalties in the past.

Read the Report

Intangible Economy Blog

Patently-O Bits and Bytes

• New Blog:
  • 1.8.8. IP Policy Blog by David Connaughton (as in the Constitutional provision, Article 1; Section 8; Clause 8.). Recent posts include "The Case for Broad Patentable Subject Matter" and "The Case for Limited Patentable Subject Matter." Connaughton is a graduating 3L at Franklin Pierce Law Center.
• New Job Postings:
  • Patent Associate at the Michael Best firm in Milwaukee, Wisc and elsewhere.
  • Senior Patent Development Manager at Intellectual Ventures in Bellevue, Wash.
  • IP Associate at the Morrison Foerster law firm in Los Angeles.
  • IP Manager of Japan IP Programs for High Tech Solutions - flexible Location.
  • Patent Litigation Associate (Computer Science) at the Klarquist Sparkman firm in Portland, Ore.
  • Patent Associate (Computer Science) at the Klarquist Sparkman firm in Portland, Ore.
  • Associate Patent Attorney at the Greenlee, Winner and Sullivan firm in beautiful Boulder, Colo.
  • Patent Attorney in the Office of the Solicitor of the USPTO.
• Upcoming Events:
  • April 27-28: Corporate IP Counsel Summit in New York City (Helmsley Hotel).
  • April 30: Federal Circuit Patent Law Year-in-Review in Kansas City.
  • May 20: Federal Circuit Judicial Conference in Washington DC. (This is Judge Michel’s final judicial conference as Chief Judge)

Department of Commerce Reports that PTO Fee-Setting-Authority and Improved Post-Grant Patent Challenge Lead to Economic Growth

The Department of Commerce has released a white-paper discussing the economic value of innovation and coupling that value to the need for reform of the US Patent Laws.  The report focuses on (1) the need for “timely patents” in order to successfully obtain venture capital financing; (2) the need for “high-quality” patents in the area of pharmaceuticals; and (3) the negative effects of poor quality patents and uncertainty in enforcement.  These background points are fairly well accepted. 

The more controversial aspect of the report are the Department’s policy conclusions. Namely, the Department of Commerce argues that (1) USPTO Fee setting authority (and what the Office does with that authority) will help to reduce the backlog; and (2) more broadly available and efficient post grant opposition proceedings will help reduce the cost of litigation. Finally, the report notes that the US patent office is “tax-free” in the sense that taxpayer money is not used to administer the office. The ability to avoid appropriations makes PTO reform a politically attractive policy lever.

USPTO fee-setting authority adds flexibility, allows the Office to more quickly raise needed funds, and also allows for the potential of aligning align fees with actual costs.  As an example, the white paper notes that “abandoned” applications pay only about one-third of the total examination costs.  That front-end cost is “subsidized by back-end patent issuance and maintenance fees that are assessed on successful applicants.”  The report states flatly that “With fee-setting authority, the USPTO could deliver on its aggressive goal of reducing to 20 months total average pendency. This anticipated 40% reduction in average pendency would offer greater certainty to innovators of all stripes, allowing for more timely and accurate R&D investments, and thus, substantially improve prospects for improvement in the Nation’s innovative performance and overall economic growth.”

A more efficient post grant review system would benefit the patent system offering a low-cost and quick mechanism to challenge weak patents. “These patents will then be taken out of the system, saving both potential litigation costs and costs to consumers from the exercise of unwarranted market power. . . . Indeed, almost every academic economist who has ever examined whether an enhanced system of post-grant review should be adopted has favored such adoption. . . . [E]nhanced post-grant review also offers advantages to those seeking to assert valid patents. Litigation-related delay in the resolution of validity contributes to uncertainty for technology investors, increasing the likelihood of underinvestment and mistaken investment, and adding transaction costs to technology commercialization.”

The report is titled “Patent Reform: Unleashing Innovation, Promoting Economic Growth & Producing High-Paying Jobs” and is signed by Professors Arti Rai (Chief Administrator of the USPTO’s office of External Affairs), Stuart Graham (Chief Economist of the USPTO), and Mark Doms (Chief Economist of the Department of Commerce).

Patent Absurdity: The Movie

Watch the Anti-Software-Patent-Movie starring Ben Klemens, Jim Bessen, Dan Ravicher, Eben Moglen, Karen Sandler, and Richard Stallman.

Patently-O Bits and Bytes

• In March 2010, I reported on the Myriad case where the district court essentially held that all gene patents are invalid.  Since then the popular press has been pushing-hard on gene patenting stories.  My former boss Kevin Noonan (MBHB) has been the go-to-man for reporters looking for a supporter of genetic patents. Noonan is articulate, opinionated, reasonable, and he looks good on camera.  In its article, the Washington Post spends most of its text discussing the fact that Noonan is the former high-school-sweetheart and ex-husband of Supreme Court Justice Sonia Sotomayor.
• Watch Kevin Noonan on 60–Minutes
• Watch Kevin Noonan on the Colbert Report

Supreme Court to Decide Case of International Copyright Exhaustion

Costco Wholesale Corp. v. Omega, S.A., Docket No. 08-1423 (Supreme Court 2010)

The Supreme Court announced today that it would decide the international copyright exhaustion case of Costco v. Omega. Costco purchased Omega watches from a third-party importer and sold the watch for $1,300 instead of the $2,000 suggested retail price. Omega (a division of Swatch) then sued Costco for copyright infringement – alleging that the sale violated the Swiss Company's US Copyright covering the “Omega globe design” on the back of the watch. In a 2008 decision, the Ninth Circuit agreed with Omega, holding that the US Copyright was not exhausted because Omega had originally sold the watches to distributors in Egypt and Paraguay. This arbitrage was available because Omega sells its watches for a higher price in the US than it does elsewhere.

The question on appeal is whether Omega's authorized foreign sale exhausted its US copyright.

Under the Copyright Act's first-sale doctrine, 17 U.S.C. § 109(a), the owner of any particular copy "lawfully made under this title" may resell that good without the authority of the copyright holder. The closest Supreme Court precedent is Quality King Distribs., Inc. v. L'Anza Research Int'l, Inc., 523 U.S. 135, 138 (1998). In that case, the unanimous court held that the copyright was exhausted and therefore that the copyright holder could not block imports of shampoo bottles with copyrighted labels. The Ninth Circuit distinguished Quality King based on the fact that the labels were originally made in the US then shipped abroad before being re-imported. According to the Ninth Circuit, the Omega watches are not subject to the first sale doctrine because they were not "lawfully made under" the US Copyright Act.

The US Patent Laws are also subject to an exhaustion doctrine – although patent exhaustion is entirely judge-made and not subject to statutory interpretation. In Fuji Photo Film Co. v. ITC, 474 F.3d 1281 (Fed. Cir. 2007), the Federal Circuit held that US patent rights are only exhausted through a first sale “in the United States.” In that case, the Federal Circuit recognized that “a different rule applies in copyright cases.” Of course, the Supreme Court's copyright decisions often interplay its discussion of the two intellectual property forms.

Patent holders that rely upon the current law to block parallel imports will likely want to file an amicus brief to justify a difference between the two regimes.

Thriving Resale Market: EBay argues that the Omega ruling "could have a detrimental effect on the ability of buyers and sellers of secondary-market goods to engage in commerce in the United States."

Copyright?: Of course, Omega would be hard-pressed to claim copyright in the watch itself. Rather, the copyright claim is in the arrangement of the 8 mm OMEGA symbol and name.  Although not strictly at issue here, the Supreme Court is not likely to overlook the fact that the copyright claim is an artificial construct that Omega is asserting to control downstream uses of its non-copyrighted watch that it otherwise could not control.

Notes:

• Supreme Court Indicates Interest
• 9^th Circuit Opinion
• Petition for Certiorari

Federal Circuit Appellate Jurisdiction over Antitrust Claims

Ferring B.V. v. Meijer, Inc., on petition for a writ of certiorari to the Supreme Court (2010)

In a controversial decision, the Court of Appeals for the Second Circuit held that a customer (rather than a competitor) has standing to bring a Walker Process monopolization claim based on the enforcement of patent that had been procured through fraud on the USPTO. In re DDAVP Direct Purchaser Antitrust Litigation, 585 F.3d 677 (2nd Cir. 2009). Although the Court of Appeals for the Federal Circuit holds exclusive jurisdiction over all appeals of final judgments in cases that are based "in whole or in part" on US patent law issues, the Second Circuit held that it had jurisdiction in this case because the antitrust claim stated in the complaint could have potentially been sustained without determining a question of patent law (even though the patent fraud issue was clearly the most important claim). The jurisdiction issue seemingly turned on the fact that the plaintiff's complaint included only one "count" of monopolization that could be proven by several different theories.

Ferring has now filed a petition for Supreme Court review focusing on the issue of appellate jurisdiction.

The question presented is whether the Second Circuit's new jurisdictional standard conflicts with this Court's decision in Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988), and with decisions of the Federal Circuit and Seventh Circuit, holding that the Federal Circuit has exclusive jurisdiction in any patent-based case in which patent issues must be resolved in order for plaintiffs to achieve the overall success of their claim and obtain all the damages (or other relief) they seek.

In Christianson, the Supreme Court held that the Federal Circuit holds exclusive jurisdiction over patent cases when the "well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff's right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims."

Comment: This case has a strong chance of being granted certiorari. Of course, patentees would generally prefer to have their cases heard by the Federal Circuit. Several trade organizations, including IPO, BIO, and PhRMA, are expected to file briefs in support of the petition.

Documents:

• File Attachment: DDAVP Cert. Petition.pdf (716 KB)
• File Attachment: 2nd Circuit Decision 065525p.pdf (103 KB)
• File Attachment: Christianson v Colt (1305 KB)

BPAI Remanding Cases Involving Computer-Oriented Means-Plus-Function Claims

In Ex party Rodriguez, the BPAI rejected a patent applicant's means-plus-function (MPF) claims as indefinite for failing to provide any corresponding structures in the specification beyond a general purpose computer. That decision followed the Federal Circuit's Aristocrat holding that "simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to 'the corresponding structure, material, or acts' that perform the function, as required by section 112 paragraph 6."

A patent examiner recently wrote-in to identify the fact that the BPAI has recently remanded dozens of pending appeals in light of Rodriguez. The remands use the following form language:

Claims ___ of the instant application contain functional language that may be indefinite under 35 U.S.C. § 112, second paragraph. See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed Cir. 2008); Ex parte Rodriquez, 92 USPQ2d 1395 (BPAI 2009). On September 2, 2008, the Deputy Commissioner for Patent Examination Policy, John J. Love, issued a memorandum entitled “Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph” . . . Thus, there is a question as to whether claims ___, and the claims which depend upon these claims, meet the requirements of being definite under 35 U.S.C. § 112, second paragraph. . . . Accordingly, it is ORDERED that the application is remanded to the Examiner to determine if claims ___, and the claims which depend upon these claims, meet the requirements of 35 U.S.C. § 112.

See, Ex Parte Chefalas et al, Appeal No. 2009012658, Ex Parte Yamanaka et al, Appeal No. 2009010948, Ex Parte Gassen et al, Appeal No. 2009008147, Ex Parte McCabe, Appeal No. 2009013024, Ex Parte Selep et al, Appeal No. 2009008213, Ex Parte Martin et al, Appeal No. 2009011586, Ex Parte Tosey, Appeal No. 2009007299, Ex Parte Van Doorn, Appeal No. 2009011085, Ex Parte Sohraby et al, Appeal No. 2009012154, Ex Parte Breese et al, Appeal No. 2009008013, Ex Parte Choe et al, Appeal No. 2009010957, Ex Parte Swart et al, Appeal No. 2009011542, Ex Parte Kakinuma et al, Appeal No. 2009007905, Ex Parte Zriny et al, Appeal No. 2010001851, Ex Parte Park, Appeal No. 2010002356, Ex Parte Cherkasova et al, Appeal No. 2010000365, Ex Parte Messick, Appeal No. 2009014361, Ex Parte Levy et al, Appeal No. 2010000512, Ex Parte Gusler et al, Appeal No. 2010000556, Ex Parte Betge-Brezetz et al, Appeal No. 2010001913.

In the Chefalas case, the independent claim in question reads as follows:

48. A data processing system for handling a virus, the data processing system comprising:

receiving means for receiving a notification of a presence of a virus on a client data processing system through a communications link;

severing means for severing communication with the client data processing system through the communications link in response to receiving the notification; and

executing means for executing virus removal processes on the server data processing system.

Interpreting Claims in an Interference: USPTO Rules Now Follow the Law

The USPTO has cancelled 37 C.F.R. § 41.200(b). That rule required the BPAI to give claims their "broadest reasonable construction in light of the specification of the patent or application in which it appears" but applied only to interference proceedings.

In interferences, one party typically copies claims from the opposition's application/patent in order to provoke an interference. The copy is then interpreted to have the same claim scope as the original. In Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009), the Federal Circuit held that Rule 41.200(b) was contrary to this rule of interpretation – thus, the rule was already dead from a legal standpoint.

75 FR 19558

Ranking of Patent Law Programs for 2011: Perhaps Six Junk-Science Ratings Are Better Than One

US News & World Report has released its updated rankings of intellectual property (IP) programs for 2011. The ranking is created by polling a subset of law professors who teach at least one intellectual property law course. The professors then list up to fifteen programs with good IP programs. Those "votes" are then used to create a ranking. Of course, most IP professors are not patent law professors. 

Despite problems with the voting procedure, it is clear that every program on this list has an excellent IP program. And, although the list is not a "patent law program" list, all of the listed law schools employ at least one full-time faculty member whose primary teaching and research interest is patent law. Likewise, although you may quibble about individual rankings, there is no question that Berkeley's program deserves to be very highly ranked.  

The US News list:

Rank	Law School
1.	University of California--Berkeley
2.	Stanford University
3.	George Washington University
4.	Boston University
5.	New York University
6.	Columbia University
7.	University of Michigan
8.	University of Houston
9.	Duke University
	Franklin Pierce Law Center (Soon to be University of New Hampshire School of Law)

Three schools were dropped from this year's USNews top-ten: Santa Clara University; Yeshiva University (Cardozo), and Chicago-Kent (IIT).  These three schools all have strong patent law programs and have recently hired additional new patent-focused faculty members.  Other schools with hefty patent-focused programs did not make the list. These include schools like George Mason, John Marshall, Suffolk, William Mitchell, etc. (See curriculum ranking below).

Boston University, Michigan, and Duke were all added to the USNews list this year, although each had previously been on the list at some point during the past decade. 

Patently-O Rankings: I have redone my list of "the top thirty law school patent programs" based solely on the number of Patently-O visits received from the associated university in the past year. There are many problems with this "study." In fact, at first glance, I would tend to take this ranking as a complete joke except for the fact that it is probably at least as good as the US News IP Specialty ranking. Perhaps six junk-science ratings are better than one. Some of the problems with my ranking include: Many schools may not use their name in their IP address — making them lose their ranking. This appears to be true of Franklin Pierce Law Center (soon to be University of New Hampshire Law School). Larger schools naturally perform better because the scores are not corrected according to the number of students. Likewise, the measure that I used allows for a few intense users to change the result. Thus, I placed an asterisk beside the University of Missouri because my own visits to Patently-O likely altered the results. Schools where students (and professors) primarily study away from campus building may also rank relatively lower.  Finally, many of the visits to Patently-O may come from other departments – such as the Technology Transfer and corporate counsel – rather than the law schools.

Rank	School	Relative Score (Based on Visits from School Domain to Patently-O)
1	George Washington University	100%
2	Columbia University, University of Missouri*	65%
4	Santa Clara University	60%
5	Stanford University	55%
6	University of Texas, University of California Berkeley	45%
8	Duke University, Harvard University, University of Wisconsin-Madison	40%
11	New York University, University of Virginia, Boston University, George Mason University, University of San Diego, Georgetown University, Cornell University	35%
18	Ohio State University, Indiana University (Bloomington), Washington University	30%
21	University of Pittsburgh, John Marshall Law School, University of Minnesota, University of Washington	25%
25	University of Illinois, Northwestern University, Suffolk University, Fordham University, University of Maryland. University of Connecticut, Rutgers University, University of Arkansas	20%

 GWU tops this year's list as it did in my 2010 ranking. Overall, the schools in the top-ten have been relatively stable. Richmond fell off the list; Berkeley, Duke, and Wisconsin moved into the top-ten.     

To add an additional layer of ranking, remember that almost 20,000 individuals access Patently-O through the free daily e-mail service. The following list ranks law school's according to the number of Patently-O e-mail subscribers. In addition to the biases mentioned above, we may have an additional bias if subscribers from some schools tend to use personal e-mail account (such as gmail) instead of the university account.

Rank	School	Relative Score (Based on the Number of Patently-O E-Mail Subscribers from School Domain)
1.	Franklin Pierce Law Center (University of New Hampshire Law School)	100%
2.	University of Michigan	60%
3.	Harvard University, Stanford University	45%
5.	George Washington University, Columbia University, University of California Berkeley, Chicago Kent Law School	40%
9.	Case Western Reserve University, University of Utah, Washington University, Elon University, Michigan State University	35%
14.	New York Law School, University of Washington, New York University, St. Louis University, University of Chicago, University of Denver, Yale University	25%

Franklin Pierce again tops this list (as it did in 2009). Harvard moved dramatically upward in the ranking.

Reputation Ranking of Patent Law Faculty: Part of the "reputation" of an IP program is based on the scholarship of its faculty. To create a ranking of faculty-member patent-law reputation, I searched for the number of law review citations associated with each IP-professor using the Westlaw JLR database. To ensure that the citations focused on patent-law reputation, the search looked for articles that somehow related to patent law.  It takes some time for citations to begin to build-up, so it is not surprising that all of the professors on this list have been teaching for at least ten years. 

Citation Rank	Faculty Name		School
1	Mark	Lemley	Stanford University
2	Robert	Merges	University of California, Berkeley
3	Rebecca	Eisenberg	University of Michigan
4	Dan	Burk	University of California, Irvine
5	Edmund	Kitch	University of Virginia
6	Rochelle	Dreyfuss	New York University
7	Paul	Goldstein	Stanford University
8	Pamela	Samuelson	University of California, Berkeley
9	Richard	Posner	University of Chicago
10	John	Duffy	George Washington University
11	Janice	Mueller	University of Pittsburgh
12	Arti	Rai	Duke University
13	Martin	Adelman	George Washington University
14	Julie	Cohen	Georgetown University
15	Maureen	O'Rourke	Boston University
16	A.S.	Oddi	University of Akron
17	Gerald	Mossinghoff	George Washington University
18	Polk	Wagner	University of Pennsylvania
19	Michael	Meurer	Boston University
20	Louis	Kaplow	Harvard University
21	Mark	Janis	Indiana University
22	Lawrence	Lessig	Harvard University
23	William	Landes	University of Chicago
24	James	Bessen	Boston University

If I had included Federal Circuit Judges in this listing, Judges Moore would jump into the top-ten. Likewise, if Donald Chisum was still teaching, he would be the clear #1.  Four GWU faculty members are listed in the top-25 and BU have three ranked faculty members. Harvard, Stanford, Berkeley, and Chicago all had two.

IP Law Journal Ranking: Many law schools have created IP-focused law journals. Using data collected by the Washington & Lee Law Library, I created the following ranking of student-edited IP Law Journals. The ranking is based on how often articles published in each journal are cited in other journals or court cases.  I only included journals with titles that include the terms "Intellectual property", "patent", or "technology." Thus, the Columbia Journal of Law & the Arts is not included in this list.

Rank	School	Journal	Relative Rank
1	Harvard University	Harvard Journal of Law & Technology	100
2	University of California, Berkeley	Berkeley Technology Law Journal	69
3	University of Michigan	Michigan Telecommunications and Technology Law Review	54.6
4	Fordham University	Fordham Intellectual Property, Media & Entertainment Law Journal	39.5
5	Stanford University	Stanford Technology Law Review	37.7
6	Santa Clara University	Santa Clara Computer and High Technology Law Journal	37.4
7	Duke University	Duke Law & Technology Review	36.3
8	Albany Law School	Albany Law Journal of Science & Technology	36.1
9	Boston University	Boston University Journal of Science & Technology Law	35
10	Columbia University	Columbia Science and Technology Law Review	33.7
11	Marquette University	Marquette Intellectual Property Law Review	31.3
12	Franklin Pierce Law Center	IDEA: The Intellectual Property Law Review	30.5
13	University of North Carolina	North Carolina Journal of Law & Technology	29.4
14	University of Minnesota	Minnesota Journal of Law, Science & Technology	29.2
15	University of Virginia	Virginia Journal of Law & Technology	28.9
16	University of Texas	Texas Intellectual Property Law Journal	28.6
17	University of Colorado	Journal on Telecommunications & High Technology Law	26.8
18	Yale University	Yale Journal of Law & Technology	25.7

IP Curriculum: Finally, William Mitchell College of Law has compiled a "Report on Intellectual Property Curricula" at the various law schools and used that to create a ranking based on course offerings.  

Ranking	Law School	Total Points
1	Santa Clara University School of Law	19.5
2	Suffolk University Law School	19
3	Whittier Law School	18
4 (tie)	Franklin Pierce Law Center	17
	Georgetown University Law Center	17
	Seton Hall University School of Law	17
	The George Washington University Law School	17
	William Mitchell College of Law	17
9	The John Marshall Law School	16
10 (tie)	Chicago-Kent College of Law Illinois Institute of Technology	15
	The University of Akron School of Law	15
12	DePaul University College of Law	14.5
13	Vanderbilt University Law School	14
14	Benjamin N. Cardozo School of Law-Yeshiva University	13.5
15 (tie)	Loyola University Chicago School of Law	13
	Thomas Jefferson School of Law	13
17 (tie)	George Mason University School of Law	12
	Michigan State University College of Law	12
	New York Law School	12
	University of Houston Law Center	12
	University of Illinois College of Law	12
	University of Pittsburgh School of Law	12
	University of San Diego School of Law	12
24	University of Richmond School of Law	11.5
25 (tie)	Arizona State University-Sandra Day O'Connor College of Law	11
	Golden Gate University School of Law	11
	Pepperdine University School of Law	11
	Seattle University School of Law	11
	Stanford University Law School	11
	University of California-Berkeley School of Law	11
	University of California-Hastings College of the Law	11
	University of San Francisco School of Law	11
	Washington University School of Law	11

  

Edward DuMont Nominated to the Court of Appeals for the Federal Circuit

The White House has announced the nomination of Edward (Ed) DuMont to the Court of Appeals for the Federal Circuit to replace Chief Judge Paul Michel who will be retiring May 31, 2010. The Senate must confirm the nomination along with the still-pending nomination of Judge O'Malley.

DuMont is a partner at WilmerHale and is an appellate specialist. He previously spent close to ten years at the Department of Justice primarily in the office of the Solicitor General and also worked in corporate transactions at Sullivan & Cromwell.

DuMont clerked for Judge Richard Posner on the Seventh Circuit in Chicago in the mid-1980's and also spent a year in working as a lawyer at a firm in Thailand. DuMont holds a BA (history) from Yale and a JD from Stanford. He is originally from Northern California, but has worked on the East Coast for the past twenty years.

DuMont has worked on several patent appeals, often alongside former US Solicitor General Seth Waxman. Recent patent appeals including Tivo v. Echostar, Princo v. ITC (pending en banc rehearing), Airgo IP v. ArvinMeritor, Agfa Corp. v. Creo Prods., Purdue v. Endo, US Philips v. ITC.

The Federal Circuit courthouse at 717 Madison Place is less than a half-mile walk from DuMont's current office on Pennsylvania Avenue. Like President Obama, DuMont is just shy of 50-years-old.

Although filling Chief Judge Michel's spot, Mr. DuMont would not automatically become the next Chief Judge. Rather, that position will move to Judge Rader who is the next most-senior active judge who has not yet reached the age of 65.

Policing Priority: Nintendo Escapes Liability Based on Patentee's Failure to Satisfy the Written Description Requirement

Anascape v. Nintendo (Fed. Cir. 2010)

A jury found that the Nintendo Wii and GameCube infringe Anascape’s U.S. patent No. 6,906,700.  The ‘700 patent claims priority to a parent application and, as it turns out, needed that priority to avoid intervening prior art.  On appeal, the Federal Circuit found the asserted claims invalid — holding that parent application could not serve as a priority document because it did not describe the invention as claimed in the ‘700 patent.

In my recent article on antedating prior art, I suggest that the prevalent practice of quickly filing provisional and other patent applications has largely supplanted patentee’s need to prove a prior invention date.  In order to claim priority to an earlier-filed patent document, that document “must meet the requirements of 35 U.S.C. 112 p1, as to that claimed subject matter.”  These requirements include enablement, written description, and best mode.

Here, the focus was on whether the priority disclosure satisfied written description requirement for the newly added claims of the ‘700 patent. Anascape’s specific problem was that the priority document identified a single “input member” that could measure movement along six degrees of freedom while the ‘700 patent claims were directed toward a controller with multiple input members that each measured fewer than six degrees of freedom.

Written Description of the Invention: The ‘700 patent’s priority document discussed prior art game controllers that were operable with fewer than six-degrees of freedom.  In its analysis, the Federal Circuit refused to consider that disclosure as applicable to the written description requirement because that disclosure “is not a description of the [claimed] invention; [rather,] it is a description of prior art joysticks as generally used in video games.”

Writing in Concurrence, Judge Gajarsa writes that this particular use of the written description requirement is “best” and preferred use of the doctrine. Namely, written description should primarily be primarily used to police priority and new matter issues and other questions of inadequate disclosure should be handled by enablement.  In my recent study of the written description requirement, I found that the USPTO is largely following Judge Gajarsa’s guidance in asserting written description rejections primarily to police priority and new matter issues.

Notes:

• This decision appears to eliminate what was likely a $100 million total payout for Anascape.  The decision also eliminates the permanent injunction that had been stayed pending appeal.
• Anascape appears to be primarily owned by the inventor of the ‘700 patent, Brad Armstrong. Armstrong prosecuted the applications himself. Armstrong has several continuations pending. In addition, Anascape appears to have a still-pending (but stayed) litigation against Nintendo based on several more patents that are currently undergoing reexamination.
• Microsoft was originally a defendant in this case, but settled in a confidential agreement.

Recordation of Assignment Creates Rebuttable Presumption that Assignment is Valid, etc.

SIRF Technology v. ITC and Broadcom (Fed. Cir. 2010)

In a 2009 decision, the International Trade Commission (ITC) ruled that SIRF and four others were violating Section 337 of the US Tariff Act of 1930 by importing and selling products with GPS devices that infringe patents owned by Broadcom (via a 2007 acquisition of Global Locate). See U.S. Patent Nos. 6,417,801, 6,606,346, 6,651,000, 6,704,651, 6,937,187, and 7,158,080.  The patents claim various forms of “assisted-GPS” that improve GPS signal reliability and location calculation speed.

Patent Ownership and Standing: One of the inventors conceived of the invention while an employee of Magellan (another GPS company) and while under an employee agreement that operated as an effective assignment of “all inventions . . . which are related to or useful in the business of the Employer . . . and which were . . . conceived . . . during the period of the Employee’s employment, whether or not in the course of the Employee’s employment.”  Magellan was aware of the inventions, but never pursued ownership rights.  Here, in an effort to disrupt Broadcom’s standing to sue, the defendants asserted that Magellan should be considered a co-owner of the patent rights.

Many patent assignment issues are determined under the appropriate state law. However, federal patent law is used to determine whether an assignment is an automatic assignment or only an agreement to later assign rights.  Applying federal law, the Federal Circuit interpreted this agreement as an automatic assignment that effectively assigns rights to inventions automatically upon their invention. 

Also as a matter of federal patent law, the court held that recordation of an assignment creates a rebuttable presumption that the assignment is valid.  Here, the appellate panel agreed that the defendants had not provided sufficient evidence to rebut that presumption.  In particular, the defendants had failed to prove that the prior-employer Magellan was the true owner. 

“If Magellan and Abraham recognized that Global Locate was the owner of the trade secret rights to the invention, it logically follows that Magellan and Abraham did not think that Magellan was the owner of similar rights that eventually became the subject of the ’346 patent.”

Patentable Subject Matter: The asserted claims included several methods of calculating position. On appeal, the Federal Circuit confirmed that those methods fit within the machine-or-transformation test of Bilski and therefore are patentable. In Bilski, the court held that the a patentable method claim must be either (a) implemented using particular machine or (b) transform an article from one state to another.  In addition, the machine-or-transformation must create a “meaningful limit on the scope of the claims.”  Here, the court held that the methods as claimed “could not be performed without the use of a GPS receiver.”  And that limits were meaningful because the GPS receiver is not simply “an obvious mechanism for permitting a solution to be achieved more quickly.” 

We also think that the presence of the GPS receiver in the claims places a meaningful limit on the scope of the claims. In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. We are not dealing with a situation in which there is a method that can be performed without a machine. Contrary to appellants’ contention, there is no evidence here that the calculations here can be performed entirely in the human mind. Here, as described, the use of a GPS receiver is essential to the operation of the claimed methods.

Comment: I certainly believe that the patents are directed toward the type of subject matter that should be patentable. However, the Federal Circuit’s analysis here is not convincing. Rather, the fact that “a GPS receiver is essential to the operation of the claimed methods” indicates that inclusion of the “GPS receiver” limitation is not meaningful. 

The question of whether the inventions were “related to or useful in the business” of Magellan was a matter of California state law.

Divided Infringement: An portion of the decision that will be interesting for patent prosecutors is directed toward joint infringement. Here, the court upheld the patentee’s efforts to direct claims toward certain particular actors and therefore avoid the Muniauction problem. Here, the steps of “communicating” and “transmitting” to a user-device were interpreted as steps that did not require end-user action even though the actual process involves end-user devices downloading the transmitted data.  Thus, despite what your speech teachers taught, communication can be one-way.

Judge Rader on Judging (An Interview with Gene Quinn)

In six weeks or so, Judge Randall R. Rader will take-over as Chief Judge of the Court of Appeals for the Federal Circuit. Gene Quinn recently sat-down with Judge Rader to discuss the Federal Circuit and his new role as Chief Judge. Gene has published the entire interview here. The content of the interview is interesting as is the fact that Judge Rader was willing to sit-down to record an unscripted give and take with Gene (a blogger and avid critic).

I have posted a few excerpts below:

Guest Essay: An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology

Following on the heels of the Federal Circuit en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., Professor Kevin Collins asks "What next?"  

Before Ariad, the uncertainty channeled much of the scholarly conversation about the written description doctrine into a binary debate, pitting those who it applied to original claims versus those who believed that it did not. After Ariad, the stage is now set for greater participation in more nuanced conversations about the role that the written description requirement does and should play in curtailing patent protection. Ariad may end one facet of the debate over written description, but it would be a lost opportunity if Ariad were interpreted to end the debate over written description more broadly and cut off these more nuanced conversations.

In this short essay, Professor Collins suggests that patent law scholarship should adopt a "trans-doctrinal approach" directed to the broader purposes and limitations of patent law rather than being confined to doctrinal silos.  The essay indicates that this holistic approach may also be helpful in explaining a perception that patent law varies greatly according to the area of technology. [Download Collins.Ariad]

Read: Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24.

Are Appeals at the Federal Circuit a “Coin Flip”?

Guest Post by Professor Ted Sichelman, University of San Diego School of Law

A general patent counsel at a Fortune 500 company recently remarked, "[T]he Federal Circuit does a coin flip and reverses district court decisions left and right. You might as well just roll the dice."[1] When I was in legal practice, many patent litigators echoed this sentiment.

In a recent article, I collected data from the University of Houston's PatStats project, Professor David Schwartz's exhaustive study on claim construction appeals, internal studies by the Federal Circuit, and the Administrative Office of the Courts to test this seemingly widespread belief.

By and large, the belief is false. Reversal rates for patent cases at the Federal Circuit are not particularly high, and roughly the same as civil reversal rates in other circuits, especially those for complex civil cases. On an issue-by-issue level, although claim construction, § 102(a) anticipation, indefiniteness, and a few other issues have noticeably high reversal rates, for most patent law issues, the rates are about average when compared with rates for private civil appeals in other circuits.

Figure 1 below shows case-by-case reversal rates at the Federal Circuit from 2000-2009 for patent infringement cases appealed from district courts. (This data includes cases that were fully reversed or vacated, and appears to take into account summary affirmances.)

Figure 1. Reversal Rates at the Federal Circuit for District Court Patent Appeals (2000-2009).

In comparison to the 8-18% rates shown in Figure 1, the private civil litigation reversal rates across the regional circuit courts are roughly 7-18%. The reversal rate in 2009 for bankruptcy cases in the regional circuit courts was 15.1%. Although it is somewhat out-of-date, the most exhaustive study of securities and contract appeals in federal courts reports reversal rates of 29.4% and 22.8%, respectively, from 1988-1997. In sum, the case-by-case reversal rates at the Federal Circuit are roughly the same or lower than the reversal rates in the regional circuits for private civil actions, particularly complex ones, like bankruptcy, securities, and contracts cases.

Figure 2 below shows issue-by-issue reversal rates at the Federal Circuit from 2000-2007 for those issues appealed in at least 20 cases (for a more exhaustive set of reversal rates, see my article). According to the data sources I used to compile these figures, these rates derive from all appeals decided by the Federal Circuit, including summary affirmances. (However, I believe some of the summary affirmances from the early 2000s may be missing from one of the sources--if so, this would only lower the issue-by-issue reversal rates, strengthening my argument.)

 

As Figure 2 shows, the average reversal rate across all issues (other than claim construction) is 18% and 21% (including claim construction). Of course, a number of issues appear to have inordinately high reversal rates--with the oft-appealed issue of claim construction (at 33%) near the top of the list. But like the case-by-case reversal rates, the average reversal rate across all issues--that is, even taking into account the large number of claim construction reversals--is roughly the same as the overall civil reversal rate in other circuits, and roughly the same or lower than case-by-case reversal rates for complex civil cases.

Thus, the actual reversal rates--whether generated on a case-by-case or issue-by-issue basis--belie the assertion that appeals at the Federal Circuit are a "coin flip" or "dice roll." When compared with reversal rates for private and complex civil actions in other circuits, the Federal Circuit rate is no different, perhaps even lower. So why do so many attorneys believe otherwise?

I think two forces are at work here. First, nearly all of the widely publicized studies on the Federal Circuit have focused on claim construction and obviousness--both of which have high reversal rates. And some of these studies excluded summary affirmances, a practice which artificially inflates the reversal rates by roughly 30%. Second, my sense is that many attorneys who regularly appear before the Federal Circuit are subject to "memory bias." Specifically, as a number of psychologists have generally recognized, these attorneys very likely recall their unpredictable appeals and forget their predictable ones.

Hopefully, the data presented here and in my article will help dispel these widespread myths and diminish some of the undeserved criticism of the Federal Circuit regarding appeals.

Ted Sichelman is an Assistant Professor at the University of San Diego School of Law, where he teaches patent law and other intellectual property courses.

[1] Patent Troubles: Does The Patent System Need Fixing?, Corporate Legal Times, June 2005, at 61 (statements of Richard J. Rodrick, General Patent Counsel, S.C. Johnson & Son Inc.).

Joint Inventorship: Federal Circuit Denies Vanderbilt’s Claim to Cialis Patent Rights

Vanderbilt Univ. v. ICOS Corp. (Fed. Cir. 2010)

Vanderbilt and ICOS have been locked in an inventorship dispute for several years over patent rights to tadalafil, the active ingredient in Cialis. The University argues that its scientists should be listed as inventors on the patents because they provided provided the building-blocks that Glaxo used in its discovery of tadalafil. (ICOS now holds the patent rights).

The district court ruled against Vanderbilt – holding that the Vanderbilt researchers could not be inventors because they did not have an independent understanding of the "complete compound claimed." On appeal, the Federal Circuit rejected that misinterpretation of the law of joint inventorship, but affirmed the final holding based on its conclusion that Vanderbilt had not provided clear-and-convincing evidence that it contributed to the invention.

The Patent Act provides some foundation for the law of joint inventorship.

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. 35 U.S.C. § 116 (1988).

The statute does not spell-out the minimum threshold level of contribution that is required of an inventor, but the Federal Circuit has held that a joint inventor must have contributed "to the conception of the claimed invention."

Although physical collaboration is not required, the Federal Circuit has also held that some level of collaboration is required. Collaboration can certainly be one-way. Thus, the Vanderbilt researchers might have some claim to inventorship rights if the Glaxo researchers had relied upon information provided by the Vanderbilt researchers. The Federal Circuit rejected that conclusion based on the lack of factual support – even though the Vanderbilt researchers did provide important material to Glaxo (in the UK), there was no evidence that the Glaxo researchers (operating in France) relied upon the material in their inventive process.

Writing in dissent, Judge Dyk argued that the proper course of action was to remand for a better decision. Judge Dyk picked up on confusion in the district court opinion that both accepted and rejected the notion that the Vanderbilt researchers contributed to the inventive process. Additionally, Judge Dyk argued that the district court's factual conclusions were directed toward reaching a conclusion to the erroneous question of law (discussed above) and that those factual conclusions were tainted by the error in a way that requires remand.

Patently-O Bits and Bytes

A number of jobs have been recently posted to the Patently-O Job Board.

• Allergan is looking for a Patent Agent with a strong chemistry background.
• Oxane Materials is looking for a Patent Liaison with a strong background in material science or inorganic chemistry.
• Bluestone Innovations is seeking an in-house patent attorney to support its new business of acquisition, licensing, and enforcement of patent rights.
• Hodgson Russ is looking for an entry-level patent attorney to work in its Buffalo NY office with a focus on mechanical engineering prosecution. PTO registration and some prosecution experience preferred.
• Celula is looking for a Patent Agent with a background in biochemistry or related fields.
• McGlinchey Stafford is looking for an experienced chemical patent prosecutor to work in its Baton Rouge office.
• A Chicago-based IP/FDA focused firm is looking for experienced patent prosecutors and portfolio managers (pharma, food, dietary supplement related). PhD's and portable book of business preferred.
• Intellectual Ventures is seeking a senior licensing attorney.
• T-Mobile is seeking an experienced patent attorney to advise on patent prosecution and other intellectual property matters.
• Marjama Muldoon is looking for an experienced patent attorney (4+ years) to join the Syracuse-based law firm.

Patent-Law Job Outlook?:

Note – I have no justification for the 2^nd order polynomial trendline that I used except that it satisfies my hope that we have hit some bottom and that things are moving up.

Patently-O Bits and Bytes: Queries from Readers

• Query 1: A means-plus-function claim is limited to corresponding structures found in the specification as well as their equivalents. In litigation, is the process of identifying corresponding structures merely claim construction that is reviewed de novo on appeal?
• Query 2: In the original application, applicant received a restriction requirement and withdrew the apparatus claims without filing divisional. Now, in the reissue application (filed within two years of issuance), the applicant wants to add new apparatus claims (that are different from the original claims), but the examiner argues that by failing to file a divisional, applicant surrendered rights to all potential apparatus claims. This appears to be an expansion of Orita, 550 F.2d 1277 (CCPA 1977), but is it proper? See MPEP 1412.01. Doyle, 293 F.3d 1355 (Fed. Cir. 2002) involved a similar situation where the patentee requested a reissue to add claims that were similar (but broader) than the original non-elected group. However the Doyle decision does not specifically decide this issue. Doyle does indicate that the "so-called Orita doctrine therefore precludes a reissue applicant from obtaining substantially identical claims to those of nonelected groups identified in an examiner's restriction requirement."

Means-Plus-Function Claims: Defining the Scope of the Corresponding Structure

Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd. (Fed. Cir. 2010)

A five-judge Federal Circuit panel has narrowed the district court's construction of the patentee's means-plus-function claim limitations. This decision might be seen as the foil to the Federal Circuit's recent broad interpretation of a means-plus-function element in Hearing Components v. Shure. Interestingly, Judges Lourie and Rader signed both opinions.

The Pressure Products patent covers a mechanism for inserting and removing catheters and pacemaker leads. The asserted claims include a "means for" facilitating the removal of both a hemostatic valve and a sheath from the disposed catheter. The parties agreed that this limitation should be interpreted as a means-plus-function limitation, but disagreed as to the proper scope of the limitation. Under 35 USC 112p6, a means-plus-function limitation is construed to "cover the corresponding structure, material, or acts described in the specification and equivalents thereof." The district court judge held that the corresponding structure described in the specification used a "score line" to allow the hemostatic valve to separate. During trial (after the close of the plaintiffs case) the Judge updated its definition to include a "linear perforation; slit; slot; tab; line; severing; weakening; or tear that can be partial or complete." The jury found infringement and awarded $1.1 million in past damages.

On appeal, the Federal Circuit reversed.

Claim Construction During Trial: The Federal Circuit first looked at the lower court's procedure and held that the timing of claim construction is in the discretion of the lower court so long as the court works to avoid "surprise and prejudice" that could accompany a late change to the construction.

While recognizing the potential for surprise and prejudice in a late adjustment to the meaning of claim terms, this court also acknowledges that the trial court is in the best position to prevent gamesmanship and unfair advantage during trial. Moreover, this court understands that a trial judge may learn more about the technology during the trial that necessitates some clarification of claim terms before the jury deliberates.

 

Scope of the Corresponding Structure: The "score line" structure was discussed in the specification and was clearly a "corresponding structure" to the means-for element. At dispute, however, was the scope of the structure disclosed. Namely, the patent specification included a "laundry list" of prior art references and the district court used the disclosures from those references to expand the definition of a "score line" beyond the structure that was literally described in the specification. On appeal, the Federal Circuit held that approach was wrong and that "the trial court impermissibly expanded the corresponding structure of claim 1 to include structures not described in the specification."

Trial courts cannot look to the prior art, identified by nothing more than its title and citation in a patent, to provide corresponding structure for a means-plus-function limitation. . . . Although many of the disclosed alternatives may well be determined to be structural equivalents permitted by section 112, paragraph 6—a question of fact for the jury—these alternative methods . . . cannot be treated as the disclosed structures for the removal means. Simply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references.

"This court remands for further proceedings in light of the proper construction of the term 'score lines.'"

Writing in Dissent, Judge Newman argued that the patentee should have been allowed to rely upon the disclosures discussed in the specification in order to identify the scope of the disclosed corresponding structure.

Inequitable Conduct: This case also includes an important procedural decision on inequitable conduct – affirming the district court's refusal to allow the defendant to amend its answer to include an inequitable conduct defense.

Federal Circuit Enforces Agreed-To but Unsigned Settlement Terms

MedPointe Healthcare v. Walter Kozachuk (Fed. Cir. 2010)(nonprecedential)

Kozachuk is a former employee of MedPointe's predecessor company and as part of his employment agreement, Kozachuk had agreed to assign "any and all inventions, discoveries, or improvements made, discovered, or conceived by him during his employment." About 18-months after leaving his job, Kozachuk began filing patent applications on clinical uses of the drug Felbamate for the treatment of neurological problems. In 2004, MedPointe sued – claiming ownership rights and breach of the employment agreement.

Settlement: In May 2008, the parties reached an agreement on the material terms of a settlement. The terms (including the transfer of patent rights to MedPoint and a small payment ($60k) to Kozachuk) were put "on the record" by the magistrate judge who was mediating the settlement negotiations. Kozachuk, however, refused to sign the final settlement agreement and instead argued that he had been inadequately represented in the negotiations. Despite the lack of a signed document, the district court agreed to enforce the settlement, ordered Kozachuk to sign the documents and hit Kozachuk with $30k in sanctions.

On appeal, the Federal Circuit affirmed. Applying New Jersey law, the court found that a settlement agreement "is a binding contract enforceable regardless whether it has been reduced to writing" and that a contract is created once the parties agree upon the "essential terms of the settlement." The kicker here was that Kozachuk had agreed to the terms on the record.

Kozachuk's complaints of inadequate assistance of counsel went nowhere: "In light of Kozachuk's high level of education, his obvious familiarity with the litigation process, and his failure to express any lack of understanding except after the fact, the court did not clearly err in finding that a binding settlement agreement had been formed."

Appellate Jurisdiction: One issue not addressed by this case is why the Federal Circuit is hearing the appeal of an employment dispute. I looked up the original complaint to find the answer: The complaint seeks to correct inventorship of the patents under 35 U.S.C. § 256. As such, the case arises under the US patent laws and therefore provides the Federal Circuit with appellate jurisdiction over the final judgment. Hunter Douglas, Inc. v. Harmonic Design, 153 F.3d 1318, 1330 (Fed. Cir. 1998).

Distinguishing MedImmune: Federal Circuit Denies Declaratory Judgment Jurisdiction

Innovative Therapies, Inc. (ITI) v. Kinetic Concepts, Inc. (KCI) (Fed. Cir. 2010)

ITI is an upstart company formed by former KCI employees. Before launching their negative-pressure wound product (that would compete directly with KCI), ITI filed a declaratory judgment action arguing that KCI's patents were invalid. As of the time of the lawsuit, no one at KCI had seen or evaluated ITI's new product.

The district court dismissed the case for lack of subject matter jurisdiction. On appeal, the Federal Circuit affirmed – holding that no "actual controversy" existed between the parties at the time the complaint was filed.

In MedImmune v. Genentech, 549 U.S. 118 (2007), the Supreme Court broadened the scope of declaratory judgment jurisdiction and rejected the Federal Circuit's somewhat formalist test that required a reasonable apprehension of suit in order to establish jurisdiction. Rather, the Supreme Court held that the totality of the circumstances should be examined to determine the existence of "a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant relief." (quoting Maryland Casualty, 312 U.S. 271 (1941)).

Here, the DJ Plaintiff (ITI) argued that the actual controversy was evident based on three factors: (1) that ITI had obtained pre-marketing approval from the FDA based on representations that its product had the "same technological characteristics" as KCI's already approved device and that KCI new of that representation; (2) that KCI employees had indicated over the telephone that the company would react "aggressively" to competitive entry into the marketplace; and (3) that KCI has a history of using litigation to enforce its patent rights.

The Federal Circuit held that these facts were insufficient to create declaratory judgment jurisdiction. In particular, the representations to the FDA were not tied directly to KCI's patent rights and therefore did not create any actual controversy over those rights. The telephone conversations (initiated by ITI) were lacking because they were initiated by ITI (rather than by the patentee) and were directed to individuals who were not in "decision-making positions" or informed about the sub rosa purpose behind the conversations. Finally, while the patentee's enforcement history can contribute to DJ jurisdiction, that fact alone is insufficient for such jurisdiction.

Comment: The practical fight in this case is not about whether litigation will continue, but rather whether the litigation should be sited in Delaware (the choice of the alleged infringer) or in North Carolina (the choice of the patentee). Soon after ITI filed its DJ action in Delaware, KCI (the patentee) filed an infringement complaint in North Carolina. The Delaware case is out for now because the court did not have DJ Jurisdiction over the case when it was originally filed. ITI had also asked the North Carolina court to transfer its case to Delaware – that motion was denied.

Although the subsequent events (KCI's filing of a lawsuit) indicated the existence of an actual case or controversy, post-filing events cannot create jurisdiction even if the complaint is amended to encompass those events.

Bilski Predictions: Justice Stevens

On the Concurring Opinions Blog, Professors Magliocca (Indiana) and Miller (Lewis & Clark) have been wondering when the Supreme Court will release its decision on patentable subject matter.

Professor Miller writes the following:

I … did a little digging on opinions issued from the Court's first two sittings – the one starting Oct 5, and the one starting Nov 2. Bilski was in the second of these two sittings . . . If the past is any indication, one would expect each Justice to write about 3 majority opinions from this group. Perhaps Justice Sotomayor, as a newbie, would be assigned 2. . . . The Court has issued opinions in 18 of the 26 cases from its first two sittings; thus [8] remain. Among those yet to issue, there are some that are likely to produce fireworks, such as (a) Stevens, the animal cruelty video/free speech case; (b) Buono, the religious symbol on gov't land; (c) McGhee, the prosecutorial immunity case; and (d) Graham and Sullivan, both challenging Florida's life-without-parole sentences for juveniles. From those two sittings, the following Justices have written the stated number of majority opinions: 3 each for Justices Scalia, Breyer, and Ginsburg. (I don't think any of them is likely to be the author of Bilski.) 2 each for Justices Roberts, Thomas, Alito, and Sotomayor. (Perhaps one of them is writing Bilski, but I doubt it.) 1 majority opinion from Justice Stevens. (I think he'll author Bilski.) 0 majority opinions from Justice Kennedy. (He'll be writing the majorities in the hot-button, sharply divided cases, because he'll be in the majority in all of them.) I don't know when Bilski will issue. But I'm pretty confident Justice Stevens will author the majority opinion. He is, of course, the author of Parker v. Flook and the principal dissenter in Diamond v. Diehr.

Delayed Examination: USPTO Proposes 12-Month Optional Fee-Deferral (and Examination Delay)

The USPTO is seeking comments on a fee-deferral program that would allow patent applicants to delay patent application processing for 12-months before paying the full non-provisional application fee. This process could be coupled with provisional application filings – effectively providing a 24-month delay.

Provisional applications have become hugely popular with almost 150,000 being filed each year. The vast majority of provisional filers use the form to delay non-provisional filing for at least 11-months. Allowing these applicants to delay further will help relieve the immediate queue of applications pending examination. From the press release:

The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period. The proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO's workload those nonprovisional applications for which the applicants have decided not to pursue examination.

The mechanism of operation of this new option is somewhat clunky*: At the end of the 12-month provisional term, the applicant would then file a non-provisional application along with the basic filing fee (currently $330) and oath. The applicant would then receive a notice of missing parts with a 12-month-from-filing response period. To "complete" the application and put it in the examination queue, the applicant must then pay the additional filing fees ($760) along with a delay surcharge ($130?).

• Comments are due by June 1 to extended_missing_parts@uspto.gov.
• USPTO Press Release
• Federal Register Notice
• *Clunky: A more straightforward approach might be preferred, but that would require Congressional action.

Formalities Review of BPAI Briefs

Director Kappos writes the following:

I thought I would let you know about a new streamlined procedure we have instituted for review of briefs filed in ex parte appeals in patent applications. Under the new procedure, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) will have the sole responsibility for determining whether appeal briefs comply with the formality requirements governing the content of these briefs. This new procedure eliminates two layers of review; previously the Patent Appeal Center and the examiner were required to review patent appeal briefs and evaluate their compliance with the formality requirements.

...

Under the streamlined procedure, only the Chief Judge and his staff will conduct a compliance review of appeal briefs, and will do so at the time the appeal brief is filed. If a brief is determined not to comply with the applicable regulations, the Chief Judge will promptly send the appellant a notice and provide a time period within which an appellant can file a corrected brief. The Chief Judge will also have the sole responsibility for determining whether corrected briefs comply with the applicable regulations and addressing any inquiries and petitions regarding notices of noncompliant briefs. Because this change affects only the internal process within the USPTO, applicants should continue to follow all procedures set forth in the regulations.

We expect this new procedure to reduce appeal pendency from the filing of a notice of appeal to the docketing of the appeal. We expect a further reduction in pendency because the streamlined procedure will increase the consistency of the review, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs.

...

Additional details about this new procedure are outlined in a Federal Register notice publishing presently. As always, comments are welcome. In fact, this entire change is the product of IP community comments. Thanks for keeping them coming!

BPAI Revised Procedure for Appeal Brief Review

As part of the PTO's efforts to streamline appeal practice, the office has (internally) announced a new procedure for reviewing appeal brief formalities. Notably, the BPAI has been given the "sole responsibility" for determining whether appeal briefs are in compliance with the formalities required by 37 CFR 41.37. The USPTO has also indicated briefs will be accepted even if they contain "minor informalities" so long as those informalities do not affect the BPAI's decisionmaking ability.

The BPAI will review each opening brief before forwarding the brief to the examiner for consideration. Once the brief is accepted by the BPAI, neither the examiner nor the Patent Appeal Center will have any power to later reject the brief as non-compliant. The non-compliance form paragraphs are also being removed from the examiner's OACS computing system.

In a 2007 study of the prosecution files of 720 cases on appeal, I found that a full 25% had been rejected as 'defective' based on formalities. [Link]. A major purpose behind this power-shift is to reduce this paperwork churning and to create more uniformity in appeal processing. This shift also allows the BPAI to collect better data on the number and types of appeals being filed.

The announcement is signed by Bob Bahr, Associate Patent Commissioner (for patent examination policy).

File Attachment: bpai_revised_procedure_20100329.pdf (217 KB)

* * * *

The chart below shows the backlog of ex party BPAI appeals (excluding reexaminations).  These only include cases where appellate briefing has been completed and jurisdiction transferred from the Examiner/TC to the BPAI.

The BPAI will be holding a roundtable on April 7.

Patently-O Bits and Bytes

• USPTO Design Day: April 6 at the USPTO. Speakers include Bob Stoll (Patent Commissioner), Jasemine Chambers (USPTO Tech Center Director), Clive Roux (ISDA), Perry Saidman (Saidman), Richard Stockton (Banner), Susan Farley (Heslen), Damon Neagle (Design IP), etc.
• USPTO BPAI Conference: April 7 at the USPTO. Speakers include Director Kappos, Federal Circuit Chief Judge Michel and Judge Rader, BPAI Chief Judge Flemming, and Vice-Chief Judges Moore and MacDonald, Greg Morse of the USPTO Central Reexamination Unit, Todd Baker (Oblon), Gary Harkcom (Greenblum), Steve Kunin (Oblon), Michael Messinger (Sterne), Brad Pederson (Patterson), Theresa Rea (Crowell), and Charlie Van Horn (Finnegan).

Hearing Components, Inc. v. Shure, Inc., Appeal No. 09-1364 (Fed. Cir. 2010)

This case has three interesting issues: (1) the definiteness of "terms of degree" claim elements; (2) interpreting means-plus-function claim limitations; and (3) the standard for appellate review of a jury's non-obviousness determination. In this decision, the resolution of each of these issues favors the patentee, Hearing Components.

Terms of Degree: The patents-in-suit all relate to hearing-aide elements. Claim 1 included a long-preamble with the statement that the device is configured to be "readily installed and replaced by a user." The district court had difficultly drawing a boundary between devices that are readily installed and those that are not readily installed and therefore found the claim indefinite and invalid. On appeal, the Federal Circuit reversed.

In Datamize, the Federal Circuit held the claim term "aesthetically pleasing" to be indefinite. In the process, however, the court noted that these seemingly loose terms of degree will not be considered indefinite if the patentee "provides some standard for measuring that degree." In the present case, the court found several hints as to the standard for "readily installed." First, the patentee had argued that the readily limitation helped the claim avoid prior art – thus defining a category of items that were not readily installed. Second, the patent application discussed user installation "without tools." The Federal Circuit held that this discussion suggested another way to measure "readily." Based on these findings, the appellate panel rejected the indefiniteness holding because – in the words of Datamize – the specification "supplies some standard for measuring the scope of the phrase."

Means-Plus-Function Claims: The patent claimed a "means … for disposably attaching" a duct of the hearing aide to a connector. The specification included several examples, but did not include the specific arrangement of the accused device. The jury found infringement, but the district court flipped that decision in a post-verdict order. On appeal, the Federal Circuit confirmed and reinstated the jury verdict of infringement.

Means-plus-function claims often appear to be broadly written, but are limited to specific structures described in the specification and equivalents to those structures. Thus, a means-plus-function element is infringed if the accused device includes a relevant structure that performs the same function as described in a way that is at least equivalent to one described in the specification.

Here, Federal Circuit held that the jury had permissibly found that the accused product's "interference fit" was equivalent to the "screw threads or ball-and-socket attachment" disclosed in the application.

There was evidence that the inventors knew of the potential of using an interference fit attachment but chose not to disclose it in the specification. The defendant argued that evidence of prior knowledge should limit the scope of equivalents under a doctrine akin to estoppel. Instead, the Federal Circuit held that the "known interchangeability" weighs in favor of a finding of equivalence.

Reviewing a Non-Obviousness Determination: In John Deere, the Supreme Court divided the issue of obviousness into a series of factual inquiries leading to an ultimate conclusion of whether a patent is obvious. The ultimate question of obviousness is an issue of law reviewed de novo on appeal. However, a jury's findings regarding the question's many underlying factual predicates are reviewed for substantial evidence. This structure is normally ignored in a jury decision because the jury is typically not asked to explain its factual predicates. Rather most juries just answer the yes/no question: "Is the claim obvious?" When unpacking the decision on appeal, the Federal Circuit gives the jury the benefit-of-the-doubt by looking for any way that the evidence presented can support the jury's conclusion. Thus, the question on appeal boils down to whether the factual evidence presented could be sufficient to support the legal conclusion on obviousness.

Patently-O Bits and Bytes: Patent Public Advisory Committee Nominations

• Patent Public Advisory Committee Nominations: The PPAC includes a group of nine voting members appointed for three-year terms on a rolling-basis by the Secretary of Commerce. 35 U.S.C. 5. Director Kappos and Commissioner Stoll are making this an exciting time to be part of the USPTO and I have real hope for positive change on the patent side of the office over the next three years. That said, there is a tremendous amount of work to be done. Although my skills may not be so unique, I now have the time and the energy to be a part of that effort and am planning to submit my nomination shortly. (Nominations are due June 11, 2010).
• Patent Public Advisory Committee and Open Government: Current members of the PPAC include Damon Matteo, Chair (chief intellectual property officer of the Palo Alto Research Center); Louis J. Foreman (CEO of Enventys and co-creator of Everyday Edisons on PBS); Scott Kieff (Professor at GWU); Marc Adler (independent IP strategist); Steve Pinkos (government lobbyist); Maureen Toohey (solo practitioner patent attorney); Benjamin Borson (solo practitioner patent attorney); Esther Kepplinger (director at Wilson Sonsini); Steven Miller (chief IP counsel for P&G). The terms of Scott Kieff and Louis Foreman will be complete at the end of 2010. I do believe that it is important to have a patent law professor as part of the PPAC – if only because our public pronouncements are not limited by our clients (we ordinarily do not have any clients) or our employers.
• Patent Public Advisory Committee and Open Government: Thousands of attorneys, agents, inventors, and patent examiners read Patently-O on a daily basis. I also personally communicate with dozens Patently-O readers each week on matters of patent examination policy. One of my goals as a PPAC member would be to use these communication lines to shed more public light on patent office practices and to bring suggestions directly to the PTO from folks in practice. Although the PTO examiner union-chief takes part in PPAC discussions, that often confrontational avenue of communication usually misses many important examiner issues. As the current PTO administration realizes, the management of examiner moral and training has a critical role in overall PTO performance. I believe that I could add an important channel of information on that front as well. In the past, patent office directors have not appointed individuals to the PPAC who had a broad public voice on patent law issues and an established avenue of communication. I hope that historic closing-door approach has changed.
• False Marking: Rep. Darrell Issa has introduced a bill in the House of Representatives (H.R. 4954) that would retroactively eliminate jurisdiction for false marking complaints except for cases where the complainant has "suffered competitive injury as a result of the violation." (Hat tip Hal Wegner). The Bill is co-sponsored by Representatives Boucher (D-Va), Coble (R-NC), Cohen (D-Tenn), Conyers (D-Mich), Franks (R-Ariz), Lungren (R-Cal), and Smith (R-Tex).
• False Marking: Two false marking case resources FalseMarking.net (MBHB) and Justin Gray's Info (Foley).